[00:00:00] Speaker 02:
Our next case for argument is 24-1291, Dexcom v. Stewart.

[00:00:07] Speaker 02:
Mr. Vandenberg, please proceed when you're ready.

[00:00:11] Speaker 00:
May it please the court?

[00:00:13] Speaker 00:
The court should reverse for three primary reasons.

[00:00:16] Speaker 00:
First, a partially blank canvas does not teach all possible ways of filling in the blanks.

[00:00:23] Speaker 00:
Second, a logical fallacy

[00:00:26] Speaker 00:
is not a reasonable inference that a posita would make.

[00:00:31] Speaker 00:
And third, new matter that is added to an application after it's filed is not 102e prior art.

[00:00:39] Speaker 00:
So I would invite the court's attention to our blue brief on page 18, where we have a drawing of the Feldman figure 4a.

[00:00:49] Speaker 00:
So this is the blue brief, page 18.

[00:00:52] Speaker 00:
This is Feldman 4a as filed.

[00:00:56] Speaker 00:
And what we see in the upper right-hand corner is 29cc.

[00:01:00] Speaker 00:
That is a contact portion above the skin for one of the electrodes.

[00:01:06] Speaker 00:
And from that, we see two lines that go down vertically.

[00:01:10] Speaker 00:
Then they go to the right horizontally.

[00:01:12] Speaker 00:
And then they go down vertically again.

[00:01:14] Speaker 00:
And we see here that when they go down vertically the second time, they get narrower, which is significant later on.

[00:01:23] Speaker 00:
This picture is worth 1,000 questions.

[00:01:26] Speaker 00:
For instance, Feldman doesn't say what those two lines are.

[00:01:30] Speaker 00:
He doesn't say whether those are two separate wire traces, or if the space between them is a trace, a single trace.

[00:01:37] Speaker 03:
I'm going to interrupt you for a minute.

[00:01:39] Speaker 03:
I understand your argument.

[00:01:41] Speaker 03:
And if I were the fact finder, I might find this very convincing.

[00:01:45] Speaker 03:
But one concern I have is that

[00:01:49] Speaker 03:
the board relied on numerous things for a different fact-finding than the one that you're advocating for right now, including the two-electrode embodiment, which is shown, I think, in figure 2A or 2B.

[00:02:01] Speaker 03:
I can't remember what the number was specifically, but it showed that there was an electrode followed by a non-conductive surface followed by an electrode.

[00:02:09] Speaker 03:
And so it's not

[00:02:12] Speaker 03:
That is some substantial evidence to support the idea that the same configuration would exist for a three electrode embodiment.

[00:02:22] Speaker 03:
In addition, there was the expert testimony, I think, of Dr. Smith.

[00:02:25] Speaker 03:
explaining how the various figures, including figure 4B, supported the idea that these electrodes would be stacked, or could be stacked, right?

[00:02:41] Speaker 03:
And that a person would read the prior art in that way.

[00:02:44] Speaker 03:
I mean, I see the point you're making is that maybe you could persuade a different fact finder that

[00:02:51] Speaker 03:
the configuration would be not so that the electrodes are stacked, but what do you do about the substantial evidence that undermines your position, in other words, supports the board's position?

[00:03:01] Speaker 00:
Well, there's three problems with the finding that the board made.

[00:03:06] Speaker 00:
First, is it depended heavily on a logical fallacy, which we briefed and I can get to.

[00:03:13] Speaker 00:
The logical fallacy was Dr. Smith looked at these traces, not in this figure, but the later modified figure.

[00:03:20] Speaker 00:
And he said, because I only see one, I know that the other two underneath are stacked, which is logically illogical, because they could be side by side.

[00:03:32] Speaker 00:
He couldn't see what was underneath them.

[00:03:34] Speaker 00:
The board accepted that logical fallacy as the only evidence

[00:03:39] Speaker 00:
for finding that these traces that run from 29cc or B or A down to under the skin, that those traces, as distinguished from the electrodes that are under the skin,

[00:03:53] Speaker 00:
were stacked.

[00:03:54] Speaker 00:
That was the only basis for finding that.

[00:03:56] Speaker 00:
Did not rely on figure.

[00:03:57] Speaker 03:
You're saying the board only relied on the figure for its finding?

[00:04:01] Speaker 00:
No.

[00:04:02] Speaker 00:
I'm sorry.

[00:04:03] Speaker 00:
For the initial threshold finding that the traces were stacked, as opposed to the electrodes, which comes later, for that finding, the board on appendix 40, appendix 44, relied solely on Dr. Smith's testimony

[00:04:19] Speaker 00:
And Dr. Smith's testimony on that point was based solely on the logical fallacy that because I can only see one, the other two must be stacked in a particular arrangement.

[00:04:29] Speaker 00:
He said A was under B was under C. So that is a fundamental flaw with Abbott's case and therefore with the board's finding.

[00:04:37] Speaker 00:
The second problem is that the board did not deal with the fact that figure 4A

[00:04:43] Speaker 00:
says it is a perspective view.

[00:04:46] Speaker 00:
And Abbott in their red brief agreed for a supposed to be a perspective view.

[00:04:51] Speaker 00:
Well, if it's a perspective view and the electrodes or the traces are stacked, why isn't that shown in the perspective view from the side?

[00:05:01] Speaker 00:
As we see, say, the skin is shown here in a perspective view.

[00:05:05] Speaker 00:
The board didn't deal with that.

[00:05:07] Speaker 00:
So that's a fundamental flaw with their reasoning and undermines the substantial evidence point Judge Stoll that you were making.

[00:05:15] Speaker 00:
And the third problem is they relied on the wrong version of Figure 4A.

[00:05:19] Speaker 00:
They relied on a later version.

[00:05:22] Speaker 00:
We see here on Blue Brief 18, as I noted, that the

[00:05:27] Speaker 00:
The lines from 29 CC get narrower as they go down.

[00:05:31] Speaker 00:
As a result, if this is a single trace, we'll assume that, the space between the single trace, it is narrower than the two traces coming from AA and BB, as shown horizontally.

[00:05:43] Speaker 00:
That raises the question, how can something narrow hide two wide things that are behind it?

[00:05:50] Speaker 00:
Abbott didn't address that question.

[00:05:51] Speaker 00:
Dr. Smith, as far as we know, never saw this figure.

[00:05:54] Speaker 00:
The board didn't address that question.

[00:05:56] Speaker 00:
Instead, if we turn to Appendix 46,

[00:06:01] Speaker 00:
Appendix 46 is part of the final written decision of the board.

[00:06:06] Speaker 00:
And this is one of the two places, at least two places, where the board relied on Dr. Smith's logical fallacy.

[00:06:15] Speaker 00:
So we see a quote here.

[00:06:16] Speaker 00:
The board is quoting Dr. Smith, paragraph 206 of his declaration.

[00:06:21] Speaker 00:
And in that paragraph, he says that,

[00:06:24] Speaker 00:
In figure 4A, the published version, the trace from AA to A is underneath the trace for B, which is underneath the topmost trace.

[00:06:35] Speaker 00:
And then he says, the last sentence, quote, this is why only the topmost conductive trace is visible in the portion leading to the electrode.

[00:06:43] Speaker 00:
Again, that's illogical.

[00:06:44] Speaker 00:
The fact that you can only see the red thing here, CC, doesn't tell you that the two underneath are

[00:06:53] Speaker 00:
are stacked.

[00:06:54] Speaker 00:
They could be side by side.

[00:06:56] Speaker 00:
And it's significant here.

[00:06:59] Speaker 00:
It goes to his logical fallacy that this modified version of 4a is the opposite relative widths than we just saw in the filed version.

[00:07:07] Speaker 00:
If we see here, the red color, which Abbott added the red to figure 4a is published, the red is thicker.

[00:07:15] Speaker 00:
then it got thicker when it went from horizontal to vertical, and it's thicker than the two horizontal green and blue traces.

[00:07:23] Speaker 00:
And therefore, it is less of a logical leap to say, as Dr. Smith said, that the red is blocking the narrower green and blue.

[00:07:34] Speaker 00:
But how does a narrow trace in the as-filed application block two things that are wider?

[00:07:41] Speaker 00:
So therefore,

[00:07:42] Speaker 00:
the differences between the published version and the as-filed version may seem small, and in most every other context wouldn't matter.

[00:07:49] Speaker 00:
And our point, excuse me, our point on 102E would be purely academic.

[00:07:55] Speaker 00:
But it's not academic here, because we don't know what Dr. Smith would have said had he focused on the actual prior art version of Figure 4A.

[00:08:04] Speaker 03:
Was this argument about the differences

[00:08:08] Speaker 03:
between application figure 4A and published application figure 4A made in the patent owner response?

[00:08:19] Speaker 00:
Not per se, no.

[00:08:21] Speaker 00:
It was in the popper.

[00:08:24] Speaker 00:
By the time we got to the patent owner response, however, we already had in the record evidence showing the difference.

[00:08:32] Speaker 00:
We'd already explained to the board the difference.

[00:08:34] Speaker 00:
And the board had already found there was a difference.

[00:08:37] Speaker 00:
The board said it was a small difference.

[00:08:40] Speaker 03:
I hear you, but the concern I have is waiver.

[00:08:42] Speaker 03:
I mean, if you make an argument in opposing the institution of the IPR, but you don't carry it forward in the patent owner response, the PTO has a rule that says it doesn't have to consider that argument, right?

[00:08:54] Speaker 00:
Agreed.

[00:08:56] Speaker 00:
However, one has to focus on what the argument is.

[00:08:59] Speaker 00:
The board did not find that we waived the argument we're making now.

[00:09:04] Speaker 00:
The board founds, didn't say forfeit or waive, but that was the gist of it, that we waived arguing against admissibility of the Feldman publication.

[00:09:13] Speaker 00:
That's what the board found.

[00:09:15] Speaker 00:
We never argued that the Feldman publication was inadmissible.

[00:09:18] Speaker 00:
It's obviously admissible.

[00:09:20] Speaker 00:
The Feldman publication shows that it was published.

[00:09:22] Speaker 00:
It shows the filing date of the application.

[00:09:25] Speaker 00:
What it doesn't show is the contents of the application.

[00:09:28] Speaker 00:
And that argument we made in the patent owner response, and we made it again in the Sir reply.

[00:09:35] Speaker 00:
That's our argument.

[00:09:36] Speaker 00:
The argument is,

[00:09:38] Speaker 00:
when you make a prior art challenge, you've got to bring the prior art.

[00:09:41] Speaker 00:
And in this instance, Abbott was on notice that there was a delta between the prior art application as filed, which is the prior art under 102E and Ray Hilmer, and what they had in the record, the publication.

[00:09:56] Speaker 00:
And therefore, it was incumbent upon them to then put in

[00:10:01] Speaker 00:
post-institution, the application is filed.

[00:10:04] Speaker 00:
And the rules, the patent notice rules, allowed them in their reply to put in the application as filed in response to the institution decision that said this issue needs to be developed further.

[00:10:17] Speaker 00:
So they had that opportunity, but they stubbornly stuck to something that's not prior art.

[00:10:22] Speaker 00:
And therefore, the three errors of the board, they relied

[00:10:27] Speaker 00:
as this threshold finding on a logical fallacy, which Abbott hasn't really tried to defend.

[00:10:32] Speaker 03:
How do you respond to the board's reliance on Feldman's figure 2a, which is showing a stacked configuration of electrodes and non-conductive surfaces in between them?

[00:10:48] Speaker 03:
to support the finding that that would be a reasonable understanding of the implementation of figures for A and for B embodiment?

[00:11:00] Speaker 00:
Well, two ways.

[00:11:01] Speaker 00:
One is, under harmless error, there would be speculation to rule, we submit, that the board would have ruled the same way had they seen through the logical fallacy, had they relied upon the right prior art, and had they considered the fact

[00:11:17] Speaker 00:
that 4A is a prospective view.

[00:11:19] Speaker 00:
We don't know that their reliance on 2A would have mooted all of that, and we suspect not.

[00:11:25] Speaker 00:
And then second, 2A was just a standard two-electrode in vivo sensor that had a single substrate with electrode on top and electrode on bottom.

[00:11:36] Speaker 00:
That was the same as MAO, it was the same as one of the SAE references, and therefore there was nothing special about 2A.

[00:11:49] Speaker 00:
Is there no further questions?

[00:11:50] Speaker 00:
Is there any time for rebuttal?

[00:11:51] Speaker 02:
Yes.

[00:11:53] Speaker 02:
OK, let's hear from the government.

[00:11:55] Speaker 02:
Ms.

[00:11:55] Speaker 02:
Tabassi?

[00:11:57] Speaker 02:
Did I say your name right?

[00:11:58] Speaker 02:
Queller.

[00:11:59] Speaker 02:
Oh, I'm sorry.

[00:12:00] Speaker 02:
Wrong.

[00:12:01] Speaker 02:
No, I definitely didn't say your name right.

[00:12:03] Speaker 02:
I was even looking at the right person.

[00:12:04] Speaker 02:
Sorry about that.

[00:12:07] Speaker 01:
Your Honors, and may it please the Court.

[00:12:09] Speaker 01:
The board's decision that the Feldman publication teaches the claimed electrode configuration is supported by substantial evidence.

[00:12:16] Speaker 01:
And the board properly relied on the Feldman

[00:12:19] Speaker 01:
Feldman publication as 102e prior art.

[00:12:23] Speaker 01:
Unless your honors have a different preference, I'll start with a substantial evidence supporting the board's decision.

[00:12:28] Speaker 01:
And that evidence includes not, as opposing counsel said, just a partially blind canvas or just figure 4A.

[00:12:36] Speaker 01:
Instead, it included Feldman's figures 4A, 4B, 2A, the knowledge of the ordinary artisan, which was the Highland and Dobson reference, as well as combined Dr. Smith's testimony.

[00:12:51] Speaker 01:
So all of that together was substantial evidence support that one of ordinary skill in the art would understand

[00:12:58] Speaker 01:
the traces in 4A to be in a stacked configuration.

[00:13:03] Speaker 01:
With respect to the perspective view argument that opposing counsel made, respectfully, that really just goes nowhere.

[00:13:12] Speaker 01:
While Feldman does describe 4A as a perspective view, that doesn't mean it's a good perspective view, because if it was, it would disclose what configuration in a three-day

[00:13:24] Speaker 01:
environment those traces were.

[00:13:27] Speaker 01:
Whether it's the alternatives that Dr. Tapsack said or the way Dr. Smith interpreted it, if it truly was a good perspective view, it would show we all agree that these traces are there and do go somewhere.

[00:13:40] Speaker 01:
The fact is it just did not show it.

[00:13:42] Speaker 01:
What it does show is they cover up one another.

[00:13:45] Speaker 01:
So that in conjunction with figure 4B and then also figure 2A, which the board, as your honor,

[00:13:53] Speaker 01:
take a knowledge does look at and credited Dr. Smith's testimony that all that together.

[00:13:59] Speaker 03:
How do you respond to the point that the board and Dr. Smith should have only been looking at application figure 2A?

[00:14:09] Speaker 01:
As the board found properly, 102E prior art is the publication.

[00:14:16] Speaker 01:
That is the argument that they made.

[00:14:17] Speaker 01:
The only argument that they made is that you have to look at the application, not the publication.

[00:14:22] Speaker 01:
The language of 102E says the prior art is the application published.

[00:14:27] Speaker 01:
That is consistent with the large breadth of federal court precedent that says you look at the published application.

[00:14:35] Speaker 01:
It's inconsistent with MPEP 2136 that says the publication

[00:14:40] Speaker 01:
is the prior art.

[00:14:42] Speaker 01:
And while this is not in the record, it is also consistent with the legislative history in 1999 when they added published applications as 102E art.

[00:14:52] Speaker 01:
It is the publication that is the prior art.

[00:14:54] Speaker 01:
So the argument that the application is, quote, the actual prior art, which I think is the quote I heard,

[00:15:00] Speaker 01:
is simply incorrect, and that is what the board addressed.

[00:15:04] Speaker 01:
With respect to the argument that there needs to be written description support, or that there's new matter with respect to the publication, that was waived.

[00:15:13] Speaker 01:
So in the Patent Owner Response, all they argued was you need the application, and then there were some federal rules of evidence arguments.

[00:15:21] Speaker 01:
Those are the arguments that the board addressed.

[00:15:24] Speaker 01:
As the scheduling order says, and as was recognized in NURA-NUVASIV,

[00:15:28] Speaker 01:
If you don't raise it in a patented response, it has been forfeited.

[00:15:34] Speaker 01:
While it's an interesting question of whether you actually need written description support in the application, it simply was not raised.

[00:15:41] Speaker 01:
And the Hilmer case that opposing counsel mentioned was a completely different scenario that was talking about 119

[00:15:49] Speaker 01:
priority support to the provisional.

[00:15:51] Speaker 01:
We're just talking about the application as filed.

[00:15:56] Speaker 01:
That date is what date publication gets.

[00:16:01] Speaker 01:
Let's see.

[00:16:03] Speaker 01:
And then finally, just one final point, unless your honors have any additional questions, I'd submit that it's not illogical, as been frequently said, that there's this stacked configuration that just directly flows.

[00:16:17] Speaker 01:
It may not be agreeable to DEXCOM, but that is the configuration that directly flows from all of the evidence together, for A, for B, to A.

[00:16:28] Speaker 01:
Highland and Dobson, which were the knowledge of the ordinary artisan that the board also found relevant.

[00:16:34] Speaker 03:
And do I take it that it's also your position that that's one possible logical understanding?

[00:16:40] Speaker 03:
There might be other understandings, but even if that's just one, that's enough because Dr. Smith gave a reason for why one of the ordinary's filmy art would have been motivated to have that configuration?

[00:16:52] Speaker 01:
I would say it a little differently, Your Honor.

[00:16:53] Speaker 01:
I would say that the board found that preponderance of the evidence supported that that was the configuration that Warden Borgers, Bill and the Art would fairly understand from 4A.

[00:17:04] Speaker 01:
The fact that Dexcom has presented

[00:17:07] Speaker 01:
alternative configurations, you can view that in two ways.

[00:17:11] Speaker 01:
One, as the board found, that does not teach away from the proponents of the evidence supporting that this is the configuration that would be understood from 4a.

[00:17:19] Speaker 01:
And then before this court, the fact that an alternative reading may be reasonable does not mean there's not substantial evidence supporting what the board found.

[00:17:29] Speaker 01:
There is substantial evidence that proponents of the evidence of the board found

[00:17:32] Speaker 01:
supports that you would understand 4A as this configuration.

[00:17:37] Speaker 01:
The board did not say it would have been obvious to choose this or you would have been motivated.

[00:17:41] Speaker 01:
They said this is what we understand when we're able to have viewed 4A as disclosing.

[00:17:49] Speaker 01:
Unless your honors have any other questions, we ask that you affirm the board's decision.

[00:17:52] Speaker 02:
Thank you, Mr. Vandenberg.

[00:17:54] Speaker 02:
We have some rebuttal time.

[00:17:59] Speaker 00:
Thank you.

[00:18:01] Speaker 00:
On the substantial evidence, my friend said that the board relied on a lot of material to find that the traces were in a stacked configuration, relied on 2A, 4A, 4B, and Dr. Smith.

[00:18:16] Speaker 00:
That's incorrect.

[00:18:17] Speaker 00:
To find that the traces were in a stacked arrangement, the board relied on one thing, Dr. Smith's testimony, as shown in Appendix 46, also Appendix 29.

[00:18:28] Speaker 00:
As far as then finding that the electrodes were stacked, they relied primarily, initially, on the fact that they had already found the traces were stacked.

[00:18:37] Speaker 00:
And the idea is that, well, if the tracers are stacked, then the electrodes must be stacked, so they line up.

[00:18:42] Speaker 00:
That's why the traces finding was linchpin.

[00:18:46] Speaker 00:
Second, as far as perspective view, counsels suggested that, well,

[00:18:52] Speaker 00:
It doesn't show the perspective view wasn't a good one.

[00:18:54] Speaker 00:
It would have shown something if it was good, if it was coplanar the way we say.

[00:18:59] Speaker 00:
That isn't true.

[00:19:00] Speaker 00:
If it's coplanar, the perspective view is just going to show what it shows now.

[00:19:03] Speaker 00:
There's nothing to show.

[00:19:04] Speaker 00:
There's no third dimension if it's coplanar.

[00:19:07] Speaker 00:
The fact that a perspective view does not show the third dimension means there is no third dimension.

[00:19:12] Speaker 00:
It means it's not stacked.

[00:19:13] Speaker 00:
And again, not asking the court to make finding on that, it's the board didn't consider that, didn't address that despite that being briefed.

[00:19:23] Speaker 00:
And as far as 102E, my friend said that in 102E the publication is the prior art.

[00:19:30] Speaker 00:
We respectfully disagree.

[00:19:32] Speaker 00:
We're right now fostering seven kittens.

[00:19:35] Speaker 00:
My wife has been sending around pictures of the seven kittens.

[00:19:38] Speaker 00:
If Feldman had been filed, the only drawings were the pictures of those seven kittens.

[00:19:43] Speaker 00:
And then months later, by amendment, added figure four.

[00:19:47] Speaker 00:
I assume my friend would agree, figure four is not 102E prior art.

[00:19:51] Speaker 00:
102E basically encapsulated in the statute what the Supreme Court had said long ago.

[00:19:59] Speaker 00:
It's all about priority of invention.

[00:20:02] Speaker 00:
and the assumption that under 102e and under Supreme Court law in Hilmer was that if you file an application describing an invention, we're going to assume the patent office could have published that the same day.

[00:20:13] Speaker 00:
We're not going to penalize you in determining priority of invention by the fact that it took time to issue it.

[00:20:19] Speaker 00:
And therefore,

[00:20:21] Speaker 00:
If the kittens was in the application and they have figure four in the publication, figure four is not prior art.

[00:20:28] Speaker 00:
The application is prior art, albeit it has to be published.

[00:20:34] Speaker 00:
In conclusion, our invention might seem obvious once you see it, but that it wasn't obvious ex ante we submit is proven nicely by Feldman.

[00:20:46] Speaker 00:
Feldman is the best Abbott could come up with.

[00:20:49] Speaker 00:
And it doesn't show hardly anything.

[00:20:51] Speaker 00:
It's basically figure four is a cartoon drawing.

[00:20:55] Speaker 00:
It's supposed to be perspective view, but it doesn't show the claims five layer arrangement in the claims.

[00:21:02] Speaker 00:
And therefore, we submit, since the errors that the board made were built into the petition, the petition didn't have the prior art, didn't address the perspective view, and it was based on Smith's logical fallacy, we ask that the court reverse the board's findings as to ground two.

[00:21:18] Speaker 02:
Thank you.

[00:21:19] Speaker 02:
I take this case under submission.