[00:00:02] Speaker 01:
Thank you Judge Coats.

[00:00:09] Speaker 04:
It is an extreme pleasure.

[00:00:13] Speaker 04:
Thank you and may it please the Court.

[00:00:16] Speaker 04:
The Board committed both factual and legal errors in rendering the judgment holding Massimo's county claim obvious.

[00:00:24] Speaker 04:
I'm going to be discussing the legal issues here today because the court may fix that error and reverse the board's judgment on the purely legal issue of claim construction.

[00:00:36] Speaker 04:
There are two separate claim construction issues and a third contingent issue if the court agrees with Massimo on at least one claim.

[00:00:46] Speaker 04:
The context for all of these claim constructions is that the patent discloses and the claims are directed to multi-parameter physiological monitoring systems and those counsel.

[00:00:59] Speaker 04:
Yes.

[00:00:59] Speaker 02:
On page 26 of the response brief.

[00:01:03] Speaker 02:
uh... the reverie says and they highlight never uh... argued below that all of the r e two four four patent claims required to non-invasively measured parameters nor did it sufficiently specify the certain claims must measure two parameters using a single comprised and then again they highlight only of signals from non-invasive sensors

[00:01:31] Speaker 02:
Where in the record did you raise the argument related that one, all of the RE244 patent claims require two non-invasively measured parameters, and two, that certain claims must measure two parameters using a signal comprised only of signals from non-invasive sensors.

[00:01:54] Speaker 04:
So, Your Honor, the first place would be in the mass and loads of paranormal response.

[00:02:00] Speaker 04:
That's APPX 561 to 562, Note 7, where we explain what we understood to be the scope of the petition.

[00:02:11] Speaker 04:
That being that the petitioner proposed to modify SIDERA, which was a reference primarily discussing light glucose monitoring, which we view as an invasive technique.

[00:02:24] Speaker 04:
And so they articulated the scope of the petition as being directed to SPO2, non-invasive, and

[00:02:35] Speaker 04:
invasive blood glucose monitoring as modified to become non-invasive.

[00:02:39] Speaker 04:
That's what we understood.

[00:02:41] Speaker 04:
And we made that point because we understood the scope of the claims required to non-invasive parameters.

[00:02:48] Speaker 04:
During the course of a petition... Oh, wait.

[00:02:50] Speaker 01:
But you're not suggesting that that was enough of a preservation for that claim construction issue.

[00:02:56] Speaker 04:
So then, as the proceeding developed, we understood what the scope of the dispute actually was in our surreply.

[00:03:03] Speaker 04:
But the seroplite, APPX676, we pointed out that they no longer were pursuing a theory of sp02 and blood pressure to noninvasive monitoring.

[00:03:18] Speaker 04:
And distinguishing Cydera because it is an invasive glucose monitor, APPX678, where we point out that claims 1 and 13 require non-invasive sensors, plural.

[00:03:30] Speaker 04:
APPX679, where we point out that claims 1 and 13 require non-invasive sensors, emphasized.

[00:03:36] Speaker 04:
APPX680.

[00:03:37] Speaker 01:
Wait, wait, wait.

[00:03:38] Speaker 01:
I get that non-invasive sensors, but you're talking about two different claims, claim 1 and 13.

[00:03:44] Speaker 01:
So you think one should have considered

[00:03:46] Speaker 01:
read into what the plural of non-invasive sensors that you were making this into a climb construction.

[00:03:53] Speaker 04:
Well, it's not that it was a claim construction.

[00:03:54] Speaker 04:
We just didn't feel, as a factual matter, that they had presented an argument that had two non-invasive sensors.

[00:04:00] Speaker 04:
And that's why we have it as plural.

[00:04:02] Speaker 04:
And so in terms of the waiver argument, which is, I think, where your honor's question goes, the board recognized that this was an issue that we had raised.

[00:04:10] Speaker 04:
So at APPX 37, they recognized that we had argued that the petition

[00:04:16] Speaker 04:
Our view was that the petition had previously presented two non-invasive... Our understanding of the petition was that it presented an argument involving two non-invasive parameters, meaning that they had... What was the page size of the petition?

[00:04:32] Speaker 04:
APPX 37.

[00:04:32] Speaker 04:
I'm looking at it.

[00:04:33] Speaker 04:
And here the board says, we don't agree that the petition proposed to modify Sideira's invasive lead glucose monitor into a non-invasive monitor, and instead only proposes a non-invasive polxot simulator for SpO2.

[00:04:48] Speaker 04:
And they go on to the next page, where they make the finding of one parameter.

[00:04:52] Speaker 01:
Well, how does this go to the claims instruction argument about two?

[00:04:55] Speaker 04:
Well, on APPX 56, again, it would be very unusual to find a waiver where the board expressly addressed the issue.

[00:05:03] Speaker 04:
And they say, we recognize parental owners' argument that claim one recites a non-invasive sensor, but use of a non-invasive sensor within a sensor set 102 to monitor SP02

[00:05:13] Speaker 04:
does not preclude use of an invasive sensor within the same sensor set to measure blood glucose.

[00:05:18] Speaker 04:
So our argument has always been that it requires two non-invasively measured parameters.

[00:05:23] Speaker 04:
We didn't present it as a claim construction issue because it was a factual issue.

[00:05:26] Speaker 04:
Whether or not the scope of the claims required that would be a factual issue.

[00:05:30] Speaker 04:
But based upon the board's decision here about the scope of the petition,

[00:05:36] Speaker 04:
We believe the court can resolve the issue on claim construction, properly construed claims.

[00:05:41] Speaker 04:
Now, I don't think there's any dispute for at least some of the claims.

[00:05:44] Speaker 04:
Claims 13, which expressly lists two different parameters depending upon the same one or more signals from one or more non-invasive sensors.

[00:05:54] Speaker 04:
I don't think there's any dispute that we did raise those issues below.

[00:05:57] Speaker 04:
I think maybe the main dispute is whether we raised

[00:06:00] Speaker 03:
I'm sorry, which issue are you saying that you raised below?

[00:06:03] Speaker 04:
We raised the issue of the claim construction for claim 8 and claim 13.

[00:06:10] Speaker 04:
We raised that as a separate issue below and made separate arguments about that below.

[00:06:16] Speaker 03:
About what, exactly?

[00:06:17] Speaker 04:
About what kind of sensor is required for the measurement of the parameters.

[00:06:26] Speaker 02:
Given your numbering, do you disagree with the red briefs argument at 42 that you never argued below that claims 1 to 7, 10 to 12, 15 to 18, and 24 to 26 require two parameters measured by a non-invasive sensor?

[00:06:49] Speaker 04:
I don't agree with that.

[00:06:50] Speaker 04:
And so that's the arguments that I just pointed to you two.

[00:06:53] Speaker 04:
And the surreply, where we're arguing that claims one, three, both require non-invasive sensors, plural.

[00:07:00] Speaker 04:
So that's the issue as we presented it.

[00:07:02] Speaker 04:
And I think that's the issue as the board addressed it.

[00:07:04] Speaker 04:
So the board understood that our argument was

[00:07:07] Speaker 04:
Our argument had been that you need to have two non-invasive sensors to meet those claim limitations.

[00:07:12] Speaker 04:
And the board disagreed and said, no, you only need to have one.

[00:07:15] Speaker 04:
And that was our APX 56.

[00:07:17] Speaker 04:
They recognized our argument and they addressed it.

[00:07:20] Speaker 03:
Right, but they understood your argument as the claim reciting a non-invasive sensor.

[00:07:25] Speaker 03:
And then they said, OK, well, the proposed combination would have a non-invasive sensor to monitor the oxygen saturation.

[00:07:32] Speaker 03:
So I don't think the board understood your argument as you're making it today, because what you cited in the cert reply, it gets close.

[00:07:47] Speaker 03:
But it doesn't quite come out and make the argument

[00:07:50] Speaker 03:
the two measurements each had to be determined from a non-invasive sensor.

[00:07:56] Speaker 03:
And because it didn't quite spell it out like that, I don't think the board understood it like that, because the board said, okay, patent owner is saying that Sidara has an invasive sensor.

[00:08:10] Speaker 03:
Well, and that doesn't meet the claims, because the claim needs a noninvasive sensor.

[00:08:16] Speaker 03:
Well, the proposed combination will have a noninvasive sensor.

[00:08:19] Speaker 03:
And so we can just move right past this argument.

[00:08:24] Speaker 03:
So that's my understanding of how the board understood this.

[00:08:27] Speaker 03:
And so then the question is, did you actually say something here that's clear enough that the board, through everything that it had to face here, was clearly on notice that it had this extra argument that every single parameter of the two parameters has to be coming from a signal from a non-invasive sensor?

[00:08:51] Speaker 04:
So I would say for at least the claims 8 and the dependent claims and 13 independent claims, I don't think there's any dispute that that argument was made below sufficiently.

[00:09:01] Speaker 04:
Because the argument that was made below was that because of the way the claims are structured, claims 13 expressly requires two parameters measured from the signal.

[00:09:12] Speaker 04:
the antecedent basis of the signal.

[00:09:15] Speaker 04:
It uses the same antecedent basis from the same non-invasive sensors.

[00:09:20] Speaker 04:
And so that's the argument we made below.

[00:09:21] Speaker 04:
I don't think there's any dispute that that issue was raised.

[00:09:24] Speaker 04:
For claim 8, it's similar because it takes the antecedent basis for the signal from the same non-invasively measured signal in claim 1 and determines a second parameter.

[00:09:33] Speaker 04:
And so the argument that we made below was that there was an antecedent basis that linked the non-invasive sensor back to the claim 8 and its dependent claims.

[00:09:42] Speaker 01:
So your clock is running.

[00:09:44] Speaker 01:
So you said you have three things to raise with us.

[00:09:46] Speaker 04:
The second issue has to do.

[00:09:47] Speaker 04:
So I'm happy to go into why we think that the claim construction for the claims, and in particular, claim eight and claim 13, would require two non-invasively measured signals.

[00:09:57] Speaker 04:
And the reason why that would lead to reversal if the court agrees with us is because of what the court found on APPX 37 about the scope of the petition, which is only presented

[00:10:07] Speaker 04:
one invasive and one noninvasive signal.

[00:10:10] Speaker 04:
So as a matter of law, it would be insufficient to establish obviousness and report the reverse on those grounds.

[00:10:16] Speaker 04:
The second claim construction issue has to do with the means plus function analysis for claim 18.

[00:10:22] Speaker 04:
We believe that that claim should be given a means plus function construction.

[00:10:27] Speaker 04:
And we raised that issue in our briefing.

[00:10:30] Speaker 04:
The court, the board found that the claim

[00:10:33] Speaker 04:
Claim 18, just about using the words means for, does not, is not deserving of a means plus function analysis.

[00:10:40] Speaker 03:
Right, because it doesn't just say means for, right?

[00:10:42] Speaker 03:
It says physiological sensor means for.

[00:10:46] Speaker 03:
And so I guess that raises the obvious question.

[00:10:50] Speaker 03:
Do you think the term physiological sensor is insufficient structure?

[00:10:57] Speaker 04:
Well, the complete

[00:11:01] Speaker 04:
The complete claim limitation is physiological sensing means, and then it continues on, for putting a signal responsive to a physiological condition of a patient.

[00:11:14] Speaker 03:
Right.

[00:11:15] Speaker 03:
So the question is, do you think that the term physiological sensor is indefinite when it comes to the following functions of outputting a signal responsive?

[00:11:27] Speaker 04:
I don't think that that has this physiological sensor means a means for.

[00:11:32] Speaker 04:
I don't think that has a single meaning.

[00:11:37] Speaker 03:
We have plenty of cases where we've said, OK, memory means four.

[00:11:42] Speaker 03:
That's not 1.126.

[00:11:45] Speaker 03:
Voltage source means for providing a voltage.

[00:11:48] Speaker 03:
That's not 1.126.

[00:11:49] Speaker 03:
that the word means in those situations do no meaningful work.

[00:11:55] Speaker 03:
They don't make an otherwise definite claim, indefinite such that we have to turn to 112.6.

[00:12:02] Speaker 03:
And so that's why clearly the board saw physiological sensor means in the same way as those cases.

[00:12:10] Speaker 03:
I mean, you've got other claims right here.

[00:12:12] Speaker 03:
I don't know.

[00:12:14] Speaker 03:
Claim one that talks about a non-invasive physiological sensor configured to do a couple different functions.

[00:12:22] Speaker 03:
I'm going to guess you don't think that claim one is indefinite or should be understood as a means plus function limitation.

[00:12:30] Speaker 04:
It should not be understood as a means plus function.

[00:12:32] Speaker 04:
It's not indefinite.

[00:12:33] Speaker 03:
That's correct.

[00:12:34] Speaker 03:
Right.

[00:12:36] Speaker 03:
Why isn't there some strong parallelism to think about claim 18, which physiological sensor means for doing function x in the same way as we understand claim 1's physiological sensor for doing function x?

[00:12:51] Speaker 04:
Well, that's because Congress gave a way for the Paranormal to draft claims related to that particular using the means plus function claim language.

[00:12:59] Speaker 04:
And that's what Massimo did here.

[00:13:01] Speaker 03:
Do you think that it's possible though to use definite structure and then tack on the word means at the end of it and that it's not a means plus function limitation or do you think it's always a means plus function limitation every time you use the word means even if there's super definite structure right there in front of the word means?

[00:13:19] Speaker 04:
I think, Your Honor, that the court's precedent clearly says that you have to look at the claim and look at the claim language to determine that determination.

[00:13:27] Speaker 04:
So that's definitely what the court said in Williamson.

[00:13:30] Speaker 04:
I don't think that is an irrevocable presumption, but it does create a presumption.

[00:13:34] Speaker 04:
And so here, the presumption, we don't feel it was overcoming that presumption.

[00:13:40] Speaker 04:
The determination was based upon an expert declaration.

[00:13:42] Speaker 04:
It's a single sentence that just says,

[00:13:45] Speaker 04:
Physiological sensor means just means physiological sensor.

[00:13:48] Speaker 04:
But the expert, when asked, couldn't explain what a physiological sensor was, how many sensors might be involved.

[00:13:54] Speaker 04:
So the basic questions about the scope of that claim term that are answered by the specification in this case.

[00:13:59] Speaker 03:
So it's your position that physiological sensor means is a 112-6 limitation?

[00:14:06] Speaker 03:
You believe it should be construed under 112 paragraph 6?

[00:14:10] Speaker 04:
I believe that the entire physiological sensor means for outputting a signal responsive to a physiological sensor.

[00:14:15] Speaker 04:
OK, it has a presumption.

[00:14:16] Speaker 03:
But you can't confidently say one way or another whether this claim is a means plus function claim or not?

[00:14:23] Speaker 04:
Yeah, I believe that this is a means plus function claim.

[00:14:24] Speaker 04:
We believe it's a means plus function claim, yes.

[00:14:26] Speaker 04:
We believe there's a presumption.

[00:14:28] Speaker 04:
And we're not trying to play a game here.

[00:14:30] Speaker 04:
We believe there's a presumption, and we believe that it should be given a means plus function construction in this case.

[00:14:35] Speaker 04:
If it was given a means plus function instruction, it would raise the same issues, because there's no non-invasive.

[00:14:41] Speaker 04:
We mentioned in our briefing, there's nothing but non-invasive, such as mentioned in the specification or disclosed in the specification.

[00:14:49] Speaker 04:
So it would raise the same issue in terms of the scope of the petition, properly construed as a means plus function claim.

[00:14:57] Speaker 03:
How many references were cited in this patent application?

[00:15:03] Speaker 04:
There are a lot, and I will tell you.

[00:15:05] Speaker 03:
I mean, it looks like the list of references is longer than the written description itself in terms of number of pages.

[00:15:12] Speaker 03:
Judge Chen, it is.

[00:15:13] Speaker 03:
I mean, we're talking like 800 references.

[00:15:15] Speaker 04:
I will tell you there are, if I may.

[00:15:17] Speaker 04:
99% of them submitted by the African.

[00:15:20] Speaker 04:
I'm happy to respond.

[00:15:22] Speaker 04:
I know I'm getting into everybody.

[00:15:23] Speaker 03:
Do you think that's examiner friendly?

[00:15:25] Speaker 03:
We could define that as a document dump on the examiner, right?

[00:15:30] Speaker 04:
Absolutely not.

[00:15:31] Speaker 04:
In this case, I will tell you that the reason for that is, one, it's a very, very crowded field.

[00:15:35] Speaker 04:
And two, it is a very, very crowded field.

[00:15:37] Speaker 03:
I agree with that.

[00:15:38] Speaker 04:
Massimo has been subject to repeated attacks on this ground.

[00:15:42] Speaker 04:
And so now,

[00:15:43] Speaker 04:
Massimo tries to disclose as much as possible.

[00:15:47] Speaker 04:
But in past court cases, Massimo has been repeatedly accused of inactual conduct for hiding references or for other things.

[00:15:53] Speaker 04:
And so now Massimo has, I believe, my understanding is the practice is to disclose with the goal of making sure that the record is complete.

[00:16:05] Speaker 04:
It's not meant to be a document done in any way.

[00:16:08] Speaker 01:
Thank you.

[00:16:09] Speaker 01:
Thank you, Judge.

[00:16:19] Speaker 00:
Good morning, Your Honors.

[00:16:21] Speaker 00:
Good to be back.

[00:16:22] Speaker 00:
My first appearance since COVID.

[00:16:23] Speaker 00:
So the the board engaged in the claim construction on the primary issue, and it followed Phillips and it followed vitrionics to look at the specification, the claims and to construe the claim.

[00:16:38] Speaker 00:
And it's in our strong view.

[00:16:40] Speaker 00:
I've got it right.

[00:16:42] Speaker 00:
The estimates of their grounds.

[00:16:43] Speaker 01:
Are you agree with your friend?

[00:16:48] Speaker 01:
issue with respect to the number of more than one non-invasive?

[00:16:54] Speaker 00:
No, we disagree there, Your Honor.

[00:16:55] Speaker 00:
So the first time they raised the delay, the primary construction was parameter specific delay or suspension period of time.

[00:17:06] Speaker 01:
OK, well that's one.

[00:17:07] Speaker 01:
I don't think you got it.

[00:17:09] Speaker 00:
No.

[00:17:10] Speaker 00:
So I'll leave that one go.

[00:17:12] Speaker 00:
Sounds like that's not of interest.

[00:17:14] Speaker 00:
So as to the one that a lot of the opening argument was talking about, the first time they raised anything about the same signal, the same signal leading to the measurement of two parameters was in the patent owner response.

[00:17:29] Speaker 00:
They did not argue in that brief that there were one non-invasive sensor to measure two parameters.

[00:17:37] Speaker 00:
The first time that argument appeared was in their sir reply at the end of the case.

[00:17:42] Speaker 00:
Neither us nor the board appreciated they were even making it up.

[00:17:45] Speaker 01:
Well, irrespective of that, your friend pointed us to a few pages in the final written decision, including

[00:17:51] Speaker 01:
We're on page 56.

[00:17:53] Speaker 01:
So why do you think?

[00:17:54] Speaker 01:
So it looks like the board took something out that is arguably related to the argument they're making today.

[00:18:00] Speaker 01:
So why don't you read it like that?

[00:18:03] Speaker 00:
So my view of what the board was thinking, and it's what I think the board was thinking, of course, is that they were arguing same signal, two parameters.

[00:18:12] Speaker 00:
Because what the board found with Sedera and the combination with other sensors was that,

[00:18:19] Speaker 00:
you would combine a non-invasive for glucose and a non-invasive for sp02, for example.

[00:18:28] Speaker 00:
So that was tracking the argument for their patent owner response.

[00:18:32] Speaker 00:
They had never made the argument that one sensor, one non-invasive sensor, would measure two parameters.

[00:18:37] Speaker 00:
The first time that argument was raised was in their certify, for sure.

[00:18:41] Speaker 00:
I have no doubt about that answer.

[00:18:44] Speaker 00:
Judge Wallach, to your point, that's the briefing that you're quoting from us.

[00:18:48] Speaker 03:
The board addressed it, though.

[00:18:50] Speaker 00:
I'm sorry, what?

[00:18:50] Speaker 03:
The board addressed it.

[00:18:51] Speaker 03:
The board didn't say this was a waived argument that was raised in the SIR reply.

[00:18:55] Speaker 00:
They did not, Your Honor.

[00:18:56] Speaker 00:
They addressed the same signal argument.

[00:18:58] Speaker 00:
They did not address the one sensor, not invasively measuring two parameters.

[00:19:03] Speaker 00:
That was not addressed in the board's decision.

[00:19:05] Speaker 00:
And let me be clear that

[00:19:09] Speaker 00:
In the background of the 244 patent, sensors that measure one sensor

[00:19:16] Speaker 00:
can measure SPO2, pulse rate, and up to three additional parameters.

[00:19:21] Speaker 00:
Look at column one of their patent.

[00:19:22] Speaker 00:
If they had raised this argument, it would be a non-issue that the prior art disclosed, one sensor measuring not only two parameters, not invasively, but five.

[00:19:34] Speaker 00:
So if that issue had been raised, there would have been an easy answer to it.

[00:19:38] Speaker 00:
This court's precedent, which they cite at page one of their opening brief, Malincroft,

[00:19:45] Speaker 00:
So they cite the case of Malancroft v. Massimo, 147, Fed.

[00:19:52] Speaker 00:
It's appendix 158.

[00:19:54] Speaker 00:
But it's Malancroft versus Massimo.

[00:19:56] Speaker 00:
This court's precedent, where this court, in one of their other cases, talks about one sensor measuring sp02 impulse rate, not invasively.

[00:20:06] Speaker 00:
wrote technology what they're talking about now.

[00:20:09] Speaker 00:
And they didn't raise it.

[00:20:09] Speaker 00:
And if they had raised it, the answer would have been simple, that one sensor could measure two parameters, not invasively, same signal.

[00:20:19] Speaker 00:
This patent was directed to a monitoring system, a processor that had initiated an alarm, hit a delay.

[00:20:25] Speaker 00:
That's what the patent was about.

[00:20:26] Speaker 00:
This patent was not about sensors.

[00:20:28] Speaker 00:
We're now on appeal arguing about whether sensors give patentability to these claims when the sensor technology was literally, I hate to use the phrase, old as the hills.

[00:20:39] Speaker 03:
Your proposed combination, though, used an invasive lead glucose sensor in combination with a non-invasive SPO2 sensor, right?

[00:20:49] Speaker 00:
That is what the board ultimately found because I think that's what the board thought the target was that they were knocking down the broad teachings of Sedera.

[00:20:56] Speaker 03:
So what we're trying to figure out right now is whether or not the other side preserved an argument or how to interpret what they said.

[00:21:08] Speaker 03:
in their SIR reply around A678 to A680 and whether they adequately preserve an argument that your proposed combination fails because there's a requirement in the claims to have both parameters measured by non-invasive sensors.

[00:21:32] Speaker 00:
So the first response is we believe the argument was waived.

[00:21:35] Speaker 00:
Assuming it's not waived.

[00:21:36] Speaker 03:
That's the only thing we have to figure out right now on this score.

[00:21:40] Speaker 03:
Not other arguments you could have made and raised and all of that.

[00:21:45] Speaker 03:
So can you just focus on the actual argument that's here before us in this appeal?

[00:21:50] Speaker 00:
So first of all, we believe the argument's waived.

[00:21:53] Speaker 00:
Second, we made arguments that were of record and that the board actually cites that Sedera teaches in paragraph 73 of Sedera.

[00:22:03] Speaker 00:
This is an argument we made.

[00:22:04] Speaker 00:
I'm not telling you what we could have said.

[00:22:06] Speaker 00:
This is what the board found and what we did say.

[00:22:09] Speaker 00:
And that is a paragraph 73 of Sedera.

[00:22:12] Speaker 00:
It talks about one sensor measuring multiple parameters.

[00:22:16] Speaker 00:
The board goes into the subsidiary finding.

[00:22:19] Speaker 03:
I'm lost here.

[00:22:20] Speaker 03:
You seem to be saying that the board has already addressed this argument that you say this way by making a finding already in its final decision that apparently it didn't have to.

[00:22:33] Speaker 03:
that all of the sensors in the combination are non-invasive.

[00:22:38] Speaker 03:
So to be clear.

[00:22:38] Speaker 03:
I just want to know about waiver.

[00:22:40] Speaker 00:
I understand.

[00:22:41] Speaker 03:
You keep saying, you keep blowing past waiver and wanting to talk about other things.

[00:22:45] Speaker 00:
Fair enough.

[00:22:47] Speaker 00:
So we believe it's waived.

[00:22:48] Speaker 00:
They did not raise it.

[00:22:49] Speaker 00:
Because?

[00:22:49] Speaker 00:
Because they didn't raise it until their cert reply.

[00:22:52] Speaker 00:
And even when they raised it in their cert reply.

[00:22:54] Speaker 03:
They did raise it in their cert reply, and the board addressed what they thought was the argument in the cert reply.

[00:22:59] Speaker 03:
So the board did not think whatever was in the cert reply

[00:23:02] Speaker 03:
was waged.

[00:23:03] Speaker 03:
Now the next question is, okay, we have to look at the content of what was actually raised in the certify.

[00:23:08] Speaker 03:
Did they make the argument they're making on appeal or not?

[00:23:11] Speaker 03:
That's what I want you to focus on.

[00:23:13] Speaker 00:
That's what I want to hear you address.

[00:23:15] Speaker 00:
So we disagree that the board addressed what they raised in the certify, first of all.

[00:23:20] Speaker 00:
because the board did not.

[00:23:21] Speaker 01:
Let's start with the sir reply.

[00:23:23] Speaker 00:
Yes.

[00:23:24] Speaker 01:
Can you answer Judge Chen's question?

[00:23:25] Speaker 00:
Yes.

[00:23:26] Speaker 00:
In the sir reply, there's one paragraph.

[00:23:29] Speaker 00:
And I understand your frustration, so let me try to address it.

[00:23:32] Speaker 00:
I'm frustrated.

[00:23:32] Speaker 00:
I can tell.

[00:23:33] Speaker 00:
And I don't want to frustrate you.

[00:23:35] Speaker 00:
OK.

[00:23:35] Speaker 03:
I mean, let's read the sentences together.

[00:23:37] Speaker 03:
Let's just look at A680.

[00:23:40] Speaker 03:
However, these claims require the same signal, not just the same sensor set, to determine two different measurements.

[00:23:46] Speaker 03:
Moreover, Sotera's sensor set signal is from an invasive monitor, whereas claims 1 and 13 are directed to non-invasive sensors.

[00:23:56] Speaker 03:
All right.

[00:23:56] Speaker 03:
So an argument that's being made by Mr. Helm here is that the claims, they are putting everyone on notice.

[00:24:05] Speaker 03:
You can't rely on a combination that uses one non-invasive sensor and one invasive sensor because the claims require non-invasive sensors, plural.

[00:24:15] Speaker 00:
Correct.

[00:24:16] Speaker 00:
And that's how you know the board didn't appreciate the argument in their silver play.

[00:24:19] Speaker 00:
We didn't either.

[00:24:20] Speaker 00:
The board never would have argued that you would combine a non-invasive sensor, glucose, with invasive if they understood their argument.

[00:24:28] Speaker 00:
We didn't understand it.

[00:24:30] Speaker 00:
The board didn't understand it.

[00:24:30] Speaker 00:
That's what their decision reflects.

[00:24:33] Speaker 00:
They're arguing the board is combining a non-invasive with an invasive.

[00:24:37] Speaker 00:
If they understood their argument to be that one sensor non-invasively measured two parameters, they wouldn't have made that conclusion.

[00:24:43] Speaker 03:
OK.

[00:24:45] Speaker 03:
But was the board unreasonable?

[00:24:47] Speaker 03:
in the way they read this argument.

[00:24:50] Speaker 03:
That's the question we have in front of us.

[00:24:52] Speaker 03:
You seem to be acknowledging yourself that right here, the patent owner made an argument that the claims require multiple non-invasive sensors.

[00:25:03] Speaker 00:
The patent owner raised an argument in their sole reply, which picked up on the same signal argument from their patent owner response.

[00:25:14] Speaker 00:
We thought, and I can tell the board thought, that they were advancing the same signal argument.

[00:25:20] Speaker 00:
What they now say on appeal is that they were advancing the same sensor measures, two signals, two parameters, non-invasively.

[00:25:28] Speaker 00:
We didn't appreciate that, and the board didn't appreciate that.

[00:25:31] Speaker 03:
And I'm trying to find out from you, why can you say that you were reasonable in your reading when the argument clearly says the claims are directed to non-invasive

[00:25:44] Speaker 03:
sensors.

[00:25:47] Speaker 00:
We didn't appreciate a claim construction.

[00:25:48] Speaker 00:
I mean this is a claim construction issue is what they're talking about.

[00:25:51] Speaker 00:
Do the claims require one sensor to measure two signals non-invasively?

[00:25:56] Speaker 00:
So I wouldn't have expected that they were raising a new claim construction issue in a surplus.

[00:26:02] Speaker 00:
I just wouldn't have, your honor.

[00:26:03] Speaker 00:
And we didn't appreciate it and the board didn't appreciate it.

[00:26:05] Speaker 00:
You're asking are we reasonable?

[00:26:07] Speaker 00:
Should the board

[00:26:08] Speaker 00:
and Satara have appreciated that they were raising this new argument in one paragraph out of this volume of briefing and we didn't appreciate it but if you think that they raised it and that it was sufficiently raised to me the remedy and that's first of all you know what I think that the board found addresses it but if not then it would be a reverse and remand for further proceedings to get into what the prior art is which is

[00:26:36] Speaker 00:
Undeniably, you can ask them if he stands back up.

[00:26:39] Speaker 00:
The prior art, undeniably, is one sensor measures up to five parameters, not invasively.

[00:26:44] Speaker 00:
That's the prior art.

[00:26:45] Speaker 00:
I mean, we're arguing about something that has no distinction in the technology that was raised in the surreply belief.

[00:26:51] Speaker 00:
And we didn't appreciate it.

[00:26:52] Speaker 00:
And maybe we're at fault for not appreciating an argument in a surreply.

[00:26:56] Speaker 02:
But isn't your argument, really, that the argument in the surreply follows logically from prior arguments, and that

[00:27:06] Speaker 02:
that to interpret it otherwise is to say that this is a right turn or a left turn.

[00:27:19] Speaker 02:
When you look at it, you say, yeah, this follows from what was said before.

[00:27:27] Speaker 00:
Your Honor, we certainly did not expect that they were arguing the same sensor measures, two parameters, not a base, because that was the prior art.

[00:27:34] Speaker 00:
We just thought it was the same signal.

[00:27:35] Speaker 00:
That's what we thought.

[00:27:36] Speaker 00:
And, Your Honor, maybe we're wrong, but we didn't appreciate it and the board... That oral argument, was the same signal discussed?

[00:27:45] Speaker 00:
I don't recall it, no.

[00:27:46] Speaker 00:
I don't think so.

[00:27:47] Speaker 00:
But, you know, that's not something we focused on.

[00:27:50] Speaker 00:
But no, I don't recall that that was discussed.

[00:27:53] Speaker 00:
Certainly not.

[00:27:54] Speaker 00:
I can tell you, this wasn't discussed.

[00:27:55] Speaker 00:
Not that one sensor measures two parameters, not a base sweep.

[00:27:58] Speaker 00:
That was not discussed, to my knowledge.

[00:28:02] Speaker 00:
We just didn't appreciate the issue.

[00:28:03] Speaker 00:
And maybe it's our fault.

[00:28:04] Speaker 00:
But I didn't see it.

[00:28:06] Speaker 00:
The board didn't see it.

[00:28:09] Speaker 00:
And I got to say that if they thought this was a good claim construction issue, that even though Sedero's right on top of their patent,

[00:28:19] Speaker 00:
The saving argument is that they have a sensor that measures two parameters, not invasively.

[00:28:24] Speaker 00:
If they thought that was the winning argument, how is that not in their patent owner preliminary response?

[00:28:28] Speaker 00:
How is that not raised in their patent owner response?

[00:28:31] Speaker 00:
How does that find its way in a cert apply?

[00:28:34] Speaker 00:
I mean, that's not the sign of a winning argument.

[00:28:37] Speaker 01:
You want to say a couple words about the means plus function issue?

[00:28:40] Speaker 00:
Sure, yes.

[00:28:42] Speaker 00:
So, you know, as a patent practitioner, when you see means, we all understand that it could invoke 112F.

[00:28:48] Speaker 00:
It says physiological parameter means.

[00:28:51] Speaker 00:
That would cover any sensor, right?

[00:28:53] Speaker 00:
I mean, so the one thing that all sensors have in common is they measure a parameter, they send a signal.

[00:28:59] Speaker 00:
That's what our experts said.

[00:29:00] Speaker 00:
If you look at the patent, I don't know how you would assign structure beyond measure a parameter, send a signal.

[00:29:09] Speaker 00:
So our view is that it's either how we've construed it and how the board construed it, or it's indefinite, which is a district court argument.

[00:29:16] Speaker 00:
I can't say to the PTAB in an IPR proceeding that it's indefinite.

[00:29:20] Speaker 00:
That's not an argument I can raise.

[00:29:21] Speaker 03:
Why would you say it's indefinite?

[00:29:23] Speaker 03:
Why wouldn't you just say,

[00:29:25] Speaker 03:
It's either the way you construed it, or it's a 112-6 claim.

[00:29:28] Speaker 03:
And so therefore, you go and look at the corresponding structure and the specification for performing the recited function.

[00:29:35] Speaker 00:
There's no structure that you can assign beyond what we did.

[00:29:38] Speaker 00:
So we think we're right.

[00:29:39] Speaker 00:
To be clear, we think that we're right that in line with a long line of cases that this court has,

[00:29:45] Speaker 00:
where one skill in the art understands the term sensor, physiological sensor means here.

[00:29:51] Speaker 00:
You measure a parameter, you send a signal.

[00:29:53] Speaker 00:
From there a processor deals with that.

[00:29:56] Speaker 00:
So we think we're right.

[00:29:57] Speaker 00:
That's what the board found.

[00:29:58] Speaker 00:
We're in line with a long line of cases where this court has found voltage means, display means, memory means, GPS means.

[00:30:08] Speaker 00:
We believe that this had sufficient structure.

[00:30:11] Speaker 00:
measure a parameter, send a signal.

[00:30:13] Speaker 00:
Beyond that, I mean, they've never argued what structure, and I know it's our burden, but what structure would you add to it?

[00:30:20] Speaker 00:
They've never said what structure you'd add.

[00:30:22] Speaker 00:
I don't know what you'd add.

[00:30:23] Speaker 00:
We've looked at the patent.

[00:30:24] Speaker 03:
Is there a reason why you switched experts?

[00:30:27] Speaker 00:
Yes.

[00:30:27] Speaker 00:
In the middle of the IPR?

[00:30:31] Speaker 00:
There is.

[00:30:33] Speaker 00:
Our original expert was extremely intelligent.

[00:30:36] Speaker 00:
He was an older gentleman, and this happened in the middle of COVID, and he was affected by it, and he lost his focus.

[00:30:43] Speaker 00:
It was sad.

[00:30:44] Speaker 00:
And so they deposed him.

[00:30:47] Speaker 00:
They got to do it, but we had to bring in a new expert just because our other expert was affected by COVID.

[00:30:52] Speaker 00:
It was sad.

[00:30:59] Speaker 00:
I do not.

[00:30:59] Speaker 01:
Thank you, Your Honors.

[00:31:11] Speaker 04:
In terms of raising the arguments, I think it's undisputed that we raise this argument of both measurements in claims 8 and 13 need to come from the same signal.

[00:31:24] Speaker 04:
I think it's also undisputed that our view, everyone understood that at least one of the signals had to be non-invasive.

[00:31:32] Speaker 04:
So claims 8 and claims 13 narrowed that to mean that both of them had to be non-invasive.

[00:31:38] Speaker 04:
I don't think that there's any way to avoid that.

[00:31:41] Speaker 04:
And I think, in particular, as we explain in our reply brief, we have a separate heading for the limitations of claims 8 to 9, 13 to 15, and 19 to 22, where we walk through that.

[00:31:54] Speaker 04:
So I think that that argument.

[00:31:56] Speaker 03:
I'm sorry.

[00:31:56] Speaker 03:
Which pages of your response are you replying?

[00:32:03] Speaker 04:
That would be 680.

[00:32:11] Speaker 04:
in the seroply?

[00:32:12] Speaker 03:
Yeah.

[00:32:14] Speaker 04:
Where we argue that the combination of, we explain their argument, which is the combination meets the signal limitation because it uses the same sensor set to determine two measurements, blood glucose and SpO2.

[00:32:27] Speaker 03:
Right.

[00:32:28] Speaker 03:
However, these claims require the same signal, not just the same sensor set to determine two different measurements.

[00:32:33] Speaker 03:
So that's a continuation of what you argued in your patent owner response about it needs to be the same signal, not two separate signals.

[00:32:42] Speaker 03:
And what is this sensor set 102 in the reference?

[00:32:45] Speaker 03:
That's correct.

[00:32:46] Speaker 04:
Well, this is the first time actually it would be heard about the sensor set theory.

[00:32:49] Speaker 04:
So we're responding to their sensor set theory.

[00:32:51] Speaker 04:
And our response is that that sensor set can't meet the claim limitation because it's from an invasive monitor, whereas claims 113 are directed to non-invasive sensors.

[00:33:00] Speaker 04:
And so claim 1, claim 8 depends on claim 1.

[00:33:03] Speaker 04:
So both of them have that same implication of a non-invasive sensor or the same signal.

[00:33:08] Speaker 04:
And that's what the board addressed in their opinion at 54.

[00:33:14] Speaker 04:
55 expressly address our argument that was