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May it please the court.

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My name is Stephen Holtquist.

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I'm representing Zoom Essence, the patent owner of U.S.

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Patent 8-939-388, which is on appeal from a PTAB 2-1 decision, holding that claims 1-16, 19, and 28-30 are invalid on various prior art grounds.

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The minority opinion in that case

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of Judge Worth Hill that the petitioner had not met the burden of showing unpatentability of those claims.

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What I'd like to do this morning is to go through two predicate inquiries.

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I think all of the issues that are presented are aptly briefed in the appeal brief.

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Can I ask you a logistic question before we begin, which is

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If we were to agree with the board on the first claim construction temperature limitation, does that end the case?

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Is there a reason that we need to decide both issues if we would agree on one?

[00:02:23] Speaker 03:
No, I think both of those, the temperature and the dried powder, require consideration.

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I think the board's reasoning shows a fallacy that I'll bring out.

[00:02:34] Speaker 01:
No, I know you disagree with them.

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I'm just asking you a sort of technical logistic question, which is,

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Hypothetically, if we were to agree with the board on its construction of the first limitation, that would end the case, or whether it would be necessary to affirm the board on both of those.

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I respectfully suggest that it would require holding on on both of those aspects.

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Thank you, Your Honor.

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If we look at the issues that are collapsed to those two fundamental inquiries, I think we know what they are.

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They are the temperature limitation and the dried powder recitation in claim one.

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I'll dispose my remarks to claim one.

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The other claims 16, 19, 20, 30 are either dependent directly or indirectly, or else they are incorporated by reference in those other claims.

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In terms of the BRI standard and its applicability to those two limitations that I'll discuss this morning, this court has held in Sutko in 2010 that BRI requires contextual consideration of the specification.

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So what I'll do this morning is to go through specification portions that speak to the temperature limitation

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And then direct remarks to the decision of the majority at the PTED panel and show the error in the application of that contextual consideration of the specification.

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Can I ask you, is there something in the specification that you can point toward that discusses having more than one

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drying fluid, so air plus something else, which is I think not unimportant to your response to the board's reliance on the claim one to claim five relations.

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Right.

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There is recitation that tracks the claim two recital, and I know claim two has only been raised inferentially in connection with the issues here, but claim two talks about

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without the presence of any heated drying fluids.

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And that language is also found in the specification itself.

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So there is antecedent reference in the specification.

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And I believe that's in the summary section, if I recall, Your Honor.

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OK.

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Yes, it's at column two at line 57.

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But I would also point out that

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Air is exemplified as the drying fluid, which of course is nitrogen, oxygen, and a few other gas species.

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So there are in-air multiple fluids.

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So if we revert to the first inquiry concerning the temperature limitation, claim one recites that the drying fluid comprises air,

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at temperature that's above the freezing temperature of the liquid solvent and below 100 degrees centigrade.

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The dispositive nature of that requires that we look at the specifications.

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Specification mentions 100 degrees centigrade in two instances.

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One in the summary of the invention section, which is at column two, line 62 to 64.

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And there the summary states, preferably a temperature of the non-heated drying fluid is less than about 100 degrees centigrade at introduction into the drying chamber.

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So that's the summary section.

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The detailed description section at Column 7, Lines 27 to 29 state that a temperature of the non-heated drying fluid, parenthetically air, introduced into the drying chamber 107

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maybe at least one of less than about 100 degrees centigrade.

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And then it goes on with a series of lesser temperatures, 75, 45, 30, 35, 30 ambient temperature as successive alternative limitations.

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So those references, summary section saying at introduction into the drying chamber and the subsequent detailed description section

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speaking to drying fluid air introduced into, create the context against which it's evident that the temperature limitation, and I'll elaborate the underlying science of this in a moment, but establish the context that that temperature limitation of maximum temperature of the drying fluid air is applicable

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each and every position everywhere within the interior volume of the drying chamber.

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Am I remembering right?

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There was some point, I think it was the board, to the following effect.

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And correct me if you can guess what I'm getting at, if I'm not articulating it right.

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If you had air and another drying fluid, and the other drying fluid was coming in at 170 degrees centigrade, some of the air is going to get very hot.

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And so a view that none of the air anywhere in the chamber can be above 100 degrees centigrade

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wouldn't make much sense if under, I forget, one of the claims, two or four or five or whatever it is, implicitly acknowledges the possibility of some other drying fluid being 75% hotter than that.

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Well, I think you have to look at the claim, Your Honor.

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The claim says that the drying fluid comprising air is at that temperature condition, i.e., below 100 degrees centigrade.

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And if you look in the interior volume of a drying chamber, you've got liquid product that's being sprayed in.

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And you've got the air that's being injected from the inlet passing to the outlet.

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And so you've got a stirred or a mixed environment.

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And to the extent that you've got a gas that comes in with another gas, those gases are going to be mixed, blended.

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And thermodynamics will say that if you've got a hot fluid, a cold fluid,

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cold foods that are getting hotter the hot foods that are getting hotter.

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That's what I was thinking of, but I thought you just said, and I think this was an important part of your argument, that none of the air anywhere can be above 100 degrees centigrade.

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And if you have a second gas, that drying fluid, that's coming in at 170 or 175, I forget what the number is, some of that air is going to be over 100.

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Well, what the claim says is below 100, so if you have that situation that you posit, then... The air has to start out very, very, very cold.

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Indeed, indeed.

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I mean, we can't pronounce basic thermodynamics as being operative, but given the sine qua non of air not exceeding 100 degrees centigrade in temperature,

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It's apparent that any temperature maldistributions relative to some equilibrium temperature has to fold in thermodynamically.

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And the air, in every case, has to meet the criterion that the temperature is below 100 degrees centigrade.

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Now, looking at this from a physiological perspective of the inlet, outlet, and the drying fluid passing through the drying chamber, the detailed description section after the passage that I referred to, giving the fallback temperatures and giving the full skein of temperature limitations, goes on to illustrate if we say

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The inlet air temperature at about 40 may result in an output temperature of about 32.

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And what that says is very simple science, that the air traversing that interior volume of the drying chamber cools.

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The drying fluid in interaction with the liquid product that's being spray dried will

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cause evaporation, the drying fluid will diminish in temperature.

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And that was actually recognized by the majority at the PTED.

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Let me go to the

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PTAB statement, they say, at some location within the internal volume of the drying chamber, there's a temperature.

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You want to give us a pic?

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Can you pick up a page that you're citing from in the appendix?

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This was at the written decision.

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I'm sorry, Your Honor.

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You don't have page numbers at the bottom?

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It's joint appendix at page 11.

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They go through the discussion of

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some location being the location at which that temperature is measured.

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And then I want to read the analysis.

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They go through the temperature disclosures in the specification and say, based on these disclosures, we understand that the drying fluid is hotter at the inlet than at the outlet.

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And then they conclude that the upper limit of 100 degrees centigrade, recited in claim one, refers to the temperature of the air measured at any location

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within the drying chamber, including at the outlet.

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So what they're doing is using the lowest temperature at the outlet as their measuring rod for the maximum temperature limitation.

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That then permitted them to use prior art such as merit, which discloses outlet temperatures that are below 100 degrees centigrade

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but have inlet temperatures vastly higher in order to declare the claim 1 invalid as anticipated.

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And the other rejections are similar as far as inlet and outlet temperatures.

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So by delocalizing the drying fluid and saying, well, it's at some location rather than at every location,

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They have used, again, the lowest temperature at the outlet as the measuring rod for the maximum temperature of limitation.

[00:14:56] Speaker 01:
You are well into your rebuttal.

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Do you want to continue or let's hear from the government.

[00:15:03] Speaker 01:
I will.

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Thank you.

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May it please the court?

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Let's start off with the procedural question that you asked opposing counsel.

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There are two claim construction disputes here.

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If you rule for the PTO on either one, the board decision should be affirmed.

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If you agree with the board on the temperature construction, then the anticipation or rejection in view of merit stands because the only disputed limitation went to the temperature limitation.

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If you agree with the board on the dried powder claim construction, then the obvious insurjection of merit in view of Scalbeck should be affirmed, because Scalbeck discloses the use of air at a lower temperature, but also has this issue of whether it results in dried powder.

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So I think either construction, if we went on either construction, then the board decision should be affirmed.

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I'd like to start by talking about the dry powder construction, because I think it's the most straightforward of the two.

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The board construed dry powder to mean particles with an outer shell sufficiently devoid of solvent so that particles encapsulate the liquid active ingredients.

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And the board took this construction straight from the words of the claims and specification

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The claims in multiple instances refer to a dried powder as one where the carrier encapsulates the active ingredient.

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This is also referred to in the specification multiple times in the 388 patent.

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Indeed, the specification in the summary of the invention at column two, looking around line 57, says that the drying is conducted for a sufficient

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amount of time to drive off a sufficient amount of the liquid solvent to leave dried particles, the powder, each dried particle containing the active ingredient encapsulated within the carrier.

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So the board simply just used the language of the claims and the specification to construe the term dried powder.

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Zoom Esteson's proposed construction is dry means not wet.

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And while that seems like a simple and straightforward construction, I don't really understand what it means.

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How do you judge whether something is not wet?

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There's nothing in the specification discussing percentage of water remaining, whether all water has to be taken out, whether some percentage can remain in.

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So by saying not wet, does that imply that all of the water is removed or that some

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specific amount of water is removed, I just don't know.

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And that proposed construction was, I think, proposed specifically to try to avoid the Scalback and DeRouche references that have an additional drying step after leaving the chamber.

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But in both of those references, it's clear that when the powder comes out of the dry chamber, it has a carrier encapsulating the active ingredient so that the active ingredient can't escape.

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And that's sufficient to meet the board's construction.

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That's sufficient in the eyes of the 388 patent.

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And so I think the board's construction was certainly reasonable on that point.

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On the temperature limitation, I think there's a disconnect between the description of the preferred embodiment and the claim language here.

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If you look at the description of the preferred embodiment, we're using non-heated air with an inlet temperature of less than 100 degrees

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We're applying an electrostatic charge to the droplets coming out of the atomizer.

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But if you look at the claim language, that's not what claim one requires.

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Claim one says nothing about the electrostatic charge.

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Claim one says nothing about use of nonheated air.

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And claim one doesn't specify a temperature at the inlet.

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All of those additional features come in these later claims, claims two through five.

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So if we're going to go by what's in the specification with respect to the temperature limitation, then we're going to be reading all of these dependent claims into claim one, which I think is incorrect.

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So if Zoom Essence had wanted to limit the inlet temperature to below 100 degrees in claim one, they should have said the inlet temperature should be below 100 degrees.

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And that's exactly what they say in

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in claim four.

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I think this is just a situation where the description of the preferred embodiment is narrower than the way that claim one was drafted.

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So if we're going to go by the language of claim one and make it consistent with the other claims, then I think the board's construction is the right one and is reasonable.

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If there are no further questions.

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Mr. Foreman has raised several issues that I'll address in sequence.

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One was the question of electrostatic charge.

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And while it's true that electrostatic charge is described, it's described in a way in the specification that it's one of the feature set of features that permit low temperature drying.

[00:21:06] Speaker 00:
It's just an enabling detail for a claim that doesn't actually require.

[00:21:14] Speaker 03:
It is a preferred and one embodiment feature, yes.

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So let me just briefly direct your honor's attention to the specification of column five at line 41-42.

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There are a number of very significant differences between the

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systems of figures one and two.

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One is the prior art inlet temperature 180, 200.

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Figure two is the flow sheet representative of the present invention.

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And then there is disclosure at column five, lines 56 through 58.

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Among the reasons that nonheated air may be used is that the story is not conventional.

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And then at column six, line 25, another reason that nonheated air may be used

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relates to an unconventional electrostatic charging process.

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And then in the specification of column seven, at lines 23 to 25, the individual or combined characteristics of relatively low water content and electrostatic charge permits vastly a different temperature condition.

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So I think there's enough interplay between those disclosure sections to say that electrostatic charge is a feature

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But the specification permits embodying the invention without that particular feature.

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In terms of the references to Darus and Scalback and the spray drying initial operation, followed by a fluidized bed treatment, I would just point out to the court that in Darus, which was a primary reference in the obviousness rejection of claim one, the water content

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at the end of the spray drying was 10 to 20 weight percent.

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That's wet.

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The fluidized bed treatment then is carried out for 10 to 30 minutes to get a suitable dried powder product.

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It's not an optional second step.

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It's taught to be essential.

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It's taught as part of the processing of that liquid product.

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Scalbeck

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Same situation of initial spray drying, secondary treatment of fluidized bed treatment.

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Scalback has a lower temperature in the spray drying, but then teaches to fluidized bed treat the wet product for one to 10 hours.

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So in a fluidized bed in which this wet mass is fluidized, put into the air to dry,

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One to ten hours.

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That tells you that that's a wet product coming from the first stage operation.

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I think in terms of the third issue that Mr. Foreman raised of dried powder, all we're saying is dried powder means exactly what it says.

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Dried powder.

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In common parlance, we all know what dry powder is.

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powdered sugar, powdered cocoa, and it's a matter of common understanding what would be a dried powder.

[00:24:47] Speaker 03:
Thank you.