the board in this case committed to errors the call for the first and its final written decision the board for the first time announced a construction of a claimed invention three to noon it is your honor however the at that time a prosecution that was exactly the point that the examiner made to distinguish the two fifteen no two one five is crucially relevant prior art because it shows what the state of the art was number one and more importantly it contained a crucial admission on the part of the patent owner as to what was known in the art at the  time i think the best way to understand what was going on in this case is to turn to pages seventeen and eighteen of the board's decision which is in the joint appendix and with the court's permission i will i have drawn a sketch of the figure that's on page eighteen of the board what the patent says in columns one and two is that before the claimed invention was made it was known you had to use a tubular reactor having a conical taper having an inlet for filling it with reactance having a diameter ratio of between two to one and ten to one having an inlet for gas injection and in a mode of operation quote reason this is not helpful to you as helpful as you might like is that they've got that number six there which is the discharge rate so that this is another factor and we're just not present in the claims and that's how the board there's two crucial points about that first of all the two one five patent was a reference that the patent owners expert never mentioned in his expert at the at the time of the on three on three if you line seventy ok the first example there is a statement starting in line seventy the resulting gel like polymer solution was discharged from the vessel through the outlet by the use of nitrogen gas pressure and the description of the dimensions of that make it clear that the reactor vessel is soul and o'connell so to the extent that it was ever a requirement which was the reactor but rather was injecting gas pressure for a length of time sufficient to bring the reactor vessel to a state of substantial emptiness ok either i haven't asked the question right o differentiated to have been well what is wrong with us it's because that wasn't the patent owners argument the patent owners argument is summed up on page fifty nine paper twenty of the exhibit twenty sixteen in the record ok you have to give better see what paper twenty it is it is in the records it is not in the joint appendix but what the patent owner said quote prior to the invention of the three to nine patent conical tapers  never been used to remove polymer gels from react and the other side's expert and exhibit twenty sixteen in the record in paragraph two two zero two said the prior art reflects that those who attempted to use inert gas to remove polymer gel from a reactor found it was not a viable option when they responded to the positions they took the position that this reference was not cited will in an obvious m not cover one zero to one hundred three references so what happened here is it all throughout the board proceeding the patent owner took the position that this reference was not rightly considered by the board the expert didn't put in any evidence they what they did is they tried to impeach what their own patent set about the state of the art what was known in the art with general oral testimony by an expert who said this is never been done that said use of conical tapers and and inert gas had never been used to remove polymer just so so the patent owner made this sweeping argument which was based on error that this wasn't rightly considered an error it in their brief discourse and so when we came back in and said how can you possibly make the statement that conical tapers and inert gas had never been used to remove polymer because the patent gave no inkling that what made this non obvious was the idea of opera injecting gas pressure for long enough that the reactor achieves a state of substantial emptiness what the patent identified as the innovation what the examiner said was the innovation was the monomer this was old they had used this exact process to make an hydrous jump in a medium they said our innovation here is not making just any high molecular weight palm this claims every claim specifically resides making high molecular weight polymer using water soluble mano f l n ecclesia and saturated  twenty sixteen that is the soul of it all up no no i ask you a question i did to my knowledge it was not cited below so you can discuss it flow that it didn't exist we until the final written decision board and its institution decision never bought the argument that this wasn't right we can sit and then and then during during the proceeding the pat noted simply took the position that this wasn't rightly considered and said it's expert didn't consider it let's talk about the what is happening when the gas pressure is a plot so for instance in a continuous process the reactor optimally is being filled at this in santa fe if you want to get a room if you perform that element for only five seconds yes because removing is describing an operation what is the machine doing at this point it's plimer eyes ok what is the machine doing at this point it is in the process of removing what's in the reactor so if you think of removing the way the pa describes it as how are you getting it out it's not with the piston it's not with an auger it's being pushed out by injection of a nerd dep so if you leave the inert gas on for five seconds not that much is going to come out if you leave it on for three hours a lot of it will come out but this idea that patentability depends on how long you put the gas pressure on so whether it's at some point you reach the space station substantial emptiness that was never prior to two thousand and fifteen there was never any suggestion that any patentability depended on what length of time you put the gas pressure on no no but what the board i think relied on is that the patents chock full of examples and you're right those examples  discovery in one thousand nine hundred five the patent to fifteen says if you want to get the gel out you wind it with teflon and optional you can include a displacement aid here so that the gas doesn't tunnel down through the center but one of the glaring that the board made in analyzing this patent because the patent owner didn't put any evidence in and the board didn't accept the iranians argument that it's not properly considered is that they ignore the evidence of petitioners expert appearing in eight hundred seventy eight eight hundred eighty n it at the last two lines on page eighteen it says given that the two fifteen discloses the use of both inert gas pressure and discharge a located within the conical portions of the famous located with in the kind of the portion is displacer five displacer five the discharge me is down here ok and by that so that's just the glaring factual error which a board can fall into when they're doing it on their own they're not relying on evidence submitted by the parties they're doing this on their own and by the way the board said we're not going to have credit this because the patent owners combination doesn't include a discharge a well that is another factual error had we known that they were going to do that which we didn't know and hence we would have pointed out that the five nine seven patent the second reference is all about a downstream apparatus that is the same as the discharge it is ok what are you talking about now if we if apparatus that is the same as what the two fifteen pat refers to as the discharge rate in this particular case it is a horizontally mounted auger that applies negative pressure to what's coming in and pushes it out through what something like a meat grinder right now well i mean the is a definite adjective is talking about a specific quantity i would suggest off of the means all i would say in this context yes that's what our experts the last point i'd like to make if i could is that the patents and the start the two fifteen patent the three to nine patent and this patent up at the top of that same column on page five a one you'll notice and says also tubular shaped reaction or reactors are quite suitable for this purpose the word tubular in this art is routinely used to describe tubular reactors that have varying and on the issue of claim construction is removing is the way to define removing based on the examples just charging with those with edges so the same thing it's not exist it's not exactly the same thing i believe your honor i think for removing the if you look to the teachings of the specification what does the three to nine patent teach us when it uses the word discharge there is always a qualifier with it and the whole purpose and the qualifier is is complete some cases in the examples example fourteen in particular says discharge me with insignificant residue and at the very beginning of the patent the way the problem set forth that this invention w was the problem of incomplete discharge there's no dispute here that making certain polymers has been around for quite a long time you can make them in a container the problem is getting them out in a way that's it that's useful and efficient and the state of the art at the time the solution at the time was actually use a piston and push this gel out if you imagine jello the last thing you want to do when you want to get jello out of a container is make the opening smaller and so the prior art had two approaches to this have no constriction in the opening leave it wide open and let it fall out by its own weight or that or no or use a piston and press it out so that you get all of it out that's so thank you for pointing that out the j p one eight one reference is a piston reference which uses a piston and in that reference what the inventors and j p one eight once said is that if you just use gas there are problems and those problems include the gas breaking through the side of the reactor in the gel and escaping in which case the gel remains trapped in the reactor so you can't get it out this is the so that one of the three c argument was never made in front of the peach have board and it was a mistake in the briefing but i did i would submit it's an honest mistake because both attorneys hearing that pete's have put the question to s and s counsel why didn't you exact question that this panel has it why didn't you raise the two one five patton earlier or another piece of art that was subsequent to the hundred five the nine for it why wasn't that raised in the petition in s n f counsel in front of the p tab said well they could have easily sworn behind it because it was one under one hundred three c i think this was a mistake it was a mistake in our briefing i'm not trying to hide from that but it was an issue raised before the piece having it wasn't a basis for the p taps decision and in any for of removal from that reactor neither of the primary references the nine four four nor the five nine seven talks how much joe was removed from the reactor and that's a natural consequence well let important aspect of the claim construction of the pattern we have in front of us that a definite article the followers of the removal were not there move forward all by itself the definite article suggests it's the entirety of the material that is being removed something different from distinction between the word discharge and the word remove i think there's two parts to the answer number one in the five nine seven pattern the example of column three line seventy is just an example it's not a claim that's not clean language where the  in the same way you give those in a c this particular way why would that matter it teaches everything that's in the document including that example getting rid from the vessel of let's say the entirety of the material that was in them in the bat so first of all the five hundred seven never mentions that it's trying to get rid of all of the material but if the if the word the has that whole definition of the problem the problem that it was addressed little was getting rid of all of it and now it's got something for you it's got a solution for that so in the context of this not particularly from the w removed which i must say is not to my mind very distinct from the word discharge but that when that word is being used in the context of this pattern it's not in reference simply to the action at any given moment specific reference to the ultimate and point of the out of the object of that if i understand your honor in the five nine seven pattern this example actually states the resulting gel like polymer solution was discharged from the vessel that's entirely consistent with the chemical engineering understanding of the word discharge being a passive phenomena you fill a reactor up you want to drain to the say has water i want to discharge it i open the valve and gravity discharges it that's not an active step of making sure everything is out of the reactor that's a fundamental distinction between even the plain meaning of discharge and removing i guess i'm struggling with you're right in the examples they talk about when they use the word discharge there's always a qualifier with it that's the point when discharges use you have to qualify it because it's a passive action so when you say discharge evening just release some and resume is ok or do you mean get it all out so if you say discharge you say i mean move will if the will to discharge without residue yes removal is the same thing as complete discharge the plane dictionary definition as the p noted for removal is to eliminate to get rid of whereas discharge can just be to poor out stuff can remain and that's a fund of that's what's important because that's the fundamental purpose of this invention was to address all these problems in the prior art of incomplete discharge while the going back to judge toronto's question then about line seventy of the five nine seven pounds the result solution was discharged you're saying that something less than without residue it has to explicitly talk about without residue is that we're talking well i think the problem with the five nine seven patent is it says nothing about the extent of discharge and this is a situation where because a reference says nothing you could read into it as much or as little as you'd like because the purpose of the five hundred seven patent was downstream processing so it has no information about the extent of  charge it has no information about the purpose of discharge other than getting it to the next step and what about the two fifteen which explicitly called discharged without residue by injecting inert gas what's why isn't that sufficient well in the two fifteen i mean if you take those words in isolation but that's not that's not the reference the references about a thermo plastic material so first of all it's not the same kind of polymer it's a multi stage reactor process where in those stages gas pressure is used to move the material and it's not purely a polymer gel in that it is in or supposed within that thermo plastic are yes ok that discharge as a board pointed out was in the conical portion of the reactor with the two one five t patent teaches is that it's a discharge material you could have a discharge a in the conical portion of the reactor that can be either a piston right which is in the prior art or a screw off the type thing where you can pull it down as a screw pull the gel down so the two what the board noted that the two one five patent itself taught the a little bit lost the point of why we're talking about this i think that actually is a good point because the two where he hasn't has not even a ground in that in the in the petition for before the d that language and it started with language that doesn't actually prefer to do anything but the injection inert gas and nevertheless saying well we're not quite sure what those words mean so we're going to look at the two fifteen prior art to understand the scope of the mission and when we look at it we see this go with the animation is not something that covers current claim what the piece how it was saying was that you can't look at the two one five patents and learn from it that using a taper with inert gas would affect substantially complete discharge because the two one five pattern was completely silent as to the benefit or function of a taper in terms of getting the substantially complete removal so there was no teaching in the two hundred five patent that would allow you to connect any dots to the grounds at issue hundred seven patties or a teaching of a conical taper there's just i don't remember the details but where there was there are a pair of diameters one larger than the other that's correct in the five nights i'm sorry so what's seven patent teaches is that it has a bottom out bottom on the floor bottom on the side is possible it could be hemisphere goal it could be flat those are all common shapes of reactors and chemical engineering saying that six is actually somewhere in the calm that according to your description it doesn't say it's not it just doesn't set well the description of the two one five pattern actually my forty eight  because what it's different let me say first of all see what we've been talking about here there's only one person who interpreted this who was skilled in the art that was our expert the question was raised did they rais before the board the answer is they did not their expert did not address this at all because at that time based on their erroneous apparently view of one of the three c they took the position this wasn't relevant so their expert did not address it at all so the evidence what this patent disclosure mean read this yes so getting to your point my view i think what that line is saying is that it's forced continuously toole ordered the discharge ate in the conical part that is to say it's fully consistent with six correctly identifying the discharge agent down here and it's pushing it toward the discharge eight in the conical portion so wait a minute it's not from what you're saying it's not towards the discharging that's what our experts that's how our expert interpreted that and that's consistent with how the figures are labeled and in the drawing now the council stood here and said that the word discharge is only used with from the reactor by ingestion of an inert gas there again is a word discharge effecting pushing out removing they're all describing an operation and just toronto even if we don't think this is the correct construction because in removing as more or less interchangeable with discharging reject and pushing out as an action which will go on for whatever length of time the machine system is causing that action to happen well then you describe both  fifteen this is an antichrist you know what we've done here and the reason our claims are limited to the hydras joe is that was what they then said was there integration taking this and using this process for the hydrous gel polymer like poly acrylic poly accolade and that's what the statement of reasons for allowance said it was only in the midst of litigation when they were confronted with evidence that that was not a new idea this is been used for public will apply to that they came up with this new theory that what the innovation here was not the idea of substituting a hydrous run and hide response for operating the system for long enough to achieve a state of substantial emptiness and that is a strategy that makes sense and i p r because of the severe conspiracy cial constraints on the petitioner to try to their construction so in our view the case clearly requires a remand because the proper interpretation of removing is as a present participle verb an action as opposed to an operating condition and in the alternative the board's interpretation of this now that we know that the whole pattern or presentation was based on an erroneous view of one of the three c i think it's not accurate to say that this was not part of their presentation it was built into their presentation which is why this there was and one of the things what very point you're posing is that when the issue was raised by the boar error made as to something we haven't talked about at all here this morning which was the one for a pattern but nothing of the two fifteen was always insisted upon and discussed at length in our expert submissions eight hundred seventy eight eight hundred eighty two the j that option their argument to the board was not that this didn't work for hydrous shells but that it didn't work at all and that was untrue and that was built on what we now say have admitted on the record was an erroneous view of the law in which they