[00:00:05] Speaker 02:
The next case for argument is 15-1777 E.I.

[00:00:08] Speaker 02:
DuPont v. Smith.

[00:00:40] Speaker 03:
I may please the Court with respect to the 859 patent, which is the major zone of controversy between the parties here.

[00:00:56] Speaker 03:
We contend that summary judgment was inappropriate because there were genuinely disputed facts with respect to at least four points.

[00:01:03] Speaker 03:
And those included whether the poor performance of thermal development with analog plates

[00:01:08] Speaker 03:
dissuaded its use with the more detailed digital plates.

[00:01:12] Speaker 03:
Secondly, whether doubts over the ability to thermally remove the laser-oblatable imaging layer on the digital plates dissuaded the attempted use of thermal development.

[00:01:31] Speaker 03:
Third, whether the six-year delay between publication of digital imaging and any attempt to use it with thermal

[00:01:38] Speaker 03:
permitted at least an inference of non-obviousness, and lastly, whether the ability of the 859 patented invention to attain results as good or better than you can with solvent development was unpredictable and an unexpected result, again, justifying an inference of non-obviousness.

[00:01:59] Speaker 02:
I'm not sure I see those points exactly as you did, but talking to what I understood was your first point.

[00:02:07] Speaker 02:
The stage is, so we all agree, you've got digital, and you've got analog imaging, and then you've got four potential developmental.

[00:02:16] Speaker 02:
And we're talking here about thermal and solvent, really.

[00:02:18] Speaker 02:
Correct.

[00:02:20] Speaker 02:
So you say, well, there were problems with the thermal development used with analog.

[00:02:26] Speaker 02:
But weren't the records really demonstrate quite clearly that those problems

[00:02:33] Speaker 02:
were a result of the problems with analog and not necessarily with the thermal development piece of that, right?

[00:02:40] Speaker 03:
The problem was that the technology, the existing technology of the day where the thermal development technique had been proposed and where people had tried to make it work and it failed was all analog technology.

[00:02:56] Speaker 03:
And that technology was there from 1966.

[00:02:59] Speaker 03:
DuPont invented it and published that in 1966, purporting to lay out the benefits of avoiding solvents and toxicity and whatnot.

[00:03:08] Speaker 03:
And when digital imaging came along, published in 1993, the market forces that the district court said it was relying upon were all in place.

[00:03:18] Speaker 03:
And nobody even raised the issue, not just immediately, for years.

[00:03:23] Speaker 03:
And there's a reasonable inference there.

[00:03:25] Speaker 02:
But we're talking about six years.

[00:03:26] Speaker 02:
The long-fell need here is six years, which seems kind of on the low side from what we're usually hearing, right?

[00:03:31] Speaker 02:
I mean, digital didn't come into being, as you suggested, until 1993.

[00:03:34] Speaker 03:
It's not quite just long-fell need.

[00:03:37] Speaker 03:
It has to do with the fact that the market forces that the judge said would have driven this combination were there.

[00:03:44] Speaker 03:
The world was exactly the same in 1993 when digital was published as it was

[00:03:49] Speaker 03:
in 1999 when DuPont made this invention.

[00:03:52] Speaker 03:
And those market forces, if they truly motivated that combination, there's a reasonable inference here, and that's what we're talking about on summary judgment, a reasonable inference that there were some things that dissuaded people from doing it.

[00:04:05] Speaker 03:
And we've enumerated a number of things that the evidence clearly supports.

[00:04:10] Speaker 03:
Nobody was able to make the thermal development work, not DuPont, not 3M,

[00:04:16] Speaker 03:
There's a very interesting public article at page A6145.

[00:04:21] Speaker 03:
It's a McDermott memo that lays out the history of thermal development.

[00:04:26] Speaker 03:
Published in 1966, DuPont never did anything with it.

[00:04:30] Speaker 03:
3M took it up.

[00:04:31] Speaker 03:
There's a very interesting point there that in 1995, 3M announced that it was going to soon introduce a dry process that could be done in an office environment.

[00:04:40] Speaker 03:
And McDermott notes it never happened.

[00:04:42] Speaker 03:
The history of thermal development was a history of unfulfilled promise.

[00:04:47] Speaker 02:
No, I know, but you're not looking back to 1960, because what we're talking here is about the combination of digital imaging with thermal development.

[00:04:57] Speaker 02:
And the starting date for that being a possibility, obvious to try or obvious combination, moves up only in 1993 when digital imaging comes on the scene, right?

[00:05:09] Speaker 03:
That's absolutely correct.

[00:05:12] Speaker 03:
idea of digital imaging.

[00:05:14] Speaker 03:
The problem with the use of thermal development with solvents was it actually degraded the image.

[00:05:19] Speaker 03:
The images weren't nearly as good as if you developed them with solvent.

[00:05:23] Speaker 03:
And the digital plates, the whole reason they were important is because you got exquisitely fine imaging with the digital plate.

[00:05:30] Speaker 02:
And the idea that there were problems with solvents too, right?

[00:05:34] Speaker 03:
The solvents, the only problems with solvents were the

[00:05:38] Speaker 03:
safety and handling issues, which were noted in 1966.

[00:05:41] Speaker 01:
And the time it took to dry the product.

[00:05:44] Speaker 03:
Indeed, which were also noted in 1966.

[00:05:48] Speaker 03:
All of those benefits of solvent development were well reported if anybody actually could have made it work.

[00:05:55] Speaker 03:
And the idea that you would take a developing process that was known to degrade even an analog image and use it with an explicitly detailed new technology

[00:06:06] Speaker 03:
is absolutely counterintuitive.

[00:06:08] Speaker 03:
And the notion that what they found, and what they found was that with the digital imaging, the thermal development actually gave images as good or better than the solvent development of the digital images.

[00:06:21] Speaker 02:
But there were problems.

[00:06:22] Speaker 02:
There's a very, very small number of solutions.

[00:06:25] Speaker 02:
And there's a problem.

[00:06:27] Speaker 02:
And once you find, once digital comes on the market and becomes available in 1993,

[00:06:33] Speaker 02:
There are advantages of digital over analog, right?

[00:06:38] Speaker 03:
In imaging.

[00:06:39] Speaker 02:
In imaging.

[00:06:40] Speaker 02:
And then there are advantages over solvent of thermal.

[00:06:45] Speaker 02:
So if you've got those narrow number of choices and we've got an obvious to try combining them, I guess what's your best argument that would have dissuaded one skilled in the arts?

[00:06:58] Speaker 02:
from saying, well, there are problems with analog that were better with digital.

[00:07:02] Speaker 02:
So there's a reason to move to digital from analog.

[00:07:05] Speaker 02:
And there are problems with solvents that are remediable with thermal.

[00:07:10] Speaker 02:
Given this small number of options, what's your best argument for why one wouldn't have done that?

[00:07:18] Speaker 03:
Because the benefits of thermal were all theoretical.

[00:07:22] Speaker 03:
They had been unable to make those benefits actually come true.

[00:07:26] Speaker 03:
from 1966 until 1999.

[00:07:29] Speaker 03:
And one of them.

[00:07:30] Speaker 02:
Well, they were using thermal with analog.

[00:07:32] Speaker 02:
And it didn't work.

[00:07:33] Speaker 03:
That's exactly the point we're trying to make.

[00:07:35] Speaker 02:
Well, but the problems it did, the reasons it didn't work, weren't they mainly, if you have at least my read of the record, dealing with problems that inured to the analog piece of it, not because of the thermal things, right?

[00:07:47] Speaker 05:
It was the invention.

[00:07:48] Speaker 02:
Which would have, in fact, then be the reason that they were motivated to move from analog to digital, not the reason to be dissuaded, right?

[00:07:56] Speaker 03:
It was the invention of the 859 patent that, in fact, you could solve the problems with thermal development, with analog imaging, by using digital imaging, when it was absolutely counterintuitive to then use a less refined development method for that new, refined technology.

[00:08:19] Speaker 04:
I want to ask you about the other patent, 758, relating to

[00:08:26] Speaker 04:
the claim construction which included the annealed aspect.

[00:08:32] Speaker 04:
Annealed is all over the patent.

[00:08:34] Speaker 04:
For example, it's in the prosecution history.

[00:08:38] Speaker 04:
Why wasn't it in the judge's corrects?

[00:08:41] Speaker 03:
Unquestionably the preferred way of making the product.

[00:08:44] Speaker 03:
The patent claim was to a thing, a product.

[00:08:49] Speaker 03:
And the law requires the disclosure of only a single method of making a product.

[00:08:53] Speaker 03:
That's the invitation case we cited.

[00:08:55] Speaker 03:
And the claim, nonetheless, covers the product, however, made.

[00:08:58] Speaker 03:
And we cite cases where it's clear that you don't read process limitations into product claims unless there's an unambiguous disavowal of claim scope.

[00:09:10] Speaker 03:
And the trial judge, we contend, led into error by McDermott, misunderstood the arguments that were made during prosecution.

[00:09:18] Speaker 03:
The argument that was made during prosecution.

[00:09:20] Speaker 04:
Doesn't the word annealed describe the product

[00:09:25] Speaker 04:
in part rather than just the process by which it was made?

[00:09:30] Speaker 03:
The construction the court adopted was much more severe than saying annealed.

[00:09:35] Speaker 03:
It said in a special annealing process that was conducted before the bonding process, there was a whole line of process limitations that were written in there.

[00:09:43] Speaker 03:
But to directly answer your question, the answer is no.

[00:09:48] Speaker 03:
The property that the word annealed doesn't appear in the claim.

[00:09:52] Speaker 03:
The property of the thing that's patented

[00:09:55] Speaker 03:
is a dimensional stability.

[00:09:57] Speaker 03:
And patent taught how you could do that.

[00:09:59] Speaker 03:
You could do it by annealing.

[00:10:02] Speaker 03:
And the issue that the patent office raised, they said, well, that limitation's inherent.

[00:10:06] Speaker 03:
But the burden, of course, is on the patent office to support that.

[00:10:09] Speaker 03:
And one of the ways that the old case of in-rate best allowed them to do it was by saying, look, it's made by the same process.

[00:10:17] Speaker 03:
And so the rebuttal to the inherency argument, it was twofold.

[00:10:22] Speaker 03:
The things you're showing me aren't made by the same process, so you can't rely on that to show inherency.

[00:10:27] Speaker 03:
And secondly, really what the examiner was arguing was that all polyethylene terephthalate films met that limitation, and the applicant said, look at my example.

[00:10:37] Speaker 03:
Some do and some don't.

[00:10:39] Speaker 03:
And when that went to the board on that legal issue, they said, you're right.

[00:10:42] Speaker 03:
The examiner has not borne his burden of proof on the issue of inherency.

[00:10:46] Speaker 03:
And the rejections were reversed.

[00:10:48] Speaker 03:
It was not at all a disavowal of claim scope that

[00:10:52] Speaker 03:
things, plates that had the dimensional stability that had been discovered were not covered if they were made by some other method.

[00:11:00] Speaker 02:
Well, the statement seemed quite clear.

[00:11:02] Speaker 02:
I mean, in the PTAB opinion that resolved this and granted the patent, the conclusion is because the prior art references did not include an annealing process, they did not inherently disclose the claim thermal distortion.

[00:11:16] Speaker 03:
The magic word is inherently.

[00:11:18] Speaker 03:
That's the point.

[00:11:19] Speaker 03:
It was a rebuttal of an inherency argument.

[00:11:22] Speaker 03:
And in Ray Best makes clear that's one way you can rebut an inherency argument, and the examiner needed something else to support that, and he didn't have it.

[00:11:32] Speaker 03:
And that's why the case was reversed.

[00:11:34] Speaker 02:
I mean, that's the classic argument that is made to avoid inherency.

[00:11:43] Speaker 02:
It was the basis for the allowance was that the prior art did not include the annealing process, and you called it, in your term, a critical annealing step.

[00:11:57] Speaker 03:
The cases are legion with disclosures that describe the preferred method of making it as important and things like that, and we're not suggesting they don't.

[00:12:05] Speaker 02:
Well, we're talking about the basis for allowance.

[00:12:09] Speaker 03:
The claim simply said it had a specific dimension of stability.

[00:12:13] Speaker 03:
And it was the absence from the prior art of that dimensional stability that caused the claim to be allowable.

[00:12:19] Speaker 03:
The examiner had alleged it was inherent.

[00:12:22] Speaker 03:
The examiner had failed to prove that.

[00:12:24] Speaker 03:
Presumably, if it is inherent in some of that prior art, presumably my brother here has an inherent anticipation defense when we finally get to trial.

[00:12:31] Speaker 03:
But there certainly wasn't any disavowal of claims.

[00:12:35] Speaker 01:
Mr. Lipsey, let's go back for a minute to the 859 patent and the obviousness problem.

[00:12:42] Speaker 01:
Certainly.

[00:12:42] Speaker 01:
Do I understand, and I very well may not, that the basic technology that was being used was found in the FAN 275 patent?

[00:12:53] Speaker 01:
The imaging technology.

[00:12:55] Speaker 01:
The imaging technology.

[00:12:56] Speaker 03:
Yes.

[00:12:57] Speaker 01:
Would it be fair to say that the issue of obviousness is whether it was obvious to try to expose that FAN 275 patent process imaging layer to heat?

[00:13:11] Speaker 01:
such that the layer would be thermally removed.

[00:13:15] Speaker 01:
Is that a fair statement of the question?

[00:13:17] Speaker 01:
Not quite.

[00:13:18] Speaker 03:
With a reasonable expectation of success.

[00:13:21] Speaker 03:
With a reasonable expectation of success.

[00:13:25] Speaker 03:
And the fact that solvent had been, excuse me, the thermal had been such a disappointment with analog imaging and in fact never had worked.

[00:13:33] Speaker 03:
And the fact that there was doubt about whether that laser ablingable layer on the top could be thermally removed

[00:13:40] Speaker 01:
If you take a look at Dr. Katmack's report... Well, obvious-to-try always assumes, doesn't it, a reasonable expectation of success?

[00:13:50] Speaker 03:
And if you're using obvious-to-try in the KSR sense, it says obvious-to-try things with predictable success.

[00:14:00] Speaker 03:
There is always an obviousness, a requirement for a reasonable predictability of success.

[00:14:06] Speaker 03:
Otherwise, everything is obvious.

[00:14:08] Speaker 03:
It's obvious to try anything.

[00:14:10] Speaker 01:
Did that issue get developed below?

[00:14:13] Speaker 01:
We repeatedly argued.

[00:14:17] Speaker 01:
Without too much heat.

[00:14:19] Speaker 01:
I'm sorry.

[00:14:21] Speaker 01:
Go ahead.

[00:14:22] Speaker 03:
We argued that case about a month ago.

[00:14:25] Speaker 02:
Just to be clear, the already existing digital plates at the time of the invention

[00:14:30] Speaker 02:
had ablation layers that were thermally removable, right?

[00:14:34] Speaker 03:
That was what part, well, some did and some didn't, and that's perhaps an important point.

[00:14:40] Speaker 02:
But they were.

[00:14:40] Speaker 02:
I'm not saying every digit.

[00:14:42] Speaker 02:
But that already existed in the art, right?

[00:14:45] Speaker 03:
That was unknown, and that was part of the invention that Roxy Van made here.

[00:14:50] Speaker 02:
Well, there's lots of sites in the record that show that this was already in the art.

[00:14:55] Speaker 02:
The DPU plates, the DPL plates, I mean, there are lots of sites

[00:14:59] Speaker 02:
in the record that showed that there were already existing plates that had ablation layers that were thermally removable.

[00:15:06] Speaker 03:
There were existing plates.

[00:15:08] Speaker 03:
They were in the art.

[00:15:10] Speaker 03:
The DuPont scientists discovered that some could be developed and some couldn't.

[00:15:15] Speaker 03:
If you look at A4252, you'll see that the BSF plate couldn't be developed, the Asahi plate couldn't, and one of DuPont's was the worst.

[00:15:25] Speaker 03:
Some could.

[00:15:27] Speaker 03:
Some couldn't.

[00:15:28] Speaker 03:
That's part of the invention.

[00:15:29] Speaker 03:
That's not in the prior art.

[00:15:31] Speaker 03:
And there was substantial doubt that the fact that any could be removed by thermal development.

[00:15:43] Speaker 03:
The standard LAMS layer, standard laser ablatable layer, had 33 percent carbon black in it.

[00:15:50] Speaker 03:
That's a high level of filler.

[00:15:52] Speaker 03:
And as you can tell from paragraph 259 of Dr. Cagmak's report,

[00:15:57] Speaker 03:
He points out that such high fillers were known to create and alter the rheology and flow properties.

[00:16:04] Speaker 03:
And he pointed out that in the 471 patent, they limited the amount of filler to 5%.

[00:16:09] Speaker 03:
And the high viscosity of the laser ablatable layer seemed inappropriate for thermal development.

[00:16:18] Speaker 03:
And, Your Honor, the fact that nobody did it.

[00:16:21] Speaker 03:
For six years, nobody even suggested doing it until DuPont did.

[00:16:28] Speaker 03:
permits an inference that there was a reason for that.

[00:16:31] Speaker 03:
And we've got evidence of what that reason was.

[00:16:34] Speaker 03:
The solvent thermal processes didn't work.

[00:16:39] Speaker 03:
Even McDermott, in the area quoted in paragraph 313 of Dr. Kacknack's report, they testified that that original solvent thermal device that Dupont worked performed poorly to the point that they abandoned efforts to adopt analog thermal.

[00:16:56] Speaker 02:
I'm sorry.

[00:16:57] Speaker 02:
I'm sorry.

[00:16:57] Speaker 02:
We've exhausted your time.

[00:16:59] Speaker 02:
We'll restore a few minutes.

[00:17:00] Speaker 02:
Thank you, sir.

[00:17:02] Speaker 02:
Thank you.

[00:17:08] Speaker 00:
Good morning.

[00:17:09] Speaker 00:
May it please the court.

[00:17:10] Speaker 00:
My name is Sean Burback.

[00:17:10] Speaker 00:
I'm here on behalf of McPhermits.

[00:17:13] Speaker 00:
The district court properly entered summary judgment with respect to the 859 patent.

[00:17:17] Speaker 00:
She properly concluded the asserting claims all of them are an obvious combination of two known technologies, digital and thermal.

[00:17:24] Speaker 00:
without any change in prospective function.

[00:17:27] Speaker 00:
Specifically, in the record, there's undisputed evidence about the level of ordinary cellular art.

[00:17:34] Speaker 00:
It's high and undisputed, and specifically, it's a high level of education of BS in chemistry and chemical engineering.

[00:17:41] Speaker 02:
Can you help me out with the last point we were covering with Mr. Lipsy, which is there's lots of suggestions, but the language is kind of squishy, particularly in gray, but the suggestion that the

[00:17:53] Speaker 02:
ablation layers that were thermally removable didn't exist or weren't used or that there's a strong peaking away.

[00:18:01] Speaker 02:
Can you kind of deal with that?

[00:18:02] Speaker 00:
I can.

[00:18:03] Speaker 00:
So the claim language, first of all, with respect to step 1A, does not require a carbon black or any level of carbon black.

[00:18:16] Speaker 00:
If you look at it, it generally requires

[00:18:19] Speaker 00:
an infrared absorbing material, a radiation opaque material, and at least one binder having a softening or melting temperature less than 190.

[00:18:27] Speaker 00:
Those elements can be met by dyes.

[00:18:31] Speaker 00:
They don't have to be met by carbon black.

[00:18:33] Speaker 00:
So that's my first point.

[00:18:34] Speaker 00:
Second point is when it calls out and requires one binder having a softening or melting temperature less than 190, that includes nearly all ablation layers which were known in the art.

[00:18:46] Speaker 00:
And let me go through that carefully with you.

[00:18:49] Speaker 00:
So specifically, in the 859 patent, if we look at claim 22, which specifies some of the appropriate binders, the first call-out is a polyamide.

[00:19:02] Speaker 00:
In the examples of the 859 call-out, specifically one, Macromelt 6900.

[00:19:08] Speaker 00:
That was used in the prior art and disclosed in the prior art in the 330 publication, specifically in example one, at appendix

[00:19:18] Speaker 00:
2019.

[00:19:19] Speaker 00:
That additionally was disclosed by McDermott's patents in the 500 patents at example one, appendix 4204.

[00:19:28] Speaker 00:
The other binders which were included in the prior include ethylcellulose.

[00:19:35] Speaker 00:
The 275 patent describes it at 2424 of the appendix.

[00:19:40] Speaker 00:
And thirdly, and these are just examples, Your Honor, hydroxyethylcellulose was described in the 330 publication as well.

[00:19:47] Speaker 00:
at 2015.

[00:19:49] Speaker 00:
And so while not all conceivable ablation layers in the world, the predominant ones disclosed in example one of the 330 publication, example one of the 500 patent, were the exemplary ones.

[00:20:05] Speaker 00:
Macromail 6900 was in fact used in DPU.

[00:20:08] Speaker 00:
And I note, you're up for your honor and you know, there are concessions below that the DPU plate

[00:20:15] Speaker 00:
in the CVU plates, the commercial plates, which were digital, met steps 1A and 2 of the patents.

[00:20:22] Speaker 00:
And further, that thermal development means, as described in the 072 patent, the 761 patent, and 471 publication, met step 3.

[00:20:32] Speaker 00:
And so the question is one of combination.

[00:20:34] Speaker 00:
As Your Honor indicated, there are very few options in the art explicitly taught this particular combination.

[00:20:42] Speaker 00:
Specifically,

[00:20:43] Speaker 00:
At 3427, there's an article in Converting Magazine, which indicated that digital... When is the date of the article?

[00:20:50] Speaker 00:
January 2000, which is before the critical date, March 6, 2000.

[00:20:55] Speaker 00:
And it described that digital would become standard for high-quality flexo.

[00:21:01] Speaker 00:
And it further went on to say that they see trade shops, excuse me,

[00:21:10] Speaker 00:
Regular or digitally image plates are processed without solvents or liquids.

[00:21:15] Speaker 00:
And so they were describing Cyro fast and saying that digital was going to be combined with thermal in the prior.

[00:21:22] Speaker 02:
Thank you.

[00:21:23] Speaker 02:
I'm going to shift gears a bit to the secondary considerations.

[00:21:26] Speaker 02:
And that is here on summary judgment, even accepting that I'm an obvious to try, there's a relatively strong prima facie case of obviousness.

[00:21:38] Speaker 02:
Why is it not a problem that we've got these secondary considerations, particularly the commercial success and the invention thing, or the award thing?

[00:21:48] Speaker 02:
The award thing.

[00:21:48] Speaker 00:
The award thing.

[00:21:49] Speaker 00:
OK.

[00:21:49] Speaker 02:
That the district court seemed to discount.

[00:21:55] Speaker 02:
Now, why aren't there enough factual issues

[00:22:00] Speaker 02:
surrounding those secondary considerations to say, well, maybe that ought to drive us to say there's a problem with summary judgment here because she discounted them.

[00:22:10] Speaker 02:
She seems to have made factual decisions with respect to those.

[00:22:16] Speaker 00:
It's unquestionable that a required nexus is the burden of the patentee under this court's precedent.

[00:22:24] Speaker 00:
Further, this court precedent, the Supreme Court has said, well, you have very compelling and strong

[00:22:28] Speaker 00:
for prima facie case.

[00:22:30] Speaker 02:
Well Nexus though is usually dealing with the product when you've got fourteen hundred patents in an Apple phone and you want to say, and you're talking about one out of those fourteen so you want to show some nexus that drove that.

[00:22:43] Speaker 02:
This isn't that kind of thing.

[00:22:44] Speaker 02:
I mean the invention was really pretty much, the product pretty much captured what we're talking about here, right?

[00:22:55] Speaker 00:
In essence it did, but it combined digital

[00:22:58] Speaker 00:
which was described by the digital difference article as astounding and the best of the best.

[00:23:06] Speaker 00:
And thermal was described by Dupont itself at the trade show as revolutionary breakthrough technology.

[00:23:12] Speaker 04:
But the district court discounted sales, saying it didn't show profit.

[00:23:17] Speaker 04:
But success is shown by sales.

[00:23:21] Speaker 04:
Profit is a complicated question involving costs, but sales indicate success.

[00:23:29] Speaker 00:
I agree with your honor.

[00:23:30] Speaker 00:
The difficulty with their proof, and it's one affidavit, remember, it's the Zolli affidavit, it's at 10750, is that it only showed total sales over a very long period of time, 2000 to August of 2006.

[00:23:46] Speaker 00:
And those sales were $90 million.

[00:23:50] Speaker 00:
It only showed annual sales for the year 2005 of $25 million.

[00:23:56] Speaker 00:
And for the years, what they did is they did growth rates for the claim invention product.

[00:24:04] Speaker 00:
And when you do that and you start from zero, your growth rates are huge.

[00:24:09] Speaker 04:
What about market share?

[00:24:12] Speaker 04:
Market share is important, right?

[00:24:14] Speaker 00:
Oh, absolutely.

[00:24:15] Speaker 00:
And here, the record showed unquestionably that they had 85% of this particular market.

[00:24:21] Speaker 00:
And so market share would undercut whatever proof they had.

[00:24:26] Speaker 00:
But I guess my point is that the evidence of commercial proof is weak.

[00:24:30] Speaker 04:
If they had 85% market share, it sounds like they're dominating the market for that kind of product, which is commercial success.

[00:24:38] Speaker 00:
I apologize.

[00:24:39] Speaker 00:
Maybe I gave a bad answer.

[00:24:40] Speaker 00:
So for digital solvent,

[00:24:42] Speaker 00:
before they began commercializing digital phone.

[00:24:46] Speaker 01:
They had 85% before the invention, which you're trying to tell us.

[00:24:50] Speaker 00:
That's what I tried to say, and I said it poorly.

[00:24:52] Speaker 00:
So before they commercialized the invention, they hit 85% of the market already.

[00:24:57] Speaker 00:
And so it was easier for them to convert.

[00:25:00] Speaker 01:
And I know it isn't a question of whether the particular invention

[00:25:07] Speaker 01:
accounts for all of these secondary considerations.

[00:25:10] Speaker 01:
Isn't that a question of fact that needs to be explored?

[00:25:13] Speaker 00:
I don't think so, Your Honor.

[00:25:14] Speaker 00:
Why not?

[00:25:15] Speaker 00:
Because I think in the overall analysis, the Graham Factors ask the question, are the first three undisputed?

[00:25:24] Speaker 00:
And then is there an apparent reason to combine?

[00:25:27] Speaker 00:
And certainly secondary factors inform that.

[00:25:30] Speaker 00:
But it's a legal draw for the court and court below and de novo for you here.

[00:25:35] Speaker 00:
to determine whether the evidence here of commercial success undercut that reason and apparent reason to combine.

[00:25:42] Speaker 00:
And so further on this affidavit, remember it's one affidavit.

[00:25:45] Speaker 01:
What you're saying is they can't show a significant growth in market share after this came online.

[00:25:51] Speaker 00:
That's right.

[00:25:52] Speaker 00:
And the affidavit itself says that market acceptance was not immediate.

[00:25:56] Speaker 00:
So it wasn't an immediate hit.

[00:25:59] Speaker 00:
They had to spend considerable time and effort educating customers

[00:26:02] Speaker 00:
In other words, they had to do a lot other than the invention to sell it, and then it says only over time with those efforts did they only acquire 13% of the market after six years of extraordinary effort.

[00:26:16] Speaker 00:
And you're right, the district court said the numbers do little, but that's because they had 85% of the market before the claimed invention.

[00:26:24] Speaker 04:
In other words, they dropped from 85 to 13?

[00:26:28] Speaker 00:
The 13 is for the digital thermal only.

[00:26:31] Speaker 00:
85 was for digital solvent beforehand.

[00:26:34] Speaker 00:
And further, the evidence shows that they had to use special marketing techniques for this particular thing because digital solvent plates, without any change in the wall, were going to work in the thermal processor.

[00:26:49] Speaker 01:
You're making the argument that whatever the market need, it was not obvious to the market.

[00:26:56] Speaker 01:
Is that your point?

[00:26:57] Speaker 00:
But my point is that they needed to use special marketing techniques to drive their commercial success.

[00:27:03] Speaker 00:
It wasn't the invention.

[00:27:04] Speaker 02:
Before your time runs out, I wanted you to address the 758 patent and your friend's arguments with respect to inherency and how that... I didn't understand my friend's argument totally because it doesn't make sense to me.

[00:27:19] Speaker 00:
The point is that there were rejections by the examiner in order to overcome them

[00:27:26] Speaker 00:
They emphasized innumerable times that the difference between the claimed invention and the prior art was that they used an important annealing step, it was a critical annealing step, and that they needed to use this further treatment by annealing to get the results that they claimed.

[00:27:45] Speaker 00:
They further said that the claimed invention in response to an enablement rejection

[00:27:50] Speaker 00:
was demonstrated by examples three and four.

[00:27:52] Speaker 00:
And as Your Honor indicated, all of the examples highlight the key distinguishing feature.

[00:27:56] Speaker 00:
And the examples is the special annealing step.

[00:28:00] Speaker 00:
Further, as Your Honor noted.

[00:28:02] Speaker 02:
But the patent says may.

[00:28:04] Speaker 02:
It doesn't say must.

[00:28:06] Speaker 02:
If it were just the patent and the absence of prosecution history, would you agree that this is not a sufficient disclaimer contained in the statute?

[00:28:13] Speaker 00:
I would agree that it would be a very close case.

[00:28:15] Speaker 00:
So remember that the patent also describes this as a discovery.

[00:28:19] Speaker 00:
They noted a problem with thermal distortion.

[00:28:21] Speaker 00:
The special annealing was their discovery.

[00:28:24] Speaker 00:
And then they highlighted throughout making key distinctions between non-annealed and annealed substrates in place.

[00:28:31] Speaker 00:
I think it would be a very close call.

[00:28:33] Speaker 00:
Fortunately, we don't need to go there, because as your honor noted, the board itself relied upon the argument of the annealing to allow these claims in the first place.

[00:28:42] Speaker 00:
It must be a requirement of the claims, otherwise we wouldn't have been here in the first place.

[00:28:47] Speaker 00:
And here, it's undisputed.

[00:28:49] Speaker 00:
We do not anneal.

[00:28:50] Speaker 00:
We've never annealed.

[00:28:51] Speaker 00:
We dry glue on a substrate for bonding purposes.

[00:28:55] Speaker 00:
It's further undisputed that we tested the substrate before the glue drying and after the glue drying, and it did absolutely nothing to improve or control the dimensional stability of our substrates.

[00:29:08] Speaker 00:
Further, the evidence is undisputed that when you commercially, excuse me, when you thermally develop one of our completed plates at a high end of the range,

[00:29:19] Speaker 00:
at 170, 179, they distort too much.

[00:29:22] Speaker 00:
They distort beyond the claim range.

[00:29:25] Speaker 00:
And so here, I think it's clear that we don't infringe because we don't anneal, and we don't infringe because there's no proof that we meet the subsequent requirements of 0.03% or less in both directions.

[00:29:42] Speaker 01:
That depends on whether annealing is a required part of the claim construct.

[00:29:47] Speaker 01:
It's actually separate, Your Honor.

[00:29:48] Speaker 00:
So there were two arguments made.

[00:29:50] Speaker 00:
And I agree that this report only went to the first one, the annealing issue.

[00:29:54] Speaker 00:
But we presented proof, which is undisputed, that our plates at 170, 179 do not infringe the latter part of the claim.

[00:30:04] Speaker 00:
Specifically, after thermal distortion, our plates distort in one of the directions more than

[00:30:12] Speaker 00:
0.03% when exposed and developed at 170 and 179.

[00:30:19] Speaker 00:
So between the temperatures of 100 and 180 degrees Celsius.

[00:30:24] Speaker 00:
And so this is a separate independent basis for doing that.

[00:30:27] Speaker 01:
So you went either way.

[00:30:29] Speaker 00:
Exactly right.

[00:30:30] Speaker 00:
So with that, if you have any questions, it's released at 859 patents.

[00:30:35] Speaker 00:
No?

[00:30:36] Speaker 00:
Thank you very much.

[00:30:45] Speaker 03:
Court has been very patient.

[00:30:47] Speaker 03:
I know I've overstayed my welcome, but to make no mistake, nobody thermally developed a digital plate before DuPont did, notwithstanding that that technology was there.

[00:31:01] Speaker 03:
And while they discovered that some could be developed, that was part of the invention and not part of the prior art.

[00:31:09] Speaker 03:
It is correct that we have evidence that we can then establish as a number of objective

[00:31:15] Speaker 03:
criteria, including evidence of unexpected results.

[00:31:19] Speaker 03:
There's evidence that the ability with digital thermal to actually get images as good as or better than the solvent development was unpredictable and unexpected.

[00:31:30] Speaker 03:
We have commercial success.

[00:31:32] Speaker 03:
We have industry praise.

[00:31:33] Speaker 03:
We have copying.

[00:31:35] Speaker 03:
The details of that copying.

[00:31:38] Speaker 01:
Do you think you would fare better at a trial on that question?

[00:31:41] Speaker 03:
I think, well, here's where we come in the end.

[00:31:44] Speaker 03:
We're dealing here with a KSR-type obviousness case.

[00:31:48] Speaker 03:
The more enlightened cases dealing with this issue, like Plantronics and the Mintz case that we cited, acknowledge that when you're dealing with one of these soft motivational issues, like common sense or market forces, that you have to be very careful to avoid the effect of hindsight.

[00:32:04] Speaker 03:
Then it's very important to carefully look at the objective evidence of non-obviousness to keep from lapsing into hindsight, because a determined advocate

[00:32:14] Speaker 03:
can make something look much simpler in hindsight than it was when people were there trying to do it.

[00:32:20] Speaker 03:
And we contend that to try to weigh this evidence, to weigh the evidence that there was a reason why people might have been dissuaded from using thermal, there was a reason why people might have been dissuaded from thinking you could develop off that abrasion layer, there were these other factors to weigh that evidence and decide as a matter of law that the invention is unpatentable.

[00:32:42] Speaker 03:
we think invades the province of the jury to draw reasonable inferences in favor of the patent holder.

[00:32:49] Speaker 03:
And the law, indeed the Constitution, requires that those inferences be preserved.

[00:32:54] Speaker 03:
And just to lastly deal with the point about the promotional literature, that was in an article announcing the introduction not of digital thermal.

[00:33:05] Speaker 03:
It was an article announcing that the thermal process was coming and it was limited to analog.

[00:33:12] Speaker 03:
Why?

[00:33:12] Speaker 03:
There clearly were problems in going on to the more refined digital development.

[00:33:18] Speaker 03:
Clearly, the experts at DuPont were going to have to, in the minds of the person who earned their skill in the art, figure out how to do it.

[00:33:26] Speaker 03:
And that, when you look at the articles, is in the future or on the horizon.

[00:33:31] Speaker 03:
There is nothing in there that suggests that the technology of the day was suitable for the development of digital folks.

[00:33:39] Speaker 03:
Thank you very much.

[00:33:40] Speaker 03:
Thank you.

[00:33:40] Speaker 03:
We thank both parties and the case is submitted.