[00:00:08] Speaker 00: Our next case is number 18-1685, engineered corrosion solutions versus South Tech Systems LLC. [00:00:29] Speaker 00: Okay, Mr. Sademan. [00:00:37] Speaker 02: Good morning, Your Honors, and may it please the Court. [00:00:40] Speaker 02: There are three independent reasons that this Court should reverse the Board's final written decision, or alternatively, at least one reason that this Court should vacate and remand the Board's final written decision. [00:00:50] Speaker 02: First, the Board erred in finding that one of ordinary skill in the art, looking to reduce corrosion in an active fire sprinkler system, would look to Cahill O'Brien's disclosure of a method of prolonging the shelf life of fruits and vegetables by altering the atmospheric content of a refrigerator. [00:01:06] Speaker 02: On appeal, appellees concede that Cahill-O'Brien is not directed to the same field of endeavor as that of the 5-3 patent. [00:01:13] Speaker 02: Cahill-O'Brien, however, is also not reasonably pertinent to the problem faced by the inventors of the 5-3 patent, that is, reducing corrosion in an active fire sprinkler system. [00:01:22] Speaker 02: There is no evidence of record because petitioners submitted no expert testimony with the petition. [00:01:28] Speaker 02: And in the reply declaration, there was no discussion of Cahill-O'Brien. [00:01:32] Speaker 02: And there was nothing in any of the references that suggests that K. Hill O'Brien is reasonably pertinent to the problem faced by the inventors of the 5-3 patent. [00:01:40] Speaker 02: This court should therefore reverse, because the board's finding that K. Hill O'Brien is analogous art is not supported by substantial evidence. [00:01:48] Speaker 02: Turning to the claim construction, the board also erred in construing at least one vent operable until the water-based fire protection system is actuated by failing to give meaning to the phrase, until the water-based fire protection system is actuated. [00:02:01] Speaker 02: Properly construed the claim vent is operable until the water based until the active water based fire protection system Is triggered to allow water to flow through the pipes and into the system this can only happen in an active system There appears to be no dispute among the parties as to the meaning of actuation that is in response to an event such as heat from a fire or smoke allowing a valve to open in water to enter the system and [00:02:26] Speaker 02: There's evidence from the patent itself that the vent is in an operable system. [00:02:31] Speaker 02: That is, the patent discloses that the vent allows pressurized nitrogen to escape at a preset or adjustable limit while maintaining the valve in a closed position. [00:02:39] Speaker 02: ECS also provided testimony consistent with this construction that one ordinary skill in the art would understand that the claim requires an active water-based fire protection system. [00:02:55] Speaker 02: The board erred because it read EPRI's inactive system on this claim limitation. [00:03:00] Speaker 02: EPRI is inactive, and they necessarily cannot actuate. [00:03:05] Speaker 02: Because the board relied on an incorrect construction, it's obvious its determination is not supported by substantial evidence. [00:03:11] Speaker 02: And this is the second reason that this court should reverse the board's final written decision. [00:03:15] Speaker 04: I have trouble understanding this argument. [00:03:18] Speaker 04: Are you saying the board erred in claim construction, or are you saying the board erred in the application of the construction to the references? [00:03:30] Speaker 02: So we acknowledge the board did not expressly construe this term, so it was an implicit. [00:03:34] Speaker 04: Well, it's not even they didn't expressly. [00:03:36] Speaker 04: You didn't ask them to. [00:03:37] Speaker 04: In fact, you said no explicit claim construction was needed of this term. [00:03:42] Speaker 02: Hello? [00:03:45] Speaker 02: Think we did dispute that the system was what we called up and running that's by the way not included in the appendix But I pulled it offline from your full patent on a response you expressly had a title no construction needed No, this was one of the terms under the no construction needed portion I Think our position was that it was under the plan no remitting was clearing this did not require a construction that it was clear that to give meaning to the entire claim term you didn't need to expressly construe and [00:04:12] Speaker 04: So you didn't ask the board to construe it at all. [00:04:14] Speaker 04: In fact, you told the board a construction of it wasn't necessary. [00:04:18] Speaker 04: So is this a claim construction dispute you're now raising, or is it an in-application dispute? [00:04:28] Speaker 02: I believe it's still both because, well. [00:04:32] Speaker 04: So it becomes a little hard to make a claim construction argument now when below you expressly told the board no construction of this term was necessary. [00:04:40] Speaker 02: But even in application? [00:04:43] Speaker 02: EPRI does not disclose an active system. [00:04:45] Speaker 02: And therefore, there's no substantial evidence that EPRI can disclose this entire claim limitation. [00:04:54] Speaker 04: I guess I don't understand. [00:04:56] Speaker 04: I have a house in the wintertime. [00:04:59] Speaker 04: We don't use it. [00:05:00] Speaker 04: And so we blow the pipes with antifreeze. [00:05:02] Speaker 04: We shut off the water. [00:05:03] Speaker 04: We blow the pipes. [00:05:05] Speaker 04: That is absolutely an inactive system during that period of time. [00:05:08] Speaker 04: But with minimal effort every spring, I can reactivate that system. [00:05:12] Speaker 04: That system is capable when activated of pushing water through pipes, of doing everything the plumbing system otherwise needs to do. [00:05:20] Speaker 04: But there's no doubt in the winter, once I shut it off and I drain the pipes and I push antifreeze through those pipes, it's an inactive system. [00:05:28] Speaker 04: I understand that the inactive system of the accused device is a bit more inactive than my inactive system because I do reactivate mine every year. [00:05:37] Speaker 04: But it's still a system that, if activated, would be entirely capable of [00:05:42] Speaker 04: Needing this limitation it just happens to be disabled and not in use But it has all the components there and if activated it would I don't understand the reading in of the active system limitation into this That that accused system is operable to do everything the claim requires if put in operation. [00:06:04] Speaker 02: It's just not currently in operation so There was no evidence of record that this vent is [00:06:10] Speaker 02: when put into an active system would operate as required in a water-based fire protection system. [00:06:16] Speaker 02: We do have a record that EPRI discloses a very, very low supervisory pressure. [00:06:21] Speaker 02: And our expert provided testimony that the pressures that you would see in a fire protection system are higher than that. [00:06:29] Speaker 04: Well, that's a fact question now that we would be in a substantial evidence realm to resolve. [00:06:33] Speaker 04: That's not what you sort of set up claiming it to be a legal question. [00:06:38] Speaker 02: Correct. [00:06:38] Speaker 02: So putting aside the claim construction, [00:06:40] Speaker 02: If you disagree, this is a claim construction issue. [00:06:43] Speaker 02: There still is. [00:06:44] Speaker 04: Oh, no, I don't disagree you've presented it as a claim construction issue. [00:06:46] Speaker 04: I just disagree that you preserved the claim construction issue. [00:06:50] Speaker 02: So focusing on the substantial evidence question, I believe there's still not substantial evidence that EPRI's inactive system would be operable in an active water-based fire protection system. [00:07:00] Speaker 02: And I'd like to point out that from the very beginning, including in the red brief, as far back as the petition, the petitioners have read [00:07:07] Speaker 02: Phrase entirely on only epre and not epre plus a system if you look at the appendix at page 2064 they put forth a claim chart where they state a Vent operable until the water-based fire protection system is actuated and they only point to epre they said again in the red brief that this is a limitation not on the system but on the vent and There's no evidence here from their expert that this vent would be operable in a water-based fire protection system be it Viking or any other system [00:07:40] Speaker 02: Third, the board also erred in finding that one ordinary skill in the art looking to reduce corrosion in an active water-based fire protection system would look to EPRI's disclosure of maintenance and preservation techniques in an inactive nuclear power plant. [00:07:58] Speaker 02: Again, appellees concede that EPRI is not from the same field of endeavor as that of the 503 patent. [00:08:05] Speaker 02: Appellees also concede that EPRI is an inactive system [00:08:09] Speaker 02: EPRI, however, is also not reasonably pertinent to the problem faced by the inventors of the fact of your patent. [00:08:14] Speaker 02: And that is because EPRI, as its own stated objective on the first page of its reference states, it's to provide a reference document outlining preservation and maintenance techniques in a system undergoing layup or other outage. [00:08:29] Speaker 02: And so in addition to these disparate purposes between the claimed invention and the reference, there's three structural distinctions. [00:08:36] Speaker 02: that separate EPRI's disclosure from the claim of invention. [00:08:40] Speaker 02: First, in the claim system, the pressure is functional. [00:08:44] Speaker 02: That is, there's a pressure drop that causes the system to actuate. [00:08:49] Speaker 02: That's not a concern in EPRI's system. [00:08:51] Speaker 02: Second, if the system is overpressurized, that will slow down the hydraulic delivery. [00:08:58] Speaker 02: And as petitioner's own expert explained at paragraph 15 of his declaration, [00:09:03] Speaker 02: That's a concern in fire sprinkler systems, because you need to be able to allow the water to reach all four corners of the network as quickly as possible to respond to a fire emergency. [00:09:12] Speaker 02: And third, EPRI discloses a non-isolated system where the claim system is isolated. [00:09:19] Speaker 02: And as a result, one of ordinary skill in the art, looking to reduce corrosion in an active fire sprinkler system, in view of the different purposes and structure and function of EPRI relative to the claim invention, [00:09:30] Speaker 02: would not find EPRI reasonably pertinent to the claim invention. [00:09:34] Speaker 02: And so this is the third reason that this court should reverse the board's final written decision. [00:09:40] Speaker 02: Turning to the objective evidence, the board correctly found the nexus between the claimed invention and the evidence of commercial success and skepticism. [00:09:48] Speaker 02: And Appellee has not disputed that nexus finding here on appeal. [00:09:52] Speaker 02: It was improper for the board, however, once it found the Nexus, and once it noted this was a novel combination of known elements, to then disregard that finding, that Nexus finding, and dismiss this evidence. [00:10:04] Speaker 04: I don't understand. [00:10:06] Speaker 04: Let's start with sort of skepticism of the industry. [00:10:09] Speaker 04: I don't understand them to have dismissed the objective evidence so much as I found them to find it not persuasive because let's use skepticism as an example. [00:10:21] Speaker 04: They pointed to EPRI [00:10:22] Speaker 04: as an example of the industry was not in fact skeptical of the idea that systems like the one claimed would operate this way. [00:10:32] Speaker 04: So I thought that they looked at the evidence likewise for commercial success. [00:10:37] Speaker 04: They said, you're just talking about sales of nitrogen generators. [00:10:40] Speaker 04: You're not talking about, that's just speculative about whether that would lead to commercial success. [00:10:45] Speaker 04: in fire protection systems. [00:10:47] Speaker 04: This isn't the typical case where commercial success is to the whole iPhone or to the whole system. [00:10:55] Speaker 04: That's just evidence of generators, the nature of generators, nothing else. [00:10:59] Speaker 04: That's only sales of generators. [00:11:01] Speaker 04: So I understood them to find the evidence deficiently linked to the non-obviousness inquiry in a way that I found quite agreeable, and I'm somebody who likes secondary consideration evidence. [00:11:13] Speaker 04: I mean, I thought that they sort of evaluated this evidence and said, well, it's very speculative. [00:11:17] Speaker 04: It's not really on point. [00:11:20] Speaker 04: And I didn't find them to just dismiss it wholesale. [00:11:23] Speaker 02: So starting with commercial success, Patent Owner put forth an argument that it sells nitrogen generators and vents solely for the purpose of a fire protection system. [00:11:34] Speaker 02: And the board found that persuasive, defined a nexus between Patent Owner's sales and the claimed invention. [00:11:41] Speaker 02: But then here, once it was weighing that evidence of commercial success, it effectively made an inconsistent finding, that first nexus finding, by stating that patent owner's assertion of commercial success is also based on sales of nitrogen generators, which were a well-known source of pressurized nitrogen. [00:11:57] Speaker 02: The evidence of success was particular to the fire protection industry. [00:12:05] Speaker 02: And similarly turning to skepticism, [00:12:08] Speaker 02: The board disregarded the skepticism not based on what was actually disclosed in the references or anything else provided by petitioners. [00:12:16] Speaker 02: It was by what was disclosed in EPRI, which we were separately maintaining is not even analogous art. [00:12:23] Speaker 02: So now, all of a sudden, we're bringing back in petitioners' obviousness case to have to have that fight again for the purposes of skepticism. [00:12:30] Speaker 02: Well, no. [00:12:31] Speaker 04: But if you're wrong about whether it's analogous art, then it's perfectly legitimate for it to be [00:12:36] Speaker 04: considered in the context that the board considered it in. [00:12:40] Speaker 04: Your argument is only right if I agree with you on your first argument. [00:12:44] Speaker 02: Even if EPRI is reasonably pertinent to the problem faced, it's still no dispute from appellate this is not the same field of endeavor. [00:12:52] Speaker 02: And so while there may have been some knowledge of EPRI's use of nitrogen elsewhere, [00:12:57] Speaker 02: Appellees are not disputing that this is the same field of endeavor. [00:13:00] Speaker 02: And so looking at the fire protection industry, the only evidence of record is skepticism within that industry. [00:13:07] Speaker 02: It's only once you go elsewhere to find other disclosures that you can allegedly challenge this evidence. [00:13:18] Speaker 02: If there are no further questions, I'll reserve the remainder of my time for rebuttal. [00:13:32] Speaker 01: It may please the court. [00:13:34] Speaker 01: I'd like to address some of the points that were raised by my opposing council. [00:13:39] Speaker 01: First, regarding the Cahill-O'Brien. [00:13:43] Speaker 01: I think that the evidence is clear that the Cahill-O'Brien is reasonably pertinent to the problem of corrosion. [00:13:51] Speaker 01: If you're going to treat corrosion with nitrogen gas, which is an inert gas, of course you need a source of nitrogen gas. [00:13:58] Speaker 01: And the board correctly found that the use of nitrogen [00:14:02] Speaker 01: in fire sprinkler systems was already known. [00:14:04] Speaker 01: In fact, that was disclosed by the primary reference, which is the Viking technical brochure. [00:14:09] Speaker 01: The technical brochure disclosed the use of nitrogen but did not specify what the source of that nitrogen was. [00:14:17] Speaker 01: So clearly, there was a suggestion in the art for the person skilled in the art to go look for a source of nitrogen gas. [00:14:24] Speaker 01: The context of Cahill-O'Brien is correct. [00:14:26] Speaker 01: It's for a refrigerated container for foods. [00:14:30] Speaker 01: But the reason that it's relevant is because they are trying to have a controlled nitrogen environment, which is essentially the same problem that they're trying to do in the fire protection system. [00:14:42] Speaker 01: They want a controlled nitrogen environment. [00:14:44] Speaker 01: So in the case of Cahill O'Brien, they want a controlled nitrogen environment. [00:14:49] Speaker 01: They have the issue, we need to pick a source of nitrogen gas. [00:14:52] Speaker 01: And they disclose the use of a nitrogen generator. [00:14:55] Speaker 01: Anybody else in the field of fire protection systems, they also have to maintain a controlled nitrogen environment. [00:15:04] Speaker 01: looking to other applications where nitrogen environments are maintained would be a natural place to look for it. [00:15:10] Speaker 01: So I do think that Cahill-Brien is reasonably pertinent to the issue of corrosion if you're going to use nitrogen gas and you need a source of nitrogen gas. [00:15:21] Speaker 01: On the claim construction issue, I don't know what more I need to add. [00:15:26] Speaker 01: I think Judge Moore did a good job pointing out that I don't believe there was a claim construction at all. [00:15:34] Speaker 01: I think that the argument about claim construction was just a mischaracterization of the board's holding. [00:15:39] Speaker 01: I think, in fact, if you actually read what the board held, it said the claimed event [00:15:45] Speaker 01: talk about the claim, operates only when the system is in standby, that is, waiting for a signal that a fire is present. [00:15:52] Speaker 01: Clearly, the board was not talking about an inoperational system there. [00:15:56] Speaker 01: So the board never read that phrase until a system is actuated. [00:16:04] Speaker 01: The limitation was not read out of the claim. [00:16:12] Speaker 01: As far as I think their argument regarding whether or not that vent in the EPRI system is operable, the claim language says it's operable to vent air. [00:16:24] Speaker 01: And the whole reason for having a vent to vent air was to allow the nitrogen to displace the air so you don't create air pockets or air bubbles in the system where corrosion can occur. [00:16:36] Speaker 01: Well, that problem [00:16:37] Speaker 01: That problem exists in a boiler pipes during layup where the pipes are drained with water. [00:16:43] Speaker 01: If there's droplets of water or residual water and you have air in that pipe, you're going to get corrosion. [00:16:48] Speaker 01: Well, that's the same problem that you have in a fire protection system when it's in standby mode. [00:16:53] Speaker 01: When no water is flowing through the pipes, there's still low points and joints where water can collect in that system. [00:16:59] Speaker 01: So if there's air in the system, [00:17:01] Speaker 01: then you can get corrosion. [00:17:03] Speaker 01: So the problem of having corrosion in border plates during layup is the same as the problem of corrosion in a fire protection system as far as the vent. [00:17:14] Speaker 01: The fact that the EPR system, which he characterizes as inoperable, it's not in an operable system, it's a system in storage, which is similar to the system in standby. [00:17:24] Speaker 01: So I think the teaching of [00:17:31] Speaker 01: of the EPRI is highly relevant. [00:17:33] Speaker 01: And matter of fact, it teaches exactly the solution that they have claimed, which is a low nitrogen purge in order to displace air that's in that system for the purpose of preventing corrosion, including microbiologically influenced corrosion. [00:17:56] Speaker 01: There were several comments made about [00:18:00] Speaker 01: pressure, I've even heard opposing council refer to a limitation of the claim about maintaining the valve in a closed position. [00:18:07] Speaker 01: That limitation is not in this claim of this patent. [00:18:09] Speaker 01: That's in a claim of a different patent. [00:18:11] Speaker 01: There's nothing in the claim about maintaining supervisory pressure in this system. [00:18:15] Speaker 01: The purpose of the valve is not to maintain. [00:18:18] Speaker 01: The only claim limitation is that it's operable to vent air. [00:18:21] Speaker 01: That allows the nitrogen to displace the air so you can prevent corrosion. [00:18:28] Speaker 01: As far as the objective evidence, I think the board correctly treated that. [00:18:35] Speaker 01: We haven't objected to the issue of nexus. [00:18:38] Speaker 01: I think the board found nexus and then just considered the evidence wanting. [00:18:43] Speaker 01: In the case of [00:18:48] Speaker 01: In the case of commercial success, I'm not sure the evidence with cells was admissible. [00:18:54] Speaker 01: But what the patent owner did was simply go collect some anecdotal evidence, make a projection based on anecdotal evidence where they lumped cells of nitrogen generators, whether or not they were used in connection with the claimed invention. [00:19:08] Speaker 01: Yes. [00:19:11] Speaker 01: Our council said it was evidence particular to that industry, but not evidence that it was used in the claim in vision. [00:19:17] Speaker 01: So, so the, so the problem that the board found was, you know, when the board pointed out that [00:19:22] Speaker 01: You know, your evidence of sales included sales of nitrogen generators. [00:19:25] Speaker 01: Well, nitrogen generators were used before 2008. [00:19:28] Speaker 01: And we don't know that there was any increase in sales before or after. [00:19:32] Speaker 01: There's nothing to put their sales evidence in context and no evidence of what their sales were for patented, for products that were covered by the claims. [00:19:42] Speaker 03: Was there evidence of nitrogen generator sales for these fire systems as opposed to wholly outside the context? [00:19:52] Speaker 01: I'm not sure of the question. [00:19:54] Speaker 03: I guess I had understood you to say there was evidence of nitrogen generator sales, so maybe that was for something having nothing to do with fire systems, but that you were also saying there are fire systems, or suggesting that there are fire systems that use nitrogen generators that this claim wouldn't read on. [00:20:15] Speaker 01: Correct. [00:20:16] Speaker 01: That's the latter is what I meant. [00:20:17] Speaker 01: I think the evidence was for sales to the fire sprinkler market. [00:20:22] Speaker 01: I don't think the evidence was that it was necessarily used in the claimed invention. [00:20:26] Speaker 01: For example, the claimed invention is for a pre-action sprinkler system. [00:20:29] Speaker 01: It does not cover dry pipe sprinkler systems. [00:20:32] Speaker 01: So a nitrogen generator could be used in a dry pipe sprinkler system, which would not be covered by the claim. [00:20:36] Speaker 01: So they just lumped all sales to the fire sprinkler market [00:20:40] Speaker 01: And these nitrogen generators could also be used. [00:20:43] Speaker 01: Their own expert testified that he used nitrogen generators in a system without a depth, which, again, would not be covered by the patent. [00:20:49] Speaker 01: So we have no way to make any judgment about what this says about the claim dimension, because they lumped cells of things that are not covered by the patent with cells that are covered. [00:21:02] Speaker 01: So it's impossible to segregate those out. [00:21:08] Speaker 01: Anything further? [00:21:09] Speaker 01: I guess I just want to put on the record regarding the SAS. [00:21:14] Speaker 01: In the case that the board finds that there's a need for a remand, of course, we would ask for a remand on all of the issues. [00:21:21] Speaker 01: The in the in the opening brief the opposing council had asked for remand wasn't specific Did not say that they wanted to remand only on that one specific issue, so we didn't rely We didn't think there was an issue. [00:21:34] Speaker 01: I think it has since been raised in their reply brief So we wanted the record to be clear that we would ask for a remand on all issues Okay, thank you, mr. Bennett [00:21:52] Speaker 02: So briefly on the point of Cahill O'Brien, I think that opposing counsel is collapsing here the Graham factors. [00:21:57] Speaker 02: I think first and foremost, you can look at whether or not Cahill O'Brien is within the scope and content of the prior art. [00:22:02] Speaker 02: And then only then can you look to whether the differences between the claimed invention and the prior art. [00:22:09] Speaker 02: And so even if [00:22:11] Speaker 02: This court finds the board, even if it's persuasive that nitrogen generators were already known, Cahill-O'Brien was used for more than just nitrogen generators. [00:22:21] Speaker 02: The dependent claims it was used for other features like oxygen sensors and specific type of nitrogen generators. [00:22:26] Speaker 02: And so the problem of whether Cahill-O'Brien is analogous art still needs to be addressed. [00:22:32] Speaker 02: With regard to EPRI as analogous art, nothing that opposing counsel has stated about why EPRI is analogous art is in the record. [00:22:40] Speaker 02: Again, because there was no declaration with the petition, and the reply declaration only included three limited paragraphs that were not to those points. [00:22:47] Speaker 02: And so that is why the board's finding that EPRI is analogous art is not supported by substantial evidence. [00:22:55] Speaker 02: With the objective evidence, it appears, again, to be challenging the nexus. [00:22:59] Speaker 02: The board found the nexus between the sales [00:23:04] Speaker 02: of the nitrogen generators and vents by the patent owner and the claimed invention. [00:23:08] Speaker 02: So that was already established in the Nexus prong. [00:23:11] Speaker 02: Once that was established, it was proper for the board to weigh that evidence and not revisit the Nexus prong under the same considerations. [00:23:19] Speaker 02: If there are no further questions, we respectfully request this court reverse for any of the three reasons discussed or alternatively vacate and remand for further instructions to properly weigh the evidence of secondary considerations. [00:23:32] Speaker 02: Thank you. [00:23:32] Speaker 02: Thank you, Mr. Sideman. [00:23:33] Speaker 02: Thank both counsel. [00:23:34] Speaker 02: The case is submitted.