[00:00:00] Speaker 04:
The first case for argument this morning is 16-1218 Enray Cell Guard.

[00:00:06] Speaker 04:
Mr. Morton, whenever you're ready.

[00:00:14] Speaker 01:
Good morning, Your Honor.

[00:00:15] Speaker 01:
May it please be reported, Cell Guard is a supplier to the battery industry, and its battery separator patent is used and licensed by many companies, including LG, who developed its infringing product themselves.

[00:00:28] Speaker 01:
After repeated attacks on the patent by several companies, the PTAB finally invalidated, based upon one of LG's secondary grounds, the combination of Tobashima plus Tojo.

[00:00:40] Speaker 01:
In just two paragraphs, the board found it would be obvious to combine these references to create a new claim element that does not exist anywhere in the prior art, a ceramic composite layer adapted to block dendrite growth and prevent electronic shorting.

[00:00:55] Speaker 04:
So you're not contesting that all of the limitations are found in these two pieces of prior art.

[00:01:01] Speaker 04:
You're just contesting whether or not the board was correct in finding there was a motivation to combine them.

[00:01:06] Speaker 04:
Is that right?

[00:01:07] Speaker 01:
I am contesting, Your Honor, that all the limitations are found in prior art.

[00:01:11] Speaker 01:
A ceramic composite layer adapted to block dendrite growth does not exist, and he's a reference.

[00:01:17] Speaker 02:
Does your claim require adapted to block

[00:01:20] Speaker 02:
Dendrite growth, is that what the claim requires?

[00:01:22] Speaker 01:
Yes.

[00:01:23] Speaker 02:
It expressly says that in the claim?

[00:01:26] Speaker 01:
Yes.

[00:01:27] Speaker 01:
It is a structural claim element, ceramic composite layer.

[00:01:30] Speaker 01:
If you read the entire claim element, it adds functional limitations to that structure, which is a perfectly fine way to limit a structural claim.

[00:01:39] Speaker 01:
And that's what the claim is.

[00:01:40] Speaker 01:
That's a ceramic composite layer adapted to block dendrite growth and prevent electronic shorting.

[00:01:47] Speaker 02:
You're not suggesting an intent component, though, of the claim, meaning if something was created and it did, in fact, block dendrite growth, that would be sufficient even if it wasn't created for that intent, right?

[00:02:02] Speaker 01:
I understand your question.

[00:02:03] Speaker 01:
I don't think I am making an intent argument.

[00:02:05] Speaker 01:
I would argue that the combination does not yield that claim element.

[00:02:11] Speaker 01:
And I have several reasons why that's true and why the board's decision should be reversed.

[00:02:16] Speaker 01:
The first reason is that the board's decision that Tojo does not anticipate or render obvious is in direct conflict with the board's finding that Tobashima plus Tojo renders obvious.

[00:02:29] Speaker 01:
Let me go into what I mean directly by that.

[00:02:34] Speaker 01:
The punchline is you can't take the particles without the holes.

[00:02:39] Speaker 01:
I'll explain what I mean.

[00:02:40] Speaker 01:
The board analyzed Tojo's surface hardness layer

[00:02:44] Speaker 01:
which is used to prevent tearing by hard microparticles that flake off during manufacture of the battery.

[00:02:51] Speaker 01:
The board found no anticipation because Tojo teaches that to maintain conductivity through the separator, you need to create quote, open holes, open holes, which of course will not block soft lithium dendrite growth and prevent electronic shorting.

[00:03:09] Speaker 01:
The board also found the same missing claim element was not obvious.

[00:03:14] Speaker 01:
when analyzing claims 4 and 12, which require the use of certain polymers.

[00:03:19] Speaker 01:
The board concludes that A22, I do want to quote this, thus, even if an ordinary artisan were to find it obvious to try one of the specific matrix materials in dependent claim 4, the resulting ceramic composite layer required by both claim 4 and claim 12 would nonetheless have the pores that Tojo teaches to be present in that layer.

[00:03:44] Speaker 01:
Different matrix material, same open holes.

[00:03:48] Speaker 01:
Now we get to Toba Shima, where the second film is not just different matrix material.

[00:03:54] Speaker 01:
It is an electrolyte solution impregnated film that is gelatinous.

[00:03:59] Speaker 02:
Before you go on, I'm still sort of stuck on the idea of your answer to Judge Pro's question.

[00:04:04] Speaker 02:
I know that you're in a densely technical area, and I don't want to derail you too much.

[00:04:10] Speaker 02:
I remembered this case being all about motivation to combine.

[00:04:13] Speaker 02:
And on page 16 of your blue brief, you expressly say that the parties dispute before the board was the absence of a reason to combine Tobeshima with Tojo.

[00:04:25] Speaker 02:
That's what you say is the dispute that was before the board.

[00:04:28] Speaker 02:
And that's what you frame as the dispute before us.

[00:04:30] Speaker 02:
And you just answered Chief Judge Perot's question by saying, now we also dispute the presence of one element.

[00:04:35] Speaker 02:
I mean, that's a different issue, you realize.

[00:04:38] Speaker 02:
Disputing the presence of the elements in the references is a different issue than disputing whether there's a motivation to combine.

[00:04:45] Speaker 02:
And didn't you waive the issue of whether a particular element is in fact disclosed in any of the references?

[00:04:53] Speaker 01:
I think we've always said that Tobashima has a gelatinous mushy layer, which it says can block dendrite growth.

[00:05:01] Speaker 01:
There's no ceramics.

[00:05:02] Speaker 01:
Tojo has a ceramic surface hardness layer.

[00:05:06] Speaker 01:
with open holes in it that will not block dendrites.

[00:05:09] Speaker 01:
So I don't think we've ever said that claim element is present in either reference.

[00:05:15] Speaker 01:
The combination, the suggested combination.

[00:05:17] Speaker 02:
No, but you expressly said that the issue before the board was whether there's a motivation to combine these two things.

[00:05:22] Speaker 02:
Show me anywhere in your brief to this court where you argued that one of the actual claim elements was missing from the combination of the two, as opposed to

[00:05:34] Speaker 02:
It wouldn't be obvious to combine these two to come up with the claim solution.

[00:05:38] Speaker 01:
Sure.

[00:05:39] Speaker 01:
I don't know if I can give you the precise site.

[00:05:42] Speaker 02:
Maybe between now and your rebuttal time, you and your associate can find it.

[00:05:45] Speaker 02:
Because I think you've waived that argument.

[00:05:47] Speaker 02:
I don't recall a place in the brief where I see you to have made it.

[00:05:53] Speaker 02:
But I could be mistaken.

[00:05:54] Speaker 02:
I don't remember this case quite as well as I'm sure you do.

[00:05:57] Speaker 02:
So look and see.

[00:05:58] Speaker 02:
But I thought that you're

[00:06:00] Speaker 02:
issue was motivation to combine.

[00:06:03] Speaker 02:
I don't remember you raising an issue related to whether or not one of the elements was even disclosed by either reference.

[00:06:10] Speaker 01:
Yes, Your Honor.

[00:06:11] Speaker 02:
Please continue.

[00:06:11] Speaker 01:
The issues, I think, do run together, because what the proposed combination is, is to simply take the particles out of Tojo's surface hardness layer with holes, just extract those particles, and sprinkle them into Tobashima's mushy layer.

[00:06:30] Speaker 01:
So that's what the combination does.

[00:06:31] Speaker 01:
And if you made that combination, according to the board, you would then have a surface, or you would have a, you would have a layer of topochima, which says it blocks dendrites by virtue of a thick mushy gelatinous electrolyte and cognitive layer.

[00:06:46] Speaker 01:
And you would have particles in it for no real purpose, but then you would have ceramics in it and you would meet the claim limitation.

[00:06:53] Speaker 01:
And my whole point on this first section.

[00:06:54] Speaker 02:
When you say for no real purpose, couldn't one of the purposes be to increase the mechanical strength?

[00:06:58] Speaker 02:
Forget about dendrite blockage.

[00:07:01] Speaker 02:
Couldn't the purpose be to increase the mechanical strength?

[00:07:04] Speaker 01:
Right.

[00:07:04] Speaker 01:
And that is the only reason given to combine these references.

[00:07:07] Speaker 02:
Well, both references expressly use that term.

[00:07:10] Speaker 02:
So it's not like the board manufactured that out of thin air.

[00:07:13] Speaker 02:
Both references discuss increasing mechanical strength.

[00:07:17] Speaker 01:
Yes.

[00:07:18] Speaker 01:
LG and the board in this case, I believe, applied a very superficial

[00:07:22] Speaker 01:
non-technical approach to that issue.

[00:07:24] Speaker 01:
We all know they're talking about two different kinds of mechanical strength.

[00:07:29] Speaker 01:
That's undisputed.

[00:07:30] Speaker 01:
In Tobishima, you have a mushy layer, and they wanted to potentially give that some more form, more dimensional stability.

[00:07:39] Speaker 01:
And in Tojo, mechanical strength is clearly surface hardness to prevent scratching, tearing, breaking by hard particles during manufacture.

[00:07:49] Speaker 01:
So the technical reality, Your Honor,

[00:07:51] Speaker 01:
is that in Tobashima, the cross-linking modifies the polymer itself, changing its structure, so the polymer, and by extension, the mushy film, will have stability.

[00:08:02] Speaker 01:
In Tojo, the particles are hard, and Tojo teaches examples of how to make a hard layer, even without particles, based on how you form that layer.

[00:08:12] Speaker 01:
It's two completely different mechanisms addressing different types of mechanical strength that are not interchangeable.

[00:08:19] Speaker 01:
And finally, if you add

[00:08:21] Speaker 01:
If you did, just pull out Tojo's particles and sprinkle them into Tobashima, you would not increase mechanical strength of any kind.

[00:08:29] Speaker 01:
It's undisputed from our expert that the resulting polymer, quote, the resulting polymer would lack form, but have grit in it, like wet glue would sand in it.

[00:08:39] Speaker 01:
And that's never been disputed or rebutted.

[00:08:42] Speaker 01:
So this was algae's burden on mechanical strength.

[00:08:45] Speaker 01:
And there is no evidence on this point, other than just the word matching game

[00:08:50] Speaker 01:
that LG and the board have engaged in.

[00:08:54] Speaker 01:
All the LG said to its expert in the petition is that A163 to 164 just says both references say mechanical strength and then applying common sense, there's a motivation to combine.

[00:09:07] Speaker 01:
But of course, common sense cannot supply a missing claim element that is the defining feature of the invention.

[00:09:13] Speaker 04:
Well, the board analyzed

[00:09:15] Speaker 04:
This precise question, I think, at A29, right?

[00:09:18] Speaker 01:
Yes.

[00:09:18] Speaker 04:
So can you tell us what they did wrong?

[00:09:20] Speaker 04:
I mean, there's a substantial evidence review here.

[00:09:23] Speaker 04:
I think we did have experts from both sides.

[00:09:26] Speaker 04:
So what in particular, with respect to the board's findings here, is just sufficient to overcome the deferential standard of review?

[00:09:36] Speaker 01:
Sure.

[00:09:37] Speaker 01:
They've noted only that both references say the words mechanical strength.

[00:09:41] Speaker 01:
They say it's a broad term.

[00:09:44] Speaker 01:
And then they say Tobashima is not limiting in the ways you could increase mechanical strength.

[00:09:50] Speaker 01:
That, of course, is not an affirmative reason to combine.

[00:09:54] Speaker 01:
There's no affirmative reason to combine.

[00:09:56] Speaker 01:
They also cite no evidence from LG, none whatsoever, other than the Tobashima reference itself.

[00:10:03] Speaker 01:
And that reference only says, if you want to, let me see if I can get the quote for you.

[00:10:12] Speaker 01:
And to increase mechanical strength, the polymer materials used may be modified to have a cross-link structure.

[00:10:19] Speaker 00:
You say that common sense cannot supply a missing element.

[00:10:24] Speaker 00:
Is common sense relevant on motivation to combine a couple of references in a particular narrow field of art?

[00:10:35] Speaker 01:
Well, the case I would cite is the Arendy decision that's recent that says common sense can't just be used to

[00:10:40] Speaker 01:
fill in anything you want.

[00:10:42] Speaker 01:
In this case, where you have a ceramic composite layer adapted to block dendrite growth, which the patent lays out as the heart of the invention, and it does not exist anywhere in the prior art.

[00:10:52] Speaker 01:
I don't think you could just say common sense.

[00:10:54] Speaker 00:
But you've got a couple of references, which together pretty much disclose everything.

[00:10:59] Speaker 00:
And so mixing and matching doesn't seem especially non-obvious.

[00:11:08] Speaker 00:
And you've got a differential standard of review.

[00:11:11] Speaker 01:
The problem is you cannot mix and match them.

[00:11:15] Speaker 01:
They propose conflicting solutions to different problems.

[00:11:19] Speaker 01:
Tojo proposes hardness with holes in it to stop tearing during manufacture.

[00:11:26] Speaker 01:
Tohoshima proposes thick gelatinous layer to stop dendrites during use.

[00:11:32] Speaker 01:
The holes of Tojo, as the board found, mean it will not block dendrite growth.

[00:11:38] Speaker 01:
And Tojo teaches to maintain conductivity

[00:11:41] Speaker 01:
with its ceramic layer, the way it's made, you have to make holes.

[00:11:46] Speaker 01:
Which goes back to my, you can't take the particles without the holes.

[00:11:48] Speaker 01:
And if you put holes in Tobashima, that completely defeats Tobashima's goal of blocking dendrite growth.

[00:11:56] Speaker 01:
So they are completely disparate references with conflicting solutions that do not go together.

[00:12:04] Speaker 01:
And to put, and to further go on that, I want to get back to my all that's in Tobashima, which is all the bored sites on this.

[00:12:11] Speaker 01:
which is that to increase mechanical strength, the polymer materials may be modified.

[00:12:17] Speaker 01:
It doesn't say anything about any other kind of mechanical strength.

[00:12:21] Speaker 01:
It doesn't say you can add completely different materials and thereby increase mechanical strength.

[00:12:28] Speaker 01:
Only you can modify the polymer by cross-linking.

[00:12:31] Speaker 01:
That does not suggest you could then instead put a bunch of particles which take up space, decrease conductivity, and that that would be a good idea

[00:12:41] Speaker 01:
And there's no evidence from LG on this point.

[00:12:45] Speaker 01:
So I see I'm into my rebuttal time, and I'll reserve my time.

[00:12:48] Speaker 01:
Thank you.

[00:12:58] Speaker 04:
Good morning.

[00:13:00] Speaker 03:
May it please the court.

[00:13:02] Speaker 03:
This case is just about a motivation to combine, and that's all the cell guard raised

[00:13:07] Speaker 03:
in their opening brief.

[00:13:08] Speaker 03:
If you look at page two of their blue brief, that's the question presented by Selgard.

[00:13:13] Speaker 03:
And if you look at the table of contents, their argument other than secondary considerations is just about reason to combine.

[00:13:20] Speaker 03:
So any other arguments that Selgard is trying to make today have been waived.

[00:13:25] Speaker 04:
Just of his argument is under the rubric of motivation to combine most of what your friend has said this morning deals with the lack of motivation that would have existed to combine these two references.

[00:13:35] Speaker 04:
So I wanted to address that point.

[00:13:37] Speaker 03:
Right.

[00:13:37] Speaker 03:
So one of the arguments that Selgard makes is that mechanical strength has different meanings.

[00:13:42] Speaker 03:
And one wouldn't understand mechanical strength in Tobashima to be the same as mechanical strength in Tohto.

[00:13:51] Speaker 02:
Does that even matter, though?

[00:13:53] Speaker 02:
I mean, if I was talking about increasing the mechanical strength of the chair, I could do it by reinforcing the legs, reinforcing the back, reinforcing the seat.

[00:14:01] Speaker 02:
Those are all different ways to potentially increase the mechanical strength.

[00:14:06] Speaker 02:
Maybe they don't all address the same element in terms of increasing it.

[00:14:10] Speaker 02:
So I don't know that, I mean, under a substantial evidence review, is it really for me to figure all that out?

[00:14:17] Speaker 03:
No, we think that under substantial evidence, the board was absolutely correct because both references use the term mechanical strength and the distinction that they're trying to draw appears nowhere in the references.

[00:14:28] Speaker 03:
They say that Tobashima is limited to cross-linking, but it's not.

[00:14:32] Speaker 03:
Tobashima is not limited to cross-linking.

[00:14:35] Speaker 03:
And then their expert, Dr. Wensley, says that cross-linking may also increase the surface hardness of the material, which is what they say.

[00:14:44] Speaker 03:
TOJO means, and that's at A417, paragraph 32.

[00:14:48] Speaker 03:
So the distinction they're trying to draw between surface hardness in TOJO and dimensional stability in Tobashima, even their own expert doesn't agree with.

[00:15:05] Speaker 03:
They're not conflicting.

[00:15:07] Speaker 03:
So they say that using inorganic particles

[00:15:11] Speaker 03:
and cross-linking are conflicting solutions.

[00:15:14] Speaker 03:
But again, that's not correct, because Dr. Abraham's paper, which Selgard relies on for other reasons, says that adding inorganic particles can also increase dimensional stability.

[00:15:25] Speaker 03:
And there's no rebuttal to that.

[00:15:28] Speaker 03:
So I'm happy to answer questions.

[00:15:30] Speaker 03:
But if the court has no further questions, there's nothing else I feel I need to address.

[00:15:37] Speaker 04:
That's fine.

[00:15:37] Speaker 04:
Thank you.

[00:15:55] Speaker 01:
That was quicker than I expected, Your Honor.

[00:15:59] Speaker 01:
So the best place in our briefing is actually in the reply brief on pages two to five that discusses the missing element.

[00:16:07] Speaker 01:
And the problem is, again, that the issues run together because you have to make the combination to formulate the missing element.

[00:16:13] Speaker 01:
And we've never waved and never agreed that either reference has the missing element, the ceramic composite layer.

[00:16:22] Speaker 01:
And I want to address the issues directly in rebuttal that were raised by the PTO just now.

[00:16:28] Speaker 01:
One is, again, they simply say Tobashima is not limited to crosslinking.

[00:16:34] Speaker 01:
But Tobashima, and they've tried to pitch this in the brief, that somehow crosslinking is one option.

[00:16:39] Speaker 01:
But Tobashima doesn't say that that's an option or that there are other options.

[00:16:43] Speaker 01:
It only says you can modify the polymer itself by crosslinking.

[00:16:47] Speaker 01:
And to say that it's not limiting is not an affirmative

[00:16:51] Speaker 01:
reason to combine or motivation to combine.

[00:16:54] Speaker 01:
That's the error that LG and the board and the PTO today are making.

[00:16:59] Speaker 01:
I will also address the statement that our expert, Dr. Wensley, said cross-linking can increase some surface hardness.

[00:17:06] Speaker 01:
I'd urge the court to read that actual paragraph, the whole thing and what he says.

[00:17:10] Speaker 01:
He's very clear about what cross-linking actually is and is technically honest.

[00:17:15] Speaker 01:
It changes the polymer throughout the structure.

[00:17:18] Speaker 01:
to give it dimensional stability.

[00:17:19] Speaker 01:
So is there some increase in surface hardness?

[00:17:22] Speaker 01:
Yes, but that really doesn't matter.

[00:17:24] Speaker 01:
The point is still modifying the polymer versus adding a completely different material that's actually going to make your battery worse because it lowers conductivity.

[00:17:34] Speaker 01:
And then I want to address this Abraham paper.

[00:17:38] Speaker 01:
If you listen to the PTO now, there was no evidence from Abraham from his declarations, nothing other than

[00:17:46] Speaker 01:
the one sentence in Tobashima that says modify the polymer.

[00:17:49] Speaker 01:
So instead, they go to Abraham's paper, which we put in the record to show that if you add particles to some films, whatever films he was looking at in his paper, you can actually destroy the film and make it fragile.

[00:18:04] Speaker 01:
It falls apart.

[00:18:05] Speaker 01:
That was that evidence.

[00:18:07] Speaker 01:
Only an attorney argument if they tried to use this.

[00:18:10] Speaker 01:
Dr. Abraham didn't use that paper.

[00:18:12] Speaker 01:
There's no evidence in the record

[00:18:14] Speaker 01:
analyzing the actual electrolyte solution impregnated film of Tobashima and saying that you could add particles to that, saying that it would then become stronger in any way.

[00:18:28] Speaker 01:
The only evidence on that point is Dr. White saying that it would be like adding sand to wet glue.

[00:18:35] Speaker 01:
So that is clearly not increasing mechanical strength, so that reason simply fails because there is no evidence on that reason.

[00:18:43] Speaker 01:
So in conclusion, your honors, the 586 patent should not be invalid based upon two references that are different in every way except for two matching words.

[00:18:56] Speaker 01:
And it should not be invalid where the board's own analysis of the Tojo reference shows that the combination of Toba Shima should have open holes and wouldn't create the claimed invention.

[00:19:08] Speaker 01:
The cell guard deserves this court's close attention, and I have request reversal of this decision.

[00:19:13] Speaker 04:
Thank you.

[00:19:13] Speaker 04:
We thank both sides and the case is submitted.