Legal Case Summary

1468 biomet versus pujit. Mr. How do I say your last name? Salary. Mr. Salier, please proceed. Good morning, Your Honours. I'm Doug Salier's representing biomet in this appeal of an inter parties reexam. This case presents a straightforward case of the board making two errors. They aired in their claim construction and they aired in reading the prior art techniques. Prior teachings. Let me start. I parse these into, let's say, amended claims and unamended claims for my purposes. So why don't we start with the amended claims as a starting point. The PTO has regulations which I've discovered late last night on my computer that says you may never issue a patent after expiration with amended claims period. It doesn't matter if they're narrowing, it doesn't matter if they're broading. It has none of, we are a prior precedent that says you can't it, you can't narrow, you can't change claim scope. The PTO's regulations which were subsequent to our precedent say you can't amend period. They don't actually incorporate the changing claim scope criteria in. So are those claims now you tell me what you think happens in light of the fact that the patents now expired and those amendments are pending before us and were not actually entered on issued on a certificate below. Right, and I believe those are moot. That's what the Institute passed or case indicated that they're moot. So your request to us would be for us to vacate the issue of the allowance. Right. The board allowed them. They allowed them at a time when they could have issued. Right. Now post the time they can issue. So it's not that we dismissed that portion of the cases, we have to vacate the board

. You're on of your correct. I mean the moot. I just want to make sure I understand. Yes, you're on of we believe that after December 24th these claims are now un, you can't be sure of them. So that is a moot issue. You amended claims. What I also found out in the PTO's rigs, boy these things have been changing, you know, practically daily it seems, is that when you have an amended claim, post expiration that can't issue, suggests that they're allowed to go back and continue to argue for the issuance of the original claims. That's what the PTO's rigs expressly said. So yeah, I know you're looking at it crazy. Yeah, that's crazy. I know. I thought it was crazy too. And either of you cited it, but we dug this up last night. It's on their website. It's their rigs. Okay. And so I guess my question to you. So technically I don't know what's going to happen below with the PTO, but its own rigs suggest that they may have some right to argue that the original claim. And the examiner, I want to make sure I understand all the facts. The examiner rejected them twice. First, first he rejected them and then a final rejection. The claims, even with the amendment, but certainly the original claims. Correct. And so what didn't get appealed to the board was the patent ability of the original claims. What only got appealed to board was the patent ability of the amended claims. Correct. So the board has never spoken on those original claims

. Correct. All right. Correct. So that's a quagmire. I hope we don't have to get into it, but I think that the fact that they had to amend them to overcome it. Well, you don't have to get into it, but I mean, we certainly don't have to get into it. Right. We just hunt this back to the board, but you know, if, unless they have some compelling reason why these rigs are not applicable somehow, you know, I don't know how we can possibly address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. Don't worry about your time. 37 CFR 1.530J. And, uh, Riba, is that the one? I don't have it at my fingertips. Is that the one that says what happens that amended claims can't issue after expiration? Or is that the one that says when it goes back, they consider the original claims? It's an MPEP 20250

. Okay. You have that. If a patent expires during dependency of a reexample seating, all amendments to the patent claims and all of them are in the same way as the one that says the original claims. They added during the prosecution or withdrawn. Um, but, uh, all subsequent reexample will be on the basis of the unamended patent claims. Hmm. There you go. Okay. So, um, well, I, all right. Well, I, I don't know that we can resolve that today. I was prepared in my arguments. I was basically going to ignore the amended claims for just that reason, because I believe that there is. Well, I mean, I certainly don't think that we ought to be addressing the validity of the original claims, which wasn't the original claims. I don't know that it would make sense for you. None of us in brief that is not think they are valid, but if we have to have another round in the PTO, we'll do so. Okay. Why don't, why don't I have a question? Sure. And this is something that is going to come like a fastball to you, probably, or some of some more like a curveball. The unamended claims, you guys are all referring to as unamended. They're technically amended. Are they not because they were, they went from being dependent claims to independent claims. That is correct. So, what does that mean? Well, that's a good point. We, I believe that that could be an amendment, but it's not a, if, if your honors correct, if the language of the claim cannot be amended, then those claims may be disallowed by the PTO, because they are amendments, they're turning it, in dependence and independent claims. We have not interpreted that statute that way. We believe that these were unamended claims because they were, in essence, claim 35 was already in the patent. Right

. I mean, it's a much closer call and the other side hasn't argued that they're. They have not, what have we argued that? I mean, we believe that these were original, I mean, they are original claims. But wouldn't it, in some ways, make sense for us to just send it all back to the PTO to tell us what's amended and what's unamended and what could issue and what's can't? My client probably wouldn't like that. I mean, we would like some rulings on some of these claims now since we've briefed it and are here before the court. But this is a regulatory matter and the other side has not disputed, has not argued that the expiration of the patent makes the issuance of those claims which were amended only by incorporating, making independent, dependent claims are forbidden to be issued by that regulation, right? If I'm understanding all the words in your claim, yes, neither side is contesting that after December 24th the unamended claims cannot issue. So we, we, we, and primarily that would be you that would want to contest that, right? Yes, that's true. I mean, you know, we would, we have, we feel confident that the board made errors and we want this court to reverse those errors so that you could give them direction about how they should properly construe this claim. And that, that issue is fully briefed in front of the court. Now, I think that would be, it would be helpful to the court or the patent board below to hear that now that it is a live issue. And for that reason, I'd like to address the unamended claims and talk about why we think those were misconstrued both in claim construction and in, in application to the prior art. I think it's interesting that the board made a construction that the patent owner does not support. And that's this complete resection position that the board had to come up with to overcome the prior art. In the red brief, the patent owner says nothing about complete resection. That's a telling statement about how they're not supporting what the board did. And it has fatal consequences for the validity of these claims or the allowability of these claims because in order to overcome the Samuelson reference and the Protect and the Vomit reference, the board had to come up with a construction. And instead of just a partial resection across the midline, the entire need. What do you mean by a partial resection across the midline? Do you mean that the saw comes in, say, from the outside and it moves? And when it gets to the midpoint, it crosses the midpoint and leaves what would amount to a slit, a slit that you couldn't, I mean, it would still have a top surface and it would, you know, just cut down from the slit. There are partial resections where you do. I know, but is there anything in the, in the spec of this patent that refers to a partial resection? Well, in place I see it as in your brief. That's correct. And you concede that because the patent is expired that we're supposed to be using Phillips, not BRI. Correct. Okay, so don't we have to inform our view of this claim language by reference to the specification? The spec provides no guidance on this. I mean, that's an indefiniteness issue that we raised below that the board and the examiner before it did not accept. But because these claims were unamended, they didn't get to the indefiniteness issues. So we kind of, we don't have a record on the spec support. So you're on this question

. But you can't point me to anything in the spec that discusses a partial resection as opposed to continual reference to a resection. That's correct. There is no reference in the spec to partial resection, I believe. Okay, so what support do you have in the spec for your interpretation of the claim language? You say we never have to get there? I'm simply countering what the board found in its statements. And it's a logic question or a logical argument, if you will, that the board's findings in terms of what this claim covered would require a resection to go across the midline. And then if it went a little bit past the midline, they would, they realized that that would be captured by the prior art. Because both Samuel, Son and Protek had at least two arm approaches. And you can't cut precisely to a midline. So if you're going, the prior art taught, you would have to at least go a little bit past the midline because you just can't line up these devices at a single point. And indeed, even the patent owner realizes this problem when it came up with its freehand approach that put into the red brief. And in the freehand argument that they've made for the first time on appeal, they said, well, there's actually three cuts. The prior art would let you cut from the left and the right, and you get close to the middle, and then you take the cutting got off, and you just freehand it the rest of the tail of the knee beneath the cutoff. I'm still trying to get back to the board said under BRI, you need a complete resection all the way across, a complete cut all the way across. That's how it read the claim line, which is correct. So, and now we're trying to decide whether or not under Phillips, which is done by definition more narrow, that it doesn't require that. Correct. So I'm trying to find some place in the intrinsic record that you can point me to that says that. Well, you're on, I think you don't necessarily have to go into the intrinsic record. You can just go into the claims themselves. I mean, claim 35 says that you are simply cutting into glasses here. That the, that you're cutting creating at least one resected surface. So the surface is not a complete resection, it's describing at least one resected surface. So the claim language itself does not claim a complete resection, and a resected surface is simply some part of the knee that has been resected. You've had the bone removed from it. So we don't need spec support when you just do claim meaning of claim language. So that was the problem that we kept addressing with both the examiner and the board that the claim language itself, putting aside the spec, claim language itself, how had all these open-ended terms or less than all type of terms. And particularly on the resected surface language in 35, it was simply at least one

. So when the board came in later, it changed that claim language from at least one resected surface to a complete resection. And that's error. That's just reading the claims wrong. So I think that regardless of what the spec might say, which candidly has nothing to do with the saws and resection, the entirety of the specification is about a milling approach to create a curvilinear implant structure. There's just not spec support for these claims, but that's an issue that we didn't have to allow to do. Well, no. I mean, there's a lot in the spec about the placement of the guide and how the guide works in relation to the cut. Is there not? There's not. There's figure 18. Well, that's not true. I mean, this is a long specification, but and this is a claim that has a number of very specific limitations in it, which is understandable since it started as a dependent claim. So not every single figure would recite every single one of these multiple claims. Well, you're on, I'm simply, I guess referencing what it is that the patent owner relies on. Patent owner only relies on figure 18 for the for this whole set of claims. That's all I ever talked about. That's the only thing. And the rest of the figures that have have milling guide limitations about where the milling guide is. Right, but there are arguments that those relate to different claims. Of course, it's correct, but I mean, in short answer to your question, while there may be lots of other inventions in this patent or lots of other disclosures, lots of other embodiments, when you try to find support for the claims that issue, the ones that are left, it's only figure 18. And when you look at figure 18, it doesn't tell you whether it's on a medial or a lateral or an anterior side. Those words don't appear in the specification. All you have is a figure. And when you look at the figure, it shows a bone head, it shows something in L-shaped structure, it shows that L-shaped structure is longer on the front than on the side. But there's no description in figure 18 of figure 18 as being primarily or generally, medially, generally, laterally, anterior portions, not on that language as in the client. Can I ask you this? I'm just having a little trouble visualizing this. I mean, since you're making two different kinds of points, one is whether the claim covers situations in which to complete the cut you've come in for more than one side. And the other is this business about what a total or a partial resection is

. And suppose for a minute we just, what we hold as a given that at least claim 35 here in the Warrion clause requires the cutting to be done just from the medial side. What constitutes a resection that goes into the lateral side that isn't going all the way across. Because remember, you're not going to get the cut to essentially if you go in across the midline and you create a slit into the lateral side now. Coming in from the video, coming into the, you cross the midline, you go into the lateral and you now get this slit in order for that portion to be a resection, you're going to have to at least remove bone above it. Correct. And that we can't do from the side. That's correct. So why doesn't this necessarily or reasonably necessarily imply that cutting a lateral side where a resection is occurring on that on that lateral side as well as the medial side, include has to go all the way across. Because there's language in the claim that there's at least one resect at surface. Let's assume with me for this purpose that until you get to the Warrion clause, the language of the claim is completely clear. That you can use two different sides, but then not on the Warrion clause. And I'm trying to, and I'm just trying to focus on this partial versus. Yes, but you're on a very good point because when you look at the claim language in the Warrion clause, it's not claiming a resection. It's claiming of cutting. It's exactly your honors point. It says using the tibial cut got further includes cutting a lateral side. So your honors notching into a bone is what that that would be covered by that language. It's not a resection of the lateral side. I could simply cut into that. But you've got to cut into it coming from the medial side. Not necessarily in the convoluted and contorted way in which this claim is written. It is describing guiding the cutting tool further includes. And it doesn't place limitations on the orientation in which the cutting is being. How do you guide it from the medial side to cut the lateral side if you're not going all the way across? You can guide it from any place that is claimed in that structure. And if you look at the claim, the claim says a portion is on the anterior side. The cutting guide is on the anterior side. So if you're using the cutting guide which is on the anterior side to cut into the lateral side, you can cut from the anterior side

. So the claim has no requirement from the Warrion clause that you're cutting from medial to lateral side. It says you are using the cutting guide which has an anterior portion and admittedly some portion on the medial side. But that actually begs the question about what is the claim also include. When you in the Warrion clause use the language generally medially that does not preclude partially laterally. So the claim can be on all three sides. You can have a generally medially most of it on the medial side. You have to have a partial a portion on the anterior and by saying generally as opposed to only the claim allows a lateral portion to be present. And therefore when you cut into the lateral side, you can cut from any of those three claimed guide positions. So that creates this morass that the board had to. I think that we need to we're four minutes over all of your time. Yes, you're right. So we need to move on to Mr. Peterson, I'll restore two minutes of rebuttal time. Thank you, Your Honor. Mr. Peterson. Thank you, Your Honor. I'm not going to focus on obviously anything so please the call I'd like to address your question particularly. Judge more about regulation regulation specifically in one five three zero. J says that no amendment may be proposed for entry. This is an amendment that has already been proposed after the pattern has been inspired. And so what the office should do in our opinion as we took a look at it and how that the claim is expired. We made this argument in section six brief that this was going to be an issue if the claim inspired before your decision was rendered. Now it has. Now we are in Markman Phillips construction. We know that we cannot enter those amendments. So what will the patent office do on remand? I'm sorry, just I just I mean to be clear that the next sentence more over more over no amendment other than the cancellation of claims will be incorporated into the patent

. And by a certificate issued after the expiration of the patent certificate hasn't issued yet. That's a future event. It's now right any certificate would have to be after the expiration. So doesn't that say no amendment will be no it does not if you go to MPEP 2682. Roman one sub a they say if you had an independent claim and a dependent claim both rejected. And then the board confirms the rejection of the independent. This only goes this that argument only goes to what we've been calling the unamended claims. Okay, that argument says nothing about the ones that only go to MPEP 2687. Roman three sub D. And that one says if it expires you go back to the unamended version. Right. Well that that's what I said before so so for the independent unamended. For the so for the amended claims right now they're going to go back. And and we say go back you we have to vacate the allowance because no you do not have to vacate the allowance because the procedures that the office has allow the examiner in MPEP 2682. 1 a to rewrite the dependent claim with the amendments to the independent claim gone to rewrite that dependent claim in independent. That's not the amended claims. We're talking about the amended claims. So even those claims that got amended you take those amendments out because they were allowed based on the nature of the limitations in the dependency. No, no no no. No, no, no, no. And based on the amendments based on the word only and based on the addition. No, no, no, no, no. The board's decision is very clear. Let me be clear. Okay. Examiner rejected your examiner rejected the claims twice. Twice

. Basic and final goes up on appeal to the board. Mm-hmm. You've got these amendments board reverses now on the dependent claims. On the claims that were amended that are on appeal to us that I refer to as amended. Maybe it'll help you if I tell you which claim numbers. That would be excellent. Thank you. I don't know. We're speaking of upstate claims. I will call the amended claims 31 33 39 to 40 45 47 53 to 54. Yes. On those claims. Those are the ones that the board reversed again on the request of rehearing. Yes. And on those claims you added language like only language and the single language and some of those. Yes. That language would not be in the claims as rewritten by the examiner in which is why the only allowance was to these amended claims. The only allowance was to the amended version. The board did not consider much less decide anything with regard to the claims before the amendments, which still stand rejected by the examiner and not considered by the board. So I don't see how there's anything I can do but to vacate your allowance. Well, here's the issue why I must respectfully disagree with you. Well, you don't want it to be so. No, I have to disagree with you. We are now in Markman versus Phillips. From the start of this reexample, the patent owner has continuously argued there is no need for those amendments. They were not substance. So you would like me to decide in the first instance the board did not decide whether your original claims as not amended are allowable. So you're going to ask me in the first instance to decide whether I should overturn the examiner's rejection, which is the only thing that's ever happened of those original claims absent the amendments you added. You would like me to do that in the first instance? That is really not a good process to get started. That's not a good point. Well, this is why Senator Leahy was right when he said that these interparty reexample seizures were entirely inefficient and ineffective. Those amendments were made in 2011, Your Honor. You could have appealed the originally filed claims to the board. You didn't. You appealed on the argument because in 2011, you only appealed your amended claims. So you never even gave the board a chance, much less asked them to consider the patent ability of the originally filed claims. Originally issued claims. Because we did not think it was going to take five years to get to this point here. And so we assume. We assume. So because this is an important thing to understand, we assume when we made those amendments in 2011, we never have an opportunity to argue the original claims under Markman Phillips. Right. Maybe that was a fair assumption at the time. But that's not where we are now. I know it's not where we are. Putting aside the fact that this may have been burdensome on the patent owner, we have limitations on our authority. We can't go back and construe claims that the board has never passed on. But they have construed the dependent claims. And that's what I'd like to give to because this is a single sided half with cutting guide claim. So now we might have to move to what I will call the unamended claims, which are simply dependent claims rewritten in independent forms. Yes. So let's take claims 35 to 38, or even 52. The same thing I asked the other side. If they're technically amended, if they are amended under the MP, you can

. So you're going to ask me in the first instance to decide whether I should overturn the examiner's rejection, which is the only thing that's ever happened of those original claims absent the amendments you added. You would like me to do that in the first instance? That is really not a good process to get started. That's not a good point. Well, this is why Senator Leahy was right when he said that these interparty reexample seizures were entirely inefficient and ineffective. Those amendments were made in 2011, Your Honor. You could have appealed the originally filed claims to the board. You didn't. You appealed on the argument because in 2011, you only appealed your amended claims. So you never even gave the board a chance, much less asked them to consider the patent ability of the originally filed claims. Originally issued claims. Because we did not think it was going to take five years to get to this point here. And so we assume. We assume. So because this is an important thing to understand, we assume when we made those amendments in 2011, we never have an opportunity to argue the original claims under Markman Phillips. Right. Maybe that was a fair assumption at the time. But that's not where we are now. I know it's not where we are. Putting aside the fact that this may have been burdensome on the patent owner, we have limitations on our authority. We can't go back and construe claims that the board has never passed on. But they have construed the dependent claims. And that's what I'd like to give to because this is a single sided half with cutting guide claim. So now we might have to move to what I will call the unamended claims, which are simply dependent claims rewritten in independent forms. Yes. So let's take claims 35 to 38, or even 52. The same thing I asked the other side. If they're technically amended, if they are amended under the MP, you can. I know you guys call them unamended, but why wouldn't those also be subject to the rule that says they can't issue? Well, the requester has admitted that they're unamended and their brief. So, you know, I think that they are effectively unamended, but the MPP provisions allow the examiner when you're faced with the situation of an independent projective claim. And that's why it's an unamended claim. So why? So let's focus on those. Talk about those and say, well, we're at the partial reception argument. There is a very specific passage in the board's decision, which addresses that particularity. There is a very specific passage in the board's decision, which addresses that with particularity. The original or the reherent? The rehering decision, page 6, A26. The board is specifically addressing the requester's argument about partial reception. What pay to the appendix for you on, I'm sorry. A26. Thank you. When taking the claims at issue in context, it is not merely the fact that the surgeon's blade has the midline of the bone, but rather, as your honor said, but that the entire reception is being done using a guide on one side to complete the reception. Right. I know that the board expressly said that question is, is it wrong? No. That is right. So, are the reasons why the claim language, why that is the best interpretation? And I gather, the other side's textual point is that the wherein clause says you have to cut a lateral side. That language doesn't say you have to make a resection on the lateral side. But if you were to rewrite the claim, the immediately preceding step is implanting the implants by positioning a frimoral implant on the at least one fixation surface. You can't do that with a notch. I can't do that with a notch. And that's our argument, your honor. That's why it's very reasonable to say it was completed so that you had a fixation surface. You say we're in Phillips. Yes. I have to say that I've never been more frustrated by the absence of citations to the written description. You know, nobody cites to be anything in the written description except your figure 18

. I know you guys call them unamended, but why wouldn't those also be subject to the rule that says they can't issue? Well, the requester has admitted that they're unamended and their brief. So, you know, I think that they are effectively unamended, but the MPP provisions allow the examiner when you're faced with the situation of an independent projective claim. And that's why it's an unamended claim. So why? So let's focus on those. Talk about those and say, well, we're at the partial reception argument. There is a very specific passage in the board's decision, which addresses that particularity. There is a very specific passage in the board's decision, which addresses that with particularity. The original or the reherent? The rehering decision, page 6, A26. The board is specifically addressing the requester's argument about partial reception. What pay to the appendix for you on, I'm sorry. A26. Thank you. When taking the claims at issue in context, it is not merely the fact that the surgeon's blade has the midline of the bone, but rather, as your honor said, but that the entire reception is being done using a guide on one side to complete the reception. Right. I know that the board expressly said that question is, is it wrong? No. That is right. So, are the reasons why the claim language, why that is the best interpretation? And I gather, the other side's textual point is that the wherein clause says you have to cut a lateral side. That language doesn't say you have to make a resection on the lateral side. But if you were to rewrite the claim, the immediately preceding step is implanting the implants by positioning a frimoral implant on the at least one fixation surface. You can't do that with a notch. I can't do that with a notch. And that's our argument, your honor. That's why it's very reasonable to say it was completed so that you had a fixation surface. You say we're in Phillips. Yes. I have to say that I've never been more frustrated by the absence of citations to the written description. You know, nobody cites to be anything in the written description except your figure 18. So, what are your best textual arguments as it relates to the written description? In this situation, the written description, you know, admittedly, there was a preferred embodiment and a secondary embodiment, the preferred embodiment, the milling embodiment. Most of the description is about that. The description and specification, the figure 18, occurs at column 19 and 20 of the 541 pattern. But it references other aspects. And I'm going to lead you to one of those different aspects. If you look at figure 4, you will see a side of a cutting guide, that's milling guide, that the single-sided version says to be done. And what you will see there is that there is essentially five surfaces on that side. There is a flat surface at the top that says that this is the distal surface. There are two angled surfaces at the side, the chamfer surfaces, and then there's a posterior and anterior surface. When we said in the claim at least one resected surface, what we were providing for was that the guide could do more than just a flat surface. You could create these two angled surfaces on the end of the bone, and then the two up and down surfaces on the end of the bone that the implant sits on. So, we did not want to say our guide is only creating the single flat surface on the very distal end of the bone. You could have a guide and figure 4 is an example where you also created the angled surfaces and you created the up and down surfaces. That would be at least one resected surface. In that case, there would be five resected surfaces. The claim was written to allow for that. So, they're taking the at least one resected surface language and reading it out of context to support that argument that somehow this is ambiguous. There's the distal resected surface that is created completely by positioning the guide on the inside and cutting all the way across to the opposite side compartment or portion. The other half of the knee. That's why we call this a single half guide, half width cutting. That's the best way to kind of see what's going on here. The reason why this is important to your honors is up until Mr. Haines's invention. The incision to do a totally arthroplasty was almost a foot. It went straight midline. You splaid the knee open in order to access a full whiff gap, all three of the prior art references that the requester did are the exact same as burp. They are full with guides

. So, what are your best textual arguments as it relates to the written description? In this situation, the written description, you know, admittedly, there was a preferred embodiment and a secondary embodiment, the preferred embodiment, the milling embodiment. Most of the description is about that. The description and specification, the figure 18, occurs at column 19 and 20 of the 541 pattern. But it references other aspects. And I'm going to lead you to one of those different aspects. If you look at figure 4, you will see a side of a cutting guide, that's milling guide, that the single-sided version says to be done. And what you will see there is that there is essentially five surfaces on that side. There is a flat surface at the top that says that this is the distal surface. There are two angled surfaces at the side, the chamfer surfaces, and then there's a posterior and anterior surface. When we said in the claim at least one resected surface, what we were providing for was that the guide could do more than just a flat surface. You could create these two angled surfaces on the end of the bone, and then the two up and down surfaces on the end of the bone that the implant sits on. So, we did not want to say our guide is only creating the single flat surface on the very distal end of the bone. You could have a guide and figure 4 is an example where you also created the angled surfaces and you created the up and down surfaces. That would be at least one resected surface. In that case, there would be five resected surfaces. The claim was written to allow for that. So, they're taking the at least one resected surface language and reading it out of context to support that argument that somehow this is ambiguous. There's the distal resected surface that is created completely by positioning the guide on the inside and cutting all the way across to the opposite side compartment or portion. The other half of the knee. That's why we call this a single half guide, half width cutting. That's the best way to kind of see what's going on here. The reason why this is important to your honors is up until Mr. Haines's invention. The incision to do a totally arthroplasty was almost a foot. It went straight midline. You splaid the knee open in order to access a full whiff gap, all three of the prior art references that the requester did are the exact same as burp. They are full with guides. To do a full with guide, you needed to make that big incision. For the L-shaped guide that's shown in Figure 18, I can make a three to four in incision on the inside of the knee, access it from here and the hospital stagos from a week to two days. That's why this is a big deal, your honors. My client invented this in the middle of the 90s long before this ever became what is currently today, the procedure that you would get if you went into the hospital. You're going to get an in-em-elianvasive, totally replacement, using immediately accessed cut for the most part. That's where we're at. So your view is that these unamended claims, like claim 35, is limited to a single cut which goes all the way across the entire length. And that's what the board's decision is. So you'll never assert this claim, for example, against somebody that cuts across the midline, immediately, and then follows in with a cut laterally from the other side. You use a different guide, which is another part of the board's decision. You will assert that against people? No, no, we were not. If they use two guides, two arms on the guides. First you cut this side using this arm, then you pull that away and then you throw the other one in and you cut using, no, that's the prior arc. That's not what this claim covers. No, but you're arguing here about claim construction. So the claim construction that you're embracing would also preclude finishing the cut freehand. No, it would not, because the argument that the board made in their decision specifically references that when they said complete what they meant was, they meant finishing the guide with a different cutting guide. So, Page 6 again, 826. Using a single guide without the need to complete the reception by using a different cutting guide. We think the claims that issue sufficient, I'm continuing from where you just left off, convey that in each instance the resection is completed by using a single cut guide from one side to the other. In other words, the Patonone's claim. Can't do it by chance. Describe a complete resection. Well, that was not what we interpreted the board's decision to mean. And certainly if you go to the other claims, in this case admittedly, the amended claims. There is an ability to what you're doing is cutting across from one side to the other so that you can do this immediately placed guide that's less invasive, doesn't interfere with the Pateloligman, which there are some other sections in the spec that talk about the Pateloligman. They're cited in our briefs, you're right

. To do a full with guide, you needed to make that big incision. For the L-shaped guide that's shown in Figure 18, I can make a three to four in incision on the inside of the knee, access it from here and the hospital stagos from a week to two days. That's why this is a big deal, your honors. My client invented this in the middle of the 90s long before this ever became what is currently today, the procedure that you would get if you went into the hospital. You're going to get an in-em-elianvasive, totally replacement, using immediately accessed cut for the most part. That's where we're at. So your view is that these unamended claims, like claim 35, is limited to a single cut which goes all the way across the entire length. And that's what the board's decision is. So you'll never assert this claim, for example, against somebody that cuts across the midline, immediately, and then follows in with a cut laterally from the other side. You use a different guide, which is another part of the board's decision. You will assert that against people? No, no, we were not. If they use two guides, two arms on the guides. First you cut this side using this arm, then you pull that away and then you throw the other one in and you cut using, no, that's the prior arc. That's not what this claim covers. No, but you're arguing here about claim construction. So the claim construction that you're embracing would also preclude finishing the cut freehand. No, it would not, because the argument that the board made in their decision specifically references that when they said complete what they meant was, they meant finishing the guide with a different cutting guide. So, Page 6 again, 826. Using a single guide without the need to complete the reception by using a different cutting guide. We think the claims that issue sufficient, I'm continuing from where you just left off, convey that in each instance the resection is completed by using a single cut guide from one side to the other. In other words, the Patonone's claim. Can't do it by chance. Describe a complete resection. Well, that was not what we interpreted the board's decision to mean. And certainly if you go to the other claims, in this case admittedly, the amended claims. There is an ability to what you're doing is cutting across from one side to the other so that you can do this immediately placed guide that's less invasive, doesn't interfere with the Pateloligman, which there are some other sections in the spec that talk about the Pateloligman. They're cited in our briefs, you're right. That's where this invention is at. But if you ask us to affirm the board's decision, then we're affirming that interpretation of the claims. If you read it in its entirety, that entire paragraph about the complete resection, it's I'm completing the resection. I'm not doing the partial resection by cutting from one side to the other side. If there was a nub that wasn't there, that would not be out of the skill of a person, the ordinary skill in the art to finish that freehand because you're going to use the rest of the major surface that you created to guide the blade to finish that up. In fact, that's what happens in practices. You may get a little bit of nub, some rough edges, something else in there and they will go in and they'll probably finish it up freehand. So we would not be accepting a construction that we feel is limited in a way that requires an absolute complete resection where you can never do freehand to finish up the rough edges. But that would all be without a guide. Now I'm going to speak very imprecisely here that is the finishing up would be after for the tibia, the North portion is gone. Yes. You would have created the resected surface and then you're going to smooth out the edges with a freehand. So there will be a full resection by the guide alone, by the one guide alone cutting from one side to the other. It's going to create a resected surface. If there ends up being some still edge pieces left here because the surgeon didn't want to get too close to an edge over there with the tip of the saw, they'll go in and they'll be that perhaps freehand to be able to do that. But the resected surface on which the implant is positioned is created entirely from a single half with guide on the opposite side. So just to be clear, the whole bone is cut through, the whole thing is taken out. You're just saying there might be some splinters, some nubs, some edges that stick up which they're going to go in and sand away basically. Yeah. Yeah. And so we want to make sure that that's very clear that when the board was talking about complete because you know, where Custer is correct, that first came up and the question we're hearing. But I want to make sure that I understand your argument, though, which is the conversation we're having with Judge Toronto. So we all agree that this construction limits you to a medial cut that traverses the entire bone. There will be no cutting from the other side that is necessary to finish the job of traversing that entire bone. You're saying there may be some nubs or little sticking up points, but that the whole thing is already resected such that the bone can be removed. Yes. There might be some additional removal, but that's you removed a bone to create the resected surface on to which the implant by the single cut coming from one side to the other

. That's where this invention is at. But if you ask us to affirm the board's decision, then we're affirming that interpretation of the claims. If you read it in its entirety, that entire paragraph about the complete resection, it's I'm completing the resection. I'm not doing the partial resection by cutting from one side to the other side. If there was a nub that wasn't there, that would not be out of the skill of a person, the ordinary skill in the art to finish that freehand because you're going to use the rest of the major surface that you created to guide the blade to finish that up. In fact, that's what happens in practices. You may get a little bit of nub, some rough edges, something else in there and they will go in and they'll probably finish it up freehand. So we would not be accepting a construction that we feel is limited in a way that requires an absolute complete resection where you can never do freehand to finish up the rough edges. But that would all be without a guide. Now I'm going to speak very imprecisely here that is the finishing up would be after for the tibia, the North portion is gone. Yes. You would have created the resected surface and then you're going to smooth out the edges with a freehand. So there will be a full resection by the guide alone, by the one guide alone cutting from one side to the other. It's going to create a resected surface. If there ends up being some still edge pieces left here because the surgeon didn't want to get too close to an edge over there with the tip of the saw, they'll go in and they'll be that perhaps freehand to be able to do that. But the resected surface on which the implant is positioned is created entirely from a single half with guide on the opposite side. So just to be clear, the whole bone is cut through, the whole thing is taken out. You're just saying there might be some splinters, some nubs, some edges that stick up which they're going to go in and sand away basically. Yeah. Yeah. And so we want to make sure that that's very clear that when the board was talking about complete because you know, where Custer is correct, that first came up and the question we're hearing. But I want to make sure that I understand your argument, though, which is the conversation we're having with Judge Toronto. So we all agree that this construction limits you to a medial cut that traverses the entire bone. There will be no cutting from the other side that is necessary to finish the job of traversing that entire bone. You're saying there may be some nubs or little sticking up points, but that the whole thing is already resected such that the bone can be removed. Yes. There might be some additional removal, but that's you removed a bone to create the resected surface on to which the implant by the single cut coming from one side to the other. Yes. That's our intended construction. That is what we feel the board upheld in uphelding the dependent claims under BRI. Of course. There's no substantial evidence on the anticipation of stuff before you sit down. Can you return to where we started about about claims 31, 33, the so-called amended. Let me see if I can just suppose I thought that the changes in wording that you made were in fact substantive changes and that those changes, the ones that the board approved cannot now be entered. Suppose I also thought that under some of the MPEP stuff that we were talking about, the unchanged versions of those claims, which the examiner rejected, which led to your changes, might now be considered by the board. So the original unchanged versions of 31, 33, etc. Do we need a do you care about that? B do we need to take some action or will that automatically happen because now that December 24th has come and gone under the boards MPEP and regulation. It is now the unchanged versions of those claims that are back in play. Do we need to do something? Do you want us to do something, etc.? I would like you to affirm the board. I think that when it comes back to the office, that one wasn't one of them. That's not an option. So do we dismiss that portion of the appeal or do we vacate the allowance to the extent that the appeal relates to that portion or what or another option if there's another option, assuming affirming the board. The dependent claims are allowed as separate claims. We're talking about the amended claims. So that you understand and appreciate our arguments from the very beginning, we said those amendments were not some changes. Some accepting your hypothetical. Yes. Okay. That they are substantive changes. They should not be entered and then you would go to MPEP 2687. Who would go? The Examiner would. Without our remanding or something or that's what the examiner will do. So we could just dismiss that portion of the appeal

. Yes. That's our intended construction. That is what we feel the board upheld in uphelding the dependent claims under BRI. Of course. There's no substantial evidence on the anticipation of stuff before you sit down. Can you return to where we started about about claims 31, 33, the so-called amended. Let me see if I can just suppose I thought that the changes in wording that you made were in fact substantive changes and that those changes, the ones that the board approved cannot now be entered. Suppose I also thought that under some of the MPEP stuff that we were talking about, the unchanged versions of those claims, which the examiner rejected, which led to your changes, might now be considered by the board. So the original unchanged versions of 31, 33, etc. Do we need a do you care about that? B do we need to take some action or will that automatically happen because now that December 24th has come and gone under the boards MPEP and regulation. It is now the unchanged versions of those claims that are back in play. Do we need to do something? Do you want us to do something, etc.? I would like you to affirm the board. I think that when it comes back to the office, that one wasn't one of them. That's not an option. So do we dismiss that portion of the appeal or do we vacate the allowance to the extent that the appeal relates to that portion or what or another option if there's another option, assuming affirming the board. The dependent claims are allowed as separate claims. We're talking about the amended claims. So that you understand and appreciate our arguments from the very beginning, we said those amendments were not some changes. Some accepting your hypothetical. Yes. Okay. That they are substantive changes. They should not be entered and then you would go to MPEP 2687. Who would go? The Examiner would. Without our remanding or something or that's what the examiner will do. So we could just dismiss that portion of the appeal. No, because the allowance, you have to vacate the allowance as it pertains to those claims. Well, it will never issue. Are you positive with PTO? We'll do that. I think we need to vacate the allowance. Thanks for those portions. Well, we would say your honors that, you know, if you're thinking that these claims are not allowed them that they could allowed, we should be given an opportunity then to go back and argue for the construction that we said was the right construction all along. Because we've only ever said these claims cover that and the reason is the art that was overcome that you would consider an American construction is burnt. It's that two-sided claim. It looks exactly the same. Thank you, Mr. Peter. Thank you. Appreciate your patience, John. Mr. Failure. I'll try to be brief. I've got five points. You have two minutes. I know. I'm going to do fast. I guess. Judge O'Malley, your question about whether the dependent claim would be allowed amendment. The statute section J, 1.53, J says, no amendment may enlarge the scope of the claims. So that amendment that was done didn't enlarge the scope of the claims. So the non-amended claims aren't changed in their scope. And I think that's the purpose of that statute

. No, because the allowance, you have to vacate the allowance as it pertains to those claims. Well, it will never issue. Are you positive with PTO? We'll do that. I think we need to vacate the allowance. Thanks for those portions. Well, we would say your honors that, you know, if you're thinking that these claims are not allowed them that they could allowed, we should be given an opportunity then to go back and argue for the construction that we said was the right construction all along. Because we've only ever said these claims cover that and the reason is the art that was overcome that you would consider an American construction is burnt. It's that two-sided claim. It looks exactly the same. Thank you, Mr. Peter. Thank you. Appreciate your patience, John. Mr. Failure. I'll try to be brief. I've got five points. You have two minutes. I know. I'm going to do fast. I guess. Judge O'Malley, your question about whether the dependent claim would be allowed amendment. The statute section J, 1.53, J says, no amendment may enlarge the scope of the claims. So that amendment that was done didn't enlarge the scope of the claims. So the non-amended claims aren't changed in their scope. And I think that's the purpose of that statute. Number two, Judge Toronto, your question about partial resection. And the answer was, oh, well, we have this fixation surface that we need to put things on. If you read the claim language, it's actually you're not putting a fixation surface. It's got to be adjacent to at least one resected surface of the tibia. So the same surface that you only have one of is where this device is being fit on. The cut surface in the wear-in clause is a separate cut and is not part of the process that's in that claim. Third point. I don't know what their claim construction is now. I know what they said in their briefs. In their briefs, the red brief of page four, Pat Oener said that the allowed claims to be used to cut into the other side. That's the position they've maintained in the briefing. Now we're getting that's a complete resection. That's not the argument they made in this appeal. They changed their position at this hearing. The board's construction, we talked a little bit about that. It's very clear, I think when you read that page 26 in the record, the board said this is a complete resection. That's what we have to think. That's what you've got to grapple with. That's what your appeal, that's what your decision needs to be there. Then the two last points. Now, claim 10 in Samuelson has not been spoken about them in their brief. We've briefed it in our brief. Claim 10 in Samuelson says, you're laterally extending this member next to the bone. You're putting the cutting-out next to the bone on the lateral side. You're inserting the blade and you're resecting the bone. A complete resection is being disclosed in Samuelson. In that claim, there's none of this prime number of stuff

. Number two, Judge Toronto, your question about partial resection. And the answer was, oh, well, we have this fixation surface that we need to put things on. If you read the claim language, it's actually you're not putting a fixation surface. It's got to be adjacent to at least one resected surface of the tibia. So the same surface that you only have one of is where this device is being fit on. The cut surface in the wear-in clause is a separate cut and is not part of the process that's in that claim. Third point. I don't know what their claim construction is now. I know what they said in their briefs. In their briefs, the red brief of page four, Pat Oener said that the allowed claims to be used to cut into the other side. That's the position they've maintained in the briefing. Now we're getting that's a complete resection. That's not the argument they made in this appeal. They changed their position at this hearing. The board's construction, we talked a little bit about that. It's very clear, I think when you read that page 26 in the record, the board said this is a complete resection. That's what we have to think. That's what you've got to grapple with. That's what your appeal, that's what your decision needs to be there. Then the two last points. Now, claim 10 in Samuelson has not been spoken about them in their brief. We've briefed it in our brief. Claim 10 in Samuelson says, you're laterally extending this member next to the bone. You're putting the cutting-out next to the bone on the lateral side. You're inserting the blade and you're resecting the bone. A complete resection is being disclosed in Samuelson. In that claim, there's none of this prime number of stuff. It's a claim that says, put it on the side, stick the blade through it, and resect the bone. So if you get to the point where this is complete resection as your construction, you're toast. You cannot get around the Samuelson issue. Final point, you're not a judge, you're not a toast. Question about what do we do with this appeal? You should give guidance to the patent office, I think, that there has been no appeal from the denial of the original claims as unamended. The original claims were in the process. They chose not to appeal them. We can't send it back for a redo. This case has been going on for six years. It has to end sometime. And I think it would be a travesty to send it back and let us start over again for claims. That's not our decision to make. Well, I understand that, but you do have a pellet jurisdiction and you can state on the record that there was no appeal taken from the amended claim, from the unamended claims, claim 31 as unamended. And I don't think the board should allow an additional process. We may have to deal with that below, but certainly they've made an argument about something they didn't appeal about. They made that in their red brief, which was wrong. I mean, I think you can comment on what they said in the red brief. They made a position in all well since it gets after December 24th. We'll just go back to the original claims and let's talk about the original claims. That's not the way the process is supposed to work. If they'd one of the original claims decided they should have included them in the appeal. They didn't, and they've lost that right in our position, in our view at least. Thank you, Your Honors. I have no further. Thank you both. Council, the case is taken under submission.

1468 biomet versus pujit. Mr. How do I say your last name? Salary. Mr. Salier, please proceed. Good morning, Your Honours. I'm Doug Salier's representing biomet in this appeal of an inter parties reexam. This case presents a straightforward case of the board making two errors. They aired in their claim construction and they aired in reading the prior art techniques. Prior teachings. Let me start. I parse these into, let's say, amended claims and unamended claims for my purposes. So why don't we start with the amended claims as a starting point. The PTO has regulations which I've discovered late last night on my computer that says you may never issue a patent after expiration with amended claims period. It doesn't matter if they're narrowing, it doesn't matter if they're broading. It has none of, we are a prior precedent that says you can't it, you can't narrow, you can't change claim scope. The PTO's regulations which were subsequent to our precedent say you can't amend period. They don't actually incorporate the changing claim scope criteria in. So are those claims now you tell me what you think happens in light of the fact that the patents now expired and those amendments are pending before us and were not actually entered on issued on a certificate below. Right, and I believe those are moot. That's what the Institute passed or case indicated that they're moot. So your request to us would be for us to vacate the issue of the allowance. Right. The board allowed them. They allowed them at a time when they could have issued. Right. Now post the time they can issue. So it's not that we dismissed that portion of the cases, we have to vacate the board. You're on of your correct. I mean the moot. I just want to make sure I understand. Yes, you're on of we believe that after December 24th these claims are now un, you can't be sure of them. So that is a moot issue. You amended claims. What I also found out in the PTO's rigs, boy these things have been changing, you know, practically daily it seems, is that when you have an amended claim, post expiration that can't issue, suggests that they're allowed to go back and continue to argue for the issuance of the original claims. That's what the PTO's rigs expressly said. So yeah, I know you're looking at it crazy. Yeah, that's crazy. I know. I thought it was crazy too. And either of you cited it, but we dug this up last night. It's on their website. It's their rigs. Okay. And so I guess my question to you. So technically I don't know what's going to happen below with the PTO, but its own rigs suggest that they may have some right to argue that the original claim. And the examiner, I want to make sure I understand all the facts. The examiner rejected them twice. First, first he rejected them and then a final rejection. The claims, even with the amendment, but certainly the original claims. Correct. And so what didn't get appealed to the board was the patent ability of the original claims. What only got appealed to board was the patent ability of the amended claims. Correct. So the board has never spoken on those original claims. Correct. All right. Correct. So that's a quagmire. I hope we don't have to get into it, but I think that the fact that they had to amend them to overcome it. Well, you don't have to get into it, but I mean, we certainly don't have to get into it. Right. We just hunt this back to the board, but you know, if, unless they have some compelling reason why these rigs are not applicable somehow, you know, I don't know how we can possibly address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. I don't know how to address the event. Don't worry about your time. 37 CFR 1.530J. And, uh, Riba, is that the one? I don't have it at my fingertips. Is that the one that says what happens that amended claims can't issue after expiration? Or is that the one that says when it goes back, they consider the original claims? It's an MPEP 20250. Okay. You have that. If a patent expires during dependency of a reexample seating, all amendments to the patent claims and all of them are in the same way as the one that says the original claims. They added during the prosecution or withdrawn. Um, but, uh, all subsequent reexample will be on the basis of the unamended patent claims. Hmm. There you go. Okay. So, um, well, I, all right. Well, I, I don't know that we can resolve that today. I was prepared in my arguments. I was basically going to ignore the amended claims for just that reason, because I believe that there is. Well, I mean, I certainly don't think that we ought to be addressing the validity of the original claims, which wasn't the original claims. I don't know that it would make sense for you. None of us in brief that is not think they are valid, but if we have to have another round in the PTO, we'll do so. Okay. Why don't, why don't I have a question? Sure. And this is something that is going to come like a fastball to you, probably, or some of some more like a curveball. The unamended claims, you guys are all referring to as unamended. They're technically amended. Are they not because they were, they went from being dependent claims to independent claims. That is correct. So, what does that mean? Well, that's a good point. We, I believe that that could be an amendment, but it's not a, if, if your honors correct, if the language of the claim cannot be amended, then those claims may be disallowed by the PTO, because they are amendments, they're turning it, in dependence and independent claims. We have not interpreted that statute that way. We believe that these were unamended claims because they were, in essence, claim 35 was already in the patent. Right. I mean, it's a much closer call and the other side hasn't argued that they're. They have not, what have we argued that? I mean, we believe that these were original, I mean, they are original claims. But wouldn't it, in some ways, make sense for us to just send it all back to the PTO to tell us what's amended and what's unamended and what could issue and what's can't? My client probably wouldn't like that. I mean, we would like some rulings on some of these claims now since we've briefed it and are here before the court. But this is a regulatory matter and the other side has not disputed, has not argued that the expiration of the patent makes the issuance of those claims which were amended only by incorporating, making independent, dependent claims are forbidden to be issued by that regulation, right? If I'm understanding all the words in your claim, yes, neither side is contesting that after December 24th the unamended claims cannot issue. So we, we, we, and primarily that would be you that would want to contest that, right? Yes, that's true. I mean, you know, we would, we have, we feel confident that the board made errors and we want this court to reverse those errors so that you could give them direction about how they should properly construe this claim. And that, that issue is fully briefed in front of the court. Now, I think that would be, it would be helpful to the court or the patent board below to hear that now that it is a live issue. And for that reason, I'd like to address the unamended claims and talk about why we think those were misconstrued both in claim construction and in, in application to the prior art. I think it's interesting that the board made a construction that the patent owner does not support. And that's this complete resection position that the board had to come up with to overcome the prior art. In the red brief, the patent owner says nothing about complete resection. That's a telling statement about how they're not supporting what the board did. And it has fatal consequences for the validity of these claims or the allowability of these claims because in order to overcome the Samuelson reference and the Protect and the Vomit reference, the board had to come up with a construction. And instead of just a partial resection across the midline, the entire need. What do you mean by a partial resection across the midline? Do you mean that the saw comes in, say, from the outside and it moves? And when it gets to the midpoint, it crosses the midpoint and leaves what would amount to a slit, a slit that you couldn't, I mean, it would still have a top surface and it would, you know, just cut down from the slit. There are partial resections where you do. I know, but is there anything in the, in the spec of this patent that refers to a partial resection? Well, in place I see it as in your brief. That's correct. And you concede that because the patent is expired that we're supposed to be using Phillips, not BRI. Correct. Okay, so don't we have to inform our view of this claim language by reference to the specification? The spec provides no guidance on this. I mean, that's an indefiniteness issue that we raised below that the board and the examiner before it did not accept. But because these claims were unamended, they didn't get to the indefiniteness issues. So we kind of, we don't have a record on the spec support. So you're on this question. But you can't point me to anything in the spec that discusses a partial resection as opposed to continual reference to a resection. That's correct. There is no reference in the spec to partial resection, I believe. Okay, so what support do you have in the spec for your interpretation of the claim language? You say we never have to get there? I'm simply countering what the board found in its statements. And it's a logic question or a logical argument, if you will, that the board's findings in terms of what this claim covered would require a resection to go across the midline. And then if it went a little bit past the midline, they would, they realized that that would be captured by the prior art. Because both Samuel, Son and Protek had at least two arm approaches. And you can't cut precisely to a midline. So if you're going, the prior art taught, you would have to at least go a little bit past the midline because you just can't line up these devices at a single point. And indeed, even the patent owner realizes this problem when it came up with its freehand approach that put into the red brief. And in the freehand argument that they've made for the first time on appeal, they said, well, there's actually three cuts. The prior art would let you cut from the left and the right, and you get close to the middle, and then you take the cutting got off, and you just freehand it the rest of the tail of the knee beneath the cutoff. I'm still trying to get back to the board said under BRI, you need a complete resection all the way across, a complete cut all the way across. That's how it read the claim line, which is correct. So, and now we're trying to decide whether or not under Phillips, which is done by definition more narrow, that it doesn't require that. Correct. So I'm trying to find some place in the intrinsic record that you can point me to that says that. Well, you're on, I think you don't necessarily have to go into the intrinsic record. You can just go into the claims themselves. I mean, claim 35 says that you are simply cutting into glasses here. That the, that you're cutting creating at least one resected surface. So the surface is not a complete resection, it's describing at least one resected surface. So the claim language itself does not claim a complete resection, and a resected surface is simply some part of the knee that has been resected. You've had the bone removed from it. So we don't need spec support when you just do claim meaning of claim language. So that was the problem that we kept addressing with both the examiner and the board that the claim language itself, putting aside the spec, claim language itself, how had all these open-ended terms or less than all type of terms. And particularly on the resected surface language in 35, it was simply at least one. So when the board came in later, it changed that claim language from at least one resected surface to a complete resection. And that's error. That's just reading the claims wrong. So I think that regardless of what the spec might say, which candidly has nothing to do with the saws and resection, the entirety of the specification is about a milling approach to create a curvilinear implant structure. There's just not spec support for these claims, but that's an issue that we didn't have to allow to do. Well, no. I mean, there's a lot in the spec about the placement of the guide and how the guide works in relation to the cut. Is there not? There's not. There's figure 18. Well, that's not true. I mean, this is a long specification, but and this is a claim that has a number of very specific limitations in it, which is understandable since it started as a dependent claim. So not every single figure would recite every single one of these multiple claims. Well, you're on, I'm simply, I guess referencing what it is that the patent owner relies on. Patent owner only relies on figure 18 for the for this whole set of claims. That's all I ever talked about. That's the only thing. And the rest of the figures that have have milling guide limitations about where the milling guide is. Right, but there are arguments that those relate to different claims. Of course, it's correct, but I mean, in short answer to your question, while there may be lots of other inventions in this patent or lots of other disclosures, lots of other embodiments, when you try to find support for the claims that issue, the ones that are left, it's only figure 18. And when you look at figure 18, it doesn't tell you whether it's on a medial or a lateral or an anterior side. Those words don't appear in the specification. All you have is a figure. And when you look at the figure, it shows a bone head, it shows something in L-shaped structure, it shows that L-shaped structure is longer on the front than on the side. But there's no description in figure 18 of figure 18 as being primarily or generally, medially, generally, laterally, anterior portions, not on that language as in the client. Can I ask you this? I'm just having a little trouble visualizing this. I mean, since you're making two different kinds of points, one is whether the claim covers situations in which to complete the cut you've come in for more than one side. And the other is this business about what a total or a partial resection is. And suppose for a minute we just, what we hold as a given that at least claim 35 here in the Warrion clause requires the cutting to be done just from the medial side. What constitutes a resection that goes into the lateral side that isn't going all the way across. Because remember, you're not going to get the cut to essentially if you go in across the midline and you create a slit into the lateral side now. Coming in from the video, coming into the, you cross the midline, you go into the lateral and you now get this slit in order for that portion to be a resection, you're going to have to at least remove bone above it. Correct. And that we can't do from the side. That's correct. So why doesn't this necessarily or reasonably necessarily imply that cutting a lateral side where a resection is occurring on that on that lateral side as well as the medial side, include has to go all the way across. Because there's language in the claim that there's at least one resect at surface. Let's assume with me for this purpose that until you get to the Warrion clause, the language of the claim is completely clear. That you can use two different sides, but then not on the Warrion clause. And I'm trying to, and I'm just trying to focus on this partial versus. Yes, but you're on a very good point because when you look at the claim language in the Warrion clause, it's not claiming a resection. It's claiming of cutting. It's exactly your honors point. It says using the tibial cut got further includes cutting a lateral side. So your honors notching into a bone is what that that would be covered by that language. It's not a resection of the lateral side. I could simply cut into that. But you've got to cut into it coming from the medial side. Not necessarily in the convoluted and contorted way in which this claim is written. It is describing guiding the cutting tool further includes. And it doesn't place limitations on the orientation in which the cutting is being. How do you guide it from the medial side to cut the lateral side if you're not going all the way across? You can guide it from any place that is claimed in that structure. And if you look at the claim, the claim says a portion is on the anterior side. The cutting guide is on the anterior side. So if you're using the cutting guide which is on the anterior side to cut into the lateral side, you can cut from the anterior side. So the claim has no requirement from the Warrion clause that you're cutting from medial to lateral side. It says you are using the cutting guide which has an anterior portion and admittedly some portion on the medial side. But that actually begs the question about what is the claim also include. When you in the Warrion clause use the language generally medially that does not preclude partially laterally. So the claim can be on all three sides. You can have a generally medially most of it on the medial side. You have to have a partial a portion on the anterior and by saying generally as opposed to only the claim allows a lateral portion to be present. And therefore when you cut into the lateral side, you can cut from any of those three claimed guide positions. So that creates this morass that the board had to. I think that we need to we're four minutes over all of your time. Yes, you're right. So we need to move on to Mr. Peterson, I'll restore two minutes of rebuttal time. Thank you, Your Honor. Mr. Peterson. Thank you, Your Honor. I'm not going to focus on obviously anything so please the call I'd like to address your question particularly. Judge more about regulation regulation specifically in one five three zero. J says that no amendment may be proposed for entry. This is an amendment that has already been proposed after the pattern has been inspired. And so what the office should do in our opinion as we took a look at it and how that the claim is expired. We made this argument in section six brief that this was going to be an issue if the claim inspired before your decision was rendered. Now it has. Now we are in Markman Phillips construction. We know that we cannot enter those amendments. So what will the patent office do on remand? I'm sorry, just I just I mean to be clear that the next sentence more over more over no amendment other than the cancellation of claims will be incorporated into the patent. And by a certificate issued after the expiration of the patent certificate hasn't issued yet. That's a future event. It's now right any certificate would have to be after the expiration. So doesn't that say no amendment will be no it does not if you go to MPEP 2682. Roman one sub a they say if you had an independent claim and a dependent claim both rejected. And then the board confirms the rejection of the independent. This only goes this that argument only goes to what we've been calling the unamended claims. Okay, that argument says nothing about the ones that only go to MPEP 2687. Roman three sub D. And that one says if it expires you go back to the unamended version. Right. Well that that's what I said before so so for the independent unamended. For the so for the amended claims right now they're going to go back. And and we say go back you we have to vacate the allowance because no you do not have to vacate the allowance because the procedures that the office has allow the examiner in MPEP 2682. 1 a to rewrite the dependent claim with the amendments to the independent claim gone to rewrite that dependent claim in independent. That's not the amended claims. We're talking about the amended claims. So even those claims that got amended you take those amendments out because they were allowed based on the nature of the limitations in the dependency. No, no no no. No, no, no, no. And based on the amendments based on the word only and based on the addition. No, no, no, no, no. The board's decision is very clear. Let me be clear. Okay. Examiner rejected your examiner rejected the claims twice. Twice. Basic and final goes up on appeal to the board. Mm-hmm. You've got these amendments board reverses now on the dependent claims. On the claims that were amended that are on appeal to us that I refer to as amended. Maybe it'll help you if I tell you which claim numbers. That would be excellent. Thank you. I don't know. We're speaking of upstate claims. I will call the amended claims 31 33 39 to 40 45 47 53 to 54. Yes. On those claims. Those are the ones that the board reversed again on the request of rehearing. Yes. And on those claims you added language like only language and the single language and some of those. Yes. That language would not be in the claims as rewritten by the examiner in which is why the only allowance was to these amended claims. The only allowance was to the amended version. The board did not consider much less decide anything with regard to the claims before the amendments, which still stand rejected by the examiner and not considered by the board. So I don't see how there's anything I can do but to vacate your allowance. Well, here's the issue why I must respectfully disagree with you. Well, you don't want it to be so. No, I have to disagree with you. We are now in Markman versus Phillips. From the start of this reexample, the patent owner has continuously argued there is no need for those amendments. They were not substance. So you would like me to decide in the first instance the board did not decide whether your original claims as not amended are allowable. So you're going to ask me in the first instance to decide whether I should overturn the examiner's rejection, which is the only thing that's ever happened of those original claims absent the amendments you added. You would like me to do that in the first instance? That is really not a good process to get started. That's not a good point. Well, this is why Senator Leahy was right when he said that these interparty reexample seizures were entirely inefficient and ineffective. Those amendments were made in 2011, Your Honor. You could have appealed the originally filed claims to the board. You didn't. You appealed on the argument because in 2011, you only appealed your amended claims. So you never even gave the board a chance, much less asked them to consider the patent ability of the originally filed claims. Originally issued claims. Because we did not think it was going to take five years to get to this point here. And so we assume. We assume. So because this is an important thing to understand, we assume when we made those amendments in 2011, we never have an opportunity to argue the original claims under Markman Phillips. Right. Maybe that was a fair assumption at the time. But that's not where we are now. I know it's not where we are. Putting aside the fact that this may have been burdensome on the patent owner, we have limitations on our authority. We can't go back and construe claims that the board has never passed on. But they have construed the dependent claims. And that's what I'd like to give to because this is a single sided half with cutting guide claim. So now we might have to move to what I will call the unamended claims, which are simply dependent claims rewritten in independent forms. Yes. So let's take claims 35 to 38, or even 52. The same thing I asked the other side. If they're technically amended, if they are amended under the MP, you can. I know you guys call them unamended, but why wouldn't those also be subject to the rule that says they can't issue? Well, the requester has admitted that they're unamended and their brief. So, you know, I think that they are effectively unamended, but the MPP provisions allow the examiner when you're faced with the situation of an independent projective claim. And that's why it's an unamended claim. So why? So let's focus on those. Talk about those and say, well, we're at the partial reception argument. There is a very specific passage in the board's decision, which addresses that particularity. There is a very specific passage in the board's decision, which addresses that with particularity. The original or the reherent? The rehering decision, page 6, A26. The board is specifically addressing the requester's argument about partial reception. What pay to the appendix for you on, I'm sorry. A26. Thank you. When taking the claims at issue in context, it is not merely the fact that the surgeon's blade has the midline of the bone, but rather, as your honor said, but that the entire reception is being done using a guide on one side to complete the reception. Right. I know that the board expressly said that question is, is it wrong? No. That is right. So, are the reasons why the claim language, why that is the best interpretation? And I gather, the other side's textual point is that the wherein clause says you have to cut a lateral side. That language doesn't say you have to make a resection on the lateral side. But if you were to rewrite the claim, the immediately preceding step is implanting the implants by positioning a frimoral implant on the at least one fixation surface. You can't do that with a notch. I can't do that with a notch. And that's our argument, your honor. That's why it's very reasonable to say it was completed so that you had a fixation surface. You say we're in Phillips. Yes. I have to say that I've never been more frustrated by the absence of citations to the written description. You know, nobody cites to be anything in the written description except your figure 18. So, what are your best textual arguments as it relates to the written description? In this situation, the written description, you know, admittedly, there was a preferred embodiment and a secondary embodiment, the preferred embodiment, the milling embodiment. Most of the description is about that. The description and specification, the figure 18, occurs at column 19 and 20 of the 541 pattern. But it references other aspects. And I'm going to lead you to one of those different aspects. If you look at figure 4, you will see a side of a cutting guide, that's milling guide, that the single-sided version says to be done. And what you will see there is that there is essentially five surfaces on that side. There is a flat surface at the top that says that this is the distal surface. There are two angled surfaces at the side, the chamfer surfaces, and then there's a posterior and anterior surface. When we said in the claim at least one resected surface, what we were providing for was that the guide could do more than just a flat surface. You could create these two angled surfaces on the end of the bone, and then the two up and down surfaces on the end of the bone that the implant sits on. So, we did not want to say our guide is only creating the single flat surface on the very distal end of the bone. You could have a guide and figure 4 is an example where you also created the angled surfaces and you created the up and down surfaces. That would be at least one resected surface. In that case, there would be five resected surfaces. The claim was written to allow for that. So, they're taking the at least one resected surface language and reading it out of context to support that argument that somehow this is ambiguous. There's the distal resected surface that is created completely by positioning the guide on the inside and cutting all the way across to the opposite side compartment or portion. The other half of the knee. That's why we call this a single half guide, half width cutting. That's the best way to kind of see what's going on here. The reason why this is important to your honors is up until Mr. Haines's invention. The incision to do a totally arthroplasty was almost a foot. It went straight midline. You splaid the knee open in order to access a full whiff gap, all three of the prior art references that the requester did are the exact same as burp. They are full with guides. To do a full with guide, you needed to make that big incision. For the L-shaped guide that's shown in Figure 18, I can make a three to four in incision on the inside of the knee, access it from here and the hospital stagos from a week to two days. That's why this is a big deal, your honors. My client invented this in the middle of the 90s long before this ever became what is currently today, the procedure that you would get if you went into the hospital. You're going to get an in-em-elianvasive, totally replacement, using immediately accessed cut for the most part. That's where we're at. So your view is that these unamended claims, like claim 35, is limited to a single cut which goes all the way across the entire length. And that's what the board's decision is. So you'll never assert this claim, for example, against somebody that cuts across the midline, immediately, and then follows in with a cut laterally from the other side. You use a different guide, which is another part of the board's decision. You will assert that against people? No, no, we were not. If they use two guides, two arms on the guides. First you cut this side using this arm, then you pull that away and then you throw the other one in and you cut using, no, that's the prior arc. That's not what this claim covers. No, but you're arguing here about claim construction. So the claim construction that you're embracing would also preclude finishing the cut freehand. No, it would not, because the argument that the board made in their decision specifically references that when they said complete what they meant was, they meant finishing the guide with a different cutting guide. So, Page 6 again, 826. Using a single guide without the need to complete the reception by using a different cutting guide. We think the claims that issue sufficient, I'm continuing from where you just left off, convey that in each instance the resection is completed by using a single cut guide from one side to the other. In other words, the Patonone's claim. Can't do it by chance. Describe a complete resection. Well, that was not what we interpreted the board's decision to mean. And certainly if you go to the other claims, in this case admittedly, the amended claims. There is an ability to what you're doing is cutting across from one side to the other so that you can do this immediately placed guide that's less invasive, doesn't interfere with the Pateloligman, which there are some other sections in the spec that talk about the Pateloligman. They're cited in our briefs, you're right. That's where this invention is at. But if you ask us to affirm the board's decision, then we're affirming that interpretation of the claims. If you read it in its entirety, that entire paragraph about the complete resection, it's I'm completing the resection. I'm not doing the partial resection by cutting from one side to the other side. If there was a nub that wasn't there, that would not be out of the skill of a person, the ordinary skill in the art to finish that freehand because you're going to use the rest of the major surface that you created to guide the blade to finish that up. In fact, that's what happens in practices. You may get a little bit of nub, some rough edges, something else in there and they will go in and they'll probably finish it up freehand. So we would not be accepting a construction that we feel is limited in a way that requires an absolute complete resection where you can never do freehand to finish up the rough edges. But that would all be without a guide. Now I'm going to speak very imprecisely here that is the finishing up would be after for the tibia, the North portion is gone. Yes. You would have created the resected surface and then you're going to smooth out the edges with a freehand. So there will be a full resection by the guide alone, by the one guide alone cutting from one side to the other. It's going to create a resected surface. If there ends up being some still edge pieces left here because the surgeon didn't want to get too close to an edge over there with the tip of the saw, they'll go in and they'll be that perhaps freehand to be able to do that. But the resected surface on which the implant is positioned is created entirely from a single half with guide on the opposite side. So just to be clear, the whole bone is cut through, the whole thing is taken out. You're just saying there might be some splinters, some nubs, some edges that stick up which they're going to go in and sand away basically. Yeah. Yeah. And so we want to make sure that that's very clear that when the board was talking about complete because you know, where Custer is correct, that first came up and the question we're hearing. But I want to make sure that I understand your argument, though, which is the conversation we're having with Judge Toronto. So we all agree that this construction limits you to a medial cut that traverses the entire bone. There will be no cutting from the other side that is necessary to finish the job of traversing that entire bone. You're saying there may be some nubs or little sticking up points, but that the whole thing is already resected such that the bone can be removed. Yes. There might be some additional removal, but that's you removed a bone to create the resected surface on to which the implant by the single cut coming from one side to the other. Yes. That's our intended construction. That is what we feel the board upheld in uphelding the dependent claims under BRI. Of course. There's no substantial evidence on the anticipation of stuff before you sit down. Can you return to where we started about about claims 31, 33, the so-called amended. Let me see if I can just suppose I thought that the changes in wording that you made were in fact substantive changes and that those changes, the ones that the board approved cannot now be entered. Suppose I also thought that under some of the MPEP stuff that we were talking about, the unchanged versions of those claims, which the examiner rejected, which led to your changes, might now be considered by the board. So the original unchanged versions of 31, 33, etc. Do we need a do you care about that? B do we need to take some action or will that automatically happen because now that December 24th has come and gone under the boards MPEP and regulation. It is now the unchanged versions of those claims that are back in play. Do we need to do something? Do you want us to do something, etc.? I would like you to affirm the board. I think that when it comes back to the office, that one wasn't one of them. That's not an option. So do we dismiss that portion of the appeal or do we vacate the allowance to the extent that the appeal relates to that portion or what or another option if there's another option, assuming affirming the board. The dependent claims are allowed as separate claims. We're talking about the amended claims. So that you understand and appreciate our arguments from the very beginning, we said those amendments were not some changes. Some accepting your hypothetical. Yes. Okay. That they are substantive changes. They should not be entered and then you would go to MPEP 2687. Who would go? The Examiner would. Without our remanding or something or that's what the examiner will do. So we could just dismiss that portion of the appeal. No, because the allowance, you have to vacate the allowance as it pertains to those claims. Well, it will never issue. Are you positive with PTO? We'll do that. I think we need to vacate the allowance. Thanks for those portions. Well, we would say your honors that, you know, if you're thinking that these claims are not allowed them that they could allowed, we should be given an opportunity then to go back and argue for the construction that we said was the right construction all along. Because we've only ever said these claims cover that and the reason is the art that was overcome that you would consider an American construction is burnt. It's that two-sided claim. It looks exactly the same. Thank you, Mr. Peter. Thank you. Appreciate your patience, John. Mr. Failure. I'll try to be brief. I've got five points. You have two minutes. I know. I'm going to do fast. I guess. Judge O'Malley, your question about whether the dependent claim would be allowed amendment. The statute section J, 1.53, J says, no amendment may enlarge the scope of the claims. So that amendment that was done didn't enlarge the scope of the claims. So the non-amended claims aren't changed in their scope. And I think that's the purpose of that statute. Number two, Judge Toronto, your question about partial resection. And the answer was, oh, well, we have this fixation surface that we need to put things on. If you read the claim language, it's actually you're not putting a fixation surface. It's got to be adjacent to at least one resected surface of the tibia. So the same surface that you only have one of is where this device is being fit on. The cut surface in the wear-in clause is a separate cut and is not part of the process that's in that claim. Third point. I don't know what their claim construction is now. I know what they said in their briefs. In their briefs, the red brief of page four, Pat Oener said that the allowed claims to be used to cut into the other side. That's the position they've maintained in the briefing. Now we're getting that's a complete resection. That's not the argument they made in this appeal. They changed their position at this hearing. The board's construction, we talked a little bit about that. It's very clear, I think when you read that page 26 in the record, the board said this is a complete resection. That's what we have to think. That's what you've got to grapple with. That's what your appeal, that's what your decision needs to be there. Then the two last points. Now, claim 10 in Samuelson has not been spoken about them in their brief. We've briefed it in our brief. Claim 10 in Samuelson says, you're laterally extending this member next to the bone. You're putting the cutting-out next to the bone on the lateral side. You're inserting the blade and you're resecting the bone. A complete resection is being disclosed in Samuelson. In that claim, there's none of this prime number of stuff. It's a claim that says, put it on the side, stick the blade through it, and resect the bone. So if you get to the point where this is complete resection as your construction, you're toast. You cannot get around the Samuelson issue. Final point, you're not a judge, you're not a toast. Question about what do we do with this appeal? You should give guidance to the patent office, I think, that there has been no appeal from the denial of the original claims as unamended. The original claims were in the process. They chose not to appeal them. We can't send it back for a redo. This case has been going on for six years. It has to end sometime. And I think it would be a travesty to send it back and let us start over again for claims. That's not our decision to make. Well, I understand that, but you do have a pellet jurisdiction and you can state on the record that there was no appeal taken from the amended claim, from the unamended claims, claim 31 as unamended. And I don't think the board should allow an additional process. We may have to deal with that below, but certainly they've made an argument about something they didn't appeal about. They made that in their red brief, which was wrong. I mean, I think you can comment on what they said in the red brief. They made a position in all well since it gets after December 24th. We'll just go back to the original claims and let's talk about the original claims. That's not the way the process is supposed to work. If they'd one of the original claims decided they should have included them in the appeal. They didn't, and they've lost that right in our position, in our view at least. Thank you, Your Honors. I have no further. Thank you both. Council, the case is taken under submission