[00:00:01] Speaker 01: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:06] Speaker 01: God save the United States and its honorable court. [00:00:10] Speaker 02: The first case for argument this morning is 20-1738, 3M Company versus Evergreen Adhesive. [00:00:18] Speaker 02: Mr. Shaw, whenever you're ready. [00:00:21] Speaker 03: Thank you, Your Honor. [00:00:22] Speaker 03: May it please the court, Pratik Shaw for Appellant 3M. [00:00:25] Speaker 03: The patented issue covers a canister-based aerosol adhesive system. [00:00:29] Speaker 03: After finding the independent claims obvious over the Carnahan publication in broad, the board rejected 3M's obviousness argument as to two dependent claims that limit canister pressure to specific values. [00:00:42] Speaker 03: But the board did so not on the distinct grounds that West Tech now advances for affirmance, but rather on the ground that 3M had not presented argument or evidence until rehearing that a post that would have arrived at the claim pressures based on the Carnahan broad combination. [00:00:58] Speaker 03: the board's finding was manifestly mistaken. [00:01:01] Speaker 03: Yet 3M's request on appeal is modest. [00:01:03] Speaker 03: Vacate and remand for the board to actually consider the key expert evidence on which 3M explicitly relied in both its IPR petition and reply briefing. [00:01:14] Speaker 03: That evidence includes on-point, pin-sighted expert testimony that APOSA would have looked to the pressures disclosed in the Carnahan publication as a range encompassing [00:01:26] Speaker 03: the pressures claimed in claims three and four and that. [00:01:31] Speaker 00: This is Judge Stoll. [00:01:33] Speaker 00: I wanted to ask you a quick question. [00:01:35] Speaker 00: Do you challenge the board's determination at JA-93 that your reply improperly incorporated the explanation that APOSA would have selected three pressure points within the levels taught by Carnahan from the expert report? [00:01:52] Speaker 00: In other words, all that expert testimony that was [00:01:55] Speaker 00: cited in the paragraph in the reply, the board on page 893 says that under their rules, that's an improper incorporation, which I think we review for an abuse of discretion. [00:02:06] Speaker 00: But I don't see where you've challenged that. [00:02:09] Speaker 03: Oh, yes, Your Honor. [00:02:11] Speaker 03: We do challenge it at squarely, both in our opening brief and in our reply brief. [00:02:15] Speaker 03: And in fact, we include a chart on pages six and seven of our reply brief that marches through all of this. [00:02:22] Speaker 03: But Your Honor, I'll point you to the exact spot [00:02:25] Speaker 03: because I think it's critical to our challenge. [00:02:27] Speaker 03: You've put your finger on, I think, what is probably the single most important piece of evidence in this case. [00:02:33] Speaker 03: It was the critical affidavit declaration from our experts that explains why you look to the Carnahan publication and how you do it. [00:02:40] Speaker 03: And you're right. [00:02:42] Speaker 03: At page 93, the board says we're not going to consider this because it wasn't advanced in the briefing and only referenced improperly. [00:02:50] Speaker 03: But, Your Honor, that's just not correct under any conception [00:02:54] Speaker 03: of normal practice and how you cite expert testimony on pages 23 and 24 of our reply brief before the... Wait, back in a minute. [00:03:05] Speaker 00: Do you mind giving me a site in your blue brief where you challenge the board's determination that it was an improper incorporation by reference? [00:03:16] Speaker 03: Yes, Your Honor. [00:03:17] Speaker 03: Let me just turn to the blue brief so I can do it. [00:03:22] Speaker 03: So this is in [00:03:23] Speaker 03: Uh, so it begins in the section on page 26 of our blue brief where we say, uh, let me just turn to that so I can give you, and this is the board's attempt to shore up its reasoning on rehearing is unavailing. [00:03:37] Speaker 03: And then we point specifically to, uh, the section starts your honor on page 26 of our blue brief. [00:03:48] Speaker 04: Yes. [00:03:48] Speaker 03: And then in particular, the point about incorporation by reference, this is on page 31. [00:03:58] Speaker 03: And it's actually pages 30 and 31 is where the argument begins. [00:04:14] Speaker 03: And there we go through and talk about, [00:04:17] Speaker 03: about how we cited Prudhomme's testimony. [00:04:21] Speaker 03: And then you can see on the paragraph on 31, we talk about what we did in front of the P-Tab, and then we say, supporting those factual assertions with a citation to three pages of Dr. Prudhomme's deposition testimony and 10 of the 170 paragraphs of the supplemental declaration, including the specific paragraph explaining optimization using the Carnahan [00:04:44] Speaker 03: publications pressures is a far cry from impermissible incorporation by reference. [00:04:51] Speaker 03: And then we cite the board's own cases on incorporation of reference there. [00:04:56] Speaker 03: And really this entire section is about how we cited that expert testimony properly in front of the PTAB. [00:05:05] Speaker 03: And then it's essentially probably the most significant focus of [00:05:11] Speaker 03: of our reply brief is walking through exactly how we cited it and why this was squarely in front of the PTAB. [00:05:21] Speaker 03: Mr. Saag, good night. [00:05:23] Speaker 04: This is Judge Clevinger. [00:05:25] Speaker 04: The board's analysis of the one year 103 challenge on the dependent claim to the JA 34 to 36 and then again at 89 to 92. [00:05:37] Speaker 04: And I'm not sure I understand [00:05:39] Speaker 04: precise ground on which your 103 challenge was rejected. [00:05:44] Speaker 04: You suggest that page 25, footnote 2, that it was a teach-away problem, but I'm not sure. [00:05:51] Speaker 04: What is your understanding, specific understanding as to the rationale the board used to reject your 103 challenge? [00:06:00] Speaker 03: So, Your Honor, it's, so I guess it was a shifting rationale. [00:06:05] Speaker 03: So in their final written decision, [00:06:07] Speaker 03: Your Honor, they didn't provide any rationale at all other than to reference the discussion of the other fire or combination. [00:06:17] Speaker 04: Well, let's start with the board, the primary decision, 34 to 36. [00:06:22] Speaker 03: The re-hearing decision, Your Honor, or the final decision? [00:06:27] Speaker 04: In the initial decision. [00:06:28] Speaker 03: Oh, OK. [00:06:29] Speaker 03: Yes, Your Honor. [00:06:30] Speaker 04: In the initial decision, there is a citation of the E.I. [00:06:34] Speaker 04: DuPont case, citing a teacher. [00:06:37] Speaker 04: So I'm just trying to understand what it is we're trying to decide they did wrong. [00:06:43] Speaker 04: I know what you think that they didn't look at, but what is their ground? [00:06:48] Speaker 03: Got it, Your Honor. [00:06:49] Speaker 03: So, Your Honor, the discussion in the final written decision on pages 34 through 36 of the appendix, that is with respect to a different combination, Takashima and Broad, that we are not appealing. [00:07:05] Speaker 03: And that's part of the problem. [00:07:06] Speaker 03: is their only analysis on obviousness in the final written decision is to a different combination, not the combination that we actually raised in graph four. [00:07:19] Speaker 04: Okay, so assume I agree with you on that, that I can just ignore the initial decision and that the only thing we're looking at for purposes of obviousness of claims three and four for a board decision is in the reconsideration decision. [00:07:35] Speaker 04: So when we turn there, the light one, A91, the board is talking about the, they think it's unreasonableness to get the pressure below the 2.8 PSI for a dual propellant system. [00:07:56] Speaker 02: Yes. [00:07:56] Speaker 04: And they say, in particular, for example, you do not have the combined system [00:08:03] Speaker 04: that there's a dual system that would maintain the same properties of a single system. [00:08:08] Speaker 04: So what you're saying is that you didn't make any argument that if you were to make the combination and introduce a dual propellant into Kernahan, that Kernahan's properties would remain the same. [00:08:21] Speaker 03: Right. [00:08:22] Speaker 03: Your Honor, you're right. [00:08:23] Speaker 03: That's what the board said on rehearing. [00:08:27] Speaker 03: But, Your Honor, that's just demonstrably wrong at every turn. [00:08:32] Speaker 04: Well, where did you argue that if you were to modify Kernahan by reducing the numbers in broad, that the Kernahan system would maintain the same properties, i.e. [00:08:49] Speaker 04: that the Kernahan's numbers per PSI wouldn't change? [00:08:53] Speaker 03: Right. [00:08:54] Speaker 03: Okay. [00:08:54] Speaker 03: So I think the easiest way to track all the citations is to look on page six and seven of our reply brief before this court. [00:09:02] Speaker 03: And we tried to compile it in one spot to make the record citations a little bit easier, but I can walk you through the highlights of that chart. [00:09:12] Speaker 03: So the first place would be in our actual petition itself before the IPR. [00:09:19] Speaker 04: At what page? [00:09:21] Speaker 03: It would be pages 55 and 56 of the IPR petition, which in the appendix appears at pages 165 and 166. [00:09:37] Speaker 03: And there we say, Your Honor, claims three and four recite obvious variations of compressed gas pressure, and then the other claims refer to solid concentrations and solvents. [00:09:48] Speaker 03: which require nothing more than routine optimization that is well within the knowledge of the posta prior to April 30, 2001. [00:09:55] Speaker 03: Therefore, these claims are obvious in view of the disclosures in the Carnahan publication and broad and the knowledge of the posta as explained in the chart that follows. [00:10:04] Speaker 03: And then it cites Geisler and Aller, which are basically the precursors to this court's decision in applied materials, which says if a prior art encompasses a range, [00:10:15] Speaker 03: There's a presumption that a person of ordinary skill in the art can optimize those. [00:10:20] Speaker 03: And then in the chart, we reference the claim. [00:10:25] Speaker 04: Let me just stop you there for a second. [00:10:27] Speaker 04: On reconsideration, the board took back its earlier finding that Kernahan taught a range, correct? [00:10:36] Speaker 03: Your Honor, yes, it did purport to do that. [00:10:39] Speaker 03: That's right. [00:10:40] Speaker 04: Uh, and if you, if you'd like, what do you mean purport to do that? [00:10:44] Speaker 04: It did it. [00:10:45] Speaker 03: Yes, your honor. [00:10:46] Speaker 03: It did do that. [00:10:47] Speaker 03: And let me respond to that discrete point. [00:10:49] Speaker 03: Uh, so your honor, two points on that. [00:10:52] Speaker 03: First of all, of course, it didn't look at our key expert affid, uh, evidence that explained why you should look at, uh, at a range, but, but perhaps even more importantly, there was no disagreement on this point between the parties, their expert. [00:11:09] Speaker 00: I'm sorry, Your Honor. [00:11:10] Speaker 00: Counsel, this is Judge Stoll. [00:11:12] Speaker 00: I think you've got a pretty good point about that wanted testimony. [00:11:16] Speaker 00: My only trouble with it is that the first time I see you citing it to the board for this proposition or anything having to do with claims three and four is in the petition for rehearing. [00:11:26] Speaker 00: Am I wrong about that? [00:11:29] Speaker 03: Your Honor, we did. [00:11:33] Speaker 03: make all of these arguments in the petition and reply. [00:11:35] Speaker 00: Now as to, are you talking about the specific- You had the wanted testimony and you cite the wanted testimony in your petition? [00:11:43] Speaker 03: No, I'm sorry. [00:11:44] Speaker 03: I'm sorry, Your Honor. [00:11:45] Speaker 03: As to the wanted testimony- Yeah, when did you first cite it? [00:11:50] Speaker 03: We didn't cite the WANIT test. [00:11:52] Speaker 03: We cited our expert that says the exact same thing. [00:11:54] Speaker 00: Let me ask the question much more clearly. [00:11:56] Speaker 00: I'm sorry about that. [00:11:57] Speaker 00: I want to know, when did you first cite a WANIT testimony for purposes of showing the board that it claims three and four would have been obvious? [00:12:08] Speaker 00: I think it's in your petition for rehearing, but tell me if that's wrong. [00:12:13] Speaker 03: No, Your Honor, we did not cite that. [00:12:17] Speaker 03: We did not cite that, just to answer your question plainly. [00:12:19] Speaker 03: We didn't cite it in the petition in reply, but we did cite our expert's testimony. [00:12:25] Speaker 03: And we couldn't have cited it in the petition because when not didn't happen until after institution. [00:12:33] Speaker 03: That's when they got when not. [00:12:34] Speaker 03: And then in the reply, Your Honor, [00:12:36] Speaker 03: We cited our expert who said the exact same thing as Wenot. [00:12:41] Speaker 00: Could you have cited Wenot in your reply? [00:12:45] Speaker 00: You had it at that time? [00:12:47] Speaker 00: I think yes. [00:12:49] Speaker 03: Yes, we did have it, but our expert said the exact same thing as Wenot and there was no dispute. [00:12:54] Speaker 00: If there's undisputed testimony, why wouldn't you put that in front of the board? [00:12:58] Speaker 03: Well, Your Honor, because the other side had never raised, had never argued this. [00:13:03] Speaker 00: Otherwise, this was... What about the institution decision? [00:13:05] Speaker 00: Can I ask you something? [00:13:06] Speaker 00: Are you familiar with, I'm sure you're familiar with the institution decision. [00:13:09] Speaker 00: I have to say, I really commended the board because they did something that I don't think I've ever seen before in their institution decision. [00:13:18] Speaker 00: They specifically said patent owner has some decent points, their position on claims three and four. [00:13:26] Speaker 00: appears to have some merit, the party should address these issues during trial. [00:13:30] Speaker 00: Now, I admit that it's for broad and Takashima, but still, it might have, you know, they're focusing on Plains 3 and 4. [00:13:38] Speaker 00: So, why would you think that this wasn't an issue? [00:13:41] Speaker 03: Okay, so a couple of responses, Your Honor. [00:13:43] Speaker 03: First of all, you're right. [00:13:45] Speaker 03: In the institution decision, this is exactly what they say. [00:13:47] Speaker 03: In particular, and this is at page A1942, this is the institution decision that you're referencing. [00:13:53] Speaker 03: In particular, [00:13:54] Speaker 03: Questions have been raised regarding the evidentiary support for the rationale applied by petitioner to adjust certain pressures, concentrations, and percentages through routine optimization to arrive at the claim values. [00:14:05] Speaker 03: The party should address these issues during trial. [00:14:09] Speaker 03: The next filing after that is the Patanona response. [00:14:13] Speaker 03: In their 65 page Patanona response, they make only one argument as to the Carnahan broad [00:14:22] Speaker 03: combination as to claims three and four. [00:14:25] Speaker 03: We do, Your Honor, on the obviousness, but I'm just trying to explain the chain of what brought us to what we did in our reply brief. [00:14:37] Speaker 03: They never argued that this was not a pressure range or that an expert wouldn't have looked at it with you. [00:14:45] Speaker 03: was that an expert would not have been able to routinely optimize because it would have blown up because there were too many variables involved. [00:14:52] Speaker 03: So in our reply brief, Your Honor, we took on that argument, which was the sole argument that we made, but we went further. [00:15:02] Speaker 00: Am I right in thinking that that is the only, when I looked at your reply, the only place where I saw you talk about the dependent claims three and four would have been at page A4350 through 51. [00:15:16] Speaker 00: Am I correct about that? [00:15:18] Speaker 03: Yes, you are correct about that. [00:15:20] Speaker 03: And on those pages, your honor, we cite the supplemental declaration that we prepared specifically to address the institution decision language that you just highlighted. [00:15:31] Speaker 03: And that is the single most critical piece of evidence we cited pin cited that supplemental declaration to to address the board's concerns that you highlighted and what that paragraph says could not be clear. [00:15:47] Speaker 03: It says a poster and this is paragraph 136 of the [00:15:52] Speaker 03: supplemental prudome declaration that goes exactly. [00:15:55] Speaker 00: Can I ask you something? [00:15:56] Speaker 00: Is that the expert declaration that the board said was improperly incorporated by reference? [00:16:01] Speaker 03: Yes, that is exactly right. [00:16:05] Speaker 00: What on page A4350 do you think should cause me to understand the point that you're going to tell me the expert made? [00:16:15] Speaker 00: Is there something, because I read that the [00:16:19] Speaker 00: Argument me quite honestly on pages 43 50 to 51 and and I I think it's really high-level and I'm not getting much out of it So okay, I should have understood that this expert testimony what this expert testimony was that was incorporated here, right? [00:16:36] Speaker 03: so I think your honor you have to read it in conjunction with our petition and so in our petition if you start there and [00:16:42] Speaker 03: What we say in our petition, and this is at A165 to 166, which is where we first make this argument, we say claims three and four recite obvious variations of compressed gas pressure, which require nothing more than routine optimization. [00:17:01] Speaker 03: And that is well within the knowledge of APOSA prior to April 30th, 2001. [00:17:05] Speaker 03: And therefore these claims are obvious in view of the disclosures in the Carnahan, [00:17:10] Speaker 03: publication and broad and the knowledge of POSA. [00:17:12] Speaker 03: And then we cite there paragraph 117 of the Prud'homme Declaration that talks about the different pressures used in the Carnahan publication and that an expert would have looked at those. [00:17:25] Speaker 03: Then we get the language in the institution decision that you talk about. [00:17:30] Speaker 03: We get the patent owner response whose only argument is this is [00:17:34] Speaker 03: None of the arguments that we've talked about, but rather that this is going to blow up because it's too hard to do with so many variables. [00:17:40] Speaker 03: And we come back in the reply on 43 and 50, having set all of that groundwork and then under the heading routine optimization by APOSA renders obvious all remaining claims. [00:17:53] Speaker 03: We make the argument that an expert had plenty of evidence in the record and multiple correlations existed in the art [00:18:01] Speaker 03: making the claimed aerosol adhesives fully predictable to a POSA and then we cite... Can I ask you something? [00:18:08] Speaker 00: Given the teaching abroad that when you're going to use this second propellant that at a minimum you have to have a pressure of 220, if I thought that [00:18:20] Speaker 00: And that's, you know, that was my fact finding was that I read that reference that way and that I thought that when I made your proposed combination of Carnahan in view of broad, that that same limitation would apply to Carnahan, that you've got to have at least a pressure of 220 in order to be able to have it actually remove all of the material from the canister. [00:18:40] Speaker 00: Wouldn't I then maybe think that, you know, just a routine optimization, it's not, this is no longer a case where just because something discloses a range that automatically it must disclose a preferred number. [00:18:53] Speaker 00: I mean, given broad statement that at a minimum the pressure has to be 220. [00:18:58] Speaker 00: So, Your Honor, I think that takes that out of that category of cases you're talking about where you're just talking about how a range discloses a specific amount. [00:19:08] Speaker 03: Yes, your honor. [00:19:09] Speaker 03: I think it would. [00:19:10] Speaker 03: But the problem with that, your honor, is any such finding would lack substantial evidence because our expert again, if you actually read if the board had read paragraph 136, the key paragraph that goes to this exact point, there's no countervailing evidence. [00:19:27] Speaker 03: The other side never argues. [00:19:29] Speaker 03: that an expert couldn't look to Carnahan or wouldn't look to Carnahan because Broad had a 220. [00:19:36] Speaker 03: They piled a 65-page patent owner response. [00:19:38] Speaker 03: They don't make the argument. [00:19:40] Speaker 03: So the evidence, the only evidence on this point is from our expert who unequivocally says that you would have done so. [00:19:48] Speaker 04: What's the record size of paragraph 136? [00:19:52] Speaker 03: It's appendix 4795. [00:19:54] Speaker 03: Okay. [00:19:54] Speaker 03: And here's what it says. [00:19:59] Speaker 03: A POSA would target a viscosity of 1,000 centipoise, which is the viscosity disclosed by the Carnahan publication, which is also exactly in the middle of the range disclosed in broad. [00:20:10] Speaker 03: From there, the POSA would select three levels of pressure from the ranges disclosed in the Carnahan publication, 120 to 300 psi, and the ranges disclosed in broad, 220 to 250 psi, and pick a low, medium, and high point. [00:20:26] Speaker 03: For example, the three pressures could be 120, [00:20:29] Speaker 03: 235 and 350 and then it keeps going on. [00:20:32] Speaker 03: I won't read the whole thing, but it definitively addresses this point. [00:20:38] Speaker 03: And your honor, look, if the PTAB had looked at this and said, look, we weigh this and we look at their expert and we think this experiment would blow up or wouldn't work after resolving this battle of the experts, your honor, we'd have a very different appeal here. [00:20:52] Speaker 03: And maybe we wouldn't have a leg to stand on at that point under a substantial evidence review, but this course cases are clear. [00:21:02] Speaker 03: The PTAB can't ignore on-point expert evidence and all we're asking for... This is Judge Stoll. [00:21:10] Speaker 00: I just wanted to ask why you said that there was no substantial evidence to support, I guess, the teaching away or just that [00:21:20] Speaker 00: the point in broad, but why doesn't the reference itself provide substantial evidence? [00:21:25] Speaker 00: It says explicitly that when you use this particular kind of a propellant, you're going to want to have a pressure of 220 or more in order to be able to remove all the stuff from the canister. [00:21:38] Speaker 03: Sure. [00:21:38] Speaker 03: So I guess my response there would be that the board, if it wants to just rely on the face of the publication after considering our expert evidence, [00:21:49] Speaker 03: then maybe it can make a case as to why its expertise, even though the other side didn't disagree with us, you know, trumps that and maybe that withstands substantial evidence review. [00:22:00] Speaker 03: But they at least have to consider the posa's view, which is on point and clearly articulated that no, a posa would not have read broad. [00:22:11] Speaker 03: You would have looked to, despite that language, you would have looked to Carnahan. [00:22:14] Speaker 03: Any person of ordinary skill in the art would have realized [00:22:18] Speaker 03: that when you're taking one large-scale canister system, which is Carnahan, and combining it with another large-scale canister system that is broad, it should work. [00:22:28] Speaker 03: And in fact, of course, the board found all the other independent claims using the same combination of Carnahan and broad to be obvious. [00:22:36] Speaker 00: So it really, a lot of this is going to come down to that incorporation by reference point and whether the board cares or views this discretion. [00:22:45] Speaker 03: I think you're right, Your Honor. [00:22:47] Speaker 03: I fully agree with that. [00:22:48] Speaker 03: And Your Honor, look, the Board has a lot of case law on incorporation by reference. [00:22:55] Speaker 03: None of it is anywhere close to this. [00:22:57] Speaker 03: When they find something to be improper incorporation by reference, [00:23:02] Speaker 03: it's because a party has just cited generally 150 page declaration without pointing the court to the specific paragraph or has only made all the arguments in the declaration, not in the brief here. [00:23:17] Speaker 03: This is miles apart from that. [00:23:19] Speaker 03: We made the argument, we cited, pin cited the exact paragraphs where this testimony is. [00:23:26] Speaker 03: And there is a lot of board precedent that says in this circumstance, [00:23:31] Speaker 03: That is not improper incorporation by reference. [00:23:33] Speaker 03: In fact, that's how you litigate these cases because you have limited pages, you have 28 claims, so you make your argument and then you pin cite the relevant expert. [00:23:43] Speaker 03: You don't have to quote verbatim the entire expert's testimony, particularly on points that the other side never objected to or raised a counter argument. [00:23:54] Speaker 03: I would remind that the only argument the other side made in their Patanona response with respect to this combination was not that you wouldn't look to the Carnahan pressures, but rather that this experiment that Dr. Perdom lays out in his declaration would blow up. [00:24:14] Speaker 03: And again, Your Honor, if the board wants to, on remand, wants to adopt their argument after weighing the two expert declarations, then we have a very different appeal. [00:24:25] Speaker 03: Again, all we're asking is for you to reverse that finding that the expert testimony was not properly presented to the PTAB so that they look at it. [00:24:34] Speaker 02: What about Mr. Shaw? [00:24:36] Speaker 02: This is Judge Prost. [00:24:38] Speaker 02: Just a little more meat on the bones in terms of what you envision for a remand. [00:24:42] Speaker 02: That's point one. [00:24:44] Speaker 02: What about the other arguments you've made with respect to the board's conclusion on range being wrong, that it's not a range? [00:24:51] Speaker 02: What about the teaching way that appeared in the first opinion without an analysis? [00:24:58] Speaker 02: Do we need to go beyond what you suggested about the declaration in your view? [00:25:03] Speaker 03: Certainly, the court could stop there and say all of these findings you have to reassess in light of the actual on-point expert evidence that 3M presented. [00:25:13] Speaker 03: I would encourage the court to go one step further on the range point because, again, both sides' experts agree on that point. [00:25:22] Speaker 03: There's just no way to read their expert's testimony, which agrees exactly with what our expert says. [00:25:29] Speaker 03: I've already read you what our expert said. [00:25:32] Speaker 03: appears at appendix 4171 paragraph 35. [00:25:36] Speaker 03: And in talking about the pressure values, he says, quote, and it goes from 4171 to 4172, and the last sentence is, quote, APOSA understands that any pressure value between these ranges could be used. [00:25:52] Speaker 03: So, I mean, their expert is on point saying that the 120 and 300 PSI values [00:25:58] Speaker 03: uh... in carnahan uh... should be read as a range there's just no other way to read it the board and i understand the book why the board missed that because the other side didn't argue it but i think we have your point uh... well we'll have a little time i think that you are going to have to ask one more of course pre-prepare in terms of the list of the about first addressing the question on the expert declaration was properly rejected in the rain what about the key to why you should [00:26:28] Speaker 03: I'm sorry, you broke up on me, Your Honor. [00:26:34] Speaker 02: Judge Clevenger, you're breaking up a little on your phone. [00:26:38] Speaker 02: Yes, better, I think. [00:26:46] Speaker 02: No, it's not better. [00:26:48] Speaker 02: Keep trying. [00:26:51] Speaker 02: I think. [00:26:59] Speaker 02: Uh, we're not hearing you Judge Clevenger. [00:27:02] Speaker 02: Okay. [00:27:09] Speaker 02: You're kind of breaking up a little. [00:27:11] Speaker 02: Now we can, I just heard what you just said. [00:27:16] Speaker 02: Can you hear me at all? [00:27:17] Speaker 04: Well, my question was whether we need to address the teach away issue, the board's way from reducing, uh, from two or [00:27:30] Speaker 03: Uh, if I understood the question is, uh, when you, if you were to remand this to reassess in light of our expert evidence, would you also, in addition to the range issue, uh, that your honors just asked me about, should the court also address the teaching away issue? [00:27:45] Speaker 03: Uh, to me, your honor, yes, I think to the extent the court should say, uh, look, this finding that you've made about teaching away and broad, uh, you need to actually assess that in light of [00:27:57] Speaker 03: the expert testimony that on point says no, you would look to Carnahan for these pressures, given that there is no countervailing expert testimony that disagrees with that. [00:28:10] Speaker 03: So I guess there's two things the court could do, which obviously would be within your discretion. [00:28:15] Speaker 03: One is to just say, look, there's only one piece of evidence on this, and so the teachaway finding doesn't hold water. [00:28:27] Speaker 03: I guess the more modest holding would be we vacate and remand for you to reassess all of these findings that you made in your rehearing decision in light of the expert testimony. [00:28:38] Speaker 02: Okay. [00:28:38] Speaker 02: If my colleagues have no further questions, I think we'll move on. [00:28:44] Speaker 02: Mr. Greenspoon? [00:28:47] Speaker 05: Yes. [00:28:47] Speaker 05: Thank you, Judge Prost. [00:28:48] Speaker 05: And good morning, Your Honors. [00:28:49] Speaker 05: May it please the Court. [00:28:51] Speaker 05: I'd like to start with [00:28:52] Speaker 05: One of the items of information that we just got from Mr. Shaw, which is that the only thing that they're requesting on appeal is, I think he said, to vacate and remand for further proceedings. [00:29:04] Speaker 05: But if you look at their opening brief and the conclusion, you know, Federal Rule of Appeal Procedure 28 requires you to state with particularity the release you're requesting, it requested reversal. [00:29:16] Speaker 05: The remand and vacate only came into their reply brief as a request [00:29:21] Speaker 05: I think as a result of our pointing out in a footnote at the very end of our brief that they never requested a remand. [00:29:27] Speaker 02: So that's just my point. [00:29:28] Speaker 02: Okay. [00:29:29] Speaker 02: Well, I take your point. [00:29:30] Speaker 02: This is Judge Prost. [00:29:32] Speaker 02: But what I'd like you to do, if you could, to begin by where Mr. Shaw began, which is the board's...his argument that the board erred by excluding that testimony based on its rule. [00:29:46] Speaker 01: I apologize to interrupt. [00:29:48] Speaker 01: It appears Attorney Shaw has dropped from the line, so I will need to... [00:29:51] Speaker 03: No, I'm still here. [00:29:53] Speaker 01: I apologize. [00:29:59] Speaker 01: We can continue. [00:30:00] Speaker 02: Is Judge Stoll and Judge Clevenger still here? [00:30:03] Speaker 02: I'm here as well. [00:30:06] Speaker 02: All right. [00:30:07] Speaker 02: So, Mr. Greenspoon, I don't know if I finished my question, but essentially, in your... Mr. Scharf pointed us to where he raised that argument in his blue brief. [00:30:17] Speaker 02: Did you respond in red? [00:30:20] Speaker 05: Your Honor, we certainly responded that the board acted properly in all of its decisions on rehearing. [00:30:27] Speaker 05: And we cited particularly the rule of the board that it was using, Rule 42.6. [00:30:32] Speaker 02: Do you want to tell me where that is? [00:30:35] Speaker 02: Just give me a page on the red brief so it will be easier to follow along. [00:30:40] Speaker 05: Yes, Your Honor, if you give me just one moment. [00:30:41] Speaker 05: It's where we are recapping the history of the case. [00:30:46] Speaker 02: But that's in the background. [00:30:47] Speaker 02: I saw that and that's before you get to any of the arguments. [00:30:52] Speaker 02: That's just saying what the board did, right? [00:30:54] Speaker 05: That's right. [00:30:54] Speaker 05: So on pages 18 to 19, we recap the history of the case and we recount that the board said this argument, quote, was not advanced in the briefing and is referenced only through citation to the expert reports. [00:31:07] Speaker 05: And Your Honor, this is all in the context of a case where [00:31:10] Speaker 02: No, but just let me finish the question, though. [00:31:14] Speaker 02: That's in your just reciting what the board said. [00:31:18] Speaker 02: In your argument section, did you make any argument responding to the arguments made in blue? [00:31:25] Speaker 05: Candidly, I don't think we responded to that exact point, because what we were doing with this court is we're explaining the substantial evidence in the record supporting the board's decision. [00:31:37] Speaker 05: So on the procedural point, we may or I can't recall offhand a place in the red brief where we said, you know, Mr. Shaw is incorrect that the incorporation by reference is an utterly proper outcome on rehearing. [00:31:52] Speaker 05: But recall, the board does have tremendous discretion in applying its own rules. [00:31:57] Speaker 05: And I have heard today that Mr. Shaw is pointing out that perhaps there are cases where the board [00:32:02] Speaker 05: acting within its discretion permitted some sort of incorporation by reference of the nature that Mr. Shaw is talking about. [00:32:08] Speaker 05: The board has permission and discretion to offer grace, if you will, to a party who hasn't followed its rules. [00:32:16] Speaker 05: But that doesn't mean that there's any error when the board actually enforces its rules. [00:32:21] Speaker 05: So, you know, in that context, Your Honors, the statute and the rules all put the burden on the petitioner to include in the petition [00:32:30] Speaker 05: a detailed explanation of the significance of the evidence, including material facts. [00:32:35] Speaker 05: That's actually a quote from Rule 42.22. [00:32:40] Speaker 05: General notions of issue preservation require the same thing. [00:32:43] Speaker 05: So where you see the petition, that's at pages 165 to 166 of the appendix. [00:32:50] Speaker 05: That has the complete petition argument against claims three and four. [00:32:54] Speaker 05: And one thing I heard Mr. Shaw say is that there was only one argument and it had to do with the experiments blowing up. [00:32:59] Speaker 05: in our patent owner response. [00:33:00] Speaker 05: That's not correct. [00:33:02] Speaker 05: If I can refer your honors to pages 2022 to 2023 of the record, that is the patent owner response where we raise that exceptions can exist to the routine optimization paradigm where the parameter optimized was not recognized to be result effective. [00:33:20] Speaker 05: And then we say on page 38 bridging to 39 of the patent owner response, it was 3M's burden to prove obviousness [00:33:28] Speaker 05: yet its petition is silent regarding whether or to what extent the variables in the ground two, that's what we're talking about at the time, the ground two challenge claims are recognized to be result effective. [00:33:41] Speaker 05: So in other words, we pointed out that, you know, below that this is a case where the petitioner and now the appellant simply didn't follow the board rules to provide sufficient information to the board to meet a preponderance of the evidence burden. [00:33:56] Speaker 02: So... Am I misreading, Red, that you were really offering alternative rationales for the board's conclusion rather than embracing the board's principal conclusion, as Judge Clevinger pointed out, that they didn't bear their burden on the dual repellent? [00:34:17] Speaker 05: That's not exactly right, Your Honor, and I can point you to the board's conclusion on page 35. [00:34:23] Speaker 05: And I would somewhat disagree with, I think, a characterization from Judge Clevenger as to whether there is any finding on page 35 of the record. [00:34:33] Speaker 05: There is a finding. [00:34:34] Speaker 05: And it's made using a rhetorical device that I call damning with faint praise. [00:34:40] Speaker 05: We all know this rhetorical device. [00:34:42] Speaker 05: And that's where the board has precisely said, while we agree that there may be, and may is emphasized, [00:34:52] Speaker 05: some evidence of record to support petitioner's position that the amount of pressure in the canister is a result effective variable subject to optimization, critically absent from petitioner's arguments is why the ordinarily skilled artisan would have made the adjustment in the first instance. [00:35:08] Speaker 05: And believe me, I know damning with faint praise as a rhetorical device because I lost the fourth circuit appeal [00:35:13] Speaker 05: in a presidential decision where... Well, okay. [00:35:16] Speaker 02: There's a lot of paper here and I appreciate what you're saying, but going back to what Judge Clevenger raised, on page 91 of the... This is the rehearing. [00:35:23] Speaker 05: Yes. [00:35:25] Speaker 02: I think if we had to capture in one sentence what the board's conclusion was here, would it be fair to say it's the sentence that says petitioner failed to present sufficient argument or identify evidence demonstrating it would have been obvious to use the lower pressures, blah, blah, blah, in a dual propellant system? [00:35:45] Speaker 02: Would you characterize that as the principal finding and basis for conclusion here? [00:35:49] Speaker 05: I would characterize it as one of two principal findings. [00:35:52] Speaker 05: The first principal finding [00:35:54] Speaker 05: was that there's insufficient proof to establish a result effective variable in pressurization in this claimed contract. [00:36:00] Speaker 02: Is there anything in the rehearing petition that addresses that or are you just having to, you're just going back to page 35 of the initial, of the first written restriction? [00:36:13] Speaker 05: Yeah, exactly, Your Honor. [00:36:14] Speaker 05: I'm going to page 35 for that conclusion and then I'm going to page 91 for the second principal finding which Your Honor just read into the record. [00:36:23] Speaker 05: Okay. [00:36:25] Speaker 05: So, and let me recount, if I may, your honors, what's missing from pages 165 to 166 of the record. [00:36:32] Speaker 05: That's the petition. [00:36:34] Speaker 05: First, there's no discussion of prior art ranges and whether they overlap. [00:36:38] Speaker 05: That's an important part of a routine optimization case. [00:36:41] Speaker 05: There's no discussion or distinguishing of Broad's teaching away [00:36:45] Speaker 05: from pressures below 220 PSI. [00:36:47] Speaker 05: There's no discussion, even the terminology, of result-effective variables, whether pressurization qualifies in a context involving canister-based spray adhesive. [00:36:57] Speaker 05: There's no discussion in the petition, pages 165 to 166 of the record, whether Carnahan's point settings for pressure at 120 and 300 even count. [00:37:08] Speaker 05: And this is an important point, since as 3M repeatedly pointed out for other purposes during the proceedings, [00:37:14] Speaker 05: Carnahan is a single propellant reference, and this goes to that second principle point on page 91 that the board actually caught, which is... Mr. Greenspan, that is true. [00:37:26] Speaker 04: Why didn't the board just say that much and say, Katriam, I'm terribly sorry, but you haven't presented a theory? [00:37:33] Speaker 04: We know from reading both the initial decision and the reconsideration decision that the board was aware of [00:37:40] Speaker 04: prior ranges was aware of the question of whether you could reduce route under 220. [00:37:46] Speaker 04: And we knew that they were talking about matching optimization. [00:37:52] Speaker 04: So why would the board have talked about that if it wasn't even in the petition? [00:37:56] Speaker 05: Well, I think the board had, if you will, an embarrassment of riches for rejecting this petition. [00:38:00] Speaker 05: But the board did on page 93 cite to the statute a quotation from one of this court's cases, 35 USC section 312A3, [00:38:10] Speaker 05: And the parents' article is requiring interparties review petitions to identify with particularity the evidence that supports the grounds for the challenge to each claim. [00:38:20] Speaker 05: So I think the board was aware of the, as argued in the patent owner response, the board was aware of the gaps in the petition. [00:38:28] Speaker 05: And again, I think if it, as a matter of grace, the board descended to the level that Mr. Shaw is at and on, you know, in particular discrete examples took evidence [00:38:40] Speaker 05: and considered evidence beyond what was in the briefing argument. [00:38:44] Speaker 05: Well, the board is allowed to do that. [00:38:46] Speaker 05: But the board certainly cannot be faulted for applying and enforcing its own rules and holding that you've got to have some substance. [00:38:52] Speaker 05: You've got to have, I think I heard, meat on the bone in one of the questions today. [00:38:56] Speaker 05: And if you look at the petition, there's no meat on the bone. [00:38:59] Speaker 05: And before I forget, what about the reply? [00:39:02] Speaker 05: I think I heard Judge Stoll talk a great deal about that. [00:39:05] Speaker 05: And that's page 4350 to 4351 of the record. [00:39:09] Speaker 05: And again, let me just [00:39:11] Speaker 05: If I may, rattle off, not rattle off, but just list for the panel what's missing in those pages of the reply. [00:39:17] Speaker 05: There's no discussion of Carnahan's 120 PSI disclosure. [00:39:21] Speaker 05: There's no discussion of whether that's part of a range. [00:39:24] Speaker 05: There's no discussion of whether Carnahan discloses the general conditions of the claim, which is important because under the in-ray ALR precedent that we're operating under, before you can even look at a reference and its recorded range, [00:39:37] Speaker 05: You have to draw a conclusion or make it, you know, the challenger has to make the argument that that reference shows the quote-unquote general conditions of the claim. [00:39:47] Speaker 05: There's no disclosure on those pages whether pressurization is a result-effective variable. [00:39:52] Speaker 05: And there's no, again, no distinguishment of broad teaching away of pressurizations below 220 PSI. [00:39:58] Speaker 05: So the board got it right, Your Honors. [00:40:00] Speaker 05: So let's, you know, what we tried to do in the red brief is give comfort to this panel [00:40:06] Speaker 05: that even accepting the invitation to dive into the deepest details of the record, there's no wrong result here. [00:40:14] Speaker 05: We don't have to do that because obviously this is substantial evidence review. [00:40:18] Speaker 05: But let's take a look at exactly... Well, let me ask you. [00:40:21] Speaker 02: So that's, I guess, you're kind of acknowledging that you were pressing bases for our affirmance that weren't, that were different than what the board said. [00:40:33] Speaker 02: And don't you think that would present a chennery problem, as your friend on the other side, I think, suggested? [00:40:39] Speaker 05: It does not. [00:40:40] Speaker 05: In fact, it's fully within our way of addressing the chennery argument because [00:40:44] Speaker 05: Under Chenery, this court has recognized exceptions to the Chenery argument, including, and I'll have a case to cite to your honors, including that if there's futility of any remand, if a remand would be futile at the administrative agency, then there's no Chenery problem in demonstrating that a remand would be futile. [00:41:06] Speaker 05: And that's the case called Fleshman v. West, 138, F3rd, 1429. [00:41:13] Speaker 05: So at the very least, [00:41:14] Speaker 05: One could look at all of our arguments going deep into the merits as an explanation for this panel of why any remand consistent with chainery, even though it was waived from the principal brief on appeal, any remand under chainery would be futile. [00:41:30] Speaker 05: And also, quite obviously, the elephant in the room is the remand outcome supports the same conclusion. [00:41:37] Speaker 05: The remand outcome was, in effect, their remand in a sense. [00:41:42] Speaker 05: and it shows where the board's thinking is at in case there ever were remands. [00:41:46] Speaker 02: Mr. Greenstone, I'm sorry. [00:41:48] Speaker 02: This is Judge Crouse. [00:41:49] Speaker 02: I interrupted your first argument, your first basis for arguing, and now I'm going back to it because I wanted to clarify it, which is, were you suggesting that we don't have the authority to remand it, this case, in light of the other side in blue, at least, asking exclusively for a reversal? [00:42:11] Speaker 05: uh... i believe that you would have the authority your honor but it would be one of the rarely granted exceptions to waiver and forfeiture and i think there's a there's a whole uh... set of factors this court often considers when even thinking about waiving and applicants considered and thoughtful strategic decision not to ask for something uh... so uh... i would agree there's power by the court to remand despite the waiver and forfeiture in the opening brief but i don't think that [00:42:39] Speaker 05: the rigorous standards for excusing a forfeiture apply in this case, nor has it been argued. [00:42:50] Speaker 05: So, Your Honors, the Court affirms the Board when the Board draws a conclusion that it refuses to play archaeologist with the record. [00:43:02] Speaker 05: There is at least one case I can cite where play archaeologist with the record is exactly the quotation [00:43:08] Speaker 05: from the board decision that got repeated on appeal in this court. [00:43:12] Speaker 05: And this court affirmed the board's enforcement of its own rules to prevent the misuse of the incorporation by reference doctrine. [00:43:21] Speaker 05: So the board on rehearing told 3M exactly what was wrong with its case. [00:43:25] Speaker 05: 3M violated board rules with its attempted incorporation by reference. [00:43:29] Speaker 05: And your honors, I can't overemphasize this. [00:43:37] Speaker 05: was left with just conclusory arguments unbacked by any serious advocacy or evidence. [00:43:43] Speaker 05: And at appendix pages 92 to 93, that's where the board told 3M that it was being asked to play archaeologist with the record, and the board correctly refused to do that. [00:43:52] Speaker 05: So, Your Honors, this court should affirm. [00:43:55] Speaker 05: Again, I'm happy to get into any technology issue. [00:43:59] Speaker 05: I could talk about rheology or solids or what have you, but I think the record is very clear that this case should be affirmed. [00:44:07] Speaker 02: Thank you. [00:44:08] Speaker 02: Thank you. [00:44:09] Speaker 02: Mr. Shah will restore three minutes of rebuttal if you need it. [00:44:15] Speaker 03: Thank you, Your Honor. [00:44:15] Speaker 03: Just three points on my end. [00:44:18] Speaker 03: First, this notion of waiver. [00:44:19] Speaker 03: I have never heard of a waiver being applied to the relief when you ask for relief. [00:44:24] Speaker 03: Obviously, vacant or in remand is a subset of a reversal when you ask for that relief. [00:44:29] Speaker 03: Courts have full discretion whether to go all the way, part of the way, less of the way. [00:44:35] Speaker 03: I have never encountered that in my entire career as an appellate lawyer, that that would constitute a waiver. [00:44:40] Speaker 03: The thrust of our brief was obviously on this point, was they didn't consider the evidence. [00:44:44] Speaker 03: And so, of course, the most common [00:44:46] Speaker 03: a remedy is a vacant and remand. [00:44:48] Speaker 03: That doesn't mean you don't have the authority to go further and decide these issues and outright reverse. [00:44:54] Speaker 03: I just meant that oral argument. [00:44:56] Speaker 03: I wanted to give you what I thought was the court's usual practice. [00:45:00] Speaker 03: And so I just don't think there's anything there. [00:45:02] Speaker 03: They never cite it. [00:45:03] Speaker 03: They don't cite, nor can they cite any case that suggests when you ask for a reversal, that somehow constitutes a waiver of the lesser included remedy of vacant or in remand. [00:45:13] Speaker 03: On the second point, the chennery point, Your Honor, [00:45:16] Speaker 03: The futility exception is incredibly narrow. [00:45:20] Speaker 03: The other side has basically argued that these are alternative arguments. [00:45:24] Speaker 03: It's now, I think, at the end of the day, there isn't really any doubt about that. [00:45:28] Speaker 03: It's best effort to try to ground the alternative rationales about result-effective variable and that the experiments would blow up is A35, which is the final written decision, which is talking about different prior art. [00:45:42] Speaker 03: And in that, that wasn't even a finding. [00:45:45] Speaker 03: It was simply recapping their argument. [00:45:47] Speaker 03: There's nothing that their three arguments, they raised three arguments in the red brief. [00:45:54] Speaker 03: None of them defend the board's actual rationale that we somehow didn't properly cite the on point expert evidence. [00:46:01] Speaker 03: They're citing alternative grounds that this court simply can't reach those under chennery. [00:46:06] Speaker 03: And quite frankly, it should be the PTAB job in the first instance. [00:46:12] Speaker 03: to grapple with those alternative arguments. [00:46:14] Speaker 03: Maybe they'll agree with the other side, maybe they won't, but that's the PTAB job to do in the first instance. [00:46:21] Speaker 03: And the third and last point I would like to make is that this does not require the PTAB to play archaeologist with the record. [00:46:31] Speaker 03: It doesn't require a deep dive in the record. [00:46:33] Speaker 03: All it requires is the PTAB to look [00:46:35] Speaker 03: at the pin-cited declaration that has the most on-point expert testimony on claims three and four. [00:46:44] Speaker 03: If they read those pin-cited paragraphs, that's all that we're asking, and then make it do it. [00:46:49] Speaker 03: This is not an incorporation by reference case, which the PTAB has made clear is when you just cite a declaration and try to incorporate it generally as a whole. [00:46:58] Speaker 03: This is just normal litigation advocacy. [00:47:00] Speaker 03: You make a point, and then you cite the evidence that corresponds [00:47:05] Speaker 03: To that point, they have not cited a single case where anything like this has been considered improper incorporation by reference. [00:47:14] Speaker 03: The Expedia case and other cases make clear from the PTAB that this is well within that framework. [00:47:24] Speaker 02: Thank you. [00:47:25] Speaker 02: We thank both sides and the case is submitted. [00:47:28] Speaker 03: Thank you, Your Honor.