[00:00:00] Speaker 00:
The next case for argument is 24-1794, Medvis.

[00:00:04] Speaker 00:
Mr. Steinmetz.

[00:00:09] Speaker 00:
Don't take your cue from the preceding argument.

[00:00:13] Speaker 05:
I didn't intend to, Your Honor.

[00:00:14] Speaker 05:
In fact, I was hoping to throw a much shorter argument.

[00:00:17] Speaker 05:
May it please the court.

[00:00:18] Speaker 05:
Adam Steinmetz on behalf of the appellant, Medvis.

[00:00:23] Speaker 05:
I'd like to focus my argument today on the motivation to combine issue and then, time permitting, address the virtual 3D shape claim construction issue.

[00:00:32] Speaker 05:
The IPR petition presented a two-reference combination, Amira and Do.

[00:00:38] Speaker 05:
Amira is an image visualization technology for rendering three-dimensional images on flat screens.

[00:00:46] Speaker 05:
Do teaches overlaying medical images onto a patient.

[00:00:51] Speaker 05:
importantly do recognized problems with conventional image visualization technology systems like Amira and then proposed itself as a solution to those problems.

[00:01:04] Speaker 05:
The problem with systems like Amira, as Du recognizes, is distraction and cognitive load.

[00:01:08] Speaker 05:
So you're looking down at the patient, you have to look up at a screen in the operating room.

[00:01:12] Speaker 05:
Then you're looking down at the patient, and you have to look back up.

[00:01:14] Speaker 05:
So there's a lot of things going on in the operating room and proposed itself as a solution overlaying the imagery onto the patient.

[00:01:22] Speaker 05:
Du proposed it.

[00:01:23] Speaker 05:
Du proposed itself, exactly.

[00:01:25] Speaker 05:
Now that was the motivation to combine that Medivis proposed.

[00:01:29] Speaker 05:
It identified the setting and operating room.

[00:01:31] Speaker 05:
It identified a problem.

[00:01:33] Speaker 05:
Conventional systems like Amira cause cognitive load and distraction issues.

[00:01:37] Speaker 05:
And it identified a solution overlaying onto the patient.

[00:01:41] Speaker 05:
Under the flexible KSR standard, that demonstrates the desirability of making the combination of the two references.

[00:01:47] Speaker 05:
That was sufficient to get past the motivation to combine stage and move to the obviousness stage where we analyze what's disclosed in the references and whether it teaches the claim limitations.

[00:01:59] Speaker 03:
Just so that I'm clear about a procedural aspect that I think hasn't really come up.

[00:02:09] Speaker 03:
The original petition was rather thin on the motivation.

[00:02:17] Speaker 03:
You presented in the reply this distraction issue, and neither the other side nor the board argued or found that

[00:02:34] Speaker 03:
It was inappropriate to rely on the reply presentation of the motivation.

[00:02:42] Speaker 03:
So we can treat that just as if it were part of the petition, because you would have a tougher case if you were relying only on what was said in the petition.

[00:02:54] Speaker 05:
I think that's right, Your Honor.

[00:02:55] Speaker 05:
I think the petition did propose a broader scope.

[00:02:59] Speaker 05:
And you're correct that neither the other side nor the board took issue with that.

[00:03:03] Speaker 05:
They addressed it in a reply.

[00:03:04] Speaker 05:
And the board does have discretion.

[00:03:05] Speaker 05:
That's the Court Photonics case, which says that the board does have discretion to address issues that were raised in a reply.

[00:03:11] Speaker 05:
It was also addressed in oral argument, twice in oral argument.

[00:03:15] Speaker 03:
And do I remember right?

[00:03:16] Speaker 03:
This is a case in which the board didn't even say it was too late.

[00:03:21] Speaker 03:
But even if it wasn't too late, it's also meritorious.

[00:03:23] Speaker 05:
Correct.

[00:03:24] Speaker 05:
The board just addressed the motivation to combine as if it had been presented all at once.

[00:03:28] Speaker 05:
That is correct.

[00:03:31] Speaker 05:
Now the problem here is that

[00:03:34] Speaker 05:
When Medivis proposed this motivation to combine, which was based on Do proposing itself as a solution, that showed the desirability of making the combination of the references, the teachings of the references.

[00:03:45] Speaker 05:
The board held Medivis to a higher standard, which is to say the board said, well, you can't have this broad motivation to combine that addresses the technology of systems like Amira.

[00:03:58] Speaker 05:
You'd have to have a specific reason why a person of ordinary skill in the art would have looked to Amira to also solve cognitive load problems.

[00:04:07] Speaker 05:
There was an inversion of the way the board treated the motivation combined compared to the way Medivis did.

[00:04:13] Speaker 05:
The board said,

[00:04:14] Speaker 05:
Medivh has failed to show why a person of ordinary skill in the art would have looked to Amira to solve cognitive load problems if they already had due.

[00:04:21] Speaker 05:
Now that's the rigidity, starting with due and having to fit Amira into it.

[00:04:25] Speaker 01:
That's the type... Didn't the board just misunderstand your reply argument?

[00:04:30] Speaker 05:
Yes, I think that's correct.

[00:04:31] Speaker 01:
It looked to me like your original argument in your petition was that there was a pose that would be expected here to have a motivation to combine because

[00:04:44] Speaker 01:
do somehow would improve AMIRA.

[00:04:47] Speaker 01:
Pardon me, that AMIRA would improve do.

[00:04:50] Speaker 01:
And that was general.

[00:04:52] Speaker 01:
It looked to me like the board wasn't even really addressing that.

[00:04:56] Speaker 01:
When they get to this, they take your second argument and mis-think that you're still making the same argument, that somehow it was going to be a condition where AMIRA was going to improve do.

[00:05:12] Speaker 01:
And they just missed.

[00:05:14] Speaker 05:
I think that's right.

[00:05:15] Speaker 05:
I think they fundamentally misunderstood and tried to structure it into an order whereby Amira had to somehow improve on Dew's technology.

[00:05:23] Speaker 01:
The argument to us now isn't that the board didn't accept your primary argument, it's that they didn't accept your secondary argument.

[00:05:32] Speaker 01:
It's that they fundamentally misunderstood the argument as... The second argument, which was that Amira has got a cognitive overload problem and Dew would solve

[00:05:43] Speaker 05:
That's correct.

[00:05:44] Speaker 05:
But as addressed earlier, the board had exercised its discretion to consider the entirety of the argument on motivation to combine as though it had been presented in the petition.

[00:05:53] Speaker 05:
It wasn't phrased that way.

[00:05:55] Speaker 05:
But the board did not suggest that there was an improper raising of that argument in the reply board.

[00:06:01] Speaker 01:
There were already objections.

[00:06:03] Speaker 05:
Nobody objected to it, correct?

[00:06:04] Speaker 03:
Can I just ask, so is this the same issue or a cousin of it?

[00:06:12] Speaker 03:
So if you think back to the old, maybe no longer so good Winslow tableau view of the world where all the analogous prior art is sitting on a wall and you have to figure out why you would look at this piece and this other piece.

[00:06:31] Speaker 03:
Did the board effectively say, even in reply, you didn't really do that?

[00:06:37] Speaker 03:
That is, you're looking at one piece, do, and it identifies a problem.

[00:06:42] Speaker 03:
And the artisan would say, yeah, this is a problem.

[00:06:47] Speaker 03:
Maybe we can do better.

[00:06:49] Speaker 03:
But you still need something slightly more specific to say, why would you look over there to get Emyra?

[00:06:58] Speaker 03:
Or is this not what the board did?

[00:07:00] Speaker 05:
Yeah.

[00:07:01] Speaker 05:
I'll accept the analogy that that's what the board did.

[00:07:04] Speaker 05:
And I think under the KSR standard and then also the cases that we cited, the Intel versus Qualcomm case, which was non-presidential, but cited the In re Fulton case about desirability, I think that the standard has changed from a need to identify, to start with a specific reference and then identify a specific reason why you would look to that specific reference to combine it.

[00:07:24] Speaker 05:
It's much more flexible that you can have a situation as here where

[00:07:30] Speaker 05:
For example, Dude does not teach or does not purport to teach new image visualization technologies.

[00:07:36] Speaker 05:
It runs through, it explains a number of different three-dimensional modalities that could be used with its system, but it does not purport to have invented those technologies because it recognizes that there are existing three-dimensional image visualization technologies out there, and they're causing these problems of cognitive load and distraction in the operating room.

[00:07:55] Speaker 03:
And I don't remember, did you have anything

[00:07:59] Speaker 03:
to the effect that Amira was a particularly prominent kind of prior art reference about visualization improvements?

[00:08:12] Speaker 05:
There wasn't anything specifically that it was particularly prominent.

[00:08:15] Speaker 05:
And this actually gets to the question of whether the discussion of the scope and content of the prior art in the background section was

[00:08:24] Speaker 05:
may be disregarded too much.

[00:08:27] Speaker 05:
There was discussion of Amira.

[00:08:28] Speaker 05:
There was discussion of other technologies, 3D slicer and 3D visualization.

[00:08:32] Speaker 05:
There was a number of prior references discussed.

[00:08:34] Speaker 05:
Amira was discussed

[00:08:36] Speaker 05:
pretty extensively in terms of its disclosures of color variation and bounding boxes, et cetera, which gets to the elements of the claim that was relied on later on in the obviousness analysis.

[00:08:52] Speaker 05:
But again, the board didn't reach that portion of the obviousness analysis because it foreclosed the whole analysis just at the motivation to combine stage, which

[00:09:01] Speaker 05:
To Judge Cleverger's point, I think the board just fundamentally misunderstood what the proposed motivation to combine was.

[00:09:09] Speaker 05:
And it held medivis to a standard that, under KSR, under Intel versus Qualcomm, under Fulton, the desirability of making this combination, especially because do recognize the problem,

[00:09:19] Speaker 05:
was there and it was met by Metavis.

[00:09:21] Speaker 05:
Incidentally, it does not have to be the same, the law is clear, it does not have to be the same motivation that motivated the inventor of the 271 patent.

[00:09:30] Speaker 05:
But in this case, it actually is pretty similar to the motivation, this is at the bottom of columns two and three of the patent on appendix 49 and 50, where the patent actually talks about the problems associated with having to look to screens in the operating room.

[00:09:46] Speaker 05:
You look up and then you look back down and you might

[00:09:48] Speaker 05:
have marked the wrong, you might operate on the wrong side because you're trying to translate that in your head when you look up at the screen and then look back down at the patient.

[00:09:56] Speaker 05:
So incidentally the motivations for the patentee in this case on the 271 patent and the motivation that Medivis proposed based on the due reference were actually very similar.

[00:10:07] Speaker 05:
They need not be, but in this case they were.

[00:10:10] Speaker 05:
Now I want to turn to what Novirad's response is here, what my friends on the other side have responded in their red brief.

[00:10:17] Speaker 05:
argue for an even more stringent standard, which is to say that the motivation to combine, and this repeatedly comes up in the red brief at page 15 and 41, for example, they say that the motivation has to be to combine the references in exactly the same way as required by the claim.

[00:10:31] Speaker 05:
They say that twice.

[00:10:32] Speaker 05:
They also say on pages 16 and 40 of the red brief, in the way the claim's invention does.

[00:10:37] Speaker 05:
There's no question that the obviousness analysis has to be

[00:10:42] Speaker 05:
has to disclose everything in the way that the claim does.

[00:10:45] Speaker 05:
But the KSR standard does not require precise teachings directed to specific claim limitations.

[00:10:52] Speaker 05:
That is not the standard under KSR.

[00:10:55] Speaker 05:
Under KSR, a motivation to combine two references, the teachings of two references, because of the desirability of making that combination is sufficient to show a motivation to combine.

[00:11:06] Speaker 05:
And then, at pages appendix 173 through 185, Medivis provided in the petition

[00:11:12] Speaker 05:
the disclosures from each of the references that disclose each of the claim elements.

[00:11:17] Speaker 01:
What about the likelihood of success?

[00:11:21] Speaker 05:
The reasonable expectation of success?

[00:11:23] Speaker 01:
The reasonable expectation of success?

[00:11:24] Speaker 01:
Yes, Your Honor.

[00:11:25] Speaker 01:
I mean, what's in the record here, from your point of view, is really skinny.

[00:11:30] Speaker 01:
It may be skinny.

[00:11:31] Speaker 01:
The Board didn't... I know they didn't do it, but... That's correct.

[00:11:35] Speaker 01:
At most you're asking for a remand.

[00:11:37] Speaker 05:
Absolutely, we are asking for a remand.

[00:11:39] Speaker 05:
Not a reversal for sure.

[00:11:40] Speaker 05:
We are asking for a remand for the board to address the motivation to combine that was presented.

[00:11:45] Speaker 01:
Look at the actual record.

[00:11:48] Speaker 01:
As I read the arguments you made in your...

[00:11:54] Speaker 01:
initial filings were very, very thin, very highly conclusory.

[00:11:58] Speaker 01:
Your district court said, well, I just think there is no problem.

[00:12:01] Speaker 01:
The other side put in some specific evidence from their expert, which is on Rebutted, said that there were technical problems.

[00:12:09] Speaker 05:
They did say there were technical problems.

[00:12:11] Speaker 05:
And we addressed this in the gray brief, where I think a lot of the arguments that they talk about with technical problems go to the bodily incorporation, whether or not you could actually take Amira's technology and implement it directly into due.

[00:12:23] Speaker 05:
But again, this would be a question for the board to consider.

[00:12:26] Speaker 05:
I think that the due reference itself, by walking through the various three-dimensional reality.

[00:12:30] Speaker 01:
Doesn't a reasonable expectation of success go to that?

[00:12:33] Speaker 05:
It does, Your Honor, yes.

[00:12:35] Speaker 01:
Doesn't it really ask whether you're putting a square hole in a round peg?

[00:12:39] Speaker 05:
I think it does go a little bit to whether the technologies can be merged with each other, but I don't think it requires a showing that the

[00:12:47] Speaker 05:
I think the distinction that was made in the red brief was the virtual reality system of Amira would not be implementable in an augmented reality context of due.

[00:12:57] Speaker 05:
And I think that that goes, the comparison and contrasting of virtual reality and augmented reality really is about bodily incorporation as opposed to whether the teachings of Amira would have a reasonable success of being implemented in due.

[00:13:10] Speaker 05:
For example, a bounding box or color variation.

[00:13:12] Speaker 05:
And I do think that by walking through the various three-dimensional modalities, due does create a reasonable expectation of success.

[00:13:19] Speaker 05:
There is no requirement that we have expert testimony specifically addressing a motivation to combine.

[00:13:24] Speaker 05:
That is not a requirement under the law.

[00:13:27] Speaker 05:
So I am into my rebuttal time.

[00:13:31] Speaker 05:
I'll save my rebuttal time for sure.

[00:13:33] Speaker 05:
Thank you, Your Honor.

[00:13:40] Speaker 04:
Good morning.

[00:13:41] Speaker 04:
May it please the court.

[00:13:42] Speaker 04:
My name is Jed Hanson.

[00:13:43] Speaker 04:
I am counsel here today for Novorad.

[00:13:47] Speaker 04:
Medivis had both the burden of production and persuasion at trial to convince the court, the Patent Trial and Appeal Board, excuse me, that the challenged claims were unpatentable.

[00:14:03] Speaker 04:
The board weighed the evidence, heard the testimony, and found that they'd failed to carry that burden.

[00:14:09] Speaker 04:
I think what Medivis wants to do on appeal is convert what is substantially a factual issue into a legal one.

[00:14:14] Speaker 04:
And that factual issue was reviewed for substantial evidence by this court.

[00:14:20] Speaker 04:
Motivation to combine whether there's enough evidence to support that.

[00:14:24] Speaker 04:
That's a substantial evidence review.

[00:14:27] Speaker 04:
And to Judge Clevenger's comments,

[00:14:29] Speaker 04:
the utter lack of evidence of a reasonable expectation of success.

[00:14:33] Speaker 04:
That is also a substantial evidence standard.

[00:14:37] Speaker 04:
The court doesn't remand cases because one party disputes the factual findings of the lower court.

[00:14:42] Speaker 00:
What do you make of the board's Appendix 24 towards the end of the paragraph where they talk about the motivation wouldn't be reducing cognitive load?

[00:14:57] Speaker 04:
The cognitive load issue?

[00:14:58] Speaker 04:
Sure.

[00:14:59] Speaker 00:
I agree with that.

[00:15:01] Speaker 00:
I agree with what they said that they would not.

[00:15:04] Speaker 00:
So they ultimately concluded, petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference like Amira for an additional solution.

[00:15:15] Speaker 00:
even what that solution would be.

[00:15:17] Speaker 00:
Do you understand what the board was saying?

[00:15:20] Speaker 04:
I do understand, Your Honor.

[00:15:21] Speaker 04:
First of all, the argument with respect to due and the cognitive load issue was pure attorney argument on reply.

[00:15:28] Speaker 04:
There's no evidence from any expert testimony explaining what that meant or what that scope would mean.

[00:15:34] Speaker 04:
And so you're talking with just pure attorney argument

[00:15:38] Speaker 04:
parsing things from due and saying, hey, here's something.

[00:15:42] Speaker 04:
And the reason why they did that is because on opposition, they understood how thin the original petition was.

[00:15:49] Speaker 04:
And they had understood that they really had utterly failed to provide any evidence on a motivation to combine.

[00:15:54] Speaker 04:
So what do they do?

[00:15:55] Speaker 04:
They scrape through what they have on the record, and they come up with this cognitive load argument.

[00:15:59] Speaker 01:
Your argument is that the board should have rejected the reply argument on the ground, that it was an attorney argument not based on the record?

[00:16:07] Speaker 00:
That ship has sailed, has it not?

[00:16:11] Speaker 00:
I mean, we're not reviewing.

[00:16:13] Speaker 00:
You have an appeal that the process issue of the board not entertaining the reply.

[00:16:18] Speaker 04:
Yeah, no, I'm not arguing that, Your Honor.

[00:16:20] Speaker 04:
I'm just stating out the fact that there is no underlying factual testimony in support of that argument.

[00:16:28] Speaker 04:
The board did entertain it.

[00:16:30] Speaker 04:
It was attorney argument, but there is no factual support from an actual witness that supports or corroborates that attorney argument.

[00:16:39] Speaker 04:
The board didn't err.

[00:16:41] Speaker 04:
We didn't object.

[00:16:42] Speaker 00:
Do they have an expert witness?

[00:16:43] Speaker 04:
They do have an expert witness.

[00:16:44] Speaker 00:
And didn't he say a person skilled in the art would be motivated to do this because of the improvements?

[00:16:51] Speaker 04:
He did very, very.

[00:16:52] Speaker 00:
Four times, he didn't say it verbosely, but he said it, right?

[00:16:55] Speaker 04:
Very generally, he stated, and it's very thin.

[00:16:58] Speaker 04:
It's in APPX 1587.

[00:17:00] Speaker 04:
that he would combine a mirror with dew to enable the intraoperative medical image viewing system and method disclosed in dew to take advantage of visualization technology disclosed in a mirror.

[00:17:11] Speaker 04:
That's it.

[00:17:12] Speaker 04:
That's the extent.

[00:17:13] Speaker 01:
That was in the petition.

[00:17:15] Speaker 04:
That is in the petition.

[00:17:15] Speaker 01:
That's the petition.

[00:17:16] Speaker 01:
And that theory has now been discarded and thrown away, and your every theory doesn't rely on it at all.

[00:17:22] Speaker 04:
We're talking just about the cognitive load issue.

[00:17:26] Speaker 01:
So why don't we talk about that?

[00:17:27] Speaker 01:
Your adversary is relying on the reply argument.

[00:17:34] Speaker 01:
And he said there's a problem here that will reverse who's benefiting whom.

[00:17:43] Speaker 01:
And there's a cognitive overload problem in AMIRA because you've got to look at the screens.

[00:17:49] Speaker 01:
And do, teaches, will you overlay?

[00:17:52] Speaker 01:
And so that is a motivation of why one of them, if one of them is still in the art, walked into their inventing room and they had on the table do and they had amyra, they would look at amyra and they'd say, well, look, doing amyra is certainly doing the same thing, except guess what?

[00:18:08] Speaker 01:
Amyra doesn't have an overlay and their people have this cognitive overload.

[00:18:12] Speaker 01:
So that's a reason to put them together.

[00:18:16] Speaker 04:
I understand what your argument is saying.

[00:18:18] Speaker 01:
So that, to me, is the argument that your adversary is making.

[00:18:21] Speaker 01:
And he's saying, well, and the board messed up because they didn't appreciate it.

[00:18:25] Speaker 01:
They didn't understand that.

[00:18:26] Speaker 01:
They thought that we were trying to further reduce cognitive overload and do, which is crazy because you didn't need to do that.

[00:18:36] Speaker 01:
And now you're telling me that the trouble with their reply theory is that it wasn't record-based.

[00:18:42] Speaker 04:
That's one problem.

[00:18:44] Speaker 01:
You didn't make that argument in your brief.

[00:18:48] Speaker 04:
I believe we did point out that... Like where?

[00:18:51] Speaker 04:
We pointed out that it was brought up on reply.

[00:18:55] Speaker 01:
But you didn't object.

[00:18:56] Speaker 01:
We did not object.

[00:18:57] Speaker 01:
My point is, I think you're making an argument here now that you didn't make in your red brief, and I don't think that's what you're supposed to do.

[00:19:04] Speaker 04:
Let me move on then to answer your honors question about amira.

[00:19:08] Speaker 04:
Amira doesn't make any mention at all of being used in any kind of surgical environment.

[00:19:14] Speaker 04:
There is no suggestion or any evidence that amira was intended to be used by a surgeon in that surgical environment and that therefore there would be some kind of cognitive load problem to solve.

[00:19:26] Speaker 04:
A MIRA is simply something that's used either in a virtual reality environment so that you can look at data or on your computer screen so you can look at anatomy of a patient.

[00:19:37] Speaker 04:
There is no evidence whatsoever in a mirror that suggests it would have been used in a surgical environment and then have some kind of cognitive load problem that it do would solve.

[00:19:47] Speaker 03:
Can I ask you, I guess, a very particular question about do.

[00:19:53] Speaker 03:
In, I guess, the title and throughout the document, it talks about an intraoperative medical image viewing system.

[00:20:02] Speaker 03:
Does that mean during an operation, or is it like, what does that mean?

[00:20:07] Speaker 04:
I think that means during an operation.

[00:20:08] Speaker 04:
I think do is intended to look at images during surgery.

[00:20:17] Speaker 04:
A mirror is not.

[00:20:18] Speaker 04:
A mirror has nothing to do with that at all.

[00:20:21] Speaker 04:
A mirror is simply something that you would pull up on your computer and take a look at medical data, or there is a virtual reality.

[00:20:30] Speaker 01:
Now what you're arguing is that it was harmless error for the board to misunderstand the theory.

[00:20:36] Speaker 04:
Well, I don't think the board misunderstood.

[00:20:38] Speaker 01:
I don't know whether this is an argument that we should be greeting or whether it should be greeted on remand by the board when we simply tell the board, excuse me, you didn't really understand the reply argument about what the theory was for the motivation to come by.

[00:20:55] Speaker 01:
You're asking me to have to learn a lot about what AMIRA does or doesn't, how it's being used, whether people who are operating in an operating theater would have any knowledge of the 3D technology that's in AMIRA.

[00:21:12] Speaker 01:
You're making an argument that AMIRA is over here just a data patent, and that DO is an operating theater patent, right?

[00:21:21] Speaker 04:
Well, Amira is not a patent.

[00:21:23] Speaker 01:
There's no reason why anybody would want to try to combine to somehow make an improvement in Amira.

[00:21:30] Speaker 01:
But that goes to kind of a further level of the motivation to combine that there's no evidence in the record one way or the other on that.

[00:21:39] Speaker 04:
And I think the evidence about Amira.

[00:21:41] Speaker 04:
So Amira isn't a patent.

[00:21:43] Speaker 04:
Amira was a software package.

[00:21:46] Speaker 04:
So what we have.

[00:21:46] Speaker 01:
I just wondered whether this wasn't an instance in which a board was sort of

[00:21:51] Speaker 01:
I don't want to sound pejorative, but the world is just sort of doing a slapdash job here.

[00:21:55] Speaker 01:
They look at the 103 and they say, easy way to get rid of this is that there's essentially a frivolous argument on the motivation to combine.

[00:22:03] Speaker 01:
Why would you possibly take a Myra to further reduce cognitive load and do?

[00:22:10] Speaker 01:
It's just nuts.

[00:22:12] Speaker 01:
So goodbye.

[00:22:14] Speaker 04:
That is what the board said.

[00:22:15] Speaker 01:
I don't want to be pejorative, but it's kind of like it is a frivolous.

[00:22:19] Speaker 01:
I don't even need to think about this anymore.

[00:22:23] Speaker 01:
And you've now given me some more reason to think about it, which is if I understand it correctly, well, was there anything in the petition or in the reply that gave any merit to this whole question about cognitive overload?

[00:22:41] Speaker 01:
Was it just attorney argument?

[00:22:45] Speaker 01:
That might be a ground on which the Board of the Remand would throw it out.

[00:22:49] Speaker 01:
Or then the next question is, well, why would you be trying to make some change in Amara Anyhow?

[00:22:57] Speaker 01:
See what I mean?

[00:22:58] Speaker 01:
These arguments that you're laying out.

[00:23:01] Speaker 04:
Yeah, I think the board had all of this evidence in front of it.

[00:23:04] Speaker 01:
What evidence?

[00:23:05] Speaker 04:
The evidence about Amira, and the evidence about Dew, and it heard the argument on Reply, and it heard the argument that counts on me.

[00:23:11] Speaker 01:
We don't know from the description of the scope and content of the prior earth.

[00:23:15] Speaker 01:
They're not telling us a whole lot about Amira.

[00:23:19] Speaker 04:
Well, I think they're telling in their order what they think was necessary in order to convey their opinion and their order.

[00:23:28] Speaker 04:
And that was that Do says, hey, I've got a problem of cognitive load.

[00:23:33] Speaker 04:
And in Do, I present my own solution of cognitive load.

[00:23:38] Speaker 04:
So that's what Do.

[00:23:39] Speaker 04:
Do identifies a problem.

[00:23:40] Speaker 04:
Do solves the problem.

[00:23:42] Speaker 04:
And then what my friends on the other side argue is, well,

[00:23:47] Speaker 04:
Because it identifies a problem of cognitive load, then any other piece of prior art anywhere that has to do with visualization technology, well, I guess I get to combine that with due to solve cognitive load, even though there's no evidence.

[00:24:01] Speaker 01:
Well, that was in the first theory.

[00:24:03] Speaker 01:
No.

[00:24:04] Speaker 01:
We're not talking about the first theory.

[00:24:05] Speaker 04:
No, they don't talk about cognitive load in the petition.

[00:24:09] Speaker 04:
They talk about cognitive load in reply, if I'm understanding your honest point.

[00:24:12] Speaker 01:
Yeah.

[00:24:14] Speaker 01:
I thought your argument you were making now about their evidence was directed more to their first theory than the second theory.

[00:24:21] Speaker 04:
No, no.

[00:24:21] Speaker 04:
On second theory, if you're going to take their argument that you find cognitive load and do, and then I can apply that to any visualization technology piece of prior art anywhere, then what you're essentially saying is that I don't need a motivation to combine

[00:24:38] Speaker 04:
Or I don't need to understand what that other technology is that dues cognitive load now all of a sudden gives me enough to combine with any other visualization technology anywhere else.

[00:24:48] Speaker 02:
And I don't think that's a law.

[00:24:49] Speaker 02:
What would be deficient about that?

[00:24:52] Speaker 04:
Excuse me?

[00:24:52] Speaker 02:
Why would that be deficient?

[00:24:54] Speaker 04:
I think under the KSR standard, there's not enough underpinnings there to combine or

[00:25:02] Speaker 04:
motivate the person of ordinary skill to combine any kind of visualization technology, no matter what it is, or where it was intended, or what it was understood to be.

[00:25:12] Speaker 01:
Any kind 3D.

[00:25:13] Speaker 01:
We're talking about 3D technology here.

[00:25:15] Speaker 04:
It's three-dimensional visualization technology.

[00:25:17] Speaker 01:
Why wouldn't you?

[00:25:19] Speaker 04:
It has nothing to do with being done in a surgical environment.

[00:25:22] Speaker 04:
No evidence that that would have been done whatsoever in an augmented reality situation.

[00:25:31] Speaker 04:
And I think this court in active video networks explained why when it cited the KSR and said, look, if I were going to do that, and I was going to say, look, I can combine anything else just because one piece of prior art says it's got a problem, well,

[00:25:50] Speaker 04:
pretty much any other piece of prior art could be combined with it.

[00:25:54] Speaker 04:
And in that case.

[00:25:55] Speaker 03:
Well, in that regard, I guess this is connected in some way to the question I asked Mr. Steinmetz.

[00:26:03] Speaker 03:
Amira is a user's guide for an on-the-market product.

[00:26:09] Speaker 03:
It's not an article sitting in a German library.

[00:26:16] Speaker 03:
So why is it?

[00:26:19] Speaker 03:
if do presents and even recognizes a problem of cognitive overload and is written to suggest, I'm trying to do something that can be used with common medical imaging products.

[00:26:40] Speaker 03:
Why would a mirror not be a pretty likely place to look?

[00:26:44] Speaker 03:
It's not obscure.

[00:26:47] Speaker 03:
Maybe this, the fancy user guide,

[00:26:49] Speaker 03:
I don't remember if there's anything in the record about the product that Amira is a user guide for.

[00:26:57] Speaker 03:
But it doesn't look obscure.

[00:27:01] Speaker 04:
I'm not arguing that it's obscure, Your Honor.

[00:27:03] Speaker 04:
I'm arguing that there is no testimony or evidence to suggest that the person from DO would go look to Amira.

[00:27:12] Speaker 04:
And I think the unrebedded testimony from Novorad's expert is that you wouldn't do so and that it wouldn't reduce cognitive load.

[00:27:26] Speaker 04:
Your Honor, I have one minute left, and so I will just address the one point that was raised by Judge Clevenger, and that is the obviousness standard requires a motivation to combine and a reasonable expectation of success.

[00:27:40] Speaker 04:
And there's just no evidence of that on the record at all.

[00:27:42] Speaker 00:
And the board, except for mentioning the words expectation of success, did no analysis of that, in the opinion.

[00:27:50] Speaker 04:
There was no evidence to analyze.

[00:27:52] Speaker 04:
There was one statement from the expert witness in that same reference that I made previously in 1587.

[00:28:05] Speaker 04:
Just simply, they would have had a reasonable expectation of success in combining the intraoperative medical image viewing system and method disclosed in due with the visualization technology disclosed in a mirror.

[00:28:15] Speaker 04:
That's it.

[00:28:16] Speaker 04:
And say why?

[00:28:18] Speaker 04:
Not at all.

[00:28:19] Speaker 04:
And so if you were to remand that, there's no evidence for them to look at or consider.

[00:28:25] Speaker 04:
And so I don't think a remand is going to be any more beneficial than just an affirmance.

[00:28:32] Speaker 04:
Thank you.

[00:28:43] Speaker 05:
Thank you.

[00:28:43] Speaker 05:
Just to address a few of the points that were made by my friend on the other side,

[00:28:48] Speaker 05:
The issue of whether or not there was attorney argument, I think that was the point he was making.

[00:28:53] Speaker 05:
There was no expert testimony on something.

[00:28:55] Speaker 05:
There's no law that requires expert testimony to support a motivation decline or a reasonable expectation of success and do itself discusses the cognitive load problem repeatedly.

[00:29:07] Speaker 05:
It discusses it at paragraph three, paragraph four, paragraph five.

[00:29:09] Speaker 05:
It repeatedly discusses the cognitive load problem and how it's proposing to solve that problem.

[00:29:15] Speaker 05:
That is sufficient to meet the motivation to combine.

[00:29:18] Speaker 05:
As for reasonable expectation of success, Your Honor is correct that the board did not make a finding that there wasn't sufficient evidence.

[00:29:26] Speaker 05:
The board did not reach that issue.

[00:29:28] Speaker 05:
And if the board on remand looks at due and looks through due walking through the various three-dimensional modalities, it is perfectly reasonable for the board to reach a conclusion that there is a reasonable expectation of success.

[00:29:41] Speaker 01:
Well, the question is whether or not the board actually reaches.

[00:29:43] Speaker 01:
The board's decision here is under a heading called rational to combine, right?

[00:29:48] Speaker 01:
Yes.

[00:29:49] Speaker 01:
And so they go through that.

[00:29:51] Speaker 01:
And then over on the next page on 23, they say patent owner contends, and we agree, blah, blah, blah.

[00:29:59] Speaker 01:
And the petitioner hasn't provided meaningful analysis, motivated, or had success in combining.

[00:30:06] Speaker 01:
This is true.

[00:30:08] Speaker 01:
What do the words this is true mean?

[00:30:10] Speaker 05:
Well, I think it goes to the board's analysis, which is on the motivation to combine.

[00:30:14] Speaker 01:
This, it follows a sentence that reads patent owner further argues.

[00:30:23] Speaker 01:
And I believe this is referring to the sentence that began patent owner further argues.

[00:30:29] Speaker 01:
It would be like patent lawyers here reading a claim.

[00:30:34] Speaker 05:
Yes, Your Honor.

[00:30:34] Speaker 05:
I guess my answer would be that without the explanation, I think the board has not given a sufficient explanation of its decision for your review.

[00:30:41] Speaker 01:
Well, the question really is whether we take the heading to rationale to combine as limited to rationale to combine, or whether it also includes the latter sentence.

[00:30:53] Speaker 05:
Yes, I think your honor is correct that maybe the sentence itself is ambiguous.

[00:30:58] Speaker 05:
But when looking at the section overall, it really does address whether or not there would have been a motivation, not whether there would have been a reasonable expectation of success.

[00:31:06] Speaker 05:
And without that reasoned explanation, this court is without ability to review that decision.

[00:31:11] Speaker 01:
On a remand, you're not going to be allowed to add anything to the petition or the response.

[00:31:17] Speaker 05:
Correct, your honor.

[00:31:18] Speaker 01:
You're stuck with the highly conclusory statement by your expert.

[00:31:22] Speaker 05:
Well, in addition to the due reference itself, which walks through three-dimensional modalities and does provide a basis for the expectation that implementing three-dimensional technology into an augmented reality system of due would have a reasonable expectation of success.

[00:31:36] Speaker 00:
Thank you.

[00:31:37] Speaker 00:
Thank both sides.

[00:31:38] Speaker 00:
The case is submitted.