[00:00:00] Speaker 03:
One, two, two, three, connect a corporation versus SKC colon PI.

[00:00:11] Speaker 01:
Mr. Allen?

[00:00:24] Speaker 01:
Good morning, Your Honors.

[00:00:28] Speaker 01:
My name is Patrick Rollins.

[00:00:30] Speaker 01:
I represent the Appellant Kanaka Corporation.

[00:00:33] Speaker 01:
This case is about the intersection of inherency and obviousness, and more specifically about the use of inherency in the context of an obviousness analysis.

[00:00:44] Speaker 01:
This case should be reviewed under the de novo standard of review that applies to determinations of obviousness.

[00:00:51] Speaker 01:
The determinations of obviousness are

[00:00:54] Speaker 01:
decided under the Genovo standard of review, the underlying issues of fact are subject to substantial evidence.

[00:01:04] Speaker 01:
However, in this case, there are no facts that are in dispute.

[00:01:07] Speaker 01:
In its decision on appeal, the board conducted a carefully circumscribed inherency analysis of the Akahori reference and made a determination that the Akahori reference fails to disclose a PI film with an average thickness of 20 microns

[00:01:23] Speaker 01:
that would result in a PI film having a claim stiffness value or having a calculated stiffness value within the claimed range.

[00:01:33] Speaker 00:
That factual finding was not appealed.

[00:01:36] Speaker 01:
Because the board made this factual determination in its inherency analysis, it reversed the CRU examiner's anticipation rejection.

[00:01:47] Speaker 01:
And that issue was not appealed and is not before the court here today.

[00:01:50] Speaker 01:
So the remaining question is the board's obviousness analysis.

[00:01:54] Speaker 01:
And the obviousness analysis of the board is subject to the de novo standard.

[00:01:59] Speaker 01:
Now, in its decision on appeal, the board made several errors, contrary to this court's precedence, when it was doing its obviousness analysis.

[00:02:10] Speaker 01:
Contrary to this court's precedence in par pharmaceutical, and in in Ray Ricker, and in in Ray Ulrich.

[00:02:17] Speaker 01:
Starting with Par Pharmaceutical, the board failed to carefully circumscribe its inherency analysis in the context of obviousness.

[00:02:26] Speaker 01:
Even though it had already conducted the inherency analysis in the context of anticipation, it changed its inherency analysis in the context of obviousness, and in doing so, it violated this court's precedence.

[00:02:39] Speaker 01:
in part.

[00:02:40] Speaker 04:
I didn't quite follow that and so I'd like you to develop that a little bit more.

[00:02:45] Speaker 04:
My understanding of the reversal of 102 is that the Akahori reference while it does talk about having polymide films with a thickness between 15 to 25 microns didn't explicitly talk about average thickness and so therefore

[00:03:04] Speaker 04:
it elected not to adopt the 102 rejection.

[00:03:08] Speaker 04:
But nevertheless, it said it would be obvious to take the teachings of Akihori and come up with a polymide film with an average thickness of 20 microns.

[00:03:21] Speaker 04:
And that seems to be a reasonable conclusion to derive from Akihori's expressed teachings.

[00:03:30] Speaker 04:
So the usage of Inherency didn't really come up in the 102 context.

[00:03:37] Speaker 04:
It only came up in the 103 context.

[00:03:40] Speaker 04:
The board never needed to wrestle with the 102 question, with the Inherency question in 102.

[00:03:47] Speaker 04:
It only came up in 103.

[00:03:50] Speaker 01:
That's incorrect.

[00:03:51] Speaker 01:
So the inherency analysis is fundamental to both 102 and 103.

[00:03:56] Speaker 01:
And what happened was the board did its analysis of Akahori, its inherency analysis of Akahori in the context of anticipation.

[00:04:06] Speaker 01:
Because the missing element is the stiffness of the film.

[00:04:09] Speaker 01:
And so what the board is doing is it's looking at Akahori to determine whether or not the PI film that's disclosed there inherently possesses the stiffness.

[00:04:18] Speaker 04:
Are we talking about 102 or 103?

[00:04:21] Speaker 01:
Both.

[00:04:21] Speaker 04:
And so what happened is... But the basis for reversing the 102 rejection was this question of whether Akahori really was teaching

[00:04:32] Speaker 04:
polymicrons with an average thickness of 20 microns.

[00:04:38] Speaker 01:
That's correct.

[00:04:39] Speaker 04:
So then that ended the question of whether or not it needed to go further and decide for itself whether there would be inherency of the stiffness claim value.

[00:04:52] Speaker 01:
Yeah, so the average thickness is not the missing element from the claim.

[00:04:56] Speaker 01:
The missing element from the claim is the stiffness of the film.

[00:04:59] Speaker 01:
And so in order to get... We're talking about 103 now.

[00:05:03] Speaker 03:
Both, right?

[00:05:07] Speaker 04:
Can you take me to the board's decision on 102 where it actually said we were not picked?

[00:05:16] Speaker 04:
Yeah, I think the specific quote.

[00:05:18] Speaker 04:
I mean, at A19 it says, because Akahori does not disclose an average thickness, you know, we cannot find that Akahori teaches an average thickness or X as is recited in the 704 pattern.

[00:05:35] Speaker 01:
So,

[00:05:36] Speaker 01:
And therefore, consequently, it doesn't have the required stiffness.

[00:05:41] Speaker 01:
Because when you plug the thickness value into the stiffness equation, you fail to get a calculated stiffness value that's within the claimed range.

[00:05:53] Speaker 04:
Right.

[00:05:53] Speaker 04:
So the proposal for the rejection was,

[00:05:56] Speaker 04:
that Akahori teaches an average thickness of 20 microns.

[00:06:01] Speaker 04:
Right.

[00:06:02] Speaker 04:
And then the board said, not so fast.

[00:06:04] Speaker 04:
It doesn't actually say average thickness of 20 microns.

[00:06:07] Speaker 04:
So therefore, we can't just plug that in to figure out what the stiffness value is for Akahori because we can't be certain that it really discloses an average thickness of 20 microns.

[00:06:19] Speaker 04:
Nevertheless, it'd be obvious

[00:06:21] Speaker 04:
from Akahori's teachings to come up with a polymide film of average thickness of 20 microns.

[00:06:28] Speaker 04:
Now let's go see and find out if that 20 micron average thickness would result in a stiffness value as recited in your claims.

[00:06:37] Speaker 01:
Correct.

[00:06:38] Speaker 01:
And that's exactly where the court ran afoul of the par-pharmaceutical case.

[00:06:42] Speaker 01:
issued by this court recently in last December because what Par Pharmaceuticals says is that for the court to employ elements from the prior art in an inherency analysis in the context, overall context of obviousness, those elements must be explicitly disclosed.

[00:06:57] Speaker 01:
However, the 20 micron thickness was not explicitly disclosed in the Akahori reference as evidenced by the board's prior finding that the Akahori reference fails to sufficiently disclose

[00:07:11] Speaker 01:
the average thickness of twenty microns.

[00:07:13] Speaker 04:
Well, when I read our court's case law, when it comes to par-pharmaceutical, centaurus, alkan, in-rate cow, the theme is, when it comes to inherency in the 103 context, you're not allowed to use

[00:07:35] Speaker 04:
information that's unknown but inherent, but unknown information to combine teachings to render a claim obvious.

[00:07:47] Speaker 04:
That's an improper use of inherency.

[00:07:51] Speaker 04:
It is proper to modify teachings, combine teachings, to come up with a product that is recited in the claim.

[00:08:02] Speaker 04:
And then if that particular obvious product happens to have an unknown but inherent property, then that recitation of that inherent but unknown property isn't going to be a patentable consequence.

[00:08:15] Speaker 04:
So now we get to the facts here.

[00:08:19] Speaker 04:
If it's obvious to go ahead and use an average thickness of 20 microns based on the teachings of Akahori, then if in fact it's inherent in Akahori's 20 average micron thickness that it would have the claimed range of stiffness values,

[00:08:41] Speaker 04:
then that seems to be a classic and appropriate use of the Inherency Doctrine in the 103 context.

[00:08:49] Speaker 01:
Well, the Centaurus line of cases is different.

[00:08:51] Speaker 01:
So Centaurus cites a cow, which cites a king.

[00:08:54] Speaker 01:
And in that line of cases, each one of those cases dealt with a claim that had a claimed element, which was the natural result of administering a drug to a person.

[00:09:05] Speaker 01:
And so what the courts were saying in that line of cases is that if the pharmaceutical composition is obvious and then the only remaining steps in the claim are to administer to a person and then claim the resulting concentration in the blood or whatever it might be,

[00:09:20] Speaker 01:
that is inherent in this obvious combination.

[00:09:24] Speaker 01:
In those cases, each one of the obvious combinations were explicitly disclosed.

[00:09:29] Speaker 01:
What was missing was the natural result part.

[00:09:33] Speaker 01:
In this case, we don't have the same situation because even if the composition part is obvious in our claim, the resulting stiffness value is not the natural result of the combination or the natural result of the composition.

[00:09:48] Speaker 01:
Because you could take a composition and you could turn it into a PI film and it could have a vastly different stiffness value than what we've claimed.

[00:09:56] Speaker 01:
And that's in evidence here before, this quarter before the board, because lots of the references that are cited when plugged into, when we take the variables cited for the PI films in those references and we plug them into the stiffness equation, they turn out to have a stiffness value that's not within the claimed range.

[00:10:16] Speaker 01:
Therefore, we can't say that the natural result of the chemical composition is the missing element in our claim.

[00:10:34] Speaker 04:
PTO to rely on that regression analysis to understand what was the K value that was being used in your specification and plug that into AKAHORI to figure out what the stiffness value is.

[00:10:53] Speaker 04:
I don't know what other way

[00:10:56] Speaker 04:
we could analyze Akahori other than doing it that way.

[00:11:00] Speaker 01:
Okay, so two answers to the question.

[00:11:02] Speaker 01:
First of all, even if you use that single K value that was a result of the regression analysis, you still end up with stiffness values under Akahori, for examples 4 and 7, that fall outside of the claimed range.

[00:11:15] Speaker 01:
So it's not necessarily present, the stiffness value, when you look at examples four and seven.

[00:11:22] Speaker 01:
If you use just that one, but that's just one possibility, right?

[00:11:28] Speaker 01:
So this is in Ray Ulrich, where you can't establish inherency by mere probabilities or possibilities.

[00:11:34] Speaker 01:
And so if we're going to look at it and try to determine an appropriate way to do the analysis, we would need to look at the lowest K value and the highest K value, use both of those K values separately in the stiffness equation and see what the lowest stiffness value would be and the highest stiffness value and see if that is necessarily present.

[00:11:52] Speaker 04:
I guess the retort to that could be, what about the fact that maybe there's many obvious variations?

[00:11:58] Speaker 04:
of a polymide film with various thicknesses as suggested by Akahori.

[00:12:07] Speaker 04:
Some of those maybe won't end up in your claimed stiffness range, but others are.

[00:12:13] Speaker 04:
If those others in fact are, then

[00:12:16] Speaker 04:
then what that amounts to is this patent trying to take back and patent something that was essentially known or an obvious variation of what was known and already part of the public storehouse.

[00:12:33] Speaker 01:
Well, and that's the line, the Santorius line of cases.

[00:12:36] Speaker 01:
And we discussed that earlier.

[00:12:37] Speaker 01:
So those cases are different because they're talking about what's the natural result of the claimed element.

[00:12:44] Speaker 01:
The thickness value is not a claimed element.

[00:12:47] Speaker 01:
And so here we have the board saying that thickness, which is not explicitly disclosed,

[00:12:53] Speaker 01:
And they're saying that that's obvious.

[00:12:55] Speaker 01:
And then they're using that not explicitly disclosed element in contrast to par-pharmaceutical.

[00:13:02] Speaker 01:
And they're using that variable in the stiffness equation in order to assert obviousness.

[00:13:08] Speaker 01:
And this is also contrary to in-ray record, which says where the board assumes certain variable values and use those variable values.

[00:13:16] Speaker 01:
to assert that the priority inherently disclosed the missing element.

[00:13:21] Speaker 00:
Do I hear you objecting at all to the board's use in the regression analysis of the applicants of the patentees data in the calculation of K?

[00:13:36] Speaker 01:
It's not an objection to their use of that.

[00:13:38] Speaker 01:
It's an objection to their exclusive use of that one K value because that is just one mere possibility for the K value.

[00:13:46] Speaker 01:
There are other alternative possibilities for the K value.

[00:13:49] Speaker 01:
In order to conduct a carefully circumscribed analysis of inherency in this broader context of obviousness,

[00:13:56] Speaker 01:
The board should have used the low K value and the high K value and the low stiffness or the low thickness value and the high thickness value in order to determine whether or not the resulting calculated stiffness value is necessarily present in the PI films disclosed in that.

[00:14:13] Speaker 04:
And it's a proportional constant.

[00:14:15] Speaker 04:
And so the goodness of fit number, the R squared number, was really high when you do the regression analysis.

[00:14:25] Speaker 04:
So it seems like there's substantial evidence in the record for the board to have said that this calculated K based on all these data points is the appropriate measurement of the K constant.

[00:14:43] Speaker 01:
What the board said in the context of inherency was that Akahori does not inherently disclose a film that has a calculated stiffness value within the claimed range.

[00:14:53] Speaker 01:
And that was in the context of its anticipation analysis.

[00:14:56] Speaker 01:
And that's why it reversed the anticipation rejection.

[00:14:59] Speaker 01:
And then what the board did was it went over to the obviousness context, and it failed to carefully circumscribe its inherency analysis.

[00:15:06] Speaker 01:
So instead of using explicitly disclosed elements, it used

[00:15:11] Speaker 01:
suggested elements or assumed elements, we want to use the language of NRA records.

[00:15:16] Speaker 01:
And so what the board is doing is it's using assumed values and plugging them into an equation to assert that the prior art discloses inherently the missing element from the claim.

[00:15:29] Speaker 03:
You're out of time.

[00:15:30] Speaker 03:
Will we start in a few minutes?

[00:15:33] Speaker 01:
Thank you very much.

[00:15:39] Speaker 02:
I think we need a little bit more specificity in this discussion.

[00:15:48] Speaker 02:
First off, I'd like to talk about the discussion you're having regarding why the claims were anticipated.

[00:15:56] Speaker 02:
It wasn't that an average thickness was not expressly disclosed.

[00:16:00] Speaker 02:
It was the fact that an average thickness as measured by

[00:16:05] Speaker 02:
the 10-point variable, the parameter that was set forth in the patent, that was what the board said was not explicitly disclosed.

[00:16:14] Speaker 02:
They made specific reference to measuring the thickness at 10 regular intervals along the horizontal plane of the film.

[00:16:24] Speaker 02:
And they said in their decision at page 19 that that thickness as measured, the average thickness as measured by the patent wasn't present.

[00:16:33] Speaker 02:
And I believe that specific reason is why the claim was not anticipated.

[00:16:40] Speaker 02:
Then they went step two and they said, but based on this discussion of an average thickness, an average thickness of 20 microns would be obvious in view of the particular disclosure of a thickness range of 15 to 25.

[00:16:58] Speaker 02:
So I think it's important to emphasize the specific findings

[00:17:03] Speaker 02:
of the board here, because they were looking at a lot of substantial evidence, and they made some very, very specific findings.

[00:17:11] Speaker 02:
Using that specific finding of 20 microns, they then focused on example seven of Akahori, and using the calculation for thickness, using that average thickness of 20 microns, using the K value that was a result of the specific regression analysis,

[00:17:34] Speaker 02:
they were able to necessarily and inevitably conclude or conclude that when you plug those numbers into the equation, it necessarily and inevitably results in that stiffness value.

[00:17:45] Speaker 00:
Okay, which takes us to the same question.

[00:17:47] Speaker 00:
The regression analysis didn't use numbers, figures from the prior art.

[00:17:53] Speaker 00:
That's right.

[00:17:54] Speaker 00:
That's very strange, isn't it, to take what the inventor discloses?

[00:18:01] Speaker 00:
and say I'm going to use your disclosure, which nobody else published or made available, but I'm going to use your own information in order to recalculate and show that what you've done would have been obvious.

[00:18:14] Speaker 02:
It's being used as a definition.

[00:18:17] Speaker 02:
Because there is very little guidance on how to measure the stiffness.

[00:18:21] Speaker 02:
They say you can either use the machine, the particular loop testing machine, or you can use this equation.

[00:18:27] Speaker 02:
And the only guidance other than the particular equation that's set forth in the 704 pattern are the results of the examples.

[00:18:37] Speaker 00:
That's what the inventor taught.

[00:18:40] Speaker 00:
Where can you find this in the prior art?

[00:18:42] Speaker 02:
In the prior art, you can find that there is a known relationship between the stiffness, the thickness, and the modulus.

[00:18:48] Speaker 02:
That was known.

[00:18:49] Speaker 02:
Bless you.

[00:18:49] Speaker 02:
That relationship was known.

[00:18:54] Speaker 02:
And using that known relationship and using the values in the example, that was the only way you can determine what the K value was.

[00:19:03] Speaker 02:
Without that, there is absolutely no guidance to what the K value means.

[00:19:08] Speaker 00:
The only way you can invalidate a patent is to

[00:19:11] Speaker 00:
use the disclosure in the patent itself, that doesn't fit any of the requirements of requiring that it was already known.

[00:19:22] Speaker 02:
Well, we're not using the disclosure against them.

[00:19:24] Speaker 02:
Again, we're using that disclosure as a definition.

[00:19:26] Speaker 02:
What do the terms mean?

[00:19:28] Speaker 00:
We used the disclosure to calculate the number, which was the basis for obvious.

[00:19:33] Speaker 02:
We did use the disclosure of

[00:19:36] Speaker 02:
We use the formula that was known and expressly recited in the 704 patent, and then we use the examples to generate this linear regression to come up with a value for K. Otherwise, the K value is meaningless in that patent.

[00:19:54] Speaker 00:
It's meaningless because it was unknown and unknowable until you use the inventor's teaching.

[00:20:00] Speaker 02:
The K value is a constant, and it's a necessary result

[00:20:06] Speaker 02:
of the equipment that's being tested at the testing protocol.

[00:20:09] Speaker 02:
And that's set forth by Dr. Thomas and his declaration.

[00:20:14] Speaker 02:
And using that testing protocol, the K factor is a result of that analysis.

[00:20:23] Speaker 00:
Is this the only basis for supporting the opinion on appeal?

[00:20:31] Speaker 02:
The presence or absence of the K value.

[00:20:34] Speaker 00:
how the K value is calculated by the regression analysis?

[00:20:39] Speaker 02:
If there is no reliance on the examples, which is the only guidance present in the 704 patent, there is no value for the K. The K value cannot be determined.

[00:20:52] Speaker 02:
It would be all over the map.

[00:20:53] Speaker 02:
It could be anything and everything.

[00:20:55] Speaker 02:
And Dr. Thomas has testified and the PTO has accepted that the K value is a value that is

[00:21:05] Speaker 02:
specific to the testing protocol machine that's being used.

[00:21:09] Speaker 00:
The conclusion was not on the number assigned to the k value.

[00:21:14] Speaker 00:
Could you repeat that, please?

[00:21:15] Speaker 00:
The decision of obvious didn't turn on the number, the assignment of value to k. Well, the assignment of the value of k, you have to plug it into the equation.

[00:21:26] Speaker 02:
It is a variable.

[00:21:27] Speaker 02:
It's one of the

[00:21:29] Speaker 02:
variables in the equation that necessarily needs to be present for the stiffness calculations to be able to be made.

[00:21:38] Speaker 02:
The thickness was the 20 micron average thickness that was held to be obvious by the board based on the explicit disclosure of the 15 to 25 range as measured by the particular

[00:21:51] Speaker 02:
the particular test method, it was in the 704.

[00:21:53] Speaker 04:
I guess your point is that Akahori teaches all the claim limitations or teaches or suggests the 20 micron average thickness and now we need to figure out whether Akahori, that obvious film, has necessarily the claimed stiffness range

[00:22:16] Speaker 04:
And the only way to do that in terms of comparing apples to apples with the claimed ranges based on the examples given by Kanaka is to use the same K and to make the calculation for the stiffness value.

[00:22:33] Speaker 02:
That is correct.

[00:22:38] Speaker 00:
That is correct.

[00:22:39] Speaker 00:
That's your position, is it not?

[00:22:42] Speaker 00:
At least I had

[00:22:43] Speaker 00:
taken from your presentation that your position was that the thickness was obvious from the prior act, not how it was calculated.

[00:22:58] Speaker 00:
Is that wrong?

[00:22:59] Speaker 02:
The finding of the P-Tab, and I broke it out specifically, the finding of the P-Tab was that the thickness was not anticipated.

[00:23:08] Speaker 02:
because based on the disclosure of the thickness of 15 to 25.

[00:23:12] Speaker 00:
But that it would have been obvious.

[00:23:15] Speaker 00:
It definitely would have been obvious, but it's the... Dr. Horry didn't use a regression analysis in order to calculate how the formula worked.

[00:23:26] Speaker 02:
No.

[00:23:28] Speaker 02:
No, but again, we're missing information.

[00:23:32] Speaker 02:
And the point is, based on substantial evidence below,

[00:23:35] Speaker 02:
if you take that average thickness of 20 microns.

[00:23:39] Speaker 02:
And again, we're focusing very, very specific.

[00:23:42] Speaker 02:
20 microns in example 7, and you plug that into the formula that is the definition on how to determine stiffness.

[00:23:51] Speaker 02:
You necessarily and inevitably result in a value within the scope of the plane when you use the K value determined based, again, on the only guidance present in the 704 patent.

[00:24:09] Speaker 04:
So, what about the other side's concerns?

[00:24:14] Speaker 04:
What you're doing is picking and choosing and optimizing the thickness value based on all the teachings in Akihori.

[00:24:22] Speaker 04:
Akihori teaches a range of thickness values and you've cherry picked the one that suits your needs.

[00:24:31] Speaker 02:
We didn't cherry pick the thickness at all.

[00:24:34] Speaker 02:
There's a range of 15 to 25

[00:24:36] Speaker 02:
disclosed and the claim is an average thickness of 20, to smack dab in the middle.

[00:24:42] Speaker 02:
And that is what the substantial evidence below caused the PTO to conclude that that thickness would be obvious.

[00:24:51] Speaker 02:
After making that initial determination, it would be obvious to plug it in.

[00:24:54] Speaker 04:
If you took an average thickness of 15 microns, which Akalori teaches or suggests, or an average thickness of 25 microns,

[00:25:04] Speaker 04:
and then you threw it into the equation for stiffness value, you would end up with a stiffness value that's outside of 0.4 to 1.6.

[00:25:12] Speaker 02:
In some circumstances issue it depending on the examples that are being used.

[00:25:16] Speaker 04:
So therefore the argument that Kineka is making is so therefore what you get from the teachings of Akahori is a result that does not necessarily inherently always end up with a stiffness value within the claim range.

[00:25:32] Speaker 04:
Yes.

[00:25:34] Speaker 02:
My response to that is that wasn't the holding of the PTAB.

[00:25:38] Speaker 02:
It was a very specific holding that focused on 20.

[00:25:41] Speaker 02:
We're not talking about a big broad range of numbers.

[00:25:45] Speaker 02:
We are talking about a specific one number.

[00:25:49] Speaker 02:
The 20 micron average thickness is obvious, period.

[00:25:53] Speaker 02:
And then using that determination, the calculation is made to show that the stiffness necessarily and inevitably results.

[00:26:04] Speaker 02:
And again, based on that, it was again a very focused inquiry on that thickness.

[00:26:18] Speaker 00:
One of the things which comes through fairly clearly

[00:26:23] Speaker 00:
is that it's very hard really to find a difference between what has been patented and some of the disclosures.

[00:26:33] Speaker 00:
And yet it still seems peculiar the way the office reached that conclusion.

[00:26:41] Speaker 00:
And so I've been listening for you to tell us why it nonetheless is supportable even if you don't have to rely on the inventor's own disclosure.

[00:26:52] Speaker 00:
in order to say that what he was doing was already calculable, if you pick the right numbers for your calculations.

[00:27:01] Speaker 02:
But we've pointed in the record to evidence that shows that the relationship between the stiffness and the thickness in the modulus were known.

[00:27:13] Speaker 02:
The equation that's in the patent is not a new equation.

[00:27:18] Speaker 02:
to the extent that there's anything unique about the equation that's specific to the 704 patent.

[00:27:24] Speaker 02:
It's solely the k-value.

[00:27:26] Speaker 00:
But the only numbers that were used in the equation were what the inventor taught us.

[00:27:32] Speaker 02:
The only number we used in the equation that was not in the prior art is the k-value.

[00:27:39] Speaker 00:
And the only way we can know a meaning of what that k-value is... Well, there's no expression value to calculate k.

[00:27:44] Speaker 00:
Not K itself, isn't that right?

[00:27:47] Speaker 02:
Well, the regression analysis produced K. So that's how we came up with K. K is the result of the regression analysis.

[00:27:56] Speaker 02:
Yeah, the calculation of K. The result of the analysis, that's correct.

[00:28:01] Speaker 02:
I mean, K is the slope of the line when you plot all the data points.

[00:28:06] Speaker 02:
And as Judge Shen mentioned, it was done two times, and the R2 value

[00:28:12] Speaker 02:
dealing with the fit of those numbers was a very, very high correlation.

[00:28:16] Speaker 02:
So it was a good line.

[00:28:19] Speaker 02:
And that line was the K value.

[00:28:21] Speaker 02:
It was the result of the analysis.

[00:28:26] Speaker 00:
Except they haven't claimed K. They've claimed the stiffness.

[00:28:31] Speaker 02:
They've claimed the stiffness.

[00:28:32] Speaker 02:
That's correct.

[00:28:33] Speaker 02:
And they've only disclosed two ways to get at the stiffness.

[00:28:36] Speaker 02:
One is by using this loop tester to make a physical measurement of it.

[00:28:41] Speaker 02:
which is the patent office said, hey, we don't have machines.

[00:28:44] Speaker 02:
We can't do that.

[00:28:45] Speaker 02:
So it's completely reasonable to rely on the other method that was disclosed, which was the equation to determine the stiffness.

[00:28:54] Speaker 02:
And in order to use that equation, you have to have a definition for what K is.

[00:29:00] Speaker 02:
What does K mean?

[00:29:01] Speaker 02:
What guidance is provided?

[00:29:03] Speaker 02:
And the only guidance that is provided for what K means is in the examples and the use of those examples.

[00:29:10] Speaker 02:
the 12 examples either by itself or with the two comparative examples to do the regression analysis to come up with the line that's the K value.

[00:29:21] Speaker 00:
And I've been waiting for you to tell me where that's in the prior art.

[00:29:27] Speaker 02:
Again, what's in the prior art is the relationship between the stiffness and the thickness and the modulus.

[00:29:34] Speaker 02:
And what is also known based on the testimony of Dr. Thomas is that

[00:29:40] Speaker 02:
the K value, the fact that it's going to be necessarily present in all those locations, are dependent on the protocol and the machines that are being used in whatever particular circumstance that you're in.

[00:29:54] Speaker 02:
There's not one magic K value that's out there.

[00:29:58] Speaker 02:
The K value is dependent on, again, the protocol and the machine that's being used.

[00:30:04] Speaker 02:
So the only way we can figure out what the K value means

[00:30:08] Speaker 02:
is to look at the examples, to find out what guidance, what definition exists for that k value.

[00:30:17] Speaker 04:
Just curious, why is the k value, which is deemed to be a constant, not really a constant?

[00:30:26] Speaker 04:
When I think of a constant, I think of Avogadro's number.

[00:30:30] Speaker 04:
Here, we're being told, and maybe there's substantial evidence to support it, that the K is in some ways dependent on testing protocol or testing equipment.

[00:30:43] Speaker 04:
Why would it be that a constant can fluctuate based on those factors?

[00:30:49] Speaker 02:
I think it's a constant based on the particular protocol that's being used.

[00:30:53] Speaker 02:
Again, that's what Dr. Thomas testified to in the record.

[00:30:58] Speaker 02:
Unlike Avogadro's number, 6.02 x 1023, that's there.

[00:31:02] Speaker 02:
There is one Avogadro's number.

[00:31:04] Speaker 02:
There is not one k-value.

[00:31:06] Speaker 02:
Again, it's dependent on the particular protocol that's being used.

[00:31:11] Speaker 02:
In this case, in the 704 patent, there is one k-value.

[00:31:16] Speaker 02:
And that's the k value that was calculated.

[00:31:18] Speaker 04:
Right.

[00:31:19] Speaker 04:
Based on the testing protocol that Patton Hunter did to develop his examples and you want to use that same k value so you're comparing apples to apples, I understand that.

[00:31:30] Speaker 04:
I'm just trying to understand in terms of background why we're calling something a constant when it sounds like it's dependent on some factors.

[00:31:40] Speaker 04:
And therefore, it's not really like Avogadro's number, which is a constant.

[00:31:46] Speaker 02:
It's certainly not like Avogadro's number.

[00:31:48] Speaker 02:
Again, that's a one number and only one number.

[00:31:51] Speaker 02:
Again, here, because the K value is a constant that has a dependency on the particular protocol, it is only a constant to that particular protocol.

[00:32:04] Speaker 02:
So if the universe was simply the 704 patent, the protocol listed in the 704 patent, there would be one K value for that.

[00:32:15] Speaker 02:
and that and that's what was being relied upon to calculate the stiffness.

[00:32:22] Speaker 02:
Thank you.

[00:32:29] Speaker 01:
Just a couple of points in rebuttal.

[00:32:31] Speaker 03:
Quick question.

[00:32:32] Speaker 03:
Is Akahori one of the co-inventors of this pattern?

[00:32:37] Speaker 01:
Yes.

[00:32:40] Speaker 01:
Yes, that's correct.

[00:32:43] Speaker 03:
Okay.

[00:32:44] Speaker 01:
Yeah.

[00:32:45] Speaker 01:
Okay, so just a couple of points.

[00:32:46] Speaker 04:
So this invention is based on, I guess, the development that the co-inventor had come up with earlier.

[00:32:53] Speaker 01:
Well, Akahori is the lead inventor of the prior art reference and then is a co-inventor, a different inventor is the lead inventor of the 704 patent.

[00:33:02] Speaker 04:
Well, they're listed as co-inventors.

[00:33:04] Speaker 04:
Correct, yes.

[00:33:05] Speaker 04:
So working in the same area, obviously, all in my films, and then discovered an interesting preferred range for a property called stiffness.

[00:33:17] Speaker 01:
Yes.

[00:33:19] Speaker 01:
Okay.

[00:33:19] Speaker 01:
So the couple of points, first of all, there was a discussion about K and it's not being constant, and I'd just like to

[00:33:26] Speaker 01:
reiterate the appendix one in the request for re-examination which demonstrates that in the 704 patent there was one protocol used to evaluate the stiffness of the films and that was the loop stiffness tester.

[00:33:40] Speaker 01:
And using that one protocol all the films were evaluated for stiffness

[00:33:44] Speaker 01:
And the result, when it comes down to the K value, is that there were multiple different K values calculated by the requester and set forth in appendix one.

[00:33:54] Speaker 01:
So there's clearly no one constant K value, even when you use the same testing protocol for all of the films, which is what was done in the 704 patent.

[00:34:03] Speaker 01:
So that's the first point I wanted to mention.

[00:34:05] Speaker 01:
And then the second point, I also just want to mention that the appellee

[00:34:12] Speaker 01:
admitted that the stiffness value is not inherent in Akahori.

[00:34:21] Speaker 01:
There was a discussion with Judge Chin where they were talking about the values that come out when you look at the range of thickness.

[00:34:29] Speaker 01:
When you look at the range of thickness at 15, DiPelli admitted that

[00:34:34] Speaker 01:
the resulting calculated thickness value falls outside of the claimed range.

[00:34:38] Speaker 04:
Right, but their retort is that Aquahori teaches or renders obvious a lot of different versions of polymide films.

[00:34:47] Speaker 04:
These were all well known in the arts.

[00:34:50] Speaker 04:
15, 16, 17, 18, 19, 20 micron thickness, they were all part of the prior art, they were all part of the storehouse of knowledge already.

[00:34:59] Speaker 04:
One of those, the one that's 20 microns, when you use an average thickness of that one, it's going to end up having the stiffness range that has been recited and is an inherent property of the 20 average micron thickness version of Acahara.

[00:35:18] Speaker 04:
That is their argument.

[00:35:20] Speaker 01:
Well, and that argument runs afoul of this court's precedence in Rickard and also in Parr Pharmaceutical because Parr Pharmaceutical tells us that we can only use the explicitly disclosed elements when we're analyzing inherency in the context of obviousness.

[00:35:36] Speaker 04:
But a classic obviousness analysis isn't always just based on explicit teachings in the prior art and then whether there's a motivation to combine explicit teachings in the prior art.

[00:35:49] Speaker 04:
It also includes an analysis of whether

[00:35:52] Speaker 04:
something that is in the prior art, it would be nevertheless obvious to modify it, adjust it in some minor trivial way.

[00:36:00] Speaker 04:
And then you look at that variation and if that meets the claimed invention, then that likewise goes down under section 103.

[00:36:10] Speaker 04:
And so if an inherent property of a minor variation of something that's already existing in the prior art, why wouldn't that likewise go down just as

[00:36:20] Speaker 04:
the claims in Inray Cowell went down.

[00:36:23] Speaker 01:
Because this court's precedent says that it can't.

[00:36:26] Speaker 01:
In Par Pharmaceutical, in Shering v. Geneva, all of these cases say that the inherency must be based on elements that are explicitly disclosed.

[00:36:37] Speaker 01:
And so if we look at the different ranges of thickness, those are just mere possibilities.

[00:36:43] Speaker 01:
And that's Inray Ulrich, which tells us that we can't establish inherency based on one mere possibility.

[00:36:49] Speaker 01:
And so we have to stay firmly grounded in the context.

[00:36:53] Speaker 01:
And it's not just an obviousness inquiry.

[00:36:55] Speaker 01:
This is inherency in the context of obviousness.

[00:36:58] Speaker 01:
And that's why PAR Pharmaceutical is the controlling case law, because PAR is talking directly about the use of inherency in the context of an obviousness analysis.

[00:37:07] Speaker 04:
The ultimate holding in

[00:37:10] Speaker 04:
PAR was not that the only way you can do inherency is based on explicitly taught elements and combining them.

[00:37:17] Speaker 04:
The ultimate holding in PAR was that when you did have a combination that was obvious, the panel in the court was not convinced that the property recited in the claim was in fact inherently taught in that obvious combination.

[00:37:35] Speaker 04:
And so that was the holding of PAR.

[00:37:38] Speaker 04:
Otherwise, the more basic understanding of the law is that when there's a claimed invention that's obvious in view of the prior art, if the claim also recites an inherent property that would inherently be part of the obvious combination, then the claim doesn't survive under 104.

[00:38:06] Speaker 01:
Well, and this is under the Centaurus line, and this case is different than the case in Centaurus.

[00:38:11] Speaker 01:
Centaurus is that line of cases, and what you're referring to is whether or not it's the natural result of the

[00:38:20] Speaker 01:
of the pharmaceutical composition or of the other claimed element.

[00:38:24] Speaker 01:
In this case, the stiffness value range that's claimed is not the natural result of the other claimed element.

[00:38:31] Speaker 01:
We have to remember that thickness is not a claimed element.

[00:38:35] Speaker 01:
When you take the composition and you turn it into a PI film, it could have any variety of different thicknesses.

[00:38:41] Speaker 01:
The natural result from a stiffness standpoint is not necessarily within the claimed range, so it's not inherent.

[00:38:48] Speaker 01:
The natural result is any number of different stiffnesses.

[00:38:51] Speaker 01:
And so when we look at Akahori, we can't say that using Akahori and looking at this Antares line of cases, that we end up with an inherent and obviousness.

[00:39:03] Speaker 01:
And I know I'm out of time.

[00:39:04] Speaker 01:
Thank you very much.

[00:39:05] Speaker 03:
Thank you.

[00:39:05] Speaker 03:
We thank both counsel and the cases submitted.

[00:39:08] Speaker 03:
That concludes our proceedings.