[00:00:00] Speaker 03:
Our final case this morning is number 23-1627, Osceo Imaging LLC versus Plan Mecca USA.

[00:00:35] Speaker 03:
Mr. Quarish?

[00:00:40] Speaker 03:
So before you begin, there's a problem with your opening brief, which seems not to comply with the word count requirements of the federal rules, because as I understand it, it does not count the quoted material from the transcript as part of the word count.

[00:01:00] Speaker 03:
And if you do count the quoted material, the brief far exceeds the word count.

[00:01:07] Speaker 00:
OK.

[00:01:08] Speaker 00:
Your Honor, I had not considered that.

[00:01:11] Speaker 00:
We used a vendor to prepare the briefs and the word count.

[00:01:15] Speaker 00:
I did not know that issue you just raised.

[00:01:20] Speaker 03:
I think what happened is that you put the quotes in as a screenshot and that the software improperly doesn't count those screenshot words in the word count, whereas the rules in fact require that they be counted.

[00:01:38] Speaker 03:
Just in the future, be careful.

[00:01:40] Speaker 00:
I sincerely apologize for that.

[00:01:42] Speaker 03:
Okay, go ahead.

[00:01:44] Speaker 00:
May it please the court,

[00:01:46] Speaker 00:
Based on the trial evidence alone from Osseo's own witnesses and documents at trial, the district court's JMA order on obviousness should be reversed.

[00:01:57] Speaker 00:
Osseo conceded at trial that all of the claim elements were known, and they admitted so in their response brief in this appeal.

[00:02:04] Speaker 00:
As to the claim combination of those elements, the inventor, Dr. Massey, admitted that that combination was known and used in medicine for orthopedics

[00:02:14] Speaker 00:
and that he simply used that combination for dentistry.

[00:02:18] Speaker 03:
Indeed, as was shown at trial, Dr. Massey, in a letter to his colleague in late 1999... Did you argue that because these combinations were known for orthopedics, that that invalidated the claims of the 301 and 262 because those claims are not limited to dentistry?

[00:02:39] Speaker 00:
Yes, Your Honor.

[00:02:41] Speaker 00:
We did.

[00:02:41] Speaker 00:
And we actually, after Osseo's case, before we even put on our case, we approached the judge to move for J-MAL based on their own admissions.

[00:02:52] Speaker 00:
The judge didn't entertain that and punted to later on in the case.

[00:02:56] Speaker 00:
But yes, we tried to move for J-MAL on their admissions alone after their case.

[00:03:03] Speaker 03:
Well, I didn't, maybe I missed it.

[00:03:05] Speaker 03:
I didn't see in your opening brief here that you raised that issue that the patentee's expert here confined his whole analysis to dentistry and didn't consider the fact that these were known in orthopedics and that the claims of those two patents covered orthopedics generally.

[00:03:27] Speaker 00:
Actually, in our reply brief, in response to Osio's arguments, very early on in the reply brief, we had a table which pointed to these admissions that Dr. Massey made regarding just using what was known in medicine for dentistry and the claim language of claim one of the two sixes.

[00:03:43] Speaker 03:
No, but that's a different question.

[00:03:46] Speaker 03:
I'm not addressing the question of whether it was known to use orthopedic stuff for dentistry.

[00:03:52] Speaker 03:
What I'm saying is that the two patents that I referred to, the 301 patent and the 262 patent, on their face are not limited to dentistry.

[00:04:02] Speaker 03:
The claims are not limited to dentistry.

[00:04:05] Speaker 03:
So showing that something was used in orthopedics shows that, at least to some extent, the claim is perhaps anticipated, certainly obvious, over orthopedic prior art.

[00:04:22] Speaker 00:
Your Honor, we completely agree with that.

[00:04:25] Speaker 03:
OK.

[00:04:25] Speaker 03:
But did you make the argument?

[00:04:27] Speaker 00:
That's the question.

[00:04:28] Speaker 00:
At trial or in our papers here?

[00:04:30] Speaker 03:
In your opening brief here.

[00:04:31] Speaker 00:
In our opening brief, I think we referred to the admissions of Dr. Massey, where he said it was done in orthopedics and Dr. Aquias.

[00:04:39] Speaker 00:
But we did not make that argument regarding the claim language until in our reply brief, the beginning of our reply brief.

[00:04:48] Speaker 00:
We did raise that argument at trial after Osseo's case.

[00:04:52] Speaker 00:
Osteo's expert, Dr. Tia, also admitted that densitometry to determine bone density was used in medicine and orthopedic applications before 1999.

[00:05:06] Speaker 00:
Neither Dr. Kia nor Dr. Massey identified any challenge, unexpected success, or unpredictability in using the known combination of known elements that was being used in medicine for dental applications.

[00:05:20] Speaker 00:
Dr. Massey specifically testified at trial that densitometry for bone in the mouth would have been the same as densitometry for bone that was done for other parts of the body.

[00:05:33] Speaker 00:
He also admitted that his patents described no change in medical diagnostic imaging systems other than taking x-ray equipment in medicine that was known and putting it around a patient's head for dental purposes.

[00:05:46] Speaker 00:
That's a direct quote of his trial testimony.

[00:05:49] Speaker 00:
We raised these admissions in our J-Mall motion before the district court.

[00:05:55] Speaker 00:
the district court's J-MAL order did not address any of those admissions.

[00:05:59] Speaker 00:
Further, Dr. Kia, Osseo's expert, did not rebut any of the teachings or combination motivations that our expert, Dr. Pelk, relied on in his obvious discombination of Fontevraad, Mises, and Gunther that he put on trial.

[00:06:14] Speaker 00:
Thus, Your Honors, not only was there not substantial evidence for the jury's non-obviousness verdict,

[00:06:20] Speaker 00:
we submit there was actually substantial evidence for obviousness.

[00:06:23] Speaker 04:
Could you point to me, when the case was before Judge Stark on the summary judgment notion, he denied the motion for summary judgment on 103.

[00:06:33] Speaker 04:
This is in Appendix 3413, where he said, basically, I'm going to let it go to trial on the question of whether or not Posa would have been motivated to combine and would have had a reasonable expectation.

[00:06:47] Speaker 04:
So he's in essence saying all the elements are in the prior art.

[00:06:50] Speaker 04:
This is the missing element.

[00:06:52] Speaker 04:
So could you show me in the record the evidence that you put on as to why there is a motivation to combine with reasonable expectation of success?

[00:07:01] Speaker 04:
The specific testimony, because I had trouble finding it.

[00:07:05] Speaker 00:
Your Honor, we had an entire section in our opening brief directed to pointing out all the testimony Dr. Polk provided.

[00:07:12] Speaker 04:
I read it all, and I didn't see specific language pointed to the motivation to come on.

[00:07:19] Speaker 00:
Sure.

[00:07:21] Speaker 00:
If you look at page.

[00:07:34] Speaker 00:
61 of our opening brief.

[00:07:38] Speaker 00:
There we discuss what Dr. Pelk, our expert, said regarding motivation to combine the teachings from those references.

[00:07:46] Speaker 00:
And then we repeated that same motivation for the other claims that he also provided, his obvious disappearance.

[00:07:53] Speaker 01:
So what testimony specifically would you have us look at?

[00:07:58] Speaker 01:
I mean, there's a lot of testimony here.

[00:08:00] Speaker 01:
Could you identify if you want us to look at page 4759?

[00:08:03] Speaker 01:
What page do you want us to look at?

[00:08:04] Speaker 00:
Yes, Your Honor.

[00:08:05] Speaker 00:
I was looking at that site, appendix 4759 to 4760.

[00:08:09] Speaker 00:
It was one site.

[00:08:13] Speaker 01:
Do you want to walk us through it?

[00:08:15] Speaker 01:
Sure.

[00:08:37] Speaker 00:
Yes, so Your Honor, starting at line 6 on page 87 to 873 of the transcript, all the way down to?

[00:08:45] Speaker 01:
So you're looking at page 4759.

[00:08:47] Speaker 01:
OK.

[00:08:47] Speaker 01:
Yes, ma'am.

[00:08:48] Speaker 01:
It's better, good, to stick with the appendix 6.

[00:08:50] Speaker 00:
OK.

[00:08:51] Speaker 00:
4759, line 6, through 4760, line 24.

[00:08:55] Speaker 00:
For example, at lines 20 to 24 of 4760, Dr. Pelk

[00:09:02] Speaker 00:
says that many of the advanced CT scanners worldwide may be modified for quantitative CT measurements at relatively little cost.

[00:09:10] Speaker 00:
And there he was discussing the Fountebrot reference, which specifically disclosed in 1985 the use of quantitative computed tomography to look and determine bone density, specifically in mass over volume.

[00:09:23] Speaker 00:
So that's one example, Your Honor, of where Dr. Pelk discussed combining the teachings of Fountebrot and Moises

[00:09:29] Speaker 00:
with the x-ray dental structure of Gunther.

[00:09:33] Speaker 00:
And so it's actually, I think this is clear, but just to repeat it, that one of the motivations to combine these elements was present based on Dr. Massey's own admissions, that this was already being used in medicine.

[00:09:49] Speaker 00:
And he wanted it for the same purpose, to detect bone decay, use it for dental applications.

[00:09:54] Speaker 00:
And then on top of that, our expert put on his own obviousness combination.

[00:09:58] Speaker 00:
And as we discussed in our opening brief, Dr. Pelk.

[00:10:01] Speaker 03:
The question, though, is whether there's substantial evidence the other way to support the jury verdict.

[00:10:07] Speaker 00:
I would say, Your Honor, no.

[00:10:09] Speaker 00:
And that's because, in part, Osceo's expert did not rebut at all Dr. Pelk's opinions on Fontevra, Mazesse, and the Democese reference, which we also used for one of the claims.

[00:10:22] Speaker 00:
And with respect to the Gunther reference, which Dr. Pelk, our expert, relied on,

[00:10:27] Speaker 00:
for the structure of the x-ray equipment for dental purposes, Dr. Kia, Osceo's expert, did not rebut or take issue with those teachings at all.

[00:10:36] Speaker 00:
So our position is that Dr. Pelk's obviousness combination and his motivations to combine those references was unrebutted.

[00:10:45] Speaker 00:
Your Honor, unless there's any further questions on the issue of obviousness, I'd like to turn to the issue of a person who weren't at a skill in the art that we raised in our brief.

[00:10:57] Speaker 00:
In this court's Kiyosara decision in early 2022, the court held that an expert opining on literal infringement had to be a person of ordinary skill in the art.

[00:11:09] Speaker 00:
In this case, based on Dr. Kiyos' own standard that he set for a person of ordinary skill in the art, he did not meet it.

[00:11:17] Speaker 00:
Specifically, he did not.

[00:11:19] Speaker 01:
He meets it as an expert.

[00:11:21] Speaker 01:
He meets it now.

[00:11:22] Speaker 01:
Your argument is that at the time of the invention, he didn't.

[00:11:26] Speaker 01:
satisfy the poser.

[00:11:27] Speaker 00:
Absolutely right.

[00:11:28] Speaker 01:
That is our issue.

[00:11:28] Speaker 01:
And so Kyocera doesn't talk about that, right?

[00:11:30] Speaker 00:
I agree with you and we admit that in our opening brief where we say that Kyocera does not specifically say that a positive had to be so at the time of the invention.

[00:11:39] Speaker 00:
But our position, our view, Your Honor, is that when you look at Phillips and all the case law that you're familiar with regarding claims having to be analyzed from the perspective of a person with a skill in the art at the time of the invention, that would mean that your expert, at minimum, had to be a person with a skill in the art at the time of the invention.

[00:11:55] Speaker 03:
Well, I have trouble with that because I don't see why somebody who acquired expertise later couldn't say, this is a state of the art at the time of the invention.

[00:12:03] Speaker 03:
And I've learned that through my studies and talking to other people.

[00:12:09] Speaker 00:
He didn't do that, Your Honor.

[00:12:10] Speaker 00:
Dr. Kia did not do that.

[00:12:12] Speaker 01:
Did you look at the prior art?

[00:12:14] Speaker 00:
He looked at the prior art, but he did not say, I went back in time to learn what one of ordinary skill in the art in 1990 would have understood this prior art were these claims to be.

[00:12:24] Speaker 00:
He did not do that.

[00:12:25] Speaker 01:
Did you bring that out on cross-examination?

[00:12:29] Speaker 00:
Yes.

[00:12:31] Speaker 00:
We were trying to prove a negative there.

[00:12:34] Speaker 00:
I don't believe, Your Honor, we asked him that specific question.

[00:12:36] Speaker 00:
Did you do anything to teach yourself what one of ordinary skill in the art would have known in 1999?

[00:12:42] Speaker 01:
Did you ask him about whether he was a person of ordinary skill in the art at the time of the invention?

[00:12:47] Speaker 00:
No, we felt like it was evident based on his lack of experience that he didn't meet that scale as of 1999.

[00:12:53] Speaker 00:
I don't think that's disputed that he didn't have the relevant work experience as of 1999.

[00:12:57] Speaker 01:
I'm just asking because it seems like something that, to me, it seems like something that...

[00:13:01] Speaker 01:
could be used on cross-examination to try to show that the jury should be believing your expert as opposed to the other expert, right?

[00:13:15] Speaker 00:
Yes, I agree with you.

[00:13:16] Speaker 00:
On direct examination, Mr. Ostrov asked him, are you a posita?

[00:13:20] Speaker 00:
And he said, yes.

[00:13:21] Speaker 00:
On cross-examination, when I actually delved into his experience, as we pointed out in our brief,

[00:13:27] Speaker 00:
it was clear that he didn't have that three to five years of experience.

[00:13:30] Speaker 00:
He had no densitometry or tomography experience, which was part of the standard that he required at the time of the invention.

[00:13:38] Speaker 00:
Your honor, I completely submit that if you were to hold that an expert does not have to be a posit at the time of the invention, we lose that issue.

[00:13:46] Speaker 00:
So we're not taking issue that he did not have relevant experience.

[00:13:52] Speaker 00:
We're just saying he gained that after the time of the invention.

[00:13:55] Speaker 04:
When you put the burden on him to prove that he had sufficient education?

[00:14:03] Speaker 00:
Yes, work experience in this case.

[00:14:05] Speaker 04:
I mean, that's the effect of what you're saying, is that burden is on the person who's claiming to be opposed.

[00:14:11] Speaker 04:
If they were opposed at the time of the invention, they have to explain why they think they are.

[00:14:16] Speaker 00:
Yes, Your Honor.

[00:14:16] Speaker 04:
And in the cases that I've been... As opposed to that being your burden to disqualify him?

[00:14:21] Speaker 00:
Yes, I believe it was incumbent on the proponent of the expert to show that.

[00:14:26] Speaker 04:
But we haven't decided that's part of the issue in front of us.

[00:14:29] Speaker 00:
Right, I understand.

[00:14:29] Speaker 00:
And that's what we're asking the court to decide.

[00:14:35] Speaker 03:
OK, you want to save your time for rebuttal?

[00:14:38] Speaker 00:
Just real quickly, eating into my rebuttal, on the issue of densitometry,

[00:14:43] Speaker 00:
The district court's construction was clear, we believe, to exclude relative color-coded, grayscale, qualitative bone density or any density assessment.

[00:14:52] Speaker 00:
That is exactly what the EQ systems did.

[00:14:55] Speaker 00:
We used HU values to render qualitative assessments.

[00:15:00] Speaker 00:
of linear attenuation of an object.

[00:15:03] Speaker 00:
And Dr. Kia, at trial, admitted that he had not shown any correlation between HU values and actual density.

[00:15:09] Speaker 00:
He had shown no mapping between the two.

[00:15:11] Speaker 00:
And he had not shown any calculations with respect to HU values being density values, for example, in terms of mass over value.

[00:15:22] Speaker 00:
Unless there's any further questions, Your Honor.

[00:15:28] Speaker 03:
OK.

[00:15:41] Speaker 02:
May it please the court?

[00:15:42] Speaker 02:
Good afternoon.

[00:15:43] Speaker 02:
It's hard to say.

[00:15:44] Speaker 02:
Your honor.

[00:15:47] Speaker 03:
So help me out here.

[00:15:49] Speaker 03:
Now look at the 3-on-1 patent and the 262 patent.

[00:15:53] Speaker 03:
They're on their face, cover dental and orthopedic models and dental and orthopedic structure.

[00:16:01] Speaker 03:
So how is it that you're

[00:16:04] Speaker 03:
relying on testimony that gives an interpretation of the claim that it's limited to dental applications.

[00:16:13] Speaker 02:
I just don't understand that.

[00:16:16] Speaker 02:
So this issue isn't really presented on appeal, Your Honor.

[00:16:19] Speaker 02:
They didn't brief it.

[00:16:21] Speaker 02:
Your Honors were correct that it's just not an issue on appeal.

[00:16:24] Speaker 02:
But in any event, the claim does say that it has to include dental.

[00:16:31] Speaker 02:
which hadn't been done before.

[00:16:33] Speaker 02:
The fact that it may also work on other parts of the body is OK, but it has to at least work on the dental structures, which there was no anticipatory claim say one or the other.

[00:16:45] Speaker 03:
And if part of the claim covers the prior art, the claim is invalid.

[00:16:53] Speaker 02:
I would agree with that as a general proposition, of course, Your Honor.

[00:16:56] Speaker 02:
Claim one of the 301 patents says dental and orthopedic structure in the preamble.

[00:17:02] Speaker 02:
claim one of the 262.

[00:17:05] Speaker 03:
You mean you could claim something which covers orthopedic structure, even though that's in the prior art?

[00:17:14] Speaker 02:
There was testimony.

[00:17:15] Speaker 02:
And again, this issue is not on appeal, so I'm not sure that it's in the appendix.

[00:17:18] Speaker 02:
But just to answer your honest question, Dr. Keough was asked about this.

[00:17:22] Speaker 02:
And as I recall, he testified that based on the way the specification was written, that it only disclosed dental imaging.

[00:17:30] Speaker 02:
that he understood the orthopedic reference there to be the mandible.

[00:17:34] Speaker 02:
There was a lot of discussion.

[00:17:35] Speaker 03:
That sounds like an admission as a written description requirement.

[00:17:39] Speaker 02:
Well, the mandible is an orthopedic structure.

[00:17:42] Speaker 02:
It's a dental orthopedic structure.

[00:17:43] Speaker 02:
So that he understood it that way.

[00:17:45] Speaker 02:
And I don't believe there was any testimony to the contrary.

[00:17:48] Speaker 02:
And as Your Honors have said, this issue is not on appeal.

[00:17:52] Speaker 02:
In fact, it was never really argued.

[00:17:53] Speaker 02:
I don't think we've said that.

[00:17:55] Speaker 02:
OK.

[00:17:57] Speaker 02:
The issue is not up on appeal.

[00:17:58] Speaker 02:
There's no argument being presented

[00:18:01] Speaker 02:
that there's an anticipatory reference based on prior art CBCT with densitometry that discloses everything in the claims.

[00:18:11] Speaker 02:
There's no novelty or lack of novelty or anticipatory

[00:18:14] Speaker 02:
argument for invalidity here.

[00:18:17] Speaker 02:
So it's not there.

[00:18:19] Speaker 02:
Even the argument so-called based on admissions by Osseo, like Dr. Massey and so forth, that individual components were known, it still requires an obviousness to combine.

[00:18:31] Speaker 02:
They were never put together.

[00:18:32] Speaker 02:
There was no single reference ever presented at trial or in any argument on appeal that was shown to disclose or argued to disclose

[00:18:41] Speaker 02:
all the elements of the claims.

[00:18:43] Speaker 02:
So there's going to be a requirement to combine in any event.

[00:18:49] Speaker 02:
I do want to say, since we're on the subject, that on page A4846, I asked

[00:19:10] Speaker 02:
Plan Mecca's expert, Dr. Pelk.

[00:19:13] Speaker 02:
So this is, I'll just read it for the record in case you want to look for it.

[00:19:17] Speaker 02:
So you have not presented, and you're not presenting, a separate theory of obviousness of any of the claims based solely on the so-called OSEO admissions, right?

[00:19:27] Speaker 02:
And he said, based solely on the OSEO admissions, no.

[00:19:32] Speaker 03:
What are the OSEO admissions?

[00:19:34] Speaker 02:
What Mr. Koreshi just went through, the statements by Dr. Massey,

[00:19:39] Speaker 02:
the statements and the patents, the collective, all of that stuff collectively, even Dr. Keyer's statements, all of that, the OSEO admissions, were the things that Mr. Koresha just said.

[00:19:50] Speaker 02:
Their own expert said he wasn't presenting that case.

[00:19:52] Speaker 02:
The case was not presented, certainly not with any expert support.

[00:19:56] Speaker 02:
And it needed it if they were going to argue it, because it's not an anticipatory.

[00:19:59] Speaker 03:
Did you have expert testimony?

[00:20:01] Speaker 03:
There was no motivation to combine?

[00:20:03] Speaker 02:
Yes, Your Honor.

[00:20:04] Speaker 02:
Where?

[00:20:04] Speaker 02:
It's in a number of places.

[00:20:08] Speaker 02:
One place is on page A, 5056.

[00:20:13] Speaker 02:
At least it starts there.

[00:20:15] Speaker 04:
What page was that?

[00:20:16] Speaker 02:
5056.

[00:20:17] Speaker 02:
5056.

[00:20:30] Speaker 04:
Yes.

[00:20:37] Speaker 02:
So here, this is during the direct examination of Dr. Kia.

[00:20:42] Speaker 04:
Where are we on 5056?

[00:20:45] Speaker 02:
So there's a question on line, let's say, three.

[00:20:53] Speaker 04:
Why do you believe or disagree with Dr. Pell?

[00:20:57] Speaker 02:
Yes, about obviousness.

[00:20:59] Speaker 02:
So then Dr. Kia gave his answer.

[00:21:01] Speaker 02:
And this is the first part of the discussion.

[00:21:04] Speaker 02:
He talks about, so the prior art, primarily the Weber and the Gunther references.

[00:21:09] Speaker 02:
The Gunther is the one that's their primary reference for purposes of appeal.

[00:21:13] Speaker 02:
Fail to satisfy the bullet five.

[00:21:15] Speaker 02:
I guess there was an exhibit at the time.

[00:21:18] Speaker 02:
It was one of the references.

[00:21:18] Speaker 02:
It was one of these elements.

[00:21:21] Speaker 02:
So the first bullet applies to both.

[00:21:23] Speaker 02:
Fails to disclose densitometry.

[00:21:24] Speaker 03:
OK, but I asked you about motivation combined.

[00:21:28] Speaker 02:
Yeah, I'm getting there.

[00:21:29] Speaker 02:
Sorry.

[00:21:29] Speaker 02:
Let me just jump down to the part that's

[00:21:35] Speaker 02:
Line 16, just to jump to the part of the answer, and he says, and Gunther, combined with other references, is also not obvious.

[00:21:42] Speaker 02:
One of ordinary skill in the art would not look to bone general density for a solution for a problem... Where is the line?

[00:21:50] Speaker 02:
Line 17.

[00:21:51] Speaker 02:
And one of ordinary skill in the art would not look to bone general density for a solution for a problem related to somosynthesis, which is what Gunther disclosed.

[00:22:01] Speaker 02:
Anything else?

[00:22:03] Speaker 04:
I was looking for a motivation to combine.

[00:22:07] Speaker 02:
I can look to see if that word was used, but that's the essence of what that testimony is about.

[00:22:18] Speaker 04:
And this is the best evidence that you can point to that countered Dr. Pelk, which we saw earlier, where Pelk was saying he thought he had reasons to combine?

[00:22:29] Speaker 02:
That is one example.

[00:22:31] Speaker 04:
Is there any other?

[00:22:32] Speaker 02:
Yes, page 5062 and 5069.

[00:22:52] Speaker 02:
So on page 5062, again, this is during his direct, Dr. Kia's direct testimony on rebutting the obviousness.

[00:22:59] Speaker 04:
Where is he saying, Doctor, I disagree with Dr. Peltel and the motivation to combine?

[00:23:08] Speaker 02:
He says, he talks about in line five, again, I'm just trying to jump to the heart of it.

[00:23:14] Speaker 02:
They cannot modify this.

[00:23:16] Speaker 02:
One of the ordinary skill in the yard cannot modify this to add DEXA and QCT or anything of the sort suggested.

[00:23:22] Speaker 04:
That doesn't have anything to do with motivation to combine.

[00:23:25] Speaker 02:
Then I ask him on line 11.

[00:23:28] Speaker 02:
Again, I don't know that those words appear.

[00:23:30] Speaker 02:
This is the concept.

[00:23:31] Speaker 03:
Well, that's the problem.

[00:23:32] Speaker 03:
I mean, that's not the concept.

[00:23:34] Speaker 03:
There's a different concept.

[00:23:38] Speaker 04:
OK.

[00:23:38] Speaker 04:
The judge on summary judgment said, I'm sending this back so the jury can decide whether there's a motivation to combine these references, which, if taken together, are going to invalidate, and then motivation to combine with reasonable expectation success.

[00:23:52] Speaker 04:
Pellk's testimony you saw pretty clearly was Pellk saying, here's why I think, and it could have been more elaborate, but he said, here's why I think there's a motivation to combine with reasonable x-ray detection success.

[00:24:05] Speaker 04:
What we're looking for is your counter.

[00:24:07] Speaker 02:
The counter relates more to Dr. Keyes saying that these technologies would not have been known to work together.

[00:24:13] Speaker 04:
Would not have been what?

[00:24:14] Speaker 02:
Would not have been known to work together.

[00:24:15] Speaker 02:
They could not work together based on what one of ordinary skill in the art knew at the time.

[00:24:21] Speaker 04:
So thus... Where did he say it doesn't work together?

[00:24:24] Speaker 04:
So I asked him, in line 11, why would it not... Let's get the... Why would it not work to... In line 11, which page, sir?

[00:24:31] Speaker 02:
I'm sorry, page 5062 still.

[00:24:33] Speaker 04:
5062, line 11?

[00:24:35] Speaker 02:
Again, why would it not work to add bone density data or densitometry to his homosynthesis scan?

[00:24:40] Speaker 02:
Homosynthesis is what, to come to the reference, bone density data was from the other prior art, the other references.

[00:24:47] Speaker 02:
And then he has an explanation.

[00:24:48] Speaker 02:
That's because it's a function of focusing and blurring.

[00:24:50] Speaker 02:
You don't get an integration of anatomy in one space so that you can say, OK, this one point has all of my information about the bone.

[00:24:59] Speaker 02:
When I scan, I'm just scrolling down a little bit, line 18.

[00:25:02] Speaker 02:
When I scan the volume so the detector has certain pixel size, so you imagine an infinite number of rays going in a detector, and you do it at another angle, these rays as they intersect, those are what I think are possible points that I can reconstruct.

[00:25:18] Speaker 02:
So his argument, so again, on the next page, 5063, I asked him again, are you saying, line three, page A, 5063, are you saying that, like a tunnel synthesis scan, that a computer tomography scan are different in this respect?

[00:25:35] Speaker 02:
Yes, sir.

[00:25:41] Speaker 02:
This whole discussion of all of these pages, let me see, I have all some of my notes, page 5069, let me just take a moment.

[00:25:48] Speaker 02:
Again, I don't know that he said he disagreed with Dr. Pelk's obviousness combination.

[00:25:55] Speaker 02:
He may not have ever used the particular words motivation to combine.

[00:25:59] Speaker 02:
I would have to do a search.

[00:26:00] Speaker 03:
But that's a problem.

[00:26:04] Speaker 01:
We had other sites that you were providing earlier.

[00:26:07] Speaker 01:
You said 5062, 5063.

[00:26:09] Speaker 01:
Do you have another?

[00:26:10] Speaker 01:
I just want to make sure.

[00:26:11] Speaker 01:
5069.

[00:26:12] Speaker 02:
OK.

[00:26:13] Speaker 01:
Is there something you want to point out on 5069?

[00:26:15] Speaker 02:
Again, there's a discussion of the fact that

[00:26:18] Speaker 02:
The Gunther tomosynthesis technology would not have been obvious to combine with other references.

[00:26:25] Speaker 02:
So, like on line 9.

[00:26:26] Speaker 04:
5069, 109?

[00:26:29] Speaker 02:
Yes, this is after the whole technical discussion of the intervening pages.

[00:26:33] Speaker 02:
I asked him, so is that the basis for which you disagree with Dr. Pelk and conclude that the patent, Dr. Massey's patents, are not obvious over Gunther combined with other references?

[00:26:44] Speaker 02:
Yes.

[00:26:46] Speaker 03:
Yeah, but how do we know he's referring to motivation to combine?

[00:26:51] Speaker 02:
The part of the discussion, again, his response to that was the non-workability of the two references together would make it not combinable.

[00:27:02] Speaker 04:
You have the magic words on 5068.

[00:27:07] Speaker 04:
Have you cited to that to us yet?

[00:27:11] Speaker 02:
Not today, no.

[00:27:12] Speaker 02:
I'm glad to see that they are.

[00:27:14] Speaker 04:
Why is your word searching?

[00:27:15] Speaker 04:
In 5068,

[00:27:17] Speaker 04:
Not obvious.

[00:27:18] Speaker 04:
Primarily due to the... And the other, let's go back to our slides for this reason, Senator, not enough.

[00:27:24] Speaker 04:
You're asking these reasons to reach a conclusion.

[00:27:27] Speaker 04:
It would not have been obvious to combine.

[00:27:29] Speaker 02:
Right.

[00:27:32] Speaker 04:
Isn't that the best evidence you have?

[00:27:34] Speaker 02:
Thank you, Your Honor.

[00:27:35] Speaker 02:
Yes, that is a good reference as well.

[00:27:37] Speaker 02:
Is this the entire discussion?

[00:27:39] Speaker 03:
Well, that's not saying there's no motivation to do it.

[00:27:43] Speaker 02:
The word is not there.

[00:27:45] Speaker 02:
Our assertion is it was understood this is what he was addressing.

[00:27:52] Speaker 04:
The jury got its charge at what stage in the game here?

[00:28:00] Speaker 02:
At what stage?

[00:28:00] Speaker 04:
Yeah, was the jury charged in the upfront before they go in to deliberate?

[00:28:05] Speaker 04:
Yes, Your Honor.

[00:28:07] Speaker 04:
But in the specific charge, the judge told them that they needed to consider whether there was reason to combine

[00:28:14] Speaker 04:
Right?

[00:28:15] Speaker 02:
Yes.

[00:28:17] Speaker 02:
And these pages that I just quickly tried to go through, where we said that it would not have been obvious to combine.

[00:28:23] Speaker 04:
So what happens if, at best, there's a tie?

[00:28:28] Speaker 02:
A tie?

[00:28:29] Speaker 04:
Yeah.

[00:28:30] Speaker 04:
Their witness said, right, I think there's a reason to combine these references with a reasonable extension in plain language.

[00:28:38] Speaker 04:
Your witnesses said, oh, we don't think so.

[00:28:41] Speaker 04:
The jury obviously disagreed with you.

[00:28:45] Speaker 02:
I'm sorry, I'm not sure I understand.

[00:28:49] Speaker 02:
The jury held the patents were not obvious.

[00:28:53] Speaker 01:
So as long as there's substantial evidence to support the jury's verdict, then we're supposed to uphold it, right?

[00:28:59] Speaker 01:
That would be the standard, yes, Your Honor.

[00:29:02] Speaker 01:
So if there was a tie in the evidence, you would win because there's substantial evidence to support the jury's verdict, right?

[00:29:09] Speaker 02:
That, as well as the fact that this issue is their burden,

[00:29:13] Speaker 02:
by clearly convincing evidence.

[00:29:15] Speaker 02:
So Ty doesn't even get them, doesn't get them there anyway.

[00:29:18] Speaker 02:
But in these pages, he addressed Dr. Kia, responded that he'd permanently disagreed that it would have been obvious to combine.

[00:29:26] Speaker 02:
So I know I'm running short on time, and I don't know.

[00:29:30] Speaker 03:
What was Pelt's theory as to why there was a motivation to combine?

[00:29:35] Speaker 02:
What was the theory?

[00:29:36] Speaker 03:
Yeah.

[00:29:39] Speaker 02:
I don't know that I can recite it completely off the top of my head.

[00:29:41] Speaker 02:
I think we just looked at it in the record before.

[00:29:45] Speaker 02:
I'm hesitant to say it, and we can go back and look at the pages in the record.

[00:29:53] Speaker 02:
But it was along the lines that one of skill in the art, in his opinion, would have been motivated to include bone density data with the CBCT tomographic model.

[00:30:08] Speaker 02:
Why?

[00:30:15] Speaker 04:
Was there more to Felk's statement other than 4157.59?

[00:30:18] Speaker 02:
I don't think so.

[00:30:20] Speaker 04:
4157.59, when asked what was the reason to combine, he said, much like what we talked about with the previous combination, I have no idea what that is.

[00:30:35] Speaker 02:
The two main invalidity arguments were the Weber patent with some prior art combined and the Gunther patent with prior art.

[00:30:44] Speaker 02:
So they're citing the one about Gunther.

[00:30:46] Speaker 02:
It was the same discussion about Weber.

[00:30:49] Speaker 02:
In the record, Dr. Pelk agreed that those two primary references were essentially the same.

[00:30:56] Speaker 02:
in what they disclosed.

[00:30:57] Speaker 04:
So whatever that previous discussion was would be relevant to this concern.

[00:31:02] Speaker 04:
If we go back and find it.

[00:31:03] Speaker 02:
If we can not even sure those pages are in the record.

[00:31:08] Speaker 03:
Okay.

[00:31:10] Speaker 03:
I think we're out of time.

[00:31:11] Speaker 03:
Thank you.

[00:31:22] Speaker 03:
Mr. Koreshi.

[00:31:25] Speaker 00:
Real briefly, Your Honor, in response to some of the questions that you asked of Mr. Ostrow.

[00:31:31] Speaker 00:
In the page that he referred you to, 4846, where he said that Dr. Pelkan Cross said that he didn't base his opinion solely on Osseo's admissions.

[00:31:43] Speaker 00:
If you go a little further below, at line 13, he expressly says that he viewed those admissions in

[00:31:51] Speaker 00:
providing his obvious opinion as to what was known in the state of the art.

[00:31:55] Speaker 03:
Additionally... So what's the motivation to combine?

[00:31:59] Speaker 03:
What does your witness say was the motivation?

[00:32:02] Speaker 00:
I thought Dr. Pelke as we cited in our opening brief specifically said

[00:32:07] Speaker 00:
You could take the X-ray structures that were known in the Gunther reference, the X-ray machine, the computer, the input, the output, and use that for computed tomography.

[00:32:19] Speaker 03:
That's not the question on motivations.

[00:32:20] Speaker 03:
It's not whether you could do it.

[00:32:22] Speaker 03:
It's whether you would do it.

[00:32:23] Speaker 03:
What did he testify was the reason they would do it?

[00:32:26] Speaker 01:
Was there something beyond A4759?

[00:32:29] Speaker 00:
If that was the reference to Fontevraud, the 1985 reference where it said,

[00:32:37] Speaker 00:
You could take an existing CT scanner and use it for QCT to determine bone density.

[00:32:45] Speaker 00:
And he combined that motivation that you would want to determine bone density using conventional CT scanners to combine with the x-ray structure for dental purposes.

[00:32:56] Speaker 01:
Could you give us the website?

[00:32:57] Speaker 00:
Yes, that was what I pointed to when I first came up, Your Honor.

[00:33:02] Speaker 00:
Let me see if I can find it.

[00:33:15] Speaker 00:
I believe you're the one who referenced me to that page.

[00:33:27] Speaker 00:
That's $47.59 to $47.60.

[00:33:29] Speaker 01:
OK, so what he says here is the hardware are the same sort of components.

[00:33:35] Speaker 01:
They all use electrical detectors.

[00:33:36] Speaker 01:
They all have computers.

[00:33:38] Speaker 01:
They're in the same field.

[00:33:40] Speaker 01:
in the body imaging and there's no unexpected results.

[00:33:43] Speaker 01:
Is that the reason to combine?

[00:33:44] Speaker 00:
Yes, and then at the bottom of that passage on 4760, he concludes by saying it would have been easy to modify the structure of Gunther to achieve the QCT purpose to determine bone density as disclosed in the Fonterot reference.

[00:33:57] Speaker 01:
This is going from page 59 to 60?

[00:34:00] Speaker 00:
Yes, Your Honor, at the bottom of 4760.

[00:34:02] Speaker 01:
I don't see where it says easy.

[00:34:15] Speaker 00:
I'm sorry, he said at relatively little cost.

[00:34:17] Speaker 00:
And then he said, they're telling you this is easy to implement.

[00:34:21] Speaker 01:
Where is it?

[00:34:21] Speaker 01:
Please tell me what page you're looking at, what lines.

[00:34:23] Speaker 00:
Sure.

[00:34:24] Speaker 00:
4760, lines 23 to 24.

[00:34:26] Speaker 00:
4760, Your Honor.

[00:34:27] Speaker 00:
4760?

[00:34:29] Speaker 00:
Yes.

[00:34:30] Speaker 01:
23?

[00:34:31] Speaker 00:
Lines 23.

[00:34:32] Speaker 00:
The sentence starts in line 20 and is at 24.

[00:34:45] Speaker 00:
Your honors, with regard to the one thing Mr. Ostrow pointed out in response to your questions about whether there was a motivation to combine, the only specific thing I heard him say was that Gunther was a tomosynthesis reference.

[00:35:02] Speaker 00:
Gunther says nothing about tomosynthesis.

[00:35:05] Speaker 00:
On top of that, Dr. Pelk did not rely on the Gunther reference for tomography, for the tomographical and densitometry limitations that were construed by the district court.

[00:35:15] Speaker 00:
Dr. Pelk relied on the Fontenbrot and Mises references for those teachings.

[00:35:19] Speaker 00:
Again, he only relied on Gunther for the structure of the x-ray system for dental purposes.

[00:35:25] Speaker 00:
Unless your honors have any further questions, I'll conclude and ask that

[00:35:29] Speaker 00:
This court reversed their district court's general decision and rendered judgment in favor of that.

[00:35:34] Speaker 03:
Okay.

[00:35:35] Speaker 03:
Thank you.

[00:35:35] Speaker 03:
Thank both counsel.

[00:35:36] Speaker 03:
Cases submitted.

[00:35:37] Speaker 03:
That concludes our session.