[00:00:00] Speaker 01:
All right, our next case for argument is EIS versus Novolution.

[00:00:05] Speaker 01:
Mr. Bansal, please proceed.

[00:00:08] Speaker 02:
Good morning, Your Honors.

[00:00:09] Speaker 02:
May it please the Court?

[00:00:10] Speaker 02:
In the 851 patent IPR decision, the sole disputed issue which the board failed to squarely address is whether Gwan's Airbag 2 is at the absolute maximum fully expanded position at the start.

[00:00:25] Speaker 02:
For that to be true, Opposa would have to interpret Guan so that the airbag too is incapable of extending the slightest bit to the left past the position in Guan's figure.

[00:00:40] Speaker 02:
The board, however, made no such finding, and it could not have done so for three reasons.

[00:00:45] Speaker 02:
First, one's electromagnet five is of a horseshoe shape, and its liver has a reciprocating motion, which makes it implausible that the liver three would not also move to the left end of the horseshoe magnet to create negative pressure.

[00:01:01] Speaker 02:
And that testimony is on appendix 10723 through 10726, paragraph 31 through 34, appendix 10806,

[00:01:11] Speaker 02:
1-0-8-0-9.

[00:01:12] Speaker 02:
Second, no Volodos expert provided no technical reasoning on why Liver 3 would not move to the left.

[00:01:21] Speaker 02:
And third, the German.

[00:01:22] Speaker 02:
I'm sorry.

[00:01:23] Speaker 02:
I didn't catch what you were saying.

[00:01:24] Speaker 02:
No Volodos expert provided no technical reasoning, Your Honors, as to why Liver 3 would not also move to the left of the center position.

[00:01:36] Speaker 02:
And third, the German Patent Office

[00:01:39] Speaker 02:
in a contested proceeding involving noble widow, found that Guan's airbag generates positive and negative pressures, just like how ICE described, by way of the liver three, moving to the left, and that is an appendix 2700 and 2702.

[00:01:53] Speaker 02:
The board, however, addressed none of this evidence, which is so one-sided that it can only compel one conclusion, that Guan also generates negative pressure.

[00:02:04] Speaker 02:
Let me explain.

[00:02:06] Speaker 02:
So Your Honor, if we can look at Appendix Page 10722.

[00:02:11] Speaker 02:
I'm going to start there.

[00:02:14] Speaker 02:
Please let me know when you're there.

[00:02:17] Speaker 02:
So here, Your Honors, Exhibit 1004, which is one, Figure 1, is illustrated.

[00:02:23] Speaker 02:
It shows a permanent magnet 4 in the center of an electromagnet 5.

[00:02:31] Speaker 02:
And the idea is that once you power on the electromagnet,

[00:02:37] Speaker 02:
the two what what what did you do appendix one zero seven to two you know okay I think it's in second yes okay got it so there one says that once you apply power to the electromagnet

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the liver in the middle is going to reciprocate.

[00:03:00] Speaker 02:
It's going to move to left and right, which is it is going to move to two ends of the magnet.

[00:03:05] Speaker 02:
If it moves to the right end of the magnet, you're going to compress the airbag, create positive pressure.

[00:03:11] Speaker 02:
If you move to left end of the magnet, you will create negative pressure.

[00:03:15] Speaker 02:
And that's precisely what even the German patent office found.

[00:03:18] Speaker 02:
If you look at appendix 2700, the German patent office said,

[00:03:22] Speaker 02:
Since the alternating compression and decompression of the airbag, which is analogous to the first chamber three of the patent in suit, also generates a pressure field consisting of overpressure and negative pressure.

[00:03:35] Speaker 02:
And then on Appendix 702, the German Patent Office followed up by saying, look, the liver tree is going to move to the left and the right to create positive and negative pressure.

[00:03:47] Speaker 01:
Did you make these?

[00:03:49] Speaker 01:
I'm recalling on that issue.

[00:03:50] Speaker 01:
There's so many issues in this case

[00:03:52] Speaker 01:
that this argument about the German Patent Office was only made in reply?

[00:03:56] Speaker 02:
No, Your Honor.

[00:03:57] Speaker 02:
I believe the German Patent Office is

[00:04:02] Speaker 02:
The German panel of his decision was introduced at the petition stage, but then it was obviously available to Novoludo to rebut.

[00:04:12] Speaker 02:
And it was definitely extrapolated and expanded upon in the reply.

[00:04:17] Speaker 02:
But I also want to just look at, or I think we should look at.

[00:04:21] Speaker 01:
Well, they make an argument that you forfeit at this argument, if I'm understanding the correct argument.

[00:04:27] Speaker 01:
And I didn't see in gray

[00:04:30] Speaker 01:
you were saying something about that.

[00:04:33] Speaker 01:
Maybe I'm confusing the different arguments, of which there are many.

[00:04:36] Speaker 02:
I will get back to you, Your Honor, with a site on that, but I do believe that this was raised.

[00:04:43] Speaker 02:
However, I think we also look at the horseshoe-shaped magnet.

[00:04:47] Speaker 02:
The only plausible

[00:04:51] Speaker 02:
explanation for what that magnet is going to do is going to pull the lever to the left as well to expand the airbag.

[00:04:58] Speaker 02:
And that's going to create positive and negative pressure.

[00:05:01] Speaker 02:
Because if it did not do so, Your Honor, the entire left half of the electromagnet

[00:05:06] Speaker 02:
is a complete waste of space.

[00:05:08] Speaker 02:
And that's on appendix 10725, 10726.

[00:05:12] Speaker 02:
This is the testimony of Dr. Prisco, where he explains in paragraph 34 that Novoludo's reading is simply implausible.

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And then I think, Your Honor, I would like you to point to what was the responsive or opposing testimony from Dr. Jensen, Novoludo's expert.

[00:05:32] Speaker 02:
His only technical reasoning

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as to why liver 3 would not move to the left to create negative pressure was simply this reference as pulsating pressure.

[00:05:43] Speaker 02:
And pulsating pressure means positive pressure, and that excludes negative pressure.

[00:05:47] Speaker 02:
There is a quote from his cross-examination, which I think we should look at together.

[00:05:54] Speaker 02:
Unfortunately, this portion of his testimony, even though it started in our opening brief, that

[00:06:03] Speaker 02:
did not make it into the joint appendix that your owners have.

[00:06:06] Speaker 02:
But it's exhibit 1022.

[00:06:08] Speaker 01:
But can I ask you just one other question?

[00:06:10] Speaker 01:
Sure.

[00:06:10] Speaker 01:
And again, I don't want to belabor this point.

[00:06:12] Speaker 01:
But I think on this issue, and there's so many issues floating around, that another argument made, which I fight by your friend, which I think may be correct, is that this was all done in reply.

[00:06:23] Speaker 01:
And your citations and your brief were all to the reply and the reply expert declarations.

[00:06:29] Speaker 01:
Am I wrong about that?

[00:06:31] Speaker 02:
Your Honor.

[00:06:32] Speaker 02:
The argument, or Dr. Jensen's testimony, obviously is going to be cited in a reply.

[00:06:40] Speaker 02:
We don't have that at the petition stage.

[00:06:42] Speaker 02:
Now, what Guan does, how it works, how the liver moves to the left and right, that's already in the petition.

[00:06:50] Speaker 02:
That's already in the opening expert declaration.

[00:06:53] Speaker 02:
Now, certainly a reply were allowed to respond to an argument.

[00:06:58] Speaker 01:
I take your point.

[00:06:59] Speaker 02:
And they did not move to exclude your honor.

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So again, you know, so the court or the testimony that I think we should look at together is exhibit 1022.

[00:07:10] Speaker 02:
and it's page number 159.

[00:07:13] Speaker 02:
The question is, what words in Guan are you using to conclude that the bag is in its fully expanded position?

[00:07:23] Speaker 02:
Answer.

[00:07:25] Speaker 02:
The fact that Guan is creating a pulsating air pressure, that is indicative of the fact that the air bag from this position will only be compressed and will not return to its original position, which is the position shown in the figure.

[00:07:40] Speaker 02:
That's it, based on the phrase pulsating pressure.

[00:07:42] Speaker 02:
That's all Dr. Jensen had to say.

[00:07:44] Speaker 02:
So here, again, the evidence is so one-sided that you can only draw a singular conclusion that the board aired and the board did not have substantial evidence to make a finding, which it did not, that Guan's airbag would not create negative pressure.

[00:08:00] Speaker 02:
Unless your honors have any question, I would quickly address the 097 pattern.

[00:08:10] Speaker 02:
Your Honor, the 097 patent also concerns Juan.

[00:08:14] Speaker 02:
Juan's one issue.

[00:08:16] Speaker 02:
But there's a second issue in the 097 patent IPR.

[00:08:20] Speaker 02:
And that has to do with the motivation to combine Juan with the 097.

[00:08:28] Speaker 02:
So what's missing from Guan is an appendage.

[00:08:32] Speaker 02:
It's an add-on limitation that has been thrown into the claim.

[00:08:36] Speaker 02:
And it serves no purpose beyond that there is an appendage in the device.

[00:08:40] Speaker 02:
Lee discloses that feature.

[00:08:43] Speaker 02:
It's also undisputed that what Lee has is a mechanical vibrator in the form of arm member 40, which provides direct stimulation.

[00:08:52] Speaker 02:
Direct stimulation simply means it's mechanical stimulation.

[00:08:55] Speaker 02:
It's mechanical pressure.

[00:08:58] Speaker 02:
That was known, as even the 097 patent acknowledges, is undesirable.

[00:09:05] Speaker 01:
Indirect stimulation... So you're talking about the motivation to combine here?

[00:09:08] Speaker 01:
Yes, Your Honor.

[00:09:09] Speaker 01:
Do we even need to reach that, though?

[00:09:12] Speaker 02:
You would need to reach it, Your Honor, for the 097 patent IPR.

[00:09:17] Speaker 02:
And the reason is this.

[00:09:19] Speaker 02:
there are two independent bases that the board had for rejecting the ground.

[00:09:26] Speaker 01:
Right.

[00:09:26] Speaker 01:
And if we agreed that there was substantial evidence to support its finding about Guam's not disclosing the pressure modulation thing, then isn't that a sufficient basis to affirm that?

[00:09:40] Speaker 01:
And why would we need to go to the motivation to combine?

[00:09:42] Speaker 02:
No, you would not need to go to motivation to combine.

[00:09:44] Speaker 02:
But again, I wanted to address that because it's a separate issue.

[00:09:48] Speaker 02:
Sure.

[00:09:49] Speaker 02:
And Your Honor, I think I'll save the rest of my time for rebuttal unless you have any questions.

[00:09:55] Speaker 00:
All right, that's fine.

[00:10:00] Speaker 00:
Good morning, Your Honors.

[00:10:01] Speaker 00:
May I please record?

[00:10:03] Speaker 00:
I'd like to address some of the points that were raised by counsel for ICE during their opening argument to clarify any kind of misimpressions there may be.

[00:10:11] Speaker 00:
There was a question asked as to whether the German Patent Office argument was forfeited and whether that was an issue that we raised in our appellate brief.

[00:10:19] Speaker 00:
We did at page 26.

[00:10:21] Speaker 00:
of the Appellee's brief, we did point out that that argument was not adequately brief in the underlying IPR, and therefore that argument was forfeited.

[00:10:31] Speaker 00:
Even if it wasn't, however, the German Patent Office findings regarding Guan in a foreign proceeding applying foreign patent laws

[00:10:39] Speaker 00:
on a foreign patent, excuse me, not binding on the board.

[00:10:43] Speaker 00:
The board did thoroughly and very carefully consider all of the evidence that was presented before it in all three IPRs, not just once, but twice.

[00:10:54] Speaker 00:
And both times came to the conclusion that none of the prior art disclosed, taught, or suggested the claimed limitations, including

[00:11:03] Speaker 00:
the limitation requiring that there be modulated positive and negative pressures with respect to the ambient pressure acting on the device.

[00:11:13] Speaker 00:
What we're talking about here are sex toys.

[00:11:17] Speaker 00:
That's what these patents cover.

[00:11:19] Speaker 00:
And what was shown abundantly clear throughout the record was that there had not been any contemplation of indirect stimulation to a clitoris that applied both positive and negative pressures with respect to the ambient pressure modulated in a device.

[00:11:35] Speaker 00:
That simply wasn't shown anywhere.

[00:11:37] Speaker 00:
And that's true here in this case.

[00:11:40] Speaker 00:
What ICE asks on this appeal is for this court to reweigh the evidence, to reconsider hypothetical modifications of the prior art that only exist in the imagination of ICE's counsel, and that were found to be completely unsupported and in many instances.

[00:11:57] Speaker 01:
There are a lot of issues here in different patents.

[00:12:00] Speaker 01:
But as to Guam, I think I've got the right one, where the board, you tried to argue this was not analogous art.

[00:12:08] Speaker 01:
And the board rejected your contention, right?

[00:12:11] Speaker 00:
Yes, Your Honor, that's correct.

[00:12:12] Speaker 01:
OK.

[00:12:12] Speaker 01:
Isn't there a little tension between its willingness to conclude there was a motivation to combine and the fact that they rejected that they said it was analogous art?

[00:12:24] Speaker 00:
No, Your Honor, we don't find tension in that.

[00:12:26] Speaker 00:
Just because there may be art that is found to be analogous doesn't mean that there also exists a motivation to combine particular prior art references.

[00:12:35] Speaker 00:
If I may present an example in the real world, if you consider modes of transportation, an airplane is a mode of transportation, an automobile is a mode of transportation, and so is a bicycle.

[00:12:47] Speaker 00:
However, if someone is looking to invent a tricycle for a child that provides for an enjoyable and smooth ride, they're not necessarily going to be motivated to combine prior art relating to a jet engine from an airplane, a steering wheel from an automobile,

[00:13:02] Speaker 00:
and an adult seat for a road racing bicycle.

[00:13:05] Speaker 00:
That provides a good illustration of how there's not tension.

[00:13:09] Speaker 00:
Yes, it is true that a court can find or a board may find that there are prior art that is considered to be analogous.

[00:13:16] Speaker 00:
But that doesn't mean that there's also evidence showing within that reference and motivation to combine that reference with another reference.

[00:13:23] Speaker 00:
And the board thoroughly examined that in this case and found that there was no such motivation to combine.

[00:13:28] Speaker 00:
They examined the arguments that ICE provided and the expert testimony provided, and they found there was no basis to find a motivation to combine an acupressure device with a vibrator.

[00:13:41] Speaker 00:
They found there was no indication in either one of those references to combine those two to create an indirect stimulation device used for the clitoris.

[00:13:50] Speaker 00:
And so, Your Honor, we don't find the tension with those two, and we find that that's absolutely reconcilable.

[00:13:55] Speaker 00:
And back to the more important overarching issue, there was substantial evidence supporting all of the board's findings that are at issue on this appeal.

[00:14:05] Speaker 00:
This isn't a question where there was the wrong legal standard applied.

[00:14:09] Speaker 00:
This isn't a question where there was erroneously applied

[00:14:12] Speaker 00:
legal standards.

[00:14:13] Speaker 00:
This is an issue where ICE is unhappy with the results that it got from the board twice, and is now asking this court, under the guise of legal error, to revisit all this evidence.

[00:14:23] Speaker 00:
But the board provided very clear and very detailed written opinions, 75 pages of opinions in each of these three cases, showing that it had thoroughly considered all of the evidence.

[00:14:35] Speaker 00:
The evidence overwhelmingly showed that ICE had not met its burden to show unpatentability

[00:14:42] Speaker 00:
of the challenge claims in these patents.

[00:14:44] Speaker 00:
Now, Your Honors, if there are no further questions, I'll go ahead and close.

[00:14:49] Speaker 00:
Thank you.

[00:14:50] Speaker 00:
Thank you, Ms.

[00:14:51] Speaker 00:
Terry.

[00:14:52] Speaker 00:
Mr. Bansal, you have some of our time.

[00:14:55] Speaker 02:
Thank you, Your Honors.

[00:14:58] Speaker 02:
So Judge Prost, I think you asked me earlier about the citation.

[00:15:01] Speaker 02:
It's Appendix 864.

[00:15:03] Speaker 02:
That is our petition, Your Honor.

[00:15:07] Speaker 02:
And we reproduce on the top of Appendix 864 the same exact code that I just read to you previously.

[00:15:15] Speaker 02:
So this was front and center.

[00:15:16] Speaker 02:
Now, Council Board Novoluto just noted about or argued that the board did not apply a wrong legal standard.

[00:15:24] Speaker 02:
We respectfully disagree with that.

[00:15:26] Speaker 02:
The central issue, the primary dispute between the board was, does Guan's bag expand beyond its elicited position to create negative pressure?

[00:15:38] Speaker 02:
The board made zero factual findings on this issue in its final decision.

[00:15:44] Speaker 02:
And when it comes to substantial evidence,

[00:15:47] Speaker 02:
which is what, again, Noborito's counsel referred to.

[00:15:49] Speaker 02:
But what is the substantial evidence for the board's decision?

[00:15:52] Speaker 02:
The board's entire analysis of Guan has two paragraphs of testimony from Dr. Jensen's act written.

[00:16:00] Speaker 02:
That's on Appendix 92.

[00:16:02] Speaker 02:
And that testimony does not go beyond saying, well, Dr. Prisco is reading too much into Guan.

[00:16:10] Speaker 02:
It provides not a single technical reason as to why this very simple device

[00:16:16] Speaker 02:
is not going to work in the same manner that the German parent office said it would.

[00:16:22] Speaker 02:
Unless you, Your Honor, have any further questions, I will give the court back its time.