[00:01:08] Speaker 02:
Our next case is number 16-1817 in Raychudek, Mr. Beggs.

[00:01:19] Speaker 04:
Good morning, and may it please the court.

[00:01:24] Speaker 04:
I think the key things to remember about this case are if you have to change what the reference

[00:01:36] Speaker 04:
shows, change its shape, and make it do something that's not an anticipation, and Topliff said so.

[00:01:45] Speaker 02:
Well, if I understand your theory correctly, that these claims are not describing functions, they're describing structure, and that a claim isn't anticipated if the structure has to be rearranged in the prior art reference.

[00:02:04] Speaker 02:
Isn't that basically what we're talking about here?

[00:02:06] Speaker 04:
That's basically it, Your Honor, but I would add to that there's no evidence in the case that the prior art device could be changed.

[00:02:18] Speaker 04:
There's no suggestion anywhere.

[00:02:21] Speaker 04:
There has to be some kind of evidentiary basis to give the examiner board reason to suggest a change.

[00:02:33] Speaker 04:
What I'm doing is I'm talking about TOPLIFT.

[00:02:36] Speaker 04:
I'm also talking about Schreiber.

[00:02:41] Speaker 04:
And I hope I've answered your question.

[00:02:42] Speaker 04:
Yes, this is my basic.

[00:02:43] Speaker 02:
Schreiber doesn't have anything to do with this because it describes structure rather than function.

[00:02:47] Speaker 04:
And that's what I see here.

[00:02:49] Speaker 02:
Yes.

[00:02:51] Speaker 01:
And it's your position that you're talking about structure because of the language in the claim.

[00:02:58] Speaker 01:
It has a structural requirement.

[00:03:00] Speaker 01:
It's adapted to.

[00:03:02] Speaker 01:
It's structural.

[00:03:04] Speaker 04:
I'm looking at claim one, Your Honor.

[00:03:13] Speaker 04:
The shell has a, and I'm going to answer your question about structure.

[00:03:16] Speaker 01:
I may arrange to.

[00:03:16] Speaker 01:
I apologize.

[00:03:17] Speaker 01:
I used the wrong words.

[00:03:19] Speaker 01:
But what I meant was, I think it's your position that the language arranged to should be interpreted to have a structural requirement.

[00:03:28] Speaker 04:
Yes.

[00:03:28] Speaker 04:
Yes, that is our position.

[00:03:32] Speaker 04:
In particular,

[00:03:34] Speaker 04:
The protruding surface is on the first side of the shell.

[00:03:40] Speaker 04:
It's arranged to engage the surface of a cavity.

[00:03:44] Speaker 04:
And that cavity is between, structurally between, peripheral glenoid surfaces.

[00:03:52] Speaker 04:
And then the next step in the claim is, the next element for the shell, is a flat surface on the first side adjacent to the protruding surface arranged to engage

[00:04:05] Speaker 04:
The peripheral glenoid surfaces adjacent to cavity.

[00:04:10] Speaker 04:
In the reference, there are no peripheral glenoid surfaces adjacent to cavity.

[00:04:17] Speaker 04:
The reference shows a complete cavity.

[00:04:21] Speaker 03:
Why is it arranged?

[00:04:22] Speaker 03:
We look at the word arranged as capable of.

[00:04:27] Speaker 04:
Pardon me, Your Honor.

[00:04:28] Speaker 04:
What was your question?

[00:04:29] Speaker 03:
Why would we not look at the word arranged, arranged to engage?

[00:04:34] Speaker 03:
as meaning capable of engaging.

[00:04:38] Speaker 03:
Yes, you can.

[00:04:42] Speaker 04:
That's what the claim says.

[00:04:45] Speaker 04:
And it has to do with engaging specific things.

[00:04:52] Speaker 04:
The surface of a cavity formed in the glenoid between peripheral glenoid surfaces.

[00:05:00] Speaker 04:
And then the claim goes on.

[00:05:04] Speaker 04:
to talk where those peripheral surfaces are.

[00:05:07] Speaker 04:
They're adjacent to the cavity.

[00:05:11] Speaker 04:
Capable of, you can read that in the claim.

[00:05:15] Speaker 04:
But again, what I say is the reference isn't capable of doing that.

[00:05:23] Speaker 04:
You have to change the reference in order to make it fit that description.

[00:05:28] Speaker 01:
We have some cases where we've talked about what does

[00:05:31] Speaker 01:
different language that sounds like a range two.

[00:05:34] Speaker 01:
What does it mean?

[00:05:35] Speaker 01:
Things like adapted to, designed to.

[00:05:38] Speaker 01:
And in those cases, we've said that it depends on what the specification says.

[00:05:43] Speaker 01:
Sometimes it can mean something like capable of, and sometimes it can mean that you actually have to meet the limitation.

[00:05:51] Speaker 01:
It's not enough that it's just capable of perhaps doing that.

[00:05:55] Speaker 01:
Do you have a view on whether

[00:05:59] Speaker 01:
Just assuming that we're going to go ahead and consider, I understand you have an alternative argument that even if the claim is capable of, the PTO hasn't met its burden here.

[00:06:09] Speaker 01:
But do you also argue that the language in your claim should be read as a structural limitation?

[00:06:16] Speaker 04:
It should be, yes.

[00:06:18] Speaker 04:
I want to answer your question here.

[00:06:23] Speaker 04:
If you could look in the joint appendix,

[00:06:28] Speaker 04:
At Appendix Phase 151.

[00:06:45] Speaker 04:
Judge Dyck is still looking.

[00:06:48] Speaker 04:
Go ahead.

[00:06:52] Speaker 04:
Good, we're there.

[00:06:55] Speaker 04:
Look at Figure 21.

[00:06:57] Speaker 04:
which is in the upper left hand corner of that page.

[00:07:00] Speaker 04:
That's a reamer.

[00:07:03] Speaker 04:
You see the protruding face on the reamer?

[00:07:09] Speaker 04:
And outside is a peripheral surface so that that will aggressively form flat surfaces around the edges of the glenoid.

[00:07:27] Speaker 04:
And that reamer is applied as shown in figure 22.

[00:07:33] Speaker 04:
And what we come up with is a glenide implant shown in figure 33, which has a protruding surface, 119, and flat surfaces, 121.

[00:07:45] Speaker 04:
Around the outside edge, it's called a brim.

[00:07:53] Speaker 04:
And those are the specifics.

[00:07:57] Speaker 04:
That specific arrangement is not true in the reference.

[00:08:01] Speaker 04:
That's, I think, the answer to your question here.

[00:08:15] Speaker 04:
You know, I don't think I have anything more to say.

[00:08:18] Speaker 04:
I'm here to tell you that the reference has to be changed.

[00:08:22] Speaker 04:
And Topless says you can't change it and get an anticipation.

[00:08:25] Speaker 04:
And if you look for any kind of evidence that the examiner could change it, suggest that he'd change it, where the board says, well, look, if you stir up this cavity in any shape so that the protruding surface will fit into it, that only deals with the cavity.

[00:08:49] Speaker 04:
That doesn't deal with the peripheral surfaces at all.

[00:08:55] Speaker 04:
I'll answer any questions that you have.

[00:08:58] Speaker 04:
Okay, thank you Mr. Beggs.

[00:09:11] Speaker 02:
Ms.

[00:09:11] Speaker 02:
Kelley?

[00:09:14] Speaker 00:
Good morning Your Honor, may it please the Court.

[00:09:16] Speaker 02:
Why isn't he right that this is really a structured claim?

[00:09:25] Speaker 00:
to the extent that even if we assume it's a structural claim, and as Judge Stowell suggested, in that case, then you look to the specification to see what the structures are.

[00:09:38] Speaker 00:
As the board correctly found, the specification teaches that the glenoid will be resected to any shape that you want.

[00:09:47] Speaker 00:
Dome, triangle, pyramid, cube.

[00:09:51] Speaker 03:
To make that happen, you have to structurally change

[00:09:55] Speaker 03:
the reference.

[00:09:57] Speaker 03:
So now you have to come up with a totally different device.

[00:10:02] Speaker 00:
I'm sorry, which device are you referring to?

[00:10:06] Speaker 03:
To make the reference device fit, it's got to be altered.

[00:10:10] Speaker 00:
No, the device doesn't have to be altered.

[00:10:12] Speaker 00:
The glenoid surface has to be altered.

[00:10:14] Speaker 00:
And that's true of any implant surgery.

[00:10:17] Speaker 02:
The fine structure has to be rearranged so it's different, right?

[00:10:21] Speaker 01:
A few times, don't you have to flip it around?

[00:10:24] Speaker 00:
Oh, in the case of Bhutan's?

[00:10:26] Speaker 00:
Yes, in the case of Bhutan's, you do.

[00:10:28] Speaker 00:
In the case of Rambart, no, you don't flip it around.

[00:10:32] Speaker 01:
You have to remove something.

[00:10:34] Speaker 01:
Wouldn't you have to remove element, I think it's 24A?

[00:10:38] Speaker 01:
27A.

[00:10:38] Speaker 01:
Oh, 27A.

[00:10:39] Speaker 01:
27A.

[00:10:43] Speaker 00:
No, Your Honor.

[00:10:45] Speaker 00:
Shell 27B.

[00:10:49] Speaker 00:
can be cemented into the glenoid directly without the need for... How do you know that?

[00:10:53] Speaker 01:
Because you didn't provide translations of this French pattern, so I can't read French.

[00:10:58] Speaker 00:
Well, there is a translation of Rambert's abstract at pages 218 and 219.

[00:11:06] Speaker 00:
And if you look at page 219... Oh, sorry, 218.

[00:11:17] Speaker 00:
And it's the 1, 2, 3, 4, 5, 6, 7th paragraph down.

[00:11:23] Speaker 01:
You said 2, 18, 7th paragraph down?

[00:11:26] Speaker 00:
Yeah.

[00:11:26] Speaker 00:
1, 2, 3, 4, 5, 6, 7.

[00:11:28] Speaker 00:
How does it begin?

[00:11:29] Speaker 00:
To facilitate the implementation of the humeral component and allow it to be fixed without resort to cement.

[00:11:38] Speaker 00:
They've added a screw.

[00:11:39] Speaker 00:
And they've added this other piece.

[00:11:46] Speaker 00:
was discussed in our brief, there were two conventional ways of securing these glenoid implants to the glenoid surface.

[00:11:56] Speaker 00:
One is via cement and one is via screws.

[00:12:00] Speaker 00:
The claims, in this case, are open to either method of attachment.

[00:12:05] Speaker 00:
The specification discusses both of these conventional methods.

[00:12:09] Speaker 00:
And so what... Would Ford rely on this language here in its decision?

[00:12:16] Speaker 01:
The board did not rely on this particular language, but your question... I'm sorry to interrupt you, but did they rely on anything other than the figures in the prior reference?

[00:12:30] Speaker 00:
No, they relied on the language in the specification.

[00:12:38] Speaker 00:
If you looked at the board's decision at

[00:12:44] Speaker 01:
When you say the specification, are you referring to Trudix specification?

[00:12:50] Speaker 00:
Yes, I'm referring to Trudix specification.

[00:12:51] Speaker 01:
Okay, I meant in the prior reference, did it rely on any of this text in the abstract that you're showing us now?

[00:12:59] Speaker 00:
No, it did not, Your Honor, but I believe I was responding to... You were asking the question of how could you attach it without 27A?

[00:13:12] Speaker 01:
I think what I said was it seems from the figure they're relying on that you'd have to remove 27B.

[00:13:16] Speaker 02:
Yeah, because it says a protruding surface and a flat surface that are engaging with the glenoid surface.

[00:13:26] Speaker 02:
And in the prior ORIC, they're not engaging with the glenoid surface.

[00:13:31] Speaker 02:
They're engaging with what's labeled 27A here.

[00:13:34] Speaker 02:
That's the problem.

[00:13:35] Speaker 00:
Well, respectfully, Your Honor, in this court's decision,

[00:13:38] Speaker 00:
All that's required of the prior art is that it be capable or able to perform the recited function.

[00:13:46] Speaker 00:
The prior art doesn't have to show that actual performance of that function.

[00:13:51] Speaker 02:
But it's only capable of doing this if you remove 27A.

[00:13:54] Speaker 02:
If you alter the recited function.

[00:13:57] Speaker 00:
Well, the claims don't require direct contact.

[00:14:01] Speaker 00:
The claims recite, and this is something the examiner pointed out, the claims recite the word comprising.

[00:14:07] Speaker 00:
In the first instance, there's nothing about the claims that forbid 27B engaging the glenoid surface using shell 27A that the claims don't discount that.

[00:14:24] Speaker 00:
And there's nothing in the claims that says you need direct attachment either.

[00:14:27] Speaker 00:
So by use of the word comprising and by failing to amend the claims to say direct contact, there's nothing about the claims themselves

[00:14:37] Speaker 01:
that prohibit this masterpiece.

[00:14:39] Speaker 01:
You don't think the language of protruding surface arranged to engage the surface of a glenoid cavity?

[00:14:46] Speaker 01:
That doesn't require direct contact.

[00:14:48] Speaker 01:
I mean, it does refer to the surface.

[00:14:49] Speaker 01:
It doesn't just say arrange to engage a glenoid cavity.

[00:14:53] Speaker 01:
And I think you're reading arrange to as being capable of, right?

[00:14:59] Speaker 00:
Correct.

[00:15:02] Speaker 00:
That is the basis for the board's decision and one of the rationales put forth by the examiner.

[00:15:07] Speaker 00:
And I believe that is a correct rationale.

[00:15:10] Speaker 00:
Just because the prior art doesn't use it this way, and this is the same argument for the Bhutan's reference.

[00:15:16] Speaker 00:
Just because the prior art doesn't use it this way, the prior art has this structure that can be directly

[00:15:26] Speaker 00:
can be directly inserted into the glenoid.

[00:15:29] Speaker 01:
One of the problems I'm having is you say it can be, but I see no justification for that in the record.

[00:15:35] Speaker 01:
Nothing that suggests that it would be used in that way.

[00:15:38] Speaker 01:
You say it can be, it feels unsupported, but also the arrange to construction seems overly broad, not reasonable, I would say, in light of the specification.

[00:15:50] Speaker 01:
given the precedent that we have on what arranged to should be interpreted to mean and that it should, I guess like arranged to, adapted to, that it means there's an actual structural limitation in many cases in light of the specification.

[00:16:04] Speaker 01:
How do you respond to the claim construction point?

[00:16:06] Speaker 00:
My response to that claim construction point is that's an intended use.

[00:16:12] Speaker 00:
That's just what the examiner said.

[00:16:14] Speaker 00:
And that's the case in Schreiber.

[00:16:16] Speaker 00:
In the case in Schreiber, you had an oil can.

[00:16:19] Speaker 00:
that this court said was structurally identical.

[00:16:23] Speaker 01:
Why in this case, in light of this specification, with this claim language should we interpret or range to to not be structural and just be functional or capable of?

[00:16:33] Speaker 01:
Why should we do that?

[00:16:34] Speaker 01:
That's my question.

[00:16:35] Speaker 01:
I don't think Schreiber tells you how to interpret this claim language.

[00:16:39] Speaker 00:
That much I would agree with, Your Honor.

[00:16:45] Speaker 00:
What happens here procedurally, from procedural posture, the board said

[00:16:50] Speaker 00:
We have a reason to believe that this is structurally able to directly contact the surface because your specification, the structures that are correlated to that function, the structures your specification correlates to that function, those structures, you said, any shape can pretty much be arranged to engage the glenoid.

[00:17:14] Speaker 00:
The specification is very clear about that.

[00:17:17] Speaker 00:
And the specification says it can be affixed, if you are reading it, the claims require affix to the glenoid in two ways, either by screws or by cement.

[00:17:26] Speaker 00:
And that should be enough to shift the burden to the applicant to come forward and say, no, here are the structural reasons, either here are the structural reasons why the prior can't do that, or here are the structures.

[00:17:40] Speaker 01:
Let me interrupt you for a minute.

[00:17:41] Speaker 01:
You're relying on those passages in the specification to explain

[00:17:45] Speaker 01:
Because the specification says you can have many different shapes, that means the word arranged to should be limited to capable of and not have a structural requirement.

[00:17:57] Speaker 00:
I'm using the words arranged to and capable synonymously because the specification says, literally says that the, quite literally I guess I should say, says that the glenoid can be resected to match the profile of any,

[00:18:15] Speaker 00:
that it can be resected to match the profile of any shell.

[00:18:19] Speaker 00:
And in that case, the shell having this shape or a pyramidal shape or a dome shape could engage the glenoid in the manner that's outlined in the specification.

[00:18:34] Speaker 02:
But Rampart doesn't teach that, right?

[00:18:37] Speaker 02:
It doesn't disclose that.

[00:18:39] Speaker 00:
Shell, in the board's opinion, I think it's the correct opinion.

[00:18:42] Speaker 00:
The structures disclosed in Rampart

[00:18:45] Speaker 00:
are capable, are able, to engage the glenoid surface.

[00:18:49] Speaker 02:
It's true that Rampart doesn't disclose an alternative.

[00:18:53] Speaker 00:
Admittedly, Rampart does not disclose that in the alternative, but the claims here, again, do not recite the word, they recite the word comprising, they do not say direct contact.

[00:19:11] Speaker 00:
So 27A could be there, and even if 27A were removed, it would still match the resected profile of the glenoid, and it could still be cemented or screwed into place.

[00:19:27] Speaker 03:
But if you remove 27A, that changes the structure of Rampart in a fundamental way to where now we have a different

[00:19:41] Speaker 03:
A whole different reference.

[00:19:42] Speaker 00:
Well, my response to that is the entirety of Rampart's implant is not being cited against these claims.

[00:19:50] Speaker 00:
Only 27B is being cited against these claims.

[00:19:54] Speaker 03:
But 27B won't work unless you remove 27A.

[00:19:57] Speaker 00:
Well, it's the board's position, and I believe the correct position, that it would because... So the board does rely on removing 27A.

[00:20:06] Speaker 00:
The board said, yes, the board

[00:20:10] Speaker 00:
said that this is the reason that we find that it is so arranged.

[00:20:15] Speaker 00:
The examiner gave both the comprising and the same rationale for directly contacting the glenoid.

[00:20:27] Speaker 03:
Now, we've said in N. Ray Wells, an earlier device which must be distorted from its obvious design cannot be in anticipation.

[00:20:37] Speaker 00:
The earlier device in this case, again, is 27B, not the entire ramvert implant.

[00:20:44] Speaker 00:
And 27B, the board found, as a factual matter, does not need to be distorted to directly contact the glenoid.

[00:20:56] Speaker 00:
And in not just this implant, not in the claimed implant, but in all implants,

[00:21:02] Speaker 00:
The glenoid surface is resected to match the surface of the implant that's going in there.

[00:21:08] Speaker 03:
This is very common.

[00:21:10] Speaker 03:
Look at figure 2 and look at items 28 and 21.

[00:21:17] Speaker 03:
It's 28.

[00:21:17] Speaker 03:
It's those screws.

[00:21:19] Speaker 03:
Do you see those screws?

[00:21:20] Speaker 00:
One moment, please, Your Honor.

[00:21:21] Speaker 00:
I'm unclear.

[00:21:23] Speaker 00:
I didn't hear the figure number.

[00:21:24] Speaker 03:
On figure 2?

[00:21:25] Speaker 03:
On Rampart?

[00:21:26] Speaker 00:
Oh, Rampart's figure 2, yes.

[00:21:27] Speaker 03:
Do you see those screws 28?

[00:21:32] Speaker 03:
If you're going to rely only on 27B in order to engage the surface of the cavity, then those screws have to be faced in another way.

[00:21:44] Speaker 00:
I understand that, but there is the possibility of cement.

[00:21:46] Speaker 03:
Why isn't that distorting the reference?

[00:21:50] Speaker 00:
It doesn't have to be screwed in.

[00:21:52] Speaker 00:
It can be cemented in.

[00:21:53] Speaker 00:
The claims are not limited to any particular attachment mechanism.

[00:21:56] Speaker 03:
But Rappert uses screws, not cement.

[00:22:01] Speaker 00:
But the screws are not part of what's cited against.

[00:22:05] Speaker 00:
It's only shell 27B that's being cited against these claims.

[00:22:08] Speaker 00:
And the claims don't require screws.

[00:22:10] Speaker 00:
And in fact, when the claims were originally filed, if you look at A71 of the specification, original claim one comprised an in-growth shell, a wear-resistant surface removable attached to the shell, and at least one fixation screw.

[00:22:30] Speaker 00:
applicant here removed the screw limitation, leaving it open to either of the conventional methods of attachment, which would be cement or screws.

[00:22:41] Speaker 00:
The applicant also removed the limitation that this had to be a modular implant and left open that it could be a unitary or modular component.

[00:22:57] Speaker 00:
In fact, if you look throughout this

[00:22:59] Speaker 00:
this case, we started out with narrow claims, and the claims just got broader and broader and broader as the case went by, as each new prior reference was cited.

[00:23:10] Speaker 00:
And what has happened here is that Chudik now has claims that are so broad that recite so little function.

[00:23:18] Speaker 01:
The thing is, it feels like you're relying on the specification of Chudik to excuse why it is, you know, to modify Rambert.

[00:23:29] Speaker 01:
That doesn't seem like a proper way for the PTO to analyze claims.

[00:23:37] Speaker 00:
Respectfully, Your Honor, again, it is not our opinion that Rambert needs to be modified.

[00:23:43] Speaker 00:
A, B, we're not relying on their specification for a teaching of how things should work in this particular instance.

[00:23:54] Speaker 00:
We're just noting that this specification, like Rambert, acknowledges

[00:23:59] Speaker 00:
that these sorts of implants can be, first of all, are placed on reamed surfaces that match whatever the implant's going to be, and then they can be screwed into place, or they can be cemented into place.

[00:24:13] Speaker 00:
And that's just this admitted prior art, basically, about what is de rigueur in this field.

[00:24:23] Speaker 01:
Well, you're talking about admitted prior art, but that was not relied on

[00:24:26] Speaker 01:
What was relied on below here was a one or two anticipation rejection in view of Rambert and a one or two anticipation rejection in view of Boutin.

[00:24:35] Speaker 01:
So I don't think that you can rely on admitted prior art to try to modify those references.

[00:24:42] Speaker 00:
Right?

[00:24:42] Speaker 00:
Again, in the case of cement, there is no modification.

[00:24:47] Speaker 00:
You make a matching profile in the glenoid, you pop it in there with cement.

[00:24:52] Speaker 00:
That's what you do.

[00:24:54] Speaker 00:
There's no modification of Shell 27B.

[00:24:59] Speaker 00:
And that is our position, that Shell 27B is not modified.

[00:25:07] Speaker 02:
Okay.

[00:25:07] Speaker 02:
Thank you, Ms.

[00:25:07] Speaker 02:
Kellen.

[00:25:08] Speaker 00:
Thank you.

[00:25:15] Speaker 04:
Anything more, Mr. Baggs?

[00:25:17] Speaker 04:
I think I'll observe that Council's argument

[00:25:22] Speaker 04:
deals with cavity, and we haven't heard anything about contacting the peripheral flat surfaces.

[00:25:30] Speaker 04:
When you say this matches the glenoid surfaces, you include both surfaces.

[00:25:41] Speaker 04:
If you say this just matches the glenoid surface, that's a general term, and we haven't heard anything about any evidence whatsoever to deal with those flat surfaces around

[00:25:53] Speaker 04:
around the brim of the hat.

[00:25:56] Speaker 04:
I agree with you, Your Honor, that when you take away that coupler, you're changing the whole structure of the reference.

[00:26:12] Speaker 04:
And I just want to, as Council mentions, that Putin's reference in connection with Claim 40, all you need to do is look at that reference, the whole

[00:26:21] Speaker 04:
ball of the glenoid implant faces away from the glenoid.

[00:26:27] Speaker 04:
It never gets back to anywhere close to the glenoid cavity.

[00:26:32] Speaker 04:
You're going to have to change that reference pretty substantially in topless if you can.

[00:26:40] Speaker 02:
I'm open to questions.

[00:26:44] Speaker 02:
Okay.

[00:26:44] Speaker 02:
Thank you, Mr. Beggs.

[00:26:45] Speaker 02:
You might as well stay up there because our next case is 16-19-02, again, anyway two.