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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______
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`AFTON CHEMICAL CORPORATION,
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`Petitioner,
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`v.
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`INFINEUM INTERNATIONAL LIMITED,
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`Patent Owner.
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`____________
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`IPR2017-01321
`Patent 8,076,274 B2
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`Record of Oral Hearing
`Held: August 9, 2018
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`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM, and MICHELLE
`N. ANKENBRAND, Administrative Patent Judges.
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`IPR2017-01321
`Patent 8,076,274 B2
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`MATIAS FERRARIO, ESQUIRE
`KEITH D. FREDLAKE, ESQUIRE
`Kilpatrick Townsend
`607 14th Street, N.W.
`Suite 900
`Washington, D.C. 20005
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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` ON BEHALF OF THE PATENT OWNER:
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`ELIZABETH GARDNER
`K. PATRICK HERMAN, ESQUIRE
`Orrick, Herrington & Sutcliffe, LLP
`51 West 52nd Street
`New York, NY 10019
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`The above-entitled matter came on for hearing on Thursday, August 9,
`2018, commencing at 10 a.m., at the U.S. Patent and Trademark Office, 600
`Dulany Street, Alexandria, Virginia, before Merinda Evans, Notary Public.
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`P R O C E E D I N G S
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`JUDGE TORNQUIST: You may be seated. Okay. This is a hearing
`for IPR2017-01321, Afton Chemical Corporation v. Infineum International
`Limited. Who do we have from Petitioner?
`MR. FERRARIO: Good morning, Your Honor. Matias Ferrario,
`Kilpatrick Townsend for Petitioner, and my colleague Keith Fredlake, also
`Kilpatrick Townsend, and Ms. Arneita Grey, also my colleague.
`JUDGE TORNQUIST: Welcome. And Patent Owner?
`MR. HERMAN: Good morning, Your Honors. Patrick Herman from
`Orrick on behalf of Patent Owner, and with me are Elizabeth Gardner also
`from Orrick and Jacob Levine from Infineum.
`JUDGE TORNQUIST: Welcome. Okay. Pursuant to our order
`granting oral argument in this case, each side will have an hour of argument
`time. Petitioner bearing the burden of proof, you'll go first and you can
`reserve time if you'd like for rebuttal, then we'll hear from Patent Owner and
`you can also reserve time for rebuttal as to the Motion to Exclude and those
`elements of the Motion to Amend that you bear the burden of proof, and
`then we'll hear from Petitioner as well and any rebuttal time, and then Patent
`Owner's rebuttal time.
`Before we start the substance of the arguments, there are pending
`objections to Petitioner's demonstratives. Slide 75 specifically laid out and
`then 64, 66, 70 and 80 I believe. Petitioner, do you intend to rely on these
`slides in this hearing today?
`MR. FERRARIO: Yes, Your Honor.
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`JUDGE TORNQUIST: Okay. So then do you want to address then
`briefly their objections and particularly whether exhibits, I guess it's 1051
`and 1053 are in any of your papers before this order?
`MR. FERRARIO: Yes, Your Honor. I'd like to start with 1051 and
`1053, if you will. As you know, we submitted a response on the newly
`instituted grounds, ground three in particular, after the SAS decision and in
`that paper we -- the paper number escapes me -- but we submitted a
`supplemental declaration by our expert, Dr. Lam, and Dr. Lam discusses
`those exhibits specifically and you can (indiscernible) his testimony. We
`then summarized that testimony in our response. We had limited it to 300
`words or so, so we think it's fairly part of the proceedings.
`JUDGE TORNQUIST: Okay. Patent Owner, do you want to address
`their statement that they have actually relied on these?
`MR. HERMAN: Yes, Your Honor. So those exhibits were filed in
`connection with a two page reply brief and they were not cited in the two
`page reply brief. They were not mentioned in the two page reply brief. The
`reply brief did cite to an expert declaration but did not specifically cite to the
`portions of the expert declaration citing those exhibits. It cited to other more
`general paragraphs. So it's our view that those exhibits are not discussed in
`any way in the briefing that's part of the record here. Yes, they were
`attached --
`JUDGE TORNQUIST: Counsel, let me interrupt you for a second.
`Can you please step to the podium? Judge Ankenbrand is having trouble
`hearing you.
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`MR. HERMAN: I apologize, Your Honor. So it's Patent Owner's
`view that those particular exhibits were not discussed in any of the briefing
`in any kind of meaningful way and they were essentially just attached to a
`portion of an expert declaration that's also not being discussed in the record
`in any kind of meaningful way. So to the extent that it's now being argued
`that they're part of the record, it's an improper expansion of Petitioner's
`grieving space.
`JUDGE TORNQUIST: Okay. I think what we're going to do then is
`we'll take this objection under advisement. If you do go to those slides I'd
`like you to specifically address where you talk about them and if you would,
`obviously we have the question then pending before us of whether you've
`expanded too far. When you hit those slides please just address them if you
`would.
`MR. FERRARIO: Very well, Your Honor.
`JUDGE TORNQUIST: Okay. Thank you. I don't believe there's any
`other pending objections; is that correct?
`MR. FERRARIO: Your Honor, I do believe maybe slide 75.
`JUDGE TORNQUIST: Oh, slide 75. Okay. That one was more of a
`melded one, correct? We have a table, we have some arguments and some
`you argued were not in there. You want to address 75 then?
`MR. FERRARIO: Yes, sure Your Honor. So, and slide 75 as you
`pointed out.
`JUDGE TORNQUIST: Counsel, sorry. Can you come up to the
`microphone?
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`MR. FERRARIO: It's a marination of some of the facts contained
`within references that were discussed and it's odd for us to find that we can't
`be talking about some of the facts within these references. They were
`discussed, I think there were two in particular. There's the Locke which is a
`ground discussed at length both by the motions and by our experts and
`they're pointing to the fact that oh, well, there's just one specific example
`that perhaps we haven't specifically identified before. The other one is the
`Sant reference and that one was also discussed in connection with the
`declaration our expert submitted and it specifically discussed essentially
`(indiscernible) there on the slide.
`JUDGE TORNQUIST: Okay. And how do you address the one that
`they say you didn't ever address?
`MR. FERRARIO: Well so what we have there is an example that's
`listed, and we listed two examples from that reference and the way I see it as
`we've discussed that reference at length. We talked about what it discloses
`and what it doesn't disclose and it's in connection with the broad teachings
`and in connection with the specific teachings of the patent. This is just
`another data point that falls well within the ambit (phonetic) of those
`arguments and the discussions in that reference that we made.
`JUDGE TORNQUIST: Okay. Patent Owner.
`MR. HERMAN: Thank you, Your Honor. It's Patent Owner's view
`that that particular slide is first making an argument that was not expressed
`in Petitioner's briefing. Petitioner's briefing is very specific as to what it's
`using the examples in the prior art for. It wasn't looking at all the examples
`together, instead it was making a separate argument for Colclough, a
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`separate argument for Nicholson and then separate arguments when it comes
`to the Motion to Amend. But this particular slide seemed to be making an
`overarching argument that didn't appear anywhere in Petitioner's briefing
`and it's doing it using just not the examples that they referred to but
`additional examples that aren't appearing anywhere in the briefing, and the
`two things that we pointed to were that example 11 from the Bloch reference
`which you won't find discussed anywhere in any of the briefing, and then
`there's a second example from the Sant reference and I don't think the Sant
`exhibit is cited anywhere at all in any of their briefing let alone this
`particular example. So they seem to be collating examples and making an
`argument about a collection of examples and that argument is not reflected
`anywhere in the briefing.
`JUDGE TORNQUIST: Okay. And let's just hear quickly from
`Petitioner.
`MR. FERRARIO: Sure, Your Honor. So I heard that --
`JUDGE TORNQUIST: And just again make sure you're as close to
`that microphone as possible.
`MR. FERRARIO: Right. So, Your Honor, we did cite the Sant
`reference. It's in the Lam declaration and it is -- specifically you can find it
`at paragraph 42 of Exhibit 1004 which actually falls on page 27 of that
`exhibit. So it is specifically cited. Now, what I hear is they have a problem
`with the format of the data because we discussed those references in the
`same way and those examples in the same way that's being presented in the
`slide. Yes, we did it separately, but it's always been to explain that these
`antioxidants were known, that these treatment ) rates of magnesium were
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`known, that ZDDP was known and performance requirements were known.
`We made that a consistent theme throughout our brief in every part of our
`expert declarations and our motions, so all this exhibit does is collate that
`data in one slide.
`JUDGE TORNQUIST: Okay. So what we're going to do then, we'll
`take this again under advisement but understand we're extremely sensitive to
`the idea of new arguments coming into this case. So when you get to that
`slide please be careful to show us where exactly you've relied on this or why
`it would be fair to consider them, and also remember the slides are not
`evidence in this case at all so take that, you know, as you're arguing this case
`take that under advisement too.
`Okay. With that, I don't believe there's any other objections pending.
`Petitioner?
`MR. FERRARIO: No, Your Honor.
`JUDGE TORNQUIST: And Patent Owner?
`MR. HERMAN: No, Your Honor.
`JUDGE TORNQUIST: Okay, great. Okay with that then we will
`start with Petitioner and you can start when you're ready.
`MR. FERRARIO: Thank you, Your Honor. So I also wanted to
`introduce briefly Clay Matthews from Afton Chemicals and Kathleen
`Cavanagh from Afton Chemicals as well. They're here from Richmond,
`Virginia and as you know as the Petitioner here, we're here because --
`JUDGE TORNQUIST: Petitioner, just before you start, are you going
`to reserve any time for rebuttal?
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`MR. FERRARIO: So I hope to reserve 20 to 15 minutes for rebuttal,
`Your Honor.
`JUDGE TORNQUIST: Okay. So I'll give you 20 and then you can
`go into it as you see fit and we'll just reserve what needs to be.
`MR. FERRARIO: Whatever I manage to say.
`JUDGE TORNQUIST: Yes.
`MR. FERRARIO: That'll be great and I will highlight for you that I'd
`also like to have my colleague, Keith Fredlake, argue some parts of this and
`hopefully that won't be disruptive but it should be a smooth transition.
`JUDGE TORNQUIST: Okay. Patent Owner, any objections to that?
`MR. HERMAN: No, Your Honor.
`JUDGE TORNQUIST: Okay. Very good.
`MR. FERRARIO: So we're here today as Petitioner because it's our
`view that Infineum was really trying to take from the market these known
`standard detergents, standard antioxidants at known treat rates for uses that
`those of skill in the art were aware of and in working in just the way that
`everybody knew they were, and so we're here and we think that the 274
`patent impermissibly covers things in our argument.
`Now I want to start with the Colclough anticipation argument and
`here just briefly slide 11 please, Ms. Grey, and to note we believe it
`discloses each and every element of the claim. Slide 13, please. The issue
`here raised by Infineum is that Colclough discloses something that it doesn't.
`In our view, Infineum has to rewrite the claim or rewrite the disclosure to
`argue that Colclough doesn't anticipate. It's clear, it says .4 weight percent
`of an alkylated diphenylamine to what there's no question. As the Board
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`found when Colclough wanted something to be diluted it would tell you and
`the MSDS data sheets that they rely on to create some ambiguity are both
`after the filing date and we have evidence in the form of slide 15, please, that
`shows that Irganox contains no dilutants.
`JUDGE TORNQUIST: Is there any evidence in the record talking
`about Exhibit 1026 as to why that would be more -- other than the date --
`more compelling than the documents that they filed, Patent Owner filed?
`MR. FERRARIO: Yes, yes, Your Honor. So I think there is. I mean
`the evidence in the record explains what MSDS sheets goes to show you that
`those are not technical specifications, that they don't contain purity levels of
`chemicals.
`JUDGE TORNQUIST: Right. I've seen that. I'm just wondering if
`there's something on 1026 specifically?
`MR. FERRARIO: All of what it is which is a technical specification.
`JUDGE TORNQUIST: Okay. That's good.
`MR. FERRARIO: And our expert's opinion on this matter and
`familiarity with these kinds of documents. So, on slide 24 I'd like to address
`the substitute claim on this anticipation ground because it's all related to
`Colclough. So here Infineum had a calcium detergent, put an upper limit on
`the mag (phonetic) and there are no questions that Colclough discloses those
`issues. This then leads to the claim construction issue as to whether or what
`does the claim read with respect to element D.
`If you would turn to slide 26, please. As you know it's our contention
`that that claim term reads consistent with BRI principles that is the ZDDP as
`we'll call it, that can have a lower limit of zero and this of course is what
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`Infineum points to in the Motion to Amend. This is what they cite in
`support of it, the disclosure that includes zero as a lower amount which
`according to claim construction principles is an optional component.
`Now, when you look at the arguments made in the briefing we think
`it's pretty clear as to what this term means. When they say they removed the
`word optional and that that created a requirement for component D, that's
`not the case because as you recall the original claim the word optionally
`modified components D and E and E now is a requirement, and if they
`wanted to make D a requirement to be present in an amount they could have
`said be present in an amount. Instead they said in an amount up to and, if
`you go back to slide 24 please, you'll see that when they use the phrase in an
`amount in the penultimate clause -- it's a little dense there -- but it recites the
`magnesium concentration of .05 mass up to 0.15 mass, they knew how to put
`a lower limit on the phrase “up to.” They didn't do that here and thus it's
`optional.
`Slide 35, please. Well they make an interesting argument. They do
`cite other parts of the specification that contain some lower limits but what's
`interesting about that is they cite part of the spec that says zero, oh but
`please ignore that piece of it and then it could be 80 or it could be 100 or
`maybe 200, and so this in our view is if their claim construction is correct
`then their interpretation lacks written description and the motion should be
`denied.
`On slide 32 please you'll see we cited case law that shows that you
`cannot use arguments in the very same proceedings. All of their case law is
`distinguishable on this point and in fact the Marine Polymer case, which is
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`the leading Federal Circuit case here, was recently cited in support in an ex
`parte reexamination that you see there on slide 32 for U.S. patent No.
`7,483,856. So we think on all those points Colclough anticipates both the
`original claims and the amended claims as we've identified in our briefing.
`So I want to jump into our obviousness argument.
`JUDGE TORNQUIST: Can we go back? I have a question on the
`question of Colclough. In your reply brief, page 4, you mentioned that Mr.
`Styer prepared the examples using .4 weight percent of Irganox L57 and that
`.4 percent of the compound, does that suggest that one of skill in the art
`actually would read it as Patent Owner is reading it?
`MR. FERRARIO: No, I don't think so, Your Honor, and the reason is
`that as our expert explained, it was fair to presume that the Irganox was at a
`very high level of (indiscernible.) That's the starting point. Second, if we
`made that example to measure this average, that component G has no impact
`on this average. So if we made it wrong, we made it wrong. But if, for
`example, someone's going to buy Irganox L135 or L57, and it's at 50 percent
`(indiscernible) and Colclough is teaching you to use .4 weight percent of an
`alkylated diphenylamine, do you use .4 weight percent of Irganox? No,
`that's not what Colclough is teaching. It's saying get to .4 weight percent of
`this chemical. So you double the amount that you have depending on your
`purity scale (phonetic). Now, Mr. Styer maybe believed and presumed that
`that was at a full strength (indiscernible) because the technical specification
`sheet tells you it's unlimited so that's how much you use.
`All right. So getting into our obviousness arguments, can we go to
`slide 65 please, and I want to just briefly because I think it's important as
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`you know to talk a little bit about what the state of the art was like at the
`time all this activity was going on, and it all started with government
`regulations that reduced emissions on certain noxious chemicals.
`So as you see in slide 68, this led to, well we had car manufacturers to
`make this after treatment devices. Now these after treatment devices in the
`form of EGR, DPS and catalytic converters it was known that some of the
`additives and the compositions or elements of HDD (phonetic) lubricants
`could interfere with their deficiencies and thus the ACEA put limits on it and
`the limits were directed to sulfated ash, they were directed to phosphorus
`and they were directed to sulfur and the reason for that is if you go to slide --
`oh, I'm sorry, stay here for a second. So they also had performance
`requirements because they knew that if you put limits on these elementals
`could impact performance. What kind of performance? Bore polish, piston
`cleanliness and oil consumption.
`You can see that on slide 72 where here being explained that bore
`polish originates from hard common build-up around the top layer of the
`deposit and that's that greyish area at the top that you can see in the figure
`and that leads to increased oil consumption.
`So if you go to slide 70 what you'll see is one of the sources of these
`elements and it's identified here the sulfonates, the phenates -- those are the
`detergents -- and the ZDDP. This is where these bad elements come from.
`So there is going to be pressure in the art to reduce or somehow manage the
`use of these elements. Well, what does the art do, and here's where we're
`going to go into some of the exhibits that are discussed by Lam in
`connection with this story exactly which is to say Exhibit 1051 which Lam
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`uses and teaches that lowering detergents leads to carbon deposits, and then
`1053 which is conventionally known as Rasberger teaches that ZDDP is
`used to control these kinds of deposits. So if you lower ZDDP you're going
`to have more of these carbon deposits.
`Finally, Migdal 1052 shows that there's going to be a need for the use
`of increased amounts of antioxidants for this very purpose because you are
`going to be down treating ordinary detergents and ordinary ZDDP, got to
`make up for that oxidation debit that you're producing.
`All of that was known by those of skill in the art at the time before the
`filing of the 274 patent and if you go to slide 76 what you'll see is that the
`maker of antioxidants in this space at that time did a study where they
`screened 33 different types of antioxidants and what they did and the
`environment in which they did it was -- and this is logical given the ACEA
`specs -- is that 1 percent ash and they did it at a 1 percent treat rate and what
`they found was -- go to slide 77 -- is that there were basically two types of
`antioxidants that were good, aminic antioxidants and phenolic antioxidants
`and combinations thereof.
`Now, specifically if you go to slide 79 what you see is Bloch and
`Bloch is one of the grounds that we've used in the Motion to Amend and
`here what you see is that Infineum itself discovered before the 274 patent
`that in lubricants with high magnesium, you see in the 1250 treat range, that
`kinder (phonetic) falls, which is that chemical formula there, that is
`according to Lam Dec., 1004, paragraph 90, that that antioxidant used is the
`very same antioxidant specifically disclosed in the 274 patent for this
`purpose. Excellent bore, and you'll see in the data here, on the table on the
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`right the last entry crown land heavy carbon deposit, example 10C all the
`way to the right, zero.
`So that brings us to slide 73, please and what we think -- and this is
`where Lam I think is trying to discuss all of these things in connection with
`the evidence that we've seen here and the prior art references -- basically that
`the ACEA limits put these ceiling on SAPS. That led to a decrease in
`oxidation credits which increased deposits with the potential for increased
`deposits and the solution very clearly telegraphed in the prior art was to use
`antioxidants and (indiscernible) free SAPS and the kinds of antioxidants you
`could use ash-free aminic, sulfur-free phenolic.
`Now this brings us to slide 75 which is subject to their objection and
`I'll only point out, and this is consistent with all the arguments we've made
`throughout all the papers in the briefing, that all the art has numerous
`examples of lubricants added with mixed magnesium calcium using phenolic
`or aminic antioxidants with ZDDP and they all relate to deposit control
`cylinder wear bore polish, the very same performance requirements the
`ACEA in 2004 is talking about.
`So with that background then if we go to slide 40, what you see is
`Nicholson one of the main grounds for the original claims, and in Nicholson
`we see the exact kind of antioxidant used that's disclosed in the 274 patent.
`It's an ash-free aminic and/or sulfur-free phenolic and it has the antioxidant,
`it has the magnesium and it has the calcium.
`So I want to jump quickly to slide 47 to address the claims argued in
`this regarding the nitrogen claims and we simply want to point out that in
`slide 50 we measured the nitrogen. We actually know what it is. We
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`measured it and we measured it using a standard test on slide 50, please, and
`it's important I think to note that the 274 patent doesn't tell you what kind of
`test, doesn't specify a test, but Mr. Styer testified he used the standard ASTN
`test in doing the calculation.
`Now Infineum, what they did instead on slide 54 is they came up with
`some theoretical maximum amount of nitrogen that could be present. The
`calculations we explained is riddled with errors. It wasn't done according to
`Nicholson's teachings, doesn't account for the loss of water or carbon
`dioxide and even if, if we go to slide 51, even if we accept their data know
`that in the calculation itself just prior to adding up all the different amounts
`of nitrogen from the two components, Dr. Emert’s going (phonetic) three
`significant digits and then reports a .065 which if you round up he admitted
`you get to .07. So we did the right thing by measuring the nitrogen, they're
`coming up with some theoretical maximum amount of calculation that's
`frankly error filled. We'll then move to slide 89, please.
`JUDGE TORNQUIST: Before you move on, I don't know what 89 is,
`but there is a dispute on claim 3.
`MR. FERRARIO: Yes, Your Honor.
`JUDGE TORNQUIST: And I'd like to make sure we address that
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`here.
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`MR. FERRARIO: Yes. And that is exactly where I'm going.
`JUDGE TORNQUIST: Okay. Perfect, perfect.
`MR. FERRARIO: Because, as you know, so claim 3 has an upper
`limit of magnesium and it's incorporated into the substitute claim 14, so we
`are united on that front. And so if you go to slide 89, so here again we're
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`back with example 4 of Nicholson. This is in view of the ACEA 2004
`(indiscernible.) So for claim 3 on the magnesium content ACEA put the
`ceiling on the use of metal and you know that, and so as we've explained in
`our briefing that we've got a couple of variables to modify here. It's not
`some innumerous amount of variables. You already have the ceiling and
`within that ceiling here when you calculate the treatment of magnesium
`comes out at .197 as we've explained, we're using a conventional non-exotic
`species of detergent, that it would have been obvious to dial down the
`knowledge of detergent as a class according to the ACEA spec. Just start
`with that proposition, right?
`Then the question becomes if you're dialing down your detergent as a
`class to get below certain levels of ash, then well why don't you use
`calcium? That's a point raised by Infineum and if you go to slide 90 what
`we see is the reason you can use calcium is because Nicholson teaches it
`first of all. It says yes, we can use mixtures of magnesium and calcium, it's
`right there expressly and if that's not reason enough if you go to slide 91
`what you see is that Stepina tells you those kinds of mixed metal detergents
`in thermally made engines which is these environments where you have after
`treatment devices and it raises the temperature of the engines that it
`increases the efficiency and becomes more useful and that they provide
`centers (phonetic). So there's a clear direction to use them, these kinds of
`mixed magnesium calciums under the overall detergent level.
`JUDGE TORNQUIST: Okay. So we have both a contingent Motion
`to Amend and the regular petition, but one does not use Stepina, right?
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`Nicholson is not in combination with Stepina, it's Nicholson ACEA 2004,
`correct?
`MR. FERRARIO: Let me double check that but I think that's correct,
`Your Honor.
`JUDGE TORNQUIST: So I'd like to first start with -- let's start with
`that one first before we go over to Stepina because unless you have an
`argument that we can actually use Stepina in the petition for claim 3.
`MR. FERRARIO: Understood.
`JUDGE TORNQUIST: Okay.
`MR. FERRARIO: Very well.
`JUDGE TORNQUIST: So the original statement about claim 3, you
`bring the calculated SASH down to .975.
`MR. FERRARIO: Yes.
`JUDGE TORNQUIST: Well 0.975.
`MR. FERRARIO: Yes.
`JUDGE TORNQUIST: And that gets you then to the magnesium
`amounts you want of .15, right?
`MR. FERRARIO: Yes, correct.
`JUDGE TORNQUIST: Okay. So what struck me is why not .99, .98
`SASH? It seems like we're going down to 975 to get the claim, not for some
`other reason.
`MR. FERRARIO: Well it's a SASH limit, right, and the tolerances
`here, do those of skill in the art formulate to exactly 1 percent or .9999
`percent? No. And there are other examples in the prior art that bring SASH
`.5, .6, .7. So this is a range to say that you can get below that 1 percent
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`SASH limit and what would govern how low you can go or how low one can
`go in other factors -- what are the costs of what I'm doing, what is the
`performance requirement -- and there's teaching in the art that suggests that
`you can get 9.9 down to .8.
`JUDGE ANKENBRAND: Can I interrupt you for a second?
`MR. FERRARIO: Yes.
`JUDGE ANKENBRAND: What you're arguing now, is that in the
`petition or the reply anywhere? Because I'm looking at the petition and I
`just see the calculated SASH at .975 mass percent but I don't see any
`discussion really of all of these things one of ordinary skill in the art would
`have considered when trying to get below a SASH percentage of 1 that
`you're discussing now?
`MR. FERRARIO: Yes. I don't know if I can point you to a
`particular part in the briefing where that is but I guess what I would respond
`is to say that Dr. Lam where he's talking about the pressures of those of skill
`in the art but I think it's inherent in that discussion that people can adjust the
`amount of detergents based on a number of factors and these are the kinds of
`factors I’m talking about.
`JUDGE TORNQUIST: Okay. So at least on claim 3 for the petition
`side I don't see any statement that you're replacing it with calcium. It looks
`like you're just dropping the magnesium.
`MR. FERRARIO: Correct, because calcium is not required on the
`petition side.
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`JUDGE TORNQUIST: Okay. I understand that. I guess the question
`is then how do we know you could just drop the amount of magnesium
`which is used as, you know, that's detergent, right?
`MR. FERRARIO: Uh-huh.
`JUDGE TORNQUIST: How do we know you can drop it to that level
`and still work appropriately?
`MR. FERRARIO: Sure. So well I think Nicholson discloses that you
`can use a range of detergents. So this example 4, if we go to slide 40,
`please.
`JUDGE TORNQUIST: I'm sorry, you said 4-0?
`MR. FERRARIO: Four zero.
`JUDGE TORNQUIST: Okay.
`MR. FERRARIO: So here it's just one example, example 4 which
`shows it at a 2.28 treat range. But Nicholson's teaching's broader than that
`and it teaches that you can use the wider range of below of the detergent.
`JUDGE TORNQUIST: Okay. I guess my question would be we have
`lots of different components here that all have some interplay together. How
`do you know you can just drop one and have it work? I think Patent
`Owner's argument is these were set at a certain level to be effective and now
`we're just dropping them. How do we know that'll work?
`MR. FERRARIO: We know that it works because Nicholson tells
`you. It tells you that you can use a range of detergent in conjunction with
`what it's teaching. So the range isn't just limited to one specific example.
`That's not what prior art references teaches where you submit a perspective
`(phonetic).
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`JUDGE TORNQUIST: Okay.
`MR. FERRARIO: All right. So movi
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