[00:00:00] Speaker 00:
The last case is Leica Microsystems versus the Regents of the University of Michigan, 2022-1445.

[00:00:10] Speaker 00:
Mr. Sommer.

[00:00:14] Speaker 04:
Thank you, Your Honor.

[00:00:15] Speaker 04:
May it please the Court?

[00:00:16] Speaker 04:
Andrew Sommer on behalf of Appellant Leica Microsystems.

[00:00:20] Speaker 04:
The Board legally erred in its obviousness analysis by myopically focusing on the teachings of the reference to the exclusion

[00:00:27] Speaker 04:
of evidence of what the personal and ordinary skill in the art would have brought to bear on the teachings of the references that were used in the obviousness combinations.

[00:00:38] Speaker 04:
We know this because the board told us our analysis turns on the references teachings rather than considering some of the factual evidence that we put in front of the panel before the PTAB.

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The board also erred in trying to justify its finding of a lack of motivation to combine on two erroneous fact findings.

[00:00:57] Speaker 04:
The first was that the full-stand system had too short of a capture time to measure fluorescence, particularly the fluorescence from the Whitmer's house sample.

[00:01:07] Speaker 04:
Your Honours, that is unsupported by the record.

[00:01:09] Speaker 04:
I don't think the University actually can test that in its brief.

[00:01:13] Speaker 02:
What's the claim construction here of the system?

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I mean, you seem to be arguing at times that there's certain kinds of samples which could have been, or fluorescence could have been measured by the full state system within the parameters of the

[00:01:33] Speaker 02:
protection times specified there.

[00:01:36] Speaker 02:
But is that sufficient, or does the system have to be able to, as a general matter, detect fluorescence in any sample?

[00:01:46] Speaker 04:
Your Honor, I think we would submit that this system can detect the fluorescence of any sample, whether it could detect the entire lifetime of the fluorescence may be a matter of debate, depending on the settings of the street camera.

[00:01:59] Speaker 02:
Our position before the fact that it would could detect one sample is not enough to render it obvious.

[00:02:06] Speaker 04:
Well, we think it absolutely would be.

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I mean, any teaching in the prior art could meet the claim.

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In terms of whether it could detect all fluorescence from all samples, we don't think that that's actually required by the claim.

[00:02:19] Speaker 01:
Didn't the board find that Fullstead doesn't disclose fluorescence at all?

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And wasn't there substantial evidence to support that finding?

[00:02:28] Speaker 04:
We do not argue that Fullstead does disclose fluorescence, your honor.

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So yes, absolutely.

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Fluorescence is not mentioned in Fullstead.

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That's undisputed on the record.

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However, that jump from detecting scattering to detecting fluorescence is trivial in light of the evidence on the record, which is

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The same systems were used to measure both scattering and fluorescence, commonly by those skilled in the art.

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Both experts agreed.

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Both experts had done it.

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Additionally, the evidence included a 1973 textbook showing the position of a fluorescer or a scatterer in the same system.

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There was an article by Jameson.

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This is at Appendix 1824.

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that shows that people skilled in the art were using things like turd assemblies to move scatterers and florescers.

[00:03:15] Speaker 01:
The board had all this evidence in front of it, had the two experts' analyses of the evidence, and found that the patent owner's expert was more persuasive as to what would be known to want to skill in the art.

[00:03:28] Speaker 01:
Isn't that all substantial evidence?

[00:03:31] Speaker 04:
Your Honor, we disagree that that's actually a fact finding that the board made, that there was a credibility determination that Dr. Piston was more credible on what one of ordinary skill in the art would know.

[00:03:41] Speaker 04:
I think it's important to note that in the patent owner response, there's four pages dedicated to the entirety of the full stat ground.

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There's one paragraph directed to motivation to combine in the patent owner response to the petition.

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And that is that the board got it right for the reasons we've already explained in our preliminary response.

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There's no expert testimony cited in support of that analysis.

[00:04:05] Speaker 04:
So it wasn't presented to the board as Dr. Piston provided a detailed explanation of why one ordinary skill in the art would not have been motivated to make the calculation.

[00:04:14] Speaker 01:
The board has more than a paragraph.

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The board goes on for pages and pages about why they are not persuaded.

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And I don't think they have to make a credibility finding.

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They need to make a finding as to who persuaded them.

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And they were clearly persuaded, as they explain at length.

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by the overall shelling by the patent owner.

[00:04:32] Speaker 01:
Isn't there substantial evidence to support that?

[00:04:36] Speaker 04:
Your Honor, the actual subsidiary fact findings made, for example, to say that the differences were substantial between the purpose of Fullstad on one hand and then the claim on the other are not supported by substantial evidence first.

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As to the timing, Whitmer's house and Fullstad was a combination presented to the board.

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There would need to be no adjustment to the timing of the capture.

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for the fluorescence in order to capture fully the fluorescence of Whitmer's house of sample.

[00:05:05] Speaker 01:
So the board's conclusion that there would have had to be... Let's assume for the sake of argument the board got that one fact finding but only that one fact finding wrong.

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Would that mean we have to reverse or we have to remand or could we not still affirm based on the other findings?

[00:05:20] Speaker 04:
Well the other finding was that there was a expert level of

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or level of expertise required to prepare the samples for imaging and expert level testing being done.

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Your Honor, that's not relevant to the claims.

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There is no specific testing.

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There is no specific sample preparation being discussed in those claims.

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So no, we don't think that that's a basis for affirming the board.

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We think that that is kind of a red herring, if you will.

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And certainly, the board does have a lot more explanation in its final written decision responding to our motivation to combine.

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Than is in the patent owner response, but because this issue wasn't fully developed the board made these factual errors Trying to justify itself because they were not vetted on the record and did the did the board find it posted?

[00:06:08] Speaker 02:
system A false that type system would not have been used to detect fluorescence and

[00:06:17] Speaker 04:
I don't think the board made that fact-finding, Your Honor.

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Certainly not explicitly.

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The board did say the differences in purpose of those two things was substantial, and then tried to justify that decision by saying, look, timing is a huge consideration, and the record lacks evidence of how you'd adjust the timing.

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Our argument in the petition was that no adjustment would be necessary, and certainly wouldn't have been in the context of the Whitmer's House reference.

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So basically, the board is saying

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even if you could use the full state system to detect fluorescence, that you'd have to modify it because the normal timing in the system wouldn't detect fluorescence in a large majority of samples.

[00:06:59] Speaker 04:
I think that's a fair reading of what the board was trying to say, yes.

[00:07:05] Speaker 04:
The board also erred by summarily rejecting our argument that these claims are directed to a new use of an old system.

[00:07:13] Speaker 04:
Specifically, under the law, what we have here is it's the functional limitations that's the discussion between the parties here.

[00:07:20] Speaker 04:
The use of the Fullstad system for exciting fluorescence of a sample having multiple fluorophores.

[00:07:26] Speaker 04:
Under the law, we don't look to the functional limitations of the claim to define what a system is.

[00:07:32] Speaker 04:
Apparatus claims define the apparatus, not what the apparatus does.

[00:07:37] Speaker 04:
And here, we have a case in which

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The principal dispute between the parties is over whether the apparatus of Fullstad would be used to detect fluorescence.

[00:07:48] Speaker 01:
Isn't there substantial evidence that some modification would have to be made to Fullstad in order to practice the 169 claims?

[00:07:58] Speaker 01:
Certainly not identified by the board.

[00:08:01] Speaker 01:
What about a cryogenic holding container in order to, for instance,

[00:08:10] Speaker 01:
to use samples like the one in your secondary reference?

[00:08:13] Speaker 04:
So if you're going to do a full substitution of the sample holding system into fullstead, which we don't understand the law to require, perhaps, Your Honor, they certainly referenced the sample preparation being cryogenic.

[00:08:30] Speaker 04:
That was for the particular experiments being performed by the Whitmer's House group when they did that.

[00:08:35] Speaker 04:
But that's not necessary for detecting the fluorescence.

[00:08:39] Speaker 01:
I guess the more general question is, if we think there's substantial evidence to support a conclusion that some modification would need to be made to Falstad in order to practice the 169 claims being challenged, then is it fair to say that this really is just a new use of an old machine?

[00:08:58] Speaker 01:
Or is it more accurate to say it's the new use of a newly modified old machine?

[00:09:04] Speaker 04:
So if that, I think the answer is it depends, Your Honor, and it depends on how it's claimed.

[00:09:11] Speaker 04:
Because if that distinction of what is needed to practice the claim with full stat is embodied within the claim itself, then yes, I'd agree.

[00:09:20] Speaker 04:
And it is a new machine, a different machine.

[00:09:23] Speaker 04:
That's not what we have here.

[00:09:24] Speaker 04:
There's an argument in the university's brief that what they've done is they've come up with a new street camera, a non-obvious modification to the street camera.

[00:09:32] Speaker 04:
That's contrary to the patent.

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The patent has one figure showing the details of a street camera.

[00:09:37] Speaker 04:
It is labeled in bold letters, prior art.

[00:09:41] Speaker 04:
They identify a prior street camera commercially available.

[00:09:48] Speaker 04:
The manual of that street camera is found in the appendix and talks about how the timing can be controlled on that street camera.

[00:09:56] Speaker 02:
The whole contention about non-obviousness

[00:10:00] Speaker 02:
concerns the detection aspect of this and not the light initiation aspect of it, correct?

[00:10:08] Speaker 04:
Your Honor, yes.

[00:10:09] Speaker 04:
I think there's a slight interrelation of those two things as to the timing aspect of the board's decision.

[00:10:15] Speaker 04:
Because if the pulses are too close together, it'll be just a wash of light, for example.

[00:10:19] Speaker 04:
But yes, in general, I think the primary dispute is over detection.

[00:10:22] Speaker 02:
OK, so what does the record show about how you would set the camera for different detection

[00:10:30] Speaker 02:
periods.

[00:10:32] Speaker 04:
Well, so if you had to set the camera differently than full-stad, which is something that we don't agree with, at least in the context of Whitmer's house, but if you did, if you look at appendix 3164, there's a discussion.

[00:10:44] Speaker 04:
This is a piece of evidence about a Hamamatsu street camera that's discussed in both full-stad, discussed in the patent as well.

[00:10:52] Speaker 04:
It talks about a gait operation that renders the street camera temporarily insensitive.

[00:10:57] Speaker 04:
This is

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under the bold letter gate.

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And this is exactly how it was done.

[00:11:02] Speaker 04:
We've included another article in the record as well that talks about gating, which is you wait till the light front that you don't want to measure goes by, and then you activate the camera, and you capture what you do want to capture.

[00:11:13] Speaker 04:
This is the instructions for the street camera that's at issue.

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So there is no non-obvious modification to a street camera.

[00:11:21] Speaker 04:
This is how they work.

[00:11:23] Speaker 02:
The problem is there seems to be some confusion in the record as to what

[00:11:27] Speaker 02:
timing issue we're concerned about, whether it's delaying the start of the measurement, whether it's the period of measurement.

[00:11:39] Speaker 02:
It's confusing to me as to what the board is talking about and what the parties are talking about.

[00:11:44] Speaker 02:
They seem to be going past each other to some

[00:11:49] Speaker 04:
Your Honor, I don't completely disagree with that.

[00:11:51] Speaker 04:
But I think at the end of the board's analysis of the entire timing section, I think, is kind of the nut of where the issue lies, which is that they found that there would have to be some adjustment.

[00:12:01] Speaker 02:
And while that may be true in the context of the mayor's assessment to the period in which the detection takes place or some adjustment to the delay of the start of the detection period.

[00:12:13] Speaker 04:
I think a fair reading of the board's opinion is that they found perhaps both might need to be adjusted.

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and that there would need to be precise timing changed with Fullstad.

[00:12:23] Speaker 04:
But we think that that is where the error lies.

[00:12:26] Speaker 04:
That is the central error in the fact-finding on the first point, because no change is necessary.

[00:12:30] Speaker 04:
That's what we argued in the petition.

[00:12:32] Speaker 04:
It's what we've argued in the brief.

[00:12:34] Speaker 04:
And I believe that that is uncontested in the university's briefing.

[00:12:39] Speaker 00:
Counsel, you're into your rebuttal time.

[00:12:41] Speaker 00:
You can continue or save it.

[00:12:43] Speaker 04:
Thank you, Your Honor.

[00:12:43] Speaker 04:
I'll save the rest of my time for rebuttal.

[00:12:46] Speaker 00:
Mr. Tantovich.

[00:12:47] Speaker 03:
Good morning, Your Honors.

[00:12:49] Speaker 03:
So the sole issue in this appeal, the sole board finding in relation to Folstead and Whitmer House is no motivation to combine.

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The board did not go on to analyze whether or not the references disclosed particular limitations of the claims.

[00:13:03] Speaker 03:
They stopped at there was no motivation to combine these references.

[00:13:07] Speaker 03:
And that's a specific issue that's actually on appeal here.

[00:13:12] Speaker 03:
Although I think much of the argument goes into whether or not the combination shows certain

[00:13:17] Speaker 03:
limitations, and I'm happy to address that as well.

[00:13:19] Speaker 01:
But there's more... If the board misunderstood what false stat is, that would certainly infect its motivation to combine analysis, wouldn't it?

[00:13:28] Speaker 03:
It would, but that's not what happened.

[00:13:30] Speaker 03:
The board understood false stat absolutely perfectly.

[00:13:33] Speaker 01:
Okay, but I mean, to say its motivation to combine doesn't absolve you or the board from, if they made errors, for instance, about whether timing needed to be adjusted, if they made an error there,

[00:13:46] Speaker 01:
you agree I think that has to affect their motivation to combine analysis, doesn't it?

[00:13:50] Speaker 03:
Sure, but there was no error in terms of the timing, and I'm happy to answer any questions you have.

[00:13:53] Speaker 01:
I would like to understand how that was not an error, yes.

[00:13:56] Speaker 03:
Okay.

[00:13:59] Speaker 03:
So when the board's explaining the timing, and let me turn to the page here.

[00:14:10] Speaker 03:
So when the board's explaining the timing, what it's talking about is it

[00:14:15] Speaker 03:
It says that Fulstad has a femtosecond laser.

[00:14:21] Speaker 03:
And then it says that it takes a measurement for a period of one to two nanoseconds.

[00:14:25] Speaker 01:
Are we at around a 16 and 17 thereabouts?

[00:14:29] Speaker 03:
Yes.

[00:14:32] Speaker 03:
So if I'm looking on page 17, and it says, Fulstad teaches in the first whole paragraph a repeating laser pulse, the length of each pulse in the order of femtoseconds.

[00:14:43] Speaker 03:
is being adopted from the expert declaration.

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And with a street camera taking measurements two picoseconds apart for a matter of one to two nanoseconds.

[00:14:53] Speaker 03:
And this is probably consistent with what's disposed in full stat at appendix page 636.

[00:14:58] Speaker 02:
But then later on on that same page, they say that Marriott's Echredin orange dot exhibits prompts for us in times of one point

[00:15:11] Speaker 02:
7 to 1.9 nanoseconds, which would seem to be within the folstate capability.

[00:15:18] Speaker 02:
Yes, that is a period of fluorescence.

[00:15:22] Speaker 02:
That's a problem, because the board's own finding seems to be, at least in detecting this sample, that the folstate machine could have done it.

[00:15:34] Speaker 03:
well it could have done it and here's the issue so what full-stack says and what the words alluded to here... Is my reading of that correct?

[00:15:42] Speaker 02:
They're saying that it's... in terms of timing they're saying that that particular sample could have been used to detect fluorescence using full-stack.

[00:15:52] Speaker 03:
I just want to explain why that would not actually work when you get into the references and so if you just bear with me for a second.

[00:16:00] Speaker 02:
Okay, bear with you.

[00:16:02] Speaker 02:
The timing is right, but something else is wrong.

[00:16:06] Speaker 02:
Is it what you're saying?

[00:16:08] Speaker 03:
The timing actually doesn't work in the concept of the full stat system for fluorescence detection.

[00:16:12] Speaker 03:
Here's why.

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So what full stat tells us on Appendix Page 696 is that the propagation time from the white light laser to the detector is up to about two nanoseconds.

[00:16:25] Speaker 03:
That means your white light excitation light takes two nanoseconds to go from the laser to the detector.

[00:16:31] Speaker 03:
If you have fluorescence

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at that same time, you will not be able to detect it.

[00:16:36] Speaker 03:
The laser of the excitation light is brighter than the fluorescence.

[00:16:41] Speaker 03:
So you won't be able to detect it if they're in the system at the same time.

[00:16:45] Speaker 03:
Every reference we have in the record, Laporte, Marriott, the patent itself, there has to be some spacing between the excitation light and the fluorescence in order to detect it.

[00:16:56] Speaker 03:
And even with regard to Whitmer's house,

[00:16:59] Speaker 02:
Where does the board say that Polstead doesn't show a sufficient delay?

[00:17:09] Speaker 02:
The board, to me, seems to be talking about the protection period.

[00:17:13] Speaker 02:
and now you're arguing something which seems to be different, which is that it wouldn't work because false dead doesn't disclose the necessary delay in the start of the detection period that would eliminate the effect of the light overcoming the fluorescent light information.

[00:17:37] Speaker 03:
So what the board finds is that

[00:17:41] Speaker 02:
The reference is so... Do you understand what I'm saying?

[00:17:43] Speaker 03:
I don't exactly.

[00:17:45] Speaker 03:
I'm sorry.

[00:17:46] Speaker 02:
That would be a problem.

[00:17:50] Speaker 02:
My understanding of what you're saying now is that it wouldn't work because false data doesn't show enough delay in the start of the detection time.

[00:17:59] Speaker 02:
And that because of that, the light source would make it impossible to read the fluorescence.

[00:18:09] Speaker 02:
And do I understand that correctly?

[00:18:12] Speaker 02:
That's what you're saying, it wouldn't work because there's not enough to lay in the start of the detection period?

[00:18:19] Speaker 03:
Yes, the two time periods are overlapping.

[00:18:21] Speaker 03:
if the laser propagation time and the fluorescence are overlapping, we'll be able to detect the fluorescence.

[00:18:27] Speaker 03:
And there's certainly not any separation as required.

[00:18:29] Speaker 02:
So I'll take that as a yes.

[00:18:31] Speaker 02:
But in reading the board's decision, I don't see that they're talking about that.

[00:18:36] Speaker 02:
They seem to be talking about the period of detection rather than the necessity for a lay in the start of the detection period.

[00:18:45] Speaker 03:
I think the point the board is making is that in the prior art, it was very

[00:18:51] Speaker 03:
Particular specialized timing in terms of how did struck fluorescence and that there's no teaching anywhere of how you would use full stat To adjust it to the correct timing.

[00:19:04] Speaker 03:
This is 17 to 18 the record lacks any evidence regarding how correct time what which correct time I mean

[00:19:12] Speaker 02:
As I was mentioning earlier, it seems to me there's confusion here because people are talking about different timing limitations.

[00:19:19] Speaker 02:
The start of the detection period being one, which she just talked about, and the other one is the length of the detection period.

[00:19:27] Speaker 03:
Yes, and what the board appears to be talking about is both.

[00:19:30] Speaker 03:
It says, the evidence record reflects very specialized, precise measurements for the check and efflorescence record lacks evidence.

[00:19:36] Speaker 03:
regarding how a person would have been able to configure full-stack systems to measure fluorescence.

[00:19:41] Speaker 00:
Getting back to your original point, there was no motivation to combine these references.

[00:19:47] Speaker 00:
Why wasn't there a motivation?

[00:19:49] Speaker 00:
Because these are all directed to testing methods.

[00:19:55] Speaker 00:
And so why couldn't one take Whitmer's house that dealt with fluorescence and combine it with

[00:20:06] Speaker 03:
Well, so for a few reasons.

[00:20:11] Speaker 03:
One is there are two completely different analytical technologies, right?

[00:20:15] Speaker 03:
The idea of measuring scattered light and different propagation times and using that to find information, as Solstead said, about concentration homogeneity of a turbid sample is very different than looking at the fluorescence of a sample.

[00:20:30] Speaker 03:
I mean, what the board found as a state of the art is

[00:20:34] Speaker 02:
has very specialized expert level disclosure of how you would find that you wouldn't use both pieces of equipment to both detect scattering and fluorescence?

[00:20:44] Speaker 03:
There's no evidence to the record of anybody actually using both of those.

[00:20:48] Speaker 02:
I don't think that's correct.

[00:20:50] Speaker 02:
I think there is a lot of evidence that people use the same equipment to do both.

[00:20:56] Speaker 03:
Okay, so let's talk about it for a second.

[00:20:57] Speaker 03:
I mean, the board found that

[00:21:00] Speaker 03:
Doc Nuss's testimony was conclusory on the issue of swapping samples, particularly swapping a fluorescent sample into a scatting measuring device.

[00:21:08] Speaker 03:
And the board found no evidentiary support for that.

[00:21:10] Speaker 03:
And we can talk specifically about the two articles that they cite, the 1973 book and the 1984 article.

[00:21:20] Speaker 03:
Very specifically, what they're actually alleging here is that you're going to take a fluorescent sample and you're going to put it into a scattering machine.

[00:21:26] Speaker 03:
That's what they're alleging.

[00:21:27] Speaker 03:
There's not a single instance in the record of anybody ever doing that.

[00:21:31] Speaker 03:
Of anybody ever taking a fluorescent sample and putting it in a scattering machine.

[00:21:34] Speaker 03:
The two examples they have are about calibration of a fluorescent detection machine.

[00:21:41] Speaker 03:
In other words, you would put in a slide or video without your sample, and you determine what scattering or background noise there is in the machine.

[00:21:50] Speaker 03:
So you can reduce that.

[00:21:51] Speaker 03:
That's about calibration of the fluorescence detection machine.

[00:21:56] Speaker 01:
I think the argument in response to that is that the claims are not limited to detection versus calibration.

[00:22:02] Speaker 01:
Are they right about that?

[00:22:05] Speaker 03:
The claims of the patent are about fluorescence detection.

[00:22:09] Speaker 01:
And so calibration would not practice any of your claims.

[00:22:13] Speaker 03:
That is true.

[00:22:16] Speaker 03:
There's also not a single example of anybody putting a fluorescent sample in a scanning machine to measure fluorescence, which is really the key issue here.

[00:22:23] Speaker 03:
They would not even find any example in the literature of anybody ever doing that.

[00:22:27] Speaker 03:
And that's a key issue that I think the board seized on in finding no real evidentiary support, the idea that swapping samples was simple.

[00:22:38] Speaker 03:
I mean, even Dr. Piston testified that even today, the scattering and the rest of the machines are still separate.

[00:22:49] Speaker 03:
The separate machine is used for separate purposes.

[00:22:53] Speaker 02:
So if we were to conclude otherwise that there was substantial evidence that the same machine was used for both, we'd have to send it back to the board, right?

[00:23:05] Speaker 03:
Well, I mean, there are certainly other factual findings that could support

[00:23:08] Speaker 03:
the lack of motivation to combine here.

[00:23:12] Speaker 03:
Well, it could support, but we've got to deal with what the board did decide.

[00:23:19] Speaker 03:
Oh, no.

[00:23:20] Speaker 03:
I'm talking about, indeed, what the board actually did decide here in terms of the lack of evidentiary support for swapping samples, the fact that

[00:23:35] Speaker 03:
the state-of-the-art effect of very specialized, precise measurements of fluorescence.

[00:23:39] Speaker 03:
And there's just no teaching the record of how you would configure Fulstad to do that.

[00:23:43] Speaker 03:
That was a factual finding that the board made as well.

[00:23:47] Speaker 03:
They found no evidence or improvement in using Fulstad's system, as opposed to using Whitmerhouse's system, which is specially designed to measure the fluorescence of the Whitmerhouse sample.

[00:23:59] Speaker 03:
They further found that in order to do this combination, you have to completely disregard the teachings of Whitmer House with regard to fluorescence, and just in favor of Folstead, which has no disclosure of fluorescence.

[00:24:11] Speaker 03:
So there's several other factual findings that the board made.

[00:24:15] Speaker 03:
that would support lack of motivation to combine as well in the record.

[00:24:19] Speaker 01:
What if, going back to the timing question, what if we found that the board had no substantial evidence for its timing analysis?

[00:24:27] Speaker 01:
Where would that leave us?

[00:24:28] Speaker 01:
Could we still affirm or would we need to reverse or send back?

[00:24:33] Speaker 03:
I think you could still affirm based on the other factual findings that one would not have combined these.

[00:24:38] Speaker 03:
In other words,

[00:24:39] Speaker 03:
You know, one would have to disregard, really, all the forest use of Whitmer House in order to do this, and that there was no real evidence of swapping of samples.

[00:24:47] Speaker 03:
I mean, I think there are other factual findings in the record that would support finding no motivation to combine.

[00:24:54] Speaker 03:
That there was no benefit or improvement in using the full stat system to test Whitmer House samples is another factual finding that would support it.

[00:25:01] Speaker 01:
What's your response on the camera manual that it basically discloses how to change the settings on the camera to do what your patent does?

[00:25:15] Speaker 01:
Oh, sure.

[00:25:15] Speaker 03:
The camera manual they're citing is from 2008, two years after the patent was filed.

[00:25:19] Speaker 03:
So it's actually not demonstrating the knowledge of skill and the art at the time.

[00:25:23] Speaker 03:
Nor is there anything in the record suggesting any modifications of a street camera in order to do what the patent does, which is separate white line excitation from fluorescence.

[00:25:33] Speaker 03:
Nothing in the record, no teaching at all.

[00:25:35] Speaker 03:
And the manual they cite out again is well after the patent.

[00:25:39] Speaker 03:
So it doesn't show the knowledge of skill and the art at the time.

[00:25:42] Speaker 01:
It's after the patent, but are you conceding that it does disclose what your patent does?

[00:25:46] Speaker 03:
No, I'm not conceding that it does disclose it.

[00:25:49] Speaker 03:
I mean, it discloses different features of the camera, but how you would use those, how you would configure it, none of that is disclosed in the manual.

[00:25:57] Speaker 00:
Anything further?

[00:25:59] Speaker 03:
No, not unless the board has any more questions.

[00:26:01] Speaker 00:
Thank you, counsel.

[00:26:03] Speaker 00:
Mr. Sommer has some bottle time.

[00:26:07] Speaker 04:
Thank you, Your Honor.

[00:26:08] Speaker 02:
So help me here.

[00:26:10] Speaker 02:
I had thought that you had evidence that the same machines were used to detect scattering and fluorescence.

[00:26:16] Speaker 02:
They say, no, it only happened for calibration purposes and not detection purposes.

[00:26:22] Speaker 02:
Help us understand what the record shows.

[00:26:25] Speaker 04:
So Your Honor, two points on that.

[00:26:27] Speaker 04:
One, I believe there was a claim construction argument that said detection does not include calibration.

[00:26:33] Speaker 04:
Well, there's testimony in the record from Dr. Piston, their expert, that said what they did was, this was the question, would it be fair in that at one point in time, the scattering solution is in the beam path, and you're taking measurements based on the scattering solution, and then you can rotate the turret and put the fluorescent sample in the beam path.

[00:26:52] Speaker 04:
answer yes.

[00:26:53] Speaker 04:
So that's what he was doing in the 1980s.

[00:26:55] Speaker 04:
Appendix 3904, Appendix 3905, Your Honor.

[00:27:04] Speaker 04:
In terms of the other evidence in the record on this point, there's quite a bit of it.

[00:27:13] Speaker 04:
Now some of it is with respect to calibration of the system by swapping out the sample and you want to remove some noise or some delay times.

[00:27:20] Speaker 04:
But that's not the limit of it.

[00:27:23] Speaker 04:
There is a reference to a Georgia County, and I believe it was originally exhibit 1035 in the IPR proceeding.

[00:27:32] Speaker 04:
I'm looking for it here in my appendix materials.

[00:27:34] Speaker 04:
But this one talks about the aim of this study was to assess the potential of three spectroscopic techniques, fluorescence, reflectance, and light scattering spectroscopy.

[00:27:45] Speaker 04:
And it describes the use of all these techniques in the same system.

[00:27:48] Speaker 04:
So the evidence is not that good.

[00:27:51] Speaker 04:
Is calibration within the scope of the claims or not?

[00:27:54] Speaker 04:
It's detecting, yes, absolutely.

[00:27:56] Speaker 04:
It detects the optical phenomena in order to perform calibration.

[00:27:59] Speaker 04:
There's no distinction in the claims that you have to detect for a particular purpose.

[00:28:03] Speaker 01:
And you suggested there was a claim construction dispute.

[00:28:06] Speaker 01:
Did the board resolve it?

[00:28:08] Speaker 04:
I don't think it was ever presented to the board.

[00:28:09] Speaker 04:
It was the first time I heard about it today that somehow calibration does not fall within the scope of detecting it.

[00:28:15] Speaker 04:
The timing issue, just one last thing I see I'm running out of time.

[00:28:19] Speaker 04:
I heard an argument today that the timing wouldn't work because the delay of propagation of the scattered photons through the sample would have been too much noise.

[00:28:29] Speaker 04:
It would have conflicted with the Whitmer's house excitation and fluorescence.

[00:28:34] Speaker 04:
The pill is no longer there once you've swapped out the sample.

[00:28:37] Speaker 04:
So you're not dealing with the turban pharmaceutical media anymore.

[00:28:40] Speaker 04:
You're dealing with the consequences of using a sample like a spinach chloroplast solution that was prepared.

[00:28:46] Speaker 04:
And exactly how that would look in time-resolved detection can be found on page 197 of the appendix.

[00:28:52] Speaker 04:
You can distinguish between all of the different fluorophores and the light from the excitation source.

[00:28:58] Speaker 04:
With that, thank you very much, Your Honor.

[00:29:00] Speaker 00:
Thank you to both consular cases submitted.

[00:29:03] Speaker 00:
That concludes the arguments for today.