[00:00:08] Speaker 01:
Are we ready to proceed?

[00:00:09] Speaker 01:
We are, Your Honor.

[00:00:11] Speaker 01:
Good morning.

[00:00:13] Speaker 01:
May it please the Court, Justin Cohen on behalf of the Scripps Research Institute, a 95-year-old institution which is the world's largest and most prestigious private... Okay, as a housekeeping matter, claim one illustrative or representative.

[00:00:25] Speaker 01:
Yes, Your Honor.

[00:00:27] Speaker 01:
And where the district court erred in interpreting claim one with respect to little a, is it gave little a the different concepts between different parts of claim one when it ruled that it had to be the same numerical value in the formula.

[00:00:42] Speaker 02:
Let me ask you this.

[00:00:42] Speaker 02:
In the red brief at 29, Illumina says that you failed to cite any examples where a in the formula, paren x, large x, and closed paren a,

[00:00:56] Speaker 02:
Or the length of polymer A is different from the number of chemical units.

[00:01:02] Speaker 02:
And you provide an example.

[00:01:04] Speaker 01:
Yes, your honor.

[00:01:05] Speaker 01:
As a matter of fact, in column 11 would be one example.

[00:01:10] Speaker 01:
I should say from the outset, one of the issues is where Illumina points to the specification is that the preferred embodiment for polymer A is a peptide.

[00:01:20] Speaker 01:
And in a peptide,

[00:01:21] Speaker 01:
Each chemical unit will have one monomer or amino acid.

[00:01:25] Speaker 01:
So for the preferred embodiment throughout the specification, the example is one monomer per chemical unit.

[00:01:31] Speaker 01:
And yet, claim one for polymer A is not limited to peptides.

[00:01:36] Speaker 01:
We can look at claim three.

[00:01:37] Speaker 01:
But if we look at claim 11 near the bottom.

[00:01:41] Speaker 01:
I'm sorry, column 11 starting at line 55 where it talks about the preparation of the product.

[00:01:48] Speaker 01:
and lists formulas xn of little a and zn of little a, where a indicates the presence of a polymer of length little a, referencing both x and z in terms of length.

[00:02:01] Speaker 01:
And the trouble with Illumina's arguments is where the district court found in footnote four, appendix 21, that little a is supposed to refer to length for both polymer A and oligo C. There's no dispute that polymer A can be an oligonucleotide.

[00:02:17] Speaker 01:
And there's no dispute that in an oligonucleotide, the length is measured by its constituent parts, its monomers, which are nucleotides.

[00:02:25] Speaker 01:
And there's no dispute that when you look at the number of nucleotides for an oligo, that number will be more than the number of Xs and the number of Zs, for example.

[00:02:36] Speaker 01:
So when the district court adopted Illumina's construction, it eliminated the majority of the scope of the claim, because it's undisputed that while claim one says that little a should be a value of between 4 and 50, under the court's construction proposed by Illumina, that's capped at 11.

[00:02:53] Speaker 01:
It is now coextensive with the number of chemical units X and chemical unit identifiers Z, which we contend is improper.

[00:03:01] Speaker 03:
So can you clarify the following for me?

[00:03:05] Speaker 03:
Is it your position that

[00:03:07] Speaker 03:
the a after the x needn't be the same number as the a after the z?

[00:03:13] Speaker 01:
Correct, your honor, that they can be of different lengths.

[00:03:16] Speaker 03:
Right.

[00:03:16] Speaker 03:
So the column 11, line 55 to 58 you just read seems to me to indicate that a is a single integer for both times it appears in whatever that is not an equation, whatever that

[00:03:32] Speaker 01:
Well, and we agree that it needs to be a value, a singular value for XN of A, and it needs to be a singular value for ZN of A. Let me just try to make my point.

[00:03:43] Speaker 03:
It seems to me that the passage you just pointed to makes absolutely, I'm going to overstate it, absolutely clear that A is the same each time it appears in that formula.

[00:03:52] Speaker 01:
Well, we disagree, Your Honor, because it's referring to length and consistently through the specification

[00:03:57] Speaker 01:
When the patent talks about the length of polymer A as a peptide, it measures it in amino acids.

[00:04:04] Speaker 01:
And when the patent talks about length for an oligonucleotide, it measures it in individual nucleotides.

[00:04:09] Speaker 01:
Figure two is a good example.

[00:04:11] Speaker 01:
Illumina admits, even in figure two, polymer A as a peptide has a different length than oligo C as an oligonucleotide.

[00:04:20] Speaker 01:
As a matter of fact, in figure two, there's three amino acids for X, or I should say for polymer A as a peptide.

[00:04:26] Speaker 01:
and 18 nucleotides for oligo C. I'm sorry.

[00:04:30] Speaker 03:
I thought, again, I may be misremembering or confusing.

[00:04:34] Speaker 03:
I thought that their point is that

[00:04:36] Speaker 03:
When you count up the units correctly in figure two, the numbers are exactly the same.

[00:04:41] Speaker 01:
And if their premise, that argument is premised on the notion that length should be measured in terms of chemical units.

[00:04:47] Speaker 03:
Right, but doesn't the column that has expressed language, is it on the z side?

[00:04:54] Speaker 03:
The z side has the expressed language about the chemical units, doesn't it?

[00:04:59] Speaker 01:
I think that's column 5 at the bottom is most of what Illumina rests its argument on.

[00:05:04] Speaker 01:
I'm sorry?

[00:05:05] Speaker 04:
The question is, what does connote mean?

[00:05:08] Speaker 01:
Well, we believe that connote means that you can determine the number of- It doesn't mean is.

[00:05:14] Speaker 01:
It doesn't mean denote.

[00:05:15] Speaker 01:
And it shouldn't be used, essentially, to contradict the express definition of column 4.

[00:05:20] Speaker 04:
Oh, if it meant denotes, your case would be substantially injured.

[00:05:23] Speaker 01:
It would be substantial if it was D-notes.

[00:05:26] Speaker 01:
But there is a relationship.

[00:05:28] Speaker 01:
For example, if each unit identifier, Z, is a hexanucleotide, so six nucleotides per chemical unit, you know the length is 30 for oligo C, you can figure out that there's five unit identifiers.

[00:05:42] Speaker 04:
It seems to me that the case almost turns on what we mean by CNOs.

[00:05:47] Speaker 01:
I would say that the case... Substantially.

[00:05:50] Speaker 01:
Partially, Your Honor, I agree with that.

[00:05:52] Speaker 04:
Well, it's that, the library reference.

[00:05:54] Speaker 04:
Your other side has this.

[00:05:55] Speaker 04:
The other side has the library reference.

[00:05:57] Speaker 04:
You have a ground to distinguish the library reference.

[00:05:59] Speaker 04:
The other side then has conventional ways that you write these formulas.

[00:06:05] Speaker 04:
And the district court didn't rely on that conventional analysis at all.

[00:06:08] Speaker 04:
That was a fact question.

[00:06:09] Speaker 04:
There's a dispute on the fact question.

[00:06:11] Speaker 04:
It can't come up on summary judgment.

[00:06:13] Speaker 04:
So when I was trying to do a decision tree to see where does the rubber hit the road here,

[00:06:18] Speaker 04:
seeing me and the rubber hits the road on Canucks and starts with the proposition that the district court read 83% of the scope of your claim out.

[00:06:29] Speaker 04:
And your patent makes perfectly clear why from 12 to 50 you care.

[00:06:35] Speaker 04:
Yes, Your Honor.

[00:06:35] Speaker 04:
All the examples of the different lengths of the patent speaks out volumetrically about why you didn't stop at 11.

[00:06:44] Speaker 01:
That's correct, Your Honor, that the patent contemplates polymers of lengths from 4 to 50 units.

[00:06:51] Speaker 01:
Those units should be the monomer of each polymer.

[00:06:54] Speaker 04:
But it seemed to me also that your argument that the problem here is that 83% of the claim was written out.

[00:07:01] Speaker 04:
And their response from your other side was from examples to say, oh, no, no, you don't work either.

[00:07:07] Speaker 04:
Their examples simply prove that depending on what you choose to put into the formula, you may or may not get infringement.

[00:07:14] Speaker 01:
That's exactly right, Your Honor.

[00:07:15] Speaker 04:
How simple is that?

[00:07:16] Speaker 01:
Yes.

[00:07:17] Speaker 04:
It's not scope.

[00:07:19] Speaker 04:
It's application.

[00:07:21] Speaker 01:
Correct, Your Honor.

[00:07:23] Speaker 01:
For underscripts construction, first and foremost, I want to say that in looking at the dispute, we asked the court to construe little a in terms that gives the numerical range a its full value from 4 to 50.

[00:07:36] Speaker 01:
And to your point, Judge Clevenger, is that there are examples throughout the specification that polymer A is a peptide.

[00:07:43] Speaker 01:
And under that scenario, each chemical unit x will have one amino acid, so a maximum length, by claim one, when polymer A is a peptide of 11.

[00:07:52] Speaker 01:
But that doesn't limit the length of the oligo.

[00:07:54] Speaker 04:
You've got a patent here.

[00:07:55] Speaker 04:
There isn't any indefinite issue that's been raised.

[00:07:58] Speaker 04:
But you have a patent where certainly everybody agrees that length, everybody agrees that A has to have the same

[00:08:06] Speaker 04:
You're using it for the same purpose.

[00:08:07] Speaker 04:
So how do you measure the length?

[00:08:09] Speaker 04:
And the patent doesn't expressly tell you upfront.

[00:08:12] Speaker 04:
By the way, when you measure length, you use monomers.

[00:08:15] Speaker 04:
It would have been very easy to say that.

[00:08:18] Speaker 04:
Yes, Your Honor.

[00:08:19] Speaker 04:
But I think the way I take your appeal is that we're taking this case with rules of engagement.

[00:08:24] Speaker 04:
And it's clean construction rules of engagement.

[00:08:27] Speaker 04:
And one of the rules is that if you read out embodiments, you read down the scope, you wonder why you're doing that.

[00:08:33] Speaker 04:
You have to have a good reason to do that.

[00:08:35] Speaker 01:
That's correct, your honor.

[00:08:36] Speaker 04:
And so even though one might have wished that the patent team would have given us a clear answer to how you measure, our job is to hunt around in the spec and see if we can figure it out.

[00:08:48] Speaker 01:
Yes, partially, your honor.

[00:08:49] Speaker 04:
And the answer is if we can figure it out, the claim isn't indefinite.

[00:08:52] Speaker 01:
There is no indefiniteness argument.

[00:08:53] Speaker 04:
I know there's not one race at this stage in the game.

[00:08:56] Speaker 01:
Yes, but throughout the specification, there are references to length counting the monomers.

[00:09:00] Speaker 01:
The length, for example, in column 28

[00:09:05] Speaker 01:
is a good example, where it talks about the length of both polymer A and oligo C, measuring it by its individual monomers, amino acids and nucleotides.

[00:09:16] Speaker 01:
There's references to the CFR, which the Patent Office would like.

[00:09:19] Speaker 04:
So any other references besides 28 to that effect?

[00:09:22] Speaker 01:
The sequence listing, Your Honor, starting in column 29, appendix 46.

[00:09:25] Speaker 01:
Each sequence listing is counting in terms of nucleotides.

[00:09:30] Speaker 01:
And that's what the Patent Office requires through the CFR.

[00:09:34] Speaker 01:
For both amino acids, that the length is counted by its individual monomer.

[00:09:38] Speaker 01:
I'm sorry, for a peptide, its length is counted by its amino acids, its monomer.

[00:09:42] Speaker 01:
And the same for nucleotides, counting in terms of the monomer.

[00:09:46] Speaker 01:
So here, I just want to point out Illumina is actually advocating for a construction as if little a is defined separately, conceptually, for polymer A and oligo C. That it's supposed to mean length for polymer A, but it means unit identifiers for oligo C. Because there's no dispute that an oligo is measured in nucleotides, and there's no dispute that there's more nucleotides in oligo C than there are numbers of Zs, or unit identifiers.

[00:10:14] Speaker 01:
And in our view,

[00:10:15] Speaker 01:
A claim construction that gives two different conceptual meanings to the same term and the same claim is improper, especially in view when it reads out the majority of the expressed scope.

[00:10:26] Speaker 01:
In other words, the numerical range for A. And with that, Your Honor, I'd like to reserve the remainder of my time for rebuttal.

[00:10:44] Speaker 00:
May it please the court?

[00:10:46] Speaker 00:
In order to understand how the court ended up in this case, where it did, we have to take a step back.

[00:10:52] Speaker 00:
And we have to look at what Phillips instructs us to do, which is that the construction that naturally aligns with the patent's description of the invention is likely to be the right construction.

[00:11:03] Speaker 00:
So what is the patent's description of the invention?

[00:11:05] Speaker 00:
If we look at column 2, which we can find in appendix 32, it talks about starting line 55,

[00:11:10] Speaker 00:
this alternating construction of a bifunctional molecule.

[00:11:15] Speaker 00:
It talks about first we take our chemical unit.

[00:11:17] Speaker 00:
Now we're going to start with our polymer, our chemical unit, and then we add a chemical unit identifier.

[00:11:23] Speaker 00:
Then another chemical unit, so that'll be x1, z1.

[00:11:26] Speaker 00:
Then another chemical unit, x2.

[00:11:29] Speaker 00:
Over here, the chemical unit identifier, z2.

[00:11:32] Speaker 00:
And that is the essence of the instruction, is that for every chemical unit, there is a chemical unit identifier.

[00:11:39] Speaker 00:
Without that, there is no invention here.

[00:11:40] Speaker 00:
There's nothing new.

[00:11:42] Speaker 00:
So now let's look at the polymer, which is defined in this formula, X sub n sub a. And then over here, we have the oligonucleotide, which is made up of these individual chemical unit identifiers, Z sub n sub a.

[00:11:55] Speaker 00:
So what does little a mean in each of those contexts?

[00:11:59] Speaker 00:
In the context of x sub n sub a, the patent is very clear.

[00:12:03] Speaker 00:
If we look at appendix 33, column 4, lines 39 through 42, it says the length of polymer a. I'm sorry, which columns did you say?

[00:12:12] Speaker 00:
I'm sorry, I'm going too fast.

[00:12:13] Speaker 00:
Column 4.

[00:12:14] Speaker 00:
Yeah.

[00:12:15] Speaker 00:
You can find it in appendix 33, column 4, lines 39 through 42.

[00:12:20] Speaker 00:
It says the length of polymer a can vary defined by little a.

[00:12:25] Speaker 00:
So now.

[00:12:25] Speaker 00:
Line which?

[00:12:27] Speaker 00:
Lines 39 through 42.

[00:12:29] Speaker 00:
Let me make sure I've got that citation right, Your Honor.

[00:12:31] Speaker 00:
That's right.

[00:12:33] Speaker 00:
And so it says right there that it can vary, and it is defined by little a. Then we go.

[00:12:41] Speaker 04:
Little a typically is an integral from 4 to 50.

[00:12:44] Speaker 00:
Correct, Your Honor.

[00:12:45] Speaker 00:
So it says typically.

[00:12:46] Speaker 04:
Not from 11 to 50.

[00:12:48] Speaker 00:
No, it says typically 4 to 50.

[00:12:50] Speaker 00:
Now what's interesting is that typically is done in conjunction with, if you look at the line right above that, it says although the length of the polymer may vary.

[00:12:59] Speaker 00:
So they're talking about big A over there.

[00:13:01] Speaker 00:
The length of the polymer may vary defined by little a. Practical library size limitations arise if there is a large alphabet size as discussed herein.

[00:13:12] Speaker 00:
Then it says so typically,

[00:13:15] Speaker 00:
Little a is an integer from 4 to 50.

[00:13:16] Speaker 00:
In other words, they're kind of capping it out at 50 because otherwise you might get a huge library.

[00:13:21] Speaker 00:
Now somehow this typically language ends up in the claim as a limitation.

[00:13:26] Speaker 00:
We don't know why, but there it is tagged on to the end of claim 1.

[00:13:30] Speaker 00:
So how do we measure the length of polymer a as represented by little a?

[00:13:36] Speaker 00:
Then we go to column 9, lines 9 through 11, and column 9,

[00:13:44] Speaker 00:
specifically says that little a represents the number of chemical units of forming x of x forming the polymer a i e the length line at column nine column nine your honor at line nine line nine a is an exponent of e

[00:14:05] Speaker 00:
Yes, Your Honor, and represents the number of chemical units of x. So each of those chemical units that make up x that forms polymer A, i.e.

[00:14:16] Speaker 00:
the length of polymer A. So i.e.

[00:14:20] Speaker 00:
means the length of polymer A is the number of chemical units.

[00:14:26] Speaker 00:
So that's every single x, x1, x2, x3.

[00:14:31] Speaker 00:
And that is exactly what the judge's claim construction is.

[00:14:34] Speaker 00:
The judge construed little a in the context of x sub n sub a as representing the number of chemical units forming polymer a. Got it right out of the patent.

[00:14:47] Speaker 00:
Undisputed, that's the language.

[00:14:49] Speaker 00:
There is not one word in the patent to support Scripps construction that it should be the number, little a represents the number of monomers.

[00:14:57] Speaker 00:
There's nowhere anywhere in the patent that it talks about that.

[00:15:02] Speaker 00:
That's the course construction of little a in the context of x sub n sub a. Now let's turn to little a in the context of z sub n sub a. There we have to look at column five and look, if we can, at line 63.

[00:15:18] Speaker 00:
So now we have z sub n sub a being described.

[00:15:23] Speaker 00:
And specifically, it says, wherein z is the unit identifier nucleotide sequence within oligonucleotide c,

[00:15:31] Speaker 00:
that identifies the chemical unit x at position n, and then it talks about n having a value, et cetera, and then it says little a, it's right at the end of that paragraph, is an integer, as described previously, so it's the integer that's between 4 and 50, to connote the number of chemical unit identifiers in the oligonucleotide.

[00:15:55] Speaker 00:
And, Your Honor, Judge Clem, did you hit the nail on the head?

[00:15:58] Speaker 00:
Okay, well what does connote mean?

[00:16:01] Speaker 00:
In this context, it means that it will describe.

[00:16:07] Speaker 00:
It logically is the number of chemical unit identifiers in the oligonucleotide.

[00:16:13] Speaker 04:
I didn't just say that instead of saying keynote, because keynote doesn't have that specific meaning that you were just giving me.

[00:16:21] Speaker 02:
Actually, it would be analogous to designate

[00:16:25] Speaker 00:
Yes, Your Honor, designate, identify, represent.

[00:16:29] Speaker 00:
It doesn't say denote, and it doesn't say is.

[00:16:31] Speaker 00:
We'll give you that.

[00:16:33] Speaker 00:
But the reason for keynote is that the logic is it

[00:16:37] Speaker 00:
You go back to the invention.

[00:16:39] Speaker 00:
The invention is for every chemical unit, you have a chemical unit identifier.

[00:16:44] Speaker 00:
So obviously, if little a on the side of polymer A represents the number of chemical units forming polymer A, which we know it does because that's what the patent says at column nine,

[00:16:56] Speaker 00:
Then, obviously, little a on the z side connotes the number of chemical unit identifiers in the oligonucleotide.

[00:17:04] Speaker 00:
That's just the logic of it, because that's the essence of the invention.

[00:17:08] Speaker 04:
For every x, there's a z. If we have... So the question is, how do you measure the size of the unit?

[00:17:15] Speaker 00:
You measured the size of the chemical unit.

[00:17:20] Speaker 00:
That is actually not subject to any kind of a disagreement here.

[00:17:25] Speaker 00:
There is a great deal of discussion about the length of... Are there a lot of monomers in a chemical unit?

[00:17:32] Speaker 04:
There can be multiple monomers in a chemical unit, but that is... One way you could count the length of units is by asking how many monomers there were.

[00:17:43] Speaker 00:
You're absolutely right.

[00:17:45] Speaker 04:
I mean, I think that's right.

[00:17:46] Speaker 04:
That's where the district court said that Scripps's take on this was understandable and justified.

[00:17:54] Speaker 04:
I mean, it's not as if something was just dreamed up in the sky by a history major like Clevenger and dropped in here.

[00:18:03] Speaker 04:
So I mean, their theory has legs, right?

[00:18:07] Speaker 00:
Not when it comes to oligonucleotide C. And we just heard it again today in oral argument.

[00:18:12] Speaker 00:
The argument was made that if you looked at, I believe the court asked, give me an example of where the length of oligonucleotide C is measured by the number of monomers.

[00:18:24] Speaker 00:
And counsel pointed to column 11, starting line 55.

[00:18:30] Speaker 00:
It says, thereafter, the product is alquoted and cycled as before, resulting in the preparation of a product A, X sub N sub A, linker B,

[00:18:40] Speaker 00:
And then P1, Z sub n sub a. Anyway, wherein little a indicates the presence of a polymer of length a. The only time length is used in the patent to describe either side of what's on the linker molecule is always in relation to the length of the polymer.

[00:19:03] Speaker 00:
It is never, ever used in relation to the length of oligonucleotide C.

[00:19:09] Speaker 04:
Isn't the elephant in your room that 83% of the scope of the claim is written out?

[00:19:16] Speaker 04:
So you never get to 50.

[00:19:17] Speaker 04:
You stop at 11.

[00:19:18] Speaker 04:
And that's always true under your claim interpretation and that of the district courtship.

[00:19:23] Speaker 04:
So I mean, the problem I have is that I don't buy your attempt to come to grips with that by providing examples simply to show where, depending on what you throw in to A, you may or may not meet the limitations of the claim.

[00:19:39] Speaker 04:
I understand and the district court doesn't come to grips with this at all.

[00:19:43] Speaker 04:
And so when you play by the rules of engagement.

[00:19:46] Speaker 04:
And claim construction, and somebody comes along with an interpretation or just chops a claim in half or chops.

[00:19:53] Speaker 04:
Leave 17% of the claim there.

[00:19:56] Speaker 04:
You're a little suspicious, right?

[00:19:58] Speaker 04:
Understood, Your Honor.

[00:20:00] Speaker 04:
Sorry, go ahead.

[00:20:01] Speaker 04:
Shouldn't I be suspicious if the district court doesn't even recognize this?

[00:20:05] Speaker 00:
No, Your Honor, because the district court did recognize it.

[00:20:07] Speaker 00:
And didn't say anything about it in the opinion.

[00:20:09] Speaker 00:
Actually, the district court did recognize it and discussed it.

[00:20:13] Speaker 00:
If one accepts.

[00:20:14] Speaker 00:
What does the district court say?

[00:20:16] Speaker 00:
The district court talked about if you accepted.

[00:20:18] Speaker 04:
My ma'am missed it.

[00:20:21] Speaker 00:
Scripps Construction.

[00:20:22] Speaker 04:
Help me out.

[00:20:23] Speaker 00:
Yes, Your Honor.

[00:20:24] Speaker 04:
I got the opinion here.

[00:20:26] Speaker 04:
Appendix 11.

[00:20:29] Speaker 00:
So what the district court discussed, there we are.

[00:20:33] Speaker 04:
Tell me where they recognize that by 1 to 11 chops off 12 to 15.

[00:20:41] Speaker 00:
Uh-oh.

[00:20:41] Speaker 00:
I apologize, Your Honor.

[00:20:42] Speaker 00:
The district court didn't explicitly address that issue.

[00:20:45] Speaker 00:
What the district court did point out is that- Don't you think that's sort of strange?

[00:20:48] Speaker 04:
I mean, I'm talking about rules of engagement again.

[00:20:51] Speaker 00:
No, because what the district court did was follow Phillips in saying that you have to, whatever construction the court comes up with, has to be consistent with the purpose of the invention.

[00:21:03] Speaker 00:
So to accept Scripps Construction, they're trying to read on our accused product.

[00:21:09] Speaker 04:
The purpose of the invention is to allow people to identify what type of a chemical might have a positive effect on some particular problem, and then to know who it is because you gave it an ID.

[00:21:21] Speaker 04:
Exactly on it.

[00:21:22] Speaker 04:
That's what it's all about how you how you go about counting for purposes of the minutiae down in the weeds Isn't part of the purpose of the invention.

[00:21:32] Speaker 04:
I would beg problem here is totally Divorced from the purpose of the invention.

[00:21:37] Speaker 04:
I would beg to differ you on everything where in the patent it says the purpose of this invention is to

[00:21:46] Speaker 04:
What is your view to provide a specific way to count the size of a chemical unit?

[00:21:53] Speaker 00:
Actually, we start right at column two and we look at go down to line 50 under the brief summary of the invention.

[00:22:00] Speaker 00:
It specifically is talking about the present invention provides a way of combining the virtues of both of the chemical and genetic methods summarized above.

[00:22:10] Speaker 00:
They talk about how you do all of these through the construction of encoded combinatorial chemical libraries.

[00:22:15] Speaker 00:
in which each chemical sequence is labeled by an appendogenetic tag.

[00:22:22] Speaker 00:
It's self-constructed by chemical syntheses to provide a retrogenic way of specifying each chemical structure.

[00:22:30] Speaker 00:
So in other words, and then it goes on to talk about this parallel method of how you create this bifunctional molecule.

[00:22:37] Speaker 00:
For every X, there's got to be a Z. That is the essence of the invention.

[00:22:42] Speaker 00:
And that is why the coarse construction of little a is consistent.

[00:22:46] Speaker 04:
The coarse construction is that a represents the number of chemical units in polymer a, and little a represents the- I've heard all of your argument, but I still haven't heard you to explain why it is that I shouldn't be worried about a clamp construction that chops

[00:23:04] Speaker 04:
83% of the claim out.

[00:23:07] Speaker 04:
Why shouldn't we worry about that?

[00:23:09] Speaker 04:
Because if we accept plaintiffs' construction that then doesn't chop it out, what we end up with is an invention that is not this invention, because if applied to our probe... It's not this invention because it isn't going to succeed in allowing you to identify which particular part of A of the polymer worked.

[00:23:34] Speaker 00:
That's not this invention.

[00:23:35] Speaker 00:
There are plenty of other inventions that allowed you to do that.

[00:23:38] Speaker 00:
This invention allowed you to build a bi-functional molecule, one a chemical unit on one side, and then its unit identifier.

[00:23:46] Speaker 00:
And their construction allows that.

[00:23:48] Speaker 00:
It perfectly allows that.

[00:23:49] Speaker 00:
Not only allows, it requires it.

[00:23:51] Speaker 00:
That's how you do it.

[00:23:53] Speaker 03:
Now, the problem, what we got here... I think the other side's construction.

[00:23:58] Speaker 03:
Did you just say that their claim construction allows the alternating process that is the essence of this invention?

[00:24:04] Speaker 00:
It allows it until they try to apply it then to our invention.

[00:24:09] Speaker 00:
Because if you then take their construction, which is little eight represents the number of monomers,

[00:24:14] Speaker 00:
So you're OK as long as you've got a chemical unit over here and a chemical unit identifier over here.

[00:24:21] Speaker 00:
Now let's apply it, which is what they're doing, to our invention.

[00:24:24] Speaker 00:
Our invention, we would have then on this side, it's the number of monomers, we would end up with 50.

[00:24:33] Speaker 00:
Little a would represent 50.

[00:24:35] Speaker 00:
And on the z side, if those are allegedly the chemical unit identifiers, which are, you count up by the number of monomers, we'd end up with 29.

[00:24:43] Speaker 00:
Now we don't have their invention anymore because there's no one-to-one correspondence.

[00:24:47] Speaker 00:
We've got 50 monomers over here and only 29.

[00:24:50] Speaker 04:
Why does their invention require length to be equal?

[00:24:56] Speaker 04:
Their invention is silent on the length of oligonucleotide C. The answer is, so what if you've got a different number of monomers on each side of B?

[00:25:07] Speaker 04:
Who cares?

[00:25:08] Speaker 04:
Because you no longer have a one-to-one correspondence.

[00:25:12] Speaker 04:
But you can still identify.

[00:25:14] Speaker 04:
The purpose of the invention works.

[00:25:16] Speaker 04:
What you'd have to do is have... Right, I mean, it works.

[00:25:23] Speaker 04:
Your client's product works.

[00:25:26] Speaker 00:
Our client's product works, but not in the way of the claimed invention.

[00:25:30] Speaker 04:
Works in exactly the same way.

[00:25:31] Speaker 04:
It throws at a problem something, and that something has its ingredients individually tagged.

[00:25:43] Speaker 04:
So that when you hit it, bang, you know what hit it.

[00:25:46] Speaker 00:
Yes.

[00:25:46] Speaker 00:
And here's how we do it.

[00:25:47] Speaker 00:
We have one probe.

[00:25:50] Speaker 00:
That's X1.

[00:25:51] Speaker 00:
And we have one address.

[00:25:52] Speaker 00:
That's Z1.

[00:25:54] Speaker 00:
So even under their construction, then, we would have one.

[00:25:58] Speaker 00:
A would be 1.

[00:26:00] Speaker 00:
Little a would be 1 on this side.

[00:26:02] Speaker 00:
And little a would be 1 on that side.

[00:26:03] Speaker 00:
And we still don't infringe.

[00:26:05] Speaker 00:
So either way, so this court would have to find, in order to find infringement, this court would have to find.

[00:26:11] Speaker 00:
Because it's counting my mom.

[00:26:13] Speaker 00:
This court would have to find that the court was wrong when the court construed little a in the context of x to represent the number of chemical units forming polymer a, which comes directly from column 9, lines 9 through 11.

[00:26:27] Speaker 00:
This court would have to find the court was wrong in construing that, or if the court finds it was right in construing that, but wrong in construing little a in the context of z as connoting the number of chemical unit identifiers in the oligonucleotide,

[00:26:41] Speaker 00:
which comes right from column 5, line 63 to 65.

[00:26:45] Speaker 00:
If the court was wrong on little a in the context of x, but right in the context of z, we have no infringement.

[00:26:51] Speaker 04:
If the court was right in the context of x. I'm less worried about your infringement than I am about the intellectual and legal exercise of interpreting a claim.

[00:27:03] Speaker 04:
The point, though, being your own.

[00:27:04] Speaker 04:
The fact that your product may or may not infringe, I mean, as you well pointed out,

[00:27:08] Speaker 04:
and your reply to their argument about the 83%, depending on what you throw at the problem, you may or may not meet the limitations of the claim.

[00:27:17] Speaker 00:
But here, we're talking about the court would have to, in order to remand this case, find the court was wrong in interpreting little a in the context of x, even though the court's construction came directly from the patent, was wrong in interpreting little a in the context of z, even though the construction came directly from the patent,

[00:27:36] Speaker 04:
N was wrong in interpreting link or molecule B. So you basically say Kenos doesn't mean is, and the library reference is distinguishable.

[00:27:42] Speaker 00:
Actually, the library reference, they claim, is exemplary.

[00:27:46] Speaker 00:
It's not.

[00:27:46] Speaker 00:
If we look at the library reference and where it's referenced.

[00:27:49] Speaker 04:
When you're telling me what I have to do to write an opinion, I was telling you how one can put it.

[00:27:56] Speaker 00:
Just very quickly, Your Honor, I'm not seeing any lights here.

[00:27:59] Speaker 04:
We don't need to argue about what's in the opinion yet.

[00:28:03] Speaker 00:
So Your Honor, the library reference, just to point out,

[00:28:05] Speaker 00:
is that their rebuttal to the library reference is that it's exemplary, it's not.

[00:28:10] Speaker 00:
If we look at column 9, line 7 through 10, it is not exemplary.

[00:28:15] Speaker 00:
It comes before the example.

[00:28:17] Speaker 00:
So I just wanted to make that very clear, Your Honor.

[00:28:22] Speaker 00:
And I don't know if the court wants to talk about linker molecule B or if I should stop there.

[00:28:26] Speaker 00:
Thank you very much.

[00:28:33] Speaker 01:
Your Honor, the trouble with Illumina's argument, as they point out, is that a proper construction will result in infringement, which is why they'd like to maintain the district court's construction.

[00:28:43] Speaker 01:
But talking about the rules of engagement, just as this court has rejected a plaintiff's attempt to expand- I don't think they said a proper construction would result in infringement.

[00:28:52] Speaker 01:
Well, we believe that a proper construction would give the full range of value to A, such that the length of Polymer A or Oligocene could be between 4 and 50 monomers.

[00:29:01] Speaker 01:
And we would not have a minimum number of chemical units x is 4, which is also improper under the district court's construction, because the patent is silent on a minimum number of chemical units.

[00:29:11] Speaker 01:
But chemical units, like unit identifier C, are logical.

[00:29:16] Speaker 01:
They're not structural, because there can be multiple monomers in each chemical unit.

[00:29:21] Speaker 01:
So while claim one is attempting to define the bifunctional molecule in terms of both characteristics and structure under the district court's construction, it conflates

[00:29:30] Speaker 01:
X's to length, which we believe is improper.

[00:29:34] Speaker 01:
There's no dispute in column four that the patent defines little a as the length of polymer A. There's no dispute that polymer A can be an oligonucleotide, and there's no dispute that when measuring the length of an oligonucleotide, it's measured by its constituent nucleotides, which in every case will be more than the number of chemical units and chemical unit identifiers.

[00:29:55] Speaker 03:
Does your view of the matter

[00:29:57] Speaker 03:
reflect the process of alternating construction of the polymer on one side and essentially the genetic tag on the other piece by piece.

[00:30:09] Speaker 03:
So there's a one-to-one correspondence.

[00:30:11] Speaker 01:
There will always be a one-to-one correspondence.

[00:30:14] Speaker 01:
I think an important point is Illumina's argument is premise mostly focusing on synthesis, on the method or process of building it.

[00:30:21] Speaker 01:
Claim one is not a method or a process claim.

[00:30:23] Speaker 01:
It's essentially an apparatus claim defining the molecule in terms of its properties and its structure, which also leads to the improperness of the district court adopting the PTABS construction of linker molecule B, which now limits the linker molecule B to a specific polymer, polypeptides, and also includes essentially some synthesis requirement about coupling and decoupling.

[00:30:45] Speaker 01:
But Scripps construction preserves the full range

[00:30:48] Speaker 01:
of both n such that there can be 1 to 11 unit identifiers and chemical units and each could be of a length between 4 and 50.

[00:30:58] Speaker 03:
Can I ask you what may be a completely trivial question, but why did the claim say n equals 1 plus i as i goes from 0 to 10 instead of n just goes from 1 to 11?

[00:31:09] Speaker 01:
I wish I had an answer, but I can say in

[00:31:13] Speaker 01:
pointing to another error in the district for its construction, it points to little a in the language of claim one as being a is an integer to say that it's both singular and identical for both polymer A and oligo C. But n, as defined through i, is also an integer.

[00:31:28] Speaker 01:
But there's no dispute that n is a range between, say, 1 and 11.

[00:31:32] Speaker 01:
If there's 11 chemical unit identifiers, there's 11 x's and 11 z's on either side.

[00:31:38] Speaker 01:
But it's a range.

[00:31:39] Speaker 01:
It's not a singular, identical value for both sides.

[00:31:42] Speaker 01:
Because this isn't a chemical equation.

[00:31:44] Speaker 01:
It's not a mathematical equation.

[00:31:46] Speaker 01:
It's defined by its structure.

[00:31:50] Speaker 01:
With that, Your Honor, there's no more questions.

[00:31:53] Speaker 01:
Thank you very much.

[00:31:54] Speaker 01:
Thank you, Counsel.