[00:00:45] Speaker 03: Okay, our next case is number 18-1752, Dexcom Inc. [00:00:50] Speaker 03: versus Waveform Technologies. [00:00:52] Speaker 03: Mr. Kostanis. [00:01:00] Speaker 02: Thank you. [00:01:00] Speaker 02: Good morning, Your Honor, and may it please the Court. [00:01:03] Speaker 02: There's no question in this case that Rosenblatt discloses a background product that has platinum directly contacting a tantalum core. [00:01:12] Speaker 02: Everyone agrees on that. [00:01:14] Speaker 02: We do. [00:01:14] Speaker 02: Waveform does, and the board does. [00:01:17] Speaker 00: Rosenblatt... But does it disclose it for use in electrical mechanical processes? [00:01:23] Speaker 02: It discloses it for purposes of... We're talking right now about the background art that's disclosed in Rosenblatt and said to be unsatisfactory. [00:01:32] Speaker 00: Well, it just says electroplating exists, right? [00:01:36] Speaker 00: But it doesn't say it exists for use for the purposes contemplated by the patent, right? [00:01:42] Speaker 02: For the purposes contemplated by Rosenblatt. [00:01:45] Speaker 00: Yes, which is in the... Is it your view that simply there are just such a limited number of options for perfecting this that in that 53 years in between Rosenblatt and the patent, that it would have been obvious that for anyone skilled in the art to come up with this solution for these purposes? [00:02:05] Speaker 02: For the purposes of the 202 and 433 patents, absolutely, because the in vivo [00:02:13] Speaker 00: application of these sensors is very different than the harsh... But you never argued below that the in-body, in vivo application is any less corrosive, did you? [00:02:28] Speaker 02: Oh no, quite on the contrary. [00:02:30] Speaker 00: You didn't present any evidence to that fact. [00:02:32] Speaker 02: No, in fact there was no finding of the board to the contrary on that, which I think is the more important point, Judge O'Malley. [00:02:37] Speaker 02: Because you didn't argue that... No, we did argue that in fact the other side [00:02:41] Speaker 02: agrees with our proposition. [00:02:43] Speaker 02: In fact, if you look at... Let me just make sure that I can tell you exactly where it is in their briefing before the board. [00:02:55] Speaker 02: Our friends at Waveform distinguished the very corrosive, very intense industrial environment from the in vivo application. [00:03:04] Speaker 02: That's page A507 of the appendix. [00:03:07] Speaker 04: Yes, Judge Clevenger? [00:03:10] Speaker 04: 3287, Dr. Vachon's testimony. [00:03:18] Speaker 04: Or I thought he was asked whether there was a difference between essentially the environment and the frozen blade and the environment and blood. [00:03:28] Speaker 04: And he said, no, same. [00:03:32] Speaker 02: He does say that. [00:03:32] Speaker 02: And that's why I pointed out that this was a point of dispute that the board didn't reach. [00:03:37] Speaker 02: So we have no board finding on this issue. [00:03:39] Speaker 02: What the board found, Judge Clevenger. [00:03:41] Speaker 04: Well, the question of if you have this prior art in Rosenblatt that talks about electroplating but says it's unsatisfactory for my uses where I have a highly caustic environment. [00:03:54] Speaker 02: Yes. [00:03:54] Speaker 02: In Rosenblatt. [00:03:55] Speaker 02: In fact, if you look at Rosenblatt. [00:03:57] Speaker 04: Right. [00:03:57] Speaker 04: But then I was reading Vachon to say, well, he didn't see any difference between what was going on in the glucose sensor and in essence what was going on in Rosenblatt. [00:04:08] Speaker 04: So what I think Dr. Vachon... Is that what he's saying? [00:04:10] Speaker 02: What I think Dr. Vachon is... Did you read? [00:04:13] Speaker 02: Do you have 32? [00:04:14] Speaker 02: I have it right in front of me. [00:04:16] Speaker 02: Okay. [00:04:16] Speaker 04: And so you're referring to... I'm referring to 3287, and it's on the lower right-hand corner. [00:04:21] Speaker 04: They're talking about industrial gas is caustic, right? [00:04:26] Speaker 04: Yes, it is. [00:04:27] Speaker 04: Well, it is caustic. [00:04:28] Speaker 04: Yes, it is. [00:04:29] Speaker 04: And then it says pretty harsh. [00:04:31] Speaker 04: Yes, it is. [00:04:32] Speaker 04: And then they go on, is that equivalent caustic to inside the body? [00:04:39] Speaker 04: Yes is the answer. [00:04:41] Speaker 02: And he says, for example, superoxide absolutely. [00:04:44] Speaker 04: Yes, yes. [00:04:46] Speaker 04: So if it is true that the environments are the same, then that art that you want to say is relevant and is taught away from. [00:04:56] Speaker 02: Well, again, Judge Clevenger. [00:04:58] Speaker 04: This is your own expert. [00:04:59] Speaker 02: This is our own expert. [00:05:00] Speaker 02: And if the argument is, if the argument that's being made against us is estoppel, then that argument should have been made against us. [00:05:06] Speaker 04: It's not making estoppel or anything, it's in question of [00:05:09] Speaker 04: you're trying to put the garden variety art that's disclosed in Rosenblatt into play in the environment of, of your path. [00:05:21] Speaker 02: So let me step back here. [00:05:23] Speaker 04: Caustic to caustic. [00:05:24] Speaker 04: So I don't understand why this isn't your expert didn't actually shoot your client in the foot. [00:05:29] Speaker 02: So with regard, with regard to what I'm hoping, I'm hoping that I'm going to be responsive to you. [00:05:37] Speaker 02: Um, [00:05:38] Speaker 02: So what I understand Dr. Vachon to be responding to here is the notion that these is responding to the argument made by the other side that the two are not even in the same field of art because they're not combinable. [00:05:51] Speaker 02: And he's saying, no, no, no, there are similarities, absolutely. [00:05:55] Speaker 02: And in fact, he says that the environments are identical. [00:05:57] Speaker 00: It doesn't matter what he's responding to if that response is relevant to what it teaches. [00:06:02] Speaker 00: I mean, the point is, is that, yes, you look at the entirety of the art. [00:06:07] Speaker 00: the entirety of the piece of art, and then you say, what does it teach? [00:06:12] Speaker 00: And while it refers to electroplating generally, it doesn't teach use of electroplating in these electrochemical processes. [00:06:22] Speaker 02: So, Judge O'Malley, that brings up one of the problems that we have with the board's opinion here. [00:06:28] Speaker 02: And that is, what you've just described is a classic teaching away. [00:06:34] Speaker 00: We thought... Well, not necessarily. [00:06:35] Speaker 00: I mean, you don't have to have a full-blown teaching way to say it just doesn't disclose it. [00:06:41] Speaker 03: Well, but it does disclose it. [00:06:43] Speaker 03: What we've got here is, as I understand it, conflict in the testimony because of the changing positions of the parties. [00:06:52] Speaker 03: The patentee is saying Rosenblatt isn't relevant because it's dealing with a caustic environment, and your guy is saying, [00:07:01] Speaker 03: It's the same kind of environment as in the human body. [00:07:04] Speaker 03: And so we've got a conflict here in the testimony, which is oddly reversed because of the change in the position of the parties. [00:07:15] Speaker 03: What are we supposed to do about that? [00:07:16] Speaker 02: So I think the answer, Judge Dyke, is send it back. [00:07:19] Speaker 02: And the reason that we say send it back is that, as I was beginning to answer Judge O'Malley, what we have here is a case in Rosenblatt that's exactly like [00:07:30] Speaker 02: the CCPA's decision in Ray Bowe, which is cited in our brief. [00:07:34] Speaker 02: Now, remember that in Rosenblatt, Rosenblatt says... What's the reason to send it back? [00:07:38] Speaker 02: Because we don't know what the board ruled on. [00:07:41] Speaker 02: We thought that it was a teaching away. [00:07:44] Speaker 02: They say, no, no, it's not teaching away. [00:07:46] Speaker 02: It's either a missing one annotation. [00:07:48] Speaker 04: Who's the they when you say... They, my friends on the other side. [00:07:51] Speaker 04: What they say is irrelevant on that point. [00:07:54] Speaker 04: We have to read the board's opinion to decide what we think the board did. [00:07:58] Speaker 04: So how could the board have reached its conclusion? [00:08:03] Speaker 04: And the board was aware of what I'll call the garden variety teachings that were lying in Rosenblatt to be seen by all. [00:08:12] Speaker 04: The board heard testimony from your own expert that that general art would not apply in this pattern. [00:08:19] Speaker 02: But that's not what the board held. [00:08:21] Speaker 04: Well, I'm talking about whether there was an implied teacher [00:08:25] Speaker 04: And the board says that in these environments, it teaches away from using the conventional methods. [00:08:34] Speaker 04: So in our opening brief, if I decide that that's what I think the ALJ said, what is wrong with that analysis? [00:08:40] Speaker 04: It's a substantial evidence review. [00:08:42] Speaker 02: It is absolutely, because teaching away is a question of fact. [00:08:45] Speaker 02: So first of all, I would say that under the APA and under this court's decisions, the board is obligated to give you a clear... Isn't there substantial evidence [00:08:54] Speaker 04: to support implied teaching away when Dextrom's own expert gave the rationale to the judge? [00:09:02] Speaker 02: We are an administrative law world here, Your Honor, and that means that the board has to make explicit. [00:09:08] Speaker 02: What is the board, where does the board treat this issue? [00:09:12] Speaker 02: The board treats this issue at a couple of places in its opinion, but most notably, I think it's at appendix, and we'll just use the first of the decisions here. [00:09:25] Speaker 02: We can see at the bottom of 23, we determine that petitioner has not shown by preponderance of the evidence that the combination of Wilson and Rosenblatt teaches or suggests the in contact with limitation of claim one of the 202 patent. [00:09:43] Speaker 00: And you'll find that repeated. [00:09:44] Speaker 00: The question they have to be answering is whether it teaches it for purposes of the uses in this patent. [00:09:52] Speaker 00: And they had plenty of evidence. [00:09:53] Speaker 00: I mean, yes, we're in an APA world, but we also have lots of case law that says no magic words are needed if we can reasonably discern the path by which the board reached its conclusion. [00:10:05] Speaker 02: I'm not sure that, I don't think, in fact, I'll say it more positively, I don't think you can discern that here. [00:10:10] Speaker 02: This was not a teaching away holding, and it wasn't a teaching away holding for the reasons. [00:10:14] Speaker 00: But did they have to have a teaching away holding to say it just doesn't disclose it? [00:10:17] Speaker 02: I think on this record, they absolutely had to, because they first of all said it does disclose it. [00:10:22] Speaker 02: What they said is that it discloses it but says it's unsatisfactory. [00:10:26] Speaker 02: And that brings me back to In-Rei Bo and also this court's decision in In-Rei Zhang and others. [00:10:31] Speaker 02: Let me read to you the language from In-Rei Bo. [00:10:36] Speaker 02: All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art. [00:10:44] Speaker 02: And that includes where the teachings are, and I quote from Bo again here, phrased in terms of a non-preferred embodiment [00:10:52] Speaker 02: or as being unsatisfactory for the intended purpose. [00:10:58] Speaker 02: So, Boe itself says that you need to read Rosenblatt for all that it teaches, which is even those things that were said to be unsatisfactory. [00:11:05] Speaker 04: The board at appendix 30 rejects what I call the garden variety art from Rosenblatt as being unsatisfactory. [00:11:15] Speaker 04: And that's the piece of the opinion, the paragraph that starts next. [00:11:19] Speaker 02: Yes, but that's the next part is about the second, I'm sorry, the next part is about the, it says it relies not only on Rosenblatt's bonding technique, which is what's claimed in Rosenblatt. [00:11:33] Speaker 04: Exactly addresses the point you're making. [00:11:35] Speaker 04: It more clearly recognizes that Rosenblatt teaches its own method as well as teaching unsatisfactory prior art techniques. [00:11:44] Speaker 04: And it says in the context of... And they recognize that you're an expert who said that those techniques are unsatisfactory for the claim here. [00:11:54] Speaker 02: And that very well may be. [00:11:56] Speaker 02: And on remand, we might have to have the board address that. [00:11:59] Speaker 02: Why do you deserve a remand? [00:12:00] Speaker 02: Why do I deserve a remand? [00:12:01] Speaker 02: Because you can't tell what the board did. [00:12:03] Speaker 02: We're fighting here right now as to whether there was even a teaching way holding. [00:12:07] Speaker 02: We don't agree on that. [00:12:09] Speaker 02: They say that the board made no motivation to combine the two. [00:12:12] Speaker 04: Sir, the we in this argument is you and the court, not them. [00:12:16] Speaker 02: I understand that, but I think that what my opponent is saying in this case about what the board actually held is a strong indicator that reasonable people can disagree as to what this board held in this case. [00:12:30] Speaker 02: And in this case, the board did not read... That's a new standard in this. [00:12:33] Speaker 04: in this court. [00:12:34] Speaker 04: I don't think it's a new standard at all. [00:12:36] Speaker 04: You find reasonableness based on the differing opinions of litigants. [00:12:40] Speaker 02: But I think it does point up in the context of this record, Judge Clevenger, and I don't mean to be cute about it, that there is not a clear holding of a teaching away. [00:12:50] Speaker 02: There is definitely not a clear holding, as my friends say, of a lack of motivation to combine. [00:12:56] Speaker 02: But even if you disagree with us with regard to that, there is this other issue, and that has to do [00:13:02] Speaker 02: with the notion that there was a clear disclaimer of a multi-layer embodiment. [00:13:09] Speaker 00: Well, this really does go to a waiver question. [00:13:13] Speaker 00: Didn't the board invite you to address disclaimer and you didn't do it? [00:13:17] Speaker 02: No, we absolutely did. [00:13:18] Speaker 02: If you look at pages 647 to 649 of the appendix, we responded directly to that invitation and argued that the claim scope, including whatever disclaimer there might be [00:13:32] Speaker 02: does not exclude a tantalum platinum alloy on the outside surface of the core, and indeed does not exclude a multi-layered core at all. [00:13:41] Speaker 02: Now the board actually addressed those arguments, which I think is proof positive that we didn't waive them. [00:13:46] Speaker 00: And in what context did you make that argument? [00:13:50] Speaker 02: In the context of responding to the institution decision. [00:13:59] Speaker 02: You'll see at 647 it starts with waveforms argument that the structurally flexible core cannot be multi-layered. [00:14:06] Speaker 02: That's exactly the clear disclaimer argument. [00:14:11] Speaker 02: And if I could judge O'Malley, let me just point to you very quickly as my time runs out where in the prosecution history where the board made its error in this regard. [00:14:23] Speaker 02: The language of the prosecution history [00:14:28] Speaker 02: was that McCurr provides an electrochemically active layer. [00:14:33] Speaker 02: This can be found, by the way, in appendix 479 or 277 to 78, the institution decision. [00:14:39] Speaker 02: McCurr provides an electrochemically active layer 3233 that is not in contact with the core. [00:14:46] Speaker 02: McCurr uses an intervening insulating layer 14. [00:14:50] Speaker 02: Now, what did the board do? [00:14:52] Speaker 02: After it quoted that language, it then applied a disclaimer of intervening layers. [00:14:59] Speaker 02: not intervening insulating layers, but any intervening layers. [00:15:03] Speaker 02: So then it was able to create... You're still having a hard time. [00:15:06] Speaker 00: I'm looking at all the pages that you keep citing, and I don't see any reference to disclaimer in those pages. [00:15:13] Speaker 02: The disclaimer is being offered, Your Honor, in the context of claim construction. [00:15:17] Speaker 02: And whether we use the term disclaimer or not, the fact is that the 647 to 649 argument is directly responsive to the argument. [00:15:26] Speaker 00: But one of your primary arguments here on appeal is that [00:15:29] Speaker 00: the board misunderstood disclaimer, but the board asked you to address the meaning of disclaimer and the purpose of the prosecution history, and you didn't do it. [00:15:38] Speaker 00: How are we supposed to say, oh, you can do it now for the first time before? [00:15:41] Speaker 02: We're not doing it for the first time now. [00:15:43] Speaker 02: I've given you the pages. [00:15:44] Speaker 00: You gave me pages, and I see no reference to the word disclaimer at all or to prosecution history. [00:15:49] Speaker 00: So I don't even understand how you can say that that's where you addressed squarely [00:15:57] Speaker 00: what the board invited you to address. [00:15:59] Speaker 02: It is responsive, Judge O'Malley, to Waveform's argument in their response at pages 44 to 45, which is based on the disclaimer argument. [00:16:08] Speaker 02: And the disclaimer argument here has been that the structurally flexible core cannot be multi-layered. [00:16:14] Speaker 02: That is what we addressed. [00:16:15] Speaker 02: And if we didn't use the word disclaimer, I don't think that constitutes a waiver when the argument is there in substance. [00:16:22] Speaker 02: I'm sorry. [00:16:22] Speaker 02: I'm into almost all of my rebuttal. [00:16:24] Speaker 02: We'll give you two minutes for a problem. [00:16:26] Speaker 02: Thank you. [00:16:26] Speaker 02: Mr. Ead? [00:16:29] Speaker 01: Morning. [00:16:30] Speaker 01: Thank you, Your Honors. [00:16:30] Speaker 01: May it please the court. [00:16:32] Speaker 00: Can we address that last point? [00:16:33] Speaker 00: Do you think that by addressing head on your position with respect to the multi-layer function or the fact that it couldn't be multi-layered, did really, even if indirectly, address your disclaimer point? [00:16:53] Speaker 01: Absolutely not. [00:16:54] Speaker 01: DEXCOM in no way at any point [00:16:58] Speaker 01: below address the disclaimer argument that the board specifically asked both parties to address. [00:17:05] Speaker 00: But wouldn't it be enough to just say, well, we addressed the substance of the point that they're relying on disclaimer for? [00:17:13] Speaker 01: Possibly, if that were correct. [00:17:15] Speaker 01: But they didn't even do that. [00:17:16] Speaker 01: They didn't discuss the scope of the McCourt disclaimer. [00:17:20] Speaker 01: In fact, I think in connection with the in contact with limitation, the word McCourt never shows up anywhere in the record. [00:17:28] Speaker 01: They made an independent argument comparing claim seven of the 433 patent to Rosenblatt. [00:17:37] Speaker 01: But that argument did not depend upon the McCourt disclaimer. [00:17:41] Speaker 01: And there's no evidence anywhere in the record that that argument was connected to or that it implied anything about the McCourt disclaimer. [00:17:51] Speaker 03: Let me ask you about this. [00:17:53] Speaker 03: Rosenblatt, prior art reference, because on the face of Rosenblatt at 1033, it talks about this being unsatisfactory in this particular environment, in this electrochemical process. [00:18:13] Speaker 03: And there seems to be a dispute as to whether that environment that was involved in Rosenblatt is similar [00:18:20] Speaker 03: to the environment that we're dealing with here, and there seems to be somewhat conflicting testimony as to whether the two environments are the same. [00:18:30] Speaker 03: And I don't see in the board decision that it really addresses that question of whether the two environments are comparable. [00:18:39] Speaker 03: It just says that Rosenblatt teaches it's unsatisfactory. [00:18:44] Speaker 03: Is that a problem that we don't have a specific finding on the [00:18:49] Speaker 03: environment's question, as it were? [00:18:52] Speaker 01: I don't think so, Your Honor. [00:18:54] Speaker 01: First, the appellant, Dexcom, never once during the IPR proceeding raised the argument that conditions in the body are milder than the Rosenblatt conditions. [00:19:08] Speaker 01: They didn't make that argument. [00:19:11] Speaker 01: Waveform made some arguments, but Dexcom's ability to argue that point by virtue of the fact it didn't make it [00:19:18] Speaker 01: is waived. [00:19:21] Speaker 01: Second, as you pointed out, in his deposition testimony, DEXCOM's expert Dr. Vashon directly contradicted DEXCOM's position. [00:19:33] Speaker 03: Your pleading said the opposite. [00:19:37] Speaker 03: We've got differing positions on this, surprisingly, from the parties, where you said that [00:19:45] Speaker 03: the environments are different, they said the environments are the same. [00:19:49] Speaker 01: Well, Your Honor, I think you correctly summarized the sequence of events here below. [00:19:55] Speaker 01: There were arguments about non-analogous prior art that were not adopted by the board. [00:20:00] Speaker 01: DEXCOM was opposing those arguments concerning non-analogous prior art. [00:20:05] Speaker 01: Perhaps as a result, DEXCOM never once argued that the conditions in the body are milder. [00:20:11] Speaker 01: In fact, the only evidence DEXCOM put in the record on this point [00:20:15] Speaker 01: was when Dr. Bashan was questioned in deposition and he denied that the conditions in the body are milder. [00:20:23] Speaker 03: Let me ask you another question here and that relates to the board's refusal to consider these other prior art references including Carter because they weren't properly raised in the petition and we have Genzyme and we have Ariosa and it seems to me that the [00:20:45] Speaker 03: There's an argument that the board's ruling here in dismissing the relevance or ability to consider those in the reply is contrary to those cases. [00:20:58] Speaker 01: Your Honor, so to be clear about Waveform's position, it's not the position stated by DEXCOM's counsel. [00:21:06] Speaker 01: We think it's clear and literal in the board's ruling that it found that the combination of [00:21:13] Speaker 01: Rosenblatt and Wilson did not teach the in contact with limitation. [00:21:18] Speaker 01: That is, neither reference taught it, either separately or together. [00:21:23] Speaker 01: They don't teach it. [00:21:23] Speaker 01: You're not talking about the same thing I'm talking about. [00:21:25] Speaker 01: I'm next getting to it. [00:21:27] Speaker 01: So Gensheim stands for the board. [00:21:31] Speaker 03: The board said the APA precludes us from considering Carter and these other references because they weren't properly raised in the petition. [00:21:39] Speaker 03: It's not sufficient that they were raised in the reply. [00:21:41] Speaker 03: That, on its face, seems questionable in the light of Genzyme and Areosa. [00:21:46] Speaker 01: Yes, Your Honor. [00:21:47] Speaker 01: So there is a decision here. [00:21:50] Speaker 01: Was Dexcom trying to change its prima facie case? [00:21:54] Speaker 01: Was it using these references to supply a missing element in the claims, which we believe was missing, in contact with element, was missing from both Wilson and Rosenblatt? [00:22:06] Speaker 01: So the law is clear that DEXCOM cannot, in a reply, make changes to the prior audit siting in order to fill that gap in its prima facie case. [00:22:16] Speaker 01: We believe that's the case. [00:22:18] Speaker 03: In fact, those cases say that you can't use them to fill a gap, but you can use them to inform what the knowledge of someone skilled in the art was at the time and to interpret the Rosenblatt disclosure. [00:22:33] Speaker 01: Yes, your honor. [00:22:34] Speaker 01: What you can't do though, [00:22:36] Speaker 01: is take a Carter or a Beer or a Haley and use that to interpret Rosenblatt in a way that completely changes what Rosenblatt teaches. [00:22:49] Speaker 01: In other words, Rosenblatt teaches that an alloy layer is essential to holding these two elements together. [00:22:54] Speaker 01: What they would do with this state of the art argument is use one of these references to say, no, Rosenblatt doesn't teach you have to have an alloy. [00:23:03] Speaker 01: They eliminate that requirement from Rosenblatt. [00:23:07] Speaker 01: So you can't use Genzyme or the other case under a state-of-the-art theory to dramatically alter what the prior art teaches. [00:23:17] Speaker 00: In those cases, in Ariosa, the reference to the generalized prior art appeared in the petition, correct? [00:23:25] Speaker 00: Yes. [00:23:25] Speaker 00: It wasn't raised for the first time in the reply brief. [00:23:28] Speaker 00: That's correct. [00:23:29] Speaker 00: And they were in record. [00:23:30] Speaker 03: That's not correct. [00:23:31] Speaker 03: Those cases do involve things that were raised for the first time in the reply, and they specifically hold that it's appropriate. [00:23:39] Speaker 01: Again, Your Honor, I think that the decision point here is, are these references being used to fill a gap? [00:23:46] Speaker 03: Is it not correct that those cases involve things that were raised for the first time in the reply, and the argument was that they were not properly raised at that point because it was too late? [00:23:57] Speaker 01: I think that's right, Your Honor. [00:23:59] Speaker 04: But when it's used... Those references were being used to bring in background art. [00:24:05] Speaker 04: That's right. [00:24:05] Speaker 04: And that was clear from when they were presented initially, right? [00:24:09] Speaker 04: Right. [00:24:10] Speaker 04: And so the argument in Ariosa and the other cases, well, you can't exclude that. [00:24:15] Speaker 04: It's not being offered to fill a hole in the premium patient case. [00:24:18] Speaker 01: That's correct. [00:24:19] Speaker 04: So if you look at how this art was being offered, it's at pages 118 through 120 in the record, which was in the petition for review. [00:24:28] Speaker 04: It sets up Carter, for example, and goes down the list. [00:24:32] Speaker 04: It looked to me like that was not being offered for background art, but was being offered in part of the 103 analysis. [00:24:40] Speaker 04: Yes, absolutely. [00:24:41] Speaker 04: Isn't that on the decision tree the question we have to decide? [00:24:46] Speaker 04: Because if this art was being offered by way of background, there seems to be strong precedent that it can't be excluded just because it was only brought up on a reply. [00:24:56] Speaker 01: And yes, and if it's offered by way of background, it can't be used to alter or change or rewrite Rosenblatt's teaching, which is that an alloy layer is necessary. [00:25:11] Speaker 01: What Dexcom said when it came in reply. [00:25:14] Speaker 04: Well, that's an argument you would make if we decided that it was error to exclude and it's got to go back for background art. [00:25:21] Speaker 04: And you're going to say background art is here. [00:25:24] Speaker 04: filling gaps in 103 analysis over here, you can do the former or not do the latter. [00:25:29] Speaker 04: That would be your argument. [00:25:30] Speaker 04: But isn't the question for us whether or not pages 118 through 121, 22 that cites Beer, Haley, Carter, what for what purpose was it being offered? [00:25:45] Speaker 01: In the reply. [00:25:47] Speaker 01: In the reply. [00:25:48] Speaker 01: Okay, in the reply. [00:25:51] Speaker 01: We believe that these were being offered to fill a gap in the prima facie case. [00:25:56] Speaker 03: But they didn't say that, right? [00:25:58] Speaker 01: They said that they offered these references in the event there's any difficulty in Rosenblatt's teaching of the in-contact with limitation. [00:26:08] Speaker 01: If there's any difficulty in Rosenblatt teaching platinum in direct contact with tantalum. [00:26:17] Speaker 03: Are you able to identify the pages where [00:26:20] Speaker 01: Yes. [00:26:20] Speaker 03: In the reply where this was argued? [00:26:22] Speaker 01: Yes, your honor. [00:26:52] Speaker 01: So it's 633. [00:26:56] Speaker 01: Dexcom says, to the extent there were any difficulties applying platinum botanium in 1950, the petition proved out these complexities were solved over the next 53 years. [00:27:13] Speaker 01: What age is that? [00:27:15] Speaker 01: I'm sorry, that is APPX 633. [00:27:26] Speaker 01: And it begins to the extent. [00:27:29] Speaker 03: So they seem to be saying that these references tell you how the prior art was understood at the time, the relevant time here. [00:27:41] Speaker 00: All those references post-date Rosenblatt, right? [00:27:43] Speaker 01: They all post-date Rosenblatt. [00:27:45] Speaker 00: So it's not how Rosenblatt would have been understood at the time, but what happened after Rosenblatt. [00:27:52] Speaker 01: That's true, Your Honor. [00:27:54] Speaker 01: And I believe the best way to read this is that in its reply, DEXCOM was anticipating, based on patent owner response, that it had difficulty with Rosenblatt. [00:28:08] Speaker 01: DEXCOM didn't mention the problem about the alloy layer in its petitions. [00:28:13] Speaker 01: When we filed our patent owner response, we made the problem with the alloy layer very evident. [00:28:20] Speaker 01: Now DEXCOM's coming back in reply and saying, well, [00:28:23] Speaker 01: If Rosenblatt is deficient, we have these other references. [00:28:27] Speaker 03: What they're saying is if Rosenblatt said this was unsatisfactory in the years intervening after Rosenblatt, it was found to be satisfactory. [00:28:35] Speaker 03: It's basically what they're saying, right? [00:28:37] Speaker 01: Yes. [00:28:38] Speaker 01: And in so saying, they are attempting to change the fundamental teaching in Rosenblatt and thereby offer a new prior reference to meet its prima facie case. [00:28:53] Speaker 03: Well, I guess that's the question as to whether this is a new reference to meet the prima facie case, or it's just a new reference to explain what someone skilled in the art would have understood later. [00:29:04] Speaker 03: I mean, it's not a clear line. [00:29:07] Speaker 04: Is that a fact question or a legal question? [00:29:10] Speaker 04: Because the board, in its decision, exactly said that's the question. [00:29:15] Speaker 04: And they said, we view this to be offered not as background, but for a prima facie case. [00:29:22] Speaker 01: My understanding, Your Honor, is that that is a fact question that would be reviewed for substantial evidence. [00:29:30] Speaker 01: Okay. [00:29:31] Speaker 01: Anything else? [00:29:33] Speaker 01: Your Honor, do you have other issues that were raised by DEXCOM that you'd like me to address? [00:29:40] Speaker 03: I guess not. [00:29:41] Speaker 01: Okay. [00:29:41] Speaker 03: Thank you. [00:29:45] Speaker 03: Mr. Keith-Daniels, you have two minutes. [00:30:00] Speaker 02: Thank you, your honor. [00:30:00] Speaker 02: First of all, Judge Dyke, with regard to Rosenblatt, it wasn't an attempt to change Rosenblatt's meaning at all. [00:30:09] Speaker 02: Teaching away, which was what we were addressing here, has to be evaluated as of the time of the invention, not as of the time of the prior art reference. [00:30:16] Speaker 02: That was one of the fundamental errors that we assigned in this case with regard to understanding the board's decision as a teaching away decision. [00:30:23] Speaker 02: Yes, perhaps in 1950 Rosenblatt might have thought that in an environment [00:30:28] Speaker 02: caustic environment, this would have been inappropriate, but by the time of all of the prior art references, both four of which were cited in our petition, so they can't claim lack of notice. [00:30:41] Speaker 02: They were all being done for background, just as in Genzyme, just as in Ariosa. [00:30:46] Speaker 00: Why didn't you rely on any of those prior art references to fill the gaps that existed to the extent Rosenblatt would have been viewed as teaching away? [00:30:56] Speaker 02: Well, I think once the petition was granted on Rosenblatt, we reasonably, of course, proceeded with that combination. [00:31:03] Speaker 00: Why didn't you include other combinations in the petition? [00:31:06] Speaker 02: I can't subjectively go back into the minds of the lawyers at that time, but I can only assume, based on the clarity of Rosenblatt, that the fact that Rosenblatt is going so far as to say platinum coated on tantalum is so old that we're going to distinguish it away and tell you why it doesn't work in these caustic environments. [00:31:26] Speaker 02: But in any event, we know that Genzyme and Ariosa allow us to do what we did here, and that is to provide background. [00:31:33] Speaker 02: And we were explaining how Rosenblatt would be understood to a person of ordinary skill in the arc as of 2003. [00:31:40] Speaker 04: Finally, Judge O'Malley... Is the question of whether or not you're providing background or filling a gap a fact question or a legal question? [00:31:46] Speaker 02: I think ultimately it's a legal question, Judge Clevenger, but even if it were treated as a fact question, [00:31:52] Speaker 02: We wouldn't have to shrink from it here, because if you look at exactly the page that my friend read to you, from page 633, I think, from the appendix, you don't see us trying to fill a gap. [00:32:02] Speaker 02: And it would be silly if we were trying to fill a gap there, because we were relying on most of the same references that we'd already put in our petition in the first place. [00:32:09] Speaker 02: So we never viewed it as a gap that needed to be filled in the first place. [00:32:14] Speaker 02: If I could conclude very quickly, JoJo Malley, with regard to our colloquy during my opening argument about waiver. [00:32:21] Speaker 02: I'd like to just point you to the board's decision at page 13 of the appendix. [00:32:27] Speaker 02: The board certainly didn't view us as having waived our opportunity to respond on this issue. [00:32:33] Speaker 02: They actually say that we assert that the patent owner's construction for in contact with does not preclude an intervening layer. [00:32:42] Speaker 02: And that is where the board then addresses McCourt. [00:32:46] Speaker 03: If I could just conclude on one thought. [00:32:50] Speaker 03: Okay, thank you, Your Honor.