[00:00:00] Speaker 00:
The next case for argument is 17-2106.

[00:00:04] Speaker 00:
Aligned technology versus clear.

[00:00:53] Speaker 03:
Good morning, Your Honors.

[00:00:57] Speaker 03:
May it please the Court, William Jay on behalf of the Appellant, Align Technology.

[00:01:01] Speaker 03:
Align's very successful invention is directed to... Mr. Jay, can I interrupt you and talk?

[00:01:05] Speaker 05:
I need to have some preliminaries about case or controversy.

[00:01:14] Speaker 05:
So my understanding is that Align has not sued clear correct on this patent.

[00:01:22] Speaker 05:
Is that right?

[00:01:23] Speaker 05:
That is right.

[00:01:25] Speaker 05:
That leaves me wondering why there is a case or controversy even for you coming to this court with no adversary except clear correct, not the director as an intervener, to challenge the unpatentability ruling of the board.

[00:01:46] Speaker 05:
And part of what I'm

[00:01:48] Speaker 05:
thinking about is what the Supreme Court did a couple of months ago in the PNC against secure access case, in which the court concluded that because the PNC petitioners did not have a case or controversy with secure access as to the then at issue claim 24, which had never been asserted against them, that

[00:02:15] Speaker 05:
that any dispute that did exist was moot and ordered, not only vacated our decision, but ordered that the board's decision would be vacated.

[00:02:27] Speaker 05:
I guess, so I'm trying to understand why without, unless you tell me something more about a prospective dispute, even a backward looking one on this expired patent between a line and clear correct, why there's a case of controversy and

[00:02:43] Speaker 05:
If not, why we shouldn't vacate the board decision on that.

[00:02:48] Speaker 03:
So we think that there is a lot of controversy, primarily for the reason that we are the patent owner, the patent has been canceled, and the time for us to assert past infringement during the lifetime of the patent has not yet run.

[00:03:01] Speaker 05:
That was true, as I understand it, in secure access as well.

[00:03:05] Speaker 05:
In fact, I don't even think that was an expired patent.

[00:03:10] Speaker 03:
OK.

[00:03:11] Speaker 03:
But in that case, the

[00:03:13] Speaker 03:
petitioner that lacked a continuing stake in the case was the CBM challenger, the entity challenging the patent.

[00:03:26] Speaker 05:
Clear correct here.

[00:03:27] Speaker 03:
That's correct, but here we are the appellant.

[00:03:30] Speaker 05:
I'm sorry, Secure Access was the appellant in this court in that case as well.

[00:03:35] Speaker 03:
That's true.

[00:03:36] Speaker 03:
Secure Access was the appellant, but by the time the case got to the Supreme Court, of course PNC was the petitioner.

[00:03:43] Speaker 05:
It was PNC that lacked a, the court concluded lacked a continuing stake in the... Because there was no dispute between Secure Access and PNC, no concrete dispute, which in fact was always the case apparently as to claim 24, but certainly was after all the other claims were invalidated and the infringement suit was dropped with prejudice.

[00:04:07] Speaker 05:
Here, again, we start with a record in which, as I understand it,

[00:04:12] Speaker 05:
You have never sued them on this patent.

[00:04:16] Speaker 05:
The patent is expired.

[00:04:17] Speaker 05:
And unless you have some, I don't know what the right language is, reasonable likelihood of suing them for their past activities, I'm not sure why there's a case of controversy here if there wasn't in secure access.

[00:04:36] Speaker 05:
I'm going to drop the subject.

[00:04:40] Speaker 03:
Obviously, it's an important and threshold question, and I want to give the court as complete an answer as I can.

[00:04:45] Speaker 03:
We have asserted other patents in this family against ClearCorrect.

[00:04:48] Speaker 03:
That litigation is currently pending in the Southern District of Texas.

[00:04:51] Speaker 03:
A trial date has been scheduled.

[00:04:54] Speaker 03:
If the court were to vacate the decision of the board as moot, which would have the effect of having our

[00:05:04] Speaker 03:
patent claims not canceled in accordance with the board's decision.

[00:05:11] Speaker 03:
We obviously have no attachment to the board's decision.

[00:05:14] Speaker 03:
However, it would produce a strange result if the next day we were to assert the patent against ClearCorrect, and ClearCorrect, I suspect, would say, wait a minute, what happened to the board decision?

[00:05:27] Speaker 05:
I guess I'll say one of the oddities, obviously, of coming to this court on appeal

[00:05:32] Speaker 05:
in comparison to filing in district court is that we don't have what you would have in district court, which is a factual allegation and a complaint asserting that basis for a case or controversy.

[00:05:44] Speaker 03:
That's true.

[00:05:44] Speaker 03:
But what you do have, and I think the closest analogy is to the Supreme Court's decision in a Sarko versus Kadesh, which is, I'm not sure why that was different insecure access though.

[00:05:55] Speaker 03:
Perhaps, perhaps not.

[00:05:57] Speaker 03:
But we, of course, don't know for sure what happened or what motivated the court in secure access, because it's a summary Munsingware order without a reasoned explanation given by the court.

[00:06:09] Speaker 03:
But I think that a Sarko is the analogy that I would make here, because our dispute, whether the director has intervened or not, our dispute is with the director, in addition to whatever dispute we have with ClearCorrect.

[00:06:26] Speaker 04:
The line hasn't filed a lawsuit on this patent against clear correct, along with all the other related patents that it's already filed lawsuits against.

[00:06:35] Speaker 03:
Not one that I can share with the court, I don't think.

[00:06:41] Speaker 03:
What I can say is that the wording of different patents and different claims in the family are different in some ways.

[00:06:46] Speaker 03:
And so the issues presented in the district court litigation at the moment are different.

[00:06:55] Speaker 03:
I appreciate that, Your Honor.

[00:06:58] Speaker 03:
So the board, we think, committed three clear errors.

[00:07:00] Speaker 03:
And they really all come from the basic nature of the invention in this case, which is the providing digital data that could manufacture all of the appliances beginning, middle, and end at the outset of treatment.

[00:07:14] Speaker 03:
And so the board concluded that that providing limitation is in the prior art.

[00:07:20] Speaker 03:
It got it out of the snow reference.

[00:07:22] Speaker 03:
But that was incorrect because it was equating the movement of actual teeth in the patent here with the generic all roads lead to Rome animation in snow.

[00:07:33] Speaker 03:
Second, it concluded, or it acknowledged as it had to, that a device based on generic teeth would not fit the way that Invisalign aligners do.

[00:07:44] Speaker 03:
But then it attributed the motivation to make this combination, this obviousness combination,

[00:07:51] Speaker 03:
with the desire to make a more precise aligner.

[00:07:54] Speaker 03:
That reasoning is incoherent.

[00:07:56] Speaker 03:
And finally.

[00:07:56] Speaker 00:
Can we talk about that in terms of motion to combine is a difficult issue.

[00:08:01] Speaker 00:
So can we go back to the board's discussion of the reasons to combine, which does extend over four or five pages or six or seven, and tell me if you can identify with some specificity what they're real, if there's any sort of real problems you can point to in terms of their analysis.

[00:08:21] Speaker 03:
So I think the nub of the analysis is at 38 to 39 of the appendix, the summary paragraph at the end of that.

[00:08:29] Speaker 03:
And it concludes that there'd be a reason to make this combination to replace Kessling's labor intensive process with a computerized process, resulting in labor cost savings and resulting in modeling of more precise teeth movement.

[00:08:43] Speaker 03:
But that's exactly what Snow doesn't provide and what the reasoning that the board has just used in concluding that Snow discloses the relevant limitation of these claims.

[00:08:56] Speaker 03:
The board had said, oh, it doesn't matter because a generic device will do.

[00:09:02] Speaker 03:
I'd like to explain why that was incorrect as well.

[00:09:05] Speaker 03:
But that really is the nub of our disagreement, that there's no evidence in the record whatsoever

[00:09:10] Speaker 03:
to assert that there is a motivation to make generic aligners, which, as Dr. Martz testified, are one-shot devices.

[00:09:19] Speaker 03:
They aren't going to be a plurality of devices.

[00:09:21] Speaker 04:
Can I just clarify something?

[00:09:22] Speaker 04:
You said no motivation to make generic aligners.

[00:09:26] Speaker 04:
And I understood the board's theory here to be to make a retainer or a positioner, and not necessarily an aligner like Invisalign's

[00:09:38] Speaker 04:
aligner that goes over the teeth.

[00:09:40] Speaker 04:
And so therefore, with an aligner, with an appliance like that, you need very precise information about all the individual teeth.

[00:09:49] Speaker 04:
Whereas with the retainer, you don't necessarily, I don't think, need to know all the information about a patient's

[00:09:57] Speaker 04:
teeth shapes.

[00:09:59] Speaker 04:
I'd like you to talk about that.

[00:10:00] Speaker 03:
That's a very important point, and you're correct that that's what the board said, and it is incorrect.

[00:10:05] Speaker 03:
I mean, it is not based on any substantial evidence.

[00:10:08] Speaker 03:
And what I'd like to point the court to is the one piece of evidence on which the board relied for that very important conclusion, which is the 139 patent.

[00:10:17] Speaker 03:
The 139 patent is cited at page 15 without any pin site.

[00:10:20] Speaker 03:
It's sort of a general citation.

[00:10:24] Speaker 03:
But the 139 patent, which is building retainers, yes, but it's building them out of hardened material.

[00:10:30] Speaker 03:
And several of the teeth, the anchoring teeth, the portion of the retainer that's called the splint, those fit closely around the anchoring teeth, the teeth in the back of the mouth.

[00:10:42] Speaker 03:
And the patent says five or six times that this is a closely fitted device.

[00:10:47] Speaker 03:
So it's just simply not correct to say that retainers don't involve a closed fit.

[00:10:51] Speaker 04:
Well, there's something else in the 139 patent that I think the board may have focused on that talked about something less than this closely fitting notion that you're referring to.

[00:11:03] Speaker 03:
There's one stray sentence which the other side quotes in its brief to this court.

[00:11:08] Speaker 03:
But if you read the very next sentence in the 139 patent,

[00:11:11] Speaker 03:
that comes after that sentence, you will see that it is once again talking about the need for the splint portion of the retainer to be closely fitted around the teeth.

[00:11:21] Speaker 03:
Because those teeth, the teeth that are already in the right position, those are the anchors.

[00:11:27] Speaker 03:
They provide the anchoring against which the force is asserted against the teeth that are going to move.

[00:11:32] Speaker 03:
So you have to have a close and tight fit.

[00:11:37] Speaker 04:
Did you make this particularized argument about what the 139 patent said in your patent owner response below to the patent board?

[00:11:46] Speaker 04:
My understanding is the patent board seemed to think that your arguments were predicated on making an aligner, making an Invisalign type aligner and not these other things like a retainer, for example.

[00:11:59] Speaker 04:
And so now you're telling me, well, no, actually the retainer has all these other

[00:12:03] Speaker 04:
issues too and look at all this interesting information in the 139 package.

[00:12:09] Speaker 03:
I want to be clear.

[00:12:09] Speaker 03:
There is evidence in the record from Dr. Martz about something that he described it as rubbier or rubberier that is not a retainer.

[00:12:19] Speaker 03:
It's something generic and off the shelf.

[00:12:22] Speaker 03:
He says he's never used them and they're not ideal.

[00:12:25] Speaker 03:
And so they exist.

[00:12:27] Speaker 03:
But our point with respect to that device is that there is no motivation to make it or anything like it.

[00:12:32] Speaker 03:
And it can't be used in seriatim, which is the nature of this invention, a plurality of data sets, a plurality of appliances provided at the outset of treatment.

[00:12:42] Speaker 03:
You can't do that with a generic device.

[00:12:44] Speaker 03:
Now retainers, our patent does say that a retainer can be one of the appliances used with it.

[00:12:50] Speaker 03:
And this is the point that I want to clarify, that when our patent says that, it does not mean some kind of rubbery device bought off the shelf.

[00:12:57] Speaker 03:
It means a custom-fitted retainer as in the 139 patent.

[00:13:01] Speaker 03:
which is cited as a background art in our patent.

[00:13:04] Speaker 03:
So that's really the mistake that the board made, that it thought that these claims could be practiced with this quite generic device.

[00:13:14] Speaker 04:
But... But Snow does talk about designing datasets that are based on the orientation of a patient's teeth.

[00:13:24] Speaker 04:
It talks about scaling the

[00:13:27] Speaker 04:
the default model up in terms of the sizing of the individual teeth.

[00:13:31] Speaker 04:
I think it also even talks about scaling of the jaw size as well.

[00:13:36] Speaker 04:
And so really the only thing that's missing in terms of, as I can understand it, in terms of what you're thinking you need is the particular shapes of all the individual patient teeth.

[00:13:49] Speaker 04:
And so I'm trying to figure out why is it, what is it from, say, your expert

[00:13:56] Speaker 04:
that makes it clear that if you don't know the shape of the teeth, you couldn't possibly build a retainer out of that.

[00:14:03] Speaker 03:
Sure.

[00:14:03] Speaker 03:
So we have a couple of important points there.

[00:14:08] Speaker 03:
That's what you start with in snow.

[00:14:12] Speaker 03:
You're still missing shape, but you have, as your question indicated, you have orientation and you have an approximation of size.

[00:14:20] Speaker 03:
But that's only the initial arrangement.

[00:14:22] Speaker 03:
As you animate snow and you go

[00:14:25] Speaker 03:
to roam as every single snow animation ends up in the same place.

[00:14:29] Speaker 03:
The teeth begin to morph into the final animation, which is the same for every single patient.

[00:14:35] Speaker 03:
So what you don't have is intermediate steps that actually look like the treatment steps.

[00:14:40] Speaker 03:
And you don't have a final tooth arrangement that looks like the treatment destination for any actual patient.

[00:14:47] Speaker 05:
Can I ask you this?

[00:14:49] Speaker 05:
One of the things that I guess I still am not clear about is it's one thing to say,

[00:14:55] Speaker 05:
that close fitting in the sense of reflecting individual tooth shape is required.

[00:15:02] Speaker 05:
And it's another thing to say that there has to be a representation of an actual patient's set of teeth, which doesn't by itself require the shape.

[00:15:14] Speaker 05:
It might well be limited to position and orientation for an individual patient.

[00:15:22] Speaker 05:
And I've been struggling to understand

[00:15:25] Speaker 05:
how much of your argument is dependent on a conclusion that the representation has to look like shape, has to reflect actual shape, the curves of the top of the teeth and so on.

[00:15:40] Speaker 03:
That is part of our argument.

[00:15:41] Speaker 03:
I would not say that our argument depends on it.

[00:15:43] Speaker 03:
Let me break it apart in these ways.

[00:15:45] Speaker 03:
Snow does not disclose the treatment steps, the intermediate or final positions for an individual patient, even if you assume that we are wrong about everything in your question just now.

[00:15:56] Speaker 05:
Let me continue on that for a second.

[00:16:01] Speaker 05:
In footnote 10, page 829 of the appendix, the board says, almost as an afterthought, but there it is,

[00:16:09] Speaker 05:
that there is evidence, and here I'm going to focus on Ma paragraph 93, which it doesn't cite directly, but is cited in Petition page 17 at 135, citing over to 1828.

[00:16:23] Speaker 05:
That paragraph of Ma seems to assert that you can read snow as, and I'm going to put it this way, stopping short of the standard model in the sequence.

[00:16:40] Speaker 05:
And if you read it as stopping short, then all steps short of the last step are individualized, at least in a sense, in a sense in which the final full sequence is not individualized.

[00:16:57] Speaker 03:
So Ma does say that.

[00:17:00] Speaker 03:
The board did not credit it, of course, as your question recognized.

[00:17:04] Speaker 05:
Well, I'm not sure it didn't.

[00:17:05] Speaker 05:
By citing Petition Page 17, which is A135,

[00:17:09] Speaker 05:
which relies on both Ma 93 and Martz 42.

[00:17:14] Speaker 03:
Why didn't the board credit that?

[00:17:16] Speaker 03:
I think that the best reading is because the board comes back to Martz 42, but never mentions this aspect of Ma.

[00:17:25] Speaker 03:
I think it seems clear to us that it was getting this out of paragraph 42 of Martz, which as we've said in our brief, simply does not support this.

[00:17:33] Speaker 03:
Dr. Martz did not say in his declaration.

[00:17:36] Speaker 05:
Put aside Martz, though.

[00:17:37] Speaker 05:
Ma seems to meet.

[00:17:39] Speaker 05:
And a minimum closer to supporting it.

[00:17:41] Speaker 03:
Sure.

[00:17:42] Speaker 03:
And if you assume that the ward had credited MAH, it still would not be substantial evidence because we think it is a plain misreading of SNO.

[00:17:53] Speaker 05:
But the second position there is the final position.

[00:17:57] Speaker 03:
You can't read it any other way.

[00:17:58] Speaker 03:
Right.

[00:17:58] Speaker 03:
The idealized second position in SNO is the same for every male patient, and it is the same for every female patient.

[00:18:06] Speaker 03:
Those are the only variants.

[00:18:07] Speaker 03:
There's one standard.

[00:18:09] Speaker 03:
mouth for male patients.

[00:18:11] Speaker 03:
There's one standard for female patients.

[00:18:14] Speaker 03:
And what I took the board to be saying in footnote 10 is that if you just took one of the random stops along the way, so that... Not random.

[00:18:26] Speaker 03:
Well, they are arbitrary.

[00:18:28] Speaker 03:
They do not in any way correspond to real-world considerations like tooth collision.

[00:18:32] Speaker 05:
Interpolations from the individual model to get back to the generic model.

[00:18:36] Speaker 03:
Yes, that's right.

[00:18:38] Speaker 03:
You plot a course as the crow flies to this generic model and then you divide it up into a certain number of segments that are exactly the same distance apart.

[00:18:47] Speaker 03:
They're just mile markers.

[00:18:49] Speaker 03:
They don't reflect any actual real world tooth collisions, the rotation of some teeth faster than others, the length of the

[00:18:57] Speaker 03:
of the route which Dr. Martz acknowledged was a consideration in how fast you could do tooth movement, the amount of jaw bone.

[00:19:06] Speaker 03:
There are all kinds of considerations that in a real-world treatment case, they can be factored into a lines model but cannot be... But Snow says not only is this useful for

[00:19:19] Speaker 05:
you know, smaller filing cabinets, right, for record keeping.

[00:19:22] Speaker 05:
Yes.

[00:19:23] Speaker 05:
But also for, was it treatment planning or something?

[00:19:27] Speaker 03:
So he has two references to treatment planning.

[00:19:29] Speaker 03:
And I think that they are both fairly read as talking about the initial, essentially the patient record before it is animated.

[00:19:37] Speaker 03:
And here's what I mean by that.

[00:19:39] Speaker 03:
Number one, he talks about braces.

[00:19:41] Speaker 03:
Now, this is not an obviousness combination about braces.

[00:19:44] Speaker 03:
But if you were talking about braces, we think that what Snow is talking about

[00:19:48] Speaker 03:
and I believe this is in column five at the bottom, he's talking about using the individualized 3D record, which is the patient's alignment, but the generic... But I thought the crucial stuff in SNOW was column four starting around line seven or so.

[00:20:06] Speaker 03:
So you mean the thing about the jaw sensors, which starts at 29 or... No, no, no, no.

[00:20:10] Speaker 05:
Column four, about new use, utilize of treatment planning to produce an improved form of treatment planning.

[00:20:17] Speaker 05:
with the interpolated steps.

[00:20:20] Speaker 03:
Right, but this is not what the board relied on.

[00:20:24] Speaker 03:
What the board got out of snow is actually further down having to do with the position sensors attached to the jaws.

[00:20:31] Speaker 03:
And it is true that

[00:20:32] Speaker 03:
Snow suggested that you could, this is starting at line 29, this is what you could use, you can attach sensors to the jaws so that the model can better depict the movement of the jaws, but it never integrates that with the actual planning of the orthodontic treatment.

[00:20:49] Speaker 03:
So you can animate the jaws moving up and down the way the patient's jaws move up and down, but what you never get out of this patent is animating the movement of the teeth in any non-generic way, anything other than all roads lead to Rome.

[00:21:01] Speaker 03:
So that's our response on column four.

[00:21:07] Speaker 04:
Is there a dispute over whether there are going to be some instances for some patients where you can, by using linear interpolation, help a patient achieve straight teeth?

[00:21:20] Speaker 03:
I don't think there's any doubt that sometimes

[00:21:23] Speaker 03:
for a particular tooth, the distance between two points is going to be a straight line.

[00:21:29] Speaker 03:
But the point is that when you are providing a plurality of orthodontic appliances at the outset of treatment, so you're providing all of the data sets and all of the appliances before you begin treatment,

[00:21:42] Speaker 03:
I don't think that there is any evidence in the records suggesting that you could do straight linear interpolation even to the final treatment goal.

[00:21:50] Speaker 03:
And of course, it is not the final treatment goal that's in snow.

[00:21:53] Speaker 03:
It's the generic smile that's the same for all adult patients.

[00:21:59] Speaker 04:
That takes us to what final arrangement for an individual patient means.

[00:22:05] Speaker 04:
If arrangement just means orientation of the individual teeth,

[00:22:11] Speaker 04:
patients.

[00:22:14] Speaker 04:
Why wouldn't that default model with straight teeth be an acceptable and appropriate final arrangement, final orientation for any patient?

[00:22:29] Speaker 03:
If you were jotting down just a series of angles and rotations on a card, you know, conceivably, but what you're doing is actually modeling the mouth and part of the mouth as Dr. Martz agreed at page 6913

[00:22:41] Speaker 03:
when you're modeling the mouth, one of the factors that you must take into consideration is the size of the patient's teeth.

[00:22:47] Speaker 03:
And in addition to that, there is variation in the shape of the patient's teeth that might or might not be reflected in the final treatment, but is absolutely going to be reflected in how you get there, because the size and shape of the patient's teeth affect when the teeth are going to collide.

[00:23:01] Speaker 03:
And the collision of teeth is the primary consideration that causes you to deviate from linear interpolation.

[00:23:07] Speaker 03:
and steer some teeth in some directions and some in others so that the teeth don't collide.

[00:23:11] Speaker 03:
Whereas snow simply assumes that away and in the snow animation you would witness the teeth sort of, you know, transparently pass through each other.

[00:23:20] Speaker 03:
How do we know that?

[00:23:22] Speaker 03:
I think if you read snow you see that it is an animation that refers to where you start and where you end.

[00:23:32] Speaker 03:
It doesn't take any account of where the

[00:23:36] Speaker 03:
teeth are in the intermediate positions, except to divide by whatever number of interpolation steps you put in.

[00:23:42] Speaker 03:
So if the top teeth and the bottom teeth overlap to some degree, and you're going from an underbite to an overbite, then necessarily the teeth have to pass through each other in this interpolation.

[00:23:53] Speaker 03:
Of course, that's not how actual dental treatment would work.

[00:23:57] Speaker 03:
And that, I think, is why we think it's not reflective of the claimed limitation.

[00:24:02] Speaker 03:
I thank the court very much.

[00:24:25] Speaker 05:
Mr. McCaig, would you mind starting with this case or controversy question to the extent?

[00:24:31] Speaker 01:
Sure.

[00:24:32] Speaker 01:
Good morning.

[00:24:32] Speaker 01:
May it please the court?

[00:24:33] Speaker 01:
Scott McEwen on behalf of APILLA.

[00:24:35] Speaker 01:
I am joined today by Catherine Thornton.

[00:24:38] Speaker 01:
As to jurisdiction, I would submit the clear correct is here today under what I would generally call the piggyback standing under EFF, Electronic Frontier Foundation, is that

[00:24:52] Speaker 01:
presumably clear correct, is making a case for jurisdiction here today.

[00:24:56] Speaker 01:
If they have it, then we should have it as well, is my understanding of some of the decisions in the earlier case, case law on point.

[00:25:08] Speaker 01:
I can't really speak to their position.

[00:25:11] Speaker 05:
Do you have anything that you can say on this question, whether

[00:25:15] Speaker 05:
I don't know how to put it this way, clear correct feels threatened by a line about being sued under this patent, this now expired patent for its past activities.

[00:25:27] Speaker 01:
Sure.

[00:25:27] Speaker 01:
I guess the only thing I could say on the record is that there has been an ongoing dispute between the companies involving the vast majority of the portfolio.

[00:25:36] Speaker 01:
This patent, the 037 patent has been recently asserted against others.

[00:25:42] Speaker 01:
It's directly related.

[00:25:44] Speaker 01:
It's a child patent of the 325 patent, which has been asserted and is being asserted.

[00:25:51] Speaker 01:
So I guess that's probably the most I can say about that issue.

[00:25:59] Speaker 00:
This patent has, there's ongoing litigation with respect to this patent.

[00:26:03] Speaker 01:
And other companies in the space.

[00:26:07] Speaker 05:
I thought there was one that was

[00:26:10] Speaker 05:
I guess I'm remembering one was brought but dismissed without prejudice.

[00:26:14] Speaker 05:
I'm not remembering another.

[00:26:15] Speaker 01:
You may be correct.

[00:26:17] Speaker 01:
My recollection is that the 037 patent was at least asserted against smile direct.

[00:26:22] Speaker 01:
I think that was the one that was dismissed.

[00:26:24] Speaker 01:
If that was dismissed, okay.

[00:26:25] Speaker 01:
But it has been asserted recently within the last year and a half.

[00:26:30] Speaker 01:
And it was dismissed because of what the board has done here?

[00:26:35] Speaker 01:
I'm not aware of why it was dismissed.

[00:26:38] Speaker 01:
We're not a party to that litigation.

[00:26:40] Speaker 01:
But getting back to the merits, the 037 claims are not directed to aligners.

[00:26:47] Speaker 01:
They're certainly not directed to Invisalign brand aligners.

[00:26:51] Speaker 01:
So a lot of what you see in the briefing is the argument that it doesn't fit and based upon clear corrects witness testimony, but that's all specific to Invisalign aligners.

[00:27:01] Speaker 01:
These claims are directed to manufacturing dental appliances and they specifically describe

[00:27:07] Speaker 01:
those appliances as encompassing positioners, retainers, basically everything that was available when this patent was filed.

[00:27:15] Speaker 04:
How do we know all of their arguments are directed specifically and solely to Invisalign aligners?

[00:27:23] Speaker 04:
I thought I saw something somewhere, perhaps in their patent owner response, that there would be no motivation to use Snow's digital data sets to make any appliance.

[00:27:36] Speaker 01:
Correct, but that's a little bit of a mischaracterization of what the motivation is.

[00:27:40] Speaker 01:
So the motivation, there's essentially two motivations to combine for the ground, one of which is, well, if Kessling is making manual appliances, it's obvious to automate that and computerize it.

[00:27:52] Speaker 01:
So that's number one, and that's not really addressed in the briefing.

[00:27:55] Speaker 01:
What they focus on is number two, which was the argument of, well, you could make Kessling's appliances with more precision, meaning

[00:28:04] Speaker 01:
If you take a manual process and you computerize it, those formerly manually made devices will be more precise by virtue of the computerized data.

[00:28:16] Speaker 04:
Is that the rationale the board actually adopted?

[00:28:19] Speaker 04:
Because my understanding is it wasn't this kind of more broader look at trying to merely computerize what was being done manually in Kessling.

[00:28:29] Speaker 04:
It was more trying to understand and apply

[00:28:33] Speaker 04:
Snow's particular disclosed practice to make appliances per Kessling.

[00:28:39] Speaker 04:
And so if we're on that playing field, then we have to study the issue a little more closely than this broader

[00:28:46] Speaker 04:
30,000 foot high kind of enclosure.

[00:28:49] Speaker 01:
Sure.

[00:28:49] Speaker 01:
I guess I would respectfully disagree that I believe that was what was presented in the petition as to precision between manually made appliances as to computer.

[00:28:58] Speaker 01:
But even if we were to go down this road on precision, it all comes back

[00:29:04] Speaker 01:
to this ultimate argument about, well, you can't make aligners, right, because you need the specific tooth shape.

[00:29:11] Speaker 01:
I mean, that's where, when you look at what they're saying about precision, it all comes back to, well, you don't have the tooth shape, and therefore, when you use snow, it wouldn't work for aligners.

[00:29:22] Speaker 01:
But what we've said in the briefing, and this gets to that point on the 139 patent, and the 139 patents incorporated, I should say, is referenced right in the background section, that's a position.

[00:29:34] Speaker 01:
And the citations that are in the briefing and that my friend just pointed out are directed to the splint.

[00:29:40] Speaker 01:
So the splint adheres to your teeth.

[00:29:42] Speaker 01:
It's sort of in complementary relation to the roof of your mouth.

[00:29:46] Speaker 01:
And it pushes what the 139 patent describes as a mouth guard.

[00:29:52] Speaker 01:
So the mouth guard is the positioner.

[00:29:54] Speaker 01:
And so that mouth guard is not adapted to any specific shapes.

[00:29:58] Speaker 01:
In fact, the reason you need the splint is to keep it in your mouth.

[00:30:02] Speaker 01:
So if it was

[00:30:03] Speaker 01:
precision gripping on your teeth, you wouldn't need the splint in the first place.

[00:30:08] Speaker 01:
So the citations to that patent, again, that they're trying to distinguish over what the board was pointing to and what they adopted from our briefing is, well this is a positioner, it's just like a mouth guard, you put it in there and you rely on the splint pushing up against it to deform the plastic and then the forces on the teeth are from the deformation.

[00:30:29] Speaker 01:
So it's the splint that's providing the force

[00:30:31] Speaker 01:
as compared to an aligner that you snap into your teeth and is gripping those teeth and moving it in a particular direction.

[00:30:38] Speaker 01:
So in that respect, you can make that positioner with the methodology described in the 037 patent because the 037 patent describes that it covers positioners and retainers and a host of other devices.

[00:30:53] Speaker 01:
So when the board

[00:30:56] Speaker 01:
rests its decision on the fact that while your claims aren't directed to aligners are directed to a broad swath of devices and you don't have to use 3D data at all because you also reference a laundry list of different technologies and then you come into the board and say well no of that list of appliances we want appliance C you know our claims limited to that and then we want

[00:31:21] Speaker 01:
3D shape technology, which is option four, what have you.

[00:31:25] Speaker 01:
So they're arguing for limitations when their claims are directed to a broad methodology of manufacture.

[00:31:33] Speaker 01:
And so that's where the board came out on this, is that your claims just don't get you where you want to go.

[00:31:40] Speaker 01:
Whether it's Phillips or BRI, it's plain meaning what you claimed is providing digital data sets.

[00:31:47] Speaker 01:
The only thing modifying data sets is digital.

[00:31:50] Speaker 01:
every one of those examples in the specification, whether it's 2D x-rays, 3D x-rays, MRI, that's all digital data, and that's what was claimed.

[00:31:58] Speaker 04:
What should we do about the limitation about the final arrangement of the patient's deep?

[00:32:09] Speaker 04:
So with respect to the argument about the final arrangement... To be more specific, sorry, the question didn't come out well.

[00:32:19] Speaker 04:
idealized final position is this generic default mouth with straight teeth and so it's not really attributed to any given patient and it's not going to be in any way a representation of any given patient and it's not going to have the same tooth size scaling that all the prior digital data sets would have

[00:32:46] Speaker 04:
nor would it have the jaw size scaling either.

[00:32:50] Speaker 04:
So how can that default for a male or female final idealized arrangement be regarded as a final arrangement for an individual patient?

[00:33:02] Speaker 01:
Well, I would submit it does have the scaling because Snow teaches that the way that you create the individualized model, and it is an individualized model.

[00:33:09] Speaker 01:
It's not generic.

[00:33:10] Speaker 01:
You're taking an x-ray.

[00:33:11] Speaker 05:
No, no, but it just says keep straight about the starting point and the final point.

[00:33:15] Speaker 05:
Their entire argument is about the final point, which is completely generic.

[00:33:20] Speaker 05:
Everybody agrees that Snow starts with the generic, says overlay a picture of an individual mouth, adjust the generic, and now you have, as opposed to generic,

[00:33:31] Speaker 05:
you have, or standard, you have individualized, but it's the defective mouth.

[00:33:36] Speaker 05:
Their focus is on the end of the orthodontic process, which is not individualized.

[00:33:43] Speaker 01:
And I think, Your Honor, this gets back to your point about the citations to Dr. Ma's declaration of paragraph 93.

[00:33:51] Speaker 01:
In addition to being referenced in the footnote

[00:33:55] Speaker 01:
page 31 of the final written decision expressly adopts various pages of the petition, including the underlying citation to evidence as its own.

[00:34:08] Speaker 01:
So those paragraphs are specifically adopted and what the board did in this instance is they looked at the testimony of not one but two witnesses.

[00:34:19] Speaker 01:
So we have two orthodontists saying

[00:34:21] Speaker 01:
and this is entirely consistent with the 037 patent itself, well the final position, that will be up to the orthodontist, otherwise you wouldn't need them.

[00:34:30] Speaker 01:
So everybody, this is a cosmetic procedure, everybody wants the ideal smile, everybody wants the ideal nose, not everybody can get that.

[00:34:38] Speaker 01:
So when you have the ideal final position and you have a starting point, you may stop

[00:34:44] Speaker 05:
someplace along that line because you just can't get there for everybody now you'll get there for some people but you won't get there for everybody and that's what the witnesses said and and the board are limited i mean i i guess it seemed to me i was having a hard time finding that marks said that in paragraph forty two so we put that aside assume that ma says that in paragraph ninety three i think mister jay's position is that's just

[00:35:13] Speaker 05:
clearly incorrect under snow itself, because that paragraph 93 refers to the language early in snow, column one maybe or something about second position.

[00:35:25] Speaker 05:
And I think Mr. Jay's position is that snow is clearly there referring to the end of this whole process, not on the next column.

[00:35:42] Speaker 05:
where there's a description of a series of intermediate positions through interpolation.

[00:35:50] Speaker 01:
I think the board explicitly adopted the discussion in column three relative to moving from the first point to the standard, moving from the individual scan to what they call the standard model.

[00:36:05] Speaker 01:
And that's what they describe as the treatment path and showing that on the screen.

[00:36:11] Speaker 01:
I think what the board did is viewing the record, reading the statements from Dr. Ma, and reading the 037 patent itself, which talks about it is known in the art that an orthodontist provides a prescription.

[00:36:25] Speaker 01:
So it's not just you sit in the chair and you can come up with this unique stop point.

[00:36:31] Speaker 01:
The 037 patent doesn't describe that anywhere.

[00:36:34] Speaker 01:
They're also trying to get to an ideal smile.

[00:36:36] Speaker 01:
That's the whole point.

[00:36:37] Speaker 01:
It's a cosmetic procedure.

[00:36:41] Speaker 01:
To narrowly view Snow to say, well, it just has this road to Rome.

[00:36:47] Speaker 01:
I don't think that is consistent with the evidence of record or the way that the board weighing this evidence understood these technologies and methodologies to work.

[00:36:56] Speaker 01:
There's always the ideal endpoint where you stop along the way as the witnesses have testified and as the board has accepted a substantial evidence.

[00:37:07] Speaker 01:
is up to the orthodontist.

[00:37:08] Speaker 01:
That's why you have the orthodontist.

[00:37:10] Speaker 01:
That's the value that they're bringing.

[00:37:12] Speaker 01:
Otherwise, everyone would just go and rely on these computers to do everything for them.

[00:37:18] Speaker 01:
These claims are directed to an arrangement of teeth.

[00:37:22] Speaker 01:
And that's all that's required.

[00:37:24] Speaker 01:
Again, you're scaling with snow.

[00:37:27] Speaker 01:
You're moving individual teeth.

[00:37:29] Speaker 01:
All of that is exactly as described in the 037 patent.

[00:37:33] Speaker 01:
The 037 patent is incorporating by reference

[00:37:36] Speaker 01:
various aspects of the 3D scanning.

[00:37:39] Speaker 01:
They didn't invent 3D scanning.

[00:37:41] Speaker 04:
So I understand, because I'm getting confused now.

[00:37:43] Speaker 04:
Snow's final arrangement, is it scaled or is it not scaled?

[00:37:50] Speaker 01:
I believe it's scaled as to shape because when you create that first model, you get the extra... Wait a second.

[00:37:57] Speaker 04:
You're saying scale that Snow's final arrangement is scaled as to shape of teeth?

[00:38:04] Speaker 04:
That's what I just heard you say.

[00:38:05] Speaker 04:
Yes, because when you start... But I thought snow was just about, if it scaled anything, it's the size of the teeth, not the shape of the teeth.

[00:38:14] Speaker 01:
Well, you're overlaying the x-ray onto the shape of the teeth, and you're manipulating that x-ray to essentially line up.

[00:38:22] Speaker 04:
Where does SNO say it's doing any scaling of the shape of the teeth?

[00:38:25] Speaker 04:
My total understanding of the board's decision was SNO doesn't do that, but it doesn't matter.

[00:38:30] Speaker 01:
And so that's why I'm confused why you're saying... Right, and I may have misspoke about scaling.

[00:38:34] Speaker 01:
The scaling I'm talking about is basically overlaying the x-ray onto the shapes.

[00:38:40] Speaker 01:
And so once you make that overlay and you adjust every individual tooth, as you move to the final position, that scaling and those shapes remain the same.

[00:38:50] Speaker 01:
What about the final arrangement though?

[00:38:52] Speaker 04:
As I understand Snow, Snow is just, the final arrangement is the standard model, which goes back to whatever the default size is.

[00:39:03] Speaker 01:
That's correct.

[00:39:04] Speaker 01:
The final arrangement would have the same tooth shape as the beginning arrangement.

[00:39:09] Speaker 04:
When you say beginning arrangement, I don't know what you mean by that.

[00:39:11] Speaker 01:
The beginning shape.

[00:39:12] Speaker 01:
So the shape is remaining constant.

[00:39:16] Speaker 04:
The shape is remaining constant, what about the size?

[00:39:19] Speaker 04:
The size

[00:39:19] Speaker 04:
sort of just slings back to the standard model, right?

[00:39:25] Speaker 01:
Right, but there's that step in the beginning.

[00:39:27] Speaker 04:
Okay, so then if there are like six datasets, the initial dataset for an individual patient will have some scaling of the teeth size.

[00:39:36] Speaker 04:
Correct.

[00:39:37] Speaker 04:
So will the second one, the third one, the fourth one, the fifth one, and then the sixth one, we revert back to the standard model teeth size, right?

[00:39:49] Speaker 04:
We would

[00:39:50] Speaker 01:
Is that your understanding of snow?

[00:39:52] Speaker 01:
My understanding is we're not reverting back.

[00:39:55] Speaker 01:
We're maintaining the original mapping and moving to an idealized position using those.

[00:40:01] Speaker 04:
The position, yes, but I'm talking about teeth size now.

[00:40:05] Speaker 01:
If we're talking about size and shape, are we saying that... I'm just talking about size.

[00:40:11] Speaker 04:
Shape is the same all the way through because Snow doesn't talk about doing anything on an individualized level for a given patient with regard to teeth shape.

[00:40:19] Speaker 04:
I agree with that.

[00:40:20] Speaker 04:
It does talk about scaling on teeth size.

[00:40:22] Speaker 04:
So, final arrangement for a given patient.

[00:40:26] Speaker 04:
What is that going to look like under Snow's teaching?

[00:40:29] Speaker 04:
My understanding is it reverts back to the standard model

[00:40:33] Speaker 04:
for whatever the standard default sizing of a male patient's teeth are or a female patient's teeth are.

[00:40:41] Speaker 04:
So what you look at when you look at, as I said in my hypothetical, six digital data sets in an iterative way, you're going to see the first five of them mapping up approximately at least to the patient's

[00:40:55] Speaker 04:
particular teeth size, but then the last one, the sixth one, the final one, what we will be looking at in that digital data set is the standard default teeth size.

[00:41:06] Speaker 04:
Am I right about that?

[00:41:07] Speaker 01:
That's not my understanding.

[00:41:08] Speaker 04:
Okay, where in the snow would it say something different and what is it different from what I just said?

[00:41:14] Speaker 01:
My understanding is that scaling that is done, so that is related to size.

[00:41:19] Speaker 01:
that's carried through throughout the process.

[00:41:21] Speaker 01:
The shapes are generic, and they stay generic.

[00:41:23] Speaker 01:
That's my understanding, and I believe that was the board's understanding.

[00:41:27] Speaker 04:
And again, this also gets back to... Where did the board say that the final tooth arrangement from Snow, that what Snow teaches when it talks about reaching that idealized arrangement, that the teeth size are going to be the exact same for all the digital data sets going through?

[00:41:50] Speaker 04:
I thought my understanding was there's just this default and that's going to be your final digital data set that comes out of snow.

[00:41:58] Speaker 01:
My understanding is the default is a default for tooth shape and perhaps the ideal arch.

[00:42:07] Speaker 01:
The size, I guess, is where I don't believe the board spoke to that issue.

[00:42:12] Speaker 05:
I think, I mean, as I read snow basically, the vampire ends up not a vampire.

[00:42:17] Speaker 01:
Well, yes, we would hope that that's the goal.

[00:42:21] Speaker 01:
But again, all of this assumes that you're trying to make aligners and that you need an appliance that fits.

[00:42:30] Speaker 05:
Can I take you back to MA paragraph 93 on A 1828?

[00:42:36] Speaker 05:
I guess the more I read it, the less persuaded I am that it even says a treatment plan may stop

[00:42:47] Speaker 05:
at an intermediate place.

[00:42:50] Speaker 05:
And without that, I don't see how snow, how there's evidence saying that snow shows a non-generic stopping point.

[00:43:05] Speaker 01:
Well, what the board did in this instance was to credit that testimony and find that, again, is to credit Dr. Ma's testimony.

[00:43:13] Speaker 05:
No, let me try to be more precise.

[00:43:16] Speaker 05:
I think my initial question to you before, presuppose that Moss said what the board is attributing to it.

[00:43:23] Speaker 05:
Now I'm saying, I'm not sure Moss says that.

[00:43:26] Speaker 02:
OK.

[00:43:27] Speaker 05:
So can you look at page 1828 and tell me what in that paragraph says that treatment may stop at some less than final

[00:43:44] Speaker 05:
step in the snow contemplation, as opposed to saying you might do the sequence of images anywhere along the way, which I think is all that the crucial sentence, the then sentence.

[00:43:58] Speaker 01:
Right.

[00:43:58] Speaker 01:
That's the sentence I'm looking at.

[00:44:00] Speaker 05:
But I think all that says is after determining the idealized second position, which could correspond to any point in time during the treatment, such as an intermediate or final tooth arrangement, a sequence of images

[00:44:14] Speaker 05:
representing can be taken.

[00:44:18] Speaker 05:
But where does that suggest that the final endpoint of the process, which is what the claim contemplates, can be something other than what Snow is contemplating as the final, which is standard and not individualized?

[00:44:38] Speaker 01:
point to that parenthetical, such as an intermediate or final tooth arrangement.

[00:44:43] Speaker 01:
So we're saying there, we're not necessarily always going to the end.

[00:44:48] Speaker 01:
We may stop at some point, because based upon the physiology of a given patient, that you've gone as far as you can go, at least for an aligner.

[00:44:59] Speaker 05:
I'm just not sure that that says that.

[00:45:01] Speaker 05:
I think all this is saying is that at intermediate stages of a process that

[00:45:08] Speaker 05:
what makes them intermediate is that the actual process is continuing.

[00:45:12] Speaker 05:
Each one of those could be an idealized second position within snow.

[00:45:16] Speaker 05:
And then you can do a sequence of images to that.

[00:45:18] Speaker 05:
But that's not saying that for an individualized patient, the end point is an intermediate point.

[00:45:27] Speaker 05:
You wouldn't call it an intermediate point.

[00:45:28] Speaker 01:
But I think this is in the context of snow.

[00:45:31] Speaker 01:
So an intermediate point by definition would not be going all the way to the end.

[00:45:36] Speaker 01:
which is what this sentence is discussing.

[00:45:38] Speaker 01:
So what Dr. Ma is saying here is this is where the doctors come in.

[00:45:47] Speaker 01:
This is where the prescription comes in.

[00:45:49] Speaker 01:
This is where when the 037 patent talks about prescriptions, the doctor has to look at what's going on and pick the point that makes the most sense for the patient and that's what this paragraph is being directed to and this is what the board

[00:46:03] Speaker 01:
accredited not only for Dr. Ma, but also for the second witness, Dr. Martz.

[00:46:10] Speaker 01:
So there's substantial evidence there as to finding an endpoint.

[00:46:15] Speaker 01:
And again, this all sort of supposes we're talking about aligners here and not

[00:46:21] Speaker 01:
devices that don't require this kind of resolution, which the claims simply aren't directed at.

[00:46:28] Speaker 05:
Let me just ask you about that.

[00:46:29] Speaker 05:
Why does this particular argument suppose that we're talking about aligners, and by aligners, I think what you mean is close fitting to match the contour of individual teeth.

[00:46:41] Speaker 01:
Well, so what I mean by aligners is the shape argument.

[00:46:46] Speaker 01:
Right.

[00:46:46] Speaker 01:
The specific shape.

[00:46:47] Speaker 05:
I guess I didn't understand that this particular argument depended on

[00:46:52] Speaker 05:
the view that the devices at issue needed to match the shape of the individual.

[00:47:01] Speaker 01:
Well, the reason that this depends on that is because they point to testimony of Dr. Martz talking about, will this endpoint fit a given patient?

[00:47:09] Speaker 01:
So it always goes back to this argument about what Dr. Martz said.

[00:47:14] Speaker 05:
But to use Judge Chen was talking with you about just the size, the height of the canines,

[00:47:22] Speaker 05:
Nothing to do, let's assume all canines have exactly the same shape.

[00:47:26] Speaker 05:
They're all very, very pointy.

[00:47:28] Speaker 05:
But the height can vary a lot.

[00:47:30] Speaker 05:
And snow seems to make all the canines at the end be just the same for all males and the same for all females.

[00:47:39] Speaker 01:
Right.

[00:47:41] Speaker 01:
Well, and the reason, as Snow describes, because for a large segment of the population, that ideal model will work.

[00:47:49] Speaker 01:
It won't work for everyone.

[00:47:50] Speaker 01:
And we don't dispute that.

[00:47:52] Speaker 01:
But the reason that it's the model that's used is because it works for most people.

[00:47:59] Speaker 01:
So I think even accepting all of that, I don't know that it tilts the scales in favor of the appellant here.

[00:48:07] Speaker 01:
And then finally, I would just add that as pointed out in the institution decision, what the board made clear is even accepting all of this,

[00:48:16] Speaker 01:
It would still, if you wanted more resolution, if you knew that you were making a device that required these shapes, you would just take the off-the-shelf scanning technology that's out there, because that's the prevalent teaching in the art that was stated in the institution decision.

[00:48:31] Speaker 01:
It was argued in the petitioner's reply.

[00:48:33] Speaker 01:
The board didn't adopt it, though, in the final written decision, right?

[00:48:36] Speaker 01:
Well, what the board did say is that they agreed... The board said, we're not going to address this particular form of... But prior to that, Your Honor, the board said, we agree that

[00:48:45] Speaker 01:
That's exactly what you would do because that's exactly what the 037 patent does.

[00:48:49] Speaker 01:
They've taken an off-the-shelf 3D scanning technology and they've used it to make aligners.

[00:48:55] Speaker 04:
I don't quite understand.

[00:48:56] Speaker 04:
Are you saying that's reviewable for us?

[00:48:58] Speaker 04:
Are you saying that was a finding by the board that we can review?

[00:49:01] Speaker 01:
I'm saying they did find that, at least with respect to using an off-the-shelf technology with snow, that that was just as obvious as explained in the 037 patent.

[00:49:14] Speaker 01:
go into explaining the remainder of that ground because they rested on the other.

[00:49:19] Speaker 01:
But they at least said, we agree with that.

[00:49:22] Speaker 01:
And that's something that they brought up in their institution decision.

[00:49:25] Speaker 01:
And then they raised again a final written decision.

[00:49:30] Speaker 01:
So I think I've gone over my time.

[00:49:33] Speaker 01:
But we would submit that the board's decision rests on substantial evidence.

[00:49:37] Speaker 01:
And we would ask for interference.

[00:49:38] Speaker 01:
Thank you.

[00:49:45] Speaker 03:
Thank you, Your Honor.

[00:49:46] Speaker 03:
I won't take up too much more time.

[00:49:47] Speaker 03:
I just want to address a few points.

[00:49:49] Speaker 03:
First, on this question of Dr. Ma, a couple of things.

[00:49:54] Speaker 03:
One, just to begin by noting that at the beginning of footnote 10, the board credits Dr. Martz, but does not say anything about Dr. Ma.

[00:50:03] Speaker 05:
Well, it doesn't say it directly, but it does cite, relies on petition page 17, which relies on both of them.

[00:50:11] Speaker 05:
And I think as Mr. McKeon pointed out earlier,

[00:50:14] Speaker 05:
in the decision.

[00:50:14] Speaker 05:
The board specifically says it adopts Petition Page 17 and the underlying references.

[00:50:20] Speaker 03:
Sure, but at the beginning of the footnote, I think it says what it's taking from that page, which is Dr. Ma.

[00:50:26] Speaker 03:
That's right at the beginning of the session, Footnote 10.

[00:50:29] Speaker 03:
But even if that's not right.

[00:50:31] Speaker 03:
So as the questioning with Judge Taranto and my friend brought out, Dr. Ma never says that

[00:50:37] Speaker 03:
that one of these interpolation steps would be a treatment goal.

[00:50:42] Speaker 03:
So even if you agree with everything that he says, then that doesn't get the petitioner where it needs to go.

[00:50:47] Speaker 03:
But in addition, he says something that is quite wrong, which is that the idealized second position could be anywhere along the chain.

[00:50:54] Speaker 03:
And that is just not right.

[00:50:55] Speaker 03:
If you look at Snow, you will see that in column four, lines 19 and 26, you can see that the animation in Snow is to the 3D standard model.

[00:51:07] Speaker 03:
That is what the idealized second position is.

[00:51:11] Speaker 03:
It's always the same.

[00:51:12] Speaker 03:
It's the 3D standard model.

[00:51:14] Speaker 03:
And speaking of snow and the final position, I think, Judge Chen, it's worse than your colloquy with my friend brought out, because the fangs, if someone has big teeth, I think that the way their animation works is that they shrink with each step, progressively.

[00:51:30] Speaker 03:
So it's not just that the final depiction is important.

[00:51:34] Speaker 04:
That, when we talked before, I couldn't

[00:51:37] Speaker 04:
know where in Snow you were pointing to for this shrinking idea.

[00:51:41] Speaker 03:
Sure.

[00:51:42] Speaker 03:
You don't have to take my word for it.

[00:51:45] Speaker 03:
Dr. Valley says it.

[00:51:46] Speaker 04:
Right, but he has to have something to base that on.

[00:51:50] Speaker 04:
That's what I'm trying to figure out.

[00:51:51] Speaker 04:
Snow doesn't speak in these terms.

[00:51:53] Speaker 04:
It seems like it's a

[00:51:55] Speaker 04:
speculative thing at best in terms of reading snow is to say the teeth are successively shrinking or successively expanding to reach the 3D model.

[00:52:07] Speaker 03:
I guess I would just note that there's no evidence to the contrary.

[00:52:10] Speaker 03:
No one in the records submitted any contrary reading of snow.

[00:52:14] Speaker 03:
And even if you don't agree with me about the interpolation steps, so that there's progressive shrinking,

[00:52:19] Speaker 03:
then the alternative is what your question to my friend brought out, that maybe you have a giant jump or a giant shrinkage to the standard teeth at the end, because it is quite clear that the teeth at the end are the teeth of the 3D standard model.

[00:52:33] Speaker 03:
Now, you never have shape, because you're using generic teeth from beginning to end, so you never have the actual shape.

[00:52:39] Speaker 03:
You start with a rough approximation of the patient's size, and our view is, and Dr. Valley's view was, that it gets rougher and rougher and rougher,

[00:52:47] Speaker 03:
less and less accurate with each step, until at the end you wind up not with the patient's size, but with the size of the generic standard model.

[00:52:56] Speaker 03:
Third point I just wanted to bring out about the 139 patent.

[00:52:59] Speaker 03:
My friend suggested that that is a positioner.

[00:53:02] Speaker 03:
It's a compound device.

[00:53:04] Speaker 03:
So there's a positioner portion and a splint portion, all the same device.

[00:53:08] Speaker 03:
What the splint does, the splint anchors the positioner.

[00:53:12] Speaker 03:
And what 139 patent says, page 4388 of the appendix,

[00:53:16] Speaker 03:
column two, line 42, that both the anchoring part of the splint and the moving part of the positioner are closely fitted.

[00:53:26] Speaker 03:
And this is not something that's rubberized and off the shelf and able to be used generically for everybody in the tooth population.

[00:53:36] Speaker 03:
Finally, I think I would just note that the reference to off the shelf scanning technology

[00:53:41] Speaker 03:
Sure, there was technology to scan the patient's mouth as it existed, but the whole point of the invention is that the interpolation steps and the final tooth position are all made electronically or digitally before you start treatment.

[00:53:55] Speaker 03:
And there's no suggestion that that was taught in the art, that you can't just take off-the-shelf technology and produce digital images of the interpolation steps.

[00:54:06] Speaker 04:
The argument that was made that wasn't actually addressed by the board, as I understand it, is you can use the 3D technology to create a digital data set based on the patient's actual teeth in every which way, shape and form.

[00:54:20] Speaker 04:
And then based on snow, it'd be very obvious to make your digital data sets based on that all the way to the final end without doing something that just sounds crazy, which is to create a final appliance that would be based on

[00:54:36] Speaker 04:
some default mouth rather than what you've been working with for all the previous digital data sets and appliances.

[00:54:43] Speaker 03:
That's the argument, but that requires a large gap between the teachings of the printed publications in the record and what you would need to show to practice the patent because

[00:54:58] Speaker 03:
the technology, and this is brought out in Dr. Martz's deposition, the technology to selectively move around individual teeth, not just from Snow's scan of a patient's mouth, and not from generic teeth, I'm sorry, not just from generic teeth, but from an actual scan of a patient's mouth.

[00:55:14] Speaker 03:
That technology was not in common use as of the priority date, and Dr. Martz admitted that in his deposition that Holtgren, who is the author of one of the prior art references, had a team of PhDs working on exactly that problem as

[00:55:26] Speaker 03:
at or around the priority date.

[00:55:27] Speaker 03:
There's certainly nothing in the record that would fill that gap in an IPR where the board is limited to the obviousness combination that has come up with it.

[00:55:34] Speaker 04:
The claims, though, don't speak in terms of how one would go about doing all of those interpolations, right?

[00:55:40] Speaker 04:
It just says in kind of a result-oriented way, you're getting from A to B using a bunch of different data sets.

[00:55:47] Speaker 03:
Well, there are discussion of how to get there in the specification involving particular techniques that can be applied.

[00:55:54] Speaker 03:
But in any event, what is clear from the claims themselves is that you need not just the original, like an image of the original mouth, you need also an image of the final mouth and you need images of each step in between and you need them before the treatment begins so that you can fabricate all the appliances at that time.

[00:56:14] Speaker 03:
Unless there are further questions, I thank you for your time.