[00:00:00] Speaker 03: 1468 Biomed versus Puget. [00:00:31] Speaker 03: How do I say your last name? [00:00:34] Speaker 03: Salyers. [00:00:35] Speaker 03: Mr. Salyers, please proceed. [00:00:46] Speaker 01: Good morning, Your Honors. [00:00:48] Speaker 01: I'm Doug Salyers representing Biomet in this appeal of an inter-party's re-exam. [00:00:53] Speaker 01: This case presents a straightforward case of the board making two errors. [00:00:58] Speaker 01: They erred in their claim construction [00:01:00] Speaker 01: And they erred in reading the prior art and techniques, prior teachings. [00:01:06] Speaker 03: Let me start. [00:01:07] Speaker 03: I parse these into, let's say, amended claims and unamended claims for my purposes. [00:01:13] Speaker 03: So why don't we start with the amended claims as a starting point. [00:01:18] Speaker 03: The PTO has regulations, which I discovered late last night on my computer, that says you may never issue a patent after expiration with amended claims, period. [00:01:27] Speaker 03: Doesn't matter if they're narrowing. [00:01:28] Speaker 03: Doesn't matter if they're broadening. [00:01:30] Speaker 03: We have a prior precedent that says you can't narrow, you can't change claim scope. [00:01:36] Speaker 03: The PTO's regulations, which were subsequent to our precedent, say you can't amend, period. [00:01:43] Speaker 03: They don't actually incorporate the changing claim scope criteria in. [00:01:47] Speaker 03: So are those claims, now you tell me what you think happens [00:01:52] Speaker 03: In light of the fact that the patent is now expired and those amendments are pending before us and were not actually entered in on issued on a certificate below. [00:02:00] Speaker 01: Right. [00:02:00] Speaker 01: I believe those are moot. [00:02:02] Speaker 01: That's what the Institute past or case indicated that they're moot. [00:02:06] Speaker 03: So your request to us would be for us to vacate the issue of the allowance. [00:02:10] Speaker 03: The board allowed them. [00:02:11] Speaker 01: They allowed them at a time when they could have issued, but now post the time they can issue. [00:02:15] Speaker 03: So it's not that we dismissed that portion of the cases moot. [00:02:17] Speaker 03: We have to vacate the board's. [00:02:19] Speaker 01: Your Honor, you're correct. [00:02:20] Speaker 03: I just want to make sure I understand. [00:02:22] Speaker 01: Yes, Your Honor. [00:02:22] Speaker 01: We believe that after December 24, these claims are now unissueable. [00:02:28] Speaker 01: So that is a moot issue. [00:02:30] Speaker 03: The amended claims. [00:02:31] Speaker 03: What I also found out in the PTO's regs, boy, these things have been changing practically daily, it seems, is that when you have an amended claim, [00:02:41] Speaker 03: post-expiration that can't issue suggests that they're allowed to go back and continue to argue for the issuance of the original claims. [00:02:49] Speaker 03: That's what the PTO's regs expressly said. [00:02:52] Speaker 03: So yeah, I know you're looking at me crazy. [00:02:54] Speaker 03: Yeah, I think it's crazy. [00:02:55] Speaker 03: I know. [00:02:56] Speaker 03: I thought it was crazy, too. [00:02:56] Speaker 03: And neither of you cited it, but we dug this up last night. [00:02:59] Speaker 03: It's on their website. [00:03:00] Speaker 03: It's their regs. [00:03:01] Speaker 03: OK. [00:03:01] Speaker 03: And so I guess my question to you is, so technically, I don't know what's going to happen below with the PTO, but its own regs suggest [00:03:09] Speaker 03: that they may have some right to argue that the original claims. [00:03:13] Speaker 03: And the examiner, I want to make sure I understand all the facts. [00:03:14] Speaker 03: The examiner rejected them twice. [00:03:17] Speaker 03: First he rejected them, and then a final rejection. [00:03:19] Speaker 03: The claims, even with the amendment, but certainly the original claims, correct? [00:03:24] Speaker 03: Correct. [00:03:25] Speaker 03: And so what didn't get appealed to the board was the patentability of the original claims. [00:03:30] Speaker 03: What only got appealed to board was the patentability of the amended claims. [00:03:32] Speaker 01: Correct, basically. [00:03:33] Speaker 03: So the board has never spoken on those original claims. [00:03:36] Speaker 01: Correct. [00:03:37] Speaker 03: All right. [00:03:38] Speaker 01: Correct. [00:03:38] Speaker 01: That's a quagmire I hope we don't have to get into. [00:03:40] Speaker 01: But I think that the fact that they had to amend them to overcome... Well, you don't have to get into it. [00:03:46] Speaker 03: And we certainly don't have to get into it. [00:03:48] Speaker 03: We can just punt this back to the board. [00:03:49] Speaker 03: But unless they have some compelling reason why these regs are not applicable somehow, I don't know how we can possibly [00:04:01] Speaker 01: uh... address neither was briefed that issue your honor so i don't know how to happen below we did both brief the amended claims are are dead after december twenty right that's that point were i think we're both in agreement on that but i'll flip you want the right number while you're sitting there what's the right for you what's the right number [00:04:32] Speaker 03: Don't worry about your time. [00:04:36] Speaker 03: 37 CFR 1.530 J. And Reba, is that the one, I don't have it at my fingertips, is that the one that says what happens that amended claims can't issue after expiration or is that the one that says when it goes back they consider the original claims? [00:04:53] Speaker 00: It's an MPEP 2250. [00:04:57] Speaker 00: If a patent expires during the pendency of a re-exam proceeding, all amendments to the patent claims and all claims added during the prosecution are withdrawn. [00:05:05] Speaker 00: All subsequent re-exam will be on the basis of the unamended patent claims. [00:05:18] Speaker 01: Well, I don't know that we can resolve that today. [00:05:21] Speaker 01: I was prepared in my arguments. [00:05:22] Speaker 01: I was basically going to ignore the amended claims for just that reason, because I believe that there is a reason. [00:05:27] Speaker 03: Well, I mean, I certainly don't think that we ought to be addressing the validity of the original claims, which wasn't addressed by the board. [00:05:34] Speaker 03: So I don't know that it would make sense for you to say that. [00:05:36] Speaker 01: None of us agree with that issue. [00:05:37] Speaker 01: I think they are invalid. [00:05:39] Speaker 01: But if we have to have another round in the PTO, we'll do so. [00:05:42] Speaker 05: I have a question. [00:05:45] Speaker 05: Sure. [00:05:45] Speaker 05: And this is something that is going to come [00:05:49] Speaker 05: fastball to you probably, or more like a curveball. [00:05:54] Speaker 05: The unamended claims that you guys are all referring to as unamended, they're technically amended, are they not? [00:05:59] Speaker 05: Because they went from being dependent claims to independent claims. [00:06:03] Speaker 01: That is correct. [00:06:04] Speaker 05: So what does that mean? [00:06:06] Speaker 01: Well, that's a good point. [00:06:07] Speaker 01: I believe that that could be an amendment, but it's not a [00:06:11] Speaker 01: If your honor is correct that the language of the claim cannot be amended, then those claims may be disallowed by the PTO because they are amendments. [00:06:20] Speaker 01: They're turning independence into independent claims. [00:06:23] Speaker 01: We have not interpreted that statute that way. [00:06:26] Speaker 01: We believe that these were unamended claims because they were, in essence, claim 35 was already in the patent. [00:06:33] Speaker 05: Right. [00:06:33] Speaker 05: I mean, it's a much closer call, and the other side hasn't argued that they're amended. [00:06:37] Speaker 01: They have not, nor have we argued that. [00:06:39] Speaker 01: I mean, we believe that these were original. [00:06:41] Speaker 01: I mean, they are original claims. [00:06:42] Speaker 01: There's nothing different. [00:06:43] Speaker 05: But wouldn't it, in some ways, make sense for us to just send it all back to the PTO to tell us what's amended and what's unamended and what could issue and what you can't? [00:06:51] Speaker 01: My client probably wouldn't like that. [00:06:52] Speaker 01: I mean, we would like some rulings on some of these claims now since we've briefed it in our hearing before the court. [00:06:57] Speaker 00: But this is a regulatory matter, and the other side has not disputed, has not argued that the expiration of the patent makes the issuance of those claims which were amended only by incorporating, making independent dependent claims, are forbidden to be issued by that regulation, right? [00:07:17] Speaker 01: If I'm understanding all the words in your claim, yes, neither side is contesting that after December 24, the unamended claims cannot be issued. [00:07:26] Speaker 05: And primarily, that would be you that would want to contest that, right? [00:07:32] Speaker 01: Yes, that's true. [00:07:33] Speaker 01: I mean, we feel confident that the board made errors, and we want this court to reverse those errors so that you could give them direction about how they should properly construe this claim. [00:07:46] Speaker 01: And that issue is fully briefed and in front of the court. [00:07:48] Speaker 01: And I think that would be helpful to the court or the patent board below to hear that now that it is a live issue. [00:07:56] Speaker 01: And for that reason, I'd like to address the unamended claims and talk about why we think those were misconstrued, both in claim construction and in application to the prior art. [00:08:09] Speaker 01: I think it's interesting that the board made a construction that the patent owner does not support. [00:08:15] Speaker 01: And that's this complete resection position that the board had to come up with to overcome the priority. [00:08:22] Speaker 01: In the red brief, the patent owner says nothing about complete resection. [00:08:28] Speaker 01: That's a telling statement about how they're not supporting what the board did. [00:08:34] Speaker 01: And it has fatal consequences for the validity of these claims or the allowability of these claims. [00:08:39] Speaker 01: Because in order to overcome the Samuelson reference and the ProTech and the Viomint reference, [00:08:45] Speaker 01: the board had to come up with a construction, then instead of just a partial resection across the midline, the entire knee... What do you mean by a partial resection across the midline? [00:08:59] Speaker 00: Do you mean that the saw comes in, say, from the outside and it moves and when it gets to the midpoint, it crosses the midpoint and leaves what would amount to a slit [00:09:11] Speaker 00: A slit that you couldn't, I mean, it would still have a top surface and it would, you know. [00:09:16] Speaker 01: Yeah, you can also cut down from the slit. [00:09:19] Speaker 01: There are partial resections where you do. [00:09:21] Speaker 05: I know, but is there anything in the spec of this patent that refers to a partial resection? [00:09:27] Speaker 05: The only place I see it is in your brief. [00:09:29] Speaker 01: That's correct. [00:09:31] Speaker 05: And you concede that because the patent has expired that we're supposed to be using Phillips. [00:09:37] Speaker 01: Correct. [00:09:38] Speaker 05: Not BRI. [00:09:39] Speaker 01: Correct. [00:09:39] Speaker 05: Okay, so don't we have to inform our view of this claim language by reference to the specification? [00:09:46] Speaker 01: The spec provides no guidance on this. [00:09:49] Speaker 01: I mean, that's an indefiniteness issue that we raised below that the board and the examiner before it did not accept. [00:09:56] Speaker 01: But because these claims were unamended, they didn't get to the indefiniteness issues. [00:10:02] Speaker 01: So we kind of, we don't have a record on [00:10:05] Speaker 01: the spec support to your Honor's question. [00:10:09] Speaker 05: But you can't point me to anything in the spec that discusses a partial resection as opposed to continual reference to a resection. [00:10:15] Speaker 01: That's correct. [00:10:16] Speaker 01: There is no reference in the spec to partial resections, I believe. [00:10:21] Speaker 05: Okay, so what support do you have in the spec for your interpretation of the claim language? [00:10:26] Speaker 05: You say we never have to get there? [00:10:28] Speaker 01: I'm simply countering what the Board found in its statements, and it's a logic. [00:10:34] Speaker 01: question or a logical argument if you will that the board's findings in terms of what this claim covered would require a resection to go across the midline and then if it went a little bit past the midline they would they realized that that would be captured by the prior art because both Samuelson and ProTech had at least two arm approaches and you can't cut precisely to a midline so if you're going the prior art taught [00:11:04] Speaker 01: You would have to at least go a little bit past the midline because you just can't line up these devices at a single point. [00:11:10] Speaker 01: And indeed, even the patent owner realizes this problem when it came up with its freehand approach that it put into the red brief. [00:11:18] Speaker 01: And in the freehand argument that they made for the first time on appeal, they said, well, there's actually three cuts. [00:11:23] Speaker 01: The prior would let you cut from the left and the right, and you get close to the middle, and then you take the cutting guide off, and you just freehand it, the rest of the [00:11:32] Speaker 01: that the tail of the needle need to be cut off. [00:11:35] Speaker 05: I'm still trying to get back to it. [00:11:37] Speaker 05: So the board said under BRI, you need a complete resection all the way across, a complete cut all the way across. [00:11:45] Speaker 01: That's how it read the Klein language, correct. [00:11:48] Speaker 05: And now we're trying to decide whether or not under Phillips, which is by definition more narrow, that it doesn't require that. [00:11:58] Speaker 02: Correct. [00:11:58] Speaker 05: So I'm trying to find some place in the intrinsic record that you can point me to that says that. [00:12:08] Speaker 01: Well, Your Honor, I think you don't necessarily have to go into the intrinsic record. [00:12:13] Speaker 01: You can just go into the claims themselves. [00:12:17] Speaker 01: I mean, claim 35 says that you are simply cutting into glasses here. [00:12:29] Speaker 01: that you're cutting, creating at least one resected surface. [00:12:36] Speaker 01: So the surface is not a complete resection. [00:12:39] Speaker 01: It's describing at least one resected surface. [00:12:43] Speaker 01: So the claim language itself does not claim a complete resection. [00:12:48] Speaker 01: And a resected surface is simply some part of the knee that has been resected. [00:12:52] Speaker 01: You've had the bone removed from it. [00:12:54] Speaker 01: So we don't need spec support when you just do plain meaning of claim language. [00:12:59] Speaker 01: So that was the problem that we kept addressing with both the examiner and the board, that the claim language itself, putting aside the spec, claim language itself had all these open-ended terms or less than all type of terms. [00:13:15] Speaker 01: And particularly on the resected surface language in 35, it was simply at least one. [00:13:21] Speaker 01: So when the board came in later, it changed that claim language from at least one resected surface to a complete resection. [00:13:30] Speaker 01: And that's error. [00:13:31] Speaker 01: That's just reading the claims wrong. [00:13:35] Speaker 01: So I think that regardless of what the spec might say, which candidly has nothing to do with the saws and resection, the entirety of the specification is about a milling approach to create a curvilinear implant structure. [00:13:51] Speaker 01: There's just not spec support for these claims, but that's an issue that we didn't have to, we weren't allowed to reach. [00:13:57] Speaker 01: Well, no. [00:13:57] Speaker 05: I mean, there's a lot in the specs. [00:13:59] Speaker 05: in the spec about the placement of the guide and how the guide works in relation to the cut. [00:14:07] Speaker 05: Is there not? [00:14:08] Speaker 01: There's not. [00:14:09] Speaker 01: There's figure 18. [00:14:11] Speaker 05: Well, that's not true. [00:14:12] Speaker 05: I mean, this is a long specification. [00:14:15] Speaker 05: And this is a claim that has a number of very specific limitations in it, which is understandable since it started as a dependent claim. [00:14:28] Speaker 05: So not every single figure would recite every single one of these multiple claims. [00:14:35] Speaker 01: Well, Your Honor, I'm simply referencing what it is that the patent owner relies on. [00:14:42] Speaker 01: The patent owner only relies on figure 18 for this whole set of claims. [00:14:47] Speaker 01: That's all I've ever talked about. [00:14:49] Speaker 01: That's the only thing. [00:14:50] Speaker 01: And the rest of the figures have [00:14:53] Speaker 01: have milling guide limitations about where the milling guide is. [00:14:57] Speaker 05: Right, but their argument is that those relate to different claims. [00:15:00] Speaker 01: Of course, it's correct, Your Honor. [00:15:02] Speaker 01: But I mean, in short answer to your question, while there may be lots of other inventions in this patent or lots of other disclosures, lots of other embodiments, when you're trying to find support for the claims that issue, the ones that are left, it's only figure 18. [00:15:20] Speaker 01: And when you look at figure 18, [00:15:22] Speaker 01: It doesn't tell you whether it's on a medial or a lateral or an anterior side. [00:15:27] Speaker 01: Those words don't appear in the specification. [00:15:30] Speaker 01: All you have is a figure. [00:15:31] Speaker 01: And when you look at the figure, it shows a bone, head. [00:15:35] Speaker 01: It shows something, an L-shaped structure. [00:15:39] Speaker 01: It shows that L-shaped structure is longer on the front than on the side. [00:15:44] Speaker 01: But there's no description in figure 18 of figure 18 as being [00:15:49] Speaker 01: primarily or generally medially, generally laterally, anterior portions. [00:15:56] Speaker 01: None of that language is in the claim. [00:15:58] Speaker 00: Can I ask you this? [00:15:59] Speaker 00: I'm just having a little trouble visualizing this. [00:16:02] Speaker 00: It seems to me you're making two different kinds of points. [00:16:07] Speaker 00: One is whether the claim covers situations in which, to complete the cut, you come in from more than one side. [00:16:16] Speaker 00: And the other is this business about what a total or a partial resection is. [00:16:22] Speaker 00: And suppose for a minute we hold as a given that at least claim 35 here in the wherein clause requires the cutting to be done just from the medial side. [00:16:45] Speaker 00: constitutes a resection that goes into the lateral side that isn't going all the way across. [00:16:55] Speaker 00: Because remember, you're not going to get the cut, essentially, if you go in across the midline and you create a slit into the lateral side now, coming in from the medial, coming into the, you cross the midline, you go into the lateral, and you now get this slit. [00:17:13] Speaker 00: In order for that portion to be a resection, you're going to have to at least remove bone above it. [00:17:19] Speaker 01: Correct. [00:17:19] Speaker 00: Which you can't do from the side. [00:17:21] Speaker 01: That's correct. [00:17:22] Speaker 00: So why doesn't this necessarily or reasonably necessarily imply that cutting a lateral side where a resection is occurring on that lateral side as well as the medial side has to go all the way across? [00:17:43] Speaker 01: Because there's language in the claim that there's at least one resected surface. [00:17:49] Speaker 00: Assume with me for this purpose that until you get to the where-in clause, the language of the claim is completely clear that you can use two different sides, but then not on the where-in clause. [00:18:01] Speaker 00: And I'm just trying to focus on this partial versus complete resection. [00:18:05] Speaker 00: Yes. [00:18:05] Speaker 01: Well, Your Honor, you make a very good point because when you look at the claim language in the where-in clause, it's not claiming a resection. [00:18:12] Speaker 01: it's claiming a cutting. [00:18:14] Speaker 01: It's exactly Your Honor's point. [00:18:16] Speaker 01: It says, using the tibial cut guide further includes cutting a lateral side. [00:18:22] Speaker 01: So Your Honor's notching into a bone, that would be covered by that language. [00:18:28] Speaker 01: It's not a resection of the lateral side. [00:18:30] Speaker 01: I could simply cut into that side. [00:18:33] Speaker 05: But you've got to cut into it coming from the medial side. [00:18:37] Speaker 01: Not necessarily, in the convoluted and contorted way in which this claim is [00:18:42] Speaker 01: is written, it is describing guiding the cutting tool further includes. [00:18:48] Speaker 01: And it doesn't place limitations on the orientation in which the cutting is done. [00:18:52] Speaker 05: Well, how do you guide it from the medial side to cut the lateral side if you're not going all the way across? [00:18:57] Speaker 01: You can guide it from any place that is claimed in that structure. [00:19:01] Speaker 01: And if you look at the claim, the claim says a portion is on the anterior side. [00:19:06] Speaker 01: The cutting guide is on the anterior side. [00:19:09] Speaker 01: So if you're using the cutting guide, which is on the anterior side, to cut into the lateral side, you can cut from the anterior side. [00:19:16] Speaker 01: So the claim has no requirement from the wherein clause that you're cutting from medial to lateral side. [00:19:25] Speaker 01: It says you are using the cutting guide, which has an anterior portion and admittedly some portion on the medial side. [00:19:33] Speaker 01: But that actually begs the question about what does the claim also include? [00:19:37] Speaker 01: When you in the wherein clause use the language generally medially, that does not preclude partially laterally. [00:19:46] Speaker 01: So the claim can be on all three sides. [00:19:50] Speaker 01: You can have a generally medially, most of it on the medial side. [00:19:54] Speaker 01: You have to have a partial, a portion on the interior. [00:19:58] Speaker 01: And by saying generally as opposed to only, the claim allows a lateral portion to be present. [00:20:06] Speaker 01: And therefore, when you cut into the lateral side, you can cut from any of those three claimed guide positions. [00:20:15] Speaker 01: So that creates this morass that the board had to... I think that we need to... We're four minutes over all of your time. [00:20:23] Speaker 03: Yes, Your Honor. [00:20:24] Speaker 03: So I think that we need to move on to Mr. Peterson. [00:20:26] Speaker 03: I'll restore two minutes of rebuttal time. [00:20:28] Speaker 01: Thank you, Your Honor. [00:20:29] Speaker 03: Mr. Peterson. [00:20:38] Speaker 06: Thank you, Your Honors. [00:20:38] Speaker 06: I apologize for bringing the computer up, but you cited a regulation that I hadn't focused on, obviously, in this, and so to please the court, I'd like to address your question, particularly, Judge Moore, about the regulation. [00:20:50] Speaker 06: Sure. [00:20:50] Speaker 02: Go ahead. [00:20:50] Speaker 06: The regulation specifically in 1530J says that no amendment may be proposed for entry. [00:21:00] Speaker 06: This is an amendment that has already been proposed after the patent has been expired. [00:21:06] Speaker 06: And so what the office should do, in our opinion, as we took a look at it, now that the claim is expired, we made this argument in section six brief that this was going to be an issue if the claim expired before your decision was rendered. [00:21:22] Speaker 06: Now it has. [00:21:23] Speaker 06: Now we are in Markman, Phillips construction. [00:21:26] Speaker 06: We know that we cannot enter those amendments. [00:21:28] Speaker 06: So what will the patent office do on remand? [00:21:31] Speaker 00: I'm sorry. [00:21:32] Speaker 00: Just to be clear, the next sentence, moreover, [00:21:35] Speaker 00: Moreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent. [00:21:44] Speaker 00: Certificate hasn't issued yet. [00:21:46] Speaker 00: That's a future event. [00:21:47] Speaker 00: It's now right. [00:21:48] Speaker 00: Any certificate would have to be after the expiration. [00:21:50] Speaker 00: So doesn't that say no amendment will be incorporated? [00:21:53] Speaker 06: No, it does not. [00:21:53] Speaker 06: If you go to MPEP 2682, Roman 1 sub A, they say if you've had an independent claim and a dependent claim. [00:22:04] Speaker 06: Both reject it. [00:22:07] Speaker 03: And then the board confirms the rejection of the independent claim that enforces the... That argument only goes to what we've been calling the unamended claims. [00:22:19] Speaker 03: Correct. [00:22:19] Speaker 06: Okay, that argument says nothing about the ones that were actually... So that one you go to MPEP 2687, Roman 3 sub D. And that one says, if it expires, you go back to the unamended version. [00:22:33] Speaker 03: Right. [00:22:34] Speaker 03: Well, that's what I said before. [00:22:35] Speaker 03: OK. [00:22:35] Speaker 06: And so for the independent, unamended version. [00:22:39] Speaker 03: Just to be clear, so for the amended claims, right now... They're going to go back. [00:22:44] Speaker 06: And when you say go back, we have to vacate the allowance because... No, you do not have to vacate the allowance because the procedures that the office has allow the examiner in MPEP 26821A to rewrite the dependent claim [00:23:03] Speaker 06: with the amendments to the independent claim gone to rewrite that dependent claim in independent claim. [00:23:10] Speaker 03: That's not the amended claims. [00:23:11] Speaker 03: We're talking about the amended claims. [00:23:14] Speaker 06: So even those claims that got amended, you take those amendments out because they were allowed based on the nature of the limitations in the dependency, they may still be issued. [00:23:26] Speaker 05: No, no, no, no, no, no. [00:23:27] Speaker 03: They were allowed based on the amendments. [00:23:32] Speaker 06: based on the word only and based on the additional no no no the board's decision is very clear. [00:23:37] Speaker 03: Let me be clear. [00:23:39] Speaker 03: The examiner rejected your claims. [00:23:42] Speaker 03: Twice. [00:23:43] Speaker 03: Basic and final. [00:23:44] Speaker 03: Goes up on appeal to the board. [00:23:46] Speaker 03: You've got these amendments. [00:23:47] Speaker 03: Board reverses. [00:23:49] Speaker 06: On the dependent claims. [00:23:51] Speaker 03: On the claims that were amended that are on appeal to us that I refer to as amended. [00:23:57] Speaker 03: Maybe it'll help you if I tell you which claim numbers I'm talking about. [00:23:59] Speaker 03: That would be excellent. [00:24:01] Speaker 03: Thank you Your Honor. [00:24:02] Speaker 03: We're speaking about the same claims. [00:24:04] Speaker 03: I will call the amended claims. [00:24:06] Speaker 03: 31, 33, 39 to 40, 45, 47, 53 to 54. [00:24:09] Speaker 03: Yes. [00:24:09] Speaker 06: On those claims... Those are the ones that the board reversed again on the request for rehearing. [00:24:16] Speaker 03: Yes. [00:24:17] Speaker 03: And on those claims, you added language like... The only language and the single language and some of those. [00:24:24] Speaker 03: Exactly. [00:24:24] Speaker 06: That language would not be in the claims as rewritten by the examiner [00:24:30] Speaker 03: Which is why the only allowance was to these amended claims. [00:24:36] Speaker 03: The only allowance was to the amended version. [00:24:38] Speaker 03: The board did not consider, much less decide anything with regard to the claims before the amendments, which still stand rejected by the examiner and not considered by the board. [00:24:51] Speaker 03: So I don't see how there's anything I can do but to vacate your allowance. [00:24:56] Speaker 06: Well, here's the issue why I must respectfully disagree with you. [00:25:00] Speaker 03: Well, you don't want it to be so. [00:25:02] Speaker 06: No, I have to disagree with you. [00:25:03] Speaker 06: We are now in Markman versus Phillips. [00:25:06] Speaker 06: From the start of this re-exam, the patent owner has continuously argued there is no need for those amendments. [00:25:15] Speaker 03: They were not substantive. [00:25:17] Speaker 03: So you would like me to decide in the first instance. [00:25:19] Speaker 03: The board did not decide. [00:25:21] Speaker 03: whether your original claims as not amended are allowable. [00:25:25] Speaker 03: So you're going to ask me in the first instance to decide whether I should overturn the examiner's rejection, which is the only thing that's ever happened, of those original claims absent the amendments you added. [00:25:36] Speaker 03: You'd like me to do that in the first instance? [00:25:39] Speaker 03: That is really not a good process to get started. [00:25:42] Speaker 06: Well, this is why Senator Leahy was right when he said that these interparty re-exam procedures were entirely inefficient and ineffective. [00:25:51] Speaker 06: Those amendments were made in 2011, Your Honor. [00:25:54] Speaker 03: You could have appealed the originally filed claims to the board. [00:25:57] Speaker 03: You didn't. [00:25:58] Speaker 03: You appealed only your amended claims to the board. [00:26:01] Speaker 06: We made the argument because in 2011- Don't interrupt the judge when she's speaking, all right? [00:26:04] Speaker 03: Thank you. [00:26:04] Speaker 03: You only appealed your amended claims. [00:26:07] Speaker 03: So you never even gave the board a chance, much less asked them to consider the patentability of the originally filed claims, originally issued claims. [00:26:15] Speaker 03: That's a great example. [00:26:16] Speaker 06: Because we did not think it was going to take five years to get to this point, Your Honor. [00:26:21] Speaker 06: And so we assumed, we assumed, because this is an important thing to understand, we assumed when we made those amendments in 2011, we'd never have an opportunity to argue the original claims under Markman Phillips. [00:26:35] Speaker 06: Right. [00:26:36] Speaker 05: Because we assumed. [00:26:37] Speaker 05: Maybe that was a fair assumption at the time, but that's not where we are now. [00:26:41] Speaker 05: I know it's not where we are now. [00:26:41] Speaker 05: And putting aside the fact that this may have been burdensome on the patent owner, we have limitations on our authority. [00:26:49] Speaker 05: We can't go back and construe claims that the board has never passed on. [00:26:53] Speaker 06: But they have construed the dependent claims, and that's what I'd like to get to, because this is a single-sided, half-width, cutting-guide claim. [00:27:03] Speaker 03: So now you'd like us to move to what I will call the unamended claims, which are simply dependent claims rewritten in independent forms. [00:27:09] Speaker 06: Yes. [00:27:09] Speaker 06: So let's take claims 35 to 38 and 49 to 52. [00:27:12] Speaker 05: The same thing I asked the other side. [00:27:14] Speaker 05: If they're technically amended, [00:27:17] Speaker 05: They are amended. [00:27:19] Speaker 05: Under the MPEP provisions. [00:27:20] Speaker 05: I know you guys call them unamended, but why wouldn't those also be subject to the rule that says they can't issue? [00:27:28] Speaker 06: Well, the requester has admitted that they're unamended in their brief, so I think that they are effectively unamended. [00:27:36] Speaker 06: But the MPEP provisions allow the examiner, when you're faced with this situation of an independent, rejected, and affirmed, the dependent overturned and reversed, [00:27:47] Speaker 06: for the examiner to rewrite the claim. [00:27:49] Speaker 06: And that's not an amended claim in the eyes of the patent office, would be our position, Your Honors. [00:27:56] Speaker 06: That's why it's an unamended claim. [00:27:58] Speaker 06: So let's focus on those, talk about those, and say where we're at. [00:28:02] Speaker 06: The partial reception argument. [00:28:05] Speaker 06: There is a very specific passage in the board's decision which addresses that particularity. [00:28:13] Speaker 00: The original or the rehearing? [00:28:14] Speaker 06: The rehearing decision, page 6, A26. [00:28:17] Speaker 06: The board is specifically addressing the requester's argument about partial resection. [00:28:24] Speaker 03: What page of the appendix were you on? [00:28:26] Speaker 06: I'm sorry. [00:28:27] Speaker 06: A26. [00:28:29] Speaker 06: Thank you. [00:28:30] Speaker 06: When taking the claims at issue in context, it is not merely the fact that the surgeon's blade passed the midline of the bone, but rather, as Your Honor said, [00:28:41] Speaker 06: but that the entire resection is being done using a guide on one side to complete the recession. [00:28:49] Speaker 00: Right. [00:28:49] Speaker 00: I know that the board expressly said that. [00:28:52] Speaker 00: The question is, is it wrong? [00:28:54] Speaker 00: No, that is right. [00:28:55] Speaker 00: So argue about the plain language why that is the best interpretation. [00:29:02] Speaker 00: And I gather the other side's textual point is that the wherein clause says you have to [00:29:12] Speaker 00: cut a lateral side, that language doesn't say you have to make a resection on the lateral side. [00:29:21] Speaker 06: But if you were to rewrite the claim, the immediately preceding step is implanting the implants by positioning a femoral implant on the at least one fixation surface. [00:29:38] Speaker 06: You can't do that with a notch. [00:29:39] Speaker 06: I can't do that with a notch. [00:29:41] Speaker 06: And that's our argument, Your Honor. [00:29:43] Speaker 06: That's why it's very reasonable to say it was completed so that you had a fixation surface. [00:29:50] Speaker 05: You say we're in Phillips. [00:29:52] Speaker 05: Yes. [00:29:54] Speaker 05: I have to say that I've never been more frustrated by the absence of citations to the written description. [00:29:59] Speaker 05: You know, nobody cites to be anything in the written description except your Figure 18. [00:30:05] Speaker 05: So what are your best textual [00:30:08] Speaker 05: arguments as it relates to the written description. [00:30:11] Speaker 06: In this situation, the written description, admittedly, there was a preferred embodiment and a secondary embodiment. [00:30:17] Speaker 06: The preferred embodiment is the milling embodiment. [00:30:19] Speaker 06: Most of the description is about that. [00:30:21] Speaker 06: The description and specification for Figure 18 occurs at Column 19 and 20 of the 541 patent, but it references other aspects, and I'm going to [00:30:37] Speaker 06: leads you to one of those different aspects. [00:30:39] Speaker 06: If you look at figure four, you will see a side of a cutting guide, that's a milling guide, that the single-sided version says to be done. [00:30:49] Speaker 06: And what you will see there is that there is essentially five surfaces on that side. [00:30:55] Speaker 06: There is a flat surface at the top that says that this is the distal surface. [00:31:01] Speaker 06: There are two angled surfaces at the side, the chamfer surfaces. [00:31:05] Speaker 06: And then there's a posterior and anterior surface. [00:31:09] Speaker 06: When we set in the claim at least one resected surface, what we were providing for was that the guide could do more than just a flat surface. [00:31:18] Speaker 06: You could create these two angled surfaces on the end of the bone and then the two up and down surfaces on the end of the bone that the implant sits on. [00:31:29] Speaker 06: So we did not want to say [00:31:31] Speaker 06: Our guide is only creating the single flat surface on the very distal end of the bone. [00:31:37] Speaker 06: You could have a guide, and figure four is an example, where you also created the angled surfaces and you created the up and down surfaces. [00:31:45] Speaker 06: That would be at least one resected surface. [00:31:48] Speaker 06: In that case, there would be five resected surfaces. [00:31:51] Speaker 06: The claim was written to allow for that. [00:31:54] Speaker 06: So they're taking the at least one resected surface language and reading it out of context. [00:32:00] Speaker 06: to support that argument that somehow this is ambiguous. [00:32:04] Speaker 06: There's the distal resected surface that is created completely by positioning the guide on the inside and cutting all the way across to the opposite side compartment or portion, the other half of the knee. [00:32:21] Speaker 06: That's why we call this a single half guide, half width cutting. [00:32:26] Speaker 06: That's the best way to kind of [00:32:29] Speaker 06: see what's going on here. [00:32:30] Speaker 06: The reason why this is important, Your Honors, is up until Mr. Haynes's invention, the incision to do a total nearthroplasty was almost a foot. [00:32:43] Speaker 06: It went straight midline. [00:32:45] Speaker 06: You splayed the knee open in order to access a full-width guide. [00:32:49] Speaker 06: All three of the prior art references that the requester did are the exact same as Burke. [00:32:56] Speaker 06: They are full-width guides. [00:32:59] Speaker 06: To do a full-width guide, you needed to make that big incision. [00:33:04] Speaker 06: For the L-shaped guide that's shown in Figure 18, I can make a 3 to 4 inch incision on the inside of the knee, access it from here, and the hospital stay goes from a week to two days. [00:33:18] Speaker 06: That's why this is a big deal, Your Honors. [00:33:20] Speaker 06: And my client invented this in the middle 90s, long before this ever became what is currently today. [00:33:28] Speaker 06: the procedure that you would get if you went into the hospital. [00:33:30] Speaker 06: You're going to get a minimally invasive total knee replacement using a medially accessed cut for the most part. [00:33:39] Speaker 06: And that's where we're at. [00:33:40] Speaker 03: So your view is that these unamended claims like claim 35 is limited to a single cut which goes all the way across the entire length. [00:33:51] Speaker 06: Yes. [00:33:51] Speaker 06: And that's what the board's decision is. [00:33:54] Speaker 03: So you'll never assert this claim, for example, against [00:33:57] Speaker 03: somebody that cuts across the midline medially and then follows in with a cut laterally from the other side to connect up. [00:34:04] Speaker 06: Using a different guide, which is another part of the board's decision. [00:34:07] Speaker 03: You will assert that against people? [00:34:09] Speaker 06: No, no we would not. [00:34:10] Speaker 06: If they use two guides, two arms on the guides, first you cut this side using this arm, then you pull that away and then you throw the other one in and you cut using, no, that's the priority. [00:34:20] Speaker 06: That's not what this claim covers. [00:34:22] Speaker 00: No, but you're arguing here about claim construction. [00:34:25] Speaker 00: So the claim construction that you're embracing would also preclude finishing the cut freehand. [00:34:32] Speaker 06: No, it would not. [00:34:33] Speaker 06: Because the argument that the board made in their decision specifically references that when they said complete, what they meant was [00:34:52] Speaker 06: They meant finishing the guide with a different cutting guide. [00:35:02] Speaker 03: Finishing the cut with a different guide. [00:35:05] Speaker 06: Yes. [00:35:05] Speaker 06: So page 6 again, A26. [00:35:09] Speaker 06: Using a single guide without the need to complete the resection by using a different cutting guide. [00:35:15] Speaker 00: We think the claims at issue sufficient. [00:35:18] Speaker 00: I'm continuing from where you just left off. [00:35:21] Speaker 00: convey that in each instance the resection is completed by using a single cut guide to cut from one side to the other. [00:35:29] Speaker 00: In other words, the Patronus claims describe a complete resection. [00:35:35] Speaker 06: Well, that was not what we interpreted the board's decision to mean. [00:35:40] Speaker 06: And certainly, if you go to the other claims, in this case, admittedly, the amended claims. [00:35:46] Speaker 06: There is an ability to, what you're doing is cutting across from one side to the other so that you can do this medially placed guide that's less invasive, doesn't interfere with the patella ligament, which there are some other sections in the spec that talk about the patella ligament. [00:36:05] Speaker 06: They're cited in our brief here. [00:36:08] Speaker 06: That's where this invention is at. [00:36:10] Speaker 05: But if you ask us to affirm the board's decision, then we're affirming that interpretation of the claims. [00:36:18] Speaker 06: If you read it in its entirety, that entire paragraph about the complete resection, it's I'm completing the resection. [00:36:28] Speaker 06: I'm not doing the partial resection by cutting from one side to the other side. [00:36:33] Speaker 06: If there was a nub that wasn't there, that would not be [00:36:40] Speaker 06: out of the skill of a person of ordinary skill in the art to finish that freehand, because you're going to use the rest of the major surface that you've created to guide the blade to finish that out. [00:36:50] Speaker 06: In fact, that's what happens in practices. [00:36:52] Speaker 06: You may get a little bit of nub, some rough edges, something else in there, and they will go in and they'll probably finish it up freehand. [00:37:01] Speaker 06: So we would not be accepting a construction that we feel is limited [00:37:07] Speaker 06: in a way that requires an absolute complete resection where you can never do freehand to finish up the rough edges. [00:37:19] Speaker 00: But that would all be... Without a guide? [00:37:23] Speaker 00: I'm going to speak very imprecisely here. [00:37:25] Speaker 00: That is, the finishing up would be after, for the tibia, the north portion is done? [00:37:31] Speaker 06: Yes. [00:37:33] Speaker 06: You would have created the resected surface. [00:37:35] Speaker 06: And then you're going to smooth out the edges with a free hand. [00:37:42] Speaker 03: So there will be a full resection by the guide alone, by the one guide alone, cutting from one side to the other? [00:37:47] Speaker 03: Yes. [00:37:48] Speaker 06: It's going to create a resected surface. [00:37:50] Speaker 06: If there ends up being some still edge pieces left here because the surgeon didn't want to get too close to an edge over there with the tip of the saw, they'll go in and they'll do that, perhaps freehand, to be able to do that. [00:38:06] Speaker 06: The resected surface on which the implant is positioned is created entirely from a single half-width guide on the opposite side. [00:38:16] Speaker 03: So just to be clear, the whole bone is cut through, the whole thing is taken out. [00:38:19] Speaker 03: You're just saying there might be some splinters, some nubs, some edges that stick up, which they're going to go in and sand away, basically, cut away. [00:38:26] Speaker 06: Yeah. [00:38:27] Speaker 06: And so we want to make sure that that's very clear, that when the board was talking about complete, because [00:38:33] Speaker 06: You know, the requestor is correct. [00:38:35] Speaker 06: That first came up in the request for a rehearing decision. [00:38:37] Speaker 03: But I want to make sure that I understand your argument, though, which is the conversation we're having with Judge Toronto. [00:38:44] Speaker 03: So we all agree that this construction limits you to a medial cut that traverses the entire bone. [00:38:54] Speaker 03: There will be no cutting from the other side that is necessary to finish the job of traversing that entire bone. [00:39:02] Speaker 03: You're saying there may be some nubs or little sticking up points, but that the whole thing is already resected such that the bone can be removed. [00:39:09] Speaker 03: Yes. [00:39:09] Speaker 06: There might be some additional removal, but that's... You've removed a bone to create the resected surface onto which the implant... By the single cut coming from one side to the other. [00:39:19] Speaker 06: Yes, Your Honor. [00:39:20] Speaker 06: All right. [00:39:20] Speaker 06: That's our intended construction. [00:39:22] Speaker 06: That is what we feel the board upheld in upholding the dependent claims under BRI. [00:39:30] Speaker 06: There's no substantial evidence on the anticipation stuff. [00:39:34] Speaker 00: Before you sit down, can you return to where we started about Claims 3133, the so-called amended claim? [00:39:44] Speaker 00: Let me see if I can just... Suppose I thought that the changes in wording that you made were in fact substantive changes and that those changes [00:39:58] Speaker 00: the ones that the board approved cannot now be entered. [00:40:04] Speaker 00: Suppose I also thought that under some of the MPEP stuff that we were talking about, the unchanged versions of those claims, which the examiner rejected, which led to your changes, might now be considered by the board. [00:40:26] Speaker 00: So the original unchanged versions of 3133, et cetera. [00:40:33] Speaker 00: A, do you care about that? [00:40:36] Speaker 00: B, do we need to take some action or will that automatically happen because now that December 24th has come and gone under the board's MPEP and regulation, it is now the unchanged versions of those claims that are [00:40:57] Speaker 00: back in play. [00:40:59] Speaker 00: Do we need to do something? [00:41:00] Speaker 00: Do you want us to do something? [00:41:01] Speaker 00: Et cetera. [00:41:02] Speaker 06: I would like you to affirm the board. [00:41:05] Speaker 06: I think that when it comes back to the office. [00:41:09] Speaker 05: That's not an option. [00:41:10] Speaker 05: So do we dismiss that portion of the appeal or do we vacate the allowance to the extent that the appeal relates to that portion? [00:41:20] Speaker 05: or another option, if there's another option, assuming affirming the board. [00:41:24] Speaker 06: The dependent claims are allowed as separate claims. [00:41:27] Speaker 05: We're talking about the amended claims. [00:41:28] Speaker 06: You're talking about the amended claims. [00:41:30] Speaker 06: So that you understand and appreciate our arguments. [00:41:32] Speaker 06: From the very beginning, we said those amendments were not substantive changes. [00:41:35] Speaker 06: So I'm accepting your hypothetical. [00:41:37] Speaker 02: Yes. [00:41:37] Speaker 06: OK. [00:41:38] Speaker 06: That they are substantive changes. [00:41:40] Speaker 06: They should not be entered. [00:41:42] Speaker 06: And then you would go to MPEP 2687. [00:41:47] Speaker 00: Who would go? [00:41:48] Speaker 06: The examiner would. [00:41:50] Speaker 00: without our remanding or something? [00:41:53] Speaker 06: That's what the examiner will do. [00:41:56] Speaker 05: So we could just dismiss that portion of the appeal. [00:42:00] Speaker 04: No, because the allowance, you have to vacate the allowance as it pertains to those claims. [00:42:06] Speaker 04: Well, it'll never issue. [00:42:11] Speaker 03: Are you positive the PTO will do that? [00:42:14] Speaker 03: I think we need to vacate the allowance. [00:42:16] Speaker 06: Well, we would say, Your Honors, that if you're thinking that these claims are not allowed and that they could allowed, we should be given an opportunity then to go back and argue for the construction that we said was the right construction all along. [00:42:30] Speaker 06: Because we've only ever said these claims cover that. [00:42:33] Speaker 06: And the reason is, the art that was overcome, that you would consider an markman construction is Burke. [00:42:41] Speaker 06: It's that two-sided [00:42:43] Speaker 06: claim that looks exactly the same. [00:42:45] Speaker 03: I think we need to wrap up. [00:42:45] Speaker 03: Thank you, Mr. Peterson. [00:42:46] Speaker 03: Thank you. [00:42:48] Speaker 01: Appreciate your patience, Your Honor. [00:42:51] Speaker 03: Mr. Salyers. [00:42:52] Speaker 01: Thank you, Your Honor. [00:42:53] Speaker 01: I'll try and be brief. [00:42:54] Speaker 01: I've got five points. [00:42:55] Speaker 01: Number one. [00:42:56] Speaker 03: You have two minutes. [00:42:57] Speaker 01: I know. [00:42:57] Speaker 01: I'm going to do a fast talk, I guess. [00:42:58] Speaker 01: Judge O'Malley, your question about whether the dependent claim would be an allowed amendment. [00:43:04] Speaker 01: The statute, Section J, 1.53J, says no amendment may enlarge the scope of the claims. [00:43:11] Speaker 01: So that amendment that was done didn't enlarge the scope of the claims. [00:43:15] Speaker 01: So the non-amended claims aren't changed in their scope. [00:43:19] Speaker 01: And I think that's the purpose of that statutory provision. [00:43:22] Speaker 01: Number two, Judge Taranto, your question about partial resection. [00:43:25] Speaker 01: And the answer was, oh, well, we have this fixation surface that we need to put things on. [00:43:30] Speaker 01: If you read the claim language, it's actually you're not putting a fixation surface. [00:43:35] Speaker 01: It's got to be adjacent to at least one resected surface of the tibia. [00:43:40] Speaker 01: So the same surface that you only have one of is where this device is being fit on. [00:43:46] Speaker 01: The cut surface in the wear-in clause is a separate cut and is not part of the process that's in that claim. [00:43:55] Speaker 01: Third point. [00:43:57] Speaker 01: I don't know what their claim construction is now. [00:43:59] Speaker 01: I know what they said in their briefs. [00:44:01] Speaker 01: In their briefs, the red brief at page four [00:44:05] Speaker 01: Patent owner said that the allowed claims require a specific cutting guide placed on one side of the bone to be used to cut into the other side. [00:44:12] Speaker 01: That's the position they've maintained in the briefing. [00:44:15] Speaker 01: Now we're getting that it's a complete resection. [00:44:18] Speaker 01: That's not the argument they made in this appeal. [00:44:20] Speaker 01: They changed their position at this hearing. [00:44:23] Speaker 01: The board's construction, we talked a little bit about that. [00:44:29] Speaker 01: It's very clear, I think when you read that page 26 in the record, [00:44:34] Speaker 01: The board said this is a complete resection. [00:44:36] Speaker 05: Right, and that's what we have to. [00:44:38] Speaker 01: That's what you've got to grapple with. [00:44:40] Speaker 01: That's what your appeal, that's what your decision needs to be there. [00:44:43] Speaker 01: Then two last points. [00:44:44] Speaker 01: Claim 10 in Samuelson has not been spoken of by them in their brief. [00:44:50] Speaker 01: We briefed it in our brief. [00:44:51] Speaker 01: Claim 10 in Samuelson says, you're laterally extending this member next to the bone. [00:44:57] Speaker 01: You're putting the cutting guide next to the bone on the lateral side. [00:45:00] Speaker 01: You're inserting the blade, and you're resecting the bone. [00:45:04] Speaker 01: A complete resection is being disclosed in Samuelson. [00:45:08] Speaker 01: In that claim, there's none of this prime number stuff. [00:45:11] Speaker 01: It's a claim that says put it on the side, stick the blade through it, and resect the bone. [00:45:18] Speaker 01: So if you get to the point where this complete resection is your construction, you're toast. [00:45:23] Speaker 01: You cannot get around the Samuelson issue. [00:45:26] Speaker 01: Final point, Your Honor, Judge Taranto's question about what do we do with this appeal. [00:45:30] Speaker 01: You should give guidance to the Patent Office, I think, [00:45:34] Speaker 01: that there has been no appeal from the denial of the original claims as unamended. [00:45:41] Speaker 01: The original claims were in the process. [00:45:44] Speaker 01: They chose not to appeal them. [00:45:46] Speaker 01: We can't send it back for a redo. [00:45:49] Speaker 01: This case has been going on for six years. [00:45:52] Speaker 01: It has to end sometime. [00:45:54] Speaker 01: And I think it would be a travesty to send it back and let us start over again. [00:45:59] Speaker 05: But that's not our decision to make. [00:46:01] Speaker 01: Well, I understand that, Your Honor, but you have appellate jurisdiction. [00:46:04] Speaker 01: And you can state on the record that there was no appeal taken from the unamended claims, Claim 31, as unamended. [00:46:13] Speaker 01: And I don't think the board should allow an additional process. [00:46:17] Speaker 01: We may have to deal with that below. [00:46:19] Speaker 01: But certainly, they've made an argument about something they didn't appeal about. [00:46:22] Speaker 01: They made that in the red brief, which was wrong. [00:46:25] Speaker 01: I mean, I think you can comment on what they said in the red brief. [00:46:28] Speaker 01: They made the position that, oh, well, since if it gets after December 24th, we'll just go back to the original claims and let's talk about the original claims. [00:46:37] Speaker 01: That's not the way the process is supposed to work. [00:46:39] Speaker 01: If they'd wanted the original claims decided, they should have included them in the appeal. [00:46:44] Speaker 01: They didn't, and they've lost that right in our position, in our view of this. [00:46:50] Speaker 01: Thank you, Your Honors. [00:46:50] Speaker 01: I have no further. [00:46:51] Speaker 03: Thank both counsel. [00:46:52] Speaker 03: The case is taken under submission.