[00:00:00] Speaker 00:
And our first case is Brucker Cellular Analysis versus the University of British Columbia, 2023-2227.

[00:00:09] Speaker 00:
Mr. Peters.

[00:00:14] Speaker 01:
Good morning and may it please the court.

[00:00:16] Speaker 01:
A patent claim is obvious if a person of ordinary skill would have been motivated to modify or combine the prior art to achieve the claim and would have had a reasonable expectation of success in making that combination or modification.

[00:00:34] Speaker 01:
These are two separate and distinct requirements under the law.

[00:00:39] Speaker 01:
And the board below erred by conflating them when weighing the evidence before them.

[00:00:47] Speaker 01:
The board below also committed legal error when it required that the motivation to modify or combine the DMOF and PARC references come from the references themselves rather than from the knowledge or allowing it to come from the knowledge of a person of ordinary skill in the art.

[00:01:11] Speaker 01:
These legal errors

[00:01:14] Speaker 01:
require the court to vacate and remand for further proceedings.

[00:01:24] Speaker 03:
Can there be an overlap in the evidence that is required in order to show motivation to combine and to establish reasonable expectations?

[00:01:33] Speaker 01:
It is possible for that, Your Honor, just if one considers what evidence there might be, but that was not the case here.

[00:01:44] Speaker 01:
With one exception, the evidence considered by the board and deciding motivation to combine

[00:01:54] Speaker 01:
was all directed at whether or not a person of ordinary skill would have a reasonable expectation of success.

[00:02:04] Speaker 01:
So for example, in Appendix 31, the board said, DMOF does not also address the difficulties a person of ordinary skill in the art would face in adapting the prior art

[00:02:25] Speaker 01:
And in Appendix 52, they considered whether a person with a skill would have considered a modification feasible.

[00:02:32] Speaker 01:
And in Appendix 68, whether or not a person would have a sufficient background and skill to be able to adapt a prior method to that.

[00:02:47] Speaker 03:
So you did say there is an overlap, correct?

[00:02:50] Speaker 01:
It is possible for a particular fact

[00:02:53] Speaker 01:
to speak to both motivation and reasonable expectation of success.

[00:03:00] Speaker 01:
The facts in this case that the board considered concerned only reasonable expectation of success and not motivation.

[00:03:08] Speaker 01:
And therefore, it was an error for the board to rely on those facts when making its finding about motivation.

[00:03:19] Speaker 01:
The one thing that the board did consider that spoke to motivation was a finding that DMOC and PARC did not motivate their own modification.

[00:03:41] Speaker 01:
And that is, under KSR, an improper requirement to place on the petitioner.

[00:03:50] Speaker 00:
Council, the board took a pretty close look at all the references.

[00:03:54] Speaker 00:
It decided that dim-off relates to general recovery.

[00:03:59] Speaker 00:
It wasn't specific to selective recovery.

[00:04:02] Speaker 00:
It could just as well have been useful for removing waste.

[00:04:07] Speaker 00:
Park was just culturing, not recovering.

[00:04:11] Speaker 00:
COVAC would require substantial experimentation to be adapted and appell the patent.

[00:04:18] Speaker 00:
Why don't we do the same?

[00:04:22] Speaker 01:
For each of those issues, Your Honor, the first to speak to whether or not DMOF and PARC have to motivate their own modification.

[00:04:37] Speaker 01:
Yes, PARC disclosed a microfluid device and a method for culturing cells to perform experiments on those cells in its device.

[00:04:52] Speaker 01:
And what we know from Kovac, what we know from the applicant who admitted prior art, and what we know from just common sense is that if one is doing cell biology experiments in a microfluidic device, as disclosed in Park and as disclosed in DMOF, it would have been obvious, or sorry, a person of ordinary skill would have been motivated to recover cells of interest

[00:05:22] Speaker 01:
for further investigation.

[00:05:24] Speaker 01:
And so from that perspective, the fact that if it were true that Park was designed only for culturing, and Park did not itself disclose selective recovery, well, that just means that it is missing but one of the many elements of the plan.

[00:05:49] Speaker 01:
And that last step of claim one of the 408 patent is provided by the knowledge of a person of ordinary skill in the art and in COVAC, which teaches selective cell recovery.

[00:06:09] Speaker 01:
As to your third question, Your Honor, about

[00:06:16] Speaker 01:
whether or not there would have been undue experimentation required to adapt COVAX selective cell recovery through laser levitation for use in devices like DMOX and PARKS.

[00:06:33] Speaker 01:
That speaks to the skill and capability of a person of ordinary skill in the art, and that means it speaks to that

[00:06:45] Speaker 01:
a hypothetical person's reasonable expectation of success.

[00:06:51] Speaker 01:
When you look at the evidence of what a person of ordinary skill would have been motivated to do, the evidence is clear that a person of ordinary skill would have been motivated to recover and selectively recover cells of interest.

[00:07:14] Speaker 01:
The board below made no finding about whether that person of ordinary skill would have had a reasonable expectation of success.

[00:07:28] Speaker 01:
And it is not for this court to sit as a fact finder to consider the evidence that was before the board.

[00:07:38] Speaker 01:
and decide that issue for itself.

[00:07:42] Speaker 01:
This is one reason why vacating the board's decision and remanding for a correct application of the law and a consideration of the evidence on reasonable expectation of success is appropriate.

[00:08:02] Speaker 01:
The case may have had a different procedural posture had the board proceeded to make that determination, but it did not.

[00:08:11] Speaker 01:
And so the best course of action and the correct course of action is to reverse the board's decision on motivation to combine and vacate

[00:08:28] Speaker 01:
It's a decision on patentability and remand for further proceedings about whether or not a person of word of skill would have had a reasonable expectation for modifying DMOF in PARC.

[00:08:47] Speaker 04:
So I guess your problem, for example, with respect to DMOF is that

[00:08:53] Speaker 04:
What that reference showed was the analysis taking place in the module on the chip, a lab on a chip.

[00:09:00] Speaker 04:
And that there was insufficient showing of the motivation to change that approach by removing the individual cell from the module.

[00:09:11] Speaker 04:
And that's what the board said.

[00:09:12] Speaker 04:
And maybe the board is right and maybe the board's wrong, but that's a substantial evidence question.

[00:09:23] Speaker 01:
It is, Your Honor, a substantial evidence question, but with one exception.

[00:09:28] Speaker 01:
If you look at the board's analysis on that particular issue with DMOF, what they were asking and what they were deciding was that DMOF itself did not motivate that modification.

[00:09:46] Speaker 01:
Now, if we accept that finding as true,

[00:09:50] Speaker 01:
If you look at and decide that that is evidence that speaks to motivation, that is one thing.

[00:10:03] Speaker 01:
But it is an improper statement of the law under KSR and the holdings of this court that a reference must modify its own, sorry, a must motivate.

[00:10:20] Speaker 01:
its own modification.

[00:10:22] Speaker 01:
So in this regard, DeMoff and Park really stand in the same if one is crediting the board's factual findings.

[00:10:35] Speaker 01:
And that is if one concluded that both DeMoff and Park concerned

[00:10:44] Speaker 01:
performing cell biology experiments, culturing cells in trenches or wells and studying them, and are completely themselves utterly silent about selectively recovering the cells following those experiments, if one found that to be the case.

[00:11:04] Speaker 01:
Nevertheless, what the evidence shows is that in the prior art, the knowledge of a person of ordinary skill

[00:11:14] Speaker 01:
And with expressed disclosures in COVAC, in the prior art, that a person of ordinary skill would have been motivated to recover cells of interest and employ known techniques in the DMOF and PARC devices and methods to accomplish that.

[00:11:35] Speaker 02:
At the end of the day, wouldn't it be appropriate for us to look at this as harmless error?

[00:11:42] Speaker 01:
Your Honor, I think not.

[00:11:44] Speaker 01:
And the reason why is because there has been no finding from the board below with respect to reasonable expectation of success.

[00:11:57] Speaker 01:
And so while I don't think it's reasonable, even if the court had the firm conviction looking at the evidence in the record that a person of ordinary scale would not have had a reasonable expectation of success to modify Park and DeMoff, that is not the court's role.

[00:12:24] Speaker 01:
to weigh that evidence and make that factual determination.

[00:12:31] Speaker 00:
Counsel, you want to save three minutes?

[00:12:32] Speaker 00:
You're now into your rebuttal time.

[00:12:36] Speaker 01:
Thank you very much, Your Honor.

[00:12:37] Speaker 01:
I will take the rest of my time for rebuttal.

[00:12:40] Speaker 00:
You will save it.

[00:12:43] Speaker 00:
Mr. Usum.

[00:12:54] Speaker 05:
May it please the court.

[00:12:55] Speaker 05:
I'll first address why there's no reversible legal error as a result of the board's motivation to modify analysis.

[00:13:01] Speaker 05:
And then I'll address the substantial evidence that supports the board's finding, the board's factual findings.

[00:13:08] Speaker 05:
The board did not conflate motivation to modify reasonable success analysis.

[00:13:13] Speaker 05:
What the board did was first look at the differences between the prior art references that Brooker cited.

[00:13:19] Speaker 05:
Looking at prior art differences is

[00:13:22] Speaker 05:
a central part of the motivation to modify analysis as this court has found.

[00:13:27] Speaker 05:
The board looking at DMOV and PARC, the two primary references, found that they did not disclose one of the key limitations, the selective recovery limitation.

[00:13:37] Speaker 05:
Not only that, the board found that

[00:13:40] Speaker 05:
They didn't just not disclose this limitation, but they also were designed in a way with key design aspects that prevented their use for selective recovery.

[00:13:51] Speaker 05:
As a result... Because you had to peel back, you mean?

[00:13:54] Speaker 05:
Well, actually, so neither PARC nor DMOV, the structure of those devices allowed for peeling back, your honor.

[00:14:03] Speaker 05:
So they were constructed in a way that they were closed systems with an input and an output.

[00:14:08] Speaker 05:
The peel back argument that Brooker raises is based on a non-prior art reference, the Hahn reference, which the board did look at as well.

[00:14:17] Speaker 05:
In that reference, however, Hahn described that peelable layer that it's describing as novel and distinguished it from the prior art.

[00:14:26] Speaker 05:
So that was considered as background evidence to show that a person of ordinary skill would actually not have the knowledge that they could peel a layer like that as described in the Hahn reference.

[00:14:36] Speaker 05:
As a result of the prior art references, DeMob and Park not disclosing the key limitations selective recovery, Brooker turned to the COVAC reference, which describes a laser pushing a cell out of a well.

[00:14:51] Speaker 05:
As the board found, however, COVAC is describing this laser technique for uncultured cells, cells that have not been cultured in the well.

[00:15:01] Speaker 05:
The claim here, claim one, is a method to be used with cultured cells.

[00:15:06] Speaker 05:
As a result, the laser parameters that are described in the COVAC reference, the board found, are not applicable to references like Diemab and Park that are designed for culturing cells in the well.

[00:15:19] Speaker 05:
As a result,

[00:15:22] Speaker 05:
The board found that there were substantial differences between Demob and Park and Kovac, and as a result of those substantial differences, Brooker had failed to explain how the person of ordinary skill would combine those references, which is part of the motivation to combine analysis.

[00:15:38] Speaker 05:
Brucker went on to argue that the general knowledge, the general background knowledge of the person of ordinary skill, they would be able to take the parameters from the COVAC reference and modify them in a way that they could work with DMOV and PARC.

[00:15:53] Speaker 05:
As a result, the board looked at the general knowledge of the POSA.

[00:15:56] Speaker 05:
In that situation, though, the POSA here is someone with just an undergraduate degree.

[00:16:02] Speaker 00:
I was opposed to being a person of ordinary skill in the art.

[00:16:06] Speaker 00:
It's nice to speak English in a course.

[00:16:08] Speaker 05:
I apologize, Your Honor.

[00:16:09] Speaker 05:
Yes, the person of ordinary skill in the art here is undisputed.

[00:16:13] Speaker 05:
And that person is someone with only an undergraduate degree, with only a few years of experience.

[00:16:19] Speaker 05:
Based on testimony and evidence below, the board found that this person of ordinary skill would not have the general background knowledge

[00:16:27] Speaker 05:
to be able to modify the laser parameters described in COVAX for use in PARC and DMAF.

[00:16:33] Speaker 05:
The analysis of the general background knowledge of the POSA is again something that is a key aspect of the motivation to modify analysis as discussed in KSR.

[00:16:44] Speaker 05:
So while Brooker might point to a few errant

[00:16:48] Speaker 05:
aspects or statements within the board's final written decision, a review of the entire written decision, we can tell that the board is not conflating the motivation to modify analysis with reasonable expectation of success, but rather is looking at the differences between the prior art and the general knowledge of the poso, which are both aspects of motivation to modify.

[00:17:15] Speaker 05:
Turning now to Brooker's argument that the board required the primary references to provide their own motivation, simply reviewing the board's final written decision, as well as the board's denial of the rehearing, the board made it very clear that they did not have such a requirement.

[00:17:36] Speaker 05:
While they did look at the primary references, DeMauvin Park,

[00:17:39] Speaker 05:
and determined that they did not teach or disclose the limitation of selective recovery, they still looked at the background knowledge of the POSA as put forward by Berger.

[00:17:48] Speaker 05:
However, as the board explained in both the final written decision and rehearing, they did not find the petitioner's argument persuasive in light of the background knowledge in the art.

[00:17:58] Speaker 05:
As such, there was no requirement by the board that the primary references provide their own motivation.

[00:18:09] Speaker 05:
Turning now to the substantial evidence that supports the board's factual findings, the board reviewed all three of the references, Kovac, Diemab, and Park, in detail.

[00:18:20] Speaker 05:
It even reviewed non-prior art, the Hahn reference, as well as alleged applicant's prior art, as well as reviewed the testimony and declarations of two experts.

[00:18:31] Speaker 05:
and wrote a substantial 72-page final written decision, as well as considered additional arguments in a rehearing denial.

[00:18:40] Speaker 05:
Based on all of that information, the board determined that there was substantial evidence showing that Brooker was unable to prove any of their alleged motivations to modify the primary references to result in the claim 1, to teach elective recovery.

[00:19:09] Speaker 04:
Would it be fair to say that the record established there was a motivation for selective recovery, but not a motivation to modify these references to achieve it?

[00:19:22] Speaker 05:
I would say that the board found that there was selective recovery in the prior ARC and the COVAC reference, but did not find a motivation to use selective recovery.

[00:19:31] Speaker 05:
Is that a yes to my question?

[00:19:34] Speaker 05:
I would say yes, Your Honor, but not to use selective recovery with DMOB and PARC.

[00:19:40] Speaker 05:
Demob and Park were specifically designed so selective recovery wasn't possible.

[00:19:44] Speaker 05:
And the differences between those references and what's required for selective recovery didn't make that possible for a person of ordinary skill to have that motivation to make those changes.

[00:19:58] Speaker 05:
Unless your honors have any further questions.

[00:20:02] Speaker 00:
No, thank you, Council.

[00:20:04] Speaker 00:
Thank you.

[00:20:06] Speaker 00:
Mr. Peters has

[00:20:08] Speaker 00:
Up to three minutes for a bottle if you need it.

[00:20:16] Speaker 01:
Thank you, Your Honor.

[00:20:19] Speaker 01:
We just heard from Appellee's Council that the board found that the Park and DeMott devices, that their design prevented them

[00:20:32] Speaker 01:
from selective recovery of cells.

[00:20:35] Speaker 01:
The evidence before the board shows that that is not so.

[00:20:38] Speaker 01:
And that was, in fact, not a basis for the board's decision.

[00:20:43] Speaker 01:
What the evidence shows is that the DMOF device allowed cells to be selectively recovered from it using a simple pipetting step.

[00:20:57] Speaker 01:
That was known to a person of ordinary skill in the art.

[00:21:03] Speaker 01:
That is shown in Kovac.

[00:21:05] Speaker 01:
That was shown in the declarations of both experts from each side.

[00:21:13] Speaker 01:
With respect to the Han reference,

[00:21:15] Speaker 01:
It had a top cover that needed to be in place during the experiments, but was in fact removable.

[00:21:26] Speaker 01:
And so a person of ordinary skill in the art motivated to selectively recover cells of interest would have simply removed the cover and pipetted out the cells that they like, that they wanted.

[00:21:39] Speaker 01:
Um, and, uh, last, uh, is, uh, Kovacs, uh, laser levitation technique, uh, would have been applicable to both, uh, uh, DMOF and PARC.

[00:21:53] Speaker 01:
Um, Kovacs taught about the ubiquitous need to, uh, select, uh, individual cells that have a larger population, uh, and said that, uh, it's, uh, laser levitation technique.

[00:22:06] Speaker 01:
that it had described generalizes easily, was straightforward, and was user-friendly.

[00:22:15] Speaker 01:
But again, just to underscore the issue, the question is, would a person of ordinary scale have been motivated to recover cells of interest from the DMOT and PARC devices after their experiments were run?

[00:22:35] Speaker 01:
Evidence before the board shows the answer is clearly yes.

[00:22:40] Speaker 01:
The board's contrary decision is not supported by substantial evidence.

[00:22:46] Speaker 01:
And the board relied heavily on evidence that speaks to the ability of a person of ordinary skill to accomplish that goal.

[00:22:55] Speaker 01:
But that is the issue of reasonable expectation of success, which the board expressly did not address.

[00:23:05] Speaker 01:
And for these reasons, we ask the court to vacate the board's decision and remand for further proceedings on the issue of reasonable expectation of success.

[00:23:18] Speaker 00:
Thank you, counsel.

[00:23:19] Speaker 00:
The case is submitted.