[00:00:00] Speaker 06: In our proceedings today, we have a motion, and I'll turn it over to Judge O'Malley. [00:00:05] Speaker 06: Thank you. [00:00:05] Speaker 06: I hate this time of year. [00:00:09] Speaker 06: This is the second law clerk I've seen sworn in this week, which means they're leaving me. [00:00:14] Speaker 06: But I move the admission of Matthew Sype, who's a member of the bar and is in good standing with the highest court of Virginia. [00:00:21] Speaker 06: I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications. [00:00:28] Speaker 06: I am very familiar with his credentials. [00:00:30] Speaker 06: He has been a wonderful law clerk. [00:00:32] Speaker 06: And we have enjoyed having him and will be sad to see him go. [00:00:37] Speaker 06: He went to Yale Law School, which I forgive him for. [00:00:42] Speaker 06: And I tell him constantly it's because that undergraduate degree in economics and math from UVA grounds him enough so that it brings him down to earth and down to my level. [00:00:57] Speaker 06: But he clerked for Judge Mays in Tennessee on the district court before he came to clerk for me, and he's about to go become a Supreme Court fellow. [00:01:09] Speaker 06: At some point, he'll maybe get a real job that makes money, but in the meantime, he is progressing through the federal system quite well. [00:01:18] Speaker 06: So I am grateful for [00:01:20] Speaker 06: all of his talents and for the fact that he's so fun to have around. [00:01:27] Speaker 06: And with that, I move his admission. [00:01:32] Speaker 03: I do not know this man, but... [00:01:36] Speaker 03: Supreme Court fellows, good enough for me. [00:01:39] Speaker 03: It's fine. [00:01:41] Speaker 05: I think it's fine. [00:01:44] Speaker 05: I like the fun part. [00:01:46] Speaker 05: I've gotten to know Matthew a bit through his year. [00:01:49] Speaker 05: And on behalf of Judge Chad, we enthusiastically grant the motion. [00:01:54] Speaker 01: Please stand and raise your right hand. [00:02:01] Speaker 01: The first case for argument this morning is 161275 Yang versus Boston Scientific Corporation. [00:02:27] Speaker 05: Just before you begin Mr. Joseph I'd just like to mention because of the division of time I see Mr. Wolf has saved time for his cross appeal and candidly the panel has questions about the cross appeal not the merits of it but whether or not in fact it is a cross appeal as opposed to just an alternative basis for a firmance and therefore we're not inclined to split the time up separately for the cross appeal so we'll just consider the time to be [00:02:55] Speaker 05: 10 by 15. [00:02:57] Speaker 05: Thank you. [00:02:58] Speaker 05: Mr. Joseph for whenever you're ready. [00:03:03] Speaker 00: Good morning and may it please the court. [00:03:05] Speaker 00: The district court overturned the jury verdict based on ensnarement without ever actually determining ensnarement, which is to say without determining whether the scope of equivalence actually ensnared the prior art. [00:03:18] Speaker 00: In doing so, the court committed three fundamental errors. [00:03:21] Speaker 00: First, in rejecting Dr. Zhang's proposed hypothetical claims, [00:03:25] Speaker 00: Second, in stopping the analysis there. [00:03:27] Speaker 00: And third, in failing to recognize that this issue had not been properly preserved in any event. [00:03:34] Speaker 06: Are you saying that it was the court's job to come up with a hypothetical claim, even if yours were inadequate? [00:03:42] Speaker 00: No. [00:03:44] Speaker 00: As you know, we think ours were adequate. [00:03:45] Speaker 00: But if they were not, if there was some difficulty, the court had several options available to it. [00:03:51] Speaker 00: After identifying a problem with hypothetical claim, it could have modified that hypothetical claim. [00:03:56] Speaker 00: It could have come up with its own. [00:03:58] Speaker 00: It could have requested, as one does say in Markman, a submission of a new hypothetical claim to address an issue. [00:04:05] Speaker 00: It could have even at least considered the proposed hypothetical claim by BSC and modified it. [00:04:10] Speaker 00: We don't think BSC's proposed hypothetical claim was proper either. [00:04:13] Speaker 03: It's no burden, however, to establish that the range of equivalents that you're seeking under the doctrine [00:04:20] Speaker 03: does not ensnare the prior art, right? [00:04:23] Speaker 03: Ultimately, yes. [00:04:23] Speaker 03: So, I mean, the first step of that journey is coming up with a hypothetical claim. [00:04:31] Speaker 03: I think that's your responsibility, isn't it, as the patentee and not the district court's responsibility or the defendant's responsibility. [00:04:40] Speaker 03: It's up to you to imagine what your conception is of the range of equivalents that you are seeking under the doctrine. [00:04:49] Speaker 03: So I guess [00:04:50] Speaker 03: I'm trying to understand logically why should anyone else have to pick up the bags here to sort things out. [00:05:00] Speaker 00: Well, I don't know that anyone else had to pick up the baggage. [00:05:02] Speaker 00: One, I mean, in a moment I'd like to get to why we don't think there's any problem with the hypothetical claims, but assuming there was, which is your question. [00:05:11] Speaker 00: Markman's, I think, the best analogy, maybe the only analogy, where it happens every day in this [00:05:16] Speaker 00: probably in this country, where a court rejects the plaintiff's proposed claim construction on a claim term, the court doesn't then refuse to construe the claim term and dismiss the suit. [00:05:25] Speaker 00: The court instead issues what it thinks is an appropriate claim construction, and the suit proceeds under it. [00:05:30] Speaker 00: A more draconian approach after a jury verdict makes little, if any, sense. [00:05:34] Speaker 00: And again, we weren't saying that the court had to just toss us out and start from scratch. [00:05:38] Speaker 00: Instead, it could do what, say, this court did in stream feeder, where in stream feeder, this court rejected the hypothetical claim that had been proposed by the plaintiff and accepted by the district court. [00:05:46] Speaker 00: This court then, after identifying the error and it modified it accordingly and proceeded to rule on ensnarement, again, Ourself could have asked us to come back. [00:05:55] Speaker 06: I mean, I know you think your hypothetical claims were fine, but if they're not, do you have an alternative hypothetical claim that you think would avoid ensnarement? [00:06:08] Speaker 00: I'm sure the hypothetical claims we put in, we could rephrase in ways that wouldn't seem to matter to us, but would. [00:06:16] Speaker 00: Well, so for example, take hypothetical claim three. [00:06:19] Speaker 00: The idea is that, look, hypothetical claims obviously are supposed to mirror the theory of equivalence of trial, right? [00:06:25] Speaker 00: The point is to test the theory of equivalence of trial against the prior art. [00:06:28] Speaker 00: So the theory of equivalence of trial was that even if the microelements in the expressed products were not connecting struts within the language of the claims, they nonetheless served the same function as a connecting strut because they connected the macroelements with a three-part connector [00:06:44] Speaker 00: to impart flexibility, which is the purpose, the function of the connecting struts. [00:06:50] Speaker 00: So the way the hypothetical claim three attempts to address that is by replacing a requirement of a specific geometry that's intended to grant flexibility and instead just putting in what we view as a broader functional limitation of flexibility. [00:07:06] Speaker 03: I guess if we're moving on to whether or not you're [00:07:11] Speaker 03: hypothetical claim is a legitimate claim in the sense that it only broadens and doesn't do any form of narrowing. [00:07:18] Speaker 03: I guess what troubled me about the claim is that it talks about having a connecting strut column that provides increased flexibility compared to the first and second expansion columns. [00:07:34] Speaker 03: And so I understand the patent does talk about [00:07:38] Speaker 03: a connecting strut column providing some flexibility, you know, to the overall stent. [00:07:43] Speaker 03: But now the claim limitation is speaking in a comparative way that I didn't see anywhere in the patent. [00:07:50] Speaker 03: And now I'm wondering what does that mean to be increasing the flexibility compared to the first and second expansion columns? [00:07:59] Speaker 03: Are you talking about longitudinal flexibility? [00:08:02] Speaker 00: Yes. [00:08:03] Speaker 03: It doesn't say that in the claim. [00:08:06] Speaker 00: Well, I mean, the specification describes the relevant, in the specification, that you're right, that talks about in terms of longitudinal flexibility. [00:08:13] Speaker 00: But the point is just this, and this is why in an iterative Merkman kind of way, I mean, if we need to rephrase it, we could have. [00:08:19] Speaker 00: The idea is that the stent is comprised obviously of, well, for the BSC stents, you have the macro elements and the micro elements, which in our view corresponds to the expansion columns, the kinetic constructs. [00:08:30] Speaker 00: The idea of the expansion columns is they provide the strength. [00:08:33] Speaker 00: So, stent has to do two things. [00:08:37] Speaker 00: work through the tortuous vessels in the body to get where it needs to be without actually getting there without causing other problems along the way. [00:08:43] Speaker 00: And then when it gets there and inflated, it needs to be strong enough to actually prop up and then stay open to do its job. [00:08:49] Speaker 00: So the idea is the macro elements provide most of the strength. [00:08:54] Speaker 00: So when it opens up, the macro elements are strong, but they don't have the flexibility or the expansion struts. [00:08:59] Speaker 00: The idea is to have the geometry of these connecting struts that will be able to maneuver more flexibly through. [00:09:06] Speaker 00: So our attempt, which we think was fine, but I'm sure it could be phrased differently, to connote that, was to say that it's the connecting struts that impart flexibility relative to what you would otherwise have. [00:09:17] Speaker 03: I guess for me, to go back to the hypothetical claim, your hypothetical claim now excludes an embodiment in which, say for example, the connecting strut column [00:09:32] Speaker 03: provides a flexibility that's equal to the amount of flexibility provided by the first and second expansion columns. [00:09:40] Speaker 03: Under the issued patent claim, where it just talked about an intermediate non-parallel section, there is nothing in that issued claim that precluded the possibility of the connecting struct column to have the same amount or even less flexibility than whatever the first and second expansion columns had. [00:10:01] Speaker 03: But now you've removed that from the hypothetical claim by requiring that the connecting strut column have an increased amount of flexibility compared to the first and second expansion column. [00:10:14] Speaker 00: I guess there are two points there. [00:10:15] Speaker 00: One is the whole point of the invention as described in the specification is that the connecting strut imparts flexibility. [00:10:24] Speaker 03: To the overall extent, but it doesn't say anywhere that [00:10:28] Speaker 03: the importance of having a non-parallel intermediate section is to provide increased flexibility vis-a-vis in comparison to the first expansion column and the second expansion column. [00:10:40] Speaker 03: That's the first time you see that thought. [00:10:44] Speaker 03: is in your hypothetical claim three. [00:10:46] Speaker 00: Well, I think it's not that thought. [00:10:47] Speaker 00: It's those words. [00:10:48] Speaker 00: And if those words were in artful, the point of the is just to explain, OK, what does it mean for the connecting strut to be providing flexibility? [00:10:54] Speaker 00: We're trying not to be. [00:10:55] Speaker 06: And it means more flexibility is taking all structural components out of your claim and saying, all we need to do is claim the function of increasing flexibility. [00:11:07] Speaker 06: Then then that would cover virtually any kind of stamp. [00:11:10] Speaker 06: Right. [00:11:11] Speaker 00: Which it would be our problem in the sense that if the claim is too broad, if the hypothetical claim is too broad, well then that would prejudice us when we actually get to the incentive analysis. [00:11:20] Speaker 00: We don't think it is, but that's certainly not a basis for rejecting it. [00:11:23] Speaker 00: And the reason we don't is if you look at the hypothetical claim, it leaves most of the architecture in there. [00:11:30] Speaker 00: It only takes out the non-parallel intermediate section and replaces that with the flexibility, because that's what they said. [00:11:38] Speaker 00: That's what they said was not present. [00:11:40] Speaker 00: In other words, you have a three-part stent, right? [00:11:42] Speaker 00: The proximal end, an intermediate section, and distal end. [00:11:47] Speaker 00: They agree that the proximal and distal ends are there. [00:11:49] Speaker 00: That's what they call the short straight connectors. [00:11:51] Speaker 00: So the dispute was over the middle. [00:11:52] Speaker 00: So all we took out of the literal claims was the middle. [00:11:54] Speaker 00: We did leave some architecture in. [00:11:55] Speaker 00: But if we don't leave enough in, that would be our problem under Amanda and the Stearman hearing. [00:12:00] Speaker 00: The other thing, though, is that the issue is not just narrowing in the abstract. [00:12:03] Speaker 00: In fact, to some extent, there's nothing wrong with narrowing. [00:12:05] Speaker 00: The point is to substitute the literal with an equivalence. [00:12:09] Speaker 00: And equivalence aren't always entirely encompassed within. [00:12:12] Speaker 00: So for example, if a screw is an equivalent of a nail, there's different. [00:12:16] Speaker 00: They're equivalent. [00:12:16] Speaker 00: Well, it's not necessarily narrower. [00:12:18] Speaker 03: And in Dupuis... Are you saying you don't read stream feeder as requiring, when you come up with a hypothetical claim, to broaden the issued claim only? [00:12:32] Speaker 03: and that, in fact, under stream feeder, you're allowed to eat away at some of the issued claim scope in devising a hypothetical claim? [00:12:42] Speaker 00: You have to broaden it for purposes of the equivalence theory that the jury heard at trial. [00:12:46] Speaker 00: In other words, the idea of stream feeder is you obviously have to broaden the claim to encompass the accused product. [00:12:51] Speaker 00: That's your theory of trial. [00:12:52] Speaker 00: You can't then do some other unrelated narrowing to try to avoid the prior art. [00:12:56] Speaker 00: That's gaming the system. [00:12:57] Speaker 00: But take Dupuis' spine. [00:12:59] Speaker 00: There, as a hypothetical claim, this court replaced a spherical shape with a conical one. [00:13:04] Speaker 00: Those don't fall within one another. [00:13:07] Speaker 00: But the point is that the conical was the equivalent at trial. [00:13:11] Speaker 00: Therefore, that's what you had to have in the hypothetical claim. [00:13:14] Speaker 06: Because if the narrowing... What did your expert really say was the equivalent at trial? [00:13:18] Speaker 06: All your expert really said was the magic words of it does the same thing in the same way with the same result. [00:13:24] Speaker 06: But it didn't explain how. [00:13:26] Speaker 06: your expert didn't tell you. [00:13:27] Speaker 06: I mean, maybe that's the problem. [00:13:29] Speaker 06: If your expert had a real view of what the equivalence theory was, he might have been able to give you a better hypothetical claim. [00:13:38] Speaker 00: No, the equivalence theory, and let me, sorry, I lost, this is what I was looking for. [00:13:43] Speaker 00: The equivalence theory, I mean, to illustrate an example on the exhibit, it's page 41 of our brief, also found in appendix page 11, 649. [00:13:56] Speaker 00: Here, the red structures, these are the macro elements. [00:14:03] Speaker 00: And everyone agrees those are expansion columns. [00:14:08] Speaker 00: The micro element in the middle between the reds, the question is whether that's a connecting strut. [00:14:13] Speaker 00: And our expert's testimony is you look at the green part. [00:14:20] Speaker 00: In our view, even if you don't want to call it a connecting strut for the reasons that they give in the little infringement defense, [00:14:25] Speaker 00: It still has the same, it satisfies function-of-way result. [00:14:28] Speaker 00: Why? [00:14:29] Speaker 00: Because the screen part, it's a three-part connector that connects one expansion strut to the next. [00:14:33] Speaker 05: Can you give us the sites to the expert? [00:14:36] Speaker 00: The expert on the function-of-way result, yeah. [00:14:39] Speaker 00: Sorry. [00:14:40] Speaker 00: The expert discussed the function-of-way result test. [00:14:45] Speaker 00: And this was Mike Lee. [00:14:47] Speaker 00: It would be a joint appendix. [00:14:50] Speaker 00: One site would be 8753 to 5454. [00:14:54] Speaker 03: 8753 to 54. [00:14:57] Speaker 00: And then Dr. Cronos also followed up on it at appendix pages 9250 to 51. [00:15:04] Speaker 03: But isn't Lee the main event compared to Cronos? [00:15:07] Speaker 00: Yes, Lee is our main. [00:15:08] Speaker 00: Lee is our primary expert. [00:15:09] Speaker 03: So it's 8753 to 54. [00:15:10] Speaker 06: Did you say 887 or 87? [00:15:16] Speaker 06: 87. [00:15:17] Speaker 06: No, 87. [00:15:17] Speaker 00: 8753. [00:15:21] Speaker 03: Here's a concern I have. [00:15:24] Speaker 03: You know we have this requirement under Doctrine of Equivalence that the patent owner needs to come forward with particularized testimony and linking argument on a limitation by limitation basis. [00:15:36] Speaker 03: We have a certain requirement for that to make sure that the jury doesn't get confused by a very conclusory Doctrine of Equivalence analysis. [00:15:45] Speaker 03: So if the literal, if the no literal infringement verdict stands up, [00:15:51] Speaker 03: it stands up because the jury concluded that the microelements are expansion columns, not connecting struct columns. [00:16:00] Speaker 03: And so your theory, as I understood your brief, is there's nothing wrong with the microelement expansion column also being a connecting struct column as claimed. [00:16:14] Speaker 03: And that troubles me because, for purposes of document relevance, and that troubles me because now [00:16:21] Speaker 03: you are having one structure in the queued product mapping onto two different structures in the claim. [00:16:28] Speaker 03: And the claims clearly calls for expansion columns to be coupled to connecting struct columns. [00:16:35] Speaker 03: And I don't understand how this micro element can couple to itself in the sense that it's, I don't know, some kind of Jekyll and Hyde role where it's both Jekyll and Hyde at the same time. [00:16:47] Speaker 03: It's a little schizophrenic to understand [00:16:50] Speaker 03: how this one feature of the express stent is actually both structures at the same time, coupling to itself. [00:16:59] Speaker 00: Yeah, and I think that's their best literal infringement. [00:17:03] Speaker 03: And so getting to particularized testimony in linking armaments, sorry this question is so long, is that your expert didn't explain why, in the event that there's no literal infringement, this expansion column, i.e. [00:17:18] Speaker 03: the micro [00:17:19] Speaker 03: element is also at the same time an expansion column coupled to a connecting struct column. [00:17:28] Speaker 00: The point of the expert testimony is that you've got the macro elements expansion columns in the middle. [00:17:34] Speaker 00: Call it whatever you want. [00:17:36] Speaker 00: You can call it anything you want. [00:17:37] Speaker 00: The point is that what's there in the middle, the micro element, whatever else you want to call it, it functions, it has essentially the same function, way, and result as a [00:17:47] Speaker 00: the described connecting strut, because it couples the two things that are on the side of it in a way that adds flexibility. [00:17:56] Speaker 00: And he presented extensive, then, document equivalence testimony, including benchtop testing, finite element analysis. [00:18:04] Speaker 00: He has his own document showing that what's in the middle there, whatever you want to call it for literal purposes, that imparts the added flexibility. [00:18:10] Speaker 03: But it's fair to say that there's no expert testimony or testimony anywhere that says, OK. [00:18:16] Speaker 03: even if this micro element is deemed to be an expansion column, it is nevertheless also at the exact same time serving the connecting struct column for purposes of claim one. [00:18:31] Speaker 03: Even though you don't have to make any adjustment to it in order for the doctrine of equivalence analysis. [00:18:37] Speaker 03: For the doctrine of equivalence analysis, we're just saying it's also at the same time a connecting struct column. [00:18:44] Speaker 00: Well, no. [00:18:44] Speaker 00: For equivalence, the purpose is that the microelement is equivalent to the recited connecting strut column. [00:18:50] Speaker 00: That's why equivalence is different from literal. [00:18:52] Speaker 00: We're saying that the connecting strut is equivalent, the microelement in the accused product is equivalent to a connecting strut, because it's essentially the same way it results. [00:19:03] Speaker 00: I should probably save what little time I have left for the bottle. [00:19:05] Speaker 03: Can you answer my question? [00:19:07] Speaker 03: How does it couple to itself under your doctrine of equivalence? [00:19:10] Speaker 03: How does the microelement [00:19:15] Speaker 03: Expansion column coupled to the micro element connecting strut column. [00:19:20] Speaker 03: I don't think it can, right? [00:19:22] Speaker 03: The claim calls for a connecting strut column coupled to the expansion column. [00:19:26] Speaker 00: Which is why I'm trying hard not to push back on literal infringement and just talk about equivalence. [00:19:31] Speaker 00: But for equivalence, I mean the way the product works, you have macro element, micro element, macro element, micro element. [00:19:36] Speaker 00: So between two macro elements you have a micro element. [00:19:39] Speaker 00: I'm not arguing right now that a microelement is a connecting strut. [00:19:42] Speaker 00: I'm saying that the microelement serves the same function as the connecting strut because it connects one macroelement to the next in a way that was proven in a variety of ways to impart the added flexibility. [00:19:54] Speaker 00: And so you can call the microelement another expansion column for literal purposes. [00:19:59] Speaker 00: I'm not trying to fuss over that right now. [00:20:01] Speaker 00: My point's just that the microelement is in between two macroelements. [00:20:08] Speaker 00: and two expansion columns. [00:20:10] Speaker 00: And it joins them in the way that has the same function way result as the experts testified to and the jury agreed with. [00:20:16] Speaker 00: And that then becomes the predicate for hypothetical claim three. [00:20:21] Speaker 00: But again, with hypothetical claim three or five, if the point is that there's some words in there that look new or that seem different, then what the court could have done is either what this court did in stream feeder, modify the claim, or what? [00:20:32] Speaker 06: But we modified the claim in stream feeder and altered text. [00:20:37] Speaker 06: both to explain why it snares the prior art. [00:20:41] Speaker 06: I mean, we didn't say we're saving the patentee here by modifying this claim. [00:20:46] Speaker 06: We're saying that the claim was that you could not do the claim the way it was done. [00:20:52] Speaker 06: And the only way you could actually have a fair claim would ensnare the prior art. [00:20:58] Speaker 00: Well, that turned out to be the result in those cases. [00:21:00] Speaker 00: But I mean, the court quite properly did not just kick the plaintiff out, kick a jury verdict out. [00:21:07] Speaker 00: Because I didn't like the way I claimed it and reframed it and then went ahead. [00:21:11] Speaker 00: Or as a markman, we could have done something just more iterative than the district court still could. [00:21:14] Speaker 05: The concern I'm having, and we're sort of full circle, because this is exactly where we started our discussion this morning. [00:21:21] Speaker 05: And the word you used repeatedly is could. [00:21:25] Speaker 05: I mean, I guess he could have done pretty much anything. [00:21:29] Speaker 05: So I don't think the inquiry involves whether he could have done it. [00:21:32] Speaker 05: The question is whether he was required or compelled to do it. [00:21:35] Speaker 05: And that, to me, is a little bit of a different analysis. [00:21:38] Speaker 00: Right. [00:21:38] Speaker 00: But the question, then, is if the first proposed hypothetical claim, the first proposed round of hypothetical claims, the district court sees a problem with them. [00:21:46] Speaker 00: The question is, does that forfeit the jury verdict then and there? [00:21:50] Speaker 00: And this court's never adopted such a jury conian result. [00:21:53] Speaker 00: No court or case ever has. [00:21:55] Speaker 03: Can you explain the origin of the 11 hypothetical claims? [00:22:00] Speaker 03: How did you? [00:22:03] Speaker 03: Shove them all in at the same time? [00:22:04] Speaker 03: Was it an iterative process? [00:22:07] Speaker 00: It was not iterative. [00:22:08] Speaker 00: They were all presented at the same time. [00:22:09] Speaker 00: And if it matters, there's some double counting in the 11th figure. [00:22:13] Speaker 00: It was not really 11. [00:22:14] Speaker 00: But there were different claims that addressed different aspects. [00:22:17] Speaker 00: But it was all at once. [00:22:19] Speaker 00: They were presented at once, rejected simultaneously at once, in an order that simultaneously dismissed the case. [00:22:24] Speaker 00: There was no iterative back and forth like one would have in a Markman, which is really the only analogy. [00:22:29] Speaker 00: Instead, the court did something totally unprecedented, which was to overturn a jury verdict based solely on its view that the hypothetical claims were framed improperly. [00:22:41] Speaker 05: OK. [00:22:41] Speaker 05: We'll restore your rebuttal time. [00:22:43] Speaker 05: Thank you. [00:22:50] Speaker 02: Thank you. [00:22:50] Speaker 02: May it please the court, if I may start where we came full circle, which is on this analogy to Markman, I would [00:22:58] Speaker 02: respectfully suggest to counsel that Markman is an inapt analogy for a very simple reason, that there is no burden of proof in a Markman proceeding. [00:23:05] Speaker 02: Each side bears equal burdens and in fact the court is obligated to come up with a construction if it believes it's important to infringement or validity issues down the line. [00:23:16] Speaker 03: How would you interpret what the court did in Streamfeeder though? [00:23:19] Speaker 03: In Streamfeeder, this court clearly didn't simply reject the patent owner's hypothetical claim and then [00:23:27] Speaker 03: reject the doctrine of equivalence conclusion. [00:23:31] Speaker 03: It went further and still did an analysis on a modified version of that hypothetical claim. [00:23:40] Speaker 02: Is that what we're supposed to do now? [00:23:42] Speaker 02: No, Your Honor. [00:23:43] Speaker 02: That's why we're talking about burdens of proof here. [00:23:45] Speaker 02: I believe the court... But then what did the court do in stream 3? [00:23:48] Speaker 02: It did what this court does from time to time in many number of contexts, which is to say party A loses, and even if they were right, they'd lose for this additional reason. [00:23:57] Speaker 02: Even if we gave them the benefit of the doubt, even if we threw them a bone, they would still lose. [00:24:02] Speaker 03: That would be an implicit reading of stream feeder, right? [00:24:06] Speaker 03: Because stream feeder doesn't say that even if language. [00:24:09] Speaker 02: No, but I think that is what happened. [00:24:11] Speaker 02: I think that that's the fairest reading. [00:24:14] Speaker 02: Because it certainly didn't say that the district court was obligated. [00:24:17] Speaker 02: It certainly didn't say that this court was obligated. [00:24:20] Speaker 02: It just did it. [00:24:21] Speaker 02: It didn't explain why. [00:24:22] Speaker 02: And I think the fairest reading of why it did is to say it wouldn't matter. [00:24:26] Speaker 02: There was no saving this claim. [00:24:28] Speaker 02: We're comfortable in our initial decision, both as a procedural matter and as a matter of the merits. [00:24:36] Speaker 02: I think that's all that was happening there. [00:24:38] Speaker 06: And this may put you in a difficult spot, but the DOE theory, as it relates to just infringement, makes a lot of sense. [00:24:46] Speaker 06: And I certainly understand why the jury found infringement under the Doctrine of Equivalence. [00:24:52] Speaker 06: based on the expert testimony that received, can you envision any hypothetical claim that would not read on the prior art? [00:25:02] Speaker 02: Sitting here today, no. [00:25:03] Speaker 02: We presented what we thought was the most straightforward hypothetical claim, which was to scratch out the specific geometric limitations, and then said, does that read on the prior art? [00:25:17] Speaker 02: And the answer was, yes, it does. [00:25:19] Speaker 02: And we cited that, and that's in the appendix. [00:25:22] Speaker 02: And we also said, for that matter, it wouldn't cover our products. [00:25:26] Speaker 02: It was 0 for 2 in that regard. [00:25:29] Speaker 02: But to answer how it went, counsel, I think, got it a little bit wrong as to how the iterative process worked, the 11 claims your honor asked about, and this kind of goes to your point, your honor, which is the district court ordered us to meet and confer, set up a process. [00:25:44] Speaker 02: And plaintiffs didn't want to participate in this process. [00:25:48] Speaker 02: And so they fought trying to involve themselves. [00:25:52] Speaker 02: But at the last minute, they threw six claims our way as part of a meet and confer. [00:25:56] Speaker 02: And we wrote back and said, no, those six claims don't work for one of two reasons. [00:26:01] Speaker 02: Either they're narrowing the claims or they're not changing the claim scope at all. [00:26:06] Speaker 02: Then they sent five more claims, hence the 11 claims. [00:26:09] Speaker 02: Now, the double counting, there was some dispute at the time whether two of the claims of the original six overlap with the five, so it's either nine or 11. [00:26:17] Speaker 02: But in any event, then, as the transcript reflects, the judge walks into the courtroom and says, how are we going to handle 11 claims? [00:26:25] Speaker 02: And the plaintiff comes and says, well, Your Honor, we've reduced it to two. [00:26:28] Speaker 02: And they argued hypothetical claim three and five. [00:26:31] Speaker 02: So to say it was an iterative is not, I think, reflective of the record. [00:26:36] Speaker 02: It was iterative vis-a-vis us. [00:26:39] Speaker 02: It's not like we surprised them at the hearing and said, here's the problem with the claims. [00:26:44] Speaker 02: We had extensive discussions with them. [00:26:46] Speaker 02: And that's where it went back and forth and back and forth. [00:26:48] Speaker 02: And then they decided to take two claims to the district reporter. [00:26:51] Speaker 06: What's the response to the argument that you can narrow in ways that really don't relate to the debate that were happening over DOE, as long as you broaden in the more relevant circumstances? [00:27:07] Speaker 02: There are two responses. [00:27:08] Speaker 02: And one is kind of overarching a lot of what was said in the briefs, which is, I think, a fundamental misperception about how this process works. [00:27:16] Speaker 02: in plaintiff's briefs and argument, which is once you get to the hypothetical stage, equivalence doesn't matter anymore. [00:27:23] Speaker 02: Equivalence is irrelevant. [00:27:25] Speaker 02: The question is, here we have a claim. [00:27:26] Speaker 02: It's of this scope. [00:27:28] Speaker 02: We know it's not infringed. [00:27:30] Speaker 02: Now we need to expand it such that it infringes. [00:27:33] Speaker 02: We need to expand it just enough that it captures the accused product. [00:27:39] Speaker 02: As a literal matter, equivalence is irrelevant at this stage of the proceeding. [00:27:43] Speaker 02: So now that we've expanded it to cover the accused device just enough, [00:27:46] Speaker 02: Now we're going to say, does that also read on the prior audit? [00:27:49] Speaker 02: And if it does, well, then you're not entitled to that claim scope. [00:27:53] Speaker 02: So to your point, Your Honor, even today, we're hearing a little bit of a misunderstanding of how the process works. [00:27:59] Speaker 02: But then to Your Honor's direct question, what the courts have said and Streamfeeder says, and I believe it was Ultratex as well, is we're not going to redo what happened in the patent office. [00:28:10] Speaker 02: And if you're nipping and tucking, expanding and trimming, we're not here to do patent prosecution for you. [00:28:16] Speaker 02: And so if you're narrowing in any way, shape, or form, that's not allowed. [00:28:20] Speaker 02: The only thing you're supposed to do is take that circle and expand it just enough so now it literally covers the accused device. [00:28:28] Speaker 02: That's the process, and that's not understood. [00:28:30] Speaker 02: Now, on hypothetical claim three, I want to point out a couple things that may have gotten lost in the wash, which is that the district court took expert testimony, live expert testimony, subject to extensive cross-examination. [00:28:45] Speaker 02: And the district court found, and this is, I think, A11, as a result of that testimony, found that the hypothetical claim three was broadening. [00:28:57] Speaker 02: So we hear attorney argument as to why it wasn't broadening. [00:29:00] Speaker 02: But this isn't a de novo question here. [00:29:02] Speaker 02: We have underlying discussions of fact by the experts that the court accepted. [00:29:06] Speaker 02: The second thing, and Your Honor, this goes to your point, there's a little bit of shell game going on in what they did with hypothetical claim three. [00:29:15] Speaker 02: Because the original claim called for the first connecting strut and then described its shape. [00:29:20] Speaker 02: So it said it has to be non-parallel. [00:29:22] Speaker 02: That was to the strut. [00:29:23] Speaker 02: But the hypothetical claim doesn't talk about the strut. [00:29:26] Speaker 02: It talks about the column. [00:29:28] Speaker 02: It now says the first connecting strut column is configured. [00:29:32] Speaker 02: So not only are they adding these limitations to narrow it, they're even changing what the limitation's talking about. [00:29:39] Speaker 02: They're no longer talking about the geometric configuration of the strut. [00:29:42] Speaker 03: It's okay if the new limitation that they're adding, the functional limitation, encompasses that structural limitation that they removed. [00:29:54] Speaker 03: In other words, they converted a structural limitation to a broader functional limitation that encompasses the original structural recitation as well as virtually any other structure that achieves that exact function. [00:30:06] Speaker 03: So that's really the question [00:30:08] Speaker 03: of whether when you look at what was deleted and what was added, do we end up with a larger claim scope because now we have a functional version of a previously structural limitation? [00:30:21] Speaker 02: I take your point, Your Honor. [00:30:22] Speaker 02: I would just note that Wilson and Depew counseled us to expand the claims only enough to cover the accused device and not much more. [00:30:33] Speaker 02: Now, counsel is right that if you expand it too much, [00:30:36] Speaker 02: You'll actually help us at the end of the day. [00:30:38] Speaker 02: But I take your point. [00:30:40] Speaker 02: My fundamental point is the district court found, not just as a matter of grammar, not just as a matter of common sense, but as a matter of fact in light of expert testimony, that adding the limitation narrowed the claim in contravention of stream feeder. [00:30:56] Speaker 02: Briefly, Your Honor, on this, the alternative ground for affirmance and the failure to disclose doctrine of equivalence, I would ask simply on rebuttal [00:31:05] Speaker 02: for counsel to point us where on the expert reports you have a particularized function-way result analysis of any kind. [00:31:13] Speaker 02: There is extensive discussion of function in the context of a literal infringement analysis in one of the reports, but it's not particularized. [00:31:21] Speaker 02: And more importantly, there's no way. [00:31:22] Speaker 02: There's no way discussion at all, and it's not tied to any claim limitation. [00:31:27] Speaker 02: It simply should not have been allowed to go forward from that point. [00:31:30] Speaker 03: I guess the other side would say, and I'd like to hear your response to this. [00:31:34] Speaker 03: is that, well, the squiggly part of the micro element is serving as the intermediate section of the connecting stride. [00:31:50] Speaker 02: So the function they identified is flexibility. [00:31:57] Speaker 02: Now, this is in the record, but it's not argued in the briefs. [00:32:00] Speaker 02: The reason that the microelements are more flexible is because they are small, not because they have that architecture. [00:32:08] Speaker 02: They are smaller and thinner. [00:32:10] Speaker 02: So it's a matter of the composition of the metal, not the geometric shape. [00:32:15] Speaker 02: Now, the reason that's not in the record at trial is because their experts couldn't say they operated in the same way. [00:32:23] Speaker 02: They knew that even under their equivalence theory, [00:32:27] Speaker 02: that the function of flexibility was not met in the same way. [00:32:31] Speaker 02: If they had had to put that in a particularized limitation by limitation approach as called for in aquatex, that would have been brought out in stark relief. [00:32:42] Speaker 02: Should I turn to the issue that was our cross appeal at this point unless the court has further questions? [00:32:49] Speaker 06: That is a contingent cross-appeal, though. [00:32:51] Speaker 06: I mean, to the extent you call it a cross-appeal. [00:32:53] Speaker 06: But it's contingent, because if, in fact, there's no infringement, then that cross-appeal doesn't even get resolved. [00:33:01] Speaker 02: As a practical matter, you're probably right here. [00:33:02] Speaker 02: We struggle with this issue, too, Your Honor, as to whether it was an alternative ground for firmance or a cross-appeal. [00:33:07] Speaker 02: Here's why we called it a cross-appeal, and I leave it to Your Honors if you think we fell on the wrong side of the line. [00:33:13] Speaker 02: If tomorrow they sued us on a different product prior to the patents, [00:33:19] Speaker 02: invalidation and said, well, okay, so express isn't a contingent payment product, but this stent B is. [00:33:29] Speaker 02: Then in theory, the issue of the import of the patent office activities, et cetera, would be relevant to stent B. [00:33:39] Speaker 02: The odds of that happening are extreme. [00:33:41] Speaker 06: But if we affirm the judgment otherwise, then that becomes an advisory opinion. [00:33:47] Speaker 06: And how do we do that without having the context of what the other product was? [00:33:52] Speaker 02: You're probably right, Your Honor. [00:33:53] Speaker 02: But as you know, there's some division in this court about what's a cross appeal and what's an alternative ground for affirmance. [00:34:00] Speaker 02: And out of an abundance of caution, we labeled it as such. [00:34:06] Speaker 02: In theory, the relief requested in the cross-appeal is broader than merely affirming the district court's judgment. [00:34:12] Speaker 02: Hence, under some characterizations of the test, it's a cross-appeal. [00:34:18] Speaker 02: It's not an alternative ground for affirmance. [00:34:20] Speaker 02: As a practical matter, under the facts of this case, you're absolutely right. [00:34:25] Speaker 02: With that, unless the court has any further questions, I will give back some time. [00:34:40] Speaker 00: morning may please the court. [00:34:42] Speaker 06: How do you get around the fact, as the trial court said, that on cross-examination Mr. Lee admitted that the addition of the flexibility functional language would narrow the original claims of the patent? [00:34:59] Speaker 00: No, because he didn't. [00:35:00] Speaker 00: What he eventually testified to was that if you put that language in there, [00:35:06] Speaker 00: compared to nothing else, it's narrowing by definition. [00:35:09] Speaker 00: But he said, if you put this in replacement of the other, it's not narrow. [00:35:12] Speaker 00: So to go through, this talks about something like 10 pages of the trial transcript, because they kept asking the same question. [00:35:20] Speaker 00: But it starts around page 11137, where they keep saying. [00:35:27] Speaker 05: Is this volume three? [00:35:29] Speaker 00: Yeah, sorry. [00:35:31] Speaker 00: Sorry, it is. [00:35:32] Speaker 00: But the point of the questions repeatedly was, was Mr. Lee just focus on this language that you're adding to replace the other language? [00:35:41] Speaker 00: Just that by itself, does that narrow it? [00:35:46] Speaker 00: And for a while, he kept saying, well, there's no narrowing. [00:35:49] Speaker 00: But eventually, when they got him pinned down, it goes over and over and over. [00:35:53] Speaker 00: OK, well, eventually it's OK. [00:35:57] Speaker 00: If that's all he's focusing on, then sure, having that language in there compared to nothing is limiting. [00:36:02] Speaker 00: But as a replacement, it's not. [00:36:04] Speaker 00: It's the important thing. [00:36:05] Speaker 00: And it ends around appendix page 11170, line 15, where it says, yeah, I don't think it's narrower. [00:36:15] Speaker 00: I think it's equivalent. [00:36:16] Speaker 00: It's clarifying. [00:36:18] Speaker 00: And that's why, in context, all he was saying was, no, it's not narrower. [00:36:22] Speaker 00: But when he was asked these carefully crafted questions about it, is it narrower compared to no other language? [00:36:26] Speaker 00: Sure, it's narrower. [00:36:28] Speaker 00: Which brings me to one of the other points is, [00:36:31] Speaker 00: Council was talking about whether a limitation was added here, and the answer is no. [00:36:36] Speaker 00: One was replaced with another. [00:36:37] Speaker 00: It's the whole point of equivalence or hypothetical claim analysis to replace a limitation with another. [00:36:42] Speaker 00: You can call that adding, but it's really replacing, and there's nothing wrong with that because that's what you necessarily have to do. [00:36:50] Speaker 03: But if it in any way narrows the scope of the original claim one, if original claim one is like a circle, and then yes, you've removed a limitation that's now maybe it's [00:37:01] Speaker 03: the circle gets a little bigger one way. [00:37:03] Speaker 03: But now you've eaten into it a little bit through the addition of your claim language, then is that a legitimate thing to do? [00:37:12] Speaker 00: As in stream theater, it's illegitimate if the way you've eaten into it does not relate to the theory of equivalence, the doctrine of equivalence theory, the infringement. [00:37:23] Speaker 00: And instead, it's just there to narrow the claim and try to evade the prior art. [00:37:26] Speaker 00: But again, it's de puy. [00:37:28] Speaker 00: If the theory of equivalence is you don't need a cone, if you don't need a sphere because a cone is equivalent, well, the sphere is going to be both broader and narrower than a cone in some respects. [00:37:38] Speaker 00: But that's OK if the way that it's broadened for doctrine of equivalence is the same as the way that it's broadened for hypothetical claims. [00:37:46] Speaker 00: Because what you're looking to do is just to test the equivalence theory at trial against the prior art. [00:37:50] Speaker 00: And if there's any other immaterial narrowing that doesn't go to the equivalence theory at trial, the theory for infringement, [00:37:56] Speaker 00: It's not a problem, which is why, one, that is dequey. [00:38:02] Speaker 00: And two, that's also why stream feeder said that what you can't do is broaden one respect for infringement, but then narrow in a different respect to evade the priority. [00:38:11] Speaker 03: At 8753-54, I see Lee testifying about having performed some test that shows some flexing in the relevant area of the accused product's micro element. [00:38:26] Speaker 03: and then it concludes so it's doing the function of flexing. [00:38:32] Speaker 03: But that's only the function aspect of the function wave result analysis. [00:38:39] Speaker 03: Is there something more that where he hones in on why it's substantially the same way? [00:38:48] Speaker 03: What he's pointing at and explaining why it's the same way even though it's not a literal infringement? [00:38:56] Speaker 00: One of these cases where they're, you know, the function way result, I mean, the way here, he continued to tie to the fact that, look, he thinks there's literal infringement, right? [00:39:04] Speaker 00: Because he thinks that what's between the microelements, between the macroelements, in his view, satisfies all the claim limitations. [00:39:09] Speaker 00: You've got the three-part connector, offset, peak to peak. [00:39:12] Speaker 00: It imparts flexibility in exactly the way that the, the specification of patents call for, the way, okay? [00:39:19] Speaker 00: His point, the point then over for equivalence, [00:39:22] Speaker 00: is just that if you don't want to call the micro element, if you don't want to call what's in the middle, a connecting strut, call it anything you want. [00:39:29] Speaker 00: Call it spinach. [00:39:30] Speaker 00: It's still the same way because it has, you still have those three part shapes that connect peak to peak, offset to offset with the non-parallel intermediate section. [00:39:44] Speaker 00: It doesn't matter whether you want to call it a connecting strut because you can also call it expansion column. [00:39:48] Speaker 00: That's fine for present purposes. [00:39:50] Speaker 00: The point is just that whatever you want to call the microelement, whatever you want to call the part in the middle, it's substantially the same way because the pieces are still the same. [00:39:58] Speaker 06: But isn't the point of, as I read Dr. Lee's testimony, that what he said is you could have, you could envision a claim that would take away certain structural elements and therefore broaden what [00:40:18] Speaker 06: that middle column is. [00:40:20] Speaker 06: And in that way, you could literally infringe, or you could say that there's little infringement, but then you wouldn't have the function, which is the flexibility. [00:40:39] Speaker 00: But it is true that the function and result, the function has to be flexibility with the result that you can go through the body. [00:40:46] Speaker 06: So if you did something else that would not serve the function. [00:40:48] Speaker 06: So what you said is that yes, when you add that functional element, that you are narrowing the claim in a certain way. [00:40:58] Speaker 00: In another abstract context, I can see where you could have a situation where that could be the case. [00:41:03] Speaker 00: But remember here, under this specification, under the expert testimony of both parties' experts, [00:41:10] Speaker 00: I mean, the micro element adds flexibility. [00:41:14] Speaker 00: And the point of the connecting strut, the whole point of the connecting strut is to add flexibility. [00:41:18] Speaker 00: I mean, before the invention, which goes back to the mid-90s, it was understood that the problem was you had these stents that were either too rigid or too flexible. [00:41:28] Speaker 00: They were too flexible, but then they weren't strong enough when they got where they were going, so they'd collapse. [00:41:32] Speaker 00: Or they were too rigid and they just couldn't get where you were going. [00:41:35] Speaker 00: And if you opened up the body to get the stent there and it didn't get there, [00:41:38] Speaker 00: patients had to die on the table. [00:41:40] Speaker 06: I thought that was the point that he said that structurally you can envision a connecting strut that would claim to a connecting strut that would make the accused product literally infringe that claim but it would not provide the flexibility that is necessary to not read on the prior [00:42:08] Speaker 00: Hopefully I'm not just getting hung up on language, but if it's the connecting strut that's described in the literal connecting strut in the claims and spec, the whole point of the literal connecting strut is that because of its geometry, it does add flexibility. [00:42:23] Speaker 00: That's what it's there to do. [00:42:25] Speaker 03: Right, but there's nothing in the patent that teaches or suggests that whatever flexibility it provides, it necessarily [00:42:33] Speaker 03: is an increased amount of flexibility over the flexibility provided by the first and second expansion columns. [00:42:45] Speaker 00: Sometimes the most obvious things aren't the ones that are said in technical documents, but the whole point of the expansion columns is that they provide the strength. [00:42:52] Speaker 00: They have to be bigger and stronger to provide the strength. [00:42:55] Speaker 06: But not all of them in the prior art did provide the strength. [00:42:58] Speaker 00: This is the question I most wanted to get back to on the panel, actually. [00:43:01] Speaker 00: It was your question about [00:43:02] Speaker 00: If you got your hypothetical claim, how could you possibly win incineration anyway? [00:43:06] Speaker 00: Which I think is really important. [00:43:07] Speaker 00: Because the district court didn't reach it, we haven't really discussed it in the briefing. [00:43:10] Speaker 00: But to understand where we were back at that point in time, and this is in the Mr. Lee testified to all this in the incineration hearing, the thing that most of the rely on is Ouija. [00:43:21] Speaker 00: Ouija is not prior art. [00:43:22] Speaker 00: Dr. Zhang swore behind it and presented considerable evidence it was not enabled. [00:43:26] Speaker 00: The other two references that they rely on, and I recognize these are disputed facts, but that's the point. [00:43:31] Speaker 00: The district court should have resolved the experiment with disputed facts. [00:43:35] Speaker 00: The other two references involved single-piece connectors that did not impart flexibility, as opposed to the three-part flexible ones with this design. [00:43:43] Speaker 00: In fact, Brown uses a connector for stability and actually teaches away from using it for flexibility, which is the exact opposite of what Dr. Zhang invented. [00:43:55] Speaker 00: And the reason that this being a groundbreaking invention is part of what helps explain why BOC paid $50 million down and then with additional payments due later, which is what we're here to talk about today. [00:44:06] Speaker 00: All we're asking for, though, is a chance to actually have our actual installment case heard. [00:44:14] Speaker 05: Thank you.