[00:00:00] Speaker 01:
Our final case for today is 21-2359.

[00:00:02] Speaker 01:
I feel like it's Groundhog Day, and I want to go Murray Loop, but it's Medtronic versus Teleflex.

[00:00:10] Speaker 01:
How do I say your name?

[00:00:11] Speaker 01:
Graber.

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

[00:00:12] Speaker 01:
Graber, please proceed.

[00:00:13] Speaker 00:
May it please the court, Jennifer Graber, on behalf of Medtronic.

[00:00:17] Speaker 00:
The board's first legal error was constraining the prior art reference, Ressemon, to its intended purpose, instead of considering Ressemon for everything it taught.

[00:00:26] Speaker 00:
Ressemon's purpose of protecting against M'Bolai is not- Just to back up for a moment.

[00:00:31] Speaker 03:
This IPR does not involve secondary considerations.

[00:00:36] Speaker 03:
There was no reliance by the board on secondary considerations here, right?

[00:00:39] Speaker 00:
That's correct, Your Honor.

[00:00:40] Speaker 00:
There's no secondary considerations at issue in this appeal.

[00:00:44] Speaker 00:
Resiman's purpose of protecting against emboli does not detract from a skilled artisan's motivation to use features from Resiman in a combination with features from Takahashi to achieve a different benefit.

[00:00:57] Speaker 00:
This is a long-established principle of obviousness, as Judge Rich explained in EWP.

[00:01:02] Speaker 00:
A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention that the prior art reference is describing and attempting to protect.

[00:01:12] Speaker 00:
The board misunderstood this court's decision in Polaris versus Arcticat as though it created a rigid legal rule that if a combination did not serve an intended purpose of a reference, that would in and of itself legally negate any motivation to combine.

[00:01:28] Speaker 00:
But Polaris did not create such a constraint on obviousness.

[00:01:33] Speaker 00:
Rather, the prior art reference in Polaris contained a statement criticizing the result of the combination.

[00:01:39] Speaker 00:
There, that was involving an ATV, and if you had added a fuel tank under the seat, as proposed by the combination, that would raise the center of gravity, which the prior art reference there specifically criticized.

[00:01:54] Speaker 00:
But unlike in Polaris, Bressimont does not teach away or criticize the result of the combination, a guide extension catheter with a one French size difference.

[00:02:04] Speaker 00:
This case is much more like Inray Urbanski, which was authored by Judge Laurie,

[00:02:09] Speaker 00:
There, the court explained that nothing in the prior art teaches that the proposed modification would have resulted in an inoperable process, regardless of whether the intended purpose of the primary reference would have been served by the combination.

[00:02:23] Speaker 00:
That's exactly what we have here.

[00:02:25] Speaker 00:
Here, TELFLEX does not dispute that the proposed modification to recimon would be operable as combined.

[00:02:32] Speaker 00:
It would deliver therapeutic devices such as scents or balloons.

[00:02:37] Speaker 00:
And indeed, the board never found that recimon taught away from achieving the proposed modification, the one French size, nor could it, as there's no such criticism in recimon of the resulting modification.

[00:02:48] Speaker 00:
Teleflex's legal argument to the board and now to this court wrongly constrains obviousness to a primary reference's intended purpose, which is essentially an attempt to revive the teaching suggestion motivation test, where a reason for a combination had to be found in the reference itself.

[00:03:05] Speaker 00:
But that rigid approach is

[00:03:06] Speaker 01:
to obviousness is contrary to KSR where the Supreme Court explained that the prior art... Why is Teleflex wrong when it argues that the board found that the entire premise of Ressimone's emboli protection device is using ceiling balloons?

[00:03:22] Speaker 00:
So what the board found was that the primary purpose or the intended purpose of Ressimone... No, not the primary.

[00:03:29] Speaker 01:
They actually said the entire premise.

[00:03:32] Speaker 00:
There are three opinions, and one of them says the entire premise.

[00:03:35] Speaker 00:
I do agree with you, Your Honor.

[00:03:37] Speaker 00:
But the entire premise would be to protect against emboli, and that could be achieved by using sealing balloons on the Resamon device.

[00:03:47] Speaker 00:
But what Telethys is essentially arguing is that that purpose has to be served.

[00:03:51] Speaker 00:
You cannot combine Resamon with any other device.

[00:03:56] Speaker 01:
The board said the entire premise is using sealing balloons.

[00:03:59] Speaker 01:
They're experts.

[00:04:00] Speaker 01:
came along and said ceiling balloons are critical to rest men and the board found you wouldn't be motivated to take the ceiling balloons out of rest men and substitute something else.

[00:04:10] Speaker 01:
Why is that wrong?

[00:04:12] Speaker 01:
I mean if there's a conclusion that a reference has an absolutely critical component and that seems to be the fact finding that was reached here and there seems to be evidence to support

[00:04:24] Speaker 01:
Why is the board airing, because what you're really raising is a question of fact, not a legal question.

[00:04:30] Speaker 01:
So why is there no substantial evidence for the fact finding that one wouldn't have been motivated to make this combination because it involves removing the critical element?

[00:04:40] Speaker 00:
Well, Your Honor, that's focusing on the intended purpose of Resamon itself.

[00:04:44] Speaker 01:
No, it's not focusing on the intended purpose.

[00:04:46] Speaker 01:
It's focusing on the notion that Resamon stands for the entire premise.

[00:04:51] Speaker 01:
It has a critical element.

[00:04:53] Speaker 01:
It's not an intended purpose if a reference says, this element is critical.

[00:04:58] Speaker 01:
All of my embodies include it.

[00:04:59] Speaker 01:
The present invention includes the following.

[00:05:05] Speaker 01:
Why isn't that enough for the substantial evidence that's necessary?

[00:05:11] Speaker 00:
That's not enough, Your Honor, because even if it was critical for the recimon device, the board was required to look at recimon for everything that it taught.

[00:05:19] Speaker 00:
A person of ordinary skill is also a person of ordinary creativity.

[00:05:24] Speaker 00:
And so a person of ordinary skill would look at resummon for everything it taught, including its purpose, and this is not disputed by telephysics, its purpose to deliver therapeutic devices like sensor balloons to a target treatment site, that's in column six of resummon, and would, as a person of ordinary creativity, would take that aspect of resummon, regardless of its purpose of resummon

[00:05:48] Speaker 00:
So for example, in KSR, the purpose there was... No, it's not purpose, right?

[00:05:53] Speaker 01:
Like we're talking about a thing, a ceiling balloon.

[00:05:55] Speaker 01:
That's not a statement of purpose yet.

[00:05:57] Speaker 01:
The purpose in ResMon is to include blood flow and prevent emboli from traveling.

[00:06:02] Speaker 01:
That's the purpose.

[00:06:03] Speaker 01:
But they have a particular way of doing it, and at least the board found, based on expert testimony, that the way of doing it using ceiling balloons was absolutely critical to that reference.

[00:06:14] Speaker 01:
So why would a skilled artist then be motivated to take the ceiling balloons out?

[00:06:18] Speaker 00:
So the ceiling buildings were critical to the purpose of protecting against emboli.

[00:06:22] Speaker 00:
It was not critical to other things that Resamon taught, such as delivering therapeutic devices.

[00:06:31] Speaker 03:
This is actually a legal issue, and there is some authority about it.

[00:06:35] Speaker 03:
Our Intel decision says the fact that you don't achieve the purpose of the prior art reference is not controlling.

[00:06:43] Speaker 03:
Arctic Cat seems to suggest that maybe it's not controlling, but it could be relevant under some circumstances.

[00:06:52] Speaker 03:
But as I read the Arctic Cat decision, that's a situation in which the purpose in the prior art was also a purpose of the invention, vehicle stability.

[00:07:02] Speaker 03:
So where are we on this legal issue, which seems to be relevant to what the board did?

[00:07:09] Speaker 00:
Well, that's exactly right, Your Honor.

[00:07:11] Speaker 01:
So in Intel versus Qualcomm... Well, it's good that you realized that was what we call a friendly question.

[00:07:17] Speaker 00:
And Judge Dyke is completely correct.

[00:07:20] Speaker 00:
In Intel versus Qualcomm, the court reinstated KSR's holding that the intended purpose does not control just because the variable game mixer in that case could have been turned off.

[00:07:32] Speaker 00:
That does not

[00:07:35] Speaker 00:
as your honor said, this is a legal question here.

[00:07:38] Speaker 00:
There's no substantial evidence for that.

[00:07:43] Speaker 00:
Now I think your honor's question is kind of where is the line drawn, and my answer is that the board should have considered everything that the reference has taught, and that includes teaching away as there was in Polaris.

[00:08:01] Speaker 00:
there was a criticizing statement of the result.

[00:08:04] Speaker 00:
So if you had added this fuel tank, it would raise the center of gravity, and that would render the vehicle less stable.

[00:08:12] Speaker 00:
Here, you can remove the ceiling balloons.

[00:08:15] Speaker 00:
That wouldn't affect the combination as proposed, which is Resamon and Takahashi, in order to deliver therapeutic devices such as sensor balloons, unrelated to the intended purpose.

[00:08:31] Speaker 00:
So because the board legally erred on focusing on the intended purpose of Ressemon, rather than everything Ressemon taught, reversal or lease a remand is necessary.

[00:08:41] Speaker 00:
There's a separate reason that a remand is needed for the one French claims.

[00:08:47] Speaker 00:
Just as in Apple versus Andrea, it was an abusive discretion for the board to disregard Metronik's reply arguments that directly responded to Teleflex's patent owner response.

[00:08:57] Speaker 00:
No one suggested that Teleflex was somehow prejudiced here.

[00:08:59] Speaker 00:
Teleflex doesn't claim it, and the board didn't find it, which is not surprising, given that Teleflex was allowed to and did file a certify and address the issue at the oral hearing.

[00:09:09] Speaker 00:
Medtronic's petition proposed combining Reshaman with Takahashi by removing the ceiling balloons.

[00:09:14] Speaker 01:
Hey, you're just reading, and you're reading at warp speed.

[00:09:17] Speaker 01:
You've got to slow down and make an argument.

[00:09:19] Speaker 01:
Because you're reading so fast, I can't even follow what you're saying.

[00:09:21] Speaker 00:
OK.

[00:09:22] Speaker 01:
So look at me.

[00:09:23] Speaker 01:
Try to make an argument.

[00:09:24] Speaker 01:
That way, I'll be able to follow you.

[00:09:26] Speaker 01:
Or you don't have to look at me if you don't want to.

[00:09:28] Speaker 01:
But don't read so fast.

[00:09:29] Speaker 01:
How about that?

[00:09:31] Speaker 00:
Yeah.

[00:09:31] Speaker 00:
So the argument that I'm making, Judge Moore, is that it was an abuse of discretion for the board to not consider the reply arguments that Medtronic made.

[00:09:42] Speaker 00:
So in patent owner response, Teleflex says, and this is at appendix page 21, 726, that removing the ceiling balloons would entirely eliminate recimans and bollocks

[00:09:53] Speaker 00:
protection function in what we were just discussing.

[00:09:56] Speaker 00:
In reply, Metronik was entitled to respond to Telethax's argument in which Metronik explained that filters could be used and preserve that embolic function.

[00:10:09] Speaker 00:
The board doesn't consider these arguments in reply, calling it a new theory, but Metronik's theory never changed.

[00:10:16] Speaker 00:
Medtronic's theory was resummon the takahashi by removing the ceiling balloons as it remained in reply resummon and takahashi by removing the ceiling balloons.

[00:10:25] Speaker 00:
It was entitled to reply to its argument about this elimination argument.

[00:10:31] Speaker 00:
The ability to protect against emboli would not be eliminated by the proposed combination.

[00:10:37] Speaker 00:
In Apple versus Andrea, this court said that the board must consider reply arguments that are responsive because it did not

[00:10:46] Speaker 00:
That also requires a remand.

[00:10:50] Speaker 00:
I'll move now to the board's second set of error regarding the alternative design choice of the double incline.

[00:10:57] Speaker 00:
The first legal error was that the board rejected the motivation to use Kataichi's double incline opening to increase the area of entry for a stent or balloon merely because an alternative design choice, a modified slope of a single incline instead of a double incline could have been selected

[00:11:16] Speaker 00:
instead.

[00:11:17] Speaker 00:
The board agreed that the double incline shape was larger in area, so the evidence there is not disputed.

[00:11:26] Speaker 00:
It just found no motivation because another design choice existed, simply modifying the slope rather than a double incline.

[00:11:35] Speaker 00:
But the law is well-established here, too.

[00:11:37] Speaker 00:
This predecessor court in Enrey Law back in 1962 said that a choice between design alternatives would have been

[00:11:45] Speaker 00:
obvious to a skilled artisan.

[00:11:49] Speaker 00:
I'll move quickly to the written description issue, which is the board's third error.

[00:11:54] Speaker 00:
The substitute claims the plain language requires a side opening that is separate from the substantially rigid segment.

[00:12:02] Speaker 00:
The board failed to even consider whether the original disclosure would have conveyed to a skilled artisan that the applicant possessed the claim subject matter, a device with a side opening separate from a substantially rigid segment.

[00:12:16] Speaker 00:
This case is similar to Power Oasis, which Judge Moore authored, where the original application only disclosed a vending machine with a display or user interface as part of the vending machine.

[00:12:28] Speaker 00:
The court held that there was no written description support for a customer interface apart from the vending machine.

[00:12:35] Speaker 00:
As the Power Oasis court explained, that's because written description must actually or inherently disclose the claim element.

[00:12:43] Speaker 00:
Here, it's not disputed that the original disclosure

[00:12:46] Speaker 00:
does not actually describe a side opening apart from the substantially rigid segment, just like in Power Oasis.

[00:12:54] Speaker 00:
I see that I'm into my rebuttal time, so if there's no further questions, I will reserve the rest of my time.

[00:12:59] Speaker 01:
Yeah, well, reserve a time for rebuttal.

[00:13:01] Speaker 01:
I'm just going to make a sort of practice note, sort of comment.

[00:13:04] Speaker 01:
You know, it never works when you call out which judge authored an opinion.

[00:13:08] Speaker 01:
It actually feels dirty and icky.

[00:13:10] Speaker 01:
It makes us feel like you're trying to convince us that you should win because you're citing one of our personal cases.

[00:13:17] Speaker 01:
You both did it at different times today.

[00:13:19] Speaker 01:
And so I just want to make that note.

[00:13:21] Speaker 01:
We write opinions on behalf of the court.

[00:13:23] Speaker 01:
It's not Judge Laurie's opinion.

[00:13:24] Speaker 01:
It's not Judge Laurie's opinion.

[00:13:25] Speaker 01:
It's the court's opinion.

[00:13:27] Speaker 01:
And it just makes us feel a little uncomfortable when you call us out by name.

[00:13:30] Speaker 01:
So don't do that anymore.

[00:13:31] Speaker 01:
It's just a practice note.

[00:13:32] Speaker 01:
It's nothing to worry about.

[00:13:33] Speaker 01:
Thank you.

[00:13:36] Speaker 01:
Is it Mr. Winkle?

[00:13:37] Speaker 01:
Yes, Winkle.

[00:13:40] Speaker 02:
Thank you, Your Honors, and may it please the Court.

[00:13:43] Speaker 02:
This case exemplifies why motivation to combine is an important consideration in the case law in an obviousness analysis.

[00:13:57] Speaker 02:
One French.

[00:13:57] Speaker 03:
It's important to get it right, too.

[00:13:59] Speaker 03:
And the question is, with respect to recimen and these One French claims, the board's reasoning, pretty much its entire reasoning, is this would not serve the purpose of recimen if you used the One French approach elsewhere.

[00:14:22] Speaker 03:
And I have difficulty in seeing

[00:14:25] Speaker 03:
why that's relevant to motivation to combine.

[00:14:28] Speaker 03:
If that's not a purpose of the patented invention, how can it be that the failure to achieve some other purpose in the prior art defeats a motivation to combine to use this aspect of the invention for another purpose and another invention?

[00:14:49] Speaker 03:
It seems to be very odd.

[00:14:52] Speaker 02:
The important point is,

[00:14:54] Speaker 02:
When a proposed change is so different and you're going to alter the principal operation of that piece of prior art, what this court's case law says is that that proposed change tends to show non-obviousness.

[00:15:07] Speaker 02:
Why?

[00:15:08] Speaker 02:
Why?

[00:15:08] Speaker 02:
Why?

[00:15:09] Speaker 03:
I mean, yes, if in, take Arctic Cat, it's an issue of vehicle stability, which is relevant to the patented invention.

[00:15:16] Speaker 03:
Yes, it can be relevant.

[00:15:18] Speaker 03:
But if the purpose has nothing to do with the patented invention and the purpose here,

[00:15:24] Speaker 03:
uh... uh... uh... the ceiling balloons at rest has nothing to do with the purpose of this invention, right?

[00:15:33] Speaker 02:
It's a great point, and I disagree with that, and here's why.

[00:15:36] Speaker 02:
I think this is an important point when you look at the claim language.

[00:15:39] Speaker 02:
The limitation here is a one French limitation in the claim language.

[00:15:43] Speaker 02:
What that's saying is it's a one French difference between the inner diameter catheter and the guide catheter.

[00:15:49] Speaker 02:
It's essentially saying it's a close-fitting relationship.

[00:15:52] Speaker 02:
Restman, by design, is expressly not a close-fitting relationship.

[00:15:58] Speaker 02:
Restman, by design, is saying, I need to have these seals because I am concerned about embolic protection.

[00:16:04] Speaker 02:
I'm concerned about when I stick a stent up there that there's going to be a piece of emboli that goes up and migrates.

[00:16:10] Speaker 02:
It has nothing to do with this invention, right?

[00:16:12] Speaker 02:
It absolutely has something to do with this invention.

[00:16:14] Speaker 03:
Well, what does it have to do with this invention?

[00:16:16] Speaker 02:
This invention in these claims we're talking about is the one French limitation.

[00:16:20] Speaker 02:
There's an express limitation in the claims that says the inner diameter of the guide extension catheter is one French difference than the inner diameter of the outer catheter.

[00:16:28] Speaker 03:
And the petitioner's position is if you dispense with the ceiling balloons, you can achieve the one French limitation.

[00:16:35] Speaker 03:
And we don't use ceiling balloons because we're not serving the same purpose as recidivism.

[00:16:40] Speaker 03:
We're not concerned with the inbox.

[00:16:42] Speaker 02:
This is where I think this course law comes in.

[00:16:44] Speaker 02:
I think your question was a good one about the

[00:16:46] Speaker 02:
the courts holding an Intel versus Polaris, and I want to talk about the Plaspak case as well.

[00:16:52] Speaker 02:
You correctly note that in Intel, this court said that the purpose in that case was not controlling.

[00:16:58] Speaker 02:
One thing, and in Polaris or Articat, you correctly note that what that case stands for is that we need to look at the entire purpose.

[00:17:06] Speaker 02:
And that's exactly right.

[00:17:07] Speaker 02:
There is no bright line rule.

[00:17:08] Speaker 02:
This is a question of fact that the board analyzed, the board looked at expert testimony.

[00:17:14] Speaker 02:
And if you look at the PLASPAC case, which I think is important in this analysis, PLASPAC stands for the proposition that when there is a change that is going to alter the principal operation, that is absolutely relevant to the analysis.

[00:17:29] Speaker 02:
And that's exactly what the evidence says here.

[00:17:31] Speaker 03:
One of those cases is saying that it's relevant to the analysis if that purpose of the prior art has nothing to do with the workability of the patented invention.

[00:17:41] Speaker 02:
And that's why I go back to the claim language that's at issue here has the one French limitation.

[00:17:47] Speaker 02:
That's why they need to get rid of the ceiling loans, because they need to have the type A. Morgan referred to it as teaching away, but isn't this basically a teaching away argument?

[00:17:55] Speaker 01:
You wouldn't modify this reference for all the reasons the board articulated on page 118, 119, and 120, it's summarized

[00:18:05] Speaker 01:
the patent owner arguments and then said, we adopt the patent owner's position summarized above.

[00:18:09] Speaker 01:
They go on and they explain that the ceiling balloon is absolutely critical to Restman.

[00:18:14] Speaker 01:
They cite the inventor expert testimony and they say, nobody of skill in the art would have looked at Restman and been interested in taking ceiling balloons out and trading anything else.

[00:18:22] Speaker 01:
It is critical to the operability of that invention.

[00:18:26] Speaker 01:
And so it's kind of, although they didn't use the words teaching away, I don't see how this isn't a relevant characteristic in the motivation to combine concepts.

[00:18:33] Speaker 02:
I completely agree, Your Honor.

[00:18:34] Speaker 02:
I think it's very akin to teaching away.

[00:18:37] Speaker 02:
Those words aren't used, but it's exactly right.

[00:18:39] Speaker 02:
And on this point, there is undisputed testimony from both experts.

[00:18:43] Speaker 03:
It's teaching away if you're trying to achieve restman's purpose.

[00:18:46] Speaker 03:
But why is it teaching away if you don't care about restman's purpose?

[00:18:52] Speaker 02:
But one of skill and the art would, of course, care about restman's purpose.

[00:18:55] Speaker 03:
Why?

[00:18:55] Speaker 03:
If they're doing something entirely different, why do they care about restman's purpose?

[00:19:01] Speaker 02:
I go back to my point, this is the whole point of motivation to combine and why we look at teaching away evidence because it all relates to is one of skill in the art going to lean towards making this change or lean towards against making this change?

[00:19:15] Speaker 02:
And when you look at a reference like Restman, the entire point is to seal.

[00:19:21] Speaker 02:
Restman even ties, there's a portion of Restman that even ties the insertion of the scent, the second purpose that Medtronic wants to use.

[00:19:30] Speaker 02:
The whole point of Restman says,

[00:19:32] Speaker 02:
If I insert a scent, there may be emboli that may migrate and that's why I need to have a seal.

[00:19:38] Speaker 02:
Rustman actually ties these two together, ties these purposes together.

[00:19:42] Speaker 02:
That's another important distinction with the Intel case.

[00:19:44] Speaker 02:
In the Intel case, not only was there not this critical purpose, this court found that that reference expressly contemplated the change.

[00:19:54] Speaker 02:
That reference actually expressly contemplated this kind of shunting or nulling

[00:20:00] Speaker 02:
this circuit, the opposite is true here.

[00:20:03] Speaker 02:
Restman, not only does Restman say, I had these ceiling looms, Restman doubles down.

[00:20:08] Speaker 02:
It's in every embodiment.

[00:20:10] Speaker 02:
It is so fundamental to that invention.

[00:20:12] Speaker 01:
I have a completely irrelevant to this discussion question.

[00:20:15] Speaker 01:
I'm just curious, why no secondary consideration here?

[00:20:17] Speaker 01:
Does the claims at issue in this case not embody the commercial embodiments?

[00:20:21] Speaker 01:
Is that why?

[00:20:22] Speaker 02:
No.

[00:20:24] Speaker 02:
So in some of the claims, secondary considerations was argued below.

[00:20:29] Speaker 02:
the board did not reach that in some of these claims.

[00:20:33] Speaker 01:
And I believe it relates to- That's important for me to know.

[00:20:35] Speaker 01:
So if we were going to, if for some reason we found that the board decision wanting, the board would still have to go back and reach secondary considerations in addition to the prima facie case evidence.

[00:20:48] Speaker 02:
If this court reversed and remanded, is that the question?

[00:20:53] Speaker 02:
Yes.

[00:20:54] Speaker 02:
Sorry.

[00:20:55] Speaker 02:
Yes, absolutely.

[00:20:56] Speaker 02:
In the 760 patent?

[00:20:58] Speaker 02:
That is on the one French claims that we're dealing with here.

[00:21:01] Speaker 02:
Secondary considerations were argued below.

[00:21:03] Speaker 02:
That was not reached because they didn't need to reach those issues, but secondary considerations were argued below on that patent.

[00:21:12] Speaker 01:
You know what, it would have been good just as another practice point since I gave to the other folks one.

[00:21:16] Speaker 01:
I'll give you one.

[00:21:16] Speaker 01:
It would have been great if like you had mentioned that in the brief somewhere.

[00:21:19] Speaker 01:
So we knew that there were still these other issues that pertain to the obviousness outcome because obviousness is a question of law, right?

[00:21:25] Speaker 01:
Theoretically, we could decide that question here on appeal.

[00:21:29] Speaker 01:
So it would have been useful to know that, know there are still other fact questions underlying that issue yet to be decided should you disagree with us.

[00:21:36] Speaker 01:
Just next time, tell us that because we're all wondering.

[00:21:39] Speaker 01:
We just assumed, or at least my chambers, we just assumed

[00:21:41] Speaker 01:
Maybe it wasn't extensive with the commercial embodiment or something.

[00:21:45] Speaker 02:
Yes.

[00:21:45] Speaker 02:
Thank you.

[00:21:46] Speaker 02:
It's a great point.

[00:21:47] Speaker 02:
And there's obviously a lot of patents and a lot of claims and a big record here.

[00:21:50] Speaker 02:
So it's well taken.

[00:21:54] Speaker 02:
If I could make a couple of comments on the double incline claims.

[00:22:01] Speaker 02:
The important point here, and I go back to motivation combined, the argument here was we need to have a

[00:22:11] Speaker 02:
proximal opening that has a double incline.

[00:22:15] Speaker 02:
Medtronic's argument starts from a false premise.

[00:22:17] Speaker 02:
That was not known in the art.

[00:22:19] Speaker 02:
There is not a single reference that teaches a proximal opening with a double incline.

[00:22:25] Speaker 02:
There is not one.

[00:22:26] Speaker 02:
What Medtronic does instead is they went and looked at a suction catheter, a device that is different than Restner, which is an embolic protection catheter.

[00:22:35] Speaker 02:
They looked at a different catheter in a different location at the distal end,

[00:22:41] Speaker 02:
that performed a different function and said that provides an obvious, that provides motivation and therefore it's obvious.

[00:22:49] Speaker 02:
This argument reeks of hindsight and the board saw it for exactly what it was.

[00:22:53] Speaker 02:
The board made specific factual findings here that the function of the distal end of the Kakdishi suction catheter

[00:23:03] Speaker 02:
has no bearing on what is going on in the proximal opening of a device that is meant to receive interventional cardiology devices.

[00:23:11] Speaker 02:
The other thing that's important here to note is the difference in direction.

[00:23:15] Speaker 02:
And the board's decision hints at this.

[00:23:17] Speaker 02:
It talks about a distal to proximal direction versus a proximal to distal direction.

[00:23:22] Speaker 02:
In kataishi, the thrombus is coming from a distal to proximal direction.

[00:23:28] Speaker 02:
The whole purpose of that device is to cover, or as our experts said, envelop

[00:23:33] Speaker 02:
kind of wrap itself around a thrombus, which is a clot, to suck that up.

[00:23:38] Speaker 02:
That's an entirely different purpose than the proximal opening of harassment, which is to receive interventional cardiology devices.

[00:23:46] Speaker 02:
As the proximal opening, that opening needs to stay open.

[00:23:50] Speaker 02:
It needs to maintain its luminal patency so that a device can go into it.

[00:23:56] Speaker 02:
Also in the briefing and before the board, Mitronic argued that, well, we need to consider that there's material coming the opposite, flowing through resmin.

[00:24:07] Speaker 02:
That's correct.

[00:24:08] Speaker 02:
When it's going in the opposite direction, again, catechism is teaching to cover and envelop that thrombus at the distal end.

[00:24:17] Speaker 02:
At the proximal opening of resmin, when material, when emboli comes in, that opening needs to stay open.

[00:24:23] Speaker 02:
And there's testimony from the expert that says,

[00:24:25] Speaker 02:
These are two fundamentally different things, and that's exactly what the board held.

[00:24:30] Speaker 02:
The last issue I want to address is written description.

[00:24:32] Speaker 02:
It was talked about briefly in oral argument.

[00:24:35] Speaker 02:
This case presents the not uncommon situation where the claims are simply drafted broader than exactly all the detail that's shown in the embodiments.

[00:24:46] Speaker 02:
And there is nothing wrong with that.

[00:24:49] Speaker 02:
This court has repeatedly held that there can be written description support in that instance.

[00:24:54] Speaker 02:
And here's how we know that, and this is one of these interesting cases.

[00:24:58] Speaker 02:
We know that because the claims read exactly on one of the embodiments.

[00:25:04] Speaker 02:
If I take the claim language and I compare it to an embodiment, the claim reads right on the embodiment.

[00:25:10] Speaker 02:
That is the hallmark of written description support.

[00:25:13] Speaker 02:
The only instances this court has said that that's not allowed is the two main exceptions.

[00:25:20] Speaker 02:
in the unpredictable arts or when the art is immature, or in the situation where there's some kind of criticality, or I like the, in the NRAD Global case, it refers to a necessary versus an unnecessary limitation, whether there's a limitation that's critical.

[00:25:38] Speaker 01:
Can I ask you, are you making, I get the sense that you're making the argument that there is in fact written description support.

[00:25:45] Speaker 01:
Do you alternatively make the argument that the limitation for which Medtronics alleges lacks written description support, namely that they have to be the same, providing a rigid segment and defining a side opening have to be physically the same and can't be physically separate.

[00:26:02] Speaker 01:
Do you argue that that's not actually a claim limitation and so it doesn't matter whether there's written description support for that?

[00:26:09] Speaker 02:
So yes, if you look at these specific claims, that is actually not a claim limitation.

[00:26:14] Speaker 02:
And one of the things we point out is they're brief with this claim language starts from the false premise that says it's an express limitation.

[00:26:20] Speaker 02:
It's not.

[00:26:21] Speaker 02:
And that's the point that we point that out because we're addressing their arguments and their argument starts from a false premise.

[00:26:27] Speaker 01:
The claims... So if we agree it's not a claim limitation, then we don't have to worry about the written description argument.

[00:26:33] Speaker 02:
I think that in and of itself makes the written description argument even easier.

[00:26:38] Speaker 02:
But I would go even further and say, even accepting their premise that we somehow need to have support for a side opening that is outside the claim rigid portion, there is absolutely written description support for that.

[00:26:56] Speaker 02:
Again, if I take the claim language and I put it against one of the embodiments of the patent, I can see that that claim under that interpretation requiring separate and apart,

[00:27:06] Speaker 02:
reads exactly on one of the embodiments.

[00:27:09] Speaker 02:
And one thing that's important here is this criticality, whether there's a necessary limitation.

[00:27:16] Speaker 02:
If you look at this patent and the embodiments in the patent, what the patent says is, I've got a guide extension catheter and I've got a proximal opening.

[00:27:25] Speaker 02:
And it says that proximal opening can be perpendicular or it can be angled.

[00:27:30] Speaker 02:
Preferably it's angled, but it can be perpendicular.

[00:27:33] Speaker 02:
We've got figure 1 shows a perpendicular opening, figure 4 and figure, I believe it's figure 12 and 13, show an angle opening.

[00:27:39] Speaker 02:
So it's figure 4.

[00:27:41] Speaker 02:
The patent also shows that that opening can be cut into the reinforced portion, the flexible tubular portion, or the rigid portion.

[00:27:50] Speaker 02:
There is absolutely nowhere in the specification that says it has to be cut

[00:27:56] Speaker 02:
in the rigid portion and it's, it's very important.

[00:27:59] Speaker 02:
It's special because it's caught in the rigid portion.

[00:28:02] Speaker 02:
In fact, there's an embodiment in figure 10 and 11 that shows taking that metal collar and putting slits in it to make it more flexible.

[00:28:10] Speaker 02:
That's the point.

[00:28:11] Speaker 02:
This case presents the, the not uncommon situation where there's absolutely no criticality.

[00:28:17] Speaker 02:
And let me close.

[00:28:18] Speaker 02:
There's a, there's a great line from this court that, that I think is very apt to this point here.

[00:28:24] Speaker 02:
If the court will bear with me, it's from the Rexnor case, and it cites back to the SRI International case.

[00:28:28] Speaker 02:
It's an in-box decision from this court.

[00:28:31] Speaker 02:
And what it says is, if structural claims were to be limited to devices operated precisely as a specification described and embodiment is operated, there would be no need for claims.

[00:28:43] Speaker 02:
Specifications teach, claims claim.

[00:28:47] Speaker 02:
That's exactly what we have here, Your Honor.

[00:28:49] Speaker 02:
I see I'm out of time.

[00:28:51] Speaker 00:
Thank you.

[00:28:53] Speaker 00:
Thank you, counsel.

[00:28:53] Speaker 00:
Mr. Graber.

[00:28:55] Speaker 00:
Two points, Your Honors.

[00:28:57] Speaker 00:
The first is with regard to the intended purpose.

[00:29:00] Speaker 00:
Teleflex states that this was essentially a teaching away finding.

[00:29:05] Speaker 00:
That's not what the board said, and it's not what Teleflex argued to the board either.

[00:29:12] Speaker 00:
At appendix page 21, 727, it told the board, this is a legal conclusion, a modification that would render the prior art reference inoperable for its intended purpose is not obvious.

[00:29:24] Speaker 00:
as a rule.

[00:29:25] Speaker 00:
That's not true.

[00:29:26] Speaker 00:
And then cites Polaris for that legal proposition.

[00:29:30] Speaker 00:
Had the board wanted to make a teaching away finding, it should have considered recimon for all that it taught.

[00:29:37] Speaker 00:
If you look at appendix pages 42 through 43, for example, it doesn't cite column six of recimon once or any of the other teachings that Metronic pointed it to.

[00:29:47] Speaker 00:
Had it wanted to

[00:29:50] Speaker 00:
Had it wanted to make a teaching away finding based on this intended purpose being a poor purpose, it could have, but it simply did not, based on this legal error that Teleflex presented to it.

[00:30:03] Speaker 00:
So at a minimum, a remand would at least be required for the board to consider everything that Rassman taught, including whether or whether there was teaching away.

[00:30:12] Speaker 00:
That's actually what happened in Polaris.

[00:30:14] Speaker 00:
This court remanded to the board to consider whether there was a teaching away.

[00:30:18] Speaker 00:
and the board actually found that the statement in Polaris was not a teaching away statement that would negate motivation to combine.

[00:30:26] Speaker 00:
And then the second point on written description, Teleflex states that this is claimed embodiment

[00:30:39] Speaker 00:
That's just not true.

[00:30:41] Speaker 00:
What Teleflex is, I believe, arguing is that the claims as written could have the side opening in or out of the substantially rigid segment.

[00:30:50] Speaker 00:
That's not supported by the original disclosure.

[00:30:54] Speaker 00:
There's no written description to support that broader reading of the claims either.

[00:30:59] Speaker 00:
I see my time is running out, so if there's no further questions.

[00:31:03] Speaker 00:
Thanks very much.