[00:00:00] Speaker 01:
We'll hear argument in Apple versus Core Photonics, number 20-1438.

[00:00:07] Speaker 01:
Ms.

[00:00:09] Speaker 01:
McComas, please begin when you're ready.

[00:00:12] Speaker 02:
Good morning, and may it please the court.

[00:00:14] Speaker 02:
This is Debbie McComas on behalf of Apple.

[00:00:17] Speaker 02:
In this appeal, Apple appeals two rulings from the board.

[00:00:21] Speaker 02:
The first was the board's failure to find challenge claims anticipated by Kono

[00:00:26] Speaker 02:
And the second was the board's failure to find dependent claims 6 and 14 obvious in light of Kono in combination with Baroque.

[00:00:35] Speaker 02:
With respect to anticipation, this court's precedent sets out a two-step inquiry.

[00:00:42] Speaker 02:
The first step is for Apple to prove that Kono discloses each limitation of the challenge claims in the same order.

[00:00:49] Speaker 01:
Can I just add that this is Judge Taranto.

[00:00:51] Speaker 01:
So it seems to me, I think this is just a fair description rather than

[00:00:56] Speaker 01:
contentious but your argument here about anticipation depends on wording in various cases and you want to treat the anticipation question as broken into two pieces which need not really have very much to do with each other.

[00:01:16] Speaker 01:
Isn't it true though that under 102 the question is whether the invention now claimed is described

[00:01:27] Speaker 01:
in a way that people could build in a single printed publication and that requires when you identify in Kono a very specific set of features which do include L5 and L4 and L5 because your TTL and TTL over EFL calculations the only such calculations include those that it is that set of features which

[00:01:55] Speaker 01:
you say map onto that claim has to be something skilled artisan could build and the problem is nobody could build it there's a lot packed into that your honor so let me back up the gist of it is my concern is that what you've done is you know uh... it is to take pieces of

[00:02:21] Speaker 01:
the description of the anticipation inquiry and treat them as though they didn't really have to have anything to do with each other.

[00:02:29] Speaker 02:
Let me back that out just a little bit, because I disagree a little bit.

[00:02:35] Speaker 02:
What we've done is we've analyzed it under the clear authority or precedent that this court has established.

[00:02:42] Speaker 02:
And one is, I agree with you, with respect to anticipation, Apple has to show that all of the elements are present.

[00:02:50] Speaker 02:
in CONO, that CONO discloses all of the elements of the claims invention that we're challenging.

[00:02:57] Speaker 01:
Right, in the order and combination that they claimed us.

[00:03:02] Speaker 01:
Correct.

[00:03:04] Speaker 02:
For 102 analysis, you do not have to show that CONO would work.

[00:03:10] Speaker 02:
What you have to show is that CONO, to the extent it discloses those elements,

[00:03:15] Speaker 02:
that when you apply that to claim one, for example, which is a challenge claim here of the 712 patent, that you could make it.

[00:03:24] Speaker 02:
And that's what's required here.

[00:03:26] Speaker 02:
But I want to step back one, because if this court were to hold that our obligation was to show both, that all of those limitations exist and that it would work in the first instance and that that burden is on Apple, Apple did show that here.

[00:03:44] Speaker 02:
And that was overlooked by the board because the board didn't actually do that analysis in its final written decision.

[00:03:50] Speaker 02:
And let me show you exactly that Appendix 499 through 500, Apple's expert, and this is attached to the original petition as Dr. Saucienne's declaration, says the only changes that would be necessary to fix the noted error

[00:04:13] Speaker 02:
in the distance between lenses four and five would be to a spirit coefficient.

[00:04:19] Speaker 02:
Those are not claim limitations here that are relevant to the challenge claims of the 712 patent while maintaining the first order properties.

[00:04:28] Speaker 03:
Counsel, this is Judge Stoll.

[00:04:30] Speaker 03:
Could you identify for me, I think you said A49, 499 to 500, which paragraph are you reading from?

[00:04:38] Speaker 02:
Certainly.

[00:04:38] Speaker 02:
Just a moment, Your Honor.

[00:04:42] Speaker 02:
I am specifically in the paragraph that runs as paragraph 66.

[00:04:46] Speaker 02:
It runs from $499 over to $500.

[00:04:49] Speaker 02:
Thank you.

[00:04:54] Speaker 02:
And then Dr. Moore, later, that's core photonics expert at Appendix 1501.

[00:05:04] Speaker 01:
Can I just, none of these things say

[00:05:09] Speaker 01:
what conceivably you could have said, which is that a skilled artisan seeing the overlap would recognize that this document actually teaches something not shown in the picture and not reflected in the tables, namely slightly moving it away so there isn't a physically impossible overlap.

[00:05:29] Speaker 01:
And then we will do the complete limitation by limitation analysis

[00:05:34] Speaker 01:
of calculating the TTL and calculating the EFL and calculating the ratio for that taught combination of features.

[00:05:46] Speaker 01:
The only calculations at least that I see in the petition and the supporting expert, they don't include that.

[00:05:57] Speaker 01:
They rely entirely on the actual physically impossible example.

[00:06:05] Speaker 02:
Your Honor, I think it sounds like we're conflating the concept of inherency with the question of anticipation and enablement.

[00:06:14] Speaker 02:
And there are some fine issues there in the case law that we should better out, I think.

[00:06:19] Speaker 02:
Inherency, we're not saying that you had to go look at what a postita would understand from this claim limitation.

[00:06:27] Speaker 02:
What Apple said and what the evidence shows, every single element

[00:06:33] Speaker 02:
Every single limitation in the challenge claims exists on the face of Kono.

[00:06:40] Speaker 03:
On the face of Kono.

[00:06:41] Speaker 03:
Judge Scholl, I understand your point about in-herency and I know you're not relying on in-herency.

[00:06:47] Speaker 03:
The problem I'm having is that you have this language, the overlap between lenses L4 and L5 has been corrected.

[00:06:54] Speaker 03:
This lens adjustment would have been done by a Lucida as a routine adjustment.

[00:06:59] Speaker 03:
I understand that.

[00:07:00] Speaker 03:
My problem is that maybe that solves the enablement problem, but I don't see where that's anticipation because you've now modified the reference.

[00:07:12] Speaker 03:
And that modification is not something I would think would be an anticipation argument.

[00:07:17] Speaker 03:
It's an obviousness argument.

[00:07:21] Speaker 02:
How do you respond to that?

[00:07:23] Speaker 02:
I think I'm not being clear, Judge Stillwood.

[00:07:25] Speaker 02:
I'm sorry.

[00:07:26] Speaker 02:
What I'm saying is that the lens distance between lenses four and five doesn't read on the claim limitations.

[00:07:37] Speaker 02:
There is a TTL requirement in the challenge claims.

[00:07:42] Speaker 02:
But what the evidence I just cited to you at appendix 499 through 500, this whole issue with respect to those lenses, once they proceed to run the numbers and notices that those would overlap,

[00:07:56] Speaker 02:
doesn't change the TTL in any way.

[00:07:59] Speaker 02:
So there's no modification necessary here for the lens on its face.

[00:08:04] Speaker 03:
And the reason why it doesn't change the modification is because you're relying on being operative, can't be made embodiment in order to anticipate the claims.

[00:08:15] Speaker 03:
Is that right?

[00:08:16] Speaker 03:
Can you repeat that?

[00:08:18] Speaker 03:
OK, I'm saying that the reason why you don't need to change it

[00:08:24] Speaker 03:
the TTL is because you're relying on the non-working example in the prior art.

[00:08:33] Speaker 02:
Right.

[00:08:34] Speaker 02:
The prior art example doesn't have to work.

[00:08:36] Speaker 02:
It doesn't have to be operative.

[00:08:38] Speaker 02:
It simply has to disclose it.

[00:08:40] Speaker 02:
And if you think about why that makes sense here, and generally in the law, the question is whether we're putting something in the public's possession.

[00:08:49] Speaker 02:
And that standard is, from an anticipation standpoint, are all the limitations there?

[00:08:55] Speaker 02:
They are.

[00:08:56] Speaker 02:
What about cases like Doughty?

[00:08:57] Speaker 03:
There's a case, NRA Doughty, it is a CCPA case, and it says inoperative devices cannot anticipate claims.

[00:09:06] Speaker 03:
And what do we do with cases like that?

[00:09:08] Speaker 03:
What support do you have for the idea that an inoperative device can anticipate a claim?

[00:09:15] Speaker 02:
There are quite a few, Your Honor.

[00:09:18] Speaker 02:
I'm not familiar with Dowdy, but we do cite quite a few cases in our briefing that talk about how it doesn't have to be operative.

[00:09:25] Speaker 02:
Some of the ones I laid out quickly.

[00:09:28] Speaker 01:
I just want to interrupt.

[00:09:30] Speaker 01:
I'm sorry.

[00:09:31] Speaker 01:
This is Judge Toronto.

[00:09:33] Speaker 01:
It seems to me everything depends on what the it is in your sentence.

[00:09:37] Speaker 01:
It's absolutely true that not everything in

[00:09:41] Speaker 01:
a reference that is being invoked as anticipatory needs to be enabled, but the very combination of features from that single printed publication that you say describes, identifies the exact set of claim limitations in the now at issue claim, that does have to be enabled.

[00:10:09] Speaker 02:
Well, it's a separate analysis, Judge Toronto.

[00:10:13] Speaker 02:
So first, it has to be disclosed.

[00:10:16] Speaker 02:
And then you ask the question of whether one skilled in the arts could make, not use, but make that invention based on that disclosure.

[00:10:29] Speaker 02:
And that's an important distinction here, because here, you have all of the elements in CONA.

[00:10:37] Speaker 02:
I think that's undisputed.

[00:10:38] Speaker 02:
All the elements are there.

[00:10:40] Speaker 02:
In CONO, the question is whether it would work.

[00:10:43] Speaker 02:
And that is a separate analysis.

[00:10:44] Speaker 02:
And it's important because that second analysis, what the authorities tell us, is that you can then look to what a POSITA would understand to apply that.

[00:10:52] Speaker 02:
And when we get to that question, even Dr. Moore admits that the modification that's proposed in CONO wouldn't make a difference.

[00:10:59] Speaker 02:
It wouldn't change anything.

[00:11:00] Speaker 02:
And that's what it's, you know, one.

[00:11:02] Speaker 01:
I don't think I saw any case on it, but my question is,

[00:11:06] Speaker 01:
Any of the cases that you cited, do they involve a situation in which the knowledge of a person of skill in the art was used to show the enabling character of the anticipatory combination by changing the features of the anticipatory combination that were relied on to show that all the claim limitations

[00:11:36] Speaker 01:
were met?

[00:11:40] Speaker 02:
The answer is the cases say, and I think this also answers Judge Stoll's question, so I'll try to hit them all at once, there are a line of cases that talk about how something didn't work, that there was something in the prior art that didn't make sense or didn't work on the way it was disclosed, that there was something that happened from a procedural perspective that they would understand how that would work.

[00:12:03] Speaker 02:
So a couple of those cases are

[00:12:07] Speaker 02:
the Bristol Myers versus Ben Venue case, where they had done research and had done tests, but they didn't do it on the same type of individual and therefore didn't get the same results.

[00:12:20] Speaker 02:
I'm sorry, Your Honors, if I finish my response real quick.

[00:12:23] Speaker 02:
The Emory-Paulson case is a case that deals with, there was a calculator which fit the definition of a computer, but you had to look at what one field in the art, what the posita was,

[00:12:36] Speaker 02:
to understand that they would know how to put that into a very complex system later.

[00:12:40] Speaker 02:
NRADE GLEBE is one where all they did was list 15 base cents nucleotides in a known nucleic acid with no contemplation of how that would work or how it would be relevant to the prior art reference.

[00:12:56] Speaker 02:
And in GLEBE they found when you put the analysis first with anticipation and whether or not those elements are disclosed, they are.

[00:13:05] Speaker 02:
and then you look at what a procedure would understand to determine the enablement standard, then the anticipation was met.

[00:13:14] Speaker 03:
And you're saying all three of those cases, Bristol, Myers, Paulson, and Gleed, they're all anticipation cases with that it also raised the question of enablement?

[00:13:24] Speaker 01:
Yes, Your Honor.

[00:13:25] Speaker 03:
OK, thank you.

[00:13:27] Speaker 01:
As I recall from the cases and I think even as from your description,

[00:13:34] Speaker 01:
What the POSEDA is doing is adding knowledge to, say, find particular species of what is disclosed, but not, I think, in any of them actually requiring an alteration of that described combination of features in the prior printed publication.

[00:13:58] Speaker 02:
Inri Paulson, Your Honor, actually added circuitry.

[00:14:01] Speaker 02:
It had to add some circuitry that a procedure would understand to add.

[00:14:05] Speaker 01:
You can always add things to make something work, but here we're talking about actually changing something, namely the relation between L4, is it L4 and L5?

[00:14:18] Speaker 01:
I'm sorry.

[00:14:19] Speaker 01:
Yes.

[00:14:20] Speaker 01:
L4 and L5, on which the actually disclosed relation

[00:14:27] Speaker 01:
are part of your calculations to meet various claim limitations, the TTL and then the ratio of TTL to the EFL?

[00:14:38] Speaker 02:
Your Honor, I'm sorry, I know I'm running into my time, but I have to clarify one presumption that's just not accurate there.

[00:14:44] Speaker 02:
You do not have to make that modification to change anything with respect to the claim limitations here.

[00:14:51] Speaker 02:
And that was the citation to appendix 499 through 500.

[00:14:56] Speaker 02:
What our expert says is that distance between lenses four and five do not impact the total track length or anything else.

[00:15:06] Speaker 02:
The adjustment he proposed, to the extent that was necessary at all, wouldn't change any of the elements relevant to the anticipation analysis.

[00:15:16] Speaker 02:
So before you even get to an enablement, it's just an irrelevant limitation.

[00:15:21] Speaker 02:
And I see my time is up.

[00:15:22] Speaker 01:
OK, thank you very much.

[00:15:25] Speaker 01:
and we'll hear from Mr. Fenster now.

[00:15:36] Speaker 00:
Good morning, Your Honors, and may it please the Court again.

[00:15:39] Speaker 00:
The Court should affirm the PTAB's decision because substantial evidence supports the PTAB's determination that Apple failed to meet its burden to show either anticipation or obviousness.

[00:15:52] Speaker 00:
The panel's questions, I think you're thinking about it exactly right.

[00:15:55] Speaker 00:
The question in Judge Toronto, your opening question, I think frames it exactly right, which is they are trying to separate the disclosure that they're relying on for anticipation from the enablement limitation.

[00:16:11] Speaker 00:
And by doing so, by trying to divorce that, they're trying to shoehorn what's basically a single reference obviousness analysis into anticipation.

[00:16:22] Speaker 00:
The case law is absolutely clear that if modification is required to meet the claim elements, then it is not anticipation.

[00:16:32] Speaker 00:
If modification is required, it is not anticipation.

[00:16:35] Speaker 00:
And the board here specifically found that, this is at appendix 23, that Kano's lens assembly cannot be arranged

[00:16:45] Speaker 00:
to provide a lens assembly that has an effective focal length, total track length of 6.5 or less as claimed without removing the overlap between lens L4 and L5.

[00:16:57] Speaker 00:
In other words, the board made a factual finding that Kano cannot meet the elements without modification and because modification was required, it needed, it did not anticipate.

[00:17:13] Speaker 01:
So, can you address the paragraph 66 of the Sassian Declaration at appendix 499 to 500?

[00:17:23] Speaker 00:
Yes.

[00:17:24] Speaker 00:
Okay, so there, this is Dr. Sassian in support of their obviousness determination.

[00:17:30] Speaker 00:
Okay, so this is not something that was presented in connection with the anticipation of Undercano, but rather the obviousness.

[00:17:41] Speaker 00:
And specifically what it finds

[00:17:43] Speaker 00:
is that modification is required.

[00:17:46] Speaker 00:
And what it says is you have to modify those lenses to remove the overlap.

[00:17:54] Speaker 00:
The fact that you're modifying them by changing the aspherics is still a modification from the embodiment that is disclosed.

[00:18:03] Speaker 00:
There is only one disclosed embodiment that is purportedly arranged that they rely on as being arranged and combined in the way claimed.

[00:18:13] Speaker 00:
and that has to be changed in order to remove the overlap.

[00:18:17] Speaker 01:
Do you read that paragraph?

[00:18:21] Speaker 01:
I thought I heard the assertion that this paragraph says that none of the other numerical requirements of the claim would be altered if

[00:18:39] Speaker 01:
this overlap correction was made.

[00:18:42] Speaker 01:
Do you read this paragraph to say that?

[00:18:44] Speaker 00:
I don't.

[00:18:45] Speaker 00:
What I read the paragraph to say is that you have to modify the disclosed embodiment by modifying it, by adjusting the aspherics, it will change the shape of those lenses in a way different than what is disclosed in the embodiment and in a way that no longer overlaps.

[00:19:09] Speaker 00:
They do, he does have a parenthetical there.

[00:19:11] Speaker 01:
There was some reliance on the word only in the second sentence of that paragraph.

[00:19:17] Speaker 00:
So, what he says is only the aspheres were changed and he has a parenthetical there saying keeping first order properties constant and changing aspherical, there's a

[00:19:36] Speaker 00:
He's got a parenthetical there discussing exhibit 1006.

[00:19:41] Speaker 00:
But the point is that he is describing a modification, and that's done in the obviousness section, not in connection with the anticipation.

[00:19:51] Speaker 00:
So this is the acknowledgement that the board relied on, that they know there's a problem, they know it's not enabled, and it has to be modified, and therefore it's not anticipation.

[00:20:05] Speaker 00:
The board specifically found that Kano is not enabled.

[00:20:11] Speaker 00:
At Appendix 22, the board made the factual finding, we find that the error in Kano is sufficient to render Kano's example to LN2 Lens Assembly not enabled.

[00:20:23] Speaker 03:
Council, this is Judge Stoll.

[00:20:24] Speaker 03:
I have a question about that.

[00:20:27] Speaker 03:
How could the board have found that when it didn't even do a WAND analysis?

[00:20:31] Speaker 00:
So, it didn't have to do the WANs analysis because what they found is that the, that Apple failed to meet their burden on enablement.

[00:20:42] Speaker 00:
So, Anton and more so.

[00:20:47] Speaker 03:
By saying that they had the burden of proof and that they had to present that evidence in their petition, that's all they had to do.

[00:20:53] Speaker 03:
That's your position, right?

[00:20:55] Speaker 00:
Well, the board specifically found, one, as a factual matter, that the error renders it non-enabled.

[00:21:02] Speaker 00:
Two, they specifically found at 22 that petitioner's discussion of the challenge showed that petitioner was aware and that that overcame the presumption of enablement.

[00:21:16] Speaker 03:
I get that, but you just said that they found specifically that that error made it not enabled.

[00:21:21] Speaker 03:
as a matter of law, I think I heard you say.

[00:21:24] Speaker 03:
And so, that goes back to my question, which is why, how can they find that without considering WANs?

[00:21:30] Speaker 03:
Unless it's not for the fact that they're relying on, that the burden of proof is on the petitioner and because they knew of the error, they had to explain their position in the petition.

[00:21:42] Speaker 00:
So, they did not do the WANs analysis

[00:21:47] Speaker 00:
because the WANDS analysis wasn't presented until the reply, you're correct.

[00:21:53] Speaker 00:
The board made a specific factual finding that is supported by substantial evidence that

[00:21:58] Speaker 00:
they were required to do so because the burden had been overcome and they failed to do so.

[00:22:04] Speaker 03:
Isn't that a procedural issue?

[00:22:06] Speaker 03:
I mean, you're talking about being supported by substantial evidence, but isn't that kind of a procedural issue?

[00:22:13] Speaker 03:
You should have put this in your petition, you failed to do it, therefore you haven't met your burden of proof.

[00:22:17] Speaker 03:
It's not really a substantial evidence issue, right?

[00:22:20] Speaker 00:
Well, I take your point, Your Honor, that that is a

[00:22:25] Speaker 00:
substantial evidence but there's I think that we're getting a little sidetracked and that is because there's no dispute that LN2 is not enabled there's no dispute that it is impossible it does not work it can't be made the petitioner made that concession in the papers below and in the papers here so there you know that that finding

[00:22:49] Speaker 00:
is not really at issue.

[00:22:53] Speaker 00:
It is not an enabled embodiment to make what's shown.

[00:22:59] Speaker 03:
The question then is... Your view is that they didn't have to consider wands because everybody admitted that that embodiment was inoperative unless... Wands says, you know, you have to make, teach a pose of how to make and use the invention without undue experimentation and the wands factors go to whether

[00:23:19] Speaker 03:
undue experimentation has occurred.

[00:23:21] Speaker 03:
And so you're saying that in a situation like this, we can just ignore the WANDS factors?

[00:23:27] Speaker 03:
Is that your position?

[00:23:28] Speaker 03:
Because everybody agrees that it's inoperative, but that's not, you know, then you have to ask that additional question, right, of whether there's undue experimentation.

[00:23:37] Speaker 00:
No, the WANDS analysis, so the reason, I think that the reason that this is a tangent, Your Honor, is because

[00:23:45] Speaker 00:
Everyone agrees and the board specifically found that modification is required.

[00:23:50] Speaker 01:
And then... I'm sorry, this is Judge Toronto.

[00:23:53] Speaker 01:
I'm not sure it's a tangent.

[00:23:55] Speaker 01:
I thought that your answer to Judge Stoll's question is yes, you're absolutely saying if it's undisputedly inoperative, no need for WANs analysis.

[00:24:05] Speaker 01:
You can't build this no matter how much experimentation or how little.

[00:24:08] Speaker 01:
You just can't do it.

[00:24:10] Speaker 00:
That is absolutely right, Judge Toronto.

[00:24:12] Speaker 01:
Without thinking it.

[00:24:13] Speaker 00:
That's right.

[00:24:14] Speaker 01:
Yes, that is what you're saying.

[00:24:16] Speaker 00:
That is what I'm saying.

[00:24:17] Speaker 00:
And moreover, you don't even get to a WANs analysis or enablement until you get to the modification to see does this enable some other non-disclosed embodiment that might fit within the claims.

[00:24:31] Speaker 00:
But that, of course, is an obviousness determination, not an obviousness analysis, not anticipation.

[00:24:37] Speaker 00:
Here, there is no anticipatory disclosure that would enable one of Skill in the Art to make

[00:24:45] Speaker 00:
the invention.

[00:24:47] Speaker 03:
I understand you to be saying that in order to make and use the invention, you have to make changes to that embodiment.

[00:24:53] Speaker 03:
In order to use that embodiment, you need to make changes.

[00:24:56] Speaker 03:
And therefore, we're outside the realm of anticipation, right?

[00:24:59] Speaker 00:
That is correct.

[00:25:00] Speaker 03:
OK.

[00:25:01] Speaker 03:
Thank you.

[00:25:02] Speaker 01:
Mr. Fenster, can I just?

[00:25:04] Speaker 01:
I realize we didn't get a chance to talk about the second issue, the claims 6 and 14 with Ms.

[00:25:11] Speaker 01:
McComas, but we'll get back to that.

[00:25:15] Speaker 01:
You, I assume, don't dispute that there's a sentence in the board's opinion that actually does contain a mathematical error, right?

[00:25:26] Speaker 00:
I think that that's right.

[00:25:27] Speaker 00:
I think I understand the mathematical error that they're relying on.

[00:25:31] Speaker 00:
So now we go back to substantial evidence and there is substantial... Not just substantial evidence.

[00:25:37] Speaker 01:
Sometimes an error leads a court to say the matter should be reconsidered with that error removed.

[00:25:44] Speaker 01:
So why do you think that even if the board could have reached the same finding about insufficient proof of a motivation to do what Apple put on evidence, there was a motivation to do why that determination is unaffected by the mathematical error?

[00:26:10] Speaker 00:
Yes, because completely independent of

[00:26:13] Speaker 00:
the alleged mathematical error, there are independent bases that support and provide substantial evidence for the board's finding.

[00:26:23] Speaker 00:
The board specifically found at page, at appendix 28, that the Barrow teaching was specific to wide angle lenses and that Kano is a telephoto lens.

[00:26:36] Speaker 00:
They specifically found that Kano teaches a darker lens, so this is a

[00:26:42] Speaker 00:
At page 27, the petitioner found that Kano and Barrow is not supported by sufficient rational underpinning.

[00:26:49] Speaker 00:
At 28, Barrow addresses only conventional.

[00:26:52] Speaker 00:
At 28, Kano is tele and therefore not encompassed within the teaching of Barrow.

[00:26:59] Speaker 00:
And then at page 29, Kano discloses a wide angle lens with lower F number than F number of tele.

[00:27:06] Speaker 00:
The petitioner does not persuasively explain why the ordinarily skilled artisan would disregard Kano's own intrinsic teaching of a lower F number for wide angle and look to another reference for Rowe also concerning wide angle to lower the F number of Kano.

[00:27:22] Speaker 03:
Council, this is just so.

[00:27:23] Speaker 03:
I just have one question here.

[00:27:26] Speaker 03:
How do I know that when the board refers to Kano's own intrinsic teaching of a lower F number, i.e.

[00:27:34] Speaker 03:
for a wide angle lens assembly,

[00:27:37] Speaker 03:
How do I know that there isn't some reference there to that idea that, you know, their understanding that the F number is lowered to 2.8, that it wouldn't satisfy Kono's conditional expression five, they refer to, that's the mathematical error.

[00:27:55] Speaker 03:
How do I know that that's not included in that intrinsic teaching?

[00:27:59] Speaker 03:
I recognize there's other reasons the board provided, but I just was wondering about this one sentence in particular.

[00:28:05] Speaker 00:
Yeah, so Kano has, you know, it's a two lens assembly, a wide angle and a tele, where the tele lens has a higher F number than the wide, and the wide, which is lower, is 3.0, and it's not 2.8.

[00:28:19] Speaker 00:
And so the purported motivation would be to lower the F number, but so what the board is saying is why would you look beyond

[00:28:33] Speaker 00:
Conno's teaching to lower it to 3.0, which doesn't get you to 2.8, and there's no motivation to combine with Barrow, which is talking about a completely different lens system.

[00:28:46] Speaker 03:
I understand, but do you think the language, CONO's intrinsic teaching of a lower F number, where does that come from?

[00:28:55] Speaker 03:
Does that, is that derived at all from the statement on page 28 that in the combination proposed by the petitioner, FNUM is lowered to 2.8 based on the teachings of Breaux, thus failing to satisfy CONO's conditional expression?

[00:29:11] Speaker 03:
I'm just, what is your, I realize there's additional reasons provided that you've said, but how do I know that the board isn't also relying in this Kono's or intrinsic teaching language that it's also relying on the math error?

[00:29:24] Speaker 03:
Do you have anything else to add in response to my question?

[00:29:27] Speaker 00:
No, I think that that also supports the board's determination.

[00:29:34] Speaker 00:
And keep in mind that,

[00:29:38] Speaker 00:
So two points that I'd like to add.

[00:29:40] Speaker 00:
One, with respect to the, so first, Kano's failure to teach, anticipate, is fatal also to claims six and 14.

[00:29:52] Speaker 00:
So if you affirm on the anticipation ground, that would also take out the six and 14 because they only relied.

[00:29:59] Speaker 01:
Did you make in your brief the argument that you just articulated in that lesson?

[00:30:06] Speaker 00:
I believe we did.

[00:30:09] Speaker 00:
I believe that we did because they only rely on express teaching in Kano and they didn't do anything different.

[00:30:26] Speaker 00:
There's no obviousness analysis that's separate from the express disclosure.

[00:30:34] Speaker 00:
The last point that I wanted to make, Your Honors, is

[00:30:37] Speaker 00:
The substantial evidence, if I can just finish this thought.

[00:30:44] Speaker 00:
Matt?

[00:30:45] Speaker 00:
Yes.

[00:30:46] Speaker 00:
The substantial evidence test is different where the board found that the party bearing the burden of proof failed to meet that burden of proof.

[00:30:55] Speaker 00:
That is a very, very rigorous standard.

[00:30:59] Speaker 00:
Unless the evidence is so overwhelming that it can't be read otherwise, then you must affirm under the substantial evidence

[00:31:07] Speaker 00:
And keep in mind that that is different than when the board finds that they did meet the burden of proof.

[00:31:18] Speaker 00:
The review of the substantial evidence test is different depending on which side won relative to who had the burden of proof.

[00:31:26] Speaker 00:
And here, it is most difficult and most stringent application because the board found that Apple failed to meet its burden of proof as to anticipation or obviousness.

[00:31:37] Speaker 01:
Any other questions from the panel?

[00:31:42] Speaker 01:
Hearing none, thank you, Mr. Fenster.

[00:31:44] Speaker 01:
And Ms.

[00:31:44] Speaker 01:
McComas, you have whatever your rebuttal time restored.

[00:31:49] Speaker 02:
Thank you, Your Honor.

[00:31:51] Speaker 02:
And in the short time we have, I want to hit very quickly some things that Mr. Fenster said.

[00:31:57] Speaker 02:
First, he said everyone agrees that modification is required.

[00:32:01] Speaker 02:
That's not quite right.

[00:32:03] Speaker 02:
Everyone agrees that there was an error

[00:32:06] Speaker 02:
in the distance between lenses four and five and KONO.

[00:32:09] Speaker 02:
That does not impact the limitations that are at issue in this case.

[00:32:14] Speaker 02:
You have 85 pages in the petition supported by another 70 pages in Dr. Sacian's declaration that show why every single claim limitation is met by KONO as it's disclosed here.

[00:32:28] Speaker 02:
What we are talking about is whether KONO, because there is a distance issue between lenses of four and five,

[00:32:36] Speaker 02:
whether that impacts in any way a procedure's ability to make the claim limitations that are disclosed.

[00:32:44] Speaker 02:
And the only evidence you have here is that it's not, that it doesn't impact it, that as Judge Stoll pointed out, we don't really know that because we didn't go through the wand factors.

[00:32:55] Speaker 02:
The only reason why we might be able to avoid the wand factors here is because you have Dr. Moore agreeing that it wouldn't make a difference.

[00:33:04] Speaker 02:
And that's that Appendix 1501, paragraph 101.

[00:33:10] Speaker 02:
And the other thing I want to point out that there's been some conflation here about what enablement means versus what anticipation means and what the burden is.

[00:33:21] Speaker 02:
What the board did here was it stood the whole burden concept that this court has created on its head and basically said we don't have to go by it.

[00:33:30] Speaker 01:
Ms.

[00:33:31] Speaker 01:
McComas, I'm sorry, you were a little too fast for me on your reference to Dr. Moore.

[00:33:35] Speaker 01:
Can you tell me again the appendix page that you're relying on?

[00:33:39] Speaker 02:
Yes, Your Honor.

[00:33:39] Speaker 02:
Appendix 1501, and in paragraph 101, Dr. Moore says, he's explaining something different.

[00:33:50] Speaker 02:
What he says is, as a result, the modification of Kono to separate the fourth and fifth lenses, while still satisfying

[00:33:59] Speaker 02:
the claim elements of the challenge claims of the 712 patent.

[00:34:04] Speaker 01:
Okay.

[00:34:05] Speaker 01:
So can I ask you, I guess, two questions related to the obviousness portion, the 6 and 14.

[00:34:13] Speaker 01:
First, do you agree that if we were to affirm the non-anticipation

[00:34:22] Speaker 01:
ruling that we need not reach the 6 and 14 ruling because for most of the, yes, that question, full stop.

[00:34:37] Speaker 02:
No, Your Honor, because claims 6 and 14 analysis was under an obviousness standard, so you would still be able to send this back down under that.

[00:34:47] Speaker 02:
The board only makes this one

[00:34:49] Speaker 02:
it's only conclusions are based on the motivation to combine claims six and seven, I mean, sorry, for claims six and 14, based on this math error.

[00:34:59] Speaker 02:
So if you find there's error in the math, then that would be reversible and we would go back down to the board.

[00:35:06] Speaker 01:
That I guess is my second more substantive question.

[00:35:12] Speaker 01:
Why is the math error anything other than harmless?

[00:35:18] Speaker 01:
isn't the proper reading of pages 27 to 29 of the board opinion that everything else with the exception of that one sentence provides substantial, is supported by substantial evidence and is independent of whether a particular calculation of 3.0 over 2.8 comes within or falls outside that conditional inequality number five.

[00:35:47] Speaker 02:
Because I don't need to read the board's decision without realizing that its conclusion that wide-angle lenses were different from telephoto lenses was driven by its conclusion that Kono never made that, I mean, Kono never contemplated scenarios in which the S number of a telephoto lens is lower than a wide-angle lens, and that's just contrary to the evidence when you do the math right.

[00:36:14] Speaker 02:
So you can look at appendix 831 to 832 to find the support that the conditional expressions of 5 and 5A actually suggest that a telephoto lens, the F number of a telephoto lens is favorable to be lower than a wide-angle lens in certain instances.

[00:36:35] Speaker 02:
And that's the motivation that the board missed, and that drove its entire decision.

[00:36:39] Speaker 03:
Oh, Council, this is Judge Stoll.

[00:36:41] Speaker 03:
So I think I understand you to be saying that because of that mathematical relationship, there are some circumstances where that comment about how it's advantageous to make second imaging optical system darker than the first imaging optical system isn't going to be true in CONO.

[00:37:01] Speaker 03:
Is that right?

[00:37:02] Speaker 02:
I think that what I'm saying is that it's

[00:37:07] Speaker 02:
What it's saying is that there are instances where the F number of the telephoto lens, where it's encouraging the F number of the telephoto lens to be lower than the wide angle lens.

[00:37:18] Speaker 01:
So I think we just.

[00:37:19] Speaker 01:
Where's the encouraging part as opposed to contemplate the possibility of?

[00:37:24] Speaker 01:
Because merely contemplating the possibility doesn't itself give you a explanation for why a skilled artist would have a motivation to pursue that possibility.

[00:37:36] Speaker 03:
Is it because of the number 1.3 in the mathematical formula?

[00:37:42] Speaker 02:
Right.

[00:37:42] Speaker 02:
And it's because what I'm saying is it's kind of a bigger picture than that.

[00:37:47] Speaker 02:
What I'm saying is that the board was driven and drew the conclusion.

[00:37:51] Speaker 02:
And a big part of its findings in that section are that the reason we don't talk about wide-angle lenses or don't treat them, we wouldn't be motivated by the wide-angle lens in a burrow.

[00:38:05] Speaker 02:
is because there's nothing in CONO that suggests a lower F number.

[00:38:10] Speaker 02:
But in CONO, if you do the math right, it does have scenarios where the lower F number would work.

[00:38:17] Speaker 02:
And the board's analysis, I think, is burdened by that presumption.

[00:38:23] Speaker 02:
And if the presumption is wrong, then you can't trust the entire analysis in that section.

[00:38:29] Speaker 02:
Does that make sense?

[00:38:30] Speaker 01:
Yes.

[00:38:33] Speaker 02:
I think I've used up my time, Your Honor.

[00:38:35] Speaker 01:
Okay, well thanks to all counsel, and the case is submitted.