Trade Commission
Oral Argument — 04/07/2021 · Case 20-1475 · 38:23
0:00
Judge Lourie
The United States Court of Appeals for the Federal Circuit is now open and in session.
0:04
God save the United States and its Honorable Court.
0:12
Judge Newman
Good morning.
0:13
The first argued case this morning is number 201475,
0:18
Bio-Rad Laboratories against the International Trade Commission.
0:22
Mr. Cannon, please proceed.
0:25
Appellant Attorney (Nicholas P. Groombridge)
May it please the Court, Brian Cannon for Bio-Rad.
0:30
Your Honors, this case involved three patents owned by Bio-Rad,
0:35
all directed to precisely engineered devices performing microfluidic-sized droplets in a background fluid.
0:42
These devices are sometimes called chips.
0:46
They have wells and tiny channels, and these channels are about the size of a human hair.
0:51
And the idea of these patents is you put fluid under pressure to create tiny aqueous droplets in oil.
0:58
And these droplets are tremendously useful in a variety of applications.
1:04
What Bio-Rad perfected in these three patents
1:07
was a very high-tech, high-tech, high-tech, high-tech, high-tech, high-tech, high-tech, high-tech, high-tech, high-tech.
1:07
The first is making uniform and consistent droplets on the chips at issue from the ITC investigation below.
1:15
And these are imported and sold by 10X.
1:18
The first are commercial chips that the ITC found to be infringed,
1:24
and they are not the subject of Bio-Rad's appeal.
1:27
The second set of chips are chips that 10X uses internally to make droplets as part of its manufacturing process.
1:35
And these chips, these are the ones that are the subject of Bio-Rad's appeal.
1:38
They are called the chips.
1:39
And even though the ITC found 10X's commercial chips infringed,
1:46
it found no infringement for the chip GB.
1:48
And Bio-Rad contends this was error, an error of law.
1:52
To get directly to the issue,
1:59
Judge Newman
is the question, does everything come down to the definition of sample?
2:05
Is it all sorts of complicated issues that are mentioned by all parties in their briefs,
2:13
but we should be focusing on?
2:17
Appellant Attorney (Nicholas P. Groombridge)
Yes, Your Honor.
2:18
Exactly.
2:19
And the issue is the definition of sample, because these patents, or this patent is a single patent,
2:25
the 664 patent, it requires a sample well, one of the channels to carry sample-containing fluid.
2:33
And it's this sample-containing fluid that becomes the droplet in the background oil.
2:37
And the parties below had an agreed-upon claim construction for sample,
2:43
and it's very straightforward, and the claim construction is, for sample, a compound composition,
2:50
and or mixture of interest from any suitable source.
2:54
And that can be found at Appendix Site 704, which is the claim construction order.
2:58
And that is a very deliberately broad definition of sample.
3:04
It just has to be basically anything of interest from any suitable source.
3:08
And that is to contrast it with the background fluid, which is the oil in which the droplets are formed.
3:13
Unknown Speaker
And the theory is that it's not a sample of interest, because it's not going to be analog.
3:21
Right?
3:22
Appellant Attorney (Nicholas P. Groombridge)
Well, what the ITC found, what the ALJ found, which was...
3:26
Unknown Speaker
That's what the ITC found, right?
3:30
Appellant Attorney (Nicholas P. Groombridge)
Yes.
3:30
The ITC found, because the fluid used in 10x's manufacturing process was not of interest to an end-user customer
3:39
and was not a biological sample, it was therefore not a sample for purposes of this patent.
3:45
However, the claim construction does not require the sample to be of interest to an end-user customer.
3:52
The end-user customer can use the customer doing an experiment in the biological lab.
3:55
The patent is broader than that, and the claim construction is broader than that.
4:00
And, in fact, the specification is broader than that as well.
4:03
So I think Your Honor has nailed the exact issue, which is the ITC imported into the claim construction,
4:10
into the claims, a requirement that a sample be of interest, not just generally of interest,
4:17
but of interest to a specific person, the end-user customer in a biological sciences lab.
4:22
Unknown Speaker
And I think you have a hard time saying that the claim construction is definitive because it's not entirely clear.
4:31
And so what we have is a situation in which the ITC has sort of interpreted its own claim construction
4:41
to require that the sample be of interest for purposes of analysis.
4:47
And the question is whether that's correct or not correct.
4:53
In the light of the patent and the specification.
4:56
Appellant Attorney (Nicholas P. Groombridge)
I agree in part with that, but I also disagree respectfully,
5:02
because the claim construction requires the sample material to be of interest.
5:08
It doesn't specify of interest to whom or in what context.
5:12
As long as that aqueous fluid is the material of interest to contrast with the background fluid,
5:18
because, remember, it's the aqueous fluid that forms the droplets,
5:21
and it's the background fluid, the oil, that just serves as the background fluid.
5:25
That's not of interest.
5:27
It's the immiscible fluid that is contrasted with the aqueous.
5:34
The concept in these patents is you have two different types of fluids going through these channels.
5:39
One is aqueous.
5:40
One is oil.
5:41
And so through the intersection of the channels, droplets of aqueous fluid are formed.
5:48
And the sample fluid is the aqueous fluid, and it just has to be of interest.
5:53
So I would say that of interest doesn't specify of interest to whom.
5:57
It just has to be the subject matter of what's getting run, what becomes the droplet.
6:03
But to get to your second point, if you do actually look at the specification,
6:07
because the claim construction is derived directly from the specification,
6:12
that's Appendix Site 454, which is the 6-4 patent.
6:16
It comes from Column 8, Lines 36 to 38.
6:20
Based upon claim construction, it is simply the word sample is defined in the specification.
6:28
And the examples that are given are tremendous.
6:31
It's obviously broad of what constitutes a sample.
6:33
And I would argue that even though the examples in the specification are not limiting,
6:39
the examples of what a sample could be,
6:43
or the term of the sample is supposed to be, can be anything.
6:50
It can be components, samples.
6:54
There's all kinds of material, including biological material, that could be the sample.
7:00
Judge Dyk
Well, now, Column 8.
7:03
Judge Laurie, have you ever found a case
7:06
where a claim has been interpreted or found infringed or not
7:10
because of the words of interest?
7:13
It usually isn't part of the interpretation of claims of interest.
7:24
Are there any cases construing of interest?
7:27
Appellant Attorney (Nicholas P. Groombridge)
To have a case that focuses on that interest is not so much,
7:37
it's partly of who's interested in this material,
7:41
but it's also to contrast the fluid that's in the droplets
7:45
with the fluid that is in the process.
7:47
It's the background, the oil fluid that actually creates the droplets.
7:50
So we don't have a case that says, here is what of interest means.
7:54
But I think if you look at this claim and you look at the patent,
7:58
it's directed towards creating these droplets within a background fluid
8:03
and doesn't specify who actually has to be interested in the sample.
8:08
Someone has to be interested in it.
8:10
And in this case, 10X, as the manufacturer using these chips,
8:14
10X is extremely interested
8:17
in the sample in the monomers solution that goes into these chips.
8:20
The end-user customer may or may not be interested,
8:23
but 10X, as the manufacturer of these droplets for its own internal purposes,
8:28
is extremely interested.
8:29
And as we laid out in the brief,
8:31
10X does extensive quality control on the material that goes into these droplets.
8:36
And it's of great interest to 10X out of the monomers solution.
8:40
Unknown Speaker
What about column 14 of the patent,
8:44
which defines sample-containing as meaning the sample material to be analyzed?
8:54
Doesn't that suggest that the sample is to be analyzed for purposes of determining its content,
9:04
not as simply as a part of overall quality control?
9:10
Appellant Attorney (Nicholas P. Groombridge)
Well, that is certainly one example of a sample-containing droplet.
9:13
And it is true that when scientists in labs,
9:17
use these droplets,
9:18
one of the applications is to analyze and analyte,
9:21
such as a cell or a sequence of DNA.
9:24
Unknown Speaker
Isn't this part of the specification inconsistent with the argument you're making?
9:29
Appellant Attorney (Nicholas P. Groombridge)
I don't believe so, Your Honor.
9:30
I think this is one example of a sample that could be used.
9:35
Certainly a sample could be of interest to a scientist,
9:37
and certainly could be analyzed.
9:39
The claim construction is not...
9:41
Unknown Speaker
What's described here is not what you're talking about, right?
9:44
If you took this as a sample,
9:47
the definition of what a sample was,
9:49
you would lose, right?
9:50
Appellant Attorney (Nicholas P. Groombridge)
I don't believe that we would lose
9:53
if this example is the definition of sample,
9:57
but actually it's not.
10:00
Unknown Speaker
Why not?
10:05
Appellant Attorney (Nicholas P. Groombridge)
Because this example is directed towards analyzing,
10:09
and I'm looking at column 14, lines 45 to 46,
10:13
contains sample material to be analyzed
10:16
for the presence of one or more target molecules.
10:18
And that is not what is being done
10:21
with these chip GBs.
10:22
If the definition of sample was to look for
10:25
one or more target molecules to be analyzed,
10:28
that is not the application that's being done here with these chips.
10:34
Your Honor, my time has expired.
10:36
Was there anything else that you wish to ask me about this?
10:38
Judge Newman
Let's see if we've completed the exploration,
10:42
especially the point that you were just making,
10:45
just to make clear that we understand what the issues are.
10:52
You're telling us that using the word sample
10:55
at that point in column 14 was discussing,
11:01
I'll say discussing the use of the chips,
11:05
or a use, not limiting the overall structure and design.
11:13
Appellant Attorney (Nicholas P. Groombridge)
That's exactly correct, Your Honor.
11:19
Judge Newman
Any questions, any more questions at this point for Mr. Cannon?
11:22
Judge Dyk
No.
11:24
Judge Newman
Okay.
11:25
Mr. Groombridge, are you next?
11:28
Appellee Attorney (Brian C. Cannon)
I am.
11:29
Your Honor.
11:29
Judge Newman
Okay.
11:30
Please proceed.
11:32
Appellee Attorney (Brian C. Cannon)
Thank you.
11:33
This is Nicholas Groombridge for 10X.
11:36
May it please the Court.
11:37
I'd like to pick up with the discussion of the chip GB
11:42
and the claim construction issue here.
11:45
And we do agree with Your Honor Judge Newman
11:51
that this does come down to the definition of sample,
11:55
and it also implicates what is of interest
11:59
and what it does mean.
12:00
And we also agree with what Judge Dyke said,
12:05
pointing to column 14, lines 43 to 50.
12:09
That's an instance of the use of sample,
12:12
and it certainly in that text appears to be definitional.
12:15
But the entire set of definitions that appear at columns 9 through 13
12:23
make clear in this case that the sample is something to be analyzed,
12:28
that it may or may not contain an analyte,
12:31
which is something one is looking for,
12:32
for example, a pathogen molecule,
12:36
and that a reagent is something different.
12:40
And the term sample is carefully constructed here
12:45
quite elaborately to be the thing that is to be analyzed.
12:49
And in that context, then, the chip GB is not used in such a fashion
12:56
that it has no sample.
12:59
Well, because it's not being used to analyze a sample,
13:01
it doesn't have the other features that are defined in the patent
13:04
by reference to the term sample.
13:06
Judge Newman
But is there a distinction in the claim
13:09
that it must be on the sample?
13:15
Appellee Attorney (Brian C. Cannon)
I think, Your Honor, that what's in the claim
13:19
is the use of the word sample.
13:20
The patentee here chose to define the architecture
13:25
by reference, the features here,
13:27
by reference to what would be in them.
13:28
That, therefore, leads us to what is a sample,
13:32
and the patent is crystal clear that a sample
13:34
is something that's going to be analyzed.
13:36
And under that reading can be no infringement
13:42
because this chip isn't used with samples.
13:44
And so we don't think that it implicates a question of intent
13:54
to Judge Laurie's question here.
13:56
I think that it's more the objective facts
13:59
of what it's actually used for.
14:02
But, I mean, there certainly are some issues
14:04
around the decision by the patent drafter here
14:09
to define features by reference to what would be in them.
14:16
And so that really sets out our position
14:18
as far as the ChipGB is concerned.
14:21
I would just say that we disagree to the claim construct
14:29
that we certainly disagree that the Commission read in
14:34
either a requirement that something be of interest
14:37
to an end user or that it be by law.
14:39
I merely cited those as examples.
14:42
I don't have a testimony.
14:43
In applying the claim construction,
14:45
it reached the second stage of what we did.
14:51
Unknown Speaker
Nothing wrong in any event with the Commission
14:55
elaborating on a claim construction
14:56
when it addresses infringement, right?
15:00
Appellee Attorney (Brian C. Cannon)
Absolutely, Judge Dyke.
15:03
And to your honest point,
15:05
we do think that this is one of those situations
15:08
where there's an express definition
15:10
which the parties all agreed to,
15:12
which includes the language of interest.
15:14
We then got to the point of, well,
15:16
what exactly does that mean?
15:18
And I think it's not wrong to say
15:19
the ITC interpreted its own claim construction,
15:22
but it did that entirely correctly
15:24
by reference to these portions of the specification
15:26
that are definitional and said,
15:29
the specification tells us what exposes it.
15:43
I would, unless the court has further questions on this issue,
15:47
I would like to move on to 10X's appeal,
15:52
the proper construction droplet generation region here.
16:03
Specifically, I'd like to address, first of all,
16:06
the construction, as we see,
16:08
in terms of what we think was wrong
16:11
in pure claim construction,
16:13
and secondly, the issue around
16:14
and not considered here.
16:20
So, with respect to the construction
16:25
of droplet generation region,
16:27
I think, first of all,
16:28
I would like to touch on waiver,
16:31
simply because it has been asserted very vigorously
16:34
by both Bio-Rad and the Commission
16:36
that there was a waiver here,
16:38
and we disagree with that.
16:40
And I think it might delay out what happened.
16:46
The construction that 10X is advocating in this court
16:50
is the same construction that it advocated
16:52
before the Commission,
16:53
and that construction never changed.
16:55
That construction was set out originally
16:57
in the joint claim chart.
16:58
It was then incorporated in 10X's briefing on claim.
17:03
It was the subject of,
17:04
after the initial determination,
17:06
it was the subject of a remit here.
17:12
It's based on a sentence,
17:15
the conclusion of one,
17:18
and the arguments that are now presented to this court
17:20
based on a sentence in 10X's report,
17:22
in this brief at Appendix 1088.
17:26
But if we look just seven pages earlier
17:29
in that same section of the brief,
17:30
the proposed construction is laid out there.
17:32
It's the construction that has never changed.
17:34
And that is what we are advocating,
17:36
and thus we, in our view,
17:38
there was never any departure from that,
17:41
and thus these issues of waiver simply don't arise.
17:45
And with respect to that,
17:47
the construction that we advocate,
17:50
based on the fact that these patents
17:54
define by virtue of what is in them,
17:59
talking about samples that are defined,
18:02
about features that are defined as sample-containing,
18:05
in our view,
18:07
what that means in view of the specifications
18:09
is the channel,
18:12
the sample channel,
18:14
the sample-containing channel
18:15
that arrives at the intersection,
18:17
droplets are to be formed,
18:21
is defined as a channel that is conveying fluid,
18:24
and it's the same.
18:28
Unknown Speaker
So it's a theory here
18:30
that because the sample has been encapsulated
18:33
by the time,
18:35
and it reaches the oil channel,
18:37
that it doesn't comply with the limitation.
18:42
Is that the idea?
18:43
The theory, Your Honor,
18:44
Appellee Attorney (Brian C. Cannon)
is that what reaches the point it was generated
18:49
is the different fluid,
18:50
because it has been merged with a second fluid.
18:53
So what is arriving there is not...
18:58
Unknown Speaker
This is a comprising claim,
18:59
so what's wrong with that?
19:01
What's wrong with the fact that there's a second fluid?
19:04
Appellee Attorney (Brian C. Cannon)
It's a comprising claim,
19:06
but that doesn't mean that the term
19:08
sample-containing can be redefined.
19:13
Judge Newman
You're saying it doesn't contain any of the analyte?
19:19
You say it's a different fluid?
19:22
Appellee Attorney (Brian C. Cannon)
It's a different fluid, Your Honor,
19:23
because what has happened in the design that 10X has,
19:27
it is very carefully engineered to mix two aqueous phases
19:34
prior to their arriving
19:37
at the point at which droplets
19:39
are generated,
19:39
and the reason for that...
19:41
Judge Newman
But does it contain any of the material to be analyzed?
19:45
Appellee Attorney (Brian C. Cannon)
It certainly does contain the material to be analyzed,
19:50
and what has happened there is that material...
19:53
Judge Newman
But why isn't it...
19:55
Appellee Attorney (Brian C. Cannon)
Why isn't it sample-containing?
19:57
Because in our view, Your Honor,
19:58
the term sample-containing in these patents
20:00
is defined to mean that which is in the sample well,
20:04
and it certainly could be mixed with other reagents
20:09
before it's put in there,
20:10
into the sample well.
20:11
But these patents are not talking about any system
20:14
in which, on the chip,
20:17
after the sample-containing material leaves the well,
20:19
it is admixed further before it reaches the channel,
20:23
the intersection at which the droplets are generated.
20:26
Judge Newman
Well, then it doesn't matter, you say?
20:29
Appellee Attorney (Brian C. Cannon)
Well, I think we say it does matter
20:32
because the claim terms that define the sample-containing
20:35
and a fair reading of the patents
20:37
is that that's what is the material
20:39
that's in the sample well,
20:41
and so that what arrives at the intersection
20:45
must be the same material that left the sample well,
20:49
and in our case, it is not.
20:51
Judge Newman
Well, but you see what the trouble is.
20:54
Here, apparently, the same procedures are being conducted
20:59
as are taught in the patent,
21:02
but we have this word sample,
21:04
and we're doing this very elaborate,
21:07
or whatever,
21:09
definition of sample in the specification.
21:18
Can you put that back on track?
21:21
Appellee Attorney (Brian C. Cannon)
I will certainly try, Your Honor,
21:25
that what we're focusing on
21:30
is what is the meaning of sample
21:32
and sample-containing in these.
21:34
And in our view,
21:36
and what was decided below,
21:38
was that it can be admixed
21:39
because sample-containing does not exclude that.
21:45
We think that that's inconsistent
21:47
with the way the term is used,
21:49
and perhaps in terms of,
21:53
and I'm not sure that this is in the briefing,
21:55
but the only place in that we find
21:59
in any of these patents
22:00
that refers to such an admixture
22:02
is in the 160 patent,
22:04
not at issue in this appeal.
22:06
In the claim 73,
22:11
it talks about such a mixture,
22:13
but it uses a different term.
22:15
It doesn't call it sample-containing fluid.
22:18
It calls it sample reagent.
22:19
In our view, that's indicative of the fact here
22:24
that the,
22:25
what the patents are talking about
22:27
when they reference sample-containing fluid,
22:30
the material that left the sample well.
22:35
It can be admixed with other things
22:37
before it's put in the sample well,
22:39
but it can't be admixed on the chip.
22:42
Unknown Speaker
But why isn't it a sample-containing fluid
22:44
even if it's mixed with something else?
22:46
I'm not quite following that.
22:49
Appellee Attorney (Brian C. Cannon)
Your Honor,
22:50
because the only disclosure in these patents
22:52
and the use of the term sample-containing
22:57
is saying that's what's in the sample well.
23:01
That, for example,
23:02
the very language at column 14, lines 43 to 50,
23:06
we think a fair reading of that
23:08
is that you can put other reagents.
23:11
For example, you could put PCR primers
23:13
and enzymes and such like with the sample
23:15
and then put it in the sample well.
23:18
That liquid which is in the sample well
23:20
is certainly sample-containing
23:22
even though it has had other things added to it.
23:24
What the patents are not allowing here
23:26
is admixture on the chip
23:28
so that when the liquid leaves the sample well,
23:31
it's admixed with something before it arrives
23:33
at the point at which droplets are generated.
23:35
Judge Newman
You say the patents are not allowing that?
23:37
Perhaps I didn't read them carefully enough.
23:39
Is that explicitly prohibited in the specification?
23:44
Appellee Attorney (Brian C. Cannon)
I think it's...
23:46
My time is up, Your Honor.
23:48
Judge Newman
Please respond.
23:50
Appellee Attorney (Brian C. Cannon)
Certainly continue.
23:51
The...
23:54
It's not...
23:54
There's no words that I could point to that say
23:56
we hereby exclude this,
23:58
but I think that the usage
24:00
of the term sample and sample-containing
24:03
are invariably described with respect to
24:05
the material that was put into the sample well
24:08
and that the physical features are described
24:11
by reference to what's in them.
24:13
Judge Newman
Must be pure analyte with...
24:18
Appellee Attorney (Brian C. Cannon)
Not pure analytes, not in the least,
24:21
but it must be what was placed in the sample well.
24:24
That could include other things,
24:26
but what it's not allowing,
24:27
because this isn't disclosed
24:29
or described or enabled
24:30
and it's not how the terms are used,
24:31
is an architecture in which admixture
24:35
takes place on the chip.
24:37
That is not something that was the subject
24:39
of these patents.
24:42
But I will...
24:43
My time having run out,
24:45
unless there are other questions...
24:47
Unknown Speaker
I have one more question, Mr. Crombridge,
24:48
before you sit down,
24:49
and that has to do with inducement
24:50
and contributory infringement.
24:53
If we were to reject your position
24:57
on contributory infringement,
24:58
does it make any difference
25:00
whether you're right about induced infringement?
25:07
Appellee Attorney (Brian C. Cannon)
I'm thinking about that.
25:09
I think, Your Honor,
25:10
I mean, there is an intent requirement
25:12
for both induced infringement
25:15
and contributory infringement,
25:16
and it is under the commal.
25:22
Certainly, there is an intent requirement.
25:25
Whether the intent requirement is the same
25:28
may be something of a vexed question, but...
25:30
Unknown Speaker
That's not really my question.
25:32
My question is,
25:33
suppose we say you're...
25:35
right on induced,
25:37
but wrong on contributory,
25:38
does it make any difference
25:40
that you were right on induced?
25:44
Appellee Attorney (Brian C. Cannon)
I think it might, Your Honor.
25:46
I'd have to sort of tease that through,
25:48
but because we're dealing with importation
25:51
and what happens with the things
25:52
after they're imported
25:52
and how they might subsequently be used,
25:54
I think it might.
25:57
Okay.
25:58
Judge Newman
Okay, all right.
25:59
Now you have some rebuttal time saved.
26:01
All right, let's hear from the Commission.
26:03
Mr. Trout.
26:07
Judge Lourie
Thank you, Your Honor.
26:09
Unknown Speaker
Could I start?
26:11
Just before you get on to other things,
26:13
could you just answer that same question
26:15
if we hold that the Commission
26:17
was right on contributory infringement
26:20
but wrong on induced infringement,
26:21
does it make any difference?
26:24
Judge Lourie
Did you ask that question the same way before?
26:28
I thought before you asked
26:30
if they were right on induced
26:31
but wrong on contrib.
26:35
So if the Commission is wrong
26:43
on contrib, then it wouldn't make any difference.
26:47
No, no, right on contrib.
26:50
If the Commission is right on contrib,
26:54
then it would be right on induced as well.
26:59
Unknown Speaker
No, no, that's not the question I'm asking.
27:01
I'm asking in terms of practical effect.
27:04
Judge Lourie
A practical, no,
27:06
there wouldn't be a practical effect difference, no.
27:09
Unknown Speaker
Okay, thank you.
27:10
Judge Lourie
There would still be a violation of Section 337.
27:14
Unknown Speaker
Okay.
27:14
Judge Lourie
So I was going to start with a BioRaz appeal
27:21
and the issue about the sample
27:24
unless the court would like me to proceed otherwise.
27:27
Judge Newman
Well, no need to repeat
27:28
the arguments we've already heard.
27:31
Is there anything new you would like to tell us
27:35
from the Commission's viewpoint?
27:40
Judge Lourie
Well, I think just to elaborate
27:43
on the infringement theory here,
27:48
the, it's not an intended,
27:52
the claims don't cover an intended use.
27:54
I think that BioRaz alleged
27:57
there's some inputs on the chips,
28:00
but it wasn't clear that,
28:02
but to confirm that the input is actually a sample well
28:09
as opposed to some other kind of well,
28:10
they relied on the use of it
28:14
to confirm that structure.
28:16
Judge Newman
Well, if they don't cover intended use,
28:19
then why does it matter
28:20
what the composition of the sample is?
28:26
Judge Lourie
Because a sample well is a particular structure, right?
28:32
It's not just any well.
28:34
The chip GB is a very different device.
28:38
Judge Newman
But it's not disputed, is it,
28:41
that the structures are identical?
28:44
I gather that the dispute was
28:47
what was contained in the structure.
28:49
Is that incorrect?
28:51
Judge Lourie
So the, it is...
28:59
Unknown Speaker
Your position is it doesn't make any difference
29:02
that the sample is mixed with something else.
29:06
Judge Lourie
Well, that was, that's the,
29:08
well, that's the,
29:09
the infringement theory was that the sample,
29:17
the monomer solution confirmed that it was a sample well.
29:22
So, but the problem that BioRaz has
29:25
is the monomer solution isn't a sample
29:27
in the context of the claims, right?
29:28
The monomer solution is an input
29:32
for a reagent production process.
29:34
And that's what the ALJ found.
29:37
It's not a, not a sample.
29:39
And that finding is supported by substantial evidence.
29:42
But Dr. Hinson and Santiago testified to that.
29:46
Dr. Hinson testified that a sample
29:49
is something that the customer cares about
29:50
and can and wants to analyze.
29:53
He said there's no value in analyzing the molecule.
29:57
The, the definition of,
30:02
of, of sample,
30:04
it includes terms like of context,
30:07
but, or of, of interest.
30:09
But that needs to be construed in,
30:10
and that needs to be applied in the context.
30:14
In the, in the patent,
30:15
that's about figuring out what or how much of an analyte
30:17
is in a, is in the sample using the chip.
30:22
Are there any other questions about
30:32
the sample aspect of the, of the appeal?
30:37
Judge Newman
Anything else?
30:38
Anything new that you need to tell us?
30:41
Judge Lourie
No.
30:43
Oh.
30:43
No?
30:46
Judge Newman
Okay.
30:46
All right.
30:47
Thank you, Mr. Traub.
30:54
Judge Lourie
Is there, I was just asking you about the
30:57
about BI-RADS appeal.
30:59
I do have something to add as far as
31:00
the droplet generation region construction
31:03
that, that was discussed.
31:06
So, the, the ALJ explicitly found
31:09
the construction here to be waived.
31:12
It, it was an independent reason
31:13
presented for rejecting its construction.
31:17
And when, whenever a tenant
31:19
has petitioned the waiver finding
31:21
to the, the commission,
31:23
it needed to show that the,
31:25
that the ALJ made a mistake.
31:29
And it didn't because it,
31:30
they didn't show that the,
31:34
it didn't show that there was an error
31:37
in the waiver finding.
31:38
It doesn't raise any,
31:40
it doesn't contend any error
31:42
with the waiver finding
31:43
until its reply brief here.
31:46
And as the court pointed out before,
31:49
there's just no,
31:51
there's no basis in the claim language
31:54
at all to support its construction.
31:56
They're relying on examples of specification,
31:59
but they, but you can't import limitations
32:04
from the specification into the claims.
32:06
And the, the specification, in fact,
32:09
allows the channels to be branched
32:11
or to have more than one inlet.
32:12
And that's all I needed,
32:15
that's all I wanted to add for that issue.
32:18
So, if there are any other questions,
32:21
there are any other questions.
32:22
Judge Newman
Any more questions for Mr. Traub?
32:24
Judge Dyk
No.
32:25
Judge Lourie
No.
32:26
Judge Newman
Okay.
32:27
Thank you.
32:28
Then we'll,
32:29
we'll hear rebuttal from Mr. Cannon.
32:31
Now, yes.
32:47
Appellant Attorney (Nicholas P. Groombridge)
I apologize.
32:49
I wanted to start off with the question
32:51
that was raised earlier about contributory
32:54
and induced infringement.
32:57
And BI-RAD agrees with the ITC
32:59
that there is,
33:00
there will be no difference to the outcome.
33:02
There would still be a violation
33:03
of Section 337,
33:05
an infringement,
33:07
even if,
33:08
if the ITC was wrong on inducement,
33:12
but correct on contributory infringement.
33:15
And I also wanted to add
33:18
to Mr. Traub's argument
33:20
from the ITC about waiver,
33:22
because if we look at what the ALJ actually did
33:26
and what the ALJ actually found,
33:28
and that is,
33:30
that is on Appendix Site 692,
33:34
the ALJ specifically found
33:36
that 10X had waived
33:39
its claim construction position
33:41
on droplet generation region.
33:43
And in fact,
33:43
the ALJ said,
33:45
called it a,
33:46
quote,
33:46
sudden departure from its position
33:48
in the joint claim construction chart.
33:50
And then further on Appendix Site 693,
33:53
the ALJ said,
33:56
quote,
33:57
problem with respondent's new,
33:59
quote,
33:59
extending from construction
34:01
is that it deviates significantly
34:03
from the construction it set forth
34:05
in the joint claim construction chart.
34:07
For this reason alone,
34:09
due to ground rule 1.1,
34:12
respondent's new construction is waived.
34:14
And that is the construction
34:16
of droplet generation region.
34:17
And it was incumbent upon 10X at that point
34:20
to appeal that waiver decision
34:22
to the commission.
34:23
It did not do so.
34:25
And it was also incumbent upon 10X
34:27
to appeal that waiver decision
34:28
to this court,
34:29
which it did not do so.
34:32
Position is,
34:33
as the ITC presented in its argument,
34:36
it should have been,
34:41
even on the merits of droplet generation region,
34:43
I believe Your Honor has analyzed this very,
34:46
very well in the question.
34:50
Droplet generation region
34:51
is simply the intersection of two channels
34:54
with a third channel as an outlet channel.
34:57
One of the channels have sample-containing fluid.
35:01
And there is no dispute
35:03
that the fluid that reaches the intersection
35:05
is sample-containing fluid
35:06
in terms of a contained sample
35:10
and it's a comprising claim.
35:12
So even on the merits,
35:14
should this construction be reached,
35:16
10X is incorrect
35:17
and is trying to import limitations
35:19
into this.
35:23
And then I would like to briefly address
35:24
the indirect infringement issue.
35:27
And Your Honor,
35:28
unlike the cases cited by 10X in its brief,
35:34
here we actually had a trial
35:35
on knowledge and intent.
35:37
And the ALJ specifically took testimony
35:39
and found it not credible from 10X
35:42
about its knowledge and intent position.
35:44
And the ALJ made very detailed findings
35:47
in the ID,
35:48
which was affirmed by the ITC,
35:50
explaining why the testimony
35:52
was not credible.
35:54
So it's very much like the Warsaw case.
35:58
I believe Judge Dyck in 2016
36:01
affirmed a jury verdict.
36:04
So here we actually had a trial
36:06
on the knowledge and intent portions
36:08
for indirect infringement.
36:10
Unless Your Honors have any further questions
36:14
on this issue,
36:15
that summarizes Bayrat's position
36:17
on 10X's appeal.
36:19
Judge Newman
Okay, anything else for Mr. Cannon?
36:22
Appellant Attorney (Nicholas P. Groombridge)
No, no.
36:23
Judge Newman
Okay, thank you.
36:25
And Mr. Groombridge,
36:26
do you have some rebuttal
36:27
on your cross-appeal?
36:29
Appellee Attorney (Brian C. Cannon)
Thank you very much, Your Honor.
36:30
I really just want to follow up
36:33
on the inducement
36:34
and contributory infringement point.
36:37
And to be clear,
36:39
perhaps further responding
36:41
to Judge Dyck's question
36:42
and to what Mr. Trode
36:43
and Mr. Cannon said,
36:44
certainly if the court were to reverse
36:49
on inducement and contributory infringement,
36:51
it would still be a violation.
36:52
The practical effect that I had in mind
36:54
is that that may,
36:55
given that there are these designer rounds,
37:00
it may impact how easy
37:03
or difficult it is
37:04
to continue importing chips
37:05
under procedures,
37:07
for example, with a certification
37:08
or some kind of proceeding
37:10
to modify the exclusion order.
37:13
And if that is my time up,
37:15
I'm happy to stop.
37:16
Otherwise, I can just respond
37:18
to what Mr. Cannon said.
37:20
Take another minute or so
37:25
Judge Newman
to make sure we have
37:27
the cross-appeal straight.
37:28
Yes.
37:29
Appellee Attorney (Brian C. Cannon)
And on the question
37:30
of the factual findings,
37:32
we are not challenging
37:33
any factual findings
37:34
regarding the credibility
37:36
of Dr. Hindson.
37:38
The point there is
37:39
that those really don't relate
37:41
to the subject matter
37:43
of these patents.
37:44
And that isn't what's in there
38:00
for that factual finding
38:01
simply doesn't bear on the question
38:03
of whether
38:03
state of mind.
38:12
Judge Newman
Questions for any of the counsel?
38:14
Appellee Attorney (Brian C. Cannon)
No.
38:15
No.
38:16
Judge Newman
Thanks to all three of you.
38:19
The case is taken understanding.
38:21
Thank you for your submission.