[00:00:02] Speaker 01: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:06] Speaker 01: God save the United States and this honorable court. [00:00:11] Speaker 04: Good morning. [00:00:12] Speaker 04: We have one case on the docket today. [00:00:15] Speaker 04: Appeal number 19-2054, Hoologic Inc. [00:00:20] Speaker 04: versus Minerva Surgical Inc. [00:00:24] Speaker 04: Mr. Hockman, I understand you are observing four minutes for rebuttal. [00:00:28] Speaker 04: Is that correct? [00:00:30] Speaker 02: Yes, Your Honor. [00:00:31] Speaker 02: Thank you. [00:00:32] Speaker 04: Okay, you may proceed, Mr. Hockman. [00:00:35] Speaker 02: Thank you. [00:00:35] Speaker 02: Good morning, Your Honors, and may it please the court, Rob Hockman from Minerva. [00:00:39] Speaker 02: The Supreme Court has ruled that a final estoppel applies when, and I'm quoting, the inventor says one thing explicitly or implicitly in assigning a patent and the opposite in litigation. [00:00:49] Speaker 02: So this court needs to determine what was represented as the scope of the invention when assigning the patent and compare it to what we are now saying makes the logic patent invalid. [00:00:59] Speaker 03: Mr. Hockman, I just [00:01:02] Speaker 03: But I would tell you how I see the specific task that was assigned to us by the Supreme Court. [00:01:09] Speaker 03: I think the Supreme Court told us to compare claim 31 with claim 1 insofar as moisture permeability is concerned. [00:01:20] Speaker 03: If claim 1 is broader, a sign or a stopper will not apply. [00:01:25] Speaker 03: If the scope is the same, a sign or a stopper would apply. [00:01:30] Speaker 03: And just from where I see the claims, when I look at side by side comparing claim one to claim 31, with respect to permeability, I don't see any difference. [00:01:43] Speaker 03: I don't see either claim being other than agnostic as to whether permeability is involved or not involved. [00:01:52] Speaker 02: I think you're focusing on the right question, Your Honor, or at least on the right comparison. [00:01:58] Speaker 02: The comparison is how does this [00:02:00] Speaker 02: out of the application at the time, treat the claim, treat the term electrode array. [00:02:04] Speaker 02: Because remember, the term, the only term that's at issue in claim 31 that the, that Hologic claims could indicate impermeability is the term electrode array. [00:02:17] Speaker 02: And so I would submit for two reasons, for two principal reasons, the terms electrode array are different and materially so in a way that's dispositive here. [00:02:25] Speaker 02: So let's start just on the face of the term. [00:02:28] Speaker 02: The term electrode array itself suggests permeability in a way that the phrase applicator head does not. [00:02:33] Speaker 03: Indeed, the last time we were here, a lot of counsel... There's an electrode array in both claim one and claim 31, right? [00:02:43] Speaker 02: That's right. [00:02:44] Speaker 02: But the electrode array, the applicator head is what's impermeable, not the electrode array in claim one. [00:02:51] Speaker 02: This court didn't say the electrode array is impermeable. [00:02:55] Speaker 02: This court just said the applicator head [00:02:57] Speaker 02: is impermeable. [00:02:58] Speaker 02: And it's critical, because Hologic told you, they told you, treat the terms applicator head and electrode array differently. [00:03:08] Speaker 02: And that's precisely because the application. [00:03:10] Speaker 04: Mr. Hoffman, this is Judge Stoltz. [00:03:12] Speaker 04: I just want to make sure I'm understanding what you're saying. [00:03:14] Speaker 04: You're saying the term electrode array, you should read that in light of the specification to have a disclaimer and say electrode array must be water-permeable. [00:03:28] Speaker 02: Yes, I think that's right, although I don't know whether you have to go all the way to disclaimer because they don't think the task here is exactly the same as claim construction. [00:03:37] Speaker 02: Remember, claim 31 was not an issue claim. [00:03:39] Speaker 02: We're not really engaged in claim construction per se. [00:03:42] Speaker 02: We agree with the logic. [00:03:44] Speaker 02: It's relevant evidence of what was disclosed in the patent, but it's not really different than anything else disclosed in the specification. [00:03:52] Speaker 02: It's just another use of the term electrode array. [00:03:56] Speaker 02: And, and, and, and I want to be clear, even if you understand it as claim construction in the traditional sense, we're talking about absolutely clear terms in places like the summary of the invention and the abstract. [00:04:08] Speaker 02: Well, this court has said CR barred and tri strata. [00:04:11] Speaker 02: Those are places where you're talking not about specific embodiments, but the invention as a whole. [00:04:16] Speaker 02: And unlike the term applicator head, the patent is absolutely clear and unequivocal. [00:04:22] Speaker 02: The electrode array is substantially absorbent and permeable to moisture. [00:04:26] Speaker 04: The electro- What about the second volume that's closing the specification that talks about having a vacuum and a tube with a vacuum for absorbing the extra water? [00:04:41] Speaker 04: I'm just wondering how that relates to this, because it's not clear necessarily that that involves the use of a water permeable layer. [00:04:50] Speaker 02: Well, water would have to get to the vacuum somehow. [00:04:53] Speaker 02: Moisture has to get there. [00:04:55] Speaker 02: Right? [00:04:55] Speaker 02: So it has to actually involve a water permeable device. [00:04:59] Speaker 02: Because the vacuum's inside. [00:05:01] Speaker 04: There's a vacuum. [00:05:03] Speaker 04: If the specification discloses that in that environment there's apertures, I believe. [00:05:09] Speaker 04: Yeah. [00:05:09] Speaker 04: Water goes through the apertures. [00:05:11] Speaker 04: Is it your position that apertures are providing the water permeable layer? [00:05:16] Speaker 02: So I think the apertures in that example are on the flexures, which are the parts that sort of expand. [00:05:23] Speaker 02: the head, whatever the material is. [00:05:29] Speaker 02: So there's a variety of different parts. [00:05:31] Speaker 02: It doesn't really matter from the point of view of this. [00:05:35] Speaker 02: This gets more to the merits of our 112 planes. [00:05:37] Speaker 02: It doesn't really matter how the water gets in. [00:05:39] Speaker 02: It just matters that the water gets in. [00:05:41] Speaker 04: And my point other question, which is in the claim, you said that claim 31 has, you know, claim one is different from claim 31 in the use of applicator head versus electrode array. [00:05:54] Speaker 04: But what about the fact that claim 31 has a deployment mechanism? [00:05:58] Speaker 04: and an electrode array, and the specification says the applicator head, you know, if you even look at the pictures on the face of the patent, it includes, you know, some deployment, or I think it might call it something else, mechanism and an electrode array. [00:06:12] Speaker 04: So, that the coin 31 doesn't use the words applicator head. [00:06:16] Speaker 04: Isn't it functionally the same as the deployment mechanism in the electrode array? [00:06:22] Speaker 02: Well, that's, I think that's exactly what Hologic told you not to conclude. [00:06:27] Speaker 02: when you construed applicator head last time. [00:06:29] Speaker 02: They specifically said, don't think that way. [00:06:32] Speaker 02: And that's fine. [00:06:33] Speaker 02: And that's fine. [00:06:34] Speaker 02: Our point is just, they have to live with that now. [00:06:36] Speaker 02: We shouldn't be stuck with them saying, don't look at electrode array. [00:06:40] Speaker 02: That's what they told you. [00:06:41] Speaker 02: Don't look at electrode array, right? [00:06:43] Speaker 02: Look at applicator head. [00:06:45] Speaker 02: It's just, it doesn't tell you anything about impermeability. [00:06:49] Speaker 02: Mr. Hodgman, I'm confused. [00:06:52] Speaker 03: Clearly the focus of attention [00:06:55] Speaker 03: when the case was here before on the claim construction issue was with regard to the applicator head. [00:07:02] Speaker 03: I think the opinion makes that clear. [00:07:04] Speaker 03: What I understand you to be saying today is we should just forget about applicator head, and we should focus on electrode ray. [00:07:14] Speaker 03: That's what I'm hearing you say. [00:07:15] Speaker 03: So if that's the case, then what I want to do is I want to compare the electrode ray in claim one [00:07:24] Speaker 03: of the 348 with the same thing, the electrode array in claim 31. [00:07:33] Speaker 03: Now, if I read the fact, which is basically the same in both, let's assume I agree with you that the electrode array in both instances is wire permeable. [00:07:50] Speaker 02: Okay. [00:07:52] Speaker 03: Then I say the scope is the same. [00:07:56] Speaker 03: claim want is not broader, because we're not talking about anymore the applicator hand, we're talking about the array. [00:08:08] Speaker 03: No, I think that's, I think that's what's wrong. [00:08:10] Speaker 03: What's wrong with that? [00:08:12] Speaker 03: You want to focus attention. [00:08:13] Speaker 03: You want us to project about the applicator hand, right? [00:08:17] Speaker 03: Because the new leasurer and forget about whether or not maybe the deployment mechanism is actually the applicator hand. [00:08:25] Speaker 03: But when you shift me over, I've got to decide, sir, whether claim one, insofar as permeability, is materially different, materially broader than claim 31. [00:08:42] Speaker 03: And when I look at claim 31 to try to figure out what's going on with the electron array, even though if it isn't claim construction, I have to dig into the specs [00:08:56] Speaker 03: Right. [00:08:56] Speaker 03: And the spec is exactly the same in terms, unless you can point to me to a material difference in the spec between claim 31 and claim 1 on the question of the electrode array and permeability thereof. [00:09:17] Speaker 03: Well, let me. [00:09:19] Speaker 03: What I'm hearing you to say is your electrode array argument is actually [00:09:25] Speaker 03: uh... doing your case well actually what what we'll let me be let me be clear about a couple of helping out and i don't know if you don't have to act the two specs and point out to me where i'm going to end up understanding the electrode array in claim one is being broader than the electrode array in claim thirty so i think i misspoke and this might help because i think i misspoke [00:09:52] Speaker 03: Can you understand my problem? [00:09:56] Speaker 02: I do understand your problem. [00:09:57] Speaker 02: And I think I can solve it. [00:09:59] Speaker 02: Let me try and walk you through it. [00:10:00] Speaker 03: Well, I think you probably have to. [00:10:02] Speaker 02: But I think I can't. [00:10:03] Speaker 02: I think I can, Judge Clevenger. [00:10:05] Speaker 02: So if you pick up claim one, what you find is actually the term electrode array is not in claim one. [00:10:12] Speaker 02: This is a pretty... Well, there are one or more electrodes for a lady. [00:10:17] Speaker 02: But the term electrode array is not there. [00:10:19] Speaker 03: And the thing... I understand the term array is not there, but if you take an array of electrodes out of corn, it won't work. [00:10:34] Speaker 02: If you take at least one electrode, you can't function without at least one electrode. [00:10:43] Speaker 02: That's certainly true. [00:10:45] Speaker 02: But the point is what they added and they did this on purpose. [00:10:49] Speaker 02: They could have picked up claim 31 and prosecuted it. [00:10:53] Speaker 02: They didn't do that. [00:10:54] Speaker 02: They added the term application. [00:10:56] Speaker 03: We don't actually know that because we haven't been given in our record, the actual application for claim one. [00:11:05] Speaker 02: Well, and we will submit that per the court's order. [00:11:08] Speaker 02: That'll be submitted as a supplement. [00:11:11] Speaker 02: It was submitted in the Supreme Court's record, and we will just bring that over for you. [00:11:16] Speaker 03: Can you represent to me that claim one as an issue was actually verbatim in the claim one in the 348 application in the beginning? [00:11:26] Speaker 02: No, no, no. [00:11:27] Speaker 02: Claim one in the 348 application was drawn by Hologic, not us. [00:11:32] Speaker 02: That's their claim. [00:11:33] Speaker 02: That's the point. [00:11:34] Speaker 02: We never wrote that claim. [00:11:36] Speaker 02: That's theirs. [00:11:37] Speaker 02: The original application. [00:11:38] Speaker 03: My question is, what was the original claim in the application? [00:11:43] Speaker 03: Don't let us defer from where we were before. [00:11:46] Speaker 03: Assume, for purposes of argument, that I was to find an array, electrode array, in claim one that should be compared to the electrode array in claim 30 million. [00:12:00] Speaker 02: Right. [00:12:01] Speaker 03: And I think... What's your answer in how they are different as to permeability? [00:12:06] Speaker 02: The electrode array in claim one itself, even if you understand the reference to an electrode in claim one to be an electrode array, and it's not there, but even if you accept that, the electrode array itself is not what this court said, nor is it what is moisture permeable. [00:12:26] Speaker 02: It's the applicator head. [00:12:27] Speaker 02: And Hologic told you, don't think about it. [00:12:31] Speaker 03: You've thrown the applicator head under the bus. [00:12:33] Speaker 02: Mr. Hoffman, I think you've got the two reversed. [00:12:37] Speaker 02: Maybe I'm not being, let me step back and start over, right? [00:12:43] Speaker 02: Here's the problem. [00:12:44] Speaker 02: The problem is what discloses a moisture, what is in the application at claim 31, what is it that's in there that says this covers a moisture impermeable device, right? [00:12:58] Speaker 02: What is it that says it? [00:13:00] Speaker 02: With claim one, when they wrote their own claim to try and do that, they didn't need to say that. [00:13:07] Speaker 03: It does. [00:13:09] Speaker 03: That's the same kind of argument you were making about claim one on the claim construction before. [00:13:16] Speaker 02: But we're now living with your ruling that claim one does cover a moisture impermeable device. [00:13:22] Speaker 04: That's your point. [00:13:23] Speaker 04: Council, this is Judge Sol. [00:13:25] Speaker 04: So your view is that claim 31 is limited to a moisture permeable device because of the words electrode array. [00:13:35] Speaker 02: Because because the word electorate is quite specifically. [00:13:39] Speaker 04: Yeah, and I'll say one other thing, which is that I've heard you say multiple times that whole logic argued it this way to us and argued it this way to us. [00:13:46] Speaker 04: They should be stuck with that. [00:13:47] Speaker 04: But the thing is, is you need to look at our rolling too. [00:13:50] Speaker 04: I mean, somebody a talent, the party can argue [00:13:54] Speaker 04: a position to a court that doesn't mean the court adopted it. [00:13:58] Speaker 04: Yes, we agreed that the district court didn't enter in its claims instruction, but I don't think you can read things in from what you understood the logic to be arguing to say that that's how we saw it necessarily. [00:14:09] Speaker 02: But you did say it appears that the electrode carrying member is a different part than the applicator head, so something got through. [00:14:17] Speaker 04: We also said there was no clear disclaimer. [00:14:21] Speaker 02: Right, and of course there is a very big difference [00:14:24] Speaker 02: about the term electrode array in the abstract and the summary of the invention, that term does not appear, it is not discussed in those places with respect to applicator head. [00:14:38] Speaker 02: And Hologic, this is the point Judge Clevenger, and I want to make sure I'm clear about this before my time runs out. [00:14:45] Speaker 02: Hologic picks up and runs with [00:14:50] Speaker 02: the term applicator head in its own patent. [00:14:53] Speaker 02: That's what they added. [00:14:54] Speaker 02: That's the broadening of the claim. [00:14:57] Speaker 02: Claim 31 doesn't claim an applicator head, which can be construed as moisture impermeable. [00:15:03] Speaker 02: That's what they added. [00:15:05] Speaker 02: They chose to add it, and they chose to add it because they knew they needed to add it to cover Minerva's device, which by the way, doesn't even have an electrode, but that's my other hero there. [00:15:17] Speaker 02: If the heat source is different, [00:15:19] Speaker 02: But the point is what you have broadening the claim is Hologic's choice to use the term applicator head, not electrode array, to not pick up claim 31 and prosecute it, to add that term so that precisely because they needed it to be broader than what was in application claim 31. [00:15:42] Speaker 03: Mr. Hoffman, I have a question. [00:15:44] Speaker 03: Are they unusual that that happens in the patent world, Mr. Hoffman, as you know? [00:15:49] Speaker 03: Of course. [00:15:52] Speaker 03: Of course. [00:15:54] Speaker 03: Of course. [00:15:57] Speaker 03: Of course. [00:16:00] Speaker 03: Of course. [00:16:03] Speaker 03: There's no sin in that. [00:16:06] Speaker 02: Absolutely not. [00:16:08] Speaker 02: And to be clear, there's no sin in that. [00:16:11] Speaker 02: All that happened is the Supreme Court said that when you do that, you've got to independently defend the [00:16:18] Speaker 02: the patentability of your claim. [00:16:20] Speaker 03: In all fairness, when your client signed all of its intellectual property rights and sent it over to NowLogic, he didn't understand the framework was going to create a trap for the unwary. [00:16:35] Speaker 03: Well, I don't think that's what the Supreme Court has done. [00:16:37] Speaker 03: Clearly, there is now a trap involved for people who are going to assign their patent rights. [00:16:42] Speaker 03: They better be darn careful about the breadth of things they may have had in earlier applications. [00:16:51] Speaker 02: Respectfully, I disagree, Your Honor. [00:16:52] Speaker 02: I don't think this is a trap for the unwary at all. [00:16:54] Speaker 02: I think the Supreme Court's reasoning is [00:16:56] Speaker 02: You're only responsible. [00:16:58] Speaker 03: Well, if you lose here, you're certainly going to feel like you've got caught in a trap, aren't you? [00:17:04] Speaker 02: Well, I don't think there is a trap for us. [00:17:06] Speaker 02: What we are doing is we are asking for the application of the Supreme Court standard that says, unless we, unless our inventor represented a claim that covers a moisture impermeable device, he's entitled [00:17:19] Speaker 02: And his privies are entitled to challenge the validity of such demands. [00:17:22] Speaker 03: But then just to stop there for a second, claim 31 doesn't have anything on the face of the claim that puts on moisture permeability at all. [00:17:30] Speaker 02: There's no doubt that it does not contain an express permeability requirement. [00:17:35] Speaker 03: There's nothing there. [00:17:36] Speaker 02: There's nothing there. [00:17:37] Speaker 03: And the most you've been able to dig out of claim 31 that deals with moisture permeability goes to the electrode array. [00:17:44] Speaker 03: And all I've said to you, and I haven't heard you say any difference to me, when you take what we know about the electrode array in claim 31, and we compare it to what we know about the electrode, electrodes and their motion in claim 1, it's exactly the same scope. [00:18:01] Speaker 02: And they're... Imagine you have an electrode array, and then the electrode array, and in this patent, in this application, it says the electrode array is mounted on something that allows moisture to go through. [00:18:13] Speaker 02: And then Hologic writes a patent, which is exactly what they did. [00:18:15] Speaker 02: This is exactly what they did. [00:18:16] Speaker 02: They write a patent that essentially says, oh, but we're going to put, let's imagine we put a cover over it that's moisture impermeable. [00:18:23] Speaker 02: That's an additional claim. [00:18:24] Speaker 02: That's an additional element of the claim that makes it broader. [00:18:27] Speaker 02: And that's a different device. [00:18:30] Speaker 02: And there's no good reason why the inventor of the device, the inventor of this patent, should be held to barred from claiming the invalidity of that. [00:18:42] Speaker 04: Mr. Hartman, this is Judge Stoltz. [00:18:44] Speaker 04: I want to ask you about [00:18:46] Speaker 04: You had two main arguments that I thought presented in your briefing before this court. [00:18:51] Speaker 04: And one of them was that we shouldn't even be looking at Claim 31 because it was deleted during prosecution as a result of restriction requirements by the patent sammer. [00:19:01] Speaker 04: I want to know, you haven't mentioned that today. [00:19:03] Speaker 04: So I want to know if you're carrying that forward, because in response to Judge Cleveringer's question about whether you started our job was to compare Claim 1 to Claim 31, you didn't mention that. [00:19:13] Speaker 04: So I want to know. [00:19:15] Speaker 02: I'm taking my cues from Judge Clevinger, of course, and I understand the focus there. [00:19:19] Speaker 02: I do think it shouldn't count, but I recognize that it's at least plausible that this court would conclude that it does count, and I want to be absolutely clear. [00:19:28] Speaker 03: Well, just for sure, I mean, you're a good patent lawyer. [00:19:31] Speaker 03: Why wouldn't it apply? [00:19:33] Speaker 03: Because I think that you can't sell a claim without prejudice. [00:19:37] Speaker 03: Why isn't the claim still valuable intellectual property that can be transferred? [00:19:41] Speaker 02: Because the Supreme Court's focus is on what's the representation made by the patentee. [00:19:47] Speaker 02: And when you abandon, there's all sorts of things that can happen over the board. [00:19:51] Speaker 03: Did you read the reps and warranties that your client signed when he took over all the intellectual property? [00:19:56] Speaker 03: I understand that. [00:19:57] Speaker 03: And again... A promise to your adversary? [00:20:01] Speaker 03: But he had no reason to believe the claims were invalid or unenforceable. [00:20:06] Speaker 02: And I understand that. [00:20:07] Speaker 02: That's true. [00:20:07] Speaker 02: And by the way, if they had prosecuted Claim 31... Do you take that back today? [00:20:12] Speaker 02: No, no, no, no, no, no. [00:20:15] Speaker 03: If they had prosecuted Claim 31... Where's your wiggle room on whether or not Claim 31 is in play? [00:20:23] Speaker 02: Because because when it was canceled and two years go by and at that time, there's been no effort to revive it. [00:20:31] Speaker 02: People learn things over the course of prosecuting patent claims all the time. [00:20:36] Speaker 03: Two years is a nanosecond in patent prosecution law. [00:20:42] Speaker 02: But other claims were prosecuted forward. [00:20:44] Speaker 02: CITIC never raised anything about it. [00:20:46] Speaker 02: There was never any interest in this or focus on this. [00:20:49] Speaker 02: I think it's just part of the mix. [00:20:51] Speaker 02: It would be permissible to set it aside, but you don't have to. [00:20:56] Speaker 02: But you don't have to because it doesn't do the job that Hologic needs them to do. [00:21:01] Speaker 02: And the core reason why that's so is there's nothing inconsistent in our reps and warranties. [00:21:08] Speaker 02: Even if they had prosecuted Claim 31, I am [00:21:11] Speaker 02: that there is no doubt in my mind that in light of the summary of the invention and the abstract, that the claim would have not been construed to cover a moisture impermeable device. [00:21:22] Speaker 02: That's the point. [00:21:24] Speaker 04: That was fundamentally the point. [00:21:26] Speaker 04: Mr. Hockney, you are about a minor 10 minutes into your rebuttal time. [00:21:32] Speaker 04: I know we've been asking you a lot of questions. [00:21:34] Speaker 04: So I'm going to restore your four-minute rebuttal time, but I do want to give Mr. Wolf ample time to address that. [00:21:41] Speaker 02: Understood, and thank you for your indulgence, Your Honor. [00:21:43] Speaker 02: Much appreciated. [00:21:45] Speaker 01: Mr. Wolf, please proceed. [00:21:49] Speaker 01: Thank you, Your Honor. [00:21:50] Speaker 01: May it please the court? [00:21:52] Speaker 00: Mr. Wolf, I have a question for you. [00:21:56] Speaker 00: In page three of the of the reply, Minerva says, [00:22:03] Speaker 00: Horologics Council previously urged this court that, quote, that the, quote, electrode array is a different thing than the applicator head. [00:22:13] Speaker 00: And then they say you needed us to take that position. [00:22:17] Speaker 00: How do you deal with that? [00:22:20] Speaker 01: Your honor, the electrode array is one component of the applicator head. [00:22:24] Speaker 01: If you look at, uh, figure two, for example, the patent, you'll see that two is the applicator head. [00:22:33] Speaker 01: 14 is the electrode array. [00:22:35] Speaker 01: So the electrode array is a critical part, perhaps the most critical part of the applicator array. [00:22:40] Speaker 01: But it is not the same thing. [00:22:41] Speaker 01: And that's all I was saying at oral argument. [00:22:44] Speaker 01: It's a substantial subset. [00:22:46] Speaker 01: It's perhaps the most important. [00:22:48] Speaker 01: But it's not coextensive. [00:22:50] Speaker 00: All right. [00:22:51] Speaker 00: I like them diagrams. [00:22:53] Speaker 01: Thank you, Your Honor. [00:22:56] Speaker 01: By speaking of close, I'm sorry, Judge Clevenger, [00:23:01] Speaker 01: Oh, I'm sorry. [00:23:02] Speaker 01: I thought you were asking questions. [00:23:04] Speaker 01: By seeking a claim in its original application that does not require a moisture permeable applicator head, inventor Shaba Chukai and his proxy Minerva are stopped from arguing that moisture permeability is an essential part of his invention and that claims without such a limitation are invalid. [00:23:22] Speaker 01: I want to address a few things my friend said during his presentation. [00:23:26] Speaker 01: First, as a matter of simple logic, if we add limitations to claim one, [00:23:31] Speaker 01: By definition, the claim gets narrower. [00:23:34] Speaker 01: That's patent law 101. [00:23:36] Speaker 01: Adding a limitation narrows the claim. [00:23:39] Speaker 01: So by adding the applicator head limitation to claim one, we narrowed it vis-a-vis claim 31. [00:23:47] Speaker 01: Number two. [00:23:48] Speaker 01: On the issue of... Mr. Walts, this is Judge Stoll. [00:23:52] Speaker 04: I just want to ask you, what about the fact that the applicator head, as disclosed in the patent, includes an electrode array and a deployment mechanism? [00:24:04] Speaker 04: I mean, how can you argue that the applicator head makes it more narrow when it's really just a word that includes certain structure that is actually in both lines? [00:24:15] Speaker 01: Your honor, the applicator head has two mandatory features for the patent. [00:24:21] Speaker 01: It has electrodes and it has a means of displacing those electrodes. [00:24:25] Speaker 01: In point of fact, claim one actually recites those as well. [00:24:29] Speaker 01: It's as redundant in this context. [00:24:32] Speaker 01: All I was pointing out. [00:24:33] Speaker 04: It's also in claim 31, right? [00:24:34] Speaker 01: It's the applicator head. [00:24:36] Speaker 01: Effectively, yes. [00:24:37] Speaker 04: The deployment mechanism. [00:24:39] Speaker 01: It is. [00:24:39] Speaker 01: It's retracted and expanded and also the elector of the right. [00:24:43] Speaker 01: You're absolutely right, Ron. [00:24:44] Speaker 01: In the specific context of this case, they are the same. [00:24:47] Speaker 01: They are continuous. [00:24:48] Speaker 01: I was just pointing out that as a logical matter, if you add a limitation, they're either the same or more limited. [00:24:54] Speaker 01: You can't expand the claim by adding a limitation. [00:24:57] Speaker 01: That was our point of view. [00:24:58] Speaker 04: What I want you to really focus on right now is the argument made by Mr. Hockman, where he says, okay, we said in our plane construction that there wasn't a disclaimer as regards applicator head, but he argues that there is a disclaimer as regards electrode array, that reading the specification, we should understand that the specification disclaims any electrode arrays that don't have a water permeable barrier. [00:25:27] Speaker 01: Your Honor, there are three very clear responses about any one of which would dispose of this. [00:25:34] Speaker 01: First is, let's just compare original claim 31 to original claim 16. [00:25:39] Speaker 01: We see original claim 16, and this is an A40360, says an electrode array carried by an elongate member, the array including a fluid permeable elastic member. [00:25:51] Speaker 01: Claim 31, on the other hand, at A40362, [00:25:56] Speaker 01: simply says an electrode array carried by the deployment mechanism. [00:26:00] Speaker 01: So in the original claims, which are of course part of the specification, the inventor Truchai sought some claims with a fluid permeable component and some claims without. [00:26:14] Speaker 01: Some claim and both of those claims expressly recite the exact same electrode array in some context with permeability and some not. [00:26:24] Speaker 01: At trial, [00:26:25] Speaker 01: His own lawyer asked Mr. Chukai, who was sitting on the witness stand, not just as an inventor, but as a corporate representative and a corporate executive, was there one, this is the A30568, was there one particular claim that you submitted along with your application that did not require a fluid permeable exterior? [00:26:48] Speaker 01: Yes. [00:26:49] Speaker 01: And we weren't done there. [00:26:50] Speaker 01: It wasn't a mistake. [00:26:52] Speaker 01: Let's go to A30570. [00:26:54] Speaker 01: Same lawyer. [00:26:55] Speaker 01: Was this one claim 31 in the application that didn't require a fluid permeable exterior? [00:27:02] Speaker 01: That's right. [00:27:04] Speaker 04: I hear you. [00:27:05] Speaker 04: But what about statements in the specification? [00:27:08] Speaker 04: Do you think there's anything that would cause me to look at the specification and say that is not a clear and unmistakable disclaimer? [00:27:16] Speaker 01: There are 57 references to the electrode array in the drawings and the detailed description. [00:27:24] Speaker 01: Not one of them, not one of those 57 references says that the electrode array is permeable, let alone that it has to be permeable. [00:27:34] Speaker 01: The only reference that was in the original application is in the summary of the invention, and that language parallels claim 16 that I just read you. [00:27:43] Speaker 01: Of course, claim 31 drops the reference to moisture permeability. [00:27:48] Speaker 01: So, you know. [00:27:50] Speaker 03: Mr. Rolfe, this argument you're making [00:27:53] Speaker 03: Then segues over to Mr. Hockman's argument on claim one, she says, as to the electrode array, it is narrowed to be to water impermeable. [00:28:08] Speaker 03: I mean, pardon me, to water permeable. [00:28:10] Speaker 03: Then your argument would be that claim one is actually narrower than claim 31. [00:28:16] Speaker 01: That is our belief. [00:28:18] Speaker 03: So, so, so, so, so a sign or a stop will trap him again on that point. [00:28:24] Speaker 01: I believe that they are bound by what they sold us and what they got hundreds of millions of dollars for. [00:28:31] Speaker 01: Claim one is at most, if it's not contiguous with claim 31, is a subset and therefore narrower. [00:28:41] Speaker 01: I want to talk briefly about this issue of the status of claim 31. [00:28:46] Speaker 01: The Supreme Court made it clear, and this is at pages 16 to 17 of the opinion, [00:28:51] Speaker 01: The question is whether Hologic's new claim is materially broader than the one Chukai assigned. [00:28:56] Speaker 01: So what happened after his assignment is not terribly relevant, but let's be clear what did happen after his assignment. [00:29:03] Speaker 01: First, the Patent Office rejected claim 31. [00:29:07] Speaker 01: Mr. Chukai fought that rejection and fought it successfully and got a allowance. [00:29:13] Speaker 01: Then the Patent Office said, we want a restriction requirement because we want to separate the method claim of claim one from the apparatus claims of 16 and 31. [00:29:23] Speaker 01: Mr. Takai fought that. [00:29:25] Speaker 01: He fought that. [00:29:27] Speaker 01: But the Patent Office said, no, we're going to maintain the requirement. [00:29:31] Speaker 01: And his response to that was, OK, but I'm only going to cancel these without prejudice. [00:29:36] Speaker 01: And those last two points can be found at 40448 and 40453. [00:29:42] Speaker 01: And so as the logic is purchasing this application, they see an inventor that fought hard for a moisture permeability agnostic claim 31 that succeeded in overcoming the rejection, that fought hard against the restriction. [00:30:01] Speaker 01: And when the restriction was forced on them, said fine, but it's without prejudice that I'm withdrawing this claim. [00:30:07] Speaker 03: And when, when Mr. truck, I said, without prejudice, was that his invention, his use of the words or, or in the patent world, uh, does a cancellation without prejudice has special needs. [00:30:26] Speaker 01: Your honor, I think without prejudice in this context means precisely what we all know happens in a restriction requirement. [00:30:31] Speaker 01: Typically is I intend. [00:30:33] Speaker 03: Or at least I'm not aware of anything in the empath that talks about cancellation and then saying without prejudice. [00:30:43] Speaker 01: I think it's just an indication that he's reserving the right to pick those claims back up when it's restricted out. [00:30:49] Speaker 00: So yeah, right. [00:30:53] Speaker 00: You're saying counsel, there's evidence of intent. [00:30:56] Speaker 01: Yeah, the Supreme Court said, what are the explicit and implicit representations that my client was relying on? [00:31:05] Speaker 01: And when Trichai fights like heck to keep claim 31 alive, and even when he has to cancel it because of restriction requirements, he says, I'm restricting without prejudice. [00:31:16] Speaker 01: That certainly goes to the notion that he didn't think the claim was bad. [00:31:20] Speaker 01: And it shouldn't have been a surprise when Halajic picked it back up. [00:31:24] Speaker 04: Is there any sort of, are you aware of any sort of time limitation or other limitation on a patent owner's ability to later file a divisional or a continuation application with the restricted claims? [00:31:41] Speaker 04: Is there any sort of time limitation? [00:31:43] Speaker 04: There was some suggestion that when you wait two years later, that means you've given it up. [00:31:47] Speaker 01: There is no time limitation, Your Honor. [00:31:49] Speaker 01: I believe it's just the standard up that you can't, you have to maintain the [00:31:53] Speaker 01: The family has to stay alive. [00:31:55] Speaker 01: Obviously, once the last application closes, you're out of luck. [00:31:59] Speaker 01: But as long as an application's alive, you can keep prosecuting restricted claims. [00:32:03] Speaker 01: In fact, that's routinely how it's done. [00:32:08] Speaker 01: You get the issued, allowed claims, and then you go back to the ones that were restricted out. [00:32:12] Speaker 01: And in this case, we know what would have happened because they were already allowed. [00:32:17] Speaker 01: Your Honors, unless you have further questions, I think that [00:32:20] Speaker 01: Our points are in the brief. [00:32:23] Speaker 01: The only thing I would add to that is to cite to A30722. [00:32:29] Speaker 01: This is what Sakai's testimony on the stand. [00:32:33] Speaker 01: And the question was, all right, so in 1998 when you filed this application, all that discussion you had about moisture transport was what you invented. [00:32:42] Speaker 01: You thought you had invented more than that as represented in claim 31, right? [00:32:47] Speaker 01: Answer, we thought we can have a broader claim. [00:32:51] Speaker 01: So you thought, just like Colagic thought, with claim one of the creep rates, that you could get a claim without moisture transport, right? [00:32:59] Speaker 01: Answer, correct. [00:33:01] Speaker 03: Your argument, we should take. [00:33:03] Speaker 03: The Supreme Court urged us to look at the record as a whole. [00:33:06] Speaker 03: I believe there was language to that effect in the Supreme Court opinion to say we have to do this. [00:33:13] Speaker 03: remand analysis looking at the record as a whole. [00:33:15] Speaker 03: So we should take that representation by the inventor along with his reps and warranties and his fighting the one or two rejection, et cetera, right? [00:33:27] Speaker 01: Certainly, your honor. [00:33:28] Speaker 01: And also just to emphasize, he was not just an inventor. [00:33:31] Speaker 01: He was the corporate rep and a corporate executive. [00:33:33] Speaker 01: So he was not just an imposter of one of skill. [00:33:36] Speaker 01: He was someone speaking for the company. [00:33:39] Speaker 01: Unless there are further questions, I thank you for your time. [00:33:41] Speaker 04: I have one more. [00:33:42] Speaker 04: Oh, yes, Your Honor. [00:33:43] Speaker 04: It's a little peripheral. [00:33:44] Speaker 04: But in your brief, I think that you indicated, this is your brief and footnote one, you indicate that their issue of invalidity, specifically written descriptions, has already been addressed. [00:34:01] Speaker 04: I don't see that in our opinion in this court. [00:34:05] Speaker 04: I'm wondering, what is your opinion that we address written descriptions? [00:34:09] Speaker 01: Your Honor, the basis is, so step one is the district court in the alternative address the issues of invalidity on the merits. [00:34:17] Speaker 01: And that's it, for example, in this court's opinion at seven. [00:34:21] Speaker 01: I have to concede, I am unclear what the court meant at 28 in your conclusion where you say, finally we affirm the district court summary judgment of no invalidity and infringement, comma, [00:34:35] Speaker 01: summary judgment that bar that asked our sample bars maneuver from challenging ability, et cetera. [00:34:41] Speaker 01: So it seemed like in the conclusion, the court was separately saying we're affirming and validity on one hand on the merits and on the other on us and we're stoppable. [00:34:50] Speaker 01: If I misread that, if that conclusion, which is possible, then I accept that I misread it. [00:34:57] Speaker 04: Okay, our ruling affirming the district court summaries based on the application of the final stop on page 1269 of the decision. [00:35:06] Speaker 04: But okay, all right, thank you. [00:35:08] Speaker 04: Thank you, Your Honor. [00:35:10] Speaker 04: Judge Cleverger, Judge Wallach, do you have any further questions? [00:35:12] Speaker 00: No, thank you. [00:35:18] Speaker 04: Mr. Hoffman, we're going to give you four minutes if you need it for your rebuttal. [00:35:23] Speaker 02: Yeah, I'll be very quick, and I want to say basically two things. [00:35:26] Speaker 02: First, I want to be very clear, Judge Stoll, about the express disclaimer here. [00:35:32] Speaker 02: There is no ambiguity. [00:35:35] Speaker 02: In the original application, the summary of the invention in the original application says the electrode array includes a fluid permeable elastic member, and that's not the only place. [00:35:45] Speaker 02: The abstract. [00:35:46] Speaker 02: on page 49 of the original patent application also says it's an electrode array which is substantially absorbent and or permeable to moisture. [00:35:56] Speaker 02: These are characterizations of the invention as a whole. [00:35:59] Speaker 02: So that's first. [00:36:00] Speaker 02: Second, with respect to Truckeye's testimony, I think if you're going to treat this like claim construction, then let's treat it like claim construction. [00:36:08] Speaker 02: Invent or testimony, first of all, it's not a representation. [00:36:12] Speaker 02: The testimony 15 years later is not a representation at the time of the assignment. [00:36:16] Speaker 02: So that's not what the Supreme Court is asking you to focus on. [00:36:20] Speaker 02: But it's weak evidence. [00:36:24] Speaker 02: That's where I'm going. [00:36:25] Speaker 02: But it's weak evidence. [00:36:26] Speaker 02: Because the intrinsic evidence is absolutely clear here. [00:36:31] Speaker 02: And if the she was on the other foot. [00:36:33] Speaker 00: And it's against interest is not necessarily weak evidence. [00:36:37] Speaker 02: But extrinsic evidence is weak evidence when the intrinsic evidence is clear and closes the matter off. [00:36:43] Speaker 02: And that's what this case is. [00:36:45] Speaker 03: Mr. Hockman, if you lose on the narrow or broader issue, this whole question of the quality of the representations and the promises, you can't win on that. [00:36:55] Speaker 03: Okay, so let me just... It seems to me that your adversary shot an arrow at you. [00:37:02] Speaker 03: No, no, no. [00:37:06] Speaker 03: With claim 16, which is the sister claim of claim 31. [00:37:12] Speaker 03: What is your response to his argument? [00:37:14] Speaker 02: Well, two things I want to say. [00:37:15] Speaker 02: First, I want to address Claim 16. [00:37:17] Speaker 02: I'll get to that in a minute. [00:37:18] Speaker 02: But I want to start by talking about the narrow or broader issue. [00:37:21] Speaker 02: I know. [00:37:22] Speaker 02: I know. [00:37:22] Speaker 02: But very quickly on narrow or broader, their Claim 1 covers both permeable and impermeable devices. [00:37:29] Speaker 02: That's what makes it broader. [00:37:31] Speaker 02: Our Claim 31 only covered impermeable devices. [00:37:34] Speaker 02: And that's it. [00:37:35] Speaker 02: Now, as for Claim 16, this is a matter of claim differentiation at best. [00:37:40] Speaker 02: in the discussion and this court has again and again and again said a claim differentiation cannot overcome the kind of clear disclaimers that we have in this summary of the invention and in this abstract. [00:37:52] Speaker 02: They are definitive and by the way, you will search in vain every single reference. [00:37:59] Speaker 02: You will search in vain for any reference to an applicator head or an electrode array or the electrode carrying number. [00:38:07] Speaker 02: You will search in vain for any reference [00:38:09] Speaker 02: to one that is moisture permeable, and because it obviously would fundamentally prevent the invention from achieving its goal, which is to overcome the problem of trapping moisture at the ablation site. [00:38:23] Speaker 02: That's the point. [00:38:24] Speaker 02: You have to get the moisture out of the way. [00:38:26] Speaker 02: And so that's what this specification says. [00:38:29] Speaker 02: It's clear about the term electrode array. [00:38:31] Speaker 02: It's not Truckeye who tried to expand this to also cover devices with [00:38:36] Speaker 02: moisture permeable devices, it's Hologic, and they did it to try and keep their competitor off the market. [00:38:44] Speaker 02: And by the way, hundreds of millions of dollars went to not Chaba Chukai, but to investors who built this product out and for what it's worth, sold a very valuable product that was the top of the line for years. [00:38:58] Speaker 02: Hologic got tons of benefit from this. [00:39:00] Speaker 02: So there's no unfairness here either. [00:39:02] Speaker 02: And with respect, I'll take any further questions, but I'll leave it at that. [00:39:07] Speaker 04: We have no further questions. [00:39:08] Speaker 04: Thank you. [00:39:10] Speaker 04: Thank you. [00:39:11] Speaker 04: We thank counsel for their arguments, and the case is submitted. [00:39:15] Speaker 02: Thank you, Your Honors. [00:39:16] Speaker 02: Thank you, Your Honors. [00:39:19] Speaker 04: The honorable court is adjourned from day to day.