[00:00:00] Speaker 03:
Thank you your honor and may it please the court.

[00:00:17] Speaker 01:
I want to spend a few words on the issue of standing because Volkswagen has argued that we would not have standing to

[00:00:28] Speaker 01:
challenge the board's claim construction.

[00:00:33] Speaker 01:
American Holding had claims that were challenged in IPR, and those claims were found unfathomable.

[00:00:46] Speaker 01:
We are asking this court to review that finding.

[00:00:50] Speaker 01:
And because of the board's erroneous claim construction,

[00:00:57] Speaker 01:
We need to address the issue of claim construction in order to form a basis for review of the unfundability finding.

[00:01:08] Speaker 01:
And so we submit that that provides ample standing for us to challenge the board's claim construction.

[00:01:18] Speaker 01:
Volkswagen has also argued that the board's claim construction is in fact identical to the one

[00:01:25] Speaker 01:
that we had used in the proceedings in the IPR.

[00:01:33] Speaker 01:
That's not correct.

[00:01:36] Speaker 01:
The history of the claim construction is that the petitioner in Volkswagen took the position that the claim term, intimately and entirely coded, meant that the absorber was coded over the oxidation catalyst.

[00:01:55] Speaker 01:
and by that, the oxidation catalyst would still be accessible to the reactants either directly or by diffusion.

[00:02:05] Speaker 01:
In our reply, we agreed with that position, but we added an additional requirement, and the additional requirement was that there be sufficient absorbent material to form a monolayer.

[00:02:24] Speaker 01:
Importantly,

[00:02:26] Speaker 01:
In our claim construction, we do not require that a monolayer, in fact, be formed.

[00:02:32] Speaker 01:
And we do not require that if a monolayer is formed, that that would prevent some of the oxidation catalysts to be directly accessible to the reactants.

[00:02:44] Speaker 01:
The history of the claim limitation is that during prosecution, the patent came up against a prior art reference in which barium

[00:02:56] Speaker 01:
was used to stabilize the alumina support.

[00:03:01] Speaker 01:
And in that context, a small amount of bearing was used, and it was contacted with the support prior to deposition of the oxidation catalyst.

[00:03:15] Speaker 01:
And in making or in defending the claim limitation, the Patent Attorneys for American at the time

[00:03:26] Speaker 01:
referred to the method by which the catalyst was made.

[00:03:32] Speaker 01:
They did not refer to the drawings 1a through 1c.

[00:03:38] Speaker 01:
They relied on the method by which the catalyst was made, which shows that the oxidation catalyst is deposited first and then coated over with the absorption material, and also that

[00:03:53] Speaker 01:
The amount of the absorption material is far greater than what was used in the WEN prior art, and that was the basis for the entirely and intimately coding language.

[00:04:08] Speaker 01:
The board takes it a step further and now requires that actually a monolayer B form, and not just that, but that that monolayer

[00:04:20] Speaker 01:
prevents direct access of the reactants to the oxidation catalyst.

[00:04:27] Speaker 01:
That is not consistent with any of the evidence that was developed during the prosecution or during the IPR proceedings.

[00:04:36] Speaker 01:
And it is also not consistent with the positions that the parties have taken during the IPR.

[00:04:49] Speaker 03:
This composition claim process would seem to be irrelevant.

[00:04:54] Speaker 03:
And all it consists of is an oxidation catalyst coated with a carbonate or hydroxide of an alkali metal.

[00:05:11] Speaker 03:
And why isn't that anticipated or rendered obvious by Hoekstra?

[00:05:21] Speaker 01:
The experts for both parties were asked to give their point of view on what that wording meant.

[00:05:34] Speaker 01:
And they opined that it meant that the oxidation catalyst was deposited first and then to prevent it from leaching out when the

[00:05:49] Speaker 01:
when the aqueous solution of the absorbent material was applied, there should be some step in between to fix the... They're on process steps in this claim.

[00:06:02] Speaker 01:
They are all... That is true, Your Honor, and it has been our position throughout that this claim limitation should be read as a product by process claim limitation.

[00:06:14] Speaker 01:
And if it is not, then

[00:06:18] Speaker 01:
The prior art references that the board relied upon to find the claims unpatentable do not provide a description of the materials that these prior art materials contain.

[00:06:33] Speaker 01:
The prior art references contain descriptions of the method by which these materials were made.

[00:06:42] Speaker 01:
And the experts for both sides were quite comfortable

[00:06:48] Speaker 01:
translating that to determination as to whether the materials of the prior art would anticipate the claim.

[00:06:58] Speaker 01:
That has been the method by which both the petitioner and American holding have been dealing with prior art references.

[00:07:09] Speaker 01:
If there is a requirement that you actually know that there is an uninterrupted monolayer

[00:07:16] Speaker 01:
coated over the oxidation catalyst, then it's our submission.

[00:07:20] Speaker 01:
The prior art falls far short of that because all information that is provided to us by the prior art is the way by which it was made.

[00:07:32] Speaker 01:
And so in that sense, the board's position was entirely inconsistent because on the one hand,

[00:07:38] Speaker 01:
They formulate a claim construction that requires that a monolayer actually be formed, and not just that it be formed, but that it prevent the reactants from directly contacting the oxidation catalyst.

[00:07:53] Speaker 01:
But then in analyzing the prior arc, the board is happy to rely on just the description of the method by which the prior arc materials were made.

[00:08:04] Speaker 01:
So it can be both

[00:08:08] Speaker 01:
It can both be correct.

[00:08:11] Speaker 01:
Either we settle on a claim construction that allows us to analyze prior art based on the description of how these materials were made.

[00:08:21] Speaker 01:
And Volkswagen, in fact, is doing that.

[00:08:24] Speaker 01:
When they argue in their brief that first of all that the preferred embodiment is within claim one, they refer to the description

[00:08:38] Speaker 01:
of the patent as to how the preferred embodiment was made.

[00:08:41] Speaker 01:
They do not say, oh, and by the way, there's evidence that a monolayer was formed and that this monolayer prevented direct contact of the reactants with the oxidation catalyst because that evidence isn't there.

[00:08:56] Speaker 01:
So when they argue that the claim as constructed by the board encompasses the preferred embodiment, they fully rely on

[00:09:08] Speaker 01:
solely rely on the description of how it was made.

[00:09:12] Speaker 01:
When they argued that there was substantial evidence to support the finding of unfathomability, they refer again to descriptions in the prior art of how the prior art materials were made.

[00:09:26] Speaker 01:
So there is a consensus, even today, between the parties that this claim limitation should be read as a product by process claim limitation.

[00:09:37] Speaker 01:
because that is the only information we typically have available.

[00:09:47] Speaker 03:
Anything further?

[00:09:49] Speaker 01:
I would like to... I have about five more minutes.

[00:09:52] Speaker 01:
I would like to save that for rebuttal unless the court has any questions at this point.

[00:09:57] Speaker 03:
We will save that for you.

[00:09:59] Speaker 03:
Mr. Meyer.

[00:10:06] Speaker 00:
Good morning, Your Honors.

[00:10:07] Speaker 00:
May it please the Court.

[00:10:09] Speaker 00:
With respect to the position of whether or not AmeriKem has standing, the issue really is a prudential rule regarding the need for this Court to construe the limitation.

[00:10:24] Speaker 00:
Patent owner AmeriKem takes the position that none of the challenged claims are unpatentable under the Board's claim construction.

[00:10:33] Speaker 00:
Patent owner never argued

[00:10:35] Speaker 00:
that the construction it urges this Court to adopt distinguishes over the prior art.

[00:10:41] Speaker 00:
In fact, at page 43, footnote 3 of its opening brief, patent owner admits that under the broad construction it urges this Court to adopt, instead claims 1, 7, 8, 14 through 17, 19, and 31 are unpatentable based on styles.

[00:11:01] Speaker 00:
And we noted this two times in our brief.

[00:11:04] Speaker 00:
at pages 22 and 23, yet they never disputed this in their reply.

[00:11:12] Speaker 00:
So, therefore, under the Vivid Technologies case, there is no need for this Court to construe this limitation.

[00:11:21] Speaker 00:
Secondly, they won on this limitation.

[00:11:26] Speaker 00:
They urged the inclusion of this provision, that a monolayer, that there be sufficient

[00:11:34] Speaker 00:
to form a monolayer.

[00:11:36] Speaker 00:
And the court adopted that.

[00:11:38] Speaker 00:
And they, the court, I'm sorry, the board accepted their argument relying upon that construction to find that Kinoshita is not invalidating.

[00:11:52] Speaker 02:
Now, counsel, a problem I had with the case, or that maybe I still have questions, is whether the

[00:12:03] Speaker 02:
The board overly relied on the figures and decided this case based on looking at the different figures.

[00:12:15] Speaker 02:
What other evidence did the board rely on other than just the figures?

[00:12:20] Speaker 00:
Well, they relied upon the figures.

[00:12:22] Speaker 00:
They also relied upon the plain and ordinary meaning of entirely coded.

[00:12:34] Speaker 00:
Okay.

[00:12:35] Speaker 00:
What the board said in its decision on rehearing was, in the final written decision, we did not ignore witness testimony.

[00:12:45] Speaker 00:
We discussed the testimony at some length.

[00:12:48] Speaker 00:
We chose to credit the precise, plain, and ordinary meaning of the language to the claim aided by the prosecution history and intrinsic evidence of the specification, including the figures.

[00:13:01] Speaker 00:
So they relied upon it all.

[00:13:03] Speaker 00:
And if I could refer you to the figures, it appears at appendix page 99.

[00:13:11] Speaker 00:
There's figure 1a and figure 1b.

[00:13:14] Speaker 00:
In their reply at page 13, they say the schematic drawings do not show any poor structure in support 10.

[00:13:23] Speaker 00:
That is incorrect.

[00:13:25] Speaker 00:
Figure 1b is one poor.

[00:13:28] Speaker 00:
And the

[00:13:30] Speaker 00:
Description of the drawing states that figure 1B is magnified drawing of a portion of the surface of the catalyst absorber sphere.

[00:13:39] Speaker 00:
And that's at appendix page 104, column 3, lines 38 through 40.

[00:13:45] Speaker 00:
Then later on in the text of the specification, it states as shown in figure 1B, the surface of the sphere is very irregular.

[00:13:55] Speaker 00:
so that there is an extremely large surface area per gram of material as described herein.

[00:14:01] Speaker 00:
Now, if you go to Dr. Ferrato's declaration, what he said at appendix page 600, paragraph 21 and 22, he says that a support is usually a high surface area inorganic material containing a complex pore structure throughout which catalytic materials such as platinum and palladium are deposited.

[00:14:24] Speaker 00:
And that's paragraph 21.

[00:14:26] Speaker 00:
In paragraph 22, he states, the size and number of the pores determine the support's surface area.

[00:14:32] Speaker 00:
That is, the surface area of the support includes all of the internal areas formed by each and every pore.

[00:14:40] Speaker 00:
They've got these pores that go like this.

[00:14:42] Speaker 00:
And that's exactly what is shown in Figure 1B.

[00:14:46] Speaker 00:
Now, they also point to some of Dr. Ferrato's testimony regarding

[00:14:53] Speaker 00:
the use of the word porosity in the context of the absorber.

[00:14:58] Speaker 00:
And there what he said was the absorber still has to have porosity to allow the gases to diffuse through the coating to arrive at the platinum sites or whatever catalytic material sites in order for the catalytic reaction to occur.

[00:15:16] Speaker 00:
So he uses porosity to denote diffusion.

[00:15:21] Speaker 00:
What they're doing in their brief, they point to the use of porosity with respect to the high surface area support, which is just some pores going up and down, not all the way through, and those are filled with the platinum and also the absorber.

[00:15:37] Speaker 00:
And then he, they mention porosity of the absorber.

[00:15:41] Speaker 00:
And Dr. Ferrato used the word porosity to connote diffusivity.

[00:15:48] Speaker 00:
And that's clear through all of the passages that they cite and that they quote in their brief.

[00:15:55] Speaker 00:
Also, I would like to turn now to Hoekstra.

[00:16:01] Speaker 00:
In their reply at page 15, they state, the US-filed history was unavailable to members of the public for the Hoekstra patent.

[00:16:12] Speaker 00:
That is not true.

[00:16:14] Speaker 00:
At appendix page

[00:16:18] Speaker 00:
312, the board stated that the file wrapper was available to the public on the issued date of Hoekstra, November 15, 1994.

[00:16:29] Speaker 00:
So that was a finding of the board.

[00:16:31] Speaker 00:
And their statement that, their unsupported statement that the file history was unavailable to the members of the public has no support and does not contradict the finding of fact made by the board.

[00:16:44] Speaker 03:
Why does that matter?

[00:16:45] Speaker 03:
because Hoxtra is a reference for what it discloses, not what its file wrapper contains.

[00:16:52] Speaker 00:
Yes.

[00:16:52] Speaker 00:
They're arguing that there was a typo in the issued patent of Hoxtra, and the board is taking the position that there was a 312 amendment, even though it wasn't incorporated into the issued patent, it was available and became a published application as of the issued date of the patent because

[00:17:12] Speaker 00:
the application itself, the prosecution history, was publicly available.

[00:17:17] Speaker 00:
Now, with respect to Hoekstra, our expert says that the alkaline earth metal compound will be completely coated over

[00:17:39] Speaker 00:
the platinum group component.

[00:17:41] Speaker 00:
And he used the phrase completely coded.

[00:17:44] Speaker 00:
And in Dr. Crocker's declaration, he recognized that we were arguing that the absorber was completely coding the platinum.

[00:17:54] Speaker 00:
Now, I'd like to take a step back to address some of the arguments that they made about the construction of this client.

[00:18:03] Speaker 00:
First, with respect to product by process limitations,

[00:18:07] Speaker 00:
a product-by-process limitation has no value with respect to the validity or invalidity of the patent.

[00:18:17] Speaker 00:
It does not provide patentable distinction.

[00:18:21] Speaker 00:
If the end product is the same, then, and it's a product claim, and if it has a product-by-process limitation in it, if the product is the same, the claimed product and the prior product has the same

[00:18:36] Speaker 00:
physical characteristics and properties.

[00:18:38] Speaker 03:
In other words, an old product doesn't become new by being made by a different process.

[00:18:42] Speaker 00:
Correct.

[00:18:42] Speaker 00:
Yes.

[00:18:43] Speaker 00:
Absolutely.

[00:18:45] Speaker 00:
OK.

[00:18:46] Speaker 00:
And also, with respect to their argument that they don't require a monolayer to be formed, then why do we have this limitation?

[00:18:57] Speaker 00:
They're claiming, let's say, each sheet of paper is a monolayer of absorbent.

[00:19:04] Speaker 00:
And I have a pad.

[00:19:05] Speaker 00:
And if I take out each paper, I can cover the whole table, and it would be covered by a monolayer.

[00:19:10] Speaker 00:
What they're saying is, if you put it right here, pile it up in a corner of the high surface area, that's sufficient.

[00:19:19] Speaker 00:
But that does not satisfy the limitation that requires the catalytic component to be intimately and entirely coated by the absorbent.

[00:19:31] Speaker 00:
So if you put it all over here,

[00:19:33] Speaker 00:
Whatever other catalyst is distributed on the high-surface area represented by this table, it is not covered by the monolayer.

[00:19:42] Speaker 00:
So this limitation is not effective to show satisfaction of this limitation.

[00:19:50] Speaker 00:
So therefore, it can't be an acceptable definition of this.

[00:19:55] Speaker 00:
And we pointed this out in our opening brief.

[00:19:59] Speaker 00:
I'm sorry, in our responding brief.

[00:20:01] Speaker 00:
And they did not respond to that argument.

[00:20:03] Speaker 00:
in their reply brief.

[00:20:06] Speaker 00:
They haven't pointed to any intrinsic evidence that says, aha, if you have enough to cover it, you really don't have to cover it.

[00:20:15] Speaker 00:
You can have a pile on the edge and that's sufficient.

[00:20:17] Speaker 00:
There is no evidence supporting that.

[00:20:32] Speaker 00:
with respect to entirely, we asked their expert what he considered the scope of this limitation to argue.

[00:20:42] Speaker 00:
And he said, my understanding of the term is that the platinum particles are entirely coated, and that therefore, in principle, there shouldn't be any exposed atoms.

[00:20:53] Speaker 00:
And I responded, OK, not a single one.

[00:20:55] Speaker 00:
And he said, if one uses a dictionary definition of entirely,

[00:21:00] Speaker 00:
then the logical implication would be that there are no exposed platinum atoms.

[00:21:06] Speaker 00:
And that's true.

[00:21:07] Speaker 00:
And that's what the board was relying upon, the ordinary meaning of the word entirely.

[00:21:14] Speaker 00:
And if you give that word its ordinary meaning completely covered, then their definition of a monolayer is insufficient if you can pile it up on the side.

[00:21:29] Speaker 00:
evenly spread out.

[00:21:30] Speaker 00:
So there must be a monolayer, and that's what the court decided.

[00:21:34] Speaker 00:
And it's consistent with the dictionary definition.

[00:21:39] Speaker 00:
And with respect to our expert's testimony, he said that there are two possibilities with respect to this claim term.

[00:21:46] Speaker 00:
It can either be by diffusion, and let's not lose track of what that means.

[00:21:53] Speaker 00:
With diffusion, the gas

[00:21:55] Speaker 00:
passes through, it diffuses through the absorbent, and it does contact the catalyst.

[00:22:01] Speaker 00:
So the reaction occurs.

[00:22:03] Speaker 00:
It's not like we're somehow rendering the claim inoperable or the board rendered it inoperable by saying that it can only pass through by diffusion.

[00:22:14] Speaker 00:
And so the board, our, our expert proposed two alternative

[00:22:24] Speaker 00:
situations, either by diffusion or there's gaps or cracks that would allow it to come through.

[00:22:31] Speaker 00:
And with respect to Takashima, we relied upon that aspect.

[00:22:35] Speaker 00:
With respect to Hoekstra, Inouye, and Stiles, we relied upon the first configuration that is encompassed within that definition, proposed definition.

[00:22:48] Speaker 00:
So the fact that the board adopted only the first prong

[00:22:54] Speaker 00:
by diffusion does not mean that there is no evidence.

[00:22:58] Speaker 00:
There is evidence.

[00:22:58] Speaker 00:
There's substantial evidence, and we cited to that in our reply brief.

[00:23:03] Speaker 00:
And with that, if you do not have any questions for me on any of the grounds, I will sit down.

[00:23:11] Speaker 03:
Thank you, Mr. Meyer.

[00:23:12] Speaker 03:
Mr. Grassner has a few minutes left for a bottle if he needs it.

[00:23:27] Speaker 01:
Taking up the last point first, it's not just that the board focused on one embodiment where the reactants would contact the oxidation catalyst by diffusion.

[00:23:46] Speaker 01:
They specifically ruled out the other embodiment where the reactants would be able to contact the oxidation catalyst directly.

[00:23:57] Speaker 01:
That is problematic for a Volkswagen's position because their evidence does not exclude that the prior art may contain materials that allow for direct access.

[00:24:15] Speaker 01:
You can't.

[00:24:16] Speaker 01:
I mean, Dr. Crocker, the expert for American, explained that

[00:24:25] Speaker 01:
To really know what this catalyst looks like, you have to conduct some very sophisticated analyses.

[00:24:32] Speaker 01:
You cannot just deduce that from the way the catalyst was made.

[00:24:37] Speaker 01:
Dr. Ferrodo, Volkswagen's expert, explained that even if you form a monolayer, you

[00:24:48] Speaker 01:
cannot be sure that there may not be unexposed oxidation catalyst atoms as well because there could be preferential deposition of the... What should we view, counselor, the expert testimony on the definition of entirely... What should we view that as substantial evidence?

[00:25:12] Speaker 01:
Both experts were asked to give their opinion of

[00:25:17] Speaker 01:
what the claim meant.

[00:25:20] Speaker 01:
And they both agreed that the claim encompassed embodiments in which the reactants would have to travel to the oxidation catalyst by diffusion, as well as embodiments in which they would be able, the reactants would be able to contact the oxidation catalyst directly.

[00:25:45] Speaker 01:
And that was consistent with their testimony that when you form a monolayer, you can't be sure that there aren't any cracks or that there aren't somewhere some exposed oxidation catalyst atoms that would allow direct access.

[00:26:06] Speaker 01:
So they know full well, they have both worked with these materials and they know that

[00:26:15] Speaker 01:
You do the best you can in making your catalyst, but you have no control over what happens on a molecular scale.

[00:26:24] Speaker 01:
And in order to determine what has in fact happened, you would have to conduct very sophisticated analyses.

[00:26:32] Speaker 01:
And even then, of course, that requires a very large enlargement, which by implication means that you're looking at a very small sample of your catalyst.

[00:26:43] Speaker 01:
And so even if you see in your analysis that the area that you're looking at shows an uninterrupted layer and there's no exposed platinum atoms at all, you don't know what it looks like two centimeters from where you happen to be doing your test.

[00:27:03] Speaker 01:
So both, these are people from the real world, from practice, and they know that

[00:27:12] Speaker 01:
Dr. Faroda used the term idealized situation.

[00:27:17] Speaker 01:
Yes, we can do these calculations, we can determine whether there's enough there to form a monolayer, but that's an idealized world.

[00:27:26] Speaker 01:
And in reality, you may have situations where the absorber material may cluster and may leave platinum atoms unexposed.

[00:27:39] Speaker 01:
If the board's interpretation is correct and if the claim is limited to the embodiment where all of the platinum, all of the oxidation catalyst atoms are coded and only accessible by diffusion, then there is no evidence that the prior art actually meets that claim limitation.

[00:28:02] Speaker 01:
So the finding of unpatentability is entirely inconsistent with

[00:28:09] Speaker 01:
with the available evidence.

[00:28:12] Speaker 01:
Now, Volkswagen would have us rub our hands and say, nice, we got a very narrow claim interpretation, and that makes it easy for us to pull our claims out of the fire.

[00:28:24] Speaker 01:
But we cannot do that.

[00:28:27] Speaker 01:
We cannot ignore all the evidence that was developed saying,

[00:28:33] Speaker 01:
these materials in real life will have cracks in this coding and will have atoms that are directly accessible.

[00:28:42] Speaker 01:
And it's still unclear to me how Volkswagen could say on the one hand, this is the correct claim interpretation, and on the other hand, then analyze the prior art as if those requirements were not there.

[00:28:55] Speaker 01:
I see my time is up.

[00:28:56] Speaker 01:
If the court has no further questions, I'll rest.

[00:28:59] Speaker 03:
Thank you, counsel.

[00:29:00] Speaker 03:
We'll take the case under advisement.