[00:01:01] Speaker 03: Our final case this morning is number 18-2019, Sionics LLC versus Himamatsu Corporation, Mr. Bellinger. [00:01:15] Speaker 04: Good morning, Your Honor. [00:01:16] Speaker 04: May it please the Court. [00:01:19] Speaker 04: We're appealing from two grounds of unpatability found in the IPR proceeding below. [00:01:25] Speaker 04: The first being anticipation over the Nakashima reference, the second being obviousness. [00:01:30] Speaker 04: from a combination of Missouri and Mubuchi. [00:01:33] Speaker 00: But if we affirmed on obviousness, we wouldn't even need to reach anticipation, correct? [00:01:37] Speaker 04: Correct, Your Honor. [00:01:38] Speaker 04: And so if I could start with the obviousness and what we believe to be the error in the obviousness analysis. [00:01:43] Speaker 04: Your Honors, we find the primary legal error, which infected the entirety of the board's opinion on obviousness, was their failure to recognize that a motivation to combine is petitioner's burden [00:01:59] Speaker 04: and must take into account the prior references as a whole, unguided by the claimed invention. [00:02:06] Speaker 04: And the board repeatedly credited petitioners' arguments regarding motivation to combine, which was unclaimed, yet discounted patent owners' responses to the motivation to combine by consistently finding that those responses were not found in claim elements. [00:02:25] Speaker 04: And so we think that is clear error under this court's [00:02:29] Speaker 04: Intelligent Biosystems case, where it is correct that for a teaching away and reasonable expectation of success analysis, the board should have looked to the claims to determine whether a teaching away was to a claim element or whether an expectation of success went to a claim element. [00:02:47] Speaker 04: But it was legally improper for the court to ignore the balance of the teaching of the reference. [00:02:53] Speaker 04: In fact, in the Intelligent Biosystems case, this court found [00:02:58] Speaker 04: that type of analysis central to evaluating motivation to combine when the motivation to combine was directed to that exact issue. [00:03:06] Speaker 00: But why wouldn't this be much like intelligent biosystems where even if that error occurred, it's harmless? [00:03:15] Speaker 00: Because there were otherwise sufficient findings that were made to support the board's conclusion. [00:03:21] Speaker 04: So this is why we think the error was not harmless. [00:03:23] Speaker 04: So the principal error here [00:03:25] Speaker 04: was the board crediting a conclusory statement in the petition that the performance of the Mubuchi CMOS image sensor would be improved by application of Missouri's texture. [00:03:39] Speaker 04: There was a couple sentences in the petition. [00:03:40] Speaker 04: That was the entire articulation of the motivation to combine. [00:03:45] Speaker 04: But importantly, the motivation to combine argument in the petition was directed to the entirety of Mubuchi's CMOS image sensor. [00:03:54] Speaker 04: There was no argument in the petition. [00:03:56] Speaker 04: There was no articulation in the institution decision that Mubuchi should be analyzed as a single pixel or a single picture element. [00:04:05] Speaker 00: But beyond that, there was a whole proceeding before the board, and there was expert testimony. [00:04:09] Speaker 00: The board relied on, I mean, the board wasn't bound by saying we can only rely on what we relied on at the institution stage. [00:04:17] Speaker 00: They're allowed to look at the entirety of the record, right? [00:04:20] Speaker 04: they're allowed to look at the entirety of the record. [00:04:22] Speaker 04: What they're not allowed to do is change the basis for the petition, moving from the entirety of the CMOS image sensor to a new position where you're looking at only a single pixel of the image sensor and then discount the problems with the motivation to combine that are not claimed elements, but that are part of the references of the whole. [00:04:42] Speaker 04: So what they effectively did was use the claims as a template to discount the [00:04:47] Speaker 04: issues with crosstalk, the issues with color mixing. [00:04:50] Speaker 03: I'm not following this. [00:04:51] Speaker 03: On the crosstalk point, they had discussion about it and how it wouldn't interfere with the motivation to combine, wouldn't be a teaching away. [00:05:03] Speaker 03: There's plenty of evidence in the record that crosstalk wouldn't prevent the combination. [00:05:09] Speaker 03: What did they do wrong? [00:05:11] Speaker 04: They made that finding, Your Honor, by saying that only a single pixel was claimed as opposed to multiple pixels. [00:05:17] Speaker 04: If you have only one pixel. [00:05:18] Speaker 03: That's one ground, but I don't understand that to be the sole ground for their conclusion. [00:05:23] Speaker 04: We think that that was, in fact, the sole ground for rejecting the various arguments presented by our expert and for critiquing our expert for not anticipating the patent challenger's response. [00:05:37] Speaker 03: Where do they say it's the sole ground? [00:05:41] Speaker 04: So the error begins in there. [00:05:44] Speaker 02: After having done their crosstalk analysis, they say, moreover, at the end, we know that crosstalk is only a problem when it has more than one pixel. [00:05:55] Speaker 02: But they've already had rendered their analysis as to why they're rejecting your crosstalk argument, right? [00:06:04] Speaker 04: However, at page 40 of their opinion, this is appendix. [00:06:07] Speaker 02: I'm looking at 42 is where I'm, pardon me, where I was looking. [00:06:10] Speaker 04: Sure. [00:06:11] Speaker 04: And where I think the error began, which, in fact, is the balance of the opinion, at page 40 of the opinion, appendix 1250, they acknowledge that petitioner replies, while patent owner is correct, that applying a texture will increase scattering and diffusing. [00:06:26] Speaker 04: Where are you on that page? [00:06:28] Speaker 04: I'm at the top of the page where they're citing petitioner's position. [00:06:34] Speaker 04: So both the board and petitioner acknowledge [00:06:37] Speaker 04: that applying a texture will increase scattering and diffusion of incident light. [00:06:41] Speaker 04: It does not necessarily equate to a substantial increase in optical crosstalk, which depends on a number of factors, including device layout, architecture, elements designed to reduce optical crosstalk. [00:06:53] Speaker 04: And they go on. [00:06:54] Speaker 04: This is an acknowledgment that crosstalk exists. [00:06:57] Speaker 03: But this isn't based on a single pixel thing, which is Judge Clevenger points out. [00:07:01] Speaker 03: It doesn't come up until page 42 in the Moreover paragraph. [00:07:06] Speaker 04: That's correct. [00:07:08] Speaker 04: But there's no independent finding that there is not optical crosstalk. [00:07:12] Speaker 04: Rather, what the board depends on is that optical crosstalk is not commensurate. [00:07:18] Speaker 02: More of a mean furthermore or in addition to? [00:07:22] Speaker 04: Correct, on page 42. [00:07:23] Speaker 04: Yeah. [00:07:26] Speaker 04: However, none of the points where the board evaluates the motivation to combine, do they specifically find [00:07:38] Speaker 04: that there was a lack of optical crosstalk, or that the motivation to combine was sufficient without optical crosstalk. [00:07:46] Speaker 04: And I'd say that the error begins page 37 of the opinion, where the board cites the intelligent biosystems case. [00:07:54] Speaker 04: This is on the bottom of page 37 of the opinion. [00:07:56] Speaker 04: They say, initially, we clarify that petitioner does not need to prove a reasonable expectation of success in achieving the objectives of either reference. [00:08:05] Speaker 03: What they say on page 41, they say, [00:08:08] Speaker 03: We credit the testimony of Dr. Suri, and then they recite his testimony about crosstalk, as I understand it. [00:08:19] Speaker 04: In crediting that testimony, however, Your Honor, they are basing their opinion on a different reading of the reference, which they raise on page 37, appendix 1247, which says, another basis set forth by petitioner, however, [00:08:38] Speaker 04: is specific to improving sensitivity of a photodiode, i.e. [00:08:41] Speaker 04: corresponding to a pixel, as opposed to a CMOS image sensor that comprises more than one pixel. [00:08:47] Speaker 04: And they cite only to the reply at page 15. [00:08:50] Speaker 04: So the point being, they discounted the crosstalk argument not because it wasn't an issue for a CMOS image sensor as a whole. [00:08:58] Speaker 04: It was because they adopted an argument raised for the first time in the reply brief that was not part of these situations. [00:09:04] Speaker 00: But wait, the reply brief, I mean, in this case, this wasn't them [00:09:08] Speaker 00: bringing in whole new pieces of art in their reply brief, this was providing expert testimony in response to the patent owner's expert testimony. [00:09:19] Speaker 00: How is that not permissible? [00:09:21] Speaker 04: It's not permissible if they shift the burden to the patentee. [00:09:24] Speaker 04: How is that shifting the burden? [00:09:26] Speaker 04: The case law is clear. [00:09:28] Speaker 04: They presented a conclusory statement that the combination of the two references would improve performance of Mobuchi CMOS image sensor. [00:09:38] Speaker 04: They then asked the patentee to respond to that argument. [00:09:41] Speaker 04: We did. [00:09:41] Speaker 04: We presented evidence in response. [00:09:44] Speaker 04: They then credited an argument raised for the first time on reply that the problems created in the CMOS image sensor were irrelevant to their analysis because an entire CMOS image sensor was not claimed. [00:09:57] Speaker 04: And the claim could be read on a single pixel. [00:10:00] Speaker 04: And if there's only a single pixel, the issue of crosstalk is eliminated. [00:10:05] Speaker 00: But I mean, if your real position is there wasn't enough in the petition to really justify the institution, but we can't review that question. [00:10:15] Speaker 00: We can only review whether or not there was enough in the record post-institution to justify the final written decision, right? [00:10:23] Speaker 04: And respectively, under the Magnum oil case, which is cited in our brief at page 12, this court has found previously an agency may not change theories in midstream [00:10:33] Speaker 04: without giving respondents reasonable notice of the change and the opportunity to present arguments under the new theory. [00:10:40] Speaker 04: What's the change in theory? [00:10:41] Speaker 04: The change in theory is that rather than evaluating a combination of Mazur with a multi-pixel CMOS image sensor, which was the basis for the petition, that that combination would be evaluated as a combination of Mazur extracting a single pixel from the Mobici image sensor. [00:10:59] Speaker 04: And that was critical because that eliminated the need to evaluate crosstalk. [00:11:03] Speaker 04: And they did so using the claims as a template. [00:11:05] Speaker 03: Because there's all sorts of other evidence that even with multipixels, the crosstalk problem is thought to be solved in the prior art. [00:11:16] Speaker 04: And respectfully, I don't believe there was any competent evidence in the record of that, Your Honor. [00:11:23] Speaker 03: Well, I'm not sure about that. [00:11:25] Speaker 03: I see lots of prior [00:11:28] Speaker 03: art references that teach solving that problem. [00:11:33] Speaker 04: But not the proposed combination, which I think is part of the problem. [00:11:37] Speaker 04: The patent owner is tasked with responding to combinations presented by petitioner. [00:11:45] Speaker 04: I think this was part of the last argument, is whether the petitioner can fill in gaps in their original petition, or whether the board can fill in those gaps by citing additional references that are [00:11:56] Speaker 04: initially presented. [00:11:57] Speaker 00: Well, you made a very specific crosstalk argument in your patent owner response, right? [00:12:01] Speaker 00: Yes. [00:12:02] Speaker 00: Are you saying they're not allowed to respond to that? [00:12:04] Speaker 04: They can respond to that, but they can't respond to that by shifting their initial position or their initial theory. [00:12:10] Speaker 00: Well, but their initial theory always was that these two pieces of prior art would be enough when put together, right? [00:12:19] Speaker 04: But they did not discuss at all the issue of crosstalk in their petition. [00:12:24] Speaker 04: They didn't discuss any of the [00:12:26] Speaker 04: elements that they later argued and replied for the first time, and the board credited, avoided the problem. [00:12:31] Speaker 00: Well, isn't there a really big difference? [00:12:33] Speaker 00: I mean, in Magnum Oil, the board was coming up with a whole new piece of prior art that no one had ever cited, and it was totally out of the blue. [00:12:42] Speaker 00: What we're talking about here is a situation in which you present your case in the petition that these two pieces of prior art would be enough to render the claim obvious [00:12:51] Speaker 00: And are you saying that, in your petition, you need to anticipate every possible patent owner response? [00:12:58] Speaker 04: I'm saying, in your petition, you need to set out a claim construction and a combination that can't then be changed for the first time in reply. [00:13:06] Speaker 04: So you can't change the interpretation of the claim that you present in the petition, and you can't change the interpretation of the references in the petition in a material way. [00:13:14] Speaker 03: How do they change the construction? [00:13:15] Speaker 04: They change the construction from... By the more over-holding. [00:13:20] Speaker 02: It's the more over-paragraph. [00:13:22] Speaker 04: The more over paragraph, but which is tied to their a single additional. [00:13:27] Speaker 02: That's another basis. [00:13:29] Speaker 02: That's your theory is that they shifted and made the decision solely on the basis of a single pixel point. [00:13:35] Speaker 04: Correct. [00:13:35] Speaker 04: And that's also found at page 37 of the opinion. [00:13:37] Speaker 03: It wasn't just a single pixel theory. [00:13:41] Speaker 03: We've been pointing out to you that the board has the single pixel thing just as a more over paragraph at the end of this discussion. [00:13:50] Speaker 04: But they also have that [00:13:51] Speaker 04: At the beginning of the discussion, Your Honor, respectively, at page 37, they state the basis were set forth by petitioner, however, as specific to improving sensitivity of a photodiode, i.e. [00:14:03] Speaker 04: corresponding to a pixel. [00:14:04] Speaker 04: And that was raised for the first time in the reply and then in the final written decision. [00:14:08] Speaker 04: That wasn't part of the institution decision. [00:14:10] Speaker 04: It was not part of the petition. [00:14:13] Speaker 04: And so that's both at the beginning and the end of their analysis, Your Honor, respectively. [00:14:17] Speaker 03: OK. [00:14:17] Speaker 03: You're ready to remodel. [00:14:18] Speaker 03: Do you want to save it? [00:14:20] Speaker 03: Yes. [00:14:26] Speaker 03: Mr. Simmons. [00:14:31] Speaker 01: Good morning. [00:14:32] Speaker 01: Good afternoon. [00:14:33] Speaker 01: May it please the court? [00:14:36] Speaker 01: Your Honor, for clarification, from the very outset, HC has raised the same issue, that Mazur and Mabuchi in combination, and there's no dispute, contains all the elements of the claims. [00:14:50] Speaker 01: the relevant claims of the 591 patent. [00:14:53] Speaker 01: They only attack what they repeatedly refer to as the motivation to combine the two references. [00:14:58] Speaker 01: And what we really argued was that the Supreme Court requires only an apparent reason to combine the references, and it's supported by some articulated reason with some rational underpinning. [00:15:08] Speaker 01: That was provided. [00:15:08] Speaker 01: And that was provided from the very beginning. [00:15:12] Speaker 01: And in that, Mobuchi teaches all the elements of the back-aluminated CMOS image sensor, but not the substantial [00:15:20] Speaker 01: the substrate having a textured surface. [00:15:23] Speaker 01: Mazur teaches a method for microstruction of silicon layer using a femtosecond laser for enhancing light absorbing devices. [00:15:31] Speaker 01: Appendix pages 49 and 50 in the petition. [00:15:35] Speaker 01: And from the beginning, we said that it was well-known, well-known in references of the time. [00:15:41] Speaker 01: We're including Webb from 1981, Ben Zeigbrook from 1997, [00:15:47] Speaker 01: and Maloney from 2006, all well before the 2009 filing date of the 591 patent, that texturing improves absorption. [00:15:57] Speaker 01: They don't refute that. [00:15:59] Speaker 01: They just say that wasn't a good enough reason. [00:16:01] Speaker 01: That's really their argument. [00:16:03] Speaker 01: We didn't change our position during this entire PTAB trial. [00:16:07] Speaker 01: At one point, we had to address issues raised by their expert. [00:16:12] Speaker 01: They basically said, your reason's not good enough, and our expert's going to talk about crosstalk. [00:16:16] Speaker 01: The board did consider that. [00:16:18] Speaker 01: The board considered substantial evidence of what their expert raised. [00:16:23] Speaker 01: What their expert did was essentially make drawings that weren't supported by a reference or by a calculation. [00:16:30] Speaker 01: And the board considered that. [00:16:32] Speaker 03: So if you look at... What they're saying is that their response to the crosstalk argument was a single pixel theory and that that was raised for the first time in the reply. [00:16:46] Speaker 01: Their single pixel theory was raised out of the crosstalk raised by their expert. [00:16:52] Speaker 01: And in his expert declaration, our expert addressed it in response. [00:16:58] Speaker 01: I think we're allowed to address what they raised in response. [00:17:00] Speaker 01: It was one of many issues. [00:17:03] Speaker 01: We didn't walk away from it. [00:17:04] Speaker 01: We still said you'd still have an improvement in absorption by texturing. [00:17:09] Speaker 01: And we refute the crosstalk. [00:17:11] Speaker 01: And the board addressed this issue. [00:17:12] Speaker 03: Did your refutation on the crosstalk [00:17:16] Speaker 03: rely on the single pixel thing exclusively or partly or what? [00:17:22] Speaker 01: No. [00:17:22] Speaker 01: No, I did not rely on it exclusively. [00:17:25] Speaker 01: Just like you pointed to the more overstatement, we acknowledge that the Mabuchi reference is multiple pixels. [00:17:33] Speaker 01: It's for multiple colors, right? [00:17:34] Speaker 01: Red, green, blue. [00:17:36] Speaker 01: There's color filters, lenses that focus the light. [00:17:39] Speaker 01: And so we acknowledge that's in the reference. [00:17:42] Speaker 01: We're saying you would still want to improve Mabuchi [00:17:45] Speaker 01: by texturing so that you can increase absorption, as is well-known in the art as of 2009. [00:17:51] Speaker 01: That's set forth from the very beginning. [00:17:53] Speaker 01: They said that we raised that, that it was well-known later. [00:17:56] Speaker 01: We did not. [00:17:57] Speaker 01: That was raised in the petition. [00:17:59] Speaker 00: Where did you raise it in the petition that it was well-known? [00:18:01] Speaker 01: It's at appendix pages 12 to 15. [00:18:06] Speaker 01: And we talk about, according to the 591 patent, this purported solution. [00:18:10] Speaker 01: Well, if you'll look, it says, the solution is unsurprising. [00:18:14] Speaker 01: Given the development of photodiodes and other imaging devices have been texturing surfaces for decades with the purpose of increasing electromagnetic radiation absorption. [00:18:24] Speaker 01: That's at page, appendix 13. [00:18:26] Speaker 01: It's in our original petition, page four. [00:18:28] Speaker 01: We go on to talk about observed in the 1960s. [00:18:31] Speaker 01: And we go on to talk about web, which was a patent from the 1981 that states that the incident surface can increase the light path by contouring it with the back surface or both devices. [00:18:43] Speaker 03: But the crosstalk isn't discussed in the petition, right? [00:18:47] Speaker 01: No, crosstalk is not because it was an issue raised. [00:18:50] Speaker 01: So basically, we raised a reason to combine. [00:18:52] Speaker 01: They turned around and said, your reason's wrong because of crosstalk. [00:18:56] Speaker 01: And then once they raised that issue, which I consider to be a rebuttal evidence, they were rebutting our reason to combine. [00:19:02] Speaker 01: We met our burden. [00:19:03] Speaker 01: We had an expert say, here's a reason to combine. [00:19:06] Speaker 01: I based it upon an express teaching in the Missouri reference. [00:19:11] Speaker 01: So you take the Missouri reference, it expressly teaches, you can increase the functionality through absorption, and you combine it with Mabuchi, and then they come back and say, that's not a good reason. [00:19:23] Speaker 01: They don't dispute that Missouri teaches that. [00:19:25] Speaker 01: They say that's not a good enough reason because of crosstalk. [00:19:28] Speaker 01: And our expert comes back and says, wait a minute, when you say crosstalk, and they show a diagram of crosstalk, if you look at their expert's diagram, [00:19:40] Speaker 01: He eliminates parts of Mabuchi that have the light-blocking aluminum and also the microlens, because that's supposed to prevent crosstalk in Mabuchi, and he also ignores that there's space around each of the pixels in Mabuchi. [00:19:55] Speaker 01: And that's, we refute the rebuttal. [00:19:58] Speaker 01: The P-tab considered both experts and both our arguments, and that's in our brief at page 29, the red brief, and the P-tab goes on to conclude [00:20:10] Speaker 01: at Cyanics' arguments, for example, one, fail to account for contributions from other components of Mabuchi. [00:20:16] Speaker 02: So when did the one-pixel issue show up? [00:20:19] Speaker 01: The one-pixel issue really showed up at the hearing. [00:20:23] Speaker 01: The crosstalk issue showed up during the entire proceeding. [00:20:28] Speaker 01: So as soon as we raised the reason to combine the references, they came back. [00:20:32] Speaker 02: And your basic evidence is, yeah, there may be some crosstalk, but there's not enough to make you work. [00:20:37] Speaker 01: There's not enough to make it a problem. [00:20:39] Speaker 02: It's an optimization. [00:20:41] Speaker 02: You can see that there's potential for crosswalk, but the prior art has taught a way to minimize that. [00:20:46] Speaker 01: That's right, Your Honor. [00:20:47] Speaker 02: So bring back to when one pixel shows up. [00:20:52] Speaker 01: My understanding is the one pixel came up in the hearing itself. [00:20:55] Speaker 01: So it was in the actual hearing at the end of the proceeding. [00:20:58] Speaker 02: One of the judges leans over and says, hey, this claim would read on one pixel. [00:21:03] Speaker 01: Right. [00:21:04] Speaker 01: Right. [00:21:04] Speaker 01: And then counsel argues against it. [00:21:07] Speaker 02: Why are we worried about crosstalk? [00:21:09] Speaker 01: Right. [00:21:10] Speaker 01: So why are we worried about crosstalk when the claim only covers one pixel? [00:21:13] Speaker 01: We don't take that position. [00:21:15] Speaker 01: We don't need to have it be one pixel, although I argue that they've essentially said that that's what it is in the past. [00:21:21] Speaker 01: But that's not necessary, because we're saying you can improve absorption in multiple pixels. [00:21:28] Speaker 01: And Van Zeegbroek, for example, is an array of pixels. [00:21:32] Speaker 01: That's one of the prior references from 1997 that we say show it was well-known. [00:21:35] Speaker 01: We're not using that. [00:21:37] Speaker 01: For obviousness, we're just saying it's well known. [00:21:39] Speaker 01: The texture would improve absorption. [00:21:43] Speaker 01: So I think the one pixel argument is a red herring, essentially. [00:21:47] Speaker 01: And the PTAB thoroughly considered it. [00:21:49] Speaker 01: And counsel actually pointed to the place where the PTAB considered all arguments. [00:21:53] Speaker 01: They say that their expert unduly emphasized the degree and severity of the effect of crosstalk. [00:21:59] Speaker 01: That's at appendix pages 1250 to 52. [00:22:02] Speaker 01: They also say they fared to accurate [00:22:05] Speaker 01: accurately represent the broader teachings of Mazur. [00:22:08] Speaker 01: So again, the PTAB considered the evidence and just weighed in favor of the petitioner. [00:22:13] Speaker 01: And they also said that their arguments are contradicted by the evidence of record, demonstrating the trapping effects that result from the texture. [00:22:22] Speaker 01: So we had pointed to the Wu reference, and in the Wu reference, which you get a diagram at, [00:22:34] Speaker 01: I think in their own brief, that the Wu reference, which was one of Mazur's graduate students, it's in their brief of page 52. [00:22:44] Speaker 01: It's a sketch. [00:22:46] Speaker 01: And Wu was a graduate student of Professor Mazur, which they put in their background. [00:22:51] Speaker 01: And in her sketch, she shows that the light bounces back and forth between the different textured surfaces, and that that [00:23:02] Speaker 01: is what would cause light to get trapped actually in the texturing and not necessarily bounce through and go into the adjacent pixel. [00:23:10] Speaker 01: They also point to Dr. Suri in Dr. Suri's testimony, and they ask Dr. Suri about the woo diagram, and then they make a drawing, which they introduce for the first time during the oral hearing as well. [00:23:25] Speaker 01: It's what we refer to as the scale drawing, which was slide nine in their presentation. [00:23:31] Speaker 01: upon testimony from Dr. Suri's deposition. [00:23:35] Speaker 01: They never raised it in their opportunity to raise it in the observations on cross-examination. [00:23:41] Speaker 01: But they made this drawing in the slide. [00:23:44] Speaker 01: It's counsel's drawing. [00:23:45] Speaker 01: It doesn't come from their expert. [00:23:47] Speaker 01: It doesn't come from any of the references. [00:23:49] Speaker 01: So that's what they used to attack this saying that light's going to go even from the woo diagram into the adjacent pixel. [00:23:58] Speaker 01: And that's not evidence. [00:24:00] Speaker 01: That's attorney argument. [00:24:05] Speaker 01: And then finally, they'd also criticized whether Dr. Suri was one of ordinary skill in the art, had the expertise to get more weight than their expert, Mr. Gaidash. [00:24:18] Speaker 01: So all along, they'd never attacked the one of ordinary skill in the art. [00:24:23] Speaker 01: Again, it wasn't until the oral hearing on the PTAB where they said that, oh, well, even though he meets one of ordinary skill in the art, he doesn't have optical design experience. [00:24:34] Speaker 01: And they never disputed his qualifications prior to that. [00:24:37] Speaker 01: The first time he raised it was at the PTAB hearing, suggesting that he should be given less weight. [00:24:42] Speaker 01: Well, actually, Dr. Suri, on the record, has experience in texturing. [00:24:46] Speaker 01: Mr. Gaides does not. [00:24:48] Speaker 01: Now, we've never disputed that Mr. Gaides is a qualified expert, and Dr. Suri certainly is a qualified expert. [00:24:54] Speaker 01: If there's any other questions on the obviousness combination? [00:24:58] Speaker 01: OK. [00:24:58] Speaker 01: Thank you, Mr. Simmons. [00:25:02] Speaker 01: If I need to address anything on Nakashiba, Your Honors, that's the anticipation reference? [00:25:07] Speaker 03: I don't think so. [00:25:08] Speaker 01: Okay, thank you, Your Honors. [00:25:18] Speaker 04: Your Honor, if I may respond briefly. [00:25:20] Speaker 04: There are several points where the board does reference [00:25:30] Speaker 04: And I'm looking at pages, specifically pages 45 and 46 of the opinion, their belief that the petitioner's challenge need not establish a reasonable expectation of success in meeting Mabuchi's objectives of mitigating crosstalk and technically packed pixels if that objective was not recited in the claims. [00:25:48] Speaker 04: They go on to say the relevant evidence, however, must also be tied to the scope of the claimed invention, which may be broader than the disclosed objectives of either reference. [00:25:56] Speaker 04: I think that, for us, that's the fundamental error that the board made. [00:26:00] Speaker 04: in crediting on the one hand. [00:26:02] Speaker 02: Your recollection of how the one pixel matter came to be similar from your adversaries? [00:26:09] Speaker 02: Upped up at oral argument? [00:26:10] Speaker 04: Respectfully, I believe there was an allusion to it at page 15 of the reply brief. [00:26:15] Speaker 04: And it did come up at oral argument. [00:26:17] Speaker 04: So I think they did raise it prior to oral argument, but not at a point in time where we had an opportunity to brief a response. [00:26:23] Speaker 04: And it was not in the original petition, and it was not in the original institution decision. [00:26:29] Speaker 04: I would also note, just [00:26:30] Speaker 04: briefly that of the references that council mentioned, the woo thesis and others, all of those references go to the benefit of texture, not in a CMOS image sensor. [00:26:43] Speaker 04: So the only reference that was cited by petitioner that was a CMOS image sensor is the Akahori reference. [00:26:50] Speaker 04: And this is our appeal brief at page 54. [00:26:52] Speaker 04: We make this point that the board, they gave two reasons for the motivation to combine Mazur and Mobuchi. [00:26:58] Speaker 04: One reason they said, [00:27:00] Speaker 04: see above the exact same reasons for combining Akahori and Mazur apply to the combination of Mabuchi and Mazur. [00:27:08] Speaker 04: And the board found that Akahori, which is the only reference that deals with a CMOS image sensor that discusses texture, expressly taught away from that combination. [00:27:17] Speaker 04: And the board decided not to institute, and that decision is not appealed. [00:27:26] Speaker 03: OK, thank you, Mr. Mellinger. [00:27:28] Speaker 03: Thank you. [00:27:29] Speaker 03: All rise. [00:27:30] Speaker 03: The honorable court is adjourned until tomorrow morning at 10 a.m. [00:27:50] Speaker 01: Good job, both.