[00:00:00] Speaker 00:
Okay, Council, this is Judge Wallace.

[00:00:06] Speaker 00:
Before we start the clock, I just want to caution both Councils that this is a difficult situation for you and for us because we can't see each other, so you don't get the non-verbal cues.

[00:00:21] Speaker 00:
When we start talking, please listen so that you can stop and not waste your time because we're going to be wanting to ask questions.

[00:00:29] Speaker 00:
So that's for both of you.

[00:00:32] Speaker 00:
You understand me?

[00:00:35] Speaker 02:
Yes.

[00:00:36] Speaker 02:
Yes, Your Honor.

[00:00:38] Speaker 00:
OK.

[00:00:40] Speaker 00:
Ms.

[00:00:40] Speaker 00:
Frey, you've asked to reserve three minutes.

[00:00:44] Speaker 00:
When that chime goes off, I'm going to try to interject to remind you that you're in your rebuttal time.

[00:00:51] Speaker 00:
And if you want to keep beating it up, that's up to you.

[00:00:54] Speaker 00:
But I just want to let you know.

[00:00:57] Speaker 02:
Thank you.

[00:00:59] Speaker 00:
You can go ahead and start, Ms.

[00:01:01] Speaker 00:
Frey.

[00:01:07] Speaker 01:
May it please the court?

[00:01:08] Speaker 01:
My name is Jude Frey, and I am here on behalf of Singapore Asahi Chemical and Solder.

[00:01:16] Speaker 01:
Ms.

[00:01:17] Speaker 01:
Frey?

[00:01:18] Speaker 01:
Yes.

[00:01:19] Speaker 00:
This is Judge Wallach.

[00:01:20] Speaker 00:
I have a couple of questions for you.

[00:01:25] Speaker 00:
Sure.

[00:01:26] Speaker 00:
In the blue brief at 51 and 52,

[00:01:29] Speaker 00:
you discuss the SimTech test, which purportedly show that adding 0.2 weight percentage of impurities to example 7 of Yamaguchi 874, it would quote, substantially lower an alloys fatigue life, close quote, thus causing the alloy to fail outside the scope of independent claim 10.

[00:01:58] Speaker 00:
But the PTAB found that it was, and I'm quoting from them, only by affirmatively and purposely adding impurities to what appeared to be routine starting materials that you obtained test results showing decreased fatigue life.

[00:02:16] Speaker 00:
How can you base an argument on those tests?

[00:02:20] Speaker 00:
Or I got it.

[00:02:24] Speaker 01:
Your Honor, we based the argument on those tests just to show that at the time of the invention, the state of the art was that these solders could have lead alloys present up to 0.2 weight percent as impurities.

[00:02:49] Speaker 01:
So we took then a

[00:02:53] Speaker 01:
sample with low impurities and then dope that to show that the addition of .2 weight percent lead could, in fact, be detrimental to fatigue life.

[00:03:14] Speaker 00:
In the gray brief at 28, you accused Apple of disingenuous.

[00:03:22] Speaker 00:
I assume you believe that's a bad thing.

[00:03:26] Speaker 00:
How would you define being disingenuous?

[00:03:38] Speaker 01:
Well, Your Honor, I don't know that disingenuous is the proper word here, but I think the claim was that we

[00:03:52] Speaker 01:
did address those other issues and gave our reasons for those.

[00:03:58] Speaker 00:
That's probably my question was how you define disingenuous.

[00:04:05] Speaker 01:
Well, Your Honor, we did address the other reasons that Apple is saying that we did not address.

[00:04:16] Speaker 01:
We addressed all of those points.

[00:04:20] Speaker 00:
Ms.

[00:04:20] Speaker 00:
Pryor, you're not answering my question.

[00:04:22] Speaker 00:
Think of it as your dictionary.

[00:04:25] Speaker 00:
Define disingenuous for me.

[00:04:30] Speaker 01:
Well, it's stating something that might not be correct.

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

[00:04:35] Speaker 00:
Now, let me direct you to the gray brief at 25, where you argue that, I'm quoting, at most, Dr. Wang's testimony shows that a skilled artisan, ellipsis,

[00:04:48] Speaker 00:
would have been able to design out the impurities in the alloys disclosed in Yamaguchi 874, which is a question of enablement, close quote, citing Apple's explanation of the PTABS finding in the RedBree.

[00:05:05] Speaker 00:
But in its final written decision, the PTABS said that Dr. Hwang, quote, repeatedly described the base composition, close quote, depicted in the SimTech test

[00:05:18] Speaker 00:
quote, as the composition of example 7 of Yamaguchi 874 and ellipsis did not identify particular steps taken to remove impurities from the base composition, close quote, and did not indicate, quote, that the starting materials used in the test were of higher purity than what would have been used, close quote, at the time of the invention.

[00:05:47] Speaker 00:
Why didn't you quote from the PTAB's opinion itself, which clearly refutes your position here?

[00:05:55] Speaker 00:
And isn't that failure to quote disingenuous?

[00:06:02] Speaker 01:
No, I don't believe it is, Your Honor, because we also quoted from Dr. Wang's testimony to explain that when she was talking about this base composition, she explained that it was one where it was

[00:06:17] Speaker 01:
engineered to take out impurities.

[00:06:21] Speaker 01:
And then from that, she used that to dope it with like 0.2% lead, which was a known impurity, according to the standards that existed in 1996 for electronic grade solder alloys.

[00:06:43] Speaker 01:
So I think we pointed out that

[00:06:46] Speaker 01:
her testimony refuted that when she explained, we started with the low impurity materials.

[00:07:00] Speaker 01:
And that doesn't necessarily mean that Yamaguchi 874 started with those materials because we just don't know what they started with.

[00:07:11] Speaker 01:
We know there were impurities in their solder alloy.

[00:07:16] Speaker 01:
The board even made a finding that there would have been impurities in their solder alloy.

[00:07:22] Speaker 01:
And then the board made a finding that those impurities would necessarily have been at very low levels such that they would not materially affect the basic and novel properties of the alloy.

[00:07:43] Speaker 01:
The board only found this low level of impurity limitation by combining Yamaguchi with other evidence in the record.

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There is no explicit showing that Yamaguchi expressly in its disclosure has some kind of information that would tell you that

[00:08:12] Speaker 01:
it necessarily used low-level impurities.

[00:08:17] Speaker 01:
And the board only got to that finding that that limitation was present by combining with Yamaguchi with the record to find that overall limitation, which our position is that is

[00:08:41] Speaker 01:
a violation or a misapplication of the legal standards for anticipation.

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And when you look at the board's decision, you see where it talked about its impurity findings.

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It made multiple references to the evidence of record and its overall conclusion on impurities

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was considering the record as a whole, we're not persuaded that impurities present in example seven would cause the composition to fall beyond the scope of claim 10.

[00:09:24] Speaker 01:
But that's really the point here is we all know there were impurities there.

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We don't know what the levels were.

[00:09:33] Speaker 01:
We don't know what the impurities were.

[00:09:36] Speaker 01:
So you can't just

[00:09:41] Speaker 01:
read in a teaching that those impurities were necessarily very low so that they did not impact any of the basic and novel characteristics of the invention.

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And this is particularly true because in this time frame, designing out or controlling impurities in alloys or using ultra-pure alloy compositions

[00:10:11] Speaker 01:
was the exception, not the norm.

[00:10:15] Speaker 01:
We pointed out that this joint industry standard allowed for up to 0.2 weight percent lead.

[00:10:23] Speaker 01:
We also included a reference in the record, Tanaka, a Japanese unexamined patent application published in 1997, same time frame, for lead-free solder

[00:10:42] Speaker 01:
alloys, and it specifically taught that, quote, lead is allowed with the upper limit of 1%.

[00:10:50] Speaker 01:
This further evidence that the norm, even in Japan, was the presence of higher levels of impurities in electronic grade solders.

[00:11:05] Speaker 01:
We also had evidence

[00:11:08] Speaker 01:
a publication dated 2001 called Lead Contamination and Lead-Free Electronics Assembly, which stated that, quote, unfortunately, in the past, the presence of lead in lead-free alloys has been presumed to be acceptable

[00:11:34] Speaker 01:
That reference also included a fatigue test results table at Appendix 1419 showing fail for lead-free alloys that they doped at .5 and 1 weight percent.

[00:11:53] Speaker 01:
So it's our contention here that the board misapplied the legal standards for anticipation by

[00:12:03] Speaker 01:
essentially combining Yamaguchi with evidence of the record to read into this limitation that the impurities were at necessarily very low levels that would not impact the basic and novel characteristics of the invention.

[00:12:24] Speaker 01:
At that time frame, even for lead-free solder alloys,

[00:12:31] Speaker 01:
there's evidence that they used up to even one weight percent lead in those.

[00:12:40] Speaker 01:
So you cannot look at the disclosure of Yamaguchi and find, oh, yeah, the impurities that we all know were in there were necessarily at a very low level.

[00:12:54] Speaker 01:
That teaching does not exist in there.

[00:12:58] Speaker 01:
And in order to find that teaching, what the board did was it took Yamaguchi and it did the same thing with Lee, combined those references with other evidence than the record.

[00:13:14] Speaker 00:
Oh, okay.

[00:13:14] Speaker 00:
You're up against your rebuttal time.

[00:13:18] Speaker 01:
I'll reserve my rebuttal.

[00:13:20] Speaker 00:
Okay.

[00:13:20] Speaker 01:
Thank you.

[00:13:23] Speaker 00:
Ms.

[00:13:23] Speaker 00:
Chang.

[00:13:25] Speaker 02:
May it please the court?

[00:13:26] Speaker 02:
This is Carolyn Chang for

[00:13:28] Speaker 02:
Appellee Apple Inc.

[00:13:31] Speaker 02:
Unless the panel has any specific questions, I'd like to start by addressing what Ms.

[00:13:40] Speaker 02:
Fry was talking about and what was characterized in the briefing as a misapplication of the anticipation standard.

[00:13:48] Speaker 02:
I think the thing that we need to make clear and remember first is that when the board reviewed the prior art references, Yamaguchi,

[00:13:59] Speaker 02:
and Lee, what it found was on the face of the prior art references, it disclosed the listed ingredients as required by the patent claim and made no mention and no disclosures about any other ingredients.

[00:14:16] Speaker 02:
So in that respect, the board found correctly that the prior art references met the consisting essentially of limitation of the listed ingredients

[00:14:28] Speaker 02:
because there was no indication on the face of these prior art references that there were any other ingredients that would affect, materially affect any basic and novel property of the invention.

[00:14:41] Speaker 02:
So that in and of itself shows that there was no misapplication of the burden.

[00:14:48] Speaker 02:
Apple met its initial burden, the board found that, and what was really being discussed in the analysis is

[00:14:57] Speaker 02:
a SAHI's attempt to overcome that burden and a SAHI's attempt to import inferences into the prior art references as to whether there were any impurities and whether those impurities would materially affect fatigue resistance specifically, but any of the basic and novel properties.

[00:15:20] Speaker 02:
And I think as the board has noted, I mean as the panel's noted here, the evidence there, the board's

[00:15:27] Speaker 02:
analysis is supported by substantial evidence.

[00:15:30] Speaker 02:
They reviewed everything that Asahi submitted, specifically the SimTech tests, and found that they were not persuasive, specifically in that case because what they were testing was impurities added to what was actually disclosed in the Yamaguchi 874.

[00:15:49] Speaker 02:
So what they were testing was not even what was disclosed in the prior art reference, but

[00:15:54] Speaker 02:
a compound that had added impurities.

[00:15:57] Speaker 02:
So that analysis is in fact irrelevant to whether the prior art reference itself disclosed what was claimed in the patent.

[00:16:08] Speaker 02:
So I think from that perspective, there was not an error with respect to how the board analyzed the anticipation argument.

[00:16:19] Speaker 02:
As to the other legal errors that

[00:16:22] Speaker 02:
Asahi is claiming first with respect to claim construction.

[00:16:26] Speaker 02:
There is in fact no dispute regarding what was the proper claim construction of consisting essentially of.

[00:16:35] Speaker 02:
Everyone agreed in the IPR proceeding that it had its well-established and ordinary meaning of including the listed ingredients.

[00:16:45] Speaker 02:
And it may include but does not have to include other ingredients that does not affect the material property.

[00:16:52] Speaker 02:
I think the only dispute here is that Asahi takes issue with the fact that the court did not or the board did not list specifically the fatigue resistance as a

[00:17:06] Speaker 02:
basic and novel property in the actual construction it adopted.

[00:17:10] Speaker 02:
But as the board noted, it did in fact consider fatigue resistance to be a basic and novel property.

[00:17:20] Speaker 02:
I don't think that was actually in dispute.

[00:17:22] Speaker 02:
Apple agreed that it is a basic and novel property, and the reason we didn't want to include it in the construction is just that it's not the only

[00:17:32] Speaker 02:
property, a relevant property of these alloy compounds.

[00:17:36] Speaker 02:
So there's no error, there's no misapplication of the claim construction.

[00:17:41] Speaker 02:
So the final weak claim of legal error that Asahi makes is this idea that the board conflated the enablement and anticipation standard and found anticipation based on a finding of enablement.

[00:17:59] Speaker 02:
And that is just a mischaracterization of what the board was discussing.

[00:18:04] Speaker 02:
In fact, what the board was saying was that there was no enablement argument being made here.

[00:18:10] Speaker 02:
So it couldn't make any finding with respect to whether the disclosures in the prior art references were sufficient to make a high purity compound.

[00:18:20] Speaker 02:
And that's, you know, essentially what Asahi is arguing here now.

[00:18:26] Speaker 02:
And the board said, I can't make that determination.

[00:18:29] Speaker 02:
All I can say is on the face of these prior art references, it disclosed the required ingredients and there were no disclosures or indication of any other ingredients and therefore the limitation was met.

[00:18:42] Speaker 02:
And I think with that understanding and that proper reading of the board's decision, we can see that there was no error in conflating enablement and anticipation.

[00:18:53] Speaker 02:
With respect to the other arguments advanced by Asahi, those are all arguments based on the board's factual determinations, which we submit under our brief that those were all justified by substantial evidence as set forth in the board's written opinion.

[00:19:13] Speaker 02:
And unless the panel has any questions, I have nothing further.

[00:19:21] Speaker 00:
I don't hear anything.

[00:19:23] Speaker 00:
So thank you very much.

[00:19:25] Speaker 00:
Ms.

[00:19:25] Speaker 00:
Frey?

[00:19:28] Speaker 01:
Yes, just a couple.

[00:19:32] Speaker 01:
On the issue of anticipation, there is a consisting essentially of limitation in this claim that included unlisted ingredients that's part of that claim.

[00:19:46] Speaker 01:
And we all know there were unlisted ingredients

[00:19:51] Speaker 01:
in these prior art alloys.

[00:19:55] Speaker 01:
And we know that based on the evidence from all the experts and the board made a finding that there would be these impurities in these alloys.

[00:20:10] Speaker 01:
So the question is, well, what would those levels of impurities been?

[00:20:16] Speaker 01:
We don't know the answer to that.

[00:20:18] Speaker 01:
We don't know what the impurities were.

[00:20:21] Speaker 01:
But it's interesting because that consisting essentially of language made it into that claim based on the English abstract of this Yamaguchi 874 and it was added, was changed from comprising to consisting essentially of because the examiner argued that the alloys in this 874

[00:20:49] Speaker 01:
what it would have included impurities at levels that could have detrimental effects on the claimed invention.

[00:21:04] Speaker 01:
And by kind of ignoring this unlisted ingredients, even though we know it's there and that it mattered here, we're basically writing that language.

[00:21:20] Speaker 01:
out of the consisting essentially of claim, especially when we know why it was added.

[00:21:26] Speaker 01:
One other point I'd like to make is on the obviousness ground number five, based on Yamaguchi 923 and the teaching away.

[00:21:37] Speaker 01:
The board found, based on overlapping ranges, a prima facie case of obviousness.

[00:21:51] Speaker 01:
The reference itself, and there was only one reference as part of this ground, the reference itself said that with regard to the business limitation, that if you go below 5 weight percent, which is our, that's our claim level, that it would be impossible to achieve adequate melting point

[00:22:20] Speaker 01:
and adequate wettability, which are prerequisites for a solder.

[00:22:27] Speaker 01:
The board had no evidence other than the prima facie.

[00:22:31] Speaker 01:
We made a teaching away rebuttal and the board did not address it.

[00:22:40] Speaker 01:
I heard the bell ring, so I'm assuming my time is up.

[00:22:47] Speaker 00:
Indeed it is.

[00:22:49] Speaker 01:
Well, thank you.

[00:22:51] Speaker 00:
Thank you, Council.

[00:22:52] Speaker 00:
This matter will stand submitted.