[00:00:04] Speaker 02:
We have three cases on the calendar this morning, three patent cases, two from the TTAB and one from the district court.

[00:00:15] Speaker 02:
But before we get to that, we have a bar admission, which is always a pleasant event for that.

[00:00:22] Speaker 02:
And I will ask Judge O'Malley to make a motion.

[00:00:27] Speaker 03:
Yes, I move the admission of Alison Schmidt, who's a member of the bar and is in good standing with the highest court of California.

[00:00:34] Speaker 03:
I have knowledge of her credentials, and I'm satisfied that she possesses the necessary qualifications.

[00:00:41] Speaker 03:
In fact, I have unique knowledge of her credentials.

[00:00:45] Speaker 03:
It seems like every time that I move the admission of a law clerk, I'm moving the admission of someone far smarter than I am to this court.

[00:00:54] Speaker 03:
Allison went to the University of Washington in Seattle, double majored BS in chemistry, BS in biochemistry.

[00:01:02] Speaker 03:
I like the minor in history.

[00:01:03] Speaker 03:
That helps.

[00:01:04] Speaker 03:
Um, and then she, she went to Duke to get her PhD in chemistry.

[00:01:09] Speaker 03:
And then she went to Berkeley for law school where she hit the cover off the ball.

[00:01:14] Speaker 03:
And now she's been with me for 18 months where she has not just been brilliant in all ways, but has been a charming and witty and fun person to have in chambers.

[00:01:26] Speaker 03:
So I am very pleased to move Alison's admission to the bar.

[00:01:32] Speaker 04:
Judge Wallach.

[00:01:33] Speaker 04:
Well, as a Berkeley grad, I'll sure support that.

[00:01:37] Speaker 02:
The motion is granted.

[00:01:39] Speaker 02:
Would you step forward and take the oath, please?

[00:01:42] Speaker 01:
Mr. President, may I add, due to solemnly swear or affirm that you will comfort yourself as attorney and counselor of this court, uprightly and according to law, and that you will support the Constitution of the United States of America.

[00:01:55] Speaker 01:
Thank you.

[00:01:55] Speaker 01:
Welcome to the trial of the United States Court of Appeals.

[00:02:00] Speaker 02:
Welcome, Mr. Schmidt.

[00:02:03] Speaker 02:
Our first case is Raytheon versus Sony and Samsung, 2017, 15, 54, 56, and 57.

[00:02:12] Speaker 02:
Mr. Hollander, good morning.

[00:02:16] Speaker 05:
Good morning, Your Honor.

[00:02:18] Speaker 05:
Before we get started, I wanted to caution the court that we are subject to international traffic and arms regulations requirements.

[00:02:26] Speaker 05:
And for that reason, we wanted to flag for you that we should avoid disclosing ITAR materials inadvertently.

[00:02:33] Speaker 05:
And there's only really one area that that possibly could come up.

[00:02:37] Speaker 05:
And I just wanted to direct your attention to appendix page 241.

[00:02:41] Speaker 05:
And the structure has talked quite a bit about this structure in the respective briefing.

[00:02:48] Speaker 05:
And so just for purposes of brevity, we'll call it figure two, given the fact that these codes are highly confidential.

[00:02:55] Speaker 05:
And the bottom portion of this structure will just refer to the CRC readout as opposed to

[00:03:02] Speaker 05:
the CRC numerical designation there.

[00:03:05] Speaker 05:
And globally, we'll call this the hybridized structure.

[00:03:09] Speaker 02:
Let's proceed.

[00:03:10] Speaker 05:
Good morning, Your Honors.

[00:03:14] Speaker 05:
May it please the Court?

[00:03:15] Speaker 05:
Proving reduction to practice in this case should have been straightforward.

[00:03:19] Speaker 05:
The credibility of Raytheon's inventors and experts were not challenged by the board or by Sony.

[00:03:25] Speaker 05:
And the veracity and reliability of the corroborating evidence, particularly the 1991 IRAD, were never challenged.

[00:03:30] Speaker 02:
Yes, but the IRA itself talks about an intended structure.

[00:03:36] Speaker 02:
And the board found that that reflected a conception rather than a reduction of practice.

[00:03:42] Speaker 05:
Your Honor, there are several problems with that.

[00:03:44] Speaker 05:
And the first one is a legal one, which is that under the rule of reason, the starting point is the inventor testimony.

[00:03:51] Speaker 05:
Because remember that in proving reduction of practice here, we did not rely on documentary evidence alone.

[00:03:56] Speaker 05:
We relied on the inventor testimony corroborated by the documentary.

[00:04:00] Speaker 05:
documentary evidence.

[00:04:02] Speaker 05:
And here the testimony was unchallenged and indicated that the hybridization structure was unmade.

[00:04:07] Speaker 05:
There was no credibility challenge to these experts' testimony, to these inventors' testimony.

[00:04:11] Speaker 03:
And, I mean, that's right.

[00:04:14] Speaker 03:
The board didn't make a finding to say that the experts were not credible, but what the board did find, did it not, was that the IRAD actually said in there that certain things were planned for later.

[00:04:27] Speaker 03:
later years and the inventors couldn't really clarify whether a particular limitation had been reduced to practice.

[00:04:36] Speaker 03:
So it wasn't a question of them saying that you had to corroborate the corroboration or even saying that the inventors weren't credible.

[00:04:44] Speaker 03:
It was just saying that there was some conflicting evidence and the inventors' evidence didn't fill in all the gaps.

[00:04:49] Speaker 05:
So keep in mind that we're only contesting, there's only one limitation that's at issue.

[00:04:53] Speaker 05:
Three of the four main process limitations here

[00:04:56] Speaker 05:
There's no dispute about them.

[00:04:58] Speaker 05:
So effectively, what we've been required to do is to prove reduction of practice twice, one through our inventors and second through our corroborating evidence.

[00:05:06] Speaker 03:
Did the inventors clearly state that that final limitation was reduced to practice?

[00:05:11] Speaker 05:
Absolutely, Your Honor.

[00:05:12] Speaker 05:
The block would have set forth in our brief 100%.

[00:05:15] Speaker 05:
And I guess just to answer your first question about this intended structure, this really leads to the second rule of reason error, which is we look at this corroborating evidence as a whole.

[00:05:24] Speaker 05:
So if we go to,

[00:05:27] Speaker 05:
the 1991 IRA, and I'm going to point you to page 241.

[00:05:33] Speaker 05:
There are several things I'd like to note.

[00:05:35] Speaker 05:
First is that the term was is used twice.

[00:05:39] Speaker 05:
The past tense, first above the figure two structure we were just speaking about, where it says this approach towards demonstrating the TEM concept was embodied in the CRC 559 readout design.

[00:05:54] Speaker 05:
Secondly, on the

[00:05:56] Speaker 05:
Left column, it says, our intent was to accomplish a rapid mechanical demonstration of the TEM concept.

[00:06:02] Speaker 05:
So we used the past tense twice.

[00:06:04] Speaker 05:
Then if we go back to the abstract of this IRAD document, which is appendix 238, there's a very important quote here.

[00:06:13] Speaker 05:
And this is in the last paragraph.

[00:06:14] Speaker 05:
And I'm going to have to paraphrase here.

[00:06:16] Speaker 05:
It says, CRC, numerical designation, lot one, completed processing in late 1990.

[00:06:24] Speaker 05:
That's a crucial sentence in this abstract that I read on page 238, last paragraph, about four or five lines down.

[00:06:33] Speaker 05:
Without completing the hybridization structure, the hybridization testing couldn't have been done, and therefore the processing of the CRC readout could not have been completed.

[00:06:43] Speaker 05:
That was a necessary condition for that.

[00:06:48] Speaker 04:
Is there any technical reason why Lew's method

[00:06:52] Speaker 04:
can't be used for optical sensors not pointed at stars.

[00:06:57] Speaker 04:
Not pointed at stars.

[00:06:58] Speaker 04:
I'm sorry.

[00:06:58] Speaker 04:
Can you please repeat that?

[00:06:59] Speaker 04:
Sure.

[00:06:59] Speaker 04:
Let me try to avoid it a little bit.

[00:07:03] Speaker 04:
In the red brief at 35, Sony argues, the claims of the loop patent do not recite the star sensor application.

[00:07:10] Speaker 04:
And Raytheon puts forward no technical reason that Lou's method cannot be used to make devices for optical sensors not pointed at stars.

[00:07:18] Speaker 05:
Okay.

[00:07:18] Speaker 04:
Is there any technical reason?

[00:07:20] Speaker 05:
Okay.

[00:07:21] Speaker 05:
We're talking about two separate arguments here.

[00:07:23] Speaker 05:
So the first had to do with the specific application of star sensors, which is an issue we're not appealing.

[00:07:29] Speaker 05:
That is one aspect of the teaching way argument position that we were making.

[00:07:32] Speaker 05:
The other aspect of this, which is much more general than just simply star sensors, is that two of the main objects of the six, two of the six objects could not have been accomplished using a silicon.

[00:07:44] Speaker 03:
Right, but do you have to accomplish all of the goals of the prior art

[00:07:51] Speaker 03:
in order for there not to be teaching away.

[00:07:54] Speaker 03:
I mean, in other words, if Lou says, OK, you can't, these two applications won't work, but doesn't otherwise teach away from use in a whole host of different applications, doesn't that mean that essentially it's not really teaching away?

[00:08:13] Speaker 03:
It's just saying that it's less efficient?

[00:08:15] Speaker 05:
Well, let's step back.

[00:08:17] Speaker 05:
Perhaps with respect to the hampering argument,

[00:08:19] Speaker 05:
That may be true, and we're not appealing that.

[00:08:22] Speaker 05:
But with respect to the general objects of the invention, and keep in mind what Liou is about, Liou is a complete departure from the prior art, and Sony admits that on page 29 of their brief in the oral hearing.

[00:08:31] Speaker 05:
Liou says, don't use silicon in the beginning of this disclosure, and then talks about gallium arsenide for the rest of it.

[00:08:38] Speaker 05:
So yes, there was lots of work done in the silicon area, but this was a real departure from that.

[00:08:43] Speaker 05:
And that's why it's so important that two of these objects could not be accomplished if you use

[00:08:48] Speaker 05:
a silicon, because keep in mind that under the Gordon case, which is really what's controlling here, if these CCDs are inoperable, that is a textbook teaching away.

[00:08:58] Speaker 05:
And that's exactly what we have here.

[00:08:59] Speaker 05:
These two objects apply to the entire patent.

[00:09:03] Speaker 03:
But when you say inoperable, I guess the argument on the other side is it's not inoperable for all purposes.

[00:09:10] Speaker 03:
It's only inoperable for the two key purposes that Liu was looking to.

[00:09:17] Speaker 03:
But it doesn't say it would be inoperable for all other purposes.

[00:09:20] Speaker 05:
Well, two key objects of the six in the entire patent.

[00:09:24] Speaker 05:
I see that's fairly substantial.

[00:09:26] Speaker 05:
And in fact, if you look at the oral hearing transcript, I should point out, after distinguishing liu as a non-silicon reference, and I'm quoting from my opposing counsel,

[00:09:43] Speaker 05:
A person of skill in the art is not an automaton.

[00:09:45] Speaker 05:
They can see past that minor application point to the minimization of gait obscuration.

[00:09:50] Speaker 05:
Gait obscuration is yet a third object of this invention that could not be accomplished.

[00:09:54] Speaker 05:
Now, he tried to minimize that at the oral hearing.

[00:09:56] Speaker 05:
But now we're at three of the six objects of the invention.

[00:09:59] Speaker 05:
That, to me, is a substantial teaching away.

[00:10:00] Speaker 05:
This isn't a mere hampering or diminishment of one particular application, as for star sensors.

[00:10:05] Speaker 02:
Counsel, I want to ask you about your arguing that there has to be a second substrate in the claim.

[00:10:12] Speaker 05:
Yes, Your Honor.

[00:10:13] Speaker 02:
And the board found that nothing precludes an additional step removing the second substrate.

[00:10:22] Speaker 02:
That's what you're arguing is unsound.

[00:10:26] Speaker 05:
That may be true if we just ignore the specification.

[00:10:29] Speaker 05:
And this law, starting from Vitronix, Medrad, there's a legion of cases that say when you're looking at the plain meaning of the claim language, you don't ignore the specification and prosecution history.

[00:10:40] Speaker 05:
In this case, the specification.

[00:10:42] Speaker 05:
There are good reasons for that, because when you look at the specification, it helps you understand what the invention is and what its fundamental features are.

[00:10:47] Speaker 05:
And if you look at what the fundamental features are here, in column three, the inventors talk about the fact that these fragile devices are passed back and forth as part of the fabrication process.

[00:11:00] Speaker 05:
They're very thin, fragile, and can easily be destroyed.

[00:11:04] Speaker 05:
So when you put the second substrate on top, that's how they solve that.

[00:11:07] Speaker 05:
They permanently affix it to make sure that that's protected.

[00:11:11] Speaker 05:
That's how they solve the problem.

[00:11:12] Speaker 05:
And that's the reason why the only embodiment disclosed in this patent is where there's a permanent affixing of that second substrate on top of this device.

[00:11:22] Speaker 03:
So now we've shifted into the Morimoto discussion.

[00:11:26] Speaker 03:
Correct, Your Honor.

[00:11:26] Speaker 03:
I keep jumping you around.

[00:11:27] Speaker 03:
I'm sorry.

[00:11:29] Speaker 03:
That's OK.

[00:11:31] Speaker 03:
So for Lou or Liu, in order to agree with you, I mean, there's one part of your

[00:11:40] Speaker 03:
argument that I find a little bit difficult and where it seems that you're divorcing teaching away from the question of motivation to combine, but it really is that the former informs the latter, right?

[00:11:52] Speaker 03:
So they're not two different inquiries.

[00:11:55] Speaker 05:
They're related concepts, but why would one be motivated to combine a reference such as Liu that says, my objects won't be accomplished if we use silicon.

[00:12:04] Speaker 05:
In fact, my whole disclosure says we're not using silicon.

[00:12:06] Speaker 05:
Gallium arsenide is where we're at.

[00:12:08] Speaker 05:
We're in a very small part of the world because

[00:12:10] Speaker 05:
As counsel pointed out, everybody was using silicon.

[00:12:12] Speaker 05:
So we're very different.

[00:12:14] Speaker 03:
Right.

[00:12:14] Speaker 03:
But the whole point of teaching away is to say that therefore, even if it might otherwise look on its face like there would be a reason to combine it, there wouldn't be a motivation to combine because of the teaching away.

[00:12:25] Speaker 05:
Correct.

[00:12:25] Speaker 05:
I mean, the related concepts, I would certainly agree with you, Your Honor.

[00:12:28] Speaker 04:
I'd like to direct your attention to the ONR white paper, which you mentioned in passing footnote in the blue brief and saying it's cumulative.

[00:12:40] Speaker 04:
And Sony comes back and says, no, it supports our position.

[00:12:44] Speaker 04:
Do you agree with them that it does?

[00:12:46] Speaker 05:
I would have to disagree with that, Your Honor, because keep in mind that there were a lot of moving parts in this case, and we wanted to distill this down to make this as simple as possible to the extent that we could.

[00:12:56] Speaker 05:
The 1990 invention disclosure and that white paper, both of them.

[00:13:02] Speaker 05:
Keep in mind that before, down below, there were two issues that we were dealing with, one of which was conception.

[00:13:07] Speaker 05:
Diligence and reduction of practice and then in this case just a pure reduction of practices, which we're arguing now Just an actual reduction those two those two things that invention disclosure in the white paper We're very supportive of the conception piece of that But with respect to the actual reduction of practice the IRAD is really where that's at So those are supporting documents for us But in terms of what we actually did the IRAD is where that is and that's why we limited the scope of the evidence we were relying upon

[00:13:37] Speaker 02:
We can save the remainder of your time for you.

[00:13:39] Speaker 05:
I'd be happy to, Your Honor.

[00:13:42] Speaker 02:
Mr. Smith.

[00:13:42] Speaker 00:
Thank you, Judge Lurie.

[00:13:49] Speaker 00:
Matthew Smith.

[00:13:50] Speaker 00:
Smith, Belooch, LLP, representing SEMI, although I will speak for all of the appellees today.

[00:13:56] Speaker 00:
Let me begin with the second substrate argument.

[00:14:00] Speaker 00:
I heard Mr. Malenda say that we can't ignore the specification, and of course we can't do that.

[00:14:04] Speaker 00:
But this isn't

[00:14:06] Speaker 00:
a dispute about plain meaning on the one side and specification on the other.

[00:14:10] Speaker 00:
Specification supports Sony's position.

[00:14:13] Speaker 00:
First, it doesn't say what Raytheon, I think, wants it to say, which is there's no express statement anywhere in the specification that the second substrate has to be part of the complete device.

[00:14:25] Speaker 03:
But it does.

[00:14:26] Speaker 03:
I mean, when you read the claims, one of the actual claimed limitations is

[00:14:31] Speaker 03:
is a second substrate.

[00:14:33] Speaker 03:
So how do you say that just because you use the word comprising, under your theory, you could use the word comprising and you could take away every aspect of the claimed invention?

[00:14:45] Speaker 03:
That doesn't make any sense to me.

[00:14:46] Speaker 00:
Right, and this is essentially the dip and dots argument, and I think it's correct to say... It's also common sense.

[00:14:54] Speaker 02:
Have you ever had a case, can you cite a case

[00:14:57] Speaker 02:
where an express limitation of a claim was ignored on the theory that because the word comprising was used, that could also include something that negated that express limitation.

[00:15:12] Speaker 00:
I certainly can't cite a case, but that's not this case as well.

[00:15:15] Speaker 00:
It's counterintuitive.

[00:15:16] Speaker 00:
Because the Morimoto reference has a second substrate.

[00:15:19] Speaker 00:
The question is, does Morimoto disclose the second substrate being part of the complete device?

[00:15:26] Speaker 00:
And there's actually a little bit of an ambiguity in that construction as to what the complete device is.

[00:15:32] Speaker 00:
If it's just the output of the basic method of claim one, furnishing, forning, attaching, etching, Morimoto discloses that.

[00:15:41] Speaker 00:
That's figure 1C of Morimoto.

[00:15:43] Speaker 00:
That doesn't distinguish Morimoto at all.

[00:15:46] Speaker 00:
Now Raytheon, in its original brief, did not explain how its construction would distinguish Morimoto.

[00:15:52] Speaker 00:
In the reply, what they said was, and this is at the bottom of page five,

[00:15:56] Speaker 00:
Quite simply, Morimoto fails to disclose the step of attaching the wafer to the second substrate, because Morimoto requires, quote, removing the supporting silicon substrate, the alleged second substrate, such that the substrate is no longer part of the complete device.

[00:16:15] Speaker 00:
So Raytheon is saying, in Morimoto, it is part of the complete device, but then it can be removed later.

[00:16:23] Speaker 00:
What this means is that Raytheon's actual claim construction position is not that the second substrate is part of the complete device, period, but that the second substrate is part of the complete device with a time limitation, like during its useful lifetime or something like that.

[00:16:39] Speaker 03:
Well, I mean, isn't it true that every embodiment in the specification includes the second substrate intact in the final device?

[00:16:48] Speaker 00:
In the final device, Your Honor.

[00:16:50] Speaker 00:
It is true that you can see

[00:16:52] Speaker 00:
embodiments in the patent that end those four steps and the second substrate is there and I don't think there's a counter example to that but there are teachings in the patent that indicate the opposite and this is I'm thinking of column five lines 30 to 31 where there's a teaching about the method of attachment and that the second substrate 58 can be attached with any appropriate technique and then the specification specification goes on to say

[00:17:22] Speaker 00:
that in one particular technique, which gives a permanent attachment, and it talks about epoxy and degassing and curing.

[00:17:30] Speaker 00:
So you have this initial statement that any appropriate technique could be used.

[00:17:35] Speaker 00:
And then there's one specific example that renders a permanent attachment, meaning it couldn't be removed after that.

[00:17:41] Speaker 00:
So among the universe of techniques that one could use, many of those are not going to be permanent.

[00:17:46] Speaker 00:
And in fact, the one technique that the specification says is permanent

[00:17:49] Speaker 00:
is separately claimed in claims 8 and 18.

[00:17:52] Speaker 00:
So one would expect the independent claims to be broader than that.

[00:17:57] Speaker 00:
Mauritian has a sort of functional argument, an engineering argument, if you will, that you can't remove the second substrate because there wouldn't be enough mechanical stability for the thin wafer.

[00:18:13] Speaker 00:
And that's an argument that's only valid during the process of fabrication.

[00:18:18] Speaker 00:
You can remove the second substrate as long as there is some sort of other support for the wafer.

[00:18:23] Speaker 00:
And as a good example of this, initially, the support for the wafer is the etchable layer that's recited in the claims.

[00:18:31] Speaker 00:
And Raytheon removes, or the 6-7-8 patent removes the etchable layer once the second substrate is attached, so once there's other mechanical stability.

[00:18:40] Speaker 03:
Right, but in Morimoto, the second stroke, how is the second substrate layer removed?

[00:18:48] Speaker 00:
Ultimately, it is removed.

[00:18:50] Speaker 00:
And I don't think Morimoto says the exact manner in which it is removed, Judge Malley.

[00:18:55] Speaker 00:
But it's not removed at the point in time, which is the output of the claim, which I think literally Raytheon's construction is saying is the complete device.

[00:19:08] Speaker 04:
In the blue brief, Raytheon argues that regarding the experts, that the only thing resembling a question about the two doctors

[00:19:18] Speaker 04:
credibility is when Sony merely invited the PTAB to review Mr. Bendick's transcript in its entirety for that purpose.

[00:19:28] Speaker 04:
Why shouldn't we find that you waved any challenges to those two doctors' credibility?

[00:19:34] Speaker 00:
So, Your Honor, this is, of course, on the question of reduction to practice for the Burton reference.

[00:19:41] Speaker 00:
And I think the notion that Sony didn't

[00:19:45] Speaker 00:
challenge the credibility of the Raytheon witnesses.

[00:19:47] Speaker 00:
And I'm talking here, both the inventor's and Dr. Buckman's testimony is a little bit mysterious to me.

[00:19:53] Speaker 00:
Because what Sony did below, and the board ultimately agreed with this, is to say that the inventor's deposition testimony contradicts their original declaration testimony.

[00:20:06] Speaker 00:
And also, the 1991 document that Raytheon is relying on, this IRAD, contradicts the inventor's original declaration testimony.

[00:20:14] Speaker 03:
So what precisely did they say in their deposition that was different than the declaration?

[00:20:18] Speaker 00:
So on Mr. Fenella, for example, on Appendix Page 577 testified in answer to what I think is a very straightforward question in this context.

[00:20:28] Speaker 00:
Did you verify that all elements of the claims were used in the process that they're claiming for the reduction to practice?

[00:20:35] Speaker 00:
And he said, no, we did this at various times.

[00:20:37] Speaker 00:
It's not necessarily a single device that demonstrates all of this stuff.

[00:20:42] Speaker 00:
And then 20 transcript pages later, on appendix page 597, he says, remember, it's not a single device for all of this.

[00:20:51] Speaker 00:
That contradicts his original declaration testimony.

[00:20:54] Speaker 00:
And I'm not implying anything nefarious here.

[00:20:56] Speaker 03:
I'm not sure how that contradicts it.

[00:20:58] Speaker 03:
I mean, he said that we ultimately performed all the steps.

[00:21:01] Speaker 03:
Here he's saying that we divided into various pieces, and they were performed at various times, the sum of which constitute the reduction of practice.

[00:21:09] Speaker 03:
But he's not saying that.

[00:21:11] Speaker 03:
that any of those times post-dated the critical date?

[00:21:16] Speaker 00:
Judge Amali, I think the critical point there is the different devices.

[00:21:19] Speaker 00:
Because in the original declaration, he makes the case that there is an October 1990 reduction to practice tied to a specific chip with a CRC designation.

[00:21:31] Speaker 00:
And what comes out in the deposition transcript is that that's not necessarily true, that there are different steps being performed to make different devices

[00:21:41] Speaker 00:
And those are being combined to construct a reduction of practice case.

[00:21:45] Speaker 00:
And that lowered the credibility of the original declaration.

[00:21:48] Speaker 03:
And that doesn't seem like an inconsistent statement to me at all.

[00:21:51] Speaker 03:
I mean, if I were sitting in district court, I wouldn't even let you use it to impeach, because it's not inconsistent.

[00:21:58] Speaker 03:
Certainly the- You never did it.

[00:21:59] Speaker 03:
There weren't follow-up questions to get to exactly the point you're trying to make.

[00:22:04] Speaker 00:
Well, certainly the original question, I think on appendix page 577.

[00:22:08] Speaker 00:
That's what I'm looking for.

[00:22:11] Speaker 00:
was whether or not he had verified that all steps of the claim were used to produce that reduction to practice device.

[00:22:18] Speaker 00:
And the answer to that was no, it was not necessarily any one device that showed all of these things.

[00:22:24] Speaker 00:
And the board, I think, relied on that as a point which undermined the credibility of the original declarations, but also in combination with what the 1991 IRAD document said.

[00:22:37] Speaker 00:
And the 1991 IRAD document, remember, had a specific date

[00:22:41] Speaker 00:
for its completion, which was early 1991, talking about events through 1990.

[00:22:48] Speaker 00:
So while it was being written, it was several months after the reduction to practice date.

[00:22:54] Speaker 00:
Dr. Buckman, Raytheon's witness, relied on that figure two on appendix page 241, which Mr. Malenda referred to.

[00:23:03] Speaker 00:
And the figure two at the bottom has a substrate, which he said was the second substrate.

[00:23:09] Speaker 03:
Let me go back to Liu.

[00:23:11] Speaker 03:
If, in fact, it's true that Liu actually says that three of its purposes cannot be satisfied with a silicon chip or use of silicon in this process, why isn't that enough to make it clear that there would not be a motivation?

[00:23:36] Speaker 00:
So first of all, Judge O'Malley, it's not true that Liu says that.

[00:23:40] Speaker 00:
Liu says only what is in the second paragraph of Liu that silicon can hamper certain applications.

[00:23:45] Speaker 00:
The second of all, the reason it doesn't matter is because the combination that was put forward was not modifying Liu to achieve Liu's purpose.

[00:23:54] Speaker 00:
It was taking the method of Liu, which produces a backside illuminated device, and applying that to the many known purposes already usable for silicon-based devices.

[00:24:06] Speaker 00:
So we have this background

[00:24:08] Speaker 00:
that the devices of this type, which are CCDs, just image sensors basically, are in an industry that is dominated by silicon-based devices.

[00:24:16] Speaker 03:
But in terms of analyzing teaching way, we're supposed to look at the purposes of the prior art, right?

[00:24:23] Speaker 00:
Yes.

[00:24:24] Speaker 00:
We are supposed to look at the purposes of the prior art, but we're talking about a different prior art purpose.

[00:24:29] Speaker 00:
In other words, Sony never advocated and the board didn't find

[00:24:33] Speaker 00:
that a person of ordinary skill in the art would use silicon with Liu to fulfill Liu's purposes.

[00:24:39] Speaker 00:
What the board found was that a person of ordinary skill in the art would have known of other applications that were appropriate for silicon-based devices and would have used Liu's method to make those devices for those purposes.

[00:24:51] Speaker 00:
And that's perfectly acceptable under the case law, right?

[00:24:53] Speaker 00:
That is the quote from KSR that we have in our brief where the Supreme Court said, you can't just look at the prior art asano's purpose

[00:25:02] Speaker 00:
you can look at the technology in there.

[00:25:03] Speaker 00:
And if there's motivation to do it, of course, you have to get past that step.

[00:25:07] Speaker 00:
But if there's motivation to do it, you're not, as a matter of law, tied to the purpose of a primary reference or even a secondary reference.

[00:25:14] Speaker 00:
You just have to explain why a person of ordinary skill would have had motivation to do what they did.

[00:25:19] Speaker 00:
And the board did that on appendix page 81, referring to specifically Dr. Blanchard's testimony at

[00:25:28] Speaker 00:
appendix pages 10573 and 10575, paragraphs 184 through 187, where he laid out very clearly why a person of ordinary skill in the art would have done that.

[00:25:39] Speaker 00:
First of all, they would have known that there were other applications in the field for silicon-based devices, and that's not disputed by Raytheon.

[00:25:46] Speaker 00:
You heard Mr. Melendez say that, and that's also clear in the briefs, that silicon-based devices were in fact dominating the industry

[00:25:54] Speaker 00:
that they were cheaper, faster, easier to make.

[00:25:56] Speaker 00:
That's in paragraph 187.

[00:25:59] Speaker 00:
And that Lew itself, at the end, suggests that other semiconductors can be used for different kinds of applications.

[00:26:05] Speaker 00:
So all of that taken together, I think, is substantial evidence for the board overall finding motivation to combine and rejecting the original teaching away argument

[00:26:18] Speaker 00:
that even we agree that Raytheon made, albeit in a cursory fashion in the Patmanner response, which was simply based on this hampering language in the second paragraph of Liu reference.

[00:26:32] Speaker 00:
So overall, the board, in addressing that original teaching away argument, adopted a motivation to combine that was not based on Liu's purposes, but was based on purposes

[00:26:46] Speaker 00:
that a person of ordinary skill in the art would have known based on the dominant technology in the industry.

[00:26:50] Speaker 00:
None of that is disputed by Raytheon on appeal.

[00:26:53] Speaker 00:
And those fact findings supported by substantial evidence, I think, support the board's judgment in this respect.

[00:26:59] Speaker 00:
And I'd also like to correct, I think, Mr. Malinda's quotation of the oral argument transcript below where he talked about gate obscuration.

[00:27:09] Speaker 00:
Gate obscuration arises from the normal method of processing.

[00:27:14] Speaker 00:
It is cured by

[00:27:16] Speaker 00:
The four-step method that is disclosed in lieu, which the board found anticipated, not only the independent claims, but some of the dependent claims as well, not disputed again by Raytheon on appeal.

[00:27:31] Speaker 00:
And that method has nothing to do with a particular semiconductor type that's used.

[00:27:36] Speaker 00:
That's actually an advantage that one gets

[00:27:38] Speaker 00:
from using Liu in other semiconductor types, including silicon.

[00:27:42] Speaker 00:
So that's simply not correct to say that Liu's purpose there is frustrated by the semiconductor type.

[00:27:49] Speaker 00:
What's really driving that is the method steps of furnishing, forming, attaching, etching, as Liu does, identically with the 6, 7, 8-pound.

[00:27:59] Speaker 00:
And I think overall Raytheon is simply arguing the wrong standard on appeal.

[00:28:07] Speaker 00:
The board made

[00:28:09] Speaker 00:
factual findings that are amply supported by substantial evidence, including the record of the corroboration evidence that Raytheon put forward itself in the Bertine issue, and the record evidence in the form of the prior art, and the declarations of the experts that were submitted by Sony and the cross-examination testimony, and

[00:28:31] Speaker 00:
That's enough to sustain the board's judgment, whether or not Raytheon, on appeal, now believes that there's some factual issue, which you should decide to know.

[00:28:38] Speaker 00:
But that's not the right standard.

[00:28:39] Speaker 00:
And so you should affirm the board's judgment.

[00:28:41] Speaker 00:
Thank you.

[00:28:43] Speaker 02:
Thank you, Mr. Smith.

[00:28:44] Speaker 02:
Mr. Melinda has some little time.

[00:28:51] Speaker 04:
Mr. Melinda?

[00:28:52] Speaker 04:
Yes, sir.

[00:28:52] Speaker 04:
I'd like you to address a concerning one.

[00:28:56] Speaker 04:
And that's the question of waiver.

[00:28:59] Speaker 04:
In its preliminary response,

[00:29:01] Speaker 04:
Raytheon made its second substrate argument.

[00:29:06] Speaker 04:
And the PTAB rejected it.

[00:29:09] Speaker 04:
And in the institution decision, cautioned Raytheon that if patent arguments weren't raised.

[00:29:21] Speaker 04:
Despite that expressed warning, Raytheon only included a footnote.

[00:29:27] Speaker 04:
How do you get past?

[00:29:29] Speaker 05:
So, Your Honor, several things.

[00:29:31] Speaker 05:
First, the board addressed this issue in its final writ decision.

[00:29:34] Speaker 05:
Well, first it addressed it in the initial decision, addressed the claim construction issue, basically replicated that erroneous reasoning in its final writ decision.

[00:29:41] Speaker 05:
And so we raised it in the preliminary response.

[00:29:44] Speaker 05:
We raised it in a footnote in the patent owner response, and then again, an oral argument.

[00:29:48] Speaker 04:
Right.

[00:29:49] Speaker 04:
But oral argument isn't enough under the law.

[00:29:51] Speaker 05:
Well, Your Honor, then the board said in its final writ decision under

[00:29:58] Speaker 05:
that basically on a complete record that it had, it was able to construe the claims.

[00:30:03] Speaker 05:
So, Your Honor, I think the record was fully developed, and the parties had their opportunity to give their arguments.

[00:30:10] Speaker 05:
I mean, we gave ours on at least two or three occasions.

[00:30:13] Speaker 05:
They were arguing the plain meaning, and the board had an adequate record to make that decision.

[00:30:20] Speaker 05:
So we don't believe there's any way for there, Your Honor.

[00:30:23] Speaker 05:
I guess I'd just like to, on the second substrate issue quickly, Judge Lurie, I would agree with you that this does defy common sense, this construction.

[00:30:31] Speaker 05:
And I would just direct your attention to column five, just to reinforce that.

[00:30:34] Speaker 05:
In column five, there's a distinction between the temporary support that is attached on top of the second substrate that protects it when the etching process occurs on the bottom.

[00:30:47] Speaker 05:
And the word temporary is used twice in that context.

[00:30:50] Speaker 05:
So that's removed.

[00:30:52] Speaker 05:
in distinction from the permanent affixing of the second substrate to the remainder of the device.

[00:30:57] Speaker 05:
So that's an important distinction to be aware of.

[00:31:01] Speaker 05:
With respect to Morimoto and what it discloses, there are two important points to take home.

[00:31:06] Speaker 05:
One is that this is a four-step process in Morimoto.

[00:31:09] Speaker 05:
On step three, the second substrate is removed.

[00:31:12] Speaker 05:
It's not permanently affixed.

[00:31:14] Speaker 05:
And then on the fourth step, a cap is essentially placed on the bottom of it.

[00:31:19] Speaker 05:
That's two important distinctions from our invention.

[00:31:24] Speaker 05:
The first of which is that we're all about the backside processing.

[00:31:26] Speaker 05:
You can't do backside processing in the Morimoto reference because it's capped.

[00:31:32] Speaker 05:
And of course, secondly, there's the removal of that second substrate, which of course we don't do because it's permanently affixed.

[00:31:38] Speaker 05:
With respect to reduction of practice, I would agree with your honor about any sort of contradiction.

[00:31:44] Speaker 05:
There's no contradiction in this testimony.

[00:31:46] Speaker 05:
I think these were intentionally generalized questions.

[00:31:49] Speaker 05:
They were not focused on particular claims or particular claim limitations.

[00:31:52] Speaker 05:
And that's important, because all they really wanted was a sound bite of very general nature.

[00:31:57] Speaker 05:
And I should also point out the fact that it's not inconsistent that there could be multiple devices that embody the claimed invention.

[00:32:03] Speaker 05:
So we don't believe that there's any tension there.

[00:32:06] Speaker 05:
And in terms of waiver, the issue you raised, Judge Wallach, I should point out the fact that with respect to the credibility of the inventors, I wholeheartedly agree that it was waived.

[00:32:14] Speaker 05:
And also, I should point out that underscores the unfairness of this decision.

[00:32:18] Speaker 05:
Because you have unchallenged inventor testimony coupled with no responsive rebuttal by an expert.

[00:32:25] Speaker 05:
They had no expert.

[00:32:27] Speaker 05:
And then lastly, with respect to teaching away, I would just summarize by saying that it's important to focus on what the Liu reference teaches, which is something very different than all the rest of the art was teaching.

[00:32:37] Speaker 05:
And the board never addressed this objects of the invention argument under Enred Gordon.

[00:32:41] Speaker 05:
And you should remand for them to do that.

[00:32:45] Speaker 02:
Thank you, Mr. Malenda.

[00:32:46] Speaker 02:
We'll take the case under advisement.