[00:00:11] Speaker 02:
Okay, the next case is number 16, 2159, Inray Medical Biomech Partnership.

[00:00:35] Speaker 02:
Mr. Farco.

[00:00:38] Speaker 00:
Good afternoon, Your Honors.

[00:00:38] Speaker 00:
May it please the Court?

[00:00:40] Speaker 00:
Really, there are three main issues here that present the best case.

[00:00:45] Speaker 03:
I'm going to start by saying I found your brief really confusing and difficult to follow.

[00:00:50] Speaker 03:
And I hope that you can be clearer about what your contentions are today, because I had a very difficult time following.

[00:00:59] Speaker 00:
I'm sorry about that, Your Honor.

[00:01:00] Speaker 00:
I'll try and clarify now.

[00:01:01] Speaker 00:
So the main point is whether or not the BRI standard was properly applied to the claims pending in the application.

[00:01:09] Speaker 00:
And namely, whether or not the construction of given to two of the terms, the first being traversing, was properly analyzed in a vacuum without consideration of the prosecution history statements, and to a degree, consideration of the surrounding claim language in the claims.

[00:01:31] Speaker 00:
The traversing claim is germane to both claims one and 21, which we've grouped together as the

[00:01:37] Speaker 00:
loop-wire claims, traversing claims, and then there's the cavity claims, of which the word between is of issue.

[00:01:44] Speaker 00:
I wanted to primarily focus on traversing, since that one seems to have the biggest divide between the PTO and us, namely, can the prosecution history be used at all when you have a pending case or ex-party case before the trial appeal board?

[00:02:03] Speaker 00:
And I don't see the law saying that

[00:02:05] Speaker 00:
there should be some outright prohibition against doing such, although it is true that you're able to amend the claims.

[00:02:11] Speaker 00:
Any argument?

[00:02:11] Speaker 03:
You have figure 14C of Eli.

[00:02:16] Speaker 03:
And do you agree that that shows traversing as you think it should properly be defined?

[00:02:22] Speaker 00:
That is correct, Your Honor.

[00:02:24] Speaker 00:
Yes.

[00:02:25] Speaker 03:
So what's wrong with the finding that that anticipates?

[00:02:30] Speaker 00:
Well, figure 14C is not what's being relied upon to show anticipation of

[00:02:34] Speaker 00:
claims 1 and 21 in the progeny.

[00:02:38] Speaker 00:
14C was used to, albeit I guess unsuccessfully, to elucidate what the intent was with the word traversing, namely that there has to be some interception between the loop wire and the housing that holds it so that way it doesn't float freely.

[00:02:54] Speaker 00:
But what has been used otherwise are the other embodiments of Eli that clearly show the rotor and spring and

[00:03:04] Speaker 00:
assembly being fully within the conduit.

[00:03:10] Speaker 03:
So are you saying 14C is irrelevant to the anticipation analysis?

[00:03:15] Speaker 00:
14C was not relied on by the USP, but it was not relied on by the pan examiner to reject the claims.

[00:03:21] Speaker 00:
It was used by the applicant to show what traverse meant.

[00:03:25] Speaker 00:
The applicant went so far as to say that the traverse, the only embodiment of Eli that was relevant to that term was 14C because it did show

[00:03:34] Speaker 00:
a wire going through the housing.

[00:03:37] Speaker 03:
It does show traversing in your view, right?

[00:03:39] Speaker 00:
That's correct.

[00:03:41] Speaker 00:
But the issue with that was, as was explained in the Office Act, the Non-Final Office Action Response of March 12, 2012, was that it seems that the wire there is actually stuck and embedded in the housing such that it could not rotate, which again is another limitation of the claims, that they be rotatively coupled.

[00:03:59] Speaker 00:
So it was there that it seemed clear what traversing meant, but at that

[00:04:03] Speaker 00:
From following from that office action response, the examiner chose not to accept it.

[00:04:10] Speaker 00:
They chose a broader definition.

[00:04:12] Speaker 00:
They said they looked at dictionaries.

[00:04:14] Speaker 00:
There was reference to the language used in the specification to refer to non-mechanical environments, namely electrical.

[00:04:24] Speaker 00:
Electrical environments that use the word traverse to reference current or magnetic field.

[00:04:28] Speaker 00:
And at that point, it ended.

[00:04:29] Speaker 00:
That was the inquiry.

[00:04:30] Speaker 00:
It had always been the argument that, well, listen, the argument that Your Honor Judge Dyck just mentioned about traversing in Figure 14C clearly showed that what was being referred to here.

[00:04:41] Speaker 00:
But as I understand from the response brief is that the PTO doesn't have to consider the prosecution history when you analyze claims on the borough's reasonable interpretation because the application is still amenable to amendment

[00:04:55] Speaker 00:
I don't think that distinction is just.

[00:04:56] Speaker 00:
I don't think even, I mean, Inray Morris doesn't support that proposition.

[00:05:01] Speaker 00:
In that case, that was an ex-party case where this court looked at the prosecution history.

[00:05:07] Speaker 00:
I mean, in fact, the argument is pretty simple that I put forward in the reply is namely that the public can rely on it.

[00:05:14] Speaker 00:
These applications are public.

[00:05:15] Speaker 00:
Anything you say.

[00:05:17] Speaker 00:
In fact, I don't know how a case would issue unless the examiner or the PTO is going to rely on what the representations are about the language or the prior art.

[00:05:25] Speaker 00:
to allow you to be granted the patent.

[00:05:27] Speaker 00:
This is the quid pro quo.

[00:05:29] Speaker 00:
And so essentially, these arguments being made, whether it be ex parte, IPR, re-exam, the prosecution history should always be consulted.

[00:05:37] Speaker 00:
It provides some intel into what exactly is meant by the words being used.

[00:05:43] Speaker 00:
And certainly, the argument that an amendment, the Yamamoto line of cases and its progeny do say yes.

[00:05:48] Speaker 00:
So you have to look at the fact that the ability to amend the claim

[00:05:52] Speaker 00:
does mean you apply broad reasonable interpretation.

[00:05:55] Speaker 00:
But you could also argue the claim as well and provide further elucidation.

[00:05:58] Speaker 00:
So the distinction that you can't apply here just seems very superficial in that I don't think it really helps in the grand scheme of things since the public is going to be analyzing the case for whatever amendments or statements are made by the applicants as the case goes to issuance and is ultimately granted.

[00:06:16] Speaker 00:
So in that vein, I think the traversing limitation

[00:06:20] Speaker 00:
prosecution history certainly is relevant, should have been considered, and in fact is determinative because the prior art cited, Estevez with respect to claim 21, which is a loop wire traversing claim, and Eli, the embodiments just don't show each and every limitation of the claim.

[00:06:38] Speaker 00:
As to the between term that's used in claim 16, which is part of the cavity claims, it's difficult to reconcile the finding that

[00:06:49] Speaker 00:
Eli does not show a loop wire rotatively coupled in a cavity, but yet Estevez does.

[00:06:55] Speaker 00:
I think there it's stated over and again with the word between meant as between the surfaces.

[00:07:02] Speaker 00:
It's understood that the PTAB's position is that you could pick any surface on the structure anywhere and then say, well, if it lies between those two, then you meet the claim limitation.

[00:07:10] Speaker 00:
But it goes back to reasonableness of the construction.

[00:07:14] Speaker 00:
And I think a lot of the cases that are cited here, the in-ray man-machine case is just one.

[00:07:18] Speaker 00:
It really boils down to is the PTAB going to construe the term such that the invention that's thereby claimed is now something that's no longer supported in the specification?

[00:07:30] Speaker 00:
How far can the broadest reasonable interpretation permit the office to go in terms of characterizing the claim?

[00:07:37] Speaker 00:
We certainly, obviously, you want to be able to avoid granting patents that have language that may be indefinite or that may be going too far afield from what is disclosed.

[00:07:48] Speaker 00:
when the patent office is basically seeing that the applicant's telling you what the terms mean, what they mean specifically, that guidance, I think, is instructive and really determinative.

[00:08:00] Speaker 00:
It seemed in this case there just was no heed paid to what the applicant was saying about the language.

[00:08:05] Speaker 00:
And it wasn't to broaden the claim.

[00:08:07] Speaker 00:
It was just to help guide the patent office to figure out why the prior art was not applicable to these claims as drafted.

[00:08:14] Speaker 00:
I mean, there's disclaimers in a litigation context.

[00:08:18] Speaker 00:
I mean, here it was difficult to fathom how the broad reasonable interpretation could have been reasonable.

[00:08:24] Speaker 00:
Albeit broad, but how could it be reasonable when it basically permits a claim construction that can encompass in volumes that were never disclosed?

[00:08:35] Speaker 00:
And that's what the Inray Man machine case mentions as well.

[00:08:39] Speaker 00:
We don't want to go so far afield that the claim has created a new invention ever.

[00:08:45] Speaker 00:
in the specification of the applicant under review.

[00:08:50] Speaker 00:
The next item that presents itself here, and procedurally, the enablement issue with respect to Estevez.

[00:08:58] Speaker 00:
Earlier today we heard about black boxes with respect to damages.

[00:09:01] Speaker 00:
This is a black box patent.

[00:09:03] Speaker 00:
It's a box mark generator with one line or two in the specification of this issue patent.

[00:09:11] Speaker 00:
It says that it refers to a wire coil with a turbine.

[00:09:16] Speaker 00:
It's a DC generator.

[00:09:17] Speaker 00:
And then voila, you have the specific structural requirements of the cavity claims.

[00:09:28] Speaker 00:
There, the real issue is that you can't define one way or another what SFS is really describing in there.

[00:09:34] Speaker 00:
I mean, the box-mark generator could be any number of different structures.

[00:09:39] Speaker 00:
And certainly, it's, you know, the board cited to the fact, I mean, the board seems almost to concede that there's an admonishment in Estevez that, well, it doesn't need to tell you the details because they're well known.

[00:09:57] Speaker 00:
And yes, in Appendix 12, it says, we are also mindful of Estevez's admonishment, C-supra, that, quote, suitable generator 16 are well known.

[00:10:08] Speaker 00:
citation omitted, and hence it appears that there was no need for Estevez to replicate something that was well known.

[00:10:14] Speaker 00:
But that's, you know, Estevez's disclosures don't tell you what generator it does refer to.

[00:10:20] Speaker 00:
Even the brief sentence that mentions the wire, coil, and turbine doesn't tell you, well, how is it arranged?

[00:10:25] Speaker 00:
You know, the claim calls for a first portion, second portion, first portion rotatively coupling, the second portion, the first portion traversing the housing.

[00:10:32] Speaker 00:
The Estevez, and I'm sorry, with respect to claim,

[00:10:38] Speaker 00:
He also talks about a loop wire, you know, routinely coupled within a cavity.

[00:10:45] Speaker 00:
It just, at that point, the question has to be asked, what is Estevez really showing?

[00:10:52] Speaker 00:
It has to be clear.

[00:10:53] Speaker 00:
And I think the clarity and concern that was raised is if in the event Estevez meets the requirements to be a prior art at all,

[00:11:01] Speaker 00:
then you can look at, well, is it clear enough?

[00:11:03] Speaker 00:
Is a not ambiguous prior art reference that shows each and every limitation of the claims.

[00:11:10] Speaker 00:
But before you even get to that to figure out whether it's prior art at all, figure out whether or not, is it enabling?

[00:11:17] Speaker 00:
The legal question of enablement is a review de novo by this court and the factual findings for clear error.

[00:11:23] Speaker 00:
However, the factual findings, really, a lot of it stands unrebutted.

[00:11:28] Speaker 00:
The concern raised by

[00:11:29] Speaker 00:
the PTO about the article that was cited to show that an implantable turbine was made years after the filing date of Estevez.

[00:11:42] Speaker 00:
It was just meant to show that obviously it wasn't constructively reduced to practice.

[00:11:46] Speaker 00:
Whatever was stated there was not enough.

[00:11:48] Speaker 00:
And certainly there was the other surrounding circumstances, the bougie reference and also the disclosure of Estevez itself that just shows you that there was

[00:11:57] Speaker 00:
very little detail provided to allow anyone to make out what, in fact, was being disclosed.

[00:12:01] Speaker 00:
I'm going to reserve the rest of my time for rebuttal, unless there's further questions.

[00:12:05] Speaker 02:
Thank you, Mr. Marco.

[00:12:12] Speaker 02:
Ms.

[00:12:12] Speaker 02:
Nelson?

[00:12:14] Speaker 01:
Good morning, Your Honor.

[00:12:15] Speaker 01:
May I please the court?

[00:12:17] Speaker 01:
I think the problem that we have here and why we are where we are is that the appellants brought in an amendment following the first office action

[00:12:25] Speaker 01:
that introduced language, which is what's disputed here.

[00:12:28] Speaker 01:
And that language is largely untethered from the specification.

[00:12:32] Speaker 01:
And both the examiner and the board dealt with it in different ways, but they were obviously troubled by it.

[00:12:37] Speaker 01:
And the examiner wrote indefinite rejections and said, we don't really know what these terms, surfaces, traversed, and so forth mean in the context of the specification and what's claimed.

[00:12:48] Speaker 01:
The board, on the other hand, said, well, OK, we can understand more or less what these terms mean.

[00:12:53] Speaker 01:
based on their ordinary meaning, dictionaries, and so forth.

[00:12:56] Speaker 01:
But again, given the lack of anything in the specification to really cabin the meaning of these terms, the board and the examiner read them broadly and found that the prior art anticipated the limitations.

[00:13:10] Speaker 01:
Now let me begin with the two that I think are primarily in dispute, and that is traversing.

[00:13:15] Speaker 01:
Of course, before the board, the principal discussion was about indefiniteness, and only once

[00:13:23] Speaker 01:
And that's at 311 of the record did the appellant actually raise the prior art.

[00:13:31] Speaker 01:
And that was in the context of Eli and whether Eli taught traversing.

[00:13:35] Speaker 01:
That's a single sentence on page 311 of the record.

[00:13:38] Speaker 01:
And the board responded to that.

[00:13:40] Speaker 01:
And the board said, and that's at 16 of the record, the board responded and said basically that the rotating portion in Eli is stably connected to

[00:13:52] Speaker 01:
the vessel support structure and cites a support to paragraph 20 of Eli.

[00:13:58] Speaker 01:
And if we look to paragraph 20, which is at 560 of the record, what we learn from Eli is that the rotating portion is stably connected and gives examples of how.

[00:14:10] Speaker 01:
And I submit that one of those is actually what you've observed in one of the figures.

[00:14:15] Speaker 01:
But the three examples it gives is radial insulation

[00:14:19] Speaker 01:
of the rotating portion within the vessel support structure, then it also suggests that the rotating portion can be coupled to the frame such that it actually is located extra-luminally, so it actually has to pass through the vessel support structure.

[00:14:33] Speaker 01:
And then finally, it gives an example at the top of the next column where it describes the rotating portion can be integrated within the vessel support structure's frame.

[00:14:48] Speaker 01:
So I submit that under any construction, so all this, I guess, discussion and even in the reply brief, appellant has a figure where they try to parse between cross and through.

[00:15:03] Speaker 01:
I don't think that, and they showed this figure A as being cross and B as being through.

[00:15:09] Speaker 01:
I don't think there's any indication the board was reading cross to mean like A, which is basically juxtaposed next to the surface.

[00:15:18] Speaker 01:
was clearly interpreting across and through as being synonymous and under any construction.

[00:15:23] Speaker 02:
What about the question of whether the prior art was enabling?

[00:15:27] Speaker 02:
What's the view on that?

[00:15:30] Speaker 01:
The view of the enablement rejection, I mean, the enablement issue is simply that Estevez teaches all of the limitations that are disclosed in claim 16.

[00:15:42] Speaker 01:
And in particular, Estevez describes

[00:15:46] Speaker 01:
each of the limitations of the generator that are claimed in claim 16, and those are even claimed in ESTIVIZ.

[00:15:52] Speaker 01:
If you look to claims, sorry, claims 4, 16, 24, and 35 of ESTIVIZ, they actually recite the exact limitations with respect to the generator and the arrangement of the looped wire within the generator.

[00:16:12] Speaker 01:
that appellant is alleging is not enabled.

[00:16:16] Speaker 01:
Moreover, Estevez talks about generators.

[00:16:20] Speaker 01:
They describe one generator, and they also describe and discuss that many, many generators were well known in the prior art.

[00:16:28] Speaker 01:
And finally, the only rebuttal evidence that appellant has brought forth is a two-page article that is at 319 to 20 of the record.

[00:16:38] Speaker 01:
And all that is in that is simply a discussion of three independent

[00:16:42] Speaker 01:
groups that have actually successfully made these types of implantable devices, and one of which was actually patented a year after Estivus.

[00:16:54] Speaker 01:
And it's the office's position as that is actually evidence that supports enablement and does not in any way show that Estivus is not enabled.

[00:17:09] Speaker 01:
S of S is a patent.

[00:17:10] Speaker 01:
It's entitled to a presumption of enablement, and we see nothing in that rebuttal evidence that would indicate otherwise.

[00:17:18] Speaker 02:
You're saying that we assume it's enabled.

[00:17:20] Speaker 02:
This is a failure of proof?

[00:17:23] Speaker 01:
A failure of proof.

[00:17:24] Speaker 01:
Yes, Judge Newman.

[00:17:27] Speaker 01:
And if I may briefly touch on the other issue, which is the cavity between the interior and exterior surfaces.

[00:17:36] Speaker 01:
The board cited

[00:17:37] Speaker 01:
several pieces of evidence in Estevez.

[00:17:40] Speaker 01:
And again, we find nothing really in the specification, and I'll turn to their specification in a minute, but we find nothing in their specification that really gives us a good sense of where the interior exterior surfaces are and where the cavity is.

[00:17:54] Speaker 01:
And so, given that, the board read it broadly, and they found within Estevez three different pieces of evidence.

[00:18:02] Speaker 01:
One is at column one, line 63 to 64.

[00:18:07] Speaker 01:
where Estevez discusses the generator being coupled between an inner portion and an outer portion, suggesting it's between some sort of inner and outer surface.

[00:18:19] Speaker 01:
Column three then talks about a coupler, 28, that houses the generator, and that is depicted on figure one.

[00:18:28] Speaker 01:
And as you can see from figure one, the coupler actually goes around and encircles the generator

[00:18:37] Speaker 01:
and the board fairly viewed one wall at the top of the figure as being the exterior wall and one wall at the bottom as being the interior surface or alternatively you could even look at the left wall as being an exterior surface and there are other walls that come in from the right hand side of the figure and end and the surfaces on the ends of those that abut are on the interior side of the generator.

[00:19:01] Speaker 01:
So there was actually

[00:19:03] Speaker 01:
That was a fair reading of Estevez.

[00:19:05] Speaker 01:
And frankly, if you look to their own specification, as much as Appellan has argued that the board was wrong and should have read, should have looked for and or expected the generator to be between or within the wall, between inside the wall, if you actually look to figure 1A of their own specification, where we see the cavity is labeled as C and the wires within that, and that is similarly

[00:19:32] Speaker 01:
situated in the middle of the device, away from the tissue surface, and so that was consistent.

[00:19:40] Speaker 01:
The board's interpretation of esophage was fully consistent with how the term is used in the specification.

[00:19:47] Speaker 03:
If there are no additional questions, I... Where do I find paragraph 20 of E-Line?

[00:19:52] Speaker 03:
What page is that?

[00:19:53] Speaker 01:
I'm sorry.

[00:19:53] Speaker 01:
That is at page 560 of the record, and it begins at the bottom left-hand column.

[00:19:59] Speaker 01:
and continues on to the top of column two.

[00:20:12] Speaker 03:
And where is that?

[00:20:13] Speaker 03:
That doesn't specifically refer to figure 14C, right?

[00:20:17] Speaker 01:
It doesn't, but I think it's fair to understand when it's talking about the rotating portion

[00:20:26] Speaker 01:
at least one example where the rotating portion is located extra-luminally.

[00:20:34] Speaker 01:
And on 14C, we see some of those where it's showing the rotating portion extending outside of the vessel support structure.

[00:20:45] Speaker 03:
And where does the board refer to paragraph 20 of your line?

[00:20:48] Speaker 01:
It's on page 16 of the record.

[00:20:52] Speaker 01:
And again,

[00:20:53] Speaker 01:
they only made a single page argument, single sentence argument, but I'm sorry.

[00:21:00] Speaker 03:
I see, I see where it is.

[00:21:01] Speaker 03:
Okay, thank you.

[00:21:01] Speaker 01:
Yes, it says it's stably connected and they cite to Paragraph 20.

[00:21:06] Speaker 01:
There are no additional questions.

[00:21:08] Speaker 02:
Any more questions?

[00:21:10] Speaker 02:
No questions.

[00:21:10] Speaker 01:
Thank you.

[00:21:11] Speaker 01:
Thank you, Your Honors.

[00:21:11] Speaker 02:
Mr. Farco.

[00:21:18] Speaker 00:
So addressing first the Eli disclosure of Paragraph 20

[00:21:23] Speaker 00:
The embodiments in Appendix 555 do show some of these other arrangements of how the structures are extra-luminal or intra-luminal and how they are included within the, how they are attached to the support structure.

[00:21:38] Speaker 00:
And 14C, of course, was the one on which applicant had relied.

[00:21:42] Speaker 00:
The disclosure in Paragraph 20 don't elucidate what, you know, does not elucidate the claim language of the,

[00:21:51] Speaker 00:
of the traversing claims is being met because, again, the rotating structure in Eli is, and sometimes it's a continuous ring, other times it's just a bunch of, they call them blades.

[00:22:07] Speaker 00:
These blades are in the fluid because they will interact with the fluid and thereby rotate.

[00:22:11] Speaker 00:
Or, again, in 14B it seems to be, you know, the numeral 1914 is showing one that's a blade that's extra-luminal.

[00:22:18] Speaker 00:
The point is

[00:22:19] Speaker 00:
that the claims that are the claims and applicants application are directed to situations such as 1924 in figure 14C is where the wire itself rotatively couples itself to the structure or housing.

[00:22:38] Speaker 00:
Again, Eli's, all of Eli's and Bion's talk about some sort of extension, be it a spring or a

[00:22:45] Speaker 00:
some sort of other cylindrical device that holds a rotor and then from the rotor extends these blades.

[00:22:50] Speaker 00:
The problem with that is that the claims call for a loop wire and that the wire is rotatively coupled in the cavity.

[00:22:58] Speaker 00:
It doesn't say that the wire is coupled via rotor or via some other means.

[00:23:03] Speaker 00:
So the wire itself, and this has been again made out, made very plain over and again in the appeal briefing.

[00:23:10] Speaker 00:
with respect to traverse and even with respect to the between language that the claim is calling for a loop wire that's going through at least one of the surfaces in the housing and then it's being lodged in the cavity.

[00:23:23] Speaker 00:
The reference to figure one of the application in that embodiment does show a cavity.

[00:23:35] Speaker 00:
That is true.

[00:23:35] Speaker 00:
But the cavity there is again located in

[00:23:39] Speaker 00:
The housing is generally denoted seven in all the figures.

[00:23:43] Speaker 00:
So I think I could, so in figure 1A, appendix 92, this, the cavity C is not, is not contrary to what's been advocated here.

[00:24:00] Speaker 00:
Namely, the cavity exists in the structure that holds the, that's implanted in the device.

[00:24:06] Speaker 00:
So it's, again, the question is, does between allow you to pick any surfaces that one wishes and then say, well, hey, there's the cavity.

[00:24:15] Speaker 00:
The problem, of course, is that the board already agreed with the appellant's construction of interior surface.

[00:24:23] Speaker 00:
It's the interior, this is on page 26 of the brief, but it's also in appendix seven, where the PTAB agreed with the appellant's interpretation of the terms to overcome the indefiniteness requirement, where the internal surface and the exterior surface are

[00:24:36] Speaker 00:
actually defined in terms of their proximity to the fluid.

[00:24:40] Speaker 00:
So and then further with respect to Estevez, the record does show other evidence beyond just the article.

[00:24:48] Speaker 00:
There's the booze references relied on to show what is in fact expected to show what an implantable generation would appear like.

[00:24:55] Speaker 00:
And I see my time is up, so if there's any further questions, I'll just close those.

[00:25:00] Speaker 02:
Any questions here, Mr. Franklin?

[00:25:01] Speaker 02:
Any questions?

[00:25:01] Speaker 02:
Thank you.

[00:25:02] Speaker 02:
Thank you, your honor.

[00:25:03] Speaker 02:
The case is taken into submission.

[00:25:07] Speaker 02:
That concludes the arguments for this session of this panel.

[00:25:13] Speaker 01:
All rise.

[00:25:16] Speaker 01:
The honorable court is adjourned until tomorrow morning.

[00:25:19] Speaker 01:
It's an o'clock a.m.