[00:00:00] Speaker 01: All right, our next case for argument is 24-1129, Garden Health versus the University of Washington. [00:00:08] Speaker 01: Mr. Rosencrantz, please proceed. [00:00:11] Speaker 03: Good morning, honors. [00:00:11] Speaker 03: May it please the court, Josh Rosencrantz representing Garden. [00:00:16] Speaker 03: Your honors, everyone agrees on a fact that requires remand under this course precedent. [00:00:22] Speaker 03: That undisputed fact is that the prior audit had already combined the two key elements that issue here. [00:00:32] Speaker 04: Can you show me in your petition where you argued a single reference obviousness case based upon the Travers 75 publication? [00:00:47] Speaker 03: Sure, Your Honor. [00:00:47] Speaker 04: Because that's what you're arguing to us now. [00:00:50] Speaker 04: That Travers 75, including that paragraph, is it 122, has all the elements, right? [00:00:56] Speaker 03: Yes. [00:00:56] Speaker 04: Where in the petition do you clearly make that single reference obvious in this case? [00:01:02] Speaker 03: Well, in the petition, Your Honor, we say we refer to the pair as the Travers publications. [00:01:07] Speaker 03: I know you're asking me specifically. [00:01:10] Speaker 03: We said that both of them quote, this is at 179, provide descriptions of the same hack bio methodology. [00:01:20] Speaker 03: I will underscore that the board understood that that was our argument about paragraph 122 because the board... Hold on, Council, where is your saying both of them? [00:01:33] Speaker 01: What I'm reading on page 179, a post that would have been motivated to look to both Travers 079 and the Travers Paces because together the references provide descriptions of the same PAC biomethodology. [00:01:48] Speaker 01: So together, taken together, they provide it. [00:01:52] Speaker 01: Not each independently provides it. [00:01:54] Speaker 03: Yes, Your Honor. [00:01:55] Speaker 03: But our point in the petition was that the two were describing the same methodology. [00:02:01] Speaker 03: Are they are both describing the same? [00:02:05] Speaker 03: We said in our reply, the quote. [00:02:08] Speaker 04: We have to make the argument. [00:02:13] Speaker 04: There's no doubt in my mind that Traverse 75 discloses this, but I searched in the petition for any place where you said Traverse 75 renders these claims obvious. [00:02:26] Speaker 04: Your Honor, the important thing here is that the board... No, the important thing is that our precedent requires you to actually disclose that ground to the board. [00:02:35] Speaker 04: And all the charge, all the discussion, all of it talks about a combination of the two Travers references. [00:02:42] Speaker 03: Your Honor, I disagree. [00:02:44] Speaker 03: Let me start by saying. [00:02:46] Speaker 04: I'll invite you to point to me in your petition, once again, your best place where it says, these patents are rendered obvious by Travers 75. [00:02:56] Speaker 03: We don't say those words, Your Honor. [00:02:59] Speaker 03: What we do is mask them. [00:03:00] Speaker 00: Do you have to say those words? [00:03:01] Speaker 03: We don't have to say who it was. [00:03:03] Speaker 00: Why are you taking that position? [00:03:04] Speaker 00: Why can't you just say that Traverse 75, I mean, I don't understand. [00:03:08] Speaker 00: Traverse 75 discloses elements B and C. Oh, that that alone is what you're relying for elements B and C? [00:03:17] Speaker 00: I mean, right? [00:03:18] Speaker 00: I mean, I don't understand why you would even have this conversation. [00:03:22] Speaker 00: Could you explain, looking in the paragraph on pages A178 to 179, what your position is? [00:03:28] Speaker 00: Is it your view that it's Travers combined with the Travers paper, otherwise known as 2010, and how they are combined? [00:03:37] Speaker 00: Yes. [00:03:38] Speaker 03: So what we did on those pages was to map each element [00:03:44] Speaker 03: onto Travers 075, paragraph 122. [00:03:48] Speaker 03: And then we would do a C also to Travers 2010. [00:03:53] Speaker 03: And the point I was trying to make earlier is that the board understood that that's what we were doing in our petition. [00:03:59] Speaker 03: In its institution decision, the board correctly described the petition exactly as you just did. [00:04:06] Speaker 00: Give us the site for that. [00:04:08] Speaker 03: At 352. [00:04:12] Speaker 03: Exactly as you just did, Judge Stoll. [00:04:15] Speaker 03: Travers 075, paragraph 122. [00:04:21] Speaker 03: explicitly taught steps B, that's amplifying, and C, that's sequencing, without requiring modification. [00:04:31] Speaker 03: That's the board reading our petition. [00:04:33] Speaker 03: The board understood that those two elements were both in Travers 122. [00:04:39] Speaker 01: And how did they get so far from this in the final decision? [00:04:47] Speaker 01: If they understood the institution decision, [00:04:50] Speaker 01: that you were making this argument. [00:04:53] Speaker 01: How do you think they ended up so askew in the final decision? [00:04:56] Speaker 03: Your Honor, what they said was that further evidence revealed the facts more. [00:05:00] Speaker 03: Now, there was no further evidence about what paragraph 122 taught. [00:05:05] Speaker 03: The further evidence was the board concluding that it's not going to abide by real time [00:05:12] Speaker 03: and by GE, because it thought that the combination wouldn't work. [00:05:17] Speaker 00: I will understand. [00:05:18] Speaker 00: Can I ask you a question? [00:05:19] Speaker 00: Do you think that they took a different interpretation of the petition? [00:05:23] Speaker 00: I mean, we do review that for abuse of discretion, right? [00:05:26] Speaker 00: You're on it. [00:05:27] Speaker 00: Backing that up. [00:05:27] Speaker 00: So just for everyone in the room, the Supreme Court has told us that the petition sets the stage for what is at issue before the board. [00:05:38] Speaker 00: So we're really looking at the petition to see what the proposed combination was to understand to see if the board set up, if you will, a red herring argument. [00:05:48] Speaker 00: to see if there was a particular combination that was being proposed that then would not work. [00:05:53] Speaker 00: Or there would have been a motivation to combine those as they. [00:05:57] Speaker 00: So do you think that they read the petition differently? [00:06:01] Speaker 00: I mean, they're allowed to do that, right? [00:06:03] Speaker 03: They certainly are allowed to do it. [00:06:04] Speaker 03: They never said they read it differently. [00:06:06] Speaker 03: They repeated on pages 15 to 16 exactly what they found in the institution decision as to how they read. [00:06:14] Speaker 03: And I will underscore again in our rebuttal, our expert made clear again that we were not splitting the elements between Travers 075 and 2010. [00:06:25] Speaker 03: That's at 3164 to 65. [00:06:28] Speaker 03: He mapped both elements onto Travers. [00:06:32] Speaker 03: We mapped all of the elements individually onto Travers at 183 to 84 and at page 503. [00:06:40] Speaker 04: So let me ask you hypothetically. [00:06:43] Speaker 04: you had argued that Travers 2010 supplies all of the necessary steps except one, and that you have to get to Travers 75, paragraph 122 for that final step. [00:06:59] Speaker 04: Would we be in a different stage here? [00:07:01] Speaker 04: Because then the board could say, well, they have to show a motivation to combine these two publications, because it's not taught by all of one publication. [00:07:12] Speaker 04: Let me finish. [00:07:14] Speaker 04: And here's why we don't think you would use paragraph 122 from Traverse 75 in Traverse 2010, because it wouldn't work, no expectation of success, all of that kind of stuff. [00:07:27] Speaker 04: If that were their conclusion, and you did need to combine both of them, then would it be different? [00:07:35] Speaker 03: It might be different, Your Honor. [00:07:37] Speaker 03: You answered this question in GE. [00:07:40] Speaker 03: There were multiple elements in one reference. [00:07:44] Speaker 03: There was one element in the other. [00:07:45] Speaker 03: And the question was whether a person of skill in the art needed to have a motivation to combine the four that were already combined. [00:07:53] Speaker 04: So my answer to you is- No, no, no. [00:07:55] Speaker 04: But that's not what I just asked you. [00:07:57] Speaker 03: Yes. [00:07:57] Speaker 04: Because I agree that you don't have to show the motivation to combine in the same reference. [00:08:02] Speaker 04: It's already there. [00:08:04] Speaker 04: But if, in the classical situation, you have to get to a second reference, [00:08:09] Speaker 04: to disclose a critical element, then the motivation to combine analysis comes into play, right? [00:08:16] Speaker 03: It does, Your Honor. [00:08:17] Speaker 04: Sorry, I'll let you finish. [00:08:19] Speaker 04: But if that's the way the board saw this and thought that you were arguing 2010 in combination with 75 to get to that last element, that would be a typical obvious analysis. [00:08:30] Speaker 04: And if they said no motivation to combine, then we're going to be reviewing that for substantial evidence, right? [00:08:37] Speaker 03: So Your Honor, it depends. [00:08:38] Speaker 03: Hypothetically. [00:08:39] Speaker 03: So my answer is yes with one caveat. [00:08:43] Speaker 03: It depends on which elements were not combined. [00:08:46] Speaker 03: The outlier elements? [00:08:47] Speaker 04: Well, yes. [00:08:48] Speaker 04: Let's just assume for purposes of that hypothetical that the element required by paragraph 122 is only shown in that paragraph. [00:08:57] Speaker 04: And so you had to get to 75 for that. [00:08:59] Speaker 04: and that the other elements that you relied on were all in 2010. [00:09:04] Speaker 03: You would need to show a motivation to combine that one with the other safe board. [00:09:08] Speaker 04: And I have to tell you, I understand your argument on why 75 shows all of this. [00:09:15] Speaker 04: But the board clearly, at least by the time of his decision, thought you were relying on 2010. [00:09:21] Speaker 04: I mean, maybe it was disingenuous of the board to write the decision that way, but it sure looks like they understood, whenever they did an institution, by the time they got to the decision, they understood you to be relying on 2010's disclosure of the Pack Bell system, and that the only thing you needed from 75 was paragraph 122. [00:09:41] Speaker 03: So, Your Honor, if that's what the board said, I would agree that they can reinterpret our petition. [00:09:48] Speaker 03: That is not what the board said. [00:09:50] Speaker 03: The Board of 15 to 16 repeated what it said at institution, did not say that 122, but it did not say that it was reading our petition differently, nor did it say that paragraph 122 does not actually. [00:10:05] Speaker 01: Mr. Rosenkranz, I'm sorry, but I can't imagine your time is up. [00:10:08] Speaker 01: Chris, did you not restart the clock? [00:10:10] Speaker 04: No, he has five more minutes. [00:10:12] Speaker 01: Then why does it say zero on my clock up here? [00:10:15] Speaker 04: So I'm in my rebuttal time. [00:10:25] Speaker 03: Is there a question that I haven't answered? [00:10:30] Speaker 03: Let me just say one last word on [00:10:36] Speaker 03: the backup argument, which is if the court agrees that we don't need to show motivation, of course the court does not have to go to the technical problems. [00:10:46] Speaker 03: But I'll just say one word about the Keystone technical problem here, the single finding of technical problems on which the entire decision of lack of motivation to combine rests [00:10:59] Speaker 03: is that smart sequencing of an RCR-amplified concatomer would not work because multiple DNA polymerases attach to the concatomer. [00:11:11] Speaker 00: And we review that for substantial evidence. [00:11:13] Speaker 03: We do, Your Honor. [00:11:14] Speaker 03: There is literally no evidence that there is a problem with multiple polymerases on the molecule. [00:11:22] Speaker 03: The problem arises only if they bind to the bottom. [00:11:25] Speaker 03: But the board did not find that they are more likely to bind to the bottom. [00:11:30] Speaker 03: If I may reserve the rest of my time for rebuttal. [00:11:51] Speaker 01: OK, Mr. Milliken. [00:11:57] Speaker 02: Good morning, Your Honors, and may it please the Court. [00:12:02] Speaker 02: To the extent this case raises a legal issue, it's whether the Court should adopt Garden's sweeping rule that two elements appearing together in the prior art is by itself dispositive on both motivation to combine and reasonable expectation of success. [00:12:21] Speaker 04: Well, I don't understand that start at all. [00:12:24] Speaker 04: If it's all in a single reference, we don't have to consider motivation to combine, do we? [00:12:30] Speaker 01: Can I put a correction on that before you go too far? [00:12:32] Speaker 01: It's all in a single embodiment, in a single reference. [00:12:35] Speaker 01: Encyclopedia Britannica has one reference. [00:12:37] Speaker 01: Well, we can. [00:12:37] Speaker 02: We can't dispute that, but it's OK. [00:12:39] Speaker 02: I disagree, Your Honor. [00:12:41] Speaker 02: I think the IMPACT case is directly on point. [00:12:44] Speaker 02: That case disclosed an embodiment where solmatriptan was in a nasal formulation, and the district court nevertheless found that a skilled artisan would not have been motivated to put solmatriptan in a nasal formulation. [00:12:55] Speaker 02: And the reason is, as this court said in Arctic Cat, [00:12:59] Speaker 00: evidence suggesting reasons to combine cannot be viewed in a vacuum. [00:13:16] Speaker 00: hey, you could use this template in order to do RCR, which I understand to be amplification. [00:13:23] Speaker 00: And then it says after that, you can use the sequencing techniques taught elsewhere in this patent after you do the amplification. [00:13:34] Speaker 00: Why, under those facts, in this case, do you think that it necessarily means that there has to be a motivation to combine those two steps? [00:13:43] Speaker 02: Because the motivation of combined inquiries is courts that an impacts and Arctic cat has to be done based on the prior art as a whole. [00:13:51] Speaker 02: And the board here found that while we do have paragraph 122, which suggests doing RCR amplification and then sequencing the product. [00:13:59] Speaker 02: We also have Travers 075 itself recommending against concatenation of its DNA. [00:14:06] Speaker 02: We have a multitude of prior art references saying that smart sequencing doesn't use an amplification. [00:14:12] Speaker 00: Well, that's what it says, right? [00:14:15] Speaker 00: I understand what you're saying. [00:14:16] Speaker 00: It says, if you're doing smart sequencing alone, you're not going to amplify. [00:14:21] Speaker 00: Correct. [00:14:22] Speaker 00: But then there's this one-off embodiment that says, hey, you know, you could use this template. [00:14:27] Speaker 00: in order to amplify and then sequence using smart sequencing. [00:14:35] Speaker 02: properly weighed that one-off embodiment against all of the other evidence, including our experts over 100 paragraph explanation of why this wouldn't work. [00:14:45] Speaker 02: The board properly weighed the evidence and found that, in fact, you wouldn't be motivated to do this and wouldn't expect to do that. [00:14:51] Speaker 00: So your view is that in patent law, if there's two references or even one reference and it teaches the elements of the claim, [00:15:01] Speaker 00: in sequential order as required by the claim. [00:15:05] Speaker 00: It is OK to turn to obviousness anyway if there's other evidence that teaches away from those two steps being performed one after the other. [00:15:18] Speaker 02: Well, if they had argued anticipation, then we wouldn't be having this conversation. [00:15:22] Speaker 02: Then motivation and combined expectation of success wouldn't be relevant. [00:15:25] Speaker 02: But could you answer that question? [00:15:27] Speaker 02: Oh, I apologize. [00:15:29] Speaker 02: I thought that was. [00:15:30] Speaker 02: If you were arguing [00:15:31] Speaker 02: obviousness, and the patentee puts forward evidence that notwithstanding the fact that the elements are disclosed together in the art, a skilled artisan in fact wouldn't want to do it, then yes, I think the trier of fact has to weigh that evidence, and I think that's what the impacts case says. [00:15:48] Speaker 00: Even where it's not the theory that's put forth by the challenger in the petition. [00:15:55] Speaker 02: Could you clarify? [00:15:57] Speaker 00: So you're saying that There has to be a showing that one of ordinary's film the art would have modified Traverse 075 paragraph 122 to know that you would have RCR Replication followed by smart sequencing so I wouldn't put it quite that way I would say that so garden pointed to a [00:16:22] Speaker 02: to paragraph 122 of 075 and says, hey, you could sequence the RCR product using smart sequencing. [00:16:30] Speaker 02: We came back and said, no, actually, you wouldn't want to do that because of all these technical problems it would introduce. [00:16:37] Speaker 02: I am saying that the trial of a fact has to weigh that evidence to decide which side has the better side of the argument. [00:16:44] Speaker 02: Even if you disagree with me on motivation to combine, though even if you think that two elements appearing together in the prior art is by itself dispositive on motivation to combine, [00:16:53] Speaker 02: That doesn't help garden unreasonable expectation of success. [00:16:56] Speaker 00: Can I ask you something else? [00:16:57] Speaker 00: Sure. [00:16:58] Speaker 00: I want to ask you because could you have argued enablement in this case? [00:17:04] Speaker 00: Could you have argued that Traverse 075 is not a proper prior reference because it doesn't enable the use of [00:17:15] Speaker 00: RCR replication followed by smart sequencing? [00:17:20] Speaker 00: I mean, it seems to me kind of that's what your argument is. [00:17:23] Speaker 02: We did argue that, Your Honor, and we also urged it in this Court as an alternate ground of firmness, because the Board found as a factual matter that it would not be possible to sequence these RCR concatomer products using smart sequencing. [00:17:37] Speaker 02: the board used a lot of very descriptive adjectives incompatible and workable at appendix 22 unsuitable and unsequenceable appendix 30 so you're saying you argued you argued enablement in the alternative to our no motivation to combine it is at the very end of your honor actually the page here it begins on page 67 of our right brief [00:18:15] Speaker 02: Now, I don't think you have to get to enablement because the reasonable expectation success inquiry. [00:18:20] Speaker 02: Garden doesn't have a single case saying that two elements are carrying together in the trial. [00:18:25] Speaker 00: Respectfully, I don't see the word enablement here on these pages that you've given to me. [00:18:29] Speaker 02: So on page 67 of the red brief, Your Honor, we have a heading B that says the board's fact findings are also sufficient for this court to affirm the board's decision on enablement grounds. [00:18:39] Speaker 04: How could we reach that? [00:18:41] Speaker 04: I mean, that's something like the Chenery problem. [00:18:44] Speaker 02: No, Your Honor, because what Chenery precludes is this court deciding factual issues that are for the board to decide in the first instance. [00:18:51] Speaker 02: Here, the underlying finding of fact has already been made, which is that this would not be possible. [00:18:56] Speaker 04: I thought Chenery was a little broader than that and allows us not to affirm on a different ground what the agency relied on. [00:19:05] Speaker 02: Respectfully, Your Honor, I disagree. [00:19:07] Speaker 02: This court has cases such as Ayo Yama, which is 556 F. [00:19:10] Speaker 02: 3rd, 1293, saying that if the board has already found the relevant facts, then this court can affirm on a legal ground that was not relied on by the agency. [00:19:22] Speaker 04: What was that case about? [00:19:25] Speaker 02: I don't recall the specific posture, but the legal point from it, I've stated accurately. [00:19:35] Speaker 02: What I want to go back to, though, is you don't even have to get to enablement because we have the reasonable expectation of success problem here. [00:19:43] Speaker 00: General Electric... Should we look at reasonable expectation of success if one reference teaches performing one element followed by another element? [00:19:51] Speaker 02: Yes, you should require reasonable expectation of success, and that's what this court's cases say, including General Electric, which is Garden's favorite case. [00:19:59] Speaker 02: General Electric said that on those facts, it was enough that Wendis disclosed all the engine parameters. [00:20:07] Speaker 02: That was enough for motivation to combine. [00:20:10] Speaker 02: But the court said you would still have to show that the Skilled Artisan would have expected success in combining those things. [00:20:16] Speaker 02: And that makes sense because the prior art analysis to avoid hindsight needs to be done based on the prior art as a whole. [00:20:24] Speaker 02: You do not zoom in on snippets of prior art references. [00:20:27] Speaker 01: So based on what you just said, do you agree that motivation to combine is no longer on the table? [00:20:33] Speaker 01: Because you cited a case that says it would suffice for motivation to combine if the prior art reference discloses the two elements together. [00:20:41] Speaker 01: And it did here. [00:20:41] Speaker 01: Paragraph 122 says, [00:20:44] Speaker 02: amplification all by sequencing in a single paragraph I do not agree that motivation combined is no longer in the table and here's why. [00:20:52] Speaker 02: I read General Electric as a very fact specific case. [00:20:56] Speaker 02: There the patent challenger said all these engine parameters are disclosed in Wendis [00:21:01] Speaker 02: The patentee didn't put any evidence on the other side of the ledger on those facts. [00:21:06] Speaker 02: This court found that was sufficient for motivation to combine. [00:21:09] Speaker 02: And the court was clear it was deciding the case on a substantial evidence standard of review, which reinforces the point that it was factual. [00:21:16] Speaker 01: I'm sorry, but when you have a single embodiment that discloses the steps in order, at least these two, if not all four, these two, [00:21:26] Speaker 01: Why do you need more to provide a motivation for one to combine? [00:21:31] Speaker 01: Why isn't that sufficient on its face? [00:21:33] Speaker 01: I understand that's a different question to be clear in my mind from reasonable expectation of success, but I'm really struggling with how that does not suffice for the motivation to combine. [00:21:45] Speaker 02: So the short answer is, that's what impacts says. [00:21:48] Speaker 02: The longer answer is, [00:21:50] Speaker 02: impacts as an application of the principle that, as this court said in Hardicat, evidence suggesting reasons to combine can't be viewed in a vacuum apart from evidence suggesting reasons not to combine. [00:22:03] Speaker 02: The fact that two elements appear together in a single embodiment and a prior reference. [00:22:07] Speaker 01: Well, no, no, no, no, no. [00:22:08] Speaker 01: That's in cases where there are reasons to make a combination. [00:22:13] Speaker 01: This does make the combination. [00:22:14] Speaker 01: That's different. [00:22:15] Speaker 01: That's when nothing expressly tells you to make the combination. [00:22:19] Speaker 01: You're saying, oh. [00:22:20] Speaker 01: Well, it might be good to combine these things, because it would be more efficient. [00:22:22] Speaker 01: Oh, but it might be bad, because it would be really expensive to do it. [00:22:25] Speaker 01: That's when you're evaluating characteristics. [00:22:28] Speaker 01: But when no one has expressly told you, in a single embodiment, in a single reference, do one, then two. [00:22:35] Speaker 01: I would submit, Your Honor, that that is consistent. [00:22:37] Speaker 01: None of the cases you've cited are that, are they? [00:22:39] Speaker 01: One, two. [00:22:40] Speaker 02: Impacts is, absolutely, Your Honor. [00:22:42] Speaker 02: In impacts, this court said that [00:22:46] Speaker 02: The district court had correctly, quote, acknowledged that Zolman tryptan was mentioned in connection with nasal formulations, end quote, and then properly found the claims not obvious anyway. [00:22:58] Speaker 02: We are on all fours with impacts. [00:23:00] Speaker 02: Here, we do have an embodiment where irrelevant claim elements are joined. [00:23:05] Speaker 02: But we also have a lot of evidence on the other side, like the evidence that it would have been counterintuitive to make a nasal spray with Zolman tryptan. [00:23:11] Speaker 00: We have a lot of students in the room, right? [00:23:14] Speaker 00: So I was wondering if you could tell them, as a policy matter in patent law, why did this have to be a motivation to come by? [00:23:23] Speaker 02: Sure. [00:23:23] Speaker 02: Two reasons, Your Honor. [00:23:24] Speaker 02: The first is to prevent hindsight. [00:23:26] Speaker 02: And specifically, we want to look at the prior art as a whole, because we want to avoid invalidating patents based on what might seem kind of obvious. [00:23:34] Speaker 00: And what's the second reason? [00:23:36] Speaker 00: What is the second thing? [00:23:37] Speaker 02: The second is we want to give patents to people who actually do the difficult work of invention. [00:23:41] Speaker 02: Gardner loves to quote General Electric and say that it wasn't required to redo the work that Travers already did. [00:23:48] Speaker 02: Travers 122. [00:23:49] Speaker 00: I have a follow-up question, if that's OK. [00:23:51] Speaker 00: My follow-up question is on, to be honest with you, I wasn't sure about the second policy reason you gave, but I was thinking of the first one. [00:23:59] Speaker 00: So because the goal behind Motivation of the Mind is to avoid hindsight, when there's a single reference embodiment that teaches one element followed by another element, [00:24:10] Speaker 00: How can you argue that there's any hindsight problem? [00:24:14] Speaker 00: It's saying, hey, do this followed by that. [00:24:17] Speaker 00: And it's exactly what's recited in the claim. [00:24:20] Speaker 00: Now, you might have a different argument, like it doesn't give enough detail about how to do that. [00:24:25] Speaker 00: And that's a different issue. [00:24:27] Speaker 02: I understand your question, Your Honor. [00:24:29] Speaker 02: The answer is because Gardner wants to zoom in on 122 and ignore everything else in the prior art. [00:24:35] Speaker 02: If you were to only look at paragraph 122, [00:24:39] Speaker 02: and ask, would this have been obvious? [00:24:41] Speaker 02: Maybe the answer is yes. [00:24:42] Speaker 02: But the point is, that's not what we want. [00:24:44] Speaker 00: But the question is, is this what the reference teaches? [00:24:46] Speaker 00: I mean, we do a gram analysis. [00:24:48] Speaker 00: And the first thing you do is you look at the scope and content of the prior art. [00:24:52] Speaker 00: And here, in looking at the scope and content of the prior art, the point is that the 075 teaches all of the elements of the claim, including parts B and C, but is further supported by the teachings of the other reference, but not [00:25:08] Speaker 00: Not that it doesn't teach the amplification followed by sequencing. [00:25:12] Speaker 02: Traverse 075 teaches what it teaches. [00:25:14] Speaker 02: We're not disputing that. [00:25:16] Speaker 02: But the question of obviousness goes further. [00:25:18] Speaker 04: Can you clarify that? [00:25:20] Speaker 04: When you say that, do you mean Traverse 75 teaches all the necessary elements of the claim patent? [00:25:26] Speaker 02: Not of the claim as a whole, but I agree with my friend that paragraph 122 discloses amplification followed by sequencing. [00:25:33] Speaker 04: What does 75 not teach? [00:25:35] Speaker 02: There is an element regarding sequence reads and the patent that we disputed that the Travers publications teach. [00:25:43] Speaker 02: The board didn't expressly reach that. [00:25:45] Speaker 02: There are also several elements in other claims beyond claim one that we argued were missing, and the board didn't reach those arguments either. [00:25:52] Speaker 02: One point I want to make in the minute that I have left. [00:25:55] Speaker 02: This colloquy that we've been having for the last 14 minutes about whether you need motivation to combine reasonable expectation of success, when you got both elements in one prior environment, it's nowhere in the papers below. [00:26:08] Speaker 02: You know why it's nowhere in the papers below? [00:26:10] Speaker 02: Because they didn't make this argument below. [00:26:12] Speaker 02: They advanced a multi-reference combination. [00:26:14] Speaker 02: They did not advance a single reference obviousness theory. [00:26:18] Speaker 01: But that's because in the institution decision, the board expressly said [00:26:23] Speaker 01: Paragraph 122 discloses amplification followed by sequencing that you don't need a motivation to combine there. [00:26:29] Speaker 01: So why would they have made that argument post-institution decision? [00:26:33] Speaker 02: Because we came back in our patent owner response at appendix 432 to 435 and said, Garten is incorrect about this. [00:26:40] Speaker 02: They still have to show motivation to combine and reasonable expectation of success. [00:26:44] Speaker 02: Garten did not dispute that. [00:26:46] Speaker 02: the world [00:27:04] Speaker 02: But they were attempting to meet the burden. [00:27:07] Speaker 02: He did not say. [00:27:08] Speaker 01: I know we're out of time, but I'm going to give me an extra minute here. [00:27:11] Speaker 01: But walk me through 431 where you said 431 and 435. [00:27:15] Speaker 01: Walk me through where you make the argument that despite the fact that Fairfax 122 of Travers 075 discloses both amplification and sequencing, nonetheless, that does not suffice. [00:27:30] Speaker 01: Just walk me through it. [00:27:33] Speaker 02: So at the bottom of a PINX 432 runner, the last paragraph on that page, we say, petitioner may argue that its RCR embodiment need not be combined with PacBio smart sequencing workflow because Travers 075 discloses a hypothetical RCR embodiment. [00:27:53] Speaker 02: This argument fails both scientifically and legally. [00:27:56] Speaker 02: And then we make the point that their theory relied on a combination, not a single reference. [00:28:03] Speaker 02: And then we note that a skilled artisan would have known that PacBio actually didn't use amplification. [00:28:11] Speaker 01: Where? [00:28:11] Speaker 02: This is at the bottom of appendix 433. [00:28:17] Speaker 02: A skilled artisan would have known that introducing an unnecessary amplification step into the amplification-free smart sequencing workflow would introduce more errors. [00:28:27] Speaker 02: And then this is perhaps the best site on appendix 435. [00:28:33] Speaker 02: We distinguished their reliance on the Merck case, and we said that [00:28:40] Speaker 02: In Merck, it wasn't just that the unpreferred embodiments could be tried. [00:28:46] Speaker 02: The prior art also showed that they would work. [00:28:48] Speaker 02: And that's what's lacking here. [00:28:50] Speaker 02: They did not meet their burden to show a reasonable expectation of success. [00:28:55] Speaker 02: And we also made the point back on Appendix 434 that Merck was a single reference obviousness case, not a combination case. [00:29:03] Speaker 02: And so if Garden thought, [00:29:04] Speaker 02: That it needed to press for the legal rule that it's arguing for on appeal. [00:29:08] Speaker 02: It was incumbent on it to do that below. [00:29:10] Speaker 02: And so I submit the argument was forfeited. [00:29:13] Speaker 01: Thank you, Mr. Millican. [00:29:14] Speaker 01: Mr. Rosencrantz, you've got five minutes for a bottle, please. [00:29:38] Speaker 03: Your Honor, there's two points. [00:29:40] Speaker 03: First, I'll just go back to Judge Hughes's very first question. [00:29:44] Speaker 03: You are right. [00:29:45] Speaker 03: Our petition does not say the magic words. [00:29:48] Speaker 03: We hereby declare that we have one prior art reference, an embodiment with all five elements. [00:29:54] Speaker 04: Well, let me be clear. [00:29:55] Speaker 04: I'm not requiring magic words. [00:29:59] Speaker 04: It doesn't have to specifically have a heading that says it. [00:30:02] Speaker 04: But I struggled to find anywhere where it was clear to me from your petition [00:30:07] Speaker 04: that you were arguing 75 alone disclosed all of the steps. [00:30:12] Speaker 04: Almost throughout this petition, it talks about the Travers papers in combination. [00:30:17] Speaker 04: Look, you have the better argument on what that reference discloses, but I'm not sure you made it properly before the board and I'm not sure what to do about that. [00:30:27] Speaker 03: So I understand the point, Your Honor, and my point was [00:30:30] Speaker 03: Not just that we don't have to say those specific words, but we did the equivalent when we mapped every single element of the claims onto Travers 075, paragraph 122. [00:30:43] Speaker 03: And in particular, on page 183 and 184, it shows that we said these two elements represent both amplification and sequencing. [00:30:56] Speaker 03: For each one of those, we cite first and foremost paragraph 122, and then we cede also to Travers 2010. [00:31:07] Speaker 03: We told the board these two references should be read together, and we told the board that they, quote, describe, quote, an embodiment. [00:31:17] Speaker 03: One, the two of them together. [00:31:19] Speaker 03: Why did we cite two? [00:31:20] Speaker 03: One is a patent. [00:31:21] Speaker 03: And the other is a long research article that explains more about the patent. [00:31:26] Speaker 01: You know what? [00:31:26] Speaker 01: I'm going to lecture your client for five seconds. [00:31:28] Speaker 01: You bring in really good appellate lawyers to try to save a poorly done petition. [00:31:34] Speaker 01: But go ahead, continue. [00:31:36] Speaker 01: That's a message not to you. [00:31:38] Speaker 03: Thank you, Your Honor. [00:31:40] Speaker 03: That's a compliment to you. [00:31:41] Speaker 03: I appreciate it. [00:31:43] Speaker 03: But I will also underscore [00:31:46] Speaker 04: I mean, I understand what you're saying, but what you just showed me actually does what I'm concerned about. [00:31:52] Speaker 04: It doesn't specify only 75. [00:31:55] Speaker 04: It does them together. [00:31:57] Speaker 04: And I understand your point is, well, 75 does everything, and we're just adding this other one to explain more details or whatever. [00:32:09] Speaker 04: how am I as the board and well I won't get into it I know you think the board understand you and then change course but you know the board read this as at least in its final written decision as requiring both of these so your honor the point is just about to make is the one that you made for me the board said how it read our petition [00:32:32] Speaker 03: The board never changed its mind as to what our petition does. [00:32:36] Speaker 03: The board changed its mind as to the legal consequence because the board concluded that when you put those two things together, it doesn't really work. [00:32:45] Speaker 01: Yeah, but do you need me to conclude, for you to prevail, do you need me to conclude that because 075 discloses a hypothetical where amplification could occur and then [00:33:00] Speaker 01: you could do sequencing or you could do implication before sequencing, because it says that, is that like game over? [00:33:07] Speaker 01: This is not anticipation, it's obviousness. [00:33:10] Speaker 01: What if they then put in a mountain of evidence that said a skilled artisan would never do that? [00:33:15] Speaker 01: A skilled artisan wouldn't do it, and here's all the reasons why. [00:33:18] Speaker 01: Are you saying the board is precluded in that set of circumstances from saying there's no motivation to do this? [00:33:26] Speaker 03: I am, and that's what General Electric helped, but I want to underscore that's what enablement is for, as Judge Stoll pointed out. [00:33:32] Speaker 01: But the same thing is reasonable expectation success is part of this as well, and that's kind of like a proxy for enablement. [00:33:39] Speaker 03: Right, and unification technology says that the same rule applies [00:33:44] Speaker 03: to expectation of success as to motivation of combined, because when it is cited by the examiner, it is presumed enabled. [00:33:54] Speaker 01: But that doesn't make sense. [00:33:56] Speaker 01: Hear me out. [00:33:57] Speaker 01: There are a lot of references out there that are wishless, functional descriptions of things without the meat to actually execute them. [00:34:07] Speaker 01: I mean, think of how many patents are out there that make grandiose claims of what they cover without explaining to anyone how to do those things. [00:34:16] Speaker 01: So a grandiose claim of like, do step one, then step two, if nobody knew how to do step one, then step two, isn't really disclosing the step one, step two problem, the thing. [00:34:26] Speaker 01: So why isn't it fair for the board to say, I know this suggests step one and two, and maybe that would suffice for motivation combined. [00:34:34] Speaker 01: But it doesn't suffice for reasonable expectation of success, because this disclosure is so nascent. [00:34:40] Speaker 01: It is so superficial as to not allow a skilled artisan to understand how they could make that combination. [00:34:47] Speaker 01: What's wrong with the board making that fact-finding? [00:34:50] Speaker 01: I don't see that that's precluded by law. [00:34:52] Speaker 00: What is wrong with it as a matter of law? [00:34:53] Speaker 01: Yeah. [00:34:54] Speaker 01: I don't see that that's precluded by law. [00:34:56] Speaker 03: My time is up. [00:34:57] Speaker 01: Stop. [00:34:57] Speaker 01: Just go. [00:34:58] Speaker 03: I also have one last thing to say afterwards. [00:35:00] Speaker 03: Maybe. [00:35:02] Speaker 01: Go ahead. [00:35:03] Speaker 03: So as a matter of policy, what this court's precedent explains is that when a person of skill in the art has already described things together, that person of skill in the art has provided both the motivation and a reasonable expectation. [00:35:23] Speaker 03: They believe it's successful. [00:35:24] Speaker 01: What case says that? [00:35:26] Speaker 01: I don't see a case that says that. [00:35:27] Speaker 03: Unification Technologies says that, Your Honor. [00:35:30] Speaker 03: And I want to underscore, impacts is different. [00:35:34] Speaker 03: This is not a wish list. [00:35:36] Speaker 03: This is an embodiment that had everything together. [00:35:41] Speaker 03: And if there's a problem with that, [00:35:43] Speaker 03: The patentee can go to enablement law. [00:35:47] Speaker 01: But they can also go to reasonable expectation of success. [00:35:50] Speaker 03: Only if reasonable expectation of success is required when you have both elements. [00:35:57] Speaker 03: I'll also say there's no stopping point then. [00:36:00] Speaker 03: If a patentee can come in and say, oh, no one would have expected this to work. [00:36:06] Speaker 03: It will happen in every single IPR and every single obviousness case. [00:36:11] Speaker 03: We will have no benefit from the rule. [00:36:13] Speaker 01: Well, there's not going to be any more IPRs in it, so it doesn't matter. [00:36:16] Speaker 01: OK. [00:36:16] Speaker 03: It'll happen in every obviousness case. [00:36:18] Speaker 03: We will no longer have the rule of real-time data or general electric. [00:36:23] Speaker 03: If I can make just one last point, it'll take me 30 seconds. [00:36:27] Speaker 03: The board repeated that it understood our argument during oral argument, the very page that Mr. Millican refers to at 708-09. [00:36:38] Speaker 03: It attributed to us the argument, quote, you don't need a reason to combine because it's all in there. [00:36:45] Speaker 03: The board understood what we were saying. [00:36:47] Speaker 03: We did not have to repeat the legal point that the board already articulated as the ground rules. [00:36:54] Speaker 03: for this case in order to preserve the legal issue. [00:36:57] Speaker 03: And there's no reason you would ever go forward to try to prove motivation to combine or reasonable expectation of success once the board had already said you don't need to prove them. [00:37:09] Speaker 01: Well, you would if then the response by the patent owner says, I know you said this in the institution decision, which is a lot like a PI. [00:37:17] Speaker 01: It's only an initial statement. [00:37:18] Speaker 01: But here are all the problems we have. [00:37:20] Speaker 01: Sure. [00:37:20] Speaker 01: The board would need to, and you would need to, if the patent owner does. [00:37:24] Speaker 03: Correct. [00:37:24] Speaker 03: If you can find that in the patent owner's response, a statement that the law is not what Garten says it is, and that the board got the law wrong, yes, we would have to engage. [00:37:38] Speaker 03: These petitions are really limited, and there are dozens of claims. [00:37:42] Speaker 03: And later down the line for dependent claims, dozens of- The good news is, you can bring them over and over again. [00:37:49] Speaker 01: All right. [00:37:50] Speaker 01: Thank you. [00:37:50] Speaker 01: Thank you. [00:37:53] Speaker 01: Thanks with counsel. [00:37:54] Speaker 01: This case is taken under submission.