[00:00:00] Speaker 03:
We'll hear argument next in number 19-2410, L'Oreal USA, Inc.

[00:00:05] Speaker 03:
versus Liquide, Inc., Ms.

[00:00:07] Speaker 03:
O'Brien.

[00:00:09] Speaker 02:
Good morning, Your Honors, and may I please support Michelle O'Brien on behalf of L'Oreal USA, Inc.

[00:00:16] Speaker 02:
The PTAB here erred in two ways in its implicit construction of claims 14 to 16, 18, and 24 to 28.

[00:00:25] Speaker 02:
First, the PTABs have found that the wearing clauses in these claims are not entitled to consulate.

[00:00:31] Speaker 02:
And second, the board should have found that the claim reductions and breakage were necessarily present in practicing the full scope of the claims.

[00:00:40] Speaker 02:
Instead, by finding that some hypothetical amounts of folic acid in the range recited in claim one may not achieve the claim reduction, the board's construction amounts to a finding that those portions of the claims are inoperative.

[00:00:54] Speaker 02:
This cannot have been a proper construction, as this court made clear in Alcon, the app itself.

[00:01:01] Speaker 02:
Regarding the first error, Claim 1 recites simply a method of bleaching hair using a conventional bleaching formulation with malic acid.

[00:01:09] Speaker 02:
Claims 14 to 16, 18, and 24 to 28 recite the intended results of practicing that method as liquid admitted in a patented preliminary response.

[00:01:19] Speaker 02:
Ms.

[00:01:19] Speaker 00:
O'Brien, this is Judge Toronto.

[00:01:21] Speaker 00:
Where in your petition did you

[00:01:24] Speaker 00:
make this argument that these breakage limitations should not be given any patentable weight?

[00:01:37] Speaker 02:
So while we didn't use the language per se, we did point at Appendix 318, for example, that the

[00:01:51] Speaker 02:
that the 954 patent doesn't give any information regarding how the recited reductions are allegedly achieved.

[00:02:02] Speaker 02:
And as such, we made the argument while not using the no manipulative steps or manipulative difference language,

[00:02:12] Speaker 02:
We did, in essence, argue that the patent does not describe any manipulative deference in order to achieve the claim result.

[00:02:23] Speaker 00:
But there's no discussion there of the line of authority with Bristol-Lyres and the other cases that would need to be considered to decide whether this falls within to that category, is there?

[00:02:42] Speaker 02:
Not in the petition, Your Honor.

[00:02:44] Speaker 02:
We did elaborate on this position at the hearing, and we cited to the cow and copaxone cases, as well as King Pharmaceuticals at that time.

[00:02:59] Speaker 00:
And did the board in its decision address this issue?

[00:03:06] Speaker 02:
They did, Your Honor.

[00:03:07] Speaker 02:
Where's that?

[00:03:10] Speaker 02:
That is, let me find that.

[00:03:14] Speaker 02:
I apologize.

[00:03:15] Speaker 02:
I have it here.

[00:03:19] Speaker 02:
It is at appendix 83 to 84 in a footnote.

[00:03:28] Speaker 02:
Footnote 36.

[00:03:32] Speaker 02:
The problem with the board's analysis of the no patentable weight

[00:03:41] Speaker 02:
position that we discussed at the trial is that they conflated it to some extent with the finding of no inherency as well.

[00:03:57] Speaker 02:
And while these two issues certainly are connected and do have some overlap, they're not necessarily the same.

[00:04:07] Speaker 02:
And I believe that was erroneous for the board

[00:04:11] Speaker 02:
to conflate the issues without addressing the patentable weight of the wearing clause.

[00:04:20] Speaker 02:
There are instances where a wearing clause may be given weight, but this is not one of them.

[00:04:27] Speaker 02:
First, the language here was not material to patentability, and Liquid has not argued that it was and cannot argue, since neither the applicant nor the examiner even mentioned it during prosecution.

[00:04:41] Speaker 02:
Allergan sales, which is relied on by Liquid, is distinguishable for this reason as the court's basis for finding that the wearing causes there were entitled to patentable weight was because the record showed that both the applicant and the examiner believed those causes were material to patentability and they were in fact the basis for allowance of the claims.

[00:05:01] Speaker 02:
Liquid did not respond to our argument that the wearing causes in the breakage claims are not material to patentability and has not argued

[00:05:09] Speaker 02:
anywhere in the record that they are.

[00:05:13] Speaker 02:
Second, the wearing clauses here do not result in or require any manipulative difference in the steps of the claims.

[00:05:20] Speaker 02:
The steps of bleaching the hair are the same regardless of whether any reduction... So let me just ask you this.

[00:05:25] Speaker 00:
I guess why wouldn't the straightforward reading of these breakage claims be

[00:05:34] Speaker 00:
You read down elements of the claim and one of them says, here's a range of 0.1% to 50% of the maleic acid and wherein you get a certain result.

[00:05:46] Speaker 00:
And what that tells you is you had better choose within that range of maleic acid and any of the other conditions previously mentioned, the ones that produce that result.

[00:05:59] Speaker 00:
It is actually narrowing.

[00:06:00] Speaker 00:
It's not an assertion.

[00:06:02] Speaker 00:
that the entirety of the pre-wherein clause ranges produce that result, it is a narrowing.

[00:06:09] Speaker 00:
Now, one might have a non-enablement objection to that, though this PGR doesn't include a non-enablement objection, but why isn't that the straightforward meaning of this claim?

[00:06:24] Speaker 02:
This court's jurisprudence, Your Honor, has held for 70 years that

[00:06:31] Speaker 02:
simply reciting an intended effect is not patentable and will not be given patentable weight.

[00:06:39] Speaker 00:
Right, but I guess another way of saying what I just said is this is not a mere intended effect.

[00:06:44] Speaker 00:
It's a demand for an effect and it therefore limits the choices the other claim elements give you to some subset that produced that effect.

[00:06:57] Speaker 02:
Well, and Liquid made the argument, and it's read brief, that other unclaimed variables were required in order to achieve the effect.

[00:07:08] Speaker 02:
However, as an initial matter, Liquid waived the argument because it was not raised below.

[00:07:13] Speaker 02:
But the board only pointed to the amount of maleic acid in the final written decision as being relevant to whether or not

[00:07:25] Speaker 02:
the reduction in breakage was achieved.

[00:07:28] Speaker 02:
However, there's nothing in the claims, specification, or record at all linking the amount of malic acid, the time the mixture is left on the hair, or any other variable to any particular amount of reduced breakage.

[00:07:41] Speaker 02:
If different amounts of malic acid or other variables are required to achieve these reductions in breakage, liquids could have and should have disclosed that relationship in the specification and claims.

[00:07:54] Speaker 02:
The fact that they didn't

[00:07:55] Speaker 02:
but claimed those reductions in breakage with the entire range of .1 to 50% malic acid confirms that the result is inherent across the entire range regardless of any unclaimed variable.

[00:08:12] Speaker 00:
Can I just, I realize you just, I guess, sort of invited me to shift to the inherency argument.

[00:08:19] Speaker 00:
I was a little confused about what your inherency argument was.

[00:08:23] Speaker 00:
And I guess I thought there were two possibilities.

[00:08:26] Speaker 00:
The one that I've heard this morning and the one that I thought I was getting from most of what I previously read was that the property, the 5%, 10%, 20% breakage reduction, has to be, and you think the patent asserts to be, inherent in the entirety of the

[00:08:52] Speaker 00:
material covered by all the words that come before wherein, so that in particular in the entirety of the maleic acid range.

[00:09:02] Speaker 00:
Then, at least as the proceedings evolved, I think, in the board, when the board granted additional surreply and so on, the focus seemed to have shifted to whether the particular combination of, is it

[00:09:20] Speaker 00:
Pratt and Tanabe, is that what it is?

[00:09:24] Speaker 00:
Whether the prior art combination, whether their teachings had these breakage reductions inherent, which is a much more limited proposition.

[00:09:35] Speaker 00:
Can you illuminate which of those two arguments you made to the board, are making now, et cetera?

[00:09:43] Speaker 02:
So the argument is that maleic acid

[00:09:50] Speaker 02:
according to the 954 patent has the inherent property of reducing breakage in the amounts recited.

[00:09:58] Speaker 02:
If I'm a COSA and I look at claim 28, which recites 0.1 to 50% achieves at least 50% reduction in breakage, and I look at the specifications to figure out how to achieve that reduction in breakage, the only information I have is in column 18,

[00:10:20] Speaker 02:
at line 27 to 30 telling me that if the active agent is present, I can achieve the reduction in breakage of 50% or higher.

[00:10:29] Speaker 02:
It doesn't tell me different amounts, different times, or any other variable.

[00:10:33] Speaker 02:
That tells me as opposed to that it's inherent in the presence of malic acid in the claimed range.

[00:10:40] Speaker 02:
In addition,

[00:10:43] Speaker 02:
We had evidence by virtue of Dr. Wickett's testimony saying that the maleic acid itself is what achieved the reduction in breakage across the full range of the claims.

[00:10:59] Speaker 02:
Now, in response to an exhibit that liquid submitted, which demonstrated that adding a conditioner to a bleach could reduce

[00:11:10] Speaker 02:
damage by greater than 50%, Dr. Wickett further testified that in addition to achieving greater than 50% just based on the presence of the baleic acid, the evidence in exhibit 2028 which teaches that a conditioner also gives you greater than 50% reduction in damage

[00:11:35] Speaker 02:
And Dr. Wicket testified that Pratt, which also teaches the same mechanism as exhibit 2028, i.e.

[00:11:42] Speaker 02:
increasing the co-mobility, that the combination of Tanabe with malic acid, which would necessarily achieve the reduction in breakage, and then the fact that Tanabe is a conditioner and Pratt teaches the conditioner gives you

[00:12:02] Speaker 02:
the increased permeability that Exhibit 2028 does.

[00:12:06] Speaker 02:
So Dr. Wickett's testimony was that supplementing his previous testimony that the maleic acid itself would give you the inherency of the claimed range that Exhibit 2028 demonstrated it for that additional reason.

[00:12:24] Speaker 03:
All right.

[00:12:24] Speaker 03:
Unless there are further questions, we'll hear from Mr. Weisberg first.

[00:12:32] Speaker 04:
May it please the court, Stanford Weisburs for the appellee liquid.

[00:12:36] Speaker 04:
I'd like to start just to get the record straight on non-enablement.

[00:12:40] Speaker 04:
This is not a ground that was listed in the petition as a ground for the challenge.

[00:12:44] Speaker 04:
That's at appendix 18.

[00:12:46] Speaker 04:
They listed only obviousness grounds, not lack of enablement.

[00:12:50] Speaker 04:
And therefore, that is the real waiver in this case.

[00:12:53] Speaker 04:
In terms of inherency,

[00:12:55] Speaker 04:
and material to patentability.

[00:12:57] Speaker 04:
Let me address those.

[00:12:58] Speaker 04:
And I do think that the case law is kind of interchangeable to some extent.

[00:13:03] Speaker 04:
I think the most important cases that we've cited for the forum.

[00:13:06] Speaker 00:
Can I just double check something?

[00:13:07] Speaker 00:
I don't remember seeing in your red brief either an assertion that L'Oreal failed to make this point to the board.

[00:13:19] Speaker 00:
Or I'm not even sure whether you directly

[00:13:23] Speaker 00:
address the point on the merits, but just for current purposes, you did not say that this was forfeited by a failure to preserve this argument to the board, did you?

[00:13:34] Speaker 04:
The lack of enablement point, we did.

[00:13:36] Speaker 00:
No, no, not the lack of enablement.

[00:13:38] Speaker 04:
Oh, the material, your honor is correct.

[00:13:40] Speaker 04:
Your honor is absolutely correct on that point.

[00:13:42] Speaker 04:
I think that the reason why we didn't make that point in the red brief is that it really came to the fore only in

[00:13:48] Speaker 04:
only in L'Oreal's reply brief, to which we didn't have a further opportunity to respond.

[00:13:54] Speaker 04:
But I think I can just talk to the Chase and address the merits, because I think that the analysis of material patentability really dovetails with the analysis of

[00:14:06] Speaker 04:
And I think that the two most important cases of this court on those issues are Parr Pharmaceuticals and Allergan.

[00:14:13] Speaker 04:
Parr Pharmaceuticals, an inherency case.

[00:14:15] Speaker 04:
Allergan, a material patentability case, a claim construction case, which cites some prior cases and, in fact, distinguishes the Bristol-Meyer case that involved inherency.

[00:14:25] Speaker 04:
And let me explain why those cases, why the PTAB had substantial evidence to find that L'Oreal, which had the burden of proof, did not meet that burden here.

[00:14:36] Speaker 04:
The key point is that when there is a specific numeric result that is claimed, which is what the breakage claims do, again, 14 through 18 and 24 through 28, they claim specific percentage reductions.

[00:14:49] Speaker 04:
Claim 18, for example, claims at least 50% breakage reduction.

[00:14:53] Speaker 04:
That's all that is in claim 18.

[00:14:57] Speaker 03:
In terms of material dependability, if you're saying that that is not material dependability, what you'd be saying is that the intent is what you're saying is that if the claimant said we're in breakage is reduced without a percentage, that that would just be an objective rather than a claim limitation.

[00:15:14] Speaker 04:
Yes.

[00:15:15] Speaker 04:
Yes, we would make that distinction.

[00:15:17] Speaker 04:
And I think that that's what Judge Prost's concurrence and allergens said about Bristol Myers.

[00:15:21] Speaker 04:
the distinction is that Allergan involved the claim of a specific numeric result, whereas Bristol Myers was a much more qualitative result.

[00:15:29] Speaker 04:
So yes, your honor, if, if our claims had only said reduction in breakage without the numeric percentage, we would have a much different case and a much weaker case.

[00:15:39] Speaker 04:
Um, in terms of what the, the, as I explained, there was no non-enablement argument made, but even if one had been made,

[00:15:47] Speaker 04:
A person of skill of the art, as the PTAB recognized, and this court reviews that for substantial evidence, the PTAB recognized that what a skilled artisan would naturally know to do would be to look for the right concentration within that 0.1 to 50% range to achieve things like the at least 50% breakage reduction.

[00:16:07] Speaker 04:
That's the natural way that one would go about doing this.

[00:16:10] Speaker 04:
And the combination of the Pratt and Tanabe references

[00:16:14] Speaker 04:
Those that overlap.

[00:16:16] Speaker 04:
So again, our claims are 0.1 to 50%.

[00:16:19] Speaker 04:
That's claim one of the nine five four patent.

[00:16:21] Speaker 04:
The Pratt Kenabi combination overlaps only a small percent of that range, which is 0.1 to 0.429.

[00:16:28] Speaker 04:
So a much bigger part of the range is not covered by that combination.

[00:16:33] Speaker 04:
And moreover, there's no discussion in Pratt or Kenami about a breakage reduction in numeric terms and wicket declaration, which was discussed by my friend on the other side,

[00:16:44] Speaker 04:
Similarly, discussed an industry standard conditioner.

[00:16:47] Speaker 04:
It didn't discuss maleic acid.

[00:16:49] Speaker 04:
It didn't discuss use of maleic acid in the context of a bleaching treatment.

[00:16:54] Speaker 04:
And this court doesn't sit to address the merits of the wicket declaration as a matter of first instance.

[00:17:02] Speaker 04:
The PTAB looked at all of this.

[00:17:04] Speaker 04:
It looked at the arguments against the wicket declaration and why it didn't support L'Oreal's influences.

[00:17:09] Speaker 04:
And it decided, no, this is not enough to establish inherence.

[00:17:13] Speaker 04:
And this court, again, reviewing under the substantial evidence standard and recognizing that L'Oreal had the burden, properly rejected the inherency argument.

[00:17:22] Speaker 04:
And the other thing I would point out, we didn't quite get to this, and my adversaries open an argument, but the specification kind of clears up this issue because it says that only in some embodiments, and this is at appendix 241, in some embodiments, care breakage increases by five, 10, et cetera, percent.

[00:17:43] Speaker 04:
That is an instruction that you have to narrow the range that's claimed in claim one in order to achieve that.

[00:17:49] Speaker 04:
Again, prior art doesn't establish breakage reduction in numeric terms.

[00:17:53] Speaker 04:
Inherency doesn't either.

[00:17:55] Speaker 04:
PAR pharmaceuticals is on point in that respect.

[00:17:57] Speaker 04:
So is Allergan.

[00:17:58] Speaker 04:
In PAR, you had a claim of zero substantial difference in absorption of a medication into the bloodstream or other specific numeric reductions.

[00:18:07] Speaker 04:
And this court said,

[00:18:09] Speaker 04:
rejecting an inherency argument that while it may be true that a reduction in particle size naturally results in some improvement in the food effect, the district court failed to conclude that the reduction in particle size naturally results in no substantial difference in the food effect.

[00:18:23] Speaker 04:
So too here, the breakage claims recite numeric results.

[00:18:26] Speaker 04:
L'Oreal, which had the burden, did not proffer evidence that any of the claim numeric results necessarily follows from employing the patented process.

[00:18:34] Speaker 04:
If the court has no further questions on the appeal, I'd like to turn briefly to the cross-appeal.

[00:18:40] Speaker 04:
And on the cross appeal, our lead argument is derives from the Max Linear and Nestle cases.

[00:18:46] Speaker 04:
And it is basically that the finding that was affirmed by this court from the 419 patent proceeding that L'Oreal copied Liquid's unpublished patent application had to be considered by the PTAB in the obvious analysis.

[00:19:01] Speaker 04:
So again, the affirmance of a factual finding made by that first PTAB panel.

[00:19:06] Speaker 03:
Now, let me ask you a question.

[00:19:09] Speaker 03:
419 PTAB proceeding is now on appeal to this court.

[00:19:15] Speaker 03:
Let's assume hypothetically that we were to affirm the decision of the PTAB with respect to the 419 claims.

[00:19:26] Speaker 03:
Would that resolve the copying issue with respect to the 954 as well?

[00:19:32] Speaker 04:
We would respectfully submit that it would not, for the reason that the prior art references that are involved in the 419 proceeding are not entirely different, but largely different.

[00:19:43] Speaker 04:
So in the 419, the lead references are Ogawa and Kitabata, whereas in the 954, the lead reference is Pratt, and the main secondary reference is Tanabe.

[00:19:56] Speaker 04:
There are a few overlapping references, but overall, there's certainly a different set of prior art references.

[00:20:03] Speaker 04:
And the PTAB, the minimum in the first instance, just as this court instructed it to do the first time around in the 419 case, would have to weigh this copying finding against the prior art references that are at issue in the 954.

[00:20:15] Speaker 04:
So, however, 419 is decided and we do it, we have filed a notice of appeal, but if we lose that,

[00:20:21] Speaker 04:
hypothetically lose that case, it would not control the fact that the PTAB under Channery and under this court's prior decision would have to weigh the copying finding against the prior art references here.

[00:20:33] Speaker 00:
Mr. Weinsbrot, this is Judge Toronto.

[00:20:35] Speaker 00:
Can I ask you this?

[00:20:37] Speaker 00:
So I think our law is pretty clear that there's a host of subsidiary factual questions underlying what is ultimately

[00:20:50] Speaker 00:
a, you know, consider all the facts, legal determination of obviousness and, you know, motivation to combine what the prior art teaches, commercial success, and copying.

[00:21:08] Speaker 00:
We, in order that the court in the first 419 appeal, remanded the matter.

[00:21:18] Speaker 00:
suggesting that there were facts left to be decided and the weighing of a fact about copying against all of the other underlying facts is not a factual question, it's a legal question.

[00:21:34] Speaker 00:
So I think it's at least implicit, almost explicit, that other facts are relevant under this umbrella of copying and one can call those other facts nexus.

[00:21:48] Speaker 00:
because our case law has made clear that the particular set of circumstances surrounding a particular kind of copying have a lot to say about what bearing ultimately the particular kind of copying has on the ultimate obviousness determination, like did you try and fail before?

[00:22:09] Speaker 00:
So why isn't it, sorry for the long background windup,

[00:22:15] Speaker 00:
Why isn't it a fair thing for us to do here to say all the 419 panel of this court did was to say L'Oreal developed a product with maleic acid only as a result of seeing what it saw in the May 2015 meeting.

[00:22:39] Speaker 00:
But there are other facts having to do with

[00:22:44] Speaker 00:
the technological recognition of this combination from the April notebooks that tell us that whatever weight in a legal analysis the limited fact finding has about development of a product,

[00:23:08] Speaker 00:
is just minimal compared to the rest of the obviousness analysis so that it doesn't actually have to be contrary to anything done in the prior panel.

[00:23:24] Speaker 04:
Let me try to address that by saying that I do believe if you compare the 419 original TTAB decision and this court's decision on the one hand to the 954

[00:23:38] Speaker 04:
decision.

[00:23:40] Speaker 04:
There is a finding of copying in the former, and there is a finding of no copying in the latter.

[00:23:46] Speaker 00:
Well, let me put it this way.

[00:23:48] Speaker 00:
Copying is not a simple unitary concept.

[00:23:51] Speaker 00:
What there was was a finding that L'Oreal would not have developed a Malayic acid product were it not for seeing what it saw at the May 2015 meeting.

[00:24:03] Speaker 00:
And then we remanded.

[00:24:05] Speaker 00:
because that didn't end the factual, the legally relevant factual inquiries, which were then made on remand there, but also in this case.

[00:24:17] Speaker 00:
But what that leaves for us is a legal determination.

[00:24:21] Speaker 04:
I understand that, Your Honor, but I still think that that legal determination has to be made in the first instance by the TTAB.

[00:24:30] Speaker 04:
Because even if there may be a Nexus question, Nexus is not an on-off switch.

[00:24:37] Speaker 04:
And we have, furthermore, in our briefs, explained that PTAB's Nexus discussion is erroneous under this court's liquid power decision.

[00:24:45] Speaker 04:
But regardless, if you have a copying fact that has to be weighed against other facts, including prior art references, including Nexus,

[00:24:54] Speaker 04:
That weighing needs to be done under Chenery and Sang-Soo Lee.

[00:24:57] Speaker 04:
It has to be done in the first instance by the PTAB, not by this court.

[00:25:00] Speaker 00:
Well, that's what I guess maybe we've now gotten to the point that I really want you... Why is that the case?

[00:25:06] Speaker 00:
It's a legal determination.

[00:25:08] Speaker 04:
Because it's... Obviousness... This court has certainly said time and again that obviousness, the overall question of obviousness, is a legal determination that depends in part on underlying facts.

[00:25:21] Speaker 04:
But the weighing portion of that is something that this is not, this court is not reviewing a district court here.

[00:25:28] Speaker 04:
If it were in this appeal, that would be a different case.

[00:25:31] Speaker 04:
When this court is reviewing the PTAB, this court under Channery and Sang-Soo Lee gets the benefit of the PTAB's analysis in the first instance.

[00:25:39] Speaker 04:
And we don't know, as we sit here today, how the PTAB would balance the prior art references in the 954 case with Nexus and with copying.

[00:25:47] Speaker 04:
And for those reasons, at a minimum, there needs to be a remand.

[00:25:51] Speaker 04:
I'd like to just briefly point out, I know my time is short, but on the prior art references, our main argument, which I'm going to simplify to some extent, is that a reasonable skilled artisan would not have been motivated to combine on the one hand, high pH processes with on the other hand, low pH processes.

[00:26:08] Speaker 04:
And we've debated this issue ad nauseam with L'Oreal, whether it's in the PTAB or the district court or wherever.

[00:26:14] Speaker 04:
Recently, L'Oreal itself in another proceeding,

[00:26:19] Speaker 04:
Discussing one of the same references here, Tanabe, which is a low pH or acidic application says you wouldn't think a skilled artist would be discouraged from using that in a high pH context.

[00:26:31] Speaker 04:
That's the argument that liquid has been making all along.

[00:26:34] Speaker 04:
This new concession and a related proceeding by L'Oreal, we think breathes new life into that argument.

[00:26:41] Speaker 04:
We think the PTAB should consider that on remand or this court should consider it here.

[00:26:46] Speaker 04:
We've cited authorities for that this court could take judicial notice of that PTO document.

[00:26:50] Speaker 04:
And we think that that is relevant as well.

[00:26:52] Speaker 04:
When one is doing what you described Judge Toronto as this overall weighing, one would consider copying Nexus as well as the strength of the prior art references.

[00:27:01] Speaker 04:
If the court has no further questions, I'll rest on my briefs.

[00:27:05] Speaker 03:
Hearing no further questions, thank you, Mr. Weisberg.

[00:27:08] Speaker 03:
Thank you.

[00:27:09] Speaker 03:
Ms.

[00:27:09] Speaker 03:
O'Brien?

[00:27:11] Speaker 02:
Yes, thank you, Your Honors.

[00:27:13] Speaker 02:
I have a few points, but I just wanted to make in response, reply to in the main appeal.

[00:27:22] Speaker 02:
We are not arguing nominators.

[00:27:26] Speaker 02:
We are arguing that the board's implicit construction is a factual

[00:27:32] Speaker 02:
determination that the claims are not enabled.

[00:27:36] Speaker 02:
We're arguing that since the only variable in the claim is the amount of maleic acid, which is identical in the claims, one and the breakage claims, that the reduction can only be achieved as long as the maleic acid is present without tying any specific reduction to any other variable.

[00:27:56] Speaker 02:
And APOSA would understand that it's therefore inherent in the natural result of the malolic acid in the bleaching mixture.

[00:28:04] Speaker 02:
However, if liquid agrees that the board's construction is right, we would suggest that this is a tacit admission that the claims are not enabled.

[00:28:16] Speaker 02:
The other point that I wanted to respond to was with regard to par-pharmaceuticals.

[00:28:22] Speaker 02:
That case is distinguishable and should not control here because in power pharmaceuticals, the patent itself taught that the claimed property was variable depending on the claimed components as well as unclaimed components such as dosage and particle size.

[00:28:43] Speaker 02:
And the third point that I wanted to make has to do

[00:28:50] Speaker 02:
where we started, Alcon, says that a claim construction that excludes part of the claim that is not enabled is not proper.

[00:29:04] Speaker 02:
The last point that I want to make with regard to the main appeal is that Dr. Wicket did not testify about some unknown conditioner.

[00:29:16] Speaker 02:
He testified specifically that the Pratt-Tonati conditioner

[00:29:20] Speaker 02:
composition would have the beneficial results of the malic acid reduction and damage plus the conditioner reduction and damage.

[00:29:29] Speaker 02:
And then finally, turning to the cross appeal with regard to a stopple, I agree with Judge Toronto's position that the important issue here is not

[00:29:47] Speaker 02:
the whether the remand was necessary as a result of this court's affirmance, but rather whether the finding of copying was necessary to the final judgment.

[00:30:01] Speaker 02:
In particular, if I can just finish my thought, Your Honors, as the Supreme Court said in body VBs, which is 556 US 825, we cited it in our brief,

[00:30:16] Speaker 02:
that olaplexis or liquid drizzling can place a determination necessary to the bottom line judgment with a subsidiary finding that standing alone is not outcome of terminology.

[00:30:28] Speaker 00:
I think the other side says the judgment that matters was the judgment of this court remanding the case and indeed this copying finding was not only essential to it, it was the entirety of the basis for that.

[00:30:44] Speaker 02:
Right, but the Bobby V.

[00:30:45] Speaker 02:
B.'

[00:30:46] Speaker 02:
's case and the restatement of judgments, section 27 in common H makes confirm this as well.

[00:30:53] Speaker 02:
The question is whether it's necessary to the underlying legal claim, not the remand decision.

[00:31:03] Speaker 02:
As noted, the whole point of the remand was to send it back to the BTABs to determine whether it was essential to the judgment.

[00:31:14] Speaker 03:
All right.

[00:31:16] Speaker 02:
And the last, my, can I just address?

[00:31:18] Speaker 03:
I think, Ms.

[00:31:19] Speaker 03:
O'Brien, I think we're out of time.

[00:31:20] Speaker 03:
Unless my colleague has a question.

[00:31:22] Speaker 03:
Thank you.

[00:31:23] Speaker 03:
Mr. Weisberg, you may be out of time, but we'll give you one minute.

[00:31:27] Speaker 03:
Thank you.

[00:31:28] Speaker 03:
Thank you, Judge Dyke.

[00:31:29] Speaker 04:
Very briefly, Nestle involved a remand, just as this court's prior decision did.

[00:31:34] Speaker 04:
A collateral stopple does apply under this case, this court's case law.

[00:31:38] Speaker 04:
I want to amplify one point I made about the weighing that has to be done by the PTAB in the first instance.

[00:31:43] Speaker 04:
It's not just weighing a copying finding and nexus and prior art, which is different from the 419 case, but it's also weighing other objective indicia of non-obviousness that were timely raised and discussed by the PTAB.

[00:31:55] Speaker 04:
They weren't flatly rejected.

[00:31:57] Speaker 04:
They may affect the balance, and they would have to be weighed as part of this overall legal determination of obviousness under Channery in the first instance by the PTAB.

[00:32:06] Speaker 04:
Finally, although I don't have time to do it now, we have distinguished the Alcon case in our briefs, and I would respectfully refer the court to that in our red briefs.

[00:32:16] Speaker 04:
We are not trying to rewrite any claims as was done in Alcon.

[00:32:19] Speaker 04:
With that, rest on my briefs.

[00:32:20] Speaker 04:
Thank you, Your Honor.

[00:32:22] Speaker 04:
Okay.

[00:32:22] Speaker 03:
Thank you, Mr. Weisberg.

[00:32:23] Speaker 03:
Thank you, Mr. O'Brien.

[00:32:24] Speaker 03:
The case is submitted.