[00:00:00] Speaker 01:
We have four arguments this morning, and we will begin with number 232153.

[00:00:08] Speaker 01:
Colibri, heart valve against Medtronic, if I pronounced that all right.

[00:00:13] Speaker 04:
Well, certainly for Medtronic, I can't speak Colibri.

[00:00:16] Speaker 01:
After all this time, you still can't speak for him?

[00:00:18] Speaker 01:
Annunciation?

[00:00:21] Speaker 04:
Good morning, Your Honors, and may it please the Court.

[00:00:24] Speaker 04:
This nine-figure judgment in this case should be reversed, because the 294 patent cannot be molded into what Calibri wants it to be.

[00:00:34] Speaker 04:
In my limited time today, I want to draw out three particular points from the briefing.

[00:00:39] Speaker 04:
First, the 294 patent cannot claim priority two, and thus is anticipated by the Paniagua application from 2004.

[00:00:50] Speaker 04:
because the inventors did not possess a method for deploying a valve whose leaflets are made up of separate pieces of material, and separately because the two inventive components required by Cordus are not present here.

[00:01:03] Speaker 04:
Second, there is no evidence in this record of Medtronic's subjective intent to induce doctors to infringe the 294 patent by equivalence, by instructing them to retract the sheath.

[00:01:17] Speaker 04:
nor could there have been such evidence of intent to infringe under this late arriving theory because of prosecution history estoppel and vitiation.

[00:01:25] Speaker 04:
And finally, if I have some time remaining and the court needs to reach the issue of damages, I'll address why the district court abused its discretion by allowing Dr. Velturo to base his proposed reasonable royalty on a wildly inapposite global agreement between the only practicing competitors of this market

[00:01:44] Speaker 04:
And by adopting an unapportioned option value theory based on mere capability to practice the claimed method, which violated this court's decisions in Niazi and AstraZeneca and allowed Calibri to capture 100% of the $3.6 billion royalty-based, the allegedly patented method was used only 34% of the time.

[00:02:02] Speaker 01:
When you started by saying you were going to talk about three, I expected actually some sifting among the issues.

[00:02:09] Speaker 01:
And it seemed to me you just covered

[00:02:11] Speaker 01:
Maybe not every one of them, but almost every one.

[00:02:13] Speaker 04:
Well, I think we'll cover the waterfront.

[00:02:15] Speaker 04:
But I think we can address them in fairly short order.

[00:02:18] Speaker 01:
Can I just ask one?

[00:02:19] Speaker 01:
Please.

[00:02:20] Speaker 01:
This is an expired patent, right?

[00:02:22] Speaker 01:
It is.

[00:02:22] Speaker 01:
So if you were to win in getting JMO on non-infringement, invalidity needn't be addressed.

[00:02:28] Speaker 01:
Is that the relationship?

[00:02:31] Speaker 04:
I'm sorry.

[00:02:32] Speaker 01:
I didn't hear the last part of your question.

[00:02:33] Speaker 01:
If invalidity need not be addressed.

[00:02:34] Speaker 04:
If we get Jamal of non-infringement, thank you.

[00:02:39] Speaker 04:
Invalidity need not be addressed.

[00:02:42] Speaker 00:
I think the converse would also be true, but let me start very quickly with the anticipation issue So Calibri argues that a reasonable fact-finder could find that these method claims are not limited to implanting a particular kind of valve and I want to know what specifically you think there is in the specification of

[00:03:07] Speaker 00:
that would make it so no reasonable fact-finder could say that the method is limited would include something that's not what I'm referring to as an origami valve.

[00:03:19] Speaker 04:
Sure.

[00:03:20] Speaker 04:
And that's the term that I use as well as an English major.

[00:03:27] Speaker 04:
First of all, of course, written description, four corners,

[00:03:32] Speaker 04:
It's an objective evaluation.

[00:03:34] Speaker 04:
So paragraph 47 in the Paniagua application is where I take you, because I think that may be the single best of several examples.

[00:03:47] Speaker 04:
And let me take you in particular to, since we're looking at the Paniagua application as the reference here,

[00:04:00] Speaker 04:
I'll take you to the specific page, which is... Is this identical?

[00:04:08] Speaker 01:
It is identical.

[00:04:08] Speaker 01:
Can you just talk about the columns?

[00:04:11] Speaker 04:
It's very hard to keep turning... I totally get that, and that's why I've marked up my patents, the 294 patent with the same number.

[00:04:20] Speaker 04:
So we're at 156, column 8.

[00:04:24] Speaker 04:
This is the paragraph beginning, the cusp or leaflet portion 220 of the valve means 200.

[00:04:30] Speaker 04:
Okay, add line 44.

[00:04:32] Speaker 04:
That's where it stops, yes.

[00:04:34] Speaker 04:
But what you'll see is later on, this is a very long paragraph relative to some of the other paragraphs here.

[00:04:44] Speaker 04:
What you will see is two parts of this that are important, which the first part of this is the cusp or leaflet portion 220 of the valve means 200 is forward.

[00:04:54] Speaker 04:
by folding of the pericardium material used to create the valve.

[00:04:58] Speaker 04:
So there you have right there, Judge Dole, the valve is formed by folding.

[00:05:04] Speaker 04:
Then you go on to the leaflet forming portion is a single continuous uncut layer.

[00:05:11] Speaker 04:
That's at lines 55 and 56.

[00:05:16] Speaker 04:
a single continuous uncut.

[00:05:18] Speaker 00:
Let me just clarify that I totally get that there is a valve that's disclosed here that has to be not sutured.

[00:05:27] Speaker 00:
The question is whether the method is a separate embodiment or not, right?

[00:05:31] Speaker 00:
And whether when the method is disclosed

[00:05:33] Speaker 00:
Person of ordinary scaling art would understand it to be saying the only thing that could be claimed with this method is Claiming using this method on an origami valve the valve that you just described at column eight, but that's that to me That's the biggest factual question and you've got to show that no reasonable fact-finder could be

[00:05:52] Speaker 04:
So I think I can do that.

[00:05:55] Speaker 04:
And here's how I'm gonna do that.

[00:05:57] Speaker 04:
Because there's another part, first of all, of paragraph 47 that's very important here.

[00:06:01] Speaker 04:
And that's over on column nine.

[00:06:03] Speaker 04:
Although a preferred embodiment of the invention, this is at line five, six, seven, eight, I believe we're starting.

[00:06:11] Speaker 04:
Although a preferred embodiment of the invention comprises a single piece of valve material folded to create the valve body, any leaflet forming portion that has no cuts or sutures,

[00:06:21] Speaker 04:
The inventors have discovered that as long as the leaflet portion of the valve itself is formed from a single piece of biocompatible valve material,

[00:06:31] Speaker 04:
The other portions of the valve can be formed by suturing.

[00:06:35] Speaker 04:
So you can have the skirt sutured.

[00:06:37] Speaker 04:
But the valve itself, the leaflets, have to be unitary.

[00:06:42] Speaker 04:
They have to be of what end?

[00:06:43] Speaker 04:
And the specification.

[00:06:45] Speaker 03:
Well, sure.

[00:06:45] Speaker 03:
That's talking about the valve.

[00:06:46] Speaker 03:
But let me ask you a hypothetical.

[00:06:48] Speaker 03:
Suppose that, and this is the way I kind of look at this patent, but it

[00:06:53] Speaker 03:
that the main focus of this is the single piece valve versus the sewn valve.

[00:07:00] Speaker 03:
And that's what they talk about completely throughout.

[00:07:04] Speaker 03:
But there's references in the patent to a method of using that valve that is also novel.

[00:07:11] Speaker 03:
Why can't, even though all of their references talk about using that new method, hypothetical, so just grant me that there is a new method in here, can't there be two different inventions, even if the thrust of the patent is the new valve they've discovered?

[00:07:28] Speaker 03:
In this discovery, they've also described a new method for using that valve, and it turns out that that method is valve agnostic and can be used with prior arc valves.

[00:07:38] Speaker 03:
Why can't they claim both of them?

[00:07:39] Speaker 04:
So, of course, I resist the assumption, but I'm going to embrace it for purposes of your hypothetical.

[00:07:45] Speaker 04:
I resist the assumption.

[00:07:47] Speaker 04:
that the method of installation here is novel.

[00:07:50] Speaker 04:
It was copied verbatim from Bessler.

[00:07:52] Speaker 03:
Well, that's an obviousness challenge.

[00:07:54] Speaker 04:
Well, no, but whatever you know, the words are, but I'm accepting your hypothetical.

[00:08:00] Speaker 04:
So here's why, because the claims still require a vowel and a vowel of two to four leaflets.

[00:08:07] Speaker 04:
Where do the claims say they require a vowel of two to four leaflets?

[00:08:10] Speaker 04:
The claim language, you can look at claim one, and it's at the top of column 14.

[00:08:16] Speaker 04:
The valve, and this is line three, the valve including two to four individual leaflets made of fixed pericardial tissue.

[00:08:26] Speaker 04:
You see that?

[00:08:27] Speaker 04:
Okay, so the invention still requires a valve.

[00:08:31] Speaker 03:
So the question is, did the... But the two to four doesn't necessarily require the single piece valve.

[00:08:37] Speaker 04:
That's right, and that's the crux of our argument, is that that can't be supported as a priority.

[00:08:44] Speaker 03:
You're not answering my question.

[00:08:45] Speaker 03:
Maybe it wasn't clear.

[00:08:46] Speaker 03:
I'm trying to clarify.

[00:08:46] Speaker 03:
Yeah, but you're not answering.

[00:08:48] Speaker 03:
Okay, let me... Why if the method described that's at issue here

[00:08:54] Speaker 03:
even if it wasn't the main focus of the patent, if it was described and it's novel, why can't they get that as a claim?

[00:09:02] Speaker 04:
Because the method, because, first of all, the method requires a valve.

[00:09:07] Speaker 04:
And the valve... Council.

[00:09:09] Speaker 04:
I'm sorry.

[00:09:09] Speaker 00:
I'm going to help you for a minute.

[00:09:11] Speaker 00:
Please.

[00:09:11] Speaker 00:
What in the specification tells you that the valve in the method is the valve that's an origami valve?

[00:09:21] Speaker 00:
Is there anything, like for example,

[00:09:24] Speaker 00:
It does say, delivering an implantation system of the replacement heart valve of the present invention at column 11, lines 42 and 41.

[00:09:33] Speaker 00:
That might be good evidence for you.

[00:09:36] Speaker 00:
I mean, so is there something else like that?

[00:09:38] Speaker 04:
That is, you also have the description of figure eight.

[00:09:42] Speaker 04:
which appears at Column 6, where they say that Figure 8 depicts the implantation delivery system used with the present invention.

[00:09:53] Speaker 04:
And the present invention is described everywhere as a valve.

[00:09:55] Speaker 03:
So you're saying when it uses that, when you're saying that it uses that word valve in the claims, which seems broad enough to cover what it's covering in the infringement case, that it actually just meant the valve, the new valve is specified in the patent.

[00:10:12] Speaker 04:
Well, I'm saying that either that or there's a break in the chain of priority because, like in Tronzo, the Paniagua application 2004 not only didn't disclose multi-leaf lipounce, but actually it disclaimed.

[00:10:27] Speaker 03:
Why didn't you ask for a claim construction?

[00:10:29] Speaker 03:
Valve to confine it to this invention in hindsight as a trial lawyer I would have loved to have done that but as a practical matter as this court's case is saying let me I get okay Let me ask you this if we don't agree that the valve that two to four because I think the two to four stuff still Infringed your product still infringes under the two to four if it's not confined to the origami, right?

[00:10:55] Speaker 03:
Otherwise, we wouldn't be here at all, right?

[00:10:56] Speaker 03:
We're not we're not asking so it's in construction

[00:10:58] Speaker 03:
Right, so if the 2 to 4 is broad enough to cover the 2 to 4 sutures, and you agree now, I think, for purposes of appeal, that your device has 2 to 4, it's just not what you think is the origami one.

[00:11:12] Speaker 04:
Well, that's absolutely right, but that's the whole point.

[00:11:15] Speaker 03:
Well, that's the whole point for me, too.

[00:11:17] Speaker 03:
If the method is separate, and they invented a novel method of delivering this in addition to

[00:11:25] Speaker 03:
Inventing a novel valve.

[00:11:27] Speaker 03:
Why isn't there written descriptions?

[00:11:29] Speaker 04:
If the method could be separated from the valve then I could grant you your hypothetical and say they could claim it because that would then be the facts of course.

[00:11:38] Speaker 00:
Is that a fact question?

[00:11:39] Speaker 00:
In this case, it's not because it doesn't the method could be separated from the valve It doesn't it ultimately resolved to a question of law because no reasonable description is Okay, so why is it that no reasonable juror could?

[00:11:56] Speaker 04:
Separate the method from the back and where I was trying to go with judge Hughes and I think this is this is the ultimate answer and actually judge Hughes your opinion for the court at both Bamberg that helps understand this and

[00:12:08] Speaker 04:
In the Paniagua application, in the Common Specification, my friends disclosed absolutely a sutured multi-part valve, but they didn't possess it.

[00:12:26] Speaker 04:
And that's the touchstone for written description.

[00:12:28] Speaker 04:
They didn't possess it, and that breaks the chain.

[00:12:32] Speaker 01:
Can I just add my two cents here?

[00:12:35] Speaker 01:
It seemed to me coming in on this issue that what you would have to find, and maybe you could find, but is something in, I guess, what you call paragraph 57 through 59 that tied the installation

[00:12:54] Speaker 01:
method to a particular valve.

[00:12:57] Speaker 01:
I actually think there's material in there that you can work with, but I haven't heard anything about that.

[00:13:01] Speaker 04:
Well, I'm sorry.

[00:13:02] Speaker 04:
I thought I agreed with Judge Stoll when she pointed out the language at the top of paragraph 58 where it says the delivery and implantation system of the replacement heart valve of the present invention and that takes us to the horodontic valve.

[00:13:17] Speaker 01:
And you also seemed a moment ago to

[00:13:22] Speaker 01:
Concede I guess I'll use that word.

[00:13:24] Speaker 01:
You'll tell me why I've misunderstood that that if the installation method can be used with Let's say, you know non novel vows Then there's written description and I I didn't I didn't concede that I'm already into my rebel time.

[00:13:45] Speaker 01:
I don't worry about time There's a lot to talk about here the

[00:13:50] Speaker 04:
No, I didn't concede that with regard to this patent.

[00:13:52] Speaker 04:
I was trying to answer Judge Hughes' hypothetical.

[00:13:55] Speaker 04:
But his hypothetical was assuming a very different patent than the one we have here.

[00:14:00] Speaker 04:
Because that valve of the present invention that's described in that first line, and by the way, that's the only language that Caligri added to Bessler.

[00:14:11] Speaker 04:
in those two paragraphs 57 and 58 to describe the installation method.

[00:14:15] Speaker 04:
That's the only thing they added.

[00:14:17] Speaker 04:
They linked it to the valve of the present invention.

[00:14:20] Speaker 04:
And every reference to the valve of the present invention in 2004 is the origami valve.

[00:14:26] Speaker 04:
And this was my point when I was bringing up the Bamberg case with Judge Hughes before, which is that there's a difference between disclosing something.

[00:14:32] Speaker 04:
Tronzo disclosed the cups that were disclaimed, but it wasn't possessed.

[00:14:39] Speaker 04:
And these inventors didn't possess.

[00:14:41] Speaker 01:
I guess I just want to raise a usage issue which is in Ariad and Ariad.

[00:14:50] Speaker 01:
Ariad makes two different form, uses two different formulations.

[00:14:54] Speaker 01:
This possession notion which has a long history whose meaning shall I say is not self-evident.

[00:15:00] Speaker 01:
The alternative formulation which

[00:15:03] Speaker 01:
in your brief you favor, which partly I think because it has somewhat greater intuitive, immediately apparent intuitive content, is that the words of the written description have to make clear to an ordinary skilled artisan that the writers of the written description thought they invented a particular thing.

[00:15:25] Speaker 01:
They could be wrong, because prior art might prove them wrong, but it

[00:15:29] Speaker 01:
indicates in its own terms that they thought they invented it and that your position on paragraphs 57 and through 59 is that

[00:15:39] Speaker 01:
this cannot reasonably be read to convey that.

[00:15:45] Speaker 01:
The other side had some testimony about how this is a separate invention.

[00:15:55] Speaker 01:
Did the testimony say you can tell it's a separate invention from the words of the spec or just it is a separate invention that can be used with

[00:16:05] Speaker 04:
It's closer to the latter, but it's actually neither of those.

[00:16:11] Speaker 04:
If you look very carefully at what Dr. Dasi said, he said there are two separate ideas.

[00:16:17] Speaker 04:
Invention is mostly a lawyer's construct used to stitch together his testimony.

[00:16:24] Speaker 04:
He talks about there being two ideas, and he's very careful to use the notion of ideas, not invention.

[00:16:29] Speaker 01:
Did he say that this second idea, it would be apparent to anybody, not only is being described in such a way as to make clear it can be used independently of the new values?

[00:16:48] Speaker 04:
So I'm looking at the language of Dr. Dossi's testimony on this point, which in the appendix starts at 22273.

[00:16:57] Speaker 04:
And you'll see at the bottom of that, he talks about there being two fundamental ideas in that patent application.

[00:17:04] Speaker 04:
One is the idea of repositionability and recapturability, and two is the idea of folding leaflets out of a single sheath.

[00:17:10] Speaker 04:
So there were two independent ideas.

[00:17:12] Speaker 04:
That's what he says.

[00:17:14] Speaker 04:
And he is then asked, how do you know that there were two independent ideas in that application?

[00:17:19] Speaker 04:
His answer is there are figures in text describing both of those ideas.

[00:17:23] Speaker 04:
Now he then puts up on the screen, figure eight from the 2002 application.

[00:17:29] Speaker 04:
And he says, that's describing that first idea that I discussed.

[00:17:33] Speaker 04:
And then he goes on to say that it has the same two ideas as of the 2000 application because the specification is identical.

[00:17:43] Speaker 04:
And then he goes on to say, I want to take a look, this is now 2275.

[00:17:48] Speaker 04:
He's asked, I want to take a look at the claims to see what they say about the valve.

[00:17:53] Speaker 04:
And he says, the valve, what you're looking at here is claim language from the 294 patent application.

[00:17:59] Speaker 04:
So now he moves over to the 294 patent and talks about two to four individual leaflets.

[00:18:07] Speaker 04:
And then what he said at Appendix 22280,

[00:18:14] Speaker 04:
is that the folded method, or the origami valve,

[00:18:27] Speaker 04:
enables the practice of that method.

[00:18:31] Speaker 04:
So you'll see that at 1388 is the transcript page and 22280 is the transcript page.

[00:18:37] Speaker 01:
I think we'll probably hear some more about this from Mr. Lampkin, but I don't want to end your portion of the argument.

[00:18:43] Speaker 01:
Can you talk about prosecution history is double?

[00:18:46] Speaker 04:
Yes.

[00:18:47] Speaker 01:
And maybe briefly say why in your pre-trial

[00:18:53] Speaker 01:
memo when you abandoned the Fifth Affirmative Defense, that didn't end the issue.

[00:18:59] Speaker 04:
Sure.

[00:19:00] Speaker 04:
So the abandonment language, by the way, is prescribed by the California local rule.

[00:19:06] Speaker 01:
Right, whose consequences there are what you would think they would be.

[00:19:10] Speaker 04:
Right, but if you take a look at what was actually said under that heading,

[00:19:15] Speaker 04:
With regard to in the pretrial memo not the trial.

[00:19:20] Speaker 01:
Let's see One three six five nine And then you tried to walk it back in the trial memo I wouldn't say that we tried to walk it back because if you take a look at the

[00:19:43] Speaker 04:
You know, 13659, under the heading Abandonment of Issues, Medtronic says, Medtronic is not pursuing the Fifth Affirmative Defense of Prosecution History Establishment.

[00:19:53] Speaker 04:
And in the full context of what's said here, this needs to be understood as we're not going to pursue this at trial because it doesn't have anything to do with what we think is at trial.

[00:20:02] Speaker 01:
Even though the local rule is clear about this required statement about abandoning of issues, defenses and claims, I think is the language.

[00:20:13] Speaker 04:
Well, I think, again, with regard to what trial counsel did here, you will note also at page 13637 Medtronic's statement that its inclusion of the contentions below, and this is at lines 11 through 14, does not constitute a waiver or concession of any aspect of Medtronic's objections or arguments made in connection with those orders, nor does it constitute a waiver of Medtronic's right to appeal the same.

[00:20:43] Speaker 00:
Can I ask you something else?

[00:20:44] Speaker 00:
Sure.

[00:20:44] Speaker 00:
What is the document at page A18581?

[00:20:50] Speaker 04:
That's the Medtronic's trial brief.

[00:20:52] Speaker 00:
So this was like... This was subsequent.

[00:20:54] Speaker 00:
Because this is much more clear that you're preserving the issue for purposes of trial.

[00:20:58] Speaker 00:
Right.

[00:20:58] Speaker 00:
So what was this timing-wise?

[00:21:00] Speaker 00:
This is about a year after this initial paper with the abandonment language, right?

[00:21:05] Speaker 00:
So was this something that was pre-trial or after trial?

[00:21:08] Speaker 04:
So the contentions were January 3, 2022.

[00:21:12] Speaker 04:
The trial brief was almost over a full year later, January 24, 2023.

[00:21:17] Speaker 00:
I'm trying to figure out if you somehow, even if you did abandon it earlier, did you somehow resurrect it with this January 23 paper?

[00:21:26] Speaker 00:
So help me out.

[00:21:27] Speaker 04:
Well, we certainly did, because we put everybody on notice that prosecution history was stopped a lot.

[00:21:34] Speaker 00:
What is the timing of this January 23

[00:21:37] Speaker 00:
document with respect to trial.

[00:21:39] Speaker 00:
Was it before trial?

[00:21:40] Speaker 04:
It's before trial.

[00:21:41] Speaker 00:
Okay, thank you.

[00:21:42] Speaker 04:
And then, there is further, our Rule 50A motion.

[00:21:48] Speaker 04:
And our Rule 50A motion, which is in the record page, Appendix 18-727,

[00:21:56] Speaker 01:
Right, you made the point in your 50A and 50B.

[00:21:59] Speaker 01:
The other side had a single sentence that didn't call attention to any kind of waiver in the 50A response.

[00:22:05] Speaker 01:
Do you have case law that says, and they did make the waiver argument in their 50B opposition, do you have case law that says that the opponent of a 50B motion

[00:22:22] Speaker 01:
must have preserved a particular ground of opposing the same point when opposing 50A.

[00:22:30] Speaker 01:
It's true on the movement side, right?

[00:22:34] Speaker 01:
You don't get to make 50B grounds for moving for Jamal that you didn't present at 50A.

[00:22:41] Speaker 01:
But on the opponent side?

[00:22:43] Speaker 04:
In the Ninth Circuit, there is a doctrine known as waiver of waiver.

[00:22:46] Speaker 04:
We've cited a case to that effect.

[00:22:48] Speaker 04:
In our not just the night in response in response to that, but I don't think there is that parallelism because that 58 preservation requirement Judge Toronto is compelled by the Seventh Amendment There is not I don't think a similar Seventh Amendment requirement regarding the response to that but what we have here is a very clear case that under the Ninth Circuit case law would be a waiver of waiver by failing to raise it in the 58 and ultimately

[00:23:16] Speaker 04:
The district court was presented with this waiver argument, didn't find it waived, ruled on it on the merits.

[00:23:22] Speaker 01:
Can you talk about the merits of prosecution?

[00:23:24] Speaker 01:
Yes.

[00:23:25] Speaker 04:
So let me do that in as short order as I can.

[00:23:29] Speaker 04:
And let me ask the court to take a look at page appendix 21293.

[00:23:40] Speaker 04:
This is Dr. Gallegos'

[00:23:46] Speaker 04:
testimony.

[00:23:48] Speaker 04:
And remember, by the way, that when Caligri is putting on its case in chief, it is putting on at this point still both a literal case as well as a doctrine of equivalence case.

[00:24:01] Speaker 04:
And so this is its effort to try to make its equivalence case.

[00:24:05] Speaker 04:
And this is Caligri asking its expert

[00:24:08] Speaker 04:
And what does that tell you about whether the difference between, and here we have a clear statement of what the equivalence theory is, retracting the sheath to expose the replacement heart valve device.

[00:24:20] Speaker 04:
That's what Medtronic does.

[00:24:22] Speaker 04:
Or moving it out with a pusher number.

[00:24:25] Speaker 04:
Whether the difference between those two things is substantial.

[00:24:28] Speaker 04:
His answer is there is no substantial difference.

[00:24:31] Speaker 04:
Now compare that language to claim 39.

[00:24:35] Speaker 01:
Well, can I just ask?

[00:24:37] Speaker 01:
So I'm always a little reluctant to read complete agreement with every bit of a formulation where the formulation is only in the question with a simple answer.

[00:24:51] Speaker 01:
I believe, correct me if I'm wrong, that at least elsewhere the framing of the affirmative theory of equivalence was not retraction alone, but retraction of the sheath while pushing

[00:25:04] Speaker 01:
basically the stent inside, which you more or less have to do.

[00:25:10] Speaker 04:
Well, right.

[00:25:11] Speaker 04:
It's holding the inner members.

[00:25:13] Speaker 01:
Well, we can talk later about, or there's a separate issue related about whether pushing is holding.

[00:25:22] Speaker 01:
I mean, you're holding it from one side, holding it so that when it doesn't move back or something, that may or may not be pushing.

[00:25:32] Speaker 01:
I thought that their point about prosecution history at Staple, I think, is this.

[00:25:42] Speaker 01:
Claim 39 was read by the examiner to mean retracting the sheath alone without any pushing.

[00:25:49] Speaker 01:
Their theory of equivalence is pushing plus retraction.

[00:25:53] Speaker 01:
Those are not opposites.

[00:25:55] Speaker 01:
And also, we didn't give up anything more than, even if we gave up that, the retraction alone.

[00:26:02] Speaker 04:
But there is an effort in their brief, in the red brief in this case, to put a lot of their literal infringement evidence into support for their equivalence case.

[00:26:13] Speaker 04:
But again, keep in mind this court demands particularized evidence.

[00:26:18] Speaker 04:
Let me take you to Dr.

[00:26:22] Speaker 04:
Guy Degos' testimony three pages later from the portion I was just showing you.

[00:26:27] Speaker 00:
This is a legal issue, though, right?

[00:26:29] Speaker 00:
This is a legal issue.

[00:26:30] Speaker 04:
This is a legal issue.

[00:26:31] Speaker 04:
This is absolutely a legal issue.

[00:26:32] Speaker 04:
But I just want to make sure that we understand what the theory is that they were asserting.

[00:26:37] Speaker 04:
And that is, again, you took as true in your application of the doctrine of equivalence framework Medtronic's position that the pusher member does not move.

[00:26:48] Speaker 04:
Is that right?

[00:26:50] Speaker 00:
Setting that aside for a minute.

[00:26:51] Speaker 00:
You might still have an argument on doctrine of equivalence, even with the retraction plus the pushing to keep in place.

[00:26:57] Speaker 00:
So what is your legal argument on that?

[00:27:00] Speaker 04:
Our legal argument is that in Claim 39, the examiner said, you don't have written description support for retraction, partial retraction.

[00:27:17] Speaker 04:
The only thing you have in your spec

[00:27:19] Speaker 04:
is a paragraph talking about retraction, complete retraction.

[00:27:23] Speaker 00:
Sure, and regardless of whether that was right or wrong, in response, those claims were abandoned, perhaps to pursue them in a future application, right?

[00:27:31] Speaker 04:
Exactly.

[00:27:32] Speaker 00:
So your view is that any kind of retraction is abandoned, it doesn't matter if there's retraction and pushing?

[00:27:39] Speaker 04:
That is our position, that they have abandoned retraction here because

[00:27:46] Speaker 04:
And we've cited cases both to the district court and to this court.

[00:27:50] Speaker 04:
Energy transportation, J&M versus Harley-Davidson, Pacific Coast Marine windshield, Mycogen plant science, all of these cases involving different circumstances, some of them withdrawals of claims because of prior art.

[00:28:04] Speaker 00:
What is your view on why, in your view, it doesn't matter that there's retraction plus pushing when, you know, when claim 39 just said retraction?

[00:28:15] Speaker 04:
because they surrendered all partial deployment via retraction.

[00:28:24] Speaker 04:
That claim would have covered every kind of partial deployment by retraction.

[00:28:30] Speaker 04:
They decided to cancel it.

[00:28:31] Speaker 04:
They deprived the Patent Office of being able to examine it.

[00:28:34] Speaker 04:
And effectively, this is one where you can pick from a menu of options.

[00:28:40] Speaker 04:
You could have even said they dedicated that to the public.

[00:28:43] Speaker 04:
It also demonstrates, by the way, why what we have here is a case of opposites, why we have a vitiation here.

[00:28:50] Speaker 04:
Because what their equivalence theory, even Judge Stoll, if it ends up being the more retraction plus pushing, what their equivalence theory ends up being is, and again, Dr. Gallegos at 21.295 lays out this part of their equivalence theory, or actually this is their theory that

[00:29:13] Speaker 04:
Yes, this is their equivalence theory.

[00:29:14] Speaker 04:
He's asked a question.

[00:29:16] Speaker 04:
And whether you are only moving the sheath or only pushing up the pusher member, or let's say, does that create, under either of those approaches, is there a creation of opposing force between the pusher and the movable sheath?

[00:29:28] Speaker 04:
answer, yes, both of these achieve the same element of force required to result in a portion of the valve exiting the movable sheath.

[00:29:36] Speaker 04:
So despite the fact that they claimed, very specifically, one kind of force pushing the pusher member out, something our device can't possibly do.

[00:29:47] Speaker 04:
They claimed that specific force, but then claimed by equivalence any kind of force.

[00:29:51] Speaker 04:
They basically said, we claim Newton's third law of motion.

[00:29:56] Speaker 04:
And they can't do that.

[00:29:58] Speaker 01:
I'm going to ask you to speak very briefly on one aspect of damages, not the non-comparability aspect, but tell me why Hanson with the snowmaking machines doesn't allow the form of measuring the royalty that was done here.

[00:30:21] Speaker 04:
Sure.

[00:30:22] Speaker 04:
As I said in my opening remarks, Niazi I think answers this

[00:30:26] Speaker 04:
this question very clearly.

[00:30:28] Speaker 04:
But Hanson, to your particular point, Judge Duranto, Hanson involved, I think, three or four snowmaking machines.

[00:30:35] Speaker 04:
Every single one of them was used at some point or another to infringe the method.

[00:30:42] Speaker 01:
The argument that the point of that section of Hanson was that there were several years in which at least one, maybe even several of the machines, were not used at all.

[00:30:57] Speaker 01:
And the claim at issue was a method of using.

[00:31:00] Speaker 01:
So there would not have been infringement during those years with those machines.

[00:31:06] Speaker 01:
Nevertheless, the damages theory for the plaintiff was approved that the royalty would be paid on capacity for each year for each machine.

[00:31:20] Speaker 04:
And that's because every, and again, I come back to my distinction here, in our devices, every single one of those devices is used only once.

[00:31:28] Speaker 04:
They're not reused, not the installation device, and certainly not the stent.

[00:31:32] Speaker 01:
Is that agreed here that once it comes out of the package, either it goes and stays in, or it comes out and is disposed?

[00:31:40] Speaker 04:
Right.

[00:31:41] Speaker 04:
That's my understanding of the record.

[00:31:42] Speaker 04:
That's my understanding of the technology.

[00:31:44] Speaker 04:
And it's just, once it's sold,

[00:31:46] Speaker 01:
I'm not sure why that makes a difference in distinguishing Hanson.

[00:31:50] Speaker 04:
And I think that is the difference in distinguishing Hanson because in every one of the snow machines, the argument, and I quote page 1080 of Hanson, the argument was that they shouldn't have paid as much in a royalty in the Georgia-Pacific negotiation because, quote, it acquired the machines for experimental purposes and did not use them much.

[00:32:10] Speaker 04:
You can take that into account in the negotiation, but here it wasn't taken into account at all because we have an agreement that 60 to 70% of these devices were never used.

[00:32:23] Speaker 01:
How did that figure come?

[00:32:25] Speaker 04:
That comes directly from the testimony of Calibri's witnesses.

[00:32:31] Speaker 01:
Okay, but that's not disputed.

[00:32:33] Speaker 01:
So here one could chop down

[00:32:36] Speaker 01:
the damages figure to 30 to 40 percent of what the current figure is.

[00:32:41] Speaker 04:
I think we asked for either a new trial or perhaps a remittance or I'm not sure if we did that or not.

[00:32:47] Speaker 04:
In the district court I'm honestly at a loss to remember that at this moment.

[00:32:51] Speaker 04:
But with regard to that I thank the court for its indulgence and I hope I'll have a few minutes to come back.

[00:32:57] Speaker 04:
You will.

[00:33:12] Speaker 02:
Thank you, and may it please the court.

[00:33:14] Speaker 02:
I thought I would begin by answering Judge Toronto's question about whether the inventors or the specification has to indicate that the inventors recognize that this second invention, the method, is itself inventive by using, for example, the present invention or not using the present invention with respect to the other invention, in this case, the folded leaflets.

[00:33:33] Speaker 02:
And the answer to that question is no.

[00:33:36] Speaker 02:
The hallmark of written description is disclosure.

[00:33:39] Speaker 02:
mental possession.

[00:33:40] Speaker 02:
It's not whether or not you say it's the invention or use this invention to describe it.

[00:33:45] Speaker 02:
And actually, it would require someone to say this invention when describing the second invention, or to require them to recognize it as an invention, would be completely contrary to ordinary continuation practice.

[00:33:57] Speaker 02:
As this court's pointed out, in continuation practice, one of the purposes, when you file an initial application and quote, later realize that the specification discloses the second or broader invention,

[00:34:06] Speaker 02:
You can go back and add claims to claim it, and you get the benefit of the priority day under 120.

[00:34:11] Speaker 02:
And that's Antares Pharmaceutical versus Medec Pharma, 771 F 1358.

[00:34:16] Speaker 01:
So at least this is the way I'm thinking about it.

[00:34:20] Speaker 01:
So that would be true, and as far as I know, has always been true in the continuation practice, where an outside relevant reader looks at the words

[00:34:36] Speaker 01:
and sees that those words actually teach an independent invention, let's just call it that, which is not the same thing as saying, oh, it turns out you could use them separately even though the words don't teach

[00:34:59] Speaker 01:
And so what I'm very focused on is the language, particularly the language that opens paragraph 57, as you've called it, down column 10 line, was it 57 or something, 56, which seems to, and even the rest of that paragraph seems always to be talking about the inventive valve

[00:35:20] Speaker 01:
being part of what's being talked about in the implementation method.

[00:35:25] Speaker 02:
You know, certainly because we're describing what it says preferred embodiments, it's ordinary to say, oh, when you're using this implementation method to pair it with the valve, but there's nothing a skilled artist in there, the skilled artist in will look at and say, aha, this valve is somehow linked or related or limited, and you have to use that valve for the implementation method.

[00:35:44] Speaker 02:
And in fact, Dr. Dawsey testified and pointed, and we'll start with figure eight in particular.

[00:35:49] Speaker 02:
which is agnostic as to any type of valve.

[00:35:52] Speaker 02:
And he pointed out that he says that you can look at page 149 of the appendix.

[00:35:56] Speaker 02:
That shows the picture.

[00:35:57] Speaker 00:
What about figure eight?

[00:35:59] Speaker 00:
Does she say it's agnostic about the type of valve?

[00:36:03] Speaker 02:
It doesn't have any indication as to a valve whatsoever.

[00:36:06] Speaker 02:
All it is is the insertion device, and it has the arrow to the left, up, and down.

[00:36:10] Speaker 00:
So you're saying when I'm looking at figure eight itself, is there anything in the specification that causes you to say that figure eight is agnostic about the type of valve?

[00:36:20] Speaker 02:
I don't think there's anything in particular that says that, but Dr. Dawsey pointed out that a skilled artisan, and this is all from the perspective of a skilled artisan, that a skilled artisan would understand, quote, that figure eight is clearly illustrating that first idea, the separate idea of recapture and reposition.

[00:36:36] Speaker 00:
Is that because of the arrow?

[00:36:38] Speaker 02:
The arrow is, yes, that you can push it out and pull it back.

[00:36:41] Speaker 02:
Push it out and pull back.

[00:36:42] Speaker 02:
And there's simply no indication that somehow or another the type of valve limits that.

[00:36:46] Speaker 00:
Let me talk about my concern.

[00:36:48] Speaker 00:
My concern a little on this, and it's a hard question because you definitely have a good, you're on the better side as far as, you know, this is a substantial evidence question, right?

[00:36:58] Speaker 00:
Whether a reasonable person could find

[00:37:01] Speaker 00:
what this discloses but I keep on thinking about public notice and all the language in this portion of the application or specification that talks about the present invention as Judge Toronto has pointed out there's multiple places where it says you know in discussing the procedure for implantation the procedure for implantation of the replacement heart valve device of the present invention it says of the present invention at least three four times and then on top of that

[00:37:31] Speaker 00:
This specification is obviously very clear when it talks about the valve, that the valve is a very special one.

[00:37:39] Speaker 00:
You know, there's no doubt that it criticizes valves that are sutured.

[00:37:44] Speaker 00:
And so, you know, is there something special about the combination of the valves that are sutured, emphasis, saying the other kinds that are sutured, their failures, or they've got big problems.

[00:37:54] Speaker 00:
So we're going to have our origami valve combined with, in describing this method four times at least, there is the method for implanting a valve of the present invention.

[00:38:04] Speaker 00:
Why wouldn't a person of ordinary scale in the art

[00:38:07] Speaker 00:
think, hey, these people are just claiming this narrow valve.

[00:38:10] Speaker 02:
So certainly when you look at that, they definitely have the idea that you could use these things together.

[00:38:15] Speaker 02:
And when you're talking about preferred embodiments, of course they're going to have the two inventions together.

[00:38:20] Speaker 02:
But just like Cordus, just like Revolution Eyewear, in those cases, they only disclosed the two separate inventions together.

[00:38:28] Speaker 02:
That was all the disclosure.

[00:38:29] Speaker 02:
But because they have addressed different problems, and they addressed it through different techniques, it was permissible to claim them separately.

[00:38:36] Speaker 02:
And that's exactly like the case here, because as Dr. Dossi explained, someone looking at just figure eight would understand that's clearly illustrating the first idea, separate idea, separate problem, repositionability, about the ability to recapture and reposition the heart valve device.

[00:38:51] Speaker 02:
Again, age 22,274, figure eight.

[00:38:54] Speaker 02:
Again, that's spreading the idea of recapital repositional device.

[00:38:57] Speaker 01:
Wouldn't somebody looking at figure eight read the sentence at, I guess in paragraph 58, which is,

[00:39:04] Speaker 01:
column 11, the opening sentence starting at line 40 that specifically describes figure eight as involving delivery and implementation system of the replacement artificial heart valve of the present invention.

[00:39:18] Speaker 02:
Yes, certainly that would say that you could use it for the present invention, but it wouldn't necessarily limit it because a skilled artist is looking back.

[00:39:25] Speaker 02:
This is very much like cordist.

[00:39:27] Speaker 02:
There's simply nothing in the patent that says

[00:39:30] Speaker 02:
the separate problem of how you get it to the right exact spot is somehow informed by which type of valve you're using.

[00:39:37] Speaker 02:
They're completely separate questions and separate... Can I ask you a hypothetical?

[00:39:41] Speaker 03:
Let's assume I agree with you that there's two separate dimensions here, the new valve and

[00:39:47] Speaker 03:
a new method but what if it was clear from the specification that the inventor thought that the reason the new method would work was because of the new valve yeah but then later discovered the method well i don't know later discovered it's the correct word because i might get in a priority problems later realized that the specification also supported using that method with

[00:40:10] Speaker 03:
Different valves.

[00:40:11] Speaker 02:
Right.

[00:40:11] Speaker 02:
And I think the answer is, you always take the perspective of the skilled artist and reading the specification.

[00:40:17] Speaker 02:
And so even if the inventor later said, oh my gosh, I just re-read my specification and that's completely separate, that would be fine.

[00:40:24] Speaker 02:
And I think that Dr. Dasi, you're testifying.

[00:40:26] Speaker 03:
Okay, but let me, I gave you a two-part question.

[00:40:29] Speaker 03:
I really wanted to answer the first one first.

[00:40:30] Speaker 02:
I apologize.

[00:40:31] Speaker 03:
No, it's my fault for asking a bad hypothetical.

[00:40:34] Speaker 03:
The only way to read the specification is that even if they're two separate things they're linked that the invention of this new valve is what Enabled the new method and that's the only way you could read that then would you agree that you might have a problem here?

[00:40:49] Speaker 03:
I know that's not the way you read it But if it if it was that they were kind of dependent upon each other if the specification made clear that there's some characteristic or feature of that valve

[00:41:00] Speaker 02:
that means that you need to use that valve for this new method, then there would be a good argument that they don't have mental possession of the broader invention.

[00:41:08] Speaker 02:
But Dr. Dossi testified on page 22275, to practice the idea of repositioning and recapturing, you do not have to use the folded valves.

[00:41:15] Speaker 02:
You can use any technique to assemble the leaflets into the heart valve.

[00:41:18] Speaker 02:
And there's simply no evidence they're different sizes, they're different, anything about that.

[00:41:21] Speaker 00:
That's a good point.

[00:41:22] Speaker 00:
My question is related to that, which is simply that,

[00:41:25] Speaker 00:
your expert say at some point, look, I would discuss with you, given the nature of the technology issue here, I think that it's clear that a person of ordinary skill and the art would understand that this method would work with any kind of health.

[00:41:45] Speaker 00:
Did he say that?

[00:41:46] Speaker 02:
He didn't say that in those terms, but he did say it in terms, especially when talking about figure eight.

[00:41:52] Speaker 02:
When he talked about figure eight, he said, it is clear, which means the skilled artisan looking at this would understand that this does not depend on a particular vowel.

[00:42:00] Speaker 02:
And in that sense, it's just like cordis or just like revolution eyewear, Your Honor, because in cordis itself, for example, the one party disclosed ring stents with undulating longitudinal sections.

[00:42:15] Speaker 02:
And the patent only disclosed ring stents, not non-ring stents.

[00:42:18] Speaker 02:
And it actually taught away from non-ring stents, because it teaches away from using ring stents.

[00:42:23] Speaker 02:
their stents are not made of rings, and that was because they were weaker.

[00:42:26] Speaker 02:
But the court helped that the written description was sufficient for just the undulating longitudinal sections with non-ring stents.

[00:42:34] Speaker 02:
And I quote, "'Cause nothing in the patent suggests that the benefits of undulating longitudinal sections are tied in any way to ring stents.

[00:42:40] Speaker 02:
Likewise here, nothing suggests that the benefits of the recaption reposition is tied in any way to the type of valve.

[00:42:47] Speaker 02:
Second, Cortis's expert testified without contradiction that the undulating structures disclosed in the patent could be used in conjunction with non-ring stints.

[00:42:55] Speaker 02:
Likewise here, Dr. Dawsey made clear that practicing the idea of the reposition recapturing, you don't have to use folded valves.

[00:43:02] Speaker 02:
And finally, the last sentence.

[00:43:06] Speaker 02:
Likewise here, if you practice the inventions without the folded valve, you might not have that derailability after placement.

[00:43:18] Speaker 02:
But you would still get the benefit of repositioning and recapturing, which is the critical piece, what adds the value to every surgery in this case.

[00:43:26] Speaker 03:
Apart from figure eight in your expert's testimony, are there other places in the specification that support, that have written description for this recapturing method?

[00:43:36] Speaker 02:
So the recapturing method is actually specifically disclosed.

[00:43:40] Speaker 02:
And where they say there's about eight paragraphs that talk about you have two paragraphs talking about the the folded valve and then there's eight paragraphs talking about the procedure for inserting it and then in that it says that you can have the Hold it and you recapture it and so it specifically talks about that and at no point in that description of the process Hold still and recap and then recapture if you've repositioned does it say oh and it's the folded valve that makes this possible There's just simply nothing that sets that

[00:44:09] Speaker 00:
Can I ask you something about the doctrine of equivalence?

[00:44:13] Speaker 00:
In the embodiment that was previously claimed in application claim 39, is there a stabilizing or pushing force necessarily on the valve at the time of retraction?

[00:44:32] Speaker 02:
So if one assumes that you have friction, because the catheter is expanding, you would need actually some sort of a stabilizing force for cataract, otherwise the whole thing would loop together.

[00:44:47] Speaker 02:
But that's not actually how...

[00:44:50] Speaker 02:
that works in order to have that infection.

[00:44:54] Speaker 02:
When you say that works, what do you mean by that works?

[00:44:56] Speaker 02:
How prosecution history estoppel works.

[00:44:58] Speaker 02:
In order to have a prosecution history estoppel across independent claims, right, it's an infectious estoppel, the rule is that you have to have a word that's in common where you're just claiming one and that affects the meaning of the other.

[00:45:11] Speaker 02:
That's the general rule and there's a reason for that.

[00:45:15] Speaker 02:
A patent prosecutor is looking at us and saying, I want to drop claim 39.

[00:45:20] Speaker 02:
I don't want to pursue it.

[00:45:21] Speaker 02:
We have a lot of reason to do that.

[00:45:23] Speaker 02:
And he can't figure out, or she can't figure out, what the effect will be if you're going to look past the actual words to inherently.

[00:45:30] Speaker 02:
I don't even know how you do that in the abstract.

[00:45:32] Speaker 02:
When you're not talking about clients, you're just talking about the words that claim.

[00:45:35] Speaker 00:
The words we're talking about right now are retraction combined with recapture, right?

[00:45:43] Speaker 00:
the claim is pushing combined with recapture, right?

[00:45:47] Speaker 05:
Right.

[00:45:47] Speaker 00:
And so your view is you can't, I mean, I understand your Dr. McClaren's theory to be that it would retract and also push to, so I don't understand what you're talking about with the,

[00:46:02] Speaker 00:
I don't understand your argument about changing the words.

[00:46:05] Speaker 00:
I just don't appreciate that.

[00:46:06] Speaker 02:
OK, so claim 39 had the words retraction and claim 34, which became claim one, has only pushing.

[00:46:14] Speaker 00:
Right.

[00:46:14] Speaker 02:
And so the fact that we do not pursue claim 39 shows that we didn't want to do retraction only.

[00:46:19] Speaker 02:
And one of the reasons you would not want to do retraction only is you know you're going to capture whatever you need to capture in your claim because you always have pushing.

[00:46:27] Speaker 02:
This technique requires a pushing out.

[00:46:30] Speaker 02:
And as long as the surgeon is pushing out to cause the stent and the valve and the pushing member to be exposed,

[00:46:36] Speaker 02:
then you're covered by Claim 34.

[00:46:39] Speaker 00:
It's not enough that you gave up all retraction.

[00:46:43] Speaker 00:
You know, I agree with you.

[00:46:45] Speaker 00:
There was definitely an argument made that, no, we have written description support for retracting and recapturing.

[00:46:52] Speaker 00:
But there was a strategic decision made to pursue it later.

[00:46:56] Speaker 02:
Well, the strategic decision was, as long as we have pushing, we're good enough.

[00:47:00] Speaker 02:
And there's nothing about that.

[00:47:01] Speaker 00:
Where do I see that?

[00:47:02] Speaker 02:
Pardon?

[00:47:03] Speaker 02:
Where do I see that?

[00:47:04] Speaker 02:
So long as we have pushed the claim down.

[00:47:05] Speaker 02:
Well, I think when you're looking at prosecution history of Staple, like what was given up, you have to look at the words of the claim that was given up.

[00:47:11] Speaker 02:
What was given up was retraction only without a pushing element.

[00:47:15] Speaker 02:
And what was kept was pushing, where it's agnostic as to whether or not you combine it with retraction.

[00:47:19] Speaker 01:
But just to go back to, I think, Judge Stoll's opening question on this, your position is that even if there is retracting,

[00:47:31] Speaker 01:
Everybody would know that there has to be pushing pushing in the very sense that you That you have used for your so we have that yeah where you have that friction you would ordinarily for retraction also need to have Something that holds it stable or otherwise provides a kind of this and if a skilled artisan would know that reading Claim 39 and then see that claim 39 was dropped hasn't there just been a

[00:48:01] Speaker 01:
surrender of retraction, parenthesis, with the unavoidably necessary pushing.

[00:48:09] Speaker 02:
Well, I think what it tells the reader is that we don't need retraction alone because there is a separate claim that has a separate claim.

[00:48:17] Speaker 01:
No, I guess one way to make the point is no skilled artisan would read 39 as retraction alone.

[00:48:22] Speaker 01:
Well, certainly, I'm not sure that's true.

[00:48:24] Speaker 01:
Because it wouldn't work, right?

[00:48:26] Speaker 02:
If you have the radiating force, and the skilled artisan is thinking you have the radiating force, as opposed to something that's not got that friction, that might be the case.

[00:48:33] Speaker 02:
But that type of inherency isn't the type of thing that one does for prosecutant history, Stoppel, because Black So Welcome says the clear word.

[00:48:40] Speaker 02:
Claims that do not recite the amended term are not subject to a stoppel.

[00:48:44] Speaker 02:
And that's because skilled artisans, I mean, excuse me, patent prosecutors need to be able to know

[00:48:49] Speaker 02:
If I drop this claim, what are the consequences?

[00:48:52] Speaker 02:
An inherency, oh, there's pushing force inherent in that, isn't the type of thing they're going to necessarily know.

[00:48:57] Speaker 02:
It'd be a complete and total world of hurt for patent prosecutors if every time they drop a claim, they have to go back and say, is there something in that claim that's inherent that might be in part of another claim that's not specifically listed?

[00:49:09] Speaker 02:
that I'm going to be giving up.

[00:49:12] Speaker 02:
And that's just simply not how it works.

[00:49:14] Speaker 02:
And you have to go around GlaxoWelcome and its rule to go have an infectious estoppel where there's no terms in common whatsoever.

[00:49:23] Speaker 02:
If I could turn for a moment then to damages, perhaps, which is the basic rule on damages is in Hansen, there are multiple factors that point you to the fact that there would be

[00:49:38] Speaker 01:
I think you will tell me, would you agree that at least Hanson is a real outlier case?

[00:49:49] Speaker 02:
No, Your Honor, Lucent itself points out that when you have... But Lucent didn't involve.

[00:49:53] Speaker 01:
Lucent had, I don't know, a bunch of really important treatise-like languages that explained how things can work.

[00:50:03] Speaker 01:
But in terms of cases,

[00:50:05] Speaker 01:
that actually say, yes, it is OK to have a royalty measure that meters according to some non-infringing activity.

[00:50:18] Speaker 01:
Tell me if there's more than Hanson.

[00:50:21] Speaker 02:
I think Hanson is the lead case and Lucent cites Hanson when it has that additional language about fire alarms.

[00:50:27] Speaker 02:
And I think there's three features of it that show you why it makes a perfect sense to apply that type of an option value here as opposed to a per use type of license.

[00:50:35] Speaker 02:
And the first is that it's an insurance function that you need to have it there if it happens, just like the snowmobile.

[00:50:42] Speaker 01:
Having insurance is not an infringing activity.

[00:50:45] Speaker 01:
I mean, I get the idea, but you've got to tie it to infringing activity.

[00:50:51] Speaker 01:
I also get why if there are practical reasons that it's fundamentally going to be impossible to distinguish, to make the more refined judgment, and I think Hanson did

[00:51:06] Speaker 01:
make a point of saying the negotiation expert, the licensing expert there said, this is that situation.

[00:51:15] Speaker 01:
But you have a case in which I gather you agree that you may not be able to tell operation by operation, but you know 60% to 70% are not infringing.

[00:51:28] Speaker 02:
And you don't know in advance whether or not you're going to need that capacity.

[00:51:32] Speaker 02:
So what?

[00:51:33] Speaker 02:
So the surgeon can't decide, I want the one with the capacity, I want to buy it in advance, or in the middle of the operation, call up and say, suddenly, I need this.

[00:51:41] Speaker 02:
And our expert actually testified specifically about the hypothetical negotiation.

[00:51:45] Speaker 02:
He has asked, would they only agree to a royalty for those 30% to 40% of the procedures that involve recapturing, repositioning?

[00:51:52] Speaker 02:
Answer, no.

[00:51:53] Speaker 02:
Why not?

[00:51:54] Speaker 02:
Answer, well, there are two reasons.

[00:51:55] Speaker 02:
First, how would you do that?

[00:51:57] Speaker 02:
I mean, you're going to have to track how every device is used.

[00:52:00] Speaker 02:
So it's exactly like Hanson because Hanson had the problem that you didn't know how often it's going to be used because no one took track of the snowfall when it was used.

[00:52:07] Speaker 02:
Likewise here, how would you know?

[00:52:09] Speaker 01:
Well, how did you come to your 30 to 40 percent?

[00:52:13] Speaker 02:
That was the experience of the expert witness.

[00:52:16] Speaker 01:
So the experts are sitting with the negotiators in the hypothetical negotiation and

[00:52:23] Speaker 01:
Why can't they basically come to some sort of negotiated agreement about how many of these devices are going to be used in an infringing way and how many not?

[00:52:33] Speaker 01:
And we're going to build that into the percentage.

[00:52:35] Speaker 02:
Exactly what you would expect.

[00:52:38] Speaker 02:
They would take into account, and then Dr. Valtor explained this, you take into account how often it's used and what are the consequences if you don't have it available.

[00:52:46] Speaker 00:
So they have that knowledge at the time of the hypothetical negotiation, that is at the time the infringement began.

[00:52:52] Speaker 02:
They may or may not have understood that at the time when the infringing began, but I'm going to speculate that they had, you know, let's give them the better version.

[00:52:59] Speaker 00:
Does it matter that your invention could only be claimed as a method?

[00:53:02] Speaker 00:
I mean, there are times when there's a claim, you could craft a claim that's a product, you could craft a claim that's a method.

[00:53:10] Speaker 00:
There's different ways that you can claim here.

[00:53:11] Speaker 00:
can't envision a way that you could recite a claim covering what you've got here without having it be a method.

[00:53:17] Speaker 02:
I think that does matter.

[00:53:19] Speaker 02:
And there's one other thing I wanted to point to.

[00:53:20] Speaker 02:
And that is that having the ability, having the right to use the method, which is what is being sold here, actually affects each surgery that's done, whether the method's used or not.

[00:53:31] Speaker 02:
And Dr. Fish testified about this.

[00:53:33] Speaker 02:
And he explained that when the surgeon knows that he can recover or she can recover, we capture and reposition.

[00:53:41] Speaker 02:
You can get better, you can go right for the critical zone, the optimum zone, even though that's close to what he called the danger zone.

[00:53:49] Speaker 02:
Because you know what you hit the danger zone, you can pull it back.

[00:53:52] Speaker 02:
And that before this priority existed,

[00:53:54] Speaker 02:
Before this existed, surgeons would stay further away and use a non-optimal positioning because they didn't have the ability to, if they hit that danger zone, recapture it.

[00:54:09] Speaker 02:
Finally, if I could circle back to one thing on doctrine of equivalence.

[00:54:13] Speaker 02:
and the evidence here.

[00:54:15] Speaker 02:
And as the evidence shows, unmistakably, we have the pictures, we have testimony from the only two witnesses who performed these procedures, who described the Medtronic video, that when this is performed, there's not merely the retraction of the sheath

[00:54:30] Speaker 02:
But the pushing force has the effect of moving the stent, moving the valve, moving the pusher member out and into the body.

[00:54:39] Speaker 02:
And once you have that, it pushes it out forward into the body.

[00:54:42] Speaker 02:
If you hold the one thing there from a degree is a still, the pigtail catheter, it moves out into the body.

[00:54:48] Speaker 02:
Dr. Gallegos testified that yes, in every surgery that I have, it moves out.

[00:54:54] Speaker 02:
It actually moves forward.

[00:54:55] Speaker 02:
The pushing actually changes the position.

[00:54:57] Speaker 01:
It moves forward with respect to an external frame of reference.

[00:55:00] Speaker 02:
With respect to an external frame of reference.

[00:55:02] Speaker 02:
But it also necessarily moves forward with respect to the retracting sheath.

[00:55:07] Speaker 02:
Because if it didn't move with respect to the retracting sheath, then it wouldn't get exposed.

[00:55:11] Speaker 02:
So it's moving both forward in the external frame of reference with respect to the pigtail catheter, the body, the anatomy, and with respect to the sheath.

[00:55:18] Speaker 01:
Do I remember right that, I guess it must be the red brief, says that what those pictures show is the entire catheter apparatus moving forward.

[00:55:33] Speaker 01:
Does that matter to your point or do you dispute that?

[00:55:38] Speaker 02:
It matters because if you're just doing insertion, moving everything, the sheath, everything is moving along.

[00:55:43] Speaker 02:
That's the insertion.

[00:55:44] Speaker 02:
That's not partial retraction.

[00:55:46] Speaker 02:
But the testimony is, and this is from Dr. Fish, that the sheath moves up during that operation.

[00:55:53] Speaker 02:
He talks about the sheath marker band starting relative to the pigtail about the middle, and it ends up above that.

[00:55:58] Speaker 02:
So the sheath has moved back while the rest of it has moved down and forward.

[00:56:02] Speaker 02:
And then Dr. Gallegos specifically testified that he isn't the whole thing moving.

[00:56:06] Speaker 02:
When he is asked, Dr. Gallegos,

[00:56:07] Speaker 02:
The entire device is moving forward.

[00:56:09] Speaker 02:
He responds, I didn't say the entire device moved downward.

[00:56:12] Speaker 02:
I told you the pusher member moves downward.

[00:56:14] Speaker 02:
You asked me about the cone.

[00:56:16] Speaker 02:
And he goes and says, those move forward.

[00:56:17] Speaker 01:
Can you try to explain this?

[00:56:20] Speaker 01:
And the question is not going to be well formulated.

[00:56:24] Speaker 01:
But Mr. Cassanius said, standing there, and his brief also says that there's some

[00:56:32] Speaker 01:
impossibility that you're overlooking.

[00:56:37] Speaker 01:
Can you both identify what that argument is in as generous a way as you can manage and then explain why it's wrong?

[00:56:44] Speaker 02:
I think the argument is because the handle that you turn in order to cause retraction is attached to the pusher member.

[00:56:52] Speaker 02:
that you for some reason it's impossible to move the pusher member with respect to the sheath and I just truthfully I don't understand how that could be true and I think the pictures tell you that it's not true because if you just look at the slides for example if you look at even their slides and that would be page one thousand nine hundred and four hundred and thirty three let's say that number again please one thousand nine hundred and one thousand nine hundred and

[00:57:20] Speaker 02:
19,482 and 19,453.

[00:57:21] Speaker 02:
If you look at 1,953, in their pictures, if you take a look, now these are not lined up right.

[00:57:34] Speaker 01:
These are the pictures that are in the briefs.

[00:57:36] Speaker 02:
Yes, these are in the brief, but these are bigger, so it's easier.

[00:57:40] Speaker 02:
If you take a look, they've marked the marker band.

[00:57:42] Speaker 02:
The marker band's on the sheath.

[00:57:44] Speaker 02:
And the marker band starts at the top of the pigtail catheter on the left.

[00:57:47] Speaker 02:
We're talking about 1-9-4-5-3.

[00:57:49] Speaker 02:
And then on the right, the marker band is way up above the pigtail catheter.

[00:57:54] Speaker 02:
So it's moved back relative to the pigtail catheter.

[00:57:58] Speaker 02:
And then if you line them up, you flip the page, and we're at 1-9-4-8-2.

[00:58:01] Speaker 02:
And this is ours, where we've lined up the pigtail catheter.

[00:58:05] Speaker 02:
You can actually see the nose cone has gone down.

[00:58:08] Speaker 02:
and you can actually see that the stent has moved down.

[00:58:11] Speaker 02:
So things are moving relative within the patient downward and with respect to the sheath which has moved backward.

[00:58:19] Speaker 02:
And if you look at the discussion of

[00:58:22] Speaker 02:
Video when you the only people who testified what's happening in the video were two doctors who actually performed the procedure and both of them described The stent and the valve and the nose cone moving down and the sheath moving backwards and just just so I understand is it your view that

[00:58:40] Speaker 01:
You know, that's icing on the cake for you, not necessary that, or that.

[00:58:44] Speaker 02:
I think it makes it an easy case, because when you're trying to ask.

[00:58:47] Speaker 01:
Because then you have forward motion with respect to an external frame of reference.

[00:58:53] Speaker 02:
I think that's exactly right.

[00:58:54] Speaker 02:
When you're looking for pushing out, how does that thing move out?

[00:58:56] Speaker 02:
It moves out because it's the pushing of the doctor that moves it out.

[00:59:00] Speaker 02:
And both Dr. Aguayoza and Dr. Fish said, in every single procedure that we do, we see that downward and out movement.

[00:59:09] Speaker 02:
And that is in every procedure.

[00:59:12] Speaker 02:
In fact, Medtronic's only directions tell them, start above.

[00:59:17] Speaker 02:
And why do they say to start above?

[00:59:18] Speaker 02:
They start above because they know it's going to move down.

[00:59:21] Speaker 02:
And the record is very clear on that.

[00:59:23] Speaker 02:
And finally, I mean, in terms of the alignment, whether this is a jury question, which frame is aligned with what, did the fluoroscope move and things like that.

[00:59:30] Speaker 02:
But in terms of alignment, I think you can tell.

[00:59:33] Speaker 02:
that the pictures that are presented by my brother are not properly aligned for two reasons, just even apart from everybody agrees the pigtail catheter doesn't move.

[00:59:44] Speaker 02:
If you look to the left under the word spindle, you can see a little line there, that's part of anatomy.

[00:59:48] Speaker 02:
If you look to the right, it's moved up.

[00:59:50] Speaker 02:
And if you look at the little curly thing, which is your guide wire, that's the only thing that looks like a pigtail, so it's confusing.

[00:59:57] Speaker 02:
But if you look on the left,

[00:59:58] Speaker 02:
it's, this is something that winds to five, it's at one point.

[01:00:01] Speaker 02:
And then if you look on the right, it's moved up.

[01:00:04] Speaker 02:
That winds through your anatomy, it winds through your body.

[01:00:06] Speaker 02:
Unless it's like tearing through heart flesh, they've just simply misaligned these two items.

[01:00:10] Speaker 02:
If there's no other questions, I'd be happy to give up what doesn't remain of my time.

[01:00:17] Speaker 02:
Thank you.

[01:00:32] Speaker 04:
try to be very brief, Your Honor.

[01:00:34] Speaker 04:
First, with regard to the anticipation point, my friend suggested that nothing in the specs suggests that the method is tied to the type of the valve.

[01:00:45] Speaker 04:
That's wrong.

[01:00:46] Speaker 04:
I pointed the court to the description of figure 8, which appears in column 6, lines 41 and 42, and that says,

[01:00:57] Speaker 04:
Figure 8 depicts the implantation slash delivery system used with the present invention in a preferred embodiment.

[01:01:05] Speaker 03:
But it doesn't say it can only be used with the present invention.

[01:01:08] Speaker 04:
No, but it's telling us what's possessed.

[01:01:10] Speaker 04:
Secondly, the court has heard me talk about, and you talked about with my friend, the language at the top in the middle of column 11, where the procedure is described as the delivery and implantation system of the replacement artificial heart valve of the present invention.

[01:01:27] Speaker 04:
That's linking the process of installation of implantation to the present invention, which is the valve.

[01:01:35] Speaker 04:
In fact, the 294 patent uses the replacement heart valve device of the present invention five times in just the portion dealing with the implantation method.

[01:01:47] Speaker 04:
And finally, if you had any doubt about this,

[01:01:51] Speaker 04:
Dr. Fish's testimony about his lightbulb moment.

[01:01:54] Speaker 04:
You want to talk about possession?

[01:01:55] Speaker 04:
You want to talk about mental possession?

[01:01:57] Speaker 04:
Dr. Fish's lightbulb moment at appendix 21068 and 09 was when he saw the origami valve.

[01:02:04] Speaker 04:
That was what was going to make it small enough to go into

[01:02:08] Speaker 04:
the catheter for implantation.

[01:02:10] Speaker 04:
Yeah, but then while the light was on, he saw something else that he had.

[01:02:14] Speaker 04:
We don't have any objective evidence of that.

[01:02:17] Speaker 04:
We don't have any objective evidence of that.

[01:02:18] Speaker 04:
That is strictly lawyer argument and the specification and objective reading.

[01:02:22] Speaker 01:
And is it your view that as a result, Kingstown, I guess, is the usual case that's cited.

[01:02:31] Speaker 04:
I'm sorry, which case?

[01:02:31] Speaker 01:
Kingstown.

[01:02:32] Speaker 04:
Sure.

[01:02:33] Speaker 01:
That for 10 years, these inventors and their lawyers didn't realize

[01:02:38] Speaker 01:
that there was an independent invention.

[01:02:41] Speaker 01:
And I think the other, Kingstown may suggest, and I think the other side says, it's just not significant, that fact that there was a 10-year gap before.

[01:02:52] Speaker 04:
I think if you have to have possession in the 2004 Paniagua application, it's highly relevant to priority.

[01:03:01] Speaker 04:
Let me turn to Doctor of Equivalence very quickly.

[01:03:04] Speaker 04:
As I said before, and I think I may not have gotten this out entirely, pushing was never their equivalence theory at trial.

[01:03:10] Speaker 04:
Their equivalence theory, and this is 21296, assumed that the pusher member does not move.

[01:03:17] Speaker 04:
And as a factual matter, Judge Toronto, at page 14 of our gray brief, we have the citations there that show why it is indeed impossible.

[01:03:26] Speaker 01:
I was not able to follow it.

[01:03:29] Speaker 04:
Well, let me see if I can explain it and I realize that you've already been very indulgent and the red light is coming on as I say this.

[01:03:36] Speaker 04:
But imagine a pipe or drinking straw and imagine that there is a wire that runs through it and the valve is on the wire.

[01:03:47] Speaker 04:
But the valve is compressed inside the straw and

[01:03:52] Speaker 04:
and the valve is also mounted to the wire that's in the middle.

[01:03:57] Speaker 04:
It's mounted to it.

[01:03:59] Speaker 04:
The wire itself does not push anything forward.

[01:04:02] Speaker 04:
The straw pulls back and what happens is, and the only movement that's shown in those stills there is the natural blossoming of the stent as the retraction takes place.

[01:04:17] Speaker 04:
There is no pushing of anything.

[01:04:20] Speaker 04:
But again, keep in mind that in the very, very slender equivalence theory that they presented at trial, it was based on the presumption that the pusher member does not move.

[01:04:31] Speaker 04:
We're now hearing a theory that it's the pusher member does move.

[01:04:34] Speaker 04:
And that's why this court does require particularized evidence with regard to this.

[01:04:42] Speaker 04:
Finally, with regard, well, before I just touch on the damages point very quickly,

[01:04:47] Speaker 04:
the overarching all of our infringement.

[01:04:51] Speaker 04:
Arguments is the fact that this is an inducement only case and inducement requires specific Intent specific subjective intent to infringe right, but we I know you you started your argument Wanting to talk about that and you didn't get a chance, but that means they didn't get a chance to respond And I just want to I'm doing nothing more than reminding the court that that was a point that I made at the beginning and that overlies all of the infringement arguments here and

[01:05:18] Speaker 04:
And then finally, with regard to my friend's point about the damages, Judge Taranto, you're exactly right.

[01:05:24] Speaker 04:
Insurance is not an infringing activity.

[01:05:27] Speaker 04:
And you know what?

[01:05:28] Speaker 04:
We see patent claims all the time that are claimed in terms of capability.

[01:05:32] Speaker 04:
Capability is not in this claim.

[01:05:34] Speaker 04:
I will note, by the way, that if you look at their expert's testimony on equivalents, his conclusion is that the device is capable of performing the alleged equivalent.

[01:05:45] Speaker 04:
It's not actually performing the alleged equivalent.

[01:05:48] Speaker 04:
Finally, just keep in mind that and this is very important for purposes.

[01:05:52] Speaker 01:
You can't have that many finalists.

[01:05:54] Speaker 04:
It's all on the damages point.

[01:05:56] Speaker 04:
With regard to Niazi, these are method claims and method claims only.

[01:06:00] Speaker 04:
They're only infringed by practicing the method.

[01:06:03] Speaker 01:
Thank you.

[01:06:03] Speaker 01:
Thank you.

[01:06:04] Speaker 01:
Thanks to all counsel cases submitted.