[00:00:04] Speaker 01:
May it please the court, Brian Matsui, on behalf of Melbourne.

[00:00:10] Speaker 01:
The district court construed the term pipette guiding mechanism narrowly by inserting the word manually into the claims.

[00:00:18] Speaker 01:
That construction is wrong for three reasons.

[00:00:21] Speaker 01:
First, claim construction does not require evidence of a phrase's prior use in order to have an ordinary meaning.

[00:00:29] Speaker 01:
Under Phillips, the ordinary meaning of a term can be understood from how the words are used in context.

[00:00:35] Speaker 00:
And whose burden is it to establish this in ordinary?

[00:00:38] Speaker 01:
I don't think there's a burden, because it's a question of law when you have just intrinsic evidence here when you're talking about it.

[00:00:44] Speaker 01:
If there was disavowal of some sort or prosecution history disclaimer, then that would be the burden on the side that's trying to assert it.

[00:00:53] Speaker 01:
But when you're talking about something just here,

[00:00:56] Speaker 01:
what does the intrinsic record show, then there's not a burden on how you would discern the ordinary meaning of a term.

[00:01:04] Speaker 01:
And if we take a look at this claim term, there's nothing in the intrinsic record at all that would suggest that the pipette assembly has to be manually moved.

[00:01:13] Speaker 01:
uh... the claims the figures they're in description they're all agnostic as to what moves the pipe at assembly patent doesn't use the word manual at all what's your best intrinsic support for your agnostic contention well i i think that the best intrinsic support is the fact that it doesn't say automatic or manual when you look at the language of the claims themselves it just discusses if we look at for example uh...

[00:01:40] Speaker 01:
you know, claim nine of the 175 patent at Appendix 54.

[00:01:47] Speaker 01:
It's just talking about a pipette guiding mechanism arranged to guide the pipette assembly between and into at least two positions of operation.

[00:01:55] Speaker 01:
And so it's just talking about where these pipette assembly goes and what restricts its movement, not what actually moves it.

[00:02:03] Speaker 00:
Can I ask you about the turn to the district court's opinion?

[00:02:07] Speaker 00:
I frankly am not clear.

[00:02:09] Speaker 00:
On appendix 10 and 11, first he rests on iridescent, and the priests describe why that's not the relevant precedent for this coin term issue in this case.

[00:02:23] Speaker 00:
But then he talks mainly about the prosecution history.

[00:02:26] Speaker 00:
So that's where his emphasis was, right?

[00:02:28] Speaker 00:
And can you, I'm a little unclear, frankly.

[00:02:31] Speaker 00:
If on page 10, he's talking about

[00:02:35] Speaker 00:
partly the re-examination.

[00:02:37] Speaker 00:
There are two proceedings here, right?

[00:02:39] Speaker 00:
There's the re-exam and then there's the original thing on them.

[00:02:42] Speaker 00:
What's the other patent family called?

[00:02:44] Speaker 01:
The Broga.

[00:02:45] Speaker 00:
Broga.

[00:02:45] Speaker 00:
OK.

[00:02:46] Speaker 00:
So when he's talking about at the top of Appendix 11, this rejection was cited during re-exam.

[00:02:53] Speaker 00:
And then again, he refers a few lines later to the examiner's rejection.

[00:03:02] Speaker 00:
I don't understand what he's referring to.

[00:03:04] Speaker 00:
And I'll ask your friend about this, too.

[00:03:05] Speaker 00:
Certainly.

[00:03:06] Speaker 00:
Because the examiner didn't reach my understanding during the exam.

[00:03:12] Speaker 00:
The patent owner cited this, and the examiner rejected his argument that this was only natural.

[00:03:20] Speaker 00:
So when he's talking about the rejection, what is he talking about?

[00:03:23] Speaker 01:
So he's talking about the rejection in the Broga prosecution history.

[00:03:28] Speaker 01:
So what he's talking about is the fact that the examiner rejected the Broga claims, because they would have been, he said, anticipated by Plotnikov, the application at issue here.

[00:03:43] Speaker 01:
And he's saying that,

[00:03:46] Speaker 01:
Well, I think that what's going on is that the examiner rejected, ultimately, the statements made by the applicant.

[00:03:54] Speaker 00:
It's not entirely clear, but I think that... So that cuts the other way entirely.

[00:03:58] Speaker 01:
That's why I'm a little confused.

[00:04:00] Speaker 01:
I think that it is a little confusing here, but I think that the key language is, at appendix 11,

[00:04:06] Speaker 01:
where in the middle of the paragraph of the middle, he says, as a coined term, I find that pipette guiding mechanism is limited by plain of statements during prosecution of the 7-8-2 patent that the Plotnikov specification does not teach that mechanism operates manually.

[00:04:21] Speaker 01:
And so he's construing these claims.

[00:04:24] Speaker 04:
I think it means operates automatically.

[00:04:25] Speaker 04:
Is that what you were reading?

[00:04:26] Speaker 01:
that the mechanism operates automatically.

[00:04:30] Speaker 01:
And so he's saying it does not teach that it operates automatically.

[00:04:33] Speaker 01:
And so I think what the district court here was requiring was that there be some sort of expressed disclosure of automatic in the patent itself.

[00:04:42] Speaker 01:
But there isn't any disclosure of either manual or automatic, because as I mentioned, it's agnostic.

[00:04:49] Speaker 01:
But this is the sole basis for the narrowing of the claims.

[00:04:53] Speaker 01:
this prosecution history of an unrelated patent, where the applicant's arguments were rejected by the examiner.

[00:05:02] Speaker 00:
We do have some cases, but arguably in a different context, where we have made statements about the inventor's statements during prosecution are indeed relevant.

[00:05:12] Speaker 00:
Again, leaving aside the fact that these were unrelated patents and not part of the same patent family.

[00:05:18] Speaker 00:
We do have those statements, but

[00:05:20] Speaker 00:
Those were in the context, I assume, where at least those arguments weren't rejected.

[00:05:26] Speaker 01:
That's correct.

[00:05:27] Speaker 01:
Or at least they weren't clearly rejected like they were here.

[00:05:30] Speaker 01:
And so in that context where you're not talking about disclaimer of the prosecution history, what you're ordinarily talking about is maybe the prosecution history is consistent with all the other parts of the intrinsic record, which clearly show the same thing.

[00:05:45] Speaker 01:
But here, the problem with the district court's construction is that, again, its only basis

[00:05:52] Speaker 01:
for narrowing the claims to manually was based upon this prosecution history that was rejected.

[00:05:58] Speaker 01:
The argument was rejected from an unrelated patent that was then imported into the claims.

[00:06:03] Speaker 01:
And then when you look at, as I mentioned, the claims themselves don't mention automatic or manually at all.

[00:06:08] Speaker 01:
They just talk about the restrictions on the movement itself.

[00:06:11] Speaker 01:
But if we look at the specification, it's similarly agnostic.

[00:06:15] Speaker 01:
If we look at

[00:06:16] Speaker 01:
Column 7 of the 175 patent, which is at Appendix 5050, that whole column discusses in detail the pipe deck guiding mechanism.

[00:06:27] Speaker 01:
And all the discussion there is talking about things that restrict movement, like guide grooves and guide sleeves and guide pins.

[00:06:35] Speaker 01:
So around line 12, it says the guide rod is restricted by guide grooves in the guide rod and guide pin.

[00:06:42] Speaker 01:
Line 18 it talks positions of operation are arranged at equal distance about the entire rotation of the guide assembly but at different angular positions.

[00:06:51] Speaker 01:
And at line 57 it talks about coaxial external guide sleeve with corresponding guide paths for the guide arm.

[00:06:58] Speaker 01:
That's just talking about structures that restrict movement but none of that and you won't find it anywhere in this

[00:07:04] Speaker 01:
passage that talks about moving the pipette assembly by hand or moving the pipette assembly by machine, because it's just agnostic about it.

[00:07:15] Speaker 01:
And so I think that if we were to take a step back and look at the district court's construction here, you have this term

[00:07:21] Speaker 01:
a pipette guiding mechanism.

[00:07:23] Speaker 01:
And if it was really such a difficult term for which there'd be no plain, ordinary meaning, you would expect there would be a very long and detailed construction.

[00:07:31] Speaker 01:
Instead, all the district court did was rearrange the words, those three words, and insert manually.

[00:07:37] Speaker 01:
So it just becomes a mechanism to manually guide the pipette rather than pipette guiding mechanism.

[00:07:43] Speaker 01:
There's no reason to limit the claims in such a way.

[00:07:48] Speaker 04:
I thought that there might have been at least an argument made by a present counsel that all the figures were just showing manual operation and that you might have admitted that or your side might have admitted that.

[00:07:59] Speaker 04:
Is that a true statement or not?

[00:08:00] Speaker 01:
That's not a true statement.

[00:08:02] Speaker 01:
All we've said is that the disclosure here does not expressly disclose automatic

[00:08:08] Speaker 01:
movement of the pipette assembly and that's a hundred percent accurate because it it doesn't expressly disclose its agnostic But similarly it doesn't expressly disclose movement if we look at the figures of the patents like figure 5 and figure 6 all the various figure 5a 5b

[00:08:24] Speaker 01:
at appendix 43, what you're seeing is, on the guide rod, grooves that basically show how the movement is restricted.

[00:08:35] Speaker 01:
But nothing there is suggesting that this has to be done by hand, or has to be done manually, or certainly can't be done with the use of the motor.

[00:08:43] Speaker 01:
I mean, these are comprising claims.

[00:08:44] Speaker 01:
So you don't need to detail everything like a motor, or a handle, or some sort of controller.

[00:08:50] Speaker 00:
And that was the one, the prior arc.

[00:08:51] Speaker 01:
There's no dispute that there was automatic movement in the prior art My friend on the other side he admitted that at the hearing that there was you know Arm that moved that would have the titration needle and the syringe to it.

[00:09:10] Speaker 01:
That's the same thing We're talking about here and we have you know a picture of

[00:09:15] Speaker 01:
Of that, at Appendix 865, which shows an auto ITC arm attached to a guided straight path, and at Appendix 949 to 950, there's a discussion about pushing a button to move the syringe.

[00:09:32] Speaker 01:
And so that's all in the prior art, is to, this was known, that it was known that you could automatically move

[00:09:41] Speaker 01:
a pipette assembly.

[00:09:43] Speaker 01:
It's just that there's nothing in the patent that would indicate that you would have to do it manually.

[00:09:48] Speaker 00:
I know you have a fallback argument, even if the broker prosecution statements are incorporated into the IDS.

[00:09:56] Speaker 00:
But you're arguing that they shouldn't be, or the court shouldn't have considered it.

[00:10:04] Speaker 00:
But there's an argument that you've conceded that.

[00:10:06] Speaker 01:
Well, I don't think that we could.

[00:10:09] Speaker 01:
that you don't, first of all, no matter what, it's still the prosecution history of an unrelated patent.

[00:10:14] Speaker 01:
And so this court's cases like Pfizer and Hillrom would still basically inform that you would not say that you would use that prosecution history to construe the scope of the claims.

[00:10:26] Speaker 01:
The argument is that it was incorporated in because it's listed in the IDS.

[00:10:31] Speaker 02:
What are the limits to that argument, though?

[00:10:33] Speaker 02:
I understand that they're unrelated, but it's the same exact term from similar people, right?

[00:10:40] Speaker 02:
It may not be the same inventor, but it's not complete.

[00:10:45] Speaker 02:
Is it the same family or something?

[00:10:47] Speaker 02:
It's the same term.

[00:10:48] Speaker 02:
It's the same kind of concept, right?

[00:10:52] Speaker 01:
It's, it's not at all the same family.

[00:10:54] Speaker 01:
It is common ownership, but that is just like, that's just like Pfizer.

[00:10:58] Speaker 02:
Right, right, right.

[00:10:59] Speaker 02:
So in here, I mean, to me, what's compelling is that you may have made an argument to try to get a patent in that separate unrelated patent that you lost.

[00:11:09] Speaker 02:
Maybe it was unwise or you did it for other reasons, but you lost that and it wasn't relied upon.

[00:11:15] Speaker 02:
What would happen if in that case you had argued, um, that it, that it was a coin term.

[00:11:22] Speaker 02:
and they'd adopted that specific meaning you proposed there.

[00:11:26] Speaker 02:
Would that have no effect on this case?

[00:11:28] Speaker 01:
I mean, this court precedent in Hill, like in Hill, Rahm, and Pfizer would indicate that it still would not have an effect, that you're not looking at an unrelated patents prosecution history, even if there is a disclaimer.

[00:11:41] Speaker 02:
But of course, as you mentioned, Judge, you said- I think that I have a hard time accepting that if it's a coined term, and I don't

[00:11:48] Speaker 02:
Honestly get there on this one, but if it is a specific coin term that that was created by this owner or you know, whatever and It was subscribed a specific meaning and it was relied upon by an examiner Even in an unrelated patent to grant that patent that you would be allowed to argue a completely different

[00:12:12] Speaker 02:
interpretation just because they're unrelated.

[00:12:14] Speaker 02:
None of that is here, but it seems to me that the mere fact that it's unrelated doesn't answer the question.

[00:12:20] Speaker 01:
I mean, yes.

[00:12:22] Speaker 01:
I think that if it had been accepted, there would be a better argument that there should be some sort of a stopple principle, although this court did address that until now.

[00:12:28] Speaker 01:
But I think that had that been the basis for overcoming a rejection, then I think that it would sort of look like,

[00:12:34] Speaker 01:
Maybe you should hold the patent owner to that.

[00:12:37] Speaker 01:
But that, again, is not what we have here.

[00:12:39] Speaker 01:
What we have here is the actual argument was rejected.

[00:12:43] Speaker 01:
And so it seems actually more unfair to hold the patent owner to that argument that was rejected, that wasn't the basis to overcome a rejection.

[00:12:54] Speaker 01:
Was the argument there that it was a coin term or just that?

[00:13:09] Speaker 01:
are commonly understood words, would be the type of phrase that you would say is a coin term.

[00:13:14] Speaker 01:
I think that a coin term is something that's probably more vague, like inherently vague, so that it's something that has been chosen, like a term of art.

[00:13:21] Speaker 01:
But pipette guiding mechanism, the way it's used in column seven of the patent is purely descriptive.

[00:13:27] Speaker 01:
And I don't think that that's something to say that you wouldn't have an ordinary meaning for.

[00:13:31] Speaker 00:
The coin term is very close to, would you agree, iridescent.

[00:13:36] Speaker 00:
as a coin term, highly subjective, yada, yada, yada.

[00:13:39] Speaker 01:
I think that looking at the use of the word coin term, that would make much more sense because you would have a phrase there that you can't understand in context what it means just looking at it in the context of the patent.

[00:13:52] Speaker 01:
But here, where you just have words like pipette guiding mechanisms that have commonly understood words, the words are being used precisely as you expect them to be used.

[00:14:01] Speaker 01:
and the patent claims themselves provide details about what the limitation is, I don't think that that's a coin term.

[00:14:08] Speaker 01:
Certainly, if you have magnetic fuzz or something along those lines, it could be that the patentee is trying to create a term of art.

[00:14:15] Speaker 01:
And so then you might need to look to the specification to see what does that really mean?

[00:14:19] Speaker 01:
What does that term of art mean?

[00:14:21] Speaker 01:
And in that situation, you could see that you would limit to the spec.

[00:14:24] Speaker 01:
But even if you were to say this is a coin term,

[00:14:26] Speaker 01:
you would be limited to the structures that are disclosed here in the specification, which just basically are restrictions on the type of movement, not how the pipette assembly is moved.

[00:14:36] Speaker 01:
So even if you were to sort of buy into the coin term framework that this report had, it still wouldn't be a justification to narrow the claims here.

[00:14:45] Speaker 01:
I'd like to reserve my time for the final.

[00:14:47] Speaker 00:
Thank you.

[00:14:49] Speaker 03:
Thank you, Your Honor.

[00:14:49] Speaker 03:
Good morning.

[00:14:51] Speaker 03:
Starting with the notion that we just ended on what is a coin term in

[00:14:55] Speaker 03:
In Indicon, custom link was determined to be a coin term.

[00:15:00] Speaker 03:
In Erdetto, group key was determined to be a coin term.

[00:15:04] Speaker 03:
Now, they didn't use the phrase coin term.

[00:15:05] Speaker 03:
They said they had no ordinary meaning in the art.

[00:15:08] Speaker 03:
In Honeywell, terrain floor boundary was a coined term.

[00:15:12] Speaker 00:
So which of these terms, I mean, do you agree that individually these are not coined terms?

[00:15:17] Speaker 00:
These are terms that are found in the art?

[00:15:20] Speaker 00:
Can we separate the phrase?

[00:15:21] Speaker 03:
There's no evidence at all that the term mechanism has any meaning in the art.

[00:15:26] Speaker 03:
It's a nonce term.

[00:15:27] Speaker 03:
It's like means.

[00:15:28] Speaker 03:
Indicate any structure.

[00:15:30] Speaker 03:
It doesn't indicate anything specifically.

[00:15:32] Speaker 03:
So we all know what a mechanism is Conceptually, but in the art of ITC's no one says ah mechanism.

[00:15:38] Speaker 03:
I know what that is There was not because we made the argument we made and we wanted our fallback argument had we got there would have been a 112f but we never got there and

[00:15:49] Speaker 03:
because Judge Andrews accepted correctly that this was a term that had never been used.

[00:15:54] Speaker 03:
They had every opportunity.

[00:15:55] Speaker 03:
He invited them to offer expert testimony.

[00:15:58] Speaker 03:
I'm an expert.

[00:15:58] Speaker 03:
I'm a posa.

[00:15:59] Speaker 03:
I know what this means.

[00:16:00] Speaker 03:
There were 150 references cited.

[00:16:03] Speaker 03:
Not a single one used the term mechanism, let alone pipette guiding mechanism.

[00:16:07] Speaker 03:
And when they themselves in the Broga patents, the same assignees, were going to the same feature, but this time automated, they didn't use the phrase pipette guiding mechanism

[00:16:17] Speaker 03:
They used pipette translation unit.

[00:16:19] Speaker 03:
So they used a totally different term when they were trying to capture the scope.

[00:16:25] Speaker 00:
Do you agree insofar as what it means as a mechanism that guides a pipette?

[00:16:30] Speaker 00:
I mean, you just look at the words and the English language resolves at least up to that point.

[00:16:38] Speaker 03:
Yes, and I think Judge Andrews acknowledged all three words can be found in Webster's, but that's no different than custom language.

[00:16:43] Speaker 00:
No, I'm talking about the meaning of the term, that it's a mechanism that guides a pipette.

[00:16:48] Speaker 00:
That's what it says.

[00:16:49] Speaker 03:
Well, if it's read that way, with mechanism with no defined structure, it has no meaning other than something.

[00:16:55] Speaker 00:
The function of anything that- Well, that gets us into means plus function land.

[00:17:00] Speaker 00:
That doesn't resolve this case under the

[00:17:03] Speaker 00:
guys that the district court resolves.

[00:17:06] Speaker 03:
If this is not a quaint term, then it is means plus function.

[00:17:09] Speaker 03:
And that would be even worse for plaintiffs because the structure is so narrow.

[00:17:14] Speaker 00:
But that's not the case before us.

[00:17:15] Speaker 00:
You want us to go there?

[00:17:16] Speaker 00:
You want us to navigate a case that wasn't the arguments that weren't made.

[00:17:20] Speaker 00:
Did they just report on the means plus function?

[00:17:22] Speaker 03:
No, Your Honor.

[00:17:23] Speaker 03:
I believe that Judge Andrews got it right.

[00:17:26] Speaker 03:
But if you disagree that Judge Andrews got it right, the response is to send it back to analyze whether it is a means plus function term.

[00:17:32] Speaker 03:
Because even in their briefing, they describe it as simply a mechanism arranged to guide.

[00:17:40] Speaker 03:
Well, that's a functional limitation that sounds a lot like 112F.

[00:17:44] Speaker 04:
Did you preserve means plus function arguments below?

[00:17:47] Speaker 04:
You just indicated that was your fallback.

[00:17:49] Speaker 04:
Was that preserved?

[00:17:50] Speaker 03:
Your Honor, first of all, it's, of course, de novo.

[00:17:52] Speaker 03:
But in any event, you don't preserve something when you win your lead argument.

[00:17:56] Speaker 03:
There's no waiver issue.

[00:17:57] Speaker 02:
Well, you preserve them if you make them during claim construction.

[00:18:00] Speaker 03:
We don't believe it's means plus function.

[00:18:02] Speaker 02:
Did you make that during claim construction?

[00:18:03] Speaker 03:
No, because we didn't believe it is means plus function.

[00:18:05] Speaker 03:
We believe it's a coined term.

[00:18:06] Speaker 03:
So you didn't preserve it.

[00:18:07] Speaker 03:
You can't wave a de novo, as a matter of law, you can't wave a de novo review of something when you win your lead argument.

[00:18:15] Speaker 03:
You don't need to preserve fallbacks, just as a legal matter.

[00:18:18] Speaker 03:
But I don't think you're right on that.

[00:18:21] Speaker 03:
But Judge Andrews can decide that if it goes back.

[00:18:23] Speaker 03:
Understood, Your Honor.

[00:18:24] Speaker 00:
Can I move you to another issue?

[00:18:26] Speaker 00:
Sure.

[00:18:26] Speaker 00:
It's just really perplexing to me, which is the public notice function underlies everything.

[00:18:32] Speaker 03:
Absolutely, Your Honor.

[00:18:34] Speaker 00:
How is a member of the public

[00:18:37] Speaker 00:
supposed to interpret the fact that in this prosecution history, even assuming it's relevant, you've got someone saying this and the examiner saying, you're wrong.

[00:18:49] Speaker 00:
And that's the end of the thing.

[00:18:51] Speaker 00:
So if anything, why isn't it the case that if the public would derive anything from this prosecution history, it would be no, not yes, to what the patent owner said?

[00:19:01] Speaker 03:
So Your Honor, let's track this chronologically for a moment.

[00:19:04] Speaker 03:
It's an important question you ask.

[00:19:07] Speaker 03:
The assignee of the patented issue in this case said, first in the Broga patent itself, that the Platnikov patent

[00:19:20] Speaker 03:
is incorporated by reference, and it is a manual ITC system.

[00:19:24] Speaker 03:
That wasn't in the prosecution history.

[00:19:26] Speaker 03:
That was in the patent itself.

[00:19:27] Speaker 03:
And that's at A6996.

[00:19:29] Speaker 03:
So in the patent itself, the assignee tells the world that the Platnikov patent is a manual ITC.

[00:19:38] Speaker 03:
So that's the PAC.

[00:19:39] Speaker 03:
That's public notice all over.

[00:19:41] Speaker 03:
Now let's go to the prosecution history, where the assignee said, quote, there is no teaching of Platnikov indicating that a pipette guiding mechanism should provide automated translation of the pipette.

[00:19:55] Speaker 03:
The pipette guiding mechanism 510, using exactly the same number, is purely a passive guiding mechanism.

[00:20:01] Speaker 03:
That statement was made in the Baroga patent prosecution.

[00:20:05] Speaker 03:
That prosecution was then incorporated in the Plotnikoff re-exam.

[00:20:09] Speaker 00:
Before you get to the re-exam, what did the examiner do with that argument made during prosecution?

[00:20:16] Speaker 00:
He rejected or she rejected it.

[00:20:17] Speaker 03:
Well, disagree, but then they still won the patent because they argued common ownership.

[00:20:22] Speaker 00:
For something else.

[00:20:23] Speaker 00:
So the examiner rejects the argument, and they move on to something else.

[00:20:29] Speaker 00:
So how is the public supposed to accept what the examiner himself rejected and which they didn't pursue on appeal or whatever?

[00:20:38] Speaker 00:
They moved up to something else, which is something entirely different.

[00:20:42] Speaker 00:
So how is the public supposed to take away what the patent owners

[00:20:47] Speaker 00:
tried to argue and was rejected by the examiner really has meaning in terms of the evidence.

[00:20:53] Speaker 03:
As this court said in Multitech at 1350, quote, we have stated on numerous occasions that a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim instruction.

[00:21:04] Speaker 00:
In that case, was it rejected by the examiner or whether we brought it?

[00:21:07] Speaker 00:
I mean, there are three buckets here.

[00:21:09] Speaker 00:
There's the bucket with the patenome.

[00:21:11] Speaker 00:
And the bucket you're talking about is it could be the patenome who says a lot of things during prosecution.

[00:21:16] Speaker 00:
And the examiner never gets there.

[00:21:18] Speaker 00:
But in this case, that's not this case, right?

[00:21:20] Speaker 00:
In this case, the examiner rejected the argument made by the patent.

[00:21:24] Speaker 03:
And then the patent owner came back.

[00:21:26] Speaker 03:
Yes, but remember, the patent owner came back in a second round.

[00:21:29] Speaker 03:
That quote I just read you was the second round.

[00:21:31] Speaker 03:
So the examiner said, it's automated.

[00:21:33] Speaker 03:
The patent owner says, it's not.

[00:21:35] Speaker 03:
The examiner says, yes, it is.

[00:21:37] Speaker 03:
The patent owner comes back and says, it's really not.

[00:21:40] Speaker 03:
But also, Your Honor, you're rather your patent office.

[00:21:46] Speaker 03:
You don't have to get there, because we're common owners, therefore it's not prior art.

[00:21:49] Speaker 03:
So the last word, as it were, was the patent owner saying, you're wrong.

[00:21:54] Speaker 00:
No, the last word on this question was by the examiner that rejected the argument made by the patent owner.

[00:22:01] Speaker 00:
Did the examiner not reject the argument made by the patent owner?

[00:22:05] Speaker 03:
The examiners, well.

[00:22:06] Speaker 00:
On this automatic manual.

[00:22:08] Speaker 03:
But then they came back and said, you're wrong.

[00:22:11] Speaker 03:
I mean, it wasn't the assignee.

[00:22:13] Speaker 03:
Malvern, in this case, came back.

[00:22:17] Speaker 00:
And this is an aid.

[00:22:18] Speaker 00:
Well, that's the point I'm trying to make.

[00:22:19] Speaker 00:
What is the public supposed to take away?

[00:22:22] Speaker 00:
What the patent owner argued and maybe re-argued and re-argued, or what the examiner did in rejecting that argument and granting the patent on other grounds?

[00:22:31] Speaker 03:
Well, remember, this was also in the patent itself.

[00:22:33] Speaker 03:
So this whole prosecution issue isn't necessary for the argument that Judge Andrews accepted to be accepted by this court.

[00:22:41] Speaker 03:
The Broga patent itself says it was a manual system, that the Platnikov was a manual system.

[00:22:48] Speaker 03:
And so prosecution history aside,

[00:22:52] Speaker 03:
We have the coin term being defined in the Broga patent, which was then incorporated by reference into the Platnikov intrinsic record.

[00:22:59] Speaker 00:
So tell me, what is the district court, in its opinion and appendix 11, where he says plaintiffs, first he says, this rejection was cited during the re-examination.

[00:23:10] Speaker 00:
This rejection, what rejection is he talking about?

[00:23:13] Speaker 00:
I mean, the examiner rejected the argument.

[00:23:17] Speaker 00:
And so when he says this rejection on the first line, what rejection is he talking about?

[00:23:22] Speaker 03:
He's talking about the second round, I believe, the second go round, where the examiner said what the quote I read you was responding to.

[00:23:31] Speaker 03:
But they went back and forth, back and forth.

[00:23:34] Speaker 03:
And then Malvern said, it doesn't matter anyway, your patent office, because we have common ownership and therefore it's prior art.

[00:23:40] Speaker 03:
So the issue was unresolved.

[00:23:41] Speaker 03:
It's not like Malvern ever said, all right, you're right.

[00:23:45] Speaker 03:
This was automatic, but we have another way to go about it.

[00:23:47] Speaker 03:
They agreed to disagree.

[00:23:49] Speaker 03:
The Patent Office and Malvern said, we're not going to resolve this.

[00:23:53] Speaker 03:
They each took two rounds at this.

[00:23:55] Speaker 03:
And then Malvern said, but it doesn't matter anyway.

[00:24:00] Speaker 03:
The key issue here, from our perspective, is counsel, and throughout this litigation, has tried to- Do you disagree that it's a coin term?

[00:24:11] Speaker 04:
Do you agree that you lose?

[00:24:13] Speaker 03:
No, because in retractable, in SIMED, in network commerce, in Microsoft, there was no finding of coin term in any of those cases, and they were still held to what the specification discloses.

[00:24:30] Speaker 03:
And here, we keep hearing the term agnostic.

[00:24:33] Speaker 03:
Agnostic is just a fancy word for it doesn't disclose an automatic translation.

[00:24:38] Speaker 03:
And so they're trying to read this term broadly enough to encode something that they admitted.

[00:24:43] Speaker 03:
And counsel said that they acknowledged that automatic wasn't expressly in the patent.

[00:24:49] Speaker 03:
They went one step further at A3403 at argument at the claim construction hearing.

[00:24:54] Speaker 03:
They said unambiguously that Platnikoff

[00:24:57] Speaker 03:
Doesn't quote doesn't have a disclosure of an automatic pipette guiding mechanism.

[00:25:02] Speaker 03:
That's not agnostic.

[00:25:03] Speaker 04:
That's an absence Are you potentially raising a 112 issue that you have with the pen?

[00:25:09] Speaker 03:
If your honor if we were not successful today ultimately or on remand we would of course argue a 112 written description or enablement issue, but

[00:25:20] Speaker 03:
what Microsoft and Retractable Cybernetwork put, and then of course all of the coin term cases, they're DEDO and Indicon and Iridescent and the like.

[00:25:28] Speaker 03:
All of those say, you have a term like this, and your spec doesn't give you the breadth you want, we're going to limit you to what the spec says.

[00:25:36] Speaker 03:
And that's of course what Phillips tells us, that the best guide to the meaning of the term is to look at the patent, the intrinsic record as a whole.

[00:25:43] Speaker 03:
And again,

[00:25:44] Speaker 03:
It's not agnostic as to automatic.

[00:25:47] Speaker 03:
Automatic just isn't there.

[00:25:49] Speaker 03:
And they told us in the Broga patent, automatic just isn't there.

[00:25:53] Speaker 03:
They told us in the prosecution history of Broga, automatic just isn't there.

[00:25:58] Speaker 03:
So we're giving them claim scope that in trying to get the next generation of patents, they told the Patent Office and the public, it's just not there.

[00:26:08] Speaker 03:
Any other questions?

[00:26:10] Speaker 00:
Thank you, Your Honor.

[00:26:13] Speaker 00:
We'll restore three minutes through that.

[00:26:15] Speaker 01:
Thank you, Your Honor.

[00:26:16] Speaker 01:
I'd just like to start with the means plus function issue.

[00:26:18] Speaker 00:
Again, that was exactly what I wanted you to start with.

[00:26:21] Speaker 00:
What is your position?

[00:26:22] Speaker 01:
That was forfeited.

[00:26:23] Speaker 01:
It was never made at claim construction.

[00:26:25] Speaker 01:
So there is no means plus function argument.

[00:26:27] Speaker 01:
When you look at the claim language here, too, there is structure.

[00:26:30] Speaker 01:
It discusses more than just PIPAC guiding mechanism.

[00:26:33] Speaker 01:
The limitation goes on and discusses to move within two different positions for washing and for loading the titrant to be rotational.

[00:26:41] Speaker 00:
Is that something that can be forfeited?

[00:26:43] Speaker 00:
I mean, we do claim construction de novo.

[00:26:45] Speaker 00:
clearly a plenty of cases that say, you know, you say one claim instruction, he says the other, and we can do, you know, come up with whatever claim construction we want.

[00:26:53] Speaker 00:
Would we be precluded from concluding or deciding if this means plus one claim?

[00:26:57] Speaker 01:
I believe you would, because it still is arguing for something that they never presented to the district court.

[00:27:02] Speaker 01:
It's effectively changing the construction.

[00:27:04] Speaker 00:
And why on remand would, well, you would agree that it would be up to the district court judge to determine if it could renew a claim?

[00:27:12] Speaker 00:
an argument, even if not made originally, is done this new.

[00:27:16] Speaker 01:
And it may depend, Your Honor.

[00:27:17] Speaker 01:
I'm sorry to interrupt.

[00:27:19] Speaker 01:
It may depend, Your Honor, of course, as to what the local rules would be as to what arguments you could make in claim construction if you haven't made them before.

[00:27:27] Speaker 01:
But certainly, it's something that they could make, I guess, below to the district court.

[00:27:32] Speaker 02:
The forfeiture is ultimately discretionary.

[00:27:34] Speaker 02:
It is.

[00:27:35] Speaker 02:
As opposed to other waiver type things.

[00:27:39] Speaker 02:
But you can forfeit legal arguments if you don't raise them timely.

[00:27:43] Speaker 01:
That's correct, Your Honor.

[00:27:44] Speaker 00:
Did you have an argument on these before?

[00:27:46] Speaker 01:
We don't think that this is a means-plus-function claim anyway.

[00:27:49] Speaker 01:
So I think that the more important thing, of course, is just to get the claim construction here corrected.

[00:27:54] Speaker 01:
And I think that the rule that Waters is advocating effectively is going to require experts in every single claim construction case, even when you have very clear, ordinary meanings to words, because you're always going to need an expert to say, well, the ordinary meaning of pipette guiding mechanism here is this.

[00:28:10] Speaker 01:
And that's just unnecessary burden on district courts.

[00:28:13] Speaker 00:
What do you say to his final argument about there's just nothing here.

[00:28:17] Speaker 00:
There's nothing there that says anything about the automatic.

[00:28:21] Speaker 01:
But there's nothing that says anything about manual either and it's conceded.

[00:28:25] Speaker 00:
Well I think they might disagree.

[00:28:26] Speaker 00:
I mean at least they have this user thing, right?

[00:28:29] Speaker 01:
But that's talking about, you know, a lot of different things.

[00:28:32] Speaker 01:
It's not talking about the pipette guiding mechanism.

[00:28:35] Speaker 01:
There are things that are automated in Plotnikov, and there are things that can be manual or they can be automated, and there's nothing, again, when you're looking at the pipette guiding mechanism that indicates that it has to be

[00:28:47] Speaker 01:
Narrowed to manual to manual movement of the pipe at assembly I'd like to just say one thing on the IDs the only things that are in Decided in the IDs are the rejection So if you're talking about the public notice function the only thing that a person ordinary school in the art will look to Would be what the examiner said not even what the applicant said in the unrelated patent which shouldn't be considered anyway because of Pfizer and Hill Rom and lastly

[00:29:13] Speaker 01:
I was looking at Appendix 6996, and that's the Broga patent.

[00:29:17] Speaker 01:
And what it's talking about is a more manual ITC for the Plotnikov patent.

[00:29:23] Speaker 01:
But there are lots of things in Broga that are automated that aren't in Plotnikov, in the patent here, such as it's talking about things like auto washing and auto reloading.

[00:29:34] Speaker 01:
So it's just a mere fact that the Broga patents say

[00:29:39] Speaker 01:
It's the Plotnikov patents have more manual.

[00:29:42] Speaker 01:
Doesn't mean that it's talking about manual guiding them.

[00:29:44] Speaker 01:
Sorry.

[00:29:46] Speaker 00:
We thank both sides in the case.