[00:00:00] Speaker ?:
Okay, let's go.

[00:00:33] Speaker 02:
uh... second case today appeal number twenty fourteen dash eighteen twenty two eighteen twenty three convict technologies incorporated versus met the nephew incorporated uh...

[00:01:07] Speaker 02:
Mr. Torxen, whenever you're ready.

[00:01:10] Speaker 03:
Thank you, Your Honor.

[00:01:11] Speaker 03:
May I please report?

[00:01:12] Speaker 03:
I'd like to address two issues in this case.

[00:01:15] Speaker 03:
One is the claim construction issue and then the amendment practice.

[00:01:19] Speaker 03:
In Microsoft versus Proxycon, this court reaffirmed that the broadest reasonable interpretation standard requires taking the specification into account.

[00:01:29] Speaker 03:
ConvTech was prejudiced in this case precisely because the board failed to do so.

[00:01:34] Speaker 03:
We're conducting two limitations, the incorporating silver limitation.

[00:01:40] Speaker 03:
Comtech pointed out that that requires loading.

[00:01:44] Speaker 03:
Smith argued and the board accepted that incorporation is a generic concept and loading is just the species.

[00:01:54] Speaker 03:
The board erred there.

[00:01:55] Speaker 03:
There's no substantial evidence.

[00:01:57] Speaker 03:
If you meant loading, why didn't you use the word loading in the claims?

[00:02:02] Speaker 03:
The claims, well, the specification uses it as a synonym, so it didn't matter which word was used.

[00:02:09] Speaker 03:
Well, I mean, that sounds kind of contrary to our normal practice of not reading specific embodiments of the specification into broader claim language.

[00:02:17] Speaker 03:
I agree, Your Honor, and that is not at all what ConvoTech is asking the Court to do.

[00:02:21] Speaker 03:
The reason I'm saying that there's no substantial evidence in the specification is because it's literally true.

[00:02:26] Speaker 03:
There's no substantial evidence for a broader reading.

[00:02:29] Speaker 03:
In fact, the grammar of the specification requires you to read loading and incorporating as synonymous.

[00:02:38] Speaker 02:
Loading means some kind of ionic exchange between the silver and the polymer, right?

[00:02:43] Speaker 03:
Precisely, Your Honor.

[00:02:44] Speaker 02:
In an unmodified polysaccharide, have that kind of ionic exchange with the silver?

[00:02:50] Speaker 02:
Nobody is saying that it would, but... But then the claim language actually talks about, includes a polysaccharide having this silver incorporated in it.

[00:03:02] Speaker 02:
It does, Your Honor, but it doesn't... So then why would we be compelled to read incorporate to mean something that

[00:03:12] Speaker 02:
can't fit or can't be done by the recital polysaccharide in the claim?

[00:03:17] Speaker 03:
Well, allow me two responses to that.

[00:03:19] Speaker 03:
First of all, again, because the specification uses them as synonyms, if there's a problem, it's a different problem if the claim is inconsistent.

[00:03:28] Speaker 03:
In fact, the claim language is not inconsistent because it gives a group of fibers that can be used.

[00:03:34] Speaker 03:
individually or in mixtures, but gives further guidance that restricts the choice within that.

[00:03:39] Speaker 02:
But you don't think we can read the claim and then the rest of the structure of the specification together to

[00:03:47] Speaker 02:
try to understand what's the best understanding of what the inventor contemplated when it talked about using a polysaccharide, unmodified polysaccharide as the polymer?

[00:03:56] Speaker 03:
I am not asking this court to read anything out of the claims or out of the invention.

[00:04:01] Speaker 03:
Quite to the contrary, but it's well established in this court's precedent that you have to read the claim as a whole.

[00:04:07] Speaker 02:
that if it at the beginning of a cook from the box without if there are in operative embodiments but it would be clear what those would be from the language of the claim itself you can't pick and in something that would be an operative by more than a couple with a very broad generic claim right here your claim specifically reciting and declaring to the world that one of the embodiment is a polymer that consists of

[00:04:37] Speaker 02:
a polysaccharide.

[00:04:39] Speaker 02:
And so this is, it looks to me like a different cook.

[00:04:46] Speaker 03:
Well, it's not a generic claim, it's true, but it's a group that you can choose from either individually or in combination, but any choice you make from that has to comply with the incorporation, which the specification tells you means loading, and it also has to be photo-stable.

[00:05:03] Speaker 03:
So there are other limitations that guide whatever choices you would make there.

[00:05:07] Speaker 03:
An analogy might be if I told you that you could pick any fruit you wanted as long as it was orange.

[00:05:14] Speaker 03:
If you're looking at a table and there's bananas there, they're probably not orange.

[00:05:17] Speaker 03:
You can't choose that.

[00:05:18] Speaker 03:
You know that that's not an acceptable choice.

[00:05:21] Speaker 02:
So I guess you're expecting us to read the claim that the inventor drafted.

[00:05:27] Speaker 02:
and ignore the term polysaccharide so that we can understand the word incorporate in the claim to mean something much more specific, i.e.

[00:05:38] Speaker 02:
loading, i.e.

[00:05:39] Speaker 02:
ionic exchange.

[00:05:40] Speaker 02:
Is that fair to say?

[00:05:43] Speaker 03:
That's the argument?

[00:05:45] Speaker 03:
I don't think so, Your Honor, because the specification gives you no choice.

[00:05:49] Speaker 03:
There's no grammatical sense in the specification except to reloading as incorporate.

[00:05:54] Speaker 03:
So then the question is, what do you do with the fact that there are non-ionic fibers listed in the claim?

[00:06:01] Speaker 03:
Well, the answer is you can use those in combination with the ionic fibers.

[00:06:05] Speaker 03:
Or, at least in some of the claims, those fibers, there's nothing that restricts them from being modified.

[00:06:12] Speaker 02:
It's just consisting of, though.

[00:06:14] Speaker 02:
What does consisting of mean?

[00:06:16] Speaker 02:
When it says consisting of polysaccharide, doesn't that contemplate that it is polysaccharide, period, as the fiber, the poly?

[00:06:25] Speaker 03:
You wouldn't choose just polysaccharide alone.

[00:06:29] Speaker 03:
in context with the rest of the claim, that would be an illegitimate choice.

[00:06:34] Speaker 03:
But consisting of polysaccharide with a mixture of other fibers, it's very easy to come up with compliant examples.

[00:06:44] Speaker 03:
I'm going to run short of time, though, if I can't move on to the others.

[00:06:47] Speaker 03:
OK.

[00:06:48] Speaker 03:
OK.

[00:06:50] Speaker 03:
The other limitation you're contesting is the substantially photostable wind drive.

[00:06:57] Speaker 03:
Again, if you read the specification, you'll hear what's going on.

[00:07:00] Speaker 03:
The specification tells us that the use of silver in these materials is old, that a known problem with that is uncontrolled discoloration.

[00:07:09] Speaker 03:
In the very next sentence, it explains that the solution is to make a photo-stable

[00:07:14] Speaker 03:
material.

[00:07:15] Speaker 03:
So the solution to uncontrolled discoloration is photostable material.

[00:07:20] Speaker 03:
It explains the prior solution trying to do that in the prior work were unsatisfactory.

[00:07:27] Speaker 03:
The specification then goes on to define photostable as allowing controlled color change to a desired color and then minimal change thereafter.

[00:07:38] Speaker 03:
It's important to read that minimal change in light of how this

[00:07:43] Speaker 03:
photos have been described earlier, which is that it is a solution to discoloration.

[00:07:50] Speaker 03:
So whatever minimal color change thereafter means, it can't mean discoloration.

[00:07:54] Speaker 02:
Smith argued and the board- Well, the language here is, it's a little confusing to me.

[00:08:02] Speaker 02:
Maybe even a little tricky.

[00:08:03] Speaker 02:
I don't know what it means when it says controlled color change to a desired color.

[00:08:08] Speaker 02:
To me, just that opening phrase suggests

[00:08:12] Speaker 02:
You start with a color A, and now you change, in some controlled way, to a color B, where color B is a desired color.

[00:08:21] Speaker 03:
Right, but that makes perfect sense in the context.

[00:08:23] Speaker 02:
So what, the color starts off as what?

[00:08:27] Speaker 02:
White?

[00:08:28] Speaker 03:
In the examples in the prior art that I'd like to get to, yes, that's exactly what happened.

[00:08:33] Speaker 02:
And then, so now it's got to change to a desired color to be photo-stable.

[00:08:38] Speaker 02:
What would that desired color be?

[00:08:40] Speaker 03:
doesn't matter, your honor.

[00:08:42] Speaker 03:
Any color, as long as it's not this color.

[00:08:45] Speaker 02:
Okay.

[00:08:46] Speaker 03:
The point of this, would purple be?

[00:08:49] Speaker 03:
Purple would be absolutely fine.

[00:08:51] Speaker 03:
it's the point though it can change from you're telling you can change from white to purple that would be a controlled color change that you would desire to learn for your honor will change to that desire and once you get that it can't be something else and again this is why this is so prejudicial because because uh... once you accept that the claim requires ionic bonding all the other references except given aren't a problem given

[00:09:20] Speaker 03:
Because of the construction that Smith argued and the board adopted, it looked at example 25, which gives 15.

[00:09:29] Speaker 03:
samples.

[00:09:29] Speaker 03:
Two of them are controls.

[00:09:31] Speaker 03:
They stay white.

[00:09:32] Speaker 03:
Every other example turns purplish and when dry and Givens itself describes that as discolored.

[00:09:41] Speaker 03:
That's why Judge Sneddon below dissented.

[00:09:44] Speaker 03:
He says there's no way that could possibly be the right construction.

[00:09:48] Speaker 02:
Judge Sneddon unfortunately went on and said that purplish could fit within the understanding of

[00:09:57] Speaker 02:
a claim construction for photo stable.

[00:10:01] Speaker 03:
I mean, because that's the whole point.

[00:10:06] Speaker 02:
First of all, the board construed substantially photo stable to mean this is a 40 that the material may undergo a controlled color change to a desired color with some minimal discoloration even to an undesirable color from the from the desired color and even some degree beyond a minimal discoloration

[00:10:28] Speaker 02:
and still be considered substantially photo stable.

[00:10:31] Speaker 02:
And then it goes on to say, even if purple were shown to be an undesirable color, given 751 reports a change to purplish or having purple specks, such a description indicates only a substantially minimal color change to purple.

[00:10:47] Speaker 02:
That is encompassed by the broad language recited in the claims and the broad definition for photo stable.

[00:10:51] Speaker 03:
Again, it's ignoring the fact that photo stable is first mentioned in the spec in the context of being the cure.

[00:10:58] Speaker 03:
Art recognized cure for discoloration.

[00:11:02] Speaker 03:
So if the board adopts a definition of photo stable that permits discoloration, that's unreasonable.

[00:11:09] Speaker 02:
But it says minimal change thereafter.

[00:11:11] Speaker 02:
Why doesn't that encompass minimal discoloration thereafter?

[00:11:17] Speaker 03:
A color change to something would be okay, but again the concept of this is medical devices.

[00:11:28] Speaker 03:
You pull a medical device out of the package and it has specks on it or stains or blotches.

[00:11:34] Speaker 03:
That's going to be interpreted by the end user, the clinician or worse yet, patient, as a sign of defect or contamination or tampering.

[00:11:43] Speaker 03:
The whole point of this invention is to avoid discoloration.

[00:11:47] Speaker 03:
In fact, that's the problem with Judge Smeddon's concurrence.

[00:11:50] Speaker 03:
Not only does he create a new ground of rejection, but in doing so, he says,

[00:11:55] Speaker 03:
It doesn't, it's no apparent discoloration, but in fact if you look at the examples that are cited, you can scroll to make it white.

[00:12:05] Speaker 03:
One of the samples turns purple and the other one is purple and has speck.

[00:12:11] Speaker 03:
The problem with that is not that it's purple, the problem is that it has specks.

[00:12:14] Speaker 03:
He says specks are a minimal problem, but in this context, specks are exactly what you want to avoid because that's precisely the discoloration that's going to suggest to the user.

[00:12:24] Speaker 02:
So then what does minimal change thereafter mean to you?

[00:12:28] Speaker 02:
It says change to a desired color and then minimal change thereafter.

[00:12:34] Speaker 02:
Is it a minimal change to yet a different desired color?

[00:12:39] Speaker 03:
Yeah, that could be fine.

[00:12:40] Speaker 02:
But is that all it can encompass?

[00:12:43] Speaker 02:
It can't encompass minimal undesired change?

[00:12:48] Speaker 03:
It cannot discolor.

[00:12:51] Speaker 03:
That is the thing that it can't do.

[00:12:52] Speaker 03:
It cannot discolor to the point that an end user would recognize that as a problem, or at least assume that it's going to be a problem.

[00:13:03] Speaker 02:
And here the board seemed to find that a purplish tinge fits within the claim language.

[00:13:10] Speaker 03:
And in fact, only two of the judges even did that, because it really is unreasonable in light of the specification.

[00:13:16] Speaker 03:
I'm into my rebuttal time.

[00:13:18] Speaker 03:
I would like to briefly touch on the fact that, yes, we understand the court decided, yes, we understand the court said that Chevron deference applies to the board's administration in these proceedings.

[00:13:30] Speaker 03:
We've never contested that proposition.

[00:13:32] Speaker 03:
We do question whether Chevron's been followed appropriately here.

[00:13:39] Speaker 03:
There's a three-part test to Chevron.

[00:13:42] Speaker 03:
One is, are they administering the system?

[00:13:44] Speaker 03:
Are they filling a gap?

[00:13:46] Speaker 03:
And have they done so reasonably?

[00:13:48] Speaker 03:
We believe that there are problems on all aspects of that.

[00:13:52] Speaker 03:
Specifically, unlike in Chevron where the EPA went through an extensive record building to develop an independent standard,

[00:14:00] Speaker 03:
The board didn't do that.

[00:14:01] Speaker 02:
I'm sorry, which rule are we talking about?

[00:14:03] Speaker 02:
Which rule are you targeting right now?

[00:14:05] Speaker 03:
Well, okay, there are two, but I'm talking initially about adoption of the broadest reasonable interpretation and then we'll also talk about the gap.

[00:14:14] Speaker 03:
I mean, close over is all of the broadest reasonable interpretation issue.

[00:14:17] Speaker 03:
I mean, you're going to have to argue about that if you want us to review that.

[00:14:22] Speaker 03:
Your Honor, you're missing the point.

[00:14:23] Speaker 03:
We embrace Verado's reasonable interpretation.

[00:14:25] Speaker 03:
Oh, you're just saying they have applied it incorrectly.

[00:14:27] Speaker 03:
They have applied it seriously incorrectly here because it's not their standard.

[00:14:32] Speaker 03:
They didn't do the work to make the standard.

[00:14:34] Speaker 03:
They simply adopted this court standard.

[00:14:36] Speaker 03:
So in how you interpret that standard, they are entitled to no deference.

[00:14:40] Speaker 03:
Rather, the question is how faithful are they to that standard?

[00:14:44] Speaker 03:
If the board said in addition that what was reasonable was judged from the perspective of an APJ at the time of the decision, this court would have no problem saying, no, no, no, that's wrong.

[00:14:55] Speaker 03:
It's the perspective of one ordinary skill in the art at the time of filing.

[00:14:59] Speaker 03:
Similarly, the court case law makes it very clear that there's got to be a fair chance to amend the claims.

[00:15:06] Speaker 03:
In Quozo, it said that the court didn't see a difference, but on the facts in Quozo, that was a broadening amendment, so there was no difference from post grant practice elsewhere.

[00:15:17] Speaker 03:
On the fact that in this case, there is a problem because it's a narrowing amendment.

[00:15:23] Speaker 03:
The board has adopted to our prejudice on the facts of this case.

[00:15:27] Speaker 03:
the requirement that we prepat ability that flatten contradictory to 316 either isn't it down to build what didn't we say in proxy time that the burdens on the Patanona yes the proxy come doesn't address the plain language of 316 in your honor the board can't fill a gap where no gap exists Congress filled that gap board has no discretion to fill it my way into your heart let's hear from the other side

[00:15:55] Speaker 01:
uh... all right the time being split uh... mister many you're taking ten minutes and and then miss mckinney in five that's all right okay thank you for the court bradley for the appellee smith and nephew the board correctly decided all the key issues in this case and the board's decisions in these two IPR proceedings should be affirmed in their entirety

[00:16:18] Speaker 01:
I'd first like to key off with some of the discussion regarding Convatech's arguments with respect to the incorporation term.

[00:16:25] Speaker 01:
So, Your Honor, we're focused on the example of unmodified polysaccharides being incapable of undergoing on exchange between the polymer and the silver.

[00:16:35] Speaker 01:
That's also true with respect to polyurethane, and that's another point that's not contested by Convatech.

[00:16:41] Speaker 01:
In addition to the claims themselves being able to select from that class of polymers, the specification also states very clearly that the same list of polymers are suitable for the invention.

[00:16:52] Speaker 01:
They've got to square that idea that they've described in the specification, two examples of polymers that are incapable of undergoing ion exchange as being suitable for the invention.

[00:17:04] Speaker 01:
The idea that the specification equates the term loading and incorporation

[00:17:10] Speaker 01:
is just completely unsupported.

[00:17:11] Speaker 01:
If you look what the specification does, it specifically defines one term, loading to require an exchange, but the other term, incorporation, isn't disclosed at all.

[00:17:20] Speaker 02:
Right, but then the patent also talks about loading just above the definition for loading and talks about it in the same way that the patent earlier talks about incorporating.

[00:17:31] Speaker 02:
That is to say that when you do the steps a certain way, then the silver gets incorporated or the silver loads into the polymer.

[00:17:41] Speaker 01:
And that's not inconsistent with some of the polymers that are described, but importantly, that loading is only going to happen where you have polymers that have ion exchange units to permit ionic bonding.

[00:17:51] Speaker 01:
Now, on photo stability,

[00:17:53] Speaker 01:
I think Council for Competech just admitted that a change from white to purple would be acceptable.

[00:17:59] Speaker 01:
Now that's completely contrary to their expert extrinsic evidence that said purple is an undesirable color.

[00:18:06] Speaker 01:
So I think I just heard them completely backtrack from their expert that put in a declaration that said the only acceptable colors as far as the desired color are white and whitish gray, and that purple is definitely not an acceptable color.

[00:18:20] Speaker 01:
So that's an interesting change of tact on their part, factually.

[00:18:25] Speaker 01:
A couple other things on the definition of photostable.

[00:18:31] Speaker 01:
The definition allows for controlled color change to a desired color.

[00:18:36] Speaker 01:
And that clearly allows for discoloration.

[00:18:39] Speaker 01:
So while Comitech tries to describe the invention as solving a discoloration problem, they specifically defined photostable to allow for discoloration.

[00:18:51] Speaker 01:
Now that's not our problem.

[00:18:53] Speaker 01:
The fact that they coined the term photostable extremely broadly in a way that is very much at odds with the normal definition of photostable is something that they've got to live with.

[00:19:03] Speaker 01:
When they wrote these claims, if they wanted to have a material that was sensitive to light stability, they didn't have to use the word photostable because it incorporated such a broad term.

[00:19:15] Speaker 01:
They could have said that the resulting material doesn't discolor when exposed to light.

[00:19:20] Speaker 01:
That would have been a different way to claim what they're now trying to do.

[00:19:24] Speaker 02:
But the whole context of the patent, the whole contribution to the art is to

[00:19:31] Speaker 01:
neutralized discoloration?

[00:19:32] Speaker 01:
Well, not necessarily.

[00:19:34] Speaker 01:
So it's twofold.

[00:19:35] Speaker 01:
It deals with making it more photostable, but also antimicrobial.

[00:19:40] Speaker 01:
So there may be some tension there.

[00:19:42] Speaker 02:
Antimicrobial was already part of the prior art.

[00:19:46] Speaker 02:
The problem was these antimicrobial agents would discolor and use, and so the invention was designed

[00:19:52] Speaker 01:
to figure out a way to neutralize the discoloration.

[00:19:55] Speaker 01:
I don't dispute that one of the problems that the patents are seeking to solve is discoloration.

[00:19:59] Speaker 01:
However, they coined the phrase photostable extremely broadly and that's something that

[00:20:05] Speaker 01:
is a public notice function to the public at large and is entitled to rely on that definition.

[00:20:12] Speaker 01:
So I don't think you can rewrite the express definition provided in the specification to allow for discoloration.

[00:20:19] Speaker 02:
So where in the definition of photostable do you take it that it encompasses some discoloration?

[00:20:28] Speaker 01:
So it's in the first step where you have controlled color change

[00:20:32] Speaker 01:
to a desired color.

[00:20:33] Speaker 02:
How could that possibly be discoloration?

[00:20:36] Speaker 02:
How could desired color be discoloration?

[00:20:38] Speaker 02:
I agree, that wouldn't be discoloration.

[00:20:40] Speaker 02:
Okay, so then where's the discoloration in the definition for photostable?

[00:20:44] Speaker 01:
It's after you have that control color change to a desired color.

[00:20:48] Speaker 01:
If there's more than minimal color change thereafter, that would be discoloration.

[00:20:56] Speaker 01:
So you can go from white to purple, and then if

[00:20:59] Speaker 01:
Upon further exposure to light after you open the package for example It went to a further dark purple or a different color red or blue or black that would be further More than minimal discoloration and then that would not be a photo statement.

[00:21:14] Speaker 01:
Let me see if I get this trade

[00:21:16] Speaker 02:
It could be white at first.

[00:21:18] Speaker 02:
Yes.

[00:21:19] Speaker 02:
It gets exposed to light somehow and then maybe goes to some light purple.

[00:21:23] Speaker 02:
Yes.

[00:21:24] Speaker 02:
But then thereafter it moves to deep purple.

[00:21:29] Speaker 01:
Correct.

[00:21:30] Speaker 02:
That would not be photo stable.

[00:21:31] Speaker 02:
That would not be photo stable.

[00:21:32] Speaker 02:
Correct.

[00:21:33] Speaker 01:
But if it went to light purple and stayed at light purple, that would be okay?

[00:21:36] Speaker 01:
That's right.

[00:21:37] Speaker 01:
And again, that's just what Givens did.

[00:21:39] Speaker 01:
So if you look at the Givens example, the Givens is working with a white wound dressing.

[00:21:42] Speaker 01:
It exposes it to the silverization process and then exposes it to light.

[00:21:48] Speaker 01:
And this is the Givens doing the experiment.

[00:21:50] Speaker 01:
So this is akin to the manufacturer intentionally exposing it to light and it turns purple.

[00:21:54] Speaker 01:
If you then package it,

[00:21:56] Speaker 01:
and you open up the package and it stays purple or just has minimal color change, that's a photostable material.

[00:22:03] Speaker 01:
If on the other hand, Gibbons exposes it to light intentionally, it goes to purple, you package it, open up the package and it turns black or it turns dark purple, it wouldn't be photostable.

[00:22:14] Speaker 01:
But the evidence on Gibbons

[00:22:15] Speaker 01:
is that the change from white to purplish or the change from white to purple specks is not appreciably discoloring in light.

[00:22:26] Speaker 01:
He said that Gibbons recognized that it was discolored, but if you look at the Gibbons reference,

[00:22:31] Speaker 01:
And this is in example 24.

[00:22:34] Speaker 01:
So there's example 24 and example 25.

[00:22:36] Speaker 01:
They both record color change from white to purplish.

[00:22:40] Speaker 01:
And in example 24, he says, those samples, all these samples did not appreciably discolor in light.

[00:22:47] Speaker 01:
So that's given, you know, expressly stating that the change from white to purple is not appreciably discolored.

[00:22:53] Speaker 01:
Or white to purplish.

[00:22:55] Speaker 01:
Or white to purplish.

[00:22:56] Speaker 01:
Or white to purple specks.

[00:22:58] Speaker 01:
That's right.

[00:22:59] Speaker 01:
Briefly, I'd like to go on to the motion to amend.

[00:23:03] Speaker 01:
Comtech challenges the board's denial of its motion to amend, but from this court's recent decision on Microsoft v. Proxycon, the one thing that this court stated that at a minimum a patent owner needs to do to prevail on a motion to amend in an IPR proceeding is demonstrate how the amendments overcome the priority of record.

[00:23:22] Speaker 01:
Now, the board found that there were a number of reasons that the motion to amend was deficient, but significantly, the board found that the amendments failed to overcome the Givens reference.

[00:23:35] Speaker 01:
And that's very clear in the record that they failed to overcome the Givens reference.

[00:23:43] Speaker 01:
The three amendments that were made were adding that the polymer be a gel-forming fiber,

[00:23:48] Speaker 01:
It replaced incorporate with load, which would require ionic bonding, and then it deleted substantially from the term substantially photostable.

[00:23:56] Speaker 01:
Given unquestionably discloses a gel forming fiber.

[00:23:59] Speaker 01:
That's not in dispute.

[00:24:01] Speaker 01:
As far as loading,

[00:24:03] Speaker 01:
The only argument that Comitech had as to why Gibbons didn't result in ionic bonding and loading was because it claimed example 25M was in the reverse order.

[00:24:12] Speaker 01:
It said Gibbons exposed the polymer first to the salt agent and then to silver.

[00:24:18] Speaker 01:
The board squarely disagreed with Comitech on that factual issue.

[00:24:22] Speaker 01:
that the board's decision that example 25 is in the correct order is supported by substantial evidence.

[00:24:28] Speaker 01:
And there's no dispute that if it's in the right order.

[00:24:30] Speaker 01:
25M, right?

[00:24:31] Speaker 01:
25M.

[00:24:35] Speaker 01:
And finally, the board held that because Gibbons is applying a substantial identical process to the exact same Aquasell commercial product that's described in the 9-1A patent, that you'll necessarily inherently get a photo-stable material.

[00:24:50] Speaker 01:
And again, that's not something that Convitec challenges.

[00:24:56] Speaker 02:
I think Convitec seems to be challenging whether there should even be a burden placed on it in terms of being able to have its amendment motion granted, suggesting that the Proxycon opinion didn't address

[00:25:12] Speaker 02:
some kind of statutory question under Section 316.

[00:25:15] Speaker 01:
Yeah, my understanding is that the proxy condescission resolved that issue and said it was entirely proper for the Patent Office to implement its statutory mandate and requires place the burden on the Conduct to establish that its claims are patentable and it's entitled to its motion to amend.

[00:25:34] Speaker 01:
Real quickly, in addition to that, there's an additional prior combination that they don't overcome with their amendments, and that's a combination of Creedle and Bahia.

[00:25:44] Speaker 01:
In that combination, we explained in our opposition to the motion to amend that

[00:25:49] Speaker 01:
It results in total stability, that's on question.

[00:25:52] Speaker 01:
The only challenge to that combination, by conditack, in its reply brief on the motions of men, was that you wouldn't properly combine it, and there wasn't a sufficient motivation to combine the two references.

[00:26:02] Speaker 01:
Again, on that point, the board agreed with us.

[00:26:05] Speaker 01:
The board agreed with Smith and Nephew that there was sufficient evidence to have a motivation to combine the creedal and bahia references,

[00:26:12] Speaker 01:
And they did that in connection with some of the dependent original claims and that motivational finding is at 826.

[00:26:21] Speaker 01:
And for the reason that we stated in the brief, that combination also renders each of the amended claims unpatentable and is sufficient to please the board.

[00:26:30] Speaker 02:
Oh, you're out of time.

[00:26:31] Speaker 02:
I'm sorry, Mr. Lenning.

[00:26:32] Speaker 02:
Can we move on to Ms.

[00:26:34] Speaker 02:
Lateef?

[00:26:36] Speaker 01:
Thank you, Your Honor.

[00:26:54] Speaker 00:
Good morning.

[00:26:54] Speaker 00:
I plead the court, Monica Lateef, on behalf of the United States Patent and Trademark Office.

[00:27:00] Speaker 00:
And I'm here to talk about the one procedural aspect of the board's decision, which is the motion to amend.

[00:27:06] Speaker 00:
I agree with Smith and Nephew's counsel that this case falls squarely within the Microsoft v. Procticon decision.

[00:27:13] Speaker 00:
And to the extent that there is a question about the burden in proving the motion to amend, I think that that presidential case answered that question.

[00:27:24] Speaker 02:
did uh... that kate uh... address section three sixteen of the patent act which seems to suggest that the burden on the petitioner well the case talked about the fact that because it's the patent owner who's

[00:27:40] Speaker 00:
moving for the motion, that the burden falls on the movement.

[00:27:44] Speaker 00:
However, to the extent there's concern about Section 316, that section is talking about an issued patent and claims within an issued patent, looking at, as it says, proving a proposition of unpatentability.

[00:27:59] Speaker 00:
In relation to amend, you have proposed claims

[00:28:02] Speaker 00:
You're not looking at a proposition of unpatentability.

[00:28:06] Speaker 00:
What you're trying to do is basically prove that you can have these claims in a patent.

[00:28:13] Speaker 00:
So the statute that would be applicable to the proposed amended claims would be 3116A9, where you're basically saying that the director can prescribe regulations that import the standards and procedures.

[00:28:29] Speaker 00:
So, 316E isn't really applicable to proposed amended claims.

[00:28:35] Speaker 00:
They're not actual claims.

[00:28:38] Speaker 00:
So, as far as work under the Office's position is basically that this case is just like Microsoft v. Proxycon.

[00:28:48] Speaker 00:
Here, Convitex failed to demonstrate that its claims are patentable over the part of record, which was Givens, and Givens was a part of the IPR from the very beginning.

[00:28:59] Speaker 00:
Any other explanations that the court made about the motion to amend were just alternative reasons why it was deficient.

[00:29:06] Speaker 00:
The court doesn't have to reach those, but to the extent the court has questions about those, I'm happy to answer them.

[00:29:12] Speaker 02:
Yeah, the board seems to have a practice in terms of motions to amend.

[00:29:18] Speaker 02:
It has a rule that patent owners have to show written description support in the original file patent application and can't just rely on the actual patent that was granted.

[00:29:29] Speaker 02:
And here, the patent owner relied on the patent granted, which is identical to the original filing.

[00:29:35] Speaker 02:
Doesn't it seem kind of ticky tack to reject the amendment for that hyper-technical reason?

[00:29:48] Speaker 00:
while the uh... regulation uh... this rule is in the regulation that you have to go all the way back to the actual specification you filed a PTO yes your honor it's in forty thirty seven CFR forty two point one twenty one uh... that a motion to amend must include a claim listing showing the claim changes clearly and set forth to support in the original disclosure of the patent for each claim that is added or amended

[00:30:17] Speaker 00:
So it's required that you show it in the original disclosure.

[00:30:22] Speaker 00:
Whether or not the original disclosure and the issued patent have the same specification, we have no way of knowing that.

[00:30:28] Speaker 00:
The common tech didn't say that they did.

[00:30:30] Speaker 00:
They just pointed to the patent.

[00:30:33] Speaker 00:
And our rules require that you point to the original disclosure.

[00:30:36] Speaker 00:
So we are basically holding them to our rules.

[00:30:40] Speaker 00:
I don't think that's a technical error on their part.

[00:30:45] Speaker 02:
Can you explain what did this recent board order called Master Image do with respect to Idol Free and this practice of what are the demands and expectations on patent owners when it comes to motions to amend?

[00:31:00] Speaker 00:
Sure.

[00:31:00] Speaker 00:
I'm happy to do that, Your Honor.

[00:31:01] Speaker 00:
I just want to reiterate that this case, I think you don't necessarily need to turn on that section, but I'm happy to answer the question, which is basically under our regulations.

[00:31:11] Speaker 02:
Well, let's ask it differently then.

[00:31:13] Speaker 02:
Are you saying that

[00:31:15] Speaker 02:
Now that the board has apparently adjusted its practice, we shouldn't consider this particular ground for rejecting the amendments here?

[00:31:25] Speaker 00:
No, and I apologize if that's how you interpret my answer.

[00:31:29] Speaker 00:
What I'm saying is in this particular case, Comitex failed to meet the bare minimum, which is demonstrating patentability over the prior record.

[00:31:37] Speaker 00:
So in this particular case, you can decide on that alone.

[00:31:41] Speaker 00:
But to answer your question about the board requiring that patent owners demonstrate patentability over prior to record and prior to the patent owner, I'm happy to answer that and I will.

[00:31:53] Speaker 00:
I just wanted to make it clear that that's not dispositive here.

[00:31:58] Speaker 00:
But to answer you,

[00:31:59] Speaker 00:
So under our regulations we require that patent owners prove patentability over the prior to record as well as prior are known to the patent owner.

[00:32:07] Speaker 00:
There's a duty of disclosure in our regulations which is 37 CFR 42.11 and all we're asking is that in addition to the prior to record you also let us know what is known to you

[00:32:20] Speaker 00:
And we use Idle Free and Master Image 3D to basically explain what we mean by that.

[00:32:27] Speaker 00:
It's always been in our regulations, it's not changing the regulations, it's just helping the public sort of understand what it is we're looking for.

[00:32:33] Speaker 00:
And if you look at Master Image, it sort of breaks down what they mean by prior art of record and it talks about

[00:32:41] Speaker 00:
any prior material in the prosecution history, as well as in the IPR proceedings.

[00:32:47] Speaker 02:
Right.

[00:32:47] Speaker 02:
No, the more interesting part is the prior art that is not in the record somehow, but is somehow known to the patent owner.

[00:32:54] Speaker 00:
Sure.

[00:32:55] Speaker 00:
Well, if you have a duty of disclosure, you should always be submitting any prior art known to you.

[00:32:59] Speaker 02:
Are you saying that it's the PTO's position that there's no daylight between what the master image order says and what the idle free order says?

[00:33:09] Speaker 00:
when you say daylight, am I suggesting?

[00:33:11] Speaker 00:
Was there any kind of adjustment?

[00:33:12] Speaker 02:
Was there a change in practice?

[00:33:14] Speaker 00:
It's not a change in practice as much as the explanation.

[00:33:17] Speaker 00:
There was obviously confusion among the public.

[00:33:21] Speaker 00:
People weren't sure what Idlefree was saying.

[00:33:24] Speaker 02:
Yeah, that's because this board decision seemed to say that this patent owner needed to come forward and explain all the prior art it knew and why that prior art that it knew did not render this amended claim unpatentable.

[00:33:40] Speaker 02:
And now the master image order seems to be not requiring that.

[00:33:45] Speaker 00:
Well, I disagree.

[00:33:46] Speaker 00:
I think the master image order explains that you still always have your duty of candor.

[00:33:51] Speaker 00:
So basically it's weighing out what part of record means, making it clear, and then it's saying keep in mind your duty of candor always remains 37 CFR 42.11 has always been there.

[00:34:03] Speaker 00:
You're always required to the extent you find something to supplement the record with it or

[00:34:07] Speaker 00:
when you're doing your motion to amend, you can share it then.

[00:34:11] Speaker 00:
But it hasn't changed anything.

[00:34:13] Speaker 00:
Nothing.

[00:34:13] Speaker 00:
It's always been there.

[00:34:15] Speaker 00:
It's always been a requirement.

[00:34:16] Speaker 02:
Okay.

[00:34:17] Speaker 02:
Thank you, Ms.

[00:34:18] Speaker 02:
McAfee.

[00:34:20] Speaker 02:
Mr. Torxin, we'll give you two minutes.

[00:34:25] Speaker 03:
I'd like to start off by talking about who has the burden on patability.

[00:34:34] Speaker 03:
The statute is very clear.

[00:34:36] Speaker 03:
It doesn't say original claims.

[00:34:38] Speaker 03:
It doesn't say except when there's an amendment.

[00:34:40] Speaker 03:
But what I thought was really telling my friend's argument is she says,

[00:34:44] Speaker 03:
Proposed claims don't have a burden of patentability.

[00:34:49] Speaker 03:
Well, but then she tells us the rules themselves impose a burden of patentability.

[00:34:53] Speaker 03:
Either the patent owner is facing a burden of patentability or it's not.

[00:34:57] Speaker 03:
The board said we were and we failed to carry it.

[00:35:00] Speaker 03:
We're pointing out that the statute doesn't allow the board to do that.

[00:35:03] Speaker 03:
If at the end of the analysis, when it's looked at the opposition and everything else, it decides the claims are unpatentable, that's fine.

[00:35:10] Speaker 02:
I guess maybe their point of view is the claim is not really a claim yet in the same way that the term claims used in Section 316, which is referring to issued patent claims, and now these are

[00:35:22] Speaker 02:
you know, stand in proposed claims.

[00:35:26] Speaker 03:
Two mistakes with that line of reasoning, Your Honor.

[00:35:28] Speaker 03:
First of all, the statute doesn't make that distinction.

[00:35:32] Speaker 03:
It says in an inter-parties review, a petitioner has the burden of proving a proposition of the unpatentability.

[00:35:40] Speaker 02:
So any proposition of unpatentability... So is it the patent board's responsibility then to go do a prior search once someone files an amendment?

[00:35:48] Speaker 03:
The board certainly has the discretion to do it, and in fact, well, they didn't make this argument.

[00:35:53] Speaker 02:
I'm just trying to understand, as a practical matter, how does it work?

[00:35:56] Speaker 02:
As a practical matter, you can amend the claim, now the claim is a different claim, and the board, if it doesn't do an examination, then the claim could just go out the door and un-examine.

[00:36:09] Speaker 03:
will want that that doesn't happen because the board in fact does examine.

[00:36:12] Speaker 03:
There are at least two instances of examination.

[00:36:15] Speaker 03:
In this case in Cuoso, the board entered a new ground of rejection.

[00:36:18] Speaker 03:
The court at the solicitor's suggestion accepted that the board can do examination.

[00:36:24] Speaker 03:
So it does have the discretion to do examination.

[00:36:26] Speaker 03:
Whether it should in every case, of course it's up to the board's discretion.

[00:36:30] Speaker 03:
But Congress recognized this problem.

[00:36:36] Speaker 03:
There are two guarantees.

[00:36:37] Speaker 03:
One is the claims can only be narrower.

[00:36:40] Speaker 03:
So even if they issue still unpatentable over some unknown prior art, they're less unpatentable than they were before.

[00:36:48] Speaker 03:
So the public is better off.

[00:36:50] Speaker 03:
Remember when the PTO says we have to consider efficiency in making our rules?

[00:36:55] Speaker 03:
they are supposed to consider the effect on the economy and the integrity of the patent system.

[00:37:00] Speaker 03:
An amendment process makes the claims better.

[00:37:02] Speaker 03:
They may not be perfect, but they're better than they were.

[00:37:05] Speaker 02:
That promotes the economy, that promotes the integrity of the... I'm sorry, over your time, do you have a last point, a final point?

[00:37:11] Speaker 03:
Congress itself allows the board to consider the claim amendments even if the petitioner settles out of the case and they did that in the international fragrances case without opposition.

[00:37:25] Speaker 03:
So clearly the board can examine if it wants to or not examine if it wants to.

[00:37:30] Speaker 03:
Congress knew what it was doing.

[00:37:33] Speaker 02:
Okay, thank you.

[00:37:35] Speaker 02:
The case is submitted.