[00:00:00] Speaker 00:
I didn't need to ask another softball question.

[00:00:36] Speaker 02:
It's all right.

[00:01:13] Speaker 00:
Mr. Larson.

[00:01:16] Speaker 00:
So how do you pronounce the name?

[00:01:18] Speaker 00:
Is it Knopf Insulation?

[00:01:20] Speaker 02:
Knopf.

[00:01:20] Speaker 00:
Knopf.

[00:01:22] Speaker 00:
All right.

[00:01:23] Speaker 00:
And you're reserving three minutes of your time for rebuttal, correct?

[00:01:27] Speaker 00:
Yes, Your Honor.

[00:01:27] Speaker 00:
Okay, you may start, please.

[00:01:29] Speaker 02:
May it please the Court.

[00:01:30] Speaker 02:
Good afternoon, Your Honors.

[00:01:31] Speaker 02:
My name is Joshua Larson, and I represent the Appellant Patent Owner of Knopf Insulation in this case.

[00:01:38] Speaker 02:
Your Honor, the patent owner asked the court to reverse the decision of the Patent Trial and Appeal Board, affirming the examiner's Section 103 rejections, claims 21 through 26, which were added in this Interparte Street Examination.

[00:01:53] Speaker 02:
Your Honor, none of the prior art in this case expressly discloses a mineral fiber insulating material comprising a binder that includes melanoidins produced by a malliard reaction.

[00:02:05] Speaker 01:
Malliard is that the pronunciation?

[00:02:09] Speaker 02:
Yes, that's a type of chemistry, Malliard chemistry.

[00:02:13] Speaker 02:
And that limitation is required by each of the claims that issue in this appeal, claims 21 through 26, each of which are independent claims.

[00:02:19] Speaker 01:
Right, and the board found inherency.

[00:02:21] Speaker 01:
So can I just ask you this question?

[00:02:23] Speaker 01:
Would it have sufficed to do two experiments, one for Hussman, one for Helbing, to test whether

[00:02:35] Speaker 01:
following each of their recipes you would get melanoidins?

[00:02:40] Speaker 01:
Or is it as simple as that in terms of numbers of experiments to be done?

[00:02:49] Speaker 02:
If the requester in this case had presented evidence that followed the tests that you're hypothetical, if those tests had accurately reproduced the teachings of the prior references, then that would be evidence that one of the embodiments... I guess I'm asking a question that is, at least for now, essentially a science question.

[00:03:12] Speaker 01:
Kent, just focus on Hussmann.

[00:03:15] Speaker 01:
It's more or less the same, maybe not, but just on Hussmann.

[00:03:19] Speaker 01:
If you wanted to determine whether, if you ran what is described in HUSMAN, or at least what is described in that portion of HUSMAN that the other side says always produces melanoidins, is that a single experiment to be done so that, and maybe you do it a number of times to make sure you haven't messed up the experiment, and you then get an answer?

[00:03:49] Speaker 02:
I would agree with that, Your Honor, to the extent that what's being recreated from the Hussman reference was described as an embodiment in that reference.

[00:03:59] Speaker 02:
If there was some picking and choosing of various teachings from the reference, there may be additional issues.

[00:04:04] Speaker 01:
But what they rely on is at least one embodiment.

[00:04:08] Speaker 01:
Yes, Your Honor.

[00:04:08] Speaker 01:
And could you take that embodiment

[00:04:13] Speaker 01:
perform the experiment and then is there some way, I'm assuming there is, but tell me, in which you can then tell whether melanoidins were produced?

[00:04:20] Speaker 01:
Yes, Your Honor.

[00:04:21] Speaker 01:
Yeah, that could be tested in various ways.

[00:04:23] Speaker 01:
So, putting aside questions about the burden of persuasion and the Swineheart-Best scheme and whether that applies to inter-parties re-exams, why isn't it clear, at least as to Hoosman, that the Board said

[00:04:42] Speaker 01:
You have shown us, you, the other side, have shown us that you would necessarily get the melanoids.

[00:04:50] Speaker 01:
And you come in, now you, come in with nothing.

[00:04:58] Speaker 01:
No.

[00:04:59] Speaker 01:
You don't run the experiment.

[00:05:01] Speaker 01:
You have a couple of arguments that say, well, you can't really infer that from what they put on in their prima facie case.

[00:05:08] Speaker 01:
And the board says, well, actually, I think you can infer it.

[00:05:12] Speaker 01:
Why is that not enough without regard to the Swineheart Fest multi-step burden process?

[00:05:25] Speaker 02:
Yes, Your Honor.

[00:05:26] Speaker 02:
So I'll try to answer that question the best I can.

[00:05:27] Speaker 02:
Let me know if I don't quite get at what you're going for.

[00:05:33] Speaker 02:
Your Honor, one difference here is that in this case, the evidence in the record is the prior references themselves.

[00:05:40] Speaker 02:
There has not been other evidence presented.

[00:05:43] Speaker 01:
It could have been, right?

[00:05:44] Speaker 01:
You could have put in the results of an experiment on this?

[00:05:50] Speaker 02:
Yes, Your Honor.

[00:05:51] Speaker 01:
As they could too, presumably.

[00:05:52] Speaker 02:
Yes, Your Honor.

[00:05:53] Speaker 02:
Both sides had the opportunity to present that during the re-exam.

[00:05:56] Speaker 02:
Neither side did.

[00:05:58] Speaker 02:
In patent owner's case, the patent owner did not believe that that was necessary to rebut the rejections that had been made in this case and relied instead on relying that the prior art itself had not been shown to inherently have the property that was said to be present by the examiner and by the requester in this case.

[00:06:17] Speaker 02:
Your Honor, even on the facts as set out in the question you asked, though, we also would take issue with the application of the Inherency Doctrine here for an additional reason, which is the cases that both the Board relied on and that have been argued to this Court

[00:06:35] Speaker 02:
The cases in which the federal circuit has found that inherency is proper to supply missing limitation, we believe are of a different type than what's involved in this case.

[00:06:44] Speaker 02:
Typically in those cases, I'm thinking of cases like Henry Best, Henry Swinehart, Henry Spada, and Henry Kubin.

[00:06:51] Speaker 02:
Some of the cases in which this court has approved the use of inherency

[00:06:55] Speaker 02:
are cases in which there's a composition that may be claimed, various parts of a certain chemical composition or material structure, and then the claimer cites various properties of that structure, wherein it has a melting temperature of X, or wherein it has a solubility of Y.

[00:07:11] Speaker 02:
And in those cases, the prior art that was at issue disclosed the very same composition or structure.

[00:07:18] Speaker 02:
And what was missing from the reference was these characteristics.

[00:07:21] Speaker 02:
And the court has often said that the chemical structure and its properties have a one-to-one relationship, that one flows from the other.

[00:07:30] Speaker 02:
Here, we do not have a disclosure in the prior art references in this case of Huse-Moen or Hansen or Helbing that disclose

[00:07:39] Speaker 02:
that melanoins are produced and a question of what the properties of those melanoins would be.

[00:07:43] Speaker 02:
Instead we have prior art references that describe very different types of reactions that are used to create different types of binders.

[00:07:51] Speaker 02:
Not binders that are based on melanoins or include melanoins, but binders that are based on polyester chemistry and binders that are based on polyamide chemistry.

[00:08:00] Speaker 02:
And what we have here is instead is

[00:08:02] Speaker 02:
The board pointing to those references and saying, we find that because, among other things, it discloses the three reactants that we know from the patent owner's patent are necessary for biochemistry, it looks at those three elements, avoids everything else that's taught in the reference to find that you wouldn't necessarily have production of melanoids from those chemicals.

[00:08:25] Speaker 02:
But Your Honor, that's not actually our position, that's not what the prior art discloses.

[00:08:30] Speaker 02:
For the board to make that finding, for both the Heusamon reference and the Hellbent reference, they had to, in their reasoning, and it's in their opinion in both cases, find that the references and the 980-PAT describe identical reactants and identical processes.

[00:08:45] Speaker 02:
And we would submit that as a factual finding.

[00:08:48] Speaker 00:
Identical to what?

[00:08:50] Speaker 02:
Identical to the chemistry that is described.

[00:08:53] Speaker 00:
Why wouldn't it be enough for the PTO to provide factual evidence or just technical reasoning?

[00:09:01] Speaker 00:
And then the burden shift over.

[00:09:04] Speaker 02:
We have two points on that.

[00:09:06] Speaker 02:
The first one is the legal, more of the legal argument we've made in our purview, which is we believe that that sort of burden shifting is inappropriate in a contested proceeding in front of the patent office, the type of inter partes proceeding we have here.

[00:09:18] Speaker 01:
And you mean specifically inter partes re-exam, not inter partes review?

[00:09:23] Speaker 02:
Yes, Your Honor, this case is an inter partes re-exam.

[00:09:25] Speaker 02:
The court has recently decided, as of a couple of months ago, a case that is similar in some respects to this case, although it's in the inter partes review context.

[00:09:34] Speaker 02:
And that would be the Henry Magnum-Woyle International case that we recently submitted as supplemental authority.

[00:09:40] Speaker 02:
And in that case, the board

[00:09:42] Speaker 02:
the court found that because of the contested nature of that proceeding, that any sort of burden shifting was inappropriate, just as it was in litigation.

[00:09:51] Speaker 02:
The court actually referenced some of the litigation cases and the Supreme Court cases in the litigation context.

[00:09:57] Speaker 04:
Why isn't re-exam different, particularly in a case like this where you added entirely new claims?

[00:10:05] Speaker 04:
It's just not reviewing claims that were already

[00:10:08] Speaker 04:
allowed by the board, you've added an entirely new set of claims, which is what's at issue.

[00:10:15] Speaker 02:
We have added claims here, but again, we would point back to what's been looked at in these cases as being the court distinction, and I'm talking about some of the precedent that's referenced that, and also the Ramos case, which was an inter partes re-exam, a Ramos versus Raya decision of this court, that found that it was the inter partes nature.

[00:10:33] Speaker 02:
And with regard to the fact that the parties can make amendments, Your Honor, I would also note that in an inter partes review, that ability to make amendments is present as well.

[00:10:42] Speaker 02:
And so we don't see that as a distinguishing factor between that case and this case.

[00:10:48] Speaker 01:
It's not quite the same, is it?

[00:10:51] Speaker 02:
An inter partes review?

[00:10:52] Speaker 01:
For amendment purposes.

[00:10:55] Speaker 02:
No, Your Honor.

[00:10:55] Speaker 02:
The ability of the patent owner to make amendments in a re-exam, I believe most parties would agree, is more readily available than it is in the inter partes review.

[00:11:03] Speaker 04:
In fact, we have a case before us right now questioning whether

[00:11:07] Speaker 04:
What is now the burden of proof on the patentee to establish those amendments is at issue.

[00:11:14] Speaker 04:
So I mean, at least as it stands now, I think it is the burden on the patentee to show patentability.

[00:11:20] Speaker 04:
So I don't think those cases, the fact that we have those cases in the inter-parties review help you all that much.

[00:11:27] Speaker 04:
The amendment process there is completely different.

[00:11:31] Speaker 04:
Is there any limitation in an inter-parties re-exam for you to amend claims?

[00:11:38] Speaker 02:
There is a limitation, Your Honor.

[00:11:40] Speaker 02:
The patent owner in an inter-partice re-exam has generally one opportunity to amend the claims in response to a first office action.

[00:11:47] Speaker 04:
After that... But if you're availing yourself of that one opportunity, is there any obligation upon you to show patentability before such claims the amendment is allowed?

[00:12:01] Speaker 02:
Your Honor, I believe that the precedents of this court say that the burden is on the patent office and also the requester to show that there is a preponderance of evidence supporting the rejection before it's properly made.

[00:12:13] Speaker 02:
And that would be the Rambus case as well as the Epikon case here.

[00:12:17] Speaker 02:
So the patent order's position here is that the burden is properly placed on the requester in order to meet that additional burden to make the rejection.

[00:12:27] Speaker 02:
Judge Raina, to circle back for a moment to your question, too, about the ENRI best test of is there a technical reason or a reasonable basis.

[00:12:37] Speaker 02:
Even under that test, we disagree that that's an appropriate test here, but even under that test, looking at that, we still believe that the board made an error in this case that is reversible.

[00:12:47] Speaker 02:
In the sense that, in those cases, they had to have a reasonable basis or a sound basis, a technical reason, to ultimately find that the missing element was necessarily present.

[00:12:58] Speaker 00:
Well, it looks like they thought they did have a reasonable basis.

[00:13:03] Speaker 00:
And that's your disagreement.

[00:13:05] Speaker 02:
Well, you're right, Your Honor.

[00:13:06] Speaker 02:
We absolutely disagree with them.

[00:13:08] Speaker 02:
They did feel they had a reasonable basis, and that's how they... But isn't that enough, then?

[00:13:11] Speaker 00:
Why is it... You submitted some amended claims.

[00:13:15] Speaker 00:
The PTO looks at this and says that there's a... for technical reasoning, or even the factual evidence that's now before it, they have a reason to believe that the prior art possesses those inherent characteristics.

[00:13:29] Speaker 02:
how much more if they're if they have a technical reason why doesn't that shift the burden to you to disprove it there's an initial threshold that there's an initial threshold of a technical reason or a reasonable basis to even get to the point of shifting that burden and while the Petnoffs in this case the board believed that it had met that that finding is still subject to being supported by substantial evidence in the record

[00:13:56] Speaker 02:
And as we pointed out in our briefs, that finding by the board here in particular was based on the supposed identity of reactants and processes between the art patent, the 980 patent, and the prior art.

[00:14:08] Speaker 02:
And I believe as we've shown in our brief, we believe that that is directly contradictory to the prior art references on its face, and for that reason is not supported by substantial evidence of the matter.

[00:14:17] Speaker 04:
But if we disagree with you about the substantial evidence, why isn't the board's conclusion about inherency sufficient?

[00:14:26] Speaker 04:
even in the absence of this burden-shifting question.

[00:14:31] Speaker 02:
Well, Your Honor, even in the absence of the burden-shifting, there's still an initial threshold that they have to get to of providing a reasonable basis to shift that burden, even under the ENRIBEST test.

[00:14:40] Speaker 04:
Right.

[00:14:40] Speaker 04:
And they explain their reasoning here.

[00:14:43] Speaker 04:
And let's assume that reasoning is supported by substantial evidence or is sufficient in the record.

[00:14:49] Speaker 04:
Isn't that enough?

[00:14:51] Speaker 04:
I know you disagree whether there's substantial evidence, but let's just assume there is.

[00:14:56] Speaker 04:
I'm just wondering if this whole burden shifting thing is really at issue here, if we think the board gave sufficient reasons that are supported by substantial evidence on inherency.

[00:15:06] Speaker 02:
Well, if your honor, if the federal, if the court does find against us both on the legal issue of the burden shifting as well as the... But that's what I'm trying to get at.

[00:15:15] Speaker 04:
I mean, the burden shifting, I think, is a harder legal issue.

[00:15:18] Speaker 04:
But I don't know that it's necessarily at play here if we can find in the board decision

[00:15:24] Speaker 04:
a sufficient articulation of why it thinks the prior art disclosed all of this and that that reason is supported by substantial evidence, even if part of that reasoning is it would have been inherent.

[00:15:36] Speaker 02:
Do you even need any burden shifting?

[00:16:06] Speaker 00:
I'm surprised that you're not arguing that the examiner bears an initial burden shown by preponderance of evidence.

[00:16:20] Speaker 00:
I mean, you kind of want us to

[00:16:24] Speaker 00:
To rule on, I think, your worst argument, substantial evidence.

[00:16:28] Speaker 00:
Shouldn't you be arguing that the examiner has to meet a preponderance of evidence in order to prove the inherency and then there's a shift in the burden?

[00:16:38] Speaker 02:
I see I'm out of time, Your Honor.

[00:16:39] Speaker 00:
You can answer the question.

[00:16:41] Speaker 02:
well yes your honor we actually do agree that with the statement you just made which is that the examiner has preponderance evidence and I believe that's maybe not expressed as clearly in our brief but that's I think the essence of our burden shifting argument that the burden shifting is inappropriate the appropriate standard is the preponderance of the evidence and that the office does have to meet that to make the rejection it's inappropriate to use a lower standard to shift the burden to us and with that your honor thank you for your time okay Mr. Holloway

[00:17:18] Speaker 03:
May it please the court.

[00:17:19] Speaker 03:
I would like to begin with the conversation you were just having, Judge Hughes.

[00:17:24] Speaker 03:
If the evidence is that there was a preponderance of the evidence that when you have the same reactants in the same conditions as between 980 had an issue here and the two prior art references that are being used for the obviousness rejection,

[00:17:41] Speaker 03:
If by a preponderance of the evidence it's shown that the natural result of having the same reactants in both situations is that you will get melanoidins by a Maillard reaction, then the burden-shifting inquiry is one that has no import.

[00:17:55] Speaker 03:
because what the burden shifting inquiry is asking is once the examiner, and in this case provided by the requester, once the record has enough evidence to show that fact so that the examiner and ultimately the PTAB can weigh evidence, which is what their job is, once they have that,

[00:18:15] Speaker 03:
then there is a burden that is put onto the patent owner to come forward and do one of two things.

[00:18:21] Speaker 03:
They can argue the insufficiency or the inapplicability of the evidence that's in the record, or they can bring their own evidence back to the record.

[00:18:29] Speaker 00:
But that's not what happened here, is it?

[00:18:32] Speaker 00:
Here, the PTO, the board, this is what the board wrote.

[00:18:35] Speaker 00:
The PTO does not have to prove that a recited characteristic of the claim of venture would inherently and necessarily be possessed by the park.

[00:18:42] Speaker 00:
That's what you're arguing now.

[00:18:43] Speaker 00:
Rather, the PTO must provide

[00:18:45] Speaker 00:
factual evidence, technical reason, or reason to believe.

[00:18:49] Speaker 00:
Now that's not preponderance of evidence.

[00:18:52] Speaker 03:
I would like to use the supplemental authority that counsel just provided this week, even though it's in the IPR context, and I agree with the board's or the court's questions this morning that's applicable here.

[00:19:05] Speaker 03:
But there's a very important sentence in that opinion that I think is applicable here.

[00:19:09] Speaker 03:
And at pages 21 to 22 of the Magna Boil opinion, the court says, it's not the language employed with if you're concerned.

[00:19:19] Speaker 03:
It is the placement of the burden of persuasion that matters.

[00:19:22] Speaker 03:
Whereas here, which is denied the lawyer of court talking, it's clear that the Board did not require Petitioner to support its claim of obviousness by preponderance of the evidence, we must reverse.

[00:19:34] Speaker 03:
Respectfully, Your Honors, that's the exact opposite of what happened in this case.

[00:19:38] Speaker 03:
Just looking at the PTAB's decision, when you go through the discussion and analysis sections for Hoosman and Helbing, repeatedly the Office tested the sufficiency of the requester and the examiner's evidence

[00:19:51] Speaker 03:
against the proponents of the evidence.

[00:19:54] Speaker 01:
Where is that?

[00:19:55] Speaker 03:
So for example, Your Honor, when dealing with the Hoosman reference, an A-16 of the record.

[00:20:00] Speaker 01:
Yes, I'm looking at that.

[00:20:01] Speaker 03:
The board said, the evidence is sufficient to establish the malinoid's reform.

[00:20:05] Speaker 01:
How do we know that that's not sufficient to establish, under the standard articulated, what is it, six or seven pages earlier,

[00:20:15] Speaker 01:
that is something that appears to be something less than a preponderance.

[00:20:19] Speaker 03:
Okay.

[00:20:20] Speaker 03:
I would grant you that the sentence and the conclusion on Huseman A-16 does not use preponderance of the evidence, but twice when they're talking about Palestine, which follows a very similar

[00:20:30] Speaker 03:
situation where the board explained the identity of the reactants, considers the arguments made by patent owner, they provide evidence, but considers the arguments by patent owner, states even if we assume those arguments are true, and then they continue.

[00:20:45] Speaker 01:
What are you reading from?

[00:20:46] Speaker 03:
This would be page 822 of the record there are.

[00:20:50] Speaker 03:
Consequently, the ponderance of the evidence supports the examiner's position that Mellanoidans will be formed in Helbing's process.

[00:20:57] Speaker 03:
Previously on page 821 of the record,

[00:20:59] Speaker 03:
The board concluded in discussing helbing that a preponderance of the evidence establishes that all three reactants present in a Myard reaction are described by helbing as present in a reaction mixture.

[00:21:14] Speaker 01:
And there is or is not counterpart?

[00:21:19] Speaker 01:
or ponderance language in the discussion of Hoosman.

[00:21:21] Speaker 03:
There is not a counterpart for use of the word ponderance in the evidence.

[00:21:25] Speaker 03:
But as I just explained, you look at the fact-finding sections for helbing in Hoosman.

[00:21:31] Speaker 03:
In Hoosman, it's even more expressed that that's what they did.

[00:21:34] Speaker 03:
At page A17,

[00:21:45] Speaker 03:
I apologize, page 13 through 16, specifically on page A16, there are two paragraphs dedicated to explaining why there's a Maillard reaction.

[00:21:57] Speaker 03:
That is more detailed than was provided in Helvet.

[00:21:59] Speaker 03:
So if you look at the overall nature of the test that the PTAB was applying to the evidence that was presented, you see that they found evidence that the necessary reactions were there.

[00:22:10] Speaker 01:
But here it seems to me you're making a different

[00:22:14] Speaker 01:
leap is too dramatic a word, jump or something.

[00:22:19] Speaker 01:
The paragraphs saying, I think the two paragraphs you were just referring to are Q13, Q14, is that right?

[00:22:25] Speaker 01:
I mean, those are in terms descriptions of requester's evidence.

[00:22:30] Speaker 01:
They are not findings by the board that credits those.

[00:22:35] Speaker 01:
that evidence.

[00:22:36] Speaker 03:
But respectfully, Your Honor, the paragraph at the beginning of this, in Appendix 13... It says findings is now, right?

[00:22:44] Speaker 01:
Findings of fact that now summarizes the relevant findings, but each of these paragraphs says, on page 8 of their respondent brief, requester provides technical reasoning as to why.

[00:22:56] Speaker 01:
First, the requester cites evidence that this, then the second requester provides evidence that that.

[00:23:03] Speaker 01:
It doesn't say

[00:23:04] Speaker 01:
We think that that evidence is a preponderance allowing us to draw the conclusion, the factual conclusion that this is true.

[00:23:16] Speaker 03:
Again, I agree that when they have the discussion section on 16 and 17 of the record of whether Maillard reactions occur, they do not use the phrase preponderance of the evidence.

[00:23:27] Speaker 03:
But the same analysis, if you look at the way the paragraphs are even structured in this section between Hoosman and Helbing, they're virtually identical.

[00:23:37] Speaker 03:
The only difference between the two is that they're not used, they're not repeating the phrase for ponderance of the evidence repeated times.

[00:23:42] Speaker 03:
They knew that was their burden.

[00:23:44] Speaker 03:
The examiner and requester presented evidence both pointing specifically to the references that there was an identity between the reactants in the 980 patent as well as those in the

[00:23:57] Speaker 03:
And from that, the conclusion, because the 980 patent tells you we get melanoidins from a Maillard reaction, the conclusion is we have the same reactants in the prior R as we do in the patent.

[00:24:07] Speaker 03:
We're going to get the same result.

[00:24:09] Speaker 01:
If one read the board's opinion to apply to the interparties re-exam here,

[00:24:18] Speaker 01:
the burden shifting regime described in slightly different terms in Swinehart and Best and was it Levy, is that the other case?

[00:24:26] Speaker 01:
Levy, yes.

[00:24:27] Speaker 01:
What's that?

[00:24:28] Speaker 03:
Levy, L-E-D-E, L-E-D-Y.

[00:24:30] Speaker 01:
Yeah, okay.

[00:24:33] Speaker 01:
Why is that appropriate?

[00:24:35] Speaker 01:
Why would that be an appropriate regime

[00:24:38] Speaker 01:
when there is actually a third party, not the patent owner, not the examiner, a third party requester who can in fact, who is capable unlike the examiner, of doing experiments to prove the point.

[00:24:57] Speaker 03:
So let me begin by saying, putting aside the policy part of your question about whether or not that's acceptable, I noticed that in your conversation with counsel at the beginning, you asked him, were these experiments doable?

[00:25:09] Speaker 03:
Which seemed to be a question to me of, was there a direct evidence way that could be tested about that?

[00:25:14] Speaker 01:
What's your answer to that?

[00:25:15] Speaker 03:
And we did do it.

[00:25:17] Speaker 03:
And it's in the record.

[00:25:17] Speaker 03:
And even counsel this morning says that the only evidence of record in this case was the prior art, and that's incorrect.

[00:25:23] Speaker 03:
The examiner below,

[00:25:25] Speaker 03:
found, based on testing presented by Requestor, that the melanoidins in Hussmann are indistinguishable from the melanoidins in the patent.

[00:25:36] Speaker 01:
And the finding by the examiner is that... I'm sorry, what was the testing that you presented to the examiner?

[00:25:41] Speaker 03:
So the testing that we presented was during... when a patent owner put in its new claims and was arguing about the claims not at issue on appeal, they stated that the

[00:25:54] Speaker 03:
claimed binder of the 980 patent would have specific characteristics made.

[00:25:59] Speaker 03:
They gave three, a carbon and nitrogen ratio, a specific IR spectra, and then they also stated that there would be furon gas released if the conditions were met that resulted in the claimed binder.

[00:26:12] Speaker 03:
And we performed those tests.

[00:26:14] Speaker 03:
And we submitted those declarations at A1579 through 88 of the record.

[00:26:20] Speaker 03:
I'm sorry, what were those citations?

[00:26:24] Speaker 03:
A, 1579 to 88.

[00:26:26] Speaker 03:
It's the declaration of Nissen and Anderson.

[00:26:30] Speaker 03:
And the examiner expressly relied on them and said at A, 1967,

[00:26:41] Speaker 03:
and say that it's further noted that third-party requester in argument sections 10 and 15 of their comments in which the declarations of Nissen and Anderson are included and found persuasive have shown that the product taught by Hooseman and Hansen provide for the expected binder properties argued by Pat Nunner, and therefore the Mellanoiden products are present in the claimed binder.

[00:27:04] Speaker 03:
And I want to come back to, there's been a couple of questions about, well, doesn't the board's language and the opinion make it sound like the burden was put on patent owner or that somehow the patent office stepped back from its preponderance for them and its burden and said, you appellant in this instance disprove something to us.

[00:27:25] Speaker 03:
And specifically, I want to point to the board's sentence on page

[00:27:32] Speaker 03:
point to the sentence in the board's decision on page 21 of the record, which says, the PTO does not have to prove that a recited characteristic of the claim convention would inherently and necessarily be possessed by the prior art.

[00:27:47] Speaker 03:
And this gets back to your question, Judge Raina.

[00:27:50] Speaker 03:
When you look at the arguments that happened before the board, what Appellant is really arguing

[00:27:57] Speaker 03:
is not that what appellant is really arguing is that the board and the examiner have to disprove its theories.

[00:28:05] Speaker 03:
So if you look at the way the evidence came in below, the requester provided it to the examiner.

[00:28:10] Speaker 01:
Let me put a different frame around what their argument might be and deal with this.

[00:28:20] Speaker 01:
that what they're saying is at the end of the day, when all of the evidence comes in, the board must hold the challenger to the burden of showing by a preponderance that in this case, Melanoidens would necessarily result from the particular Hussmann embodiment that you invoke.

[00:28:43] Speaker 01:
The board didn't do that.

[00:28:45] Speaker 01:
Instead, what it did was to take partial evidence, namely your evidence,

[00:28:50] Speaker 01:
and say, either we think that this gives us a reason to believe melanoidens would occur, or maybe by a preponderance of the evidence.

[00:29:01] Speaker 01:
Now, considering the other evidence, we don't think the other side's evidence or argument, both, we don't think that the other side has disproved that conclusion.

[00:29:13] Speaker 01:
That's not quite the same thing as saying, considering all of the evidence, the challenger, namely you,

[00:29:19] Speaker 01:
had to persuade us by a preponderance of the evidence that the melanoidens would always occur in Hussmann or Helping.

[00:29:27] Speaker 03:
In your opinion, that's exactly why the burden of persuasion has to always stay with the Patent Office.

[00:29:32] Speaker 03:
So, Requestor provides the examiner with the evidence to say, okay, have we shown that it's more likely than not?

[00:29:40] Speaker 01:
That's why it always has to stay with the Patent Office or the Requestor.

[00:29:44] Speaker 01:
Is there any difference in this case between saying those two things?

[00:29:48] Speaker 03:
No, we're the requester.

[00:29:50] Speaker 03:
I don't represent the Patent Office.

[00:29:53] Speaker 01:
Okay, so the problem is that at least there's reason to read the board's opinion as saying, no, we don't really have to do that.

[00:30:02] Speaker 01:
Respectfully, Your Honor, I disagree with you.

[00:30:03] Speaker 01:
Well, what's all this Swinehart-Best-Levy discussion about the burden shifts

[00:30:11] Speaker 01:
The actual burden of showing, I think, in one language, shifts to the patent owner once there is some amount of evidence

[00:30:21] Speaker 01:
never mind what that amount is, to suggest that something would always result.

[00:30:25] Speaker 03:
So I think your honor has pointed out why this court, as recently in the Magnum Oil decision and going back to tech licensing, at times takes great pains to re-explain to us who practiced before you in the bar differences that fall under the umbrella of burden of proof.

[00:30:42] Speaker 03:
Because too often, I think we all use the term burden of proof without being specific as to what we're talking about.

[00:30:50] Speaker 03:
And if you look at what happened in Swineheart Invest, they're not saying the burden of proof doesn't sit with the office to show you that your claims were unpatentable.

[00:31:00] Speaker 03:
What they're saying in Swineheart Invest is, we believe we've established it.

[00:31:05] Speaker 03:
Bring me evidence to tip the burden of persuasion back in your favor.

[00:31:13] Speaker 03:
To get me below the more likely than not standard.

[00:31:17] Speaker 03:
And you do that by bringing forward evidence.

[00:31:19] Speaker 03:
And that's the burden of production side of this.

[00:31:21] Speaker 03:
So it is always fair.

[00:31:23] Speaker 03:
And it's always the case, whenever you have any kind of challenge like this, be it before ex parte organic examination, re-examination, an inter-parties review, district court litigation, when your patent is challenged, you have to say something.

[00:31:39] Speaker 03:
And you either come forward and argue the inapplicability of the evidence, or you present your own.

[00:31:45] Speaker 03:
Then, the trier of facts job is to weigh that evidence.

[00:31:49] Speaker 03:
We weigh it against the preponderance of the evidence standard.

[00:31:53] Speaker 03:
And I believe if you look at what the PTAB did here, it was expressed in numerous times that we're testing it against the preponderance of the evidence.

[00:32:02] Speaker 03:
Then on review, we ask ourselves, is there a substantial evidence to support that finding?

[00:32:07] Speaker 03:
And that's the challenge.

[00:32:08] Speaker 00:
Well, the language I read to you, I think it's pretty clear that the PTO is disclaiming that it's got to show

[00:32:14] Speaker 00:
by a preponderance of evidence, and rather that, again, the language says that PTO must prove by factual evidence, technical reason, or a reason to believe that the priority necessarily possesses that characteristic.

[00:32:29] Speaker 00:
I mean, reason to believe?

[00:32:30] Speaker 00:
That's not a preponderance of evidence.

[00:32:34] Speaker 03:
Respectfully, Your Honor, the sentence that you're citing is in the summary of the law.

[00:32:39] Speaker 03:
And again, not to stick to the sentence of, we don't sit here to judge opinions, we look at judgments.

[00:32:46] Speaker 03:
If you go forward and look at the findings of fact and the discussion that follow, they are testing it against the, did we provide enough evidence for the fact finder to believe that it's more likely than not the necessary result that the same reactants in the patent as the same reactants in the prior art

[00:33:04] Speaker 03:
have the necessary result of forming melanoidins.

[00:33:07] Speaker 03:
And I see my time is up.

[00:33:08] Speaker 03:
I just want to say one thing.

[00:33:09] Speaker 03:
Repeatedly in this case, we've been talking about reversal.

[00:33:13] Speaker 03:
At least Appellant has been talking about reversal.

[00:33:15] Speaker 03:
If you look at the Parr case, which they cite repeatedly and we rely on our brief, which was a challenge to whether inherency had been proven, the decision here is remand.

[00:33:26] Speaker 03:
The question that, Judge Taranto, you seem to be asking is, did the board apply proponents of these evidence for Hoosman?

[00:33:33] Speaker 03:
I believe it's clear for Helbing.

[00:33:35] Speaker 03:
At the very least, the result here is remand back to the PTAB, if not firmness, because I believe it's clear that they held it.

[00:33:42] Speaker 01:
Can I just double-check?

[00:33:44] Speaker 01:
In your view, Helbing independently supports the unpatentability ruling here?

[00:33:52] Speaker 01:
Is that right?

[00:33:52] Speaker 01:
That is, if we agreed with you on Helbing, does Hoosman matter?

[00:33:57] Speaker 03:
No, Your Honor.

[00:33:58] Speaker 03:
You need one or the other to show that in the course of the reaction, you get melanoids from a higher reaction.

[00:34:04] Speaker 03:
Thank you.

[00:34:11] Speaker 00:
We'll restore you back to three minutes.

[00:34:16] Speaker 02:
Thank you, Your Honor.

[00:34:18] Speaker 02:
I'd like to begin in my time in Revo here with just responding to what we believe are a few mischaracterizations of the record made by the requester, in this case the Apple League.

[00:34:33] Speaker 02:
And the first of those is in terms of the evidence.

[00:34:37] Speaker 02:
The declarations that were mentioned, Your Honor, we addressed those in our reply brief of footnote five on page 13.

[00:34:44] Speaker 01:
But the important... You might be surprised to learn I don't remember that, so can you make the substantive point?

[00:34:49] Speaker 02:
I just wanted to give you the citation, but to summarize what we said there, the important points there is that the board did not rely on that evidence, and the examiner actually did not rely on that evidence for inherently purposes either.

[00:35:01] Speaker 01:
And is this the...

[00:35:04] Speaker 01:
experimental evidence that we were discussing before.

[00:35:07] Speaker 02:
Yes, Your Honor.

[00:35:07] Speaker 02:
This is the experimental evidence that was submitted by Requestor, some experiments performed by a few of its employees.

[00:35:13] Speaker 02:
That was raised in the context of the consisting, essentially, of language and trying to persuade, both sides were trying to persuade the examiner about what the basic and novel characteristics of the invention were.

[00:35:23] Speaker 02:
We have not pursued that argument here on appeal.

[00:35:26] Speaker 02:
Instead, we have focused on the inherently issue.

[00:35:28] Speaker 02:
And so we would submit that that evidence is not relevant.

[00:35:31] Speaker 02:
And a particular reason why it's not relevant here

[00:35:34] Speaker 02:
is while the declaration purported to be recreating the luciman reference, it used very large amounts of sugar that had no basis in that reference in order to drive the reaction towards the production of melanoids and does not accurately reflect the disclosure of that reference.

[00:35:53] Speaker 02:
mischaracterization, Your Honor, that we want to make clear, make sure it's clear here at the argument, is in the requester's brief, in numerous places, they say that the patent owner, Knopf, has acknowledged various findings or acknowledged various teachings of the prior art, and in some places provide quotes that have ellipses in them.

[00:36:13] Speaker 02:
And we just like to make clear that in those quotes, as pointed out in our reply brief,

[00:36:17] Speaker 02:
The key language that's missing there is the patentor was acknowledging statements made by the examiner, not necessarily agreeing with those statements, but just quoting the examiner's findings back to him, and then proceeded in the record, as you can see in the record, to discuss those findings and disagree with them and present reasons why we disagree with them.

[00:36:35] Speaker 02:
And so, Your Honors, what we get back to here is that the evidence in the record is just the prior art references themselves at the end of the day, and the board's findings of what it believes those prior art references taught.

[00:36:48] Speaker 02:
And in this case, the board entirely ignored the differences between what's described in patent owner's patent and in the claim in the claims of our patent.

[00:36:58] Speaker 02:
And the types of chemistry taught by the prior references to find that, they were identical and therefore must inherently disclose the melanoids that we've claimed.

[00:37:08] Speaker 02:
If I have any questions from the bench, I'll complete my time.

[00:37:11] Speaker 00:
Okay, we thank you very much.