[00:00:00] Speaker 00:
We have four cases today for decision.

[00:00:05] Speaker 00:
Three are on argument.

[00:00:07] Speaker 00:
And one of the cases has been submitted on the briefs.

[00:00:11] Speaker 00:
Our first case today is BASF corporations versus Inaku, 17-1425.

[00:00:16] Speaker 00:
Mr. Desai?

[00:00:19] Speaker 00:
Did I pronounce your name correctly?

[00:00:24] Speaker 00:
You did, Your Honor.

[00:00:25] Speaker 00:
OK.

[00:00:25] Speaker 00:
Now we ask the parties to come prepared to

[00:00:28] Speaker 00:
give us comments with respect to the Supreme Court opinion in SAS, and general comments on the applicability of that opinion to IPRs in general, and also specifically to this particular case.

[00:00:43] Speaker 00:
So what I'd like to do is I'd like to entertain your comments.

[00:00:49] Speaker 00:
Be thorough, but be kind of brief too.

[00:00:51] Speaker 00:
I'm not going to dock your time on the merits of the case, but we would like to hear from

[00:00:57] Speaker 00:
from counsel, and we're very interested in your viewpoint.

[00:01:02] Speaker 00:
So Mr. Desai, why don't you go first, and then we'll ask Counselor Schoenfeld to follow, and then we'll get to the merits of the case.

[00:01:13] Speaker 02:
Yes, Your Honor.

[00:01:14] Speaker 02:
Specifically with respect to the IPRs at issue in the case involving BASF,

[00:01:21] Speaker 02:
We do not believe that SAS is pertinent to this particular matter because at this point in time, the petitioner is no longer involved in this matter and the issue of whether the PTAP should have instituted on all claims or done a partial institution has not been preserved for any type of appeal.

[00:01:44] Speaker 02:
So in this particular instance, we believe that SAS would not be applicable to this case.

[00:01:50] Speaker 02:
However,

[00:01:51] Speaker 02:
It is true that in this matter, there was a partial institution.

[00:01:58] Speaker 02:
When the IPRs were filed, the petitioner challenged all of the claims across various petitions.

[00:02:07] Speaker 02:
In the 1121 petition, all of the challenge claims were instituted, but I believe it's the 1124 and the 1125, there was only a partial institution.

[00:02:19] Speaker 05:
In Justice Korsuch's opinion, he talked about the statute and whether the Institute and IPR is, as he put it, a binary choice, either Institute or don't.

[00:02:40] Speaker 05:
And in that sense,

[00:02:46] Speaker 05:
What happened in at least the two IPRs relating to the 662 patent, the board didn't institute with respect to all claims.

[00:02:59] Speaker 05:
So is there some inconsistency there?

[00:03:03] Speaker 05:
Did the board act beyond its authority?

[00:03:07] Speaker 05:
And is there a question with respect to a lack of finality or with respect to

[00:03:15] Speaker 05:
whether this is a justiciable controversy before us?

[00:03:20] Speaker 02:
Your Honor, at the time the institution decisions were made, I believe that was how the rules were interpreted.

[00:03:25] Speaker 02:
The rules were interpreted that partial institutions were permitted.

[00:03:30] Speaker 02:
So at the time the decision was made, we believe it was proper.

[00:03:33] Speaker 05:
Yeah, but the Supreme Court said that's wrong.

[00:03:35] Speaker 05:
That's wrong.

[00:03:37] Speaker 05:
In other words, the Supreme Court, I think, is saying that what happened in this case

[00:03:43] Speaker 05:
shouldn't properly have happened.

[00:03:47] Speaker 05:
So where does that leave us?

[00:03:49] Speaker 02:
I believe that leaves us with the issue that this issue was never preserved for an appeal by the petitioner in this case.

[00:03:57] Speaker 00:
Why would it need to be preserved?

[00:03:59] Speaker 00:
Is this a jurisdictional issue we're looking at?

[00:04:03] Speaker 02:
To be honest, Your Honor, I'm not entirely sure.

[00:04:06] Speaker 02:
From our perspective, the petitions were challenged.

[00:04:11] Speaker 02:
The grounds were challenged.

[00:04:13] Speaker 02:
At the time they were challenged, it was the Patent Office's view that they could do parcel institutions.

[00:04:20] Speaker 02:
That's what occurred.

[00:04:22] Speaker 02:
There was never any dispute as to the merits of the institution decisions on that issue.

[00:04:30] Speaker 02:
And the appeals that are being presently presented to the court, the issue of whether the institution decisions were proper has never been made.

[00:04:40] Speaker 06:
I'm wondering if maybe we should

[00:04:43] Speaker 06:
Can we think of the issue here with these IPRs and IPR petitions as if the petitioner is almost like a plaintiff in a DJ action trying to invalidate a series of claims and a patent.

[00:04:56] Speaker 06:
And then maybe in a DJ action, the district court only resolves some of the validity questions for some of the claims, but not all the claims, finding those claims to be invalid.

[00:05:10] Speaker 06:
Then the patent owner appeals.

[00:05:13] Speaker 06:
But the DJ plaintiff, the petitioner here, drops out.

[00:05:19] Speaker 06:
And so even though those claims, patent claims that were not invalidated, not addressed in the district court's opinion, there's a question of whether we would have a final judgment we could review.

[00:05:37] Speaker 06:
If the plaintiff is gone, then maybe the challenge to those

[00:05:43] Speaker 06:
unaddressed claims is likewise gone.

[00:05:47] Speaker 06:
I think that is... This is a rough analogy.

[00:05:50] Speaker 02:
I don't know if it works.

[00:05:52] Speaker 02:
It seems correct as an analogy because here the only person who was challenging the propriety of these claims was the petitioner, and they are no longer a part of this case and no longer challenging the claims anymore.

[00:06:04] Speaker 02:
So the issue as to... I think it's a few claims, nine to 11, and I don't remember the exact claims that were left out.

[00:06:10] Speaker 02:
And I apologize.

[00:06:11] Speaker 02:
I believe in all of the petitions at issue.

[00:06:13] Speaker 02:
there was a partial institution.

[00:06:15] Speaker 02:
My memory was... Even for the 203 patent?

[00:06:19] Speaker 02:
Not for the 203 patent.

[00:06:20] Speaker 02:
For the 662.

[00:06:21] Speaker 02:
For the 662 patent, there was a partial institution in the 1121 and 1123 petitions, as well as in the 1124 and 1125.

[00:06:31] Speaker 02:
But I think that analogy is proper.

[00:06:35] Speaker 02:
If not, if it is deemed that these judgments are not final, I believe then

[00:06:40] Speaker 02:
the only the issue would be to remand this and have the board decide the patentability of those claims that were left out that raises an interesting question because if it's remanded it goes back and there's no petitions this is correct there is no petitioner so this is an unusual circumstance so who's arguing for who against whom?

[00:07:03] Speaker 00:
that does present a quandary but do I understand you correctly that you don't

[00:07:10] Speaker 00:
You're not requesting that this court undertake any specific action.

[00:07:15] Speaker 00:
That's correct.

[00:07:19] Speaker 02:
With respect to SAS.

[00:07:20] Speaker 02:
OK.

[00:07:23] Speaker 02:
To be clear.

[00:07:24] Speaker 00:
I'm glad you clarified that.

[00:07:27] Speaker 00:
Anything else?

[00:07:28] Speaker 00:
No, Your Honor.

[00:07:29] Speaker 00:
OK.

[00:07:29] Speaker 00:
Let's hear from Counselor Schoenfeld.

[00:07:38] Speaker 04:
We agree with what BASF has articulated that here there is no party which is disputing those additional claims.

[00:07:48] Speaker 04:
The Patent Office doesn't have an interest in those claims.

[00:07:52] Speaker 04:
They're not the ones that filed the petition.

[00:07:54] Speaker 04:
The petitioner has dropped out.

[00:07:57] Speaker 04:
BASF is not requesting that those claims go back.

[00:08:01] Speaker 04:
We do believe it's a waiver issue similar to the Cordis case where intervening law comes along.

[00:08:08] Speaker 04:
or the DBC.

[00:08:09] Speaker 00:
You think a waiver would be necessary in order for us, for this court, to act to send back a particular case?

[00:08:16] Speaker 00:
You think that rather that the party would have had to preserve the right for... I think they would have to preserve the right in this case.

[00:08:28] Speaker 04:
I mean, following the court's case, the intervening law is not, you know, if you don't bring that issue up.

[00:08:32] Speaker 04:
And certainly a lot of parties have been

[00:08:35] Speaker 04:
preserving the oil states issue.

[00:08:37] Speaker 04:
So I think it was on people's minds and aware of it.

[00:08:39] Speaker 04:
So I think you can make an analogy to that.

[00:08:43] Speaker 06:
There's two questions, lines of questions I think we would have for you.

[00:08:46] Speaker 06:
One is the waiver question.

[00:08:48] Speaker 06:
The other is the jurisdictional question.

[00:08:50] Speaker 06:
Just sticking with the waiver question first, is it the agency's view that a party, an appellant would have to preserve

[00:09:02] Speaker 06:
the SAS question literally in their briefing, or given that SAS came out last week, is it the agency's view that a party at this point in time could file perhaps a 28-J letter and say, aha, there's been this significant change in law.

[00:09:22] Speaker 06:
And so now, in light of that significant intervening change in law with like

[00:09:30] Speaker 06:
court to send back the case to the board to do a complete IPR on all Petition 4 claims?

[00:09:41] Speaker 04:
In light of the recent decision, I'm not sure that the agency is 100% solidified in their position, but I would say that it is the position of the agency that there has been a waiver if it hasn't been specifically preserved.

[00:09:55] Speaker 04:
In the briefing?

[00:09:56] Speaker 06:
In the briefing.

[00:09:59] Speaker 06:
didn't raise it until after the SAS opinion last week, then they would be waived?

[00:10:07] Speaker 04:
I think so.

[00:10:07] Speaker 04:
I think that's fair, because I think there was awareness that it was going to be an opinion.

[00:10:13] Speaker 00:
And I think that... Well, in this case, both the green brief and the gray brief were filed after the SAS opinion.

[00:10:20] Speaker 00:
Should there have been some sort of mention about SAS at that point?

[00:10:24] Speaker 04:
The reply brief, like you mentioned, the reply brief was filed, so it could have been raised in this case as well before there was an awareness.

[00:10:34] Speaker 04:
At that point, I guess you would maybe have to write a letter or raise it in the reply brief.

[00:10:40] Speaker 06:
Getting back now to the jurisdictional question, now that we know, thanks to the SAS opinion, that the board's final written decision was really only

[00:10:53] Speaker 06:
final partial decision because it didn't actually resolve the question on the non-instituted but petition for claims.

[00:11:03] Speaker 06:
Does that make the final written decision the board did, the final partial written decision, ultra virus?

[00:11:10] Speaker 04:
I don't think so.

[00:11:11] Speaker 04:
There's still a final written decision on the merits of those claims and there's no question that those claims are finally decided and there's a

[00:11:22] Speaker 04:
decision on the merits, which can be reviewed by this court.

[00:11:25] Speaker 00:
That would make a review at that point interlocutory and its profile would be interlocutory.

[00:11:34] Speaker 00:
And yet we're prohibited under the AIA to hear any type of interlocutory appeals.

[00:11:42] Speaker 04:
I mean, I think this does present a unique situation because we have this, going forward, we're going to have a different regime.

[00:11:49] Speaker 04:
Currently we have this regime where we have these cases, but I think they can be looked at as almost, if they do go back and if there is a petitioner that has preserved that challenge and wants to raise that challenge, almost like a new petition.

[00:12:04] Speaker 06:
Getting back to waiver, is it your view that only the petitioner can seek a remand because there was

[00:12:18] Speaker 06:
only a partial institution or could either party, either the patent owner or the petitioner at this point, assuming they preserved it in your view, raise this challenge to seek the appeal to be sent back for consideration of the petition for but non-instituted claim.

[00:12:37] Speaker 06:
So I guess to sum up, is it just the petitioner or is it either party, the petitioner or the patent owner that has the right and ability to seek that kind of a remand?

[00:12:46] Speaker 04:
I would say either party.

[00:12:47] Speaker 04:
I mean, practically speaking, most of the non-instituted claims, I'm not sure the patent owner would want to remand because they're usually not instituted because they're found to be likely patentable or not unpatentable.

[00:13:00] Speaker 04:
But either party, I think, can raise that issue if they would like to have those claims.

[00:13:08] Speaker 04:
If you want a gold-plated patent and you want those claims

[00:13:12] Speaker 04:
re-looked at.

[00:13:13] Speaker 00:
So in this case, there's been a settlement.

[00:13:16] Speaker 00:
Do they still have a say as a petitioner?

[00:13:21] Speaker 03:
I don't know anything about the settlement, about the details, so I can't speak to that.

[00:13:28] Speaker 05:
Go ahead.

[00:13:32] Speaker 05:
Justice Gorsuch, again, in his opinion, talked about how during the course of an IPR on the merits,

[00:13:40] Speaker 05:
The claims may be amended, so the issues may be changed.

[00:13:46] Speaker 05:
The final opinion doesn't necessarily mirror the petition as filed.

[00:13:53] Speaker 05:
There was no discussion about whether the petitioner during the course of an IPR could alter the proceeding.

[00:14:00] Speaker 05:
And I didn't have the time to check, but can you tell me, does the petitioner

[00:14:06] Speaker 05:
I have the right during the course of the proceeding to say, well, forget about claims nine and 10.

[00:14:12] Speaker 05:
I withdraw my petition.

[00:14:15] Speaker 04:
Not as far as I know.

[00:14:16] Speaker 04:
Once those are instituted on, the trial goes forth.

[00:14:20] Speaker 04:
And certainly, they can't amend the claim.

[00:14:23] Speaker 04:
So I don't believe the petitioner can change.

[00:14:25] Speaker 05:
So the petitioner has control of what would be heard in terms of the initial petition, but not necessarily after that.

[00:14:37] Speaker 03:
I think that's correct.

[00:14:41] Speaker 00:
Okay.

[00:14:42] Speaker 00:
We thank you for your comments.

[00:14:43] Speaker 00:
Okay.

[00:14:43] Speaker 00:
All right.

[00:14:46] Speaker 00:
Let's move to the merits of the case.

[00:14:49] Speaker 00:
Mr. Desai, you reserve five minutes of your time for rebuttal.

[00:14:55] Speaker 00:
Is that correct?

[00:14:55] Speaker 00:
Yes, Your Honor.

[00:14:56] Speaker 00:
All right.

[00:14:58] Speaker 00:
So you may proceed.

[00:15:00] Speaker 02:
Good morning, Your Honors.

[00:15:01] Speaker 02:
May it please the Court?

[00:15:02] Speaker 02:
The claimed invention in the 662 and 203 patents is directed to a specific zeolite framework, the CHA framework, having a high silica to alumina ratio, SAR, that is combined with copper and is used for a specific process called ammonia FCR of NOx.

[00:15:21] Speaker 02:
This was a breakthrough that allowed BASF to commercialize a metal exchange zeolite for treating NOx emissions in diesel engines.

[00:15:30] Speaker 02:
despite years of skepticism and efforts by researchers to commercialize a metal exchange zeolite catalyst.

[00:15:37] Speaker 02:
So I'm going to begin with the legal error in the 1121 and 1123 petitions that dealt with the combination of Zones and Meishima.

[00:15:47] Speaker 02:
In our view, the error here is clear.

[00:15:49] Speaker 02:
The board adopted argument and evidence on a genus species issue that is not found anywhere in the petition or petitioner's reply brief.

[00:15:59] Speaker 02:
The Zones plus Meishima petitions presented a single theory of obviousness.

[00:16:05] Speaker 06:
Just to confirm something for a second, the last clause of claim one of the 662 pattern, the catalyst effective to promote the reaction of ammonia with nitrogen oxides, ammonia is not an actual

[00:16:26] Speaker 06:
element of the catalyst, right?

[00:16:28] Speaker 06:
It's a separate element that is to be used with the catalyst.

[00:16:33] Speaker 02:
The ammonia is the reductant in the process.

[00:16:35] Speaker 06:
Right.

[00:16:35] Speaker 06:
It's not part of the claimed catalyst.

[00:16:38] Speaker 06:
It is not.

[00:16:39] Speaker 06:
Okay.

[00:16:39] Speaker 06:
So the question I have is why is this last clause a limitation that gets patentable weight if it's not part of, it's not one of the elements of the catalyst?

[00:16:52] Speaker 02:
Well, that, because I would say, first of all, during the prosecution history,

[00:16:56] Speaker 02:
the way the prosecution issue was shaped.

[00:16:58] Speaker 02:
This claim was amended to overcome prior art by adding that limitation, and therefore, I believe the prosecution and history indicates that this is considered a limitation.

[00:17:07] Speaker 02:
Also, in the IPR proceedings below, there was never any contest as to whether this was a limitation in the claim.

[00:17:14] Speaker 02:
I think it was assumed by both parties correctly that it is a limitation.

[00:17:19] Speaker 02:
Also, the 203 patent is a method claim and has different claims that are at issue as well.

[00:17:25] Speaker 02:
that do require ammonia as a reductant.

[00:17:30] Speaker 02:
So if that answers your question, I'll continue.

[00:17:33] Speaker 02:
The Zones plus Meishima Petitions presented a single theory of obviousness.

[00:17:38] Speaker 02:
The petitioner argued that Zones explicitly discloses using a high SAR, copper chabazite, CHA zeolite, for ammonia SCR.

[00:17:48] Speaker 02:
And then the petitioner argued that it would be obvious to combine that with Meishima to arrive at the claimed

[00:17:54] Speaker 02:
copper to aluminum ranges.

[00:17:56] Speaker 02:
This is clear from the petition, the supporting expert declaration, and the board summary of petitioner's argument in the final written decision.

[00:18:04] Speaker 02:
You can see that at appendix 10 for the final written decision.

[00:18:09] Speaker 02:
BASF contested that Zones discloses using its Hisar CHA zeolite for ammonia SCR.

[00:18:16] Speaker 02:
Again, this was clear in the patent owner response at the oral hearing, and it's also clear from the final written decision

[00:18:23] Speaker 02:
at appendix 12 where the board summarized patent owner's arguments.

[00:18:29] Speaker 06:
The petition did cite to Meishima though and explicitly quoted passage from Meishima describing how Meishima discloses the idea of doing SCR nitrogen oxides in the presence of ammonia.

[00:18:45] Speaker 06:
That is correct.

[00:18:46] Speaker 06:
And the petition also said that the combination of the references has all the limitations

[00:18:53] Speaker 06:
obvious to combine them?

[00:18:56] Speaker 02:
That is correct that ammonia SCR is a known process.

[00:19:00] Speaker 02:
But the distinction here was it was very crucial to the petition that the high SAR CHA zeolite used for ammonia SCR was disclosed in zones.

[00:19:12] Speaker 02:
Because even though meishima discloses ammonia SCR, it only discloses it with respect to using a low SAR natural chabazite.

[00:19:21] Speaker 02:
So in other words, the petition

[00:19:23] Speaker 02:
never explained and never argued the reverse obviousness theory, which is you start with a low SAR natural chabazite for ammonia SCR, and then you go to zones and you substitute the high SAR synthetic zeolite.

[00:19:40] Speaker 02:
The petition was focused entirely on the fact that zones discloses everything except for the amount of copper.

[00:19:48] Speaker 02:
And that's what they went to Meishima for.

[00:19:50] Speaker 02:
So this reverse obviousness theory where you start with ammonia SCR in Meishima simply doesn't work.

[00:19:58] Speaker 02:
It was not an argument made in the petition.

[00:20:00] Speaker 02:
And there's reasons why you wouldn't be motivated to substitute for it.

[00:20:04] Speaker 02:
We never really got into it because that reverse obviousness theory was never presented in the petition.

[00:20:09] Speaker 02:
So I guess the view is that it's not simply enough to say, for an obviousness theory to say, well, I can find ammonia SCR here or here or here or here because the claims are not to ammonia SCR.

[00:20:20] Speaker 06:
So as I understand it, at least with respect to zones and its discussion of how you use the zone's cha zeolite to do these reductions of nitrogen oxide, the institution decision makes it clear that when zones talked about the reduction of oxides of nitrogen, that term, that phrase is understood by those of skill in the art.

[00:20:50] Speaker 06:
to include ammonia SCR of nitrogen oxides.

[00:20:54] Speaker 06:
And it pointed to your preliminary response, which quoted the Dr. Zones' declaration as evidence that people would understand the reduction of oxides of nitrogen in zones to be referring to, among other things, ammonia SCR.

[00:21:17] Speaker 02:
Well, two points to make there in response.

[00:21:21] Speaker 02:
Of course, the Zones declaration was submitted during a prior re-exam, and Dr. Zones was expressing in that declaration that my patent does not teach specific reactions, that reduction of oxides of nitrogen is a genus, and that's all my patent mentions.

[00:21:38] Speaker 02:
Now, there are reactions that can fall within this genus, which he was saying, in his view, are within that genus, but of course,

[00:21:46] Speaker 02:
Dr. Zones' declaration never discusses the level of ordinary skill in the art.

[00:21:51] Speaker 02:
He never said that this is what a person with ordinary skill in the art would understand.

[00:21:55] Speaker 02:
And importantly, this is not evidence that was ever submitted in the petition or in the petitioner's reply brief.

[00:22:02] Speaker 02:
So in effect, the petitioner objected to Dr. Zones' declaration as not reflecting the understanding of one of ordinary skill in the art.

[00:22:10] Speaker 02:
Now we relied on it for the purpose of showing that reduction of oxides of nitrogen

[00:22:15] Speaker 02:
does not equal ammonia SCR.

[00:22:18] Speaker 02:
That was a misnomer in the petition, that they had simply assumed that reduction of oxides in nitrogen equals.

[00:22:24] Speaker 06:
But what if, to use an analogy, the specification said citrus.

[00:22:31] Speaker 06:
And then there's a declaration that says, oh, when it says citrus, it's talking about oranges and lemons.

[00:22:39] Speaker 06:
And then you come back and say, well, it

[00:22:43] Speaker 06:
the specification doesn't explicitly say oranges, it merely says citrus, and so therefore it doesn't disclose oranges.

[00:22:53] Speaker 06:
I'm not so sure that line of argument would prevail if the board makes a finding that says, well, when it says citrus, we have a declaration here that says it includes oranges and lemons, so that seems like

[00:23:11] Speaker 06:
substantial evidence to support the idea that when you say citrus you necessarily encompass the idea of oranges.

[00:23:20] Speaker 02:
The issue here though is it must be about the understanding of one of ordinary skill in the art and Dr. Zones did not in his declaration address the level of ordinary skill in the art.

[00:23:32] Speaker 02:
He was an individual that with 30 years of experience 115 patents who said in my view that's how his actual declaration is phrased with respect to the issue of

[00:23:41] Speaker 02:
what is encompassed within the phrase reduction of oxides of nitrogen.

[00:23:45] Speaker 02:
In my view, these are reactions that can be within that phrase, but he specifically said, my patent does not teach specific reactions.

[00:23:54] Speaker 02:
I can't recall.

[00:23:56] Speaker 06:
Did you have your expert explain that reduction of oxides of nitrogen, that doesn't include ammonia SCR?

[00:24:09] Speaker 02:
We don't dispute that ammonia SCR is within the genus of reduction of oxides.

[00:24:17] Speaker 02:
Our position is that it is within the genus.

[00:24:21] Speaker 02:
The issue being that in order to establish that in a petition and in a final written decision, you would need certain evidence to support that from the perspective of one of ordinary skill in the alt, and that was never made in the petition.

[00:24:36] Speaker 02:
There's a decision that we cited, the Wasika Finance case, where it talked about a gene of species issues, and it explained the kinds of things you would need to do in order to demonstrate that a person of ordinary skill in the art looking at a genus would pick out the species.

[00:24:52] Speaker 02:
An example was you have to explain the size of the genus, whether one of ordinary skill in the art would have immediately envisioned this as being a species within that genus.

[00:25:01] Speaker 02:
And that argument and that evidence is completely absent from the petition and the petitioner's reply brief.

[00:25:08] Speaker 02:
And it's also absent from the final written decision.

[00:25:11] Speaker 00:
So you faulted the board for not considering your argument of this time lapse between the priority and the claimed invention.

[00:25:18] Speaker 00:
But I don't see that you argued that below.

[00:25:21] Speaker 00:
So I'd like to know, did you make that argument below?

[00:25:25] Speaker 00:
Or are you presenting it for the first time in your blue brief?

[00:25:27] Speaker 00:
And if so, what difference does it make?

[00:25:29] Speaker 00:
time lapse theory of yours come within an inquiry into objective indicia?

[00:25:35] Speaker 02:
OK.

[00:25:36] Speaker 02:
To answer the first question, we did absolutely make this argument, we believe, in the Patent Owner Response.

[00:25:41] Speaker 02:
And at the oral hearing, that's at appendix, for the Patent Owner Response, it's at appendix 1015 to 1016, 1026 to 2028, and 1037.

[00:25:50] Speaker 02:
And in those pages, we talked about the fact that the Meishima reference and the Breck reference.

[00:25:56] Speaker 02:
Now, this is for the other petitions, 1124, 1125.

[00:26:00] Speaker 02:
that those references were from 1977 and 1985.

[00:26:02] Speaker 02:
In the intervening years between 1985 and 2007, there was a substantial number of publications that we put into the record that individuals were struggling and unable to commercialize a metal exchange zeolite.

[00:26:21] Speaker 02:
BASF did do that in 2007 with the claimed copper chabazite material, and the point being that

[00:26:30] Speaker 02:
if there was skepticism and failure of others to commercialize a metal exchange zeolite, which BSF was able to do in 2007 with the claimed invention, how can you explain the fact that the invention that is commercialized was obvious as of 1985?

[00:26:48] Speaker 06:
Just to confirm this particular argument about old references and passage of time and skepticism of others,

[00:26:58] Speaker 06:
argument on secondary considerations of yours is devoted to the Meishma-brek combination, not to the zone's Meishma combination.

[00:27:07] Speaker 02:
Correct.

[00:27:08] Speaker 02:
Because the zone's reference is a later in time reference, right?

[00:27:11] Speaker 02:
It doesn't really apply to that, but it does for the other ones.

[00:27:15] Speaker 00:
Okay.

[00:27:15] Speaker 00:
You're into a little time and we'll restore some of your time.

[00:27:19] Speaker 00:
Thank you.

[00:27:22] Speaker 00:
Thank you.

[00:27:28] Speaker 04:
Please, the court.

[00:27:33] Speaker 04:
I'll start by responding to the argument about the zone's myishma combination.

[00:27:40] Speaker 04:
So council conceded that ammonia SCR is a known process.

[00:27:46] Speaker 04:
So you could start with, as the petition did in 294, you have the high SAR from zones.

[00:27:56] Speaker 04:
And then you know to reduce nitrogen oxides.

[00:27:58] Speaker 04:
And then based on MAISHMA and the other testimony that the board relied on, you would know that reducing nitrogen oxides means that you're going to do those reductions with ammonia.

[00:28:10] Speaker 04:
So the petition, the institution decision, and the board decision all lay out this clear path from zones to MAISHMA, which is supported by zones.

[00:28:24] Speaker 04:
Reading zones, one of ordinary skill in the art, would understand zones to speak of ammonia, which is admittedly a known process, or one could look to Meishma and find that one of the ways to reduce the nitrogen oxide is to add pneumonia.

[00:28:40] Speaker 06:
I guess the other side is saying you wouldn't necessarily look at Meishma's disclosure, that it was known to do ammonia SCR for reduction of nitrogen oxides.

[00:28:52] Speaker 06:
because Meishima's catalyst, zeolite, is somehow different.

[00:28:58] Speaker 06:
I can't remember.

[00:28:59] Speaker 06:
Maybe it's a different pore size or it's a different SAR or something like that.

[00:29:03] Speaker 06:
And so you wouldn't necessarily understand reduction of nitrogen oxides in zones to be referencing ammonia, SCR, just because Meishima

[00:29:16] Speaker 06:
talks about Ammonia SCR.

[00:29:19] Speaker 06:
It's a little bit of, it feels a little bit like a revisiting of a motivation to combine argument inside of the question of how to understand this particular phrase and zones in light of what Masha must disclose.

[00:29:32] Speaker 06:
What's your response?

[00:29:34] Speaker 04:
Out of two responses, A, that's not an argument I believe they made in their blue brief, and B, the board found that there was a reasonable expectation of success when you combine

[00:29:43] Speaker 04:
Meishman zone.

[00:29:46] Speaker 04:
If you look at APPX 55, the board votes three pages to talking about why there would be a reasonable expectation of success in making that combination.

[00:29:58] Speaker 04:
So I don't think that argument, I mean the board has substantial evidence to consider that argument and rejected it.

[00:30:10] Speaker 04:
So the two patents at issue here

[00:30:13] Speaker 04:
are to a very simple concept.

[00:30:14] Speaker 04:
You're using a known catalyst, the zeolite.

[00:30:18] Speaker 04:
They're made up of known elements and known quantities, and you're using a known process to remove the nitrogen oxide pollutants from the gases.

[00:30:29] Speaker 04:
The claims only require a catalyst which comprises a zeolite with a CHA structure that is effective for ammonia SCR and that has the broad ratios.

[00:30:43] Speaker 04:
With respect to the secondary considerations, the board considered all of the considerations that were before it and also found that there was no nexus and that the claims were not commensurate in scope with the considerations that were provided.

[00:30:58] Speaker 04:
So even if this argument of being old wasn't waived, it was certainly encompassed within the board's findings of that it's not within the claimed scope.

[00:31:08] Speaker 00:
So the way I understand it, the PTO has this alternative argument that Zones by itself meets all the limitations.

[00:31:15] Speaker 00:
Is that correct?

[00:31:17] Speaker 00:
Correct.

[00:31:19] Speaker 00:
Did the board make this finding?

[00:31:21] Speaker 04:
Yes.

[00:31:22] Speaker 06:
The board never said Zones was a 102, right?

[00:31:27] Speaker 04:
Right.

[00:31:28] Speaker 04:
It didn't find Zones was a 102.

[00:31:31] Speaker 04:
Primarily because Zones teaches the copper loading, but it doesn't teach the specific level of copper.

[00:31:36] Speaker 04:
So you need Maishima at least for the copper.

[00:31:39] Speaker 06:
The ion exchange ratio.

[00:31:41] Speaker 04:
Right, right.

[00:31:42] Speaker 04:
For the ion exchange ratio, correct.

[00:31:44] Speaker 04:
Yes, thank you.

[00:31:46] Speaker 04:
So you do get a 103, but the board found that if we look at APPX 14, Zones did not explicitly list specific reactions.

[00:31:57] Speaker 04:
The evidence of record suggested that a person of ordinary skill would understand that to include ammonia, and they cite the zone's declaration, they cite their expert deposition, their expert, the expert testimony deposition, and the transcript of BASF's own admission.

[00:32:15] Speaker 04:
So the board relied on three separate pieces of evidence to show that zone's itself, but then additionally that MAISHMA also teaches that, so it's really

[00:32:27] Speaker 00:
You get it both ways.

[00:32:28] Speaker 00:
Zones by itself meets all the limitations?

[00:32:30] Speaker 04:
No, it does not meet all the limitations.

[00:32:31] Speaker 04:
It meets the ammonia limitations.

[00:32:33] Speaker 04:
Sorry.

[00:32:34] Speaker 04:
One ordinary skill, reading zones, would find that one of the reactions that it taught was this ammonia SCR, because that was one of a few known ones.

[00:32:46] Speaker 04:
Ammonia was well known to use.

[00:32:48] Speaker 04:
It's a better reductant.

[00:32:50] Speaker 04:
There was Maishma, I think, itself talks about ammonia being a preferred one to use.

[00:32:56] Speaker 04:
We have zones, one more nice reading zone to know it, and then also it's in Myishma.

[00:33:03] Speaker 04:
But it's a 103 rejection because of the copper, for sure.

[00:33:08] Speaker 04:
Are there any further questions?

[00:33:13] Speaker 00:
OK.

[00:33:14] Speaker 00:
Thank you.

[00:33:15] Speaker 00:
Thank you.

[00:33:21] Speaker 00:
So we'll put you at three minutes.

[00:33:22] Speaker 02:
Thank you.

[00:33:24] Speaker 02:
Dr. Chen, to answer your question about Meishima, it is a natural Chabazite that is disclosed among the list of 11 zeolites.

[00:33:32] Speaker 02:
Natural Chabazite in the record has a low SAR.

[00:33:36] Speaker 02:
The Zones zeolite is a synthetic CHA zeolite that has a high SAR.

[00:33:43] Speaker 02:
And that goes exactly to our point that if Zones does not disclose using its high SAR CHA zeolite for ammonia SCR,

[00:33:51] Speaker 02:
There is no reverse obviousness theory based on which a person with a skill in the art would start with Meishima with the low SAR natural Chavezite and substitute the high SAR CHA zeolite because there is no motivation for that.

[00:34:06] Speaker 02:
Meishima talks about how low SAR zeolites are preferred.

[00:34:11] Speaker 02:
And in fact, the preferred zeolite in Meishima is an entirely different zeolite.

[00:34:15] Speaker 02:
There is no evidence in the record of why someone would reverse.

[00:34:18] Speaker 06:
The board says the patent owner

[00:34:20] Speaker 06:
is ignoring the full disclosure of Meishma, which describes poor diameters in a range of about 3 to 15, and then the SAR ratio of above about 2, thereby thus giving Meishma's disclosure more flexibility and breadth than what you were urging.

[00:34:50] Speaker 06:
And that was what the board found.

[00:34:52] Speaker 02:
Again, I think this goes back to the issue of what is zones and what the zones disclose, because that was the argument that was made in the petition.

[00:35:01] Speaker 02:
And the petitioner admitted at the oral hearing that zones that no reference discloses using a high SAR CHA zeolite for ammonia, SCR.

[00:35:12] Speaker 02:
There was a clear admission, appendix 253, I believe it is, where the petitioner admitted

[00:35:19] Speaker 02:
that my theory in the petition where I said Zones discloses using its high SARS-CHA zeolite is wrong.

[00:35:26] Speaker 02:
And from there, because the argument in the petition was proven wrong by the petitioner herself, the board could not then pivot to a new argument.

[00:35:38] Speaker 02:
And that is the principal issue here on appeal.

[00:35:42] Speaker 02:
The issue about the Zones declaration, the deposition testimony, and admission by us about whether Zones discloses the MoNY-SDR

[00:35:50] Speaker 02:
In our briefs, we explained the zone's declaration, as we've discussed, is not about a person of ordinary skill in the art.

[00:35:56] Speaker 02:
Second, the humor core deposition testimony that was cited was never referenced by petitioner in its petition or reply brief.

[00:36:04] Speaker 02:
And in that, the expert simply said, well, reduction of oxides is at least these two things, and it actually covers everything, even things that haven't been discovered yet.

[00:36:15] Speaker 02:
And that's not substantial evidence of the size of the genus,

[00:36:19] Speaker 02:
and what's disclosed within that genus.

[00:36:21] Speaker 02:
And the last point is, at the oral hearing, there was never an admission by BSF that Zones discloses ammonia SCR.

[00:36:29] Speaker 00:
I mean, that was the very fact that you were contending.

[00:36:32] Speaker 00:
In your view, does the 103 inquiries, in your view, is this what we're talking about, the motivation to combine?

[00:36:38] Speaker 00:
That's the focus?

[00:36:41] Speaker 02:
The issue here is not a motivation to combine on appeal.

[00:36:44] Speaker 02:
The issue here is that

[00:36:46] Speaker 02:
The petition was premised on an argument that Zones discloses something that it does not.

[00:36:51] Speaker 02:
And the petitioner admitted that it does not disclose that.

[00:36:55] Speaker 02:
There was never any argument in the petition or the petitioner's reply brief that Zones discloses a genus from what you would pick up.

[00:37:02] Speaker 06:
To be clear, I understand the petition saying a number of things.

[00:37:06] Speaker 06:
One of them is its view that Zones teaches this particular ammonia SCR limitation.

[00:37:12] Speaker 06:
And then the institution decision agreed with that.

[00:37:16] Speaker 06:
and pointed to the Zones declaration that was quoted in your preliminary response as evidence of that.

[00:37:26] Speaker 06:
And then I didn't see in your patent owner response a retort to the institution's decisions conclusion that Zones does in fact teach this ammonia limitation in light of the Zones declaration saying that there are five different types of ways of reducing nitrogen oxides, one of them being

[00:37:46] Speaker 06:
ammonia SCR?

[00:37:49] Speaker 02:
We did dispute in our patent owner response that the Zones reference discloses using its Hisar CHA zeolite for ammonia SCR.

[00:37:58] Speaker 02:
And we also pointed out that that same evidence that was submitted in the Zones declaration was submitted in a prior re-exam.

[00:38:08] Speaker 02:
And that same evidence resulted in the examiner in that re-exam finding that Zones, this is a quote from the re-examiner,

[00:38:16] Speaker 02:
Zones does not teach using its high SARS-CHA zeolite for ammonia, CR.

[00:38:21] Speaker 00:
We did point that out at the oral hearing and in our brief.