[00:00:00] Speaker 02:
Our next case is Flex Stent versus Abbott Vascular in Abbott Laboratories, 2021-12-46.

[00:00:36] Speaker 02:
Good morning, Your Honor.

[00:00:42] Speaker 00:
Good morning.

[00:01:02] Speaker 00:
Please proceed.

[00:01:03] Speaker 00:
Thank you, Your Honor.

[00:01:04] Speaker 00:
May it please the Court.

[00:01:07] Speaker 00:
This appeal turns on the meaning of two plural nouns, horizontal branches, vertical branches.

[00:01:17] Speaker 02:
I thought that this appeal relates to the meaning of the word comprises, which is well established in patent practice.

[00:01:27] Speaker 00:
Your honor, comprises, this appeal does not turn on the meaning of comprises.

[00:01:31] Speaker 00:
Comprises is, as your honor said, well established.

[00:01:36] Speaker 00:
No one disputes that.

[00:01:37] Speaker 00:
When you have a preamble that introduces elements with the phrase which comprises, that means that you can add unrecited elements to the claimed apparatus.

[00:01:51] Speaker 00:
The question is, what are the recited elements and what are the unrecited elements in this case?

[00:02:01] Speaker 00:
Here, the two elements that are recited are plural nouns.

[00:02:05] Speaker 00:
And plural nouns can have one of two

[00:02:08] Speaker 00:
possible meanings.

[00:02:09] Speaker 00:
They can mean, they can refer to two or more out of potentially many.

[00:02:16] Speaker 00:
So for example, if I say those lions over there look hungry, I'm talking about two or more lions out of potentially more lions in the room.

[00:02:27] Speaker 00:
But if I say lions have manes, the plural noun lions

[00:02:33] Speaker 00:
That's not referring to two or more lions out of potentially many.

[00:02:37] Speaker 00:
It's not a subset.

[00:02:39] Speaker 00:
It's referring to an entire class, the class of those things.

[00:02:43] Speaker 04:
What would there be?

[00:02:45] Speaker 04:
So you've got comprises vertical branches and horizontal branches.

[00:02:50] Speaker 04:
And your view is that there can be no other vertical branches or horizontal branches that don't meet the specific requirements of the claim defining vertical branches and horizontal branches.

[00:03:01] Speaker 04:
What else would there be with the use of the word comprises?

[00:03:04] Speaker 04:
Can you tell me what sort of element possibly you would consider would fall within the scope of this claim?

[00:03:10] Speaker 04:
That wouldn't be either a vertical branch or horizontal branch.

[00:03:14] Speaker 00:
What else would there be?

[00:03:15] Speaker 00:
So one example, your honor would be a drug eluding coding, where you can put a coding over the branches.

[00:03:21] Speaker 00:
That's an additional element that can be found in a stent.

[00:03:24] Speaker 04:
But it's your view that there could be no other mechanical structure.

[00:03:29] Speaker 00:
There could be no other horizontal branches or vertical branches.

[00:03:31] Speaker 04:
What else could there be besides horizontal branches and vertical branches?

[00:03:36] Speaker 00:
I haven't thought about that, Your Honor.

[00:03:37] Speaker 00:
You could have something sticking out of a vertical branch, for example, a bump sticking out of a vertical branch that would be a mechanical structure that would be found on the stent.

[00:03:52] Speaker 04:
Would that be common to have a bump on a stent?

[00:03:56] Speaker 00:
It could be, Your Honor.

[00:04:01] Speaker 03:
But so your point is, I guess, that you're claiming a vascular stent.

[00:04:07] Speaker 03:
And so when you say comprising, you didn't just claim branches.

[00:04:11] Speaker 03:
You're saying there's other things like a coating that could be on the vascular stent.

[00:04:14] Speaker 03:
Is that your point?

[00:04:15] Speaker 00:
That's right, Your Honor.

[00:04:16] Speaker 00:
So you have a vascular stent.

[00:04:18] Speaker 00:
It recites two elements that must be there.

[00:04:22] Speaker 00:
And those are these two classes of components, vertical branches, horizontal branches.

[00:04:29] Speaker 03:
As in Apple Samsung, the word each was important.

[00:04:33] Speaker 03:
You have the word each in the written description, but why didn't you put the word each in the claim?

[00:04:41] Speaker 03:
So in other words, claim one could say, and horizontal branches each having waveform properties.

[00:04:49] Speaker 00:
Your honor, if the claim said horizontal branches each having waveform projections, for example, that would have the exact same meaning as the claim we have here.

[00:04:59] Speaker 00:
Let me explain why.

[00:05:00] Speaker 00:
The phrase horizontal branches having waveform projections, that means that the recited horizontal branches, whatever we decide the recited horizontal branches are, those branches have waveform projections.

[00:05:16] Speaker 00:
I don't think that's in dispute.

[00:05:18] Speaker 00:
What's in dispute is whether, in addition to those recited horizontal branches, you can have some additional horizontal branches that are not recited.

[00:05:29] Speaker 00:
If the horizontal branches having waveform, so in other words, that claim element means that every single one, each of the horizontal branches that are recited, those have to have waveform projections.

[00:05:43] Speaker 00:
And that's exactly the same as what was the case in Apple v Samsung.

[00:05:47] Speaker 00:
There we had a plurality of modules.

[00:05:51] Speaker 00:
And then each of those modules in the plurality had to have, has to make use of a different heuristic algorithm.

[00:05:59] Speaker 02:
Counsel, aside from the fact that comprises has this well-known established expanse of meaning, the specification itself has a disclosure which is slightly but broader than the specific dimensions in claim one.

[00:06:23] Speaker 02:
So that supports the established meaning of comprises.

[00:06:29] Speaker 02:
I don't think it does, your honor.

[00:06:30] Speaker 02:
Let me explain why.

[00:06:31] Speaker 02:
0.09 is not larger than 0.08.

[00:06:35] Speaker 00:
Nine is larger than 0.08, your honor.

[00:06:37] Speaker 00:
But let's be clear about what the disclosure is.

[00:06:40] Speaker 00:
The disclosure says that the stent of figure one can have horizontal branches ranging in width from 0.05 to 0.09 millimeters.

[00:06:54] Speaker 00:
As my friend on the other side admits, the stent of figure one

[00:06:58] Speaker 00:
has uniform branches.

[00:07:00] Speaker 00:
So that disclosure is a disclosure that every single one of the horizontal branches in the figure one set, that those branches can have a width of 0.09 millimeters.

[00:07:14] Speaker 00:
That disclosure isn't covered by the claims in our construction and it's not covered by the claims under Abbott's construction.

[00:07:21] Speaker 00:
It is an unclaimed embodiment under either side's construction.

[00:07:26] Speaker 00:
So that

[00:07:27] Speaker 00:
You mean it's not within comprises?

[00:07:31] Speaker 00:
Could you say more about that, Your Honor?

[00:07:32] Speaker 00:
I'm not sure I understand the question.

[00:07:34] Speaker 02:
You mean that disclosure is not within the claim which uses the word comprises?

[00:07:41] Speaker 00:
That's right, Your Honor.

[00:07:41] Speaker 00:
I think that disclosure, a scent that has horizontal branches whose width is 0.09 millimeters, that is not within the claim under our construction.

[00:07:53] Speaker 00:
And it's also not within the comprising claim under Abbott's construction.

[00:07:58] Speaker 02:
So you want us to give comprises a meaning other than its established meaning and in doing so to ignore

[00:08:08] Speaker 02:
a broader disclosure in your specification, call it an unclaimed disclosure?

[00:08:14] Speaker 00:
No, Your Honor, for two reasons.

[00:08:16] Speaker 00:
First, what we're asking Your Honor to do is to give comprising its established meaning, which is that you can have additional unclaimed elements, but you can't undo the elements that are claimed.

[00:08:28] Speaker 00:
So here, if the horizontal branches and vertical branches refer to classes, then there can be no other branches.

[00:08:37] Speaker 00:
So the meaning of comprises is still that you can have more unclaimed stuff.

[00:08:42] Speaker 00:
It's just that you can't have stuff that defeats one of the limitations in the claim.

[00:08:49] Speaker 04:
With respect to- What in your specification will help me to understand that you intended comprises?

[00:08:57] Speaker 04:
I see this as a case involving the meaning of comprises.

[00:09:01] Speaker 04:
That we should give comprises a different interpretation than being open-ended language.

[00:09:06] Speaker 00:
Yes, Your Honor.

[00:09:07] Speaker 00:
So in the specification, the specification describes what this invention is about.

[00:09:14] Speaker 00:
And it explains that the improvement over the prior art claims is, I'm sorry, the improvement over prior art stents is that this stent is more flexible and has better clinical outcomes, less resynosis.

[00:09:32] Speaker 04:
But even the vitamin of figure one

[00:09:35] Speaker 04:
means that criteria, right?

[00:09:37] Speaker 00:
The figure one embodiment, yes, your honor, it does.

[00:09:42] Speaker 00:
But again, the figure one embodiment, it's not an embodiment that's claimed under their construction, but not under ours.

[00:09:50] Speaker 00:
It's an embodiment that most of it is claimed under both size constructions.

[00:09:54] Speaker 00:
And there's a small sliver of it that's unclaimed under either size construction.

[00:09:58] Speaker 00:
Because again, if all of the horizontal branches have a width of 0.09 millimeters, then it doesn't meet the claim that they're either side.

[00:10:06] Speaker 04:
I don't think their construction is that all of the horizontal branches need to have a particular thickness range.

[00:10:16] Speaker 04:
I don't think that's their construction.

[00:10:17] Speaker 04:
So I think you might be incorrect, but we can ask them about it.

[00:10:21] Speaker 03:
I don't actually even understand your answer.

[00:10:23] Speaker 03:
Couldn't comprising include different widths

[00:10:28] Speaker 03:
but just not exclude a wavelength?

[00:10:32] Speaker 03:
I mean, there's a difference between saying it can have something else and saying it can actually wipe out a particular element that you're claiming.

[00:10:45] Speaker 00:
So I think there's two questions here.

[00:10:46] Speaker 00:
So I'll take them in order if that's all right with your honor.

[00:10:48] Speaker 00:
So with respect to Judge Stoll's question, under Abbott's construction,

[00:10:57] Speaker 00:
there have to be two branches, two horizontal branches that are within 0.5 to 0.8 millimeters.

[00:11:05] Speaker 04:
Right.

[00:11:05] Speaker 04:
But there might be other branches that are not within those dimensions, and there might be other branches that don't have the wavelengths, right?

[00:11:14] Speaker 00:
That's right.

[00:11:15] Speaker 00:
So under

[00:11:17] Speaker 00:
Abbott's construction, the figure one embodiment, if you set the width of the horizontal branches to 0.09 millimeters, that embodiment is excluded by their construction too.

[00:11:28] Speaker 00:
It does not follow in the claims because it lacks a horizontal branch that is between two horizontal branches between 0.05 and 0.08 millimeters.

[00:11:40] Speaker 04:
Phillips applies to this claim construction issue, right?

[00:11:44] Speaker 00:
Phillips does apply to this claim construction issue, Your Honor.

[00:11:47] Speaker 00:
And the way it applies is that when you have two possible meanings of a claim term, such as a plural noun, horizontal branches, or vertical branches, then you can look to the specification to determine which of the two interpretations is consistent with the specification.

[00:12:05] Speaker 04:
You're just saying we're not using the RI here.

[00:12:09] Speaker 04:
It's not the broadest reasonable interpretation consistent with the specification.

[00:12:13] Speaker 04:
I understand.

[00:12:17] Speaker 04:
Why don't you answer Judge Malley's question now?

[00:12:21] Speaker 04:
Yes.

[00:12:22] Speaker 00:
I'm sorry, Your Honor.

[00:12:22] Speaker 00:
Can you repeat the question?

[00:12:24] Speaker 03:
Yeah.

[00:12:24] Speaker 03:
I don't really understand your response that it can't include different widths.

[00:12:31] Speaker 03:
I mean, you claim specific widths, but you have comprising.

[00:12:36] Speaker 03:
So presumably you could have different widths.

[00:12:39] Speaker 03:
The question is, does the comprising language allow

[00:12:43] Speaker 03:
your friend on the other side to say we can completely do away with it with the precisely claimed wavelength element.

[00:12:55] Speaker 00:
So comprising comprising the claimed the recited element horizontal branches, if that refers to an entire class of components within within the stent, if it refers to

[00:13:12] Speaker 00:
horizontal branches class of component and that to meet that limitation, to meet the limitation horizontal branches having waveform projections, you would need the entire class of components that constitute horizontal branches to have the limitation of having waveform projections.

[00:13:35] Speaker 00:
If you add a horizontal branch that's straight,

[00:13:38] Speaker 00:
then that limitation is no longer satisfied because you no longer have horizontal branches having waveform projections.

[00:13:46] Speaker 04:
So what if you have just two?

[00:13:47] Speaker 04:
I mean, the claim says a vascular stent which comprises horizontal branches having waveform projections and other limitations.

[00:13:55] Speaker 04:
Why couldn't you have horizontal branches with some other structure?

[00:14:01] Speaker 04:
I mean, when it says comprises, I look at a vascular stent which comprises one vertical branches

[00:14:06] Speaker 04:
two horizontal branches.

[00:14:08] Speaker 04:
Maybe I could have diagonal branches.

[00:14:10] Speaker 04:
Maybe I could have horizontal branches that have a different characteristic than what's claimed as having waveform projections.

[00:14:17] Speaker 04:
Why should I think that your claim should be interpreted differently than other claims that you use comprises?

[00:14:23] Speaker 00:
Well, because the answer is I don't think it should be interpreted differently.

[00:14:29] Speaker 00:
And here's why.

[00:14:29] Speaker 00:
Horizontal branches

[00:14:33] Speaker 00:
is a plural noun that can refer to a category or a class.

[00:14:37] Speaker 04:
There's nothing in here saying every horizontal branch having blah blah blah, or each horizontal branch having blah blah blah.

[00:14:42] Speaker 04:
There's nothing like that.

[00:14:44] Speaker 04:
It's a very broad claim.

[00:14:47] Speaker 00:
Go ahead.

[00:14:48] Speaker 00:
There's the plural noun, horizontal branches.

[00:14:53] Speaker 00:
A plural noun can refer to a class, or it can refer to two or more, out of many.

[00:14:59] Speaker 00:
So we need to look at the context to determine which of these two meanings applies.

[00:15:05] Speaker 00:
Does the claim element refer to an entire class or does it refer to a subset of two or more?

[00:15:12] Speaker 00:
If it refers to an entire class, if that word horizontal branches means the horizontal branch elements of the stent, of the claim stent,

[00:15:23] Speaker 00:
then you can't add an additional horizontal branch that lacks the limitations that follow, because the claim tells us, that limitation tells us, the horizontal branch is classed as component.

[00:15:34] Speaker 00:
They have to have waveform projections.

[00:15:38] Speaker 00:
As soon as you add one.

[00:15:39] Speaker 02:
You've just about used all of your time.

[00:15:43] Speaker 02:
Why don't we hear from the other side, and we'll give you two minutes for a bottle.

[00:15:47] Speaker 02:
Thank you, Your Honor.

[00:15:51] Speaker 02:
Mr. Morrow.

[00:16:06] Speaker 01:
Thank you.

[00:16:07] Speaker 01:
May it please the court.

[00:16:09] Speaker 01:
When the inventor of the 035 patent wrote these claims more than two decades ago, he wrote the claims broadly as comprising claims that had two elements, horizontal branches with certain characteristics and vertical branches with certain characteristics.

[00:16:27] Speaker 01:
He did not use claim language like consisting of.

[00:16:30] Speaker 01:
He did not say all or every or each branch had to have these characteristics.

[00:16:36] Speaker 03:
But it does say that in the written description, doesn't it?

[00:16:39] Speaker 01:
It says at one point in time, Judge O'Malley, it says horizontal branches each have, when describing a preferred embodiment, these waveform projections.

[00:16:48] Speaker 01:
And we would say that helps us and not the other side, because in the specification, when describing an embodiment, they use the word each.

[00:16:56] Speaker 01:
They knew how to use that word.

[00:16:58] Speaker 01:
They claimed it more broadly.

[00:17:00] Speaker 03:
But there is no embodiment in

[00:17:03] Speaker 03:
the written description that doesn't have a waveform projection on each horizontal branch, right?

[00:17:10] Speaker 01:
That is true.

[00:17:10] Speaker 01:
The one embodiment that's depicted in the patent has a waveform projection in all of or each of, you could say, the horizontal branches.

[00:17:20] Speaker 01:
That's how the embodiment happens to work.

[00:17:23] Speaker 03:
You know, of course, as Judge Rich... What you're saying that comprises here could mean that you don't have horizontal branches at all.

[00:17:30] Speaker 03:
Oh, no, Your Honor.

[00:17:32] Speaker 03:
We are in agreement with our... How do we get to that?

[00:17:34] Speaker 03:
I mean, you're basically saying that we can use the comprising language to say we claim black, but it could be white.

[00:17:41] Speaker 01:
No, Your Honor.

[00:17:42] Speaker 01:
If you claim black, you have to include black with a comprising claim.

[00:17:46] Speaker 01:
This claim would not be met by a stent that did not have at least two horizontal branches with waveform projections.

[00:17:53] Speaker 01:
That's a requirement of the claim.

[00:17:55] Speaker 01:
The question before this Court is, let's say there's 100

[00:17:58] Speaker 01:
horizontal branches.

[00:17:59] Speaker 01:
Some of these stents are very long with lots of components.

[00:18:03] Speaker 01:
Do all 100 have to have waveform projections, or is it met by something where 99 have waveform projections?

[00:18:10] Speaker 03:
So you're just saying it was just poor claim drafting, because if you read the written description, in every single figure, there's nothing that shows a horizontal branch without a waveform.

[00:18:23] Speaker 01:
I would respectfully disagree that it was poor claim drafting in the following sense.

[00:18:28] Speaker 01:
It was very smart claim drafting so that a unscrupulous copyist couldn't change just one branch out of 100 on the stent and take it slightly outside or get rid of the horizontal branch and avoid the patent.

[00:18:40] Speaker 01:
But when they cast that wide net, they scooped up unknowingly the prior art because there are prior art stents that have varying branches, some of which fall within the claims and some of which fall outside the claims.

[00:18:53] Speaker 01:
So I think it was very smart claim drafting, other than, unknowingly, the prior art ended up falling inside of their net.

[00:19:02] Speaker 01:
It would have been a very poor and pretty useless claim to require that each and every of, let's say, 100 horizontal branches met these requirements.

[00:19:11] Speaker 01:
An example is one that Judge Laurie brought up in the questioning beforehand.

[00:19:16] Speaker 01:
Let's say 99 of 100 horizontal branches were within 0.05 to 0.08 width.

[00:19:22] Speaker 01:
But the 100th branch was at 0.09.

[00:19:26] Speaker 01:
That is optimal according to the patent.

[00:19:28] Speaker 01:
It is a preferred embodiment to be up to 0.09.

[00:19:32] Speaker 01:
The prosecution history specifically says that's optimal.

[00:19:35] Speaker 01:
Yet under the claim language that requires all elements to meet those characteristics, it wouldn't fall within the scope of the claim.

[00:19:43] Speaker 01:
They wrote the most practical claim they could think of writing.

[00:19:46] Speaker 01:
The problem was, 20 years later, when they decided to come after us on it, we found prior art

[00:19:52] Speaker 01:
that ended up invalidating the patent.

[00:19:55] Speaker 01:
But they could have used the word each.

[00:19:57] Speaker 01:
They chose not to.

[00:19:58] Speaker 01:
The other side.

[00:19:59] Speaker 03:
This can't help but get over the feeling that if we were here on an infringement claim, that you would be arguing that you don't infringe because you don't have a wavelength in every single one of the vertical branches.

[00:20:15] Speaker 01:
I think it would be a very poor argument, Your Honor.

[00:20:17] Speaker 01:
It doesn't say each or every or all.

[00:20:19] Speaker 01:
This plural noun stuff, which is really the other side's only argument, has no basis in the law.

[00:20:25] Speaker 01:
There's not a single case from this court or any court, which is why they have to refer to some 2010 conference on computational grammar to try to make the argument.

[00:20:35] Speaker 01:
And it fails on its face.

[00:20:37] Speaker 01:
They say lions have manes.

[00:20:39] Speaker 01:
Of course, you can define something a certain way.

[00:20:41] Speaker 01:
You can say bananas are yellow as an example they give, even though many are green.

[00:20:46] Speaker 01:
That is not what's happening here.

[00:20:48] Speaker 01:
What happens in these claims, and of course, Judge Rich said the name of the game is the claim, and in their specification they say the examples like most patents are non-limiting, and we would refer to the claims they say as their last sentence for the boundaries of the invention.

[00:21:04] Speaker 01:
The problem is here is they've written practical, broad claims to try to capture people who use

[00:21:10] Speaker 01:
elements of their invention and it happened to scoop up the prior art.

[00:21:14] Speaker 01:
There was an easy way for them to solve this problem if they wanted all elements to have it.

[00:21:18] Speaker 01:
They would have said each or every or all.

[00:21:21] Speaker 01:
The best case that they rely on according to them, and the only case you heard about in the presentation of the other side, Apple, turns expressly on the fact that each is present in the claim.

[00:21:35] Speaker 01:
so much so that they talked about the location of the word each in the claim.

[00:21:39] Speaker 01:
They said that because it says each heuristic module, it means all heuristic modules.

[00:21:45] Speaker 01:
But if it had said each of a plurality of heuristic modules, if it had been placed there, it would have been

[00:21:51] Speaker 01:
an open-ended claim.

[00:21:54] Speaker 01:
So in the end of the day, their arguments all fail on their basic premises.

[00:22:00] Speaker 01:
I will say that the one argument that we heard them repeat in their presentation, my friend said, the patent says that the stents are more flexible and have better outcomes than stents that don't use these features.

[00:22:12] Speaker 01:
Your honors will, and I think it's illustrative if I'm not exceeding the boundaries to look at, for example,

[00:22:18] Speaker 01:
a stent on page 63 of our red brief.

[00:22:22] Speaker 01:
We have 10 pages of examples of stents where some stents, some of the branches meet the elements and have horizontal with waveforms and some do not.

[00:22:31] Speaker 01:
Those would fall within the claims as they wrote.

[00:22:34] Speaker 01:
You see an example at the bottom of page 63 of pen figure 11.

[00:22:38] Speaker 01:
It was part of the record below that the board cited to and gets a deference on.

[00:22:44] Speaker 01:
It doesn't need to be

[00:22:45] Speaker 01:
horizontal branches are not like lions to be defined as whether they have mains there are lots of examples ten pages of which we put in our red brief that have some branches with curves or waveform projections and some with straight portions and after we did that they admitted the basic premise of their case away in their blue brief you look at page twenty four they say here's why all of them have to meet it they say if you vary from the claimed

[00:23:13] Speaker 01:
dimensions and the claim characteristics in any of the branches, they said you'll have poor outcomes.

[00:23:18] Speaker 01:
That's at page 24 of their brief.

[00:23:21] Speaker 01:
We cited 10 pages of these stents and examples.

[00:23:24] Speaker 01:
And in their gray brief, they gave it all up.

[00:23:26] Speaker 01:
On gray brief page 20, they said, of course, there are stents that do not meet the claims under flex-stents construction that would still achieve the benefits of the invention.

[00:23:37] Speaker 01:
They admit that they don't all have to be within those ranges to get the benefits.

[00:23:41] Speaker 01:
at page 24 of the gray brief.

[00:23:44] Speaker 01:
Flex stent is not claiming that every stent with a single branch falling outside the claim ranges would lead to adverse clinical outcomes.

[00:23:53] Speaker 01:
The basic premise of their whole argument is, in order to have a good stent, this is their, you could put their blue brief against their gray brief.

[00:24:00] Speaker 01:
The blue brief says, in order to have a good stent, everything has to be within the claimed characteristics, all branches.

[00:24:07] Speaker 01:
We proved that wrong in their gray brief.

[00:24:09] Speaker 01:
They said,

[00:24:10] Speaker 01:
You're right.

[00:24:10] Speaker 01:
They don't all have to meet the claim dimensions.

[00:24:13] Speaker 03:
But if you read what they said in the Great Brief in fairness, what they're saying is, yeah, but there are different ways to achieve.

[00:24:20] Speaker 03:
But only two meeting the dimensions would not achieve it.

[00:24:28] Speaker 01:
Oh, but there is, first of all, evidence to the contrary on that point.

[00:24:32] Speaker 01:
And we pointed to that in pages 61 through 70 of the brief.

[00:24:36] Speaker 01:
As a matter of fact, we pointed to stents like the Laos Stent

[00:24:39] Speaker 01:
and I'll give the citation for the record, and we pointed this out in our red brief, A1366, and then the admission of the other side, Dr. Solar, at A1799, you could be even more flexible using straight connectors, like in the Laos stent, than the curved connectors of the waveform projections in their stent, which means, by definition, you could have a few curved connectors and the rest straight connectors, like we saw in Pen Figure 11, or like we saw in Richter 404,

[00:25:09] Speaker 01:
and still achieve the benefits of the invention.

[00:25:11] Speaker 01:
We have 10 pages of examples where this happens.

[00:25:14] Speaker 04:
Mr. Morin, can I ask you a question about the specifications?

[00:25:17] Speaker 04:
So one thing I saw in the specification that I thought was interesting is around column two, line 22, it says, figure one is a developmental figure of the vascular scent which comprises horizontal and vertical branches linked to one another.

[00:25:33] Speaker 04:
Each of the horizontal branch possesses a wave form, and it goes on.

[00:25:38] Speaker 04:
Should I look at this as them attempting to give a special definition for comprises?

[00:25:43] Speaker 04:
They use comprises all throughout their specification, which is kind of different.

[00:25:48] Speaker 04:
People don't usually do that.

[00:25:49] Speaker 04:
It's usually something in a claim.

[00:25:51] Speaker 04:
In patent claims, we usually say that comprises is open-ended.

[00:25:54] Speaker 04:
But here, in the specific language that I cited to you, could one look at that and say that was an attempt to try to be a lexicographer on comprises to give it some meaning and consistent with its usual use in patent law?

[00:26:06] Speaker 01:
I don't think so.

[00:26:07] Speaker 01:
I think that would be unprecedented in this court's history to allow someone to do that.

[00:26:11] Speaker 01:
It would have to be something so much more clear and unmistakable.

[00:26:15] Speaker 01:
It would have to say something like, imagine this, by comprising, quote unquote, we define that or that means consisting of, it's not good enough to talk about one preferred embodiment that says it has, each has a waveform projection.

[00:26:29] Speaker 01:
Keep in mind two things about that.

[00:26:31] Speaker 01:
One is, each never is applied to the vertical branches.

[00:26:34] Speaker 01:
That would have to be the case for his argument to hang up and hold on.

[00:26:38] Speaker 01:
Each is never used there.

[00:26:40] Speaker 01:
And like we said, and I think we cited case law in our red brief for this proposition, that when

[00:26:46] Speaker 01:
The patentee shows they knew how to use the word each.

[00:26:48] Speaker 03:
Why would each have to apply to the vertical branches?

[00:26:50] Speaker 03:
Because they're not claiming that the vertical branches have waveform projections.

[00:26:54] Speaker 01:
Yes, but they are claiming under their argument vertical branches, all of the vertical branches also have to meet those claim characteristics.

[00:27:01] Speaker 01:
That's what their argument is together.

[00:27:04] Speaker 01:
That both all of the horizontal branches and all the vertical branches need to meet these particular characteristics.

[00:27:10] Speaker 01:
The other thing is that if you've turned in the next page.

[00:27:12] Speaker 04:
Is there some reason to distinguish

[00:27:14] Speaker 04:
for us to say that the limitations for the waveform are somehow different than the limitations for the dimensions?

[00:27:21] Speaker 01:
No, Judge Stoll.

[00:27:22] Speaker 01:
They all rise or fall together.

[00:27:23] Speaker 01:
And I think our friends on the other side would agree with that.

[00:27:25] Speaker 01:
They've argued them collectively.

[00:27:26] Speaker 03:
Why do you say that?

[00:27:28] Speaker 01:
because I've argued them collectively.

[00:27:29] Speaker 01:
They have their plural noun phrase term they seem to be using for the proposition that all of the horizontal branches have to have the claim characteristics and all the vertical branches have to have the claim characteristics.

[00:27:41] Speaker 01:
But either way, I see the argument as academic.

[00:27:43] Speaker 01:
When you go back to the claim, and the language immediately preceding the claim makes it clear that the scope of the invention, I know it's vulnerable, but they're stuck with it, is therefore to be determined solely by the appended claims

[00:27:55] Speaker 01:
They pointed out that this is just a preferred embodiment that they were describing beforehand.

[00:28:00] Speaker 01:
And by the way, that preferred embodiment makes it so abundantly clear that not all of the elements have to have those characteristics.

[00:28:09] Speaker 03:
Let's get away from the way they argued it.

[00:28:11] Speaker 01:
Sure.

[00:28:12] Speaker 03:
And look at what's in the patent.

[00:28:14] Speaker 03:
Of course.

[00:28:15] Speaker 03:
Because this is one of those things you read it and you say, what did they invent?

[00:28:19] Speaker 03:
And it sure looks like they invented something where every single horizontal branch has a waveform.

[00:28:24] Speaker 01:
Well, they didn't invent that.

[00:28:26] Speaker 01:
We're replete with evidence in the prior art where every horizontal branch has a waveform projection.

[00:28:32] Speaker 01:
We've cited many of those cases.

[00:28:33] Speaker 01:
Richter 404, which is the prior art that we used against them, every horizontal branch had a waveform projection.

[00:28:41] Speaker 03:
The near stent, every... But Richter wasn't discussed by the board, right?

[00:28:45] Speaker 01:
Oh, no, it was.

[00:28:46] Speaker 01:
That was the reference that they ended up invalidating on.

[00:28:48] Speaker 01:
Richter 404 in combination with the near stent, which was ground one,

[00:28:53] Speaker 01:
of the petition that the board found in our favor on, every single horizontal branch has a curve in both of those references that they combined.

[00:29:04] Speaker 01:
There are- Fischl doesn't.

[00:29:05] Speaker 01:
What's that?

[00:29:06] Speaker 03:
Fischl does not.

[00:29:07] Speaker 01:
Fischl, the ground two that does not expressly, it's an obvious mis-argument, the pictured embodiment in Fischl figure 8, which is sent 10, has some with curves and some without curves.

[00:29:21] Speaker 01:
And our argument there is that it would still be obvious because it says two or more can have undulations.

[00:29:27] Speaker 01:
But when you go back to the NEAR scent, ground one, which we also won on, both NEAR and Richter 404, both of them, it's undisputed, all horizontal branches had curved connectors.

[00:29:38] Speaker 01:
They all did.

[00:29:40] Speaker 01:
So the ground one, which we won on, the issue of whether they all have or do not have horizontal branches with waveform projections is not a live issue.

[00:29:49] Speaker 01:
They all do.

[00:29:50] Speaker 01:
and I think our friends on the other side won't disagree with that.

[00:29:53] Speaker 01:
It's in the record.

[00:29:55] Speaker 01:
We could point to those specific references if you'd like.

[00:30:00] Speaker 01:
Richter 404 is on A1657.

[00:30:04] Speaker 01:
And if you look at the embodiment there, what you will see is volume two is just one example.

[00:30:12] Speaker 01:
And again, this was the ground one reference.

[00:30:17] Speaker 01:
What you'll see is figure two, and I'm just holding it up

[00:30:20] Speaker 01:
court's reference, of course you'll look at it, but all of the horizontal branches have curved connectors.

[00:30:25] Speaker 01:
That was our ground one prior art reference.

[00:30:27] Speaker 01:
So that's neither here nor there with respect to whether they all have to have them.

[00:30:33] Speaker 01:
In the end of the day though, they claim they're sent broadly because there are examples that I just showed this panel, this court of course, like Pen Figure 11 where some are straight and some are curved, and that was a known way to do it.

[00:30:45] Speaker 01:
Their claims would have been effectively useless.

[00:30:47] Speaker 01:
They're more useless now because they're

[00:30:50] Speaker 01:
But their claims would have been effectively useless if they had required every single branch to meet those elements because anyone could have just changed one of the branches.

[00:30:57] Speaker 01:
And they could have changed it going full circle to Judge Laurie's comment on the .09 being outside the range.

[00:31:04] Speaker 01:
The only place I would very respectfully disagree, Judge Laurie, is you said that's a small amount.

[00:31:09] Speaker 01:
When you're dealing with tiny, tiny coronary arteries, the entire range is .05 to .08.

[00:31:15] Speaker 01:
So if I hold my hands out here,

[00:31:17] Speaker 01:
It's a full third more than that range.

[00:31:19] Speaker 01:
That's a lot.

[00:31:20] Speaker 01:
This is not a small amount you're dealing with.

[00:31:22] Speaker 01:
And if you were to credit the file history, they say in the file history in the Jane Declaration, 0.01 can be the difference between a good stent and a bad stent.

[00:31:30] Speaker 01:
So we're not dealing with small amounts.

[00:31:32] Speaker 01:
In the distance from me to Judge Lurie, maybe 0.01 millimeters is small.

[00:31:36] Speaker 01:
In the distance between when you're dealing with the widths of the tiny, tiny struts of a coronary stent, it can make all the difference in the world.

[00:31:44] Speaker 02:
I understand your point, and your time has expired.

[00:31:47] Speaker 01:
Thank you.

[00:31:50] Speaker 02:
Mr. Tanzini has a couple of minutes in rebuttal.

[00:31:58] Speaker 00:
Thank you, honors.

[00:31:58] Speaker 00:
I want to make three points in rebuttal.

[00:32:05] Speaker 00:
The first is going back to Judge O'Malley's question, what did the inventor invent?

[00:32:11] Speaker 00:
If you look at it, it's not just having waveform projections on all of the horizontal branches.

[00:32:17] Speaker 00:
It's a stent that has waveform projections on all the horizontal branches and also has its branches falling within these narrow dimensional ranges.

[00:32:28] Speaker 00:
If just two branches, stents have many branches and the branches, they're not the entire ring that goes all the way around the stent or the entire length of the stent.

[00:32:40] Speaker 00:
They're just one little segment.

[00:32:43] Speaker 00:
Undisputed I think my friend is I would agree with me on that.

[00:32:46] Speaker 00:
So if you just have two of each having waveform projections and Falling within those ranges.

[00:32:53] Speaker 00:
You're not going to get a good step.

[00:32:54] Speaker 00:
You don't get the stent that the inventor invented You don't get a stent that has less resources.

[00:32:59] Speaker 04:
Can't the inventor choose though?

[00:33:02] Speaker 04:
My embodiment 100 let's say there's 100 all 100 have waveforms, but I want to make sure that my claims are

[00:33:11] Speaker 04:
are not easily designed around.

[00:33:13] Speaker 04:
So I'm going to use open-ended comprising language.

[00:33:16] Speaker 04:
It doesn't mean it's just two.

[00:33:17] Speaker 04:
It could be 99 out of 100.

[00:33:18] Speaker 04:
It could be 50 out of 100.

[00:33:20] Speaker 04:
It could be 75.

[00:33:23] Speaker 04:
Well, by doing it that way, I mean, if your goal was to avoid, you know, somebody... My goal was to make sure that you encompass a broad range of accused devices.

[00:33:35] Speaker 00:
Well, if you make it so broad that you completely eliminate all the benefits of your invention, then that's not a good idea precisely because you end up tripping on prior art, right?

[00:33:44] Speaker 00:
So you want to interpret the claim in a way that actually gives effect to the inventor's invention.

[00:33:51] Speaker 00:
Here, having just two branches of each type meeting the shape and size limitations, that doesn't get you anywhere.

[00:33:57] Speaker 00:
It doesn't achieve any of the benefits that are described in the specification.

[00:34:01] Speaker 04:
Even though there are embodiments that couldn't fall within the claim,

[00:34:04] Speaker 04:
that don't have wavelengths on each and every horizontal branch, but yet might still provide flexibility and strengths.

[00:34:15] Speaker 00:
So to be clear, there are no embodiments that lack waveform projections in your patents.

[00:34:19] Speaker 00:
That's right.

[00:34:19] Speaker 00:
I understand.

[00:34:20] Speaker 00:
And of course, I mean, you can achieve flexibility in different ways, but the patent here is achieving flexibility in a particular way, which is by having the waveform projections and by keeping the branches within narrow ranges.

[00:34:30] Speaker 00:
And you don't achieve that benefit in the claimed way, in the way described in the patent, unless all of the branches, or at least substantially all the branches, have waveform projections.

[00:34:41] Speaker 02:
Thank you, counsel.

[00:34:42] Speaker 02:
We will take the case under submission.

[00:34:44] Speaker 02:
Thank you, honors.