PGR2016-00011, Paper No. 53
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`PGR2016-00012, Paper No. 33
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`June 7, 2017
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`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______
`
`ARKEMA INC and ARKEMA FRANCE,
`PETITIONER,
`
`V.
`
`HONEYWELL INTERNATIONAL INC.,
`PATENT OWNER.
`_______
`
` Case PGR2016- 00011 and PGR2016- 00012
` U.S. Patent No. 9,157,017
`_______
`
`Record of Oral Hearing
`Held: Monday, May 15th, 2017
`
`
`
`BEFORE KRISTI L. R. SAWERT, MICHAEL TIERNEY, and
`GRACE
`KARAFFA OBERMANN, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Monday, May
`15th, 2017, commencing at 1:31 p.m. at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
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`trials@uspto.gov
`PGR2016-00012, Paper No. 33
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`June 7, 2017
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`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______
`
`ARKEMA INC and ARKEMA FRANCE,
`PETITIONER,
`
`V.
`
`HONEYWELL INTERNATIONAL INC.,
`PATENT OWNER.
`_______
`
` Case PGR2016- 00011 and PGR2016- 00012
` U.S. Patent No. 9,157,017
`_______
`
`Record of Oral Hearing
`Held: Monday, May 15th, 2017
`
`
`
`BEFORE KRISTI L. R. SAWERT, MICHAEL TIERNEY, and
`GRACE
`KARAFFA OBERMANN, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Monday, May
`15th, 2017, commencing at 1:31 p.m. at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
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`Case PGR2016- 00011 and PGR2016-00012
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`A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`MARK J. FELDSTEIN, ESQUIRE
`ERIN M. SOMMERS, ESQUIRE
`MARK D. SWEET, ESQUIRE
`CHARLES W. MITCHELL, ESQUIRE
`FINNEGAN, HENDERSTON, FARABOW, GARRETT &
`DUNNER, LLP
`901 New York Avenue Northwest
`Washington, D.C. 20001
`(202) 408- 4092
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`GREGG F. LoCASCIO, ESQUIRE
`NOAH S. FRANK, ESQUIRE
`C. ALEX SHANK, ESQUIRE
`KIRKLAND & ELLIS, LLP
`655 15th Street, Northwest
`Washington, D.C. 20005
`(202) 879- 5290
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`P R O C E E D I N G S
` JUDGE SAWERT: Good afternoon everyone. We have this
`afternoon our consolidated final hearing in PGR2016 - 00011
`and PGR2016 - 00012 between Petitioner Arkema and Patent
`Owner Honeywell International. I'm Judge Sawert. I'm joined
`today by Vice Chief Judges Tierney and Obermann. Counsel,
`can you please introduce yourself and let us know who will be
`presenting today. We will start with petitioner.
` MR. FELDSTEIN: Your Honor, I'm Mark Feldstein from
`Finnegan Henderson on behalf of petitioner Arkema and Arkema
`France. With me --
`I'll be presenting along with my colleague Dr. Erin Sommers.
`With me also from Finnegan Henderson, my co- counsels Mark
`Stewart (sic) and Charlie Mitchell. With me from Arkema
`France is Anne- Sophie Schaefer, Doris Dang. And with me from
`Arkema Inc is Lisa Brody.
` JUDGE SAWERT: Thank you. Good afternoon.
` MR. FELDSTEIN: Thank you.
` JUDGE SAWERT: And for the Patent Owner, who do we
`have?
` MR. LOCASCIO: Good afternoon, Your Honor. Gregg
`LoCascio from Kirkland, Ellis, LLP, on behalf of Honeywell
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`the Patent Owner. Along with me I'll be arguing with Noah
`Frank, Alex Shank, and company owner, Jeffrey Conner.
` JUDGE SAWERT: Thank you and good afternoon. It's good
`to have you here. We appreciate everyone making the effort
`to be here. We set forth the procedure for today's hearing
`in our trial order, but just to remind everyone of the way
`this will work, each party will have 60 minutes of total time
`to present arguments. During your presentations, if you have
`a demonstrative, please remember to identify each
`demonstrative exhibit clearly and specifically, for example
`by slide or screen number. This will help to ensure the
`clarity and accuracy of the transcript.
` I'll give each counsel warning when you're reaching
`the end of your argument time. Does counsel have any
`questions or concerns? Okay. We remind each party that
`under no circumstances are they to interrupt the other party
`while that party is presenting its arguments and
`demonstratives. If a party believes that a demonstrative or
`argument presented by the other party is objectionable for
`any reason, that objection may only be raised during the
`objecting party's argument time. For example, if Patent
`Owner has an objection to any of the slides presented or
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`arguments made by the petitioner Patent Owner may only raise
`that objection during Patent Owner's allotted time to speak.
` Also, before we begin, I would like to remind the
`parties that this hearing is open to the public and a full
`transcript of the hearing will be made part of the record.
`With that, we are ready to begin. Petitioner has the burden
`of proof and will go first. Mr. Feldstein.
` MR. FELDSTEIN: Yes, Your Honor?
` JUDGE SAWERT: Do you wish to reserve any time for
`rebuttal?
` MR. FELDSTEIN: We're going to reserve 20 minutes, Your
`Honor.
` JUDGE SAWERT: Give me one moment to set the clock.
`Okay. Counsel, are you ready?
` MR. FELDSTEIN: Yes, Your Honor. Thank you.
` JUDGE SAWERT: You have 40 minutes.
` MR. FELDSTEIN: Thank you, Your Honor. Your Honor, on
`slide three, please. The issues for trial Your Honor, are
`PGR eligibility which applies to both PGRs 11 and 12. I'm
`going to be arguing that. My colleague, Dr. Sommers, is going
`to be arguing unpatentability, principally addressing PGR 11,
`the 2002 and earlier, prior art.
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` Turn to slide 17, please. Just as an outline, Your
`Honor, we think that the Lockwood case that we have on the
`screen here is going to be a key to distinguishing the
`arguments on written description and obviousness, as Lockwood
`explains in slide 17. The description requirement is a
`higher requirement than obviousness. And so even if a
`disclosure would render a subject matter obvious, that's not
`enough for written description.
` And we think this is key, Your Honor, because -- as we
`see Honeywell's argument on written description, much of it
`is an assertion that the claimed invention would have been
`obvious over this disclosure. That is not enough.
` JUDGE SAWERT: Is Lockwood the best case you have on
`the facts? Were you able to find a case that was factually
`similar to this case?
` MR. FELDSTEIN: Well, there are many cases that are
`factually similar. Ruschig in a way is similar. Ruschig has
`a large genus -- and it's a genus of a single chemical
`compound. But here, similarly, there's a genus of the
`combination of formula one or formula two multiplied by at
`least 80
`different main applications, utilities in the patent,
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`multiplied by all the different additives. So it's a genus of
`possible chemicals with possible uses with possible
`additives.
` JUDGE SAWERT: So my understanding is that the genus
`of chemicals itself is not actually very large, it's three
`preferred compounds. And so --
`can you explain to me again, what is the genus that's so
`large here?
` MR. FELDSTEIN: So, Your Honor, looking at the '017
`patent, there is in fact a genus of formula one which is in
`column three at line 45; it's a huge genus. In the '017
`patent, column four, line ten, there's composition -- formula
`two, another genus of tens of thousands of compounds. Below
`that there is a genus in column four, lines 22 to 24, of a
`preferred genus. However, it's not clear what it's preferred
`for. It's not indicated to be preferred for any specific
`application. And so if you look immediately after the
`preference section in column four, it says, "applicants
`believe in general" --
` JUDGE SAWERT: What sentence are you on?
` MR. FELDSTEIN: I'm in the '017 patent, and column
`four, line 23, 24, Your Honor.
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` JUDGE SAWERT: Okay.
` MR. FELDSTEIN: So there's the formula two above
`there. There's the preference for Y equals
`CF3. And then it lists utility of formula one, formula two
`for refrigerant, blowing agent, compatibilizer, aerosols,
`propellants, et cetera. There are eight different applications
`and it doesn't indicate what the preference is for. If we
`turn to the heat transfer section, Your Honor, which is
`column six -- which is where the adaptable for use language
`comes and where the AAC comes from and where the PAG
`lubricant comes from. If you look in column 6 at line 35,
`the preference is formula one, formula two, and then it jumps
`right to the compound of 1234ze, which is a different
`compound, not the claimed compound.
` And so there is a preference for a narrow group in the
`compositions, generally, but when you get to the heat
`transfer section it goes from formula one to formula two,
`which is tens of thousands, to ZE which is a single different
`species. That can be contrasted, Your Honor, with example
`five of the patent for example -- one of the blowing agent
`examples, example 5 is in column 16 of the '017 patent -- and
`for a blowing agent, a polystyrene foam, there the preferred
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`embodiments use 1234ze and 1234YF.
` And so you can't read, we don't believe, the
`preference -- the general preference in the background
`section as being applicable to the heat transfer section
`because the heat transfer section goes from formula one to
`formula two to ZE, and there's good reason for that.
` The reasons are that what the patent is focused on --
`the patent is focused on having a high efficiency -- a high
`coefficient of performance refrigerant having a low capacity.
`That's all of what's discussed in the heat transfer section.
`And if we can get to that -- that's also what's showed
`in example one.
` And so it's not the case, and example shows it, that
`everything that's preferred in the general background section
`meets the criteria and meets the preferences that are
`required for the heat transfer section.
` JUDGE TIERNEY: Okay. I think it would be helpful to
`start off with, what is claimed? Is it a claim directed
`towards a compound or is it directed to a method using a
`composition -- composition of what it means to be a compound?
` MR. FELDSTEIN: So, Your Honor, on slide 18
`we have claim 12, representative claim -- I believe Patent
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`Owner uses claim one. But what they -- all the claims
`require, as Honeywell indicated during prosecution, is at
`least three elements: 50 percent by weight of 123 4YF, PAG
`lubricant, and a connection to AAC -- either a system or a
`composition suitable for AAC. So they all require 1234YF
`plus PAG lubricant for AAC automobile care conditioning.
` JUDGE OBERMANN: I don't see anything on claim 12 on
`your composition that necessarily limits it to the AAC
`application. Obviously it has to be suitable for that use,
`but what does that do to the argument we just heard about,
`the spec? If claim 12
`actually doesn't have a limiting use in its terms?
` MR. FELDSTEIN: Well, then it's just going to be all
`the more obvious. But it applies equally because -- where
`the description argument applies equally because you can't
`find the combination of 1234YF with PAG lubricant. And, in
`fact, if you read the heat transfer section, it doesn't -- it
`goes from the tens of thousands of compound formula two to ZE
`and example one shows that YF is not suitable to meet the
`heat transfer criteria pact.
` But, moreover, during prosecution -- the prosecution
`statement we have from Honeywell on the right that all claims
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`relate to use in automobile air-conditioning. And so
`Honeywell has read in an automobile air-conditioning
`requirement into all the claims. It was the basis for
`patentability.
` JUDGE OBERMANN: What do we do with the statement
`made
`by Patent Owner during the European patent office proceeding?
`What weight do we give that and why?
` MR. FELDSTEIN: Well, the key statement there, or a
`key statement there, is that example one -- if you turn to
`slide 31 please? Example one of the patent is not automotive
`air-conditioning. Honeywell hasn't disputed that this is
`true. And so you can take it as an admission and you can
`take it as undisputed fact that AAC is not -- excuse me,
`example one is not automotive air-conditioning. And there
`are reasons why it's in fact true and why Honeywell is unable
`to dispute that.
` And, for example, if you look -- if you go to slide
`34, this has the conditions, for example one at the top --
`the evaporator temperature in this cycle is indicated to be
`minus 35 degrees. As Dr. Bivens, Honeywell's expert,
`explained, minus 35
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`degrees is for a refrigerant application. Air-conditioning --
`automotive air-conditioning application is plus 35 degrees.
`So the cycle temperature that's used in example one is not
`AAC. So when Honeywell represented in Europe that example
`one is not AAC, they were right because it isn't.
` And they haven't disputed the fact that example one is
`AAC. What they suggest instead is that it's obvious AAC is
`obvious from example one but that is not the case. And even
`if it was the case, as Lockwood holds, it wouldn't matter.
`Obviousness is not disclosure. But what is key with respect
`to the cycle temperature is the capacity, which is what
`Honeywell relies on to suggest that it's obvious to use it
`for AAC, the capacity depends on the cycle temperature you
`use.
` And so on slide 35, for example, we have Patent
`Owner's expert Dr. Bivens saying that the capacity you would
`get when you calculate the coefficient of the performance and
`capacity from a cycle depend upon the evaporator temperature.
`Again, the evaporator temperature of minus 35 is not
`AAC and so it can't tell you directly what the AAC capacity
`would be at plus 35.
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` JUDGE OBERMANN: So your view is that the disclosure
`would
`have to be basically an anticipatory disclosure and they
`haven't established that?
` MR. FELDSTEIN: To provide a written description, Your
`Honor? Is that what you're saying?
` JUDGE OBERMANN: Yes.
` MR. FELDSTEIN: But if it's merely obvious that's
`clearly not enough. So it has to disclose it. It has to
`show conception. It has to show possession. So it is
`similar in a way to anticipatory.
` JUDGE TIERNEY: So we talked about automobile
`air-conditioning systems and that this refrigerant has to be
`suitable for use in such a system. What are the requirements
`though for an automobile air-conditioning system as opposed
`to just a general AAC system?
` MR. FELDSTEIN: Well, Honeywell has said that -- can I
`have slide 24? What Honeywell has said is that the field of
`automotive air conditioning is a distinct technical field
`with specific technical requirements to distinguish it
`from other grounds. And so what they've said also is that it
`has particular toxicity requirements, it has particular
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`stability requirements -- for example, it has to be connected
`-- useful with rubber or plastic hosing. It has to have
`specific stabilities, specific miscibility requirements that
`are above and beyond and different from heat transfer
`generally.
` JUDGE OBERMANN: What is this quote that's on slide 24
`from?
` MR. FELDSTEIN: This is from prosecution --
`a statement they made during prosecution to try to
`distinguish over the art that showed use of 1234YF as a
`refrigerant. And they said, no, no, 1234YF as a refrigerant
`doesn't render obvious 1234YF as an
`AAC system because AAC is different.
` JUDGE SAWERT: So at the end of the day, as far as
`example one, where does that leave us?
`Because they don't really need an example to have written
`description support; correct?
` MR. FELDSTEIN: No, you don't need an example. But
`you need a disclosure is and what's clear is that there's no
`disclosure anywhere of the combination of YF plus PAG plus
`AAC. In fact, there's no disclosure -- unified disclosure of
`even any two of those elements together. And so what
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`Honeywell argues instead is you can infer from what they call
`-- characterize as preferences or you can infer from the
`examples that there's a disclosure. And we are responding on
`example one that, no, you can't infer that.
` JUDGE SAWERT: So is your argument that the art was so
`unpredictable in 2004 that there wasn't adequate written
`description support for the claims?
` MR. FELDSTEIN: Our argument, Your Honor, is that
`there is no disclosure of the combination and when you read
`the specification as a whole, there's nothing to direct you,
`there's no blazemarks connecting them. In fact the
`blazemarks point away.
` JUDGE SAWERT: So in 2014, I believe, is when they
`filed the application that resulted in the '017 patent;
`correct?
` MR. FELDSTEIN: Correct, Your Honor.
` JUDGE SAWERT: And when you filed your PGRs, you did
`not ask us to institute trial as to whether the claims in
`2014 are supported by the written description; correct?
` MR. FELDSTEIN: Correct, Your Honor.
` JUDGE SAWERT: I'm just trying to reconcile why in
`2014 you said that the claims that were filed on that date in
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`2014 have adequate written description. But the claims as of
`2004 -- if you try to go back to 2004, they wouldn't have
`adequate written description when the specification itself,
`my understanding, the specification itself has not changed.
` MR. FELDSTEIN: So -- Your Honor, the way the
`specification changed is that the claims filed in March 2014
`became part of the written description as of that date -- and
`they’re description for themselves -- they were filed with a
`preliminary amendment at the day of filing. And so as the
`original claim at that time they're the own written
`description. I don't think we concede that they are
`supported by the spec. However, they are their own written
`description.
` And so it didn't seem the argument to make that they
`were not described as of 2014 because the specification, as
`amended in 2014, literally called out the combination of YF
`plus PAG per AAC -- it just did it in the claims.
` JUDGE SAWERT: But doesn't Ariad say that sometimes
`original claims don't have written description support?
` MR. FELDSTEIN: Absolutely, Your Honor. It's another
`argument we could've made, but there were a plethora of
`arguments including proving invalidity, prior public use, and
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`anticipation that Honeywell hasn't substantively disputed.
` JUDGE SAWERT: So should I consider that you did not
`raise any written description -- I want to say -- rejections
`on patentability grounds? Should I consider that a
`concession that there's written description.
` MR. FELDSTEIN: Not at all, Your Honor. You couldn't
`read it as concession that it's not obvious over some other
`combination of references. You couldn't read it as a
`concession, it's not anticipated by other references. We
`were limited in space and we chose to focus on certain
`arguments. It's not concession at all.
` JUDGE TIERNEY: I do have a question. Going from 2002
`to 2014, had the knowledge and the art possessed by one
`already skilled in the art changed?
` MR. FELDSTEIN: Sure. The 1234YF plus PAG was
`commercially used in automobile air-conditioning long before
`2014. And so it in fact was there, it worked, and there's no
`dispute about that. There's no dispute, I think, that it was
`in public use and on sale.
` JUDGE TIERNEY: So clearly one in 2014 could have been
`used, at least a formula of the YF in combination of the PAG
`for an automobile use in 2014?
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` MR. FELDSTEIN: It certainly had done already, in
`fact.
` JUDGE OBERMANN: They would have expected it to be
`successful because it had been used many times as of 2014.
` MR. FELDSTEIN: By 2014, it was proven to work.
` JUDGE OBERMANN: And that would have been within the
`understanding of an ordinary artisan.
` MR. FELDSTEIN: By 2014.
` JUDGE SAWERT: Can we go back to the written
`description and your argument about why there's no
`description for the claims. So I understand that there -- I
`know you're saying that there are multiple compositions. But
`when I read Honeywell's or Patent Owner's expert's
`declaration it seems to me that there's really only three.
`And then on top of that, my understanding is that the
`lubricant PAG was well known in the art to be used for
`automotive air-conditioning units. So given those two
`things, really there's not a huge genus to select from.
` And why are you saying there's no written description
`when I have the small genus of HFOs and it was well known to
`use PAG and they tell me it can be used in automotive
`air-conditioning? Why isn't that enough?
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` MR. FELDSTEIN: Okay. So, again, in the heat transfer
`section there is no small genus except for ZE. It's the only
`compound they disclose. Again, if you look in --
` JUDGE SAWERT: What case do you have for --
`it has to be -- the disclosure of that compound has to be in a
`subsection of the written description versus further up.
` MR. FELDSTEIN: I think that just reading the
`specification, Your Honor, there are eight different
`applications within here, eight different utilities: Blowing
`agent, refrigerant, foam -- and with each category there are
`different utilities and different properties that are
`advantageous. And the background section that the
`compositions generally -- doesn't say this is preferred for
`refrigerants.
` JUDGE SAWERT: But I only have three preferred
`compositions. And so to me, when I only have three and the
`written description says it could be used in eight different
`ways, to me that's not a huge amount of things that I have to
`go through to see if it works.
` MR. FELDSTEIN: Okay. So it's eight different main
`categories: Refrigerants, aerosols, flavorants -- 30
`different categories with 30
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`different requirements. Each one has subcategories too. And
`if we talk specifically about the heat transfer section where
`it indicates where the preferences are, it's formula one,
`formula two,
`ZE. It doesn't indicate intermediate preference for a genus
`of three or four compounds.
` JUDGE SAWERT: So just because it has --
`sorry to interrupt -- just because it has ZE, does that mean
`that a skilled artisan looking at that would assume that the
`YF cannot be used for that heat transfer method?
` MR. FELDSTEIN: I think if we go to slide 25
`-- I think that if you read what the heat transfer section is
`teaching, one would understand that YF cannot be used. Okay.
`And so -- if we could actually go forward a half a slide. So
`this is from the ’451 -- we're quoting it, but it's the same
`as in column seven of the '017 patent on slide 25 -- and
`the description of what's useful in the heat transfer section
`are high coefficient of performance, high efficiency
`compounds that have low capacity. And there's a reason and
`-- and they indicate this, they want to be able to run large
`stationary systems that are running essentially hours a day
`that need to have high efficiency.
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` And that's what's -- the patent explaining -- sorry,
`we're on 26 now -- the desirable utility of the heat transfer
`compositions are for use of a low capacity refrigerant which
`is also a high coefficient of performance. If you look in
`example one -- if we can go to slide 31, please --
` JUDGE OBERMANN: So I just want to make sure I have
`this straight. The spec is all about refrigerant, but it
`doesn't call out specifically automotive; is that right?
` MR. FELDSTEIN: The specification is about refrigerants,
`using it as sort of a generic term for things that you use
`for flavorants, aerosols, blowing agents, and heat transfer
`agents. In the heat transfer section, if you go to slide 22,
`the only statement that we have at the top, again from
`the ’451 patent, the only statement about AAC ever is
`"adaptable for use." And it's adaptable --
` JUDGE OBERMANN: That sounds pretty good.
` MR. FELDSTEIN: It's adaptable for use for:
`Air conditioning, commercial refrigeration, chillers,
`residential refrigerators, freezers, general air-conditioning
`applications, heat pumps, and the like.
` JUDGE OBERMANN: It says automotive air-conditioning
`system.
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` MR. FELDSTEIN: It does. But it doesn't tell you
`what, if anything, or how one would adapt it. And the
`problem is -- if we go back to slide 24
`-- the problem for Honeywell is, again, they said that,
`"automotive air conditioning is a distinct technical field
`with specific technical requirements." So it tells you,
`generically, it can be used for one of eight different
`applications, but the AAC application they argue during
`prosecution is a distinct field with specific requirements in
`terms of toxicity, flammability, miscibility, and
`stability, and there's nothing to tell you what compositions,
`if any, are going to meet -- how to adapt them. So there's
`no description to explain, if you take this compound from the
`formula, what are you going to do to adapt for this use? AAC
`being a special use, was the basis of Honeywell's
`patentability.
` JUDGE TIERNEY: Counsel, in response to an office action,
`did Patent Owner come in and identify a number of
`requirements that are distinct requirements for automotive
`air-conditioning as opposed to general refrigerant?
` MR. FELDSTEIN: They did in fact, and if you turn to
`slide 40 -- this is what Honeywell argued during prosecution:
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`That for AAC there's a strict prohibition on the use of toxic
`refrigerants, there were restrictions on refrigerant
`capacity, there were restrictions on refrigerant
`flammability, and there was requirements for high stability.
`These are all arguments that Honeywell relied on to say
`that our claims to AAC are different from heating and cooling
`in general and that you can infer from the prior art a
`disclosure for AAC even if it's used for another application.
` JUDGE SAWERT: Are you saying that at this time in
`2004 that Patent Owner did not know whether or not the YF had
`these characteristics?
` MR. FELDSTEIN: Certainly Patent Owner didn't disclose
`such knowledge. There's no way to read the specification to
`find out in 2004 that they disclosed possession of a fluid
`for AAC that had the requirements -- the basis of a
`requirement.
` JUDGE SAWERT: Did they have to know that, if all these
`characteristics are inherent in the chemical itself?
` MR. FELDSTEIN: Yes. They would have to know
`something -- they would have to disclose something for the
`reader -- so again, if they had disclosed the combination
`together it would be a different story. Okay? They don't
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`disclose the combination together and so they want to try a
`way to infer backwards -- infer what the -- infer a
`preference for the combination. And without being able to
`show that they recognized that YF was going to be, itself,
`suitable for AAC, there's no way to infer that they would have
`known that they had the right toxicity, the right
`flammability, the right miscibility, the right stability --
` JUDGE SAWERT: Let's say that we were talking about --
`I believe, the other preferred component -- chemical is ZE;
`is that right?
` MR. FELDSTEIN: That's the only preferred transfer
`fluid.
` JUDGE SAWERT: So let's say that we were talking about
`ZE. Are all these characteristics of
`ZE disclosed in this '017 patent?
` MR. FELDSTEIN: Well, no. But, what the problem is --
`if we go to slide 31. 31, is example one, table one. What
`ZE shows -- it's the third compound example, is it has that
`high COP and low capacity. That makes it unsuitable for AAC.
`And so it's suitable for these large, thick systems like a
`chiller where you're going to have it running for 24
`hours and you need a high efficiency. And so, in fact, what
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`the patent teaches you is that their preferred, their only
`single heat transfer composition would not be suitable for
`AAC. If you read example one has having any meaning for AAC
`at all.
` JUDGE SAWERT: So what I understand is you're saying
`basically that this patent doesn't just -- even though it
`talks about automotive air-conditioning, it doesn't describe
`a single chemical that is usable in the automotive
`air-conditioning?
` MR. FELDSTEIN: It doesn't show possession of any
`composition suitable for AAC, yes, Your Honor.
` JUDGE TIERNEY: Counsel, when they first filed this
`application, as a utility application, were they claiming
`specifically automobile air-conditioning?
` MR. FELDSTEIN: No, that came years later, Your Honor.
`It came years later. In fact, in 2004
`-- in fact, what happened was that this patent here was filed
`in 2014 after they had a claims rejected in a related reissue
`application. And so this is long after the fact. In 2004
`when they filed the priority application they were looking at
`-- the patent describes replacing chlorinated refrigerants,
`which are chiller systems, not the AAC. They're not using
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`the AAC.
` And what they described in 2004 for heat transfer
`compositions was systems that needed high coefficient of
`performance, high efficiency and low capacity, exactly the
`opposite of the criteria they're relying on now to say that
`AAC application would have been obvious.
` JUDGE SAWERT: Before we run out of time can we switch
`over to enablement?
` MR. FELDSTEIN: Sure, Your Honor.
` JUDGE SAWERT: So my understanding is that enablement
`of
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