[00:00:54] Speaker 02:
Okay, the next argued case is number 18-1125, Rapid Completions LLC against Baker Hughes, Incorporated.

[00:01:03] Speaker 02:
Mr. Nimalaitis.

[00:01:08] Speaker 03:
Thank you, Your Honors.

[00:01:13] Speaker 03:
In these IPRs, the Board applied the wrong legal standard for determining whether a parent application provides sufficient written description support for a later filed genus claim.

[00:01:22] Speaker 03:
And I want to quickly go over a few key facts for this case, which I think should be undisputed, but they're important for how it applies to the standard.

[00:01:30] Speaker 03:
So first, each of the claims at issue here requires a specific set of mechanical components.

[00:01:38] Speaker 03:
One of those components is some kind of mechanism for opening the ports in an oil and gas tubing stream.

[00:01:45] Speaker 03:
Now, the claims cover two different types of port opening mechanisms.

[00:01:52] Speaker 03:
One of those mechanisms is what we refer to in the briefing as the two-piece plug embodiment.

[00:02:01] Speaker 03:
And that is what's disclosed in the preferred embodiment.

[00:02:04] Speaker 03:
So the preferred embodiment focuses on that two-piece plug opening mechanism.

[00:02:08] Speaker 03:
The other type of port opening mechanism is the one-piece plug opening mechanism.

[00:02:13] Speaker 03:
That is not specifically disclosed in these patterns.

[00:02:17] Speaker 03:
But everyone agrees that that alternative port opening mechanism was already known in the prior art.

[00:02:23] Speaker 03:
So that's the basic issue here.

[00:02:25] Speaker 03:
It's the same as any other genus species case, where you have a genus claim.

[00:02:29] Speaker 03:
It covers at least two species.

[00:02:31] Speaker 03:
Here, one of them is disclosed in the specification of issue.

[00:02:35] Speaker 03:
One of them is not.

[00:02:36] Speaker 00:
Isn't your problem that you broke the chain of continuity from the 06-7 patent to, say, the 009?

[00:02:47] Speaker 00:
You have broader claims in the 009 and 5-1 patents, which are before us.

[00:02:53] Speaker 00:
And they may or may not have been supported by 047.

[00:03:01] Speaker 00:
But when you file 009451, you change the disclosure.

[00:03:09] Speaker 00:
So you've got broader claims here.

[00:03:12] Speaker 00:
And because of the break in the chain, they're anticipated by 067.

[00:03:21] Speaker 00:
Do I misunderstand?

[00:03:23] Speaker 03:
So that's partly right, but I think legally it's not quite as straightforward as you seem to be saying, or as I understand the point to be.

[00:03:32] Speaker 03:
So yes, there's an original parent application.

[00:03:36] Speaker 03:
Later on, a continuation in part was filed.

[00:03:39] Speaker 03:
And then these applications were filed.

[00:03:43] Speaker 03:
So that continuation in part relates to some other claims that aren't even at issue here.

[00:03:48] Speaker 03:
And the issue here is, do these particular claims, even though they're

[00:03:53] Speaker 03:
a later application that ultimately goes through a continuation part, do these particular claims have written description support that goes all the way back to the original parent?

[00:04:03] Speaker 00:
With a break.

[00:04:05] Speaker 00:
Isn't there a break?

[00:04:07] Speaker 00:
Did that appear in the 047 patent?

[00:04:11] Speaker 03:
The specification of the original parent application is identical to the specifications here.

[00:04:18] Speaker 00:
Yes, but was that the same in the 047 patent?

[00:04:22] Speaker 00:
which you need for continuity so that the 067 is not a reference against you?

[00:04:31] Speaker 03:
Well, the same material in the original parent application carries through all of the applications.

[00:04:37] Speaker 03:
There was the continuation in part where some new material was added, but that new material isn't even included in these particular applications.

[00:04:45] Speaker 03:
So we can, for these claims,

[00:04:50] Speaker 03:
What we are pointing to is material in the specification of these patents that also appears in all prior applications leading to these.

[00:04:57] Speaker 00:
You're saying there's nothing missing in 047 that was in everything else?

[00:05:04] Speaker 03:
I believe that to be the case.

[00:05:07] Speaker 03:
This particular issue, I don't believe was ever raised below or in any of the briefing.

[00:05:12] Speaker 03:
And so I've got to be honest, I did not review the file histories with that idea in mind.

[00:05:19] Speaker 00:
But isn't that the point of not having an early patent be a reference against a later one, that the later one is entitled to the priority date of the earlier one, and if there are intervening applications, that they maintain a continuity of disclosure?

[00:05:41] Speaker 03:
I believe I agree with that, and we have that continuity here.

[00:05:45] Speaker 02:
But you don't have a continuity of disclosure in the specification.

[00:05:48] Speaker 02:
All you have is the additional, the broadening of the claim.

[00:05:52] Speaker 02:
Isn't that the only difference?

[00:05:56] Speaker 01:
Is the specification for the 047, the intervening thing, where a new matter was added, was that specification the same as the spec from the 807 application, the 67 patent?

[00:06:10] Speaker 03:
The continuation in part application.

[00:06:12] Speaker 01:
We know that the spec from the original

[00:06:16] Speaker 01:
067 patent, the 807 application, is the same spec as we have for the 009, right?

[00:06:24] Speaker 00:
Right, right.

[00:06:25] Speaker 01:
So there was an intervening application where some subject matter was added, right?

[00:06:30] Speaker 03:
Right.

[00:06:31] Speaker 01:
Was that specification the same?

[00:06:34] Speaker 03:
Yes, it was the same, but for the addition of the new material.

[00:06:38] Speaker 03:
New material.

[00:06:39] Speaker 01:
So all three specifications were the same?

[00:06:41] Speaker 03:
Right.

[00:06:45] Speaker 01:
And the broken chain intervention issue wasn't decided below.

[00:06:53] Speaker 01:
This case was taken simply as a basis of the 067 patent, the 807 application, not providing written description support for the claims that were added in the 009, right?

[00:07:08] Speaker 03:
Right, exactly.

[00:07:09] Speaker 03:
There was never an argument that it was improper for us to claim priority back to that original parent application.

[00:07:14] Speaker 03:
The question always was, do these claims have re-description support there?

[00:07:20] Speaker 03:
And getting onto that issue.

[00:07:23] Speaker 01:
And the board made a fact finding that the port opening sleeve structure was necessary for the original invention?

[00:07:33] Speaker 03:
Yes, they did state that.

[00:07:37] Speaker 03:
That, I think, is really the crux of the legal error in the board's decision.

[00:07:43] Speaker 03:
I completely agree that if you look at figure six, it has a series of components in it.

[00:07:48] Speaker 03:
And if you take out any one of those components, that figure will fail.

[00:07:52] Speaker 03:
But that is true of almost any figure in any mechanical patent.

[00:07:55] Speaker 03:
The real question, and it's the same question that comes up in any genus species case, is not, if you take a part out, will that cause this particular embodiment to fail?

[00:08:04] Speaker 03:
It is, if you take a part out and replace it with something that is functionally equivalent, would a person of skill in the art recognized

[00:08:12] Speaker 03:
that that functional equivalent was, in fact, equivalent, that it would be predictably able to perform in the same way.

[00:08:20] Speaker 01:
And that's why so many of these cases, and particularly the Bilstad case, which really was... That's why the necessity argument was what caught my mind in the board's finding, that written description is a fact issue, what the references teach is a fact issue, whether or not the board opening sleeve is necessary as opposed to optional seemed to me to be

[00:08:43] Speaker 01:
reading from the references and as a matter of fact, and so on the substantial evidence, standard of review that we have, I had a problem with your appeal, which you can understand, I think.

[00:08:55] Speaker 03:
Yes.

[00:08:56] Speaker 01:
How do you rise up over that problem, if I'm correct, that the question of whether or not the court opening sleeve is necessary is a fact question.

[00:09:04] Speaker 01:
The board said it thought it was.

[00:09:07] Speaker 01:
You think it's not.

[00:09:08] Speaker 03:
Yes, Your Honor.

[00:09:09] Speaker 01:
Who wins?

[00:09:11] Speaker 03:
We win.

[00:09:12] Speaker 01:
Why?

[00:09:12] Speaker 01:
on the standard of review, the board wins.

[00:09:16] Speaker 03:
That would be true if the board applied the correct legal standard.

[00:09:19] Speaker 01:
Because their conclusion... By the correct legal standard, you're going to say that the species always describes the choice.

[00:09:29] Speaker 03:
I'm going to say if the board has to consider knowing what a person of skill in the art would have known about the prior art, about what is available to them at that point, would this person of skill in the art have thought

[00:09:40] Speaker 03:
that this is necessary to every embodiment of the patent, or is it just something that's necessary to make that particular figure work?

[00:09:48] Speaker 03:
And I'll give you another example.

[00:09:49] Speaker 03:
In that same figure, it shows multiple sleeves in the tubing string that are all held in place.

[00:09:55] Speaker 03:
Each one of those sleeves is held in place because there's a little metal pin that connects the sleeve to the tubing string.

[00:10:01] Speaker 01:
And those pins are dislodged by the port opening sleeve as it moves down the pipe.

[00:10:06] Speaker 03:
Right.

[00:10:07] Speaker 01:
So those additional port opening and closure sleeves wouldn't function without the port opening sleeve.

[00:10:15] Speaker 01:
You take the port opening sleeve out, nothing happens.

[00:10:17] Speaker 01:
The ball just sort of slides down the pipe and doesn't affect any openings or closings.

[00:10:25] Speaker 01:
That's, I think, why the board felt that the port opening sleeve was a necessity.

[00:10:32] Speaker 03:
So two issues here.

[00:10:34] Speaker 03:
on this point I was making about the pins holding the sleeves in place.

[00:10:38] Speaker 03:
Those pins are what's disclosed in the figure as holding those sleeves in place.

[00:10:42] Speaker 03:
If you take those pins out... What do they call them?

[00:10:44] Speaker 03:
Shear pins.

[00:10:45] Speaker 01:
Shear pins?

[00:10:47] Speaker 03:
If you take those pins out, all those sleeves can just move around however... Dogs?

[00:10:50] Speaker 01:
Are those the dogs?

[00:10:52] Speaker 01:
What are the dogs?

[00:10:53] Speaker 03:
Dogs are something, a completely different mechanism, has nothing to do with the shear pins.

[00:10:57] Speaker 03:
The point I'm making about the shear pins is, if you take those pins out,

[00:11:00] Speaker 03:
The sleeves can just move around.

[00:11:01] Speaker 03:
They won't be held in place until the ball hits and causes the reaction that you want.

[00:11:06] Speaker 03:
But everyone knows that shear pins are not the only way to hold things in place.

[00:11:09] Speaker 01:
Which of the shear pins is on the number of the drawing?

[00:11:14] Speaker 01:
I'm looking at the red brief, which you don't want me to at page eight, just because it's got the tin color.

[00:11:23] Speaker 03:
It's easier to see.

[00:11:24] Speaker 03:
So 350?

[00:11:26] Speaker 01:
Figure six.

[00:11:28] Speaker 01:
Where are the pins in figure six?

[00:11:30] Speaker 01:
Please.

[00:11:33] Speaker 03:
350 is an example.

[00:11:34] Speaker 01:
350, OK.

[00:11:37] Speaker 03:
So that's a pin holding it in place until the ball comes down, hits that seat, and the fluid pressure causes the ball in the sleeve, the combined plug, to push down the hole.

[00:11:46] Speaker 03:
And it shears it.

[00:11:46] Speaker 01:
So what happens to the 350 pin when the ball, the 324, pushes into the port opening sleeve?

[00:11:55] Speaker 03:
Once the fluid pressure is sufficient,

[00:11:57] Speaker 03:
That pin breaks.

[00:11:58] Speaker 01:
Pops the pin.

[00:11:58] Speaker 03:
Yes, and it's allowed to move down the tubing string.

[00:12:02] Speaker 03:
But the person who's going to do that would recognize that you could use shear screws, you could use an adhesive, you could use anything that holds it in place until the fluid pressure gets high enough.

[00:12:10] Speaker 03:
But there's never been an argument that these things are inbound.

[00:12:12] Speaker 01:
I mean, all of that, that's irrelevant.

[00:12:14] Speaker 01:
That doesn't do anything for opening and closing holes in the pipe for purposes of fracking, right?

[00:12:20] Speaker 01:
That happens when you get to the port closure sleeve part of the patent.

[00:12:26] Speaker 01:
I mean, for example, if you just take in figure six and you take the ball and you push it up against the port opening sleeve and start pushing it down the pipe, right?

[00:12:37] Speaker 01:
Right.

[00:12:37] Speaker 01:
Then you have to get to a place where there's an opening in the pipe that you're going to, nothing is happening until you get to that next step, right?

[00:12:45] Speaker 00:
Right.

[00:12:47] Speaker 01:
So why is it significant that you have the pins?

[00:12:53] Speaker 03:
Because.

[00:12:53] Speaker 01:
What is your pin argument?

[00:12:55] Speaker 03:
The pin is necessary to make Figure 6 work.

[00:12:57] Speaker 03:
If you take the pin out and don't replace it with anything, Figure 6 fails to work.

[00:13:01] Speaker 03:
The claims don't say anything about what type of pin or adhering mechanism it's used.

[00:13:05] Speaker 03:
But there's never been an argument that the claims are invalid because they fail to recite that particular component.

[00:13:10] Speaker 03:
And so that's just an example of how the proper way to do it.

[00:13:14] Speaker 01:
But doesn't that go to support the board's argument that the structure of the port opening sleeve is necessary for the invention?

[00:13:21] Speaker 01:
It's necessary to have the pins, 350,

[00:13:24] Speaker 01:
it's necessary to have.

[00:13:26] Speaker 01:
It's like a mount.

[00:13:28] Speaker 01:
Then it's going to slide down the pipe.

[00:13:30] Speaker 01:
And when it gets to a particular point at the pipe, then the dogs are going to suffice to help to open the hole in the pipe to allow the material that's pushed down in the pipe to go out into the rock.

[00:13:43] Speaker 01:
Right?

[00:13:44] Speaker 01:
Right.

[00:13:44] Speaker 01:
And when you're finished with that hole, if you push it hard enough, it'll go on past and it'll automatically close the hole where you have previously pushed in the material.

[00:13:53] Speaker 01:
and you go to a depth lower to decide whether you need to do some fracking there.

[00:13:59] Speaker 01:
So it's incremental.

[00:14:01] Speaker 01:
The device, the carriage, is going down the pipe incrementally from first to one hole to do a little fracking and then to another.

[00:14:10] Speaker 01:
That's the way it works, isn't it?

[00:14:11] Speaker 03:
Yes.

[00:14:12] Speaker 01:
And the board, looking at this, reached a factual conclusion this invention won't work.

[00:14:18] Speaker 01:
The port opening sleeve is a necessity.

[00:14:21] Speaker 03:
They were analyzing the wrong issue.

[00:14:23] Speaker 03:
What they asked was, will figure six work if you remove this component?

[00:14:27] Speaker 03:
And that's not the question.

[00:14:28] Speaker 03:
That's not what the law requires.

[00:14:30] Speaker 03:
If that's what the law required, you look at a figure of a mechanical device and figure out.

[00:14:35] Speaker 01:
What was wrong with the way I was seeing this, whether it's figure six or whether it's just simply looking at how the invention functions and looking at the significance of the port opening sleeve?

[00:14:47] Speaker 01:
Because you have an invention that you're trying to save from invalidity that does not require a port opening sleeve, doesn't require any structure like that, apparently to achieve the opening and closing of the holes.

[00:15:04] Speaker 01:
And so what the board was saying is, well, where is there support in the priority application?

[00:15:12] Speaker 03:
And I can address that question.

[00:15:14] Speaker 03:
If you look back at the background of the patent section, it talks about what did the inventors think they invented?

[00:15:20] Speaker 03:
What problem were they trying to solve?

[00:15:21] Speaker 03:
They talk about how one way of running a tubing string was to divide it up into stages.

[00:15:25] Speaker 03:
So we were using one device or one plug, something like that, to open up a port in a particular stage.

[00:15:30] Speaker 03:
You frack it.

[00:15:31] Speaker 03:
Another device opens up the next port.

[00:15:33] Speaker 03:
Frack that.

[00:15:33] Speaker 03:
Another device opens up the next port.

[00:15:35] Speaker 03:
So that's fine, but it's not terribly efficient.

[00:15:37] Speaker 03:
So they talk about another thing done in the prior architecture.

[00:15:40] Speaker 03:
You have multiple holes in the tubing string, but nothing's covering them.

[00:15:43] Speaker 03:
So you just run that down hole and you can pump fluid through all those holes at the same time and treat a larger section of the well.

[00:15:50] Speaker 03:
But that has other problems.

[00:15:51] Speaker 03:
If you're not closing up those holes when you're running it into the well, there's a number of technical problems that can come up.

[00:15:56] Speaker 03:
So what they came up with is a way to open up multiple holes or multiple ports in the device using a single plug so that you can do that simultaneous fluid treatment.

[00:16:08] Speaker 03:
When you look back at the background of the invention section, it says nothing about how critical this figure six sleeve is.

[00:16:14] Speaker 03:
It doesn't mention that at all.

[00:16:17] Speaker 03:
And I believe that's the end of my time.

[00:16:19] Speaker 01:
And where is that in the 009?

[00:16:21] Speaker 01:
Can you give me a column?

[00:16:24] Speaker 03:
Columns one and two.

[00:16:25] Speaker 01:
Column one?

[00:16:27] Speaker 03:
Yes.

[00:16:27] Speaker 01:
Background of the invention.

[00:16:29] Speaker 03:
And the key point I'm making here is that.

[00:16:31] Speaker 01:
Right, but I mean, nowhere below did you argue that that was the hook in the specification.

[00:16:37] Speaker 01:
that describes the invention that you're claiming.

[00:16:41] Speaker 01:
As I understand written description law, you can't do it entirely from what is in the mind of the ordinary artisan.

[00:16:50] Speaker 01:
To use vernacular, you need a hook.

[00:16:52] Speaker 01:
You need to find something in the specification that one ordinary skill in the art would have understood to describe the scope of your invention.

[00:17:02] Speaker 01:
So what's the hook?

[00:17:04] Speaker 01:
in the 009 application?

[00:17:06] Speaker 03:
The embodiment that matches up with these claims is Figure 6.

[00:17:09] Speaker 03:
But the question is, in a genus species case, is that particular embodiment enough to claim the broader genus?

[00:17:15] Speaker 03:
When you look at what the inventors explained about what they were trying to invent, which is using one plug to open multiple ports to simultaneous fluid treatment, it's clear that you don't need to limit the claims to just the specific mechanical device shown in Figure 6.

[00:17:29] Speaker 02:
OK.

[00:17:29] Speaker 02:
We'll save you rebuttal time.

[00:17:36] Speaker 02:
Okay, Mr. Garrett.

[00:17:50] Speaker 04:
Good morning.

[00:17:51] Speaker 04:
May it please the court, Mark Garrett, for appellees.

[00:17:53] Speaker 04:
The inventors never said that the function of the invention

[00:17:59] Speaker 04:
is one plug opens multiple ports.

[00:18:03] Speaker 04:
That's really the fundamental shortcoming with the factual argument that he just made.

[00:18:07] Speaker 04:
If you look at the summary of the invention, the description says, the invention always includes a port opening sleeve.

[00:18:16] Speaker 04:
And there are two different aspects.

[00:18:19] Speaker 04:
In one aspect, and it's using the port opening sleeve to open many different port closures.

[00:18:27] Speaker 04:
So there are two versions of this.

[00:18:29] Speaker 04:
In one version, the port opening sleeve is the port opening sleeve we see in Figure 5, which they call the port cutter sleeve.

[00:18:38] Speaker 04:
And with that sleeve, you can open multiple port closures that take the form of caps.

[00:18:45] Speaker 04:
So that port opening sleeve captures a ball, travels down the tubing string under pressure, shears off those caps.

[00:18:54] Speaker 04:
The port closures are opened.

[00:18:56] Speaker 01:
In the other version... It doesn't close them up again when it leaves.

[00:18:58] Speaker 04:
It does not.

[00:19:00] Speaker 01:
Figure five is just basically still using the same port opening sleeve but driving it through the length of the pipe without any intermediate stopping.

[00:19:09] Speaker 04:
That's correct.

[00:19:10] Speaker 01:
Or without closing the ones they open.

[00:19:12] Speaker 04:
Without closing the ones that they open.

[00:19:13] Speaker 04:
And so in the other version, you see what we see in figure six, which is a port opening sleeve that has dogs on the outside of it.

[00:19:21] Speaker 04:
It gets the plug.

[00:19:22] Speaker 04:
It travels down.

[00:19:23] Speaker 04:
And in that version, the port closures are the port closure sleeves.

[00:19:29] Speaker 04:
The invention has always, always been about a port opening sleeve.

[00:19:34] Speaker 04:
It's either going to shear off the port closures or it's going to engage with and shift the port closures.

[00:19:39] Speaker 04:
There is not one... What do you do with Eccles?

[00:19:41] Speaker 01:
Isn't Eccles the priority patent that deals with this problem without using a port opening sleeve?

[00:19:49] Speaker 04:
Eccles does address the opening of multiple sleeves with a single

[00:19:56] Speaker 04:
And it does not use, as you pointed out, Your Honor, a port opening sleeve like what is shown.

[00:20:02] Speaker 01:
OK.

[00:20:03] Speaker 01:
So one of ordinary's killing the heart clearly would have known before the original patent was filed how to achieve this with just using a plug or a ball.

[00:20:17] Speaker 04:
Right.

[00:20:17] Speaker 04:
So the question is, Eccles existed.

[00:20:20] Speaker 04:
And its operation is knowable.

[00:20:21] Speaker 04:
And our expert testified to that in paragraph 59 of the Second Declaration, which is on

[00:20:27] Speaker 04:
page 1464 of the appendix.

[00:20:30] Speaker 04:
But the question for written description support isn't just, what does the claim cover?

[00:20:35] Speaker 01:
That's basically- Well, I know what I'm trying to get back at is that if written description requires, it doesn't require anything in the spec.

[00:20:43] Speaker 01:
If it's just in the mind of one of ordinary skill in the art, then you'd sit down, right?

[00:20:47] Speaker 01:
Because Eccles would take you away.

[00:20:49] Speaker 01:
That's right.

[00:20:51] Speaker 01:
So the question here is, what is there in the description

[00:20:55] Speaker 01:
that suggests that the patentee had equity in mind.

[00:20:58] Speaker 04:
That's right.

[00:20:59] Speaker 04:
And the way we get to answering that question, I think, most immediately is to look at column 9, line 45, to column 10, line 38.

[00:21:08] Speaker 04:
You won't see it.

[00:21:09] Speaker 01:
Which is it?

[00:21:10] Speaker 04:
So it's column 9, line 45, to column 10, line 38.

[00:21:18] Speaker 04:
And I'm looking at A85.

[00:21:21] Speaker 04:
Yep.

[00:21:23] Speaker 04:
The challenge for them and the problem with their position is when you read this description, you will not find a single example of language suggesting that the function performed by the port opening sleeve, in other words, engaging the port closure sleeve and shifting it open, is a function that generally can be accomplished with structures that aren't shown.

[00:21:47] Speaker 04:
There's no language along the lines of

[00:21:50] Speaker 04:
It's not shown in the figures, but you could do this function in a different way.

[00:21:54] Speaker 01:
Well, your argument would be the same with your argument to figure five, right?

[00:21:57] Speaker 04:
That's... I believe that's correct.

[00:21:59] Speaker 01:
Well, you'd make the same argument.

[00:22:00] Speaker 04:
Yes.

[00:22:01] Speaker 01:
Figure five won't work without the port opening sleeve.

[00:22:06] Speaker 01:
That's correct, Your Honor, but it... Because all figure six is adding is a little fancier version of one that says, well, I'll close the door as much as I open them.

[00:22:14] Speaker 04:
Yes.

[00:22:15] Speaker 04:
Yes.

[00:22:17] Speaker 04:
So there's no general language in the column and line numbers that I just cited that would suggest to a person of ordinary skill in the art that reading that, you could accomplish this with a different function, something like what's shown in Echols.

[00:22:31] Speaker 04:
We're not disputing that the claim covers Echols, but that's not the real question.

[00:22:35] Speaker 04:
So their arguments have boiled down to legal error.

[00:22:38] Speaker 04:
They want to charge the board with legal error.

[00:22:41] Speaker 04:
The board's legal analysis and its legal standard appears on pages 10 and 11 of the record.

[00:22:46] Speaker 04:
And it's reflected throughout its discussion of the issues and arguments that the parties raise.

[00:22:51] Speaker 04:
All of its statements are correct statements of the law.

[00:22:53] Speaker 04:
Its application of those is correct.

[00:22:56] Speaker 04:
Their main arguments are a single species supports a genus.

[00:23:00] Speaker 04:
We know that's not correct from Curtis, as we pointed out.

[00:23:03] Speaker 04:
We know it's not correct from Ariad.

[00:23:06] Speaker 04:
This court's invoked a decision that decided, in part, the scope of their indescription requirement.

[00:23:11] Speaker 04:
They've essentially kind of backed off of that in their reply and dropped back and said,

[00:23:16] Speaker 04:
The board needed to make a finding on predictability.

[00:23:18] Speaker 04:
And to the extent that they argued predictability below, that's on pages 359 to 362 of the record.

[00:23:25] Speaker 04:
And the board addressed those arguments on pages 9, 10, 14, and 15.

[00:23:30] Speaker 04:
So to the extent that they're charging the board with error over needing to make a predictability finding, in fact, the board did find that.

[00:23:37] Speaker 04:
Their last legal error argument is really grounded in the obviousness issue.

[00:23:41] Speaker 04:
Can obviousness be a bridge to written description support?

[00:23:44] Speaker 04:
And did the board err by not giving credit to their expert's testimony, Mr. McGowan, who admitted that what he was contending about what the art would show is really what it would show, what would have been obvious to a person of ordinary skill in the art.

[00:23:58] Speaker 04:
And the board analyzed that issue the same way, sorry, yes, the board analyzed that issue the same way that this court analyzed it in ICU medical and the same way that Ariad tells us is proper to analyze it.

[00:24:10] Speaker 04:
Obviousness is not a legal bridge to re-description support.

[00:24:13] Speaker 01:
So for those reasons, unless there are further questions, we'll... How important is the board's finding that the port opening sleeve is necessary?

[00:24:26] Speaker 04:
I think it is important and it's fully supported by the record.

[00:24:32] Speaker 01:
Their statement... Disposing?

[00:24:39] Speaker 04:
I believe it probably is dispositive, because in making that statement, the considerations that they took into account weren't just the language that I quoted from.

[00:24:50] Speaker 01:
It seemed to me that the statement was shorthand for quite a long war.

[00:24:53] Speaker 04:
It was.

[00:24:54] Speaker 04:
And so what I was getting to is they took into consideration the scope of the original claims.

[00:25:00] Speaker 04:
That's a strong reflection of what the inventors intended their invention to be.

[00:25:04] Speaker 04:
They looked at the abstract, and that also

[00:25:09] Speaker 04:
was part of the decision in which the board interpreted and examined patent owner's arguments, appellant's arguments, about the predictability issue that it relies on now.

[00:25:19] Speaker 04:
So I think that statement reflects the board's consideration and is consistent with the board's consideration of all the arguments and the evidence that the other sides support.

[00:25:30] Speaker 02:
Any more questions?

[00:25:31] Speaker 02:
No, thank you.

[00:25:31] Speaker 02:
Any more questions?

[00:25:32] Speaker 02:
Thank you.

[00:25:33] Speaker 02:
Thank you, Mr. Garrett.

[00:25:34] Speaker 02:
Thank you.

[00:25:47] Speaker 03:
Thank you, Your Honors.

[00:25:49] Speaker 03:
Judge Bender asked the question, what does the description show about what the patentee had in mind about what this invention is?

[00:25:56] Speaker 03:
And I think that's an interesting way to phrase the issue here, because I admitted up front that this particular embodiment not disclosed in the specification.

[00:26:06] Speaker 03:
I don't think there's any requirement, though, that the only way you can get a genus claim is if you include some kind of Weasley language about how

[00:26:13] Speaker 03:
We can use other things that do something similar, something like that.

[00:26:15] Speaker 03:
I mean, there is some kind of that boilerplate language in this patent.

[00:26:18] Speaker 03:
But I don't think that's a dispositive issue.

[00:26:20] Speaker 03:
What matters is, knowing what a person of skilling art knows, what would they recognize as the predictable alternatives?

[00:26:26] Speaker 03:
And that is the way this issue is characterized in Bilstead, Honeywell, Hynex, Peters, Rasmussen.

[00:26:31] Speaker 03:
In the briefing, we talk about all those cases.

[00:26:33] Speaker 03:
But there was one thing common to all of them.

[00:26:36] Speaker 03:
They disclose a particular embodiment.

[00:26:38] Speaker 03:
They don't disclose another embodiment.

[00:26:40] Speaker 03:
The claims cover all of them.

[00:26:41] Speaker 03:
And what that issue turned on is, what would a person of skill in the art know, and how would they have interpreted the patent?

[00:26:48] Speaker 03:
And the other, I think, big point here is getting back to the board's necessity finding, where they said that this is a necessary feature.

[00:26:56] Speaker 03:
That is a conclusion.

[00:26:57] Speaker 03:
So you've got to look at what reasoning did the panel provide to reach that conclusion.

[00:27:01] Speaker 03:
Because it doesn't matter what we think they were thinking about.

[00:27:04] Speaker 03:
What matters is what is written in the decision itself.

[00:27:08] Speaker 03:
It's an administrative decision.

[00:27:10] Speaker 03:
And what is in the decision

[00:27:11] Speaker 01:
Well, they made a predictability decision that's adverse to you, right, on the predictability point?

[00:27:19] Speaker 03:
No, their finding of necessity was based on two facts.

[00:27:23] Speaker 03:
The figure six, the two-piece plug embodiment is described in the abstract, and that's what the original claims were focused on.

[00:27:30] Speaker 03:
But that cannot be dispositive on this issue.

[00:27:33] Speaker 03:
Those two facts alone can't do it, because you've got to consider what a person with skill in the art know, what was already in the prior art.

[00:27:39] Speaker 03:
So everyone knows that

[00:27:40] Speaker 03:
this alternative was known in the prior art, and would a person of skilling art recognize that that alternative operated in the same way?

[00:27:48] Speaker 03:
And the experts basically agreed that, yes, it would have been easy to swap out one for the other that was already known.

[00:27:54] Speaker 03:
So given that that's the fact background, that's really what's dispositive here.

[00:27:59] Speaker 03:
At a minimum, the board should have looked at those facts, looked at the expert testimony, and saw how that applied in the written description context.

[00:28:06] Speaker 03:
And they did not do that.

[00:28:09] Speaker 03:
The finding that this was the necessary element of the invention was just based on those two facts, and that is insufficient to meet the burden under this test.

[00:28:17] Speaker 03:
Unless there's any further questions.

[00:28:19] Speaker 02:
No questions?

[00:28:21] Speaker 02:
No.

[00:28:21] Speaker 02:
Thank you.

[00:28:21] Speaker 02:
Thank you both.

[00:28:22] Speaker 02:
The case is taken under submission.