BSC USP 8,048,032
`Exhibit 1035
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`Page 1 of 21
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`April 8, 2014
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`UNITED STATES COURT OF
`APPEALS FOR THE FEDERAL
`CIRCUIT
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`Appeal No. 14-1185
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`Page 1
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`VASCULAR SOLUTIONS, INC.,
`
`Plaintiff-Appellee,
`
`vs.
`
`BOSTON SCIENTIFIC
`CORPORATION,
`
`Defendant-Appellant.
`
`TRANSCRIPT OF PROCEEDINGS
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`DATE TAKEN:
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`APRIL 8, 2014
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`TIME:
`
`PLACE:
`
`BEFORE:
`
`10:00 A.M.
`
`UNITED STATES COURT OF APPEALS
`717 MADISON PLACE, NORTHWEST
`WASHINGTON, D.C. 20437
`
`HONORABLE KIMBERLY A. MOORE
`HONORABLE S. JAY PLAGER
`HONORABLE RAYMOND T. CHEN
`
`This cause was electronically recorded at the date and
`time aforesaid. The following proceedings reflect the
`transcription produced by:
`
`Trina B. Wellslager
`Registered Professional Reporter
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`Golkow Technologies, Inc. - 1.877.370.DEPS
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`Page 2 of 21
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`April 8, 2014
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`Page 4
`THEREUPON, the following proceedings were
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`2 electronically recorded at 10:00 a.m.:
`JUDGE MOORE: 2014-1185, Vascular Solutions
`3
`versus Boston Scientific.
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`Mr. Wolf, so the panel is somewhat confused
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`about how the invention works. And so not -- you
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`don't have to worry about your time. We want to
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`spend a bit here at the beginning getting from both
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`counsel the equivalent of a technical tutorial, what
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`you would normally give to a district court judge or
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`a jury, because we're sort of struggling to
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`understand how the technology works. The patent
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`doesn't always correlate items in the figures with
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`the numbers in the spec and then how the accused
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`device actually works.
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`So rather than try to jump into your claim
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`construction arguments, would you mind stepping back
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`and giving us the equivalent of a technical
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`tutorial? Is that something that you're okay doing
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`this morning?
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`MR. WOLF: Absolutely, Your Honor.
`21
`THE COURT: Okay.
`22
`JUDGE PLAGER: Let me sharpen it from my
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`personal viewpoint.
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`MR. WOLF: Yes, Your Honor.
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`Page 5
`JUDGE PLAGER: Which is, if I'm a cardiologist.
`MR. WOLF: Yes.
`JUDGE PLAGER: And I've got a patient in front
`of me who I'm about to use either one of these
`devices, what goes in first? What goes in second?
`MR. WOLF: Right.
`JUDGE PLAGER: What am I doing?
`JUDGE MOORE: What's the push rod push? We
`can't figure out all these things.
`MR. WOLF: Understood, Your Honor. So let's --
`let's start with -- may it please the Court.
`Matthew Wolf for Boston Scientific.
`Let's start with a guide catheter.
`JUDGE PLAGER: No, let's start with a
`guidewire. Does that come first?
`MR. WOLF: It --
`JUDGE PLAGER: There's lot of stuff in here
`about -- particularly in the patent -- about
`guidewires. What is a guidewire and, I mean, is it
`like a telephone cable? What is it?
`MR. WOLF: A guidewire is literally a wire -- a
`long wire with like a pigtail at the end that can be
`various shapes. And if you imagine it's -- it's
`relatively stiff, but also flexible, and it has a
`little twist knob at the end.
`
`2 (Pages 2 to 5)
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`Page 2
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`APPEARANCES
`1
`2 Counsel for Plaintiff-Appellee:
`J. THOMAS VITT, ESQUIRE
`3
`Dorsey & Whitney, LLP
`50 South 6th Street, Suite 1500
`Minneapolis, Minnesota 55402
`
`4
`
`Counsel for Defendant-Appellant:
`MATTHEW M. WOLF, ESQUIRE
`Arnold & Porter, LLP
`555 Twelfth Street, NW
`Washington, D.C. 20004-1206
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`Page 3
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`I N D E X
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`PAGE
`2 WITNESS
`3 Argument by Mr. Wolf............................... 4
`4 Argument by Mr. Vitt............................... 42
`5 Rebuttal Argument by Mr. Wolf...................... 73
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`Certificate of Reporter Oath....................... 79
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`JUDGE PLAGER: Does it go in first?
`MR. WOLF: Usually. The guidewire and guide
`catheter end up together in there. Usually the
`guidewire goes in and the guide catheter goes over
`it. There can be exceptions.
`JUDGE PLAGER: Now, when you say the guide
`catheter goes over it, that was one of the
`questions.
`All the way through you gentlemen in your
`briefs talk about the guide catheter goes over the
`wire. Does that mean it's got little rollers that
`it rolls on over the wire or if the wire's above it
`and goes under it then it goes under the -- what is
`the relationship between the guidewire and the guide
`catheter?
`MR. WOLF: So just imagine the guide catheter's
`nothing more than a very small garden hose.
`JUDGE PLAGER: Yeah, okay.
`MR. WOLF: The guidewire is exactly what it
`sounds like. It's a relatively stiff wire.
`JUDGE PLAGER: All right.
`MR. WOLF: The cardiologist, usually through
`the femoral artery, runs the guidewire through the
`vasculature and this is --
`JUDGE MOORE: What's on the end of it,
`Page 7
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`anything? On the end of the guidewire. Is it
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`literally just a wire or does it have some sort of
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`sinker or something on the end of it?
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`MR. WOLF: On the distal end, the part away
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`from the doctor, that's where that pigtail goes.
`5
`JUDGE MOORE: Okay.
`6
`MR. WOLF: At the proximal end there's usually
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`a little handle.
`8
`JUDGE MOORE: You're not allowed to laugh when
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`I ask stupid questions either.
`10
`MR. WOLF: So the guidewire is run through the
`11
`femoral artery, and this is very cool to watch on
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`fluoroscopy, up through the vasculature and across
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`the lesion you're trying to target.
`14
`JUDGE MOORE: Wasn't there a movie or a
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`technical tutorial presented below that possibly we
`16
`could have you give to us? Only if it was part of
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`the record below.
`18
`MR. WOLF: There were -- there were definitely
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`pictures.
`20
`JUDGE MOORE: You said it's cool to watch in a
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`movie, so I was thinking maybe --
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`MR. WOLF: Counsel, do you recall a video?
`23
`MR. VITT: Your Honor, there was no movie.
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`25 Mr. Root's first declaration starting at A-200, and
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`particularly --
`JUDGE MOORE: Okay. Well, no, we'll hear from
`you later. Go ahead.
`MR. WOLF: There was no movie. So --
`JUDGE PLAGER: Is there a cardiologist in the
`audience?
`MR. WOLF: So the guidewire goes up and across
`the lesion, the area of stenosis, where the blockage
`of the artery occurs.
`JUDGE PLAGER: Okay.
`MR. WOLF: So it's now a track. It's like a
`railroad track you're going to run everything else
`along.
`JUDGE PLAGER: But it's just a single wire.
`MR. WOLF: It's a wire.
`JUDGE PLAGER: Okay.
`MR. WOLF: Think of a stiff human hair.
`JUDGE PLAGER: Then what happens?
`MR. WOLF: Then you take the guide catheter,
`which is really just a garden hose. There can be
`bells and whistles. But it runs -- and it's got a
`diameter enough that you can run catheters through
`it. It runs along the guidewire up to the point
`along --
`JUDGE PLAGER: Along, you mean --
`
`Page 9
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`MR. WOLF: Inside it. So imagine --
`JUDGE PLAGER: Hold it. It runs in -- what
`runs inside what?
`MR. WOLF: The guidewire -- so this is the
`guidewire, this is the guide catheter, pardon me.
`That's the relationship.
`JUDGE PLAGER: Oh, the guidewire is inserted
`into the guide catheter as --
`JUDGE MOORE: No, the guidewire's already in
`the body. The catheter's inserted over it.
`JUDGE PLAGER: Oh, the catheter is inserted --
`MR. WOLF: Exactly.
`JUDGE PLAGER: -- is inserted in a way so the
`guidewire ends up in the catheter.
`MR. WOLF: Right. So the guidewire is sticking
`outside the body, and it runs all the way through.
`They're very long.
`JUDGE PLAGER: I've got that much.
`MR. WOLF: And it's across the lesion.
`JUDGE PLAGER: Okay.
`MR. WOLF: So you now have this wire sticking
`out there --
`JUDGE PLAGER: It would be easier to --
`MR. WOLF: Here's the guidewire right here.
`JUDGE PLAGER: Okay.
`
`3 (Pages 6 to 9)
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`MR. WOLF: Out of the body. And you now take
`the tube and put it over the end of the guidewire
`and string it along. So you now have the guidewire
`inside the guide catheter.
`JUDGE MOORE: Back over here, because we record
`this.
`MR. WOLF: I apologize, Your Honor.
`JUDGE PLAGER: So you have the guidewire inside
`the guide catheter. This is the first time I've
`understood that part.
`MR. WOLF: Yes.
`JUDGE PLAGER: Go ahead.
`MR. WOLF: Okay. So then the problem is in
`some circumstances, the guide catheter -- the
`diameter of the guide catheter is too big to get to
`where you want to go. So imagine a small artery, a
`larger guide catheter, and they butt up against each
`other. You want that guide catheter to stay in
`place because subsequently you're going to be
`putting, for example, a stent delivery system
`through it.
`JUDGE MOORE: Is that the purpose of the
`tapered part then?
`MR. WOLF: Yes; but it still can be too big.
`And that's where the products at issue in this case
`
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`MR. WOLF: That's exactly right, Your Honor.
`So you have this guide catheter that's largely a
`consistent diameter and usually does the job, gets
`to where you want to go. But sometimes you need to
`go farther.
`JUDGE PLAGER: To get into the artery.
`MR. WOLF: To get to the lesion you need to get
`to, to the blockage.
`JUDGE MOORE: Right.
`MR. WOLF: And so in 1996 Boston Scientific
`filed the patent, the Adams patent, for what's
`called the guide catheter extension. And really
`what it is is, so a guide catheter's really long.
`Imagine we chopped off the end of it, made the
`end small -- a little bit smaller but much more
`flexible tubing, and just stuck a long push rod on
`it.
`
`JUDGE PLAGER: Now, wait. Hold it. Stuck a
`long push rod on what?
`MR. WOLF: On this -- so this is the garden
`hose that is the guide catheter.
`JUDGE PLAGER: Yeah.
`MR. WOLF: We're going to take another piece of
`slightly smaller garden hose, maybe ten inches, and
`we're going to have a long, maybe hundred centimeter
`Page 13
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`come in.
`JUDGE PLAGER: The coaxial, what they call an
`coaxial catheter.
`MR. WOLF: That's right.
`JUDGE PLAGER: Why is it called a coaxial
`catheter?
`MR. WOLF: So think of a bullseye, one inside
`the other, a coaxial cable like your -- your cable
`television.
`JUDGE PLAGER: Yeah.
`MR. WOLF: It just means that they're
`concentric inside each other.
`JUDGE PLAGER: Okay.
`MR. WOLF: Like the --
`JUDGE PLAGER: So now you're going to run this
`coaxial catheter inside the guide catheter.
`MR. WOLF: Right.
`JUDGE PLAGER: Where is the guidewire at that
`point?
`JUDGE MOORE: It's like those little Russian
`dolls that nest inside each other, right?
`MR. WOLF: Exactly.
`JUDGE MOORE: And you're going to -- you're
`going to find the one that gets to the right sinus
`to get through the artery.
`
`push rod. So we're now --
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`JUDGE PLAGER: And this is to the bottom of
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`this interior hose.
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`MR. WOLF: Right. So we're going to now push
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`it along so the --
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`JUDGE MOORE: Is this picture in the reply
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`brief at Page 4, is this the -- this is the Boston
`7
`Scientific device. Is this what you're describing
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`now?
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`MR. WOLF: Yes, exactly, Your Honor.
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`JUDGE MOORE: Do you have your picture? It
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`might help you to visualize what he said anyway.
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`JUDGE PLAGER: We love pictures.
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`JUDGE CHEN: But that's not the picture of the
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`Adams patent, right?
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`MR. WOLF: Correct, Your Honor.
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`JUDGE CHEN: This is the Guidezilla.
`17
`MR. WOLF: That's correct, Your Honor.
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`JUDGE MOORE: So here you have your push rod.
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`Tell me about the push rod. What does it push?
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`21 What's it doing?
`MR. WOLF: It's pushing that ten inches of
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`guide catheter through the guide catheter extension,
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`so the blue -- so the guide catheter, the long one,
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`looks exactly like the blue to the left of this
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`figure.
`JUDGE MOORE: Yeah.
`MR. WOLF: But it's much, much longer.
`JUDGE MOORE: I see.
`MR. WOLF: So we're now going to push this blue
`inside the guide catheter all the way to the end and
`past the end.
`JUDGE MOORE: So in theory this catheter is a
`narrower diameter so it's going to slide inside the
`other catheter. But I still don't get, what is
`pushing? Like, oh, is -- what are you -- what's the
`push rod pushing?
`MR. WOLF: It's pushing that last ten inches.
`So in order to get that -- so that ten inches, just
`imagine at the end of the day --
`JUDGE MOORE: Okay. So here's a really stupid
`question.
`MR. WOLF: Yeah.
`JUDGE MOORE: So is the flexible tip the part
`going in first and the push rod is what the doctor
`is using to push the whole catheter in or is the
`push rod going in first and the flexible tip is at
`the back end?
`MR. WOLF: The flexible tip is going first.
`JUDGE MOORE: I get it.
`
`Page 15
`MR. WOLF: So you're pushing that -- so imagine
`at the end of the day --
`JUDGE PLAGER: You're pushing it with the push
`rod.
`MR. WOLF: Yes.
`JUDGE PLAGER: And then do you extract the push
`rod?
`MR. WOLF: No, it stays. It's all one piece.
`It's all of a piece.
`JUDGE MOORE: Well, it will ultimately be
`extracting before the surgery is completed.
`MR. WOLF: Right, right. Right, right, right,
`right.
`JUDGE PLAGER: Not too many people walk around
`with push rods in them.
`MR. WOLF: Hopefully not.
`JUDGE PLAGER: The doctor pushes this ten-inch
`extension all the way in to where he or she wants
`it, and leaves it in place, that is, in the guide
`catheter. Actually now it's in the coaxial
`catheter, isn't it?
`MR. WOLF: So imagine that one -- a typical
`procedure might say five inches of the ten inches we
`see in blue remain in the guide catheter or at the
`far end of the guide catheter. The other five
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`Page 16
`inches are now beyond. It's like you've added an
`extension to it.
`JUDGE PLAGER: Where is the coaxial catheter at
`this point?
`JUDGE MOORE: In the body.
`JUDGE PLAGER: It's inside as well.
`MR. WOLF: Yes.
`JUDGE MOORE: Butted up to the artery but not
`being able to get through.
`MR. WOLF: Right.
`JUDGE MOORE: So what goes inside this hole
`then in your device? Like this is -- so this is a
`catheter, right?
`MR. WOLF: Right. And it's big enough.
`JUDGE MOORE: What's going to go into it?
`MR. WOLF: Typically they're an angioplasty
`catheter or a stent delivery catheter or, frankly,
`both.
`JUDGE MOORE: Okay. The thing you're going to
`leave in the body ultimately is going to be fed
`through this interior catheter all the way through
`into the artery, and that's what's going to be left
`there ultimately.
`MR. WOLF: Exactly, the stent, or the balloon,
`whatever the case may be.
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`Page 17
`JUDGE PLAGER: So basically we end up with
`three more or less tubes running up in there, the
`last one having the stent or whatever it is on the
`end of it.
`MR. WOLF: Right.
`JUDGE PLAGER: And all that's done through a
`little piece of the body.
`MR. WOLF: Yes. It's all done typically
`through the groin.
`JUDGE PLAGER: These are very small hoses.
`MR. WOLF: Exactly, Your Honor. Stents are --
`a grain of rice gives you a rough idea of the size
`we're talking about.
`JUDGE MOORE: I think we ought to get going
`though on the argument now, if you don't mind.
`And, don't worry, we'll give you extra time at
`the front end, if you want to devote it exclusively
`to technology, especially if you disagree with
`Mr. Wolf on anything he says.
`JUDGE CHEN: May I ask a follow-up question?
`JUDGE MOORE: Yes, of course.
`JUDGE CHEN: Thank you. A tapered inner
`catheter, do you have a tapered inner catheter that
`works with your Guidezilla? The patent talks about
`a tapered inner catheter that goes inside of the
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`coaxial guide catheter, which is already inside the
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`guide catheter.
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`MR. WOLF: There are companies that sell
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`tapered inner caths.
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`So you have guide catheters, companies sell
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`guide catheters. You could, in theory, use a
`6
`Vascular Solutions' guide extension with a Boston
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`Scientific guide catheter, with a Medtronic stent.
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`So they're each pieces that are different ways
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`to get -- get to the lesion and then either expand
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`it with a balloon or prop it open with a stent or
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`both.
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`So the tapered inner catheter, as I understand
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`Your Honor's question, is not part of this device.
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`It's a device to be used with it.
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`JUDGE CHEN: Right.
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`JUDGE MOORE: Okay, okay. So let's get the
`17
`time started and let you go ahead.
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`Thank you very much. This was very helpful.
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`20 Why don't you launch into your argument.
`MR. WOLF: Thank you, Your Honor.
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`In 1996, Boston Scientific filed the Adams
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`patent. It was the seminal guide catheter extension
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`patent.
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`JUDGE PLAGER: We've read your brief and we
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`know that part of the history. Go ahead.
`MR. WOLF: Right. Adams was not disclosed to
`the patent office; Adams was not considered by the
`patent office.
`All of the claims at issue, including the
`dependent claims that are the subject of this
`appeal, stood rejected in light of a combination
`primarily of Klein, which had a skive and the
`Meotzy, which was a guide catheter. These claims
`were not allowed until the patentee, until VSI,
`added the phrase, "Rail structure without a lumen,"
`to the independent claims.
`JUDGE MOORE: Well, the examiner technically
`added it, right?
`MR. WOLF: Yes, Your Honor. They accepted the
`examiner's --
`JUDGE MOORE: Right.
`MR. WOLF: Absolutely, Your Honor. You're
`correct. In other words, the patent office did not
`view the additional language of Claims 3 and 4 of
`the 032, and the other side opening claims, as
`patentable --
`JUDGE MOORE: Well, let's be clear. What he
`said was he didn't believe, as far as -- I'm saying
`"he," meaning the examiner -- he didn't believe that
`
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`Page 20
`
`non-tubular, non-circular, non-extendable, were
`fully supported by the spec. He wasn't sure about
`that language, so he proposed what appeared to me to
`be alternative language which would maybe embody the
`same concept but would arguably be supported by the
`spec. It wasn't -- that addition was not made in
`response to an obvious miss rejection or
`anticipation.
`MR. WOLF: Understood, Your Honor. But
`understand that Claim 3 and 4 were not deemed
`patentable at any time. So, remember, that what
`you're talking about, that discourse on non-circular
`and like that was a very long prosecution. That was
`in the middle.
`At the beginning there was an obvious miss
`rejection in light of the Meozi, Klein and others.
`Claims 3 and 4, there was not an argument that this
`side opening, these skives, added anything
`patentable. The patent office certainly didn't
`accept that argument. The side opening claims were
`not allowed until the independent claim was
`modified.
`JUDGE PLAGER: And the modification was?
`MR. WOLF: The side opening or the rail
`structure without a lumen language.
`
`Page 21
`
`JUDGE PLAGER: Ah.
`What is the rail structure with or without a
`lumen? What part of that thing you described to us
`earlier, where in all of those tubes is this thing
`called a rail structure?
`MR. WOLF: That's the subject of a 112 issue
`that will come up below. If you go back to the
`figure, Your Honor.
`JUDGE PLAGER: Which figure are we doing?
`MR. WOLF: Four of the reply brief.
`JUDGE MOORE: If you don't mind, if you would
`instead start with the patent, I'd appreciate it.
`There are only four uses of the word "rail" in the
`patent. One associated with Figure 17, I completely
`do not understand what the rail is in Figure 17, nor
`does anything about Figure 17 convince me of what it
`is.
`
`And then there are four other uses, two of
`which are claims, and then one of which is where it
`says, "The present invention is," and it says, "The
`present invention is a coaxial guide catheter that
`is deliverable through a standard guide catheter by
`utilizing a guidewire rail segment to permit
`delivery without blocking the guide catheter." So
`that was -- it's almost like a functional
`
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`Page 22
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`Page 24
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`description of the rail segment.
`1
`So, for me, I'm struggling both in the patent,
`2
`and in Boston Scientific, to figure out what I ought
`3
`to identify as the rail structure.
`4
`MR. WOLF: Your Honor, you raise an excellent
`5
`question. Below -- and your question is awkward
`6
`because of the procedural posture we come to the
`7
`Court in.
`8
`Below we have raised, subsequent to the
`9
`preliminary injunction proceeding, because obviously
`10
`that was short. We have raised a Section 112 issue.
`11
`12 We don't know what the rail is and we intend to move
`for summary judgment, at the appropriate time, that
`13
`there's a failure of written description and likely
`14
`a failure of enablement.
`15
`For purposes of this appeal, what we know is
`16
`what VSI alleges, which is that the substantially
`17
`rigid section, looking at Figure 4, and the --
`18
`JUDGE PLAGER: Wait a minute. Figure 4 of
`19
`what?
`20
`MR. WOLF: I'm sorry, Page 4 of the reply
`21
`brief, the one we were focusing on, just to keep us
`22
`centered.
`23
`JUDGE PLAGER: Right, right. Okay, Page 4.
`24
`MR. WOLF: Page 4. Thank you, Your Honor.
`25
`Page 23
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`JUDGE PLAGER: All right.
`MR. WOLF: Is what they call the collar --
`JUDGE MOORE: Are you in Boston Scientific or
`are you in Figure 4 in the patent?
`MR. WOLF: I'm in -- I'm in the reply brief.
`JUDGE PLAGER: Page 4 of the reply brief.
`JUDGE MOORE: So you're not on the patent,
`you're now moving to the Boston Scientific device?
`MR. WOLF: Well, I'm happy to go to the patent
`as well.
`Your Honor, if you look at -- there's frankly
`not a good picture of what we would call or what
`they've called the rail. Maybe we should leave it
`to Mr. Vitt to describe what they claim the rail is.
`JUDGE PLAGER: Yes. We'll put the same
`question to him.
`JUDGE CHEN: Is it the push rod?
`JUDGE PLAGER: What we want to know is what do
`you think the rail structure is, and your answer is,
`you don't have an idea.
`MR. WOLF: Based on what they've alleged, and
`they said at deposition in the preliminary
`injunction, it's the push rod plus what they call
`the collar, the stiff portion. So it's everything
`to the right of when the tube is rubbery. It's the
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`stiff portion. And hence our first --
`JUDGE MOORE: Why would a push rod -- I
`understand why you want it to be, because it
`arguably has a lumen. But why would a push rod be
`part of what someone would call the rail structure?
`Let's assume for the moment that I don't agree
`with your argument that substantially rigid portion
`is coextensive with rail structure.
`MR. WOLF: Okay.
`JUDGE MOORE: Assume I don't agree with that.
`MR. WOLF: Okay.
`JUDGE MOORE: So now why is the push rod part
`of the rail structure? Because it doesn't guide the
`guidewire like the function says. The push rod is
`irrelevant -- isn't it irrelevant to that guidewire?
`So it doesn't -- I am sort of trying to figure out
`for me what, in the Boston Scientific device, would
`be a rail structure and --
`MR. WOLF: Your Honor, you're absolutely right,
`and this is the 112 issue we've raised and are
`vigorously asserting subsequent to the preliminary
`injunction hearing.
`JUDGE MOORE: I was going to say, why wasn't
`this part of your PI? I mean, maybe that would have
`won the case for you.
`
`Page 25
`MR. WOLF: Well, Your Honor, the problem is, as
`we said in our brief, they came forward with
`Claim 1. That was the entire subject of the brief.
`I mean, there were appendices that referenced other
`claims, but everything in the brief said, let's look
`at Claim 1.
`Our own patent, as has the district court said,
`anticipated Claim 1. We thought this case was
`over --
`JUDGE MOORE: Okay.
`MR. WOLF: -- with the Adams patent.
`JUDGE MOORE: Let's not talk about your patent,
`let's keep going.
`So is the -- would you -- take a step back.
`Forget what they allege.
`Would you typically say a push rod is a portion
`of the rail structure? I mean, you know, last night
`I did what judges are never supposed to do. I sat
`on Google Patents and looked at every use of the
`word "rail" in every catheter patent I could see on
`the entire patent database.
`And so, I mean, I -- I gained what I thought
`might be a sense of what a rail is. I actually
`found that it could be many different things, quite
`frankly.
`
`7 (Pages 22 to 25)
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`MR. WOLF: Right.
`JUDGE MOORE: But what I never saw, ever, was
`the idea that a push rod is part of a rail
`structure. And so, I know, that's extrinsic
`evidence. It's not part of this record. I get
`that. But I think that you can see we're struggling
`with the technology.
`MR. WOLF: Understood. And, Your Honor, I
`don't know what else to say except we agree with
`you.
`JUDGE MOORE: You agree with me that a push rod
`would not typically be part of what someone would
`refer to --
`MR. WOLF: That's right.
`JUDGE MOORE: -- in the art as a rail
`structure.
`MR. WOLF: And we're telling -- we're in the
`process of telling the district court that rail
`structure is unsupported, and we need to know what
`it means. We think the patent's invalid because
`it's unsupported.
`JUDGE CHEN: Well, Mr. Wolf, let me ask you
`this.
`MR. WOLF: Yes.
`JUDGE CHEN: Your Guidezilla --
`
`Page 27
`
`MR. WOLF: Yes.
`JUDGE CHEN: -- the push rod, is it some round,
`cylindrical bar, or is it some flat piece of metal,
`or is it kind of grooved sort of like it has a
`track?
`MR. WOLF: It is -- it is this. It is a
`tube.
`JUDGE MOORE: Except it's closed. It's sealed,
`right?
`MR. WOLF: Right. So for 95 centimeters it is
`this.
`JUDGE CHEN: Okay. I'm just trying to
`understand, is there any part of your push rod that
`has something that could be regarded as a track?
`MR. WOLF: I don't believe so, Your Honor.
`JUDGE CHEN: Because the whole thing is -- is
`basically like a tube?
`MR. WOLF: Right.
`JUDGE CHEN: From beginning to end?
`MR. WOLF: Yes. So it's a tube for 95
`centimeters. At the proximal two centimeters,
`remember I said there's like a little handle, a
`little twisty thing? That screws in here. It's
`just a tab so that the doctor can turn it this way.
`So that screws into the end, and then the two
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`Page 28
`centimeters on this end, it's crimped as part of the
`welding process.
`JUDGE PLAGER: His push rod and the push rod
`presumably in the patent is a solid metal --
`MR. WOLF: Yes.
`JUDGE PLAGER: -- tube. A solid metal wire.
`MR. WOLF: Yeah. Not a tube.
`JUDGE PLAGER: Not a tube, it's a wire. You
`could have used a solid metal wire, but you used a
`tube.
`MR. WOLF: Right.
`JUDGE PLAGER: Closed at both ends.
`MR. WOLF: Right.
`JUDGE PLAGER: Which functions like a wire.
`Now, why did you do that? Did you do that
`because you thought you could get around the patent
`at that point?
`MR. WOLF: It does get around the patent, but
`that's not why we did it.
`So there are three things when you're using a
`push rod that you care about. One is height. You
`want it to be as narrow as possible so it doesn't
`obstruct anything. The second is what they call
`pushability, the ability to -- imagine pushing a
`piece of wet spaghetti. You want it to be able to
`Page 29
`push this way. And the third is flexibility. This
`structure is easier to push than this structure. As
`a matter of mechanical engineering --
`JUDGE PLAGER: Because it has more stability.
`MR. WOLF: Exactly, Your Honor.
`JUDGE PLAGER: By virtue of being in an outer
`shell.
`MR. WOLF: So in the marketing material shown
`to the district court, we advertised to the world
`that we're more pushable because we have a lumen, a
`hypotube. They advertised to the world that they're
`less obstructive. They're flatter. They're two
`different products with two different
`characteristics. We think doctors prefer
`pushability, but that's what makes a horse race.
`But that's why we did the tube --
`JUDGE MOORE: Now the stupid question. You
`said in their patent their push rod is a wire. I
`tell you, I read this whole spec. I couldn't find a
`push rod in their patent.
`And so I actually thought maybe it was Element
`40, which is supposed to be off of the arcuate thing
`and never shown in any figures. But I couldn't
`figure it out. They called that the second
`circumferential portion or something.
`
`8 (Pages 26 to 29)
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`Page 30
`Where do you find a push rod in this patent or
`where do you get the idea that it's a wire which is
`fed?
`MR. WOLF: Well, like in Figure 17, you look at
`112 maybe.
`JUDGE MOORE: Figure what? Huh?
`MR. WOLF: Seventeen.
`JUDGE MOORE: Figure 17.
`Where is your idea that a push rod is a wire in
`that figure?
`MR. WOLF: It's just a visual. This was
`another question I'd throw to Mr. Vitt, because we
`are similarly confounded.
`JUDGE MOORE: No, but you started -- but I
`thought maybe you knew something that I didn't,
`because you said, "Their push rod," and I assumed
`you meant their patented push rod.
`MR. WOLF: No. I'm sorry, Your Honor.
`JUDGE MOORE: You're talking about their
`accused device used as a guidewire.
`MR. WOLF: Yes.
`JUDGE MOORE: Okay. Don't talk about their
`accused device. That's not relevant.
`MR. WOLF: Although they've asserted that it's
`coextensive with the patent claim, so it's -- it's
`Page 31
`
`in some sense irrelevant in some sense --
`JUDGE MOORE: But a wire isn't substantially
`rigid. It's not a substantially rigid portion of
`the device. So if they -- if their wire is their
`push rod, then it's not part of the substantially
`rigid portion as they've claimed it, right?
`MR. WOLF: They claim that their wire is
`substantially rigid, and our wire, our push rod, is
`roughly of the same rigidity, but much more pushable
`as their wire. They claim it is substantially
`rigid.
`Your Honor, I have just about 30 seconds before
`I'm in rebuttal time. I want to --
`JUDGE MOORE: I don't think you have to worry
`about your time.
`JUDGE PLAGER: You've got time. Go ahead.
`MR. WOLF: Thank you.
`I wanted to emphasize something about -- so the
`patent office said there's nothing about a skived
`opening that renders this patentable.
`JUDGE CHEN: Where did -- where did they say
`that?
`MR. WOLF: Well, Klein -- they found that Klein
`disclosed the elements of three and four, and there
`was never a point where that was overcome.
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`So the Klein reference was found to, in
`combination with Meotzy, render Claims 3 and 4 --
`I'm using that 032 patent --
`JUDGE PLAGER: You're now talking about the
`patent office initially.
`MR. WOLF: Right. So now we go to the district
`court.
`JUDGE PLAGER: Yeah.
`MR. WOLF: And we argue --
`JUDGE PLAGER: What did the district court say
`about Klein?
`MR. WOLF: The district court didn't say
`anything about Klein.
`JUDGE PLAGER: Right. So Klein is not before
`
`MR. WOLF: Well, Your Honor, we -- the waiver
`issue is a big red herring here.
`But we argued extensively at the preliminary
`injunction hearing, after the reply brief focused on
`Claims 3 and 4, we talked all about the prosecution
`history of Klein, and the district court simply
`ignored it, simply ignored it.
`So we have the cites in the briefs where we
`talked to the Court, we gave the cites to the
`prosecution history, etcetera, and it just doesn't
`Page 33
`
`us.
`
`show up in the district court file.
`JUDGE CHEN: I don't understand why you did not
`bring up Klein in your opposition to the other
`side's motion for preliminary injunction.
`MR. WOLF: Because we felt it was redundant of
`Steinke, Alt and Verbeke, as well as -- and this is
`really important, Your Honor --
`JU