[00:00:00] Speaker 00:
for argument is 20-2314 shockwave medical versus cardiovascular system.

[00:00:06] Speaker 00:
Mr. McPhee, welcome back.

[00:00:08] Speaker 00:
Please proceed whenever you're ready.

[00:00:11] Speaker 02:
Thank you, Your Honor, and may it please the court.

[00:00:13] Speaker 02:
This appeal is, if anything, I think even more straightforward than the last.

[00:00:16] Speaker 02:
There's just one obviousness theory at issue in terms of the base references.

[00:00:22] Speaker 02:
And the board's decision based on that theory suffers from at least three independent errors

[00:00:28] Speaker 02:
any one of which would be sufficient basis to reverse.

[00:00:31] Speaker 02:
In brief, the first error, the board's failure to satisfy the claimed series connection element as properly construed.

[00:00:38] Speaker 02:
Second, involving the surface area element.

[00:00:41] Speaker 02:
And the third error is the board's failure to provide a proper analysis of motivation to combine expectation of success for its proposed combinations, all of which involve at least three or four distinct embodiments.

[00:00:54] Speaker 00:
But let me just say, at the outset, some difference between this and the last appeal was in the last appeal, at least a major issue involved claim construction where our standard of review is much less deferential than for all of the other issues, including all of those that you're presenting here, right?

[00:01:15] Speaker 02:
Well, I would say, in fact, the first issue, a serious connection, the board really

[00:01:21] Speaker 02:
fail to understand the scope of that claim, which is apparent as you as you look at the board's decision.

[00:01:28] Speaker 02:
And I'd like to start there if I could.

[00:01:29] Speaker 00:
Okay, sure.

[00:01:31] Speaker 00:
Sorry.

[00:01:32] Speaker 02:
Yes, if you if you look at the claim language, again, I think it's helpful just to look at that first page of the blue brief.

[00:01:40] Speaker 02:
You look at the last element of the claim, which is where our focus is, and it's very detailed.

[00:01:45] Speaker 02:
It requires not just electrodes, but electrode pairs connected to each other in a particular way.

[00:01:51] Speaker 02:
It requires a first arc across the first electrode pair, a second arc on the second electrode pair.

[00:01:58] Speaker 02:
And with these arcs, thereby creating a series connection.

[00:02:03] Speaker 02:
running from the first electrode in the first electrode pair, the second electrode in the second pair.

[00:02:10] Speaker 02:
So what does CSI do with this?

[00:02:12] Speaker 02:
What does the board do with this?

[00:02:13] Speaker 02:
Well, despite the detail in the actual claim language, what CSI does is tries to collapse this element into the simplistic concept of a simple wired circuit in series, like an old fashioned string of Christmas lights with each component wired to the next one in a loop.

[00:02:30] Speaker 02:
CSI actually refers to this element as the in-series limitation, even though that term appears nowhere in the claim.

[00:02:37] Speaker 02:
And the board's decision uncritically accepts CSI's error with the decision relying heavily on a finding that the prior art, quote, suggests electrically wiring electrodes in series.

[00:02:51] Speaker 00:
Can you give us a site with the appendix on that that you're talking about now for decision?

[00:02:59] Speaker 02:
Yes, I can, Your Honor.

[00:03:01] Speaker 02:
It might take me a second.

[00:03:02] Speaker 02:
I might get it onto the reply.

[00:03:04] Speaker 00:
Okay.

[00:03:05] Speaker 00:
Okay.

[00:03:09] Speaker 02:
But the point is, relying on this idea that the prior art suggests electrically wiring electrodes in series, that misses the point.

[00:03:18] Speaker 02:
The series connection element is not satisfied by a mere collection of components

[00:03:25] Speaker 02:
that are electrically connected in series.

[00:03:28] Speaker 02:
And we just saw that in the claim language.

[00:03:32] Speaker 02:
In fact, there's no dispute, I think, that Kunis, which is what the board relies upon as satisfying the series connection element, that Kunis does not disclose arcing at all, much less multiple pairs of arcing electrodes arranged in a series connection as claimed.

[00:03:50] Speaker 02:
And so the board's reliance on Kunis as disclosing a series connection rests on what is fundamentally a mistaken interpretation of the term.

[00:04:00] Speaker 02:
So this is where the claim construction issue I think really comes into play, Your Honor, in response to your question.

[00:04:07] Speaker 02:
And by the way, there's no dispute that the other two references in the combination, the two Hawkins references, neither of those discloses a series connection.

[00:04:16] Speaker 02:
The board found that Hawkins 020 does not disclose a series design at all, and no one has ever argued that this element was satisficing in Hawkins 768.

[00:04:26] Speaker 01:
This is Judge Chen.

[00:04:27] Speaker 01:
Isn't the idea that in light of Kunis, it'd be obvious to modify Hawkins 020 so that it did provide a series connection?

[00:04:38] Speaker 02:
Yes, that is CSI's fallback argument.

[00:04:41] Speaker 02:
I'd like to go there now.

[00:04:42] Speaker 02:
So CSI does argue that one could, in theory, rewire Hawkins 020 to provide a series connection.

[00:04:50] Speaker 02:
And they base that on Kunis and sort of the background understanding of conventional series circuits.

[00:04:56] Speaker 02:
But of course, saying that one could make a change is fundamentally different from proving that one of Skill in the Arc would actually be motivated to do this.

[00:05:07] Speaker 01:
Well, I guess to put a little finer point on it, my understanding is the board said, first of all, it would be obvious to try, because there are very, very few configurations of how you could arrange these electrode pairs, as shown in Hawken 020.

[00:05:26] Speaker 01:
And maybe Hawken 020 shows them in parallel, but the obvious alternative is to do it in series.

[00:05:33] Speaker 01:
And then when you look at Kunis, when Kunis talks about

[00:05:37] Speaker 01:
Well, the advantage of having it in series rather than in parallel is that it'll be less bulky.

[00:05:43] Speaker 01:
You'll just have fewer wires running through the catheter, which, as I understand it, is completely consistent with what you said in the prosecution history that you described at page 12 to 13 of your blue brief, where before the examiner you criticized the 020 for being overly stiff because the

[00:06:07] Speaker 01:
electrode pairs are in parallel rather than in series.

[00:06:11] Speaker 01:
And your claimed invention minimizes the number of wires running down the length of the catheter, which is the very point that Kunis is making.

[00:06:21] Speaker 01:
So that understanding of wanting to minimize the number of wires running down the length of the catheter was already known in the art, as evidenced by Kunis.

[00:06:30] Speaker 01:
So in light of the obvious to try, in light of very few options on how to arrange these things,

[00:06:37] Speaker 01:
plus what Kunis tells us about doing things in series, why wouldn't it have been obvious, or to put it differently, why isn't there substantial evidence under this deferential standard review to go ahead and affirm this fact finding from the tribunal below that yes, one would be motivated to do a series connection?

[00:06:58] Speaker 02:
All good questions.

[00:06:59] Speaker 02:
I'll start by saying the obvious to try formulation

[00:07:03] Speaker 02:
is not a shortcut that sidesteps the need to supply a motivation to combine and an expectation of success, which CSI is still required to do.

[00:07:16] Speaker 02:
So even taking

[00:07:18] Speaker 02:
at face value the idea that in conventional circuits you have a few different ways of wiring things together.

[00:07:26] Speaker 02:
CSI still needs to meet its burden on that.

[00:07:28] Speaker 02:
The second issue of course is that we're not talking about a conventional circuit here by any stretch of imagination.

[00:07:35] Speaker 02:
We're talking about a series of components in a system with electrode pairs with gaps in them.

[00:07:43] Speaker 02:
which for most circuits would mean you have a circuit that doesn't work if you have a gap in it.

[00:07:49] Speaker 02:
In this case, in the Hawking system, we rely on arcing in a common

[00:07:56] Speaker 02:
fluid to actually create the circuit.

[00:07:59] Speaker 02:
So it can't be the case that you simply point to, as CSI does, point to the existence of these kinds of circuits in conventional background and unthinkingly apply them to a system like Hawkins 020, which is basically what their expert does, just points to some background as well as to Kunis.

[00:08:25] Speaker 02:
And now Kunis, you asked about, in particular, I think this is another example where we need to look

[00:08:32] Speaker 02:
at what is actually cited in Kunis.

[00:08:35] Speaker 02:
So Kunis, as I said, not an arching reference, nothing to do with shockwaves.

[00:08:40] Speaker 02:
So a question about why the person of ordinary skill is looking to Kunis in the first place to modify a very different kind of reference in Hawkins 020.

[00:08:51] Speaker 02:
But even if we could get past that, the one passage that CSI points to in Kunis

[00:08:58] Speaker 02:
as supplying some sort of motivation for the type of modification that you're describing, Judge Chen, is a passage that simply states that when you have a, quote, large number of electrodes, that this could create some bulk.

[00:09:14] Speaker 02:
Well, CSI never establishes the predicate of why Hawkins 020 has that concern.

[00:09:22] Speaker 02:
In fact, Hawkins 020 has just two electrode pairs.

[00:09:26] Speaker 02:
So even getting to Kunis, if Kunis provides a solution for someone with a large number of electrodes, well, there's no explanation for why that's even a problem with respect to the underlying Hawkins O2O.

[00:09:43] Speaker 02:
There's no evidence that Hawkins needs size reduction.

[00:09:46] Speaker 02:
And actually no evidence in the record that a modification would actually achieve the size reduction.

[00:09:53] Speaker 02:
CSI's expert Jensen, in his first deposition, he said, well, it wouldn't be a dramatic reduction.

[00:09:58] Speaker 02:
And at his second deposition, he actually conceded that the modification would not reduce wire count at all at the widest point.

[00:10:05] Speaker 02:
It might actually increase bulk by making the wire a little bit thicker.

[00:10:10] Speaker 02:
So on all these points, we're left with the same basic problem of having to establish some sort of motivation to combine some expectation of success for changing what by all accounts is a perfectly serviceable system.

[00:10:27] Speaker 02:
You need something more to get over the hump than just sort of a cursory invocation of obvious to try.

[00:10:33] Speaker 02:
I'd like to just briefly mention

[00:10:38] Speaker 02:
If I could, I think I heard the chime, but just briefly mention this issue of multiple disparate embodiments, just because this is an error that goes to the heart of all of the combinations.

[00:10:51] Speaker 02:
We don't think that there's adequate motivation to combine, for example, Hawkins 020 with Hawkins 768 or with Kunis.

[00:11:01] Speaker 02:
But in fact, it's CSI's effort to combine all three references into a single design.

[00:11:07] Speaker 02:
It actually compounds that deficiency.

[00:11:09] Speaker 02:
And we have the Gillette case, for example, that makes this clear.

[00:11:13] Speaker 02:
Focusing on the obviousness of substitutions and differences instead of the invention as a whole is a legally improper way

[00:11:21] Speaker 02:
to make a determination of obviousness.

[00:11:24] Speaker 02:
And that's what CSI and the Board did here.

[00:11:27] Speaker 02:
It's especially acute for the dependent claims, where now CSI is introducing additional embodiments from the patents.

[00:11:38] Speaker 02:
The Board seemed to take the position that

[00:11:40] Speaker 02:
if the two embodiments to be combined were from a single reference, that no motivation to combine was necessary.

[00:11:49] Speaker 02:
And that's simply contrary to this, that court's precedent in race step-on, which we cited, which specifically addressed this issue and held that even if you have two embodiments from the same reference, a motivation to combine still needs to be supplied in this case.

[00:12:07] Speaker 02:
The board made no attempt to do that, and we think that's just legal error.

[00:12:14] Speaker 02:
And we'll submit on the relative electrode surface area issue, and I'll reserve the rest of my time.

[00:12:21] Speaker 00:
All right.

[00:12:22] Speaker 00:
Thank you.

[00:12:23] Speaker 00:
Mr. Nelson.

[00:12:26] Speaker 03:
Good morning, Your Honors.

[00:12:27] Speaker 03:
This is Mark Nelson for Appellee CSI.

[00:12:31] Speaker 03:
So jumping right into it here,

[00:12:34] Speaker 03:
The board found with respect to the limitation thereby creating a series running from a first electrode pair to a second electrode pair, the board found that petitioner demonstrated that the combined teaching of Hawkins 020, Hawkins 768, and Kunis, quote,

[00:12:53] Speaker 03:
suggest two electrode pairs connected in series that are capable of supporting arcs across the gaps in those pairs when a single high voltage is applied."

[00:13:05] Speaker 03:
End quote.

[00:13:05] Speaker 03:
That's Appendix 10.

[00:13:08] Speaker 03:
Now, counsel started his argument by noting a claim construction.

[00:13:13] Speaker 03:
But as far as I can tell from the briefing, Shockwave isn't arguing

[00:13:18] Speaker 03:
for a claim construction here.

[00:13:20] Speaker 03:
And the board's finding, is it based on some claim construction the board made?

[00:13:26] Speaker 03:
The board didn't resolve what it characterized as a new argument in the server apply, and went ahead and found that the claim was obvious.

[00:13:38] Speaker 03:
And the board council also stated that Hawkins 020 was, that the board found that it was wired as a switch connection.

[00:13:48] Speaker 03:
That's not actually what the board said.

[00:13:50] Speaker 03:
The board said that a procedure would have inferred that Hawkins 020 described two electrode pairs that are, quote, likely, end quote, wired individually.

[00:13:59] Speaker 03:
That's at appendix 22.

[00:14:02] Speaker 03:
But the board also stated that Hawkins 020 does not expressly describe how the electrode pairs 34 and 36 are wired to the power supply 30.

[00:14:11] Speaker 03:
That's at appendix 16.

[00:14:13] Speaker 03:
And so the board's finding here is based on the suggestion of these references being combined.

[00:14:19] Speaker 03:
The law here on obvious to try is a finite number of known predictable solutions and a designer market pressure to solve a problem, i.e.

[00:14:30] Speaker 03:
a reason to try the solution.

[00:14:33] Speaker 03:
And the board's decision supports that analysis and its findings with more than substantial evidence.

[00:14:40] Speaker 03:
With respect to the finite number,

[00:14:43] Speaker 03:
The dispute below was whether the connection could be an in-series connection or an in-parallel connection.

[00:14:49] Speaker 03:
And Shockwave, you don't know if there's a third connection that you didn't consider a switched connection.

[00:14:55] Speaker 03:
But either way, it's a finite number of connections, either two or three.

[00:14:59] Speaker 03:
The board gave Shockwave the benefit of the doubt and went with three, but it's a finite number.

[00:15:05] Speaker 03:
Are they knowing?

[00:15:06] Speaker 03:
There's no dispute that Hawkins 020 teaches multiple electrode pairs and multiple arcs

[00:15:13] Speaker 03:
in an environment.

[00:15:16] Speaker 03:
Again, the board, I think, gave Shockwave the benefit of the doubt when it said they're likely wired individually.

[00:15:22] Speaker 03:
But there's no dispute that there's two electrode pairs arcing disclosed in Hawkins O2O.

[00:15:29] Speaker 03:
The board credited petitioners' arguments that cited Atmaner's expert admission that a serious connection is a fundamental electrical configuration

[00:15:40] Speaker 03:
to connect circuit components taught in basic undergraduate engineering courses.

[00:15:45] Speaker 03:
The board also credited petitioners experts that parallel series and switch connections were all well-known.

[00:15:53] Speaker 03:
The board found that Kunis unequivocally suggested disclosing that its electrodes can be electrically connected in series or parallel.

[00:16:04] Speaker 03:
And that's at Appendix 18.

[00:16:07] Speaker 03:
The quote is unequivocally that Appendix 27

[00:16:10] Speaker 03:
The electrically connected portion of describing CUNIS is that Appendix 18 and Appendix 808 is the CUNIS reference of column 25, lines 41 to 42.

[00:16:20] Speaker 03:
The board didn't just rely on that sentence though, contrary to counsel's statement.

[00:16:28] Speaker 03:
The board also stated that Appendix 18,

[00:16:31] Speaker 03:
Students describes, quote, an array of multiple electrodes simultaneously or searly deliver ablation energy to target a tissue over a relatively large area.

[00:16:42] Speaker 03:
So students like the Hawkins references.

[00:16:48] Speaker 03:
These are references that are minimally invasive medical devices that are inserted through the vasculature and have to find their way to the treatment site.

[00:16:59] Speaker 03:
And Kunis' teaching is broad.

[00:17:02] Speaker 03:
It teaches that its ablation elements are electrodes, and that the ablation energy that can be used is RF energy, acoustic energy, electrical energy, magnetic energy, mechanical energy.

[00:17:15] Speaker 03:
Doesn't use the term shockwave per se, but I don't think it's disputed that shockwaves are mechanical energy.

[00:17:21] Speaker 03:
That's Appendix 18, citing Kunis 808.

[00:17:29] Speaker 03:
So turning to the predictability aspect, that's where Pat Moderer focused a lot of his arguments here.

[00:17:37] Speaker 03:
And the board found that Appendix 20 substantial evidence, the petition arguments were more persuasive, which is sort of the touchstone here of a decision that shouldn't be

[00:17:51] Speaker 03:
reversed when the board weighed the party's perspective evidence and clearly stated that one side's arguments were more persuasive than the other.

[00:18:00] Speaker 03:
The board credited petitioners' arguments against patent learners' experts that an in-series type limitation is a fundamental limitation, basic electronic principles.

[00:18:12] Speaker 03:
The board also looked at a lot of patent learners' experts' testimony.

[00:18:18] Speaker 03:
And patent owners' arguments here were all focused on that it was, in an arcing environment, it was very unpredictable where particularly the arc would form.

[00:18:29] Speaker 03:
Not that it would necessarily, not that it wouldn't cross over between one electrode and an electrode paired to a second electrode, but it would be unpredictable where on the first electrode the particular arc would form and then where the path it would take to the second electrode.

[00:18:47] Speaker 03:
And patent owner argued that the electrons, that it was really focused on a molecular level.

[00:18:51] Speaker 03:
And there's a figure in, I think, the appendix 415 that is in Dr. Jensen's brief, where it shows these electron streamers coming out.

[00:19:02] Speaker 03:
And this is at a microsecond time scale.

[00:19:07] Speaker 03:
And Shockwave analogized the unpredictability here, the alleged unpredictability, as like a lightning bolt.

[00:19:14] Speaker 03:
But that's not the situation that the expert ultimately agreed with.

[00:19:20] Speaker 03:
Because when you take this out of the molecular level and you put it at the level of controlling whether the arcs, in fact, will form across the electrode pairs, both experts agree that you can control arc formation by adjusting the shape of the electrodes, which would include the surface area.

[00:19:40] Speaker 03:
and the distance between them.

[00:19:42] Speaker 03:
And so to use that lightning bullet analogy, yes, it would be unpredictable where a lightning would strike if you just take a thunderstorm at a large section of ground.

[00:19:51] Speaker 03:
But if you took a particular portion of the cloud that would represent the first electrode in an electrode pair, and you controlled its shape, and then you took a big old lightning rod, and you put it right next to that first electrode by the cloud, and you controlled its shape.

[00:20:07] Speaker 03:
For example, you make it bigger.

[00:20:09] Speaker 03:
There's not unpredictability that the lightning bolt is going to strike between those two electrodes.

[00:20:15] Speaker 03:
And that's what the board ultimately found was that the arc formation is controlled by adjusting the shape of the electrodes and the distance between them.

[00:20:27] Speaker 03:
That's appendix 18.

[00:20:33] Speaker 03:
that it's basic electronic principles that current flow, highest current will flow across the least path of least resistance.

[00:20:40] Speaker 03:
That's at appendix 23.

[00:20:43] Speaker 03:
The board noted that Pat Miller's expert was inconsistent.

[00:20:47] Speaker 03:
In one place, and this is at appendix 24, he states that the effect of series connections is there is only one path to ground for electrons flowing across the electrode gap.

[00:20:58] Speaker 03:
the current must flow across each of the electrode pairs wired in series through the same fluid.

[00:21:04] Speaker 03:
But then the board notes he reaches this conclusion even after stating in another paragraph that the detailed physics of arc formation remain unpredictable.

[00:21:15] Speaker 03:
And so the debate here, the board ultimately concluded, well, as Appendix 24, current would flow across the gaps from highest current to lowest current, and that

[00:21:28] Speaker 03:
once the current starts flowing, all these streamers that patent owner's expert was arguing would go all over and could eventually short circuit the circuit, they would just go away.

[00:21:39] Speaker 03:
And so by controlling the shape of the electrodes and the distance between them in a respective electrode pair, as well as the pairs themselves, the board correctly found that this type of circuit would be predictable in series and gave more than substantial evidence to do so.

[00:22:00] Speaker 03:
So turning to council's motivation to combine arguments, the obvious trade also required a reason to try it.

[00:22:10] Speaker 03:
And the board expressly found that there would be a reason to try it here.

[00:22:14] Speaker 03:
Not that there could be, there would be.

[00:22:16] Speaker 03:
And the board identified several reasons.

[00:22:20] Speaker 03:
Again, the board relied on punis unequivocally suggesting wiring electrodes in series.

[00:22:25] Speaker 03:
and found that Kunis specifically taught that it would be advantageous to reduce the bulk of the cross-sectional profile of the catheter.

[00:22:35] Speaker 03:
Again, somebody looking at Hawkins 020 would look at it, and you've got to get the, not only does Hawkins 020 contain multiple embodiments, but you also have to get the device to the treatment site.

[00:22:50] Speaker 03:
And so the bulk and stiffness matter here, whether it's a device that's going into a heart valve or whether it's an angioplasty balloon going into something narrower.

[00:22:59] Speaker 03:
And the board recognized that.

[00:23:01] Speaker 03:
And that's in appendix 27 and 28.

[00:23:06] Speaker 03:
The board also recognized acutus generally relates to catheters and such minimally invasive procedure, the appendix 18.

[00:23:15] Speaker 03:
The board recognized that the petitioner demonstrated a serious configuration would be less bulky, even if the same number of wires were used.

[00:23:22] Speaker 03:
That's Appendix 28.

[00:23:24] Speaker 03:
And counsel made an argument about an alleged inconsistency in Dr. Jensen's testimony.

[00:23:30] Speaker 03:
But Dr. Jensen says, well, in the drawing that he's referring to, I think you go from four wires to three wires, and you reduce one wire.

[00:23:38] Speaker 03:
And counsel said the Jensen allegedly later admitted that you might not even reduce the wires at all.

[00:23:45] Speaker 03:
But the board found that there was other reasons, even if there were, even if the same number of wires were used.

[00:23:53] Speaker 03:
For example, bending stiffness isn't linear.

[00:23:56] Speaker 03:
The board also found in Appendix 2829 that it would be obvious to try Hawkins O2O's electrical pairs in a series connection for increased patient safety.

[00:24:09] Speaker 03:
And as we noted in the red brief at page 45, note 18, there was a lot of arguments in the petition relating that the series connection would also permit a device to cover a greater length target area.

[00:24:23] Speaker 03:
That was never rebutted by a patent owner at all.

[00:24:32] Speaker 00:
Anything further, Mr. Nelson?

[00:24:34] Speaker 03:
Yeah, let me touch just briefly on

[00:24:37] Speaker 03:
the motivation to combine the multiple references issue.

[00:24:42] Speaker 03:
So, Hawkins 020 incorporates Hawkins 768, the provisional application of it, by reference.

[00:24:52] Speaker 03:
So, to the extent that there's motivation to combine needed between Hawkins 020 and Hawkins 768, it's already part of Hawkins 020.

[00:25:02] Speaker 03:
But turning to the dependent claims in particular here,

[00:25:11] Speaker 03:
The board noted that it adopted petitioners' reasons expressed above as our own, which would include all the reasoning that went into the finding of the independent claim from which the dependent claim depends on.

[00:25:29] Speaker 03:
The board also found substantial evidence with respect to, I'll take claim seven as an example,

[00:25:37] Speaker 03:
that Hawkins 020 and Hawkins 768 each describe a single chamber balloon that's adapted for angioplasty.

[00:25:44] Speaker 03:
That's a factual finding at appendix 41 and 4748 with respect to claim 13.

[00:25:51] Speaker 03:
The board then refers to the reasons it adopts them as their own.

[00:25:54] Speaker 03:
The board also, at appendix 31, talks about Hawkins 020 expressly referring to the 170 provisional, which is the provisional that supports Hawkins 768,

[00:26:06] Speaker 03:
as a source of guidance for how to generate shock waves using electrodes.

[00:26:12] Speaker 03:
And so these references, Hawkins 020 and Hawkins 768, they are medical devices, again, that are minimally invasive, used to treat calcification of heart valves, arteries.

[00:26:28] Speaker 03:
Kunis 768 is a similar device, or I'm sorry, the Kunis reference is a similar device,

[00:26:34] Speaker 03:
that is also used to treat medical conditions, also inserted through the vasculature.

[00:26:42] Speaker 03:
There is motivation to combine here.

[00:26:44] Speaker 03:
The board also found expectation of success.

[00:26:50] Speaker 03:
And I think with that, I'm almost out of time.

[00:26:52] Speaker 03:
So I would just, again, thank the court for its time.

[00:26:56] Speaker 03:
And based on the argument and the argument in the red brief,

[00:27:02] Speaker 03:
And all of the evidence cited therein that the court should affirm the board's decision in total.

[00:27:10] Speaker 03:
And I thank you.

[00:27:11] Speaker 00:
Thank you, Mr. Nelson.

[00:27:12] Speaker 00:
Mr. McPhee, you've got some rebuttal time left.

[00:27:16] Speaker 02:
Thank you, your honor.

[00:27:17] Speaker 02:
First, let me supply the site that I promised that I didn't quite have in my fingertips.

[00:27:21] Speaker 02:
Appendix 27 is where the court found a passage from Kunis.

[00:27:26] Speaker 02:
They said, quote, unequivocally suggests electrical, electrically wiring electrodes in series.

[00:27:34] Speaker 02:
And the board goes on on that page to find that Kunis discloses a series connection that's simply not correct under a proper interpretation of series connection, which contemplates at a minimum multiple arcing pairs of electrodes.

[00:27:51] Speaker 02:
And so the board just missed that issue.

[00:27:54] Speaker 02:
On the motivation to combine,

[00:27:56] Speaker 02:
Again, we have the problem where the board seems to assume knowledge of the answer to the problem as a way of getting to the reference.

[00:28:05] Speaker 02:
Kunis, of course, as an ablation reference, it's designed to scar tissue.

[00:28:10] Speaker 02:
It's designed to cause lesions.

[00:28:12] Speaker 02:
The idea that someone starting from Hawkins 020, which is trying to avoid lesions, would look to Kunis, CSI never explains how we get there.

[00:28:22] Speaker 02:
They supply conclusory expert statements.

[00:28:25] Speaker 02:
And the same issue of could versus should, which under this court's precedent in InTouch is simply inadequate to support a motivation to combine.

[00:28:39] Speaker 02:
CSI's counsel just mentioned just now other potential reasons to combine with Kunis.

[00:28:46] Speaker 02:
But again, there was no actual evidence, for example, of a safety benefit.

[00:28:50] Speaker 02:
You look at the passage from the expert declaration,

[00:28:54] Speaker 02:
It's simply a paragraph saying everyone knows this could provide some additional safety.

[00:29:00] Speaker 02:
There's no contemporaneous evidence.

[00:29:01] Speaker 02:
There's no prior art citation.

[00:29:04] Speaker 02:
It's just hindsight from an expert who's using the patent to come up with the answer to a question.

[00:29:11] Speaker 02:
I'll point out, too, there was no evidence of motivation to combine or expectation of success.

[00:29:23] Speaker 02:
For example, we don't see any evidence in the prior ARC cited by CSI or the board on the concept of using the differential electrode sizes as a way of enabling this use of multiple electrode pairs that arc in a common fluid.

[00:29:43] Speaker 02:
The first indication, the first disclosure that we see of that idea is in our patent, the 673 patent.

[00:29:52] Speaker 02:
And so you have to establish the expectation of success with some sort of evidence and the board simply failed to do that.

[00:30:01] Speaker 02:
Finally, on the issue of combining multiple references, I think it's striking that neither in CSI's brief nor in the argument just now, do we get any response to our point on the legal error

[00:30:14] Speaker 02:
the failure to comply with this court's precedent in NRA step on.

[00:30:20] Speaker 02:
It's not enough, even assuming that CSI is right, that somehow various pieces of this combination, various embodiments were incorporated by reference into Hawkins 020, even assuming that that were somehow the case.

[00:30:35] Speaker 02:
CSI is still obligated to show why you would be motivated to combine those distinct embodiments and there would be some expectation of success.

[00:30:45] Speaker 02:
CSI starts from the premise that they don't have to show that because they believe that those embodiments were in the same reference and that's simply contrary to law.

[00:30:56] Speaker 02:
And again, you see this all the more acutely

[00:31:00] Speaker 02:
with the dependent claims, there's no explanation of why the person of ordinary skill in the art would start with figure three of Hawkins 020 and choose to rewire it according to the ablation system of Kunis and choose to introduce a parabolic reflector as in Hawkins 768 and choose to convert the entire thing into an angioplasty system.

[00:31:24] Speaker 02:
or to transform it to an over-the-wire design.

[00:31:28] Speaker 02:
There's just no rationale suggesting or driving this convoluted sequence of modifications.

[00:31:35] Speaker 02:
The only rationale is the one that's not permitted here, namely hindsight.

[00:31:41] Speaker 02:
So I think then that point does apply to the independent claims, but it applies with even greater force, I'd say, to the dependent claims of this patent.

[00:31:51] Speaker 02:
And so, Your Honor, we believe that for this reason and for the multiple independent reasons that we set forth, that the board's decision should be reversed.

[00:32:01] Speaker 00:
Hearing no further questions from the panel, we thank both sides and the case is submitted.