about a case of controversy so my understanding is that a line has not sued clear correct on this patent is that right that's right that leaves me wondering why there is a case or controversy even for you coming to this court with no adversary except clear correct not the director as an intervenor to challenge the un patentability ruling of the board and part of what i'm thinking about is what the supreme court did a couple of months ago in the p and c against secure acce in which the court concluded that because the p and c petitioners did not have a case or controversy with secure access as to the then that issue claimed twenty four which had never been asserted against them that the any dispute that did exist was moot and ordered not only vacated our decision but ordered that the board's decision would controversy and if not why we shouldn't vacate the board decision on that so we think there's a lot of controversy primarily for the reason that we are the patent owner the patent has been cancelled and the time for us to apparently as to claim twenty four but certainly was after all the other claims were invalidated and the infringement suit was dropped with prejudice here but again we start with a record in which as i understand it you have never sued them on this patent the patent is expired and unless you have some you know i don't know what the right language is you know reasonable likelihood of suing them for their we obviously have no attachment to the board's decision however we would produce of a strange result if the next day we were to assert the patent against clear correct and clear correctly no i suspect would say wait a minute what happened the board decision he says that one of the one of the oddities obviously of coming to this court on appeal in comparison to filing in district court is that we don't have what we would have in district court which is a factual allegation and complain of perhaps perhaps not but we of course don't know for sure what happened or what motivated the court and secure access because it's a it is it's a summary munching where order without a reasoned explanation given by the court but i think that  the analogy that i would make your because you know our dispute whether the director has intervened or not you know that's it is the dispute with our disputes with the director in addition to whatever dispute we have with clear correct is that is there a reason why a line hasn't filed a lawsuit this patent against clear correct along with all the other related incidents already filed lawsuits against the i don't know one that i can kind of share with the court i don't think but i mean the what i can say is that the wording of different different patents in different claims in the family or are different in some ways and so you know the issues presented in the disappointment occasion at the moment are different o if you're out of a so the board we think committed three clear errors and they really all come from the basic i need to hear of the invention in this case which is the op providing digital data that could manufacture all of the appliances beginning middle and end at the outset of treatment and so the poor concluded that that providing limitation is in the prior art it got out of the snow reference but it but that was incorrect because it was  the movement of actual teeth in the pattern here with the generic all roads lead to rome animation snow second it was it concluded or it acknowledges it had to that age in a device based on generic teeth would not fit the way that invisalign a liners do but then it attributed the motivation to make this combination this obvious nice combination with the desire to make a more precise a liner that reasoning labor cost savings and resulting in modeling of more precise teeth movement but that's exactly what snow doesn't provide i and what the reasoning that the board has just used in in concluding that snow discloses the relevant limitation of  claims on the board and said oh it doesn't matter because a generic a liner well the generic device will do and i'd like to explain why that was incorrect as well but what that really is the nub of our disagreement that there's no evidence in the record that goes over the teeth and so therefore with a line or with an appliance like that you need very precise information about all the individual teeth whereas with the retainer you don't necessarily i don't think you need to citation but the one thirty nine patent you know which is building retainers yes but it's building them out of hardened material and several of the teeth the one the anchoring teeth the portion that is the of the reason it's called the splint those fit closely around the anchoring teeth the teeth in the back of the mouth so and the patent says five or six times that this is a closely fitted device so it just simply not correct to say that retainers don't involve a close one or there's something else in the one three court but if you read the very next sentence in the one three nine patent and i ahd that comes after that sentence you will see that it is once again talking about the need for the splint portion of the retainer to be closely fitted around the t those teeth the teeth are already in the right position those are the anchors they provide the anchoring against which the forces asserted that he thought that or that are going to move so you have to have a close and tight fit well in you is there making a line or making an invisalign type a line or these other things like a retainer for example and so now you're telling me well no actually the retainer has all these other issues to look at all of this interesting information of the one thing i says he's never used them and they're not ideal and so they exist but we are point with respect to that device is that there is no motivation to make it or anything like it and it can't be used in syria on him which is the nature of this invention that it does not mean some kind of you know robbery device bought off the shelf it means a custom fitted retainer as in the one three nine patent which is cited as a background art in our patent so that's that's really the mistake that the board made that it's thought that these claims to be practiced with this you know quite generic device that's no does stuff about designing datasets that are based on the it talks about scaling the default model a lot in terms of the sizing of the individual teeth i think it also even talks about scaling of the jaw size as well and so really the only thing that's missing and in terms of as i can understand it terms of what you're thinking you need is that is a particular shapes of all the individual patients and so i'm trying to figure out why is it what is it from say your expert that makes it clear that if you don't know the ship of the teeth you couldn't possibly build that retainer out of the shark so we have a couple of important points there what's the you go to rome as i have every single snow animation ends up in the same place the teeth begin to morph into the final animation which is the same for every single patient so what you don't have is intermediate steps that actually look like the treatment steps say that close fitting in the sense of reflecting individual to shape is required and it's another thing to say that there has to be a representation of an actual patient set of teeth which doesn't by itself require the shape it might well be limited to the orientation position and orientation for an individual patient and i've i've been struggling to understand how much of your argument is dependent on a conclusion that the representation has to look like shape as to reflect actual shape the but curves of the top of the on that is part of our argument i would not say that argument depends on it let me break it apart in these ways snow does not disclose the treatment steps you know the intermediate or final positions for an individual patient even if you assume that we are wrong about everything in your question just let me me let and in you on that for a second in footnote ten page eight twenty nine of the appendix a board says it almost as an afterthought but there it the sequence and if you read it a stopping short then it all steps short of the last step are individual eyes to at least in a sense in a sense in which the final  one thirty five which relies on both mom ninety three and mark's forty two why didn't support credit because the i think that the best reading is because the word comes back to mort's forty two but misreading of snow at the second position there is the final the idealized it read it any other way but the idealized second position is the same in snow is the same for every male patient and it is the same for every female patient those are the only variance there's one standard mouth for male patients there's one standard for female patients when i took the word to be singing footnote ten is that if you just took one of if you took one of the random stops that's yes that's right you know so you take you plot of course as the crow flies to this generic model and then you divide it up into a certain number of segments that are exactly the same distance apart you know they're just mile markers they don't reflect any actual real world to the coalition's you know the rotation of some chief faster than others the length of the of the route which dr marts acknowledged was a consideration and how fast you can you could you can do two for movement the amount of job o cabinets or recordkeeping yes but also for was it treatment planning or something so he has two references to treatment planning and i think that they are both fairly read as talking about the initial reading of essentially the patient record befor animated and here's what i mean by that number one he talks about braces and now this is not an obvious combination about races but if you were talking about races we think that what snow is talking about and i believe this is in column five isn't this is not what the board relied on right that what the board with the court got out of snow is actually further down having to do with the position sensors attached to the jaws and it is true that snow suggested that you couldn't discern starting in line twenty nine  this is why what you could use you can attach sensors to the jaws so that the model can better depict the movement of the jaws but it never integrates that with the actual planning of the orthodontic treatment so you can animate the jaws moving up and down the way the patient's jaws move up and down but what you never get out of this pattern is animating the movement of the chiefs in any non generic way anything other than all roads lead to rome so that's our that's our response on  any doubt that sometimes for a particular tooth you know the distance between two points is going to be a straight line but the point is that when you are providing a plurality of  at the outset of treatment so you're providing all of the data sets and all the appliances before you begin treatment i don't think that there's any evidence in the record suggesting that you could do st linear interpolation even to the final treatment goal and be an acceptable and appropriate final arrangement final orientation or any patient reviewer jotting down just a series of angles and rotations on a card you know could conceivably but what you're doing is actually modeling the mouth and part of the mouth as dr marts agreed at page sixty nine thirteen when you're modeling them out one of the factors that you must take into consideration is the size of the patients and in addition to that there is variation in the shape of the patient's teeth that might or might not be reflected in the final treatment but is absolutely going to be reflected in how you get there because the size and shape of the patient's teeth affect when the teeth are going to collide and the collision of the teeth is the primary consideration that causes you to how do we know that i think if you if you read snow now you see that it is an animation that that refers to where you start and work out and where you end it doesn't take any account of  where the teeth are in the air intermediate positions except to do to divide by whatever number of interpellation steps you put in so if the top teeth in the bottom teeth overlapped you know to some degree and you're going from an underbite you know to an over jurisdiction i would submit the clear correct is here today under what i would generally call the piggyback standing in the under a f f electronic frontier foundation of that presumably clear correct is is making a case for jurisdiction here today if they have it then we should have it as well as my understanding of some of that says decisions in the earlier case case law on point and i can't really speak to the believe me do you have anything that you can say on this question whether i don't i'll put it this way clear correct feels threatened by a line about being sued under th now expired patent for its past activities sure i guess the only thing i could say on the record is that there has been an ongoing dispute between the companies involving the vast majority of the portfolio this the zero three seven has been recently asserted  but it it has been asserted recently within the last year and a half directed to manufacturing dental appliances and they specifically describe those appliances as encompassing positioner as retainers basically everything that was available when this happened was filed so  digital data sets to make getting up our lives correct but that's a little bit of a mischaracterization of what the motivation is so the motivation there is there's essentially two motivations to combine for the ground one of which is well if making manual appliances it's obvious automate that and computerized so that's number one and that's not really addressed in the briefing what they focus on is number two which was the argument of well you could make kessler's appliances with more precision meaning if you take a manual process and you computerized that those formerly manually made devices will be more precise by virtue of the computerized data is that the rationale the board actually adopted because my understanding is it wasn't this kind of more broader look at trying to really computerized what was being done manually wrestling it was more trying to understand and apply snow is particular disclosed practice to make appliances per castling and so if more on that playing field then we have to study the issue a little more closely than this right broader thirty thousand foot high kind of enclosure i guess i would respectfully disagree that i believe that was what was presented in the petition that as superstitious precision between manually made appliances as to computer but even if we were to go down th road on persuasion it all it all comes back to this ultimate argument about well you can't make a liners right because you need to the specific to shape i mean that's where or when when you use when you look at what they're saying about persuasion it all comes back to well you don't have to shape and therefore when you use no it wouldn't work for liners but what we've said in the briefing in this gets to that point on the one thirty nine pattern and the one thirty nine pounds incorporated i should say referenced right in the background section that's the position and the citations that are in the briefing that in that my from just pointed out are directed since point so the splint that here's to your teeth that it sort of complementary relation to the roof of your mouth and it pushes what the the one thirty nine pat describes as a mouth guard so the mouth guard is the position and so that mouth guard is not adapted to any specific shapes in fact the reason you need  pointing to and what they adopted from our briefing as well this is a position or it's just like a mouse guard you put it in there and you rely on that splint pushing up against that true to form the plastic and then the forces on the teeth or from the  that's providing the force as compared to when a liner that you snap into your teeth and is in scripting those teeth are moving in that particular direction so in that respect you can make that position or with directed to a liners are directed to a broad swath of devices and you don't have to use three d data at all because you also reference a laundry list of different technologies and then you come into the board and say well no of that list of appliances we were we want appliance see you know our claims limited to that and then we want three d shaped technology which is option for what have you so they're they're arguing for limitations when their claims are directed to a broad methodology of manufacture and so that's where the ford came out on this is that your claims just don't get you where you want to go whether it's philips or b r i it's plain meaning what you claimed is providing digital data sets the only thing modifying data sets is digital every one of those examples in the specification whether it's x rays three d x rays m r i a that's all digital data and that's that's what was corny what should attributed to any given patient and it's not going to be in any way a representation of any given issue and it's not going to have the same size geylang that all the prior digital data sets would have nor would it have the jaw size scaling either so how can that default for a male or female final five julys arrangement starting point and the final point there are entire argument is about the final point right which is completely true here everybody agrees that snow starts with a generic says over way a picture of an individual mouth of just the generic and now you have as opposed to generic you have standard you have individual eyes but it's the defective house their focus is on the end of the orthodontic process which is not individual expressly adopts various pages of the petition including the underlying citation to evidence as its own so those paragraphs are specifically adopted and what the board did in this instance is they looked at the testimony of not one but two witnesses so we have to work with not just saying and this is entirely consistent with the zero three seven patent itself while the final position that will be up to  otherwise you wouldn't need them so everybody this is a cosmetic procedure everybody wants the ideal smile everybody wants the ideal nose not everybody can get that so when when you have the ideal final position and you have a starting point you may stop someplace along that line because you just can't get there for everybody now you'll get there for some people but you won't get there for everybody and that's what the witnesses said and the board well it would be i mean i guess it seemed to me i was having a hard time finding that martz said that in paragraph forty two so he put that aside assume that ma says that in paragraph ninety three i think mr jay's position is that's just description of a series of intermediate positions who are interpretation i think the board explicitly adopted the discussion in column three relative to moving from the first point to the standard you know moving from the individual scan to that what they call the standard model and so you know and that's what they describe as the treatment path i'm showing that on the screen and so i think what the board did i is viewing the record reading statements from dr ma and reading the the zero three seven happened self which talks about it is known in the art that an orthodontist provides a prescription so it's not just you sit in the chair and you can come up with this unique stop point the oath three seven patent doesn't describe that anywhere they're also trying to get to an ideal smile it's the whole point it's a cosmetic procedure so to too narrowly view snow to say well it just has this you know road to rome i don't think that is consistent with the evidence of record or the way that the board weighing this evidence understood these technologies and methodologies to work there's always the ideal endpoint where you stop along the way as as the witnesses have testified and as the board as accepted as substantial evidence is up to the orthodontist that's why you have the orthodontist and that's the value that they're bringing otherwise everyone would just go and you know rely on these computers to do everything for these these claims are directed to an arrangement of teeth and that's all that's required again you are scaling with snow you're moving individual teeth all of that is exactly as described in the zero three seven patent the zero three seven patent is incorporating by reference various aspects of the three d scanning they didn't invent three piece carol just so i understand because i'm getting confused so final arrangement is it scaled or is it not scaled i believe it scaled us to shape because when you create that first model you get the accolade a second saying scale that snow's final arrangement is scale that's two shape of teeth that's what i just heard you say yes because when you start but i thought so that's just about if it scaled anything it's the size of the was snow doesn't do that but it doesn't matter and so well the last go around you just why you're so right and i may have misspoke about scaling the scaling i'm talking about is is is basically overlaying the x ray onto the shapes and so once you make that overla and just every individual tooth as you move to the final position that scaling in there shapes remain the same what about the final arrangements the final the as i understand snow snow it's just the final arrangement is the standard model which goes back to whatever the default sizes and that's that's correct the final arrangement would have the same two shape as the beginning range when you say beginning arrangement i don't know what you mean by the beginning so then if if there are like six datasets the initial data set for an individual patient will have some scaling of the teeth size grow so will the second one the third one the fourth one the fifth one and then the sixth one we revert  to the standard model t for size right we would is that your understanding of snow my understanding is were not reverting back we're maintaining the original mapping and moving to an idealized position using those of the position yes but i'm talking about the size now the if we're talking about size and shape being or are we seeing there i'm just talking about size ok shape is the that going to look like under snow's teaching my understanding is it reverts back to the standard model or whatever the standard default sizing of a male patients to throw or a female patients teeth are so what you it different from what i just said my understanding is that scaling that is done so that is related to size that's carried through throughout the process the shapes are generic and they stage an hour that's my understanding and i believe that was  comes out of south my understanding is the default his is the default for tooth shape and perhaps the the ideal arch the size i guess is where i don't believe the board spoke to that issue i think i mean as i read snow basically the vampire ends up not a vampire well yes we would hope that that's that's the goal but again all of this assumes that you're trying to make a liners and that you need an a a treatment plan may stop at an intermediate place and if without that i don't see how snow how there's evidence saying that snow shows a generic stopping point well what the borg did in this instance was to credit that testimony and find that again in situ is a credit can you look at age eight hundred twenty eight and tell me what in that paragraph says that treatment mace happens some less than the final short term step in the snow contemplat as opposed to saying you might do the sequence of images anywhere along the way which i think is all that that sent the crucial sense of then sentence right that's the that's the sentence i'm looking at i think all that says is after terminating determining the idealized second position which could correspond to any to any point in time during the treatment such as an intermediate or final to the arrangement a sequence of images representing can be taken a where does that suggest that the final and point of the process which is what the calling contemplates can be something other than what's you know is contemplating as the final which is standard and not individual sure and i guess i would point to that parent article such as an intermediate or final two three so we're saying there were not necessarily always going to the end we may is that at intermediate stages of a process that what makes an intermediate is that the actual process is continuing each one of those could be an idealized second position within snow and then you can do a sequence of images of that be going all the way to the end which is what this the census discussing so and so what dr ma saying here is is this is where the doctors come in you know this is where the prescription comes in this is where when the zero three seven pattern talks about prescriptions the doctor has to look at what's going on and pick the point that makes most sense for the patient and that's what this paragraph is being directed to and this is what the board  credited not only for dr ma but also for the second witness dr marts so there's there's substantial evidence there you know as to finding an endpoint and again that this all sort of  supposes we're talking about a liners here and not devices that don't require this kind of resolution which which the claims simply are not really is as you put that why does this particular argument suppose that we're talking understand that this particular argument depended on the view that the devices at issue needed to match the shape of the individual well the reason  make all the canines at the end just you know of the same for all males in the same for all female right well in the reason as snow describes because for a large segment of the population  that ideal model will work and i won't work for everyone and you know we don't dispute that but the reason that it's the model that's used is because it works for most people so i think even accepting all of that i don't know that it tilts the scales are in favor of the appellant here and then finally i would just add that as pointed out in the institution decision what the board made clear is even accepting all of this it would still if you wanted more resolution if you if you knew that you were making a device that required the shapes you would just take the off the shelf scanning technology that's out there because that's the prevalent teaching in the art that was stated in the institution decision i i'm saying they did find that at least with respect to using an off the shelf technology was snow that that was just as obvious as and as you know explain them you know three seven patent they didn't go into explaining the remainder of that ground because they rested on the other but they at least said we agree with that and they that's something that they brought up in their institution decision and then they raise again a final response so i think thank your i won't take up too much more time i just want to address a few points first on this question of dr mock a couple of things one just to note it to begin by noting that at the beginning for no ten the board credits dr but does not say anything about dr ma but it doesn't say directly but it does say relies on petition pay seventeen which relies on both of them and i think as mr mckeon pointed out earlier in the decision the board specifically so as the questioning with judge toronto and my friend brought out dr mind never says that this is a treatment that one of these inner palatial sets would be a treatment goal so even if you agree with everything that he says then that doesn't get the petitioner where it needs to go but it in addition he says something that is quite wrong which is that the idealized second position could be anywhere along the chain and that is just not right if you look at snow you will see that  thousand and twenty six you can see that the animation and snow is not is to the three d standard model you know the that is what the idealized second position is it's always the same it's the three d standard model  speaking of snow and the final position i think judge chen it's worse than your colloquy with my friend brought out because i mean the fangs you know if someone has big teeth i think that they the anyway the animation which is a they shrink with each step progressive sally says it right but he has to have something to base that and so that's what i'm trying to figure out snow doesn't speak in these terms so it seems like this is a speculative thing at best and in terms of reading snow as the say that the teeth are successively shrinking or successively expanding to reach the three d model i guess i would just note that there's no evidence to the contrary no one and that no one in the record submitted any contrary reading of snow and even if you don't agree  the end or the teeth of the three d standard model now you never have shaped because you're using generic teeth from beginning to end so you never have the actual shape you start with a rough approximation of the patient size and you get and our view is and dr valley's view was that it know off the shelf and able to be used generically for everybody in the in the future population finally i think i would just note that the reference to off the shelf scanning technology sure you can see there was technology to scan the  mouth as it existed but the whole point of the invention is that the interpellation steps and the final two physicians are all made a lot tronic lee or digitally before you start treatment and there's no suggestion that that was taught in the art that you can't just take off the shelf create a difficult data set based on the patients actual t v and every which way ship of farm and then based on snow it be very obvious to make your digital data sets based on that all the way to the final end without doing something that this sounds crazy which is to create a final appliance that would be based on some default mouth rather than what you've been working with or all the previous digital data sets and appliance technology and this is brought out in dr marcus deposition the technology to selectively move around individual teeth not just from snow's scan of a patient's mouth not from generic teeth but not just from generic teeth but from the an actual scan of a patient's mouth that technology was not in common use as a priority date and dr march admitted that his deposition that holmgren who's the author of one of the prior art references had a team of ph d s working on exactly that problem as at or around the priority date there's certainly to your getting from a to b using a bunch of different it sets well there are there are discussion of how to get there in the specification involving particular techniques that can be applied but i but in any event what is clear from the claims themselves is that you need not just the original like an image of the original mouth you need also an original and image of the final mouth and you need images of each step in between and you need them before the treatment begins so that you can fabricate all the appliances at that time