[00:00:00] Speaker 02:
Rackout Diagnostics versus Maya Pharmaceuticals 20-1387, Mr. Zimmerman.

[00:00:09] Speaker 00:
Good morning, Your Honor.

[00:00:10] Speaker 00:
May it please the Court?

[00:00:12] Speaker 00:
The District Court erred as a matter of law in construing the functional terms surfactant, surfactant solubilizer, and buffer to effectively eliminate their functions.

[00:00:24] Speaker 00:
With respect to the term surfactant, by construing this term to mean an excipient that may, yet is not required to reduce the interfacial tension, the district court rendered the surfactant optional.

[00:00:37] Speaker 00:
Reducing interfacial tension is the only function identified for the surfactant in the patent, and the district court recognized this.

[00:00:47] Speaker 00:
At appendix page 21, the district court stated, the specifications and claims adequately connote the meaning of surfactant.

[00:00:55] Speaker 00:
That is, the purpose of adding this compound to the formulation is to reduce the interfacial tension.

[00:01:02] Speaker 02:
Mr. Zimmerman, I'm looking at the claim construction.

[00:01:06] Speaker 02:
The judge didn't seem to distinguish the construction of one claim versus another.

[00:01:14] Speaker 02:
And of course, they're different.

[00:01:15] Speaker 02:
Claim one.

[00:01:17] Speaker 02:
claim three and six.

[00:01:19] Speaker 02:
But looking at the clamp construction for buffer, it's defined as an excipient that stabilizes the pH and consequently reduces the risk of stability.

[00:01:30] Speaker 02:
I think it means instability.

[00:01:34] Speaker 02:
But then there is a long sentence beginning, buffering agents useful in the preparation are as follows.

[00:01:44] Speaker 02:
Is that long sentence

[00:01:46] Speaker 02:
part of the claim construction of claim one?

[00:01:51] Speaker 00:
It is, Your Honor.

[00:01:52] Speaker 00:
And if you turn to page 16 of the opinion, the district court makes that abundantly clear.

[00:01:59] Speaker 00:
He states, here the patent holder substantially defined the buffer to certain ones set forth in the specification and claims.

[00:02:10] Speaker 02:
That may be true of claim three.

[00:02:13] Speaker 02:
where it's stated where the buffer is, but to construe the term buffer to include all of this long list of materials, that doesn't seem sound, does it?

[00:02:30] Speaker 00:
It isn't, and that was part of the error in the district court's construction.

[00:02:34] Speaker 02:
His first sentence of the construction... But then when you get to claim three, that's a proper claim, isn't it, where buffer is defined as?

[00:02:44] Speaker 02:
Yes.

[00:02:45] Speaker 02:
And you fall within that claim because you have an amino acid.

[00:02:51] Speaker 02:
And you stipulate it to an infringement.

[00:02:55] Speaker 02:
And so therefore, don't you lose based on claim three?

[00:02:59] Speaker 00:
No, Your Honor.

[00:03:00] Speaker 00:
The correct interpretation of claim three is that you have to actually perform the buffer function of claim one using one of the components in claim three

[00:03:13] Speaker 00:
And the problem with all of these is while Maya's product contains amino acids, they don't perform these functions in the formulation, and we were denied any opportunity to show that.

[00:03:26] Speaker 02:
The district... Isn't that a question of validity, operability, and validity isn't before us?

[00:03:35] Speaker 00:
No, Your Honor, it's not a question of validity.

[00:03:37] Speaker 00:
Infringement turns on does the amino acid in Maya's product

[00:03:42] Speaker 00:
actually perform a buffer function.

[00:03:45] Speaker 00:
If not, it's not the claim buffer and therefore we don't infringe.

[00:03:49] Speaker 00:
And so by reading the list in and saying that list is predetermined to meet the function, the district court effectively read the function out of the buffer limitation as he did with the other ones.

[00:04:03] Speaker 00:
And so the district court's construction would have been correct if he had stopped at the end of the first sentence that

[00:04:11] Speaker 00:
buffers stabilize the pH of synchronized formulations of the inventions and consequently reduces the risk of chemical stability.

[00:04:20] Speaker 00:
The district court erred by predetermining that the things in the list necessarily meet that function in a given formulation.

[00:04:29] Speaker 00:
As the court is aware, buffering function is dependent on the pH of a particular formulation.

[00:04:38] Speaker 00:
And so you can have components that buffer in some formulations and don't in others.

[00:04:44] Speaker 02:
And that was the... Your argument is that the claim construction of claim one was incorrect because it should have stopped at the end of the first sentence.

[00:04:56] Speaker 02:
And that being the case, your material

[00:05:04] Speaker 02:
doesn't meet the functional definition of a properly construed claim one.

[00:05:10] Speaker 00:
That is correct, your honor.

[00:05:12] Speaker 00:
And the district court did not distinguish his buffer construction between claim one or claim three.

[00:05:18] Speaker 00:
It's the same construction for all.

[00:05:21] Speaker 00:
And he read the list into the claim as a definition.

[00:05:25] Speaker 00:
And he couldn't have been more clear on page 16 of the opinion

[00:05:29] Speaker 00:
He says, this list of buffers is sufficient to define the term in the context of the patent.

[00:05:36] Speaker 00:
And so he viewed the list as a definition that is predetermined to meet the function, which is not the case.

[00:05:44] Speaker 02:
And your stipulation is based on our affirming the claim construction of claim one, which you have just said we should not do.

[00:05:56] Speaker 00:
Your Honor, the stipulation is under the district court's construction.

[00:06:01] Speaker 00:
Under any other construction, the stipulation vanishes pursuant to its own terms.

[00:06:08] Speaker 00:
And that's at 3674 paragraph 4.

[00:06:15] Speaker 01:
Mr. Zimmerman, this is Judge Chen.

[00:06:18] Speaker 01:
I'm trying to understand your view of how to

[00:06:24] Speaker 01:
understand the interrelationship between claim one and claim three as to the buffer term?

[00:06:34] Speaker 01:
Yes.

[00:06:34] Speaker 01:
What if claim one had simply said, for limitation S, a buffer wherein said buffer is an amino acid, period.

[00:06:52] Speaker 01:
And then,

[00:06:54] Speaker 01:
an accused product has an amino acid, why wouldn't that accused product automatically meet the buffer limitation by virtue of having an amino acid?

[00:07:10] Speaker 00:
Because you can have an amino acid in a formulation, Your Honor, that has no buffering effect.

[00:07:17] Speaker 00:
And so it was... Right, right.

[00:07:19] Speaker 01:
I understand that point of view, but I'm just trying to understand in terms of

[00:07:24] Speaker 01:
how to think about the claim.

[00:07:26] Speaker 01:
What is the claim communicating to one of skill and the art based on patent law principles?

[00:07:35] Speaker 01:
Hasn't the claim invention basically informed all of us that an amino acid is a buffer?

[00:07:46] Speaker 01:
A buffer is an amino acid.

[00:07:48] Speaker 01:
So you might be right that,

[00:07:54] Speaker 01:
it is untrue as a matter of science that particular amino acids are unable to serve the function of the buffer.

[00:08:05] Speaker 01:
But nevertheless, the claim as drafted is telling us an amino acid is a buffer.

[00:08:13] Speaker 01:
And so aren't we just stuck with that understanding of the claim?

[00:08:18] Speaker 01:
No.

[00:08:20] Speaker 01:
Rather than having to go through an additional

[00:08:23] Speaker 01:
I don't know, proof inquiry as to whether or not a given amino acid in a given formulation serves said buffering function.

[00:08:35] Speaker 00:
Maybe I can clarify, Your Honor.

[00:08:37] Speaker 00:
So, claim one simply recites a buffer, and the specification tells us at column nine, lines 45 and 46, that buffering agents are employed to stabilize the pH of synkylide formulations of the invention.

[00:08:53] Speaker 00:
And so there was no dispute in the district court that the component, the buffer, actually has to perform that function.

[00:09:03] Speaker 00:
And Bracco admitted it at appendix 2490 and 2495.

[00:09:08] Speaker 00:
The dependent claim simply narrows that to a particular list, but it still has to perform the function of claim one.

[00:09:19] Speaker 00:
So it's best understood as,

[00:09:21] Speaker 00:
Claim one requires a buffer that performs a particular function, and the dependent claim narrows it to performing that function using a particular thing.

[00:09:31] Speaker 00:
The dependent claim doesn't read the function out.

[00:09:35] Speaker 00:
It narrows the list of things that are used to perform the required function of the independent claim.

[00:09:42] Speaker 02:
Mr. Zimmerman, I understand that.

[00:09:45] Speaker 02:
Your point is that the dependent claim reads the function, should read the function in.

[00:09:53] Speaker 00:
The dependent claim narrows the independent claim from performing the function with any buffer to performing the function with a particular list of buffers.

[00:10:06] Speaker 02:
Right.

[00:10:07] Speaker 02:
Mr. Zimmerman, this is Judge Clevinger.

[00:10:09] Speaker 02:
When the patentee chooses to identify a specific material as the buffer, then having the patentee in a claim where they say,

[00:10:23] Speaker 02:
the buffer has to perform the function in the formulation.

[00:10:27] Speaker 02:
And for purposes of claim three, the buffer is X. I think what Judge Lurie was asking earlier in that circumstance, hasn't the patentee predetermined that the named ingredient, i.e.

[00:10:43] Speaker 02:
in case of claim three, the amino acid does perform a function?

[00:10:48] Speaker 02:
If you look at it as a public notice function of claims,

[00:10:54] Speaker 02:
I think the presiding judge's initial question to you was saying, as a matter of public notice of function of claims, when the patentee selects the amino acid as something that performs the function, then why isn't that the predetermination for purposes of the patent?

[00:11:16] Speaker 02:
And that if someone comes along and says, I have the amino acid, isn't he saying, I have the acid

[00:11:23] Speaker 02:
in claim three that performs the function.

[00:11:28] Speaker 00:
And to clarify that, I think the answer is no.

[00:11:30] Speaker 00:
Because if you look at this patent, at column 10, it tells you about amino acids and that they can be used as stabilizers.

[00:11:41] Speaker 00:
It also includes amino acids in the list of surfactant.

[00:11:45] Speaker 00:
It concludes them in the list of surfactant solubilizer.

[00:11:49] Speaker 00:
It includes them in the list of buffer.

[00:11:51] Speaker 00:
The fact that an amino acid can have any one of those functions or multiple of those functions in a given formulation doesn't mean that it necessarily has it in every formulation.

[00:12:05] Speaker 00:
And that's the problem here.

[00:12:07] Speaker 00:
We've never gotten to the point of does the amino acid actually serve the buffer function?

[00:12:21] Speaker 00:
And I believe that was my time.

[00:12:23] Speaker 00:
Does the panel have other questions?

[00:12:27] Speaker 02:
Well, apparently not at this point.

[00:12:31] Speaker 02:
Let's hear from Mr. Rhodes.

[00:12:35] Speaker 03:
May it please the court, in further discussion of the questions, I just want to make sure we're clear on one thing.

[00:12:47] Speaker 03:
And that is, in the first stipulation between the parties,

[00:12:51] Speaker 03:
despite what may is arguing now, may have put in the stipulation that the issue as to whether amino acids fulfilled the buffer surfactant volatilizer and surfactant was thoroughly briefed and considered.

[00:13:13] Speaker 03:
That Appendix 3671, that's the first stipulation,

[00:13:18] Speaker 03:
Mea stated this, and this is a whereas clause that Mea put in, and it's Mea's position.

[00:13:26] Speaker 03:
It says, Mea's Markman responsive brief and supporting papers, including the second declaration of Dr. Klippanoff and the exhibits cited therein, each provided factual and legal evidence and arguments as to why amino acids, and in particular, why Mea's two amino acids,

[00:13:48] Speaker 03:
Do you know?

[00:13:50] Speaker 02:
Mr. Rhodes, we're dealing with claim construction here because that's what the stipulation depends on.

[00:13:56] Speaker 02:
And wasn't the court's claim construction of claim one to include not only the function of a buffer, but all that long list, wasn't that incorrect?

[00:14:10] Speaker 02:
The claim construction of a descriptive material

[00:14:15] Speaker 02:
as listing all of the possibilities, that's not claim construction.

[00:14:20] Speaker 02:
I agree.

[00:14:23] Speaker 02:
Claim three was different because claim three had a Markoosh group of all the possibilities.

[00:14:29] Speaker 02:
But claim construction doesn't, claim construction should be limited to what the term means, not a list of all the possibilities that meet that term.

[00:14:45] Speaker 02:
Isn't that correct?

[00:14:47] Speaker 03:
I think you're correct, but the difference here is we have claim three, which helps define the term by listing the embodiments that the inventors thought fulfilled the buffer.

[00:15:04] Speaker 02:
But doesn't claim three, which refers to a buffer, have to include the functional meaning from claim one?

[00:15:16] Speaker 03:
By the inventor's own definition, the buffers are satisfied by amino acids.

[00:15:25] Speaker 03:
It's in claim three and several other claims that are of the same structure.

[00:15:30] Speaker 03:
It's also in column nine of the specification that says that buffering agents can be and are amino acids.

[00:15:41] Speaker 03:
It's a list.

[00:15:43] Speaker 03:
And I think it's a very helpful list, and you don't see it in that many claim constructions, because not everyone claims this way.

[00:15:52] Speaker 03:
But there's no way, I don't think, legally, there's no case law, there's no argument that may have ever presented as to why the district court or this court could ignore dependent claims that specify what embodiments are going to fit

[00:16:13] Speaker 03:
the claim term.

[00:16:15] Speaker 02:
So your view is that even if the construction of claim one was incorrect, the result is the same because claim three defines, among others, amino acids as needing that term.

[00:16:34] Speaker 03:
Yes, that's the heart of this case.

[00:16:37] Speaker 03:
is whether the district court or this court could ignore those dependent claims that define the disputed terms as including what the mayor admits is in their product to fulfill that role.

[00:16:54] Speaker 01:
Mr. Rhodes, this is Judge Chen.

[00:16:56] Speaker 01:
As I understand Mr. Zimmerman's view of Claim 3 and the list of ingredients that

[00:17:06] Speaker 01:
are referred to as buffers.

[00:17:10] Speaker 01:
I think his argument is that this is a class of ingredients identified here, each of which can serve as a buffer, but not necessarily they always do.

[00:17:25] Speaker 01:
In some cases, they may not.

[00:17:26] Speaker 01:
And so for something like amino acids, there still has to be a

[00:17:33] Speaker 01:
an evidentiary case made as to a particular amino acid and whether that particular amino acid does a buffering effect or not.

[00:17:43] Speaker 01:
And I take it that your view is the way Claim 3 has been drafted, it is declaring that every single amino acid on the planet is a buffer period.

[00:17:59] Speaker 01:
If it turns out that it can be proven that there's an amino acid out there in a syncolyte formulation that does not have any buffering effect, well, then that's an invalidity problem.

[00:18:11] Speaker 01:
Is that your position of how to read claim three?

[00:18:17] Speaker 03:
That's our first position.

[00:18:18] Speaker 03:
Our second position, which we took great care to put in the record, and we apologize.

[00:18:24] Speaker 03:
It's a huge record.

[00:18:25] Speaker 03:
is, as I read in the specification, may have put all its proof in on amino acids.

[00:18:31] Speaker 03:
And we put all of our proof in on amino acids and why those two particular amino acids are buffers.

[00:18:39] Speaker 01:
Right.

[00:18:40] Speaker 01:
But Mr. Rhodes, this is an appeal from a claim construction, essentially.

[00:18:44] Speaker 01:
So we have no way of diving into that kind of fact-bound argument.

[00:18:52] Speaker 01:
here.

[00:18:53] Speaker 01:
The district court certainly didn't make that kind of ruling.

[00:18:56] Speaker 01:
So now all that's left for us is to possibly understand what is the legal effect of Claim 3 and what is it saying.

[00:19:07] Speaker 01:
And what's wrong with the other side's take that what is being listed in Claim 3, those are just things that

[00:19:20] Speaker 01:
can potentially serve as a buffer, but then you have to still go figure out whether in a particular sync-alive formulation, inclusion of any one of those ingredients actually serves as a buffer.

[00:19:31] Speaker 01:
What's wrong with that understanding of claim three?

[00:19:34] Speaker 03:
Well, that's not what the express language of the claim says.

[00:19:38] Speaker 03:
That's not what the express language of the specification in column nine says.

[00:19:44] Speaker 03:
And by the way, this argument has never been raised by MEA.

[00:19:49] Speaker 03:
in its opening and responsive briefs and its expert declarations in the district court.

[00:19:56] Speaker 03:
And it has never been raised in this briefing to this court because Maya has never mentioned those dependent claims with the list, which we believe is the heart of the case.

[00:20:10] Speaker 01:
Yes, but Mr. Rhodes, the district court was just simply construing claim one.

[00:20:19] Speaker 01:
And it wasn't actually construing Claim 3.

[00:20:24] Speaker 01:
So, I mean, to say that Maya didn't argue about Claim 3 is perhaps beside the point.

[00:20:32] Speaker 01:
What everyone was focused on was what's the best understanding of buffers that term is used in Claim 1.

[00:20:39] Speaker 03:
And same thing with Fairfax and Solubilizer in Claim 1.

[00:20:46] Speaker 03:
That was never, never the issue in the case.

[00:20:49] Speaker 03:
The case was how buffer should be used in all of the claims where it appears, and the same with the other two terms.

[00:20:58] Speaker 03:
Claim one was an example perhaps, but how that term should be used in all the claims is very important.

[00:21:06] Speaker 03:
And this relates very much to all the arguments that were made concerning claim 40, because claim one is a formulation.

[00:21:15] Speaker 03:
And the spec at column 13 says it could be a liquid.

[00:21:19] Speaker 03:
It could be a dry powder.

[00:21:21] Speaker 03:
Claim 40 is definitely a dry powder.

[00:21:26] Speaker 03:
And there's no way a buffer is going to be changing the pH in a dry powder.

[00:21:33] Speaker 01:
Let me ask you a different question.

[00:21:38] Speaker 01:
My other question is, as I understand the stipulation,

[00:21:44] Speaker 01:
It's contingent.

[00:21:46] Speaker 01:
The final judgment is contingent on the claim construction.

[00:21:53] Speaker 01:
And if we, the federal circuit, do any modification to any of the claim constructions that are here on appeal, then the case has to go back for further proceedings.

[00:22:10] Speaker 01:
And so if we were to say,

[00:22:14] Speaker 01:
The second sentence for the claim construction of buffer shouldn't be there and it ought to be removed.

[00:22:22] Speaker 01:
And same thing for the other term, the non-exclusive list of ingredients.

[00:22:28] Speaker 01:
That second sentence should also be removed for that other term.

[00:22:32] Speaker 01:
And isn't that alone enough to require this case to be remanded because we did in fact modify the claim construction?

[00:22:42] Speaker 03:
With all due respect, that would be a great law school final question.

[00:22:48] Speaker 03:
It's a great academic question.

[00:22:51] Speaker 03:
But the court doesn't have jurisdiction to take these kinds of issues up.

[00:22:55] Speaker 03:
The court can only address a final judgment.

[00:22:59] Speaker 03:
And the final judgment here is of infringement.

[00:23:02] Speaker 03:
And there has to be a finding of infringement.

[00:23:05] Speaker 03:
And Maya's arguments should have related to how claim construction

[00:23:12] Speaker 03:
could actually change a finding of infringement.

[00:23:19] Speaker 03:
And they never did that.

[00:23:20] Speaker 03:
And so under the United States versus Proctor and Gamble case and many others, the appeals court doesn't have jurisdiction to decide underlying orders for academic reasons and reasons of interest.

[00:23:36] Speaker 03:
It has to relate to the final judgment.

[00:23:39] Speaker 03:
And then there's also the Fed Circuit

[00:23:41] Speaker 03:
that says that if an argument is not made and they never made the argument as to why a claim construction would change the finding of infringement, it's waived.

[00:23:57] Speaker 03:
So that is not, none of those things can be before the court because the court doesn't have jurisdiction to undertake advisory opinions on what claim construction might mean.

[00:24:11] Speaker 02:
I don't know what we're hearing, but I don't think that's a signal that your time is up.

[00:24:16] Speaker 02:
So please continue.

[00:24:18] Speaker 02:
Mr. Roses, Judge Clemenger, I think all of what you're saying depends upon us agreeing with you that Mr. Zimmerman's argument doesn't bear on infringement.

[00:24:31] Speaker 02:
If we disagreed with you on that point, then I understood you to be agreeing with Judge Chen

[00:24:39] Speaker 02:
that our change of the claim construction would require a remand?

[00:24:44] Speaker 03:
I don't believe it would require a remand.

[00:24:47] Speaker 03:
If you remove the list, there's still reams of data that are unopposed by our expert, by references, by internal MEA documents, by their own patent application that say their amino acids

[00:25:04] Speaker 03:
are buffers.

[00:25:06] Speaker 03:
Did the district court rule on that, reams of evidence?

[00:25:10] Speaker 03:
The district court was given that.

[00:25:13] Speaker 01:
But the district court didn't make any ruling on it, is that right?

[00:25:17] Speaker 03:
It made a ruling that amino acid should be included in the claims, which is what that evidence went to.

[00:25:23] Speaker 01:
Well, that's a different question.

[00:25:26] Speaker 01:
Can you please admit for me that the district court

[00:25:30] Speaker 01:
never addressed your reams of evidence in reaching a conclusion about the claims or in arriving at a final judgment?

[00:25:41] Speaker 03:
I would never admit that.

[00:25:43] Speaker 03:
I think the district court... Okay, then where did he say it?

[00:25:46] Speaker 03:
Where did he say it?

[00:25:48] Speaker 03:
Show it to me.

[00:25:50] Speaker 03:
He reviewed the entire record.

[00:25:52] Speaker 01:
No, where did he say it?

[00:25:53] Speaker 01:
You said he relied on it.

[00:25:55] Speaker 01:
Where did he say it?

[00:25:59] Speaker 03:
If I said

[00:26:00] Speaker 03:
He explicitly relied on it.

[00:26:04] Speaker 03:
There's no portion of the order that says that.

[00:26:07] Speaker 03:
However, why should we believe it?

[00:26:09] Speaker 01:
Why should we believe that he did in a silent way?

[00:26:14] Speaker 03:
Because it was all consistent with what he found.

[00:26:18] Speaker 01:
That's not good enough.

[00:26:19] Speaker 01:
That's not good enough.

[00:26:22] Speaker 03:
Well, I'm not going to assume the district court didn't review the evidence.

[00:26:25] Speaker 01:
It didn't.

[00:26:26] Speaker 01:
Well, I'm not going to assume that he did.

[00:26:27] Speaker 01:
I'm not going to assume that he did.

[00:26:29] Speaker 01:
So why don't you have another

[00:26:30] Speaker 01:
argument, if you have any.

[00:26:33] Speaker 03:
Okay, well, here's another reason why, besides the lack of jurisdiction, why mayors should not win this appeal.

[00:26:42] Speaker 03:
And that is because these particular claims we are focusing on are all similar.

[00:26:49] Speaker 03:
And there are, quote, laundry list of excipients that were known to fulfill their desired functions.

[00:26:58] Speaker 03:
That's the position

[00:27:00] Speaker 03:
Maya took in the IPR, the inter-party's review, it filed against the Braco patent.

[00:27:09] Speaker 03:
That's at appendix 2571.

[00:27:15] Speaker 03:
Now they're saying that what we need to do is add all kinds of functions to these lists of excipients.

[00:27:25] Speaker 03:
There's no support.

[00:27:28] Speaker 03:
In the case law for that, and I think that would require new legal principle to be adopted by the court that has never been done before, that requires plain construction of excipients or elements to also be added in their functions.

[00:27:49] Speaker 03:
And in the case of Mayer, the functions of their functions and the advantages of their functions, that would change the whole plain construction

[00:27:57] Speaker 03:
process, it would change the Markman and Phillips decisions, it would be a major change in pad law.

[00:28:06] Speaker 02:
Thank you, Council.

[00:28:08] Speaker 02:
Mr. Zimmerman has some rebuttal time.

[00:28:13] Speaker 00:
I'd like to raise just a few brief points.

[00:28:16] Speaker 00:
Procedurally, the infringement issue was never reached in the district court.

[00:28:20] Speaker 00:
The district court did the claim construction, but expert reports on infringement were never submitted.

[00:28:27] Speaker 00:
So Judge Chen, you were correct that that issue was never addressed by the district court.

[00:28:33] Speaker 00:
The stipulation expressly addresses what happens if this court changes the claim construction.

[00:28:40] Speaker 00:
That's at 3674 paragraph four.

[00:28:44] Speaker 00:
The event the federal circuit reverses, vacates, or remands the court's construction decision, the stipulation terminates.

[00:28:52] Speaker 01:
With respect to the district court's contention that the patentee acted as if... Mr. Zimmerman, are you saying that our court, the appellate court, is constrained in what it can look at based on how you crafted your stipulation?

[00:29:14] Speaker 01:
That is to say, what if, hypothetically, we see the dependent claim as a matter of law telling us something about how to understand the term buffer in claim one?

[00:29:33] Speaker 01:
And so even if we don't, as a formal matter, shovel all those items listed in claim three,

[00:29:43] Speaker 01:
into a formal claim construction of buffer in claim one.

[00:29:47] Speaker 01:
Nevertheless, we can plainly see as a matter of law the operative effect of how to understand buffer given what is stated in claim three.

[00:29:59] Speaker 01:
Are you saying that that interrelationship, that legal interrelationship between claim one and claim three, we are barred from looking at that for purposes of this appeal?

[00:30:10] Speaker 00:
No, Your Honor, you would be free to look at that, but you don't have the requisite findings of what does the buffer, what do the amino acids in MEA's product do for you to be able to say, as a matter of law, they satisfy the construction, assuming any construct, any particular construction requires a function.

[00:30:31] Speaker 00:
If you were to say simply having an amino acid is enough, then yes, the product has amino acid.

[00:30:39] Speaker 00:
and you could do that, but that would not be a proper construction on this record.

[00:30:45] Speaker 00:
And why is that?

[00:30:47] Speaker 01:
Just don't, not talking about what, how your product worked, but just in terms of looking at claims one and three on their face.

[00:30:56] Speaker 00:
Because the patent specifications that buffering agents are employed to stabilize the pH of syncholyd formulations of the invention,

[00:31:08] Speaker 00:
And then at column nine, it tells you useful ones include, but it doesn't answer the question of in a particular formulation, does an amino acid do this buffering function?

[00:31:21] Speaker 00:
And so that finding is not anywhere in the record on this appeal.

[00:31:27] Speaker 00:
So that would be a factual determination for the district court in the first instance.

[00:31:34] Speaker 02:
Mr. Zimmerman, Judge Clemens, what you are saying

[00:31:38] Speaker 02:
in response to the Claim 3 discussion is that a patentee, as a matter of law, cannot predetermine function by naming the specific buffer.

[00:31:55] Speaker 00:
I want to be very clear, Your Honor.

[00:31:57] Speaker 00:
A patentee could say in a patent application, for purposes of this patent, buffer means, and give you a list.

[00:32:08] Speaker 00:
And that would be a definition.

[00:32:11] Speaker 00:
In this case, we don't have that.

[00:32:13] Speaker 00:
And it was undisputed below that the patentee was not acting as its own lexicographer, but was instead offering a plain and ordinary meaning.

[00:32:25] Speaker 00:
And Braco's expert admitted that if you look at.

[00:32:28] Speaker 02:
But Mr. Zimmerman, is the correct claim of interpretation the ultimate lexicography?

[00:32:38] Speaker 02:
If a patentee has made clear in his claim what he is asking for, he's been a lexicographer through the claim.

[00:32:48] Speaker 02:
The whole discussion we've been having is whether or not it would be appropriate here to affirm, notwithstanding the error in the claim construction on claim one, on the ground that claim three reads to carry the

[00:33:05] Speaker 02:
first sentence of the buffer definition, i.e., the function, and then it goes on to say, in Claim 3, that function is performed by the email essence.

[00:33:19] Speaker 00:
And that's where we differ.

[00:33:22] Speaker 00:
Claim 3 says it can be performed by the things on this list.

[00:33:27] Speaker 02:
Show me the word how I'm taking the first sentence of the district court's

[00:33:34] Speaker 02:
on claim construction on buffer, and I'm tagging it on to claim three.

[00:33:46] Speaker 02:
Oh, we haven't, the idea is that, or claim four, pardon me, say that the buffer has to perform the function, and for purposes of the claim, the buffer is an amino acid.

[00:34:02] Speaker 02:
That's the way I'm reading claim three.

[00:34:08] Speaker 00:
Yes.

[00:34:08] Speaker 00:
And that gets you back to the question of, in the particular accused formulation, does it perform that function?

[00:34:18] Speaker 02:
And the past- Well, it's coming around to the same question because Judge Chan asked it with regard to revising the independent claim.

[00:34:27] Speaker 02:
Say, for example, you had an independent claim.

[00:34:30] Speaker 02:
that called for a buffer and said, whereas for purposes of this independent claim, buffer is amino acid.

[00:34:38] Speaker 02:
Your argument is whether it was in that form or in my form of the independent claim, the defendant still gets a chance to prove that the name buffer doesn't perform the function.

[00:34:54] Speaker 00:
That is correct.

[00:34:58] Speaker 02:
And the question is, why is that so?

[00:35:00] Speaker 02:
Why hasn't the patentee told the world the patentee says the buffer has to do X and

[00:35:17] Speaker 00:
In a particular patent, if it had said it with that clarity, but here you're looking at a laundry list of potential buffers, a laundry list of potential surfactant solubilizers, and while they can perform those functions in some formulations, they don't perform them in every formulation.

[00:35:41] Speaker 00:
And so to prove infringement, you actually have to test and see if they do.

[00:35:46] Speaker 02:
But Mr. Zimmerman, you have a stipulation here.

[00:35:49] Speaker 02:
That's your problem.

[00:35:54] Speaker 00:
And, Your Honor, if you look at page 3671 of the Joint Appendix, we were very clear that we were stipulating because there was a list, and that list eliminated the functional aspect.

[00:36:11] Speaker 00:
And so we were denied the opportunity and the district court couldn't have been any more clear.

[00:36:17] Speaker 00:
The district court says in the construction of buffer at page 16, the list is defined to be a buffer.

[00:36:29] Speaker 00:
And we don't think that's the correct reading in the context of this patent.

[00:36:33] Speaker 00:
The patent and the parties agreed below that buffer is a functional term and you have to look at whether there's actually a buffering effect.

[00:36:43] Speaker 00:
And the district court's construction denied us that opportunity.

[00:36:48] Speaker 02:
Thank you, Mr. Zimmerman.

[00:36:51] Speaker 02:
We'll take the case on the submission and thank you both for your arguments.

[00:36:55] Speaker 00:
Thank you, your honor.

[00:36:57] Speaker 02:
Thank you.

[00:37:04] Speaker 02:
The honorable court is adjourned until tomorrow morning at 10 a.m.