[00:00:02] Speaker 02:
Good morning.

[00:00:03] Speaker 02:
We have three cases set for oral argument this morning.

[00:00:06] Speaker 02:
The first one is Ever Ready versus Spectrum.

[00:00:09] Speaker 02:
Are counsel ready to proceed?

[00:00:12] Speaker 02:
Please go ahead.

[00:00:13] Speaker 04:
Mr. Kupar?

[00:00:16] Speaker 04:
Yes, sir.

[00:00:16] Speaker 04:
Thank you, your honor, and may it please the court.

[00:00:19] Speaker 04:
This court has stated time and time again that secondary considerations are never an afterthought.

[00:00:25] Speaker 04:
The board, however, failed to give secondary considerations any thought.

[00:00:31] Speaker 03:
I'm a little surprised that you start off with secondary considerations because I honestly didn't find the argument that you made in your reply brief in your opening brief.

[00:00:41] Speaker 03:
For starters, I'm not sure I found it in the proceedings before the board either, but that didn't seem to be that it's more than a whiff of an argument that was in your opening brief.

[00:00:53] Speaker 04:
In the opening brief, we raised unexpected results by way of the consumer reports and the white net.

[00:00:59] Speaker 03:
You alluded to unexpected results in the context of an argument about obviousness.

[00:01:05] Speaker 03:
I didn't see that you made the argument that you make in your reply brief, and it appeared to be making here, that the board committed error by not addressing objective considerations.

[00:01:17] Speaker 03:
That argument was not made in the opening brief, was it?

[00:01:20] Speaker 04:
The argument was made in the context of a specific secondary consideration.

[00:01:25] Speaker 03:
But no argument was made that the board committed error by not addressing objective considerations, correct?

[00:01:33] Speaker 04:
Your Honor, that's not correct.

[00:01:34] Speaker 04:
And the position we would take on that is based on our questions that we raised on issue that's before this court is issues of obviousness.

[00:01:41] Speaker 04:
By definition, that's the four factor grant test that would include secondary considerations here, Your Honor.

[00:01:46] Speaker 03:
So you say anytime you raise obviousness,

[00:01:49] Speaker 03:
you have implicitly raised objective considerations, and if objective considerations are not addressed, notwithstanding that you don't specifically request that they be addressed, that that's enough to preserve that argument?

[00:02:04] Speaker 04:
At a minimum, but also what we have here, Your Honor, is law, not just evidence.

[00:02:07] Speaker 04:
In other words, the Western District of Wisconsin decision here, finding that these secondary considerations were so strong that spectrum, when facing this preliminary injunction motion,

[00:02:19] Speaker 04:
couldn't even rise to the lowest level of a vulnerability.

[00:02:22] Speaker 03:
It's a prior proceeding years ago.

[00:02:24] Speaker 03:
That was not the proceeding that we're reviewing.

[00:02:27] Speaker 03:
We're reviewing a proceeding coming from the board.

[00:02:30] Speaker 03:
And I don't see, frankly, that you raised the objective considerations argument before the board.

[00:02:37] Speaker 03:
And I'm not seeing it as an independent argument before this court.

[00:02:40] Speaker 04:
This was raised actually in a motion to strike by spectrum after the briefing was completed, this very issue.

[00:02:45] Speaker 03:
That's right.

[00:02:46] Speaker 03:
And we denied the motion to strike because normally,

[00:02:48] Speaker 03:
a motions panel will not strike something from a brief, it will leave it to the merits panel to decide whether or not the argument has been raised.

[00:03:00] Speaker 03:
And I'm put to you that I'm not seeing that it was raised.

[00:03:03] Speaker 04:
It was raised on page six of our appeal brief to the board.

[00:03:07] Speaker 04:
There was an identification of the secondary considerations, and right after the sentence, three citations.

[00:03:13] Speaker 02:
Cite me in the record on appeal, please.

[00:03:18] Speaker 04:
So it would have been appendix 2882 was the actual citation in the appeal brief.

[00:03:26] Speaker 04:
And then the evidence, there's only 16 exhibits here, Your Honor, in our appeal brief to the board.

[00:03:31] Speaker 04:
Not this appeal brief, obviously, the appeal brief to the board.

[00:03:34] Speaker 04:
And we identified, at the end of that sentence, exhibits ace.

[00:03:39] Speaker 01:
2882 is not in our joint amendments.

[00:03:41] Speaker 01:
It's not?

[00:03:42] Speaker 01:
No.

[00:03:43] Speaker 01:
I assume you do what everybody does, which is attach numbers to a vast amount of material.

[00:03:48] Speaker 01:
and then only put in here what you cite, so you didn't cite that page.

[00:03:53] Speaker 04:
Yeah.

[00:03:53] Speaker 04:
So it was originally part of the record.

[00:03:56] Speaker 04:
It's part of our motion to strike.

[00:03:58] Speaker 04:
It was identified before the board, all three pieces of evidence.

[00:04:02] Speaker 04:
So out of 16 exhibits we raised, three of them raised these secondary considerations.

[00:04:06] Speaker 04:
We had it by way of a declaration from Dr. White.

[00:04:10] Speaker 04:
We had this Consumer Reports article.

[00:04:12] Speaker 04:
And then thirdly, we also had the

[00:04:15] Speaker 04:
Western District of Wisconsin decision, which was part of the record here, the specific citation by the court there in regards to the secondary consideration.

[00:04:25] Speaker 03:
Well, from your motion, I have 2882, your response to the motion.

[00:04:31] Speaker 03:
And again, I see that you're referring to a transcript from the proceeding before the trial court, in this case, the district court.

[00:04:41] Speaker 03:
But I'm not seeing an argument made to the board saying,

[00:04:45] Speaker 03:
board, please take into account the following objective considerations.

[00:04:50] Speaker 03:
I'm not seeing it.

[00:04:51] Speaker 04:
Yeah, so the sentence before is the one we're citing to, Your Honor, there.

[00:04:54] Speaker 04:
Given the state of the art, the results achieved by implementing the teachings of the 360 patents were unexpected, at least because of the battery.

[00:05:02] Speaker 04:
It goes on.

[00:05:02] Speaker 03:
But that really goes to obviousness, whether something would have been obvious at the prima facie obviousness case.

[00:05:10] Speaker 03:
It doesn't have at least

[00:05:13] Speaker 03:
in the context in which it's presented here, it doesn't seem to suggest secondary consideration.

[00:05:18] Speaker 04:
So this is a reexamination, as we all know here.

[00:05:20] Speaker 04:
It's not just a prima facie case, as you would see with the patent application before initial exam.

[00:05:24] Speaker 04:
It's a preponderance of the evidence standard in a reexamination at all times.

[00:05:28] Speaker 04:
Therefore, the secondary considerations evidence must be analyzed at all times to determine whether more likely than not there is or is not obviousness.

[00:05:36] Speaker 04:
So if there isn't a prima facie,

[00:05:38] Speaker 04:
proof and then you come back with secondary considerations.

[00:05:41] Speaker 04:
The secondary considerations are part of the analysis for moment one in a reexamination.

[00:05:45] Speaker 01:
Can I ask you another but different question about the reply brief and in particular what's not in the reply brief?

[00:05:54] Speaker 01:
In your opening brief, if I remember right, you made two principal arguments, one having to do with the change of the makeup of the cathode material

[00:06:05] Speaker 01:
This goes to GAN that did not include iron disulfide.

[00:06:13] Speaker 01:
And that the argument was that the problem of gas caused swelling in the transition metal oxide cathodes discussed in GAN simply, I gather everybody agreed, simply doesn't exist in the iron disulfide.

[00:06:31] Speaker 01:
And then you made another argument about the calculation of the interfacial ratio of anode to cathode.

[00:06:39] Speaker 01:
The first argument, unless I missed something, just didn't appear in your reply brief.

[00:06:44] Speaker 01:
Why?

[00:06:44] Speaker 04:
I'm not sure why it would or would not have, Your Honor, but it's a strong argument.

[00:06:48] Speaker 04:
It's the two grounds.

[00:06:49] Speaker 04:
And it goes back to what the district court actually found here too in Wisconsin.

[00:06:53] Speaker 04:
The GAN reference, there's two fatal problems with GAN.

[00:06:55] Speaker 04:
And the district court had GAN before it in 2008.

[00:06:58] Speaker 04:
The board had it before it again just last year.

[00:07:01] Speaker 04:
The problem, and you identify both, the first one, GAN does not disclose as a starting point iron disulfide as the cathode, instead it identifies SVO, because this is a lithium battery that's used.

[00:07:12] Speaker 01:
Well there's a sentence, or I guess even a paragraph that says, you can use our invention with a bunch of different things, including iron disulfide.

[00:07:19] Speaker 01:
So the words are there, but nevertheless, you had an argument based on your expert, and to some extent I think not contradicted by the other side's expert, that said a skilled artist in reading that would in fact not

[00:07:30] Speaker 01:
be motivated to use the sub-1 AC ratio for the different cathode makeup because the problem that GAN addresses just doesn't exist in this one.

[00:07:43] Speaker 01:
And I thought there was something to that argument and then it didn't appear in the gray brief.

[00:07:48] Speaker 04:
Just to be clear, in our gray brief versus blue brief here,

[00:07:51] Speaker 04:
Because we may not have specifically erased it, it is in great detail.

[00:07:54] Speaker 04:
We were specifically rebutting specific arguments there with a limited amount of space.

[00:07:58] Speaker 04:
So in other words, we're not looking in our gray brief to drop that argument.

[00:08:02] Speaker 04:
I completely agree, and I'm ready here to speak on oral argument today, that the GAN reference specifically, it cannot be a starting point, especially in view of these secondary considerations, even without the secondary considerations.

[00:08:13] Speaker 04:
Because number one, the starting point in GAN is a completely different cathode.

[00:08:16] Speaker 04:
It's SBO, not iron disulphide.

[00:08:18] Speaker 04:
And number two, all it teaches at most is this thing called a total ratio.

[00:08:22] Speaker 04:
That's the design parameter.

[00:08:24] Speaker 04:
So the issue quickly becomes here, what a person of ordinary skill have switched out that total ratio into an interfacial ratio as an ordinary design parameter?

[00:08:35] Speaker 04:
And this overwhelming evidence here, including the secondary consideration, is absolutely not.

[00:08:40] Speaker 04:
Again, that's what the district court looked at, too, with respect to the secondary considerations.

[00:08:43] Speaker 04:
For example, there's copying here.

[00:08:45] Speaker 04:
EverReady's Energizer spectrum is Rayovac.

[00:08:49] Speaker 04:
Energizer comes out in the marketplace in 2002 with this device, this patented device, has unbelievable success with it because it has a longer battery life in view of this patented invention.

[00:08:59] Speaker 04:
Spectrum five years later, copies.

[00:09:01] Speaker 04:
If it was so obvious in GAN to make all of these design changes, why didn't people of extraordinary skill on both sides do it years and years before?

[00:09:09] Speaker 04:
The argument here that these references from the 90s were so obvious and these design parameters like interfacial ratio was so obvious, that's true.

[00:09:18] Speaker 04:
The district court found that this evidence was so strong in favor of non-obviousness, in fact, here, that Spectrum couldn't even meet the vulnerability to invalidity standards just to knock off and to deny a motion for preliminary injunction here.

[00:09:32] Speaker 04:
That's why that decision is so important here.

[00:09:34] Speaker 04:
It's not just evidence.

[00:09:35] Speaker 04:
It's law.

[00:09:36] Speaker 04:
And what happened next was if Spectrum disagreed with that decision or found legal error in it, it could have raised it to this court.

[00:09:43] Speaker 04:
It could have appealed it.

[00:09:44] Speaker 04:
It did not.

[00:09:44] Speaker 04:
It settled.

[00:09:45] Speaker 04:
It stipulated to a dismissal with prejudice.

[00:09:49] Speaker 04:
And that's where we're at today.

[00:09:50] Speaker 04:
And as this court's found before, stipulated dismissals with prejudice based on settlement is a final judgment.

[00:09:56] Speaker 04:
And in fact, what I would submit to Your Honors too is that the final judgment here is so strong.

[00:10:02] Speaker 04:
Are you suggesting there's some kind of collateral estoppel that applies here?

[00:10:05] Speaker 04:
Your Honor, I am suggesting that.

[00:10:07] Speaker 03:
Well, that's the first time I've heard that argument made.

[00:10:09] Speaker 03:
I feel like I'm coming to an argument that I'm in the wrong courtroom.

[00:10:15] Speaker 04:
If it's not that, it's darn close.

[00:10:18] Speaker 04:
And the reason is it's got a persuasive effect here.

[00:10:21] Speaker 04:
In context of whether or not the interfacial ratio of less than one is an ordinary design consideration, as Spectrum argues, or we identify as a patentable invention, the context of all this evidence shows that if it was so simple, as the district court put it, a lot of people, because this is a very competitive field, all of us have AA batteries,

[00:10:41] Speaker 04:
Somebody would have come up with this years and years ago in the 90s, like all these Pyrot references.

[00:10:45] Speaker 04:
It didn't happen.

[00:10:46] Speaker 04:
In fact, one of the Pyrot references here, for example, is Ledger.

[00:10:49] Speaker 04:
Ledger is an EverReady patent.

[00:10:51] Speaker 04:
The second named inventor is Jack Marple here, who's the named inventor of the 360 patent.

[00:10:55] Speaker 04:
That patent issued in 1990.

[00:10:57] Speaker 04:
Why did it take Mr. Marple, who's a person of extraordinary skill, a chemist in the battery industry, 12 years to figure this one out?

[00:11:03] Speaker 04:
And why did it take another five years before Spectrum, as the court found in Wisconsin, copied EverReady Energizer's battery?

[00:11:10] Speaker 04:
The point here is all of that evidence leads to a finding of non-obviousness, to reversal.

[00:11:16] Speaker 04:
And the bottom line is, in our briefing to the board, could we have block quoted it, highlighted it, added more into it?

[00:11:24] Speaker 02:
Just so you know, you're in your rebuttal time.

[00:11:26] Speaker 04:
OK.

[00:11:27] Speaker 04:
I'll stop here.

[00:11:46] Speaker 00:
Good morning, Your Honor.

[00:11:47] Speaker 02:
Ms.

[00:11:48] Speaker 02:
Sterling.

[00:11:50] Speaker 00:
I'm Deborah Sterling on behalf of Appellee Spectrum Brands.

[00:11:54] Speaker 00:
Your Honor, the board was correct to affirm the examiner in finding these claims obvious.

[00:11:59] Speaker 00:
And my opponent raises two issues in defense of that.

[00:12:02] Speaker 00:
Typically, the first one being that there was an evidentiary gap between the total input ratio taught in the art and the interfacial ratio.

[00:12:12] Speaker 00:
And those words don't explicitly appear in the art.

[00:12:15] Speaker 00:
But the board concluded, and this is on page A16 after four pages of discussion, which I'll explain, that it is when you look at the input ratio in the concept of the geometry of the battery.

[00:12:25] Speaker 01:
Do you mind if I switch you away from that, which is something that concerns me more?

[00:12:32] Speaker 01:
The argument that I referred to before, the other argument in the blue brief, which doesn't appear in the gray brief, and at least there was no express abandonment of it.

[00:12:43] Speaker 01:
What evidence is there to support the motivation to take GAN, which addressed a gas-caused swelling problem?

[00:12:54] Speaker 01:
You correct me with any error I make, okay?

[00:13:00] Speaker 01:
My understanding is that GAN, because it used the silver vanadium oxide cathode,

[00:13:10] Speaker 01:
created a gas-caused swelling problem.

[00:13:13] Speaker 01:
And in that context, there was the AC ratio that solved that problem.

[00:13:24] Speaker 01:
I don't see anything in your expert testimony, or expert declaration, particularly paragraph 83 on 8212, that indicates why a skilled artisan would think

[00:13:38] Speaker 01:
that it would be useful to look for a similar under-1 AC ratio for a battery that doesn't have the gas-caused swelling problem, like this one, which I think is undisputed.

[00:13:54] Speaker 00:
So GAN was not so limited.

[00:13:55] Speaker 01:
Your honor, GAN does say that... I know that it has that paragraph, but there is evidence from the other side that that was one of those complete throwaway paragraphs that would not in fact have motivated a skilled artisan to proceed down that path.

[00:14:14] Speaker 01:
It just lists a bunch of different cathode stuff, and I don't see any contrary evidence.

[00:14:19] Speaker 00:
Well, there's contrary evidence in Dr. White's declaration.

[00:14:22] Speaker 00:
Paragraph 26.

[00:14:23] Speaker 01:
Give us a page, please.

[00:14:24] Speaker 00:
Paragraph 26 on page A97 to 98.

[00:14:28] Speaker 01:
Dr. White is your expert, their expert.

[00:14:30] Speaker 00:
Their expert.

[00:14:31] Speaker 00:
And the board cited to this to say, both experts agree, that there can be swelling, whether it be a silver vanadium oxide cathode or an anodized sulfide cathode.

[00:14:39] Speaker 01:
Gas causes swelling?

[00:14:40] Speaker 00:
The swelling's a little different, but they both have swelling.

[00:14:43] Speaker 00:
And GAN says to reduce the possibility of swelling, reduce the cathode.

[00:14:47] Speaker 00:
And indeed, on page A9,

[00:14:49] Speaker 00:
or sorry, not A9, A52 of your record.

[00:14:54] Speaker 03:
The first, I'm sorry, the first reference that you gave us was A97, did you say, to A98?

[00:15:01] Speaker 03:
I missed the numbers.

[00:15:02] Speaker 00:
A97 to A98, and it's paragraph 26.

[00:15:05] Speaker 03:
Right, okay, good, thank you.

[00:15:07] Speaker 03:
I'm sorry, go ahead.

[00:15:09] Speaker 00:
And also if we look at A52, and that's the claims in GAN, and I think this makes it even clearer.

[00:15:17] Speaker 00:
So sorry, claim one begins on A51,

[00:15:19] Speaker 00:
And it tells you there's a cell with an anode and a cathode and an electrolyte.

[00:15:26] Speaker 01:
This is so important to me.

[00:15:29] Speaker 01:
I want to linger on paragraph 26.

[00:15:32] Speaker 01:
What in paragraph 26 says that a skilled artisan would read GAN and want to follow some GAN method to diminish a swelling caused by something quite different?

[00:15:47] Speaker 01:
which I think the paragraph indicates, is quite different because it's not gaseous.

[00:15:51] Speaker 01:
It's essentially a solid deposition problem.

[00:15:57] Speaker 00:
It's a volumetric expansion, as paragraph 26 tells you.

[00:16:00] Speaker 00:
The iron disulfide has a volumetric expansion.

[00:16:03] Speaker 00:
And GAN says, and the board points to this in its findings of fact, that you would apply the same anode underbalance

[00:16:10] Speaker 00:
to avoid swelling of any form.

[00:16:12] Speaker 00:
The examples are limited to silver vanadium oxide.

[00:16:15] Speaker 00:
But GAM claims a metal sulfide cathode that has an interfacial ratio of 0.68 to 0.96.

[00:16:21] Speaker 00:
We were just looking at the claims.

[00:16:22] Speaker 00:
That's on page A52.

[00:16:24] Speaker 00:
If GAM explicitly recited in its claims this metal sulfide cathode, then its invention was not considered to be just limited to silver vanadium oxide.

[00:16:34] Speaker 01:
I'm sorry, GAN recites in its claims what?

[00:16:36] Speaker 00:
In its claims.

[00:16:37] Speaker 00:
It is, if we go through the claims, the first claim just says anode and cathode.

[00:16:40] Speaker 01:
Give me a page, please.

[00:16:41] Speaker 00:
A51 is where claim one is, and A52 continues.

[00:16:45] Speaker 00:
And claim nine is really the important claim.

[00:16:49] Speaker 00:
And it depends from several claims before it that specify.

[00:16:52] Speaker 00:
Claim three says there's an anode to cathode capacity ratio of 0.68 to 0.96.

[00:16:57] Speaker 00:
Claim seven, which depends from that, tells you the anode's lithium.

[00:17:02] Speaker 00:
And claim nine, which depends from that, gives you options of cathodes.

[00:17:05] Speaker 00:
One of those is a metal sulfide.

[00:17:07] Speaker 00:
And the metal sulfide in paragraph 20, one of those is iron disulfide.

[00:17:11] Speaker 00:
So Gann claimed this type of battery, his concept applied across the board.

[00:17:15] Speaker 00:
And the board found that in its fact finding number six.

[00:17:19] Speaker 00:
But Gann is not the only issue before the board.

[00:17:21] Speaker 00:
There are other references where it explicitly teaches an iron disulfide cathode.

[00:17:25] Speaker 00:
And that's never been contradicted by ever ready.

[00:17:29] Speaker 00:
Ledger and Munchy, for example, we just heard.

[00:17:32] Speaker 00:
The ledger patent has a lithium iron disulfide battery.

[00:17:35] Speaker 00:
Munchy tells you that if you have that type of battery, you want to dispose of all of the lithium.

[00:17:40] Speaker 01:
Right.

[00:17:40] Speaker 01:
The problem, I mean, I wasn't questioning about Munchy, but that leaves two claims, 13 and 32.

[00:17:46] Speaker 01:
So assume you're correct about this, the Munchy group.

[00:17:50] Speaker 01:
That leaves, you need GAN to get at 13 and 32, which are not part of the Munchy.

[00:17:56] Speaker 00:
And they're not part of everybody's argument.

[00:17:57] Speaker 01:
They were part of the blue argument.

[00:17:59] Speaker 01:
They just don't appear in the gray argument.

[00:18:01] Speaker 00:
Okay, I believe they just said everything rises and falls with claim one, essentially.

[00:18:05] Speaker 00:
But let's go to this claim.

[00:18:08] Speaker 00:
GAN, well, I've just explained everything in GAN's claims.

[00:18:12] Speaker 00:
GAN says, GAN claims a battery... I'm sorry, did they actually say everything?

[00:18:17] Speaker 00:
They didn't use those words, but they essentially said, we're not addressing all the additional references that you used for the dependent claims because we're arguing claim one.

[00:18:26] Speaker 01:
Right, but they were arguing the...

[00:18:31] Speaker 01:
The element that's missing is in claim one.

[00:18:34] Speaker 01:
So the other pieces, the non-GAN references, supply a number of other things.

[00:18:39] Speaker 01:
And in the other one, there are two references that pick up 13 and 32.

[00:18:44] Speaker 01:
I forget what they are, two or three other references.

[00:18:47] Speaker 01:
And they're not arguing about those.

[00:18:49] Speaker 01:
But if GAN doesn't lead to a substantial evidence-supported

[00:18:59] Speaker 01:
finding of motivation combined, then you don't have a rejection that covers 13 and 32.

[00:19:09] Speaker 00:
I believe claim 13 was cancelled in the re-examination, Your Honour.

[00:19:13] Speaker 01:
13 was cancelled?

[00:19:14] Speaker 00:
13 was cancelled, and claim 32 is a new dependent claim.

[00:19:17] Speaker 00:
And none of the dependent claims were argued separately.

[00:19:20] Speaker 00:
And GAN, as we just looked at GAN's claims, GAN teaches a lithium, a claims

[00:19:26] Speaker 00:
a lithium iron disulfide battery with an interfacial ratio of less than one.

[00:19:29] Speaker 00:
And following the board's arguments, or based on the fact that it's a jelly roll configuration, that leads to the interfacial ratio.

[00:19:41] Speaker 00:
I can't seem to find claim 32, your honor, I'm sorry.

[00:19:48] Speaker 01:
Wait, pardon?

[00:19:49] Speaker 00:
I can't seem to find claim 32 before me, but I know claim 13 was canceled.

[00:19:53] Speaker 00:
Everybody canceled claims 12.

[00:19:56] Speaker 00:
13 through 22.

[00:19:58] Speaker 00:
I believe.

[00:20:00] Speaker 00:
Oh, sorry, it was 14.

[00:20:02] Speaker 00:
Claim 13 says fume silica.

[00:20:04] Speaker 01:
Right, 13 was not cancelled.

[00:20:06] Speaker 00:
Yeah, sorry.

[00:20:07] Speaker 00:
That's my apology.

[00:20:08] Speaker 00:
It was 14 that was cancelled.

[00:20:09] Speaker 00:
Claim 13 is fume silica, not an iron disulfide cathode.

[00:20:17] Speaker 00:
So all of the claim elements were taught in the prior art, and the board relied on that substantial evidence in its underlying fact-finding to come to the conclusion of all business.

[00:20:27] Speaker 00:
And there's really simply a substantial evidence standard here that we're looking at.

[00:20:31] Speaker 00:
And there is substantial evidence.

[00:20:32] Speaker 00:
The board cited to GAN.

[00:20:34] Speaker 00:
The board cited to Evereti's expert and to Spectrum's expert as well.

[00:20:40] Speaker 00:
And it cited to underlying documents, other references of record.

[00:20:43] Speaker 00:
The handbook of batteries was cited to.

[00:20:46] Speaker 00:
Pedicini was cited to.

[00:20:47] Speaker 00:
The board relied on all of this when it was looking and trying to understand this battery chemistry, which is pretty straightforward.

[00:20:53] Speaker 00:
You have energy from an anode, energy from a cathode,

[00:20:56] Speaker 00:
And the magic happens where they face each other, this interfacial area.

[00:21:00] Speaker 00:
And that's what the board found from the substantial evidence before it.

[00:21:05] Speaker 00:
The panel has no more questions?

[00:21:07] Speaker 00:
Oh, well, I could go to the secondary consideration.

[00:21:10] Speaker 00:
This is not Leo.

[00:21:11] Speaker 00:
Your Honor, this is not Leo Pharmaceuticals.

[00:21:13] Speaker 03:
What is your position on the extent to which secondary considerations are before us or were before the board?

[00:21:21] Speaker 00:
They were not before the board, and I'll explain how.

[00:21:26] Speaker 00:
The examiner, in the re-exam, we were in a re-examination, the examiner presented a prima facie case and that shifted the burden to the patent owner to rebut that.

[00:21:35] Speaker 00:
And the patent owner had three opportunities before the examiner put in evidence of secondary consideration and make an argument based on that, tying those secondary considerations to these claims.

[00:21:45] Speaker 00:
And it did not.

[00:21:47] Speaker 00:
Three opportunities.

[00:21:48] Speaker 00:
And that was the night it alluded to, it mentioned a consumer report, it pointed to the statement in the patent,

[00:21:54] Speaker 00:
And the preliminary injunction transcript was in the record before the board.

[00:21:58] Speaker 00:
Now that preliminary injunction transcript, this page that is missing, that was cited to you this morning, actually says that it was cited in a discussion of the prior art, not in an argument related to secondary considerations.

[00:22:09] Speaker 00:
There was never an argument articulated to the examiners or to the board.

[00:22:15] Speaker 00:
And there was certainly nothing tying that nexus to this claimed feature that everybody hangs patentability on, this interfacial ratio.

[00:22:22] Speaker 00:
So the argument was not made before the examiner.

[00:22:24] Speaker 00:
That's why it didn't appear before the board.

[00:22:26] Speaker 00:
And because it wasn't made before the board, that's why it didn't appear in the blue brief here.

[00:22:30] Speaker 00:
And to the extent anything was mentioned in the blue brief, it wasn't done in the context of an argument of secondary consideration.

[00:22:36] Speaker 00:
This isn't Leo.

[00:22:37] Speaker 00:
In Leo Pharmaceuticals, there was extensive testing that compared the claimed solution to the prior art solution.

[00:22:45] Speaker 00:
There was none of that testing put into evidence here.

[00:22:47] Speaker 00:
There's no teaching away.

[00:22:48] Speaker 00:
There's no claim construction issue.

[00:22:49] Speaker 00:
This is not Leo Pharmaceuticals.

[00:22:52] Speaker 00:
The board actually said in its brief that it reviewed the complete record before it and that included this transcript.

[00:22:59] Speaker 00:
So the board read everything that was before it and still came to the conclusion, the transcript from the preliminary injunction hearing to be clear.

[00:23:05] Speaker 00:
The board read that and it said it did in its brief.

[00:23:07] Speaker 00:
It just didn't comment on any arguments on secondary considerations because none were made.

[00:23:12] Speaker 01:
Can I just, I'm going to sound like a broken record, but explain to me why a skilled artisan

[00:23:21] Speaker 01:
would look at GAN, read the description of why you're trying to rebalance the AC ratio to something under one, which is all about preventing lithium intercalation based on the gas swelling, and think that that was a good thing to do with a differently constituted cathode that doesn't have that problem.

[00:23:50] Speaker 00:
I believe the board points to a quote on page 11.

[00:23:55] Speaker 00:
They're fact finding six.

[00:23:57] Speaker 00:
And they say in paragraph 39 of GAN, GAN discloses, and I'll quote, for efficient utilization of silver vanadium oxide, more anode capacity is needed in the cell active component base.

[00:24:08] Speaker 00:
The same conclusion can be drawn for all other AC ratio cells.

[00:24:13] Speaker 00:
And the cells that were explicitly disclosed in GAN are ones that have an iron disulfide cathode.

[00:24:18] Speaker 00:
They likened this

[00:24:20] Speaker 00:
limiting for swelling to all of the cells that were disclosed in there.

[00:24:24] Speaker 03:
What page of the board's opinion were you just reading from?

[00:24:27] Speaker 00:
A11.

[00:24:27] Speaker 00:
It's page 10 of the board's opinion.

[00:24:29] Speaker 00:
It's A11 in your joint template.

[00:24:31] Speaker 00:
And it's fact finding number six.

[00:24:34] Speaker 00:
Finding fact number six.

[00:24:36] Speaker 00:
So GaN teaches you that it's applicable to the other cells taught in GaN.

[00:24:40] Speaker 00:
And one of those cells was an iron disulfide cathode.

[00:24:48] Speaker 00:
Did that answer your question satisfactorily?

[00:24:51] Speaker 01:
Perhaps.

[00:24:52] Speaker 00:
Perhaps.

[00:24:58] Speaker 00:
If you have no other questions, I'll just summarize.

[00:25:01] Speaker 00:
There is substantial evidence to support the board's fact finding here.

[00:25:05] Speaker 00:
And that fact finding led the board to conclude that these claims were obvious.

[00:25:09] Speaker 00:
Secondary considerations argument, in our opinion, was waived.

[00:25:12] Speaker 00:
It wasn't raised before the examiner, not before the board, and not properly before this court.

[00:25:16] Speaker 00:
And even if properly before this court,

[00:25:18] Speaker 00:
That was the first time it appeared in this record.

[00:25:21] Speaker 00:
The district court, the preliminary injunction transcript was on a different record, and that record wasn't fully presented to this board.

[00:25:27] Speaker 00:
The board decided on the record before it, and there was substantial evidence in that record.

[00:25:32] Speaker 01:
Now that I've read this, I want to ask you, can you explain paragraph 39 to me again, which is what you were reading from A11?

[00:25:39] Speaker 00:
Paragraph 39.

[00:25:41] Speaker 01:
39 of GAN, that's what's quoted in paragraph six at A11 of the board's decision.

[00:25:48] Speaker 01:
How does that indicate that a AC ratio of less than one would apply to other cells?

[00:25:56] Speaker 00:
It's the last sentence.

[00:25:59] Speaker 00:
That this conclusion can be drawn for all other patients.

[00:26:01] Speaker 01:
So GAN discloses that for efficient utilization of silver vanadium oxide cathode, more anode capacity is needed

[00:26:09] Speaker 01:
in the cell active component balance.

[00:26:11] Speaker 01:
So now A is going up, not down.

[00:26:14] Speaker 01:
The same conclusion can be drawn for all other AC ratio cells.

[00:26:18] Speaker 01:
How does that point toward a motivation to keep the A lower than the C for the non-silver vanadium oxide cathodes?

[00:26:37] Speaker 01:
This is making a point about something, but I don't understand why it's a point about keeping A less than C. Well, the whole point of GAN is to keep A less than C. You read this particular paragraph.

[00:26:48] Speaker 01:
I'm not sure that this paragraph, which is what you pointed to, is about that at all.

[00:26:52] Speaker 00:
Then I'll return to the claims, Your Honor, and point you again to the claims.

[00:26:59] Speaker 00:
GAN explains in paragraph 20, and you've alluded to that paragraph, it lists the cathodes that can be used.

[00:27:05] Speaker 00:
And one of those cathodes

[00:27:06] Speaker 00:
is an iron disulfide cathode.

[00:27:08] Speaker 00:
In its claims, Gann claims an anode-limited battery, which means a total input ratio of less than one, and explicitly claims one with a metal sulfide cathode.

[00:27:19] Speaker 00:
That's the iron disulfide cathode.

[00:27:20] Speaker 00:
So Gann would not have claimed his invention in such a way if he thought this ratio was irrelevant to iron disulfide.

[00:27:25] Speaker 01:
Well, unless he was claiming beyond what a skilled artisan would actually understand was enabled.

[00:27:34] Speaker 00:
This is what he envisioned his invention to be.

[00:27:41] Speaker 02:
Thank you, counsel.

[00:27:48] Speaker 04:
A couple brief points here.

[00:27:57] Speaker 04:
First, just going back to the secondary considerations, one more point.

[00:28:00] Speaker 04:
Just a month ago, this court determined in Nike that any failure by the board to review secondary consideration evidence raised and failure to address it is at least a minimum cause for remand.

[00:28:11] Speaker 04:
In that court, this court determined that secondary consideration, if present, must be determined or else it is erred by the board.

[00:28:21] Speaker 04:
Secondly, with respect to... Even if it's not raised.

[00:28:24] Speaker 04:
But obviously our position is that it was raised in the appeal brief before the board coming up.

[00:28:28] Speaker 04:
It's three out of our 16 exhibits, Your Honor.

[00:28:31] Speaker 04:
And to the extent that there's a sufficiency of raising issue, that's different than whether it was raised.

[00:28:36] Speaker 04:
We did raise it.

[00:28:37] Speaker 04:
It was before the board.

[00:28:39] Speaker 04:
The argument could have been whether or not we could have raised it more sufficiently, but it was there and it could have been reviewed.

[00:28:44] Speaker 04:
And both parties argued the extensiveness of the board's decision.

[00:28:47] Speaker 04:
Indeed, in the red brief here on page 6, Spectrum identified that it's after extensive briefing before the district court lost.

[00:28:57] Speaker 04:
Going to GAN,

[00:28:59] Speaker 04:
The point of the recalibration and the difficulty, all the steps you have to go through GAN to get to our claimed inventions, exactly the point of non-obviousness, not why it is obvious.

[00:29:10] Speaker 04:
For example, paragraphs 46 through 49 of GAN support the fact that those were literally throw-ins, these other cathodes that are known in the art.

[00:29:18] Speaker 04:
It's not obvious to just simply switch out a cathode like SVO with that specific total ratio in GAN.

[00:29:25] Speaker 04:
So you swap out SVO, you put in

[00:29:28] Speaker 04:
iron disulfide and all of a sudden you end up with the same ratio.

[00:29:31] Speaker 01:
What do you make of essentially claim nine of GAN, which among other things claims metal sulfide as dependent on claim two, which actually claims a ratio less than one.

[00:29:46] Speaker 04:
Those are just claims.

[00:29:47] Speaker 04:
That's law.

[00:29:47] Speaker 04:
That's what they're seeking to claim.

[00:29:49] Speaker 04:
It's no explanation or teaching to persons of ordinary skill in the art on how to perform the function of taking that

[00:29:57] Speaker 04:
and having it being an ordinary design consideration, a design parameter to swap it out and all of a sudden you end up with the same invention here.

[00:30:03] Speaker 04:
There's no evidence of that.

[00:30:05] Speaker 04:
The reason is, is there's no evidence here in the record either of any correlation between total ratio and interfacial ratio.

[00:30:11] Speaker 04:
Just because you have a total ratio for a specific cathode, SVO, it doesn't mean you just swap out cathodes and you have that same ratio, total ratio here.

[00:30:19] Speaker 04:
You still have to figure out the interfacial ratio.

[00:30:22] Speaker 04:
Is it the same?

[00:30:22] Speaker 04:
Is it different?

[00:30:23] Speaker 04:
That's the problem here.

[00:30:24] Speaker 04:
There are so many variables

[00:30:26] Speaker 03:
And when you have a significant number of unknown variables here... This argument about interfacial versus total ratios has puzzled me.

[00:30:41] Speaker 03:
It seems to me that since we all seem to agree that it's a practical matter, you don't want to have cathode that's not facing anode at any point.

[00:30:52] Speaker 03:
Same thing with anode.

[00:30:53] Speaker 03:
You want to have

[00:30:55] Speaker 03:
the maximum amount of interfacial contact between the two anode and cathode.

[00:31:02] Speaker 03:
And therefore, wouldn't that mean that as a practical matter, total is always going to be at least a pretty close proxy for interfacial?

[00:31:12] Speaker 04:
You're getting close, but not the entire chemistry basis.

[00:31:14] Speaker 04:
So a chemist would say one more thing to you that's important, and that's what flips it around.

[00:31:18] Speaker 04:
that you want as much anode as possible.

[00:31:20] Speaker 03:
I understand that, but for starters, just for the proposition that total is usually a pretty good proxy for interfacial, isn't that true?

[00:31:31] Speaker 04:
No.

[00:31:31] Speaker 04:
Then why not?

[00:31:33] Speaker 04:
Why not is exactly why.

[00:31:34] Speaker 04:
What was known to persons of ordinary skill is that

[00:31:37] Speaker 04:
OK, to the extent you want the cathode in, that's where the reactions occur, where anode and cathode come together.

[00:31:43] Speaker 04:
You want more anode.

[00:31:44] Speaker 04:
What was known at the time as the more anode, the more lithium you put in, the longer the battery life.

[00:31:49] Speaker 04:
What Mr. Marple figured out here, that's not necessarily the case.

[00:31:52] Speaker 03:
But if you have more anode, you have more total

[00:31:56] Speaker 03:
anode and more interfacial anode, do you not?

[00:31:58] Speaker 04:
Not necessarily.

[00:31:59] Speaker 04:
Why?

[00:32:00] Speaker 04:
Right.

[00:32:00] Speaker 04:
So it's the difference between surface area and volume using a sort of a simplistic example.

[00:32:05] Speaker 03:
I understood total anode takes volume into account.

[00:32:09] Speaker 03:
It's not simply surface area.

[00:32:11] Speaker 03:
And that interfacial is just a way of saying when you take the total amount of anode or cathode and you look at the portions that face one another, that's interfacial.

[00:32:23] Speaker 04:
That's technically not correct.

[00:32:25] Speaker 04:
Total ratio is literally just that.

[00:32:27] Speaker 04:
Anode, how much anode do you have?

[00:32:28] Speaker 04:
How much cathode do you have?

[00:32:29] Speaker 03:
When you say how much anode, you're talking about volume.

[00:32:32] Speaker 04:
Amounts, not amounts.

[00:32:33] Speaker 04:
I'm talking about amounts.

[00:32:34] Speaker 03:
That's the difference.

[00:32:35] Speaker 03:
Okay, amount is a function of volume.

[00:32:36] Speaker 03:
Yeah.

[00:32:37] Speaker 03:
Well, not necessarily.

[00:32:37] Speaker 03:
Mass... I understand, but it's still a function of volume.

[00:32:42] Speaker 03:
Volume is a factor into amount, right?

[00:32:44] Speaker 03:
It could be, but that's the problem.

[00:32:46] Speaker 03:
It's not just a direct correlation.

[00:32:47] Speaker 03:
If I cut the volume in half, it's going to have an effect on the amount.

[00:32:50] Speaker 03:
If everything else stays fixed.

[00:32:52] Speaker 04:
But we don't know by how much, though.

[00:32:53] Speaker 04:
That's the problem here.

[00:32:54] Speaker 04:
And the point, too, is that you have... And that point's a good one with respect to what you're using as your cathode.

[00:33:00] Speaker 04:
Depending on which cathode you have, that amount can change completely.

[00:33:03] Speaker 04:
And that's why it's inconclusive here.

[00:33:05] Speaker 04:
It's not correlative.

[00:33:06] Speaker 04:
It's inconclusive.

[00:33:07] Speaker 04:
And what appellees are... I'm going to wrap up a little.

[00:33:10] Speaker 04:
Okay.

[00:33:11] Speaker 04:
And for these reasons, and also based on the Nike decision regarding secondary considerations, we ask that this court reverse the board's decision.

[00:33:17] Speaker 02:
Thank you.

[00:33:18] Speaker 02:
Let me ask you one technical question.

[00:33:19] Speaker 02:
Was the factual record for the case in the record below?

[00:33:28] Speaker 04:
In other words, the underlying fact... It was not, Your Honor.

[00:33:33] Speaker 02:
Thank you.

[00:33:33] Speaker 02:
Thank you.