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`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
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`1
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`CIVIL ACTION
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`NO. 19-1681-CFC
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`::::::::::::
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`THE TRUSTEES OF COLUMBIA
`UNIVERSITY IN THE CITY OF
`NEW YORK AND QIAGEN
`SCIENCES, LLC,
`
`Plaintiffs,
`
`vs.
`ILLUMINA, INC.,
`
`Defendant.
`
`
` - - -
`Wilmington, Delaware
`Wednesday, September 2, 2020
`9:00 o'clock, a.m.
` ***Telephone conference
`
` - - -
`BEFORE: HONORABLE COLM F. CONNOLLY, U.S.D.C.J.
` - - -
`
`
`
`APPEARANCES:
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`BY: JACK B. BLUMENFELD, ESQ.
`
`-and-
`
`Valerie J. Gunning
`Official Court Reporter
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`Illumina Ex. 1161
`Illumina v. Columbia
`IPR2020-01177
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`APPEARANCES (Continued):
`
`VENABLE LLP
`BY: JOHN D. MURNANE, ESQ.,
` ROBERT S. SCHWARTZ, ESQ.,
` JUSTIN J. OLIVER, ESQ. and
` ZACHARY L. GARRETT, ESQ.
` (New York, New York)
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` Counsel for Plaintiff
` The Trustees of Columbia University in the.
` City of New York
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`BALLARD SPAHR LLP
`BY: BETH MOSKOW-SCHNOLL, ESQ.
`
` -and-
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`BALLARD SPAHR LLP
`BY: ROBERT R. BARON, JR., ESQ.,
` SCOTT MARTY, ESQ. and.
` MARC S. SEGAL, ESQ.
` (Philadelphia, Pennsylvania)
`
` Counsel for Plaintiff
` Qiagen Sciences, LLC
`
`ASHBY & GEDDES
`BY: STEVEN J. BALICK, ESQ.
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`-and-
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`APPEARANCES (Continued):
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`WEIL, GOTSHAL & MANGES LLP
`BY: EDWARD R. REINES, ESQ. and
`DEREK C. WALTER, ESQ.
`(Redwood Shores, California)
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`Counsel for Defendant
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` (The telephone conference was held beginning at
`9:00 a.m.)
`
`THE COURT: All right. Good morning, counsel.
`How about if we have the plaintiffs go first and just
`identify counsel, please.
`MR. BLUMENFELD: Your Honor, it's Jack
`Blumenfeld from Morris Nichols for Columbia, and also on for
`Columbia from the Venable firm are John Murnane, Robert
`Schwartz, Zachary Garrett and Justin Oliver, and I believe
`from Columbia are Jeff Kessler and Karen Hoody.
`THE COURT: Okay. Thank you, Mr. Blumenfeld.
`I'm sorry you were interrupted. Is there anything else you
`needed to say?
`MR. BLUMENFELD: No, I don't think so. Thank
`you, your Honor.
`THE COURT: All right.
`MS. MOSKOW-SCHNOLL: Your Honor on behalf of
`Qiagen, this is Beth Moskow-Schnoll from Ballard Spahr, and
`appearing for Qiagen today are Robert Baron, Scott Marty,
`Tom Sikora.
`Your Honor, I'm sorry. Scott I don't believe
`has entered an appearance, but he is attending, as is Mariah
`Trisch. Marc Segal though is appearing on behalf of Qiagen.
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`And we also have Jurgen Schneider, who is the Vice President
`of Global IP and IP litigation for Qiagen here today as
`well, your Honor.
`THE COURT: All right. Thanks, Ms.
`Moskow-Schnoll.
`How about for Illumina?
`MR. BALICK: Your Honor, good morning. Steven
`Balick from Ashby & Geddes.
`I'm joined by co-counsel from Weil Gotshal,
`Edward Reines and Derek Walter, and I believe we also have a
`couple of client representatives on from Illumina. Roland
`Schwillinski and Marcus Burch.
`THE COURT: All right. Great.
`All right. So before we kind of dive into each
`side's arguments, I wanted to address the question I sent
`out to counsel yesterday.
`As I read the papers, I'm not so sure the
`disputed term really is Y or even Y in the box with the Y in
`the schematic. I wonder whether the disputed term is really
`linker, but let me hear from plaintiffs first.
`MR. BARON: Good morning, Your Honor. This is
`Rob Baron for Qiagen. I will be handling Y on behalf of the
`plaintiffs.
`I think that Y is the right term. They
`are linked together because Y includes a linker that has
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`certain features, but we call these picture claims for a
`reason. The picture is I think important, and what it
`shows is that Y is a structure that links the base to the
`tag.
`
`So these are modified nucleotides. Natural
`nucleotides don't have a tag. You have to link a tag so
`that we know what the identity of this nucleotide is in the
`sequencing process, and linkers are a very well-known
`chemical structure that does that, that links two things
`together.
`
`And we agree, the parties agree that the linker,
`that Y connects the base to the tag. Our issue is there's
`nothing in the claim or in the patent or in the
`specification that limits it to being a structure that is
`made by one linker.
`So I think that as you'll see in the
`specification, and we cite this in our briefs, in both the
`specification in our patent, which refers to a single linker
`and that has examples that have been made or synthesized by
`having putting multiple linkers together as well as
`Illumina's, their patent, the same technology where they say
`linker, and then they use --
`THE COURT: All right. Hold up. Let's not get
`
`there yet.
`
`MR. BARON: Okay.
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`THE COURT: I want to step back.
`Okay. You are asking me to construe a term and
`you propose as a construction of the term, "Represent a part
`of the nucleotide analogue attaching the base of the
`nucleotide analogue to a tag as depicted in the illustration
`of the nucleotide analogue in the claim."
`You're asking me to substitute that language for
`the disputed term, which you say is Y. Now, if I substitute
`that language for Y, then when I get to the claim, I'm going
`to go and I'm going to read, a wherein tag represents a
`detectable fluorescent moiety. "Wherein represents" a part
`of the nucleotide analogue attaching the base of the
`nucleotide analogue to a tag as depicted in the illustration
`of the nucleotide analogue in the claim represents a
`chemically cleavable chemical linker."
`That makes no sense. I mean, when you are
`asking me to construe a term, you're asking me to substitute
`your proposed construction for the term in the patent,
`because that's what we're going to tell the jury. This
`would lead to -- I mean, I think this would completely
`confuse anybody who would read that.
`So that's why I go back to, like, I think we
`need to step back. You know, what is it you want me to
`construe, because right now the way you want me to construe
`it, I just read to you what I would read to the jury if I
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`substitute for Y the language you want and that makes no
`sense to me.
`MR. BARON: Your Honor, I think that we were
`trying to say, lead to the illustration and recognize it in
`our construction, trying not to use linker, because linker
`was just a couple words away.
`We're all for --
`THE COURT: Well, wait. That doesn't make sense
`to me either. I mean, respectfully here, like you're asking
`me to construe a word, a term, and when you do that, you
`substitute the proposed construction for the term in the
`language of the claim, and that's why I did think maybe you
`meant it's Y in the box. In other words, you're saying we
`would tell the jury that when they look at the diagram in
`claim 1, when it comes to the Y in that rectangle, they are
`to interpret that Y in the rectangle to mean, and I guess
`you're going to say the Y in the rectangle represents a part
`of the nucleotide analogue. That could be, although I don't
`really think that's what you are really all about.
`I think what you want -- I mean, what makes more
`sense to me is when it comes to the language Y represents a
`chemically cleavable chemical linker, what you want me to
`say, I guess what you want me to say, which is that the a
`chemically cleavable chemical linker to be more than one
`chemically cleavable chemical linker. I think that's
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`substantively what you are trying to accomplish.
`MR. BARON: Your Honor, you're right, and we
`would not have -- we obviously want to get it right and
`clear for the jury, so I don't have a problem with moving
`there like that, and I think that you've put your finger
`exactly on it, that the issue, inelegant words that we may
`have proffered aside, is we think that a linker was clearly
`offered in the patent, known in the field to be the
`structure that connects the base of the tag, and that
`there's nothing in the patent, there's nothing in the
`specification, there's nothing that says that it must be
`made only by one linker, that you can't make -- it can't
`be made up or synthesized by putting various linkers
`together.
`
`And that's --
`THE COURT: Frankly, then, I get that. That's a
`summary of, you know, as I say, the bulk of your argument.
`So what term do you want me -- like, how would
`you want the jury to be instructed?
`MR. BARON: So I think that if you would like me
`to shift it from Y to linker --
`THE COURT: First of all, don't get me wrong.
`It's not what I want or what I like.
`MR. BARON: What makes sense.
`THE COURT: I'm just trying to make sense. This
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`is not the first case I've had with patent lawyers where
`they say, well, here's the term and then, you know, for
`instance, I often -- it's amazing how often I get a disputed
`term where the term is indisputably a verb and yet the
`proposed construction is for a noun. It happens all the
`time, and a jury would be completely flummoxed by that. And
`that's what I felt like here. You are asking me to
`substitute this language where Y is and it just makes no
`sense if I do it.
`So --
`MR. BARON: Why don't we try linker wherein Y
`represents the chemically cleavable linker being a chemical
`structure made of one or more linkers that attaches the base
`to the tag?
`THE COURT: So what is the term now you think I
`should be construing?
`MR. BARON: We're still comfortable with Y, and
`I think that because -- I mean, part of the challenge, Your
`Honor, is that this is a very unusual claim because it is an
`illustration, and we think that Y is the chemical structure
`that links the base of the tag and that could be made up of
`one or more linkers.
`THE COURT: Okay.
`MR. BARON: I think --
`THE COURT: So maybe then this. So do you want
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`to say the disputed term that we're going to say to the jury
`is, and we'll show it pictorially to them, we'll put Y in
`the rectangle and we're going to define Y in the rectangle
`to mean something. Do you want to do it this way as opposed
`to --
`
`MR. BARON: Yes.
`THE COURT: -- as opposed to when we get to the
`Y, the capital Y in the language of the claim at line 56 of
`column 33?
`
`So are you proposing then what we do is we tell
`the jury when they look at the picture in the third, what
`would be the third line of claim 1, we tell them Y in the
`rectangle means, and then you tell me what do we tell the
`jury it means? What does Y in the rectangle mean?
`MR. BARON: Chemical structure made of one or
`more linkers.
`THE COURT: Okay. Hold on. Chemical structure.
`All right. A chemical structure made of what? One or more
`linkers?
`
`MR. BARON: That attaches the base to the tag.
`But to your point, Your Honor.
`THE COURT: Hold on. Let me write it down.
`That attaches the base to the tag. Okay. Go ahead.
`MR. BARON: And on the point that Y is a
`chemical structure that attaches the base to the tag, the
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`parties don't disagree about that. They are trying to make
`this --
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`THE COURT: Right.
`MR. BARON: You said Y. That means one linker.
`THE COURT: Yes. Actually, I'm really familiar
`with that argument.
`MR. BARON: Okay.
`THE COURT: Honest to God, you must have
`repeated your briefing, you know. I think you repeated
`yourself like five times at least in the briefing on that.
`It was tortious to get through the repetition. I get that
`argument. I'm just trying to get clarity on what we are
`going to actually construe for the jury.
`So it sounds to me where you are right now is,
`the disputed term is really Y in the box. We would show
`that to the jury and we would instruct them if you had your
`way, that that box with the Y in it is a chemical structure
`made of one or more linkers that attaches the base to the
`tag, unquote. Is that right?
`MR. BARON: Yes.
`THE COURT: All right. Let me hear from the
`defense. What do you think we should be construing for the
`jury here?
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`MR. REINES: Thank you, Your Honor. This is Ed
`
`Reines.
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`I think Your Honor makes a very, very good
`point. I think the complication comes from the fact that
`the symbol Y in the figure represents a linker, so in the
`sense Y is the linker or at least represents the linker in
`the nomenclature of the claim. So that's I think the root
`of the problem.
`I think the Court is correct, that if you are
`looking at the prose in the wherein clause at line 57, that
`the constructions don't fit neatly in there at all, either
`party's for that matter, and that in that sense, if you were
`coupling the construction that the parties are asking you to
`set forth, there it would really be the term linker that's
`being construed. However, you know, Y is the shorthand that
`was used during prosecution history because Y represents the
`linker.
`
`So I think perhaps the solution, and, again, I
`think the Court is right about this as well, is to take -- I
`would just slightly modify it -- is take the Y in the box
`that is superimposed over the linker and show everything
`essentially from the tag to what is going to look to a
`layperson like a pentagon, which is the base. And so it's
`the Y superimposed, and then you could see the two ends of
`the linker, either side of it, and take that and have that
`be the construction. But Your Honor is correct, that if you
`then plug that construction into where Y appears in the
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`text, you have cumbersome language, and so there it might
`come up with a linker.
`So I guess the long and short of it is the best
`solution we could have due to the hybrid nature of the
`claim, both the figure and prose, would be to detect the
`figure that we have all talked about, Y superimposed over
`the linker, and have that construed.
`THE COURT: All right. And I think you're onto
`something that makes sense to me, which is what you would
`construe is really, the rectangle box with the Y with the
`angled line coming out of the left side of the Y attaching
`to the ring or to the base, and you would also include on
`the right side of the rectangle the connector to the tag.
`You would expand it, in other words.
`MR. REINES: That's correct, Your Honor, and I
`do want to thank you for surfacing this issue that the
`parties didn't.
`THE COURT: All right. So how would you define
`that? Assuming that's what we're going to construe for a
`moment, the Y with two lines coming out, what's your
`definition? I mean --
`MR. REINES: Yes.
`THE COURT: You want --
`MR. REINES: Go ahead.
`THE COURT: Go ahead, go ahead.
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`MR. REINES: No. That's okay. I apologize.
`So I think we might change the article at the
`beginning of our construction from "a" to "the," but it's a
`single linker that directly connects the base to the label.
`That certainly fits in the prose over linker and maybe fits
`Y in the prose, but certainly would apply to the aspect of
`the figure that the Court just defined.
`THE COURT: So let me ask you: Would you accept
`this as the construction: "The chemical structure that
`attaches the base to the tag"?
`MR. REINES: No, your Honor, and, again, I want
`to keep this orderly the way the Court wants us to run this
`per your agenda, but for the reason, you know, the primary
`piece of evidence, as the Court could tell from the
`briefing, is in the IPR, Columbia stated that --
`THE COURT: Yes. Actually, wait. Hold up. I
`will give you an opportunity. We will go over that.
`There's a point in the prosecution history where
`if you look at JA54, where the patent owner defines chemical
`linker, which it says in the context of the claimed feature
`Y, chemical linker means a chemical moiety attached by a
`covalent bond at one end to a specified position on the base
`of the nucleotide, and at the other end, to a tag.
`And you're telling me you can't live with that
`definition. Is that right?
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`MR. REINES: That's correct, Your Honor.
`THE COURT: Okay.
`MR. REINES: Yes.
`THE COURT: All right. So let me have your
`proposal. Give me what is your -- you wanted to define the
`Y in the box with the two lines as "a single linker that
`directly connects the base to the label." Is that what you
`want?
`
`MR. REINES: That's correct. Yes, Your Honor.
`THE COURT: Okay. Now, let me ask the
`plaintiff. Do you disagree as a starting point that at
`bottom, the disputed term really is the Y in the box with
`the two lines emanating out of it, one attaching to the base
`and one attaching to the tag? Is there agreement on that?
`MR. REINES: I agree.
`THE COURT: You agree with that?
`MR. REINES: Yes.
`THE COURT: All right. Okay. And then if we
`gave that instruction to the jury, is it your position that
`we just wouldn't say anything about lines 50 -- sorry. We
`would not then further instruct the jury about the term, the
`written term Y in line 56. We would just stay silent on
`that. We would just offer an instruction about the Y in the
`box with the two lines coming out. Is that right?
`MR. REINES: That's right.
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`THE COURT: All right. I'm not sure if this is
`going to work. I still think there are going to be problems
`for the jury. But let's hear argument now. We'll just
`assume for argument's sake right now that the disputed term
`is the Y in the box with the two lines, and if plaintiffs
`want to go first, I will hear them on that.
`MR. BARON: Thank you, Your Honor. Well, I
`think, and I don't want to be repetitive, and I know that
`you've read our briefs, but I think the essence of the issue
`here is that they want to limit Y to something that can only
`be synthesized with a single linker when that's not what the
`patent offers.
`THE COURT: All right.
`MR. BARON: The patent does refer --
`THE COURT: Go from best argument to worst
`argument. What's your best argument?
`MR. BARON: The best argument is that our patent
`says linker, single tense, and then it illustrates it with a
`linker that's made up of two different linkers. And this is
`not just something that is a lucky break. This is what the
`field was. This is how everyone understood what a linker
`was. Both Columbia and Illumina in their similar patent
`acknowledge that a cleavable linker is something that was
`well-known. And --
`THE COURT: So how do you square that everybody
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`in the field knows that given that your inventor in a
`surreply made it about as clear as can be that Y is a single
`linker? And take a look at 95, if I remember. Yes. I
`mean, on JA95 your patent owner writes that Illumina's
`double linker is excluded from the claim, which requires one
`linker, Y, not two linkers, Y Y.
`Isn't that as clear as it gets?
`MR. BARON: Your Honor, I actually don't think
`that's very clear, and I think that the context is
`important. This was a separate patent. It was in IPR where
`Illumina was presenting a piece of art called Dower, which
`has an F MOM linker that exists, then is it obvious, that
`feature of the patent.
`And in a deposition, they indicated --
`THE COURT: Hold up.
`MR. BARON: In the case --
`THE COURT: I know it's hard on the phone.
`We're going to talk over each other, it's hard, but you've
`got a lot of statements in there.
`Let's start with kind of the premise, the first
`statement. You distinguished it because you're saying it's
`addressing different patents. Now, you don't disagree this
`is intrinsic evidence. Right?
`MR. BARON: Yes, I think that this is intrinsic
`evidence in that it's incorporated. I think that there's an
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`argument that because it's a different patent in different
`terms, but I think it's fair for them to point it out, but I
`don't think --
`THE COURT: Well, you point it out. You point
`out the same -- you rely on this for intrinsic evidence, not
`the particular quote, but other aspects of the PTAB
`proceeding you cite in your brief. Right?
`MR. BARON: Yes, and I think that that is an
`important point. What happened was, Illumina basically
`starts making the argument based on something their expert
`says in a deposition to recover after being, conceding that
`his prior art doesn't render obvious our linker. He says,
`well, you can throw an additional linker in there and he
`references some site called Seitz, and we're reacting
`against that.
`I think that what Columbia was --
`THE COURT: Hold on. What I don't understand
`though is, and I will let you finish, but, again, it's hard
`on the phone. Why I have a really hard time, I guess, with
`your argument is you rely on the PTAB proceedings as
`intrinsic evidence, and you want me to say that because
`Illumina took a certain position in the course of that
`proceeding, I ought to basically find them estopped from
`arguing the opposite in this proceeding. But to me, I mean,
`if I go back to Phillips, right, I mean, Phillips, in
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`Phillips, the Federal Circuit talked about why these types
`of proceedings constitute intrinsic evidence, and the whole
`point of it is, it's that it tells us how the inventor
`understood the patent.
`So I understand if I'm going to look at this
`proceeding why under Phillips I can look at what the
`inventor said, and that's why to me, the Y link being
`identified as a single link as compared to the Y Y double
`link is important.
`It seems to me that under Phillips, what
`Illumina said, I question whether it's even intrinsic
`evidence, but the point of Phillips is, hey, if you want
`insight into what the inventor says her own invention is, we
`go to the prosecution history, and that includes PTAB
`proceedings.
`So you're the one that brings this up in your
`briefing and then you don't want me to look at what your
`inventor says. You want to basically focus on what Illumina
`says. So help me out.
`MR. BARON: So we're not afraid of what we said.
`It is what it is. In that other proceeding, Illumina was
`taking the argument that two Ys would teach the current
`linker limitation that's the same in this patent. And I
`think that Columbia understood that to be a two Y argument,
`not a two-linker argument, and they reacted to it. This
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`isn't a two Y argument. This is what does Y mean.
`I also think that it was clear that what they
`were reacting to in Illumina, if you look at page 53 of
`their surreply, it concedes this. The point was -- hold on.
`Two-thirds of the way after the petition, after the response
`in a deposition before your reply brief, you all of a sudden
`bring this new theory up, and there's no evidence about the
`other limitations in Y, which is, because, remember, this is
`about rendering, trying to render that patent obvious,
`Illumina's efforts to render that patent obvious.
`So there was no proof or substance to whether it
`was stable in the incorporation process, whether it could be
`incorporated or cleavable, no evidence. And if you look at
`the surreply in this case, Illumina concedes the point. It
`says that we're calling attention to what they call the
`double linker because they were improving in terms of
`stability an attachment chemistry and outside the scope of
`the term Y and, in fact, they were unproven in terms of that
`scope.
`
`So I don't think it's clear and unmistakable
`that we're saying that Y -- the issue is, was it clear
`and unmistakable that we're saying that Y can only be
`made of a single linker, and why would we say that when our
`own specification makes that clear. Later in the
`prosecution history we point to the figures, Figures 7 and 8
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`in the patent to clarify for the Examiner why Y is not
`indefinite.
`It doesn't make sense, and if it was
`something -- I mean, I don't think that this should turn on
`a gotcha, you know, term of a phrase in some other
`proceeding. I think it has to be clear and unmistakable,
`but there's another issue also, which we briefed, and I that
`Illumina's briefs are just off on this as a matter of law.
`And that said, one, as you know, the PTAB
`rejected whatever it is that we -- Columbia said in that IPR
`brief, the PTAB said if you are saying this, that it's
`restricted to a single linker, we respect that.
`And --
`THE COURT: Just so you'll know, I'm not paying
`any attention to what the PTAB said on the issue. It's a
`different standard. So I don't find that a compelling
`argument, so I'm not really interested in that.
`MR. BARON: Okay. Well, I think that what I
`understand to the extent that they're arguing some kind of
`disclaimer, then I think that the law, and if you look at
`Power Integrations, it is important, and the whole notion,
`the whole public policy behind the concept that they're
`invoking is public notice, is fairness to the competitor of
`the patentee.
`And they all turn, all of these cases, every
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`single one in the slides they put and every single one in
`that page in their surreply where they have the string cite
`all are completely distinguishable, and Power Integrations
`discusses this, because in all of those, the patent was
`granted. So that's why public notice is important.
`The argument of the patentee was rejected, but
`the patent was allowed. Here, the patent was disallowed.
`And it's -- the public notice is very different because the
`Office just said we reject, we reject your whole approach.
`The reason for that, for all of those cases is only when the
`claim is allowed, and they cite to a Supreme Court case
`supporting that.
`This is about claim -- this is about claims that
`are allowed, not disallowed, because that's when public
`notice is important. That's when it's important for someone
`to look at the entire intrinsic record, including that, to
`understand and try and advocate what's okay and what's not
`okay given that the patent is out there.
`The other thing is it doesn't dismiss -- even if
`it was relevant, it doesn't dismiss the entire intrinsic
`record, the claim and the specification, the rest of the
`prosecution history. In all of those cases, the statement
`at issue, it's like the cherry on top. It was already in
`each case, whether it was the claim language or it was the
`specification, the Court had clearly already adopted the
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`more limited claim construction.
`So here, on the other hand, it's the one thing
`they found. I frankly don't think but for that sentence in
`that surreply, we would even be arguing over this.
`THE COURT: All right. Let's do this. All
`right. Let's back up. You said your best argument is that
`basically, what? Figures 8 and 16 have a double linker.
`That's your best argument?
`MR. BARON: Well, it's 7, Figures 7 and 8.
`THE COURT: Oh.
`MR. BARON: But I think that in combination with
`the fact that also I think that Illumina's own reference to
`the cleavable linker being well-known and giving examples
`and using multiple linkers is -- I mean, that's not a
`coincidence.
`THE COURT: Okay. So I just want to back up. I
`will let you do all of that.
`So it sounds like your second best argument is
`what Illumina said during the PTAB proceeding. So just for
`clarity though, on page 25 you write that the structure that
`equates to Y in the claimed structure in Figures 8 and 16
`are not limited to a single linker. So you're telling me
`it's not 8 and 16, it's 7 and 8. Is that right?
`MR. BARON: So page 25 of the brief. It might
`be Figure 6. 16 might be wrong or it might be the method
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`claim. I know it's Figure 7 and 8 for sure, and we
`apologize if that's an error.
`THE COURT: You repeat it on page 25. This
`would exclude the embodiment shown in Figures 8 and 16, so
`just so I have it clear.
`MR. BARON: No. I think that Figure 16 also
`shows two linkers.
`THE COURT: It does.
`MR. BARON: In the diagram. It's really pretty
`much the same thing. I think that we --
`THE COURT: Okay. That's okay. I mean, I just
`want to make sure.
`So your best argument you're saying is that if I
`construe the term to encompass only a single linker, I'm
`going to exclude three embodiments -- Figures 7, 8 and 16.
`Right? That sounds like your best argument you're telling
`me.
`
`MR. BARON: That's right.
`THE COURT: And your second best argument is
`that Illumina basically made statements during the course of
`the PTAB proceeding to indicate that they know that there
`can be more than one linker. Right?
`MR. BARON: Right. So this is just, I think
`it's clear that it's ubiquitous in the field. Linker --
`THE COURT: Well, what's your evidence of that?
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`You know, you didn't submit extrinsic evidence. You want to
`base it on intrinsic evidence. So your evidence that linker
`in the field can encompass more than one linker, you're
`telling me the first piece of evidence you're going to cite,
`which I have to go and prioritize your best words. You're
`saying the best evidence is Illumina's statements during the
`PTAB. Right?
`MR. BARON: Yes.
`THE COURT: All right. What's next?
`MR. BARON: Well, we thought that we really did
`try to keep it to the intrinsic record, so the other
`evidence on that that's in the joint appendix besides
`Illumina as well as our use of it is there is an article,
`JA -- sorry. I will get that figure for you in a second,
`but there's one other article that discusses multiple
`linkers synthesized to --
`THE COURT: Right. Isn't that extrinsic
`
`evidence?
`
`MR. BARON: It is, and so that's why we kind of
`focus, I focus on our own patent. And remember also that
`when that patent application, there was an office action,
`the Examiner said, I think Y sounds indefinite, and we said,
`it's not indefinite because these are well-known, and we
`direct the Examiner to Figures 7 and 8. I don't think they
`actually said 16 in that one. And that was -- that was
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`sufficient.
`The also directed us to other art that also was
`used by Illumina in the IPRs that also used two linkers.
`That's not in the joint appendix, but it's in there.
`And so I think that people understood, and I
`think this also gets to the nub of the kind of semantic
`issue here. A linker -- I'm trying to think of a metaphor,
`Your Honor. The only thing I can come up with is a garden
`hose.
`
`Sometimes, you know, a linker is the structure
`that connects the base to the tag, but it's made up
`sometimes of linkers. Just like if you have ever watered a
`flower bed 50 feet away and you don't have a 50-foot hose,
`you sometimes tie two or three hoses together to get to it
`and it's still a hose and it's the same thing.
`The bottom line is there's nothin
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