Legal Case Summary

We have four cases on the calendar this morning, a patent case from District Court, three government employee cases, which will be have been submitted on the briefs and will therefore not be argued. And so we'll hear one case. PraxAir versus ATMI and Advanced Technology Materials Inc. 2007, 14, 18, 3, 15, 09, Mr. Hartman. Yes, thank you. Thank you. I'd like to mention that we consider the cross appeal to be additional arguments to achieve essentially the same results. And so you're free to make all the arguments you wish. We'll tell you now in advance so you can thought about it, but there will not be a fourth argument

. Thank you. Please proceed. Good morning and may it please the Court. I'm Chris Harnett representing PraxAir here today. In accordance with your statements about the timing and during the configuration of the issues that are presented on appeal and cross appeal, unless the Court would like me to proceed differently. I would propose to divide PraxAir's time equally. In the first instance, I would like to address the three issues that PraxAir raised on its appeal with the permission of the Court. I don't want to get too technical, but let me point out that your second argument is a response to him. Not to raise other issues that you didn't raise before

. Understood. Yes, second. Okay, fine. Understood. So with the permission of the Court, I would begin by discussing the district court's inequitable conduct ruling. I'll then proceed to address the district court, spinding that the port body claim limitation was somehow indefinite. And then I will briefly address the injunction issue. And in my second argument, I'll reserve on PraxAir's for rebutting the ATMI's argument and to address the issues that that ATMI raised in its cross appeal. So the cross appeal is not proper as the problem

. And under our decisions infringement is not a ground for cross appeal where there's been a holding of an invillody or an equitable conduct and an alternative ground for invillody. Isn't a ground for a cross appeal. That's the problem. Understood. That it, I personally, should more properly address the issues raised in their briefs and on their appeal. Which I will do. Starting with the inequitable conduct ruling, we would respectfully submit that the district court's ruling is the product of several clear errors. There's no evidence of intent to deceive the patent office on the record. And there is no evidence from which intent can be inferred

. Is there a difference between the two patents that struck me in your second brief that you pointed out that these four statements that the district court relied on were made only in the prosecution of the 115 patent and not the 609 patent. If I understand correctly. There are differences in the patents only to the extent that there are, of course, differences in the claim. But it is my statement. I accurate that the four statements that the district court relied on in your view were only made in the prosecution of the 115 patent. Historically, that is the correct fact. Yes. And the reason we raised it in our briefs is it certainly was it was combined in ATIM eyes arguments suggesting that these were made in both arguments. But the fact of the matter is these were the 609 patent was issued first was prosecuted first of 115 prosecuted second

. These arguments were in the 115 only. Whether that has any impact, I would the only impact we would suggest is that if there is a case of infectious inequitable conduct, it wouldn't apply to the 609 patent. And we would respectfully submit that there's no inequitable conduct in the first instance. So infectious inequitable conduct should not even be an issue. It was more about a housekeeping matter to address the statement. I mean, neither of you wants us to divide the two. Each of you wants to win on both. But I think the point Judge Dyck's question is does this make a stronger inequitable conduct argument with respect to the 115 in which these statements were made? No, of course, both of you are going to say no to that. I suppose

. But it does seem to me that it's one thing simply not to produce something. And it's another thing to say there's nothing out there that is contrary to this. If in fact there's evidence that you know there is. And that is exactly the point on the intent argument. You're on it. There is no evidence that any of the attorney or the or the inventors had any awareness that there was material prior art that was not disclosed. The four arguments that were made during the prosecution of the 115 patent related to four features of the invention. It had to do roughly with the purpose. But suppose there was a statement that's in accurate

. It's in and there's prior art that they were aware of that that makes the statement inaccurate. That could lead to a finding of intent and the finding of an equitable conduct, right? The readily I suppose it could, but the the whole point of intent is that the inventors in the attorney have to have awareness that what there that there is something material out there that they are making arguments contrary to a simple mistake does not amount to an ethical conduct. I would submit there's not even a mistake here because what it's very critical to realize that the piece of RFO are. What you're saying is that there's no evidence that the that they knew the statements were inconsistent with the RFO prior art. And I would submit it's not even inconsistent with with what's being called the RFO prior art. The only RFO prior art that's of issue here is the Larsen article. And there is it is undisputed that Mr. Toler may the inventor and the three Mr. Toler may the attorney and the three inventors did not know about Larsen or its contents to the contrary

. All they knew about was. But I think you're making too much out of the Larsen article. Let's put that put that aside. Let's assume that that isn't the ground on which he rely. The she's saying that this RFO prior art which did restrict the flow and that that existence of that art was inconsistent with the four statements that were made. Are you saying it's not inconsistent? Why is that? Is there is there testimony to that effect? Yes, Your Honor. The testimony is by the attorney. The attorney said attorney. The prosecutor attorney testified a trial that he was his understanding of what an RFO was in general was basically that any time you had any restricted flow that in his mind is what an RFO is

. And he said I believe that art fairly disclosing that was before the office was before the office and that is absolutely true. The Tom six nine three patent discusses the inlet to the fifth flow gas passage that is provided with a suitable flow restriction device. And that your honor is what judge Robinson decided was the critical fact in finding inequival kind of she was saying for our full art the significance of it is that it provided a restriction in the flow path. So here's this testimony by the attorney which page which page I have it right here. A nine three oh four is testimony specifically said that any time there's a change in the diameter of something in a valve or any flow control device that could be a restricted a restricted flow office. And then he went on to say the references that were disclosed in all fairness could be looked at showing that nine three oh four to nine three oh five then there is the inventor testimony from inventor Martin who said that he did not believe that our foes were part of his invention. One must remember here that the that the devices of his invention for the fact that they're not part of his invention seems to me to be irrelevant the question is whether the RFO prior or it was inconsistent with the four statements that's what I was asking you. But if I have to come back to the intent element let me explain to why it wasn't inconsistent with the four statements the four statements dealt basically with portability economy restriction in the flow path. All of the prior art RFO prior art was somewhere downstream one of the key factors of this invention is that the restrictor was in the flow path and that is consistent with judge Robinson's claim construction which at my does not challenge any of this RFO art and our vote by Dr

. glue at the eyes expert says it's simply a whole to play it something very simple but that was all downstream. All the portability arguments you can pick up this thing and walk around with it because the flow restrictor is inside the tank that's very different than the prior art or the four statements restricted upstream restrictions. Well when you think of it the advantages that they were talking about it was no prior art that allowed for uncomplicated portable forest picture in the flow path and specific a florist or in the flow path that had specific dimensions of the orifice of less than two millimeters. So I would respectfully submit yes and even if they were even if this argument was technically correct the proper analysis here on is that none of these gentlemen who had a done under rule 56 thought they were being misleading thought they were correct they went in there with a pure heart which is which is why the intent element is very important here. I would respectfully submit the district court also aired in a reliance on the Bruno case and the ignorance of the amie goes case which is issued subsequently that the district court cannot see any the trouble is not seen any specific testimony and rest of the four statements where the people explain why they thought that the statements were not inconsistent with the R.O. Paul prior art that that's the problem I have. Because what what are our four prior art are we talking about is the issue in their minds the the for about in their minds what what about the test one did they it doesn't seem to me that they really address the four statements I mean if they'd address the four statements and said we didn't think the R.F.O. prior art was inconsistent with the statements that would be one thing but I don't see that they did that because they couldn't have done that you're on here's the reason why in real time when they were prosecuting the application and in real time. In real time is when you do the intent analysis in real time it never dawned on that that the R.F.O. art could be significant so in real time they would have in order to get that they could have testified that that never occurred to them that the R.F.O. prior art was inconsistent with these statements but I don't see that there is such testimony but but there's more more global testimony that they they testified that the are they a the examiner thought the R

.O. prior art was inconsistent with the statements that would be one thing but I don't see that they did that because they couldn't have done that you're on here's the reason why in real time when they were prosecuting the application and in real time. In real time is when you do the intent analysis in real time it never dawned on that that the R.F.O. art could be significant so in real time they would have in order to get that they could have testified that that never occurred to them that the R.F.O. prior art was inconsistent with these statements but I don't see that there is such testimony but but there's more more global testimony that they they testified that the are they a the examiner thought the R.F.O. art wasn't that things that like the R.F.O. art like a restrictor in the four statements that they were in the first place. The R.F.O

.F.O. art wasn't that things that like the R.F.O. art like a restrictor in the four statements that they were in the first place. The R.F.O. art was already before the examiner and to the inventor the inventor testified that you know this downstream R.F.O. was not what I considered to be part of the invention of the invention but under the court's claim construction which is not challenged requires the flow restrictor in the flow path. So but basically for the inventors to come forward 10 years after the fact would basically under under the Bruno case be asking them to make up a story because 10 years later they say it never dawned on me I don't be there's no reason I can't tell you your honor I can't tell you jury why it is that I didn't disclose it because it didn't cross my mind I can't tell you why at the time I thought these weren't inconsistent because it didn't cross my mind to impose a it it is not a it would almost lead to a duty to investigate if an inventor has some vague awareness of a component to an invention that is a multiple component device you know this isn't an invention the six or nine one one five times just directed to a flow restrictor it's a multi component device it's got Mr. Hanover other points you'd like to raise yes there are let me ask you if you're moving on to port body yeah let me ask you just this question once the difference in your view between the port body and the valve body valve body 50 is the port body minus the screw threads minus the screw threads and the port body is valve body 50 with the screw threads because if one one reads the when you say the screw threads there are two sets of screw threads are you talking about the ones at the bottom of the valve body if we look at page seven of the yellow brief it's the screw threads at the bottom which when you read the when you read the versions of the specification that describes what the port body is the port body is ceilingly engaged with the tank and I would note that 80 m I has studiously avoided addressing in any of their briefs the testimony of their expert who fully understood what these screw threads did and that they're ceilingly engaged the structure into the tank. Let me tell you what my problem is I had the same question I might judge right now but if you look at the figure in the patent there's different shading for the valve body and the screw threads right they're not they're not shaded the same way that the hash marks go in different directions right so it seems clear from that that the valve body and the port body are not the same thing. Oh they're not co extensive the valve body is labeled 50 and when you read the specification in view of figure two it what the what the port body must be it's a structure that connects the outlet of a pressurized tank and includes a path of discharge of fluid from the pressurized tank so what you have here is valve body 50 is this metal housing here the screw threads the screw threads I hold up this one it's easy to be the screw threads a ceilingly engage it with the tank and it does everything that the specification tells you what it does where it's located and what it has to have so complicated. It's not labeled port body and it doesn't have to be under section one there's no requirement that you have any figure there's no requirement that anyone has to have a reference normal what the requirement under one 12 is is that it in order for something to be a definite has to be insolubally ambiguous and unimmutable to construction

. art was already before the examiner and to the inventor the inventor testified that you know this downstream R.F.O. was not what I considered to be part of the invention of the invention but under the court's claim construction which is not challenged requires the flow restrictor in the flow path. So but basically for the inventors to come forward 10 years after the fact would basically under under the Bruno case be asking them to make up a story because 10 years later they say it never dawned on me I don't be there's no reason I can't tell you your honor I can't tell you jury why it is that I didn't disclose it because it didn't cross my mind I can't tell you why at the time I thought these weren't inconsistent because it didn't cross my mind to impose a it it is not a it would almost lead to a duty to investigate if an inventor has some vague awareness of a component to an invention that is a multiple component device you know this isn't an invention the six or nine one one five times just directed to a flow restrictor it's a multi component device it's got Mr. Hanover other points you'd like to raise yes there are let me ask you if you're moving on to port body yeah let me ask you just this question once the difference in your view between the port body and the valve body valve body 50 is the port body minus the screw threads minus the screw threads and the port body is valve body 50 with the screw threads because if one one reads the when you say the screw threads there are two sets of screw threads are you talking about the ones at the bottom of the valve body if we look at page seven of the yellow brief it's the screw threads at the bottom which when you read the when you read the versions of the specification that describes what the port body is the port body is ceilingly engaged with the tank and I would note that 80 m I has studiously avoided addressing in any of their briefs the testimony of their expert who fully understood what these screw threads did and that they're ceilingly engaged the structure into the tank. Let me tell you what my problem is I had the same question I might judge right now but if you look at the figure in the patent there's different shading for the valve body and the screw threads right they're not they're not shaded the same way that the hash marks go in different directions right so it seems clear from that that the valve body and the port body are not the same thing. Oh they're not co extensive the valve body is labeled 50 and when you read the specification in view of figure two it what the what the port body must be it's a structure that connects the outlet of a pressurized tank and includes a path of discharge of fluid from the pressurized tank so what you have here is valve body 50 is this metal housing here the screw threads the screw threads I hold up this one it's easy to be the screw threads a ceilingly engage it with the tank and it does everything that the specification tells you what it does where it's located and what it has to have so complicated. It's not labeled port body and it doesn't have to be under section one there's no requirement that you have any figure there's no requirement that anyone has to have a reference normal what the requirement under one 12 is is that it in order for something to be a definite has to be insolubally ambiguous and unimmutable to construction. When you say the threads are you talking about the entire structure that is cross hatched in a direction opposite to the rest of the valve body there's a structure at the bottom of the valve body that includes threads and some other actually two sets of threads one of which attaches to the figure 30. You're talking about the threads you just basically go to the on off valve well that's top set of threads. No I'm talking about the if you look at the bottom of what you're calling the valve body there is a structure which I thought you were just talking about with judge type that it has cross hatching that goes in the opposite direction from the orange cross hatched material immediately above it is that what you're saying is that what you're calling the threads. The thought to aspect of that is the threads and what's the rest of it what is the name of the object that is cross hatched in the opposite direction from the rest of the valve body. I'm not necessarily sure it's given a name but one of those in a different structure. It's functionally when you look at this this is a piece of metal. Is it part of the valve body? By virtue of the fact that it is the valve body is represented as 50 and I agree with you that in historical in historical terms the cross hatching says that the valve body is this thing and when this is something other than the valve body. This is something when you take the valve body and you have it sealingly and adaptive for sealing engagement with the tank that is what the skilled worker would understand is the port body. So you're saying that the port body is the valve body plus this thing at the bottom that has the cross hatching in the other direction? Yes

. When you say the threads are you talking about the entire structure that is cross hatched in a direction opposite to the rest of the valve body there's a structure at the bottom of the valve body that includes threads and some other actually two sets of threads one of which attaches to the figure 30. You're talking about the threads you just basically go to the on off valve well that's top set of threads. No I'm talking about the if you look at the bottom of what you're calling the valve body there is a structure which I thought you were just talking about with judge type that it has cross hatching that goes in the opposite direction from the orange cross hatched material immediately above it is that what you're saying is that what you're calling the threads. The thought to aspect of that is the threads and what's the rest of it what is the name of the object that is cross hatched in the opposite direction from the rest of the valve body. I'm not necessarily sure it's given a name but one of those in a different structure. It's functionally when you look at this this is a piece of metal. Is it part of the valve body? By virtue of the fact that it is the valve body is represented as 50 and I agree with you that in historical in historical terms the cross hatching says that the valve body is this thing and when this is something other than the valve body. This is something when you take the valve body and you have it sealingly and adaptive for sealing engagement with the tank that is what the skilled worker would understand is the port body. So you're saying that the port body is the valve body plus this thing at the bottom that has the cross hatching in the other direction? Yes. Absolutely and when you look at what and if you look at our page seven of our yellow brief in conjunction with the language of the specification saying what the valve body is what it's supposed to do and where it's located. It shows you that a port body is adaptive for communication that it forms the inlet it forms a gas flow path and crystal clear it can optionally house other components such as a bellos and pop it thing and if you look at figure two. It houses the bellos and pop it apparatus. This is not some this is a fairly simple mechanical structure. There's no there's no expert witness and I understand that indefinite this is a question but there's no expert witness who says that the combined combining these two features the valve body and the screw fit. Screwed the red structure is the. For what right? Well not a trial at their deficit their expert reports and depositions you cite both of our. The stuff that you said seems to me that it does not really provide any support for what you're saying in fact your expert witness in the other case was very confused about what the port body was a kipsa is what's this one thing it's another thing sometimes it's one thing sometimes it's another. Yeah there are multiple vitamins there's different ways that one a mechanical person of ordinary skill in the art would configure one of these

. Absolutely and when you look at what and if you look at our page seven of our yellow brief in conjunction with the language of the specification saying what the valve body is what it's supposed to do and where it's located. It shows you that a port body is adaptive for communication that it forms the inlet it forms a gas flow path and crystal clear it can optionally house other components such as a bellos and pop it thing and if you look at figure two. It houses the bellos and pop it apparatus. This is not some this is a fairly simple mechanical structure. There's no there's no expert witness and I understand that indefinite this is a question but there's no expert witness who says that the combined combining these two features the valve body and the screw fit. Screwed the red structure is the. For what right? Well not a trial at their deficit their expert reports and depositions you cite both of our. The stuff that you said seems to me that it does not really provide any support for what you're saying in fact your expert witness in the other case was very confused about what the port body was a kipsa is what's this one thing it's another thing sometimes it's one thing sometimes it's another. Yeah there are multiple vitamins there's different ways that one a mechanical person of ordinary skill in the art would configure one of these. But there is no clear expert testimony saying what you're saying that the court body is a combination of the valve body in this other cross hatched area with the screw threads well I was there I understand that Dr. Carvella's would have believed that was the case would have tested by that way of trial. So I was just saying that if this patent hadn't been knocked out but you're quite correct your honor it is a matter of law it is done on the intrinsic evidence and if when looked at the intrinsic evidence we have no help on this there's no support for your position. I was I respectfully disagree I think that when you look at Carvella's at Carvella's and Sherman at the very least agreed with our claim construction which would which by definition reads on. Val body 50 and the and the screw threads our proposed construction that it's a structure that connects to the outlet of a pressurized tank and includes a path of the discharge of fluid from the peturized tank would be. Val body 50 with the screw threads it fully complies with the claim language it is not a case where it is insolently ambiguous and not amenable to construction these are in terms of degree terms of physical attributes this is something you can look at and understand. And it's a simple mechanical structure ancillary to the to the the heart of the invention of the 895 patent and one thing I do want to point out the 895 patent isn't just a third patent that we're piling on the 619 or the 1.5 Pat patents here it's an important piece of Praxair technology that we think protects some very important aspects of of what Praxair is protecting here. I mean it's directed to a some unique some unique attributes where a valve stays engaged to a pressure differential is reached

. But there is no clear expert testimony saying what you're saying that the court body is a combination of the valve body in this other cross hatched area with the screw threads well I was there I understand that Dr. Carvella's would have believed that was the case would have tested by that way of trial. So I was just saying that if this patent hadn't been knocked out but you're quite correct your honor it is a matter of law it is done on the intrinsic evidence and if when looked at the intrinsic evidence we have no help on this there's no support for your position. I was I respectfully disagree I think that when you look at Carvella's at Carvella's and Sherman at the very least agreed with our claim construction which would which by definition reads on. Val body 50 and the and the screw threads our proposed construction that it's a structure that connects to the outlet of a pressurized tank and includes a path of the discharge of fluid from the peturized tank would be. Val body 50 with the screw threads it fully complies with the claim language it is not a case where it is insolently ambiguous and not amenable to construction these are in terms of degree terms of physical attributes this is something you can look at and understand. And it's a simple mechanical structure ancillary to the to the the heart of the invention of the 895 patent and one thing I do want to point out the 895 patent isn't just a third patent that we're piling on the 619 or the 1.5 Pat patents here it's an important piece of Praxair technology that we think protects some very important aspects of of what Praxair is protecting here. I mean it's directed to a some unique some unique attributes where a valve stays engaged to a pressure differential is reached. The press that that has very you know the the port body is it's a physical structure that sits on top you screw it into the top of the tank and it forms an outlet port it's something that any mechanic look at it figure to is going to figure out. I see that you're time including your but a time that we've asked a lot of questions you'll give you three minutes back okay and I'll give Mr. Powell some extra time if he needs it. Thank you. I'm going to go ahead and get the car. Please the court I'd like to begin with the inequitable conduct issue and I'd like to begin by addressing the question raised my both judges died in claim terms that are in the 609 are the same as those that were being argued in the 1.15 and the relevance and the materiality of the RFO prior art is just as relevant to the up to the 609 as it was to the 1.15. Mr

. The press that that has very you know the the port body is it's a physical structure that sits on top you screw it into the top of the tank and it forms an outlet port it's something that any mechanic look at it figure to is going to figure out. I see that you're time including your but a time that we've asked a lot of questions you'll give you three minutes back okay and I'll give Mr. Powell some extra time if he needs it. Thank you. I'm going to go ahead and get the car. Please the court I'd like to begin with the inequitable conduct issue and I'd like to begin by addressing the question raised my both judges died in claim terms that are in the 609 are the same as those that were being argued in the 1.15 and the relevance and the materiality of the RFO prior art is just as relevant to the up to the 609 as it was to the 1.15. Mr. Powell's where was where is the intent that she found she found no intent she concluded that these three people had knowledge of material prior art that it was not disclosed to the patent office and there was no explanation from all of that from that she inferred intent and I don't see any indicate. The intent you seem to be relying on Bruno which had a much different fact pattern there was a submission to the FDA certain material but not to the patent office thereby suggesting that there was a conscious distinction permitting an inference of intent where was the intent here the intent your honor and I believe I believe there's no abuse of discretion with regard to her conclusion regarding intent I believe the principal. The principal basis for that conclusion which I think are supportable our first the absence of an explanation given this materiality this court's presidents hold that where there is something that's fairly material is this clearly is and let's be clear why it's material these inventors were using the RFOs in their own devices for precisely the same purposes as the invention that they claim IE to protect themselves from hazardous gases using semiconductor industry. That's not a showing of intent to deceive it is something from which intent to deceive maybe infer and it is of course not a smoking gun document that says which we would really have the issue is I think before this court was it an abusive discretion for the court to infer intent based on the absence of an explanation where the inventor was using this prior device for precisely the same purpose with the what the problem she seemed to have been confused and because of the fact that she was using the in her opinion in a 92 she refers to these four statements that we've been focusing on is having been made in the course of the six on nine that prosecution that's incorrect right it's incorrect they were made in the course of the one she seems to have thought that the four statements infected both patents whereas if I understand what you're saying you agree that the four statements only pertinent with respect to an actable conduct on the one 15 pertinent I it's hard to know what's in judge Robinson's mind in this question I would characterize it slightly differently your honor I would say that she relied on the fact that they made the four statements which are I believe demonstrably inconsistent heavily relied upon them but not solely she also relied on the absence of an explanation which is under this court precedents a countisable basis for an inference of intent where there's materiality if there's no explanation offered at all and there wasn't one here that is a basis of this course precedents to say I may infer intent but looking at the people in front of them and I don't believe that's the intent argument with respect to the six out nine prosecution is extremely weak with respect to one one five it's obviously clearly strong based on the four statements with respect to six of nine you have perhaps a bleed over from the one one five if they're intent with the second where's the lead over if their intent was the same throughout then you really have evidence of it in one one five that you didn't have in six or nine that the solid clear evidence that I would agree with the panel is with respect to six or nine is an inference from the absence of an explanation given these inventors use of precisely these materials the RFOs for precisely the same purpose and the failure to disclose that which is quite material and which is conventionally used in the industry described as being conventionally is in its industry known by them to be used conventionally used in the industry the same industry for the same purpose yet but it's very different the RFOs are very different they're not they're not upstream they don't involve capillaries in the usual sense they don't involve it it's a different it's not the same it's not the same in many different respects with the other upstream it's in the it's often used in the tank body as the inventors it seems to me difficult to say that the RFOs are highly material to the prosecution putting aside the four statements with very with respect to our I disagree I think that the capillary issues a different issue the question that it remains is is there truly an invention in having something that restricts the flow and protects from hazardous gases that's the argument that's being made and the fact that there was something already there which does that and which is used by these inventors for that very purpose is then going to be a substantive basis for examination about whether a capillary based system is truly different in a material what maybe it isn't but the examiner should have had the right to understand that I'm sorry go ahead and and the fact to me that the materiality to me is the driver for this if in fact these inventors were using personally these devices for the same purpose and if they believe their their invention was an improvement on that and maybe an examiner would agree with them the point of inequitable conduct is they have to say what they were building upon what they were changing from and they didn't instead the the specification and the specification doesn't contain statements as egregious as the four but the entire point of the specification is this is a way to protect from hazardous gases that's new in the art and the examiner should have been told of the very technique they were using for that very purpose because then the examiner could decide whether that's an improvement and that is as materials against the thing from which the inventors were building material yes but she didn't even balance material materiality in the tent I mean that's part of the process isn't it it is certainly part of the process and she found intent I think fairly we can we can debate the language of the order but she found intent with respect to 609 from the absence of an explanation given materiality which is something this course process is not going to be a part of the process of the president's permit and she found intent as to 1 1 5 in addition to that from the fact of the four statements that are demonstrably inconsistent with the withheld RFO are you so you would distinguish the decision and emigals on what the strength of the showing of material yes and if you have and materiality plus the inventors knowledge of it and personal use of it it's one thing to have a story if the inventor if it's clear the inventor doesn't have any knowledge of the games over anyone but there's knowledge of a stray pat and sitting in a file is one thing their own personal use of that device in exactly the same context for exactly the same purpose is to me greater evidence of a materiality and intent it's not something that would slip your mind it's not something that I didn't think it was relevant it was exactly down the middle of the fairway of what they were doing and yet they didn't disclose it to give the examiner an opportunity to decide if their capillary based system was truly an improvement or an innovation and invention above the RFO which did the same thing and was used by them for the same purpose what would you say with respect to the argument that said Robinson conflated the inventors and the pracks air practitioners I think that's a red hearing she certainly cited the pracks air that's evidence just as Larsen was and she says of what was conventional in the industry what she was relying on was not saying that when she referred to the pracks air employees who had used this she wasn't saying that therefore we're attributing on her to that knowledge of the RFOs I'm sorry I don't believe so the argument was always they were aware of the conventional use of RFOs in this industry for this purpose and the pracks air evidence and the Larsen evidence and pracks air the testimony their square linking testimony in the record that says what the pracks air witness was describing and this is what judge Robinson cited in her in her opinion was just a the conventional use in the industry so it's not that this was something unique the pracks air was using that she was relying upon it was the fact that she needed she knew that the vendors knew of RFOs as far as I want to ask you about her failure to grant the injunction yes right assuming that you don't win on inequitable conduct and is a valid patent that's infringed hasn't she sort of written off the right to exclude from the patent statute simply because these are big companies and this isn't a large part of their sales it's very clear from the record from from her opinion that at mi had sales is a two company market taking away from pracks air and would continue to have sales why aren't the various requirements for an injunction met is it rep or whole harm the market will be depressed you've got all these future sales it's certainly true you're on that she mentions the size of the companies I don't think that's the primary driver of her analysis I think fairly read her analysis says that pracks air simply failed to do what eBay commands it to do and it was a failure of proof issue I don't think she's establishing a reporting to establish a new rule of law what she's saying is of course in this to competitor market it is possible that an injunction would be like which should be entered and she expressed the acknowledges that it's some of the but with a case as well what she says is is that this party just failed to do what eBay commands it to do to prove it's entitled isn't there enough proof in her very opinion showing that ATM I was having sales of the infringing product and they were increasing and therefore pracks air was the patent eat and who have had it had a valid patent that was being infringed they had a right to exclude and she simply said no I believe that an analysis would be inconsistent with eBay eBay says that you don't automatically get an injunction in a patent case merely because a patent gives you the right to exclude the question really is our money damages inadequate to compensate them for whatever damages are occurring and I think her opinion was fairly straightforward and saying it's certainly possible that such a proof could be made but this party gave them another opportunity to do it if should this court do something different than I believe it should but yes and much I think and they could come in with new factual evidence to support an injunction right that would be up to her of course but I do believe I do believe for close to she specifically said they can come back after the appeal she hasn't foreclosed that I wouldn't presume to second guess what she would do if they did come back so that to happen wouldn't we have to indicate that her criteria for denying the injunction were inadequate I believe I believe that her criteria were simply a failure of proof and if you read their their papers coming in the papers were pre eBay papers even though it was post eBay it was we get an injunction that's really the end of it there were none of the typical things you would see in a non patent case pre eBay of here's why money damages are inadequate often you would have an expert that would say it's difficult to convince customers to change once they've started there's quality of the same thing there's a lot of evidence that lawyers and parties put on to establish a reputable harm they did not do it and her point which I think is a point this court actually should reinforce not undermine is that parties do have to do that they shouldn't just come in and say here's my patent give me an injunction I believe he may change that rule and she's enforcing that rule and I think that's appropriate for her to do and I think it's appropriate for this court to reinforce that position because in fact they did nothing to establish a reputable harm what about port body on port body alright isn't port body all over the pack several indications of what's connected to the port body isn't it fairly clear what the port body is it is fairly clear from three statements what they think the port body should do and it's fairly clear where they think it's located what it isn't clear and this court's presidents are quite I think uniform on this issue you cannot describe a structural apparatus in functional terms it cannot be that you just are saying anything that I'm going to tell you more or less what it does this isn't a case with someone through in a term in a claim prosecution that that can't be found found in the patent this is clearly in the patent in several places it's it's in the it's in the summary of the invention is not in the detailed description it is not in the section which says on figure two for example this is the point judge dich made that figure two does not use the term port body to describe anything in figure two well you say it's in the summary of the invention as suggesting some reason the invention are often quite small this is just full calm this was longer you're right but it is not something where it says the port body the typical detailed description of course as we all know would say the port body number 27 the numbers missing I mean the question is is there is that any more fundamental or misleading than the omission of the number I believe it is and I think the evidence for that comes from the fact that no expert has been able to say conclusively in fact as Joe psych points out other experts are saying I can't figure this out it might be this it might be this it might be that the function of the patent is to describe clearly what a device is what are the alternatives here when we look at the patent what you say that there won't you know identify the one port body is the valve body and screw through the structure what are the alternative interpretations that make it ambiguous there it's not so much that there are two or three alternatives although their expert came up with two or three alternatives it's that we don't know what it is you can't give us an alternative interpretation I one alternative interpretation is that the port body is not the combination of all three of the things listed in that one paragraph in the summary of the invention but it's that but it's just junkively those three things and another alternative is that it's more than those three things we don't know they are trying to add the screuth reads at the bottom and and say that that is part of the port body where nothing says that it is and they're trying to say that parts of figure two don't the business the screw thread structure have to be part of the port body because otherwise it couldn't perform the described functions without it one of the functions I think is fairly described as being related to the screw threads but the screw threads aren't necessarily the means by which it would be ceiling engaged that's they might have some other structure that does that it's not described as doing that that is lawyer argument hypothesizing about what that should be and the normal way that the court would find that it not indefinite is you would have an expert who'd be saying I'm looking at this it's clear to me there's no ambiguity about it in fact you have their own expert albeit in another case saying I can't tell what this is this was resolved on summary judgment correct it was as a as a matter of law right and there was what was there by way of expert affidavit I don't know the answer in connection with the indefiniteness I don't know the answer to that I believe they did not submit an expert report I'm told by Mr. Eisenberg that's true okay could I ask you one question before it comes up on the on the claim construction issues that you raised yes it strikes me looking at 94 70 and which seems to be the summary of the party's alternative claim constructions yes that you you didn't ask for the simple claim constructions that you're now asserting on appeal in under rule 51 or biodext jurisprudence you've got to offer a correct claim construction whereas for example on severely limit you didn't offer a simple severe limitation claim construction you offered one which is much more specific and under those circumstances aren't you in a pickle under rule 51 with respect your own a disagreement may I lay out the history of the claim construction because I think it's important to respond to the question the original position that we took was that it must be a severe restriction and that we lay out in the brief how both sides understood that the court understood that to be our position there was though a question raised as to whether that would be sufficiently different our position was that it had to be severe that was the core position it was always the core position I think fairly stated and both sides acknowledged that we lay that out in the brief in detail the specificity in terms of flow was a subsequent attempt to make that more definite so it's certainly true that we offered a more specific construction as well although I don't think it's fair and you give up the other one now the problem is that you've got you can't sort of sandbag the district court by offering different claim constructions you have to arrive I wouldn't say this is the correct one and you know this is the way you should instruct the jury and isn't that what we're seeing here at 94 70 and following isn't that the your final contention as to what the claim construction should be I with respect I don't think so and I think that the portion we've there's we've cited portion from the district court's opinions in the brief that may clear that the district court understood that our core position was the severity without the specificity so there's no question I think but this is a jury trial and when what the rules are pretty clear this saying that for precisely the purpose of avoiding getting into this kind of well our position was clear from the beginning and we modified it the rules are pretty clear that you've got to object to the charge that's given with specificity as to the reasons that you think it's wrong and if that's not done at jury charge at the point that the court formulates the jury charge and you wait for those issues and did you say in so many words are words to the same effect we think it should be severe or severe with the new moral the enumerated degree but failing that at least severe I don't think the discussion to the court as it proposed your instruction at the time of trial at the time of the instructions being given to the jury I don't believe the the objections were given by either side at that level of specificity I think there was an corporation by reference back to the arguments of the Markman so we're we're in the same position we were before that if I'm right that judge Robinson understood our position to be that it must be severe and if that to make that more definite you might want to put a specific definition on in terms of the floor rate I don't think there's a question of this court misunderstood our position I think the quotations from both sides briefs and from judge Robinson make that clear and I think there was clearly a timely objection made it just incorporated all of the prior discussion that's exactly the problem judge Bryson's talking about rule 51 is supposed to create a situation where the charge conference the parties are specific what happens in these patent cases repeatedly is that you have this mark when hearing you have different claim constructions and then the parties sort of ignore the rule 51 obligation when it gets to the charge conference I were left with the kind of mess that we have here in some cases we've said that raising the the issue again the charge conference is excused by futility but it's a as a general rule you're supposed to go there to the charge conference and say this is what we want so that the judge knows what the issues are after all claim construction can change during the course of the of the proceedings and this is the the district supposed to have a last opportunity to say yes or no to what you're asking for and that didn't happen that did not happen I think this is the more conventional case that is is approved by this court where the parties and the court believe that that was all settled and it was we're going to leave everybody's objections from before or maintained and I with respect I don't believe this case is as messy as others I believe that's not necessarily such a good son that's very very nice and perhaps the bar is too low in that respect but the but the portions that we've quoted in the brief from judge Robinson and from both sides I believe make clear that what was joined as the issue is severe flow or not but you think that we would find sufficient guidance at the jury charge discussion or in the point of objections it wasn't there clear sorry that judge Robinson understood your position and was allowing this incorporation by reference process that's essentially a presentation about that because I wasn't there that's my understanding of what that's fine we can find out thank you Mr. Powers here three minutes rebuttal for Mr. Hanna yes your honor Mr. Powers made repeated reference of in the in equal conduct discussion to prior use of what he said was exactly the same thing by inventors that's not correct that what he's talking about is the max like device the district court already ruled that the max like device was not material she said at page a 79 and 80 a reasonable examiner would not have considered such cursory information to be material of the prosecution of the patents and suit she said there is too little evidence concerning the max like device so this this whole notion that the invention are using the same thing this was something 25 years ago that nobody really remembered that that has absolutely nothing to do with intent the court is already ruled that out that is not the subject of of of the 80 am I appeal with respect to the incorrect statements I would respectfully that what what judge Robinson found to be the incorrect statements are the are of a art I respectfully direct the panel's attention to paragraphs 22 and 23 at a 92 of the record the district courts taking issue with certain certain arguments are made during the prosecution of 115 and what she says are incorrect in each and every instance she basis her conclusion they're incorrect on DTX 23 DTX 23 is larson there is absolutely no evidence in the record that any of the people who had a material duty under rule 56 knew about larson they did not if we look at page 54 of our year old brief of there is nicks there is an explanation of why during prosecution the one one five patent those arguments that were made were still correct and would have still been correct even if larson which they didn't know about was in front of the examiner with respect to the question on claim construction that you raised it is they are in fact hmi is in fact running away from the claim construction both capillary and our and flowers stricter that they deduced at the district court level the florist of their limitation was not some bifurcated or decoupled thing it was not some alternative construction you can look at page a five three three of the appendix it is their opening claim construction brief where they explain that their claim construction of flowers stricter is severe and severe is described as the arson embodiment of ten s cc m it's right there at page a five thirty three there's it's an unambiguous statement that is our claim construction so are you are you saying let me make sure I understand exactly what you saying that they never proposed a broader less specific claim construction not to my knowledge never not to my knowledge no I mean this I don't know maybe you're taking square issue with mr. power I'm taking square issue and I would direct your your the court's attention page a five thirty three there's there's no better place for it than in their claim construction brief that's what they said what their claim construction was no that's what the court typically we see and I will different iterations okay but I have claim construction so one brief one reference of my brief doesn't necessarily mean that was in the universe of my recollection of me it's a long time ago I was there for every minute of it I don't believe I ever saw a more limited construction they did say that they thought flour stricter was indefinite and when they offered a a a proposed construction for it this was it they never just said severe as far as I know page a five thirty three shows what they thought the claim construction was as far as I am a war um there's a final point yeah there's a question about on summary judgment with the port body whether or not there was an expert report submitted there was page 2912 of the appendix and following it um and with respect to the injunction it's a question of yes it was denied without prejudice I submit the we didn't there was no failure proof we showed that there was a two-player market that there were lost sales they go ahead to head so you know I the court did ask for clarification she did ask for did she do you give you another opportunity he did give you another after yes but I think what she asked for she said the quantum proof after eBay is unclear she asked this court for some guidance and she did make a conclusion that I think had to be raised on appeal that two big companies somehow aren't are aren't entitled to injunction and I would submit that that's that's inconsistent with 200 and some odd years of jurisprudence in the constitution that says a patent that gives you a right to exclude big companies shouldn't be excluded or small companies are and these are head to head competitors one sale goes to the other and that's that thank you mr

. Powell's where was where is the intent that she found she found no intent she concluded that these three people had knowledge of material prior art that it was not disclosed to the patent office and there was no explanation from all of that from that she inferred intent and I don't see any indicate. The intent you seem to be relying on Bruno which had a much different fact pattern there was a submission to the FDA certain material but not to the patent office thereby suggesting that there was a conscious distinction permitting an inference of intent where was the intent here the intent your honor and I believe I believe there's no abuse of discretion with regard to her conclusion regarding intent I believe the principal. The principal basis for that conclusion which I think are supportable our first the absence of an explanation given this materiality this court's presidents hold that where there is something that's fairly material is this clearly is and let's be clear why it's material these inventors were using the RFOs in their own devices for precisely the same purposes as the invention that they claim IE to protect themselves from hazardous gases using semiconductor industry. That's not a showing of intent to deceive it is something from which intent to deceive maybe infer and it is of course not a smoking gun document that says which we would really have the issue is I think before this court was it an abusive discretion for the court to infer intent based on the absence of an explanation where the inventor was using this prior device for precisely the same purpose with the what the problem she seemed to have been confused and because of the fact that she was using the in her opinion in a 92 she refers to these four statements that we've been focusing on is having been made in the course of the six on nine that prosecution that's incorrect right it's incorrect they were made in the course of the one she seems to have thought that the four statements infected both patents whereas if I understand what you're saying you agree that the four statements only pertinent with respect to an actable conduct on the one 15 pertinent I it's hard to know what's in judge Robinson's mind in this question I would characterize it slightly differently your honor I would say that she relied on the fact that they made the four statements which are I believe demonstrably inconsistent heavily relied upon them but not solely she also relied on the absence of an explanation which is under this court precedents a countisable basis for an inference of intent where there's materiality if there's no explanation offered at all and there wasn't one here that is a basis of this course precedents to say I may infer intent but looking at the people in front of them and I don't believe that's the intent argument with respect to the six out nine prosecution is extremely weak with respect to one one five it's obviously clearly strong based on the four statements with respect to six of nine you have perhaps a bleed over from the one one five if they're intent with the second where's the lead over if their intent was the same throughout then you really have evidence of it in one one five that you didn't have in six or nine that the solid clear evidence that I would agree with the panel is with respect to six or nine is an inference from the absence of an explanation given these inventors use of precisely these materials the RFOs for precisely the same purpose and the failure to disclose that which is quite material and which is conventionally used in the industry described as being conventionally is in its industry known by them to be used conventionally used in the industry the same industry for the same purpose yet but it's very different the RFOs are very different they're not they're not upstream they don't involve capillaries in the usual sense they don't involve it it's a different it's not the same it's not the same in many different respects with the other upstream it's in the it's often used in the tank body as the inventors it seems to me difficult to say that the RFOs are highly material to the prosecution putting aside the four statements with very with respect to our I disagree I think that the capillary issues a different issue the question that it remains is is there truly an invention in having something that restricts the flow and protects from hazardous gases that's the argument that's being made and the fact that there was something already there which does that and which is used by these inventors for that very purpose is then going to be a substantive basis for examination about whether a capillary based system is truly different in a material what maybe it isn't but the examiner should have had the right to understand that I'm sorry go ahead and and the fact to me that the materiality to me is the driver for this if in fact these inventors were using personally these devices for the same purpose and if they believe their their invention was an improvement on that and maybe an examiner would agree with them the point of inequitable conduct is they have to say what they were building upon what they were changing from and they didn't instead the the specification and the specification doesn't contain statements as egregious as the four but the entire point of the specification is this is a way to protect from hazardous gases that's new in the art and the examiner should have been told of the very technique they were using for that very purpose because then the examiner could decide whether that's an improvement and that is as materials against the thing from which the inventors were building material yes but she didn't even balance material materiality in the tent I mean that's part of the process isn't it it is certainly part of the process and she found intent I think fairly we can we can debate the language of the order but she found intent with respect to 609 from the absence of an explanation given materiality which is something this course process is not going to be a part of the process of the president's permit and she found intent as to 1 1 5 in addition to that from the fact of the four statements that are demonstrably inconsistent with the withheld RFO are you so you would distinguish the decision and emigals on what the strength of the showing of material yes and if you have and materiality plus the inventors knowledge of it and personal use of it it's one thing to have a story if the inventor if it's clear the inventor doesn't have any knowledge of the games over anyone but there's knowledge of a stray pat and sitting in a file is one thing their own personal use of that device in exactly the same context for exactly the same purpose is to me greater evidence of a materiality and intent it's not something that would slip your mind it's not something that I didn't think it was relevant it was exactly down the middle of the fairway of what they were doing and yet they didn't disclose it to give the examiner an opportunity to decide if their capillary based system was truly an improvement or an innovation and invention above the RFO which did the same thing and was used by them for the same purpose what would you say with respect to the argument that said Robinson conflated the inventors and the pracks air practitioners I think that's a red hearing she certainly cited the pracks air that's evidence just as Larsen was and she says of what was conventional in the industry what she was relying on was not saying that when she referred to the pracks air employees who had used this she wasn't saying that therefore we're attributing on her to that knowledge of the RFOs I'm sorry I don't believe so the argument was always they were aware of the conventional use of RFOs in this industry for this purpose and the pracks air evidence and the Larsen evidence and pracks air the testimony their square linking testimony in the record that says what the pracks air witness was describing and this is what judge Robinson cited in her in her opinion was just a the conventional use in the industry so it's not that this was something unique the pracks air was using that she was relying upon it was the fact that she needed she knew that the vendors knew of RFOs as far as I want to ask you about her failure to grant the injunction yes right assuming that you don't win on inequitable conduct and is a valid patent that's infringed hasn't she sort of written off the right to exclude from the patent statute simply because these are big companies and this isn't a large part of their sales it's very clear from the record from from her opinion that at mi had sales is a two company market taking away from pracks air and would continue to have sales why aren't the various requirements for an injunction met is it rep or whole harm the market will be depressed you've got all these future sales it's certainly true you're on that she mentions the size of the companies I don't think that's the primary driver of her analysis I think fairly read her analysis says that pracks air simply failed to do what eBay commands it to do and it was a failure of proof issue I don't think she's establishing a reporting to establish a new rule of law what she's saying is of course in this to competitor market it is possible that an injunction would be like which should be entered and she expressed the acknowledges that it's some of the but with a case as well what she says is is that this party just failed to do what eBay commands it to do to prove it's entitled isn't there enough proof in her very opinion showing that ATM I was having sales of the infringing product and they were increasing and therefore pracks air was the patent eat and who have had it had a valid patent that was being infringed they had a right to exclude and she simply said no I believe that an analysis would be inconsistent with eBay eBay says that you don't automatically get an injunction in a patent case merely because a patent gives you the right to exclude the question really is our money damages inadequate to compensate them for whatever damages are occurring and I think her opinion was fairly straightforward and saying it's certainly possible that such a proof could be made but this party gave them another opportunity to do it if should this court do something different than I believe it should but yes and much I think and they could come in with new factual evidence to support an injunction right that would be up to her of course but I do believe I do believe for close to she specifically said they can come back after the appeal she hasn't foreclosed that I wouldn't presume to second guess what she would do if they did come back so that to happen wouldn't we have to indicate that her criteria for denying the injunction were inadequate I believe I believe that her criteria were simply a failure of proof and if you read their their papers coming in the papers were pre eBay papers even though it was post eBay it was we get an injunction that's really the end of it there were none of the typical things you would see in a non patent case pre eBay of here's why money damages are inadequate often you would have an expert that would say it's difficult to convince customers to change once they've started there's quality of the same thing there's a lot of evidence that lawyers and parties put on to establish a reputable harm they did not do it and her point which I think is a point this court actually should reinforce not undermine is that parties do have to do that they shouldn't just come in and say here's my patent give me an injunction I believe he may change that rule and she's enforcing that rule and I think that's appropriate for her to do and I think it's appropriate for this court to reinforce that position because in fact they did nothing to establish a reputable harm what about port body on port body alright isn't port body all over the pack several indications of what's connected to the port body isn't it fairly clear what the port body is it is fairly clear from three statements what they think the port body should do and it's fairly clear where they think it's located what it isn't clear and this court's presidents are quite I think uniform on this issue you cannot describe a structural apparatus in functional terms it cannot be that you just are saying anything that I'm going to tell you more or less what it does this isn't a case with someone through in a term in a claim prosecution that that can't be found found in the patent this is clearly in the patent in several places it's it's in the it's in the summary of the invention is not in the detailed description it is not in the section which says on figure two for example this is the point judge dich made that figure two does not use the term port body to describe anything in figure two well you say it's in the summary of the invention as suggesting some reason the invention are often quite small this is just full calm this was longer you're right but it is not something where it says the port body the typical detailed description of course as we all know would say the port body number 27 the numbers missing I mean the question is is there is that any more fundamental or misleading than the omission of the number I believe it is and I think the evidence for that comes from the fact that no expert has been able to say conclusively in fact as Joe psych points out other experts are saying I can't figure this out it might be this it might be this it might be that the function of the patent is to describe clearly what a device is what are the alternatives here when we look at the patent what you say that there won't you know identify the one port body is the valve body and screw through the structure what are the alternative interpretations that make it ambiguous there it's not so much that there are two or three alternatives although their expert came up with two or three alternatives it's that we don't know what it is you can't give us an alternative interpretation I one alternative interpretation is that the port body is not the combination of all three of the things listed in that one paragraph in the summary of the invention but it's that but it's just junkively those three things and another alternative is that it's more than those three things we don't know they are trying to add the screuth reads at the bottom and and say that that is part of the port body where nothing says that it is and they're trying to say that parts of figure two don't the business the screw thread structure have to be part of the port body because otherwise it couldn't perform the described functions without it one of the functions I think is fairly described as being related to the screw threads but the screw threads aren't necessarily the means by which it would be ceiling engaged that's they might have some other structure that does that it's not described as doing that that is lawyer argument hypothesizing about what that should be and the normal way that the court would find that it not indefinite is you would have an expert who'd be saying I'm looking at this it's clear to me there's no ambiguity about it in fact you have their own expert albeit in another case saying I can't tell what this is this was resolved on summary judgment correct it was as a as a matter of law right and there was what was there by way of expert affidavit I don't know the answer in connection with the indefiniteness I don't know the answer to that I believe they did not submit an expert report I'm told by Mr. Eisenberg that's true okay could I ask you one question before it comes up on the on the claim construction issues that you raised yes it strikes me looking at 94 70 and which seems to be the summary of the party's alternative claim constructions yes that you you didn't ask for the simple claim constructions that you're now asserting on appeal in under rule 51 or biodext jurisprudence you've got to offer a correct claim construction whereas for example on severely limit you didn't offer a simple severe limitation claim construction you offered one which is much more specific and under those circumstances aren't you in a pickle under rule 51 with respect your own a disagreement may I lay out the history of the claim construction because I think it's important to respond to the question the original position that we took was that it must be a severe restriction and that we lay out in the brief how both sides understood that the court understood that to be our position there was though a question raised as to whether that would be sufficiently different our position was that it had to be severe that was the core position it was always the core position I think fairly stated and both sides acknowledged that we lay that out in the brief in detail the specificity in terms of flow was a subsequent attempt to make that more definite so it's certainly true that we offered a more specific construction as well although I don't think it's fair and you give up the other one now the problem is that you've got you can't sort of sandbag the district court by offering different claim constructions you have to arrive I wouldn't say this is the correct one and you know this is the way you should instruct the jury and isn't that what we're seeing here at 94 70 and following isn't that the your final contention as to what the claim construction should be I with respect I don't think so and I think that the portion we've there's we've cited portion from the district court's opinions in the brief that may clear that the district court understood that our core position was the severity without the specificity so there's no question I think but this is a jury trial and when what the rules are pretty clear this saying that for precisely the purpose of avoiding getting into this kind of well our position was clear from the beginning and we modified it the rules are pretty clear that you've got to object to the charge that's given with specificity as to the reasons that you think it's wrong and if that's not done at jury charge at the point that the court formulates the jury charge and you wait for those issues and did you say in so many words are words to the same effect we think it should be severe or severe with the new moral the enumerated degree but failing that at least severe I don't think the discussion to the court as it proposed your instruction at the time of trial at the time of the instructions being given to the jury I don't believe the the objections were given by either side at that level of specificity I think there was an corporation by reference back to the arguments of the Markman so we're we're in the same position we were before that if I'm right that judge Robinson understood our position to be that it must be severe and if that to make that more definite you might want to put a specific definition on in terms of the floor rate I don't think there's a question of this court misunderstood our position I think the quotations from both sides briefs and from judge Robinson make that clear and I think there was clearly a timely objection made it just incorporated all of the prior discussion that's exactly the problem judge Bryson's talking about rule 51 is supposed to create a situation where the charge conference the parties are specific what happens in these patent cases repeatedly is that you have this mark when hearing you have different claim constructions and then the parties sort of ignore the rule 51 obligation when it gets to the charge conference I were left with the kind of mess that we have here in some cases we've said that raising the the issue again the charge conference is excused by futility but it's a as a general rule you're supposed to go there to the charge conference and say this is what we want so that the judge knows what the issues are after all claim construction can change during the course of the of the proceedings and this is the the district supposed to have a last opportunity to say yes or no to what you're asking for and that didn't happen that did not happen I think this is the more conventional case that is is approved by this court where the parties and the court believe that that was all settled and it was we're going to leave everybody's objections from before or maintained and I with respect I don't believe this case is as messy as others I believe that's not necessarily such a good son that's very very nice and perhaps the bar is too low in that respect but the but the portions that we've quoted in the brief from judge Robinson and from both sides I believe make clear that what was joined as the issue is severe flow or not but you think that we would find sufficient guidance at the jury charge discussion or in the point of objections it wasn't there clear sorry that judge Robinson understood your position and was allowing this incorporation by reference process that's essentially a presentation about that because I wasn't there that's my understanding of what that's fine we can find out thank you Mr. Powers here three minutes rebuttal for Mr. Hanna yes your honor Mr. Powers made repeated reference of in the in equal conduct discussion to prior use of what he said was exactly the same thing by inventors that's not correct that what he's talking about is the max like device the district court already ruled that the max like device was not material she said at page a 79 and 80 a reasonable examiner would not have considered such cursory information to be material of the prosecution of the patents and suit she said there is too little evidence concerning the max like device so this this whole notion that the invention are using the same thing this was something 25 years ago that nobody really remembered that that has absolutely nothing to do with intent the court is already ruled that out that is not the subject of of of the 80 am I appeal with respect to the incorrect statements I would respectfully that what what judge Robinson found to be the incorrect statements are the are of a art I respectfully direct the panel's attention to paragraphs 22 and 23 at a 92 of the record the district courts taking issue with certain certain arguments are made during the prosecution of 115 and what she says are incorrect in each and every instance she basis her conclusion they're incorrect on DTX 23 DTX 23 is larson there is absolutely no evidence in the record that any of the people who had a material duty under rule 56 knew about larson they did not if we look at page 54 of our year old brief of there is nicks there is an explanation of why during prosecution the one one five patent those arguments that were made were still correct and would have still been correct even if larson which they didn't know about was in front of the examiner with respect to the question on claim construction that you raised it is they are in fact hmi is in fact running away from the claim construction both capillary and our and flowers stricter that they deduced at the district court level the florist of their limitation was not some bifurcated or decoupled thing it was not some alternative construction you can look at page a five three three of the appendix it is their opening claim construction brief where they explain that their claim construction of flowers stricter is severe and severe is described as the arson embodiment of ten s cc m it's right there at page a five thirty three there's it's an unambiguous statement that is our claim construction so are you are you saying let me make sure I understand exactly what you saying that they never proposed a broader less specific claim construction not to my knowledge never not to my knowledge no I mean this I don't know maybe you're taking square issue with mr. power I'm taking square issue and I would direct your your the court's attention page a five thirty three there's there's no better place for it than in their claim construction brief that's what they said what their claim construction was no that's what the court typically we see and I will different iterations okay but I have claim construction so one brief one reference of my brief doesn't necessarily mean that was in the universe of my recollection of me it's a long time ago I was there for every minute of it I don't believe I ever saw a more limited construction they did say that they thought flour stricter was indefinite and when they offered a a a proposed construction for it this was it they never just said severe as far as I know page a five thirty three shows what they thought the claim construction was as far as I am a war um there's a final point yeah there's a question about on summary judgment with the port body whether or not there was an expert report submitted there was page 2912 of the appendix and following it um and with respect to the injunction it's a question of yes it was denied without prejudice I submit the we didn't there was no failure proof we showed that there was a two-player market that there were lost sales they go ahead to head so you know I the court did ask for clarification she did ask for did she do you give you another opportunity he did give you another after yes but I think what she asked for she said the quantum proof after eBay is unclear she asked this court for some guidance and she did make a conclusion that I think had to be raised on appeal that two big companies somehow aren't are aren't entitled to injunction and I would submit that that's that's inconsistent with 200 and some odd years of jurisprudence in the constitution that says a patent that gives you a right to exclude big companies shouldn't be excluded or small companies are and these are head to head competitors one sale goes to the other and that's that thank you mr. Hunter okay should we take an under advised thank you all rise the honorable court is adjourned from day to day good on that

We have four cases on the calendar this morning, a patent case from District Court, three government employee cases, which will be have been submitted on the briefs and will therefore not be argued. And so we'll hear one case. PraxAir versus ATMI and Advanced Technology Materials Inc. 2007, 14, 18, 3, 15, 09, Mr. Hartman. Yes, thank you. Thank you. I'd like to mention that we consider the cross appeal to be additional arguments to achieve essentially the same results. And so you're free to make all the arguments you wish. We'll tell you now in advance so you can thought about it, but there will not be a fourth argument. Thank you. Please proceed. Good morning and may it please the Court. I'm Chris Harnett representing PraxAir here today. In accordance with your statements about the timing and during the configuration of the issues that are presented on appeal and cross appeal, unless the Court would like me to proceed differently. I would propose to divide PraxAir's time equally. In the first instance, I would like to address the three issues that PraxAir raised on its appeal with the permission of the Court. I don't want to get too technical, but let me point out that your second argument is a response to him. Not to raise other issues that you didn't raise before. Understood. Yes, second. Okay, fine. Understood. So with the permission of the Court, I would begin by discussing the district court's inequitable conduct ruling. I'll then proceed to address the district court, spinding that the port body claim limitation was somehow indefinite. And then I will briefly address the injunction issue. And in my second argument, I'll reserve on PraxAir's for rebutting the ATMI's argument and to address the issues that that ATMI raised in its cross appeal. So the cross appeal is not proper as the problem. And under our decisions infringement is not a ground for cross appeal where there's been a holding of an invillody or an equitable conduct and an alternative ground for invillody. Isn't a ground for a cross appeal. That's the problem. Understood. That it, I personally, should more properly address the issues raised in their briefs and on their appeal. Which I will do. Starting with the inequitable conduct ruling, we would respectfully submit that the district court's ruling is the product of several clear errors. There's no evidence of intent to deceive the patent office on the record. And there is no evidence from which intent can be inferred. Is there a difference between the two patents that struck me in your second brief that you pointed out that these four statements that the district court relied on were made only in the prosecution of the 115 patent and not the 609 patent. If I understand correctly. There are differences in the patents only to the extent that there are, of course, differences in the claim. But it is my statement. I accurate that the four statements that the district court relied on in your view were only made in the prosecution of the 115 patent. Historically, that is the correct fact. Yes. And the reason we raised it in our briefs is it certainly was it was combined in ATIM eyes arguments suggesting that these were made in both arguments. But the fact of the matter is these were the 609 patent was issued first was prosecuted first of 115 prosecuted second. These arguments were in the 115 only. Whether that has any impact, I would the only impact we would suggest is that if there is a case of infectious inequitable conduct, it wouldn't apply to the 609 patent. And we would respectfully submit that there's no inequitable conduct in the first instance. So infectious inequitable conduct should not even be an issue. It was more about a housekeeping matter to address the statement. I mean, neither of you wants us to divide the two. Each of you wants to win on both. But I think the point Judge Dyck's question is does this make a stronger inequitable conduct argument with respect to the 115 in which these statements were made? No, of course, both of you are going to say no to that. I suppose. But it does seem to me that it's one thing simply not to produce something. And it's another thing to say there's nothing out there that is contrary to this. If in fact there's evidence that you know there is. And that is exactly the point on the intent argument. You're on it. There is no evidence that any of the attorney or the or the inventors had any awareness that there was material prior art that was not disclosed. The four arguments that were made during the prosecution of the 115 patent related to four features of the invention. It had to do roughly with the purpose. But suppose there was a statement that's in accurate. It's in and there's prior art that they were aware of that that makes the statement inaccurate. That could lead to a finding of intent and the finding of an equitable conduct, right? The readily I suppose it could, but the the whole point of intent is that the inventors in the attorney have to have awareness that what there that there is something material out there that they are making arguments contrary to a simple mistake does not amount to an ethical conduct. I would submit there's not even a mistake here because what it's very critical to realize that the piece of RFO are. What you're saying is that there's no evidence that the that they knew the statements were inconsistent with the RFO prior art. And I would submit it's not even inconsistent with with what's being called the RFO prior art. The only RFO prior art that's of issue here is the Larsen article. And there is it is undisputed that Mr. Toler may the inventor and the three Mr. Toler may the attorney and the three inventors did not know about Larsen or its contents to the contrary. All they knew about was. But I think you're making too much out of the Larsen article. Let's put that put that aside. Let's assume that that isn't the ground on which he rely. The she's saying that this RFO prior art which did restrict the flow and that that existence of that art was inconsistent with the four statements that were made. Are you saying it's not inconsistent? Why is that? Is there is there testimony to that effect? Yes, Your Honor. The testimony is by the attorney. The attorney said attorney. The prosecutor attorney testified a trial that he was his understanding of what an RFO was in general was basically that any time you had any restricted flow that in his mind is what an RFO is. And he said I believe that art fairly disclosing that was before the office was before the office and that is absolutely true. The Tom six nine three patent discusses the inlet to the fifth flow gas passage that is provided with a suitable flow restriction device. And that your honor is what judge Robinson decided was the critical fact in finding inequival kind of she was saying for our full art the significance of it is that it provided a restriction in the flow path. So here's this testimony by the attorney which page which page I have it right here. A nine three oh four is testimony specifically said that any time there's a change in the diameter of something in a valve or any flow control device that could be a restricted a restricted flow office. And then he went on to say the references that were disclosed in all fairness could be looked at showing that nine three oh four to nine three oh five then there is the inventor testimony from inventor Martin who said that he did not believe that our foes were part of his invention. One must remember here that the that the devices of his invention for the fact that they're not part of his invention seems to me to be irrelevant the question is whether the RFO prior or it was inconsistent with the four statements that's what I was asking you. But if I have to come back to the intent element let me explain to why it wasn't inconsistent with the four statements the four statements dealt basically with portability economy restriction in the flow path. All of the prior art RFO prior art was somewhere downstream one of the key factors of this invention is that the restrictor was in the flow path and that is consistent with judge Robinson's claim construction which at my does not challenge any of this RFO art and our vote by Dr. glue at the eyes expert says it's simply a whole to play it something very simple but that was all downstream. All the portability arguments you can pick up this thing and walk around with it because the flow restrictor is inside the tank that's very different than the prior art or the four statements restricted upstream restrictions. Well when you think of it the advantages that they were talking about it was no prior art that allowed for uncomplicated portable forest picture in the flow path and specific a florist or in the flow path that had specific dimensions of the orifice of less than two millimeters. So I would respectfully submit yes and even if they were even if this argument was technically correct the proper analysis here on is that none of these gentlemen who had a done under rule 56 thought they were being misleading thought they were correct they went in there with a pure heart which is which is why the intent element is very important here. I would respectfully submit the district court also aired in a reliance on the Bruno case and the ignorance of the amie goes case which is issued subsequently that the district court cannot see any the trouble is not seen any specific testimony and rest of the four statements where the people explain why they thought that the statements were not inconsistent with the R.O. Paul prior art that that's the problem I have. Because what what are our four prior art are we talking about is the issue in their minds the the for about in their minds what what about the test one did they it doesn't seem to me that they really address the four statements I mean if they'd address the four statements and said we didn't think the R.F.O. prior art was inconsistent with the statements that would be one thing but I don't see that they did that because they couldn't have done that you're on here's the reason why in real time when they were prosecuting the application and in real time. In real time is when you do the intent analysis in real time it never dawned on that that the R.F.O. art could be significant so in real time they would have in order to get that they could have testified that that never occurred to them that the R.F.O. prior art was inconsistent with these statements but I don't see that there is such testimony but but there's more more global testimony that they they testified that the are they a the examiner thought the R.F.O. art wasn't that things that like the R.F.O. art like a restrictor in the four statements that they were in the first place. The R.F.O. art was already before the examiner and to the inventor the inventor testified that you know this downstream R.F.O. was not what I considered to be part of the invention of the invention but under the court's claim construction which is not challenged requires the flow restrictor in the flow path. So but basically for the inventors to come forward 10 years after the fact would basically under under the Bruno case be asking them to make up a story because 10 years later they say it never dawned on me I don't be there's no reason I can't tell you your honor I can't tell you jury why it is that I didn't disclose it because it didn't cross my mind I can't tell you why at the time I thought these weren't inconsistent because it didn't cross my mind to impose a it it is not a it would almost lead to a duty to investigate if an inventor has some vague awareness of a component to an invention that is a multiple component device you know this isn't an invention the six or nine one one five times just directed to a flow restrictor it's a multi component device it's got Mr. Hanover other points you'd like to raise yes there are let me ask you if you're moving on to port body yeah let me ask you just this question once the difference in your view between the port body and the valve body valve body 50 is the port body minus the screw threads minus the screw threads and the port body is valve body 50 with the screw threads because if one one reads the when you say the screw threads there are two sets of screw threads are you talking about the ones at the bottom of the valve body if we look at page seven of the yellow brief it's the screw threads at the bottom which when you read the when you read the versions of the specification that describes what the port body is the port body is ceilingly engaged with the tank and I would note that 80 m I has studiously avoided addressing in any of their briefs the testimony of their expert who fully understood what these screw threads did and that they're ceilingly engaged the structure into the tank. Let me tell you what my problem is I had the same question I might judge right now but if you look at the figure in the patent there's different shading for the valve body and the screw threads right they're not they're not shaded the same way that the hash marks go in different directions right so it seems clear from that that the valve body and the port body are not the same thing. Oh they're not co extensive the valve body is labeled 50 and when you read the specification in view of figure two it what the what the port body must be it's a structure that connects the outlet of a pressurized tank and includes a path of discharge of fluid from the pressurized tank so what you have here is valve body 50 is this metal housing here the screw threads the screw threads I hold up this one it's easy to be the screw threads a ceilingly engage it with the tank and it does everything that the specification tells you what it does where it's located and what it has to have so complicated. It's not labeled port body and it doesn't have to be under section one there's no requirement that you have any figure there's no requirement that anyone has to have a reference normal what the requirement under one 12 is is that it in order for something to be a definite has to be insolubally ambiguous and unimmutable to construction. When you say the threads are you talking about the entire structure that is cross hatched in a direction opposite to the rest of the valve body there's a structure at the bottom of the valve body that includes threads and some other actually two sets of threads one of which attaches to the figure 30. You're talking about the threads you just basically go to the on off valve well that's top set of threads. No I'm talking about the if you look at the bottom of what you're calling the valve body there is a structure which I thought you were just talking about with judge type that it has cross hatching that goes in the opposite direction from the orange cross hatched material immediately above it is that what you're saying is that what you're calling the threads. The thought to aspect of that is the threads and what's the rest of it what is the name of the object that is cross hatched in the opposite direction from the rest of the valve body. I'm not necessarily sure it's given a name but one of those in a different structure. It's functionally when you look at this this is a piece of metal. Is it part of the valve body? By virtue of the fact that it is the valve body is represented as 50 and I agree with you that in historical in historical terms the cross hatching says that the valve body is this thing and when this is something other than the valve body. This is something when you take the valve body and you have it sealingly and adaptive for sealing engagement with the tank that is what the skilled worker would understand is the port body. So you're saying that the port body is the valve body plus this thing at the bottom that has the cross hatching in the other direction? Yes. Absolutely and when you look at what and if you look at our page seven of our yellow brief in conjunction with the language of the specification saying what the valve body is what it's supposed to do and where it's located. It shows you that a port body is adaptive for communication that it forms the inlet it forms a gas flow path and crystal clear it can optionally house other components such as a bellos and pop it thing and if you look at figure two. It houses the bellos and pop it apparatus. This is not some this is a fairly simple mechanical structure. There's no there's no expert witness and I understand that indefinite this is a question but there's no expert witness who says that the combined combining these two features the valve body and the screw fit. Screwed the red structure is the. For what right? Well not a trial at their deficit their expert reports and depositions you cite both of our. The stuff that you said seems to me that it does not really provide any support for what you're saying in fact your expert witness in the other case was very confused about what the port body was a kipsa is what's this one thing it's another thing sometimes it's one thing sometimes it's another. Yeah there are multiple vitamins there's different ways that one a mechanical person of ordinary skill in the art would configure one of these. But there is no clear expert testimony saying what you're saying that the court body is a combination of the valve body in this other cross hatched area with the screw threads well I was there I understand that Dr. Carvella's would have believed that was the case would have tested by that way of trial. So I was just saying that if this patent hadn't been knocked out but you're quite correct your honor it is a matter of law it is done on the intrinsic evidence and if when looked at the intrinsic evidence we have no help on this there's no support for your position. I was I respectfully disagree I think that when you look at Carvella's at Carvella's and Sherman at the very least agreed with our claim construction which would which by definition reads on. Val body 50 and the and the screw threads our proposed construction that it's a structure that connects to the outlet of a pressurized tank and includes a path of the discharge of fluid from the peturized tank would be. Val body 50 with the screw threads it fully complies with the claim language it is not a case where it is insolently ambiguous and not amenable to construction these are in terms of degree terms of physical attributes this is something you can look at and understand. And it's a simple mechanical structure ancillary to the to the the heart of the invention of the 895 patent and one thing I do want to point out the 895 patent isn't just a third patent that we're piling on the 619 or the 1.5 Pat patents here it's an important piece of Praxair technology that we think protects some very important aspects of of what Praxair is protecting here. I mean it's directed to a some unique some unique attributes where a valve stays engaged to a pressure differential is reached. The press that that has very you know the the port body is it's a physical structure that sits on top you screw it into the top of the tank and it forms an outlet port it's something that any mechanic look at it figure to is going to figure out. I see that you're time including your but a time that we've asked a lot of questions you'll give you three minutes back okay and I'll give Mr. Powell some extra time if he needs it. Thank you. I'm going to go ahead and get the car. Please the court I'd like to begin with the inequitable conduct issue and I'd like to begin by addressing the question raised my both judges died in claim terms that are in the 609 are the same as those that were being argued in the 1.15 and the relevance and the materiality of the RFO prior art is just as relevant to the up to the 609 as it was to the 1.15. Mr. Powell's where was where is the intent that she found she found no intent she concluded that these three people had knowledge of material prior art that it was not disclosed to the patent office and there was no explanation from all of that from that she inferred intent and I don't see any indicate. The intent you seem to be relying on Bruno which had a much different fact pattern there was a submission to the FDA certain material but not to the patent office thereby suggesting that there was a conscious distinction permitting an inference of intent where was the intent here the intent your honor and I believe I believe there's no abuse of discretion with regard to her conclusion regarding intent I believe the principal. The principal basis for that conclusion which I think are supportable our first the absence of an explanation given this materiality this court's presidents hold that where there is something that's fairly material is this clearly is and let's be clear why it's material these inventors were using the RFOs in their own devices for precisely the same purposes as the invention that they claim IE to protect themselves from hazardous gases using semiconductor industry. That's not a showing of intent to deceive it is something from which intent to deceive maybe infer and it is of course not a smoking gun document that says which we would really have the issue is I think before this court was it an abusive discretion for the court to infer intent based on the absence of an explanation where the inventor was using this prior device for precisely the same purpose with the what the problem she seemed to have been confused and because of the fact that she was using the in her opinion in a 92 she refers to these four statements that we've been focusing on is having been made in the course of the six on nine that prosecution that's incorrect right it's incorrect they were made in the course of the one she seems to have thought that the four statements infected both patents whereas if I understand what you're saying you agree that the four statements only pertinent with respect to an actable conduct on the one 15 pertinent I it's hard to know what's in judge Robinson's mind in this question I would characterize it slightly differently your honor I would say that she relied on the fact that they made the four statements which are I believe demonstrably inconsistent heavily relied upon them but not solely she also relied on the absence of an explanation which is under this court precedents a countisable basis for an inference of intent where there's materiality if there's no explanation offered at all and there wasn't one here that is a basis of this course precedents to say I may infer intent but looking at the people in front of them and I don't believe that's the intent argument with respect to the six out nine prosecution is extremely weak with respect to one one five it's obviously clearly strong based on the four statements with respect to six of nine you have perhaps a bleed over from the one one five if they're intent with the second where's the lead over if their intent was the same throughout then you really have evidence of it in one one five that you didn't have in six or nine that the solid clear evidence that I would agree with the panel is with respect to six or nine is an inference from the absence of an explanation given these inventors use of precisely these materials the RFOs for precisely the same purpose and the failure to disclose that which is quite material and which is conventionally used in the industry described as being conventionally is in its industry known by them to be used conventionally used in the industry the same industry for the same purpose yet but it's very different the RFOs are very different they're not they're not upstream they don't involve capillaries in the usual sense they don't involve it it's a different it's not the same it's not the same in many different respects with the other upstream it's in the it's often used in the tank body as the inventors it seems to me difficult to say that the RFOs are highly material to the prosecution putting aside the four statements with very with respect to our I disagree I think that the capillary issues a different issue the question that it remains is is there truly an invention in having something that restricts the flow and protects from hazardous gases that's the argument that's being made and the fact that there was something already there which does that and which is used by these inventors for that very purpose is then going to be a substantive basis for examination about whether a capillary based system is truly different in a material what maybe it isn't but the examiner should have had the right to understand that I'm sorry go ahead and and the fact to me that the materiality to me is the driver for this if in fact these inventors were using personally these devices for the same purpose and if they believe their their invention was an improvement on that and maybe an examiner would agree with them the point of inequitable conduct is they have to say what they were building upon what they were changing from and they didn't instead the the specification and the specification doesn't contain statements as egregious as the four but the entire point of the specification is this is a way to protect from hazardous gases that's new in the art and the examiner should have been told of the very technique they were using for that very purpose because then the examiner could decide whether that's an improvement and that is as materials against the thing from which the inventors were building material yes but she didn't even balance material materiality in the tent I mean that's part of the process isn't it it is certainly part of the process and she found intent I think fairly we can we can debate the language of the order but she found intent with respect to 609 from the absence of an explanation given materiality which is something this course process is not going to be a part of the process of the president's permit and she found intent as to 1 1 5 in addition to that from the fact of the four statements that are demonstrably inconsistent with the withheld RFO are you so you would distinguish the decision and emigals on what the strength of the showing of material yes and if you have and materiality plus the inventors knowledge of it and personal use of it it's one thing to have a story if the inventor if it's clear the inventor doesn't have any knowledge of the games over anyone but there's knowledge of a stray pat and sitting in a file is one thing their own personal use of that device in exactly the same context for exactly the same purpose is to me greater evidence of a materiality and intent it's not something that would slip your mind it's not something that I didn't think it was relevant it was exactly down the middle of the fairway of what they were doing and yet they didn't disclose it to give the examiner an opportunity to decide if their capillary based system was truly an improvement or an innovation and invention above the RFO which did the same thing and was used by them for the same purpose what would you say with respect to the argument that said Robinson conflated the inventors and the pracks air practitioners I think that's a red hearing she certainly cited the pracks air that's evidence just as Larsen was and she says of what was conventional in the industry what she was relying on was not saying that when she referred to the pracks air employees who had used this she wasn't saying that therefore we're attributing on her to that knowledge of the RFOs I'm sorry I don't believe so the argument was always they were aware of the conventional use of RFOs in this industry for this purpose and the pracks air evidence and the Larsen evidence and pracks air the testimony their square linking testimony in the record that says what the pracks air witness was describing and this is what judge Robinson cited in her in her opinion was just a the conventional use in the industry so it's not that this was something unique the pracks air was using that she was relying upon it was the fact that she needed she knew that the vendors knew of RFOs as far as I want to ask you about her failure to grant the injunction yes right assuming that you don't win on inequitable conduct and is a valid patent that's infringed hasn't she sort of written off the right to exclude from the patent statute simply because these are big companies and this isn't a large part of their sales it's very clear from the record from from her opinion that at mi had sales is a two company market taking away from pracks air and would continue to have sales why aren't the various requirements for an injunction met is it rep or whole harm the market will be depressed you've got all these future sales it's certainly true you're on that she mentions the size of the companies I don't think that's the primary driver of her analysis I think fairly read her analysis says that pracks air simply failed to do what eBay commands it to do and it was a failure of proof issue I don't think she's establishing a reporting to establish a new rule of law what she's saying is of course in this to competitor market it is possible that an injunction would be like which should be entered and she expressed the acknowledges that it's some of the but with a case as well what she says is is that this party just failed to do what eBay commands it to do to prove it's entitled isn't there enough proof in her very opinion showing that ATM I was having sales of the infringing product and they were increasing and therefore pracks air was the patent eat and who have had it had a valid patent that was being infringed they had a right to exclude and she simply said no I believe that an analysis would be inconsistent with eBay eBay says that you don't automatically get an injunction in a patent case merely because a patent gives you the right to exclude the question really is our money damages inadequate to compensate them for whatever damages are occurring and I think her opinion was fairly straightforward and saying it's certainly possible that such a proof could be made but this party gave them another opportunity to do it if should this court do something different than I believe it should but yes and much I think and they could come in with new factual evidence to support an injunction right that would be up to her of course but I do believe I do believe for close to she specifically said they can come back after the appeal she hasn't foreclosed that I wouldn't presume to second guess what she would do if they did come back so that to happen wouldn't we have to indicate that her criteria for denying the injunction were inadequate I believe I believe that her criteria were simply a failure of proof and if you read their their papers coming in the papers were pre eBay papers even though it was post eBay it was we get an injunction that's really the end of it there were none of the typical things you would see in a non patent case pre eBay of here's why money damages are inadequate often you would have an expert that would say it's difficult to convince customers to change once they've started there's quality of the same thing there's a lot of evidence that lawyers and parties put on to establish a reputable harm they did not do it and her point which I think is a point this court actually should reinforce not undermine is that parties do have to do that they shouldn't just come in and say here's my patent give me an injunction I believe he may change that rule and she's enforcing that rule and I think that's appropriate for her to do and I think it's appropriate for this court to reinforce that position because in fact they did nothing to establish a reputable harm what about port body on port body alright isn't port body all over the pack several indications of what's connected to the port body isn't it fairly clear what the port body is it is fairly clear from three statements what they think the port body should do and it's fairly clear where they think it's located what it isn't clear and this court's presidents are quite I think uniform on this issue you cannot describe a structural apparatus in functional terms it cannot be that you just are saying anything that I'm going to tell you more or less what it does this isn't a case with someone through in a term in a claim prosecution that that can't be found found in the patent this is clearly in the patent in several places it's it's in the it's in the summary of the invention is not in the detailed description it is not in the section which says on figure two for example this is the point judge dich made that figure two does not use the term port body to describe anything in figure two well you say it's in the summary of the invention as suggesting some reason the invention are often quite small this is just full calm this was longer you're right but it is not something where it says the port body the typical detailed description of course as we all know would say the port body number 27 the numbers missing I mean the question is is there is that any more fundamental or misleading than the omission of the number I believe it is and I think the evidence for that comes from the fact that no expert has been able to say conclusively in fact as Joe psych points out other experts are saying I can't figure this out it might be this it might be this it might be that the function of the patent is to describe clearly what a device is what are the alternatives here when we look at the patent what you say that there won't you know identify the one port body is the valve body and screw through the structure what are the alternative interpretations that make it ambiguous there it's not so much that there are two or three alternatives although their expert came up with two or three alternatives it's that we don't know what it is you can't give us an alternative interpretation I one alternative interpretation is that the port body is not the combination of all three of the things listed in that one paragraph in the summary of the invention but it's that but it's just junkively those three things and another alternative is that it's more than those three things we don't know they are trying to add the screuth reads at the bottom and and say that that is part of the port body where nothing says that it is and they're trying to say that parts of figure two don't the business the screw thread structure have to be part of the port body because otherwise it couldn't perform the described functions without it one of the functions I think is fairly described as being related to the screw threads but the screw threads aren't necessarily the means by which it would be ceiling engaged that's they might have some other structure that does that it's not described as doing that that is lawyer argument hypothesizing about what that should be and the normal way that the court would find that it not indefinite is you would have an expert who'd be saying I'm looking at this it's clear to me there's no ambiguity about it in fact you have their own expert albeit in another case saying I can't tell what this is this was resolved on summary judgment correct it was as a as a matter of law right and there was what was there by way of expert affidavit I don't know the answer in connection with the indefiniteness I don't know the answer to that I believe they did not submit an expert report I'm told by Mr. Eisenberg that's true okay could I ask you one question before it comes up on the on the claim construction issues that you raised yes it strikes me looking at 94 70 and which seems to be the summary of the party's alternative claim constructions yes that you you didn't ask for the simple claim constructions that you're now asserting on appeal in under rule 51 or biodext jurisprudence you've got to offer a correct claim construction whereas for example on severely limit you didn't offer a simple severe limitation claim construction you offered one which is much more specific and under those circumstances aren't you in a pickle under rule 51 with respect your own a disagreement may I lay out the history of the claim construction because I think it's important to respond to the question the original position that we took was that it must be a severe restriction and that we lay out in the brief how both sides understood that the court understood that to be our position there was though a question raised as to whether that would be sufficiently different our position was that it had to be severe that was the core position it was always the core position I think fairly stated and both sides acknowledged that we lay that out in the brief in detail the specificity in terms of flow was a subsequent attempt to make that more definite so it's certainly true that we offered a more specific construction as well although I don't think it's fair and you give up the other one now the problem is that you've got you can't sort of sandbag the district court by offering different claim constructions you have to arrive I wouldn't say this is the correct one and you know this is the way you should instruct the jury and isn't that what we're seeing here at 94 70 and following isn't that the your final contention as to what the claim construction should be I with respect I don't think so and I think that the portion we've there's we've cited portion from the district court's opinions in the brief that may clear that the district court understood that our core position was the severity without the specificity so there's no question I think but this is a jury trial and when what the rules are pretty clear this saying that for precisely the purpose of avoiding getting into this kind of well our position was clear from the beginning and we modified it the rules are pretty clear that you've got to object to the charge that's given with specificity as to the reasons that you think it's wrong and if that's not done at jury charge at the point that the court formulates the jury charge and you wait for those issues and did you say in so many words are words to the same effect we think it should be severe or severe with the new moral the enumerated degree but failing that at least severe I don't think the discussion to the court as it proposed your instruction at the time of trial at the time of the instructions being given to the jury I don't believe the the objections were given by either side at that level of specificity I think there was an corporation by reference back to the arguments of the Markman so we're we're in the same position we were before that if I'm right that judge Robinson understood our position to be that it must be severe and if that to make that more definite you might want to put a specific definition on in terms of the floor rate I don't think there's a question of this court misunderstood our position I think the quotations from both sides briefs and from judge Robinson make that clear and I think there was clearly a timely objection made it just incorporated all of the prior discussion that's exactly the problem judge Bryson's talking about rule 51 is supposed to create a situation where the charge conference the parties are specific what happens in these patent cases repeatedly is that you have this mark when hearing you have different claim constructions and then the parties sort of ignore the rule 51 obligation when it gets to the charge conference I were left with the kind of mess that we have here in some cases we've said that raising the the issue again the charge conference is excused by futility but it's a as a general rule you're supposed to go there to the charge conference and say this is what we want so that the judge knows what the issues are after all claim construction can change during the course of the of the proceedings and this is the the district supposed to have a last opportunity to say yes or no to what you're asking for and that didn't happen that did not happen I think this is the more conventional case that is is approved by this court where the parties and the court believe that that was all settled and it was we're going to leave everybody's objections from before or maintained and I with respect I don't believe this case is as messy as others I believe that's not necessarily such a good son that's very very nice and perhaps the bar is too low in that respect but the but the portions that we've quoted in the brief from judge Robinson and from both sides I believe make clear that what was joined as the issue is severe flow or not but you think that we would find sufficient guidance at the jury charge discussion or in the point of objections it wasn't there clear sorry that judge Robinson understood your position and was allowing this incorporation by reference process that's essentially a presentation about that because I wasn't there that's my understanding of what that's fine we can find out thank you Mr. Powers here three minutes rebuttal for Mr. Hanna yes your honor Mr. Powers made repeated reference of in the in equal conduct discussion to prior use of what he said was exactly the same thing by inventors that's not correct that what he's talking about is the max like device the district court already ruled that the max like device was not material she said at page a 79 and 80 a reasonable examiner would not have considered such cursory information to be material of the prosecution of the patents and suit she said there is too little evidence concerning the max like device so this this whole notion that the invention are using the same thing this was something 25 years ago that nobody really remembered that that has absolutely nothing to do with intent the court is already ruled that out that is not the subject of of of the 80 am I appeal with respect to the incorrect statements I would respectfully that what what judge Robinson found to be the incorrect statements are the are of a art I respectfully direct the panel's attention to paragraphs 22 and 23 at a 92 of the record the district courts taking issue with certain certain arguments are made during the prosecution of 115 and what she says are incorrect in each and every instance she basis her conclusion they're incorrect on DTX 23 DTX 23 is larson there is absolutely no evidence in the record that any of the people who had a material duty under rule 56 knew about larson they did not if we look at page 54 of our year old brief of there is nicks there is an explanation of why during prosecution the one one five patent those arguments that were made were still correct and would have still been correct even if larson which they didn't know about was in front of the examiner with respect to the question on claim construction that you raised it is they are in fact hmi is in fact running away from the claim construction both capillary and our and flowers stricter that they deduced at the district court level the florist of their limitation was not some bifurcated or decoupled thing it was not some alternative construction you can look at page a five three three of the appendix it is their opening claim construction brief where they explain that their claim construction of flowers stricter is severe and severe is described as the arson embodiment of ten s cc m it's right there at page a five thirty three there's it's an unambiguous statement that is our claim construction so are you are you saying let me make sure I understand exactly what you saying that they never proposed a broader less specific claim construction not to my knowledge never not to my knowledge no I mean this I don't know maybe you're taking square issue with mr. power I'm taking square issue and I would direct your your the court's attention page a five thirty three there's there's no better place for it than in their claim construction brief that's what they said what their claim construction was no that's what the court typically we see and I will different iterations okay but I have claim construction so one brief one reference of my brief doesn't necessarily mean that was in the universe of my recollection of me it's a long time ago I was there for every minute of it I don't believe I ever saw a more limited construction they did say that they thought flour stricter was indefinite and when they offered a a a proposed construction for it this was it they never just said severe as far as I know page a five thirty three shows what they thought the claim construction was as far as I am a war um there's a final point yeah there's a question about on summary judgment with the port body whether or not there was an expert report submitted there was page 2912 of the appendix and following it um and with respect to the injunction it's a question of yes it was denied without prejudice I submit the we didn't there was no failure proof we showed that there was a two-player market that there were lost sales they go ahead to head so you know I the court did ask for clarification she did ask for did she do you give you another opportunity he did give you another after yes but I think what she asked for she said the quantum proof after eBay is unclear she asked this court for some guidance and she did make a conclusion that I think had to be raised on appeal that two big companies somehow aren't are aren't entitled to injunction and I would submit that that's that's inconsistent with 200 and some odd years of jurisprudence in the constitution that says a patent that gives you a right to exclude big companies shouldn't be excluded or small companies are and these are head to head competitors one sale goes to the other and that's that thank you mr. Hunter okay should we take an under advised thank you all rise the honorable court is adjourned from day to day good on tha