[00:00:00] Speaker 03: Our next case for argument is 23-1227, Platinum Optics Technology versus VIAVI Solutions. [00:00:11] Speaker 03: Mr. Sommer, please proceed when you're ready. [00:00:14] Speaker 00: Thank you, Your Honor. [00:00:14] Speaker 00: May it please the Court, Andrew Sommer, on behalf of Appellant Platinum Optics Technology, Inc. [00:00:22] Speaker 00: The Board erred when it determined that PTOT had failed to show that a material [00:00:29] Speaker 00: that was notoriously easy to fabricate, easy to deposit, and had a wide range of optical properties could not be adjusted to have the optical properties of the claims. [00:00:40] Speaker 00: And that is specifically the index of refraction and the extinction coefficient of the material. [00:00:46] Speaker 00: I want to address three issues. [00:00:47] Speaker 00: There are a number of other issues in the brief, but I'd like to focus my argument time first on the motion to dismiss for lack of standing. [00:00:55] Speaker 00: Second, on the lack of evidence supporting the board's finding of no expectation of success. [00:01:02] Speaker 00: And then third, on the board's improper obviousness analysis that charted the specific working examples of the prior art into a graph and then said, this is the tableau upon which we're going to determine the obviousness of these claims. [00:01:17] Speaker 00: First standing. [00:01:19] Speaker 00: PTOT has been sued four times on the 369 or related patents in the United States and abroad. [00:01:27] Speaker 00: It was sued on different versions of filters that it had manufactured over the years and supplied into supply chains in Asia. [00:01:35] Speaker 00: We continue, according to the declaration that we submitted in connection with our opening brief, to work in that same supply chain with those same customers to improve filters that do the exact same thing. [00:01:47] Speaker 00: They're bandpass filters. [00:01:49] Speaker 00: that are integrated into cameras. [00:01:51] Speaker 01: So just for myself, the problem is there's one really important sentence in the declaration you submitted. [00:02:01] Speaker 01: And it is lacking in any kind of detail about what the in-progress of development improved new generations of filters are to indicate that they will [00:02:19] Speaker 01: with a serious probability come within the claims as they've been asserted. [00:02:29] Speaker 01: It's very conclusory. [00:02:33] Speaker 00: I agree that the nature of the filters described in that are conclusory. [00:02:39] Speaker 00: It says we're continuing to develop, but I don't think that you can look at that in isolation. [00:02:43] Speaker 00: I think you need to look at that against the backdrop of what has happened here and whether there is going to be an ongoing dispute regarding future filters that are designed to do the same thing in the same supply chain to the same suppliers. [00:02:58] Speaker 01: We have been told... Right, but I mean, among the things that's not in that declaration is something that says our customers demand a particular functionality. [00:03:12] Speaker 01: That functionality essentially requires us to continue doing what we have been accused of doing for infringement. [00:03:23] Speaker 01: There's not necessarily a structured functionality correspondence without your asserting it and explaining it. [00:03:33] Speaker 00: So, Your Honor, to answer that question, I agree that's not in the declaration, but we didn't think we needed it given the allegation from the obby to our client that we cannot continue to supply under our supply agreements to these same customers filters that the patent is not something we can design around to continue business. [00:03:52] Speaker 00: And that's at appendix page 4498, where it says we expect PTO supply agreements with redacted customer require that PTO has one of two duties, either to mitigate [00:04:03] Speaker 00: the circumstances or design around. [00:04:05] Speaker 00: And then it goes on to say, we don't think you can design around our patents. [00:04:11] Speaker 00: We think that that is enough to fill the gap that you've identified in the declaration with respect to the details on the product. [00:04:18] Speaker 00: Given that we continue to do activity with these exact same customers, we've been told there's no way to design around these patents. [00:04:26] Speaker 00: And that we anticipate releasing new versions of these for new products in this same supply chain to the same customer to serve the same purpose. [00:04:33] Speaker 04: But how does the dismissal of prejudice work? [00:04:36] Speaker 04: And does it reflect upon those particular items? [00:04:41] Speaker 00: So that is a question in terms of how does the dismissal with prejudice work. [00:04:46] Speaker 00: So filter 25, which was in the second case, and then there were three different models. [00:04:51] Speaker 00: I can't remember all of them. [00:04:52] Speaker 00: 11246, I believe, was one of them. [00:04:55] Speaker 00: There would be a rejudicata effect of that judgment. [00:04:59] Speaker 00: Now, as we know, rejudicata is an affirmative defense. [00:05:02] Speaker 00: and something that if we get accused of selling a new version, we have to raise as an affirmative defense in our answer and then actually prove under this court's jurisprudence not two things. [00:05:15] Speaker 00: One is that it's the same patent or substantially the same allegation. [00:05:20] Speaker 00: But number two, that the product is substantially the same as the one that was litigated before. [00:05:26] Speaker 00: Forcing PTOT into a situation in which it is sued for the fifth time on these related patents and then have to assert a defense of raid judicata or issue preclusion based on a dismissal with prejudice seems to show that we actually do have an imminent potential dispute here over these new filters, which are expected to be released at the time of the declaration. [00:05:49] Speaker 00: It was 18 months, and it's been some time since then. [00:05:52] Speaker 01: So I'm noticing on the [00:05:54] Speaker 01: Appendix 4498 page, the letter in which we don't think [00:06:02] Speaker 01: non-infringing alternatives are available is not specific to this patent. [00:06:09] Speaker 01: It says, based on the broad and varying scope of the AVI's US patents claims, plural, we do not, plural with the patents as well as the claims, we do not believe the latter is possible. [00:06:24] Speaker 01: So that statement does not say, we don't think you can design around [00:06:30] Speaker 01: Whenever the patent is, it's an issue here. [00:06:35] Speaker 01: The 369. [00:06:37] Speaker 00: I agree that it does not specifically say the 369 in that sentence. [00:06:40] Speaker 00: I think if you read it in connection with all of the entirety of the letter and look at the allegations in each one of the complaints in which the 369 patent was asserted, that that does show [00:06:54] Speaker 00: that they believe the 369 patent to be infringed by each generation or each different group of these filters. [00:07:03] Speaker 04: And that's prior in time, though, to the dismissal, which includes the 369, correct? [00:07:09] Speaker 00: Those two lawsuits, yes, Your Honor. [00:07:12] Speaker 01: And the lawsuits as a whole were dismissed, or just the claims based on 369? [00:07:16] Speaker 00: Just the claims based on the 369. [00:07:18] Speaker 00: There have been a number of litigation developments that I'm [00:07:21] Speaker 00: not entirely familiar with. [00:07:23] Speaker 00: I know there was a partial grant of summary judgment, some amended pleadings. [00:07:26] Speaker 00: I believe one of the two cases remains pending, and one has been fully dismissed. [00:07:31] Speaker 00: And I don't remember the procedural disposition, quite frankly, of that particular case, whether that was fully with prejudice. [00:07:37] Speaker 00: I believe it was out. [00:07:39] Speaker 01: And that the US district court claims were dismissed after a resolution in Taiwan or an Asian court licensing settlement, right? [00:07:50] Speaker 00: So yeah, before any of the US litigations were brought, there were two suits, one in China and one in Taiwan, that resulted in a settlement agreement that had a date in it that says anything before this date, you're absolved. [00:08:04] Speaker 00: Anything after this date, you're at risk. [00:08:07] Speaker 00: I'm paraphrasing, obviously. [00:08:09] Speaker 00: I haven't seen the agreement in quite some time. [00:08:11] Speaker 01: You're at risk rather than you're licensed. [00:08:14] Speaker 00: There is no forward-looking license. [00:08:15] Speaker 00: So that sets this case apart from cases like that. [00:08:19] Speaker 01: Have we been told that? [00:08:26] Speaker 00: Perhaps not. [00:08:26] Speaker 00: I can't recall a sentence in any of the briefing where we said, there is no license. [00:08:31] Speaker 00: But I do think in distinguishing the Apple case, this would have come up. [00:08:34] Speaker 00: And the fact that we've had two complaints filed against us in the United States suggests that we are not licensed, including ongoing litigation for forward-looking acts that are alleged to be infringements. [00:08:50] Speaker 04: Was there any document that went along with the dismissal as to the 369? [00:08:56] Speaker 04: I know we have the one page document. [00:08:58] Speaker 04: It's notice of voluntary dismissal. [00:09:00] Speaker 04: But was there any type of agreement that was associated with that that explained what happened going forward? [00:09:06] Speaker 00: No, there was not. [00:09:09] Speaker 00: In the district court litigation, there was an argument. [00:09:13] Speaker 00: We saw a state pending IPR. [00:09:15] Speaker 00: There were actually at the time three IPRs pending. [00:09:17] Speaker 00: Two did not get instituted. [00:09:20] Speaker 00: And in a footnote, the obby had made a representation to the court that if the 369 does get instituted, we will withdraw it with prejudice from the case. [00:09:30] Speaker 00: And the court held it to its promise. [00:09:32] Speaker 00: So that's really how that particular dismissal came to play. [00:09:37] Speaker 03: Do you want to move on to your no expectation of success argument? [00:09:40] Speaker 00: Yes, Your Honor. [00:09:41] Speaker 00: Thank you. [00:09:42] Speaker 00: So the prior art of record shows that [00:09:45] Speaker 00: The hydrogenated silicon material is easy to fabricate. [00:09:49] Speaker 00: It had a number of superlatives and a variety of different articles about this material. [00:09:56] Speaker 00: And one of the advantages of it was not only does it have a high refractive index, but it has a wide range of optical properties. [00:10:04] Speaker 00: And that's the Martin article that you can find in 26. [00:10:08] Speaker 00: I think this quote comes from 2675 of the appendix. [00:10:12] Speaker 00: But there are entire books written about this particular material. [00:10:16] Speaker 00: 3199 of the appendix is the cover page. [00:10:19] Speaker 00: And then following that are some other pages about hydrogenated amorphous silicon alloy deposition processes, this entire book. [00:10:28] Speaker 00: The board said there would be no expectation of success. [00:10:32] Speaker 00: And in the board's decision, the reason that it articulated for a lack of expectation of success was [00:10:40] Speaker 00: that Mr. Willie, our expert, who had 60 years of experience depositing thin films, he believed that it would take up to 100 experiments that could take months. [00:10:53] Speaker 00: And I think the board made a fact finding that it could take up to six months to do that. [00:10:58] Speaker 00: And under this court's decision in Pfizer v Apotex, that is not enough to support a finding of no expectation of success. [00:11:08] Speaker 00: In fact, uniformly, the prior art shows that you can adjust the hydrogen content of this material to change its optical properties. [00:11:17] Speaker 00: Yes, both refractive index and extinction coefficient decrease. [00:11:23] Speaker 00: But that leads me to the second board error. [00:11:26] Speaker 00: If you look at each of the examples on the plot of gibbons and say, well, they all generally behave the same. [00:11:31] Speaker 00: Here they are. [00:11:32] Speaker 00: They're all high extinction coefficient products or examples. [00:11:37] Speaker 00: And if you try to drop that, you're going to drop index of refraction. [00:11:41] Speaker 00: Well, that assumes that you're going to drop these points straight down. [00:11:45] Speaker 00: And that's not how this works. [00:11:47] Speaker 00: If you look at the patent, at column five, lines 35 and 45, they discuss two of the figures. [00:11:55] Speaker 00: Extinction coefficient varies at what they call the band edge, where the curves start to go up faster, much more quickly than the extinction coefficient. [00:12:05] Speaker 00: In fact, if you look at the graphs that the board relied on, there's a very flat line that goes way out in past 1,650, 1,700 nanometers, and it remains above three. [00:12:16] Speaker 00: The index of refraction is not nearly as sensitive to changes in the extinction coefficient. [00:12:25] Speaker 00: So that's really not this impediment that the board found when it looked at this prior art and said, well, we're going to take these data points, and if you try to drop any of those down, [00:12:33] Speaker 00: You never know what you're going to get with the refractive index. [00:12:36] Speaker 00: I think a person of ordinary skill in the art, based on the record, would have realized that, yes, they need to do some experimentation. [00:12:44] Speaker 00: They may. [00:12:44] Speaker 00: And the board's finding, which we do not contest on appeal, is that you may have to do 100 experiments to come up with the material. [00:12:51] Speaker 00: It may take months. [00:12:53] Speaker 00: But that is not no expectation of success. [00:12:56] Speaker 00: And so with that, we think that the board's finding is not supported by substantial evidence that there would be no expectation of success. [00:13:04] Speaker 00: It never made the finding that there was no reasonable expectation of success because it found no success at all. [00:13:10] Speaker 00: It never engaged in, well, is this reasonable or unreasonable under these circumstances. [00:13:16] Speaker 03: Well, I mean, isn't that what we should infer there? [00:13:20] Speaker 03: A finding actually was that there's no reasonable expectation of success, given that it will take up to six months and maybe 100 iterations. [00:13:28] Speaker 03: I mean, doesn't that translate into, therefore, we don't think it's reasonable? [00:13:32] Speaker 03: I mean, granted, they didn't say it that way. [00:13:33] Speaker 03: But how else would I interpret their? [00:13:36] Speaker 00: Well, I think we're stuck with what they wrote. [00:13:37] Speaker 00: They said there would be no expectation of success, which was exactly the finding that this court reviewed in Pfizer v. Apotex and reversed. [00:13:45] Speaker 03: Do you think I should understand their opinion [00:13:48] Speaker 03: when it says could take up to six months and maybe 100 different tests to mean even after all that there's no expectation of success or is that? [00:13:57] Speaker 00: Sure, like because I think the law is such that in viewing obviousness both motivation and reasonable expectation of success you're asking what the person of ordinary skill in the art without the benefit of the invention would have known a priori. [00:14:11] Speaker 00: Would they have even charted this course? [00:14:13] Speaker 00: Is there something that tells them, I'm not going to be successful? [00:14:16] Speaker 00: And if you looked at some of the cases that the obvious side, like OSI, the in vivo tests were 99.5% ineffective. [00:14:23] Speaker 00: So would this have been a particularly good composition to put into humans? [00:14:27] Speaker 00: No. [00:14:28] Speaker 00: The prior tells you you're not likely to succeed in doing this. [00:14:32] Speaker 00: In this case, we don't have that. [00:14:33] Speaker 00: We actually have the records showing. [00:14:34] Speaker 03: I have to say, as I read the board opinion on this point, it felt more like they were [00:14:39] Speaker 03: making a determination on undue experimentation than it did their making on the expectation of success. [00:14:45] Speaker 00: Perhaps, and there is some language that alludes to enablement of the prior art or whether the combination is enablement in the opinion, but I think we both agree now that the board never really made an enablement finding. [00:14:57] Speaker 00: We felt we needed to appeal that because we didn't want to have somebody pointing to that and saying, well, they didn't appeal that issue and it's been waived and therefore you should affirm on it. [00:15:05] Speaker 00: But I think both parties now agree that whatever the board set on enablement is not really a finding And with that I will reserve my four seconds of rebuttal. [00:15:15] Speaker 03: I'll restore your vote. [00:15:16] Speaker 03: Thank you Miss Woodworth, please proceed Thank you Good morning, and may it please the court I [00:15:30] Speaker 02: I'd also like to start with the standing issue to explain why this court should actually dismiss the appeal for lack of jurisdiction. [00:15:37] Speaker 02: And then we'll also move into the merits of the appeal should the court reach on and explain why substantial evidence does support the board finding that PTOT did not meet its burden to show obviousness of the challenge 369 patent claims. [00:15:54] Speaker 02: So turning first to standing, and I think Judge Toronto, you've hit a lot of the key points already. [00:16:00] Speaker 02: In order to have standing, it's PTOT's burden to show that they have a concrete and particularized injury. [00:16:07] Speaker 02: And they cannot do that and have not done that here. [00:16:11] Speaker 02: It's currently not an actual threat because of the dismissal that we've talked about with prejudice on the 369 patent. [00:16:18] Speaker 02: So all of their current products have no threat of infringement. [00:16:22] Speaker 02: nor do any products that are going to be essentially the same. [00:16:25] Speaker 02: That's what a dismissal with prejudice provides. [00:16:29] Speaker 02: So what they needed to show was that there is a future product that is imminent that is not essentially the same as their current products, but for which there is a threat of infringement. [00:16:42] Speaker 02: And they have simply failed to do that. [00:16:44] Speaker 03: When Mr. Summer pointed to 4498, this document [00:16:50] Speaker 03: Is this prior to or after the dismissal? [00:16:54] Speaker 03: Is this the settlement agreement which resulted in the dismissal? [00:16:58] Speaker 03: How does this document relate to the dismissal? [00:17:01] Speaker 02: This document was actually a warning letter that was sent in advance of the US litigation. [00:17:06] Speaker 02: You can see that it starts by talking about what happened in the foreign litigations. [00:17:11] Speaker 02: And it talks about April 30, 2020. [00:17:14] Speaker 02: So this is over four years ago. [00:17:16] Speaker 02: That was the date that Mr. Sommer alluded to in terms of after this date, any of your activity is not released. [00:17:24] Speaker 02: And so that's where the letter begins. [00:17:26] Speaker 02: It then says, we have understood that you are still continuing to practice these patents or our patents, and in fact, that this is occurring in the United States. [00:17:37] Speaker 02: We therefore ask you to confirm if our understanding is incorrect, or we're going to need to take legal action. [00:17:43] Speaker 02: So this letter happened before the US cases were even filed, so certainly well before the dismissal of prejudice. [00:17:50] Speaker 01: But after the dismissal, after the settlement of the Taiwan and Chinese litigation. [00:17:55] Speaker 02: But after the settlement of the Asian litigations. [00:17:58] Speaker 02: That's correct. [00:17:59] Speaker 04: settlement of the Asian litigation. [00:18:01] Speaker 04: Then you have the warning letter. [00:18:02] Speaker 04: Then you have the settlement in the California cases. [00:18:05] Speaker 04: Is that correct? [00:18:05] Speaker 02: It's not a settlement, but that's what initiated. [00:18:08] Speaker 02: After we did not receive our response to this warning letter, that's when we initiated the US litigation. [00:18:13] Speaker 04: And again, it's a dismissal as to the claim, but there is no other document that's associated with it? [00:18:20] Speaker 02: That's correct. [00:18:21] Speaker 02: We did the dismissal with prejudice procedurally because the judge had granted a stay of the litigation. [00:18:28] Speaker 02: pending any IPRs. [00:18:31] Speaker 02: He actually granted it before they were instituted. [00:18:33] Speaker 02: After two of the IPRs were not instituted and one was, we had agreed that in order to go forward and move forward with the US litigation, that we would dismiss the 369 patent entirely with prejudice. [00:18:47] Speaker 02: And so on that record, again, there's no current threat of infringement. [00:18:52] Speaker 02: And they have not shown the specificity that's required [00:18:56] Speaker 02: under this court's precedent. [00:18:58] Speaker 02: And I would actually direct you to the JTect case, or Apple v. Qualcomm, both of those. [00:19:04] Speaker 02: But JTect in particular, the issue there was that the parties were competitors. [00:19:11] Speaker 02: The patent challenger was starting to develop products that they thought there would be a threat of infringement. [00:19:18] Speaker 02: But there was no final design of a future product. [00:19:21] Speaker 02: And because of that, how could the court assess whether there was a risk of infringement? [00:19:27] Speaker 02: This is what the court said. [00:19:29] Speaker 02: Quote, no product is yet finalized. [00:19:33] Speaker 02: Therefore, we conclude that JTECT has not established that at this stage of the development, that its product creates a concrete and substantial risk of infringement [00:19:45] Speaker 02: or will likely lead to claims of infringement. [00:19:47] Speaker 03: That is a very case-specific statement. [00:19:49] Speaker 03: It is made in the context of a scenario where they're saying, you don't have a product yet, so we can't determine whether there's a concrete injury. [00:20:00] Speaker 03: But what Mr. Summer points to here is the 4498 language. [00:20:04] Speaker 03: I mean, a case can't stand for the proposition that when you're in the process of designing a product but you haven't finished designing, you can never have a concrete. [00:20:11] Speaker 02: injury just can't stand for that that's what you're arguing you're doing it stands for this absolute extremely broad proposition I think that there could have been more detail along the lines of what judge Toronto is alluding to to show that you do have you have to have a concrete and particular eyes injury you have to be able to show that that threat is imminent and that it's specific to the 369 pat but but the reason I'm pushing back is because I think you're asking for way too broad [00:20:40] Speaker 03: ruling on a legal issue that you probably don't even necessarily need to prevail, but I will not agree with. [00:20:47] Speaker 03: So I think you should pivot. [00:20:48] Speaker 03: But 4520, which is where the declaration is, says we are trying to develop additional bandpass filters that are going to fill [00:21:00] Speaker 03: this Asian supply chain, right? [00:21:01] Speaker 03: So there's particular functionality. [00:21:04] Speaker 03: There's a supply chain. [00:21:04] Speaker 03: We need to fill it. [00:21:05] Speaker 03: We're going to develop more filters to fill that supply chain. [00:21:09] Speaker 03: Then you have a letter, 4498. [00:21:10] Speaker 03: Now suppose this letter, 4498, wasn't earlier in time. [00:21:15] Speaker 03: And suppose it was much later in time. [00:21:17] Speaker 03: And suppose instead of saying, based on the broad and varying scope of the VIV's US patent claims, which includes more than 369, we don't think you can sign around. [00:21:30] Speaker 03: Like, basically, if I were to read this letter as concluding that it's based only on the claims of the 369 and them saying, you can't fulfill the supply chain over here with anything that won't infringe our patent, I don't think they need a particular product at that point. [00:21:46] Speaker 03: I don't think they need a specific design. [00:21:48] Speaker 03: I think that they would satisfy the concrete injury because they're trying to fulfill a particular demand. [00:21:53] Speaker 03: I mean, with all due respect to all the parties, these filters are not that complicated. [00:21:58] Speaker 02: That would be a much closer case. [00:22:00] Speaker 02: I agree with you. [00:22:01] Speaker 02: There, there would be particularized evidence that would show that there's going to be a threat. [00:22:06] Speaker 02: But here, we don't have any of the details. [00:22:09] Speaker 02: They haven't told us what any of the materials are that they're working on. [00:22:13] Speaker 02: They haven't told us that it's going to be hydrogenated silicon, for example. [00:22:17] Speaker 02: Every one of the 369 patent claims requires hydrogenated silicon. [00:22:22] Speaker 02: It requires it to have two particular optical characteristics that the IPRs is focused on. [00:22:28] Speaker 02: in a particular wavelength range, 800 to 1,100 nanometers. [00:22:33] Speaker 02: And it requires a very specific center wavelength shift. [00:22:36] Speaker 02: Those are the type of details that we would need PTOT to have supplied to say this is the type of product that we are aiming at. [00:22:45] Speaker 02: And we have absolutely none of that here. [00:22:47] Speaker 03: Is it possible to have new models, the bandpass filters, that will satisfy the existing customer demands that don't meet those criteria or characteristics? [00:22:58] Speaker 02: We certainly, I mean, to be honest, PTOT has non-impringement positions in the litigation. [00:23:04] Speaker 02: So certainly, they believe that there are. [00:23:06] Speaker 02: And others have as well. [00:23:08] Speaker 02: Actually, the 369 patent has been enforced against PTOT. [00:23:13] Speaker 02: But we have had other US litigation against competitors where it was not enforced because of the specifics of their filters. [00:23:22] Speaker 02: So I don't know if anybody has looked at whether or not it would meet [00:23:25] Speaker 02: the particular requirements, but certainly there have been competitors. [00:23:28] Speaker 02: There have been litigation that did not involve the 369 patent because of its claims, because they're different. [00:23:35] Speaker 02: That's exactly the point that we're getting at in our letter. [00:23:37] Speaker 02: They're varied. [00:23:38] Speaker 02: They're different among the portfolio. [00:23:43] Speaker 02: And so again, this is PTOT's burden, and they have failed to meet it. [00:23:49] Speaker 02: Are there any further questions? [00:23:53] Speaker 02: I'll move on as well then. [00:23:56] Speaker 02: Substantial evidence does support the board's finding that PCOT did not meet its burden to establish obviousness based on the four-way combination of Pilgrim, Gibbons, Larson, and Yoda. [00:24:09] Speaker 02: Council began with the proposition of just how well-known the hydrogenated silicon material is. [00:24:19] Speaker 02: I believe it was notoriously easy to fabricate. [00:24:22] Speaker 02: He went through several articles, none of which [00:24:25] Speaker 02: the IPR references, as well as a book to describe just how well-known this material is. [00:24:32] Speaker 02: But yet PTO concedes, as it must, there is not a single prior art reference that teaches hydrogenated silicon having the two claimed characteristics in VIAVI's patent claim that's being challenged. [00:24:48] Speaker 02: Not a single one. [00:24:50] Speaker 01: VIAVI was the first. [00:24:51] Speaker 01: Across the full claimed range. [00:24:53] Speaker 02: Exactly. [00:24:54] Speaker 02: The claim range is in the claim. [00:24:55] Speaker 02: And across that range, there's not a single reference that teaches that. [00:24:59] Speaker 02: But then moving on to obviousness for the support, I would direct the court's attention to appendix pages 3862 to 3900. [00:25:10] Speaker 02: This is the declaration that VIAVI submitted of its expert, Dr. Clemens, and he spends 38 pages walking through the references explaining why they neither teach nor suggest the claimed properties of hydrogenated silicon, why a person of ordinary skill in the art would not be motivated based on any of these teachings to arrive at the claimed invention, nor have a reasonable expectation of success that they would do so. [00:25:37] Speaker 02: both Pilgrim and Gibbons, which are the two primary references that PTOT relies on. [00:25:43] Speaker 02: Mr. Summer talked about how none of the K value, the K value is not reached, the extinction coefficient. [00:25:50] Speaker 02: And he said, well, anyone would know, a person of ordinary skill in the art would know, all you need to do is adjust [00:25:54] Speaker 02: the H value or the hydrogen in there in order to reach the property for the K value. [00:26:01] Speaker 02: But he has to admit, and he has, that that negatively impacts the N value. [00:26:06] Speaker 02: It drives it down. [00:26:08] Speaker 02: And it's undisputed that both Pilgrim and Gibbons would direct a person of ordinary skill in the art to maintain that N value as high as possible. [00:26:19] Speaker 02: So there's no motivation, there's no reason [00:26:22] Speaker 02: to try and add hydrogen to drag down. [00:26:25] Speaker 02: What did the board exactly find with regard to expectation of success? [00:26:37] Speaker 02: I think it found several things. [00:26:38] Speaker 02: It obviously found, as I've already alluded to, or as I've already said, that none of the references teach the combination of the two claimed characteristics. [00:26:49] Speaker 02: And it says over and over again, it relies on the fact that those are counterproductive. [00:26:54] Speaker 02: So getting one to the lower level that you want is going to decrease the other, and it might take it out of the claimed range. [00:27:02] Speaker 02: So that was a big part of their factual findings, which is acknowledged by their expert and acknowledged here by counsel on appeal. [00:27:10] Speaker 02: So I think that that's one of the most important factual findings that they made. [00:27:14] Speaker 03: Where did they make that finding? [00:27:16] Speaker 02: Do you remember? [00:27:19] Speaker 02: They refer to the word counterproductive. [00:27:21] Speaker 02: So appendix page 35 and 36. [00:27:25] Speaker 02: So at 34, they say the specific combination had not been achieved. [00:27:37] Speaker 02: They also say just before that, that at the time the inventors were working, that [00:27:41] Speaker 02: that our two objectives. [00:27:44] Speaker 01: On the specific point, if you look at the six lines on page 34, the beginning of the at the time of the invention, is that the point? [00:27:54] Speaker 01: The inventors were thus faced with a situation in which their objectives of relatively high refractive index, that's your n, and relatively low extinction coefficient, k, were in tension. [00:28:07] Speaker 01: And that's because the hydrogen works at cross purposes. [00:28:11] Speaker 02: That's exactly right. [00:28:12] Speaker 02: And that's the point that I'm making, which they then said later on that page that no specific reference teaches that specific combination. [00:28:20] Speaker 02: They then again, going on to 35 towards the bottom, explain how these are not the n and k values are not just parameters to adjust. [00:28:33] Speaker 02: They're actually the resulting characteristics once you change parameters in the manufacturing process. [00:28:41] Speaker 02: And again, they say that those are counterproductive. [00:28:44] Speaker 01: So what do you make of all of the testimony, which I think the subject of some discussion by Mr. Sommer about the amount of experimentation, and I don't mean anything technical by that word, but the amount of experimentation that would be required to find the sweet spot where the N and the K are both OK. [00:29:14] Speaker 02: I think the experts were actually quite consistent here. [00:29:20] Speaker 02: PTOT's expert admitted, and this is at Appendix 4117, this is with respect to the process that he was suggesting a person of ordinary skill in the art would follow. [00:29:32] Speaker 02: He says, there's a fair amount of guesswork in these initial stages as to what may or may not work. [00:29:40] Speaker 02: He also says, and this is at Appendix 4126, [00:29:43] Speaker 02: He agrees that there's not real predictability on the different sputtering processes as far as what refractive index and extinction coefficients that we'll get. [00:29:55] Speaker 01: And then specific to the two references that PTO... What's being varied in the various experiments? [00:30:03] Speaker 02: What he says that you would vary is largely hydrogen. [00:30:06] Speaker 02: the hydrogen content, which would be the hydrogen flow rate. [00:30:09] Speaker 02: But PTOT has admitted. [00:30:11] Speaker 01: So the amount of hydrogen is going to be in the plasma or something that the knocked off particles are going to. [00:30:18] Speaker 01: go through and pick up before they land on the substrate. [00:30:21] Speaker 02: You got it. [00:30:22] Speaker 02: That's exactly right. [00:30:23] Speaker 02: But PTOT is not as it disclosed the specific amounts of hydrogen that would have what impact? [00:30:29] Speaker 02: That's a great question and absolutely not. [00:30:32] Speaker 02: That's one of the things that our experts said over and over again is completely lacking in these references. [00:30:38] Speaker 02: There's absolutely no teaching as to Gibbons and Larson as to how much hydrogen they use to even create their films. [00:30:48] Speaker 02: So our expert explained, you can't even recreate their films, let alone know how to improve upon them. [00:30:54] Speaker 02: That's also at appendix pages 4117, where their expert acknowledged this. [00:31:00] Speaker 02: Gibbons does not say what energy level to use. [00:31:03] Speaker 02: Gibbons does not provide any guidance on the sputtering parameters. [00:31:06] Speaker 02: Gibbons does not provide guidance on what level of hydrogen to use. [00:31:11] Speaker 02: And in light of all this, at appendix 4126, [00:31:17] Speaker 02: Their expert, Mr. Wiley, admits the Gibbons and Larson papers do not, quote, have enough detail to decide without experimentation what you might get. [00:31:29] Speaker 03: So this is not a simple, this is not a- Again, that last thing isn't no reasonable expectation of success. [00:31:35] Speaker 03: I mean, don't you agree that a reasonable expectation of success could be satisfied despite the need for some experimentation? [00:31:42] Speaker 02: Yes, and counsel relies on the Pfizer case, for example. [00:31:46] Speaker 02: And to turn to that, I think that that case is a good example. [00:31:51] Speaker 02: But this case is just so very different from it. [00:31:54] Speaker 02: In Pfizer, the court acknowledged that the prior art did not only just disclose the compound, it disclosed specifically how you would make it. [00:32:05] Speaker 02: That's what's missing here, the parameters of how to do it, what to change. [00:32:10] Speaker 02: All of that was known and disclosed in the prior art. [00:32:13] Speaker 02: One other key point. [00:32:15] Speaker 02: The Pfizer court said, this is not a case where there are numerous parameters to try. [00:32:20] Speaker 02: But this case is. [00:32:23] Speaker 02: You have all these different levers. [00:32:25] Speaker 02: You've got the hydrogen. [00:32:26] Speaker 02: You've got the substrate temperature. [00:32:27] Speaker 02: You've got the flow rate. [00:32:29] Speaker 02: You have at least four. [00:32:30] Speaker 02: I can add to that the sputtering, whether you're sputtering or depositing. [00:32:35] Speaker 02: I mean, there's different ways of making this. [00:32:37] Speaker 02: There's many more than even four. [00:32:39] Speaker 02: But giving PTOT the four key ones that they've focused on, that's too many parameters. [00:32:45] Speaker 02: And not only that, again, the key, the claimed invention is about two characteristics that will result from those parameters that are going to have differing impacts. [00:32:58] Speaker 02: Well, they both are going to go up. [00:33:00] Speaker 02: For hydrogen, for example, we don't know how much. [00:33:02] Speaker 02: That's not provided in the prior art. [00:33:05] Speaker 02: But the claim says one of them needs to be up and one of them needs to be down. [00:33:09] Speaker 02: So how do we get there? [00:33:11] Speaker 02: We don't know. [00:33:12] Speaker 02: We don't have guidance. [00:33:14] Speaker 02: We're going to have to do at least 100 experiments. [00:33:17] Speaker 02: And then to get back to your question about success, Mr. Wiley, their expert, then said, even at the end of all that, you might not be in the right place, and you might have to start all over. [00:33:27] Speaker 02: He admitted that the references do not provide the guidance that you need, that there is a lot of guesswork involved. [00:33:35] Speaker 02: None of the references that are in the IPR and none of the others that Mr. Sommer alluded to have ever achieved. [00:33:42] Speaker 02: the claimed result before the inventors did. [00:33:45] Speaker 03: OK. [00:33:46] Speaker 03: Thank you, Ms. [00:33:47] Speaker 03: Woodworth. [00:33:48] Speaker 03: Mr. Woodworth, I'll restore your five minutes of rebuttal time. [00:33:55] Speaker 00: So going back to a question that Judge Taranto asked when I was up here about where in the record is there some evidence of this license in its term. [00:34:04] Speaker 01: Appendix page. [00:34:05] Speaker 01: From the Asian litigation? [00:34:06] Speaker 00: Yes, from the Asian litigation. [00:34:07] Speaker 00: In Appendix 4502, there's reference to it in Viabi's complaint. [00:34:14] Speaker 00: I believe this is the second filed complaint on paragraph 11. [00:34:18] Speaker 00: Just to provide that for your honor, it's the last sentence of that paragraph. [00:34:28] Speaker 00: So I want to touch on just one point on the standing issue, unless your honors have further questions based on Ms. [00:34:34] Speaker 00: Woodworth's presentation. [00:34:36] Speaker 00: But that is that there is a rationale for not asserting the 369 patent in some cases that are not of record. [00:34:42] Speaker 00: We are unaware of what that rationale is. [00:34:44] Speaker 00: She's saying it's because there are products out there that don't practice those claims. [00:34:47] Speaker 00: But as far as I know, it could have been because the patent was being challenged in IPR. [00:34:52] Speaker 04: uh... so i i don't know that there's any evidence in the record to support that that conclusion i have a question about any activities subsequent to the withdrawal or that dismissal of that claim has there been any uh... letter writing campaign anything uh... that would approach a level of concern in terms of uh... your adversary coming towards you and seeking to uh... protect its patent or have things been silenced because of course we're looking at the state of affairs [00:35:20] Speaker 00: So in terms of whether there's been allegations against these products under development? [00:35:25] Speaker 04: Yes. [00:35:25] Speaker 00: There have not been. [00:35:26] Speaker 00: OK. [00:35:27] Speaker 00: Because they're not in the market yet. [00:35:29] Speaker 00: I don't think that there's anything that they could possibly accuse. [00:35:31] Speaker 04: There's nothing in the record that indicates anything regarding that. [00:35:33] Speaker 00: That's correct, Your Honor. [00:35:34] Speaker 00: Very well. [00:35:35] Speaker 00: In terms of this argument that the person of ordinary skill in the art would have been kind of put out to sea and left to pick all of these different variables, and that there's a chance that even after 100 experiments, you might need to start over, reasonable expectation of success does not require an absolute possibility or expectation of success. [00:35:56] Speaker 00: It doesn't have to be absolute. [00:35:58] Speaker 00: So it's possible [00:35:59] Speaker 00: You may need to start over, but there's no finding about how likely that is or whether that's unreasonable under these particular circumstances. [00:36:10] Speaker 00: In terms of the parameters that are at issue, giving us before, I believe, was the comment [00:36:17] Speaker 00: that that's just too many. [00:36:20] Speaker 00: This material was highly researched. [00:36:22] Speaker 00: At page 24 of our reply brief, we have a table summarizing kind of the key performance values used in the manufacturing process for hydrogenated silicon that the references generally gravitate toward and show that hydrogen content, deposition rate, gas pressure, and substrate temperature were known to be the key drivers. [00:36:44] Speaker 00: And everyone knew in the art, and I believe our references all unanimously show, it's the hydrogen bonding that leads to the change of N and K. And these references talk about how you go about manipulating the hydrogen bonding and what types of parameters you use. [00:36:59] Speaker 00: Same thing with the textbook. [00:37:01] Speaker 00: The obvious counsel points to Dr. Clemens' testimony. [00:37:04] Speaker 00: But you'll remember a passage from the board's decision that we challenged the admissibility of his testimony because he was given only the references that were the basis of the challenge. [00:37:13] Speaker 00: He didn't look beyond those references. [00:37:15] Speaker 00: And we know from this court's jurisprudence that reasonable expectation of success, like motivation to combine, doesn't need to be strictly found in the references. [00:37:24] Speaker 00: It can be found in the knowledge of a person of ordinary skill in the art. [00:37:27] Speaker 00: It can be found in other literature that's not the basis for the grounds in the IPR petition. [00:37:33] Speaker 00: And we submit that that's what the record shows here. [00:37:35] Speaker 00: So unless your honors have any questions. [00:37:38] Speaker 03: OK, I thank both counsel for their argument. [00:37:40] Speaker 03: Both counsel was incredibly well-prepared and helps the court in understanding this case. [00:37:45] Speaker 03: Thank you. [00:37:47] Speaker 03: For the record, my clerks just texted me, this is the best oral argument I've seen since I've been here. [00:37:53] Speaker 03: Sorry for whoever comes next.