[00:00:00] Speaker ?:
Okay.

[00:00:44] Speaker 04:
Okay, the next argued case is number 17, 25, 15, with Daneshwar against Kipke.

[00:01:06] Speaker 05:
Okay, Mr. Al-Siyati.

[00:01:29] Speaker 01:
Morning, Your Honor.

[00:01:29] Speaker 01:
Can I please record?

[00:01:30] Speaker 01:
Council?

[00:01:31] Speaker 01:
Yes, Your Honor.

[00:01:32] Speaker 02:
On the last, I think the last page, yeah, the last substantive page of your blue brief, you discuss an email between Mr. Kipke and Ms.

[00:01:42] Speaker 02:
Hetke.

[00:01:43] Speaker 02:
Am I saying that right?

[00:01:44] Speaker 02:
I believe so, yes.

[00:01:46] Speaker 02:
And you present that email as a general prior art search.

[00:01:50] Speaker 02:
Specifically, you say that Kipke, I'm quoting you, Kipke wrote his colleague

[00:01:59] Speaker 02:
that he was, quote, interested in the Prior Art References Post, quote, because they may predate the issue with Mr. Danzhevar.

[00:02:10] Speaker 02:
And Hetke replied with the question, does this predate Mr. Danzhevar, inserting the names?

[00:02:17] Speaker 02:
Yes.

[00:02:19] Speaker 02:
What Mr. Kipke actually wrote was, can you guys find Lee's proposal and or email exchange

[00:02:29] Speaker 02:
around his PEZ electrode concept, splaying out DBS lead.

[00:02:34] Speaker 02:
I'm interested in this because I think that it predates the issue with Mr. Janjibar.

[00:02:40] Speaker 02:
That actually, email actually shows Mr. Kipke presenting a specific reference, not a general search, about which he is already familiar.

[00:02:51] Speaker 02:
Correct, Your Honor, and the point- Isn't your presentation of the email then directly misleading?

[00:02:56] Speaker 01:
It certainly wasn't intentionally so.

[00:02:58] Speaker 02:
That's not my question, whether it was intentional.

[00:03:01] Speaker 01:
Well, I don't believe it was misleading.

[00:03:04] Speaker 02:
You're presenting it as a general request for a general search.

[00:03:07] Speaker 01:
The point that we were attempting to make in the brief is that there was an inference to be drawn in Dr. Danishvar's favor that it was only when faced with the inventorship claim did the named inventors on the 894 patent go and try to find prior art.

[00:03:19] Speaker 01:
No, no.

[00:03:22] Speaker 01:
What he says is I already know about the prior art.

[00:03:26] Speaker 01:
Correct.

[00:03:27] Speaker 01:
But the point that I'm trying to make is that in the context of summary judgment, where inference is to be drawn in Dr. Danishvar's favor, the suggestion that they needed references to actually prove what was well known in the art is inconsistent with the court finding.

[00:03:42] Speaker 01:
Oh, come on.

[00:03:43] Speaker 02:
When somebody says X, for someone to say, well, that's not true, I know why, isn't having to go out and prove something.

[00:03:53] Speaker 02:
The facts exist.

[00:03:56] Speaker 01:
Fair enough, Your Honor.

[00:03:57] Speaker 01:
And the point on whether it's well-known in the art is that, at summary judgment, there were inferences to be drawn in Dr. Janisfar's favor as to whether or not it was well-known in the art, and in particular the guiding element.

[00:04:08] Speaker 01:
And there's really two or three key inferences that could have been drawn in his favor that were not.

[00:04:12] Speaker 02:
The district court construed shape memory material as, I'm quoting, a material that exhibits a shape memory effect such that it can

[00:04:21] Speaker 02:
be temporarily deformed but will return to its original shape or change shape due to a, due to temperature electrical stimulus or any other suitable mechanism.

[00:04:32] Speaker 02:
Correct.

[00:04:32] Speaker 02:
Do you contest that construction?

[00:04:35] Speaker 01:
No.

[00:04:35] Speaker 01:
In fact, Dr. Danishvar proposed it, but I would submit that.

[00:04:38] Speaker 01:
I know.

[00:04:40] Speaker 01:
I would submit that Dr. Danishvar's device does meet that, that claim construction and that there was no support for the district court finding that the two are different.

[00:04:49] Speaker 02:
By asserting inventorship based solely on contributions to claims 16 and 17 before us, do you agree with Appellee that you've waived any argument that you contributed to other claims?

[00:05:05] Speaker 01:
Yes, Your Honor.

[00:05:06] Speaker 01:
The point, so we pursued claims 16 and 17.

[00:05:09] Speaker 01:
I'm sorry.

[00:05:10] Speaker 02:
Do you argue that Mr. Dancivar has substantially contributed to claim one?

[00:05:14] Speaker 01:
So I would submit that what we did on appeal was we looked at the corroborating evidence.

[00:05:19] Speaker 01:
We tried to focus the issues for the court, focusing on claims 16 and 17.

[00:05:25] Speaker 02:
So you don't argue that he substantially contributed to claim one?

[00:05:29] Speaker 01:
No, I would submit that he conceived of a guiding member of shape memory material.

[00:05:34] Speaker 01:
That guiding member is recited in claim one.

[00:05:36] Speaker 01:
He didn't conceive of it.

[00:05:37] Speaker 02:
Where's that in your breed?

[00:05:39] Speaker 02:
I believe that you can substantially contribute to claim one.

[00:05:42] Speaker 01:
Uh, pages five, or excuse me.

[00:05:50] Speaker 01:
So on page nine, for example, in the blue brief, the 894 patent thus describes Dr. Danisvar's invention, i.e.

[00:05:57] Speaker 01:
the concept of attaching the shape memory material to a portion of a neural probe body to form a manipulable joint configured to steer the... How does that say substantial contribution to claim one?

[00:06:07] Speaker 01:
Well, it's suggesting it is the 895.

[00:06:10] Speaker 01:
The 894 patent describes Dr. Danishvar's invention, which includes the use of a guiding element of shape memory material.

[00:06:16] Speaker 03:
What about on page nine where you say Mr. Danishvar's invention is claimed at least in claims 16 through 17, but you don't mention other claims?

[00:06:27] Speaker 03:
I mean, I think the concern is that by not mentioning claim one anywhere, you haven't clearly raised that issue.

[00:06:36] Speaker 01:
Well, we're not contesting that Dr. Danishvar should be

[00:06:39] Speaker 01:
found to be an adventure of Claim 1.

[00:06:41] Speaker 01:
We focused our appeal on Claims 16 and 17.

[00:06:42] Speaker 01:
That's our argument.

[00:06:43] Speaker 01:
Okay.

[00:06:43] Speaker 03:
So your appeal is limited to Claims 16 and 17.

[00:06:46] Speaker 01:
Correct.

[00:06:46] Speaker 02:
I mean, to be clear, Dr. Danishvar does believe that... Then having nailed that down, how do you respond to the athlete's argument that you have to show a substantial contribution to Claim 1 as an independent claim in order to assert having substantially

[00:07:01] Speaker 02:
contributed to dependent claims 16 and 17.

[00:07:03] Speaker 01:
Sure.

[00:07:04] Speaker 01:
Well, I'd submit that Dr. Dann, as far as lab notebook, does show a guiding element, formed of shape memory material, and that the... You just conceded it.

[00:07:13] Speaker 01:
I didn't intend to concede that point.

[00:07:17] Speaker 04:
Okay.

[00:07:17] Speaker 04:
But you still have the problem, do you not, that all of the limitations of claim one, and they focus on the rigid against non-rigid, are carried over in all of the other claims?

[00:07:29] Speaker 01:
Right.

[00:07:29] Speaker 01:
Well, if you look at Dr. Danishvar's lab notebook, it's Appendix 23.

[00:07:32] Speaker 01:
I'd be happy to show you how he would read onto that claim.

[00:07:36] Speaker 01:
But the rigid portion is at the... I'm sorry, sure.

[00:07:40] Speaker 03:
Turn to page 23.

[00:07:42] Speaker 01:
Thank you.

[00:07:43] Speaker 03:
Okay.

[00:07:48] Speaker 04:
Okay.

[00:07:49] Speaker 01:
So right here, you have the side view actuated, so it's back in the middle of the page.

[00:07:55] Speaker 01:
And there's the actuators up to the left.

[00:07:58] Speaker 01:
And there's a bend there.

[00:08:00] Speaker 01:
The rigid portion would be the portion down to the right of the actuator.

[00:08:03] Speaker 01:
And there's an electrode array on that portion.

[00:08:07] Speaker 01:
The actuator, along with the portion underneath it, would comprise the guiding element in that it is a form of shape memory material.

[00:08:15] Speaker 01:
And it essentially positions the electrode in place.

[00:08:18] Speaker 01:
And I think the district court found that the portion where the actuator is was not

[00:08:25] Speaker 01:
properly a guiding element because it included electrodes, but there's nothing in the claims that prevent the guiding element from having electrodes on them.

[00:08:33] Speaker 02:
On the previous page at 22, Mr. Dengler wrote he had, quote, seen applications of conductive polymers being used to bend substrates such as in micro-muscles work.

[00:08:48] Speaker 02:
Isn't that highly damaging to your position in terms of the notoriety of the concept?

[00:08:53] Speaker 01:
I don't believe so, Your Honor.

[00:08:54] Speaker 01:
I think what he's saying there is that, so the micro muscle's work wasn't in connection with the brain probe.

[00:08:59] Speaker 01:
And what he's saying is generally he's seen the use of polymer actuators that's consistent with the smell of reference, for example, that the appellees have cited.

[00:09:07] Speaker 01:
So what he did is he took the idea of using this conductive polymer and he adopted it, adapted it for use in a brain probe.

[00:09:13] Speaker 01:
And again, I'd submit that the figure on page, appendix page 23 shows the guiding element

[00:09:20] Speaker 01:
of shape memory material, and that that's sufficient to have contributed to Claim 16.

[00:09:23] Speaker 03:
Did you argue this in your appellate brief, though?

[00:09:26] Speaker 03:
I mean, I have to say, I look at your appellate briefs, and I see that you're making two arguments, one of which is that Mr. Danischbar's contribution was not in prior art.

[00:09:41] Speaker 03:
But I don't see where you've argued, in fact, that the district court erred when it found that Mr. Danishvar's contribution was to have shape memory material on the electrode portion and not on the guiding element.

[00:09:58] Speaker 01:
Well, Your Honor, I'm happy to try to find it for you.

[00:10:02] Speaker 01:
But the point, I think the question was, isn't it inconsistent with the invention?

[00:10:06] Speaker 01:
And I was trying to explain that under the district court

[00:10:09] Speaker 01:
interpretation of the 894 pattern.

[00:10:11] Speaker 01:
It's not inconsistent.

[00:10:15] Speaker 01:
So on page five, for example, we.

[00:10:18] Speaker 03:
So I see your arguments as being twofold in your blue grief.

[00:10:22] Speaker 03:
That Danish Vars' notes do not describe use of a shape memory material.

[00:10:26] Speaker 03:
Because remember, the district court said that that material, the electrically conjugated polymer, is not shape memory.

[00:10:33] Speaker 03:
So that seemed to be one of the things that you were challenging.

[00:10:36] Speaker 03:
And the second thing you seemed to be challenging

[00:10:39] Speaker 03:
was whether Mr. Danishvar's contribution was well known or not.

[00:10:44] Speaker 03:
But I don't see you separately in this brief challenging whether Mr. Danishvar's contribution was for an electrode versus a guiding pool.

[00:10:56] Speaker 03:
Could you point to me where in your brief that might be?

[00:10:59] Speaker 01:
Well, so on pages four to five, we talk about Dr. Danishvar's notebook, and we talk about the use of the- Brief.

[00:11:05] Speaker 01:
I'm sorry.

[00:11:06] Speaker 01:
The brief.

[00:11:06] Speaker 01:
The brief.

[00:11:07] Speaker 01:
You're being asked to refer us to the brief.

[00:11:10] Speaker 01:
Right, page four of the brief, I'm sorry.

[00:11:12] Speaker 01:
Oh, okay.

[00:11:12] Speaker 01:
Because you said notebook.

[00:11:14] Speaker 01:
I'm sorry about that.

[00:11:15] Speaker 01:
I meant to say on page four we discussed the notebook.

[00:11:21] Speaker 01:
So I'll grant you, Your Honor, we didn't directly attack that district court finding.

[00:11:25] Speaker 01:
What we did was discuss the idea of Dr. Danishvar's

[00:11:29] Speaker 01:
invention being consistent with claim one of the eight nine four patent namely the fact that the actuators controlled by electrical stimulation and on page four you'll see in figure two there are electrodes on the actuator do you think you can what authority do you have that you can raise arguments by implication in an opening brain?

[00:11:45] Speaker 01:
I'm not aware of any, Your Honor.

[00:11:50] Speaker 02:
Let me ask you this.

[00:11:52] Speaker 02:
Beyond the information disclosed by Pire are

[00:11:58] Speaker 02:
What specifically did Mr. Danservart contribute to claims 16 and 17?

[00:12:06] Speaker 01:
Well, the use of the shade memory material is a guiding element.

[00:12:10] Speaker 01:
I said beyond what's... Oh, beyond that?

[00:12:12] Speaker 02:
...disclosed by the prior art.

[00:12:14] Speaker 01:
Well, I don't believe that the guiding element is disclosed by the prior art.

[00:12:18] Speaker 01:
In fact, that was the actual... The release in the 894 patent was issued was that they added a guiding element to a probe that was used and claimed in the 673 patent.

[00:12:26] Speaker 01:
And I believe Appellee's brief at two

[00:12:29] Speaker 01:
actually says that the iteration to be protected by the 894 patent was the use of a guiding element that could either be maneuverable with cable or robotics, or it could be biased.

[00:12:40] Speaker 01:
So I do not believe that the use of a guiding element made of shape memory material was disclosed by the prior art.

[00:12:47] Speaker 01:
If it had been, the patent would have never issued.

[00:12:51] Speaker 03:
Moreover, as we discuss in our brief, the... Can I ask you, is that what you think the district court held?

[00:12:56] Speaker 03:
Do you think the district court held that

[00:12:58] Speaker 03:
that the use of shape memory material on an electrode or a guiding element was conventional?

[00:13:06] Speaker 01:
I believe the district court held that it was generally well known to use a polymer actuator or a shape memory material.

[00:13:12] Speaker 01:
I don't believe that the district court found that the specific use of a shape memory material as a guiding element was known in the art.

[00:13:18] Speaker 01:
In fact, the district court's finding as to that cited to the Hetke Declaration, pages 29 and 30,

[00:13:25] Speaker 01:
That discussion isn't focused on shape memory materials.

[00:13:28] Speaker 01:
That discussion, the shape memory materials are addressed later in Ms.

[00:13:32] Speaker 01:
Hetke's declaration.

[00:13:33] Speaker 01:
So it's my understanding anyway of the district court's opinion that there was a finding generally that shape memory materials were known in the art.

[00:13:42] Speaker 03:
in the prosecution history as we have been used maybe in the field of neural probes.

[00:13:46] Speaker 01:
Correct but not so that's sort of a general statement that you could use a material that would react to certain stimuli it would move back to its original shape not necessarily to steer a what they would call the carrier into the brain tissue.

[00:14:00] Speaker 03:
In your blubr if you challenge that finding do you still challenge that finding?

[00:14:04] Speaker 03:
since it's just generic.

[00:14:06] Speaker 03:
If the district's finding is simply generic that the use of shape memory materials in the field of neural probes was well known, do you challenge that?

[00:14:16] Speaker 01:
I would say no, Your Honor.

[00:14:18] Speaker 01:
The use of neural, excuse me, shape memory materials in the field was known.

[00:14:22] Speaker 01:
It's not a general, Dr. Danishvar didn't think, hey, I'll just use a shape memory material.

[00:14:27] Speaker 01:
He came up with a way to use a shape memory material as a guiding element.

[00:14:31] Speaker 01:
And I do believe that

[00:14:33] Speaker 01:
In our reply brief, we point out that in the original prosecution, Kipke himself pulled the patent office that the Rezai reference didn't teach, quote, simply did not appreciate the benefit attributed to a manipulable guiding element supporting a longitudinally stable electrode array.

[00:14:49] Speaker 01:
And that's in the appendix at 296.

[00:14:50] Speaker 01:
So what Mr. Kipke, I believe, is saying there is that the prior art did not disclose

[00:14:57] Speaker 01:
the use of a guiding member attached to an electrode array in connection with a neuro probe.

[00:15:01] Speaker 01:
And I realize I'm running short on time, so I'll reserve the rest.

[00:15:05] Speaker 04:
Okay, let's hear from the other side.

[00:15:07] Speaker 04:
We'll save you a little time.

[00:15:08] Speaker 04:
Thank you.

[00:15:19] Speaker 04:
Mr. Hugen.

[00:15:20] Speaker 00:
May it please the Court, Michael Hugen, on behalf of Darrell Kipke and Neuro-Nexo Technology.

[00:15:25] Speaker 00:
I think the court is honed in on probably the biggest challenge and the biggest problem with the appeal, and that is many of the issues are raised in here today.

[00:15:35] Speaker 00:
The issues raised in the reply brief were waived.

[00:15:40] Speaker 00:
They weren't argued.

[00:15:41] Speaker 00:
It's based on a claim construction challenge.

[00:15:43] Speaker 00:
It's based on what does guiding element mean, what does rigid mean, what does the carrier mean.

[00:15:47] Speaker 00:
That's the only way he gets there.

[00:15:49] Speaker 00:
Nowhere in any of his briefs does he argue

[00:15:51] Speaker 00:
Does he challenge the Court's claim construction?

[00:15:53] Speaker 00:
Does he say the Court was wrong in how it construed guiding element, how it was wrong that it construed carrier?

[00:15:59] Speaker 00:
The carrier is a very separate element from the guiding element.

[00:16:02] Speaker 00:
That's what the district court found.

[00:16:04] Speaker 00:
That claim construction is not challenged before this Court.

[00:16:07] Speaker 04:
So your position is that the claim construction, that for every claim, the element must be rigid along its entire length.

[00:16:17] Speaker 04:
Correct.

[00:16:17] Speaker 04:
No flexibility.

[00:16:19] Speaker 04:
That's the distinction.

[00:16:20] Speaker 00:
That's absolutely the distinction, that the shape-memory material that he, that the appellant alleges he contributed, he places it on the probe.

[00:16:30] Speaker 00:
The probe in the 894 patent, if you will, is a carrier.

[00:16:34] Speaker 00:
It has the electrodes.

[00:16:35] Speaker 00:
It's circumferential.

[00:16:36] Speaker 00:
The electrodes are around the entirety of the probe.

[00:16:39] Speaker 00:
It's rigid.

[00:16:40] Speaker 00:
It's clearly defined as rigid and unbendable.

[00:16:42] Speaker 00:
When he pointed you to the Appendix 23, he pointed you to something that is a probe which bends.

[00:16:47] Speaker 00:
That's not been challenged.

[00:16:48] Speaker 00:
She's not challenged the claim construction from the lower court.

[00:16:51] Speaker 00:
And I think for that reason alone, the district court should be affirmed.

[00:16:58] Speaker 00:
Now, if the court has any specific questions, I'm happy to answer them.

[00:17:00] Speaker 00:
But I'm more than content to stand on our briefs.

[00:17:06] Speaker 04:
Thank you.

[00:17:22] Speaker 01:
Thank you, Your Honors.

[00:17:24] Speaker 01:
I guess one thing I'd like to point out is that in the district court opinion, so we're at summary judgment.

[00:17:29] Speaker 01:
This is where we are in the proceeding.

[00:17:31] Speaker 01:
And at that stage, Dr. Danishvar did not have a burden to prove his inventorship claim.

[00:17:36] Speaker 01:
He had to raise a question of fact as to whether he contributed something significant to claims 16 and 17.

[00:17:42] Speaker 01:
We'd submit he did.

[00:17:43] Speaker 01:
And we'd submit that the district court actually reported.

[00:17:45] Speaker 02:
Do you agree with your opposing counsel's argument, strong argument, that

[00:17:52] Speaker 02:
You're not challenging any of the claim constructions?

[00:17:56] Speaker 01:
That's correct, and I don't believe that any of the claim constructions preclude Dr. Danishvar from having contributed to claims 16 and 17.

[00:18:02] Speaker 01:
In fact, opposing counsel said that the guiding element has to be a separate structure from the carrier, and I don't believe that's supported with the claim construction.

[00:18:12] Speaker 01:
The guiding element's a connecting structure, and on top of our probe is an actuator.

[00:18:17] Speaker 01:
That actuator's connected to the electrode array, so I don't believe that

[00:18:20] Speaker 01:
First of all, that there has to be two separate structures, and to the extent there did need to be two separate structures, I believe the actuator connected to the carrier portion, what we would call the carrier portion, meets the claims.

[00:18:33] Speaker 04:
Does that answer your question, Your Honor?