[00:00:19] Speaker 00:
Council?

[00:00:28] Speaker 00:
I may please the court.

[00:00:30] Speaker 00:
The court should reverse the board's final written decision in this case for two independent reasons.

[00:00:35] Speaker 00:
The first reason is that by adopting an obviousness argument that was never presented by Berler during the IPR proceedings, the board exceeded its statutory authority and denied Rivolma its due process rights.

[00:00:48] Speaker 00:
The second ground is that the board's new obviousness argument that it adopted in its final written position is not supported by substantial evidence.

[00:00:56] Speaker 03:
Let me just focus on what is in my mind.

[00:01:02] Speaker 03:
Suppose it were the case that in your patent owner response, you submitted a bunch of evidence and contentions that on their face were indisputable admissions that under your claim construction, not their claim construction,

[00:01:18] Speaker 03:
Every element was shown or rendered obvious by the prior art.

[00:01:25] Speaker 03:
I failed to see in that circumstance how there's a due process or other problem.

[00:01:34] Speaker 03:
Take including a statutory problem.

[00:01:38] Speaker 03:
It happens all of the time that litigants lose their cases based on their own admissions.

[00:01:45] Speaker 03:
So it seems to me that your argument

[00:01:48] Speaker 03:
for a procedural irregularity of consequence or even the lack of substantial evidence depends on your showing that you're explaining to us that what you said in your patent owner's response left a gap between what you said and the inferences that the board made to find obviousness.

[00:02:12] Speaker 03:
And for that, the other side needed evidence and they didn't, I think,

[00:02:17] Speaker 03:
They agreed.

[00:02:17] Speaker 03:
They did not put on any evidence.

[00:02:19] Speaker 03:
So it depends on that gap between what you said in your patent owner's response and the findings that the board needed to make, a gap that needed to be bridged by evidence.

[00:02:31] Speaker 03:
Can you explain what there was that the board was inferring from your evidence as opposed to just reading it plain on its face to say these various internal structural process conditions

[00:02:47] Speaker 03:
You just conceded they were on that.

[00:02:49] Speaker 00:
Sure.

[00:02:50] Speaker 00:
I'm not sure if I agree with the position that, well, I guess it depends on the factual circumstances.

[00:02:56] Speaker 00:
But in the situation where the petition, like in this case, is set up so that it's solely based on a claim construction, where there was no evidence submitted in support of the petition.

[00:03:09] Speaker 00:
Instead, they replaced three of the four claim elements, three of the four process steps with compositional limitations.

[00:03:15] Speaker 00:
and simply mapped through attorney argument, not supported by an expert declaration, the compositional limitations that it's reading into the claim to the prior art.

[00:03:25] Speaker 00:
In that situation, in justifying that argument with a lack of enablement, and when evidence of enablement, that is when you're armed with the teachings in the specification of the patent, one skill in the art would be able to manipulate the final microstructure of the steel

[00:03:44] Speaker 00:
In that situation, no, there has not been a concession.

[00:03:49] Speaker 00:
And the patent office cannot pick through the evidence that was submitted for enablement in order to cobble together a new obviousness position, basically reexamine the patent claim.

[00:04:01] Speaker 00:
So I'm not sure I agree with the premise of your question.

[00:04:04] Speaker 00:
But I will address the substance of the question.

[00:04:07] Speaker 00:
And that is, your question, I think I understand it is,

[00:04:11] Speaker 00:
What did the board have to bridge from what we said in rebutting their claim construction position to where the board had to end up in order to find these claims obvious?

[00:04:23] Speaker 00:
And that relates primarily to our second ground.

[00:04:26] Speaker 00:
It's similar to our second ground in that we say that the board's new obviousness argument lacks substantial evidence in the record.

[00:04:34] Speaker 00:
So here, the board relies on the five prior references that were in the petition.

[00:04:39] Speaker 00:
for the unremarkable proposition that steels in the prior arc met the 2 to 10% molybdenum plus tungsten plus vanadium requirement in carbidic constituents.

[00:04:52] Speaker 00:
That's fairly unremarkable.

[00:04:55] Speaker 00:
From there, the board made the leap to one skill in the arc would have been motivated to adjust not only the matrix structure, so the board relies on the biotic reference to show that

[00:05:07] Speaker 00:
Yeah, one skill in the art, some researchers were looking at the fact that the matrix structure, that is, remember the 056 patent talks about manipulating not only the thermal conductivity and the defectivity of the matrix, but also remove carbon from the matrix for that purpose into certain types of carbidic constituents with high thermal conductivity, in particular the large coarse carbides, the molybdenum 3C,

[00:05:35] Speaker 00:
or the tungsten 6C type carbines, if you do that and add those two things together and that's your goal, you're able to achieve these high thermal conductivities.

[00:05:46] Speaker 00:
So what the board did is it took biotin, which just deals with matrix structure.

[00:05:50] Speaker 00:
So that's the crystal structure of the steel, crystal structure, not the carbides that have been precipitated out of the matrix.

[00:06:01] Speaker 00:
So that's all that Biotti talks about.

[00:06:04] Speaker 00:
There's seven different microstructures shown in Biotti.

[00:06:07] Speaker 00:
Each one of those are different phases, pearlite, ferrite, and that sort of thing.

[00:06:11] Speaker 00:
No recognition or appreciation of the role that the precipitated carbides will play in achieving the thermal connectivity.

[00:06:20] Speaker 00:
So Biotti, and if you look at the actual thermal connectivity measurements in Biotti, they range from just over 26 to under 34.

[00:06:30] Speaker 00:
which falls well within the range of the prior arc thermal conductivity is described in the old 5-6 pattern.

[00:06:35] Speaker 00:
So biotic certainly represents the notion that researchers knew that the microstructure changes would impact thermal properties, but there was no appreciation and there's no reference in the record that teaches that one had the appreciation that Mr. Balz-Engels, our inventor, had of targeting not only the matrix defectivity,

[00:06:58] Speaker 00:
and getting chromium and carbon out of there in order to achieve that purpose, to precipitate these specific types of carbides.

[00:07:05] Speaker 00:
And that together, you were able to achieve before unknown levels of thermal conductivity.

[00:07:10] Speaker 02:
So the biotech... Where is that?

[00:07:12] Speaker 02:
I understand what you're saying is the development that your inventor added.

[00:07:17] Speaker 02:
Where would I find that in the claim?

[00:07:19] Speaker 02:
Would that then be in step three?

[00:07:22] Speaker 02:
And maybe with the result you get in step four?

[00:07:25] Speaker 00:
Well, the step two is informed by step three and four.

[00:07:29] Speaker 00:
So step two of the process is metallurgically creating an internal structure of the steel in a defined manner.

[00:07:35] Speaker 00:
And the defined manner is you're targeting these types of carbides, these types of internal microstructures that have a surface, I'm looking at claim one, that have in step three a surface fraction and a thermal conductivity of the carbidic constituents.

[00:07:51] Speaker 00:
and the surface fraction of the matrix material.

[00:07:54] Speaker 00:
So you look at both sides of the equation, the precipitated carbides and the matrix.

[00:07:59] Speaker 00:
And together, that has to be of the microstructure that would reach 42 watts per meter Kelvin.

[00:08:05] Speaker 02:
So there's no specific, and I was asked- How do you think the board relied on to get the carbidic constituents in its analysis?

[00:08:15] Speaker 00:
The board took a leap from one skill in the art

[00:08:19] Speaker 00:
would want high thermal conductivity.

[00:08:21] Speaker 00:
I don't think that was necessarily shown in any of the references.

[00:08:23] Speaker 00:
I explained to the judges on the board that there's different reasons why you would want to manipulate thermal conductivity.

[00:08:32] Speaker 00:
Sometimes you have a press where you want it to have low thermal conductivity so that the heat dissipates more slowly and that the piece that you're creating will not cool so quickly for purposes of that particular process.

[00:08:45] Speaker 00:
So they took the leap from

[00:08:47] Speaker 00:
You'd want to have high thermal conductivity.

[00:08:49] Speaker 00:
They inferred from Bioti that one would appreciate that carbides somehow affect that thermal conductivity when that's not in Bioti.

[00:09:00] Speaker 00:
And then they said that you would optimize.

[00:09:03] Speaker 00:
And they rely on a 2004 Berler patent, which was exhibit 2011 below.

[00:09:08] Speaker 00:
And during the questioning, they say one skill in the art would want to optimize the microstructures.

[00:09:16] Speaker 00:
But in that reference, that was a cold work steel.

[00:09:19] Speaker 00:
The optimization of the carbines.

[00:09:21] Speaker 02:
Could you tell me where it is that you're referring to?

[00:09:23] Speaker 02:
Do you mind giving me an A site?

[00:09:25] Speaker 02:
I'm looking at pages A20 through 22 seems to be where the board's analysis is.

[00:09:30] Speaker 02:
But could you help me to tell me exactly within that where you're referring to right now?

[00:09:37] Speaker 00:
Sure.

[00:09:43] Speaker 00:
The boards, yeah, 20 through 22 is where they applied it, and they relied on some of the art in the earlier section relating to the claim construction.

[00:10:00] Speaker 00:
But in the trial transcript, the line of questioning related to the optimization of the

[00:10:11] Speaker 00:
of the microstructures, and that pulled from Exhibit 2011, which was the Berler patent that's founded at Appendix 1422.

[00:10:18] Speaker 00:
1422?

[00:10:19] Speaker 00:
That's the Berler patent.

[00:10:25] Speaker 00:
So the Berler patent that we relied on, if you look at 1428, Column 4, Lines 6 through 18, this was what the board, during the line of questioning during the oral argument, leaped from.

[00:10:40] Speaker 00:
is that one skill in the art would optimize the microstructure.

[00:10:44] Speaker 00:
But there, the changing of the carbides and the carbide type were related solely to toughness and wear resistance for cold work material.

[00:10:53] Speaker 00:
It had nothing to do whatsoever with thermal conductivity.

[00:10:55] Speaker 00:
So the board pieced together the fact that one skill in the art would have this vague notion that the matrix would affect the thermal conductivity, the notion based on the board's independent reading of this

[00:11:10] Speaker 00:
2004 Berler patent that one would optimize the microstructure, piece that together and leapt to the place where they say one skill in the art would be able to appreciate that the combination of the matrix, the combination of carbides, in particular reaching the specific carbides that are called out in the 056 patent would have enabled one to even get there.

[00:11:33] Speaker 00:
When, as explained in the specification,

[00:11:36] Speaker 00:
The prior art at the time thought that thermal conductivity of hot work steel was driven, was more of an internal or an intrinsic characteristic of the steel.

[00:11:47] Speaker 00:
And there were some papers like Beatty that said, yeah, there's some differences.

[00:11:51] Speaker 00:
But what the 056 patent did was it enabled those skill in the art to understand that if you focus on the type of carbide you're using to suck the carbon out of the matrix to improve that defectivity,

[00:12:05] Speaker 00:
and get high thermal conductivity carbides, you're able to reach these high levels of thermal conductivity that were never seen before.

[00:12:13] Speaker 00:
I would like to save my three minutes, and I'm almost up on that time, and touch briefly on the fact that... I also want to note the fact that the Ravama below

[00:12:34] Speaker 00:
taught the fact that the primary reference, the 813 patent, the EP813 patent that the board relied on, it taught against, specifically repeatedly over and over, taught against precipitating these coarse carbides that the 056 patent teaches are key to reach the promised land of the high thermal conductivity.

[00:12:55] Speaker 00:
Because that patent was concerned with creep rupture strength.

[00:13:00] Speaker 00:
And it said these coarse carbides will reduce that feature.

[00:13:02] Speaker 00:
And that patent was all about increasing

[00:13:04] Speaker 00:
pre-perupture strength.

[00:13:05] Speaker 00:
So the idea that you're leaping from a primary reference for the composition to what's claimed in claim one, two, three, or four of the 056 patent, based on this reference, we think contradicts the expressed teachings of the reference.

[00:13:24] Speaker 00:
And neither Berler nor the board ever reconciled these teachings of the reference and instead found the claims obvious.

[00:13:34] Speaker 00:
I'll reserve the rest of it.

[00:13:56] Speaker 01:
Good morning, Your Honors.

[00:13:57] Speaker 01:
I'm Max Peterson.

[00:13:57] Speaker 01:
I represent Buller-Ederstahl, GMVH and company at the Appellee in this case.

[00:14:02] Speaker 01:
Your Honor, this case follows a reasonably well-developed line of precedent involving analogous fact scenarios.

[00:14:09] Speaker 01:
A party introduces post-petition evidence to help define the level of ordinary skill in the art.

[00:14:15] Speaker 01:
The board considers the evidence in its obviousness analysis, but only to define the background knowledge against which the prior art cited in the petition must be read.

[00:14:25] Speaker 01:
The patent owner then appeals the final decision because the evidence was not part of the initial petition.

[00:14:31] Speaker 01:
The court has

[00:14:32] Speaker 01:
Fairly uniformly held that the board must consider the post-petition evidence.

[00:14:38] Speaker 03:
What I at least don't remember seeing before is a situation where the petitioner argues the claims are invalid if construed to mean X. The board ultimately says, we're not going to construe them to mean X. We're going to construe them to mean Y.

[00:15:02] Speaker 03:
And the petitioner has never argued that if construed to mean why, the inventions claimed in this now, why construed claim would have been obvious, never even argued it.

[00:15:17] Speaker 03:
And you don't hear either, right?

[00:15:18] Speaker 03:
Your red brief is all about why the, is all about the claim construction.

[00:15:25] Speaker 03:
You never say if the claim construction is perfectly right,

[00:15:30] Speaker 03:
here's why still would have been obvious.

[00:15:34] Speaker 01:
We did believe strongly that our claim construction was correct.

[00:15:37] Speaker 01:
That is correct.

[00:15:38] Speaker 01:
And in fact, we felt it unusual that a patent owner would come in with this large number of references to justify enablement because clearly when you say that the claim limitations are enabled by the prior art, you're saying that the claim limitations are known in the prior art.

[00:15:54] Speaker 01:
But we thought that they really had to dig to find this prior art.

[00:15:58] Speaker 01:
Very little of it was cited in the prosecution history.

[00:16:00] Speaker 01:
It was something that they really had to dig to find.

[00:16:02] Speaker 01:
And then to make this argument that in order to enable this broader claim construction, we're relying on all this prior art to this common knowledge, which to us seems like superior knowledge, but the board accepted it as an admission of common knowledge.

[00:16:17] Speaker 01:
I mean, in a way, we thought it was a blessing that they made these admissions, but we never really

[00:16:22] Speaker 01:
at the time we honestly didn't believe that the board would go that far outside of the specification to find enablement in that broad of a scope and that was why we did not argue that if the claims were construed in this fashion based on all these admissions, of course then you're just down to three limitations are taken out by the admissions regarding the prior art and all this left are the one or two that relate to composition and then the end result which is thermal conductivity.

[00:16:49] Speaker 01:
Clearly what was in the specification

[00:16:52] Speaker 01:
31 out of 31 examples produced that high thermal conductivity, regardless of the processing conditions.

[00:16:57] Speaker 01:
There is very little discussion of processing conditions.

[00:17:03] Speaker 03:
There are a number of things about this case that seem at least out of the ordinary.

[00:17:11] Speaker 03:
The way the claim is written seems a little bit out of the ordinary.

[00:17:15] Speaker 03:
But we're just focused here on

[00:17:18] Speaker 03:
the process that got us here in the process was you argued the claims basically are just a composition and more or less ignore these sort of middle pieces about what you are manipulating to get there.

[00:17:37] Speaker 03:
The board said, well, provisional, we'll institute kind of on that basis, but the question is open.

[00:17:42] Speaker 03:
Then the board says, no, we actually now agree with the patent owner that those

[00:17:49] Speaker 03:
middle elements of the claim having to do with what you are manipulating to get to the composition and the properties are actually important.

[00:17:58] Speaker 03:
And then said, even though you haven't presented any evidence on the prior art teaching those things, they did.

[00:18:08] Speaker 03:
And that's enough.

[00:18:10] Speaker 03:
That's what we have to deal with.

[00:18:13] Speaker 03:
And the question is, did the board go beyond

[00:18:19] Speaker 03:
either what it was permitted to do procedurally or was permitted to do on the evidence in front of it.

[00:18:26] Speaker 01:
We believe that the BART did what it had to do.

[00:18:29] Speaker 01:
Well, there are a couple of reasons.

[00:18:30] Speaker 01:
First of all, this case is different in that all the cases where we've found where this issue has come up is the petitioner that comes in and introduces evidence beyond the initial petition, either in a reply brief or at some point along the way.

[00:18:42] Speaker 01:
and then the patent owner cries, cries far away, this isn't fair, we didn't have a fair opportunity to address that.

[00:18:47] Speaker 03:
It's hard to see how they can be surprised by what they themselves submitted.

[00:18:51] Speaker 01:
So this case is different in that the, that the patent owner comes in with all this evidence.

[00:18:55] Speaker 01:
You know, we looked at it and we said, well, if the board accepts this, it's really kind of harmless.

[00:18:59] Speaker 01:
They're really taking out three of their claim limitations.

[00:19:01] Speaker 01:
Why should we argue against this?

[00:19:04] Speaker 01:
Really, why should we?

[00:19:05] Speaker 01:
But we didn't think they would.

[00:19:06] Speaker 01:
So we didn't, we didn't emphasize that we didn't focus on it.

[00:19:09] Speaker 01:
Now,

[00:19:10] Speaker 01:
Now, the second part of your question is that the board did actually what it had to do.

[00:19:15] Speaker 01:
This goes all the way back to Graham versus John Deere, where the court in Graham versus John Deere held that under section 103, the scope and content of the prior art are determined.

[00:19:26] Speaker 01:
Differences between the prior art and the claims are ascertained.

[00:19:28] Speaker 02:
Where did it determine the differences between the claims and the prior art?

[00:19:32] Speaker 01:
I'm sorry?

[00:19:33] Speaker 02:
Where did the board determine the differences between the claims and the prior art in its decision?

[00:19:44] Speaker 01:
In reading against what they called the background prior art, and that's the part of Graham vs. John Deere which I was going to say, against this background is where the obviousness, against the background of the level of early skill in the art is where the obviousness or not of access of claims is determined.

[00:20:00] Speaker 01:
So the background prior art was really, showed those three claim limitations which were admitted in the patent owner's brief to be known in the prior art.

[00:20:12] Speaker 01:
These were the selecting steps and the

[00:20:14] Speaker 01:
and really everything except for the compositional step and the ultimate thermal conductivity, they found to be admitted as background prior art.

[00:20:23] Speaker 01:
Now, the compositions is what was left.

[00:20:26] Speaker 01:
Those were anticipated up and down by each and every one of our references that we cited, each and every secondary reference of the course of the earth.

[00:20:34] Speaker 02:
Looking at the claims, I'm having a hard time.

[00:20:36] Speaker 02:
I'm struggling a little bit with the substantial evidence issue.

[00:20:39] Speaker 02:
And I think what it is is that

[00:20:41] Speaker 02:
I can see where the first element of the claim is met by the prior art references, but I don't see where the board has lined up what the prior art teaches with respect to elements two, three, and four.

[00:20:53] Speaker 02:
So it might be helpful if you walk through that a little bit.

[00:20:58] Speaker 01:
The prior art itself did not disclose elements two, three, and four in a literal sense.

[00:21:03] Speaker 01:
The prior art disclosed the compositions which were pointed out in the specification as being very narrow compositions which

[00:21:11] Speaker 01:
really almost 100% of the time would meet this thermal conductivity limitation.

[00:21:16] Speaker 01:
The specification itself, without going outside, without looking at the prior art, was only enabling as to the compositions.

[00:21:24] Speaker 01:
And that's what the board found in its initial institution decision, was that we're going to construe the claims in this narrow fashion according to the specifications.

[00:21:31] Speaker 01:
I understand that.

[00:21:31] Speaker 01:
Those compositions were all in the prior art.

[00:21:34] Speaker 01:
And it was really reading through the limitations themselves.

[00:21:39] Speaker 01:
They're couched in terms of selecting compositions which have this internal structure, selecting surface fraction and thermal conductivity of carbidic constituents and surface fraction and thermal conductivity of matrix material.

[00:21:53] Speaker 01:
But then the specification gives very precise compositions which meet those limitations 31 out of 31 times.

[00:22:00] Speaker 01:
And those were all in our prior art.

[00:22:02] Speaker 01:
And that's what we relied on to show those steps.

[00:22:04] Speaker 02:
I understand that's what you did in your petition.

[00:22:06] Speaker 02:
I'm asking you to help me understand the board's decision at pages A20 through 22, where they say, even under this more narrow claim construction, we're going to say that the prior view of what was, I guess, known and what was presented by the patent owner renders this claim obvious.

[00:22:25] Speaker 02:
And what I can't figure out is how to map

[00:22:29] Speaker 02:
that prior art and this knowledge that they discuss on pages 20 through 22 to each of the claim limitations in the claim?

[00:22:40] Speaker 01:
Well, what they're saying is that the compositions which are in the specification, which are known in the prior art, and it was recognized throughout the hearing that they have a very high probability of meeting this thermal conductivity limitation.

[00:22:55] Speaker 01:
And somewhere in there,

[00:22:58] Speaker 01:
They had said that applying this against the background where it's known to manipulate thermal conductivity by manipulating the matrix structure, by manipulating the impurities, and some of the other language that they used by... Okay.

[00:23:17] Speaker 01:
PTA found that heat transport and thermal conductivity were known to depend on lattice defects, microstructure, impurities, processing, and matrix structure, which were the subjects of several

[00:23:27] Speaker 01:
claim limitations, you start with a composition which really 31 out of 31 times gives a high thermal conductivity according to the specification.

[00:23:38] Speaker 01:
And then there's a teaching that you can manipulate the thermal conductivity.

[00:23:40] Speaker 02:
You're relying on the specification to get to the 42?

[00:23:42] Speaker 02:
What do you rely on?

[00:23:43] Speaker 02:
What is the prior art that teaches that you'd want to have a thermal conductivity of 42?

[00:23:48] Speaker 01:
Prior art doesn't teach that number.

[00:23:50] Speaker 01:
The prior art, the primary reference which they've contested, taught

[00:23:56] Speaker 01:
Directionally taught that if you minimize the go to a low chromium content, you'll get a High thermal conductivity and they taught the desirability of high thermal conductivities the secondary references a couple of them We had had suggestions of higher thermal conductivity based on low chromium content and minimizing the chromium content Based on the compositions that were given but in each and every case it was always achieved through composition in terms of the prior art they did not go into the

[00:24:24] Speaker 01:
the specific claim limitations of selecting surface fraction and thermal conductivity.

[00:24:28] Speaker 02:
Are you saying that these limitations are inherent in the prior art?

[00:24:32] Speaker 01:
That's what the board found, and to some extent they are.

[00:24:34] Speaker 02:
What did the board say, inherent?

[00:24:36] Speaker 02:
I guess it's at page 22.

[00:24:40] Speaker 02:
The skilled artisan would have at least inherently completed the selecting steps.

[00:24:45] Speaker 01:
Yes.

[00:24:46] Speaker 01:
Yes.

[00:24:48] Speaker 01:
I'm looking for the quote right now.

[00:24:53] Speaker 03:
Right above accordingly?

[00:24:56] Speaker 01:
Yeah.

[00:24:57] Speaker 02:
I don't see a site there.

[00:24:59] Speaker 03:
That's not really the usual use of inherently.

[00:25:12] Speaker 03:
I'm not sure what the skilled artisan would have inherently, unless it means always would have.

[00:25:20] Speaker 03:
And I think you

[00:25:21] Speaker 03:
You several times used phrases like, to a large extent, inherent.

[00:25:26] Speaker 03:
That's usually not enough for inherent, if it's ordinary.

[00:25:30] Speaker 01:
Strictly based on the specification, it was inherent.

[00:25:32] Speaker 01:
But at the hearing, it came out that there was some evidence outside of the specification.

[00:25:36] Speaker 01:
There was one example which had those compositions which did not produce a high thermal conductivity.

[00:25:42] Speaker 01:
So really, the better approach is to say that there's a very high probability, a very high likelihood that if you have this composition, you'll meet this thermal conductivity limitation.

[00:25:51] Speaker 01:
based on the record.

[00:25:53] Speaker 01:
And it would have been obvious, therefore, to manipulate the microstructure, manipulate the impurities, which were background priority in order to achieve these microstructures.

[00:26:02] Speaker 01:
It doesn't require, apparently, a very large, when there's high probability of doing something, it doesn't require a lot of manipulation to get there.

[00:26:09] Speaker 01:
And it might not require anything at all.

[00:26:11] Speaker 01:
And it would have been obvious to manipulate the thermal conductivity using these microstructures and lattice defects and the various other things which

[00:26:19] Speaker 03:
What about manipulating the carbidic constituents?

[00:26:25] Speaker 03:
Is that taught?

[00:26:26] Speaker 03:
And I guess I'm not sure I understood entirely everything that's going on here, but I thought that that argument was right at the center of what Mr. Tweig was concentrating on.

[00:26:42] Speaker 01:
That argument, to some extent, we believe goes beyond the scope of the claims.

[00:26:45] Speaker 01:
The claims don't talk about large carbides in any degree.

[00:26:49] Speaker 01:
However, the claims do talk about 2% to 10% by weight, molybdenum plus tungsten plus vanadium.

[00:26:57] Speaker 01:
And those are carbidic producing elements.

[00:27:00] Speaker 03:
So what do you understand to mean the surface fraction or the volume fraction, either way, of the carbidic constituents?

[00:27:08] Speaker 03:
That makes me think of the word large, which you said this doesn't talk about.

[00:27:15] Speaker 01:
Surface fraction and volume fraction, the way the claims are written, it can go anywhere from 0 to 1 as long as you get that thermal conductivity.

[00:27:21] Speaker 01:
There's really nothing in the specification that says you have to have a certain surface fraction and a certain volume fraction to achieve this result.

[00:27:27] Speaker 01:
It just says selecting a surface fraction and a thermal conductivity and selecting a volume fraction and thermal conductivity so that you get this result.

[00:27:38] Speaker 01:
When you start out with a composition which has carbide producing elements anyway, which is

[00:27:43] Speaker 01:
which is known in the prior art, carbidic constituents, and 2 to 10% MO plus W plus B. And then you use these prior art techniques, some of them which really are, it involved a thermal calc software, it involved computer modeling, it involved really a lot of technology which wasn't in the specification, but which was admitted to be known.

[00:28:04] Speaker 01:
That's how you perform the steps A and the B. And the argument that we had made was that the only way, based on the specification, you can perform A and B is by

[00:28:13] Speaker 01:
to these compositions because there's nothing else.

[00:28:16] Speaker 01:
The argument that Revalme had made was, no, you don't have to choose compositions.

[00:28:19] Speaker 01:
You can get there by all these techniques which are known in the art, which aren't described in the specification.

[00:28:26] Speaker 01:
You know, buying into that, it tells you that these steps are, in fact, known in the prior art.

[00:28:32] Speaker 01:
We didn't think the board would go that far to accept that for purpose of enablement, because it's the way outside.

[00:28:37] Speaker 02:
Did they admit below that removing carbon or selecting the amount of carbidic constituents

[00:28:44] Speaker 02:
was known in the prior art?

[00:28:48] Speaker 02:
Because I thought that's what they were saying was their contribution.

[00:28:51] Speaker 01:
Well, selecting the carbidic constituents is part of the composition.

[00:28:54] Speaker 01:
When you have the composition, as I said, carbidic constituents in 2% to 10% molybdenum plus tungsten plus vanadium, those are large carbide-producing elements.

[00:29:04] Speaker 02:
I understand.

[00:29:04] Speaker 02:
But I think what I understood the claims, at least this part, to be going to is the idea that you do have something that has the composition that meets

[00:29:13] Speaker 02:
the limitation in claim one.

[00:29:14] Speaker 02:
And then you do some sort of manipulation in steps two and three to achieve the thermal conductivity in step four.

[00:29:21] Speaker 02:
And so I'm just asking you, yeah, it might be inherent that in any particular hot work steel, you're going to have some carbidic constituents.

[00:29:30] Speaker 02:
But I mean, you're selecting them in order to achieve something, right?

[00:29:35] Speaker 01:
Yes.

[00:29:35] Speaker 02:
So are you saying that they're admitting, they admitted that in the prior art it taught selecting certain carbidic constituents in order to achieve a particular thermal conductivity?

[00:29:49] Speaker 01:
The prior art did not, as I recall, the prior art did not specifically teach that.

[00:29:54] Speaker 01:
What the board found was that the prior art teaches the composition which achieves it, provided you provide the known manipulation which is known in the prior art.

[00:30:02] Speaker 01:
The board did not rely on the background of the art

[00:30:05] Speaker 01:
is teaching the specific compositions.

[00:30:07] Speaker 01:
The compositions were taught in the prior art that we cited.

[00:30:10] Speaker 01:
What the board relied on was that you could manipulate the microstructure.

[00:30:13] Speaker 01:
You could manipulate the size of the carbidic constituents using these well-known techniques, which had been admitted to by Rovalma.

[00:30:21] Speaker 01:
And that's what allowed them to arrive at the broader claim construction, which wasn't limited narrowly to the composition.

[00:30:26] Speaker 01:
And we went through it in our brief.

[00:30:29] Speaker 01:
The board did not do its own independent assessment of the prior art.

[00:30:32] Speaker 01:
We looked at everything they said and everything they said, and it's shown in our brief as outlined, relied paragraph-by-paragraph on what Rovalma had said, either in their brief or at the hearing.

[00:30:45] Speaker 01:
The board did not make up its own assessment of what was in that prior art.

[00:30:50] Speaker 01:
They went almost sentence-by-sentence and picked out things that Rovalma had said and relied on those in their final decision.

[00:30:57] Speaker 01:
It was strictly a case which was based

[00:31:00] Speaker 01:
I mean, larger than any other case I've ever seen, based on admissions by the patent owner.

[00:31:04] Speaker 01:
The patent owner had to make these admissions in order to achieve a broad scope of enablement.

[00:31:09] Speaker 01:
But by making these admissions, they kind of played a dangerous game.

[00:31:13] Speaker 01:
If they're known in the prior art, they're known in the prior art.

[00:31:21] Speaker 01:
OK, so.

[00:31:23] Speaker 01:
You have one more sentence.

[00:31:28] Speaker 01:
I have two and a half minutes of belief.

[00:31:30] Speaker 01:
Clock's running out.

[00:31:31] Speaker 01:
Don't I have two and a half minutes?

[00:31:32] Speaker 01:
No, no, you're over.

[00:31:34] Speaker 01:
Your time is over.

[00:31:35] Speaker 00:
I don't have any.

[00:31:35] Speaker 01:
You're two and a half minutes over.

[00:31:38] Speaker 01:
Oh, I'm sorry.

[00:31:38] Speaker 01:
It's going the other way.

[00:31:41] Speaker 01:
OK.

[00:31:41] Speaker 01:
Well, anyway, I guess what I wanted to say was that one more sentence.

[00:31:49] Speaker 01:
Rovellma either knew or should have known that the board would consider its evidence and admissions and an ample opportunity to address it, because under Graham versus John Deere,

[00:31:57] Speaker 01:
They're required to consider that prior art wants us in the record of the level of ordinary skill.

[00:32:02] Speaker 01:
So that the board follow well-established law in considering the level of skill in the art and its decision should be upheld.

[00:32:08] Speaker 01:
Thank you.

[00:32:12] Speaker 00:
I was an English teacher.

[00:32:13] Speaker 00:
I have several things I want to address quickly if I have time.

[00:32:21] Speaker 00:
The first is that we made no such admission that the steps three through two, three, and four were in the prior art.

[00:32:28] Speaker 00:
There's a fundamental difference between admitting that once you're armed with the specification of a patent, you're able to achieve those things using tools available in the art.

[00:32:39] Speaker 00:
And the place that the patent office ended up was that it would have been obvious to do so.

[00:32:45] Speaker 00:
That was nowhere in any of the discussion below.

[00:32:48] Speaker 03:
The second thing is the enablement issue came up in debating what the right construction was?

[00:32:54] Speaker 00:
Correct.

[00:32:54] Speaker 00:
The first paragraph of the petition says they enable no other way other than composition.

[00:32:59] Speaker 03:
And therefore should be construed that way.

[00:33:01] Speaker 03:
And you said, yes, they do.

[00:33:02] Speaker 03:
So they should be construed a different way.

[00:33:03] Speaker 00:
Correct.

[00:33:03] Speaker 00:
OK.

[00:33:04] Speaker 00:
And the other thing I wanted to address is that your honor said that we shouldn't be surprised that the board is referencing these things.

[00:33:10] Speaker 00:
Certainly we were not surprised that the board referenced the evidence that we put into the record.

[00:33:16] Speaker 00:
But we were surprised where the board extrapolated to from the references we had.

[00:33:22] Speaker 00:
And maybe it isn't a surprise, given that at the time of the board's final written decision, the PTO's official position was that it was free to make any argument of unpatentability that could have been raised in a properly drafted petition but wasn't.

[00:33:37] Speaker 00:
And that was what the PTO's counsel told the court in the Magnum Oil Tools case.

[00:33:43] Speaker 00:
And we put that in the record.

[00:33:44] Speaker 00:
And as you know, the court

[00:33:46] Speaker 00:
has since rejected that position and said that, and I'll read the quote, says that, while the PTO has broad authority to establish procedures for revisiting earlier granted patents and IPRs, that authority is not so broad that it allows the PTO to raise, address, and decide on patentability theories never presented by the petitioner and not supported by the record evidence.

[00:34:10] Speaker 00:
So we feel that this is part of the growing pains of the IPR process is that the board

[00:34:15] Speaker 00:
had a broad view of what it was permitted to do, and it thought it could examine independently.

[00:34:21] Speaker 03:
If we agreed with you, should we remand or reverse?

[00:34:24] Speaker 00:
You should reverse, because the only ground presented in the petition.

[00:34:28] Speaker 03:
But if they were just proceeding under an incorrect assumption about what they could and couldn't do, why don't they get a chance now to do it right?

[00:34:37] Speaker 00:
Because all they can do is address the grounds that were raised in the petition, as we demonstrated, and which is undisputed actually on appeal here, is that

[00:34:45] Speaker 00:
that was improper.

[00:34:47] Speaker 00:
It was based on improper claim construction and that exercise of mapping from a compositional limitation that you pull from the spec to the prior art fails based on claim construction and there's nothing left.

[00:34:58] Speaker 00:
Thank you counsel.

[00:34:59] Speaker 00:
Thank you.

[00:35:00] Speaker 00:
The matter will stand submitted.

[00:35:02] Speaker 01:
All rise.