[00:00:00] Speaker 04:
Final case for argument is 23-2285 Maxwell versus Amperex technology.

[00:00:17] Speaker 04:
I guess it's good afternoon.

[00:00:28] Speaker 03:
before I start, I see I have 15 minutes on the clock.

[00:00:31] Speaker 03:
I believe I reserved 3.

[00:00:32] Speaker 04:
Yes, that's why the yellow light will go on.

[00:00:35] Speaker 03:
Okay, I'm sorry.

[00:00:36] Speaker 03:
This is my first time.

[00:00:40] Speaker 03:
Good afternoon, Your Honor.

[00:00:42] Speaker 03:
May it please the court.

[00:00:43] Speaker 03:
My name is Jeffrey Hahn and I'm here representing the

[00:00:48] Speaker 03:
The Amagi prior art reference at issue in this appeal is not analogous art to Maxwell's 251 patent.

[00:00:56] Speaker 03:
ATL found Amagi because they were looking for a reference that had the particle distribution that fit the distribution claimed in the 251 patent without regard to the context of the reference.

[00:01:07] Speaker 03:
This is pure improper hindsight analysis.

[00:01:11] Speaker 03:
The problem and purpose of Amagi bear no resemblance to that of the 251 patent.

[00:01:16] Speaker 03:
Amagi isn't for batteries or battery separators.

[00:01:19] Speaker 03:
Amagi deals with dissipating heat from coils in rotating machines like electric motors or generators.

[00:01:25] Speaker 03:
It uses an epoxy resin to encase the coils and provide electrical isolation.

[00:01:31] Speaker 03:
And then it uses thermally conductive filler particles in the resin to dissipate heat from the coils like a heat sink.

[00:01:39] Speaker 03:
On the other hand, the 251 patent uses heat-resistant fine particles in a layer of the battery separator to withstand heat or eliminate deformation of those particles and keep the separator from shrinking.

[00:01:55] Speaker 03:
The 251 patent says nothing about thermal conductivity of its particles, just as Amagi says nothing about heat resistance of its particles.

[00:02:03] Speaker 03:
that's a person of ordinary skill in the art would not have looked to a Maggi when considering the problem of the 251 patent and a Maggi is not analogous art.

[00:02:13] Speaker 03:
Now, analogous art is determined under two tests, the field of endeavor test and the reasonably pertinent test.

[00:02:21] Speaker 04:
First.

[00:02:22] Speaker 04:
So can I just kind of shortcut this, which is that we've got a substantial evidence review here.

[00:02:28] Speaker 04:
So what can you point us to in the board's decision that you think was just wrong as a factual or a legal matter, I guess?

[00:02:37] Speaker 03:
Yes, Your Honor.

[00:02:38] Speaker 03:
The board's specific findings on its way to concluding that the amagi is analogous art

[00:02:44] Speaker 03:
is filled with misunderstandings of the 251 patent, Amagi, and the reasonable pertinence test.

[00:02:49] Speaker 03:
So first, the board incorrectly found that Amagi is reasonably pertinent because it addresses, quote, how to make a resin with sufficient heat resistance.

[00:03:01] Speaker 03:
The board and ATL make a big deal out of Amagi's disclosure of an epoxy resin that has excellent heat resistance, and Maxell's admission of such.

[00:03:11] Speaker 03:
But the problems of the 251 patent are not addressed by a heat-resistant resin at all, as used in Amagi.

[00:03:17] Speaker 03:
Instead, the 251 patent's problem and solution.

[00:03:21] Speaker 00:
It would help me, and I'm sorry if this is just too elementary.

[00:03:26] Speaker 00:
What does heat resistance mean?

[00:03:30] Speaker 03:
Your Honor, in the 251 patent, it defines heat resistance as the particles avoiding deformation at a certain temperature.

[00:03:39] Speaker 03:
I believe it was something like 200 degrees Celsius.

[00:03:43] Speaker 03:
And thermal conductivity, on the other hand, is a completely separate characteristic of the particles.

[00:03:50] Speaker 03:
Just as if you were in the kitchen, heat resistance is what protects your hand from burning on pots and pans.

[00:03:59] Speaker 03:
heat conductivity is like your cookie sheet, transferring the heat to the cookies.

[00:04:06] Speaker 03:
My oven mitt at home would be very poor at protecting my hand if it were thermally conductive, but it is very good at protecting my hand because it's heat resistant.

[00:04:16] Speaker 00:
I mean, I guess the way you're describing it, and I think maybe the board said this, that they are in a way inverses of each other.

[00:04:27] Speaker 00:
That is, what makes something heat resistant is that it doesn't conduct the heat.

[00:04:33] Speaker 03:
that's not necessarily the case, Your Honor.

[00:04:36] Speaker 03:
These are two different features, and it's completely dependent on the materials.

[00:04:40] Speaker 03:
One thing the board relied on from ATL's expert, Dr. Vince Shulkwick, is his statement that the properties of these aluminum particles would have been the same, regardless of whether you're applying it in a MAGI or you're applying it in the 251 patent.

[00:05:00] Speaker 03:
But under this court's decision in Ray Clay,

[00:05:03] Speaker 03:
The fact that these properties would have been the same for these particles is the wrong analysis.

[00:05:11] Speaker 03:
Because under Clay and under other decisions of this court, the focus needs to be on the context of the prior art reference, the reference as a whole.

[00:05:22] Speaker 03:
Because this is an analogous art test, not an analogous element test.

[00:05:26] Speaker 03:
So we cannot just focus in on the one piece of the reference

[00:05:32] Speaker 03:
that is argued to be relevant to the challenged patent.

[00:05:41] Speaker 01:
What about the other rationale, which is consulting Amagi because of the particle size of the filler it discloses, the AA03?

[00:05:55] Speaker 01:
And I think, as I understood it, the board set it up by saying, well, it was known in the art that to build these resin layers, you would want to be heat resistant.

[00:06:13] Speaker 01:
Particle size matters.

[00:06:16] Speaker 01:
And it was also known to use

[00:06:20] Speaker 01:
or Illumina and then when it comes to Amagi, Amagi is the one that discloses AA03 and tells you what the size distribution is inside of AA03.

[00:06:35] Speaker 03:
Well, you still have to consider whether a MAGI is analogous ART.

[00:06:43] Speaker 03:
You can't just go into a MAGI and pick out the AA03 just because you say that that particle distribution could be used in a battery separator.

[00:06:54] Speaker 01:
But I guess the idea is that it was known in the ART that when your

[00:06:58] Speaker 01:
when you're making these kinds of layers, you want a certain kind of particle.

[00:07:06] Speaker 01:
And Illumina is a type of particle, and you know that the particle size matters.

[00:07:13] Speaker 01:
And so now you're trying to find, I don't know, existing particles that would be of a good size.

[00:07:22] Speaker 01:
And lo and behold, a maggi is something that teaches you about the particle size of AA03.

[00:07:29] Speaker 03:
your honor, respectfully, that doesn't mean that you can just completely discard the analogous art test.

[00:07:38] Speaker 03:
You still need to, under that test, look at these references.

[00:07:41] Speaker 01:
Well, then put a finer point on it.

[00:07:43] Speaker 01:
Therefore, amagi is reasonably pertinent to the particle size concerns that skilled artisan would have in building this kind of separator.

[00:07:53] Speaker 03:
Well, that would only be the case if you are focused in on nothing but the AA03 aspect of Amagi, because nothing else about Amagi or its use of the summa corundum AA03,

[00:08:10] Speaker 03:
is in any way similar to the problem confronted by the 251 patent or the purpose of the 251 patent.

[00:08:19] Speaker 03:
The context in which the AA03 is used is entirely different from that of the 251 patent.

[00:08:28] Speaker 03:
It is not

[00:08:31] Speaker 03:
used to dissipate heat.

[00:08:34] Speaker 03:
Instead, it is used to avoid the deformation and keep this thin film that is the battery separator from shrinking at high temperatures.

[00:08:46] Speaker 03:
It is the heat resistance that matters in

[00:08:49] Speaker 03:
the 251 patent, whereas in Amagi, it only refers to the heat conductivity of the particles and never even considers the heat resistance of the particles because that doesn't matter to Amagi's solution.

[00:09:01] Speaker 01:
Do you dispute the board's finding that

[00:09:05] Speaker 01:
The skilled artisan knew that A03 had been used in battery separators before.

[00:09:10] Speaker 03:
Yes, we do dispute that.

[00:09:11] Speaker 03:
That is our argument with regard to the Shinahara reference.

[00:09:15] Speaker 03:
Shinahara is the only piece of evidence relied upon by ATL's expert, Dr. Van Schalkweg.

[00:09:23] Speaker 03:
to say that a person of ordinary skill in the art would have known as part of his background knowledge that AA03 had been used in batteries.

[00:09:36] Speaker 03:
Without Shinahara, that testimony is unsupported and cannot provide substantial evidence to support the board's finding.

[00:09:45] Speaker 03:
Shinahara

[00:09:47] Speaker 03:
uses in one test sample created by the inventors out of around 10 examples an alumina particle.

[00:09:59] Speaker 03:
It's not described as AA03.

[00:10:01] Speaker 03:
It's described as a semicorondon

[00:10:03] Speaker 03:
and it describes the size, but it doesn't say a 0, 3, but it's 3 lines out of a 24-column specification, which they're trying to argue discloses the background knowledge of a person, ordinary skill in any part.

[00:10:23] Speaker 03:
But the scope of

[00:10:26] Speaker 03:
The knowledge of a person of ordinary skill is not the same as the scope of all prior art.

[00:10:33] Speaker 03:
That's clear from this court's decisions that distinguish the two.

[00:10:37] Speaker 03:
There's no evidence in the Shinahara reference regarding what a person of ordinary skill would have actually known.

[00:10:46] Speaker 04:
But didn't their witness doctor, their expert witness testify about his reading and his understanding about the reference?

[00:10:54] Speaker 04:
And that's what the board deferred to?

[00:10:58] Speaker 03:
His Dr. Van Schalkwick's testimony that there was this background knowledge was based solely on Shinahara.

[00:11:09] Speaker 03:
So otherwise, he doesn't have anything else to base that opinion on.

[00:11:16] Speaker 00:
And so if this quarter was... Just to be clear, is that a necessary part of the reasonable pertinence portion of the analogous art?

[00:11:26] Speaker 00:
That is, that a skilled artisan would know of a particular piece of prior art?

[00:11:35] Speaker 03:
this case, the way that ATL and the board got to trying to argue that Amagi was reasonably pertinent went in part through Shinahara and this background knowledge because their argument is that a person of ordinary skill in the art would have known that AA03 had been used in battery separators and therefore they would have gone out and sought the particle distribution of AA03.

[00:12:04] Speaker 03:
to see if it fit with what was claimed at the 251 pattern.

[00:12:09] Speaker 03:
So here, we would argue that even if that knowledge was in the background knowledge of a person of ordinary skill in the art, which we're saying it's not,

[00:12:26] Speaker 03:
But hypothetically, if it was, that still wouldn't change the reasonable pertinence test or the analogous art test, because you still have to look to see if a MAGI is reasonably pertinent to the actual problems addressed by the 251 patent.

[00:12:45] Speaker 03:
And if you compare this case with the facts of the Clay case, for example, and the gel solution that was at issue there,

[00:12:56] Speaker 03:
The features of that gel were the same, whether it was used in that prior art reference, Sidance, or the clay application.

[00:13:04] Speaker 03:
And this court said, no, that prior art reference is not analogous art because it was used in a completely different context.

[00:13:14] Speaker 03:
And a person of ordinary skill would not have looked to that context in trying to address the problem of the clay application.

[00:13:24] Speaker 04:
As you can tell, your yellow light is on, which means you're in your rebuttal time.

[00:13:28] Speaker 03:
Thank you, Your Honor.

[00:13:29] Speaker 03:
I will reserve the rest of my time for rebuttal.

[00:13:31] Speaker 03:
Thank you.

[00:13:46] Speaker 02:
May it please the court?

[00:13:48] Speaker 02:
I'll pick up with the Shinohara discussion and then we'll take a step back and look at the 251 patent in Omagi.

[00:13:54] Speaker 02:
On the issue of Shinohara, there's absolutely substantial evidence to support what the board found.

[00:14:01] Speaker 02:
And what the board found at APPX 20 is they said, quote, we also credit Dr. Van Schockwick's testimony.

[00:14:08] Speaker 02:
That's our expert's testimony.

[00:14:10] Speaker 02:
We credit his testimony that a procedent would have understood that AA03 had been used in separators, i.e.

[00:14:18] Speaker 02:
that Amagi's particles were in fact used in batteries.

[00:14:22] Speaker 02:
And the point there with Shinohara was not that we needed the side reference.

[00:14:27] Speaker 02:
Dr. Renshawquick's testimony was enough by itself.

[00:14:31] Speaker 02:
It's substantial evidence itself.

[00:14:33] Speaker 02:
about this, but rather than have arguably, potentially conclusory testimony of an expert saying, because I said so, we had him also, he found Shinahara and cited that and said, look, this shows your honor, the PTAB judges, exactly what I'm saying, it's making the same point.

[00:14:52] Speaker 02:
And that supports Amagi's reasonable pertinence to the 251 patent.

[00:14:58] Speaker 02:
Taking a step back, I think it's worth looking at the 251 patent and what it's really talking about, and then in that context, seeing exactly why and how Amagi is easily reasonably pertinent to the problems solved in the 251 patent.

[00:15:16] Speaker 02:
My friend across the aisle said that there were misunderstandings by the board about the 251 patent, but they were not.

[00:15:23] Speaker 02:
The 251 patent focuses on this heat-resistant layer, and it has two components.

[00:15:30] Speaker 02:
It has the heat-resistant fine particles, and they're not just floating around in space.

[00:15:35] Speaker 02:
They're in a binder.

[00:15:37] Speaker 02:
And the patent makes clear that the heat-resistant fine particles are preferably alumina

[00:15:42] Speaker 02:
And one example of the binder is a resin.

[00:15:46] Speaker 02:
So you have these aluminum particles in a resin and the goal of the patent is according to their grade brief, their reply brief, they say it would be fair to say that the 251 patent deals with the problem of how to make a heat resistant layer with sufficient heat resistance.

[00:16:04] Speaker 02:
We agree with that.

[00:16:05] Speaker 02:
The way the 251 patent describes making that heat resistant layer is by having these alumina, these heat resistant alumina particles.

[00:16:13] Speaker 02:
The parties, their experts acknowledge that alumina is heat resistant.

[00:16:16] Speaker 02:
That's not an issue.

[00:16:18] Speaker 02:
The way their patent achieves this goal is by having alumina particles in a resin binder.

[00:16:24] Speaker 02:
That together is the heat resistant layer.

[00:16:26] Speaker 02:
That is exactly what Imagi does.

[00:16:31] Speaker 02:
They say also in their gray brief, this is at page 19, that Imagi, quote, does have a heat-resistant resin containing filler particles, close quote.

[00:16:40] Speaker 02:
Indeed it does.

[00:16:41] Speaker 02:
The filler particles in Imagi are alumina, AA03.

[00:16:46] Speaker 02:
And Amagi says in paragraph 6 that it discloses, quote, an epoxy resin composition containing an epoxy resin and an inorganic filler.

[00:16:58] Speaker 02:
Close quote.

[00:16:58] Speaker 02:
The inorganic filler is the arumid at AA03.

[00:17:02] Speaker 02:
So Amagi is disclosing exactly the same composition.

[00:17:06] Speaker 02:
fine particles made of alumina and a resin layer.

[00:17:10] Speaker 02:
Those that together, that composition is the heat resistant layer of the 251 patent.

[00:17:16] Speaker 02:
Amagi says, they make this explicit, Amagi says in paragraph 10 at APPX 2050,

[00:17:23] Speaker 02:
that, quote, the epoxy resin has excellent heat resistance and low shrinkage.

[00:17:29] Speaker 02:
Those are the very things that were at issue in the 251 patent.

[00:17:34] Speaker 02:
How to have a heat resistant layer that can be sufficiently heat resistant while having low shrinkage.

[00:17:41] Speaker 01:
And do you think that statement in analogy is talking about just the resin itself?

[00:17:47] Speaker 01:
or the entire layer with the aluminum particles inside of it?

[00:17:52] Speaker 02:
I think it could be looked at either way, but either way works sufficiently well for us.

[00:17:57] Speaker 02:
If Imagi, when it says that the resin has excellent heat resistance and low shrinkage rate, if that means just the resin by itself without the particles that Imagi puts in it,

[00:18:09] Speaker 02:
Well, we all know that the aluminum particles are heat resistant by themselves.

[00:18:13] Speaker 02:
Our expert admitted that.

[00:18:14] Speaker 02:
I'm happy to show your honor where.

[00:18:16] Speaker 02:
And so if the resin layer itself is heat resistant, adding the particles would only make it more so.

[00:18:23] Speaker 02:
And I don't believe that's what Omagi is talking about when it's talking about its composition of being the particles in the resin.

[00:18:30] Speaker 02:
And that composition, we argue, has, according to Omagi in paragraph 10, excellent heat resistance and low shrinkage.

[00:18:39] Speaker 02:
That would not make a difference if you construed it that way.

[00:18:43] Speaker 02:
I don't want to belabor things too much, but the board identified multiple reasons, excuse me, multiple problems to be solved by the 251 patent.

[00:18:54] Speaker 02:
One of those was how to make a resin with sufficient heat resistance.

[00:18:58] Speaker 02:
I've already described that resin is the resin with the fine particles in it.

[00:19:01] Speaker 02:
That was the problem and solution achieved by the 251 pattern.

[00:19:06] Speaker 02:
That's the same solution presented in Amagi.

[00:19:10] Speaker 02:
Our expert testified and the board credited

[00:19:14] Speaker 02:
I'll just read it.

[00:19:15] Speaker 02:
It's quote, we find credible Dr. Van Shockwood's testimony that a person of ordinary skill in the art would have understood that the properties of the inorganic filler, that's Illumina, the properties of the inorganic filler used to solve heat related issues in a rotating machine, meaning a maggi, are the same when used to solve the similar heat related issues in batteries.

[00:19:39] Speaker 02:
when we're looking at the scope of analogous arc, and particularly under the reasonable potence test.

[00:19:44] Speaker 01:
I didn't quite understand that statement by the board.

[00:19:48] Speaker 01:
Heat-related?

[00:19:50] Speaker 01:
I mean, Amagi's talking about thermal conductance, thermal conductivity.

[00:19:57] Speaker 01:
And the invention is about heat resistance.

[00:20:01] Speaker 01:
And so it felt a little too loose by the board

[00:20:08] Speaker 01:
kind of throw those two separate heat-related concepts and unify them together in that statement.

[00:20:19] Speaker 01:
I mean, do you agree that thermal conductivity is different from heat resistance?

[00:20:24] Speaker 02:
certainly the related concepts.

[00:20:27] Speaker 01:
How are they related?

[00:20:29] Speaker 02:
If you have high thermal conductivity, that certainly can help with heat resistance.

[00:20:33] Speaker 02:
It does help heat escape the ways to manage excess heat.

[00:20:40] Speaker 02:
And more importantly, to your honor's question, the board disagreed with that argument by friends at Maxell.

[00:20:49] Speaker 02:
because Amagi discloses aluminum particles, and aluminum particles are necessarily heat resistant.

[00:20:55] Speaker 02:
And their expert, we asked him at his deposition, and he agreed, quote, they could be considered a heat resistant particle.

[00:21:01] Speaker 02:
So even if Amagi is talking about conductivity and doesn't specifically say resistance,

[00:21:10] Speaker 02:
the particles themselves are necessarily heat resistant, and their expert agreed with that.

[00:21:15] Speaker 02:
And the board, APPX 31 to 32, mentioned this very thing and found that they are necessarily heat resistant.

[00:21:23] Speaker 02:
And that is substantial evidence.

[00:21:25] Speaker 02:
It's correct, their expert agreed with it.

[00:21:27] Speaker 02:
And so it's certainly substantial evidence to support the finding that when we're looking at a MAGI with its aluminum particles in the resin binder,

[00:21:38] Speaker 02:
doing the same things for a rotating machine that the 251 pattern is doing in the context of batteries.

[00:21:47] Speaker 02:
It's not only reasonably pertinent, it's dead on.

[00:21:50] Speaker 02:
And when this court said in liars that the Supreme Court's decision in KSR directs us to construe the scope of analogous art broadly, that's what this court said.

[00:22:01] Speaker 02:
Now, I don't even think we need it to be broad in order for Amagi to qualify.

[00:22:05] Speaker 02:
But that is also the truth, that this court recognizes post-KSR that the scope of analogous art is to be construed broadly.

[00:22:13] Speaker 02:
And here, when we look at that standard, combined with the substantial evidence standard, and combined with the fact that Amagi is having aluminum particles in a resin and doing it to have excellent heat resistance and low shrinkage rate, just like what the 251 patent is talking about, it's absolutely reasonably pertinent.

[00:22:34] Speaker 02:
I would ask the court to refer, and I'm happy to, I have plenty of time left, but I know today's also gone on long.

[00:22:39] Speaker 02:
I'd be happy to address any questions, but those are the core points I wanted to make.

[00:22:43] Speaker 02:
Thank you very much.

[00:22:57] Speaker 03:
Your Honor, I want to first address the point my friend made regarding the binder in which the 251 patents heat resistant fine particles are mixed in the heat resistant layer.

[00:23:11] Speaker 03:
They tried this in their response brief referring to the binder and tying that to the resin of a mahi.

[00:23:19] Speaker 03:
But I want you to look carefully at the board's decision

[00:23:23] Speaker 03:
of the 2, 5, 1, patent.

[00:23:27] Speaker 03:
It's not pointing at the binder.

[00:23:31] Speaker 03:
It does not rely on the binder.

[00:23:33] Speaker 03:
The board does not.

[00:23:34] Speaker 03:
Instead, the resin that the board points to is a passage in

[00:23:46] Speaker 03:
the types of materials that can make up the heat resistant fine particles.

[00:23:52] Speaker 03:
And in that passage, it describes two possible options in which resins are the fine particles.

[00:24:00] Speaker 03:
it doesn't talk about the fine particles being in a resin in that passage at all.

[00:24:05] Speaker 03:
So the binder is not something the board relied on, and it's not something that can constitute substantial evidence under this court's review because this court can only uphold the board's decision based on what the board actually found and the

[00:24:27] Speaker 03:
I'm going to turn it back to the board's specific findings.

[00:24:30] Speaker 03:
I just want to emphasize because I didn't get a chance to finish before first when the board talked about the fact that the market is reasonably pertinent because it addressed how to make a resin with sufficient heat resistance.

[00:24:45] Speaker 03:
It doesn't

[00:24:50] Speaker 03:
to the 2, 5, 1, patent.

[00:24:52] Speaker 03:
And he just recognizes that it was known that epoxy resins have high heat resistance.

[00:24:58] Speaker 03:
Also when talks about the particular particle size of the he resistant resin something that has pertinent to the 2, 5, 1, patent.

[00:25:09] Speaker 03:
The there is no

[00:25:19] Speaker 03:
And so I see that I'm out of time.

[00:25:23] Speaker 03:
Thank you.

[00:25:23] Speaker 03:
And we ask that the court vacate the board's decision and hold that Amagi is not analogous to the 251 patent.

[00:25:30] Speaker 04:
Thank you.

[00:25:31] Speaker 03:
Thank you both sides.

[00:25:32] Speaker 03:
The case is submitted.

[00:25:32] Speaker 04:
That concludes our proceedings for this morning.