[00:00:00] Speaker 05:
23-2127, American Science and Engineering versus Stewart.

[00:00:05] Speaker 05:
Again, Mr. Hankel, please proceed when you're ready.

[00:00:09] Speaker 01:
Again, Aaron Hankel on behalf of American Science and Engineering.

[00:00:13] Speaker 01:
May I please support?

[00:00:14] Speaker 01:
I will try to speak slower this time.

[00:00:16] Speaker 01:
I've been informed that I was speaking too fast last time, and I apologize.

[00:00:21] Speaker 05:
You were fine with me, but I could hear you fast.

[00:00:25] Speaker 05:
It's OK.

[00:00:25] Speaker 01:
This appeal involves another anticipation question, a fairly straightforward one.

[00:00:32] Speaker 01:
Since this board's founding in 1982 and its earliest decisions, it has not minced its words on the requirements for anticipation.

[00:00:40] Speaker 05:
A prior disclosure... You say this board's founding in 1987?

[00:00:42] Speaker 01:
This court.

[00:00:43] Speaker 01:
This court.

[00:00:43] Speaker 05:
Did you just make me an administrative judge?

[00:00:46] Speaker 01:
I apologize.

[00:00:46] Speaker 01:
Of course not, Your Honor.

[00:00:48] Speaker 01:
A prior argument.

[00:00:49] Speaker 01:
They're good people.

[00:00:50] Speaker 01:
Yes.

[00:00:53] Speaker 01:
A disclosure that almost meets the anticipation standard may render a claim invalid under 103, but it is not anticipation.

[00:01:01] Speaker 01:
And as the court said in that money in, any differences between the prior art reference and the claimed invention, however slight, invoke questions of obviousness, not anticipation.

[00:01:11] Speaker 01:
That is the sole issue that I would like to focus today's argument on, is the board's anticipation finding of the 701 patent over CEPI.

[00:01:21] Speaker 01:
There is simply no textual basis expressed or inherent to support the board's finding that the CEPI reference discloses backscatter detectors that are capable and positioned, as the claim says, disposed to receive backscattered radiation from two X-ray beam sources.

[00:01:41] Speaker 01:
That's just not in there.

[00:01:42] Speaker 01:
In fact, the entire disclosure of backscatter detectors comes from a one-sentence statement in one paragraph of CEPI at Appendix 699.

[00:01:52] Speaker 01:
I apologize.

[00:01:55] Speaker 01:
It's Appendix 10 where the board quotes

[00:02:02] Speaker 01:
Additional detectors that are not shown may be provided between sources 16A through F in the cargo container to detect backscattered radiation.

[00:02:13] Speaker 01:
That is the board's entire support textual in the CEPI reference to find that it discloses backscattered detectors that are positioned and disposed to receive X-rays that are backscattered from plural X-ray sources.

[00:02:27] Speaker 01:
It's a sole issue on appeal with respect to anticipation, and it's fatal to the board's anticipation analysis.

[00:02:35] Speaker 01:
The first error that the board committed was finding that that single-line statement provides some sort of express or inherent disclosure of the claimed scatter detectors of the 701 patent.

[00:02:47] Speaker 01:
The only details we know about the scatter detectors in CEPI is that they are not shown

[00:02:53] Speaker 01:
and that they may be provided between the x-ray sources and the cargo container.

[00:02:58] Speaker 01:
That is all we are told.

[00:03:00] Speaker 01:
Anything else, any other additional inferences that the board drew are not expressed or implied in CEPI itself or anywhere else.

[00:03:07] Speaker 01:
We have no details about how many additional detectors there may be between the cargo and the x-ray scanners.

[00:03:13] Speaker 01:
We have no idea about their size or the energy levels of the radiation sources themselves.

[00:03:19] Speaker 01:
We have no information about their proximity to the x-ray sources relative to their proximity to the cargo container.

[00:03:25] Speaker 01:
We don't know if they're shielded.

[00:03:26] Speaker 01:
We don't know if they have obstructions between them in the backscattered radiation.

[00:03:32] Speaker 01:
Frankly, we don't know if they're in the same plane as the x-ray sources in the cargo containers that's depicted in the CEPI figure.

[00:03:38] Speaker 01:
In fact, we have unrebutted testimony from AS&E's expert Dr. Smith

[00:03:43] Speaker 01:
at appendix 2565 through 2566 that said a person of ordinary skill in the art would not place backscatter detectors in between the cargo container and the x-ray sources because it would cause interference with the type of source.

[00:03:57] Speaker 03:
What was part of your argument here that the board essentially did not provide adequate information to explain its reason as to some of the conclusions?

[00:04:08] Speaker 01:
Is that part of it?

[00:04:11] Speaker 01:
I would say that's an aspect of it.

[00:04:13] Speaker 01:
That's not our primary argument.

[00:04:14] Speaker 01:
That CEPI does not contain this information.

[00:04:16] Speaker 01:
It does not provide it either expressly or inherently.

[00:04:20] Speaker 01:
And for that reason, the board obviously was unable to articulate where those disclosures were correct.

[00:04:27] Speaker 01:
Those details matter.

[00:04:28] Speaker 01:
Because when we're talking about backscattered detectors, the traditional approach in the art was to shield them so that they only received backscattered radiation from one source.

[00:04:38] Speaker 01:
Otherwise, there's a problem in the art known as crosstalk.

[00:04:40] Speaker 01:
where one detector is receiving radiation that it's not supposed to receive, the board just throws this all aside and bases its anticipation analysis on the fact that it's possible that backscattered detectors can receive backscattered radiation.

[00:04:56] Speaker 01:
That is the whole of the analysis, and that is not disputed.

[00:04:59] Speaker 01:
But these claims don't claim just any type of detector that can detect backscattered radiation.

[00:05:05] Speaker 01:
Each of the detectors must be disposed to receive backscattered radiation from both the first and second pencil beam sources.

[00:05:15] Speaker 01:
That was the novel advancement, in addition to the fact that the sources are coplanar, which provides a limited footprint.

[00:05:22] Speaker 01:
But for purposes of anticipation, really the detector issue is what it's all about.

[00:05:30] Speaker 05:
I mean, I haven't heard you say this, but I thought one of your main arguments was that you thought the board erred in relying on CEPI's additional detector's language.

[00:05:38] Speaker 05:
Is that not what you're focusing on at all?

[00:05:42] Speaker 01:
That is what I was focusing on.

[00:05:44] Speaker 01:
It's the quotation from CEPI at 149-25.

[00:05:51] Speaker 01:
One line from the paragraph says additional detectors not shown may be provided between the sources 16a through 16f and the cargo container 14 to detect backscattered radiation That positioning in between the cargo container and the sources according to the board in the fact that backscattered detectors can receive backscattered radiation and

[00:06:17] Speaker 01:
apparently meant that they were disposed to receive radiation that's backscattered from two sources, which is just simply not the case.

[00:06:24] Speaker 01:
It's not disclosed.

[00:06:25] Speaker 01:
It's certainly not inherent for the reasons that I have described.

[00:06:29] Speaker 01:
We know that based on some of the petitioner's own expert testimony, where he says if those backscatter detectors are placed in the same plane, and if they're unshielded and not otherwise obstructed, then the mathematics of

[00:06:44] Speaker 03:
are the physics of x-ray backscatter means that they would receive from both sources.

[00:07:00] Speaker 01:
The anticipation analysis was flawed and not supported a full reversal on that grounds is warranted to the extent the 103 analysis comes into play You know the argument there that we mean to the extent it comes into play.

[00:07:13] Speaker 05:
It's different claims, right?

[00:07:16] Speaker 05:
Yeah, but it has to come into play doesn't it so it's if it comes into play I mean the board didn't find those dependent claims anticipated right they found them obvious correct

[00:07:27] Speaker 05:
And so you don't want us to address that then?

[00:07:29] Speaker 05:
You would like, no, just let that one go?

[00:07:32] Speaker 01:
No, that's a fair question.

[00:07:34] Speaker 01:
It's premised on CEPI's anticipation analysis.

[00:07:37] Speaker 01:
And then it relies on two additional references for the additional details of the deep end acclaims.

[00:07:43] Speaker 01:
For example, we're in the x-ray source as an electromagnetic scanner.

[00:07:47] Speaker 01:
or where in the x-ray source is a rotating chopper wheel.

[00:07:52] Speaker 01:
The secondary references are to provide support for the additional dependent features, not to cure or solve any omissions or failures in the CEPI references.

[00:08:01] Speaker 05:
So you think that if we decide with you on the CEPI reference with regard to anticipation that obviousness is gone?

[00:08:09] Speaker 05:
Okay, I didn't understand that.

[00:08:12] Speaker 05:
What about waiver?

[00:08:12] Speaker 05:
You haven't addressed waiver, and the PTO says that the argument that you've just been making with regard to anticipation and the detectors was waived.

[00:08:21] Speaker 01:
Correct.

[00:08:23] Speaker 01:
I know the board made that argument, and frankly I was somewhat taken aback by that because it was not made by the petitioner on their original reply, and they were, you know, parties to their proceedings before the board.

[00:08:36] Speaker 01:
The issue was not waived at all.

[00:08:38] Speaker 01:
In fact, I don't think it could have been preserved more.

[00:08:41] Speaker 01:
It's our primary and only appeal argument.

[00:08:44] Speaker 01:
It's been our argument that we've made to the board.

[00:08:46] Speaker 01:
Obviously, we lost on it, but it was made and presented.

[00:08:50] Speaker 01:
The issue that I find that the director takes with the way we phrase things in our blue brief is that we didn't use a repeat antecedent terms.

[00:09:01] Speaker 03:
Do you want to point us to precisely where in the record the issue was made so that we

[00:09:05] Speaker 01:
Yes.

[00:09:06] Speaker 01:
At appendix 274 and 275, I can give you quotes.

[00:09:15] Speaker 01:
But there, what we're saying is that CEPI does not disclose detectors that receive radiation from a first beam and a second beam.

[00:09:25] Speaker 01:
We didn't say that the first beams and the second beams have to be substantially perpendicular, but that's an antecedent feature of the claimed arrangement.

[00:09:34] Speaker 01:
Our argument has been, and it's now.

[00:09:36] Speaker 05:
But that's what the board said you abandoned.

[00:09:38] Speaker 05:
They said that you abandoned the substantially perpendicular argument in favor of arguing CEPI fails to disclose detecting scattered radiation from any particular combination of beings.

[00:09:48] Speaker 05:
So that's the thing they say you abandoned, right?

[00:09:52] Speaker 01:
That's their characterization of the argument.

[00:09:57] Speaker 05:
So you're saying you did not abandon that, correct?

[00:10:00] Speaker 05:
Correct.

[00:10:00] Speaker 05:
Okay, so where do I see that you didn't abandon the substantially perpendicular argument?

[00:10:06] Speaker 01:
I don't think we use those precise words.

[00:10:08] Speaker 05:
Okay, well how about if you just say 90 degrees then?

[00:10:10] Speaker 05:
What do you say?

[00:10:11] Speaker 05:
What do you say that leads me to the fact that you are keeping the substantially perpendicular argument and continuing to maintain it?

[00:10:18] Speaker 01:
Okay, Appendix 275, there's a paragraph that begins, CEPI does not disclose sizes and positions for detectors.

[00:10:25] Speaker 01:
And then there we just say broadly, it doesn't disclose them, that we see from both.

[00:10:30] Speaker 01:
Open paren IE, beams from sources 16A and 16E.

[00:10:35] Speaker 01:
Those are the perpendicular sources that were identified to the board by Viking.

[00:10:44] Speaker 01:
274 through 275, and it goes over to 276.

[00:10:49] Speaker 01:
This was our argument.

[00:10:51] Speaker 01:
And I will grant Your Honor's question.

[00:10:54] Speaker 01:
Our broader argument is that it doesn't disclose a detector that receives from plural sources at all.

[00:10:59] Speaker 01:
Whether or not they're perpendicular, it doesn't matter.

[00:11:02] Speaker 01:
It just doesn't have that disclosure.

[00:11:04] Speaker 01:
Because it doesn't disclose that, it obviously doesn't disclose the very specific arrangement that's required in the ANSC.

[00:11:11] Speaker 05:
Would you have had to have made that in the alternative?

[00:11:13] Speaker 05:
I mean, I'm just trying to understand.

[00:11:15] Speaker 05:
If you are saying, look, we don't think you disclosed two of these at all, do you have to say, and if you disagree, then we also don't think those two are perpendicular?

[00:11:24] Speaker 05:
Do you have to make that an alternative to make sure the office is aware that you're continuing to maintain that argument?

[00:11:30] Speaker 05:
I just don't know.

[00:11:31] Speaker 01:
This is a great question.

[00:11:33] Speaker 01:
I honestly don't know either.

[00:11:34] Speaker 01:
I don't think that's the right result.

[00:11:35] Speaker 01:
I think it would result in, frankly, cumbersome briefing and arguments to the court if every antecedent requirement of a patent had to be carried through on every time it's used down the claim, which is essentially how I understand this argument.

[00:11:49] Speaker 01:
Claim one says first beam source.

[00:11:54] Speaker 01:
The second part says the second beam source, and they're substantially perpendicular.

[00:11:57] Speaker 01:
And then the detectors must detect from both of those.

[00:12:00] Speaker 01:
And we said that's not present.

[00:12:01] Speaker 03:
So you're really pointing to the part that's in parentheses about the beams from choice of 16A and 16E say that's how you get the perpendicular argument out there and preserve it, right?

[00:12:11] Speaker 01:
Yes.

[00:12:12] Speaker 01:
Those are the perpendicular beams that were identified to and I relied upon by the board.

[00:12:16] Speaker 01:
That's the alleged, that is what they found as hate support.

[00:12:23] Speaker 01:
And with that, I can yield my time in support as for the questions.

[00:12:27] Speaker ?:
OK.

[00:12:32] Speaker 05:
Okay.

[00:12:34] Speaker 05:
Council, please proceed.

[00:12:41] Speaker 02:
Good morning, Honors.

[00:12:42] Speaker 02:
May you please record?

[00:12:44] Speaker 02:
I'd like to start off with two kind of preliminary issues.

[00:12:46] Speaker 02:
First, on the question of whether the relief there would be seeking is to reversal as opposed to vacate.

[00:12:51] Speaker 02:
Here, the Board did not reach a number of grounds because the other grounds were sufficient to dispose of the claim before it.

[00:12:59] Speaker 02:
So I think that even if they were to prevail on the anticipation of these arguments here,

[00:13:02] Speaker 02:
the appropriate result would be vacate and remand, not a reversal.

[00:13:06] Speaker 05:
Yeah, we vacate and remand, but there's no petitioner anymore, right?

[00:13:08] Speaker 02:
Correct.

[00:13:10] Speaker 02:
So certainly, if it were to go back, they'd have the ability to move to terminate, and oftentimes the board grants that.

[00:13:16] Speaker 02:
But I think, regardless, I think the- Even more likely in these days.

[00:13:21] Speaker 02:
Yeah, I certainly don't disagree with that.

[00:13:24] Speaker 02:
Yeah.

[00:13:24] Speaker 02:
And second, to address the waiver issue, our contention was that

[00:13:30] Speaker 02:
AS&E waived reliance on the substantially perpendicular aspect of the detecting limitation.

[00:13:35] Speaker 02:
And from the Graybrief, I understand that they are no longer relying on the substantially perpendicular aspect of the detecting limitation.

[00:13:42] Speaker 02:
So from our perspective, waiver is no longer an issue, considering they are not relying on that.

[00:13:48] Speaker 03:
OK.

[00:13:48] Speaker 03:
Maybe I'll ask, I'll ask him directly, maybe when he gets back up, if that is the case.

[00:13:55] Speaker 02:
Sure.

[00:13:55] Speaker 02:
And the site for that would be Graybrief 18.

[00:13:59] Speaker 02:
And then, so my friend focused on anticipation only, and so I'll direct my argument only to anticipation, and I'll support his other questions.

[00:14:08] Speaker 02:
On anticipation, the parties agree that the operative sentence in CEPI discloses additional detectors.

[00:14:14] Speaker 02:
It says that those additional detectors are located between the sources and the carburettor, and it says that the additional detectors detect backscatter radiation without any sort of indication

[00:14:28] Speaker 02:
or any sort of limitation as to which sources each of those additional detectors detect radiation from.

[00:14:34] Speaker 02:
And the question for this court is, was it reasonable for the board to conclude, based on Seppi's disclosure, that those additional detectors detect radiation from at least two of the six Seppi sources?

[00:14:47] Speaker 02:
It's our contention that it is.

[00:14:50] Speaker 02:
Part and parcel of the idea of scattered radiation, and Dr. Lanz explained this.

[00:14:54] Speaker 05:
Can you explain to me, is it

[00:14:56] Speaker 05:
your view that this is inherency, or that it is affirmatively disclosed?

[00:15:00] Speaker 02:
So the board did not expressly invoke inherency.

[00:15:03] Speaker 02:
So the way I understand the board's decision is that this is how a person of ordinary scenario would read the reference.

[00:15:08] Speaker 02:
I think that you could also look at this.

[00:15:10] Speaker 05:
How it would be great if they had actually said that.

[00:15:12] Speaker 02:
Sure.

[00:15:13] Speaker 02:
And certainly, it may have helped for the board to expressly choose one option or the other, but I think that not choosing it would be at most harmless error.

[00:15:23] Speaker 02:
I think that it's important to recognize that

[00:15:26] Speaker 02:
The idea of scattered radiation means that radiation is going everywhere.

[00:15:29] Speaker 02:
It's not being directed.

[00:15:31] Speaker 02:
It's not like transmitted radiation where it's going to be directed at a particular point.

[00:15:34] Speaker 02:
This is kind of what Dr. Lanza said, that if you have these detectors located between the sources and the carbon container, as long as they're not purposely shielded, they're going to receive some of the scattered radiation.

[00:15:49] Speaker 02:
And I heard counsel here argue today that there's no indication whether they're shielding or not.

[00:15:54] Speaker 02:
Dr. Lanza also said, and this is not disputed between the parties, that the only thing the additional detectors can do is detect backscatter radiation.

[00:16:00] Speaker 02:
And so if that's all they're doing, it would make no sense to shield them from being able to do so.

[00:16:06] Speaker 02:
And there are other portions of SEPI where it actually describes certain detectors being shielded.

[00:16:11] Speaker 02:
And so the absence of any

[00:16:12] Speaker 02:
discussion within the operative section of CEPI saying that any of these additional detectors are shielded, I think further shows that there's no shielding.

[00:16:20] Speaker 05:
I don't think the board didn't say that.

[00:16:22] Speaker 05:
The board didn't say any of that.

[00:16:24] Speaker 05:
I mean, that's an excellent argument.

[00:16:29] Speaker 05:
What do I do with that?

[00:16:31] Speaker 02:
Well, I think that the board did credit Viking's position, which cited Dr. Lanza's testimony.

[00:16:37] Speaker 02:
And so I think that

[00:16:38] Speaker 02:
The way to deal with that is to say that Dr. Lanza's explanation of how CEPI works was persuasive for them.

[00:16:45] Speaker 05:
Where do I see that we say they credited it?

[00:16:47] Speaker 05:
Where do I see a statement, even if the board didn't logically walk through things the way you just did, which is very sensible, where do I see that they nonetheless sort of adopted that logic of the expert, even if they didn't articulate it?

[00:17:02] Speaker 05:
Where's the best place in the opinion that I can see the board

[00:17:06] Speaker 05:
adopting that logic.

[00:17:08] Speaker 02:
Sure, so that would be on Appendix 19.

[00:17:17] Speaker 05:
Okay, we're on 19.

[00:17:18] Speaker 02:
What are you... So it's the second and third sentences.

[00:17:23] Speaker 05:
The once again?

[00:17:24] Speaker 02:
Yeah, yeah, so once again, ASNE disregards Vikings Expressful Alliance on Saturday's Disclosure.

[00:17:32] Speaker 02:
And there they're crediting Petition 2425.

[00:17:36] Speaker 02:
which I believe is at appendix 8182, and appendix 8182 cites Dr. Lanza's testimony regarding the additional detectors detecting backside irradiation.

[00:17:54] Speaker 04:
Yikes.

[00:17:55] Speaker 04:
That's a little attenuated.

[00:18:03] Speaker 02:
Even if this is not like a perfect site to Dr. Langley's testimony, the board did say, the board added that the sources are all turned on.

[00:18:12] Speaker 02:
They're all cycled.

[00:18:13] Speaker 05:
Where do they say that?

[00:18:15] Speaker 02:
So they say, to the extent that- Same page?

[00:18:19] Speaker 02:
Same page, I follow this.

[00:18:20] Speaker 05:
Yeah, right afterwards.

[00:18:20] Speaker 02:
Next, okay.

[00:18:21] Speaker 02:
To the extent that AS&E attacks Viking's showing as to how CEPI's detectors detect X-rays from both the first and second pencil beams, we know that Viking relies on CEPI's operation of the pencil beam sources being cycled.

[00:18:31] Speaker 02:
so that only one source may be on at a time.

[00:18:35] Speaker 00:
But one source being on at a time is different from detecting both sources.

[00:18:41] Speaker 02:
Right.

[00:18:41] Speaker 02:
So there's no requirement in the claims that you detect them simultaneously.

[00:18:46] Speaker 02:
And the claim actually requires temporal interspacing.

[00:18:49] Speaker 00:
I understand that.

[00:18:51] Speaker 00:
The point being that the statement about one source being on at a time doesn't necessarily address the question of whether

[00:19:00] Speaker 00:
the beams are detected by both detectors.

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

[00:19:03] Speaker 02:
And so the next sentence states, as discussed earlier, photomultipliers are indisputably capable of detecting scatter radiation from cycled pencil beams originating from X-ray tubes.

[00:19:15] Speaker 02:
So the board there is saying that when you're cycling these beams, the detectors that are disclosed in CEPI are capable, in response, rejecting the argument that was before it, that they are capable of detecting radiation from multiple beams.

[00:19:26] Speaker 00:
So they are capable of, therefore, the board

[00:19:29] Speaker 00:
surmises that they will both detect.

[00:19:35] Speaker 02:
Right.

[00:19:36] Speaker 02:
I acknowledge that the board's a language here of capable as opposed to they will detect.

[00:19:40] Speaker 02:
Maybe that's not completely clear.

[00:19:41] Speaker 02:
But I think that in the context, what they're doing is they're rejecting Asini's argument.

[00:19:45] Speaker 00:
There's nothing that says that one of ordinary skill in the art would understand that they would both detect, or something of that sort.

[00:19:56] Speaker 02:
So the way I read this is that they're responding to the argument that they're not the detectors aren't disposed in a manner such that they could be Detecting back center of radiation and so they're saying that well the way we read CEPI one of the boarders would understand these detectors are in fact capable of detecting.

[00:20:12] Speaker 00:
Yeah, it's the board's surprising conclusion

[00:20:16] Speaker 02:
Well, I think the board went through a significant analysis as to what these detectors are capable of.

[00:20:23] Speaker 02:
The primary dispute before the board was this idea that CEPI is really just a transmission system.

[00:20:29] Speaker 02:
And so its detectors can't detect backscatter radiation.

[00:20:32] Speaker 02:
And so the board went through a thorough analysis that showed that the detectors that are described here are detectors that can detect backscatter radiation.

[00:20:40] Speaker 02:
Yeah, I understand.

[00:20:40] Speaker 03:
You're doing a good job of kind of explaining to us what you think the board was really doing.

[00:20:46] Speaker 03:
You have to agree with us.

[00:20:47] Speaker 03:
It'd be even better if you could just read that right on the page.

[00:20:50] Speaker 02:
Of course.

[00:20:51] Speaker 02:
Of course.

[00:20:52] Speaker 03:
And do you disagree with possibly a vacay in remand just to better explain what's actually in the opinion?

[00:21:00] Speaker 03:
I feel like you're giving us a Rosetta Stone, but I think we should be able to read that without leaving your Rosetta Stone.

[00:21:05] Speaker 02:
Well, I think that in this case, a remand wouldn't be necessary because at most it's harmless error.

[00:21:11] Speaker 02:
The fact that

[00:21:15] Speaker 02:
I guess the reason was the conclusion that CEPI discloses.

[00:21:19] Speaker 05:
I don't see how I can be sure.

[00:21:22] Speaker 05:
I mean, yes, detectors are capable of detecting.

[00:21:25] Speaker 05:
Of course they are.

[00:21:25] Speaker 05:
It's inherent in the name of what the thing is.

[00:21:27] Speaker 05:
But how do I know that they're turned on and doing it all at the same time?

[00:21:31] Speaker 05:
I mean, doesn't that feel like an ordinarily skilled artisan kind of determination?

[00:21:37] Speaker 02:
Well, I think the idea that they're turned on is part and parcel of the statement in CEPI that they detect backscatter radiation.

[00:21:45] Speaker 02:
And so I think that they are being used in that situation.

[00:21:48] Speaker 02:
They are capable of detecting radiation from multiple sources.

[00:21:51] Speaker 02:
And CEPI itself says that they detect backscatter radiation.

[00:21:56] Speaker 02:
So they are, in fact, being used in that way.

[00:21:59] Speaker 00:
It would be unusual if they didn't.

[00:22:01] Speaker 02:
Agreed.

[00:22:02] Speaker 02:
And so the whole point in this section of CEPI is to use these additional detectors to detect scattered radiation.

[00:22:09] Speaker 02:
So if you're not using them in that, they serve no purpose within the disclosure of CEPI.

[00:22:14] Speaker 03:
I know that you're saying that opposing counsel is not dealing with the waiver argument anymore, but could you actually respond to what they pointed to on Appendix page 275?

[00:22:25] Speaker 03:
Sure.

[00:22:25] Speaker 03:
Do you agree that... Well, go ahead and find it.

[00:22:29] Speaker 03:
We can turn to it.

[00:22:31] Speaker 03:
But once you get there, do you agree that that reference to what I believe was 16A and E would preserve the perpendicularity argument and help present it?

[00:22:42] Speaker 02:
I think it's a close question, but I think that just referencing the sources 16A and 16E is, in my view, not enough to sensitize the board to this idea that the perpendicularity of these sources is important.

[00:22:55] Speaker 02:
They are, of course, reciting Leichen's characterization, but they're not saying that there's anything special about sources being perpendicular in as much as the detectors detect radiation.

[00:23:09] Speaker 02:
And so based on that, and considering they did raise the argument in their preliminary papers, I think it was reasonable for the board to conclude that that's no longer an issue.

[00:23:17] Speaker 02:
And our point was that that's why the board didn't expressly address the substantive or particular aspect of the detecting on the case.

[00:23:23] Speaker 05:
Could I get you to turn to page 20 of the board's decision?

[00:23:27] Speaker 05:
And in particular, this is the motivation to combine section.

[00:23:34] Speaker 05:
Where does the board articulate exactly what the motivation is to combine CEPI with Chalmers?

[00:23:41] Speaker 05:
What on these pages does the board give us in the form of a motivation?

[00:23:48] Speaker 05:
Or maybe it's somewhere else in the opinion too.

[00:23:52] Speaker 02:
Sure.

[00:23:53] Speaker 02:
My understanding is the only argument on motivation was whether CEPI is focused on CT sources.

[00:23:59] Speaker 02:
That was the only argument that was presented in the blue brief with respect to motivation.

[00:24:02] Speaker 02:
But I'm happy to look at this to see what the expressed motivation was.

[00:24:05] Speaker 05:
Well, I mean, they argue whether substantial evidence supports the board's finding a skilled artisan would have been motivated to make a combination.

[00:24:12] Speaker 05:
So I'm looking to see what did the board say?

[00:24:15] Speaker 05:
What was the board's reason the combination would be made?

[00:24:23] Speaker 02:
All right, so the whole idea here was that replacing the

[00:24:28] Speaker 02:
I don't want the whole idea.

[00:24:30] Speaker 05:
I want you to tell me what sentence articulates the motivation.

[00:24:35] Speaker 05:
Because all I see, I'm just going to be honest with you, all I see in this opinion is the board saying, and I'm just going to quote to you, because they're both analogous art from the field of x-ray backscatter inspections and both teach using temporally interspersed beams to avoid crosstalk.

[00:24:49] Speaker 05:
I don't see anything else.

[00:24:51] Speaker 05:
And I mean, surely we can agree that just because two references are in the analogous arts, that does not satisfy the motivation to combine.

[00:24:58] Speaker 05:
Of course.

[00:24:59] Speaker 05:
Right.

[00:24:59] Speaker 02:
That's a good.

[00:25:01] Speaker 05:
So what, I mean, what is the reason that the board gives that they find persuasive that a skilled artist would make this combination?

[00:25:08] Speaker 02:
Sure.

[00:25:08] Speaker 02:
And so I think where the board guesses that is the second sentence.

[00:25:15] Speaker 02:
in that first full paragraph.

[00:25:16] Speaker 02:
In doing so, Viking provides a detailed mapping of how Seppi meets each of the dependent limitations while also providing a reason to combine their respective teachings.

[00:25:24] Speaker 02:
So I read that sentence as crediting Viking's motivation to combine.

[00:25:28] Speaker 02:
And then in the next page, they address the argument on motivation to combine, which is, again, the CT scanning issue.

[00:25:34] Speaker 05:
OK, wait.

[00:25:34] Speaker 05:
How do you read that as crediting?

[00:25:39] Speaker 05:
Viking provides a detailed mapping of how it meets each claim mutation.

[00:25:43] Speaker 05:
And it also provides a reason to combine.

[00:25:46] Speaker 05:
But that's not, I mean, yeah, they provided a mapping.

[00:25:49] Speaker 05:
And they provided a reason.

[00:25:51] Speaker 05:
But is the board adopting that reason?

[00:25:53] Speaker 02:
That's the way I read the sentence.

[00:25:54] Speaker 02:
Because the only dispute before the board was, in terms of motivation, was the CT scanning issue.

[00:25:59] Speaker 02:
So I don't think it was necessary for the board to recite what the petition recited, in terms of motivation combined, when the only argument wasn't that that's not, in fact, motivation.

[00:26:07] Speaker 02:
Their argument was really,

[00:26:08] Speaker 02:
does CEPI's disclosure of CT scanning render this kind of an inoperable combination?

[00:26:18] Speaker 02:
And again, that's the argument that they presented.

[00:26:20] Speaker 05:
The teacher has the burden of establishing, and the board has to find there's a motivation to make this combination, right?

[00:26:28] Speaker 05:
Right.

[00:26:29] Speaker 05:
I see that it seems like it's in dispute, whether there's a motivation to combine it.

[00:26:33] Speaker 02:
Right, and the heart of that dispute is, is CEPI directed to CT scanning?

[00:26:39] Speaker 05:
And that's what the board especially... So you think that their only challenge was whether or not it was analogous arts, basically?

[00:26:46] Speaker 02:
Whether or not the combination vendors set the inoperable for its intended purpose.

[00:26:56] Speaker 03:
And so you're principally relying on the site to see it at 30 to 39 to support up some additional

[00:27:03] Speaker 03:
support for the motivation of combined planning, is that what you're arguing to us?

[00:27:08] Speaker 02:
So in this context where that wasn't disputed.

[00:27:11] Speaker 04:
So is the answer yes?

[00:27:14] Speaker 02:
Yes, in this context.

[00:27:15] Speaker 02:
I'm not sure that that would necessarily be true in every context.

[00:27:17] Speaker 02:
So for example, if you had argued that a person with ordinary skill in the art would be motivated to make the combination because it makes it more efficient, and they come back and say, no, it wouldn't be more efficient, then maybe this wouldn't be sufficient.

[00:27:27] Speaker 02:
But in a situation where the argument is that there's a motivation, and the response is, if you do that, you render the primary reference inoperable, then I think it is sufficient, as long as you address the inoperability question.

[00:27:40] Speaker 03:
So in your view, at least in this circumstance, that if there are members, you believe that the PTAC could just incorporate the party's brief by reference to further support up its purported findings on what they should deny?

[00:27:54] Speaker 02:
I think that the board doesn't need

[00:27:57] Speaker 02:
reproduce the petition's motivation where it's not disputed.

[00:28:01] Speaker 02:
Where the crux of the argument in terms of motivation is not disputed.

[00:28:08] Speaker 05:
Can I ask you a slightly different question?

[00:28:12] Speaker 05:
Do you have your brief handy?

[00:28:23] Speaker 05:
On your secondary considerations argument, it's on page 43.

[00:28:32] Speaker 05:
Tell me when you're there.

[00:28:36] Speaker 05:
In the header, you say, substantial evidence supports the board's finding that the secondary consideration evidence doesn't overcome a strong prima facie case.

[00:28:47] Speaker 05:
Why do you think that's a fact question?

[00:28:51] Speaker 05:
That is exactly the balancing or weighing of the four factors.

[00:28:55] Speaker 05:
Isn't that obviousness?

[00:28:57] Speaker 05:
I mean, obviousness is the question of law, right?

[00:28:59] Speaker 05:
Right.

[00:29:00] Speaker 05:
This isn't about whether one of the factors is or is not established.

[00:29:03] Speaker 05:
That would be a question of fact.

[00:29:05] Speaker 05:
This is about how do you weigh them once they are established?

[00:29:10] Speaker 02:
So my understanding based on the briefing was that that was not disputed.

[00:29:12] Speaker 02:
No, no.

[00:29:13] Speaker 05:
I'm telling you, I think the PTO has erred in its statement that this is a question of substantial evidence.

[00:29:20] Speaker 05:
Read your header and tell me if you agree.

[00:29:25] Speaker 02:
So I agree that we're proposing this issue.

[00:29:28] Speaker 02:
And I see my time's up.

[00:29:29] Speaker 02:
Is that OK with you?

[00:29:31] Speaker 02:
So we had cited the Novartis case.

[00:29:34] Speaker 05:
No, no, I'm not asking you what you cited, although if you're going to point me to a question, if you'd like to point me to a site that says when you weigh the four factors, that's a fact question and we've got to defer to it, that'd be great if you have a site for that.

[00:29:48] Speaker 05:
I don't know of any site for that because it feels to me like that's the de novo legal question.

[00:29:53] Speaker 02:
Sure.

[00:29:53] Speaker 02:
So where we got that?

[00:29:56] Speaker 02:
was from the Novartis case, which if memory serves, said that the persuasive value of secondary considerations is best been reviewed for substantial evidence.

[00:30:04] Speaker 02:
And so I guess what we took from that was that

[00:30:07] Speaker 05:
The board's conclusion here in terms of weighing the different factors was a question of... You don't have anything handy you can point me to for where that is, because weighing the factors against each other, I don't know, what would the obviousness legal part be if it weren't that?

[00:30:23] Speaker 02:
Sure.

[00:30:25] Speaker 02:
I can tell you where your honor is coming from.

[00:30:27] Speaker 02:
We cited that case on page 24.

[00:30:49] Speaker 05:
Well, that's the factor.

[00:30:51] Speaker 05:
Whether objective indicia support a finding of non-obvious, that's is there commercial success, right?

[00:30:57] Speaker 05:
That's establishing each individual factor is a question of fact.

[00:31:02] Speaker 05:
But the weighing of them, I mean, at least the quote that you have there doesn't.

[00:31:05] Speaker 02:
Sure.

[00:31:07] Speaker 02:
And now that Joanna points that out, I can see how Joanna is reading that sentence.

[00:31:11] Speaker 02:
And so maybe it doesn't say, it doesn't support the way we have cast the issue.

[00:31:16] Speaker 02:
The way we had read that sentence, and that's kind of the base for our header there, was that it suggested that the comparison of the primary case against secondary considerations was a fact question.

[00:31:29] Speaker 05:
But it's not.

[00:31:30] Speaker 02:
Sure.

[00:31:32] Speaker 05:
I mean, do you have some case that says that's a fact?

[00:31:33] Speaker 05:
That's the law.

[00:31:34] Speaker 05:
That's the obviousness question, right?

[00:31:36] Speaker 05:
That's the de novo review question.

[00:31:38] Speaker 02:
I'm not aware of a case that speaks directly to that issue.

[00:31:42] Speaker 05:
Well, if it wasn't the weighing that was the law part, what would be the law part?

[00:31:47] Speaker 02:
Well, I think that's... So for example, the idea that you need a motivation to combine, that's part and parcel of making an obvious... That's kind of a legal requirement.

[00:31:56] Speaker 05:
So you think only articulating the obviousness test itself is a question of law, but actually you don't see anything in the application of that test that's a question of law?

[00:32:07] Speaker 02:
Your Honor, I am not aware of one way or the other.

[00:32:10] Speaker 02:
I don't have a strong answer one way or the other in terms of...

[00:32:13] Speaker 02:
whether any sort of weighing could be a question of law there.

[00:32:16] Speaker 02:
I'm not aware of a case addressing that.

[00:32:18] Speaker 05:
I got to be honest.

[00:32:19] Speaker 05:
I thought that was sort of like a 101 patent law sort of thing.

[00:32:21] Speaker 05:
And I don't mean section 101.

[00:32:22] Speaker 05:
I mean, like, basic, like, the weighing of the factors is the legal part.

[00:32:26] Speaker 05:
But I don't know.

[00:32:28] Speaker 05:
OK, well, I don't have anything else.

[00:32:31] Speaker 05:
Is there anything else?

[00:32:33] Speaker 02:
Thank you.

[00:32:34] Speaker 05:
OK, thank you, counsel.

[00:32:57] Speaker 01:
Thank you your honors I believe I have questions to respond to first and foremost on the issue of waiver we're gonna bring that back up I think my colleague quoted the final decision Where the board said something along the lines to the extent as any attacks some certain factual finding we disagree because they're capable of detecting backscattered radiation, I think that's all the

[00:33:25] Speaker 01:
evidence you need to find that this issue was preserved, it was considered and rejected by the board.

[00:33:29] Speaker 01:
It was presented to this court on appeal or it was not?

[00:33:32] Speaker 05:
I mean, he said that waiver, he doesn't understand waiver to any longer be an issue because in your gray brief, you say you're not relying on the substantially perpendicular argument anymore.

[00:33:44] Speaker 05:
Is that inaccurate?

[00:33:47] Speaker 01:
It's not inaccurate.

[00:33:48] Speaker 01:
Our position has done disclosed detectors that detect from thorough sources at all, whether they're perpendicular, parallel, or any other sort of arrangement.

[00:33:55] Speaker 00:
So that's a 90 degree disposition.

[00:33:57] Speaker 00:
It's no longer an issue.

[00:33:59] Speaker 01:
It is not material to the anticipation question.

[00:34:05] Speaker 01:
To Your Honor's question about weighing of factors,

[00:34:10] Speaker 01:
I tend to agree that it is obvious this is a question of law, but I'm not aware of any particular citation I can give you on that precise point like my colleague.

[00:34:17] Speaker 01:
But that was my understanding as well.

[00:34:19] Speaker 01:
If you have any further questions, please let me know.

[00:34:21] Speaker 01:
Otherwise, I would just quickly like to return to some of the anticipation.

[00:34:27] Speaker 01:
argument we just heard.

[00:34:28] Speaker 01:
If you look at the record, what Viking presented to the board on anticipation was originally premised on these detectors 20, which are on the other side of the figure of CEPI.

[00:34:40] Speaker 01:
We pointed out on reply that those were not appropriate.

[00:34:44] Speaker 01:
They're the wrong type of detectors for backscatter or scatter radiation at all.

[00:34:47] Speaker 01:
And they withdrew it on reply.

[00:34:49] Speaker 01:
And their expert actually admitted that the detectors 20 on the bottom side would not serve as scatter detectors

[00:34:58] Speaker 01:
And then that's when Viking really started developing its additional detector theory, the ones that can be between the sources and the cargo container.

[00:35:06] Speaker 01:
And this is where the impermissible gap filling, even Viking recognized that this disclosure just was not present in CEPI.

[00:35:13] Speaker 01:
And so they directed the board and the board didn't point to it specifically, but I think it's telling that the petitioner referred the board to CEPI's citation to USPAT number 6292533.

[00:35:26] Speaker 01:
which is, that's at Appendix 350, it says this will provide you, this would provide some additional guidance on where you can position backscatter detectors.

[00:35:35] Speaker 01:
That patent is not incorporated by reference.

[00:35:38] Speaker 01:
They also refer the board to a secondary patent that says, and argue that it gives additional guidance to a person of ordinary scale in the art, how they might dispose the backscatter detectors.

[00:35:49] Speaker 01:
This is,

[00:35:51] Speaker 01:
This is telling evidence that even the petitioner recognized that there is no express or inherent disclosure in CEPI on where or how to position the backscatter detectors, how many there are, how close they are to the sources relative to the cargo container, the energy levels that are necessary, whether they're in the same plane, whether they're shielded, whether they're obstructed.

[00:36:09] Speaker 01:
We don't have any information that is necessary to make the factual finding that the board did, and it's therefore not supported by substantial evidence.

[00:36:18] Speaker 01:
The director characterized

[00:36:19] Speaker 01:
The board's finding is implicit no less than five times in their briefing.

[00:36:22] Speaker 01:
We don't think that's sufficient for the board to justify its judgment that these claims are anticipated.

[00:36:29] Speaker 01:
And I refer again to the net money in case, where this court has said, differences between the prior art and the claimed invention, however slight, invoke concepts of obviousness, not anticipation.

[00:36:39] Speaker 01:
The board found anticipation, and it should be reversed.

[00:36:42] Speaker 04:
Thank you.

[00:36:44] Speaker 04:
OK.

[00:36:44] Speaker 05:
I thank both counsels.