[00:00:07] Speaker 00:
Good morning.

[00:00:08] Speaker 00:
Our first argued case today is 2017-1012, General Hospital versus Siena.

[00:00:19] Speaker 00:
Mr. Bennett, please proceed.

[00:00:20] Speaker 02:
Good morning, Your Honors.

[00:00:27] Speaker 02:
You may please the court.

[00:00:30] Speaker 02:
GHC is appealing the PTAP's decision, terminating GHC's interference on grounds of lack of written description.

[00:00:38] Speaker 02:
GHC maintains that the inventors possessed the claimed method of treatment to damage hair follicles.

[00:00:46] Speaker 02:
The evidence is that the claimed number of particles used in the inventive process fall within and border the particle concentration ranges the inventors disclose in their specification.

[00:01:01] Speaker 02:
Further, no evidence has been submitted that the claimed concentration is critical or that the claimed process works differently

[00:01:09] Speaker 02:
at any different concentrations.

[00:01:11] Speaker 03:
Counsel, even if we were to say that the term about you being construed is plus or minus 20 percent, where's the written description of that, that particular claim in the specification for that degree of concentration?

[00:01:28] Speaker 03:
Yes, Your Honor.

[00:01:29] Speaker 02:
With regards to a particular formulation identified as F78, there is a preceding

[00:01:40] Speaker 02:
number associated with it, which is 250 OD F78.

[00:01:46] Speaker 02:
When that 250 OD F78 is examined, we realize, and our experts also identified this, that it is not, in fact, 250, but it can be up to 300.

[00:02:03] Speaker 02:
So that 50 was understood by a person skilled in the art.

[00:02:08] Speaker 02:
That difference

[00:02:09] Speaker 02:
to be the 20% difference.

[00:02:13] Speaker 02:
The issue, as far as we can see, is that the PTAB did not follow in rate wartime and failed to consider the lack of criticality of the concentrations.

[00:02:26] Speaker 02:
It incorrectly held that the disclosed concentrations didn't support the claimed concentration

[00:02:40] Speaker 02:
misconstrued the term about in the claims by not adopting the broadest reasonable interpretation, did not apply about not only to the specification in all its numerals, but did not properly apply about to all the concentration of values, and did not take into account all the evidence of record, including that which detracts from the conclusion that Petan reached.

[00:03:08] Speaker 02:
And it also erred in the interference in not allowing it to proceed with an alternative claim.

[00:03:17] Speaker 02:
The invention.

[00:03:17] Speaker 05:
I realize this is moving to the back of your argument.

[00:03:23] Speaker 05:
But can you focus for a minute on the proposed amended claim 74?

[00:03:29] Speaker 05:
And I guess I'd like to get your view about something that leaves me a little bit confused.

[00:03:35] Speaker 05:
Exactly what it was that the board said as a reason or as reasons for rejecting your amendment.

[00:03:44] Speaker 05:
One of the things that the board clearly said was that you hadn't shown that your claim 74

[00:03:59] Speaker 05:
would not have, I guess would have been obvious, I'm sorry, in light of Sienna claim number one.

[00:04:08] Speaker 05:
And you make an argument that that's wrong because our obviousness law involving ranges, roughly speaking, enables you to walk into court with a presumption that that's obvious.

[00:04:24] Speaker 05:
What else did the board?

[00:04:26] Speaker 05:
as you read pages 22 to 23 of the appendix, give as a reason for rejecting your amendment.

[00:04:35] Speaker 05:
Was there anything else?

[00:04:38] Speaker 02:
Your Honor, the reasons that they were rejected seems to be, in our view, quite wrong and incorrect and, in fact, arbitrary.

[00:04:49] Speaker 02:
Issues with regards to the representation regarding patentability, we

[00:04:56] Speaker 02:
certified that we knew of no art, we knew of no reason that it was not a patentable claim.

[00:05:03] Speaker 02:
The distinction that was created.

[00:05:07] Speaker 05:
So the standing order says, you must certify you don't know any reason, but it says at least two other things, doesn't it?

[00:05:16] Speaker 05:
One is you have to supply written description for your proposed amended claim.

[00:05:21] Speaker 05:
And then it also says something about

[00:05:26] Speaker 05:
showing why the earlier patentability problem is overcome.

[00:05:32] Speaker 02:
Separate issues.

[00:05:33] Speaker 05:
Yes, and those are separate from the certification.

[00:05:37] Speaker 05:
I'm trying to get a grip on, I guess let me put it this way, take for purposes of this question as an assumption that the board was wrong in its conclusion that

[00:05:57] Speaker 05:
you did not show obviousness of your claim in light of Sienna Claim 1.

[00:06:04] Speaker 05:
And therefore, the interference in fact reflects the count that the board was wrong about that.

[00:06:11] Speaker 05:
Mike, what I'm trying to understand is, does that matter or were there independent grounds for the board rejecting your proposed amended claim?

[00:06:23] Speaker 02:
Independent of that?

[00:06:24] Speaker 02:
No, Your Honor.

[00:06:25] Speaker 02:
With regards to

[00:06:27] Speaker 02:
explanations that were provided as to patentability and certification and stipulations.

[00:06:34] Speaker 02:
We met all the guidelines.

[00:06:35] Speaker 02:
We proceeded to create charts.

[00:06:38] Speaker 02:
We showed the relationship of the claims.

[00:06:42] Speaker 02:
And all we had in fact done was create an ipsis verbus app use of the 250 OD that was explicitly shown

[00:06:53] Speaker 02:
within the specification, expressly disclosing the specification, and replaced the 6.6 times 10 to the 11th concentration.

[00:07:03] Speaker 05:
So the standing order says that you have to show written description support for your proposed amendment claim.

[00:07:08] Speaker 05:
We did.

[00:07:08] Speaker 05:
It's a service.

[00:07:09] Speaker 05:
But I thought that all you did was to address the changed element, not all the other elements in.

[00:07:17] Speaker 02:
They were identical, Your Honor.

[00:07:18] Speaker 02:
They were identical elements.

[00:07:21] Speaker 02:
to the very first submission of Claim 65 pre-critical date.

[00:07:27] Speaker 02:
There was no one had argued any of the other limitations, changes, modifications, so few, so few.

[00:07:37] Speaker 02:
The one that was argued had to do with concentration.

[00:07:40] Speaker 02:
And it was this simple translation, a translation from a particles per milliliter value to an optical density concentration value.

[00:07:51] Speaker 02:
That value being ipsis verbus expressly stated within the specification.

[00:07:57] Speaker 05:
OK, so one more little thing, and then I will leave the subject.

[00:08:01] Speaker 05:
I thought that there is, isn't there some difference between 800 nanometers and 810 nanometers?

[00:08:06] Speaker 05:
Your proposed claim uses one, and the spec uses the other.

[00:08:10] Speaker 02:
Your Honor, in this field, there is no difference.

[00:08:13] Speaker 02:
Given the size and the number of particles, the entire issue here is,

[00:08:19] Speaker 02:
6.6 or 7.7 in this sphere is inconsequentially different.

[00:08:27] Speaker 02:
There is no criticality.

[00:08:29] Speaker 02:
In fact, from the very beginning, we said there was no criticality.

[00:08:34] Speaker 02:
The count or the 941 patent goes from 10 to the 9th to 10 to the 23rd particles.

[00:08:41] Speaker 02:
No one has ever raised the argument

[00:08:44] Speaker 02:
or suggested that there was criticality on the process, criticality to the result.

[00:08:51] Speaker 02:
This is a method claim.

[00:08:53] Speaker 02:
It has nothing to do with or impacted by the concentration values.

[00:09:01] Speaker 02:
And indeed, it should not be our burden.

[00:09:06] Speaker 02:
That argument was never made.

[00:09:08] Speaker 02:
It was never made because it cannot be.

[00:09:10] Speaker 00:
Then the board didn't make any determinations about written description in its refusal to amend, to allow you to make the amendment, right?

[00:09:20] Speaker 00:
I don't see the words written description really anywhere in their opinion as a basis for why they concluded you couldn't amend.

[00:09:29] Speaker 03:
Let me make sure I understand your argument.

[00:09:31] Speaker 03:
Are you saying that you had no obligation, no burden to show that the 250 optical density

[00:09:40] Speaker 03:
limitation would have been obvious in in view of the Sienna's concentration?

[00:09:46] Speaker 02:
The Sienna's concentration ranges from 10 to the 9th particles per milliliter to 10 to the 23rd.

[00:09:51] Speaker 02:
250 OD whether it's 6.6 as one expert says times 10 to the 11th or 7.7 times 10 to the 11th.

[00:10:00] Speaker 03:
The difference... But you've made the amendment then after that did you present any type of evidence other than... Yes we had

[00:10:08] Speaker 02:
declarations from our expert that were not considered.

[00:10:12] Speaker 02:
The fourth, Michalski was considered, but in part the third Michalski was not considered.

[00:10:17] Speaker 03:
You say not considered because the board did not make a... They don't make any reference to Michalski III.

[00:10:25] Speaker 02:
I would like to make sure that I preserve time.

[00:10:29] Speaker 00:
Okay, that's fine.

[00:10:30] Speaker 00:
Thank you, Mr. Bennett.

[00:10:31] Speaker 00:
Mr. Babcock.

[00:10:37] Speaker 01:
Good morning, Your Honors.

[00:10:44] Speaker 04:
May it please the Court.

[00:10:46] Speaker 04:
So let me engage in the same discussion you've just been having with my colleague, Judge Toronto, your question about why the motion to amend was denied and were there independent bases.

[00:10:57] Speaker 04:
His answer was incorrect.

[00:10:58] Speaker 04:
There were three separate grounds, three separate reasons why the judge denied the motion to amend.

[00:11:06] Speaker 04:
Now, as you know, in board practice, when you're moving, you're the movement, you bear the burden to prove the relief you're seeking.

[00:11:14] Speaker 04:
The board has a lot of rules when you're moving to amend about things you must do.

[00:11:17] Speaker 04:
Three things you must do.

[00:11:21] Speaker 04:
You must show that the claim you're proposing interferes in fact with one of the claims in the other party's case.

[00:11:28] Speaker 04:
So you must show, at least make the allegation that this new claim, which has never been examined,

[00:11:33] Speaker 04:
interferes in fact with one of the other opponent's claims.

[00:11:38] Speaker 04:
GSE didn't do that.

[00:11:39] Speaker 04:
They didn't even make that allegation, let alone did they make the showing.

[00:11:44] Speaker 04:
Any evidence to say here's our new claim?

[00:11:48] Speaker 05:
Why don't they, why isn't it enough for them to rely on the law, call it the Peterson related law.

[00:11:54] Speaker 05:
I don't know if I've quite got that right about

[00:11:57] Speaker 05:
their thing being in the range.

[00:12:00] Speaker 05:
That that gives them a presumption walking in, and they don't need any more than the presumption.

[00:12:04] Speaker 04:
There's no presumption, Your Honor, when you're talking about one data point.

[00:12:07] Speaker 04:
They're saying 250 OD is within the range of 10 to the 9th to 10 to the 23rd.

[00:12:17] Speaker 05:
And the particle size was roughly in the middle of the claimed Siena range.

[00:12:22] Speaker 04:
The Peterson line of cases is only when you're within a very small

[00:12:27] Speaker 04:
range and you claim something that's very similar.

[00:12:30] Speaker 04:
But here, one data point within a giant range, there's no presumption of obviousness.

[00:12:36] Speaker 04:
And the board's rules are very clear.

[00:12:38] Speaker 04:
You must at least allege obviousness.

[00:12:41] Speaker 04:
You must have some evidence.

[00:12:43] Speaker 04:
I challenge them to show in their declarations, where did Dr. Mikowski say that 250 OD?

[00:12:51] Speaker 03:
I did ask counsel.

[00:12:55] Speaker 03:
what evidence they had submitted.

[00:12:57] Speaker 03:
We heard him say a declaration.

[00:12:58] Speaker 04:
It doesn't exist, Your Honor.

[00:13:00] Speaker 04:
Ask for a paragraph site.

[00:13:02] Speaker 04:
Where did Dr. Mikowski, and the D is silent, so it's Mikowski, where does he say that 250 OD is obvious in view of this large range?

[00:13:13] Speaker 04:
There's no evidence in that regard.

[00:13:14] Speaker 00:
When you say obvious in light of this large range, you have a patent, the 941 patent.

[00:13:22] Speaker 00:
that articulates a range of nanoparticles from 10 to the 9th to 10 to the 23rd.

[00:13:26] Speaker 00:
The claim says any concentration of nanoparticles in this range is going to work for its intended purpose.

[00:13:35] Speaker 00:
No, it doesn't say that.

[00:13:36] Speaker 00:
Sure it does, because it was allowed.

[00:13:38] Speaker 00:
It's an issued patent.

[00:13:40] Speaker 00:
Patents have a presumption of validity, which includes operability, non-obviousness, no anticipation.

[00:13:46] Speaker 00:
utility, so there is a presumption that attaches to any valid issued patent, right?

[00:13:52] Speaker 04:
Isn't there?

[00:13:53] Speaker 04:
The entire claim, though, Your Honor, says that the claims that have all of the following features that would be operable.

[00:13:59] Speaker 04:
So you have to figure out the person, and there's a lot of evidence in this record about which particular particles would, in fact, work.

[00:14:06] Speaker 04:
And the evidence is that, and I think it wasn't dispute that some particles that operate in that range wouldn't work because of the other parameters in the claim.

[00:14:13] Speaker 04:
But the point is there is a large range that's resided

[00:14:17] Speaker 04:
in the Sienna claims, the burden was on the movement to at least make the allegation, make the facial allegation that their very narrow pinpoint within that range would have been obvious, therefore meeting the two-way obviousness test.

[00:14:35] Speaker 04:
The board requires the movement make at least a prima facie showing of a two-way obviousness test being satisfied.

[00:14:41] Speaker 00:
Where is this evidence?

[00:14:42] Speaker 00:
So you're suggesting that there's evidence in this record

[00:14:46] Speaker 00:
that not everything in the range of 10 to the 9th to 10 to the 23rd of the concentration of nanoparticles would have worked.

[00:14:53] Speaker 00:
So where is that evidence?

[00:14:55] Speaker 04:
It was in declarations for motions that weren't decided.

[00:14:59] Speaker 04:
Other motions that were filed by the parties that was even moved.

[00:15:02] Speaker 00:
So with regard to this motion and the record that Patent Office had in front of it, there was no evidence of unpredictability or unworkability of the range.

[00:15:12] Speaker 04:
I'd have to go back and look and see.

[00:15:14] Speaker 04:
They may have been the same declarations that were filed.

[00:15:18] Speaker 04:
They're probably not part of the joint appendix because that issue wasn't on appeal, wasn't part of the appeal.

[00:15:25] Speaker 00:
I guess I don't understand, because I haven't seen you allege or point to any evidence that suggests that anything between 10 to the 9th to 10 to the 23rd wouldn't work.

[00:15:39] Speaker 00:
And if there is a patent out there that has a presumption of validity, which includes a presumption of operability, I don't know why they need to do more than just point to a point within the range.

[00:15:50] Speaker 00:
I mean, granted, it's a large, large genus.

[00:15:52] Speaker 00:
It's a large range.

[00:15:54] Speaker 00:
But I don't know why they need to do more than that.

[00:15:56] Speaker 04:
Because the board's rules say that in order for you, and this is again the first prong, in order for you to add a new claim, you must at least make the allegation that there's an interference in fact between your proposed claim.

[00:16:07] Speaker 00:
And did they not do that?

[00:16:08] Speaker 00:
They did not do that, Your Honor.

[00:16:10] Speaker 00:
I don't understand.

[00:16:11] Speaker 00:
By filing the motion to amend, their motion included no allegations?

[00:16:17] Speaker 04:
No evidence, Your Honor, that it would have been obvious.

[00:16:19] Speaker 05:
Those are two very different things.

[00:16:21] Speaker 05:
The board didn't say no allegations.

[00:16:23] Speaker 05:
The board said,

[00:16:24] Speaker 04:
No evidence.

[00:16:25] Speaker 04:
That's right.

[00:16:27] Speaker 04:
And the point I was making earlier is that you need at least to have evidence from a person of skill in the art or from an expert to say, I've looked at this evidence.

[00:16:37] Speaker 04:
I've looked at the broad range it's claimed.

[00:16:39] Speaker 04:
I've looked at this point.

[00:16:41] Speaker 04:
And this point, a person of skill in the art would have found this point to be obvious if it was the broad range.

[00:16:45] Speaker 04:
That's a simple statement to make.

[00:16:47] Speaker 04:
It doesn't exist in the record.

[00:16:49] Speaker 04:
And the board simply said you didn't meet your burden.

[00:16:52] Speaker 04:
Whether or not it's true or not isn't the question here.

[00:16:54] Speaker 04:
The question is, the review here is not, did the board, the review here was the board in any way arbitrary or capricious denying the motion when the board has a very specific rule that says they need to put in evidence to show this obviousness, this interference in fact, and the movement didn't do that.

[00:17:17] Speaker 00:
Where's the specific rule that says they have to put in obviousness, evidence?

[00:17:21] Speaker 04:
The rule is this, the board's rule that says in order to move to amend, to succeed on a motion to amend, you must show there's an interference in fact.

[00:17:33] Speaker 00:
Right, but where you, I'm looking at the standing order, which is the only sort of board rule that I know of that's in front of me today, and I don't see where it says what you just said it says.

[00:17:46] Speaker 04:
that you need to show that there's a... That there needs to be evidence produced.

[00:17:50] Speaker 00:
Where does it say that?

[00:17:52] Speaker 00:
Because I see a certification that has to be made.

[00:17:57] Speaker 00:
And I see that the motion has to explain why the proposed claim would overcome a problem.

[00:18:03] Speaker 00:
There would be interference in fact.

[00:18:05] Speaker 00:
There we go.

[00:18:06] Speaker 00:
Where does it say the evidence?

[00:18:08] Speaker 04:
Well, Your Honor, when the rule says

[00:18:11] Speaker 04:
including why there would still be an interference in fact.

[00:18:15] Speaker 04:
You're reading the right part of the standing order.

[00:18:17] Speaker 04:
So why there would still be interference in fact, that incorporates the notion of what is an interference in fact?

[00:18:24] Speaker 04:
And the law here is very clear.

[00:18:26] Speaker 04:
An interference in fact is a two-way obvious test.

[00:18:29] Speaker 04:
You take one claim, presume it's prior art.

[00:18:32] Speaker 04:
Would that render the other claim obvious?

[00:18:34] Speaker 04:
And then you have to do the vice versa, and it's an and.

[00:18:37] Speaker 04:
So what this is saying here, and interference practitioners know this.

[00:18:40] Speaker 04:
This isn't some kind of code.

[00:18:42] Speaker 04:
is that you must show there's a two-way obvious test and that it's satisfied, and that you have to go through and say that if this claim is prior art, this claim that I'm proposing is obvious, and vice versa.

[00:18:54] Speaker 04:
You have to make that showing.

[00:18:56] Speaker 04:
And that's not just... There has to be evidence.

[00:18:59] Speaker 04:
There's no question that a simple allegation isn't going to be sufficient to meet your burden.

[00:19:04] Speaker 04:
You're the movement.

[00:19:05] Speaker 04:
You have to at least have some evidence to support your allegations.

[00:19:08] Speaker 04:
Counsel is in persons of skill in the art.

[00:19:10] Speaker 04:
So they need to have evidence to show that a person with skill in the art would have found this point obvious.

[00:19:18] Speaker 04:
And that evidence doesn't exist.

[00:19:21] Speaker 04:
But that's only the first prong.

[00:19:22] Speaker 04:
The second prong that the board relies upon is whether or not they showed that this claim that they're proposing actually corresponded to the count.

[00:19:35] Speaker 04:
And so the count in this case is claim one.

[00:19:37] Speaker 04:
They have to show, again, that this claim corresponds to the count.

[00:19:40] Speaker 04:
There was no evidence presented that the claim corresponded to the count.

[00:19:44] Speaker 04:
So that's the second prong.

[00:19:46] Speaker 05:
Can you translate that into different words?

[00:19:48] Speaker 04:
I'm sorry.

[00:19:48] Speaker 04:
Yes, I know.

[00:19:49] Speaker 04:
It's jargon.

[00:19:50] Speaker 04:
So interference, in fact, is the first test.

[00:19:54] Speaker 04:
It's one of the tests we've been discussing.

[00:19:56] Speaker 04:
It's taking the claim you're proposing and looking at any claim of the opponents and seeing if there's an interference.

[00:20:03] Speaker 04:
That's one test.

[00:20:04] Speaker 04:
This is a separate test.

[00:20:05] Speaker 04:
Now you're proposing a brand new claim.

[00:20:07] Speaker 04:
You need to show that it belongs in the interference.

[00:20:09] Speaker 04:
To show that it belongs in interference, you have to look at the count, which has been declared.

[00:20:13] Speaker 04:
And that was our claim one.

[00:20:16] Speaker 04:
And you have to show that it belongs in interference, meaning that it corresponds, that it would have been obvious in view of the count.

[00:20:25] Speaker 04:
So they need to go through the analysis to say, this is a claim.

[00:20:29] Speaker 04:
These are the features of the claim.

[00:20:31] Speaker 04:
And this is why it would have been obvious in view of the count.

[00:20:34] Speaker 04:
And they didn't put in that evidence either.

[00:20:36] Speaker 00:
Can you turn to page 22 of the board opinion, please?

[00:20:41] Speaker 00:
Because the only place where they address the argument that you're making now about how GHC failed to meet its burden to show proposed claim 74 would correspond to the count is at the bottom of page 22.

[00:20:55] Speaker 00:
And they don't give any reason except that they say, for the same reasons.

[00:21:01] Speaker 00:
Do you see it's the last sentence in that paragraph?

[00:21:04] Speaker 00:
for the same reasons GHC has also failed to meet its burden of showing Proposed Claim 74 would correspond to the count.

[00:21:12] Speaker 00:
And so for the same reasons as the last sentence of the paragraph, I assume, and correct me if I'm wrong, that the reasons they're talking about are all the reasons articulated in this paragraph.

[00:21:22] Speaker 00:
Is that right?

[00:21:22] Speaker 04:
That's what I would read it as well, Your Honor.

[00:21:24] Speaker 00:
And so the problem is, what if I have a problem with the reasons they articulated in the paragraph?

[00:21:33] Speaker 00:
And I do.

[00:21:34] Speaker 00:
And my problem is, I'll just be very honest and clear with you, that Adiphena is an anticipation case.

[00:21:40] Speaker 00:
It's not an obviousness case.

[00:21:42] Speaker 00:
And so for Adiphena, what we were looking at was whether or not the disclosure of a species within a genus necessarily anticipates.

[00:21:49] Speaker 00:
This is obviousness.

[00:21:51] Speaker 00:
So it's a big difference.

[00:21:52] Speaker 00:
Also, in Adiphena and in BARD, there was a teaching away from a portion of the range.

[00:21:58] Speaker 00:
We also don't have that in this record, any sort of teaching way.

[00:22:01] Speaker 00:
That's why I perked up and got interested when you suggested to me there was evidence that not everything in this range would work.

[00:22:07] Speaker 00:
But then you said, well, it wasn't part of the evidence in front of them for this motion.

[00:22:12] Speaker 00:
Because what the board cited to us is an anticipation case followed by a teaching away from a portion of the genus case.

[00:22:20] Speaker 00:
And so what that suggests to me is that that creates a cloud over whether everything in a particular genus would or would not work.

[00:22:26] Speaker 00:
I don't see a cloud here.

[00:22:28] Speaker 00:
And so I'm not sure why when we're talking about obviousness instead of anticipation, and why there is nothing that leads away from any part of the genus being operable for a concentration of nanoparticles, I don't see why they have to prove anything else.

[00:22:44] Speaker 04:
They don't even need to have an expert opine that it would have been obvious?

[00:22:50] Speaker 04:
That it's simply as a matter of law, a point within a large genus as a matter of law, it's obvious.

[00:22:56] Speaker 00:
When the other claim has already been allowed and there is a presumption of operability, I'm not sure why they do need to have an expert offer testimony at the point of deciding whether to allow them to add a claim to the interference.

[00:23:12] Speaker 00:
Unless I misunderstand interference law, this is not by any means the end of the interference.

[00:23:16] Speaker 00:
It's the beginning of the interference.

[00:23:19] Speaker 04:
This is the first part of the interference, Your Honor.

[00:23:22] Speaker 00:
So can't all of these things get flushed out in the form of evidence as the case moves forward through the interference?

[00:23:29] Speaker 04:
But not with regards to adding claims.

[00:23:31] Speaker 04:
Once the claim is in in the beginning of the interference, then it's in for the rest of the interference.

[00:23:35] Speaker 00:
Yes, but at that point, can't you still argue, even though that claim is in for the interference, can't you still make arguments about this claim?

[00:23:45] Speaker 04:
No, usually not, Your Honor.

[00:23:47] Speaker 04:
And the point here is that... No, usually not.

[00:23:51] Speaker 04:
I don't understand that answer.

[00:23:52] Speaker 04:
Well, the issues of patentability are dealt with in the first phase of the interference.

[00:23:57] Speaker 04:
In the second phase of the interference, now you deal with priorities, so you go to priority and account.

[00:24:01] Speaker 04:
So whether or not now you can go back and revisit whether or not certain claims are patentable, the answer is usually no.

[00:24:07] Speaker 04:
Now, in interference practice, you can always ask the judge for authorization to file a motion to ask for some relief that you want to ask for.

[00:24:15] Speaker 04:
So I can't say definitively, can you never go back and ask for relief on this issue?

[00:24:21] Speaker 04:
But generally, the answer is no.

[00:24:23] Speaker 04:
That when you're in the first phase of interference, that's where you decide patentability issues.

[00:24:27] Speaker 04:
And if you want to bring in new claims, that's where you bring in new claims.

[00:24:30] Speaker 04:
But the board's rules are very clear.

[00:24:33] Speaker 04:
The movement bears the burden.

[00:24:36] Speaker 04:
This isn't a question of whether or not the movement could have possibly met its burden.

[00:24:41] Speaker 04:
The board here says, I don't see any evidence in this record to support the allegation that this would have been obvious.

[00:24:49] Speaker 04:
Therefore, the movement fails to convince, to provide any evidence, and therefore fails to meet its burden.

[00:24:56] Speaker 05:
Just to be clear, you all did not put in evidence of your own that Claim 74 was unpatentable.

[00:25:05] Speaker 05:
You just relied on their failure to clear the claim.

[00:25:08] Speaker 04:
No, as a matter of fact, we did.

[00:25:09] Speaker 04:
That was the third prong.

[00:25:12] Speaker 04:
of her decision.

[00:25:13] Speaker 04:
So we have no interference in fact.

[00:25:16] Speaker 04:
It's the first prong that she denied it on.

[00:25:18] Speaker 04:
Is this a single judge?

[00:25:20] Speaker 04:
Judge Katz.

[00:25:21] Speaker 04:
Well, Judge Katz wrote the opinion for the board.

[00:25:26] Speaker 00:
It's not her opinion.

[00:25:27] Speaker 04:
It's the board's opinion.

[00:25:28] Speaker 04:
So the board based its decision on three prongs.

[00:25:34] Speaker 04:
No interference in fact.

[00:25:35] Speaker 04:
It wasn't shown.

[00:25:36] Speaker 04:
And that's the burden of the movement to show interference in fact.

[00:25:39] Speaker 04:
Going through the elements.

[00:25:41] Speaker 05:
Bamber v. Dalby was a case that this three elements, sorry, and two of them the board said for the same reason.

[00:25:47] Speaker 05:
Interference of fact doesn't correspond to the claim.

[00:25:49] Speaker 04:
What else?

[00:25:50] Speaker 04:
What's the third?

[00:25:51] Speaker 04:
The third element is that you have to show that the claim is patentable.

[00:25:55] Speaker 04:
You have to show that the claim is patentable.

[00:25:58] Speaker 04:
And that includes you must show a claim chart.

[00:26:02] Speaker 04:
You must have a claim chart that shows where you have support for everything in the claim.

[00:26:07] Speaker 00:
Where does the board say that in its opinion?

[00:26:09] Speaker ?:
What is interesting about the argument

[00:26:11] Speaker 04:
I didn't see that anywhere in the board's opinion.

[00:26:14] Speaker 04:
The board's opinion says that they didn't show patentability.

[00:26:20] Speaker 04:
The briefing, we've cited the opinion where it discusses the board's determination that

[00:26:36] Speaker 05:
Right, there's a carryover sentence on 22 to 23, a single sentence furthermore, which is about the certification.

[00:26:43] Speaker 05:
And then perhaps one can read something into the page 20 paragraph in which the board rejects GHC's argument that the earlier declaration of an interference resolves a bunch of questions, but the board doesn't say what those questions are.

[00:27:01] Speaker 04:
Well, that's understood, Your Honor, to mean that

[00:27:06] Speaker 04:
The fact that you have interference declared doesn't mean that the claim is presumed patentable.

[00:27:11] Speaker 05:
Right, but even if one reads that plausibly enough given the citations as referring to written description, all that paragraph says is that our declaration of an interference doesn't resolve it.

[00:27:26] Speaker 05:
That paragraph does not say, and here's why you lack written description support, as the standing order would require,

[00:27:36] Speaker 05:
for your new claim 74.

[00:27:40] Speaker 04:
And embedded in her discussion is the notion that they needed to show patentability.

[00:27:46] Speaker 04:
They did not show patentability.

[00:27:48] Speaker 04:
They needed to show that there was written discrimination support for everything in the claim.

[00:27:51] Speaker 04:
That's a basic tenet of adding a claim.

[00:27:54] Speaker 04:
You have to have a claim chart.

[00:27:56] Speaker 04:
You have to have your proposed claim and a claim chart showing where everything is supported.

[00:28:00] Speaker 04:
They didn't do that.

[00:28:01] Speaker 04:
There's at least three limitations we discussed in our briefing that weren't even addressed in their briefing.

[00:28:07] Speaker 04:
So the board was correct in saying, look, you need to at least show that it's patentable.

[00:28:11] Speaker 04:
Show me that it's got written description support.

[00:28:13] Speaker 04:
And the answer is they didn't do that.

[00:28:16] Speaker 04:
There was also a serious question on 112 paragraph 1, written description.

[00:28:20] Speaker 00:
They didn't address it.

[00:28:21] Speaker 00:
OK, Mr. Babcock, you're way over your time.

[00:28:22] Speaker 00:
We need to let Mr. Bennett use his rebuttal time now.

[00:28:27] Speaker 01:
Thank you, Your Honors.

[00:28:40] Speaker 02:
Your Honors, there has been a suggestion or an explicit statement that we did not provide a chart.

[00:28:52] Speaker 02:
Well, APPX 579 associated with motion is a chart.

[00:29:00] Speaker 05:
Was that in your reply?

[00:29:02] Speaker 05:
Yes.

[00:29:02] Speaker 05:
Yes, so not in your opening motion.

[00:29:06] Speaker 02:
That's correct, Your Honor.

[00:29:09] Speaker 02:
That was not a point that the board addressed in their decision.

[00:29:17] Speaker 03:
But clearly, it's there.

[00:29:23] Speaker 03:
The board does say in its decision, it says on page 22, the same page we're looking at, it says that GHC, just to go down, says that it does not direct us to evidence showing that one skill in the art would consider it obvious, and it goes on.

[00:29:39] Speaker 03:
given the wide ranges.

[00:29:40] Speaker 03:
It talks about the ranges and the optical density and the failure on your part to offer any type of evidence.

[00:29:48] Speaker 03:
And for that reason, you failed to meet your burden.

[00:29:51] Speaker 03:
And I asked you a while ago, what evidence did you offer?

[00:29:54] Speaker 03:
And you said declarations.

[00:29:56] Speaker 03:
Those declarations, were they related to your motion to amend it to support them?

[00:30:01] Speaker 03:
Or are you relying on declarations made with respect to the written description arguments?

[00:30:08] Speaker 02:
The declaration was submitted from Professor Machowski associated with the fourth motion, which is a motion related to 74.

[00:30:24] Speaker 02:
That is a Machowski declaration directed to claim 74.

[00:30:28] Speaker 03:
No, I'm asking, were those declarations submitted with your motion in support of the motion to amend?

[00:30:35] Speaker 03:
One of them was.

[00:30:37] Speaker 02:
And three others were not.

[00:30:39] Speaker 03:
OK.

[00:30:41] Speaker 03:
Which one was submitted?

[00:30:42] Speaker 03:
It's called Michalski IV.

[00:30:46] Speaker 03:
I'm sorry?

[00:30:47] Speaker 03:
The fourth Michalski Declaration.

[00:30:49] Speaker 00:
Where is it in the JA?

[00:30:50] Speaker 00:
Why don't you take us to it?

[00:31:00] Speaker 02:
We're getting that.

[00:31:01] Speaker 02:
It's actually, and I apologize for the correction, it's Michalski III.

[00:31:08] Speaker 02:
Board in the record, is it?

[00:31:10] Speaker 02:
We're getting that.

[00:31:14] Speaker 02:
There is a point we'll address that I wanted to make sure that... 36-31.

[00:31:19] Speaker 02:
That's the fourth.

[00:31:20] Speaker 00:
The fourth Muchowski Decorators.

[00:31:24] Speaker 02:
We're looking for 32-49 to 32-56.

[00:31:26] Speaker 00:
Do you want us to look at 32-49?

[00:31:44] Speaker 05:
They're not in.

[00:31:44] Speaker 00:
Yeah, we don't have that.

[00:31:45] Speaker 05:
We don't have those.

[00:31:47] Speaker 05:
I know you all number a lot of things that don't eventually make it into the bound volumes.

[00:31:51] Speaker 02:
Yes, that is correct.

[00:31:55] Speaker 02:
It does correspond to that.

[00:31:57] Speaker 03:
I wanted to point out... Let's just look at this from a legal point of view.

[00:32:03] Speaker 03:
Are you saying that you don't have to meet any type of burden in a motion to amend when you move to amend Claim 74, that you had no burden?

[00:32:14] Speaker 02:
Your Honor, we have a burden which we had repeatedly met, which is that the modification that was being made is that there was first the 250-0-D modification, and that limitation was expressly found within the specification.

[00:32:31] Speaker 02:
And that is, in fact, part of our burden, which we met.

[00:32:38] Speaker 02:
We also met the burden of, as the standing order indicates, to certify that the movement

[00:32:44] Speaker 02:
is not aware of any reason why the claim is not patentable at page APPX 173.

[00:32:50] Speaker 02:
We met that burden.

[00:32:53] Speaker 02:
We have systematically addressed the proximity, the similarity between that which we have in 74 and 65.

[00:33:07] Speaker 02:
This entire proceeding, namely the interference, should continue.

[00:33:13] Speaker 03:
The substance of this is an argument over Well, I think the question isn't whether you made any arguments or any type of He had any type of evidence whether claim 74 would induce the thermal damage to the hair follicles Okay, right, but it but it but the board says and they say this at foot 12 or 22 and

[00:33:38] Speaker 03:
that you failed to address where the Siena's claim would render obvious the proposed claim.

[00:33:46] Speaker 02:
We have a prima facie showing of obviousness, Your Honor.

[00:33:54] Speaker 02:
The history of this, whether it's in 941, when we started the interference, we repeatedly stated, and it has been never disputed, that there is no criticality, absolutely none associated

[00:34:08] Speaker 02:
with these concentrations.

[00:34:10] Speaker 02:
As such, when you have this range, and we then proceed to simply say that we have met our prima facie of showing of obviousness, and when you look at the count, you look at the claims from 10 to the 9th to 23rd, it really cannot be an important critical operative determinative of this process of the concentration.

[00:34:34] Speaker 02:
This is a process to remove or address

[00:34:37] Speaker 02:
damaging a hair follicle.

[00:34:40] Speaker 02:
The variety of concentrations across the board.

[00:34:43] Speaker 02:
No one, no specification has expressly stated that there is any critical element associated with the concentrations.

[00:34:55] Speaker 02:
This is, in some respects, just an argument that was raised to dispute the conversion.

[00:35:07] Speaker 02:
Everyone recognized, in fact, there was no motion ever filed by CNN of no interference, in fact, from the very beginning.

[00:35:15] Speaker 02:
No one has disputed that there is an interference.

[00:35:20] Speaker 02:
The question really should be addressed is moving forward to priority of the invention to the invention.

[00:35:28] Speaker 00:
All right.

[00:35:28] Speaker 00:
Mr. Bennett, your time is up.

[00:35:30] Speaker 00:
Yes.

[00:35:30] Speaker 00:
Will you please file?

[00:35:32] Speaker 00:
by the end of the day tomorrow if possible with the court.

[00:35:36] Speaker 00:
We have the motion but give us a copy of the motion and all of the supporting evidence that may have been included with the motion if it is your belief that that third declaration was included.

[00:35:49] Speaker 00:
I want exactly what was filed with

[00:35:53] Speaker 00:
the PTAB.

[00:35:53] Speaker 00:
I want the motion and anything that supported the motion as was filed with the PTAB.

[00:35:59] Speaker 00:
Don't go off reservation and give me something else.

[00:36:02] Speaker 02:
No, it will be very specific.

[00:36:04] Speaker 00:
Thank you.

[00:36:04] Speaker 02:
Appreciate your time, your attention.

[00:36:07] Speaker 02:
Thank you very much.

[00:36:08] Speaker 00:
All right.

[00:36:10] Speaker 00:
I thank both counsel.

[00:36:11] Speaker 00:
The case is taken under submission.