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

[00:00:03] Speaker 03:
Our next case is Maxell versus Amperex Technology, 2023, 2256, 2023, 2258.

[00:00:17] Speaker 03:
Good morning, Mr. Schulman.

[00:00:22] Speaker 01:
Good morning, may it please the court, Eric Shaman for Appellant Maxell Limited.

[00:00:26] Speaker 01:
Maxell asked the court today to reverse the USPTO board's decisions regarding the unpatentability of three of Maxell's patents related to lithium ion battery technology.

[00:00:37] Speaker 01:
I think we have back-to-back today, two appeals that cover three of the Maxell patents.

[00:00:41] Speaker 01:
This covers

[00:00:47] Speaker 01:
third patent, the 035.

[00:00:49] Speaker 01:
There's significant overlap between these appeals.

[00:00:52] Speaker 01:
All three patents relate to improvements in rechargeable lithium ion batteries.

[00:00:58] Speaker 01:
And specifically, they address improvements in the composition of the lithium-containing transition metal oxides, the LCTMOs, that form the cathodes of the batteries.

[00:01:08] Speaker 01:
And then the back-cell patents also address compounds that are added to the liquid electrolyte to impart other beneficial properties.

[00:01:16] Speaker 01:
The 446 and the 019 patents that issue here require the addition of compounds with at least two nitrile groups in the molecule.

[00:01:26] Speaker 01:
In the underlying IPRs here for the 446 and the 019, the board found all challenge claims unpatentable based on a combination of Choi and Kim.

[00:01:36] Speaker 01:
The finding here should be overturned because it is not supported by substantial evidence.

[00:01:41] Speaker 03:
Your problem, counsel, is that your claims of

[00:01:45] Speaker 03:
are very broad.

[00:01:47] Speaker 03:
They include a lot of metals.

[00:01:51] Speaker 03:
They certainly include aluminum and magnesium.

[00:01:55] Speaker 03:
And adding the reference to multiple nitriles for the same kind of technology would seem to be fairly obvious.

[00:02:14] Speaker 03:
You haven't shown evidence of unexpected properties from doing this.

[00:02:27] Speaker 01:
I don't think that the board found that Maxell offered sufficient evidence on unexpected consequences, unexpected results.

[00:02:36] Speaker 01:
I think that is true.

[00:02:38] Speaker 01:
But I do think that Choi, if we're talking about the selection of magnesium and aluminum, Choi, although it includes those elements, it does not explicitly disclose a formula that expressly discloses the claimed formula.

[00:02:54] Speaker 01:
by magnesium and aluminum are options, the board actually found that a person of skill would be motivated to select those options, even though there's no express disclosure of the claimed formula.

[00:03:07] Speaker 03:
You don't have a claim to magnesium and aluminum only, a species claim, so to speak.

[00:03:15] Speaker 03:
You just have very broad claims that include magnesium and aluminum.

[00:03:22] Speaker 01:
That's correct.

[00:03:22] Speaker 01:
The claimed formula does include magnesium and aluminum.

[00:03:28] Speaker 01:
The issue is that they are options, and Choi also has those options.

[00:03:35] Speaker 01:
But what the board found is that a person of school would be motivated to select from those options.

[00:03:40] Speaker 01:
Choi allows for an incredible amount of variation.

[00:03:43] Speaker 01:
For that one metal, there are 25 optional elements that can be selected in any combination, one or more.

[00:03:51] Speaker 01:
And so the board had to find that a person of school would be motivated to go into that huge number of combinations and select just magnesium and aluminum in order to match the claimed formula.

[00:04:05] Speaker 01:
And that's the only possible overlap between these two formulas.

[00:04:09] Speaker 01:
And that's like the proverbial needle in the haystack.

[00:04:12] Speaker 01:
You're selecting for choice.

[00:04:14] Speaker 02:
But counsel, wasn't there evidence in the record

[00:04:19] Speaker 02:
Not only was there expert testimony, but there were several references.

[00:04:24] Speaker 02:
There was Tucumoto, which talked about how magnesium is particularly good for doping.

[00:04:32] Speaker 02:
There's Madhavi, another journal article, which talks about how you get better thermal stability by adding magnesium and aluminum.

[00:04:43] Speaker 02:
And then finally, there's the published patent application, Sato,

[00:04:46] Speaker 02:
which is also doping cathode material with both magnesium and aluminum and, in fact, claimed that very composition and claimed four of its application.

[00:04:58] Speaker 02:
So in that way, why isn't all of that substantial evidence to support the board's finding that looking at choice, closed set of choices for elements you would add into your cathode material

[00:05:17] Speaker 02:
substantial evidence for picking magnesium and aluminum.

[00:05:23] Speaker 01:
Right.

[00:05:23] Speaker 01:
So the issue there is, as you noted, those are experimental research papers, Tucumoto and Madhavi.

[00:05:31] Speaker 01:
And the way that the board and ATL's expert used those references was to show that in the background knowledge of a person of skill would be the knowledge to simply go and select magnesium and aluminum.

[00:05:44] Speaker 02:
Tucumoto and Madhavi are... I don't think our court has ever said academic papers published in

[00:05:53] Speaker 02:
Technical journals are just mere research papers that don't count for purposes of understanding the prior art at the time of the invention.

[00:06:06] Speaker 02:
Have we?

[00:06:08] Speaker 01:
But I don't believe we cited a case directly on that question, but there is a difference between what is in the prior art, which is everything in the prior art, and what a person of skill has access to in their background knowledge base.

[00:06:23] Speaker 01:
We cited a couple of cases on that point that there's a difference in scope between those two issues.

[00:06:29] Speaker 01:
We cited, and I'm sorry, I can't pronounce it, but it's the Phillips v. Google case, 948 F 1330.

[00:06:36] Speaker 01:
But also in raise a quarry to show that the level of skill is important because it impacts the amount of background knowledge that a that a person has access to it.

[00:06:47] Speaker 01:
In this case, what we have are three disparate references sort of through time.

[00:06:53] Speaker 01:
that don't show that these issues related to magnesium and aluminum and their doping, I guess their relevance to doping was so well known in the art that a person of skill at the time of the Maxell patents would have known to just select them.

[00:07:10] Speaker 03:
Councilman, you say you're claiming a needle in a haystack.

[00:07:15] Speaker 03:
Well, I might agree that the prior art is a haystack.

[00:07:19] Speaker 03:
But when I look at your claim, that looks like a haystack also.

[00:07:23] Speaker 03:
And the only difference here is a dinitrile versus a mononitrile, which isn't much of a difference.

[00:07:31] Speaker 03:
And the dinitrile is in the same field of endeavor.

[00:07:39] Speaker 01:
I agree there could both be haystacks.

[00:07:42] Speaker 01:
They both have a lot of elements.

[00:07:43] Speaker 01:
But despite the breadth, the only overlap between the two that the board relies upon to render the claimed limitation obvious is the selection of magnesium and aluminum.

[00:07:56] Speaker 01:
So that is the needle in the haystack.

[00:07:59] Speaker 01:
That the board needed to find in order to render obvious the claim limitation.

[00:08:04] Speaker 01:
So even though they're very broad and choice choice broader than claimed won't claim to formula one.

[00:08:12] Speaker 01:
And it needs to, such that the board found it necessary to find whether a person of skill would be motivated to select those elements.

[00:08:22] Speaker 01:
So they are very broad, but the overlap is very, very small and required a logical step, illogical in this case, the person of skill would have selected those.

[00:08:33] Speaker 01:
And I think that that sort of bleeds into the question of overlapping ranges.

[00:08:40] Speaker 01:
The court's jurisprudence on overlapping ranges have made clear that even though there might be some potential overlap that could be found, it is not true in all cases that an overlap necessarily creates obviousness.

[00:08:56] Speaker 01:
That was the case in Moderna TX where the

[00:09:02] Speaker 01:
the prior art or where they were dealing with claims of these acids that had four components.

[00:09:12] Speaker 01:
And because there was a potential overlap that could be found through assuming things about the other three components, that wasn't sufficient to render obvious the

[00:09:24] Speaker 01:
a range for the fourth component.

[00:09:26] Speaker 01:
Similarly here, there was an issue that there was too much work to be done.

[00:09:30] Speaker 01:
You had to make too many assumptions about those other components in order to manufacture an overlapping range.

[00:09:36] Speaker 01:
That's similarly the case here.

[00:09:38] Speaker 01:
First, Choi has to be modified significantly and whittled down.

[00:09:42] Speaker 01:
before you can compare these ranges, because the range and the claim limitation is much different than the claim in the prior arts formula.

[00:09:54] Speaker 01:
They're not directly comparable without some amount of modification.

[00:09:58] Speaker 01:
And the assumptions that go into that include that you can sort of select any of those pieces of choy and set them at any concentration without disturbing the rest of the formula.

[00:10:08] Speaker 01:
And you can do that in any amount.

[00:10:11] Speaker 01:
That's similar to what this court found was inappropriate in Moderna TX.

[00:10:16] Speaker 01:
So there's support for the idea that even though there might be some theoretical overlap between Choi and the claim limitation, it's not sufficient to render obvious the claim limitation.

[00:10:28] Speaker 02:
What about the evidence in the record, though, about selecting a very small amount of magnesium and aluminum?

[00:10:35] Speaker 02:
Again, going back to Tucumoto, going back to Sato, going back and now going to Watanabe,

[00:10:43] Speaker 02:
They all talk about the reasons for why you would have a small amount of magnesium, a small amount of aluminum, and amounts that comfortably fit within the claimed range.

[00:10:55] Speaker 02:
So in that way, it's not some random search.

[00:11:01] Speaker 02:
And maybe even a random search would be OK under routine optimization theory.

[00:11:06] Speaker 02:
But we have arrows pointing to,

[00:11:12] Speaker 02:
to in fact the claimed range for magnesium and aluminum.

[00:11:18] Speaker 02:
The evidence in the record pointing to your claimed range.

[00:11:25] Speaker 01:
So the evidence in the record with respect to Medavi and Tucumoto and Watanabe and Sato, those references were used not in part of this combination, but to understand what a person of skill would have known to do.

[00:11:38] Speaker 01:
And again, there's no indication that those references are within the general background knowledge of a posita.

[00:11:46] Speaker 01:
And the case most on point to this that we cited in our briefing is Randall,

[00:11:51] Speaker 01:
manufacturing as sort of a foil here.

[00:11:56] Speaker 01:
The court there found that the background knowledge made it clear that the limitation at issue, the raising of bulkheads, had become prevalent, had become so well known in the industry that it would have been well known to everybody.

[00:12:08] Speaker 01:
Here, that is the evidence that is lacking.

[00:12:12] Speaker 01:
There are these research papers, but they appear experimental and disparate in time.

[00:12:18] Speaker 01:
There's no evidence and no testimony that those had become so well known as to be in the general background skill of a person of skill at that time.

[00:12:28] Speaker 01:
And I see that I'm into my rebuttal time.

[00:12:30] Speaker 01:
If there are no further questions, I'll reserve the remainder.

[00:12:34] Speaker 03:
We will save your time for you.

[00:12:35] Speaker 03:
Mr. Cox.

[00:12:37] Speaker 03:
Thank you.

[00:12:39] Speaker 00:
May it please the court, I think what we've been discussing, and what I understand the complaints from Maxel to be is that Choi discloses too much.

[00:12:50] Speaker 00:
And I'm not used to that being a complaint about the prior art was is that it discloses other things or other embodiments that are not part of the claim.

[00:12:59] Speaker 00:
Maxell wants to see an express disclosure of the claim formula, an express disclosure of a specific chemical embodiment that includes both MG and AL.

[00:13:09] Speaker 00:
And that's not the standard.

[00:13:10] Speaker 00:
That's not what this court needs substantial evidence for.

[00:13:16] Speaker 00:
There is substantial evidence, as we discussed, that there's plenty of motivation to combine.

[00:13:22] Speaker 00:
And the motivation to combine is way more than, as Maxell argues, just building a better battery.

[00:13:29] Speaker 00:
You see specific motivations in Kim to add this dinitrile additive that's going to produce

[00:13:39] Speaker 00:
a protective layer that enhances the thermal stability, enhances the battery characteristics that both Maxcell and Amprex agree in this appeal are common goals in the battery industry.

[00:13:57] Speaker 00:
And there's, as we discussed, not only do those additional references like Tsukamoto and Sato and Watanabe

[00:14:06] Speaker 00:
teach and suggest that the use of both MG and AL are dopants that a person of skill in the art would want to use in order to improve the thermal stability and characteristics of the battery

[00:14:25] Speaker 00:
We have the testimony from Dr. Vance Shockwick at appendix 1998 paragraph 186 that it was known in the art that these were common co-dopants and

[00:14:37] Speaker 00:
So that testimony alone is sufficient and substantial evidence to support a finding that a person would select MG and AL, but not only is that testimony exists, it's supported by the multiple corroborating secondary references, as well as the admissions of Dr. Lutt that use of aluminum was a known dopant in 2006 at the time of the prior art.

[00:15:06] Speaker 00:
I want to be real clear about what is and isn't disputed in this appeal because it does involve two patents.

[00:15:13] Speaker 00:
With respect to the 019 patent, the claims of that patent don't require MG and AL, including MG alone is sufficient to meet the claims of the 019.

[00:15:25] Speaker 00:
And so in this appeal, Maxell has not disputed

[00:15:29] Speaker 00:
for the 019 patent that the elements of M2 are met.

[00:15:33] Speaker 00:
And so we're already at the point now then, because Choi does disclose one exemplary cathode material that includes magnesium in the claimed concentration of 0.05,

[00:15:49] Speaker 00:
that we're just now talking about whether there's in fact substantial evidence to support a finding that a person of skill in the art would add aluminum to that dopant and optimize to the claimed concentration.

[00:16:06] Speaker 00:
Because aluminum was itself already a well-known dopant, and we have the testimony from Dr. Fenn Schochwick that adding the aluminum enhances the structural stability of the lattice, which is a different benefit than the addition of the magnesium.

[00:16:24] Speaker 00:
We have clearly substantial evidence to support the addition of both magnesium and aluminum.

[00:16:43] Speaker 00:
And lastly, I didn't hear anything from opposing council about this result effective variable.

[00:16:48] Speaker 00:
I think it is undisputed that the selection of the concentration is a result effective variable.

[00:16:55] Speaker 00:
There's testimony below that the selection of MG and AL are, that once you've selected MG and AL, the amount of the concentration that you add

[00:17:11] Speaker 00:
for each is going to affect the conductivity and thermal characteristics of the cathode material, but that adding too much of either dopant negatively affects the total battery capacity.

[00:17:29] Speaker 00:
And so you have an obvious

[00:17:32] Speaker 00:
optimization problem within the ranges disclosed by Choy.

[00:17:37] Speaker 00:
And you have testimony from Dr. Fan Shockwick that's unrebutted and undisputed that a person of skill in the art would know that adding too much metal additive negatively degrades the total battery capacity.

[00:17:52] Speaker 00:
And when you look at the references like

[00:17:57] Speaker 00:
Tsukamoto and Watanabe, Tsukamoto teaches, it tests different concentrations of magnesium and finds that 0.01 has the best conductivity of all the different ranges, concentration ranges of magnesium.

[00:18:12] Speaker 00:
That's within the claimed range.

[00:18:14] Speaker 00:
Sato teaches a total concentration of magnesium and aluminum that's 0.03, which is within the claimed range.

[00:18:22] Speaker 00:
Watanabe teaches a cathode doped with one or more of magnesium, aluminum, and manganese and teaches that that concentration should be at least 0.005, which is again within the claimed range.

[00:18:35] Speaker 03:
So if we had a claim where one metal was aluminum and one was magnesium and that's it, would we have quite a different story?

[00:18:49] Speaker 00:
I want to be clear about the claim that you're asking about.

[00:18:53] Speaker 00:
When you say we have a claim where we have one metal that's magnesium and one metal that's aluminum, are you talking about two different clay?

[00:19:00] Speaker 03:
Well, here what we have is each metal is selected from the group consisting of several, which include aluminum and magnesium, and the second is a group

[00:19:12] Speaker 03:
or metal selected from a group consisting of many, including aluminum and magnesium.

[00:19:19] Speaker 03:
In other words, the haystack, this is the haystack.

[00:19:24] Speaker 03:
They're not claiming a needle, are they?

[00:19:27] Speaker 00:
They are not claiming a needle, but if the needle- If they were, that would be different.

[00:19:32] Speaker 00:
Well, if the needle that they did claim was Mg and Al, I don't think we would have a different result either because that is also disclosed by choice.

[00:19:41] Speaker 00:
Now, if they had claimed other needles about MG and other elements that are not disclosed by Choi, then I think we would be in a situation where we would potentially be needing to combine Choi with other prior art that discloses those other elements.

[00:19:56] Speaker 00:
But because Choi does disclose MG and AL, I don't think it matters if they claim the entire haystack and the entire universe if

[00:20:06] Speaker 00:
the claim is so broad that it encompasses a species that is taught by Choi and that is rendered obvious by Choi to a person of skill in the art.

[00:20:18] Speaker 00:
I think that's still invalidating whether they claim the whole haystack or whether they had a dependent claim that is just one piece of hay that's just MGNAL.

[00:20:26] Speaker 00:
I think that's still fairly disclosed by Choi.

[00:20:28] Speaker 03:
Isn't this case basically a question of dinitrile versus mononitrile?

[00:20:35] Speaker 00:
I think that was how the case started.

[00:20:39] Speaker 00:
I don't think that's how it's been argued today, because I think there really can't be any dispute that there was clear evidence in the record and testimony from Dr. Van Shockwik that using dienite trials has advantageous properties over additional monounite trials.

[00:20:56] Speaker 00:
And this kind of what I regard as kind of a throwaway argument that, oh, because Choi teaches mononitrials, you wouldn't use dinitrials is just based on a speculative throwaway sentence in Choi.

[00:21:08] Speaker 00:
And it's clear that a person of skill in the art would want to use dinitrials because that's what Kim says to use and what teaches a protective layer.

[00:21:19] Speaker 00:
And Dr. Van Shockwick says that the dinitrile has

[00:21:23] Speaker 00:
better, you're able to create more film with less additive, and that that's desirable.

[00:21:28] Speaker 00:
And that furthermore, the Dynite trial does not negatively affect the conductivity in the same way that the Mononite trial does.

[00:21:38] Speaker 00:
I've hit the points that I intend to hit for your honors.

[00:21:41] Speaker 00:
Unless the court has additional questions about this appeal, I'll yield the rest of my time.

[00:21:48] Speaker 03:
Thank you very much, Mr. Cox.

[00:21:51] Speaker 03:
Mr. Schulman has some rebuttal time.

[00:22:02] Speaker 01:
Thank you.

[00:22:04] Speaker 01:
So I want to start by going back to the motivation to combine.

[00:22:07] Speaker 01:
I think you just heard Mr. Cox say that the parties agree that the goal of thermal stability is a common goal in the industry.

[00:22:15] Speaker 01:
And that's part of the issue here that a desire to improve like a common goal is not supported by substantial evidence of the reliance on a general expectation of further improvement

[00:22:27] Speaker 01:
of generic goals is generally insufficient.

[00:22:30] Speaker 01:
So in active video, this court addressed the build something better argument, the motivation there because it was just to build something better.

[00:22:38] Speaker 01:
There is no relation to the specific combination at issue and didn't explain why personal skill would combine the prior elements in the way, the specific way that the invention does.

[00:22:50] Speaker 01:
And here, Troy already discloses thermally stable materials.

[00:22:55] Speaker 01:
And the board recognized that in its decision that a person of skill might further improve this common generic goal is similar to what ran afoul of active video.

[00:23:08] Speaker 01:
It's not enough to want to build something better.

[00:23:10] Speaker 01:
So similarly here, the mere fact of a potential incremental improvement in thermal stability

[00:23:18] Speaker 04:
To what extent does that argument apply in the cases, I believe this is to be, where the elements that we're discussing are volatile in nature.

[00:23:30] Speaker 04:
And it just seems to me that it's more than just a common goal in this particular field of art to achieve greater stability.

[00:23:40] Speaker 04:
It's a necessary goal.

[00:23:42] Speaker 04:
So anytime you have

[00:23:45] Speaker 04:
and increases in instability, then that seems to me to be something desired and something that a person of skill in the art would be pursuing.

[00:24:02] Speaker 01:
I think it is agreed that it is a common goal and generally pursued to thermal stability.

[00:24:09] Speaker 01:
But here, the board's decision relied on the fact that a person of school would want to further improve what is in CHOI, and based that in part on the separate mechanisms of CHOI and KIM, which we similarly briefed, is an issue under cardiac pacemakers, where it was known that there were two treatments for two separate arrhythmia treatments.

[00:24:31] Speaker 01:
But the combination of those two treatments in order to

[00:24:36] Speaker 01:
to treat a mixture was not known.

[00:24:39] Speaker 01:
So even though the issue of mixtures was known and the two individual components were known, that was not sufficient.

[00:24:45] Speaker 01:
And so to hear the idea that it's known that you want to improve thermal stability and you have one way under Choi that already improves thermal stability and one way under Kim that also improves thermal stability, that you would be motivated to combine those two.

[00:25:00] Speaker 03:
Thank you, Mr. Schulman.

[00:25:02] Speaker 03:
That concludes our argument in this case and the case is submitted.