[00:00:00] Speaker 00:
The first case for argument this morning is 22-1410, Pacific Biosciences versus Personal Genomics.

[00:00:08] Speaker 00:
Mr. Rhonis, good morning.

[00:00:11] Speaker 02:
Thank you, Your Honor, and may it please the Court.

[00:00:14] Speaker 02:
Ed Rhonis on behalf of PacBio.

[00:00:17] Speaker 02:
The PTAB committed error by upholding the validity of claims of the 441 patent over Hasibi based only on an overly narrow claim construction of the preamble term identified.

[00:00:31] Speaker 02:
The PTAB conflated the word identifying a single biomolecule with detecting a single biomolecule.

[00:00:39] Speaker 02:
And that's important, both at a linguistic level and a technological level.

[00:00:43] Speaker 02:
First, starting with the technology, there's two ways that you can identify a biomolecule.

[00:00:48] Speaker 02:
And claims 16 and on are about sequencing.

[00:00:52] Speaker 02:
This is primarily about sequencing.

[00:00:54] Speaker 02:
And so there, you would think of identifying the sequence is the way to think about it.

[00:00:59] Speaker 02:
And there's two ways to do that.

[00:01:00] Speaker 02:
One is you could detect one molecule and see what its base letters are, using sequencing as the example.

[00:01:08] Speaker 02:
And another way to do it is to take an original biomolecule, amplify it till you have a larger community, get a stronger signal out of it, and then use that as the way.

[00:01:21] Speaker 02:
And the patent explains, the patent's invention, innovation at least claimed, is the compactness

[00:01:26] Speaker 02:
of having a detector that's extremely proximate to the nucleic acids.

[00:01:31] Speaker 02:
And in that instance, the patent makes clear that it can be used, this technique can be used, both with what we call the ensemble approach, which is where you take an original biomolecule and you amplify it, copy it, or with the single molecule.

[00:01:46] Speaker 02:
Now, clearly the single molecule is the preferred embodiment.

[00:01:50] Speaker 00:
But the claim starts an apparatus for identifying a single biomolecule, right?

[00:01:55] Speaker 02:
Correct.

[00:01:56] Speaker 02:
And the point there is that identifying is finding out what that biomolecule, you start with the single strand, what its letters are.

[00:02:04] Speaker 02:
And then you can do that by copying it so that you have 10 that are all the same and getting the signal from there.

[00:02:12] Speaker 02:
So the patents use both identifying and detecting elsewhere in the claim set.

[00:02:17] Speaker 02:
And they need to be treated, should be treated differently, and are treated in the art is differently.

[00:02:22] Speaker 01:
I don't remember.

[00:02:23] Speaker 01:
Is the word detecting ever used in conjunction with the word single?

[00:02:29] Speaker 02:
No.

[00:02:29] Speaker 02:
No, it is not.

[00:02:32] Speaker 01:
I mean, I guess it seemed to me that the word single is what is doing quite a lot of work in the relevant claim language, making it pretty natural to think that identifying a single molecule means when you have a single molecule in front of you, you're identifying its character just from that.

[00:02:56] Speaker 02:
OK.

[00:02:56] Speaker 02:
And that's referring to detecting.

[00:02:58] Speaker 02:
And I think the concept of single is... I'm sorry.

[00:03:01] Speaker 01:
I didn't understand what you just said.

[00:03:03] Speaker 01:
And that's referring to detecting.

[00:03:04] Speaker 01:
I was talking about identifying.

[00:03:06] Speaker 02:
Right.

[00:03:07] Speaker 02:
And then you said, and then you determine that by only looking at that original single one.

[00:03:12] Speaker 02:
And I was saying that's detecting.

[00:03:15] Speaker 02:
in the art and how that's treated.

[00:03:17] Speaker 02:
But it's a good question.

[00:03:18] Speaker 02:
And why is single there?

[00:03:19] Speaker 02:
And the reason single there is that the main teaching is to have these compact detectors on a silicon chip, is the basic idea, and have thousands of them.

[00:03:29] Speaker 02:
I mean, I think they speak maybe even more than thousands of them.

[00:03:32] Speaker 02:
And then in each place, you do one sequence, that's as an exemplary, one sequence in each place.

[00:03:39] Speaker 02:
And so it's saying you take, you look at one.

[00:03:41] Speaker 02:
The other way to do that is you could have

[00:03:44] Speaker 02:
all kinds of heterogeneous sequences on a field and do probes and do it another way.

[00:03:51] Speaker 02:
So the point of single is you're breaking it up into all these little places.

[00:03:55] Speaker 02:
We have these, you know, extremely tight limits, fields of vision between, okay?

[00:04:02] Speaker 02:
But the point is that I think really brings it home is that the claim set, which has to be read together as everyone knows,

[00:04:11] Speaker 02:
makes clear that the patent is claiming the use of what I'm calling ensemble sequencing, which is just another way to say this kind of detection of the original with its copies to strengthen signal.

[00:04:25] Speaker 02:
And that's actually conceded.

[00:04:28] Speaker 02:
The board said so at 18 and 19.

[00:04:32] Speaker 02:
But importantly, in the principal brief of PGI, they say the board's construction already covers

[00:04:41] Speaker 02:
detection of a signal source from multiple molecules, and already encompasses detection of signal from multiple molecules.

[00:04:49] Speaker 02:
This is on page 45 of their brief.

[00:04:52] Speaker 02:
PGI recognized the board has said that claims 26 and 30 cover exactly what, Your Honor, Judge Rhonda, you posited might not be something that's worth covering here because of the word single.

[00:05:07] Speaker 02:
And so we have the claim set covering it.

[00:05:11] Speaker 02:
So it can't be something that's excluded by the specification or by the principle of the invention, because it's claimed.

[00:05:20] Speaker 02:
And again, you could look at the top of page 19 of the PTab decision, or you can reference the acquiescence of PGI, that that's in fact what the board did.

[00:05:31] Speaker 02:
They try to take the wind out of our sails by saying, look, you're accusing the board of not covering ensemble sequencing.

[00:05:39] Speaker 02:
But they did say it.

[00:05:40] Speaker 02:
They acknowledged that it covers insoluble sequencing in 26 and 30.

[00:05:47] Speaker 01:
Is there something odd about a dependent claim saying, or independent claim says, you have to be able to do it with a single molecule and nothing more in the field of vision?

[00:06:00] Speaker 01:
In addition, you have to be able to do it with a amplified

[00:06:06] Speaker 02:
It's a great question, and it's really putting your finger on the issue that's on appeal, right?

[00:06:11] Speaker 02:
I mean, that's why it's a disputed issue that's an appellate argument.

[00:06:15] Speaker 02:
And I think the answer to that is the fact that the claims contemplate its use, even if you accept this capability point.

[00:06:25] Speaker 02:
Just accept that your assumption.

[00:06:31] Speaker 02:
It can't be that the broad term identifying, which goes to identifying what the molecule is, i.e.

[00:06:37] Speaker 02:
what it sequences, is read narrowly to mean essentially detecting because it's been eschewed by the patent.

[00:06:51] Speaker 02:
But the patent tells you that you can use the invention with ensemble sequencing.

[00:06:55] Speaker 02:
If the patent is saying you can get the benefits of the innovation

[00:07:00] Speaker 02:
via ensemble sequencing, even if it's alternative, even if you jerry-rig some capable apparatus, but you can go do it and it's claimed.

[00:07:11] Speaker 02:
If you take our apparatus and you use it for ensemble sequencing, you're infringing.

[00:07:17] Speaker 02:
It can't be that we're taking the term identifying and conflating it from its natural use, which would encompass detecting either via a single detection or taking the original single molecule and amplifying it.

[00:07:34] Speaker 01:
But the way that the method claimed, which ones?

[00:07:38] Speaker 01:
It was 26 and?

[00:07:39] Speaker 02:
26 or 30 both have this concept of ensembles.

[00:07:41] Speaker 01:
Those are methods, but they would require in order to infringe

[00:07:47] Speaker 01:
using, under, I think, the board's view, using an apparatus that could be used with only one molecule in the field division, but using it for doing the identification with a large group?

[00:08:05] Speaker 02:
Right.

[00:08:06] Speaker 02:
Yes.

[00:08:08] Speaker 02:
It's a little confused, but let's simplify it out and say that's what they said.

[00:08:15] Speaker 02:
I think the important point there is

[00:08:17] Speaker 02:
If they're telling you you can use the innovation, that is their small field with lots of cells, with ensemble sequencing, it can't be that it's been disclaimed, or it can't be that we should be limiting it to the preferred embodiment.

[00:08:35] Speaker 02:
Because they're saying that the innovation can be used with that, even in an alternative mode.

[00:08:40] Speaker 02:
I hope you understand that.

[00:08:41] Speaker 02:
So the point being, even this idea of capability

[00:08:46] Speaker 02:
is improper.

[00:08:47] Speaker 02:
And I do want to tackle that assumption.

[00:08:50] Speaker 02:
There's nothing in claim one that tells you that you have to use single molecule detection as compared to single molecule identification.

[00:08:59] Speaker 02:
And the patent also, let's keep in mind, in the sequencing modality section, which is column 13 on the top, the first thing they give you is actually claim column 12 at 35.

[00:09:14] Speaker 02:
The first thing is ensemble sequencing.

[00:09:18] Speaker 02:
Shendor in the 249 patent.

[00:09:20] Speaker 02:
The first thing, and this is what the board says on A19, sequencing modalities are mentioned that may be used with the claim apparatus of the 4441 patent and which involve the detection signal from multiple molecules of the same species.

[00:09:37] Speaker 02:
In the description of the invention, it says, you can use our invention with these modalities, which there's three of them that are undisputedly ensemble sequencing.

[00:09:50] Speaker 02:
To Judge Post's question, you're identifying just one single sequence, but they're doing it by taking the original sequence and then amplifying it and then using the greater signal that you get for amplification to detect that single mode and do that identification.

[00:10:08] Speaker 02:
I just think that there's conflating identification detection.

[00:10:12] Speaker 02:
It doesn't make sense when the PTAB itself is saying the claims encompass this multiple molecule detection process.

[00:10:22] Speaker 00:
And claim 26, that wasn't in the prior art?

[00:10:28] Speaker 02:
Well, we believe it's all in the prior art, but not with the innovation that they're really putting.

[00:10:33] Speaker 00:
In and of itself, the way you're reading.

[00:10:34] Speaker 00:
it wasn't covered by the prior act.

[00:10:37] Speaker 02:
We would say it's all covered by the prior act.

[00:10:39] Speaker 02:
But what they're saying the innovation is, if you read the patent and you accept the other side, the only thing that they really could identify is the distance between the nucleic acid and the detector.

[00:10:51] Speaker 02:
These claims are rather short, and they just speak of space apart from the light detector by a distance of less than equal to 100 micrometers.

[00:11:00] Speaker 02:
So just have really close proximity.

[00:11:03] Speaker 02:
That's the key here.

[00:11:05] Speaker 02:
according to them.

[00:11:06] Speaker 02:
I do want to clarify one thing.

[00:11:08] Speaker 02:
Claim 30 does say detecting the biomolecule on the apparatus, because you asked me if there's any that say single.

[00:11:16] Speaker 02:
And it doesn't say single, but it uses singular.

[00:11:18] Speaker 02:
So just to be fair to your question, and I do want to address this.

[00:11:24] Speaker 02:
Claim 30 says you detect a biomolecule.

[00:11:28] Speaker 02:
And then it says affixing one or more biomolecule.

[00:11:31] Speaker 02:
I think it's not

[00:11:32] Speaker 02:
a mistake that it's singular there, because it's saying that it's copies.

[00:11:36] Speaker 01:
So when it's speaking of biomolecules, it's talking about the sequence, if we're talking about sequencing, which I believe... I don't remember whether there was discussion of this in the brief or before the board, but we have these cases where we start with...

[00:11:50] Speaker 01:
If you want to know what the means, you look back what the antecedent was and hear the antecedent basis.

[00:11:56] Speaker 01:
I think it maybe comes out the same thing, either A biomolecule, which, as you know, ordinarily means one or more.

[00:12:04] Speaker 01:
And then you get the one or more in the first clause.

[00:12:07] Speaker 01:
Does that matter?

[00:12:09] Speaker 02:
I think what matters the most is N detecting the biomolecule on the apparatus, which is the last phrase of Claim 30.

[00:12:17] Speaker 02:
And it's probably small type there, and I apologize.

[00:12:19] Speaker 02:
But it says, affecting one or more biomolecule, because they're all the same, because they're copies, and detecting the biomolecule on the apparatus.

[00:12:31] Speaker 02:
And so it's speaking singular there, because even though there's more than one, when it uses the term biomolecule for identifying a single biomolecule, it's talking about a type, i.e.

[00:12:43] Speaker 02:
A, C, T, G, F, whatever it is.

[00:12:46] Speaker 02:
So I see I'm into my time.

[00:12:48] Speaker 02:
I do obviously want to respond, but I'd love to.

[00:12:51] Speaker 00:
uh... take questions i think this is uh... it's been over review the clinton churches just wrong it's conflating identifying detecting and detecting can be done two ways that's my quick follow-up on thirty with pervades a lot of the analysis we've done is the capable of what you refer right the answer to you arguably is that well claim one only says capable of which means that there's not an inconsistency between that seems to be p

[00:13:20] Speaker 02:
I'm not sure that gets them all the way, but the point... What's your response to that?

[00:13:26] Speaker 02:
There's two responses.

[00:13:27] Speaker 02:
The first one is the fact that they say, even if they say it has to be capable of single molecule detection, the fact that they say it can also use multiple molecule detection, which is conceded in their briefing and it's on page A19, makes the point.

[00:13:42] Speaker 02:
You can't be narrowing identification unduly

[00:13:46] Speaker 02:
because of the theory that preferred embodiment is single molecule detection if it's actually being embraced by a claim even as an alternative.

[00:13:55] Speaker 02:
But the second thing is there's nothing in claim one that mandates the capability of single molecule detection.

[00:14:02] Speaker 02:
This is critical.

[00:14:04] Speaker 02:
All that the board relied on was the phrase identifying a single biomolecule.

[00:14:10] Speaker 02:
That's all they relied on.

[00:14:12] Speaker 02:
So this idea that it's got to be limited to the capability of single molecule detection means that you're saying identifying is detecting.

[00:14:19] Speaker 02:
It's not, especially not in this art.

[00:14:22] Speaker 02:
And also, if the apparatus is for identifying the result is a single biomolecule where you identify it like a sequence, the fact that claims 26 and 30 are narrower tells you that they have to be ways of identifying a biomolecule.

[00:14:39] Speaker 02:
And yet, they're unquestionably directed at ensemble sequencing.

[00:14:44] Speaker 02:
OK.

[00:14:44] Speaker 02:
Right?

[00:14:44] Speaker 02:
Thank you.

[00:14:45] Speaker 00:
Thank you for the question.

[00:14:46] Speaker 00:
Let's open the other side.

[00:14:51] Speaker 00:
Mr. Orso, good morning.

[00:14:52] Speaker 03:
Good morning, Your Honor.

[00:14:55] Speaker 03:
And may it please the court.

[00:14:56] Speaker 03:
I'd like to start by responding to the argument by counsel.

[00:15:01] Speaker 03:
And then I'd like to speak specifically to some of the issues in the 1163 IPR.

[00:15:07] Speaker 03:
First, the board's construction does not limit how a single biomolecule is to be identified.

[00:15:14] Speaker 03:
Claim one is an apparatus claim, not a method claim.

[00:15:19] Speaker 03:
And the board's construction simply, as we've said, specifies a capability for that apparatus.

[00:15:25] Speaker 03:
In fact, the board expressly noted at appendix 87

[00:15:29] Speaker 03:
that an apparatus for identifying a single biomolecule may also identify multiple molecules.

[00:15:36] Speaker 00:
And the 26 or 30 method claims, right?

[00:15:39] Speaker 03:
That's right, Your Honor.

[00:15:41] Speaker 03:
And identifying multiple molecules is exactly what an apparatus does when it's used with the ensemble approach.

[00:15:47] Speaker 03:
It identifies multiple molecules in an ensemble.

[00:15:50] Speaker 03:
Nowhere does the patent describe

[00:15:52] Speaker 03:
the ensemble approach as identifying a single biomolecule.

[00:15:57] Speaker 03:
And there's no evidence that the ensemble approach was understood in the art as a way of identifying a single biomolecule.

[00:16:06] Speaker 03:
The 441 patent does describe ways of identifying a single biomolecule.

[00:16:11] Speaker 03:
They include base extension sequencing, continuous sequencing, ligase-based sequencing.

[00:16:18] Speaker 03:
The board's construction doesn't limit the claims to any of those methods.

[00:16:24] Speaker 01:
Second, the board's construction does not... I just want to clarify something and maybe it's a light or a mere language matter as opposed to a substantive.

[00:16:34] Speaker 01:
If you do the amplification and create tens of thousands of copies all hanging around together and if the amplification is

[00:16:45] Speaker 01:
enough error-free, wouldn't you be identifying each one of the tens of thousands when you identify all of them by getting very bright blue or something to tell you what the basis of, again by assumption, error-free copies?

[00:17:05] Speaker 03:
You're identifying the ensemble in that situation, and it may actually

[00:17:10] Speaker 03:
end up being the case.

[00:17:11] Speaker 01:
Isn't identifying a group of 10,000 identical molecules, in fact, identifying each one of the 10,000?

[00:17:19] Speaker 03:
I don't think it is, Your Honor.

[00:17:20] Speaker 03:
I think identifying the ensemble is fundamentally different than identifying any individual molecule.

[00:17:27] Speaker 03:
And your point about the fact that it's error-free is important, right, because of that issue of... Of the fact, just assumption in my question.

[00:17:33] Speaker 01:
I assume, in fact, that in the real world, it's not entirely error-free, and maybe even the patent talks about that.

[00:17:39] Speaker 03:
Right, so what you're actually identifying is whatever the dominant species is in the ensemble.

[00:17:44] Speaker 03:
But you're identifying the ensemble in that situation.

[00:17:47] Speaker 03:
You're not identifying any individual molecule.

[00:17:50] Speaker 03:
And if you started with an individual molecule, that may not be in the ensemble.

[00:17:55] Speaker 03:
So secondly, let me say, the board did not conflate identifying.

[00:18:01] Speaker 01:
Does your argument or the board's construction depend on accepting the view that you just articulated?

[00:18:07] Speaker 01:
I'm not sure.

[00:18:08] Speaker 01:
The way I'd been thinking about it, it doesn't depend on that.

[00:18:12] Speaker 03:
I don't think, no, I don't think it depends on that.

[00:18:15] Speaker 03:
Um, but I think that that is how I view it.

[00:18:18] Speaker ?:
Yeah.

[00:18:18] Speaker 03:
Okay.

[00:18:18] Speaker 03:
The board did not conflate identifying with detecting.

[00:18:23] Speaker 03:
It simply resolved the party's dispute about the meaning of the preamble using the very framing that PacBio put forth in the petition.

[00:18:31] Speaker 03:
So in the petition, PacBio stated that the question was whether the apparatus

[00:18:36] Speaker 03:
must be capable of detecting quote, a signal from only one molecule or merely quote, a signal arising from multiple molecules.

[00:18:44] Speaker 03:
That was PacBio's framing.

[00:18:46] Speaker 03:
And so the board simply resolved the dispute in terms of the framing that PacBio identified.

[00:18:52] Speaker 03:
And in any event,

[00:18:53] Speaker 03:
the 441 patent makes clear that it's describing apparatuses that identify molecules by detecting them.

[00:19:02] Speaker 03:
And in fact, in the claims, you see the claims require a light detector.

[00:19:06] Speaker 03:
And so the board didn't conflate identifying and detecting by construing an apparatus for identifying a single biomolecule according to what the apparatus is capable of identifying, of detecting signals from.

[00:19:25] Speaker 03:
Third, the board's construction does not exclude any disclosed embodiments and is not inconsistent with claims 26 and 30.

[00:19:35] Speaker 03:
As counsel noted, PACBIO's position is that the patent discloses embodiments using the ensemble approach and that claims 26 and 30 either require or describe the ensemble approach.

[00:19:50] Speaker 03:
PGI disagrees with that reading of the specification and the reading of the claims.

[00:19:54] Speaker 03:
We did not concede that.

[00:19:55] Speaker 03:
If you look at the portion of the brief that council mentioned, you will find that we did not concede that.

[00:20:05] Speaker 03:
It doesn't matter though, in the end, because even if PacBio is correct, as the court has acknowledged earlier, there would be no inconsistency between the board's construction of claim one

[00:20:16] Speaker 03:
and those dependent method claims, because the board's construction does not preclude using the apparatus of claim one to detect an ensemble of biomolecules.

[00:20:27] Speaker 03:
The board's construction certainly doesn't require the claimed apparatus to be incapable of detecting a signal from an ensemble of biomolecules.

[00:20:40] Speaker 03:
If there are no further questions on that, I'd like to turn to the 1163 IPR.

[00:20:46] Speaker 03:
The board erred in concluding that each of Xiaomain and Weispuk discloses an apparatus capable of detecting a signal associated with a single biomolecule.

[00:20:58] Speaker 03:
PacBio concedes that Xiaomain discloses an apparatus for identifying ensembles.

[00:21:04] Speaker 03:
You can see that, for example, in the yellow brief, page 27.

[00:21:08] Speaker 03:
The only evidence that PacBio contends is substantial evidence that Charmaine discloses a single molecule detection is the two sentence excerpt about figure eight from Charmaine.

[00:21:20] Speaker 03:
That excerpt contains no mention of biomolecules, let alone a single biomolecule, and PacBio made no attempt to establish the stringent standards of inherency had been met.

[00:21:32] Speaker 03:
PacBio argues that the excerpt discloses single molecule detection in each opening 50 of figure eight.

[00:21:41] Speaker 03:
But according to PacBio's own expert, none of those openings contains a single biomolecule to be identified.

[00:21:47] Speaker 01:
Can you go back to your first one?

[00:21:49] Speaker 01:
We're looking here at the bottom of appendix page 55, 51, right?

[00:21:54] Speaker 01:
55.

[00:22:01] Speaker 01:
Base 16 of Charmin.

[00:22:03] Speaker 01:
Bottom.

[00:22:06] Speaker 01:
Yes.

[00:22:07] Speaker 01:
These openings delimit very small observation volumes, for example, with a diameter of 150 nanometers, for the detection and observation of individual chromophores in solutions with high concentration.

[00:22:21] Speaker 01:
Is that, that's the, that word individual is, am I remembering right?

[00:22:25] Speaker 03:
It does, it does say individual.

[00:22:26] Speaker 01:
The most important thing that a board

[00:22:29] Speaker 01:
uses for this the board was focused on right so I before you started getting into you know your second point about this you said something about

[00:22:44] Speaker 01:
no inherency and biomolecules.

[00:22:47] Speaker 01:
And can you both say that again?

[00:22:51] Speaker 01:
And remind me if you mentioned this point in your red brief and to the board.

[00:22:59] Speaker 03:
Yes, we do mention that point.

[00:23:01] Speaker 01:
Your Honor, did you mention this point to the board?

[00:23:05] Speaker 01:
I believe we did.

[00:23:05] Speaker 01:
That this might be identifying chromophores that are not biomolecules?

[00:23:11] Speaker 03:
I believe we did, yes, Your Honor.

[00:23:12] Speaker 03:
This paragraph that we have at the bottom of appendix in a bio in a biosensor.

[00:23:17] Speaker 01:
Sorry.

[00:23:18] Speaker 01:
This is a biosensor.

[00:23:19] Speaker 03:
Yes, sir Yes, your honor.

[00:23:21] Speaker 03:
Okay this paragraph at the bottom of appendix five five five one Contains no mention of biomolecules at all now they're welcome to try to establish that there is inherent disclosure of a biomolecule in connection with this paragraph, but they didn't make

[00:23:41] Speaker 03:
any effort to do that.

[00:23:42] Speaker 03:
And so that's the point I was making just a moment ago.

[00:23:45] Speaker 01:
Did the board say something about this point?

[00:23:47] Speaker 03:
The board conclusively said, Dr. Nykirk, their expert, says there's a biomolecule there, so therefore there's a biomolecule there.

[00:23:56] Speaker 03:
I'm paraphrasing.

[00:23:58] Speaker 03:
OK, go ahead.

[00:24:01] Speaker 03:
So according to PacBio's own expert, none of these openings 50 in figure eight actually contains a single biomolecule to be identified.

[00:24:10] Speaker 03:
Rather, each of the openings contains more than one biomolecule to be identified.

[00:24:16] Speaker 03:
And that's consistent

[00:24:18] Speaker 03:
with PacBio's acknowledgement that the apparatus of figure eight is made by spotting probes into zones, where in the words of PacBio's own expert, quote, each zone contains probes specific for a particular molecular species.

[00:24:33] Speaker 03:
The idea being to affix multiple instances of the target species so as to detect a signal from that particular species.

[00:24:43] Speaker 03:
That's appendix 5362.

[00:24:49] Speaker 03:
Also, interpreting that two-sentence excerpt from Figure 8, the way PacBio urges, is inconsistent with other parts of Xiaomeng.

[00:24:58] Speaker 03:
Xiaomeng discloses that its biosensors have a sensitivity of 1 chromophore per micron squared.

[00:25:05] Speaker 03:
And Xiaomeng discloses that its photodetectors have unit dimensions on the order of 10 microns, which works out to an area of 78 microns squared.

[00:25:16] Speaker 03:
At that disclosed sensitivity of one chromophore per micron squared, a 78 micron squared photodetector is able to detect only as few as 78 chromophores, not one chromophore.

[00:25:30] Speaker 03:
Now, HackBio purported to have its expert calculate a different sensitivity, different than the one that's expressly disclosed in Charmaine, one chromophore per micron squared.

[00:25:43] Speaker 03:
But that calculation is entitled to no weight for at least two reasons.

[00:25:47] Speaker 03:
First, the expert himself admitted that it's based on assuming that photo detectors placed above a substrate with chromophores on it capture only 1%

[00:26:00] Speaker 03:
of the luminous flux emitted into the air.

[00:26:03] Speaker 03:
The expert provided absolutely no support or justification for assuming that.

[00:26:09] Speaker 03:
But secondly, and more importantly, that assumption was incorrect because it resulted in the expert calculating an increase in collection efficiency that's inconsistent with the expressly, the collection efficiency expressly set forth in Charmaine.

[00:26:27] Speaker 03:
So the expert calculated

[00:26:28] Speaker 03:
that his 1% assumption results in a collection efficiency increasing by a factor of 400.

[00:26:34] Speaker 03:
That's at appendix 7428.

[00:26:37] Speaker 03:
But Xiaomeng expressly states that the increase in collection efficiency will be only, quote, several tens of times greater.

[00:26:45] Speaker 03:
An unrebutted expert testimony established that several tens would be 30 or 40 or 50, not 400.

[00:26:55] Speaker 03:
So not only is the calculation based on arbitrary assumption, it directly contradicts the expressed disclosure of Xiaomeng.

[00:27:02] Speaker 03:
Let me just address Weissberg very, very briefly.

[00:27:05] Speaker 03:
What PacBio contends is substantial evidence that Weissberg discloses single molecule detection is just as inadequate as what it points to for Xiaomeng.

[00:27:13] Speaker 03:
PacBio points to a two sentence excerpt from its expert's declaration and a turning argument from six paragraphs from Weissberg.

[00:27:23] Speaker 03:
The two sentence paragraph from its expert

[00:27:26] Speaker 03:
does not even assert that YSPUC discloses single molecule detection.

[00:27:31] Speaker 03:
And the attorney argument offered by PacBio obviously is not evidence.

[00:27:35] Speaker 03:
The only evidence about those portions of YSPUC that counsel relies on came from PGI's expert, who described and explained why YSPUC does not disclose an apparatus for identifying a single biomolecule.

[00:27:50] Speaker 03:
Unless there are any questions, I'd like to reserve the balance of my time.

[00:27:53] Speaker 03:
Thank you.

[00:27:57] Speaker 00:
We'll restore three minutes if we can.

[00:27:59] Speaker 02:
Thank you, Your Honor.

[00:28:00] Speaker 02:
I appreciate that.

[00:28:02] Speaker 02:
The argument that in ensemble sequencing, there can be no single molecule identification is tautological.

[00:28:12] Speaker 02:
I mean, the argument is, well, it's single molecule identification, so that means you only have to be detecting one.

[00:28:17] Speaker 02:
Well, that's not true, because there's ensemble detection.

[00:28:20] Speaker 02:
But let me try to phrase it a different way.

[00:28:24] Speaker 02:
That may be helpful.

[00:28:27] Speaker 02:
Let's take a simple ATTT sequence and you have that fragment of DNA and you want to identify it.

[00:28:34] Speaker 02:
That's the whole point of this in terms of the sequencing.

[00:28:37] Speaker 02:
You want to get that and you have that.

[00:28:40] Speaker 02:
And there's two ways to do it.

[00:28:41] Speaker 02:
One is you just look at that one.

[00:28:42] Speaker 02:
The other way is you amplify it at the detection spot as claimed by them and you make multiple copies.

[00:28:51] Speaker 02:
In both cases, your single molecule identification is of the original

[00:28:58] Speaker 02:
DNA, because that's what you want to discover.

[00:29:01] Speaker 02:
So it is single molecule identification, because even though you're using copies, the copies are just a vehicle, a brighter blue to use your honors reference, to detect what you have in the detection zone, and then identify what you started with.

[00:29:24] Speaker 02:
So the single molecule is that you're just doing one sequence.

[00:29:28] Speaker 02:
To accept the opposing argument and to accept the board is to just say identification is the same as detection.

[00:29:33] Speaker 02:
And identification is what something is, i.e.

[00:29:37] Speaker 02:
the sequence.

[00:29:37] Speaker 02:
Detection is how you go about determining that.

[00:29:40] Speaker 02:
There are two different concepts.

[00:29:42] Speaker 02:
This is de novo review.

[00:29:45] Speaker 02:
And this whole capability point is there's nothing about capabilities, nothing in the body of the claim that tells you how you achieve this detection until you get to 26 and 30, where it's pretty clear that it's ensemble, because it tells you that you're amplified.

[00:29:59] Speaker 02:
So on one hand, they want to claim it, ensemble sequencing.

[00:30:05] Speaker 02:
And everyone seems to agree that at least they're reserving their right.

[00:30:10] Speaker 02:
But they acknowledge the board acknowledged that ensemble detection can be part of this invention.

[00:30:17] Speaker 02:
But then they want to say that somehow there's this capability that's required.

[00:30:21] Speaker 02:
And the only thing they're relying on is preamble.

[00:30:23] Speaker 02:
Preamble is the result.

[00:30:25] Speaker 02:
The result is you've identified the sequence.

[00:30:28] Speaker 02:
Detection is the mechanics of how you do it.

[00:30:31] Speaker 02:
I really can't add more than that, but I would really urge the court to look hard at this on a de novo level as to whether they can claim something and then say, but single molecule identification somehow doesn't cover it, even though it's an independent claim from which these claims depend.

[00:30:46] Speaker 02:
As to the other arguments, they're incredibly fact-bound.

[00:30:50] Speaker 02:
It's a biosensor, as Your Honor pointed out.

[00:30:52] Speaker 00:
Are you referring to the cross-appeal?

[00:30:54] Speaker 02:
Yeah, the cross-appeal.

[00:30:55] Speaker 02:
it is this competing expert testimony and frankly it's right in the face of the references but but just taking chow mein for example uh... it's it's a biosensor and it refers to biomolecules in in the in the in the disclosure what else is it talking about thank you Mr. Reines covered it so you've got your minutes to respond only on cross appeal obviously thank you your honor uh... there's

[00:31:30] Speaker 03:
There's nothing odd about a independent claim.

[00:31:37] Speaker 03:
being capable of identifying.

[00:31:40] Speaker 00:
I don't need your help, Mr. Rice.

[00:31:44] Speaker 00:
Thank you.

[00:31:45] Speaker 00:
Your response time is exclusively on me.

[00:31:48] Speaker 03:
Right, Your Honor.

[00:31:50] Speaker 03:
Well, he spent 20 seconds on the chow mein.

[00:31:53] Speaker 00:
OK, so if you have nothing to respond, that's fine with us.

[00:31:56] Speaker 03:
Yeah, Your Honor, I don't think there was anything to respond to with respect to chow mein.

[00:32:01] Speaker 00:
That doesn't open up the door for you to respond to the other questions.

[00:32:04] Speaker 00:
Thank you, Your Honor.

[00:32:05] Speaker 00:
Thank you.

[00:32:06] Speaker 00:
Thank both sides.

[00:32:06] Speaker 00:
The case is suspended.

[00:32:08] Speaker 00:
Thank you.