1
`
`10-CV-780(EAW)
`Buffalo, New York
`September 19, 2018
`1:04 p.m.
`
`10-CV-781(EAW)
`
`12-CV-904(EAW)
`
` UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
`- - - - - - - - - - - - - - -X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`OYSTAR USA, INC. AND KAN-PAK
`LLC,
`Defendants
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`SHIBUYA HOPPMANN CORP. and
`HP HOOD, LLP
`Defendant
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`GEA PROCESS ENGINEERING,
`INC. AND GEA PROCOMAC
`S.P.A.,
`Defendants
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`NESTLE, USA,
`Defendant
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`JASPER PRODUCTS,
`Defendant.
`- - - - - - - - - - - - - - X
`TRANSCRIPT OF PROCEEDINGS
`BEFORE THE HONORABLE JEREMIAH J. MCCARTHY
`UNITED STATES MAGISTRATE JUDGE
`
`13-CV-892(EAW)
`
`13-CV-1118(EAW)
`
`AUDIO RECORDER:
`
`Deborah A. Zamito
`
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`Steuben Ex. 2090, pg. 1
`Nestle v. Steuben
`IPR2015-00249
`
`
`
`10-CV-780(EAW)
`Buffalo, New York
`September 19, 2018
`1:04 p.m.
`
`10-CV-781(EAW)
`
`12-CV-904(EAW)
`
` UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF NEW YORK
`- - - - - - - - - - - - - - -X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`OYSTAR USA, INC. AND KAN-PAK
`LLC,
`Defendants
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`SHIBUYA HOPPMANN CORP. and
`HP HOOD, LLP
`Defendant
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`GEA PROCESS ENGINEERING,
`INC. AND GEA PROCOMAC
`S.P.A.,
`Defendants
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`NESTLE, USA,
`Defendant
`- - - - - - - - - - - - - - X
`STEUBEN FOODS, INC.,
`Plaintiff
`vs.
`JASPER PRODUCTS,
`Defendant.
`- - - - - - - - - - - - - - X
`TRANSCRIPT OF PROCEEDINGS
`BEFORE THE HONORABLE JEREMIAH J. MCCARTHY
`UNITED STATES MAGISTRATE JUDGE
`
`13-CV-892(EAW)
`
`13-CV-1118(EAW)
`
`AUDIO RECORDER:
`
`Deborah A. Zamito
`
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`Steuben Ex. 2090, pg. 1
`Nestle v. Steuben
`IPR2015-00249
`
`
`
`2
`
`Christi A. Macri, FAPR-CRR
`TRANSCRIBER:
`Kenneth B. Keating Federal Building
`
`100 State Street, Room 4240
`
`Rochester, New York 14614
`
`(Proceedings recorded by electronic sound recording,
`transcript produced by computer).
`
`A P P E A R A N C E S
`
`BARCLAY DAMON, LLP
`BY: JOSEPH L. STANGANELLI, ESQ.
` RYAN GANZEMULLER, ESQ. (Buffalo)
`One International Place
`26th Floor
`Boston, Massachusetts 02110
`- and -
`OBLON SPIVAK MCCLELLAND MAIER & NEUSTADT, LLP
`BY: THOMAS J. FISHER, ESQ.
`1940 Duke Street
`Alexandria, Virginia 22314
`Appearing on behalf of the Plaintiff
`
`ALSO PRESENT: CHARLES AVIGLIANO, ESQ. (Via telephone)
` WILLIAM COOK ALCIATI, ESQ.
`
` In-house counsel for Steuben Foods
`
`WOOD HERRON & EVANS, LLP
`BY: BRETT A. SCHATZ, ESQ. (Via telephone)
` GREGORY F. AHRENS, ESQ. (Via telephone)
`2700 Carew Tower
`441 Vine Street
`Cincinnati, Ohio 45202
`Appearing on behalf of Oystar USA, Inc.
`
`MORRIS LAING EVANS BROCK & KENNEDY
`BY: WILL B. WOHLFORD, ESQ.
`300 N. Mead, Suite 200
`Wichita, Kansas 67202
`Appearing on behalf of Kan-Pac
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`Steuben Ex. 2090, pg. 2
`Nestle v. Steuben
`IPR2015-00249
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`3
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`A P P E A R A N C E S
`
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`BY: JOHN C. ROZENDAAL, ESQ.
`1100 New York Avenue, NW
`Washington, D.C. 20005
`- and -
`PHILLIPS LYTLE LLP
`BY: WILLIAM D. CHRIST, ESQ.
`One Canalside
`125 Main Street
`Buffalo, New York 14203-2887
`Appearing on behalf of Shibuya Hoppmann Corp. and HP Hood, LLC
`
`PILLSBURY WINTHROP SHAW PITTMAN, LLP
`BY: WILLIAM P. ATKINS, ESQ.
` BENJAMIN L. KIERSZ, ESQ.
`1650 Tysons Boulevard, 14th Floor
`Mclean, Virginia 22102
`- and -
`HAGERTY & BRADY
`BY: MICHAEL A. BRADY, ESQ.
`69 Delaware Avenue, Suite 1010
`Buffalo, New York 14202
`Appearing on behalf of GEA
`
`FINNEGAN HENDERSON FARABOW GARRETT & DUNNER, LLP
`BY: VIRGINIA L. CARRON, ESQ.
` THOMAS JENKINS, ESQ. (Via telephone)
` TYLER AKAGI, ESQ. (Via telephone)
`3500 Sun Trust Plaza
`303 Peachtree Street, N.E.
`Atlanta, Georgia 30308
`Appearing on behalf of Nestle, USA
`ALSO PRESENT: DOUGLAS BESMAN, ESQ. (Via telephone)
`
` MICHAEL PREWITT, ESQ.
` In-house counsel for Nestle, USA
`HOVEY WILLIAMS LLP
`BY: MICHAEL B. HURD, ESQ.
`10801 Mastin Boulevard
`Suite 1000
`Overland Park, Kansas 66210
`Appearing on behalf of Jasper Products
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`Steuben Ex. 2090, pg. 3
`Nestle v. Steuben
`IPR2015-00249
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`4
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`
`
`P R O C E E D I N G S
`* * *
`THE CLERK: All rise.
`MAGISTRATE JUDGE MCCARTHY: Good afternoon. Please
`
`be seated.
`
`THE CLERK: On the record, this is Steuben Foods
`vs. the following:
`Oystar USA, 10-CV-780.
`Shibuya Hoppmann, 10-CV-781.
`GEA Process Engineering, 12-CV-904.
`Nestle USA, 13-CV-892.
`And Jasper Products LLC, 13-CV-1118.
`Counselors, please state your name for the record
`and the party or parties that you represent. We'll begin in
`the courtroom at the plaintiff's table.
`MR. FISHER: Thomas Fisher on behalf of plaintiff
`Steuben Foods, Incorporated.
`MR. STANGANELLI: Joseph Stanganelli on behalf of
`plaintiff Steuben Foods. And also with me from Barkley Damon
`as well is Ryan Ganzemuller.
`MR. ALCIATI: Cook Alciati on behalf of Steuben
`
`Foods.
`
`THE CLERK: Defense in the courtroom.
`MR. ROZENDAAL: J.C. Rozendaal on behalf of the
`Shibuya and Hood defendants. And with me is Bill Christ.
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`Nestle v. Steuben
`IPR2015-00249
`
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`5
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`MS. CARRON: Virginia Carron on behalf of Nestle
`U.S.A.. And with me in the courtroom is Mike Prewitt from
`Nestle. Also on the phone with me is Tom Jenkins, Tyler Akagi
`and Doug Besman from Nestle U.S.A.
`MAGISTRATE JUDGE MCCARTHY: Okay.
`MR. ATKINS: Bill Atkins on behalf of the GEA
`defendants. With me is Ben Kiersz and Michael Brady.
`MR. HURD: Michael Hurd on behalf of defendant
`Jasper Products.
`MR. WOHLFORD: Will Wohlford on behalf of Kan-Pak.
`THE CLERK: Okay. Now on the phone anyone for the
`plaintiffs?
`MR. AVIGLIANO: Charlie Avigliano on behalf of
`Steuben Foods.
`THE CLERK: Okay. Defendant Oystar?
`MR. SCHATZ: Brett Schatz on behalf of Oystar.
`MR. AHRENS: Greg Ahrens on behalf of Oystar.
`THE CLERK: Anyone else for Kan-Pak?
`MR. WOHLFORD: Will Wohlford here in the courtroom.
`THE CLERK: Okay. Shibuya, anybody else? Okay,
`GEA? No. Nestle? No.
`MR. BESMAN: Yes, Douglas Besman for Nestle U.S.A..
`THE CLERK: And Mr. Hurd.
`MR. AKAGI: Tyler Akagi and Tom Jenkins, but I think
`Ms. Carron already said that.
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`Nestle v. Steuben
`IPR2015-00249
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`6
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`THE CLERK: Yes, yes, she did. Thank you very much.
`All right, that's it. We're here for oral argument, the
`Honorable Jeremiah J. McCarthy presiding.
`MAGISTRATE JUDGE MCCARTHY: Okay, good afternoon
`everyone. Good to see you all again. I hope everybody had a
`good summer. And if you didn't, I really don't want to hear
`about it.
`
`And the fact that I came out here today without the
`usual huge pile of papers under my hand does not -- don't read
`anything into that. I just -- I've got a lot of access on
`screen, et cetera. So I've spent a good deal of time
`reviewing all of your submissions and I guess we'll -- remind
`me when we're concluded that I need to address at least some
`scheduling of the motion that was filed last week relative to
`the protective order, et cetera okay?
`MR. FISHER: Yes, Your Honor.
`MAGISTRATE JUDGE MCCARTHY: Let's go through the
`other matters first and then we'll see where we are.
`And one other logistical matter, and I think we've
`covered that, I sent an e-mail yesterday because
`Judge Wolford's office contacted me and apparently the one
`case that was closed out, the 211, there had still been some
`filings in there, I'm sure that was inadvertent, but they
`check these things. I think they need to have more to do, I
`don't know, but -- no, I'm glad they caught it because it just
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`Nestle v. Steuben
`IPR2015-00249
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`shows up -- one showed up as a pending motion and it was
`something I had already disposed of in the other cases. Just
`try to remain from any filings in that case.
`Okay, so we have defense motions for partial
`summary judgment and along with my Rule 56(f)(3) notice, my
`third Rule 56(f)(3) notice and Steuben's response.
`So I will leave it to counsel as to what order you
`wish to proceed in and who wants to go first. I'm not saying
`we take the whole afternoon, I hope not, but I don't have
`currently anything else on my calendar for this afternoon
`so --
`
`MR. FISHER: Your Honor, we'd be happy to --
`MAGISTRATE JUDGE MCCARTHY: Pardon?
`MR. FISHER: We'd be happy to lead off and set the
`context of where we are.
`MR. ROZENDAAL: I was going to suggest, Your Honor,
`under the circumstances since it's our partial summary
`judgment motions and since we're the only ones actually
`supporting your third Rule 56(f)(3) notice in its current
`form, it would actually be appropriate for us to lead off.
`MAGISTRATE JUDGE MCCARTHY: I don't have a problem
`one way or the other. So I guess it is a defense oriented
`motion -- motions by the defendants, but makes no difference
`to me who goes first.
`So I'll hear from you, Mr. Rozendaal. Mr. Fisher,
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`Nestle v. Steuben
`IPR2015-00249
`
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`you'll obviously have full audience, too.
`MR. ROZENDAAL: Thank you, Your Honor. Your Honor
`indicated that you wanted to focus on the question of the
`possibility of changing the claim construction and so I do
`intend to focus the argument there. I think the last time we
`spoke on the phone that was the issue that you directed us to
`spend the most time on.
`MAGISTRATE JUDGE MCCARTHY: Well, it was -- yeah,
`based on Steuben's alternative suggestion. Obviously, they --
`they don't share what I had expressed at the time as my view
`of things, but in the alternative they had suggested that
`if -- if it's necessary, then the claims should be narrowed in
`scope to allow hydrogen peroxide, but nothing else as the
`sterilant.
`
`That's your alternative suggestion?
`MR. FISHER: Yes, Your Honor, which is why I was
`proposing that we go first to set up what the alternative
`suggestion was and then defendants could address that.
`MAGISTRATE JUDGE MCCARTHY: Well, I understand your
`alternative suggestion and I believe that Nestle and GEA and
`perhaps some of the other defendants are on board with that
`alternative proposal.
`So it's Mr. Rozendaal and Shibuya that take a
`different view , right?
`MR. ROZENDAAL: Yes, Your Honor, together with
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`Nestle v. Steuben
`IPR2015-00249
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`Kan-Pak and Oystar.
`MAGISTRATE JUDGE MCCARTHY: And I'm not saying --
`and just -- just so we're clear, I'm not saying at this point
`that we're already to the stage of the alternative proposal.
`I recognize that Steuben is proposing that only in the
`alternative, but for purposes of discussion we'll jump off
`there.
`
`MR. ROZENDAAL: Great, thank you, Your Honor.
`So Steuben, as Your Honor pointed out, spent 34
`pages arguing that the term aseptically disinfecting ought to
`be construed to include oxonia.
`And then on page 34 of its brief really as sort of
`a throw away argument said but if you're about to invalidate
`the claims because they include oxonia, then you ought to
`revisit the construction and narrow the claims.
`And that's a -- not an appropriate invocation of
`the canon that claims may sometimes be construed to preserve
`their validity.
`The parties throughout the long course of this case
`have disagreed about a lot, but there are a few bedrock
`principles of patent law and claim construction that everyone
`agrees on. So one thing that everyone agrees on is that the
`claims need to be construed first, and then the as construed
`claims are used to conduct the infringement analysis and the
`invalidity analysis, that the invalidity analysis is a
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`Nestle v. Steuben
`IPR2015-00249
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`separate item distinct from claim construction.
`What Steuben is proposing is a situation in which
`the claims are construed and then the specification is
`analyzed to see whether it provides adequate written
`description and enablement support for those claims. And if
`not, then we go back and re-construe the claims all over
`again; we sort of do a do-over to narrow the claims to
`preserve their validity.
`That's not the way the law works. That would
`create a substantive problem, first of all, because it would
`put an impermissible thumb on the scale in favor of patent
`owners and against accused infringers because no one is
`suggesting that if when we apply the claims to the accused
`devices we find there's infringement, we ought to go back and
`re-construe the claims so that there's no infringement. So
`there's a one way ratchet that they want to put into the
`system which the law doesn't recognize.
`And more fundamentally, they have a procedural
`problem because Steuben advocated, over the objections of some
`of the defendants, in favor of a construction that would
`include oxonia and having convinced the Court to adopt that
`construction, Steuben is judicially estopped under
`well-settled principles of Second Circuit law from changing
`its mind and running away from the position that it
`successfully urged the Court to adopt before.
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`Nestle v. Steuben
`IPR2015-00249
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`MAGISTRATE JUDGE MCCARTHY: Well, what they -- I
`mean, as you all know, my thinking has evolved over the course
`of these cases and in particular over the course of this year,
`and in terms of construction, I think what I last said on
`April 20th was that aseptically disinfecting does not
`necessarily exclude the use of oxonia as the sterilant.
`And as you all know from my decisions, I was
`primarily trying to reconcile the fact that Claim 188 had
`Claim 40, which -- excuse me, the '188 patent had Claim 40,
`which specifically listed oxonia as one of the -- the
`sterilant oxonia as one of the limitations.
`Now, I don't think I ever said, and perhaps I could
`have been more clear, but I don't think I ever said that or
`intended to say that an interpretation of aseptically
`disinfecting must include oxonia in each and every case.
`Because, I mean, for example, to take -- and it's
`pretty well-settled each claim has to be interpreted
`separately and the scope of each claim has to be interpreted
`separately; there can be some reference to other claims.
`But just to give you one example, Claim 1 of the
`'013 patent says aseptically disinfecting wherein the
`disinfecting is with hot atomized hydrogen peroxide. That
`says nothing about oxonia.
`So are you asking me to invalidate that claim as
`well because it includes oxonia?
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`MR. ROZENDAAL: We are asking you to invalidate any
`claim that contains the limitation aseptically disinfecting
`because -- because the full scope of that term is not enabled
`by the specification.
`MAGISTRATE JUDGE MCCARTHY: But in that case the --
`the sterilant is hydrogen peroxide.
`Again, what I said was it was not necessarily -- it
`could not necessarily be construed to exclude oxonia. And
`what I meant was in all cases.
`But, I mean, if you have a claim that specifically
`lists the -- that has the phrase aseptically disinfecting and
`also specifically identifies hydrogen peroxide as the -- as
`the sterilant, it seems to me that it's a stretch to say that
`that should be invalidated because the full scope of the claim
`has not been disclosed.
`You're looking puzzled, but, I mean, that's -- I
`was puzzled by your argument and that's -- that's where I'm at
`right now.
`
`MR. ROZENDAAL: I --
`MAGISTRATE JUDGE MCCARTHY: I got to go claim by
`claim, it seems to me. '282 says that each claim's validity
`has to be determined independently of the other claims.
`MR. ROZENDAAL: Your Honor, I'm sorry, I don't
`remember that particular form of the argument being covered in
`the briefing and so I'm just -- I'm listening carefully to
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`what Your Honor is saying.
`It may be the case that if a dependent claim
`specifically limits the sterilant to hydrogen peroxide --
`MAGISTRATE JUDGE MCCARTHY: Well, I mean, Claim 1,
`the one I just cited, is an independent claim. And then I
`think claims 2 through 17 are all dependent on Claim 1 just by
`way of example.
`I could be talking about anything. I'm just saying
`if there is a claim in any of the patents that specifically
`identifies the sterilant as hydrogen peroxide, it seems to me
`that it's a stretch to say that that claim has to be
`invalidated because of what we're talking about vis-a-vis
`oxonia.
`
`MR. ROZENDAAL: I take Your Honor's point on that
`issue. I think if the claim specifically limits itself to
`hydrogen peroxide, that may be a different situation than a
`claim that refers to aseptically disinfecting without
`including a sterilant, identifying a particular sterilant
`limitation.
`
`MAGISTRATE JUDGE MCCARTHY: Okay.
`MR. ROZENDAAL: The point, though, is that in those
`cases where no particular sterilant is identified, any claim
`to aseptically disinfecting by itself includes the use of
`oxonia and then becomes invalid for lack of written
`description.
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`IPR2015-00249
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`MAGISTRATE JUDGE MCCARTHY: Okay, I understand what
`you're saying now. But I had read your submission as asking
`me to invalidate any claim containing the phrase aseptically
`disinfecting whether or not elsewhere in the claim was a
`reference to hydrogen peroxide as a sterilant because I don't
`think I can go that far.
`MR. ROZENDAAL: I take Your Honor's point on that.
`I was focusing on the claims that use aseptically disinfecting
`without --
`
`MAGISTRATE JUDGE MCCARTHY: Without identifying --
`MR. ROZENDAAL: -- specifically mentioning oxonia or
`without specifically mentioning any particular sterilant.
`MAGISTRATE JUDGE MCCARTHY: Okay. Okay.
`MR. ROZENDAAL: That term aseptically disinfecting
`has to be broad enough to include the use of oxonia precisely
`because of the reasons that Your Honor identified because when
`there are claims like Claim 40 of the '188 patent or
`Claim 12 -- cancelled Claim 12 of the '188 patent, which was
`there from the very beginning that specifically call out the
`use of oxonia, there is no way to read the term aseptically
`disinfecting that doesn't also include the use of oxonia.
`And if that is not fully enabled -- rather fully
`described, adequately described in the written description,
`then those claims are invalid.
`MAGISTRATE JUDGE MCCARTHY: Okay.
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`IPR2015-00249
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`MR. ROZENDAAL: So I think that when you're -- when
`Your Honor looks at the -- if you want the -- sort of the
`best, most thorough authoritative description of sort of how
`to do claim construction from the Federal Circuit en banc, it
`is the Phillips vs. AWH case, which we rely heavily in our
`briefs and which Steuben notably did not include in its reply
`to the 56(f)(3) notice.
`And what that case tells us, it actually points to
`the statute, it points to 112, 35 U.S.C. Section 112 and it
`talks about how the second paragraph requires that there be
`claims and that the second paragraph requires courts to look
`to the language of the claims to determine what the applicant
`regards as his invention.
`So once you have claims like original Claim 12 and
`new Claim 40 that expressly call out oxonia, then there's no
`way to construe the term aseptically disinfecting that doesn't
`allow for oxonia.
`MAGISTRATE JUDGE MCCARTHY: You're talking about
`original Claim 12 of the '188 patent?
`MR. ROZENDAAL: Yes, Your Honor.
`MAGISTRATE JUDGE MCCARTHY: That was cancelled,
`
`right?
`
`MR. ROZENDAAL: It was cancelled during re-exam.
`MAGISTRATE JUDGE MCCARTHY: During re-exam.
`MR. ROZENDAAL: Right.
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`MAGISTRATE JUDGE MCCARTHY: Doesn't -- I thought the
`case law said I'm not supposed to interpret cancelled claims
`so as to resurrect their scope in the current patent.
`MR. ROZENDAAL: Well, I think the question is what
`would a person of ordinary skill at the time understood the
`term aseptically disinfecting to mean when the application was
`filed.
`
`And the fact that there were claims about oxonia in
`the original application support the point that aseptically
`disinfecting includes oxonia.
`And the cancellation, as Your Honor asked this
`week, why was Claim 12 cancelled, it was cancelled because
`there was prior art that showed the use of oxonia and,
`therefore, the applicant decided to withdraw the claim rather
`than argue that it was valid over that -- over that prior art,
`but --
`
`MAGISTRATE JUDGE MCCARTHY: Right, and at the same
`
`time --
`
`MR. ROZENDAAL: -- then in the same proceeding got
`Claim 40 which also has oxonia in it, which shows
`unequivocally that the reason why they dropped Claim 12 was
`not because they didn't think that aseptically disinfecting
`could be done with oxonia. Otherwise, they wouldn't -- they
`couldn't have gotten Claim 40 out of the same proceeding.
`MAGISTRATE JUDGE MCCARTHY: Claim -- the reissued --
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`re-exam claim -- the claim that came out of the
`re-examination, Claim 40, cannot have been the same as the
`cancelled Claim 12 or it wouldn't have been allowed; isn't
`that right?
`MR. ROZENDAAL: I think that there are some features
`of Claim 40 that distinguish it from Claim 12, but the use of
`oxonia is not one of them, right? Oxonia was in both of them.
`So whatever it was that they gave up in order to
`get Claim 40 allowed or Claim 12 they decided not to fight
`about, whatever that was it wasn't that the claims don't
`include oxonia.
`MAGISTRATE JUDGE MCCARTHY: Okay, I mean, I
`understand your point. I mean, as you all know, my big hang
`up at the time was when I -- when I changed my initial
`reaction to what aseptically disinfecting means was Claim 40.
`MR. ROZENDAAL: Right, and Your Honor was exactly
`right about that. I think there's no doubt that the term
`aseptically disinfecting -- everyone agrees that the term
`aseptically disinfecting has to mean the same thing throughout
`this family of patents.
`MAGISTRATE JUDGE MCCARTHY: Well, except that now in
`the -- and I forget the case, I believe it was GEA made their
`motion for reconsideration which then was kind of tabled, I
`think denied without prejudice to renew, but they cited the
`case again.
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`That says that I should not -- in construing
`claims, I should not consider claims that were added in
`re-examination to the extent they broaden the scope of what
`was originally there, right?
`MR. ROZENDAAL: There is a principle that you can't
`make a broadening amendment, but of course it is also the case
`that because it added additional limitations, Claim 40
`actually narrowed the scope rather than broadened the scope of
`the claims was the point that Mr. Fisher has made rather
`forcefully.
`
`In any event, the point is that there wasn't any
`change to scope insofar as the use of oxonia is concerned.
`There were claims, original claims that included the use of
`oxonia. The re-exam Claim 40 still includes the use of
`oxonia.
`
`On the only question before the Court, which is
`whether does aseptically disinfecting include or exclude the
`use of oxonia, the presence of these claims both in the
`original application and after re-exam shows that throughout
`this entire process it has been the understanding of the
`applicant and the Patent Office and any person of ordinary
`skill in the art reading these claims that aseptically
`disinfecting includes the use of oxonia .
`That is a fundamental point that comes out of
`Phillips. You know, the name of the game is the claim are
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`Steuben Ex. 2090, pg. 18
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`words that have been said in this court before. I can't
`remember if it was Mr. Fisher or Mr. Atkins or who who said
`it, but you always start with the claim. And Phillips makes
`it clear that the language of the claims is controlling.
`And when you have a dependent claim, like Claim 40
`or Claim 12 that depends from a broader claim that includes
`aseptically disinfecting, aseptically disinfecting has to be
`broad enough to cover whatever dependent claims depend from
`it, including the use of oxonia so --
`MAGISTRATE JUDGE MCCARTHY: All right.
`MR. ROZENDAAL: -- so Your Honor was correct to say
`that aseptically disinfecting can't exclude the use of oxonia
`precisely because these claims expressly call it out.
`MAGISTRATE JUDGE MCCARTHY: Well, when I was
`thinking about it I was thinking only about Claim 40. I was
`not thinking about the cancelled Claim 12. I'll take a look
`at that again.
`MR. ROZENDAAL: Well --
`MAGISTRATE JUDGE MCCARTHY: All right, oh, go ahead.
`MR. ROZENDAAL: No, I was just going to go on -- I
`was going to go on now to the suggestion that Steuben made
`having argued forcefully that the claims ought to be construed
`to include oxonia, they then have this throwaway argument on
`page 34 where they say oh, but if you're gonna invalidate all
`the claims because they lack written description, then you
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`ought to think again and change the claim construction.
`MAGISTRATE JUDGE MCCARTHY: I mean, irrespective of
`what you or any of the defense counsel or Mr. Fisher or anyone
`on his behalf argues, I mean, in construing claims I've got to
`come up with what I think is the correct construction,
`regardless of what positions the parties take.
`I mean, I've certainly got to -- there's cases that
`say I can come up with a construction, if it's the right one,
`that no party argues. So the estoppel argument strikes me
`as -- I don't know, I'm not totally buying into that yet.
`First of all, I'm the magistrate judge, I'm not the
`final word here. But, secondly, you know, everything's been
`kind of in flux.
`Oh, the case I was referring to was Total
`Containment vs. Environ Products. It says no proposed -- it's
`citing 305, no proposed amendment or new claim enlarging the
`scope of the claim of a patent will be permitted in a
`re-examination, which is I guess pretty well-settled law.
`MR. ROZENDAAL: I believe that is settled law.
`I think the point that GEA was trying to make in
`citing that case was that the original set of claims somehow
`excluded oxonia and that to use a re-exam to add oxonia into
`the claims would be a mistake.
`And I think the point of Claim 12 is to show that,
`in fact, from the very beginning all of the claims have
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`included oxonia -- the concept of aseptically disinfecting in
`the patent has included the use of oxonia. That was the point
`I was trying to make in response to GEA's point.
`MAGISTRATE JUDGE MCCARTHY: Okay, okay.
`MR. ROZENDAAL: So then -- we then come to the
`question -- I think the Court has -- has construed aseptically
`disinfecting as not excluding oxonia at the urging of Steuben.
`And now Steuben is saying but if that's going to
`result in claim invalidity, then we want a do-over. And I
`want to explain why that application of the canon of
`construction is not appropriate.
`MAGISTRATE JUDGE MCCARTHY: Okay.
`MR. ROZENDAAL: So again if we go to Phillips, which
`once again is the most authoritative en banc statement we have
`about how to do claim construction, Phillips explains at pages
`1325 to 1327 how this canon of claim construction works.
`And it describes it, first of all, as a doctrine of
`limited utility and it says that we have never applied the
`principle broadly and have certainly not endorsed a regime in
`which validity analysis is a regular component of claim
`construction.
`So the whole suggestion that one ought to sort of
`look at the written description problem and allow that to
`influence claim construction is not a faithful application of
`the doctrine.
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`The Court explains that the doctrine is really a
`facet of the principle of the presumption of administrative
`regularity. So the Court says when you have a claim that has
`a broad and ambiguous term and there is -- reading it broadly
`would result in invalidity because of, for example, a lack of
`written description, then we have to assume that the Patent
`Office didn't think it was that broad because if it was that
`broad, then it would have been invalid and the claim would not
`have issued. And since we presume that the Patent Office
`prefers to issue valid claims rather than invalid claims, we
`will construe the term in a more limited way.
`And that was what happened in the Medtronic case,
`which was cited by Steuben in its reply to the 56(f)(3) notice
`and also elaborated on by Nestle in its reply.
`MAGISTRATE JUDGE MCCARTHY: It was actually first
`cited by me in my Rule 56 notice, but --
`MR. ROZENDAAL: But what happened there, which
`was -- which was different from what happened here, what
`happened there was the term at issue was establishing the
`spacial relationship.
`So Your Honor will recall that this was the
`surgical patent and the patent was on -- had to do with the
`technology for locating a probe that was inserted into a
`patient's body and then there was a visual display that showed
`where the probe was relative to different structures in the
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`body.
`
`And the term was establishing the spacial
`relationship. The specification described acoustic or
`ultrasonic means or electromagnetic means for doing that. The
`accused product, the infringer used -- the accused infringer
`used optical means, and there was sort of a throwaway line in
`the specification that said oh, you can also use optical
`means.
`
`And the Court said, well, that's not enough written
`description. The District Court said there's not enough
`written description there for it to be optical. That's not --
`that's not properly supported.
`And we know that it would be invalid if we
`construed it broadly enough to include optical because there's
`not enough written description in the specification. Oh, and,
`by the way, the inventor said that he hadn't invented that.
`So in that respect the case has some striking
`parallels to our facts in that the Federal Circuit says that
`this would result in a serious written description problem.
`The difference between that case and this case,
`though, is that in that case the Court was able to say, well,
`establish ing the spacial relationship doesn't say how.
`Again, adopting the principle of administrative regularity,
`we're going to assume that the Patent Office wouldn't have
`issued these claims if they included optical means because
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`that would result in invalid claims and so we're going to
`assume that it applies only to acoustic and electromagnetic
`means.
`
`That worked in that case because there were not
`what we have here, these dependent claims, that specifically
`called out optical means. The logic of the -- of the canon
`wouldn't work. So if there had been a dependent claim that
`said establishing the spacial relationship wherein the
`establishing is done using an optical system, then the logic
`of the canon would fall apart, right?
`Because then you would say, okay, well, we have to
`assume that the Patent Office didn't mean to issue claims that
`cover optical systems. Oh, wait, we can't assume that because
`look, there's a claim that covers an optical system. So the
`canon could not be used in that circumstance and that's why
`the canon could not be used in our circumstance.
`If we have a set of claims that only talked about
`aseptically disinfecting and didn't say anything about
`specific sterilants and in particular didn't say anything
`about oxonia, then there would at least be an opening to make
`the argument.
`I still think that the canon w
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