[00:00:00] Speaker 03:
Our second case this morning is number 22-2304, tenant company versus Oxygenated Water Technologies.

[00:00:10] Speaker 03:
Okay, Mr. Richards.

[00:00:25] Speaker 01:
Good morning, Your Honors.

[00:00:26] Speaker 01:
May I please the Court?

[00:00:27] Speaker 01:
Oliver Richards on behalf of the tenant.

[00:00:29] Speaker 01:
This court should reverse the board's finding as to Claim 13 and remand this to the dependent claims because the board's inherency analysis was fundamentally flawed.

[00:00:38] Speaker 01:
Here we have a patent, the 415 patent, that explicitly teaches, and I'm quoting from the abstract, Appendix 62, when you place an anode and cathode a certain distance apart, and they call it this critical distance, bubbles of a certain size are created, these nanobubbles and micro bubbles.

[00:00:54] Speaker 01:
And going on, Appendix 74, column 4, it says,

[00:00:58] Speaker 01:
These special parameters, the special dimensions of this device are what are responsible for creating the micro bubbles and nano bubbles.

[00:01:05] Speaker 03:
Could you help me with some aspect of the record?

[00:01:10] Speaker 03:
I found exhibit 1102 here, which was presented.

[00:01:20] Speaker 03:
And it's, I guess, an excerpt from the

[00:01:25] Speaker 03:
the examiner's discussion during maybe initial examination, in which he seems to make the same point about a prior reference hollow, saying that hollow has the same parameters in it, so it must produce nanobubbles.

[00:01:43] Speaker 03:
What's the context of that discussion before the examiner, if you recall?

[00:01:50] Speaker 01:
So I think 1102 is the prosecution history.

[00:01:54] Speaker 01:
The context, I believe, I don't recall exactly the specific context, but I do recall that rejection.

[00:02:02] Speaker 01:
There was a rejection of certain method claims and certain system claims.

[00:02:07] Speaker 01:
And what the examiner said in that rejection was that you can't claim the intended use.

[00:02:13] Speaker 01:
And I think those claims involved a recitation of an intended use of a system.

[00:02:19] Speaker 01:
and then the parameters of the system and what the examiner said in the rejection is the intended use essentially doesn't serve as an additional limitation because it's just a recitation and intended use.

[00:02:32] Speaker 03:
Well, how was that rejection overcome?

[00:02:37] Speaker 03:
Since I read what the examiner said, he said

[00:02:43] Speaker 03:
Since the whole reference discloses the same configuration, that is, the gap and so on and so forth, it's capable of providing the same results.

[00:02:51] Speaker 03:
And since the claim structure is present in the state that bubbles are due to the electrode gap, a device should be bubble sized for the same reason, at least for the same reason as the apple.

[00:03:05] Speaker 03:
So the examiner, as I read it, is saying the same thing you're saying.

[00:03:10] Speaker 03:
But then how is that overcome?

[00:03:13] Speaker 01:
Well, there are other parameters.

[00:03:14] Speaker 01:
And this is an argument that they've made.

[00:03:16] Speaker 01:
Other parameters are cited in the claim, the voltage, the amperage, the flow rate.

[00:03:21] Speaker 01:
And I believe the examiner also looked at those other parameters and said those weren't disclosed in the art.

[00:03:26] Speaker 01:
In particular, as we talk about in Graybrief, 11.

[00:03:39] Speaker 01:
What the examiner said is the prior art does not disclose the method stuff of placing the emitted device in the fluid to be treated.

[00:03:45] Speaker 01:
That was one of the reasons why he allowed the claims that he did in that particular thing, and he discloses using a pipe system, which is one of the prior art.

[00:03:55] Speaker 01:
Were there other parameters involved?

[00:03:57] Speaker 01:
We don't dispute that there are other parameters involved.

[00:03:59] Speaker 01:
In fact, the examiner pointed to some of these other parameters.

[00:04:03] Speaker 00:
Tell me about the parameters.

[00:04:04] Speaker 00:
Is it your view that

[00:04:06] Speaker 00:
It's the critical distance that dictates the formation of the micro bubbles and nanobubbles.

[00:04:12] Speaker 01:
I think there's no really dispute that there are other parameters involved.

[00:04:18] Speaker 01:
But I think it's important to look at what those parameters are.

[00:04:20] Speaker 01:
We have to look at the 415 patent.

[00:04:22] Speaker 01:
We have to assume it's enabled.

[00:04:24] Speaker 01:
It teaches us how to make micro bubbles and nanobubbles.

[00:04:27] Speaker 01:
And it talks about the critical distance as being the critical part of that, but of course there are other parameters discussed.

[00:04:31] Speaker 01:
The voltage, the type of tubing, et cetera, et cetera.

[00:04:35] Speaker 01:
What the board did essentially says, because there are all these other parameters, it can't be inherently disclosed without actually looking at those parameters.

[00:04:42] Speaker 01:
But if we look at, for example, bikey, as compared to all of the parameters disclosed in the 415 patent, they're the same.

[00:04:48] Speaker 01:
It's within the claimed voltage range.

[00:04:51] Speaker 01:
It's within the claimed amperage range.

[00:04:53] Speaker 01:
It has a tubular housing.

[00:04:55] Speaker 01:
So it's all these other factors.

[00:04:57] Speaker 00:
I hear you.

[00:04:59] Speaker 00:
I think that's a good argument.

[00:05:00] Speaker 00:
But do you contend that the board misinterpreted your argument then?

[00:05:06] Speaker 00:
Because I think the board interpreted your argument as really focusing on the critical distance as being the thing that gave you the inherent anticipation.

[00:05:19] Speaker 00:
But I don't see your blue brief necessarily

[00:05:21] Speaker 00:
saying the board erred in understanding your argument to be that.

[00:05:27] Speaker 00:
It's focusing specifically on the critical distance as opposed to why he's teaching all of the parameters in the claim.

[00:05:36] Speaker 01:
So I agree that the board misinterpreted our argument, and I also agree that we didn't explicitly make that argument in the blue brief.

[00:05:42] Speaker 01:
Nonetheless, I mean, if we look at the board- Did you make it in your petition?

[00:05:45] Speaker 01:
I mean, we certainly said that all of these limitations were there.

[00:05:48] Speaker 01:
We focused a lot on the critical distance, because that is, after all, what the patent says is the critical factor here.

[00:05:54] Speaker 00:
But do you make the argument, I looked at your IPR petition, and I was looking to see where and whether your argument was made that there's inherent anticipation of the micro bubbles and nano bubbles, because Waikiki teaches all the parameters in the claim.

[00:06:11] Speaker 00:
Do you think that's in your petition?

[00:06:14] Speaker 01:
Yes, I would agree it's in the petition.

[00:06:16] Speaker 01:
I mean, it certainly goes through all of the... Can you give me a site?

[00:06:22] Speaker 00:
When you say it's in the petition, do you mean that you specifically say that there's inherent anticipation because

[00:06:30] Speaker 00:
Wike teaches all the parameters that are specified in the claim, including critical distance, and voltage, and amperage, and all of that.

[00:06:37] Speaker 01:
I don't have a specific quote that is exactly that.

[00:06:41] Speaker 01:
But certainly our petition goes through all of the parameters that are recited in the claim, which is the flow rate.

[00:06:49] Speaker 01:
It goes through the voltage and the amperage.

[00:06:51] Speaker 01:
It goes through the tubular housing.

[00:06:53] Speaker 01:
It addresses, of course, all the limitations recited in our claim.

[00:06:56] Speaker 01:
And the contention we made was

[00:06:59] Speaker 01:
all of the parameters of the device are recited.

[00:07:02] Speaker 01:
And we certainly cited case law, like we cited in the blue brief, the cruciferous and in other cases where you have a device and then a result of using that device.

[00:07:12] Speaker 01:
And in our view, the nanobubbles and the microbubbles, and this was an argument made in both the petition and in our blue brief, that when you have a device and a claim that recites the result of using that device, that is a textbook definition of inherent anticipation.

[00:07:28] Speaker 01:
In fact, Wykie doesn't.

[00:07:30] Speaker 00:
I'm going to tell you, when you sit down, maybe you can find a site for me.

[00:07:34] Speaker 00:
But I wanted to direct you to the right place.

[00:07:37] Speaker 00:
Where I'm looking in the appendix would be A 121 to A 122.

[00:07:41] Speaker 00:
There's other parts in your petition as well.

[00:07:44] Speaker 00:
Maybe you'll point me to one of those.

[00:07:45] Speaker 00:
But that's what I would say when you're trying to find where in your petition did you preserve that argument.

[00:07:52] Speaker 00:
A 121 to 122 relates to the limitation

[00:07:56] Speaker 00:
of producing micro bubbles and nano bubbles.

[00:08:02] Speaker 00:
OK?

[00:08:03] Speaker 01:
Well, I mean, I know that there was some discussion earlier in the beginning of the petition about the case law about inherent anticipation, where we talk about the intended result of using a particular device in a particular way.

[00:08:14] Speaker 01:
And I point the court, for example, to I think that it may be more useful for me to use my rebuttal time for that, instead of searching for it here on the record.

[00:08:23] Speaker 01:
But I do have specific recollection

[00:08:25] Speaker 01:
of us discussing that case law and saying that this is just the result of using the device in its normal and intended manner.

[00:08:34] Speaker 01:
So I certainly think we made that argument below.

[00:08:36] Speaker 01:
We've made that argument in the blue brief, certainly, as well.

[00:08:40] Speaker 01:
But to your point, what the board found was that when rejecting the, I'd say, non-experimental-inherency argument was that

[00:08:49] Speaker 01:
that the argument we made or the argument they rejected was that the critical distance exclusive of all other factors.

[00:08:56] Speaker 01:
That's the language used in the board's decision, exclusive of all other factors.

[00:09:00] Speaker 01:
And I don't think that's ever been our petition, contention, either below or here.

[00:09:05] Speaker 01:
I think that it's reasonably obvious that if you put the device in some other liquid that has a bunch of other things, it may not produce the nanobubbles.

[00:09:13] Speaker 01:
But all of the focus here has been on what is actually described and claimed in the 415 patent.

[00:09:19] Speaker 01:
those parameters, and those parameters are the same as in WIKI.

[00:09:23] Speaker 01:
It matches all of the ones that are recited in the claim, and it even matches some that aren't recited in the claim.

[00:09:29] Speaker 01:
And, you know, I scoured the red brief, and I said, well, they say all of these other parameters.

[00:09:33] Speaker 01:
I don't see a meaningful difference, one that has ever been identified as something the 415 patent identifies as something responsible for creation of micro and nano bubbles that is different between WIKI and the 415 patent.

[00:09:48] Speaker 01:
I'm happy to answer any of your questions.

[00:09:51] Speaker 01:
I'm happy to also turn to the experimental results, if that is acceptable.

[00:09:57] Speaker 01:
So I do want to talk about the board's rejection of the experimental results because, of course, we didn't just rely on the teachings of Waiki.

[00:10:04] Speaker 01:
Our expert worked with a laboratory to recreate the device for Waiki.

[00:10:08] Speaker 01:
Now, the board offered two rationales for rejecting that recreation, and both, we think, are not supported by substantial evidence.

[00:10:15] Speaker 01:
And both are contrary to kind of the standard the board should apply for inherency.

[00:10:20] Speaker 01:
First, the board said we should have tested for bubbles of a certain size, these 10 micron bubbles.

[00:10:27] Speaker 01:
Of course, you know, what anticipation involves is comparing the prior art to the claims as they are written.

[00:10:34] Speaker 01:
There's no recitation about the size of micro bubbles in the

[00:10:38] Speaker 01:
415 patent.

[00:10:40] Speaker 01:
It defines them functionally as oxygen bubbles that are so small not to break the surface tension of water.

[00:10:49] Speaker 01:
We think the board erred by, I guess, post-hoc adding an additional claying construction of this 10 micron size.

[00:10:56] Speaker 01:
And the only other reason the board gave for rejecting our experimental results on YT was that our expert in constructing the device, as he said, this is the only way to construct it, placed the coils vertically as opposed to horizontally.

[00:11:11] Speaker 01:
Now that finding is essentially two parts.

[00:11:14] Speaker 01:
Number one, the first part of that finding is that YT only teaches horizontal.

[00:11:18] Speaker 01:
And the other part is that it matters.

[00:11:21] Speaker 01:
So I just want to examine the first part of that.

[00:11:23] Speaker 01:
If we look at Wikey itself, figure one has a vertical orientation.

[00:11:28] Speaker 01:
Figures two and three do have this horizontal orientation.

[00:11:31] Speaker 00:
Do you have a site for Wikey so we can grab it quick?

[00:11:33] Speaker 01:
Sure.

[00:11:36] Speaker 01:
Wikey is appendix 712, 713.

[00:11:41] Speaker 01:
If you look at figure one, they're oriented in a vertical configuration as we created, and figures two and three have them in this horizontal.

[00:11:50] Speaker 01:
Wikey itself does not speak about vertical or horizontal.

[00:11:55] Speaker 01:
It's, you know, it doesn't, it's silent on the issue.

[00:11:57] Speaker 01:
You know, one would assume, if the CDO would assume that if it were important, if Wikey thought it were important, it would have mentioned the orientation.

[00:12:05] Speaker 01:
And if we look at the expert's testimony, their expert, this is Appendix 1711.

[00:12:16] Speaker 01:
All their expert noted on this is that Wikey's figure three shows them in a horizontal orientation.

[00:12:24] Speaker 01:
This is the evidence.

[00:12:25] Speaker 01:
Nonetheless, what the board concluded is that Wikey only teaches this horizontal orientation.

[00:12:32] Speaker 01:
In our view, that's not supported by the evidence.

[00:12:35] Speaker 01:
Wikey itself shows them in these different configurations.

[00:12:38] Speaker 01:
Their experts simply observed that in figure three, they're in a horizontal configuration.

[00:12:43] Speaker 01:
We think a vertical configuration of the CEDA would certainly have understood that a vertical configuration was within the teachings of YT, and in fact, as our expert testified, someone trying to make the device YT would put them in a vertical configuration, because that's the only way to actually mount the coil.

[00:12:58] Speaker 01:
So the first part of that fact finding fails.

[00:13:01] Speaker 01:
I see that I'm out of time, and unless the court has questions, I will reserve the rest of my time for rebuttal, including perhaps addressing the second half of that.

[00:13:12] Speaker 02:
Good morning, your honors.

[00:13:19] Speaker 02:
May it please the court, Derek Vandenberg, for the Appellee oxygenator water technologies.

[00:13:26] Speaker 02:
Both parties' experts in this case agreed that to meet the patent's functional definition of a nanobubble, the bubbles need to be well under one micron in size.

[00:13:40] Speaker 02:
And in the real world,

[00:13:42] Speaker 02:
When Tenet wanted to tell its customers that its product made nanobubbles, it conducted testing that allowed it to identify bubbles well under one line.

[00:13:53] Speaker 03:
OK, but what about the first argument that Mr. Oliver was making, and that Mr. Richards was making, that the patent

[00:14:06] Speaker 03:
teaches that if you follow these parameters, you will get nanobubbles, and the prior art shows practicing those parameters.

[00:14:16] Speaker 03:
And so why doesn't it follow that the prior art also teaches creating nanobubbles?

[00:14:22] Speaker 02:
Right, right.

[00:14:23] Speaker 02:
Well, first of all, of course, whether the patent teaches that nanobubbles are the inherent result of anything within a spacing of .005 to .14 inches.

[00:14:35] Speaker 02:
is a question of fact.

[00:14:37] Speaker 02:
And the board expressly addressed it.

[00:14:39] Speaker 00:
I just want to say, I think everybody agrees that the distance between the anode and the cathode alone is not going to necessarily result in nano and micro bubbles.

[00:14:54] Speaker 00:
I think the question is whether

[00:15:00] Speaker 00:
in terms of the result and creation of microcephaly.

[00:15:03] Speaker 02:
First of all, as I believe you hinted at, they never clearly made that argument, frankly, either at the board or here on appeal.

[00:15:13] Speaker 02:
If you look at their blue brief, look at their statement of the issues, it refers to nothing but the critical distance.

[00:15:20] Speaker 02:
You refer to their arguments, page 34, page 38, refers to nothing but the critical distance.

[00:15:27] Speaker 02:
They came back and replied and made what was really a new argument.

[00:15:31] Speaker 02:
We're saying it's all the parameters.

[00:15:34] Speaker 02:
But there's no evidence to support that either.

[00:15:38] Speaker 03:
What do you mean there's no evidence to support it?

[00:15:40] Speaker 03:
I thought that they established that the priority does practice the parameters.

[00:15:47] Speaker 02:
There is no evidence to support, first of all, that merely bringing in the rest of the claimed parameters

[00:15:56] Speaker 02:
parameters, excuse me, still inherently results in making animals.

[00:16:01] Speaker 03:
I guess the question is whether the patent teaches that following those parameters would inherently result in animals.

[00:16:10] Speaker 03:
Why doesn't the patent teach that?

[00:16:13] Speaker 02:
They haven't pointed to any passages of the patent that teach that.

[00:16:19] Speaker 02:
Even in their grade brief, when they bring out this argument for the first time, when they dig back into the patent,

[00:16:25] Speaker 02:
They fall right back into discussing nothing other than the critical distance.

[00:16:30] Speaker 04:
What about the testing for the nanobubbles?

[00:16:34] Speaker 04:
Did that clarify anything?

[00:16:38] Speaker 02:
The testing really didn't clarify anything because they didn't look for nanobubbles under the patent's functional definition.

[00:16:48] Speaker 02:
As I started with, the experts agreed that you got to look well under one micron in size.

[00:16:55] Speaker 02:
Their expert agreed that the testing he performed was only valid down to five microns, didn't look at all at some micron sizes.

[00:17:07] Speaker 02:
And so he admitted that the testing he performed didn't look for nanobubbles under the patent's functional definition.

[00:17:17] Speaker 02:
I want to turn to the issue.

[00:17:20] Speaker 04:
What about supersaturation?

[00:17:23] Speaker 02:
Thank you, your honor.

[00:17:25] Speaker 02:
This was another argument that actually wasn't in their petition.

[00:17:28] Speaker 02:
They raised it for the first time in reply.

[00:17:31] Speaker 02:
But again, the board expressly addressed it and expressly found that the patent doesn't teach supersaturation necessarily indicates nanobubbles either.

[00:17:44] Speaker 02:
What the patent says is that if you make a lot of nanobubbles,

[00:17:49] Speaker 02:
water will become cloudy, cloudiness, milkiness will persist for hours, and the water will become super saturated.

[00:17:58] Speaker 02:
But it never says the opposite.

[00:18:01] Speaker 02:
It's a basic, you know, legal, or I'm sorry, logical analysis that just because, you know, X results in Y does not matter, does not mean that every time you have Y you also have X.

[00:18:16] Speaker 04:
That milky appearance, that does indicate the potential for nanobows.

[00:18:23] Speaker 02:
That is correct, but there's no evidence that their testing resulted in any persistent milkiness.

[00:18:30] Speaker 02:
In fact, their underlying data that we got through discovery showed exactly the opposite.

[00:18:36] Speaker 02:
You say persistent, but there was indication of milkiness.

[00:18:40] Speaker 02:
I'm not sure there's even indication of short-term milkiness, but the patent is clear that the reason

[00:18:53] Speaker 02:
The thing about nanobubbles is that they are so small that unlike bigger bubbles, they don't have that tendency to rise and leave the water.

[00:19:01] Speaker 02:
So the timing was important.

[00:19:03] Speaker 02:
When it says a milkiness that persisted for a time period on the order of an hour or more was important, because with slightly bigger bubbles, you might get something you would call milkiness.

[00:19:14] Speaker 02:
But it's not going to last for long, because it doesn't have that characteristic of nanobubbles that are so small that they stay

[00:19:22] Speaker 02:
sit in the water.

[00:19:26] Speaker 00:
I have a question for you on the inherent anticipation argument, the one that is mentioned in the reply brief and perhaps not before that.

[00:19:38] Speaker 00:
Why doesn't statements in the prosecution history

[00:19:41] Speaker 00:
support that if all of the variables of the claim are satisfied, including the voltage, the amperage, the separation of electrode spacing, and the total solids in the water and the conductivity of the water, why isn't it then that there's evidence, I think in the prosecution history, that that will result in nanobubbles?

[00:20:04] Speaker 00:
And I would direct your attention to pages A376.

[00:20:08] Speaker 00:
And also the examiner's reasons for statement for allowance, which are at A-356.

[00:20:14] Speaker 02:
So in our view, the prosecution history actually shows exactly the opposite.

[00:20:21] Speaker 02:
It shows that it supports us, because the language that you're referring to on 376 and in the office actions in the notice of law relate to the product claims, the system claims.

[00:20:36] Speaker 02:
The examiner

[00:20:37] Speaker 00:
It refers to claim 13.

[00:20:39] Speaker 00:
I'm sorry.

[00:20:42] Speaker 00:
And I should have clarified that.

[00:20:44] Speaker 02:
As often happens, the claim numbering is changed.

[00:20:47] Speaker 00:
I get it.

[00:20:48] Speaker 00:
You're saying that's the application claim number, not necessarily the patent number.

[00:20:51] Speaker 02:
Correct.

[00:20:52] Speaker 02:
And so actually, the opposite is true.

[00:20:55] Speaker 02:
Claim 55 is the claim that ultimately became claim 13 of the patent.

[00:21:02] Speaker 02:
And in fact, what you can see from the prosecution history

[00:21:06] Speaker 02:
is the examiner refused to allow the claims that were cited, the distance, the amperage, the voltage, all those things, because he didn't consider making nanobubbles to be a limitation of those claims.

[00:21:23] Speaker 02:
But in the same office action, and this is at 349 to 51.

[00:21:29] Speaker 02:
No, I'm sorry, it was.

[00:21:32] Speaker 02:
It's 349, and then it jumps to 355.

[00:21:35] Speaker 02:
The examiner, at the same time, allows the method claims, including claim 55, because it contains an additional limitation beyond the distance, the voltage, the amperage.

[00:21:51] Speaker 02:
It separately... Is it required, the micro bubbles?

[00:21:56] Speaker 02:
Requires making micro bubbles and nano bubbles.

[00:21:59] Speaker 03:
I'm confused about the prosecution history, because the exhibit that I was citing, 11.02, which I guess is not in the joint appendix, seems to be saying if you follow the parameters of the complaint, you get nanobubbles that the same thing must be true with respect to the prior art, if it's provided with the same parameters.

[00:22:26] Speaker 03:
And that appears to have resulted in a rejection.

[00:22:30] Speaker 03:
And how was that rejection overcome?

[00:22:33] Speaker 02:
I think the premise that you started with is incorrect.

[00:22:37] Speaker 02:
The examiner did not reject the method claims at issue because

[00:22:44] Speaker 02:
He considered the formation of nanobubbles to be the inherent result of the other claim parameters.

[00:22:50] Speaker 02:
In fact, to the contrary, on 349, the examiner says, the formation of bubbles is a function of flow rates, temperatures, liquid viscosity, voltage, or current output of the electrodes, and not just the electrode spacing.

[00:23:03] Speaker 02:
So he's talking about things, maybe some of which are in the claim, but some of which are not.

[00:23:10] Speaker 02:
Again, the examiner drew a distinction between the product claims

[00:23:13] Speaker 02:
And the method claims, because for a method claim, the formation of manual bubbles and microbubbles was a separate independent step.

[00:23:21] Speaker 00:
But then it was added to the product claims, right?

[00:23:24] Speaker 00:
The page that I cited to you is the prosecution history where the applicant amended the product claims to include the formation of the microbubbles.

[00:23:33] Speaker 00:
And then after that, the examiner allowed those.

[00:23:36] Speaker 00:
No.

[00:23:36] Speaker 02:
It's OK.

[00:23:38] Speaker 02:
The product claims were not thereafter allowed either.

[00:23:43] Speaker 02:
The examiner did not consider what is truly, really a method limitation, make nanobubbles and micro bubbles.

[00:23:55] Speaker 02:
He was not willing to give that patentable weight for the purpose of the product claims.

[00:24:01] Speaker 00:
OK, so here's my question, though.

[00:24:03] Speaker 00:
So if you've got the applicant saying for product claims,

[00:24:10] Speaker 00:
that if all those parameters are met, micro bubbles are made.

[00:24:14] Speaker 00:
Wouldn't that be some sort of concession, even if it's made in the context of product claims?

[00:24:19] Speaker 00:
Wouldn't that be a concession also that would apply to method claims?

[00:24:26] Speaker 02:
I don't think that is necessarily the law, Your Honor.

[00:24:29] Speaker 02:
But I'm also not, it's not clear that, and if Your Honor has something in particular, I was reading 376.

[00:24:38] Speaker 02:
I do not see that they are saying that... I was looking at the last three sentences on that page.

[00:24:47] Speaker 00:
It says, hence the water, micro-bubbles, nano-bubbles, of oxygen.

[00:24:52] Speaker 00:
Suspending the water are positively recited features of the system, a method, and a suspension.

[00:24:57] Speaker 00:
In addition, the voltage, amperage, and separation of the electrode spacing and the total solids in the water signifying viscosity

[00:25:04] Speaker 02:
Conductivity of the water which can be summed by the phrase tap water are positively recited features of the system the features achieve suspension nanobubbles, okay, so The patentee is arguing there effectively that I've done both I've added a limitation about that I'm making nanobubbles and micro bubbles with this With this system claim and also said I've added all these various

[00:25:32] Speaker 02:
factors to the claims.

[00:25:35] Speaker 02:
But there's still not a clear statement in this that one is the inherent result of another.

[00:25:41] Speaker 03:
So what is there in the specification that says that you do need to do anything more other than follow the parameters?

[00:25:50] Speaker 02:
Well, the specification does certainly provide a lot of teaching

[00:25:55] Speaker 02:
relative to parameters as well as... I was trying to answer my question.

[00:26:00] Speaker 03:
As I read the specification, it seems to say that if you follow the parameters, you will get nanobubbles.

[00:26:10] Speaker 03:
What is there to the contrary in the specification that says that you have to tweak some of these parameters in order to get nanobubbles, that you can't just follow the steps of the claim?

[00:26:23] Speaker 02:
The specification does not say that, Your Honor.

[00:26:25] Speaker 02:
But the specification does not need to say that.

[00:26:29] Speaker 02:
We are, at that point, confusing the issue of enablement with the issue of inheriting.

[00:26:35] Speaker 02:
Well, presumably, you believe that the claim is enabled, right?

[00:26:40] Speaker 02:
Yes, Your Honor.

[00:26:41] Speaker 02:
Nobody is arguing otherwise.

[00:26:44] Speaker 03:
Well, how is it enabled?

[00:26:44] Speaker 02:
That enablement takes in.

[00:26:46] Speaker 03:
Wait.

[00:26:46] Speaker 03:
How is it enabled if you don't get the result by following the parameters?

[00:26:52] Speaker 02:
Enablement takes into account the knowledge of those skilled in the art.

[00:26:57] Speaker 02:
The patent does not purport to have invented nanobubbles.

[00:27:01] Speaker 02:
The patent does not purport to have invented electrolysis.

[00:27:04] Speaker 02:
The patent provides the necessary teaching to allow a posita to make the invention without undue experimentation.

[00:27:17] Speaker 02:
And if there's an argument to the contrary to that, that is not the issue for today.

[00:27:21] Speaker 02:
The issue for today is only whether or not the formation of nanobubbles is inherent in anything that has the critical spacing or maybe the critical spacing plus more.

[00:27:39] Speaker 02:
The board found, as a matter of fact,

[00:27:41] Speaker 00:
but that was not the case

[00:28:00] Speaker 00:
discloses the claim critical distance in combination with the claim voltage, amperage, and flow rate.

[00:28:07] Speaker 00:
The Wyke emitter therefore produces a suspension comprising micro bubbles and nanobubbles.

[00:28:14] Speaker 00:
Would that preserve the argument that there is inherent anticipation?

[00:28:21] Speaker 02:
That is a thin read on which to hang their hat on.

[00:28:25] Speaker 02:
Again, other parts of their brief make clear that their focus is on their critical distance.

[00:28:31] Speaker 02:
They certainly have to show the other limitations are met.

[00:28:34] Speaker 02:
So it's not surprising that they refer to them.

[00:28:37] Speaker 02:
But the board fairly understood their argument to be focused on critical distance.

[00:28:43] Speaker 02:
They addressed that.

[00:28:45] Speaker 02:
They also more broadly addressed inherency and found that it was not inherent.

[00:28:50] Speaker 02:
And again, I'd suggest that if your honors read the blue brief, you'll find that they very much

[00:28:55] Speaker 02:
also based on their appeal on credible distance alone.

[00:29:01] Speaker 02:
I see my time is up.

[00:29:02] Speaker 02:
Both of you are happy to answer further questions.

[00:29:21] Speaker 01:
I want to begin by addressing the question you asked me to look into.

[00:29:23] Speaker 01:
I want to point you to appendix 97.

[00:29:26] Speaker 01:
97.

[00:29:29] Speaker 01:
I have two sites.

[00:29:32] Speaker 01:
97.

[00:29:33] Speaker 01:
97 discussing state-of-the-art provides some of the context for the overall petitions as the claimed critical distance and other parameters taught in the 415 patent lie entirely within or encompassed by ranges and parameters disclosed in the prior art rendering the alleged convention obvious granted I was talking about these other parameters and then in specifically with respect to the the white key discussion itself

[00:29:59] Speaker 01:
Of course, there's the discussion of the prosecution history that Judge Stoll pointed to, but on Appendix 121, it specifically says the Wikey emitter has the same configuration as Claim 13.

[00:30:12] Speaker 01:
It doesn't say the critical distance.

[00:30:15] Speaker 01:
It says the Wikey emitter has the same configuration as Claim 13 and therefore produces the same results, namely a suspension comprising, et cetera.

[00:30:25] Speaker 01:
So I think there are numerous points in the petition.

[00:30:28] Speaker 01:
I'm sorry, 121?

[00:30:30] Speaker 01:
Right at the bottom of 121 is the last half sentence, and then it continues on to 122.

[00:30:34] Speaker 01:
OK.

[00:30:38] Speaker 01:
I think this is the context in which this was argued.

[00:30:41] Speaker 01:
We focused on the critical distance, because that's, of course, what the patent calls the critical distance.

[00:30:46] Speaker 01:
But these other parameters were also discussed, certainly, and we made that argument below.

[00:30:51] Speaker 01:
I want to respond to some of the discussion of the applicant's arguments.

[00:30:57] Speaker 01:
I completely agree that that statement on Appendix 376 is an admission.

[00:31:02] Speaker 01:
It says we've added these additional parameters to the claims, and that those parameters will result in the claimed nanobubbles.

[00:31:10] Speaker 01:
I also want to briefly respond to the contention that we did not test for nanobubbles, and I point the Court to Column 9 of the Patent, Table 3.

[00:31:20] Speaker 01:
If you look at the testing the patentee himself did, it was about testing for an increase in oxygen, and that's exactly what we did as well.

[00:31:29] Speaker 01:
If you look at appendix 523 and 529, those are the tables of the results that show an initial amount of dissolved oxygen and then an increased amount of dissolved oxygen after running the device and then after three hours.

[00:31:43] Speaker 01:
I see that I'm out of time.

[00:31:44] Speaker 01:
I'm happy to answer any questions.

[00:31:46] Speaker 01:
With that, we'll rest our arm for you.

[00:31:48] Speaker 03:
Thank you, Mr. Richards.

[00:31:49] Speaker 03:
Thank you, Mr. Vandenberg.

[00:31:50] Speaker 03:
The case is submitted.