[00:00:04] Speaker 05: Before we begin the hearings, we have a motion for admission. [00:00:15] Speaker 03: I have an admission this morning. [00:00:18] Speaker 03: It's always both happy and sad because I'm happy to do the admission for one of my law courts, but it also means traditionally that it's because they're leaving me and moving on. [00:00:28] Speaker 03: And that's the case today. [00:00:29] Speaker 03: Alan has been with me for just about a year now. [00:00:33] Speaker 03: a fantastic clerk, and I know he's going to have a great career. [00:00:38] Speaker 03: I'm particularly pleased that he's moving on to be a public defender in Miami, which is not a typical path for our court's clerk, but I think is very admirable to do that kind of public service. [00:00:49] Speaker 03: So with that, I move the admission of Alan Cathier, who is a member of the bar and is in good standing with the highest court in New York. [00:00:57] Speaker 03: I have knowledge of his credentials and am satisfied that he possesses some necessary qualifications. [00:01:02] Speaker 05: Judge Chen? [00:01:03] Speaker 03: I wholeheartedly agree. [00:01:05] Speaker 05: And so do I. The motion is granted. [00:01:06] Speaker 00: And our first case is Everlight Electric. [00:01:32] Speaker 05: Are counsel ready to proceed? [00:01:34] Speaker 03: Go ahead. [00:01:36] Speaker 05: Good morning. [00:01:44] Speaker 02: May it please the Court, Ken Gallo of Paul Weiss for the appellant Nietzsche. [00:01:48] Speaker 02: We respectfully submit that the judgment of invalidity on the 925 patent and the 960 patent is not supported by substantial evidence. [00:01:57] Speaker 02: It is based on expert testimony [00:02:00] Speaker 02: that is unsupported by and contradicted by the prior art in the record. [00:02:05] Speaker 02: For example, with respect to the 925 patent, the testimony was that the prior art barrettes disclosed using a single yellow phosphor to make white light. [00:02:17] Speaker 05: The testimony was... Every light contends that in the red brief that you never raised the argument that the three-color approach was conventional wisdom at the time of the invention below. [00:02:29] Speaker 02: That's not true, Your Honor. [00:02:30] Speaker 05: We raised it... So where is that in the record? [00:02:32] Speaker 02: It's at Appendix 16414, for example, in the JMLL briefing. [00:02:37] Speaker 02: And it's in other places throughout the record in opening statement and other direct... But it is definitely in the JMLL in Appendix 16414. [00:02:45] Speaker 02: I'm sorry, could you... 16... 414 is what my notes say. [00:02:49] Speaker 02: I believe that's correct. [00:02:51] Speaker 02: I'll look in another location to be absolutely sure. [00:02:58] Speaker 02: And it was raised in various locations, which we cited in our brief, throughout the course of the testimony. [00:03:08] Speaker 02: We have citations, for example, in appendix 19765. [00:03:13] Speaker 02: And we have different citations in our brief where it was raised in the record below, Your Honor. [00:03:18] Speaker 02: But it was actually in the record at JMOL for starters. [00:03:23] Speaker 02: Here's the issue, though, Your Honor. [00:03:28] Speaker 02: The testimony on the Barretts patent was, what color is the phosphor? [00:03:33] Speaker 02: The answer, yellow. [00:03:35] Speaker 02: What kind of phosphor? [00:03:36] Speaker 02: Answer, yellow. [00:03:37] Speaker 02: That's at 17583, 17597. [00:03:42] Speaker 02: That testimony is objectively wrong. [00:03:45] Speaker 02: Barretts says repeatedly it's making a white light with the use of green, blue, and red phosphors. [00:03:53] Speaker 02: That's at 19767, for example, 19768. [00:03:57] Speaker 02: In the context of an IPR, the PTAB just concluded that Barretts does not disclose a yellow phosphor. [00:04:05] Speaker 02: But the district court, in denying our JMOL, wrote. [00:04:10] Speaker 04: What did it mean in Barretts when it said phosphor parentheses as close parentheses? [00:04:16] Speaker 04: I think that's where I think some of the decision making was zoning in on, right? [00:04:22] Speaker 04: Right. [00:04:22] Speaker 04: That Barretts therefore [00:04:24] Speaker 04: obviously must have been contemplating either multiple phosphors or perhaps a single phosphor that would be combined with an LED. [00:04:32] Speaker 02: Right, so two answers to that, Your Honor. [00:04:33] Speaker 02: Answer number one is when you read that passage in context, it's discussing the different, either a phosphor or it sometimes refers to it as a luminescent or fluorescent, and then it says phosphor or luminescent is my recollection in parens, meaning you could use [00:04:51] Speaker 02: two different luminescent materials. [00:04:54] Speaker 02: It's still not suggesting only one. [00:04:56] Speaker 02: And secondly, it doesn't disclose a yellow phosphor alone. [00:05:01] Speaker 02: It discusses red, blue, and green phosphors repeatedly throughout the specification. [00:05:09] Speaker 04: But what if we were to conclude that, at least for Berets, under this very highly differential substantial evidence standard, we're left to conclude that Berets did [00:05:20] Speaker 04: suggest something about using a single phosphor, not multiple phosphors. [00:05:24] Speaker 04: I'm not saying that gets, you know, the jury all the way home to finding the claims invalid, but nevertheless, at least there's a conceptual teaching of using a single phosphor, not multiple phosphors, along with an LED. [00:05:38] Speaker 02: Well, Your Honor, first, you used the word suggest, and I think it's important that it doesn't actually [00:05:44] Speaker 02: say that anywhere. [00:05:46] Speaker 02: And the expert testimony was that it said a yellow phosphor. [00:05:49] Speaker 02: And I think that's an important thing, because it's a misstatement of the prior art, a clear misstatement of the prior art. [00:05:55] Speaker 02: I don't think, even if it suggested a yellow phosphor. [00:05:58] Speaker 04: All right. [00:05:59] Speaker 04: Let's assume for the moment it didn't say yellow phosphor. [00:06:01] Speaker 04: And perhaps that's a misstatement. [00:06:05] Speaker 04: Well, then isn't that something for you to deal with on cross-examination or closing or something else? [00:06:11] Speaker 02: There was cross-examination on that question. [00:06:14] Speaker 02: There was direct testimony that it didn't do it. [00:06:17] Speaker 02: Now, unfortunately, Nietzsche lost anyway. [00:06:20] Speaker 02: But my suggestion to you, Your Honor, is that the question here is substantial evidence. [00:06:27] Speaker 02: In the perfect world, cross-examination solves the problem, granted. [00:06:31] Speaker 02: But when an expert gets on the stand and says the prior art says X, and the prior art does not say X, it says something different. [00:06:38] Speaker 02: It says three phosphors. [00:06:41] Speaker 02: Respectfully, this Court's jurisprudence is that that is not substantial evidence under Upjohn and under the, in the John Hopkins case. [00:06:48] Speaker 02: Upjohn is an invalidity case based on incorrect, objectively incorrect expert testimony. [00:06:55] Speaker 02: Johns Hopkins is an infringement case based on the same. [00:06:58] Speaker 02: And while we would all wish that cross-examination would solve the problem, sometimes it doesn't. [00:07:03] Speaker 04: And I don't think the fact that it costs. [00:07:08] Speaker 04: debate this, but that's not the only place that talks about a yellow phosphor. [00:07:13] Speaker 04: There's other references that talk about yellow phosphor. [00:07:15] Speaker 04: It was also known that blue plus yellow will get you white. [00:07:22] Speaker 04: So if we know that you can create light using an LED plus one phosphor, we know that blue plus yellow equals white [00:07:36] Speaker 04: Why would you do it? [00:07:37] Speaker 04: Now, you know, thanks to Mr. Nakamura, he comes through with the big breakthrough of a blue LED, which everybody had been hunting for for decades. [00:07:48] Speaker 04: Now, it's the pieces start to, at least from that perspective, fall together. [00:07:55] Speaker 02: This goes to the second point that I was going to address, Your Honor, is whether there's substantial evidence of motivation to combine. [00:08:02] Speaker 02: And I respectfully submit there's not, notwithstanding [00:08:05] Speaker 02: your point, and here's why. [00:08:07] Speaker 02: Number one, there's really three problems with the evidence on motivation to combine. [00:08:11] Speaker 02: Number one, it started from the false proposition that Barretts told the person of ordinary skill in the art, go find something yellow. [00:08:18] Speaker 02: Barretts didn't tell him that. [00:08:20] Speaker 02: It said blue, green, red. [00:08:22] Speaker 02: It starts from the second proposition that Tadatsu, the other primary reference, disclosed white light. [00:08:28] Speaker 02: That was also an incorrect statement, wrong. [00:08:31] Speaker 02: Wrong. [00:08:32] Speaker 02: Tadatsu does not. [00:08:33] Speaker 02: It discloses a blue light, improvement to blue light. [00:08:36] Speaker 02: And then it said, once you know you have yellow phosphor, it's easy. [00:08:40] Speaker 02: You just go over to Hoffman, and you just go over to Phillips, and you find YAG. [00:08:46] Speaker 02: But if it doesn't start from the false premise that Beretz discloses a yellow phosphor, you don't get there. [00:08:52] Speaker 02: Secondly, the undisputed [00:08:56] Speaker 02: position of both parties and all of the prior art that Everlight advocates, all through the prior art, is that color rendering is very important to have a successful product. [00:09:07] Speaker 02: That's what the market demands. [00:09:09] Speaker 02: That's what a person of ordinary skill in the art would understand, who read Hoffman, who read Berets, who read Phillips. [00:09:15] Speaker 02: All of them talk about the importance of color rendering. [00:09:19] Speaker 02: But then it doesn't lead you to just combine blue and yellow, because Hoffman says, [00:09:25] Speaker 04: Is color rendering in the claims? [00:09:27] Speaker 02: It's not in the claims. [00:09:28] Speaker 02: I don't think it has to be in the claims, Your Honor. [00:09:30] Speaker 02: Under KSR and under this Court's opinion in In Re Pasteur, I think KSR makes it absolutely clear that in considering a motivation to combine, it is proper to consider what a person of ordinary skill in the art would understand about market demands, what a person of ordinary skill would understand about what's important in order to have a successful product in terms of what the prior art teaches. [00:09:53] Speaker 02: In In Re Pasteur, [00:09:55] Speaker 02: It was the question of whether the cell, it was a case where we were putting a foreign DNA into a cell. [00:10:02] Speaker 04: It did not claim... The red brief was saying how this color rendering concept was something that wasn't really argued ever before. [00:10:10] Speaker 04: It maybe came up once in your JMAW, but it wasn't something that you were really talking about in front of the jury. [00:10:17] Speaker 02: It was raised below repeatedly, Your Honor. [00:10:19] Speaker 02: It was raised below [00:10:20] Speaker 02: I can give, Your Honor, citations where it was raised below repeatedly. [00:10:25] Speaker 02: It was in all of the prior art has it in, and throughout the record, there was discussion of color rendering. [00:10:35] Speaker 02: I'm sorry, Your Honor, I'm looking for the citation on that. [00:10:40] Speaker 02: It was raised in JMOL for sure, and color rendering [00:10:51] Speaker 02: was raised, and Schubert testified about color rendering. [00:10:55] Speaker 02: It was described in the specification as an advantage in the A91. [00:11:02] Speaker 02: Hoffman discusses color rendering, and it was raised at JMOL. [00:11:06] Speaker 04: I guess I'm curious, where did the experts say you would never use the YAG in addition to a blue light in order to make white light? [00:11:21] Speaker 04: color rendering is absolutely critical for a white light. [00:11:24] Speaker 02: Well, Phillips itself, the actual prior art reference itself says YAG is detrimental to color rendering at A19786. [00:11:37] Speaker 05: How do you respond to the redbrief argument that says that that's not true? [00:11:43] Speaker 05: The redbrief at 61 says E60 and 61. [00:11:49] Speaker 02: Right. [00:11:49] Speaker 02: I think, Your Honor, it's a misreading of the prior art. [00:11:51] Speaker 02: I think the prior art very clearly says Hoffman at 20410, it says YAG would definitely result in lower color rendering index. [00:12:03] Speaker 02: Phillips, 19786, YAG is detrimental to color rendering. [00:12:08] Speaker 02: It is only when YAG is used after the blue phosphor is used, where you already have white light, [00:12:18] Speaker 02: Hoffman and Phillips already had created white light and used multiple colors. [00:12:23] Speaker 02: They then added YAG in that context, and they surprisingly found that in that context, the color rendering was better. [00:12:31] Speaker 02: But it says YAG alone, they were surprised, because YAG alone definitely would result in worse color rendering. [00:12:40] Speaker 04: And so where did you actually present it to the jury, I guess is what I'm curious. [00:12:43] Speaker 04: Yes, I know it's written down perhaps. [00:12:46] Speaker 04: I mean, at least the way you're characterizing it in the reference itself. [00:12:50] Speaker 04: I don't know if the jury is reading every single reference. [00:12:53] Speaker 02: So there's, Your Honor, one of our witnesses, Doxy, D-O-X-S-E-E, at 17945, talked about the importance of good color rendering and that Nietzsche's LED had good color rendering. [00:13:06] Speaker 02: Everlight represented [00:13:08] Speaker 02: in opening that color rendering was a feature of Hoffman. [00:13:13] Speaker 04: Okay, I guess maybe I want something a little more specific. [00:13:17] Speaker 04: Where did one of your witnesses tell the jury you would not combine these references together with the primer references because color rendering is absolutely critical and look at these passages in these secondary references which talk about using this YAG is not good for color rendering. [00:13:35] Speaker 02: I have a, Your Honor, I can give you a citation that's unfortunately not in the appendix. [00:13:39] Speaker 02: On April 16, at pages 81 to 83, our expert said color rendering must be considered by a person of ordinary skill in the art when selecting a phosphor. [00:13:52] Speaker 02: So I can give you that reference. [00:13:54] Speaker 05: You're under rebuttal time, so you know. [00:13:56] Speaker 02: Yeah, thank you, Your Honor. [00:13:57] Speaker 02: I think I ought to stop then, because I would like to reserve some time for rebuttal. [00:14:03] Speaker 02: Thank you. [00:14:15] Speaker 01: I'd like to address the sufficiency of the evidence, but before getting into the evidence that we had cited in our brief on each of the points, I would like to just briefly address the conventional wisdom and color rendering questions that Your Honors have been asking. [00:14:36] Speaker 01: On conventional wisdom, Council has cited page A16414, and that states simply that it's a JMAWL, [00:14:45] Speaker 01: brief, and it states that the state-of-the-art prior to the Chia's invention was RGB LEDs or a phosphor-based solution with an essentially infinite number of choices. [00:14:54] Speaker 01: It does not say that the conventional wisdom is RGB, and that was not presented to the jury, as we have stated in the red brief. [00:15:03] Speaker 05: You're an expert, Dr. Bretschneider, discussing Barrett's patent. [00:15:09] Speaker 05: told the jury that it discloses blue LED mixed with yellow to get white. [00:15:17] Speaker 05: But Barrett seems to combine blue or UV with a generic phosphor. [00:15:22] Speaker 05: Where does it say a yellow? [00:15:24] Speaker 01: Your Honor, that's the, of course the references are read from the viewpoint of somebody skilled in the art. [00:15:29] Speaker 01: And our expert relied on column nine, lines 38 to 45, where the specification states that you can get white light [00:15:36] Speaker 01: by taking the blue LED and using either singular or plural phosphors. [00:15:41] Speaker 01: Their expert heard our expert say it, by the way, Your Honor, and did not disagree with that. [00:15:45] Speaker 01: Our expert said that tells somebody skilled in the art that if you want to get the white light, you can use a single phosphor and there is no dispute, Your Honor, that as a matter of science, the only way to get a white light from a single phosphor is with yellow. [00:15:57] Speaker 01: And everybody agreed with that. [00:15:58] Speaker 05: That's a fair answer. [00:15:59] Speaker 01: And the other side's expert did not agree and they didn't even cross our expert and say, no, that's not the case. [00:16:04] Speaker 01: So Barrette's absolutely teaches white light obtained by blue plus yellow. [00:16:09] Speaker 01: And, Your Honor, it's also in their specification, the Tadatsu reference. [00:16:12] Speaker 01: In column one and column two, they say there are four prior references of Japanese publications that all disclose the use of blue plus yellow to get the white light. [00:16:23] Speaker 01: So it's admitted in their specification, and their experts said that once the blue light came out, everybody had a motivation to do a simple blue plus yellow solution. [00:16:32] Speaker 01: Just to say that the [00:16:33] Speaker 01: conventional wisdom was to do a three-color solution, which was more complicated, is contrary to the references, their specification, and their expert's admission that there is a very high level of motivation to make a blue LED combined with yellow to make white light. [00:16:49] Speaker 01: We also, we're talking about sufficiency of the evidence, we have the OSRAM simultaneous invention. [00:16:54] Speaker 01: Six weeks after the Nichea's earliest possible filing date, OSRAM files an independent patent application in Germany, [00:17:03] Speaker 01: on the exact same solution, six weeks later. [00:17:07] Speaker 01: And it is taking the blue LED, adding YAG to it, to get white light. [00:17:12] Speaker 01: Now, once again, this is sufficiency of the evidence. [00:17:14] Speaker 01: And this Court's precedent states that the jury could take that as persuasive evidence as to the fact that that was something of ordinary skill. [00:17:24] Speaker 04: What's the reason, do you think, why it took three years after Nakamura's blue LED to reduce to practice this combination? [00:17:33] Speaker 01: Well, Your Honor, that was an issue that came out actually in the trial. [00:17:35] Speaker 01: It wasn't really three years to begin with. [00:17:37] Speaker 01: What happened is the blue LED came out, and then there's a 1994 Nakamura reference that states that now we're starting to get commercial manufacture of the blue LEDs. [00:17:48] Speaker 01: They came up with the idea, and then they had to go and refine it and make something that was viable. [00:17:52] Speaker 01: So that was an issue of fact for the jury. [00:17:54] Speaker 01: So the blue LED comes out in 1994. [00:17:56] Speaker 01: There's references saying combine it with yellow in 1995. [00:18:00] Speaker 01: And then in 1996, while they're still making improvements to the blue LED, which are in limited supply at that point, both the Chia and Osram both come up with what is the most obvious solution in the world, which is to use blue plus yellow to make white. [00:18:13] Speaker 01: And Your Honor, there's a high degree of evidence that says that there's a limited number of phosphors that you can use in order to survive the severe operating conditions of things like lasers, [00:18:28] Speaker 01: mercury vapor lamps, et cetera. [00:18:30] Speaker 01: So some would be motivated to go to YAG because their experts said there's a limited number. [00:18:35] Speaker 01: The Hoffman reference states that YAG is a welcome addition for a very limited number of phosphors that can withstand the conditions of the mercury vapor lamps. [00:18:43] Speaker 01: There were no white LEDs in 1996. [00:18:46] Speaker 01: So when somebody's looking for the appropriate phosphor, they have to look to some other lighting technologies. [00:18:52] Speaker 01: And the one that was being used for lasers, mercury vapor lamps, et cetera, with any harsh conditions was YAG. [00:18:58] Speaker 01: Nechia went to it, so did Ostram. [00:19:00] Speaker 01: The jury had plenty of evidence to decide that, in fact, this was an obvious thing to do. [00:19:05] Speaker 01: And I would also point out this color rendering, Your Honor, they did not bring that up with the jury at all. [00:19:11] Speaker 01: It came up twice in the transcript on color rendering. [00:19:14] Speaker 01: One time it had to do with an enablement issue. [00:19:18] Speaker 01: Another time it had to do with just some background issues. [00:19:21] Speaker 01: But nobody said that color rendering [00:19:24] Speaker 01: would dissuade somebody from using the ad. [00:19:26] Speaker 01: And in fact, the references that they're citing, both Hoffman and Phillips, they're relying on paragraphs in both of those references that were never even testified to by either expert or brought to the attention of the jury. [00:19:38] Speaker 01: It simply counsels interpretation on appeal as to what that, in fact, would teach somebody. [00:19:45] Speaker 04: And are you aware of that expert statement that the other side raised in the opening argument that's [00:19:53] Speaker 04: Doesn't happen to be in the joint appendix, but is in the record somewhere? [00:19:56] Speaker 01: I am not aware of that, Your Honor. [00:19:57] Speaker 01: We did a search of the appendix, and we found color rendering had to do with a testimony at A17944. [00:20:03] Speaker 01: It had to do with an award. [00:20:05] Speaker 05: Are those awards in the record anymore? [00:20:08] Speaker 01: There are awards in the record, Your Honor. [00:20:10] Speaker 01: And that one actually is interesting, because that's an award that was issued seven years after their alleged invention date, and it had to do with coming up with a red phosphor that was invented at that point years later that made the color rendering better. [00:20:23] Speaker 01: In other words, they made a blue plus yellow, and the color writing wasn't as great as they wanted it to be. [00:20:27] Speaker 01: And they came up with a red foster dad to it, and they got an award for that. [00:20:30] Speaker 01: Nothing to do with this invention at all, Your Honor. [00:20:33] Speaker 05: Where were those? [00:20:34] Speaker 05: I mean, they're evidence. [00:20:35] Speaker 05: But where were those in the record, in the appendix? [00:20:38] Speaker 05: All I found was a press release. [00:20:42] Speaker 01: Oh, Your Honor, I'm not sure if the awards themselves are in the appendix. [00:20:46] Speaker 05: There are references to them, yes. [00:20:47] Speaker 01: Yeah, that's right. [00:20:48] Speaker 01: That's right, Your Honor. [00:20:51] Speaker 04: Can we talk about the 9-6-0 patent? [00:20:53] Speaker 04: Yes, I was just going to try that here. [00:20:54] Speaker 04: Specificated to JP 959? [00:20:56] Speaker 04: Yes, Your Honor. [00:20:59] Speaker 04: Is it a misreading of the reference to rely on figure 1C as an embodiment disclosed in JP 959 when the better reading is that it's just an intermediate step to arrive at the final product, which is figure 1E, where the [00:21:20] Speaker 04: the devices turned upside down in order to get a concentration of phosphor down towards the LED component. [00:21:31] Speaker 01: Your Honor, for the 960, the evidence the jury had was actually two-fold. [00:21:38] Speaker 01: They had evidence as to why someone would want the phosphor to be placed closer to the chip in some circumstances, and we relied on the Berets reference for that. [00:21:48] Speaker 01: And the JP959 was teaching you the how, how to accomplish it. [00:21:52] Speaker 01: In other words, that figure 1C shows you the gravity. [00:21:55] Speaker 01: If you take the chip and you put the resin on top of it as a phosphor interspersed throughout it, because it's liquid molten, and you have phosphor particles in there, and you let it sit, then it will settle down. [00:22:06] Speaker 01: And if you flip it over, it'll go towards the surface away from the chip. [00:22:10] Speaker 01: So our expert relied on the JP959 to show that people would know [00:22:15] Speaker 01: that you can accomplish either one of those two, whether or not that's the final step. [00:22:18] Speaker 01: It doesn't really matter. [00:22:19] Speaker 01: That has to do with how you accomplish it. [00:22:21] Speaker 01: In other words, if you let it sit there and let it settle to the chip and you don't flip it over, you can concentrate it towards the chip. [00:22:28] Speaker 01: So it's simply there, your honor, to show that someone would know how to achieve the concentration near the chip versus the surface. [00:22:34] Speaker 01: But Beretz is the one that provides the motivation and reason to do it, like why you would do it. [00:22:39] Speaker 01: Beretz teaches that certain phosphors are, in fact, subject to degradation. [00:22:43] Speaker 01: And because they're subject to degradation based on the, sorry, the fosters are subject to degradation based on the environment. [00:22:52] Speaker 01: And Barrett says for fosters that are subject to degradation based on the environment, you need to put them in the resin. [00:22:58] Speaker 01: And our expert explained that. [00:22:59] Speaker 01: The expert did not disagree. [00:23:00] Speaker 01: And our expert said as a result of the fact that it's subject to degradation from the environment, you want to place it as far as you could away from the surface, because these are permeable, these resins, to get away from the environment. [00:23:11] Speaker 01: and that's why there be a reason to bring it down. [00:23:13] Speaker 04: Did the District Court judge rely on that in the Jamal decision? [00:23:17] Speaker 01: Let me check that, Your Honor. [00:23:18] Speaker 01: I think he did. [00:23:19] Speaker 01: But I believe he relied on another... If I can just address one other point and then I'll get right back to that. [00:23:27] Speaker 01: The judge also relied on KSR, which states when there's limited options, then it is obvious to do the routine predictable things. [00:23:35] Speaker 01: And our evidence showed there were only three options with respect to concentration. [00:23:39] Speaker 01: One is you concentrate it [00:23:40] Speaker 01: away from the chip towards the surface. [00:23:42] Speaker 01: The other is that you concentrate it towards the chip away from the surface. [00:23:46] Speaker 01: And the third option is simply have an even concentration. [00:23:49] Speaker 01: So if there's only three options under KSR, Your Honor, that would suggest that, in fact, it's obvious because a person skilled in the art would be able to routinely look at the different phosphor he has and decides, he or she decides, is that something I want to place near the surface, near the chip, or it doesn't matter? [00:24:05] Speaker 01: And I would like to point one other thing out before I get to the J-Mall we're looking at right now, Your Honor. [00:24:11] Speaker 01: And that is the 960 patent is not teaching that it's against the conventional wisdom or it's something special about concentrating the phosphor near the chip. [00:24:22] Speaker 01: It actually discloses that you can concentrate it towards the surface away from the chip or you can concentrate it towards the chip just depending on the particular phosphor that you are looking at. [00:24:33] Speaker 01: So it's saying either one. [00:24:34] Speaker 01: Claim one says [00:24:36] Speaker 01: blue LED plus yellow, and you concentrated either near the chip or away from the chip. [00:24:42] Speaker 01: Claim two claims the embodiment where it's towards the chip, and claim three where it's away from the chip. [00:24:47] Speaker 01: So there's nothing special here other than the obvious idea that there are some phosphors that are subject to degradation, as our experts testify, due to intense heat from the chip, whereas other phosphors are subject to degradation from the environment and to be placed towards the chip. [00:25:04] Speaker 01: So I think under KSR, and I believe that's what the district court relied on, is that he relied on the fact that there were limited options. [00:25:11] Speaker 01: And therefore, under KSR, since there's only three options, that would be within routine, ordinary skill to get to that. [00:25:16] Speaker 01: Our expert testified that barrettes would motivate you to take the phosphor and place it near the chip for those resins that are subject to degradation from the environment, which is clearly taught by barrettes. [00:25:28] Speaker 01: So whether or not the district court mentioned that point, your honor, [00:25:32] Speaker 01: It is in the record, and it's evidence that the jury could have relied on, and I believe did rely on the, could have relied on, excuse me, to say that a person would have a reason to concentrate the phosphor near the chip for the type of phosphors that Beretz was talking about that are subject to degradation due to the environment. [00:25:50] Speaker 01: And once again, their expert did not disagree with that, that Beretz had that teaching when he testified. [00:25:59] Speaker 04: Hypothetically, we would have [00:26:02] Speaker 04: the jury's verdict of invalidity in the 925 and the 960, does that make your cross-appeal move? [00:26:10] Speaker 01: Your Honor, as a practical matter, I would say, you know, that would be, obviously the inequitable conduct is a bit different, and there's some claims there, but the patents are expiring. [00:26:19] Speaker 01: So if it was affirmed on, in other words, there's a possibility, I suppose, they could assert some other claims against us that are not, that we're not the subject of this appeal. [00:26:29] Speaker 01: But I think, as a practical matter, if you found that these claims were invalid, whatever additional relief might come from inequitable conduct is probably, in a practical sense, moot. [00:26:37] Speaker 01: You know what I mean? [00:26:38] Speaker 05: You're only asking the same question about functional mootness or legal mootness. [00:26:43] Speaker 01: No, as a practical matter. [00:26:44] Speaker 01: Because if it's inequitable conduct for claim 14, then the whole patent would be unenforceable. [00:26:49] Speaker 01: And not all the claims are at issue number one. [00:26:51] Speaker 01: And we would probably ask for attorney's fees. [00:26:53] Speaker 01: on that basis as well. [00:26:54] Speaker 04: So this is not a contingent cross-appeal? [00:26:57] Speaker 01: No. [00:26:57] Speaker 01: No, it's a legal matter. [00:26:59] Speaker 01: It is something. [00:26:59] Speaker 01: It's a separate issue. [00:27:00] Speaker 01: And there is additional relief slash benefits, you might say, that would be obtained by that if we were, in fact, right about it. [00:27:06] Speaker 05: So if we essentially the same question, that is, if we agree with you on obviousness, do we have any reason to reach indefiniteness? [00:27:15] Speaker 01: No, you don't, Your Honor. [00:27:16] Speaker 01: That's completely alternative. [00:27:17] Speaker 01: Yes. [00:27:18] Speaker 01: Your Honor, I believe I only have two minutes left. [00:27:20] Speaker 01: Just very quickly, on inequitable conduct, [00:27:23] Speaker 01: Our belief is that the judge's findings on materiality were inconsistent with the enablement finding, because we only had one enablement theory. [00:27:32] Speaker 01: Excuse me, enablement theory. [00:27:33] Speaker 01: And that was that you can't get to 600 nanometers in the wavelength, which is a claim range, unless you can't get to 600 using the one method disclosed in the patent. [00:27:45] Speaker 01: And that was increased gambling. [00:27:46] Speaker 04: You've got to lean both on materiality and intent, right? [00:27:49] Speaker 01: That's right, Your Honor. [00:27:50] Speaker 04: And the district court judge concluded [00:27:52] Speaker 04: It's not the single most reasonable inference that they were deceptive in whatever allegedly false statement was made in the patent. [00:28:03] Speaker 01: Yes, Your Honor. [00:28:04] Speaker 04: So what's the standard of review on that finding? [00:28:06] Speaker 01: On that point, Your Honor, if you find that materiality was in fact wrong, then I think you'd have to remand it because he did. [00:28:11] Speaker 04: No, but what's the standard of review on a district court's determination on intent in an equitable conduct? [00:28:18] Speaker 01: I believe that'd be clearly erroneous, Your Honor. [00:28:21] Speaker 01: OK. [00:28:21] Speaker 01: And but, Your Honor, in that case, he didn't address one of the things he said was inconsistent with the jury verdict. [00:28:25] Speaker 01: He said that the actual test the jury was presented that said you couldn't get to 600 in the inequitable conduct trial, he said, well, maybe they did get to 600 with those identical tests. [00:28:36] Speaker 01: Their expert came in in the inequitable conduct trial and said, I've re-looked at these tests, and in fact, they get you to 592. [00:28:42] Speaker 01: But those are the identical tests the jury said do not get you near 600. [00:28:45] Speaker 01: So for intent, we would say his intent analysis was flawed. [00:28:49] Speaker 01: because even for intent he would, it's relying on evidence that was inconsistent with the jury's verdict necessarily. [00:28:57] Speaker 05: Thank you, Ron. [00:29:03] Speaker 02: Thank you, counsel. [00:29:04] Speaker 02: May it please the court, I'd like to address the 9-6-0 patent, which I didn't do in the opening comments. [00:29:09] Speaker 02: As Judge Chen, you pointed out, the [00:29:12] Speaker 02: Issue with the 960 patent from our perspective is that their expert testified about step 1C as if it was a final step in a method patent. [00:29:20] Speaker 02: It is not a final step. [00:29:21] Speaker 02: It's an intermediate step. [00:29:23] Speaker 02: And he suggested that the intermediate step was a teaching of the patent, which it is not. [00:29:29] Speaker 02: The final step of the patent, the teaching of the patent is to invert the LED device. [00:29:34] Speaker 02: And when the LED device is inverted, it does not teach phosphors settling down toward the LED chip. [00:29:40] Speaker 02: It teaches phosphor in a uniform dome below the LED chip. [00:29:45] Speaker 02: The district court judge accepted at JMOL the characterization of 1C as a teaching of the patent. [00:29:52] Speaker 02: And that is wrong. [00:29:53] Speaker 02: And when he cited 1C, the figure wasn't even in the evidence that he cited as support. [00:29:58] Speaker 04: But what if there's a larger way of looking at understanding the reference in the sense that [00:30:07] Speaker 04: It talks about a desire and interest in creating some concentration of a phosphor and creating some kind of phosphor concentration gradient. [00:30:19] Speaker 04: And then it does, in fact, disclose 1C. [00:30:25] Speaker 04: I mean, it's taught. [00:30:26] Speaker 04: I mean, it's there. [00:30:27] Speaker 04: It's illustrated in the patent. [00:30:29] Speaker 04: We can't walk away from that and turn a blind eye to it. [00:30:33] Speaker 04: I understand the argument that it's merely an intermediate step, but then [00:30:38] Speaker 04: If you go on and say, OK, so there's only a few ways to concentrate the phosphor, and one is near the top and the other is near the bottom, and then either one is perhaps the express intention of the 969, but nevertheless, the other one is a very obvious alternative to that. [00:31:02] Speaker 02: Well, Your Honor, it actually doesn't teach how to create a phosphor [00:31:07] Speaker 02: concentration near the LED chip in step 1C. [00:31:12] Speaker 02: It's not a final step so it doesn't teach about drying. [00:31:14] Speaker 02: It doesn't teach about when the solvent dissolves what's going to happen. [00:31:18] Speaker 02: We don't know what happens if you stop at figure 1C. [00:31:21] Speaker 02: The patent doesn't teach that. [00:31:23] Speaker 02: It only teaches it about 1E when it says now you do two more things or three more things and you end up with a uniform dome shape. [00:31:30] Speaker 02: So I don't think you have to read into the patent things that are not there and the teaching is not there. [00:31:37] Speaker 02: and it's only the final step that is taught. [00:31:39] Speaker 02: Importantly, though, Barretts also does not teach that you should have a gradient toward the LED chip. [00:31:46] Speaker 02: Barretts does not recognize the problem of moisture, and it has four locations, none of which are a gradient toward the LED chip. [00:31:57] Speaker 05: Thank you very much. [00:32:08] Speaker 01: I don't have any other further comments unless you have questions for me.