[00:00:00] Speaker 00:
And our next case will be Maxell also versus Amperex 23, 22, 57.

[00:00:12] Speaker 00:
Mr. Schulman, this is a different case.

[00:00:18] Speaker 00:
Joy is the same reference.

[00:00:21] Speaker 00:
No adds a fluoro compound.

[00:00:28] Speaker 00:
I'll give you a case as you see fit, but no need for repetition.

[00:00:32] Speaker 00:
That's unnecessary.

[00:00:34] Speaker 03:
Understood.

[00:00:35] Speaker 03:
Thank you.

[00:00:35] Speaker 03:
That's right.

[00:00:37] Speaker 03:
This is the 035 patent, and it is exceedingly similar to the patents we just discussed.

[00:00:44] Speaker 03:
The only difference is that, like the 446, the 035 requires magnesium with another element.

[00:00:51] Speaker 03:
And second, instead of the dinitrile, as you noted, it requires a fluorine-containing organic solvent.

[00:00:58] Speaker 03:
Same set of issues here, but something I'd like to return to is the selection of magnesium and aluminum here.

[00:01:11] Speaker 03:
Dr. Luck did testify about aluminum.

[00:01:14] Speaker 03:
He testified about aluminum being part of these larger materials, NCA, that were at higher percentages than one might consider to be dopants.

[00:01:23] Speaker 03:
So even though it was known, perhaps, that aluminum could be used in these batteries, I don't think it's accurate that Dr. Luck necessarily testified that they were at the level of dopants.

[00:01:34] Speaker 03:
That's at appendix 2982, page 117 through 22 are the lines.

[00:01:41] Speaker 03:
But along those lines, the selection of magnesium and aluminum, the way that the board then went into the result-effective variable analysis is also not supported by substantial evidence here.

[00:02:10] Speaker 03:
The application of that law of overlapping ranges and routine optimization is inappropriate in this case because of the breadth of CHOI.

[00:02:18] Speaker 03:
These facts here are not typical like those that invite inventors to simply select a narrow range from within a broader range that is disclosed in the prior art.

[00:02:36] Speaker 03:
Again, CHOI's

[00:02:40] Speaker 03:
range is very, very broad.

[00:02:42] Speaker 03:
And under Moderna TX, the assumptions that needed to go in to whittle that down to just magnesium and aluminum are unsupported.

[00:02:53] Speaker 03:
The court in Moderna TX found flawed the assumption that you could set the property, the amount of any one of these components at whatever you want because the property of the overall particle

[00:03:05] Speaker 03:
requires a view of the particle as a whole.

[00:03:09] Speaker 03:
Similarly here, these formulas are dependent on numerous components.

[00:03:15] Speaker 03:
And it's inappropriate to pluck one out and say that we'll set that at any amount that we want.

[00:03:22] Speaker 03:
So the routine optimization that the board engaged in here is not simply a matter of narrowing a large

[00:03:31] Speaker 03:
range to a smaller range, it's first making a bunch of assumptions about how you would get there to select magnesium and aluminum.

[00:03:38] Speaker 03:
So that sort of breadth and those assumptions take it out of the typical case and put it in a case more like genetics, where the options in the prior are numbered in the tens of thousands, 68,000 potential options,

[00:03:52] Speaker 03:
And the court reason that that breadth coupled with the fact that in the prior, there were different ways to select those proteins, different locations that the proteins could be and the allowance of substitutions of those underlying

[00:04:06] Speaker 03:
proteins, that disclosed a range that was so broad that it encompassed a large number of compositions that required a non-obvious invention.

[00:04:15] Speaker 03:
Similarly, here, a choice formula is so broad.

[00:04:19] Speaker 03:
And the differences between the formulas include the selection of elements, their required elements, and then their allowed compositions.

[00:04:28] Speaker 03:
That results in a vast number of compositions, similarly to the genetics.

[00:04:32] Speaker 03:
where you can't, it's too broad.

[00:04:35] Speaker 03:
It encompasses too many distinct options.

[00:04:38] Speaker 00:
This is- What about your claim one, M2 represents magnesium and another element from titanium, zirconium, germanium, niobium, et cetera.

[00:04:49] Speaker 00:
And then M3, I see two lines of elements.

[00:04:55] Speaker 00:
There must be 20 elements there.

[00:04:58] Speaker 00:
Right.

[00:04:58] Speaker 00:
That's a broad claim.

[00:05:00] Speaker 03:
It's a very broad claim, but the alleged overlap between that claim and the prior art is very, very small.

[00:05:09] Speaker 03:
And to arrive at that, and to arrive at that tiny overlap from the broad prior art, that's the issue that the board addressed.

[00:05:20] Speaker 03:
And that's the part that we have trouble with under the jurisprudence of genetics and matter, dinner and TX.

[00:05:26] Speaker 03:
To get to that tiny overlap, you have to select from such a vast set of options.

[00:05:31] Speaker 03:
The cases where that are more typical are cited by the board here, in Ray Peterson and in Ray Harris.

[00:05:38] Speaker 03:
You look at those and what you see is in the claimed, in the claims, you have a series of metallic elements and compositions.

[00:05:47] Speaker 03:
And then you go into the prior art and every single one of the elements that is claimed is present in the prior art in an overlapping range that overlaps with the claim.

[00:05:57] Speaker 03:
There's a direct one-to-one comparison all the way down the line.

[00:06:01] Speaker 03:
That comparison is not possible here, because to your point, the claim limitation is very broad, choice is very broad.

[00:06:08] Speaker 03:
And if you try to do a one to one comparison between the two of them, most of that comparison is empty.

[00:06:14] Speaker 03:
It's only this one small theoretical overlap.

[00:06:17] Speaker 00:
You're saying the haystacks are different.

[00:06:20] Speaker 03:
The haystacks are mostly different, largely different.

[00:06:24] Speaker 03:
There are a couple of pieces of hay intermingled amongst the stacks.

[00:06:28] Speaker 03:
And that's the problem, is how do you find those two pieces?

[00:06:32] Speaker 03:
Is there a motivation to do that?

[00:06:34] Speaker 02:
And I thought we explored that in the prior appeal about how there was all sorts of references that show why you would have very limited concentrations of magnesium and aluminum.

[00:06:49] Speaker 02:
What expert testimony do you have that indicates, number one, wow, this concentration range is really broad, 0 to 0.5 or whatever the range is?

[00:07:04] Speaker 02:
And likewise, is there any expert testimony that says, no, you wouldn't have just a very small amount of magnesium and aluminum?

[00:07:17] Speaker 02:
that fits within this claimed range.

[00:07:20] Speaker 02:
A skilled artisan would not be motivated to go down that far.

[00:07:28] Speaker 02:
Is there any expert testimony like that?

[00:07:31] Speaker 02:
I didn't see any.

[00:07:34] Speaker 03:
A doctor looked in his declarations does state that the broad range of Troy is too broad for a person is still skilled to want to have gone in and selected the very narrow range of the claim.

[00:07:47] Speaker 03:
I believe he also testified to that.

[00:07:49] Speaker 03:
And I apologize, I lost the first part of your question was the testimony regarding.

[00:07:55] Speaker 02:
Well, first of all, that this range of concentration in Troy

[00:08:03] Speaker 02:
is really extraordinarily broad.

[00:08:08] Speaker 02:
I didn't see something that said this is a very broad range.

[00:08:14] Speaker 02:
I know you say that to us, but I didn't see the experts say that to us, nor did I see something that said you would not narrow down choice-disclosed range to something within the claimed range in spite of the

[00:08:33] Speaker 02:
references that disclose to the contrary.

[00:08:43] Speaker 03:
What Dr. Luck did include in his declaration was, I think at paragraph 40, that's on appendix 3369, that the larger range of choy provides, and choy itself provides no reason for a person of skill to select the smaller amount of magnesium that falls within that range.

[00:09:06] Speaker 03:
So I take your point.

[00:09:09] Speaker 03:
I don't think there was any specific testimony that you are looking for.

[00:09:14] Speaker 03:
But the breadth of Troy is not just in the numerical range itself.

[00:09:20] Speaker 03:
It's also in the selection of the elements.

[00:09:23] Speaker 03:
And I believe also in Dr. Luck's declaration, he describes the breadth of that selection.

[00:09:31] Speaker 03:
And so the breadth, again, the breadth is the first you have to select from amongst one up to 25, one or more of up to 25 elements to satisfy choice M. And then you have to figure out the concentration of that total amalgamation of those elements.

[00:09:50] Speaker 03:
And so that's the breadth.

[00:09:55] Speaker 03:
That's the breadth of choice.

[00:09:58] Speaker 00:
I want to save the rest of your time.

[00:10:01] Speaker 03:
I'd like to hit one more point, if I could, which is that even if you were to accept sort of the overlapping ranges framework, the result effective variable analysis here also has a couple of issues because the board limited its analysis to two of the potential variables of CHOI.

[00:10:22] Speaker 03:
If you accept that magnesium and aluminum are result effective variables,

[00:10:27] Speaker 03:
that requires accepting that the remaining components of CHOI are also result-effective variables.

[00:10:34] Speaker 03:
And that's an issue because under Moderna TX, again, there were four components to that particle, and showing that one of them was result-effective required an understanding that all four were result-effective.

[00:10:48] Speaker 03:
And so what was lacking there was a showing that reaching the claimed range for all four of those result effective variables would have been achievable through routine optimization.

[00:10:59] Speaker 03:
Similarly here, Troy has multiple components beyond magnesium and aluminum, including the base element, excuse me, the base metal.

[00:11:08] Speaker 02:
I thought Moderna TX was about the problem that we could not reasonably discern what the disclosed range would be.

[00:11:18] Speaker 02:
given all the moving parts and dynamics of the different elements of the claimed composition.

[00:11:27] Speaker 02:
It does.

[00:11:29] Speaker 02:
And here we do have a disclosed range in Choi.

[00:11:33] Speaker 02:
It's very specific about what its respective m would be.

[00:11:37] Speaker 02:
It's 0 to 0.5.

[00:11:42] Speaker 02:
Right.

[00:11:43] Speaker 03:
Moderna TX actually does both.

[00:11:46] Speaker 03:
First, it discusses how it's inappropriate to assume what the range of that one of four components is, even though all four add up to 100%.

[00:11:57] Speaker 03:
It talks about that being a problem based on the assumptions that are made to do that.

[00:12:02] Speaker 03:
And then it also talks about

[00:12:05] Speaker 03:
the result of active variable analysis and how it was also inappropriate to show just one variable amongst four was the result of active.

[00:12:13] Speaker 03:
And similarly here, CHOI has multiple elements that add up to its total formula.

[00:12:18] Speaker 03:
And the board only accounted for magnesium and aluminum, setting aside the base metals, setting aside the X, and just assuming you could optimize around just magnesium and aluminum.

[00:12:32] Speaker 03:
So with that, thank you.

[00:12:33] Speaker 03:
I'll reserve the remainder.

[00:12:35] Speaker 00:
We will save it for you.

[00:12:37] Speaker 00:
Mr. Cox, please.

[00:12:40] Speaker 01:
Thank you, Your Honor.

[00:12:41] Speaker 01:
So first, I want to address the Moderna TX case, as Your Honors indicated.

[00:12:47] Speaker 01:
That case was a different case entirely than what we have here.

[00:12:51] Speaker 01:
That case involved a series of unsupported assumptions about three different ranges that the parties in that case

[00:13:03] Speaker 01:
had to argue were result effective variables in order to get to an undisclosed range.

[00:13:10] Speaker 01:
The range that was claimed in that patent was not disclosed in the piece of prior art.

[00:13:18] Speaker 01:
And so they had to get to what that range would be by a series of inferences involving the other three lipids.

[00:13:25] Speaker 01:
So they said, okay, these all add up to 100.

[00:13:28] Speaker 01:
You know, lipid A discloses this range, lipid B will assume is this range, lipid C will assume is this range.

[00:13:36] Speaker 01:
And so that was a range that was not disclosed.

[00:13:39] Speaker 01:
Whereas here, the range of M2 in CHOI is clearly disclosed.

[00:13:44] Speaker 01:
It's clearly between 0 and 0.5, which there's no dispute, fully overlaps with the claimed range in this patent.

[00:13:54] Speaker 01:
The argument that all of the other 23 elements are result-effective variables and that there should have been testimony about how to adjust those was not raised before the board.

[00:14:08] Speaker 01:
That's a new argument that we're seeing in this appeal, and we believe that's been forfeited.

[00:14:12] Speaker 01:
But even in the event that it hasn't been forfeited, there is substantial evidence for why a person of skill in the art would

[00:14:19] Speaker 01:
select zero of any of those other 23 elements due to the size of those elements, due to the oxidation states of those elements, and due to the cost.

[00:14:30] Speaker 01:
All three of which are factors that Dr. Luck admitted are considerations that a person of skill in the art would consider when determining which dopants to use.

[00:14:40] Speaker 01:
The Peterson case

[00:14:43] Speaker 01:
was a case that involved an overlapping range.

[00:14:46] Speaker 01:
And even though the patent owner in that case showed unexpected results for 2% rhenium, because the claimed range was 1% to 3% rhenium, the court found that that evidence of unexpected results or teaching away was insufficient to rebut the presumption that a disclosed range

[00:15:13] Speaker 01:
of a result effective variable leads to the kind of optimization that is routine and that scientists routinely employ in order to get to the desired amounts.

[00:15:24] Speaker 01:
My colleague said that Dr. Lutz said that the amount of aluminum that was common and used in the prior art was not a dopant.

[00:15:34] Speaker 01:
And while he did repeat that multiple times in his deposition, that the aluminum concentration at issue in that, what he admits was a prior art product and was commonly used was 0.05.

[00:15:49] Speaker 01:
And so whether he agrees or disagrees that a 0.05 concentration is a dopant or something else, what is without question is that the concentration of aluminum in that prior product was within the claimed range.

[00:16:04] Speaker 01:
And that's at appendix 3478 to 3479.

[00:16:08] Speaker 01:
What we see here is we have

[00:16:12] Speaker 01:
overlapping ranges, we have absolutely no evidence presented of criticality teaching away or unexpected results.

[00:16:21] Speaker 01:
The evidence below shows that using a concentration at these lower ranges would have been desirable, would have been preferable,

[00:16:36] Speaker 01:
And I did not hear any argument from my colleague about the fluorine-containing additive of no being a reason to distinguish this appeal from the appeal that we just heard.

[00:16:52] Speaker 01:
And for that reason, I think these cases should rise and fall together.

[00:16:56] Speaker 01:
And frankly, I think they should rise together for us.

[00:17:02] Speaker 01:
The last thing I want to say is that we have admissions again that improving thermal stability was a common goal and and as Your honor mentioned it's not these are volatile materials and we're talking about battery safety.

[00:17:20] Speaker 01:
We're talking about reducing

[00:17:22] Speaker 01:
Battery overheating in the event of gas generation at the perimeter of the cathode things that whether through physical impact or overheating could lead to explosions.

[00:17:37] Speaker 01:
And so, of course, for that kind of reason there the

[00:17:42] Speaker 01:
justification for seeking to always improve the thermal stability and the physical safety of the battery is as a common goal.

[00:17:53] Speaker 01:
And this, again, is not a build a better mousetrap type of case.

[00:17:58] Speaker 01:
The mechanism for enhancing the safety of the battery by creating a protective layer around the anode that McMillan says

[00:18:12] Speaker 01:
Is created when you use a flooring create additive together in a battery electrolyte solution?

[00:18:19] Speaker 01:
Is is substantial evidence supported by the testimony by dr. Van Schalkwick that you would seek to combine these References Well, there would be motivation to combine that's correct, you're on I

[00:18:41] Speaker 01:
Lastly, you know, the concession by council before the board that there is nothing in the record that says that thermal stability could not be further improved.

[00:18:53] Speaker 01:
That was about dynitrials, but it again relates here to adding fluorine to the cathode of choy.

[00:19:05] Speaker 01:
Unless your honors have further questions, I'll ask that the court affirm the decisions below.

[00:19:14] Speaker 00:
No one loses points by not using up all their time.

[00:19:18] Speaker 00:
Mr. Shalman has a little rebuttal time.

[00:19:25] Speaker 03:
Yes.

[00:19:26] Speaker 03:
Thank you, Your Honor.

[00:19:27] Speaker 03:
Circling back about Dr. Luck's testimony, I also wanted to point out another reference of his in his declaration.

[00:19:35] Speaker 03:
He stated at appendix 3369 at paragraph 39 that limiting the amount of the magnesium containing M2 to the small range of 0.002 to 0.05 is critical to the 035 patent.

[00:19:53] Speaker 03:
The last point here is, as we heard again here, everybody agrees that these are common goals, that thermal stability is a common goal.

[00:20:06] Speaker 03:
And under active video and cardiac, simply having the desire to further improve something is insufficient to form motivation to combine.

[00:20:15] Speaker 03:
And lastly, the council's remark that there's nothing to show that thermal stability couldn't be further improved.

[00:20:25] Speaker 03:
That's not to say that just because something could be further improved, that there is intrinsically a motivation to combine those two items.

[00:20:33] Speaker 03:
And that was the issue addressed in active video.

[00:20:36] Speaker 03:
Just because it could be better is insufficient to form a motivation to combine.

[00:20:41] Speaker 03:
And so in closing,

[00:20:43] Speaker 03:
Thank you for your time and Maxel urges you to overturn these findings and return the issue to the board.

[00:20:51] Speaker 03:
Thank you.

[00:20:52] Speaker 00:
Thank you to both counsel.

[00:20:54] Speaker 00:
The case is submitted and that concludes today's arguments.

[00:20:59] Speaker 01:
Thank you, Your Honours.