[00:00:00] Speaker 01:
Today, we have a special motion.

[00:00:04] Speaker 01:
I am going to make the motion.

[00:00:06] Speaker 01:
So I will turn over the presiding task to Judge Chen, hoping that there are no dissenters in the two-judge panel that remains.

[00:00:14] Speaker 01:
Holly, will you please stand?

[00:00:19] Speaker 01:
I move the admission of Holly Kathleen Victorsen, who is a member of the bar and is in good standing with the highest courts of California.

[00:00:28] Speaker 01:
I have knowledge of her credentials, and I'm satisfied that she possesses the necessary qualifications.

[00:00:34] Speaker 01:
Holly has been my law clerk for a little more than a year now, and she's conducted herself exceedingly well.

[00:00:41] Speaker 01:
She has been smart, hardworking, a great writer, but most importantly, she's been an absolute joy to work with and have in the chambers.

[00:00:51] Speaker 01:
I'm going to miss her tremendously when she moves on, but I know that our bar will be better off for having her in it.

[00:00:58] Speaker 01:
I'll let my colleagues deliberate and see if they accept my motion, grant my motion.

[00:01:04] Speaker 05:
All right.

[00:01:06] Speaker 05:
Judge Stoll, what do you think?

[00:01:09] Speaker 00:
I think that I agree with Judge Moore's motion.

[00:01:14] Speaker 00:
Holly has been a fantastic law clerk and a joy to have at the court.

[00:01:20] Speaker 05:
OK, thank you.

[00:01:22] Speaker 05:
I also know something about Miss Vickerson's qualities

[00:01:26] Speaker 05:
I interviewed her.

[00:01:27] Speaker 05:
I gave her an offer to clerk.

[00:01:29] Speaker 05:
She decided to go a different direction.

[00:01:32] Speaker 05:
But based on the strength of your recommendation, based on your experience with Ms.

[00:01:40] Speaker 05:
Vickerson and the fact that she was able to endure a clerkship with you for over a year, I... The court... What doesn't kill you makes you stronger.

[00:01:50] Speaker 05:
The court grants your motion, Judge Moore.

[00:01:53] Speaker 01:
Holly, please raise your right hand.

[00:01:56] Speaker 01:
and Jen, our courtroom deputy, is going to swear you in.

[00:02:19] Speaker 01:
Okay.

[00:02:23] Speaker 01:
Now,

[00:02:24] Speaker 01:
Our next matter of business is our first case, 2016-2347, specialty fertilizer products versus Shell Oil Company.

[00:02:35] Speaker 01:
Mr. Collins, please proceed.

[00:02:37] Speaker 02:
Thank you, Your Honor.

[00:02:39] Speaker 02:
May I please report?

[00:02:41] Speaker 02:
We believe that there are three principal issues that need to be dealt with that can disappear.

[00:02:48] Speaker 02:
The first is the full scope of the prior art on the question of obviousness.

[00:02:53] Speaker 02:
Second is the unrebutted test evidence from patent owner, establishing that the method of making the patented product is irrelevant to the commercial success issue.

[00:03:03] Speaker 02:
And finally, the PTO's complete avoidance of the due process confrontation issue in this case.

[00:03:11] Speaker 02:
As to obviousness, the, quote, additional reasoning, unquote, of the board decision relies very heavily on the disfavored artifice of routine,

[00:03:22] Speaker 02:
experimentation.

[00:03:24] Speaker 02:
Indeed, at every difficulty, this mantra is invoked by the board.

[00:03:30] Speaker 02:
But perhaps the most glaring error was to ignore fully two-thirds of the disclosure of the Bexton PCT reference.

[00:03:40] Speaker 02:
As correctly noted by the panel of the examination examiners in the RAM, there are three equal billing scenarios, A, B, and C.

[00:03:49] Speaker 02:
ammonium sulfate alone, ammonium phosphate alone, and a combination of ammonium sulfate plus ammonium phosphate.

[00:03:55] Speaker 02:
When all of these scenarios are considered, there is an infinity of disclosed compositions outside the claims.

[00:04:03] Speaker 02:
Moreover, the ranges in BEX and PCT are not designed to teach anything to a skilled artisan.

[00:04:09] Speaker 02:
They have 1 to 99 percent.

[00:04:12] Speaker 02:
I submit that's more of a patent lawyer's range than a

[00:04:16] Speaker 02:
scientists range.

[00:04:17] Speaker 00:
One of the things I was struggling with was whether your specification in any way addresses the criticality of the ranges that you've claimed.

[00:04:27] Speaker 00:
Is there anything in your specification that talks about why those ranges might be important?

[00:04:32] Speaker 00:
Yes.

[00:04:33] Speaker 02:
We talk about it in the context, Your Honor, of providing the microenvironments of acidity.

[00:04:41] Speaker 02:
In other words, the real key to the invention, or one key, is certainly

[00:04:46] Speaker 02:
the fact that you get these microenvironments where you can enhance the uptake of micronutrients without completely having bulk soil acidification, which is ultimately detrimental to yield.

[00:05:00] Speaker 00:
Where is that in your specification?

[00:05:02] Speaker 00:
And again, I'm talking about with respect to this specific claimed range.

[00:05:06] Speaker 02:
Yes.

[00:05:07] Speaker 02:
It recites that the ranges are important for achieving that result in the first part of the case.

[00:05:12] Speaker 02:
I can get the site for you.

[00:05:15] Speaker 02:
But I must admit there's no data in the application that supports that.

[00:05:21] Speaker 00:
So does it say something like this particular range provides disadvantage or anything like that?

[00:05:28] Speaker 02:
I believe it does.

[00:05:29] Speaker 02:
I'll have a chance to look at it and be back at it.

[00:05:33] Speaker 02:
But I believe so, yes.

[00:05:37] Speaker 02:
OK, pardon me.

[00:05:39] Speaker 02:
But in any event, these ranges are so broad

[00:05:43] Speaker 02:
It's difficult to get a broader range than 1 to 99%.

[00:05:48] Speaker 02:
And then 1 to 80 on the elemental sulfur.

[00:05:55] Speaker 02:
Bottom line is a skilled artist in reading Bexton PCT would have a host of unanswered questions.

[00:06:02] Speaker 02:
How much sulfur do I use?

[00:06:04] Speaker 02:
How much ammonium sulfate?

[00:06:05] Speaker 02:
How much ammonium phosphate?

[00:06:07] Speaker 02:
And we submit that this case falls squarely into the situation described

[00:06:12] Speaker 02:
from the Peterson case, where there are a multitude of distinct compositions.

[00:06:18] Speaker 02:
And accordingly, we also contend that the examiner's position in the RAN setting forth that the art did not establish a prima facie case and analyzing this on the basis of a genus species is entirely correct.

[00:06:36] Speaker 02:
The claims also require that the granules, when applied to soil,

[00:06:41] Speaker 02:
create lower pH portions.

[00:06:43] Speaker 02:
Now while Bexton PCT broadly mentions acidification, there's no teaching of the claimed localized acidification.

[00:06:52] Speaker 02:
As explained by our expert Dr. Rush, soil chemistry is exceedingly complex and you can't a priori say that something's going to work because

[00:07:04] Speaker 02:
you need to actually test a given composition to determine whether it has these properties.

[00:07:09] Speaker 01:
But your problem is that we have a standard of review to apply, and the standard of review is substantial evidence.

[00:07:14] Speaker 01:
And Dr. Blair testified that each of the components would have an acidifying effect, and that therefore lower pH was inherent.

[00:07:22] Speaker 01:
You may be right.

[00:07:23] Speaker 01:
He may be wrong.

[00:07:25] Speaker 01:
But how do I conclude there isn't substantial evidence for that fact-finding by PTO?

[00:07:29] Speaker 02:
Well, first of all,

[00:07:33] Speaker 02:
I mean, our position is that none of these declarations are properly considered because of the issue of confrontation, that they cannot amount to substantial evidence under those conditions.

[00:07:50] Speaker 00:
What if we disagree with you based on the Abbott case?

[00:07:53] Speaker 00:
Then what is your response to Judge Moore's question?

[00:07:57] Speaker 02:
Well, the board

[00:08:02] Speaker 02:
did not adopt Blair's opinions.

[00:08:08] Speaker 02:
He just said it was inherent.

[00:08:10] Speaker 02:
There's nothing in the board opinion where it says, we adopt this opinion.

[00:08:14] Speaker 02:
So I don't see how this court can make its own findings a fact on this, because the board never applied the Blair declaration.

[00:08:31] Speaker 00:
that the board made a finding of fact.

[00:08:34] Speaker 00:
Your point is that we can't rely on the Blair Declaration to support the board's finding of fact, because the board didn't expressly say that it was relying on Blair's declaration.

[00:08:44] Speaker 02:
Well, I think you've run into a general problem.

[00:08:46] Speaker 02:
Because this court cannot sustain a decision below based upon facts that are not in the record.

[00:08:56] Speaker 02:
And so in other words, this court cannot

[00:09:01] Speaker 02:
fill in the blanks for the board opinion.

[00:09:07] Speaker 02:
Now, the second issue was commercial success.

[00:09:11] Speaker 02:
We believe it's very important to understand what is not an issue.

[00:09:17] Speaker 02:
Virtually none of the factual matters set forth in the Bocard Declaration are disputed.

[00:09:22] Speaker 02:
Huge product sales, increasing market share, price premiums, advertising and promotion focused on yield enhancement,

[00:09:30] Speaker 02:
products are covered by the claims, the customer benefits of the products.

[00:09:35] Speaker 05:
You don't have a claim though to, you do not have a patent claim to a specific formulation that matches up with the commercialized product, right?

[00:09:46] Speaker 05:
The commercialized product that you say that you got enjoyed commercial success with, it's just one specific formulation of the patent claim composition which covers

[00:10:00] Speaker 05:
broad ranges of different ingredients.

[00:10:03] Speaker 05:
That is true, but I don't... So therefore the concern is, is that your commercial success is not truly commensurate with the scope of the claim.

[00:10:12] Speaker 05:
I mean, there's so many different iterations of products that could be made with your claimed composition.

[00:10:21] Speaker 05:
So how do we... Well, Your Honor, I think... How do we have any confidence that it's

[00:10:28] Speaker 05:
the full range of your claim is truly going to drive commercial success in the same way that this very specific formulation did.

[00:10:37] Speaker 02:
Well, Your Honor, first of all, I think the law is clear that I forget the name of the case, but this Court has decided that you don't have to show commercial success to the full scope of the claims.

[00:10:49] Speaker 05:
Well, there has to be something reasonably commensurate with the scope of the claim, I guess is what I'm concerned about.

[00:10:56] Speaker 05:
If you have one percentage that's, I don't know, 0.25 to 25 percent and another ingredient that's, I don't know, 2 to 49 percent, you know, these are really, really broad ranges.

[00:11:07] Speaker 05:
And so, yes, you have commercial success, or we could argue that you do, for one particularized formulation of it.

[00:11:15] Speaker 05:
But I don't know what that tells us.

[00:11:18] Speaker 05:
I mean, if you had a dependent claim, for example, to this very specific formulation, then there would be

[00:11:26] Speaker 05:
a much more tight nexus between that specific formulation claimed in a dependent claim and the commercialized product.

[00:11:34] Speaker 05:
Here, I don't know if we can say we have that, given the breadth of the claim and all the different types of compositions that are actually being covered by your claim.

[00:11:44] Speaker 02:
Well, Your Honor, but you know, commercialization is different than talking about scope of claims.

[00:11:50] Speaker 02:
I mean, if you have a product that is successful, you don't go out and make other products just

[00:11:56] Speaker 02:
to satisfy some patent document.

[00:12:00] Speaker 02:
In other words, there are three products, and they are all commercially successful.

[00:12:06] Speaker 02:
And I don't believe that it's correct to say that your commercial success must be commensurate with the scope of the claims.

[00:12:13] Speaker 02:
I believe that to be not the case under the law.

[00:12:16] Speaker 02:
And I can't remember the name of the case, but that came up during the argument before the Board of Appeals.

[00:12:23] Speaker 02:
And the board said, no, no, you can't.

[00:12:25] Speaker 02:
That is not the law.

[00:12:29] Speaker 02:
But in any case, I don't understand how to prove commercial success, you would have to show everything within the range of your claims.

[00:12:40] Speaker 02:
Because we're talking about commercial success, not some sort of patent range.

[00:12:48] Speaker 02:
So as I say, you don't go and make products.

[00:12:52] Speaker 05:
I'm not suggesting you have to make

[00:12:54] Speaker 05:
you know, four million different products, and then put them out, all out on the market, and then show that each one of the four million enjoyed commercial success.

[00:13:02] Speaker 05:
But we don't have that situation here.

[00:13:04] Speaker 05:
We have, we're on the other end of the spectrum, where you have one data point.

[00:13:09] Speaker 02:
We have three different products.

[00:13:10] Speaker 05:
Okay.

[00:13:11] Speaker 05:
You have three, maybe.

[00:13:12] Speaker 05:
Right.

[00:13:12] Speaker 05:
And then there's a whole much wider range.

[00:13:15] Speaker 05:
And then, in the face of all that, we have a prior art reference.

[00:13:19] Speaker 05:
Bexton, I believe, which teaches

[00:13:23] Speaker 05:
combining all these different elements already.

[00:13:25] Speaker 05:
So now we need to try to figure out is there something specific about what's inside your claimed ranges that is that's driving the commercial success aside from what Bexton already teaches which is the broad general teaching of combining these very same elements however you see fit.

[00:13:50] Speaker 02:
Well all I can say is

[00:13:52] Speaker 02:
The commercial success is real, and it is for three different products at least.

[00:14:00] Speaker 02:
And I guess I don't understand why you say we don't have to go out and make a million different products and say that they're all commercially successful.

[00:14:10] Speaker 02:
How many do we have to make?

[00:14:11] Speaker 02:
I mean, we have three products, and we have extraordinary commercial success with those three products, and they're covered by the claims.

[00:14:18] Speaker 01:
But the fact that they're covered by the claims doesn't

[00:14:22] Speaker 01:
help you necessarily in front of the PTO.

[00:14:26] Speaker 01:
The fact that they're covered by the claims of this were a contested proceeding in a district court litigation would give you a presumption of nexus.

[00:14:32] Speaker 01:
But the PTO said you're not entitled to the presumption of nexus because these re-exams are not contested cases.

[00:14:39] Speaker 01:
So that means you had to prove that the commercial success was attributed to the claims and the inventive aspects of those claims over the prior art.

[00:14:47] Speaker 01:
And that's where they said you failed to prove.

[00:14:48] Speaker 01:
So even if you meet the commensurate and scope issue, you still have the issue of the nexus for the commercial success.

[00:14:58] Speaker 02:
Well, I'd say two things to that, Your Honor.

[00:15:01] Speaker 02:
Number one, under the broadband case, the reasoning in that case is not limited to contested proceedings.

[00:15:09] Speaker 02:
Here you have a situation where two parties are on an equal evidentiary footing.

[00:15:13] Speaker 02:
Everything we cited for commercial success is in the public domain.

[00:15:18] Speaker 02:
Nothing shall have full and complete opportunity.

[00:15:21] Speaker 02:
So under those circumstances, we submit that the rule of PC broadband should include our situation.

[00:15:27] Speaker 05:
Is an inter-parties re-examination a contested case?

[00:15:32] Speaker 02:
not in accordance with patent dollars rules.

[00:15:34] Speaker 02:
No.

[00:15:35] Speaker 01:
Well, and the other thing is, I kind of question whether on equal evidentiary footing, I mean, in light of your due process arguments in this case, it's clear that this isn't a full-blown evidentiary proceeding where both sides have an opportunity to take all of the evidence that they want.

[00:15:50] Speaker 01:
So I think that inter-party re-exams, unlike IPRs, allow for a lot less evidentiary undertaking.

[00:16:00] Speaker 02:
The evidence that we relied upon is in the public domain.

[00:16:04] Speaker 02:
There was no discovery needed.

[00:16:05] Speaker 02:
It's right there in the public domain.

[00:16:08] Speaker 02:
There's nothing that we took no discovery, couldn't take any discovery.

[00:16:13] Speaker 02:
We relied on public domain information.

[00:16:15] Speaker 02:
They had that equal access to that same public record information.

[00:16:19] Speaker 02:
So therefore, the parties were completely at par in terms of the evidentiary issues that relate to commercial success.

[00:16:27] Speaker 02:
And they've submitted nothing.

[00:16:29] Speaker 01:
OK, well, you're into your rebuttal time.

[00:16:32] Speaker 01:
Why don't we move on and hear from, I believe, Mr. Petrie?

[00:16:35] Speaker 01:
Are you going first?

[00:16:37] Speaker 03:
Yes, Your Honor.

[00:16:40] Speaker 03:
Good morning, Your Honor.

[00:16:41] Speaker 03:
Good morning, Your Honors.

[00:16:41] Speaker 03:
May I please the court?

[00:16:43] Speaker 03:
I'd like to focus my time on just a few of the key issues that are raised in the Patent Owner's Appeal.

[00:16:49] Speaker 03:
First, the dicta that's in the footnote in Enrique Peterson.

[00:16:53] Speaker 03:
The Patent Owner argues that that footnote creates an exception to the rule

[00:16:57] Speaker 03:
where if, as in this case, a claimed range is fully encompassed by the range that's disclosed in the prior art, there's a prima facie case of obviousness.

[00:17:06] Speaker 03:
This case does not come within the possible exception that's set out in the footnote.

[00:17:11] Speaker 03:
That footnote is directed to broad claimed ranges in the prior art versus a possible distinct composition that's in the claim, or a broad genus versus specific substances that are in the claim.

[00:17:27] Speaker 03:
And here, we don't have specific substances or distinct compositions.

[00:17:32] Speaker 03:
The claim broadly covers anywhere from 5% to 49% ammonium sulfate or 2.5% to 25% elemental sulfur.

[00:17:41] Speaker 03:
And I think, Judge Stoll, this goes to your point about it, whether there's anything in the patent that explains the criticality of these specific ranges.

[00:17:49] Speaker 03:
If you look in column four of the patent, it sets out a table that describes the various ranges.

[00:17:56] Speaker 03:
On the right side of that table, it sets out the preferred ranges.

[00:18:00] Speaker 03:
And on the left side, it sets out the broad ranges.

[00:18:03] Speaker 03:
What the 459 patent claims is the broad ranges, not the preferred ranges.

[00:18:09] Speaker 03:
And I think this is clearly shown on page three of the reply brief.

[00:18:13] Speaker 03:
Here, the patent owner provides a diagram that shows the scope of what these claims cover.

[00:18:18] Speaker 03:
It covers all of the compositions that are within that red box on the lower left of the diagram.

[00:18:23] Speaker 03:
That's far different from distinct compositions or specific substances, which is the concern of the footnote in Ray Peterson.

[00:18:32] Speaker 00:
Is there anything you think in this patent that talks about whether in the broad range or the preferred range, how those ranges provide or are better to achieve the claimed objective of having a localized spot with a lower pH?

[00:18:49] Speaker 03:
Absolutely not, Your Honor.

[00:18:50] Speaker 03:
I mean, as the solicitor points out in their brief,

[00:18:54] Speaker 03:
When the patent is describing how to get those microenvironments, all it's saying is, instead of using a bulk fertilizer, put it in granular form.

[00:19:04] Speaker 03:
So it's nothing about the specific ranges that are described.

[00:19:08] Speaker 03:
And this also goes to the point about the inherent C feature.

[00:19:12] Speaker 03:
And I think, Judge Moore, you pointed out that there is a declaration in the record that supports the position that, in fact, in Bexton, the elemental sulfur, the ammonium sulfate,

[00:19:23] Speaker 03:
and the ammonium phosphate would each lower the pH in the soil.

[00:19:28] Speaker 03:
But if you look at what was before the board on appendix pages 2895 to 2898, there Dr. Blair also addressed the argument that they're raising now on the appeal that the phosphate would tend to create a buffer in the soil and therefore it wouldn't lower the pH.

[00:19:48] Speaker 03:
Dr. Blair explained that, no, that doesn't happen in the concentrations of these elements that are in the soil.

[00:19:54] Speaker 03:
That's substantial evidence that would support the board's finding on that point.

[00:19:59] Speaker 03:
Turning real briefly then to the commercial success argument here, the board properly applied this court's law in finding that the patent owner failed to provide evidence that the commercial success of the MicroEssentials product was due to the merits of the claimed invention.

[00:20:17] Speaker 03:
beyond merely what the fertilizer components, beyond the fertilizer components themselves, all of which were already talked by Bexton.

[00:20:25] Speaker 03:
And here, the patent owners are relying on the presumption of nexus simply because the MicroEssentials product was successful and because it's within the broad scope of the 459 patent claims.

[00:20:37] Speaker 03:
And Judge Moore, as you pointed out, this is not a contested case.

[00:20:40] Speaker 03:
And so the presumption that applies in contested cases, like district court infringement litigation,

[00:20:46] Speaker 03:
or in inter-parties review cases, it shouldn't apply in the re-examination.

[00:20:50] Speaker 01:
Why?

[00:20:51] Speaker 03:
Because as you pointed out, we don't have the ability to go out and get the evidence that might tend to rebut these types of arguments.

[00:21:00] Speaker 03:
If you think about when the commercial success gets raised in the proceeding, it would be in the patent owner's response to the office action.

[00:21:09] Speaker 03:
Under the statute, the requester

[00:21:12] Speaker 03:
has 30 days to provide comments.

[00:21:14] Speaker 03:
And that can't be extended because it's in the statute.

[00:21:17] Speaker 03:
And so the patent owner would make these commercial success arguments in that response.

[00:21:22] Speaker 03:
And our next response would be due 30 days after that.

[00:21:25] Speaker 03:
And so we would have 30 days to go out, try to get some sort of evidence to rebut commercial success, the presumption of commercial success.

[00:21:33] Speaker 03:
And as this court has indicated in other cases, that evidence might be the commercial success was due to advertising, or it's due to customer support.

[00:21:42] Speaker 03:
or something like that.

[00:21:43] Speaker 03:
That's all information that we would have to go out and get from third parties in the market, but there is no ability to subpoena third parties in interparties reexamination proceedings.

[00:21:54] Speaker 03:
So for that reason, the presumption of nexus shouldn't apply here.

[00:21:59] Speaker 03:
And I think another reason in this specific case the presumption shouldn't apply, because what they're pointing to, they're arguing that the commercial success of micro essentials

[00:22:10] Speaker 03:
gives rise to this presumption such that they can overcome the prima facie case of obviousness over Bexton.

[00:22:17] Speaker 03:
And they're arguing they get this presumption because it's successful and it's because it's within the broad scope of the 459 patent claims.

[00:22:25] Speaker 03:
But what they're ignoring is that it's also within the scope of what's disclosed in Bexton.

[00:22:31] Speaker 03:
And that's why the board here was correct in applying this court's case law and requiring the patent owner to come forward with some evidence

[00:22:38] Speaker 03:
that the commercial success was due to the specific features of the 459 patent claims, namely the specific ranges, over and above what was already disclosed by Bexton.

[00:22:50] Speaker 05:
In addition, when it comes to invoking the presumption of nexus, isn't there some requirement that the commercial product has to have some kind of one-to-one correspondence with the patent claim itself?

[00:23:05] Speaker 05:
the claim is the product and the product is the claim, as opposed to the product being one possible embodiment that is covered by a broad scope of the claim?

[00:23:18] Speaker 03:
Your Honor, I don't want to go so far to argue that you have to show a one-to-one correspondence there.

[00:23:24] Speaker 03:
I think my colleague was thinking of the NRAE GLAT case, and that said that you don't have to show all these different embodiments that would be successful that are within the scope of the claim.

[00:23:34] Speaker 03:
So I don't want to argue that far, but I will argue that these claims are very broad, even compared to the broader Bexton claims.

[00:23:43] Speaker 03:
And they've identified, what they say, three products that are within those claims.

[00:23:47] Speaker 03:
The problem is, those three products are also within the disclosure of Bexton.

[00:23:52] Speaker 03:
So they haven't shown any commercial success over and above what's already disclosed in Bexton.

[00:24:00] Speaker 03:
So if your honors have no other questions,

[00:24:03] Speaker 03:
We respectfully request that the Board's decision be affirmed.

[00:24:07] Speaker 01:
Mr. Warwick.

[00:24:14] Speaker 04:
Good morning, Your Honors.

[00:24:15] Speaker 04:
May I please the Court?

[00:24:17] Speaker 04:
I'd like to address the due process issue that's been raised.

[00:24:20] Speaker 04:
And our position is that that issue was fully resolved in the Abbott decision, which determined that Section 24 subpoenas are not available in inter-parties re-examination proceedings.

[00:24:31] Speaker 04:
which has been discussed are not contested cases.

[00:24:35] Speaker 04:
In particular here, Specially Fertilizer has had notice and an opportunity to be heard and specifically an opportunity to rebut these statements that were made in the Hutter and Blair declarations.

[00:24:47] Speaker 04:
They submitted their own declarations and they had no problem identifying numerous alleged problems with the declarations in their briefing to this court.

[00:24:59] Speaker 04:
The points made in specialty fertilizer's brief, they primarily rely on various cases talking about more trial or adjudicatory type settings and not the type of examination proceeding that we're dealing with here.

[00:25:14] Speaker 04:
And in particular, they've cited the Gamble case repeatedly, which is a case from this court, for the proposition that without the right to confrontation, lower court proceedings or, you know,

[00:25:27] Speaker 04:
that agency proceedings are essentially nullified.

[00:25:29] Speaker 04:
And that's just not the case, because even in Gamble, the conclusion of the court was that there was, even though there had been no confrontation in that particular case, there was an affirmance.

[00:25:40] Speaker 04:
And in that case, that turned on the fact that there was no prejudice to the appellant.

[00:25:47] Speaker 04:
On the range issue, I'd like to briefly just point out that because this is an examination

[00:25:54] Speaker 04:
and not in a trial proceeding, as in an AIA trial, the burden is on the examiner to establish obviousness under 103.

[00:26:06] Speaker 04:
And therefore, it's totally appropriate to shift the burden of production to the patent owner when we're dealing with ranges that are fully encompassed by the prior art, particularly when they're dealing with known components, with known properties.

[00:26:20] Speaker 04:
The proper approach in that case is to ask the patent owner to come forward with evidence of criticality, which would show that for some reason, a person of ordinary skill would not have turned to those specific ranges within the already disclosed range.

[00:26:34] Speaker 00:
Are you relying specifically on Enred Peterson for that point?

[00:26:38] Speaker 04:
Well, Enred Peterson is one of many cases.

[00:26:41] Speaker 04:
There are many cases that say even slightly overlapping ranges will give rise to that presumption.

[00:26:47] Speaker 04:
And Peterson says that that's even more so the case when you have a fully encompassed claimed range relative to the prior art.

[00:26:55] Speaker 04:
And here, I think it's important to note it's somewhat telling that specialty fertilizer is only focusing on the prima facie case.

[00:27:03] Speaker 04:
They have not even attempted to establish criticality.

[00:27:06] Speaker 04:
When the board reversed the examiner and found that the claimed range would have been obvious,

[00:27:13] Speaker 04:
specialty fertilizer came back in a rehearing petition in which it had to raise all of its points of disagreement.

[00:27:19] Speaker 04:
And unexpected results was not one of those points.

[00:27:22] Speaker 04:
And therefore, it's been waived.

[00:27:24] Speaker 04:
Their entire argument rests on the idea that there should not have been a prima facie case shifting the burden back to them to establish why this was a particularly important range or would have produced unexpected results.

[00:27:37] Speaker 01:
Peterson says a prima facie case of obviousness typically exists when the range

[00:27:43] Speaker 01:
of claim compositions overlap the ranges disclosed.

[00:27:46] Speaker 01:
And it talks in multiple places about prima facie case.

[00:27:49] Speaker 01:
You referred to it as a presumption.

[00:27:51] Speaker 01:
And you said that there are other cases that say that presumption is true even when they're overlapping claim ranges.

[00:27:58] Speaker 01:
Do any of our cases, to your knowledge, refer to it as a presumption?

[00:28:02] Speaker 01:
I'm just trying to make sure that these legal words that we use are accurate and appropriate.

[00:28:09] Speaker 01:
Are you familiar with it?

[00:28:10] Speaker 01:
I mean, I don't see the word presumption in Peterson.

[00:28:11] Speaker 01:
I see it established as a prima facie case.

[00:28:14] Speaker 01:
And I just want to know, thinking about how to phrase it.

[00:28:18] Speaker 04:
Sure.

[00:28:19] Speaker 04:
I would agree.

[00:28:19] Speaker 04:
Prima facie case would be the correct way to frame it, to the extent I've referred to as a presumption.

[00:28:25] Speaker 04:
I apologize.

[00:28:26] Speaker 04:
That's the more accurate.

[00:28:28] Speaker 01:
No, I'm just wondering, are you familiar with any cases using that word?

[00:28:31] Speaker 01:
This is not a hostile question.

[00:28:35] Speaker 01:
Sure.

[00:28:36] Speaker 04:
Not as I stand here today, Your Honor.

[00:28:37] Speaker 01:
All right.

[00:28:39] Speaker 05:
Um, it feels like, you know, a key pivot point in this case, and maybe in a lot of PTO cases is when the patent examiner agency invokes the notion of routine experimentation.

[00:28:55] Speaker 05:
Uh, and then, and then sometimes that can feel like a shortcut to get to the finish line where the agency just says, Oh, by the way, it would be routine experimentation to get to all these interesting claim ranges.

[00:29:08] Speaker 05:
The end.

[00:29:09] Speaker 05:
rejection.

[00:29:11] Speaker 05:
And what I'm looking for is, are there some contours or principles that you can tell us on how the agency thinks about when it is right and when it is wrong to invoke the notion of routine experimentation?

[00:29:28] Speaker 04:
Yes, Your Honor.

[00:29:28] Speaker 04:
So I think the routine experimentation language shows up in two different contexts.

[00:29:34] Speaker 04:
First, in the context of making the prima facie case.

[00:29:37] Speaker 04:
And there, I think it's just a shorthand that the agency uses to say, this is a situation where we need to put the burden of production back on the patent owner or the applicant.

[00:29:47] Speaker 04:
Right.

[00:29:47] Speaker 05:
But the agency has to make a conclusion or advance a rationale for why it thinks it's OK to push the burden away from itself and onto the applicant or patent owner.

[00:30:02] Speaker 05:
And what I'm looking for from you is if you can

[00:30:06] Speaker 05:
give me what is that rationale, what is that principle?

[00:30:10] Speaker 04:
So that principle was stated in Peterson, that where you're dealing with ranges of known components, known ingredients with known properties, and those ranges overlap, or especially when they completely encompass the claimed range, then it's, at that point you can assume that one of ordinary skill in the art would have the motivation to design within those disclosed ranges and experiment with various percentages of those components.

[00:30:35] Speaker 04:
And then again, that just simply shifts the burden of production back to the patent owner to rebut that, usually by showing criticality through unexpected results.

[00:30:44] Speaker 04:
Now, there are also cases that talk about routine experimentation in terms of the ultimate question of obviousness.

[00:30:50] Speaker 04:
And I think that's, again, just getting to this question of, in view of any evidence put forward by the patent owner, and in view of the prior art, is this a situation where someone is just making routine expected variations to the art that KSR talked about?

[00:31:05] Speaker 04:
Or is this something where an inventor discovered something truly unexpected that one would not have otherwise come to through normal means?

[00:31:15] Speaker 01:
OK.

[00:31:15] Speaker 01:
Thank you, Mr. Horak.

[00:31:17] Speaker 01:
Mr. Collins, you have some rebuttal time.

[00:31:25] Speaker 02:
Your Honor, there was talk here about examination versus adjudicatory proceedings, et cetera.

[00:31:30] Speaker 02:
If the Patent Office had arranged these proceedings to be truly examinational, we wouldn't be here arguing today about it.

[00:31:37] Speaker 02:
Because in a regular examination, you cannot come in with affidavits or declarations from third parties, particularly your own employees, saying that this is obvious over that.

[00:31:49] Speaker 02:
You see, the problem here is that they've allowed these kinds of declarations to come in without any corresponding cross-examination rights.

[00:32:00] Speaker 02:
which we deem to be directly against the constitutional right of due process.

[00:32:05] Speaker 02:
We think the law supports us in that.

[00:32:07] Speaker 02:
And so the problem here is that the proceeding is structurally, in this case, the proceeding was structurally unconstitutional.

[00:32:18] Speaker 01:
Mr. Collins, you indicated that when you sat down, you were going to find a site for Judge Stoll.

[00:32:23] Speaker 01:
Yes.

[00:32:23] Speaker 01:
Were you able to find that site?

[00:32:24] Speaker 02:
The answer is no.

[00:32:26] Speaker 02:
I'm sorry.

[00:32:27] Speaker 02:
I did not find anything specific to the ranges.

[00:32:30] Speaker 02:
I'm sorry, I thought there was there, but I must admit I did not.

[00:32:33] Speaker 02:
All right, one last thing in front of me.

[00:32:37] Speaker 02:
On the commercial success issue, the examiner, I'm sorry, the board held that it was nothing that wasn't shown already in the prior art.

[00:32:49] Speaker 02:
But they got to that by the old favorite, the standby of routine experimentation.

[00:32:57] Speaker 02:
What they've done is made it completely circular.

[00:33:00] Speaker 02:
and have collapsed the analysis of commercial success to be equivalent to that of alleged obviousness.

[00:33:07] Speaker 02:
So in other words, they say, here's the prior art.

[00:33:09] Speaker 02:
You can do it by routine experimentation.

[00:33:12] Speaker 02:
You go over here to commercial success.

[00:33:13] Speaker 02:
They say, well, you can find it readily available through routine experimentation.

[00:33:19] Speaker 02:
So therefore, there's no difference in the analysis.

[00:33:22] Speaker 02:
And that's not the law.

[00:33:23] Speaker 02:
I mean, there's a different analysis for commercial success than for alleged obviousness.

[00:33:28] Speaker 02:
I will close by saying further.

[00:33:31] Speaker 02:
I think that if this Court will take a unbiased look at what the examiner, the panel of examiners did in the RAND versus the board opinion, they're read side by side.

[00:33:45] Speaker 02:
I think the conclusion is inevitable that what the examiners did was far more nuanced and had much more

[00:33:54] Speaker 01:
With all due respect, we can't do that.

[00:33:56] Speaker 01:
We can't take an unbiased look unless you want us to disregard our standard of review.

[00:34:02] Speaker 01:
We don't review the examiner's determination for substantial evidence and hold it up next to the board's determination for substantial evidence.

[00:34:08] Speaker 01:
We only review the board's determination for substantial evidence.

[00:34:11] Speaker 01:
We don't get to review things de novo.

[00:34:13] Speaker 01:
So you're asking us, you say, if you will only do this.

[00:34:16] Speaker 01:
Well, we can't do that because the law doesn't allow us to.

[00:34:20] Speaker 01:
The law requires us to review these things for deference.

[00:34:24] Speaker 02:
All right.

[00:34:26] Speaker 02:
Let me restate it.

[00:34:30] Speaker 02:
The board's opinion is nothing but conclusory.

[00:34:34] Speaker 02:
It is nothing but a bunch of unbased conclusions.

[00:34:38] Speaker 02:
And we submit that when you start really analyzing references, each individually and what's in the references, the conclusion is inescapable that the board's decision should be reversed.

[00:34:52] Speaker 01:
I thank all counsel for their argument.

[00:34:54] Speaker 01:
The case is taken under submission.