[00:00:00] Speaker 04: Today is 2017-1850, Autonomy vs. Oris Medical. [00:00:37] Speaker 04: Please, counsel, please tell me how to say your last name. [00:00:39] Speaker 02: Your Honor, I say Tortson. [00:00:41] Speaker 02: Mr. Tortson. [00:00:42] Speaker 02: Yes, Tortson. [00:00:43] Speaker 04: Please proceed. [00:00:45] Speaker 02: Thank you, Your Honor. [00:00:46] Speaker 02: Richard Tortson for autonomy may appease the court. [00:00:51] Speaker 02: The board was reversibly aired two ways. [00:00:54] Speaker 02: First, it accorded Orris the benefit of its earliest filing date. [00:00:59] Speaker 02: Second, it denied that Orris has claimed nine. [00:01:01] Speaker 02: The only Orris claim still in the case lacked written description. [00:01:07] Speaker 02: In both cases, they made similar errors. [00:01:09] Speaker 02: The parties had briefed the case in a very standard way. [00:01:13] Speaker 02: The board departed from that reasoning, sousponding the final decision. [00:01:17] Speaker 02: In each case, it supplied its own justification for granting relief to Orris. [00:01:22] Speaker 01: Orris sought a continuing patent application, not a continuation in part. [00:01:27] Speaker 01: If we agree with you that the spec doesn't meet written description requirements for new claims of the continuing application, [00:01:37] Speaker 01: Isn't the correct approach to find those claims invalid rather than what you say treating the application as effectively a continuation in part? [00:01:46] Speaker 02: Okay, under this court's own case law, which we don't dispute, a preliminary amendment that is filed contemporaneously with the filing of the continuation application is treated as providing disclosure that's part of that application. [00:02:02] Speaker 02: The consequence in this case, because the board expressly found, and we certainly agree, [00:02:07] Speaker 02: That disclosure was not in the original application. [00:02:10] Speaker 02: The effect is that it's a continuation in part. [00:02:13] Speaker 02: The consequence of that is if that were the only support, and we don't even accept that, but if that were the only support, they would have a 2014 filing date. [00:02:22] Speaker 02: OARS very sensibly doesn't want to defend that position because a 2014 filing date is horrible for them. [00:02:29] Speaker 02: Our specification with claims and disclosure, the board found disclosure going back at least to 2009. [00:02:35] Speaker 02: in our chain of applications. [00:02:37] Speaker 02: That's not contested. [00:02:39] Speaker 04: Wait, I thought that your filing date for purposes of this is 2013. [00:02:42] Speaker 02: Even if it were 2013. [00:02:45] Speaker 04: You mean even if. [00:02:45] Speaker 04: I thought that you abandoned your claims to an earlier filing date for purposes of this appeal. [00:02:50] Speaker 02: No. [00:02:50] Speaker 04: For purposes of this appeal, did you argue entitlement to an earlier filing date? [00:02:54] Speaker 02: That wasn't contested, Your Honor. [00:02:56] Speaker 02: The board accorded us an earlier filing date all the way back to 2009. [00:03:01] Speaker 02: We had argued for even earlier dates. [00:03:04] Speaker 02: We are not contesting those earlier dates for the purpose of the appeal. [00:03:07] Speaker 02: But it's uncontested by anybody that we have priority at least back to 2009. [00:03:13] Speaker 03: So as long as you're before 2014, if the preliminary amendment is the only thing that gives him a basis for written description of support, then your view is you get priority. [00:03:28] Speaker 02: Well, we've got two different issues going on here. [00:03:32] Speaker 02: So Judge Wallach's question was about the written description. [00:03:35] Speaker 02: If we give them a 2014 written description date, then they would be unpatentable over our published application. [00:03:43] Speaker 02: They'd be unpatentable over the prior art we said we wanted to apply and the board never gave us a chance to. [00:03:48] Speaker 02: Interestingly enough, if you disagree with us on the other motion, on the accorded benefit motion, [00:03:53] Speaker 02: then they'd also be unpatentable over their own disclosure under an encyclopedia Britannica theory. [00:03:58] Speaker 02: So they don't argue for a 2014 date. [00:04:01] Speaker 02: It would be horrible for them. [00:04:04] Speaker 02: We agree that it is horrible for them. [00:04:07] Speaker 02: We would have loved if they'd argued what the board, in fact, argued for them. [00:04:12] Speaker 02: And that's the significant point here. [00:04:14] Speaker 02: It's been suggested we waive the issue. [00:04:17] Speaker 02: We address the preliminary amendment in our motion because the court's case law says we must. [00:04:22] Speaker 02: They chose not to argue. [00:04:24] Speaker 02: I understand that strategic choice, but that's a choice they made. [00:04:27] Speaker 04: So they waived their reliance on that. [00:04:29] Speaker 04: So if we agree with you that the preliminary amendment is the only place which contains the written description support for Orris' claims, then they get the 2014 date, unless we were to go with them on what I think is their conditional cross-appeal, and unless we were to find your claims were anticipated by their early [00:04:51] Speaker 04: PCT publication. [00:04:52] Speaker 04: And this case is a vacated remand. [00:04:55] Speaker 04: Is that correct? [00:04:56] Speaker 02: I don't think so, for at least two reasons, Your Honor. [00:05:00] Speaker 02: First of all, the board's theory does not account for all of the claims, in part because of the order that they decided the issues in. [00:05:09] Speaker 02: They actually, on the written description issue, never addressed claim nine. [00:05:13] Speaker 04: You're just confusing me. [00:05:14] Speaker 04: And I need you to make this clear. [00:05:15] Speaker 04: I don't understand. [00:05:15] Speaker 04: I thought that the issue, if I were to agree [00:05:19] Speaker 04: that the only written description support for Orris's claim came in the preliminary amendment. [00:05:24] Speaker 04: That gives them a 2014 date. [00:05:26] Speaker 04: You have a date that's earlier than that. [00:05:28] Speaker 04: So unless your claims are rendered anticipated, I thought this case goes back, and that's all I have to decide. [00:05:37] Speaker 04: What am I misunderstanding? [00:05:38] Speaker 02: I think I misunderstood your question, Your Honor. [00:05:41] Speaker 02: Setting aside for the moment that we disagree, even with the board's decision, if that is your finding on appeal, [00:05:47] Speaker 02: then it would go back. [00:05:48] Speaker 02: All they would have is a 2014 date. [00:05:50] Speaker 02: There would be a host of prior art issues that would be raised against them and that the board would have to get into. [00:05:58] Speaker 02: And we would prevail because, as I said, 2014 is a very, very late date in this art. [00:06:03] Speaker 02: We don't think you should even go to that point, though, because among other things, the board, the only claim they have left in this case is claim nine. [00:06:11] Speaker 02: The board doesn't address Claim 9 in its written description analysis at all, except to note that it's a dependent claim. [00:06:18] Speaker 02: But that actually works against them, because that means there's an additional limitation that's not in Claim 1. [00:06:24] Speaker 02: We specifically addressed Claim 9 in our briefing. [00:06:27] Speaker 02: We have specifically addressed extra testimony about Claim 9 and its relationship to the preliminary amendment. [00:06:36] Speaker 03: But we can't assess those questions in the first instance. [00:06:38] Speaker 02: And you don't need to. [00:06:39] Speaker 02: My point is simply to say, [00:06:41] Speaker 02: or has never made this argument. [00:06:44] Speaker 02: It never made this argument. [00:06:46] Speaker 02: There is no evidence on the other side of the table. [00:06:49] Speaker 04: You are really confusing me a lot in this presentation, and maybe it's not your fault. [00:06:53] Speaker 04: Maybe it's the dense and confusing factual nature, and no doubt it is the board's inconsistent opinion. [00:06:59] Speaker 04: But I don't understand [00:07:02] Speaker 04: You were suggesting in response to my question about why isn't this a straightforward vacate and remand. [00:07:08] Speaker 04: They get the preliminary amendment date, which is after your date. [00:07:12] Speaker 04: If I say your claims are not anticipated based on their preliminary costs, but you said, oh, well, you don't even have to do that, Your Honor, because. [00:07:18] Speaker 04: And I don't understand anything you said thereafter, because most of the stuff you said would require us to make fact findings on appeal. [00:07:25] Speaker 04: I disagree. [00:07:26] Speaker 02: I disagree. [00:07:27] Speaker 02: What I'm trying to do is give you confidence that the facts already in the case [00:07:33] Speaker 02: don't require any further development. [00:07:35] Speaker 02: They're already there. [00:07:36] Speaker 04: But they require further development. [00:07:37] Speaker 04: We don't get to make fact findings. [00:07:39] Speaker 04: It doesn't matter what the record demonstrates. [00:07:42] Speaker 02: So if you remand, there's nothing for the board to do. [00:07:46] Speaker 02: Ours never put any counter facts in place. [00:07:50] Speaker 03: Well, you have to argue that to the board, right? [00:07:54] Speaker 02: It's certainly within the court's discretion to send this back to the board. [00:07:58] Speaker 02: I'm just trying to point out there's nothing left to do if you send this back to the board. [00:08:03] Speaker 03: I'd like, if I can... Well, at the end of the day, you would want the board to, on the interference, to enter a final judgment in your favor, right? [00:08:13] Speaker 03: We can't do that. [00:08:14] Speaker 03: No. [00:08:16] Speaker 03: So it's got to go back. [00:08:18] Speaker 03: Yes. [00:08:18] Speaker 03: If you're right on, basically, you know, the first motion and the fourth motion, if you're right, then... I actually don't want to... Obviously, you definitely have the [00:08:31] Speaker 02: power to remand and I don't want to get bogged down in that issue. [00:08:35] Speaker 04: We're asking questions that are so favorable to you the fact that you're trying to confuse us is really not to your advantage. [00:08:40] Speaker 02: I apologize your honor that's certainly not the intention. [00:08:43] Speaker 02: What I would like to do though is pivot to the other issue the accorded benefit because in a lot of ways I think the error is even clearer for that one. [00:08:51] Speaker 03: Well let me stick with the first issue because your friend on the other side as you point out the red brief doesn't even try to defend what the board did for good strategic reasons. [00:09:01] Speaker 03: So [00:09:01] Speaker 03: But your friend on the other side says, even if the preliminary amendment is not where they should have looked, the original specification was sufficient to provide the support. [00:09:14] Speaker 02: The board specifically rejected that. [00:09:16] Speaker 02: And I think since I have about a minute and a half left, I'd like to segue into the accorded benefit motion, because that's exactly the issue that gets presented there. [00:09:25] Speaker 02: Everybody agrees that Orris does not have [00:09:30] Speaker 02: and express disclosure of an embodiment within the scope of the invention. [00:09:34] Speaker 02: Instead, their argument is that one skilled in the art, reading their disclosure as a whole would immediately envisage sort of a virtual embodiment within the scope. [00:09:46] Speaker 02: The problem with that argument, first of all, is if you're judging this not with hindsight looking at the claims as they are now, but looking at the specification as one skilled in the art would have read it at the time of filing, [00:09:59] Speaker 02: You would face three express disclosures that the invention is actually something else. [00:10:05] Speaker 02: It doesn't involve a fluoroquinoline, doesn't involve a specific carrier, doesn't treat the same disease, isn't suspended. [00:10:13] Speaker 02: What autonomy argued, following this court's very clear case law for this fact situation, where there's no express embodiment, is, is there sufficient guidance? [00:10:22] Speaker 02: Are there blaze marks? [00:10:23] Speaker 02: That would lead you to pick and choose the right combination without using hindsight. [00:10:29] Speaker 02: In the anticipation motion, applying that standard and following the arguments of the parties, the board correctly answered no. [00:10:37] Speaker 02: What's odd is they then came up with their own theory in the accorded benefit motion, pieced together their own embodiment without any disclosure, and actually reached a wrong conclusion. [00:10:50] Speaker 02: Because among other things, it actually doesn't meet the requirements of the count. [00:10:55] Speaker 02: The count requires a suspension at the time of treatment [00:10:59] Speaker 02: They speculate, without any disclosure or inherency analysis, that there might have been a suspension at some point during the creation of the mixture that expressly ends up being a solution, not a suspension. [00:11:12] Speaker 02: So again, because they sort of leapt out on their own theory, this was never developed. [00:11:18] Speaker 02: The clear error in that approach was never pointed out to them below, because they never gave a chance to do so. [00:11:25] Speaker 02: I realize I'm in my rebuttal if the court doesn't have any more questions. [00:11:29] Speaker 04: OK, thank you. [00:11:30] Speaker 02: Thank you, Your Honor. [00:11:30] Speaker 04: Mr. Graves. [00:11:39] Speaker 00: May it please the court, Jonathan Graves for Oris Medical. [00:11:43] Speaker 00: The board was correct, Your Honors, in finding that the common Oris specification did in fact disclose an embodiment within the scope of the interference count, namely via example two in the specification [00:11:55] Speaker 00: plus the express disclosure that additional active ingredients including the identified antibiotic fluoroquinolone could be added to the composition. [00:12:04] Speaker 01: Do you agree that the board relied solely on the preliminary amendment in finding adequate written description? [00:12:11] Speaker 00: On written description, yes. [00:12:12] Speaker 00: Not on the priority question, but on written description, the board relied on the 2014 preliminary amendment, which we believe was [00:12:20] Speaker 00: in error because the same 2005 specification that I just started to address does in fact provide adequate written description support for the remaining claim, claim nine. [00:12:31] Speaker 03: But what about the fact that the board made some findings that at least implied the board concluded that you had to look to the preliminary amendment or you wouldn't find enough support? [00:12:42] Speaker 00: I think the board was just simply wrong about that on the written description issue, Your Honor. [00:12:47] Speaker 03: Written description is a question of fact, right? [00:12:49] Speaker 00: It is a question of fact, but the board also made other fact findings in connection with what turned out to be very interrelated issues on priority and anticipation that found in fact... Well, anticipation is a question of fact. [00:13:04] Speaker 00: It is as well, Your Honor. [00:13:06] Speaker 00: So if the board supported... You're saying they made... Oh, go ahead. [00:13:09] Speaker 01: If the board supported its findings with evidence, how can we overturn them? [00:13:15] Speaker 00: The evidence is in the board's decision from which this court [00:13:19] Speaker 00: can first affirm the priority determination for benefit of ORIS, two, find anticipation of the autonomy claims if the court reaches that conditional cross appeal, and three, find written description support for claim nine. [00:13:35] Speaker 00: And here's why. [00:13:37] Speaker 00: The board found the express teaching from example two, and there's no dispute about this, provides all the elements of the interference count [00:13:47] Speaker 00: as well as the remaining claim nine except for the suspension of fluoroquinolone. [00:13:55] Speaker 00: The board also found correctly that there's expressed disclosure in the 2005 specification of the use or addition of fluoroquinolone into the composition. [00:14:07] Speaker 03: So are you saying the board made inconsistent findings of fact, one as it relates to written descriptions and then the other in connection with your request for [00:14:17] Speaker 03: for priority or recorded benefit? [00:14:21] Speaker 00: The board committed legal error in connection with the written description analysis by improperly confining or as to the specific embodiments. [00:14:32] Speaker 03: Well, it didn't improperly confine you to that. [00:14:34] Speaker 03: What it said was all we could find for written description appears in the amendment, right? [00:14:41] Speaker 00: Yes, but the board specifically seemed to find that [00:14:47] Speaker 00: Ketamine is a mandatory ingredient as required by the specification. [00:14:54] Speaker 00: That's simply not supported by the specification and does violence to this court's precedent. [00:15:00] Speaker 00: How is that a legal error? [00:15:02] Speaker 00: The legal error is the court, in connection with written description, looked for an express embodiment disclosed in the specification [00:15:13] Speaker 00: that did not have ketamine. [00:15:15] Speaker 00: That's an improper reading of this court's precedent about one can more broadly claim than what's expressly disclosed in the specification. [00:15:24] Speaker 00: And given the board's finding in connection with the priority issue, that the specification has an example of everything for claim nine. [00:15:34] Speaker 00: They did it in connection with the count, but it holds true for claim nine as well. [00:15:39] Speaker 00: has an express disclosure in example two of everything but the suspension of fluoroquinolone, and the board's correct finding that the specification expressly teaches the addition of fluoroquinolone as an antibiotic, and the express finding by the board that's correct. [00:15:57] Speaker 01: Well, you argue, at 36, you argue that fluoroquinolone is disclosed as an antibiotic, and that it was common knowledge to use it in the ear, and that's sufficient. [00:16:06] Speaker 01: Where's the expert proof of those assertions? [00:16:09] Speaker 00: We provided the expert testimony of Dr. Berkland in support of that, which the board did note in addressing the written description issue as well. [00:16:21] Speaker 01: So where is that in the record? [00:16:28] Speaker 00: I can get a citation for you, Your Honor, to Dr. Berkland's declaration. [00:16:35] Speaker 00: But in addition, autonomy's expert, and we cite this in our brief, [00:16:39] Speaker 00: admitted that suspension of fluoroquinolone is a trivial task. [00:16:47] Speaker 00: And the specification expressly discloses the three well-known limited methods for mixing an active ingredient in a liquid, namely dissolution, emulsification, and suspension, or dispersion. [00:17:04] Speaker 00: And there's no dispute among the experts that dispersion means [00:17:07] Speaker 00: suspension. [00:17:08] Speaker 00: So what we have here is very connected teachings of everything involved in... Wait, I thought the example two was ketamine and it was dissolved, not suspended. [00:17:19] Speaker 04: Am I misremembering it? [00:17:22] Speaker 00: No, you're remembering that correctly, Your Honor. [00:17:24] Speaker 00: The board seemed to find, and we're not sure what they were doing here, but they seemed to find teaching of suspension in example two. [00:17:33] Speaker 04: In dissolution. [00:17:34] Speaker 04: Yeah, I know. [00:17:34] Speaker 04: What's up with that? [00:17:36] Speaker 00: is not correct. [00:17:38] Speaker 00: However, the specification, and the board found this in connection, albeit with its anticipation ruling at page six of its written decision, the board found there was expressed teaching in the specification, which there is, of these three limited well-known methods of mixing an active ingredient in a liquid. [00:17:58] Speaker 04: I'm not saying that you should lose, but I can't [00:18:05] Speaker 04: interpret the board's decision in particular its fact-findings across these issues in a way that makes any darn sense at all and so I mean I don't know I mean I think the best you can do is try to convince me that you know even a blind squirrel finds a nut once in a while and that's what the board did here they got it right even though you know they made all these what seemed to be inconsistent fact-findings [00:18:31] Speaker 04: But to me, it seems like the appropriate thing to do in light of that is to point that out and to send it back. [00:18:38] Speaker 00: Respectfully, they made fact findings about what the specification disclosed. [00:18:43] Speaker 00: And as I was starting to explain to Judge O'Malley, where they went off the reservation was in their interpretation of written description legal standard. [00:18:53] Speaker 00: And claim nine is specifically limited to the treatment [00:18:57] Speaker 00: of infection. [00:18:58] Speaker 00: That's what antibiotics like the claim for quinolone do. [00:19:01] Speaker 00: They treat infection. [00:19:03] Speaker 00: Ketamine does not treat infection. [00:19:06] Speaker 00: The experts agree on that. [00:19:07] Speaker 04: But we can't. [00:19:08] Speaker 04: That's fact-finding. [00:19:09] Speaker 04: We can't go down that road. [00:19:12] Speaker 00: Well, the board noted that ketamines are not used to treat infection. [00:19:17] Speaker 00: Where they erred on the written description analysis was saying that as a matter of law, there had to be [00:19:23] Speaker 00: some disclosure of an embodiment without ketamine or another erocycloalkamine. [00:19:30] Speaker 04: Well, because in this case, the claims require fluoroquinolone, right? [00:19:35] Speaker 00: Correct. [00:19:36] Speaker 04: So I guess I'm having, and it's probably my lack of understanding of the technology, but I'm having a little trouble following you. [00:19:44] Speaker 00: So the difficulty is [00:19:46] Speaker 00: After the board correctly found that there was an embodiment disclosed in the 2005 PCT application that comes within the scope of the interference count and they went to the written description analysis. [00:19:57] Speaker 04: The problem is I don't see that embodiment. [00:19:59] Speaker 04: Where is that embodiment in the PCT count application? [00:20:03] Speaker 00: It's example two. [00:20:05] Speaker 04: Which doesn't include a suspension and it doesn't include... [00:20:09] Speaker 04: fluoroquinolone. [00:20:11] Speaker 00: Correct. [00:20:12] Speaker 04: So that embodiment isn't within the scope of the interference calendar. [00:20:15] Speaker 00: There's no single express embodiment, but one of skill, as a matter of law, one of skill can look to the specification, and if one of skill can envision the claimed combination. [00:20:26] Speaker 04: That's not as a matter of law, that is a factual question. [00:20:29] Speaker 04: So your as a matter of law statement is absolutely wrong. [00:20:32] Speaker 00: No, what I meant to say was as a legal matter, Your Honor, if there's sufficient disclosure [00:20:38] Speaker 00: within the specification by which one of ordinary skill can envisage the claimed combination, then that's adequate written description support. [00:20:47] Speaker 00: The fact findings here by the board support the conclusion on priority. [00:20:54] Speaker 04: Don't we have cases that say obviousness is not enough to meet the written description standard, that it would be the fact that it has to be actually expressly taught? [00:21:03] Speaker 04: Obviousness. [00:21:04] Speaker 04: You guys keep using this envisage language. [00:21:06] Speaker 04: I will tell you I hate it. [00:21:07] Speaker 04: It's bad language. [00:21:08] Speaker 04: It gets people off track all the time, and I don't think you're using it properly. [00:21:12] Speaker 04: I think you're trying right now to substitute obviousness in for what needs to be an express written description language, hinging your argument on the envisage language that comes out of the case that comes out of. [00:21:24] Speaker 04: But the reason it came out of that case is that case involved ranges. [00:21:27] Speaker 04: I remember looking back at it and it was a matter of, yes, it actually did in fact disclose a specific example because that came, the case where the envisage language came from was a chemical compound claim that had a series of ranges and undoubtedly the point later rendered, described, was a combination that fell within each of the ranges and that's why the envisage language came into play. [00:21:54] Speaker 04: It isn't a substitute for obviousness. [00:21:56] Speaker 04: There was still anticipation, traditional old-fashioned anticipation in that case. [00:22:02] Speaker 04: You're now, though, trying to get me to do something different. [00:22:04] Speaker 04: You're trying to get me to pick fluoroquinolone from over here, a suspension from over here, and then combine it with example two. [00:22:13] Speaker 04: That's different. [00:22:14] Speaker 04: That's not envisage. [00:22:15] Speaker 04: Not the way envisage was used in the case it was used in. [00:22:18] Speaker 04: That's obviousness, and obviousness is not enough for a written description. [00:22:22] Speaker 00: Understood, Your Honor. [00:22:22] Speaker 00: But there's guidance here in the specification [00:22:25] Speaker 00: for taking example two, and then as the specification states, additional or other active ingredients, specifically the one named antibiotic being fluoroquinolone, can be added to the composition, can be included in the composition. [00:22:40] Speaker 03: But you don't dispute that example two doesn't teach suspension? [00:22:45] Speaker 00: Correct. [00:22:46] Speaker 03: OK, so where do you get the suspension from? [00:22:48] Speaker 00: We get the suspension from other disclosure in the specification, which the board noted at page six of its [00:22:55] Speaker 00: decision that expressly refers to the limited, well-known ways of mixing an active ingredient into a liquid, namely emulsion, dissolution. [00:23:06] Speaker 03: But that doesn't make example two an example that actually provides written description for what's in the claim. [00:23:16] Speaker 00: Correct. [00:23:16] Speaker 00: But the law does not require that there be a specific example that has all of the elements of the claim for there to be [00:23:24] Speaker 00: written description support. [00:23:26] Speaker 00: The guideposts are in the specification. [00:23:28] Speaker 00: There isn't a lot of picking and choosing to be done here. [00:23:31] Speaker 00: The spec says, here's an example, too. [00:23:33] Speaker 00: That's got everything except suspensional floor. [00:23:36] Speaker 00: Except the board did say that you were doing too much picking and choosing, right? [00:23:41] Speaker 00: And the board's finding anticipation, frankly, cannot be squared with its finding on priority, the anticipation. [00:23:48] Speaker 04: Is there a question of obviousness of autonomy's claims, or is it only anticipation? [00:23:54] Speaker 04: Because what you're saying, what I understand the PCT application to disclose may well render autonomy's claims obvious, but not anticipated in my view of the law. [00:24:06] Speaker 04: So is that in play at all? [00:24:08] Speaker 04: Is that part of the analysis? [00:24:10] Speaker 04: Is that an issue that is alive below or could be opened up below somehow? [00:24:16] Speaker 00: I don't know. [00:24:16] Speaker 00: I suppose it could be opened up below. [00:24:17] Speaker 00: The motion was directed to [00:24:19] Speaker 00: anticipation because of course autonomy provoked the interference by copying the ORIS claims and the ORIS disclosure we believe has each and every element of the autonomy claims which the board should have also found flowing from its priority support finding finding an embodiment within the scope of the interference count. [00:24:40] Speaker 00: I see them now into my rebuttal time. [00:24:42] Speaker 04: Okay absolutely you may save it. [00:24:45] Speaker 04: Okay Mr. Tornton. [00:24:54] Speaker 02: Thank you, Your Honor. [00:24:55] Speaker 02: I'd like to address a few points here. [00:24:57] Speaker 02: It sounds like there actually isn't much of a question about whether the second embodiment anticipates the count or autonomies claims. [00:25:09] Speaker 02: I'm happy to address that if there is. [00:25:11] Speaker 04: What if it renders it obvious, though? [00:25:13] Speaker 04: What if that disclosure renders it obvious? [00:25:15] Speaker 02: Well, first of all, of course, that wasn't the argument presented, so it's Your Honor points out. [00:25:20] Speaker 04: Trust me, I'm not deciding it. [00:25:22] Speaker 04: I'm just questioning, what would happen to your case if it does render it obvious? [00:25:27] Speaker 02: Well, they would have to mood to argue that it was obvious. [00:25:32] Speaker 02: And it's too late for them to do that at this point. [00:25:36] Speaker 02: I'd also like to point out, though, that they keep on doing things like pointing to the dispersion language. [00:25:41] Speaker 02: But even the dispersion, that's a contested issue among the parties, whether dispersion even teaches a suspension. [00:25:48] Speaker 02: It's actually a superset. [00:25:50] Speaker 02: So now we're getting into envisaging within envisaging. [00:25:54] Speaker 02: So there's several levels of that that need to go on there. [00:25:57] Speaker 02: So I think that's a problem. [00:25:58] Speaker 02: And I thought it was very striking when he said, well, the claim nine involves an infection. [00:26:04] Speaker 02: That's exactly the problem with the analysis, both by my friend and by the board here. [00:26:10] Speaker 02: They're starting with the claims and seeing if they can use them as a template to pick and choose something within the specification. [00:26:17] Speaker 02: That is not how these analyses are supposed to be done. [00:26:20] Speaker 02: You're supposed to look at the disclosure and see if it's providing the guidance. [00:26:24] Speaker 03: What are we supposed to do? [00:26:25] Speaker 03: Are we supposed to try to analyze the extent to which the board's factual findings are inconsistent? [00:26:33] Speaker 03: Or do you simply look at these one motion at a time, and if the first motion moves to the others, then it doesn't matter if there were later inconsistent fact findings? [00:26:42] Speaker 02: Well, I think for the purposes of reversal, you probably can do that. [00:26:47] Speaker 02: I agree with my friend that basically the anticipation motion and the benefit motion are mirror images of each other. [00:26:55] Speaker 02: The only one where the board actually did the correct analysis on the arguments the parties provided, on the evidence the parties provided, was the anticipation motion. [00:27:04] Speaker 02: They got that right because there is no basis for anticipation. [00:27:08] Speaker 02: Even if obviousness could come into play, even if that had been argued, [00:27:13] Speaker 02: obviousness is not enough to give them a benefit. [00:27:17] Speaker 02: So they would still lose on that argument for the purposes of benefit, not written description, but for the purposes of the benefit motion, they'd still be stuck with the 2014 date. [00:27:29] Speaker 02: They'd lose for that reason because they'd be years and years behind us. [00:27:33] Speaker 02: So, you know, again, they can't [00:27:37] Speaker 02: I realized I was confusing on the remand question. [00:27:41] Speaker 02: The court will, of course, have to remand the case. [00:27:44] Speaker 02: I guess my point is you can outright reverse on, particularly, the accorded benefit because the anticipation findings apply with equal force to the accorded benefit. [00:27:57] Speaker 02: And the board's already made those findings correctly. [00:27:59] Speaker 02: So if you agree they got the anticipation motion right, they must have gotten [00:28:05] Speaker 02: the benefit motion wrong. [00:28:08] Speaker 02: And they've already made the necessary fact findings that say that my friend stuck with the 2014 date. [00:28:16] Speaker 02: So yes, you will have to remand regardless. [00:28:19] Speaker 02: But you don't have to remand for them to reopen the issues. [00:28:23] Speaker 02: I specifically would say you shouldn't remand the written description for them to reopen because, of course, AORUS didn't make that argument. [00:28:30] Speaker 02: So it would be inappropriate to remand for them to consider an argument. [00:28:33] Speaker 02: that ours waives, that ours doesn't want to be decided. [00:28:39] Speaker 02: I think that hits most of the points I wanted to... You don't have to use all your time, that's good. [00:28:44] Speaker 04: Mr. Gray, you've got a little bit of a rebuttal time. [00:28:45] Speaker 02: Happy to give it back. [00:28:46] Speaker 04: You have to limit yourself to the cross appeal issue, which is anticipation. [00:28:52] Speaker 00: Thank you, Your Honor. [00:28:58] Speaker 00: Yes, I was going to do that first. [00:29:00] Speaker 00: The record citation for [00:29:03] Speaker 00: Dr. Berklin's testimony that's found at page 42 of our red brief, the block quote of his testimony with the various appendix page sites. [00:29:23] Speaker 00: Is that sufficient, Your Honor? [00:29:25] Speaker 01: Well, I want to know. [00:29:27] Speaker 01: The board says in that area of its discussion [00:29:32] Speaker 01: that there was evidence that fluoroquinoline is contraindicated, that it causes undesirable side effects. [00:29:47] Speaker 01: And so I want you to point me to where that's discussed in your expert's testimony. [00:29:55] Speaker 00: Contraindication of fluoroquinoline? [00:29:57] Speaker 00: Are you referring, Your Honor, with respect to the priority [00:30:03] Speaker 01: Let me see where it is. [00:30:10] Speaker 01: I noted it in passing, and that was my interest. [00:30:14] Speaker 00: I don't recall that point in the record. [00:30:17] Speaker 01: At 23, further autonomy asserts that the person having ordinary skill would have known that fluoroquinolones are not approved for treatment of tinnitus and ellipsis, and might actually cause them as [00:30:32] Speaker 01: unwanted side effects. [00:30:34] Speaker 00: Understood now, Your Honor. [00:30:36] Speaker 00: There's nothing in the claim language that requires the treatment of tinnitus. [00:30:42] Speaker 00: The count goes to any ear disease, middle or inner ear disease, Your Honor, and there's nothing in example two, if I think this is what you may be referring to in the argument, there's nothing in example two limiting that to the treatment of tinnitus. [00:31:01] Speaker 00: And in fact, the specification says... Oh, I put an ellipsis in there. [00:31:05] Speaker 01: There's a long way. [00:31:06] Speaker 00: And in fact, the specification says, one, you could take example two of the disclosure here, and you could add fluoroquinolone for treatment of other diseases, i.e., infections. [00:31:18] Speaker 04: Okay. [00:31:18] Speaker 04: I think we're out of time. [00:31:19] Speaker 04: I thank both counsel for their arguments. [00:31:21] Speaker 04: The case is taken under submission.