you will hear arguments next in case number eighteen one six five seven from a life international against gnc corporation my name is bill lichens i represent stanford university the district court here below by finding that there was one gram threshold in the four five nine that claim construction was wrong for a number of different reasons suppose i did not really think that was a claim construction so the issue was whether it found a one gram limitation in the four five nine but rather four five nine claim requiring a certain kind of nitric oxide enhancement reaction as a matter of fact in the world required one gram which i gather your expert testified to based on public knowledge before the filing of a lot so pretty irrelevant what about it certainly wasn't post filing of the lawsuit so in reply before we put in was a seven hundred fifty milligram hypothetical if you put in seven hundred fifty milligrams then you could conceivably not infringe claim  you know the limitations of claim one can't be satisfied unless there is a wind gram of l armenian available and so the limitation claim one still would not be satisfied even if the range limitation in satisfied so you know i understand your answer so when this one has claimed one actually get infringed before the study or after the study so let's just say for the sake of argument that a study that says one brown happens in one nine hundred ninety nine the patent you're talking about the second step but the truth the matter is that you can't infringe before and then all of a sudden you do it i'm sorry that's backwards you can infringe before and then when there's a study that says oh eureka one gram is not effective then that becomes not infringing we're not experts they hit missions all the time this happened at trial facts come out and they impact that second step of the infringement because well for starters  you're talking about the effect of amount the prophylactic dose and effect amount if you're talking about that effect of amount what you're saying is that over time that can change right well it'd be the views of experts as to what  the x effective amount can certainly change and it's just still says that's a matter for the jury to decide whether they believe expert day or expert be based on the most recent science that they bring into the court and why is that  in your view because that's the second step in the infringement by an in the in application of the proper construed claim to the accused or in this case the method one but that effective amount was actually  contrary to claim twenty it's counter to the specification the teachings of the patent and and everything from that timeframe the expert here said in one thousand nine hundred three when this cat was file lawsuit and with that that testimony came up in the invalidity trial three years after the pattern expired there in the in the fees preceding i don't remember tell me if i'm wrong i'm sorry in the fees preceding tell me if i'm wrong about this i don't deposition the guy's name the general sorry the gentleman's name was boger b o g r dr boger testified in deposition and at trial he was asked hey there's a piece of prior art that's point two five to five milligrams did you did you require one point would point to five be effective and he said no at trial he was pushing said would point to five be effective consistent with his deposition he said no he said no because the normal human body  patent that say that that would be ineffective he's in pushed for one question said what one gram i don't and he's testimonies fairly obtuse on that but what he's getting out as he's talking about studies post filing undisputed fact that there was invalid the because there was a broad range covered by these claims right but the problem here is that there was a lawsuit which was initiated where at least as found by the district judge substantial portions of which were inconsistent with known evidence about the amount required for efficacy that's the way the district judge viewed it so that either known or should have been known that the amounts at issue in many of these products were not sufficient to be effective we're honored it wasn't known and we know that it was well as of two thousand and thirteen when the filing of lawsuit occurred because the standard here is whether or not you have a reason basis to file suit the artificial unleashing standard that's assigned to a course you know is not assigned to patty filing suit they do not have to know every single study and what we had here at the outset of the case were three important facts one was that the claim itself did not have any limiting she was of the market order from the prior case in the current limitations but most importantly even putting aside the woods decoration what we have is n that was never tested in terms infringement but we do know that during the case and i'm right in thinking this is my recollection correct me if i'm wrong that with the exception of claim three of the zero six and its dependent these these sufficiency yes yes and i think it's important in that context because what that shows is the imminent reasonable cause of mr cramer's belief that any dose for the four five one pattern would have the sufficient enough because we know filing a lawsuit would that enhancement occur with the doses that i'm seeing on these labels the factual question it was seems not to have been investigated and and if i don't understand why it's reasonable to say any amount would do without investigating efficacy well in terms of efficacy that's a statements on the labels themselves but we know from another critical fact that it was reasonable to believe any dose w satisfy that amount sufficient in the invalidity contentions that the defendants filed they said and i quote for the sufficient term any amount of ill argument inherently enhances nitric oxide production particular phrase is repeated several times there's also tet one zero four two four and one zero four two seven and the same statement appears there where they say any i don't recall defendants were representing that any amount of arguing would would invalidate in addition to that the defendants also for the four five nine pat itself said that they sort of products with one hundred five milligrams that's it a one zero four zero three the certain validity based on a product that had two hundred fifty milligrams that's on a one zero three so throughout this case to the fund its position was any amount of argentine would suffice that was identical to mr cramer's testimony that any dose in this particular patent would indeed in france yet the district court to back up first second i'm looking at page ten for twenty one and the claim limitation relied on is it says having an amount of l r getting sufficient to increase the level of nitric oxide production a seven seven one zero of the appendix you can see where the district court construed together in the parties were arguing that they mean the same thing across the nine one six patent and the four five nine that so you have these clear statements for the four five nine patent the invalid  contention said products of one hundred five milligrams two hundred fifty milligrams invalidated in the construction of the term for sufficient amount they said any amount that's wholly consistent with what mr cramer was saying at the outset of the case and indeed there were successful and that's which each of choice the bifurcated state infringement made these broad claims took advantage of that to then invalidate the patent which is this record agreed with and then sent packing up their bags and going home and this theory they changed the rules of the game at the end and they came back and said all along you should have known that you had a one gram amount and just so you'd mentioned in your previous questions that things do happen to trial and the only clear statement we had here from the expert that on grammatical was a trial but at the outset of the case that experts statement did not exist it was reasonable shown by the defendants continued it districts opinion suggests that in doing the analysis  testimony on on that fact is very clear and indeed he said specifically i reviewed the the ingredients list and he compared them and one of the objective ways that you can tell that there was analysis here is that unlike prior cases where you had you can see that on page twenty six of the stanford opening brief where they have a chart not all the patents are serving us all the products themselves so that in and of itself is objective proof that there was consideration of those doses low combined with the fact that you had throughout it the consideration of the invalidity contention saying that it's any amount of defense here didn't just hide under a rock that this court said would be a consideration understand basket they built the rock and drop it on defendants at the end of the trial they change their tune and indeed it was this also shows that the record was incomplete because the district court effectively granted summary judgment on the disputed question of a complex technical fact without a complete record on it and that shown most clearly in the one example that she gave for that for determining and saying on page thirteen over opinion that there is a basic fact that the labels which show and that's the five milligram amount that you talked about on that pa argument but we should as we did but we should also have had an adventure hearing i think in twenty twenty hindsight that maybe would have been the proper course but it was a strategic one to oppose something that if you look at the district court denying oral argument on a motion that does indicate reasonably indicate that the motion will not be successful in that respect i think that's what they were probably thinking your paper filing in opposition to the fisa request are you what exactly they argued repeatedly that there was not adequate opportunity for discovery on the fringe when it argued the individual amounts themselves would be reasonable for the five hundred amount and on page thirteen the discords opinion that's where she says there was no argument that you could possibly have infringement it was directed to the five hundred mt because the theory was i believe that at least the five hundred mt that appears in the deep end a claim would have to be reasonable but they did repeatedly say that in the of the opportunity to complete the record and that's at eleven o five one of the record that's also eleven o five three eleven zero five nine and eleven zero six three we call those out in our in our reply brief it pages sixteen to seventeen thermal life and go through the litany of ask but what that highlights here is that there was no opportunity for infringement actually were and indeed that's confirmed by what the district court didn't simply adopting statements in the declaration by attorneys for vital for this five milligram that came from nowhere ok let me ask you i found the record to be confusing as for the status of one of vitals products eight x and that was a product that according to the record as i read it had been discontinued in two thousand and eight wasn't clear to me it wasn't him originally in the complaint it wasn't clear to me it was in the infringement contentions yes or no but what is the what is your argument with respect to that claim against vital because i actually only claim that doesn't rely on the four fifty nine claim one so in terms of that you are correct that it appeared in their friends my contentions that the product is mentioned in one of the labels for the other vital products and i believe it's a synthesize product and you can see that label at eleven for seventy or seventy seventy one of the record and so that's where that it came out and indeed it did appear in the contentions themselves and the in the contentions you can you can see in the contentions themselves be a one zero six seven six and a six two three four to five novelette i guess my question really goes to this if if with respect to vital and not high tech but with respect to vital alone if it's true as vital contends that the four fifty nine claim one is the invalid or not invalid but it could not have legitimately been pressure because of that one gram  only you would be left with with respect to vital would be a x and no and that only as i calculated one year of potential liability because they had stopped selling it in two thousand and eight and the claim was filed in and two thousand thirty eight would that have been enough by itself to support an action against vital such that it would have been fine to proceed against damages that simply can't be the case that you can only bring a patent suit if you have above a certain threshold of damages even if the damages there were small but for that product itself there is no it still is contested that it was  discontinued the website that's in the record showing that it was not discontinued and still on sale as a pony sixteen so that is still disputed fact and that goes again back to what the district court did here in the fundamental error there indeed this court finds that it wasn't reasonable for some of those products in the four five nine product for the four five night patent or the timing of that the experts admission tums a trial at the very least with this court had to do was ege infringement against vital or high tech but she also found that the defendants i'm sure the plaintiff failed to undertake a reasonable pre filing investigation with regard to the products that were accused and the and the pats how does that fit with your time we're hearing well it's let's talk about it now because it's been mentioned as well first of all that that appears with regard to a reference called the flex reference which in my recollection was not something that was raised to trial or appears in the judge's opinion and i think his point was you filed a formal document saying that any older male will do so how could it be under reasonable for his client to file a lawsuit on the same problem with the district court having focused only on the four five nine and not the others and i would say no your honor because the what's required is and i'm out sufficient so in order for the plaintiffs to file suit more than in order for them to do the pre fi investigation they need to be needed to conclude that in fact the products you choose products met the limitation and there's nothing in the record we challenge them on there are for exceptional case motion about their pre filing investigation we said they didn't and they gather and that's why the case proceeded as it did all the parties and the judge were asked to be efficient and we proceeded not invalidity only so i believe it was defendant's intentions now if i understand it correctly the four fifty nine and the nine vital my client being vital but you were accused of the eighty x and o even though all through the record it's unclear whether the eighty x and o is part of the case or is not but as far as i can see at least of the as of the time of the came a e x n o and that even though it was only n for a small period of time one year roughly it's still subject to an infringement claim so why would your client not have been subject to a insufficient they needed to amend the complaint and in any event in our each of the products as in the antonius case each of the products need to be assessed on a product by product basis and that was not done here so if you look at an o synthesise if you look at  say in particular but not only their record on the fees requests about what testing activities the plant this could have undertaken to go beyond the labels on the accused products beyond the advertising of the accused products to figure out how much l arginine was and particular recommended serving the record is not does not explain what they could have done but certainly they could have done testing in fact their own actual would do well if the record doesn't say but certainly that's a problem and leaping from one to the other we are it's there it was their burden to demonstrate that they that they could have that they did milligram pill with twelve listed ingredients how much l argentinas in there so that there is nothing but labels and advertising at that point isn't that a little odd to find that there was in the attic in adequate investi investigation when one hasn't identified what investigation was possible but not there was no investigation even necessary their experts said there was a known fact in science that in fact less than one gram of allergen would not the testers repeated that at trial and that was known prior to the filing of the complaints it was known sometime in the mid ninety's and the time after that and the rest were the side of the argument that the person doing the investigation didn't have to be one of the ordinary skelly or have knowledge of all the different articles regarding how much was required they still had to have some basis under the kids courts case law to allege infringement of these products and they  when we challenge them on that they have yet to come forth with anything where they say here's how we understood that you win friends they didn't explain that in fact the judge judge sauer to you know says it in her opinion that they've never actually challenged the fact that there was any reasonable basis to accuse measuring milk and take thousand grams three thousand grams and they say here are a few ingredients do we know anything about whether had they whether they could have done some test get the pills that are in the servings and figure out how much of the let's say eight grams is a large again because if the answer is they couldn't and i'm not sure what the inadequacy of the investigation was you're right i don't believe it's in the record regarding what type of tests and this may be overly not quite getting what i'm asking let's assume it was known you needed a gram you now have a bottle and it says here's a pill one serving it's eight grams how do you know whether there's  of the ingredient could have been learned and then tested itself by itself as opposed to testing it with also you just said that what in the records supports that i would say you are the fact that it was known in the art as dr said that one gram or last does it tells you you can take a particular amount and test that amount otherwise he would not have been able to have the knowledge at last and one gram actually is insufficient well i'm confused now when you state the amount if the amount of what because if i understand and correct me if i got the numbers wrong but if i understand it correctly again going back to the age of your products only let's not talk about height but your products at three point two grams of our journey is that correct i believe that's correct only time and the other three products are well two of the other three products the shotgun product had less than five hundred milligrams of  robert firstly for high tech from schools the district court did not look only at the pre filing investigation for the four five nine patch it looked at the best in the sum total of the record evidence concerning the pre filing investigation was a handful of sentences from mr cramer's seven you have any recollection of how the term in that somebody was an infringer what your recollection this is one of the one eight seven check existing products for their marketing claims in agreements question what marketing claims would indicate they were an infringer answer if they said our journey was going to increase nitric oxide or if the label had a certain dose of origin in the product and there was some discussion about dosages that's ye factual determination that for the claimed effect in many of the not all of the claims at issue a certain effect on the body was necessary and that predate suit science said one gram was necessary so that i thought actually you had been contending was actually not a matter of claim construction at all but the application to the real determine whether each of or all of the fused products were from including one gram or more of l r you know where the for the  right but for the other patents some of the other two the patents there were other you know antioxidants had to be called there was no testimony that you know he was determining that other antioxidants were in the products was a known and inherent benefit of the administration of l or guinea how do you respond to that why does not match that it would have been reasonable at the time of filing the lawsuit to think at  well i think we would have expected to see at a minimum a careful analysis my counsel going through these patents claim by  and comparing them to the products the ingredients in the products the recommendations for how the products are to be used that we would expected to see that before these lawsuits were filed and that did not there is no record evidence that that ever occurred if it turned out that a whole lot of these products in fact had more than one gram serving of the l r janine would it be a basis for exceptionality that there wasn't enough investigation before the suit was brought if it turned out that investigation would actually have revealed well that's an interesting question your honor court district court found that the pre filing investigation as a whole as to all products was recklessly ok and i would also say that circumstances of this case yes if pharma life and stanford got lucky that it just so happened that there might have been a possibility infringement at the patents been valid doesn't excuse all  and here if in fact the there was plenty of the product of the argentine to constitute infringing amounts then there would have been no injury well i think another angle here because we've had some new angles hardiman here is that the these patents were returned back to stanford from a previous license or because in light of the supreme court's in plaintiff's argue that discovery and factual inquiry into the whole infringement question or part of it was necessary we need all this morning sky everything we could have put in more evidence about you know the infringement analysis but the fact is the the plans had their opportunity to do that and they didn't take it in that will they wait till the end when things don't turn out that way to start throwing these arguments out but there was never really squarely made a request for an evidentiary hearing for discovery or anything that now and that one more why just to make sure i mentioned your argument and i appreciate that you're getting this call that your argument with respect to the invalidity contentions was that they're not saying that any amount answer the question that was before invalidity was brought up certainly in the stanford reply before page eleven if we go back in time the northern district of california construed the claim sufficient amount that's it a five three four that's well before these cases were initiated the the patent issue at collimate line sixteen through twenty one a four to five tells how dosages vary using people that are young or old what they've already got in their system what they can add to their system all of those were around but what i want you to do if i could have you open up to one page a seven ten the discussion was that amount was not construed before a seven ten as you turned to it is defendant's opening claim construction brief as you go down to line nineteen question the question for you all is ok you say there's no limit here in your claim destruction brief but once invalid he's over you turn to the one gram and cling to it that's not fair that's not right that goes to the no idea i believe my friends on the other side said there is more quest for more discovery but it's very clear and i want to read that to you at eleven zero five nine we said below if the court would now engage in the detailed infringement analysis of products relative to the patent claims it is already invalid and validated extensive discovery would need to be taken as non of friends or positions defendants assert without any expert testimony or wholly unsupported i'm not sure how more clear they could be if they needed more discovery to address that i did also want to address a few other points it was a question about whether or not those in invalidity contentions were buying one party by multiple it was actually signed by all the parties there was that one zero two two one t two also on that point just so you pointed to the two hundred fifty milligram product there's also another product creating five thousand asserted specifically against the four five one and that's at one zero four zero three and that's a hundred and five milligrams again that's sites one zero four zero three so it's not just two hundred fifty it's one hundred five and in those infant can in those invalid contentions excuse me they did say it's inherent property and as i said in that same claim from that they're reading both ways for both patents that they read it both ways of saying any amount which is identical to mr cramer's understanding at the outset in addition if you know i soon i mean is this right or not that  theory of why we might in fact be able to rely in some way on some of these infinity contentions is that when you did make the argument to the district court that discovery and for the record development on infringement was necessary this is a way of showing why that would not have been a few tile if it's one of two ways yes your honor but for the in contentions themselves the only reason they're on the record is because defendants put in their they're in the record for fees because they said look it's reasonable to say that this had no basis and we and reasonless say that we didn't responding to the lack of notice and they did the same thing on appeal if you look at vitals brief at pages twenty nine forty eight forty nine in the high tech group at sixty six they also cited the of infringement contentions here on appeal the invalidity  yes invalidity contentions here on appeal so i'm sorry it's just in the district court the defendants put in these invalidity contentions in response to your opposition to fees i believe they put in in the opening and those citations and here are from the opening i'm i'm not sure if it was vital or high tax motion but there's one of the two parties had it and the opening i believe and just second to clarify for what purpose what was the point that the defendant i believe that second one is probably with more thinking below and on appeal now what they're relying on is directly to respond to the lack of notice but the lack of notice here i'm sorry as you know in terms of my answer to your question just wrong i promise you a second point in terms of the reasonableness and that goes back to what my friend was discussing about the five milligram the came in the in the custom declaration which is founded eleven five eighty six that five milligram out doesn't exist indeed he said it was clear but if you look at the labels themselves the label for synthesize says nine thousand three hundred fifty two specified and that's the problem it says nine thousand three hundred fifty two and it lists them in the top ten ingredients in that in addition the label for and of synthesizing this is at eleven for seventy eleven for seven zero to seven one of the record it doesn't just say take this once it says they could immediately before during and after your workout so you have three doses in close succession and it also says take it with a shotgun product which does have argument that shocking product on its label has four thousand eight hundred ninety milligrams of this of a blend including salt and six thousand one hundred sixty milligrams of a blend including argentine and another salt does that is there an basis it was an attorney for vital who said five milligrams there was no explanation has no scientific explanation about where that five milligrams actually came from and indeed that is one of the fundamental problems with this decision here is that it was a rush  that basis and we did i mean do you agree with the consul for the other side that nothing in their record identifies what kind of experimental process your people might have gone through with a bottle of the nine thousand