[00:00:00] Speaker 03:
Monsanto Technology LLC vs. EI Dupont & Nemours

[00:00:32] Speaker 05:
May it please the court?

[00:00:33] Speaker 05:
James Nohler on behalf of Monsanto.

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Inherency is an exacting legal standard.

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It requires proof that the prior art's disclosure necessarily or inevitably lead to the claimed inherent effect.

[00:00:47] Speaker 00:
Now there was simply no- Let me take you straight to the issue that concerns me in this case, and that's the use of the Kenny declarations and their admissibility and their applicability in this case.

[00:01:02] Speaker 00:
and whether they, in fact, expand the disclosure of the specification.

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Can you address that?

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I mean, it seems that the Kenny declarations, it's unpublished data.

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And if it's unpublished data, that did not exist at the time of the invention, so the posita doesn't have access to this, then the use of the Kenny declaration simply adds limitations.

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they constitute missing limitations.

[00:01:36] Speaker 05:
That's exactly our point, Your Honor, and it may be helpful if I just show you why that is.

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Because this is, Kenny, in his second declaration, admits that expressly.

[00:01:45] Speaker 05:
He says that is what he's doing.

[00:01:47] Speaker 03:
He says he's adding the limitations.

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Well, no, no, no, I'm not arguing that the Kenny declarations are prior art.

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The question is whether they show that the method was inherent in other prior art.

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And if you look at the claims here,

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which talk about obtaining a soybean plant, which we can call a progeny.

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It's the first generation that's within the scope of the claim, right?

[00:02:13] Speaker 03:
The first generation progeny is within the scope of the claim?

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Yes.

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And when you say that the Kenny only showed one progeny,

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That's not correct, right?

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At the first generation, there are over 40.

[00:02:27] Speaker 03:
Isn't that correct?

[00:02:27] Speaker 05:
Well, it depends on what claim we're talking about, Your Honor.

[00:02:30] Speaker 05:
For some of the claims, for example, some of the dependent claims, the claims were rejected on the basis of one... Well, let's take just claim one first, okay?

[00:02:39] Speaker 03:
Yes.

[00:02:39] Speaker 03:
You say that there's only one progeny.

[00:02:41] Speaker 03:
That's not correct.

[00:02:43] Speaker 03:
The Kenny Declaration shows multiple progeny, over 40, right?

[00:02:48] Speaker 05:
The Kenny declaration shows multiple progeny of a particular generation.

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So if we look at the declaration, which is where it's not one, it's more than 40.

[00:02:59] Speaker 05:
I'm sorry.

[00:02:59] Speaker 05:
Are you saying more than 40 within the scope of the claim?

[00:03:03] Speaker 03:
Yeah, because the claim is not this claim is includes the first generation, right?

[00:03:09] Speaker 03:
The claim includes the first generation.

[00:03:11] Speaker 03:
And Kenny's declaration shows that in the first generation there are more than 40, doesn't it?

[00:03:15] Speaker 05:
No, it doesn't.

[00:03:15] Speaker 03:
It does not?

[00:03:16] Speaker 03:
No.

[00:03:17] Speaker 05:
And this is what I want to point your honor to.

[00:03:19] Speaker 05:
I don't understand how you can say that.

[00:03:21] Speaker 05:
Well, let me explain it to you.

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Dr. Kenny is not actually presenting data for the first generation of the soybean plants in his declaration.

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So this is appendix 360.

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This is his declaration.

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The second declaration.

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where he is purporting to identify information that was left out of the patent's disclosure.

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And he actually says the data set, and this is in the footnote on Appendix 360, this data set represents the fatty acid profile for seeds from the F2-3 generation of plants from which the plants summarized in Table 12 were self-pollinated to produce F3-4 progeny.

[00:04:03] Speaker 05:
Now, if you go back to the patent,

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The F23 is not the first generation as I understand it.

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My understanding is the F12 would be the first generation.

[00:04:14] Speaker 05:
This is describing another generation.

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And what he's describing is a generation that's wholly absent from the disclosure of the Booth patent at all.

[00:04:24] Speaker 05:
This generation is not present in the Booth patent.

[00:04:27] Speaker 03:
But wait a second.

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What we're trying to figure out here is whether crossing the two parent lines

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produces progeny that are within the claims, right?

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Right.

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And you say repeatedly in your brief that this crossing in Booth only produced one progeny.

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And I'm trying to understand what the basis for that contention is.

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So the board

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identified for some of the dependent claims, and I think where your honor is looking at my brief is when I'm addressing several of the dependent claims.

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There was one progeny plant that the board identified in the Kinney Second Declaration that allegedly met the claim requirements.

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So you admit that there's more than one progeny within the first claim?

[00:05:14] Speaker 05:
Yes, I'm not contesting that, and if my brief was unclear about that, I'm sorry.

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I believe that the board had identified 15 progeny plants within one cross.

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So we're doing a cross.

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then we're collecting progeny.

[00:05:30] Speaker 03:
And then in Dr. Kinney's... And the claims don't require any specific number of progeny as a result of the cross, correct?

[00:05:38] Speaker 03:
Granted.

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The claims don't require any particular progeny, but the progeny has to result from the performance of the claim steps.

[00:05:45] Speaker 03:
Correct.

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But what I'm not understanding is how can it be that the claims themselves don't require that you obtain the same progeny every time, and that they're satisfied if you

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obtained some progeny and you say, oh well, the prior art method doesn't come within the claims because they didn't produce the same progeny every time.

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I'm having trouble following that.

[00:06:12] Speaker 05:
Sure.

[00:06:12] Speaker 05:
It's implicit in the definition of inherency, I think, Your Honor.

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Inherency requires something inevitable to happen.

[00:06:18] Speaker 03:
But if your own claim doesn't produce it every time, how can you say that prior art that does the same thing is not anticipatory?

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But it's not the same thing, Your Honor.

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it's not the same method as in the prior art.

[00:06:29] Speaker 03:
Well, that's a different question.

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But your argument, and we need to address that, but your argument is that it's not anticipatory because it doesn't produce qualifying progeny every time.

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That can't be a distinction because your own claim doesn't require producing the same progeny every time.

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And indeed, obviously, contemplates that will only happen some of the time.

[00:06:54] Speaker 05:
right your honor but i think we're we're we're confusing two issues i think the first issue is what does the prior art disclosed the prior art has to inevitably result in the production of soybeans that are within the clinton that's my problem i don't understand the inevitably since your own claim doesn't require inevitability it doesn't require inevitability but that's a different issue that's what the claim requires your honor it's not we're we're looking at the prior art indeed standard for

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Inherency is inevitability.

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So the prior art must show inevitability in order to inherently disclose anything.

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That is the standard.

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If the prior art does the same thing that your own method does, which is not inevitably producing this progeny, then why isn't it anticipatory?

[00:07:42] Speaker 05:
It's not because it's not shown to result from the steps of the claimed method, Your Honor.

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The board was mixing and matching two different data sets.

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There is no express disclosure in Booth of the claimed method.

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No denying that.

[00:08:03] Speaker 03:
No denying that.

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The board found that it did disclose the method of crossing these two parent lines.

[00:08:08] Speaker 03:
You have an argument about whether 4% is about 3%, but put that to one side, Booth discloses crossing the two parent lines, right?

[00:08:18] Speaker 05:
Booth discloses crossing a D2T-containing line

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and a fan allele containing line, which may have four or five, depending on which fan allele line you use.

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And it also discloses a D3A gene containing line.

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The D2T D3A gene containing line is not established to result in any progeny ever within our claims.

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The board found that it disclosed crossing the fan allele line with the D2T, whatever it is.

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Right?

[00:08:52] Speaker 05:
The board stated in its opinion that it believed the D2T fan-oleo line, as shown by Dr. Kinney's secret data, resulted in at least some progeny within some of the claims.

[00:09:07] Speaker 03:
They found that the patent showed crossing the two parent lines, right?

[00:09:15] Speaker 03:
Forget about what the result of that was.

[00:09:17] Speaker 03:
That is a different question that's addressed in the Kinney declarations.

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but that what the board found is that the prior art patent discloses crossing the two parent lines, the Fanil-Lille line and the 2DT.

[00:09:29] Speaker 05:
The board found an express disclosure of the crossing step, but not the obtaining step.

[00:09:35] Speaker 03:
Okay, so you admit that the prior art shows the crossing step, putting aside the 3% and 4%, right?

[00:09:43] Speaker 05:
Well, what we're mixing and matching things, right, your honor, but I don't deny D2T falls within the scope

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of the one of the lines in the cross, I do deny the fan allele line does, because the claim talks about about 3%, not 4%.

[00:09:59] Speaker 03:
OK, but put aside the 3% and 4%, and understand that argument, and we'll turn to that.

[00:10:05] Speaker 03:
But the prior art patent does show crossing the two parent lines, including the fan allele line.

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right?

[00:10:14] Speaker 03:
The D2T, whatever it is, and the fan allele, it shows the crossing of those two lines, right?

[00:10:19] Speaker 05:
It shows an alternative crossing pattern of either a fan allele line or a D3A line.

[00:10:26] Speaker 03:
And the board found that that showed the crossing of the fan allele line, right?

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The board found that the fan allele line was about 4% and that expressed the limitation.

[00:10:36] Speaker 03:
No, no, forget about 4%.

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I'm just trying to get, to put that to one side for the moment.

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I'm trying to be as responsive as I can.

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that the prior art patent shows the crossing of the D2T and the Fanileo lines, right?

[00:10:51] Speaker 03:
That is my understanding.

[00:10:52] Speaker 03:
Okay.

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And you contend that's not supported by substantial evidence?

[00:10:56] Speaker 05:
I contend that there's no evidence that that produces the claimed project.

[00:11:00] Speaker 05:
That's a different question.

[00:11:01] Speaker 03:
I'm talking about crossing the two lines.

[00:11:03] Speaker 05:
I am not disputing that D2T meets the definition of the second line in Monsanto's claimed cross.

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I am disputing the fan allele meets the definition of the first... Because of the 3 and 4 percent.

[00:11:18] Speaker 05:
Because of the 3 and 4 percent issue.

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But if you ignore the 4-3 issue, then the board has found an express disclosure of both of the parents in the cross.

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What the board has not found anywhere in Booth is the second step, the obtaining step.

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And you only get to the obtaining step

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by going through Dr. Kinney's declarations and resorting to secret data.

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And he admits in his declaration that's what he's doing.

[00:11:46] Speaker 01:
I'm now in my rebuttal time.

[00:11:50] Speaker 01:
You call it secret data.

[00:11:52] Speaker 01:
It doesn't look like secret data to me.

[00:11:55] Speaker 01:
It looks like data that wasn't discussed.

[00:11:57] Speaker 01:
There's a difference.

[00:12:00] Speaker 01:
It wasn't kept as a secret in any fashion.

[00:12:04] Speaker 05:
Well, I think it was until it was disclosed in this declaration.

[00:12:07] Speaker 05:
It's not disputed that it was in DuPont's internal files, and it wasn't available to the public, Your Honor.

[00:12:12] Speaker 01:
And then it was part of his work, and he chose to rely on other parts of his work.

[00:12:17] Speaker 01:
But that doesn't make it secret.

[00:12:19] Speaker 01:
It makes it undisclosed to the public, which is different.

[00:12:23] Speaker 01:
They weren't maintaining a trade secret, for example.

[00:12:26] Speaker 05:
I don't know if they were or not, Your Honor, but I've called it secret because it was not available to the public.

[00:12:31] Speaker 05:
I didn't discern the distinction you're drawing, but that is the reason I call it secret.

[00:12:34] Speaker 01:
I read it as, in some sense, pejorative

[00:12:37] Speaker 05:
I did not intend to be pejorative about it.

[00:12:40] Speaker 05:
It was more alliterative than anything, Your Honor.

[00:12:42] Speaker 05:
Let's put it that way.

[00:12:44] Speaker 03:
And if I may reserve the... Why don't you address, before you sit down, the three and four percent issue?

[00:12:50] Speaker 05:
Three is not four.

[00:12:52] Speaker 00:
It's basically there's nothing... Is it about four or close to?

[00:12:55] Speaker 05:
Three is... Around four?

[00:12:59] Speaker 05:
The nature... Can I answer it this way, Your Honor?

[00:13:02] Speaker 05:
The nature of the evidence that was presented in the expert declarations

[00:13:06] Speaker 05:
was based on statistical deviations of measuring lines.

[00:13:12] Speaker 05:
Monsanto's expert said it was about one or two percent.

[00:13:16] Speaker 05:
This is the Harrison Declaration.

[00:13:18] Speaker 05:
Dupont's expert relied on a standard deviation of wild type soybeans, which have around seven or eight percent.

[00:13:26] Speaker 05:
And so he's using an inflated number, and he's calculating the standard deviation as being 0.8.

[00:13:33] Speaker 05:
And the only way that they got up to four

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Dupont is they rounded up the number.

[00:13:40] Speaker 05:
Dr. Kinney literally took his standard deviation and just rounded it up to four.

[00:13:44] Speaker 05:
And so that was his opinion.

[00:13:46] Speaker 05:
I'm going to take an inflated deviation and round it up to four.

[00:13:49] Speaker 05:
But if you actually use the calculated standard deviation that Dr. Kinney and Monsanto's expert Dr. Harrison provided, you don't get to four.

[00:13:59] Speaker 00:
Even so, I mean, the board

[00:14:02] Speaker 00:
construe the term about 30% less to also encompass 4% and cited intrinsic evidence.

[00:14:12] Speaker 05:
The problem is the intrinsic evidence that the board cited on that issue, Your Honor, was not based on any statistical metric that any of the party's experts had identified.

[00:14:24] Speaker 03:
Forget about the experts.

[00:14:25] Speaker 03:
We're talking about intrinsic evidence.

[00:14:27] Speaker 03:
They found it in your own patent, right?

[00:14:31] Speaker 05:
If you look to that patent, there is a description of that line as having around 3.35 or thereabouts.

[00:14:37] Speaker 05:
I can get you the exact number.

[00:14:39] Speaker 05:
Mean.

[00:14:39] Speaker 05:
We're talking about.

[00:14:41] Speaker 05:
The mean is typical.

[00:14:42] Speaker 03:
But what they found was that the prior art reference that was mentioned in the patent includes a range that goes up to 4.1%, right?

[00:14:54] Speaker 05:
If you look to the highest outlying data point, you get up to 4.1%, your honor.

[00:15:01] Speaker 05:
But that was not what anyone... So your answer is yes.

[00:15:04] Speaker 05:
My answer is that is not a reasonable disclosure of that Wilcox paper and it wasn't cited to redefine about 3% to include something that goes out to the highest data point.

[00:15:15] Speaker 05:
We're talking about about.

[00:15:17] Speaker 05:
We're talking about statistically reasonable metrics.

[00:15:20] Speaker 05:
And if you go to the most deviating data point, your honor, that's not

[00:15:25] Speaker 05:
a reasonable metric.

[00:15:26] Speaker 05:
I'll reserve the seven seconds.

[00:15:28] Speaker 05:
We'll give you two minutes for a moment.

[00:15:31] Speaker 05:
Thank you, Your Honor.

[00:15:35] Speaker 04:
Thank you, Your Honor.

[00:15:36] Speaker 04:
May it please the Court.

[00:15:37] Speaker 04:
I think it's important first to understand the limited way in which extrinsic evidence was used in this case.

[00:15:42] Speaker 00:
But what happens if we discard the Kenny declarations?

[00:15:46] Speaker 00:
Do you still win?

[00:15:48] Speaker 04:
Your Honor, the Kenny declarations were unrebutted.

[00:15:50] Speaker 04:
In fact, the second declaration, they put in no responsive testimony.

[00:15:53] Speaker 03:
Well, the answer is no.

[00:15:53] Speaker 03:
You don't win.

[00:15:54] Speaker 04:
Well, we do depend on the kidney declaration for one thing, Your Honor, and that's the inherent properties, fatty acid properties, of the expressly disclosed F2 colon 3 generation.

[00:16:05] Speaker 04:
So what I'd like to point out is this is a claim of two steps.

[00:16:08] Speaker 04:
The first step is the crossing step.

[00:16:10] Speaker 03:
Wait, wait, wait.

[00:16:12] Speaker 03:
The prior patent discloses the crossing.

[00:16:14] Speaker 03:
We have the argument about three or four percent, but it does not disclose progeny that comes within the claim.

[00:16:21] Speaker 03:
And without the Kenny declaration, there isn't any evidence.

[00:16:26] Speaker 03:
that the prior art produced progeny within the claims.

[00:16:29] Speaker 03:
So if you don't have the Kennedy Declarations, you're gone, right?

[00:16:32] Speaker 00:
We do need it for the... Yes?

[00:16:34] Speaker 04:
Yes, Your Honor.

[00:16:35] Speaker 00:
Okay, and before you get to the admissi... to the... to the content or the merits of the... of the Kennedy Declarations, let's talk about the admissibility.

[00:16:45] Speaker 00:
They're uncorroborated, unpublished data at the time of the... that the invention was made.

[00:16:51] Speaker 00:
I mean, I... I'm... I'm greatly troubled with... with

[00:16:56] Speaker 00:
deciding or affirming the use of these declarations, because it seems to me that we're opening the door to nefarious acts.

[00:17:08] Speaker 04:
Well, Your Honor, there's no reason to believe these declarations were not reliable.

[00:17:12] Speaker 04:
They're from Dr. Kinney, who is a co-inventor.

[00:17:14] Speaker 04:
They're not corroborated, correct?

[00:17:15] Speaker 04:
Your Honor, they put in no counter-declaration.

[00:17:17] Speaker 04:
What I wanted to say is that... No, no, answer my question.

[00:17:21] Speaker 00:
They're not corroborated.

[00:17:22] Speaker 00:
The Kinney Declaration is partly written by the inventor.

[00:17:26] Speaker 00:
And our case law is clear on that.

[00:17:29] Speaker 00:
Where is the corroboration?

[00:17:30] Speaker 03:
Your Honor, I'm not aware of a requirement for corroboration of a sworn statement from... The answer is that the corroboration is the data that was existed at the time, right?

[00:17:40] Speaker 03:
And the data that's provided... It's a business record argument.

[00:17:43] Speaker 04:
Yeah, we believe it's a business record.

[00:17:45] Speaker 00:
But did you submit the entire data set or just part of it?

[00:17:48] Speaker 04:
He submitted, as he said in his second declaration, he submitted all of the second generation data.

[00:17:52] Speaker 04:
That's the F2 colon 3.

[00:17:54] Speaker 04:
And the thing I wanted to point out is the

[00:17:56] Speaker 04:
The Kinney Declaration not only expressly discloses step A, it also goes beyond that and says that they made progeny plants from that cross, including not just the first generation, which is the F1.

[00:18:09] Speaker 04:
F1 is what's made by the initial cross-pollination between the two lines.

[00:18:13] Speaker 04:
F2 is a self-pollinated generation that is generated from the F1.

[00:18:20] Speaker 04:
And Dr. Kinney testified in his second declaration he provided all of the data

[00:18:25] Speaker 04:
for the second generation, the F2 colon 3.

[00:18:28] Speaker 04:
So what I wanted to point out is that the example 8 also expressly mentions the F2 colon 3 generation that was obtained.

[00:18:36] Speaker 04:
So this is not a case where the second step is missing from Booth.

[00:18:41] Speaker 04:
It was expressly disclosed.

[00:18:42] Speaker 03:
Did Monsanto argue below that there was a lack of corroboration?

[00:18:44] Speaker 04:
They did not.

[00:18:46] Speaker 04:
And in fact, they put in no counter testimony.

[00:18:48] Speaker 04:
They had at least seven months from the time of the second kidney declaration, which was November 2012,

[00:18:55] Speaker 04:
until they filed their response to the action closing prosecution at the end of June 2013 to put in counter data, to put in counter declarations, scientific literature, anything.

[00:19:06] Speaker 04:
They put in nothing, Your Honor.

[00:19:07] Speaker 04:
And in fact, they argued at that time that there was good cause for claim amendments to amend their claims.

[00:19:16] Speaker 04:
They could have made the same argument under Rule 116E for good cause to submit additional declarations from Dr. Volcker, from Dr. Harrison,

[00:19:23] Speaker 04:
They submitted nothing.

[00:19:24] Speaker 04:
Well, the PTAB noted all that.

[00:19:26] Speaker 04:
Exactly.

[00:19:27] Speaker 04:
And that's why the board found in this situation that there was essentially no counter evidence to the proof of inherency.

[00:19:35] Speaker 02:
So we agree with the idea that data... Well, they also noted that there was no... They felt there was no dispute that his data accurately represented results.

[00:19:46] Speaker 04:
That's right.

[00:19:47] Speaker 04:
And, Your Honor, if you look, for example, at the Glaxo case where you had different

[00:19:50] Speaker 04:
different forms of a crystal, there was a dispute about that, whether the form would be always made by the patented method.

[00:19:57] Speaker 04:
And one side came in and showed, well, we always get it.

[00:20:00] Speaker 04:
Then the other side came in with counter data.

[00:20:03] Speaker 04:
That data didn't exist before.

[00:20:05] Speaker 04:
That was evidence that was generated for the purposes of resolving the inherency dispute.

[00:20:09] Speaker 04:
No different here.

[00:20:10] Speaker 04:
It's simply evidence that was generated to show only one limited thing.

[00:20:15] Speaker 00:
OK, let me stop you.

[00:20:18] Speaker 04:
Yes, Your Honor.

[00:20:18] Speaker 00:
I'm going to ask you a question.

[00:20:20] Speaker 00:
You can use data to clarify a reference, but not to expand the disclosure of the reference.

[00:20:27] Speaker 00:
But the F2 colon 3 generation project is expressly disclosed.

[00:20:33] Speaker 00:
Let me finish my question.

[00:20:34] Speaker 00:
Yes, Your Honor.

[00:20:35] Speaker 00:
Isn't it the case here that the Kenny declarations are used to expand the disclosure?

[00:20:41] Speaker 04:
No, they're used in exactly the way they're used in all of these cases when extrinsic evidence comes in.

[00:20:47] Speaker 04:
It's simply evidence

[00:20:49] Speaker 04:
that a court or the board will hear to help prove what otherwise is not expressly there.

[00:20:55] Speaker 04:
It's a high burden.

[00:20:55] Speaker 04:
You have to prove it would necessarily be true, which is exactly what the board found.

[00:21:00] Speaker 04:
But you can use extrinsic evidence to prove that fact, which is what happened here.

[00:21:05] Speaker 03:
And there was no counter-testimony.

[00:21:06] Speaker 03:
To prove inherently, right?

[00:21:08] Speaker 03:
Yes, Your Honor.

[00:21:10] Speaker 03:
There's no suggestion that the prior art reference expressly discloses the progeny

[00:21:16] Speaker 03:
No, that's incorrect.

[00:21:17] Speaker 03:
They do.

[00:21:17] Speaker 03:
The argument is that it's inherent.

[00:21:20] Speaker 04:
This might have been a different case if it didn't show making... Yes, yes.

[00:21:23] Speaker 04:
No, I don't agree.

[00:21:24] Speaker 04:
The reference expressly discloses the second generation.

[00:21:28] Speaker 03:
Wait, don't talk over us, okay?

[00:21:31] Speaker 03:
The pre-existing prior art reference does not, on its face, disclose progeny within the scope of the claims, right?

[00:21:40] Speaker 04:
No, it discloses the second generation progeny.

[00:21:43] Speaker 04:
The only thing it doesn't disclose is the fatty acid profile.

[00:21:46] Speaker 04:
I agree with that, with that part, Your Honor.

[00:21:49] Speaker 03:
Okay, so, and you're saying that the production of progeny that come within the claims is inherent, right?

[00:21:57] Speaker 04:
Well, the production of progeny was expressly disclosed, including the second generation.

[00:22:02] Speaker 03:
No, qualifying progeny.

[00:22:05] Speaker 04:
Now, that's a very important point.

[00:22:07] Speaker 04:
The claim is extremely broad on step B.

[00:22:10] Speaker 04:
a single plant of any generation.

[00:22:13] Speaker 04:
It's what we argued in our brief.

[00:22:14] Speaker 04:
They didn't dispute that in their counter briefing.

[00:22:17] Speaker 04:
So it couldn't be written any broader.

[00:22:19] Speaker 04:
It includes planting a seed and watering it and growing a plant of any generation.

[00:22:24] Speaker 03:
I cannot understand why you're fighting this.

[00:22:26] Speaker 03:
I mean, it makes no sense.

[00:22:28] Speaker 03:
The prior art does not disclose qualifying progeny.

[00:22:32] Speaker 03:
You have to rely on inherency to get there.

[00:22:35] Speaker 03:
And you rely on the Kenny declarations to get you there, right?

[00:22:39] Speaker 04:
We do rely on the kidney declarations for the fatty acid profile.

[00:22:41] Speaker 04:
That's true, Your Honor.

[00:22:42] Speaker 04:
We do.

[00:22:44] Speaker 04:
But the point I was trying to make is that the claim is very broad.

[00:22:47] Speaker 04:
It doesn't just cover the first generation.

[00:22:49] Speaker 04:
It does cover the second generation, which is the first self-generation of progeny.

[00:22:54] Speaker 04:
And the second generation is expressly mentioned in example eight.

[00:22:59] Speaker 04:
So the only thing that the extrinsic data was used for was for the inherent properties of that expressly disclosed

[00:23:07] Speaker 04:
second generation.

[00:23:08] Speaker 04:
That's really the only point I'm trying to make.

[00:23:11] Speaker 04:
And the claim is so broadly written, it covers any generation and a single plant.

[00:23:17] Speaker 00:
We arrived at the salient point of the problem that I have here with this case.

[00:23:26] Speaker 00:
And that's the use of extrinsic evidence, like these declarations, in order to establish inherency.

[00:23:31] Speaker 00:
I would think that you can't do it to establish anticipations, but inherency perhaps

[00:23:37] Speaker 00:
But I, you haven't convinced me in your, I've convinced myself one way or the other, but you haven't convinced me.

[00:23:44] Speaker 00:
This is your time to do that.

[00:23:45] Speaker 04:
Well, Your Honor, it's no different from Glaxo, for example.

[00:23:48] Speaker 00:
In Glaxo, as I said, you had two parties trying to show whether or not- So can you use a declaration to establish a missing limitation or to provide a limitation that's not in the, in the prior?

[00:24:02] Speaker 04:
The prior reference discloses expressly- Yes or no question.

[00:24:06] Speaker 04:
We're using it only for that one limited purpose of sharing.

[00:24:09] Speaker 04:
That's not a yes or no answer.

[00:24:09] Speaker 00:
I'm sorry, could you repeat your question?

[00:24:11] Speaker 00:
I didn't understand the question.

[00:24:12] Speaker 00:
Can you use a declaration, extrinsic evidence, in order to provide a limitation that's missing from the prior in order to establish anticipation?

[00:24:22] Speaker 00:
Yes, that's exactly the purpose of an extrinsic evidence.

[00:24:26] Speaker 04:
Because the whole point of inherency is that you have a reference that is missing something that's not expressly disclosed.

[00:24:31] Speaker 00:
Well, I thought you would argue you can't do it for anticipation, but you can do it for inherency.

[00:24:35] Speaker 04:
Well, we're talking about inherent anticipation.

[00:24:37] Speaker 04:
It's really the same issue, Your Honor, I think.

[00:24:39] Speaker 04:
It's a theory of anticipation.

[00:24:40] Speaker 04:
Essentially, it's a theory in which the reference is missing some feature of the claim, and you rely on the extrinsic evidence to supply that feature.

[00:24:49] Speaker 04:
It's true it's a high burden, and it's a narrow doctrine.

[00:24:52] Speaker 04:
You have to show it would necessarily be true.

[00:24:54] Speaker 04:
We don't dispute that.

[00:24:55] Speaker 04:
But you can use extrinsic evidence, just like in Flaxo, just like in all the other cases we cited, to prove that missing feature would necessarily be present in what's described in the prior art.

[00:25:06] Speaker 04:
And that's exactly what happened here.

[00:25:08] Speaker 00:
Exactly what happened.

[00:25:09] Speaker 00:
If it's necessarily present but wasn't, then we're talking about inherency.

[00:25:16] Speaker 04:
If it wasn't present, there wouldn't be anticipation.

[00:25:19] Speaker 04:
We had to prove it would necessarily be present in the F2

[00:25:23] Speaker 04:
three generation, which is described in example eight.

[00:25:27] Speaker 04:
We did that.

[00:25:27] Speaker 04:
We proved there were 45 plants that met claim one, 45.

[00:25:33] Speaker 04:
We only had to prove one.

[00:25:34] Speaker 04:
So we proved 45.

[00:25:36] Speaker 04:
Again, step B is so broadly written.

[00:25:38] Speaker 04:
It covers even one plant of any generation.

[00:25:41] Speaker 04:
They wrote the claim that way.

[00:25:43] Speaker 04:
They want it to be broad.

[00:25:44] Speaker 04:
But the problem is that sweeps in any generation of plant that meets that.

[00:25:50] Speaker 04:
I wanted to mention the claim construction issue.

[00:25:52] Speaker 04:
They only raised really one issue, and that is this tenths of a percent argument.

[00:25:57] Speaker 04:
And we did point out that was never raised before the board.

[00:26:00] Speaker 04:
So that argument was waived, in our view.

[00:26:02] Speaker 04:
It's also quite indefinite.

[00:26:04] Speaker 04:
They never say how many tenths of a percent the claim would be limited to.

[00:26:10] Speaker 04:
And also, the board did rely on the intrinsic evidence here.

[00:26:15] Speaker 04:
They relied on the claim language, which is not limited to tenths.

[00:26:18] Speaker 04:
They relied on the specification that cites the Wilcox paper.

[00:26:22] Speaker 04:
which reasonably was supportive of a broader reading.

[00:26:26] Speaker 04:
And they also mentioned Dr. Kinney's testimony from the point of view of one of Orne's skill in the art.

[00:26:31] Speaker 04:
So we think that argument was waived, but also just contrary to the intrinsic evidence, Your Honor.

[00:26:40] Speaker 03:
Unless you have other questions.

[00:26:41] Speaker 03:
Okay.

[00:26:41] Speaker 03:
Thank you.

[00:26:43] Speaker 03:
Thank you, Your Honor.

[00:26:47] Speaker 05:
I want to make something very clear about the procedural record in this case.

[00:26:51] Speaker 05:
DuPont's declarations were not arguing inherency.

[00:26:55] Speaker 05:
I would like to direct your attention to Appendix 360, paragraph 8.

[00:27:00] Speaker 03:
You never objected to those declarations on the ground of lack of corroboration, right?

[00:27:04] Speaker 05:
We argued that, I don't know specifically lack of corroboration.

[00:27:08] Speaker 05:
We pointed out they didn't have anything to do with the legal standard.

[00:27:11] Speaker 03:
You did not argue lack of corroboration.

[00:27:13] Speaker 05:
I do not believe lack of corroboration specifically.

[00:27:16] Speaker 05:
There were many legal objections and many factual objections.

[00:27:19] Speaker 02:
You know your lecture, don't you?

[00:27:21] Speaker 05:
Yes, and I am not aware of the argument.

[00:27:23] Speaker 05:
I am not aware.

[00:27:24] Speaker 05:
I don't believe so, Your Honor.

[00:27:27] Speaker 05:
I don't believe so.

[00:27:28] Speaker 00:
But the point of trying to get across... Did you object on the basis that the declarations were providing missing limitations?

[00:27:35] Speaker 00:
Absolutely.

[00:27:35] Speaker 00:
Limitations missing from the... Absolutely.

[00:27:37] Speaker 05:
We objected to the declarations as they're not even describing what they did.

[00:27:42] Speaker 05:
They're not claiming an inherent effect because they're not even making a claim of inherency.

[00:27:47] Speaker 05:
What they're doing is they're not saying that this is an inherent effect.

[00:27:51] Speaker 05:
What they did

[00:27:52] Speaker 05:
is missing information.

[00:27:53] Speaker 05:
They never made the claim, Your Honor.

[00:27:55] Speaker 03:
They never argued in parents.

[00:27:57] Speaker 03:
They were there to show that the prior R used the same method and produced the same result that your claims do here, right?

[00:28:08] Speaker 05:
they were not arguing here and see your argument express anticipation through a calculation of the statistical deviation your honor so your objections they didn't use the word here in my my objections they not only identified the nature of the argument they are now purporting to make they didn't recite the legal standard they made no effort to show it was inevitable that is the legal standard they had to show in order for this to be relevant.

[00:28:31] Speaker 03:
How can it be that they had to show it was inevitable when your own claims don't require that it be inevitable

[00:28:36] Speaker 03:
Our claims are to a different cross, Your Honor.

[00:28:39] Speaker 03:
No, no, answer my question.

[00:28:41] Speaker 03:
It doesn't matter.

[00:28:42] Speaker 03:
Your claims don't interrupt me.

[00:28:44] Speaker 03:
Your claims do not require that the progeny be produced every time.

[00:28:50] Speaker 03:
They do not interrupt me.

[00:28:53] Speaker 03:
They do not do that, right?

[00:28:55] Speaker 03:
Correct.

[00:28:56] Speaker 03:
Okay, so how can it be that inherent anticipation requires something that claims don't require?

[00:29:01] Speaker 05:
Because it's a different legal standard.

[00:29:03] Speaker 05:
Inherency, in order for a prior art reference,

[00:29:06] Speaker 05:
to inherently disclose something.

[00:29:09] Speaker 05:
It must inevitably disclose it.

[00:29:12] Speaker 05:
It must inevitably do it.

[00:29:13] Speaker 05:
They did not inevitably disclose.

[00:29:16] Speaker 05:
Booth doesn't inevitably disclose anything.

[00:29:19] Speaker 05:
The patentability is based on the prior art.

[00:29:22] Speaker 05:
And if the prior art doesn't expressly or inevitably disclose the claim language, then it doesn't anticipate.

[00:29:34] Speaker 03:
Okay.

[00:29:35] Speaker 03:
Thank you, Mr. Homeowner.