[00:00:00] Speaker 02:
May I invite Mr. Guarneri to come forward?

[00:00:09] Speaker 02:
Please approach the bench and Judge Prevenger has a motion.

[00:00:16] Speaker 03:
I move the admission of William Peter Guarneri.

[00:00:20] Speaker 03:
the bar of this court.

[00:00:22] Speaker 03:
He's a member of the bar and is in good standing in the highest courts of the Commonwealth of Virginia and the District of Columbia.

[00:00:31] Speaker 03:
I have knowledge of his credentials and I'm satisfied that he possesses the necessary qualifications.

[00:00:38] Speaker 03:
I can say that because I'm proud to say that Mr. Garnier has served as one of my law clerks for the last 12 months.

[00:00:45] Speaker 03:
He's served my chambers and this institution

[00:00:50] Speaker 03:
with great skill and great distinction.

[00:00:53] Speaker 03:
And it's been an honor to have him working for me.

[00:00:57] Speaker 03:
And I rest on my motion.

[00:00:59] Speaker 02:
Thank you, Judge Clevenger.

[00:01:01] Speaker 02:
The panel will vote.

[00:01:02] Speaker 02:
Do you vote to rat the motion?

[00:01:05] Speaker 04:
The recommendation from Judge Clevenger is very meaningful, and I support it.

[00:01:10] Speaker 02:
And I concur in the grant of the motion.

[00:01:14] Speaker 02:
So welcome to the bar of the court.

[00:01:16] Speaker 02:
Please approach the clerk, who will administer

[00:01:24] Speaker 00:
Do you solemnly swear or affirm that you will comport yourself as an attorney and counselor of this court, uprightly and according to law, and that you will support the Constitution of the United States of America?

[00:01:36] Speaker 02:
I do.

[00:01:38] Speaker 00:
Welcome to the bar of the United States Court of Appeals for the Federal Circuit.

[00:01:40] Speaker 00:
Thank you very much.

[00:01:41] Speaker 02:
Welcome to the bar, Mr. Gwendolyn.

[00:01:43] Speaker 02:
Thank you, Your Honor.

[00:01:47] Speaker 02:
OK, to proceed with the agenda, Mr. Peterson.

[00:01:51] Speaker 02:
The first argued case is number 16, 1407, West Alpine Stowell, GMBH, against Jarrett Seller or Mittal, Mr. Peterson.

[00:02:04] Speaker 05:
Good morning, Your Honor.

[00:02:04] Speaker 05:
My name is Max Peterson.

[00:02:06] Speaker 05:
I represent the appellant, West Alpine Stowell, GMBH.

[00:02:10] Speaker 05:
Your Honor, the board found claims 3, 4, 13, 30, and 41 to be patentable over Laurent

[00:02:18] Speaker 05:
in view of Metal's handbook, Kawasaki, and Blumel.

[00:02:22] Speaker 05:
Based on the opinion, the board did not adequately consider the content of this prior art.

[00:02:27] Speaker 05:
Instead, the board relied far too heavily on other prior art, especially Mieler, and imputed those findings to Laurent.

[00:02:36] Speaker 05:
Laurent is very different from Mieler.

[00:02:40] Speaker 05:
The claims on appeal, among other things, require hot forming of a steel part that is coated with zinc or a zinc alloy.

[00:02:48] Speaker 05:
The coating then forms an alloy compound when the steel sheet is heated.

[00:02:52] Speaker 05:
And the alloy compound is actually an intermetallic compound between the coating and the steel sheet.

[00:02:59] Speaker 05:
So when we're talking about a zinc or a zinc alloy coating in an alloy compound, the latter refers to the reactive product with the steel sheet.

[00:03:08] Speaker 05:
Now, this alloy compound is what prevents melting of the coating and enables the hot forming to occur.

[00:03:14] Speaker 05:
The main difference between Laurent and the claims on appeal

[00:03:18] Speaker 05:
is that Laurent hot forms a steel sheet that's been coated with an aluminum alloy containing two to four percent iron, in one example, instead of zinc or a zinc alloy.

[00:03:29] Speaker 05:
And the alloy compound thus formed in Laurent is based on aluminum and iron instead of zinc and iron.

[00:03:36] Speaker 05:
Now the opinion of the board sets forth at least four key factual findings for Miller that cannot possibly be imputed to Laurent, and these are all on page nine of the decision.

[00:03:47] Speaker 05:
First, the board criticized Miele for teaching away from hot forming.

[00:03:52] Speaker 05:
Laurent describes the hot forming process.

[00:03:55] Speaker 05:
Second, the board criticized Miele for teaching that zinc-based metal coating remains partially molten at hot forming temperature in Miele.

[00:04:06] Speaker 05:
And then Miele went up to about 800 degrees centigrade, even though it wasn't a hot forming reference.

[00:04:11] Speaker 05:
It did describe that temperature.

[00:04:13] Speaker 05:
And it said that the zinc remains partially molten

[00:04:16] Speaker 05:
And the board found that this partially molten state would have taught against hot forming and would have discouraged hot forming.

[00:04:23] Speaker 05:
Yet, Laurent successfully hot forms a metal coated part at temperatures of 750 to 1200 degrees centigrade.

[00:04:32] Speaker 02:
Using aluminum.

[00:04:34] Speaker 05:
Using aluminum, which has a melting point of 660 degrees centigrade.

[00:04:38] Speaker 02:
So what is your argument as to why it would have been obvious in view of all of the citations to

[00:04:47] Speaker 02:
Should we say to use zinc instead of aluminum at that stage?

[00:04:51] Speaker 05:
Well, on this particular point, my argument is that in the example of Laurent, it hot forms aluminum at 900 degrees centigrade successfully, which is 240 degrees above the melting point of aluminum.

[00:05:03] Speaker 05:
So this molten state of a metal, the fact that a metal is expected to remain molten at that temperature does not weigh against hot forming, because in the hot forming, you quickly form an alloyed compound which has a higher melting point

[00:05:16] Speaker 05:
and increase hardness and better properties.

[00:05:18] Speaker 05:
And that's what Lauren teaches.

[00:05:19] Speaker 02:
So that's aluminum.

[00:05:21] Speaker 02:
So why, in your view, in view of the citations, in view of the record, in view of the known melting point of zinc, would it have been obvious to make the change?

[00:05:32] Speaker 05:
Well, one of the alloys, and in particular the alloy in Kawasaki, which is the zinc, which has 8% to 10% iron, has a melting curve.

[00:05:40] Speaker 05:
And if we can show it on the TV screen or otherwise,

[00:05:46] Speaker 05:
A350 and A351.

[00:05:48] Speaker 05:
I believe I did submit a slide for... There we go.

[00:05:52] Speaker 05:
Okay.

[00:05:53] Speaker 05:
Now, if you look at the left-hand curve, that is a melting curve for a zinc-iron alloy.

[00:06:00] Speaker 05:
And in the Kawasaki reference, and the claims are all broad enough to cover this, the coating doesn't have to be zinc.

[00:06:07] Speaker 05:
It can be a zinc-iron alloy.

[00:06:09] Speaker 05:
And in Kawasaki, that alloy contains 8% to 10% iron.

[00:06:13] Speaker 05:
Now, the melting point is shown on the left-hand curve.

[00:06:18] Speaker 05:
There's a horizontal line which represents the melting point of that zinc-iron alloy, which is about 1,055 degrees Kelvin, which is 782 degrees Centigrade.

[00:06:27] Speaker 03:
Is that the illustration in the appendix?

[00:06:30] Speaker 05:
It's A350 and A351, and I had submitted the exhibit showing them side by side.

[00:06:38] Speaker 05:
And also, the side-by-side is shown, I believe, in our reply brief.

[00:06:42] Speaker 03:
Numbers from my eyesight, the numbers are easier to read.

[00:06:46] Speaker 03:
And that's what I asked.

[00:06:48] Speaker 03:
Thank you.

[00:06:49] Speaker 05:
OK.

[00:06:49] Speaker 05:
But I wanted to show them side-by-side.

[00:06:51] Speaker 05:
So as you can see, this 8% to 10% alloy has a melting curve where you start to form liquid at 1,055 degrees Kelvin, which is 782 centigrade.

[00:07:02] Speaker 05:
And that exact temperature has been verified by the

[00:07:05] Speaker 05:
ArcelorMittal's expert professor Diardo, and I believe it's at A393, you have a melting point which rises monotonically to 782 degrees centigrade, and it stays at 782 degrees centigrade.

[00:07:19] Speaker 05:
If you compare that to the aluminum on the right, the horizontal line is at a lower temperature, which is 933 degrees Kelvin, or 660 degrees centigrade.

[00:07:31] Speaker 05:
So if you're relying on pure zinc, I can understand the argument, but these claims are broad enough to cover a zinc-iron alloy.

[00:07:37] Speaker 05:
And the zinc-iron alloy, which is described in Kawasaki and which is covered by the claims, actually has a melting point which is 120 degrees centigrade higher than the melting point of the aluminum described in Laurent.

[00:07:49] Speaker 05:
And that to me is enough to put it on the map as being a logical interchangeability for purposes of hot forming.

[00:07:56] Speaker 05:
Lawrence describes zinc-based coatings in the background.

[00:07:58] Speaker 05:
It says they are known.

[00:07:59] Speaker 05:
It doesn't help for him using zinc.

[00:08:02] Speaker 05:
Kawasaki goes in and teaches the zinc iron alloy is being interchangeable with aluminum and some other things for purposes of providing increased corrosion resistance.

[00:08:14] Speaker 05:
So it's known as a plating alloy.

[00:08:16] Speaker 05:
This zinc iron alloy is known for plating.

[00:08:19] Speaker 05:
It's known just as well as aluminum.

[00:08:21] Speaker 05:
The temperatures in Kawasaki are around the range of 750 to 1,000 degrees centigrade, although it is a hot plating process.

[00:08:28] Speaker 05:
It's not a hot forming process.

[00:08:30] Speaker 05:
And there's no mention of any runoff or evaporation or anything else that they don't seem to have that problem.

[00:08:35] Speaker 05:
So clearly, there's been a lot of argument on the melting point of zinc being 420 degrees centigrade, and I can understand that.

[00:08:44] Speaker 05:
But the claims go up to

[00:08:45] Speaker 05:
an alloy which has a melting point of 782 degrees, which is actually much, much hotter than the melting point of aluminum.

[00:08:52] Speaker 05:
And if you can hot form aluminum under those conditions in Laurent, then why not a zinc iron alloy that has even more favorable melting properties?

[00:09:00] Speaker 05:
You would be 240 degrees centigrade above the melting point of aluminum at a 900 degree hot forming temperature.

[00:09:06] Speaker 05:
You're only 120 degrees centigrade above the melting point of this alloy.

[00:09:10] Speaker 05:
The melting curve is actually more favorable.

[00:09:15] Speaker 05:
And this was really one of the main differences.

[00:09:17] Speaker 05:
So this argument that you're within the melting range, although there is a more favorable melting curve, the fact remains that the hot forming temperatures in Laurent are high enough to put both Laurent and the zinc iron alloy in the liquid state.

[00:09:33] Speaker 05:
So either one is going to be molten.

[00:09:34] Speaker 05:
And a fair reading of Laurent is that you can hot form, notwithstanding the fact that you're above the melting temperature.

[00:09:41] Speaker 05:
The reason is because you rapidly form this alloy with

[00:09:45] Speaker 05:
with the iron and the steel, and as the alloy forms, the melting properties get better and better, and the material gets harder and harder.

[00:09:53] Speaker 05:
That's actually shown in both of these curves.

[00:09:55] Speaker 05:
You can see, if you look on the right, as you go higher in iron content for aluminum, the melting temperatures go up, and you see the solid line, which is the start of melting, and then the upper line is where you reach all liquid.

[00:10:08] Speaker 05:
In between there, there's a mixture of solid and liquid.

[00:10:10] Speaker 05:
The same thing on the left for zinc and iron.

[00:10:12] Speaker 05:
You have that horizontal line, which is your melting curve for the alloy, where you start to melt.

[00:10:17] Speaker 05:
And then when you get above that higher line, you're at all liquid.

[00:10:22] Speaker 05:
Those temperatures go way up as you get more and more iron in the alloy.

[00:10:27] Speaker 05:
And this is what happens very quickly during hot forming.

[00:10:30] Speaker 05:
So even though they are both liquid at that temperature, this alloy is

[00:10:36] Speaker 05:
described in Lorentz is forming quickly enough to where the melting just isn't a problem and you're getting this alloy and you're able to hot form anyway.

[00:10:43] Speaker 05:
Now, another key finding that the board criticized Mieler for teaching that the high temperature of 815 degrees centigrade can only be maintained for a few seconds.

[00:10:55] Speaker 05:
Lorentz maintains and they said that that teaches away from hot forming because hot forming requires heating on the order of minutes.

[00:11:01] Speaker 05:
Lorentz in the example describes

[00:11:04] Speaker 05:
900-degree temperature being maintained for five minutes.

[00:11:08] Speaker 05:
So Laurent overcomes that deficiency in Miele as well.

[00:11:11] Speaker 05:
Finally, the board found that unreliable expert evidence was used to combine Miele with the secondary references.

[00:11:19] Speaker 05:
Our basis for combining Laurent with secondary references came strictly from the references and not from experts.

[00:11:24] Speaker 05:
We didn't rely on experts at all.

[00:11:28] Speaker 05:
Laurent teaches both zinc and aluminum coatings in the background.

[00:11:33] Speaker 05:
Kawasaki states in paragraph 14 that aluminum coatings are interchangeable with zinc-iron alloy coatings for corrosion resistance, and that was our primary basis for combining.

[00:11:50] Speaker 05:
So I think a fair reading is that the zinc alloy is forming so fast, as well as the aluminum alloy.

[00:11:57] Speaker 05:
I described earlier that the alloy forms so fast that the melting point is hardly irrelevant.

[00:12:02] Speaker 05:
But in summarizing what I just said, even if the melting point were irrelevant, the zinc iron alloy described in Kawasaki has a more favorable melting point for hot forming than the aluminum coating in Laurent.

[00:12:13] Speaker 05:
So why wouldn't that substitution be pertinent?

[00:12:20] Speaker 05:
Now, patent owner's expert Professor Diardo, as well as the 604 specification,

[00:12:27] Speaker 05:
indicate that discovery of the zinc iron alloy compound was a quote unquote core inventive feature that enables hot forming by preventing melting and flow of the coating during hot forming.

[00:12:37] Speaker 05:
And the term core inventive feature was Diardo's own language at A406.

[00:12:43] Speaker 05:
We previously relied on the Blumel reference, A770, as teaching that zinc iron alloy compounds were known to form by heat treating the zinc coated sheet.

[00:12:53] Speaker 05:
Patent owner has now admitted, and it looks like it's contrary to their own expert,

[00:12:57] Speaker 05:
that the zinc-based coatings were known to form alloy compounds with a steel surface when heated.

[00:13:02] Speaker 05:
And this is in the Pat Nono's brief at pages 10 and 13 to 14.

[00:13:06] Speaker 05:
So our position on this rejection is that where both metals were known to form alloy compounds and where both metals were disclosed in Laurent, it would have been obvious to substitute zinc or the higher melting zinc iron alloy for the aluminum-based coating in Laurent's hot pouring process.

[00:13:22] Speaker 05:
Claim 42 was treated separately from the other claims.

[00:13:25] Speaker 05:
Claim 42 depends from claim 1.

[00:13:27] Speaker 05:
and recites a property.

[00:13:29] Speaker 05:
It recites that the alloy compound provides cathodic galvanic protection.

[00:13:34] Speaker 05:
There's no dispute, however, that even conventional zinc-based coatings that were not alloyed were known to provide cathodic galvanic protection.

[00:13:41] Speaker 05:
And this is recognized in the decision at page 1011.

[00:13:44] Speaker 05:
It was also at A2021, A234, A316, and in various places.

[00:13:50] Speaker 05:
There's no dispute that zinc provides cathodic galvanic protection.

[00:13:54] Speaker 05:
Now, the board's opinion addressed the cathodic galvanic protection of aluminum coatings on Laurent, but did not address the zinc-based coatings described in the background of Laurent, as we had advocated at the hearing at A301.

[00:14:06] Speaker 05:
Person of ordinary skill in the art, armed with the teachings of Laurent, would have known to substitute a zinc-based coating for aluminum and hot forming if his or her objective were to provide increased cathodic galvanic protection.

[00:14:18] Speaker 05:
So in summary, the board's findings of patentability were not supported by substantial evidence.

[00:14:22] Speaker 05:
The board did not adequately consider the law and prior art combinations, and instead relied too heavily on other prior art.

[00:14:29] Speaker 05:
Thank you.

[00:14:30] Speaker 02:
Thank you, Mr. Peterson.

[00:14:38] Speaker 02:
Mr. Cushing?

[00:14:39] Speaker 01:
Yes.

[00:14:40] Speaker 01:
May it please the court, Your Honors.

[00:14:41] Speaker 01:
I'm David Cushing.

[00:14:42] Speaker 01:
I'm here to speak on behalf of Arcelor Matal, the appellee and patent owner.

[00:14:46] Speaker 01:
And I'll try to speak up.

[00:14:48] Speaker 01:
I'm not naturally good at that.

[00:14:51] Speaker 01:
Your Honor, this case is really about common sense.

[00:14:57] Speaker 01:
The claims are all directed, as my colleague here described, to... It's not really common sense, is it?

[00:15:03] Speaker 02:
The real question is whether the substitution of zinc for aluminum in the process that's used was obvious.

[00:15:14] Speaker 01:
Yes, that's correct, Your Honor.

[00:15:16] Speaker 01:
Are you saying common sense says it's not?

[00:15:19] Speaker 01:
Your Honor, there is liquid when you heat

[00:15:21] Speaker 01:
There are several points, but the first one is when you heat a zinc or zinc-based alloy coating to temperatures of hot forming, there will be liquid zinc in the coating at the time you stamp it.

[00:15:34] Speaker 01:
And if you simply look at figure one of the patent here at appendix page A32 and look at that stamp and they have the coating demarcated,

[00:15:47] Speaker 01:
Imagine what's going to happen when you press that under high pressure on a stamp and you've got liquid in the coating.

[00:15:52] Speaker 01:
Intuitively, it seems like a problem.

[00:15:55] Speaker 03:
Second problem is that, and there's... You say that's true whether the coating is pure zinc or whether it's a zinc alloy?

[00:16:05] Speaker 01:
There is liquid zinc in the coating.

[00:16:07] Speaker 01:
And we have a, if you look in the appendix at page A478,

[00:16:13] Speaker 01:
It's actually an excerpt from an article by Appellant's own technical staff that has a diagram of the course of heating through hot forming and showing the content of these materials and they describe this as a zinc-based coating and it starts out with some molten zinc at 420 degrees and then it starts to alloy but at the time you finish heating this when you are at

[00:16:41] Speaker 01:
In this case, it's 780 and then 850 degrees C. There has been a lot of intermetallic alloy formed, but there is a lot of liquid zinc still in the coating at the time this goes to the press.

[00:16:53] Speaker 01:
So there is liquid zinc in the coating, and that's only the first half of it.

[00:16:58] Speaker 01:
The other issue is that if you look at page A167, which unfortunately is a black and white

[00:17:10] Speaker 01:
But it is reproduced, I believe, in our appellate brief at page 33.

[00:17:18] Speaker 01:
There is a diagram of vaporization temperatures.

[00:17:23] Speaker 01:
And all of the comments in the prior art where the artisans were saying that zinc is a problem with hot forming.

[00:17:31] Speaker 01:
It won't work with hot forming.

[00:17:32] Speaker 01:
The things they mentioned where it's going to melt and flow, also it's going to vaporize.

[00:17:37] Speaker 01:
The vaporization temperature of zinc

[00:17:40] Speaker 01:
is 908 degrees.

[00:17:42] Speaker 01:
The vaporization temperature of aluminum is 2470.

[00:17:45] Speaker 01:
At the 900 to 950 degree temperatures of hot forming, we're still more than 1500 degrees below the vaporization temperature of aluminum.

[00:17:57] Speaker 01:
But if you have liquid zinc in the coating, and we know there is liquid zinc, and their own people have said that, even if it's an alloy-based coating.

[00:18:04] Speaker 02:
Well, the issue isn't the vaporization temperature, it's the melting temperature.

[00:18:08] Speaker 01:
Well, Your Honor, it's both.

[00:18:09] Speaker 01:
If you have liquid zinc, and if you have a liquid and you raise it above its vaporization temperature, it's going to vaporize.

[00:18:17] Speaker 02:
You're talking about melting, not vaporizing.

[00:18:20] Speaker 01:
Well, it's already melted, Your Honor, at the 950-degree hot stamping temperature.

[00:18:25] Speaker 01:
And the question is, what next?

[00:18:27] Speaker 01:
The artisans thought that a big concern was that if you raised the temperature of your hot forming

[00:18:34] Speaker 01:
If you raise the temperature of this alloy to something that is at or above the vaporization temperature, it's going to melt.

[00:18:40] Speaker 01:
It's going to disappear.

[00:18:42] Speaker 01:
It'll distill out.

[00:18:43] Speaker 01:
It will be gone.

[00:18:45] Speaker 01:
And then you don't have your zinc-based cathodic protection anymore.

[00:18:49] Speaker 02:
This is a curious argument.

[00:18:51] Speaker 02:
It can certainly melt without vaporizing.

[00:18:54] Speaker 01:
That's correct, Your Honor.

[00:18:55] Speaker 01:
But the artisans were concerned that it would vaporize.

[00:18:59] Speaker 01:
After it melted, it would then vaporize.

[00:19:03] Speaker 02:
In order to prevail, do you need to show that the vaporization temperatures between zinc and aluminum are so disparate?

[00:19:14] Speaker 01:
We don't believe we have to show that, Your Honor, but we do think that it's a factor in why somebody of skill and art was concerned.

[00:19:20] Speaker 03:
It's mentioned in the... Couldn't you make your case based on melting aluminum?

[00:19:28] Speaker 01:
Yes, we could, Your Honor, because people thought

[00:19:31] Speaker 02:
This is not what the board did?

[00:19:35] Speaker 01:
No, it's not, Your Honor.

[00:19:36] Speaker 01:
The board mentioned the same things that the comments in the art mentioned about melting.

[00:19:46] Speaker 01:
And they said that vaporization was a concern.

[00:19:49] Speaker 01:
And vaporization is what people, in our brief at pages 22 and 26 to 31, there's a whole

[00:19:58] Speaker 01:
laundry list of comments by experts, our own expert, the requester's experts, the requester's own technical staff that said the melting and vaporization were going to be a problem.

[00:20:11] Speaker 01:
It's going to run off and follow the tools, but also they mentioned vaporization because it's like taking water above the boiling point of water.

[00:20:19] Speaker 01:
It turns into steam and it's gone.

[00:20:22] Speaker 01:
So the point, Your Honor, is that the

[00:20:26] Speaker 01:
Aluminum and zinc are very different materials.

[00:20:30] Speaker 01:
And the fact that you succeed with aluminum doesn't mean that you would succeed with zinc.

[00:20:36] Speaker 01:
The phase diagrams here have been around for 100 years.

[00:20:41] Speaker 01:
And people in the art, despite those, we can assume that most people would know about phase diagrams, they were all concerned that things were going to melt.

[00:20:51] Speaker 01:
They were concerned that things were going to vaporize.

[00:20:53] Speaker 01:
They were concerned that it just wasn't going to work.

[00:20:55] Speaker 01:
And what's happened here is we're going back with another lens trying to find a scientific explanation for why it works.

[00:21:06] Speaker 01:
And that's kind of saying, well, here's what the artisans should have thought.

[00:21:10] Speaker 01:
But the fact is and the evidence shows that what the artisans did think is that this isn't going to work.

[00:21:15] Speaker 01:
The Patent Office considered all of this evidence and gave a very thorough opinion.

[00:21:22] Speaker 01:
And the question is whether there's substantial evidence to support those facts that they found.

[00:21:26] Speaker 01:
And we believe that the evidence is not just substantial, but it's compelling.

[00:21:32] Speaker 01:
What we have here is not a reasonable expectation of success, but a very firm belief that the expectation that it wasn't going to work, a failure.

[00:21:42] Speaker 04:
But it did work, didn't it?

[00:21:44] Speaker 01:
It did work, Your Honor.

[00:21:45] Speaker 01:
That's correct.

[00:21:47] Speaker 04:
And why didn't it work?

[00:21:49] Speaker 01:
It worked because the alloy, not because the alloy formed.

[00:21:56] Speaker 01:
Actually, Your Honor, there's a difference of opinion, even now.

[00:22:00] Speaker 01:
We have in the, this was an exhibit we used, a demonstrative at the oral hearing at the Patent Office.

[00:22:07] Speaker 01:
I've already given him a copy.

[00:22:08] Speaker 01:
I can't use, it's not a, we didn't clear it for demonstrative here, but just during the reexamination proceeding, 15 years after the fact, when we have three requesters trying to explain

[00:22:20] Speaker 01:
why this is obvious.

[00:22:21] Speaker 01:
We have three different explanations for why it works.

[00:22:24] Speaker 01:
One of them says that the alloying with iron occurs.

[00:22:27] Speaker 01:
And that's what keeps the runoff, the liquid from running off.

[00:22:30] Speaker 01:
Another says that it's zinc oxide that makes this work.

[00:22:35] Speaker 01:
And another one says that it's aluminum oxide.

[00:22:37] Speaker 01:
And the zinc oxide, if you have too much of that, that's bad.

[00:22:40] Speaker 01:
And these were experts.

[00:22:45] Speaker 01:
These were counsel.

[00:22:47] Speaker 01:
I mean, 15 years later,

[00:22:51] Speaker 01:
There's still no coherent explanation as to exactly why this works.

[00:22:54] Speaker 04:
But it did work.

[00:22:55] Speaker 04:
I assume it's your view that even though it was expected that it wouldn't work, the fact that it did work doesn't negate the reasonable belief that it wouldn't have worked.

[00:23:09] Speaker 01:
That's correct, Your Honor.

[00:23:11] Speaker 01:
There was widespread belief that it would not.

[00:23:13] Speaker 01:
The fact that it did was unexpected.

[00:23:15] Speaker 01:
Even Laurent that's relied on here as the primary reference, and my colleague here

[00:23:21] Speaker 01:
points out that Laurent does mention zinc in the background, but mentions zinc and aluminum in the background as coating materials and then spends the entire specification on all of the claims describing and claiming aluminum, and only aluminum.

[00:23:36] Speaker 01:
We think it's pretty clear that the reason he did that is he didn't think zinc would work.

[00:23:40] Speaker 01:
There was no effort, there doesn't appear to be any effort or any thought given in the specification to this, this has more broad application.

[00:23:48] Speaker 01:
Aluminum worked because it had different properties.

[00:23:50] Speaker 01:
They had found that it worked.

[00:23:52] Speaker 01:
But zinc, at the very best, what may be happening here is if aluminum worked, you can say, well, one of them worked, maybe I'll try another.

[00:24:01] Speaker 01:
But that's not the standard for obviousness.

[00:24:04] Speaker 01:
Obviousness has to be a reasonable experiment.

[00:24:06] Speaker 04:
And the fact that there's no obvious reason now why it did work supports the unobviousness to begin with.

[00:24:17] Speaker 01:
There are scientific explanations in the case of every invention as to why something worked.

[00:24:23] Speaker 01:
If it didn't work, we wouldn't be here.

[00:24:26] Speaker 01:
Everything works and presumably everything has a scientific explanation.

[00:24:30] Speaker 01:
It may be a lot easier to find those scientific explanations years after the fact than it was at the time.

[00:24:38] Speaker 01:
At the time, there wasn't a

[00:24:41] Speaker 01:
an issue about the alloy being formed.

[00:24:43] Speaker 01:
People knew what intermetallic alloys were.

[00:24:44] Speaker 01:
The whole purpose of Mailer is to make a steel sheet with this intermetallic alloy formed on it.

[00:24:53] Speaker 01:
But Mailer, at temperatures that are below the temperatures that we have in hot forming, his coating is liquid.

[00:25:01] Speaker 01:
And he goes to a great deal of trouble to make sure that nothing touches that until he has passed it through a cooling zone

[00:25:10] Speaker 01:
And then only then does he pass it over a roller where it touches something.

[00:25:13] Speaker 01:
We're going to take the material that's hundreds of degrees higher than what Mailer is talking about, and we're going to put it in a stamp and crush it.

[00:25:22] Speaker 01:
Most people didn't think that would work.

[00:25:25] Speaker 01:
The ordinary person in the art didn't think that would work.

[00:25:30] Speaker 01:
And the existence, the issue below has always been

[00:25:38] Speaker 01:
Whether somebody of ordinary skill in the yard would have had a reasonable expectation of success and hot stamping a zinc or zinc alloy coated steel The issue below has never been claimed 13 Which calls for the coding to be zinc that was the patentee just wishing on the start

[00:25:59] Speaker 01:
I'm sorry, Your Honor.

[00:26:00] Speaker 03:
The patentee is just wishing on a star.

[00:26:02] Speaker 03:
He has no idea.

[00:26:03] Speaker 03:
He doesn't think it's going to work.

[00:26:06] Speaker 03:
Everybody in the science says it isn't going to work.

[00:26:10] Speaker 03:
So instead of like just throwing a dart up in the air, then you've got a patent.

[00:26:15] Speaker 03:
Just guess.

[00:26:16] Speaker 03:
It's guesswork.

[00:26:18] Speaker 01:
Sometimes inventions can be guesswork.

[00:26:23] Speaker 01:
I wasn't there when this actually happened.

[00:26:26] Speaker 01:
So I don't know how this particular decision was made

[00:26:29] Speaker 01:
to try zinc.

[00:26:31] Speaker 01:
But anybody who said anything about this prior to April 6th of 2001, when this was... Is it enabled?

[00:26:39] Speaker 03:
Has there been any question about enablement?

[00:26:42] Speaker 01:
There has been no issue raised with respect to enablement.

[00:26:46] Speaker 01:
And there were some questions below.

[00:26:50] Speaker 01:
There were some enablement rejections proposed.

[00:26:54] Speaker 01:
They were not adopted or they were reversed.

[00:26:56] Speaker 01:
But there was no issue here.

[00:26:58] Speaker 01:
about enablement.

[00:26:59] Speaker 01:
There is a very careful explanation and the specification of how to do it.

[00:27:04] Speaker 01:
There are a couple of different examples, and it works.

[00:27:09] Speaker 01:
So we have something that people didn't think would work.

[00:27:15] Speaker 01:
We have quotes even after the fact that 10 years after the fact, people are saying,

[00:27:29] Speaker 01:
that it was thought that the runoff would be a problem and the vaporization would be a problem.

[00:27:36] Speaker 01:
Even on their own website today, the appellant has a description about hot forming of zinc and says that it was originally thought to be impossible.

[00:27:48] Speaker 01:
It may not be impossible now when we look and see that it works, but back then, there's no prior art that they have shown.

[00:27:58] Speaker 01:
that preceded April of 2001 that showed that anybody understood that this was going to work.

[00:28:06] Speaker 03:
Is there a special process that now is known to make it so it does work?

[00:28:11] Speaker 03:
I mean, maybe they heat the stuff up more slowly and try not to bring zinc to the danger area.

[00:28:20] Speaker 01:
I'm sure there are ways that they tweak it to make it better.

[00:28:23] Speaker 01:
But what appears to be happening is that we know that the alloy forms.

[00:28:29] Speaker 01:
The diagrams here are equilibrium diagrams that will show you what these things look like at a certain temperature if they're sitting.

[00:28:35] Speaker 01:
What it doesn't tell you is how this material is going to behave physically when you do something to it, when you stamp it.

[00:28:42] Speaker 01:
It doesn't show whether there are oxide layers that form.

[00:28:46] Speaker 01:
It doesn't show what shear strengths there are.

[00:28:49] Speaker 01:
So you can look at this and say, well, somebody should have looked at that and said, geez, the melting temperature is up here.

[00:28:56] Speaker 01:
There's going to be an alloy there.

[00:28:57] Speaker 01:
That's not going to be that much of a problem.

[00:28:59] Speaker 01:
But the fact is that they didn't know there was going to be liquid sink.

[00:29:04] Speaker 01:
Even their own technical staff in the paper that I just pointed to says there's going to be liquid sink.

[00:29:12] Speaker 01:
There are a couple of other publications by their technical staff.

[00:29:14] Speaker 01:
And they're cited in our brief.

[00:29:18] Speaker 01:
This is going to be a problem.

[00:29:20] Speaker 01:
Everybody thought that it was going to be a problem because just common sense, you're going to hot stamp something that has liquid in it.

[00:29:28] Speaker 01:
and you're going to be above not just the melting temperature, but above the vaporization temperature.

[00:29:33] Speaker 01:
If any of that leaks out, it's going to be gone.

[00:29:38] Speaker 01:
It's going to turn to vapor and disappear.

[00:29:40] Speaker 01:
So it's a very fragile state.

[00:29:43] Speaker 01:
All that's happening now is we're getting an explanation for why it works, but no evidence that outweighs what was of record at the Patent Office as to

[00:29:58] Speaker 01:
that shows that somebody actually understood that it would work or had a reasonable expectation of success.

[00:30:05] Speaker 01:
At best and obvious to try, but only at best.

[00:30:09] Speaker 02:
Any more questions for Mr. Cushing?

[00:30:13] Speaker 02:
Thank you, Mr. Cushing.

[00:30:28] Speaker 02:
Mr. Peterson.

[00:30:33] Speaker 05:
Your Honor, the explanation as to why the zinc can hot form was presented several times during this case.

[00:30:42] Speaker 05:
I'm referring to A406, which is a quote by Professor Diarda, which is Arshad's expert, where he says, perhaps most importantly, when describing the core inventive feature of the patent, the specification states, and this quote's from the specification,

[00:30:57] Speaker 05:
contrary to preconceived ideas, during heat treatment or temperature rise for hot forming, the coating forms a layer alloying with the steel of the strip and presents then a mechanical resistance such that it prevents the coating material from melting.

[00:31:11] Speaker 05:
Now that coating which he's referring to, which is allegedly surprisingly and unexpected, is the alloy compound which is referred to in the claims.

[00:31:19] Speaker 05:
This is the alloy compound which we have discussed.

[00:31:22] Speaker 05:
Now then we got to the

[00:31:27] Speaker 05:
And we have now on page 10 and again on page 13 and 14 a quote where Patton owner has readily acknowledged that it was known to use a zinc-based alloy coating to form an alloy compound with a steel surface.

[00:31:42] Speaker 05:
Now that totally goes against their expert, but the alloy compound, we agree that it was known.

[00:31:48] Speaker 05:
It was known to form this and it was known from Blumel.

[00:31:51] Speaker 05:
And we have pointed this out on our briefs that the Blumel reference describes

[00:31:54] Speaker 05:
heating a zinc coated steel sheet to form an alloy compound.

[00:31:59] Speaker 05:
So once you take away the core invented feature, you're really just down to where, while it was known from Laurent to form an aluminum based alloy compound, it was also known to form a zinc based alloy compound, whether you want to go by the admission or whether you want to go by bloomel.

[00:32:14] Speaker 05:
And then Laurent discloses zinc, so why not just substitute one for the other, especially when you know that the

[00:32:19] Speaker 05:
The zinc iron alloys that can be used as platings already have more favorable melting points, more favorable melting curves than aluminum.

[00:32:26] Speaker 02:
But aren't the claims that were allowed all limited to the process?

[00:32:33] Speaker 05:
They are limited to a process.

[00:32:35] Speaker 02:
Applying the hot forming after the zinc coating was on the seal?

[00:32:39] Speaker 05:
Yes.

[00:32:41] Speaker 05:
Yes, they are limited to using a zinc or a zinc alloy.

[00:32:47] Speaker 05:
require the formation of an alloy compound from what can be either a zinc or a zinc alloy coating.

[00:32:54] Speaker 05:
Now, the patent owner has referred to the patent itself in figure one as to why this would work.

[00:33:06] Speaker 05:
And then he said that while it was previously believed that maybe during hot forming, you'd have all these problems.

[00:33:10] Speaker 05:
But now, figure one shows the preheating in an oven of the zinc coating at 800 to 1,200 degrees centigrade for 2 to 10 hours.

[00:33:17] Speaker 05:
Any alloy compound which is going to form is going to form before you get into that stamp in those 2 to 10 hours.

[00:33:22] Speaker 05:
That is a very long time.

[00:33:24] Speaker 05:
So our position is that there's really nothing here.

[00:33:28] Speaker 05:
You form the alloy compound by the heating.

[00:33:30] Speaker 05:
That was known in the art.

[00:33:31] Speaker 05:
It was known from Laurent.

[00:33:32] Speaker 05:
It's been admitted now that it was known.

[00:33:34] Speaker 05:
And you put it in a press, which is known from Laurent.

[00:33:37] Speaker 05:
And you use those temperatures of Laurent.

[00:33:39] Speaker 05:
And you get the same result with zinc that you would have expected from Laurent and expected from the prior art and from the admission, the formation of an alloy compound.

[00:33:48] Speaker 05:
Thank you.

[00:33:49] Speaker 02:
Thank you, Mr. Peterson.

[00:33:50] Speaker 02:
Thank you both.

[00:33:51] Speaker 02:
The case is taken under submission.