[00:00:00] Speaker 02:
Beckman et al.

[00:00:01] Speaker 02:
v. Herring Gandy et al.

[00:00:04] Speaker 02:
2015-1765.

[00:00:06] Speaker 02:
Mr. Jacobs, when you're ready.

[00:00:25] Speaker 01:
Good morning, Your Honors.

[00:00:26] Speaker 01:
May it please the Court.

[00:00:27] Speaker 01:
This case is before the Court.

[00:00:29] Speaker 01:
because the board fundamentally misunderstood Beckman's novel solution to what is called the Knox breakthrough problem.

[00:00:37] Speaker 01:
This mistake, Your Honors, infected each of the board's rulings, first on claim construction, second on written description for Gandhi's claims, and third on the patentability of Beckman's claims.

[00:00:50] Speaker 03:
Could I understand, with respect to the Gandhi claims 12 to 17?

[00:00:55] Speaker 03:
Yes, Your Honor.

[00:00:56] Speaker 03:
Was there a determination that these claims corresponded to the count?

[00:01:01] Speaker 01:
Yes, your honor.

[00:01:02] Speaker 01:
All of the claims that were in the interference, which were claims three through 17, four of the claims have dropped out because they weren't appealed.

[00:01:09] Speaker 01:
They all corresponded to the count.

[00:01:10] Speaker 03:
Well, wouldn't, in order to get priority, wouldn't you have to show that you had written a description support for the count?

[00:01:20] Speaker 03:
In other words, it seems to me that the PTO, the board here,

[00:01:25] Speaker 03:
was looking to see whether there was written description support for Gandhi's claim rather than written description support for the count.

[00:01:34] Speaker 03:
It may be that you have to have both, but don't you have to have written description support for the count?

[00:01:39] Speaker 01:
Yes, your honor, but that's a different issue.

[00:01:41] Speaker 01:
Written description support for the count is used to determine who is the senior party.

[00:01:48] Speaker 01:
And in this case, Gandhi was given priority back to 2002.

[00:01:52] Speaker 01:
So they were the designated the senior party for purposes of the count.

[00:01:56] Speaker 01:
But support under 112 first paragraph written description for a claim is based on the current specification.

[00:02:04] Speaker 01:
So although the board did say that all of Beckman, excuse me, Gandhi's claims 3 through 17 were part of the interference, the argument that we presented before the board and is on appeal as well is that certain of those claims, the claims that are issued now,

[00:02:22] Speaker 01:
Those claims don't have written description support.

[00:02:25] Speaker 00:
Those claims being which ones of gandhi's that you're focusing on?

[00:02:28] Speaker 01:
All of the ones currently on appeal, Your Honor.

[00:02:31] Speaker 01:
There's claims 5, 7, 8, 10, 11, 16, and 17 on what I'll discuss as the minimizing step and then claims 12 through 17

[00:02:42] Speaker 01:
on the transitioning step.

[00:02:44] Speaker 03:
So the written description issue with respect to the two categories of Gandhi claims is different, right?

[00:02:53] Speaker 01:
That's true, Your Honor, yes.

[00:02:54] Speaker 03:
So when we're looking at Gandhi claims 12 to 17, are we looking at the Gandhi claims separate from the count or are we looking to see where there's written description support for the count in the Gandhi specification?

[00:03:09] Speaker 01:
Your Honor, the count is not of relevance at this point.

[00:03:13] Speaker 01:
Those claims are part of the interference, and neither party has challenged that on appeal.

[00:03:18] Speaker 03:
What's at issue is a simple... Well, then it seems to me if you look at the Gandhi claims and just ask whether there's support in the Gandhi specification for the Gandhi claims, that there is support for 12 to 17 of the Gandhi claims because it talks about a transitioning

[00:03:38] Speaker 03:
process rather than talking about it being a separate step.

[00:03:43] Speaker 03:
That seems to be your problem.

[00:03:46] Speaker 03:
I mean, it seems to be quite true that there's no support in the Gandhi specification for the count, but there seems to be support in the Gandhi specification for the Gandhi claims 12 to 17 if you don't worry about whether they correspond to the count.

[00:04:04] Speaker 01:
Well, Your Honor, we would respectfully disagree about the written description support in the Gandhi specification for two reasons.

[00:04:11] Speaker 01:
First of all, Your Honor, under the Agilent decision from this court, when a claim is deemed to have been copied from a host specification, in this case the Beckman 605 patent, the claims are to be construed in light of the Beckman specification.

[00:04:31] Speaker 01:
And our argument, Your Honor, on those claims is that when you construe claims 12 through 17... But I don't even have to look at the Beckman specification to construe the claims.

[00:04:41] Speaker 03:
On their face, the claims, the Gandhi... I'm just talking about Gandhi claims 12 to 17.

[00:04:47] Speaker 03:
Don't say anything about a separate third step.

[00:04:51] Speaker 01:
Well, Your Honor, on the plain language of the claims, we would also disagree.

[00:04:56] Speaker 01:
We would disagree for a couple of reasons.

[00:05:06] Speaker 01:
The transitioning, Your Honor, in claims 12 through 17 is described, number one, as being between the two other steps.

[00:05:15] Speaker 01:
And second, in the claim limitation, it says that the step has to be completed.

[00:05:20] Speaker 01:
Completing is the word that's used.

[00:05:22] Speaker 01:
And we would argue that even with the plain language of the claims, that that transitioning and completing have to indicate that they are separate and distinct

[00:05:32] Speaker 01:
from the two-step process of just providing a lean exhaust gas and a rich exhaust gas that are described in Gandhi's specification.

[00:05:42] Speaker 01:
I understand what you're saying.

[00:05:45] Speaker 01:
And further, Your Honor, the claims should be construed in view of Beckman's specification, and we believe that the Board erred under Agilent in not really construing them in a way that's understandable because the Board construed them citing the Beckman specification

[00:06:01] Speaker 01:
the Gandhi specification, a declaration submitted during the prosecution history of the Gandhi specification, of the Gandhi prosecution, and from an expert in the interference, Dr. Harrell.

[00:06:17] Speaker 03:
With respect, Your Honors, to... Let me ask you a question about the obvious determination with respect to the Beckman claims.

[00:06:24] Speaker 01:
Yes, Your Honor.

[00:06:25] Speaker 03:
There's a determination that all of these are obvious over the prior or different

[00:06:30] Speaker 03:
prior arc with respect to claims one and two and three and four.

[00:06:34] Speaker 03:
But what's the matter with the board's determination that three and four were obvious over the prior arc?

[00:06:43] Speaker 03:
Why is that not supported by substantial evidence?

[00:06:45] Speaker 01:
Your Honor, there are two problems.

[00:06:47] Speaker 01:
First of all, we believe that the board completely misconstrued the claims so that the alleged substantial evidence

[00:06:56] Speaker 01:
was applied to the wrong claim construction.

[00:06:59] Speaker 01:
We believe a proper construction... With respect to three and four?

[00:07:02] Speaker 01:
Yes, Your Honor.

[00:07:03] Speaker 03:
We believe that a proper construction of the Beckman claims... What was the claim construction error with respect to three and four?

[00:07:09] Speaker 03:
I understand you argue that there's a claim construction error with respect to one and two, which may be correct, but with respect to three and four, I thought the Board assumed a separate third step with the control of the

[00:07:23] Speaker 03:
the time and the composition.

[00:07:26] Speaker 01:
Well, Your Honor, I believe you're referring to the Cernilla reference, which was combined with a publication of... No, no, I'm just talking for the moment just about the claim construction with respect to three and four.

[00:07:37] Speaker 03:
It seemed to correct me if I'm wrong.

[00:07:39] Speaker 03:
I thought with respect to three and four, the board had construed those claims to require a separate third step with predetermined time and composition.

[00:07:52] Speaker 01:
That is right, Your Honor.

[00:07:53] Speaker 01:
That is right, Your Honor.

[00:07:54] Speaker 01:
The error in substantial evidence to address Your Honor's question has to do with the Cernilla reference.

[00:08:00] Speaker 01:
As Your Honor might recall, the Cernilla reference discloses an engine, and then it discloses what they call two exhaust system components, elements 32 and 34.

[00:08:09] Speaker 01:
And element 32, based on a reading and the specification, it's not clear what it is.

[00:08:17] Speaker 01:
Gandhi's position is that it should be deemed to be a three-way catalyst.

[00:08:21] Speaker 01:
and that element 34, which is downstream in terms of the way the exhaust flows, downstream of element 32 must be a lean nox trap or LNT.

[00:08:32] Speaker 01:
And we've argued, Your Honor, that because both elements 32 and 34 are merely called exhaust system components, that there's actually no way of telling what component 32 is.

[00:08:45] Speaker 01:
We actually think that Gandhi got it backwards.

[00:08:49] Speaker 01:
They said,

[00:08:49] Speaker 01:
Because a three-way catalyst is an exhaust system component, is one among the categories of exhaust system components, element 32 must be a three-way catalyst.

[00:09:01] Speaker 01:
And therefore, the gas that is supplied to element 34 is predictable or knowable.

[00:09:07] Speaker 01:
However, when you look at the specification, Your Honor, we believe that the generic description of exhaust system component is not enough to tell you what that element is.

[00:09:16] Speaker 01:
And in fact, if you took Gandhi's argument in this regard,

[00:09:20] Speaker 01:
to its end, both elements 32 and 34, you would not be able to definitively say what they are.

[00:09:28] Speaker 01:
So we don't believe that Cernilla actually discloses what is provided in terms of the chemical composition of the exhaust gas to element 34, which has been argued is a lean nox trap.

[00:09:42] Speaker 01:
And we would point out that when Dr. Harold, Gandhi's expert, was asked in his deposition

[00:09:49] Speaker 01:
if you could tell what the input to an exhaust system component is based on the exhaust gas passing through an unknown component upstream, that you can't tell how that second component would behave.

[00:10:06] Speaker 01:
So we believe, Your Honor, that there isn't substantial evidence based on a review of Cernilla.

[00:10:12] Speaker 01:
Okay.

[00:10:12] Speaker 03:
Just assume hypothetically we were to disagree with you on that.

[00:10:16] Speaker 03:
we decided to affirm the board with respect to claims three and four and the obvious determination.

[00:10:24] Speaker 03:
At the same time, we were to agree with you that the board misconstrued Beckman claims one and two.

[00:10:33] Speaker 03:
And that would result in a remand.

[00:10:36] Speaker 03:
But on the remand, why wouldn't the board then find that one and two were also obvious based on the same theory

[00:10:45] Speaker 03:
that had been applied to claims three and four.

[00:10:49] Speaker 01:
Your Honor, there's a couple reasons.

[00:10:50] Speaker 01:
One reason is there's testimony in the record from Dr. Croker, who was Beckman's expert, that even if you interpret it, Cernilla, consistent with how Gandhi has asked for it to be interpreted, that there wouldn't be evidence in this so-called third step that Gandhi asserts is in Cernilla that the lean nox trap would be predominantly filled with the exhaust gas

[00:11:15] Speaker 01:
in that third step when you go through the step.

[00:11:18] Speaker 03:
That's the difference between claim one and three?

[00:11:21] Speaker 01:
That's one of the differences between the claims, Your Honor.

[00:11:23] Speaker 03:
I thought you said in your brief that claims three and four were narrower than claims one and two.

[00:11:30] Speaker 01:
That's a fair characterization, Your Honor, yes.

[00:11:33] Speaker 03:
But why doesn't that lead to the

[00:11:35] Speaker 03:
a conclusion that if claims three and four are obvious, so are claims one and two.

[00:11:40] Speaker 01:
Your Honor, I wouldn't say you could directly say that claim three is in all respects narrower than claim one.

[00:11:46] Speaker 01:
I would say it is generally narrower.

[00:11:48] Speaker 01:
Claim one talks about the lean nox trap being predominantly filled with the exhaust gas during the third phase.

[00:11:56] Speaker 01:
But what claim three says is that there's a predetermined period.

[00:12:02] Speaker 01:
So in other words, that

[00:12:03] Speaker 01:
the person who sets up the controls for the engine sets a period.

[00:12:06] Speaker 01:
So that period could change the amount of gas from the third step that's in the lean nox trap at a particular time.

[00:12:16] Speaker 01:
So in some ways the claim is narrower, but in some ways the claim may not be because the predetermined period could be such that the lean nox trap may not be predominantly filled with gas during the third step.

[00:12:29] Speaker 01:
It could be

[00:12:30] Speaker 01:
45% filled or 55% filled.

[00:12:32] Speaker 01:
The claim doesn't have limitations in that regard.

[00:12:36] Speaker 02:
Mr. Jacobs, you wanted to save some rebuttal time?

[00:12:39] Speaker 01:
Yes, Your Honor.

[00:12:40] Speaker 01:
Thank you.

[00:12:41] Speaker 02:
We will save it for you, Mr. Figg.

[00:12:45] Speaker 04:
Thank you, Your Honor.

[00:12:46] Speaker 04:
May it please the Court?

[00:12:48] Speaker 04:
I think the starting point here is the claim construction.

[00:12:51] Speaker 04:
And you really have to go back to claim three of Gandhi, which is also claim one of Beckman.

[00:12:58] Speaker 04:
The board focused on the plain language of the claim.

[00:13:01] Speaker 04:
I think anyone who reads the board's opinion realizes that where the board had its big problem with Beckman's claim construction was it simply as inconsistent with the plain and unambiguous language of the claim.

[00:13:16] Speaker 03:
This is all really confusing as most interference cases are, but it seems to me that there are two separate written description issues in the interference proceeding.

[00:13:27] Speaker 03:
is a written description issue as to whether the count is supported by the written description in Gandhi here.

[00:13:36] Speaker 03:
And it seems to me that the count is not supported by the written description in Gandhi.

[00:13:41] Speaker 03:
But if we look at the Gandhi claims, they have different language than the count.

[00:13:49] Speaker 03:
And based on the language of the claims,

[00:13:53] Speaker 03:
there does seem to be a pretty good argument that there is written description support for the language of the claim.

[00:13:58] Speaker 03:
So what are we supposed to do?

[00:13:59] Speaker 03:
Are there two separate written description issues in these interference proceedings?

[00:14:04] Speaker 03:
One about the written description for the count and one for the claims?

[00:14:08] Speaker 03:
I mean, what's going on?

[00:14:10] Speaker 04:
I think I understand, Judge Dyke.

[00:14:15] Speaker 04:
The written description for claims three and four or Beckman's claims one through four

[00:14:22] Speaker 04:
really is not before the court because all of those claims have been held invalid.

[00:14:29] Speaker 04:
Now the claim construction is relevant to the invalidity holding, but the written description issue is really for claims 12 through 17.

[00:14:38] Speaker 03:
Suppose we say, okay, you've got to have written description support for the count in the Gandhi specification.

[00:14:48] Speaker 03:
You agree that if the count is construed the way

[00:14:52] Speaker 03:
Beckman wants it to be construed, that there is not written description support in the Gandhi specification for that view of the count.

[00:15:03] Speaker 04:
If the limitations that Beckman urges should be read into those claims were there, then as the board found, the claim would not be supported with those limitations in.

[00:15:17] Speaker 04:
Would not be supported by the Gandhi specification.

[00:15:19] Speaker 04:
That's right, with those limitations read in.

[00:15:22] Speaker 04:
The board said that and we haven't disagreed with that.

[00:15:25] Speaker 04:
But the point is, it was improper to try to read those limitations in.

[00:15:30] Speaker 04:
What Beckman is clearly doing is trying to read embodiments into the claim.

[00:15:35] Speaker 04:
And I wanted to focus the court on a couple of points in the specification to illustrate that that's the point.

[00:15:44] Speaker 04:
If you look at the Beckman specification,

[00:15:48] Speaker 00:
uh... the paragraph cut through before you get into the detail i don't want to stop you from going there but it's important but is it fair in a kind of crude sense to say that your position the board's position with respect to claim construction of claims three uh... agandhi is as copy is that the transition that necessarily occurs between step one and step three

[00:16:18] Speaker 00:
step two in between them.

[00:16:20] Speaker 00:
I know, we go from one to three to two.

[00:16:23] Speaker 00:
But anyway, kind of using the numbers that are used in the briefs.

[00:16:26] Speaker 00:
That that necessarily will satisfy all the requirements that Beckman is saying are necessary to satisfy step three in between one and two.

[00:16:42] Speaker 04:
I don't think that's what we have said, Your Honor.

[00:16:45] Speaker 04:
And I don't think that's what the board said.

[00:16:47] Speaker 04:
The only way Beckman can defend these claims, which it chose to draft very broadly, is to say that you have to construe claim two, excuse me, step three, the transitional supplying step, as a separate and distinct step that is controlled both in terms of duration and composition of the exhaust case.

[00:17:10] Speaker 00:
Right.

[00:17:10] Speaker 00:
I understand that.

[00:17:11] Speaker 00:
And your position is separate and distinct.

[00:17:13] Speaker 00:
It has no meaning here.

[00:17:15] Speaker 00:
It's not in the claim, et cetera, et cetera.

[00:17:17] Speaker 00:
But aren't you really just saying that what we've got here is necessarily a transition between one and two?

[00:17:25] Speaker 00:
That is, and in the course of that transition, everything in the claims is, with respect to step three, is satisfied.

[00:17:32] Speaker 00:
Exactly.

[00:17:32] Speaker 00:
OK, that's what I was trying to say.

[00:17:34] Speaker 00:
I'm sorry, I might have misunderstood.

[00:17:36] Speaker 00:
Well, I might not have expressed it.

[00:17:37] Speaker 04:
I would like to focus on one thing in the specification that I think illustrates that Beckman is trying to read something into the claims that is nothing more than a preferred embodiment, contrary to a lot of this court.

[00:17:49] Speaker 03:
But it seems to me there are two separate issues here with respect to the construction.

[00:17:53] Speaker 03:
One is whether the count, Beckman claim one, has a separate third step.

[00:17:59] Speaker 03:
And it seems to me very hard not to read Beckman claim one as having a separate third step.

[00:18:07] Speaker 03:
question is whether claim one incorporates this composition and period of time control, which it seems to me there is not such a good argument for reading that into claim one since it's explicit in claim three.

[00:18:22] Speaker 03:
But if we were to conclude that Beckman claim one does at least show a separate and distinct third step, then the board's claim construction was wrong and we'd have to send it back to have

[00:18:36] Speaker 03:
them consider whether Beckman claims one and two were obvious, right?

[00:18:41] Speaker 04:
I think that's right.

[00:18:43] Speaker 04:
I think this is very important, Your Honor.

[00:18:48] Speaker 04:
Beckman essentially says, look at figure two of its patent.

[00:18:53] Speaker 04:
And it's saying, you have to limit the claims to what's in figure two, which does indeed show that the third step is a separate step.

[00:19:04] Speaker 04:
What the board said is, no, I don't see anything like that in the claim language.

[00:19:08] Speaker 04:
You can switch from lean to rich, and there's going to be a transition that occurs when you make that switch, and there's going to be an intermediate exhaust gas during that transition.

[00:19:21] Speaker 04:
What Beckman is saying, no, you have to actually adjust it so that you have this flat level in there.

[00:19:27] Speaker 04:
But I think what's very important is to look at what

[00:19:31] Speaker 04:
Beckman's specification actually says about figure two.

[00:19:35] Speaker 04:
It says, and I'm quoting in column eight around line 10, the diagram presented in figure two diagrammatically depicts a preferred time curve of the air fuel ratio lambda.

[00:19:49] Speaker 04:
This is nothing more than a preferred embodiment.

[00:19:52] Speaker 04:
If you look at the statement of the invention, starting in the bottom of column one over to column two, and again,

[00:20:00] Speaker 04:
It's repeated in column four.

[00:20:02] Speaker 04:
The invention, it says, according to the invention, the method is, and they use precisely the same language that's in the claim.

[00:20:10] Speaker 04:
They chose to claim this broadly.

[00:20:14] Speaker 03:
But suppose we reject your contention about the claim construction of Beckman claim law, and we found that it does require a separate and distinct third step.

[00:20:24] Speaker 03:
Where does that leave us with respect to Gandhi claims 12 to 17?

[00:20:29] Speaker 04:
Well, Gandhi claims 12 through 17 have different language.

[00:20:33] Speaker 04:
And the board pointed out that all claim 12 requires is that there's a transition from lean to rich and that you complete that transition before you get to full rich.

[00:20:46] Speaker 03:
So Gandhi's... So your argument is that you would construe that Gandhi claims 12 to 17 as having a different scope than the count.

[00:20:55] Speaker 03:
Yes, and the board said that.

[00:20:57] Speaker 04:
And what's the key here?

[00:21:00] Speaker 00:
You would construe it that way if, as I understand it, we should reject your argument with respect to claims one and two of Beckman.

[00:21:12] Speaker 00:
Because as I understand your argument with respect to claims one and two of Beckman, and by extension claims three of Gandhi, that the transition that satisfies

[00:21:26] Speaker 00:
That claim, as you say it should be read, is the same transition that satisfies claim 12 of Gandhi, right?

[00:21:33] Speaker 04:
Yes.

[00:21:34] Speaker 04:
There is an additional requirement, though, in claim one about the nitrogen trap being predominantly filled.

[00:21:43] Speaker 00:
That's not in claim 12.

[00:21:45] Speaker 00:
Isn't it your argument that that will naturally occur with the transition?

[00:21:49] Speaker 04:
That's what our expert has shown, that it naturally occurs.

[00:21:54] Speaker 03:
But I think the key point... Gandhi claimed 3 is identical to Beckman claimed 1.

[00:21:59] Speaker 03:
Correct.

[00:22:00] Speaker 03:
Yeah, but not claimed 12.

[00:22:02] Speaker 03:
That's right.

[00:22:03] Speaker 04:
But getting to your point, Judge Steck, because I think this really is sort of the... Almost everything somehow hinges on this.

[00:22:10] Speaker 04:
The invalidity positions, the written description positions.

[00:22:15] Speaker 04:
Beckman's position depends on reading into the claim a requirement that, in claim 1,

[00:22:24] Speaker 04:
The so-called third supplying step is separate and distinct and controlled in terms of composition and duration.

[00:22:31] Speaker 03:
Now, I don't think that's true.

[00:22:33] Speaker 03:
I think there are two separate issues here.

[00:22:35] Speaker 03:
One is whether it requires a separate and distinct step, and the other one is whether it controls composition and duration.

[00:22:42] Speaker 04:
No, I don't.

[00:22:43] Speaker 04:
I'm sorry, your honor.

[00:22:44] Speaker 04:
I respectfully submit that I think what Beckman's position is

[00:22:49] Speaker 04:
that controlled means.

[00:22:51] Speaker 04:
You're controlling it in terms of composition and duration.

[00:22:55] Speaker 04:
And that's what figure two shows.

[00:22:57] Speaker 03:
They're arguing both, but I think they're two separate arguments.

[00:23:00] Speaker 03:
And I think that the board made two claim constructions here, one with respect to claim one, one that it's not a separate and distinct step, and two that it doesn't have to control duration and composition.

[00:23:15] Speaker 03:
The second one

[00:23:16] Speaker 03:
is it seems to me a much more powerful argument given that the difference between claim one of Beckman and claim three of Beckman.

[00:23:26] Speaker 04:
Well, no.

[00:23:27] Speaker 04:
Claim one of Beckman simply says a third supplying step where you have an intermediate exhaust gas and that the LNT is predominantly filled before you terminate that intermediate step.

[00:23:42] Speaker 04:
That's what claim one says.

[00:23:43] Speaker 04:
What claim three says is that it puts some additional detail on that.

[00:23:48] Speaker 04:
That step three occurs over a predetermined period of time.

[00:23:53] Speaker 04:
There's a constant exhaust gas and so forth.

[00:23:56] Speaker 04:
But key to both of these things, Beckman has argued for claim one, or claim three of Gandhi, that it's figure two.

[00:24:07] Speaker 04:
It requires that you adjust the engine mixture

[00:24:12] Speaker 04:
to an intermediate step and that you control its duration and its composition.

[00:24:19] Speaker 04:
And that's where the board had a problem.

[00:24:21] Speaker 04:
The board said you could have drafted the claim that way.

[00:24:24] Speaker 03:
You simply didn't.

[00:24:25] Speaker 03:
Do you agree that Beckman claimed one?

[00:24:27] Speaker 03:
Put aside the control of the composition and duration.

[00:24:31] Speaker 03:
Do you agree that Beckman claimed one talks about a separate and distinct third step?

[00:24:35] Speaker 04:
No.

[00:24:36] Speaker 04:
The reason why is this.

[00:24:38] Speaker 04:
What the board said

[00:24:39] Speaker 04:
And I think the board is absolutely right on this.

[00:24:42] Speaker 04:
All the third supplying step in claim one says is that between steps one and two, there is an exhaust gas going into the LNT that has less oxidizing agents than in the first step and less reducing agents than in the second step.

[00:25:03] Speaker 04:
The board said the claim doesn't tell you how to accomplish that.

[00:25:07] Speaker 04:
And you can accomplish that simply by transitioning from lean to rich.

[00:25:12] Speaker 04:
You don't have to make a separate and distinct adjustment in the air-fuel mixture ratio going into the engine.

[00:25:21] Speaker 04:
Beckman is arguing you do have to make that.

[00:25:23] Speaker 04:
The board said that's just not in the claims.

[00:25:26] Speaker 04:
And Beckman's specification uses exactly the same language to describe the invention, and it says it's a preferred body.

[00:25:36] Speaker 04:
I'm sorry?

[00:25:37] Speaker 04:
Claim one talks about a separate third step.

[00:25:40] Speaker 04:
It doesn't really call it says it says you supply with with a mixture rich in in oxidizing agents and you supply with a mixture rich in producing agents.

[00:25:51] Speaker 04:
It talks about where in the step between the oxidizing agents.

[00:25:53] Speaker 04:
Between the two you supply with a mixture that has that is intermediate between those two.

[00:26:01] Speaker 03:
Why isn't that a separate step?

[00:26:02] Speaker 03:
Just based on the claim line.

[00:26:04] Speaker 02:
It uses the word supplying, which is exactly the same word used in what is conceded to be the first two steps.

[00:26:11] Speaker 04:
Yes, but here's the difference.

[00:26:15] Speaker 04:
I had trouble understanding Beckman's position myself, I have to admit.

[00:26:21] Speaker 04:
What Beckman means when he says that the steps are separate and distinct is he means that

[00:26:30] Speaker 04:
You have to control the engine.

[00:26:32] Speaker 04:
You have a mixture going into the engine that it's a lean mixture.

[00:26:42] Speaker 04:
And then what Beckman says is you now have to adjust that mixture, not to rich conditions, but to a point that is intermediate between lean and rich.

[00:26:53] Speaker 04:
And you have to operate the third supplying step at that point.

[00:26:58] Speaker 04:
And then you adjust it again to get to rich.

[00:27:02] Speaker 04:
That's what Beckman means by separate and distinct.

[00:27:05] Speaker 04:
That's what figure two illustrates.

[00:27:07] Speaker 04:
And that's what the board set is simply not in the clink.

[00:27:10] Speaker 00:
So your position, as I understand it, is that all you have to do is switch from lean to rich.

[00:27:17] Speaker 00:
And necessarily, on its way from lean to rich, you'll have a transitioning step

[00:27:23] Speaker 00:
that will satisfy all the requirements of Plan 1, as I understand it.

[00:27:27] Speaker 00:
Is that right?

[00:27:29] Speaker 04:
No.

[00:27:30] Speaker 04:
Yes.

[00:27:31] Speaker 04:
Yes, it's right.

[00:27:32] Speaker 04:
But let me try to parse it a little bit, Judge Bryson.

[00:27:38] Speaker 04:
The necessarily part of your question gets to written description.

[00:27:44] Speaker 04:
It gets to whether that necessarily occurs in the Gandhi

[00:27:48] Speaker 04:
method, which was an issue for written description of claim 3.

[00:27:52] Speaker 04:
It's not an issue for written description of claim 12.

[00:27:56] Speaker 04:
But the first part of your point is exactly right.

[00:27:59] Speaker 04:
What the board said is the claim does not tell us how we have to get to that intermediate mixture.

[00:28:07] Speaker 04:
It doesn't say we have to make an adjustment.

[00:28:09] Speaker 04:
It says we can get to that intermediate mixture simply by transitioning

[00:28:15] Speaker 04:
from lean to rich.

[00:28:17] Speaker 04:
And during that transition, you are necessarily, as you said, going to have a period.

[00:28:23] Speaker 00:
Judge?

[00:28:24] Speaker 00:
And will you also necessarily have a situation in which the NOx catalytic converter is predominantly filled with exhaust gas delivered in the step?

[00:28:38] Speaker 04:
Our experts said yes, but that is only an issue for claims that have now been held invalid because of prior art.

[00:28:45] Speaker 04:
It's not an issue for claims 12 and the progeny of claim 12 because those claims don't require that.

[00:28:52] Speaker 04:
Now, I would point out that Beckman's expert, Dr. Croker, acknowledged, and the board referred to this in its opinion, he acknowledged that when you switch from lean to rich, what you're going to have is a constantly changing exhaust gas over the range between

[00:29:15] Speaker 04:
the bounds of the lean and the bounds of the rich.

[00:29:17] Speaker 04:
You're going to have this transition.

[00:29:20] Speaker 02:
Thank you, Mr. Fager.

[00:29:21] Speaker 02:
I think your time is exhausted.

[00:29:23] Speaker 04:
I'm sorry?

[00:29:24] Speaker 02:
Your time is exhausted.

[00:29:26] Speaker 02:
Oh, I'm sorry.

[00:29:26] Speaker 02:
Thank you, Your Honor.

[00:29:27] Speaker 02:
Mr. Jacobs has a little rebuttal time.

[00:29:29] Speaker 01:
Thank you, Judge Laurie.

[00:29:32] Speaker 01:
A few points, Your Honors.

[00:29:33] Speaker 01:
Fundamentally, the problem with Gandhi's position is that it eviscerates the entire purpose of Beckman's invention.

[00:29:40] Speaker 01:
Beckman specification repeatedly talks about the Knox breakthrough problem.

[00:29:45] Speaker 01:
In particular, I direct your honors to column two, lines 15 to 33, and more particularly, lines 27 to 28.

[00:29:53] Speaker 01:
This mixing, which Gandhi's counsel referred to as what naturally occurs if you immediately switch from lean to rich, the specification says this mixing briefly results in relatively powerful reactions.

[00:30:06] Speaker 01:
And the specification goes on to say,

[00:30:08] Speaker 01:
Those are what cause Knox breakthrough.

[00:30:11] Speaker 01:
So what do you mean by, well, I'm sorry.

[00:30:14] Speaker 01:
Finish your point.

[00:30:15] Speaker 01:
OK.

[00:30:15] Speaker 01:
And so the representation from Gandhi that Beckman's claims are somehow limited to the single embodiment that's figure two is not right, Your Honors.

[00:30:27] Speaker 01:
The specification is replete with discussion that the entire purpose of what Beckman did, Beckman was aware of the prior art.

[00:30:35] Speaker 01:
The published version of an earlier Gandhi application was cited

[00:30:39] Speaker 01:
during the prosecution history of the PTO and the claims were allowed.

[00:30:43] Speaker 01:
The whole purpose of Beckman's invention was to eliminate this Knox breakthrough problem that is inherent in Gandhi's direct switching from lean to rich.

[00:30:54] Speaker 01:
It's inherent in the other prior art references of record also.

[00:30:58] Speaker 00:
Now, what is it that constitutes separate and distinct?

[00:31:03] Speaker 00:
What is it that's necessary to happen to make the

[00:31:08] Speaker 00:
steps separate and distinct?

[00:31:09] Speaker 00:
Is it enough, for example, that you have a transition between lean to rich, which occurs over some period of time that's, let's say, slower than the minimum necessary to conduct the transition?

[00:31:26] Speaker 00:
Would that be a separate and distinct step?

[00:31:29] Speaker 01:
I don't think so, Your Honor.

[00:31:30] Speaker 00:
What is it about

[00:31:31] Speaker 00:
separateness and distinctness that you think the patent is limiting to.

[00:31:35] Speaker 01:
And I'll answer your question Judge Bryson with reference to Gandhi's specification briefly if I might.

[00:31:41] Speaker 01:
The transition in Gandhi is nothing more than what happens in the lean knocks trap when there's lean gas that comes in and then

[00:31:52] Speaker 01:
effectively a wave of rich gas comes in.

[00:31:54] Speaker 00:
Okay, and in between, and in the course of that, you're going to get a mix that'll be less lean, more rich, than the lean stage, and less rich, more lean, than the rich stage, right?

[00:32:06] Speaker 00:
But that mixing, your honor, is exactly what Gandhi acknowledges causes Knox Breakthrough, and that addresses... Well, maybe so, but why isn't that fair, why isn't fair to characterize that transitional period as a separate step, or at least as a step

[00:32:22] Speaker 00:
And if that isn't a step, what is it that your view of separate and distinct requires in addition to the transition?

[00:32:31] Speaker 01:
Well, may I finish, Your Honor?

[00:32:32] Speaker 01:
I think I'm out of time.

[00:32:34] Speaker 01:
There are a couple things, Your Honor.

[00:32:36] Speaker 01:
One, again, and we've briefed this extensively, the grammar and structure of Beckman's claims make it clear that they have to be.

[00:32:44] Speaker 01:
As Judge Luria asked, opposing counsel, there are three supplying steps.

[00:32:48] Speaker 01:
And to treat the third supplying step as somehow less distinct than the first two supplying steps doesn't make sense because then you wouldn't have a lean step or a rich step.

[00:32:59] Speaker 01:
You would just have a mishmash of yes.

[00:33:00] Speaker 00:
But I'm looking to you for what the separateness mean in this context.

[00:33:04] Speaker 01:
Separate means there's a couple of ways to answer it, Your Honor.

[00:33:07] Speaker 01:
One, the claim says between.

[00:33:10] Speaker 01:
Between implies that something is before and something is after.

[00:33:14] Speaker 01:
Also, when you look to the where-in clause, and I'll just refer to claim one, when you look to the where-in clause, it also includes the word between to say that it comes after the lean step and before the rich step, and it also puts further limitations on what has to happen in that step.

[00:33:31] Speaker 01:
There's nothing in the Gandhi specification that says what the exhaust gas in some intermediate phase would be, because that's not even disclosed in their invention, whereas that is the heart of Beckman's invention.

[00:33:43] Speaker 02:
Thank you, Mr. Jacobs.

[00:33:44] Speaker 02:
We'll take the case unresolved.

[00:33:46] Speaker 02:
Thank you, Your Honors.