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All rise.

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The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and its Honorable Court.

[00:00:29] Speaker 04:
Good morning.

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Please be seated, ladies and gentlemen.

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We have six cases on our calendar this morning.

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Three patent cases, two from the PTO, one from a district court, a veterans case, and an employee case, and one from the Court of Federal Claims.

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The latter two will be submitted on the briefs and not be argued.

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First case is Hitachi Medicals versus the Alliance of Rare Earth Permanent Magnet Industry 2016, 1824 and 25, Mr. Herrick.

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Thank you, Your Honor.

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Good morning.

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May it please the Court?

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My name is Mark Herron, and I represent the appellant, Hitachi Metals.

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I'd like to focus today on two issues, and I do want to make sure before my time expires that I have time to discuss the construction of high-speed flow of gas comprising oxygen, because... That'll depend on how you measure your time.

[00:01:47] Speaker 03:
Yes, Your Honor.

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But if you agree with us on that claim, that alone would require reversal of claim four of the 765 patent.

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But I'd like to start with the obviousness issues involving a combination of Yamamoto's high-speed, I'm sorry, strip casting method with the other references.

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And if you agree with us on that, then that would mean the claims five and six of the 385 patent and claims 11 and 12 on the 765 patent require reversal or would be revived.

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The board was required to articulate a reason

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why a person of skill in the art would have pursued the combination of Yamamoto's strip casting with the methods disclosed in Hasegawa, Ohashi, and Hei.

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The only nonconclusory statement that the board gave was a desire to improve the magnet production process disclosed in Hasegawa and Ohashi.

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The board said the provision of a lower cost, more productive process better suited for higher volume manufacturing.

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But Hitachi Medal's evidence directly rebutted that stated motivation.

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Yet the board just refused to consider it, dismissing it as going only to whether the combination would make, quote, commercial sense.

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In both board decisions, the board noted that the patentee at your side did not seem to dispute the other side's view that

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there'd be a motivation to go with the rapid cooling strip casting method because you would produce a more uniform alloy.

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Was that an accurate depiction of what you did or did not do for the board in response to the petitioner's advanced motivation to combine theory of a more uniform alloy?

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I don't think the board said that we did not dispute that there would have been a motivation to combine.

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The board said that we didn't dispute that the elements were known in the art and that it would have been technologically feasible to combine the elements.

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I thought they also said a little more that the other side said one motivation would be to produce more uniform alloy and the patentee did not dispute that.

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So I don't think that the board said that but the

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More predictable, I'm sorry, the more uniform alloy that the board cited was a citation to the petitioner's reply brief, and the Alliance had cited only a statement from its expert in deposition that... Okay, I'm just looking at A11.

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Yes.

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Towards the bottom, lower paragraph, second sentence.

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Patent owner does not appear to dispute petitioner's contention that strip casting would result in a more uniform alloy.

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So that's correct.

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That strip casting does not.

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So that's what I was getting at.

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But the board didn't make a finding that that then would be a reason to combine Yamamoto strip casting with Hasegawa and Ohashi.

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And our evidence shows that as a result of the more uniform alloy, a person of skill only art would not have combined the strip casting with Hasegawa and Ohashi.

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And the board just simply refused to even consider our evidence, saying that it goes only to whether the

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the combination makes commercial sense.

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Why is it wrong to view the board in the following way?

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Your case for why the two pieces of prior art would not be combined hinged on the assertion that the skilled artisan would know that you'd have a serious yield problem if you did that.

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So you put on

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essentially the evidence, they would recognize the yield problem.

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And then at A19 of the board's opinion, the board says petitioner has shown sufficiently that a person of skill in the art would have recognized the results of the combination to be predictable and included in the parenthetical as a sense from, I don't know if this is an expert or the reply brief or what,

[00:06:02] Speaker 02:
A person of ordinary scope would have known to adjust, not how to adjust, would have known to adjust basic fundamental jet milling settings, which is to say they would have known to adjust the second pulverization step to avoid that problem.

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Why is that not enough together?

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Because our evidence, our expert, Dr. Lewis, explained that it is not as simple as just adjusting the jet mill.

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that whenever you make one of these changes... What is this quote from?

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Exhibit 2011-2?

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I don't remember.

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That's from Lee, which is one of the references that we had put in in order to show what the distribution was.

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Right.

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So as I understand it, here, this is a quote.

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It's also at A13, the board quoted the same

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sentence twice, a person of ordinary skill would have known to adjust basic fundamental jet milling settings to accommodate the uniform particle size and shape distribution of the strip gas alloy.

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That's from the petitioner's reply brief, which then cites and discusses the Lee reference, which talks about how you want to adjust jet milling parameters to avoid

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having too many superfine particles.

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And then the reply brief also quotes Dr. Lewis's deposition testimony in full, in two pages.

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I think it's something like 8, 21, 15 in the JA about how, yes, Dr. Lewis acknowledges that you would know how to adjust the jet milling parameters in order to

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change the kinds of desired particle sizes you would want in the ultimate end powder that's made up of fine particles.

[00:07:54] Speaker 03:
So two points to that, Your Honor.

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First of all, our expert, Dr. Lewis, did not say that simply adjusting the jet mill would solve all the problems.

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Dr. Lewis, all she said was that you could adjust the jet mill parameters in order to control the amount of superfine particles.

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But in her declaration, she went on to explain

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that if you don't, then adjust the inputs that go in.

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Any time you make one of these changes to the overall process, you have to go back and adjust the inputs.

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And it's going to change the, it's going to degrade the overall, if all you do is just adjust the jet mill settings, her declaration explains that's going to degrade the quality of the magnet, and that a person of skill in the art would know that.

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And the problem is that the board just didn't even consider any of that evidence.

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Had the board looked at that evidence,

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and said, we're not persuaded, that might be different.

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But the board- That can't be quite right.

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I mean, at these pages, the board did consider it.

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It may not have explained enough.

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But the board- And this is putting completely to one side.

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I agree, quite odd thing the board said about on Monday, we consider

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the commercial motivation and on Tuesday we don't.

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That doesn't make any sense that commercial motivation is a kind of motivation for doing something, but this is independent of that, and I'm not sure why it's not enough.

[00:09:18] Speaker 03:
I don't think it is independent, Judge Laurie, because I think that the evidence that I just mentioned that is from Dr. Lewis's declaration is part of the evidence that the board said it would not consider because it goes only to whether the combination makes commercial sense.

[00:09:30] Speaker 03:
So I don't think it is an independent.

[00:09:31] Speaker 04:
I'm very happy to have you think that's Judge Moore and Judge Toronto.

[00:09:36] Speaker 03:
I'm sorry.

[00:09:38] Speaker 03:
I'm very sorry, Your Honors.

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But Judge Toronto, I don't think that it is an independent part of it.

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That is part of the evidence that the board said that they were not going to consider.

[00:09:49] Speaker 02:
I'd like to talk about the- I just want to pursue this, because this actually, to me, seems pretty critical.

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What is it, I mean it seems to me that if only indirectly the board is referring to certain evidence and in order for and it actually seems to sort of find they would have known not just how to do it but known to do it.

[00:10:12] Speaker 02:
Known to do it and we would have to find that it would be unreasonable, lacking in substantial evidence for the board to credit this reading of the evidence because other evidence just makes it

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unreasonable.

[00:10:28] Speaker 03:
Well, Dr. Lewis's declaration actually says that it's not as simple as just adjusting the jet mill, just turning the dial, as the Alliance would have you think.

[00:10:39] Speaker 03:
Well, this doesn't say it's simple, just they would know to do it.

[00:10:43] Speaker 03:
Well, but Dr. Lewis's declaration says that actually there are a lot of different things that would go into, you would have to change the starting inputs for the magnet,

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And that doing so would be beyond the capabilities of an ordinary person of skill in the art.

[00:11:00] Speaker 03:
She says that a person of ordinary skill in the art, and this is at 788, she says that a person of ordinary skill in the art would know how to follow the combinations and would know how to basically do it, but that in order to then adjust the starting inputs in order to avoid degrading the quality of the magnet, which is what you're doing when you're

[00:11:25] Speaker 00:
when your motivation is commercial success, then... Strip casting was a pretty well-known established technique by the time this patent application came around, right?

[00:11:36] Speaker 00:
It wasn't some mysterious oddball technique for coming up with an alloy.

[00:11:42] Speaker 03:
That's right, but there was no prior reference that had combined strip casting with the other steps that are in the patent, and that's part of what our inventors did.

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is make that combination.

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And that's a combination.

[00:11:58] Speaker 00:
Strip casting had been used to come up with rare earth powder before?

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The alliance has not pointed to any prior art reference that combines strip casting with the... There's no 102 reference.

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That's right.

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I mean, the board found that hay is, but that's based on an erroneous claim construction.

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Apart from hay, there's no other reference that does that.

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So unless you have any other questions, I'll turn to the claim construction argument on the claim four.

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The board construed the claim as being satisfied so long as that there is oxygen present in the classifier part of the entire JETML apparatus.

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But that cannot be reconciled with the claim language, which the claims

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have two sub-steps, essentially.

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There's the fine pulverization, and then there is the removal sub-step.

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And the claims say that the removal is performed on the fine powder that results from the fine pulverization.

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So allowing oxygen in the high-speed flow of gas in the classifier, in the removal sub-step, doesn't make any sense when it's the high-speed flow of gas.

[00:13:18] Speaker 03:
Every reference to the high-speed flow of gas in the patent

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is talking about the jet milling.

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And if you look at figure two of the patent, you can see very clearly what we're talking about.

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The middle section in figure two is a jet mill apparatus, and it's at 79.

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It has a part on the left, which is the hopper, where you put in your input materials.

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It has the part in the middle, and that's the miller, or the pulverizer.

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And it has the part on the right, which is the classifier.

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Every reference in the patent to a high-speed flow of gas is to the pulverizer in the middle section, not to the classifier.

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And so the board's construction of allowing oxygen in the classifier section was erroneous.

[00:14:02] Speaker 03:
That's 14, not 18?

[00:14:06] Speaker 03:
Exactly.

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The references to high-speed flow of gas are to 14.

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The board construed as allowing the high-speed in 18.

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I'd like to reserve the remainder.

[00:14:17] Speaker 04:
We will do that, Mr. Harlan and Mr. Bradley.

[00:14:33] Speaker 00:
Can we pick up where Mr. Herron left off about Claim 4 and Claim 3?

[00:14:37] Speaker 00:
I know there's something that's really the main event, but I'd like to know because I was a little troubled by the fact that the specification, very, very consistently, the only times it talks about the use of the high-speed flow of gas is in the context of jet milling and not in the context of the classifier.

[00:14:58] Speaker 01:
Yes, Your Honor.

[00:14:58] Speaker 01:
May it please the Court?

[00:15:00] Speaker 01:
In Claim 4,

[00:15:02] Speaker 01:
It's really a matter of just claim reading in light of the specification.

[00:15:07] Speaker 01:
Claim one, just to start at the beginning, talks about a second pulverization step.

[00:15:12] Speaker 01:
And that step includes finally pulverizing the alloy and further comprises, as part of this pulverization step, a step of removing certain parts of the powder.

[00:15:23] Speaker 01:
Then when we get to claim three, headed on our way to claim four, when we get to claim three, it says in that second pulverization step,

[00:15:30] Speaker 01:
The alloy is finely pulverized in a high-speed flow of gas.

[00:15:34] Speaker 00:
And so there's ambiguity there.

[00:15:36] Speaker 00:
What does it mean to be finely pulverized?

[00:15:38] Speaker 00:
Is it referring to the overall fine pulverization step, or is it referring to the action in the first sub-step of the actual fine pulverization that's performed by the jet mill?

[00:15:51] Speaker 01:
Perhaps one of the best places to look is in the specification itself.

[00:15:55] Speaker 01:
And it says, if we look at A82, column 4,

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in lines 56 through 62.

[00:16:09] Speaker 01:
It says right here that before the fine pulverization step is finished.

[00:16:18] Speaker 01:
So we're still within the fine pulverization step.

[00:16:22] Speaker 01:
Before that step is finished, at least part of the R-rich superfine powder is removed.

[00:16:28] Speaker 01:
So just like the claim says, you have the broader second pulverization step, which comprises both pulverizing

[00:16:36] Speaker 01:
and removal.

[00:16:37] Speaker 01:
That's what the claim says.

[00:16:39] Speaker 01:
And you look at the specification, and it says right here that before that fine pulverization step is finished, part of the powder is removed.

[00:16:47] Speaker 00:
It's purely part of it.

[00:16:48] Speaker 00:
I don't want to belabor the point you have other things to talk about, but do you agree with the other side that every single time in this specification where there's a reference to the high-speed flow of gas, it is devoted explicitly in the context of doing the jet milling

[00:17:04] Speaker 00:
And it's not in the context at all of the classifier.

[00:17:08] Speaker 01:
I do not entirely agree with that.

[00:17:11] Speaker 00:
I do agree with that.

[00:17:11] Speaker 00:
Then where would be that other example of the usage of the phrase high-speed flow of gas in the specification?

[00:17:17] Speaker 01:
I think it hinges on the notion that, as the parties agree, this is all part of the jet milling process.

[00:17:22] Speaker 01:
And if we look at figure two that the council referred to, figure two shows the jet milling process.

[00:17:28] Speaker 01:
In the middle, it's element number 14, right?

[00:17:31] Speaker 01:
Now, figure two is the jet milling process, and it includes both the milling chamber 14 and also that classifying body on the right, 16.

[00:17:40] Speaker 01:
That's all part in the specification, the way the claims are written, the way the specification describes.

[00:17:45] Speaker 01:
These are all part of the second pulverization step, which has two parts.

[00:17:49] Speaker 01:
And then the specification even makes this clear, as I just mentioned, saying that as part of that fine pulverization step, before that step is finished, so while we're still fine pulverizing,

[00:18:01] Speaker 01:
At least part of our rich powder is removed.

[00:18:04] Speaker 01:
That's entirely consistent with the claims.

[00:18:07] Speaker 01:
It's consistent with what the board construed, how it construed it.

[00:18:09] Speaker 04:
But further as to claim four, which recites that the gas comprises oxygen, Osashi would seem to lead away from that, because it talks about conducting pulverization in an atmosphere in a non-oxidizing or inert gas, which is not oxygen.

[00:18:30] Speaker 01:
The parties address this point, and I don't believe it's been re-raised on appeal, but Ohashi teaches pulverizing the extremely fine particles and removing them, just as shown in these claims.

[00:18:44] Speaker 01:
And the parties have found, or agreed, and the board found that all these limitations are satisfied.

[00:18:49] Speaker 01:
The issue only is, what do the claims mean here?

[00:18:52] Speaker 01:
Under this interpretation that the board provided, which is the correct interpretation, there's no dispute that the limitation is satisfied.

[00:18:59] Speaker 01:
So it's just a matter of what does the claim mean.

[00:19:02] Speaker 01:
Once we get that far, if this court affirms that construction, it must affirm because there's no dispute of the disclosure in Ohashi.

[00:19:10] Speaker 01:
If this court were to reverse, it needs to remand because there's evidence that was presented that the board never reached that there is, in fact, in Ohashi, oxygen still remaining in the milling chamber.

[00:19:20] Speaker 01:
The board didn't reach that argument.

[00:19:22] Speaker 01:
So at best, this court could remand on claim four.

[00:19:24] Speaker 01:
But the construction was correct.

[00:19:26] Speaker 00:
Where was that argument in your briefing?

[00:19:28] Speaker 00:
Or below to the board?

[00:19:30] Speaker 00:
I assume it's in your petition.

[00:19:35] Speaker 01:
We can see if this will answer the question.

[00:19:36] Speaker 01:
On APPX 53 is where the board addresses the argument and doesn't reach it.

[00:19:42] Speaker 01:
I try to find a site to our actual brief.

[00:19:45] Speaker 01:
But at the top of 53, that whole first paragraph says that they've considered the patent owner's arguments responding to our argument.

[00:19:57] Speaker 01:
The patent owner had argued that some amount of oxygen cannot be entirely removed from that milling chamber, that middle chamber in figure two.

[00:20:07] Speaker 01:
That was the dispute to the board is whether, even under their claim construction, whether there's still some oxygen.

[00:20:12] Speaker 01:
Because oxygen's pulled out, but some oxygen remains.

[00:20:15] Speaker 01:
And that was the evidence.

[00:20:16] Speaker 01:
And so at best, if this court reverses or alters the claim construction for claim four, it would need to remand so that the board could address that evidence that, in fact, there is some oxygen still in that chamber.

[00:20:27] Speaker 01:
Claim four just says comprises oxygen.

[00:20:29] Speaker 01:
It doesn't say how much.

[00:20:31] Speaker 01:
The evidence showed that there's still some in that chamber.

[00:20:33] Speaker 01:
Just the board never got there.

[00:20:35] Speaker 01:
So counsel, my colleague here, said that this court should reverse.

[00:20:41] Speaker 01:
That's not correct.

[00:20:41] Speaker 01:
They would have to remand in order for the board to make that factual finding in the first instance of what Ohashi discloses.

[00:20:48] Speaker 04:
You can move on with the rest of your argument.

[00:20:50] Speaker 01:
Thank you, Your Honor.

[00:20:50] Speaker 01:
Turning to the other focal point of my colleague's argument

[00:20:57] Speaker 01:
The combination of the Ohashi and Hasegawa references with Yamamoto was nothing special, nothing magic going on here at all.

[00:21:08] Speaker 01:
Even in Hitachi's patents, it says that the process is applicable equally to both ingot casting methods and strip casting methods.

[00:21:18] Speaker 01:
And if you look at the parent, the 765, there's only one claim there that even says it's strip casting.

[00:21:24] Speaker 01:
The rest of them

[00:21:26] Speaker 01:
pertain equally to ingot casting, just as the specification says.

[00:21:30] Speaker 01:
Now they try to say, oh, a person of skill wouldn't have known to combine this well-known strip casting process with the well-known other steps for manufacturing rare earth metals, even though it was well-known.

[00:21:46] Speaker 01:
Hitachi's patent says that it's equally applicable to ingot casting and strip casting.

[00:21:51] Speaker 01:
The prior art makes clear.

[00:21:52] Speaker 01:
I'm a little confused.

[00:21:57] Speaker 02:
A patent can say, we've got this great new idea, never been done before.

[00:22:01] Speaker 02:
It's equally applicable to blah, blah, blah.

[00:22:04] Speaker 02:
What does that tell us about the prior art?

[00:22:07] Speaker 01:
What it tells you is that the basic process that they claimed does not get thrown in a tizzy just because you switched from ingot casting to strip casting.

[00:22:17] Speaker 01:
A person of skill in the art, as the board found, would know you just adjust the parameters.

[00:22:21] Speaker 01:
This is nothing tricky or magical.

[00:22:24] Speaker 01:
A person of skill in the art knows how to do that.

[00:22:26] Speaker 01:
Their claims don't have certain claims focused on the special method when you're employing strip casting and different parameters when you're employing ingot casting.

[00:22:37] Speaker 01:
The claims that have been invalidated are equally applicable to both, especially in the 765 patent, where all but one claim doesn't limit it to a particular type of casting.

[00:22:50] Speaker 01:
It could be strip or ingot.

[00:22:51] Speaker 01:
And so that's where it matters, because they recognize as part of

[00:22:57] Speaker 01:
what they thought they invented that turns out they hadn't, that it could be equally applicable to strip casting or ingot casting.

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

[00:23:04] Speaker 01:
You just pick the one that works better.

[00:23:06] Speaker 01:
And generally, everyone knows strip casting works better.

[00:23:08] Speaker 02:
Could you provide any enlightenment on, I think, what Mr. Huron was saying in response to some questions about the passage at A13 and then at A19 about a skilled artisan would know to adjust

[00:23:24] Speaker 02:
Um, settings, I know I'm skipping a few words, but we know to adjust settings.

[00:23:29] Speaker 02:
Um, and I think he indicated that actually the evidence really doesn't quite say something that simple.

[00:23:37] Speaker 02:
Again, I'm summarizing, but I mostly want enlightenment about, um, what you think the record says and what we're supposed to make of that.

[00:23:45] Speaker 01:
Yes.

[00:23:46] Speaker 01:
The parties both presented evidence.

[00:23:50] Speaker 01:
Dr. Lewis, their expert testified.

[00:23:53] Speaker 01:
that jet milling parameters could be adjusted to control the amount of superfine particles.

[00:23:58] Speaker 01:
A person of skill in the art, as the board found, absolutely knew how to adjust the parameters to make it work.

[00:24:05] Speaker 02:
So when you have on page, Mr. Herron referred to, if you're going to do something downstream in the process, you have to also make some changes upstream in the process.

[00:24:19] Speaker 02:
enlighten me about that.

[00:24:21] Speaker 01:
To some extent, it's all interrelated.

[00:24:22] Speaker 01:
If you end up with, if you use strip casting instead of ingot casting, you have benefits that Yamamoto describes it some way.

[00:24:30] Speaker 01:
You have benefits from strip casting, which is why persons of skill in the art would absolutely use strip casting in most circumstances.

[00:24:37] Speaker 01:
It produces, for example, a more homogeneous particle.

[00:24:41] Speaker 01:
When you have a more homogeneous particle, you're now ahead of the game.

[00:24:45] Speaker 01:
And so when you move on to the pulverization steps,

[00:24:48] Speaker 01:
you're already in a better spot.

[00:24:50] Speaker 01:
Because you're going to end up with a particle size distribution that isn't all over the place.

[00:24:55] Speaker 01:
Because you've started out through strip casting by getting a more homogenous.

[00:24:59] Speaker 01:
Right, but you know that.

[00:25:00] Speaker 02:
I mean, their answer to that is if you have a very narrow range and then you need to have a cutoff that says everything this side of the range, you may lose half the product.

[00:25:10] Speaker 02:
And that would be very bad.

[00:25:11] Speaker 02:
Right.

[00:25:12] Speaker 02:
Why would you do that?

[00:25:13] Speaker 02:
Whereas a wider range, if you just cut off

[00:25:16] Speaker 02:
at the same place, you may be eliminating, I don't know, 10% or something, and that's economically a lot.

[00:25:22] Speaker 01:
Right.

[00:25:22] Speaker 01:
Their argument is essentially what KSR said.

[00:25:27] Speaker 01:
KSR said a person of ordinary skill has ordinary creativity.

[00:25:30] Speaker 01:
They're not an automaton.

[00:25:31] Speaker 01:
They're not going to blindly go in and not adjust the parameters.

[00:25:36] Speaker 01:
If you're doing strip casting, as was well known, everyone of skill in the art, as the board found, everyone knows that you're going to have a better starting product and you're going to have better pulverization steps

[00:25:46] Speaker 01:
and you can adjust those parameters.

[00:25:48] Speaker 01:
Their yield argument suggesting that it would result in half of the product being gone is only in the context of assuming that the person of skill in the art is just a machine or an automaton and doesn't know as the board found one would know to adjust the parameters.

[00:26:06] Speaker 01:
And so even Dr. Lewis testified that

[00:26:13] Speaker 01:
the jet knowing parameters could be adjusted.

[00:26:15] Speaker 01:
People knew how to do that.

[00:26:16] Speaker 01:
Where's that?

[00:26:17] Speaker 01:
It's at APPX 788.

[00:26:18] Speaker 02:
Is that what the board quoting the reply quotes from?

[00:26:31] Speaker 01:
Don't recall if this is... 788?

[00:26:35] Speaker 01:
Yes, sir.

[00:26:35] Speaker 01:
This is from her deposition.

[00:26:37] Speaker 01:
This was before the board, presented to the board.

[00:26:40] Speaker 01:
788.

[00:26:41] Speaker 01:
Question 17, line 17 through 22.

[00:26:44] Speaker 01:
I'll just read it for the benefit of the other judges.

[00:26:48] Speaker 01:
The question, would a person of ordinary skill at the time of the invention understand that the jet milling parameters could be adjusted to control the amount of superfine particles resulting from the jet milling machine?

[00:27:02] Speaker 01:
And her answer was yes.

[00:27:04] Speaker 01:
This does get back to, first of all,

[00:27:06] Speaker 01:
their own experts supported our position.

[00:27:09] Speaker 02:
And can I just do this?

[00:27:10] Speaker 02:
I realize this is getting into the weeds, but cases like this are often decided at that level.

[00:27:15] Speaker 02:
I think Mr. Herron referred to something else from Ms.

[00:27:18] Speaker 02:
Lewis in the 2100 range.

[00:27:22] Speaker 02:
I didn't get the exact joint appendix number.

[00:27:25] Speaker 02:
Do you know what I'm talking about?

[00:27:26] Speaker 02:
Can you address to that?

[00:27:27] Speaker 01:
I do recall, but also I wasn't sure what he was referring to.

[00:27:31] Speaker 00:
I think he was referring to someplace in Dr. Lewis's testimony

[00:27:37] Speaker 00:
where she said this would be beyond the level of skill to figure out not only something to do with the jet milling parameters, but also in terms of trying to figure out what composition you're even going to start with to make that alloy that's produced by the strip casting method.

[00:27:58] Speaker 01:
I don't believe that was what her testimony was, but let me say this part.

[00:28:01] Speaker 01:
That is part of their view is they come in and say, oh, but Dr. Lewis said this.

[00:28:06] Speaker 01:
The standard of review for this court to apply is whether there's substantial evidence supporting the findings the board did make, the anticipation finding, the findings underlying the obviousness determinations.

[00:28:18] Speaker 01:
The fact that, if it is a fact, and I'm not sure, I don't think it is what you just described, I don't think that's what Dr. Lewis said.

[00:28:26] Speaker 01:
But it doesn't matter anyway.

[00:28:27] Speaker 01:
Because it's not that there can't be some contrary evidence.

[00:28:30] Speaker 01:
The question is, is there substantial evidence to support the findings the board did make?

[00:28:35] Speaker 01:
And absolutely there is.

[00:28:37] Speaker 01:
The person, just like Your Honors pointed out on APPX 13 and 16, the board found and supported by evidence found that somebody would have known how to make these adjustments and would have known what to do.

[00:28:50] Speaker 01:
That's absolutely supported by substantial evidence.

[00:28:52] Speaker 01:
So even if Dr. Lewis had said something different, and I don't think she did, it wouldn't matter because it's not whether there's contrary evidence.

[00:28:59] Speaker 01:
It is there's substantial evidence, and absolutely there is.

[00:29:02] Speaker 01:
The board went on at some length describing

[00:29:05] Speaker 01:
the benefits of combining Yamamoto's strip casting method in the process.

[00:29:11] Speaker 01:
Yamamoto, on its face, says, we're going to cool more uniformly than ingot casting.

[00:29:18] Speaker 01:
This results in a better, a more homogenous product.

[00:29:21] Speaker 01:
It's going to end up having superior pulverization, superior centerability when you get to that end step.

[00:29:27] Speaker 00:
I think it might have been your opposing counsel also said you will

[00:29:31] Speaker 00:
wind up with a degraded magnet because by using the strip casting method you will end up with at least an intermediate powder, a coarse powder that has much more, I don't know, super rich rare earth content and then a lot of that is going to get

[00:29:51] Speaker 00:
swept away.

[00:29:53] Speaker 00:
And so therefore you're going to end up with a resultant magnet that's just not as effective.

[00:30:03] Speaker 00:
I'm out of time, but may I respond?

[00:30:06] Speaker 01:
That goes back to the notion of whether the person doing this is just an automaton blindly importing things without adjusting the parameters or thinking at all about what they're doing, but that's not what the board found.

[00:30:20] Speaker 01:
The board found

[00:30:21] Speaker 01:
that a person with skill in the art would know how to adjust a plan.

[00:30:26] Speaker 01:
If you employ strip casting, you would end up with a more homogenous material.

[00:30:31] Speaker 01:
And if you just blindly proceeded and then still got rid of, say, everything below five microns or two microns, well, now you would be getting rid of more, which is just a trade-off.

[00:30:42] Speaker 01:
Maybe you'd like to anyway, because it helps solve the oxidation problem.

[00:30:46] Speaker 01:
But a person with skill in the art would have well known

[00:30:49] Speaker 01:
Why are we getting rid of so much?

[00:30:50] Speaker 01:
Let's just tweak that parameter.

[00:30:52] Speaker 01:
Because we have less variation among the parameters, now we know we're in this nice band.

[00:30:59] Speaker 01:
So instead of getting rid of all these particles, the benefit of strip casting means now we just adjust that dial so we're getting rid of fewer of the small particles.

[00:31:07] Speaker 04:
Thank you, Mr. Bradley.

[00:31:08] Speaker 04:
I think we have a point.

[00:31:10] Speaker 04:
I'm hearing some voices here.

[00:31:13] Speaker 04:
I hope if anyone's responsible for them, through an electronic instrument, you'll

[00:31:20] Speaker 04:
Take care of it.

[00:31:21] Speaker 04:
I'll leave.

[00:31:22] Speaker 01:
It was actually before court began.

[00:31:24] Speaker 01:
There was some audio.

[00:31:25] Speaker 01:
Oh, there was.

[00:31:26] Speaker 04:
Thank you, Your Honor.

[00:31:27] Speaker 04:
Thank you.

[00:31:28] Speaker 04:
Mr. Herron, you have three minutes for a bottle if you need it.

[00:31:33] Speaker 03:
Thank you, Your Honor.

[00:31:42] Speaker 03:
To start with the claim construction issue,

[00:31:49] Speaker 03:
The column four to which the opposing council pointed in the spec does not answer the question.

[00:31:57] Speaker 03:
Column four simply is talking about the umbrella step of fine pulverization.

[00:32:02] Speaker 03:
It's not talking about the specific sub-step of high-speed flow of gas.

[00:32:07] Speaker 03:
So column four just doesn't answer the question.

[00:32:09] Speaker 03:
Every reference in the patent to high-speed flow of gas is to the jet milling component of the overall jet mill apparatus.

[00:32:20] Speaker 03:
The evidence, I do want to direct the court to the evidence that I was referring to from Dr. Lewis's testimony, which is at 971 to 72, where she says in paragraph 94 on 972 that using the strip-cast method in Hasegawa would require a significant amount of experimentation to adjust the composition of the alloy so that the final magnet has superior magnetic properties

[00:32:50] Speaker 03:
and that that would utilize capabilities beyond that of one of typical skill in the art.

[00:32:55] Speaker 03:
So we're not arguing that a person of skill in the art wouldn't know that something would need to be adjusted.

[00:33:03] Speaker 03:
But Dr. Lewis's explanation was that doing that adjustment would be beyond the capabilities of someone of ordinary skill in the art.

[00:33:12] Speaker 02:
What is this document, and where did it come in time in relation to the deposition?

[00:33:19] Speaker 03:
This is Dr. Lewis's declaration, and I believe it came before her deposition.

[00:33:24] Speaker 03:
But her deposition doesn't rebut this.

[00:33:26] Speaker 03:
All her deposition says is that a person of skill in the art would know that the jet milling parameters could be changed.

[00:33:36] Speaker 03:
It doesn't say in order to reduce the... It doesn't say what level of skill is required to do it.

[00:33:40] Speaker 00:
Exactly.

[00:33:43] Speaker 00:
Is there something that explains why it would

[00:33:47] Speaker 00:
be beyond the level of skill?

[00:33:50] Speaker 00:
I guess she says it would require a significant amount of experimentation.

[00:33:54] Speaker 00:
It's not quite saying.

[00:33:56] Speaker 00:
Well, I guess she does say beyond that of one of typical skill in the art.

[00:34:02] Speaker 03:
That's right.

[00:34:02] Speaker 02:
These are complicated processes.

[00:34:04] Speaker 02:
The deposition question and answer, can you look at that, 788?

[00:34:10] Speaker 02:
Would a person of ordinary skill at the time of the invention understand that the parameters could be adjusted to control the amount

[00:34:17] Speaker 02:
of superfine particles, yes.

[00:34:19] Speaker 03:
Would a person understand that they could be adjusted, yes.

[00:34:22] Speaker 03:
But that doesn't say that.

[00:34:23] Speaker 02:
Oh, somebody smarter than me could do it, but not me.

[00:34:25] Speaker 03:
Exactly.

[00:34:28] Speaker 03:
And so to get back to your question, Judge Shin, this is a complicated process.

[00:34:37] Speaker 03:
Anytime you change a component of the overall process, it requires adjusting.

[00:34:41] Speaker 03:
And this is all in her declaration where she explains that it requires adjustments

[00:34:45] Speaker 03:
along the way.

[00:34:46] Speaker 03:
And so that is beyond the capability of an ordinary person's skill in the art.

[00:34:51] Speaker 03:
But the overall point, Your Honors, is this is evidence that we put before the board.

[00:34:55] Speaker 00:
I'm sorry, you're out of time.

[00:34:56] Speaker 00:
Just the last question.

[00:34:57] Speaker 00:
Is there anything like a prior art reference that says something like this that Dr. Lewis said here in paragraph 94?

[00:35:06] Speaker 03:
I don't think there's any prior art reference that says that.

[00:35:10] Speaker 03:
But the point, Your Honor, is, and just to conclude, this is evidence that the board should have considered.

[00:35:15] Speaker 03:
And it just didn't consider it.

[00:35:16] Speaker 03:
And that's why a remand is required to send it back to require the board to consider it when it's making its findings.

[00:35:22] Speaker 04:
Thank you, Mr. Herron.

[00:35:23] Speaker 04:
We'll take the case on revisement.