[00:00:00] Speaker 01: last monday for all of you in D.C. [00:00:04] Speaker 01: the first case this morning is fifteen one three five six roche diagnostic operations versus life scan Mr. Rutches [00:00:18] Speaker 02: May it please the court, as this court noted in its prior decision in this action, the remand to the district court was solely for the purpose of construing the term electrode and any subsequent proceeding that might be necessary once the court construes that term. [00:00:33] Speaker 02: The parties agree that the electrode term should be limited to a microelectrode. [00:00:38] Speaker 02: And the intrinsic evidence and plain meaning of the term microelectrode extends up to 1,000 microns. [00:00:44] Speaker 02: That's fully supported by the inherent meaning of the term microelectrode. [00:00:48] Speaker 01: That's not the kind of construction you pressed at the mark. [00:00:51] Speaker 02: At the original Merkman? [00:00:53] Speaker 02: The original claim construction, we had disagreed with respect to whether it should be limited to microelectrode at all. [00:01:00] Speaker 02: That's correct, Your Honor. [00:01:02] Speaker 01: Right. [00:01:02] Speaker 01: So you changed your position in the context of the motion for reconsideration, right? [00:01:07] Speaker 02: We accepted the disavowal that the district court found, but even under the disavowal, the district court made an error of law. [00:01:15] Speaker 02: And that's the subject matter of the reconsideration. [00:01:19] Speaker 02: It made an error of law by accepting a preferred embodiment as a positive limitation into the claim, specifically the 100 micron limitation. [00:01:29] Speaker 01: But you weren't arguing, you were arguing for an entirely new and different claim construction on reconsideration than the original market. [00:01:38] Speaker 02: Our argument was consistent in the fact that the claims cannot be limited to 100 microns, your honor. [00:01:45] Speaker 02: the claim construction from the very outset argued that the examples three to five, for instance, the disclosure of examples three to five of the 146 patent, which includes electrodes of 300, 500, 1,000 microns, have to be within the scope of the claims. [00:02:03] Speaker 02: So in that respect, our argument was consistent, Your Honor. [00:02:08] Speaker 02: It was simply a matter of whether you append the [00:02:13] Speaker 02: the disavowal to microelectrode onto the claims as well. [00:02:18] Speaker 01: But all of the arguments that go to your second revised claim construction are different arguments with respect to the spec that applied to your first claim construction, where you're saying micro versus macro, and then you're changing the numbers. [00:02:32] Speaker 01: It's an entirely different argument. [00:02:34] Speaker 01: I mean, you may say the result gets you to the same place. [00:02:37] Speaker 01: I can kind of see that, which seems to be what you're saying. [00:02:40] Speaker 01: But the analysis and the references is entirely different. [00:02:44] Speaker 02: First of all, we relied on examples three to five with respect to the 146 patent. [00:02:51] Speaker 02: We relied on the intrinsic evidence, the disclosure of the Excalibur report, for instance, which shows that examples [00:03:01] Speaker 02: three to five those same configurations or microelectrodes in the context of in the context of the of the claims and the specification. [00:03:11] Speaker 02: We as far as we're concerned as far as Roche would submit that the claims from the very get-go cannot be limited to the 100 micron. [00:03:21] Speaker 05: You're arguing a different claim construction now before us than you did at Markman, correct? [00:03:29] Speaker ?: The [00:03:29] Speaker 05: issue other than macroelectrode. [00:03:33] Speaker 05: or microelectrode. [00:03:35] Speaker 05: Other than that, you're making a different claim construction argument for us than you did in Markham. [00:03:40] Speaker 02: I think that the only difference is whether we accept the disavowal of the claims to microelectrode. [00:03:46] Speaker 02: Originally, it is correct. [00:03:47] Speaker 02: We did not agree that that constituted, did disavowal, the references in the prosecution history. [00:03:55] Speaker 02: But on reconsideration, we accepted the provision that [00:04:00] Speaker 02: that the claims would be limited to microelectrode, but still argue that even with that limitation, the claims can't be so limited. [00:04:07] Speaker 05: At Markman, did you argue that microelectrode should be limited to less than 100 microns? [00:04:14] Speaker 02: What we argued was that under defendant's proposed construction, [00:04:18] Speaker 02: The claims would be limited to 100 microns, and that disclosures of examples three to five would be read out of the claims as macroelectrodes. [00:04:29] Speaker 02: And that's what we cited was improper. [00:04:32] Speaker 02: From the outset, you had to include the claims within the scope of the claims, examples three to five, of the 146 patent and the disclosures of the Excalibur report. [00:04:43] Speaker 01: But there's no dispute at the original Markman. [00:04:47] Speaker 01: Everybody conceded and was operating under the assumption that the 100 was the limit, right, for micro. [00:04:54] Speaker 02: What we had said was that under defendant's proposed construction, [00:04:59] Speaker 02: The term microelectrode would be limited to 100 microns, and that disclosures of examples three to five would indisputably be macroelectrodes and outside the scope of the claims. [00:05:09] Speaker 01: But you didn't dispute that that was a given, that that was how we would read microelectrodes. [00:05:14] Speaker 02: If you read the actual statements at the claim construction hearing, what we were arguing was in the context that defendants proposed claim construction, [00:05:27] Speaker 02: these disclosed structures in the specification of the 146 patent and in the Excalibur report would indisputably be macroelectrodes. [00:05:37] Speaker 01: I'm still waiting with all these questions for a yes or no answer. [00:05:40] Speaker 01: You did not dispute, did you? [00:05:42] Speaker 01: I mean, you were all operating under the same given, which is the cutoff from micro and macro was 100. [00:05:50] Speaker 02: Yes, and that was based on defendant's proposed construction. [00:05:52] Speaker 02: That was their argument. [00:05:54] Speaker 02: We were countering that. [00:05:55] Speaker 01: But you didn't propose an alternative. [00:05:57] Speaker 01: I mean, you accepted that for purposes of your own claim construction. [00:06:00] Speaker 01: You didn't propose an alternative. [00:06:03] Speaker 02: Not with respect to what the term microelectrode should mean. [00:06:07] Speaker 02: Correct. [00:06:07] Speaker 01: Can I just ask you a process question, which is, have you asserted these patents in other cases? [00:06:12] Speaker 02: Not at this stage, Your Honor. [00:06:14] Speaker 01: But they're still pretty young. [00:06:16] Speaker 02: They're still pretty young. [00:06:17] Speaker 02: Correct. [00:06:17] Speaker 02: They issued originally in 2007. [00:06:21] Speaker 02: The issue, of course, is that the district court focused on remand, focused on a specific portion of a single sentence of the detailed description from the so-called defendant's so-called definition passage. [00:06:37] Speaker 02: And the district court found this in a special situation that it seems and it might be characterizing a microelectrode. [00:06:47] Speaker 02: And based on that, found that it was a microelectrode definition. [00:06:51] Speaker 02: In every instance with respect to the disclosure of the term microelectrode or the reference to 100 microns or less is specifically identified as a preferred dimension. [00:07:08] Speaker 02: The very first time it pops up is in column 3, lines 9 to 12 of both the 146-147 patent, where the disclosure explicitly states that 100 microns is simply preferred. [00:07:24] Speaker 02: You get to column 4 in the so-called definition passage, [00:07:28] Speaker 02: First of all, that definition passage starts out by pointing out that microelectrodes, as distinguished from other electrodes generally, are understood in the electronic and biosensor arts. [00:07:38] Speaker 02: That is not a disclosure under the Martek or Thorner line of cases of an explicit definition. [00:07:49] Speaker 01: Before we get too much into the merits, the district court's main argument was that the motion for reconsideration was improper. [00:07:55] Speaker 01: Right? [00:07:56] Speaker 01: Yes. [00:07:57] Speaker 01: And we review that for an abuse of discretion? [00:08:00] Speaker 02: We do review that for an abuse of discretion. [00:08:01] Speaker 01: Leaving aside, I know you've made a waiver argument. [00:08:04] Speaker 01: But aside from the waiver argument, where is the abuse of discretion by the district court in deciding that this was not? [00:08:12] Speaker 02: In the context of claim construction, an error of law is reviewed under certainly abuse of discretion. [00:08:21] Speaker 02: But an error of law itself is reviewed de novo. [00:08:24] Speaker 02: And if the district court under the Third Circuit precedent in the Quinteros case that was cited by defendants, for example, is a perfect example of it, it specifically says that where there is an error of law, which is reviewed de novo, then that is inherently an abuse of discretion. [00:08:45] Speaker 02: So the question for this court is to determine whether there is an error of law here and whether you [00:08:50] Speaker 02: Determine it under the Third Circuit standard or the rolling claim construction standard. [00:08:56] Speaker 02: It really does. [00:08:56] Speaker 01: Let me ask you hypothetically, if the fight at the Markman is something yellow or green and you lose and it gets to be yellow, that's your friend's thing. [00:09:05] Speaker 01: And then you can come up for reconsideration and say, no, it's all wrong. [00:09:11] Speaker 01: It's red. [00:09:13] Speaker 01: Is that a proper request for reconsideration? [00:09:17] Speaker 02: Well, this isn't that example, Your Honor. [00:09:19] Speaker 01: No, but just answer my question first. [00:09:22] Speaker 02: That would not be. [00:09:23] Speaker 01: I agree. [00:09:24] Speaker 01: So it's because red wasn't something that either party advocated before the district court. [00:09:31] Speaker 01: This isn't an argument that green, we went awry because green should have been the right answer. [00:09:37] Speaker 01: You can't come up with something new and different. [00:09:39] Speaker 01: How is this case different? [00:09:40] Speaker 02: Well, this is different, Your Honor, because it's not just a question of whether it's yellow or green. [00:09:45] Speaker 02: The district court made an initial finding that it was microelectrodes, an initial finding. [00:09:52] Speaker 02: And based on that, then said, well, with that disavowal, then this is yellow. [00:10:00] Speaker 02: And it's that second decision that microelectrodes have to be limited to 100 microns or less. [00:10:09] Speaker 02: It's that second step that we're contesting. [00:10:13] Speaker 02: So this is not simply a yellow or green. [00:10:15] Speaker 02: This is a two-step process. [00:10:17] Speaker 02: We argued it shouldn't be limited to microelectrodes at all. [00:10:21] Speaker 02: And the district court limited to microelectrodes. [00:10:25] Speaker 02: And we said, even if that's true, [00:10:27] Speaker 02: Even if that's true, then microelectrodes shouldn't be limited to 100 microns because the district court is unquestionably taking a preferred embodiment and wrapping it into the claims as a possibility. [00:10:43] Speaker 01: that took place in the first instance about whether something is micro or macro was based, everybody was operating under the same assumption that we were using the 100 cutoff, right? [00:10:53] Speaker 02: Well, again, the only basis for that assumption is the text at the Markman hearing originally. [00:11:03] Speaker 02: And in that context, we were pointing out that the proposed construction of defendants was that a microelectrode would be 100 microns, [00:11:11] Speaker 02: and that can't be accurately describing the scope of these claims given the disclosure and the specification. [00:11:20] Speaker 02: So it's true we were arguing against microelectrode originally, but from the very get-go our argument was these claims based on the intrinsic evidence have to encompass, examples three to five, have to encompass the disclosures in the Excalibur report [00:11:40] Speaker 02: the intrinsic evidence in both of these applications or the claims would be omitting a disclosed embodiment. [00:11:50] Speaker 01: We're into your rebuttal. [00:11:52] Speaker 01: Why don't we hear from the other side and we'll retain the rest of your rebuttal. [00:11:59] Speaker 01: Now, there's a split argument on your side. [00:12:02] Speaker 01: Are you all splitting a particular issue or argument or just duplicating? [00:12:07] Speaker 04: Yes, Your Honor. [00:12:08] Speaker 04: May it please the court. [00:12:09] Speaker 04: With the court's indulgence, the appellees have agreed that NOVA's Mr. Badke will focus on the claim constructions and that I will focus on the procedural issues, which the previous argument has primarily addressed. [00:12:26] Speaker 04: On the procedural issues, there are two independent procedural reasons that this court should affirm the district court. [00:12:34] Speaker 04: First, the district court did not abuse its discretion to control its cases, and in particular, to reject moving target arguments by denying the reconsideration motion in which Roche raised its present claim construction for the very first time. [00:12:54] Speaker 04: And second, Roche's failure in the first appeal to challenge Judge Farnan's denial of reconsideration waived that challenge. [00:13:07] Speaker 04: And that waiver in the first appeal applies to subsequent appeals under this court's case law. [00:13:15] Speaker 01: Can I ask you, if the original Markman had not focused on the distinction between micro and macro, but it just focused on the numbers, less than 100, more than 100, then your friend's reincarnation on the motion for reconsideration would sort of be in that same ballpark, would it not? [00:13:37] Speaker 04: I'm not sure I understand, Your Honor, if the original Markman had focused on the 100 micron. [00:13:47] Speaker 01: We all agree, I think, that essentially all the parties at that time were defining micro as being 100 or less, right? [00:13:53] Speaker 01: Absolutely. [00:13:54] Speaker 01: And macro as being higher. [00:13:55] Speaker 01: But if we hadn't used those [00:13:57] Speaker 01: labels and they had just used the numbers. [00:14:00] Speaker 01: We're saying it's a hundred or less, they're saying it's a hundred or more. [00:14:03] Speaker 01: Would that recast your view of what they were seeking in reconsideration? [00:14:09] Speaker 04: Yes, it would change the view of what they were seeking in reconsideration, because then reconsideration, if they were saying that the original limit was 100 microns to the claims, or they're saying it was not, and we were arguing that it was, if originally that argument was focusing on the same 100 micron limit regardless of the label, we wouldn't be in this position. [00:14:34] Speaker 04: But the position that we are in and the answer that the court was trying to get from Mr. Drutches is made very, very clear by the arguments that he made in the motion for reconsideration. [00:14:47] Speaker 04: If we go to volume one of the appendix, [00:14:50] Speaker 04: pages 10759 and 10760 are two crystal clear admissions. [00:14:58] Speaker 04: He was relying on that 100 micron distinction to distinguish on the left-hand side on page A10759. [00:15:07] Speaker 01: It took me a while to get through this huge group. [00:15:11] Speaker 04: What's the number again on page? [00:15:13] Speaker 04: 10759. [00:15:13] Speaker 04: 10759. [00:15:26] Speaker 04: He's addressing on this page examples 3, 4, and 5, which, as Mr. Badke will address, is not part of the common specification. [00:15:34] Speaker 04: But he's addressing those examples. [00:15:36] Speaker 04: He says, all of which are substantially larger than the 15 to 100 microns that defendants would like the term electrode to be limited to. [00:15:44] Speaker 04: In this case, [00:15:46] Speaker 04: 10, 5, and 3 times larger than the maximum scope. [00:15:50] Speaker 04: And these, indisputably, are not microelectrodes. [00:15:56] Speaker 04: And then on the next page, he goes to address the examples in the Excalibur report. [00:16:03] Speaker 04: And he said, these two are directed to electrodes having, among other widths, 1,000 microns, 500 microns, 300 microns. [00:16:12] Speaker 04: Again, substantially larger than the dimensions that defendants would like to limit these claims to. [00:16:17] Speaker 04: And clearly, he says, macroelectrodes, not microelectrodes. [00:16:24] Speaker 04: In the face of that argument, what did Judge Andrews do? [00:16:30] Speaker 04: Throughout his opinion, he analyzed that. [00:16:33] Speaker 04: And he said that on reconsideration, this is page appendix 1.7, Roche moved for consideration positing a different claim construction theory than the one it had previously advanced. [00:16:48] Speaker 04: On page 1.8, Roche asserted that microelectrodes are up to approximately 100 microns wide. [00:16:55] Speaker 04: On page 1.9, Roche moved for reconsideration not seeking to re-argue that the asserted claims read only on microelectrodes, but arguing that microelectrodes may have widths up to 1,000 microns. [00:17:11] Speaker 04: And then at page 0.13, Roche argued a position in the claim construction hearing that it is subsequently partially abandoned. [00:17:22] Speaker 04: So the district court recognized this was a new position. [00:17:28] Speaker 04: And the district court has that discretion to reject this kind of moving target argument. [00:17:35] Speaker 04: And it didn't abuse its discretion in doing so. [00:17:39] Speaker 04: The district court, in this regard, it didn't err applying the Third Circuit reconsideration standard. [00:17:48] Speaker 04: This court's Golden Bridge made that clear. [00:17:50] Speaker 04: And this court's Golden Bridge case also made it clear that where a party raises its claim construction issue or raises an argument for the first time on reconsideration, [00:18:06] Speaker 04: that the court doesn't abuse its discretion. [00:18:09] Speaker 04: The district court does not abuse its discretion in denying that reconsideration. [00:18:14] Speaker 04: And they've argued new evidence here, but they haven't done what this court required that they do in the Delaware Valley floral opinion, which has come forth and show why that's really new evidence. [00:18:25] Speaker 04: And in fact, Judge Andrews made the finding that it wasn't new evidence. [00:18:30] Speaker 04: And so then the question comes, [00:18:33] Speaker 04: From Roche, is this issue really properly before this court? [00:18:40] Speaker 04: And our position is absolutely it's properly before the court. [00:18:43] Speaker 04: Judge Andrews believed it was properly through the court. [00:18:46] Speaker 04: He went through, and he parsed very carefully this court's opinion. [00:18:50] Speaker 04: And what he decided was that the mandate did not bar him from considering this procedural issue. [00:18:57] Speaker 04: And that's clear under this court's case law. [00:19:00] Speaker 04: It's like the Latrum case. [00:19:02] Speaker 04: What Mr. Drutches said was that the court's opinion was very clear. [00:19:08] Speaker 04: that the court's mandate was very narrowly limited. [00:19:11] Speaker 04: Well, the mandate said to vacate and remand. [00:19:15] Speaker 04: The court's opinion said to consider those questions, decide to claim construction in any subsequent proceedings. [00:19:23] Speaker 04: It's just like the Latrum case, where this court remanded to reinstate the jury verdict. [00:19:29] Speaker 04: But the district court recognized that it had had preliminary issues before it could get to that and ended up granting JMOIL and never reinstated the jury verdict. [00:19:39] Speaker 04: This court, when it remanded to Judge Andrews, he recognized that there were preliminary issues. [00:19:45] Speaker 04: And that issue was an issue that the court did not expressly decide and did not decide by necessary implication. [00:19:54] Speaker 04: Therefore, it was not precluded by the mandate rule. [00:19:57] Speaker 04: And also, it was not waived by the appellees. [00:20:01] Speaker 04: This court's case law is very clear. [00:20:04] Speaker 04: That waiver in that first appeal was by appellants, not appellees. [00:20:11] Speaker 04: Under this court's law, Independence Park and Latrum in particular, appellees in this circumstance do not waive because it's the appellants that chose the issue. [00:20:23] Speaker 04: They brought the appeal up in the first appeal, and they focused on the sole question. [00:20:29] Speaker 04: of the claim construction. [00:20:30] Speaker 04: They did not challenge Judge Farnan's denial of reconsideration. [00:20:35] Speaker 04: So it's very clear under this court's case law, digital vending, that they waived. [00:20:40] Speaker 04: And it's very clear under this court's tronzo that waiver in the first appeal applies to the second appeal as well. [00:20:49] Speaker 00: So you're not just arguing that they're wrong and you didn't waive. [00:20:52] Speaker 00: You're saying they're the ones that waived. [00:20:54] Speaker 04: That's right. [00:20:54] Speaker 04: And it's two independent procedural reasons why the district court should be affirmed. [00:21:00] Speaker 04: First, because they waived in the first appeal, and that waiver applies here. [00:21:07] Speaker 04: But second, because their motion for reconsideration was improper. [00:21:13] Speaker 04: And Judge Farnan did not abuse his discretion in denying that motion for reconsideration because it was improper. [00:21:21] Speaker 04: And Judge Andrews very carefully went through that and explained why that motion for reconsideration was properly denied. [00:21:29] Speaker 04: He based his decision on that. [00:21:32] Speaker 04: The first half of his opinion was devoted to that. [00:21:35] Speaker 04: And this court should affirm because there was no abuse of discretion there. [00:21:39] Speaker 04: Those are two independent procedural reasons why the district court should be affirmed. [00:21:52] Speaker 03: These admissions that were made by Mr. Druchis were really not a mistake or an oversight. [00:22:03] Speaker 03: Roche is a leader in the glucose industry. [00:22:06] Speaker 03: We were two years into the case when these admissions were made. [00:22:09] Speaker 03: This was a well-informed decision that they made. [00:22:12] Speaker 03: And in fact, it was informed by the... Which admissions are you referring to? [00:22:15] Speaker 05: The claim description arguments at the Markman hearing? [00:22:18] Speaker 03: Yes, at the Markman hearing. [00:22:19] Speaker 03: I'm sorry. [00:22:20] Speaker 03: The example 3, 4, 5 admissions, that those are microelectrodes. [00:22:25] Speaker 03: And in fact, that same testimony was given by inventor Wilsey not once, but twice. [00:22:29] Speaker 05: Was there an explicit admission or argument by counsel that microns [00:22:37] Speaker 05: microelectroids were limited to 100 microns? [00:22:42] Speaker 03: Yes, I believe so. [00:22:43] Speaker 03: I think you can read that in that same in that same site that Mr. Rutledge gave. [00:22:47] Speaker 05: I think I can read into the argument, but was there an explicit concession? [00:22:55] Speaker 03: I don't believe there was anything more than was on those pages. [00:22:58] Speaker 03: I think that's all I'm aware of. [00:23:01] Speaker 01: Who came up with this? [00:23:03] Speaker 01: Was there any debate about accepting this definition of micro versus macro? [00:23:07] Speaker 01: Was that just something that was given? [00:23:10] Speaker 01: Everybody seemed to have been on the same page in the first instance. [00:23:14] Speaker 01: Where did that come from? [00:23:15] Speaker 03: We were. [00:23:16] Speaker 03: Well, they were arguing originally that the term electrode should be defined as micro and macro. [00:23:22] Speaker 03: It wasn't important to them at the time. [00:23:25] Speaker 03: And so they accepted that micro was limited to 100. [00:23:28] Speaker 03: And then they only flipped after Judge Farnham ruled against them and said that no, electrode means just micro. [00:23:34] Speaker 03: And then, of course, they knew about the allegedly infringing products. [00:23:38] Speaker 03: So they needed to expand that to 1,000 to capture them. [00:23:42] Speaker 03: But under their original definition, they thought they could capture the products. [00:23:46] Speaker 03: And that's why they did the flip flop. [00:23:50] Speaker 03: But originally, this was not an issue. [00:23:51] Speaker 03: And it wasn't an issue before Judge Farnham. [00:23:54] Speaker 03: But the inventor, Wilsey, he also testified that examples 3, 4, and 5, which is their only specification support for their claim construction, that those are macroelectrodes. [00:24:04] Speaker 03: And in fact, he also testified that their product, which is called the Aviva, [00:24:08] Speaker 03: And that's 255 microns is a macroelectrode. [00:24:12] Speaker 03: So it was very clear throughout the course of this case. [00:24:14] Speaker 03: And I've been on this case from the very beginning, and I was at the Martman hearing. [00:24:17] Speaker 03: It's very clear from the beginning of the case right through the Martman hearing that micro was considered 100 or less, and macro was above that. [00:24:25] Speaker 03: And it's only because they needed to still try to capture us in infringement that they changed their position. [00:24:31] Speaker 03: But all of the evidence in this case points to what the original intent was and the original understanding of everybody, commonly, was about what micro meant. [00:24:40] Speaker 05: When did they change their position at doing the motion for reconsideration at that stage? [00:24:46] Speaker 03: Yes, that's when they changed the position at the motion for reconsideration. [00:24:50] Speaker 03: And that's why Judge Farnan then denied it, because it wasn't a new position. [00:24:54] Speaker 03: And as Judge Andrew points out, reconsideration motion is not a basis for taking another shot at a claim construction when you're unhappy with the result. [00:25:05] Speaker 01: It's hard though. [00:25:06] Speaker 01: I mean every case is different and some of these cases are more complicated. [00:25:09] Speaker 01: I mean it could be maybe in your experience have you seen persons in the position of your friend that have argued alternative claim constructions? [00:25:18] Speaker 03: I've seen alternative but not completely contrary. [00:25:21] Speaker 03: This is a complete [00:25:23] Speaker 01: Well, but if you were there in the first instance and you said, we think electrodes covers micro and macro. [00:25:30] Speaker 01: But if the district court, if you happen to confide the other guy's argument and thinks that it only covers micro, then we think you ought to define these. [00:25:39] Speaker 01: Would that be crazy to do as an alternative at the original claim construction? [00:25:43] Speaker 01: That wouldn't be improper, would it? [00:25:45] Speaker 03: Well, I've seen plenty of crazy things in courts, right? [00:25:49] Speaker 03: Not in this court. [00:25:52] Speaker 03: Not in this court, Your Honor, no, absolutely not. [00:25:55] Speaker 03: But would I, if I'm in a district court, do a complete flip-flop on my position and take, you know, one day say it's white and the next day say it's black? [00:26:04] Speaker 03: No, I wouldn't do that. [00:26:05] Speaker 03: I've seen people take alternative positions. [00:26:07] Speaker 03: I've seen people try to massage the construction over time, which is what the rolling claim construction Mr. Drutches is talking about. [00:26:15] Speaker 03: You raise the issue with the court, and sometimes the court will think, well, yeah, OK, we didn't quite get that right. [00:26:19] Speaker 03: Let me tweak this a little bit. [00:26:20] Speaker 03: But this isn't a tweak. [00:26:22] Speaker 03: This is a wholesale change. [00:26:24] Speaker 03: And not only that, but it goes against their own admissions and the inventor's admissions. [00:26:28] Speaker 03: OK, and so this is a lot different than other circumstances or a rolling claim construction. [00:26:33] Speaker 03: Maybe you get to trial, and the judge thinks, well, we didn't quite get that right, right? [00:26:37] Speaker 03: So let's tweak it. [00:26:38] Speaker 03: This is a whole different scenario, whole different scenario. [00:26:43] Speaker 03: Now, I want to point out a couple of things, and time is short. [00:26:47] Speaker 03: And the things I want to point out are things that I think that we've mentioned in our brief, but have not [00:26:52] Speaker 03: I think, receive the emphasis that they should. [00:26:55] Speaker 03: And that's this issue of common specification. [00:26:58] Speaker 03: And my friend across the aisle here has used that term, and everybody uses it, but what does that mean? [00:27:06] Speaker 03: It does not include examples three, four, and five. [00:27:08] Speaker 03: It includes what's in the 147 patent and in the provisional. [00:27:13] Speaker 03: They added these examples three, four, and five into the 146 patent. [00:27:17] Speaker 03: And under the Synergem case, they shouldn't even be relevant. [00:27:21] Speaker 03: in deciding what the claim term means. [00:27:23] Speaker 03: 3, 4, and 5 should be out altogether. [00:27:26] Speaker 03: Now, if you look at the common spec, there's a definition in there. [00:27:29] Speaker 03: It's all about microelectrodes. [00:27:31] Speaker 03: And what it teaches is you're at 100 or less. [00:27:33] Speaker 03: You get the benefits of the invention at 100 or less. [00:27:36] Speaker 03: So the entire common spec is about microelectrodes. [00:27:39] Speaker 03: There's no alternative described once you take out, and not the 3, 4, and 5 describe an alternative when it comes to blood, because they were not done in blood. [00:27:47] Speaker 03: And therefore, don't follow the scope of the claims. [00:27:49] Speaker 03: But there's no alternative given in the common spec. [00:27:52] Speaker 03: And so I think as a matter of law, you can exclude examples 3, 4, and 5 from your consideration of what the intrinsic evidence is here, because it's not the common spec. [00:28:02] Speaker 03: We agreed that the term electrode should be defined the same way for both patents. [00:28:07] Speaker 03: And they can't add subject matter to one and not in the other and then have that [00:28:12] Speaker 03: apply to the common medium. [00:28:14] Speaker 05: What are the argument that examples 3, 4, and 5 were not enabled? [00:28:19] Speaker 03: Oh. [00:28:20] Speaker 03: Well, they're not enabled because if you look at them, they were not done in blood. [00:28:25] Speaker 03: And the claims are limited to blood. [00:28:27] Speaker 03: They were also done with a capillary depth of 62 microns. [00:28:31] Speaker 03: The patent specifically teaches in column 18 of the 147 patent that capillary depths below 100 shouldn't be used with blood. [00:28:42] Speaker 03: because you don't get a fast fill. [00:28:43] Speaker 03: And the whole point of this patent is fast fill and fast detection. [00:28:46] Speaker 05: The other thing I want to... Fast filming, the speed at which the blood enters into that little channel? [00:28:52] Speaker 03: Yes, that's right. [00:28:52] Speaker 03: And if the channel's too narrow, because blood is viscous, it's more viscous than, say, water, because there's cells in there and so forth, it's going to go a lot slower. [00:29:01] Speaker 03: So if the whole point of your patent is a fast response time, a fast detection time, it just defeats that whole purpose. [00:29:08] Speaker 05: But does the speed have something to do with the mixture of the chemicals once the blood enters into that particular channel, or is it the charge that the strip gives to the blood once it's in there? [00:29:21] Speaker 03: No, I think it's just the speed because it's viscous. [00:29:23] Speaker 03: You don't get enough blood into the reaction area fast enough. [00:29:27] Speaker 03: because it just takes too long to go down that really narrow channel. [00:29:31] Speaker 03: It's just a physical thing, as far as I understand it. [00:29:33] Speaker 03: But the other thing, too, that I wanted to point out, which is one thing that I don't think received a lot of attention, but it's a very important point. [00:29:39] Speaker 03: If you look at the prosecution history, they actually distinguished prior art that was not blood [00:29:46] Speaker 03: It was saline glucose buffer saline solutions. [00:29:51] Speaker 03: They distinguish that prior art on the basis that you can't compare it to blood. [00:29:56] Speaker 03: And they distinguish that art by saying, well, look, you get different reaction times when you do this in blood than you do in saline or serum or anything else. [00:30:07] Speaker 03: And that's an important point. [00:30:08] Speaker 03: They shouldn't be able to argue and distinguish prior art by saying that, [00:30:13] Speaker 03: Well, blood is a lot different than serum or glucose. [00:30:18] Speaker 03: And then at the same time now argue that, well, you can just take examples three, four, and five, and you can just run them in blood. [00:30:25] Speaker 03: The fact is they didn't run them in blood. [00:30:27] Speaker 03: They ran them at a very shallow capillary depth. [00:30:29] Speaker 03: That's what they did. [00:30:30] Speaker 03: They threw these examples into the patent after they saw the competitive products. [00:30:36] Speaker 03: And so that is not a proper way. [00:30:38] Speaker 03: And I think the last time Judge Bryson asked Mr. Drutchess a question on this, that's not a proper way to expand the scope of a claim after you've seen your competitor's product. [00:30:47] Speaker 03: And that's exactly what happened. [00:30:48] Speaker 03: And so when they were going through the patent office, they had one view. [00:30:51] Speaker 03: And after the infringement case started, they have another view. [00:30:53] Speaker 03: And this is just another example of where they've switched positions and done complete flip flops on their positions. [00:31:00] Speaker 01: Thank you. [00:31:01] Speaker ?: OK. [00:31:05] Speaker 02: Your Honor, with respect to the reconsideration procedural issues, there's no question that Judge Farnan reviewed the reconsideration motions substantively. [00:31:16] Speaker 02: In fact, that's the reason why he indicated that it would be a, quote, great point for the Federal Circuit and I actually think he might have a point. [00:31:25] Speaker 02: In the prior appeal, this court found that, quote, Nova and Lyskian do not dispute an appeal, however, that Roche's argument, its reconsideration argument, should be addressed on the merits, end quote. [00:31:42] Speaker 02: And that's the prior decision at 994. [00:31:46] Speaker 02: This court's decision also found that we remand the case to the district court for the purpose of construing the term electrode [00:31:53] Speaker 02: in any subsequent proceeding that might be necessary once the court can choose the term. [00:31:59] Speaker 02: And the district court found on remand that defendants provided citations don't provide any argument at all about reconsideration being procedurally improper in the prior appeal. [00:32:12] Speaker 02: And specifically, the district court found at A1.14 that I do not see any evidence. [00:32:18] Speaker 02: The defendants put the Federal Circuit on notice. [00:32:20] Speaker 02: The defendants were arguing that the Federal Circuit should affirm the claim construction on the basis of a waiver argument. [00:32:28] Speaker 02: That is itself a waiver by defendants. [00:32:31] Speaker 02: With respect to the further proceedings, this court allowed the district court to, on remand, to decide whether and to what extent each party should be allowed to supplement the record. [00:32:46] Speaker 02: The district court allowed the parties, quote, to supplement the record as they saw fit, end quote. [00:32:51] Speaker 02: That's at A1.15. [00:32:54] Speaker 02: And even on remand, defendants never objected to any of this additional evidence or issues that they themselves argued only in reconsideration, such as this enablement argument that the parties have been addressing and the fill time argument, et cetera. [00:33:10] Speaker 02: All things raised by the first time by the defendants on reconsideration that were addressed by this court in a prior appeal and indeed on remand. [00:33:21] Speaker 05: Are you arguing that permitting parties to supplement the record also permits new arguments to be made? [00:33:28] Speaker 02: I think that first of all, there were no new arguments made on remand. [00:33:36] Speaker 02: They were providing additional evidence regarding the existing arguments, the fast fill arguments, et cetera, and pointing out how, for example, fast fill is irrelevant to the claims, something that we argued on reconsideration before Judge Farna, and we argued on remand yet again. [00:33:55] Speaker 02: This whole fast fill concept. [00:33:57] Speaker 02: Fast fill is the detection time occurs at the point where fill has taken place and it's only after that time where the 10 second test time occurs and it's that [00:34:15] Speaker 02: time frame which is within the scope of the claims. [00:34:19] Speaker 02: This fast-fill argument based on the range of amatocrites, etc. [00:34:23] Speaker 02: doesn't relate in any way to the claims as a matter of law. [00:34:27] Speaker 05: For example, 3, 4, 5 disavowed. [00:34:30] Speaker 02: No, examples 3, 4, 5 were never disavowed. [00:34:33] Speaker 02: And this is in distinct contrast to the Honeywell case, where the specifications specifically demeaned particular embodiments. [00:34:41] Speaker 02: The examples 3, 4, 5 were described as embodiments of the invention. [00:34:47] Speaker 02: Specifically, if you look at column 4, [00:35:01] Speaker 02: Lines three through five. [00:35:05] Speaker 02: They describe figure nine, which is the box hook electrode as used in example three as being an, quote, alternative embodiment of the invention. [00:35:17] Speaker 02: And that is just one example, again, of the distinctions between this case and a case like Honeywell or others where the specifications specifically demean or there was a specific disclaimer in the specification of a particular configuration. [00:35:34] Speaker 02: With respect to the Willsy deposition testimony, the Willsy deposition testimony first of all took place in a different case before the patents had ever even issued. [00:35:44] Speaker 02: Willsy was being deposed with respect to theoretically a different patent. [00:35:51] Speaker 02: and was asked a number of questions. [00:35:53] Speaker 02: He was directed to a couple of lines of the specification here and asked to construe based on those couple of lines what would or would not possibly fall within the scope of a micro or macroelectrode. [00:36:06] Speaker 02: If you look at his testimony, if you look at the surge testimony that's set in the briefs, you'll find that it doesn't support the kind of admission. [00:36:13] Speaker 02: And it's the very reason why this court found in EPAS, for instance, that such testimony is of little property value. [00:36:22] Speaker 00: Thank you. [00:36:23] Speaker 01: We thank all counsel and the cases submitted.