[00:00:08] Speaker 02:
We have five cases on the calendar this morning.

[00:00:14] Speaker 02:
Three patent cases from the PTAB, customs case from the CIT, and case from the Claims Court regarding an employee.

[00:00:26] Speaker 02:
The first case is E.I.

[00:00:30] Speaker 02:
DuPont and Archer Daniels Midland versus Sinvena.

[00:00:36] Speaker 02:
2017, 1977, Mr. Flibert.

[00:00:43] Speaker 04:
Thank you, Your Honor.

[00:00:44] Speaker 04:
Good morning.

[00:00:44] Speaker 04:
May it please the court?

[00:00:45] Speaker 04:
As the chart on page two of our reply brief shows, the only difference between claim one of the 921 patent and RU 177, according to the patent owner.

[00:00:56] Speaker 02:
Mr. Flibert, before we get into those details, while you're standing there, let's address standing.

[00:01:03] Speaker 04:
Yes, Your Honor.

[00:01:03] Speaker 02:
What's the status of the plant?

[00:01:05] Speaker 04:
It opened, Your Honor, on April 30th.

[00:01:07] Speaker 04:
And it was a press release.

[00:01:09] Speaker 04:
It was post-briefing, so we haven't submitted it.

[00:01:11] Speaker 04:
We'd be happy to submit it if you'd like to see it.

[00:01:13] Speaker 04:
It was opened on April 30th, and so the plan is in operation right now.

[00:01:17] Speaker 02:
OK.

[00:01:18] Speaker 03:
And the processes the plant is performing tracks the statements by the declarants that it matches up with the examples that were disclosed in the joint PCT application?

[00:01:34] Speaker 04:
That's correct, Your Honor.

[00:01:35] Speaker 04:
Our witnesses testify this plan is a dedicated plan.

[00:01:38] Speaker 04:
It's dedicated to this process.

[00:01:40] Speaker 02:
And why isn't it evidence of copying leading to a secondary consideration supporting non-obviousness?

[00:01:48] Speaker 04:
Your Honor, the copying, as the board found, there was no evidence of copying as the case law requires here.

[00:01:54] Speaker 04:
There was no evidence of, for example, access to their technology and then using that technology to develop ADM's technology.

[00:02:01] Speaker 04:
So the board found there was no copying.

[00:02:03] Speaker 04:
This technology, the 732 patent, for example, 732 publication is a DuPont publication, which is one of 2B prior art.

[00:02:11] Speaker 04:
And so DuPont has been working on this technology for years.

[00:02:14] Speaker 04:
And so these companies are involved in a commercial effort to bring this very important green technology to market.

[00:02:21] Speaker 04:
And we put in testimony from three witnesses who have direct knowledge of the plant and the process.

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We have no rebuttal evidence from the other side.

[00:02:31] Speaker 04:
They had an opportunity to submit evidence.

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They didn't provide any.

[00:02:35] Speaker 04:
We put in undisputed evidence that these are direct competitors in this emerging market for furan-based biopolymers.

[00:02:42] Speaker 04:
This is a small emerging market.

[00:02:45] Speaker 04:
And I think a key fact is that this plant is dedicated to this process.

[00:02:48] Speaker 00:
It's dedicated.

[00:02:49] Speaker 00:
You don't dispute that you had access to the information describing their process, right?

[00:02:55] Speaker 00:
And you had the patent, right?

[00:02:58] Speaker 04:
There was a publication, that's true, Your Honor, but there was no evidence of copying of the technology.

[00:03:04] Speaker 04:
This work, as the witness has testified, there was earlier work with the University of Kansas, and there was a continuation of that work.

[00:03:11] Speaker 04:
And that 755 publication talks about a spray technique for a spray oxidation technique, which is somewhat different from what's described in the 921 patent.

[00:03:20] Speaker 04:
So there are differences in the way that the oxidation process was carried out.

[00:03:24] Speaker 00:
But you're not denying knowledge of the patent.

[00:03:26] Speaker 04:
I don't have any information one way or the other about knowledge of the patent.

[00:03:30] Speaker 04:
You recall in these PTAB proceedings, there's little or no discovery.

[00:03:34] Speaker 04:
And so there's no evidence of any knowledge or intent concerning the patent.

[00:03:39] Speaker 04:
And the patent owner does have the burden to prove copying at the PTAB.

[00:03:43] Speaker 04:
And procedurally, there was very little opportunity for discovery there.

[00:03:46] Speaker 04:
But there is no evidence of knowledge of the patent.

[00:03:49] Speaker 00:
But one of the reasons the board didn't find copying is because the plant wasn't operational.

[00:03:55] Speaker 00:
Do you agree that

[00:03:56] Speaker 00:
that to the extent there's anything alive about this case after today, that they could use operation of the plant as evidence of copying?

[00:04:06] Speaker 04:
I don't agree because we announced this collaboration in January of 2016.

[00:04:12] Speaker 04:
They submitted their paper at the patent office several months later and never raised the plant as an argument for copying.

[00:04:19] Speaker 04:
Therefore, we submit it was waived.

[00:04:21] Speaker 04:
So there was a public announcement about the joint collaboration as a press release.

[00:04:25] Speaker 04:
January 2016, it's in the record, before your honors.

[00:04:29] Speaker 04:
Several months later, they filed their paper, substantive paper, arguing copying.

[00:04:34] Speaker 04:
They made no allegation that the pilot plant work, this collaboration was part of a copy.

[00:04:40] Speaker 02:
What do we do with, from your standpoint, the fact findings of the board that the evidence fails to show it would have been obvious to adjust both the temperature and the oxygen pressure to be within the claimed

[00:04:54] Speaker 02:
ranges as a matter of routine.

[00:04:57] Speaker 04:
Right.

[00:04:57] Speaker 04:
Your Honor, of course, that was the routine optimization theory.

[00:05:00] Speaker 04:
And really the focus of our appeal is on an alternative theory, which was presented, and that is for overlapping ranges.

[00:05:07] Speaker 04:
And again, if you look at the chart on page two of our reply, there is no difference between claim one and RU 177 if you properly interpret the claim to include its specified lower endpoint.

[00:05:19] Speaker 00:
Well, your whole discussion about presumptions seems to be somewhat of a

[00:05:24] Speaker 00:
straw man here, because even if there is a burden shifting, the burden is only one of production, correct?

[00:05:32] Speaker 00:
Correct.

[00:05:33] Speaker 00:
And there's no doubt that the patent owner produced evidence of unexpected results.

[00:05:41] Speaker 00:
Whether it was ultimately sufficient or not doesn't change the fact that there was production of evidence of unexpected results.

[00:05:49] Speaker 00:
So that whole issue of presumption seems to fall off the table.

[00:05:54] Speaker 04:
in the board's analysis, they did not even consider this overlapping ranges argument on the merits.

[00:05:59] Speaker 04:
Because in the board's view, the Magnum oil case precluded it from even considering the argument.

[00:06:04] Speaker 00:
And that's our point that that was a legal error.

[00:06:06] Speaker 00:
That's not what they said.

[00:06:08] Speaker 00:
What the board said is that to the extent that you're saying that the burden of persuasion shifts, it doesn't.

[00:06:16] Speaker 00:
And there was no issue with respect to production because production occurred.

[00:06:21] Speaker 00:
It was already in the record.

[00:06:23] Speaker 04:
But they never applied Peterson.

[00:06:25] Speaker 04:
They never applied Oramco.

[00:06:26] Speaker 04:
They never, again, even just taking claim one as an example, we think that is a representative claim.

[00:06:32] Speaker 04:
If you look at the board's findings on page nine of its decision, it found that every single element of claim one is present.

[00:06:39] Speaker 04:
The only argument patent owner made to try to distinguish that claim was this purported exclusion of 140 from claim one.

[00:06:48] Speaker 04:
And therefore, our position is that if you look at claim one and actually accept the board's findings as to RU177, you can check off every single element.

[00:06:58] Speaker 04:
They are all there according to the board's own findings.

[00:07:00] Speaker 00:
Well, you're not here complaining about the failure to institute as to RU177.

[00:07:04] Speaker 00:
You didn't file anything.

[00:07:07] Speaker 00:
You waived any SAS argument, right?

[00:07:10] Speaker 04:
Your Honor, the argument, according to the board's decision, the RU177 argument was essentially folded into the grounds that were instituted.

[00:07:17] Speaker 04:
It said that in the institution decision, and we've cited that in our brief.

[00:07:23] Speaker 04:
For example, at page 2107 of the joint appendix, the board said that the instituted grounds fully encompassed the relevant teachings of RU177 cited for the challenge, which was ground four, that was not instituted.

[00:07:40] Speaker 04:
So the board did consider, they were supposed to consider RU 177 alone as to claim one, and that was ground four.

[00:07:48] Speaker 04:
So even though it wasn't instituted, it was effectively folded into what was considered.

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And so our point of claim construction is that this was the only argument that Pat and owner raised to try to distinguish RU 177 from claim one.

[00:08:04] Speaker 04:
And it's incorrect as a matter of law because under the broadest reasonable interpretation,

[00:08:08] Speaker 04:
that specified lower endpoint should be part of the claimed range.

[00:08:13] Speaker 00:
And for example... You never argued any of the abutting ranges case law that we have.

[00:08:21] Speaker 00:
Why is that?

[00:08:24] Speaker 04:
We did argue... There were two theories presented below.

[00:08:27] Speaker 04:
There was a Peterson type argument for overlap and there was a titanium metals argument that was also made.

[00:08:33] Speaker 04:
In other words, if the claim here, even if it abutted,

[00:08:37] Speaker 04:
and was viewed as being very close but not actually overlapping, under titanium metals that would still establish prima facie obviousness or presumption of obviousness.

[00:08:47] Speaker 04:
The fact is there is no evidence there's any difference in properties between what is described in RU177 and the embodiment that that falls within in claim one.

[00:08:59] Speaker 00:
So you're arguing that RU177 should be considered as a standalone reference even though the board refused to institute on that.

[00:09:06] Speaker 04:
as to claim one yes, because that was part of what the board said would be considered in the instituted grounds.

[00:09:13] Speaker 04:
It specifically said that the teachings of RU 177 alone, that the instituted grounds on the combined art fully encompass the relevant teachings of RU 177 cited for the challenge that was not instituted.

[00:09:29] Speaker 04:
And that's at 2107.

[00:09:29] Speaker 04:
So it was part of the instituted grounds.

[00:09:33] Speaker 04:
And therefore that's why

[00:09:34] Speaker 04:
For claim one, you only need to look at RE177.

[00:09:38] Speaker 04:
And if you just accept the findings that are there, and every single element of claim one is met.

[00:09:44] Speaker 04:
And the only argument that's been raised was for the claim construction.

[00:09:47] Speaker 03:
You never argued Section 102, right?

[00:09:50] Speaker 04:
No, it wasn't argued as anticipation.

[00:09:53] Speaker 04:
It was argued as obviousness under this well-established case law for overlapping ranges, which we submit applies here as to claim one.

[00:10:02] Speaker 00:
And so why do you believe that their evidence as to unexpected results or criticality was insufficient?

[00:10:10] Speaker 04:
Well, the board made findings.

[00:10:11] Speaker 04:
There's very little data in the patent.

[00:10:13] Speaker 00:
The board's findings were a little weird.

[00:10:15] Speaker 00:
I mean, what they basically said was that evidence was not as persuasive as the other evidence that they found against you.

[00:10:24] Speaker 04:
Just as one example, Your Honor, the claim purports to claim a range of 1 to 10 parts per

[00:10:29] Speaker 04:
1 to 10 bar of partial pressure for oxygen.

[00:10:33] Speaker 04:
The patents for the HMF examples only tested one partial pressure, 4.2, which was 20 bar.

[00:10:40] Speaker 04:
The additional data they submitted from Dr. Grutter, same thing, 4.2.

[00:10:44] Speaker 04:
They submitted no other data to show this range of 1 to 10 means anything from a scientific standpoint.

[00:10:51] Speaker 04:
It appears to be a range of numbers

[00:10:54] Speaker 00:
But it was pretty amazing that the results were so different, right?

[00:10:59] Speaker 04:
They're not so different.

[00:10:59] Speaker 04:
If you look at the data in the patents, I believe it's about something like 15 out of 21 of these so-called inventive examples are less than 70%, which is what Partenheimer predicted.

[00:11:14] Speaker 04:
So most of the results are quite low.

[00:11:17] Speaker 04:
Look at experiment 3F in table 3, which is within claim 1.

[00:11:22] Speaker 04:
It's with DMF as a starting material.

[00:11:24] Speaker 04:
7% yields.

[00:11:26] Speaker 04:
And they don't disagree that that's within the scope of Claim 1.

[00:11:29] Speaker 04:
Claim 1 doesn't require any specific yield.

[00:11:31] Speaker 04:
It covers 7%.

[00:11:31] Speaker 04:
It covers 1%.

[00:11:32] Speaker 04:
It covers 0.1%.

[00:11:34] Speaker 04:
No specific ratios of catalyst concentration.

[00:11:38] Speaker 04:
No reaction time.

[00:11:40] Speaker 04:
It could be any amount of reaction time.

[00:11:42] Speaker 04:
So this claim is so broad on its face that it touches, it sweeps in this RU177 embodiment, which uses the same starting material, it's the same air oxidant, same catalyst,

[00:11:54] Speaker 04:
same acetic acid solvent makes the same product, same oxygen partial pressure and the overlapping pressure.

[00:12:01] Speaker 00:
If we agree with you that RU177 does encompass both of those data points, wouldn't it be more appropriate to remand for the board to reconsider the objective indicia given the fact that the board, A, really didn't need to consider it since it said it already had no evidence of

[00:12:23] Speaker 00:
obviousness and B, because it sort of was very dismissive in the way it treated it.

[00:12:29] Speaker 04:
Your honor, remand is a possibility here.

[00:12:31] Speaker 04:
We don't disagree with that.

[00:12:33] Speaker 04:
We submit that as in home and housewares, there was no remand.

[00:12:36] Speaker 04:
It simply reversed because there was a failure to follow the law.

[00:12:40] Speaker 04:
And I think this is similar.

[00:12:41] Speaker 04:
This intrinsic evidence shows that the claimed range should include one for you.

[00:12:46] Speaker 04:
And that was the only argued difference.

[00:12:48] Speaker 04:
And that's an issue of law.

[00:12:50] Speaker 04:
Also for claims three, four.

[00:12:51] Speaker 04:
You're saying especially under BRI.

[00:12:54] Speaker 04:
Exactly.

[00:12:55] Speaker 04:
Especially under BRI.

[00:12:56] Speaker 04:
And that's a key factor.

[00:12:57] Speaker 03:
Judge O'Malley's question, though, is about balancing whatever you see is the reasons for doing the optimization against the secondary consideration evidence.

[00:13:08] Speaker 03:
And perhaps the board didn't really seriously consider that evidence in the first go around that maybe it ought to on a remand.

[00:13:16] Speaker 03:
So could you answer that question?

[00:13:18] Speaker 04:
No, I think it's a fair question.

[00:13:20] Speaker 04:
I think there is a certain amount of balancing here.

[00:13:23] Speaker 04:
Our position was that the board ultimately looked at it very carefully and looked at the data and saw a number of reasons.

[00:13:29] Speaker 04:
For example, it wasn't commensurate in scope.

[00:13:31] Speaker 04:
What they offered was not commensurate in scope with the claims.

[00:13:35] Speaker 04:
There were a number of reasons for the lack of unexpected results.

[00:13:39] Speaker 04:
And Sylvina hasn't even argued a lack of substantial evidence for those findings on appeal.

[00:13:45] Speaker 04:
The other claims that we think shouldn't necessarily, shouldn't be remanded, claims three, four, seven, eight, nine.

[00:13:52] Speaker 04:
There were no separate arguments for patentability for those claims over claim one.

[00:13:57] Speaker 04:
Three and four are the claims that simply require adding an extra metal, like zirconium.

[00:14:03] Speaker 04:
But what about the catalyst?

[00:14:06] Speaker 04:
I'm sorry, Your Honor?

[00:14:06] Speaker 04:
What about the catalyst?

[00:14:08] Speaker 04:
So the catalyst is identically described in our U177 for claim one.

[00:14:12] Speaker 04:
And then claims three and four,

[00:14:15] Speaker 04:
basically say you can add this additional metal to the catalyst.

[00:14:18] Speaker 04:
And Syndvina has never argued that that was not an obvious thing to do, based on other references such as 732, which said you can optionally add this extra metal.

[00:14:27] Speaker 04:
So they've never argued that claims three and four are separately pannable.

[00:14:31] Speaker 04:
They've never argued that claims seven, eight, and nine are separately pannable.

[00:14:34] Speaker 04:
Those are the claims that simply require making an ester from the FDCA product.

[00:14:39] Speaker 02:
Mr. Flibert, you're well into your rebuttal time.

[00:14:43] Speaker 02:
hear from your opponent, and we'll give you three minutes of rebuttal time.

[00:14:47] Speaker 04:
Thank you, Your Honor.

[00:14:50] Speaker 02:
Mr. Richter.

[00:14:55] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:14:57] Speaker 01:
I'm Paul Richter.

[00:14:58] Speaker 01:
I'm here for the patent owner, Sandina.

[00:15:00] Speaker 01:
And I'm happy to be here to discuss the very exciting technology.

[00:15:03] Speaker 01:
As opposing counsel mentioned, it's green chemistry, FDCA.

[00:15:09] Speaker 01:
It's completely bio-based.

[00:15:11] Speaker 01:
It starts with HMF, which is derived from sugars.

[00:15:14] Speaker 01:
They've built a plant now, so is there standing?

[00:15:17] Speaker 01:
No, I don't believe so, Your Honor.

[00:15:19] Speaker 01:
Because?

[00:15:19] Speaker 01:
Because I don't believe they've carried their burden of demonstrating standing, which is entirely their burden.

[00:15:24] Speaker 01:
They did mention that they've opened the plant, and they're running it.

[00:15:28] Speaker 01:
You may have seen the correspondence, I'm sure, in the record between myself and opposing counsel with regard to what was going on in that plant.

[00:15:35] Speaker 01:
We gave them the opportunity to tell us.

[00:15:36] Speaker 03:
The way they've described the process that's being performed by the plant

[00:15:40] Speaker 03:
it seems to have essentially all the features that are claimed here.

[00:15:46] Speaker 03:
So therefore, there'd be a risk of infringement.

[00:15:49] Speaker 01:
Well, I respectively disagree in terms of the record before the court, Your Honor.

[00:15:53] Speaker 01:
They describe the process as being designed to operate in operating parameters which are broader than the temperature and pressure parameters in claim one, for example, which are between 140 and 200 degrees C and 1 to 10 bar.

[00:16:08] Speaker 01:
I believe in their declarations, they put three of them in, but all they said was that they were designed to operate between 125 and 250 degrees C and 0.02 to 100 bar, preferably 0.2 to 21 bar.

[00:16:23] Speaker 01:
So I contend that there are other processes for making FDCA.

[00:16:28] Speaker 02:
Didn't you decline to grant a covenant not to sue?

[00:16:32] Speaker 01:
That's right, Your Honor, absolutely we did.

[00:16:33] Speaker 02:
Isn't that tantamount to an accusation of infringement?

[00:16:37] Speaker 01:
Well, I don't agree, Your Honor, respectfully, because we don't know what they're doing yet.

[00:16:43] Speaker 01:
So from the standpoint of their burden of satisfying standing, my contention is that they had the obligation to inform the court about what they were doing and why that put them at risk.

[00:16:52] Speaker 00:
Well, and they had to have standing as of the filing of this appeal, right?

[00:16:56] Speaker 00:
That's correct, Your Honor.

[00:16:57] Speaker 00:
Not as of today.

[00:16:58] Speaker 01:
Correct.

[00:16:59] Speaker 01:
I don't believe they can walk into court today and establish standing.

[00:17:02] Speaker 01:
So I don't believe they had standing at that time, and I don't believe they demonstrated with their declarations.

[00:17:07] Speaker 01:
That doesn't mean that, as we wrote in our brief, it could be that they will infringe our patent.

[00:17:14] Speaker 01:
And that would be our burden to establish that.

[00:17:17] Speaker 01:
And we would go to them and say, what process exactly are you running?

[00:17:21] Speaker 01:
And if we determined that it was our process, there could be an infringement suit.

[00:17:24] Speaker 00:
But.

[00:17:24] Speaker 00:
And you'd argue that they were stopped.

[00:17:27] Speaker 01:
It stopped from what, Your Honor?

[00:17:28] Speaker 00:
From attacking your patent.

[00:17:31] Speaker 00:
Right?

[00:17:32] Speaker 00:
If they have no standing, and if we ultimately agree that the board got it right,

[00:17:37] Speaker 00:
then any later infringement suit, they'd be able to argue non-infringement, but they wouldn't be able to attack the patent at that point, right?

[00:17:45] Speaker 01:
Well, certainly the provisions of estoppel that flow from a positive result from my client in this case would apply, absolutely.

[00:17:53] Speaker 01:
But in our view, they had their opportunity to try to establish standing, and they didn't do it.

[00:17:58] Speaker 02:
Let's talk about the patentability of the process.

[00:18:00] Speaker 02:
Sure.

[00:18:01] Speaker 02:
Isn't it sort of basic chemical process technique that when you've got

[00:18:06] Speaker 02:
couple of key variables in a process.

[00:18:10] Speaker 02:
There's motivation to modify them to improve the yield of the process, save money.

[00:18:18] Speaker 01:
Well, Your Honor, those are two things that were- Isn't that what was done here?

[00:18:23] Speaker 01:
I disagree, respectfully, Your Honor.

[00:18:24] Speaker 01:
In fact, that's the crux of the board's decision, where it found, fully supported by significant substantial evidence, that there was not that motivation.

[00:18:35] Speaker 01:
Because in fact, that was the position of the petitioners, is that there would have been a motivation to optimize the 732 publications process.

[00:18:47] Speaker 01:
Because remember, notwithstanding that in our view, they are trying to appeal a ground that never occurred during the IPR, because there was never a ground

[00:18:59] Speaker 01:
that said all elements are disclosed in the Russian reference.

[00:19:03] Speaker 03:
We'll get to the claim construction on 140 degrees in a second, but just getting to 732, the 732 has an overlapping temperature range, so I don't see why at least initially they need to go any further on the temperature range unless you can show unexpected results for your claimed temperature range.

[00:19:23] Speaker 03:
It really boils down more to the pressure question, which is

[00:19:28] Speaker 03:
would one of skill in the art have appreciated that fiddling with pressure in this sort of reaction would affect results.

[00:19:37] Speaker 03:
And I think that's then when we see references using a lot of different pressure values that seems to suggest that there is evidence in the record that pressure

[00:19:52] Speaker 03:
not surprisingly, affects results for chemical reactions, just like temperature does.

[00:19:58] Speaker 03:
So why isn't it true in that sense that any chemist in trying to produce this FDC acid would know that if you fiddle with temperature and pressure and maybe reaction time and things like this, these are classic parameters that affect results.

[00:20:21] Speaker 01:
Certainly, Your Honor, and the Board did a very thorough job examining exactly the questions that you just posed.

[00:20:28] Speaker 01:
There was substantial evidence submitted from both sides on those issues.

[00:20:32] Speaker 01:
And you have to look at the ARC as a whole.

[00:20:33] Speaker 01:
So if you look at the 732 publication... Well, that's what I'm doing here.

[00:20:37] Speaker 03:
When I'm looking at the references and I see the references calling out different pressure values here and there, why isn't that evidence pretty real confirming evidence that yes,

[00:20:51] Speaker 03:
when you change pressure, you're going to impact results, or there's a strong likelihood of that.

[00:20:58] Speaker 02:
After all, the pressure is of oxygen, which is one of the reactants.

[00:21:03] Speaker 02:
So affecting the pressure of one of the reactants would obviously affect the results.

[00:21:10] Speaker 01:
Well, starting with pressure, that's a good question, Your Honor.

[00:21:12] Speaker 01:
So there's two main elements that were discovered by my clients in Vena.

[00:21:19] Speaker 01:
with respect to optimizing and improving yield.

[00:21:22] Speaker 01:
And so there were very dramatic improvements.

[00:21:24] Speaker 01:
In fact, Partenheimer, one of the background prior art, predicted you could never get above 70% yield for FDCA.

[00:21:30] Speaker 01:
We blew through that number with our modifications.

[00:21:34] Speaker 01:
Now starting, I'd like to start with temperature, if I may, because that's the 732 publication.

[00:21:39] Speaker 01:
If you look at that, they never oxidize above 125 degrees.

[00:21:43] Speaker 03:
When you look at the examples, it discloses a temperature range that completely encompasses your claimed temperature range.

[00:21:53] Speaker 03:
I'm more interested in pressure.

[00:21:55] Speaker 01:
OK, so then I'll start with pressure.

[00:21:57] Speaker 01:
So if you look at pressure, there's two pressures, the total pressure, which is the total pressure of the reaction, and the oxygen partial pressure.

[00:22:04] Speaker 01:
They're not the same.

[00:22:05] Speaker 01:
The oxygen partial pressure is obviously the reactant.

[00:22:09] Speaker 01:
And so our oxygen partial pressure of 1 to 10 bar

[00:22:12] Speaker 01:
is lower than the 732, significantly, almost 33% lower, because they're at 14 and a half bar.

[00:22:19] Speaker 03:
The board found that a person of ordinary skill in the art would imagine... 732 did disclose having a pressure such that you maintain the acidic acid solvent in liquid phase, right?

[00:22:32] Speaker 03:
Correct.

[00:22:33] Speaker 03:
And so liquid phase, it encompasses 14.5 bar, which is the example they disclosed, but it also encompasses

[00:22:41] Speaker 03:
1 to 10 bar, which is your claimed pressure range.

[00:22:44] Speaker 03:
Is that right?

[00:22:45] Speaker 01:
No, it does not, your honor.

[00:22:46] Speaker 01:
It doesn't?

[00:22:46] Speaker 01:
It does not, because as the board noted and made detailed findings, in fact, the 732 in keeping the solvent in the liquid phase, or mostly in the liquid phase, is talking about the total pressure, which does not necessarily mean that the oxygen partial pressure will be within the 1 to 10 bar of our claim 1.

[00:23:08] Speaker 00:
Even assuming that that's the case, I mean,

[00:23:11] Speaker 00:
This whole results effective variable discussion by the board seemed a little confusing, given the fact that I thought your whole point with respect to unexpected results is that they are results effective variables, and by finding that narrow range, you actually got a totally different result.

[00:23:33] Speaker 01:
Well, there's two things.

[00:23:34] Speaker 01:
We did that against the wind of the unpredictability of those result effective variables.

[00:23:40] Speaker 01:
So turning to temperature, in the 732 publication, if you compare examples 20 and 25 and 19 and 24 and 17 and 35, for example, there you have a pressure increase where the yield either stays the same or goes down.

[00:23:57] Speaker 01:
And even though they were oxidizing at higher temperatures, 125, the highest yield they got was at 105 degrees.

[00:24:06] Speaker 01:
And that was only 58%, which was much lower than the results that we got.

[00:24:09] Speaker 01:
So the board found that there was an unpredictability in the effective temperature, and that there was also an unpredictability in the effective reaction time, as shown by the examples in the 732 publication.

[00:24:21] Speaker 00:
Well, but if that's the case, then why didn't the board agree that these were unexpected results?

[00:24:28] Speaker 01:
Well, I think as you noted, Your Honor, the board, in evaluating the secondary considerations, they didn't reject our evidence.

[00:24:37] Speaker 01:
The board said that it was less probative than the case for the claims not being obvious due to the unpredictability and the lack of the motivation to combine.

[00:24:46] Speaker 01:
And I think that's really the central focus of the board's decision.

[00:24:50] Speaker 03:
I thought it identified a couple problems.

[00:24:52] Speaker 03:
One, Mr. Flibert identified, which is the commensurate in scope with the claim concern, that your examples, your experiments were limited to just using a 4.2 bar

[00:25:06] Speaker 03:
and didn't really go across the scope or any attempt to go across the scope of the range of 1 to 10 bar.

[00:25:14] Speaker 03:
At least with the experiments on the temperature range, you had a few different examples of different temperature you used.

[00:25:23] Speaker 03:
The second problem was that it didn't look like there was an apple to apple comparison in the sense that you didn't explain how you kept all the variables constant.

[00:25:35] Speaker 03:
while you were doing your different experiments, thereby raising the concern that you didn't really exactly show why it was that this particular shift in temperature and this particular shift in pressure were the reasons for the extra high yield rate.

[00:25:55] Speaker 03:
So what is your response to those two concerns the board raised?

[00:25:59] Speaker 01:
My response is the board did make those observations, but it did not out of hand reject the

[00:26:05] Speaker 01:
the unexpectedly improved result, it just found them to be less probative or less persuasive.

[00:26:11] Speaker 01:
And my second response would be that notwithstanding those observations of the board, there is nobody that I'm aware of anywhere, certainly not in the prior art, that has ever achieved the high yields of FDCA that Symbina has achieved operating the process of claim one.

[00:26:28] Speaker 00:
But it would seem then that the board's findings, even though the board said they went to motivation to combine,

[00:26:34] Speaker 00:
are really more relevant, even their factual findings as to the results affect a variable issue would seem to be more relevant to the question of whether it was truly unexpected.

[00:26:46] Speaker 00:
In other words, the problem is that by characterizing it as saying there's a lack of motivation to combine versus characterizing it as the fact that no one really thought

[00:27:00] Speaker 00:
or understood that these could produce a difference when narrowed to such an extent that the board actually confused the whole analysis.

[00:27:11] Speaker 01:
I don't think the board confused the analysis, Your Honor.

[00:27:13] Speaker 01:
I think it's really relevant to both.

[00:27:15] Speaker 01:
I mean, naturally, when you submit evidence of unexpected results, that's squarely in the midst of a secondary consideration analysis.

[00:27:23] Speaker 01:
But at the same time, you have to look at the prior art as a whole.

[00:27:26] Speaker 01:
And especially when you have a chemical optimization allegation,

[00:27:31] Speaker 01:
or assertion by the petitioners, you have to say, well, why would somebody optimize the process?

[00:27:36] Speaker 01:
Or why wouldn't they?

[00:27:37] Speaker 01:
What would be the motivations of a person of ordinary skill in the art?

[00:27:40] Speaker 02:
There's always a motivation to optimize a process to save money.

[00:27:45] Speaker 02:
And I hear mention of result-oriented variable.

[00:27:51] Speaker 02:
Isn't every variable in our

[00:27:54] Speaker 02:
chemical process reaction result oriented.

[00:27:57] Speaker 02:
Why else would it have been there?

[00:27:59] Speaker 02:
You don't put limitations in a claim that don't affect the result.

[00:28:03] Speaker 02:
That's what claim drafting involves.

[00:28:06] Speaker 01:
Absolutely, Your Honor.

[00:28:07] Speaker 01:
It is result oriented.

[00:28:09] Speaker 01:
But the point with the motivation to combine is that the results... You're not combining things.

[00:28:14] Speaker 02:
The temperature and the oxygen pressure are part of the process.

[00:28:20] Speaker 02:
They're there.

[00:28:21] Speaker 02:
We're not taking... It's not like combining

[00:28:23] Speaker 02:
two items to make a product.

[00:28:27] Speaker 02:
This is a process with variables that are in the process.

[00:28:31] Speaker 02:
It's not a question of combining.

[00:28:32] Speaker 02:
It's a question of varying.

[00:28:36] Speaker 01:
You're right, Your Honor.

[00:28:37] Speaker 01:
And that was the ground that was instituted, varying the process of 732 publication based on RU 177 and the 318 publication and cost considerations, as you point out.

[00:28:50] Speaker 01:
And the board looked at the cost considerations analysis and said, in fact,

[00:28:54] Speaker 01:
that a person would not be motivated to lower the pressure for cost considerations, which they're expert contended through patents related to xylene oxidation, but then admitted.

[00:29:08] Speaker 02:
You lower the pressure, you lessen the use of oxygen, right?

[00:29:12] Speaker 01:
And that must cost money.

[00:29:13] Speaker 01:
Correct, Your Honor.

[00:29:15] Speaker 01:
But that's a reactant.

[00:29:17] Speaker 01:
And you wouldn't expect that by reducing the reactant, you could increase the yield.

[00:29:21] Speaker 01:
You would expect the opposite.

[00:29:22] Speaker 01:
So even if that was a cost consideration, it's offset by the fact that you wouldn't expect that you could produce as much FDCA in that regard.

[00:29:31] Speaker 01:
And the board found that.

[00:29:32] Speaker 01:
And finally, I didn't have a chance to talk about the 318 publication, but the board made detailed findings that notwithstanding the pressure and temperature there, there's no motivation because of the catalyst used.

[00:29:44] Speaker 01:
It's a fixed bed reactor.

[00:29:46] Speaker 01:
You have to keep the HMF in solution.

[00:29:49] Speaker 00:
The catalyst D. But is the catalyst relevant to claim one?

[00:29:52] Speaker 01:
Absolutely, because they don't use the same catalyst as 318.

[00:29:55] Speaker 01:
They use a platinum-based catalyst, which is a heterogeneous catalyst in deactivants.

[00:29:59] Speaker 02:
You would agree this involves really close prior art?

[00:30:08] Speaker 01:
Is it close prior art?

[00:30:09] Speaker 02:
This patent is faced with a lot of close prior art.

[00:30:12] Speaker 01:
Well, there's certainly prior art there, Your Honor, that involves oxidizing HMF.

[00:30:17] Speaker 01:
It's not close in the sense that... Let me ask you differently.

[00:30:19] Speaker 01:
Sure.

[00:30:23] Speaker 03:
If between 140 degrees to 200 degrees includes 140 degrees Celsius, then does RU 177 have every element of this claim?

[00:30:38] Speaker 01:
Of claim one?

[00:30:40] Speaker 01:
Yeah.

[00:30:41] Speaker 01:
That's their contention, Your Honor, yes.

[00:30:42] Speaker 03:
No, I'm asking you, though, because all I saw from your briefing was RU 177 lacks the temperature range because

[00:30:53] Speaker 03:
uh... the highest point of temperature and are you one seven seven is a hundred forty degrees celsius and your claims temperature range doesn't begin until one forty one degrees celsius because you read between a hundred and forty degrees to two hundred degrees as excluding a hundred and forty degrees so if i were to read the claim between a hundred and forty two hundred has actually including a hundred and forty degrees

[00:31:23] Speaker 03:
the disclosed range in RU 177 would abut and therefore overlap with the claimed range, doesn't that mean that RU 177 has all the elements of the claim?

[00:31:36] Speaker 01:
Well, it would abut the range.

[00:31:38] Speaker 01:
And if you include 140 in our claim, RU 177 does say 115 to 140.

[00:31:43] Speaker 02:
Well, we are operating under BRI.

[00:31:46] Speaker 01:
Yes, Your Honor.

[00:31:47] Speaker 01:
Can you just answer the question?

[00:31:49] Speaker 01:
Is the answer yes or is the answer no?

[00:31:53] Speaker 01:
The answer would be yes.

[00:31:54] Speaker 01:
It has all those limitations.

[00:31:56] Speaker 01:
But let me say this, Your Honor.

[00:31:58] Speaker 01:
I need to add a but in the sense that that was never litigated below.

[00:32:03] Speaker 01:
So we never had any expert testimony.

[00:32:05] Speaker 01:
We never had any argument about that because that's not a ground that was instituted by the board.

[00:32:09] Speaker 01:
And in fact, there's a reason for that that I think is significant.

[00:32:12] Speaker 01:
Page 2057 of the index, A2057,

[00:32:17] Speaker 01:
is their petition where they say, RU 177 does not overlap with the temperature range.

[00:32:25] Speaker 01:
They admit that.

[00:32:26] Speaker 01:
So up front, the board had that in front of them.

[00:32:27] Speaker 03:
I guess, at least at a minimum, I'm trying to underscore Judge Laurie's question to you, which is, isn't the prior art here pretty close to the claimed invention?

[00:32:38] Speaker 01:
There are individual pieces of the prior art that have individual ranges of temperature or pressure that are close to the invention.

[00:32:47] Speaker 01:
But when you look at what the invention is as a whole, the specific temperature range, the specific pressure range, there's nothing in the prior art, there's nothing in cost considerations that they advocated that would lead a person to precisely develop the particular ranges that we have.

[00:33:05] Speaker 00:
That's the unexpected results.

[00:33:07] Speaker 01:
But it's also motivation to alter.

[00:33:09] Speaker 01:
There's no motivation to alter.

[00:33:10] Speaker 01:
Their argument is that you look at 732,

[00:33:16] Speaker 01:
person would have been motivated through ordinary engineering skill to adjust the pressure and temperature in ways that would result in our invention.

[00:33:26] Speaker 01:
And the board said, no, that's not true.

[00:33:27] Speaker 01:
Because I look at the teaching of those references.

[00:33:30] Speaker 02:
Seated your time.

[00:33:31] Speaker 02:
And we will give Mr. Flippert five minutes to balance it off.

[00:33:37] Speaker 01:
But I just had one thing quickly, Your Honor, playing two recites

[00:33:41] Speaker 01:
only HMF or HMF esters as the starting material, so that's outside of RU177.

[00:33:46] Speaker 02:
Thank you, Counsel.

[00:33:47] Speaker 01:
Okay, thank you, Your Honor.

[00:33:51] Speaker 04:
Thank you, Your Honor.

[00:33:53] Speaker 04:
They chose to write Claim 1 to include 5MF as one of their optional starting components, and there is no difference between Claim 1 properly construed and RU177.

[00:34:05] Speaker 00:
What do you do with the fact that you actually said RU177 does not overlap with the range?

[00:34:11] Speaker 04:
Your Honor, as I think I had mentioned, there were two theories presented.

[00:34:14] Speaker 00:
I mean, this seems to be something that you newly discovered on appeal.

[00:34:17] Speaker 04:
No, absolutely not.

[00:34:19] Speaker 04:
If you look at page 2258, this is, I think, a fair place where it was characterized.

[00:34:25] Speaker 04:
It was argued that RU177 discloses oxidation reactions at temperatures of 115 to 140, which overlaps or at least abuts the claimed range.

[00:34:35] Speaker 04:
So there were two arguments presented below.

[00:34:37] Speaker 04:
There was an overlapping ranges argument, and there was a titanium metals type argument.

[00:34:41] Speaker 04:
The overlapping ranges argument is when it overlaps, and that's where, such as in Peterson, then there's a presumption of obviousness that applies.

[00:34:48] Speaker 03:
But to be fair, wasn't there a part in your IPR petition for the ground based on RU177 alone where the petition actually says, we acknowledge that it doesn't disclose every limitation, but nevertheless, the

[00:35:04] Speaker 03:
the temperature range is super close to the claim temperature range.

[00:35:08] Speaker 04:
You know, maybe it wasn't perfectly clear, but in that same paper, it says something like that, something similar to that.

[00:35:14] Speaker 04:
But then if you look at the next paper, your honor, we continue to argue that the claim should be interpreted to include its end point of 140.

[00:35:21] Speaker 04:
And we continue to press, particularly in the reply, which the board quotes in the section when it's talking about Magnum oil in the reply, we did press this overlapping ranges argument.

[00:35:31] Speaker 00:
And so our position is, if you look at the results... Well, how do you deal with the fact that the petition itself says they don't overlap and then you say in your reply, they do.

[00:35:40] Speaker 00:
I mean, the board doesn't have to give credit to what you said in the reply if it's inconsistent with what you said in your petition, right?

[00:35:47] Speaker 04:
Well, the board instituted on the grounds that it instituted.

[00:35:50] Speaker 04:
It didn't institute on the ground floor with RU177 alone, but it did fold it into the grounds that were instituted.

[00:35:57] Speaker 04:
And we did, in response to that in our reply,

[00:35:59] Speaker 04:
make arguments about overlapping ranges.

[00:36:01] Speaker 04:
And we did specifically argue that that itself was enough to create a prime efficient case.

[00:36:06] Speaker 03:
There was a separate section in the petition that asked for this claim construction, right?

[00:36:10] Speaker 03:
Exactly.

[00:36:11] Speaker 03:
For the range to include the endpoint 140 degrees Celsius.

[00:36:15] Speaker 04:
Exactly.

[00:36:15] Speaker 04:
It was specifically requested.

[00:36:17] Speaker 04:
The results here, if we want to look at the substance of this, and again, the art is incredibly close and there's no meaningful difference.

[00:36:23] Speaker 04:
If you look at the patents examples 3A and 3B,

[00:36:26] Speaker 04:
Those concern the 5MF starting material, which is the same one that's in RU177.

[00:36:32] Speaker 04:
The patent reports results of around 40% plus or minus a little.

[00:36:36] Speaker 04:
That's essentially the same results in RU177, which reported 36% yield.

[00:36:41] Speaker 00:
What do you do with the fact that the board made multiple, multiple findings of fact?

[00:36:46] Speaker 00:
I mean, there were detailed findings of fact here about what one in the art would have understood at the time.

[00:36:53] Speaker 00:
We can't just ignore all those findings.

[00:36:56] Speaker 04:
That's correct.

[00:36:57] Speaker 04:
And that's really under the route under the optimization theory.

[00:37:00] Speaker 04:
That was a separate theory and the board's analysis there is what it is.

[00:37:05] Speaker 04:
We do think there were infirmities in that analysis when the board was requiring DuPont and ADM to show express teachings of, for example, cost saving motivations.

[00:37:15] Speaker 04:
We don't think that's required under KSR.

[00:37:16] Speaker 04:
We think that was legal error.

[00:37:19] Speaker 04:
But again, my primary focus today has been to point out the

[00:37:22] Speaker 04:
Lack of any meaningful difference between claim one and RU 177 has every single element of that claim.

[00:37:29] Speaker 04:
And the only argued difference, and you didn't hear anything different from counsel, was the temperature range.

[00:37:34] Speaker 04:
And properly construed under broadest reasonable construction, it includes 140.

[00:37:39] Speaker 04:
And therefore, all the elements are there.

[00:37:40] Speaker 04:
And under Peterson, that claim should be presumed obvious.

[00:37:44] Speaker 04:
And given the current findings of no unexpected results, and the board did find, we find that... Even if that's the case, it's not a substantive

[00:37:52] Speaker 00:
presumption in terms of evidentiary value.

[00:37:55] Speaker 00:
It's just a question of whether that then shifts the burden to show unexpected results, which would seem to be supported by, frankly, the findings the board did make that no one would have had the desire to optimize.

[00:38:11] Speaker 04:
I mean, they did, but they ultimately found that patent owner has not established unexpected results or criticality for the claimed range.

[00:38:17] Speaker 04:
That was the board's finding.

[00:38:19] Speaker 04:
That is supported by substantial evidence in the board's analysis.

[00:38:22] Speaker 04:
So as it stands, they did consider all the factors, and that's why we think this was harmful error for failing to construe the claim to include 140.

[00:38:30] Speaker 04:
If they had construed it that way and they had applied, they should have applied Peterson and they should have concluded based on the lack of unexpected results that these claims are unpatent.

[00:38:38] Speaker 00:
Did you ask them to construe the claim during the hearing?

[00:38:41] Speaker 04:
Your Honor, I don't recall whether that came up at the hearing.

[00:38:44] Speaker 04:
I think it's pretty clear it didn't.

[00:38:46] Speaker 04:
Right.

[00:38:46] Speaker 04:
Well, it had been requested, you know, during the briefing at both stages.

[00:38:51] Speaker 02:
Thank you, counsel.

[00:38:53] Speaker 02:
Thank you, Your Honor.

[00:38:53] Speaker 02:
Take the case on revised.

[00:38:55] Speaker 04:
Thank you.