[00:00:01] Speaker 01:
The first case for argument this morning is 162576, trustees of Boston University versus Everlight Electronics.

[00:00:09] Speaker 01:
Mr. Russell, whenever you're ready.

[00:00:14] Speaker 01:
There are a lot of issues in this case, right?

[00:00:16] Speaker 01:
I'm going to sort it out.

[00:00:19] Speaker 05:
Yes.

[00:00:19] Speaker 05:
Thank you, Your Honor.

[00:00:19] Speaker 05:
There are a lot of issues in this case, and I would welcome the Court's direction about what you'd like to hear about.

[00:00:24] Speaker 05:
But I'd like to start with enablement, in particular with the

[00:00:29] Speaker 05:
Question of whether the patent enables the production of a particular version of the device in which a monocrystalline GAN growth layer is grown directly on an amorphous GAN buffer layer.

[00:00:40] Speaker 01:
Our expert explained that there... Let me just ask you about that because we don't have that much time.

[00:00:44] Speaker 01:
There are a number of arguments in response to your position.

[00:00:48] Speaker 01:
One of them is that you don't really have to enable all of the permutations.

[00:00:52] Speaker 01:
There were like six permutations and this is just one of the six.

[00:00:56] Speaker 01:
You agree that that's the case, right?

[00:00:57] Speaker 01:
This is just one of six permutations or however many?

[00:01:00] Speaker 05:
That is correct.

[00:01:01] Speaker 01:
Okay.

[00:01:02] Speaker 01:
So what is your response to what is, I guess, a legal question about whether or not all of them have to be?

[00:01:07] Speaker 05:
This court has said time and time again that

[00:01:09] Speaker 05:
The patent has to enable the full scope of the claims.

[00:01:12] Speaker 05:
And that only makes sense.

[00:01:13] Speaker 05:
There's no question that if each of these devices have been claimed separately, they would have to enable each claim.

[00:01:18] Speaker 05:
Or if each had been claimed in a different patent, they would have to be enabled in each patent.

[00:01:22] Speaker 05:
There's no reason they should be able to get around that.

[00:01:24] Speaker 04:
We're talking about the claims here or permutations of the different embodiments?

[00:01:29] Speaker 05:
We are talking about permutations of a particular claim, an embodiment of a particular claim.

[00:01:34] Speaker 04:
But my point is... All permutations of the claims have to be enabled?

[00:01:37] Speaker 04:
Yes.

[00:01:39] Speaker 01:
Well, there can be circumstances where that's not exactly the case.

[00:01:42] Speaker 01:
It's kind of apples and oranges.

[00:01:43] Speaker 01:
If you've got these genius species claims, at least there's at least one non-prec opinion that I think the other side cites that says, you know, there are a thousand possibilities here.

[00:01:53] Speaker 01:
You don't have to enable each and every one of them distinctively.

[00:01:56] Speaker 05:
Yeah, I think what that case says, and it's consistent with the general case law, is you don't have to give a recipe for the creation of every permutation.

[00:02:03] Speaker 05:
But you have to say enough to enable somebody who is skilled in the art using the

[00:02:07] Speaker 05:
what is taught on the patent, what they know, and reasonable experimentation to create every version of the claimed device.

[00:02:12] Speaker 04:
So there can be gaps in the recipe and the placida fills in those gaps.

[00:02:16] Speaker 05:
Exactly.

[00:02:17] Speaker 04:
How did that happen here?

[00:02:18] Speaker 05:
Well, what happened here is, let me talk about the two problems that we've identified.

[00:02:22] Speaker 05:
One is the griddle effect.

[00:02:24] Speaker 05:
And our expert, Dr. Fitzgerald, testified that the only way you can crystallize the growth layer is by getting a lot of heat to it.

[00:02:30] Speaker 05:
And he testified without contradiction that the only way the patent teaches to do that is to heat the substrate, thereby sending that heat through the buffer layer up to the growth layer.

[00:02:38] Speaker 05:
And so the buffer layer is never going to be cooler than the growth layer.

[00:02:42] Speaker 05:
And as a consequence, because the two layers are made of the same substance, they're subject to the same amount of heat for the same amount of time, he says if you crystallize the growth layer, you're necessarily going to create crystals in the buffer layer.

[00:02:55] Speaker 05:
Or conversely, if you find some way

[00:02:57] Speaker 05:
to avoid crystallizing the buffer layer.

[00:03:00] Speaker 05:
You're not going to get enough heat up to the top layer to crystallize the monocrystalline buffer layer.

[00:03:05] Speaker 05:
And that argument essentially went unrebutted.

[00:03:08] Speaker 05:
Dr. Piner, their expert, explained that it might be possible to avoid crystallizing the amorphous buffer layer following the directions that the high temperature set.

[00:03:17] Speaker 05:
But he never went the next step and said what would happen

[00:03:19] Speaker 05:
to the growth layer if you did that.

[00:03:21] Speaker 05:
And he never claimed that if you somehow kept the buffer layer thick enough, cool enough, and heated it in a short amount of time enough to keep it from crystallizing, you would somehow nonetheless crystallize the top layer.

[00:03:33] Speaker 05:
Now, Dr. Mustakis talked about epitaxial overgrowth.

[00:03:37] Speaker 05:
But that testimony, I think, only confirms our understanding of the resulting structure.

[00:03:42] Speaker 05:
And I think it's helpful.

[00:03:44] Speaker 05:
He's asked directly by his own counsel at page 2048

[00:03:48] Speaker 05:
or 2248 of the joint appendix, what the resulting structure of epitaxial overgrowth will be.

[00:03:54] Speaker 05:
And it's short enough and important enough, I'd like to read it to you.

[00:03:57] Speaker 05:
He's asked at line eight, question, so you go from amorphous, yes, question, to polycrystalline, yes, and so then that is where the buffer comes in between the SAFAR.

[00:04:07] Speaker 05:
That's correct, and here's the critical question.

[00:04:09] Speaker 05:
And then ultimately you have the amorphous, the polycrystalline, and on top of that, that is on top of the polycrystalline,

[00:04:17] Speaker 05:
the survival of the fittest, and you get a near-imprinsic monocrystalline layer.

[00:04:21] Speaker 05:
That is correct.

[00:04:22] Speaker 05:
And that testimony is consistent with the testimony from the inventor and from Dr. Fitzgerald.

[00:04:28] Speaker 02:
Can I ask you a question related?

[00:04:30] Speaker 02:
I want to stay on enablement, but this has to do with the time construction and the interpretation

[00:04:35] Speaker 02:
My question isn't to ask you to move over and talk about why Grown On should include direct and indirect, but my question is, regardless of what we do with Grown On, your enablement argument stands, right?

[00:04:47] Speaker 00:
That is correct.

[00:04:47] Speaker 02:
Because Grown On, everyone agrees, at least requires directly.

[00:04:51] Speaker 02:
And that is the limitation that is

[00:04:56] Speaker 02:
The directly embodiment is one of the ones that you're talking about that is not enabled.

[00:05:00] Speaker 05:
That is correct.

[00:05:01] Speaker 02:
In fact, if we were to change the construction to require directly, then instead of six embodiments, one of which is not enabled, we'd have three embodiments, one of which is not enabled.

[00:05:11] Speaker 05:
That is exactly correct.

[00:05:12] Speaker 05:
OK.

[00:05:13] Speaker 05:
To return to the point about the amorphous buffalo, the other point that our expert made was that this method, that this patent teaches how to create the devices through the tools and techniques of epitaxy in which you are laying down

[00:05:25] Speaker 05:
material one layer on top of another.

[00:05:27] Speaker 01:
Well, some of their testimony suggested that you could do it and they weren't using the epitaxial, right?

[00:05:32] Speaker 01:
And your view is that the specification is clear, that that's what we're talking about here?

[00:05:38] Speaker 05:
Well, let me answer it in two ways.

[00:05:41] Speaker 05:
It is correct that they say that you can create this through non-epitaxial means.

[00:05:44] Speaker 05:
What they have to show, though, is you can create it through non-epitaxial means that are taught by this patent.

[00:05:50] Speaker 05:
And they never

[00:05:51] Speaker 05:
bridge that gap.

[00:05:52] Speaker 01:
I understand, because you're saying all the specification and all the discussion is only throughout.

[00:05:56] Speaker 05:
Well, it's not just about that.

[00:05:57] Speaker 05:
When they talk about being able to do this, there are two pieces of testimony.

[00:06:00] Speaker 05:
Dr. Piner says he did it nine years after the application, so it's irrelevant for that reason alone, but he doesn't describe how he did it, and he certainly doesn't say that he did it through the means whatever you call them.

[00:06:12] Speaker 05:
described in this path.

[00:06:13] Speaker 02:
Or without undue experimentation.

[00:06:15] Speaker 02:
Which is the standard.

[00:06:17] Speaker 02:
The mere fact that it occurred nine years later doesn't necessarily imply it took a lot of experimentation to get there, but it also doesn't imply the opposite, that it was easy to do.

[00:06:25] Speaker 01:
Oh, his testimony.

[00:06:27] Speaker 01:
did say you could realize it without much experimentation, but I assume your argument about that testimony is it's conclusory, and it doesn't explain how that is, though.

[00:06:38] Speaker 01:
That is correct.

[00:06:38] Speaker 04:
And Dr. Mustakis also says that he created... And you're arguing that we don't know how those results were achieved, period.

[00:06:45] Speaker 05:
We don't.

[00:06:45] Speaker 05:
He didn't say.

[00:06:46] Speaker 05:
Now, Dr. Mustakis, when he says he did it six years later, also irrelevant, he at least explains how he did it, but he explains that he did it by etching the amorphous layer with acid, which is no more mentioned.

[00:06:57] Speaker 05:
in this specification.

[00:06:59] Speaker 05:
He doesn't claim that he was following this specification either, which is particularly remarkable because we have a written description argument here in this case which asserts that he didn't possess this version of the device at the time of the application.

[00:07:11] Speaker 05:
You would have thought he would say, it's possible and in fact I did it in 1991.

[00:07:15] Speaker 05:
Instead he says, it's possible I did it in 1998 and through a different method.

[00:07:19] Speaker 02:
Back to the beginning where we started, which is that this is one of six possible embodiments that this claim would cover, and five of the six are undisputedly enabled, but there's one that's arguably not enabled.

[00:07:32] Speaker 02:
Assuming we agree with you that it's not enabled, you don't have to win, do you, on the idea that everything in a claim must always be enabled.

[00:07:41] Speaker 02:
You don't have to fight that battle.

[00:07:42] Speaker 02:
I mean, you started by saying, suggesting that our case law suggests everything has to be enabled.

[00:07:48] Speaker 05:
That's right.

[00:07:48] Speaker 02:
I mean, the larger the genus or the larger a range in a claim, the less comfortable I get with the idea necessarily that every single thing has to be enabled.

[00:07:57] Speaker 02:
But when a claim only covers six discrete embodiments, isn't that, at a minimum, a place where we could draw a line and say, in a nice little opinion, something like, even without deciding whether every embodiment would always have to be enabled when there is such a limited number that are included in a claim, that limited number does?

[00:08:15] Speaker 05:
Absolutely.

[00:08:16] Speaker 05:
You don't have to go any farther than that.

[00:08:18] Speaker 05:
be clear on our position because we think that it doesn't enable any amorphous layer at all.

[00:08:22] Speaker 05:
In fact, it's our position that only three of the six are enabled, but the one we've been talking about.

[00:08:27] Speaker 01:
I'm sorry, can you just clarify, is that just to Judge Moore's point that if the claim construction were incorrect, then you would only have three?

[00:08:38] Speaker 05:
No.

[00:08:39] Speaker 05:
Okay, then what?

[00:08:39] Speaker 05:
We have a separate argument that says when you look at the patent and it talks about the two-step process,

[00:08:45] Speaker 05:
Every time he talks about the second process and talks about the crystallinity of the resulting buffer layer, it says that at that higher temperature process, you can or you will crystallize it.

[00:08:55] Speaker 05:
And so that, if that's right, that eliminates half the embodiments.

[00:08:59] Speaker 05:
But even if that's wrong, even if you don't accept that, the griddle effect argument eliminates the possibility of creating the mono directly on amorphous.

[00:09:09] Speaker 05:
And that's all we need in order to win this case.

[00:09:13] Speaker 01:
Ask you about, move on to just one other quick point about the foreign sales argument you made.

[00:09:17] Speaker 01:
It's not clear to me what you're asking us to do about the foreign sales stuff.

[00:09:23] Speaker 01:
I mean, the district court really has an opine on that.

[00:09:26] Speaker 01:
You've still got potential trial on damages.

[00:09:30] Speaker 01:
So what is it exactly that you want us to do about that?

[00:09:33] Speaker 05:
We would like you to say that there is insufficient evidence to sustain infringement liability with respect to those sales, such that at the damages redraw, assuming there is one.

[00:09:43] Speaker 05:
The jury will simply be instructed to assess damages on the basis of the U.S.

[00:09:48] Speaker 05:
sales alone.

[00:09:49] Speaker 05:
There's a risk that if you don't do that, that we'll go back down to the district court.

[00:09:53] Speaker 01:
But that's an advisory opinion.

[00:09:54] Speaker 01:
I mean, just by the fact that you characterize it as a risk.

[00:09:58] Speaker 01:
The district court hasn't said anything contrary.

[00:10:01] Speaker 01:
We don't have the evidence in front of us.

[00:10:03] Speaker 01:
It seems a little premature or advisory for us to be kind of

[00:10:10] Speaker 01:
opining on a legal issue that may not even end up being an issue, right?

[00:10:15] Speaker 01:
Because the district court has not said all of these foreign sales ought to be included in damages.

[00:10:20] Speaker 05:
With respect, she did say that.

[00:10:21] Speaker 05:
We used this in our Rule 50 motion.

[00:10:23] Speaker 05:
She denied the motion.

[00:10:24] Speaker 05:
She didn't give any reasons, but she denied the motion and allowed the jury to be presented with the evidence of all of those foreign sales, which are the vast majority of the sales that accounted for the burden against Epistar on direct infringement.

[00:10:36] Speaker 05:
I think she did deny our motion.

[00:10:38] Speaker 05:
It had a consequence in the verdict.

[00:10:40] Speaker 05:
It will have a consequence again in the retrial unless you tell the court you have to exclude those sales from the royalty base.

[00:10:49] Speaker 03:
How do we know that the jury didn't exclude them?

[00:10:52] Speaker 03:
Excuse me?

[00:10:53] Speaker 03:
How do we know that the jury did not exclude those sales?

[00:10:56] Speaker 05:
Well, because it's a lump sum verdict, we don't know that it did or didn't.

[00:11:00] Speaker 05:
Yeah, a verdict form.

[00:11:02] Speaker 05:
But the point of a Rule 50A motion is to say that this evidence ought not to go to the jury, or this issue ought not to go to the jury in the first place.

[00:11:10] Speaker 05:
So it's possible that the jury didn't consider it, but on the retrial it's possible that they will.

[00:11:14] Speaker 05:
And we are just asking you to make clear to the district court that the jury has to be limited to awarding damages on infringement that actually falls within the scope of the Patent Act.

[00:11:24] Speaker 05:
And I don't think... I'm sorry.

[00:11:27] Speaker 05:
I thought I heard a question.

[00:11:28] Speaker 05:
I apologize.

[00:11:28] Speaker 05:
Can I move quickly to claim construction?

[00:11:31] Speaker 05:
You're in your rebuttal, but quickly then.

[00:11:34] Speaker 05:
Actually, let me say very quickly three points about this.

[00:11:37] Speaker 05:
One is the district court's reading basically reads the word grown out of the term grown on.

[00:11:43] Speaker 05:
They could have achieved the same result with just on.

[00:11:46] Speaker 05:
The word grow itself naturally implies direct connection.

[00:11:49] Speaker 05:
That's why we say mold is grown on bread rather than mold is grown on the plate that's under the bread.

[00:11:54] Speaker 05:
This specification, every time it talks about how you accomplish grown on, talks about

[00:11:59] Speaker 05:
depositing a material on the substrate.

[00:12:02] Speaker 05:
It talks about exposing the substrate to the material, which also strongly implies direct contact.

[00:12:09] Speaker 05:
None of the examples ever discuss an intervening layer between the substrate and the buffer, or between the buffer and the growth layer.

[00:12:16] Speaker 05:
The closest it comes is when it talks about there being two growth layers.

[00:12:20] Speaker 05:
And in that context, it doesn't talk about the second growth layer.

[00:12:24] Speaker 05:
being grown on the buffer layer.

[00:12:26] Speaker 01:
What about the argument that the word comprising appears in the claim, therefore that broadens it?

[00:12:32] Speaker 05:
It broadens it means that there are some unrecited elements in the device, but they wouldn't be elements that are precluded by an appropriate reading of the other claim terms.

[00:12:43] Speaker 05:
I think, to be frank, that their stronger argument is that this allegedly reads out a preferred embodiment, but

[00:12:50] Speaker 05:
the premise for that canon is simply not present here, because you ordinarily apply that canon because you assume the author wouldn't have written the claims in a way he knows will exclude a preferred embodiment.

[00:13:00] Speaker 05:
In this case, it's undisputed that the inventor did not know that this very contestable proposition that Spuderachin would create something that somebody might think of as an intervening layer.

[00:13:10] Speaker 05:
As a consequence, there's no premise

[00:13:13] Speaker 05:
for applying that canon here.

[00:13:14] Speaker 04:
To what extent is enablement and written description tied together?

[00:13:17] Speaker 04:
If we affirm on enablement, is there still a written description problem?

[00:13:22] Speaker 05:
They are distinct.

[00:13:23] Speaker 05:
If you affirm on enablement, yes, you have to ask for written description.

[00:13:26] Speaker 05:
Because the difference is enablement can be overcome by reasonable experimentation.

[00:13:32] Speaker 05:
Written description cannot.

[00:13:33] Speaker 05:
The question is, did he possess this?

[00:13:35] Speaker 05:
Not that could somebody else have created it through additional experimentation beyond what

[00:13:41] Speaker 05:
is disclosed in the patent.

[00:13:42] Speaker 05:
And here there's no evidence that he possessed these versions of the device at the time.

[00:13:47] Speaker 05:
Every description of the buffer layer is a crystalline buffer layer.

[00:13:53] Speaker 05:
And as I explained, the only evidence that it's even possible to create a monocrystalline directly on amorphous comes from his additional six years of experimentation by him and others.

[00:14:03] Speaker 05:
If I could reserve the remainder of my time.

[00:14:09] Speaker 06:
Thank you, Your Honor.

[00:14:10] Speaker 06:
And may it please the Court, Ed Reinis on behalf of BU.

[00:14:14] Speaker 06:
Just going right to enablement, which is where we spent most of the time.

[00:14:18] Speaker 06:
The jury and the district court got the issue right.

[00:14:22] Speaker 06:
And we would ask the Court to find the same.

[00:14:25] Speaker 06:
The burden to establish enablement lies with the party attacking it.

[00:14:30] Speaker 06:
This is after a jury trial.

[00:14:32] Speaker 06:
And that's a question of law.

[00:14:35] Speaker 06:
It's a question of law based on underlying facts, where the facts are all assumed to be

[00:14:39] Speaker 01:
found in favor of the district court was kind of iffy on this too, right?

[00:14:43] Speaker 01:
I mean, did she not consider this a close call and kind of was a little tentative, I thought.

[00:14:51] Speaker 06:
I took it the other way, which is that it wasn't a close call whether Jamal should be granted.

[00:14:54] Speaker 06:
It was a close call at trial.

[00:14:56] Speaker 06:
She said both experts presented, and this is at appendix of 20.

[00:15:05] Speaker 06:
She said both

[00:15:06] Speaker 06:
experts at a trial, and then whether the ultimate question was right or not was a close call.

[00:15:11] Speaker 06:
That's classic for when an affirmance is appropriate.

[00:15:15] Speaker 06:
So you have the judge that was sitting through the complex trial about difficult technology who says, we are experts on both sides, and that's where we ended up.

[00:15:23] Speaker 06:
There was no wands analysis.

[00:15:25] Speaker 06:
The demonstration of the enablement was basically the expert for the opposing side.

[00:15:36] Speaker 01:
went through and applied one of the examples and said, under this example, an amorphous... So where is the... Okay, so I know you started to go there, but exactly, can you point us to where the evidence is?

[00:15:48] Speaker 01:
You're not putting it in here today that they didn't have to enable the sixth, what we've been calling the sixth permutation, right?

[00:15:54] Speaker 06:
So that's at A12, where the district court says that a case deal has already resolved, that you don't have to do every permutation.

[00:16:01] Speaker 06:
It's not as though... So are you resting on that?

[00:16:03] Speaker 01:
That's your position?

[00:16:04] Speaker 06:
I'm not resting on that.

[00:16:05] Speaker 06:
this is a situation where the verdict was in our favor and the district court denied Jamal.

[00:16:10] Speaker 06:
So I'm resting on that in the first instance, obviously.

[00:16:13] Speaker 01:
But if we disagree with that premise, at least as Judge Moore pointed out in the context of this case, when there were a total of six possible permutations at most, where does that leave you in your case?

[00:16:24] Speaker 06:
That leaves me with the verdict in my favor and the district court who sat through it determining that it was a close question with experts debating it.

[00:16:32] Speaker 06:
The point I want to make is there's very

[00:16:34] Speaker 06:
strong authority from this court, Cephalon, Union Carbide and Strach, that says you don't change enablement as a matter of law based on just statements of undue experimentation or something.

[00:16:46] Speaker 06:
There was no one's analysis.

[00:16:48] Speaker 06:
Our witnesses came in very clearly, this A2269, so if you follow these sorts of boundaries within the teachings of the 738 patent, you can realize with not much experimentation the type of structure we're talking about here.

[00:17:02] Speaker 06:
namely the amorphous buffer or some sublayer and then monocrystalline.

[00:17:06] Speaker 06:
The burden was on them to then cross-examine him.

[00:17:09] Speaker 06:
Why?

[00:17:10] Speaker 06:
When?

[00:17:10] Speaker 06:
How come not?

[00:17:13] Speaker 06:
Right?

[00:17:14] Speaker 06:
The whole premise of the opening presentation was as though we had the burden to prove enablement rather than they failed to carry their burden of establishing it wasn't.

[00:17:25] Speaker 01:
Yeah, but okay, I take your point.

[00:17:28] Speaker 01:
But if you're looking at another question, which is looking at your witness's testimony and what does that add or give you, assuming that we're at the point where you've got to tell us something, isn't this quintessential, entirely conclusory testimony?

[00:17:46] Speaker 06:
No.

[00:17:47] Speaker 06:
And I think if you look at Cephalon and union carbide and strep, what they find is that this kind of testimony

[00:17:56] Speaker 06:
it supports a judgment if the opposing side thinks that this is superficial or otherwise, it's their responsibility.

[00:18:05] Speaker 06:
Keep in mind, it's not as though these witnesses didn't cite references.

[00:18:10] Speaker 06:
They said, here, I happened to do it in 1998.

[00:18:13] Speaker 06:
Here's the reference, OK?

[00:18:15] Speaker 06:
That's in the record.

[00:18:16] Speaker 06:
That's not conclusory, all right?

[00:18:18] Speaker 01:
But you're suggesting they didn't put on a case.

[00:18:20] Speaker 01:
Of course they put on a case.

[00:18:21] Speaker 01:
They had their own expert who opined as to why this wasn't enabled.

[00:18:25] Speaker 06:
No, I'm responding to the conclusory point.

[00:18:27] Speaker 06:
It wasn't conclusory in that both experts said, I did this.

[00:18:31] Speaker 06:
Because their argument at trial.

[00:18:33] Speaker 01:
OK, but I'm sorry.

[00:18:34] Speaker 01:
I have to stop you there.

[00:18:35] Speaker 01:
Sure, of course.

[00:18:36] Speaker 01:
I mean, isn't it clear that when they said, I did this, they did this?

[00:18:40] Speaker 01:
What is this?

[00:18:41] Speaker 01:
The date here is 1991, right?

[00:18:44] Speaker 01:
The priority date.

[00:18:45] Speaker 01:
And their testimony is, I did this like six years later, right?

[00:18:49] Speaker 01:
Right.

[00:18:50] Speaker 01:
So how is that probative of anything?

[00:18:52] Speaker 06:
Because our technical expert didn't use the invention before it was invented.

[00:18:55] Speaker 06:
This is a pioneering invention that everybody recognizes being pioneering.

[00:19:02] Speaker 06:
The art developed after the person did it.

[00:19:05] Speaker 06:
Obviously people weren't doing this before the invention.

[00:19:08] Speaker 01:
We have enablement at the time.

[00:19:10] Speaker 01:
No doubt.

[00:19:11] Speaker 01:
You can't say it's enabled.

[00:19:13] Speaker 06:
No doubt.

[00:19:14] Speaker 06:
But keep in mind, the case they made, and you heard a bit of this, was one of technical impossibility.

[00:19:20] Speaker 06:
It was essentially

[00:19:21] Speaker 06:
The temperature makes it so that you can't possibly do it, right?

[00:19:24] Speaker 06:
That's probably what appealed to me.

[00:19:25] Speaker 02:
Well, they can't do it through the means disclosed in the patent.

[00:19:28] Speaker 02:
But other people were able to do it by etching and other processes, many of which don't seem to me to be disclosed by the experts in the testimony here, how they ultimately were able to do it four years later or six years later.

[00:19:41] Speaker 06:
Right.

[00:19:41] Speaker 06:
And so a very fair question.

[00:19:43] Speaker 06:
And I think really there's a few things about that.

[00:19:45] Speaker 06:
One is all they said is we followed the embodiment, and this wouldn't work under the embodiment.

[00:19:51] Speaker 06:
I think we can agree that's too narrow.

[00:19:54] Speaker 06:
You can't just say, I use the embodiment and it's a preferred embodiment that uses polycrystalline.

[00:19:59] Speaker 06:
It's not amorphous.

[00:20:00] Speaker 06:
No one's saying it is.

[00:20:02] Speaker 06:
So that's the limits of what was presented.

[00:20:05] Speaker 06:
Then our people come back and it was essentially, this is technically impossible.

[00:20:09] Speaker 06:
Our people came back to witnesses and said, it's not technically impossible.

[00:20:12] Speaker 06:
We did it, of course, after the invention.

[00:20:14] Speaker 06:
We didn't do it before the invention.

[00:20:16] Speaker 06:
We were focused on polycrystalline.

[00:20:18] Speaker 06:
It is claimed as monochrome.

[00:20:19] Speaker 02:
We did it after the invention, but then we don't know how they did it.

[00:20:22] Speaker 06:
Yes.

[00:20:23] Speaker 02:
And what we do know is they didn't do it according, most likely, they didn't do it according to the manner taught in the patent.

[00:20:29] Speaker 06:
Right, that's right.

[00:20:30] Speaker 06:
So that turns on, does every single permutation need to be disclosed by recipe in the specification?

[00:20:39] Speaker 02:
But it has to be known to a skilled artist at the time.

[00:20:42] Speaker 02:
That's correct.

[00:20:43] Speaker 02:
And what cuts against you is the idea that six years later they told us they were able to do it, and the only process we know of by which they were able to do it is this etching process.

[00:20:51] Speaker 02:
And what we don't have is testimony suggesting that that would have been known at the time.

[00:20:56] Speaker 06:
Right.

[00:20:56] Speaker 06:
So if I was appealing, if I was on this side of the table, that would be a big problem for me.

[00:21:01] Speaker 06:
But they came forward and said, if you use the preferred embodiment, which is a polycrystalline one,

[00:21:07] Speaker 06:
The temperatures that you use and the time that you use isn't going to work.

[00:21:09] Speaker 06:
It's not broader than that.

[00:21:11] Speaker 06:
That's all they said.

[00:21:12] Speaker 06:
Our people came back and said, and with this implication that it was technically impossible, our people said, we did it.

[00:21:17] Speaker 06:
It's not technically impossible.

[00:21:19] Speaker 06:
It's not our burden then, I don't think, to show a full case with clear and convincing evidence that it was known.

[00:21:26] Speaker 06:
It was their responsibility at that point.

[00:21:28] Speaker 06:
This is what I think Cephalon Union Carbide and Strex show.

[00:21:31] Speaker 06:
Theirs to say, well, when did you do it?

[00:21:33] Speaker 06:
Why did you do it?

[00:21:34] Speaker 06:
Were those techniques known?

[00:21:35] Speaker 06:
That's just how I see the burden shifting.

[00:21:37] Speaker 06:
That's how I've seen this court apply the burden.

[00:21:39] Speaker 06:
The jury found it in our favor, and the judge validated it.

[00:21:44] Speaker 06:
I'd like to move on to grown on, given the shortness of time.

[00:21:49] Speaker 06:
I think the most important thing about grown on is that in the art, the term grown on is used to mean position above the substrate.

[00:21:58] Speaker 06:
And we know that from the cited prior art.

[00:22:02] Speaker 06:
We've collected that on our brief at 44, where after reference refers to an ALN buffer layer being between the gallium nitride and the substrate, and always refers to as grown on.

[00:22:18] Speaker 06:
That's page 44 of the BU opening brief.

[00:22:22] Speaker 06:
And what's important about these is that two of these are cited prior art.

[00:22:28] Speaker 06:
And they just use it.

[00:22:29] Speaker 06:
This is just fantastic evidence.

[00:22:32] Speaker 06:
that people in the art at the time use the term grown on to use a positional thing.

[00:22:37] Speaker 06:
There's no reason to believe otherwise.

[00:22:41] Speaker 06:
And that's what the district court judge found, and it deserves finding a fact deference.

[00:22:47] Speaker 06:
And so I think a broad construction here of these pioneering inventions appropriate.

[00:22:54] Speaker 02:
Find that as a matter of fact somewhere based on this prior art?

[00:22:57] Speaker 02:
Did she cite it and include that in her fact finding?

[00:23:00] Speaker 06:
She focused on the fact that their expert had a patent.

[00:23:02] Speaker 02:
I don't remember any citations of this prior art in her opinion.

[00:23:06] Speaker 06:
What she said, she focused on their expert, she used it that way too.

[00:23:10] Speaker 06:
So she didn't focus, their expert had a patent and she said even their expert's using the term grown on in this broad way.

[00:23:16] Speaker 02:
Yeah, but you just said she is entitled to deference,

[00:23:20] Speaker 02:
for her finding about what these prior references disclose.

[00:23:22] Speaker 02:
And I don't remember.

[00:23:23] Speaker 06:
Oh, no.

[00:23:24] Speaker 06:
If I said that, I'd misspoke.

[00:23:26] Speaker 06:
I did not mean that.

[00:23:27] Speaker 06:
The finding of fact was that Ronon was used in this broader way.

[00:23:34] Speaker 02:
By the expert.

[00:23:36] Speaker 06:
I think by the expert, yeah.

[00:23:38] Speaker 02:
But not in the art.

[00:23:41] Speaker 02:
In the art is a different thing.

[00:23:45] Speaker 02:
Where can I see her fact-finding on this?

[00:23:47] Speaker 02:
Her fact-finding is?

[00:24:06] Speaker 06:
252, which is page 21 of her claim construction opinion.

[00:24:12] Speaker 06:
Defendant's expert is named as an inventor describes a layer grown on a substrate that does not, in fact, contact the substrate.

[00:24:18] Speaker 01:
I'm sorry.

[00:24:18] Speaker 01:
I'm at 252.

[00:24:19] Speaker 01:
252.

[00:24:20] Speaker 06:
It's about a third of the way down the page.

[00:24:22] Speaker 06:
OK.

[00:24:24] Speaker 01:
And you said defendant's expert.

[00:24:26] Speaker 01:
Furthermore, a recent patent in which defendant's expert?

[00:24:29] Speaker 01:
Yes, exactly.

[00:24:30] Speaker 01:
OK.

[00:24:35] Speaker 06:
All right.

[00:24:36] Speaker 06:
And then I'd like to move to our appeal, or cross-appeal, if that's okay, unless there's more questions.

[00:24:42] Speaker 02:
I don't think you should do that yet.

[00:24:45] Speaker 01:
Go ahead.

[00:24:46] Speaker 01:
No, no, no.

[00:24:46] Speaker 01:
I was just going to move on from this.

[00:24:49] Speaker 01:
Oh, go for it.

[00:24:50] Speaker 01:
Okay, go ahead.

[00:24:50] Speaker 01:
Now, I was just going to ask you about the foreign sales point.

[00:24:53] Speaker 01:
Right.

[00:24:53] Speaker 01:
Just to make a quick point on that.

[00:24:54] Speaker 06:
Yes.

[00:24:55] Speaker 06:
So on the foreign sales point, the law is that there's no one formula that you generally take into account all the location of the performance and

[00:25:06] Speaker 06:
of the agreement.

[00:25:07] Speaker 06:
So there's no real formula.

[00:25:09] Speaker 06:
That's just the way the law is.

[00:25:12] Speaker 01:
I'm sorry, no real formula for what?

[00:25:14] Speaker 01:
Whether or not... Determination.

[00:25:15] Speaker 01:
...excluded in the calculation?

[00:25:18] Speaker 06:
Yes.

[00:25:19] Speaker 06:
It's very factual and there's a number of relevant considerations and they haven't even all been enumerated.

[00:25:27] Speaker 01:
They haven't been enumerated in our case law or in this case?

[00:25:30] Speaker 01:
That's correct.

[00:25:30] Speaker 06:
In the case law.

[00:25:34] Speaker 06:
It's just the way the case laws developed.

[00:25:38] Speaker 06:
This is Halo.

[00:25:39] Speaker 06:
Halo really is the best one to look at for this.

[00:25:42] Speaker 06:
And it talks about, well, it's not necessarily where the products are shipped.

[00:25:45] Speaker 06:
It's not necessarily where the agreement is entered into as a legalistic matter.

[00:25:49] Speaker 06:
It's an overall appreciation of contacts with the US.

[00:25:55] Speaker 06:
That's what it is, believe it or not.

[00:25:57] Speaker 06:
And here, the purchases were made

[00:26:01] Speaker 06:
from the US, payments was made from the US, which is performance.

[00:26:04] Speaker 01:
We're not going to litigate it here at this trial, the argument.

[00:26:08] Speaker 01:
So your point is what?

[00:26:09] Speaker 01:
When you have your damages trial, that is a portion of the trial, and that will be litigated in that context?

[00:26:15] Speaker 06:
I mean, I assume that it would be litigated, or the verdict will be interpreted one way or the other.

[00:26:20] Speaker 06:
But at a minimum, the verdict is supported by the US shipments.

[00:26:27] Speaker 00:
Before we go to the cross appeal term.

[00:26:30] Speaker 06:
OK, thank you.

[00:26:31] Speaker 06:
On the cross appeal, I'll summarize it with respect to the enhanced damages and the willfulness.

[00:26:37] Speaker 06:
For both of those, there's two essential problems.

[00:26:41] Speaker 06:
One was the reliance on attorney-client privilege, the reliance on an opinion letter that clearly shouldn't have happened.

[00:26:49] Speaker 06:
It wasn't used during the main trial and then it got used later and you're not allowed to do that.

[00:26:56] Speaker 06:
Um, and that was a central basis of denial.

[00:26:58] Speaker 01:
In addition, the court found that they hadn't that the, um, that was, did you say that was the central basis or a central basis?

[00:27:06] Speaker 06:
I think, yeah, I think it was a, but I mean, I think that led to the conclusion that they had a good faith belief, which probably if we were saying the, was the central basis.

[00:27:17] Speaker 01:
And with respect to that central belief, he's got a lot of discretion in these areas.

[00:27:21] Speaker 06:
No doubt.

[00:27:22] Speaker 06:
But relying on the reliance on counsel when the other sides refuse and you've got no discovery, that's very problematic.

[00:27:30] Speaker 06:
What else is problematic?

[00:27:33] Speaker 06:
The other problematic piece is finding a good faith belief is inconsistent with what the jury found over and over again, amply supported, which was that they were at a minimum reckless or intentionally encouraging infringement.

[00:27:50] Speaker 06:
So I don't think a judge, it's an interesting question, but I don't think a good judge in that enhancement part of the analysis is entitled to say someone was acting in good faith when the jury has found in a supported verdict that it was reckless or worse.

[00:28:07] Speaker 01:
And I think you make an additional argument.

[00:28:10] Speaker 01:
We're doing a lot of cases this week, but I recall you're saying that she should have at least not decided this until the damages trial.

[00:28:19] Speaker 01:
Well, yeah, I think that's... And why?

[00:28:23] Speaker 01:
I mean, why in a way?

[00:28:24] Speaker 01:
I mean, this is separate and distinct.

[00:28:25] Speaker 06:
Because the read factors bear on how you try the case.

[00:28:29] Speaker 06:
I mean, there's so many things that could happen.

[00:28:31] Speaker 01:
Well, so your argument is because the trial isn't over and so stuff can go on in the damages trial that might also affect...

[00:28:39] Speaker 01:
take care of that in other respects, right?

[00:28:41] Speaker 01:
She could always award sanctions or whatever.

[00:28:43] Speaker 01:
I mean, you're talking about litigation.

[00:28:47] Speaker 06:
But with the enhanced damages, I don't think that's true.

[00:28:49] Speaker 06:
I think you need to know how much has been awarded before you do that, right?

[00:28:53] Speaker 06:
I mean, I think you need, before you say I'm not enhancing, if you get $1 and the judge thinks that, I just think that it was premature.

[00:29:00] Speaker 02:
If you get $1, what's she going to do?

[00:29:00] Speaker 02:
Give you $3 and you'll be happy?

[00:29:02] Speaker 06:
Good point, Judge Moore.

[00:29:04] Speaker 01:
So I think- I understand instinctively what you're saying about, yeah, if your hope was is that the judge thinks it's at the low end, she'll be more inclined to enhance the damages.

[00:29:18] Speaker 01:
But there's no legal principle on which we can rest.

[00:29:22] Speaker 06:
If that was the only issue, I don't know that that would move me to write a published opinion on the topic if I was responsible for it.

[00:29:29] Speaker 01:
What about prejudgment interests?

[00:29:31] Speaker 06:
Pre-judgment interest, I think, is just a slam dunk.

[00:29:33] Speaker 06:
I mean, the amount that was awarded was a fixed amount based on a negotiation in 2000.

[00:29:41] Speaker 06:
That was the hypothetical negotiation date.

[00:29:43] Speaker 06:
The jury consciously did that.

[00:29:44] Speaker 06:
It was right in the verdict form.

[00:29:46] Speaker 06:
And you're entitled

[00:29:48] Speaker 06:
And the Supreme Court in General Electric said you're entitled to interest from the date of the negotiation.

[00:29:53] Speaker 06:
If the issue is that there's a windfall of the time value of money, which has to be... Yeah, but the liability here didn't start to run until years later.

[00:30:01] Speaker 06:
I mean, how can you... I mean, that's... But if you're negotiating in 2000 about future liability that you know about, and you say, I'll give you X amount on date A for what I end up doing in date Z,

[00:30:13] Speaker 06:
There's ample opportunity to take into account the time value of money, and people do it all the time.

[00:30:18] Speaker 06:
I mean, that's what a lump sum is.

[00:30:19] Speaker 06:
When you agree to a lump sum, you say, well, I'm doing this, but this is how it affects the time value of money, right?

[00:30:25] Speaker 06:
I think that's what people always, that's what I do when I'm in court on that issue.

[00:30:29] Speaker 06:
And so if there's a time value of money issue, that should be related.

[00:30:33] Speaker 06:
But if I say to you, I'm going to give you a dollar on date A for what I do in date Z, then I get interest from that date.

[00:30:39] Speaker 06:
And if they think that it's unfair that you have the dollar for 17 years or 20 years or whatever it is, then it's incumbent on them to say, well, you're giving me the money 20 years before it happens.

[00:30:51] Speaker 06:
I should get credit for that.

[00:30:56] Speaker 06:
Thank you very much.

[00:30:57] Speaker 01:
Thank you.

[00:30:58] Speaker 01:
We'll restore a minute, assuming that they get to the cross appeal.

[00:31:01] Speaker 01:
Thank you, Mr. Santana.

[00:31:05] Speaker 01:
I'll give you four minutes.

[00:31:07] Speaker 05:
Thank you, Your Honor.

[00:31:09] Speaker 05:
A few words about enablement.

[00:31:10] Speaker 05:
I don't understand the plaintiffs to be rejecting the suggestion that Dr. Priner's testimony on the mono on amorphous was conclusory.

[00:31:20] Speaker 05:
I take them instead to be saying that we somehow had a responsibility to make him be more specific through the cross-examination.

[00:31:27] Speaker 01:
Well, in fairness, they're also mushed up in that is that you all have the burden.

[00:31:33] Speaker 01:
They don't have the burden.

[00:31:34] Speaker 01:
That's true.

[00:31:34] Speaker 01:
So even if they had no witness saying anything, that's

[00:31:38] Speaker 01:
That's not the be-all and end-all.

[00:31:39] Speaker 01:
It's a question of what you did, not what they did.

[00:31:41] Speaker 05:
That's fair enough.

[00:31:42] Speaker 05:
And what we did is we put on an expert who testified in quite a lot of detail about the griddle effect and other things, about other reasons why this wasn't enabled.

[00:31:49] Speaker 05:
And their response with respect to these particular objections, with respect to this particular version of the device, was just simply conclusory.

[00:31:57] Speaker 05:
It did not lock horns with the argument that was made.

[00:32:00] Speaker 05:
And as a consequence, I think we did sustain our burden of proof.

[00:32:03] Speaker 02:
So let me see if I can summarize it.

[00:32:06] Speaker 02:
put on an expert that says, this can't be grown this way.

[00:32:10] Speaker 02:
The way disclosing the specification does not work in this one of six embodiments, or one of three embodiments, whichever way we go.

[00:32:17] Speaker 02:
Look, here are all the reasons why it doesn't work.

[00:32:20] Speaker 02:
And then they put on two people that said, we were able to do it, now four and six years later, or whatever.

[00:32:28] Speaker 02:
But who has the burden of showing whether experimentation is undue or not?

[00:32:34] Speaker 05:
I think it's ultimately probably our burden in order to show invalidity.

[00:32:39] Speaker 05:
But we testified directly about the degree of experimentation being undue.

[00:32:44] Speaker 05:
In fact, Dr. Fitzgerald testified at the time of the invention, it wasn't possible through any means to do this, that the means that were used subsequently were developed subsequently.

[00:32:54] Speaker 05:
And that's the only relevant question with respect to... It's kind of hard to prove a negative, too.

[00:32:59] Speaker 01:
I mean, you're absolutely right, and I couldn't agree.

[00:33:02] Speaker 01:
I mean, the burden is on you.

[00:33:04] Speaker 01:
It's a little tricky to figure out what the burden is, how you satisfy that burden.

[00:33:10] Speaker 05:
I think we did enough here, that their silence with respect to this critical issue is not enough to let them escape the invalidity.

[00:33:19] Speaker 05:
With respect to claim construction, I'm sorry.

[00:33:23] Speaker 02:
Stop.

[00:33:23] Speaker 02:
You're going to win or lose on enablement.

[00:33:25] Speaker 02:
OK.

[00:33:26] Speaker 02:
It's one of six or one of three, and that doesn't matter under the law as far as I'm concerned.

[00:33:29] Speaker 02:
So don't bother with claim construction.

[00:33:31] Speaker 02:
But stay on enablement.

[00:33:33] Speaker 02:
because I don't know how I want to decide the case.

[00:33:37] Speaker 02:
You say it wasn't possible through any means.

[00:33:42] Speaker 02:
Your expert says that.

[00:33:43] Speaker 02:
And they put on evidence that says, well, we were able to do it.

[00:33:47] Speaker 02:
Here are two different people that were able to do it.

[00:33:50] Speaker 02:
How do we know?

[00:33:50] Speaker 02:
Your expert said it wasn't possible through any means.

[00:33:52] Speaker 02:
Did he address and rebuttal

[00:33:55] Speaker 02:
the way that they did it, or did you dive into the way that they did it?

[00:33:59] Speaker 02:
Like, how do I know the way they did it was undue or wouldn't have been known by a posita at the time?

[00:34:04] Speaker 05:
Well, number one, Dr. Piner didn't say at all how he did it.

[00:34:08] Speaker 05:
And I don't think it was our burden to go back and prove what only he would know.

[00:34:14] Speaker 05:
And so I think that... What's your burden?

[00:34:16] Speaker 02:
Why didn't you ask him?

[00:34:19] Speaker 05:
Well, I don't have a good answer for that.

[00:34:21] Speaker 05:
Perhaps we should have.

[00:34:22] Speaker 05:
But what you end up with is testimony that

[00:34:25] Speaker 05:
Dr. Piner saying, look, there are reasons in physics why you can't do it the way the patent teaches.

[00:34:30] Speaker 05:
Their response isn't that, no, in fact, you can follow the patent.

[00:34:35] Speaker 05:
They only say.

[00:34:35] Speaker 05:
They assert that you can follow the patent and do it.

[00:34:37] Speaker 05:
They don't explain how.

[00:34:38] Speaker 05:
And the only time they explain anything about how is with respect to things that they've done years after the patent through methods they don't even claim were taught in the patent.

[00:34:47] Speaker 05:
And I think that that's simply not enough in light of Dr. Fitzgerald's.

[00:34:51] Speaker 02:
They don't say they were taught in the patent,

[00:34:53] Speaker 02:
they were known to a skilled artisan at the time.

[00:34:56] Speaker 05:
Well, I think it's fair to assume that if they were known to the skilled artisan at the time that they would have said that.

[00:35:03] Speaker 05:
Dr. Moustakos had a very good incentive to say that because we had this written description argument that said that he didn't possess this version of the device at the time.

[00:35:12] Speaker 05:
And as a consequence, his failure to even claim that he made it at the time using the methods

[00:35:19] Speaker 05:
disclosed in his patent, I think, is very significant evidence that it wasn't enabled.

[00:35:27] Speaker 01:
So my time is up.

[00:35:31] Speaker 01:
Thank you.