[00:00:19] Speaker 03:
Councillor Groombridge, you've reserved two minutes of your time for rebuttal.

[00:00:23] Speaker 04:
Yes, Your Honour.

[00:00:25] Speaker 03:
Okay, we're ready when you are.

[00:00:26] Speaker 04:
Thank you.

[00:00:27] Speaker 04:
Good morning, Your Honours.

[00:00:30] Speaker 04:
So I want to start with the estoppel issue and in our view that turns on whether one sentence or more specifically half of one sentence in the prosecution of the application that led to the 707 patent can fairly be read.

[00:00:47] Speaker 04:
to be an independent argument for patentability.

[00:00:49] Speaker 03:
But that half-sentence is pretty particular, isn't it?

[00:00:52] Speaker 03:
I'm not sure.

[00:00:53] Speaker 03:
Even the word particular is used in that half-sentence.

[00:00:55] Speaker 04:
It uses the word particular.

[00:00:56] Speaker 04:
And the question then is, is that a separate argument for patentability, fairly read, in the context of the prosecution history?

[00:01:06] Speaker 04:
And in our view, the argument is no.

[00:01:08] Speaker 04:
The answer to that is no.

[00:01:10] Speaker 04:
The reason that I would say that is this, right?

[00:01:13] Speaker 00:
Are you focusing on page A182?

[00:01:15] Speaker 04:
Correct, Your Honor, exactly.

[00:01:17] Speaker 04:
And the sentence reads, no combination of salts is taught nor suggested in the Holtz et al.

[00:01:24] Speaker 04:
patent, nor is the particular, with emphasis, combination of salts recited in the pending claims taught nor suggested in this reference.

[00:01:34] Speaker 04:
And in our view, the estoppel, if there be one, has to turn on that, the second half of that sentence.

[00:01:41] Speaker 00:
And it also is the sentence prior to that sentence also relevant

[00:01:48] Speaker 04:
I think that it's relevant in the sense that what is going on?

[00:01:51] Speaker 04:
Page are you on?

[00:01:52] Speaker 04:
I'm on appendix page 182, Your Honor.

[00:01:54] Speaker 04:
182, OK.

[00:01:56] Speaker 04:
And this is the heart of the issue.

[00:01:58] Speaker 04:
182, and we would suggest carrying over to the top of 183.

[00:02:05] Speaker 04:
So what is going on in this prosecution?

[00:02:08] Speaker 04:
There are two rejections and two responses to the rejections.

[00:02:12] Speaker 04:
This is the first of the two responses.

[00:02:14] Speaker 04:
What is going on is the examiner has said,

[00:02:17] Speaker 04:
I see the Holtz reference.

[00:02:20] Speaker 04:
That discloses everything in your claims.

[00:02:24] Speaker 04:
And it discloses a certain range of salts.

[00:02:26] Speaker 04:
The examiner identifies eight salts.

[00:02:28] Speaker 04:
And the examiner says, this is an obviousness rejection.

[00:02:30] Speaker 04:
It's not anticipation.

[00:02:32] Speaker 04:
I think that it would be obvious to pick from that list of eight salts a pair and use those.

[00:02:39] Speaker 04:
And in that case, I'd have your invention.

[00:02:41] Speaker 04:
And the fair reading of what is everything that's going on in this prosecution is the applicant is coming back and saying, no, Holtz does not disclose a combination.

[00:02:52] Speaker 04:
Nothing in the prior art discloses a combination.

[00:02:55] Speaker 04:
And so what is going on here is that's why they say, Richard Stoll, applicants point out that the pending claims recite a particular combination of sorts, with emphasis on combination.

[00:03:05] Speaker 04:
And then they go on and say, no combination of sorts is taught in Holtz, nor is the particular combination taught in Holtz.

[00:03:11] Speaker 04:
And to us, that second part of the sentence isn't an independent argument, it's a necessary corollary.

[00:03:18] Speaker 04:
If the first part is true, Holtz teaches no combinations, the second part is necessarily true also.

[00:03:25] Speaker 01:
And when we go on and we drop down... It seems to me like you would have a stronger argument if

[00:03:31] Speaker 01:
You were distinguishing Holt's just because it didn't say used to, and yours used to, and this were just exemplary, and your claims didn't have specific combinations.

[00:03:44] Speaker 01:
But you went on and not just used those examples in the prosecution history as examples.

[00:03:52] Speaker 01:
You put those three specific combinations in the claims.

[00:03:57] Speaker 01:
And so when you read that in combination with saying, why isn't it right to read it, the prosecution hearing is saying, we're distinguishing over halts because not only do we use two, we use these three specific pairings of two.

[00:04:13] Speaker 04:
I think the reason why, a fair reading of why do these three get put into the claims, goes back to the parent application where there's a restriction requirement, where the Patent Office calls out five pairs of claims.

[00:04:27] Speaker 04:
and says, you've got to pick one.

[00:04:29] Speaker 04:
We're restricting this.

[00:04:30] Speaker 04:
They pick one, a different one, citrate phosphate, and prosecute that.

[00:04:33] Speaker 04:
They reserve their rights, as is typical when there's a restriction requirement.

[00:04:37] Speaker 04:
And then they come back, and they dump in the remaining ones that the patents had called out, that the PTO had called out.

[00:04:42] Speaker 04:
For whatever reason, and I don't know the answer, they pick three, not four of the five that were left over.

[00:04:48] Speaker 04:
Three of the four, not all four of the ones that were left over.

[00:04:51] Speaker 04:
Put those in a claim, and that's how come they end up in this claim.

[00:04:55] Speaker 00:
It didn't also, though, there were some

[00:04:58] Speaker 00:
preserving of the ability to claim them generically, right?

[00:05:03] Speaker 04:
There's language in the parent that says we reserve our rights to present claims to specific species if a generic claim is found allowable.

[00:05:13] Speaker 00:
And was a generic claim presented or found allowable?

[00:05:16] Speaker 04:
A generic claim was never presented and thus never found allowable in the parent's application.

[00:05:20] Speaker 00:
Why was it not ever presented?

[00:05:21] Speaker 04:
I don't know.

[00:05:23] Speaker 04:
There was originally a generic claim.

[00:05:25] Speaker 04:
with limitations that were different from the ones that in some ways could be important.

[00:05:31] Speaker 04:
That claim was amended to recite the citrate-phosphate pair in response to the restriction requirement.

[00:05:38] Speaker 04:
And then that was prosecuted after it issued.

[00:05:40] Speaker 04:
They never came back and presented a generic claim in the parent case.

[00:05:44] Speaker 04:
And in our view, what they were doing when they filed this, it is a genus.

[00:05:48] Speaker 04:
It's three pairs.

[00:05:49] Speaker 04:
It's a small genus, but it's a genus.

[00:05:52] Speaker 04:
And they presented it here.

[00:05:55] Speaker 04:
presumably saying, is the patent office going to issue another restriction requirement and tell me I have to break this into three parts?

[00:06:00] Speaker 04:
That didn't happen.

[00:06:01] Speaker 04:
And then they continued prosecuting this small genus and got allowance.

[00:06:09] Speaker 04:
But in our view, a fair reading, to Judge Hughes' question, of the entire argument in the prosecution of the 707 patent is, Holtz does not disclose combinations.

[00:06:22] Speaker 04:
So after the sentence that everyone focuses on,

[00:06:25] Speaker 04:
Two sentences later, it says, the claimed subject matter is directed to the use of combinations of salts that increase the dynamic capacity of the Hick column.

[00:06:33] Speaker 04:
There is no description or suggestion in Holtz for the use of any combinations of salts to increase the dynamic capacity of a Hick.

[00:06:41] Speaker 04:
And everything else that happens in this prosecution is based on that.

[00:06:46] Speaker 04:
If you think about it, an independent argument, in our view, would be,

[00:06:50] Speaker 04:
to say, first argument, Holtz doesn't disclose combinations.

[00:06:53] Speaker 04:
Second argument, even if you find that Holtz does render obvious combinations, the particular combinations we're claiming are still non-obvious.

[00:07:01] Speaker 04:
That second argument is never presented and it's not a fair reading of this prosecution to say that that was what was argued.

[00:07:09] Speaker 04:
The argument always stands or falls.

[00:07:11] Speaker 04:
on Holtz does not disclose any combinations.

[00:07:14] Speaker 04:
Nobody in the art disclosed combinations because nobody understood that using a pair of salts could have an effect on dynamic passage.

[00:07:22] Speaker 00:
Can I interrupt you for a minute?

[00:07:24] Speaker 00:
Are you saying that these two arguments go together and therefore the estoppel doesn't apply because it's not a separate reason for distinguishing the pair?

[00:07:36] Speaker 04:
Correct, Your Honor.

[00:07:36] Speaker 04:
And what I'm saying is that this particular half sentence

[00:07:40] Speaker 04:
Of course, look, with the benefit of Einstein, it's unfortunately worded, right?

[00:07:44] Speaker 04:
And I think that's why we're standing here.

[00:07:49] Speaker 04:
But Fairly Red, it's not saying there are two reasons why I'm different from Hotz.

[00:07:55] Speaker 04:
Fairly Red, this prosecution, and you've got to look, I think, at both certainly at this entire response to an office action, and we would submit also what happened thereafter, that Fairly Red, the argument is never

[00:08:09] Speaker 04:
Patentability is based on the fact that my particular combinations, these three pairs of salts are non-obvious.

[00:08:16] Speaker 04:
Patentability is based on the fact that using a pair of salts is non-obvious.

[00:08:21] Speaker 00:
One of the problems I'm having with your argument is that you keep on referring to a half sentence, but I happen to see it in this

[00:08:28] Speaker 00:
on pages A182 through 183 three times.

[00:08:33] Speaker 00:
So there's the first sentence is on page 182 before the sentence you're relying on.

[00:08:39] Speaker 00:
Then there's the sentence you're focusing on.

[00:08:41] Speaker 00:
And then on page A183, at the end of the first paragraph,

[00:08:47] Speaker 00:
It says, use of this particular combination of salts greatly improves the cost effectiveness of commercial manufacturing, da, da, da.

[00:08:54] Speaker 00:
So I see it in there three times.

[00:08:57] Speaker 00:
Why do you think my reliance on these other sections isn't?

[00:09:00] Speaker 04:
I may have missed the second one, Your Honor, and I apologize.

[00:09:07] Speaker 04:
What was the second one that you saw on pages 182 to 183?

[00:09:10] Speaker 00:
The second one on page 182 is the one that you've been referring to.

[00:09:15] Speaker 04:
Okay, yes.

[00:09:17] Speaker 04:
Then what's the first one?

[00:09:18] Speaker 00:
The first one is the sentence that precedes that sentence.

[00:09:21] Speaker 04:
Yes, and I would say that what it's talking about, there's a reason why combination is emphasized there.

[00:09:27] Speaker 04:
In other words, fairly read, this entire paragraph

[00:09:30] Speaker 04:
is saying.

[00:09:32] Speaker 00:
But it does have particular in it.

[00:09:33] Speaker 00:
It has to work particular in it.

[00:09:34] Speaker 00:
It's not emphasized.

[00:09:35] Speaker 00:
It has to work particular in it.

[00:09:36] Speaker 04:
But then it says, no combination of salts is taught nor suggested in Holtz.

[00:09:42] Speaker 04:
And what I think a fair reading of this, and if we come over to the top of page 183, it talks about the use of dual salts to increase dynamic capacity.

[00:09:52] Speaker 04:
And then the third place that your honor referred to talks about the improvement resulting from the use of dual salts.

[00:09:58] Speaker 00:
But it says use of this particular cavitation.

[00:10:00] Speaker 04:
Yes.

[00:10:00] Speaker 04:
And that's a quotation from the inventor declaration, where she has submitted.

[00:10:06] Speaker 04:
This is by way of an example.

[00:10:08] Speaker 04:
And what they're doing is saying, and this is, I think, what the chief district judge found in the footnote, in the opinion, of saying that inventor declaration cannot fairly be read in the way that the magistrate judge had read it in the report and recommendation.

[00:10:27] Speaker 04:
What she is saying there is, here's an example of a particular combination that results in dramatic savings.

[00:10:35] Speaker 04:
But it is merely an example.

[00:10:37] Speaker 04:
The particular combination she's referring to is saying, if I'm going to give an example, it is necessarily a specific combination.

[00:10:44] Speaker 04:
And so that's what we would say.

[00:10:49] Speaker 04:
Look, a fair reading of this.

[00:10:50] Speaker 04:
particularly if you then look at the subsequent office action, where the arguments are presented again, but in different words, is Holtz doesn't disclose, and this is Appendix 160 to 161, Holtz doesn't disclose a combination of salts, and it doesn't disclose enhancing dynamic capacity through using a combination of salts.

[00:11:14] Speaker 04:
Where are you?

[00:11:16] Speaker 00:
I'm sorry, could you point out to me where you are on 162?

[00:11:20] Speaker 04:
Yes, so for example, the last full paragraph, the last sentence of that, which is most of the way to the bottom, Holtz simply does not disclose, suggest, or contemplate any steps involving a combination of two sorts for any purpose whatsoever.

[00:11:40] Speaker 04:
And then the sentence that spans the bottom of 160 to the top of 162 saying nobody in the prior art had disclosed dual salt systems and the very term single salt system doesn't make sense because everything was a single salt system.

[00:12:08] Speaker 04:
that what the argument that is being made is we discovered that when you use a pair of salts

[00:12:15] Speaker 04:
you've properly selected, you get a dramatic improvement in dynamic capacity.

[00:12:20] Speaker 04:
That is nowhere taught in the prior art.

[00:12:23] Speaker 04:
We didn't discover that these three pairs uniquely do that.

[00:12:28] Speaker 04:
We discovered that pairs of salts properly selected do that.

[00:12:31] Speaker 04:
And that's why the case was allowed.

[00:12:34] Speaker 03:
Then you go on to say that this particular use of salts has

[00:12:40] Speaker 03:
The way I read this, and I'm Reno on 183, it's a vast improvement of the entire art.

[00:12:48] Speaker 03:
Why isn't that a strong disclaimer when you're?

[00:12:55] Speaker 04:
I'm not sure where in particular on 183.

[00:13:00] Speaker 03:
At the end of the first paragraph, use of this particular combination of salt greatly improves the cost effectiveness of commercial.

[00:13:07] Speaker 03:
So you're talking there about improving

[00:13:10] Speaker 04:
I think, Your Honor, that's a specific example that is being offered, if you will, as proof of unexpected results.

[00:13:16] Speaker 04:
And this is precisely the point that, in the district court opinion in its footnote, it says, the magistrate judge read this in the way that Your Honor is positing, but I, the district court judge, do not read, do not think that's a fair reading of the Inventor Declaration.

[00:13:30] Speaker 04:
The district court then goes on to look at a different part of the prosecution

[00:13:38] Speaker 04:
which is on Appendix 162, and we think misreads that, where the part that says merely adding a second salt to the traditional HIC process doesn't produce our invention.

[00:13:51] Speaker 04:
But the district court disregards the immediately following sentence that explains why that is so, which says it's because you'd have too much salt and the protein would precipitate, not because the method is limited.

[00:14:05] Speaker 04:
It's the amount of salt, not the identity of the salt.

[00:14:08] Speaker 04:
And so in our view, looking at the prosecution of the 707 patent, it's just not a fair reading of it to say patentability was premised on these three pairs of salts.

[00:14:19] Speaker 04:
It was premised on the idea that the use of a pair of salts is not fairly taught in the prior art.

[00:14:25] Speaker 04:
Now, I see I'm looking at my time.

[00:14:30] Speaker 04:
I'm not sure if I'm into my rebuttal time here.

[00:14:32] Speaker 03:
You've got a minute left of your rebuttal time.

[00:14:35] Speaker 04:
Let me pause at that point, and we'll come back briefly.

[00:14:40] Speaker 03:
I'll restore you back to your two minutes when you come back.

[00:14:42] Speaker 03:
That is very generous, Your Honor.

[00:14:48] Speaker 03:
Councillor Unikowski.

[00:14:50] Speaker 03:
Yes, Your Honor, thank you.

[00:14:51] Speaker 02:
Yes.

[00:14:53] Speaker 02:
Thank you, Your Honors.

[00:14:54] Speaker 02:
The district court correctly concluded that Amgen's claim under the doctrine of equivalence was barred for two independent reasons.

[00:15:01] Speaker 02:
First, the doctrine of argument-based prosecution history estoppel.

[00:15:04] Speaker 02:
Second, the disclosure dedication doctrine.

[00:15:06] Speaker 00:
Looking specifically at the statements on pages 182 and 183, how do you respond to counsel's point about, well, first of all, let me ask you this.

[00:15:18] Speaker 00:
Do you think that the only sentence you really are focusing on is the one on page A182?

[00:15:23] Speaker 02:
I think it's the best sentence, but I think that when viewed in the entire context, other portions of the record amplify our argument.

[00:15:29] Speaker 02:
So yeah, I think the best and clear sentence is the sentence on 182.

[00:15:33] Speaker 02:
But they actually say similar things a few times during prosecution, like that sentence or nearly identically worded sentences are repeated on a number of occasions in prosecution.

[00:15:41] Speaker 02:
But yeah, I think that's ultimately the single best piece of evidence we have in the record.

[00:15:48] Speaker 00:
I was looking at pages 161 to 162 and page 160.

[00:15:53] Speaker 00:
And if it was just pages 160 through 162, I don't think there'd be a clear and unmistakable surrender.

[00:16:01] Speaker 00:
Do you agree with that?

[00:16:03] Speaker 02:
Yeah.

[00:16:03] Speaker 02:
I mean, I think that would be a harder case with just 160 and 162.

[00:16:07] Speaker 02:
I mean, I think that I'll be candid.

[00:16:09] Speaker 02:
161, 162, I think, presuppose that Amgen is only referring to the particular combinations.

[00:16:14] Speaker 02:
Because if you look at what they say on 162,

[00:16:16] Speaker 02:
They talk about the lengthy development path necessary to determine what combinations of salts would increase the dynamic capacity, which I think presupposes here that what, you know, the inventive concept here is that they discovered that these particular combinations work.

[00:16:29] Speaker 02:
I don't think it would make sense to emphasize the lengthy development path to determine what combinations of salts work.

[00:16:35] Speaker 00:
But what if it was just a lengthy development path to determine what combination of salts work?

[00:16:40] Speaker 00:
with those combination of salts being those that are in the specification.

[00:16:44] Speaker 02:
Well, I mean, I think that... I'm sorry, can you repeat the question?

[00:16:49] Speaker 00:
Well, I mean, I'm just saying that you're talking about the lengthy development path, but I don't know that that's limited to just the proposed pairs

[00:16:59] Speaker 00:
the combinations that are claimed, it also would include those that are disclosed in the specification, wouldn't it?

[00:17:06] Speaker 02:
Well, that's true.

[00:17:07] Speaker 02:
There was a lengthy development path to determine that the salts in the specification work, but those are the ones that are in the claim.

[00:17:12] Speaker 02:
I think it's notable.

[00:17:13] Speaker 02:
I don't mean to jump between arguments, but the examiner indicated earlier in the prosecution that the only combinations that were enabled by the specification were these four, three that are in this claim and one that issue as part of the parent patent.

[00:17:24] Speaker 02:
And those are the ones that ultimately showed up in the claim.

[00:17:27] Speaker 02:
So I think what Amgen is saying here is that there's a lot of development to determine that what combinations worked.

[00:17:33] Speaker 02:
And they figured out that these four combinations worked.

[00:17:35] Speaker 02:
And those are the combinations that ended up being claimed.

[00:17:38] Speaker 02:
And so I think that just 161 and 162 is fully consistent with their argument.

[00:17:43] Speaker 02:
Again, I think we have more here.

[00:17:44] Speaker 02:
I think we have the statement on page 182, which I think is pretty ambiguous.

[00:17:48] Speaker 02:
Ultimately, Amgen made that statement.

[00:17:50] Speaker 02:
It's not a very long argument to the examiner, and presumably Amgen, very sophisticated patentee, chose its words carefully.

[00:17:57] Speaker 02:
Amgen said that the particular combination of salts with the word particular italicized is not disclosed by Holtz.

[00:18:03] Speaker 02:
And I think that the public has a right to rely on that.

[00:18:06] Speaker 02:
And Amgen could have walked that back in its final amendment.

[00:18:09] Speaker 02:
It certainly didn't do that.

[00:18:10] Speaker 02:
And so I think that regardless of whether the examiner relied or not, I think that Amgen ultimately has the obligation to make a clear record.

[00:18:17] Speaker 00:
What do you think they would have had to do to walk that back?

[00:18:20] Speaker 00:
I mean, even if we think that in their, or even if I think that in their second response, they don't make as strong of an argument,

[00:18:28] Speaker 00:
What would they have had to do to undo the strong argument that they made in their first response?

[00:18:35] Speaker 02:
I think they would have just had to say that our claim is not limited to the particular combinations of salts, or simply say we withdraw the statement that we're distinguishing the prior art on the basis that it does not disclose the particular combinations of salts or the particular italicized.

[00:18:50] Speaker 02:
There's case law from this court that says once you make a statement during prosecution,

[00:18:53] Speaker 02:
as clear as the one on page 182, you've got to withdraw it just as clearly rather than just leaving it in the record.

[00:18:58] Speaker 02:
I think that's actually particularly important here, because although I don't think we need to show reliance, I think there actually is fairly abundant evidence in the record that that statement was necessary to get the patent.

[00:19:08] Speaker 02:
It wasn't sufficient in the sense that there was this rejection and a follow-up argument, but it might have been necessary.

[00:19:14] Speaker 02:
And I think that the enablement rejection earlier in prosecution, which is on page 1153 of the joint appendix, I think is quite

[00:19:22] Speaker 02:
quite strong in our favor, what the examiner is saying.

[00:19:25] Speaker 02:
So as originally drafted, the claim would have encompassed a combination of any two salts with different liotropic values.

[00:19:31] Speaker 02:
And you'll see on pages 1153 and 54, the examiner rejects that and says that the claim is only enabled with respect to citrate, acetate, phosphate and sulfate salts.

[00:19:41] Speaker 02:
The examiner says, African has provided no guidance for any other salts which would purify a protein.

[00:19:47] Speaker 02:
And then you'll see on 1154, the examiner actually lists the four combinations of salts.

[00:19:52] Speaker 02:
There's actually eight listed there, but each is listed twice.

[00:19:55] Speaker 02:
And so there's four combinations listed on page 1154.

[00:19:59] Speaker 02:
And at that point, Amgen stops prosecuting the generic claim and only prosecutes claims with respect to those four combinations.

[00:20:06] Speaker 02:
One was issued as part of the parent patent, and then the other three were issued as part of the patent we're talking about this morning.

[00:20:12] Speaker 02:
And so I think that if Amgen had been forthright and said, no, we're not limiting our claim to these particular combinations, there was a rejection risk.

[00:20:19] Speaker 02:
And that's why I think Amgen was so emphatic.

[00:20:21] Speaker 02:
It chose its words very carefully and said that the particular combinations, particular being italicized, were not disclosed.

[00:20:28] Speaker 02:
So if the court has no further questions, I'd like to say a word about disclosure dedication before I sit down.

[00:20:34] Speaker 02:
The court doesn't need to reach this question if the court affirms on the basis of the argument-based estoppel.

[00:20:38] Speaker 02:
It's a completely independent argument for affirmance.

[00:20:41] Speaker 02:
But I'll just say one word about it.

[00:20:43] Speaker 02:
I think that the disclosure does dedicate this to the public, because the way the disclosure is written is that it includes a list of anions

[00:20:53] Speaker 02:
And it says there's a greater than sign between the two anions that are in the accused product, and it characterizes them as having different lyotropic values.

[00:21:04] Speaker 00:
Doesn't your enablement argument that you've just made or the examiner's emphasis on enablement, doesn't that kind of undermine your position here?

[00:21:13] Speaker 00:
Maybe it's not as clear as you say that these are the particular salts that one would pick and that it's an alternative to what is in the claim.

[00:21:22] Speaker 02:
Well, first of all, I think these are all alternative arguments, right?

[00:21:24] Speaker 02:
So if you affirm on stop, well, you don't have to reach this question.

[00:21:27] Speaker 02:
So I think that we talked about the enablement rejection just to make clear that the examiner wouldn't have granted the claim had there been forthright.

[00:21:33] Speaker 02:
But now when we just look at the specification,

[00:21:36] Speaker 02:
It does name the two salts that we're talking about in that list.

[00:21:42] Speaker 02:
So it's not as though they're just generic salts that just happen to be salts with different litropic values.

[00:21:47] Speaker 02:
The two salts that are accused actually appear in the list that's in the disclosure.

[00:21:53] Speaker 00:
And then the very next sentence... But they're not listed together as a particular combination.

[00:21:57] Speaker 00:
They're not listed together.

[00:21:58] Speaker 00:
They're like next to each other.

[00:21:59] Speaker 02:
There's just a list of possible...

[00:22:00] Speaker 02:
That's right.

[00:22:00] Speaker 02:
So they're listed next to each other, and there's a greater than sign, so that means not equal.

[00:22:04] Speaker 02:
And then the next sentence, it says that the present invention involves combining salts with different allotropic values.

[00:22:10] Speaker 02:
So it's sort of splitting into two sentences, but I think it's saying that the present invention is broad enough to encompass the combination that's accused, and that would have fallen within the original language of the claims.

[00:22:20] Speaker 02:
But Amgen narrowed its claims during prosecution to just these particular combinations.

[00:22:25] Speaker 02:
And so I think it's just a classic case where we have the specification broader than what's claimed.

[00:22:31] Speaker 02:
And so the disclosure dedication doctrine applies.

[00:22:33] Speaker 02:
But again, I don't think the court needs to reach that if the court affirms on the first issue.

[00:22:37] Speaker 02:
If the court has no further questions.

[00:22:39] Speaker 02:
Thank you.

[00:22:40] Speaker 02:
Thank you.

[00:22:44] Speaker 04:
Your Honor, let me talk about the suggestion that Amgen should have walked back

[00:22:50] Speaker 04:
that language or withdrawn it.

[00:22:52] Speaker 04:
How would that have been possible?

[00:22:54] Speaker 04:
If Amgen is saying Holtz doesn't disclose any combinations, it's hardly going to say, but it does disclose these particular combinations.

[00:23:01] Speaker 04:
Those two are mutually inconsistent, and that perfectly highlights why this isn't an independent argument.

[00:23:06] Speaker 04:
You can't walk back a subset of something if your premise is that the superset is wrong.

[00:23:12] Speaker 04:
And so it just shows you why this is all a gloss.

[00:23:16] Speaker 04:
The entire argument flows from plucking pieces out of the prosecution history and not looking at the whole of what was going on.

[00:23:24] Speaker 04:
I would just also point out on the enablement issue, the enablement rejection that counsel referred to was not of record below.

[00:23:31] Speaker 04:
It was added to the record here for this appeal.

[00:23:34] Speaker 04:
If the court is interested, the response to that enablement rejection is that Appendix 1163 to 1164.

[00:23:40] Speaker 04:
And it's the way Amgen says, we disagree with the suggestion that the spec is only enabling for four convict-specific pairs.

[00:23:48] Speaker 04:
And here's why.

[00:23:49] Speaker 04:
It gives you a method for figuring out for each specific protein which pairs of salts will work.

[00:23:56] Speaker 04:
And it's enabling for much more than these specific pairs.

[00:24:00] Speaker 04:
And lastly,

[00:24:01] Speaker 04:
On disclosure dedication, what I would say is that the appellee disregards the holdings of the FISA versus Teva and Sandisk versus Kingsdown cases that say the specification has to show the specific thing that's alleged to have been dedicated as an alternative to the claim element.

[00:24:25] Speaker 04:
We know, and this traces its origin to the PSC case, that a generic disclosure is not enough.

[00:24:31] Speaker 04:
And Sandisk, which is the most recent presidential decision of this court on disclosure dedication, says the mere fact that a skilled person could take the teaching and arrive at the allegedly dedicated embodiment isn't sufficient for disclosure dedication.

[00:24:46] Speaker 04:
That's exactly what's going on here.

[00:24:48] Speaker 04:
There is no example in this patent.

[00:24:50] Speaker 04:
that says, here's this particular pair of salts, and it will work for increasing the dynamic capacity.

[00:24:57] Speaker 04:
And the last thing I would point out to the court is the specification makes clear, the bottom of column 13 and the top of column 14, not every pair of salts, even ones that have the required lautropic values, will work to increase dynamic capacity.

[00:25:11] Speaker 04:
It lists two that don't.

[00:25:13] Speaker 04:
So there would have to be a disclosure of this particular combination, and then the failure to claim it, that's absent here.

[00:25:21] Speaker 03:
We thank you.

[00:25:22] Speaker 03:
We thank the parties for the arguments this morning.

[00:25:24] Speaker 03:
This Court is now in recess.