[00:00:00] Speaker 01:
today, I'd like to call on Judge Chen who has a motion.

[00:00:03] Speaker 03:
Oh, that's right.

[00:00:05] Speaker 03:
Thank you, Chief Judge Crost.

[00:00:08] Speaker 03:
I'd like to make a motion to admit someone to our bar.

[00:00:13] Speaker 03:
I move the admission of Jeffrey Thomas Hanson, who's a member of the bar and in good standing with the highest courts of New York and Washington, DC.

[00:00:22] Speaker 03:
I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications.

[00:00:28] Speaker 03:
I know these things.

[00:00:29] Speaker 03:
Chief, because Jeff has been my clerk for the past year.

[00:00:33] Speaker 03:
And I've been a judge long enough to know that there's a certain rhythm where you see clerks come and go.

[00:00:42] Speaker 03:
And so it's a little bit of a sad time, but a happy time, too, to look back.

[00:00:48] Speaker 03:
And when clerks come through, one of the great joys is seeing them grow.

[00:00:57] Speaker 03:
Maybe they become a better writer or a better thinker, better speaker.

[00:01:01] Speaker 03:
And then there's other clerks.

[00:01:05] Speaker 03:
They are what they are.

[00:01:07] Speaker 01:
And they don't change.

[00:01:09] Speaker 03:
And Jeff is the latter.

[00:01:12] Speaker 03:
And what I mean by that is... Don't worry, Jeff.

[00:01:14] Speaker 04:
I'll say something, but he's done.

[00:01:15] Speaker 04:
It'll be nice.

[00:01:18] Speaker 03:
When Jeff came in, he was already pretty much a finished product.

[00:01:23] Speaker 03:
And what I mean by that is he was an outstanding lawyer.

[00:01:27] Speaker 03:
outstanding person.

[00:01:29] Speaker 03:
High functioning and high character.

[00:01:33] Speaker 03:
So it's been a great asset and joy for me to work with him and rely on him for the past year.

[00:01:41] Speaker 03:
I know he's going to do great things and I won't be able to take any of the credit for it.

[00:01:47] Speaker 03:
I look forward to seeing where things go.

[00:01:50] Speaker 03:
So for all these reasons, I humbly ask for

[00:01:56] Speaker 03:
the court to grant my motion.

[00:01:59] Speaker 03:
Judge Moore.

[00:01:59] Speaker 04:
Well, I couldn't possibly top that.

[00:02:01] Speaker 04:
Holy cow, did he turn that around, didn't he?

[00:02:04] Speaker 04:
I just wanted to add my thoughts because it's not often that we have the opportunity to get to know each other's clerks as well as I feel like I've had the opportunity to get to know Jeff.

[00:02:15] Speaker 04:
And I actually have to say

[00:02:18] Speaker 04:
For whatever reason, I think he pulled the short stick and he worked on so many cases that I had, you know, with Judge Chen and I have had the opportunity to see and benefit from really great feedback from Jeff, which is unusual that I would have the opportunity to get to know somebody else's clerk and their work so well.

[00:02:38] Speaker 04:
And I really appreciate all the work you've done here, especially that work that has benefited me directly.

[00:02:45] Speaker 04:
So thank you for that.

[00:02:46] Speaker 04:
And I'm really going to miss you when you leave, too.

[00:02:50] Speaker 01:
And I echo that, too.

[00:02:51] Speaker 01:
It's been a delight, Jeff.

[00:02:53] Speaker 01:
So why don't you stand for the oath?

[00:02:55] Speaker 01:
The motion is granted.

[00:03:00] Speaker 03:
Do solemnly swear that you will comport yourself as an attorney and counselor of this court, uprightly and according to law, and that you will support the Constitution of the United States of America.

[00:03:09] Speaker 03:
I do.

[00:03:10] Speaker 03:
Congratulations.

[00:03:11] Speaker 02:
Congratulations.

[00:03:16] Speaker 01:
Okay, now we begin.

[00:03:17] Speaker 01:
162056, AAT BioQuest versus Texas Fluorescence.

[00:03:23] Speaker 01:
Mr. Yeager, whenever you're ready.

[00:03:27] Speaker 00:
Thank you.

[00:03:29] Speaker 00:
Dr. Menta, the chairman and founder of the flat, is also here today.

[00:03:34] Speaker 00:
Shakespeare was wrong.

[00:03:36] Speaker 00:
The first thing we should do is get rid of the experts, especially in cases like this that are summary judgment cases.

[00:03:43] Speaker 00:
that are so fact-specific on the prosecution history.

[00:03:49] Speaker 00:
KSR expressed concern that rigid preventative rules deny fact-finders recourse to common sense.

[00:03:57] Speaker 00:
Good counsel can help direct a course away from common sense when the facts are bad by citing cases that are not really on point, like Union Oil on the written description aspect of this case, where

[00:04:12] Speaker 00:
They cited and supported, well, the structure is not necessary.

[00:04:15] Speaker 00:
Well, we cited the case of University of California versus Eli Lilly, where it says the structure is the proper case or proper written description.

[00:04:26] Speaker 00:
But the real damage in this case was done by an expert who wasn't really qualified in this area and didn't really take the time to get informed on this area.

[00:04:35] Speaker 00:
And not only that, but

[00:04:38] Speaker 00:
stood by and expanded his statements in the view of facts that we presented.

[00:04:45] Speaker 00:
The Dr. Menta's declaration.

[00:04:46] Speaker 02:
So what is your specific point with respect to the error in this case?

[00:04:51] Speaker 00:
The point is that this case is the expert declaration that undermined Teflab's affinity case where we presented evidence of the commercial use of the compound, the prior art teaching through the BABTA 1980 paper,

[00:05:07] Speaker 00:
Dr. Menna's declaration was showing that the affinity version, the modification of position K to change the affinity to match the market leading flow 3 and 4-8 was necessary to take this H substitution because the affinity was too high or the dissociation constant too high with the methyls that had been used before.

[00:05:28] Speaker 00:
All of those things were disregarded by the trial court here because of these.

[00:05:31] Speaker 03:
Can we focus on

[00:05:33] Speaker 03:
what specific issue we're talking about.

[00:05:35] Speaker 03:
You let off talking about Eli Lilly and written description, and I didn't see your briefs using that as a basis for your appeal.

[00:05:44] Speaker 03:
So what issue are you talking about?

[00:05:47] Speaker 00:
The expert is concerned on anticipation case, which is the first issue.

[00:05:53] Speaker 00:
And in the second case, the expert was also undermined the written description.

[00:05:59] Speaker 00:
The expert declaration undermined the written description aspect, which was... Did you appeal the written description?

[00:06:04] Speaker 00:
I appealed it under the objectively unreasonable willfulness.

[00:06:13] Speaker 00:
The court cited that all of the defenses, including written description, were objectively unreasonable.

[00:06:18] Speaker 00:
And so from that standpoint, I present that.

[00:06:22] Speaker 03:
All right.

[00:06:25] Speaker 03:
You're telling me you preserved your challenge to the written description validity question here.

[00:06:30] Speaker 03:
through your argument on willfulness.

[00:06:32] Speaker 00:
Is that what you're saying?

[00:06:33] Speaker 00:
If the court can do what's appropriate on that issue, I did not list it as another specific grounds on this appeal, that's correct.

[00:06:42] Speaker 00:
So why don't you focus on the grounds that you appeal?

[00:06:45] Speaker 00:
The focus on the appeal is anticipation.

[00:06:49] Speaker 02:
And your position is that there was a factual dispute that required the rejection of some rejuvenation?

[00:06:54] Speaker 00:
The position on the appeal is that the

[00:06:58] Speaker 00:
The prosecution history is fairly clear.

[00:07:00] Speaker 00:
The examiner rejected this compound twice as big anticipated.

[00:07:04] Speaker 00:
It was only after the plaintiff's field brief that said, this is a different compound than the Flow 2 AM, which the examiner maintained that rejection.

[00:07:16] Speaker 00:
And we presented evidence that showed, had the examiner understood the significance of that difference, that that position was used to modify affinity,

[00:07:27] Speaker 00:
and that affinity modification was routinely practiced and recommended, and that H was one of the claim substitutes on that for that very reason, to give you something intermediate between the methyl and the fluorine.

[00:07:40] Speaker 00:
So we presented the prior arc that that was routinely used in 18 commercial compounds.

[00:07:45] Speaker 00:
Dr. Menta presented the

[00:07:50] Speaker 00:
dissociation constants to show that it was necessary to make that adjustment.

[00:07:54] Speaker 04:
I'm sorry, just to make sure I understand, are you arguing now that FLUO 2 out of TN 673 anticipates?

[00:08:01] Speaker 04:
Is that the argument you're making?

[00:08:03] Speaker 00:
FLUO 2 in combination with the claims, it's an inherent argument, the inherency of the prior art teachings by him.

[00:08:13] Speaker 04:
Because you can't dispute the fact that FLUO 2 doesn't disclose all the claim elements, there are two changes.

[00:08:18] Speaker 04:
That's correct.

[00:08:19] Speaker 04:
Float 2 itself anticipates.

[00:08:21] Speaker 00:
It has to be something else.

[00:08:22] Speaker 00:
No, Float 2 in combination with the inherent teachings of Chin as it relates to map to modification.

[00:08:30] Speaker 03:
Is that a 103 argument?

[00:08:32] Speaker 00:
That's a 102 argument because anticipation is also a 103 argument, but it's primarily it's a 102 argument.

[00:08:39] Speaker 04:
But our case law has said, for example, when there are two embodiments disclosed,

[00:08:43] Speaker 04:
that you can't pick elements from one and elements from the other and pull them together to make an anticipation case.

[00:08:48] Speaker 04:
That has to be an obviousness case, not at two different embodiments.

[00:08:53] Speaker 04:
So how is your case different from that?

[00:08:55] Speaker 04:
Because I think that I'm bound by a number of cases that have definitely held what I just said, which is two embodiments disclosed in the same reference.

[00:09:04] Speaker 04:
You can't pick and choose and modify

[00:09:06] Speaker 04:
to pull them together, no matter how obvious it would be.

[00:09:09] Speaker 04:
It might be obvious, but not for anticipation.

[00:09:11] Speaker 00:
There are two responses to that.

[00:09:12] Speaker 00:
The first is that under the patent and trademark office examination rules, they consider inherently either directly by reference in the patent or indirectly by what's taught and well known in the prior art.

[00:09:26] Speaker 00:
So it is inherent.

[00:09:27] Speaker 00:
It's not that we're combining a flow three and a flow two example to say that.

[00:09:30] Speaker 00:
We're saying it's flow two with this modification that is inherent in that teaching.

[00:09:35] Speaker 03:
What does that mean, modification that's inherent in the teaching?

[00:09:38] Speaker 03:
I mean, I suppose if you could make an argument that, okay, look at the Flow-2 compound, look at its chemical structure, now there's something inherent in that structure that necessarily discloses the exact same chemical structure in Flow-8.

[00:09:57] Speaker 03:
But what I'm hearing you say is something different, which is, look at Flow-2, look at the chemical structure,

[00:10:04] Speaker 03:
look at the other teachings inside the Tian patent, and one of skill would be motivated to make little modifications based on other teachings in the Tian patent to make adjustments to Flow-2 that then arrives at the chemical structure of Flow-8.

[00:10:22] Speaker 03:
Now to me, that kind of thinking channels me towards a 103 analysis like Judge Moore was describing.

[00:10:33] Speaker 00:
On one hand, we wouldn't care necessarily how the patent got invalidated, but on the other hand, the difference between a 102 and a 103 rejection is the ability to bring in all of this other stuff, like the expert declaration on person of ordinary skill.

[00:10:49] Speaker 00:
Dr. Mena declared that they worked for, he and Dr. Chen worked for five years to come up with this new class of indicators where it took the chelating properties of BAPTA and the visible indicators of fluorescein and rhodamine.

[00:11:01] Speaker 00:
They had five working examples.

[00:11:03] Speaker 00:
They didn't present all the things that didn't work.

[00:11:05] Speaker 00:
Now, according to a strict genus species analysis, the only thing that's really covered by that patent are those five specific examples, even though they've opened up this entire area that are still the best indicators today.

[00:11:18] Speaker 00:
And I think if the council that... What if we disagree with that?

[00:11:23] Speaker 03:
That as a matter of law, we can't say that the gen patent is limited to the actual five

[00:11:30] Speaker 03:
disclosed embodiments because it discloses other things that go beyond just, you know, conceptually speaking, it's describing a genus.

[00:11:39] Speaker 03:
Yes, it does identify five examples, but even if you were to say that it's limited to five examples, number one, that doesn't help you because you're trying to tell us you have a 102 argument, and none of those five examples anticipate the flow rate.

[00:11:58] Speaker 03:
But number two, if you're

[00:12:00] Speaker 03:
The reference is broader than just those five examples.

[00:12:05] Speaker 03:
There's an actual genus going on there.

[00:12:07] Speaker 00:
It is.

[00:12:07] Speaker 00:
It's wonderfully broad.

[00:12:09] Speaker 00:
I mean, it's the concept of how you combine these two.

[00:12:12] Speaker 00:
That's the invention of the chin pad.

[00:12:14] Speaker 03:
When you say combine these two, what two things are you combining?

[00:12:19] Speaker 00:
The chin claim that showed on one of these babter rings, on the unlinked babter ring, was X is equal to methyl or hydrogen or fluorine or bromine

[00:12:30] Speaker 00:
all of these substituents.

[00:12:31] Speaker 00:
So the reason for putting that in, now we wouldn't be here if that patent had gone ahead and put another paragraph in there and said the reason that we're doing these substitutions is to change identity.

[00:12:41] Speaker 00:
It would be all in one spec.

[00:12:42] Speaker 00:
There wouldn't be any question that it's anticipated at that point.

[00:12:46] Speaker 00:
You'd have very clear support, explicit support.

[00:12:49] Speaker 00:
Now what, because Chin invented this back in 1980 and the Chin patent on the visible indicators wasn't done until the late 1980s, it was just understood in that arc

[00:13:00] Speaker 00:
that those modifications were done for that purpose.

[00:13:02] Speaker 00:
So council, when they prepared that patent specification, didn't bother to put that in there.

[00:13:08] Speaker 00:
It was just understood.

[00:13:08] Speaker 00:
According to my argument, as it relates to anticipation, is that it's still inherent because it was taught since 1988.

[00:13:18] Speaker 00:
Anybody that was in this area of designing indicators knew that.

[00:13:23] Speaker 00:
And you can't take it out.

[00:13:25] Speaker 00:
You can't just disregard all of those affinity versions.

[00:13:29] Speaker 00:
the argument is that flow two and flow three and flow one, all eight of those affinity versions that were claimed by Chen are inherent and anticipated in that Chen pattern.

[00:13:43] Speaker 02:
You're into your rebuttal, so why don't you save your rebuttal and we'll hear from the other side.

[00:13:47] Speaker 02:
Thank you.

[00:13:58] Speaker 05:
May it please the court, Krista Carter on behalf of APOLI AET BioQuest.

[00:14:03] Speaker 05:
Good morning, Your Honors.

[00:14:05] Speaker 05:
Teflabs's arguments lose sight of the forest with the trees.

[00:14:09] Speaker 05:
This is not a court of first impression.

[00:14:12] Speaker 05:
And it's important that we step back and look at the record that was before the district court and at what Judge Ryu did below instead of retrying the case on appeal.

[00:14:21] Speaker 05:
The case you just heard from Mr. Yeager.

[00:14:23] Speaker 03:
Well, we review summary judgment decisions to no vote, right?

[00:14:26] Speaker 05:
Yes, Your Honor, that's correct.

[00:14:30] Speaker 03:
You know, your opposing counsel is telling us that Judge Ryu did fact-finding in her summary judgment order to conclude that there was no anticipation.

[00:14:42] Speaker 05:
That's correct.

[00:14:43] Speaker 05:
Well, are you correct that she did that or that's correct that that's what he said?

[00:14:47] Speaker 05:
That's correct that that's what he said.

[00:14:49] Speaker 03:
Why is that wrong based on when you looked at the analysis in A2559 where she appears to be weighing and evaluating

[00:14:58] Speaker 03:
the strength of two competing declarations, and then ultimately concludes that she likes your expert declaration better.

[00:15:06] Speaker 04:
Your Honor, I don't believe that's what the district court did.

[00:15:10] Speaker 04:
You might want to pull these pages out for yourself, because I'm going to ask you specifically about what she says in them, so it would probably be useful for you to have them handy.

[00:15:17] Speaker 04:
2559 and 2560.

[00:15:47] Speaker 05:
Your Honor, what the district court did on anticipation, the question before her was whether TEFLabs provided clear and convincing evidence on each of the essential elements of anticipation.

[00:16:00] Speaker 04:
No, the question before her on summary judgment is did they raise a genuine issue of fact, assuming all facts and reasonable inferences in their favor, right?

[00:16:11] Speaker 04:
Isn't that the summary judgment standard?

[00:16:13] Speaker 05:
Right, and the key... Well, you say it.

[00:16:15] Speaker 04:
Say it out loud.

[00:16:15] Speaker 04:
What's the summary judgment standard?

[00:16:17] Speaker 05:
The summary judgment standard is whether TEFLAB's first to win on summary judgment, they would have had to provide... No, that's not what they appealed.

[00:16:25] Speaker 04:
That's not what we're focusing on.

[00:16:26] Speaker 04:
They lost on summary judgment.

[00:16:28] Speaker 04:
So what was the summary judgment standard that should have been applied to your summary judgment motion of no anticipation?

[00:16:35] Speaker 05:
Whether there were issues of material fact,

[00:16:38] Speaker 05:
for which the court should have allowed, should have deferred to trial.

[00:16:42] Speaker 04:
And what did the court actually say in its conclusion section on 2560?

[00:16:46] Speaker 04:
What's the standard that the court used when it says in sum and reaches a conclusion about your motion for summary judgment of no anticipation?

[00:16:58] Speaker 04:
In sum, I'll read it to you, AAT has failed to show that TEFLabs failed to demonstrate a clear and convincing evidence that the 165 patent was invalid

[00:17:07] Speaker 04:
because it was anticipated by prior art.

[00:17:10] Speaker 04:
I was so darn confused.

[00:17:11] Speaker 04:
First, I found the Braves very confusing in this case to begin with.

[00:17:14] Speaker 04:
But then I was so confused because when I read this, I thought, wait, I didn't think anticipation went to the bench trial.

[00:17:19] Speaker 04:
I thought anticipation was decided on summary judgment.

[00:17:22] Speaker 04:
But the standard that she's using here is definitely not the summary judgment standard.

[00:17:26] Speaker 04:
It's the trial standard.

[00:17:28] Speaker 04:
Am I wrong about that?

[00:17:29] Speaker 05:
Well, I believe that she set up the argument as in setting up on whether summary judgment could be ruled against TAFLABS.

[00:17:38] Speaker 04:
As we cited with sell a text and where, where did she, where did she say the standard properly with regard to whether summary judgment of no anticipation and whether there was a genuine question of material fact about no anticipation.

[00:17:54] Speaker 04:
Cause I kind of feel like these people all let her down the wrong road and made it an either or scenario.

[00:18:00] Speaker 04:
as though if she didn't agree with them that summary judgment of anticipation was warranted, then she should automatically grant your alternative summary judgment motion of no anticipation.

[00:18:09] Speaker 04:
But clearly, that's not how the world works.

[00:18:10] Speaker 05:
Right.

[00:18:10] Speaker 05:
And that is not what we advocated, Your Honor.

[00:18:12] Speaker 05:
What we advocated was that if Teflabs failed to provide evidence on essential elements of its defenses, if they failed to raise

[00:18:23] Speaker 05:
any evidence on essential elements that summary judgment was appropriate.

[00:18:28] Speaker 04:
But she didn't hold that anywhere.

[00:18:29] Speaker 04:
She didn't hold that.

[00:18:29] Speaker 04:
You tell me where in her opinion she held that, that she agreed with you that they failed to raise any evidence about an essential issue.

[00:18:38] Speaker 04:
Because the entire analysis is on these two pages.

[00:18:39] Speaker 04:
There's nothing else.

[00:18:41] Speaker 05:
So for anticipation, the first question Judge Ryu asked was where within the four corners of the Chen patent Teflabs identified.

[00:18:50] Speaker 05:
the identical invention of flow eight and whether flow eight was disclosed in Chen within the four corners as claimed and arranged in claim one of the 165 patent.

[00:19:00] Speaker 05:
And she holds, she finds that Teflabs fails to identify where in Chen those two differences from flow two compound were identified.

[00:19:10] Speaker 05:
And then moving on to the genus species argument, the question is whether a person of ordinary skill in the art would have envisioned

[00:19:17] Speaker 05:
small subclass of compounds with common properties that included flow 8am.

[00:19:23] Speaker 05:
Teflabs offered no evidence from the perspective of a person of ordinary skill in the arts.

[00:19:28] Speaker 04:
She didn't make any of these fact findings.

[00:19:30] Speaker 04:
These are what you're, while you're telling us you should win, but these aren't any of the fact findings she made.

[00:19:39] Speaker 05:
On, on a appendix 2556, she does find that

[00:19:46] Speaker 05:
by 2557.

[00:19:48] Speaker 05:
Teflabs's own admission, there are at least two differences.

[00:19:53] Speaker 04:
Right, but that's a different section than the disclosure of the genus section.

[00:19:56] Speaker 04:
See, his problem is he stood up here and argued flow two the whole time.

[00:19:59] Speaker 04:
And honestly, that's what he argued mostly in his briefs.

[00:20:02] Speaker 04:
And he seemed to ignore the separate argument if he preserved it in his briefs is a real question.

[00:20:07] Speaker 04:
But he seems to have ignored the separate argument as to whether claim one itself actually discloses the species

[00:20:16] Speaker 04:
and therefore anticipates.

[00:20:17] Speaker 04:
Because it does.

[00:20:18] Speaker 04:
It actually does.

[00:20:19] Speaker 04:
But you said, but wait a minute, but it discloses 20 billion possibilities.

[00:20:22] Speaker 04:
Why would that one have been pulled out of that 20 billion?

[00:20:26] Speaker 04:
And that's wherein we end up devolving into a genus species case, for sure.

[00:20:32] Speaker 04:
But that's what you're pointing to is whether Float2 anticipates.

[00:20:37] Speaker 04:
I agree with you.

[00:20:37] Speaker 04:
Hands down, Float2 doesn't anticipate.

[00:20:39] Speaker 04:
And you can't cherry pick other things from other parts of the patents to come into Float2 to tell me it anticipates.

[00:20:44] Speaker 04:
The only question I have is does claim one anticipate?

[00:20:47] Speaker 04:
That's my only question for you.

[00:20:49] Speaker 04:
He didn't necessarily preserve it, and it may very well be waived.

[00:20:52] Speaker 04:
He sure as heck didn't say a word about it up here in oral argument, and it's hard for me to find anything in the briefs on it.

[00:20:56] Speaker 04:
Nonetheless, as I read this, I was very troubled by the way she analyzed that issue.

[00:21:01] Speaker 04:
And by page 2559, where Judge Chen started, which appears to be a series of really fact findings on her part, I didn't like this expert.

[00:21:11] Speaker 04:
I did like this one.

[00:21:12] Speaker 04:
these people dispute whether this list is accurate.

[00:21:15] Speaker 04:
Those are the kinds of things that sound like fact findings.

[00:21:19] Speaker 05:
Well, Your Honor, what Judge Ryu did was find that the underpinnings of Teflav's arguments were flawed.

[00:21:28] Speaker 05:
First, again, backing up, the record that was before her was an undifferentiated mass of hundreds of pages of prosecution histories and other documents, including prosecution histories that weren't even in this case.

[00:21:41] Speaker 05:
So Teflabs never once pointed to Warren Chen or to any other evidence to say that a person of ordinary skill in the art would have envisioned Flow 8 within the subclass.

[00:21:53] Speaker 05:
What they did was have Dr. Minta put forward declaration testimony where he was not qualified from the district court as an expert.

[00:22:04] Speaker 05:
He didn't offer it from the perspective of an ordinary person of skill in the art, which

[00:22:09] Speaker 05:
I believe Judge Ryu made a point of that their arguments aren't from the perspective of a person of ordinary skill in the art, which is the required perspective in this case.

[00:22:18] Speaker 04:
Is your argument maybe that on summary judgment our job is to look at the record and see if it supports what she did de novo as opposed to necessarily nitpick with some things that maybe she may be said in a way that I'm not so thrilled with?

[00:22:31] Speaker 05:
I believe your job is to see if the district court got it right to say that they did not present

[00:22:38] Speaker 05:
evidence to essential elements of its defense.

[00:22:42] Speaker 05:
And the evidence to the essential elements would have to consist of evidence from the person of ordinary skill in the art, which they did not do.

[00:22:49] Speaker 05:
All that they did, if you look at particularized evidence, is a couple of paragraphs from MINTA, which Judge Ryu found was not competent evidence.

[00:23:02] Speaker 05:
It wasn't a weighing of evidence.

[00:23:04] Speaker 05:
It's that they didn't even provide evidence to support their theory.

[00:23:07] Speaker 05:
They never argued.

[00:23:08] Speaker 05:
He wasn't an expert.

[00:23:09] Speaker 05:
He was a fact witness.

[00:23:10] Speaker 05:
He was not qualified as an expert.

[00:23:12] Speaker 05:
He offered expert testimony, which is precluded under Federal Rule of Civil Procedure 701.

[00:23:19] Speaker 03:
He's the co-inventor of the Chen patent.

[00:23:21] Speaker 05:
He is.

[00:23:22] Speaker 05:
And at the outset of the case, Teflab said, we want early summary judgment.

[00:23:26] Speaker 05:
We want no experts.

[00:23:27] Speaker 05:
We want no depositions.

[00:23:29] Speaker 03:
I suppose what he was testifying to through his declaration was, what was the state of the art at the time of 2006?

[00:23:37] Speaker 03:
what kinds of embodiments or species from the Chen genus were actually being commercialized in the marketplace?

[00:23:46] Speaker 05:
Is that right?

[00:23:47] Speaker 05:
And again, that's not the relevant question.

[00:23:49] Speaker 03:
And I guess that's my follow-up question.

[00:23:52] Speaker 03:
What relevance is that when it comes to a 102 in trying to figure out how big of a genus does the Chen pattern actually disclose?

[00:24:03] Speaker 03:
The fact that maybe only 18

[00:24:06] Speaker 03:
species of a potential billion genus have been commercially marketed, I don't see how that goes to the question of why does that matter in terms of the four corners of the Chen patent?

[00:24:18] Speaker 03:
What does it actually disclose?

[00:24:20] Speaker 03:
How many different embodiments are actually disclosed?

[00:24:23] Speaker 03:
That's a different question than what would one of skill and the art be motivated to do based on the commercial marketplace of picking and choosing?

[00:24:32] Speaker 05:
That's right.

[00:24:34] Speaker 05:
In looking at the essential elements again, even if you take everything that Minta said is true, which the court found was not competent evidence.

[00:24:43] Speaker 05:
It wasn't proven to be a fact.

[00:24:45] Speaker 05:
It wasn't proven to be clear and convincing evidence even before our rebuttals.

[00:24:50] Speaker 05:
If you look at what he did, he's looking at 2006, which has no relevance to the Four Corners of Chen when Chen did the disclosure in 1987.

[00:24:59] Speaker 05:
If you look at the Chen patent and what they ignore is that Chen actually taught

[00:25:03] Speaker 05:
away from making other compounds like the Flow 2 compound, which had non-electron withdrawing groups at the exposition.

[00:25:10] Speaker 05:
Chen said, you need to have electron withdrawing groups at the expositions because of this pH sensitivity of Flow 2.

[00:25:18] Speaker 05:
Flow 2 didn't work as a fluorescent indicator.

[00:25:22] Speaker 05:
The fluorescence was almost completely quenched and explicitly taught that for that reason, you move to a compound like Flow 3.

[00:25:30] Speaker 05:
which has chlorines, which are electron withdrawing groups, and not hydrogens.

[00:25:35] Speaker 05:
So he specifically taught a way.

[00:25:37] Speaker 05:
So if you look at what a person of ordinary skill in the art would have understood to have been any disclosure of a subclass with common properties, you would not have included flowate or any other indicator with a non-electron withdrawing group at the exposition.

[00:25:51] Speaker 05:
Teflabs completely ignores that teaching from Chen, doesn't address it.

[00:25:56] Speaker 05:
They focus only on this K equals hydrogen, which is a different position, which grossly oversimplifies the complexity of these compounds.

[00:26:05] Speaker 05:
Because you wouldn't start with flow eight and make modifications to come up with flow, I'm sorry, you wouldn't start with flow two at the end of the synthesis product and make modifications to get to flow eight.

[00:26:16] Speaker 05:
You have to know the structure, envision the structure from the beginning before you start.

[00:26:20] Speaker 04:
Well, and even if you would do that, it would only be obviousness.

[00:26:23] Speaker 04:
It wouldn't be anticipation.

[00:26:25] Speaker 04:
You can't start with flow two and modify it to get to flow eight and call it anticipation.

[00:26:30] Speaker 04:
It's at best obviousness.

[00:26:32] Speaker 05:
Well, and I don't mean to make out their case better than it is, but they never say it.

[00:26:36] Speaker 05:
But I think what they're trying to argue is that the group of 36 is what a person would have envisioned based on Chen.

[00:26:44] Speaker 05:
They never say it that way.

[00:26:45] Speaker 05:
They never give from the perspective of an ordinary skill in the art.

[00:26:50] Speaker 05:
And there's flaws with those 36.

[00:26:51] Speaker 05:
It's not clear and convincing evidence, because it's from a perspective of 2006.

[00:26:56] Speaker 05:
where they didn't even prove that those compounds in 2006 were even the ones that were flow indicators on the market.

[00:27:02] Speaker 05:
They excerpt out and make characterizations that are not from the source reference.

[00:27:09] Speaker 05:
So on essential elements, they failed to even address, from the perspective of a person of skill in the art, what Chen would have taught, ignores teachings, comes up with other k equals hydrogen arguments, which

[00:27:22] Speaker 05:
isn't even focused on the right questions of the totality of the Chen teaching.

[00:27:27] Speaker 05:
And for those reasons, for failing to present even argument on essential elements, not addressing the question of what a person of ordinary skill would have understood from Chen's disclosure, not addressing the teaching away from the flow to compound with non-electron withdrawing groups,

[00:27:49] Speaker 05:
They failed on essential elements and summary judgment was appropriate against them with a finding of no anticipation.

[00:27:57] Speaker 03:
What's the status of the re-exam?

[00:28:00] Speaker 05:
I believe AAT BioQuest has filed a response, but there has been no decision.

[00:28:06] Speaker 05:
And I just submit to this court that the re-examination is not relevant here.

[00:28:12] Speaker 05:
It was not before the district court.

[00:28:13] Speaker 03:
Has the agency issued an office action yet?

[00:28:16] Speaker 03:
I know they issued.

[00:28:18] Speaker 03:
an SNQ order granting the re-exam request, but have they issued an office action?

[00:28:24] Speaker 05:
I don't believe they have.

[00:28:25] Speaker 05:
And I would just point out that the evidence presented in the re-examination was not before this district court, was not considered.

[00:28:34] Speaker 05:
Even if it were, I believe they fail on their burden of proof.

[00:28:39] Speaker 03:
Is it a 102 theory or a 103 theory for the grant of the re-exam request?

[00:28:43] Speaker 05:
I believe on both.

[00:28:45] Speaker 05:
I believe on both.

[00:28:47] Speaker 03:
But Chen by itself?

[00:28:49] Speaker 05:
Chen by itself with explicit teachings from patents that are incorporated by reference into Chen.

[00:29:00] Speaker 05:
And those patents that were incorporated by reference into Chen were not before the district court.

[00:29:06] Speaker 04:
A different record than we have here.

[00:29:07] Speaker 05:
Different records.

[00:29:08] Speaker 05:
So the 209 and 432 patent, which TEFLabs's briefs rely on extensively, were not before the district court.

[00:29:15] Speaker 05:
and are not properly before this court.

[00:29:18] Speaker 05:
So there's a lot more evidence, and the finding that there was a question to open the re-examination is just based on whether this argument or these references would be important to an examiner.

[00:29:29] Speaker 05:
It's not a question on patentability, and it's not a finding on patentability, and there's no resolution there.

[00:29:37] Speaker 05:
But I submit it's not before this court.

[00:29:40] Speaker 03:
So the Flow 8 compound, that's what is patented in the 165 patent.

[00:29:45] Speaker 05:
That's correct.

[00:29:46] Speaker 03:
And the Flow 8 compound is part of the genus of the Chen 673.

[00:29:53] Speaker 03:
Is that right?

[00:29:54] Speaker 05:
It is literally encompassed within the billions that are in the genus.

[00:29:57] Speaker 03:
So if someone practices the Flow 8 compound, are they infringing both patents?

[00:30:04] Speaker 05:
No, Your Honor, because it's not disclosed.

[00:30:07] Speaker 05:
So there's a difference between being literally encompassed and what is actually disclosed to a person of ordinary skill in the art.

[00:30:14] Speaker 05:
What's disclosed to say, I understand you're teaching this genus, this subclass with common properties.

[00:30:20] Speaker 05:
I understand I can't do it.

[00:30:22] Speaker 05:
There's no evidence in the record from Teflabs on what that person would have understood.

[00:30:27] Speaker 04:
We did present, is that a disclosure question or an enablement question?

[00:30:32] Speaker 04:
Is it a question about, because I mean, it is actually disclosed along with a billion other things, but is it

[00:30:38] Speaker 04:
A question of whether it is enabled whether one of skill in the art is enabled by this very, very, very, very broad disclosure to focus in and adopt this one.

[00:30:47] Speaker 04:
I don't know the answer.

[00:30:48] Speaker 04:
Under genus species law, it's very complicated.

[00:30:51] Speaker 04:
And so I don't know the answer.

[00:30:52] Speaker 04:
So can you help me?

[00:30:54] Speaker 04:
Is it a disclosure question or an enablement question?

[00:30:56] Speaker 05:
Well, it's both.

[00:30:58] Speaker 05:
And I think they're combined.

[00:30:59] Speaker 04:
And I don't mean enablement under 112.

[00:31:00] Speaker 04:
I mean enablement under anticipation.

[00:31:02] Speaker 04:
The reference has to not only disclose it, but be enabling.

[00:31:05] Speaker 05:
There's definitely a case law that discusses from an enablement perspective.

[00:31:09] Speaker 05:
We did not follow that approach because we were responding to Teflabs's arguments.

[00:31:16] Speaker 05:
But in terms of, like you said, literally disclosed, and I would say it's literally encompassed, but not disclosed from the legal perspective of whether a person of ordinary skill in the art would have seen and understood the specific Flow 8 AM compound to be disclosed by this reference, whether there's a small subclass with common properties that is disclosed and claimed by Chen.

[00:31:40] Speaker 05:
And we're saying that when we presented expert testimony, which by the way was not

[00:31:45] Speaker 05:
challenged the expertise, the evidence base, and his opinions were not challenged at the district court level by TEFLabs.

[00:31:53] Speaker 05:
They weren't challenged until its motion either for reconsideration or for a new trial after the fact.

[00:31:59] Speaker 05:
And AAT presented evidence, despite the fact that TEFLabs failed on its burden to even raise evidence against each essential element.

[00:32:09] Speaker 05:
We nonetheless presented our own evidence to say,

[00:32:12] Speaker 05:
No, Chen didn't disclose flow 8 AM because Chen taught away from using non-electron withdrawing groups at these expositions.

[00:32:22] Speaker 05:
TEFLabs in 2011 admitted that this was Chen's teaching by saying that it previously was thought that this PKA issue with the non-electron withdrawing groups was a problem and later experimentation showed that it wasn't.

[00:32:37] Speaker 05:
And what happened after, it wasn't

[00:32:39] Speaker 05:
Teflabs is determining that the non-electron withdrawing groups would actually work.

[00:32:44] Speaker 05:
It was AET BioQuest.

[00:32:46] Speaker 05:
AET BioQuest came up with Flow 8 AM 17 years after the Chen Disclosure, 17 years after the disclosure of Flow 3.

[00:32:53] Speaker 05:
And Flow 8 is twice as bright as the next leading compound, Flow 4, which came out years after the Chen Disclosure.

[00:33:06] Speaker 05:
Better cell loading.

[00:33:09] Speaker 05:
less temperature sensitive.

[00:33:10] Speaker 05:
And Teflabs wants you to believe that this compound was in the hands of those of skill in the art at the time of 1987 disclosure of Chen.

[00:33:19] Speaker 05:
That this compound, which is way better than anything in the market right now, no one actually made it until 17 years later, even though it was so obvious that a person just had to change these few things from Flow 2, which Chen taught away from, to come up with this Flow 8 compound.

[00:33:37] Speaker 05:
Yet nobody did it.

[00:33:38] Speaker 05:
So factually, their argument is illogical.

[00:33:43] Speaker 05:
But if you actually look at what Chen taught in the record evidence, Flow 8 was taught away from.

[00:33:49] Speaker 05:
Nobody in the skill and the art at the time would have envisioned it to be within a subclass of compounds with common properties.

[00:33:56] Speaker 05:
Teflabs makes no arguments about what the person of ordinary skill would have understood.

[00:34:01] Speaker 05:
Coming up with these 36 combinations in permissible hindsight,

[00:34:06] Speaker 05:
never say what common properties those 36 combinations would have had.

[00:34:13] Speaker 05:
And the case law is very clear that this hindsight recombination, even if you're in hindsight looking at this disclosure itself and

[00:34:26] Speaker 05:
Looking at the disclosure itself and recombining what is in Chen to come up with disclosures, that's impermissible.

[00:34:33] Speaker 05:
You have to look at the reference to see what preferences are disclosed to see if the particular later claimed species was claimed.

[00:34:43] Speaker 05:
And it wasn't.

[00:34:44] Speaker 05:
And TAFLABS failed to meet its burden on those issues.

[00:34:48] Speaker 05:
And I see that I've run over, and I apologize.

[00:34:51] Speaker 05:
I'll disclose by saying that the other issues are addressed in our briefs.

[00:34:55] Speaker 05:
Judge Ryu's opinions are before you.

[00:34:58] Speaker 05:
We submit that she did a thorough job with her analysis and that her ruling should be affirmed.

[00:35:03] Speaker 02:
Thank you.

[00:35:04] Speaker 05:
Thank you, Your Honors.

[00:35:22] Speaker 00:
I did a check review exam last night.

[00:35:24] Speaker 00:
As of the night before, the last entry was January 10th when it was on the examiner's desk ready to do something.

[00:35:29] Speaker 00:
But they may very well be waiting for this court to do something first.

[00:35:32] Speaker 00:
Special dispatch is an interesting concept in the patent office.

[00:35:37] Speaker 00:
Undifferentiated masses.

[00:35:39] Speaker 00:
I thought I was doing the court a favor by presenting the prosecution histories because in the last 10 years or so,

[00:35:45] Speaker 00:
The only prosecution knife histories I've looked at have been PDFs that are nicely arranged, you know, where you see what you've got.

[00:35:51] Speaker 00:
I did not have any idea the court was going to print those out.

[00:35:54] Speaker 00:
When we got to trial, counsel had a PowerPoint presentation, and I presented or attempted to present a notebook, a tab notebook, with the condensed portions that were relevant, and the court declined either of those.

[00:36:07] Speaker 00:
That's not in the joint appendix.

[00:36:11] Speaker 00:
It is at the

[00:36:15] Speaker 00:
docket number 43, pages 5, and then later, page 29 in that same docket, I asked the court, of course, the court again expressed concern about not having specific size, so I asked for permission to amend just to add page numbers, and the response was absolutely not, you had your choice, you had your chance, you had your shot, I'm sorry, you had your shot.

[00:36:41] Speaker 00:
You know, rule 56 allows the court to ask for

[00:36:45] Speaker 00:
information if there's any question about that.

[00:36:49] Speaker 00:
So the court certainly had the ability to do that, but was just pretty annoyed that we hadn't done it earlier.

[00:36:56] Speaker 00:
That was just a miscommunication.

[00:36:58] Speaker 00:
It was certainly an error on my part.

[00:37:00] Speaker 00:
Joe Kao explained why Flow 2 was disfavored by Chin, who was a perfectionist.

[00:37:06] Speaker 00:
That's at page 2158, and it's a very concise explanation for what

[00:37:13] Speaker 00:
you know, why Chen said what he did in the patent.

[00:37:16] Speaker 00:
And it's a very different take than what counsel has presented.

[00:37:22] Speaker 00:
I had the impression, as the panel has noted, that the court took the position, basically, if we didn't win, and we're putting all our eggs in the summary judgment, if we didn't win summary judgment, we're going to lose the case.

[00:37:34] Speaker 00:
It wasn't going to go to trial, and that is what happened.

[00:37:37] Speaker 00:
And I think the court is accurate to point out that some of those burdens weren't met to satisfy a cross-motion summary judgment.

[00:37:44] Speaker 00:
In particular, as it relates to anticipation, there's a lot of evidence out there.

[00:37:48] Speaker 00:
There's evidence of prior use.

[00:37:49] Speaker 00:
There's a BAPTA paper.

[00:37:50] Speaker 00:
There's the Mintus Declaration.

[00:37:52] Speaker 00:
The only thing actually in support of their motion was the plaintiff's expert, which has been certainly disproven by the 209 act, which is the subject of the re-examination.

[00:38:06] Speaker 00:
One other point about re-examination, it's not just on the 209 patent.

[00:38:09] Speaker 00:
The re-examination, the reason for granting substantial new questions of patentability on both obviousness and anticipation related to the teachings of the BAVTA paper, which was in evidence below.

[00:38:24] Speaker 00:
The bottom line on this is that despite all the alleged advantages of Flow 8, it still has 10% of the market or less, and that's despite some significant costs

[00:38:33] Speaker 00:
advantages like half price to flow forward.

[00:38:36] Speaker 00:
So a lot of these things are overstated.

[00:38:40] Speaker 00:
And I think those are pretty well developed in the brief.

[00:38:45] Speaker 00:
The primary defense that plaintiff offers is that we didn't present person with ordinary skill in the art.

[00:38:53] Speaker 00:
And we explained early on why we didn't do that.

[00:38:55] Speaker 00:
We thought that was going to require an expert.

[00:38:57] Speaker 00:
We were going to be into depositions.

[00:38:58] Speaker 00:
We were going to be into trial.

[00:38:59] Speaker 00:
We couldn't afford to do anything.

[00:39:01] Speaker 00:
Now, Teflabs is either fortunate enough or unfortunate enough, if you really look at it, to have counsel that could attempt to present a defense in this case, or we would have just had to concede the market for something we thought that MENTA had invented years ago.

[00:39:18] Speaker 00:
We explained why we didn't think a person of ordinary skill was required, because in the case of a chemical patent, precise structures can be determined, and you could look at Table 2 in the 165 patent, and it's either there or it's not there.

[00:39:31] Speaker 00:
Further, there were four obviousness rejections where a person of ordinary skill analysis was used by the examiner, and the 112 rejection used a person of ordinary skill analysis explicitly.

[00:39:41] Speaker 00:
Now, neither of those were objective.

[00:39:43] Speaker 00:
Those were all uncontested.

[00:39:45] Speaker 00:
In the written description, they admitted it, withdrew the compound, and they never contested the fact that the person of ordinary skill would not find it in there.

[00:39:53] Speaker 00:
They attempted to just sneak it back in later.

[00:39:56] Speaker 00:
On obviousness, they made secondary arguments.

[00:39:58] Speaker 00:
They did teaching away.

[00:39:59] Speaker 00:
that this flow two was so bad that nobody would make an AM version of it.

[00:40:03] Speaker 00:
And they used secondary evidence of unexpected results, but they never challenged the prima facie case of obviousness.

[00:40:09] Speaker 00:
All Teflabs did on the obviousness portion of the case was presented as a much stronger case, because their things examiner did not know.

[00:40:18] Speaker 00:
The examiner did not know the importance of affinity.

[00:40:21] Speaker 00:
I apologize for going over elsewhere.

[00:40:23] Speaker 00:
Thank you.

[00:40:24] Speaker 00:
We thank you for deciding the case is submitted.