[00:00:00] Speaker 00:
The next case for argument is 151983, Organic Himya versus Rome House Company.

[00:00:38] Speaker 05:
May I proceed, Your Honor?

[00:00:40] Speaker 05:
May it please the court?

[00:00:42] Speaker 05:
If the TOTA process were a competitor's process, instead of in the prior art, Roman Haas would probably accuse it of infringement and would almost certainly win.

[00:00:52] Speaker 05:
Because the TOTA process uses the same ingredients as the patents in suit.

[00:00:57] Speaker 05:
It uses the under the same conditions.

[00:00:59] Speaker 05:
It uses the same suitable swelling agents.

[00:01:02] Speaker 05:
It explains that these bases are... But how did the board get around that then?

[00:01:06] Speaker 00:
They were supposed to give some deference to the board, at least on some issues.

[00:01:10] Speaker 00:
In one of their opinions, they talked about inherency.

[00:01:13] Speaker 00:
Right.

[00:01:14] Speaker 00:
In the other, not so much.

[00:01:16] Speaker 00:
So how would you characterize the board's position on that?

[00:01:19] Speaker 05:
Well, I would say the board erred, first and foremost, in construing the term swelling agent.

[00:01:24] Speaker 05:
And I think that error

[00:01:25] Speaker 05:
drove its inherency analysis, which was also erroneous.

[00:01:28] Speaker 00:
Can I ask about just speaking for myself, which is all I do, is that I prefer you accept the board's claim construction as being the correct one and give us more of an argument about how you see the prior art given the claim construction the board agreed to.

[00:01:44] Speaker 05:
Sure.

[00:01:45] Speaker 05:
If we accept the claim construction as being correct, which of course we don't, the board additionally erred in requiring proof by inherency.

[00:01:53] Speaker 05:
The claims here are fairly simple.

[00:01:58] Speaker 05:
They are method claims that require the addition of three ingredients, a multi-stage polymer, a monomer, and a swelling agent under a certain condition, no substantial polymerization, and then reducing the monomer level by 50%.

[00:02:10] Speaker 05:
The claims don't require a swelling step.

[00:02:14] Speaker 05:
They don't require the production of swollen or

[00:02:18] Speaker 05:
hollow particles.

[00:02:21] Speaker 02:
The methods are directed... Tell me why I frankly did not read the board as requiring a shelling of inherency.

[00:02:29] Speaker 02:
What I read the board as saying is, you're the challenger.

[00:02:33] Speaker 02:
Let's take the claim construction as a given for a moment, which is to say that this thing you put in has to be capable of permeating the shell and swelling the core in the process you use it for.

[00:02:48] Speaker 02:
I think I've accurately summarized that.

[00:02:52] Speaker 02:
You, the challenger, have not shown that in the TOTA process, or the TUDA process, that the potassium hydroxide or the sodium hydroxide is capable of doing those things.

[00:03:13] Speaker 02:
Neither TOTA nor TUDA says it's doing those things.

[00:03:18] Speaker 02:
It doesn't necessarily, and you did not do any experiments to show that it's capable of doing so.

[00:03:25] Speaker 02:
You simply criticized their experiments.

[00:03:30] Speaker 02:
Assuming that they said the last thing, they did not depend on the Inherency Show.

[00:03:36] Speaker 05:
Well, Your Honor, I respectfully disagree that the court, the board said it was reading our argument as an Inherency argument.

[00:03:44] Speaker 05:
It acknowledges it says,

[00:03:45] Speaker 05:
We see you're arguing.

[00:03:47] Speaker 02:
Because you didn't put on any evidence to show that in TOTA and TUDA, the potassium hydroxide or sodium hydroxide was capable of swelling in that process.

[00:03:57] Speaker 05:
I respectfully disagree a bit.

[00:03:58] Speaker 05:
The board went to inherency not because there was no showing of swelling.

[00:04:03] Speaker 05:
It was because of its construction, which required a specific type of swelling, that it permeate the shell and swell the core.

[00:04:09] Speaker 02:
We're taking that as a given for purposes of this question.

[00:04:12] Speaker 05:
If we take that as a given, the error here is that,

[00:04:15] Speaker 05:
the TOTA references expressly disclose the use of a swelling agent that the patents in suit describe as being suitable, not for any process, but for the claimed process.

[00:04:29] Speaker 05:
In TOTA, we're not talking about some set of ingredients that are exotic and different than what blankenship discloses.

[00:04:35] Speaker 02:
It's the same ingredients.

[00:04:35] Speaker 02:
Let me focus on that, because at least in my preparation, I've been focused on that.

[00:04:42] Speaker 02:
At the bottom of column eight,

[00:04:43] Speaker 02:
Again, putting aside the common construction piece, the typographical error, the including law, put that aside.

[00:04:51] Speaker 02:
The next paragraph says suitable swelling agents include, and potassium hydroxide is listed, and I think there's no dispute that the description is broad enough that everybody agrees it also would cover sodium hydroxide.

[00:05:08] Speaker 02:
That is some kind of an admission, but the question is what kind?

[00:05:13] Speaker 02:
What does it admit?

[00:05:14] Speaker 02:
It seems to me it could have either of two scopes.

[00:05:17] Speaker 02:
One is for every one of the hundreds of thousands of permutations of particular embodiments that we have described under the somewhat generic claim conditions, lots of this, lots of monomers, lots of polymers, lots of this, that, it is always a swelling agent.

[00:05:36] Speaker 02:
It might mean that.

[00:05:38] Speaker 02:
Or it might mean

[00:05:40] Speaker 02:
Depending on which one you use, it's a swelling agent.

[00:05:43] Speaker 02:
And in the absence of a finding or evidence, I don't know how to interpret the scope of that admission.

[00:05:52] Speaker 05:
Your Honor, the claims only require adding an ingredient that is capable of causing swelling.

[00:05:58] Speaker 05:
So just like the example of the analogy we gave of a process for making bread dough where you have to add a leavening agent, when you go to the grocery store and you buy the yeast, it's a leavening agent.

[00:06:09] Speaker 05:
You don't know whether it's actually been 11 yet or not, because you may use it in a way that doesn't work.

[00:06:14] Speaker 05:
Or if I hand you a screwdriver, it's a screwdriver.

[00:06:16] Speaker 05:
Even if you can't happen to get a particular screw driven in, it's still a screwdriver, because it's recognized as having that function.

[00:06:23] Speaker 05:
The basis of that issue in these processes, and again, it's important to realize that we're not talking about a different set of ingredients and different conditions than the blank and ship patents.

[00:06:32] Speaker 05:
We're talking about the same set of ingredients and the same conditions.

[00:06:34] Speaker 02:
Blank and ship is the patent's issue?

[00:06:35] Speaker 05:
Blank and ship is the patent's issue.

[00:06:37] Speaker 05:
It's the same set of ingredients.

[00:06:39] Speaker 02:
In other words, tell them... Let me see if I can just... Maybe you didn't understand, or I didn't sharply identify what my puzzle is.

[00:06:50] Speaker 02:
You say, reasonably enough, that the bottom of colonate, the suitable swelling agents include potassium hydroxide, is some kind of an admission.

[00:07:00] Speaker 02:
But I don't know the scope of the admission.

[00:07:03] Speaker 02:
If you take

[00:07:04] Speaker 02:
the set of claimed and column one described sort of generic conditions, and you go through column two, three, four, so on, it identifies, I don't know what the number of permutations of specific things that could fit into each category, but it's a very, very large number.

[00:07:24] Speaker 02:
Is that an admission, Patty?

[00:07:25] Speaker 02:
In every single one of those permutations, sodium hydroxide is capable of

[00:07:31] Speaker 02:
permeating the shell and swelling the core.

[00:07:35] Speaker 02:
Or only for some of them, but you need to figure that out.

[00:07:40] Speaker 05:
It's an admission that it's capable of doing it.

[00:07:43] Speaker 02:
How do we know that?

[00:07:44] Speaker 02:
The words do not tell us which of those two things, those two meanings,

[00:07:51] Speaker 02:
It is when you say suitable swelling agents are these for, I'm going to call it a million, a million possible processes I've just described in generic terms.

[00:08:00] Speaker 02:
We know it because not only does the patent say it, but when you look at the examples and there are too many... You know, what you just said does not respond to my point that the language does not make that clear.

[00:08:11] Speaker 02:
It's a perfectly permissible use of the English language.

[00:08:14] Speaker 02:
to say this is suitable in the processes we've just described to mean either in every single one of them or in some of them depending on which ones we pick?

[00:08:26] Speaker 05:
Your Honor, I think it's capable of causing swelling.

[00:08:32] Speaker 05:
It may depend on process conditions.

[00:08:35] Speaker 05:
But the claims don't require any particular process conditions other than the one, which is no substantial polymerization.

[00:08:41] Speaker 05:
Just like if you buy a package of yeast, that yeast is capable.

[00:08:43] Speaker 02:
Did you put on an expert who said that in the context of this technology, that it makes perfect sense to say these bases

[00:08:59] Speaker 02:
would always be capable of permeating the core and swelling, or permeating the shell and swelling the core in every one of the million possible individual combinations that the patent has just described.

[00:09:12] Speaker 05:
Our expert looked at the process that was in the prior art and said in that process the bases that are being used are being used to swell.

[00:09:21] Speaker 05:
And that's also what TOTA says.

[00:09:22] Speaker 05:
In other words, it's not just me saying that.

[00:09:24] Speaker 05:
TOTA also says, and we put multiple of these quotations in our

[00:09:28] Speaker 05:
gray brief at pages 20 to 21, multiple times, Toda says, the reason we're doing the base treatment step is so the base permeates the shell and swells the core.

[00:09:39] Speaker 05:
Their evidence and what they put on, first of all, it's shifted a bit.

[00:09:42] Speaker 05:
What they put on was evidence that it doesn't work at all.

[00:09:44] Speaker 05:
They called into question the, quote, authenticity of the patents of the prior art itself.

[00:09:49] Speaker 05:
In other words, calling into question whether the evidence that was submitted to the patent office by Toda was authentic.

[00:09:54] Speaker 05:
Now they're saying, well, maybe it was the acid treatment step and not the basin treatment step that actually swelled the cores.

[00:10:00] Speaker 05:
Because the cores did swell in TOTA.

[00:10:02] Speaker 05:
They have photographs of swollen particles.

[00:10:03] Speaker 05:
So something swelled those cores.

[00:10:06] Speaker 05:
What the patent requires is that you use an agent that is capable of swelling.

[00:10:11] Speaker 05:
And both the Blankenship patents at issue here and the TOTA patents both say that these bases are capable of penetrating the core and swelling.

[00:10:21] Speaker 05:
Their quibble is whether, in these particular examples that we use, did they get the shell temperature up high enough for the base to actually penetrate.

[00:10:30] Speaker 05:
They did, in the blankenship patents, they did their swelling step at 85 degrees.

[00:10:34] Speaker 05:
In the TOTA prior art, they did the base treatment step at 80 degrees, so it's a five degree difference.

[00:10:39] Speaker 05:
It's the same basic shell polymer.

[00:10:41] Speaker 05:
And so there may be a quibble about whether they should have gotten that temperature up a few degrees more, but there's no quibble, or there shouldn't be any quibble, that these bases are capable of penetrating that shell and swelling the core.

[00:10:53] Speaker 05:
Just like, as I say, if you go to the grocery store and you get yeast, it is capable of leavening bread, regardless of whether it ever actually does it.

[00:11:01] Speaker 05:
A screwdriver is capable of driving a screw.

[00:11:03] Speaker 03:
Are you saying it's a quibble as to the difference as to when the swelling agent is added, when

[00:11:09] Speaker 03:
final monomer is polymerized.

[00:11:11] Speaker 03:
We are just saying that since the temperature is the same, it doesn't matter.

[00:11:16] Speaker 05:
What I'm saying is that the total prior art could anticipate and render obvious these claims, even if it were a complete black box between the ingredient step and the last step of reducing the monomer.

[00:11:29] Speaker 05:
We don't even need to know what's inside that black box.

[00:11:32] Speaker 05:
All we need to know is that they added a swelling agent that is capable of swelling.

[00:11:38] Speaker 05:
Blankenship and TOTA both say that sodium hydroxide and potassium hydroxide are capable of doing that.

[00:11:44] Speaker 05:
Now it just so happens that in TOTA it's pretty clear that it actually works because they've got photographs of swollen particles.

[00:11:52] Speaker 05:
But that's beside the point.

[00:11:53] Speaker 05:
We don't even need to show that because the claims don't require swelling.

[00:11:56] Speaker 05:
They don't require the formation of swollen particles.

[00:11:59] Speaker 05:
They only recite three ingredients being put together, one of which is a swelling agent, and then

[00:12:04] Speaker 05:
under certain conditions and then reducing the monomer level by fifty percent.

[00:12:08] Speaker 05:
Nothing in there requires a swelling step.

[00:12:11] Speaker 02:
So what is the evidentiary basis again for saying that potassium hydroxide is a swelling agent in TOTA?

[00:12:19] Speaker 05:
The basis is the Blankenship patent says that it's a suitable swelling agent and TOTA says it as well.

[00:12:28] Speaker 02:
TOTA also says it.

[00:12:29] Speaker 02:
Let's put aside the Blankenship patent column eight whose the scope of

[00:12:34] Speaker 02:
the admission contained in that being uncertain, at least to me, not to you.

[00:12:40] Speaker 02:
What in TOTA exactly says potassium hydroxide is a swelling agent here?

[00:12:46] Speaker 05:
Well, TOTA explains, if you go to page 20 to 21 of our grade brief, we collected the statements in TOTA.

[00:13:00] Speaker 05:
When TOTA is explaining its process, it's using

[00:13:04] Speaker 05:
Its process uses either potassium hydroxide or sodium hydroxide.

[00:13:08] Speaker 05:
And when it explains how to set up this process, it explains over and over.

[00:13:12] Speaker 05:
Make sure you keep the quantity of carboxyl containing monomer between 20 and 60 percent because below that, the base won't permeate into the polymer particles.

[00:13:21] Speaker 05:
And then it gives specific ranges for the weight ratio of the center layer to the polymer and weight ratios to the center layer to the intermediate layer.

[00:13:28] Speaker 05:
all of which are geared towards making sure the base, which is either potassium hydroxide or sodium hydroxide, can penetrate through the layer and neutralize the core.

[00:13:38] Speaker 05:
TOTA is laying out the exact same theory of swelling that Roman Haas explained in its brief, that you neutralize the core with a base, because remember, it's an acid core.

[00:13:46] Speaker 05:
You can't neutralize it with an acid step.

[00:13:48] Speaker 05:
You have to neutralize it with a base.

[00:13:50] Speaker 05:
TOTA is explaining in detail the exact same theory of swelling that Blankenship is explaining.

[00:13:56] Speaker 05:
And so that's additional, if you want to say, evidence as to how and why these bases, these fixed bases, not only that, but if you look at all of the examples in the Blankenship patent, I don't recall that they all use potassium and sodium hydroxide, but they certainly use fixed bases such as ammonium hydroxide, very similar properties, and they're used throughout the examples in the patent.

[00:14:17] Speaker 05:
So clearly in the context of this type of process with these ingredients, again, we're not talking about different ingredients, we're talking about the same ingredients as Blankenship is disclosing.

[00:14:25] Speaker 05:
and the same condition of no substantial polymerization.

[00:14:28] Speaker 05:
The prior art is using the same exact bases that Blankenship says are suitable.

[00:14:33] Speaker 05:
And that's our evidence as to why these are capable of swelling.

[00:14:38] Speaker 05:
The board erred by saying, well, we're going to not only look to see whether these are capable at the time that they're added, but we're going to go look at the unclaimed process step of actually swelling.

[00:14:51] Speaker 05:
And then we're going to require you to forensically prove that this thing

[00:14:55] Speaker 05:
that everybody agrees, essentially, is capable of doing it, actually did it.

[00:14:58] Speaker 05:
It's like if the claim required providing a screwdriver, if I give you a screwdriver, if it's screwdriver, you shouldn't have to prove that it's capable of driving every screw, every time, in every condition.

[00:15:08] Speaker 05:
It's an express disclosure.

[00:15:10] Speaker 00:
Before your time runs out, I just want to ask you a logistical question.

[00:15:13] Speaker 00:
Your friend can respond if he has a different view.

[00:15:15] Speaker 00:
If we were to agree with your argument, not on claim construction, but on TOTA and the disclosure priority,

[00:15:21] Speaker 00:
This case is still alive, right?

[00:15:22] Speaker 05:
Yes, absolutely.

[00:15:23] Speaker 00:
And what remains to be done?

[00:15:25] Speaker 00:
Are there other allegations?

[00:15:28] Speaker 05:
If you agree with our argument on the claim construction,

[00:15:32] Speaker 05:
If you disagree with them.

[00:15:33] Speaker 00:
If you disagree with the claim construction... Well, we still have our argument on inherency that this is an express... But what's left in this case?

[00:15:40] Speaker 00:
I just want to understand.

[00:15:41] Speaker 00:
Well, the board still has allegations in front of it.

[00:15:44] Speaker 05:
I think the only thing... If I understand your question, if you agree that these claims should have been invalidated rather than not held valid, the only thing that would be left would be their contingent claim construct, their contingent claim amendments.

[00:16:00] Speaker 05:
If you disagree with how the board did its analysis, for instance, whether the inherent analysis is correct, then it might require a remand to redo the analysis.

[00:16:11] Speaker 01:
Because there might be a question of whether TOTA is enabling or maybe some other.

[00:16:17] Speaker 05:
It could be, but again, I know you didn't want to hear about claim construction, but the only enablement argument they made were under a claim construction that we disagree with.

[00:16:25] Speaker 05:
So if the court changes the claim construction, I don't think they have an enablement argument under our claim construction.

[00:16:35] Speaker 00:
Thank you.

[00:16:35] Speaker 00:
Will we score three minutes of rebuttal?

[00:16:38] Speaker 00:
Mr. Numerata.

[00:16:40] Speaker 04:
Thank you, Your Honor.

[00:16:45] Speaker 04:
May I please the court?

[00:16:46] Speaker 04:
I would like to address the last point about what would happen if there was a remand, which, of course, we don't believe would be appropriate here.

[00:16:53] Speaker 04:
But there are many issues that would remain.

[00:16:56] Speaker 04:
For example, we put in evidence that there was no substantial polymerization.

[00:17:00] Speaker 04:
That limitation was not met by TOTA and TUDA.

[00:17:03] Speaker 04:
In fact, there was substantial polymerization throughout the process when the base was being used in TOTA and TUDA.

[00:17:09] Speaker 04:
So the board never reached the issue as to whether or not TOTA and TUDA met the no substantial limitation

[00:17:15] Speaker 04:
So no substantial polymerization limitation.

[00:17:17] Speaker 04:
The board also never reached the issues to whether or not the TOTA and TUDA references were enabling.

[00:17:23] Speaker 04:
And then TUDA, the second one.

[00:17:25] Speaker 00:
Isn't there a presumption that the prior art is enabled?

[00:17:28] Speaker 04:
There may be a presumption, but we submitted evidence that they were not.

[00:17:31] Speaker 04:
We put in reproductions showing that if you tried to replicate that process, you did not get, first of all, you didn't get any base into the shell.

[00:17:40] Speaker 04:
That's a separate issue.

[00:17:41] Speaker 04:
But overall, that the processes were not enabled.

[00:17:43] Speaker 04:
So it would be an issue of fact left as to whether or not they're enabled.

[00:17:47] Speaker 04:
And then on the issue of the major issue, though, would be no substantial polymerization.

[00:17:51] Speaker 04:
The board made no finding on that.

[00:17:52] Speaker 04:
And our contention, our experts showed, in fact, there is substantial polymerization occurring during the TOTA and TOTA processes, the pertinent portions at issue.

[00:18:01] Speaker 04:
On obviousness, the board never reached the issue of, for example, the objective indicia of non-obviousness.

[00:18:08] Speaker 04:
We have evidence of copying here, organic copy, the Roman Haas patents.

[00:18:12] Speaker 04:
They went so far as to steal related trade secrets, which was the issue of the ITC case.

[00:18:16] Speaker 04:
They destroyed evidence in that case.

[00:18:18] Speaker 04:
They've been excluded from that.

[00:18:19] Speaker 00:
You're making me sorry I asked the question.

[00:18:22] Speaker 04:
And then there's also the issue of praise.

[00:18:24] Speaker 04:
There are a lot of issues about praise.

[00:18:27] Speaker 04:
In their own patent, they said that the Roman Haas patents at issue here are the, quote, most extensive technology jump in the field of core sheet polymerization of pacifying particles.

[00:18:36] Speaker 04:
So that was never considered either.

[00:18:38] Speaker 00:
OK, why don't we move back to our case.

[00:18:40] Speaker 04:
Your Honor, I think just to focus on the issue that was being discussed earlier, one of the issues was whether sodium hydroxide and potassium hydroxide are considered to be swelling agents in all contexts.

[00:18:53] Speaker 02:
That was not at least the issue that I was framing in that way.

[00:18:58] Speaker 02:
I will stipulate for these purposes that sometimes they're not.

[00:19:03] Speaker 02:
Right.

[00:19:03] Speaker 02:
The question is, does the sometimes include anything within the range of the universe described within the

[00:19:10] Speaker 02:
the Blankenship Spec.

[00:19:13] Speaker 04:
Well, the Blankenship Spec, and I can start with the claim construction.

[00:19:16] Speaker 04:
I'm not going to argue about it unless you want an argument on that.

[00:19:18] Speaker 02:
I'm going to get back to that.

[00:19:20] Speaker 02:
OK.

[00:19:20] Speaker 04:
The claim construction that the board adopted was one that says that they construed the swollen agent as expressing the structural element in functional terms capable of permeating the shell and swelling the core in the presence of the multi-stage polymer and monomer under conditions of the specific process for which the agent is to be used.

[00:19:39] Speaker 04:
That was part of the construction.

[00:19:41] Speaker 04:
There was evidence on the plain and ordinary meaning, which is where you start with claim destruction, even under BRI.

[00:19:48] Speaker 02:
Let me try to focus.

[00:19:50] Speaker 02:
This question is clear in my mind, and I'm going to try to make it clear to you.

[00:19:53] Speaker 02:
Maybe you understand, which I asked twice of your colleague on the other side.

[00:20:00] Speaker 02:
Colimate says one of the suitable swelling agents is potassium hydroxide.

[00:20:06] Speaker 02:
Now, that could mean in every one of the million permutations of...

[00:20:13] Speaker 02:
polymers and monomers that are enumerated as possibilities under the other conditions being both described at the bottom of column one and then basically claimed that potassium hydroxide is always a swelling agent or it could mean

[00:20:36] Speaker 02:
under the English language.

[00:20:38] Speaker 02:
Sometimes it is, sometimes it isn't.

[00:20:40] Speaker 02:
But sometimes it is, and that's why we're listening at a suitable.

[00:20:43] Speaker 02:
But it depends.

[00:20:44] Speaker 02:
How do we know which of those two meanings that admission has?

[00:20:49] Speaker 04:
Well, Your Honor, I believe if you start with the plain-ordinary meaning, our experts said, and their experts did not dispute, that swelling agent is always done in the context of a specific process in which it is being used.

[00:21:00] Speaker 04:
We asked their head of R&D, we said in the context of a redacted process because of an ITC protective order,

[00:21:06] Speaker 04:
Would you describe sodium hydroxide as a swelling agent?

[00:21:10] Speaker 02:
Was the process that he was talking about one that's otherwise covered by the blankenship?

[00:21:15] Speaker 04:
No, it's an emulsion polymerization process.

[00:21:17] Speaker 02:
But not within the in?

[00:21:20] Speaker 02:
No.

[00:21:20] Speaker 02:
OK, so I'm going to modify my question.

[00:21:24] Speaker 02:
I don't actually think modify it.

[00:21:25] Speaker 02:
I think just clarify it.

[00:21:27] Speaker 02:
That's irrelevant.

[00:21:28] Speaker 02:
Is there any way that a chemist or whoever the relevant person of skill in the art would understand that the collimated mission about suitable swelling agents applies to every one of the million previously described combinations of these other conditions or applies only to some of them?

[00:21:51] Speaker 02:
Not that it doesn't apply to something completely outside those.

[00:21:55] Speaker 02:
within the class of the million combinations described?

[00:21:59] Speaker 04:
Yes.

[00:21:59] Speaker 04:
First of all, the person skilled in the art would read the specification, and it says the core polymer of the multi-stage emulsion polymer swells when the core is subjected to a basic swelling agent that permeates the shell to at least partially neutralize the hydrophilic functionality of the core, preferably because of pH range, and thereby result in swelling by hydration of the hydrophilic core polymer.

[00:22:21] Speaker 04:
In other words, it has to do that.

[00:22:23] Speaker 04:
What the spec is saying that suitable agents could include these bases, but to be a swelling agent, consistent with the plenary meaning, in the process in which you're using it, which is what the board got to.

[00:22:33] Speaker 02:
I think we're talking at cross purposes.

[00:22:35] Speaker 02:
I'm sorry.

[00:22:36] Speaker 02:
I am holding as a given for now that you're correct that to be a swelling agent, this thing has to permeate the shell and swell the core.

[00:22:47] Speaker 02:
And I'm also holding as correct the rest of the claim construction in the process you're using it for.

[00:22:53] Speaker 02:
Then column eight in the next paragraph says, suitable swelling agents include potassium hydroxide.

[00:23:00] Speaker 02:
Does that mean that potassium hydroxide will meet that swelling agent construction that was just given in the previous paragraph in every one of the million combinations that have been described in columns basically three through the top of eight?

[00:23:19] Speaker 04:
No, it doesn't say that here.

[00:23:20] Speaker 04:
It says suitable agents can include these.

[00:23:22] Speaker 02:
How do we know that?

[00:23:23] Speaker 04:
Because a person skilled in the art would know that in order to be a swelling agent, it needs to be able to penetrate the shell and swell the core.

[00:23:29] Speaker 04:
And there are simple tests to do that.

[00:23:31] Speaker 04:
In other words, our expert came in and said, when he read the specification, he understood that for the TOTA and TUTA processes, and there's no statement that it's the same process, it's the same conditions.

[00:23:42] Speaker 04:
That's their lawyer saying that.

[00:23:44] Speaker 04:
Our expert looked at it and said TOTA and TUTA have different processes.

[00:23:47] Speaker 04:
different conditions.

[00:23:49] Speaker 04:
And when I look at that as a person skilled in the art, I can see that the sodium and potassium hydroxide is not capable of penetrating the shell and swelling the core.

[00:23:57] Speaker 04:
And then that's step one.

[00:23:59] Speaker 04:
And then he did a test.

[00:24:00] Speaker 04:
And the test showed you take micrographic images that as you added that base that they're talking about, there was no penetration of the shell.

[00:24:08] Speaker 00:
Can I ask you?

[00:24:10] Speaker 00:
I'm missing something here, and I guess we're having an issue.

[00:24:13] Speaker 00:
If someone were accused of infringing using

[00:24:16] Speaker 00:
Now, you say not always, and it's only one of examples.

[00:24:19] Speaker 00:
There would be an infringement case, wouldn't there?

[00:24:22] Speaker 04:
No.

[00:24:22] Speaker 04:
If someone used potassium and sodium hydroxide, and it did not penetrate the shell and swell the core, was not capable of doing that, there would be no infringement case whatsoever.

[00:24:31] Speaker 00:
But if it did?

[00:24:32] Speaker 04:
If it could penetrate the shell and swell the core, and it met the other limitations, yes.

[00:24:36] Speaker 04:
But then you would have to do a test to determine that or look at the conditions, which is what our expert did.

[00:24:40] Speaker 04:
Our expert took TOTA and TUDA, reproduced them, and during the step when the base was added, the shell is too hard.

[00:24:47] Speaker 04:
And that's what the evidence shows.

[00:24:48] Speaker 04:
This is an issue of fact.

[00:24:49] Speaker 04:
The shell is too hard, and the base cannot penetrate the shell and swell the core.

[00:24:53] Speaker 04:
So it's an issue of fact.

[00:24:55] Speaker 04:
If, in fact, there's somebody who's practicing TOTA and DUTTA, there would be no infringement case.

[00:24:59] Speaker 00:
Well, the technical reactions are really unpredictable.

[00:25:01] Speaker 00:
And I guess it's just really hard for me to fathom how you're saying that if something is disclosed and covered by the patent,

[00:25:08] Speaker 00:
Sometimes it may work, and maybe one out of 50 times it doesn't work.

[00:25:12] Speaker 00:
So therefore, there's no infringement in one circumstance and not in the other.

[00:25:19] Speaker 04:
The conditions, as Colleen has stated, there are millions of different process conditions.

[00:25:24] Speaker 04:
So what you have to do is look to see, under the conditions you're using it, which is what the board was getting at, is it capable of penetrating the shell and swelling the core?

[00:25:31] Speaker 04:
And it's a simple test to do.

[00:25:32] Speaker 04:
Our expert, in fact, if you look at the TOTA patent at Column

[00:25:37] Speaker 04:
7, this is 827 pattern, A633.

[00:25:42] Speaker 04:
TOTA actually did a test to see when the hollows start to form.

[00:25:47] Speaker 04:
And it states here that they did electron microscopy.

[00:25:51] Speaker 04:
And it showed that the polymer particles start to form hollows, this is the bottom of column 7, top of column 8, during the acid treatment.

[00:25:59] Speaker 04:
So it's a simple, this is really an issue of science here.

[00:26:02] Speaker 00:
Can I direct your attention to column 1?

[00:26:05] Speaker 00:
Which deals with the 435, which deals explicitly with TOTA.

[00:26:10] Speaker 00:
I mean, there's a shout out to TOTA.

[00:26:12] Speaker 00:
Boyd laid out the articles as described.

[00:26:14] Speaker 00:
I'm in the middle of lines 40 to 52.

[00:26:17] Speaker 00:
They specifically, DA 27 patent that they're citing here is TOTA, right?

[00:26:23] Speaker 04:
That's right.

[00:26:24] Speaker 00:
And they talked about some of the processes, such as that described by 827, described the processes whereby in the later stages of polymerizing the shell, the monomer is added to facilitate diffusion of that base into the core of the polymer to achieve swelling.

[00:26:38] Speaker 00:
And it goes on and on and on.

[00:26:40] Speaker 04:
Right, it goes on and discusses the acid treatment step, Your Honor.

[00:26:42] Speaker 04:
Yeah.

[00:26:43] Speaker 04:
So what that specification is stating is, first of all, that was never relied on by the party below because

[00:26:50] Speaker 04:
It says during the latter stages of polymerization, as our experts showed in TOTA, there's polymerization going on.

[00:26:57] Speaker 04:
So the claim would be met.

[00:26:57] Speaker 04:
If you said this admission here somehow controls, well, then there's no anticipation here at all, because it says during the latter stages of polymerization.

[00:27:08] Speaker 04:
The base treatment.

[00:27:09] Speaker 02:
I just want to double check this, because this is what I came in thinking.

[00:27:12] Speaker 02:
I was struck by the fact.

[00:27:14] Speaker 02:
that I could not find any reliance by Organic on that passage before the board as an admission.

[00:27:21] Speaker 04:
And the reason, Your Honor, is because if you take... Is that right?

[00:27:23] Speaker 04:
That's exactly right.

[00:27:24] Speaker 04:
They didn't rely on it because it said during the latter stages of polymerization.

[00:27:27] Speaker 04:
So if you accept the characterization of the inventors here, it certainly is not met because it's being polymerized.

[00:27:34] Speaker 04:
But it also, Your Honor, it talks about this acid treatment.

[00:27:37] Speaker 04:
And the acid treatment in TOTA, the specification says what happens that

[00:27:41] Speaker 04:
They're in the base treatment.

[00:27:42] Speaker 04:
Nothing happens.

[00:27:42] Speaker 04:
They have microscopic images they're discussing.

[00:27:45] Speaker 04:
There's no holes.

[00:27:46] Speaker 04:
Then they add an acid, and the acid does something to it.

[00:27:48] Speaker 04:
But no one alleges the acid treatment is a swelling agent.

[00:27:52] Speaker 04:
They've never alleged that that somehow meets the claim at all.

[00:27:55] Speaker 04:
And when we ask their expert, Your Honor, this is an issue of fact.

[00:27:58] Speaker 04:
Here's what their expert said about TOTA and TUDA.

[00:28:01] Speaker 04:
Question.

[00:28:02] Speaker 04:
What are you reading, Frank?

[00:28:04] Speaker 04:
Oh, I'm sorry.

[00:28:07] Speaker 04:
From A257, excuse me, 2557-58.

[00:28:11] Speaker 04:
It says, line 22 carrying over to line 1.

[00:28:19] Speaker 04:
It says, OK, but you don't know whether the Nippon references, that's TOTA and TOTA, have swelling in the core or not.

[00:28:24] Speaker 04:
Answer, it's impossible to say based on the information in the patent.

[00:28:28] Speaker 04:
So in other words, when you read TOTA and TOTA, they talk about all these admissions, supposedly, or disclosures in TOTA.

[00:28:33] Speaker 04:
Once again, that list they showed you on page 21 of the brief, they didn't line that below either.

[00:28:38] Speaker 04:
That's all stuff they added in the reply brief.

[00:28:40] Speaker 04:
And the reason is because, unlike their interpretation as counsel, their own experts said that when I read Toda and Tuta, I don't know if there's any swelling of the core.

[00:28:50] Speaker 04:
Toda and Tuta are disclosing a process where the base is not able to penetrate the shell and swell the core.

[00:28:56] Speaker 04:
That's unrebutted.

[00:28:59] Speaker 04:
Our expert did a test, and he said, forget this whole idea about does the process work as a whole.

[00:29:03] Speaker 04:
He said, I isolated the step.

[00:29:06] Speaker 04:
when the base is added and it's not able to penetrate the shell and swallow the core.

[00:29:09] Speaker 04:
It's a simple chemical test, your honor.

[00:29:11] Speaker 04:
It's one where you just take electron images and you add the base and you take the photographs.

[00:29:16] Speaker 04:
Is anything getting in or not?

[00:29:17] Speaker 04:
It's not complicated.

[00:29:18] Speaker 04:
The expert never said, oh, that's not something you can do.

[00:29:21] Speaker 04:
It's very easy.

[00:29:22] Speaker 04:
We did it.

[00:29:23] Speaker 04:
TOTA and TUDA did it.

[00:29:25] Speaker 04:
They chose not to do it, even though they knew about this reference for over a year before they filed their reply report.

[00:29:31] Speaker 04:
So here's the situation where TOTA and TUDA, on this issue of fat,

[00:29:35] Speaker 04:
Does it disclose sodium hydroxide and potassium hydroxide that is able to penetrate the shell and swell the core under the conditions of the process where it's being used?

[00:29:45] Speaker 04:
And I can tell you there is not a single process.

[00:29:49] Speaker 02:
Can I ask you, what in your mind, if any, is the difference between saying it's capable of doing that and it doesn't?

[00:29:56] Speaker 04:
Well, Your Honor, capable of doing that means, as the board construed, in the process that is being used.

[00:30:02] Speaker 02:
This won't fix the process being used.

[00:30:05] Speaker 02:
The word is capable of doing it.

[00:30:07] Speaker 02:
It doesn't say that swells, that swells the core after permeating the shell in the process.

[00:30:14] Speaker 02:
It says it's capable of doing that.

[00:30:16] Speaker 02:
What, can you explain to me what, there must be something broader about the term capable of doing it.

[00:30:23] Speaker 02:
Can you explain to me what that something broader is?

[00:30:25] Speaker 04:
The word capable means that when you use it in that process, it's able to penetrate the shell and swell the core and then, I'm sorry.

[00:30:31] Speaker 02:
Able doesn't help me to go from capable to able.

[00:30:34] Speaker 04:
If the requirement was that it's capable of penetrating the shell and swelling the core in the process where it's used, which means if you put it in with the other ingredients there, it will penetrate the shell and swell the core and will start some swelling.

[00:30:47] Speaker 02:
Regardless of other supplemental process conditions?

[00:30:51] Speaker 04:
That's right, Your Honor.

[00:30:52] Speaker 04:
As long as there has to be a moment in time

[00:30:54] Speaker 04:
where those elements are met by that claim.

[00:30:56] Speaker 04:
It says there's a multi-stage emulsion polymer, there's monomer, and there's a swelling agent.

[00:31:01] Speaker 04:
And there has to be conditions of no substantial polymerization.

[00:31:04] Speaker 02:
And at that moment, you have to.

[00:31:06] Speaker 02:
I'm sorry.

[00:31:06] Speaker 02:
The time is running out.

[00:31:07] Speaker 02:
But do you happen to know whether in our case law, there's something illuminating about the term capable and what it tends to mean?

[00:31:21] Speaker 04:
Well, you know, I'm not sure.

[00:31:22] Speaker 04:
With the caseload you're referring to, I'm sorry.

[00:31:24] Speaker 02:
That's why I'm asking you.

[00:31:26] Speaker 02:
I'm not sure what it is either.

[00:31:28] Speaker 02:
It's striking.

[00:31:30] Speaker 02:
If I say, in some context at least, this is capable of doing this, that doesn't mean it's doing it.

[00:31:37] Speaker 02:
It means maybe if I do some other things on top of the specified conditions, it will do it.

[00:31:43] Speaker 02:
But capable is broader than it actually occurs.

[00:31:47] Speaker 02:
And I'm trying to understand what meaning is to be given to the term capable.

[00:31:51] Speaker 04:
Well, I think, Your Honor, in this case, it has to do with capable in the process that's being used in.

[00:31:56] Speaker 04:
Because when we asked their expert, they said, if you take sodium hydroxide and put it in a safe and sink it to the bottom of the ocean, is that a stolen agent?

[00:32:04] Speaker 04:
And he said, yes, it is.

[00:32:06] Speaker 04:
And the point is, in this art, capable is referring to the ability to do it in the context of the process where it's being used, which is why I was going to read the testimony from their head of R&D.

[00:32:16] Speaker 04:
He said that sodium hydroxide is a swollen agent only when it's capable of doing it in the specific process where it's being used.

[00:32:23] Speaker 02:
And this little back and forth we've been having about the meaning of capable, is that something that they made an issue of?

[00:32:31] Speaker 04:
No, their position was that sodium hydroxide and potassium hydroxide

[00:32:35] Speaker 04:
are swelling agents, whether or not they're capable of achieving any swelling, penetrating the shell under the conditions of use.

[00:32:43] Speaker 04:
And that was really the dispute here.

[00:32:44] Speaker 04:
In other words, they said that sodium hydroxide and potassium hydroxide, if I take Tota and Tuta, our experts show that the shell that it uses, which is not used by blankenship, when you put those in, if it's hard as a rock, it doesn't get through.

[00:32:56] Speaker 04:
Something happens later with the acid treatment.

[00:32:58] Speaker 04:
They would say that if you have a process like Tota and Tuta, and your base is not capable of penetrating the shell and swelling the core,

[00:33:05] Speaker 04:
it's still a swollen agent.

[00:33:07] Speaker 03:
So to be sure that I understand the chemistry, well, was it clear?

[00:33:11] Speaker 03:
We haven't discussed it, so I guess there's no dispute that the critical aspect is that the polymerization is stopped while there's still 50% monomer before the swelling agent is added.

[00:33:23] Speaker 03:
Right.

[00:33:24] Speaker 04:
There has to be a point in time where there's no substantial polymerization while that swollen agent is present with the other ingredients.

[00:33:29] Speaker 04:
That's right.

[00:33:30] Speaker 04:
That's right, Your Honor.

[00:33:31] Speaker 04:
So their reading, Your Honor, is simply that these bases

[00:33:35] Speaker 04:
If they're capable of doing it in some other process, but not in the process where it's being used, well then that meets the swelling agent.

[00:33:43] Speaker 04:
And the plenary meeting and what the spec shows and what the board determined was that no, it has to be capable of penetrating the shell and swelling the core in the process where it's being used.

[00:33:53] Speaker 04:
And on that, Your Honor, it's an issue of fact.

[00:33:56] Speaker 04:
And there is no evidence on the other side.

[00:33:59] Speaker 04:
Our expert did tests.

[00:34:01] Speaker 04:
that show that for that particular shell that was being used by Toda and Tuta, the base was not capable of doing that.

[00:34:06] Speaker 04:
And they did no rebuttal tests whatsoever on this.

[00:34:09] Speaker 00:
We have your argument.

[00:34:10] Speaker 00:
Thank you.

[00:34:10] Speaker 05:
Thank you, Your Honor.

[00:34:16] Speaker 05:
Just a few points, Your Honor.

[00:34:19] Speaker 05:
Judge Tarantuo, I think you put your finger on the last series of questions you asked.

[00:34:24] Speaker 05:
What they're trying to do is read out the word capable and they're trying to make this claim into a claim that actually requires a swelling step.

[00:34:32] Speaker 05:
That's not even the board's construction.

[00:34:33] Speaker 05:
The board's construction merely said that you have to add a swelling agent that is capable of swelling.

[00:34:38] Speaker 05:
Now we disagree with the board's additional requirement that it has to actually penetrate the shell

[00:34:43] Speaker 05:
and swell the core but let's accept that for purposes of our argument that the board's construction is correct.

[00:34:48] Speaker 05:
Being capable of doing something is not the same thing as doing it.

[00:34:51] Speaker 05:
If I hand you a screwdriver it is capable of driving a screw but maybe when you try to do it because the screw is rusty it won't work but it's still a screwdriver.

[00:34:58] Speaker 05:
This term

[00:35:00] Speaker 05:
is very much like the term in Greenberg, that it's hot mechanism, which this court said it would be improper to construe as a means plus function limitation.

[00:35:07] Speaker 01:
I'm going to just play with your screwdriver example.

[00:35:12] Speaker 02:
One of the earlier cases today, I think, although we didn't talk about it in the argument, discussed a screw with a safety head.

[00:35:21] Speaker 02:
try and give our head or something like that.

[00:35:24] Speaker 02:
If I gave you a screwdriver that didn't fit in that head, would that be capable of unscrewing that screw?

[00:35:33] Speaker 05:
Well, it would be a screwdriver.

[00:35:34] Speaker 05:
It may not be a screwdriver that's capable of driving that head.

[00:35:36] Speaker 02:
But if I'm interpreting it to mean capable of unscrewing the screw in that process, would that be a screwdriver?

[00:35:42] Speaker 05:
I think in the analogy you just gave, the answer is no, it wouldn't be capable.

[00:35:45] Speaker 05:
But in this case, these bases are capable.

[00:35:49] Speaker 05:
Again, we see the evidence.

[00:35:51] Speaker 05:
And the cases you're asking about, the Cadence case that we discussed in our briefs, as well as the Procter & Gamble case, which granted was a district court case.

[00:36:00] Speaker 05:
But they got that claim construction exactly right.

[00:36:02] Speaker 05:
It was a gelling agent.

[00:36:03] Speaker 05:
And the argument that was being made was that a gelling agent isn't a gelling agent until it gels.

[00:36:08] Speaker 05:
And the processes that were at issue there didn't actually get to the gelling stage, even though the thing that was added actually was a gelling agent.

[00:36:15] Speaker 05:
And the court correctly said in that case that a gelling agent is a gelling agent even if it doesn't gel in a particular circumstance.

[00:36:23] Speaker 05:
Here, the claims at issue don't require a swelling step.

[00:36:27] Speaker 05:
They don't require any particular temperatures.

[00:36:29] Speaker 05:
They don't require any particular anything.

[00:36:31] Speaker 05:
They require the addition of a agent that is capable of swelling.

[00:36:35] Speaker 05:
Even the blank and ship patents acknowledge that sometimes you have to add something extra to actually achieve the swelling.

[00:36:41] Speaker 03:
You say it has to be read that way?

[00:36:43] Speaker 05:
I'm sorry, Your Honor?

[00:36:44] Speaker 03:
The claim doesn't say capable.

[00:36:45] Speaker 03:
So is that a swelling agent?

[00:36:47] Speaker 05:
Yeah, well, it's been construed to mean capable.

[00:36:49] Speaker 05:
And I don't think there's any argument that it does have a functional element to it.

[00:36:53] Speaker 03:
Oh, exactly.

[00:36:53] Speaker 03:
That's why I'm trying to understand how what you're saying is dispositive.

[00:36:58] Speaker 05:
Well, first of all, they argue that we are trying to get around this word capable.

[00:37:05] Speaker 05:
We acknowledge that it's a functional term.

[00:37:07] Speaker 05:
It has to be capable of swelling.

[00:37:09] Speaker 05:
What we're saying is that it doesn't have to be capable of swelling in the specific prior art process that it's being used in.

[00:37:15] Speaker 05:
It just has to be capable of swelling in the context of swollen polymer particles.

[00:37:21] Speaker 05:
And here the evidence shows it is because both the Blankenship inventor said it's capable and the TOTA inventor said it's capable.

[00:37:28] Speaker 05:
And so when the moment it's added to the other two ingredients under conditions of no substantial polymerization, that limitation is met because it's capable.

[00:37:40] Speaker 00:
Thank you.

[00:37:40] Speaker 00:
We thank you.

[00:37:41] Speaker 00:
It decides the case is submitted.

[00:37:42] Speaker 00:
That concludes our proceedings for this morning.

[00:38:04] Speaker 01:
All rise.

[00:38:05] Speaker 01:
The honorable court is adjourned to tomorrow morning at 10 AM.