[00:00:05] Speaker 05:
The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and this honorable court.

[00:00:15] Speaker 01:
Good morning, all.

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Before we begin our proceedings with our case, I just want to just exercise a little personal privilege.

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This is the last time I will be working with Jennifer Baylis

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who is our courtroom deputy today, as she is leaving for greener pastures later on this month.

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And I just wanted to tell her how much we've appreciated all of her efforts on behalf of the court and all of her good work these many years.

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So thank you, and we wish you the best of luck and success, Jen.

[00:00:49] Speaker 01:
Thank you.

[00:00:51] Speaker 01:
Call our first case, which is 20-1411, Rao versus Smith.

[00:00:58] Speaker 01:
Mr. Doshi, whenever you're ready.

[00:01:02] Speaker 02:
Thank you, Your Honor.

[00:01:03] Speaker 02:
Good morning.

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May it please the Court.

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The Board's decision and the interference below is not supported by substantial evidence.

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The RAU-involved application explicitly describes the claimed step of contacting 1243ZF with chlorine in the presence of the claimed catalyst to produce 1233XF by way of 243DB.

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Throughout the specification, and in particular, columns seven and eight

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as well as the examples.

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Mr. Doshi, this is just a little bit of a housekeeping matter before we get into some of the details.

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My understanding, at least what you say in gray, is that you're arguing that this is not an inherency case.

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And that you say that you never made an inherent encryption argument before the board.

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So are we to conclude that if we do not find an express disclosure, you've kind of forfeited your ability to argue in herency or dislodge the necessity for us to reach in herency if we don't find an express disclosure?

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If there is no express, if the court finds that there is no express disclosure,

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then we look to Dr. Thrasher's testimony.

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And Dr. Thrasher says that under the Gibbs free energy and the scientific literature and the science behind his opinion, that the pathway from 1243DF to 1233XF by way of 243DB is going to happen.

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And so it necessarily will happen.

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And it is inherent.

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Now, did the parties

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specifically address inherency at the board level, I don't believe, I believe the answer is no, but if we look at Dr. Thrasher's testimony and in particular his declaration.

[00:03:09] Speaker 01:
Well, I am just saying, but that's why I'm confused because the board also, you say the board didn't reach inherency, but it did, didn't it?

[00:03:19] Speaker 01:
When it looked at whether or not 23 DB was necessarily present

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That's the inherency test, right?

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Again, I'm not, this isn't a gotcha.

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I just want to understand the parameters of what questions are before the court today.

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Right.

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And the board found it wasn't necessarily present.

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That's an inherency test, right?

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It did use those words, but the necessarily present is really,

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The test really should be discernible, right, discernible or recognizable to a person of ordinary skill in the art.

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And we've demonstrated, sorry, Ralph has demonstrated through Dr. Thrasher, and again, he looked at the science behind it.

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He looked at the scientific literature.

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He also relied on prior art to show that it's going to happen, that the reverse

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of the CLF, the reverse pathway, is going to take place.

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And therefore, 243DB is going to form.

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And even if there is some CLF that is formed, it's going to spontaneously dissociate and create the pathway to 243DB to 1233XF.

[00:04:46] Speaker 04:
I'm not understanding your answer to Chief Judge Prost's questions.

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Are we saying that the label doesn't matter and whether you call it inherently or disclosure or whatever, it's the same test?

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Or are you arguing for a different test?

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Are you saying that the probability that DB243 is formed is sufficient?

[00:05:16] Speaker 02:
Yes, that is correct.

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The formation of 243DB is going to happen.

[00:05:22] Speaker 04:
Well, it's going to happen for sure.

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It seems as though it's likely to happen but not for sure that it's going to happen.

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Isn't that a fair summary of the expert testimony for both sides here?

[00:05:38] Speaker 02:
Well, Dr. Thrasher said that it's highly likely to happen.

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That is correct.

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But it's disfavored, you know, in terms of the

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Gibbs free energy, it's highly disfavored that it's going to go the other way.

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In fact, he shows that even at the higher temperatures of examples 35 and 6, it's going to go through 243 dB to reach to 1233 XF.

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There's nothing in Dr. Sanford's, which is Smith's expert, in his testimony that shows that 243 dB is not going to be formed.

[00:06:18] Speaker 05:
So, I don't know if that answers the question, but... Judge Clevenger asking, is the expert saying it will happen regardless of the catalyst you use?

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Is Dr. Daxter saying it doesn't make any difference what catalyst you use because the claim requires a specific catalyst?

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Right.

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So, to back up a little bit,

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the reaction of 1243DF to 243DB has been known for quite some time.

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And Dr. Thrasher is saying that the Gibbs free energy is so high that it's going to spontaneously occur that the CLS, if any CLS is formed, it's spontaneously going to disassociate into HCl and CO2.

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under every possible catalyst under the sun, it will likely happen.

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You see, my point is, isn't there a specific requirement in the claim for a specific catalyst?

[00:07:33] Speaker 02:
There are, and these were well-known chlorofluorination catalysts that were

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disclosed by one of the co-inventors of the Rao application in the 559 patent.

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There's a shopping list of catalysts in the spec, but I mean the argument is that it's not sufficient blaze marks.

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The expert wouldn't know which catalyst would always work.

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But these are known chlorofluorination catalysts that were known to work in not only the 559 patent, but also the 491 patent that we cited, the 634 patent.

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These are specific catalysts that were known to be chlorofluorination catalysts that would move the reaction from 1243ZF to 243DB to 1233XF.

[00:08:17] Speaker 04:
I also want to note that 1243Z... Isn't it the case that your specification discloses a specific catalyst that's within the scope of the claims?

[00:08:31] Speaker 02:
It does.

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The specification talks about the chlorofluorination catalyst at column 7, lines 18 through 29, and they include carbon, alumina, and metal oxides.

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And the examples then use the chromium oxide, which is one of the three that are claimed in examples 3, 5, and 6.

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And what we see in examples 3, 5, and 6 as compared with examples 1 and 2 is that 243 dB has been consumed

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to move to 1233 XF, whereas in examples 1 and 2, without the catalyst, you see the formation of 243 dB.

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You also see a little bit of formation of XF.

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But with the added catalyst, you can see that the reaction pathway moves forward from 243 dB to 1233 XF.

[00:09:25] Speaker 04:
And that's what the... Okay.

[00:09:26] Speaker 04:
We're confusing two separate issues here.

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is whether from a written description standpoint, your specification discloses one of the catalysts that's included in the claim.

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And the answer to that is, yes, it does.

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There isn't any issue about that, correct?

[00:09:46] Speaker 02:
I'm sorry.

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Could you repeat the question?

[00:09:49] Speaker 04:
We have two separate issues here, it seems to me.

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One is whether the reaction using the catalyst

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produces 243 dB.

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We've been discussing that.

[00:10:01] Speaker 04:
There's a separate question as to whether your specification discloses one of the catalysts disclosed or claimed in the claim.

[00:10:11] Speaker 04:
And the answer to the latter question is that your specification specifically describes using one of the transition metal catalysts disclosed in the claim, right?

[00:10:24] Speaker 02:
That is correct.

[00:10:25] Speaker 02:
That is correct.

[00:10:26] Speaker 02:
But the focus on one example shouldn't preclude the African from claiming those that are already disclosed throughout the specification, and in particular, column seven, lines 18 through 29.

[00:10:41] Speaker 04:
And in particular, this case, because these were no... Are you suggesting that your specification has to disclose all of the catalysts in the claim, or is it sufficient for written description to disclose one of them?

[00:11:02] Speaker 02:
So, the examples use one of the disclosed catalysts.

[00:11:13] Speaker 02:
The count includes three catalysts, and the specification discloses those three catalysts.

[00:11:28] Speaker 01:
I don't know if I'm asking the same thing Judge Dyke is asking in a different way, but let me try it.

[00:11:35] Speaker 01:
Only with the listed catalysts is used an example.

[00:11:39] Speaker 01:
And your expert testified that selecting catalysts would be predictable.

[00:11:44] Speaker 01:
But even if that's so, that doesn't mean that the application describes these enumerated catalysts being used for this step.

[00:11:53] Speaker 01:
So, even if we found that 243 DB is necessarily produced, why couldn't we affirm on the fact that there is insufficient description of the claim catalyst?

[00:12:06] Speaker 02:
Good question.

[00:12:07] Speaker 02:
Okay.

[00:12:07] Speaker 02:
So, if we look at column seven, and I'm in my rebuttal time, and I... Yes, but... So, if we look at column seven and we look at lines 18 to 29, it says,

[00:12:22] Speaker 02:
The catalyst is used in the reaction zone for the vapor phase reaction of HF and Cl2 with starting material.

[00:12:28] Speaker 02:
So the specification earlier in columns two and columns four talked about 1243ZF being the starting material.

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And 1243ZF is the preferred starting material.

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And so what column seven is saying is you can use the chlorofluorination catalyst with 1243ZF, and you can form 243DB, which is in column eight.

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And then you can recycle that to push the reaction forward to 1233XF and other downstream compounds.

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And what a person of ordinary skill in the art would see is an example that shows exactly what column 7 and 8 are talking about.

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And that is you add a catalyst to 1243ZF.

[00:13:09] Speaker 02:
And in this particular case, it's chromium oxide.

[00:13:12] Speaker 02:
And that will push the reaction forward from 1243ZF to 243DV to 1233XF.

[00:13:19] Speaker 02:
There is written description for 1243ZF in the presence of chlorofluorination catalyst.

[00:13:24] Speaker 02:
That includes carbon and aluminum.

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And with that, I think I'll reserve the rest of my time unless there's a further question.

[00:13:34] Speaker 01:
I think not.

[00:13:35] Speaker 01:
Let's hear from Mr. Silver, please.

[00:13:40] Speaker 00:
Good morning, Your Honors.

[00:13:41] Speaker 00:
May it please the Court, Blair Silver on behalf of Appalachia.

[00:13:44] Speaker 00:
The board's decision in this case is correct because substantial evidence supports three key findings of fact.

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The first two are that Rowell's application does not explicitly or necessarily describe producing 243DB from 1243ZF in the presence of any catalyst whatsoever.

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And the second, as Judge Prost just noticed, is that Rowell's application doesn't describe producing 243DB

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from 1243ZF in the presence of the three claimed catalysts in the count.

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Now, the Hyatt v. Boone case is very clear that when you're talking about written description for an interference count, what you need is all of the limitations in the interference count or, and this is a quote, the applicant must show that any absent text is necessarily comprehended in the description provided.

[00:14:37] Speaker 00:
Boiled down, express disclosure,

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or inherent disclosure for any absent text.

[00:14:43] Speaker 00:
Now, I just heard my opposing counsel argue for a new standard for written description, that they were looking for whether the written description is discernible from the text.

[00:14:53] Speaker 00:
That is not in the briefing, and so that argument has been waived.

[00:14:56] Speaker 00:
But the law is clear at this point.

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Written description must be expressed or necessarily present.

[00:15:01] Speaker 00:
It aroused application under the first finding of fact.

[00:15:05] Speaker 00:
The application does not describe as preparing 243-DB

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from 1, 2, 4, 3, ZF in the presence of any catalyst whatsoever.

[00:15:12] Speaker 00:
Instead, what we have is an application describing potentially preparing dozens of products besides 2, 4, 3, DB and potentially listing dozens of potential chlorofluorination catalysts.

[00:15:24] Speaker 00:
But tying those two together for the production of 2, 4, 3, DB is never done.

[00:15:29] Speaker 00:
Instead, we have two embodiments in columns 5 and 6 on appendix page 228 where there's an inert packing material, there's pre-contact with chlorine,

[00:15:38] Speaker 00:
but there is no catalyst used.

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Then we get to the examples, examples one and two.

[00:15:43] Speaker 00:
No catalyst used, but 243DB produced.

[00:15:47] Speaker 00:
But what happened when they added a catalyst?

[00:15:50] Speaker 00:
Examples three, five, and six, 0% 243DB detected.

[00:15:55] Speaker 00:
That is the sum total of the disclosure in ROUZ specification.

[00:16:00] Speaker 00:
And there's no dispute that that's what the disclosure actually says.

[00:16:03] Speaker 00:
And that interpretation is supported by expert testimony from Dr. Sanford that was relied on by the board.

[00:16:08] Speaker 00:
And so, therefore, it is supported by substantial evidence.

[00:16:12] Speaker 00:
Now, as Judge Price also noted, the RAL has unequivocally abandoned any reliance on inherency.

[00:16:20] Speaker 00:
So, while we did hear RAL's counsel just argue that its expert testimony could be used to support a necessity finding, that argument has been unequivocally waived in the reply.

[00:16:29] Speaker 00:
And you can look to pages 3, 8, 9, 22, 23 of the reply where they repeatedly say, we are not arguing inherency.

[00:16:38] Speaker 00:
But this is important because below, before the board, they did not argue express disclosure either.

[00:16:44] Speaker 00:
And I would like to refer the panel to appendix page 12 of the final written decision where the board said, in characterizing Rao's argument, Rao opposes Smith motion two, arguing essentially that while its specification does not expressly provide a separate process step of producing 243DB by contacting R1243CF with chlorine,

[00:17:07] Speaker 00:
in the presence of the specifically claimed catalyst, one of Skill in the Art would have understood, and it goes on from there.

[00:17:14] Speaker 00:
But again, does not expressly provide a separate process set.

[00:17:19] Speaker 00:
And so now for the first time in this appeal, they're arguing only express disclosure, but as I just explained, the patent doesn't actually provide that detail.

[00:17:28] Speaker 00:
Now why did they walk away from inherency?

[00:17:31] Speaker 00:
They walked away from inherency because it's indisputed in this case that under the count, there are two routes

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between 1243ZF and 1233XF.

[00:17:41] Speaker 00:
One goes through 243DB.

[00:17:43] Speaker 00:
One does not.

[00:17:44] Speaker 00:
There are some other permutations.

[00:17:45] Speaker 00:
But what that means as a matter of law is that you cannot have necessity to show inherently.

[00:17:52] Speaker 04:
And there's no dispute about it.

[00:17:55] Speaker 04:
On what facts do the two alternative routes depend?

[00:18:01] Speaker 04:
In other words, apparently the testimony from both experts is that

[00:18:07] Speaker 04:
It's likely that 243 dB would be formed as an intermediate, but that it's possible that there was another route to the formation of the end product.

[00:18:21] Speaker 04:
What does the record disclose as to what determinants there are as to whether one route rather than the other would be followed?

[00:18:31] Speaker 04:
Does it depend on temperature, for example?

[00:18:35] Speaker 00:
So, Your Honor,

[00:18:36] Speaker 00:
Which route is actually followed is unknown in this case, and that is why the Inherency case failed.

[00:18:41] Speaker 00:
We don't know.

[00:18:42] Speaker 00:
Now, there are a lot of things that can affect which route would be followed.

[00:18:47] Speaker 00:
The conditions, the type, the temperature, those do affect which one would be more favored or not.

[00:18:53] Speaker 00:
But in this case, we have expert testimony that routes were both possible, and you can see the flow chart in our brief.

[00:18:59] Speaker 00:
It's on appendix page 2461.

[00:19:02] Speaker 00:
is supported by Dr. Sanford's declaration testimony, there's no dispute that the roots exist and are possible.

[00:19:08] Speaker 00:
And as we know from the Agilent case that we cited in our brief, you cannot establish inherency through probabilities and possibilities.

[00:19:16] Speaker 00:
And so now when they're pointing to Dr. Thrasher's testimony about these Gibbs free energy equations, whether things were thermodynamically favored or not,

[00:19:24] Speaker 00:
We are no longer looking to inherit you because they've waived that.

[00:19:27] Speaker 00:
But even if you did look at it, the conclusion is not the certainty that Rao's counsel offered this court.

[00:19:33] Speaker 00:
The conclusion from Dr. Thrasher is likelihood.

[00:19:36] Speaker 00:
And again, as I just said, likelihood doesn't get you to probabilities or doesn't get you to necessity because you're only talking probabilities, not necessarily what occurred.

[00:19:47] Speaker 00:
Now, there's a good reason why the board or why Rao then turned to the prior art to try to fill the gap in its expressed disclosure.

[00:19:54] Speaker 00:
Because it doesn't have inherency, and it doesn't have the text.

[00:19:57] Speaker 00:
And because the text is absent, they have to turn to something else.

[00:20:00] Speaker 00:
But you can't fill gaps in your written description with prior art.

[00:20:04] Speaker 00:
That confuses inherency with written description.

[00:20:08] Speaker 00:
And there's a good reason why you couldn't do that.

[00:20:10] Speaker 00:
And that's because if you allowed applicants to claim subject matter that is merely obvious by citing prior art, it would swallow the rule for inherency.

[00:20:20] Speaker 00:
You would never have a need to show necessity for absent text.

[00:20:23] Speaker 00:
which contradicts the disclosure in Hyatt v. Byrne.

[00:20:26] Speaker 00:
So as the board recognized, the reliance on the prior art in this case was the wrong question.

[00:20:32] Speaker 00:
But this case is easier than that.

[00:20:33] Speaker 00:
And it's easier because when you look at the prior art cited by Rao, none of it actually supplies the missing text.

[00:20:41] Speaker 04:
None of it ties producing... When you talk about the prior art, are you talking about the 559 patent, for example?

[00:20:47] Speaker 00:
Yes.

[00:20:48] Speaker 00:
For example, let's talk about the 559 patent.

[00:20:50] Speaker 00:
The 559 patent is cited in the opening brief, the footnote on page, I believe, 23.

[00:21:00] Speaker 00:
And in there, they claim that the 559 patent was known to produce 243DB by chlorofluorinating 1243ZF.

[00:21:08] Speaker 00:
Now, in the reply brief on page 18, they've expanded on this argument.

[00:21:11] Speaker 00:
They started citing the table on those two pages for saying this also shows production, catalytic production.

[00:21:18] Speaker 00:
of 243 dB, but that argument wasn't in the opening brief.

[00:21:22] Speaker 00:
And so I argue that that's waste.

[00:21:24] Speaker 00:
But even if you look at the merits of the 559 pattern as an example, that has a different starting material.

[00:21:30] Speaker 00:
That table discloses 250 FB, not 1243 ZF as the starting material.

[00:21:36] Speaker 00:
So when you chlorophyll in it, 250 FB, the 559 pattern most says you might get some 243 dB and some 1243 ZF,

[00:21:48] Speaker 00:
But it doesn't say how you get there.

[00:21:50] Speaker 00:
It doesn't say the route.

[00:21:52] Speaker 00:
And it doesn't even use the same catalyst that is in the RAL specification at issue and interference, the chromium cobalt catalyst.

[00:22:00] Speaker 00:
It uses just a chromium oxide catalyst.

[00:22:03] Speaker 00:
And so what we have here is art that's off point.

[00:22:05] Speaker 00:
And we know that when you look at off point art, that is also insufficient to fill gaps in written description.

[00:22:11] Speaker 00:
And we cited that FWP IP case and the Board of Trustees of Leland Stanford University case

[00:22:18] Speaker 00:
Both of which say, if you're talking about a different platform, if you're talking about prior art involving, that doesn't actually show the missing limitation, in that circumstance, it's still fatal to your case, even if considered.

[00:22:34] Speaker 00:
Now, I want to turn back to the third finding of fact I mentioned that's supported by substantial evidence, which, as the question this morning noted, is an independent basis for affirming this appeal.

[00:22:47] Speaker 00:
Ryle's application doesn't actually describe preparing 243DB from 1243ZF in the presence of all three claimed catalysts.

[00:22:56] Speaker 00:
And we know that written description requires that you provide support for the full scope of the claims.

[00:23:02] Speaker 00:
So one of the three claimed catalysts is not enough.

[00:23:05] Speaker 00:
You need not just the oxide of a transition metal, but alumina and activated carbon in your specification.

[00:23:12] Speaker 00:
And as the board recognized, merely providing a laundry list, or as Judge Clevenger said, a shopping list,

[00:23:17] Speaker 00:
of catalysts alongside general directions does not provide those blaze marks, those guides under root-shaken area that you need for written description.

[00:23:27] Speaker 00:
But this is particularly important here because catalysts are notoriously unpredictable.

[00:23:32] Speaker 00:
And the unpredictability of the catalyst went mostly unrebutted throughout the proceeding.

[00:23:38] Speaker 00:
When you have unpredictability, the symptoms case that we cited in our brief, the area case that we cited in our brief, all of them say you need more disclosure.

[00:23:47] Speaker 00:
And what do we have here?

[00:23:48] Speaker 00:
We have dozens of potential products, dozens of potential catalysts, but because they're not predictable, and this is supported by the testimony of Dr. Sanford, because they affect different pathways, also supported by the testimony of Dr. Sanford and that Dr. Thrasher agreed with, you require extensive testing to figure out which catalyst works on which reaction route.

[00:24:11] Speaker 00:
So when you have two potential reaction routes, and I think Judge Doug, this gets back to your question,

[00:24:15] Speaker 00:
When you have two potential reaction routes and you have a bunch of catalysts and you think there's some catalytic reaction going on, the question is then raised, which route is being catalyzed?

[00:24:26] Speaker 00:
And we don't know that because their specification doesn't tell us.

[00:24:29] Speaker 00:
And that's why the board was correct to not find inherency as well in addition to the laundry list not supporting the written description of the other two elements of the claim.

[00:24:38] Speaker 00:
Now I want to talk really briefly about the Gibbs free energy equations that we heard so much about this morning.

[00:24:44] Speaker 00:
Those are not so emphatically clear to show what absolutely must occur in this situation.

[00:24:51] Speaker 00:
They deal with likelihood, as I mentioned before.

[00:24:53] Speaker 00:
But also, as Dr. Sanford explained, these are different conditions.

[00:24:58] Speaker 00:
The Gibbs free energy equations use standard conditions, low temperatures, did not account for the presence of a catalyst whatsoever.

[00:25:06] Speaker 00:
And as Dr. Sanford explained, they become inaccurate when you're talking high temperatures, when you're talking free radical processes.

[00:25:13] Speaker 00:
where suddenly they break down and kinetic measurements would be better than thermodynamic.

[00:25:18] Speaker 00:
And so the board had all this in front of it and it decided as a matter of fact against RAL in this circumstance.

[00:25:27] Speaker 00:
Now with regard to the acceleration argument, RAL argued that

[00:25:32] Speaker 00:
By looking at the table, one would have known that zero did not mean zero.

[00:25:36] Speaker 00:
In fact, it means that the consumption of 243 GB was accelerated.

[00:25:42] Speaker 00:
But what did they cite for that besides that Gibbs free energy equation that I just talked about?

[00:25:46] Speaker 00:
They only cited the definition of the word catalyst.

[00:25:50] Speaker 00:
And this gets me back to the point I said before.

[00:25:53] Speaker 00:
Catalyst of what?

[00:25:54] Speaker 00:
You can't look at a dictionary definition of what a catalyst is without confirming that the catalyst works for the specific reaction group.

[00:26:00] Speaker 00:
And again, that's the gap in the specification.

[00:26:03] Speaker 00:
That is what's missing from their disclosure.

[00:26:09] Speaker 01:
Anything further?

[00:26:10] Speaker 00:
Yes, Your Honor.

[00:26:13] Speaker 01:
No, I just wondered if you were going to complete it.

[00:26:17] Speaker 00:
Yes, Your Honor.

[00:26:17] Speaker 00:
I'd just like to close again.

[00:26:19] Speaker 00:
Every expert, every party agreed in every paper that RAL's application does not explicitly state

[00:26:24] Speaker 00:
that 243-DB is produced using a claim catalyst.

[00:26:28] Speaker 00:
And the board recognized below that Rao was not arguing for express disclosure.

[00:26:33] Speaker 00:
And now we're hearing all about express disclosure.

[00:26:36] Speaker 00:
But they've also walked away from inherency.

[00:26:39] Speaker 00:
Very clearly in the reply group.

[00:26:40] Speaker 00:
But now it will argue we're hearing there's inherency.

[00:26:42] Speaker 00:
And so there are significant issues of waiver in this case.

[00:26:45] Speaker 00:
But because substantial evidence supports all these three key findings of fact that I mentioned before, the board's decision in this case should be affirmed.

[00:26:52] Speaker 00:
And if there are no further questions,

[00:26:53] Speaker 00:
I conclude my remarks.

[00:26:55] Speaker 00:
Thank you.

[00:26:57] Speaker 01:
Mr. Doshi, you have seven minutes remaining.

[00:27:01] Speaker 02:
Thank you, Your Honor.

[00:27:03] Speaker 05:
So the... Mr. Doshi, I just have one question.

[00:27:08] Speaker 05:
I'm quite willing to confess that I am confused about whether inherency is in this case or not in this case, because your brief says you're not talking inherency, but yet

[00:27:22] Speaker 05:
At your oral argument, you said Dr. Grasher provided the factual basis for an inherency claim.

[00:27:31] Speaker 05:
I'm confused.

[00:27:34] Speaker 02:
Well, it's express disclosure.

[00:27:35] Speaker 02:
We did argue express disclosure, and that's in our briefs at 2560 to 2566, I believe.

[00:27:43] Speaker 02:
That's right.

[00:27:44] Speaker 02:
2560 to 2566.

[00:27:46] Speaker 02:
And what I'm saying

[00:27:48] Speaker 02:
to this court right now is all in the papers that was presented below.

[00:27:53] Speaker 02:
And we did talk about express disclosure.

[00:27:56] Speaker 02:
Now, to the extent express disclosure isn't found, we believe that there is sufficient evidence to show that it was inherent based on Dr. Thrasher's declaration.

[00:28:06] Speaker 02:
Now, Dr. Thrasher does talk about this Gibbs free energy at higher energies.

[00:28:11] Speaker 05:
Why did you say in your brief this was not an inherency case?

[00:28:17] Speaker 02:
Because that wasn't argued below in terms of the parties did not address inherency specifically.

[00:28:26] Speaker 02:
We talked about the express, again, we were relying on express disclosure.

[00:28:33] Speaker 02:
And we find that it is there.

[00:28:35] Speaker 02:
And, you know, council talks about columns five and six, that's a different embodiment.

[00:28:41] Speaker 02:
Columns five and six talk about liquid

[00:28:43] Speaker 02:
liquid reactions, liquid phase reactions, whereas in Columns 7 and 8, which I'm more focused on and is in the briefing below and in the briefing before this court, it talks about the catalytic conversion of the starting materials, which are defined as 1243ZF, and that's the preferred starting material, and the production of 243DB in Column 8.

[00:29:13] Speaker 02:
at line 39, and again, recycling that 243 DB to form downstream products.

[00:29:21] Speaker 02:
Now, I want to talk about a question that you, go ahead.

[00:29:26] Speaker 05:
I'm still confused because I'm looking at page 12, appendix 12 in the board's decision where they're saying that you were arguing essentially that your specification doesn't provide an express disclosure

[00:29:40] Speaker 05:
There is a basis for finding inherence and they cite route opposition paper to opposition to paper 71.

[00:29:48] Speaker 05:
Do we have that in the record?

[00:29:50] Speaker 02:
You do, your honor.

[00:29:52] Speaker 02:
Where is it?

[00:29:54] Speaker 05:
And I see that, that, uh, paper 71.

[00:29:57] Speaker 02:
20.

[00:30:09] Speaker 02:
looking for, Your Honor.

[00:30:10] Speaker 02:
My appendix, unfortunately, has the numbers.

[00:30:33] Speaker 02:
To address your question, Your Honor, the express teaching

[00:30:35] Speaker 02:
is at 2560, which is our opposition to Motion 2, and 2561 and 2562.

[00:30:41] Speaker 02:
And we go through the disclosure that we're talking about here in Columns 7 and 8, where we're talking about the chlorofluorination

[00:30:55] Speaker 02:
of 1243DF to form 243DB, which has been recycled to 243DB.

[00:31:00] Speaker 05:
I don't want to use up all your rebuttal.

[00:31:02] Speaker 05:
I think you're telling me that the board was just wrong at page 12 in its opinion when it was describing your position.

[00:31:12] Speaker 05:
The board says RAL opposes Motion 2 arguing essentially that while its specification does not expressly provide the step, right?

[00:31:23] Speaker 03:
Right.

[00:31:24] Speaker 05:
One would have understood it's formed as an intermediate, yada yada, which is consumed.

[00:31:28] Speaker 05:
That's the inherency argument, correct?

[00:31:32] Speaker 05:
The second part of that sentence.

[00:31:35] Speaker 02:
Correct.

[00:31:36] Speaker 02:
That's the board.

[00:31:38] Speaker 05:
The board was understanding you to argue that there was not an express disclosure, but rather an inherent disclosure.

[00:31:48] Speaker 05:
So you must be telling me that you think the board just misunderstood you.

[00:31:57] Speaker 02:
That does not, right, that does not mean we didn't argue express disclosure.

[00:32:02] Speaker 02:
We did argue express disclosure and that board found that it was, we were relying on herency.

[00:32:08] Speaker 02:
That's not exactly correct.

[00:32:10] Speaker 04:
It's basically the same argument, right?

[00:32:13] Speaker 04:
Because whether you call it an herency or express disclosure, your theory is under express disclosure that someone skilled in the art would have known that it was necessarily happening, which seems correct.

[00:32:26] Speaker 04:
to be very similar to inherency.

[00:32:31] Speaker 02:
Well, there is expressed disclosure here, right, in our view, the 243 DB.

[00:32:39] Speaker 04:
Express disclosure because someone skilled in the art would understand it was necessarily present.

[00:32:44] Speaker 04:
That's your argument, right?

[00:32:46] Speaker 02:
Well, the argument is that columns seven and eight, together with the examples, show that 243 DB is formed.

[00:32:56] Speaker 02:
And it's recycled to form downstream products, including 245CB, which at Columns.

[00:33:04] Speaker 04:
The specification doesn't say that expressly.

[00:33:07] Speaker 04:
So you're suggesting that it nonetheless can be an express disclosure because someone skilled in the art will understand that was necessarily happening, right?

[00:33:16] Speaker 02:
No, Your Honor.

[00:33:19] Speaker 02:
So Column 7 and 8 does expressly talk about

[00:33:23] Speaker 02:
contacting starting materials, 1243ZF with chlorofluorination catalyst.

[00:33:29] Speaker 02:
And then when we go to column 8, we see that 243DB is formed.

[00:33:33] Speaker 02:
And then down at the bottom, 243DB is then recycled.

[00:33:37] Speaker 02:
So there is express disclosure here.

[00:33:39] Speaker 02:
And we made that point down below, and the board disregarded it.

[00:33:43] Speaker 02:
It dismissed it at page 14.

[00:33:46] Speaker 02:
It said that we understand that Ralph's specification, I'm sorry, we've reviewed the portions

[00:33:53] Speaker 02:
The route specification pointed to us and then lists exactly what I just went through, column 7, 18 to 19, 835 to 39.

[00:34:00] Speaker 05:
Where are you on page 14?

[00:34:02] Speaker 05:
Where on page 14?

[00:34:05] Speaker 02:
Page 14 towards the bottom, it starts with we have reviewed those portions of the route specification.

[00:34:14] Speaker 02:
And it talks about 7, 18 to 19, 835 to 39, and 55 through 67, which is the

[00:34:22] Speaker 02:
contacting of the starting materials with chlorofluorination catalyst, forming 243DB and recycling 243DB.

[00:34:31] Speaker 05:
It doesn't show the distinct step of forming 243DB in the presence of the claimed catalyst.

[00:34:40] Speaker 05:
Column seven and eight don't show the claimed catalyst, correct?

[00:34:48] Speaker 02:
Column seven.

[00:34:48] Speaker 02:
shows the catalyst that can be used.

[00:34:51] Speaker 02:
These were well-known chlorofluorination catalysts.

[00:34:55] Speaker 04:
Oh, but when it talks about the recycling of the 243 dB in column 8, that's not talking about in the presence of a catalyst, right?

[00:35:06] Speaker 02:
It is.

[00:35:06] Speaker 02:
It is, Your Honor.

[00:35:07] Speaker 02:
That has to be read with column 7, chlorofluorination catalyst, which may be used in the vapor phase reaction.

[00:35:14] Speaker 02:
And this isn't talking about some other starting material.

[00:35:16] Speaker 02:
This is talking about starting materials

[00:35:18] Speaker 02:
that are defined by the specification that include 1243ZEF.

[00:35:22] Speaker 02:
And at 860, we see that it's recycled to go downstream and form 245CB, 1234YF, and some others.

[00:35:34] Speaker 01:
Okay.

[00:35:34] Speaker 01:
Mr. Doshi, we're way beyond your time, but since you've been peppered with important questions, let me allow you another minute or two if you want to cover anything in rebuttal.

[00:35:45] Speaker 01:
that you haven't had an opportunity to do yet, please proceed for another minute or two.

[00:35:50] Speaker 02:
I very much appreciate that, Your Honor.

[00:35:53] Speaker 02:
So I think one of the questions to counsel for Smith was, where are the facts that underlie Dr. Sanford's testimony?

[00:36:02] Speaker 02:
And we submit that there are none.

[00:36:05] Speaker 02:
I mean, Dr. Sanford testified that catalysts used in examples 3, 5, and 6

[00:36:10] Speaker 02:
enables the formation of 243 dB from 1243 ZF.

[00:36:14] Speaker 02:
He testified that the catalyst seems to be very active for the next transformation of 243 dB to most probably 1233 XF.

[00:36:20] Speaker 02:
That's an appendix 2911.

[00:36:22] Speaker 02:
He further testified that the addition of a catalyst is not likely to poison the reaction so that no 243 dB would form at all.

[00:36:31] Speaker 02:
He also testified that he did not review any scientific literature showing that this alternative reaction would occur.

[00:36:37] Speaker 02:
in place of the clean step.

[00:36:38] Speaker 02:
In other words, it's going to shunt or stop the production of 243 dB.

[00:36:44] Speaker 02:
And this stands in stark contrast with Dr. Thrasher's testimony where he, again, shows actual scientific evidence that the alternative pathway will not occur because it gives free energy.

[00:36:54] Speaker 02:
Now, Council for Smith said that Dr. Thrasher didn't take into account the high temperatures, but I will point to Appendix 2725 where he says that his opinion does not change even at the higher temperature.

[00:37:07] Speaker 02:
And so there's no meat to Dr. Sanford's testimony, and that in and of itself is not substantial evidence.

[00:37:15] Speaker 02:
He doesn't rely on anything.

[00:37:17] Speaker 02:
He's just expressing his opinion.

[00:37:21] Speaker 02:
In the abstract and in theory, could CLF be made?

[00:37:25] Speaker 02:
Yes, but under the conditions that are provided by the specifications, right, in columns six and seven and eight, it's not going to happen, and he's shown no

[00:37:37] Speaker 02:
He's shown no evidence to the contrary that CLF will form other than his own opinion that it could form.

[00:37:46] Speaker 04:
Did your expert testify that columns seven and eight of the specification show an expressed disclosure of the production of 243 dB in the presence of a claimed catalyst?

[00:38:03] Speaker 02:
So Dr. Thrasher at paragraph 44, so let me,

[00:38:07] Speaker 02:
Look to that.

[00:38:09] Speaker 02:
It is at 2676... Yes.

[00:38:12] Speaker 04:
Yes, he did.

[00:38:16] Speaker 02:
Yes, he did.

[00:38:17] Speaker 02:
At 2676 through 2686 and perhaps even more.

[00:38:33] Speaker 02:
Right, then he goes into the examples at 2687.

[00:38:35] Speaker 04:
That's tight for where he says that seven and eight make that disclosure.

[00:38:51] Speaker 02:
I believe it's about 44.

[00:39:03] Speaker 02:
Yes, paragraph 44, he starts with column 7.

[00:39:08] Speaker 02:
I'm sorry, 2676.

[00:39:08] Speaker 02:
2677.

[00:39:17] Speaker 02:
There you see he's citing to column 7, lines 18 through 19.

[00:39:24] Speaker 02:
Then he goes on to cite column 7, lines 18 through 36.

[00:39:30] Speaker 02:
And then in subsequent pages, in particular 2680, he says column 8, lines 33 to 35 and 55 to 67.

[00:39:40] Speaker 02:
And then we go into the examples as further support for the disclosure and the specifications.

[00:39:52] Speaker 02:
So those are the slides.

[00:39:55] Speaker 01:
All right.

[00:39:55] Speaker 01:
I think we're going to end it here if my colleagues have nothing further.

[00:40:01] Speaker 01:
Thank you.

[00:40:02] Speaker 01:
We thank both sides.

[00:40:04] Speaker 01:
Thank you.