[00:00:25] Speaker 03:
Our next case is Jaisal versus Selenis, 2018, 2131.

[00:00:29] Speaker 03:
Mr. Perez.

[00:00:31] Speaker 01:
May it please the court.

[00:00:36] Speaker 01:
Eugene Perez for the Appellant Dizel Corporation.

[00:00:40] Speaker 01:
Unless the court objects, and given the number of issues, actually I talk about the motion to amend first, which is, we believe, was improperly denied.

[00:00:49] Speaker 01:
And then I'll move on to the anticipation ground, the original ground three for the original claim 11.

[00:00:54] Speaker 03:
Well, you've disclaimed claim 1, right?

[00:00:57] Speaker 03:
Yes, that's right, Your Honor.

[00:00:59] Speaker 03:
So all you're arguing is claim 11?

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

[00:01:02] Speaker 01:
But every claim is distinct from each other its own invention, right?

[00:01:07] Speaker 01:
Claim 11 includes all the features of claim 1.

[00:01:11] Speaker 01:
Disclaimer of claim 1 is definitely not a disclaimer of claim 11.

[00:01:13] Speaker 03:
And what is it in claim 11?

[00:01:17] Speaker 03:
that is distinctive and non-obvious over the prior arc.

[00:01:23] Speaker 03:
Claim 11 just refers to hydrogen iodide concentrations, right?

[00:01:29] Speaker 01:
So we're going to go with, so I guess we're going to talk about anticipation first.

[00:01:32] Speaker 01:
So the idea here is that claim one was disclaimed.

[00:01:36] Speaker 01:
There was another reference out there that basically was anticipatory.

[00:01:41] Speaker 01:
Now, what we have here is a different reference.

[00:01:43] Speaker 01:
And so the perspective is, does MIERA anticipate all features of Claim 11, which of course includes the features of Claim 1.

[00:01:50] Speaker 01:
And that comes down to the combination of methyl acetate and water.

[00:01:55] Speaker 01:
And so the perspective is, does MIERA anticipate Claim 11, including the methyl acetate concentration?

[00:02:02] Speaker 02:
At page 3 of the RedBerry, Selenese contends that Dissel argues for the first time on appeal that MIERA's

[00:02:11] Speaker 02:
Reaction mixture differs from its liquid reaction Composition they correct that this wasn't raised.

[00:02:19] Speaker 01:
I Believe it that is not the case and we do brief that In fact this issue came up during the oral hearing before the board it came up And we've had it in our declaration which of course was never cited as for example at paragraph 55 of our expert and that's what your Appendix Appendix 2823

[00:02:43] Speaker 01:
I mean, besides the nomenclature of liquid reaction composition, if you look at column 5, and we've argued this, it has other key terms, such as reactor or carbonylation reaction.

[00:02:55] Speaker 01:
And so the reason why we've argued the mixture in a reactor is different than any other mixture of composition going downstream, coming out of the reactor.

[00:03:06] Speaker 01:
This is fully brief.

[00:03:07] Speaker 01:
And one thing I would like to note is that in column 5, we believe

[00:03:10] Speaker 01:
It's any of these patterns, acetic acid patterns, they usually go chronological order.

[00:03:15] Speaker 01:
They talk about the reactor first, which is what's column five.

[00:03:18] Speaker 01:
Going to column six and on, it goes to the flasher, to the distillation columns, and then to the final purified product of the acetic acid.

[00:03:25] Speaker 01:
Column five, we've always argued that's a different composition in the reactor.

[00:03:29] Speaker 01:
That is where the methanol and carbon dioxide is added.

[00:03:33] Speaker 01:
There's no acetic acid even made yet.

[00:03:35] Speaker 01:
That's where methyl acetate and water is added.

[00:03:38] Speaker 01:
And in fact,

[00:03:39] Speaker 01:
to get a full understanding of my error, if you go to columns three and four, they talk about the President invention.

[00:03:46] Speaker 01:
And that President invention is a certain amount of hydrogen and iodide and less than 5% of water.

[00:03:52] Speaker 01:
Column five talks about as much as 14% of water.

[00:03:56] Speaker 01:
How is that consistent?

[00:03:57] Speaker 01:
It's not.

[00:03:59] Speaker 01:
So when you look at it, if you look at the briefings, the appellee and the judges never talk about columns three and four.

[00:04:06] Speaker 01:
They never define what is the President invention.

[00:04:09] Speaker 01:
The present invention is also mentioned in column 6.

[00:04:11] Speaker 01:
The present invention is the low amount of water.

[00:04:14] Speaker 01:
There's 14% water listed at column 5.

[00:04:18] Speaker 01:
That's because they're talking about what's in the reactor.

[00:04:21] Speaker 01:
That's not the distillation column.

[00:04:24] Speaker 03:
Council, this is a process for producing acetic acid, comprising distilling a mixture, which includes acetic acid, condensing it, and then

[00:04:35] Speaker 03:
describing what's in the mixture.

[00:04:39] Speaker 03:
And since you've disclaimed claim one, isn't that essentially in the prior art?

[00:04:48] Speaker 01:
I would disagree, no.

[00:04:49] Speaker 01:
Because when you talk about all the claim 11 can be taken out of context.

[00:04:54] Speaker 03:
Why did you just claim it if it wasn't in the prior art, unpatentable?

[00:04:59] Speaker 01:
The O-beam reference was original ground one.

[00:05:01] Speaker 01:
We believe they had a working example that fell within the scope, yes.

[00:05:06] Speaker 03:
Will you state that?

[00:05:08] Speaker 01:
There was an OB reference in original ground one, which is the reason why we disclaim claim one.

[00:05:14] Speaker 01:
But that's a different reference.

[00:05:16] Speaker 01:
What we're talking about is Miura.

[00:05:19] Speaker 03:
I see.

[00:05:22] Speaker 03:
You're saying Miura doesn't disclose it, but another reference does.

[00:05:26] Speaker 01:
No, OB was never at issue with claim 11.

[00:05:33] Speaker 01:
So basically, the claim 11 was never issuing grounds 1 and 2.

[00:05:38] Speaker 01:
Ground 3 was on appeal.

[00:05:40] Speaker 03:
And of course, what we're talking about only is claim 11, which adds the hydrogen iodide concentrations, which are in Miura.

[00:05:53] Speaker 03:
Those concentrations are in Miura, right?

[00:05:55] Speaker 01:
Yes, but Miura also does not describe

[00:06:00] Speaker 01:
claim combination of the effective amount of water and methyl acetate.

[00:06:04] Speaker 01:
This is anticipation, not obviousness here.

[00:06:06] Speaker 01:
Anticipation requires that the prior art reference, the single reference, discloses all claim features.

[00:06:12] Speaker 01:
This is why we're on appeal.

[00:06:14] Speaker 01:
We believe it does not.

[00:06:15] Speaker 01:
The disclosure of methyl acetate in column five has nothing to do with the distillation.

[00:06:19] Speaker 02:
Let me read you something that I want an answer to.

[00:06:24] Speaker 02:
It concerns me.

[00:06:25] Speaker 02:
On page eight of the red brief, first full paragraph,

[00:06:30] Speaker 02:
The 483 patent claims do not recite the entire process for making acetic acid.

[00:06:35] Speaker 02:
Instead, they're limited to just one aspect of the process, distilling a mixture containing the products of the carbonylation reaction to purify acetic acid.

[00:06:45] Speaker 02:
And they say this.

[00:06:46] Speaker 02:
The claim processes thus do not actually require one to perform the carbonylation reaction, a flash separation step, or any subsequent purification

[00:06:59] Speaker 02:
Purification steps after the first distillation is that true.

[00:07:04] Speaker 01:
I think it's important If you look at claim one which claim 11 depends on claim one it does talk about distilling We do not claim the carbonylation reaction system that is correct We do not require a flasher step that is in the substitute claim 16 through 18 but We were still claiming distillation

[00:07:25] Speaker 01:
of certain amounts of chemical components.

[00:07:27] Speaker 01:
That's missing in the prior art reference.

[00:07:30] Speaker 01:
So, I mean, if you want to come down to claim interpretation, yeah, we're not claiming what's in the reactor.

[00:07:35] Speaker 02:
We're not claiming anything after the first distillation.

[00:07:38] Speaker 01:
Well, we do claim the condensate.

[00:07:39] Speaker 01:
So, because what happens, the reason why there's an invention here is that when you boil off the components and go to the condensate, there's basically a more purified product based on the concentration of water and methyl acetate in the distillation column.

[00:07:56] Speaker 01:
So I'm kind of running out of time.

[00:07:59] Speaker 01:
Motion to amend is a completely different topic here.

[00:08:01] Speaker 01:
So I want to go to the motion to amend if you don't have any more questions on the anticipation.

[00:08:05] Speaker 01:
So the motion to amend has to do with the substitute claim 16.

[00:08:10] Speaker 01:
And 1816 has a lot more features, has a lot more steps.

[00:08:14] Speaker 01:
The obviousness rationale is Mayura, example one, combined with xenobio.

[00:08:20] Speaker 01:
I don't know if I pronounced that correctly.

[00:08:22] Speaker 01:
But xenobio, it has this paragraph 48.

[00:08:25] Speaker 01:
If you look at the way the board framed the rationale, they never looked at anything else in the reference.

[00:08:34] Speaker 01:
And an obvious analysis, of course, takes the grand factors ascertaining the scope and content of the prior art.

[00:08:39] Speaker 01:
You can't just take a single sentence or two out of a prior reference.

[00:08:43] Speaker 01:
It's taken out of context.

[00:08:45] Speaker 01:
So when you look at xenobile and you talk about what their sighting is, it teaches methyl acetate with respect to phase separation.

[00:08:54] Speaker 01:
But if you read beyond paragraph 48, 49, table 1, or before that, xenobio has a different problem, a different solution, and methyl acetate is used completely differently.

[00:09:05] Speaker 01:
Here we're talking about methyl acetate affecting liquid-liquid separation.

[00:09:08] Speaker 02:
Could the PTAB believe Selenese's expert?

[00:09:12] Speaker 02:
He testified, xenobio therefore teaches to one of ordinary skill in the art that problems with single phasing can be resolved by reducing methyl acetate concentration.

[00:09:24] Speaker 01:
Yes, but I mean, there's a couple problems with that.

[00:09:27] Speaker 01:
First of all, where does the problem originate from?

[00:09:30] Speaker 01:
That's not disclosed in myero.

[00:09:32] Speaker 01:
That's not disclosed in xenobio.

[00:09:35] Speaker 01:
And besides that, the expert never talks about any other parts of xenobio.

[00:09:39] Speaker 01:
Only 48.

[00:09:41] Speaker 01:
Carefully chosen.

[00:09:42] Speaker 01:
Because if you went beyond that, you'll see that methyl acetate is actually disclosed in a different sense.

[00:09:48] Speaker 01:
In fact, I mean, to make it a simple analogy, if you put oil and water in a vessel, and after time you'll see

[00:09:54] Speaker 01:
phase of separation, right?

[00:09:55] Speaker 01:
You'll see liquid-liquid.

[00:09:56] Speaker 01:
But if you boil it, and you start to have a vapor, that's what's going on in distillation column.

[00:10:02] Speaker 01:
That's separate.

[00:10:02] Speaker 01:
That's a totally different idea, a totally different concept of phase separation of Myura, or everything you mentioned, versus what's in xenobio.

[00:10:11] Speaker 01:
So we think, first of all, the whole teaching of xenobio is not even considered.

[00:10:16] Speaker 01:
It was carefully chosen, just one paragraph.

[00:10:18] Speaker 01:
And second, it's basically taken out of context.

[00:10:23] Speaker 01:
We had we have evidence of record.

[00:10:25] Speaker 01:
We have declarations of record that can test Exactly what they do by basically taking out Because the weight methyl acetate is described in xenobio is for a different type of separation and The goal of xenobio is to get rid of permanganate reducing compounds They do that by using a second distillation column and in there.

[00:10:47] Speaker 01:
That's where they're talking about methyl acetate

[00:10:50] Speaker 01:
And in fact, when the methyl acetate is present, there's actually, they prefer 0% acetic acid.

[00:10:55] Speaker 01:
That's very inconsistent with what's going on in Myura.

[00:10:58] Speaker 01:
Scientifically, it's inconsistent.

[00:10:59] Speaker 01:
It's not what one person or a skill in the art would actually do.

[00:11:03] Speaker 01:
They would not interpret how methyl acetate is used in xenobio, and then somehow apply it to change the 9.8% in Myura down to 9.

[00:11:11] Speaker 02:
Do you disagree that Selenese's expert is a person of skill in the art?

[00:11:17] Speaker 01:
I don't necessarily disagree.

[00:11:19] Speaker 01:
What I do disagree with is how they only analyze a certain part of the prior reference, and they ignored the rest of it.

[00:11:28] Speaker 01:
So I mean, I'm not going to argue that the person is not in order to kill in the art.

[00:11:32] Speaker 01:
What I'm arguing is, was all evidence considered?

[00:11:35] Speaker 01:
And that comes down to our declaration.

[00:11:38] Speaker 01:
Basically, when we talk about the motion to amend, they cannot account for the amount of acetic acid in one of the phases.

[00:11:44] Speaker 01:
So this is when they said,

[00:11:46] Speaker 01:
Miura's example one corresponds to our patent compared to example three.

[00:11:52] Speaker 01:
Well, they cite paragraph 77 of our expert, but first of all, that's taken out of context.

[00:11:58] Speaker 01:
We said, if anything, da, da, da.

[00:12:00] Speaker 01:
And also, we don't want to talk about methyl acetate in that paragraph.

[00:12:03] Speaker 01:
That paragraph's taken out of context, but probably more importantly is.

[00:12:07] Speaker 02:
What they cite is Miura's example one of 9.8-weight methyl acetate would

[00:12:13] Speaker 01:
Correspond to comparative example three of the 483 patent spec of ten weight ten percent weight Yes, yes, and but the board's rationale is there's they're saying there's a link between those two and they rely on our paragraph 77 But there's no other citations to our declaration whatsoever the only time they cite to our declaration is is basically out of context and against us and

[00:12:40] Speaker 03:
So how do we... Council, you're into your bottle time.

[00:12:44] Speaker 03:
Why don't we save it, give you three minutes of a bottle and we'll hear from the other side.

[00:12:49] Speaker 03:
Mr. Collins-Chase.

[00:13:02] Speaker 00:
May it please the court.

[00:13:05] Speaker 00:
Dicell raises only factual challenges to the board's findings here, which are supported by substantial evidence I'd like to note from the beginning that there's no inconsistency in the mirror reference a mirror describes Basically the same process and it discloses that there is a distillation that can be done on the liquid reaction composition

[00:13:25] Speaker 00:
As council has stated the present invention is the low amount of water so the reference And this is a column 6 line 30 of the mirror reference says you can do the present invention on the liquid reaction composition the board correctly interpreted that and supported by Mr.. Hennekamp's testimony that that meant the low water distillation process on a composition that also had the claimed amount of Methyl acetate and

[00:13:51] Speaker 00:
That's all that's required for anticipation.

[00:13:53] Speaker 00:
And the board was entitled to credit Selenides as expert and did so here.

[00:14:01] Speaker 00:
As to the difference between claim one and claim 11, they did not raise any separate distinctions based on claim 11 and seemingly have conceded that claim one was in the prior art by canceling the claim rather than maintain it during the proceedings.

[00:14:15] Speaker 03:
And claim one purports to be a process for producing acetic acid from a mixture that contains acetic acid, which consists of distilling it and condensing it and then determining

[00:14:30] Speaker 03:
the concentrations are of various components.

[00:14:33] Speaker 00:
That's correct, Your Honor.

[00:14:34] Speaker 00:
And Claim 11, which they, again, did not argue separately for any additional limitations, simply adds another well-known compositional element that's also disclosed identically in the MURA reference.

[00:14:46] Speaker 00:
Daiso's primary argument, just to address the waiver point, we don't need to get to waiver.

[00:14:51] Speaker 00:
The primary argument for the board was that you wouldn't do distillation without flashing.

[00:14:56] Speaker 00:
Mr. Henningkamp testified that his reading of the Miura reference was that you could, and the board credited his testimony in that regard.

[00:15:03] Speaker 00:
That's substantial evidence supporting the board's interpretation.

[00:15:08] Speaker 00:
As to the amended claims, the board made separate findings on the methyl acetate concentration for the amended claims.

[00:15:16] Speaker 00:
It first stated at appendix page 26 that it was finding that the Muir reference discloses distilling a mixture with the claimed amount of methyl acetate for the same reason that it had determined with regard to anticipation.

[00:15:30] Speaker 00:
In other words, it's the same claim element the board found for the same reason that it was present in the reference.

[00:15:35] Speaker 00:
The board went on, however, to analyze the Xenobal reference and said Xenobal takes a well-known problem, phase separation in the overhead of a column, and it tells you that where you have that issue, you can address it by reducing methylacetate concentration.

[00:15:51] Speaker 00:
what they did is they took the example from Miura of 9.8% by weight and simply reduced it to within the claim range.

[00:15:58] Speaker 00:
And I would note that within the claim range is again the more preferred range of Miura which discloses 0.5 to 6% by weight as the more preferred range.

[00:16:06] Speaker 00:
So Zenoble didn't have to take you very far.

[00:16:09] Speaker 00:
And indeed, it only had to take you into what Muir already taught was the preferred range for methyl acetate.

[00:16:15] Speaker 00:
So that reference is just additional support for the board's determination.

[00:16:18] Speaker 00:
And so we would argue that the board's obviousness determination is correct based on substantial evidence supporting that factual finding.

[00:16:26] Speaker 00:
And finally, as to the other concentrations, the testimony that the board credited was from Mr. Henningkamp again.

[00:16:32] Speaker 00:
He stated that the concentrations were broad.

[00:16:36] Speaker 00:
ranges that were well-known in the art, and that there was nothing new or inventive about them.

[00:16:41] Speaker 00:
This is his testimony in Appendix page 2276.

[00:16:46] Speaker 00:
And he said, as a result, in my opinion, there's nothing new or inventive about the compositional ranges now being claimed in Prop.

[00:16:52] Speaker 00:
16.

[00:16:53] Speaker 00:
And indeed, Deisel doesn't even argue most of the elements that they've added to Claim 16.

[00:16:58] Speaker 00:
The claim's about a page and a half long, and they've only argued one additional claim element.

[00:17:02] Speaker 00:
The reason for that is that what Claim 16 does is it takes the well-known Monsanto process from the 1960s with some modern updates that are disclosed in the prior art, and it simply describes every single aspect of that process from top to bottom.

[00:17:16] Speaker 00:
All of those elements are well-known in the prior art, and that was what Mr. Henningkamp's testimony was on the amended claims.

[00:17:21] Speaker 00:
And for that reason, the board correctly found the elements disclosed and correctly held that the claims would have been obvious and rejected them.

[00:17:31] Speaker 03:
Thank you, counsel.

[00:17:32] Speaker 03:
No one ever loses points for not using all that time.

[00:17:36] Speaker 03:
Thank you, your honor.

[00:17:37] Speaker 03:
Mr. Perez has a little time, three minutes.

[00:17:48] Speaker 01:
OK.

[00:17:48] Speaker 01:
So what we heard was that we're contesting factual findings.

[00:17:52] Speaker 01:
But I would think substantial evidence means considering all the evidence, including our declaration.

[00:17:58] Speaker 01:
And if you look at the final written decision,

[00:18:01] Speaker 01:
How do they even consider it?

[00:18:02] Speaker 01:
I mean, there's nothing like to say, petitioner has expert statement A, and patent owner has statement B in direct contrast to A. Oh, but petitioner cites a textbook as objective evidence, thus we're persuaded by petitioner.

[00:18:17] Speaker 01:
There's nothing like that in there.

[00:18:18] Speaker 01:
The only time they cite our declaration is paragraph 77, out of context, against us.

[00:18:24] Speaker 01:
So we're left wondering, what exactly happened?

[00:18:26] Speaker 01:
Where is the evidentiary basis for these factual findings?

[00:18:29] Speaker 01:
Also, we are contesting a factual finding in the sense that you're going against the literal.

[00:18:34] Speaker 02:
Well, the factual basis is they rely on your friend's expert.

[00:18:39] Speaker 02:
My friend's expert?

[00:18:40] Speaker 02:
On the other side's expert.

[00:18:42] Speaker 01:
Yeah, but there's no analysis whatsoever of our declaration.

[00:18:46] Speaker 01:
The reasoning, if you look at the analysis section, there's never a citation of any of the paragraphs of our lengthy declaration.

[00:18:54] Speaker 01:
The only time they cite is against us.

[00:18:56] Speaker 01:
So we don't know what the evidentiary basis is.

[00:19:00] Speaker 01:
And as far as the factual findings go, if there is a literal description of methyl acetate in the reactor, in Myer, or if there's a literal description of methyl acetate in Zenoble that's in the context of a different vessel in a different separation, then how is that substantial evidence when you go in against the literal disclosure of the prior reference?

[00:19:22] Speaker 02:
Where in the law does it say that a trier of fact, finder of fact, has to

[00:19:31] Speaker 02:
If they rely on witness testimony, that they have to refute other witness testimony, they can just choose not to believe it.

[00:19:42] Speaker 01:
There's nothing in the law that says that.

[00:19:45] Speaker 01:
But again, as kind of wondering, how was our declaration considered?

[00:19:50] Speaker 01:
How was it weighed?

[00:19:51] Speaker 01:
When we have statements in direct contrast to what their declarants said, if you read the following decision, it's void of that kind of analysis.

[00:19:59] Speaker 01:
And that's the problem we have with this.

[00:20:01] Speaker 01:
We don't know if you're going to do a factual finding.

[00:20:03] Speaker 01:
That's fine.

[00:20:04] Speaker 01:
You could have said, we believe this declared more because they cite the subjective evidence or something like that.

[00:20:10] Speaker 01:
There's nothing like that.

[00:20:12] Speaker 01:
And as far as, again, obviousness is a legal conclusion.

[00:20:19] Speaker 01:
That's a review de novo.

[00:20:20] Speaker 01:
I know there's factual underpinnings.

[00:20:21] Speaker 01:
But of course, is the legal conclusion correct when maybe the reference was not considered in the right context?

[00:20:28] Speaker 01:
And that's de novo and Myra.

[00:20:29] Speaker 01:
And they point, again, to the preferred range at column five in MIRA.

[00:20:33] Speaker 01:
But it's 9.8.

[00:20:34] Speaker 01:
That's outside the preferred ranges.

[00:20:36] Speaker 01:
And the amended example and comparative example is also at 9.8%.

[00:20:40] Speaker 01:
So how is their criticality teaching of methyl acetate?

[00:20:45] Speaker 01:
Methyl acetate doesn't impair any of the claims of MIRA.

[00:20:48] Speaker 01:
So again, we're left with the combination of Zenovo and MIRA.

[00:20:52] Speaker 01:
And I see my time is up.

[00:20:55] Speaker 03:
Thank you, counsel.

[00:20:56] Speaker 03:
The case is submitted.