[00:00:00] Speaker 03:
The first case is Saram Tech versus Coors Tech, 2023-1502.

[00:00:10] Speaker 03:
Ms.

[00:00:11] Speaker 03:
Ellsworth.

[00:00:13] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:00:16] Speaker 00:
Jessica Ellsworth for Appellant Saram Tech.

[00:00:19] Speaker 00:
This case asks whether the color pink is functional when applied to hip joint components, and thus not a protectable trade dress.

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The answer is no.

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Just like pink insulation or green-gold dry cleaning pads, Sarantek's pink hip components are also protectable.

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The board reached a contrary conclusion based on incorrectly applying

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the Supreme Court's traffics decision and misreading the patents.

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It then disregarded independent scientific testing without explaining why.

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And it got the evidence wrong on alternative designs and costs, starting with traffics, which is where the board's analysis went sideways.

[00:01:09] Speaker 04:
It held it.

[00:01:09] Speaker 04:
Can I just ask you, I took it from the board's opinion that

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There was considerable evidence that with functional properties in mind, chromium at various levels was added to otherwise altered components to make up the ceramic for purposes that there was a fair bit of evidence that certainly at the time

[00:01:48] Speaker 04:
your company touted as helping make the overall material a better material, whether hardness or toughness or truly functional properties.

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And for at least some of those compositions, pink just arrives naturally out of the choice of functional components.

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And the board said there was enough evidence for that and therefore you can't get a forever protection against other people using pink because that would give you a forever protection against their creating these compositions.

[00:02:36] Speaker 04:
What's wrong with that?

[00:02:39] Speaker 00:
There are a couple problems with that, Your Honor.

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And I'd start with the fact that this

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patent doesn't assign any specific functionality to .33 weight percent chromium, which is, as your honor pointed out, what does result in a pink ceramic.

[00:02:59] Speaker 04:
But the patent doesn't assign any functionality to that as opposed to the... But the two trademark registrations cover that.

[00:03:08] Speaker 00:
The two trademark registrations do cover that.

[00:03:10] Speaker 04:
And they will cover a number of different possible uses of chromium that turn out to be pink.

[00:03:21] Speaker 00:
So Your Honor, I think that if I'm understanding your question, the trade dress does cover a pink hip implant component, the Biolex Delta, which is what our client sells.

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And C5 wanted to imitate that color,

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approached Chromium as a colorant to turn their white product the same color that Ceramtech's product is.

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That was their goal.

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They did not approach Chromium with an eye to improving hardness of their product in any way.

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They had been telling the market for years that their white product was, in fact, better than the pink product that Ceramtech was selling.

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I think

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So it's important to keep in mind that when traffic came up to the Supreme Court, the court rejected the idea that a past utility patent is somehow a per se or automatic bar against later trade dress.

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And the Supreme Court's decision makes clear that there is room for both utility patents that cover functionality and trade dress, as long as what you are getting the trade dress on is not, in fact,

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a functional aspect of the product.

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And there is really no evidence in this case that 0.33% weight percent chromium plays a functional role in this ceramic material.

[00:04:50] Speaker 02:
The 0.33 is within the scope of the claim of the 816 utility patent that you acknowledge is what your product is an embodiment of that claim, correct?

[00:05:02] Speaker 00:
It does practice that claim because it falls within the range.

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This patent covers really millions of compositions because it requires certain molar ratios and volume percentages and weight percentages of multiple constituent elements, aluminum, zirconium, chromium.

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So it does cover your embodiment that you market.

[00:05:24] Speaker 02:
that means there's substantial evidence for the board's finding that the first of the Morton-Norwich factors favors the finding of functionality, doesn't it?

[00:05:34] Speaker 00:
I don't think that's right, and in part it's because the range of chromium that's covered in this patent results in ceramics of really all colors.

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They can be white.

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They can be red.

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They can be purple.

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They can be yellow.

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They can be gray.

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They can be black.

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So the functionality that's described in the patent is not particular to anything that falls within that range of chromium, that range of colors.

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If you look at Qualitex, which is the Supreme Court's decision on a color trade dress, the court was clear that

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even if having some color is functional, in that case it was the green-gold color on the dry cleaning pads, that that doesn't in and of itself mean that all color is functional.

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And I think that the same reasoning applies here, where there is a wide variety of colors that result from the chromium range that's described in the patent, and that chromium range is

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assigned a kind of a standard functionality in the patent.

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It doesn't describe any particular end of that range as being more or less useful.

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And in fact, we know now from the German Institute testing, as well as testing that the parties have done in this case, that there is in fact no functional benefit to this ceramic composition that comes from this very tiny percent of chromium that's included.

[00:07:07] Speaker 02:
I did want to ask you about the German evidence.

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First of all, you said it was summarily disregarded by the board, but I don't understand how we could ever say that.

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There are extensive proceedings here, and I know in Colorado before, and the board spends something like eight pages addressing or at least outlining the German evidence.

[00:07:27] Speaker 00:
Your Honor, I think you can say it for the same reason that in newvasive, this court rejected a similar error, which was to essentially summarize the evidence and then just offer a conclusion without any reasoning.

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And that is what the team has done.

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Or whether it's the reasoning they found the expert of the other side more persuasive than your expert.

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That is the one line that's included in the TTABS decision.

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It does say that without any explanation of why.

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And the lack of an explanation is really important.

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Because if you look at what that expert's criticisms were, his first criticism, his primary criticism was, well, you shouldn't give any weight to the German testing because this material is so hard to begin with that you can't actually measure the incremental hardness from chromium.

[00:08:12] Speaker 00:
It's just not measurable.

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That should give the court some pause, that if it's not measurable, how is it playing a functional role?

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His second criticism was that the German Institute testing was not done in the body.

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No testing of ceramic implants is ever done in the body.

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And in fact, when you want to locate the analysis on

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the exact hardness impact of different levels of chromium, which is what the German Institute was doing, it would make no sense to do it in the body.

[00:08:46] Speaker 02:
But why isn't all of the back and forth about the German evidence, the fact dispute that the board was privileged to resolve, and it all goes into that first Morton Norwich factor, and you're not happy with how they resolved it, but you haven't shown there's not substantial evidence for how they resolved it.

[00:09:06] Speaker 00:
Well, I think we have shown that there is not substantial evidence for a number of things.

[00:09:10] Speaker 00:
There's the traffic's error up front, which I think is not a substantial evidence error.

[00:09:14] Speaker 00:
The traffic's error is really the legal weight that should be assigned to a patent where the central feature that's claimed in the patent is not the same as what's in the trade dress.

[00:09:25] Speaker 00:
There is no claim in the patent that is specific to 0.33 weight percent chromium

[00:09:32] Speaker 00:
the color pink used for ceramic hip components.

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So we have this legal error up front.

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Then we have a substantial evidence error.

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And the way I think of it, Judge Stark, is that the German Institute testing is the equivalent of direct evidence of a lack of functionality, while the other Morton-Norwich factors really are more like circumstantial evidence.

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And of course, you can often prove a case through circumstantial evidence.

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Direct evidence is often not available.

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But here it was available.

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The TTAB just really summarily brushed it aside based on a set of criticisms that it gave this court no basis to determine if the TTAB's analysis of those criticisms was valid or not.

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And I think that is, as I mentioned, an evasive case is a prime example where this court has said it is not enough to simply summarize evidence and then say that one side wins or loses.

[00:10:29] Speaker 00:
You have to explain why.

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On substantial evidence, the TTABS errors went further because it found the cost factor and the alternative factor were neutral when, in fact, there was no evidence that it was any less expensive to make a pink product.

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In fact, the evidence cut the other way.

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It was more expensive.

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And on alternatives, the C5 itself has an alternative.

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There was a blue actual product that was identified as an alternative with the same

[00:11:02] Speaker 00:
properties as Biolex Delta.

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And the addition of chromium, everybody agrees, can result in a wide variety of colors.

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Chromium actually is derived from the Greek word chroma, which means color.

[00:11:17] Speaker 00:
So chromium does not equate to pink.

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And so I think the board had a problem not just with the traffic there up front, but then also with the way it disregarded the German studies or brushed them aside,

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without engaging in the criticisms that our expert had offered into the record about why their experts' criticisms essentially made no sense.

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And then we have errors on both cost and the alternative design as well.

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There's one more thing that I would mention that I think reflects the PTAB's misunderstanding of this patent.

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The PTAB found that the 816 patent assigned functional benefits to chromia that went beyond hardness.

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And it said the patent spoke to toughness and stability.

[00:12:10] Speaker 00:
And that is an indication that I think the TTAB really didn't understand this patent.

[00:12:14] Speaker 00:
Because the patent describes toughness as coming from zirconia.

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It is, in fact, a zirconia toughened aluminum.

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And the stability that's described in the patent comes from stabilizing oxides.

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not from chromia.

[00:12:26] Speaker 00:
So there are many ways of looking at what the TTAB did that show it misunderstood the patent, it misunderstood traffics, and it made errors in the substantial evidence evaluation of the rest of the evidence.

[00:12:39] Speaker 00:
I reserve the remainder of my time for rebuttal.

[00:12:42] Speaker 03:
We will save it for you, Mr. Horwitz.

[00:12:55] Speaker 01:
Thank you, Your Honor, and may it please the Court.

[00:12:57] Speaker 01:
I want to start with my friend's observation or contention that there's no evidence on our record that 0.33% chromia is functional.

[00:13:06] Speaker 01:
And for that, I point the Court to the undisputed findings on Morton-Norwich Factor II.

[00:13:11] Speaker 01:
So recall that it is undisputed that CeramTac conditioned the market over many years to understand that the pinkness in its patented ceramic material came from adding a specific amount of chromia

[00:13:24] Speaker 01:
to make the material harder.

[00:13:26] Speaker 01:
And then, Judge Toronto, you mentioned you can't get a forever monopoly.

[00:13:30] Speaker 01:
There's also an undisputed finding in that same section on Morton Norwich Factor II that the board's impression was that they sought trademark protection specifically to stave off competition in the wake of the expiration of their patents.

[00:13:44] Speaker 01:
So they have conditioned the market to understand that when you see pink, that is functional.

[00:13:50] Speaker 01:
And then why is 0.33% important?

[00:13:53] Speaker 04:
Your phrase conditioned the market to think.

[00:13:55] Speaker 04:
I'm not quite sure what to make of it.

[00:13:58] Speaker 04:
I think that maybe one version of the other side's pitch is that they turned out to be wrong about a whole slew of assertions about the role of chromium.

[00:14:15] Speaker 04:
And now that we know the truth, there just isn't any functional reason to do something that turns out to be pink.

[00:14:28] Speaker 01:
So their contention is that what they told the market and what they described in the patent was actually wrong all along.

[00:14:33] Speaker 01:
That's true.

[00:14:34] Speaker 01:
And there is a fact question that is not really any of the Norwich factors, but in that other consideration section of the board opinion.

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about whether the best understanding of the science today is that chromia is, in fact, functional.

[00:14:48] Speaker 01:
That's a fact question that, as Judge Stark you pointed out, the board was.

[00:14:52] Speaker 04:
Is it enough for you that it is reasonable to think, even if one doesn't know for sure, that chromia at pink-causing levels may well sometimes be functional?

[00:15:10] Speaker 01:
I mean, I think the findings in the board's opinion are stronger, but I think that would be sufficient.

[00:15:15] Speaker 01:
So this is all about competition, right?

[00:15:17] Speaker 01:
Ultimately, we're trying to compete in a market that understands and has been educated to understand.

[00:15:21] Speaker 01:
This is the undisputed finding at page 95 of the board's opinion.

[00:15:24] Speaker 04:
Well, maybe that was all, what's the phrase today, misinformation.

[00:15:29] Speaker 01:
So, again, whether it was as factual, there's competing expert evidence, the findings went our way, not theirs, including, I think, no, 231 is particularly strong on this.

[00:15:37] Speaker 01:
The board wasn't willing to cast aside decades of research and peer-reviewed literature by experts in the field in light of some more recent evidence from Dr. Michalski.

[00:15:47] Speaker 01:
But supposing the board had gone the other way.

[00:15:50] Speaker 04:
I guess I'm just trying to understand how much here depends on concluding that the board had substantial evidence to discount all this late breaking research from the German scientists who were saying something like the opposite for a long time.

[00:16:13] Speaker 01:
I don't think much rides on it.

[00:16:14] Speaker 01:
I think you could.

[00:16:16] Speaker 01:
One path to affirmance, which is the most straightforward, I think, is to say it's a factual dispute on a scientific question of functionality.

[00:16:23] Speaker 01:
It goes our way.

[00:16:24] Speaker 01:
Another path to affirmance is it's not clear that it would go our way.

[00:16:28] Speaker 01:
And nonetheless, under Morton-Norwich balancing each of the four factors, one of them is that there is a utility patent that discloses the utilitarian advantages.

[00:16:37] Speaker 01:
That goes our way.

[00:16:38] Speaker 01:
It's strong evidence.

[00:16:39] Speaker 01:
It's also strong evidence under Morton-Norwich factor two.

[00:16:42] Speaker 01:
And again, undisputedly strong evidence.

[00:16:44] Speaker 03:
Counsel, the board relied heavily on the 816 patent.

[00:16:49] Speaker 03:
That patent, if I read it accurately, doesn't even mention pink, and it mostly describes materials with zirconia.

[00:16:59] Speaker 01:
So the patent by itself doesn't mention pink, that's true.

[00:17:02] Speaker 01:
That's why the board's findings crucially rely on the combination of the patent's disclosures and the admissions from CeramTech that number one, BioLox Delta practices the patent, and number two, the chromia in implementing the patent causes it to be pink.

[00:17:17] Speaker 01:
Now in terms of the zirconia question, I would actually say if you look at the key passage at the bottom of three to the top of four of the 816 patent, as well as the key moment in the prosecution history

[00:17:29] Speaker 01:
where they're overcoming the prior art.

[00:17:31] Speaker 01:
The patent is at 1238 and the prosecution history is 1728, so both in volume, excuse me, the patent's in volume two, the file history's in volume three.

[00:17:41] Speaker 01:
But anyway, in both cases, what CeramTech is telling the public and telling the patent office is that

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The problem is combining good toughness with great hardness.

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And the solution is a very specific molar ratio among the constituent elements, zirconia on the one hand and chromia on the other.

[00:17:59] Speaker 01:
So chromia imparts the hardness that counteracts the loss of hardness from the zirconia, which is added to toughen.

[00:18:05] Speaker 01:
It's the combination of all the elements in that ceramic matrix that allows you to get the combination of desired mechanical properties.

[00:18:13] Speaker 01:
And those are the superior mechanical properties

[00:18:15] Speaker 01:
that CeramTech told the public it should associate with pinkness.

[00:18:19] Speaker 01:
So you've got Morton Norwich factor one, it goes our way.

[00:18:23] Speaker 01:
Morton Norwich factor two, it goes our way.

[00:18:25] Speaker 01:
And then you weigh the factors and ask the ultimate factual question, which is the board's question to answer, is this functional under Morton Norwich?

[00:18:35] Speaker 01:
Substantial evidence supports it.

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Even if you weren't so sure

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and the other considerations part of the opinion about what to make of the late-breaking German studies that were from the German litigation as against the weight of the evidence from decades of research going the other way.

[00:18:52] Speaker 02:
Remtek argues that you didn't suggest that the patents disclose any advantages from the chromium other than hardness, but yet the board purported to find other advantages that you didn't even try to prove.

[00:19:05] Speaker 02:
Is that fair?

[00:19:06] Speaker 01:
I think we focused on hardness.

[00:19:09] Speaker 01:
I think the best way to understand what the board is doing there has to do with the mix point that I was making before.

[00:19:15] Speaker 01:
The problem identified in the patent is how do you get the mix of mechanical properties you're looking for?

[00:19:21] Speaker 01:
Good hardness, good toughness combined with great hardness is how it's described.

[00:19:26] Speaker 01:
It's true, I think.

[00:19:27] Speaker 01:
although there's some evidence suggesting chromium might have other properties.

[00:19:31] Speaker 01:
It's true that zirconia was added primarily for toughness, and chromia was added primarily for hardness, and the stabilizing agents were there for stabilization.

[00:19:39] Speaker 01:
But it is the matrix together that is the great invention.

[00:19:42] Speaker 01:
And if you look at that file history, they're trying to overcome art.

[00:19:46] Speaker 04:
It's very closely related to that.

[00:19:48] Speaker 04:
I think I'm remembering, just tell me if I'm off on this, that the zirconia

[00:19:54] Speaker 04:
was increased or something for toughness, they recognized there was a price being paid in hardness, and chromia basically reduced that price.

[00:20:04] Speaker 01:
That's right.

[00:20:05] Speaker 01:
That's a fair way to describe it.

[00:20:06] Speaker 01:
And in fact, they mention in their brief that any amount of chromia will do, and actually the very same discussion... So it's conceivable to say that

[00:20:15] Speaker 04:
you have chromia in order to enable you to get the toughness, which actually comes from the other thing.

[00:20:20] Speaker 01:
That's exactly right.

[00:20:21] Speaker 01:
And it was known that zirconia could increase toughness.

[00:20:23] Speaker 01:
So it wasn't as if the great invention was, oh, let's add zirconia for toughness.

[00:20:29] Speaker 01:
The thing they said to distinguish their invention from the prior art was the very specific molar ratio of the constituent elements that balances the desired mechanical properties.

[00:20:39] Speaker 01:
And in their commercial implementation, that was pink.

[00:20:43] Speaker 02:
So I take it you would have us read the board's findings about toughness and stability beyond hardness as reflecting this sort of mixed idea.

[00:20:53] Speaker 02:
Can you tell me where you made that argument or presented evidence to that effect?

[00:20:59] Speaker 02:
Because I'm just concerned that maybe the board was out on its own without a record to support what it's saying.

[00:21:06] Speaker 01:
So I cannot tell you offhand where that specific argument came, although I know that, and maybe my colleague will find it,

[00:21:13] Speaker 01:
in the, in the, you know, our petitioner brief, if you wanted to look at it, is 158-TTAB-E.

[00:21:17] Speaker 01:
Okay, but you believe you've made this.

[00:21:19] Speaker 01:
I know that we talked about the balance of zirconia and chromia.

[00:21:23] Speaker 01:
I don't know if we captured it exactly that way, but let me be clear.

[00:21:26] Speaker 01:
They're not making a waiver argument.

[00:21:28] Speaker 01:
The board was free to make findings of fact in favor of functionality based on the record before it.

[00:21:34] Speaker 01:
And so whether or not we made the argument, the board made the finding, and the finding is supported by substantial evidence.

[00:21:39] Speaker 01:
So while

[00:21:40] Speaker 01:
We'll see if I can grab it quickly.

[00:21:42] Speaker 01:
It's sort of neither here nor there, because it's not a waiver argument.

[00:21:45] Speaker 01:
The board made the finding.

[00:21:46] Speaker 01:
The finding is supported by substantial evidence.

[00:21:49] Speaker 01:
It's what the patent is all about.

[00:21:50] Speaker 01:
It's what their development materials are all about.

[00:21:55] Speaker 02:
On the German evidence, what's your response to the contention that the board did a sort of an evasive error, and maybe they summarized the evidence in eight pages, but they didn't really tell us why they were persuaded by your side?

[00:22:08] Speaker 01:
A couple of points here.

[00:22:09] Speaker 01:
I mean, the real question for Nuvasive is, can the board's path through the evidence reasonably be discerned?

[00:22:15] Speaker 01:
Can you tell what the board was doing?

[00:22:17] Speaker 01:
And what the board did over several pages was describe the evidence, describe the contentions on both sides.

[00:22:24] Speaker 01:
And then on page 99, it's true, the sentence they focus on, they say, Dr. Cardy's criticisms were persuasive, criticisms of this new scientific evidence.

[00:22:33] Speaker 01:
So you can tell what the board's thinking, but there's a little bit more than that.

[00:22:36] Speaker 01:
In the footnote that's attached to the same sentence, footnote 228, the board mentions a number of things and they refer back to a credibility issue for Dr. Michalski related to his assessment of the new scientific evidence and the credibility issue mentioned earlier on page 65.

[00:22:56] Speaker 01:
is that he failed to disclose that he had an interest in the litigation when he was sought to be a peer reviewer in connection with one of those articles.

[00:23:08] Speaker 01:
So they questioned his credibility.

[00:23:10] Speaker 01:
And then a couple of pages later, in a footnote I already mentioned, footnote 231 that carries over from pages 101 to 102, they make the broader point.

[00:23:18] Speaker 01:
It's in the context of something else.

[00:23:19] Speaker 01:
But it's a broader point that they're not going to cast aside decades of research, as Dr. Michalski invited them to.

[00:23:26] Speaker 01:
in light of these new studies.

[00:23:27] Speaker 01:
So I think you put these things together, and not only can a path be reasonably ascertained, it's a clear and totally reasonable path, which is ... Keep in mind the context.

[00:23:39] Speaker 01:
They saw dozens of articles, and even on this new studies, they didn't just see the Institute.

[00:23:45] Speaker 01:
That's what the other side wants to focus on now.

[00:23:47] Speaker 01:
There were several studies that the other side talked about, and so they had a lot to deal with in a 106-page opinion, and with respect to this one study that is the focus of the appeal, they said, look, we're crediting Dr. Cardy over Dr. Michalski, who, by the way, has shown some issues on credibility with respect to this new science, as they call it.

[00:24:06] Speaker 01:
And we're not going to cast aside decades of research pointed in the other direction in light of these litigation-driven issues.

[00:24:13] Speaker 01:
And I think that the appendix site for the brief below that may have this is 19.622.

[00:24:19] Speaker 01:
Thank you.

[00:24:21] Speaker 01:
Deep in volume six or seven of the joint appendix.

[00:24:28] Speaker 04:
Can I ask you this question?

[00:24:29] Speaker 04:
It's not going to be a very precise question.

[00:24:35] Speaker 04:
Trade dress here covers the pink cup with the ball.

[00:24:44] Speaker 04:
Pink may arise in various ways without particularly wanting to get pink.

[00:24:50] Speaker 04:
You're trying to get a variety of functional properties.

[00:24:58] Speaker 04:
What is the right inquiry when you just don't know what

[00:25:05] Speaker 04:
all of the mixes of chromium and other things will turn out to what properties, what functional properties, toughness, hardness, whatever, they will have.

[00:25:21] Speaker 04:
And some of them will turn out to be pink and some of them won't.

[00:25:25] Speaker 04:
It does put inside the facts of, of this case is, is the board supposed to say, well, until such time as science reveals that something covered by this pink trade dress, um, has a functional property.

[00:25:44] Speaker 04:
It can be registered, but once it is newly discovered that, you know, 20% or something ratio for

[00:25:55] Speaker 04:
for chromium is a real sweet spot for functional properties, and that just turns out to be pink.

[00:26:03] Speaker 04:
At that point, the trade dress is no longer valid.

[00:26:06] Speaker 04:
How does that work?

[00:26:08] Speaker 01:
Yeah, I mean, I think without talking about the facts for a moment,

[00:26:12] Speaker 01:
I think that this question gets at a broader problem or difficulty with functionality, which is in value engineering.

[00:26:19] Speaker 01:
Everything that is part of a product is functional in some sense.

[00:26:24] Speaker 01:
So the question that the cases are trying to get at is, what is the kind of functional that should be legally relevant?

[00:26:30] Speaker 01:
And the best tools I can offer for you to answer that question are the tools that the courts have developed over time.

[00:26:35] Speaker 01:
So you look at the more Norwich factors.

[00:26:37] Speaker 01:
You look at whether there's a utility patent.

[00:26:39] Speaker 01:
You look at how they're advertising it.

[00:26:41] Speaker 01:
in the context specifically of this case vis-a-vis some of the others, I think it's also relevant, why was Pink chosen?

[00:26:48] Speaker 01:
And so they rely heavily on the McGarrelates case.

[00:26:51] Speaker 04:
I'm sorry, by them?

[00:26:51] Speaker 01:
By them, initially, as has she.

[00:26:54] Speaker 04:
Ms.

[00:26:55] Speaker 04:
Ellsworth made a point about why you chose Pink.

[00:26:59] Speaker 04:
I'd like you to address that at some point.

[00:27:01] Speaker 01:
Sure.

[00:27:01] Speaker 01:
So let me just, first on their choice, because I think it goes to the McGarrelates case that they rely on so heavily.

[00:27:08] Speaker 01:
One of the reasons why there was a fact issue for trial in McEarly is the pattern.

[00:27:13] Speaker 01:
There's a lot of ways to implement the patent in that case, but the pattern of raised dots on the absorbent material, there was testimony that was chosen for an ornamental reason, because it looked nice.

[00:27:23] Speaker 01:
Well, that tends to suggest that it's not functional.

[00:27:25] Speaker 01:
Whereas in this case, the pink was arrived at by happenstance when they were optimizing their commercial implementation of the patent, and it just happened to be pink.

[00:27:33] Speaker 01:
That tends to support

[00:27:35] Speaker 01:
functionality.

[00:27:36] Speaker 04:
This is a good place for you to talk about why you chose it.

[00:27:39] Speaker 01:
Yeah, so why did we choose it?

[00:27:42] Speaker 01:
I mean, they rely heavily on this story that they seem to think is a sort of gossip story about the Home Depot paint swatch.

[00:27:48] Speaker 01:
And if you look at the testimony, which is at 13666 and on for a few pages, about where that arose, we had a customer.

[00:27:57] Speaker 01:
Ultimately, we're providing components.

[00:27:59] Speaker 01:
If I may finish.

[00:28:00] Speaker 01:
We're providing components for the hip implant system.

[00:28:04] Speaker 01:
And we have a customer saying,

[00:28:05] Speaker 01:
We want something that is pink, because customers understand that that's the next generation material, and has the same equivalent properties.

[00:28:13] Speaker 01:
And our response was, great.

[00:28:14] Speaker 01:
Give us one of the hit balls, and we'll basically reverse engineer it, which is perfectly consistent with Trafix.

[00:28:21] Speaker 01:
They couldn't give us a hit ball.

[00:28:22] Speaker 01:
They couldn't give us a piece of the hit ball.

[00:28:24] Speaker 01:
And so we did the best we could, which is match the color with a paint swatch and go back and land on the exact chromia content that customers had come to associate

[00:28:32] Speaker 01:
with the pink superior properties and also with the superior hardness.

[00:28:37] Speaker 02:
One quick question, sorry.

[00:28:38] Speaker 02:
On unclean hands affirmative defense, you say the board exercised its discretion and didn't make a categorical rule.

[00:28:44] Speaker 02:
It's unavailable.

[00:28:45] Speaker 02:
What would be the basis for that discretion to just simply dismiss an unclean hands defense?

[00:28:52] Speaker 01:
I think Loglin provides all the answer that you need.

[00:28:55] Speaker 01:
I mean, what Loglin says is that

[00:28:57] Speaker 01:
The public interest in cancellation proceedings to rid the register of their generic marks here functional marks transcends the equitable defense.

[00:29:05] Speaker 01:
And I think the same is true here.

[00:29:07] Speaker 02:
That sounds like a categorical rule, though, not a case-specific discretion.

[00:29:11] Speaker 01:
I think it's case-specific.

[00:29:12] Speaker 01:
I mean, it could end up applying categorically.

[00:29:15] Speaker 01:
You could apply the same rule in each case.

[00:29:16] Speaker 01:
It could turn out that if the evidence were particularly strong on unclean hands and the evidence were particularly weak on the functionality, maybe the board in the future

[00:29:24] Speaker 01:
make a different decision.

[00:29:26] Speaker 01:
And our point in the brief is that this is a non-precedential board opinion, so every future board is free to make whatever discretionary decision it wants.

[00:29:32] Speaker 01:
Thank you, Your Honor.

[00:29:34] Speaker 03:
Thank you, Counsel.

[00:29:35] Speaker 03:
Ms.

[00:29:37] Speaker 03:
Ellsworth will give you four or three minutes.

[00:29:40] Speaker 00:
Thank you very much, Your Honor.

[00:29:42] Speaker 00:
I want to start with a point that you made, Judge Laurie, which is that the 816 patent doesn't say pink anywhere in it.

[00:29:48] Speaker 00:
Nothing in the patent says pink is useful over any other color for a ceramic hip implant.

[00:29:54] Speaker 00:
That is one reason that the Morton Norwich Factor 1 doesn't go their way.

[00:29:58] Speaker 04:
A second reason that... I mean, if you had a patent that was all about turmeric or something, is turmeric the one that's yellow?

[00:30:07] Speaker 04:
Yeah, so it was all about turmeric.

[00:30:09] Speaker 04:
And so everything is going to be yellow.

[00:30:12] Speaker 04:
Why is this any different from that?

[00:30:14] Speaker 00:
It's very different than that because this patent is about red

[00:30:18] Speaker 00:
and pink, and off white, and purple, and white, and gray, and yellow, and black.

[00:30:24] Speaker 04:
Just on the point whether the patent says pink, if it actually says, do the following composition, and you agree that's pink.

[00:30:34] Speaker 00:
Because then I think you would be in a situation that's much closer to traffics, where you have

[00:30:39] Speaker 00:
a dual spring mechanism for stopping the wind, and you have a dual spring mechanism as a trade dress.

[00:30:46] Speaker 00:
It just is a match.

[00:30:48] Speaker 00:
And that match is what doesn't exist here.

[00:30:50] Speaker 00:
Judge Toronto, as you pointed out, Saram Tech was wrong.

[00:30:54] Speaker 00:
And Trafix itself explicitly recognizes that there could be situations where a patent holder was wrong.

[00:31:02] Speaker 00:
You can see this at page 32 of Trafix, where it points out

[00:31:06] Speaker 00:
that the patent holder in that case did not assert that any of the representations in the patent are mistaken or inaccurate.

[00:31:13] Speaker 00:
Here, that is exactly what we are asserting.

[00:31:17] Speaker 00:
The third point I'd want to make is that C5 does not practice this patent.

[00:31:21] Speaker 00:
They have their own formulation that they use.

[00:31:25] Speaker 00:
They got them to a white product.

[00:31:27] Speaker 00:
This patent was never a bar to C5 coming on the market with a pink

[00:31:32] Speaker 00:
product.

[00:31:32] Speaker 00:
And so when they tell you it's important for competition that they needed to have access to this.

[00:31:38] Speaker 04:
They have two products.

[00:31:39] Speaker 04:
One has a little P and one has a little S. And basically everybody wants the P and that's the pink one, right?

[00:31:45] Speaker 00:
That is right.

[00:31:46] Speaker 00:
But that could be because it is a source identifier with a superior quality of Saramtex product.

[00:31:54] Speaker 00:
And source identifiers are certainly protectable as trade drafts.

[00:31:58] Speaker 00:
Nubasev asked about, as my friend on the other side said, whether there is a path through the evidence.

[00:32:04] Speaker 00:
There is no path discernible here.

[00:32:06] Speaker 00:
Why is it persuasive to find that a hardness boost that cannot be measured, that was not conducted under circumstances in a body, is in fact a reason to discount these German studies?

[00:32:22] Speaker 00:
And I have two quick last points I'll try to make with my last bit of time.

[00:32:27] Speaker 00:
I would encourage you to look at that page of the appendix that my friend on the other side pointed you to.

[00:32:32] Speaker 00:
19622, you will see nothing in it that speaks to chromium adding anything beyond hardness.

[00:32:40] Speaker 00:
In fact, you can look at 196 to 97.

[00:32:41] Speaker 00:
19621 to 24, that's the entirety of their argument.

[00:32:49] Speaker 00:
and nothing in that speaks to anything beyond hardness.

[00:32:53] Speaker 00:
The last point, and this is in response to your question, Judge Toronto, about why CeramTech ended up with a pink product.

[00:32:59] Speaker 00:
It was trying to optimize the yttria that was used in its product, and it was varying the yttria.

[00:33:07] Speaker 00:
At the time, it was using yttria chromite.

[00:33:09] Speaker 00:
So the chromium level that was chosen originally was a function of the yttria level.

[00:33:15] Speaker 00:
It had nothing to do with any hardness impact.

[00:33:17] Speaker 00:
from chromium and in fact before this product came on the market Yitria was available to manufacturer without being Yitria chromium.

[00:33:27] Speaker 00:
Ceramtex stuck with pink because it liked the pink product and it liked the ability to market the pink product.

[00:33:34] Speaker 00:
For all of these reasons we would ask that you reverse the t-tabs decision and remand.

[00:33:38] Speaker 00:
Thank you your honor.

[00:33:39] Speaker 03:
Thank you counsel.

[00:33:40] Speaker 03:
The case is submitted.