[00:00:00] Speaker 05:
In front of us today, we have four cases that are set for argument.

[00:00:08] Speaker 05:
And in one case, we've already resolved that on the briefs.

[00:00:13] Speaker 05:
The first case is Allergen versus Sandos.

[00:00:18] Speaker 05:
Mr. Countryman, Mr. Molenda.

[00:00:22] Speaker 05:
And I understand you reserved three minutes of your time from the bottle.

[00:00:25] Speaker 05:
Is that correct?

[00:00:26] Speaker 05:
Yes, sir.

[00:00:27] Speaker 05:
All right, you may proceed.

[00:00:33] Speaker 06:
The district court's collateral estoppel judgment should be reversed because the asserted claims here present a different issue than the issue that was previously litigated and decided in the prior cases.

[00:00:46] Speaker 06:
The asserted claims of the 953 patent cover applying BAMAD approach to increase the darkness of eyelashes, while the claims in the prior cases could be practiced without increasing eyelash darkness.

[00:00:59] Speaker 06:
but instead by stimulating any of a variety of individuals.

[00:01:02] Speaker 04:
On page 12 of the red brief, Sandoz asserts that the ex-party testimony submitted to the examiner in prosecution of 953 was submitted, quote, in an effort to circumvent our decision that the brand references are prior are, close quote.

[00:01:19] Speaker 04:
And I want to give you an opportunity to deal with that.

[00:01:23] Speaker 06:
We don't agree with that at all, Your Honor.

[00:01:25] Speaker 06:
As we noted in our brief,

[00:01:28] Speaker 06:
In the first Lattice case, there was an issue about whether those brand references were actually the work of one of the inventors, Dr. Vandenberg.

[00:01:38] Speaker 06:
And the court there held that they were not, because there was no evidence in the Lattice 1 record that she directed the publication of that work.

[00:01:47] Speaker 06:
And so what Allergan did was we went back to the Patent Office.

[00:01:49] Speaker 06:
We presented that evidence that the court said was missing in the Lattice 1 case.

[00:01:55] Speaker 06:
And the examiner considered that evidence and found that the claims were patentable.

[00:01:59] Speaker 06:
And so it was in no way trying to circumvent the court's opinion.

[00:02:02] Speaker 06:
We were supplying the evidence that the court found was lacking in Latice 1.

[00:02:07] Speaker 06:
And therefore, we believe those claims are valid.

[00:02:09] Speaker 04:
Why couldn't you have presented that evidence in the second district court litigation, which was after this court's decision?

[00:02:16] Speaker 04:
The alleged infringement of 054, 988, and 161.

[00:02:21] Speaker 06:
On that point, it was because we never got an opportunity to do it.

[00:02:25] Speaker 06:
We had tried to voluntarily dismiss the second district court case.

[00:02:29] Speaker 06:
The district court did that with respect to a couple of defendants.

[00:02:32] Speaker 06:
But with respect to Apotex, it granted Apotex's motion without giving us a chance to respond on collateral estoppel.

[00:02:40] Speaker 06:
But more generally, what we thought was the claims in that second case still covered kind of a genus of multiple types of stimulating hair growth or enhancing hair growth.

[00:02:51] Speaker 06:
And so what we thought was we wanted to go back and get claims that were specific to the species of enhancing eyelash darkness.

[00:02:58] Speaker 06:
And so that's why we went back to the PTO.

[00:03:00] Speaker 06:
We secured those claims, which are the only asserted claims here, 823 and 26.

[00:03:05] Speaker 06:
And now we believe that they present a different and distinct validity issue.

[00:03:10] Speaker 04:
Because claim eight specifically states that the method relates to increasing length and thickness as well.

[00:03:17] Speaker 04:
How can you argue that it's only directed at darkness?

[00:03:20] Speaker 06:
So it is directed to all three.

[00:03:22] Speaker 06:
But in order to infringe claim eight, you have to show that there's increased darkness.

[00:03:27] Speaker 06:
Whereas to infringe the claims in the prior litigations, you wouldn't necessarily have had to show that the mataprost increased darkness.

[00:03:37] Speaker 03:
I thought, though, that the darkness was in play in the original litigation.

[00:03:41] Speaker 03:
I'll call it Latisse 1.

[00:03:43] Speaker 03:
For example, you accused the other side's labels

[00:03:49] Speaker 03:
of infringing because it talked about increasing hair growth, including at least increasing length, thickness, and darkness.

[00:03:59] Speaker 03:
So darkness appears to have been in play in the course of that litigation, both infringement and validity.

[00:04:06] Speaker 03:
And so that's why I'm trying to figure out if we read that claim in Latice 1, especially as it was construed, to include darkness, then in fact it was resolved and litigated in the first instance, right?

[00:04:23] Speaker 06:
I disagree with that because the claim in Latice 1 was directed to a genus of all sorts of types of stimulating eye growth.

[00:04:30] Speaker 06:
So certainly darkness was one of the ways you could have infringed that claim because it talked about converting vellus

[00:04:35] Speaker 06:
to terminal hair.

[00:04:37] Speaker 06:
But there were many other types of options that you could use to show stimulating hair growth in Latice 1, increasing thickness, increasing the number of hairs, increasing the length of hairs.

[00:04:47] Speaker 03:
I guess what I'm wondering is why isn't it right that allergen

[00:04:55] Speaker 03:
put all of those different versions of hair growth in play in Latice 1 through the claim construction it saw, which was all these different types of hair growth recited into the preamble of the claim as a replacement for the actual recitation of increasing hair growth.

[00:05:16] Speaker 03:
And then, OK, now we know that hair growth can mean all these different things.

[00:05:20] Speaker 03:
And now that claim, because it was invalidated by our prior panel decision, why is it that you can now pick and choose any one of those and say, well, even though that claim was invalidated that covered all of those different versions, we're now going to select one of those versions out and try to re-litigate that?

[00:05:43] Speaker 06:
I think the answer is because it's the difference between obviousness of the genus and obviousness of the species.

[00:05:49] Speaker 06:
The prior Latisse 1 case held that the genus was obvious, and all of the invalidity evidence in the prior case dealt with the genus.

[00:05:57] Speaker 06:
The Brandt references just referred to eyelash growth generically.

[00:06:00] Speaker 06:
They didn't talk about whether it was darkness, or length, or number of hairs.

[00:06:04] Speaker 06:
And so the difference that we see is that in this case, the claims are limited to one species.

[00:06:10] Speaker 06:
And I think there's general cases from this court that say that even if the genus might be obvious,

[00:06:15] Speaker 06:
as a particular species might be separately patentable.

[00:06:19] Speaker 05:
When we're looking at collateral establish, and we're looking at the Fourth Circuit, and they have identified prior litigation by issue, whether the issue is identical or not.

[00:06:34] Speaker 05:
What I'm interested in knowing from you, in our own precedent, are we looking at issues or are we looking at claims?

[00:06:43] Speaker 06:
I think we're looking at whether it's the same issue.

[00:06:45] Speaker 06:
And the way you do that is you compare the claims from the first case to the claims to the subsequent cases.

[00:06:52] Speaker 06:
And you ask, do the claims in the subsequent case present some kind of different issue with respect to validity that wasn't litigated in the first case?

[00:07:00] Speaker 05:
Is there one more specific than that, whether the actual issue was litigated, for example, in Latice 1?

[00:07:05] Speaker 05:
whether the issue of darkening was actually litigated or not.

[00:07:09] Speaker 05:
I mean, we know it's in the claim, where there's a darkening element in the claim, correct?

[00:07:13] Speaker 05:
Right.

[00:07:14] Speaker 05:
So if we went just by claim, we would say you're precluded.

[00:07:18] Speaker 06:
I disagree with that, because there's a difference between those claims, unless these one were genus claims, that yes, they included darkness, but they included all sorts of other things, whereas we have different claims here that are just limited.

[00:07:30] Speaker 05:
In this case, how does a darkening occur?

[00:07:35] Speaker 05:
Is it through the vellus to the terminal type transformation?

[00:07:40] Speaker 06:
I think it's unclear, based on the record.

[00:07:44] Speaker 06:
I think, generally speaking, darkening happens because you're getting more pigment in the lashes.

[00:07:50] Speaker 06:
And so I think one way in which that could occur would be the change from vellus to terminal hair.

[00:07:56] Speaker 05:
Then why would we find that, whether you're looking at claims or issues, that vellus to terminal

[00:08:04] Speaker 05:
was present both in Latice 1, and it's as it is in this case.

[00:08:08] Speaker 06:
I think it is present in both cases.

[00:08:10] Speaker 06:
But the difference is that in the first case, it was just one member of a broader genus.

[00:08:15] Speaker 06:
And what was critical there was the infelidity evidence was just at a generic level.

[00:08:19] Speaker 05:
So it doesn't matter.

[00:08:20] Speaker 05:
It was part of the claim construction, the oldest two terminals.

[00:08:24] Speaker 05:
It was part of the claim construction.

[00:08:25] Speaker 05:
So the issue, if you want to look at it in terms of an issue, the issue's teed up for controversy, for adjudication,

[00:08:34] Speaker 06:
I don't think that issue of vellus to terminal hair was actually litigated in Latice 1, because all the invalidity evidence was more generic.

[00:08:42] Speaker 03:
Another way of asking the question is, it merely just broadly said increasing hair growth.

[00:08:51] Speaker 03:
And maybe if we just talked on that level, we wouldn't exactly know what hair growth necessarily encompassed.

[00:08:59] Speaker 03:
But then Allergan sought a very specific claim construction.

[00:09:04] Speaker 03:
laid out all the different aspects of what it understood to be hair growth.

[00:09:10] Speaker 03:
And so why is it wrong for us to look at what happened in Latice 1 as the grouping by Allergan at Allergan's urging that all these different features stand or fall together?

[00:09:24] Speaker 03:
And because they ended up falling,

[00:09:27] Speaker 03:
then you can't come back and then break out any one type of aspect of increasing hair growth in a future claim and litigate that.

[00:09:38] Speaker 03:
So it's kind of a stand or fall together, rise or fall together concept that I think makes me wonder if you're barred here from pursuing the darkness claims.

[00:09:50] Speaker 06:
I see what you're saying, Your Honor.

[00:09:51] Speaker 06:
I guess my thought would be,

[00:09:53] Speaker 06:
I mean, you could say that about any case in which you have claims to a genus and claims to a species.

[00:09:59] Speaker 06:
And there are cases that say you can separately claim a species.

[00:10:02] Speaker 06:
And that might be non-obvious, even if the broader genus would be obvious.

[00:10:06] Speaker 06:
And so the grouping, I think, just speaks to that.

[00:10:10] Speaker 06:
Yes, it's true there was a genus in Latice 1.

[00:10:12] Speaker 06:
And that's obvious.

[00:10:13] Speaker 06:
And we accept that.

[00:10:14] Speaker 06:
But I don't think that that necessarily precludes us from litigating whether a particular species within that genus

[00:10:20] Speaker 06:
has some novel and non-obvious properties.

[00:10:24] Speaker 06:
And here, I think it is, because when you look at the prior art that was at issue in Latice I, it's just generic to eyelash growth.

[00:10:32] Speaker 06:
And there's no suggestion, for example, that the Brandt references that we would necessarily know, or what a skill artisan would know, that Brandt, when he was saying eyelash growth,

[00:10:42] Speaker 06:
was meaning it to mean the same, to encompass all of those.

[00:10:45] Speaker 03:
And now we're circling over to the other side of my concern with this case, which is it feels like through the clam construction, and it's proven up, confirmed by the specification, increasing hair growth by the application of the matapros to your eyelid necessarily results in all these different things happening.

[00:11:10] Speaker 03:
whether it's increasing or converting vellus hair to terminal hair, or lengthening the eyelashes, thickening the eyelashes.

[00:11:22] Speaker 03:
Why isn't a way to look at this case is the real issue that was resolved in Latice 1 was whether it would have been obvious to apply the matapros to an eyelid.

[00:11:35] Speaker 03:
And as soon as the conclusion there was, yes, it would have been obvious,

[00:11:40] Speaker 03:
then all of these descriptions of properties or results you get from that single method step are just inherent properties.

[00:11:51] Speaker 03:
And so therefore, that's the other way I'm looking at this case.

[00:11:55] Speaker 03:
Okay, you want to now claim this particular nice result you get from that application of the Mataprost.

[00:12:01] Speaker 03:
And maybe you want to make an argument that the Latisse 1 claims were describing some other different nice property you get.

[00:12:08] Speaker 03:
But it's all one and the same in the sense that the law is clear that you can't get a claim on an inherent property or result on a previously understood to be invalid method claim.

[00:12:27] Speaker 06:
I guess I would phrase the question slightly differently.

[00:12:30] Speaker 06:
I don't think the question in the prior case was whether it was obvious to apply the MAD approach to the eyelid

[00:12:37] Speaker 06:
In general, I think the question was, was it obvious to apply it to the eyelid to grow eyelashes?

[00:12:43] Speaker 06:
And I think the question here is different.

[00:12:44] Speaker 06:
It's, would it be obvious to apply BonataPros to the eyelid to darken eyelashes?

[00:12:50] Speaker 06:
And on that question, Brant is silent.

[00:12:54] Speaker 06:
And so all you're left with is the Johnstone reference, which talked about a different molecule.

[00:12:59] Speaker 04:
But isn't it really to grow darker eyelashes rather than to darken eyelashes?

[00:13:07] Speaker 06:
I think it could potentially be both.

[00:13:11] Speaker 06:
I think you could either be growing eyelashes that are darker or perhaps if you have eyelashes that are there, it would darken the eyelashes you do have.

[00:13:20] Speaker 06:
I think in either case it's still distinct though from the broader genus that was at issue.

[00:13:26] Speaker 03:
There's nothing in the specification or any of the claims back in the 404 or here in the 953 that suggests that there's some kind of

[00:13:35] Speaker 03:
different unique regime in the application of the Bematoprost to the eyelid that gives you the result of darker eyelashes as opposed to growing eyelashes, whatever that means.

[00:13:47] Speaker 03:
As I understood the spec, as well as the very broadly recited claims, it's just applied to Bematoprost, topical application of Bematoprost

[00:13:57] Speaker 03:
you get these wonderful results.

[00:13:59] Speaker 03:
And there's no distinction in how you do it, when you do it, how many times you do it a day.

[00:14:04] Speaker 03:
Is that fair to say?

[00:14:05] Speaker 06:
I think that's fair, Your Honor.

[00:14:06] Speaker 06:
I think the difference is just that the prior art doesn't speak to darkness.

[00:14:09] Speaker 06:
It speaks to growth.

[00:14:10] Speaker 06:
And if I could just turn to another issue very quickly, the issue on the Sandoz judgment, the fact that it extended to all the claims as opposed to just the asserted claims.

[00:14:20] Speaker 06:
That's a very important issue.

[00:14:22] Speaker 06:
for Allergan.

[00:14:24] Speaker 06:
It was very clear from our second amended complaint that we were just asserting claims 8, 23, and 26.

[00:14:31] Speaker 06:
The complaint's very clear on that at A, 1884 through 88.

[00:14:35] Speaker 03:
Did the district court judge accept the amendment?

[00:14:38] Speaker 06:
Yes.

[00:14:39] Speaker 03:
The magistrate did.

[00:14:41] Speaker 06:
So the magistrate granted the amended complaint.

[00:14:44] Speaker 06:
That was then filed.

[00:14:45] Speaker 06:
That became the operative complaint.

[00:14:47] Speaker 06:
And there was no suggestion that the district judge ever overturned that, or in any way suggested that we couldn't file.

[00:14:54] Speaker 03:
Except that he issued an order invalidating the entire patent.

[00:14:59] Speaker 06:
I think on that, Your Honor, it was just, I don't know, but I would suggest it was just kind of a pro forma.

[00:15:05] Speaker 06:
The 953 is invalid.

[00:15:08] Speaker 06:
A lot of the other defendants agreed to correct it, to just claims 823 and 26.

[00:15:13] Speaker 06:
The district judge accepted those corrections.

[00:15:17] Speaker 06:
There was simply no subject matter jurisdiction for the court to invalidate those other claims.

[00:15:21] Speaker 06:
And I would just say there are some dependent claims that are very, very different.

[00:15:25] Speaker 06:
Claims 17 through 19 in particular.

[00:15:28] Speaker 06:
Claim 17 talks about applying it to the scalp.

[00:15:30] Speaker 06:
Claims 18 talks about applying it to grow eyebrows.

[00:15:34] Speaker 06:
Claim 19 talks about using emulsions.

[00:15:37] Speaker 06:
There are definitely some claims this pattern are very very different.

[00:15:40] Speaker 05:
Okay.

[00:15:40] Speaker 05:
I think we had that argument and you're well over your time I'll restore you two minutes.

[00:15:46] Speaker 05:
Okay.

[00:15:46] Speaker 05:
Thanks very much on thank you

[00:16:09] Speaker 00:
Good morning, Your Honors, and may it please the court.

[00:16:11] Speaker 00:
I wanted to follow up on one of Judge Chen's questions regarding the claim construction.

[00:16:18] Speaker 00:
Judge Chen, you're zeroing in on exactly the correct issue with respect to what Allergan has done here.

[00:16:22] Speaker 00:
They sought a very broad construction below on this issue of method of stimulating hair growth in the 404 patent.

[00:16:29] Speaker 00:
And of course, the reason why they did it, as you said, was in order to cover us all of the defendants for purposes of infringement.

[00:16:36] Speaker 00:
So they asked for a broad construction.

[00:16:38] Speaker 00:
They got it.

[00:16:38] Speaker 00:
And now they're stuck with it.

[00:16:40] Speaker 00:
And in fact, they asked for this broad construction.

[00:16:44] Speaker 00:
And in the 404 and 953 patent specifications, what those patent specifications tell us is that this conversion of vellus and intermediate hair going to terminal hair, that conversion results in an increase in pigmentation.

[00:16:58] Speaker 00:
That's an admission within the patent specifications themselves.

[00:17:01] Speaker 00:
And as a consequence of that, when Judge Eagles was interpreting her own construction and her order in this case,

[00:17:09] Speaker 00:
She said that, by definition, darkness is present within that construction.

[00:17:14] Speaker 00:
So darkness has always been there.

[00:17:16] Speaker 03:
So there's- Mr. Countryman's counter-argument is that, yes, increasing hair growth should be considered perhaps a genus of lots of different things.

[00:17:27] Speaker 03:
But in Lattice 1, the real focus was on increasing the length of the eyelashes.

[00:17:32] Speaker 03:
The debate, the focus, the litigation was not about increasing the darkness of the eyelashes.

[00:17:39] Speaker 03:
And so is it unfair and an inappropriate use of collateral estoppel principles to now block them from pursuing a specific type of growing hair that wasn't actually litigated and resolved in the first instance?

[00:17:56] Speaker 00:
Well, I think you picked up on that issue exactly correctly, which is literally we're splitting hairs here.

[00:18:00] Speaker 00:
Because what we have is a method of enhancing growth

[00:18:04] Speaker 00:
and a number of attributes that flow from that.

[00:18:07] Speaker 00:
And in fact, Allergan has admitted in more than one place that these are merely attributes of hair growth.

[00:18:14] Speaker 00:
In fact, it says it in its own label, and it said it in its post-trial briefing.

[00:18:19] Speaker 00:
And in fact, in the claims themselves in the 953 patents, several of those claims actually refer to length, thickness, and darkness as attributes.

[00:18:27] Speaker 05:
The claim construction of the district court

[00:18:30] Speaker 05:
It included the vellus to terminal transformations.

[00:18:36] Speaker 00:
So who proposed that language?

[00:18:39] Speaker 00:
That was proposed by Allergan.

[00:18:41] Speaker 00:
So it proposed that broad construction in order to try to cover the defendants for infringement.

[00:18:46] Speaker 00:
So now it's stuck with that broad construction.

[00:18:53] Speaker 00:
And so just to follow up on the issue of Allergan's admissions,

[00:18:57] Speaker 05:
So if you look just at the Latisse label, for example, it says... I'm sorry, but apart from the construction, was there actual arguments going back and forth concerning the velocity terminal change?

[00:19:09] Speaker 00:
Well, not to that specific issue.

[00:19:12] Speaker 00:
But with respect to the construction of method of stimulating hair growth, we wanted a narrower construction.

[00:19:16] Speaker 05:
So in Connecticut Estoppel, are we looking at whether claims have been adjudicated or whether issues have been adjudicated?

[00:19:24] Speaker 00:
We're looking at whether issues have been adjudicated.

[00:19:26] Speaker 00:
But in this court's decision in Ohio Willow, one of the things we look at is the substantial similarity of the claims, first of all.

[00:19:33] Speaker 00:
And second of all, we look at whether or not the differences in the claims materially alter the Bolivian analysis.

[00:19:38] Speaker 00:
And here, they do not.

[00:19:40] Speaker 00:
Because as Allergan has admitted,

[00:19:41] Speaker 00:
Darkness is baked in to this construction.

[00:19:45] Speaker 00:
So darkness has always been present.

[00:19:47] Speaker 00:
So there are no meaningful differences that alter the validity analysis here.

[00:19:51] Speaker 00:
And so that's what we always have.

[00:19:52] Speaker 05:
How is darkness achieved in the present, in the asserted patent?

[00:19:56] Speaker 00:
How is darkness achieved?

[00:19:58] Speaker 00:
Well, what we can discern from the patent is that it is one of the attributes that is associated with increased hair growth, along with a number of different attributes.

[00:20:06] Speaker 05:
And it's vellus to terminal one of those?

[00:20:09] Speaker 00:
That's exactly correct, Your Honor.

[00:20:10] Speaker 03:
Because you're moving from non-pigmented hairs to pigmented hairs.

[00:20:16] Speaker 00:
Exactly correct.

[00:20:17] Speaker 00:
And they haven't disputed the fact that pigmented is synonymous with darkness or darker.

[00:20:23] Speaker 00:
In fact, they would have a real problem if they did, because in the patent specification itself, you'll find the word darkness, and you won't find it anywhere.

[00:20:31] Speaker 00:
So they would have a real 112.1 problem if all of a sudden they're saying that,

[00:20:35] Speaker 00:
pigmentation and darkness are not synonymous.

[00:20:40] Speaker 00:
That's really the only support they have for that.

[00:20:42] Speaker 05:
So at some point it looks like we're being asked to buy into this concept that dark means growth or longer.

[00:20:54] Speaker 00:
I think it's just simply an attribute.

[00:20:56] Speaker 05:
It's an attribute that... Yeah, if something's darker it stands out, right?

[00:20:59] Speaker 05:
Correct.

[00:21:00] Speaker 05:
But that doesn't make it longer or

[00:21:04] Speaker 05:
If you darken something, you don't grow it.

[00:21:07] Speaker 00:
But I think if you enhance growth, one of the attributes, in fact, if you look in the patent specifically.

[00:21:12] Speaker 04:
What you're doing is you're enhancing growth of pigmented hair as opposed to smaller, finer, non-pigmented.

[00:21:18] Speaker 04:
Exactly.

[00:21:19] Speaker 00:
You're going from vellus or intermediate hair to what are called terminal hairs.

[00:21:22] Speaker 01:
It's part of the claim construction.

[00:21:24] Speaker 01:
That's right.

[00:21:24] Speaker 01:
It's baked in.

[00:21:26] Speaker 03:
The claim construction that Allergan urged was translating increasing hair growth to

[00:21:34] Speaker 03:
doing all these different things.

[00:21:36] Speaker 03:
One of them was converting vellus hair to terminal hair.

[00:21:42] Speaker 03:
And that wasn't appealed by anybody.

[00:21:44] Speaker 03:
Correct.

[00:21:45] Speaker 03:
Not by you.

[00:21:45] Speaker 03:
So we all have to live with the construction that converting vellus to terminal hair is a part of increasing hair growth.

[00:21:54] Speaker 03:
I would have to agree with that, Your Honor.

[00:21:56] Speaker 05:
But was there actually any arguments on that point?

[00:21:59] Speaker 05:
I mean, it seems that the record, the way I see it, is that that whole question of converting vellas to terminal debt, it wasn't actually litigated.

[00:22:15] Speaker 00:
Well, that's what Allergan proposed.

[00:22:17] Speaker 00:
That's what it stuck with.

[00:22:18] Speaker 00:
It admitted that.

[00:22:19] Speaker 00:
I mean, it urged it.

[00:22:21] Speaker 00:
It needed it to demonstrate infringement of defendant's products.

[00:22:25] Speaker 00:
And so now it's stuck with it.

[00:22:28] Speaker 00:
And we did not appeal.

[00:22:30] Speaker 05:
One of the elements of collateral stop list was whether the issue was actually litigated.

[00:22:35] Speaker 05:
I keep going back to this.

[00:22:37] Speaker 05:
Are we looking at whether the claim was litigated?

[00:22:39] Speaker 05:
Here the answer is yes.

[00:22:40] Speaker 05:
It was clearly litigated.

[00:22:42] Speaker 05:
But was the issue of darkness in Matisse 1 actually litigated?

[00:22:46] Speaker 04:
Did you argue against their construction?

[00:22:48] Speaker 00:
We did argue against their construction.

[00:22:50] Speaker 00:
And what was your argument?

[00:22:51] Speaker 00:
We argued for a narrower construction.

[00:22:54] Speaker 00:
Basically, it was a plain meeting construction.

[00:22:56] Speaker 00:
And the court's order is rather short on this point.

[00:22:59] Speaker 00:
But we essentially argued for a plain meaning construction.

[00:23:02] Speaker 00:
And that's on page A3072 of the ethics.

[00:23:07] Speaker 00:
And so the court opted for Allergan's construction.

[00:23:10] Speaker 00:
And we did not appeal that.

[00:23:11] Speaker 00:
But I guess what we should try to come back to is well.

[00:23:13] Speaker 03:
And in the prior litigation, that claim as construed to cover all those different interesting attributes of growing hair was invalidated.

[00:23:21] Speaker 03:
Correct.

[00:23:21] Speaker 03:
Under section 103.

[00:23:23] Speaker 00:
That's exactly correct.

[00:23:24] Speaker 00:
And that was the reasoning that was used to apply collateral estoppel to the next three patents.

[00:23:29] Speaker 00:
And then, of course, the patent here.

[00:23:31] Speaker 00:
And I should point out one thing with respect to the 054 patent in case number two.

[00:23:35] Speaker 00:
The 054 patent also had this darkness limitation present.

[00:23:38] Speaker 00:
And what's fascinating about this is that Allergan never defended that patent

[00:23:43] Speaker 00:
And if we look at claim one of the 054 patent, it lists darkness specifically.

[00:23:47] Speaker 00:
It's specifically recited.

[00:23:48] Speaker 00:
Allergan did not defend that patent.

[00:23:50] Speaker 00:
It did not appeal the ruling of collateral estoppel to this court.

[00:23:53] Speaker 05:
This is the case where they sought voluntary dismissal, correct?

[00:23:56] Speaker 00:
That's correct.

[00:23:57] Speaker 00:
And the court went ahead and chose the route of invalidating those patent claims under collateral estoppel.

[00:24:04] Speaker 00:
Correct.

[00:24:05] Speaker 00:
But it didn't appeal that ruling, and it could have.

[00:24:08] Speaker 00:
It had every opportunity to litigate the issue of darkness, and it didn't.

[00:24:17] Speaker 05:
Anything else?

[00:24:21] Speaker 05:
Do you want to address the issue involving the sufficiency of the decision to cover all the claims or just some of the claims?

[00:24:29] Speaker 00:
Sure.

[00:24:30] Speaker 00:
I'd be happy to, Your Honor.

[00:24:32] Speaker 00:
Judge Eagles looked at this case as a whole, and particularly Allergan's conduct in serially litigating the same sets of patent claims over and over again.

[00:24:42] Speaker 00:
And what Judge Eagles did was she knew Allergan would be back for a fourth bite at the apple.

[00:24:48] Speaker 00:
So she looked to the first amended complaint as the operative complaint here.

[00:24:51] Speaker 00:
And that complaint asserts the 953 patent in its entirety, all of the claims.

[00:24:56] Speaker 03:
Is there any way in the record where the judge said, even though the magistrate judge accepted the second amended complaint, I'm not.

[00:25:05] Speaker 03:
I'm going to stick with the first amended complaint.

[00:25:08] Speaker 00:
Right.

[00:25:08] Speaker 00:
The record is not clear on that point, Your Honor.

[00:25:10] Speaker 00:
The best we have is a paragraph on page A5 of the judge's order.

[00:25:16] Speaker 00:
which seems to allude to that, but we don't have full clarity on that point.

[00:25:20] Speaker 00:
But what we do know is that under this court's principles of why collateral estoppel exists for reasons like public interest, expediency, justice, the reasons why collateral estoppel is applied, and that's in this court's Comair decision, Judge Eagles looked at this case and said, we have a serial litigant asserting substantially the same patents over and over again.

[00:25:43] Speaker 00:
And I'm going to put an end to this litigation churn.

[00:25:46] Speaker 00:
You're talking about Letiz II.

[00:25:48] Speaker 00:
We're talking about Letiz III here.

[00:25:50] Speaker 00:
She did the same thing in Letiz II as well, for sure.

[00:25:52] Speaker 03:
But I understand you're telling us a story about what must have been in the judge's mind.

[00:25:57] Speaker 03:
Correct.

[00:25:58] Speaker 03:
But we don't have anything like that in the record where the judge is saying all the things that you're saying.

[00:26:03] Speaker 03:
Fourth bite at the apple, serial litigator, want to put an end to this, looking for finality.

[00:26:09] Speaker 03:
Correct.

[00:26:09] Speaker 03:
Therefore, I'm going to reject the Second Amendment complaint and just stick with the First Amendment complaint.

[00:26:16] Speaker 03:
Is it fair to say that this is your interpretation of what's going on, rather than at least an equally plausible interpretation, which is the judge was not as focused on the fact that the second amended complaint had scoped down the case to just three claims?

[00:26:36] Speaker 00:
I think it's fair to say that this is our interpretation of this point, but I think it's a fair one based on the records.

[00:26:42] Speaker 05:
Do you think that Latisse 2 provides an independent basis for Estoppel?

[00:26:47] Speaker 00:
Well, in that case, that was relying upon Latisse 1 for purposes of collateral estoppel.

[00:26:53] Speaker 00:
So there wasn't actually a full litigation that happened with respect to Latisse 2.

[00:26:58] Speaker 00:
But I think one important point that is applicable here is the fact that they never appealed the judgment with respect to collateral estoppel of the 054 patent, which has the same darkness limitation

[00:27:08] Speaker 00:
at issue here.

[00:27:09] Speaker 00:
They never appealed that, even though they had the full and fair opportunity to litigate that point.

[00:27:14] Speaker 00:
So that's crucial.

[00:27:16] Speaker 00:
So while there wasn't a full-blown litigation, because Claudio Estoppel put him into it, that's a very crucial point that should inform your analysis with respect to this case here.

[00:27:25] Speaker 00:
They had the opportunity to litigate and appeal the issue of the 054.

[00:27:29] Speaker 05:
I guess that's my point.

[00:27:30] Speaker 05:
If the court finds Estoppel applies, and then a party fails to appeal that,

[00:27:38] Speaker 05:
Are they a stop and out from advancing arguments that they could advance or maybe should advance in Latice 2?

[00:27:47] Speaker 00:
I think they're certainly stuck with the judgment with respect to Latice 2.

[00:27:51] Speaker 00:
But I think what they're stuck with is the fact that they're making an argument that darkness is somehow separable from method of enhancing hair growth, when of course it isn't.

[00:28:01] Speaker 00:
It's just simply an attribute which they admit.

[00:28:04] Speaker 00:
The 054 patent

[00:28:06] Speaker 00:
reflects the fact that they had the opportunity to argue this issue, that it would have saved the validity of the 054 patent claims and it didn't.

[00:28:13] Speaker 04:
Are you saying it's law of the case in that instance rather than unstoppable?

[00:28:21] Speaker 00:
I think it's fair to say that their failure to argue that point, it could be considered law of the case, but it should inform the analysis here

[00:28:32] Speaker 00:
that they didn't really believe that darkness is a patentable distinction of any merit that actually alters the Bolivia analysis.

[00:28:39] Speaker 00:
If they had, they would have appealed that judgment just like they had done this one.

[00:28:42] Speaker 00:
But they didn't.

[00:28:47] Speaker 00:
May I point out one of the touchstones of the analysis of collateral estoppel is the question of whether or not there's substantial similarity between the claims.

[00:28:59] Speaker 00:
And one thing that really hammers home the substantial similarity

[00:29:02] Speaker 00:
the claims that issue here in the 953 patent, and all of the preceding claims.

[00:29:06] Speaker 05:
Okay, I'm going to stop you there.

[00:29:08] Speaker 05:
Is it really the claims are substantially similar or the issues?

[00:29:11] Speaker 00:
The claims.

[00:29:12] Speaker 00:
The claim language is substantially similar.

[00:29:14] Speaker 00:
In other words, their scope.

[00:29:16] Speaker 00:
And of course, the next question after that is, do those differences, because these are really related questions, do those differences, do they meaningfully alter the validity of the analysis?

[00:29:25] Speaker 05:
You're talking now, you're referring to Ohio Willow.

[00:29:29] Speaker 05:
I am, in fact, Your Honor.

[00:29:30] Speaker 05:
That's not the expression of the standard of collateral stopper.

[00:29:35] Speaker 00:
Which portion of that?

[00:29:36] Speaker 05:
Well, it doesn't say Ohio Willow, it doesn't say that we're dealing with claims and not issues.

[00:29:42] Speaker 00:
Right, it says, it is without dispute that the asserted claims of the 237 patent are substantially similar to the invalidated claims of the 082 patent.

[00:29:51] Speaker 00:
This is directly from Ohio Law, Your Honor.

[00:29:53] Speaker 05:
Well, we say our precedent does not limit collateral estoppel to patent claims that are identical.

[00:29:58] Speaker 05:
Rather, it's identity of the issues that were litigated that determines whether collateral estoppel should apply.

[00:30:04] Speaker 00:
Absolutely.

[00:30:05] Speaker 00:
And I think that latter point informs the former point.

[00:30:08] Speaker 00:
Really, you're drawing a Venn diagram here.

[00:30:10] Speaker 00:
Correct.

[00:30:10] Speaker 00:
That's exactly right.

[00:30:12] Speaker 00:
Right.

[00:30:12] Speaker 00:
And all I wanted to point out before I sit down is the fact that all of these claims are directed to the same thing, which is a method of enhancing hair growth.

[00:30:20] Speaker 00:
And I would just like to point you to one page of the record, which is A2616.

[00:30:26] Speaker 00:
This is very important.

[00:30:28] Speaker 00:
Say again?

[00:30:29] Speaker 00:
A2616.

[00:30:30] Speaker 05:
Give us just a second.

[00:30:39] Speaker ?:
Sure.

[00:30:52] Speaker 00:
OK.

[00:30:54] Speaker 00:
During prosecution of the 953 patent, and this is really why I'm focusing on the claims here, because all of these claims cover the same thing.

[00:31:02] Speaker 00:
It's a method of enhancing hair growth.

[00:31:05] Speaker 00:
This is what Allergan argued during prosecution and overcoming a piece of prior art.

[00:31:10] Speaker 00:
It said, the preamble is limiting so we can get around this prior art for the following reason.

[00:31:16] Speaker 00:
And this is the middle paragraph.

[00:31:17] Speaker 00:
It is clear upon review of the application that the new use for the old compounds for stimulating hair growth, including eyelashes, eyebrows, and scalp, is the invention.

[00:31:28] Speaker 00:
The title of the patent application is entitled, Method for Enhancing Hair Growth.

[00:31:31] Speaker 00:
And we're referring to the 953 patent application here.

[00:31:34] Speaker 00:
The spec clearly describes that the invention is for hair growth, including eyelash growth.

[00:31:38] Speaker 00:
And this is really the key part.

[00:31:40] Speaker 00:
It would be nonsensical to read the most fundamental part of the invention out of the claims.

[00:31:45] Speaker 00:
And in fact, they even take a step further on the same page below that and say that the reasons why the preamble should be limiting in this case is exactly the same reason why it was limiting with respect to the 404 patent.

[00:31:58] Speaker 00:
So it's explicitly linking these patent claims together.

[00:32:03] Speaker 00:
They're all claiming the same thing.

[00:32:05] Speaker 00:
All these issues have been decided.

[00:32:08] Speaker 05:
Thank you, Your Honor.

[00:32:10] Speaker ?:
Thank you.

[00:32:13] Speaker 06:
So just very briefly on the last point that Council made, we don't see anything particularly interesting about this comment on A2616.

[00:32:30] Speaker 06:
All the applicant was saying here is that the preamble of the 953 claims is limiting.

[00:32:35] Speaker 06:
And it certainly is.

[00:32:36] Speaker 06:
This doesn't speak to the issue that we have before us, which is the genus versus species distinction.

[00:32:43] Speaker 06:
Otherwise, I'd just like to focus on the scope of the Sandoz judgment.

[00:32:48] Speaker 06:
So Judge Chen, to pick up on your question from earlier, there is nothing in this record to suggest that the district court was operating on anything other than the second amended complaint.

[00:32:59] Speaker 06:
And actually, if you look at Sandoz's motion to dismiss that was granted and that we've appealed from, Sandoz's motion to dismiss was of the second amended complaint.

[00:33:09] Speaker 06:
And that's at A, 1918 through 1919.

[00:33:13] Speaker 06:
It says at the beginning, Defendant Sandoz, Inc.

[00:33:16] Speaker 06:
respectively moves this court pursuant to Rule 12B6 to dismiss Allergan's claims in its second amended complaint alleging that Sandoz infringes the claims 8, 23, and 26 of the 953 patent.

[00:33:30] Speaker 06:
And it goes on.

[00:33:31] Speaker 06:
And so the district court didn't even have a motion before it to dismiss or find collaterally stopped any claim other than these claims 8, 23, and 26.

[00:33:43] Speaker 06:
And just with respect to the comments about serial litigation, obviously we disagree with that.

[00:33:48] Speaker 06:
But I would say, especially with respect to claims 17 and 19 that go to the scalp and the eyebrows and the emulsion, there's no suggestion that Allergan would be asserting those against Sandoz.

[00:34:00] Speaker 06:
Sandoz isn't seeking approval for those indications on its products.

[00:34:04] Speaker 06:
And so there's absolutely no case or controversy.

[00:34:07] Speaker 05:
At the end of the day, do the differences between the adjudicated claims and the unadjudicated claims

[00:34:13] Speaker 05:
Do they really affect the issue of invalidity?

[00:34:18] Speaker 06:
I mean, we think that's true for many of the claims, but especially with claims 17 and 19, absolutely.

[00:34:24] Speaker 06:
I mean, all the prior art in the first case was about whether you could grow eyelashes.

[00:34:28] Speaker 06:
There was no discussion about whether you could grow scalp hair, whether you could grow eyebrows.

[00:34:33] Speaker 06:
All the prior art in the first cases was about ophthalmic solutions, not emulsions.

[00:34:37] Speaker 02:
Just one last question.

[00:34:40] Speaker 03:
Patents or patent applications does Allergan have when it comes to the use of dimetopros to grow hair?

[00:34:48] Speaker 03:
I don't know.

[00:34:49] Speaker 02:
We've been working our way through a lot of them.

[00:34:52] Speaker 02:
Are we at the tail end here, or is there more to come?

[00:34:56] Speaker 06:
I don't know the answer to that one way or the other.

[00:34:58] Speaker 06:
I do know there's a co-plaintiff, Duke, who was a co-plaintiff in the first case.

[00:35:03] Speaker 06:
I know they have one application that's a descendant of the 029 patent from the first case that's been allowed.

[00:35:10] Speaker 06:
I don't know about other times.

[00:35:13] Speaker 05:
OK.

[00:35:14] Speaker 05:
Thank you very much.

[00:35:14] Speaker 05:
Thank you.