[00:00:03] Speaker 02:
Go ahead.

[00:00:04] Speaker 02:
May it please the court, James Barney on behalf of the appellant.

[00:00:07] Speaker 02:
The inventors of the Pattinson suit developed a radiation curable fiber optic coating with a unique combination of physical properties.

[00:00:14] Speaker 02:
That's an improvement over the prior art.

[00:00:16] Speaker 02:
The claims at issue are narrowly confined to these physical properties and the commission erred in finding that they are invalid for lack of written description.

[00:00:24] Speaker 02:
Now, the Commission incorrectly assumed that these claims are, quote, exceedingly broad and almost limitless in scope.

[00:00:29] Speaker 02:
That assumption is based primarily on the chemical composition limitations.

[00:00:33] Speaker 02:
But the claims are also limited to the physical property limitations.

[00:00:37] Speaker 02:
Let me ask you a couple of housekeeping questions.

[00:00:39] Speaker 02:
Yes, Your Honor.

[00:00:40] Speaker 03:
In the red brief at 59, the ITC says you're arguing for the first time on appeal that example three of the 659 patent is a working example.

[00:00:49] Speaker 02:
Did you raise that below, and if so, where?

[00:00:52] Speaker 02:
We don't contend that it's a working example, Your Honor.

[00:00:54] Speaker 02:
We contend that it's close.

[00:00:55] Speaker 02:
It's not a working example.

[00:00:57] Speaker 02:
Okay.

[00:00:57] Speaker 03:
That answers it.

[00:00:59] Speaker 03:
More than sufficient.

[00:01:01] Speaker 03:
In the red brief at 23, the ITC says claim 21 of the 508 does not limit the weight percentage of the reciting oligomer.

[00:01:14] Speaker 03:
What's the scope of that claim?

[00:01:21] Speaker 02:
I'm sorry, Your Honor, what is the scope of that claim?

[00:01:24] Speaker 02:
Yeah.

[00:01:25] Speaker 02:
Claim 21 does not limit the weight of the oligomer, that's correct.

[00:01:30] Speaker 02:
It basically describes the polyester polyol backbone, but it doesn't have weight percentages and it doesn't have the specific listing of all the ingredients.

[00:01:43] Speaker 03:
Okay, at 41 in the red grape, the ITC claims that Claim 21

[00:01:50] Speaker 03:
is broader than the other claims in what it calls Group 1, that is 1 to 10 and 13 to 15, and 21.

[00:02:00] Speaker 03:
Do you agree that it is?

[00:02:03] Speaker 02:
No, Your Honor, I do not, because the claims are primarily limited by their physical properties.

[00:02:10] Speaker 03:
So affirming on one won't affect the others?

[00:02:16] Speaker 03:
I think that's correct, Your Honor.

[00:02:17] Speaker 03:
That's why I said these were housekeeping.

[00:02:20] Speaker 02:
Go ahead.

[00:02:23] Speaker 02:
There is no requirement.

[00:02:25] Speaker 02:
I would push back on the Commission's overarching conclusion that these claims are exceedingly broad in scope and vast in scope, because I think that did underpin the Commission's decision in many ways.

[00:02:36] Speaker 02:
These claims are not exceedingly broad and vast in scope, because they're all limited to these physical property limitations.

[00:02:42] Speaker 02:
Anything outside the scope of any of those physical property ranges puts you outside the scope of the claims.

[00:02:47] Speaker 02:
And the working examples that support the- Physical property

[00:02:51] Speaker 05:
limitations have to be achieved simultaneously.

[00:02:54] Speaker 05:
That's correct, Your Honor.

[00:02:55] Speaker 05:
And that fact seemed to make the Commission think that that led to the exceeding breadth of the claims.

[00:03:08] Speaker 02:
We just respectfully disagree with the Commission on that.

[00:03:11] Speaker 02:
The fact that they all have to be achieved simultaneously makes the claims exceedingly narrow.

[00:03:15] Speaker 02:
Anything outside the scope of those claims of those physical properties is outside the scope.

[00:03:20] Speaker 02:
And even the commission acknowledged from our working examples that even moving slightly outside, you know, making small adjustments puts you outside the scope of the claims.

[00:03:29] Speaker 02:
That's not the hallmark of a vast and unbounded claim.

[00:03:32] Speaker 05:
I thought what the commission was trying to say is that for sure the physical properties narrow the scope of the genus but not narrow it sufficiently so that you still have a very wide genus.

[00:03:45] Speaker 02:
What's wrong with it is that the working examples are all clustered within the narrow scope of the intersecting properties.

[00:03:56] Speaker 02:
The commission came up with hypothetical examples using the extremes of the chemical ingredient ranges

[00:04:02] Speaker 02:
But there's no evidence that those hypothetical examples would fall within the scope of the claim.

[00:04:07] Speaker 02:
The written description requirement only requires support for what is claimed.

[00:04:10] Speaker 02:
It doesn't require support for hypothetical species that fall outside the scope of the claims.

[00:04:15] Speaker 02:
It was the respondents burden to show that there are species that fall within the scope of the claim.

[00:04:20] Speaker 02:
including the physical property limitations, and yet are not described.

[00:04:24] Speaker 02:
They did not meet that burden.

[00:04:26] Speaker 02:
They certainly didn't show anything in the prior art that falls within the scope of the claims and yet is outside the description.

[00:04:32] Speaker 02:
And they didn't show any of the hypothetical formulations that the commission relied on would actually fall within the scope of the claim.

[00:04:39] Speaker 02:
So they're outside of what the statute requires.

[00:04:42] Speaker 02:
The statute requires support for what is claimed, not each individual limitation taken in isolation.

[00:04:50] Speaker 02:
And so, in summary on that aspect of my argument, I would just say the commission erred by failing to take into consideration all of the claimed limitations and instead focusing on each limitation individually, which is the wrong type of analysis.

[00:05:04] Speaker 02:
Now, the other error the commission made is its finding that the chemistry involved in these claims is unpredictable.

[00:05:09] Speaker 02:
The administrative law judge, who sat with his trial for seven days and heard the testimony and judged the credibility of every witness at trial,

[00:05:16] Speaker 02:
at the end of a seven-day hearing concluded that the group one claims are fully supported by the written description and fully enabled for their full scope because, and I'm quoting, the chemistry was well known and fairly predictable and because the patents provide a sufficient disclosure that a person of ordinary skill in the art would be able to work from the examples

[00:05:36] Speaker 02:
and accomplished the full set of the claimed compositions.

[00:05:40] Speaker 02:
The commission didn't observe any witness testimony and wasn't able to judge the credibility of any of the witnesses, but it simply replaced that finding of the ALJ with the contrary finding that the chemistry is unpredictable.

[00:05:51] Speaker 02:
And it based that finding on just two pieces of evidence.

[00:05:54] Speaker 02:
First, it pointed to the witnesses, excuse me, the inventor's testimony that the invention took a long time and was difficult to achieve, and that's true.

[00:06:01] Speaker 02:
But that testimony is not relevant to unpredictability in the written description context because that written description inquiry doesn't focus on where the inventor started.

[00:06:10] Speaker 02:
It focuses on where they ended up and what they disclosed in the specification.

[00:06:14] Speaker 02:
So it is true that the inventor spent two to three years optimizing these physical properties that are claimed in these claims.

[00:06:21] Speaker 02:
But once they finished that process, they disclosed their work in the patent.

[00:06:24] Speaker 02:
They explain the chemistry involved, and they disclose numerous working examples and comparative examples that can be used as a roadmap to practice these claims.

[00:06:34] Speaker 02:
So that's the quid pro quo of the patent system.

[00:06:38] Speaker 02:
A person of ordinary skill in the art with the patent in hand and the working examples as a roadmap can practice this invention.

[00:06:45] Speaker 02:
And so the inventor's testimony about what the inventors did and how long it took them to get to the invention really isn't relevant.

[00:06:51] Speaker 02:
to whether a person of ordinary skill in the art, with the patent in hand and the written description, would find the claims unpredictable to practice.

[00:06:59] Speaker 02:
Now, the only other evidence the commission relied on in overturning the ALJ's finding was Mr. Overton's testimony that the chemistry involved

[00:07:09] Speaker 02:
is predictable in a general sense, but that there needs to be rounds of designed experiments to achieve the claimed combination of physical properties.

[00:07:18] Speaker 02:
Again, that evidence doesn't support a finding of unpredictability because there's no evidence that rounds of designed experiments is at all unusual in this field, or that it's a hallmark of unpredictability.

[00:07:28] Speaker 02:
Just because you have to do rounds of designed experiments in a chemistry context to get from point A to point B does not mean that point B is unpredictable.

[00:07:37] Speaker 02:
And in fact, experimentation is routine, is a routine part of the optimization process in many fields.

[00:07:44] Speaker 02:
I would also point out

[00:07:45] Speaker 02:
that aside from the lack of substantial evidence supporting this finding of unpredictability, we believe the Commission aired as a procedural matter because it didn't point to any clear error in the ALJ's finding of predictability.

[00:07:57] Speaker 02:
Commission Rule 21043D sets forth the criteria for granting a petition for review, and one of those criteria is the appearance that there's a finding or conclusion of material fact that is clearly erroneous.

[00:08:10] Speaker 02:
The Commission never showed that the ALJ's finding of predictability is clearly erroneous, and therefore we believe it abused its discretion.

[00:08:17] Speaker 05:
Couldn't the Commission take the view that the physical properties tend to work against one another, so to speak, and that that contributed to the unpredictability?

[00:08:28] Speaker 05:
Yes, Your Honor, but the... So tell me, why isn't that a ground for seeing the claims as unpredictable?

[00:08:36] Speaker 05:
Again, that wasn't... You've got a wide, admittedly very, very wide range of compositions.

[00:08:43] Speaker 05:
You're not denying that.

[00:08:45] Speaker 05:
Right.

[00:08:45] Speaker 05:
You're just saying someone within that wide range won't meet the physical limitations and therefore they're outside the scope of the claim.

[00:08:53] Speaker 05:
But why isn't there a, and we're working on a substantial evidence test here, as you know, for written description, why couldn't one reasonably think that because the physical limitations are

[00:09:07] Speaker 05:
fighting against each other, so to speak, that contributes to the conclusion that there's unpredictability here.

[00:09:14] Speaker 02:
Because there's no evidence of that, Your Honor.

[00:09:15] Speaker 02:
The evidence is, and I don't think the other side is going to dispute this, that each one of those physical properties has a predictable response.

[00:09:22] Speaker 02:
It has a predictable correlation to a chemical property.

[00:09:25] Speaker 05:
By itself.

[00:09:26] Speaker 02:
By itself.

[00:09:27] Speaker 05:
When they have to react simultaneously together.

[00:09:30] Speaker 02:
Right.

[00:09:30] Speaker 02:
That might make it difficult to optimize, to reach the proper point that you want to reach, but it doesn't make it unpredictable.

[00:09:37] Speaker 02:
They know where they're going.

[00:09:38] Speaker 02:
The testimony from the inventor was it was difficult to achieve.

[00:09:42] Speaker 02:
We knew where we were going, but it's an optimization process.

[00:09:45] Speaker 02:
So the invention here is that they focused on three physical properties that they hypothesized if they could optimize to a certain point would make a better coding.

[00:09:55] Speaker 02:
And they ended up being right about that.

[00:09:56] Speaker 02:
They optimized those properties.

[00:09:58] Speaker 02:
and they ended up with a commercially successful coding that's far superior.

[00:10:01] Speaker 05:
On your view, there isn't a written description problem here at all.

[00:10:05] Speaker 05:
There might or might not have been an enablement problem.

[00:10:08] Speaker 05:
Again, enablement's not something that was... So isn't that basically what you're trying to tell me?

[00:10:11] Speaker 05:
Well, we don't think there is an enablement problem, but I will concede that... You're saying if we wanted to have an argument about where there might be a problem here.

[00:10:18] Speaker 02:
I would concede that, Your Honor.

[00:10:19] Speaker 02:
I mean, we don't think there's an enablement problem, but I get your point.

[00:10:22] Speaker 05:
I'm just trying to get a handle on

[00:10:24] Speaker 05:
exactly where your vision is on this case.

[00:10:27] Speaker 02:
Right.

[00:10:27] Speaker 02:
I think you stated it accurately.

[00:10:30] Speaker 02:
If I have, I would like to just very briefly talk about the group three claim, because I think it's an important point.

[00:10:35] Speaker 03:
You're free to.

[00:10:35] Speaker 03:
You're in your response time.

[00:10:37] Speaker 02:
I'll try to be very brief.

[00:10:39] Speaker 02:
The group three claim is different than the group one and two claims.

[00:10:41] Speaker 02:
There's no dispute that the inventors came up with an important scientific discovery, which overturned the conventional understanding of how two physical properties are related.

[00:10:52] Speaker 02:
the modulus and the thermal expansion coefficient.

[00:10:56] Speaker 02:
The industry had thought for years that those two were inextricably and inversely related, and the inventors found out that they are not.

[00:11:03] Speaker 02:
They can be decoupled.

[00:11:04] Speaker 02:
And the inventors taught a screening process where you can find formulations that have both a low modulus

[00:11:10] Speaker 02:
and a low thermal expansion coefficient, that was a significant advancement in the art.

[00:11:15] Speaker 02:
Two critical points.

[00:11:17] Speaker 02:
It is undisputed that the claimed invention is described verbatim in the specification, including all of the ranges.

[00:11:23] Speaker 02:
And it is undisputed on appeal that the claim is supported, is enabled for its full scope, does not require undue experimentation.

[00:11:30] Speaker 02:
That was the ALJ's finding.

[00:11:31] Speaker 02:
It can't be disputed on appeal.

[00:11:33] Speaker 02:
With those unique facts, those two sort of facts set in stone, it cannot be the case that the claim was fully enabled and requires no undue experimentation to practice by its full scope, was fully disclosed and described verbatim in the specification, and yet the inventor was not in possession of it.

[00:11:52] Speaker 02:
Those are not congruous facts.

[00:11:54] Speaker 02:
Moreover, the Commission's finding that the Group 3 claim is unpredictable, which was never a finding the ALJ made, the Commission made that finding on its own, is incompatible with the ALJ's undisputed finding that the claim can be practiced without undue experimentation.

[00:12:09] Speaker 02:
If something can be practiced without undue experimentation, by definition, it is not unpredictable.

[00:12:14] Speaker 02:
So that finding is incompatible.

[00:12:17] Speaker 02:
With that, Your Honor, unless you have questions, I'll save the remainder of my time.

[00:12:21] Speaker 02:
You can do that.

[00:12:28] Speaker 03:
So, you all have 15 minutes.

[00:12:33] Speaker 03:
You're going to get 15 minutes.

[00:12:35] Speaker 03:
If the red light comes on and you keep talking, you're just taking away from somebody else.

[00:12:40] Speaker 03:
Okay.

[00:12:40] Speaker 03:
Okay.

[00:12:41] Speaker 00:
Thank you.

[00:12:41] Speaker 00:
Thank you, Your Honor.

[00:12:42] Speaker 00:
May it please the Court.

[00:12:44] Speaker 00:
For each group of claims, DSM simply drew offense around the desired result of a coding composition or coded firer having favorable properties.

[00:12:55] Speaker 00:
The claims here are just like the claims in Abbey v. Janssen, a case cited in the commission's brief.

[00:13:01] Speaker 00:
There the claims were invalid when they were directed to a broad, generic structure, in that case, an antibody, that had a desired property, a claimed binding rate.

[00:13:12] Speaker 00:
And in that case, that binding rate was not predictably apparent.

[00:13:17] Speaker 03:
Let me ask you this.

[00:13:18] Speaker 03:
In the gray brief,

[00:13:19] Speaker 03:
uh... gsm says it's legally erroneous to only look at the chemical composition limitations uh... in determining claim scope without considering the physical limitations do you agree with that well the commission did look at the physical property limitations those are those limitations are

[00:13:39] Speaker 00:
just like a desired result.

[00:13:40] Speaker 00:
They do limit the claims, but they're a lot like a desired result.

[00:13:44] Speaker 00:
And that brings me back to the Abbey case I was just talking about.

[00:13:48] Speaker 00:
So in Abbey, there was a broad generic structure, an antibody that had a claimed property in a binding rate.

[00:13:57] Speaker 00:
And in that case, there was also unpredictability around that binding rate.

[00:14:01] Speaker 00:
The court looked at the claims and said that

[00:14:05] Speaker 00:
It's a broad generic structure, it's unpredictable, so you're just claiming a desired result.

[00:14:11] Speaker 00:
It didn't matter that it was a property.

[00:14:14] Speaker 00:
You look at the context, nature, and the scope of the claims, predictability, and it's a desired result.

[00:14:19] Speaker 00:
They're claiming every single composition that has these desired properties.

[00:14:26] Speaker 00:
If there is a composition that is, let's say, 98% oligomer, 2% reactive diluent, and it has these

[00:14:35] Speaker 00:
properties, they're going to say that they have possession of that, that they claim that.

[00:14:40] Speaker 00:
But the problem is they did not disclose that.

[00:14:43] Speaker 00:
If you look at the disclosure, they have very similar, they're all very similar compositionally.

[00:14:49] Speaker 00:
And there's testimony from Mr. Overton, MUV's expert witness, that says that

[00:15:04] Speaker 00:
It's not predictable.

[00:15:05] Speaker 00:
There's no directions for modifying those working examples to achieve the full scope of the claims.

[00:15:12] Speaker 00:
And that's at APPX 11153.

[00:15:16] Speaker 00:
And that is exactly the case in Abbe.

[00:15:25] Speaker 00:
In Abbe, the pin site for that is

[00:15:34] Speaker 00:
759 F3D 1301.

[00:15:36] Speaker 00:
So, and going back to unpredictability, the Commission's unpredictability finding is supported by substantial evidence.

[00:15:47] Speaker 05:
Here at APPX 11,143, Mr. Overton stated... Why don't you deal directly with Mr. Barlow's argument that basically the Commission just flipped the ALJ's

[00:15:59] Speaker 05:
decision with regard to the predictability issue.

[00:16:02] Speaker 05:
So what were the grounds?

[00:16:04] Speaker 05:
Why did the commission say the ALJ was wrong?

[00:16:10] Speaker 05:
The ALJ said this is basically not unpredictable art, right?

[00:16:16] Speaker 00:
No, the ALJ said that the chemistry of forming primary

[00:16:21] Speaker 00:
coding compositions using acrylate chemistry is generally predictable.

[00:16:26] Speaker 00:
The ALJ did not address the simultaneous presence of the predictability of obtaining a coding or coding composition that has three different properties or two different properties simultaneously.

[00:16:41] Speaker 00:
That is actually the error that the AOJ made here.

[00:16:44] Speaker 00:
The AOJ did not consider the aspect at issue.

[00:16:48] Speaker 00:
Now Ariad says that very specifically.

[00:16:50] Speaker 00:
You have to consider the predictability of the aspect at issue.

[00:16:54] Speaker 00:
The commission followed Ariad very closely.

[00:16:57] Speaker 05:
Probably Mr. Warren is saying he's not trying to claim the compositions that don't meet the physical limitations.

[00:17:05] Speaker 05:
He didn't have to describe them.

[00:17:07] Speaker 00:
Well, they didn't claim that, if they only wanted to claim it.

[00:17:10] Speaker 05:
So he's got, if you say, he's got half a million particular compositions, and he runs through three physical limitations.

[00:17:19] Speaker 05:
And only out of the vast genus, only the ones that will pass the test is what he's claiming.

[00:17:27] Speaker 05:
And he says he's got specific examples of ones that pass.

[00:17:31] Speaker 00:
So we think that argument misses the point, because we don't know that they know which

[00:17:35] Speaker 00:
compositions, they don't know the scope of the compositions that actually meet that.

[00:17:40] Speaker 00:
They only provided four very similar examples.

[00:17:44] Speaker 00:
Their expert witness said that he didn't know how many would have the properties.

[00:17:54] Speaker 00:
He couldn't even confirm if they were more than 15.

[00:17:56] Speaker 05:
You heard me ask Mr. Varney about the commission seemed to think that these physical limitations, when you're trying to accomplish them simultaneously,

[00:18:05] Speaker 05:
in the vernacular bang up against each other and make it a greater problem for predictability.

[00:18:11] Speaker 05:
That's what the commission sort of said, but they didn't explain why.

[00:18:15] Speaker 05:
Is part of your argument that in the simultaneous achievement of some out of the many, many, many compositions will meet all three tests simultaneously, it's actually the functioning of the chemical, of the physical restrictions themselves creates a problem?

[00:18:34] Speaker 00:
Yeah, the interaction between the different properties, that's unpredictable.

[00:18:38] Speaker 05:
Well, explain to me why that's so.

[00:18:41] Speaker 05:
What exactly, what's happening chemically?

[00:18:44] Speaker 05:
It creates a banging against each other problem.

[00:18:50] Speaker 00:
So what you're doing in this process, you're taking these individual ingredients, and then you're reacting them.

[00:18:57] Speaker 05:
Well, I understand what the concept is, but to me, just to say the words is conclusory.

[00:19:01] Speaker 05:
What's the factual underpinning

[00:19:04] Speaker 05:
for the notion that in chemistry, when you're trying to achieve these three things at the same time, these three physical limitations, the very limitations themselves create barriers to being able to produce a composition that meets all three.

[00:19:20] Speaker 05:
It's like talk the talk.

[00:19:23] Speaker 05:
But I say, explain to me in the English language why that's so.

[00:19:28] Speaker 05:
I don't know.

[00:19:28] Speaker 05:
Can you explain it?

[00:19:29] Speaker 00:
Yeah, I can explain it.

[00:19:34] Speaker 00:
The witness gave an example of modulus, of cross-link density to improve modulus.

[00:19:42] Speaker 00:
So if you use cross-link density to, this is cross-link density, modulus, and cure speed.

[00:19:53] Speaker 00:
If you increase the cross-link density, you will improve the cure speed, which is good for the claims.

[00:20:01] Speaker 00:
But you also increase the modulus.

[00:20:04] Speaker 00:
And they want a low modulus.

[00:20:06] Speaker 00:
So that's one example of the conflicts and properties that the witnesses talked about.

[00:20:20] Speaker 00:
Another example is polarity.

[00:20:23] Speaker 00:
Polarity is one property of the ingredients.

[00:20:26] Speaker 00:
You can use polarity to improve cure speed, but if you increase polarity, you ruin the modulus retention ratio.

[00:20:33] Speaker 00:
It ruins the word that MEV's expert used.

[00:20:41] Speaker 05:
If the group reclaims are enabled, then that means that one of ordinary is killing the art.

[00:20:47] Speaker 05:
is knows how to make and or use the full scope of those claims.

[00:20:53] Speaker 00:
So the enablement argument, it was not petitioned for review.

[00:20:58] Speaker 05:
So we have to accept on this record that the group three claims are enabled.

[00:21:03] Speaker 00:
But the enablement argument presented to the AOJ had nothing to do with predictability.

[00:21:07] Speaker 05:
Well, Mr. Barney's argument is simply that if we have to take as accepted that the group 3 claims are enabled, then doesn't that tell us that the notion that there's unpredictability running around in the group 3 claims won't work?

[00:21:23] Speaker 00:
Well, enablement and written description are very different.

[00:21:27] Speaker 05:
Well, I heard that talk.

[00:21:29] Speaker 05:
But if one ordinary skill in the arts can practice the full scope of the claims, and then the claims are unpredictable, how can the two propositions live comfortably in the same bed?

[00:21:44] Speaker 00:
When the AOJ considered the enablement argument, he did not consider predictability, though.

[00:21:48] Speaker 00:
The argument was based on the difficulties of using a software package.

[00:21:53] Speaker 00:
The AOJ only considered

[00:21:56] Speaker 00:
So AOJ didn't make a rolling on the unpredictability aspect.

[00:22:00] Speaker 00:
It's a completely different argument.

[00:22:04] Speaker 00:
And I'm cutting an interview.

[00:22:07] Speaker 03:
You're eating your friend's time.

[00:22:08] Speaker 03:
Make it three and three.

[00:22:18] Speaker 04:
Ed Ben and from Fish and Richardson for intervening.

[00:22:22] Speaker 05:
Do you have an answer to the question of why, if the group three claims are enabled, they aren't also described?

[00:22:28] Speaker 04:
Well, my understanding of the written description requirement is that the specification has to show that the inventors had possession of the full scope of the claims, and this clearly didn't happen here.

[00:22:43] Speaker 05:
Well, but if the same person

[00:22:48] Speaker 05:
We're asking whether one of Ordinary Skill in the Art would appreciate that being better possessed.

[00:22:55] Speaker 05:
That same person of Ordinary Skill in the Art can easily, readily enable the full scope of the client.

[00:23:02] Speaker 05:
How can they do that if the reason why you can't do it is because everything is unpredictable?

[00:23:08] Speaker 04:
Well, first of all, there were obviously no working examples of the Group 3 claims.

[00:23:14] Speaker 05:
Mr. Barney's argument is simply using the enablement not to prove that there's written description, but to disprove that unpredictability underlies all these claims.

[00:23:24] Speaker 04:
Well, the two different issues, as you know, obviously, Your Honor, enablement just means that... But unpredictability is part of enablement, obviously.

[00:23:36] Speaker 05:
We know that from the celebrated case that people are talking about that have the heightened requirement, right?

[00:23:41] Speaker 04:
Right.

[00:23:42] Speaker 05:
So you need to know about unpredictability, whether you're talking enabled money or whether you're talking written description.

[00:23:47] Speaker 04:
Right.

[00:23:48] Speaker 04:
Well, the concept is that the testimony in the case clearly showed that these functional properties were in conflict.

[00:23:57] Speaker 04:
They were unpredictable.

[00:23:58] Speaker 04:
Mr. Overton testified that if you change one, it changes another.

[00:24:03] Speaker 04:
And I can address your question on that if you'd like.

[00:24:07] Speaker 05:
Well, how much of that's going on in the group three claims?

[00:24:10] Speaker 04:
In the group three claims you have the same chemical compositions.

[00:24:14] Speaker 04:
Mr. Barney says that the physical limitations are the functional limitations.

[00:24:23] Speaker 04:
First of all, for volumetric thermal expansion you're using

[00:24:28] Speaker 04:
a software program that supposedly shows different properties than the actual thermal expansion.

[00:24:36] Speaker 04:
Nobody in the industry uses this software program.

[00:24:39] Speaker 04:
And in fact, in order to try and run these tests, we had to go buy it.

[00:24:44] Speaker 05:
Even Mr. Overton... Yeah, but the ALJ said the computer program does the trick.

[00:24:49] Speaker 05:
Right.

[00:24:50] Speaker 05:
And therefore, that piece of the functional, of the physical property is enabled.

[00:24:55] Speaker 04:
Right.

[00:24:57] Speaker 05:
We have to accept that as true.

[00:24:59] Speaker 04:
Right.

[00:25:00] Speaker 04:
I agree with you, Your Honor.

[00:25:02] Speaker 04:
But there's still a broad base of chemical compositions that could possibly apply.

[00:25:16] Speaker 04:
And here,

[00:25:17] Speaker 04:
the inventors weren't even able to come up with one that satisfied the physical requirements of the claim.

[00:25:25] Speaker 04:
So they had a number of examples in the patent, none of which worked for this particular claim.

[00:25:33] Speaker 04:
So I don't see how anybody could say that the inventors had possession of the full scope of that claim.

[00:25:41] Speaker 04:
millions or billions of possible chemical compositions that would give you these two physical properties when they weren't even able to come up with one in the patent.

[00:25:54] Speaker 03:
You realize your red light's on.

[00:25:56] Speaker 04:
Yeah, so Your Honor, Your Honors, I just want to make a point about the scope of the claims.

[00:26:01] Speaker 04:
Identics, which Judge Wallach was on,

[00:26:05] Speaker 04:
On October 30th, the decision came out, and it was a very similar argument to what Mr. Barney's making here, that the claim scope is very narrow.

[00:26:15] Speaker 04:
In that case, there were billions of possibilities.

[00:26:19] Speaker 04:
Majority on that panel decided that the claims were not enabled.

[00:26:26] Speaker 04:
It didn't satisfy the written description requirement.

[00:26:28] Speaker 05:
What's the name of the case you're talking about?

[00:26:29] Speaker 04:
Uh, identics versus, um, sorry, uh, feel odd.

[00:26:37] Speaker 04:
So I think that case is really right on point here.

[00:26:42] Speaker 04:
Uh, unless you have any other questions, I'll cede my rest of the time to Mr. Olson.

[00:26:53] Speaker 03:
You guys are gonna split this thing up like this.

[00:26:55] Speaker 03:
I'm gonna hold your feet to the fire.

[00:26:56] Speaker 03:
You got two minutes.

[00:27:01] Speaker 01:
Good morning.

[00:27:02] Speaker 01:
May it please the court, I'm Bradley J. Olson of the law firm Barnes and Thornburg, representing the intervener, OFS Feitel.

[00:27:09] Speaker 01:
My time is short, Your Honors.

[00:27:11] Speaker 01:
I will make it briefly and straight to the point.

[00:27:14] Speaker 01:
There is a separate and independent basis well supported in the record for this court to affirm the Commission's opinion on the invalidity of the claims of the 508 patent.

[00:27:24] Speaker 01:
That independent basis

[00:27:26] Speaker 01:
is that the glass optical fiber technology itself can be used to reduce attenuation loss, wholly independent of the influence of the primary coatings on the glass fibers.

[00:27:38] Speaker 01:
The record is replete in supporting that the 508 patent on appeal fails to describe reducing attenuation loss using such technology.

[00:27:46] Speaker 01:
Indeed, it only describes reducing attenuation using a primary coating on a glass optical fiber.

[00:27:53] Speaker 01:
This panel may affirm the Commission's opinion based on the lack of support in the 508 patent for engineering the core of glass optical fiber because the Commission has already made the factual determination that the claims of the 508 patent lacked adequate written description support under Section 112, that independent bases is set forth in the Joint Appendix,

[00:28:14] Speaker 01:
on pages 21 to 23.

[00:28:16] Speaker 01:
Therefore, in view of the foregoing, OFS respectfully requests this panel to affirm the Commission's opinion.

[00:28:24] Speaker 01:
Thank you, and I'll certainly answer any questions you may have.

[00:28:28] Speaker 03:
Thank you, Counsel.

[00:28:29] Speaker 03:
Thank you.

[00:28:29] Speaker 03:
Good wrap-up.

[00:28:31] Speaker 03:
Thank you.

[00:28:37] Speaker 02:
Just a few points, Your Honor.

[00:28:39] Speaker 02:
With respect to the Group 3 claims that Judge Clevenger was questioning about, I did want to point out, because my colleague mentioned that the unpredictability finding was based on the tension between the properties.

[00:28:50] Speaker 02:
And indeed, that's what the Commission did.

[00:28:52] Speaker 02:
It took that testimony about the tension of the physical properties, which only applies to the Group 1 and 2 claims, and it transplanted that to the Group 3 claim.

[00:29:01] Speaker 02:
Nobody, the ALJ didn't do that.

[00:29:02] Speaker 02:
The ALJ made no finding that that claim was unpredictable.

[00:29:05] Speaker 02:
The reason that's erroneous is the physical properties in the group three claim are not in tension with each other.

[00:29:10] Speaker 02:
That's the whole point of the patent.

[00:29:12] Speaker 02:
That was the whole discovery, is that you can decouple the modulus from the thermal expansion coefficient so they're not operating against each other.

[00:29:20] Speaker 02:
So the basis for the commission's finding of unpredictability is not only contrary to the ALJ's finding, but it's contrary to the chemistry involved.

[00:29:29] Speaker 02:
The only other point that I'd like to make is with respect to Mr. Olson's comment on the alternative basis.

[00:29:36] Speaker 02:
We briefed this, so I'll just reiterate that the Commission did not accept that ruling from the ALJ.

[00:29:43] Speaker 02:
So that was the basis of the ALJ's ruling on the Group 2 claims.

[00:29:46] Speaker 02:
for why it found lack of written description.

[00:29:48] Speaker 02:
It found that there was an inadequate disclosure of the role that the glass fiber plays.

[00:29:53] Speaker 02:
When the commission reviewed that, the commission opted not to accept that basis and instead ruled on an alternative basis.

[00:29:59] Speaker 02:
And so we don't believe that basis is part of this case anymore.

[00:30:03] Speaker 02:
I don't believe it's properly on appeal.

[00:30:05] Speaker 02:
And that's briefed, and I don't really need to say much more about that.

[00:30:09] Speaker 02:
Are there any questions before I sit down, Your Honors?

[00:30:13] Speaker 02:
You can sit down.

[00:30:14] Speaker 02:
Thank you.

[00:30:15] Speaker 02:
Thank you, Councilman.

[00:30:16] Speaker 02:
That will stand submitted.