[00:00:30] Speaker 03: Okay, our second case this morning, taking them out of order, is number 2017-2295, Liquid, Inc. [00:00:40] Speaker 03: versus L'Oreal, USA, Inc. [00:00:43] Speaker 03: with Mr. Weisburst. [00:00:46] Speaker 04: May it please the court, Sanford Weisburst, for plaintiffs' appellants Liquid and Olaplex. [00:00:51] Speaker 04: Now, the district court in this case denied a preliminary injunction. [00:00:55] Speaker 04: But the district court found that several factors actually favored the grant of a preliminary injunction, and those were irreparable harm and the balance of equities. [00:01:02] Speaker 04: I'd like to focus on claim construction, which is really where we parted ways with the district court, and that was the basis for the denial. [00:01:10] Speaker 04: The claim construction is reviewed de novo by this court, even on a preliminary injunction motion. [00:01:15] Speaker 04: Now, the district court erred in its claim construction. [00:01:18] Speaker 04: I'd like to point the court particularly to page appendix six. [00:01:21] Speaker 04: It's found at the back of the blue brief. [00:01:24] Speaker 04: The district court erred by [00:01:25] Speaker 04: Instead of looking at the ingredient in the context of the actual mixture, instead the district court asked what the ingredient might be capable of in a different concentration in some hypothetical mixture that's not being studied in the case. [00:01:39] Speaker 04: And that was error under the plain terms of both the file history as well as the claim and specifications themselves. [00:01:47] Speaker 04: I'd like to start with the file history, Appendix 2325 in particular. [00:01:53] Speaker 04: And that is the most clear definition on this point. [00:01:56] Speaker 04: And it says you have to look at the actual mixture, not some hypothetical mixture. [00:02:00] Speaker 00: Specifically, it says... Can I double check something? [00:02:03] Speaker 00: Yes. [00:02:04] Speaker 00: In one of the, I guess in both of the post-grant review institution decisions, the board said that this file language is not just the correct construction, but the broadest reasonable one. [00:02:19] Speaker 04: I believe in the first of the two post-grant review constructions, the board, the PTAB, agreed it adopted this. [00:02:27] Speaker 00: It did. [00:02:27] Speaker 00: It used it in both, didn't it? [00:02:29] Speaker 04: It did, and I think in that sense it parted ways with the district court's reading. [00:02:34] Speaker 04: For other reasons, we are not principally relying on the PGR grants, including because they were not before the district court. [00:02:41] Speaker 04: And under this court's decision in the tennis case, they are not directly relevant on this record, but I'm happy to address them if the court would like. [00:02:48] Speaker 00: But they might conceivably be relevant if we agreed with you that the claim construction was incorrect and remanded. [00:02:55] Speaker 00: Time has passed. [00:02:56] Speaker 00: Things have happened in [00:02:59] Speaker 00: assessing whether the preliminary injunction should actually be granted. [00:03:03] Speaker 00: I know you would like us simply to reverse and order the issue. [00:03:05] Speaker 00: Yes. [00:03:06] Speaker 00: There are new circumstances, including rejection of various 112 arguments, rejection of the anticipation argument, institution on obviousness with an interesting caveat that says, hmm, this might be a case of objective indicia being serious. [00:03:22] Speaker 04: Yes. [00:03:23] Speaker 04: In fact, and just briefly to address that point, in the second institution decision, the PTAB [00:03:28] Speaker 04: Institute, of course, but it did not address one way or the other the objective indicia, which we believe points strongly in our favor and could support a likelihood of success here. [00:03:38] Speaker 00: What's the due date of the usual due date of the board's decision in the PGR in which it instituted? [00:03:46] Speaker 04: The final decision? [00:03:47] Speaker 00: Yeah. [00:03:48] Speaker 04: I'm not sure off the top of my head. [00:03:51] Speaker 04: I know that the proceeding is ongoing. [00:03:52] Speaker 04: We plan to contest it. [00:03:56] Speaker 04: I think one important distinction in terms of what the PTAB is doing there or has done so far, it instituted to be sure, but it explicitly said we're not addressing objective indicia. [00:04:07] Speaker 04: And here, the prior art references date from 2004 approximately. [00:04:11] Speaker 04: The product, Olaplex's product was introduced in 2014. [00:04:16] Speaker 04: It made a big commercial splash. [00:04:18] Speaker 04: It was 10 years since the prior art reference. [00:04:21] Speaker 04: We think the objective indicia are strong in this case. [00:04:23] Speaker 04: argued them at length in these briefs, but we think they're strong. [00:04:27] Speaker 03: But if we were to agree with you on the claim construction issue, there would still be the invalidity issue. [00:04:36] Speaker 03: And it seems to me that the district court kind of gave that issue the back of the hand by relying on the original grant, which doesn't carry that much weight, and really not understanding the Agawa reference very well. [00:04:54] Speaker 04: The district court's treatment was somewhat brief. [00:04:57] Speaker 04: I concede that. [00:04:59] Speaker 04: I respectfully submit that that was appropriate in light of what the examiner had done, because the examiner had those references, including Ogawa, before. [00:05:06] Speaker 03: That can't be. [00:05:07] Speaker 03: The district court can say, I'm going to deny. [00:05:11] Speaker 03: I'm going to assume that there's no [00:05:14] Speaker 03: possibility of success on the invalidity issue because the exam roll looked at the same arc. [00:05:20] Speaker 03: Let's put that aside. [00:05:21] Speaker 03: Sure. [00:05:21] Speaker 04: Well, let me address on the merits that point, if I could for a minute. [00:05:26] Speaker 04: So, Ogawa is a patent, again, it's from approximately 2004, and it's using maleic acid in a marcoosh group of about 10 different agents. [00:05:36] Speaker 04: And the reasoning for its use in that patent is not to protect the hair or to rebuild bonds, it's to [00:05:43] Speaker 04: It's a chelating agent, which means it's binding to a metal that is part of the solution that Ogawa is using to keep the metal from sort of falling out of the liquid. [00:05:53] Speaker 04: It's not performing any function along the lines of what it's doing in the 419 pack here. [00:05:57] Speaker 04: Why do you say it's not performing that function? [00:05:59] Speaker 03: Maybe it's not designed to perform that function, but it would be performing that function, wouldn't it? [00:06:06] Speaker 04: Well, our principal argument on Ogawa is that it's one of ten, it's not singled out, and none of Ogawa's examples, in fact, involve using maleic acid in the connection with a bleaching formulation to protect the hair. [00:06:23] Speaker 03: But that's only correct by you say to protect the hair. [00:06:28] Speaker 03: It does show using maleic acid connection with a bleaching formulation, right? [00:06:35] Speaker 04: Actually, I believe the examples do not do so. [00:06:39] Speaker 04: There's some language in the specification where Ogawa does say that his processes could be coloring or bleaching. [00:06:46] Speaker 04: I don't believe his examples involve that, but in any event, I would submit these issues were not extensively briefed before this court. [00:06:56] Speaker 04: Our principal argument to this court, as I mentioned, was let's [00:07:00] Speaker 03: Let's correct the claim construction that if we were to agree with you on the claim construction, we'd have to send it back for the district court to further consider validity issues. [00:07:09] Speaker 04: It's our submission that this court could find the there's non-obviousness on this record. [00:07:14] Speaker 04: However, at a minimum, I believe this court should send it back so that there could be further development on those issues. [00:07:21] Speaker 04: As you mentioned, Judge Dyck, the district court did not give a lengthy treatment to them. [00:07:26] Speaker 04: And there are objective conditions that haven't been considered. [00:07:29] Speaker 04: Those are, in this court's case law, equally important to read. [00:07:35] Speaker 04: on anticipation. [00:07:36] Speaker 04: Not for anticipation. [00:07:37] Speaker 04: Not for anticipation, but I believe in the first PGR decision, the anticipation argument was addressed and rejected in the first one. [00:07:45] Speaker 00: There's a 112 PGR, the one that was not instituted, and then there's the prior one. [00:07:50] Speaker 00: And in that one, the key point that this is at 83.93 of the appendix that the board relies on about Ogawa is that, in fact, the maleic acid portion of Ogawa is not really combined within [00:08:05] Speaker 00: Ogawa with the other portion. [00:08:09] Speaker 00: And so it rejected and it didn't ensue. [00:08:13] Speaker 04: Exactly. [00:08:14] Speaker 04: What's before the P tab is the obviousness issue. [00:08:18] Speaker 00: Again, there's another invalidity contention, which I think, which is assuming your claim construction is right, would the claims be indefinite? [00:08:33] Speaker 00: based on that, and the district court said, looks likely to me. [00:08:39] Speaker 04: Let me try to address that point. [00:08:42] Speaker 04: We think that indefiniteness is, the district court did suggest that. [00:08:46] Speaker 04: We think that that's wrong. [00:08:48] Speaker 04: In terms of this court's case slide, I'd like to emphasize the Sonics case, which dealt with a similar situation, which was, is the claim term visually negligible indefinite? [00:08:57] Speaker 04: Because it relies on the human eye to make a determination. [00:09:00] Speaker 04: And this court said, no, the human eye is objective. [00:09:03] Speaker 04: Even though there might be some discretion at the margins, this is enough guidance to a practitioner, to a person of skill in the art, to make a determination whether, in that case, it was a printed page with some hidden codes on it. [00:09:15] Speaker 04: The question was whether they were visually negligible or not. [00:09:17] Speaker 04: This court held that's objective enough. [00:09:20] Speaker 04: In this case, similarly, there's not much of a disagreement, frankly, between the parties, as I read the briefs. [00:09:26] Speaker 04: L'Oreal is pointing to some literature which [00:09:29] Speaker 04: supposedly found these dyes that are in question, yellow, blue, and red, in certain high concentrations can impart, can visibly change the color of the hair. [00:09:40] Speaker 04: You can see this at L'Oreal Brief 32. [00:09:41] Speaker 04: They actually use the words visibly change. [00:09:44] Speaker 04: And our position is the same. [00:09:46] Speaker 04: It's just that you look at the product or the mixture at issue. [00:09:50] Speaker 04: In both cases, you're doing a visual inspection. [00:09:52] Speaker 04: So I think this indefiniteness question is really not that difficult. [00:09:59] Speaker 04: It's really something that is performed in hair salons every day of the week. [00:10:02] Speaker 00: When you go in for a hair... On this point, I guess it struck me that indefiniteness is judged from the perspective of an ordinary skilled artisan. [00:10:13] Speaker 00: The ordinary skilled artisan is not the hairdresser. [00:10:17] Speaker 00: It's the person in their chemistry lab. [00:10:18] Speaker 04: Yes, I would... Well, in this case, the parties more or less agreed on who a person of the skill in the art was, and that was someone [00:10:25] Speaker 04: who has an undergraduate chemistry degree and has a few years of experience in the hair care industry. [00:10:31] Speaker 04: In the hair care product creation industry, not in the hair... I'm not entirely sure. [00:10:39] Speaker 04: I think it's more or less the same in the end because it really determines... Someone who works with these products on a day-to-day basis can tell if there's a change in color after they've [00:10:50] Speaker 04: Maybe the most telling piece of evidence on indefiniteness is L'Oreal's own approach in this case. [00:10:55] Speaker 04: And that can be found at appendix 5432. [00:10:58] Speaker 04: L'Oreal did the exact visual test that Olaplex is asking, Liquid and Olaplex are asking be done as claim construction. [00:11:04] Speaker 04: You take a swatch of hair, you have a control swatch and an uncontrolled swatch where you apply the product, and you see whether there's a change. [00:11:13] Speaker 04: And you look at it, the fact that L'Oreal can do it, I think shows that it can be done. [00:11:18] Speaker 04: It's not an impossible inquiry. [00:11:20] Speaker 04: And again, Sonics, I think, were well within the contours of Sonics. [00:11:27] Speaker 04: Unless the court has any further questions, which I'm happy to address now, I'll reserve the rest of my time for rebuttal. [00:11:33] Speaker 03: OK. [00:11:40] Speaker 03: Mr. Moody? [00:12:00] Speaker 01: Good morning, Your Honors. [00:12:01] Speaker 01: May it please the Court? [00:12:03] Speaker 01: I'd like to start, Judge Serrano, with the PTAB since you brought that up. [00:12:08] Speaker 01: So that was a preliminary finding by the PTAB on claim construction. [00:12:12] Speaker 01: And what I would like to point, to the extent that this Court looks at the PTAB finding, there was actually a later order by the PTAB. [00:12:20] Speaker 01: And I'd like to point you to that. [00:12:23] Speaker 01: And that's in the PGR 2017-00012. [00:12:28] Speaker 01: And it's unfortunately not in the appendix, Your Honor, because it came later. [00:12:32] Speaker 01: But since you brought it up, I wanted to bring it to your attention. [00:12:35] Speaker 01: And that's paper 37, at 8 to 9. [00:12:38] Speaker 01: And what the PTAB did was there was this issue of secondary considerations. [00:12:44] Speaker 01: Polaplex tried to seek discovery from L'Oreal in the PTAB. [00:12:50] Speaker 01: And in that order, they had to show nexus to get discovery from the PTAB on whether L'Oreal's US products infringed or not. [00:12:58] Speaker 01: they had to show the nexus that was required under secondary considerations. [00:13:02] Speaker 01: And what the PTAB said with respect to this issue of the hair coloring agent, they said, quote, it's a binary determination. [00:13:10] Speaker 01: Either the product of the hair coloring agent is in the mixture or it's not in the mixture. [00:13:15] Speaker 01: And obviously, as the court pointed out, this is a preliminary determination by the PTAB on that issue. [00:13:22] Speaker 01: And we do think if you look at- I'm not understanding. [00:13:25] Speaker 03: What's the claim construction they gave? [00:13:27] Speaker 01: Your Honor, the claim construction, they did adopt the construction as a preliminary finding what was in the prosecution history, but the issue of indefiniteness... What does that mean? [00:13:38] Speaker 01: Sure, Your Honor. [00:13:39] Speaker 01: The construction that they found was the one that's in the file history. [00:13:42] Speaker 01: They said that's at 2325, that Olaplex is advancing here. [00:13:49] Speaker 03: Okay. [00:13:50] Speaker 01: And my point is, even under that construction, what the PTAF found in that order that I pointed you to, [00:13:57] Speaker 01: They said, whether or not a hair coloring agent is or is not in the mixture is a binary determination. [00:14:03] Speaker 01: And that's precisely correct. [00:14:05] Speaker 01: We think the district court did get this right on infringement from a plain and ordinary meaning construction. [00:14:10] Speaker 01: As your honors know, they had advanced two theories, plain and ordinary meaning and a lexicography-based construction. [00:14:18] Speaker 01: With respect to the plain and ordinary meaning, we think the district court did get it right. [00:14:22] Speaker 01: Because whether a colorant is or is not a hair coloring agent depends on the properties. [00:14:29] Speaker 01: And with respect to the... Depends on the properties? [00:14:32] Speaker 00: Depends on the properties. [00:14:33] Speaker 00: Does that include the property of the amount that's being used? [00:14:38] Speaker 01: Your Honor, in this case, I think there was enough evidence, I believe Your Honor's alluded to it earlier, that the Q's yellow, red, and blue dyes in the Q's products do color hair. [00:14:50] Speaker 00: And well, if you, you know, if you dump a gallon of it on my head, it would color even my hair. [00:14:56] Speaker 01: Sure. [00:14:56] Speaker 01: Your honor, but you don't need a gallon. [00:14:59] Speaker 01: Our point was the court. [00:15:00] Speaker 00: I thought there was some number in the record about. [00:15:03] Speaker 00: I don't know, like you have to multiply by 7,000 or some quite large number, not like two or three to get a concentrate, an amount that would actually color hair. [00:15:14] Speaker 01: Sure, Your Honor. [00:15:15] Speaker 01: And I think the number that you're thinking of is 5,000. [00:15:18] Speaker 01: It depended on the dye. [00:15:21] Speaker 01: But I think the issue here is [00:15:22] Speaker 01: We have to look at the claim language. [00:15:24] Speaker 01: I think it's just positive. [00:15:25] Speaker 01: If you look at the claim language. [00:15:26] Speaker 02: Isn't the issue here whether the yellow five, red four, the blue one, whether or not they are hair coloring agents and not necessarily whether they color hair? [00:15:40] Speaker 01: I believe, Your Honor, I would quibble just a bit, but I think I agree with you, and here's why. [00:15:46] Speaker 01: And this is the point that I was going to get to. [00:15:48] Speaker 01: If you look at the claim, the claim here says, [00:15:51] Speaker 01: You have a method of bleaching hair. [00:15:53] Speaker 01: You mix the first formulation with an active agent formulation. [00:15:58] Speaker 01: Then it has a negative limitation. [00:15:59] Speaker 01: It says, when the mixture does not contain a hair coloring agent, which precisely goes to your point, Judge Raina. [00:16:07] Speaker 01: What they want to do is they want to say, well, the accused products do not color hair. [00:16:12] Speaker 01: That's not the question. [00:16:13] Speaker 01: The question is whether the mixture [00:16:15] Speaker 01: includes a hair coloring agent, and it's undisputed it does. [00:16:19] Speaker 02: That's a chemistry issue, right? [00:16:22] Speaker 01: That's right, Your Honor. [00:16:22] Speaker 01: That's exactly right. [00:16:24] Speaker 01: And there is enough. [00:16:25] Speaker 00: I'm sorry. [00:16:25] Speaker 00: I think I understand what the difference between you is, which is exactly what your friend on the other side said it was. [00:16:35] Speaker 00: The very same composition can be a hair coloring agent or not, depending on how much of it you have when you put it on the hair. [00:16:46] Speaker 00: And your view is, one molecule of yellow 5 or 3 or whatever it is, is a hair coloring agent. [00:16:54] Speaker 00: If you put that on the hair, or even if it wouldn't color hair, if you put it on the hair of the one molecule, but if you had 50 million molecules, it would. [00:17:03] Speaker 00: That makes the one molecule in the composition a hair coloring agent. [00:17:08] Speaker 01: Your Honor, I think, again, you have to start with the claim language. [00:17:12] Speaker 01: Here it says, the claim language says, well, the mixture does not contain a hair coloring agent. [00:17:16] Speaker 01: And I think what's dispositive here is a testimony from their expert. [00:17:19] Speaker 01: And in fact, I think it applies to direct infringement. [00:17:22] Speaker 01: We asked Olaplex's expert, Dr. Borish, this is at A6817 of the appendix. [00:17:27] Speaker 01: We asked him, we said, Dr. Borish, if you had a semi-permanent hair coloring, hair colorant, which he even agrees would be a hair coloring agent in the context of the 419 patent. [00:17:38] Speaker 01: We asked him, we said, what if you changed the concentration of it? [00:17:42] Speaker 01: Would it still be a hair coloring agent or a hair colorant? [00:17:46] Speaker 01: his answer was yes. [00:17:47] Speaker 01: And I think that's fatal to their argument here, that the concentration doesn't matter. [00:17:52] Speaker 00: I'm not sure if it matters, but did he say if you change the concentration so that there was, I'll exaggerate here, one molecule? [00:18:00] Speaker 00: Your Honor, it never got to that point. [00:18:02] Speaker 00: Right, so you could change the concentration from [00:18:06] Speaker 00: changes it a lot, changes it a little bit. [00:18:08] Speaker 01: Your Honor, I think this goes back to Judge Reyna's point. [00:18:11] Speaker 01: Because these are, obviously these are well-known ingredients, right? [00:18:14] Speaker 01: Yellow, red, and blue dyes. [00:18:15] Speaker 01: We have submitted plenty of evidence in the record. [00:18:17] Speaker 01: If you look at our red brief 31, we cite plenty of evidence. [00:18:20] Speaker 01: Even their expert admits that these dyes do impart color, albeit he would say you need higher concentrations. [00:18:27] Speaker 01: I think our point is that when they, even their expert agreed that a semi-permanent colorant [00:18:33] Speaker 01: which, again, according to them, is a hair coloring agent. [00:18:37] Speaker 01: If you change the concentration, he didn't limit it in any way. [00:18:39] Speaker 01: He said it would be a hair coloring, regardless of the concentration. [00:18:43] Speaker 01: Again, that's at 860, 870. [00:18:46] Speaker 01: But even if you go past the direct infringement issue, the plain and ordinary meaning, I think they have a huge problem, Your Honor, which you were alluding to, under the lexicography-based construction. [00:18:56] Speaker 01: What happened here was, in their opening P.I. [00:18:59] Speaker 01: motion, [00:19:00] Speaker 01: They started with a plain and ordinary meaning construction. [00:19:04] Speaker 01: And then they switched to a lexicography-based construction in their reply brief. [00:19:11] Speaker 01: And if you look at it, you have to understand that what they're saying with their visual inspection requirement, what they want to inject into the claims. [00:19:19] Speaker 01: And I'll start by pointing out, even we asked Dr. Hawker, first of all, whether this definition that they're reporting in the file history that they presented, [00:19:30] Speaker 01: What did he think of that definition? [00:19:31] Speaker 01: He said it was not the best description. [00:19:33] Speaker 01: That's at A2189. [00:19:34] Speaker 01: The claims here, the specification, the prosecution history, other than their statements, there is no support, as Judge Robinson correctly found, that there is no support for the notion that you actually apply this method. [00:19:48] Speaker 01: And then you do some post-hoc determination to figure out if what you apply to the hair had a hair coloring agent or not. [00:19:57] Speaker 01: There's nothing in the specification. [00:19:59] Speaker 01: In fact, if you look at the claims, the claims include other agents. [00:20:02] Speaker 01: It includes a bleaching agent as part of the bleaching formulation. [00:20:05] Speaker 01: It includes an active agent. [00:20:07] Speaker 01: Nowhere in the claims or the specification do they say, well, you have to apply to determine if the bleach, for example, lightens the color of your hair. [00:20:15] Speaker 01: And then if you, so what they're left with are these self-serving prosecution statements that were made years, two years after the original filing of the original application. [00:20:26] Speaker 01: And I'll also point out in the gray brief at one, because I just want to make sure the court has this right, the date of their amendment is wrong. [00:20:33] Speaker 01: They said they made that amendment on March 31st. [00:20:35] Speaker 01: That's not correct. [00:20:36] Speaker 01: That amendment was made months later in an amendment in response to an office action. [00:20:44] Speaker 01: And this court certainly embraces lexicography-based constructions, but if they're not supported by the specification, this court has time and again held that can't be, that's not correct. [00:20:54] Speaker 01: So turning, and I'll just quickly address before I turn to the indefiniteness issue. [00:20:59] Speaker 01: turning to the extrinsic evidence, they like to point to our lab notebooks and say, look, well, L'Oreal did it. [00:21:07] Speaker 01: As Your Honor knows, from a claim construction perspective, it's black letter law that they cannot look at. [00:21:13] Speaker 03: I mean, surely we must be able to look at the prosecution history to interpret the claim language. [00:21:18] Speaker 01: Sure, Your Honor. [00:21:19] Speaker 01: I have no problem with that. [00:21:20] Speaker 01: But I think as soon as you start [00:21:22] Speaker 01: looking at, they'll want to look at our infringing evidence and say, look, oh, L'Oreal did a visual inspection, so it's fine. [00:21:28] Speaker 01: And that's where I think, let me actually get to the indefiniteness issue. [00:21:31] Speaker 03: But the claim language, if construed in light of the prosecution history, that prosecution history helps them, right? [00:21:42] Speaker 01: Your Honor, that's their position. [00:21:45] Speaker 01: Why doesn't it help them? [00:21:46] Speaker 01: Let me explain why, Your Honor. [00:21:50] Speaker 01: Would you like me to point? [00:21:51] Speaker 01: What page are we talking about in the prosecution? [00:21:53] Speaker 01: So we're talking about 2325, Your Honor. [00:21:56] Speaker 01: Which volume is that? [00:21:58] Speaker 01: It's volume one. [00:21:59] Speaker 01: Volume one. [00:22:11] Speaker 01: But what page again? [00:22:13] Speaker 01: Your Honor, 2325. [00:22:20] Speaker 01: So it's right in the middle. [00:22:23] Speaker 01: You can see that. [00:22:24] Speaker 01: It says the term hair coloring agent refers to a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair as it is applied to based on visual inspection. [00:22:35] Speaker 00: In contrast to agents that color the product but not the hair. [00:22:39] Speaker 01: Sure. [00:22:40] Speaker 01: And then they go on and make that statement. [00:22:41] Speaker 01: And as Judge Toronto, that's the statement that they like to point to. [00:22:47] Speaker 01: And the district court certainly had all of this before it and still rejected it. [00:22:51] Speaker 01: And we think it was right. [00:22:53] Speaker 01: It was the right conclusion on plain and ordinary meaning and the lexicography-based theory. [00:22:57] Speaker 01: And let me explain why. [00:22:59] Speaker 01: So Judge Dyke, these statements in terms of the visual inspection, the requirement, what they want you to do is they want you to perform the method. [00:23:06] Speaker 01: and then do some sort of visual inspection after some undetermined amount of time, under some unspecified conditions, and determine whether the hair coloring agent is a hair coloring agent or not. [00:23:17] Speaker 01: And this gets to the indefiniteness issue that Judge Tronto, you were pointing to. [00:23:21] Speaker 01: What that does here is, if you look at the testimony, we asked Dr. Borish, their expert, and that's at appendix. [00:23:30] Speaker 01: Wait, wait, wait. [00:23:31] Speaker 03: Forget about the testimony. [00:23:33] Speaker 03: Stick with the... Sure, Your Honor. [00:23:34] Speaker 03: to the prosecution history here. [00:23:37] Speaker 03: Doesn't this help them in terms of their claim interpretation? [00:23:41] Speaker 01: Your Honor, again, they want to point to this claim construction and say, this is it. [00:23:45] Speaker 01: This is a claim construction. [00:23:46] Speaker 01: And as I pointed out, Your Honor, certainly parties feel they can use lexicography-based definitions in their prosecution history. [00:23:56] Speaker 03: But what I want you to do is tell me why this doesn't help them. [00:23:59] Speaker 03: Why does this help you as opposed to them? [00:24:01] Speaker 01: OK, sure, Your Honor. [00:24:02] Speaker 01: So if we look at this construction, and as Judge Robinson applied it, it says the term hair coloring agent refers to a colorant or pigment that is customarily used in hair care products, which changes the color or tone of the hair as it is applied based on visual inspection. [00:24:17] Speaker 01: So if we stick with that definition, if you look at our hair colorants, they are customarily used in hair care products. [00:24:23] Speaker 01: And if you look at the definition, the plain meaning of this definition, it says, [00:24:27] Speaker 01: It's a hair coloring agent. [00:24:28] Speaker 01: It refers to a color and a pigment. [00:24:30] Speaker 01: That is customarily used. [00:24:31] Speaker 01: So in our view, that's required, that it has to be customarily used in hair care products, which is the case here. [00:24:39] Speaker 01: Then it says, which changes the color or tone of the hair, it is applied to based on visual inspection. [00:24:44] Speaker 01: And what Judge Robinson did in this case, when she was applying the plain and ordinary meaning of that phrase, she said, if I look at these dyes, the yellow, red, and blue dyes, in the accused products, [00:24:55] Speaker 01: it's undisputed that they do color hair. [00:24:57] Speaker 01: They have the properties of coloring hair, Judge Reyna, going back to your point. [00:25:00] Speaker 01: And that's why she agreed with us that there could be no infringement even under the... If it's customarily used to color, then it's a hair coloring agent. [00:25:10] Speaker 01: That's what those words say, Your Honor. [00:25:15] Speaker 01: And also, again, Your Honor, you have to look at the claim. [00:25:17] Speaker 03: Even if it's not used that way in the prop. [00:25:20] Speaker 01: Your Honor, again, I think you have to look at the claim. [00:25:23] Speaker 01: So if you look at 2321 Dieck, which is right next to the page you're looking at, it actually has the claim there. [00:25:30] Speaker 01: So if you look at the claim, it says, wherein the mixture does not contain a hair coloring agent. [00:25:36] Speaker 01: So what they want to do is they want to say you apply the mixture to the head and then determine whether something is a hair coloring agent or not. [00:25:44] Speaker 01: But that's not what the claim requires. [00:25:46] Speaker 01: It requires a hair coloring agent. [00:25:47] Speaker 03: What they're saying is it has to be in concentrations that would color, customarily color hair. [00:25:53] Speaker 01: But, Your Honor, that's not supported by their specification at all. [00:25:56] Speaker 01: The specification only recites hair coloring agent once, and it either excludes it or includes it. [00:26:02] Speaker 01: It does not give you any concentration, and I'll give you the site. [00:26:05] Speaker 01: It's A76 of the appendix. [00:26:07] Speaker 01: And I think the fundamental point here is that the claim is rendered indefinite if you go with their lexicography-based construction. [00:26:14] Speaker 01: If I could just give you one example. [00:26:17] Speaker 01: Their expert said, well, whether or not something is a coloring agent, if you wash it, if it washes out after one wash, it's not a hair coloring agent. [00:26:25] Speaker 01: And that's at A180, paragraph 39. [00:26:30] Speaker 01: And then I'll also point the court to A6812, their expert. [00:26:33] Speaker 01: We asked him about this washing requirement. [00:26:34] Speaker 01: We said, well, OK, what if after two washes, [00:26:37] Speaker 01: if it washes out. [00:26:39] Speaker 01: What if it's three washes? [00:26:41] Speaker 01: And you could tell he had trouble answering those hypotheticals. [00:26:44] Speaker 01: So the bottom line here is that the same concentration of hair colorant may be a hair coloring agent in one instance, but not in the other. [00:26:51] Speaker 01: For example, for damaged hair versus undamaged hair. [00:26:53] Speaker 01: We think this is a classic case where they failed to inform with reasonable certainty those killed in the yard about the scope of the claim. [00:27:01] Speaker 01: And unless the court has any questions, I see my time's up. [00:27:05] Speaker 03: OK. [00:27:06] Speaker 03: Thank you, Mr. Nari. [00:27:07] Speaker 01: Thank you. [00:27:16] Speaker 04: So we just heard from my adversary that the specification provides no support for the prosecution history. [00:27:21] Speaker 04: That's incorrect. [00:27:22] Speaker 04: Appendix page 76, column 11, makes a very important distinction between a quote die unquote and a quote hair coloring agent unquote. [00:27:33] Speaker 04: Those are two different things. [00:27:34] Speaker 04: And how do we know which it is? [00:27:37] Speaker 04: We know based on the concentration. [00:27:38] Speaker 00: So we actually see... Is he right that the specification does not talk about concentrations? [00:27:46] Speaker 00: at least as to those terms. [00:27:47] Speaker 00: It must as to the others, right? [00:27:49] Speaker 00: Isn't there some claim element about that? [00:27:50] Speaker 04: Well, let me, yes, Judge Sharonto, that is correct. [00:27:53] Speaker 04: Active agent is actually defined in terms of a numerical concentration. [00:27:57] Speaker 04: Hair coloring agent, there's no numerical requirement associated with it. [00:28:01] Speaker 04: It's our submission that you have to do this visual inspection test, which does not involve applying it, then washing it, and then looking. [00:28:10] Speaker 04: You apply it once, and then you look. [00:28:12] Speaker 02: No washing. [00:28:13] Speaker 02: Regardless of how that visual [00:28:14] Speaker 02: inspection comes out, that doesn't answer the question as to whether there's a hair coloring agent or not in the formulation. [00:28:23] Speaker 02: There can be a hair coloring agent in the formulation, and yet not affect the hair, because there's not enough there, it's not concentrated enough. [00:28:33] Speaker 04: We respectfully disagree. [00:28:34] Speaker 04: We think the patent, again, page 76 in the specification, column 11. [00:28:38] Speaker 02: It kind of reminds me, I was thinking of a hot air balloon. [00:28:42] Speaker 02: and approaching a hot air balloon, and you see the flares of the fire going up. [00:28:46] Speaker 02: And someone says to another, there must be a lot of hot air inside that balloon. [00:28:52] Speaker 02: And the other guy says, no, there's not, because the balloons are not flying. [00:28:57] Speaker 02: And so here, there can be an agent in the formulation. [00:29:02] Speaker 02: It doesn't have to color the hair. [00:29:04] Speaker 02: It doesn't have to fly in order for the agent to be in the formulation or not. [00:29:10] Speaker 04: I respectfully disagree, Judge Rannell. [00:29:12] Speaker 04: Let me try to explain why. [00:29:13] Speaker 04: If it were present in a low concentration, not sufficient to color the hair, it would be, as the patent calls it, a dye. [00:29:21] Speaker 04: It would not rise to the level of a hair coloring agent. [00:29:23] Speaker 04: And the patent, maybe in the abstract, in the hot air balloon example, I absolutely understand the point. [00:29:29] Speaker 04: But in the context of this patent, it's making a distinction between a dye and a hair coloring agent. [00:29:34] Speaker 04: And in that same column, it refers to these sorts of ingredients, dyes, hair coloring agents, [00:29:40] Speaker 04: according to their form of use or function. [00:29:43] Speaker 04: And function requires looking at what they do, not just whether they're present. [00:29:48] Speaker 04: And I want to emphasize here, we're not really talking about a gray area. [00:29:51] Speaker 04: I mean, these dyes, and I'm going to call them dyes because I think they are in this product, these are ubiquitous in all sorts of shampoos and conditioners that you could buy at the drugstore. [00:30:01] Speaker 04: No one understands them to color hair. [00:30:03] Speaker 04: They don't color hair. [00:30:05] Speaker 04: In a very extreme large concentration, they could color hair. [00:30:09] Speaker 04: That's not what we're talking about. [00:30:10] Speaker 04: And in fact, it would be antithetical to the function of the Olapix product or the L'Oreal product for it to contain something that colored hair. [00:30:18] Speaker 04: These products are designed to be versatile, to protect hair, whether it's in a bleaching treatment or some other context, including just applying the product itself. [00:30:26] Speaker 04: If one had a real hair coloring agent in this, it would really alter whether the product could work in a bleaching formulation, which is the claimed process, right? [00:30:36] Speaker 04: Because bleaching removes color from hair. [00:30:38] Speaker 04: And if you had a coloring agent that really was a coloring agent in this product, it would sort of counteract what your goal is, which is to remove color. [00:30:47] Speaker 04: Instead, you'd be adding color. [00:30:48] Speaker 04: So function, which this court has considered in this sort of situation in cases like Med-Rad site and in our briefs, is a very important point. [00:30:57] Speaker 04: I'd like to briefly address the question of the Borish declaration. [00:31:02] Speaker 04: In fact, Borish made the exact point about concentration. [00:31:04] Speaker 04: This is at page 6817. [00:31:06] Speaker 04: page 90 of the deposition, lines 19 to 25. [00:31:11] Speaker 04: He talks about concentrations, manipulating the conditions, comparing apples to oranges. [00:31:16] Speaker 04: He did not concede anything like the L'Oreal interpretation. [00:31:24] Speaker 04: The prosecution history was not self-serving. [00:31:26] Speaker 04: It was a very important moment in the prosecution history when the word hair coloring agent was added to the patent for the first time. [00:31:33] Speaker 04: As I've explained... We're out of time. [00:31:36] Speaker 03: Thank you, Your Honor. [00:31:37] Speaker 03: Okay. [00:31:37] Speaker 03: Thanks both counsel. [00:31:38] Speaker 03: The case is subbed.