[00:00:00] Speaker 01: Our next case for argument is 23-1937 Shell versus Scientific Design. [00:00:06] Speaker 01: Mr. Seed, please proceed. [00:00:25] Speaker 04: May it please the Court, Nathan Speer, on behalf of the Appellate Shell. [00:00:29] Speaker 04: The Board's final decision here, finding the claims in three shell patents to be obvious, should be, at a minimum, vacated. [00:00:36] Speaker 04: The Board's determination suffers from a fundamental flaw, its premise on an argument that scientific design never advanced and for which substantial evidence is lacking. [00:00:46] Speaker 04: The claims on appeal relate to a catalyst carrier, which has specific physical characteristics. [00:00:51] Speaker 04: These include surface area and a pore size distribution, which is the size of the pores within the carrier. [00:00:57] Speaker 04: It's undisputed that those two limitations are interdependent. [00:01:01] Speaker 04: A change to one will impact the other. [00:01:03] Speaker 04: In their petition for ground four, they argued the claims were obvious over two references, the Lockermier reference and the Lew reference. [00:01:13] Speaker 04: The Lockermier discloses all the limitations, but it doesn't disclose the claim pore size distribution, and the Lew reference discloses the claim pore size distribution, but it doesn't disclose the claim surface area. [00:01:24] Speaker 04: They argued that a person skilled at reading those two references would take the pore size distribution of certain carriers in lieu and use them in Lockremier. [00:01:32] Speaker 04: What they didn't account for in their petition, ground four, they never accounted for the interdependent nature of those two variables. [00:01:38] Speaker 04: The change that they were proposing was going to have a change in surface area and they never accounted for that. [00:01:42] Speaker 04: Despite that not being advanced in their petition, the board at page 27 of its final decision made the finding that, quote, a person of ordinarian skill would have been motivated and able to maintain the surface area of the Lockmeyer carrier within the claimed range. [00:01:57] Speaker 04: That is a critical fact finding, given the interdependent nature of those variables. [00:02:02] Speaker 04: Without that finding, the claims could not have been found obvious. [00:02:05] Speaker 04: And it's a finding that's based on an argument that the board came up with, and it was not advanced by the petitioner. [00:02:11] Speaker 04: The petition's ground four is on eight pages. [00:02:13] Speaker 04: It's appendix 313 to 322. [00:02:14] Speaker 04: I guess that's nine pages, my apologies. [00:02:17] Speaker 04: And I invite the court to look at that. [00:02:19] Speaker 04: There's nothing in there about maintaining a surface area of Lochvermire when you make this combination. [00:02:24] Speaker 04: It has a motivation to combine section at appendix 315 to 317. [00:02:29] Speaker 04: The entire motivation to combine is focused on why POSA allegedly would have used the pore size distribution of lube in Lockermeyer. [00:02:36] Speaker 04: It never once addressed the surface area. [00:02:38] Speaker 01: When they cite paragraphs 167 and 168 of Dr. Haller's declaration and 163 of his reply declaration, don't you think that that is directed to maintaining the surface area? [00:02:51] Speaker 04: The board, Your Honor, is that the question? [00:02:54] Speaker 01: Yes. [00:02:54] Speaker 04: Yes. [00:02:55] Speaker 04: So I think that they thought that that was going to the surface area. [00:03:00] Speaker 04: As we walk through in our opening brief, those paragraphs don't address that issue whatsoever. [00:03:04] Speaker 04: Paragraphs 167 and 168, they address only pore size distribution, they don't address surface area. [00:03:11] Speaker 04: In their response group, they haven't really disputed that 167 and 168 are about pore size distribution, kind of the fundamental motivation behind what they advanced. [00:03:19] Speaker 04: in their ground floor. [00:03:20] Speaker 04: 163, which is from their reply declaration, not from the declaration they submitted with the petition, 163 does say at the very end that Opposa would have made the claim carriers with routine experimentation. [00:03:34] Speaker 04: That paragraph, however, focuses again on poor size distribution. [00:03:37] Speaker 04: It doesn't mention surface area at all. [00:03:40] Speaker 04: the statement claimed carriers is a conclusory assertion by an expert, which is not substantial evidence, even if it somehow is interpreted to relate to surface area. [00:03:50] Speaker 04: So the three paragraphs that the board actually cited do not provide any substantial evidence support for the finding that the opposing would have had a reason to maintain Lockermier's surface area within the claim variant. [00:04:02] Speaker 04: It's simply not there. [00:04:03] Speaker 04: And when we pointed that out in our opening brief, they said, well, yeah, you need to look at the next paragraph. [00:04:08] Speaker 04: In the next paragraph of the board's decision, it said, we've considered the full record and conclude that POSA would have had reasonable expectation of success in reaching the claimed invention. [00:04:17] Speaker 04: But we did address that in our opening brief. [00:04:18] Speaker 04: We walked through in detail each and every paragraph that the board had in its string citation. [00:04:23] Speaker 04: And those paragraphs all go to foresight distribution and why, allegedly, it would have been obvious to modify the Lockermier reference in the first instance. [00:04:30] Speaker 04: They never go to surface area, which is the critical issue. [00:04:33] Speaker 04: And a whole slew of the paragraphs would point out, deal with dependent claims that have nothing to do with this issue at all. [00:04:39] Speaker 04: As best we could surmise, the board went into the declaration and looked for the phrase reasonable expectation of success, because that's the commonality of all the cited paragraphs. [00:04:47] Speaker 04: So nothing that the board cites, whether it's the three paragraphs that they actually cite to support their finding or the numerous other paragraphs that they cite as evidencing the full record. [00:04:55] Speaker 04: None of it gets the surface area. [00:04:57] Speaker 04: And that's because scientific design never made the argument. [00:05:00] Speaker 04: And therefore, it's unsurprising that there's no evidence in the record to support it. [00:05:03] Speaker 04: Their reply brief, when we raise this issue, one would think that they might have made the argument in the reply brief, but the reply brief is that appendix [00:05:12] Speaker 04: 6225 to 6229. [00:05:13] Speaker 04: And again, you can look at those pages. [00:05:16] Speaker 04: There is nothing in there on surface area. [00:05:18] Speaker 04: It's all focused on whether or not a person's building art would have been motivated to modify Lockermier in the first instance. [00:05:24] Speaker 04: We disputed that hotly below, and there's a lot of fights on that. [00:05:27] Speaker 04: We don't dispute it here on appeal because at the end of the day, it doesn't matter because if you make the modification that they're proposing, if you're changing Lockermier's carrier so that it has loose surface area, or sorry, loose foresize distribution, that's going to impact Lockermier's surface area. [00:05:42] Speaker 04: And the only evidence in the record as to what a carrier has if it uses Lue's foresight distribution is Lue itself. [00:05:48] Speaker 04: Lue reports three different carriers with foresight distribution. [00:05:52] Speaker 04: Carrier S has a foresight distribution of 1.24. [00:05:54] Speaker 04: That's the closest that they can get to 1.3. [00:05:57] Speaker 04: It's not within the claimed range. [00:05:59] Speaker 04: Lockermier itself, at paragraph 6, [00:06:01] Speaker 04: says if it's above 1.0, we're in a preferable range. [00:06:04] Speaker 04: So there's nothing there to tell a person who ordered a skill in the art why they would not be happy with the 1.24 that Loo already is providing with his poor size distribution. [00:06:14] Speaker 04: Which, given that the whole combination is premised on the idea that the poor size distribution of Loo is specially optimized, let's use that. [00:06:23] Speaker 04: Once you use it, you get to 1.24 and that's not within the claim range. [00:06:26] Speaker 04: They had no argument that a person of skill in the art would have simultaneously modified the pore size distribution again to somehow tweak it to get it to 1.3. [00:06:36] Speaker 04: It's just not an argument that was raised in the petition, and therefore it's an error for the board to have relied on it. [00:06:42] Speaker 04: And as we've already talked about, because it was in advance, there's no substantial evidence to support it. [00:06:47] Speaker 00: Council, going back to one of the declarations that you talked about a little bit earlier, if you look at, I believe it's appendix page 2793, and you were talking about paragraph 163. [00:06:57] Speaker 00: Yeah. [00:06:58] Speaker 00: I know that you point out that this particular paragraph does specifically talk about poor size distribution, but I'm wondering if in the rest of the sentence where it talks about a process for making the carrier that's virtually identical to the process disclosed in the 390 patent, whether or not that sort of [00:07:19] Speaker 00: broad language could also encompass the other portion that you feel like was not being addressed with respect to the 390 patent. [00:07:29] Speaker 04: With all due respect, I don't see how that earlier, a reference to Lockermeyer, Lockermeyer was earlier work of the same inventors, the fact that they are using a similar process. [00:07:42] Speaker 04: I don't see how that gets to the critical finding that we're focusing on here, which is that a person with skill in the art had a reason to keep Lockermeyer's surface area above 1.3. [00:07:53] Speaker 04: We've seen their petition, their reply brief, and their response brief in this appeal. [00:07:59] Speaker 04: Today, I have no idea what they think is the reason that a person of skill in the art, not looking at our claim, 1.3 is in our claim, if we put that aside, as we're supposed to in the obvious in this context, there's no reason why a person of skill in the art would have been motivated to maintain Lockermeyer's surface area at some level above 1.3. [00:08:15] Speaker 04: It's simply not there, and respectfully, I just don't see how 163 [00:08:20] Speaker 04: can be reasonably interpreted to support that specific finding of a reason that motivated POSAs to further modify the hypothetical Lockermier Carrier so that it had a surface area that fell within the claim range. [00:08:37] Speaker 04: Unless there's any questions I can reserve my time for. [00:08:40] Speaker 01: All right, that'd be great Ms. [00:08:41] Speaker 01: Stetson. [00:08:48] Speaker 02: Good morning, Your Honors. [00:08:48] Speaker 02: May it please the Court? [00:08:49] Speaker 02: My name is Kate Stetson. [00:08:50] Speaker 02: I represent Scientific Design. [00:08:52] Speaker 02: I want to iron out a couple things that I think are the relevant foundations for this argument. [00:08:59] Speaker 02: And one of them is what we're talking about is the motivation to combine, which we know is motivation to combine with a reasonable expectation of success. [00:09:07] Speaker 02: That's the language. [00:09:09] Speaker 02: Reasonable expectation of success in practicing the claimed invention. [00:09:12] Speaker 02: That's this Court's decision in Pfizer versus Apotex. [00:09:15] Speaker 02: So what does that mean in this case? [00:09:17] Speaker 02: What that means is, achieving the claimed invention is combining Lackemeyer and Lew with the expectation that you would optimize within those ranges of surface area and pore size distribution and nested pore size distribution to achieve the claimed invention. [00:09:34] Speaker 02: Now Shell's core argument, which we heard again four or five times today, is that scientific design never explained [00:09:41] Speaker 02: how a person of skill in the art would have been motivated to maintain the surface area of the catalyst. [00:09:46] Speaker 02: You heard Mr. Speed say that. [00:09:48] Speaker 02: And that's what Shell refers to as the critical fact for this appeal. [00:09:52] Speaker 02: It's a brief 37. [00:09:54] Speaker 02: A carrier's pore size distribution and surface area are interdependent. [00:09:59] Speaker 02: But this court also said in Pfizer, and this is the key fact, [00:10:04] Speaker 02: Obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art, so long as there was a reasonable probability of success. [00:10:12] Speaker 02: And that is exactly what the factual evidence showed here and what the board concluded. [00:10:18] Speaker 02: Poor size distribution and surface area are interdependent to some degree. [00:10:23] Speaker 02: But then the question is, could a person of skill in the art [00:10:27] Speaker 02: was a person of skill in the art capable of optimizing those ranges to achieve the claim. [00:10:32] Speaker 02: But where did you argue it? [00:10:33] Speaker 01: I mean, his argument is you didn't make this argument. [00:10:36] Speaker 01: I understand the argument and understand what the board found, but his concern is raised to us properly, where is this argument in this petition? [00:10:46] Speaker 02: Let me point you to all the places we made this argument. [00:10:49] Speaker 02: But I want to add one caveat. [00:10:51] Speaker 02: What Mr. Speed is describing as the argument presumes a fact that was found against him. [00:10:58] Speaker 02: So what Mr. Speed describes as the argument, you didn't show me a reason to maintain the surface area of Lockemeier when you dropped in that nested pore sizes of lube. [00:11:09] Speaker 02: What the evidence showed [00:11:11] Speaker 02: over and over again, starting with the petition, and you can look for example, we'll start at appendix 297. [00:11:18] Speaker 02: The evidence showed that because Lachemeyer sketched out two important things, right? [00:11:23] Speaker 02: Lachemeyer sketched out the surface area and the wider range of pore size distribution. [00:11:30] Speaker 02: Then the question was, if you added Lew to that, and remember, Lachemeyer specifically says, [00:11:36] Speaker 02: You should experiment with all these ranges to find the optimal range. [00:11:41] Speaker 02: So you've got that motivation to combine, sometimes the hardest thing already in the record. [00:11:45] Speaker 02: So the question is, when you add Lew to that, does something change? [00:11:50] Speaker 02: And this was the issue in the case. [00:11:53] Speaker 02: Mr. Speed is just freezing in a different way. [00:11:55] Speaker 02: So starting in appendix 297, what the petition notes is that because the 390 patent, the challenge patent, recites an open-ended range of at least 1.3 meters squared per gram for surface area and an upper limit of infinity [00:12:14] Speaker 02: A POSA would have been able to achieve the claim surface area with a simple design choice, or to the extent necessary, routine optimization. [00:12:22] Speaker 02: So that's Appendix 295, 297. [00:12:24] Speaker 02: You can also see that in our reply at 2491. [00:12:28] Speaker 02: You can see it at the Haller reply at 2755. [00:12:33] Speaker 02: What that means, as we explained, is under the patent you can also arc the surface area indefinitely without changing the relevant core size distribution. [00:12:42] Speaker 02: Also in the patent itself. [00:12:44] Speaker 01: I think I'm missing it. [00:12:45] Speaker 01: You directed me to 297. [00:12:48] Speaker 01: I'm sorry if I missed it. [00:12:49] Speaker 01: Where on 297 does it articulate this point about, [00:12:58] Speaker 01: maintaining the surface area. [00:13:00] Speaker 02: So 297 is in a section entitled surface area, which begins on page, the bottom of page 294. [00:13:08] Speaker 02: And we discuss in 295 to 296. [00:13:12] Speaker 02: the nature of the prior disclosure's preferred surface area. [00:13:16] Speaker 02: And on 297, what I was referencing. [00:13:18] Speaker 01: And what is this document? [00:13:19] Speaker 01: What's 297? [00:13:20] Speaker 01: Is this your petition? [00:13:21] Speaker 02: This is the petition. [00:13:22] Speaker 01: OK. [00:13:23] Speaker 02: Go ahead. [00:13:23] Speaker 02: So this was, and I started here because this was raised from the first and then repeated in the how of declaration and the reply. [00:13:31] Speaker 02: What I was mentioning on 297 is that the 390 patent, and this is also on 295, as I mentioned, has an upper limit of infinity. [00:13:41] Speaker 02: That's page, that's line two of page 295. [00:13:45] Speaker 02: We mentioned it again on page, line six of page 297. [00:13:50] Speaker 02: Then further on in page 297, APOSA would have been able to achieve the claimed range of at least 1.3 meters squared per gram. [00:13:59] Speaker 02: That's the surface area. [00:14:01] Speaker 02: with a simple design choice or to the extent necessary routine optimization. [00:14:07] Speaker 02: That's what I was referring to. [00:14:08] Speaker 02: So if you start from. [00:14:09] Speaker 00: Can you take us now to the portions of the Haller declaration where the surface area aspect is also discussed because at least opposing council was arguing that that is not discussed there. [00:14:20] Speaker 02: Certainly. [00:14:21] Speaker 02: And let me give you the pages and then I'll explain what the daylight is between me and Mr. Smith. [00:14:27] Speaker 02: The relevant pages are reply declaration 2229. [00:14:31] Speaker 02: to 2230. [00:14:34] Speaker 02: You can also find at appendix 2222 the fact that the surface area is indistinguishable and on page 2225 would not cause any difference from the surface area of the 390 patent. [00:14:50] Speaker 02: Page 2794, paragraph 166, [00:14:53] Speaker 02: A POSA would have modified Lachemeyer with loose core size distribution, quote, while keeping the surface area above one meter squared per gram, which refers to Lachemeyer's disclosed range. [00:15:06] Speaker 02: You can also look at page 694 to 697, which is the Haller opening declaration, and Appendix 376, which is Lachemeyer. [00:15:15] Speaker 02: Here is the daylight between me and Mr. Speed. [00:15:19] Speaker 02: The daylight has to do with that critical fact. [00:15:22] Speaker 02: The critical fact that Mr. Speed talks about is what I mentioned earlier, a carrier's pore size distribution and surface area are interdependent. [00:15:30] Speaker 02: On that, we all agree. [00:15:31] Speaker 02: Our experts agree. [00:15:33] Speaker 02: But look at what Mr. Speed does in his brief with that at pages 3, 5, 9, 21, 22, and 32. [00:15:40] Speaker 02: What he says is interdependent, quote, such that a POSA would not assume that a carrier's pore size distribution could be modified without impacting the carrier's surface area, close quote. [00:15:52] Speaker 02: That's at page three. [00:15:53] Speaker 02: So that additional fact is the problem here, because that is the fact that Haller, Dr. Haller, testified repeatedly against. [00:16:05] Speaker 02: There was no problem with working within that nested inner range of pore sizes within the structure of the outer range and the surface area that Lockermeyer described. [00:16:17] Speaker 02: And a reasonable, a skilled person in the art would have just, as Lackemeyer instructs, found a way to work within that range. [00:16:25] Speaker 02: You see it in the patent. [00:16:27] Speaker 02: You see it too in the comparison of the Lue patent to the patent here. [00:16:35] Speaker 02: So just to take a look at the Lue patent, when the surface area, and this is an appendix 2756 paragraph 70, this is the Howler Reply Declaration. [00:16:46] Speaker 02: When the surface area increased from carrier T, which is 1.13 surface area, to carrier S, [00:16:55] Speaker 02: which is 1.24 surface area, the pore size distribution remained within the claimed ranges. [00:17:04] Speaker 02: So you have Dr. Howler teaching you that just because surface area changes, the pore size ranges do not. [00:17:12] Speaker 02: You see that again in the comparison between the patent itself, Carriers B and C of the patent. [00:17:20] Speaker 02: And this is at Table 1, Appendix 117. [00:17:24] Speaker 02: Carriers B and C have much different surface areas, but their pore size distribution is not changed within the relevant ranges. [00:17:35] Speaker 02: So those are the facts and the statements within the patent, within the prior art by our declarant expert both in his opening declaration and in his reply that lead you through the fact question that Mr. Speed is fighting here. [00:17:54] Speaker 02: The fact question that Mr. Speed argues is these are so interdependent that when you change one, if you start messing with pore size distribution, you're going to change surface area. [00:18:06] Speaker 02: And we explained and certainly Dr. Howler explained over and over again that that fact is wrong. [00:18:13] Speaker 02: So it is that fact that we are arguing about today. [00:18:17] Speaker 02: And as was discussed earlier, unless Judge Hughes accepts his appointment as a fact administrator for the circuit, this is not a circuit that is in the business of going underneath those facts. [00:18:28] Speaker 02: Now I want to kind of address and defuse one thing that I think we'll hear from Mr. Speed, which is the board didn't cite [00:18:38] Speaker 02: some of the pages of evidence that I'm talking about. [00:18:41] Speaker 02: But TQ Delta, from this court, teaches that when you're looking at substantial evidence review, you look at the entire record. [00:18:49] Speaker 02: And you do that because you're looking at the evidence that supports the fact finding and the evidence that doesn't support the fact finding. [00:18:55] Speaker 02: That's why you look at the entire record. [00:18:57] Speaker 02: What you can't do, as this court explained in the Google case, among others, [00:19:01] Speaker 02: is the board can't invent a new legal ground for a finding that wasn't argued. [00:19:08] Speaker 02: The board can't point to a piece of prior art that wasn't referenced. [00:19:12] Speaker 02: All of the things that the board has made substantial footfalls in in the past. [00:19:18] Speaker 02: I want to make clear that that has nothing to do [00:19:21] Speaker 02: with the basis for a fact finding that is in the board's record. [00:19:27] Speaker 02: And I want to emphasize where this is in the board's record because if you look at Mr. Speeds brief, one of the things that you'll see is that he addresses most but not all of the pages of the board's analysis. [00:19:42] Speaker 02: The page that he doesn't address is the page that talks about this interdependency question. [00:19:48] Speaker 02: And, you know, it addresses this idea that because, as the board concluded, what you are talking about is a narrow range within a range, that that single variable can be optimized by a person of skill in the art who is reasonably capable of figuring out, as instructed by Lachemeyer, [00:20:09] Speaker 02: How do I get the best results when I'm maintaining this surface area, when I'm maintaining this outer range of pores? [00:20:16] Speaker 02: I'm just going to work with this inner range and see what I can do to make sure everything else stays stable. [00:20:21] Speaker 02: That page, those pages, appendix 26 to 27 go, 26 goes unmentioned in the brief. [00:20:28] Speaker 02: That's the key here. [00:20:29] Speaker 02: So if you look at appendix page 22, what you find is the board concluding that it was persuaded by petitioner's reasoning and supporting testimony. [00:20:39] Speaker 02: regarding why APOSA would have been motivated to make the combination with a reasonable expectation of success. [00:20:45] Speaker 02: Appendix 22 again, Lackemeyer discloses the outer pore size distribution range of claim one in addition to surface area. [00:20:55] Speaker 02: Relying on Lue to determine the best distribution within that range was therefore not so much a modification of Lackemeyer as an optimization of Lackemeyer's pore size distribution. [00:21:06] Speaker 02: And then on pages 26 to 27, as I mentioned, the board rejects the citations to the cases where the variables operated in an unpredictable way. [00:21:15] Speaker 02: So at bottom, that is a sheer, pure, singular fact question that we are here discussing. [00:21:22] Speaker 02: The fact is these two variables are interdependent. [00:21:27] Speaker 02: The additional fact that the board concluded is they are not so interdependent. [00:21:32] Speaker 02: that a reasonable skilled person in the art can't work with them to achieve the claimed invention. [00:21:38] Speaker 02: That is the reasonable expectation of success that we're talking about and the board concluded based on Dr. Howler's testimony and our statements and our petition and in our reply that that was achievable. [00:21:53] Speaker 02: If there are no further questions. [00:21:55] Speaker 01: Thank you. [00:22:05] Speaker 04: Thank you, Your Honor. [00:22:07] Speaker 04: Real quick, just on Appendix 297, which is where counsel pointed you to for where the reasoning for the motivation was. [00:22:16] Speaker 04: I just want to point out that that is ground one of the petition, and that's a main point that we emphasize in our briefing. [00:22:22] Speaker 04: They raised an argument in their petition that ground one was Lew alone. [00:22:26] Speaker 04: Lew alone anticipates and or presumptively renders these claims obvious. [00:22:30] Speaker 04: There was a big fight between the parties on ground one and the board conspicuously never resolved ground one. [00:22:35] Speaker 04: So they treat everything that is in ground one, all the facts, all the evidence, all the arguments for ground one as if it was decided in their favor, but the board didn't resolve that ground. [00:22:43] Speaker 04: And so it's just as likely that the board looked at that and they weren't persuaded by that evidence and said, let's move the ground forward to more classic motivation and combined theory. [00:22:50] Speaker 04: And that's where the board went by focusing on it. [00:22:53] Speaker 01: Yeah, but within ground four, I'll point you to page 319. [00:22:58] Speaker 01: Unless I'm mistaken, they cross reference within ground four, the ground one arguments pointing [00:23:05] Speaker 01: in particular to, I think, citing what I call, say, JAA pages 294 to 299, which is including 297. [00:23:14] Speaker 01: So am I missing something? [00:23:17] Speaker 04: I don't think you're missing something, except I would ask if you turn to 317, just the page prior. [00:23:23] Speaker 04: This is included in a section where it's addressing secondary considerations. [00:23:27] Speaker 04: What they did in ground four is they presented a classic ground-based, obvious challenge. [00:23:32] Speaker 04: They had two references, a primary reference, a secondary reference, [00:23:35] Speaker 04: They had a motivation combined from 315 to 317. [00:23:37] Speaker 04: And then at 317, they wanted to get ahead of the potential that we would introduce secondary considerations if not obvious. [00:23:44] Speaker 04: And so they cited two certain cases, the Heller case and the Huang case, I believe in this. [00:23:50] Speaker 04: in this section, to emphasize the point that unexpected results need to be different in kind, not degree, to matter in the context of secondary considerations. [00:23:59] Speaker 04: There is nothing in here saying, look back to ground one to find our motivation for why a person with skill in the art would have maintained the surface level of Elkmeyer at the claim surface level. [00:24:10] Speaker 04: I think there is still daylight between the parties here. [00:24:13] Speaker 04: most of what I heard from opposing counsel went to whether or not a person skilled in the act could have done this. [00:24:19] Speaker 04: Could they have tweaked lose surface pore size distribution just to get us that surface area above 1.3? [00:24:25] Speaker 01: We don't mean given that we were reviewing the board's analysis and you're saying this issue wasn't raised with regard to ground 4 and they specifically reference the exact pages where it's raised with regard to ground 1 and they sort of pull it and [00:24:42] Speaker 01: into ground four here. [00:24:43] Speaker 01: Are you saying it was somehow an APA violation for the board to nonetheless consider that argument because they couched it in the secondary consideration analysis even though they kind of pulled all those exact pages in? [00:24:58] Speaker 01: It's a very attenuated thing. [00:25:00] Speaker 04: Well I think the fact that we're looking at 319 is somewhat attenuated to because the board cited the the paragraphs that it was relying on to make its fact finding we talked about that in my opening argument that was 167 168 of the opening declaration and 163 of the reply so the board told the parties this is what we're relying on to make this finding they didn't cite to this portion of the the petition and say is she inaccurate in [00:25:22] Speaker 01: her statement of the law, which is that we review this for substantial evidence and that we look at the record to see if there's substantial evidence. [00:25:30] Speaker 01: Is this a chennery problem? [00:25:31] Speaker 01: Are we not allowed to look at the other evidence that the board didn't cite? [00:25:37] Speaker 01: You tell me how that works from a legal standpoint. [00:25:39] Speaker 04: My understanding is that that is a misstatement of law, that when a decision comes from an agency and you're under the confines of the APA, the agency has an obligation to set forth the facts and the reason decision-making based on those facts, and this court can't go looking around the record to see if there are other facts lurking in the record that could have supported it. [00:25:57] Speaker 04: If the board thought that those facts supported it, it was their obligation as administrative agency to put us on notice in the decision to do that. [00:26:03] Speaker 04: So this isn't like a district court judgment where you have a more plenary review of what the record was because you're reviewing a judgment and not the memorandum. [00:26:11] Speaker 03: So you're saying if a district or the board makes [00:26:14] Speaker 03: factual findings and points to two specific pieces of evidence, those are the only pieces of evidence we can look at to see whether there's substantial evidence. [00:26:23] Speaker 04: No, I'm not saying it's just those two. [00:26:25] Speaker 03: And that's why our opening brief, I think, frankly, our brief, we can look at the entire record to see if there's evidence to support that factual finding. [00:26:32] Speaker 03: We can't, they can't say, well, here's another theory of the case that's supported by the record. [00:26:39] Speaker 03: That clearly is a problem. [00:26:41] Speaker 03: But if they make a specific factual finding and cite only two pieces of evidence, you agree that we can also look at other proper evidence in the record to see whether that [00:26:52] Speaker 03: is substantial evidence, right? [00:26:54] Speaker 04: I would agree that they need to look at other evidence that the board cited in its decision if there's a rational connection between- Do you think that we're confined to only evidence that the board cited in its decision? [00:27:03] Speaker 03: What case do you have that supports that? [00:27:05] Speaker 03: That doesn't sound like substantial evidence review to me. [00:27:08] Speaker 04: I would point to the Google case, the PPC broadband case where the PTO in that case attempted to rely on an interpretation of a figure that the reference was in there and it was an interpretation that the board never actually found. [00:27:25] Speaker 04: And so this court said that we can't be, we're not going to affirm board decisions on the facts that were not found by the board. [00:27:32] Speaker 03: But that's not what we're asking about. [00:27:33] Speaker 03: We're asking about a fact [00:27:34] Speaker 03: finding that the board did make and there's other evidence in the record to support that than what the board actually pointed to. [00:27:43] Speaker 03: Sure, they can't argue new fact findings on appeal that the board didn't make. [00:27:48] Speaker 03: We won't look at them. [00:27:49] Speaker 03: But that's not what we're asking about. [00:27:51] Speaker 04: So I'll if I could sidestep slightly in the last minute I just would say that the fact that even the facts that they're pointing to So I think only paragraph that they can point to that says surface area and says keep surface area is paragraph 166 of the reply declaration wasn't cited by the board But if we dealt with that all it says is maintain the surface area above 1.0. [00:28:09] Speaker 04: The claim is to 1.3 There's nothing in that paragraph that says why you would get to 1.3 to this day we still don't have a reason why a person is feeling the art and [00:28:16] Speaker 04: Having modified Lockmeyer and View of Lu would say, I need to make a further change and keep it above 1.3. [00:28:21] Speaker 04: That is hindsight. [00:28:23] Speaker 04: It's just like the Moderna case where you had interdependent variables and they gave reasons why you adjust each one, but they never accounted for the interdependability. [00:28:30] Speaker 04: And that's what happened here. [00:28:32] Speaker 04: There's no accounting for it. [00:28:33] Speaker 04: And so even if you looked at all the facts that they cite, [00:28:35] Speaker 04: I would ask you to look, Your Honor, to look at our reply brief where we walk through every single one of the paragraphs that they cited in their opposition brief and explain why none of it has anything to do with surface area and certainly doesn't identify a reason why a person of skill in the art would have done this. [00:28:48] Speaker 04: The only thing in the record saying get to 1.3 is our claim. [00:28:51] Speaker 04: That is hindsight. [00:28:53] Speaker 04: They can't do that. [00:28:53] Speaker 01: Thank you, Your Honor. [00:28:54] Speaker 01: Okay. [00:28:54] Speaker 01: Thank you, Counsel. [00:28:55] Speaker 01: I think both Counsel's cases take another submission.