[00:00:00] Speaker 02:
And that leads us to our final case for this morning, number 23, 22, 11.

[00:00:05] Speaker 02:
Singray, Inc.

[00:00:06] Speaker 02:
versus Carl Zeiss, X-ray, my cross-clicky.

[00:00:12] Speaker 02:
OK, Mr. Lacker.

[00:00:14] Speaker 04:
May it please the court.

[00:00:16] Speaker 04:
The only issue in dispute in this appeal is whether the Jorgensen reference inherently discloses a magnification of the projection x-ray stage between one and 10 times.

[00:00:31] Speaker 04:
The patent refers to that magnification as projection magnification, geometrical magnification, or geometric magnification.

[00:00:41] Speaker 04:
That's acknowledged in the red brief, for example.

[00:00:44] Speaker 02:
So we gave you the Smith-Kline case.

[00:00:46] Speaker 02:
Absolutely.

[00:00:47] Speaker 02:
It suggests that a compound is infringed because the claim covers even trace amounts, undetectable trace amounts of the compound.

[00:01:00] Speaker 02:
And why isn't that similar here, that the x-rays are necessarily slightly divergent, which is conceded?

[00:01:09] Speaker 02:
And as a result of that slight divergence, this undetectable magnification, isn't that exactly the same thing which led the court in Smith Klein to find invulnerability?

[00:01:22] Speaker 04:
Yes, Your Honor.

[00:01:23] Speaker 04:
That is exactly the same situation here.

[00:01:25] Speaker 04:
The prior art reference inherently has

[00:01:28] Speaker 04:
some trace amount of geometric, also called projection magnification, even after the beam in Jorgensen.

[00:01:35] Speaker 00:
So what led the board in your view to go off the rails here?

[00:01:43] Speaker 00:
The board didn't disagree with that, did it?

[00:01:46] Speaker 00:
Do you think that the answer is that they recast the claims from 1 to 10 to say it's something less than that?

[00:01:53] Speaker 00:
I mean, what's your theory of, I know your theory is not that we didn't lawyer it well enough to win, but I assume you made the same compelling arguments there that you made here.

[00:02:05] Speaker 00:
Why did the board do what it did?

[00:02:08] Speaker 04:
Very good question, Your Honor.

[00:02:09] Speaker 04:
I believe there were a few issues.

[00:02:12] Speaker 04:
I believe the board became distracted with disputes about the calculation as to the exact amount of divergence in the prior art that remained either before or after the collimation, and changed then the focus from the binary question of whether there is any divergence to exactly how much, who presented the right formula, the right calculation.

[00:02:35] Speaker 04:
And that's an incorrect analysis here.

[00:02:37] Speaker 02:
Well, they seem to say that undetectable amount doesn't count, but of course, nobody

[00:02:42] Speaker 02:
showed them the Smith-Kline case.

[00:02:45] Speaker 04:
I agree with your honor.

[00:02:46] Speaker 04:
I believe the board also paid unnecessary focus on language about the intent of the divergence, whether divergence within the Jorgensen reference

[00:03:03] Speaker 04:
was intended to provide some function.

[00:03:06] Speaker 04:
So instead of simply looking at the presence, it was looked at as far as whether it was accomplishing.

[00:03:15] Speaker 04:
It was a word that was given a lot of focus, whether the projection in Jorgensen accomplishes.

[00:03:20] Speaker 01:
And then the language that caught my eye the most was the use of the word enough divergence needed.

[00:03:27] Speaker 04:
Correct, your honor.

[00:03:29] Speaker 04:
There, it seems that there may have also been some lack of focus on what the projection magnification is.

[00:03:37] Speaker 04:
The patent owner had pointed to the output of the detector within systems and argued that if the divergence within Jorgensen is so small that it does not change the output of the detector from what the output would have been at exactly 1x, which is a physical impossibility,

[00:03:56] Speaker 04:
that effectively you can round down and treat it as if you have precisely 1x because the projection magnification did not create a different output.

[00:04:06] Speaker 04:
The patent makes clear, however, that projection magnification is something that exists before a detector is ever involved.

[00:04:15] Speaker 04:
It exists as a matter of physics.

[00:04:18] Speaker 04:
As the beam passes through space, projection magnification occurs in shadow puppets on a wall or projection slides on a slide projector.

[00:04:30] Speaker 04:
Whether there is a detector or the resolution of the detector is irrelevant to whether there is projection magnification.

[00:04:39] Speaker 04:
And so I think the board may have

[00:04:42] Speaker 04:
changed the claim limitation to require a projection magnification so high that it created a different output from the detector.

[00:04:52] Speaker 04:
And under the Smith-Klein case, that would improperly read out claim scope

[00:04:58] Speaker 04:
of some, even if infinitesimally larger than 1x, some still existing, impossible to completely remove type of projection magnification.

[00:05:09] Speaker 00:
But your claim is that it inherently includes the 1 to 10 in the claims.

[00:05:14] Speaker 04:
Yes, Your Honor.

[00:05:15] Speaker 04:
The language here is between 1 and 10 times, so between 1x and 10x.

[00:05:21] Speaker 04:
And we've pointed to this Court's decisions confirming that when numeric ranges are recited in claims, that they include the endpoints.

[00:05:31] Speaker 04:
Here, it does not seem to be a genuine dispute.

[00:05:33] Speaker 04:
It's impossible to achieve that actual end point of precisely 1x.

[00:05:38] Speaker 04:
But the case law confirming that the end point is included in the claimed range

[00:05:43] Speaker 04:
is very useful in confirming that 1.0000, etc.

[00:05:46] Speaker 04:
1 is also within that claimed range of between 1 and 10.

[00:05:54] Speaker 02:
I guess you could have a similar claim where the purpose of the magnification limitation was to make sure that there was some magnification that was detectable.

[00:06:07] Speaker 02:
You might construe a claim under those circumstances to require

[00:06:10] Speaker 02:
detectable magnification or significant magnification, but that's not the purpose of this patent.

[00:06:15] Speaker 02:
The purpose of the patent is to reduce the magnification, to reduce the size of the device, right?

[00:06:21] Speaker 04:
That's exactly correct, Your Honor.

[00:06:22] Speaker 04:
The patent was allowed because of distinguishing from prior art that used high projection magnification.

[00:06:29] Speaker 04:
The patent explains that the magnification in this invention is shifted away from projection magnification and achieved instead by a separate stage, the optical stage, which uses a lens, and that allows for a more compact system.

[00:06:44] Speaker 04:
So in the notice of allowance, the examiner identified the low projection magnification as a reason for allowance,

[00:06:52] Speaker 04:
That's also recited in a portion of the specification, reciting a projection magnification below 2 as being preferable.

[00:07:01] Speaker 04:
And dependent claim 4, in fact, also recites that below 2 further restriction of the claimed range of projection magnification.

[00:07:10] Speaker 01:
So since I'm the least experienced patent jurist here, could you explain to me, please, if we accept your argument that the patent board misapplied the claim

[00:07:23] Speaker 01:
is the remedy that this court looks at the claim and construes it, or is it a remand?

[00:07:32] Speaker 04:
Yes, Your Honor.

[00:07:33] Speaker 04:
The proper approach here, because claim construction is a matter of law reviewed by this court de novo, would be to confirm that under

[00:07:42] Speaker 04:
The undisputed facts that there is some trace amount of projection within the prior art, because this is the only limitation that the board found the petitioner had not shown, the correct outcome is to reverse and find that claim one and its dependent claims addressed here for both.

[00:08:04] Speaker 00:
Has the board already gone through the other limitations?

[00:08:07] Speaker 04:
Yes, Your Honor, the board went through the other limitations.

[00:08:11] Speaker 04:
And this was the basis for this prior art reference, for the grounds based on the Jorgensen reference.

[00:08:17] Speaker 02:
But did they go through the dependent claims?

[00:08:20] Speaker 02:
Is it possible that the dependent claims have features in them which would change the result as to those claims?

[00:08:28] Speaker 04:
I so the board did address dependent claims and rested its finding that petitioner had not shown unpatent ability of those dependent claims on Patent of the petitioner supposedly not having shown this one limitation I understand that but let me put the question differently where the did the parties have other issues with respect to the dependent claims in other words was the the patentee arguing that the dependent claims are

[00:08:56] Speaker 02:
were patentable even if the independent claim wasn't for other reasons.

[00:09:00] Speaker 04:
I do not believe that the board found with the patent owner on any such issue.

[00:09:05] Speaker 04:
They didn't address it.

[00:09:07] Speaker 02:
We're trying to decide whether under the hypothetical we remand or reverse.

[00:09:14] Speaker 02:
And what I'm asking is, are there other issues not adjudicated by the board as to dependent claims?

[00:09:22] Speaker 04:
I don't believe there are any.

[00:09:23] Speaker 04:
Of course, if patent owner believes that there are some, they would have the opportunity to identify that.

[00:09:28] Speaker 04:
But as addressed in this appeal, the sole issue seems to have been this one limitation within independent claim one with respect to the Jorgensen-based grounds.

[00:09:39] Speaker 01:
So your answer to my question is?

[00:09:41] Speaker 04:
Reversal.

[00:09:46] Speaker 04:
May I answer other questions?

[00:09:50] Speaker 04:
I believe that in looking at what projection magnification is, it's helpful to look at, for example, Figure 2 of the patent.

[00:09:59] Speaker 04:
That's at Appendix 70.

[00:10:01] Speaker 04:
And it illustrates portions of a beam coming from a source.

[00:10:06] Speaker 04:
It's simplified.

[00:10:07] Speaker 04:
It only shows three points within the source as sending out a beam.

[00:10:14] Speaker 04:
informs what projection magnification is.

[00:10:17] Speaker 04:
That figure and other disclosure within the specification formula, discussions of projection magnification in the context of what's called printing imaging, confirm that the projection magnification occurs before and frankly regardless of whether there is a detector or what that detector's resolution is.

[00:10:40] Speaker 04:
I would be happy to answer other questions, otherwise I would reserve time.

[00:10:44] Speaker 02:
Okay.

[00:10:45] Speaker 02:
We'll give you four and a half minutes for a bottle if you need it.

[00:10:52] Speaker 02:
Mr. Glitzenstein?

[00:10:56] Speaker 03:
Yes, your honor.

[00:10:58] Speaker 03:
Thank you.

[00:10:58] Speaker 03:
Good morning.

[00:10:59] Speaker 03:
May it please the court, Kurt Glitzenstein, for the appellee and patent owner.

[00:11:04] Speaker 03:
I want to begin, Judge Dyck, with where you began, which is it is not a matter of undisputed fact in this

[00:11:11] Speaker 03:
in this matter that the parties agree that there is a small amount or any amount of divergence of the x-ray beams that impinge on the specimen in Juergensen.

[00:11:23] Speaker 02:
Okay, before you get to that, do you agree that under Smith-Kline if there is some amount of divergence and hence some magnification that the board was incorrect?

[00:11:36] Speaker 03:
If there is divergence, just to be specific, Your Honor, if there is divergence of the X-ray beams at the specimen, at the point where they pass through the specimen, then we agree that the consequence of that is that there would be some geometric magnification in the projection, the X-ray projection optics.

[00:11:55] Speaker 03:
And yes, given the correct construction of the claim, which is a number exceeding one.

[00:12:02] Speaker 03:
Even if it's undetectable.

[00:12:03] Speaker 03:
Even if it's undetectable.

[00:12:04] Speaker 03:
But Your Honor, actually, and I'm very glad that we started there, because it helps me address a number of critical issues with regard to the record in this case.

[00:12:18] Speaker 03:
The board's decision in this case, with respect to Jurgensen, was based on a thorough and meticulous examination of all the evidence in connection with that record.

[00:12:28] Speaker 03:
And it led to two conclusions.

[00:12:31] Speaker 03:
The first is that,

[00:12:33] Speaker 02:
But I don't see the board finding that there's no magnification, just not that there's enough magnification.

[00:12:42] Speaker 03:
Your Honor, the board found several things.

[00:12:46] Speaker 03:
The board found, as a matter of factual findings with regard to Jurgensen and Planev's evidence, that Planev failed to establish the presence of any magnification in the X-ray projection stage in Jurgensen.

[00:12:59] Speaker 03:
The board went further than that.

[00:13:01] Speaker 03:
and actually found that we, the patent owner, through our expert, affirmatively demonstrated the absence of any such projection magnification.

[00:13:15] Speaker 03:
Now, with regard to the court's statement about enough magnification, I think in fairness, that statement needs to be read in the context of- It's wrong, Ryan.

[00:13:29] Speaker 02:
It's wrong.

[00:13:30] Speaker 02:
It's a wrong claim construction.

[00:13:31] Speaker 02:
Your Honor, with respect, it's not a claim construction.

[00:13:35] Speaker 02:
But if we read that as a claim construction, it's wrong, right?

[00:13:39] Speaker 02:
Correct, Your Honor.

[00:13:41] Speaker 03:
And I would submit that the totality of the board's opinion makes it very clear that they recognize that this issue was a binary one.

[00:13:48] Speaker 03:
They say repeatedly, the question that divides parties is whether or not Jurgensen discloses any magnification in the x-ray projection stage.

[00:13:58] Speaker 03:
Whether or not.

[00:14:00] Speaker 03:
That is binary.

[00:14:01] Speaker 03:
The context of enough, the comment of enough, was in their decision at page 26, which is also appendix 26, changes none of this.

[00:14:12] Speaker 03:
When they set up the problem,

[00:14:14] Speaker 03:
at 16 of the FWD against the same pagination as the appendix.

[00:14:21] Speaker 03:
They set it up as a binary question.

[00:14:23] Speaker 03:
They say the dispute about whether Juergensen inherently discloses projection magnification is really a dispute about the nature of Juergensen's x-rays.

[00:14:33] Speaker 03:
whether or not the x-ray beam is diverging.

[00:14:36] Speaker 03:
They say that on 16.

[00:14:38] Speaker 03:
In substance, they repeat that on 18, 22, 37, and 38.

[00:14:43] Speaker 03:
For 38 is where, after 28 pages of meticulous examination of the record and the party's arguments, they conclude, again, two things.

[00:14:51] Speaker 03:
Number one, that the petitioner, appellant, failed to demonstrate any divergence whatsoever.

[00:14:58] Speaker 03:
of the x-ray beams as they pass through the specimen in Jurgensen.

[00:15:03] Speaker 02:
And secondly... But for example, on page 24, they say the x-rays that reach Jurgensen's sample are essentially parallel.

[00:15:11] Speaker 02:
That's the wrong claim construction.

[00:15:13] Speaker 03:
But they're quoting there... Isn't that correct?

[00:15:15] Speaker 03:
Well, Your Honor, I would respectfully submit that that is not a claim construction.

[00:15:20] Speaker 03:
They are quoting there from one of our experts, and notably

[00:15:25] Speaker 03:
They follow that with a quotation from Dr. Bentley at the top of the page, where they say, such x-rays are parallel when they reach the sample.

[00:15:35] Speaker 03:
And the essentially parallel that they quote from Dr. Arce is, of course, followed by the parenthetical, i.e., not divergent.

[00:15:43] Speaker 03:
Again, it's a binary evaluation of the evidence, and it's a binary application of the evidence to the claim.

[00:15:57] Speaker 03:
The evidence here is, and this really is the critical and central point of distinction over the Smith Klein Beeching case we submit.

[00:16:08] Speaker 03:
In that case, the Prior Art patent, the 196 patent, discloses a method of manufacturing PHC anhydride that naturally results in the production of PHC hemihydrate.

[00:16:19] Speaker 03:
That's at the opinion of 1344.

[00:16:20] Speaker 03:
The record evidence here is not only

[00:16:24] Speaker 03:
does not only say that, that there's any natural consequence.

[00:16:28] Speaker 03:
The full disclosure of Jurgensen shows that there is zero magnification in the X-ray projection stage.

[00:16:39] Speaker 03:
Not some, not enough, not a little bit, zero.

[00:16:43] Speaker 03:
And that is the math that the

[00:16:47] Speaker 03:
Petitioner ignored in his petition.

[00:16:49] Speaker 00:
So just to help me out a little, you refer to page 38.

[00:16:53] Speaker 00:
And the board says very little about this question other than to credit Dr. Bentley and ours and to discredit Dr. Kia.

[00:17:03] Speaker 00:
So I'm going back to what Dr. Bentley said.

[00:17:06] Speaker 00:
And isn't he the one?

[00:17:10] Speaker 00:
Oh, it's Dr. Dettman that said nearly parallel.

[00:17:16] Speaker 00:
Dr. Arce, though, is what I think Judge Dyke referred to, x-ray being where the x-rays have been made to be parallel, such that no meaningful diverging is present.

[00:17:26] Speaker 03:
I think the quote from prior was Dr. Arce stating that they're essentially parallel, i.e.

[00:17:33] Speaker 03:
not diverging, on page 24.

[00:17:37] Speaker 03:
But if I may, Judge Prost, if I could ask,

[00:17:45] Speaker 03:
the court to look at page 33 of the FWD.

[00:17:54] Speaker 03:
This is appendix 33.

[00:17:55] Speaker 03:
This is where the board, again, quite thoroughly, quite thoughtfully, notes that although it's the petitioner's burden of proof,

[00:18:11] Speaker 03:
They say Pat Nohner and Dr. Bentley presented an unrebutted analysis of Juergenson's disclosure relating to CCD pixel size that persuasively supports the absence of projection magnification.

[00:18:27] Speaker 03:
There's no suggestion at all that they had some gray area that they were thinking of around one.

[00:18:32] Speaker 03:
It's the absence.

[00:18:34] Speaker 03:
It's binary.

[00:18:35] Speaker 03:
It is zero.

[00:18:36] Speaker 03:
And in particular, it is

[00:18:38] Speaker 03:
It is the math that follows from the disclosure in Juergensen.

[00:18:43] Speaker 03:
Juergensen doesn't say what the x-ray source, but it doesn't contain any disclosure about how the x-rays look as they are emitted from its very complicated detector.

[00:18:57] Speaker 03:
Dr. Bentley has even looked at that and said it's so complicated that that could create distortion.

[00:19:02] Speaker 03:
So we don't know what the x-rays look like coming out of Juergensen's source.

[00:19:08] Speaker 03:
We don't know what the columnator looks like in Juergensen, but we do know that Juergensen provides us with an example.

[00:19:17] Speaker 03:
And the example says that if you have a 24 micron on a side pixel at the detector, and if you have two-fold optical magnification, that means that that is 12 microns on a side

[00:19:35] Speaker 03:
at the specimen.

[00:19:38] Speaker 03:
And it's just the math.

[00:19:41] Speaker 03:
It is 12 microns times two times optical magnification, and that gives you 24 microns at the detector.

[00:19:50] Speaker 03:
And critically, she continues and says, that can be true only if there is no additional magnification in the projection stage.

[00:20:01] Speaker 03:
None.

[00:20:03] Speaker 03:
We affirmatively

[00:20:05] Speaker 02:
This proved that Juergenson... Where did your witness say there was none?

[00:20:10] Speaker 02:
I see testimony where they say there's undetectable amounts essentially parallel.

[00:20:21] Speaker 02:
I don't see testimony that there's none.

[00:20:24] Speaker 02:
In fact, I thought your witness said that, in fact, there was no such thing as completely parallel beams.

[00:20:33] Speaker 03:
These are two separate but related issues.

[00:20:37] Speaker 03:
But let me address, Judge Lake, your question first.

[00:20:41] Speaker 03:
I'm looking at the block quote in the middle of the FWD appendix page 33, the final sentence.

[00:20:51] Speaker 03:
That can be true only if there is no additional magnification in the projection stage.

[00:20:58] Speaker 03:
That testimony, Your Honor, is unrebutted.

[00:21:02] Speaker 03:
And the board here properly found that that is evidence that persuasively supports the absence of projection magnification.

[00:21:14] Speaker 03:
It's unrebutted evidence below.

[00:21:17] Speaker 03:
It is an aspect of the record.

[00:21:20] Speaker 03:
that the appellant has not even addressed on appeal.

[00:21:24] Speaker 03:
The appellant's position with regard to this evidence, in both briefing and what we heard today, is that this is irrelevant and it's immaterial because it concerns what's at the end of the optical stage, which the claim has as a different piece.

[00:21:39] Speaker 02:
I've got to say I'm baffled.

[00:21:40] Speaker 02:
I mean, there is a lot of testimony, some of it cited on Blue Brief 11, that

[00:21:48] Speaker 02:
The witnesses said there's no detectable amount, essentially parallel.

[00:21:54] Speaker 02:
You wouldn't see it.

[00:21:57] Speaker 02:
And I don't see the board grappling with the question of whether there are undetectable amounts here and saying that there are not even undetectable amounts.

[00:22:12] Speaker 02:
The board grappled with the evidence that was presented to it.

[00:22:15] Speaker 02:
No, but answer my question.

[00:22:17] Speaker 02:
I recited to you some of the evidence.

[00:22:21] Speaker 02:
And there are statements that there's no such thing as a parallel beam.

[00:22:25] Speaker 02:
Where does the board find, address that testimony, and say, well, there's a lot of testimony that there are no detectable amounts.

[00:22:34] Speaker 02:
But in fact, we think there are no amounts at all.

[00:22:36] Speaker 02:
Where do they grapple with that?

[00:22:38] Speaker 03:
So one place is where I show you on 33.

[00:22:42] Speaker 03:
They also review Dr. Bentley's evaluation of the Juergensen reference.

[00:22:59] Speaker 02:
But show me where they say that we've considered that testimony, and we think there was nothing at all, as opposed to not enough

[00:23:09] Speaker 02:
or essentially parallel or whatever.

[00:23:12] Speaker 02:
Where do they say that?

[00:23:26] Speaker 02:
They say the mere possibility of additional magnification is not enough.

[00:23:31] Speaker 02:
But they don't seem to say, in my view, that there is no magnification.

[00:23:39] Speaker 02:
Page 24.

[00:23:49] Speaker 03:
So on 24, in discussing Dr. Bentley's testimony, they say they credit her testimony as, in Juergensen, the X-rays are parallel when they reach the sample.

[00:24:07] Speaker 03:
And then continuing on, they say, thus, Jurgensen does not disclose a magnification of the projection x-ray state.

[00:24:19] Speaker 03:
That's their review of the evidence.

[00:24:23] Speaker 03:
They continue on and ultimately decide to credit

[00:24:30] Speaker 03:
Dr. Bentley's testimony on the scope and content of the disclosure in Jurgensen over Dr. Kia's testimony, including, Your Honor, because Dr. Kia, and this leads to a second important issue on this appeal, Dr. Kia in his original declaration fundamentally misunderstood how Jurgensen... I understand that.

[00:24:54] Speaker 03:
But Your Honor, it goes to an issue of proof here, which is that the petitioner and appellant here hasn't even pointed to record evidence to show that the Jurgensen reference even includes an x-ray source that emits diverging beams.

[00:25:13] Speaker 03:
This is all way back at the beginning of Jurgensen.

[00:25:15] Speaker 03:
We don't know what x-rays that even creates.

[00:25:20] Speaker 03:
They say in their briefings.

[00:25:21] Speaker 02:
Their argument is that as a theoretical matter, there is no such thing as an exact parallel beam, and that therefore there is always inevitably some small amount of magnification.

[00:25:34] Speaker 03:
Your Honor, that is petitioners' false dichotomy.

[00:25:39] Speaker 03:
It is not the case that because if it's theoretically impossible, assuming if it's theoretically impossible to have perfectly parallel beams, that does not lead

[00:25:50] Speaker 03:
to their conclusion, critically, it does not lead to their conclusion that the beams are necessarily diverging a slight amount.

[00:25:59] Speaker 03:
X-ray beams are not either perfectly parallel or slightly diverging.

[00:26:03] Speaker 03:
There's evidence in the record in the form of the Hayashi patent that we cite.

[00:26:08] Speaker 03:
You can have X-ray beams that are converging, that are far less than one in magnification.

[00:26:13] Speaker 03:
You can have X-ray beams that are curved with respect to one another.

[00:26:16] Speaker 03:
You can have X-ray beams where

[00:26:18] Speaker 03:
Some go one direction and some go the other, and you don't have any sort of coherent issue.

[00:26:23] Speaker 03:
This is why Dr. Bentley says, also reflected in the board's FWD, that in fact, the source in Juergensen, of which we know nothing about what his x-rays look like, would create a blurred image.

[00:26:39] Speaker 03:
Blurred is not magnified.

[00:26:41] Speaker 03:
It's just junk.

[00:26:43] Speaker 03:
And so that is an absolute false dichotomy, and it's not

[00:26:47] Speaker 03:
factually established in the record that you either have perfectly parallel beams or diverging slightly.

[00:26:54] Speaker 03:
That's not true.

[00:26:55] Speaker 02:
They can focus down.

[00:26:56] Speaker 02:
I think we're out of time.

[00:26:57] Speaker 02:
Okay, thank you.

[00:26:58] Speaker 02:
Thank you, Your Honor.

[00:27:00] Speaker 02:
Mr. Lacker.

[00:27:27] Speaker 04:
Patent owner admitted in their reply at the lower proceedings at appendix 2465, footnote three, that absolute theoretical parallelism cannot be achieved as a practical matter.

[00:27:40] Speaker 04:
That is an admission.

[00:27:42] Speaker 00:
But then, I mean, as you point out, you equate that.

[00:27:46] Speaker 00:
I think this is just what your friend was talking about.

[00:27:48] Speaker 00:
thus conceding that Jorgensen inherently discloses an X-ray beam that diverges.

[00:27:53] Speaker 00:
And his answer is no.

[00:27:55] Speaker 04:
And I'm happy to answer your honor's question.

[00:27:57] Speaker 00:
So they didn't concede the latter.

[00:27:59] Speaker 00:
They conceded the former.

[00:28:00] Speaker 04:
Well, I believe that they have conceded both, Your Honor.

[00:28:04] Speaker 04:
There's no dispute that the earlier limitation of Jorgensen, which recites an X-ray source generating a diverging X-ray beam, is satisfied.

[00:28:15] Speaker 04:
No dispute.

[00:28:16] Speaker 04:
At the point that the beam begins in Jorgensen, it's diverging.

[00:28:19] Speaker 04:
It's spreading out.

[00:28:21] Speaker 04:
Patton owner has pointed to the physical collimator tube in Jorgensen to argue that collimation greatly reduces the degree of divergence.

[00:28:32] Speaker 04:
It's just a lead-wrapped brass tube.

[00:28:35] Speaker 04:
And the Patton owner's expert, Dr. Bentley, admitted that as the length of collimation approaches infinity,

[00:28:43] Speaker 04:
the degree of divergence lessens so much that it's essentially parallel.

[00:28:48] Speaker 04:
If you had a lead wrapped brass tube the length of the universe, you would have eliminated so much of the diverging angles within the beam that the portion of the beam that exits that tube

[00:28:58] Speaker 04:
would be so incredibly close to 1x that mathematically you can treat it as 1x.

[00:29:05] Speaker 04:
Of course the lead wrapped brass beam in Jorgensen is not that long and it only reduces the amount of collimation.

[00:29:12] Speaker 04:
There are admissions from both of patent owners, technical experts,

[00:29:16] Speaker 04:
With respect to the point regarding the Hayashi reference, that is not a tube collimator.

[00:29:22] Speaker 04:
Hayashi is describing an entirely different device in Jorgensen in which a beam is reflected off of an angled mirror-like surface in order to change the angling of the beam and potentially create convergence.

[00:29:37] Speaker 04:
There is no evidence in the record whatsoever suggesting that Jorgensen's lead-wrapped brass tube can create convergence.

[00:29:47] Speaker 04:
There is ample admissions from patent owner, from Dr. Bentley, from Dr. Aker that the passing Jorgensen's x-ray beam, which begins as beam diverging, once it passes through the tube,

[00:30:03] Speaker 04:
the outer, more diverging portions of that beam within the tube strike the tube's inner surface, thus reducing the degree of divergence.

[00:30:14] Speaker 04:
When the beam exits the tube, there will be some at least trace amount of divergence that remains.

[00:30:21] Speaker 00:
And did they, I mean, the problem is we've got a record and we've got experts and the board credited the experts, their experts, and not your expert.

[00:30:30] Speaker 00:
So are you saying that none of the experts actually said what you're saying now is not true?

[00:30:37] Speaker 00:
I mean, we're not going to take attorney argument as expert testimony.

[00:30:40] Speaker 04:
Two points, Your Honor.

[00:30:41] Speaker 04:
First, the experts themselves conceded that their language of parallelism or no divergence was actually referring to no meaningful divergence, essentially parallel.

[00:30:54] Speaker 04:
It was rounding down.

[00:30:56] Speaker 00:
Well, where did Dr. Bentley say that?

[00:30:58] Speaker 00:
The board cites Dr. Arce as saying no meaningful divergence is present.

[00:31:03] Speaker 00:
But I didn't see any other

[00:31:08] Speaker 00:
Anything that Dr. Bentley said that would give you any givenness.

[00:31:13] Speaker 04:
Give me just a moment, Your Honor.

[00:31:22] Speaker 02:
Some of these quotes are on.

[00:31:23] Speaker 04:
Dr. Bentley, at appendix 2272, described, any such undetectable magnification doesn't matter.

[00:31:33] Speaker 04:
You won't see it.

[00:31:34] Speaker 04:
I know.

[00:31:34] Speaker 04:
Sorry.

[00:31:34] Speaker 04:
That's Dr. Aker describing Dr. Bentley.

[00:31:39] Speaker 04:
Dr. Aker further describes that the cone angle is so small, no detectable geometric magnification exists, and the portions of Dr. Bentley's testimony that patent owner has pointed to, as patent owner described,

[00:31:55] Speaker 04:
were referring to whether the detector can detect.

[00:32:00] Speaker 04:
So that's going back to a claim construction question.

[00:32:03] Speaker 04:
She was not opining, actually, as to whether the beam itself was non-diverging, but whether, at the point of detection, there was any detectable divergence based on the resolution of the CCD detector.

[00:32:21] Speaker 02:
On the bottom page 10 of the blue brief,

[00:32:25] Speaker 02:
You told Dr. Bentley you were saying that's a very small angle and is small enough to be considered parallel.

[00:32:31] Speaker 02:
That's correct.

[00:32:32] Speaker 02:
Thank you.

[00:32:34] Speaker 04:
The colonnaded beam is essentially parallel.

[00:32:36] Speaker 04:
Yes.

[00:32:37] Speaker 04:
There were admissions from both experts.

[00:32:39] Speaker 04:
And again, from patent owner's own briefing, which we pointed out in the blue brief but went unanswered in the red brief, as to the fact that absolute theoretical parallelism cannot be achieved as a practical matter.

[00:32:57] Speaker 00:
But your friend says that that's a false equivalency between parallelism and divergence, as I understood it.

[00:33:03] Speaker 04:
When you change from the type of physical tube collimator that's at issue here in Jorgensen

[00:33:10] Speaker 04:
And you instead look at entirely different systems.

[00:33:13] Speaker 04:
The item in Hayashi and another reference, which my friend in briefing combines multiple prior references, do not describe physical collimation.

[00:33:25] Speaker 04:
Again, what the experts have confirmed is the physical collimation is passing a beam through a tube.

[00:33:32] Speaker 04:
There's nothing suggesting there's anything in that tube.

[00:33:35] Speaker 04:
lead-wrapped brass tube, which makes sense in a laboratory, you'd want to reduce the amount of x-rays flying around to people.

[00:33:42] Speaker 04:
So you've caused the x-ray that exits the tube to have less divergence based on the length of the tube as compared to the x-ray beam entering.

[00:33:52] Speaker 00:
I'd like to think the more prudent course would be to remand it to the board, calling out these things and having them reevaluate it based on

[00:34:01] Speaker 00:
clarity that something is not enough.

[00:34:05] Speaker 00:
If it's covered within the range, it's covered.

[00:34:07] Speaker 00:
And have them analyze it then?

[00:34:10] Speaker 04:
Well, I believe that based on the findings that have already occurred, that there's acknowledgment that with the board's language of the Jorgensen beam being essentially parallel, that that's sufficient facts to result in a reversal here.

[00:34:26] Speaker 04:
The board seemed to have adopted also the claim construction of requiring diversions such that the detector changes its output, which is another way, I believe, of getting your Honor's point that

[00:34:37] Speaker 04:
Any amount of divergence is divergence.

[00:34:40] Speaker 04:
I don't believe that further fact finding at the board level is necessary when the parties have the record before us with all of these admissions of essentially parallel.

[00:34:51] Speaker 04:
Parallel, if measured at infinity, no meaningful divergence.

[00:34:54] Speaker 04:
Those are concessions by patent owner.

[00:34:57] Speaker 02:
OK.

[00:34:57] Speaker 02:
Thank you.

[00:34:58] Speaker 04:
Thank you.

[00:34:59] Speaker 02:
Thank both counsel.

[00:35:00] Speaker 02:
The case is submitted.

[00:35:01] Speaker 04:
That concludes our session for this morning.