Legal Case Summary

Good morning. We have four argued cases today and for one of the cases we have a different panel and for the other cases. So what we're going to do is to hear that one case first, which is number 2012, 1343 Smith and nephew versus R. Reheat. I guess that's going to need some rearrangement here. And I'm going to join you briefly and come back with your different case. Right. May I please the court? Morning, you're on. In this appeal from the patent office, we start off with one undisputed fact that one would be motivated to have holes with threads to improve stability in the construct that is the Platon of screws, the board held that was obvious and that is not going to appeal. Therefore, using threaded and unthreaded holes is obvious. The board held, however, that one would not be motivated to make all of the holes threaded. And the threading of all the holes in the head portion is the sole basis for patentability. Can I ask you a question that doesn't pertain directly to the legal issue here, but as a background matter may be helpful. I'm having a hard time understanding the practical importance of this. And let me just start to cut to the chase here on this. Is it the case that in your view, you could avoid any problem at least of future infringement, but just drilling a hole, unthreaded in the head portion of your device, which otherwise has all threaded holes? That sounds like it just turns into cobalt. Correct. Now, why are we having this huge fight? I mean, is it that you have back items that are subject to a claim of infringement? The part is our in ongoing litigation and litigation and the date. That explains it. Exactly. Exactly. It does emphasize the trivality of what we're talking about here as far as the invention itself, but it does. In our view, the claims were written specifically for the purposes of ongoing litigation clarified

. What would I think there are some issues of claim construction here, which could usefully be addressed at the outset. The board opinion leads us though. It's reading a compression requirement into the claims, which don't appear there on the face of the claims. Is that an accurate statement of a problem here? That is one of many. In fact, I believe, and as in any patent case, we have to have an understanding of what the claim's invention is before we can proceed. We have major differences in what the claim's invention is. I believe they're reading in functionality requirements such as compression. I believe they're reading in many things into the claim that are just simply not there. And the easiest way to know that I can answer your question so easily, Judge Bryson, is claim 24 was invalid. It is invalid. The claim 32 is the dependent claim, which somehow imparts patentability. So the sole issue was really whether claim 32 renders the claim patentable. The sole thing that claim 232 ads is that the head holes are all partially threaded, only partially threaded. And the entire argument proceeds that somehow one of the skill in the art wouldn't want to think about making all the holes partially threaded because one of ordinary skill in the art would think it would be inoperable. Well, that's exactly what the claim's invention is. Apparently, the apolese feel that they can claim what they think those of skill in the art would find inoperable. Well, that's obviously a circular argument. The literal argument, I guess, is the compression at the hip portion is a necessary feature to make this work, right? That is definitely their position. Yes. What's your response to that? Well, one as a it's not always necessary, but even assuming it's necessary, why can't one get compression with some thread in the hole? That seems to come down to. They are assuming. What do you mean it's not always necessary? Well, our declarant says there are procedures where you don't need to have compression and still use the plate

. And another thing about the claim's invention judgment. Well, the list plate works. Well, when you say this plate, the list, list plate, they say. The secondary reference works without compression. That is correct. The secondary reference was to show that the idea of conical holes with threads is old. There's nothing special about conical. What what I was trying to say is that claim the back of the claim's invention, who says the claim's invention is limited to a conjular budget plate. The claim's invention is to any plate for it says a long bone. What they're doing is they're reading in other characteristics as necessary such as compression, such as a conjular budget plate. As if the claim's invention is much more narrow than it really is, the claim's invention is broad and the only point the patent ability is all the holes in the head portion aren't partially threaded. They're brief sometimes says fully threaded, sometimes their brief says threaded as if it's fully threaded, but simply partially threaded. And what we did is say, no, one of skill in the art would not shy away from trying to gain compression having one or more threads because that's exactly what the prior art did. And in fact, the patent itself explains that it was known to gain compression with some thread. And that's the 686. Yeah, it says it says the prior art 686 patent disclosed the partially threaded holes either allow either non-locking or locking screws to be used. Correct. And then they criticize the 686 in the patent because they say, but those are only partially threaded. And they claim partially threaded. This is a classic example of writing the claims regardless of the prior art. The patent itself explains the judge Wallach correctly noted that it was well known to use compression screws in partially threaded holes. You would expect your team and his admission about prior art

. Oh, absolutely. It's definitely a mission. And the board and the examiner had a little bit of disagreement on the degree to which that admission could be treated as an admission. Yes. Well, I guess there's a problem here in one sense if we were to say that the claims do include a compression requirement in the head portion. Then if I understand correctly, the 686 would not be new prior art and couldn't and wasn't used as a ground for rejection. Am I correct about that? You're raising another key point of the appeal. The board felt that we were using the 686 and the board says our first error. This is an error by the board, by the way. Firstly, the exact one was not. Specifically my question, which is let's assume hypothetically and I know you dispute this that there is a compression requirement in the claims. And that your answer to that is the 686 and these other two pieces of prior art. If I understand correctly, the 686 and these other pieces of prior art not being new prior art, or at least the 686 is not new prior can't be used as a ground of rejection. Am I correct about that? Yes. As long as you appreciate that when you say ground for rejection, you mean as far as modifying the device to come up with the claim convention. That is correct. However, we did not use and this is the misunderstanding with the board and you can read it in the hearing. We were using 686 and the DRP and the LRP to respond to the argument of inoperability. We weren't using those references to modify the device. We were saying that one would not shy away from threats simply because of a fear of losing compression, which is the patent offices ultimate holding. And that is not true. That is contrary to the patent has contrary to the 686

. So there's a difference and we cited the case law from this court, which they weren't unable to really respond to. It is okay to go beyond the references if you are responding or showing simply the motivation to combine the primary and secondary references. And that's what we did. There was no motivation to combine because the combination without locking without standard screws and the head portion wouldn't achieve compression. That's their argument, but in order to do that, in order to say that, they make many procedural arguments for you to disregard and they actually ask you to disregard the 686, the LRP, the DRP. They need to have you disregard the references or to pretend we're relying on those references to modify the combination. No, we're relying on those references to rebut the argument of inoperability. Inoperability, they say it would not gain compression, but they somehow claim it and their device had it, which is another whole problem. So what do they do? They have to redefine the invention. They redefine the invention by saying our invention is a specialized screw, which allows us to gain compression. Well, the screw isn't in the claim. That's another one of the claim construction problems that they're having. They're redefining the invention to act as if the invention includes a specialized screw. Well, it's not even a disclosure of a specialized screw. That's another claim construction. So in order to respond to the 686, the very sentence that you read, Judd Wallet, they have to redefine the invention to dig deep to somehow distinguish their invention from the prior references, but to do so, they complete your story to claim the invention and the reason for patentability, which is most succinctly shown and dependent claim 32. Now, the biggest problem for you as you acknowledge is the defender review. It's the board's substantial evidence review of its finding here. Setting aside your legal arguments, and I understand you make separate arguments that they were legal error, but when you get right down to the question of whether a person of ordinary school would have understood that you could use a stand-up. The standard screw in a threaded hole, that's a factual question. It seems to me, into which we owe them substantial evidence difference. Now, the principal authority on which census relies is the term declaration

. And in particular, I guess it's 84, 43, and 44, or where a term is talking about this question. He says, well, if you put a standard screw, besides the fact that a standard screw will pop up, we're not at too high, but if you put that in a threaded hole, you will have distortion of the threads and break-inch, which will create pieces of metal presumably that will be injurious to the patient. You're a response for that. Well, the few responses, that one. Turin doesn't really come head-to-head with Dr. Marsh. He pretends that you're using the precise hole of Hoth. In other words, it's not only conical, but it is also threaded all the way up to the top. Yes, I assume. You're saying if it's partially threaded, then Turin goes away because his concern about the screw head slapping into the threads and discerning the threads and ripping them off goes away. That's one of my response. That's correct. That's one response. But did it ever occur how since these claims invention overcame that problem? There's nothing in the patent overcoming that problem. They claim partial or false. So their claim invention claims the very device that Turin says is unoperable or as problems. That's another. He's always contrary to the patent and contrary to the claim. He's also completely unaware of the KSR standard. He assumes no creativity, no imagination, no help from one of skill in the art, and completely ignores that all the references, do you notice all the references are within a 12-month period and then a year later is the filing? It's a natural progression to simply go from coval, which was in 1997. The other references are 97, 97, 98. They file in 99

. It's a natural progression to see if you can make all the holes the same, to give the doctor the option of deciding which screw we put in which hole. I'd like to reserve with a little time I have left for my reward. Thank you. Thank you, Mr. Ryan. Mr. Bailey? Good morning, may I please the court. I'm here today with the co-counsel in this hour representing the patent office. It's a review that the claims here include a compression requirement. The claims cover some bone plates that can use compression and the claims might also encompass certain other environments that do not. Please answer the question. Do the claims require compression? They do not. So what's the relevance of compression just to refute the notions that there's a motivation to combine here because it would be inoperable? Yes, Your Honor. Let me focus this court because I think the whole argument that you just heard is not focused to what this appeal relates to. This appeal is from an inner parties re-example. Under this court's ruling in Belkin, the question presented is the substantial new question that was raised under 35 USC Section 311. That is the requesters request and adopted by the patent office under Section 312. If you go back and look at the requesters request in this case, it is limited to the hospital they use with the condulatory. So your contentions they can't use the 686 and these two other pieces of prior art because they weren't part of the request. They cannot use it as a secondary reference. They can use it to point as a motivation of one might want to use it. Because your own view, that's what they're using it for

. Because you agree that compression isn't the claim requirement and you're relying on compression to refute motivation and they're using the 686 to respond to that. Exactly. And the board looked at that. There's nothing wrong with it. In fact, the board looked at it and analyzed it and said, okay, if we take the 686 and combine it with HOS and combine it with the condulatory buttress plate for the primary references, would one of the board and the ordinary skill in the art have wanted to use a standard screw with the conical fully threaded hole of HOS. And the board looked at turns declaration, paragraph 43 and 44, and said no. Factually, no. One of ordinary skill in the art would not do that. Why? Because the screw head sits too high above the plate causing patients discomfort because these plates sit down upon the outer, the latter part of the knee and that rubs up against the illiotibial band. Well, why? Because the screw head needs to sit above the level of the plate if there's the counter sunk portion of the hole. I mean, that's very common. It occurs every day in carpentry. There's two arguments there, you know, one, it's not the substantial new question of patentability that was before the patent office. The patent office raised this question on the HOS reference only. And if I can, if I can, if I can, you can use that. Right. Well, in the second part, the second part is that they don't tell us how they're going to redesign this hole. This plate is not being used for the mandible or the wrist, which is the locking reconstruction plate and the distal raised plate. There you can use a hole that has some threading on the bottom and counter sunk at the top. This is for condor buttress plates used at the distal femur. The distal femur is the largest bone in the body. It can carry it's the most weight

. There's nothing in the record that says you can use a screw hole that has partial threaded and a counter stock. But that's your claim. You're naming partially threaded screw holes. No, I'm not sure how you can say that partially threaded screw holes are operated. We aren't saying they're not operative. Well, we're saying that partially threaded screw hole can also cover the patent drafter. The patent T, the figure forward, chose his preferred screw hole. It's fully conical, fully threaded. But the patent drafter, when he drafted it, said you can include, you can be partially threaded. Now, why would a patent attorney do that? Patent attorney does that because he wants to make sure no one gets around him on Dr. Noble Quillen by designing around by limiting, taking to see one threading out of the top or having a fully threaded screw hole. You know what you're saying. Could you try again? I mean, I just don't understand it. I mean, with, there's no compression requirement here. Correct. So, the idea is that Hoss shows the use of at least partially threaded holes in the head portion. What you're saying now that wouldn't provide, there wouldn't be a motivation to combine Hoss with the other references because it doesn't achieve compression because it only allows locking screws. Right. I agree with you. Except you made a sense of Hoss could be partially threaded. Hoss has fully threaded. Well, so what's the point here that because your whole argument rests on the difference between fully threaded and partially threaded? Absolutely

. It's a key issue for the distal radius plates. There is nothing in the record to suggest that with respect to the distal radius, I mean the conjure butchers plates use for the distal femur that you could use a hole that is not fully threaded with a screw that is fully threaded. Also, what about the standards? What about the, and the partially threaded, oh, the cancel. Stop. When judges are talking to you, you stop. Sorry. That's right. Can you go first? Well, I just, I mean, I understand your procedural argument, but it sounds to me like you're, you're just talking right into the face of the, not only the disclosure of 686, but also your own patents description of 686. As being partially threaded, holds. I mean, I, I guess, you know, if technically you survive this, I can't imagine what you're going to say in the infringement proceedings when somebody raises the 686, which obviously will be done. Sure. What's your answer? If you look at the background of the patent account, two word introduces the 686 patent. It says it's known in the prior art to use a hole that has partial threading and also is partially unthreaded to use it for either locking or non locking. But it says the partially threaded holes allow either not because the partially threaded holes are only partially thread because the holes are only partially threaded. The locking screws may not maintain the fixed angular relationship under physiological loads. So those plates that use those types of holes were not under physiological loads. The conular buttress plates that they're using for their primary references are all under psychological load. But your claim covers the entire range of partially threaded holes, right? This whole argument, your honor, goes back to what the prior art suggests prior to date that we filed our patent application. Their substantial new question of patentability is combining the primary references with HOS. And therefore, and that we've shown that that is an improper combination. Let me ask you another question. Well, go ahead, go ahead

. You were in the middle of your point. I'll ask you the same thing. Okay. Our argument is that if you go back and look at the request for re-examination, this entire case is based on one combination. It's the primary references with the HOS hole, which is fully conical and fully threaded. The board analyzed that issue. That's what the board analyzed. And the board said you would not make that combination because you need compression in the head of that plate for it to work. Okay. Let me see if I understand what it is exactly how it is that you solved the problem that the 686 did not solve. Right. In your brief, you make an illusion to a specialized screw. Is that your solution to the problem that the 686 did not solve? Correct. Well, but you don't have a claim to a specialized screw. If a specialized screw is the key to this invention that it seems to me at minimum, you have a best mode problem. Where is the screw? It's nowhere in the patent that I can see. Certainly not in the claims. Right. Where is the specialized screw described? The specialized screw is described in figure 1. And why is it called the where is it described in the claims? Where does the claim require a specialized screw? The claim does not. I mean, you're not saying that figure 1 is there's something that is completely new about this screw, right? What we are saying in honor is that prior to the date of synthase invention here, no one had put together a condolabutters plate that had all the head holes threaded. No one had done it because there was no way prior to the date of our invention to get compression and use that condolabutters plate properly. Therefore, their combination, if you look at the prior art and you try to get to where we were when we fought our patent application, you can't get there. And therefore their combination. Where is your answer on the specialized screw though? It is our position that once we were the first ones to develop a way to use a plate that was had all the heads and all the holes in the head. We were allowed to claim that plate with or without the screws. So you're saying that the screw doesn't matter? The screw makes it possible for that plate to have functionality and be useful to those ordinary skill in the art. So again, it's a motivation question. You're saying there's no motivation without the specialized screw without compression, but then it seems to me that you can use the 686 in this prior art to take the other side of the motivation issue and to say yes there's a motivation and it's provided by these other references. I have two answers that you're on one is procedural. The 686 is not a secondary reference. Well, that doesn't make any difference if we're talking about motivation than rather than what's in the claim itself. Okay, then I'd ask your honor, what is the motivation to do what? No, this is your argument. But the motivation would be to use what they said the motivation is use a standard screw with the hole disclosed in half and we have shown that that wouldn't be a solution. There was no motivation to use a partially threaded hole. Right? The issue of whether you would use a partially threaded hole is not part of this read exam. It's not the substantial new question upon which is for exam and base. Does your specialized screw and figure one work with a partially threaded hole or a fully threaded hole? Could you repeat the question? The specialized screw that you identified which is the screw that appears in figure one is that designed to work with a fully threaded hole or a partially threaded hole. It could work with the design of work with a fully threaded hole. It could work with a partially threaded hole if you define a partially threaded hole as having threads say 95% up the depth of the hole or if you had threads 95% around. If it is designed to work with a fully threaded hole, how did you solve what is it about this screw that solves the problem that Dr. Turn pointed out with using a standard screw head with a fully threaded hole? The standard screw used with a fully threaded hole of POS which is a secondary reference would sit to the screw head sitting on the side. I'm talking about his later, he says that at one point. Later he says the problem is if you have a standard screw that isn't threaded and you press it in, you compress it into the threads, you're going to distort the threads and you're going to have chipping

. Therefore, their combination, if you look at the prior art and you try to get to where we were when we fought our patent application, you can't get there. And therefore their combination. Where is your answer on the specialized screw though? It is our position that once we were the first ones to develop a way to use a plate that was had all the heads and all the holes in the head. We were allowed to claim that plate with or without the screws. So you're saying that the screw doesn't matter? The screw makes it possible for that plate to have functionality and be useful to those ordinary skill in the art. So again, it's a motivation question. You're saying there's no motivation without the specialized screw without compression, but then it seems to me that you can use the 686 in this prior art to take the other side of the motivation issue and to say yes there's a motivation and it's provided by these other references. I have two answers that you're on one is procedural. The 686 is not a secondary reference. Well, that doesn't make any difference if we're talking about motivation than rather than what's in the claim itself. Okay, then I'd ask your honor, what is the motivation to do what? No, this is your argument. But the motivation would be to use what they said the motivation is use a standard screw with the hole disclosed in half and we have shown that that wouldn't be a solution. There was no motivation to use a partially threaded hole. Right? The issue of whether you would use a partially threaded hole is not part of this read exam. It's not the substantial new question upon which is for exam and base. Does your specialized screw and figure one work with a partially threaded hole or a fully threaded hole? Could you repeat the question? The specialized screw that you identified which is the screw that appears in figure one is that designed to work with a fully threaded hole or a partially threaded hole. It could work with the design of work with a fully threaded hole. It could work with a partially threaded hole if you define a partially threaded hole as having threads say 95% up the depth of the hole or if you had threads 95% around. If it is designed to work with a fully threaded hole, how did you solve what is it about this screw that solves the problem that Dr. Turn pointed out with using a standard screw head with a fully threaded hole? The standard screw used with a fully threaded hole of POS which is a secondary reference would sit to the screw head sitting on the side. I'm talking about his later, he says that at one point. Later he says the problem is if you have a standard screw that isn't threaded and you press it in, you compress it into the threads, you're going to distort the threads and you're going to have chipping. That's basically the point. How did you solve the distortion and chipping problems with this specialized? What is it about this screw that solves that problem with a fully threaded head? The screw head is chronically shaped to match the conical shape of the hole. But wouldn't that mean that it is engaging the threads without itself having threads? It comes down and sits in against the hole but because the conical shape is the same as the screw hole and the threads in there, it does not disrupt those screws. It does not push them aside and misthread them as you would with a standard screw. If you have a conical head and you're going into a conical hole that is threaded and you tighten it down nice and tight to really give it a lot of torque, you're going to, unless you've got the hardest metal on earth, you're going to be distorting the metal on those threads, particularly the threads are very fine. That strikes me as a common sense. Now you're on a disagree. It's not the way these plates are used in the industry and the metals are designed, such that when they are chronically threaded in that regard and the conical threading in the hole, they don't have that issue. But the primary problem that Dr. Turn noted in that regard was that the standards screw sits too high above the plate and that is what the board agrees and that was the factual finding of the board. Okay, thank you Mr. Vailer. Is this sour? Am I pronouncing that correctly? Sour, you're on. Ma'am, please support. From the patent office, it's perfect. You've heard Mr. Bailey make some concessions about the scope of these claims. Did you disagree with anything that he said, such as for example, that there's no compression requirement in the claims? Well the board didn't make any type of finding about whether or not there's a compression requirement in the claims. Now, just to answer my question, do you disagree with anything he said about claim scope? I think from the patent office's view, we would say that compression is a part of, is the function of synthases and vendors? Is it a claim requirement? Well, our understanding from a case like in rate Anthony is that part of the obviousness analysis would be... Is it a claim requirement? We would think it is

. That's basically the point. How did you solve the distortion and chipping problems with this specialized? What is it about this screw that solves that problem with a fully threaded head? The screw head is chronically shaped to match the conical shape of the hole. But wouldn't that mean that it is engaging the threads without itself having threads? It comes down and sits in against the hole but because the conical shape is the same as the screw hole and the threads in there, it does not disrupt those screws. It does not push them aside and misthread them as you would with a standard screw. If you have a conical head and you're going into a conical hole that is threaded and you tighten it down nice and tight to really give it a lot of torque, you're going to, unless you've got the hardest metal on earth, you're going to be distorting the metal on those threads, particularly the threads are very fine. That strikes me as a common sense. Now you're on a disagree. It's not the way these plates are used in the industry and the metals are designed, such that when they are chronically threaded in that regard and the conical threading in the hole, they don't have that issue. But the primary problem that Dr. Turn noted in that regard was that the standards screw sits too high above the plate and that is what the board agrees and that was the factual finding of the board. Okay, thank you Mr. Vailer. Is this sour? Am I pronouncing that correctly? Sour, you're on. Ma'am, please support. From the patent office, it's perfect. You've heard Mr. Bailey make some concessions about the scope of these claims. Did you disagree with anything that he said, such as for example, that there's no compression requirement in the claims? Well the board didn't make any type of finding about whether or not there's a compression requirement in the claims. Now, just to answer my question, do you disagree with anything he said about claim scope? I think from the patent office's view, we would say that compression is a part of, is the function of synthases and vendors? Is it a claim requirement? Well, our understanding from a case like in rate Anthony is that part of the obviousness analysis would be... Is it a claim requirement? We would think it is. It is. So you disagree with Mr. Vailer. Yes. How do you deal then with the 744 specification of 686 saying partially threaded holes allow either non-locking or locking screws to be used in that in an admission? Well, their whole argument in the patent office's view relies on incorrect claim construction. It ignores the fact that what's happening here is you're taking this fully threaded conically tapered from top to bottom, holes of hot, and putting them onto a prior art consular butchers plate. And the holes in the prior art that the 744 patent is referring to, they're not conically shaped and fully threaded. All those are cylindrical holes with the countersunk top. So it doesn't even show that you would use a standard compression screw in a hot-suss hole. And the board found that as a matter of fact. As I was saying, the patent office, our view on this case is that it all comes down to the board's decision that a skilled artisan would not have taken all the holes of hot and put them onto a prior art consular butchers plate. The prior art consular butchers plate did require compression. So whether or not I mean- I don't get the compression into the client. I don't understand that claims don't say anything about using compression screws in the head portion. It doesn't say anything about compression. Where do you get that claim interpretation? From our point of view, we're dealing with the inner parties or examination. And I think Mr. Ray, that- I really get that interpretation of the claims. What's the justification for? Well, respectfully, Your Honor, I think that when we're looking at compression in the claim, it's sort of leading us down the wrong path. No, but stick with my question. You may want to argue this differently. What's the basis for finding compression requirement in the claims? Our argument is that when you look at in Ray Antony, it says, for an apparatus claim, part of the obvious analysis is- I mean, part of the analysis

. It is. So you disagree with Mr. Vailer. Yes. How do you deal then with the 744 specification of 686 saying partially threaded holes allow either non-locking or locking screws to be used in that in an admission? Well, their whole argument in the patent office's view relies on incorrect claim construction. It ignores the fact that what's happening here is you're taking this fully threaded conically tapered from top to bottom, holes of hot, and putting them onto a prior art consular butchers plate. And the holes in the prior art that the 744 patent is referring to, they're not conically shaped and fully threaded. All those are cylindrical holes with the countersunk top. So it doesn't even show that you would use a standard compression screw in a hot-suss hole. And the board found that as a matter of fact. As I was saying, the patent office, our view on this case is that it all comes down to the board's decision that a skilled artisan would not have taken all the holes of hot and put them onto a prior art consular butchers plate. The prior art consular butchers plate did require compression. So whether or not I mean- I don't get the compression into the client. I don't understand that claims don't say anything about using compression screws in the head portion. It doesn't say anything about compression. Where do you get that claim interpretation? From our point of view, we're dealing with the inner parties or examination. And I think Mr. Ray, that- I really get that interpretation of the claims. What's the justification for? Well, respectfully, Your Honor, I think that when we're looking at compression in the claim, it's sort of leading us down the wrong path. No, but stick with my question. You may want to argue this differently. What's the basis for finding compression requirement in the claims? Our argument is that when you look at in Ray Antony, it says, for an apparatus claim, part of the obvious analysis is- I mean, part of the analysis. Why is it part of the claim? Because you can look in the written description for an apparatus claim and determine what its function is. And that is part of- You read the function into the claim? I wouldn't go so far as to say that, but the fun is- The compression was a claim requirement. How is it a claim requirement? Your Honor, I- I was- The way this whole inner parties re-examination came about was, you know, under the statute, there has to be a substantial new question. And that's the thing- You're not addressing my question. It can't be a claim requirement, can't, because it's not in the claim. It may be relevant to the obvious analysis. It may be relevant to motivation, but it is not a claim requirement. Okay. I would- I would can see that at this point then. Now, the board said that removing the non-threaded holes altogether would not allow the modified buttress plates to be used in the matter of the purpose intended in- The two prior references, cobalt and the K982222 references. Without the use of the specialized screw, how can that be proved? Because that's exactly what the patent D claims to have achieved. Right. I mean, I take it because your brief is not rely on the specialized screw. No, I- If you do not think the specialized screw is part of this invention. No, it's not. Okay. Fine. So you depart- You depart company with your co-counsel on that. Right. I'm not sure- I'm not sure whether he thinks the screw is part of the claim. But the claim itself is- Okay, go ahead. The claim itself is to the bone plate

. Why is it part of the claim? Because you can look in the written description for an apparatus claim and determine what its function is. And that is part of- You read the function into the claim? I wouldn't go so far as to say that, but the fun is- The compression was a claim requirement. How is it a claim requirement? Your Honor, I- I was- The way this whole inner parties re-examination came about was, you know, under the statute, there has to be a substantial new question. And that's the thing- You're not addressing my question. It can't be a claim requirement, can't, because it's not in the claim. It may be relevant to the obvious analysis. It may be relevant to motivation, but it is not a claim requirement. Okay. I would- I would can see that at this point then. Now, the board said that removing the non-threaded holes altogether would not allow the modified buttress plates to be used in the matter of the purpose intended in- The two prior references, cobalt and the K982222 references. Without the use of the specialized screw, how can that be proved? Because that's exactly what the patent D claims to have achieved. Right. I mean, I take it because your brief is not rely on the specialized screw. No, I- If you do not think the specialized screw is part of this invention. No, it's not. Okay. Fine. So you depart- You depart company with your co-counsel on that. Right. I'm not sure- I'm not sure whether he thinks the screw is part of the claim. But the claim itself is- Okay, go ahead. The claim itself is to the bone plate. And that's what the inner party three examination was directed to. And how can this statement by the board be right in that if it's true that removing non-threaded holes would not allow the plate to be used for compression, which is the manner that is described? How can it be that they manage to do that without the alliance on some kind of other inventive features like a specialized screw? Well, they found a way to do it using a specialized screw. And they got a patent on something that didn't exist in the prior art, which is the bone plate with the holes basically the holes of Hoss, which are conically tapered and threaded in the- In the head of the prior art, congular, butchers plate. So the question- The whole question of this inner party three examination was at the time of their invention was when somebody skilled in the art have been motivated to do that. And in the board found that no, they wouldn't have been motivated based on the testimony of Dr. Turin and the patent- And from the patent office perspective, that's the substantial evidence. They can bring in all the common sense, all the other evidence they have, but they actually have no evidence that what Dr. Turin said was that the board was unreasonable for relying on that. I think what they're trying to do is get the court to re-way all the evidence and what happens below. But that job is the board's job. The board is the fact finders. Those are ones that look at all the evidence and they make a call. Now looking at all this afresh, you know, the patent office agrees that this is probably a case that's very close to the line. And reasonable minds might disagree. But what the board did here from our perspective was not unreasonable. But what's the fact finding that you're relying on? So the board made four critical facts finding. They found that the function of these consular, prior consular buttress plates was to create compression and to be used as a fracture reduction aid. They found that the time of the invention, the way that the skilled artisan surgeons created compression, was that they used a standard compression group and they screwed them into an unthreaded hole. They also found that there was, at the time of the invention, there was no way to create compression in hotness hole. And then they decided that because of that, there would be no way if you moved holes of hot over to a prior art consular buttress plate. There would be no way to create compression. The skilled artisan wouldn't do it

. And that's what the inner party three examination was directed to. And how can this statement by the board be right in that if it's true that removing non-threaded holes would not allow the plate to be used for compression, which is the manner that is described? How can it be that they manage to do that without the alliance on some kind of other inventive features like a specialized screw? Well, they found a way to do it using a specialized screw. And they got a patent on something that didn't exist in the prior art, which is the bone plate with the holes basically the holes of Hoss, which are conically tapered and threaded in the- In the head of the prior art, congular, butchers plate. So the question- The whole question of this inner party three examination was at the time of their invention was when somebody skilled in the art have been motivated to do that. And in the board found that no, they wouldn't have been motivated based on the testimony of Dr. Turin and the patent- And from the patent office perspective, that's the substantial evidence. They can bring in all the common sense, all the other evidence they have, but they actually have no evidence that what Dr. Turin said was that the board was unreasonable for relying on that. I think what they're trying to do is get the court to re-way all the evidence and what happens below. But that job is the board's job. The board is the fact finders. Those are ones that look at all the evidence and they make a call. Now looking at all this afresh, you know, the patent office agrees that this is probably a case that's very close to the line. And reasonable minds might disagree. But what the board did here from our perspective was not unreasonable. But what's the fact finding that you're relying on? So the board made four critical facts finding. They found that the function of these consular, prior consular buttress plates was to create compression and to be used as a fracture reduction aid. They found that the time of the invention, the way that the skilled artisan surgeons created compression, was that they used a standard compression group and they screwed them into an unthreaded hole. They also found that there was, at the time of the invention, there was no way to create compression in hotness hole. And then they decided that because of that, there would be no way if you moved holes of hot over to a prior art consular buttress plate. There would be no way to create compression. The skilled artisan wouldn't do it. And that's the finding of fact. That's the motivation. There's no reason for the skilled artisan to do that. It really falls under the umbrella of teaching away. And what do you make of the 686 patent in terms of what a skilled artisan would know about using non-threaded screws in threaded holes or partially threaded holes? Your Honor, if I may first prefer my answer with the fact that it's outside the scope of the inner parties re-examination. It's not for purposes of the motivation to combine a knowledge of a person of skill in the art. In terms of the background level of the skill, it's not. Your Honor, we thought about this a lot as a patent artist and we had to respectfully disagree. Do you mean we can't take account of the 686 for any purposes, what you're saying? Yes, Your Honor, because it's outside the scope of the rant. As this court said in Belkin, rant sets the stage. Rant house the board, what they can consider and rant house the, and that's the scope of the appeal. So let's suppose we reject that. There's a problem here, right? Because the 686 teaches using threaded holes. But not both the locking screws and the non locking screws. Respectfully, Your Honor, not in a conical screw. And that's the difference. That's why they have come. But why is a conical screw different? Because as Dr. Turin testified and Dr. Marsh did not re-but and the board found as a matter of fact, if you try to use a regular compression screw in the holes of hot, which were conically shaped, it would sit too far on top. You would have, so these bones go in your body and they fit underneath the iliotibial band. And if you had it too high up, it would cause problems

. And that's the finding of fact. That's the motivation. There's no reason for the skilled artisan to do that. It really falls under the umbrella of teaching away. And what do you make of the 686 patent in terms of what a skilled artisan would know about using non-threaded screws in threaded holes or partially threaded holes? Your Honor, if I may first prefer my answer with the fact that it's outside the scope of the inner parties re-examination. It's not for purposes of the motivation to combine a knowledge of a person of skill in the art. In terms of the background level of the skill, it's not. Your Honor, we thought about this a lot as a patent artist and we had to respectfully disagree. Do you mean we can't take account of the 686 for any purposes, what you're saying? Yes, Your Honor, because it's outside the scope of the rant. As this court said in Belkin, rant sets the stage. Rant house the board, what they can consider and rant house the, and that's the scope of the appeal. So let's suppose we reject that. There's a problem here, right? Because the 686 teaches using threaded holes. But not both the locking screws and the non locking screws. Respectfully, Your Honor, not in a conical screw. And that's the difference. That's why they have come. But why is a conical screw different? Because as Dr. Turin testified and Dr. Marsh did not re-but and the board found as a matter of fact, if you try to use a regular compression screw in the holes of hot, which were conically shaped, it would sit too far on top. You would have, so these bones go in your body and they fit underneath the iliotibial band. And if you had it too high up, it would cause problems. And I think, but if you just chopped off the head and made it a flat head screw, which there are many of them in this world, then you're done with that. I think the problem is that, as a matter of simple, elementary mechanics, respectfully, Your Honor, this is a specialized medical device. And we might think it's common sense to change the geometry of these holes. But it was funny a prior arc that had screws that were counter sunk and didn't sit up, right? Yes, but those were different geometry used for different purposes. This bone plate is used for a long bone, which actually supports the weight of your body. The other prior arc, the one that they're trying to get through the back door by saying or relying on them as common sense, those were for me. That's just jaw bone. Pardon me. That's just jaw bone. Okay. The prior arc bones that they're relying on, these were for mandible or wrist. They didn't bear the weight of the body. So you could have a different geometry. Dr. Tron testified, and he was, he's a surgeon, he testified that, you know, the geometry of these holes were very important. You wouldn't really really go around trying to change the geometry. When you have something that's going in the body, it can cause a lot of problems. When they, when these bumps, they go. Okay, I think we're about out of time. Thank you, Mr. Rade. You have a little over two minutes here

. And I think, but if you just chopped off the head and made it a flat head screw, which there are many of them in this world, then you're done with that. I think the problem is that, as a matter of simple, elementary mechanics, respectfully, Your Honor, this is a specialized medical device. And we might think it's common sense to change the geometry of these holes. But it was funny a prior arc that had screws that were counter sunk and didn't sit up, right? Yes, but those were different geometry used for different purposes. This bone plate is used for a long bone, which actually supports the weight of your body. The other prior arc, the one that they're trying to get through the back door by saying or relying on them as common sense, those were for me. That's just jaw bone. Pardon me. That's just jaw bone. Okay. The prior arc bones that they're relying on, these were for mandible or wrist. They didn't bear the weight of the body. So you could have a different geometry. Dr. Tron testified, and he was, he's a surgeon, he testified that, you know, the geometry of these holes were very important. You wouldn't really really go around trying to change the geometry. When you have something that's going in the body, it can cause a lot of problems. When they, when these bumps, they go. Okay, I think we're about out of time. Thank you, Mr. Rade. You have a little over two minutes here. Thank you, Ron. The government view of the invention is on page five. And their view of the invention is the invention allows both types of screws. Not exactly what the board said was in valid, and that's what cobalt shows. So the government was unable to articulate in its brief anything consistent with the patent as to what the claim to mention was. The synthese has gone with the specialized screw when I want to address that. The specialized screw issue isn't even in the disclosure. So it's not only not in the claim, which we all seem to be in agreement. I want to make it very clear. Well, but then look what they said about figure one. They said that that was just, they said, any surgical screw that has a non threaded head, 12 of an appropriate size and geometry for selected plate of the holes can be used. That's it. So they're using figure one as well known. You can use any of the appropriate size and geometry. And at this case, it's down to the appropriate size and geometry. I think we are smack that, common sense, KSR, and I think we're done. So with that, I have nothing further to add. I have a question for you to do it. We seem to be at a sharp disagreement over what uses can be made of the 686. And for me, at least that's an important issue. Can you address that? And if you have any authority that you would like to point us to, that would be contrary to the authority cited by your opposing counsel, that would be helpful. Well, one, they didn't cite any authority to contradict my authority

. Thank you, Ron. The government view of the invention is on page five. And their view of the invention is the invention allows both types of screws. Not exactly what the board said was in valid, and that's what cobalt shows. So the government was unable to articulate in its brief anything consistent with the patent as to what the claim to mention was. The synthese has gone with the specialized screw when I want to address that. The specialized screw issue isn't even in the disclosure. So it's not only not in the claim, which we all seem to be in agreement. I want to make it very clear. Well, but then look what they said about figure one. They said that that was just, they said, any surgical screw that has a non threaded head, 12 of an appropriate size and geometry for selected plate of the holes can be used. That's it. So they're using figure one as well known. You can use any of the appropriate size and geometry. And at this case, it's down to the appropriate size and geometry. I think we are smack that, common sense, KSR, and I think we're done. So with that, I have nothing further to add. I have a question for you to do it. We seem to be at a sharp disagreement over what uses can be made of the 686. And for me, at least that's an important issue. Can you address that? And if you have any authority that you would like to point us to, that would be contrary to the authority cited by your opposing counsel, that would be helpful. Well, one, they didn't cite any authority to contradict my authority. I cited this. Olivia case? You go ahead. Yeah, I cited two cases, the National Railway case and the Sibia case. And both of those cases say that you are allowed to go beyond the combination to show a motivation to combine. We are doing something even more non-cute and that is we're responding to an argument that they made that it somehow would become inoperable. And so we're saying, no, it's not inoperable. And we came back with the patent itself that there could be any doubt about using another reference. Not only were we using LRP or DRP, but that's the subject of the 686. And so I think you're allowed to use the patent itself regardless of the case law to show that the board's decision is contrary to the own admissions, the patent itself, the 686 admission, which you have to reconcile. If you're going to have an opinion of any rational basis, it's not rational. So the cases I cited, they had a footnote, they had no response. The answer was I cited two cases, the PTO I think had a footnote that said, oh, but this is a reexamination, this is different. That's it. That's the extent of the legal argument there. Okay, thank you Mr. Ray. Thank you, Your Honor. Thank you for the minute. Thank you.

Good morning. We have four argued cases today and for one of the cases we have a different panel and for the other cases. So what we're going to do is to hear that one case first, which is number 2012, 1343 Smith and nephew versus R. Reheat. I guess that's going to need some rearrangement here. And I'm going to join you briefly and come back with your different case. Right. May I please the court? Morning, you're on. In this appeal from the patent office, we start off with one undisputed fact that one would be motivated to have holes with threads to improve stability in the construct that is the Platon of screws, the board held that was obvious and that is not going to appeal. Therefore, using threaded and unthreaded holes is obvious. The board held, however, that one would not be motivated to make all of the holes threaded. And the threading of all the holes in the head portion is the sole basis for patentability. Can I ask you a question that doesn't pertain directly to the legal issue here, but as a background matter may be helpful. I'm having a hard time understanding the practical importance of this. And let me just start to cut to the chase here on this. Is it the case that in your view, you could avoid any problem at least of future infringement, but just drilling a hole, unthreaded in the head portion of your device, which otherwise has all threaded holes? That sounds like it just turns into cobalt. Correct. Now, why are we having this huge fight? I mean, is it that you have back items that are subject to a claim of infringement? The part is our in ongoing litigation and litigation and the date. That explains it. Exactly. Exactly. It does emphasize the trivality of what we're talking about here as far as the invention itself, but it does. In our view, the claims were written specifically for the purposes of ongoing litigation clarified. What would I think there are some issues of claim construction here, which could usefully be addressed at the outset. The board opinion leads us though. It's reading a compression requirement into the claims, which don't appear there on the face of the claims. Is that an accurate statement of a problem here? That is one of many. In fact, I believe, and as in any patent case, we have to have an understanding of what the claim's invention is before we can proceed. We have major differences in what the claim's invention is. I believe they're reading in functionality requirements such as compression. I believe they're reading in many things into the claim that are just simply not there. And the easiest way to know that I can answer your question so easily, Judge Bryson, is claim 24 was invalid. It is invalid. The claim 32 is the dependent claim, which somehow imparts patentability. So the sole issue was really whether claim 32 renders the claim patentable. The sole thing that claim 232 ads is that the head holes are all partially threaded, only partially threaded. And the entire argument proceeds that somehow one of the skill in the art wouldn't want to think about making all the holes partially threaded because one of ordinary skill in the art would think it would be inoperable. Well, that's exactly what the claim's invention is. Apparently, the apolese feel that they can claim what they think those of skill in the art would find inoperable. Well, that's obviously a circular argument. The literal argument, I guess, is the compression at the hip portion is a necessary feature to make this work, right? That is definitely their position. Yes. What's your response to that? Well, one as a it's not always necessary, but even assuming it's necessary, why can't one get compression with some thread in the hole? That seems to come down to. They are assuming. What do you mean it's not always necessary? Well, our declarant says there are procedures where you don't need to have compression and still use the plate. And another thing about the claim's invention judgment. Well, the list plate works. Well, when you say this plate, the list, list plate, they say. The secondary reference works without compression. That is correct. The secondary reference was to show that the idea of conical holes with threads is old. There's nothing special about conical. What what I was trying to say is that claim the back of the claim's invention, who says the claim's invention is limited to a conjular budget plate. The claim's invention is to any plate for it says a long bone. What they're doing is they're reading in other characteristics as necessary such as compression, such as a conjular budget plate. As if the claim's invention is much more narrow than it really is, the claim's invention is broad and the only point the patent ability is all the holes in the head portion aren't partially threaded. They're brief sometimes says fully threaded, sometimes their brief says threaded as if it's fully threaded, but simply partially threaded. And what we did is say, no, one of skill in the art would not shy away from trying to gain compression having one or more threads because that's exactly what the prior art did. And in fact, the patent itself explains that it was known to gain compression with some thread. And that's the 686. Yeah, it says it says the prior art 686 patent disclosed the partially threaded holes either allow either non-locking or locking screws to be used. Correct. And then they criticize the 686 in the patent because they say, but those are only partially threaded. And they claim partially threaded. This is a classic example of writing the claims regardless of the prior art. The patent itself explains the judge Wallach correctly noted that it was well known to use compression screws in partially threaded holes. You would expect your team and his admission about prior art. Oh, absolutely. It's definitely a mission. And the board and the examiner had a little bit of disagreement on the degree to which that admission could be treated as an admission. Yes. Well, I guess there's a problem here in one sense if we were to say that the claims do include a compression requirement in the head portion. Then if I understand correctly, the 686 would not be new prior art and couldn't and wasn't used as a ground for rejection. Am I correct about that? You're raising another key point of the appeal. The board felt that we were using the 686 and the board says our first error. This is an error by the board, by the way. Firstly, the exact one was not. Specifically my question, which is let's assume hypothetically and I know you dispute this that there is a compression requirement in the claims. And that your answer to that is the 686 and these other two pieces of prior art. If I understand correctly, the 686 and these other pieces of prior art not being new prior art, or at least the 686 is not new prior can't be used as a ground of rejection. Am I correct about that? Yes. As long as you appreciate that when you say ground for rejection, you mean as far as modifying the device to come up with the claim convention. That is correct. However, we did not use and this is the misunderstanding with the board and you can read it in the hearing. We were using 686 and the DRP and the LRP to respond to the argument of inoperability. We weren't using those references to modify the device. We were saying that one would not shy away from threats simply because of a fear of losing compression, which is the patent offices ultimate holding. And that is not true. That is contrary to the patent has contrary to the 686. So there's a difference and we cited the case law from this court, which they weren't unable to really respond to. It is okay to go beyond the references if you are responding or showing simply the motivation to combine the primary and secondary references. And that's what we did. There was no motivation to combine because the combination without locking without standard screws and the head portion wouldn't achieve compression. That's their argument, but in order to do that, in order to say that, they make many procedural arguments for you to disregard and they actually ask you to disregard the 686, the LRP, the DRP. They need to have you disregard the references or to pretend we're relying on those references to modify the combination. No, we're relying on those references to rebut the argument of inoperability. Inoperability, they say it would not gain compression, but they somehow claim it and their device had it, which is another whole problem. So what do they do? They have to redefine the invention. They redefine the invention by saying our invention is a specialized screw, which allows us to gain compression. Well, the screw isn't in the claim. That's another one of the claim construction problems that they're having. They're redefining the invention to act as if the invention includes a specialized screw. Well, it's not even a disclosure of a specialized screw. That's another claim construction. So in order to respond to the 686, the very sentence that you read, Judd Wallet, they have to redefine the invention to dig deep to somehow distinguish their invention from the prior references, but to do so, they complete your story to claim the invention and the reason for patentability, which is most succinctly shown and dependent claim 32. Now, the biggest problem for you as you acknowledge is the defender review. It's the board's substantial evidence review of its finding here. Setting aside your legal arguments, and I understand you make separate arguments that they were legal error, but when you get right down to the question of whether a person of ordinary school would have understood that you could use a stand-up. The standard screw in a threaded hole, that's a factual question. It seems to me, into which we owe them substantial evidence difference. Now, the principal authority on which census relies is the term declaration. And in particular, I guess it's 84, 43, and 44, or where a term is talking about this question. He says, well, if you put a standard screw, besides the fact that a standard screw will pop up, we're not at too high, but if you put that in a threaded hole, you will have distortion of the threads and break-inch, which will create pieces of metal presumably that will be injurious to the patient. You're a response for that. Well, the few responses, that one. Turin doesn't really come head-to-head with Dr. Marsh. He pretends that you're using the precise hole of Hoth. In other words, it's not only conical, but it is also threaded all the way up to the top. Yes, I assume. You're saying if it's partially threaded, then Turin goes away because his concern about the screw head slapping into the threads and discerning the threads and ripping them off goes away. That's one of my response. That's correct. That's one response. But did it ever occur how since these claims invention overcame that problem? There's nothing in the patent overcoming that problem. They claim partial or false. So their claim invention claims the very device that Turin says is unoperable or as problems. That's another. He's always contrary to the patent and contrary to the claim. He's also completely unaware of the KSR standard. He assumes no creativity, no imagination, no help from one of skill in the art, and completely ignores that all the references, do you notice all the references are within a 12-month period and then a year later is the filing? It's a natural progression to simply go from coval, which was in 1997. The other references are 97, 97, 98. They file in 99. It's a natural progression to see if you can make all the holes the same, to give the doctor the option of deciding which screw we put in which hole. I'd like to reserve with a little time I have left for my reward. Thank you. Thank you, Mr. Ryan. Mr. Bailey? Good morning, may I please the court. I'm here today with the co-counsel in this hour representing the patent office. It's a review that the claims here include a compression requirement. The claims cover some bone plates that can use compression and the claims might also encompass certain other environments that do not. Please answer the question. Do the claims require compression? They do not. So what's the relevance of compression just to refute the notions that there's a motivation to combine here because it would be inoperable? Yes, Your Honor. Let me focus this court because I think the whole argument that you just heard is not focused to what this appeal relates to. This appeal is from an inner parties re-example. Under this court's ruling in Belkin, the question presented is the substantial new question that was raised under 35 USC Section 311. That is the requesters request and adopted by the patent office under Section 312. If you go back and look at the requesters request in this case, it is limited to the hospital they use with the condulatory. So your contentions they can't use the 686 and these two other pieces of prior art because they weren't part of the request. They cannot use it as a secondary reference. They can use it to point as a motivation of one might want to use it. Because your own view, that's what they're using it for. Because you agree that compression isn't the claim requirement and you're relying on compression to refute motivation and they're using the 686 to respond to that. Exactly. And the board looked at that. There's nothing wrong with it. In fact, the board looked at it and analyzed it and said, okay, if we take the 686 and combine it with HOS and combine it with the condulatory buttress plate for the primary references, would one of the board and the ordinary skill in the art have wanted to use a standard screw with the conical fully threaded hole of HOS. And the board looked at turns declaration, paragraph 43 and 44, and said no. Factually, no. One of ordinary skill in the art would not do that. Why? Because the screw head sits too high above the plate causing patients discomfort because these plates sit down upon the outer, the latter part of the knee and that rubs up against the illiotibial band. Well, why? Because the screw head needs to sit above the level of the plate if there's the counter sunk portion of the hole. I mean, that's very common. It occurs every day in carpentry. There's two arguments there, you know, one, it's not the substantial new question of patentability that was before the patent office. The patent office raised this question on the HOS reference only. And if I can, if I can, if I can, you can use that. Right. Well, in the second part, the second part is that they don't tell us how they're going to redesign this hole. This plate is not being used for the mandible or the wrist, which is the locking reconstruction plate and the distal raised plate. There you can use a hole that has some threading on the bottom and counter sunk at the top. This is for condor buttress plates used at the distal femur. The distal femur is the largest bone in the body. It can carry it's the most weight. There's nothing in the record that says you can use a screw hole that has partial threaded and a counter stock. But that's your claim. You're naming partially threaded screw holes. No, I'm not sure how you can say that partially threaded screw holes are operated. We aren't saying they're not operative. Well, we're saying that partially threaded screw hole can also cover the patent drafter. The patent T, the figure forward, chose his preferred screw hole. It's fully conical, fully threaded. But the patent drafter, when he drafted it, said you can include, you can be partially threaded. Now, why would a patent attorney do that? Patent attorney does that because he wants to make sure no one gets around him on Dr. Noble Quillen by designing around by limiting, taking to see one threading out of the top or having a fully threaded screw hole. You know what you're saying. Could you try again? I mean, I just don't understand it. I mean, with, there's no compression requirement here. Correct. So, the idea is that Hoss shows the use of at least partially threaded holes in the head portion. What you're saying now that wouldn't provide, there wouldn't be a motivation to combine Hoss with the other references because it doesn't achieve compression because it only allows locking screws. Right. I agree with you. Except you made a sense of Hoss could be partially threaded. Hoss has fully threaded. Well, so what's the point here that because your whole argument rests on the difference between fully threaded and partially threaded? Absolutely. It's a key issue for the distal radius plates. There is nothing in the record to suggest that with respect to the distal radius, I mean the conjure butchers plates use for the distal femur that you could use a hole that is not fully threaded with a screw that is fully threaded. Also, what about the standards? What about the, and the partially threaded, oh, the cancel. Stop. When judges are talking to you, you stop. Sorry. That's right. Can you go first? Well, I just, I mean, I understand your procedural argument, but it sounds to me like you're, you're just talking right into the face of the, not only the disclosure of 686, but also your own patents description of 686. As being partially threaded, holds. I mean, I, I guess, you know, if technically you survive this, I can't imagine what you're going to say in the infringement proceedings when somebody raises the 686, which obviously will be done. Sure. What's your answer? If you look at the background of the patent account, two word introduces the 686 patent. It says it's known in the prior art to use a hole that has partial threading and also is partially unthreaded to use it for either locking or non locking. But it says the partially threaded holes allow either not because the partially threaded holes are only partially thread because the holes are only partially threaded. The locking screws may not maintain the fixed angular relationship under physiological loads. So those plates that use those types of holes were not under physiological loads. The conular buttress plates that they're using for their primary references are all under psychological load. But your claim covers the entire range of partially threaded holes, right? This whole argument, your honor, goes back to what the prior art suggests prior to date that we filed our patent application. Their substantial new question of patentability is combining the primary references with HOS. And therefore, and that we've shown that that is an improper combination. Let me ask you another question. Well, go ahead, go ahead. You were in the middle of your point. I'll ask you the same thing. Okay. Our argument is that if you go back and look at the request for re-examination, this entire case is based on one combination. It's the primary references with the HOS hole, which is fully conical and fully threaded. The board analyzed that issue. That's what the board analyzed. And the board said you would not make that combination because you need compression in the head of that plate for it to work. Okay. Let me see if I understand what it is exactly how it is that you solved the problem that the 686 did not solve. Right. In your brief, you make an illusion to a specialized screw. Is that your solution to the problem that the 686 did not solve? Correct. Well, but you don't have a claim to a specialized screw. If a specialized screw is the key to this invention that it seems to me at minimum, you have a best mode problem. Where is the screw? It's nowhere in the patent that I can see. Certainly not in the claims. Right. Where is the specialized screw described? The specialized screw is described in figure 1. And why is it called the where is it described in the claims? Where does the claim require a specialized screw? The claim does not. I mean, you're not saying that figure 1 is there's something that is completely new about this screw, right? What we are saying in honor is that prior to the date of synthase invention here, no one had put together a condolabutters plate that had all the head holes threaded. No one had done it because there was no way prior to the date of our invention to get compression and use that condolabutters plate properly. Therefore, their combination, if you look at the prior art and you try to get to where we were when we fought our patent application, you can't get there. And therefore their combination. Where is your answer on the specialized screw though? It is our position that once we were the first ones to develop a way to use a plate that was had all the heads and all the holes in the head. We were allowed to claim that plate with or without the screws. So you're saying that the screw doesn't matter? The screw makes it possible for that plate to have functionality and be useful to those ordinary skill in the art. So again, it's a motivation question. You're saying there's no motivation without the specialized screw without compression, but then it seems to me that you can use the 686 in this prior art to take the other side of the motivation issue and to say yes there's a motivation and it's provided by these other references. I have two answers that you're on one is procedural. The 686 is not a secondary reference. Well, that doesn't make any difference if we're talking about motivation than rather than what's in the claim itself. Okay, then I'd ask your honor, what is the motivation to do what? No, this is your argument. But the motivation would be to use what they said the motivation is use a standard screw with the hole disclosed in half and we have shown that that wouldn't be a solution. There was no motivation to use a partially threaded hole. Right? The issue of whether you would use a partially threaded hole is not part of this read exam. It's not the substantial new question upon which is for exam and base. Does your specialized screw and figure one work with a partially threaded hole or a fully threaded hole? Could you repeat the question? The specialized screw that you identified which is the screw that appears in figure one is that designed to work with a fully threaded hole or a partially threaded hole. It could work with the design of work with a fully threaded hole. It could work with a partially threaded hole if you define a partially threaded hole as having threads say 95% up the depth of the hole or if you had threads 95% around. If it is designed to work with a fully threaded hole, how did you solve what is it about this screw that solves the problem that Dr. Turn pointed out with using a standard screw head with a fully threaded hole? The standard screw used with a fully threaded hole of POS which is a secondary reference would sit to the screw head sitting on the side. I'm talking about his later, he says that at one point. Later he says the problem is if you have a standard screw that isn't threaded and you press it in, you compress it into the threads, you're going to distort the threads and you're going to have chipping. That's basically the point. How did you solve the distortion and chipping problems with this specialized? What is it about this screw that solves that problem with a fully threaded head? The screw head is chronically shaped to match the conical shape of the hole. But wouldn't that mean that it is engaging the threads without itself having threads? It comes down and sits in against the hole but because the conical shape is the same as the screw hole and the threads in there, it does not disrupt those screws. It does not push them aside and misthread them as you would with a standard screw. If you have a conical head and you're going into a conical hole that is threaded and you tighten it down nice and tight to really give it a lot of torque, you're going to, unless you've got the hardest metal on earth, you're going to be distorting the metal on those threads, particularly the threads are very fine. That strikes me as a common sense. Now you're on a disagree. It's not the way these plates are used in the industry and the metals are designed, such that when they are chronically threaded in that regard and the conical threading in the hole, they don't have that issue. But the primary problem that Dr. Turn noted in that regard was that the standards screw sits too high above the plate and that is what the board agrees and that was the factual finding of the board. Okay, thank you Mr. Vailer. Is this sour? Am I pronouncing that correctly? Sour, you're on. Ma'am, please support. From the patent office, it's perfect. You've heard Mr. Bailey make some concessions about the scope of these claims. Did you disagree with anything that he said, such as for example, that there's no compression requirement in the claims? Well the board didn't make any type of finding about whether or not there's a compression requirement in the claims. Now, just to answer my question, do you disagree with anything he said about claim scope? I think from the patent office's view, we would say that compression is a part of, is the function of synthases and vendors? Is it a claim requirement? Well, our understanding from a case like in rate Anthony is that part of the obviousness analysis would be... Is it a claim requirement? We would think it is. It is. So you disagree with Mr. Vailer. Yes. How do you deal then with the 744 specification of 686 saying partially threaded holes allow either non-locking or locking screws to be used in that in an admission? Well, their whole argument in the patent office's view relies on incorrect claim construction. It ignores the fact that what's happening here is you're taking this fully threaded conically tapered from top to bottom, holes of hot, and putting them onto a prior art consular butchers plate. And the holes in the prior art that the 744 patent is referring to, they're not conically shaped and fully threaded. All those are cylindrical holes with the countersunk top. So it doesn't even show that you would use a standard compression screw in a hot-suss hole. And the board found that as a matter of fact. As I was saying, the patent office, our view on this case is that it all comes down to the board's decision that a skilled artisan would not have taken all the holes of hot and put them onto a prior art consular butchers plate. The prior art consular butchers plate did require compression. So whether or not I mean- I don't get the compression into the client. I don't understand that claims don't say anything about using compression screws in the head portion. It doesn't say anything about compression. Where do you get that claim interpretation? From our point of view, we're dealing with the inner parties or examination. And I think Mr. Ray, that- I really get that interpretation of the claims. What's the justification for? Well, respectfully, Your Honor, I think that when we're looking at compression in the claim, it's sort of leading us down the wrong path. No, but stick with my question. You may want to argue this differently. What's the basis for finding compression requirement in the claims? Our argument is that when you look at in Ray Antony, it says, for an apparatus claim, part of the obvious analysis is- I mean, part of the analysis. Why is it part of the claim? Because you can look in the written description for an apparatus claim and determine what its function is. And that is part of- You read the function into the claim? I wouldn't go so far as to say that, but the fun is- The compression was a claim requirement. How is it a claim requirement? Your Honor, I- I was- The way this whole inner parties re-examination came about was, you know, under the statute, there has to be a substantial new question. And that's the thing- You're not addressing my question. It can't be a claim requirement, can't, because it's not in the claim. It may be relevant to the obvious analysis. It may be relevant to motivation, but it is not a claim requirement. Okay. I would- I would can see that at this point then. Now, the board said that removing the non-threaded holes altogether would not allow the modified buttress plates to be used in the matter of the purpose intended in- The two prior references, cobalt and the K982222 references. Without the use of the specialized screw, how can that be proved? Because that's exactly what the patent D claims to have achieved. Right. I mean, I take it because your brief is not rely on the specialized screw. No, I- If you do not think the specialized screw is part of this invention. No, it's not. Okay. Fine. So you depart- You depart company with your co-counsel on that. Right. I'm not sure- I'm not sure whether he thinks the screw is part of the claim. But the claim itself is- Okay, go ahead. The claim itself is to the bone plate. And that's what the inner party three examination was directed to. And how can this statement by the board be right in that if it's true that removing non-threaded holes would not allow the plate to be used for compression, which is the manner that is described? How can it be that they manage to do that without the alliance on some kind of other inventive features like a specialized screw? Well, they found a way to do it using a specialized screw. And they got a patent on something that didn't exist in the prior art, which is the bone plate with the holes basically the holes of Hoss, which are conically tapered and threaded in the- In the head of the prior art, congular, butchers plate. So the question- The whole question of this inner party three examination was at the time of their invention was when somebody skilled in the art have been motivated to do that. And in the board found that no, they wouldn't have been motivated based on the testimony of Dr. Turin and the patent- And from the patent office perspective, that's the substantial evidence. They can bring in all the common sense, all the other evidence they have, but they actually have no evidence that what Dr. Turin said was that the board was unreasonable for relying on that. I think what they're trying to do is get the court to re-way all the evidence and what happens below. But that job is the board's job. The board is the fact finders. Those are ones that look at all the evidence and they make a call. Now looking at all this afresh, you know, the patent office agrees that this is probably a case that's very close to the line. And reasonable minds might disagree. But what the board did here from our perspective was not unreasonable. But what's the fact finding that you're relying on? So the board made four critical facts finding. They found that the function of these consular, prior consular buttress plates was to create compression and to be used as a fracture reduction aid. They found that the time of the invention, the way that the skilled artisan surgeons created compression, was that they used a standard compression group and they screwed them into an unthreaded hole. They also found that there was, at the time of the invention, there was no way to create compression in hotness hole. And then they decided that because of that, there would be no way if you moved holes of hot over to a prior art consular buttress plate. There would be no way to create compression. The skilled artisan wouldn't do it. And that's the finding of fact. That's the motivation. There's no reason for the skilled artisan to do that. It really falls under the umbrella of teaching away. And what do you make of the 686 patent in terms of what a skilled artisan would know about using non-threaded screws in threaded holes or partially threaded holes? Your Honor, if I may first prefer my answer with the fact that it's outside the scope of the inner parties re-examination. It's not for purposes of the motivation to combine a knowledge of a person of skill in the art. In terms of the background level of the skill, it's not. Your Honor, we thought about this a lot as a patent artist and we had to respectfully disagree. Do you mean we can't take account of the 686 for any purposes, what you're saying? Yes, Your Honor, because it's outside the scope of the rant. As this court said in Belkin, rant sets the stage. Rant house the board, what they can consider and rant house the, and that's the scope of the appeal. So let's suppose we reject that. There's a problem here, right? Because the 686 teaches using threaded holes. But not both the locking screws and the non locking screws. Respectfully, Your Honor, not in a conical screw. And that's the difference. That's why they have come. But why is a conical screw different? Because as Dr. Turin testified and Dr. Marsh did not re-but and the board found as a matter of fact, if you try to use a regular compression screw in the holes of hot, which were conically shaped, it would sit too far on top. You would have, so these bones go in your body and they fit underneath the iliotibial band. And if you had it too high up, it would cause problems. And I think, but if you just chopped off the head and made it a flat head screw, which there are many of them in this world, then you're done with that. I think the problem is that, as a matter of simple, elementary mechanics, respectfully, Your Honor, this is a specialized medical device. And we might think it's common sense to change the geometry of these holes. But it was funny a prior arc that had screws that were counter sunk and didn't sit up, right? Yes, but those were different geometry used for different purposes. This bone plate is used for a long bone, which actually supports the weight of your body. The other prior arc, the one that they're trying to get through the back door by saying or relying on them as common sense, those were for me. That's just jaw bone. Pardon me. That's just jaw bone. Okay. The prior arc bones that they're relying on, these were for mandible or wrist. They didn't bear the weight of the body. So you could have a different geometry. Dr. Tron testified, and he was, he's a surgeon, he testified that, you know, the geometry of these holes were very important. You wouldn't really really go around trying to change the geometry. When you have something that's going in the body, it can cause a lot of problems. When they, when these bumps, they go. Okay, I think we're about out of time. Thank you, Mr. Rade. You have a little over two minutes here. Thank you, Ron. The government view of the invention is on page five. And their view of the invention is the invention allows both types of screws. Not exactly what the board said was in valid, and that's what cobalt shows. So the government was unable to articulate in its brief anything consistent with the patent as to what the claim to mention was. The synthese has gone with the specialized screw when I want to address that. The specialized screw issue isn't even in the disclosure. So it's not only not in the claim, which we all seem to be in agreement. I want to make it very clear. Well, but then look what they said about figure one. They said that that was just, they said, any surgical screw that has a non threaded head, 12 of an appropriate size and geometry for selected plate of the holes can be used. That's it. So they're using figure one as well known. You can use any of the appropriate size and geometry. And at this case, it's down to the appropriate size and geometry. I think we are smack that, common sense, KSR, and I think we're done. So with that, I have nothing further to add. I have a question for you to do it. We seem to be at a sharp disagreement over what uses can be made of the 686. And for me, at least that's an important issue. Can you address that? And if you have any authority that you would like to point us to, that would be contrary to the authority cited by your opposing counsel, that would be helpful. Well, one, they didn't cite any authority to contradict my authority. I cited this. Olivia case? You go ahead. Yeah, I cited two cases, the National Railway case and the Sibia case. And both of those cases say that you are allowed to go beyond the combination to show a motivation to combine. We are doing something even more non-cute and that is we're responding to an argument that they made that it somehow would become inoperable. And so we're saying, no, it's not inoperable. And we came back with the patent itself that there could be any doubt about using another reference. Not only were we using LRP or DRP, but that's the subject of the 686. And so I think you're allowed to use the patent itself regardless of the case law to show that the board's decision is contrary to the own admissions, the patent itself, the 686 admission, which you have to reconcile. If you're going to have an opinion of any rational basis, it's not rational. So the cases I cited, they had a footnote, they had no response. The answer was I cited two cases, the PTO I think had a footnote that said, oh, but this is a reexamination, this is different. That's it. That's the extent of the legal argument there. Okay, thank you Mr. Ray. Thank you, Your Honor. Thank you for the minute. Thank you