[00:00:00] Speaker 02:
Ray Givo, Incorporated.

[00:00:55] Speaker 02:
Ready, Mr. Smith, when you're ready.

[00:00:58] Speaker 01:
May it please the court.

[00:00:59] Speaker 01:
Good morning, Your Honor.

[00:01:00] Speaker 01:
Stephen Smith on behalf of the appellant, Givo.

[00:01:04] Speaker 01:
Givo's appealing the board's determination that claim one and claim 27 were obvious.

[00:01:12] Speaker 01:
And specifically, whether step three, which is in claim one, and there's a corresponding element in claim 27, was obvious.

[00:01:22] Speaker 01:
And claim three, just for point of reference, step three, excuse me, has to do with recycling water, water-rich liquid phase, from a decanter to a fermentation unit.

[00:01:32] Speaker 01:
And the board found that was obvious.

[00:01:34] Speaker 04:
Mr. Smith, this is pretty old stuff, the list of citations.

[00:01:38] Speaker 04:
is very extensive.

[00:01:43] Speaker 04:
The prior op discloses fermentation for ethanol and notes butanol.

[00:01:50] Speaker 04:
The difference between normal butanol and isobutanol is rather minor.

[00:01:56] Speaker 04:
And DeMorey talks about isobutanol.

[00:01:58] Speaker 04:
And there's recycling here.

[00:02:01] Speaker 04:
And there are limited opportunities for recycling.

[00:02:05] Speaker 04:
This is really old stuff.

[00:02:07] Speaker 04:
And the patent office did a thorough job.

[00:02:14] Speaker 04:
And why shouldn't that be it?

[00:02:16] Speaker 01:
Well, Your Honor, you raise good points.

[00:02:18] Speaker 01:
First, there's two major issues here, and that is how far can you press KSR legally, and what facts do you need for the record to underpin that determination?

[00:02:29] Speaker 01:
And as Your Honor noted, this is decades-old techniques.

[00:02:33] Speaker 01:
On the one hand, you have processes for ethanol that were around in the 1960s, ethanol being a homogeneous azeotrope.

[00:02:41] Speaker 01:
I mean, you can distill it and burn it off and purify it.

[00:02:44] Speaker 01:
And what the board did was take English and Mirella on one side, and they clujed it together with a technique that was disclosed for U2 in Demore that had been around for decades as well.

[00:02:54] Speaker 01:
That's an A1136.

[00:02:56] Speaker 01:
And that's my point.

[00:02:57] Speaker 01:
No one had put these together before, Your Honor, in this combination.

[00:03:00] Speaker 01:
And when we did have, when the board put together the combination of these decades-old techniques, what happened?

[00:03:07] Speaker 01:
There was a missing element.

[00:03:09] Speaker 01:
And so how did the board plug that hole?

[00:03:11] Speaker 01:
And that's really the issue.

[00:03:12] Speaker 04:
But what was unexpected?

[00:03:14] Speaker 04:
Were there unexpected results, superior results that weren't expected?

[00:03:20] Speaker 01:
Well, Your Honor, no one else had done this before in either line of art, in this combination before.

[00:03:25] Speaker 01:
And what the board said was,

[00:03:28] Speaker 01:
It would have been obvious, because it would have been a finite number of options, as Your Honor observed.

[00:03:32] Speaker 01:
And the fermenter is one of those viable options.

[00:03:34] Speaker 01:
And I think the solicitor's brief really crystallized the board's decision making here.

[00:03:40] Speaker 01:
They said it was a routine design choice.

[00:03:43] Speaker 01:
But Your Honor, to answer your question, it's not a routine design choice.

[00:03:46] Speaker 01:
It never existed before in the decades old art.

[00:03:50] Speaker 01:
It's not what a person of ordinary skill brings to the issue.

[00:03:53] Speaker 01:
in the proverbial toolbox, because it never existed.

[00:03:58] Speaker 01:
And so why is that important?

[00:04:00] Speaker 01:
Well, when the board put together this combination, Your Honor, what was the identified problem?

[00:04:07] Speaker 01:
And the board identifies that A59, A58, A59.

[00:04:10] Speaker 01:
They say it's water recycling.

[00:04:13] Speaker 01:
And this kludge together, ethanol, isobutanol combination.

[00:04:18] Speaker 01:
That's what they say it is.

[00:04:20] Speaker 01:
But the board never addresses

[00:04:23] Speaker 01:
whether the combination meets that need.

[00:04:26] Speaker 01:
And it does.

[00:04:27] Speaker 01:
It's undisputed.

[00:04:28] Speaker 01:
Why?

[00:04:29] Speaker 01:
Because there's not one recycle in the combination, but two.

[00:04:33] Speaker 01:
Two recycle streams, Your Honors.

[00:04:35] Speaker 01:
One going from the decanter to the distillation column, the other going from the distillation column to the fermentor.

[00:04:42] Speaker 01:
Two streams, directly and indirectly, going to the fermentor.

[00:04:47] Speaker 01:
The board never addressed that issue.

[00:04:51] Speaker 01:
Instead, they jumped right over and said, in essence, we're going to modify the solution.

[00:04:58] Speaker 01:
You already have the solution you're looking for, colluding together decades-old art from disparate ethanol and isobutene.

[00:05:06] Speaker 01:
Put those together.

[00:05:08] Speaker 01:
What is the need?

[00:05:09] Speaker 01:
that's a person of ordinary skill, at the time is looking for, prospectively, not through the hindsight or the prism of our claims.

[00:05:17] Speaker 01:
But at that time, what are they trying to do?

[00:05:19] Speaker 01:
Trying to solve water recycling.

[00:05:21] Speaker 01:
What does the combination of these disparate elements do?

[00:05:23] Speaker 01:
It solves it.

[00:05:25] Speaker 01:
And so why are we taking the next step, Your Honor?

[00:05:27] Speaker 01:
And this is the issue for this Court, I think, as we struggle with IPRs and the bar and clients.

[00:05:33] Speaker 01:
At what point, how far can we push KSR as a design choice?

[00:05:37] Speaker 01:
And what is the record need to be to support that?

[00:05:42] Speaker 01:
And here, we've solved the issue.

[00:05:45] Speaker 01:
And now we're going to modify the solution by just invoking design choice, that it's a routine design choice.

[00:05:52] Speaker 01:
Well, we know it's not routine.

[00:05:54] Speaker 01:
But Your Honor, is it a design choice?

[00:05:55] Speaker 01:
Well, this court, just in the last two weeks, had a data point that I think is very instructive.

[00:06:03] Speaker 01:
And this is the cuts forth decision.

[00:06:05] Speaker 01:
Non-precedential opinion came out January 22.

[00:06:08] Speaker 01:
And then the issue was a combination of mechanical art for a mounting block.

[00:06:12] Speaker 01:
And the jurisprudential concerns in that case were squirrely at issue here.

[00:06:17] Speaker 01:
And that is, the issue was, where can I put this spring on a mounting block?

[00:06:23] Speaker 01:
And the board said it would have been obvious to put the spring pursuant to what the claim said.

[00:06:28] Speaker 01:
Why?

[00:06:29] Speaker 01:
Because you could.

[00:06:30] Speaker 01:
There was no impediment to putting the spring in that particular place.

[00:06:34] Speaker 01:
It would have been an obvious design choice.

[00:06:36] Speaker 01:
And this court reversed.

[00:06:38] Speaker 01:
and said, merely saying the placement of an element is a design choice doesn't equate with obviousness.

[00:06:46] Speaker 01:
And that's what we have here, old art clued together in a way no one did before.

[00:06:51] Speaker 01:
We solve the issue that the board is saying needs to be addressed by a person of ordinary skill with that combination.

[00:06:58] Speaker 01:
And then we plug this hole, this missing element, by merely saying it's a design choice.

[00:07:03] Speaker 01:
And so I submit to Your Honor, this is a key case for the bar and for clients and patentees, because patenting is by nature increment.

[00:07:15] Speaker 01:
And so patent owners stand, obviously, on the shoulders of other inventors.

[00:07:22] Speaker 01:
And it's incremental patent.

[00:07:24] Speaker 01:
So if the board can go back five and 10 years later and say, well, we know these are a combination of art, and then this missing element, which was inventive according to the office when they issued the patent, is now an obvious design choice, the question becomes, how far can we take that?

[00:07:37] Speaker 01:
And what is going to be the record here?

[00:07:39] Speaker 01:
The record here was just simply, Your Honor, we have a generic need for water recycling, and therefore this would have been an obvious design choice, because there's a less than infinite number of possibilities.

[00:07:50] Speaker 01:
That's really what we have.

[00:07:52] Speaker 01:
There's no rigor to the analysis, if you look at A58 and 59, about why they never addressed the combination solving the issue.

[00:08:00] Speaker 01:
They never addressed why this would be a simple design choice, other than there's just a generic need.

[00:08:06] Speaker 01:
And the next case before, Your Honors, may be there's a generic need to save energy, or there's a generic need to make it ship faster.

[00:08:12] Speaker 01:
And so the question here is, what is the line

[00:08:15] Speaker 01:
for KSR to be pushed in the direction of a design choice.

[00:08:19] Speaker 01:
In what facts does the Patent Office have to come forth to give Your Honors a meaningful, thorough review here?

[00:08:25] Speaker 04:
There isn't necessarily a rule here.

[00:08:29] Speaker 04:
There is a bunch of prior art, a lot of very close prior art, and the only difference

[00:08:37] Speaker 04:
is that there isn't an exact disclosure of returning water to the fermentation mix with isobutanol, right?

[00:08:47] Speaker 04:
I mean, maybe it's not 102, but this is an obviousness rejection.

[00:08:50] Speaker 01:
It is an obviousness rejection, Your Honor, but I point back to where I started.

[00:08:55] Speaker 01:
It is decades old art, and as Your Honor knows, they're disparate

[00:09:00] Speaker 01:
They're disparate.

[00:09:01] Speaker 04:
What you're saying is that since it hasn't been done in this old art, therefore, it was non-obvious.

[00:09:08] Speaker 01:
No, no.

[00:09:08] Speaker 01:
I'm not saying that at all, Your Honor.

[00:09:10] Speaker 01:
But that is certainly a factor.

[00:09:12] Speaker 01:
If this has been around for so many decades, why hasn't it been done before?

[00:09:17] Speaker 01:
Right?

[00:09:18] Speaker 01:
That's certainly one criteria.

[00:09:19] Speaker 01:
That is not the sole criteria.

[00:09:20] Speaker 01:
I'm not arguing that at all.

[00:09:22] Speaker 01:
But it gives you the context to look at this record to say, well, wait a minute.

[00:09:26] Speaker 01:
We're colluding together two disparate systems, albeit systems that have been around for decades in a way no one's put together before.

[00:09:33] Speaker 01:
And we're doing it to recycle water.

[00:09:36] Speaker 01:
And then we solve the issue.

[00:09:39] Speaker 03:
So what line would you draw on Judge Lurie's question as to where

[00:09:47] Speaker 03:
On what side of the line of obviousness, what line would you draw in this context, besides saying that it hasn't been done before?

[00:09:56] Speaker 01:
What I would draw the line, Your Honors, and I think that is precisely the need for this case, is to say, if you're going to invoke design choice patent office in the child

[00:10:09] Speaker 01:
Be clear, be concise, and go through in methodical fashion and give this court some meaningful review.

[00:10:17] Speaker 01:
And the line would be, give me detailed facts.

[00:10:20] Speaker 01:
For example, in this case, if there was a detailed factual record where the board went through and said, this expert said, you would have done this.

[00:10:28] Speaker 01:
You would have moved this pipe.

[00:10:29] Speaker 01:
You would have made these choices.

[00:10:31] Speaker 01:
And you would have done it for these five different reasons.

[00:10:33] Speaker 01:
And we attacked those down below and lost.

[00:10:35] Speaker 01:
We'd be in the land of substantial evidence.

[00:10:37] Speaker 01:
And we'd have a hard road.

[00:10:38] Speaker 03:
So are you saying that they just didn't explain themselves?

[00:10:42] Speaker 03:
And if they had, then that would end it?

[00:10:45] Speaker 01:
Well, I'm saying, one, Your Honor, they didn't explain themselves.

[00:10:48] Speaker 01:
Two, I don't think the record is sufficient to support that they could do that in any sense.

[00:10:52] Speaker 01:
And again, I go back to the Cutsforth decision.

[00:10:55] Speaker 01:
This is very similar.

[00:10:56] Speaker 01:
Just came out about two weeks ago.

[00:10:58] Speaker 01:
And the court said there, just because you can combine mechanical elements, old elements, and say something, a placement of an element is a design choice, doesn't make it obvious.

[00:11:09] Speaker 01:
You need to put some rigor into your opinions.

[00:11:12] Speaker 01:
If this were a district court case, I have no doubt that this court would reverse, because we're used to seeing detailed records of findings on summary judgment motions and the like.

[00:11:23] Speaker 01:
Here, when you look at A58 and 59, it's one paragraph, and it just, you could see the hindsight stream, if you will, no pun intended, looking at this, say, of course it would have been obvious in hindsight to do this as a design choice, your honor.

[00:11:42] Speaker 01:
I guess what I'm submitting to you is a long way of answering your question, Your Honor.

[00:11:46] Speaker 01:
There needs to be a line on KSR legally what constitutes a design choice.

[00:11:52] Speaker 01:
And factually, if you're going to invoke design choice to fill in the gap, you need to do so in a detailed fashion with facts to support it.

[00:12:01] Speaker 04:
The words design choice are not in section 103.

[00:12:06] Speaker 04:
103 directs us to look at the cryo rock from the standpoint of one that's going to be up.

[00:12:13] Speaker 04:
And whether you call it design choice or not, this prior art is there.

[00:12:19] Speaker 04:
And there's a very small incremental difference which has not been shown to produce anything unexpected and beneficial.

[00:12:31] Speaker 01:
Right, Your Honor.

[00:12:32] Speaker 01:
So to answer your question in a couple of different layers.

[00:12:35] Speaker 01:
Section 103, of course, does not have the words design choice in it.

[00:12:40] Speaker 01:
But it has been the shorthand that we see, and Your Honor see, coming from the board, the trial board, and plugging holes via KSR.

[00:12:51] Speaker 01:
It's KSR citation and a conclusion that this would have been an obvious design choice.

[00:12:56] Speaker 01:
That's what we see.

[00:12:57] Speaker 01:
And so that's what I'm reacting to, not necessarily a statutory basis, but how that statute's being applied through the prism of KSR.

[00:13:03] Speaker 01:
And KSR, I would submit, Your Honor, is being stretched too far and too fast without a factual basis.

[00:13:10] Speaker 01:
And so that's exactly what happened here, is they invoke a design choice.

[00:13:13] Speaker 01:
That this was a routine design choice, despite the fact that it never existed.

[00:13:18] Speaker 01:
And why should we depart from a solution that already was that we solve the problem we set out for?

[00:13:24] Speaker 01:
And we're all supposed to go back, and the board's supposed to go back, to 2007 as a person of ordinary skill.

[00:13:33] Speaker 01:
And at that time, what am I faced with?

[00:13:36] Speaker 01:
I am faced with this issue of water recycle, and I'm colluding together this or, and at the end, I'm missing an element.

[00:13:42] Speaker 01:
But why am I getting to that missing element when I've solved the issue?

[00:13:45] Speaker 01:
And if the board's going to get to that missing element, tell us why, other than just the conclusion.

[00:13:50] Speaker 01:
It's just a naked conclusion, Your Honor, of it's generic water recycling, and it's a finite number of reasons.

[00:13:57] Speaker 04:
Does the board use the terms design choice?

[00:14:03] Speaker 01:
They say, Your Honor, there's a finite number of places to say this is A59.

[00:14:07] Speaker 01:
In other words, that's your language.

[00:14:11] Speaker 01:
I'm taking the solicitor's words.

[00:14:13] Speaker 01:
When they characterize the board's findings, Your Honor, and analysis, they use the words routine design choice.

[00:14:19] Speaker 01:
And I think that's on pages 16 and 18.

[00:14:23] Speaker 01:
of the board's opinion.

[00:14:26] Speaker 01:
But they use those words.

[00:14:29] Speaker 01:
But did the board itself say routine design choice, Your Honor?

[00:14:32] Speaker 01:
No, they did not say routine design choice.

[00:14:34] Speaker 01:
But I think it's a fear reading from their statement.

[00:14:36] Speaker 01:
That's what they're talking about.

[00:14:37] Speaker 01:
Someone skilled in the art would have been had thought.

[00:14:40] Speaker 04:
My point is you're sort of elevating those words as elite to be a legal standard.

[00:14:45] Speaker 04:
And I'm challenging that, questioning it.

[00:14:48] Speaker 01:
I appreciate that, Your Honor.

[00:14:49] Speaker 01:
I didn't think I was trying to elevate it.

[00:14:51] Speaker 01:
I'm just trying to highlight, but I think

[00:14:54] Speaker 01:
This language that the board used is synonymous with a design choice.

[00:14:59] Speaker 01:
This is a viable alternative.

[00:15:02] Speaker 01:
You could have done it this way.

[00:15:03] Speaker 01:
Well, we know we could do it that way, because we did it.

[00:15:05] Speaker 01:
But no one did it before.

[00:15:06] Speaker 01:
And there's a finite number of options.

[00:15:09] Speaker 01:
In essence, a design choice.

[00:15:10] Speaker 01:
Did they call it that by name?

[00:15:12] Speaker 01:
No.

[00:15:13] Speaker 02:
OK, you're willing?

[00:15:14] Speaker 02:
I'm sorry.

[00:15:14] Speaker 03:
Go ahead.

[00:15:14] Speaker 03:
No, I'm just saying that they say it teaches or suggests recycling the water-rich phase.

[00:15:20] Speaker 03:
So that really is more than just

[00:15:23] Speaker 03:
a choice of undefined design changes, is it not?

[00:15:27] Speaker 03:
They actually say teachers or suggests, but I gather your argument is nonetheless that they have to point to the teaching of suggestions.

[00:15:36] Speaker 03:
Is that right?

[00:15:37] Speaker 01:
That's exactly right.

[00:15:38] Speaker 01:
Particularly, and I know I've been saying this a bunch, but particularly is when you put that combination together of de Moire on one side and the ethanol art on the other side, you have two recycle streams.

[00:15:48] Speaker 01:
You satisfy that issue.

[00:15:50] Speaker 01:
And so if you're going to depart from the solution, if you're going to modify that solution, articulate why, other than just the circular reasoning that there's a generic recycle stream.

[00:16:00] Speaker 01:
We want to generically save water.

[00:16:02] Speaker 01:
There needs to be more rigor to these opinions.

[00:16:03] Speaker 02:
OK, you've exhausted your rebuttal.

[00:16:05] Speaker 02:
We'll give you restored two minutes.

[00:16:07] Speaker 02:
And let's hear from Mr. Helm.

[00:16:10] Speaker 00:
Thank you, Your Honor.

[00:16:14] Speaker 00:
May it please the Court?

[00:16:17] Speaker 00:
This appeal comes in the context of an inter-parties review.

[00:16:20] Speaker 00:
There were two parties involved.

[00:16:23] Speaker 02:
Can you just skip to, just because it's on at least my brain?

[00:16:26] Speaker 02:
I mean, your friend, as you heard,

[00:16:29] Speaker 02:
rests heavily on this design choice issue, and he is correct that there was a recent opinion in Cusworth that kind of pushed the board back on its use.

[00:16:39] Speaker 02:
I assume that you're going to tell us that this case is distinguishable from that case in terms of whatever design choice issue was

[00:16:47] Speaker 02:
So why don't you address that?

[00:16:49] Speaker 00:
Absolutely, Your Honor.

[00:16:50] Speaker 00:
So in this case, there's a disclosure in the prior art explaining why you would make this particular design choice.

[00:16:57] Speaker 00:
That is the English reference, which says you would send the water back to the fermentation unit in order to maintain a water balance.

[00:17:05] Speaker 00:
There's testimony from an expert by a declaration and deposition that says that there are a very small number of choices of places where you would send this water.

[00:17:15] Speaker 00:
And that's what the board based its finding on.

[00:17:17] Speaker 00:
So that is substantial evidence supporting the finding that it's design choice number one.

[00:17:22] Speaker 03:
But where does the teacher suggest sending it to the fermenter?

[00:17:27] Speaker 00:
That's in the English reference, and if I may just turn to that page.

[00:17:32] Speaker 00:
So on A175, this is the English prior reference, which it discusses.

[00:17:38] Speaker 00:
ethanol distillation facility.

[00:17:40] Speaker 00:
And I think it's actually important because the claims are directed to retrofitting an ethanol plant.

[00:17:46] Speaker 03:
But that doesn't take the water-rich phase.

[00:17:49] Speaker 00:
Well, in the ethanol, of course, when you distill ethanol, you don't end up with a bi-phasic result in distillate.

[00:17:58] Speaker 00:
So you end up with just one phase.

[00:18:00] Speaker 03:
And the teaching that the board... Well, but that's exactly the issue, isn't it?

[00:18:04] Speaker 03:
That these people didn't do exactly that.

[00:18:09] Speaker 03:
adapted but after years or decades of this kind of technology they made a change which apparently is quite suitable since it seems to have been copied.

[00:18:23] Speaker 00:
As far as I know, Your Honor, there's absolutely no evidence of any secondary considerations in the record, not of copying or of commercial success or any of those things.

[00:18:31] Speaker 00:
I may be wrong, but I don't believe that there's anything that was cited for secondary considerations to explain why this change would be non-obvious.

[00:18:39] Speaker 03:
Well, if it's not being used, why would anyone go through all of this expensive procedure?

[00:18:45] Speaker 00:
Your Honor, I cannot speak at all to that.

[00:18:48] Speaker 00:
I literally have no idea, because I was not

[00:18:51] Speaker 00:
We are involved in making the decision below.

[00:18:54] Speaker 00:
But the reason why we're participating in this appeal is because one of the parties dropped out.

[00:18:59] Speaker 00:
And so we're defending the board's decision here.

[00:19:01] Speaker 00:
So I don't know.

[00:19:02] Speaker 00:
But as far as I know, there's no evidence of that in the record.

[00:19:06] Speaker 00:
But just to get back to the motivation to recycle it back to the fermentation unit as opposed to recycling it back to other places within the system.

[00:19:16] Speaker 00:
And there are, the DeMore art does say you can recycle the water back.

[00:19:20] Speaker 00:
It says you can put the water back into the systematic column.

[00:19:23] Speaker 00:
The English prior art talks about wanting as a further object of the invention to provide a process in which a relatively smaller volume of water has to be discarded.

[00:19:34] Speaker 00:
That's A175.

[00:19:36] Speaker 00:
column 1, lines 53 to 56.

[00:19:39] Speaker 00:
And then on the next page, A176, it says, in order to avoid the need to delete the feedstock to a standard concentration, they recycle the water back to the system.

[00:19:49] Speaker 00:
And that's column 4, lines 13 through 25.

[00:19:55] Speaker 00:
This is the prior process that also says this reference isn't suitable for the production of butanol, which, as Judge Laurie alluded to, is very similar, has similar properties to isobutanol.

[00:20:07] Speaker 00:
And so the board looked at this and then looked at the testimony of the expert by declaration and by the deposition and said, yes, this would be a design choice.

[00:20:18] Speaker 03:
That's the expert's conclusion.

[00:20:20] Speaker 03:
We're looking for the evidence.

[00:20:22] Speaker 03:
In the documentary evidence?

[00:20:26] Speaker 00:
I think I pointed you to where this is the evidence that this was a place where people recycled water to.

[00:20:34] Speaker 00:
And then I believe the expert's testimony is further evidence of that fact.

[00:20:39] Speaker 00:
The ultimate conclusion is that would be obvious to make that change.

[00:20:42] Speaker 00:
But he was saying that in his experience

[00:20:48] Speaker 00:
looking at this type of system.

[00:20:51] Speaker 00:
This is at page 1748.

[00:20:53] Speaker 00:
He says that you would take water and recycle it into the system.

[00:21:00] Speaker 00:
And the question is, where would that be recycled?

[00:21:02] Speaker 00:
There are many opportunities for water recycle in biofuel plants.

[00:21:06] Speaker 00:
So it could be recycled to the fermenter.

[00:21:07] Speaker 00:
It could be recycled to the feedstock separation.

[00:21:10] Speaker 00:
And so his testimony is that these are the places that you would recycle water to in this type of system.

[00:21:18] Speaker 04:
So is the only difference between these claims and Demori the location of the water recycling in an isobutanol process to the beer column rather than to the fermentation mix?

[00:21:36] Speaker 00:
That is correct.

[00:21:38] Speaker 00:
And I think maybe even more so with respect to the English reference is that after the distillation in English,

[00:21:45] Speaker 00:
this kind of continuous distillation where you take and distill a portion of the fermentation media to make sure that you don't have too much of the produced molecule that goes back and inhibits the yeast that's producing it.

[00:21:58] Speaker 00:
So taking and distilling away the molecule of interest.

[00:22:01] Speaker 00:
kind of continuously, what do you do after that distillation?

[00:22:05] Speaker 00:
And in the case of English, you don't end up with a simple biphasic system.

[00:22:11] Speaker 00:
You end up with a homogeneous system, which you have to then use other techniques to get to higher purity.

[00:22:16] Speaker 00:
But here, what we learn from Demora, and certainly

[00:22:20] Speaker 00:
any one of spilling the algorithm would have been able to tell you in a biophasic system in easy separations to simply decant the layer that you want and then the question, the only question is what do you do with that bottom layer?

[00:22:30] Speaker 00:
And DeMore says, put it back into the system.

[00:22:34] Speaker 00:
And it says, what DeMore says is put it back in at the beer column, which is a distillation column.

[00:22:39] Speaker 00:
And all the board found, all the expert testified to, and what the board found was that there are other places to put it back in, as evidenced by the expert's testimony, as well as the English reference.

[00:22:50] Speaker 00:
There's other places to return water into the system.

[00:22:53] Speaker 04:
Presumably, there aren't many places.

[00:22:55] Speaker 00:
That's what the board found, is that there's a small number of places for it to be returned to the system.

[00:23:00] Speaker 00:
And I believe that's at page A59.

[00:23:06] Speaker 00:
They agree there are a finite number of places to send a water bridge liquid phase and the fermenter is a viable option.

[00:23:12] Speaker 00:
That was the board's finally on that point and then the citation to KSR.

[00:23:15] Speaker 00:
And again, the citation of what KSR says is that where there's a design need, and here the identified design need by the board was the need to recycle water into the system.

[00:23:25] Speaker 00:
And English further expounds upon that is that you need to return to the fermentor to maintain the water balance in the fermentor.

[00:23:32] Speaker 00:
Because if you imagine if you're constantly taking water out of the fermentor, it dries up eventually.

[00:23:37] Speaker 00:
So that's the design need here.

[00:23:39] Speaker 00:
And so whether or not there's a lot of

[00:23:42] Speaker 00:
I think it's maybe of interest that much of what is relied upon in the appeal by the patent owner is trying to undermine the testimony of the decorator.

[00:23:57] Speaker 00:
There's not much positive evidence that this is an unobvious invention.

[00:24:02] Speaker 00:
There's not much cited in that regard.

[00:24:04] Speaker 00:
And what the board did was, in its opinion, there's a couple of different theories that the board discredits or undermines.

[00:24:11] Speaker 00:
based upon the deposition testimony of both experts.

[00:24:16] Speaker 00:
these theories that the board rejects.

[00:24:18] Speaker 00:
For example, that returning this to the fermentor would somehow create a toxicity in the fermentor because there's a small amount of isobutanol.

[00:24:27] Speaker 00:
And the board made findings that said, no, both experts agree.

[00:24:30] Speaker 00:
Once you put it back into the fermentor, there's no toxicity issue.

[00:24:33] Speaker 00:
That's the type of thing that you might expect, the type of evidence you might expect if it wasn't obvious, the type of evidence you might want them to see to establish that this invention is unobvious.

[00:24:42] Speaker 00:
But there's none of that type of evidence here.

[00:24:47] Speaker 00:
If there's no further questions.

[00:24:50] Speaker 00:
Thank you.

[00:24:50] Speaker 00:
Thank you.

[00:24:57] Speaker 01:
Thank you, Your Honor.

[00:24:59] Speaker 01:
I was struck by what counsel said, that there's no positive evidence.

[00:25:02] Speaker 01:
But the board has the initial burden to show as a prima facie case of obviousness.

[00:25:08] Speaker 01:
And that's the question we have.

[00:25:09] Speaker 01:
That's the legal error.

[00:25:11] Speaker 01:
And let me address some points very quickly.

[00:25:13] Speaker 01:
So English already addressed water recycle.

[00:25:16] Speaker 01:
It did so from, again, the distillation column to the fermenter.

[00:25:21] Speaker 01:
That's undisputed.

[00:25:22] Speaker 01:
We've taken English.

[00:25:23] Speaker 01:
We've taken an isobutanol reference.

[00:25:25] Speaker 01:
And we put those together.

[00:25:27] Speaker 01:
And it already solves the issue, and Council really framed the issue of water recycling system.

[00:25:32] Speaker 01:
Those two combinations do that.

[00:25:34] Speaker 01:
There's no dispute about that.

[00:25:36] Speaker 01:
And they both run directly and indirectly to the fermentation unit.

[00:25:40] Speaker 01:
So the nub of the issue is, how much are we going to allow the board to make that leap to say, it would have just been an obvious design choice or routine option, whatever words you want to use, to move this

[00:25:52] Speaker 01:
fermentation excuse me this recycle stream from the decanter to the fermentation unit when no one's done it before and This is disparate art, and we've already solved the issue and then finally I thought it was interesting your honors about the their expert in Your honor you you hit the nail on the head the expert said sure you can recycle water there That's not disputed We've done that we've shown that the pet the patent owner has shown that

[00:26:22] Speaker 01:
But why would you put the water there?

[00:26:24] Speaker 01:
Oh, there's a finite number of options.

[00:26:27] Speaker 01:
Well, is that the standard that you could, in retrospect, and it's a finite number of options?

[00:26:33] Speaker 01:
And that's what I was saying before, Your Honors.

[00:26:35] Speaker 01:
This is what a case would be, another data point that cuts forth.

[00:26:39] Speaker 01:
of how far is KSO going to be allowed to be applied from a legal standpoint.

[00:26:44] Speaker 01:
And if you're going to apply it on the nebulous reaches, what are you going to need to support that factually?

[00:26:49] Speaker 01:
And with that, Your Honors, I will sit down and thank you for your time.

[00:26:52] Speaker 02:
Thank you.

[00:26:52] Speaker 02:
We thank both counsels.

[00:26:53] Speaker 02:
Your case is submitted.