[00:00:00] Speaker 01:
Photonics versus Apple 20-1961.

[00:00:04] Speaker 01:
Mr. Fenster, please begin when you're ready.

[00:00:08] Speaker 01:
And just for myself, I would ask you to not repeat everything that you said on the large overlapping issue between the two.

[00:00:19] Speaker 01:
If you have something new to add, that would be welcome.

[00:00:24] Speaker 00:
Thank you, Your Honors, and may it please the Court

[00:00:27] Speaker 00:
So the court should reverse the PTAB because substantial evidence does not support the board's findings.

[00:00:35] Speaker 00:
The big argument, Your Honor, is that Ogino does not disclose the embodiment expressly with TTL because it does not tell where to place the sensor.

[00:00:45] Speaker 00:
And what I'd like to focus, Your Honor, on in light of your admonition is specifically the only teaching in Ogino

[00:00:54] Speaker 00:
about removing an embodiment that removes the cover glass is at the bottom of column five carry over to column six.

[00:01:06] Speaker 00:
And specifically what it says is that an effect similar to the optical member cover glass may be given to the fifth lens or the like by applying a coating or the like without using.

[00:01:21] Speaker 00:
Nothing in that sentence tells you where to move it.

[00:01:25] Speaker 02:
It just says that... Counsel, this is Judge Stoll.

[00:01:28] Speaker 02:
I understood that you were going to really focus on Ogino's view of fights, am I saying that correctly, in this appeal, since you've already argued the other issues.

[00:01:39] Speaker 00:
Okay.

[00:01:40] Speaker 00:
I will turn there, Your Honor.

[00:01:43] Speaker 00:
I appreciate that.

[00:01:45] Speaker 00:
Ogino, the point is, just to finish that point, is Table 11,

[00:01:51] Speaker 00:
does not disclose the embodiment that has a coding applied to L5 or the like.

[00:01:57] Speaker 00:
It doesn't tell you where to place the sensor.

[00:01:59] Speaker 00:
It doesn't actually lay out what you would do if you were to remove the cover glass and therefore there is no express disclosure.

[00:02:08] Speaker 00:
Okay, turning now to bike.

[00:02:11] Speaker 00:
So this again is really just quintessential hindsight.

[00:02:19] Speaker 00:
The bike is a reference that has to do with the manufacturability, and it describes what it calls rules of thumb.

[00:02:29] Speaker 00:
But in our reply, we show that bike actually describes those as the limits of manufacturability.

[00:02:36] Speaker 00:
And there are multiple rules there that apply to all of the lens elements.

[00:02:42] Speaker 00:
And it is undisputed that

[00:02:45] Speaker 00:
multiple of those lens elements do not meet multiple of those rules in Ogino and so what would motivate the person of ordinary skill in the art to change only the center to edge thickness ratio for L1 out of all of the lenses when other lenses are much

[00:03:12] Speaker 00:
great much further out of whack relative to the limits of manufacturability disclosed in bike.

[00:03:19] Speaker 02:
Council do I remember correctly that bike I mean I appreciate what you're saying.

[00:03:24] Speaker 02:
But doesn't Mike also say that, you know, you don't have to use all of these rules of thumb, you could just use some.

[00:03:31] Speaker 02:
And that these are rules of thumb.

[00:03:34] Speaker 02:
So doesn't that, isn't that something that supports, provides some evidence to support the board's determination here?

[00:03:44] Speaker 00:
No, not in advance.

[00:03:47] Speaker 00:
It doesn't point one of skill in the art to say let's, you know, to motivate one of skill in the art to change L1.

[00:03:54] Speaker 00:
The board specifically found that Ogino does disclose a center to edge ratio down to 3.1 but not 3.0.

[00:04:04] Speaker 00:
It specifically found that with respect to Ogino.

[00:04:08] Speaker 00:
So what about bike by itself or Ogino by itself

[00:04:13] Speaker 00:
would cause one of skill in the art to make that particular modification if they didn't have the roadmap of meeting the claims of the 568 patent.

[00:04:22] Speaker 00:
And your honor, there is nothing.

[00:04:25] Speaker 00:
And to the contrary, it's undisputed that the record evidence is that other lenses are much further by multiples out of whack relative to the manufacturability guidelines or rules of thumb in bikes.

[00:04:43] Speaker 00:
If one of skill in the art were motivated to improve the manufacturability, which would be a motivation, they would start with the things that are sort of most wrong.

[00:04:54] Speaker 00:
Here, they start with the thing that is least wrong on the least lens, and I'm not sure that's really the least, but it's a small issue relative to the others, and picks out one lens out of four that are out of bounds that don't meet that and makes that one change.

[00:05:13] Speaker 00:
The reason they only make them.

[00:05:14] Speaker 02:
This is Judge Stoll again.

[00:05:15] Speaker 02:
It just feels like such a quintessential factual issue to me.

[00:05:19] Speaker 02:
I just want to make sure you have a chance to address my question.

[00:05:22] Speaker 02:
So I want to tell you what I'm thinking, that it's a quintessential factual issue.

[00:05:27] Speaker 02:
We've got Pike.

[00:05:28] Speaker 02:
That's a 2010 article.

[00:05:30] Speaker 02:
And it says, here's some things that you can do to improve manufacturability.

[00:05:34] Speaker 02:
And one of them is this thing that you assert is so critical, right?

[00:05:38] Speaker 02:
And so I'm just having a hard time.

[00:05:40] Speaker 02:
We've got an expert testimony.

[00:05:41] Speaker 02:
We've got a teaching of all the limitations of the claim.

[00:05:45] Speaker 02:
I'm just having a hard time understanding why, you know, with the rule of thumb being here are some things you can try, why this wouldn't be sufficient under KSR.

[00:05:54] Speaker 00:
Yeah.

[00:05:55] Speaker 00:
Your Honor, I absolutely get that this is a fact issue and it is a tough burden for us for substantial evidence.

[00:06:02] Speaker 00:
But my point is that what bike does

[00:06:06] Speaker 00:
is at best it says here's a bunch of guidelines that apply to all of the lenses but there's many many dozens of combinations of things that could change and there's nothing that the board points to or that frankly is in the record to say change this one parameter of L1 only and leave everything else the same because you have to in order to meet the claim elements so

[00:06:32] Speaker 00:
While it's one of many things that could be tried and I agree that it's, you know, an obvious to try but it's not an obvious to try like in the pharmaceutical context where you have a very discrete number of things to try, here there are dozens.

[00:06:48] Speaker 00:
And so that's the real crux of the issue and even though I have, I acknowledge the very high burden and that this is a fact issue, this is post hoc rationalization because unless you have the claim telling you

[00:07:03] Speaker 00:
make the ratio for L1, 3, try that and see if it works and then look the bike.

[00:07:11] Speaker 00:
There's nothing that would point you in that direction.

[00:07:13] Speaker 00:
And we also pointed to the handbook of optics that the board did rely on in modifying Ogino with respect to claims 1 through 4 and showed how making this one change would be counter to the teachings

[00:07:29] Speaker 00:
in the handbook of optics.

[00:07:31] Speaker 00:
Not only is there no roadmap pointing one of skill in the a priori, motivating them to make this change as opposed to any of the other dozens of changes,

[00:07:44] Speaker 00:
But there's also countervailing evidence as well that was not considered by the board.

[00:07:48] Speaker 00:
And that's why it's not supported.

[00:07:49] Speaker 02:
Can I ask you something?

[00:07:50] Speaker 02:
You keep on referring to dozens of changes, but there's 13 rules of thumb, right?

[00:07:54] Speaker 02:
You're just saying you're multiplying it and making it bigger by saying that you could pick different ones of these in combination.

[00:08:01] Speaker 02:
Do I understand that correctly?

[00:08:02] Speaker 02:
Is that why you're referring to dozens?

[00:08:05] Speaker 00:
Well, OK, so there are 13 rules of thumb, each of which applies to each of five lenses.

[00:08:16] Speaker 00:
So even if you just focused, so for example, the rule that they focus on with the ratio center to distance, that has to apply according to bike to L1, L2,

[00:08:34] Speaker 00:
all the way through L5.

[00:08:35] Speaker 00:
Similarly, the rule just above that, the diameter to edge, also has to apply to each of those.

[00:08:42] Speaker 00:
And that's true of each of the rules.

[00:08:45] Speaker 00:
So each of the rules to each of the lenses, the combinations of all of those really is in the dozens, but there's nothing pointing one of skill to just take this one rule to this one lens element and only make that change.

[00:08:59] Speaker 00:
If they were to make changes to all of them, it would no longer meet the claim element.

[00:09:03] Speaker 00:
That's not their obviousness combination.

[00:09:05] Speaker 00:
They're saying it would be obvious to make change only L1.

[00:09:13] Speaker 01:
Thank you.

[00:09:15] Speaker 01:
Mr. Fenster, can I ask you a question that I probably should have figured out the answer to, but I'm confused.

[00:09:23] Speaker 01:
What's the diameter of a lens, not of the aperture,

[00:09:27] Speaker 01:
not the radius of curvature, but what's the diameter of the lens which plays some role in the board's analysis and I think in maybe your papers?

[00:09:37] Speaker 00:
Yeah, it does.

[00:09:38] Speaker 00:
So it is literally the, my understanding, Your Honor, is that it's the distance across the lens.

[00:09:47] Speaker 00:
So you take the, from, you know, the two furthest points and measure a straight line between them.

[00:09:53] Speaker 00:
That gives you the diameter of the lens, is my understanding.

[00:09:56] Speaker 01:
That's different from the center thickness?

[00:09:58] Speaker 00:
Yes.

[00:09:59] Speaker 00:
The center thickness is the thickness.

[00:10:01] Speaker 00:
So if you recall back to the distance, so if you look at a Gino, for example, the thickness D1 is shown as, that's actually, so we're looking at the lens in cross section.

[00:10:20] Speaker 01:
Yeah.

[00:10:20] Speaker 00:
Okay, so that's from the front to the back, that's the thickness.

[00:10:24] Speaker 00:
And that is the thickness at the center compared to the thickness at the edge that we're comparing for that ratio.

[00:10:31] Speaker 00:
The diameter is looking at the same cross section, sort of the distance from the top to the bottom.

[00:10:37] Speaker 01:
Ah, okay.

[00:10:39] Speaker 00:
That's my understanding.

[00:10:41] Speaker 01:
Okay, thank you.

[00:10:47] Speaker 01:
I don't, did your,

[00:10:48] Speaker 01:
beep go off or not?

[00:10:51] Speaker 00:
It did not yet but I think I'm just about done so they're really unless you have any other questions we don't think that there's anything in bike that would point one of skill in the art to make this change and only this change and it's important to focus on the fact that it's only this change if you apply that rule to all of the lenses which they haven't done in their petition it would no longer meet the claim elements and so you know really what's

[00:11:18] Speaker 00:
they have to show is that one of skill in the art would be motivated to make that change only to that lens and none of the others.

[00:11:27] Speaker 00:
And you can't rationalize that without hindsight.

[00:11:32] Speaker 01:
Good timing.

[00:11:34] Speaker 01:
We should hear from Ms.

[00:11:36] Speaker 01:
Oliver now.

[00:11:42] Speaker 03:
Thank you, Your Honor.

[00:11:44] Speaker 03:
And may it please the court.

[00:11:45] Speaker 03:
Again, this is Angela Oliver on behalf of Apple.

[00:11:49] Speaker 03:
The court should affirm the board's decision here because, again, the appeal is not eligible for an Arthrex remand and the board's findings are supported by substantial evidence.

[00:11:59] Speaker 03:
Both issues before the court in this appeal are substantial evidence issues, the TTL issue as well as the combination of Ogino and bike.

[00:12:07] Speaker 03:
I'd like to make one brief point with respect to the TTL issue.

[00:12:12] Speaker 03:
On appendix page 27 of the board's opinion, the board explains that the censor moves.

[00:12:19] Speaker 03:
And the board explains precisely how much it moves.

[00:12:23] Speaker 03:
It moves by 0.102 millimeters closer to the object-side surface of the first lens element.

[00:12:30] Speaker 03:
That is the difference between the 4.489-millimeter value that Corporatonix argues is the TTL and the 4.387-millimeter value that Apple argues is the TTL.

[00:12:43] Speaker 03:
The difference, of course, in those two values being the difference between whether or not you include the cover glass.

[00:12:49] Speaker 03:
And the board cited the expert testimony of Corporatonic's expert on Appendix page 3226 to support this overall conclusion that the sensor does indeed move.

[00:13:02] Speaker 03:
On Appendix page 3226, Dr. Moore explains that this is with respect to the 032 patent, but the analogy is the same with respect to the patented issue here.

[00:13:16] Speaker 03:
Dr. Moore explained that when you remove the cover glass, the plane 114, where the sensor is located... What page are you?

[00:13:24] Speaker 01:
I'm sorry, Your Honor.

[00:13:27] Speaker 03:
It's appendix page 3226.

[00:13:28] Speaker 03:
Thank you.

[00:13:31] Speaker 02:
And this is the transcript page on A3226.

[00:13:34] Speaker 02:
Oh, I'm sorry.

[00:13:35] Speaker 03:
It's page 72 of that, beginning at lines 14 through 22.

[00:13:40] Speaker 03:
The board cited this range for this point.

[00:13:45] Speaker 03:
And here Dr. Moore explains that with respect to measuring the TTL value, when you remove the cover glass, the plane 114, which is where the sensor is, shifts to the left.

[00:13:58] Speaker 03:
That's exactly consistent with the calculations that we've been discussing today, that these are just simple links.

[00:14:03] Speaker 03:
And so when you replace the cover glass with the length that you would need to replace it with air, that's what happens, the links between these changes.

[00:14:12] Speaker 03:
And so that.

[00:14:14] Speaker 01:
Is the specific, what is it, .10 something figure in this opinion of the board?

[00:14:23] Speaker 01:
Does that appear in the earlier case's opinion, the 1424 opinion of the board?

[00:14:29] Speaker 03:
I do not believe the .102 millimeter, that subtraction is mentioned in the other board opinion.

[00:14:36] Speaker 03:
However, it's spatially apparent from the board's analysis in that opinion because

[00:14:41] Speaker 03:
the board explains that it moves based on the difference of 4.489, which is with the cover glass, and 4.387, which is without the cover glass.

[00:14:53] Speaker 03:
So again, the calculations here that are done in both places and explained in detail by the board in both cases show exactly how much this moves.

[00:15:04] Speaker 03:
In any event, Your Honor, if the court were to affirm the finding in this

[00:15:09] Speaker 03:
appeal in the 1961 appeal on this issue, it would have preclusive effect with respect to the same finding in other appeals, including the other one today.

[00:15:20] Speaker 03:
But I don't think the court needs to reach that because there is sufficient explanation, detailed calculations from the board in both appeals.

[00:15:29] Speaker 03:
But I did want to point the court to this particular expert testimony that kind of ties all of this together.

[00:15:33] Speaker 01:
Okay.

[00:15:34] Speaker 01:
What about the combination with Mike?

[00:15:37] Speaker 03:
Yes, Your Honor.

[00:15:38] Speaker 03:
So again, this, as Judge Stoll emphasized, this is a substantial evidence issue.

[00:15:43] Speaker 03:
The key emphasis here is that BIC is a set of rules of thumb.

[00:15:48] Speaker 03:
These are various design considerations.

[00:15:50] Speaker 03:
The board recognized that they described different cost trade-offs between these considerations.

[00:15:55] Speaker 03:
And so these are things that a procedure would have considered and used in their overall analysis as to what priorities they had as they designed each particular lens.

[00:16:06] Speaker 03:
Now, these are done on a lens-by-lens basis.

[00:16:09] Speaker 03:
And importantly, the only lens that is being modified in this proposed combination is lens one.

[00:16:14] Speaker 03:
And actually, lens one does satisfy both rules of thumb that the parties have been discussing in this case.

[00:16:22] Speaker 03:
Corporatronics' only argument is with respect to other lenses that are not being modified.

[00:16:27] Speaker 03:
And this court's case law is clear.

[00:16:29] Speaker 03:
There's no need to go redo a motivation-to-combine analysis

[00:16:34] Speaker 03:
for elements that are already combined in a prior art reference.

[00:16:38] Speaker 03:
I believe the General Electric versus Raytheon technologies case is helpful for that.

[00:16:43] Speaker 03:
When you're considering the invention as a whole, we don't have to reconduct the motivations combined for those aspects.

[00:16:50] Speaker 03:
I'd also, with respect to the argument that this is just motivated hindsight reasoning, I'd like to point out that this is precisely consistent with what, beyond bikes, what a procedure would have understood at the time.

[00:17:04] Speaker 03:
If you'll bear with me, just to trace through some of the board's reasoning, the board cites pages 74 and 75 of Dr. Sastyan's declaration, which is where he analyzes claim five by referring back to the similar limitation 1.8, and specifically the helpful citation for the court here, I believe, is appendix page 615 through 617.

[00:17:26] Speaker 03:
And I'll transfer that just briefly.

[00:17:33] Speaker 03:
So here, this is a lengthy section in which Dr. Saucion explains precisely mathematically why this ratio makes sense and how it would work.

[00:17:42] Speaker 03:
But on pages 615 and 616, he's just discussing the bike reference and this particular ratio.

[00:17:50] Speaker 03:
And he also points out that at 616, he cites the handbook of optics.

[00:17:56] Speaker 03:
So an additional, you know, piece of art that Prasika would have been aware of that further supports his testimony here.

[00:18:04] Speaker 03:
And it explained that it is good policy to avoid element forms where this ratio, the center-to-edge thickness ratio exceeds three for positive elements.

[00:18:13] Speaker 03:
So of course that does not teach this limitation and that's not how this testimony was used or this evidence was used.

[00:18:20] Speaker 03:
But it supports the fact that this ratio of three is not completely out of the blue.

[00:18:24] Speaker 03:
This was a well-known ratio related to manufacturing considerations.

[00:18:30] Speaker 03:
And so it's not looking back and picking and choosing what a procedure would have done based on these claims.

[00:18:37] Speaker 03:
This particular ratio in the area of three was well-known, and that's supported by the substantial evidence.

[00:18:45] Speaker 03:
At the end of the day, Your Honor, VICE is a set of rules of thumb.

[00:18:51] Speaker 03:
And a placita is an individual of ordinary creativity who would understand that you would use some of those rules of thumb in some cases, and you wouldn't use them in other cases.

[00:19:01] Speaker 03:
If the court will indulge an analogy, I believe this is helpful.

[00:19:05] Speaker 03:
For example, the recent redesign of the Ford F-150 truck.

[00:19:10] Speaker 03:
The court used aluminum to increase fuel efficiency to make the truck much wider.

[00:19:17] Speaker 03:
But the designers chose to not prioritize fuel efficiency

[00:19:21] Speaker 03:
in other aspects of the truck.

[00:19:23] Speaker 03:
So for example, it's very tall and boxy body design, which distinctly decreases fuel efficiency because of wind resistance.

[00:19:30] Speaker 03:
But that was chosen based on customer preferences.

[00:19:34] Speaker 03:
And so it is not inconsistent to say, in some instances, the Closita would have prioritized one goal, a manufacturing goal, and in other instances, would have prioritized other design goals with respect to the overall functionality of the wind.

[00:19:48] Speaker 03:
In short, the board's motivation to combine analysis here is based on a specific goal that a placenta would have been aware of and would have prioritized in some circumstances.

[00:19:57] Speaker 03:
That finding is supported by substantial evidence and is sufficient to show that claim five would have been obvious.

[00:20:04] Speaker 03:
So unless there are further questions on either of the issues, we respectfully would ask the court to affirm.

[00:20:13] Speaker 01:
Hearing no questions, thank you.

[00:20:16] Speaker 01:
And Mr. Fenster, we'll hear from you for your rebuttal.

[00:20:21] Speaker 00:
Thank you, Your Honors.

[00:20:22] Speaker 00:
If I can just respond quickly to Ms.

[00:20:24] Speaker 00:
Oliver's comments regarding anticipation.

[00:20:27] Speaker 00:
So first, the portion that she cited at Appendix 27 where the board said it would move the difference between that the image plane moves 0.102 closer,

[00:20:43] Speaker 00:
There's nothing cited for that, and there's no support for that.

[00:20:47] Speaker 00:
Nothing in the record, as we've seen, says that the sensor is moved.

[00:20:52] Speaker 00:
And the portion that Ms.

[00:20:54] Speaker 00:
Oliver cited to at 3226 for Dr. Moore's deposition at page 72, lines 14 through 22, that doesn't say it either.

[00:21:04] Speaker 00:
What it says is that if the cover glass were removed, it would shift

[00:21:09] Speaker 00:
to the left, but it doesn't say to where.

[00:21:12] Speaker 00:
Nothing says to where.

[00:21:14] Speaker 00:
And because there's no disclosure and no support for the board's finding as to where the sensor would be moved if the cover glass were removed and if there were a coating, which is not disclosed in the table,

[00:21:31] Speaker 00:
That's why the board's finding lacks substantial evidence.

[00:21:37] Speaker 00:
With respect to the combination with bike, again, well, what all of the evidence that Ms.

[00:21:46] Speaker 00:
Oliver pointed to points to an obvious to try.

[00:21:51] Speaker 00:
And basically saying that one of skill in the art might be motivated to make any one of these various potential combinations, but without

[00:22:01] Speaker 00:
making any specific motivation to make the specific change to the thickness ratio for L1 and that lens only.

[00:22:15] Speaker 00:
And that really is the critical failure of, you know, for motivation to combine.

[00:22:23] Speaker 00:
The board just has no substantial evidence, nothing to support the board's finding that one would

[00:22:30] Speaker 00:
make that change and only that change.

[00:22:32] Speaker 00:
And that's really what they need to do to show in order to meet their burden.

[00:22:37] Speaker 00:
Unless the panel has any further questions, thank you for all of your consideration and all of these appeals.

[00:22:46] Speaker 01:
Thank you, Mr. Fenster.

[00:22:49] Speaker 01:
And the case is submitted.