[00:00:00] Speaker 05:
1540, Ineos USA versus Barry Plastics, Mr. Donner.

[00:00:14] Speaker 03:
Good morning, Your Honors, and may it please the Court.

[00:00:19] Speaker 03:
There are multiple reasons that Ineos admits to district court error in granting summary judgment.

[00:00:25] Speaker 03:
based on anticipation, but there is one issue that is potentially case-dispositive of the entire case, if you agree with INEOS, and that is the issue of whether or not the principal lubricant is disclosed within the ranges set forth in all the claims, .05 to 5%.

[00:00:48] Speaker 03:
We submit

[00:00:49] Speaker 03:
that the 846 patent, which is the reference relied on for anticipation, does not disclose a principal lubricant within that range.

[00:01:00] Speaker 03:
It does disclose styramid, which the district court relied on and which Berry relies on.

[00:01:06] Speaker 03:
But the ranges disclosed either overlap or encompass the claimed range.

[00:01:13] Speaker 01:
And if we agree with you, Mr. Donner, that the district court aired when

[00:01:19] Speaker 01:
he found that 0.1, 0.2, or 0.4 were discrete embodiments rather than ranges.

[00:01:26] Speaker 01:
That's your argument, right?

[00:01:28] Speaker 01:
That they are themselves a disclosure of range.

[00:01:30] Speaker 01:
They are not precise species embodiment.

[00:01:33] Speaker 03:
That's exactly right, as supported by the Yasran.

[00:01:36] Speaker 01:
And if we agreed with you on that, then wouldn't the question become one of criticality at that point?

[00:01:43] Speaker 03:
Yes, the question would become one of criticality.

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And we have relied on the Osram case, which basically says it was error for the district court to ignore an expert declaration or expert evidence.

[00:02:02] Speaker 03:
on criticality.

[00:02:04] Speaker 01:
Yes, but Dr. Scott was your expert and he didn't offer any criticality testimony on the primary lubricant, which is the issue you started with and what you and I are discussing.

[00:02:13] Speaker 01:
He talked in his declaration only about criticality with regard to the secondary lubricant, which is the one that listed 0% to 0.15%.

[00:02:23] Speaker 01:
Am I missing something in Dr. Scott's declaration that goes to

[00:02:27] Speaker 01:
criticality with regard to the range of the primary lubricant, the 0.05 to 0.5% range.

[00:02:36] Speaker 03:
Your Honor... What page would you direct me to?

[00:02:41] Speaker 03:
I'm not avoiding your question, but I will tell you that the plume declaration... But Mr. Plume's not an expert.

[00:02:48] Speaker 01:
He's not an expert.

[00:02:49] Speaker 01:
Okay, fine.

[00:02:50] Speaker 01:
So the plume declaration at page 1243, is that what you want to refer me to, paragraph number 19?

[00:02:57] Speaker 01:
on criticality?

[00:03:02] Speaker 01:
Yes, that's exactly right.

[00:03:04] Speaker 01:
To circle back, you agree that Dr. Scott did not himself testify on criticality with regard to the primary lubricant, correct?

[00:03:13] Speaker 01:
I couldn't find it.

[00:03:14] Speaker 01:
It's not long, and I read the whole thing.

[00:03:16] Speaker 03:
I had thought that Dr. Scott did talk about criticality of the principal lubricant, but

[00:03:27] Speaker 01:
Since you challenged me you can break you can tell me I'm rebuttal if you find it.

[00:03:32] Speaker 01:
Okay, but so let's talk about dr. Ploon If you don't mind and his discussion of criticality Mr. Ploon on a 1243 Yes, what is it that he says makes the claimed range 0.05 to 0.5 percent?

[00:03:51] Speaker 01:
Critical such that it creates a question of fact like in at Athena and in Osram

[00:03:57] Speaker 03:
He says that on page 1243, too much of the principal lubricant would not only add unnecessary cost, it may cause other problems while having little effect on reducing friction.

[00:04:11] Speaker 03:
And he talks about it may cause a white shade.

[00:04:14] Speaker 01:
Time out for just one sec.

[00:04:16] Speaker 01:
Let's go through it piece by piece.

[00:04:17] Speaker 01:
So when he says that too much of the principal lubricant, because the prior art disclosed a range that went higher.

[00:04:27] Speaker 01:
Too much will add unnecessary cost.

[00:04:31] Speaker 01:
Is that what criticality is about?

[00:04:33] Speaker 01:
Criticality quite clearly in both Clear Value and Osram is criticality of the operability of the invention.

[00:04:42] Speaker 01:
So is the fact that too much lubricant would add additional cost to the manufacture of the bottle caps.

[00:04:50] Speaker 01:
Is that going to the criticality of the operability of the invention?

[00:04:56] Speaker 03:
If that's all he said, then there might be a debate, but he goes on to talk about it may cause a white shade in the shape of clouds on the surface of caps, a phenomenon that we call the blooming of the lubricant, and he goes on to talk

[00:05:12] Speaker 03:
about that problem.

[00:05:13] Speaker 00:
What does the blooming have to do with what is central to the invention?

[00:05:17] Speaker 00:
What is central to the invention has to do with the taste and smell.

[00:05:23] Speaker 00:
And the fact that it might affect the caps or have some impact on what consumers look at doesn't really seem to be central to the invention, which is what Osram said that criticality had to go through.

[00:05:37] Speaker 03:
Your honor, I think we're entitled to rely on evidence, which is unrebutted, which shows a critical reason for having a limit.

[00:05:47] Speaker 05:
Well, that may be, but the problem, it seems to me, is that in order to, let's take a simpler case of a genus and a subgenus, in order the genus is in the prior or the subgenus is now claimed.

[00:06:00] Speaker 05:
And you have to show, don't you, that there's something unexpected

[00:06:05] Speaker 05:
about the properties of the sub-genus to make it patentable that distinguishes it from the broader range, correct?

[00:06:15] Speaker 05:
Well, okay.

[00:06:17] Speaker 05:
And so I don't read this affidavit as saying that this blooming phenomenon resulting from too much lubricant was something that was unexpected or not known in the prior art.

[00:06:29] Speaker 03:
Your Honor, the fact that this

[00:06:34] Speaker 03:
The fact that this invention came six years after the prior invention, which was also developed by Ineos, suggests

[00:06:44] Speaker 03:
as the after David show that the earlier invention which relied on zeolites was unsuccessful they work for six years.

[00:06:52] Speaker 05:
That may be but I'm focusing on the specific property here that he says differentiates the range that they've chosen.

[00:07:00] Speaker 05:
But he doesn't say there's anything, he says maybe there's a benefit to having this narrower range or not allowing you to go above .5.

[00:07:09] Speaker 05:
And he says that that's desirable because going above .5 might cause blooming.

[00:07:15] Speaker 05:
But he doesn't say that this was an unexpected or unknown property.

[00:07:21] Speaker 05:
Your Honor... Doesn't he have to say that there's something unexpected or novel about this particular aspect of it?

[00:07:30] Speaker 03:
Your Honor, the burden of proof is on Barry to show anticipation.

[00:07:36] Speaker 03:
We have shown

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by this affidavit, and I think by Scott, though I'm not sure, that there's a critical upper limit.

[00:07:44] Speaker 03:
And in fact, this plume declaration doesn't limit it to upper limit.

[00:07:50] Speaker 03:
It talks about the entire concentration range.

[00:07:52] Speaker 03:
and he identifies the problem of what happens if you go too high.

[00:07:56] Speaker 00:
But wait, the default rule in clear value is that if you're within the range, that it's anticipated unless there's some level of criticality that relates to the purposes of the invention.

[00:08:08] Speaker 00:
And the purposes of this invention had to do with the organoleptic properties, right?

[00:08:13] Speaker 03:
That's one of the purposes, Your Honor.

[00:08:15] Speaker 03:
The evidence shows

[00:08:18] Speaker 03:
that there are multiple reasons, multiple advantages.

[00:08:21] Speaker 03:
One is organoleptic properties, odor, taste.

[00:08:24] Speaker 00:
But the evidence that is in the record shows that there's still another reason having to do... What is in the patent that says that that's the problem that the patent was attempting to solve?

[00:08:38] Speaker 03:
The patent does not mention blooming.

[00:08:41] Speaker 03:
The patent mentions, as I recall, organoleptic properties.

[00:08:45] Speaker 03:
But I submit, we're entitled to rely on the evidence in the record that shows that there is an advantage resulting from a critical range.

[00:08:58] Speaker 00:
I understand it, but Atherham says the advantage must be central to the invention.

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uses that language central to the invention.

[00:09:06] Speaker 01:
It also says related to the operability of the invention as claimed in the patent.

[00:09:13] Speaker 01:
Those words also appear in clear value.

[00:09:16] Speaker 01:
So I just don't think that you can come up with an ex post advantage and submit a declaration no matter how irrelevant it is to the operability of the invention because all of this evidence, it simply goes to commercial

[00:09:30] Speaker 01:
advantages of doing it the way that he says.

[00:09:33] Speaker 01:
This doesn't go to operability.

[00:09:35] Speaker 01:
Looming doesn't affect friction.

[00:09:37] Speaker 01:
Looming doesn't affect odor.

[00:09:38] Speaker 01:
Looming doesn't affect taste.

[00:09:40] Speaker 01:
He just says, and he even says in his thing, he says why, he says consumers are less likely to purchase a drink if the cap appears to have white spots on top of it.

[00:09:49] Speaker 01:
It goes to, that's his testimony as to why this range is better because it avoids blooming and why you want to avoid blooming because consumers, not that it affects anything else except for consumer preferences.

[00:10:04] Speaker 01:
That can't be what criticality is about.

[00:10:08] Speaker 03:
Your honor, I don't know of any case, if we have an advantage that says when you go beyond a certain range,

[00:10:17] Speaker 01:
It creates problems which... Not problems in operability, problems in marketability.

[00:10:23] Speaker 01:
That's what you've said.

[00:10:25] Speaker 01:
His declaration doesn't create problems in operability.

[00:10:29] Speaker 01:
It says it creates problems in sellability.

[00:10:33] Speaker 03:
Your Honor, I don't know that the cases talk about operability.

[00:10:37] Speaker 03:
I don't know that the cases say the advantage has to relate to operability.

[00:10:42] Speaker 03:
In this case, in a way, if it causes odors or if it causes a bad taste, that is a consumer issue just as much as blooming or cloudy caps are an issue.

[00:11:00] Speaker 03:
I don't know that either one goes to operability in the sense that it won't work.

[00:11:05] Speaker 03:
It will work if it doesn't taste well.

[00:11:07] Speaker 03:
It will work if it has an odor.

[00:11:10] Speaker 03:
but it just is not attractive from a consumer standpoint, and that's what we're relying on.

[00:11:15] Speaker 03:
In any event, I submit that the cases we relied on, Adafina, Osram, and Quantum, make it clear that the ranges that they disclose... Well, what you seem to be saying is that claiming a narrower range takes you out of an anticipation problem.

[00:11:34] Speaker 05:
That can't be true, right?

[00:11:36] Speaker 05:
That just can't be true.

[00:11:38] Speaker 05:
It can't be that every time there's a range,

[00:11:40] Speaker 05:
and you narrow the range that somehow you avoid anticipation, right?

[00:11:45] Speaker 03:
Unless you can show it is critical, just narrowing the range.

[00:11:49] Speaker 05:
What does critical mean?

[00:11:51] Speaker 03:
Critical means that

[00:11:53] Speaker 03:
In this case, beyond a certain point, which in this case is 0.5, you get results that negatively impact on the use of this invention.

[00:12:05] Speaker 05:
And that has to be unexpected, right?

[00:12:09] Speaker 05:
You have to make a discovery that's unexpected.

[00:12:11] Speaker 03:
There's nothing suggesting it was expected.

[00:12:14] Speaker 05:
No, no, but do you agree with me that it has to be unexpected?

[00:12:19] Speaker 03:
If you, let me answer it this way, if you would expect that cutting it off at a certain range would create a problem, if you would expect that... No, but it has to be that the discovery that is alleged to have been made, that the subgenus is special, is different from the broader genus.

[00:12:42] Speaker 05:
You have to show that it's different in some meaningful way that is novel and unexpected.

[00:12:49] Speaker 03:
I will say yes, but there's no evidence suggesting that it was expected because the judge held Barry did not have to submit any response of criticality evidence.

[00:13:02] Speaker 03:
The judge not only didn't look at, didn't rely on our criticality evidence, but basically said Barry did not have to respond.

[00:13:11] Speaker 03:
So we submit, we have an affidavit from Flume, and we have an affidavit from Scott, and I will

[00:13:18] Speaker 03:
at the break, look and see whether he talked only as a subsidiary of Luebergen's, basically saying that it's critical.

[00:13:25] Speaker 03:
Scott uses words like central to the invention, and Bloom talked about a problem resulting from it.

[00:13:32] Speaker 03:
There was no response to that.

[00:13:34] Speaker 03:
So I suggest that on this record, summary judgment is improper.

[00:13:38] Speaker 03:
I mean, that's the kind of thing that a jury should consider.

[00:13:41] Speaker 03:
if they wanted to if they wanted to respond with a response of declaration they could have done that and said this is not critical this is expected there's nothing on the record suggesting that and i see i only have anyone who will give you two minutes for a bottle pardon will give you two minutes for a bottle okay thank you

[00:14:13] Speaker 05:
Miss Paul will be.

[00:14:15] Speaker 02:
And good morning, your honor, please the court.

[00:14:18] Speaker 02:
I'd like to find note for the court one point of agreement between the parties and then jump right into the range issue and address that concern with you head on.

[00:14:28] Speaker 02:
And obviously the concerns are well founded and that is the party here today agree that the claim limitation.

[00:14:34] Speaker 02:
The second limitation of claim one is really the only claim limitation that can be you

[00:14:39] Speaker 02:
And that is the saturated fatty acid amide component in a particular range.

[00:14:44] Speaker 02:
So to go right to the range issue head on, it is our position that either under a criticality standard or just looking at the clear disclosure of the 846 patent, that there is really no issue with respect to criticality.

[00:14:59] Speaker 02:
And this is how this goes.

[00:15:01] Speaker 02:
First of all, we have, as the court has noted already, this disclosure in the 846 of teaching the use of .1 or .2 or .4, and calls those the most common point.

[00:15:14] Speaker 02:
So while the language there is at least as well, it's identified as the most common point.

[00:15:20] Speaker 01:
No, but the sentence, you're stopping.

[00:15:22] Speaker 01:
The sentence read as a whole,

[00:15:25] Speaker 01:
talked about point one in particular of at least point two parts by weight, or quantities of at least point four parts per weight being the most common ones, the total quantity of lubricating agent doesn't exceed five parts per weight, more especially two parts per weight, or a maximum of one part per weight.

[00:15:43] Speaker 01:
It's kind of hard for me to say that's not a range.

[00:15:45] Speaker 01:
You've got a starting point and an ending point in the same exact sentence, and yet you want me to find that to be a discrete point.

[00:15:53] Speaker 02:
Your Honor,

[00:15:54] Speaker 01:
We believe it is both.

[00:15:56] Speaker 01:
How?

[00:15:56] Speaker 01:
At least .1 with a maximum of 1.

[00:16:01] Speaker 02:
How is that a discrete point?

[00:16:04] Speaker 02:
Well, if you read the entire disclosure in context and you have at least .4, what you find in example 1 of the 846 patent is a total lubricant percentage of .45%.

[00:16:17] Speaker 01:
all of the other, in fact it contains a subsidiary lubricant of greater than .15.

[00:16:22] Speaker 01:
So it doesn't contain the other elements of the claim and our precedent is quite clear.

[00:16:26] Speaker 01:
You can't pick and choose your elements from different embodiments in a prior art reference, combine them together and then call it anticipatory.

[00:16:33] Speaker 01:
So those examples don't help you at all because none of them contain all the elements of the claim that

[00:16:41] Speaker 01:
is accused of being anticipatory.

[00:16:43] Speaker 01:
Am I wrong about that?

[00:16:44] Speaker 01:
That example you're pointing to, doesn't it?

[00:16:46] Speaker 01:
My recollection is it includes higher than 0.15% of the secondary lubricant.

[00:16:50] Speaker 02:
Your Honor, we do respectfully disagree.

[00:16:52] Speaker 02:
And it's for this reason.

[00:16:53] Speaker 02:
This is exactly like the paracone case.

[00:16:55] Speaker 02:
If you go through columns two and three, one through three, of the 846 patent, what you see is we have a discrete list of particular components.

[00:17:04] Speaker 02:
Saturated fatty acid amides, such as serumide, oleumide, and erusamide.

[00:17:11] Speaker 02:
So that's the first part.

[00:17:12] Speaker 02:
And it's a discrete list.

[00:17:14] Speaker 02:
It's not long.

[00:17:14] Speaker 02:
It's not thousands of lubricants, as Ineos has said.

[00:17:18] Speaker 02:
And it's very specific that those are saturated and unsaturated fatty acid amides are lubricants that give good results.

[00:17:25] Speaker 02:
The patent also teaches 846 patents that you can use one of those alone or both of them.

[00:17:32] Speaker 02:
And then it goes on after that and says the lubricating agent, which is one or more, is 0.1 or 0.2 or 0.4.

[00:17:40] Speaker 01:
At least 0.1, at least 0.2, at least 0.4 and up to a maximum of 1.

[00:17:46] Speaker 01:
Yes, that is the complete sentence.

[00:17:47] Speaker 02:
Yes, that's absolutely correct.

[00:17:49] Speaker 02:
But again, in identifying the most common point along with the example one, that tells one of ordinary skill in the art that here's your laundry list to choose from, you can use one of those, and here's the amount of the lubricant.

[00:18:03] Speaker 02:
But let me go back to the other range issue too.

[00:18:06] Speaker 01:
Am I wrong about the example?

[00:18:07] Speaker 01:
Don't all the examples

[00:18:10] Speaker 01:
in this disclosure have a secondary lubricant at higher than 0.15%?

[00:18:14] Speaker 02:
The preferred embodiment, you're absolutely correct.

[00:18:17] Speaker 02:
That is the preferred embodiment.

[00:18:18] Speaker 02:
And so if it were this court's precedent to limit the disclosure to the preferred embodiment, that would then be the result.

[00:18:25] Speaker 02:
But that's not this court's precedent.

[00:18:27] Speaker 02:
The court is to look at the full extent of an enabling disclosure.

[00:18:30] Speaker 02:
And what it says is we have this finite list

[00:18:33] Speaker 02:
saturated fatty acid amides that can be used in a specific amount.

[00:18:37] Speaker 02:
But let me go back to the range issue as well.

[00:18:39] Speaker 02:
If you're going to believe.

[00:18:40] Speaker 00:
What if we don't buy the notion that a range isn't a range?

[00:18:45] Speaker 00:
Because that's pretty much what you're onto.

[00:18:47] Speaker 00:
Sure.

[00:18:47] Speaker 02:
So just very briefly, if you say 0.1 to 0.2, you've got a narrow.

[00:18:52] Speaker 02:
Between 0.1 and 0.2, you've got some ranges here.

[00:18:54] Speaker 02:
And clear value says, if you look at, if there are enough ranges disclosed in context, you have then anticipated the entire range.

[00:19:02] Speaker 02:
But I'll go directly to criticality.

[00:19:05] Speaker 02:
You're absolutely correct that there was not evidence presented of criticality from the side of any of us.

[00:19:11] Speaker 02:
Did you argue this?

[00:19:12] Speaker 02:
No, Your Honor.

[00:19:13] Speaker 02:
Our position was, as below, was the most common, was the most common amassment of those points in the range.

[00:19:19] Speaker 05:
That's not quite true.

[00:19:20] Speaker 05:
It was discussed below and they responded by arguing that they'd shown criticality in their opposition to the summary judgment

[00:19:30] Speaker 02:
Yes, and what I meant by that comment was that that was something we argued did not apply.

[00:19:36] Speaker 02:
Criticality did not apply because we had these points within the rain.

[00:19:41] Speaker 05:
When they argued that it did apply and that they'd shown criticality.

[00:19:44] Speaker 05:
So the issue was joined.

[00:19:45] Speaker 02:
Yes.

[00:19:48] Speaker 02:
What I was getting at was the point that there was not criticality shown in the way that the court has just now articulated it.

[00:19:56] Speaker 00:
Why don't you have a problem under Osram?

[00:19:58] Speaker 00:
As Mr. Dutter points out, they argued criticality.

[00:20:00] Speaker 00:
They put in evidence that they think shows criticality, and you didn't even respond.

[00:20:05] Speaker 00:
Why isn't that the end of the inquiry on a summary judgment?

[00:20:08] Speaker 02:
No, because they did not submit evidence of criticality with respect to the operability of the invention.

[00:20:15] Speaker 01:
It wasn't there.

[00:20:15] Speaker 01:
But wait, did you argue that at any point in your brief below or to this book?

[00:20:20] Speaker 02:
We did argue that criticality had not been shown, but we also argued... Do you have a site you could put me to in a brief?

[00:20:26] Speaker 01:
Because all I read in your brief is arguing is that criticality is irrelevant.

[00:20:30] Speaker 01:
But I didn't read it as saying they failed to create a material question of fact about criticality.

[00:20:36] Speaker 02:
And that is probably the most fair reading of our arguments below.

[00:20:40] Speaker 02:
Our position was that criticality doesn't apply because we've got these discrete ranges and we've got points within a range.

[00:20:47] Speaker 02:
And if you look also at the 846 patent and the 863 patent and look at the examples and the organoleptic properties that they say are there, are disclosed, they both come up with an organoleptic index of the same, of 1.3.

[00:21:01] Speaker 02:
So you're correct.

[00:21:03] Speaker 02:
Our position has always been that criticality does not apply.

[00:21:07] Speaker 02:
But there is evidence just on the face of these patents that it's not there.

[00:21:11] Speaker 05:
And again... Who has the burden here?

[00:21:13] Speaker 05:
I mean, that seems to me to be a pertinent issue.

[00:21:16] Speaker 05:
If they've refined the range that existed in an earlier disclosure, do they have the burden of showing criticality, or do you have the burden of showing lack of criticality?

[00:21:31] Speaker 02:
Well, they have to come back and then show criticality.

[00:21:34] Speaker 02:
That was their burden.

[00:21:36] Speaker 00:
Right, but the lower court didn't make any findings with respect to criticality, did it?

[00:21:40] Speaker 02:
He did not.

[00:21:41] Speaker 02:
What he found was, again, that we have, that if you ignore, I mean, the result of this would be to ignore, as you've noted with the word of least and that we have a long sentence, would be to ignore that specification completely and find there's no disclosure at all.

[00:21:58] Speaker 02:
And so we can have our 0.1, 0.4, at least 0.2, at least 0.4, and the most common points.

[00:22:06] Speaker 02:
And what they're saying is I can come in then after that and even though I've got all of these ranges disclosed, I can then patent something that is 0 to 0.5%.

[00:22:15] Speaker 02:
Now there's another issue here that's important too, which is even if you get rid of the 846 patent, you can also look at Murakami.

[00:22:23] Speaker 02:
They made no argument whatsoever with respect to criticality of Murakami.

[00:22:28] Speaker 02:
Murakami has nearly the identical range.

[00:22:30] Speaker 01:
It goes to .5.

[00:22:31] Speaker 01:
Did the district court make any findings on Murakami?

[00:22:33] Speaker 02:
No, the district court found that he didn't need to because he found that the 846 patent was dispositive of this issue.

[00:22:41] Speaker 02:
But it would simply be improper for there to be this large disclosure of these intermediate ranges, which was not the case in Athena.

[00:22:50] Speaker 02:
It just wasn't there.

[00:22:52] Speaker 02:
It was 100 or less, I believe, was the number.

[00:22:56] Speaker 02:
Or I'm sorry, those were the heating ranges.

[00:22:58] Speaker 02:
But there was no disclosure of those points within the range.

[00:23:02] Speaker 02:
And again, with the 846, we have it from start to finish, all of these various disclosures.

[00:23:08] Speaker 02:
And even if you look at the 863 patent ranges, they're not much different.

[00:23:12] Speaker 02:
It's at least 0.07% by weight.

[00:23:15] Speaker 02:
It does not exceed 0.4% by weight.

[00:23:18] Speaker 02:
Preferably, this amount doesn't exceed 0.35% by weight.

[00:23:23] Speaker 02:
So there we have the same issue, and you have in the 846, of the most common amounts being at least 0.4.

[00:23:30] Speaker 02:
Again, that was what made us to believe that criticality was not an issue.

[00:23:37] Speaker 02:
And again, the criticality issue, the way that it was couched by Ineos and the way where we did not have the opportunity to respond, when it was criticality in relation to keeping the subsidiary lubricant

[00:23:51] Speaker 02:
low.

[00:23:52] Speaker 01:
And that was another issue that... Why do you think you didn't have an opportunity to respond?

[00:23:57] Speaker 01:
Were you somehow deprived of notice or... I don't understand.

[00:24:02] Speaker 02:
Your Honor, there was very little argument, if at all, on the criticality of the... Did you file a reply to their opposition?

[00:24:10] Speaker 02:
Yes, Your Honor.

[00:24:11] Speaker 05:
Well, so that was an opportunity, right?

[00:24:14] Speaker 02:
What I'm saying is that the issue, the core issue with respect to criticality in the lower court had to do the criticality of limiting the subsidiary lubricant.

[00:24:25] Speaker 02:
That was the primary argument made before the district court.

[00:24:29] Speaker 02:
And so if we had thought it was that the core issue had to do with criticality and that that was a real issue, we absolutely would have briefed it.

[00:24:36] Speaker 01:
Well, but you had a chance, and you were on notice.

[00:24:38] Speaker 01:
They submitted two declarations dealing with criticality.

[00:24:41] Speaker 01:
And if Scott's declaration goes only to the secondary lubricant, the flume goes to both.

[00:24:46] Speaker 01:
And so you were on notice, and they argued this point below.

[00:24:51] Speaker 01:
So I don't think I understand your lack of notice point.

[00:24:55] Speaker 02:
The lack of notice, Your Honor, is again that the focus was

[00:24:59] Speaker 02:
on the subsidiary lubricant and that was the primary focus that was before the court below.

[00:25:05] Speaker 02:
I'd like to move to the issue of behenemide if it's of interest.

[00:25:17] Speaker 01:
If we don't agree with you on the range argument that you make with regard to prior art, and if we feel like we have to analyze criticality, that that's the proper legal analysis to employ in this case,

[00:25:32] Speaker 01:
Why isn't Mr. Dunner correct that his client proffered unrebutted testimony about criticality?

[00:25:43] Speaker 01:
You heard me question him about what the criticality went to in terms of dissecting the actual testimony.

[00:25:49] Speaker 01:
But is there something to the idea that the criticality and evidence did in fact go to, I'm going to say it wrong, organolytic properties, organo, I don't know how to say that word.

[00:26:02] Speaker 01:
Organoleptic.

[00:26:02] Speaker 01:
Organoleptic properties, had to look it up.

[00:26:06] Speaker 01:
But is there some truth to the notion that, look organoleptic according to my definition, now granted I think it may have been Wikipedia or dictionary.com and not a very scientific place.

[00:26:18] Speaker 01:
But my understanding was it goes to the senses and the organs, including taste, sight, smell, et cetera.

[00:26:25] Speaker 01:
So if this pattern is directed, if its criticality is to organoleptic properties, and the only ones mentioned are odor and taste, why wouldn't blooming, which goes to the notion of sight, nonetheless be something that at least there's a question of fact maybe about criticality

[00:26:46] Speaker 01:
and its relevance to operability when they start talking about bloating.

[00:26:52] Speaker 02:
Because, Your Honor, again, so the claim doesn't talk about at all, does not talk about odor or off taste at all.

[00:27:04] Speaker 02:
I mean, all we have is one sentence from paragraph 19 or a couple of sentences that talk about limiting it to 0.5.

[00:27:14] Speaker 02:
But again, we have specifically, that's it.

[00:27:17] Speaker 02:
And if you look at the face of the patent, the 863 patent, again, the organoleptic properties of limiting it within this respective range are not clear at all from the disclosure.

[00:27:29] Speaker 02:
It's just not there.

[00:27:31] Speaker 02:
They're not any better than in the 846 patent, if that's the issue.

[00:27:35] Speaker 02:
But there's no limitation.

[00:27:37] Speaker 01:
with respect to... I don't see how that is actually a relevant inquiry in terms of a criticality analysis because in AdRAM, for example, the lamps still worked.

[00:27:48] Speaker 01:
It just didn't work as well.

[00:27:50] Speaker 01:
The claims were two-way lamps.

[00:27:52] Speaker 01:
It's not like pregnant or not pregnant.

[00:27:54] Speaker 01:
I mean, apparently it's like dimmer switch kind of scenario.

[00:27:58] Speaker 01:
The lamp didn't work as well, still worked.

[00:28:01] Speaker 01:
And that was enough to create a question with regard to criticality.

[00:28:06] Speaker 01:
So I don't know, and those were composition claims.

[00:28:09] Speaker 01:
Of course, the composition claim didn't discuss the performance of the lamp, the number of watts it had to put out.

[00:28:15] Speaker 01:
light measurable or anything like that, but nonetheless, the court found that the inquiry for criticality was how well did the lamp work?

[00:28:23] Speaker 01:
So, likewise here, how well does this product work?

[00:28:26] Speaker 01:
Well, what are the criteria that you use to measure how well this product worked?

[00:28:32] Speaker 01:
The patent says we've formulated something that is directed to reducing friction while simultaneously reducing bad odor and bad taste.

[00:28:42] Speaker 01:
So why aren't those the relevant inquiries?

[00:28:45] Speaker 01:
If his criticality evidence had gone right to the heart of odor and taste, if you exceed .5, you got bad taste, secondary lubricant aside.

[00:28:55] Speaker 02:
But if there is a new benefit to an old composition, that doesn't render it patentable.

[00:29:02] Speaker 02:
I mean, we know that.

[00:29:03] Speaker 02:
The inquiry here is, is it new?

[00:29:05] Speaker 02:
We have every permutation of this disclose, every permutation of a range in the 846 patent.

[00:29:12] Speaker 02:
If this 846 patent doesn't anticipate a saturated fatty acid

[00:29:17] Speaker 02:
in these various amounts that are then later were claimed by Enneos.

[00:29:22] Speaker 02:
And I'll just finish my answer, if I may, Your Honor.

[00:29:24] Speaker 02:
My time is run.

[00:29:25] Speaker 02:
Well, yeah, but you can finish.

[00:29:27] Speaker 04:
You don't have a right to sit down.

[00:29:32] Speaker 01:
I will stand here as long as you would like.

[00:29:35] Speaker 01:
The problem is, you're fighting the Adaphena battle right now.

[00:29:39] Speaker 01:
The way in which you're characterizing your argument is, gosh darn it, how could Adaphena have come out the way it did?

[00:29:45] Speaker 01:
That's the argument you're making.

[00:29:47] Speaker 01:
I'm stuck living in the universe where it did come out the way it did, whether I like it or not.

[00:29:53] Speaker 01:
So let me be clear.

[00:29:55] Speaker 02:
There was nothing from Dr. Scott with respect to criticality of the primary lubricant.

[00:30:01] Speaker 02:
There was very little discussion of this point at all, quite frankly.

[00:30:05] Speaker 02:
What I'm looking at now is something that says, if you limit it to 0.5, a couple of sentences,

[00:30:10] Speaker 02:
from Denise Plume that say this is good for organoleptic properties.

[00:30:15] Speaker 02:
It doesn't tell us why, with respect to .5, that that's important or not.

[00:30:20] Speaker 02:
It simply claims the same ranges that are disclosed in the prior art patent.

[00:30:26] Speaker 05:
But it also doesn't say it's unexpected, right?

[00:30:28] Speaker 02:
No, it doesn't say it's unexpected either.

[00:30:30] Speaker 02:
It just says this is what happened.

[00:30:33] Speaker 02:
And again, if you look at, if we want to go down this path and look at the organoleptic properties that are disclosed on the face of both patents,

[00:30:40] Speaker 02:
It's identical.

[00:30:42] Speaker 02:
So there was very little discussion of this criticality issue.

[00:30:47] Speaker 02:
It was, again, focused on something else.

[00:30:50] Speaker 02:
And if you really want to dive in here, the clear record right before your honor is that there aren't improved, at least on the face of the patent organoelectric property.

[00:31:01] Speaker 04:
OK.

[00:31:01] Speaker 04:
Thank you, Ms.

[00:31:03] Speaker 04:
Pollack.

[00:31:04] Speaker 04:
OK.

[00:31:04] Speaker 04:
Just to dive in about two minutes.

[00:31:14] Speaker 03:
When Barry's counsel says there's very little discussion about criticality, it was expressly mentioned in the district court's opinion, expressly mentioned, saying that Barry didn't have to provide any evidence of criticality.

[00:31:28] Speaker 03:
It was irrelevant.

[00:31:28] Speaker 05:
Well, what difference does that make what the district court, if the district court made a mistake, it's summary judgment.

[00:31:33] Speaker 05:
We review it de novo anyway, right?

[00:31:36] Speaker 05:
He's not making findings of fact.

[00:31:38] Speaker 03:
No, but the point is he made it clear that it was an issue in the case.

[00:31:42] Speaker 03:
by talking about it

[00:31:57] Speaker 03:
The Murakami issue was I didn't reach that.

[00:32:01] Speaker 03:
And that is the district court did not reach that issue.

[00:32:03] Speaker 03:
And we suggest that this court shouldn't reach that issue.

[00:32:07] Speaker 03:
There are several problems with Murakami.

[00:32:09] Speaker 03:
Murakami has a lower range, which is one fifth the extent of our lower range.

[00:32:15] Speaker 03:
And the plume decoration covers upper and lower limits.

[00:32:18] Speaker 03:
Also, there's no clear requirement of a principal lubricant in Murakami.

[00:32:24] Speaker 03:
There are all kinds of reasons why Murakami is a problem, and this court should not reach that unless and until the district court does.

[00:32:34] Speaker 03:
Going to the point about various counsel talked about, this is a new benefit for an old composition.

[00:32:43] Speaker 03:
It is not an old composition, not only because of the principal lubricant,

[00:32:48] Speaker 03:
but because of the subsidiary lubricant.

[00:32:50] Speaker 03:
I know there's an issue as to the zero lower limit.

[00:32:54] Speaker 03:
But in this case, we have a disclosure in the 846 patent in which the subsidiary lubricant is the preferred lubricant.

[00:33:04] Speaker 03:
They say one or more, all the examples are restricted to the subsidiary lubricant.

[00:33:09] Speaker 03:
suggesting to one skilled in the art that if you're only going to have one, you're going to have a subsidiary lubricant, and the range is well above the .15 critical lubricant, which in fact, Scott does talk about, and I agree, Scott does talk about.

[00:33:23] Speaker 01:
He talks about the subsidiary one, but not the, okay.

[00:33:26] Speaker 01:
Yeah, you're right.

[00:33:26] Speaker 01:
All right, good.

[00:33:28] Speaker 03:
So I checked that.

[00:33:29] Speaker 04:
Okay, I think we're out of time.

[00:33:32] Speaker 04:
Okay.

[00:33:32] Speaker 04:
Thank you.

[00:33:34] Speaker 04:
Thank you.

[00:33:41] Speaker ?:
I'll report as adjourned until tomorrow morning at 10.