[00:00:01] Speaker 00:
Our last case this morning is Biomedical Device Consultants and Laboratories of Colorado versus the Vitro Labs, 2023, 2393.

[00:00:26] Speaker 02:
I think it is still morning.

[00:00:27] Speaker 02:
So good morning, your honors.

[00:00:29] Speaker 02:
May it please the court.

[00:00:30] Speaker 02:
I'm Greg Tampkin.

[00:00:31] Speaker 02:
I'm here on behalf of BDC Laboratories.

[00:00:35] Speaker 02:
We're here following a preliminary injunction hearing in which the court found no infringement based on entirely flawed claim construction and invalidity of four claims based on really a misunderstanding of how anticipation works.

[00:00:52] Speaker 00:
Did the court find no infringement or that there were substantial questions regarding validity and infringement?

[00:01:00] Speaker 02:
The court did find that there are substantial questions regarding that, which is, of course, the standard.

[00:01:04] Speaker 00:
And doesn't that defeat your appeal?

[00:01:07] Speaker 02:
Of course not, Your Honor.

[00:01:08] Speaker 00:
Preliminary injunction?

[00:01:10] Speaker 02:
Of course not, Your Honor.

[00:01:11] Speaker 02:
Because this court has held on numerous occasions that even on preliminary injunction, claim construction is reviewed de novo.

[00:01:20] Speaker 02:
And in this case, the court made a fundamental error.

[00:01:25] Speaker 02:
It ignored multiple canons of claim construction.

[00:01:28] Speaker 03:
OK, but just hold on a second.

[00:01:30] Speaker 03:
Suppose we were to agree with you that there's a problem in the infringement analysis, which I'm not saying it risks.

[00:01:37] Speaker 03:
But the finding of a substantial question of invalidity is itself sufficient to affirm the denial of the injunction, right?

[00:01:45] Speaker 02:
In this case, there was a finding.

[00:01:47] Speaker 02:
Yes, no.

[00:01:49] Speaker 02:
If there is a substantial question of invalidity and it covers all of the claims, then that would also be a way to defeat the preliminary injunction.

[00:01:58] Speaker 02:
I agree.

[00:01:59] Speaker 01:
And here between obviousness and anticipation, the district court found a substantial question with respect to all sort of claims.

[00:02:06] Speaker 01:
Isn't that right?

[00:02:07] Speaker 02:
That is not correct, Your Honor.

[00:02:08] Speaker 01:
Tell us where that's wrong.

[00:02:09] Speaker 02:
The district court specifically found obviousness with respect to, excuse me, invalidity and anticipation with respect to

[00:02:19] Speaker 02:
the claims that were issued.

[00:02:20] Speaker 02:
There were four claims that were claimed to have been anticipated.

[00:02:23] Speaker 02:
One, two, eight, and thirteen, I believe.

[00:02:28] Speaker 02:
And it specifically says on... Then the court went on to talk about obviousness.

[00:02:41] Speaker 01:
It's a short opinion, but at the bottom of page 11, it says

[00:02:47] Speaker 02:
Similar doubts remain for the concept of obvious and the court will benefit from briefing to determine whether the teachings of she,

[00:02:56] Speaker 02:
Dynatech and Lew could have been combined.

[00:02:59] Speaker 03:
What the court seems to be saying is that when we get to the merits of this, I'll benefit from further briefing on this issue.

[00:03:07] Speaker 03:
Why does that mean that he hasn't found a substantial question of obviousness?

[00:03:12] Speaker 03:
There certainly is no dearth of an adequate record to support a finding of a substantial question on obviousness, right?

[00:03:19] Speaker 03:
Because there's an expert report that goes through

[00:03:22] Speaker 03:
the various claim limitations and prior art, and it says there's a substantial issue.

[00:03:29] Speaker 02:
When the court was looking at anticipation, it specifically said, I find that there is anticipation of claim one and the other dependent claims and cites to DASI.

[00:03:43] Speaker 02:
That's their expert.

[00:03:44] Speaker 02:
When the court turns to obviousness, it says, I would benefit from further briefing.

[00:03:49] Speaker 02:
But the difference here

[00:03:51] Speaker 02:
is that when the court was going to say it's obvious or it's anticipated, the court knew how to do that.

[00:03:57] Speaker 02:
And when it said it's anticipated, the court did so.

[00:04:00] Speaker 03:
I didn't have to find that it was obvious.

[00:04:02] Speaker 03:
All the court needs to do is to say, I think this is a substantial question of obviousness here.

[00:04:07] Speaker 03:
And when we get to the merits, I'd benefit from further briefing.

[00:04:10] Speaker 02:
But what the court said, I'm just drawing the comparison, Judge Dyke.

[00:04:14] Speaker 02:
which is when the court says there's substantial questions as to anticipation, it said it.

[00:04:19] Speaker 02:
When it talks about obviousness, it says that it would benefit... Substantial doubt.

[00:04:24] Speaker 01:
I mean, I'm looking at A11.

[00:04:26] Speaker 01:
It's all one page at the top.

[00:04:29] Speaker 01:
what you apparently consider, I'm sure you disagree on the merits, but you consider an adequate statement, is the court finds a substantial question concerning whether the prior art anticipated, correct?

[00:04:41] Speaker 01:
Correct.

[00:04:41] Speaker 01:
You say, perfectly adequate, sufficient explanation.

[00:04:45] Speaker 02:
That's a finding.

[00:04:47] Speaker 01:
You don't like the finding.

[00:04:48] Speaker 02:
But it is a finding.

[00:04:50] Speaker 01:
Right.

[00:04:51] Speaker 01:
And so then, barely whatever, 20 lines down, turning to obviousness, the court says,

[00:04:59] Speaker 01:
The 935 patent does not specify the pressure source that moves the fluid, so substantial doubt remains as to validity based on the plain language of the patent.

[00:05:10] Speaker 01:
Admittedly, the shift is from substantial question to substantial doubt, but you're saying that's an inadequate finding.

[00:05:17] Speaker 02:
For two reasons, Your Honor.

[00:05:19] Speaker 02:
The first reason is because it's not enough on obviousness just to say, I see it there.

[00:05:25] Speaker 02:
There has to be both the motivation to combine and consideration of the secondary considerations of non-obviousness.

[00:05:31] Speaker 01:
Absolutely true.

[00:05:32] Speaker 01:
When the merits are determined.

[00:05:35] Speaker 02:
But that was raised down below and the court ignored it.

[00:05:38] Speaker 02:
Well, the court didn't ignore it.

[00:05:40] Speaker 02:
In fact, the court addressed it.

[00:05:42] Speaker 02:
What the court said was, when it's dealing with down below,

[00:05:45] Speaker 02:
It's that I need more briefing because there's one paragraph in Dr. Dossi's declaration, paragraph 76, in Dr. Dossi's declaration that talks about motivation to go by.

[00:05:57] Speaker 01:
Where have we ever said that a district court in determining whether there's a substantial question of obviousness can't just say something to the effect of

[00:06:08] Speaker 01:
I've considered all the evidence and there's a substantial question of obviousness without getting into all the components of obviousness.

[00:06:14] Speaker 02:
If that were the situation here, perhaps that would be a different situation.

[00:06:20] Speaker 02:
But here what the court tells us is I haven't made a finding, I haven't considered

[00:06:26] Speaker 02:
I need more briefing on this obvious motivation to combine questions.

[00:06:31] Speaker 01:
I don't think that's correct.

[00:06:37] Speaker 02:
I don't think the court understood the analysis.

[00:06:42] Speaker 02:
I think the court made a finding that there's substantial doubt as to whether or not it could track an excess volume area

[00:06:50] Speaker 02:
in the G reference and maybe the Dynotech reference, and then ignore, then ignore, recognize it didn't have any information or sufficient information to make a finding on obviousness because it needed the motivation to combine and it didn't consider secondary considerations of non-obviousness.

[00:07:11] Speaker 02:
Now, I agree that the standard is lower on preliminary injunction motion.

[00:07:19] Speaker 02:
But that doesn't mean the standards don't exist.

[00:07:21] Speaker 02:
It doesn't mean that if there's evidence presented that the court can not consider it or ignore it.

[00:07:29] Speaker 02:
You have to do the full analysis.

[00:07:31] Speaker 02:
And here, that full analysis wasn't done.

[00:07:34] Speaker 02:
There wasn't a full analysis of obviousness or even an analysis to get to whether there's a substantial question of invalidity or not.

[00:07:44] Speaker 02:
Likewise, there wasn't the analysis of secondary considerations

[00:07:47] Speaker 02:
of non-obviousness, it just wasn't conducted.

[00:07:50] Speaker 02:
It wasn't considered.

[00:07:52] Speaker 02:
And I understand that there's cases that, well, actually there's cases that say even at a preliminary injunction stage, when you're sort of considering less evidence or less modicum of evidence, you still have to do the full analysis.

[00:08:06] Speaker 02:
And that's really the, uh, the T-bro manufacturing case, which is, um,

[00:08:13] Speaker 02:
Tiber Manufacturing versus Firefly Equipment 748 F3rd 1159 at 1169.

[00:08:24] Speaker 02:
You still need to do the full analysis.

[00:08:27] Speaker 02:
Now that was also in the context of claim construction, but it was both claim construction and in validity.

[00:08:33] Speaker 02:
In that case, the court did reverse a preliminary injunction.

[00:08:37] Speaker 01:
uh... denial from the marion junction uh... on secondary considerations that help me on uh... of what happened in the district court did you when did you first raise substantial or secondary considerations did you make a showing or attempt to make a showing of the nexus between the patent and your uh... own embodiments sure that that's all in the declarations of both the two declarations are submitted from a procedural perspective

[00:09:07] Speaker 02:
This was originally a case that was filed in Colorado.

[00:09:10] Speaker 02:
It was transferred to California.

[00:09:12] Speaker 02:
As a result of the transfer, everything was refiled.

[00:09:15] Speaker 02:
So the new declarations that were submitted in California really were responsive already to the declarations that had been filed in response.

[00:09:28] Speaker 01:
I could believe there's a lengthy oral argument.

[00:09:31] Speaker 01:
The secondary considerations came up, I believe, didn't it?

[00:09:34] Speaker 02:
Uh, it came up in, in passing.

[00:09:37] Speaker 02:
Yes, but it did come up.

[00:09:39] Speaker 02:
It came up at, at, to some level.

[00:09:41] Speaker 02:
Um, and those references in the declaration of Craig Weinberg, which is 866 that talks all about the commercial success.

[00:09:49] Speaker 02:
And frankly, the declaration of, um, Mr. I'm not sure how to pronounce it.

[00:09:54] Speaker 02:
Munim Munim, um, at, uh, 11th appendix 1154 also talks about the fact that the BBC

[00:10:04] Speaker 02:
inventions and product came on the market and totally upended the market.

[00:10:09] Speaker 02:
It went from a startup in 2010, roughly, and within five to seven years had 75 to 80% of the market.

[00:10:17] Speaker 02:
The defendant was arguing a lack of nexus, right?

[00:10:20] Speaker 02:
The defendant at this court argued a lack of nexus.

[00:10:26] Speaker 02:
Down below the defendant did not argue a lack of nexus.

[00:10:29] Speaker 02:
with respect to the secondary considerations.

[00:10:33] Speaker 03:
There was no argument about nexus in the district court?

[00:10:36] Speaker 02:
There was an argument only about the nexus between the irreparable harm factors and the allegations of irreparable harm.

[00:10:46] Speaker 02:
It was not about secondary considerations.

[00:10:49] Speaker 01:
You're asking us to conclude that the district court ignored the evidence of secondary considerations

[00:10:56] Speaker 01:
and also failed to consider whether it could so rebut the prima facie case that it would be left with no substantial question of obviousness.

[00:11:06] Speaker 01:
That's what you need us to find, right?

[00:11:08] Speaker 02:
I don't think so.

[00:11:09] Speaker 02:
I think, Your Honor, I need you to find that that's in fact what the district court said.

[00:11:13] Speaker 02:
That the district court said, there's anticipation.

[00:11:17] Speaker 02:
With respect to obviousness, I have questions about whether the elements map to those other references.

[00:11:26] Speaker 02:
But I need more briefing on these other things, which means there is no finding on obviousness.

[00:11:32] Speaker 03:
Do you agree then that we have to sustain his determination with respect to anticipation?

[00:11:38] Speaker 02:
I don't.

[00:11:39] Speaker 02:
I think the court was wrong with respect to anticipation.

[00:11:42] Speaker 02:
The claim requires a test chamber.

[00:11:48] Speaker 02:
Let me step back.

[00:11:50] Speaker 02:
Obviousness was based on a Dynatech reference.

[00:11:52] Speaker 02:
The Dynatech reference has a test chamber.

[00:11:55] Speaker 02:
and a separate chamber that sits above the test chamber that's connected by a long two.

[00:12:00] Speaker 03:
We don't sit here to make the determinations of whether it was shown to be anticipated or not.

[00:12:06] Speaker 03:
We have expert testimony on both sides, conflicting expert testimony.

[00:12:10] Speaker 03:
The district court found that that raised a substantial question.

[00:12:13] Speaker 03:
That's enough, right?

[00:12:15] Speaker 02:
If that's not an abuse of discretion, yes.

[00:12:17] Speaker 02:
It doesn't mean you have to accept it.

[00:12:19] Speaker 02:
You still need to look at it.

[00:12:21] Speaker 02:
And in this case, the elements of the claim require that the excess volume area be in the test chamber.

[00:12:28] Speaker 02:
This excess volume area was separate apart from the test chamber.

[00:12:32] Speaker 02:
The claim requires that the excess volume area operate itself at a different rate, at an accelerated rate.

[00:12:41] Speaker 02:
And the only evidence that was relied upon with respect to the excess volume area operating at a different rate is a statement

[00:12:51] Speaker 02:
about the excess volume area buffering systemic pressure changes that are for small leakages that are transient and thermal effects.

[00:13:02] Speaker 02:
In other words, the reliance in that reference that relates to how that excess volume area operates was it doesn't operate at an accelerated rate.

[00:13:15] Speaker 02:
It only deals with changes in temperature over time because these

[00:13:20] Speaker 02:
products will run for six months at a time, and system and small leaks.

[00:13:25] Speaker 02:
So there's no mapping on the Dynatech reference to the actual claims.

[00:13:33] Speaker 02:
And that's what the judge did.

[00:13:34] Speaker 02:
The judge didn't look at the overall legal landscape of how you do anticipation.

[00:13:41] Speaker 00:
Counsel, you're well into your rebuttal time.

[00:13:44] Speaker 00:
I assume you want to save it?

[00:13:46] Speaker 02:
I will save it.

[00:13:46] Speaker 02:
Thank you, Your Honor.

[00:13:49] Speaker 00:
Mr. Thomas.

[00:14:09] Speaker 04:
Thank you and may it please the court.

[00:14:14] Speaker 04:
Regardless how the claims are construed,

[00:14:16] Speaker 04:
Sorry, this court should affirm the order denying BDC's preliminary injunction motion because the district court made factual findings that the vitro raised substantial questions as to both validity and infringement.

[00:14:30] Speaker 04:
And BDC has not shown that both of those factual findings are clearly erroneous as it must for the court to reverse or remand.

[00:14:39] Speaker 04:
To the contrary, the district court's findings are correct.

[00:14:42] Speaker 04:
Now, regardless of how the claims are construed,

[00:14:45] Speaker 04:
they are invalid.

[00:14:47] Speaker 04:
The dispute over the meaning of the validity or the meaning of the term excess volume area is not relevant to the validity or the validity analysis the district court performed.

[00:14:59] Speaker 04:
And I want to pick up on the questions about the obviousness analysis that the district court performed.

[00:15:07] Speaker 04:
The district court's statements about obviousness, we submit that the only reasonable interpretation of its statements

[00:15:15] Speaker 04:
is that Vivitro established a substantial doubt of invalidity under section 103 for two reasons.

[00:15:22] Speaker 04:
First, as Your Honor pointed out, this line about substantial doubts remain for the concept of obviousness.

[00:15:28] Speaker 04:
The question is similar to what?

[00:15:31] Speaker 04:
There were similar doubts remain for the concept of obviousness.

[00:15:33] Speaker 04:
Well, it's similar to all the other doubts that the district court had expressed.

[00:15:39] Speaker 04:
Doubts about the infringement case, doubts about the anticipation case for the validity of the claims,

[00:15:46] Speaker 04:
And substantial concerns that the 935 patent is invalid and substantial doubt remains as to validity.

[00:15:55] Speaker 03:
So what about secondary considerations?

[00:15:58] Speaker 03:
They say that there may be no argument about nexus in the district court.

[00:16:05] Speaker 03:
Is that true?

[00:16:06] Speaker 04:
That is incorrect, Your Honor.

[00:16:09] Speaker 04:
In the briefing below,

[00:16:11] Speaker 04:
This was a question that was not answered.

[00:16:13] Speaker 04:
BDC did not raise the secondary considerations argument until its reply brief.

[00:16:22] Speaker 04:
The focus of the argument was about, or at least the evidence was argued about, nexus.

[00:16:28] Speaker 04:
We argued pages about, the evidence about, no time.

[00:16:34] Speaker 04:
In the briefing before the oral hearing, we argued there was no nexus.

[00:16:39] Speaker 03:
Wait, just help me with the analogy.

[00:16:41] Speaker 03:
You say they didn't raise the secondary considerations until the reply.

[00:16:45] Speaker 03:
How did the briefing go forward from there?

[00:16:47] Speaker 04:
OK, well, let me after the reply or before that?

[00:16:50] Speaker 03:
No, beginning with the reply.

[00:16:52] Speaker 04:
OK.

[00:16:53] Speaker 04:
Beginning with the reply, they raised secondary considerations.

[00:16:57] Speaker 04:
That specific argument, they said, Favitro failed to address secondary considerations.

[00:17:04] Speaker 04:
BDC had not made the secondary considerations argument in its opening brief.

[00:17:10] Speaker 04:
At the oral hearing, at the four-hour hearing... So was there any further briefing on that issue?

[00:17:15] Speaker 04:
There was not any further briefing on the issue, but at the oral hearing we discussed it.

[00:17:19] Speaker 04:
Docket Entry 92, pages 115 to 117 of the transcript, which is not in the joint appendix, but we discussed and rebutted all of that discussion about the nexus issues.

[00:17:33] Speaker 04:
and pointed out that BDC hadn't satisfied his burden, hadn't shown coextensiveness, hadn't even shown that this product hadn't even introduced sufficient evidence to show that the product was, in fact, an embodiment of the claims.

[00:17:52] Speaker 04:
There was discussion in BDC's opening brief and our response brief

[00:17:58] Speaker 04:
about a nexus as it relates to the irreparable harm.

[00:18:02] Speaker 04:
So there's a similar nexus requirement to show irreparable harm, and so it's the same evidence that BDC points to to support its irreparable harm argument that it now says supports its secondary considerations argument.

[00:18:15] Speaker 01:
And then does the district court say anything about the secondary consideration evidence?

[00:18:21] Speaker 01:
No, Your Honor, it does not.

[00:18:22] Speaker 01:
And why is that not a problem?

[00:18:23] Speaker 01:
Haven't we said you always have to consider secondary considerations evidence if it's in evidence?

[00:18:29] Speaker 04:
Well, I don't think it's a problem because at the preliminary injunction stage, vulnerability is the question.

[00:18:35] Speaker 04:
Is there a substantial question as to the validity of the claims?

[00:18:38] Speaker 04:
And so I don't think it's error to not go into detail

[00:18:43] Speaker 04:
about this alleged evidence.

[00:18:45] Speaker 01:
Well, not detailed, but doesn't the district court at least have to ask itself, do I maybe have a case where the secondary consideration evidence is so overwhelming that it so rebuts the prima facie case that I now recognize there is no substantial question of validity?

[00:19:04] Speaker 04:
If there was evidence like that in the record, perhaps the district court might have to do that.

[00:19:08] Speaker 04:
But here, the record is extremely thin on whatever the secondary considerations evidence is.

[00:19:14] Speaker 04:
The only facts that BDC points to is that it has a product that was successful

[00:19:20] Speaker 04:
and that that product displaced Vivitro's product from the market.

[00:19:24] Speaker 04:
And that's frankly, that's not really in dispute.

[00:19:27] Speaker 04:
What is in dispute is whether or not there's a nexus that the reason that the product was successful was due to any of the patented features.

[00:19:35] Speaker 04:
In fact, the evidence supports that it is not.

[00:19:39] Speaker 04:
Dr. Weinberg, one of the inventors and BDC's CTO,

[00:19:44] Speaker 04:
Page 869 of the appendix, paragraph 12, he lays out, again, in support of his argument and BDC's argument that there was irreparable harm, he lays out five reasons that the BDC product was more attractive in comparison to the Vitro's legacy product.

[00:20:01] Speaker 04:
None of those reasons relate to the features of the claims.

[00:20:05] Speaker 04:
In fact, one of those is the same reason that Mr. Muna May says in his declaration, that's our president,

[00:20:12] Speaker 04:
His declaration at pages 11, 57 to 59, one of those reasons is the same thing, that this product, BDC's VDT 3600i product, it had multiple motors.

[00:20:23] Speaker 04:
Mr. Muname says that was a feature that the market appreciated.

[00:20:29] Speaker 04:
So does Dr. Weinberg, BDC's witness.

[00:20:32] Speaker 04:
And in fact, BDC's own marketing materials, page 1478 of the record, it touts features not covered by the claims.

[00:20:40] Speaker 04:
not mentioned in the patent anywhere.

[00:20:43] Speaker 04:
So there's no evidence that would be sufficient to find a nexus for secondary considerations.

[00:20:50] Speaker 00:
Counsel, do we need to get into claim construction?

[00:20:52] Speaker 04:
No, Your Honor, you do not.

[00:20:53] Speaker 04:
Because there's no dispute that the invalidity positions are not relevant to the validity positions.

[00:21:01] Speaker 04:
And if there is no clear error in the factual findings

[00:21:08] Speaker 04:
a substantial question of invalidity or substantial question of validity, then there's no need to address the claim.

[00:21:14] Speaker 00:
But we affirm the denial of the preliminary injunction as you wish, isn't claim construction relevant when it goes back?

[00:21:24] Speaker 04:
I don't think that it is necessary.

[00:21:26] Speaker 03:
You could write an opinion that says we express no... I think Judge Lurie is asking you about when the court gets to the merits.

[00:21:32] Speaker 04:
Sorry, excuse me, Your Honor.

[00:21:34] Speaker 03:
I think Judge Lurie is asking you what happens when the court gets to the merits.

[00:21:38] Speaker 04:
When the court gets to the merits, he said that he wanted to hear more briefing on... The infringement issue and the claim construction are relevant, right?

[00:21:48] Speaker 03:
That's a simple yes.

[00:21:51] Speaker 04:
Yes, Your Honor.

[00:21:53] Speaker 04:
The claim construction is, in fact, yes, we agree that the claim construction is relevant to the infringement analysis.

[00:22:02] Speaker 00:
And so defend the claim construction.

[00:22:06] Speaker 04:
The claim construction was correct because it's the only one that is supported by the specification.

[00:22:12] Speaker 04:
There's no evidence or argument that this excess volume area term was one that was known in the

[00:22:18] Speaker 04:
And so we look to the intrinsic evidence to say, OK, what does that evidence say about it?

[00:22:23] Speaker 01:
The patent only describes the compliance chamber structures as- It sounds like you're arguing the terms are construed to be limited to what's expressly disclosed in the specification, which you know we don't do.

[00:22:39] Speaker 01:
So it sounds like you're undermining your own argument.

[00:22:44] Speaker 04:
This court does have cases that say that when the patentee describes its invention in only one way, and that is what the patentee has done here, the excess volume area is only described as a function provided by the claim chamber structures.

[00:23:06] Speaker 04:
So we can see that it is not the usual case that one would read

[00:23:13] Speaker 04:
interpret a term to be limited in this way, but we believe that the evidence here shows that that's the only thing that BDC, that's what they invented.

[00:23:25] Speaker 04:
Dr. Weinberg describes his invention as placing a compliance chamber

[00:23:30] Speaker 04:
downstream of the valve in the process.

[00:23:33] Speaker 01:
I think you argue to us it's a means plus function term, but you didn't get a chance to make that argument to the district court, and it hasn't reached that question, correct?

[00:23:42] Speaker 04:
The district court did not reach that question.

[00:23:44] Speaker 04:
As a legal matter, we do believe this court could reach that question and affirm on that basis, even though it was not raised below.

[00:23:55] Speaker 04:
That argument was prompted by BDC's arguments here,

[00:24:00] Speaker 04:
saying the excess volume area has no structure.

[00:24:04] Speaker 04:
It's just a space.

[00:24:06] Speaker 04:
And so it was those arguments that they pushed so hard on this idea that it's structureless and you can't limit it to any kind of structure.

[00:24:14] Speaker 04:
And that says, okay, well, that sounds a lot like the Williamson case where you're claiming function without any structure.

[00:24:20] Speaker 04:
So that is an alternative route to get to the same place.

[00:24:29] Speaker 03:
I think there's some issues here about the claim construction that really haven't been addressed.

[00:24:33] Speaker 03:
I mean, first of all, the claim refers to storing a volume, and I'm not sure that the accused device would be viewed as storing a separate volume.

[00:24:51] Speaker 03:
volume of the test system fluid.

[00:24:55] Speaker 03:
The word storing sort of suggests putting something aside.

[00:24:58] Speaker 03:
So that favors you, but on the other hand, I look at the specification column two, line 53, and I see language which favors the other side.

[00:25:10] Speaker 03:
The test chamber also has a compliance chamber which provides a volume of only a gas or elastic material which compresses

[00:25:18] Speaker 03:
under the pressure placed upon fluid in the test chamber and allows fluid in the test chamber to occupy a portion of the volume.

[00:25:24] Speaker 03:
That sounds like the construction that they're articulating.

[00:25:31] Speaker 03:
But they don't rely on that either.

[00:25:33] Speaker 03:
So I'm not sure that... I guess what I'm suggesting is it seems to me that the briefing on the claim construction issue is more complicated than either side seems to recognize.

[00:25:47] Speaker 04:
The claim construction issue here in this case is, I'd agree, it's a little thorny.

[00:25:52] Speaker 04:
I think that is because BDC made this term up to

[00:25:59] Speaker 04:
be more vague, to go beyond what it actually disclosed in the specification, what it described in the prosecution history as the benefits and the structures that provide the benefits in its alleged invention.

[00:26:16] Speaker 04:
And to the extent that there are these factual questions about, well, maybe it infringes, maybe it doesn't,

[00:26:23] Speaker 04:
we certainly agree that there's questions to be resolved later on the merits.

[00:26:28] Speaker 04:
All you have to find here is that there wasn't a clear error in finding that there were substantial questions of infringement.

[00:26:38] Speaker 04:
Again, as I said, or substantial questions of infringement, sorry, substantial questions of invalidity or infringement.

[00:26:45] Speaker 04:
But to the extent that

[00:26:47] Speaker 04:
this court wants to give some guidance to the district court when it returns the merits, that's fine.

[00:26:55] Speaker 04:
But those are questions that the district court expressly acknowledged that it would take up as it goes along, as the case develops.

[00:27:05] Speaker 04:
And frankly, that's precisely what we had suggested at the end of the hearing.

[00:27:10] Speaker 04:
At the end of the transcript, we argued to the district court, look,

[00:27:17] Speaker 04:
There's some tricky issues here as it relates to infringement.

[00:27:20] Speaker 04:
We don't think the validity case is very tricky.

[00:27:23] Speaker 04:
We think that's pretty straightforward.

[00:27:25] Speaker 04:
But if you have any doubts, then you should let this case proceed.

[00:27:30] Speaker 04:
The patentee has to make a clear showing of a right to a preliminary injunction.

[00:27:35] Speaker 04:
They're trying to keep our product from going onto the market with a patent that we believe, frankly, should not have been granted.

[00:27:45] Speaker 04:
there's questions as to the validity case.

[00:27:48] Speaker 04:
If the patentee can't make a clear showing of infringement, then it's not entitled to an injunction.

[00:27:54] Speaker 04:
And we think that's been shown here.

[00:27:58] Speaker 04:
One last comment I would make in terms of the validity case is that I think it's important to keep in mind that the reason the Patent Office granted this patent

[00:28:13] Speaker 04:
allowed the patent is because BDC persuaded the office that, although these compliance chamber structures were well known, BDC described compliance chambers as storing volume of fluid.

[00:28:27] Speaker 04:
They were well known in real-time systems, but BDC claimed that putting one into an accelerated valve test system was entirely new.

[00:28:37] Speaker 04:
And we've shown that BDC's claim was false.

[00:28:40] Speaker 04:
We have multiple prior art documents, none of which were before the office, that teach accelerated testers with compliance chambers.

[00:28:47] Speaker 04:
We've got Dynatech in its capacitance tank.

[00:28:50] Speaker 04:
She has an air chamber, which BDC agreed is a compliance chamber.

[00:28:56] Speaker 04:
And then there's the Lew reference, the journal article, that teaches all the available commercial accelerated testers had adjustable compliance.

[00:29:04] Speaker 04:
And so those facts demonstrate that

[00:29:09] Speaker 04:
there is at least a substantial question of validity.

[00:29:13] Speaker 04:
And for those reasons, we would ask the court to affirm the district court's order.

[00:29:18] Speaker 00:
Thank you, counsel.

[00:29:21] Speaker 00:
Mr. Tampson, there's a little rebuttal time.

[00:29:25] Speaker 00:
Close to two minutes.

[00:29:38] Speaker 02:
Thank you, Your Honors.

[00:29:40] Speaker 02:
I'll start backwards.

[00:29:41] Speaker 02:
First of all, I think that last discussion was very insightful in terms of what the district court did wrong, which is there are compliance chambers in the prior art, and that's enough to find obviousness or anticipation.

[00:29:55] Speaker 02:
That's not correct.

[00:29:56] Speaker 02:
There has to be compliance chambers or there has to be an excess volume area in the special configuration that exists.

[00:30:05] Speaker 02:
In other words, it has to work at an accelerated rate.

[00:30:07] Speaker 02:
It has to be in fluid communication with the return chamber.

[00:30:13] Speaker 02:
And so it is not simply there were compliance chambers.

[00:30:19] Speaker 02:
It's they have to meet the specific configuration.

[00:30:23] Speaker 02:
That's important.

[00:30:24] Speaker 02:
I also want to talk about the question that was asked about the excess volume area.

[00:30:30] Speaker 02:
Is it relevant?

[00:30:32] Speaker 02:
It is at the construction or the court's faulty construction of an excess volume area is always going to be relevant to the anticipation or obviousness question.

[00:30:42] Speaker 02:
The court, for example, the court said that an excess volume area must be a compliance chamber and it must be a compliance chamber, but dependent claim nine

[00:30:53] Speaker 02:
claims a compliance chamber.

[00:30:56] Speaker 02:
So what we're going to end up doing is we're going to end up going through a whole claim construction down below without any guidance from this court.

[00:31:04] Speaker 02:
And I think that would be a mistake.

[00:31:08] Speaker 02:
One thing I want to end with is there is infringement.

[00:31:11] Speaker 02:
This is not a hard infringement case.

[00:31:14] Speaker 02:
An excess volume area is described in the specification.

[00:31:17] Speaker 02:
It's described in column 12 of the specification.

[00:31:22] Speaker 02:
claims themselves describe what this excess volume area does.

[00:31:25] Speaker 02:
And in this case, that excess volume area is working at an accelerated rate.

[00:31:30] Speaker 02:
In the device itself, the chambers that are there are compressed.

[00:31:37] Speaker 02:
Those tubes are compressed.

[00:31:39] Speaker 02:
That volume created by the compression is where the excess volume goes during the drive stroke or during the compression.

[00:31:51] Speaker 02:
And then it is released.

[00:31:53] Speaker 02:
It's in the return chamber.

[00:31:54] Speaker 02:
It's operating at an accelerated rate.

[00:31:56] Speaker 02:
I don't think there's a lot of confusion about whether or not there is actual infringement.

[00:32:02] Speaker 02:
I think that's very important.

[00:32:04] Speaker 02:
But the court simply got the claim construction wrong and also as a result got infringement wrong.

[00:32:15] Speaker 00:
As you can see, your time has expired.

[00:32:19] Speaker 00:
We thank both counsel, and the case is submitted.

[00:32:22] Speaker 02:
Thank you, John.