[00:00:01] Speaker 02: Next case is Honeywell International versus Mexicam, Amanco, and Jacobs Industries, 2016-1696. [00:00:11] Speaker 02: Mr. Locascio. [00:00:20] Speaker 05: Thank you, Your Honor. [00:00:20] Speaker 05: May it please the Court. [00:00:23] Speaker 05: For over a decade, the world searched in vain for a safe, stable heat transfer composition that would not contribute to global warming. [00:00:31] Speaker 05: In 2002, Hunting will discover the unexpected solution, that a combination of what was a disfavored, unsaturated refrigerant, HFO-1234YF, and a reactive lubricant, polyalkaline glycol or PAG, solved that problem. [00:00:47] Speaker 04: Council, I think we're aware of what we're dealing with here. [00:00:51] Speaker 04: Why don't you speak to whether [00:00:53] Speaker 04: the board relied on a new reference. [00:00:55] Speaker 04: And how did they use that reference? [00:00:57] Speaker 05: Sure. [00:00:57] Speaker 05: Thank you, Judge Rainer. [00:00:58] Speaker 05: This is the first of the two bases for this one for vacatur and remand. [00:01:02] Speaker 05: We'll get to obviousness on reversal in a second. [00:01:04] Speaker 05: But the board definitely relied on a new ground, and that ground was reliance on a muri. [00:01:10] Speaker 05: And to start out with, where the board relies on a new ground, obviously the applicant's entitled to respond to that. [00:01:16] Speaker 05: In this case, the muri reference, there's no testimony from anyone. [00:01:20] Speaker 05: or any indication of what one of skill in there would read that to be, because the examiner didn't rely on it. [00:01:24] Speaker 05: It's not mentioned in the RAN. [00:01:26] Speaker 05: It's not mentioned in the ACP at all. [00:01:28] Speaker 05: And then the board comes around to that and actually starts to become fact finder, as if this was an IPR and not a re-exam appeal, and relies on a mirror. [00:01:37] Speaker 05: And how they do so is, at base, comparison, the standard test, obviously, Biederman, Leitham compare the examiner's decision to the board's decision. [00:01:47] Speaker 05: And the examiner specifically said, [00:01:50] Speaker 05: in the RAN. [00:01:52] Speaker 05: Let me take one step back. [00:01:54] Speaker 05: The patent owner here provided expert testimony, declarations, Dr. Chambers, Dr. Thomas, speaking to the unpredictability that one believed would be the case when you use an unstable lubricant and an unstable refrigerant, and actual test data to show unexpected results on that score. [00:02:11] Speaker 05: The examiner rejected that. [00:02:12] Speaker 05: And the examiner rejected that, this is at A2580 in the RAN, by saying that the stability data presented [00:02:20] Speaker 05: do not contradict the fact that stability is an inherent property. [00:02:23] Speaker 05: The board, when they look at that exact question, specifically says, page A29, we disagree. [00:02:30] Speaker 05: And then the board goes on to say that the evidence that the examiner disregarded from Dr. Chambers, Dr. Thomas, was actually evidence, the invention is not obvious, and must be considered. [00:02:41] Speaker 05: That's in the board's decision. [00:02:44] Speaker 05: What the board then goes on to do is say all the actual evidence [00:02:49] Speaker 05: yet to get to a Muir, shows unpredictability of the miscibility and stability of this particular combination. [00:02:56] Speaker 05: And if you take all the Inagaki embodiments and you try them with a peg, embodiment one doesn't work. [00:03:02] Speaker 05: Embodiment four doesn't work. [00:03:05] Speaker 05: This particular 12-3 or 4YF works, and it's unexpected. [00:03:09] Speaker 05: Then what the board does at A30, A31, and A33 is say, but a Muir says the opposite. [00:03:17] Speaker 05: And so what the board says at A31 is, we have Chambers. [00:03:21] Speaker 05: However, Omur's statement that another HFO compound also having a double bond and highly reactive fluorine atoms shows superior thermal stability is a fact that we weigh against Chambers' assertion that the results of 1234YFNPEG were necessarily unexpected. [00:03:40] Speaker 05: Thus, as evidenced by Omur, a skilled artisan would have no [00:03:44] Speaker 05: would no more have expected failure with respect to the stability of combining hydrofluorolyphins with PEG. [00:03:50] Speaker 04: So did the board use OMER just to rebut the secondary considerations evidence? [00:03:55] Speaker 05: I would say no. [00:03:57] Speaker 05: But I think the argument now to try to save this, if you will, both, I think the board, I don't think that they included it only after the heading secondary considerations at pages 30 and 31 makes a difference. [00:04:09] Speaker 05: And I think to try to salvage it, that's the argument we see back from the athletes. [00:04:13] Speaker 05: It isn't because what Omir is being used for is Omir's the glue. [00:04:18] Speaker 05: Obviously for the obviousness rejection to start with, there has to be a reasonable expectation of success. [00:04:24] Speaker 05: Why would you pick these two things that no one picked for a decade to combine? [00:04:28] Speaker 05: And would you expect them to work? [00:04:30] Speaker 02: Well, decade and not. [00:04:31] Speaker 02: I mean, you've got what is it, inagaki, which has these five compounds, one of which is [00:04:39] Speaker 02: tetrafluoro propene and suggestion of a lubricant. [00:04:47] Speaker 02: And among the lubricants are polyalkylene glycols. [00:04:52] Speaker 05: I want to disagree with your perception of Inagaki on that for a second, Judge. [00:04:56] Speaker 05: I do want to come back just one bit on Judge Raina's question. [00:04:59] Speaker 05: Inagaki discloses a class of 30 compounds. [00:05:03] Speaker 05: Inagaki discusses four embodiments. [00:05:07] Speaker 05: It's called typically, one through four. [00:05:09] Speaker 05: Then at the end, Inagaki purports to provide data, for examples one through four. [00:05:15] Speaker 05: Example five, which is 1234YF, has no data, and it says it's almost similar results. [00:05:22] Speaker 05: There's nothing in Inagaki that says which of the 30 to pick or which of the five to pick and why you'd use them. [00:05:29] Speaker 05: And to your question about lubricants, Judge Lurie, the only reference at all, there has been, I think, by the board and now by the appellees, an overreading of Inagaki. [00:05:39] Speaker 05: There are statements in these briefs that say, Inagaki specifically says use embodiment five. [00:05:43] Speaker 05: It does not. [00:05:44] Speaker 05: Statements that say, Inagaki specifically says you can use it with a lubricant. [00:05:49] Speaker 05: What Inagaki says, the only reference at all to a lubricant is in cases where there are mixtures. [00:05:57] Speaker 04: Inagaki does specifically disclose HFO1234 as one of five examined compounds. [00:06:05] Speaker 04: Then it goes on and says, all you have to do now or next is add [00:06:08] Speaker 04: machine oil. [00:06:11] Speaker 04: Wouldn't somebody skilled in the art look at that and take that machine oil and see what other types of oil there are? [00:06:20] Speaker 05: What I'd say to that, Judge Reign, is Inagaki doesn't say take those and put a lubricant with them. [00:06:25] Speaker 04: What Inagaki actually says... No, but that's what somebody skilled in the art would understand. [00:06:31] Speaker 05: Well, what Inagaki... The question here and the invention in part is this particular combination, [00:06:38] Speaker 05: The miscibility, meaning how the two things, sort of an oil and water exercise, do they stay together or do they not stay together, of a refrigerant and a lubricant is unpredictable. [00:06:45] Speaker 05: The board recognizes that. [00:06:47] Speaker 05: It's undisputed that that is an unpredictable event. [00:06:50] Speaker 05: What Inagaki says about lubricants is if you want to improve the solubility, you can mix this class of HFOs with prior refrigerants like 134A, 143A, [00:07:07] Speaker 04: And those... Or P.A.G. [00:07:10] Speaker 04: under the McGidd reference? [00:07:12] Speaker 05: I think, pardon me, I think either I think I've misspoke or we have some confusion here, which is what Inagaki says is you can mix it with all the refrigerants is what I was saying. [00:07:21] Speaker 05: I was thinking about the lubricant. [00:07:23] Speaker 05: The only discussion of lubrication at all in Inagaki is you can combine, if you combine this class of refrigerants, [00:07:32] Speaker 05: with some of the earlier refrigerants, which have high global warming, which you don't want, putting aside that Inagaki is silent on global warming potential, that would improve solubility, which obviously begs the question of what's the solubility like of this actual class of HFOs with any particular lubricant. [00:07:49] Speaker 03: But to take your question. [00:07:51] Speaker 03: Discussing embodiment 1 of Inagaki, you say 1, 2, 3, 4 ZF has unacceptable toxicity and flammability. [00:08:01] Speaker 03: True. [00:08:02] Speaker 03: In the red brief, the response is, yeah, but that's not YF, and you don't have any specific evidence to support that. [00:08:15] Speaker 05: So I saw that, and I think it's an interesting effort to kind of flip this around, which is the argument, all the evidence of people of skill in the art, and the vast secondary considerations evidence in this case, is that this is a groundbreaking step change. [00:08:29] Speaker 05: And the reason Honeywell succeeded is because they looked [00:08:32] Speaker 05: not just where no one had looked, but where people were decidedly told not to look. [00:08:38] Speaker 05: And so they don't dispute, in the Deichen red brief, they don't even disagree with the idea that as a class of compounds, people thought unsaturated, meaning double bonded refrigerants, were not where you wanted to be if you wanted low global warming, safe for the environment, and particularly working with an unstable or reactive lubricant like a pack. [00:08:59] Speaker 05: The rebuttal to that is [00:09:01] Speaker 05: Okay, even if everybody thought that about the whole class, and even if you have experts saying, we knew this one was, and we knew this one was, no one at the time had examined 1234YF specifically. [00:09:12] Speaker 05: I don't think that changes anything. [00:09:14] Speaker 05: If everyone says, don't use this class of compounds, and we've tested a whole host of them. [00:09:19] Speaker 03: Well, that wasn't, I mean, they didn't say that exactly. [00:09:21] Speaker 03: They said you didn't present any evidence. [00:09:23] Speaker 05: What we did present, it's not surprising that we didn't present evidence that this particular combination that Honeywell discovered [00:09:31] Speaker 05: was toxic, flammable, or unstable, because the reality was what's the unexpected results here is that this particular combination went against what everyone thought about the class. [00:09:42] Speaker 05: So it's a bit of a catch-22. [00:09:43] Speaker 05: They're like, well, you didn't say it doesn't work. [00:09:45] Speaker 05: Well, obviously, we know it works now. [00:09:48] Speaker 05: But for a decade, no one looked there. [00:09:50] Speaker 05: And I think it's important to think. [00:09:51] Speaker 05: We're talking about what do people of skill in the art think in 1992 to 2002. [00:09:57] Speaker 05: Inagaki is a patent application followed by Deichen. [00:10:01] Speaker 05: It's Deichen's own work. [00:10:03] Speaker 05: And what do they do with it? [00:10:04] Speaker 05: If it's so obvious to those of skill in the art, they abandon it. [00:10:08] Speaker 05: And their only answer to that is, well, we didn't think there was enough commercial utility in doing so. [00:10:13] Speaker 05: They've already chosen to file a patent application. [00:10:15] Speaker 05: If it was so obvious that the fifth one described, but not the others, worked so well, why abandon it? [00:10:23] Speaker 05: I mean, that's certainly evidence that goes to skepticism and what those of skill in the art knew at the time. [00:10:29] Speaker 03: Not necessarily. [00:10:31] Speaker 03: What they say is, at the time, there was no call for this. [00:10:34] Speaker 05: Which isn't true. [00:10:36] Speaker 05: Because at the time, they argue that people only cared about ODP, ozone depletion, the prior refrigerant, 134A. [00:10:43] Speaker 05: Good for ozone depletion. [00:10:44] Speaker 05: Really bad. [00:10:45] Speaker 05: I mean, 1,600 times worse from global warming than ultimately what 1234YF proved. [00:10:51] Speaker 05: They say no one cared about global warming. [00:10:53] Speaker 05: A615, the only testimony on this. [00:10:57] Speaker 05: CFCs, the even class before that, was known to lead to high GWP in the 70s. [00:11:03] Speaker 05: And the UN framework on climate change is 1992. [00:11:06] Speaker 05: That starts talking about global warming potential. [00:11:09] Speaker 05: The Kyoto Protocol is 1997, also during this window. [00:11:13] Speaker 05: And no one's looking back at Inagaki, because Inagaki didn't know and didn't say anything about global warming potential. [00:11:20] Speaker 05: And then A1786. [00:11:23] Speaker 04: But the regulatory climate back at that period was different. [00:11:27] Speaker 05: I don't think, let's all step back to our own... Don't you believe in regulatory climate change? [00:11:35] Speaker 05: Well, if we step back for a second and think why do these companies, the biggest companies in the world, Dyken, Honeywell, Arkema, Mexicam, all the chemistry companies of the world are looking at all these refrigerants and they all know global warming is an issue. [00:11:50] Speaker 05: They don't decide, well, let's invent a better one that's 1,600 times, only when the government tells them to, because as was demonstrated here, after Honeywell demonstrated that this was now low global warming, safe, could be worked with a peg when everyone thought it couldn't, what happens? [00:12:06] Speaker 05: Commercial success. [00:12:07] Speaker 05: that's tied specifically to this, although the board disregards it entirely. [00:12:12] Speaker 02: Industry craze. [00:12:12] Speaker 02: You wanted to save some rebuttal time? [00:12:15] Speaker 05: I do. [00:12:15] Speaker 05: I want to finish this point, but I appreciate the courtesy of that, Ms. [00:12:18] Speaker 05: Lurie. [00:12:18] Speaker 05: And then we hear from people in the industry, what was considered impossible has become possible. [00:12:25] Speaker 05: And this isn't the run of the mill while we have some secondary considerations case. [00:12:29] Speaker 05: I mean, they were disregarded here, and we have all the players failing to find it, amazed and surprised, Dr. Bivens, who was at [00:12:37] Speaker 05: Dupont says, in 30 years, this was the invention in fluorine chemistry of my lifetime. [00:12:44] Speaker 05: And all of that's disregarded by the board as well. [00:12:46] Speaker 05: And so we think the board failed on obviousness. [00:12:49] Speaker 05: They found a motivation where there was one. [00:12:51] Speaker 05: And if at best, they backfilled it with a Muir. [00:12:53] Speaker 05: And there's no argument this is not a new ground of rejection. [00:12:56] Speaker 05: And a minimum should be vacated and remained, to be honest. [00:12:59] Speaker 05: Thank you. [00:13:01] Speaker 02: We will say the remainder of your time. [00:13:02] Speaker 02: Thank you. [00:13:03] Speaker 02: We move from Mr. Locascio to Mr. Lo Cicero. [00:13:07] Speaker 02: which Judge Wallach says is sort of Shakespearean. [00:13:13] Speaker 01: It does, Your Honor, and thank you for not confusing me. [00:13:15] Speaker 02: And you're going to take 10 minutes and yield five to Mr. Krumholz. [00:13:19] Speaker 01: That's right, Your Honor. [00:13:21] Speaker 01: Let me start by providing an answer to the two questions that Judge Raina asked. [00:13:25] Speaker 01: The first was, did the board use Omori only to rebut our evidence? [00:13:32] Speaker 01: And the answer is yes. [00:13:33] Speaker 01: In fact, the board in footnote 14, which appears at appendices 11 and 12, says that they used Omori just as evidence of the state of the art, and that Honeywell was on notice prior to the briefing at the board as to Omori's teachings as evidence of the state of the art. [00:13:53] Speaker 01: Umur was not used to reject. [00:13:55] Speaker 01: It simply was not. [00:13:56] Speaker 01: What happened is that we had the evidentiary... But isn't the problem here that Umur was not before the examiner? [00:14:05] Speaker 01: Well, it was before the examiner. [00:14:08] Speaker 01: It had been referenced by both Mexicam and Dyke and the two rejectors. [00:14:13] Speaker 01: Years earlier, it was simply not [00:14:16] Speaker 01: referred to in the examiner's right of appeal notice or rejections. [00:14:21] Speaker 01: So it's not that it was impossible. [00:14:23] Speaker 04: Well, if the board then comes along and refers to it in making this decision, isn't that basing a rejection on new grounds? [00:14:31] Speaker 01: I don't think so, Your Honor. [00:14:32] Speaker 01: I think that the rejection is in Agathe, which has been talked about, [00:14:36] Speaker 01: in view of Bivens and Acura and Majid and so on. [00:14:40] Speaker 04: I think that what happened... Those references were before the examiner. [00:14:45] Speaker 01: Before the examiner they were cited and they provide... the answer to your second question was whether a worker skilled in the art would seek to use a proper lubricant and the answer is of course yes. [00:14:57] Speaker 01: And you know the secondary reference that we've come to think highly of is the one that Mr. Locassio referred to which is Bivens. [00:15:04] Speaker 02: Council, I note that the board said we agree with the patent owner that similar stability of HFO 1234YF in PAG would not have been expected. [00:15:17] Speaker 02: In other words, you've got an unexpected property here. [00:15:21] Speaker 02: And then they come to the conclusion by disparaging properties as being inherent, pages 44 and page [00:15:33] Speaker 02: 15 of their opinion, the properties are inherent. [00:15:37] Speaker 02: One cannot obtain patentability based on inherent properties. [00:15:42] Speaker 02: But we're talking obviousness here. [00:15:45] Speaker 02: Inherent properties don't make novel something that is known. [00:15:49] Speaker 02: But here we're talking about obviousness. [00:15:52] Speaker 02: And that which is only inherent and not known does not defeat obviousness, because you don't know of it if it's only inherent. [00:16:04] Speaker 01: Yes, Your Honor, that's certainly an accurate statement of the law. [00:16:07] Speaker 01: But what happened here is this. [00:16:10] Speaker 01: Honeywell, after the examiner made a prima facie case of obviousness, and then because it's an examinational procedure, not an adjudicative, because it was inter-parties re-exam, then the burden properly shifted to Honeywell, not the burden of proof, but the burden of production. [00:16:25] Speaker 01: And so Honeywell put forth evidence of so-called unexpected stability. [00:16:30] Speaker 01: Let's take that one. [00:16:31] Speaker 01: And in response to that, [00:16:34] Speaker 01: To counter that, the rejectors, the requestors, rather, Mexicum and Deichen, put forth OMORI and said that stability would have been- Before the examiner? [00:16:47] Speaker 01: Yes, well, before the board. [00:16:48] Speaker 01: Before the board. [00:16:48] Speaker 01: Before the board. [00:16:50] Speaker 01: And the board disagreed. [00:16:52] Speaker 01: The judge said no. [00:16:54] Speaker 01: And the board concluded that the fact that a different HFO, the one disclosed in OMORI, [00:17:02] Speaker 01: was shown to be used with the peg lubricant. [00:17:06] Speaker 02: But what I'm getting at is the board seems to have overlooked what was clearly unexpected, whether it's the stability or flammability with a false legal premise, namely that you can't premise patentability on what is only inherent. [00:17:27] Speaker 02: And we're talking about obviousness. [00:17:29] Speaker 01: I think if that was error, then it was harmless error. [00:17:32] Speaker 01: Harmless error. [00:17:33] Speaker 01: Because I believe it's appropriate to look at it in the context of the motivation to combine. [00:17:40] Speaker 01: What had happened here, and Honeywell in its brief makes a big deal about thousands of compounds and thousands of combinations. [00:17:48] Speaker 01: And therefore, the whole thing, the whole ability to combine a refrigerant and a lubricant was unexpected. [00:17:54] Speaker 01: But that's not what happened. [00:17:55] Speaker 01: We're not talking about thousands of compounds. [00:17:57] Speaker 01: We're talking about an agatum. [00:17:58] Speaker 01: We're talking about an HFO. [00:18:00] Speaker 01: Which HFO? [00:18:01] Speaker 01: This one. [00:18:02] Speaker 01: The one that's recited in the claims. [00:18:04] Speaker 01: And we're talking about using lubricants. [00:18:07] Speaker 01: Which ones? [00:18:08] Speaker 01: Not any lubricants, but PEG lubricants. [00:18:10] Speaker 01: As the Bivens reference says, PEG lubricants are an acceptable alternative for use with HFC-based refrigerants, which is what we're talking about. [00:18:19] Speaker 01: So in that context, [00:18:21] Speaker 01: It was not unexpected. [00:18:22] Speaker 01: Now, I think that's right. [00:18:23] Speaker 01: I think an inherent property is relevant to the obviousness analysis. [00:18:30] Speaker 01: It's not relevant, I think, to the analysis of anticipation. [00:18:34] Speaker 01: But it is relevant, because it determines where one would have looked. [00:18:38] Speaker 04: What would have happened in this case if Aroo didn't come before the board at all? [00:18:43] Speaker 04: Let's say that had not been brought to the board. [00:18:46] Speaker 01: I think that the board would have said, [00:18:50] Speaker 01: that it was unpredictable. [00:18:53] Speaker 01: Remember, I don't think it would have said that stability, for example. [00:18:56] Speaker 04: Would we be affirming the board? [00:18:58] Speaker 01: I think so. [00:18:59] Speaker 01: I think so. [00:19:00] Speaker 01: I think it would just further support it. [00:19:01] Speaker 04: Well, the fact that it did appear before the board, and it was the basis for its decision, and it wasn't before the examiner, then shouldn't we reverse the decision of the board? [00:19:15] Speaker 01: And I don't believe that would be correct. [00:19:20] Speaker 01: If Omori was a ground of rejection and had not been and was a new ground of rejection, then the case should be reversed and remanded. [00:19:26] Speaker 01: That's what this court's precedent says, and that's only fair. [00:19:30] Speaker 01: But the cornerstone of a new ground of rejection is whether or not Honeywell had notice, which they did, and an opportunity to respond. [00:19:37] Speaker 01: Remember, Omori and its teachings were not unknown. [00:19:40] Speaker 01: It was not a surprise to Honeywell when this came up during the board proceedings. [00:19:45] Speaker 01: But they simply never chose to discuss it. [00:19:48] Speaker 04: I think what happened- The issue isn't whether it was at the board. [00:19:52] Speaker 04: And the issue isn't who had opportunity to address this at the board. [00:19:57] Speaker 04: The issue is whether it was before the examiner. [00:19:59] Speaker 01: It was before the examiner, just not relied on by the examiner. [00:20:03] Speaker 01: And there's no doubt that, as we said in the red brief, there's no doubt that the Mexican and Daikin had mentioned for Murray. [00:20:12] Speaker 01: I think what we have to look at, let's ignore Amore, as Your Honour suggests, if we ignore Amore, then what we would have had is the Board making a factual finding which is entitled to deference if it is supported by substantial evidence that stability is not unexpected. [00:20:30] Speaker 01: And as the Board said, if you look at Table 3, which shows YF, the prior YF by the way, and ZF and other of these HFOs, [00:20:41] Speaker 01: Some of the characteristics, fluorine and TAN, and dimerization, suggest that some of those suggest that YF is better. [00:20:52] Speaker 01: Some suggest that ZF is better. [00:20:54] Speaker 01: Some suggest that YE is better. [00:20:56] Speaker 01: So the boy simply said that this evidence does not overcome the very strong motivation to combine the prior art of teaching this refrigerant, not a different one, a similar one, one in the same class, [00:21:10] Speaker 01: But this refrigerant with this lubricant, as shown by Biven's machine in Acura. [00:21:18] Speaker 01: I mean, Biven says that you use PEG lubricants with hydrofluorocarbon compounds. [00:21:23] Speaker 01: And that's what we have here. [00:21:26] Speaker 03: The board also relies on Honeywell's expert, even without him already. [00:21:33] Speaker 01: That's right. [00:21:33] Speaker 01: That's exactly right, George. [00:21:35] Speaker 01: And Honeywell's expert. [00:21:37] Speaker 01: We can get into the weeds here whether dimers are generated. [00:21:42] Speaker 01: Even the board says that Honeywell's expert doesn't put forth evidence that the lack of or the failure to generate dimers is, in fact, evidence of expected stability. [00:21:53] Speaker 01: So it's a factual determination which we believe would have stood even without a worry. [00:22:00] Speaker 01: One other thing I'd like to say in the remaining minute or so is my worthy adversary [00:22:07] Speaker 01: talked about Deichen's failure to pursue prosecution of Inagaki. [00:22:11] Speaker 01: Well, and he says it couldn't be that important if Deichen didn't go forward. [00:22:18] Speaker 01: On the other hand, as I think Judge Wallach suggested, there's a declaration of Dr. Shibunuma. [00:22:24] Speaker 01: And Dr. Shibunuma explains what happened. [00:22:26] Speaker 01: He explains that they didn't pursue Inagaki. [00:22:28] Speaker 01: Deichen didn't. [00:22:29] Speaker 01: Because at the time, R134A was the lubricant of choice. [00:22:35] Speaker 01: And it would have been so throughout most of the life of Inagaki, and they made the decision not to do it. [00:22:43] Speaker 01: And of course that testimony is unchallenged. [00:22:45] Speaker 01: Now what happened is that the global warming regulations didn't begin to be considered until the early 2000s, which is nine years after Inagaki was filed. [00:22:59] Speaker 01: So in fact, Inagaki, if they had done [00:23:03] Speaker 01: If they had pursued it, it would have expired in 2010. [00:23:06] Speaker 01: So Dr. Shibunuma's testimony is un-rebutted. [00:23:12] Speaker 01: It demonstrates that these so-called objective considerations are insignificant and that the boy's decision should be affirmed on the basis of substantial evidence. [00:23:24] Speaker 02: Thank you. [00:23:24] Speaker 02: Thank you, counsel. [00:23:25] Speaker 02: Mr. Krumholz has five minutes. [00:23:27] Speaker 00: Thank you, Your Honor. [00:23:34] Speaker 00: First time I ever walked up to this table, I tripped over my suitcase, so I'm trying to be careful. [00:23:38] Speaker 00: So far, so good. [00:23:39] Speaker 00: So far, so good. [00:23:41] Speaker 00: You fell into good company. [00:23:43] Speaker 00: Thank you, sir. [00:23:45] Speaker 00: I fully support everything my friend over here just said to you gentlemen. [00:23:51] Speaker 02: Including when he said that, when he agreed that the board made error, he called a promise. [00:23:58] Speaker 00: Well, I didn't finish my sentence, sir, but I appreciate the interjection, because I did want to say, [00:24:04] Speaker 00: Right up and told. [00:24:06] Speaker 00: But I don't believe the board made any error, because what we have here is the board considered the two main references, which are Inagaki and which are Bivens. [00:24:16] Speaker 02: But how can unexpected properties be ignored in an obviousness consideration when they're inherent? [00:24:26] Speaker 00: I think you first start with when you look at the arguments that were made by Honeywell. [00:24:32] Speaker 00: Honeywell repeatedly argues that it was unexpected that this would have lower global warming potential. [00:24:37] Speaker 00: That only invokes the refrigerant 1234YF, which is expressly disclosed in Inagaki. [00:24:44] Speaker 00: Honeywell repeatedly argues time and time again that it's the refrigerant properties that are what are unexpected, and that solely invokes 1234YF. [00:24:54] Speaker 02: Those are inherent properties of that refrigerant. [00:24:57] Speaker 02: Unstability and flammability properties unexpected and useful? [00:25:03] Speaker 00: I would agree that they're useful. [00:25:06] Speaker 00: But you have a specific reference that says, in Bivens, when you have an HFC refrigerant, you do not elect, as you used to under CFC refrigerants and go with mineral oils. [00:25:17] Speaker 00: You elect, and these are Bivens words, you elect the use of a PAG or a POE lubricant. [00:25:23] Speaker 00: a category of those lubricants. [00:25:26] Speaker 00: And we have here, we have an HFC. [00:25:29] Speaker 00: It's made of hydrogen fluorine and carbon. [00:25:31] Speaker 00: It's expressly disclosed in Embodiment 5 of the Inagaki reference. [00:25:34] Speaker 00: It's expressly disclosed as being compatible with lubricants. [00:25:38] Speaker 00: It's expressly disclosed as being mixable with 134A, which the record below clearly shows is used with PAG lubricants. [00:25:45] Speaker 00: And in fact, that Acura reference shows it [00:25:47] Speaker 00: expressly being used with Pag lubricants, the most common type of Pag lubricant in an automobile, ND8. [00:25:54] Speaker 04: Counselor, the board said that it disagreed with the examiner, with respect, with the examiner's reasoning on stability. [00:26:02] Speaker 04: Is that error? [00:26:04] Speaker 00: That the board disagreed with the examiner's reasoning on stability? [00:26:07] Speaker 04: I mean, it did say that. [00:26:09] Speaker 00: Yeah, yeah, but I mean, I don't think that's... So where does that take you? [00:26:12] Speaker 00: It takes me to the point that I think the board gave [00:26:16] Speaker 00: was far harder on the examiner's arguments than were correct. [00:26:21] Speaker 04: But I don't think the board made an error. [00:26:22] Speaker 04: Didn't it rely on Omuri in making that statement? [00:26:26] Speaker 00: Omuri was brought into this case solely to rebut the position that Honeywell took after the fact, where they made the broad statement that HFOs would never have been thought to ever be used with a PAC. [00:26:37] Speaker 00: That was the broad statement that was made. [00:26:40] Speaker 00: We brought that in to say that is not true, that it's expressly not true. [00:26:43] Speaker 00: This was before the board. [00:26:44] Speaker 00: And that is expressed, that was before the board. [00:26:46] Speaker 00: I made that argument, excuse me, I raised that moral argument in response. [00:26:50] Speaker 04: These arguments were not made before the examiner. [00:26:53] Speaker 00: We brought up Omuri before the examiner. [00:26:55] Speaker 00: Omuri was... Is that a yes or no? [00:26:58] Speaker 00: Omuri, they were arguments that were made before the examiner because Omuri was specifically identified in... The examiner did not rely on Omuri to make a decision. [00:27:08] Speaker 00: Because he had the great prior art of Inagaki, any of the great prior art of Bivens, he did not need to bring in Omuri. [00:27:15] Speaker 00: Remember, we have really strong prior art here. [00:27:19] Speaker 00: And we have embodiment five of Inagaki, which is the exact same chemical, one, two, three, four YFs. [00:27:26] Speaker 04: So the examiner didn't have to rely on it, but the board did rely on it. [00:27:30] Speaker 00: The examiner didn't have to rely on it. [00:27:32] Speaker 00: The board chose to bring it up because I may have oversold it when I made my oral art. [00:27:38] Speaker 04: Isn't that new grounds of rejection? [00:27:40] Speaker 00: No, it is not new grounds of rejection. [00:27:42] Speaker 00: It is simply identifying in the secondary considerations that the state of the art clearly showed that people prior to the date of invention would have mixed an HFO with a PAG lubricant. [00:27:56] Speaker 00: I'm sorry if I'm speaking too loudly. [00:27:57] Speaker 00: Sometimes my voice starts to rise, and I don't mean to give offense if I do. [00:28:03] Speaker 00: I do want to raise one other issue really quick. [00:28:05] Speaker 00: I want to put on the record my objection on the basis of judicial estoppel [00:28:09] Speaker 00: The claims 1 through 25 should be stricken, and they should not be preceded with, based upon the absolute representations made by Honeywell to receive a stay of their case against Arkema in Philadelphia. [00:28:23] Speaker 00: They said they would never, ever go forward with those original claims. [00:28:26] Speaker 00: They went back on their word with the federal judge. [00:28:29] Speaker 00: I don't think they should be allowed to proceed. [00:28:31] Speaker 00: I have 14 seconds left if you have another question. [00:28:34] Speaker 02: You're down to 10, and it sounds like you're waving. [00:28:37] Speaker 00: Thank you very much. [00:28:38] Speaker 00: Thank you very much. [00:28:39] Speaker 00: We ask that the decision be affirmed. [00:28:41] Speaker 02: Thank you. [00:28:41] Speaker 02: Mr. Locascio has a couple of minutes plus. [00:28:45] Speaker 05: Thank you. [00:28:49] Speaker 05: There's no avoiding that this is a new ground of rejection to Judge Raina's point. [00:28:53] Speaker 05: And let's just talk about what the case law says. [00:28:55] Speaker 05: They say it's only about secondary considerations. [00:28:57] Speaker 05: And well, it was the thrust of it, or you were on notice. [00:29:00] Speaker 05: There's no case anyone points to that would say that's OK. [00:29:05] Speaker 05: and it doesn't support a remand. [00:29:06] Speaker 05: And the reasons are obvious. [00:29:07] Speaker 05: Because under Biederman, Rambas, Steppen, all of them, in those cases, there wasn't even a new reference. [00:29:14] Speaker 05: Those references were all discussed by the examiner. [00:29:17] Speaker 05: And that wasn't enough. [00:29:18] Speaker 05: Those were new grounds for rejection. [00:29:19] Speaker 05: In this case, the examiner never said boo about it. [00:29:22] Speaker 05: And if he had, the process, the way it's supposed to work is then Honeywell would put in descriptions and evidence about what amuri is. [00:29:30] Speaker 05: Amuri is not a C3. [00:29:31] Speaker 05: It's a C4 compound. [00:29:33] Speaker 05: Amuri sterically hindered. [00:29:35] Speaker 05: all things that no one in skill in the art has ever put in the record. [00:29:38] Speaker 05: And instead, we have the board saying, well, we think this sentence that says relative stability flips all the expert testimony on its head. [00:29:46] Speaker 05: So it is a new ground, and it should be at minimum reversed and remanded. [00:29:50] Speaker 05: With respect to Inagaki, the statement footnote 14 says it was, we had notice. [00:29:58] Speaker 05: We respond to the rejections of the examiner. [00:30:00] Speaker 05: That's how it works for the examiner. [00:30:03] Speaker 05: And when you get to the board, you are appealing a decision from an examiner. [00:30:06] Speaker 05: Notice might be relevant in an IPR. [00:30:09] Speaker 05: It is not the standard in any sense. [00:30:11] Speaker 05: And there's no case that says it is for re-examination. [00:30:15] Speaker 05: Judge Laurie, your question, I think, hits this whole problem on the head of what the examiner did and what the board did. [00:30:22] Speaker 05: Inherency is all fine and well for anticipation. [00:30:27] Speaker 05: We have a combination. [00:30:28] Speaker 05: And by the board's own acknowledgment, [00:30:30] Speaker 05: This is not found in the prior art. [00:30:32] Speaker 05: You have to pick two references. [00:30:33] Speaker 05: You have to pick two references. [00:30:35] Speaker 05: And we think starting with these two and saying, well, would you figure out that they're compatible is not the right exercise. [00:30:41] Speaker 05: But here, both the examiner, twice, once rejected by the board, and then the board to overcome it at the end of the day says, we think stability or miscibility is inherent. [00:30:51] Speaker 05: That's wrong as a matter of law, because all the testimony is it was not known. [00:30:55] Speaker 05: And what was not known [00:30:58] Speaker 05: cannot be inherent. [00:30:59] Speaker 05: So we think there should be a reversal, not just a remand. [00:31:02] Speaker 02: Well, it may be inherent, but it doesn't contribute to obviousness. [00:31:07] Speaker 05: It does not support the obviousness rejection, to be sure. [00:31:10] Speaker 05: And what people of skill and the art knew at the time matters. [00:31:14] Speaker 05: And the last point I'll make with your indulgence is the board turns obviousness on its head. [00:31:19] Speaker 05: It says the evidence from the patent owner shows it's unpredictable. [00:31:22] Speaker 05: But then, via Muray, they say, everything's unpredictable. [00:31:25] Speaker 05: And if everything's unpredictable, the board's view is, nothing's patentable. [00:31:29] Speaker 05: And that's not this court's law. [00:31:31] Speaker 02: Thank you. [00:31:32] Speaker 02: Thank you, counsel. [00:31:32] Speaker 02: We'll take the case under advisement.