[00:00:00] Speaker 01:
please proceed.

[00:00:04] Speaker 01:
How do I say your name, counsel?

[00:00:06] Speaker 03:
It's Greene, your honor.

[00:00:07] Speaker 01:
Greene?

[00:00:08] Speaker 03:
Greene.

[00:00:09] Speaker 01:
Please proceed.

[00:00:11] Speaker 03:
So I'm Jack Greene.

[00:00:12] Speaker 03:
Carter led you to Milburn, representing Agilent.

[00:00:15] Speaker 03:
I'm here with my colleague Ted McDonough, as well as representatives from Agilent, Ping Hong, and Rick Rickfors.

[00:00:24] Speaker 03:
We're pleased to present argument on an appeal from the Board of

[00:00:30] Speaker 03:
on an inter-parties re-examination.

[00:00:33] Speaker 03:
This re-examination was instituted by the predecessor, my client, several years ago and has now reached this court.

[00:00:43] Speaker 03:
The first issue I'd like to address today is Agilent's standing as third-party requester.

[00:00:48] Speaker 03:
This was an issue raised by Waters in motion practice, and this court directed us to address it in our briefs.

[00:00:57] Speaker 02:
Can I just ask you,

[00:00:58] Speaker 02:
Do you or do you not dispute that if Agilent had purchased Aurora completely and Aurora had disappeared, so it was a successor in that interest, in that sense, that the statutory right of action would apply to Agilent?

[00:01:25] Speaker 03:
Yes, Your Honor.

[00:01:26] Speaker 03:
We believe that if Agilent had bought Aurora as a company, certainly we would have standing here.

[00:01:33] Speaker 03:
We believe the same principle applies in this case, which was an asset purchase in which the agreement expressly assigned all of the business, including the rights and reexamination, including the liability for any infringement that might arise from infringement of the patents.

[00:01:49] Speaker 02:
What do you think is necessary to extend

[00:01:56] Speaker 02:
the literal third party requester to some other legal entities.

[00:02:03] Speaker 02:
Successorship or what?

[00:02:05] Speaker 02:
Not just kind of assignment of the right in the proceeding, I assume.

[00:02:09] Speaker 03:
Well, Your Honor, that's a good question.

[00:02:11] Speaker 03:
I think that it requires a binding legal document assigning the rights.

[00:02:18] Speaker 03:
What rights, I guess, is the question?

[00:02:19] Speaker 03:
Well, you know, the rights

[00:02:24] Speaker 03:
arising from the business, which include the right to bring a re-examination.

[00:02:30] Speaker 00:
Did the document actually refer to the re-examination?

[00:02:35] Speaker 00:
It did, Your Honor.

[00:02:36] Speaker 00:
So why is it that Aurora continued to participate in the re-examination without Ashland for a substantial period of time?

[00:02:45] Speaker 03:
I believe that that was simply so that legal knowledge and strategies could be transitioned among counsel.

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And then when

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When Agilent was ready to fully take over the reexamination, they submitted a document which indicated that the real party in interest was Agilent.

[00:03:02] Speaker 00:
And do you think that Aurora would have appealed as the third party requester?

[00:03:09] Speaker 03:
No, Your Honor.

[00:03:10] Speaker 00:
Why?

[00:03:11] Speaker 03:
Because the document that they signed, the asset purchase agreement, assigned all of the rights in reexamination together with the litigation that gave rise to the reexamination.

[00:03:22] Speaker 03:
And so they were no longer an interested party.

[00:03:26] Speaker 01:
Do you believe that jurisdiction would exist if all you had purchased were the rights to pursue the re-exam, short of the rest of the business assets associated with this division?

[00:03:40] Speaker 03:
Your Honor, I haven't tried to consider that particular factual question.

[00:03:44] Speaker 03:
But I think in this case, everything has come to agilent.

[00:03:49] Speaker 03:
And so it's clear that there's standing.

[00:03:52] Speaker 01:
They still exist.

[00:03:53] Speaker 01:
So what do you mean everything has come to Agilent?

[00:03:56] Speaker 03:
Well, it was an Agilent purchase agreement of substantially the entire business.

[00:04:00] Speaker 03:
And the Tang Declaration establishes that there was an assignment of all of the rights incident to that business, including all liability, including all rights to bring legal claims relating to the business.

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And we think that this is one of those claims.

[00:04:17] Speaker 00:
answered me before that said that there was a year delay in Agilent even participating because there was something to do with the transition of counsel.

[00:04:26] Speaker 00:
But isn't there a big difference?

[00:04:27] Speaker 00:
If you said that Aurora had no right to even engage in activities relating to the re-exam or litigation relating to the re-exam, then how could Aurora continue to do that regardless of whether you felt like using the same counsel?

[00:04:46] Speaker 03:
Your Honor, that's

[00:04:48] Speaker 03:
My understanding is that Agilent bought the business, assumed direction of the case.

[00:04:55] Speaker 03:
The same lawyers remained involved.

[00:04:59] Speaker 03:
I don't know.

[00:05:00] Speaker 00:
But it was Aurora that was participating, though.

[00:05:04] Speaker 00:
Agilent's name doesn't show up for over a year, right?

[00:05:08] Speaker 01:
And Aurora continued to participate even when Agilent became involved.

[00:05:14] Speaker 01:
Aurora still filed briefs and still participated.

[00:05:16] Speaker 01:
Their name was still on all of the proceedings.

[00:05:19] Speaker 03:
Yes, Your Honor.

[00:05:20] Speaker 01:
I believe Aurora is a separate entity.

[00:05:22] Speaker 03:
It is a separate entity.

[00:05:23] Speaker 03:
Its name was on the proceedings.

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But my understanding is that Agilent assumed control over the re-examination and had the legal interest in that re-examination from the time of the purchase.

[00:05:34] Speaker 01:
So is it your view that it was improper for Aurora to continue to participate then at that point?

[00:05:39] Speaker 01:
Because only one person can be the third party requester.

[00:05:42] Speaker 01:
You can't have two.

[00:05:43] Speaker 01:
And yet you tag teamed below with the board.

[00:05:46] Speaker 01:
So is it your view, look, either Agilent's improper under your theory of transfer of control, or Aurora's improper.

[00:05:55] Speaker 01:
So is it your view that it was improper for Aurora to continue to participate at that stage in the proceedings?

[00:06:01] Speaker 03:
Well, no, I apologize if I misspoke.

[00:06:05] Speaker 03:
I see it more as a, you have to look at this realistically.

[00:06:08] Speaker 03:
There was a realistic transfer of responsibility from Aurora to Agilent, and it

[00:06:16] Speaker 03:
Today, when we're looking at the right to appeal here, I think it's clear that Agilent is the party requesting reexamination.

[00:06:24] Speaker 00:
But Aurora's name is in the board decision.

[00:06:28] Speaker 00:
Aurora's name is on the caption, and Aurora's name is in the list of parties at the end of the board decision.

[00:06:33] Speaker 00:
Are you telling us that we shouldn't look at the statute to see what the scope of our jurisdiction is?

[00:06:41] Speaker 00:
We should let Agilent decide.

[00:06:44] Speaker 03:
Well, no, you have to look at the statute.

[00:06:46] Speaker 03:
But what I'm saying is that in the context of the statute, when you look at the party requesting reexamination, that that party today is Agilent.

[00:06:55] Speaker 03:
During the period of transition from Aurora to Agilent, it may have been both parties.

[00:07:01] Speaker 03:
But both parties are the ones here today seeking appeal from the board decision.

[00:07:05] Speaker 00:
Right, that's part of the problem, right?

[00:07:07] Speaker 03:
Well, no, today Agilent is seeking appeal, respectfully.

[00:07:12] Speaker 03:
You know, the proceedings before the board were conducted in a way to expedite prosecution, and no document was filed that made a clean break from one to the other.

[00:07:25] Speaker 03:
But I think it's very clear that when you look at the legal document that assigned all of the business and the rights, you look at the conduct of the parties before the board where they were clear the real party in interest is agilent, and this was before the proceedings got to the board.

[00:07:43] Speaker 03:
that it's very common in both board proceedings as well as in district court litigation for there to be a transition over time as responsibility is done.

[00:07:52] Speaker 00:
In district court litigation, there's a formal substitution of parties.

[00:07:56] Speaker 00:
That's a very different animal, isn't it?

[00:07:58] Speaker 00:
In this case, you could have either asked to substitute as the third party requester or filed your own third party request as agilent.

[00:08:08] Speaker 03:
Couldn't you have?

[00:08:11] Speaker 03:
I would say that once Agilent purchased the business, it was no longer an assumed assignment of the reexamination rights.

[00:08:20] Speaker 03:
It was no longer in a position to file its own request for reexamination.

[00:08:23] Speaker 02:
But what about the first option?

[00:08:25] Speaker 02:
Is there a procedural mechanism by which, before the board or in the PTO, you could have requested substitution of Agilent for Aurora as the third party requester?

[00:08:40] Speaker 03:
Well, we think that filing the document indicating who the real party in interest was was the right procedure.

[00:08:47] Speaker 02:
No, I know you think that that's sufficient.

[00:08:48] Speaker 02:
I guess I was asking a question.

[00:08:50] Speaker 02:
Is there a written down procedure by which a formal substitution can occur?

[00:08:58] Speaker 03:
I'm not aware of a written down procedure for substituting parties.

[00:09:01] Speaker 03:
You could, of course, substitute counsel.

[00:09:03] Speaker 03:
But my understanding is that from the moment of assignment, Agilent

[00:09:08] Speaker 03:
assumed legal control and responsibility and liability, and became the party requesting reexamination.

[00:09:15] Speaker 03:
And that gives us standing.

[00:09:17] Speaker 02:
And any distinction, perhaps, between who the third party requester was and is didn't have any legal bite until the moment it became necessary to invoke 134C.

[00:09:28] Speaker 02:
Yes, Your Honor.

[00:09:32] Speaker 00:
Do you want to turn to the merits?

[00:09:34] Speaker 03:
Yes, Your Honor, if I may.

[00:09:39] Speaker 03:
I'm going to focus my time today on the construction of control, which is dispositive on this appeal.

[00:09:50] Speaker 03:
We, of course, continue to press our position on claims 12 and 13, but I think those are well stated in the briefs and do not need to be reached if this Court reverses the Board's construction of control.

[00:10:04] Speaker 03:
Of course, we are looking at the broadest reasonable interpretation of the term control, which appears in the phrase control the pressure drop across the restrictor.

[00:10:14] Speaker 03:
We have to look at the entire ordinary meaning of that word.

[00:10:17] Speaker 03:
Control is an ordinary word.

[00:10:19] Speaker 03:
And below, the waters submitted a dictionary definition.

[00:10:24] Speaker 03:
And now on appeal, we've submitted the complete dictionary definition, which we believe makes it clear that control has a broad meaning

[00:10:33] Speaker 00:
Doesn't the specification, though, equate control with regulate rather than shutting off?

[00:10:40] Speaker 03:
The specification in parts uses the word regulate when they're talking about the same structure that the claim uses the word control.

[00:10:47] Speaker 03:
We think that that difference in words means control should be given a broader meaning.

[00:10:52] Speaker 00:
But isn't the whole point of the patent that you mentioned as laid out in the specification to have a constant, consistent flow, isn't that what is going on here?

[00:11:02] Speaker 03:
I would say that's the primary goal.

[00:11:06] Speaker 03:
But when you look at the operation of the differential pressure transducer, which is the part of the claim that's controlling the pressure drop, that differential pressure transducer has a further function beyond that.

[00:11:20] Speaker 03:
And that function, I think, is in part to protect the system from overpressure caused by operator malfunction or a system problem.

[00:11:32] Speaker 03:
And that's the point the examiner recognized when it applied Asimov as a anticipation reference in combination with some of the secondary references.

[00:11:41] Speaker 03:
And so what we would urge is that this court look at control in the broadest reasonable interpretation, look at the claim language, which does not include any language that further defines control in the way that the board did.

[00:12:00] Speaker 03:
We think the board effectively imported this goal from the specification in order to limit the meaning of control in a way that wasn't proper.

[00:12:10] Speaker 03:
Because under BRI, you have to look at the claim language, apply it as is, unless the specification

[00:12:18] Speaker 03:
really requires a further limitation.

[00:12:20] Speaker 00:
Well, but that's actually what the board meant, right?

[00:12:22] Speaker 00:
I mean, I think the board at least believed it wasn't importing a limitation.

[00:12:26] Speaker 00:
The board believed that everything about the specification related solely to regulation.

[00:12:33] Speaker 03:
And we think that was error.

[00:12:36] Speaker 03:
On the de novo review, if you look at the specification, the specification expressly teaches this risk of overpressure caused by the system.

[00:12:45] Speaker 03:
And the specification doesn't explain

[00:12:48] Speaker 03:
any way to control or guard against that overpressure situation.

[00:12:52] Speaker 03:
And that's why we look at Asimov, which is analogous art, according to the board's finding.

[00:12:58] Speaker 03:
Both of them deal with pumping liquids and gases under high pressure.

[00:13:03] Speaker 03:
And the logical response to an overpressure situation is to cut off the system.

[00:13:09] Speaker 03:
It protects the system, and it also protects the integrity of the results.

[00:13:17] Speaker 03:
So the specification language that I'm referring to specifically is at column seven, lines 23 to 25.

[00:13:25] Speaker 03:
It's referred to in our brief.

[00:13:28] Speaker 03:
And we think that the board didn't address this language.

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And when you look at the specification as a whole, you don't see any requirement that the regulation occur only during the operation of the system.

[00:13:44] Speaker 03:
And that is effectively what this claim construction requires.

[00:13:49] Speaker 03:
The definition of control was not really disputed before the examiner.

[00:13:54] Speaker 03:
The examiner applied this definition in a way that seems quite logical to us, given that this is a system in which a pump is being used.

[00:14:07] Speaker 03:
And if a pump has a problem, the logical thing to do to control the pressure drop and protect the system

[00:14:14] Speaker 03:
is to shut off the flow.

[00:14:18] Speaker 02:
What's the best place in the specification for the proposition that one of the functions of this component is to protect the system either full stop or by shutting off?

[00:14:41] Speaker 03:
Well, I would point to the language that I just did at column 7, lines 22 to 25.

[00:14:47] Speaker 00:
Where does it actually say anything about shutting up?

[00:14:52] Speaker 03:
Well, there is more language that refers to a servomechanism, and that's at column 7, lines 61 to 65.

[00:15:05] Speaker 03:
The exact operation of that servomechanism is nowhere specified.

[00:15:09] Speaker 03:
And that's important, we believe, because under BRI, if the specification doesn't explain something, you have to apply the broadest reasonable interpretation.

[00:15:18] Speaker 03:
I see that I am almost out of time.

[00:15:21] Speaker 01:
OK, we'll go right over here from Mr. Belt, and we'll restore two minutes of your rebuttal time.

[00:15:26] Speaker 00:
Thank you.

[00:15:43] Speaker 04:
Good morning, Your Honors.

[00:15:44] Speaker 04:
I'm Eric Belt of MacArthur in English.

[00:15:46] Speaker 04:
I represent Waters Technologies.

[00:15:50] Speaker 04:
I'd like to begin, if I may, with the jurisdiction question.

[00:15:54] Speaker 04:
I think that the single most important factor, which I think you've all picked up on, is that after the transaction in August of 2012, Aurora continued to exist.

[00:16:06] Speaker 04:
It continued to participate.

[00:16:07] Speaker 04:
It continued to

[00:16:09] Speaker 02:
Well, why is that the single most important consideration?

[00:16:14] Speaker 02:
I mean, you don't, I gather, dispute that the right kind of successor would be the third party requester, even if that's a different legal entity from the one that filed the request.

[00:16:31] Speaker 02:
If Aurora was swallowed up, locked, stocked, and barrowed.

[00:16:36] Speaker 02:
Where does that distinction come from?

[00:16:39] Speaker 02:
This is what I'm stuck on.

[00:16:41] Speaker 02:
It seems to me there's a pretty natural concept here of successorship.

[00:16:45] Speaker 02:
A slightly fuzzy concept, but this one seems to be well within it, and that concept doesn't require the disappearance of the first legal entity.

[00:16:54] Speaker 02:
There are asset purchases, and if they're sufficiently complete, then there's a successorship, even though the original entity continues to exist.

[00:17:03] Speaker 04:
Yeah, but not only did they continue to exist, Your Honor,

[00:17:06] Speaker 04:
They continued to participate.

[00:17:08] Speaker 04:
But why does that matter?

[00:17:09] Speaker 04:
Because that means they could have appealed.

[00:17:11] Speaker 04:
They existed, they were participating, they were at the board hearing.

[00:17:15] Speaker 02:
But we don't know that.

[00:17:15] Speaker 02:
Why shouldn't I assume that they could not have appealed?

[00:17:17] Speaker 02:
Because actually the moment that any of this mattered, which is the appeal time, it didn't matter what was happening before the board until then because the statute didn't come into play.

[00:17:29] Speaker 02:
At that moment, Aurora has zero interest in this proceeding.

[00:17:32] Speaker 02:
They might even lack constitutional standing.

[00:17:35] Speaker 04:
No, they're still in the litigation, Your Honor.

[00:17:37] Speaker 04:
There is pending litigation.

[00:17:39] Speaker 04:
So they have Aurora in Delaware.

[00:17:42] Speaker 02:
Even though Allagent, Agilent had assumed all liabilities as well as control of the litigation.

[00:17:48] Speaker 04:
Aurora had not, there was no substitution of parties in the case.

[00:17:54] Speaker 04:
As a matter of fact.

[00:17:55] Speaker 02:
But why isn't that just a formal matter?

[00:17:58] Speaker 02:
I mean, if

[00:17:59] Speaker 02:
If Aurora had filed here and Agilent had not, I'm a little hard pressed to see how you wouldn't have had a pretty strong argument, which you probably would have wanted to make, that Aurora could not in fact bring this challenge.

[00:18:19] Speaker 02:
It had no, maybe not even a constitutional standing, but in any event, it wasn't the real party in interest anymore.

[00:18:26] Speaker 04:
Yeah, I disagree, Your Honor.

[00:18:27] Speaker 04:
I think that it would have had a constitutional standing, if you're talking about like the consumer watchdog case, because it was actually sued in the litigation.

[00:18:35] Speaker 04:
And it continued to be a party in that litigation.

[00:18:39] Speaker 04:
And let me tell you this one fact.

[00:18:42] Speaker 04:
After the purchase agreement, after we got wind of it, in the litigation, we sent some interrogatories to Aurora.

[00:18:50] Speaker 04:
And we said, tell us about this transaction.

[00:18:52] Speaker 04:
We need to know, are you the right party?

[00:18:54] Speaker 04:
Is Agilent the right party?

[00:18:55] Speaker 04:
because then we need to amend our complain or substitute parties, whatever.

[00:18:59] Speaker 04:
Aurora sent back an interrogatory, sworn interrogatory, saying that Aurora responds that the transaction was an asset purchase following the acquisition.

[00:19:09] Speaker 04:
Aurora remains a corporation under the laws of the state of Delaware.

[00:19:12] Speaker 04:
That's at page 1228 in the

[00:19:14] Speaker 02:
So it might, in fact, have had, as you, I think, are suggesting, a continuing potential liability, even though Agilent assumed the liability, Agilent might have gone bankrupt and then Aurora would have been on the hook.

[00:19:28] Speaker 04:
Well, there were excluded assets as far as we know, because we haven't seen the whole document.

[00:19:33] Speaker 04:
We think that there's some game playing here.

[00:19:35] Speaker 04:
We sought to add Agilent to amend our complaint, and the parties opposed that motion.

[00:19:42] Speaker 04:
Now, we won the motion.

[00:19:43] Speaker 04:
But that tells me that Aurora still has some interest here.

[00:19:49] Speaker 04:
They clearly did, because if they hadn't any more interest, they would have gone like this and would have sought to withdraw from the litigation and would have sought to have withdrawn from the co-pending re-examination.

[00:20:02] Speaker 04:
Why would they even need to participate if they didn't have some sort of interest?

[00:20:07] Speaker 00:
I assume that there was a substantial period of time or at least some period of time where

[00:20:13] Speaker 00:
you were alleging in infringing activities by Aurora before the asset purchase.

[00:20:18] Speaker 04:
Yeah, so we sued Aurora in the fall of 2011.

[00:20:23] Speaker 04:
The request for re-examination was filed in March of 2012.

[00:20:30] Speaker 04:
And the asset purchase was August 24, 2012.

[00:20:36] Speaker 04:
So yes, there was a period of time.

[00:20:37] Speaker 04:
And even after that asset purchase, the case wasn't stayed until January of 2013.

[00:20:42] Speaker 04:
All through the fall, we were filing motions back and forth doing the typical things you do in litigation.

[00:20:47] Speaker 04:
Now it was Aurora that was participating in that.

[00:20:50] Speaker 04:
And Aurora, of course, in the pending re-examination was filing its third-party comments and so forth.

[00:20:58] Speaker 04:
So I think that's why Aurora existed at the time.

[00:21:02] Speaker 04:
And because they existed, they had an interest, they were on the hook in the litigation potentially, they

[00:21:09] Speaker 01:
Does the agreement not exist in this record, the transfer agreement of assets?

[00:21:14] Speaker 04:
No.

[00:21:14] Speaker 04:
It doesn't.

[00:21:15] Speaker 04:
We asked for it in the litigation.

[00:21:16] Speaker 04:
They didn't give it to us.

[00:21:17] Speaker 04:
They said, no, you don't need that.

[00:21:19] Speaker 04:
All they did was say it was an asset purchase.

[00:21:21] Speaker 04:
What we know about it is that interrogatory answer that we got.

[00:21:25] Speaker 02:
Then the quote.

[00:21:27] Speaker 02:
We also have the Tang Declaration submitted to us, which has at least some block quotes.

[00:21:33] Speaker 04:
Yeah.

[00:21:33] Speaker 04:
Isn't that interesting that it's only some parts of it, and they didn't put in the whole

[00:21:38] Speaker 04:
agreement.

[00:21:39] Speaker 04:
I'd like to see the whole agreement.

[00:21:41] Speaker 04:
I don't know what's in there.

[00:21:42] Speaker 04:
But what we do know, what we can tell from the two or three block quotes there, is that there were excluded assets.

[00:21:49] Speaker 04:
And we don't know what all the assets were that were purchased.

[00:21:52] Speaker 04:
Again, it would be like to know.

[00:21:53] Speaker 04:
I think they were being coy here, and I think that they were playing games.

[00:21:56] Speaker 04:
I don't know why, but we shouldn't.

[00:22:00] Speaker 04:
I mean, I think that because of that, there's probably some interest or something that is going on.

[00:22:06] Speaker 04:
So Aurora

[00:22:08] Speaker 04:
easily could have filed the appeal here, and then I don't think we'd have this jurisdictional question.

[00:22:16] Speaker 02:
Can I just ask, do you view that as a jurisdictional matter?

[00:22:20] Speaker 02:
Why?

[00:22:20] Speaker 04:
Standing, I guess I'm using those terms interchangeably.

[00:22:28] Speaker 02:
This is all about the scope of 311.

[00:22:34] Speaker 04:
This 141 is one of them.

[00:22:36] Speaker 04:
It's at 315.

[00:22:38] Speaker 04:
It appears in a few places.

[00:22:39] Speaker 04:
Section 141 says the patent owner or the third party requester may appeal.

[00:22:46] Speaker 04:
Section 315B of 35 USC 315B says it's the third party requester that may appeal.

[00:22:55] Speaker 04:
So it's all over the patent code.

[00:23:00] Speaker 02:
I don't know if you can enlighten me on this, but I mean, our jurisdictional statute, which is 1295, that's the one that gives us jurisdiction.

[00:23:07] Speaker 02:
This stuff doesn't give us jurisdiction.

[00:23:09] Speaker 02:
It just provides various rights of action for appeal.

[00:23:13] Speaker 02:
Before it was amended, the relevant section simply said, decisions of the board on applications and interferences.

[00:23:22] Speaker 02:
That covered re-exam, is that right?

[00:23:26] Speaker 04:
Of what statute?

[00:23:27] Speaker 04:
1295.

[00:23:27] Speaker 02:
1295.

[00:23:32] Speaker 04:
And, you know, I didn't look at that, but that's actually very interesting.

[00:23:37] Speaker 02:
I don't know that... I mean, we had appeals on reexamination.

[00:23:40] Speaker 04:
Yeah, I mean, we've had plenty of appeals.

[00:23:42] Speaker 04:
This is a diversion, I'm sorry.

[00:23:46] Speaker 04:
Well, the versions that I've been citing to, and I think opposing counsel has been citing to it, has been the pre-AIA versions of 141 and 315 and so forth.

[00:24:02] Speaker 04:
I just want to pick up on, before I leave this section and go on to control, I want to pick up on one thing that Judge Moore, I think, said.

[00:24:08] Speaker 04:
You used the term tag team.

[00:24:12] Speaker 04:
As a matter of fact, during the reexamination, it was never clear to us that Agilent was fully participating in this.

[00:24:19] Speaker 04:
I mean, it was always Aurora, Aurora's counsel, Ms.

[00:24:22] Speaker 04:
Lieberman was signing papers.

[00:24:24] Speaker 04:
They appeared, Aurora appeared at the board hearing in April of 2014.

[00:24:30] Speaker 04:
And it was never very clear to us why they were there.

[00:24:34] Speaker 04:
I don't dispute that they had a right to be there as a privy, but as a privy, and this might have been a question that Judge Toronto asked, they actually could not have become a third party requester.

[00:24:48] Speaker 04:
I think they would have been barred.

[00:24:49] Speaker 02:
Right, as a mere privy.

[00:24:51] Speaker 02:
I think there's a good comparative statutory argument that is a mere privy, but there's

[00:24:57] Speaker 02:
that doesn't exclude being a particular kind of privy, namely an actual legal successor and interest to the one... Right, and I think that the distinction would be, if you're looking for one, the case where Agilent ceases to exist.

[00:25:14] Speaker 04:
That's the easiest one.

[00:25:15] Speaker 00:
I'm sorry, Aurora ceases to exist.

[00:25:17] Speaker 00:
So in this case, because all we have is an asset purchase with some agreements back and forth that we don't really know what they are,

[00:25:24] Speaker 00:
that we don't have a situation in which they would be defined under Delaware law or any law as a successor in interest.

[00:25:33] Speaker 04:
As far as I know, that is correct, Your Honor.

[00:25:38] Speaker 01:
And do you believe that's because under Delaware law, the successor in interest, the party has to cease to exist?

[00:25:44] Speaker 01:
It's not enough if they divide off in its entirety, don't retain any assets, all of

[00:25:50] Speaker 01:
A business unit, for example?

[00:25:51] Speaker 04:
Yeah, I think the case of a business unit.

[00:25:53] Speaker 04:
But again, we don't know what this transaction was.

[00:25:56] Speaker 04:
It's not in the record.

[00:25:57] Speaker 01:
So is really the issue here that we're unsure and that they haven't provided their obligation to establish jurisdiction?

[00:26:05] Speaker 01:
And so is it the case here that they haven't met that obligation?

[00:26:09] Speaker 01:
Because what is clear from the record are some things were retained.

[00:26:13] Speaker 01:
We don't know what things were retained.

[00:26:15] Speaker 01:
They haven't even supplied the full agreement to understand whether or not

[00:26:19] Speaker 01:
we could treat them under the state law as a successor in interest.

[00:26:23] Speaker 01:
Is that really the right way to look at this case?

[00:26:27] Speaker 04:
I would say it slightly differently.

[00:26:31] Speaker 04:
Yes, they do have the burden.

[00:26:33] Speaker 04:
And yes, I think that Agilent or Aurora should have become more forthcoming in terms of what this deal was so that we would not

[00:26:40] Speaker 04:
I needed to know, as lead counsel in the litigation below, what the actual deal was.

[00:26:45] Speaker 01:
And we needed to know.

[00:26:46] Speaker 01:
And you need to know.

[00:26:47] Speaker 01:
There's a distinction between privies and third-party requesters.

[00:26:50] Speaker 01:
And so now we need to figure out which of those two categories they fall into.

[00:26:54] Speaker 04:
Right.

[00:26:54] Speaker 04:
But I am pretty sure that Aurora remained the third-party requester and that all that Agilent was and ever was was a privy or a real party in interest.

[00:27:07] Speaker 04:
And the reason I think that's the case, Your Honor, is because if it truly was some sort of successor in interest, Aurora would have withdrawn, both from the litigation and from the reexaminations.

[00:27:25] Speaker 04:
And yet they continue to participate.

[00:27:27] Speaker 04:
I don't buy it that there needed to be a transition of counsel.

[00:27:31] Speaker 04:
That doesn't take eight months.

[00:27:33] Speaker 04:
I've transitioned into other cases before.

[00:27:35] Speaker 04:
That can't take eight months.

[00:27:36] Speaker 04:
It was eight months from August 24th, 2012 when the transaction took place until April, I think it was 23rd or 26th, when 2013, eight months later, when Agilent finally filed that paper saying we'd like to be now the real party in interest.

[00:27:56] Speaker 02:
Can you remind me how did this Tang declaration come to us?

[00:28:00] Speaker 02:
Was there a motion practice?

[00:28:02] Speaker 04:
Yes, there was motion practice in front of a single judge, Judge Wallach.

[00:28:06] Speaker 04:
Who moved for what?

[00:28:08] Speaker 04:
We moved to dismiss this appeal.

[00:28:13] Speaker 02:
And then in response, Agilent submitted the declaration.

[00:28:18] Speaker 02:
That is correct.

[00:28:19] Speaker 02:
Did you have any opportunity for, let's call it discovery,

[00:28:26] Speaker 02:
to get the actual transfer of assets agreement?

[00:28:32] Speaker 01:
In this case, not in the litigation?

[00:28:33] Speaker 04:
Yeah, yeah, yeah.

[00:28:34] Speaker 04:
As far as I know, there's no discovery at this point.

[00:28:37] Speaker 04:
I mean, what we said in our reply when that was put in, we said, we don't have the entire, we don't have the record at all.

[00:28:45] Speaker 04:
We don't have the agreement.

[00:28:47] Speaker 04:
And under the best evidence rule, you can't even take that into consideration.

[00:28:53] Speaker 04:
So at that point, before Judge Wallach had issued the order denying and sending it up to this panel, I think that they very well could have, they being Aurora or Agilent, very well could have submitted some sort of surreply and submitted it.

[00:29:08] Speaker 00:
But in your reply, you objected to consideration of this and that was deferred by the, I doubt it was a single judge, but it was deferred by the motions panel to the merits panel.

[00:29:20] Speaker 04:
Correct.

[00:29:21] Speaker 04:
And I only say Judge Wallach because he was the one who signed the order.

[00:29:25] Speaker 02:
So can you, on the merits, why is the broadest reasonable interpretation one that excludes controlling the pressure drop by shutting it off when it reaches an unhappy level?

[00:29:42] Speaker 04:
Everything about the specification is about maintaining even flow.

[00:29:47] Speaker 04:
It's regulating.

[00:29:47] Speaker 04:
When you look at, I think it's

[00:29:51] Speaker 04:
the key passage there at column four, lines 24 to 42.

[00:29:57] Speaker 04:
I think Judge O'Malley picked up on that, the words regulate and control are used interchangeably in that same paragraph.

[00:30:05] Speaker 04:
And everywhere else in the specification, it's all about how do you maintain flow, precise flow, so that you're getting good results in the, not tainted results in the chromatography.

[00:30:20] Speaker 04:
There's no indication anywhere in the specification that the inventors were concerned with blowing up the test tubes.

[00:30:28] Speaker 04:
That's Asimov.

[00:30:28] Speaker 02:
Asimov was concerned with supplying... Would this cover a situation in which the on-off switch said, make it off if it's above this range, off if it's below this range, and that was a pretty compressed range?

[00:30:47] Speaker 02:
I'm trying to understand the difference between how precise maintaining an even flow has to be.

[00:30:55] Speaker 02:
If it says, OK, if it fluctuates, whatever a little bit, we'll consider that even.

[00:31:00] Speaker 02:
And if it's outside that, off.

[00:31:02] Speaker 04:
Right.

[00:31:02] Speaker 04:
So when you look at the specification, if you understand what's going on here, and you read Dr. Chordia's declaration, which, by the way, was unrebutted.

[00:31:11] Speaker 04:
There was no expert on the other side.

[00:31:14] Speaker 04:
It's all about how do you get

[00:31:17] Speaker 04:
results that are not tainted.

[00:31:20] Speaker 04:
And the way that in the past, in the prior art, what was tainting the results was these sort of wild oscillations in the flow rate.

[00:31:29] Speaker 04:
So the idea here is to get down to some sort of manageable level so that you're not getting starts and stops that would interfere with a mass spectrometer or whatever that you hook up to the chromatography lab equipment.

[00:31:42] Speaker 04:
So unlike, say, Asimov, which is concerned with

[00:31:46] Speaker 04:
do you want to flood a boiler that you're supplying oil to, and you don't want to do that because then the whole thing blows up and your house blows up.

[00:31:52] Speaker 04:
That was Asimov.

[00:31:54] Speaker 04:
There's no indication here that, you know, a bunch of test tubes and columns on a lab bench that the inventors were concerned with shutting it down.

[00:32:01] Speaker 04:
In fact, shutting it down would actually be contrary to the whole purpose of this invention, which is to make sure that you get your results so that you can perform your drug discovery or blood analysis or whatever it is they're using the equipment for.

[00:32:15] Speaker 00:
Yeah, just one more question.

[00:32:17] Speaker 00:
They don't cite it in the gray brief, so I'm not sure it's even that meaningful to raise something at this point.

[00:32:23] Speaker 00:
But at the bottom of column seven, there is a reference to a servo control system as it relates to the differential transducer being used as a mass flow transducer.

[00:32:36] Speaker 00:
And somehow your opponent is arguing that because it's not clear what that is, that

[00:32:43] Speaker 00:
By definition, it might therefore be a shutoff valve.

[00:32:48] Speaker 04:
Yeah.

[00:32:48] Speaker 04:
No, I disagree, because what it says there at the very last line here is that you're operating it, quote, and this is about line 64, in accordance with the requirements of the present invention.

[00:32:59] Speaker 04:
And when you go back and look at what the requirements of the present invention, and it's all about maintaining this

[00:33:04] Speaker 04:
even flow to avoid all the fluctuations.

[00:33:07] Speaker 04:
So I don't understand how you can read that and say, well, it's about stopping it.

[00:33:11] Speaker 02:
So the servo there would have to be adjusting rather than simply sending a, please stop now.

[00:33:18] Speaker 04:
Oh, absolutely.

[00:33:19] Speaker 04:
It's adjusting so that you're, you know, that what's happening here in the system is that the pressure, this is highly compressible or compressible fluids that behave erratically.

[00:33:30] Speaker 04:
Fluids behaving badly is the way I like to say it.

[00:33:32] Speaker 04:
And the whole idea is

[00:33:34] Speaker 04:
You want to do something that is taking into account all of these.

[00:33:40] Speaker 04:
The state is changing.

[00:33:41] Speaker 04:
You have pressure and temperature changes.

[00:33:44] Speaker 04:
You want to keep adjusting it as it's going along to account for those pressure changes and so forth.

[00:33:50] Speaker 04:
That's really the idea here.

[00:33:52] Speaker 01:
OK.

[00:33:52] Speaker 01:
Thank you, Mr. Bell.

[00:33:53] Speaker 01:
Thank you, Your Honors.

[00:33:54] Speaker 01:
We have two minutes of rebuttal, Mr. Green.

[00:34:02] Speaker 03:
Thank you, Your Honors.

[00:34:05] Speaker 02:
I have to remind the board this is a broadest reasonable interpretation.

[00:34:09] Speaker 02:
Can I ask you about the threshold question?

[00:34:10] Speaker 02:
I'm sorry.

[00:34:11] Speaker 02:
The point that I guess I'm fixing on now is the fact that Aurora remains a defendant in the district court litigation with potential liability, at least if Agilent, which has agreed to assume a liability, goes bankrupt.

[00:34:29] Speaker 02:
Your Honor, that case... That makes them a real entity with a real interest in

[00:34:34] Speaker 02:
in the dispute.

[00:34:35] Speaker 02:
I mean, respectfully, Your Honor, I would say no.

[00:34:38] Speaker 03:
The case below stayed.

[00:34:39] Speaker 03:
There's been no opportunity for Aurora to formally withdraw.

[00:34:43] Speaker 00:
But is it true that you objected to adding Agilent as a defendant?

[00:34:51] Speaker 03:
I wasn't below.

[00:34:51] Speaker 03:
I don't know for sure.

[00:34:53] Speaker 03:
But my understanding is that the document

[00:34:57] Speaker 00:
that is quoted in detail in the Tang Declaration makes it perfectly clear that Agilent has- Why didn't you submit the whole document when there was an argument made that this wouldn't be the best evidence and that the court shouldn't consider it?

[00:35:11] Speaker 00:
And we still haven't made a determination as to whether we could consider it.

[00:35:14] Speaker 00:
Why didn't you submit the whole document?

[00:35:17] Speaker 03:
Well, because it includes financial terms.

[00:35:19] Speaker 03:
And we thought, for purposes of determining jurisdiction, block quoting- We were just supposed to trust you.

[00:35:26] Speaker 00:
that certain things are all we need to know.

[00:35:30] Speaker 03:
We're happy to submit the whole document if you have any doubt about this, but I take exception to Council's suggestion that they objected to the Tang Declaration in reply on the motion because it didn't.

[00:35:45] Speaker 03:
The evidentiary objections only come up now.

[00:35:48] Speaker 02:
Well, put aside the evidentiary objections.

[00:35:51] Speaker 02:
The fact is the excerpts leave maybe not a lot of questions, but at least some because of the excluded assets language.

[00:35:59] Speaker 03:
Well, actually, if you read the Tang Declaration and you read the quoted language, it's very clear that the assigned assets include the business and the re-examination and the liability.

[00:36:11] Speaker 00:
There's no definition of business.

[00:36:15] Speaker 03:
Well, the business is substantially all the business of Aurora.

[00:36:18] Speaker 00:
You're making a lot of representations here that are not anywhere in the record.

[00:36:23] Speaker 00:
That's part of the problem.

[00:36:24] Speaker 03:
Well, we were taken by surprise that this was a real issue on appeal here.

[00:36:31] Speaker 03:
And we put in the Tang Declaration to try to make it very clear that there was nothing mysterious going on here, that this had been a complete asset purchase, and all the reexamination rights had been assigned.

[00:36:44] Speaker 03:
When we didn't get an objection to the Tang Declaration on the motion, we thought that it was sufficient evidence of that underlying legal fact.

[00:36:51] Speaker 03:
So as a matter of state law, I don't believe there's any doubt that Agilent is the successor in interest and that

[00:36:58] Speaker 03:
The right of a third party requester to appeal to this court can be assigned as part of the business, and that Agilent is the only party that has that right.

[00:37:07] Speaker 01:
What is your best site under Delaware law for why Agilent, or under any law, for why Dagellin is clearly, unquestionably in your view, the successor in interest?

[00:37:17] Speaker 01:
That is a legal test under state law.

[00:37:19] Speaker 01:
I certainly don't have a lot of experience in it.

[00:37:22] Speaker 01:
I can't be nearly as certain as you.

[00:37:23] Speaker 01:
So what is your best site for why that's true?

[00:37:26] Speaker 03:
Your Honor.

[00:37:28] Speaker 03:
If it's permissible, I'd like to submit a letter with my best side.

[00:37:31] Speaker 03:
I don't have that now.

[00:37:32] Speaker 03:
But I would refer the court to the cases we cited permitting the transfer of legal rights under other statutes in litigation.

[00:37:44] Speaker 03:
You can transfer defenses.

[00:37:45] Speaker 03:
You can transfer claims.

[00:37:48] Speaker 01:
If all you did was transfer defenses and claims, would that put you in the privy category as opposed to the successor and interest bucket?

[00:37:57] Speaker 01:
I think that would be a privy and not a successor in interest.

[00:38:00] Speaker 01:
Right.

[00:38:00] Speaker 01:
And so you see, for us, the difficulty is the statute distinguishes between privies and third party requesters, who I would assume a successor in interest would be treated as a third party requester, but a privy would not, because the statute draws that distinction.

[00:38:16] Speaker 03:
It does.

[00:38:16] Speaker 03:
And that's why our position, and we tried to make this clear in the papers, and I urge you to read the papers

[00:38:22] Speaker 03:
because we try hard to explain how all of the liability and rights are assigned.

[00:38:29] Speaker 03:
We are a successor in interest.

[00:38:31] Speaker 03:
The right of a third-party requester can be assigned using a legal document like this, and that gives us standing to appeal here.

[00:38:40] Speaker 00:
Your opening brief, you actually describe Agilent as a privy, and you actually make a privy argument, and you say Agilent as a privy.

[00:38:49] Speaker 00:
Right now you're saying you concede that if you only fell in the privy bucket that you wouldn't be a third party requester.

[00:38:57] Speaker 00:
So which is it?

[00:38:59] Speaker 03:
It's successor in interest third party requester.

[00:39:03] Speaker 03:
We used this language privy in order to try to convey this legal right, but once we started briefing this it became clear that our standing is based as a successor in interest.

[00:39:19] Speaker 01:
Okay, thank both counsel for their argument.

[00:39:21] Speaker 01:
It's been very helpful.

[00:39:23] Speaker 01:
Next, let's move on to the next case.