[00:00:00] Speaker 04:
The board was wrong to find that E2 is not prior art to Teleflex's claims, and so finding it allowed Teleflex to take for itself what E2 put in the public domain first.

[00:00:27] Speaker 02:
Ms.

[00:00:27] Speaker 02:
Lopheimer, for you to prevail, do you have to overturn the board's findings on both actual reduction to practice and constructive reduction to practice?

[00:00:40] Speaker 05:
Yes, Your Honor.

[00:00:42] Speaker 02:
Okay.

[00:00:42] Speaker 02:
So we could just affirm on constructive reduction to practice here without reaching the actual reduction.

[00:00:53] Speaker 02:
Is it fair to say you don't have an argument in your briefing on constructive reduction to practice?

[00:01:00] Speaker 05:
No, Your Honor, I think we expressly raised our disagreement with the board's opinion on constructive reduction to practicality.

[00:01:07] Speaker 05:
At page 41?

[00:01:08] Speaker 05:
At page 41 of our brief and in our statement of the issues, we followed the board's lead in referring to the identical question that had been briefed in the prior appeal.

[00:01:16] Speaker 02:
I guess what I'm wondering is, are you permitted, are you trying to incorporate by reference briefing from a separate appeal into this brief or this appeal?

[00:01:28] Speaker 05:
I think that the issue has been fully briefed in that prior appeal and that the court has everything it needs to decide the question in that appeal.

[00:01:36] Speaker 02:
Right.

[00:01:36] Speaker 02:
So you're not trying to incorporate by reference the briefing on constructive reduction of practice in the 2356 appeal into this appeal?

[00:01:48] Speaker 05:
I think we are trying to incorporate by reference.

[00:01:51] Speaker 02:
All right.

[00:01:51] Speaker 02:
Are you allowed to do that under our law and under FRAP 28, incorporate briefing from different documents into your briefing?

[00:02:00] Speaker 05:
I think this is a special situation, Your Honor, because of the way that these issues were briefed.

[00:02:06] Speaker 05:
First of all, the board in this case didn't address, separately address the question of diligence.

[00:02:12] Speaker 05:
And it just referred to the identical question that was briefed in the prior appeal.

[00:02:15] Speaker 05:
At the time that we were briefing this case, we didn't know that the court wouldn't address that in the prior appeal.

[00:02:22] Speaker 05:
It was fully joined in the other issue.

[00:02:26] Speaker 05:
In our brief, we referred to the briefing in that case and Teleflex in response also referred to its own briefing.

[00:02:35] Speaker 02:
Right, I'm just trying to understand here.

[00:02:39] Speaker 02:
14,000 word count limit to our briefing.

[00:02:43] Speaker 02:
You're at 13,979, and on page 41, you want to incorporate 20 pages of briefing from a separate appeal into this brief, which would obviously blow right through the 14,000 word count.

[00:02:58] Speaker 02:
So, we have other case law that says you're not permitted to do that as well under Rule 28.

[00:03:06] Speaker 02:
So, I'm trying to figure out what to do here.

[00:03:08] Speaker 02:
We've got a 14,000 word count limit that's being blown through and likewise we have a pretty strong precedent that says you're not allowed to incorporate by reference arguments made in other documents into your briefing.

[00:03:24] Speaker 02:
I don't know if we can read this as a permissible incorporation by reference.

[00:03:38] Speaker 05:
The issue's been fully briefed in the other appeal.

[00:03:40] Speaker 05:
I understand your court's concern about the page limits, but I think we would ask the court to reach the issue anyway, because it's an important issue.

[00:03:49] Speaker 02:
So that would require us to go ahead.

[00:03:51] Speaker 02:
You'd want us to go dig out those 20 pages, and read those, and then figure out whether it's persuasive in order to reach this issue.

[00:04:00] Speaker 05:
Yes, Your Honor, and I'm prepared to argue the issue today.

[00:04:03] Speaker 04:
You didn't make a motion to exceed the word count.

[00:04:10] Speaker 05:
I believe that early in this case, it would have been consolidated with another case.

[00:04:19] Speaker 05:
And we actually did ask to exceed the word count, and this court denied that motion.

[00:04:25] Speaker 04:
And you said what we denied.

[00:04:27] Speaker 02:
Yes, you're right.

[00:04:29] Speaker 02:
So it looks like you made a bet here at page 41.

[00:04:32] Speaker 02:
You made a bet that an earlier

[00:04:35] Speaker 02:
pending appeal would resolve this diligence question and that you ask for whatever beneficial consequences in that earlier appeal to be adopted here but of course that issue the bet you made that that issue would be resolved did not come true and so there's nothing in any other appeal that we can use for your benefit here in this appeal.

[00:05:01] Speaker 05:
Your Honor, we thought that we were doing the right thing by abiding by the decision that would be made in the previous case when the issues were exactly the same.

[00:05:10] Speaker 05:
And the board had expressly referred to its opinion in that other case and the evidence and the arguments there.

[00:05:17] Speaker 05:
And we thought that the board would address it.

[00:05:20] Speaker 05:
And we think still that the board should address it because the issue is important.

[00:05:24] Speaker 05:
And that the court has everything that it needs in order to decide the issue.

[00:05:30] Speaker 05:
in the briefing in that prior case.

[00:05:32] Speaker 05:
I think Teleflex would not be prejudiced by the courts deciding the opinion now.

[00:05:39] Speaker 05:
It had a full and fair opportunity to look at that issue, to brief that issue in the other case.

[00:05:46] Speaker 05:
And it took it, and the issue is fully joined and should be decided now.

[00:05:54] Speaker 05:
I think the board was wrong here to find that Teleflex actually reduced its invention to practice, even though Teleflex didn't perform every step of its claimed method.

[00:06:04] Speaker 05:
It's undisputed here that Teleflex's claims recite steps that are performed in a body.

[00:06:10] Speaker 05:
And it's undisputed that Teleflex never did that.

[00:06:13] Speaker 05:
And so the question here is whether the testing Teleflex allegedly did do, testing an event-top model, satisfied the standard for actual reduction to practice of claims that are limited to being performed in a body.

[00:06:25] Speaker 05:
And I think the answer under this court's case law is no.

[00:06:28] Speaker 05:
And for example, in Ray Steed, this court explained that to demonstrate actual reduction to practice, the patentee has the burden to show two things.

[00:06:37] Speaker 05:
First, that he constructed an embodiment or performed a process that met all the limitations of the claims.

[00:06:43] Speaker 05:
And second, that he determined that the invention would work for its intended purpose.

[00:06:47] Speaker 04:
In the board's opinion, they used a physical model that replicates the anatomy in which the method would be used.

[00:06:56] Speaker 04:
Are you questioning whether that adequately replicates the anatomy?

[00:07:05] Speaker 05:
I think that whether it adequately represents the anatomy for the purposes of determining whether the invention would work for its intended purpose

[00:07:15] Speaker 05:
is a separate question from whether Teleflex actually performed every limitation of its claims when its claims include advancing the distal end of a guide catheter through a main blood vessel to... This isn't an infringement analysis when the changed infringer has to perform every step of a claim.

[00:07:36] Speaker 04:
This is a question of reduction of practice where the

[00:07:41] Speaker 04:
activities that are performed reliably indicates that the invention would work.

[00:07:48] Speaker 05:
I think those are two separate questions under this court's case law and that that's what the board got wrong here.

[00:07:54] Speaker 05:
That the board's decision that the testing in a bench top model was adequate because it allegedly verified the viability of that claimed method or was sufficient to show that it works, that speaks to the second part of the reduction to practice inquiry.

[00:08:08] Speaker 05:
which is whether it works for its intended purpose, but it doesn't speak to that first part under this court's case law, which requires that an applicant have performed a process that met all the limitations of the claims.

[00:08:19] Speaker 05:
Those are two separately numbered requirements in the

[00:08:25] Speaker 05:
and the standard recited in in Ray Steed, and that standard comes up over and over again in this court's case law.

[00:08:31] Speaker 05:
Same standard listing two separately numbered requirements in Z-Fortex versus Microsoft, in Cooper versus Goldfarb, in Berry versus Medtronic, and the Raytheon Co.

[00:08:42] Speaker 05:
versus Sony court case that we cite.

[00:08:44] Speaker 05:
And so even in the situation where a patentee is showing actual reduction to practice for prior inventorship, not just in an infringement case, you still have to show that you performed a process that met all of the limitations of the claims.

[00:09:02] Speaker 03:
Well, the board here did seemingly rely on CUPA, right, on page 45.

[00:09:09] Speaker 03:
But it seems to have quoted

[00:09:12] Speaker 03:
Cooper as saying more than it actually said, right?

[00:09:17] Speaker 05:
Yes, I think so the board relied on on Cooper

[00:09:23] Speaker 03:
means the straight site on 45 to a page in Cooper, but the citation to Cooper does not include the keywords in a model that sufficiently met all the limitations.

[00:09:38] Speaker 03:
That's not language.

[00:09:40] Speaker 05:
Certainly, Your Honor.

[00:09:42] Speaker 05:
And Cooper, again, recites the standard that you have to have performed all the limitations of the claim separate from

[00:09:50] Speaker 05:
showing that the claim worked for its intended purpose and here at Teleflex simply did not do that and its arguments in response just seek to excuse its failure to perform every step of the method one way or another.

[00:10:03] Speaker 05:
It contends that Medtronic is somehow arguing for new law that a method related to anatomical features has to be performed in vivo for patenting

[00:10:11] Speaker 05:
But Metronic isn't advocating for any new law here.

[00:10:14] Speaker 05:
Metronic only seeks to hold Teleflex to the same reduction to practice standard as any other patent owner that has approved performance of a method that met all of its claim limitations.

[00:10:25] Speaker 02:
What about DL-Alt?

[00:10:27] Speaker 02:
Are you familiar with that opinion?

[00:10:30] Speaker 05:
Yes, Your Honor.

[00:10:30] Speaker 02:
Weren't there some differences between the laboratory procedures identified there and the actual claimed method, but nevertheless, it was fine.

[00:10:42] Speaker 02:
It was good enough for actual reduction of practice.

[00:10:46] Speaker 05:
I think the laboratory method was found to have met every limitation of the method claim in that case.

[00:10:58] Speaker 05:
And I would also cite to the court the Fujikawa versus Watt-Nawson case that we cited in our brief, which I think is illustrative of the situation here.

[00:11:10] Speaker 05:
There there were claims to a pharmaceutical compound and separate claims to a method that required administering that compound to a patient.

[00:11:19] Speaker 05:
And it was found that the compound claims had been reduced to practice as of in vitro tests that showed that the compound had some practical utility.

[00:11:29] Speaker 05:
But the method claims that required administering it to a patient weren't reduced to practice until two months later when successful in vivo testing of that compound was completed.

[00:11:39] Speaker 05:
And I think that's similar to the situation here where Teleflex has some device claims that it

[00:11:45] Speaker 05:
may have constructed prototypes of and tested in a model to determine that they would work for its intended purpose, but that's not the same as performing every step of the method where the method claims recite coronary artery and a blood vessel, and that can't be shown in a plastic bench top model.

[00:12:14] Speaker 04:
So we save the remainder of your time for a bottle?

[00:12:18] Speaker 05:
Yes, Your Honor.

[00:12:21] Speaker 04:
Mr. Winkle.

[00:12:26] Speaker 01:
Thank you, Your Honors, and may it please the Court.

[00:12:29] Speaker 01:
I would like to talk about the actual reduction of practice issue, because it's an interesting issue.

[00:12:35] Speaker 01:
But I would like to start with diligence and constructive reduction of practice, because this is a separate and independent basis for this court to affirm.

[00:12:43] Speaker 03:
And did you make the argument?

[00:12:45] Speaker 03:
Show me where in your book you made the argument that it was forfeited, because it wasn't articulated in blue.

[00:12:54] Speaker 00:
Yes, Your Honor.

[00:12:56] Speaker 01:
It's on page.

[00:12:58] Speaker 01:
33 of our brief.

[00:13:01] Speaker 01:
And what we said is, assuming the court is going to consider this argument, which is, we don't think the court should.

[00:13:10] Speaker 01:
And I will say, what?

[00:13:12] Speaker 03:
What did you say?

[00:13:13] Speaker 03:
Did you say, we don't think the court should?

[00:13:16] Speaker 01:
Assuming the court is willing to consider such an argument, the board's finding of construction reductive practices based on substantial evidence.

[00:13:24] Speaker 03:
So you think that's an argument that we shouldn't consider it because it wasn't sufficiently raised in both?

[00:13:31] Speaker 03:
What I would say, Your Honor, is that's getting a lot of words to assuming.

[00:13:36] Speaker 01:
I agree with you.

[00:13:37] Speaker 01:
And I think the important point is what they asked this court in their brief was far more narrow, far more narrow.

[00:13:44] Speaker 01:
To Judge Chin, your point, what they said in their brief, and I will quote, they said, if this court vacates the board's diligence holding,

[00:13:52] Speaker 01:
It should likewise vacate the board's decision here.

[00:13:56] Speaker 01:
They made a bet.

[00:13:56] Speaker 01:
They took a risk.

[00:13:58] Speaker 01:
They wanted to allocate more pages of their brief to the other issues that they've now abandoned and did not put those arguments in this brief.

[00:14:07] Speaker 01:
They made a bet.

[00:14:08] Speaker 01:
And unfortunately, this court declined to vacate the board's decision in 2356.

[00:14:13] Speaker 04:
So the assigned diligence is waived.

[00:14:18] Speaker 01:
The argument that they've made

[00:14:20] Speaker 01:
that if this court vacated that this in the 2356 then it should vacate here this court did not do that and I don't know if it's either waiver or it's just addressing the argument they made it did not come to fruition and I think the board's decision that ETO is not prior based on diligence and constructive reduction of practice stands.

[00:14:44] Speaker 01:
Let me comment on the

[00:14:46] Speaker 03:
Is there a waiver of a waiver here?

[00:14:48] Speaker 03:
Is there such a thing?

[00:14:49] Speaker 03:
Is there a waiver of a waiver?

[00:14:50] Speaker 03:
I mean, if we don't think that you sufficiently made that argument, assuming court.

[00:14:54] Speaker 03:
I mean, everything you've said today, I don't think is in the brief, right?

[00:14:58] Speaker 03:
Am I one mis-applied, mistake?

[00:15:01] Speaker 01:
I think we said, in a kind way, if the court is going to adopt this or even accept this argument, kind of making a bet.

[00:15:10] Speaker 03:
So is it necessary for you, under the law, to preserve your argument

[00:15:15] Speaker 03:
that they have waived it in order for us to do it, or is that just independent irrespective of what, even if you said nothing.

[00:15:24] Speaker 01:
It's a great point, and I think we could have said nothing, Your Honor.

[00:15:27] Speaker 01:
I think it is independent.

[00:15:29] Speaker 01:
I'm not aware of any waiver of a waiver.

[00:15:31] Speaker 01:
And I think it's also important to note that they didn't even ask the court in their brief to incorporate these other 20 pages by reference.

[00:15:39] Speaker 01:
That was a request made in a Rule 28J letter where they asked the court to address this issue in a separate brief and a separate appendix.

[00:15:50] Speaker 01:
To your point, Judge Chen, I had to have my colleague carry extra binders for me to bring a separate appendix just in case this court was going to entertain that.

[00:15:59] Speaker 01:
And I don't think that's proper.

[00:16:00] Speaker 01:
And that's precisely why this court has rule limits.

[00:16:04] Speaker 03:
Can I move on to the sort of merits argument?

[00:16:10] Speaker 03:
Both sides have some cases in their pocket.

[00:16:13] Speaker 03:
And I guess what bothered me is what I raised with your friend, which is that the board's analysis seemed to hang substantially on Cooper on 45.

[00:16:25] Speaker 03:
But they're not saying what Cooper said.

[00:16:27] Speaker 03:
It's not a direct site.

[00:16:29] Speaker 03:
And they're inserting the key words that are an issue in this case.

[00:16:33] Speaker 03:
They insert in a model that sufficiently met all the limitations.

[00:16:37] Speaker 03:
That language is not from Cooper, correct?

[00:16:39] Speaker 01:
That is correct, Your Honor.

[00:16:40] Speaker 03:
So what does Cooper do for them?

[00:16:41] Speaker 03:
I mean, the board lied on Cooper.

[00:16:43] Speaker 03:
Where does Cooper give them a basis for saying that this model is sufficient?

[00:16:49] Speaker 01:
So I don't think that basis necessarily comes from Cooper itself.

[00:16:53] Speaker 01:
I think what we see in this course law is we see this two-part test layout that to reduce the practice, you have to build the device or practice the claim method and prove it worked for its intended purpose.

[00:17:04] Speaker 01:
And we see the case law repeatedly say that.

[00:17:07] Speaker 01:
But Medtronic has not cited a case of, what does that actually mean to perform the claim method?

[00:17:13] Speaker 01:
And Cooper doesn't tell us what that means, and the cases that Medtronic has cited doesn't tell us what that means.

[00:17:20] Speaker 01:
What Medtronic's position here is, is that this is a very rigid, strict rule.

[00:17:25] Speaker 01:
There is absolutely no flexibility, no leniency, and you have to do exactly what's in the claim method.

[00:17:31] Speaker 01:
And that, Your Honors, is not the law.

[00:17:33] Speaker 03:
But what is the law then?

[00:17:35] Speaker 03:
Where is the board?

[00:17:36] Speaker 03:
What is the law that the board relied on in reaching the conclusion it did here?

[00:17:42] Speaker 01:
any law that reaches that conclusion.

[00:17:45] Speaker 01:
What the board relied on was more of a public policy argument of that it doesn't make sense to require exactness.

[00:17:52] Speaker 01:
And that's partially Medtronic's fault, because Medtronic didn't point any law to the board to say it required exactness.

[00:17:57] Speaker 03:
But do you understand my concern?

[00:17:58] Speaker 03:
I mean, the board's language is to establish actual reduction to practice, the prop donor must demonstrate two things.

[00:18:06] Speaker 03:
And it cites the two things, and it doesn't have quotations.

[00:18:10] Speaker 03:
But then it cites to a page in Cooper that doesn't support what they've said the two things are.

[00:18:15] Speaker 03:
I mean, it goes the step farther, which is necessary to answer the case here, but wasn't in Cooper.

[00:18:22] Speaker 01:
Yes.

[00:18:22] Speaker 03:
So you're saying there's no law to support what the board did here, but it's a public policy?

[00:18:30] Speaker 03:
thing that we should apply?

[00:18:32] Speaker 03:
Is that your position?

[00:18:33] Speaker 01:
No, Your Honor.

[00:18:33] Speaker 01:
My position is that there is actually law that does support this, and that's this Inray Spiller case that we cited to the, to the, to Your Honors.

[00:18:42] Speaker 01:
It is not in our brief, but it is binding precedent from a CCPA from the 1970s.

[00:18:47] Speaker 01:
And this court... Wait, I'll explain to you.

[00:18:49] Speaker 03:
I'm sorry.

[00:18:50] Speaker 03:
There's so many cases.

[00:18:51] Speaker 01:
Yes.

[00:18:51] Speaker 01:
You said it's not in your brief.

[00:18:53] Speaker 01:
Correct, Your Honor.

[00:18:54] Speaker 03:
Did you cite it to the board?

[00:18:55] Speaker 01:
We did not cite the case to the board.

[00:18:57] Speaker 03:
And you didn't cite it to us?

[00:18:58] Speaker 01:
We did in a supplemental authority under rule 28J, we did.

[00:19:02] Speaker 03:
OK.

[00:19:02] Speaker 00:
And if you said it's a 1968K?

[00:19:04] Speaker 00:
It's a 1974.

[00:19:10] Speaker 03:
Is that what 28Js are made for?

[00:19:14] Speaker 03:
I mean, I thought 28Js were if you

[00:19:17] Speaker 03:
if something happened following the briefing that's relevant to this, a new case or whatever.

[00:19:22] Speaker 03:
This obviously is not in that category.

[00:19:24] Speaker 01:
Correct.

[00:19:25] Speaker 03:
So why is that an appropriate citation that we should consider in a 28-J?

[00:19:30] Speaker 01:
We looked at that and did not find any authority that the 28-Js cannot be used to cite authority that was not cited in the briefing.

[00:19:39] Speaker 01:
And I would point out, even in the Spiller case,

[00:19:42] Speaker 01:
This court's predecessor recognized that no party had cited these cases that they were relying on in Spiller.

[00:19:49] Speaker 01:
It's a narrow corner of the wall that has not been well-developed.

[00:19:52] Speaker 01:
And candidly, Your Honor, ideally, we would have had this case before.

[00:19:57] Speaker 01:
We turned it over in a 28-J letter, and immediately when we found it, turned it over to Medtronic.

[00:20:03] Speaker 01:
And it's really important for this court to get this question right, because the CCPA addressed this exact issue.

[00:20:09] Speaker 01:
The issue of, have you reduced a practice when you have done something less than exactly what is in the claim?

[00:20:17] Speaker 01:
And the CCPA, in Judge Rich's opinion, said, you have.

[00:20:21] Speaker 01:
The rule does not require exactness.

[00:20:24] Speaker 01:
There is flexibility.

[00:20:25] Speaker 01:
And the standard that was set in the Spiller decision is if what you did

[00:20:32] Speaker 01:
is an obvious variant of what is in the claim, you have sufficiently reduced the practice.

[00:20:38] Speaker 01:
And what the spillover decision does, it cites back, actually, to the striker case.

[00:20:43] Speaker 01:
And it addresses a, it discusses an anomalous situation that had Teleflex claimed the broader claim of saying, use this device in a simulated or actual coronary artery.

[00:20:59] Speaker 01:
then our evidence would have been sufficient to reduce that to practice.

[00:21:04] Speaker 01:
And what Stiller says is it would be an anomalous result to find that the broader claim is reduced to practice, but the more narrower claim that is simply an obvious variant is not.

[00:21:16] Speaker 04:
And you might ask that.

[00:21:17] Speaker 04:
What about the case cited by your opponent that said the compound claim was reduced to practice, but not the method claim?

[00:21:28] Speaker 01:
So in that case, there was evidence that when they actually put it in the body, it didn't work.

[00:21:35] Speaker 01:
This case is very different.

[00:21:36] Speaker 01:
In this case, we have evidence, unrebutted evidence from our experts, from our inventors that said using this in a coronary model simulates, replicates the native anatomy.

[00:21:48] Speaker 01:
We have evidence that medical device companies have routinely used these models.

[00:21:53] Speaker 01:
And that evidence was unrebutted.

[00:21:54] Speaker 01:
And the board made a finding.

[00:21:56] Speaker 04:
Was that evidence missing in the case cited by the opposing counsel?

[00:22:01] Speaker 01:
I don't know all the evidence that was in that case, Your Honor.

[00:22:04] Speaker 01:
But I believe that the facts of that case, when they actually put that evidence in the body, it just did not work.

[00:22:09] Speaker 01:
And we're just in a different factual situation here.

[00:22:12] Speaker 01:
And ultimately, it is a fact finding by the board.

[00:22:16] Speaker 01:
that the model accurately replicates the native anatomy.

[00:22:23] Speaker 04:
But you said there's no case supporting your position.

[00:22:27] Speaker 04:
Is there a law contrary to stating the opposite?

[00:22:33] Speaker 01:
I don't think so, Your Honor.

[00:22:35] Speaker 01:
Let me discuss two cases.

[00:22:37] Speaker 01:
I do think there's a case supporting our position, which is Inray Spill, and I think that case is on all fours with the exact issue that's in front of this court.

[00:22:46] Speaker 01:
The Maherker decision, which we do cite, is also in line with this, to Judge Chin, your question about the facts that I believe you're referring to, the DL Lao case.

[00:22:57] Speaker 01:
The Maherker decision is another one that is very similar.

[00:23:00] Speaker 01:
If you look at the facts of the case, sometimes I think in the law, the parties, we cite these legal principles, and we don't look at the facts.

[00:23:07] Speaker 01:
If you look at the facts of Maherker, Maherker built, it was a catheter case.

[00:23:12] Speaker 01:
The claim in Maherker said,

[00:23:14] Speaker 01:
a blunt distal end to prevent the end of the catheter from traumatizing or becoming caught in the walls of the vessel.

[00:23:23] Speaker 01:
The facts of that case, Mr. Maherker built a device made of an admittedly brittle material.

[00:23:28] Speaker 01:
In other words, it could break off and cause trauma.

[00:23:32] Speaker 01:
And he tested the device in his kitchen.

[00:23:34] Speaker 01:
So he did not build a device that was exactly as claimed.

[00:23:38] Speaker 01:
And he did not test the device exactly as claimed.

[00:23:40] Speaker 01:
And this court held that there is reduction of practice.

[00:23:43] Speaker 04:
Well, so do you think

[00:23:45] Speaker 04:
we could support your position either with an actual inductive practice or constructive?

[00:23:52] Speaker 01:
Yes, Your Honor, I do.

[00:23:53] Speaker 01:
I think they are two independent bases.

[00:23:57] Speaker 01:
To your question about cases to the contrary, what's interesting is if you dig in, I do not think there's a case to the contrary of Spiller.

[00:24:04] Speaker 01:
I have not found one, and we have looked.

[00:24:08] Speaker 01:
What you will find

[00:24:09] Speaker 01:
is cases in the interference context.

[00:24:12] Speaker 01:
And that's what Cooper was, I think is important to note, in the interference context.

[00:24:17] Speaker 01:
And there's another case eaten in the interference context.

[00:24:20] Speaker 01:
And that case is 204 F3 1094.

[00:24:25] Speaker 01:
In the interference context, this court has said that that two-factor test is very rigid.

[00:24:34] Speaker 01:
You do need to have exactness.

[00:24:36] Speaker 01:
And that makes sense

[00:24:38] Speaker 01:
in the interference context, where we're not talking about exactly what did you do something, did you reduce the practice, exactly what's in the claim.

[00:24:46] Speaker 01:
In the interference context, recall what the court does is establishes the count.

[00:24:51] Speaker 01:
It tries to find the overlapping subject matter that they say this is the subject matter of the invention.

[00:24:57] Speaker 01:
And in the interference context, this court has said the two-part test is very rigid.

[00:25:03] Speaker 01:
But in the context we're in today, where we're trying to swear behind a reference,

[00:25:08] Speaker 01:
The CCPA in Spiller said, addressed this issue and said there is not rigidity, that there is flexibility provided what you did is an obvious variant.

[00:25:22] Speaker 03:
I can't find it.

[00:25:23] Speaker 01:
We did, Your Honor.

[00:25:24] Speaker 01:
Both sides actually cited Mahurka to the board.

[00:25:26] Speaker 01:
That issue, the facts of Mahurka and exactly what was being built and tested, I don't think all those facts were drawn out to the board.

[00:25:36] Speaker 01:
But we did cite that case to the board.

[00:25:37] Speaker 04:
And did the board rely on it?

[00:25:39] Speaker 01:
I think the board relied on Mahurka for the second prong in the test, which is proving the device to work for the intended purpose.

[00:25:47] Speaker 01:
And the idea that you can use simulation for the second prong as well.

[00:25:54] Speaker 01:
Um, with my remaining time, you know, one case that Medtronic does cite for support of their very rigid rule is that you have to do exactly what's in the claim, is the Supreme Court's decision in FAAF.

[00:26:09] Speaker 01:
If you go to the Supreme Court's decision in FAAF, it does not set out this two-part test that I said is, is used for interference proceedings.

[00:26:16] Speaker 01:
What FAAF says is that a method is reduced to practice when it is successfully performed.

[00:26:24] Speaker 01:
But FAF doesn't say what that means.

[00:26:27] Speaker 01:
What does it mean to be successfully performed?

[00:26:30] Speaker 01:
But if you continue to read in FAF and the Supreme Court's decision, what you see is they have a footnote at the end.

[00:26:36] Speaker 01:
And it talks about what is reduction of practice.

[00:26:39] Speaker 01:
And it harkens back to some cases from the 1920s of what is reduction of practice.

[00:26:44] Speaker 01:
And it's in footnote two.

[00:26:47] Speaker 01:
Footnote 12.

[00:26:48] Speaker 01:
Footnote 2 is where they say, perform the process, sufficient performance process.

[00:26:53] Speaker 01:
Later in the opinion, when they get to footnote 12, they analyze all these historical reduction of practice cases.

[00:26:59] Speaker 01:
And what the Supreme Court said is, the historical case law on reduction of practice is best understood as indicating that, and I quote, an invention's reduction to practice demonstrated that the concept was no longer in an experimental phase.

[00:27:17] Speaker 01:
That's really what reduction of practice is.

[00:27:19] Speaker 01:
And that's exactly what we have here.

[00:27:21] Speaker 01:
There is absolutely no dispute in this record that when Teleflex took this device and put it in the model, that experimentation was complete.

[00:27:30] Speaker 01:
The invention worked, and that evidence is unrebutted.

[00:27:34] Speaker 01:
I'm out of time.

[00:27:35] Speaker 01:
Thank you, Your Honors.

[00:27:36] Speaker 04:
Thank you, Counsel.

[00:27:38] Speaker 04:
Your time has about three minutes.

[00:27:45] Speaker 05:
Thank you, Your Honors.

[00:27:46] Speaker 05:
I want to start with addressing the Spiller case.

[00:27:51] Speaker 05:
First, I agree with Judge Prost.

[00:27:53] Speaker 05:
This is not a case that they cited to the board and not a case that the board relied on in any way.

[00:27:59] Speaker 04:
But it's in the law.

[00:28:02] Speaker 04:
It's in the law.

[00:28:04] Speaker 05:
And to the extent that it relies on this idea of there being a basic invention or the heart of the invention and that all that a

[00:28:13] Speaker 05:
patent applicant has to do is something less than the claims in order to reduce it to practice.

[00:28:20] Speaker 05:
I think that's hard to square with the Supreme Court's recognition in the arrow manufacturing case that there's just no such thing as a legally recognizable gist or heart of the invention.

[00:28:33] Speaker 05:
The Supreme Court and this court have emphasized instead that the invention is defined by the claims and should be measured by the claims.

[00:28:40] Speaker 05:
And this court's more recent articulations of the standard for reduction to practice as requiring a performance of a process that met all the limitations of the claim I think is consistent with that idea that it's the claim that defines the invention.

[00:28:55] Speaker 05:
And if you're going to prove actual reduction to practice, prior invention through actual reduction to practice, what you should have to prove

[00:29:03] Speaker 05:
is that you actually reduced in practice your claim.

[00:29:07] Speaker 04:
Even if we agree with you, don't you lose on constructive reduction of practice?

[00:29:13] Speaker 05:
No, Your Honor.

[00:29:14] Speaker 05:
I think that the board here relied

[00:29:28] Speaker 05:
on an impermissibly weakened form of the correct legal standard on diligence, and that under the correct legal standard, Teleflex was required to prove that it was engaged in reasonably continuous work through the entire critical period.

[00:29:42] Speaker 04:
But what if we decide that your argument on diligence is not before us?

[00:29:49] Speaker 05:
If you decide that the argument on diligence is not before you, then I agree, Your Honor, that you can affirm the case.

[00:29:57] Speaker 05:
But I think that you should decide the diligence question, and that the reduction to practice, and that Teleflex actually also failed to show that it actually reduced its claims to practice.

[00:30:12] Speaker 05:
I think I'd want to just make a few more.

[00:30:14] Speaker 05:
Well, with my 25 seconds remaining, I'll just say that I think that the rule in Enrae Spiller that Teleflex seeks to rely on

[00:30:26] Speaker 05:
that there's something less than the claims that can show prior invention.

[00:30:32] Speaker 05:
There's just no need to stretch that law on actual reduction to practice because the applicant can always constructively reduce its invention to practice by just filing their application.

[00:30:44] Speaker 05:
Even if an applicant delays filing, you can still swear behind a reference by showing conception followed by diligence.

[00:30:50] Speaker 05:
And so it's not too much to ask someone who wants to swear behind a reference without showing diligence

[00:30:56] Speaker 05:
and show that they deserve a monopoly on something that somebody else disclosed to say that they have to have performed every single step of the claim.

[00:31:06] Speaker 05:
As the claim was written by them, Teleflex wrote this claim that required a blood vessel and a coronary artery, and we know that it didn't have to do that because it has related claims and other patents.

[00:31:17] Speaker 05:
that don't recite those limitations.

[00:31:19] Speaker 05:
But if that's the claim that it wants, and that's the coverage that it seeks to prove prior invention, it should have had to perform every single step of that method.

[00:31:28] Speaker 04:
Thank you, counsel.

[00:31:29] Speaker 04:
We have your argument.

[00:31:30] Speaker 04:
And the case is submitted.

[00:31:31] Speaker 05:
Thank you.