[00:00:02] Speaker 01:
We have an admission this morning.

[00:00:04] Speaker 01:
Mr. Schneider, would you come forward to the podium?

[00:00:08] Speaker 01:
And I'll invite Judge Reina to decide whether you're... Mr. Schneider, or Jesse.

[00:00:17] Speaker 04:
You know, they say that time goes by quickly when you're having fun, but also when you're working hard.

[00:00:23] Speaker 04:
This past year must have really flown past quickly for you because of your hard work.

[00:00:29] Speaker 04:
You produce excellent work product.

[00:00:32] Speaker 04:
for not only my chambers but for the entire court as a whole.

[00:00:37] Speaker 04:
And I've observed the respect that you've earned from among your peers and I think that this is a testament to who you are, who you are as a practitioner.

[00:00:49] Speaker 04:
I wish you the best of luck in the future and I know now that before me stands a man in the well of this court who will represent well the legal profession and that will do well.

[00:01:01] Speaker 04:
So my colleagues, I move for the admission of Jesse D.H.

[00:01:06] Speaker 04:
Snyder, who is a member of the bar and is in good standing with the highest court of Texas.

[00:01:12] Speaker 04:
I acknowledge of his credentials and am satisfied that he possesses the necessary qualifications.

[00:01:18] Speaker 04:
Well, we received the motion.

[00:01:19] Speaker 01:
The panel will take a vote.

[00:01:21] Speaker 01:
What is your vote?

[00:01:22] Speaker 05:
I would vote in favor.

[00:01:25] Speaker 01:
Right.

[00:01:25] Speaker 01:
I do believe that the motion is unanimously granted.

[00:01:29] Speaker 01:
Ms.

[00:01:30] Speaker 01:
Harrington, will you administer the oath?

[00:01:33] Speaker 01:
Of course.

[00:01:34] Speaker 02:
Do you solemnly swear or affirm 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 of the United States of America?

[00:01:47] Speaker 06:
I do.

[00:01:47] Speaker 02:
Welcome to the bar of the United States Court of Appeals for the Federal Circuit.

[00:01:52] Speaker 01:
Thank you, Mr. Snyder.

[00:01:53] Speaker 01:
Welcome to the bar of the court.

[00:01:56] Speaker 01:
We shall proceed with the cases scheduled for this morning.

[00:02:00] Speaker 01:
The first argued case is number 15-16-01, Robert Bosch, Healthcare Assistant, against CardioCom LLC.

[00:02:09] Speaker 01:
Mr. Davies.

[00:02:17] Speaker 03:
May it please the Court.

[00:02:19] Speaker 03:
Back in 1997, monitoring of the chronically ill relied on telephone calls.

[00:02:25] Speaker 05:
What's the point here of the claim constructions, which don't

[00:02:29] Speaker 05:
As I've reviewed them, they don't really seem to make any difference in the case.

[00:02:32] Speaker 05:
They seem to be arguing about something which is not something which affects whether the prior art renders this obvious.

[00:02:41] Speaker 03:
I'm happy to answer that, Your Honor.

[00:02:43] Speaker 03:
The clean pressure structures do affect the analysis.

[00:02:47] Speaker 03:
Proactively initiate, for example, on the 420.

[00:02:50] Speaker 03:
How does that affect the analysis?

[00:02:51] Speaker 03:
Well, without proactively, all they have is common.

[00:02:54] Speaker 03:
And the nurses in Talman are not proactively doing anything.

[00:03:00] Speaker 03:
They may be initiating, but they're not initiating in anticipation of anything.

[00:03:05] Speaker 03:
So they're not doing anything proactive.

[00:03:07] Speaker 03:
And so if we write on the proactive initiation, there's no way... What is your construction of proactive or initiating?

[00:03:15] Speaker 03:
So our construction is the same as their expert's construction, actually, Your Honor.

[00:03:19] Speaker 03:
It's that in anticipation before something,

[00:03:21] Speaker 03:
occurs something urgent in this context.

[00:03:23] Speaker 03:
Because what you have here is chronically... Why isn't Tallman doing that?

[00:03:28] Speaker 03:
Because what happens in Tallman, they're already scheduled callbacks.

[00:03:32] Speaker 03:
They're not in anticipation of anything happening.

[00:03:35] Speaker 05:
The callbacks are made... But the callbacks are being made before there's a medical crisis.

[00:03:40] Speaker 03:
They're not in anticipation of that crisis.

[00:03:44] Speaker 05:
I'm understanding.

[00:03:45] Speaker 05:
But why don't you address the other two.

[00:03:46] Speaker 04:
Doesn't proactive go to the conduct in anticipation more to a mental state?

[00:03:53] Speaker 04:
If the contact is made, is initiated, why isn't that proactive?

[00:04:05] Speaker 04:
I'm having the same difficulty, I think, that Judge Dyke is expressing.

[00:04:10] Speaker 03:
So the word proactive is used throughout the patent.

[00:04:13] Speaker 03:
And it has to have content.

[00:04:15] Speaker 03:
If I initiate an action, why isn't that being proactive?

[00:04:20] Speaker 03:
It's not proactively initiating.

[00:04:24] Speaker 03:
The word proactive was used differently in this patent, which doesn't matter.

[00:04:27] Speaker 03:
We're not talking about how it's used in the English language, how it's used in these claims and in this patent.

[00:04:31] Speaker 03:
The title of this patent is Proactive Health Management.

[00:04:34] Speaker 03:
The field of the invention is proactively managing your group.

[00:04:37] Speaker 03:
The object of the invention is proactively communication.

[00:04:40] Speaker 03:
And it's not about initiating because there are ways to initiate contact, as in Tommen, which isn't proactive.

[00:04:46] Speaker 03:
The whole point of this invention was to have chronically ill patients that may be under a self-care plan that requires checking in.

[00:04:53] Speaker 03:
And the nurses initiate that check-in.

[00:04:55] Speaker 03:
But to do it proactively, to check in before there's a problem, that's the key.

[00:04:59] Speaker 05:
And that's why there's... Why isn't that happening in Parliament, that they're initiating before there's a problem?

[00:05:05] Speaker 03:
Well, let's put it this way.

[00:05:06] Speaker 03:
In Tommen, two

[00:05:08] Speaker 03:
individuals.

[00:05:09] Speaker 05:
But Tomlin doesn't describe a situation where there's an initiation in response to a crisis, right?

[00:05:15] Speaker 03:
Tomlin, no.

[00:05:16] Speaker 05:
Well, so what's the difference?

[00:05:18] Speaker 03:
Because we're doing it in response.

[00:05:21] Speaker 03:
Under our invention, the providers get to prioritize amongst patients and pick which people to call, so that they pick the people that are most sick, the ones who most need the care.

[00:05:32] Speaker 03:
That's the proactive initiation.

[00:05:35] Speaker 03:
In Tomlin, there's no prioritization.

[00:05:38] Speaker 03:
it just whoever's next on the list gets called.

[00:05:40] Speaker 03:
And so the whole point of this invention is to rationalize resources so the providers can proactively decide who to reach out to.

[00:05:50] Speaker 05:
What about the other two client constructions?

[00:05:52] Speaker 05:
I'm having difficulty in seeing how those affect anything.

[00:05:56] Speaker 05:
In terms of the data merge and the script program,

[00:06:03] Speaker 05:
those things are described in your own specification as well-known standard.

[00:06:10] Speaker 05:
How are you using that to distinguish the prior art?

[00:06:12] Speaker 05:
What's the point here?

[00:06:14] Speaker 03:
So on those constructions, I think the prior art, even under the board's constructions, unlike the first one we were talking about, under the board's construction of those two terms, the prior art does not teach what happens here.

[00:06:27] Speaker 03:
So just to get a little more specific data.

[00:06:29] Speaker 05:
But how does the claim construction affect

[00:06:32] Speaker 05:
whether the prior art renders this obvious.

[00:06:34] Speaker 05:
How does it make a difference?

[00:06:37] Speaker 03:
It makes it more clear that the prior art does not apply.

[00:06:39] Speaker 03:
How?

[00:06:41] Speaker 03:
Well, so data merge, for example, what they say is that's any combination of two pieces of data.

[00:06:48] Speaker 03:
What we say is merge is like a mail merge.

[00:06:50] Speaker 05:
It has to... Well, it has to result, under the terms of patent and the word in dispute, it has to result in a customized script program.

[00:06:58] Speaker 05:
Yes, for sure.

[00:07:00] Speaker 05:
Right.

[00:07:01] Speaker 05:
I don't know.

[00:07:02] Speaker 05:
What do the claim constructions have to do with it?

[00:07:04] Speaker 03:
So the other way to come at this, Your Honor, is if you think it's close, we can talk about the commercial success.

[00:07:09] Speaker 03:
This court's case... No, forget about it.

[00:07:11] Speaker 05:
Put that aside.

[00:07:11] Speaker 05:
I mean, it's clearly relevant, but I'm trying to figure out what you're arguing about claim constructions here, and I'm trying to figure out what difference they make.

[00:07:21] Speaker 05:
So there are a third... How is it that under your claim construction, a piece of prior art on which the board relied becomes irrelevant?

[00:07:32] Speaker 03:
Well, irrelevant.

[00:07:34] Speaker 03:
I'm not sure we use the word irrelevant.

[00:07:35] Speaker 03:
It's distinguishable.

[00:07:37] Speaker 03:
So.

[00:07:37] Speaker 05:
Well, how does it distinguish prior art on which the word rely?

[00:07:43] Speaker 03:
So on the 192, the prior art is called write.

[00:07:47] Speaker 03:
And it's a form that is used when customers go to a restaurant.

[00:07:52] Speaker 03:
And it's a form for people to fill out the answers.

[00:07:55] Speaker 03:
And the question is, is that like our, is that a data merge?

[00:08:00] Speaker 03:
program if all the person is doing, the second person is taking that form and changing the form.

[00:08:06] Speaker 03:
We say that is not a data merge program.

[00:08:08] Speaker 03:
The board says, well, any combination of two sets of data meets the claims.

[00:08:15] Speaker 03:
And we say, fine, let's take that construction.

[00:08:17] Speaker 03:
We're still not combining two sets of data.

[00:08:18] Speaker 03:
And right, you only have one set of data.

[00:08:20] Speaker 03:
You need a program that does the data merging.

[00:08:22] Speaker 03:
We're saying, well, there's no programming rights.

[00:08:24] Speaker 03:
So we have the no program argument, and we have the no two sets of data argument.

[00:08:27] Speaker 05:
This only relates to right and none of the other prior art?

[00:08:31] Speaker 03:
Yeah.

[00:08:31] Speaker 03:
The 192 rights that were the key prior art, for sure.

[00:08:37] Speaker 05:
OK.

[00:08:37] Speaker 05:
What about your argument that, with respect to the secondary considerations, that somehow you don't have to show for commercial success that the patent was being practiced?

[00:08:49] Speaker 05:
What case holds that?

[00:08:52] Speaker 03:
We cited a lot of cases, Your Honor.

[00:08:56] Speaker 03:
Rambas, special power integrations, for example, Your Honor's recent case.

[00:09:03] Speaker 05:
There is no showing in those cases that each element of the claim... No, but there's no language in those cases that says you don't have to practice the prior art to show commercial success.

[00:09:14] Speaker 03:
There is reasoning, Your Honor.

[00:09:17] Speaker 05:
Power integrations... Is there any case that holds that

[00:09:20] Speaker 05:
commercial success is relevant if it doesn't practice the prior art?

[00:09:27] Speaker 03:
You're using the phrase practice the prior art.

[00:09:29] Speaker 05:
I mean, I'm sorry, it doesn't practice the patent.

[00:09:35] Speaker 03:
I'm not sure what you mean by that.

[00:09:35] Speaker 03:
Practice the elements.

[00:09:36] Speaker 03:
They have cited zero cases that say you have to practice each element.

[00:09:40] Speaker 03:
And Rambas, and power integrations, and spectral ethics, they do not require proof of practicing each individual element.

[00:09:45] Speaker 03:
That would not work.

[00:09:47] Speaker 03:
I mean, Onco, your honor,

[00:09:50] Speaker 03:
That is a good example, I think, of why you need a test.

[00:09:54] Speaker 03:
There definitely has to be a test.

[00:09:55] Speaker 03:
You can't just come up and say, commercial success, we win.

[00:09:58] Speaker 03:
You have to connect the commercial success to the patent.

[00:10:01] Speaker 03:
So if that's the question, you know you have to do that.

[00:10:03] Speaker 03:
The question is at what level of specificity you have to do that.

[00:10:07] Speaker 05:
Well, why don't you have to do it in terms of the patent's level of specificity?

[00:10:10] Speaker 03:
Because if that was the requirement, the requirement would never, ever be met.

[00:10:14] Speaker 03:
Because things like advertisements don't talk in terms of individual specific elements, 9, 10 points of acclaim.

[00:10:21] Speaker 03:
So when it's in power integrations, the fact that you have superior technology is relevant to showing the patent

[00:10:28] Speaker 03:
is non-obvious.

[00:10:30] Speaker 03:
Because to step back, that's the whole point of the commercial success, and why Lerner and Hand likes it so much, is it's objective, right?

[00:10:36] Speaker 03:
There's not lawyers arguing about it.

[00:10:37] Speaker 03:
It's objective evidence.

[00:10:39] Speaker 03:
What we have here is ABC News highlighting this product.

[00:10:42] Speaker 03:
What we have here are medical journals highlighting the particular features of our patent.

[00:10:47] Speaker 03:
And what we're saying is, those show they were not obvious.

[00:10:51] Speaker 03:
There's no counter-narrative.

[00:10:52] Speaker 03:
It's not as if there's another, like in Encore, Your Honor, there was the fact that the

[00:10:57] Speaker 03:
That was the Invisalign case where the braces were clear and that commercial success were driven by the fact that they were clear and that wasn't in the patent.

[00:11:06] Speaker 03:
Sure, that's not what we're arguing.

[00:11:08] Speaker 05:
Could we advertise something which doesn't practice the patent?

[00:11:11] Speaker 03:
How is that relevant?

[00:11:14] Speaker 03:
You keep saying the phrase doesn't practice the patent.

[00:11:18] Speaker 03:
The inventive features, if you prefer that phrasing,

[00:11:21] Speaker 05:
I'm talking about the claim limitations.

[00:11:26] Speaker 05:
If what you're doing doesn't satisfy the claim limitations, how is it pertinent?

[00:11:32] Speaker 03:
It's pertinent because it shows that the inventive features were non-obvious.

[00:11:35] Speaker 03:
That's what these cases say.

[00:11:36] Speaker 03:
Rambas, spectral ethics, power integrations.

[00:11:39] Speaker 03:
There's no case the other way that says we're not going to look at this because you haven't shown individual elements.

[00:11:44] Speaker 03:
That's not the test and it wouldn't work.

[00:11:45] Speaker 03:
You're not going to find Peter Jennings on the news talking about a nine-point test.

[00:11:49] Speaker 03:
What you have is

[00:11:50] Speaker 04:
Let's go back to the claim construction argument.

[00:11:55] Speaker 04:
Epley argues that you waived these arguments.

[00:11:59] Speaker 04:
Can you address that?

[00:12:00] Speaker 03:
Yeah.

[00:12:01] Speaker 03:
I'm happy to.

[00:12:02] Speaker 03:
So just procedurally, what happens is we make an argument at the institution stage about claim construction.

[00:12:08] Speaker 03:
The board rejects that argument.

[00:12:09] Speaker 04:
You didn't renew those arguments at the trial stage, correct?

[00:12:13] Speaker 03:
At the final determination stage, what we said was the purposes of this proceeding

[00:12:19] Speaker 03:
And that's Appendix 11289 and Appendix 677.

[00:12:22] Speaker 03:
We just said the purposes of this proceeding, the purposes of this 60-page brief, we're not going to repeat our arguments.

[00:12:27] Speaker 03:
It would be an unfortunate rule from this Court to say that parties at the final stage have to then re-brief everything that they've lost at the institution stage.

[00:12:37] Speaker 03:
It's just like in the Markman context, Your Honor, where

[00:12:40] Speaker 03:
Yeah, I mean, you may pick one or two to reallocate, but basically you're taking lumps and you keep moving forward.

[00:12:44] Speaker 05:
Yeah, but your analogy is an interesting one, because in the Markham context, if you agree to a claim construction, you have.

[00:12:53] Speaker 05:
It's not preserved.

[00:12:55] Speaker 03:
It depends on the terms of the agreement, Your Honor.

[00:12:58] Speaker 03:
If you said for purposes of appeal,

[00:13:01] Speaker 03:
I mean, for purposes of this litigation, at this stage, I'm not going to challenge it.

[00:13:05] Speaker 03:
But we said, for purposes of this proceeding only.

[00:13:07] Speaker 05:
Yeah, if you said that a claim, a markman proceeding for purposes of this litigation, I'm not challenging the claim construction, that would be a waiver, wouldn't it?

[00:13:14] Speaker 03:
or use the word litigation.

[00:13:15] Speaker 03:
If we'd have said for purposes of the district court stage, it wouldn't be.

[00:13:18] Speaker 05:
Well, that's not what you said here.

[00:13:20] Speaker 03:
We said for purposes of this proceeding.

[00:13:22] Speaker 05:
If you said in the district court in the Martin area, for purposes of this proceeding, we accept the claim of construction.

[00:13:27] Speaker 05:
That would be a waiver, right?

[00:13:28] Speaker 03:
I'm not so sure, because you have arguments about what proceedings matter.

[00:13:33] Speaker 03:
Also, these are glaring errors.

[00:13:35] Speaker 03:
I mean, it only goes to two claim constructions.

[00:13:37] Speaker 04:
Are we talking about two separate proceedings here?

[00:13:40] Speaker 04:
Yeah, in my view, the institution

[00:13:43] Speaker 04:
stage and then you have the trial or the final determination stage.

[00:13:49] Speaker 04:
Shouldn't you at least renew an objection you earlier made in the initiation stage to preserve your claim instructions?

[00:13:57] Speaker 04:
I don't see that you... It's murky here.

[00:14:02] Speaker 04:
But what's not murky is your argument that you could win even under the

[00:14:08] Speaker 03:
I don't mean, you know, it's certainly not a lich bin of our case.

[00:14:12] Speaker 03:
As we started out talking about the two claim constructors the waiver is relevant to, data merge program and script program, there are third arguments.

[00:14:21] Speaker 03:
I mean, if you want to find them waived, it doesn't affect our bottom line point.

[00:14:26] Speaker 03:
I do think it's not the right rule to require parties to relitigate

[00:14:30] Speaker 03:
issues again in a sixty-page brief at the IPR.

[00:14:34] Speaker 03:
That would impose a burden on both the parties and the system.

[00:14:36] Speaker 05:
I don't think that's the contention.

[00:14:37] Speaker 05:
The contention is not that you have to re-brief it for sixty pages.

[00:14:40] Speaker 05:
The point is you have to preserve it.

[00:14:42] Speaker 05:
You could do it in a sentence.

[00:14:44] Speaker 03:
So instead of saying for purposes only, we should have said for purposes of this IPR only?

[00:14:49] Speaker 05:
We continue to challenge the claim construction, but we're

[00:14:53] Speaker 05:
That's how I read that.

[00:14:55] Speaker 03:
I don't think that's being fair to the intent here.

[00:14:58] Speaker 03:
But the errors are glaring.

[00:14:59] Speaker 03:
Statham-Burge, Cardingham not really defending the things that they're saying are waived.

[00:15:06] Speaker 03:
They're not defending the substance of those claim constructions.

[00:15:08] Speaker 03:
They are very bad constructions, and that's why we highlighted them.

[00:15:11] Speaker 03:
But we really don't need them.

[00:15:14] Speaker 03:
To come back to secondary considerations, another point to consider

[00:15:18] Speaker 03:
is that there's just no counter narrative here.

[00:15:21] Speaker 03:
And that, I think, is the thing to keep in mind.

[00:15:23] Speaker 03:
It's not like there's another explanation for the excess.

[00:15:25] Speaker 03:
When Peter Jennings talks about the health buddy, when he talks about the customer scripting program, when he talks about, when all that literature talks about the group charts, there's no other reason except for our invention.

[00:15:40] Speaker 01:
Let me ask, do you want to distinguish among the various patents that are before us?

[00:15:46] Speaker 03:
Would I like to distinguish among the various pens?

[00:15:49] Speaker 01:
Yes, you argued them separately, but it's the sense that they rise and fall together.

[00:15:55] Speaker 03:
So it really depends on how persuasive you find the evidence of praise.

[00:16:01] Speaker 03:
Because I think this is an unusual case of objective success, where you have Peter Jennings on the nightly news and all the literature.

[00:16:08] Speaker 03:
So I think on that basis alone, I think the PTAB should not have invalidated any of these pens.

[00:16:13] Speaker 03:
So that would be one way to go.

[00:16:15] Speaker 03:
The 420, the client construction area, has no waiver issues.

[00:16:19] Speaker 03:
It's glaring, and it doesn't come close to the prior art.

[00:16:22] Speaker 03:
So I would do the 420 in a second bucket, and then the latter two may rise and fall, depending on how precise you want it to be with the prior art.

[00:16:32] Speaker 04:
The Peter Jennings statement, you view that as industry praise?

[00:16:36] Speaker 03:
That's how we characterize it, yes, Your Honor.

[00:16:39] Speaker 03:
It's certainly praise.

[00:16:41] Speaker 03:
It's certainly praise.

[00:16:42] Speaker 03:
I'm not sure.

[00:16:43] Speaker 03:
I didn't see anything in the cases at that level.

[00:16:46] Speaker 03:
It's a two minute video.

[00:16:47] Speaker 03:
I urge you to watch it.

[00:16:49] Speaker 03:
It is ABC Jennings Nightly News.

[00:16:51] Speaker 03:
It's the health buddy.

[00:16:54] Speaker 03:
It's the customized scripting feature.

[00:16:56] Speaker 03:
It's the before.

[00:16:57] Speaker 03:
It's the after that Lerner had once.

[00:16:59] Speaker 03:
Lerner had objective consideration test once the world before and the world after.

[00:17:04] Speaker 03:
And Peter Jennings gives you the world before.

[00:17:06] Speaker 03:
where people were winding up in the hospital prematurely because there was no proactive communications.

[00:17:10] Speaker 03:
And then this great device and the system comes along and there's interviews about it.

[00:17:15] Speaker 01:
Okay.

[00:17:16] Speaker 01:
Thank you.

[00:17:17] Speaker 01:
We'll save your vital time, Mr. Davies.

[00:17:22] Speaker 01:
Thank you.

[00:17:25] Speaker 01:
Mr. Fleming.

[00:17:27] Speaker 00:
Good morning, and may I please support Mark Fleming with Daniel McDonald on behalf of CardioCom.

[00:17:32] Speaker 00:
I would begin where Mr. Davies ended, which is with commercial success.

[00:17:35] Speaker 00:
The legal test is the one that Bosch quotes twice in its blue brief, which is that to show a prima facie case of nexus, the patentee has to show both that there is commercial success and that the product that is commercially successful is the invention disclosed and claimed in the patent.

[00:17:53] Speaker 00:
Bosch quotes that language.

[00:17:54] Speaker 00:
It comes from this court's decision in Crocs, in turn quoting this court's decision in Jamaica.

[00:17:58] Speaker 00:
And as the board correctly found, Bosch didn't prove either of those.

[00:18:02] Speaker 00:
And there's a reason it has to be the patented invention and not just one or a couple of features in a claim of the patented invention.

[00:18:10] Speaker 00:
And that's because, as the court said in Jamaica, the rationale for giving weight to so-called secondary considerations is that they provide objective evidence of how the patented device is viewed in the marketplace.

[00:18:22] Speaker 00:
And contrary to my friend's claims, this court has said that several times,

[00:18:26] Speaker 00:
It says it's specifically in Ashland Oil, which is a case that Bosch cites in its brief, in Book Note 42.

[00:18:31] Speaker 00:
There's a lengthy discussion about the need to show that the supposedly successful products actually practice the claim of invention.

[00:18:38] Speaker 00:
The court said it in J.T.

[00:18:39] Speaker 00:
Eaton, which we cite, and in numerous other cases, and none of the cases that Bosch has cited to you this morning hold to the contrary.

[00:18:47] Speaker 00:
Besides, the standard that they are articulating is not one that is workable in practice.

[00:18:52] Speaker 00:
They seem to be articulating some kind of

[00:18:54] Speaker 00:
gist of the invention or point of novelty argument.

[00:18:57] Speaker 00:
But they don't tell the court how you're supposed to pick which features are important for purposes of commercial success.

[00:19:03] Speaker 00:
Surely they can't just take one of them.

[00:19:05] Speaker 04:
Could you present evidence that the product that Peter Jennings was praising was not covered by the claims that are asserted here?

[00:19:15] Speaker 00:
We did not judge him.

[00:19:16] Speaker 00:
It was not our burden to do so.

[00:19:17] Speaker 00:
It was the patentee's burden to show that they did practice the claim of invention.

[00:19:21] Speaker 00:
It's their product.

[00:19:22] Speaker 00:
It's not our product.

[00:19:23] Speaker 00:
We don't know what the health buddy does beyond what Bosch chooses to tell us.

[00:19:27] Speaker 00:
Neither did the board.

[00:19:28] Speaker 00:
And that's why the board asked this question repeatedly at the oral hearing in these cases.

[00:19:33] Speaker 04:
So apart from whether we're talking about a product that's being practiced or not, isn't the real issue here one of Nexus?

[00:19:43] Speaker 00:
Yes, Your Honor.

[00:19:44] Speaker 00:
That's exactly what it is.

[00:19:45] Speaker 00:
They have failed to make a prima facie case of Nexus, which requires proof both of commercial success, that the health buddy is in fact successful.

[00:19:52] Speaker 00:
And there's a significant question on that.

[00:19:53] Speaker 00:
The board ruled against them on that too.

[00:19:56] Speaker 00:
But they haven't shown to begin with that the health body actually practices any claim of the patents that are at issue in this case.

[00:20:04] Speaker 00:
And the board was surprised by that.

[00:20:05] Speaker 00:
The reason they didn't do it is because they believed erroneously that they didn't have to.

[00:20:09] Speaker 00:
And the board ruled that that was incorrect as a matter of law.

[00:20:12] Speaker 00:
Now I understand that Bosch is trying to cobble together some evidence on appeal to try to satisfy this court.

[00:20:17] Speaker 00:
First of all, an effort to do that now is waived.

[00:20:19] Speaker 00:
It's too late because they didn't prove the case to the board.

[00:20:22] Speaker 00:
And second of all, fundamentally, there is no evidence that the health body practices any claim of these patents.

[00:20:29] Speaker 00:
Bosch relies on the group overview chart, but the 420 patent claim is more than just the chart.

[00:20:34] Speaker 00:
And notably, the chart is not what they're now contending is not.

[00:20:38] Speaker 00:
They couldn't patent a chart.

[00:20:39] Speaker 00:
The board found that Crawford disclosed all the elements of the supposed group overview chart.

[00:20:45] Speaker 00:
The only thing that they're now appealing

[00:20:47] Speaker 00:
as purportedly novel in the 420 is this idea of proactive communication.

[00:20:52] Speaker 00:
And I assure you, Peter Jennings does not mention proactively initiating a communication with said patient, nor does he talk about... I don't think that Peter Jennings has to mention it if he's talking about product.

[00:21:02] Speaker 00:
You are absolutely right, Judge Dyke, but there has to be something linking, whether it's the praise or the commercial success,

[00:21:10] Speaker 00:
to the patented invention.

[00:21:12] Speaker 00:
Normally, this would be done by expert... This would be done by some showing that the thing being praised did practice the patented invention.

[00:21:17] Speaker 00:
Correct, Judge Dyke.

[00:21:18] Speaker 01:
And normally, that would be done by product specifications, by expert testimony... But let's just assume that you are not correct in terms of where the burden of proof reposes, because we know that the statute is... This is an issued patent.

[00:21:33] Speaker 01:
It's not in prosecution before the office.

[00:21:37] Speaker 01:
It may very well be that the

[00:21:39] Speaker 01:
burden does not initially repose with them on any aspect.

[00:21:44] Speaker 01:
So if, as we think it through, that turns out to be the case, how confident are you that no burden has been met with respect to commercial success?

[00:21:57] Speaker 00:
I don't want to challenge overly the premise of the question, Your Honor, but if the court were to rule that the

[00:22:02] Speaker 05:
I think the point is that you've misspoken a couple of times in speaking about the burden of proof.

[00:22:10] Speaker 05:
The burden of proof always rests on the challenger.

[00:22:13] Speaker 05:
It's the burden of production of evidence on commercial success with the nexus that rests on the path.

[00:22:19] Speaker 00:
Thank you, Your Honor.

[00:22:20] Speaker 00:
That is exactly right, and to be precise.

[00:22:22] Speaker 00:
The burden of showing the prior art that discloses the elements and renders the claims obvious, that is our burden.

[00:22:28] Speaker 00:
The burden of coming forward.

[00:22:29] Speaker 00:
The burden of secondary considerations.

[00:22:30] Speaker 01:
The burden of coming forward, prima facie, is with the challenger.

[00:22:35] Speaker 00:
On secondary considerations, Judge Newman, no.

[00:22:38] Speaker 00:
The burden of coming forward with secondary considerations evidence is on the patentee.

[00:22:42] Speaker 01:
During the examination, that's correct.

[00:22:45] Speaker 01:
But now we have an issued patent.

[00:22:47] Speaker 01:
If this were before the district court,

[00:22:51] Speaker 01:
the burden would be on the challenger in the first instant as to every aspect of the challenge, would it not?

[00:22:58] Speaker 00:
I believe under D'Amico, Your Honor, once the challenger has made a prima facie case of obviousness by showing that the elements are disclosed in the prior art and there's a motivation to combine, if the patentee wishes to rely on secondary considerations, the patentee has an obligation to come forward with the two aspects of evidence that I mentioned at the beginning.

[00:23:21] Speaker 00:
which is evidence that the products were commercially successful and that they practiced the claims.

[00:23:25] Speaker 00:
If the patentee does that, then the burden of production shifts to the challenger to show, shifts to the challenger at that point.

[00:23:36] Speaker 01:
However, we have the issued patent and in Domenico the issue was not so much where the burden rose, but that it was the invention as a whole that was at issue in terms of

[00:23:49] Speaker 01:
commercial success.

[00:23:50] Speaker 00:
That is correct.

[00:23:51] Speaker 00:
In Jamaica, there was no dispute that the products did practice the claimed invention.

[00:23:55] Speaker 00:
It was a paving stone, as I recall, and there was no dispute that Jamaica was selling the patented paving stone.

[00:24:02] Speaker 00:
In cases where there has been a dispute, like Ashland Oil and like J.T.

[00:24:07] Speaker 00:
Eaton, this court has been very clear that it is the patentee's burden to show

[00:24:12] Speaker 00:
that the supposedly successful products actually do practice the plan of invention.

[00:24:16] Speaker 00:
It would have to be that way.

[00:24:17] Speaker 01:
So where is the prima facie case of obviousness then had nothing to do with the commercial success?

[00:24:26] Speaker 01:
It was the prior art.

[00:24:28] Speaker 00:
As the challenger, the prima facie case is the prior art.

[00:24:31] Speaker 01:
Let's turn to those issues.

[00:24:32] Speaker 00:
I'm happy to do that, Judge Newman.

[00:24:34] Speaker 00:
So as the questions to my colleague suggested,

[00:24:38] Speaker 00:
We believe that most of the claim construction issues in this case are waived because they were not preserved.

[00:24:44] Speaker 00:
Not only did Bosch remain, but this isn't a case simply where Bosch remained mute.

[00:24:49] Speaker 00:
They affirmatively stated agreement with the board's constructions as stated in the decision on institution.

[00:24:55] Speaker 00:
In fact, if one looks at the hearing transcript on page 11, 643 of the appendix, Bosch's counsel says there's no dispute on that construction.

[00:25:05] Speaker 00:
when talking about the data merge program construction.

[00:25:09] Speaker 00:
And then there's more than that, because the board's final written decision specifically make a finding that the parties have agreed on the constructions as stated in the decision on institution.

[00:25:19] Speaker 00:
And there was no petition for re-hearing.

[00:25:20] Speaker 00:
There was no request for clarification.

[00:25:22] Speaker 00:
There was no statement that, oh, we only meant that for purposes of the trial stage, or we're going to appeal them.

[00:25:27] Speaker 00:
That finding has remained as it is.

[00:25:29] Speaker 00:
So we think that those constructions, as stated in the decision on institution, are now final, and there's no need for this court to engage with them.

[00:25:36] Speaker 00:
The only construction as to the 420 that is asserted is the one having to do with proactively initiating a communication.

[00:25:43] Speaker 00:
That's not a method step in the patent.

[00:25:45] Speaker 00:
It is a statement of capability.

[00:25:47] Speaker 04:
The system of... The boss says, for purposes of this proceeding, aren't they acknowledging that there's two stages to this proceeding?

[00:25:56] Speaker 04:
And for this one, we're going to make the following arguments, given that there's already been a ruling on tank construction.

[00:26:03] Speaker 04:
Why would that incorporate?

[00:26:05] Speaker 04:
Or what should we view that as referencing back to the arguments that were made at the institution stage?

[00:26:13] Speaker 00:
I think that if a litigant tells a tribunal that we are accepting a preliminary ruling for purposes of this proceeding, that means that the tribunal does not commit error when it relies on those preliminary rulings.

[00:26:25] Speaker 00:
If Bosch meant something else by it, then the moment those final written decisions came out saying the parties agree to our claim constructions, they should have been in there with some kind of statement of clarification or a petition for review.

[00:26:46] Speaker 04:
this construction or something similar to that?

[00:26:48] Speaker 04:
A simple sentence would have done it?

[00:26:50] Speaker 00:
That at least would have made this a harder case from the argued waiver, for sure.

[00:26:54] Speaker 00:
I think the board would have had to decide whether that is sufficient to preserve an argument at the trial stage.

[00:26:59] Speaker 00:
And that would be a matter for the board's discretion, which this court would review for abuse.

[00:27:03] Speaker 00:
But we're not there.

[00:27:04] Speaker 00:
Here we have a statement saying, not only for purposes of this proceeding, we accept them, but then in the oral hearing, there is no dispute on that construction.

[00:27:12] Speaker 00:
And the board relied on that.

[00:27:14] Speaker 00:
The litigant cannot lull the board into a false sense of security, saying, I'm accepting and there's no dispute, and then have an opinion come out that says the parties agree to it.

[00:27:21] Speaker 00:
And then all of a sudden, appeal and say, oh, please, Court of Appeals, you need to fault the board for not intuiting that we were maintaining the constructions.

[00:27:29] Speaker 04:
But the question isn't here whether the board should have renewed its own arguments or its own analysis, its institution analysis.

[00:27:37] Speaker 04:
The argument is whether the prior claim instructions were preserved for appeal.

[00:27:42] Speaker 00:
Well, but the point of preservation is to give the board a full opportunity to assess the litigants' arguments that have gone in the first instance.

[00:27:52] Speaker 00:
But it was a preliminary finding, and then the board's invited Bosch to brief anything further that it disagreed with.

[00:27:59] Speaker 00:
That's why, I mean, if you look at the decision on institution... The board certainly can, and it does, routinely in cases.

[00:28:07] Speaker 00:
In fact, on one of the decisions on institution on A54 of the Joint Appendix,

[00:28:11] Speaker 00:
The board specifically says, for the purposes of this decision, we can screw a data merge program to be a program that combines two or more sets of data into one.

[00:28:19] Speaker 00:
They are clear that they're doing it for purposes of this decision.

[00:28:22] Speaker 00:
And the board certainly, Judge Dyke, does change its mind and would have been open to doing that had the arguments been made.

[00:28:28] Speaker 00:
The point is that Bosch simply didn't give the board a chance to do it.

[00:28:33] Speaker 00:
Judge Newman, you asked me about the merits.

[00:28:35] Speaker 00:
I'm not happy to discuss the waiver more.

[00:28:37] Speaker 00:
But the one merits argument that we think is preserved is the proactively initiate, but we think it's incorrect on the merits.

[00:28:43] Speaker 00:
We think the board got that exactly right.

[00:28:45] Speaker 00:
To initiate just means to start.

[00:28:47] Speaker 00:
And to start the communication proactively means that unlike in the prior art systems, which the patent criticizes, where the clinician waits for the patient to do something, either come into the emergency room or hand in most recent medical data,

[00:29:01] Speaker 00:
The system here, just like the Tullman system, allows the clinician to reach out without having to react to something that the patient has done.

[00:29:09] Speaker 00:
That's doing it proactively.

[00:29:10] Speaker 00:
There is nothing in the claim and certainly nothing in the specification that limits this kind of communication to a situation where there is or there's likely to be an urgent medical need, the deciding factors that the patient has been out of contact for a long time.

[00:29:23] Speaker 00:
That happens in Tullman as well.

[00:29:25] Speaker 00:
And Judge Geith, the import of your questions,

[00:29:27] Speaker 00:
to tee this up correctly, which is that even under Bosch's claim construction, Tallman does disclose a call that is not reactive to something that the patient has done, but rather is proactive.

[00:29:39] Speaker 00:
And in that sense, we think this claim construction, even if there were an error, which we don't think there is, would be a harmless error.

[00:29:45] Speaker 00:
And so the decision of the board could be affirmed on that.

[00:29:48] Speaker 00:
basis two, just like this court did in Mary Watts and like the court did in the man-machine case, which Mr. Davies put in by 28-J letter.

[00:29:56] Speaker 00:
Even where the claim construction was changed, it was still acceptable to affirm obviousness on some counts, because the result would not have changed even under the new claim construction.

[00:30:06] Speaker 00:
Unless the court has further questions, we would respectfully submit that the judgments in all three cases should be affirmed.

[00:30:11] Speaker 01:
Thank you, Mr. Forney.

[00:30:12] Speaker 00:
Thank you, Your Honor.

[00:30:16] Speaker 01:
Mr. Davies, you have your rebuttal time.

[00:30:25] Speaker 03:
Maybe I'll start where we ended with Tallman.

[00:30:27] Speaker 03:
And I think it's notable it came at the very end of the argument there.

[00:30:31] Speaker 03:
The Tallman reference does not involve proactive initiation.

[00:30:37] Speaker 03:
I was trying to explain earlier, two patients could get the same phone call at the same time under Tallman.

[00:30:45] Speaker 03:
even if one is now very sick and the other is not.

[00:30:49] Speaker 03:
And the point of our system is to allow the providers to proactively initiate contact to the one who's getting sick and not waste time on the one who's fine.

[00:30:59] Speaker 03:
But your claim doesn't cover just people who are really sick, right?

[00:31:05] Speaker 03:
It's a system that had proactive initiation of communication.

[00:31:10] Speaker 03:
And it is designed for chronically ill people, so people already have issues,

[00:31:15] Speaker 03:
But yes, it is focused on urgent care.

[00:31:18] Speaker 03:
And that's why their expert used that word.

[00:31:20] Speaker 03:
And that's where the savings of emotional energy and money comes from.

[00:31:24] Speaker 03:
It's picking up people who became chronic and going into urgent.

[00:31:28] Speaker 03:
And that's why proactive is important.

[00:31:31] Speaker 03:
But we don't need the word urgent.

[00:31:32] Speaker 03:
We don't need proactive to have any meaning.

[00:31:34] Speaker 03:
And of course, it has to have some meaning.

[00:31:36] Speaker 03:
And then Tom just doesn't apply.

[00:31:39] Speaker 03:
Second, on the question of the rigour or strictness of this commercial evidence test, I want to give the court three sites.

[00:31:47] Speaker 03:
Our experts said we met this test.

[00:31:48] Speaker 03:
So that's Appendix 12607, 2779, and 7565.

[00:31:54] Speaker 03:
Our experts said the element by element was met by our device.

[00:31:58] Speaker 03:
We don't think we needed to do it, and we don't.

[00:32:00] Speaker 03:
And they haven't cited a single case that says you have that requirement.

[00:32:04] Speaker 03:
And as your Honest Question about Peter Jennings suggested,

[00:32:06] Speaker 03:
That is not the way commercial success or objective evidence of praise is going to be developed in the real world.

[00:32:13] Speaker 03:
And that's what this objective evidence test is about.

[00:32:15] Speaker 03:
It's about the real world.

[00:32:17] Speaker 03:
I mean, the cases, if you look at Rambus, you look at all these cases, they do not require real world evidence to have specific elements.

[00:32:25] Speaker 05:
Your experts said that the system or method praised by Peter Jennings met the climate limitations?

[00:32:34] Speaker 03:
Our expert said each element was mapped.

[00:32:45] Speaker 04:
Was he referring specifically to the health buddy device?

[00:32:49] Speaker 03:
The one that's popping out of me is appendix 12607.

[00:33:03] Speaker 03:
It's not in the appendix.

[00:33:09] Speaker 03:
Let me try a different one.

[00:33:12] Speaker 03:
Seven, five, six, five.

[00:33:15] Speaker 03:
Seven, five, six, five.

[00:33:40] Speaker 03:
Did you make that argument in your brief?

[00:33:47] Speaker 03:
Yeah.

[00:33:48] Speaker 05:
Where?

[00:34:06] Speaker 03:
I'm sorry about that, Your Honor.

[00:34:07] Speaker 03:
I don't know why it's not in there.

[00:34:36] Speaker 05:
You can't come to oral arguments, aren't we?

[00:34:38] Speaker 05:
The arguments in the rebuttal arguments that you didn't make in your brief.

[00:34:43] Speaker 03:
Yeah.

[00:34:44] Speaker 03:
If that happened, Your Honor, I apologize.

[00:34:52] Speaker 03:
I know it's in the export reports.

[00:34:53] Speaker 03:
I didn't want to have the export reports.

[00:34:56] Speaker 05:
So you can't point to a place in the brief?

[00:35:01] Speaker 03:
On the fly, it's hard, Your Honor.

[00:35:04] Speaker 05:
Okay.

[00:35:11] Speaker 01:
If we need it, we'll find it.

[00:35:14] Speaker 03:
That's fine.

[00:35:16] Speaker 03:
I'm sorry.

[00:35:16] Speaker 03:
I didn't want to give them extra time.

[00:35:19] Speaker 03:
I didn't mean to do that, obviously.

[00:35:24] Speaker 01:
Yes, OK.

[00:35:28] Speaker 01:
Is that everything else?

[00:35:29] Speaker 01:
No.

[00:35:30] Speaker 01:
Thank you.

[00:35:30] Speaker 01:
Yes, that just doesn't make sense.

[00:35:33] Speaker 01:
Thank you.

[00:35:34] Speaker 01:
Thank you both.

[00:35:34] Speaker 01:
The case is taken under submission.