[00:00:02] Speaker 04:
Our next case for argument is 24-1398, vascular solutions versus Medtronic.

[00:00:08] Speaker 04:
Mr. Jay, please proceed.

[00:00:12] Speaker 00:
Good morning, Your Honors.

[00:00:13] Speaker 00:
May I please record William Jay for the appellants.

[00:00:16] Speaker 00:
Each of these patents claims an ordered combination of elements, and they claim them in different ways.

[00:00:21] Speaker 00:
Some of them designate the device as having two segments, or three, or four.

[00:00:26] Speaker 00:
Where the district court went wrong is its insistence that one of those segments, the term substantially rigid segment, has to have the same endpoint no matter which combination we're looking at.

[00:00:39] Speaker 00:
If the court had looked at it claim by claim, combination by combination, and given effect to each element.

[00:00:45] Speaker 04:
Especially when, if we define it appropriately, it's defined as a functional claim limitation in that it's

[00:00:53] Speaker 04:
has to be rigid enough so that the guide wire can move through.

[00:00:55] Speaker 04:
Is that right?

[00:00:56] Speaker 00:
That's correct.

[00:00:57] Speaker 00:
OK.

[00:00:57] Speaker 04:
So rigid enough so the guide wire can move through, it seems like that degree of rigidity could be different based on biology, based on a particular set of circumstances.

[00:01:09] Speaker 04:
I mean, it seems like, unless I'm mistaken, that the amount of rigidity necessary could differ.

[00:01:15] Speaker 00:
That's correct.

[00:01:17] Speaker 00:
Each time you assess whether a particular infringing device or accused device has the substantially rigid portion, you'd be asking whether that

[00:01:28] Speaker 00:
portion is substantially rigid enough to advance the device through the aorta.

[00:01:33] Speaker 03:
But my confusion about this case is initially when I saw indefiniteness, substantially rigid, I thought, oh, it's about substantially in an indefinite term, or it's about rigid and how rigid is rigid, or its portion.

[00:01:46] Speaker 03:
And am I correct?

[00:01:48] Speaker 03:
It's not about that.

[00:01:49] Speaker 03:
It's kind of about the boundary.

[00:01:51] Speaker 00:
It's not about that at all.

[00:01:51] Speaker 00:
You're right, Your Honor.

[00:01:52] Speaker 00:
It's about the boundary.

[00:01:53] Speaker 00:
Our construction is that substantially rigid,

[00:01:56] Speaker 00:
means the same thing.

[00:01:57] Speaker 00:
It's a functional construction, as the Chief Judge just said.

[00:02:00] Speaker 00:
Portion means a longitudinal segment across these patents.

[00:02:06] Speaker 00:
But the district court demanded something else.

[00:02:10] Speaker 00:
The district court demanded that the term substantially rigid portion

[00:02:13] Speaker 00:
also include a concept of a boundary and that that boundary must be the same whether we're looking at a two or a three or a four combination.

[00:02:21] Speaker 03:
So on that point, I mean the district court really did a heavy lift here and he really worked hard and he really was trying really hard to get it right.

[00:02:29] Speaker 03:
But somehow at the outset he became convinced that our law requires that terms be construed the same if they appear in different claims.

[00:02:37] Speaker 03:
NTP kind of says that, right?

[00:02:41] Speaker 03:
So where is our law?

[00:02:43] Speaker 03:
I know we have Omega first and then NTP.

[00:02:46] Speaker 03:
What's the law on that legal principle?

[00:02:48] Speaker 00:
Let me give you a two-step response.

[00:02:51] Speaker 00:
There is a presumption that terms of art certainly carry the same meaning and that

[00:02:57] Speaker 00:
within a particular patent, there may be a presumption that terms carry the same meaning.

[00:03:03] Speaker 00:
Our construction is the same across these patents in the sense that substantially rigid means substantially rigid.

[00:03:09] Speaker 00:
It means the functional construction that the district court gave it in the QX medical case, and that the Medtronic expert and the IPR is applied in pursuing the invalidation of a bunch of these claims.

[00:03:20] Speaker 04:
So just to be clear, I just want to restate it so I make sure I got it right, that your claim construction

[00:03:27] Speaker 04:
is actually the same throughout the entire patent.

[00:03:30] Speaker 04:
This isn't a case where, substantially rigid, you're suggesting it means one thing in one instance and a different thing in another instance.

[00:03:37] Speaker 04:
It always means this functional definition.

[00:03:40] Speaker 00:
That's exactly right.

[00:03:41] Speaker 00:
Now, the exercise the jury might go through in checking the boxes for the three elements in one of these claims versus the two elements in another of these claims, it might look a little bit different.

[00:03:53] Speaker 00:
Because in some patents, the substantially rigid portion

[00:03:56] Speaker 00:
must also have additional characteristics.

[00:03:59] Speaker 00:
It must be proximal of other segments.

[00:04:02] Speaker 00:
It must have a degree of rigidity.

[00:04:04] Speaker 00:
It must have a rail but no lumen.

[00:04:08] Speaker 00:
There are a number of characteristics that some of these claims include and others do not.

[00:04:14] Speaker 04:
And those various characteristics could impact how rigid it has to be to meet the definition of being capable of advancing within the guide catheter.

[00:04:23] Speaker 00:
Yes, and additionally, some of the claims ask the fact finder to determine whether the substantially rigid portion is more rigid than one of the other portions that's proximal up the device.

[00:04:38] Speaker 03:
Can I ask you a housekeeping question, which is

[00:04:40] Speaker 03:
The district court was dealing with 10 claims, but there are 40 claims that are being asserted.

[00:04:45] Speaker 03:
What's the status of this whole case?

[00:04:47] Speaker 00:
So there is a final judgment because the district court asked the parties to limit the initial proceedings to 10 claims.

[00:04:53] Speaker 00:
So he did markman on 10 claims.

[00:04:55] Speaker 00:
But he concluded that because the term that he thought was indefinite appears not just in those 10 claims, but in all 40 claims in suit, the district court invalidated all 40 claims in suit, which are enumerated in the judgment.

[00:05:07] Speaker 00:
That's why there is a final judgment in this case.

[00:05:09] Speaker 00:
But where we were before that decision was that the 10 claims had been selected to go through Markman.

[00:05:17] Speaker 00:
We had not gotten to summary judgment, much less narrowing the case for trial.

[00:05:23] Speaker 03:
And the other side makes an argument.

[00:05:26] Speaker 03:
I don't know what term to use anymore, waiver, forfeiture, whatever, that you all gave up on the group two claims.

[00:05:36] Speaker 03:
or that you made some concessions because of the district court, and can you respond to that briefly?

[00:05:41] Speaker 00:
Of course, Your Honor.

[00:05:42] Speaker 00:
So this all refers to the transcript of the hearing after the Yanku construction had been proposed.

[00:05:50] Speaker 00:
At that hearing, I think you'll see, and this is at page 22737 of the appendix,

[00:05:58] Speaker 00:
The district court came out, and basically before anybody said anything, he said that he agreed with Mr. Yanku that Teleflex's original proposed construction isn't viable.

[00:06:08] Speaker 00:
So far as I'm concerned, that construction, as well as Medtronic's, are both off the board, and I don't want to rehash our argument.

[00:06:14] Speaker 00:
So in other words, at that hearing, it was clear that we were not

[00:06:19] Speaker 00:
continue arguing the construction that we're arguing today.

[00:06:22] Speaker 04:
And you said that's at 22737?

[00:06:23] Speaker 00:
That's correct, Your Honor.

[00:06:24] Speaker 04:
We don't have that.

[00:06:25] Speaker 04:
You didn't give us that in the appendix.

[00:06:27] Speaker 00:
I hope I haven't gotten the page wrong, but it should be in the appendix, whatever it is.

[00:06:31] Speaker 04:
It goes from 22728 to 22830.

[00:06:33] Speaker 00:
I do have 22737 in my appendix, Your Honor.

[00:06:41] Speaker 03:
Do you have it?

[00:06:46] Speaker 03:
I'm looking for it.

[00:06:47] Speaker 04:
Am I crazy?

[00:06:51] Speaker 00:
We have had some issues with the preparation of the paper copies.

[00:07:18] Speaker 00:
The relevant language I think is quoted in the reply brief as well and I've read you the salient portions of it.

[00:07:27] Speaker 00:
So far as I'm concerned those are both off the board and all of those premises I agree with and I don't want to revisit today because this is all stuff we've already been through.

[00:07:36] Speaker 00:
So before the quote that the other side comes to six or seven times in its red brief, the district court had already told us that our construction was, quote, off the board.

[00:07:46] Speaker 00:
And so as a fallback.

[00:07:48] Speaker 04:
So you didn't waive it.

[00:07:49] Speaker 04:
You're saying we didn't waive it.

[00:07:50] Speaker 04:
It was fruitless or pointless to continue to try to advocate it in light of him saying move on.

[00:07:56] Speaker 04:
Which happens a lot.

[00:07:57] Speaker 00:
Right.

[00:07:57] Speaker 00:
We had advanced the construction.

[00:07:58] Speaker 00:
We had had it rejected.

[00:08:00] Speaker 00:
So you moved on.

[00:08:01] Speaker 00:
So we moved on.

[00:08:02] Speaker 00:
And we made essentially a backup argument, which we are not advancing on appeal because we're advancing our primary argument on appeal.

[00:08:07] Speaker 03:
Hypothetically, if we were to agree with you on the indefiniteness question with respect to the claims before us, what do we do?

[00:08:15] Speaker 03:
We don't have to do claim construction up here, do we?

[00:08:18] Speaker 00:
I agree with that, Your Honor.

[00:08:19] Speaker 00:
And there are 10 claims.

[00:08:20] Speaker 00:
And we wouldn't ask you to walk through all 10 of them, much less the 40.

[00:08:24] Speaker 00:
I think that if the court were to correct the district court's foundational error and say, one, it has to be done claim by claim, and each of these claims is a different ordered combination, and two, that the premise is wrong and that the term substantially rigid segment has to have this consistent boundary that can't

[00:08:42] Speaker 00:
I can't look any different, even whether it's a combination of two, three, or four.

[00:08:46] Speaker 00:
If you corrected those foundational errors, maybe did the analysis as we suggested with one of the exemplary claims in the 776 or 032 patents, I think that would be adequate to set the district court straight and allow us to move this litigation forward.

[00:09:01] Speaker 01:
If we reverse demanded and wanted to do a construction, what would that construction be today for you?

[00:09:08] Speaker 00:
So if you were to construe the claims, I think that first we'd urge you to look at each claim individually.

[00:09:16] Speaker 00:
So if we started with the 776 patent, which is in the inside cover of our brief, the exemplary claim, we would say that because that one, a substantially rigid portion, doesn't have any extra bells and whistles around it.

[00:09:32] Speaker 00:
one of three segments.

[00:09:33] Speaker 00:
It is proximal of the two other segments, and it is substantially rigid.

[00:09:38] Speaker 00:
So it's a longitudinal portion that is substantially rigid.

[00:09:42] Speaker 00:
Substantially rigid meaning rigid enough to push to advance the device through the catheter.

[00:09:48] Speaker 04:
Mr. J, can you look at 27399?

[00:09:50] Speaker 04:
I think this also contains

[00:09:53] Speaker 04:
the hearing transcripts that you're referring to.

[00:09:56] Speaker 04:
And I just want to double check, because we don't have the other page you're referring to.

[00:10:01] Speaker 04:
And so maybe you got the number wrong, or maybe 27399.

[00:10:11] Speaker 00:
OK.

[00:10:12] Speaker 04:
My clerk found it.

[00:10:15] Speaker 04:
And then it's 27, 765 is where they made the concession in light of the prior events.

[00:10:20] Speaker 04:
But 27, 399, I think, is where the judge says no more on this.

[00:10:24] Speaker 04:
Am I right?

[00:10:25] Speaker 04:
Is that the portion you're talking about?

[00:10:27] Speaker 00:
It's not.

[00:10:27] Speaker 00:
That's not?

[00:10:28] Speaker 00:
He says it there too.

[00:10:29] Speaker 00:
Oh my god.

[00:10:30] Speaker 00:
So the page that you just cited is before we went to Mr. Yanku.

[00:10:35] Speaker 00:
Oh, I see.

[00:10:36] Speaker 00:
In which the district court said, I don't want any more briefing on that issue.

[00:10:39] Speaker 00:
I don't want any more defense of your original construction.

[00:10:41] Speaker 00:
And then my co-counsel has pointed out that I think I've read the page number to you wrong.

[00:10:46] Speaker 00:
27737.

[00:10:48] Speaker 00:
If I read that wrong, I apologize.

[00:10:51] Speaker 00:
But it is.

[00:10:52] Speaker 00:
It's page five of the transcript of the flame construction hearing on July 7, 2023.

[00:10:58] Speaker 00:
That's where the court says he doesn't want to revisit it today.

[00:11:03] Speaker 00:
But you're right, Your Honor, that he says it in both places, both before and after we went to the proceedings before Mr. Yanku.

[00:11:10] Speaker 04:
Got it.

[00:11:12] Speaker 04:
I see it there.

[00:11:13] Speaker 04:
That is a good job by co-counsel.

[00:11:16] Speaker 04:
That's what you're supposed to do.

[00:11:17] Speaker 04:
You're supposed to give him, especially when he messes up.

[00:11:20] Speaker 00:
I am very grateful for that, because I should be able to read five numbers without messing them up.

[00:11:25] Speaker 00:
So I think I finished my answer to Judge Mizant's question about applying the functional construction.

[00:11:31] Speaker 00:
I think that as the court went through the claims, each of these claims is a different combination.

[00:11:37] Speaker 00:
And so I don't think that there's a construction issue, but the court would certainly have to instruct the jury

[00:11:43] Speaker 00:
About the aspects of the substantially rigid portion in each of these combinations.

[00:11:47] Speaker 04:
Will it reserve the rest of your time for rebuttal?

[00:11:49] Speaker 00:
Yes, please your honor.

[00:11:51] Speaker 04:
Ms.

[00:11:51] Speaker 04:
Amati?

[00:12:02] Speaker 02:
May I proceed your honor?

[00:12:04] Speaker 02:
May I please the court?

[00:12:05] Speaker 02:
My name is Brittany Amati and I represent Medtronic.

[00:12:07] Speaker 02:
The fundamental issue here is that there's no principle basis for a skilled artisan to identify the substantially rigid portion, and thus no way to objectively determine whether a device falls within the scope of the claims or outside the scope of the claims.

[00:12:22] Speaker 02:
So it's not simply an issue of is there a set endpoint in every single claim.

[00:12:28] Speaker 02:
It's how does a skilled artisan, looking at the claims with the claims in hand and a device in hand, determine

[00:12:35] Speaker 02:
that this is the substantially rigid portion, and then assess whether it meets the other limitations of the claims.

[00:12:41] Speaker 02:
This is clearly shown by Telefax's expert's own analysis at Appendix 1984, where Mr. Keith opined that the same device could have a substantially rigid portion that includes the site opening, as in Mr. Keith's Version 1 mapping.

[00:12:57] Speaker 02:
I'm sorry.

[00:12:59] Speaker 02:
What's the page site on the Appendix?

[00:13:01] Speaker 02:
It's Appendix 1984 and it's also reproduced in our red brief at page 23.

[00:13:09] Speaker 02:
Mr. Keith opined that the same exact device could have a substantially rigid portion that includes the side opening if you use Mr. Keith's version 1 mapping or excludes the side opening if you use his version 1A mapping.

[00:13:25] Speaker 02:
But the issue here is that there's no principal basis

[00:13:28] Speaker 02:
for a skilled artisan to determine which method to use to determine what is the substantially rigid portion, and then to assess whether it falls within the scope of a given claim.

[00:13:38] Speaker 02:
And I think with respect to Teleflex as a... You need to slow down.

[00:13:43] Speaker 04:
I don't understand the 1A argument, and I guess part of it for me is it just means this has a substantially rigid portion, whether you measure it

[00:13:52] Speaker 04:
one way or whether you measure it another way, either of those ways of measuring this results, though, in an infringing device.

[00:14:01] Speaker 04:
So that's what I'm not understanding.

[00:14:03] Speaker 04:
I'm obviously missing your argument somehow because it doesn't make sense to me.

[00:14:07] Speaker 04:
So try again.

[00:14:08] Speaker 02:
So I think this goes to why teleplex is proposed construction does not work here.

[00:14:15] Speaker 02:
And Chief Judge Moore, you had mentioned

[00:14:17] Speaker 02:
that is it an issue of the degree of rigidity, and that's going to vary by device, et cetera, or anatomy, et cetera.

[00:14:23] Speaker 02:
That is inconsistent with the position that Telefax has taken throughout the litigation.

[00:14:28] Speaker 02:
And Telefax has agreed that any portion of the device could be a substantially rigid portion throughout the litigation, regardless of the degree of rigidity, so long as it's rigid enough to push through the guide extension catheter.

[00:14:41] Speaker 02:
Well, but that's right.

[00:14:42] Speaker 04:
It's a functional claim limitation, basically.

[00:14:46] Speaker 04:
It has to be rigid enough so the guide of catheter could get through.

[00:14:49] Speaker 04:
And that means, I mean, I'm confused.

[00:14:54] Speaker 02:
Your Honor, respectfully, that's inconsistent with the positions that Teleflex has taken, where it's taken the position that essentially the patentee or an accused infringer could pick any portion of the device and call it the substantially rigid portion, despite the fact that all of the claims make clear that there are different portions of the device.

[00:15:14] Speaker 02:
For example, if you take a look at the 032 patent, claims three and claims nine, that's a perfect example.

[00:15:20] Speaker 02:
You have the claim three of the 032 patent depends from claim one, which recites a substantially rigid portion.

[00:15:28] Speaker 02:
Claim three requires that the substantially rigid portion be in the tubular section, while claim nine, which also depends from claim one, requires that the substantially, I'm sorry, the side opening be in the substantially rigid portion.

[00:15:43] Speaker 02:
So you have two claims, claim three, depending from the same independent claim, requiring that the side opening be outside the substantially rigid portion.

[00:15:54] Speaker 02:
And then claim nine, depending from the same independent claim, requiring that the side opening be in the substantially rigid portion.

[00:16:01] Speaker 02:
And so there's no way to determine.

[00:16:03] Speaker 02:
Those are mutually exclusive claims.

[00:16:06] Speaker 02:
No way to determine whether or not a given device, if you are a device holder and you

[00:16:12] Speaker 02:
are offering a device for sale and you have that device in hand to determine whether you're within the scope of claim three of the 032 patent with the side opening outside the substantially rigid portion or within the scope of claim nine of the 032 patent with the side opening within the substantially rigid portion.

[00:16:31] Speaker 02:
There's no principle basis and that's why these claims are indefinite here.

[00:16:35] Speaker 01:
But isn't that a problem with the trial judge making that decision early on that they were mutually exclusive?

[00:16:41] Speaker 01:
That seems to be a problem here.

[00:16:42] Speaker 02:
I think if you look at the claims, and claim three and claim nine are perfect examples here, those claims are mutually exclusive, because the independent claim recites specific portions of the device, including the tubular portion and the substantially rigid portion, which are separately recited in independent claim one of the 032 patent.

[00:17:05] Speaker 02:
And then you have a dependent claim that specifically states that the side opening is in the tubular portion for claim three,

[00:17:12] Speaker 02:
And for claim nine, that the side opening is in the substantially rigid portion.

[00:17:16] Speaker 04:
I do not understand this argument.

[00:17:18] Speaker 04:
Dependent claims, by their very nature, can be exact opposites, right?

[00:17:23] Speaker 04:
You have an independent claim that's broad enough to cover many different ways of doing something.

[00:17:27] Speaker 04:
Then you have a dependent claim that covers one way of doing it and a different dependent claim that covers an entirely different way of doing it.

[00:17:34] Speaker 04:
That's claiming.

[00:17:35] Speaker 04:
That's normal.

[00:17:36] Speaker 04:
I don't see how that supports your definiteness argument at all.

[00:17:40] Speaker 04:
And here, what you're referring to with the level of precision of each claim, in this instance, it includes the opening.

[00:17:45] Speaker 04:
In this instance, it doesn't.

[00:17:46] Speaker 04:
It seems to me that each claim on its base tells you all of the things that are necessary to understand what's included.

[00:17:55] Speaker 04:
I don't understand this argument.

[00:17:57] Speaker 02:
So I think it is true that you can have claims that claim different subject matter and different scope.

[00:18:03] Speaker 02:
And we agree that claim three and claim nine are two such claims.

[00:18:07] Speaker 02:
The issue here is that under Teleflex's interpretation, you can identify any portion of the device as a substantially rigid portion.

[00:18:16] Speaker 04:
No, only the portion that allows the rigid, that creates the rigid environment for the guide catheter to go through.

[00:18:22] Speaker 04:
So whatever portion of the device does that, and you know what?

[00:18:25] Speaker 04:
Might be two portions of the device acting together that do it.

[00:18:28] Speaker 04:
Might be three portions.

[00:18:29] Speaker 04:
Might include the opening, might not include the opening.

[00:18:31] Speaker 04:
Any, that's right.

[00:18:32] Speaker 04:
If this device has a portion of it

[00:18:35] Speaker 04:
or combinations of portions that fit together that effectuate that function, it then has a substantially rigid portion.

[00:18:43] Speaker 02:
What's the problem?

[00:18:45] Speaker 02:
The issue is that there are claims that require the side opening to be outside of the substantially rigid portion.

[00:18:51] Speaker 02:
And so if you have a claim and it requires a side opening to be outside the substantially rigid portion, if you can just pick and choose and arbitrarily draw lines, which is essentially what Teleflex's expert Mr. Keith does,

[00:19:04] Speaker 02:
arbitrarily draw the line anywhere along the device, regardless of any specific feature or functionality of that device, any portion of the device, you can essentially just pick and choose infringement or non-infringement by selecting the device.

[00:19:18] Speaker 04:
No, you only have infringement if a portion of your device is substantially rigid such that the guide gets through.

[00:19:26] Speaker 04:
I mean, then you have infringement.

[00:19:28] Speaker 04:
And by the way, claim one says a substantially rigid portion.

[00:19:31] Speaker 04:
So it's clear that it's not talking about

[00:19:33] Speaker 04:
you know, a specific substantially rigid portion, like it has to be narrowly subscribed.

[00:19:39] Speaker 02:
So I think the claims are, they recite more than just the substantially rigid portion.

[00:19:43] Speaker 02:
They recite other aspects of the device.

[00:19:45] Speaker 04:
And if you take a look at the summary of the invention... And for those claims, those aspects of the device would have to be contributing to the substantially rigid portion in order for there to be infringement.

[00:19:55] Speaker 02:
So the other aspects of the device, if you take a look at the claims, are recited separately from the substantially rigid portion.

[00:20:01] Speaker 02:
So in essence, the interpretation here where you can pick any portion of the device as a substantially rigid portion makes the other claimed portions of the device completely redundant.

[00:20:14] Speaker 02:
Because an applicant or a patent holder could just pick any portion of the device and say, this is the substantially rigid portion.

[00:20:20] Speaker 02:
even though it is the tubular section, for example.

[00:20:24] Speaker 03:
I guess I'm a little confused.

[00:20:25] Speaker 03:
I'm not steeped in this, and we're just in the preliminary level, but it seems to me you're arguing against an infringement argument that telefacts has or may make.

[00:20:37] Speaker 03:
And maybe that's a bad argument, but I'm not sure how what they could conceivably say with respect to infringement decides this indefiniteness problem we have.

[00:20:50] Speaker 02:
It's not about the infringement issue.

[00:20:53] Speaker 02:
I think it just shows that even their own expert agrees that there's not a principled way to understand the scope of these claims.

[00:21:01] Speaker 02:
And so I think with respect to indefiniteness, if you have two claims that have two different requirements that are mutually exclusive, as in claim three and claim nine, the fact that you can't determine what is the substantially rigid portion to assess

[00:21:19] Speaker 02:
whether or not it falls in claim 3, meaning that the site opening is outside of the substantially rigid portion, or whether it falls within claim 9, meaning the site opening is within the substantially rigid portion, renders these claims indefinite.

[00:21:34] Speaker 02:
And I think this case is similar to the SACHO golf case, which is cited in our papers, where there was a recitation of a foot and a toe, but there was multiple methods that you could use to determine the scope of the claim limitation

[00:21:49] Speaker 02:
one resulting in infringement and one not resulting in infringement.

[00:21:54] Speaker 02:
But no, a skilled artisan wouldn't have a way to determine which of those methods to choose.

[00:22:00] Speaker 02:
And that's the same way here, where you have Mr. Keith's version 1 mapping, and this is in our reply brief in page 23, and Mr. Keith's version 1A mapping in our reply brief as well, where there's two different methods that you could use to map the claim limitations.

[00:22:15] Speaker 02:
And you don't have a principal basis to determine which of those methods to apply.

[00:22:19] Speaker 03:
Is there a case other than Sasso Golf, which happens to be a non-precedential opinion?

[00:22:26] Speaker 02:
We also cited in our papers the Honeywell decision, where this court reached a similar conclusion, where if you have two different methods for determining either whether a device falls within the scope of this case or outside the scope of the case,

[00:22:42] Speaker 02:
and there's no principal basis to select one method over the other, then the claims are indefinite.

[00:22:47] Speaker 02:
And that is the situation we have here.

[00:22:50] Speaker 02:
There's no principal basis for a skilled artisan to determine, first, what is the substantially rigid portion in these claims as distinguishable from the other recited portions, and then to look to determine whether or not in a given device

[00:23:03] Speaker 02:
that device meets the other characteristics of the claim.

[00:23:06] Speaker 02:
Essentially, what Teleflex wants to do is to go backwards and say, you want this to be Teva.

[00:23:12] Speaker 04:
You want this to be a case where there's three different ways to measure something, and the spec didn't tell you which one to use, and those three ways would result in differing application on infringement.

[00:23:20] Speaker 04:
But that's not at all this case.

[00:23:21] Speaker 04:
This case is, in some claims, they say this component has to be within the substantially rigid portion.

[00:23:27] Speaker 04:
In other claims, they say this doesn't.

[00:23:29] Speaker 04:
That doesn't mean there's different ways to measure it.

[00:23:30] Speaker 04:
It means for different claims, there's different ways to measure it.

[00:23:34] Speaker 04:
So the Teva analogy, so I can explain to you why you're wrong, would be that if claim one said measure it according to this methodology, and then claim two would be measured according to this methodology.

[00:23:46] Speaker 04:
Here, in one claim, the opening is included and has to be included.

[00:23:49] Speaker 04:
And so your people can look and say, we infringe if the substantially rigid portion includes the opening.

[00:23:55] Speaker 04:
And that contributes to the substantial rigidity that's necessary.

[00:23:59] Speaker 04:
And then they can look that we infringe that claim, but we don't infringe the other claim.

[00:24:03] Speaker 04:
Because in the other claim, the opening can't be part of it.

[00:24:06] Speaker 04:
That's the difference here.

[00:24:07] Speaker 02:
And that's precisely the issue here, because Teleflex is taking the position that both of those claims are infringed by the very same device.

[00:24:15] Speaker 02:
So the very same device, it is their position, would infringe both a claim that requires the side opening to be in the substantially rigid portion and a claim that requires the side opening to be outside the substantially rigid portion.

[00:24:29] Speaker 02:
But that's a question of infringement.

[00:24:30] Speaker 03:
That's not a question.

[00:24:30] Speaker 03:
That was irasist.

[00:24:31] Speaker 03:
That's what I thought you were getting at.

[00:24:32] Speaker 03:
And I think that's premature.

[00:24:34] Speaker 03:
I don't have a basis for it.

[00:24:35] Speaker 03:
I mean, maybe they have a bad infringement claim.

[00:24:39] Speaker 03:
And you can say that.

[00:24:41] Speaker 03:
And it can't be infringing under those circumstances.

[00:24:44] Speaker 03:
I'm having a hard time tying that to the indefiniteness of these claims because of that.

[00:24:52] Speaker 02:
I think with respect to you, if you look at their proposed construction, where they have proposed essentially a split construction of substantially rigid and then separately portion, when there's no basis for their construction of the portion piece, it's not supported by anything in the specification.

[00:25:12] Speaker 02:
But even for the substantial rigidity piece,

[00:25:15] Speaker 02:
They have taken the position that, and this is in appendix 27128, as well as recognized by Mr. Yanko and the district court in their decisions at appendix 27306 to 27307, that essentially any portion of the guide extension catheter would meet the substantially rigid portion limitation, despite the fact that there are claims that require the side opening to be outside the substantially rigid portion.

[00:25:43] Speaker 02:
That is the fundamental issue with their claims, that a skilled artisan with a device in hand and the claims and looking at the claims could not tell whether or not their device falls within the scope of the claims or outside.

[00:25:56] Speaker 02:
And I think it's improper.

[00:25:57] Speaker 02:
What they essentially want to do here is go backwards and say, here are the claims that I'm reciting.

[00:26:03] Speaker 02:
How can I line draw, arbitrarily line draw, to get this device to fall within the scope of any given claim, setting aside that those claims are mutually exclusive?

[00:26:14] Speaker 02:
And that's the same type of situation that we have in the measurement cases, not dealing with a precise measurement, but the issue is how do you identify that component that's recited in the claims along with other components recited in the claims to then assess does that component meet the requirements of the claim?

[00:26:33] Speaker 02:
Does it have a side opening if the claim requires that?

[00:26:36] Speaker 02:
Does it not have a side opening if the claim requires that?

[00:26:40] Speaker 02:
Does it meet the other limitations that are required of the substantially rigid portion?

[00:26:44] Speaker 02:
The fundamental issue here is there's no way to determine where does the substantially rigid portion end before you get to, for example, the tubular portion or the flexible tip portion, which are separately recited in the claims.

[00:26:58] Speaker 02:
And if you can't make that determination at the outset, then you can't assess whether or not a given device falls within the scope of any given claim.

[00:27:08] Speaker 02:
And that's the fundamental issue here.

[00:27:10] Speaker 02:
And if I could just say one word, I realize that I'm over my time with respect to their proposed construction.

[00:27:16] Speaker 02:
There's no basis in these claims to construe the terms separately as Telefax proposes.

[00:27:23] Speaker 02:
That was rejected by both the court-appointed expert as well as the district court for multiple reasons, including that it is essentially no limitation at all.

[00:27:35] Speaker 02:
reference to substantially rigid portion is only in connection with the entirety of that term.

[00:27:49] Speaker 00:
Thank you, Your Honor.

[00:27:49] Speaker 00:
I'd just like to respond to two main points.

[00:27:52] Speaker 00:
First is the pick any portion argument, the notion that our construction allows the patent owner to pick any portion and designate it, the substantially rated portion.

[00:28:01] Speaker 00:
That's just not correct.

[00:28:02] Speaker 00:
I mean, I love the principle.

[00:28:03] Speaker 04:
Well, what about the exact question that she raised?

[00:28:05] Speaker 04:
Are you asserting both claim three and claim nine against the same device

[00:28:10] Speaker 04:
one of which you would be having to argue the opening is a part of the substantially rigid portion, and the other of which you'd have to be arguing the opening is not a substantially rigid portion.

[00:28:19] Speaker 04:
You understand.

[00:28:20] Speaker 00:
I do.

[00:28:21] Speaker 00:
We are not asserting claim three in this case.

[00:28:23] Speaker 00:
So you heard a lot about claim three and claim nine.

[00:28:25] Speaker 00:
We're not asserting claim three.

[00:28:26] Speaker 00:
We're not asserting claim one either, because it's been canceled by the PTAB, because claim one didn't have an opening at all.

[00:28:33] Speaker 00:
And this is my other point about Mr. Keith's markings of one and 1A on the diagram.

[00:28:39] Speaker 00:
If you look at pages 16 to 20 to 23, and I've looked carefully to make sure I said those numbers correctly, that's the deposition at which he was asked to draw those on the diagram.

[00:28:49] Speaker 00:
He's being asked about claim one, which doesn't have an opening at all.

[00:28:53] Speaker 00:
So he was asked which part is the substantially rigid segment and which part is the tubular portion.

[00:29:00] Speaker 00:
It doesn't really matter exactly where you draw the boundary when those are the only two things.

[00:29:04] Speaker 00:
When you add an opening, the combination is different.

[00:29:07] Speaker 00:
So in the 776 patent, there's an opening segment.

[00:29:10] Speaker 00:
It has to have certain characteristics.

[00:29:12] Speaker 00:
And the substantially rigid segment has to be proximal to that.

[00:29:15] Speaker 00:
So at a minimum, in that context, you can see that if we tried to go into court and say to the jury that the substantially rigid portion is distal to the opening, it wouldn't infringe.

[00:29:29] Speaker 00:
So I believe that's it.

[00:29:31] Speaker 00:
Thank you, Your Honor.

[00:29:33] Speaker 04:
case is taken under submission.

[00:29:35] Speaker 04:
Thank both counsel for their argument.