[00:00:06] Speaker 00: Our next case is 2 0 1 6 dash [00:00:31] Speaker 01: 2315, Exergen versus Caz. [00:00:34] Speaker 00: Mr. Shaw, please proceed. [00:00:51] Speaker 02: Thank you, Your Honor. [00:00:52] Speaker 02: May it please the Court, Pratik Shaw for Appellant, CASB USA. [00:00:57] Speaker 02: Unless the Court prefers otherwise, I'd like to focus first on the Section 1 [00:01:00] Speaker 02: 101 patentability issues, both the substantive and the procedural aspects, as they have the broadest ramifications for the judgment below. [00:01:10] Speaker 02: And then I'd like to turn to the non-infringement of the 685 patent claims, which is one of the two patents in this case. [00:01:17] Speaker 02: As to Section 101, all 12 of the asserted claims, as a matter of law, fail the Supreme Court's two-step eligibility test, as applied in this Court's post-Mayo and post-Alice decisions. [00:01:29] Speaker 02: including Ariosa diagnostics and other cases. [00:01:33] Speaker 02: To the extent there is doubt about that, the jury and not the judge [00:01:37] Speaker 02: however, should have resolved any factual questions underlying the Section 101 determination. [00:01:43] Speaker 04: What's your support for the notion that factual determinations under 101 have to go to the jury? [00:01:49] Speaker 02: Your Honor, this court hasn't explicitly addressed it. [00:01:52] Speaker 04: On pages 43 to 44 of our brief, we- And what kind of factual determinations are you talking about? [00:01:57] Speaker 04: It seems to me that ineligibility is just a question of law. [00:02:01] Speaker 02: Well, Your Honor, it's ultimately a question of law, but I draw the analogy to obviousness. [00:02:05] Speaker 02: It's ultimately a question of law, but it turns on, and it can turn on, and I don't think there's a dispute in this case, that it does turn on factual questions that go to, in particular, the step two of the Maya inquiry, whether the measuring steps here were something other than routine, conventional, and well understood. [00:02:24] Speaker 02: And that was a debate about how the prior art devices, how the commercially available devices, [00:02:32] Speaker 02: how they worked and how they were transferred to this context. [00:02:35] Speaker 02: And the other side calls those fact findings by the court, which it did after the trial. [00:02:42] Speaker 02: It's precisely those sort of fact findings, just like in the obviousness context, even though it's ultimately an obviousness is a legal inquiry, the jury gets to decide those. [00:02:51] Speaker 02: And this court in Patlick said there's a Seventh Amendment right to a jury trial on invalidity defenses. [00:02:58] Speaker 02: Now this court, as I said, hasn't specifically addressed Section 101 post-Mayo analysis to draw that line, but we think based on PatLax, based on the analogy to obviousness, based on this other court's decision... Why isn't what's conventional and routine swept up in the legal ineligibility analysis in something for the courts to decide and for us to decide de novo? [00:03:21] Speaker 02: Your Honor, I think it is. [00:03:22] Speaker 02: Again, it's ultimately a legal inquiry whether Section 101 is [00:03:26] Speaker 02: satisfied or not. [00:03:29] Speaker 02: But the question as to whether something is routine or conventional turns can turn, and I think in this case is a good example of one where it does turn, and I think post-Mayo, lower courts are struggling with the dichotomy because there are real factual questions as to whether something is conventional, routine, [00:03:50] Speaker 02: Just like in the obviousness context, there are questions as to whether a person of ordinary skill in the art might find a particular source to have made the invention novel or not, or provided a motivation to combine. [00:04:04] Speaker 02: And just like in the obviousness context, with respect to any other invalidity defense, anticipation, obviousness, [00:04:11] Speaker 02: All of those are protected by the Seventh Amendment. [00:04:13] Speaker 02: The same should follow for Section 101. [00:04:15] Speaker 02: And the other side doesn't dispute that in its brief. [00:04:19] Speaker 07: Well, the other side emphasizes waiver. [00:04:22] Speaker 07: And I have to say that having looked at the various portions of the record that pertain to the issue of waiver, I'm hard pressed to see why there isn't a waiver here. [00:04:31] Speaker 07: And particularly, starting with the joint pretrial memorandum, [00:04:37] Speaker 07: the statement that's made is the parties agree that the question of invalidity under 35 USC section 101 is likewise a question of law to be decided by the court. [00:04:48] Speaker 07: To the extent the court elects to have the jury decide underlying factual issues, the parties submit proposed special interrogatories. [00:04:57] Speaker 07: But that sounds like what the parties are saying is this is a question of law. [00:05:02] Speaker 07: If, Judge, you decide to submit these questions, in effect, [00:05:07] Speaker 07: to an advisory jury. [00:05:08] Speaker 07: Sure, Your Honor. [00:05:09] Speaker 07: And here's what we would recommend you say. [00:05:12] Speaker 07: That sounds like a waiver to me. [00:05:14] Speaker 02: Your Honor, I understand that reading. [00:05:16] Speaker 02: I think what the parties were trying to get at, and at least what our client was trying to get at, was when it said to the extent the court does that, the primary premise was, yes, you can decide this is a question of law. [00:05:28] Speaker 02: But, and I realize the phrasing isn't exactly the phrasing leads to your question about it says elects to. [00:05:35] Speaker 02: look, I think what the parties were getting at, to the extent there are factual questions underlying 101, then here are the special proposed interrogatories. [00:05:45] Speaker 02: that we want you to answer. [00:05:46] Speaker 02: Now, to the extent, I understand the competing reading. [00:05:49] Speaker 07: The word, the verb, elect is the one that caught my eye. [00:05:53] Speaker 02: Yes, I agree with you. [00:05:54] Speaker 02: The word elect is tough there. [00:05:56] Speaker 02: But I think what they're getting at, when you look at everything in context, and I'm going to point to a few things that support my reading, that what they're trying to get at is, look, this is primarily a question of law. [00:06:06] Speaker 02: But court, to the extent there are underlying factual questions there, [00:06:10] Speaker 01: send this, give the proposed special interrogations that we did, and I think the best piece of evidence... Well, before you move on, I'd like you to also look at page 16-556. [00:06:21] Speaker 01: Do you have your appendix with you? [00:06:32] Speaker 01: This is where the court at the bottom of 16-556 talks about, there's a question of fact, it's whether it was [00:06:39] Speaker 01: well-understood routine or conventional questions and he's heard Dr. Bowman's testimony and any evidence on that and then he says it's an issue for me in any event so I think you're right it's somewhat distracting to the jury to inject that issue into the case. [00:06:55] Speaker 01: This is the point in time where it seems to me unless I'm mistaken that the court has made a decision and informed the parties orally during the hearing that it intends to not [00:07:08] Speaker 01: give those fact questions to the jury. [00:07:11] Speaker 01: Am I right about that? [00:07:12] Speaker 01: Is this where that occurred? [00:07:13] Speaker 02: Yes, Your Honor. [00:07:14] Speaker 02: This is where the court declines to send a special interrogation. [00:07:17] Speaker 01: So where are your objections? [00:07:18] Speaker 01: Where did you request they go to the jury and where are your objections to this court's [00:07:23] Speaker 01: statement during this hearing that it was going to not send these issues to the jury. [00:07:28] Speaker 02: Sure, Your Honor. [00:07:28] Speaker 02: So the request to send it to the jury was in the proposed interrogatory. [00:07:33] Speaker 02: So we proposed interrogatories and a jury question. [00:07:36] Speaker 02: Now, you're right that after that, the court said exactly what you read and said, I'm not going to send this to the jury because it would confuse the jury. [00:07:44] Speaker 02: That was at the end of the day. [00:07:45] Speaker 02: The next morning, if you flip over to 565, it's a couple pages later. [00:07:52] Speaker 02: in the appendix. [00:07:53] Speaker 02: 16.565. [00:07:54] Speaker 02: 16.565, yes. [00:07:57] Speaker 02: What CAS's trial counsel did here was it moved for judgment as a matter of law on the section 101 issue. [00:08:05] Speaker 02: And by moving for judgment as a matter of law, I'd submit, Your Honor, judgment as a matter of law means, right, court, you can decide this as a matter of law. [00:08:13] Speaker 02: But to the extent you cannot decide this as a matter of law in our favor, it goes to the jury. [00:08:18] Speaker 02: And it's brought under rule 50 of the Federal Rules of Civil Procedure. [00:08:22] Speaker 02: Rule 50B says, if the court does not grant judgment as a matter of law under Rule 50A, which is what is being brought at 16565, the court, and this is a quote, quote, the court is considered to have submitted the action to the jury. [00:08:38] Speaker 02: So by bringing the judgment of matter of law issue. [00:08:41] Speaker 01: You must be very good at the game of twister. [00:08:44] Speaker 01: Keep going. [00:08:45] Speaker 02: So Your Honor. [00:08:47] Speaker 02: By bringing the judgment as a matter of law motion, CAS was reemphasizing its right to have a jury decide that question. [00:08:54] Speaker 07: But then, if I can turn you to another page a little farther in, 16672, you say in the memorandum of reasons in support of judgment of invalidity that, and this is just before the legal standards section, [00:09:11] Speaker 07: After saying that the question of invalidity had been agreed upon as a question of law, you go down to the last sentence in that paragraph. [00:09:19] Speaker 07: As such, Section 101 is an issue for the court to resolve now in the first instance as both the finder of fact and the arbiter of law. [00:09:27] Speaker 07: Again, it's very high. [00:09:30] Speaker 07: Let me put it this way. [00:09:31] Speaker 07: If I were a district judge and I had each of these pieces of advocacy before me, I would assume that [00:09:40] Speaker 07: you had waived your right to a jury. [00:09:42] Speaker 07: Wouldn't I? [00:09:43] Speaker 07: Wouldn't I be reasonable in drawing that conclusion? [00:09:45] Speaker 02: I understand that, Your Honor. [00:09:46] Speaker 02: Let me give a couple pieces of explanation and context for this statement. [00:09:50] Speaker 02: So this was after the judge said, I'm not going to send it to the jury. [00:09:54] Speaker 02: We have the jury trial. [00:09:57] Speaker 02: CAS has made its J-Mall motion that you should rule in our favor or send it to the jury. [00:10:03] Speaker 02: Jury verdict comes down. [00:10:04] Speaker 02: Now, afterward, the only way that CAS could prevail [00:10:08] Speaker 02: on Section 101 is for the district court to do it. [00:10:10] Speaker 02: So it's in this context of this post-trial motion where the judge is now going to decide any legal and factual issues that CASA is making the observation that, look, for us to win, you are the decider at this point. [00:10:24] Speaker 02: So rule in our favor. [00:10:25] Speaker 02: What I would point you to to show that CASA's not waived through that statement, the right to a jury trial is after that [00:10:33] Speaker 02: It filed a motion, a new trial motion, after the court actually adjudicated against it. [00:10:38] Speaker 02: And this is quoted on page 22 of our reply brief. [00:10:43] Speaker 02: It's in the district court docket. [00:10:46] Speaker 02: What the new trial motion says is that it basically says, because of the jury issues, and I'll just give you the exact language from the new trial motion itself, which again is quoted on page 22 of our reply brief, [00:11:03] Speaker 02: It says, quote, Kaz was entitled to have the jury receive instructions and to make any section 101 related findings in the first instance. [00:11:12] Speaker 07: Right. [00:11:12] Speaker 07: That's after the case is over. [00:11:14] Speaker 07: Perhaps when appellate counsel got involved, you decided this was an issue that you might have done well to have raised before the district court. [00:11:22] Speaker 07: But isn't that a little late? [00:11:23] Speaker 02: Well, Your Honor, I think if you add up the three pieces of evidence, the fact that we provide the special proposed interrogatories on the factual questions, [00:11:32] Speaker 02: Two, we moved for Jamal right before the jury retired to say, look, judge, either decide this as a matter of law or send it to the jury. [00:11:41] Speaker 02: And then three, after the court decided that it was going to do it and rendered its opinion, said, look, in your opinion, you relied. [00:11:50] Speaker 02: You didn't just decide this as a matter of law. [00:11:52] Speaker 02: You relied on the trial evidence. [00:11:53] Speaker 02: You made factual findings on that routine, well-understood theory. [00:11:58] Speaker 02: In light of that, if the trial court had just decided it after [00:12:02] Speaker 02: trial as a matter of law and there were no factual issues involved, then, Your Honor, I don't think our new trial, this new trial motion would have been appropriate because as Judge Hu says, to the extent it's a pure issue of law, the court can decide that. [00:12:18] Speaker 02: But because in its post-trial order, it did resolve factual issues, we filed a new trial, CAS filed a new trial motion and there it says, look, because you are [00:12:29] Speaker 01: Because you made Section 101 jury question-like findings, we need a new trial, because that's the context in which I think this... Neither party has, in their brief, explained, it seems to me, in what I would think of as a sort of traditional Seventh Amendment analysis, why there is a right to a jury trial for this issue, because this feels a lot like, say, indefiniteness. [00:12:59] Speaker 01: or claim construction where it's a question of law and where district courts can and do frequently make the fact findings that underlie those issues. [00:13:09] Speaker 01: In fact, as you know, claim construction can't even be given to a jury. [00:13:12] Speaker 01: And then there are other issues where you could ask the jury for an advisory verdict if the court chooses. [00:13:17] Speaker 01: Why do you assume that there's a Seventh Amendment right to a jury trial of this issue? [00:13:23] Speaker 02: Well, Your Honor, we think the best analogy based on Supreme Court precedent and based on this court's precedent [00:13:29] Speaker 02: to the Section 101 finding is the obviousness inquiry. [00:13:33] Speaker 02: And this court has held categorically that that is subject, and the Supreme Court has too, that that is subject to the Seventh Amendment jury right. [00:13:40] Speaker 02: And like obviousness, again, that is ultimately a question of law, just like Section 101, but it turns on underlying factual questions. [00:13:50] Speaker 02: And as this court said in Patlex, when you have patent invalidity defenses that arise in the course of a patent infringement trial, [00:14:00] Speaker 02: the defendant has a Seventh Amendment right to have those patent validity defenses litigated. [00:14:06] Speaker 02: Now again, I absolutely acknowledge that PatLex did not specifically address Section 101, but I can't think of any reason why to distinguish Section 101 from those. [00:14:18] Speaker 02: And the other side doesn't offer any. [00:14:21] Speaker 01: Well, what about indefiniteness? [00:14:24] Speaker 01: I mean, do you think indefiniteness has to go to a jury? [00:14:26] Speaker 01: It's often so completely and utterly intertwined with claim construction. [00:14:30] Speaker 01: And it has almost the identical sort of, quote, underlying fact issues that claim construction has. [00:14:36] Speaker 01: Would you be suggesting that you think indefiniteness has to go to a jury if someone asks for a jury trial on that issue? [00:14:44] Speaker 02: No, Your Honor. [00:14:44] Speaker 02: I wouldn't go that far. [00:14:45] Speaker 02: But I think I would distinguish that along the lines that you suggested. [00:14:48] Speaker 02: So wrapped up with claim construction, which is [00:14:52] Speaker 02: as we know from the Supreme Court, is in fact a judge question that I think indefiniteness is different. [00:14:59] Speaker 02: But I think Section 101, based upon how, especially after Mayo and Alice, how the jurisprudence has evolved, much more like obviousness or anticipation or the other invalidity defenses that this court discussed in Patlex that are protected by the Seventh Amendment jury trial. [00:15:16] Speaker 02: This hasn't come up [00:15:18] Speaker 02: much pre-Alice and Mayo, these are typically decided. [00:15:22] Speaker 01: One last question about this. [00:15:23] Speaker 01: I'm going to give you time to address the infringement because I know I have a couple questions on it, so don't worry about your time at the moment. [00:15:31] Speaker 01: On the Seventh Amendment question though, you're making an analogy. [00:15:36] Speaker 01: You're saying there should be a Seventh Amendment right because this is like obviousness where there's a Seventh Amendment right. [00:15:41] Speaker 01: There doesn't [00:15:42] Speaker 01: You recognize that in indefiniteness and claim construction, there's clearly no Seventh Amendment, right? [00:15:48] Speaker 01: And indefiniteness may very well fall the direction of claim construction. [00:15:52] Speaker 01: Is that really how we decide constitutional issues, which this is more like? [00:15:56] Speaker 01: I thought the Seventh Amendment required us to go back to 1787. [00:16:01] Speaker 01: and decide whether there was an analogous cause of action in English common law. [00:16:06] Speaker 01: I don't think that we sort of make it up by analogy, do we, when we're deciding this constitutional issue? [00:16:11] Speaker 01: My understanding of the Seventh Amendment jurisprudence isn't I can decide which one it's more like. [00:16:16] Speaker 02: Sure. [00:16:16] Speaker 02: So Your Honor, it's a multi-factor test. [00:16:18] Speaker 02: One of that is the historical dimension. [00:16:20] Speaker 02: You go back. [00:16:21] Speaker 02: And so the question is the historical analog. [00:16:24] Speaker 02: We think the best historical analog, again, is something along the obviousness lines, right? [00:16:30] Speaker 02: Is this something? [00:16:31] Speaker 02: especially when you get to the step two type inquiry, have you gotten to something that's beyond conventional, routine, or well understood in applying it to the natural law concept? [00:16:43] Speaker 02: So we think if you go back and look at the history of 1787, the closest type of proceeding like this would have triggered an action at law that's entitled to the Seventh Amendment right. [00:16:56] Speaker 02: We don't have a perfect analogy because there wasn't the Section 101 [00:17:00] Speaker 02: at that time. [00:17:01] Speaker 02: And so that's why we reason by analogy, using the history, and then reason by analogy. [00:17:05] Speaker 02: Look, if this court has recognized Seventh Amendment protections for obviousness, anticipation, other invalidity defenses as it's set forth in PatLex, then what would be the reason to treat Section 101 differently, especially in a post-Alice Mayo world [00:17:23] Speaker 02: where you have these underlying factual questions that could inform the question. [00:17:28] Speaker 02: So that's our analysis. [00:17:29] Speaker 02: And what I would say is the other side hasn't disputed that there would have been a jury trial right here but for the waiver. [00:17:38] Speaker 02: And so I think that's the posture that we're in now. [00:17:40] Speaker 07: Could I ask you about infringement? [00:17:42] Speaker 02: Sure. [00:17:43] Speaker 07: The 685. [00:17:45] Speaker 07: Yes. [00:17:46] Speaker 07: You say that the accused devices are [00:17:51] Speaker 07: computing an internal body temperature. [00:17:55] Speaker 02: We say they are not computing an internal body temperature. [00:17:59] Speaker 02: I'm sorry. [00:17:59] Speaker 02: The claim requirement is a yes. [00:18:01] Speaker 07: That's right. [00:18:03] Speaker 07: And if I understand it, the way the devices work, the accused devices, is that they use a lookup table to get oral equivalent. [00:18:17] Speaker 07: Correct. [00:18:18] Speaker 07: All right. [00:18:20] Speaker 07: Internal body temperature means the temperature under the skin directly below the point that's being detected. [00:18:29] Speaker 07: Is that right? [00:18:29] Speaker 02: Yes. [00:18:30] Speaker 02: The exact wording is the temperature beneath the sense surface. [00:18:33] Speaker 02: Right. [00:18:33] Speaker 07: And that is through, presumably, a lookup table. [00:18:38] Speaker 02: That is through the computation that they have claimed in their patent, the k factor coming up with yes. [00:18:44] Speaker 07: Right. [00:18:45] Speaker 07: But presumably the K factor is plugged into a simple lookup table. [00:18:48] Speaker 02: Yes, it's plugged into a key balance equation that's different than the oral equivalent table. [00:18:55] Speaker 02: And on literal infringement, all of what you just said, Your Honor, is undisputed. [00:19:00] Speaker 02: There's unrebutted evidence that that's what the accused products here do. [00:19:05] Speaker 02: They have the lookup table. [00:19:06] Speaker 02: They take skin temperature. [00:19:07] Speaker 02: They have a lookup table that's geared to oral equivalent temperature directly. [00:19:12] Speaker 02: They then compute the oral equivalent temperature [00:19:15] Speaker 02: they at no time attempt to compute that internal body temperature. [00:19:19] Speaker 02: And this is not, Your Honor, a doctrine of equivalence case or a case where you can say, oh, well, maybe they come to the same number, that somewhere in the body between the skin and the heart, you'll get to that same temperature. [00:19:34] Speaker 07: Judge Stearns seemed to be of the view that if they came to the same number, that would be infringement, right? [00:19:40] Speaker 02: You disagree? [00:19:42] Speaker 02: I disagree, Your Honor. [00:19:43] Speaker 02: I guess two responses. [00:19:44] Speaker 02: We don't think the claim construction gets you to the same number that just because it's an oral equivalent number that just because somewhere in the body below the between the skin and the heart gets you there. [00:19:55] Speaker 02: And I think Exigent v Walmart I think supports us on that where they tried that same argument that the oral equivalent temperature and internal temperature were one in the same and this court rejected it. [00:20:04] Speaker 02: But beyond that, even if there were [00:20:07] Speaker 02: even if you assume that it coincidentally did match somewhere and that it fell within the claim construction still that the temperature did somewhere match, we don't think that would work. [00:20:17] Speaker 02: And the reason is this. [00:20:18] Speaker 02: One is because to be literal infringement actually has to be computing that temperature. [00:20:24] Speaker 02: Again, the bookup table computes the oral equivalent temperature. [00:20:27] Speaker 02: The second point I would make is, and the reason we only bring the non-infringement motion with respect to the 685 patent and not the 938 is critical. [00:20:35] Speaker 02: Because the 938 doesn't just say compute an internal body temperature, it says compute the body temperature approximation. [00:20:43] Speaker 02: If that was the language, and this is the reason we didn't bring the same argument with respect to that, well then maybe their argument to get around exogen view Walmart would work. [00:20:52] Speaker 02: That oh, well somewhere in the body between the skin and the heart, you're going to come to that temperature. [00:20:56] Speaker 02: Maybe that's a body temperature approximation. [00:20:59] Speaker 02: that's being calculated, but that language is not in the three 685 claims at issue. [00:21:04] Speaker 02: 685 claims say, compute the internal body temperature. [00:21:09] Speaker 02: And so that's why without doctrine of equivalence, without the body temperature approximation language that's in the 938 patent claims that are not in the 685 patent claims, which [00:21:21] Speaker 02: more precisely require computing internal body temperature. [00:21:24] Speaker 02: That's why we think the fact that it undisputedly calculates the oral temperature. [00:21:28] Speaker 01: Okay, Mr. Schall, thank you very much. [00:21:30] Speaker 01: We'll restore two minutes of rebuttal time. [00:21:32] Speaker 01: Mr. Timbers. [00:21:34] Speaker 03: Thank you, Your Honor. [00:21:40] Speaker 03: May it please the Court. [00:21:42] Speaker 03: We haven't talked about 101 step one at all today so far. [00:21:46] Speaker 03: At the time that this case was briefed and decided in March 2016, we didn't have the recent cases of Enfish, Thales, McRoe, Rapid Litigation to talk about step one. [00:22:01] Speaker 03: So neither party actually said a whole lot about step one. [00:22:06] Speaker 03: But they did both talk about step one. [00:22:08] Speaker 03: The court didn't decide step one. [00:22:10] Speaker 03: The court sort of skipped step one and went straight to step two. [00:22:14] Speaker 03: The question here for both step one and step two is what problems were trying to be solved by the invention and what specific steps in this method were aimed at solving those problems. [00:22:27] Speaker 03: The specification identifies these problems, finding the temporal artery or an artery and cooling of the skin caused by the thermometer itself. [00:22:37] Speaker 03: And the patent specifically ties these steps [00:22:42] Speaker 03: of scanning. [00:22:43] Speaker 03: And it's not just any scanning. [00:22:46] Speaker 03: It's scanning across the forehead. [00:22:49] Speaker 03: That's laterally across in some cases. [00:22:52] Speaker 03: Lateral was defined as generally horizontally. [00:22:56] Speaker 03: So it's not just any scan, but generally horizontally. [00:22:59] Speaker 03: And across the forehead was all the way across the forehead. [00:23:03] Speaker 03: So it's a very specific method [00:23:06] Speaker 03: And this method is not required by any of the natural laws or natural phenomenon that relate to the temporal artery itself or the heat balance equation. [00:23:19] Speaker 04: But you agree that the equation is a natural law. [00:23:23] Speaker 03: Yes, absolutely. [00:23:24] Speaker 04: If the patent is directed to the equation, you have to demonstrate that there's something more that's not routine and conventional, right? [00:23:31] Speaker 03: If it's directed at that, that's correct. [00:23:33] Speaker 03: But the question is, for these particular claims, [00:23:36] Speaker 03: Not claims that were brought to this court before, but these particular claims aimed at this particular limitation and these particular limitations. [00:23:47] Speaker 03: These are the beginning of the method. [00:23:50] Speaker 04: In the other case, I have a really hard time distinguishing this case from Ariosa. [00:23:55] Speaker 04: I mean, you have a somewhat novel idea, a very novel idea, I think, that was pretty revolutionary. [00:24:03] Speaker 04: But we still found it unpatentable because all it did was [00:24:06] Speaker 04: make a discovery of the use of a natural law and then employ that natural law using conventional equipment and techniques. [00:24:15] Speaker 04: Isn't yours the same? [00:24:16] Speaker 03: I think the big difference is the generality with which Ariosa claims define steps, detecting, comparing. [00:24:25] Speaker 03: It basically covered any method of detecting. [00:24:29] Speaker 03: and wasn't specific. [00:24:30] Speaker 04: Well, that's not quite true. [00:24:31] Speaker 04: I mean, in Arios they note that there's a bunch of different ways that they were going to use these things, and some of them were pretty specific. [00:24:39] Speaker 04: They claim, I can't pronounce some of these words, problem of science, but claims amplification by Palmer, raised chain reaction, via sequence-specific probes. [00:24:51] Speaker 04: I mean, it has more detail, but it was just different methods of detecting. [00:24:56] Speaker 04: Why isn't your device [00:24:58] Speaker 04: just using conventional methods of detecting. [00:25:01] Speaker 03: So with respect to that, there's no evidence of conventionality of any of these methods. [00:25:08] Speaker 03: So this running the generally horizontally across the forehead, for example, never been done. [00:25:15] Speaker 03: That's not conventional. [00:25:17] Speaker 03: There's no evidence of conventionality of well understood by those who are nurse, your thermometer is conventional though. [00:25:24] Speaker 04: Pardon? [00:25:24] Speaker 04: Your thermometer itself is conventional. [00:25:29] Speaker 03: device contains thermistors and electronics that, yes, have been used. [00:25:37] Speaker 03: There's no evidence that by anyone that this was routine or conventional. [00:25:43] Speaker 03: I think this is a key question [00:25:45] Speaker 04: Wait, just let me ask this. [00:25:46] Speaker 04: So the thermometer itself is conventional. [00:25:49] Speaker 04: The way it does its measurements is conventional. [00:25:52] Speaker 04: Its calculation relies on a natural law, which is not patentable. [00:25:56] Speaker 04: So what is it you're saying makes it eligible under step two? [00:26:00] Speaker 04: And just assume I'm at step two. [00:26:02] Speaker 04: Yes. [00:26:03] Speaker 04: Is it running it across the forehead? [00:26:05] Speaker 03: It's running it across the forehead. [00:26:07] Speaker 03: It's the combination of the limitations, which are different in various different claims. [00:26:11] Speaker 03: But yes, in one of the claims, [00:26:13] Speaker 03: It's running it generally horizontally, all the way across the forehead, and at the same time, getting the peak from multiple more than three times per second. [00:26:26] Speaker 04: Well, isn't the peak in measuring multiple times per second conventional as well? [00:26:31] Speaker 04: Doesn't your prior art device do exactly that? [00:26:33] Speaker 03: There is a prior art device that for a different purpose, for the purpose of finding injuries on the body and making differential determinations, [00:26:43] Speaker 03: not for body temperature, can have a mode where it scans. [00:26:48] Speaker 03: There's no evidence that was ever done at the forehead or in that particular lateral direction or all the way across the forehead. [00:26:56] Speaker 03: There's also no evidence that it was routinely used, that it was well understood by those of ordinary skill in the art, or that it was conventional. [00:27:06] Speaker 03: And the language in Mayo is very specific when it talks about well understood, routine, and conventional. [00:27:12] Speaker 04: Sure, but the language in Mayo is also specific about what it needs to do under step two. [00:27:20] Speaker 04: And it has to do significantly more than just conventional detection methods and employing a law of nature. [00:27:27] Speaker 04: And I find it very hard to think that running something across the forehead is substantially more. [00:27:34] Speaker 03: Well, if it's never been done, Your Honor, never been done, [00:27:40] Speaker 04: And never been done to solve these problems. [00:27:43] Speaker 04: But never been done is true in areosa. [00:27:46] Speaker 04: Never been done to detect fetal DNA in the mother's bloodstream. [00:27:51] Speaker 04: Never been done, but use conventional routine equipment because it discovered that DNA was circulating in the bloodstream. [00:28:00] Speaker 03: The never been done focused on the natural law of the phenomenon in areosa. [00:28:06] Speaker 03: And in this case, that would be specifically the temporal artery. [00:28:10] Speaker 03: and in use with the heat balance equation. [00:28:14] Speaker 03: But in Mayo, the discussion of well-understood, well-understood doesn't just mean in the prior art. [00:28:21] Speaker 03: Conventional doesn't just mean it happened before. [00:28:24] Speaker 03: And routine doesn't just mean it happened a few times. [00:28:29] Speaker 04: The Supreme Court in Mayo always ties- Well, I understand why you want to argue Mayo, but we have to follow Ariosa, too. [00:28:39] Speaker 04: I don't understand how we can possibly affirm eligibility finding in this case when we didn't find almost seemingly identical types of claims ineligible in Ariosa. [00:28:51] Speaker 03: Well, in Ariosa... Except based on the forehead, apparently. [00:28:58] Speaker 03: In step two in Ariosa, it was agreed upon that it was well understood, routine and conventional. [00:29:07] Speaker 03: There was no dispute about that at all. [00:29:10] Speaker 03: In this case, the district court found or determined that it wasn't routine, well-understood or conventional. [00:29:18] Speaker 03: That's because the evidence in this case did not show that. [00:29:23] Speaker 03: For example, Kaz's expert was not even asked that question. [00:29:27] Speaker 03: And when you ask the question of well-understood, routine, and conventional, you're asking it with respect to a specific audience, which is what Mayo says. [00:29:36] Speaker 03: by whom? [00:29:38] Speaker 03: Was there any evidence about how this was understood by those who are a nurse skill in the art, or people who took temperatures, or people who built thermometers? [00:29:48] Speaker 03: No evidence. [00:29:50] Speaker 03: What about routine? [00:29:51] Speaker 03: Not at all. [00:29:52] Speaker 03: Dermatemp, these other things that were in the prior art, there's no evidence at all about how much they were used, how common they were. [00:29:59] Speaker 03: The language in Mayo makes clear [00:30:03] Speaker 03: But that actually matters. [00:30:05] Speaker 03: This is not just a question of whether a single limitation or two or three or four limitations are in the prior art. [00:30:12] Speaker 03: It's a question of how this was seen by those of ordinary skill in the art. [00:30:18] Speaker 07: What is it your view that needs to be in order for something to be deemed not to satisfy step two? [00:30:29] Speaker 07: that needs to be routine or conventional. [00:30:31] Speaker 07: And take it with respect to the facts of this case. [00:30:35] Speaker 03: In this case, it comes down to the we're not going to look at the formula at all. [00:30:44] Speaker 03: So all we're looking at is what's more in step two. [00:30:48] Speaker 03: So in this case, it's the scanning and the specific requirements. [00:30:52] Speaker 07: So it's not the thermometer. [00:30:53] Speaker 07: The thermometer may very well be conventional. [00:31:02] Speaker 03: The claves just require a temperature detector, so there's nothing special about it. [00:31:07] Speaker 07: It's the technique that you're applying this conventional instrument. [00:31:13] Speaker 07: the specific technique. [00:31:15] Speaker 07: To solve a problem that was not previously solved. [00:31:17] Speaker 07: It's a technique that's not conventional, right? [00:31:20] Speaker 03: Exactly right. [00:31:21] Speaker 03: And in that case, this is like Thales or Thales, and I'm not sure of the right way to say it. [00:31:26] Speaker 03: Because in Thales, they used completely conventional technology. [00:31:31] Speaker 03: But instead, they had a different way of analyzing, basically relating the data. [00:31:38] Speaker 03: And this case is very, very similar to that. [00:31:40] Speaker 03: And it's also similar to [00:31:43] Speaker 03: Deere, which Thales also analogized to. [00:31:47] Speaker 03: In Deere, you had a case where you're taking conventional technology and you are deciding that you're going to make continuous measurements of temperature throughout a process right at a specific place. [00:32:03] Speaker 03: That's very similar to this case because we're taking temperature measurements using nothing special. [00:32:09] Speaker 03: But we are using a specific method with specific steps to solve problems. [00:32:15] Speaker 03: And these problems are not problems that are required to be solved by the natural law and phenomenon. [00:32:23] Speaker 07: Can I ask you about infringement of the 685? [00:32:26] Speaker 05: Yes. [00:32:26] Speaker 07: Why isn't it the case that the accused devices which compute the oral equivalent [00:32:37] Speaker 07: using presumably a special lookup table are doing something other than computing the internal body temperature where internal body temperature has been construed to mean the temperature of the portion of the body between the skin above the temporal artery and the artery. [00:32:57] Speaker 03: They're not computing oral equivalent. [00:33:01] Speaker 03: They're computing an internal body temperature. [00:33:04] Speaker 03: And then reporting that out to the consumer [00:33:07] Speaker 03: as an oral equivalent. [00:33:08] Speaker 03: And the evidence that is ignored by CAS is that our expert tested all of these devices. [00:33:16] Speaker 03: And in testing the devices determined that they take a temperature here across the forehead. [00:33:22] Speaker 03: It's cool because heat is being lost to the environment. [00:33:26] Speaker 03: In fact, it's being lost all the way up along the artery path from the heart through the temporal artery and the skin. [00:33:36] Speaker 03: What it's reporting out is a higher temperature of something underneath. [00:33:42] Speaker 07: Being higher, it would seem to me, is it not just not enough? [00:33:48] Speaker 07: It has to be the higher temperature that is, in fact, the internal body temperature as defined by the claim. [00:33:56] Speaker 03: And that's exactly what it does, because the heat flow path doesn't even go to the mouth. [00:34:01] Speaker 03: Everybody agreed upon that. [00:34:03] Speaker 03: heat flow path goes up and the part that we care about is in the forehead. [00:34:06] Speaker 07: Right, but if they haven't, suppose that you've got a lookup table in a device that's an embodiment of your claim, which tells you what the temperature is below the skin, and they've got a lookup table that shows what they are looking for, which is oral equivalent. [00:34:24] Speaker 07: And if those two lookup tables are different, why is there infringement? [00:34:29] Speaker 03: Well, there's no evidence of two lookup tables or them being different. [00:34:33] Speaker 03: And the evidence that we're relying upon is not the lookup table evidence. [00:34:38] Speaker 03: The evidence we're relying upon is the fact that a higher temperature is reported. [00:34:41] Speaker 03: Now, that has to be a higher temperature below the surface. [00:34:46] Speaker 07: It has to be, because of the heat flow model. [00:34:48] Speaker 07: So as long as the temperature that is being reported is higher than the skin temperature, they infringe, period, regardless of whether it is something that is designed to reflect the temperature of some [00:35:03] Speaker 03: other part of the body entirely? [00:35:05] Speaker 03: They're saying it's designed to reflect the equivalent but the oral equivalent temperature is going to be the same as something that is beneath and what is beneath... That's the key question. [00:35:19] Speaker 06: Why is that true? [00:35:21] Speaker 03: Because of the physics of heat flow. [00:35:25] Speaker 03: And there was a lot of testimony at trial about this and it was agreed upon by both experts [00:35:30] Speaker 03: The heat flow flows up in a specific path, not all over the body in this case, but a specific path up through the arteries into the temporal artery and then out through the skin into the environment. [00:35:46] Speaker 03: This is a very specific heat flow path. [00:35:49] Speaker 03: We're not talking about the heat flow path to the hands or to the mouth. [00:35:54] Speaker 03: In fact, the blood flow does not go along that path to [00:35:59] Speaker 03: the mouth, and both experts agreed upon this. [00:36:02] Speaker 03: So if we are reporting a higher temperature, it must be along that heat flow path. [00:36:08] Speaker 03: And other claims in the 938 talk about heat flow method. [00:36:12] Speaker 03: They don't talk about internal body temperature, but it's all related. [00:36:16] Speaker 03: The science of it, the natural phenomenon, if you will, is that the heat flows up through the temporal artery and out. [00:36:25] Speaker 03: I see my time is over. [00:36:26] Speaker 01: Thank you very much. [00:36:31] Speaker 01: Mr. Schall will restore two minutes of rebuttal time. [00:36:37] Speaker 01: Can you start with the infringement issue, please? [00:36:38] Speaker 02: Sure. [00:36:39] Speaker 02: So on infringement, this is the first time I've heard, not in the trial record, not on their appeal briefs, that the lookup table might be the same. [00:36:50] Speaker 02: They're undisputedly different. [00:36:51] Speaker 02: They have different variables. [00:36:52] Speaker 02: oral equivalent versus core or internal body temperature, undisputed, unrefuted testimony that the accused devices use an oral equivalent lookup table while their devices use the heat balance equation that's claimed in their patents. [00:37:07] Speaker 07: Of course, the question isn't what their devices use. [00:37:10] Speaker 02: It's what their claims are. [00:37:12] Speaker 02: What their patent claims is that arterial heat balance equation. [00:37:16] Speaker 02: They have their own k-factor. [00:37:18] Speaker 02: The key discovery that Dr. Pompei made was finding the k-factor. [00:37:22] Speaker 02: That's not the lookup table that these devices, accused devices, use. [00:37:27] Speaker 02: So they are not, in fact, computing. [00:37:29] Speaker 02: As a literal infringement matter, they are not computing that internal equivalent temperature. [00:37:36] Speaker 02: For that reason alone, it should be non-infringement as a matter of law. [00:37:39] Speaker 02: Or the oral equivalent. [00:37:41] Speaker 02: Yes, they are computing the oral equivalent [00:37:43] Speaker 02: and not the internal body, which is what their claim requires. [00:37:47] Speaker 02: Their 685 claim as opposed to their 938. [00:37:52] Speaker 02: Got it. [00:37:53] Speaker 02: If there are no more questions on literal infringement, I'd like to turn to the section 101, the substance of section 101. [00:38:01] Speaker 02: Because if you rule for us on the substance, you don't need to reach the more complicated and open-ended Seventh Amendment issue. [00:38:09] Speaker 02: And Judge Hughes, we think you have it exactly right. [00:38:11] Speaker 02: Now, Ariosa is the key case. [00:38:14] Speaker 02: And as I understand counsel's argument, the main distinction is, well, the techniques being used here have never been done on the forehead or over the temporal artery. [00:38:23] Speaker 04: But that was true in Ariosa. [00:38:25] Speaker 04: I get Ariosa. [00:38:26] Speaker 04: But how do you distinguish fails, which seems to be your friend's strongest support? [00:38:31] Speaker 02: Sure. [00:38:32] Speaker 02: I think fails is very different, Your Honor. [00:38:34] Speaker 02: That was coming up with an entirely new [00:38:36] Speaker 02: a technique using arrangements of sensors in a new way that had never been done before to do measurements, to compute measurements that had never been taken before. [00:38:46] Speaker 02: Here, skin temperature measurements have been taken since the dawn of time. [00:38:50] Speaker 02: And in particular, their own accused devices have taken precisely the skin measurements they've taken using peak detection thermometer. [00:38:59] Speaker 02: And this is disclosed based on their own specification. [00:39:02] Speaker 02: I don't have to go beyond their specification. [00:39:04] Speaker 02: It does peak temperature. [00:39:05] Speaker 02: It does multiple readings per second. [00:39:08] Speaker 02: That's both the derma temp and their ear thermometer. [00:39:11] Speaker 02: And their ear thermometer, your honor, works exactly like this. [00:39:15] Speaker 02: The guts of the two thermometers are exactly the same. [00:39:19] Speaker 02: The difference is the ear thermometer is taking a temperature in the ear. [00:39:22] Speaker 02: So you scan inside the ear. [00:39:24] Speaker 02: You move it back and forth inside the ear to get the hottest spot of the tympanic membrane. [00:39:29] Speaker 02: That's what their ear thermometer does. [00:39:32] Speaker 02: It's disclosed in the specification. [00:39:33] Speaker 02: Undisputed evidence on that. [00:39:35] Speaker 01: Mr. Shaw, you have argued that you're entitled to a jury trial on the fact question. [00:39:42] Speaker 01: So I assume that this very thing you're talking about, namely whether something was conventional or routine in the art, is the fact question. [00:39:50] Speaker 01: And so is it your view that I have to review that fact question for clear error deference? [00:39:56] Speaker 02: No, Your Honor. [00:39:57] Speaker 02: We think that our arguments here are based on the specification. [00:40:01] Speaker 02: and all that, so it can be decided as a matter of law. [00:40:05] Speaker 01: Your brief expressly says whether something is routine and well understood and conventional is a question of fact. [00:40:10] Speaker 01: Your brief expressly says that. [00:40:11] Speaker 02: Well, Your Honor, what our brief says is often that question can be decided and we moved for judgment as a matter of law. [00:40:18] Speaker 02: on that issue, right? [00:40:19] Speaker 01: If the evidence can only be read in one way, then even if it's a question of fact, just like courts decide summary judgment on section 101 issues, if there's no evidence that could support... Okay, so assuming there is not no evidence on the other side, like assuming, for example, that I agree that conventionality well understood in routine is something more than just disclosed in one piece of prior art that isn't even taking temperature, okay? [00:40:44] Speaker 01: Suppose that I assume that there is some evidence on the other side. [00:40:48] Speaker 05: Sure. [00:40:49] Speaker 01: So now, what is the standard of review that I use to adjudicate on appeal this question? [00:40:55] Speaker 02: Well, I still think, Your Honor, that you can decide this without deferring to the factual findings, because there were no factual findings as opposed to the elements that you need, the specification, and how the devices work. [00:41:08] Speaker 02: That's all undisputed. [00:41:10] Speaker 02: So whether you want to apply clear error or [00:41:13] Speaker 02: another standard review, I think you come out the same. [00:41:15] Speaker 02: Now this then falls back into our jury question. [00:41:18] Speaker 02: The reason we think if you disagree with me and think that this turns on disputed questions of fact, then I think then it does fall back into the jury question. [00:41:27] Speaker 02: You can't just rely on clear error because a jury should have resolved those factual disputes. [00:41:34] Speaker 02: But the key point I would make on the question about the ear thermometer and whether it's conventional or not [00:41:42] Speaker 02: It's working in the exact same way. [00:41:44] Speaker 02: You take the temperature in the ear to find the hottest spot, the peak temperature, the dipanic membrane. [00:41:48] Speaker 02: Here you're trying to find the hottest spot on the forehead over the temporal order. [00:41:51] Speaker 01: Mr. Shaw, your time is up. [00:41:53] Speaker 01: Thank both counsel for their argument. [00:41:55] Speaker 01: The case is taken under submission.