[00:00:03] Speaker 01:
Next case is Manatec, Incorporated, Versus Wellness Quest and Holly Reginald McDaniel, 2016, 1295.

[00:00:15] Speaker 01:
Ms.

[00:00:16] Speaker 01:
Stafford.

[00:00:18] Speaker 04:
Thank you, Your Honor.

[00:00:24] Speaker 04:
May it please the court.

[00:00:26] Speaker 04:
Nicole Stafford, representing Appellates.

[00:00:28] Speaker 04:
Your Honors, this case is a textbook example of a patentee improperly attempting to expand the scope of the claims through claim construction beyond their plain and ordinary meaning without sufficient basis in the intrinsic record to do so.

[00:00:42] Speaker 04:
Under Manateeck's broad construction, which the district court adopted, an isolated and purified acetylated mannose could be in monomeric form or could be part of an oligomer or polymer and need not be isolated or purified at all.

[00:00:56] Speaker 04:
As explained in appellants briefing,

[00:00:58] Speaker 04:
The district court's claim constructions are erroneous for multiple reasons.

[00:01:02] Speaker 04:
Today I'd like to focus on three specific points.

[00:01:05] Speaker 04:
First, the district court erred in construing acetylated mannose by relying on general statements about saccharides and sugars in the specification that the district court admits in its markman order at APPX

[00:01:17] Speaker 04:
do not provide a definition of the term acetylated mannose.

[00:01:21] Speaker 01:
General statements matter, don't they?

[00:01:23] Speaker 01:
They're in the specification.

[00:01:25] Speaker 01:
And the statement of acetyl mannose is accompanied by including polysaccharides and oligosaccharides?

[00:01:37] Speaker 04:
Well, the general statements in the specification never speak to what acetylated mannose is and do not speak to what an isolated and purified acetylated mannose is.

[00:01:46] Speaker 04:
These statements just generally say an embodiment of the invention includes the use of saccharides, which may be in monomeric, oligomeric, or polymeric forms.

[00:01:55] Speaker 04:
In other places, they say that saccharides can be found in nature in monomeric, oligomeric, or polymeric forms.

[00:02:04] Speaker 04:
The fault with the Manatex construction that the district court adopted is they followed this faulty logic where

[00:02:12] Speaker 04:
The specification says saccharides may be in monomeric, oligomeric, or polymeric forms, and or in derivatized or underevatized forms.

[00:02:22] Speaker 04:
Then they say that acetylated mannose is a saccharide.

[00:02:26] Speaker 04:
And then they reach the faulty conclusion that because acetylated mannose is a saccharide, it must exist and must be included in monomeric, oligomeric, polymeric forms.

[00:02:36] Speaker 04:
And what they leave off is, of course, the other general statement that's included throughout the specification.

[00:02:41] Speaker 04:
derivatized or under-derivatized forms.

[00:02:44] Speaker 04:
A lot of these forms are mutually exclusive.

[00:02:46] Speaker 04:
You can't both be derivatized and under-derivatized at the same time.

[00:02:51] Speaker 01:
You also can't both be a monomer and a polymer at the same time.

[00:02:54] Speaker 01:
Isn't the problem that the patent was drafted to include all possibilities?

[00:02:59] Speaker 04:
Well, I think the patent was drafted that way.

[00:03:00] Speaker 01:
And so the district court grabbed the use of these terms, and now you're saying the court should not have done that.

[00:03:08] Speaker 04:
The court should not have done that.

[00:03:09] Speaker 04:
The patent was drafted broadly with respect to a lot of different aspects and embodiments that included saccharides that could be in all these different forms.

[00:03:18] Speaker 04:
The patent wasn't drafted to include that acetylated mannose, which is a specific chemical compound, a monomer, could be in all these different forms.

[00:03:26] Speaker 04:
And in fact, there are a number of different examples.

[00:03:28] Speaker 03:
Isn't your proposal, aren't you reading examples three and five completely out of the specification when you do this?

[00:03:35] Speaker 04:
No, Your Honor.

[00:03:36] Speaker 04:
Examples three and five merely include different embodiments.

[00:03:39] Speaker 04:
And they say, for example, they can include a list of different naturally occurring substances.

[00:03:44] Speaker 04:
None of those examples speak to what is isolated and purified.

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And none of them speak to what is a set of manos.

[00:03:50] Speaker 03:
That's a different question than that.

[00:03:51] Speaker 03:
I mean, you sort of merge your two arguments.

[00:03:53] Speaker 03:
You're saying, well, that it's got to be limited to its monomer firm, because otherwise it's not isolated and purified.

[00:03:59] Speaker 03:
So it's true that with respect to the first question, isolated manos, that there are references

[00:04:09] Speaker 03:
throughout the specification to the various forms, right?

[00:04:12] Speaker 03:
No.

[00:04:13] Speaker 04:
Acetylated mannose, its plain and ordinary meaning, is simply a monomer of mannose that has been derivatized within a Cetyl group.

[00:04:21] Speaker 01:
And in fact, if you look at... I'm looking at column 8, line 11, that says acetylated polymannose.

[00:04:27] Speaker 01:
So obviously, polymers of acetylated mannose were included.

[00:04:32] Speaker 04:
So this is column 1?

[00:04:34] Speaker 04:
Column 8, line 11.

[00:04:37] Speaker 04:
Column 8, line 11.

[00:04:42] Speaker 04:
Well, it's our position that acetylated polymannose is different than acetylated mannose.

[00:04:46] Speaker 04:
If you look at claim 8 of the 431, that confirms that.

[00:04:51] Speaker 04:
Claim 8 says, in pertinent part, wherein the acetylated mannose is obtained from the group consisting of aloe vera and acetylated polymannose.

[00:05:01] Speaker 04:
According to the district court's claim construction, it should say wherein the acetylated mannose is or comprises

[00:05:07] Speaker 04:
aloe vera, and acetylated mannose, poly mannose.

[00:05:10] Speaker 01:
Those are two different things.

[00:05:11] Speaker 01:
I'm looking at column six.

[00:05:15] Speaker 01:
Lines 40 at sec talks about synthetic monomeric, oligomeric, and or polymeric forms of acetylated mannose.

[00:05:26] Speaker 01:
So why was it so wrong that the district court interpreted acetylated mannose to include polymers as well?

[00:05:35] Speaker 04:
Well, as the district court acknowledges in its markment order, that's not a special definition of acetylated mannose.

[00:05:42] Speaker 04:
And if the patentee is not acting as its own lexicographer, you have to go back to its plain and ordinary meaning.

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Moreover, that list says and or.

[00:05:50] Speaker 04:
And it doesn't just list acetylated mannose.

[00:05:54] Speaker 04:
It lists gum gatti, gum tragecant, glucosamine, cornstarch, and aribonolactan.

[00:06:00] Speaker 01:
What about separated and isolated?

[00:06:03] Speaker 01:
That's your second point.

[00:06:05] Speaker 04:
Yes.

[00:06:05] Speaker 04:
So going to the second point of separated and isolated, we believe that the district court erred by failing to give meaning to both terms.

[00:06:11] Speaker 04:
Specifically, the district court fails to give any meaning to the term purified.

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Moreover, the district court fails to give proper weight to the prosecution history of the 807 patent, which is the parent of both of the 431 and the 220 patents.

[00:06:24] Speaker 04:
And that is the prosecution where isolated and purified was first introduced into the claims to distinguish prior art.

[00:06:30] Speaker 04:
Now, the term isolated and purified exists nowhere in the specifications.

[00:06:34] Speaker 04:
It was introduced into the claims about four or five years into prosecution of the 807 patent.

[00:06:41] Speaker 01:
If that's an uncertain term, who's responsible for it being introduced into the claims?

[00:06:48] Speaker 04:
The patentees.

[00:06:49] Speaker 04:
Of course.

[00:06:49] Speaker 04:
They introduced it.

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And so I think that when you're construing what that means, you have to look at the specific file history associated with that.

[00:06:56] Speaker 01:
But you're arguing now that it's isolated from other saccharides.

[00:07:01] Speaker 04:
Well, they're arguing it's not isolated from other saccharides.

[00:07:03] Speaker 04:
They're arguing that it just means that it's isolated from something that's unwanted.

[00:07:07] Speaker 04:
We think that's a problematic construction because it gives no meaning, even though this was a critical element that was added to distinguish prior art.

[00:07:14] Speaker 04:
Moreover, when that term was added into the claims, the examiner rejected the claims as written description and said specifically that the generic disclosures

[00:07:28] Speaker 04:
And those are the same disclosures that you're pointing to that are relied upon by the District Court of Manatec, did not provide written description for the newly claimed genus comprising nutritionally effective amounts of isolated and purified specific saccharides.

[00:07:42] Speaker 04:
And that's at APPX 6235 and 6236.

[00:07:45] Speaker 04:
Now in response, the applicants did not disagree and say, oh no, that generic disclosure there, it supports isolated and purified acetylated mannose and other specific saccharides.

[00:07:57] Speaker 04:
They merely pointed to example two solely to support this limitation.

[00:08:03] Speaker 04:
And they said specifically, the present application includes an example directed to a composition of individual sugars, implying that the isolated and purified language when it's applied to specifically identified saccharides is denoting individual sugars and not in all these other forms.

[00:08:18] Speaker 04:
And they said specifically, please see example two, which is directed to a composition that includes 25 kilograms each of and then lists eight different saccharides.

[00:08:28] Speaker 04:
which would have to be isolated and purified at some point.

[00:08:31] Speaker 04:
And this is from the APPX 6229.

[00:08:34] Speaker 04:
And so the district court totally ignores this file history.

[00:08:37] Speaker 04:
And this is the critical file history that is when the PTO eventually allows isolated and purified to come in as a claim concept.

[00:08:45] Speaker 04:
Now, they want to point to examples three and five.

[00:08:47] Speaker 04:
But the file history that relies upon examples three and five was added after the claims had already been allowed in a 1.312 amendment after allowance.

[00:08:58] Speaker 04:
And all they told the patent office there is they'd already gotten claim one allowed, which had the isolated and purified acetylated mannose, the isolated and purified other saccharides.

[00:09:07] Speaker 04:
And they said, we're just adding dependent claims that are narrower in scope.

[00:09:10] Speaker 04:
And then they said, in support of those claims, here's examples three and five, and here's some other language.

[00:09:15] Speaker 04:
And if you want to read that what they're saying is consistent with the previous file history, I think you read that those examples three and five, which referenced the earlier examples, could show where you could get sources.

[00:09:27] Speaker 04:
of additional sacrifice.

[00:09:29] Speaker 04:
But it's our view that really you should focus on example two and the specific file of history in the 807 where it was directly addressed that these generic disclosures that they're pointing to now that this report relies upon

[00:09:43] Speaker 04:
do not support isolated and purified, specifically identified, saccharides.

[00:09:47] Speaker 02:
Can you address the following confusion I have a little bit?

[00:09:51] Speaker 02:
And this has to do with the isolated and purified.

[00:09:54] Speaker 02:
Yes.

[00:09:54] Speaker 02:
The composition that is claimed is a composition in which the Manos piece and the saccharides are together.

[00:10:03] Speaker 02:
At that point, Manos is not separate from.

[00:10:07] Speaker 02:
the other from the saccharides.

[00:10:09] Speaker 02:
So your view is that the claim, although it claims a composition in which these things are together, implicitly refers to some earlier period of time.

[00:10:23] Speaker 02:
Makes it sort of temporal dependent at which, at some earlier period of time, the things were separate?

[00:10:32] Speaker 04:
If I understand your question correctly, I think the answer is yes, because the claims are to

[00:10:37] Speaker 04:
a combination of different isolated and purified specific saccharides.

[00:10:43] Speaker 02:
And the reason this is important.

[00:10:44] Speaker 02:
But they're not process claims.

[00:10:47] Speaker 02:
They can be infringed by a composition in which the saccharides and the nanos are together.

[00:10:57] Speaker 02:
Yes.

[00:10:58] Speaker 02:
And I guess it seems to me funny or odd or something to introduce into that composition claim

[00:11:06] Speaker 02:
an interpretation that says whether or not the very same composition in which the things are together is covered by the claim depends on where the components once were in the past.

[00:11:19] Speaker 04:
Well, I think that that's because of the foul history that was associated with getting those claims allowed.

[00:11:23] Speaker 04:
So isolated and purified was added in part because of prior art that was nutraceutical-based prior art.

[00:11:29] Speaker 04:
And so one of those pieces of prior art that we focus on expressly in our briefing, but there's others, is Campbell.

[00:11:35] Speaker 04:
And Campbell is an additive that was given to animals as a nutritional supplement that included a seaweed extract.

[00:11:42] Speaker 04:
And that seaweed extract is expressly identified in Campbell as including six of the list of specifically identified saccharides in combination with aloe vera extract.

[00:11:51] Speaker 04:
And both of those things were substances that had been processed and that had removed unwanted substances.

[00:11:56] Speaker 04:
But when you combine those two together, which is an example three of the Campbell prior art reference,

[00:12:02] Speaker 04:
then you get basically the claims under the district court's claim construction.

[00:12:06] Speaker 02:
It snares the prior art.

[00:12:07] Speaker 02:
Basically or exactly?

[00:12:08] Speaker 04:
You get exactly.

[00:12:09] Speaker 04:
You get exactly.

[00:12:11] Speaker 04:
My language could have been better.

[00:12:13] Speaker 04:
But you get exactly the claims under the district court's claim construction.

[00:12:19] Speaker 04:
And we are allowed under Diamond Scientific, despite the fact that one of the appellants is in privity with Manatec,

[00:12:28] Speaker 04:
point out the particularly prior art in this case that was distinguished expressly during prosecution to urge a narrower construction.

[00:12:35] Speaker 04:
Because the issue is not that we use acetylated mantos.

[00:12:38] Speaker 04:
The issue is that we use, just like Campbell, an aloe vera extract processed.

[00:12:43] Speaker 04:
And so the issue is whether or not you can say that seaweed is isolated and purified list of five different specific saccharides, and whether you can say that aloe vera leaves or aloe vera extract

[00:12:56] Speaker 04:
is the same thing as isolated and purified, acetylated mannose.

[00:12:58] Speaker 04:
And we think that under this court's precedent and under what those terms should mean in their ordinary language, as well as in view of the intrinsic record, that you can't do that.

[00:13:07] Speaker 04:
And you should reverse the district court's decision and remand this for further proceedings.

[00:13:11] Speaker 04:
Thank you very much.

[00:13:13] Speaker 04:
I'll reserve the rest for my reply.

[00:13:15] Speaker 01:
We will save it for you.

[00:13:17] Speaker 01:
Mr. Pinker.

[00:13:32] Speaker 00:
May it please the court.

[00:13:33] Speaker 00:
My name's Eric Pinker.

[00:13:33] Speaker 00:
I'm here with Jared Eisenberg, representing Manatech, the appellee.

[00:13:38] Speaker 00:
This case involves Appellant's attempt to dramatically narrow the scope of a patent on which he was an inventor in order that he can compete against that patent and against the owner of the patent for whom he developed it.

[00:13:51] Speaker 03:
Can you start with the prosecution history disavowal that your friend on the other side just finished with?

[00:13:57] Speaker 00:
Yes.

[00:13:57] Speaker 00:
Well, as to isolated and purified, I take it.

[00:14:00] Speaker 00:
Yes, it's isolated and purified.

[00:14:01] Speaker 00:
Clearly, it was added later during patent prosecution history.

[00:14:05] Speaker 00:
We believe that term is described through the specification.

[00:14:10] Speaker 00:
The meaning of it, the import of it, is described through the patent specification.

[00:14:14] Speaker 00:
I would hasten to add that as it relates to the 220 patent, which is one of the two at issue, the actual definition from a prior litigated case is in and is part of the prosecution history.

[00:14:26] Speaker 00:
And as such, that term is literally defined

[00:14:29] Speaker 00:
through a Markman hearing claim construction as part of the term.

[00:14:33] Speaker 03:
But the court didn't really rely on that.

[00:14:35] Speaker 03:
I mean, the court noted that it's not bound by that, right?

[00:14:38] Speaker 03:
And neither would the PTO be bound by that.

[00:14:40] Speaker 00:
Well, I don't think it's a question of binding the PTO.

[00:14:43] Speaker 00:
I think it's a question of providing notice to the public as to the inventor's intent and understanding, as well as the patent examiner's understanding of how that term was being used in this patent.

[00:14:55] Speaker 00:
It is the same and perhaps more specific

[00:14:58] Speaker 00:
than a dictionary definition in this case, because here we had a court decision that was final and binding, ruling that isolated and purified meant separate from unwanted substances, filed of record as part of the prosecution history for the 220.

[00:15:13] Speaker 00:
So I think it is even better than having filed a dictionary definition, because it's specific to this patent specification and specific to this phrase, not just words in isolation or in the abstract.

[00:15:23] Speaker 03:
What's your response to the argument that we should

[00:15:26] Speaker 03:
use example two as the only basis for isolating and purifying?

[00:15:30] Speaker 00:
Example two is simply that.

[00:15:32] Speaker 00:
It's an example of which there are others.

[00:15:36] Speaker 00:
Their argument is essentially that the reference to example two is a disavowal of everything else, and specifically examples three and four.

[00:15:46] Speaker 00:
This circuit has been clear that disavowals have to be clear and unambiguous.

[00:15:51] Speaker 00:
And by simply referring to example two, which I submit is the most extreme isolation and purification, it by no means disavowed and waived any reliance on the other examples or the other parts of the specification, of which there are many that refer to mano oligo and poly.

[00:16:09] Speaker 00:
I refer the court specifically, I guess, to two things in that regard.

[00:16:13] Speaker 00:
Number one, two years after referring to example two, which was done in 2004,

[00:16:19] Speaker 00:
and which they claim limits us only to example two.

[00:16:23] Speaker 00:
Two years later, we cite two examples, three and five, in connection with adding what became claims five, six, seven, eight, and nine of the 431 patent.

[00:16:34] Speaker 00:
That is diametrically inconsistent with the notion that there has been a clear and unmistakable disavowal.

[00:16:40] Speaker 00:
The second thing I would refer, Your Honor, to is column eight, lines 63 through 67,

[00:16:48] Speaker 00:
of the 431 patent, which is the one that we're all citing, too.

[00:16:52] Speaker 00:
Those lines talk about how gum tragacanth and gum guar shall be considered as providing, and it lists, a series of six individual saccharides.

[00:17:02] Speaker 00:
And so, again, that is a clear and unmistakable statement that by referring to the sources and referring to the complex polysaccharides,

[00:17:11] Speaker 00:
We are intending to satisfy the Sakrides in their individual named way in connection with the claims.

[00:17:19] Speaker 00:
I hope that answered your honest question.

[00:17:20] Speaker 02:
Can you address this question about Campbell?

[00:17:25] Speaker 02:
Yeah, absolutely.

[00:17:26] Speaker 02:
And put aside the argument that that issue is unavailable because of a sign or a stop.

[00:17:34] Speaker 02:
assume that I'm not buying that.

[00:17:36] Speaker 02:
So I'm trying to figure out, Campbell is a piece of prior art that is discussed in the patent.

[00:17:42] Speaker 02:
I mean, it's cited in the patent, and I guess was discussed in prosecution history.

[00:17:45] Speaker 00:
It was discussed in the prosecution history.

[00:17:47] Speaker 00:
I'm not sure if it was in the patent.

[00:17:48] Speaker 02:
And tell me why if that, it's cited in the patent.

[00:17:53] Speaker 00:
It's certainly prior art in the patent, and it was decided in the history, absolutely.

[00:17:56] Speaker 02:
Right, right.

[00:17:57] Speaker 02:
So doesn't it seem, I guess,

[00:18:01] Speaker 02:
significant that the claim construction that was adopted here is one that would have the claim read on a piece of prior art that was part of this prosecution.

[00:18:19] Speaker 00:
I think as Your Honor said it would, it seems that way, but I think it is not that way.

[00:18:25] Speaker 00:
The real problem we have here is that we're injecting

[00:18:28] Speaker 00:
validity into the appeal of claim construction.

[00:18:31] Speaker 00:
Assume I think that that's OK.

[00:18:34] Speaker 00:
I understand that.

[00:18:34] Speaker 00:
And my point would simply be, I didn't have an opportunity to develop a record on validity.

[00:18:40] Speaker 00:
I do not believe in any way, shape, or form Campbell addresses the integral and necessary limitation of nutritionally effective.

[00:18:48] Speaker 00:
I do not think Campbell speaks to the limitation of a dietary supplement.

[00:18:53] Speaker 00:
But I have not had an opportunity to present evidence on that

[00:18:57] Speaker 00:
to obtain expert witnesses on that, to take depositions on that, because literally, validity was never a part of the proceedings below.

[00:19:05] Speaker 00:
And so what we have is a very small, and I would say unfocused, snapshot attack on validity.

[00:19:12] Speaker 00:
You haven't seen any claim charts.

[00:19:14] Speaker 00:
We have ignored certain limitations in the claims themselves.

[00:19:18] Speaker 02:
All of that seems to me like in the abstract.

[00:19:23] Speaker 02:
I look at Campbell, and it seems to me this is good for the animals.

[00:19:27] Speaker 02:
nutritionally effective.

[00:19:29] Speaker 02:
What's the problem with that?

[00:19:31] Speaker 02:
And is it the 431?

[00:19:33] Speaker 02:
Anyway, the patented issue we have here, I think in the abstract, talks about mammals.

[00:19:38] Speaker 02:
It's not just humans.

[00:19:39] Speaker 02:
So what is even the glimmer of an opening for saying Campbell wouldn't be, that the claim as construed by the district court wouldn't read on Campbell?

[00:19:50] Speaker 00:
Yes, Judge.

[00:19:51] Speaker 00:
The two things I would cite to the court is, number one, while

[00:19:56] Speaker 00:
Campbell uses the word nutritional.

[00:19:57] Speaker 00:
The patents here use the phrase nutritionally effective amounts, which is a defined phrase, which we believe is distinguished from what is described in Campbell.

[00:20:08] Speaker 02:
Defined where?

[00:20:13] Speaker 00:
If I go up to the 431 patent judges defined, column 10, line 22, and it goes on for a paragraph.

[00:20:26] Speaker 00:
So there is a nutritionally effective element requirement, which has in prior cases been attacked.

[00:20:31] Speaker 02:
It's not much of a definition, right?

[00:20:34] Speaker 02:
Nutritionally effective amount has meant that amount, which will provide a beneficial nutritional effect or response in a mammal.

[00:20:39] Speaker 00:
And we have defended that in past cases with expert testimony and have satisfied validity challenges, lack of description challenges, vagueness challenges, and have surpassed those in two prior cases.

[00:20:53] Speaker 00:
And my point simply to your honor is,

[00:20:55] Speaker 00:
to raise it now in the first instance deprives me of the ability to answer a lot of your questions with specific factual sites because I wasn't given that opportunity.

[00:21:06] Speaker 00:
So number one, I would cite nutritionally effective amount.

[00:21:09] Speaker 00:
Number two, a dietary supplement composition.

[00:21:11] Speaker 00:
Number three, I believe that Campbell really was directed to an animal feed rather than a dietary supplement for humans.

[00:21:20] Speaker 00:
And those are the things that I would challenge in an evidentiary hearing if I had an opportunity to do that.

[00:21:25] Speaker 00:
Fundamentally, the problem here is that they are arguing something that they have no right to argue because of a sign or estoppel, and which was not properly raised at the trial court level because we were dealing solely with blame construction.

[00:21:40] Speaker 02:
Let's explore that.

[00:21:42] Speaker 02:
Why in the world would a sign or estoppel prevent a litigant from saying,

[00:21:49] Speaker 02:
This claim should not be construed in the following way, because then it would be invalid.

[00:21:55] Speaker 02:
What we sold them, that was perfectly valid.

[00:22:00] Speaker 02:
We're not questioning that.

[00:22:01] Speaker 02:
We're not impugning our own sale of something that we implicitly represented as valid.

[00:22:09] Speaker 02:
But we're saying it's not that broad.

[00:22:12] Speaker 00:
I understand what your honor is asking.

[00:22:14] Speaker 00:
And essentially, they are saying, we can't raise validity, but we're going to argue it for the purpose of getting a different claim construction.

[00:22:22] Speaker 00:
And I simply think that to the extent they want to make that argument, I guess they have.

[00:22:26] Speaker 00:
They are not permitted to assert validity.

[00:22:29] Speaker 00:
And as a result, I am to some large extent handcuffed in terms of the evidence available to me to respond to a validity challenge.

[00:22:36] Speaker 00:
As to claim construction, you would only get to make the argument about validity

[00:22:42] Speaker 00:
if in fact there was some initial ambiguity in the claim construction.

[00:22:45] Speaker 00:
If the terms are clearly defined or if the intrinsic evidence is such that you can get an actual definition from the intrinsic evidence without ambiguity, then whether there is validity arguments or not is not relevant to the claim construction.

[00:23:02] Speaker 00:
We have to construe the claims as written, consistent with the claims, consistent with the specification.

[00:23:07] Speaker 00:
And if it turns out that there is a validity issue, I don't think there is.

[00:23:10] Speaker 00:
But then we deal with that separately.

[00:23:13] Speaker 00:
My concern here is that there is no such inconsistency or ambiguity unless you introduce the extrinsic evidence which is designed to create an ambiguity, quite frankly.

[00:23:23] Speaker 03:
Can you address the claim differentiation argument as it relates to claims one and nine?

[00:23:27] Speaker 00:
Yes.

[00:23:29] Speaker 00:
Claim one as, let me start with claim nine.

[00:23:33] Speaker 00:
Claim nine appends the limitation

[00:23:35] Speaker 00:
that the acetylated mannose and other saccharides can be in monoaligo and polysaccharide form.

[00:23:43] Speaker 00:
Obviously, that requires then that it has to be equal to or narrower than, dependent upon the first claim, claim one.

[00:23:51] Speaker 00:
We believe that it requires at a minimum that the acetylated mannose and other saccharides can be in monoaligo and poly form.

[00:24:02] Speaker 00:
They can also, as my friend across the aisle said,

[00:24:05] Speaker 00:
in derivatized and or under derivatized form, but that is not part of the additional limitations imposed by Claim 9.

[00:24:13] Speaker 03:
So you're just essentially conceding that it's redundant of Claim 1.

[00:24:17] Speaker 00:
I think at this point, Your Honor, it likely is redundant.

[00:24:20] Speaker 00:
I do think that.

[00:24:22] Speaker 00:
I think it is coextensive is perhaps the word I would have chosen to use, but I think it does not meaningfully narrow the scope of Claim 1

[00:24:31] Speaker 00:
I do think, however, it communicates quite loudly that claim one must necessarily include acetylated mannose in both a monomeric form and as a constituent part of an oligomer or polymer.

[00:24:45] Speaker 01:
Otherwise, it would be an improperly dependent claim.

[00:24:48] Speaker 01:
Correct.

[00:24:49] Speaker 00:
Yes.

[00:24:54] Speaker 00:
I do want to make sure I've addressed just a couple of things.

[00:24:57] Speaker 00:
I'd like to direct the court to

[00:25:02] Speaker 00:
Really going back to my first point, this is an attempt to narrow dramatically the scope of a patent.

[00:25:08] Speaker 00:
This patent has been construed now on two prior occasions by two different judges in the Northern District.

[00:25:14] Speaker 00:
It has been construed entirely consistent with this.

[00:25:17] Speaker 00:
I recognize that this court conducts a de novo review, but I would submit that those prior decisions are both persuasive in their reasoning and provide public notice and uniformity.

[00:25:31] Speaker 00:
This Court's constructions are consistent with those prior constructions.

[00:25:35] Speaker 00:
The appellants' arguments are not.

[00:25:39] Speaker 00:
Their attempt here is quite literally, as the trial court observed, their attempt, and I'll paraphrase from page 11 of the appendix, which is the trial court's decision.

[00:25:50] Speaker 00:
What appellants are really trying to do, without explicitly saying so, is require compounds to be essentially 100% pure, require individual saccharide monomers,

[00:26:01] Speaker 00:
and claim limitations, reciting mixtures to require them to be separated from others.

[00:26:05] Speaker 00:
That simply goes against most of the language of the specification, which talks about providing these saccharides in natural form, which provides examples of that, which talks about monomeric.

[00:26:18] Speaker 03:
What does unwanted substances mean?

[00:26:21] Speaker 03:
Meaning just separating from the original source?

[00:26:24] Speaker 00:
In the dietary supplement industry, I think it really means removing the rind, the skin.

[00:26:29] Speaker 03:
Right, so the original source material.

[00:26:31] Speaker 00:
Well, separating the compounds you're looking at from the original source material, it would be the things that grow in nature, but we're not talking about absolute 100% purity as is made.

[00:26:42] Speaker 03:
But wouldn't that be a little clearer than unwanted substances?

[00:26:47] Speaker 00:
I frankly think unwanted substances is a skillfully done construction that was done first by Judge Kaplan in the first case and adopted by two later judges.

[00:26:59] Speaker 00:
Because I think it communicates the breadth of the patent as intended by the patentee and as accepted by the examiner.

[00:27:08] Speaker 00:
I thank you for your time.

[00:27:09] Speaker 00:
And if there are no more questions, I will cede what little time I have remaining.

[00:27:13] Speaker 01:
Thank you, Mr. Pinker.

[00:27:15] Speaker 01:
Ms.

[00:27:15] Speaker 01:
Stafford has a little bit of time.

[00:27:19] Speaker 04:
Thank you.

[00:27:19] Speaker 04:
Do you all have any particular questions you'd like me to address first?

[00:27:22] Speaker 04:
First, with respect to the claim differentiation, I think

[00:27:26] Speaker 04:
or an agreement that it's redundancy, it's an improper dependent claim, I don't think that that warrants for adopting their construction versus ours, because some of the examples of the saccharides that are identified in claim one are monomers, like acetylated mannose, and others are polymers, like a ribonogalactan.

[00:27:43] Speaker 04:
And so it just merely means that the saccharides have to be in one of those forms.

[00:27:46] Speaker 04:
Not all of those forms apply to all of the saccharides identified.

[00:27:50] Speaker 04:
With respect to the filing of the markment and whether that should be some sort of a special definition, that's totally improper.

[00:27:56] Speaker 04:
It was done after issuance of the asserted patents.

[00:27:59] Speaker 04:
There was no unequivocal statement that said the patentee was accepting these constructions.

[00:28:04] Speaker 04:
Moreover, it would run contrary to blonder tongue and not giving us our opportunity to be heard, because all a patentee would do is sue somebody, get somebody small, get a favorable construction, run to the patent office, file it in the file histories, and then all of a sudden, everybody else in the industry has a stop to ever present its own constructions.

[00:28:22] Speaker 04:
We think that's not proper.

[00:28:24] Speaker 04:
They're claiming that there's not some sort of a disavowal, and I think they're misunderstanding our argument based on the file history.

[00:28:29] Speaker 04:
We're not claiming necessarily there was a disavowal, but there was an acquiescence.

[00:28:33] Speaker 04:
The examiner said these generic disclosures of what saccharides and what forms they can be in is not support for isolated and purified with respect to individual saccharides.

[00:28:43] Speaker 04:
And they didn't argue to the contrary.

[00:28:45] Speaker 04:
And with respect to examples three and five,

[00:28:47] Speaker 04:
Not every embodiment has to be covered by every claim.

[00:28:50] Speaker 04:
And there's a number of patents that have been prosecuted and pending.

[00:28:55] Speaker 04:
Moreover, the specification in these examples are drafted before the give and take with the patent office.

[00:29:00] Speaker 04:
So it's not necessarily that there's anything inconsistent with those examples not being included.

[00:29:06] Speaker 04:
Moreover, the reference to those examples as providing support for these other claims was much later in support of dependent claims, including claim nine, which we've now indicated

[00:29:16] Speaker 04:
is at best a redundancy.

[00:29:23] Speaker 04:
With respect to Campbell, there was a lot of discussion about whether or not they were given an opportunity to address.

[00:29:28] Speaker 04:
The file history associated with the 807 patent and these rejections was addressed below.

[00:29:34] Speaker 04:
It was addressed in the briefing in general.

[00:29:37] Speaker 04:
It may not have focused on Campbell, but they were given the opportunity.

[00:29:40] Speaker 04:
And if you look carefully at the claim distinctions between Campbell

[00:29:44] Speaker 04:
And as construed by the district court and the asserted claims, there is none.

[00:29:51] Speaker 04:
They are providing nutritionally effective amounts.

[00:29:54] Speaker 04:
They are providing the isolated and purified saccharides according to the district court's construction.

[00:29:59] Speaker 04:
And therefore, we're not claiming the claims invalid.

[00:30:02] Speaker 04:
or claiming that that means that that can't be a proper construction and you should reverse the district court's construction.

[00:30:07] Speaker 04:
Thank you very much for your time.

[00:30:08] Speaker 01:
Thank you, counsel.

[00:30:09] Speaker 01:
I guess we can say this is a sticky case.

[00:30:13] Speaker 01:
Not sweet, but sticky.