[00:00:02] Speaker 01:
The first two cases for argument this morning were consolidated.

[00:00:06] Speaker 01:
They are 15.1874 and 15.1731, Norad versus Medtronic.

[00:00:13] Speaker 01:
Mr. Kernel, whenever you're ready.

[00:00:25] Speaker 02:
May I please report?

[00:00:27] Speaker 02:
The board's inconsistent and erroneous decisions in the 110, 111, and 395 matters cannot be allowed to stand.

[00:00:37] Speaker 03:
If we were to affirm in the 110 and the 111, we wouldn't have to reach the 395, right?

[00:00:43] Speaker 03:
That is correct, Your Honor.

[00:00:48] Speaker 02:
OK.

[00:00:49] Speaker 02:
My name is Jim Kernel with Erickson, Kernel, Drusso, and Kleifers.

[00:00:52] Speaker 02:
And with me is David Marcus of Bartle and Marcus,

[00:00:58] Speaker 02:
We represent the patent owner, Dr. Troy Norrett.

[00:01:03] Speaker 02:
The board construed the same claim terms differently in different parts of the same written decision.

[00:01:09] Speaker 02:
These include the means for mounting, means for maintaining, and the ring number.

[00:01:16] Speaker 02:
If the board construed these claim terms consistently throughout its written decisions, it could not have reached the results that it did.

[00:01:25] Speaker 02:
Further, the board construed the same claim terms differently in different decisions involving the same parties in the same patent.

[00:01:35] Speaker 03:
Could you focus maybe on these one at a time and tell us what's wrong with the decision that they reached in the 110?

[00:01:43] Speaker 03:
What's the error there?

[00:01:45] Speaker 02:
In the 110, in the board's decisions to institute the 110 and the 395 matters, the board construed means for mounting broadly.

[00:01:55] Speaker 02:
to mean the membrane hinged, secured, or hingedly attached about the aperture of the ring.

[00:02:08] Speaker 03:
What's wrong with that construction?

[00:02:09] Speaker 03:
Are you saying it's too broad?

[00:02:11] Speaker 02:
No, if that is the construction, then that's the construction that the board should have used throughout the proceedings.

[00:02:18] Speaker 02:
What the board then did was in its final decision of the 110 matter,

[00:02:22] Speaker 02:
It construed the means for mounting narrowly.

[00:02:26] Speaker 03:
But let's stick just with the first one, with the 110.

[00:02:31] Speaker 02:
Yes.

[00:02:31] Speaker 03:
Did they make a construction error in the 110?

[00:02:36] Speaker 02:
Yes, it did.

[00:02:36] Speaker 03:
And what was the error?

[00:02:38] Speaker 02:
The error was construing the means for mounting to be fingers or arms hingedly attached or hingedly secured to the ring member and a free end spaced there from.

[00:02:49] Speaker 03:
Okay, so what's wrong with that?

[00:02:50] Speaker 02:
That is, that claim construction is only goes to two of the embodiments shown in the 228 patent.

[00:02:57] Speaker 02:
The second and third not the natural valve that's shown in the 228 patent.

[00:03:04] Speaker 01:
Wait, so you're saying the construction is too narrow?

[00:03:06] Speaker 02:
That is too narrow because it's also that construction comes directly from claim 17.

[00:03:12] Speaker 02:
There is no limitation in claim 16 that includes fingers or arms hingently attached.

[00:03:19] Speaker 02:
That limitation comes from claim 17.

[00:03:25] Speaker 02:
And it does not cover the natural vial that's shown in figures 18 and 19.

[00:03:30] Speaker 03:
Well, what's the consequence of that error in their view?

[00:03:34] Speaker 02:
Well, there's two consequences.

[00:03:36] Speaker 02:
First, if the claims were construed to mean a membrane hingedly secured or hingedly attached about the aperture.

[00:03:48] Speaker 02:
the broad meaning, then Di Matteo would not anticipate the 228 Claim 16.

[00:03:58] Speaker 02:
If it's construed narrowly, as the board did in its final decision, then none of these other patents, or if it was construed narrowly, then the, I'm sorry, let's flip this.

[00:04:17] Speaker 02:
If it was construed broadly, as they did in the initial decision of a member originally attached about the aperture of the ring, then the proposed amendment to claim 25 would have been allowed, because it did not broaden the scope of claim 16.

[00:04:43] Speaker 03:
So if fingers and arms

[00:04:47] Speaker 03:
are required for mounting, which is what the board said, right?

[00:04:52] Speaker 03:
Yes, later.

[00:04:54] Speaker 03:
You're saying that under the board's construction, they still should have allowed the amendment?

[00:04:59] Speaker 03:
Is that the idea?

[00:05:00] Speaker 02:
Well, if it said that it is fingers or arms, then DiMatteo does not anticipate that claim, because DiMatteo does not have fingers and arms.

[00:05:14] Speaker 03:
They found that it did.

[00:05:16] Speaker 02:
They found that it had a membrane hingedly secured and hingedly attached to the aperture of the ring.

[00:05:22] Speaker 02:
That's what they have found in the initial decision, the decision to institute.

[00:05:27] Speaker 02:
Then when it was looking at the motion to amend, they changed their interpretation to mean fingers are arms hingedly attached or hingedly secured to the ring member in a free end space there from.

[00:05:44] Speaker 02:
So we had a shifting

[00:05:45] Speaker 02:
interpretation of what the means for mounting meant in that same, in the 110 case.

[00:05:53] Speaker 03:
Where in the final decision do they say that it doesn't require fingers and arms?

[00:05:58] Speaker 02:
That the, it's in Appendix A, 7 and 8 in the final decision for the 110.

[00:06:22] Speaker 01:
Do you have that in front of you?

[00:06:23] Speaker 01:
You want to tell us what you're pointing to in A7 and AA?

[00:06:27] Speaker 03:
This is in the Addendum 7 and 8?

[00:06:29] Speaker 02:
Yes, Addendum 7 and 8.

[00:06:32] Speaker 02:
And it's actually on page 7.

[00:06:34] Speaker 02:
And it starts at the bottom of page 7.

[00:06:38] Speaker 02:
It says, Patent owner does not contest petitioner's proposed claim construction of means for mounting element recited in claim 16.

[00:06:46] Speaker 02:
Well, that was erroneous because

[00:06:50] Speaker 02:
in the 110 decision to institute, the board said the opposite, that Medtronic did not contest what ours meant or that the parties were in agreement.

[00:07:03] Speaker 03:
But at the bottom of the page that you're pointing to, they say to mean fingers and arms hingedly attached.

[00:07:09] Speaker 03:
So I don't see that they have adopted a claim construction in the final decision that doesn't require fingers and arms.

[00:07:17] Speaker 02:
Well, they originally adopted a claim construction that the membrane was hingedly secured and hingedly attached about the aperture.

[00:07:27] Speaker 02:
That was the first claim construction.

[00:07:28] Speaker 03:
What are you saying?

[00:07:29] Speaker 03:
They changed the claim construction from the initiation decision to the final decision?

[00:07:36] Speaker 03:
Yes.

[00:07:37] Speaker 03:
Why are they not entitled to clarify the claim construction?

[00:07:41] Speaker 02:
Well, because the claim construction that they clarified to is what's shown in claim 17.

[00:07:47] Speaker 02:
It's not required of claim 16.

[00:07:50] Speaker 02:
There's two embodiments that have fingers and arms.

[00:07:53] Speaker 02:
The third embodiment of the natural valve does not have fingers and arms.

[00:08:00] Speaker 03:
So what's the proof that claim 16 includes that third embodiment?

[00:08:08] Speaker 02:
Well, there's nothing to preclude it.

[00:08:10] Speaker 02:
If that claim is read broadly, the broadest reasonable interpretation of a means for mounting if you go to

[00:08:17] Speaker 02:
what's shown in the specification, it does not require fingers and arms.

[00:08:23] Speaker 02:
In fact, a natural valve does not have fingers and arms, and that's what's shown in figures 18 and 19.

[00:08:34] Speaker 03:
Okay, well, before you run out of time, why don't you tell us what's wrong in the 111 decision?

[00:08:46] Speaker 02:
In the 111 decision, the board construed the means for maintaining broadly to mean the combination of rods 104 interacting with stent 28.

[00:09:04] Speaker 02:
That was in the decision to institute.

[00:09:07] Speaker 02:
When it was looking at the proposed amendment in the 111 case, the board narrowly

[00:09:18] Speaker 02:
construed means for maintaining, to mean rods 104 that must be separate from the stent system 28.

[00:09:27] Speaker 02:
So before it was just rods interacting with the, with the stent system.

[00:09:35] Speaker 02:
Then in the final decision, it found that the rods have to be separate, must be separate from the stent system, where there's not a single embodiment shown

[00:09:47] Speaker 02:
in the 228 patent that shows separate rods that interact with the stent system.

[00:09:54] Speaker 03:
I thought the board was consistent in saying that the rods had to be connected to the stent.

[00:10:03] Speaker 02:
Right, that there are rods connected to the stent, that they're interconnecting rods.

[00:10:07] Speaker 02:
Right.

[00:10:08] Speaker 02:
But then in denying the motion to amend,

[00:10:14] Speaker 02:
The motion to amend said there is a stent system with interconnecting rods and that the valve is connected to the interconnecting rods.

[00:10:22] Speaker 03:
You eliminated the means for maintaining language in the amendment, right?

[00:10:26] Speaker 02:
And put in specific structure that's shown in the patent.

[00:10:30] Speaker 03:
Well, but the board said that that didn't show the rods connecting to the stent and in that sense you broadened the claim, right?

[00:10:40] Speaker 02:
Right, that's exactly what was wrong with the board's decision.

[00:10:45] Speaker 02:
There's not a single embodiment or description of separate rods that are separate from the stent system.

[00:10:52] Speaker 03:
The connecting rods... I'm sorry, I'm not following what you're saying.

[00:10:59] Speaker 03:
I'm not seeing the inconsistency that you apparently see.

[00:11:02] Speaker 02:
Well, the inconsistency is they said that because we did not call out a separate rod,

[00:11:08] Speaker 02:
that is then connected to the stent system.

[00:11:13] Speaker 03:
In connection with the amendment.

[00:11:14] Speaker 02:
In connection with the amendment that that broadened it from the means for maintaining which are just rods that interact.

[00:11:23] Speaker 02:
In fact, interact with the stent system.

[00:11:26] Speaker 02:
In fact, in the proposed amendment there are interconnecting rods that are connected to the stent system.

[00:11:36] Speaker 02:
But they wanted separate connecting rods, even though there's no separate connecting rods in the patent.

[00:11:45] Speaker 03:
Okay, is there anything else wrong with the 111 decision?

[00:11:57] Speaker 02:
Those are the two, or the main problems with the 111 decisions.

[00:12:05] Speaker 02:
And the same thing, we have the same issue in the 395 decision, where there are inconsistencies between what the board found and what the board, in the final decisions.

[00:12:25] Speaker 01:
So those all go to reliefs being sought that would say the board should have allowed the amendment.

[00:12:31] Speaker 01:
It wouldn't go to the questions of whether the findings of anticipation

[00:12:36] Speaker 01:
anticipation by the board, right?

[00:12:37] Speaker 02:
Well, it depends.

[00:12:39] Speaker 02:
It depends on which way this court construes those claims.

[00:12:45] Speaker 02:
If the court construes them broadly, then the amendments should have been allowed.

[00:12:53] Speaker 02:
If the court construes those narrowly, those terms narrowly, then the prior art doesn't show those limitations.

[00:13:03] Speaker 02:
The prior art does not show

[00:13:06] Speaker 02:
fingers or arms separate, attached or hingedly secured to a ring member.

[00:13:14] Speaker 02:
It's not shown.

[00:13:17] Speaker 02:
The prior art does not show the means for maintaining where there is a rod that separately maintains the ring member in place.

[00:13:34] Speaker 02:
Well, they can clue that otherwise, right?

[00:13:37] Speaker 02:
Well, yes, they did conclude.

[00:13:39] Speaker 02:
And that's the error.

[00:13:41] Speaker 02:
That is what is wrong.

[00:13:42] Speaker 02:
That's a fact determination.

[00:13:44] Speaker 02:
No, I don't believe it's a fact determination because it is a construction issue.

[00:13:50] Speaker 02:
This is claim interpretation.

[00:13:52] Speaker 02:
And how they interpret those claims is de novo and is a matter of law for this court to decide.

[00:14:01] Speaker 03:
Well, I'm still struggling with what's the claim construction error.

[00:14:04] Speaker 03:
They said the rods had been

[00:14:06] Speaker 03:
connect to the stent, right?

[00:14:09] Speaker 03:
And that's part of the means for maintaining.

[00:14:13] Speaker 03:
Yes.

[00:14:14] Speaker 03:
So where's the claim construction error?

[00:14:16] Speaker 02:
Well, it's because they changed.

[00:14:19] Speaker 02:
Originally, they said that there does not have to be separate rods.

[00:14:23] Speaker 02:
It's just rods interacting.

[00:14:25] Speaker 02:
Where does it say that?

[00:14:26] Speaker 02:
In the initial decision.

[00:14:29] Speaker 02:
The initiation decision?

[00:14:32] Speaker 02:
Yes.

[00:14:33] Speaker 02:
Well, what about in the final decision?

[00:14:35] Speaker 02:
Well, in the final decision, it didn't change that except for when it was looking at the amendments, whether the decision to allow... Show us where in the final decision they've used two different claim constructions.

[00:14:49] Speaker 02:
They don't explicitly use the second, the first claim construction from the decision to institute.

[00:14:58] Speaker 02:
They only change it with respect to discussing the amendments.

[00:15:06] Speaker 03:
So where in the anticipation aspect of the final decision do you see that they've used the wrong claim construction?

[00:15:15] Speaker 02:
Well, in the anticipation, they did not go back and reapply their new claim construction, the narrower claim construction that they applied to the amendments.

[00:15:27] Speaker 03:
Required connecting rods.

[00:15:29] Speaker 02:
Required separate connecting rods.

[00:15:31] Speaker 02:
They didn't then go back and say, OK.

[00:15:32] Speaker 03:
Where's the discussion?

[00:15:34] Speaker 02:
And that's only in the part for the amendments.

[00:15:37] Speaker 03:
If we go for... Well, show us where they discussed in the final decision the connecting rods requirement in connection with the anticipation issue.

[00:15:49] Speaker 02:
They did not.

[00:15:52] Speaker 02:
That's the problem.

[00:15:52] Speaker 02:
They didn't discuss it at all?

[00:15:54] Speaker 03:
They just said that that was already shown in the previous... What page is the discussion of the anticipation issue in the 111?

[00:16:12] Speaker 02:
It starts on page 15 of the decision.

[00:16:49] Speaker 02:
And specifically the means for maintaining is for the Shrek reference is at page 22.

[00:16:55] Speaker 03:
But it says we've construed the means for maintaining clause to be a combination of rods 104 interacting with stent 28.

[00:17:10] Speaker 03:
How's that different from the decision in connection with the amendment?

[00:17:14] Speaker 02:
Well, then in the amendment, what they say is that there has to be

[00:17:18] Speaker 02:
separate rocks.

[00:17:20] Speaker 03:
What page is that at?

[00:17:48] Speaker 02:
It's on page 30.

[00:17:51] Speaker 01:
Which is A447, right?

[00:17:53] Speaker 01:
Yes.

[00:17:56] Speaker 01:
But if you look at the bottom of page 29, which is A446, it says, according to the petitioner, the phase blah, blah, blah replaces that, impermissibly seeks to enlarge the scope of claim 20, because it does not include rods 104 on the valve that interact with the rods forming the step.

[00:18:14] Speaker 02:
Yes, that's exactly what the board

[00:18:18] Speaker 02:
found in this case.

[00:18:20] Speaker 01:
Well, I thought you were talking about that they said it had to be separate.

[00:18:23] Speaker 02:
Right.

[00:18:24] Speaker 02:
So they are saying that there has to be rods 104 that interact with the rods forming the stent.

[00:18:30] Speaker 02:
So they're saying they have to be a separate recitation of these rods.

[00:18:37] Speaker 02:
But there's, again, if you look at the figure 18 in the 228 pattern, it shows rods that connect to the ring

[00:18:48] Speaker 02:
It also shows extending from the top, it's going into the stent.

[00:18:55] Speaker 02:
There's nowhere that is shown any connection, a joint, a hinge, anything that connect a separate connecting rod to a stent.

[00:19:08] Speaker 02:
Those rods, they're interconnecting rods, and they're merely just rods where the valve is connected.

[00:19:17] Speaker 01:
We're well into your rebuttal, so why don't we save that here from the other side.

[00:19:20] Speaker 01:
Thank you.

[00:19:35] Speaker 01:
Mr. O'Quinn.

[00:19:36] Speaker 00:
Thank you, Chief Judge.

[00:19:36] Speaker 00:
Judge Prost, may it please the court, John O'Quinn on behalf of Medtronic.

[00:19:40] Speaker 00:
Let me start where we just left off.

[00:19:43] Speaker 00:
The issue that the board found with respect to the connecting rods and the means for maintaining is that he sought to eliminate the structure, the only structure that was disclosed within the patent, namely where you have a ring member that is separate from a stent system and that they are connected by connecting rods.

[00:20:00] Speaker 00:
And he wanted to eliminate having the stent system- In the amendment.

[00:20:03] Speaker 00:
In the amendment, exactly, Judge Deck.

[00:20:05] Speaker 00:
He wanted to eliminate having a stent system that was connected through connecting rods and instead replace it with just the stent system.

[00:20:13] Speaker 00:
so that essentially you could at that point have the valve integrated into the stent system itself.

[00:20:19] Speaker 00:
The board properly found that that was broadening, and indeed it's inconsistent with the way that he described his own invention in paragraph 83 of his declaration, which you can find at A2153 of the Joint Appendix in the first of these appeals.

[00:20:34] Speaker 00:
where he says, each embodiment of my invention depicted in the 228 patent features a valve that connects to but operates independently from the stent.

[00:20:43] Speaker 00:
And he goes on.

[00:20:44] Speaker 03:
So what happened in the amendment?

[00:20:45] Speaker 03:
And if I understand correctly, at the end of 28, the means for maintaining is taken out.

[00:20:51] Speaker 03:
It just says a stent system having a plurality of interconnected rods.

[00:20:57] Speaker 03:
But there isn't any requirement there that those rods be connected to the stent.

[00:21:03] Speaker 03:
Is that the point?

[00:21:05] Speaker 00:
The point Judge Dyke is that he's doing away with having to have separate rods that connect to the stint and instead just saying you can have a plurality of rods that make up the stint system itself and that that's enough.

[00:21:17] Speaker 00:
And the board found that that was broadening because instead of now, as the board said in its opinion at A447, you've got two types of rods.

[00:21:28] Speaker 00:
You've got

[00:21:30] Speaker 00:
you've got rods that make up the stent and you've got the tangential rods, and that's the term in the specification talks about them being tangential to the sinus of the aorta, the tangential rods that then connect the separate stent system to the ring.

[00:21:43] Speaker 00:
And the board said that's all being read out and all that you're gonna be left with is the rods that make up the stent system itself.

[00:21:50] Speaker 00:
And that was therefore broadening because, and there was no argument that he made below waved the notion that just having a stent system

[00:21:58] Speaker 00:
was equivalent to having a stint system plus connecting rods.

[00:22:02] Speaker 00:
And again, it makes sense that those wouldn't be equivalent because you're replacing having a separate stint system from a separate ring member that is connected up and saying, OK, now I'm going to do it in a way that would read on items that have it all integrated together.

[00:22:20] Speaker 00:
And the board said that's broadening, and properly so.

[00:22:24] Speaker 00:
And with respect to his means for mounting, which was an issue in the 110 IPR and also the 395 IPR, the board found that that was also broadening because he was eliminating the requirement that you have fingers and arms.

[00:22:39] Speaker 00:
And his whole, Dr. Norad's entire argument on appeal consists of saying, well, there's another embodiment.

[00:22:46] Speaker 00:
The natural tissue.

[00:22:47] Speaker 00:
The natural tissue embodiment that's found in figures 18 and 19 in the accompanying description.

[00:22:53] Speaker 00:
And that doesn't have fingers and arms.

[00:22:55] Speaker 00:
Now, the problem with his argument is, as this court held in Medtronic versus ACS, you have to have a clear link between the disclosed embodiment and the claims.

[00:23:05] Speaker 00:
And there is no clear link between the tissue valve embodiment and claims 16 through 19.

[00:23:11] Speaker 00:
In fact, quite the opposite.

[00:23:12] Speaker 00:
There's a clear link between the tissue valve embodiment and the tissue valve claims, claims 20 through 24, which specifically recite a tissue valve.

[00:23:21] Speaker 00:
It was very intentional.

[00:23:22] Speaker 00:
in the language and the specification and in the language of the claim, referring to tissue in the embodiments in figures 18 and 19 and tissue with respect to claims 20 through 24, and referring to membrane with respect to the embodiments found in figures 10 through 17 and with respect to the claims 16 through 19.

[00:23:43] Speaker 00:
More than that, even setting aside the whole issue of fingers and arms,

[00:23:46] Speaker 00:
His proposed amendment clearly eliminates a claim element, because the claim, if you look at claim 16, it requires that you have a membrane, but also requires that you have a means for maintaining, excuse me, a means for mounting, and a means for moving that membrane.

[00:24:04] Speaker 00:
And his proposed amendment, that's gonna be gone.

[00:24:08] Speaker 00:
All that you're left with is the membrane.

[00:24:09] Speaker 00:
You literally will have vitiated a claim element, which is the means for mounting and moving the membrane.

[00:24:16] Speaker 00:
absolutely correct in finding there was a broadening.

[00:24:20] Speaker 00:
Now, to be sure, yes, the board in its initiation decision found that it was sufficient for purposes of initiation to say that it was hingedly attached.

[00:24:30] Speaker 00:
But then it engaged the issue in its final decision and consistently required that there be a fingers or arms limitation in the 110 IPR.

[00:24:42] Speaker 00:
The argument that he wants to make that that's not

[00:24:46] Speaker 00:
disclosed in DiMatteo is a new argument being made today.

[00:24:50] Speaker 00:
It's not an argument that was in his briefs.

[00:24:52] Speaker 00:
And you can find how that limitation is met at A101 of the joint appendix in the appeal from the 110, which is our claim chart laying out where the arms are found with respect to DiMatteo.

[00:25:05] Speaker 03:
Could I turn you to another aspect of the 111?

[00:25:09] Speaker 03:
And that is, if I understand their argument, they're saying that shrink

[00:25:14] Speaker 03:
our Shrek doesn't anticipate because it's not placed in the ascending aorta.

[00:25:20] Speaker 03:
And I've read the record here and it seems to me that there are somewhat conflicting definitions of what the ascending aorta is.

[00:25:33] Speaker 03:
And what the board said is that placing it in the ascending aorta is not part of the

[00:25:43] Speaker 03:
of the claim requirement.

[00:25:47] Speaker 03:
Could you address that?

[00:25:48] Speaker 03:
There is language tying 28 to placement in the ascending aorta in the specification.

[00:26:00] Speaker 03:
And why is it that that shouldn't be part of the structure to perform this function?

[00:26:06] Speaker 03:
Do you understand what I'm saying?

[00:26:07] Speaker 00:
I do understand.

[00:26:08] Speaker 00:
And so Judge Dyke, there are three issues that are wrapped up in that.

[00:26:11] Speaker 00:
One is what's the proper way of construing it, number one.

[00:26:16] Speaker 00:
Number two, as a factual matter.

[00:26:18] Speaker 03:
Do you agree that the records are cloudy on what the ascending aorta is?

[00:26:22] Speaker 03:
Well.

[00:26:22] Speaker 03:
In other words, whether it goes down

[00:26:24] Speaker 00:
I think that our expert Dr. Hill testified and provided evidence that there are competing definitions for what the ascending aorta is.

[00:26:37] Speaker 00:
He said that in his view, and you don't have to take his word for it, there's scholarship that supports this, that the ascending aorta is everything

[00:26:46] Speaker 00:
that includes the root up, because you have an ascending aorta coming out of the heart in contrast to the descending aorta, which then runs down the body.

[00:26:55] Speaker 00:
He acknowledged that there is some literature that refers to the root as being separate from the ascending aorta, but he said that many regard the ascending aorta as including the root.

[00:27:07] Speaker 00:
Dr. Norrad's own expert, Dr. Catchings, conceded, and this is an A4144 of the second joint appendix, he conceded that the correct technical definition of ascending aorta includes the root because he said, quote, technically speaking, the ascending aorta is the whole part from the valve all the way up.

[00:27:26] Speaker 03:
Yeah, but then he seems to take it back in the next exchange.

[00:27:29] Speaker 00:
and so the point being here is that there there is a few even it and this was the job as the first question of whether or not sending orders required it's not i'll come back to that but even if it were required you have a fact dispute about whether or not something that's placed in the route uh... would be considered to be in the israel and the word credit doesn't seem to have been resolved by the board i thought that the board's decision accredited dot uh... doctor hill with respect to this and certainly credited doctor where does it say that well i think if you look uh...

[00:27:59] Speaker 00:
You have the board addressing more generally this issue at A440 of the second joint appendix.

[00:28:07] Speaker 03:
I'm using the attachment to the blue brief.

[00:28:11] Speaker 03:
What page is it in the addendum?

[00:28:14] Speaker 03:
Or just what page of the opinion is it?

[00:28:17] Speaker 03:
23.

[00:28:18] Speaker 03:
23, thank you.

[00:28:19] Speaker 00:
Is that right?

[00:28:20] Speaker 03:
I believe that's right.

[00:28:21] Speaker 00:
This is where it talks about the placement and positioning of the prosthetic aortic valves within the aorta that's typically within the

[00:28:28] Speaker 00:
discretion of the physician.

[00:28:31] Speaker 00:
And it goes on to note that aortic valves can be placed at different positions within the aorta, such as the lower positions of the aortic root or more upwardly within the ascending aorta.

[00:28:40] Speaker 00:
And just like that may get to the third issue, which is whether as a factual matter, TREC could be implanted within the ascending aorta.

[00:28:50] Speaker 00:
But you have the board crediting Dr. Hill's testimony with respect to

[00:28:56] Speaker 00:
where the device could theoretically plant.

[00:28:58] Speaker 03:
Yeah, but I don't see them crediting his testimony as to what constitutes the ascending aorta.

[00:29:05] Speaker 03:
That's the problem.

[00:29:10] Speaker 00:
So I agree.

[00:29:11] Speaker 00:
I don't think that the board explicitly addresses and resolves that issue.

[00:29:15] Speaker 00:
I think the board recognizes that that is an issue, and I think that they generally credit Dr. Hill, and you have the testimony from Dr. Hill as well as the testimony from Dr. Ketchings,

[00:29:25] Speaker 00:
that would show that the ascending aorta could be considered anything that includes the root.

[00:29:32] Speaker 03:
And I think you also potentially have indefinite- Okay, but let's turn to what they did decide, which is that having it in the ascending aorta is not part of the claim limitation.

[00:29:41] Speaker 00:
Right.

[00:29:42] Speaker 03:
And the reason for that, and the board said this at A3077- And I guess the question there is whether putting it in what the patentee now claims is the ascending aorta is really

[00:29:54] Speaker 03:
part of the structure necessary to perform the claimed function or whether it's extraneous to that, right?

[00:30:02] Speaker 00:
And I think this is a couple of points.

[00:30:04] Speaker 00:
Number one, when you're deciding whether or not something is a structure that is required for a means plus function limitation, the board quoted this court's decision in microchem.

[00:30:15] Speaker 00:
And microchem makes clear that claim interpretation under 112 paragraph 6

[00:30:20] Speaker 00:
doesn't permit the incorporation of structure from the written description beyond what is necessary to perform the claimed function.

[00:30:26] Speaker 00:
The board goes on to make the point that the means for maintaining refers to the specific structures.

[00:30:31] Speaker 00:
This is an A3077, refers to the specific structures of the claimed aortic valve that maintain the ring member rather than a specific location within the aorta.

[00:30:40] Speaker 00:
And while it's true, Judge Dyke, that there are some places in the specification that refer to the stent as being an ascending aortic stent

[00:30:48] Speaker 00:
Those are few and far between.

[00:30:50] Speaker 00:
It refers to 28 in a lot of different ways.

[00:30:53] Speaker 00:
It refers to it as, quote, stent system 28, stent scaffolding 28, stent lattice 28, combined stent 28, and also

[00:31:01] Speaker 00:
ascending aort extends 28.

[00:31:03] Speaker 03:
Let's take the references where it does refer to as being the ascending aorta.

[00:31:07] Speaker 03:
Does that make it part of the structure necessary to perform the function or is the fact that it's in the ascending aorta incidental to the performance of the function?

[00:31:20] Speaker 00:
I think it's clearly the latter Judge Dyke.

[00:31:22] Speaker 00:
The structure, where it is put, it has nothing to do with the structure itself.

[00:31:28] Speaker 00:
And I think this is where the board crediting Dr. Hill

[00:31:31] Speaker 00:
is particularly important.

[00:31:32] Speaker 00:
Dr. Hill makes the point that stents can be put in a lot of different places.

[00:31:38] Speaker 00:
And it may be that he preferred or contemplated that, at least in some circumstances, the stent would be put there.

[00:31:43] Speaker 00:
But the structure is the stent.

[00:31:45] Speaker 00:
I mean, the claim is to a valve.

[00:31:48] Speaker 00:
The board interpreted that the means for maintaining is including the stent system itself.

[00:31:52] Speaker 00:
Our argument was it didn't even include the stent system.

[00:31:54] Speaker 00:
It was just the connecting rods that were the means for maintaining.

[00:31:59] Speaker 00:
But that doesn't go to where it's actually located.

[00:32:01] Speaker 00:
And the question of where as opposed to what, the board resolved by saying it's what.

[00:32:08] Speaker 00:
And if the board resolved it a different way, I think it would lead to a serious question of indefiniteness with respect to these claims.

[00:32:13] Speaker 00:
Obviously, that issue wasn't before the board in the context of the IPR.

[00:32:18] Speaker 00:
But I think it's a significant one to keep in mind in understanding the construction that the board came to.

[00:32:25] Speaker ?:
OK.

[00:32:27] Speaker 00:
If there are any other points that the court would like me to address, I'm happy to answer any questions.

[00:32:31] Speaker 00:
If not, I will yield back the balance of our time.

[00:32:33] Speaker 00:
Thank you.

[00:32:34] Speaker 00:
That's fine.

[00:32:35] Speaker 00:
Thank you, Chief Judge Perks.

[00:32:56] Speaker 02:
Your Honors, very quickly and briefly, there is only one stent system shown in the 228 pattern.

[00:33:04] Speaker 02:
It's the ascending aortic stent.

[00:33:07] Speaker 02:
In every single figure, it refers to the ascending aortic stent.

[00:33:16] Speaker 02:
The other thing, whether it's a stent structure, it's a lattice structure, things, that's talking about the specific structure of this ascending aortic stent.

[00:33:25] Speaker 02:
If I can refer you to our reply brief for the consolidated case, on page 22, there's an illustration in it.

[00:33:37] Speaker 02:
This is from Joint Appendix A1632, the anatomy of the aortic root and implications for valve sparring or sparing surgery.

[00:33:49] Speaker 02:
It shows that the lower part, which includes the coronary artery, is the aortic root.

[00:33:55] Speaker 02:
and that the ascending aorta is above it.

[00:33:58] Speaker 02:
And that's where a valve cannot be placed in the ascending aorta.

[00:34:02] Speaker 02:
Otherwise, it will kill the patient.

[00:34:05] Speaker 02:
So it's important that that stent structure is in the ascending aorta where the valve is at the root of the aorta.

[00:34:13] Speaker 02:
I see that my time is up.

[00:34:14] Speaker 02:
Thank you.

[00:34:15] Speaker 01:
Thank you.

[00:34:16] Speaker 01:
We thank both parties in the cases.