[00:00:00] Speaker 05:
I actually have something pleasant to do.

[00:00:01] Speaker 03:
No, that's a joke.

[00:00:03] Speaker 05:
But I will first turn over to Judge Raina for a motion.

[00:00:09] Speaker 03:
For two motions.

[00:00:10] Speaker 03:
Thank you, Judge Prost.

[00:00:11] Speaker 03:
I have the honor of moving for the admission of two of my clerks, Alex Ruge and Sarah Gelsimma.

[00:00:19] Speaker 03:
Can you stand, please?

[00:00:23] Speaker 03:
You know, time has gone by fast since the time that you've joined me in chambers.

[00:00:28] Speaker 03:
They say that time flies when you're having fun, but I really think it flies even faster when you're working hard.

[00:00:34] Speaker 03:
And that's exactly what's been going on with you two.

[00:00:37] Speaker 03:
I think that the bar and the US legal profession stands in really, really good stead, having both of you in the profession.

[00:00:46] Speaker 03:
And the court thanks you for the work that you've brought to the court.

[00:00:53] Speaker 03:
With that, Judge Prost, Judge Hughes,

[00:00:57] Speaker 03:
I move for the admission of Sarah E. Josema.

[00:01:01] Speaker 03:
She's a member of the bar, good standing with the highest courts in Michigan and Utah.

[00:01:06] Speaker 03:
I have knowledge of her credentials and I'm satisfied that she possesses the necessary qualifications.

[00:01:12] Speaker 03:
And I also move for the admission of Alex Ruge, who is a member of the bar and is in good standing with the highest court of Colorado and Illinois.

[00:01:20] Speaker 03:
I have knowledge of his credentials and I'm satisfied that he possesses the necessary qualifications.

[00:01:28] Speaker 05:
Well, Judge Hughes and I are delighted to grant the motion.

[00:01:33] Speaker 05:
Why don't you stay put for a moment and we'll have another motion and then we'll do this to Judge Hughes.

[00:01:40] Speaker 00:
It's that time of year, I think, when we all unfortunately see our clerks move on to hopefully better and bigger things, but we're sad to miss them.

[00:01:49] Speaker 00:
So I also have a motion.

[00:01:52] Speaker 00:
Kyle has been with me for about 18 months, and he's been an outstanding clerk, and although, like I said, I wish him well, I'm also going to miss his hard work and his perseverance.

[00:02:07] Speaker 00:
So with that said, I move the admission of Kyle Canavera, who is a member of the Bar, and is in good standing with the highest courts of Virginia and the District of Columbia.

[00:02:17] Speaker 00:
I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications.

[00:02:23] Speaker 05:
Again, I'm delighted, on behalf of myself and Judge Lane, to grant the motion.

[00:02:29] Speaker 05:
Would you all please stand for the oath?

[00:02:37] Speaker 00:
Do solemnly swear at the firm that you will comport yourself as an attorney and counselor of this Court, upright and according to law, and that you will support the Constitution and

[00:02:55] Speaker 05:
Congratulations all.

[00:02:58] Speaker 05:
Turning to the business at hand.

[00:03:01] Speaker 05:
Case 15-1997 and 16-1000.

[00:03:04] Speaker 05:
Daco, Denmark versus Lecha, Biosystems, Melbourne.

[00:03:13] Speaker 05:
We've combined both of these cases for argument and I appreciate the cooperation of the parties in that regard.

[00:03:20] Speaker 05:
Mr. Green.

[00:03:27] Speaker 01:
Thank you, Your Honor, and may it please the Court.

[00:03:30] Speaker 01:
I am Jack Freeman, representing DACA.

[00:03:33] Speaker 01:
I'm here today with Bradford Schmidt, the Chief Intellectual Property Counsel of Agilent, the parent company of DACA.

[00:03:40] Speaker 01:
These two cases are before you on appeals from interparties reexaminations.

[00:03:46] Speaker 01:
Those reexaminations began after my client sued Leica for infringement of the two patents at issue.

[00:03:53] Speaker 01:
that infringement case was stayed and re-examination proceedings began.

[00:03:59] Speaker 01:
Now, I submit this case is worthy of special attention for at least a couple of reasons.

[00:04:07] Speaker 01:
First, a number of pieces of objective evidence indicate that the board did not properly weigh both the secondary considerations as well as the art itself when it did the analysis that it did.

[00:04:23] Speaker 01:
And that analysis is predicated on so-called common sense considerations that we submit were hypothesized by the examiner and adopted by the board in direct contradiction to sworn expert evidence submitted by my client.

[00:04:41] Speaker 01:
That evidence by Dr. Floyd is undisputed and it directly undercuts and we say goes away from

[00:04:50] Speaker 01:
the so-called motivation to combine or to modify, which underpins the decisions in this case.

[00:04:55] Speaker 05:
OK, so let's look at the prior art references.

[00:04:56] Speaker 05:
You've got Sung and you've got Muller, both in the same field, similar, talking about what you're talking about in your patent.

[00:05:02] Speaker 05:
What is the problem with the board's conclusions on motivation to combine?

[00:05:07] Speaker 01:
The board misread Sung.

[00:05:10] Speaker 01:
Sung does not teach what the board said it does.

[00:05:13] Speaker 01:
Only in hindsight can you say that Sung teaches individually heating slides.

[00:05:19] Speaker 01:
If you look at Sung, and I ask the court to look at the quoted material, you will see in context.

[00:05:25] Speaker 03:
What do you mean by individually, that it doesn't heat them one at a time?

[00:05:29] Speaker 01:
That's right, Your Honor.

[00:05:31] Speaker 00:
So that's not what the board relied on Tom for.

[00:05:34] Speaker 00:
The board relied on Mueller for that.

[00:05:36] Speaker 01:
Well, the board relied entirely on Sung in one of the two appeals for that teaching.

[00:05:44] Speaker 01:
My point is that Sung teaches only batch heating.

[00:05:48] Speaker 01:
It never teaches individual heating of slides.

[00:05:52] Speaker 00:
I know we consolidated these, but it might be helpful to us if you talk about which patent you're talking about.

[00:05:59] Speaker 00:
Thank you, Your Honor.

[00:05:59] Speaker 00:
Because in one of them, they didn't rely on song solely for them to visualize heating.

[00:06:05] Speaker 00:
They relied on Mueller.

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

[00:06:08] Speaker 04:
Isn't that the 392?

[00:06:09] Speaker 01:
That's the 392 patent, yes.

[00:06:11] Speaker 04:
And are you talking about the 392?

[00:06:14] Speaker 01:
Well, I'm making a point, I think, that applies to both, which is that the board misread Sung's teachings.

[00:06:20] Speaker 01:
And so it cannot rely on the prior art to find the teachings that are directly contradicted by the Floyd Declaration.

[00:06:28] Speaker 04:
OK, now I'm confused.

[00:06:30] Speaker 04:
Are we talking about the 392?

[00:06:31] Speaker 04:
Let's talk about the 392.

[00:06:32] Speaker 01:
OK, talking about the 392 case.

[00:06:34] Speaker 01:
All right, in that case, the board combined

[00:06:38] Speaker 05:
sung, which we submit teaches... But didn't it rely on Mueller for teaching the desirability of heating individual slides at different temperatures for staining procedures?

[00:06:48] Speaker 05:
Did it rely on Mueller for that?

[00:06:50] Speaker 01:
It did rely on Mueller for that teaching, Your Honor, yes.

[00:06:52] Speaker 01:
Okay.

[00:06:53] Speaker 01:
And we submitted that there would be no motivation to modify the primary reference to heat individual slides because if you look at the art and you look at the context of sung,

[00:07:06] Speaker 01:
which has all the other, allegedly has, which we admit has all the other elements, there would be no motivation to modify.

[00:07:14] Speaker 03:
I find your argument interesting.

[00:07:16] Speaker 03:
But let me ask you this question.

[00:07:18] Speaker 03:
Would a person skilled in art take sung and say, OK, I can heat multiple slides.

[00:07:27] Speaker 03:
I'm going to use this to heat only one.

[00:07:30] Speaker 01:
We would say no, Your Honor, because if you look at sung in its introduction, it talks about

[00:07:35] Speaker 01:
Automated processing of large numbers of slides.

[00:07:38] Speaker 03:
That's what we refer to.

[00:07:39] Speaker 03:
I guess my question is, why do you need Mueller?

[00:07:42] Speaker 03:
Why is Mueller necessary at all in order to support the board's finding?

[00:07:47] Speaker 03:
It seems if you have a device or the apparatus here that heats multiple slides, why is it standing alone?

[00:07:57] Speaker 03:
Wouldn't be enough to say, well, maybe I can build one that heats only once.

[00:08:03] Speaker 01:
Because the whole purpose of SUNG is high-throughput batch processing of slides in a laboratory context.

[00:08:10] Speaker 01:
That is taught, is explained in detail by the Floyd Declaration.

[00:08:15] Speaker 01:
We submit the board and properly ignore that evidence.

[00:08:17] Speaker 00:
But even SUNG, it teaches heating different rows of slides at different temperatures.

[00:08:24] Speaker 01:
Yes, it does.

[00:08:25] Speaker 00:
So you agree that it shows heating different rows.

[00:08:28] Speaker 00:
Well, if you only put one slide on each row, it's heating one slide to a certain temperature.

[00:08:34] Speaker 01:
Your Honor, respectfully, that's exactly the improper hindsight that the board engaged in.

[00:08:39] Speaker 01:
At the time of the invention, there was no teaching to do these slides one at a time.

[00:08:45] Speaker 00:
Except for Mueller.

[00:08:48] Speaker 01:
Well, yes, but Mueller didn't have any of the other elements of the claimed invention.

[00:08:55] Speaker 01:
It's not an open air stainer, which is required by the claims.

[00:08:58] Speaker 05:
But it's also not an anticipation rejection.

[00:09:00] Speaker 05:
I mean, in an obviousness context, you're always going to combine two references, right?

[00:09:05] Speaker 01:
Well, yes, Your Honor, you are.

[00:09:07] Speaker 01:
But in order to do that, you need to have a motivation to do it.

[00:09:10] Speaker 03:
And we submit that Floyd- If the sun is used for multiple slides or commercial use.

[00:09:18] Speaker 03:
In my mind, I started looking at commodity purposes, just a whole lot of slides being heated at one time.

[00:09:24] Speaker 03:
But then there's this outstanding need for maybe heating and staining slides in a very complex application.

[00:09:33] Speaker 03:
Then why in that situation, why wouldn't somebody look at SUNG and say, gee, I need to have not many, just some or one.

[00:09:42] Speaker 03:
Why wouldn't they look at SUNG and say, I can take this and just create something that heats one slide?

[00:09:52] Speaker 01:
because there was no type of staining that would have required that, and the Floyd Declaration teaches and explains in detail market and technical reasons why a person of skill would not have thought that combination would work.

[00:10:10] Speaker 01:
This appeal really, I think, has as its most important point the fact that the board is using hindsight common sense to remake some

[00:10:22] Speaker 01:
in the 672 appeal, and to make up a combination with some and a totally different type of machine, which does happen to have individual side heating, in order to come up with the claimed invention.

[00:10:37] Speaker 01:
But the Floyd Declaration teaches why that combination would not have happened.

[00:10:43] Speaker 01:
Now, I know sitting here, you think, well, of course.

[00:10:47] Speaker 01:
Well, that's hindsight.

[00:10:49] Speaker 01:
And not only do we have the Floyd Declaration, we have two pieces of objective evidence that, as you know, the Supreme Court has endorsed as part of an obviousness analysis showing real life reasons why this combination would not have been made.

[00:11:04] Speaker 01:
The first is copying.

[00:11:07] Speaker 01:
So we submitted a declaration from one of the inventors, Dr. Bogan, who testified that he knew of Ventana's machine, which copied.

[00:11:19] Speaker 01:
Now Ventana, as you know from the brief, boasted about their copying of the claimed invention, which they got access to through a security circular.

[00:11:30] Speaker 05:
And the board considered that and talked about it and discounted it for a variety of reasons.

[00:11:35] Speaker 05:
Why is that not supported?

[00:11:36] Speaker 05:
And that was the only secondary consideration you pressed the board with, right?

[00:11:42] Speaker 01:
Well, to take your questions one at a time.

[00:11:45] Speaker 01:
So the reason it was improper to discount that was

[00:11:49] Speaker 01:
One, Dr. Bogan put in a sworn declaration based on his personal knowledge, saying it had been copied.

[00:11:57] Speaker 01:
The board should not have been allowed to disregard that.

[00:12:00] Speaker 05:
Well, maybe it's just a question of terminology.

[00:12:03] Speaker 05:
I don't read the board as disregarding it.

[00:12:05] Speaker 05:
They considered it, and they decided it wasn't significant enough to overcome the prima facie finding of obviousness.

[00:12:13] Speaker 05:
They didn't disregard it.

[00:12:15] Speaker 05:
No, this is absolutely completely irrelevant and we're not even going to think about it.

[00:12:19] Speaker 05:
They didn't do that at all.

[00:12:21] Speaker 01:
Well, Your Honor, we think that if you read the board's decision and then you look at the language they used in discounting, we say improperly discounting, the Floyd Declaration, they said, we're discounting it because it's not dispositive.

[00:12:36] Speaker 01:
Well, that's not the standard.

[00:12:38] Speaker 01:
Why don't we look at it?

[00:12:39] Speaker 05:
Do you have the site for where the board

[00:12:44] Speaker 05:
dealt with the secondary consideration.

[00:12:48] Speaker 01:
Yes, your honor.

[00:12:52] Speaker 01:
So this would be, and this citation is to the 392 appendix and briefs.

[00:12:59] Speaker 01:
The same material is in both.

[00:13:01] Speaker 01:
If you look at appendix 23, which is page 22 of the decision in the 392.

[00:13:07] Speaker 03:
Who's that page again, counsel?

[00:13:13] Speaker 01:
That's Appendix 23.

[00:13:17] Speaker 01:
So that's actually attached to the main brief in the 392 appeal, which is the 1-997.

[00:13:23] Speaker 01:
I'm sorry.

[00:13:28] Speaker 05:
Page again.

[00:13:30] Speaker 01:
It's the board decision at page 22, which is Appendix 23 in our blue brief on the 1-997.

[00:13:43] Speaker 01:
We think they violated the Supreme Court's requirements with respect to consideration of objective evidence when they required that this copying evidence be dispositive in order to overcome what we submit as a hindsight reconstruction of prior art.

[00:14:00] Speaker 01:
Supreme Court teaches.

[00:14:02] Speaker 00:
You're plucking one sentence out of this poor decision.

[00:14:04] Speaker 00:
They spent three or four pages prior to that explaining why they didn't think that evidence was sufficient to show copying.

[00:14:13] Speaker 01:
Well, I understand, Your Honor, that they first looked at the technical issues, and then they looked at the secondary considerations.

[00:14:19] Speaker 01:
We think that the use of this word, dispositive, suggests that they didn't do it right.

[00:14:24] Speaker 05:
And when you consider all the other... Can't you read dispositive fairly to say they're looking at the initial findings with regard to motivation, and they're saying, OK, and what have we got for secondary considerations?

[00:14:40] Speaker 05:
And they say, all we've got is copying.

[00:14:42] Speaker 05:
And we discuss copying, and we say, it's not dispositive.

[00:14:46] Speaker 05:
In other words, it doesn't mean that we are now, therefore, going to say there's a non-obviousness determination.

[00:14:54] Speaker 05:
Why wouldn't they use the word dispositive?

[00:14:56] Speaker 05:
They were talking about, OK, you wanted them to say that the copying is so substantial and so significant and so overwhelming that it overwhelms the rest of the case regarding obviousness.

[00:15:08] Speaker 01:
Your Honor, my point is that

[00:15:12] Speaker 01:
They use dispositive, which isn't the standard.

[00:15:14] Speaker 01:
Then they disregarded the- What is the standard?

[00:15:17] Speaker 01:
Well, all of the four factors in the gram factors have to be weighed.

[00:15:25] Speaker 01:
And we think equally.

[00:15:26] Speaker 01:
That's what your precedent teaches in the Inray Sullivan case.

[00:15:30] Speaker 01:
OK.

[00:15:31] Speaker 05:
So you didn't put on evidence of other secondary considerations.

[00:15:34] Speaker 01:
Well, Your Honor, we did.

[00:15:36] Speaker 01:
We cited an article that came out around the time.

[00:15:41] Speaker 01:
And what that article teaches is that there is a need for automation of special stains.

[00:15:51] Speaker 01:
And then it teaches a different solution to that.

[00:15:55] Speaker 01:
So that article is teaching a different solution than the one that the inventors came up with, which is individualized slide heating in an open-air structure.

[00:16:05] Speaker 01:
And we think that corroborates and supports our point.

[00:16:09] Speaker 01:
that you can only do this combination of art or modify sung in the 672 appeal if you do it in hindsight.

[00:16:18] Speaker 01:
Because at the time of the invention, persons of skill were being taught a different solution for this problem, which is automation of special stains.

[00:16:27] Speaker 01:
And so we think the board, Ms.

[00:16:31] Speaker 01:
Ritz.

[00:16:31] Speaker 05:
Are you talking about the 672 now?

[00:16:35] Speaker 01:
I'm talking about that the board

[00:16:37] Speaker 01:
treated the secondary considerations the same in both cases.

[00:16:41] Speaker 01:
So my argument applies to both.

[00:16:44] Speaker 01:
In both cases, the board, using almost exactly the same words, improperly discounted the weight of the copying evidence.

[00:16:54] Speaker 00:
But your problem is they didn't find copying altogether.

[00:16:58] Speaker 00:
I mean, the sentence you're pointing to is an alternative view that even if they had copied, which the board spent four pages explaining why there wasn't a preponderance of evidence to show copying.

[00:17:09] Speaker 00:
I mean, which we review that for substantial evidence, don't we?

[00:17:13] Speaker 01:
Well, you do review their weighting of the evidence for substantial evidence, yes.

[00:17:18] Speaker 00:
So if there's no copying, then this whole sentence about

[00:17:22] Speaker 00:
dispositive goes out the door well we think that there so you think they're their conclusion on copying lack substantial evidence yes yes i do and that's because there's a sworn declaration from a person of knowledge saying there was a copy and we cited two cases yeah but you don't win just because you put in a sworn declaration the board went through and explained why you find that declaration particularly convincing it went through a bunch of other facts about the case and said on the whole the preponderance suggests no copying

[00:17:53] Speaker 01:
Well, Your Honor, we think if you look at the declaration and you look at the cases that say that a sworn declaration establishing a fact in the absence of any contrary evidence can't be disregarded by the board or court.

[00:18:06] Speaker 00:
It wasn't disregarded.

[00:18:07] Speaker 00:
They considered it.

[00:18:09] Speaker 00:
They rejected it.

[00:18:10] Speaker 00:
There's a difference.

[00:18:13] Speaker 05:
You want to go on before your time runs out?

[00:18:15] Speaker 05:
Sure.

[00:18:15] Speaker 05:
I know we've been flipping back and forth on these patents, but I guess there's sort of other arguments

[00:18:20] Speaker 05:
with regard to claims.

[00:18:22] Speaker 01:
Yes, Your Honor.

[00:18:23] Speaker 01:
I see I'm approaching the end of my main time, so I'll reserve my full five minutes for rebuttal.

[00:18:28] Speaker 01:
Oh, okay.

[00:18:30] Speaker 01:
All right.

[00:18:30] Speaker 01:
Thank you.

[00:18:31] Speaker 01:
Unless you want to extend the time for argument.

[00:18:34] Speaker 05:
No, I don't think we're going to do that.

[00:18:42] Speaker 02:
Good morning.

[00:18:44] Speaker 02:
David Mangum on behalf of Lack of Biosystems.

[00:18:46] Speaker 02:
May it please the Court.

[00:18:48] Speaker 02:
The board's decisions here are supported in every respect as the question is brought out.

[00:18:55] Speaker 02:
With regard to the 392 patent, we have a combination of references that are in the exact same field.

[00:19:04] Speaker 02:
They deal with automated staining.

[00:19:07] Speaker 02:
This court in ICON Fitness, for example, combined

[00:19:11] Speaker 02:
references from very divergent fields, a treadmill and a Murphy bed, essentially, to put together a finding of obviousness and uphold the finding.

[00:19:21] Speaker 00:
What's the substantial evidence to combine Sung and Muehler?

[00:19:25] Speaker 02:
It's in the references themselves, Your Honor, and particularly with regard to the Sung reference

[00:19:34] Speaker 02:
The appendix at page A707, column 2, lines 21 through 31 of the SONG reference, it states, further developments that allow individual slides to be treated differently in a single batch operation and that provide an automated procedure that uses reagents efficiently remain needed.

[00:19:55] Speaker 02:
In the summary of the invention, it continues on.

[00:19:58] Speaker 02:
It is an object of the invention to provide an automated staining apparatus that is readily

[00:20:04] Speaker 02:
programmable to allow automated staining of individual microscope slides with different techniques.

[00:20:12] Speaker 02:
And then Mueller is talking about the same thing.

[00:20:14] Speaker 02:
And with due respect to my colleague here, the notion that you have special staining or ISH procedures and you have immunohistochemical, IHC, and that the two never meet is really trying to put blinders

[00:20:33] Speaker 02:
on the one of ordinary skill in the art.

[00:20:35] Speaker 02:
Here it's undisputed that one of ordinary skill in the art has a master's degree in biochemistry, has years of experience in the field, and the notion that we have two reference here, that both deal with automated staining apparatus, both talk about their application in IHC and ISH, not limited,

[00:20:57] Speaker 02:
the teaching combined and the substantial evidence that supports it.

[00:21:01] Speaker 02:
I find some credibility in your opponent's argument.

[00:21:04] Speaker 03:
For example, if Sung teaches that you can have a special staining that the patent undertakes, that you can achieve that using Sung.

[00:21:16] Speaker 03:
Am I correct in that?

[00:21:17] Speaker 03:
Sung does not limit itself.

[00:21:20] Speaker 03:
But it can.

[00:21:21] Speaker 03:
It can be used for special staining.

[00:21:26] Speaker 03:
So if you have

[00:21:27] Speaker 03:
an apparatus that does many slides but can also do one.

[00:21:33] Speaker 03:
What's the motivation to say, aha, I'm going to build a machine that only does one?

[00:21:38] Speaker 02:
The language that I just read from the Sun reference where it talks about the desirability of treating these slides individually and then, of course, with Mueller that provides that.

[00:21:51] Speaker 03:
But with Sun, you can already do that.

[00:21:54] Speaker 03:
Correct.

[00:21:55] Speaker 03:
What is the motivation then to say, let me invent something that only does one slide?

[00:22:05] Speaker 02:
Well, and I think the proper question there is to create something that has the capability of performing only one slide.

[00:22:13] Speaker 02:
And one of skill in the art would be obvious to modify the apparatus so that it only treated one by eliminating those additional

[00:22:25] Speaker 02:
raised areas.

[00:22:27] Speaker 02:
But both of the references, and Sung specifically, and this is at A714 in the appendix, specifically says, it will be apparent that the apparatus and method of the invention can be used in any staining technique that can be carried out manually, and that there are no limitations placed on the invention by the staining

[00:22:48] Speaker 02:
So we have the two references talking about in a very closely related field.

[00:22:52] Speaker 02:
How critical is the Mueller reference to the board's decision?

[00:22:56] Speaker 02:
Well, looking at shifting to the 672 patent, the fact that the board also found that the 672 patent, if interpreted the way that DACA wants it interpreted, would have been obvious based upon sung alone.

[00:23:12] Speaker 02:
We feel, and that's why we argued alternatively in our brief, that you can

[00:23:17] Speaker 02:
affirm the board, this court can affirm the board based upon song along because of the very language I read that talks about, has a teaching of these individual slide techniques, individual slide staining.

[00:23:32] Speaker 02:
So that's where the support in the record comes for this and the person of ordinary skill clearly has the

[00:23:42] Speaker 02:
the skills in order to make this combination.

[00:23:47] Speaker 02:
Now one thing I did want to address because it comes up frequently with regard to the notion of special stains and high throughput.

[00:23:58] Speaker 02:
DACO's argument is inappropriately looking at factors and indeed the Floyd Declaration is entirely talking about

[00:24:07] Speaker 02:
factors or motivations that are not within the claims.

[00:24:11] Speaker 02:
They're not within the claim scope.

[00:24:14] Speaker 02:
This court in ICON Health and Fitness noted that ICON's argument may have carried some weight with more narrow claims, but faced with broad claims encompassing anything that assists in stably retaining the tread base, we reject ICON's argument.

[00:24:33] Speaker 02:
You can't try to suggest that there's no motivation to combine by relying on things that are extraneous to the claims of the patent.

[00:24:41] Speaker 02:
You look at the patent claims to decide what renders it obvious, and arguing things like high throughput, which there's no limitation in the Sun reference about high throughput, no limitation in either of the patents in suit about high throughput.

[00:24:57] Speaker 02:
And we also cite in the brief

[00:25:00] Speaker 02:
the Smith and Nephew versus Ray case that says, an unclaimed and undisclosed feature cannot be the basis for finding the patent to be non-obvious over the prior art.

[00:25:12] Speaker 02:
So directly on point here.

[00:25:14] Speaker 02:
And that's why the Floyd Declaration simply carries no weight with regard to criticism of the board and its findings and being supported by substantial evidence.

[00:25:25] Speaker 02:
And I would just point out to the court there's been

[00:25:27] Speaker 02:
post-briefing decision that really goes right directly to this.

[00:25:31] Speaker 02:
It's the Illumina Cambridge versus Intelligent Biosystems case.

[00:25:36] Speaker 02:
It was decided as a slip opinion from January 29, 2016.

[00:25:40] Speaker 02:
I will note it's a non-precedential case, so I only offer it for its persuasive weight.

[00:25:48] Speaker 02:
But in that case, Illumina challenged the board's refusal to enter substitute claims

[00:25:55] Speaker 02:
finding them unpatentable as obvious in light of the prior art.

[00:25:59] Speaker 02:
And what they did was arguing essentially what Dachau is arguing here.

[00:26:02] Speaker 02:
They said, we have an expert declaration that one of skill in the art would not have been motivated to combine these prior art reference because of the low cleavage efficiency taught by the prior art.

[00:26:14] Speaker 02:
And Judge Lorry wrote in rejecting that argument.

[00:26:18] Speaker 02:
Although Illumina provided an expert declaration stating that the prior art

[00:26:22] Speaker 02:
did not provide an expectation that disulfide cleavage conditions would cleave a protecting group with greater than 90% efficiency.

[00:26:31] Speaker 02:
The claims also do not require that the protecting group be cleaved at greater than 90% efficiency, much less that the linker also be cleaved at such efficiency.

[00:26:43] Speaker 02:
So you simply can't criticize or argue that one of skill would not have been motivated based upon

[00:26:52] Speaker 02:
things that are outside the scope of the claims.

[00:26:55] Speaker 02:
What we're looking at is the obviousness of the claims.

[00:26:59] Speaker 02:
Now, there was also a reference about what the purpose of Sung was or what the purpose of the inventor was.

[00:27:08] Speaker 02:
And the KSR decision from the Supreme Court tells us explicitly that in determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose

[00:27:22] Speaker 02:
of the patentee controls.

[00:27:24] Speaker 02:
What matters is the objective reach of the claims.

[00:27:28] Speaker 02:
So we look at the references.

[00:27:30] Speaker 02:
We look at the objective reach of the claims.

[00:27:32] Speaker 02:
And here, I'd submit the board's decisions are correct, but they are certainly supported by substantial evidence.

[00:27:43] Speaker 02:
I did want to bring just one more post-briefing decision to the court's attention.

[00:27:48] Speaker 05:
And this is just- Did you submit a 28-J letter?

[00:27:52] Speaker 02:
We have not, Your Honor.

[00:27:53] Speaker 05:
That's typically the way we do it so that your colleague will have noticed and be able to respond.

[00:27:58] Speaker 05:
So I suggest that that would be the more appropriate court.

[00:28:02] Speaker 02:
I appreciate that, Your Honor.

[00:28:04] Speaker 02:
These are not cases that apply any different standard or different law.

[00:28:09] Speaker 05:
Then why don't you deal with the cases you said in your brief?

[00:28:11] Speaker 02:
I appreciate that.

[00:28:13] Speaker 02:
We have more than adequate support with regard to the notion that when you're combining references

[00:28:20] Speaker 02:
that they don't have to be physically combinable.

[00:28:23] Speaker 02:
And that was all that the ally directing decision talked about as well.

[00:28:27] Speaker 02:
That as long as it would teach one of skill in the art, the combination, that that is sufficient.

[00:28:34] Speaker 02:
So to turn then briefly just to what you addressed with my colleague here with regard to the objective indicia of non-obviousness.

[00:28:45] Speaker 02:
The court, this isn't like the cycle benzedrine

[00:28:49] Speaker 02:
case or the Plantronics case where the lower tribunal did not address and did not deal with the evidence of objective indicia.

[00:28:59] Speaker 02:
Here, as Judge Hughes pointed out, the board went through in some detail what the offered evidence was and simply found that it was not sufficient to prove copying.

[00:29:13] Speaker 02:
And again, the standard of review here is that conclusion.

[00:29:17] Speaker 02:
That finding by the board supported by substantial evidence in this case, clearly it is.

[00:29:25] Speaker 02:
I would just address, counsel was alluding to the Bogan Declaration, but what the board did and pointed out in its analysis is that there simply was no support in that conclusory declaration by the inventor that he had any personal knowledge about Ventana or its device.

[00:29:46] Speaker 02:
And when we pointed out that fact in the reply brief, the only response was, well, he was working in the field during the same time that Vintana was out there.

[00:29:55] Speaker 02:
And I submit that's not sufficient evidence to show personal knowledge of someone about the structure of a competing device.

[00:30:05] Speaker 02:
And that was, as Chief Judge Pross pointed out, the only evidence with regard to objective indicia.

[00:30:12] Speaker 02:
The subsequent article was not

[00:30:16] Speaker 02:
pointed to be showing of a long-felt need or failure by others, it was used in support of the complexity argument and not an objective indicia argument.

[00:30:28] Speaker 02:
So with that, I'll turn to the 672 patent unless there are some questions with regard to the 392.

[00:30:37] Speaker 02:
With regard to the 672, the board's decision should be affirmed on both of the grounds that it reached.

[00:30:45] Speaker 02:
Its claim construction is entirely appropriate.

[00:30:49] Speaker 02:
It follows the expressed language of the claim at issue, claim one, as modified by claim two.

[00:30:56] Speaker 02:
There is no requirement in those claims that each slide support have its own individual heating element.

[00:31:07] Speaker 05:
Well, in claim one, at least, it describes the slide support as, quote, being comprised of a heating element.

[00:31:14] Speaker 05:
So why doesn't that suggest that a heating element belongs to only one slide support?

[00:31:19] Speaker 02:
Because it is expressly talking about the notion that you can have a heating element that underlies multiple slides and multiple slide supports.

[00:31:29] Speaker 02:
DACO's argument is that they suggest that there's somehow a one to one to one comparison here that is set up.

[00:31:38] Speaker 02:
And in fact, there is the notion of a slide support

[00:31:43] Speaker 02:
In claim one, the slide support can have multiple slides on it.

[00:31:49] Speaker 02:
And then claim two modifies the slide support.

[00:31:53] Speaker 05:
Is that the case that a slide support can have multiple slides on it?

[00:31:57] Speaker 05:
Because most of the visuals we saw was that every slide and every individual slide had its individual slide support.

[00:32:04] Speaker 02:
Well, it depends on how you look at figure five in the patent.

[00:32:10] Speaker 02:
If you look at figure five

[00:32:12] Speaker 02:
where it shows five slides that are seated there.

[00:32:18] Speaker 02:
If you look at the entire collection of five slides, and you say that that one structure that has the five slides on it is a single slide support, then yes, there's that disclosure.

[00:32:37] Speaker 02:
And there needs to be, because there are claims that talk about slides having

[00:32:43] Speaker 02:
The claim says that the slide support has at least one, so there is support in the specification that you can have a slide support that has multiple slides.

[00:32:52] Speaker 02:
If you look at the slide support and say, no, the slide support is just the cavity in which the one slide is, then... Well, but then we're looking at claim two, which clearly says each slide support accommodates only one slide.

[00:33:06] Speaker 02:
Correct.

[00:33:07] Speaker 02:
But that modifies the slide support.

[00:33:11] Speaker 02:
It doesn't modify

[00:33:12] Speaker 02:
the heating element, and the way this claim is drafted, the different slide supports could share a heating element.

[00:33:22] Speaker 02:
So you could have separate slide supports, but they each have part of the heating element.

[00:33:27] Speaker 02:
And the other thing that's critical here, and what the board said and relied on, is we're dealing here with a family of patents.

[00:33:35] Speaker 02:
This one specification supports a series of patents, including the two patents that are before this court.

[00:33:43] Speaker 02:
And there are claims, claim seven of the 392 patent is one example, that do have heating elements that have only one slide.

[00:33:55] Speaker 02:
But this claim does not do that.

[00:33:58] Speaker 02:
And we clearly have a situation where the patentee knew how to express its intent that a heating element only heat one slide.

[00:34:07] Speaker 02:
And it did it in various other claims, but didn't do it with respect to this one.

[00:34:13] Speaker 02:
And I guess the other response I'd have for your honor, too, is that language like comprised and comprising is non-limiting.

[00:34:21] Speaker 02:
It's inclusive of other things as well.

[00:34:26] Speaker 02:
So we believe that the court's, the board's decision and claim construction is appropriate.

[00:34:32] Speaker 02:
And once that's established, DACA acknowledges that under that claim construction,

[00:34:37] Speaker 02:
the conclusion and finding of anticipation is clearly correct.

[00:34:44] Speaker 02:
Then with regard to the obviousness, it's again the same points that Sung does teach, one of skill in the art, that the use with individual slide treatment for the reasons that I've already discussed.

[00:35:00] Speaker 02:
If there aren't any further questions, I'll cede the remaining of my time.

[00:35:13] Speaker 01:
Thank you, Your Honors.

[00:35:16] Speaker 01:
Three points to make in response.

[00:35:19] Speaker 01:
First, counsel quoted and cited from Sung several times.

[00:35:24] Speaker 01:
All of those citations focused on individual staining.

[00:35:28] Speaker 01:
If you look at the disclosure for heating, all of that disclosure is in the context of block heating.

[00:35:34] Speaker 01:
Sung teaches a laboratory device that permits individual staining and then block heating and does not have any internal teaching

[00:35:43] Speaker 01:
to heat individual slides.

[00:35:48] Speaker 01:
And if you look at the text surrounding those citations that he gave you, you will see that, particularly in column two.

[00:35:58] Speaker 01:
In our briefs, we cite a case, In Re Kao.

[00:36:01] Speaker 01:
That case stands for the proposition that this court should reverse where the board has not given proper weight to an expert declaration.

[00:36:11] Speaker 01:
In that case,

[00:36:13] Speaker 01:
The board reversed an obviousness finding because a declaration established nexus, and the board said it did not.

[00:36:22] Speaker 01:
That is the case here, Your Honors, with respect to Dr. Bogan's declaration and his personal knowledge that Vantana copied the claim device.

[00:36:34] Speaker 01:
It also supports our point with respect to Dr. Floyd's declaration.

[00:36:38] Speaker 01:
The board's treatment of that declaration was cursory and dismissive.

[00:36:42] Speaker 01:
And it did not give proper weight to the uncontradicted sworn testimony of someone of skill in the art, showing there was no motivation to combine.

[00:36:51] Speaker 05:
Well, can I just stop you on co, because in your site, you have a parenthetical that says that the determination, vacating the board's determination, the invention was obvious when the board disregarded and discounted secondary considerations and stating that when secondary considerations are present,

[00:37:10] Speaker 05:
though they are not always dispositive, it is error not to consider them.

[00:37:15] Speaker 05:
So that's, again, whether or not they consider the secondary considerations, right?

[00:37:19] Speaker 01:
Well, that case, actually, if you look at it, and I had an opportunity just before this argument to refresh myself on its facts, it stands for the deeper point that this court should reverse where expert testimony has not been properly considered.

[00:37:38] Speaker 01:
And that's what the court did in the Cow case.

[00:37:42] Speaker 00:
What do you mean properly considered?

[00:37:43] Speaker 00:
The board wrote in detail why it wasn't accepting these declarations.

[00:37:50] Speaker 00:
You just disagree with it, but that doesn't make it improper.

[00:37:53] Speaker 00:
What else would you have the board do if they don't believe in the validity of these declarations?

[00:38:03] Speaker 00:
Is there more they can say?

[00:38:05] Speaker 00:
They went through all of them and said, here's the reasons we're discounting this, here's the reasons we're discounting that.

[00:38:11] Speaker 01:
And I would respectfully submit the board does not have the right to discount uncontradicted sworn testimony in these proceedings.

[00:38:19] Speaker 01:
And that's what they did.

[00:38:21] Speaker 01:
They just refused to believe uncontradicted facts.

[00:38:24] Speaker 01:
And that's improper.

[00:38:25] Speaker 01:
And then they substituted their own common sense, which I submit is improper.

[00:38:31] Speaker 01:
The third point I want to make is to sum up

[00:38:37] Speaker 01:
What we see is the totality of errors here that show that this case and these invalidity decisions are based on hindsight.

[00:38:46] Speaker 01:
I'm sure you hear the word hindsight a lot in these arguments, but here we have five different reasons why hindsight led to the erroneous result.

[00:38:53] Speaker 01:
The board misread Sung.

[00:38:56] Speaker 01:
It does not teach individualized heeding.

[00:39:00] Speaker 01:
The board discounted the copying evidence in the sworn and uncontroverted declaration of Dr. Bogan.

[00:39:07] Speaker 01:
It ignored an article teaching a different solution was what people of skill were being led to at the time of the invention.

[00:39:15] Speaker 01:
It substituted a hindsight technical capability for combination with the legally required motivation to combine.

[00:39:25] Speaker 01:
And it hypothesized this common sense modifications of the art, which were contradicted by Dr. Floyd.

[00:39:36] Speaker 01:
Unless there are further questions.

[00:39:38] Speaker 01:
Thank you.

[00:39:38] Speaker 05:
We thank both counsel for the cases.

[00:39:40] Speaker 01:
Thank you.

[00:39:41] Speaker 05:
Both cases are subject.