[00:00:34] Speaker 02: Next case is Mexicam-Amanco holding versus Honeywell, 2016, 1038 and 41. [00:00:42] Speaker 02: Mr. Krumholtz, when you're ready. [00:00:47] Speaker 00: Thank you, Your Honor. [00:00:51] Speaker 00: I am from Wisconsin, by the way, and Manitowoc is the way to say it. [00:00:56] Speaker 02: Glad to hear that. [00:00:58] Speaker 00: May it please the Court, I represent Mexicam, and with me is my partner, Patrick Fleece. [00:01:04] Speaker 00: We are appealing the ruling of the Patent Trial and Appeal Board that Claim 2 of U.S. [00:01:11] Speaker 00: Patent 844-874 was patentable. [00:01:15] Speaker 00: They found Claims 1 and 3 through 15 to be unpatentable. [00:01:19] Speaker 00: Our appeal is pretty narrowly focused simply on what we believe was the clear error of the board in indicating that there was no [00:01:32] Speaker 00: teaching of purification and moved from 80% to 90% 1, 2, 3, 4 ZE refrigerant. [00:01:42] Speaker 00: But the board did not supply any rationale why that would not be in accord with the case law that they had cited specifically [00:02:05] Speaker 00: The board found claim too patentable not because there was an unexpected result. [00:02:10] Speaker 00: There were no unexpected results. [00:02:11] Speaker 00: The board found claim too patentable because they said going from 80% to 90% was not a result effective variable, i.e. [00:02:18] Speaker 00: a variable that achieved a recognizable result. [00:02:22] Speaker 00: But then they didn't. [00:02:22] Speaker 04: So why are they wrong about that? [00:02:24] Speaker 04: Huh? [00:02:24] Speaker 04: Why are they wrong about that? [00:02:26] Speaker 00: Well, they're wrong about it because the Inagaki reference, embodiment 2, specifically disclosed 1, 2, 3, 4, Z, E, [00:02:34] Speaker 00: which is a refrigerant, an HFC refrigerant, back in 1992, and specifically disclosed as being used as a reference back in 1992. [00:02:43] Speaker 00: Now, the testimony of record clearly indicates that that disclosure in Inagaki was a blend of two isomers, of 1, 2, 3, 4 ZE, a cis isomer and a trans isomer. [00:03:00] Speaker 04: So what, in order to [00:03:01] Speaker 04: get to the 90 percent, then trans isomer has to be a result-effective variable, right? [00:03:08] Speaker 00: Yes, and it's being taught to be used as a refrigerant. [00:03:13] Speaker 00: It's being taught that it's compatible with lubricants and materials. [00:03:18] Speaker 00: It's being taught that it's... That particular isomer? [00:03:21] Speaker 04: Yeah, I mean, you're right about the compound itself, the HFC-1234ZE, but I don't see in the record where at the time the patent was filed [00:03:31] Speaker 04: that it was known that the trans isomer was particularly desirable. [00:03:38] Speaker 00: I see what your point is. [00:03:40] Speaker 00: The prior art, though, was predominantly 80% trans isomer. [00:03:46] Speaker 00: And the prior art said that if you have 80% trans isomer and you use it in a heat pump, that it's compatible with the lubricants. [00:03:53] Speaker 00: It's compatible with materials. [00:03:54] Speaker 00: So it taught that it was predominantly compatible. [00:03:57] Speaker 00: And going from 80% to 90%, there's nothing in the record that indicates [00:04:01] Speaker 00: that there was any unexpected result or any critical nature at the 90%. [00:04:06] Speaker 04: Well, but in addition to showing that there was no unexpected result, you have to show that it's a result-effect variable. [00:04:14] Speaker 04: In other words, that someone would say, well, it's desirable to have more of this trans isomer. [00:04:20] Speaker 04: And at the time, that was not known, right? [00:04:24] Speaker 00: Well, at the time, what was known about the trans isomer [00:04:27] Speaker 00: was that, and this is what caught us a little bit by surprise, because the institution decision and the argument at trial did not focus on purification. [00:04:38] Speaker 00: But at the time, what was known and what was of record and what was put in the record by Honeywell was a publication from 1996 by Bogdan, which specifically said that the trans isomer was purified and found to be not highly toxic or mutagenic. [00:04:55] Speaker 00: If the goal was to have a beneficial variable and using the trans isomer, that supplied the necessary teaching. [00:05:03] Speaker 00: And that was the basis of our appeal saying, look, if you know this material is not toxic and their patent made a big deal out of toxicity of the refrigerant, then it was known before the date of the invention that the pure material was not toxic, not mutagenic. [00:05:22] Speaker 00: And it was known that the material could be used [00:05:25] Speaker 00: as a refrigerant, and therefore the impetus to take it from up to 100% was available in the prior art and taught as a result effective variable within the prior art. [00:05:39] Speaker 00: Did I respond? [00:05:40] Speaker 04: Well, if the other isomer were toxic, you wouldn't even use 10% of it, right? [00:05:46] Speaker 00: Well, if the other isomer were toxic, yes, that would be bad. [00:05:50] Speaker 00: But I would point out, [00:05:54] Speaker 00: that we are talking about compressor systems in heat pumps and automobiles, and that all refrigerants are not breathable by human beings. [00:06:05] Speaker 00: And therefore, to the extent that you are in a room and it is filled with any refrigerant, good, bad, or indifferent, if it doesn't have oxygen, you are going to die. [00:06:15] Speaker 00: And that was discussed at trial, too. [00:06:19] Speaker 00: But the bottom line here is that [00:06:23] Speaker 00: There's nothing in any teaching anywhere that teaches against going past the 80% barrier that miscibility with POE lubricants was taught at 5%, 10%, 15%, all the way up to 80%. [00:06:36] Speaker 00: And there's no surprise once you get past 80% that it still continues to work and be effective as a refrigerant. [00:06:42] Speaker 00: And the prior art clearly taught that 100% of the trans isomer was not toxic or highly mutagenic at the time, and therefore [00:06:52] Speaker 00: to move beyond 80% would have been a natural impetus within the art to optimize that refrigerant in that manner. [00:06:59] Speaker 04: I guess what I'm saying seems to me that might be a motivation to move to 100%, but it's not a motivation to move to 90%. [00:07:07] Speaker 00: Well, the claim says at least 90%. [00:07:09] Speaker 00: And the only information in their patent where they talk about greater than 90% is with 100% test in table one of their patent, where they list what they call the benefits of the cis and trans [00:07:22] Speaker 00: isomers along with several other refrigerants and they claim the trans isomer at 100% had better refrigeration characteristics while the cis isomer actually in that table actually has a higher coefficient of performance. [00:07:36] Speaker 00: So I don't think the information in their patent lays out a solid basis why they even thought going to 100% at the time of the invention was a good idea. [00:07:47] Speaker 00: We do know that [00:07:50] Speaker 00: Chemists make optimizations all the time for purification purposes. [00:07:54] Speaker 00: And we do know that if you are aware that you have a material that would be not highly toxic, not mutagenic, and that's known in the prior art, we know that it's taught to be a good refrigerant, but there's a natural impetus then to purify the material. [00:08:10] Speaker 00: I'm not trying to argue with you, Judge. [00:08:13] Speaker 00: I guess I am trying to argue with you. [00:08:15] Speaker 03: Well, you're here to argue. [00:08:16] Speaker 03: I understand. [00:08:17] Speaker 00: But I'm trying to take a... I'm trying to hopefully... I'm answering your question. [00:08:25] Speaker 00: And have I answered your question? [00:08:27] Speaker 00: If not, I can... I understand what you're saying. [00:08:29] Speaker 00: Okay. [00:08:30] Speaker 00: So the focus of our argument then is simply that the board did not identify what was going [00:08:38] Speaker 00: what going to 90% achieved. [00:08:41] Speaker 00: I think the board owed us at least an identification of what this critical feature was, because basically what they were saying is we're stepping outside of the general teaching of valor. [00:08:52] Speaker 00: And we're saying we're going to apply one of the exceptions of valor, which is that 90% had some critical feature attached to it that wasn't recognized in the prior art. [00:09:01] Speaker 00: And what we're saying is miscibility with lubricants was recognized in the prior art. [00:09:05] Speaker 00: Its use as a refrigerant was recognized in the prior art. [00:09:08] Speaker 00: It's non-toxicity of the pure material is recognized in the prior art. [00:09:12] Speaker 00: So we don't know from the board's decision what wasn't recognized in the prior art that the board is talking about that gets you to 90% somehow and makes this a patentable item. [00:09:25] Speaker 00: Simply saying, oh, look, the prior art teaches 1% to 80%. [00:09:28] Speaker 00: I'm going to claim 90% when you have a very close relationship and you're achieving all the features of the 80% refrigerant [00:09:38] Speaker 00: and goals, and you make this optimization, there's no significant increase anywhere in this record that shows why 90% is any more significant or better or critical than 80%. [00:09:53] Speaker 00: Did I answer your question? [00:09:55] Speaker 00: Do you have more questions? [00:09:57] Speaker 02: Apparently not. [00:09:58] Speaker 02: We'll save the rest of your time. [00:10:01] Speaker 00: I shall. [00:10:02] Speaker 00: Thank you very much. [00:10:05] Speaker 02: Mr. Locascio, you [00:10:07] Speaker 02: We have a cross-appeal, and you want to save four minutes for that. [00:10:10] Speaker 05: Yes, your honor. [00:10:11] Speaker 05: Thank you. [00:10:17] Speaker 05: May it please the court, Greg Locascio, for Honeywell. [00:10:20] Speaker 05: Let's start with claim two. [00:10:23] Speaker 05: Substantial evidence supports the board's finding. [00:10:26] Speaker 05: Mexicam failed to meet its burden, and what we just heard was the board owed us more, or Honeywell didn't identify any criticality. [00:10:33] Speaker 05: Mexicam here had the burden. [00:10:35] Speaker 05: And on a factual issue with substantial evidence, the board said, you have not demonstrated any reason, any one of skill in the art would purify the trans isomer versus the cis isomer of 1234 ZE at all. [00:10:47] Speaker 05: Indeed, Mexicam argues in the direct contrary face of a critical dispositive fact that Judge Zeich identified, nowhere in the prior at all until the 874 disclosure. [00:11:00] Speaker 05: Did anyone ever talk about the performance differences between trans and cis? [00:11:05] Speaker 05: And table one, despite the argument we just heard, table one of the patent specifically identifies that the trans isomer was found by Honeywell to have two times the refrigeration capacity of the cis isomer. [00:11:18] Speaker 05: That's nowhere in the art. [00:11:20] Speaker 05: And then the idea that Inagaki sort of gets you there, no one until Honeywell also disclosed in the 874 the two boiling points of cis and trans isomers. [00:11:30] Speaker 05: Did anyone even know what the ratio in Inagaki was? [00:11:34] Speaker 05: And on that basis, [00:11:35] Speaker 05: the board decided that for the claims that were outside of the range of the Inagaki disclosure, back calculating it at 80-20 trans and cis, there was no basis for anyone to purify trans or to focus on trans, which claim two certainly does. [00:11:51] Speaker 01: With respect to Bogdan, you argue that they can't make any arguments based on Bogdan because it wasn't a ground, a prior ground for institution. [00:12:03] Speaker 01: But is it true that it was Honeywell that offered Bogdan into the record? [00:12:08] Speaker 05: Honeywell attached provided the Bogdan reference. [00:12:11] Speaker 05: The Bogdan reference does nowhere near get where Mexicam says it does. [00:12:16] Speaker 05: It is indeed never argued and waived, first off. [00:12:19] Speaker 01: Well, it doesn't have to be a piece of prior art to be a piece of evidence that the board could look to to determine what the prior art taught. [00:12:28] Speaker 05: I agree, Your Honor. [00:12:28] Speaker 05: The board could have looked to it. [00:12:29] Speaker 05: The board did not. [00:12:31] Speaker 05: And so at best, under that theory, I guess we'd be with a remand on that for the board to decide it. [00:12:35] Speaker 05: But we don't have to get there. [00:12:36] Speaker 05: And there's a couple of reasons. [00:12:37] Speaker 05: The Bogdan reference is about an entirely different chemical, 245FA. [00:12:41] Speaker 05: And it's a blowing agent. [00:12:43] Speaker 05: And Bogdan says there are off gases that come of that. [00:12:46] Speaker 05: And one of them is 1234ZE. [00:12:48] Speaker 05: And in the Bogdan reference, at A1184, there is a passing reference that says these are decomposition products. [00:12:55] Speaker 05: 1234ZE is one of those. [00:12:58] Speaker 05: And it says we're going to test them both. [00:13:00] Speaker 04: Trans. [00:13:01] Speaker 04: It says the trans is non-toxic and the other one hasn't been tested, right? [00:13:04] Speaker 05: It says cis has not been tested. [00:13:05] Speaker 05: So on the critical issue of is it a comparison, saying trans is good, cis is bad, no. [00:13:11] Speaker 05: And while the brief says non-toxic, it says limited testing, the limited amount of data available on trans implies it's not highly toxic or mutagenic. [00:13:21] Speaker 05: It's a far cry from non-toxic, to be sure. [00:13:24] Speaker 05: But that's not a discussion of the capacity difference, the benefits of trans versus cis at all. [00:13:29] Speaker 05: It's essentially saying there's this off-gas product. [00:13:31] Speaker 05: It has two isomers. [00:13:33] Speaker 05: And we're going to test them both for toxicity. [00:13:35] Speaker 05: And the reason, frankly, Your Honor, that that was in the record at all was not having anything to do with this issue, but because we won't get through a second to the cross-appeal, this entire class of what are called HFOs, unsaturated hydrofluorocarbons, they were never used ever by anyone until Honeywell as a refrigerant because they were thought to have a whole host of problems [00:13:57] Speaker 05: one of which was toxicity. [00:13:59] Speaker 05: And they were viewed as impurities to be avoided, things that we wouldn't want to have around in any refrigeration system. [00:14:05] Speaker 05: Bogdan's relevance, and why Bogdan was in the record at all, was to show that even when it was an off-gas parts per million, there were still concerns about its toxicity, Your Honor. [00:14:17] Speaker 04: I'm not quite clear what you said. [00:14:18] Speaker 04: I mean, Inagaki taught the use of HFO as a refrigerant, right? [00:14:25] Speaker 05: Inagaki identified [00:14:27] Speaker 05: 30 different potential refrigerants, Inagaki certainly discloses 1234ZE in its example 2, Your Honor, as what's been back calculated in the 80-20 mix. [00:14:38] Speaker 05: Inagaki was abandoned, and no one in the history of the time from Inagaki till the time of Honeywell's patents here ever used an unsaturated HFC, or as it's also known, an HFO, as a commercial refrigerant. [00:14:53] Speaker 04: That may be true, but that's not the test. [00:14:57] Speaker 04: Inogaki is prior art that taught the use of this compound as a refrigerant, right? [00:15:02] Speaker 05: Inogaki is prior art that this particular compound can be a refrigerant. [00:15:07] Speaker 05: The claim here isn't to the composition, Your Honor. [00:15:09] Speaker 04: The claim's here, if I can pivot to... Well, yeah, I understand the other issue about the combination with the lubricant. [00:15:17] Speaker 04: That's a different issue. [00:15:18] Speaker 05: It is, Your Honor. [00:15:19] Speaker 05: And on that issue, unless there's other questions around claim two, may pivot to Honeywell's possible here. [00:15:25] Speaker 05: Mexicam's expert on claim two uses the 874 patent as a roadmap to go figure out why you want transverse assist. [00:15:32] Speaker 05: The board said you can't do that, and claim two was found patentable. [00:15:35] Speaker 05: On the remaining claims, what the board then did is essentially use the same thing. [00:15:40] Speaker 05: Say, let's look at 874 as a roadmap. [00:15:44] Speaker 05: And the board's failings on those claims are twofold. [00:15:47] Speaker 05: First, the board doesn't provide any motivation to combine, and Mexicam didn't identify any motivation to combine. [00:15:55] Speaker 05: At best, their expert, their own employee, Doc Core, says it's obvious to try to combine. [00:16:01] Speaker 04: But your own patent refers to the POE lubricants as commonly used lubricants, right? [00:16:07] Speaker 05: Correct. [00:16:07] Speaker 05: There are a series, a class of lubricants that can be used. [00:16:10] Speaker 05: There are a class of refrigerants, thousands of combinations that can be tested. [00:16:14] Speaker 05: The board's decision is premised on the idea, based on a passing reference in Bivens, that all [00:16:23] Speaker 05: POEs, or pardon me, all HFCs would be usable with a POE. [00:16:28] Speaker 05: And that ignores the evidence in the record. [00:16:31] Speaker 05: What happened here, and there was arguments around this, and the board is where it is, the board's determination was, as a matter of semantics and the acronym, an HFO is within the universe of an HFC. [00:16:44] Speaker 05: It is a hydrofluorocarbon. [00:16:46] Speaker 05: True enough. [00:16:47] Speaker 05: That doesn't end the inquiry. [00:16:49] Speaker 05: And frankly, we think, if you look at the board's decision, [00:16:51] Speaker 05: That's the wrong inquiry, what the board ignored. [00:16:54] Speaker 05: It's the board didn't look to whether, when you read Bogdan, because it's an obviousness rejection, it's premised on Bogdan, pardon me, Bivens. [00:17:01] Speaker 05: Rejection on Bivens, it's premised on Bivens. [00:17:04] Speaker 05: The board's analysis is Bivens says you can use a POE as a lubricant with an HFC, and it's commercially used that way. [00:17:11] Speaker 05: That's true. [00:17:12] Speaker 05: But what's true about it, and Bivens himself testified to, is the only HFCs ever commercially used up until the point of that work, [00:17:22] Speaker 05: were unsaturated HFCs, meaning they had no double bonds. [00:17:27] Speaker 05: And so they were less reactive, less toxic. [00:17:29] Speaker 05: And the result of those, though, is they had high global warming potential. [00:17:34] Speaker 05: So that's why, when Honeywell came up with the HFO class, 1234ZE, 1234YF, those were the first commercial uses of HFOs. [00:17:44] Speaker 05: And for a decade, between Inagaki's disclosure and the disclosure in the 874, the art routinely talked about how [00:17:51] Speaker 05: These were viewed as being unstable with various things, including lubricants, POE being identified as an unstable lubricant by Bivens himself. [00:18:00] Speaker 05: And Bivens says, one of skill in the art, would not have viewed that definition of an HFC refrigeration system, which is actually the language of Bivens, as including the unsaturated, pardon me, the saturated class of HFOs. [00:18:13] Speaker 01: And so- Isn't, I mean, I understand you think that, you claim that there might have been [00:18:18] Speaker 01: clerical error or something in the patent. [00:18:20] Speaker 01: But isn't it problematic that your patent itself defines these things much more broadly? [00:18:27] Speaker 05: I'm not arguing and relying on the idea that whether it's clerical error or not. [00:18:32] Speaker 05: The fact that as a technical matter, an HFC, anything that has hydrogen fluorine and carbon includes the class of HFOs is not the argument, Your Honor. [00:18:41] Speaker 05: The point is the patent itself, when it talks about these and talks about them, even if it does talk about them, most times it says HFOs. [00:18:48] Speaker 05: But when it talks about them as HFCs, one who reads the 874 pattern still knows from various points I can direct the court to, these are unsaturated double bond compounds. [00:18:58] Speaker 05: That's the disclosure of the formula. [00:19:01] Speaker 05: That's the discussion of every one of those compounds. [00:19:03] Speaker 05: And that as a class, whether we call it unsaturated HFCs or whether we call it HFOs, it doesn't make a difference. [00:19:15] Speaker 05: And so the semantics is, I think, where the board got [00:19:18] Speaker 05: on the wrong path, and the right question has to be, under this court's law, what would one of skill in the art, when they read Bivens, think that to mean? [00:19:26] Speaker 05: The board said it means every single thing that is an HFC, including the HFO class that no one had used and people said don't use, would be compatible with the POE lubricant. [00:19:37] Speaker 05: The evidence in the record are two different HFCs that were in existence at the time, 134A and 143A. [00:19:45] Speaker 05: One of them is compatible with POE, [00:19:48] Speaker 05: One of them's not. [00:19:49] Speaker 05: So this concept that the board based its whole determination on around Bivens, that all HFCs are compatible with POE, is factually incorrect on the record. [00:19:59] Speaker 05: And the evidence around the HFOs, that's the Thomas Declaration, specifically says that example one of Inagaki, not compatible with a POE. [00:20:08] Speaker 05: That's an HFO as well. [00:20:10] Speaker 05: Example, it's 1243. [00:20:11] Speaker 05: 1234, example two, is. [00:20:14] Speaker 05: And so that was an unexpected result as well [00:20:17] Speaker 05: And the board washed right over that. [00:20:19] Speaker 05: At base, the core of the board's failings and why we think this on the claims other than the claim two should be reversed at a minimum remanded is the board never took any of this. [00:20:29] Speaker 05: These secondary considerations here are extraordinary. [00:20:31] Speaker 05: For a decade, the world, every chemistry company and every government agency was looking for something that wasn't just low ozone depletion. [00:20:40] Speaker 05: That's the HFC class, but low global warming potential. [00:20:44] Speaker 05: The prior product, 134A, [00:20:46] Speaker 05: has a global warming equivalent in the thousands. [00:20:50] Speaker 05: This class, the HFOs first you see. [00:20:52] Speaker 04: What's the secondary consideration evidence about the combination of this compound with the POE? [00:20:58] Speaker 05: With the POE. [00:21:01] Speaker 05: Inherent in that discussion I was just going through is its use as a refrigerant. [00:21:04] Speaker 05: Obviously, it needs to be used with a lubricant. [00:21:06] Speaker 05: And the secondary considerations evidence, Your Honor, goes to that it was known to be unstable. [00:21:12] Speaker 05: The HFOs were known to be reactive. [00:21:14] Speaker 05: They were expected to be toxic. [00:21:16] Speaker 05: And so you wouldn't use them in the system. [00:21:18] Speaker 05: And if you were going to use them, you wouldn't. [00:21:19] Speaker 04: Why did your patent say they were commonly used if they were so toxic? [00:21:24] Speaker 05: I'm talking about now the refrigerant part, Your Honor. [00:21:27] Speaker 05: Now the lubricants, which I think is where Your Honor was. [00:21:29] Speaker 04: Well, in about the use of this as a refrigerant. [00:21:32] Speaker 04: I don't understand. [00:21:33] Speaker 05: The patent doesn't teach that this class of [00:21:37] Speaker 05: HFOs was previously used as a refrigerant ironic because it was not commercially used. [00:21:41] Speaker 03: Inagaki. [00:21:42] Speaker 03: Doesn't make any difference whether it's commercially used. [00:21:44] Speaker 03: That's not the test for obviousness. [00:21:47] Speaker 03: Commercial use is not the test. [00:21:49] Speaker 05: I understand. [00:21:50] Speaker 05: But from the time of Inagaki, all the evidence around secondary considerations, which is why we got here, is around this particular class would not be used in a refrigeration system with a lubricant, particularly one [00:22:06] Speaker 05: that all the evidence here is reactive and in Bivens itself. [00:22:09] Speaker 05: It talks about the risk of polymerization. [00:22:11] Speaker 05: It talks about the risk of sludges forming. [00:22:13] Speaker 05: And this combination, the board doesn't even discuss. [00:22:17] Speaker 05: If the board went through the secondary considerations, as Your Honor has started to ask about, that might be one thing. [00:22:22] Speaker 05: Here, the board failed entirely. [00:22:23] Speaker 05: There's not a single mention of this in the board's decision, nor is there any reference at all to the motivation to combine. [00:22:31] Speaker 05: And indeed, here with a decade between it, indeed, the secondary considerations undermine [00:22:35] Speaker 05: the motivation to combine in the first place. [00:22:37] Speaker 05: Unless there are other questions, Your Honor, I'll reserve the room. [00:22:39] Speaker 02: We will hold it for you. [00:22:41] Speaker 02: Thank you, Your Honor. [00:22:43] Speaker 02: Mr. Krumholtz has only six minutes. [00:22:48] Speaker 00: I don't think I'll need all six. [00:22:50] Speaker 00: He said using all six minutes probably. [00:22:54] Speaker 00: But let me just start in response here. [00:22:57] Speaker 00: First of all, with respect to [00:23:00] Speaker 00: the argument on the claim to regarding table one. [00:23:03] Speaker 00: They say table one shows that ZE was the superior refrigerant. [00:23:07] Speaker 00: All you have to do is look at, this is at A234, all you have to do is look at that table and note that it says the CIS1234ZE had the lowest discharge temperature out of all of those. [00:23:19] Speaker 00: It had the highest relative COP, which is the coefficient of performance. [00:23:24] Speaker 00: And their own patent says the coefficient of performance is a universally accepted measure of refrigerant performance. [00:23:30] Speaker 00: So this table does not establish the trans1234ZE pure would have been the preferred refrigerant, and it cannot be relied upon for that fact. [00:23:41] Speaker 00: Going back to this argument on HFC and so on and HFO, this was the whole argument from the beginning. [00:23:48] Speaker 00: They tried very hard to argue that HFOs were a completely different thing from HFCs. [00:23:56] Speaker 00: totally disregarding the fact that that is precisely how they refer to them in their own patent as HFCs and how they continually refer to them, for example, at the bottom of column one of their patent. [00:24:08] Speaker 00: They specifically noted that in talking about flammability, they specifically state [00:24:26] Speaker 00: in two sentences, excuse me, it's the bottom of column two, that unfortunately many HFCs, which might otherwise be desirable for use in a refrigerant compositions, are not non-flammable. [00:24:41] Speaker 00: For example, floral alkane, diph floral ethane, HFC 152A, and floral alkane, 111 trifloral propene, HFO 1243ZF, are each flammable and therefore not viable for use in many applications. [00:24:56] Speaker 00: So they classified both an HFO and an HFC under the heading of HFC. [00:25:01] Speaker 00: All HFC stands for is a material that's made of hydrogen, fluorine, and carbon. [00:25:07] Speaker 00: All CFC stands for is a material that's made of chlorine, fluorine, and carbon. [00:25:12] Speaker 00: It's the molecules that matter when you're picking the lubricants. [00:25:15] Speaker 00: And the point is well taken. [00:25:17] Speaker 00: If POEs were that poisonous and terrible, no one would have used them. [00:25:21] Speaker 00: Instead, they lay out that this is one of the most commonly used [00:25:25] Speaker 00: lubricants available. [00:25:27] Speaker 00: POEs are an interesting lubricant because whereas CFCs work with mineral oils and HFCs do not, and that is of record, POEs are a near universal sort of lubricant. [00:25:39] Speaker 00: And yes, there was one refrigerant, 143A, that was shown not to be miscible in several temperature ranges with POE lubricants. [00:25:50] Speaker 00: But every other case that was found [00:25:54] Speaker 00: found that POE lubricants worked with HFC lubricants. [00:25:58] Speaker 01: The testimony from Bivens himself was pretty powerful, was it not? [00:26:01] Speaker 01: I mean, Bivens said that his patent was not meant to refer to HFOs. [00:26:08] Speaker 01: And he said that one of Spill and the Art would not have understood the reference to HFCs to encompass unsaturated HFCs. [00:26:15] Speaker 01: How is that not pretty damning with respect to your contention that Bivens is [00:26:22] Speaker 01: part of the teaching that we should look to. [00:26:24] Speaker 00: Well, I think you have to look at Bivens before the invention and Bivens after the invention. [00:26:30] Speaker 00: And his testimony before the invention, he made a statement that said, a blanket statement that said, HFCs work with POEs and PAG lubricants. [00:26:40] Speaker 00: And that's the direction that you would go. [00:26:42] Speaker 00: POEs are commonly used lubricants. [00:26:45] Speaker 00: That's what the patent states. [00:26:47] Speaker 00: That's what all the prior art taught. [00:26:49] Speaker 00: And when you pull it off the shelf, what are you looking at? [00:26:52] Speaker 00: You're looking at a lubricant that works with hydrogen, fluorine, and carbon. [00:26:55] Speaker 00: Now, several years later, 10 years later, 15 years later, he wants to recant the position that he stated before the date of invention. [00:27:06] Speaker 00: That, I think, is suspect testimony. [00:27:09] Speaker 00: And that is testimony that I don't think is persuasive. [00:27:12] Speaker 00: And as the finder of fact, PTAB properly weighed that evidence, came to the logical conclusion [00:27:19] Speaker 00: And on the substantial evidence, a reasonable mind could find in a way that what Dr. Bivens said in his patent had more aware. [00:27:26] Speaker 01: Dr. Core, your own expert, actually said that it was well known that they were more reactive, right? [00:27:33] Speaker 00: He said that the POEs, yes, they're reactive in the sense that when he was discussing reactivity, yes, they're hydroscopic. [00:27:39] Speaker 00: You need to put a lid on your can when you're done using it so it doesn't absorb water from the atmosphere, yes. [00:27:47] Speaker 00: But the fact that they're more reactive, they're not explosive. [00:27:51] Speaker 00: I mean, Judge, HFCs, alkanes, 134A is an alkane. [00:27:57] Speaker 00: They're very stable. [00:27:59] Speaker 00: They're used in medical dose inhalers. [00:28:01] Speaker 00: My son uses a medical dose inhaler for his asthma. [00:28:04] Speaker 00: They're not reactive. [00:28:05] Speaker 00: What people started to look for, and what is of record in this case, is for things that would break down quickly in the atmosphere. [00:28:13] Speaker 00: And that was driven by regulation under the Montreal Protocol moving forward under the Kyoto Accords moving forward worldwide. [00:28:20] Speaker 00: So while 134A is stable, it works very well, it's a superior refrigerant because it has great versatility because it can be used in medical dose inhalers, it can be used in automobiles. [00:28:33] Speaker 00: It is being replaced by something that has less versatility, 1234ZE and 1234YF. [00:28:41] Speaker 00: Why? [00:28:42] Speaker 00: because it will break down quickly in the atmosphere. [00:28:47] Speaker 00: And that was the goal there. [00:28:49] Speaker 00: And there was a ready-made, off-the-shelf solution in Inagaki where the reactivity of that material and the refrigeration performance and compatibility with lubricants and compatibility with materials was all taught by that reference. [00:29:04] Speaker 00: And I'm past my time. [00:29:06] Speaker 00: So thank you very much for your time. [00:29:09] Speaker 02: And I don't think there was anything directed to the cross appeals. [00:29:12] Speaker 02: So we'll conclude that, Mr. Locascio. [00:29:16] Speaker 05: All due respect, Your Honor. [00:29:18] Speaker 02: I think he was talking about the main appeal. [00:29:23] Speaker 01: That's our appeal. [00:29:25] Speaker 01: The whole discussion I just had with him was on the cross appeal. [00:29:27] Speaker 01: All right. [00:29:27] Speaker 05: I apologize, Your Honor, if I was. [00:29:32] Speaker 05: Thank you. [00:29:32] Speaker 05: And I just have a couple of things. [00:29:35] Speaker 05: The rejection is tied to an obviousness combination with Bivens. [00:29:40] Speaker 05: The only reference at all to the POE in Bivens is a line about using it in the HFC refrigeration system. [00:29:48] Speaker 05: Bivens' testimony, as he's not a Honeywell employee, he was a DuPont at the time, he says, the only commercial refrigeration systems we were talking about, because the only ones that existed, were not this class of unsaturated HFOs. [00:30:04] Speaker 05: And on that point, [00:30:05] Speaker 05: CORE is the only response to that. [00:30:07] Speaker 05: And the board seems to have credited CORE in his obvious to try argument. [00:30:11] Speaker 05: CORE's entire declaration is written from the present tense. [00:30:14] Speaker 05: CORE never says anything about 2002. [00:30:17] Speaker 05: He never says anything about the time of the invention. [00:30:20] Speaker 05: And that's a critical failing here, because this goes to, did people at the time believe POE would work with an HFO in the record? [00:30:28] Speaker 05: The only evidence in the record is that, in fact, it does not work with them all. [00:30:33] Speaker 05: The Thomas Declaration specifically compares example one and two of Inagaki with POE, and example two is, in fact, workable. [00:30:42] Speaker 05: It's missable and it's compatible with POE. [00:30:45] Speaker 05: Example one, which would also be under the board's same analysis, compatible and known to everyone to be workable with POE, is in fact not. [00:30:53] Speaker 05: And in the face of that, and in absence of any analysis with motivation to combine, or any discussion at all of the secondary considerations here, [00:31:01] Speaker 05: we respectfully suggest that claim two should be affirmed. [00:31:04] Speaker 05: But the remainder of these claims should be reversed by this court, or at a minimum, remained. [00:31:09] Speaker 05: Any other questions? [00:31:10] Speaker 05: I'll address them. [00:31:10] Speaker 05: But otherwise, I'll leave the remainder. [00:31:12] Speaker 02: Thank you. [00:31:13] Speaker 05: Thank you. [00:31:13] Speaker 02: Counsel will take vacation revisions.