[00:00:00] Speaker 04:
Our next argument is 21-2357, Medtronic versus Teleflex.

[00:00:07] Speaker 04:
Ms.

[00:00:07] Speaker 04:
Ahmadi, please proceed.

[00:00:10] Speaker 00:
May it please the court, Brittany Ahmadi on behalf of Medtronic.

[00:00:13] Speaker 00:
The board found that most features of the challenge claims were unpatentable over Contos and other art.

[00:00:20] Speaker 00:
Even though Contos describes a system that's nearly identical to the one described in the patents, the board found some challenge claims patentable

[00:00:29] Speaker 00:
based on minor differences from Contos, all of which it found were also disclosed in the prior art.

[00:00:35] Speaker 00:
I'll first address the side opening claims and one French smaller claim, then the double incline claims, and finally the board's evaluation of secondary considerations.

[00:00:45] Speaker 01:
Could I ask you at the outset about this issue of waiver because of the limited re-hearing that was sought before the director?

[00:00:58] Speaker 01:
I mean there are examples here of

[00:01:02] Speaker 01:
motivations to combine that were argued before the board that the board simply didn't address.

[00:01:08] Speaker 01:
You argue that that's a mistake, that they had to address the motivations that you created, and it's reversible error that they didn't.

[00:01:17] Speaker 01:
And the response to that, as I read the Telflux pleadings, is that no, you've waived that argument because that was not part of the re-hearing that was sought before the director.

[00:01:31] Speaker 01:
And there seems to be a non-precedential decision by our court, Polycon, which might support that.

[00:01:38] Speaker 01:
That's an important issue as to whether you have to seek rehearing before the director on all issues, or whether you can, for exhaustion, or whether you can limit yourself to particular issues, which seems to be central to some of the things that are going on here.

[00:01:57] Speaker 01:
Could you address that, please?

[00:01:59] Speaker 00:
Yes, Your Honor.

[00:02:00] Speaker 00:
Teleflex points to a regulation which states that all matters that the party believes the board misapprehended or overlooked should be raised in a petition for rehearing.

[00:02:11] Speaker 00:
That regulation relates to the issues to be raised for rehearing before the board.

[00:02:15] Speaker 00:
but doesn't affect this court's jurisdiction to hear issues on appeal.

[00:02:19] Speaker 00:
And so as we pointed out in our reply brief.

[00:02:23] Speaker 04:
I think that Judge Steck was suggesting the jurisdictional bar.

[00:02:26] Speaker 04:
I think that what Judge Steck was suggesting is there's a question of potential forfeiture.

[00:02:31] Speaker 04:
And so since you didn't raise it in the rehearing below, shouldn't we take that into account?

[00:02:39] Speaker 01:
It's a question of exhaustion of remedies.

[00:02:43] Speaker 01:
Is there an obligation to raise all issues before the board on rehearing in order to exhaust your remedies for judicial review?

[00:02:52] Speaker 01:
That's the issue.

[00:02:53] Speaker 01:
And we have cases saying, no, you don't have to file a petition for rehearing.

[00:02:58] Speaker 01:
No, the failure to file a petition for rehearing isn't required for exhaustion.

[00:03:03] Speaker 01:
But we've never, aside from this non-precedential decision, addressed the question of whether you have to present all issues to the director on rehearing.

[00:03:13] Speaker 00:
So as we explained in our reply brief, Your Honor, under the Supreme Court's decision in Darby v. Cisneros, this court is not free to impose an exhaustion requirement where there is one accident from statute or regulation.

[00:03:27] Speaker 00:
And with respect to the regulation at issue here, there's no statement that issues that are not raised in a petition for rehearing are subject to waiver.

[00:03:36] Speaker 00:
And notably, the board knows or the patent office knows how to impose that requirement

[00:03:41] Speaker 00:
when it sees fit because there's separate regulations that explicitly state that issues not raised are subject to a waiver.

[00:03:48] Speaker 00:
The Darby v. Cisneros case was not considered in the Polycom decision.

[00:03:52] Speaker 00:
It was not raised by the parties.

[00:03:54] Speaker 00:
And we think that that decision precludes this court from imposing an exhaustion remedy where there's none explicitly stated by statute or regulation.

[00:04:03] Speaker 04:
You don't think the regulation requires you to bring all of your issues before the board if you're filing a re-earning petition?

[00:04:11] Speaker 00:
The regulation requires you to bring all of the issues on which you seek rehearing before the board, but it does not state that that failure to bring an issue results in a waiver of an issue on appeal, particularly where, as here, all of the issues were raised before the board and were passed on before the board, and thus were fully briefed before the board and before this court on appeal.

[00:04:35] Speaker 04:
I'm not positive about what we should do about this exhaustion principle, but it seems to me that if it had any application it would be here, because the issue you're seeking to bring to our attention is not a question of law, for example, but rather a question of fact that you say the board simply failed to decide.

[00:04:55] Speaker 04:
If there were any concept that you would

[00:04:58] Speaker 04:
that I think you really ought to bring in your rehearing petition if you're going to file one, it's that.

[00:05:03] Speaker 04:
Because your argument to me isn't the board got it wrong.

[00:05:06] Speaker 04:
Your argument to me is the board didn't render a decision on it.

[00:05:09] Speaker 04:
That would have been a really easy thing for them to rectify had you mentioned it in your rehearing petition, wouldn't it?

[00:05:15] Speaker 00:
Well, I think there's another distinction here from the Polycom case in the fact that this was a situation where we filed a petition for director review shortly after the Arthrex decision came down.

[00:05:27] Speaker 00:
So it was a petition for director review, whereas in Polycom, it was a petition before the board for panel rehearing.

[00:05:33] Speaker 00:
And so in this situation where director review was sort of at its infancy and parties were raising issues that were a broader implication for the director to review, it wasn't a situation where there was issues that were addressed specific to this case that would be raised before the same panel hearing the issue.

[00:05:53] Speaker 00:
So we think that's another factual distinction from Polycom.

[00:05:56] Speaker 00:
but even setting aside the waiver issue, the issues were fully briefed before the board, they're fully briefed before this court and we think this court has

[00:06:04] Speaker 00:
the discretion to hear the issues on appeal not withstanding any waiver.

[00:06:08] Speaker 00:
We don't think there's waiver here, given the Darby case and the distinctions from color comms.

[00:06:12] Speaker 04:
Well, if we agree with you, it's not waived and that the board failed to address that motivation.

[00:06:16] Speaker 04:
There's actually at least one place in the board opinion.

[00:06:19] Speaker 04:
I don't have it handy, but as a Homer Dyke clerk, I have no doubt you know the record very well.

[00:06:23] Speaker 04:
So where in the record will I find?

[00:06:25] Speaker 04:
I remember somewhere where the board said, well, this is a really close question on motivation.

[00:06:29] Speaker 04:
But then they went ahead and went the route of secondary or objective considerations instead.

[00:06:34] Speaker 04:
And said, even if we agree with Medtronic on the motivation, the secondary considerations outweigh the prima facie case.

[00:06:44] Speaker 04:
So can you remind me where, I don't remember where that is.

[00:06:46] Speaker 00:
Yes, Your Honor, it's at APPX 46 for the 032 patent decision.

[00:06:50] Speaker 00:
And I think with respect to that, the board essentially- Why would you embarrass your judge if you couldn't have answered that question?

[00:06:57] Speaker 00:
With respect to you.

[00:06:58] Speaker 00:
She did.

[00:07:00] Speaker 00:
I know.

[00:07:00] Speaker 04:
I said, why would she even embarrass you if she couldn't have?

[00:07:03] Speaker 00:
Your Honor, with respect to that statement by the board that this is a close case and then skipping to the secondary considerations, we submit that as an error in and of itself.

[00:07:14] Speaker 00:
This court has held repeatedly that the board is required to consider all four grand factors, including motivation to combine when it is contested as it was here.

[00:07:24] Speaker 04:
Yes, but if the conclusion is that the secondary consideration evidence in this case is enormous, which is what they concluded it was,

[00:07:33] Speaker 04:
then that could outweigh even if you're right on motivation to combine.

[00:07:38] Speaker 04:
Even if we give you that, you still lose because the secondary consideration factors outweigh the prima facie case, even if you're right about the motivation to combine.

[00:07:47] Speaker 04:
What's wrong with that?

[00:07:48] Speaker 04:
That seems like a perfectly reasonable thing for a board to do.

[00:07:51] Speaker 00:
So just as the board is not free to say,

[00:07:54] Speaker 00:
all the first three grand factors are such a strong case of obviousness, I'm going to skip the secondary considerations.

[00:08:02] Speaker 00:
It's equally not for you to say, the secondary considerations are so strong that I'm going to skip the first prima facie case.

[00:08:08] Speaker 01:
Well, they didn't say that anyway, right?

[00:08:11] Speaker 01:
They didn't say, even if we're wrong about the prima facie case, it's outweighed by the secondary consideration.

[00:08:17] Speaker 00:
That's correct, Your Honor.

[00:08:18] Speaker 00:
It simply said, this is a close case.

[00:08:20] Speaker 00:
I'm going to just jump right to secondary considerations.

[00:08:23] Speaker 00:
And I think this court has held in cases like ZUP v. Nash that a strong showing of obviousness may stand even in the face of considerable evidence of secondary consideration.

[00:08:34] Speaker 04:
You didn't challenge any of the secondary consideration evidence on appeal, did you?

[00:08:38] Speaker 00:
We do challenge the finding of nexus as well as the finding of copying on appeal.

[00:08:42] Speaker 04:
Okay, but all of the other, the Longfellow need, the industry praise, the licensing, all that.

[00:08:48] Speaker 04:
You didn't challenge any of that, correct?

[00:08:51] Speaker 00:
Apart from the Nexus determination, we've not challenged those specific.

[00:08:56] Speaker 00:
Why don't you move to the Nexus determination then, since that's the only thing that you've challenged?

[00:09:00] Speaker 00:
Certainly, Your Honor.

[00:09:01] Speaker 00:
So with respect to the finding of Nexus, the board violated this court's directive that

[00:09:07] Speaker 00:
If features, and this is in the Ormco case, if features that create the commercial success was known in the prior art, the success is not pertinent.

[00:09:16] Speaker 00:
Teleflex attributed the guideline or success and other secondary considerations to three features, the rapid exchange functionality, the increased backup support, and the... Actually, they argued it was to the combination of all of the elements, so I was just really troubled

[00:09:34] Speaker 04:
by your argument that the board aired by virtue of because every one of these features is found in the prior art.

[00:09:41] Speaker 04:
They argued it was the combination.

[00:09:42] Speaker 04:
The board found it was the combination.

[00:09:44] Speaker 04:
What's wrong with that?

[00:09:46] Speaker 00:
They didn't argue the combination of all the features.

[00:09:48] Speaker 00:
They argued the combination of these three features, which is, and this is that appendix 17.6.10 to 17.6.11 of the patent owner's response.

[00:09:58] Speaker 00:
They argued that it was the rapid exchange functionality

[00:10:01] Speaker 00:
increased backup support and a side opening in a coaxial lumen, which facilitates insertion of cardiology devices.

[00:10:09] Speaker 00:
All of those features, each and every one, is taught by Rethamon.

[00:10:12] Speaker 00:
And so in this particular situation, if everything that is driving the commercial success is taught in a single prior art reference, there is no nexus.

[00:10:23] Speaker 00:
under this court's case law.

[00:10:25] Speaker 00:
Now Tellamux argues that this success was attributable to... They didn't have a coaxial.

[00:10:29] Speaker 04:
They had a dual lumen catheter.

[00:10:31] Speaker 04:
The picture is obvious.

[00:10:33] Speaker 04:
You didn't ask the board to find that.

[00:10:34] Speaker 04:
You never argued to the board that that reference described coaxial.

[00:10:38] Speaker 04:
And the picture itself is the dual lumen.

[00:10:40] Speaker 04:
Just look at it.

[00:10:41] Speaker 04:
Not complicated.

[00:10:42] Speaker 04:
So you never made that argument to the board, this argument that you're making now that this reference discloses everything in the claims.

[00:10:48] Speaker 00:
You never made that argument.

[00:10:50] Speaker 00:
Your Honor, we did make the argument that it's disclosing everything in the claims.

[00:10:55] Speaker 00:
Pelliflex, I think notably, they pointed to on appeal the coaxial lumen limitation in the 032 and 380 patents.

[00:11:04] Speaker 00:
We explained in our papers that resummon includes a coaxial lumen, and that's that APPX 23031.

[00:11:12] Speaker 00:
And with respect to that coaxial lumen, Telefax's papers before the board attributed the coaxial lumen in conjunction with the side opening and the ability to insert cardiology devices with the commercial success.

[00:11:24] Speaker 00:
And Resamon teaches exactly that.

[00:11:27] Speaker 00:
And to the extent that Telefax is now pointing on appeal to the single lumen limitation,

[00:11:32] Speaker 00:
That limitation, there's nothing that indicates that that is inventive in any way.

[00:11:37] Speaker 00:
In fact, the board found that limitations- That's right.

[00:11:40] Speaker 04:
It's not inventive.

[00:11:40] Speaker 04:
And they don't argue that.

[00:11:41] Speaker 04:
But it's the combination.

[00:11:43] Speaker 04:
That's their argument.

[00:11:44] Speaker 04:
I'm looking at 17.610 and 17.611 of the appendix.

[00:11:48] Speaker 04:
This is Teleflex's brief below, where they're arguing that it's the combination.

[00:11:52] Speaker 04:
And they expressly mention the coaxial lumen as one of the elements on 17.611.

[00:11:56] Speaker 04:
So I- In 17.611,

[00:12:02] Speaker 00:
Teleflex states that they have a coaxial lumen through which interventional cardiology devices are insertable, combined with the side opening.

[00:12:11] Speaker 00:
Resamon has a coaxial lumen, which is essentially just a tube, and it has a side opening that facilitates the insertion of cardiology devices.

[00:12:19] Speaker 00:
And so with respect to that aspect of the claims, which was one of the three elements that Teleflex attributed the secondary considerations, Resamon teaches that aspect of the claim.

[00:12:33] Speaker 00:
And I see that I am into my rebuttal time.

[00:12:35] Speaker 00:
Thank you.

[00:12:37] Speaker 00:
Thank you.

[00:12:39] Speaker 04:
Mr. Is it loud?

[00:12:41] Speaker 04:
Loud.

[00:12:41] Speaker 04:
Mr. Loud, please proceed.

[00:12:42] Speaker 02:
Thank you.

[00:12:43] Speaker 02:
May it please the court?

[00:12:44] Speaker 02:
Good morning, Your Honors.

[00:12:45] Speaker 02:
I'd like to start with the issue of Nexus to pick up where the discussion just left off.

[00:12:50] Speaker 02:
Chief Judge Moore, you pointed out that Medtronic didn't argue below that the Restman device teaches a coaxial limitation.

[00:12:58] Speaker 02:
That's correct.

[00:12:59] Speaker 02:
The single page from the petition that's pointed to in Medtronic's

[00:13:02] Speaker 02:
reply brief was talking about the device as a whole being coaxial within a guide catheter.

[00:13:08] Speaker 02:
It wasn't about the evacuation lumen, which is the part of the device through which a stent would pass.

[00:13:13] Speaker 02:
And as you pointed out, Chief Judge Moore, there's a picture of this at page 17 of our brief.

[00:13:19] Speaker 02:
It is not coaxial.

[00:13:21] Speaker 02:
It's fixedly offset by the inflation lumen, which not only offsets that evacuation lumen, but restricts the size of it as well.

[00:13:30] Speaker 02:
Um, to make a further point on that, uh, there is no argument anywhere below or on appeal that Restman teaches the single lumen limitation.

[00:13:39] Speaker 02:
That was also part of what our expert testified was the basis of the nexus to the secondary considerations.

[00:13:44] Speaker 02:
So as to the 776 patent, there appears to be no contest at all on that point.

[00:13:50] Speaker 01:
Can I bring you back to the prima facie case?

[00:13:54] Speaker 03:
Sure.

[00:13:55] Speaker 01:
For example, with respect to the side opening, there are two arguments in favor of motivations to combine.

[00:14:04] Speaker 01:
It makes it easier to extend and retract the child catheter, two separate motivations.

[00:14:08] Speaker 01:
The board did not address those.

[00:14:11] Speaker 01:
Your only argument seems to be that there was a forfeiture because of a failure to exhaust before the director.

[00:14:19] Speaker 01:
So we have this question here as to whether the board's regulation requires exhaustion as a condition of judicial review and even whether they could impose such a requirement as a condition for judicial review.

[00:14:35] Speaker 01:
I have a hard time reading our cases as suggesting that there can be a forfeiture because of a limited petition for a review to the director and it would seem to make no sense.

[00:14:46] Speaker 01:
It would mean that

[00:14:46] Speaker 01:
the director would be burdened with considering every single issue that was decided by the board and the whole purpose of director review is to be selective.

[00:14:55] Speaker 01:
Would you address that?

[00:14:57] Speaker 02:
Happy to do that, your honor.

[00:14:58] Speaker 02:
I just want to make one point, which is we do contest that the board didn't consider those.

[00:15:02] Speaker 02:
That's an alternative basis for affirmance there, but I'll speak to the waiver issue first.

[00:15:08] Speaker 02:
First, I think it's very important to draw a distinction between exhaustion and waiver.

[00:15:12] Speaker 02:
We are not arguing that the decision below is non-final because Medtronic failed to exhaust its remedies below.

[00:15:18] Speaker 02:
It is a final decision.

[00:15:19] Speaker 02:
It is properly appealed to this court.

[00:15:20] Speaker 02:
We don't dispute that.

[00:15:21] Speaker 02:
That's the whole purpose of exhaustion.

[00:15:23] Speaker 02:
That's what Darby versus Cisneros is about.

[00:15:26] Speaker 02:
It's about statutory interpretation of the Administrative Procedure Act.

[00:15:29] Speaker 02:
Is something a final agency action?

[00:15:31] Speaker 02:
No contest that it is here.

[00:15:33] Speaker 01:
However, within a final agency action... How can there be a waiver if they're not required to raise the issue for exhaustion purposes?

[00:15:40] Speaker 02:
They don't have to exhaust.

[00:15:42] Speaker 02:
Exhaustion doesn't run issue by issue.

[00:15:43] Speaker 02:
It just, it runs to the decision of the board.

[00:15:46] Speaker 02:
So the board made a final decision that we agree is reviewable.

[00:15:49] Speaker 01:
So how could there be a waiver?

[00:15:51] Speaker 01:
If they don't have to, if there's no exhaustion requirements, they raise every issue before the director, how can the failure to raise every issue before the director result in a preclusion of judicial review?

[00:16:02] Speaker 02:
Well, just as the Polycom case said, essentially, this court shouldn't be burdened with reviewing issues that could have been raised in a petition for rehearing that was optional, but Medtronic chose to file.

[00:16:13] Speaker 02:
I also want to make a point, which is that there's a limiting principle here.

[00:16:16] Speaker 02:
We're not arguing that Medtronic had to raise every legal error or challenge to the evidence before the board or substantial evidence on a factual question.

[00:16:25] Speaker 02:
Medtronic only had to raise the issues that it believed the board overlooked or misapprehended.

[00:16:30] Speaker 02:
That's what the regulation says.

[00:16:32] Speaker 02:
And the regulation was drafted before director review was, uh, existed.

[00:16:37] Speaker 02:
The PTO can amend that if it chooses to, to lessen the burden on the director in the length of the petitions.

[00:16:43] Speaker 02:
But Medtronic chose to file that rehearing petition.

[00:16:46] Speaker 02:
It's the same regulation that applies if they had filed for board rehearing before that.

[00:16:50] Speaker 04:
Can you switch now to your argument, which you started with, which is that the board implicitly did decide this when they said it was a closed case after they actually went through and articulated exactly these motivations and all of the arguments Medtronic made, and then they said it's a closed case?

[00:17:06] Speaker 04:
And that is, in your view, an implicit decision?

[00:17:09] Speaker 04:
That's my understanding of your argument.

[00:17:11] Speaker 04:
Is that correct?

[00:17:11] Speaker 02:
That's right, Your Honor.

[00:17:12] Speaker 02:
The finding that the evidence on motivation to combine presented a close case is a finding about the weight of the evidence.

[00:17:20] Speaker 04:
And the board's opinion... So, I mean, is your argument that the board considered and even accepted Medtronic's argument when it determined that, but went on to find that the objective considerations, even if Medtronic's argument were accepted, would outweigh?

[00:17:34] Speaker 02:
That's right, Your Honor.

[00:17:35] Speaker 02:
That would be my reading of the board's opinion.

[00:17:38] Speaker 02:
If the court has no further questions, I'll cede the balance.

[00:17:41] Speaker 01:
No, I do have further questions.

[00:17:44] Speaker 01:
With respect to both the side opening claims and the one French claims, you have a situation here where these features are in the prior art.

[00:17:57] Speaker 01:
in the same type of device and generally accomplish the same purposes.

[00:18:08] Speaker 01:
And yet the board seems not to have given weight to that and to have said things which are seemingly not really supported by the record.

[00:18:24] Speaker 01:
For example, with respect to the

[00:18:27] Speaker 01:
one French claims, it says it would require too many modifications, but it never says that those modifications would be beyond the skill of someone in the art.

[00:18:40] Speaker 01:
So don't they have to make that finding?

[00:18:43] Speaker 02:
No, Your Honor.

[00:18:44] Speaker 02:
They weren't

[00:18:44] Speaker 02:
The board didn't find that it would be beyond the level of skill of a person of ordinary skill in the art.

[00:18:51] Speaker 02:
That's a little bit of a mischaracterization in Metronics briefs.

[00:18:54] Speaker 02:
The board's finding was that the sheer number, and this was our argument below, the sheer number of modifications and the fact that the modifications proposed by the petitioner changed from the opening to the reply,

[00:19:06] Speaker 02:
suggests that the combination is only obvious in hindsight, for the whole question of obviousness.

[00:19:11] Speaker 01:
So they never made a determination that these modifications would be beyond the ordinary skilled arts?

[00:19:17] Speaker 02:
They didn't.

[00:19:18] Speaker 02:
There was a determination that it was questionable at least.

[00:19:21] Speaker 02:
as to whether the marker band could be recessed at the distal tip of that device while keeping the distal tip construction as it was.

[00:19:29] Speaker 02:
The issue is the tube of the Contos device has a few different portions that protrude, and those portions within the guide catheter all limit the size of the inner lumen of the Contos device.

[00:19:43] Speaker 02:
Metronik argued that cutting off the flare at the proximal end would allow you to increase the size of the device relative to the guide catheter.

[00:19:50] Speaker 02:
And our point in response was you would need to do something with the other portions of the device as well.

[00:19:56] Speaker 02:
And although we didn't have an opportunity to submit evidence on this because Medtronic raised it for the first time in reply and the board denied the opportunity to submit additional expert testimony, there is some evidence in the record which the board referred to in its decision to show that the

[00:20:13] Speaker 02:
ability of a person to recess the marker band at the distal tip, which you would need to do to increase the size of the lumen, there was at least quite a question as to whether that was possible at the relevant time.

[00:20:26] Speaker 01:
So that's the one on which I think the board did make a finding that it may have been beyond the... Yeah, it doesn't, aside from that one modification, it doesn't even say what modifications would be required or that there was a problem with me.

[00:20:38] Speaker 02:
Well, the modifications that would be required were laid out in our experts declaration in the briefing below.

[00:20:45] Speaker 02:
But the point again is not reasonable expectation of success or the level of skill in the art.

[00:20:51] Speaker 02:
That wasn't the board's finding at all.

[00:20:53] Speaker 02:
It wasn't our argument.

[00:20:54] Speaker 02:
Our argument was the sheer number of modifications coupled with the way that they're being presented to the board.

[00:20:59] Speaker 02:
suggests that the combination is only obvious in hindsight knowing what these are.

[00:21:04] Speaker 01:
What's the basis with respect to the side opening claims for rejecting these two modifications that the board described but didn't address?

[00:21:13] Speaker 01:
You say there was an implicit finding rejecting them.

[00:21:16] Speaker 01:
What was that implicit finding?

[00:21:18] Speaker 02:
I think the finding by the board was that

[00:21:21] Speaker 02:
The evidence was in equipoise on both sides of the case.

[00:21:24] Speaker 02:
So the board's opinions each has a section detailing all of the evidence, petitioner's arguments, patent owner's responses, petitioner's reply, patent owner's sur-apply to the extent that there was a sur-apply there.

[00:21:37] Speaker 02:
So all of the evidence that the board considered is laid out there.

[00:21:41] Speaker 04:
And the way the board wrote these opinions in the... Where is that conclusion that you're suggesting the board reached about the evidence being in equipoise?

[00:21:50] Speaker 03:
Let me point you to that.

[00:21:55] Speaker 03:
There's one in each opinion.

[00:21:57] Speaker 04:
I will point you to... Well, point me to the one about the issue that Judge Dyke is asking you about.

[00:22:05] Speaker 02:
Yes.

[00:22:06] Speaker 02:
Sure.

[00:22:07] Speaker 02:
One moment.

[00:22:09] Speaker 02:
Forgive me.

[00:22:09] Speaker 02:
I think it's page 46 of the board's opinion.

[00:22:13] Speaker 02:
That's right.

[00:22:15] Speaker 02:
So at the top of page 46, and this is the language in the 032 patent decision, there's nearly identical language in the other two decisions as well, the board says, upon review of the party's evidence and supporting evidence, we find the party's arguments present a close case on the question of obviousness.

[00:22:33] Speaker 02:
For example, while side openings were known, they were rare,

[00:22:36] Speaker 02:
Moreover, switching to a side opening to increase the available real estate would require several modifications to the device, at least one of which was not mentioned in the petition and may not have been possible in the relevant time period.

[00:22:47] Speaker 01:
Okay, but that finding that rarity is somehow relevant is itself an error, right?

[00:22:53] Speaker 02:
I disagree with that, Your Honor.

[00:22:54] Speaker 01:
We've said repeatedly that in addressing obviousness, you assume familiarity with all the prior art.

[00:23:03] Speaker 01:
And they're saying that in terms of motivation, you don't have to make that assumption.

[00:23:07] Speaker 01:
You ask whether it's a rear feature.

[00:23:10] Speaker 02:
No, Your Honor.

[00:23:11] Speaker 02:
I think it's, but it stands to reason, if a feature was ubiquitous in the prior art for a particular purpose, that would present an exceptionally strong case of motivation to combine.

[00:23:19] Speaker 02:
The board's point here was simply that the converse is true as well.

[00:23:23] Speaker 02:
If a feature is uncommonly or rarely used for a particular purpose, that tends to at least weaken, if not eliminate entirely, the motivation to combine on that point.

[00:23:32] Speaker 02:
And again, in my reading of the board's opinions, they reviewed all of the evidence and arguments and simply found that it was a close case, that whether Medtronic had made its case or not on a prima facie basis, the very strong evidence of secondary considerations, the vast majority of which was undisputed, below and on appeal, weighed in favor of a fattened finding of patentability.

[00:23:54] Speaker 01:
And that's in the paragraph following the one you read earlier.

[00:23:58] Speaker 01:
Precisely.

[00:23:59] Speaker 01:
But that's only with respect to the side opening claims, right?

[00:24:02] Speaker 02:
That's with respect to the side opening claims.

[00:24:05] Speaker 02:
That's correct.

[00:24:05] Speaker 02:
As to the one French claims, the double incline claims, and the motion to amend claims, there were further findings that the motivation to combine simply had not been shown.

[00:24:14] Speaker 02:
But let me make a point, Your Honor.

[00:24:15] Speaker 02:
This court does not need to reach the one French claims or the double incline claims.

[00:24:22] Speaker 02:
All of the double incline claims have the side opening feature.

[00:24:25] Speaker 02:
So it's not as clear as it could be from the board's opinion, but that is a

[00:24:30] Speaker 02:
sufficient basis to affirm all of the double incline claims.

[00:24:34] Speaker 02:
And as to the one French claims, while not all have the side opening, all of them depend on the same combination and the same motivations to combine that the board addressed here, which is in fact the sort of upsizing of the lumen of the device compared to the guide catheter.

[00:24:48] Speaker 04:
Okay.

[00:24:51] Speaker 02:
Thank you.

[00:24:51] Speaker 02:
Thank you.

[00:24:53] Speaker 00:
If I could make three brief points.

[00:24:55] Speaker 00:
With respect to, I think, the last argument about the board summarizing the party's arguments, this court has held in cases like Inray-Newvasive that it's not sufficient for the board to simply summarize and reject arguments without explanation, which is precisely what the board did here.

[00:25:13] Speaker 00:
The board is required to make a finding with respect to motivation to combine when it is disputed.

[00:25:18] Speaker 01:
Is this a situation in which the board said, we agree with the patentee's evidence?

[00:25:23] Speaker 00:
It's not, Your Honor.

[00:25:24] Speaker 00:
The board didn't make a finding one way or the other.

[00:25:27] Speaker 00:
It just stated this is a close case, and so we look to the evidence of secondary consideration.

[00:25:32] Speaker 04:
Well, do you think, with the board, you don't like the exact language the board used, but would you be telling me the board erred if it said, even accepting as true Medtronic's motivation to combine, we still think it's a close case, and let's go on to the secondary considerations, and they outweigh it.

[00:25:49] Speaker 04:
So do you think it would have been legitimate had the board said that?

[00:25:53] Speaker 00:
I think there's still errors in the board's analysis and the treatment of those, including legal errors that we explained in our papers, including the- I'm going to answer my question, which is your argument right now to Judge Dyke is that there's a problem because the board didn't make a fact finding on this particular motivation combined issue.

[00:26:10] Speaker 04:
Let's just focus on the side opening.

[00:26:12] Speaker 04:
They didn't make that decision, and you think that was error for them not to decide that fact question.

[00:26:17] Speaker 04:
And my question to you is, would it have not been error had they decided that fact question in your favor, but then gone on to say, nonetheless, the objective evidence outweighs that weak prima facie case?

[00:26:29] Speaker 00:
In this case, it still would have been error because the board's reliance on the modifications is not a sufficient basis to negate obviousness here.

[00:26:38] Speaker 00:
particularly where, as Mr. Lott explained, all of those modifications.

[00:26:42] Speaker 04:
You're just not listening.

[00:26:43] Speaker 04:
My hypothetical does not involve the million other issues and arguments you might raise.

[00:26:48] Speaker 04:
Assume you've made a prima facie case on all of that, but the board has come along and concluded that prima facie case is weak and they'll just give you credit for the motivation to combine.

[00:26:58] Speaker 04:
Is there an error in them going on and saying, nonetheless, secondary consideration outweighs that?

[00:27:05] Speaker 01:
The answer has to be yes, that would be sufficient as long as their analysis of the secondary considerations is correct, right?

[00:27:14] Speaker 00:
I think in this particular case, setting aside all of the errors that in the board's analysis, which we don't think are sufficient to be able to overcome the motivation to combine here, that would be correct.

[00:27:28] Speaker 00:
the secondary considerations, which we also dispute was correctly decided here.

[00:27:32] Speaker 00:
You actually don't dispute the secondary considerations.

[00:27:34] Speaker 00:
You just dispute the nexus, correct?

[00:27:36] Speaker 00:
The nexus and the finding of copying, which the board relied on particularly to come to the conclusion of non-obviousness here.

[00:27:45] Speaker 00:
One last point to make here is that with respect to the modifications issue, that applies only to the fourth motivation that Medtronic identified.

[00:27:56] Speaker 00:
So there were four motivations.

[00:27:58] Speaker 00:
One of which was increasing the relative size of the inner catheter relative to the outer catheter.

[00:28:04] Speaker 00:
No modifications would be necessary to achieve the other motivations to combine, including the two that the board did not address.

[00:28:11] Speaker 00:
And the second, inserting interventional cardiology devices, which the board addressed by stating that it was rare to do so, which, as we argued in our papers, was an error, independent error of itself.

[00:28:24] Speaker 04:
Okay.

[00:28:25] Speaker 04:
Thank both councils.

[00:28:26] Speaker 04:
This case is taken under submission.