[00:00:00] Speaker 02:
Our next case for argument is 22-1521, the Regents of the University of California versus the ITC.

[00:00:07] Speaker 02:
Mr. Hanson, please proceed.

[00:00:09] Speaker 00:
Good morning, Your Honors.

[00:00:11] Speaker 00:
May it please the Court?

[00:00:13] Speaker 00:
This morning, I would like to address errors in the Commission's analysis of four issues, the molding and transparent claim limitations, the doctrine of equivalence, and obviousness.

[00:00:24] Speaker 00:
Regarding molding, the Commission's rulings regarding molding should be reversed because they are based on erroneous claim construction.

[00:00:30] Speaker 00:
First, the commission's construction of molding was erroneous because it imported a process limitation into these apparatus claims.

[00:00:39] Speaker 00:
The ALJ found at the markman stage that molding is not a process limitation.

[00:00:43] Speaker 02:
As a housekeeping matter, can I just ask a quick question, which is the molding limitation, if it is supported by substantial evidence that covers all the accused products and sort of resolves the entire case, we wouldn't have to reach the other issues.

[00:00:59] Speaker 00:
If you affirm the Commission's conclusions that the molding limitation was correctly construed and unmet, then yes, you wouldn't have to reach the other issues.

[00:01:09] Speaker 03:
What if we were to move on and affirm, just hypothetically, the invalidity?

[00:01:15] Speaker 03:
I'm just wondering, what does that do?

[00:01:16] Speaker 03:
It doesn't actually invalidate the patents, is that correct?

[00:01:21] Speaker 00:
It's without prejudice, because the ITC's determinations on patent issues are not prejudicial.

[00:01:26] Speaker 00:
other proceedings.

[00:01:27] Speaker 03:
Would that be some form of collateral estoppel against the patent owner from trying to enforce these patents?

[00:01:33] Speaker 00:
I don't believe so, but I haven't researched that exhaustively.

[00:01:38] Speaker 03:
I'm trying to hear about the molding, so please go on.

[00:01:39] Speaker 00:
Thank you, Your Honor.

[00:01:42] Speaker 00:
Again, the ALJ found at the Markman stage that the molding limitation is not a process limitation, yet the construction requires that the molding be made by or as if by a mold.

[00:01:52] Speaker 00:
That construction focuses on how the molding is made instead of what the structure of the molding is.

[00:01:59] Speaker 03:
I guess the pushback to that is that maybe that kind of construction, yes, in one way it could be met by forming the component with an actual mold, but the construction seems to be capturing something broader than a specific process for making the component.

[00:02:20] Speaker 03:
It seems to be really getting more at

[00:02:22] Speaker 03:
looking at the physical characteristics of the component and seeing if it's consistent with the component as having been formed by a mold or as if it had been made by a mold.

[00:02:33] Speaker 03:
And so the expectation is that the resulting component is something that looks clean and smooth and even and regular throughout.

[00:02:43] Speaker 03:
so that even if it wasn't made by a mold, you could still meet this construction because it looks like it has the physical qualities as if it had been made by a mold.

[00:02:54] Speaker 00:
The issue I have with that is that the ALJ also found that the ordinary meaning of molding is very broad.

[00:02:59] Speaker 00:
He found that it encompasses the forming of an object out of any malleable substance by any means.

[00:03:05] Speaker 00:
And there can be no dispute that the accused moldings would meet that broad definition.

[00:03:10] Speaker 00:
of the ordinary meaning of the word mold as a verb.

[00:03:14] Speaker 04:
As a verb, it's true that if I take a clump of clay and I start shaping it with my hands, I can be said to be molding it.

[00:03:27] Speaker 04:
But that's not what's going on here.

[00:03:29] Speaker 04:
This is mold as in hit the mold, uniformity.

[00:03:34] Speaker 00:
That's one understanding of what the term means.

[00:03:36] Speaker 00:
But if we look at the embodiments disclosing the specification,

[00:03:39] Speaker 00:
They have a variety of shapes.

[00:03:41] Speaker 00:
And they also have.

[00:03:42] Speaker 04:
Every one of them could be a mold.

[00:03:45] Speaker 04:
Because a mold doesn't have to be simple.

[00:03:49] Speaker 04:
It can be very, very complicated.

[00:03:51] Speaker 04:
But every time you use it, you come out with the same thing.

[00:03:56] Speaker 00:
That's a fair point.

[00:03:57] Speaker 04:
If that were the understanding of what

[00:04:03] Speaker 04:
the ALJ said, then is there really not substantial evidence to support the finding of non-infringement under that view because of the irregularities from piece to piece in the pictures, et cetera, on the AQ product?

[00:04:25] Speaker 00:
So with the proviso that we disagree with the claim construction as legally erroneous,

[00:04:30] Speaker 00:
The court, or excuse me, the commission also committed legal error by focusing on selective portions of the accused filaments only on the ends and ignoring other portions of the filaments, the majority of the filaments that do not have the random irregularities and uneven surfaces that the commission relied on as evidence that they were not formed as if by a mold.

[00:04:53] Speaker 00:
And under this court's case law, if a claim reads merely on a part of an accused device, that is enough for infringement.

[00:04:59] Speaker 00:
And imperfect practice of invention does not avoid infringement.

[00:05:02] Speaker 03:
This portion argument, was it made below?

[00:05:05] Speaker 03:
I don't think it was made below.

[00:05:07] Speaker 03:
I think this portion argument on the molding limitation is something that was raised.

[00:05:16] Speaker 03:
It was never raised in front of the ALJ.

[00:05:18] Speaker 03:
It was raised for the first time in your brief to the commission.

[00:05:23] Speaker 03:
And I think under commission rules, that's untimely.

[00:05:28] Speaker 00:
The reason for that was that ALJ's construction that excluded random irregularities and uneven surfaces was first disclosed to us in his final initial determination.

[00:05:38] Speaker 00:
So our first opportunity to address that was in our post hearing briefing.

[00:05:43] Speaker 03:
But wasn't the whole point of the arguments at trial where the expert on the other side pointing to the ends of these filaments showing unevenness or irregularities?

[00:06:01] Speaker 03:
I mean, in that way, you were clearly on notice of what the theory was for why their accused products lacked a molding.

[00:06:10] Speaker 00:
The experts testified.

[00:06:12] Speaker 00:
I believe to that effect, Dr. Schanfield, if I'm remembering correctly, was testifying about the manufacturing process.

[00:06:19] Speaker 03:
Dr. Eden, too.

[00:06:21] Speaker 00:
And Dr. Eden.

[00:06:22] Speaker 00:
I believe Dr. Schubert also testified on the other side of that, that in his view, a person of ordinary skill would understand the encapsulants on the accused filaments to be a molding within the meaning of that term in this presentation.

[00:06:33] Speaker 00:
Right.

[00:06:34] Speaker 03:
So the point is, the terms of the debate in front of the trial, ALJ, was that the ends of the filaments also mattered.

[00:06:43] Speaker 03:
Nobody argued, hey, you've got to lock that off and not focus on that.

[00:06:47] Speaker 03:
You can only focus on the portion I prefer to focus on in terms of infringement.

[00:06:55] Speaker 03:
That wasn't argued in your pre-hearing brief.

[00:06:57] Speaker 03:
That wasn't argued at trial.

[00:06:58] Speaker 03:
That wasn't argued in your post-hearing brief at ALJ.

[00:07:01] Speaker 03:
It came up for the first time in your petition to the commission.

[00:07:06] Speaker 03:
And of course, that's too late.

[00:07:08] Speaker 00:
Right.

[00:07:08] Speaker 00:
Going into the hearing,

[00:07:10] Speaker 00:
In preparing our presentation for the hearing, what we had was the ALJ's construction of made by or as if by a mold, which was, we didn't know at the time, but it was adapted from a dictionary definition, a lay dictionary definition applicable to molding butter, which is clearly completely irrelevant to the technical field here and the intrinsic evidence.

[00:07:31] Speaker 00:
I'll have to confirm with my colleague to confirm whether

[00:07:34] Speaker 00:
Our experts specifically testified about the other portions of the molding meeting the ALJ's claim construction.

[00:07:42] Speaker 00:
I'll get back to you on that.

[00:07:43] Speaker 00:
But again, the first time that we were given notice that the ALJ would exclude random irregularities and uneven surfaces from his construction of made by or as if by a mold was in the final initial determination.

[00:07:57] Speaker 03:
Right, but it was argued and debated about during the trial.

[00:08:00] Speaker 00:
There was not.

[00:08:02] Speaker 00:
There was expert evidence offered on that point, I believe.

[00:08:07] Speaker 00:
But we'll confirm.

[00:08:09] Speaker 00:
Any other questions, or may I continue?

[00:08:11] Speaker 03:
Please go on.

[00:08:14] Speaker 00:
Yeah.

[00:08:15] Speaker 00:
So our proposed construction was formed component, which in combination with the descriptions and the specification and the surrounding claim language, recites sufficient structure to understand what the claim molding covered.

[00:08:30] Speaker 03:
What does the word formed do?

[00:08:32] Speaker 03:
What work is that doing in the proposed construction, formed component?

[00:08:37] Speaker 03:
I mean, to me, it just sounds like component.

[00:08:39] Speaker 00:
As opposed to an unformed component or something that's just haphazard.

[00:08:42] Speaker 03:
The claim recites that... I'm sorry, what's an unformed component?

[00:08:46] Speaker 03:
I mean, ultimately, even that is something that's being done to create it, right?

[00:08:52] Speaker 00:
Formed, in our view, means given a particular shape.

[00:08:55] Speaker 00:
When you look at all these filament LEDs that are made by mass manufacturer,

[00:09:00] Speaker 00:
They all are remarkably consistent in the form of the molding that they have on them.

[00:09:05] Speaker 00:
We believe that evidence supports the conclusion that they are indeed a formed component that also meets the other structural characteristics recited in the claim.

[00:09:13] Speaker 00:
And that the reason for finding non-infringement was a selective reliance on only parts of the device when other parts of the device didn't have those same irregularities, not even surfaces.

[00:09:26] Speaker 00:
And that was a legal error that

[00:09:29] Speaker 00:
we would not be able to understand the ALJ was going to make until we got his final resolution determination.

[00:09:34] Speaker 00:
Did you have more?

[00:09:35] Speaker 00:
I wasn't sure if you had more questions for me.

[00:09:38] Speaker 00:
OK.

[00:09:39] Speaker 00:
And I would also point out that the Commission's Office of Unfair Import Investigation staff agreed with us and advocated for the same construction of formed component, which is in alignment with the ALJ's finding of what the plain meaning of molding is.

[00:09:57] Speaker 00:
If I may, I'd like to move on to the next issue, the transparent claim construction.

[00:10:03] Speaker 00:
The Commission's rulings regarding the transparent claim limitation should be reversed on both procedural as well as substantive grounds.

[00:10:10] Speaker 00:
Procedurally, the Commission acknowledged the party's disputes on the construction of transparent and then declined to fully resolve them in adopting a plain-meaning construction.

[00:10:19] Speaker 00:
The Commission failed to construe the term transparent as a matter of law as required for the first step in any infringement analysis.

[00:10:25] Speaker 00:
As a result, there are only infringement determinations that imply an unstated construction for this court to review.

[00:10:32] Speaker 00:
Substantively, the commission's implicit construction cannot be correct because it imposed an unstated transmissivity threshold without any support in the intrinsic evidence or the expert testimony and is based on the accused products.

[00:10:45] Speaker 03:
How would you define what the purpose of this patent is, the objective?

[00:10:50] Speaker 00:
to provide for a new form of LED packaging that enables light to be extracted from both the front and the back sides of the device, which contrasts with the prior art.

[00:10:59] Speaker 03:
Wasn't the whole point that we wanted to maximize the amount of light we're extracting?

[00:11:03] Speaker 03:
The problem with the prior art, according to the inventors of this patent, was too much of the light that was coming off the emitting layer was getting absorbed, reabsorbed by the emitting layer.

[00:11:15] Speaker 03:
And so therefore, let's get rid of the mirror, and let's do a transparent plate,

[00:11:20] Speaker 03:
And doing that, we avoid the reabsorption problems and we maximize the amount of light that's being extracted by the LED.

[00:11:28] Speaker 00:
The only issue I would take with that is that the goal is to improve light extraction.

[00:11:32] Speaker 00:
I don't think the patents claim anywhere to maximize it or to make it as much as humanly possible.

[00:11:37] Speaker 00:
But yes, to improve light extraction.

[00:11:39] Speaker 03:
But it would be peculiar if you were trying to avoid the problems of reabsorption to say that the transparent

[00:11:48] Speaker 03:
layer here can be something that barely gets any light through.

[00:11:53] Speaker 03:
It gets some light through, but only a very modest amount.

[00:11:58] Speaker 00:
I think it's important to try and put our thinking about this in the proper time frame at the time of the inventions.

[00:12:05] Speaker 00:
And at the time of the inventions, LEDs were in the very early stages, very rudimentary devices.

[00:12:10] Speaker 00:
And the Miyahara prior art reference that is intrinsic evidence, as it was cited in the parent and grandparent of

[00:12:18] Speaker 00:
the asserted patents that we're raising here on appeal.

[00:12:20] Speaker 03:
I'm just curious, what's the priority date here?

[00:12:23] Speaker 00:
The priority date is November or December 2006.

[00:12:26] Speaker 00:
OK.

[00:12:26] Speaker 00:
So we're talking about almost 20 years ago.

[00:12:33] Speaker 00:
The technology was in its very early days.

[00:12:35] Speaker 00:
And the Miyahara Priorit reference that you were also just discussing in the context of the IPRs of the other patents has a great deal of disclosure in it.

[00:12:43] Speaker 00:
But among the things it discloses is that it uses the term transparent to refer to

[00:12:48] Speaker 00:
a ceramic body that transmits as little as 1% of the light.

[00:12:51] Speaker 02:
Of course, your time is your own, but you use most of your rebuttal time.

[00:12:54] Speaker 02:
Would you like to save some?

[00:12:55] Speaker 00:
I would like to save my rebuttal time.

[00:12:58] Speaker 00:
Thank you, Your Honor.

[00:13:00] Speaker 02:
Ms.

[00:13:00] Speaker 02:
Morad, please proceed.

[00:13:02] Speaker 05:
Good morning.

[00:13:03] Speaker 05:
May it please the court with a morad on behalf of the Commission.

[00:13:08] Speaker 05:
As you noted, there are multiple independent reasons for the court to affirm the Commission determination of no violation.

[00:13:17] Speaker 05:
The molding issue alone could be dispositive of this entire appeal.

[00:13:23] Speaker 05:
I'd like to first address your question about the invalidity.

[00:13:28] Speaker 05:
Patent determinations by the Commission don't have preclusive effect.

[00:13:33] Speaker 05:
And invalidity is raised as an affirmative defense, not as a counterclaim.

[00:13:39] Speaker 05:
So you don't even have to address those.

[00:13:41] Speaker 05:
But if you address them, that would be the effect of those determinations.

[00:13:49] Speaker 03:
So just to confirm, in the ITC's view, if we were to affirm the commission's invalidity determination as to all the asserted claims, that would have no preclusive effect against the patent owner from reasserting those claims in, say, a district court action.

[00:14:07] Speaker 05:
That's correct, Your Honor.

[00:14:08] Speaker 03:
So in your view, collateral estoppel principles wouldn't even apply.

[00:14:14] Speaker 05:
I'm not sure, but I know that, for example, in their brief regions addressed that point specifically.

[00:14:21] Speaker 05:
They said that because for the 529 and the 464 patents, even though the Commission found that those patents were invalid, they didn't raise it on appeal because that doesn't prevent them from asserting those patents in this report.

[00:14:40] Speaker 03:
even though it was actually litigated by the same party and was necessary to the judgment.

[00:14:46] Speaker 05:
That's correct.

[00:14:46] Speaker 05:
Probably persuasive, but not binding.

[00:14:51] Speaker 05:
I mean, the law is that there is no preclusive effect.

[00:14:55] Speaker 05:
So that's how it operates.

[00:14:58] Speaker 05:
Our time is short.

[00:14:58] Speaker 05:
Why don't you move on to your molding argument?

[00:15:01] Speaker 05:
So for the molding issue, the commission correctly construed the term molding in both assertive patents as a complement formed by or as a fire mold.

[00:15:10] Speaker 02:
So it doesn't require a specific process.

[00:15:12] Speaker 05:
It does not, and the commission specifically.

[00:15:14] Speaker 02:
But it has to look like it's molded.

[00:15:16] Speaker 05:
It has to have this uniform shape that, like a person of ordinary skill in the art here, testified that looking at these yellow silicone coatings, there's nothing to suggest that they were made by or as if by a mold.

[00:15:32] Speaker 05:
And there is no testimony on the other side to rebut that particular testimony.

[00:15:39] Speaker 05:
They didn't rely on any expert testimony for their infringement on molding, and that can be problematic for them because infringement is an issue on which they bear the burden of proof.

[00:15:54] Speaker 04:
So I'd like to note that... Can I just ask you, Mr. Hanson said something about a, what I think he called it, a procedural

[00:16:02] Speaker 04:
error that something to the effect that regions didn't have adequate notice of the

[00:16:17] Speaker 04:
possibility of the construction that the ALJ eventually articulated until it was articulated by which time trial was over.

[00:16:27] Speaker 04:
Can you just address that?

[00:16:29] Speaker 05:
Yes.

[00:16:30] Speaker 05:
The commission made findings in the context of infringement, but not in the context of claim construction.

[00:16:36] Speaker 05:
The claim construction was always made by a component made by or as a file.

[00:16:42] Speaker 05:
Then in the context of infringement,

[00:16:44] Speaker 05:
the experts testified that at Appendix 3483 and relying on a demonstrative Appendix 135292 and those are the ones that the ALJ relied on at Appendix 565.

[00:17:01] Speaker 05:
So they were on notice at all times about those pictures that the ALJ relied on and the testimony.

[00:17:11] Speaker 05:
The testimony that their random

[00:17:14] Speaker 05:
irregularities, there are irregularities in the surface profile, it's an uneven surface.

[00:17:20] Speaker 05:
All of those arguments that were made, all of those findings that were made in the context of infringement, they were made during the evidentiary hearing and the region was perfectly aware of those.

[00:17:32] Speaker 04:
Was there briefing before the ALJ on the interpretation, the construction of the molding term?

[00:17:40] Speaker 05:
There were definitely briefings in the pre-hearing stage and the post-hearing stage.

[00:17:45] Speaker 05:
I believe those arguments were made.

[00:17:47] Speaker 05:
I wish there was a page in the appendix I can point to, because this argument was raised in the reply brief.

[00:17:56] Speaker 05:
But it was definitely made by intervenors.

[00:17:59] Speaker 05:
Which argument, sorry?

[00:18:00] Speaker 05:
The argument that the random irregularities

[00:18:07] Speaker 05:
that the surface is uneven.

[00:18:12] Speaker 05:
And the demonstrative at appendix 135 through 92 specifically shows these red ellipses.

[00:18:20] Speaker 04:
I'm sorry.

[00:18:20] Speaker 04:
Now I'm confused, because I think you just flipped back to infringement.

[00:18:23] Speaker 04:
And I'm asking about claim construction.

[00:18:25] Speaker 04:
Was there briefing on the meaning of the word molding in the claims before the ALJ?

[00:18:33] Speaker 04:
That briefing presumably would not include pictures of the accused products.

[00:18:37] Speaker 05:
No, of course.

[00:18:39] Speaker 05:
Sorry, I was confused about your question.

[00:18:40] Speaker 05:
But definitely, at the claim construction stage, and the claim construction order came out earlier in the case, the one side wanted, the regents wanted a firm component, which is very broad, and would encompass any article of manufacture.

[00:18:57] Speaker 05:
And that argument, the article of manufacture, were made before the commission by the interveners.

[00:19:02] Speaker 05:
And on the other side, interveners wanted a construction where it was made by a specific process, like injection molding, and the Commission disagreed.

[00:19:12] Speaker 05:
The Commission construed the claims as... In the ALJ?

[00:19:16] Speaker 05:
I'm sorry, the ALJ and the Commission affirmed the ALJ, found that the construction was a component made by or formed

[00:19:24] Speaker 04:
Uh, or I think maybe, maybe you're just skipping ahead of what the, I think, quite simple question that I was trying to ask.

[00:19:33] Speaker 04:
The claim construction was issued in, um, what June of 21, the order, the trial, the order was that the final, final preliminary order, whatever it's called, um, was not until November.

[00:19:49] Speaker 04:
So that the trial took place after.

[00:19:53] Speaker 04:
The announcement of the claim construction, is that right?

[00:19:56] Speaker 05:
I believe so, Your Honor.

[00:19:57] Speaker 04:
Oh, well, that's the incredibly simple point I was going to make.

[00:20:01] Speaker 05:
I'm sorry.

[00:20:02] Speaker 05:
I was confused about your question.

[00:20:03] Speaker 05:
But I believe the claim construction order came out, I can tell you.

[00:20:09] Speaker 03:
June 15, 2021.

[00:20:10] Speaker 03:
OK.

[00:20:10] Speaker 03:
And the construction of molding by Judge Cheney was at A66869, which is in the back of the blue brief.

[00:20:21] Speaker 05:
Yes.

[00:20:23] Speaker 05:
Okay, that was my procedural point.

[00:20:26] Speaker 05:
Yes, so that happened before the evidentiary hearing.

[00:20:30] Speaker 05:
And just responding to the point that they were not on notice of those arguments, of the infringement findings, they were definitely on notice of those arguments because they were raised at least at the evidentiary hearing.

[00:20:46] Speaker 05:
Moving on to the transparent

[00:20:52] Speaker 05:
limitation, the Commission correctly construed that term and properly resolved the parties' disputes in the context of infringement.

[00:21:05] Speaker 05:
I'd like to say about Miyahara, first of all, it's extrinsic evidence and it was not even raised before the Commission.

[00:21:11] Speaker 05:
We make that point in our brief.

[00:21:14] Speaker 05:
Regents' construction for transparent is very broad and is inconsistent with the intrinsic record.

[00:21:23] Speaker 05:
For example, you noted that the purpose of this invention and the present invention is described as extracting light effectively, and the transparent materials that are exemplified in the specification are all highly transmissive, like sapphire, diamond, and glass.

[00:21:42] Speaker 05:
And the patentee itself specifically stated during prosecution history of apparent application that transparent was not the same as allowing sunlight to pass through.

[00:22:00] Speaker 02:
So, Your Honor, you're well beyond your time, so we're going to have to move on.

[00:22:03] Speaker 02:
Mr. Brown?

[00:22:07] Speaker 01:
So, Your Honor, it's unbolded.

[00:22:09] Speaker 01:
The, as has been explained, the court construed the claim to require as, as if by a mold.

[00:22:17] Speaker 01:
There was then expert reports, there was pre-trial briefing, there was testimony at trial about whether in fact the accused products were made as if by a mold.

[00:22:27] Speaker 01:
The testimony from.

[00:22:28] Speaker 04:
And was there an argument made to the ALJ that it is enough that a

[00:22:37] Speaker 04:
portion of the surrounding material has the mold-like character even if other portions do not?

[00:22:46] Speaker 01:
There was not that argument made.

[00:22:48] Speaker 01:
The testimony presented by Regents expert on this issue begins at APX 3364 and the expert was asked

[00:22:57] Speaker 01:
whether it meets the construction as if by a mold, and he explained why.

[00:23:01] Speaker 01:
His testimony was the molding shape is consistent or constant along the length of the filament, and therefore we can say the yellow component is formed as if by a mold.

[00:23:14] Speaker 01:
So it's the opposite.

[00:23:15] Speaker 01:
The argument presented to the ALJ was that the shape was consistent along the entire length, not for a portion.

[00:23:22] Speaker 01:
The ALJ considered that testimony

[00:23:25] Speaker 01:
at APX 562 through 564.

[00:23:28] Speaker 01:
He considered the opposing testimony and he found it was evident that the shape was not consistent along the length.

[00:23:34] Speaker 01:
And he found that because it was not consistent along the length, it was not made as if by a mold.

[00:23:39] Speaker 01:
And he found it was undisputed that it was not molded.

[00:23:42] Speaker 01:
So that is sufficient by itself to affirm the result here.

[00:23:46] Speaker 01:
There was a factual finding supported by substantial evidence, and it's sufficient to dispose of the case.

[00:23:53] Speaker 01:
Your Honors, have any other questions

[00:23:55] Speaker 01:
Do you have any other questions for me to address?

[00:24:03] Speaker 01:
That's usually a hint.

[00:24:03] Speaker 02:
Sitting down.

[00:24:05] Speaker 02:
You'll catch on eventually.

[00:24:10] Speaker 00:
May it please the Court, Your Honors.

[00:24:13] Speaker 00:
To respond to the molding issue and the point that Judge Toronto is putting his finger on, the procedural issue was that the claim construction order

[00:24:22] Speaker 00:
construed the term molding to be made by or as if by a mold.

[00:24:26] Speaker 00:
What was not stated in that order was that the ALJ would, at the hearing, determine that random irregularities and uneven surfaces were incompatible with being formed as if by a mold.

[00:24:38] Speaker 00:
That's what we didn't have notice of until the hearing.

[00:24:41] Speaker 00:
And if we're going to take the dictionary definition that the ALJ's construction came from of

[00:24:47] Speaker 00:
molding butter.

[00:24:48] Speaker 00:
I mean all of us have experience with pats or sticks of butter and none of them are perfect and without imperfection.

[00:24:56] Speaker 03:
What did the other side's expert reports say about why the Q's products do not have the characteristics as if made by a mold?

[00:25:08] Speaker 00:
I don't have a perfect recollection.

[00:25:10] Speaker 00:
My recollection is that Dr. Shanfield relied extensively, if not entirely, on the manufacturing process, this globetop process that he believed nobody would call that a mold.

[00:25:21] Speaker 00:
How about Eden?

[00:25:23] Speaker 00:
At the moment, I'm not remembering what Professor Eden said about that.

[00:25:26] Speaker 00:
I apologize.

[00:25:28] Speaker 00:
So to counsel's comment about the Miyahara reference, as I pointed out, the Miyahara reference is intrinsic evidence.

[00:25:38] Speaker 00:
And this court, under the interactive gift express case, explained that in the context of claim construction, waiver has not been invoked to prevent a party from clarifying or defending the scope of its original construction.

[00:25:51] Speaker 00:
And that's all we're doing with the Miyahara reference, is pointing out how it is consistent with and supportive of our proposed construction of transparent.

[00:25:59] Speaker 00:
And if I may make one point on obviousness.

[00:26:02] Speaker 00:
The obviousness conclusion here cannot be sustained because there is not substantial evidence in the record, and the ALJ expressly found that the record is devoid of evidence of obviousness of the Sapphire growth substrate limitation.

[00:26:15] Speaker 00:
The only thing that the Commission's opinion pointed to as support, as substantial evidence for that limitation, was the intervener's pre-hearing brief.

[00:26:23] Speaker 03:
You didn't bring up the Sapphire growth substrate in your pre-hearing brief, is that right?

[00:26:28] Speaker 00:
That was not something that we intended to present rebuttal evidence at.

[00:26:30] Speaker 00:
Right.

[00:26:31] Speaker 03:
I guess I'm trying to understand what is the point of the pre-hearing brief, but to identify the issues you want to bring up during the actual trial.

[00:26:40] Speaker 00:
It can constrain.

[00:26:41] Speaker 03:
That the whole notion that the point of rules is to try to funnel down exactly what are the disputed issues.

[00:26:49] Speaker 00:
I agree that the pre-hearing brief can constrain what we can present in rebuttal at trial.

[00:26:54] Speaker 00:
It can't eliminate the presumption of validity, and it can't

[00:26:58] Speaker 00:
remove from the interveners their burden to prove.

[00:27:01] Speaker 03:
So if the claim had 80 limitations in it, and you disputed in the pre-hearing brief one of those 80 limitations as being met by the prior art, then is it fair for you, after the trial, to then say, well, I'm not satisfied that the other side put on enough of a case for the 79 other limitations?

[00:27:26] Speaker 03:
And what they needed to do was go line by line, dime by dime,

[00:27:31] Speaker 03:
and explain in a very comprehensive way why each of the other 79 limitations are actually taught by the prior art and one would be motivated to combine all of them from the prior art into a single claim.

[00:27:45] Speaker 03:
That seems a bit wasteful and the whole point of why the rules are set up to identify what are the actual disputed issues for debate and for resolution by the ALJ.

[00:28:00] Speaker 00:
The problem here is that Dr. Levy testified only that, with regard to the Sapphire growth substrate limitation and some other limitations, that the Yamazaki and Manano references invalidate all of the limitations of the claims.

[00:28:13] Speaker 00:
He provided no explanation of how those limitations are disclosed.

[00:28:16] Speaker 02:
I know that Judge Chen just asked you this question about this point, but I need, as a point of clarification, to make sure that I keep proceedings fair.

[00:28:25] Speaker 02:
Did you bring up this obviousness question in your opening argument today?

[00:28:30] Speaker 00:
I did not because I was short on time.

[00:28:32] Speaker 02:
Which also means they didn't get a chance to address it.

[00:28:35] Speaker 02:
So you don't get the opportunity and rebuttal to bring up a new argument that your opponents were prevented from addressing because you didn't bring it up first.

[00:28:43] Speaker 02:
So if it's with Judge Chen's permission, I'd like to move on.

[00:28:47] Speaker 02:
OK.

[00:28:50] Speaker 00:
That's all I have, Your Honor.

[00:28:51] Speaker 00:
I believe I'm over time.

[00:28:52] Speaker 02:
Thank you.

[00:28:52] Speaker 02:
I thank all the counsel.

[00:28:53] Speaker 02:
This case is taken under submission.