[00:00:00] Speaker 02:
Hope Houston's doing better.

[00:00:03] Speaker 02:
Wasn't that the reason for a delay?

[00:00:05] Speaker 02:
You okay?

[00:00:07] Speaker 02:
The case for argument this morning is 16-2565 SNF holding versus BASF.

[00:00:14] Speaker 02:
Mr. Dabney.

[00:00:21] Speaker 04:
I reserve five minutes.

[00:00:33] Speaker 04:
Chief just prosed and may it please the court.

[00:00:37] Speaker 04:
The board in this case committed two errors that call for reversal.

[00:00:43] Speaker 04:
First, in its final written decision, the board for the first time announced a construction of the claimed invention that differed substantially from what the patent, the prosecution history, and the board's own institution decision had identified as the claimed invention.

[00:01:02] Speaker 03:
The 215 patent is directed to a different type of polymerization reaction in 329.

[00:01:08] Speaker 03:
Am I correct?

[00:01:09] Speaker 04:
It is, Your Honor.

[00:01:11] Speaker 04:
However, at the time of prosecution, that was exactly the point that the examiner made to distinguish the 215 patent from the claim subject matter.

[00:01:24] Speaker 04:
Exactly that.

[00:01:25] Speaker 04:
That the gel in the 215 reactive vessel was an anhydrous gel as opposed to a hydrous gel.

[00:01:32] Speaker 04:
So the reason for allowance stated in the patent on page 701 of the joint appendix is the prior art shows a tapered reactor, but not solution polymerization of AA acrylic acid, MAA methacrylic acid, or their esters.

[00:01:49] Speaker 03:
So is 215 then not relevant prior art?

[00:01:52] Speaker 04:
No.

[00:01:53] Speaker 04:
215 is crucially relevant prior art because it shows what the state of the art was, number one.

[00:01:58] Speaker 04:
And more importantly, it contained

[00:02:01] Speaker 04:
a crucial admission on the part of the patent owner as to what was known in the art at the time.

[00:02:07] Speaker 04:
I think the best way to understand what was going on in this case is to turn to pages 17 and 18 of the board's decision, which is in the joint appendix.

[00:02:16] Speaker 04:
And with the court's permission, I have drawn a sketch of the figure that's on page 18 of the board's decision, which I think will aid the court's following along the art.

[00:02:33] Speaker 04:
What the patent says in columns one and two is that before the claimed invention was made, it was known you had to use a tubular reactor, having a conical taper, having an inlet for filling it with reactants, having a diameter ratio of between 2 to 1 and 10 to 1, having an inlet for gas injection, and in a mode of operation, quote,

[00:03:03] Speaker 04:
the plastic polymer matrix being discharged from the tubular reactor virtually without residue by injecting an inert gas.

[00:03:12] Speaker 02:
Well, I think turning to this, as I understood what the board was saying, was that the reason this is not helpful to you, or as helpful as you might like, is that they've got that number six there, which is the discharge aid.

[00:03:27] Speaker 02:
So that this is another factor

[00:03:29] Speaker 02:
and which is not present in the claims.

[00:03:32] Speaker 02:
And that's how the board differentiated the 215.

[00:03:35] Speaker 02:
So what's wrong with that?

[00:03:36] Speaker 02:
I mean, it says bottom of 18, both inert gas pressure and a discharge aid located.

[00:03:43] Speaker 02:
And the discharged aid is what they relied on, is just differentiating the two.

[00:03:47] Speaker 04:
There's two crucial points about that.

[00:03:50] Speaker 04:
First of all, the 215 patent was a reference that the patent owner's expert never mentioned in his expert report.

[00:04:00] Speaker 03:
At the time of the patent owners... Well, show me a reference that expressly promotes a conical taper as being advantageous for any purpose relevant to the types of polymers claimed in 329.

[00:04:14] Speaker 04:
On page 501 of the joint appendix, column 3, line 70, there is a specific disclosure of a tubular reactor being used to make the very type of poly... Hold on, you're going too fast.

[00:04:28] Speaker 02:
501, column 3.

[00:04:29] Speaker 02:
501, page 501.

[00:04:33] Speaker 04:
Column 3.

[00:04:35] Speaker 04:
Column 3.

[00:04:37] Speaker 04:
Line 70.

[00:04:38] Speaker 04:
OK, the first example.

[00:04:40] Speaker 04:
There is a statement starting in line 70.

[00:04:43] Speaker 04:
The resulting gel-like polymer solution was discharged from the vessel through the outlet by the use of nitrogen gas pressure.

[00:04:52] Speaker 04:
And the description of the dimensions of that make it clear that the reactor vessel is

[00:04:57] Speaker 04:
So to the extent that it was ever a requirement, which was never suggested in the patent, never suggested in the prosecution history, never suggested in the board's institution decision that the innovation here was not the substitution of a hydrous gel for an anhydrous gel in the reactor, but rather was injecting gas pressure for a length of time sufficient to

[00:05:25] Speaker 04:
Bring the reactor vessel to a state of substantial emptiness.

[00:05:28] Speaker 02:
OK.

[00:05:29] Speaker 02:
Either I haven't asked the question right, or you're not answering it.

[00:05:33] Speaker 02:
Because it seems to me the basis upon which the board relied for differentiating the 215 is this number six thing, that it wasn't just it used both inert gas pressure and a discharge aid.

[00:05:49] Speaker 02:
And then on 1819, they go on to say,

[00:05:53] Speaker 02:
Indeed, the discharge age tends to support the patent owner's argument that it wasn't the pressure alone that did it.

[00:06:00] Speaker 02:
So that's the basis upon which the board differentiated the 215.

[00:06:04] Speaker 04:
What is wrong with it?

[00:06:05] Speaker 04:
It's because that wasn't the patent owner's argument.

[00:06:08] Speaker 04:
The patent owner's argument is summed up on page 59, paper 20 of

[00:06:14] Speaker 04:
the exhibit 2016 in the record.

[00:06:17] Speaker 02:
Paper 20.

[00:06:17] Speaker 02:
You're going to have to give me a better, what?

[00:06:19] Speaker 04:
Paper 20.

[00:06:20] Speaker 04:
It is in the record.

[00:06:21] Speaker 04:
It is not in the joint appendix.

[00:06:23] Speaker 04:
But what the patent owner said, quote, prior to the invention of the 329 patent, conical tapers and inert gas had never been used to remove polymer gels from reactors.

[00:06:37] Speaker 04:
And the other side's expert in exhibit 2016 in the record

[00:06:42] Speaker 04:
in paragraph 202 said, the prior art reflects that those who attempted to use inert gas to remove polymer gel from a reactor found it was not a viable option.

[00:06:54] Speaker 04:
When they responded to the petition, they took the position that this reference was not citable in an obviousness combination.

[00:07:02] Speaker 04:
And on page 10 of their brief, they make a crucial error.

[00:07:05] Speaker 04:
On page 10 of their brief to this court, they said, quote,

[00:07:10] Speaker 04:
While the 215 patent is prior art under 35 USC 102E, it is also a BASF invention and therefore not citable for purposes of an obviousness inquiry according to 35 USC 103C.

[00:07:25] Speaker 04:
Wrong.

[00:07:26] Speaker 04:
This patent issued in 1997.

[00:07:29] Speaker 04:
At that time, 103C did not cover 102E 103 references.

[00:07:35] Speaker 04:
So what happened here is it all throughout the board proceedings

[00:07:39] Speaker 04:
The patent owner took the position that this reference was not rightly considered by the board.

[00:07:45] Speaker 04:
Their expert didn't put in any evidence.

[00:07:47] Speaker 04:
What they did is they tried to impeach what their own patent said about the state of the art, what was known in the art, with general oral testimony by an expert who said this had never been done, that said use of conical tapers

[00:08:05] Speaker 04:
And inert gas had never been used to remove polymer gels.

[00:08:09] Speaker 04:
So the patent owner made this sweeping argument, which was based on error, that this wasn't rightly considered, an error repeated in their brief to this court.

[00:08:19] Speaker 04:
And so when we came back in and said, how can you possibly make this statement that conical tapers and inert gas had never been used to remove polymer gels from a reactor, the answer was their expert hadn't considered this.

[00:08:35] Speaker 01:
Can I ask, if this was prior art, why wasn't it one of the principal prior art references on which you based your sound?

[00:08:45] Speaker 04:
Because the patent gave no inkling.

[00:08:49] Speaker 04:
that what made this non-obvious was the idea of injecting gas pressure for long enough that the reactor achieves a state of substantial emptiness.

[00:09:00] Speaker 04:
What the patent identified as the innovation, what the examiner said was the innovation, was the monomer.

[00:09:07] Speaker 04:
This was old.

[00:09:09] Speaker 04:
They had used this exact process to make anhydrous gel intermediate.

[00:09:13] Speaker 04:
They said, our innovation here is not making just any high molecular weight polymer.

[00:09:18] Speaker 04:
This claims, every claim specifically resides making high molecular weight polymer using water soluble, monoethylenically unsaturated monomers in aqueous solution.

[00:09:31] Speaker 03:
Was 103C cited below?

[00:09:35] Speaker 04:
I don't know that it was cited below.

[00:09:37] Speaker 04:
It was baked in to the patent donor's presentation.

[00:09:40] Speaker 04:
They submit an expert.

[00:09:42] Speaker 04:
I invite the court to read exhibit 2016.

[00:09:44] Speaker 04:
That is the sole evidence.

[00:09:47] Speaker 03:
I asked you a question.

[00:09:49] Speaker 04:
To my knowledge, it was not cited below.

[00:09:51] Speaker 03:
So you didn't discuss it below, that it didn't exist at the time?

[00:09:55] Speaker 04:
Until the final written decision, the board in its institution decision never brought the argument that this wasn't rightly considered.

[00:10:04] Speaker 04:
And then during the proceeding,

[00:10:08] Speaker 04:
The patent owner simply took the position that this wasn't rightly considered and said his expert didn't consider it.

[00:10:13] Speaker 03:
Let's talk about the claim instruction of removing.

[00:10:16] Speaker 03:
We don't have a ton of time.

[00:10:17] Speaker 04:
Yes.

[00:10:19] Speaker 04:
Our position on that is very simple.

[00:10:20] Speaker 03:
No, no.

[00:10:21] Speaker 03:
I have a question for you.

[00:10:22] Speaker 03:
OK.

[00:10:22] Speaker 03:
Thank you.

[00:10:24] Speaker 03:
OK.

[00:10:25] Speaker 03:
On page 31 of the blue brief, you make your interpretation argument.

[00:10:30] Speaker 03:
And you say that removing has its ordinary meaning as discharging.

[00:10:36] Speaker 03:
And you say specifically removing describes an active process of removal, not one that has been completed.

[00:10:44] Speaker 03:
It's synonymous with discharging.

[00:10:46] Speaker 03:
Is that any amount, no matter how tiny?

[00:10:49] Speaker 04:
Removing as an operation begins when it begins.

[00:10:53] Speaker 04:
So the patent says ejecting, removing, discharging, pushing out.

[00:10:57] Speaker 04:
It's describing what is happening when the gas pressure is applied.

[00:11:00] Speaker 04:
So for instance, in a continuous process,

[00:11:03] Speaker 04:
the reactor optimally is being filled.

[00:11:06] Speaker 04:
If you perform that element for only five seconds, yes.

[00:11:13] Speaker 04:
Because removing is describing an operation.

[00:11:15] Speaker 04:
What is the machine doing at this point?

[00:11:17] Speaker 04:
It's polymerizing.

[00:11:18] Speaker 04:
Okay.

[00:11:18] Speaker 04:
What is the machine doing at this point?

[00:11:20] Speaker 04:
It is in the process of removing what's in the reactor.

[00:11:24] Speaker 04:
So if you think of removing the way the patent describes it as

[00:11:29] Speaker 04:
How are you getting it out?

[00:11:30] Speaker 04:
It's not with a piston.

[00:11:32] Speaker 04:
It's not with an auger.

[00:11:33] Speaker 04:
It's being pushed out by injection of inert gas.

[00:11:36] Speaker 04:
So if you leave the inert gas on for five seconds, not that much is going to come out.

[00:11:41] Speaker 04:
If you leave it on for three hours, a lot of it will come out.

[00:11:43] Speaker 04:
But this idea that patentability depends on how long you put the gas pressure on.

[00:11:49] Speaker 04:
So whether it's at some point you reach a state of substantial emptiness, that was never, prior to 2015, there was never any suggestion.

[00:11:58] Speaker 04:
that any patentability depended on what length of time you put the gas pressure on.

[00:12:03] Speaker 02:
No, no, no.

[00:12:04] Speaker 02:
But what the board, I think, relied on is that the patent is chock full of examples.

[00:12:10] Speaker 02:
And you're right.

[00:12:10] Speaker 02:
Those examples don't.

[00:12:12] Speaker 02:
It's confusing, because the examples use the word discharge and not removal.

[00:12:16] Speaker 02:
But what they say about discharge is discharging without residue.

[00:12:20] Speaker 04:
Yes, which is exactly what was in the prior art.

[00:12:23] Speaker 04:
The fact that

[00:12:24] Speaker 04:
that gel doesn't stick to Teflon was not a new discovery in 1995.

[00:12:29] Speaker 04:
The patent 215 says if you want to get the gel out, you line it with Teflon.

[00:12:34] Speaker 04:
And optionally, you can include a displacement aid here so that the gas doesn't tunnel down through the center.

[00:12:40] Speaker 04:
But one of the glaring errors that the board made in analyzing this patent, because the patent owner didn't put any evidence in,

[00:12:47] Speaker 04:
and the board didn't accept the erroneous argument that it's not properly considered, is that they ignored the evidence of petitioner's expert appearing in 1878 to 1882, that this shows the exact mode of operation, as is claimed in the 329, and the board conflated and confused the displacement device, this item 5, with a discharge aid, which is

[00:13:10] Speaker 04:
an apparatus that's downstream of the reactor.

[00:13:14] Speaker 04:
They said the discharge aid was within the conical portion of the reactor.

[00:13:17] Speaker 04:
There's no testimony.

[00:13:19] Speaker 02:
What are we talking about?

[00:13:20] Speaker 02:
Where are we in the board's analysis?

[00:13:23] Speaker 04:
On pages 18 and 19 of the board's decision, the last two lines on page 18, it says,

[00:13:34] Speaker 04:
Given that the 215 discloses the use of both inert gas pressure and discharge aid located within the conical portion.

[00:13:41] Speaker 04:
Well, the thing that's located within the conical portion is the displacer 5.

[00:13:46] Speaker 04:
Displacer 5.

[00:13:47] Speaker 04:
The discharge aid is down here.

[00:13:51] Speaker 04:
So that's just a glaring factual error, which a board can fall into when they're doing it all on their own.

[00:13:56] Speaker 04:
They're not relying on evidence submitted by the parties.

[00:13:59] Speaker 04:
They're doing this all on their own.

[00:14:00] Speaker 04:
And by the way,

[00:14:01] Speaker 04:
The board said we're not going to credit this because the patent owner's combination doesn't include a discharge aid.

[00:14:11] Speaker 04:
Well, that is another factual error.

[00:14:13] Speaker 04:
Had we known that they were going to do that, which we didn't know in the hands, we would have pointed out that the 597 patent, the second reference, is all about a downstream apparatus that is the same as the discharge aid.

[00:14:26] Speaker 02:
It is a... Okay.

[00:14:27] Speaker 02:
What are you talking about now?

[00:14:28] Speaker 04:
If we... If you turn to page 501 again.

[00:14:32] Speaker 04:
501, which is the page of the patent.

[00:14:39] Speaker 04:
If you look at page 499, 499 is a picture of an auger that is receiving the feed of gel from the polymerization reactor.

[00:14:56] Speaker 04:
And the whole point of this patent is to provide an apparatus

[00:15:00] Speaker 04:
that is the same as what the 215 patent refers to as a discharge aid.

[00:15:04] Speaker 04:
In this particular case, it is a horizontally mounted auger that applies negative pressure to what's coming in and pushes it out through what's something like a meat grinder to chop it up.

[00:15:15] Speaker 04:
It's the same function.

[00:15:16] Speaker 01:
So what was the specific column line material that you read from page 501?

[00:15:23] Speaker 04:
Line 70, line 70, on column 3, column 3 on page 501, it says the resulting gel-like polymer.

[00:15:30] Speaker 04:
I'm sorry, you're speaking too fast for me.

[00:15:33] Speaker 01:
I'm sorry.

[00:15:33] Speaker 01:
597 patent, page 501 of the Joint Appendix, column 3, line what?

[00:15:38] Speaker 01:
70, 70.

[00:15:39] Speaker 01:
70, thank you.

[00:15:40] Speaker 04:
The gel-like polymer.

[00:15:43] Speaker 04:
The, not some, the gel-like polymer.

[00:15:46] Speaker 04:
And the last point I'd like to make before sitting down.

[00:15:48] Speaker 02:
Wait a minute, can we just work that story a little more?

[00:15:51] Speaker 02:
that sentence, the resulting gel-like polymer.

[00:15:55] Speaker 04:
The suggestion is made, and again, we had no notice, we had no APA notice that this was the claim of invention, that this was anything we had.

[00:16:03] Speaker 03:
If half of the polymer was discharged, would that be the?

[00:16:07] Speaker 03:
Say that again?

[00:16:07] Speaker 03:
I said if half of it was discharged, would that be the?

[00:16:12] Speaker 04:
I would say not.

[00:16:13] Speaker 04:
Really?

[00:16:15] Speaker 04:
Well, I mean, the is a definite adjective.

[00:16:18] Speaker 04:
It's talking about a specific quantity, I would suggest.

[00:16:22] Speaker 03:
All.

[00:16:25] Speaker 04:
The means all, I would say, in this context, yes.

[00:16:28] Speaker 04:
That's what our experts said.

[00:16:32] Speaker 04:
The last point I'd like to make, if I could, is that the patents in this art, the 215 patent, the 329 patent, and this patent up at the top of that same column on page 501

[00:16:45] Speaker 04:
You'll notice it says also tubular-shaped reactors are quite suitable for this purpose.

[00:16:51] Speaker 04:
The word tubular in this art is routinely used to describe tubular reactors that have varying diameters.

[00:16:59] Speaker 04:
So don't be misled into thinking that tubular in this art means a cylinder only.

[00:17:04] Speaker 04:
These reactors are all characterized as tubular, including the 329 patent itself.

[00:17:10] Speaker 02:
We're into your rebuttal.

[00:17:13] Speaker 02:
Thank you.

[00:17:27] Speaker 00:
Good morning.

[00:17:29] Speaker 00:
May it please the court?

[00:17:31] Speaker 00:
Because the analysis set forth in Phillips strongly favored the substantially all construction, the PTAB reached the correct claim construction for the term removing in the 329 patent.

[00:17:44] Speaker 02:
And on the issue of claim construction, is removing, is the way to define removing based on the examples, discharging without residue, is that the same thing?

[00:17:53] Speaker 00:
It's not exactly the same thing, I believe, Your Honor.

[00:17:57] Speaker 00:
I think for removing, if you look to the teachings of the specification, what does the 329 patent teach us?

[00:18:05] Speaker 00:
When it uses the word discharge, there's always a qualifier with it.

[00:18:09] Speaker 00:
And the whole purpose.

[00:18:10] Speaker 00:
And the qualifier is?

[00:18:12] Speaker 00:
Is complete discharge or substantially complete in terms of the examples.

[00:18:18] Speaker 00:
Wait a minute.

[00:18:21] Speaker 02:
I mean, why?

[00:18:24] Speaker 02:
I think my question was, doesn't it use the word discharge without residue?

[00:18:28] Speaker 02:
And is that the sign is removed?

[00:18:29] Speaker 02:
Yes.

[00:18:30] Speaker 02:
The examples.

[00:18:31] Speaker 02:
And you're talking about what it says about discharge.

[00:18:34] Speaker 02:
And the words used are discharge without residue.

[00:18:38] Speaker 02:
Are you disagreeing with me?

[00:18:40] Speaker 00:
No.

[00:18:40] Speaker 00:
In some cases, it certainly does say discharge without residue.

[00:18:43] Speaker 00:
And in some cases, in the examples, example 14 in particular, says discharge with insignificant residue.

[00:18:52] Speaker 00:
And at the very beginning of the patent, the way the problem set forth at this invention was aimed to solve was the problem of incomplete discharge.

[00:19:02] Speaker 00:
There's no dispute here that making certain polymers has been around for quite a long time.

[00:19:08] Speaker 00:
You can make them in a container.

[00:19:10] Speaker 00:
The problem is getting them out in a way that's useful and efficient.

[00:19:14] Speaker 00:
And the state of the art at the time, the solution at the time, was actually to use a piston

[00:19:20] Speaker 00:
push this gel out if you imagine jello the last thing you want to do when you want to get jello out of a container is make the opening smaller and so the prior art had two approaches to this have no constriction in the opening leave it wide open and let it fall out by its own weight or that or no or use a piston and press it out so that you get all of it out but the 215 patent

[00:19:46] Speaker 00:
is a very different situation.

[00:19:47] Speaker 00:
The 215 patents.

[00:19:49] Speaker 01:
Can I just ask, in column one of the patent that's at issue here, the 329 patent, there's a long middle paragraph about JPA 93 slash 57181, a Japanese something patent application, whatever.

[00:20:04] Speaker 01:
Doesn't that describe the use of inert gas to

[00:20:13] Speaker 01:
push polymer out of a reactor.

[00:20:16] Speaker 00:
So thank you for pointing that out.

[00:20:18] Speaker 00:
The JP-181 reference is a piston reference, which uses a piston.

[00:20:23] Speaker 00:
And in that reference, what the inventors in JP-181 said is that if you just use inert gas, there are problems.

[00:20:31] Speaker 00:
And those problems include the gas breaking through the side of the reactor in the gel and escaping, in which case the gel remains trapped in the reactor.

[00:20:41] Speaker 00:
So you can't get it out.

[00:20:42] Speaker 00:
This is the problem that the 329 was designed to address, not being able to get the gel out of the reactor.

[00:20:50] Speaker 03:
What about the Section 103C argument your opposing counsel made?

[00:20:56] Speaker 03:
Did it not exist?

[00:20:57] Speaker 00:
So the 103C argument was never made in front of the PTAB board.

[00:21:04] Speaker 00:
And it was a mistake in the briefing, but I

[00:21:09] Speaker 00:
I would submit it's an honest mistake because both attorneys in this case made the mistake.

[00:21:14] Speaker 02:
What mistake?

[00:21:16] Speaker 00:
How would you characterize the mistake?

[00:21:18] Speaker 02:
Are we lying on it at all?

[00:21:19] Speaker 02:
Is that what you're saying is the mistake?

[00:21:21] Speaker 02:
What is the mistake?

[00:21:22] Speaker 00:
The mistake is that 103C applying to 102E art, the effective date of that statute, both attorneys in this case in the IPR misunderstood the effective date of that.

[00:21:37] Speaker 00:
103C, et cetera.

[00:21:38] Speaker 03:
So it was raised below?

[00:21:40] Speaker 00:
No.

[00:21:41] Speaker 00:
It was raised at the hearing.

[00:21:42] Speaker 00:
The PTAB put the question to SNF's counsel, why didn't you, the exact question this panel has, why didn't you raise the 215 patent earlier or another piece of art that was subsequent to the 215, the 9 for it?

[00:21:58] Speaker 00:
Why wasn't that raised in the petition?

[00:22:00] Speaker 00:
And SNF's counsel in front of the PTAB said, well, they could have easily sworn behind it because it was

[00:22:06] Speaker 00:
under 103C.

[00:22:08] Speaker 00:
I think this was a mistake.

[00:22:09] Speaker 00:
It was a mistake in our briefing.

[00:22:11] Speaker 00:
I'm not trying to hide from that.

[00:22:13] Speaker 00:
But it wasn't an issue raised before the PTAP, and it wasn't a basis for the PTAP's decision in any form.

[00:22:22] Speaker 01:
What was the ground of the board's treatment of the 597 prior art?

[00:22:33] Speaker 01:
starting with the claim construction that substantially all of the material has to be removed.

[00:22:41] Speaker 01:
What did it say about the 597?

[00:22:45] Speaker 00:
What the board said about the 597 is that neither the 597 taught the extent of removal from that reactor, neither of the primary references, the 944, nor the 597 taught how much gel was removed from the reactor.

[00:23:03] Speaker 00:
And that's a natural consequence.

[00:23:06] Speaker 01:
Well, let me just, I guess, tell you what connection is in my mind, and that you can tell me why.

[00:23:15] Speaker 01:
Clarify things for me.

[00:23:19] Speaker 01:
It may be, for me, the most important aspect of the claim construction of the patent we have in front of us, that a definite article, the, follows the removal word.

[00:23:33] Speaker 01:
not the removal word all by itself.

[00:23:38] Speaker 01:
The definite article suggests it's the entirety of the material that is being removed.

[00:23:45] Speaker 01:
Something different from a distinction between the word discharge and the word removal.

[00:23:56] Speaker 01:
Mr. Dabney points out on column three of the 597 at line 70

[00:24:02] Speaker 01:
that that piece of prior art also uses the word the, which leaves me wondering why it doesn't have the same meaning that, in effect, undergirds the claim construction of the patent at issue here.

[00:24:24] Speaker 00:
I think there's two parts to the answer.

[00:24:27] Speaker 00:
Number one, in the 597 patent, the example of column three, line 70,

[00:24:33] Speaker 00:
is just that, an example.

[00:24:35] Speaker 00:
It's not a claim.

[00:24:36] Speaker 00:
That's not claim language, where you look at the antecedents the same way you give those antecedents particular weight.

[00:24:44] Speaker 01:
Why would that matter?

[00:24:45] Speaker 01:
It teaches everything that's in the document, including, in that example, getting rid from the vessel of, let's say, the entirety of the material that was in the vessel.

[00:24:59] Speaker 00:
So first of all, the 597 never mentions that

[00:25:02] Speaker 00:
it's trying to get rid of all of the material.

[00:25:05] Speaker 01:
But if the word the has that fairly natural implication, and maybe you want to tell me that I'm reading too much into the word the and that the claim construction of the patent in front of us, the 329, doesn't really depend on that, but rather depends on a sense from the spec as a whole of the definition of the problem, that the problem that it was addressing was getting rid of all of it, and now it's got something for

[00:25:32] Speaker 01:
it's got a solution to that, and so in the context of this patent, not particularly from the word remove, which I must say is not, to my mind, very distinct from the word discharge, but that when that word is being used in the context of this patent, it's not in reference simply to the action at any given moment, but in specific reference to the ultimate endpoint of the object of that word.

[00:25:59] Speaker 00:
If I understand

[00:26:01] Speaker 00:
Your Honor, in the 597 patent, this example actually states the resulting gel-like polymer solution was discharged from the vessel.

[00:26:10] Speaker 00:
That's entirely consistent with the chemical engineering understanding of the word discharge being a passive phenomenon.

[00:26:18] Speaker 00:
You fill a reactor up.

[00:26:20] Speaker 00:
You want to drain it.

[00:26:20] Speaker 00:
Let's say it has water.

[00:26:21] Speaker 00:
I want to discharge it.

[00:26:23] Speaker 00:
I open the valve, and gravity discharges it.

[00:26:26] Speaker 00:
That's not an active step of making sure everything is out of the reactor.

[00:26:31] Speaker 00:
That's a fundamental distinction between even the plain meaning of discharge and removing.

[00:26:36] Speaker 02:
I guess I'm struggling with that.

[00:26:37] Speaker 02:
I don't want to interrupt your train of thought.

[00:26:39] Speaker 02:
But all of the examples, except for one, numerous examples in the 329 do not use the word remove.

[00:26:47] Speaker 02:
They use the word discharge without residue.

[00:26:53] Speaker 00:
You're right.

[00:26:54] Speaker 00:
In the examples they talk about, when they use the word discharge, there's always a qualifier with it.

[00:26:59] Speaker 00:
That's the point.

[00:27:00] Speaker 00:
When discharge is used, you have to qualify it, because it's a passive action.

[00:27:04] Speaker 00:
So when you say discharge, do you mean just release some and residue is OK?

[00:27:09] Speaker 00:
Or do you mean get it all out?

[00:27:11] Speaker 02:
So if you say discharge, you have to- So removal is equal to discharge without residue?

[00:27:17] Speaker 00:
Yes.

[00:27:18] Speaker 00:
Removal is the same thing as complete discharge.

[00:27:20] Speaker 00:
The plain dictionary definition, as the PTAB noted, for removal is to eliminate, to get rid of,

[00:27:27] Speaker 00:
Whereas discharge can just be to pour out.

[00:27:30] Speaker 00:
Stuff can remain.

[00:27:31] Speaker 00:
And that's what's important, because the fundamental purpose of this invention was to address all these problems in the prior art of incomplete discharge.

[00:27:43] Speaker 02:
Well, going back to Judge Toronto's question then about line 70 of the 597 patent, the resulting solution was discharged.

[00:27:55] Speaker 02:
You're saying,

[00:27:56] Speaker 02:
that something less than without residue?

[00:27:58] Speaker 02:
It has to explicitly talk about without residue?

[00:28:00] Speaker 02:
Is that what we're talking about?

[00:28:01] Speaker 00:
Well, I think the problem with the 597 patent is it says nothing about the extent of discharge.

[00:28:07] Speaker 00:
And this is a situation where because a reference says nothing, you could read into it as much or as little as you'd like because the purpose of the 597 patent was downstream processing.

[00:28:19] Speaker 00:
So it has no information about the extent of discharge.

[00:28:22] Speaker 00:
It has no information about the purpose of discharge other than

[00:28:26] Speaker 00:
getting it to the next step.

[00:28:27] Speaker 02:
What about the 215, which explicitly calls out discharged without residue by injecting inert gas?

[00:28:35] Speaker 02:
Why isn't that sufficient?

[00:28:37] Speaker 00:
Well, in the 215, I mean, if you take those words in isolation, but that's not the reference.

[00:28:44] Speaker 00:
The reference is about a thermoplastic material.

[00:28:47] Speaker 00:
So first of all, it's not the same kind of polymer.

[00:28:49] Speaker 00:
It's a multi-stage reactor process, where in those stages, gas pressure is used to move

[00:28:56] Speaker 00:
the material, and it's not purely a polymer gel in that it is intersposed within that thermoplastic or solid catalyst particles.

[00:29:09] Speaker 02:
And there, what is discharging- The board makes the argument about the differentiation being the number six, the discharge agent.

[00:29:16] Speaker 02:
Did you make that argument?

[00:29:17] Speaker 02:
Yes, the discharge agent- Did you make that argument below to the board?

[00:29:21] Speaker 00:
Yes.

[00:29:22] Speaker 00:
That discharge aid, as the board pointed out, was in the conical portion of the reactor.

[00:29:27] Speaker 00:
What the 215 patent teaches is that to discharge the material, you could have a discharge aid in the conical portion of the reactor that can be either a piston, right, which is in the prior art, or a screw auger type thing where you can pull it down as a screw, pull the gel down.

[00:29:44] Speaker 00:
So the board noted that the 215 patent itself taught

[00:29:51] Speaker 00:
the use of a discharge aid within the reactor.

[00:29:54] Speaker 00:
And that was a fundamental distinction.

[00:29:56] Speaker 02:
Isn't 6 the discharge aid?

[00:29:59] Speaker 00:
Yes, but in the crude drawing, yes.

[00:30:01] Speaker 00:
But in the description, I mean, this is not a drawing that's to scale or is representative of the invention.

[00:30:08] Speaker 00:
It's just schematically showing features in a rough sense.

[00:30:15] Speaker 01:
What's the portion of the 215 that speaks of

[00:30:20] Speaker 01:
the discharge aid inside the vessel as opposed to 6-7.

[00:30:35] Speaker 01:
I think a column 4, line 48.

[00:30:37] Speaker 01:
What page in the appendix?

[00:30:39] Speaker 00:
1898?

[00:30:41] Speaker 00:
Appendix 1898.

[00:30:46] Speaker 00:
in there, about line 48, where the 215 patent in Appendix 1898 states that the discharge aid in the conical part of the reactor.

[00:30:58] Speaker 01:
I'm sorry, and what's the, I think I've a little bit lost the point of why we're talking about this.

[00:31:08] Speaker 00:
I think that actually is a good point, because the 215 patent's not even a ground in the

[00:31:14] Speaker 00:
in the petition before the PTAB.

[00:31:17] Speaker 00:
The 215 is this background knowledge argument.

[00:31:22] Speaker 01:
Well, the way the board at least described it, it didn't describe the 215 as a freestanding piece of prior art, but rather it was interpreting the seven or eight lines at the bottom of column one, top of column two, and 329, which is an issue here, and asking

[00:31:40] Speaker 01:
what does that set of lines admit about the prior art?

[00:31:48] Speaker 01:
And it was interpreting that language, and it started with language that doesn't actually refer to anything but the injection of inert gas.

[00:31:59] Speaker 01:
And nevertheless saying, well, we're not quite sure what those words mean.

[00:32:04] Speaker 01:
So we're going to look at the 215 prior art to understand the scope of the admission.

[00:32:09] Speaker 01:
And when we look at it, we see that this scope of the admission is not something that covers the current claim as construed.

[00:32:20] Speaker 01:
Because as we construe it, we construe it to mean what?

[00:32:26] Speaker 01:
I think we're in error only doing the complete

[00:32:29] Speaker 01:
the effectively complete removal.

[00:32:32] Speaker 00:
That's part of it, but I think what the PTAB was saying was that you can't look at the 215 patent and learn from it that using a taper with inert gas would affect substantially complete discharge because the 215 patent was completely silent as to the benefit or function of a taper in terms of getting the substantially complete removal.

[00:32:56] Speaker 00:
So there was no teaching in the 215 patent that would allow you to connect any dots to the grounds at issue.

[00:33:04] Speaker 00:
And I should say the 597 patent at issue did not teach a conical taper.

[00:33:10] Speaker 00:
That's an extrapolation that the petitioner made below based on the sizes.

[00:33:17] Speaker 00:
Nowhere in the 597 patent is there a teaching of a conical taper.

[00:33:21] Speaker 01:
There's just a- I don't remember the details, but where there

[00:33:24] Speaker 01:
Was there a pair of diameters, one larger than the other?

[00:33:28] Speaker 01:
That's correct.

[00:33:31] Speaker 01:
In the 5-9... I'm sorry.

[00:33:34] Speaker 01:
So what is not logically unavoidable when you have big diameter, small diameter vessel that that's... it's not conical because it could be what?

[00:33:47] Speaker 00:
Because it could... all the 5-9-7 patent teaches is that it has a bottom outlet.

[00:33:52] Speaker 00:
Bottom on the floor,

[00:33:53] Speaker 00:
Bottom on the side is possible.

[00:33:56] Speaker 00:
It could be hemispherical.

[00:33:58] Speaker 00:
It could be flat.

[00:34:00] Speaker 00:
Those are all common shapes of reactors in chemical engineering.

[00:34:04] Speaker 00:
There's nothing in the 597 patent to specifically state that this is a conical reactor.

[00:34:10] Speaker 03:
In the 215, the item five in that chart is referred to as a displacement apparatus.

[00:34:23] Speaker 03:
I agree with you.

[00:34:25] Speaker 03:
It doesn't say that the discharge aid is not in the cone, in the conical section.

[00:34:34] Speaker 03:
But on the other hand, it does say that five may be installed at the lower conical end.

[00:34:42] Speaker 03:
But you're telling us that what's labeled five there is, in fact, that the discharge aid.

[00:34:49] Speaker 00:
With respect, I'm not saying that.

[00:34:51] Speaker 00:
You pointed to it and you said it.

[00:34:53] Speaker 00:
No, I'm saying this area, the cone area.

[00:34:57] Speaker 00:
Okay.

[00:34:58] Speaker 00:
Five, this disruptor mechanism, if you think about... I get what it is.

[00:35:02] Speaker 00:
Okay.

[00:35:03] Speaker 03:
So you're saying that six is actually somewhere in the cone.

[00:35:08] Speaker 03:
According to... From the description.

[00:35:10] Speaker 03:
It doesn't say it's not.

[00:35:11] Speaker 03:
It just, it doesn't say.

[00:35:13] Speaker 00:
Well, the description in the 215 patent actually lied in 48.

[00:35:18] Speaker 00:
on Appendix 1898, column 4 of the 215 patent specifically says that the discharge aid is in the conical part of the reactor.

[00:35:30] Speaker 03:
Hang on, Jeff?

[00:35:31] Speaker 03:
Yeah, you're right.

[00:35:33] Speaker 00:
So what I'm saying is that the 215 patent, what it teaches us, it teaches the location, and that is in the conical.

[00:35:41] Speaker 03:
So your opposing counsel is incorrect in that argument, then, in his analysis of that diagram?

[00:35:48] Speaker 00:
I believe so, as that's what the PTAB found as well.

[00:35:52] Speaker 00:
I see my time is up.

[00:35:55] Speaker 00:
Thank you.

[00:35:56] Speaker 03:
Thank you.

[00:36:09] Speaker 03:
You weren't able to see the chart, but you followed what I was asking.

[00:36:13] Speaker 04:
Yes.

[00:36:13] Speaker 04:
And how do you respond?

[00:36:15] Speaker 03:
Wait, wait.

[00:36:18] Speaker 03:
How do you respond to line 48 in Column 4?

[00:36:25] Speaker 04:
Because what it's, let me say first of all, the, what we've been talking about here, there's only one person who interpreted this who was skilled in the art that was our expert.

[00:36:38] Speaker 04:
The question was raised

[00:36:39] Speaker 04:
Did they raise this before the board?

[00:36:41] Speaker 04:
The answer is they did not.

[00:36:43] Speaker 04:
Their expert did not address this at all, because at that time, based on their erroneous apparently view of 103C, they took the position this wasn't relevant.

[00:36:50] Speaker 04:
So their expert did not address it at all.

[00:36:52] Speaker 04:
So the evidence on what this patent disclosure means is complete.

[00:36:55] Speaker 03:
Can I read this?

[00:36:56] Speaker 04:
Yes.

[00:36:57] Speaker 04:
So getting to your point.

[00:36:59] Speaker 04:
Thank you.

[00:37:01] Speaker 04:
I think what that line is saying is that it's forced continuously

[00:37:06] Speaker 04:
toward the discharge aid in the conical part.

[00:37:09] Speaker 04:
That is to say, it's fully consistent with 6 correctly identifying the discharge aid is down here and it's pushing it toward the discharge aid in the conical portion.

[00:37:19] Speaker 03:
So, wait a minute.

[00:37:21] Speaker 03:
It's not

[00:37:22] Speaker 03:
from what you're saying, it's not forced in the cylindrical part.

[00:37:27] Speaker 03:
Is that right?

[00:37:28] Speaker 03:
Is that what you're telling me?

[00:37:28] Speaker 04:
No, no, no.

[00:37:29] Speaker 04:
The inert gas is pushing down on the anhydrous gel.

[00:37:34] Speaker 04:
And it's saying it's pushing it through the conical portion toward the discharge aid.

[00:37:39] Speaker 04:
That's the way our expert interpreted that.

[00:37:42] Speaker 03:
So you read DNS through?

[00:37:45] Speaker 04:
No.

[00:37:46] Speaker 04:
Toward the discharge aid in the conical part.

[00:37:48] Speaker 04:
In other words, you could say it's

[00:37:51] Speaker 04:
in the conical part is modifying force continuously in the conical part towards the discharge aid.

[00:38:02] Speaker 04:
That's what our expert, that's how our expert interpreted that, and that's consistent with how the figures are labeled in the drawing.

[00:38:10] Speaker 04:
Now, counsel stood here and said that the word discharge is only used with modifier.

[00:38:16] Speaker 04:
Not so.

[00:38:16] Speaker 04:
The abstract of the patent says, this is in page

[00:38:21] Speaker 04:
A-25 of the appendix.

[00:38:23] Speaker 04:
The abstract says, and discharge of the gelatinous reaction in the texture from the reactor by injection of an inert gas.

[00:38:32] Speaker 04:
There again, the word discharge, ejecting, pushing out, removing, they're all describing an operation.

[00:38:40] Speaker 04:
And Judge Gerrano, even if we don't think this is the correct construction, because in this patent, the disclosure is,

[00:38:48] Speaker 04:
optimally, the gel is there at an average constant level.

[00:38:53] Speaker 04:
So for a continuous process, which this patent in column four says is an embodiment, a continuous process embodiment.

[00:39:00] Speaker 04:
Is there injecting the gel from the side?

[00:39:04] Speaker 04:
Before this oral argument, I've never heard that.

[00:39:07] Speaker 01:
Never, I'm sorry.

[00:39:09] Speaker 04:
No, no, no, no.

[00:39:10] Speaker 04:
But the point is, if you interpret removing as more or less interchangeable with discharging, injecting, pushing out as an

[00:39:19] Speaker 04:
which will go on for whatever length of time the machine system is causing that action to happen.

[00:39:25] Speaker 04:
Well then, you describe both batch processing.

[00:39:31] Speaker 01:
What do you do?

[00:39:32] Speaker 01:
What's your response to the following characterization of the spec?

[00:39:38] Speaker 01:
The spec says, there's been a problem in the prior art.

[00:39:42] Speaker 01:
There are a variety of ways of getting stuff out.

[00:39:45] Speaker 01:
The inert gas way doesn't get it all out.

[00:39:47] Speaker 01:
We have a solution to that.

[00:39:48] Speaker 01:
So our claim really had better be about getting us all of the stuff out.

[00:39:52] Speaker 01:
Because that's the problem that we think we can solve with inert gas.

[00:39:58] Speaker 01:
And we described in column one how the prior art doesn't solve that problem.

[00:40:02] Speaker 04:
For water soluble hydrous gels only.

[00:40:06] Speaker 04:
And that's what the examiner said.

[00:40:08] Speaker 04:
The column one, column two says there's no problem getting it all out in the 215.

[00:40:13] Speaker 04:
This is an anhydrous gel.

[00:40:15] Speaker 04:
What we've done here, and the reason our claims are limited to the hydrous gel, is that was what they then said was their innovation, taking this and using this process for the hydrous gel polymer, like polyacrylamide polyacrylate.

[00:40:28] Speaker 04:
And that's what the Statement of Reasons for Allowance said.

[00:40:31] Speaker 04:
It was only in the midst of litigation when they were confronted with evidence that that was not a new idea.

[00:40:35] Speaker 04:
This had been used for polyacrylamide too, that they came up with this new theory that what the innovation here was not the idea of substituting a hydrous for an anhydrous monomer,

[00:40:45] Speaker 04:
but operating the system for long enough to achieve a state of substantial emptiness.

[00:40:50] Speaker 04:
And that is a strategy that makes sense in IPR because of the severe procedural constraints on the petitioner to try to respond to a new on-the-fly argument like that.

[00:41:00] Speaker 04:
But as Your Honors pointed out, the word the is the Achilles heel in that argument because the 597 patent very clearly, as our expert says, discloses discharge of substantially all, even under their construction.

[00:41:13] Speaker 04:
So in our view,

[00:41:14] Speaker 04:
The case clearly requires a remand because the proper interpretation of removing is, as a present participle verb, an action as opposed to an operating condition.

[00:41:25] Speaker 04:
And in the alternative, the board's interpretation of this, now that we know that the whole patent owner presentation was based on an erroneous view of 103C, I think it's not accurate to say that this was not part of their presentation.

[00:41:39] Speaker 04:
It was built into their presentation, which is why this was never discussed by their expert.

[00:41:44] Speaker 04:
uh... uh... the board should not have uh... on its own allowed the patent on the law.

[00:41:49] Speaker 03:
Did the SNF argue below, as your opposing counsel says, uh... that very point?

[00:41:56] Speaker 04:
There was an... one of the things... what very point?

[00:42:03] Speaker 03:
Your opposing counsel says that when the uh... issue was raised by the board uh... your uh...

[00:42:12] Speaker 03:
counsel below said, well, they could just argue around it.

[00:42:15] Speaker 04:
Not true.

[00:42:16] Speaker 04:
215 would be 102B prior art in any event.

[00:42:19] Speaker 04:
So that point is simply not true.

[00:42:21] Speaker 04:
It was another reference.

[00:42:23] Speaker 03:
It wasn't said.

[00:42:23] Speaker 04:
Not as to the 215.

[00:42:26] Speaker 04:
There wasn't ever made as to something we haven't talked about at all here this morning, which was the 948 patent.

[00:42:31] Speaker 04:
But the 215 was always insisted upon and discussed at length in our expert submissions 1878 to 1882 of the JA that

[00:42:41] Speaker 04:
This is prior art, and this shows that their expert was wrong when he said, quote, this is exhibit 2016, those who attempted to use inert gas to remove polymer gel from a reactor found that it was not a viable option.

[00:42:57] Speaker 04:
Their argument to the board was not that this didn't work for hydrous gels, but that it didn't work at all.

[00:43:03] Speaker 04:
And that was untrue.

[00:43:05] Speaker 04:
And that was felt on what we now have admitted on the record was an erroneous view of the law, in which they erroneously didn't show this to their experts.

[00:43:13] Speaker 04:
So we thank very much the court's attention and allowing me to go a little bit over.

[00:43:19] Speaker 04:
Thank you.

[00:43:20] Speaker 04:
We thank both sides.

[00:43:20] Speaker 04:
Thank you, Justice.

[00:43:22] Speaker 02:
That concludes our proceedings for today.

[00:43:24] Speaker 03:
All rise.