[00:00:00] Speaker 02:
The next and final case for argument is 23-1053, Matronach versus Sye.

[00:00:13] Speaker 02:
Well, I don't feel like I need to apologize, but I do think you guys, you folks, you lawyers learn more about labor law than law this morning.

[00:00:27] Speaker 01:
Good afternoon, your honor, and pleasure to hear about other areas of law that we don't normally hear about.

[00:00:35] Speaker 02:
We're happy to get back to patent.

[00:00:39] Speaker 01:
We'll make it please the court, Jim Davis for Medtronic.

[00:00:44] Speaker 01:
While the board here below probably found that certain claims of the 897 patent were obvious over Lane and Lane in view of Thomas,

[00:00:52] Speaker 01:
The board erred with respect to dependent claims 18 to 22 and 24 in finding that a person of ordinary skill in the art wouldn't have been motivated to apply Thomas's teachings to lane for those particular claims.

[00:01:04] Speaker 01:
The board collectively relies on three reasons.

[00:01:07] Speaker 01:
And thus, as an heiress, any one of those reasons would require vacatur and remand for the board to consider it again.

[00:01:16] Speaker 01:
Here, we believe there's error as each one of those reasons.

[00:01:19] Speaker 02:
OK, so let's start with one.

[00:01:21] Speaker 02:
The purpose of the reference, right?

[00:01:24] Speaker 02:
What is the error there?

[00:01:26] Speaker 02:
Is it your view that you have to look at the overall purpose, and you can't pick one little piece of it and one component and go from there?

[00:01:38] Speaker 02:
Or is it your argument that they're wrong under substantial evidence in view of the facts?

[00:01:46] Speaker 01:
Both, Your Honor.

[00:01:47] Speaker 01:
With respect to the first issue that the board identified, they said that there were certain functions that were primary functions of a particular component.

[00:01:57] Speaker 01:
And then they said, well, those are being moved in the proposed modification over to another component.

[00:02:02] Speaker 01:
And that, they said, is a reason not to make that modification.

[00:02:07] Speaker 01:
That is inconsistent with this court's law.

[00:02:09] Speaker 01:
Those were functions that are still being maintained by the proposed modified device.

[00:02:16] Speaker 01:
They weren't disappearing.

[00:02:17] Speaker 01:
They weren't going away.

[00:02:18] Speaker 01:
They were just being moved from one component to another.

[00:02:21] Speaker 01:
So to your Honor's question, it's not a function of the entire device.

[00:02:27] Speaker 01:
It was a function of a particular component that they were wearing, and that was improper for the board to give it that weight.

[00:02:34] Speaker 02:
But they were essentially changing this sheet catheter, and what were they replacing it with?

[00:02:39] Speaker 02:
What in Thomas?

[00:02:40] Speaker 01:
So that, Your Honor, they would have the sheath catheter still the outermost catheter, but they would have an additional sheath jacket that would house the prosthesis.

[00:02:50] Speaker 01:
So only a portion of the overall long catheter would actually need to be wide enough to house the prosthesis, and you could have the rest of the catheter be narrower, which as was cited in the record.

[00:03:03] Speaker 03:
Where in your patent and suit do you talk about the advantage of having this extra sheath jacket?

[00:03:10] Speaker 01:
in the patent suit, Your Honor?

[00:03:12] Speaker 03:
Yeah, yeah.

[00:03:13] Speaker 03:
I was just trying... I have to be honest.

[00:03:15] Speaker 03:
I was trying to find out in your patent, like, why you would have it.

[00:03:20] Speaker 03:
And I was not really understanding from the patent itself what the advantages were or why it would be desirable.

[00:03:28] Speaker 03:
And so I'm just asking you, is there a particular spot in the patent

[00:03:34] Speaker 01:
yes sir and just to be clear that is that i did not happen and i don't know that i will ask supposing that i'm sorry it's been a long morning okay you like my question okay uh... and i will say uh... that uh... in that that outermost after that that she kept her is maintain both and thomas

[00:03:56] Speaker 01:
as well as in Lane.

[00:03:58] Speaker 03:
And the prior art references, they don't have the chief jacket.

[00:04:02] Speaker 03:
There's like, if you would, two levels of tubing or whatever, if you will, and the proposed combination is to add a third.

[00:04:12] Speaker 03:
Right?

[00:04:12] Speaker 01:
So Your Honor, I think the Lane reference has four concentric catheters, but the two that we're talking about were the C catheter and the Bell catheter.

[00:04:23] Speaker 01:
And what we're talking about doing is expanding the Bell catheter to be the particular catheter that would house the prosthesis.

[00:04:31] Speaker 01:
Thomas actually has the exact same setup, where you have an outermost catheter, which we're relying on as the introducer.

[00:04:39] Speaker 01:
And it has benefits because it protects

[00:04:42] Speaker 01:
the surrounding vasculature from all the movement that would happen inside of it.

[00:04:46] Speaker 01:
And then you would have a separate one layer down catheter that is just the sheath jacket that would hold the prosthesis itself.

[00:04:55] Speaker 03:
Why would you have that?

[00:04:57] Speaker 03:
To protect the device itself?

[00:05:01] Speaker 01:
It protects the device.

[00:05:02] Speaker 01:
It allows for the release of the device from that.

[00:05:05] Speaker 01:
But you need to have something kind of protecting that device as you deliver it all the way through the vasculature to get it to the delivery point in the heart.

[00:05:15] Speaker 01:
So, given that, the benefit that Thomas adds on is, well, do you need to have the entire thing to be that thickness, or do you just have the very end be that thickness?

[00:05:28] Speaker 01:
And we cite several references that talk about benefits of having a low profile, particularly at the entry point into the body where the catheter is being delivered, and that

[00:05:40] Speaker 01:
by what the references say is you reduce the risk of bleeding when that is a smaller profile.

[00:05:46] Speaker 02:
And it maintains the advantage of creating the piercing stiffness, right?

[00:05:52] Speaker 00:
Yes, Your Honor.

[00:05:52] Speaker 02:
That cannot change the introduction of Thomas.

[00:05:55] Speaker 02:
So your position, this is more of the evidentiary than the legal question, but that it was a give and take and maybe this is a subcomponent or a component

[00:06:05] Speaker 02:
And yes, we modified it some.

[00:06:08] Speaker 02:
So some of the stuff it did, it might not do.

[00:06:11] Speaker 02:
But other stuff, it continued to do.

[00:06:12] Speaker 02:
And it had other advantages.

[00:06:14] Speaker 02:
I don't know.

[00:06:15] Speaker 01:
Exactly, Your Honor.

[00:06:16] Speaker 02:
But the board didn't really reach that.

[00:06:18] Speaker 02:
I mean, the board kind of decided this case over here, right?

[00:06:22] Speaker 01:
It stopped short, Your Honor.

[00:06:23] Speaker 01:
That's correct.

[00:06:24] Speaker 02:
Yeah.

[00:06:24] Speaker 02:
So you're advocating a remand so that the board

[00:06:28] Speaker 02:
can evaluate the kinds of stuff that you've been talking about here?

[00:06:31] Speaker 01:
That's correct, Your Honor.

[00:06:32] Speaker 01:
And I think also applying the proper legal construct for it as well.

[00:06:37] Speaker 03:
Did the board look at, you've got at page 41 of the board's decision, it says, Petitioner submits that Claiming Team is obvious over Lane and Thomas because, and then gives a reason to combine.

[00:06:50] Speaker 03:
Am I correct in understanding that that wasn't really discussed?

[00:06:55] Speaker 01:
Correct, Your Honor.

[00:06:56] Speaker 01:
The board does summarize the party's briefing back and forth.

[00:07:01] Speaker 01:
But then when it gets to its decision, it just says, all right, we agree with patent owner for these three reasons.

[00:07:07] Speaker 01:
The first one was your team.

[00:07:08] Speaker 03:
But patent owner gave those reasons.

[00:07:09] Speaker 03:
It's not as if you were surprised by them, right?

[00:07:13] Speaker 01:
That's correct.

[00:07:15] Speaker 01:
We had fun back and forth on those reasons, although they were tweaked in the way in which the board characterized them.

[00:07:22] Speaker 01:
The board is characterizing them as these primary functions of a component.

[00:07:29] Speaker 01:
I think that's inconsistent with this court's law in that they're elevating that to some higher showing that you can say, well, you're moving a function from one component to another.

[00:07:41] Speaker 01:
This court precedent hasn't said that.

[00:07:44] Speaker 03:
What if the board had said, we're viewing all of this as factual issues?

[00:07:49] Speaker 03:
And as a factual matter, we think, you know, let's say that they had analyzed your obvious and your reason for the motivation to combine, which I don't see that they've done, but let's say they had.

[00:08:03] Speaker 03:
But they also said on top of that, we're not convinced because we find that, you know, just looking at all these different facts.

[00:08:12] Speaker 03:
It seems to us that the primary purpose of the priority would have been disregarded with this combination.

[00:08:20] Speaker 03:
Would that be okay so long as they made it more factual and actually also relied on the KSR and the empty deer factors?

[00:08:30] Speaker 01:
Sir, I think the board does need to do a wing, and they didn't do that here.

[00:08:35] Speaker 01:
But what's also important is they need to apply the law correctly.

[00:08:39] Speaker 01:
They rely on this principle of operation law, which, as this court has recognized, indicates that if you're changing a principle of operation, it's unlikely to motivate a change.

[00:08:54] Speaker 01:
Here, what the board identifies as the principle of operation was just one disclosed embodiment, a preferred embodiment, in the spec.

[00:09:03] Speaker 03:
There's nothing in the spec of Lane saying- Do I remember that also your claim, you have claims that didn't recite that?

[00:09:10] Speaker 01:
That's exactly right, Your Honor.

[00:09:12] Speaker 01:
This two-step functionality that they're saying is the principle of operation here isn't recited in the claims.

[00:09:20] Speaker 01:
And as I think Your Honor might be referring to, in Ray Urbanski,

[00:09:25] Speaker 01:
that this court considers that.

[00:09:26] Speaker 01:
It's not like we needed to have the two steps in order to meet the claims.

[00:09:31] Speaker 01:
But the board found that's a principle of operation.

[00:09:35] Speaker 01:
Simply because something is desired or identified as preferred in the prior art doesn't mean that that's a principle of operation.

[00:09:43] Speaker 01:
Instead, it needs to rise to something beyond that.

[00:09:46] Speaker 01:
Plaspect, for example, said this specification was rife with examples of how the invention was this particular principle of operation that was being changed.

[00:09:59] Speaker 01:
That situation isn't present here in Lane.

[00:10:04] Speaker 01:
And that kind of takes us to the board's first two reasons.

[00:10:08] Speaker 01:
The third reason that the board identified was, well, we find that other modifications would be obvious instead.

[00:10:16] Speaker 01:
Why don't you just get rid of the sheep catheter entirely?

[00:10:20] Speaker 01:
But again, that's not the test, as this court has repeatedly found.

[00:10:24] Speaker 02:
I actually didn't understand what they were saying in that.

[00:10:27] Speaker 02:
What was the case?

[00:10:27] Speaker 02:
What cases are they relying on for that?

[00:10:31] Speaker 01:
They don't cite one, Your Honor, and I don't think one exists, at least none that have been cited here.

[00:10:36] Speaker 03:
You're talking about where they say there's no reason to make the proposed modification because the modified device wouldn't serve its primary purpose?

[00:10:43] Speaker 03:
Or is this a different one?

[00:10:45] Speaker 01:
This is the third one, Your Honor.

[00:10:46] Speaker 01:
At the very end, they have a separate paragraph saying,

[00:10:52] Speaker 01:
And this is for references on Appendix 45, maybe?

[00:10:56] Speaker 01:
I think it's right there.

[00:10:58] Speaker 02:
Well, we made no black-letter law.

[00:10:59] Speaker 02:
I mean, I don't think we said either way.

[00:11:02] Speaker 02:
We haven't said that redundancy is never relevant to obviousness.

[00:11:07] Speaker 02:
I mean, that's not black-letter law either.

[00:11:09] Speaker 02:
It's just the circumstances of this case.

[00:11:11] Speaker 02:
I can't really think of circumstances where maybe it might be relevant in terms of establishing whether or not there was hindsight or something.

[00:11:20] Speaker 01:
Sure.

[00:11:21] Speaker 01:
The situation isn't one where the board was saying it would be redundant.

[00:11:26] Speaker 01:
The board was saying this other change would be obvious, that you would just eliminate this outermost catheter entirely.

[00:11:34] Speaker 01:
And with respect to that, the support in

[00:11:40] Speaker 01:
pharmaceuticals and Infinium have repeatedly said simply because there's other options.

[00:11:45] Speaker 01:
The proposed modification doesn't need to be the best option.

[00:11:48] Speaker 01:
It just needs to be an option that would have been obvious.

[00:11:51] Speaker 02:
That's the test.

[00:11:54] Speaker 02:
You're in rebuttal time, so unless Judge Stowell has anything, this is just, I've allowed things to go on too long this morning, so you're bearing the brunt of that.

[00:12:04] Speaker 02:
Thank you.

[00:12:04] Speaker 02:
Why don't we get from the other side, and we'll keep you in rebuttal time.

[00:12:14] Speaker 00:
Thank you, Your Honors.

[00:12:15] Speaker 00:
May it please the court.

[00:12:16] Speaker 00:
Derek Schaeffer here on behalf of the Pepelli Space Hide.

[00:12:19] Speaker 00:
Your Honors, I do think that Medtronic here is largely splitting hairs with factual determinations that the board made.

[00:12:25] Speaker 02:
Well, let me ask you, is the board's primary purpose rationale one that is recognized in our law at all?

[00:12:31] Speaker 02:
And if so, what are the cases that establish that?

[00:12:34] Speaker 00:
Your Honor, I do.

[00:12:35] Speaker 00:
Looking at, obviously, motivation to combine, would the person of ordinary skill in the art have had that motivation?

[00:12:40] Speaker 00:
And per KSR, that's a common sense inquiry.

[00:12:43] Speaker 00:
And I think both parties agree.

[00:12:46] Speaker 00:
There are a lot of cases at stand for the proposition that if the primary function is no longer being accomplished, that's relevant to the motivation.

[00:12:53] Speaker 00:
And here what the board was saying, focusing on after all the sheet catheter, that's the subject of the proposed combination, it's not just primary function, Judge Prost.

[00:13:02] Speaker 00:
All of it is lost.

[00:13:04] Speaker 00:
That was submitted repeatedly to the board, and there was really no reputation as to- Well, this is dealing with one component, right?

[00:13:12] Speaker 02:
I don't see any discussion of the invention in its entirety and the purpose of that.

[00:13:16] Speaker 02:
They were talking very much about the chief catheter, right?

[00:13:20] Speaker 00:
Yes, Your Honor.

[00:13:21] Speaker 00:
But in the context of the overall invention and what the chief catheter, which again, that is the subject of the combination with Thomas, what it is meant to do.

[00:13:30] Speaker 00:
And it's that it has no remaining purpose.

[00:13:32] Speaker 00:
That's the board's third rationale that combined with this.

[00:13:34] Speaker 02:
Well, that's a question, maybe a substantial evidence.

[00:13:37] Speaker 02:
But I think it is, as the other side has made its case in its brief.

[00:13:41] Speaker 02:
that there were plenty of other things done by this chief catheter that were not changed or abated by the incorporation of Thomas.

[00:13:50] Speaker 00:
And if I may just emphasize, though, the board is reviewed with deference for the determinations it's made.

[00:13:55] Speaker 00:
There was no submission by the other side that the wrong question was being asked when the parties went back and forth about, would the chief catheter continue to serve any function?

[00:14:04] Speaker 00:
And where this was submitted to the board?

[00:14:06] Speaker 02:
We get to review that under substantial evidence.

[00:14:08] Speaker 02:
Yes, your honor.

[00:14:09] Speaker 02:
And you're saying that we know we made the functions.

[00:14:13] Speaker 00:
And that was also expert testimony from Mr. Rourke, who was not cross-examined.

[00:14:17] Speaker 00:
You can find his submission at JA 7281, paragraph 158.

[00:14:22] Speaker 00:
You can find where we made this submission that the sheath catheter would be stripped of all of its described functions at JA 499.

[00:14:29] Speaker 00:
We repeated it at JA 609 and 610.

[00:14:33] Speaker 00:
and JA710 at the hearing, where we made this point as... I apologize.

[00:14:37] Speaker 03:
Could you give the site again?

[00:14:38] Speaker 03:
Sure, that was... Evidence.

[00:14:40] Speaker 03:
I got the 499-609-610.

[00:14:41] Speaker 03:
JA609-610.

[00:14:45] Speaker 03:
That's the evidence?

[00:14:47] Speaker 00:
That was our statement of the evidence from Mr. Rourke, who so testified.

[00:14:52] Speaker 00:
And then at the hearing, where the point that the board ultimately credited was made, which is that a person of ordinary skill in the art would have no reason to use sheet catheter 1604 after you've made the proposed modification,

[00:15:02] Speaker 00:
And to answer your question, Judge Prost, we're not saying that that's necessarily relevant in every case.

[00:15:07] Speaker 00:
We're not saying that that's dispositive.

[00:15:09] Speaker 00:
But it is probative.

[00:15:10] Speaker 00:
Would a person of ordinary skill in the art have been motivated to arrive at this combination?

[00:15:15] Speaker 00:
Or in fact, understanding what it is meant to do in the context of land, the person of ordinary skill in the art would have said, there is no remaining sheet gatherer.

[00:15:24] Speaker 00:
Because everyone agrees you want to have the smallest possible profile.

[00:15:28] Speaker 00:
You want to have the smallest number of parts.

[00:15:30] Speaker 03:
So in other words, you're saying

[00:15:33] Speaker 03:
The board's opinion is written a little differently than usual, but they could have said alternatively, we don't see how a person of ordinary scummy art would be motivated to make this change, because it would remove some of the reasons for using this sheath gaffer.

[00:15:51] Speaker 03:
As opposed to, you know, to be honest, this sounds, it sounds a little different than what we ordinarily see from the board.

[00:15:58] Speaker 03:
in terms of this primary function, principle of operation, rendering it superfluous, to be honest.

[00:16:04] Speaker 03:
That's something we see more frequently, I think.

[00:16:07] Speaker 00:
Of course you see many more of these decisions than I do, Judge Stoll.

[00:16:09] Speaker 00:
But I would say that as I read the key portion of the board's decision, from JA-42 to JA-46,

[00:16:15] Speaker 00:
I read it as saying what Your Honor just said.

[00:16:18] Speaker 00:
And it does that by setting forth the arguments that it has from us, specifically that the proposed combination is driven by hindsight and convoluted.

[00:16:27] Speaker 03:
They don't use the word hindsight.

[00:16:29] Speaker 00:
Well, they have us saying the word hindsight, Judge Dole.

[00:16:32] Speaker 00:
Where is it?

[00:16:33] Speaker 03:
And it's them just repeating your argument?

[00:16:35] Speaker 00:
Yes, but then here's what it goes on to do, Judge Dole, on that same page.

[00:16:38] Speaker 00:
It goes on to say, we're saying that there are four different steps that need to be undertaken to arrive at the combination, one through four.

[00:16:45] Speaker 00:
The board is, I think, agreeing that those are the four steps, and I don't think Medtronic is disputing it.

[00:16:50] Speaker 00:
It also notes that we note that there is no persisting function for the sheet catheter.

[00:16:54] Speaker 00:
It says that at the bottom, and it notes our argument that the field of operation is changing.

[00:16:58] Speaker 00:
All of that's on JA-42.

[00:17:01] Speaker 00:
And just as you say, Judge, that is somewhat before the key portions of the board's decision that we're all focused on at JA-44 to 46.

[00:17:09] Speaker 00:
But that's where the board is explaining why it agrees with the patent owner and disagrees with the petitioner because, for the reasons that we're talking about, the bottom line is this is driven by hindsight and this would not have been obvious to a person of ordinary skill in the art applying the common sense that KSR indicates is critical.

[00:17:28] Speaker 03:
What do you think the reason to combine is here on page A41?

[00:17:32] Speaker 03:
To be honest with you, I had a hard time understanding it.

[00:17:36] Speaker 03:
What do you think the reason to combine here is articulated on page 8041?

[00:17:42] Speaker 03:
How do you understand that?

[00:17:44] Speaker 03:
To me, it's a bit circular.

[00:17:45] Speaker 03:
I wish the board would have said so.

[00:17:47] Speaker 00:
I will just show, I think in seven pages they said a lot, a lot more than you see in other board decisions.

[00:17:52] Speaker 03:
I understand the concern is, I mean, you understand what the concern is here of this court.

[00:17:56] Speaker 03:
The concern is that this is an unusual looking way here of expressing hindsight and lack of motivation to comply by perhaps

[00:18:09] Speaker 03:
sounding as if they're relying on some per se rules, which could be contrary to KSR.

[00:18:15] Speaker 03:
So with that in mind, I just want to know what you think this motivation combined is trying to get at on page 840.

[00:18:22] Speaker 00:
Let me take a look at that specific page, Your Honor.

[00:18:24] Speaker 00:
But I struggle to understand it.

[00:18:26] Speaker 00:
And what I think they really want to do is take Thomas, because there's something in Thomas that looks like the sheep jacket, and simply inject that into Elaine in a way that is totally anomalous.

[00:18:36] Speaker 00:
and at odds with the person of ordinary skill in the art would glean from Lane.

[00:18:41] Speaker 00:
And that is driven by hindsight.

[00:18:43] Speaker 00:
And that is circular reasoning.

[00:18:45] Speaker 00:
And it is defeating the whole purpose of the chief catheter in the context of Lane.

[00:18:49] Speaker 00:
Now, those are my words, Your Honor, but I think that they fairly summarize what you have from the board.

[00:18:54] Speaker 00:
I want to focus, if I may, on principle of operation, that second rationale from the board.

[00:18:59] Speaker 00:
Now, as to that, Your Honor, we were repeatedly submitting

[00:19:03] Speaker 00:
that the principle of operation in Lane, or one principle of operation, was the two-step deployment process, as essential to Lane.

[00:19:10] Speaker 02:
And that was in, you can see where... Didn't Lane, wasn't all the stuff that the board relied on included as preferred embodiment in Lane?

[00:19:19] Speaker 00:
Only as to the specifics of the two-step deployment process, Judge Prost, there's no question that she capitor was meant to accomplish the two-step deployment process.

[00:19:29] Speaker 00:
That could be different in the context of different embodiments as to how exactly that worked.

[00:19:34] Speaker 02:
So the answer to my question is, I am correct that the board was relying only on the preferred embodiment.

[00:19:41] Speaker 00:
I'm sorry, let me be more precise.

[00:19:47] Speaker 00:
The answer is no.

[00:19:49] Speaker 00:
I don't think you were correct, respectfully.

[00:19:50] Speaker 00:
And the reason why is all of the embodiments had the two-step deployment process.

[00:19:56] Speaker 00:
Some of those embodiments, as I understand them, would undertake that differently.

[00:20:01] Speaker 00:
depending upon precise positioning and use.

[00:20:04] Speaker 00:
But in addition, as you review the board's rationale, I know your honors were focused on this in earlier cases, you look at did the board supply a reasoned explanation for dealing with the submissions before it as it did.

[00:20:15] Speaker 00:
Now it was submitted, Judge Pros, to the board, especially because my friends to the other side were relying upon the chief captor, they were relying upon this embodiment that involved

[00:20:24] Speaker 00:
the two-step deployment process.

[00:20:26] Speaker 00:
That, I think, is clear from the record.

[00:20:28] Speaker 00:
We indicated that the two-step deployment process was a principle of operation.

[00:20:32] Speaker 00:
That's a JA499-500.

[00:20:35] Speaker 00:
In our surreply, it's JA611.

[00:20:38] Speaker 00:
We drove the point at the hearing JA711-712.

[00:20:42] Speaker 00:
And Mr. Rorke's declaration, again, that's JA7282.

[00:20:45] Speaker 00:
at paragraph 158, he made this point too.

[00:20:49] Speaker 00:
And you can find it, Judge Frost, the key parts of Lane are paragraphs 24 to 31, 128 to 29 that are dealing with this.

[00:20:56] Speaker 00:
That's a JA4318, 19, and JA432728.

[00:21:01] Speaker 00:
All of that stands for the proposition, Judge Prost, that the two-step deployment process was, in fact, part of Lane's principle of operation.

[00:21:10] Speaker 00:
I would point you to the other side's response that you will find in the record, which is JA55657.

[00:21:16] Speaker 00:
And essentially, in a conclusory sentence, they simply assert that the principle of operation is not changing.

[00:21:23] Speaker 00:
But they do not deny that the two-step deployment process with a chief catheter continues to hold onto the prosthesis to enable that two-step deployment process, that that is, in fact, part of the principle of operation.

[00:21:37] Speaker 00:
So the board, in crediting that substantive point, didn't really have another side to it.

[00:21:41] Speaker 00:
There was no reason justification for concluding any differently.

[00:21:45] Speaker 00:
And I believe it's agreed between the parties that, in fact, that two-step deployment process is totally defeated by the proposed combination, Judge Prost.

[00:21:54] Speaker 00:
Now, that is a powerful reason why I think the board was correct to agree with the patent donor and disagree with the petitioner in saying that this is a convoluted, hindsight-driven combination that a person of ordinary skill in the art would not have been motivated to arrive at contemporaneity.

[00:22:12] Speaker 00:
And then the other two points that we were talking about, the first and the third that are in the board's statement of final written decision, those two, I think, follow from what we were discussing.

[00:22:24] Speaker 00:
The sheet catheter, there's no question it has a specific role to play in lightning.

[00:22:29] Speaker 00:
And the board explained from the evidence before it and from Lane itself why, in fact, a sheath catheter that's being modified the way it was not able to house the prosthesis the way that Lane teaches.

[00:22:45] Speaker 00:
It is not able to dilate the way that Lane teaches, and it doesn't have the ability to puncture the chest cavity the way it is contemplated by Lane.

[00:22:54] Speaker 00:
So what would a person of ordinary skill in the art do?

[00:22:57] Speaker 00:
They would get rid of the sheath catheter.

[00:23:00] Speaker 00:
That's the third finding that corresponds with the first.

[00:23:03] Speaker 00:
So these points that the board makes, I think, are fundamentally common sense oriented.

[00:23:08] Speaker 00:
They're not categorical legal rules.

[00:23:10] Speaker 00:
It's not saying always or never.

[00:23:13] Speaker 00:
It's just saying why on the record before it.

[00:23:15] Speaker 00:
And why, given the arguments before it, it is agreeing with this patent owner over this petitioner in saying that this particular combination, the one that was offered to it by the petitioner, was not in fact obvious to a person of ordinary skill in the art.

[00:23:30] Speaker 00:
There would not have been motivation to combine.

[00:23:32] Speaker 00:
And as to the standard of view,

[00:23:34] Speaker 00:
I know my friends to the other side do the best job they can to say that these are legal rules.

[00:23:38] Speaker 00:
The court should review de novo.

[00:23:40] Speaker 00:
As we look at this whole section of the board's decision, I think it is undertaking fact finding.

[00:23:46] Speaker 00:
That's how in every cited decision from us and from Medtronic, this court has reviewed these sorts of determinations by the board as to whether a person of ordinary skill in the art would, in fact, have been motivated to combine.

[00:24:00] Speaker 00:
So review is for substantial evidence.

[00:24:02] Speaker 00:
And review is confined to the record

[00:24:04] Speaker 00:
that was before the board, the arguments that were made to the board based on that record.

[00:24:09] Speaker 00:
And is there substantial evidence in this record to sustain the board's determination?

[00:24:13] Speaker 00:
Yes, Your Honors, including from Mr. Rourke's sworn declaration, expert declaration, and he wasn't cross-examined.

[00:24:19] Speaker 03:
And it's your view, and I think opposing counsel agrees based on the briefing, that all three of these reasons go together, that it's not just one of them that's been dispositive of the motivation issue.

[00:24:32] Speaker 03:
Is that correct?

[00:24:34] Speaker 00:
So I agree with that, although I have a different gloss on it, I think, than my friends for the other side.

[00:24:39] Speaker 00:
That is to say, if you see a line of verbiage as to how the board framed the loss of primary functions, I don't think that that is fatal to this overall analysis that is, after all, about would a person or an ordinary skill in the art have been motivated to combine.

[00:24:56] Speaker 00:
I think they all get reviewed together to see, is there substantial evidence underlying them?

[00:25:01] Speaker 00:
And I think that the fundamental substance of this

[00:25:04] Speaker 00:
which is that this is convoluted, hindsight driven, and it is not in fact a combination that would have made sense to a person of ordinary skill in the art who is then reading Lane in view of Thomas.

[00:25:17] Speaker 00:
That should be reviewed as a whole.

[00:25:19] Speaker 00:
And I do think that the proof positive of that is that the first and third rationales here really do correspond.

[00:25:25] Speaker 00:
The third is what follows from the first.

[00:25:27] Speaker 00:
It's precisely because the sheet catheter is being denied its primary functions indeed, resubmitted all of its functions, you wouldn't want to retain it anymore.

[00:25:36] Speaker 02:
No, can I just clarify, it's late in the morning for me, so I'm sorry I don't understand your answer.

[00:25:42] Speaker 02:
I thought the question, maybe I misunderstood the question, was that

[00:25:46] Speaker 02:
If we were to agree with you on point two, but not on point one and three, we would still have to send it back right, because it's not clear at all to me, at least in the opinion, that the board would have reached the same result on that one aspect.

[00:26:02] Speaker 02:
They were wrong on the other two aspects.

[00:26:05] Speaker 00:
I respectfully disagree with that.

[00:26:07] Speaker 02:
Okay, so you think if we affirm on any one of those three, you should win?

[00:26:11] Speaker 00:
Yes, unless you believe that the result denies the board substantial evidence for its basic conclusion here.

[00:26:17] Speaker 00:
which is that a person of ordinary skill in the art would not have been motivated to arrive at this combination because it's driven by hindsight, because it is convoluted, because it is contrary to what the person of ordinary skill in the art would find in Lane and would understand from Lane.

[00:26:33] Speaker 00:
And I think all of these drive at that judge process.

[00:26:35] Speaker 00:
If you believe that there's no substantial evidence, there's no reasoned basis for the board's conclusion, of course, that means you would vacate and remand.

[00:26:43] Speaker 00:
But if the opposite is true, and you find substantial evidence, you do find that this is reasoned explanation by the board, then the board has done all the job it needs to do in cases like this, where this court defers.

[00:26:57] Speaker 02:
Thank you.

[00:26:57] Speaker 00:
Thank you.

[00:26:58] Speaker 02:
Thank you.

[00:26:59] Speaker 02:
We've got a few minutes of rebuttal if you need it.

[00:27:02] Speaker 01:
Yes, General, thank you.

[00:27:03] Speaker 01:
I think we've heard a lot about what the patent owner would have liked the board to have said, but it didn't actually say those things.

[00:27:11] Speaker 01:
The board referred to the primary purpose of an individual component, not as a device as a whole, as the patent owner would have it say.

[00:27:19] Speaker 01:
The board found that certain functions would be shifted from one component to another in the proposed modification.

[00:27:28] Speaker 01:
not that those functions go away entirely, and the outermost catheter, that sheath catheter, while Patner is saying it has no functions left, the board's findings with respect to claim one, which are unappealed here, found that that was the introducer, the thing that was introducing the three other concentrically nested catheters into the body.

[00:27:47] Speaker 01:
We repeatedly heard from Patner in hindsight, again and again, but if you look at the board's opinion,

[00:27:53] Speaker 01:
The board only says that once when it's referring to their argument and never adopts it as their own.

[00:27:58] Speaker 01:
Patent Hunter repeatedly cites to the words of one of the judges, the administrative patent judges below, which use that word or argument.

[00:28:07] Speaker 01:
But that judge, Judge Ankenbrand, withdrew from the panel before the final written decision was issued.

[00:28:13] Speaker 01:
Finally, with respect to principle of operation, Your Honor, I think as Your Honor's questions elicited,

[00:28:21] Speaker 01:
That reported principle of operation is merely disclosed as a preferred embodiment, not as something that's core or central to the disclosure.

[00:28:31] Speaker 01:
And that's further borne out by the fact that if you look at the claims of Lane, claims 64 and 65, just as an example, which is what the two parties focus on, claims 64 talks about just pulling back the catheter to release the valve.

[00:28:46] Speaker 01:
Claims 65 talks about releaseably holding it.

[00:28:49] Speaker 01:
Two different options for how you would release the prosthesis.

[00:28:53] Speaker 01:
Again, illustrating this is just optional functionality, not a principle of operation.

[00:28:58] Speaker 01:
At base an error as to any one of those three rationales requires bigotry and remand here Unless there's any further questions Thank you