[00:00:00] Speaker 01:
This argument is 162721, Ademitsu, Kosan Company versus SFC.

[00:01:09] Speaker 02:
May it please the Court?

[00:01:20] Speaker 03:
Good morning, Your Honors.

[00:01:22] Speaker 03:
In its institution decision, the Board found that the petitioner, SFC, failed to demonstrate that the combination of compounds and the claims of Itamitsu's patent is anticipated by the Eric Kane reference.

[00:01:33] Speaker 03:
Because Arikane doesn't disclose the combination of compounds that SFC selected from Arikane's disclosure, SFC was required to show something more, prove that the combination of compounds would have been obvious.

[00:01:45] Speaker 03:
That is, SFC was required to prove that even though a skilled arson could not immediately envisage the particular combination of compounds from Arikane, a skilled arsonist, nevertheless, looking at Arikane, would select a particular group of whole transport compounds

[00:02:00] Speaker 03:
together with a particular group of electron transport compounds for combination in a light emitting layer.

[00:02:07] Speaker 01:
However, there is no... Are you saying that the board was bound by its institution decision and could not, with a more fully developed record, view Arikanne differently?

[00:02:21] Speaker 03:
It was entitled to view Arikanne differently, but to present or rely on different bases for obviousness to which there was no opportunity to reply.

[00:02:30] Speaker 03:
In that sense, the board was bound to at least state what the grounds of obviousness were.

[00:02:37] Speaker 01:
And in this case... But really, let's talk about whether there was an opportunity to apply.

[00:02:42] Speaker 01:
So you agree that the two compounds, the HTE-ET, are disclosed in Arikanne, right?

[00:02:50] Speaker 01:
Your whole point is that there's also this ratio that was necessary.

[00:02:55] Speaker 03:
You can get by selecting different components to a subgroup of whole transport compounds in Ericon A that correspond to the compound A in claim, the claims of the MNC patent.

[00:03:06] Speaker 03:
And you can select particular groups to get to a group of electron transport compounds that correspond to component B in claim one.

[00:03:14] Speaker 03:
But there's no disclosure of the particular group together.

[00:03:18] Speaker 01:
But, so, you argued.

[00:03:21] Speaker 01:
in your response that Arakane actually teaches away then from just using the compounds without having the ratio, the energy ratio.

[00:03:30] Speaker 03:
Exactly.

[00:03:31] Speaker 03:
So as a precondition to selecting a particular whole transport compound to go together with a particular electron transport compound, it's necessary that they satisfy an energy gap relationship where the energy gap of the whole transport compound is lower than the

[00:03:45] Speaker 03:
energy gap of the electron.

[00:03:47] Speaker 01:
So are you saying that they were not allowed to respond to your teaching away argument by saying no it doesn't actually teach away because that's not a necessary requirement of the claims.

[00:03:59] Speaker 01:
So it doesn't teach away from the invention.

[00:04:02] Speaker 03:
Well either they responded by they didn't respond by saying that it doesn't well I mean they didn't respond by by I guess I would contrast a response with providing

[00:04:14] Speaker 03:
evidence in the first instance.

[00:04:15] Speaker 03:
So because they never address this aspect of the Eric Coney reference, this electron or the energy gap requirement, when they get later on, they just make a bold assertion that all the whole transport compounds would be expected to be less than all the electron transport compounds.

[00:04:33] Speaker 01:
So you're saying it was their job to anticipate a teaching way argument in their petition and say, and by the way, it doesn't teach a way?

[00:04:41] Speaker 03:
It's not really anticipating.

[00:04:43] Speaker 03:
I mean, the very core requirement of the Erikané reference is that the whole transport compound and the electron transport compound satisfy this energy gap relationship.

[00:04:52] Speaker 03:
So by leaving unaddressed this issue in their original petition, this was their chance to provide evidence and prove that that was the case.

[00:05:00] Speaker 01:
It might be an important aspect of what the Erikané reference was talking about.

[00:05:05] Speaker 01:
But the question is, what did the Erikané reference disclose as it relates to the claimed invention?

[00:05:11] Speaker 01:
and the claimed invention had nothing to do with the energy gap, right?

[00:05:15] Speaker 03:
Certainly, but if Aricana only suggests things that satisfy the energy gap relationship, and it teaches away from things that do not satisfy the energy gap.

[00:05:24] Speaker 00:
But I guess that's part of the debate.

[00:05:25] Speaker 00:
I mean, I understand you want to focus on the energy gap discussion in Arican, but the board read Arican more broadly.

[00:05:35] Speaker 00:
as teaching the notion that you could combine any formula one compound with any formula five or formula six compound.

[00:05:46] Speaker 00:
And so the board focused on that.

[00:05:50] Speaker 00:
Then I understand in response, you wanted to hone in on the energy gap or you wanted to hone in on example four.

[00:05:58] Speaker 00:
And in the end, the board concluded, well, those things don't

[00:06:04] Speaker 00:
detract from the broader teaching that Ericon suggests this combination of a formula one with a formula five slash six compound.

[00:06:16] Speaker 00:
And so then we're kind of left with, all right, so we have to give some deference to the board's reading of the reference and explanation on why it didn't find your counter arguments ultimately persuasive.

[00:06:32] Speaker 03:
So I think that

[00:06:34] Speaker 03:
The board didn't merely, it's not that they found our counter-arguments to be not persuasive.

[00:06:39] Speaker 03:
The, that conclusion that this reference generally suggests electron, you know, combinations of electron transport compounds and whole transport compounds.

[00:06:50] Speaker 03:
I think they, I think the board referred to it as.

[00:06:57] Speaker 00:
Formula one compound with a formula five or formula six compound.

[00:07:01] Speaker 03:
Right.

[00:07:02] Speaker 03:
But when the board is referring to that combination, it's just based on what they call this general proposition of putting together whole transport compounds and electron transport compounds.

[00:07:12] Speaker 01:
Well, but there's two different concepts here.

[00:07:14] Speaker 01:
One is, does it create a light emitting layer?

[00:07:17] Speaker 01:
And does it create a light emitting layer with the added durability and heat resistance that Arakanis says would be preferable?

[00:07:27] Speaker 01:
you concede that what they're saying is that you put these compounds together, and they would create a light emitting layer, right?

[00:07:35] Speaker 03:
Well, if you look at comparative example for, for example, in the Erikané reference, it does emit light.

[00:07:40] Speaker 03:
But to say that Erikané suggests the thing that it's distinguishing over is not looking at Erikané, the Erikané reference as a whole.

[00:07:47] Speaker 00:
So Erikané is not the first... Our role, or the fact finder's role, is not to necessarily

[00:07:56] Speaker 00:
read any particular prior art reference to define what that particular author of that prior art reference really, really cares about, it's more about trying to understand what was known in the art at the time.

[00:08:09] Speaker 00:
And the prior art reference serves as evidence of what was known in the art.

[00:08:15] Speaker 00:
And so what was known in the art was

[00:08:17] Speaker 00:
whatever is disclosed in that reference, including the fact that example four, maybe not Ericonian particulars prefer embodiment, nevertheless produces light.

[00:08:31] Speaker 00:
And that was known in the art.

[00:08:32] Speaker 03:
So I think there has to be a distinction between what is in the art and what is suggested by the art.

[00:08:42] Speaker 03:
So this is an obviousness assertion as to unpatentability.

[00:08:46] Speaker 03:
So if we look at the reference as a whole, if the parts that are comparative, if the parts that are disparaged can't be said to be taught away from, I mean, it renders the whole concept of teaching away meaningless.

[00:08:59] Speaker 03:
So of course, whenever a reference discloses something that it disparages, it does disclose it.

[00:09:06] Speaker 03:
It's there.

[00:09:09] Speaker 03:
That doesn't lead to the conclusion that it suggests it.

[00:09:11] Speaker 01:
No, but teaching away is more than a description of what's more desirable or less desirable.

[00:09:18] Speaker 01:
Teaching away has to be something more than that.

[00:09:22] Speaker 01:
It teaches away because it indicates that the combination would be problematic.

[00:09:28] Speaker 03:
And in this case, that's exactly what the language is.

[00:09:31] Speaker 01:
No, it doesn't say the combination doesn't create a light emitting layer.

[00:09:34] Speaker 01:
It says that the combination doesn't

[00:09:36] Speaker 01:
create a light emitting layer, it may not create the light emitting layer with the heat resistance and other positive properties.

[00:09:44] Speaker 03:
So, but again, just the comparative example for literally says that it's problematic in practical use when you use the different energy gap levels.

[00:09:51] Speaker 03:
So I understand what you're saying, but the only way that you would come to focus on just looking at the reference for a baseline teaching, including the prior art and the comparative examples,

[00:10:04] Speaker 03:
The only way you come to the conclusion where you're looking for that is if you start with our claims and then say, oh, well, the claims only require light emissions.

[00:10:12] Speaker 03:
So I don't need to go.

[00:10:13] Speaker 01:
That is what we have to be looking at.

[00:10:14] Speaker 01:
We have to be looking at what is disclosed via the claimed invention.

[00:10:20] Speaker 03:
I think that's putting the cart before the horse, though.

[00:10:22] Speaker 03:
So the reference suggests what it suggests.

[00:10:25] Speaker 03:
Now, when you figure out what the reference suggests, you can look at my claim and say, well, the claim doesn't require that, whatever the extra feature is.

[00:10:34] Speaker 03:
So it was enough for it to have suggested what it suggested.

[00:10:36] Speaker 03:
But if the reference doesn't suggest the combination beforehand, going back to my claim after you've discovered that it doesn't suggest the combination and then saying, well, it didn't have to suggest the combination because the claim doesn't require that.

[00:10:52] Speaker 03:
So I think I understand that what is suggested is compared to what is in the claim.

[00:10:58] Speaker 03:
But what is in the claim is not the precondition to determining what the scope of the teachings are.

[00:11:03] Speaker 03:
So if you look at the claim first and realize that you don't need to have this energy gap relationship, that's not a license to go hunting around in the parts that are in the prior art that's distinguished over or to hunt around in the comparative examples which are problematic.

[00:11:16] Speaker 01:
What about all the cases that we have that say that evidence concerning teaching away must relate to and be commensurate in scope to the claims at issue?

[00:11:25] Speaker 03:
The evidence must be commensurate in scope to the claims at issue.

[00:11:29] Speaker 01:
not to what the prior might have wanted to accomplish, but to what your claims claim.

[00:11:36] Speaker 03:
Right.

[00:11:37] Speaker 03:
But in this instance, we're talking about the burden of petitioner to show what was suggested by the reference.

[00:11:42] Speaker 03:
So if I argue that you teach away from my claim, the argument isn't that the reference teaches away from my claim.

[00:11:50] Speaker 03:
The argument is that the reference doesn't suggest these general combinations.

[00:11:57] Speaker 03:
You know, there haven't been any, there's no proof or there haven't been any discussions about whether or not what's claimed satisfies the energy gap relationship.

[00:12:04] Speaker 03:
The issue is, whether in view of this energy gap relationship, what would you conclude about what Eric Conney suggests?

[00:12:09] Speaker 03:
I'm creeping into my rebuttal time.

[00:12:11] Speaker 01:
Yes, why don't we hear from the other side.

[00:12:21] Speaker 02:
Good morning.

[00:12:22] Speaker 02:
I'm Blossil Roy of Alston & Byrd, and with me today is Beth Graver, also of our firm, on behalf

[00:12:27] Speaker 02:
of SFC co-limited the petitioner in the proceeding below.

[00:12:32] Speaker 02:
Contrary to Mitsu's arguments, the Board's decision is based on evidence and reasoning that was disclosed and consistent with the positions that were presented by SFC from the outset of the proceedings.

[00:12:44] Speaker 01:
Well, it really is slightly different from the argument that you made, right?

[00:12:48] Speaker 01:
You argued that every combination would result in the energy gap that was described.

[00:12:56] Speaker 02:
It's, it's slightly different.

[00:12:57] Speaker 02:
Your Honor, our position fundamentally was that the, that the Arikana reference disclosed preferred, as preferred embodiments, compounds for use in forming a light emitting layer that corresponded directly to the subject matter claimed in the six-fold ray pattern.

[00:13:17] Speaker 02:
And as a result, the person of ordinary skill in the art, as it would ordinarily do in looking at a prior reference, if directed to, to the

[00:13:25] Speaker 02:
if recognizing, upon recognizing the preferred embodiments and the fact that the reference teaches combining those compounds, a whole transporting compound and an electron transporting compound to produce a light emitting layer would find it obvious to do so using the preferred embodiments disclosed and taught in the reference.

[00:13:45] Speaker 01:
Even the board's description of your argument low was that.

[00:13:48] Speaker 01:
you said that what Araucani taught was that every single combination shown would result in the energy gap that Araucani wants.

[00:13:59] Speaker 02:
What we taught, what the presentation was on behalf of SFC was to identify in the Araucana reference first of all the compounds that Araucana described explicitly for use on the one hand is a whole transporting compound which were the

[00:14:17] Speaker 02:
the arylamine compounds having a condensed ring structure on the one hand.

[00:14:23] Speaker 02:
Then on the other, having a condensed ring structure, including the power compounds.

[00:14:25] Speaker 01:
Are you saying that the board's description of your argument is not accurate?

[00:14:27] Speaker 02:
I'm sorry?

[00:14:28] Speaker 01:
That the board's description of your argument was not accurate?

[00:14:31] Speaker 02:
Is that what you're saying?

[00:14:32] Speaker 02:
Your Honor, my difficulty is the board has more than one description of specific aspects of SFC's argument in different parts of its decision.

[00:14:40] Speaker 02:
And that's why I'm struggling a little bit, and I apologize.

[00:14:42] Speaker 02:
The overarching discussion and the primary discussion of the board's decision

[00:14:47] Speaker 02:
that we believe is pertinent here is the discussion, for example, at page 22 of its decision, where it says that the Araucana reference discloses that the Araucana reference teaches the use of arylamine compounds having a condensed ring structure corresponding to formula one of its disclosure.

[00:15:11] Speaker 02:
In addition, it discloses whole

[00:15:14] Speaker 02:
electron-transmitting compounds according to the structures of Formulas 5 or 6.

[00:15:21] Speaker 02:
And then it additionally found, as discussed in that section of its opinion, that the compounds according to Formulas 1, 5, and 6 of Aricana corresponded to the formulas of Roman numerals 5, 1, and 2 as claimed in the 6-4-8 patent.

[00:15:38] Speaker 02:
And as it states, and those are findings that are not challenged in this appeal.

[00:15:43] Speaker 02:
And as a result of those findings, what the board indicates in that section of its opinion, that it agrees with SFC's position that Aricana would at least suggest to a person of ordinary skill in the art that you could form an acceptable, light-emitting layer.

[00:16:00] Speaker 01:
So you don't agree that the argument at least developed slightly differently over time than what you originally put in the petition?

[00:16:13] Speaker 02:
What happened, Your Honor, is the Board's decision also addresses rebuttal points to particular arguments made by the patent owner.

[00:16:24] Speaker 02:
As the Board is entitled to do, and as this Court has said on numerous occasions, the Board is not handcuffed to only address and use arguments or positions from its original decision declaring, instituting the IPR or a specific argument made by the petitioner.

[00:16:42] Speaker 02:
But in this case, the board did adopt the rationale presented by SFC, which was that the Araucana reference disclosed as preferred embodiments compounds that corresponded to the compounds claimed in the 648 patent for the same specific application as claimed in the 648 patent to use to form in a mixture, to use in a mixture, which was what they told the patent office was unique, in order to form an electroluminescent device.

[00:17:10] Speaker 02:
That was our position.

[00:17:12] Speaker 02:
That was the position outlined in the petition.

[00:17:14] Speaker 02:
And while the patent owner in this appeal suggests that had it known about one specific point, rebuttal point, made by the board in its decision or another specific rebuttal point, that it might have offered evidence, declaration evidence, and it should have an opportunity to do some things of that nature.

[00:17:31] Speaker 02:
The fundamental fact is that the patent owner in this case, Itamitsu, did have the opportunity to present evidence in response to the petition.

[00:17:41] Speaker 02:
And after the board declared the IPR and instituted the IPR, it admits it had the chance to come forward with whatever declaration evidence it would have wanted to present if it had any to say, this is how a person of ordinary school would have viewed it.

[00:17:55] Speaker 02:
The claimed compounds, if it were true that the compounds claimed don't have the desired relationship, energy gap relationship, but it didn't present any evidence in response.

[00:18:06] Speaker 02:
And there's no evidence in this record of this proceeding.

[00:18:09] Speaker 02:
that the compounds that are claimed do not possess the desired energy gap relationship.

[00:18:14] Speaker 02:
The additional points made by the board are fundamentally correct when you say that, for example, at page 18, when it says, with respect to the argument generally by Irimitsu that it was necessary for petitioner to present evidence related to energy gap, the board made the fundamental observation that the claims don't recite any limitation with respect to energy gap between the compounds.

[00:18:36] Speaker 02:
And as, Your Honor, related with your questioning, the fact of the matter is, what's at issue here is the obviousness of the claim subject matter, which are compounds in the case, for example, of the electron transporting compounds.

[00:18:50] Speaker 02:
The compounds that are claimed, there are a handful of them for use as the whole transporting compound.

[00:18:55] Speaker 02:
Two of them are the anthracene derivatives.

[00:18:58] Speaker 02:
According to Araucana, they are formulas five and six.

[00:19:03] Speaker 02:
They are identical.

[00:19:05] Speaker 02:
to the electron transporting compounds that are claimed in the 648 patent.

[00:19:09] Speaker 02:
And there's a handful of them.

[00:19:11] Speaker 02:
Aricana teaches you after discussing the energy gap relationship in the background, it then goes on and tells you, and as the board found at page 22 of its decision, after discussing, after it discusses the energy gap relationship, then it goes on to tell you the preferred hole transporting compounds to use and the preferred energy transporting compounds to use by formula.

[00:19:35] Speaker 02:
And those formulas correspond, include compounds that correspond to the formulas claimed in the 648 patent for the identical application.

[00:19:46] Speaker 02:
So there's, this is a case where there is more, far more than substantial evidence in support of the findings that were made by the board in support of obviousness, that it would be obvious to combine these compounds as the Araucana reference teaches you.

[00:20:05] Speaker 02:
Now, if there are additional questions, let me make one comment with respect to their arguments on comparative example four.

[00:20:14] Speaker 02:
They refer to comparative example four as having significance here.

[00:20:19] Speaker 02:
But the compound used, the compounds used in comparative example four, which did produce green light, as the board found, they do function as an electroluminescent device.

[00:20:31] Speaker 02:
The compounds in comparative example four

[00:20:34] Speaker 02:
do not involve the use of the preferred compounds taught by aerocane for use in making the electroluminescent device.

[00:20:43] Speaker 02:
The whole transporting compound, it's undisputed in this appeal that the whole, that the whole transporting compound used for comparative example four is not an aerolamine compound having a condensed ring structure as aerocane specifically teaches you to use and as used and as claimed in the 648

[00:21:04] Speaker 02:
So as a result, when the patent owner argues based on comparative example four about the criticality of energy gap, things of that nature, whatever the person of ordinary skill in the art would see relative to comparative example four would not in any way affect, and they haven't shown that it would affect the person of skill in the art's use of the preferred embodiments that are specifically taught by Arikana for use in practicing the invention.

[00:21:30] Speaker 02:
Again, this is a case that is straightforward issues,

[00:21:33] Speaker 02:
They were presented in the petition.

[00:21:35] Speaker 02:
There's no dispute that the material sections of the Aricana reference disclosing each of these embodiments were identified in the petition in addition to disclosure teaching the use of these compounds, the whole transporting compounds and these preferred electron transporting compounds in a mixture to form an electroluminescent device.

[00:21:54] Speaker 02:
And the board correspondingly made findings based on that.

[00:21:57] Speaker 02:
And the patent owner did not present any evidence in rebuttal to that.

[00:22:03] Speaker 02:
So this isn't a case that presents any legitimate circumstances or equitable circumstances to now have some form of do-over to go back and have some further proceedings when, in fact, the patent owner had the opportunity to present the evidence.

[00:22:17] Speaker 02:
It might have liked to, any evidence it would have liked to present it on the issues, but did not.

[00:22:22] Speaker 02:
And then the board made findings consistent with the disclosure of the reference, holding the claims invalid as, as the reference clearly demonstrates it should have, it should have failed.

[00:22:31] Speaker 02:
evidence that again, or findings that are again, are supported by substantial evidence and are not disputed here.

[00:22:37] Speaker 02:
And with that, Your Honor, if you have any additional questions, I'd be glad to address them.

[00:22:42] Speaker 02:
Thank you.

[00:22:42] Speaker 02:
Thank you.

[00:22:43] Speaker 02:
Thank you.

[00:22:53] Speaker 03:
Your Honors, I'd just like to note that the way that the case started is

[00:22:58] Speaker 03:
an allegation of anticipation was made, and another allegation of obviousness was made.

[00:23:02] Speaker 03:
And the allegation of obviousness was, here the reference discloses compounds, whole transport compounds, here the reference discloses electron transport compounds, and because of Merck, you can put all of them together.

[00:23:16] Speaker 03:
And in the wake of that, as the case proceeded, it was pointed out that this is not a case like Merck.

[00:23:21] Speaker 03:
In the Merck case, this court found specifically

[00:23:25] Speaker 03:
that the reference was telling you that all of these references could be used together.

[00:23:30] Speaker 03:
Any reference A could be used with any reference B. And that's not what's going on in this case.

[00:23:34] Speaker 03:
This reference is explicitly telling you that not all A's can be used with all B's.

[00:23:39] Speaker 03:
So now that the rule of Merck is not so applicable, instead of there being some alternative rationale, all of these follow on rationales are ways to cram this back into Merck to make this another situation where one of ordinary skill in the art looking at the reference would say,

[00:23:56] Speaker 03:
Well, you would put all of A together with all of B because of this other reason.

[00:24:00] Speaker 03:
You would put all of A together with all of B because of this other reason.

[00:24:04] Speaker 03:
But there's no evidence other than what was presented at the outset.

[00:24:08] Speaker 03:
The only evidence is, here's A, here's B, Merck, make it work.

[00:24:12] Speaker 03:
And because that fact pattern, the fact pattern of the present case, doesn't fit what happened in Merck, there's no additional evidence.

[00:24:20] Speaker 03:
There's no evidence that would indicate

[00:24:22] Speaker 03:
that you would choose this specific group to be put together with this specific group.

[00:24:27] Speaker 03:
The only evidence is that the reference itself, there's no other reference was presented.

[00:24:33] Speaker 03:
So when council says we had the opportunity to respond to arguments with declaration evidence when we filed our response, what are we responding to?

[00:24:41] Speaker 03:
So the issues in this case about whether or not all of the compounds satisfy the energy gap relationship, these issues were never presented.

[00:24:51] Speaker 03:
And I just want to reiterate, Your Honor, is that to say that one of ordinary skill in the art, looking at Eric Kane, at the time of the President's invention, without the benefit of our claims, would look at this reference and say it's leading to these comparative examples that are said to be problematic in practical use, or would have been led to the prior art ones that were deemed to be insufficient in terms of lifetime and efficiency, I think that's just not how one of ordinary skill in the art would have looked at the Eric Kane reference in making a determination about obviousness.

[00:25:22] Speaker 03:
Are there any questions?