[00:00:08] Speaker 04:
Maybe you're ready.

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

[00:00:10] Speaker 03:
May it please the court?

[00:00:11] Speaker 03:
Kevin Russell on behalf of Appellant Largan Precision Company Limited.

[00:00:15] Speaker 03:
The central question in this case is whether a person of ordinary skill in the art – Could you speak up just a little bit more, please?

[00:00:20] Speaker 03:
I apologize.

[00:00:22] Speaker 03:
The central question in this case is whether a person of ordinary skill in the art would have a reasonable expectation of success in dealing with the image quality problems that would result from combining the lens assembly system described in the KR872 patent

[00:00:37] Speaker 03:
with a lower F number.

[00:00:39] Speaker 03:
And in particular, the question is whether something in the art provided more than a general approach to a promising field of expectation, or the prior art only gave general guidance as to how to achieve that result.

[00:00:50] Speaker 03:
This first board.

[00:00:51] Speaker 04:
So this is a pure, substantial evidence case.

[00:00:54] Speaker 04:
And isn't the evidence relied on by the board, including the known benefits of having a low F number, that persons skilled in the art commonly reduce F numbers

[00:01:06] Speaker 04:
wasn't there substantial evidence that this would, as to why one would have been motivated to make this combination?

[00:01:16] Speaker 03:
So first of all, we don't raise simply a substantial evidence object.

[00:01:20] Speaker 03:
We don't raise simply a substantial evidence objection.

[00:01:23] Speaker 03:
We say that the court applied the wrong standard.

[00:01:26] Speaker 03:
But to answer your question, the court did, the board did say that one of the reasons, in fact, its principal reason for finding obviousness

[00:01:35] Speaker 03:
was that low F numbers were desirable and had been achieved in other systems, multi-lens systems for portable devices.

[00:01:42] Speaker 04:
We think that that- And they didn't make that up.

[00:01:44] Speaker 04:
I mean, there was an expert.

[00:01:46] Speaker 04:
There was expert testimony.

[00:01:47] Speaker 04:
There was other stuff.

[00:01:48] Speaker 03:
But the error in that announced.

[00:01:50] Speaker 03:
First, this court has repeatedly held that just because something's desirable doesn't mean it's obvious how to achieve it.

[00:01:55] Speaker 03:
And second, the court, the board, pointed to nothing in those other multi-lens systems that would have

[00:02:01] Speaker 03:
were so similar to KR872 that they would have taught APOSA what to do to achieve the same result in KR872.

[00:02:10] Speaker 03:
And in fact, when Dr. Milster testified about what he did to recreate the invention, he never cited to those other systems.

[00:02:17] Speaker 03:
And so we think that part of the rationale is you could call insufficient as a matter of law, maybe it's insufficient natural evidence, but I think it is contrary to the score's teachings about, you know, what is sufficient

[00:02:28] Speaker 03:
to show a reasonable expectation of success.

[00:02:31] Speaker 03:
Now, the board did also point to this fact.

[00:02:34] Speaker 04:
Do you want to give us a case or two where you say that the board applied an erroneous standard?

[00:02:40] Speaker 03:
Well, in Greenfield, I think the court has frequently said

[00:02:46] Speaker 03:
that just because something's desirable doesn't mean that it's obvious.

[00:02:50] Speaker 04:
And is that what the board said here?

[00:02:52] Speaker 03:
There's one of the things that the board said.

[00:02:53] Speaker 03:
The board also said, as we were discussing, that there are other systems that achieve that result.

[00:02:58] Speaker 03:
And then we find out, just as a matter of analogy, the fact that there are other small cars that are able to go 200 miles an hour doesn't mean it's obvious to show how to make a VW Bug go 200 miles an hour.

[00:03:09] Speaker 00:
Well, Counsel, can you point us to where specifically in the board's decision you're taking issue

[00:03:14] Speaker 00:
with what the board said or the alleged error that you are identifying.

[00:03:19] Speaker 00:
Kind of a follow-up to Judge Prost's question.

[00:03:21] Speaker 03:
Right.

[00:03:22] Speaker 03:
So this part of the rationale that we're discussing here, that it's desirable and that there are other multi-line systems that have achieved it, that's at page 31 of their opinion.

[00:03:32] Speaker 04:
I'm sorry?

[00:03:32] Speaker 03:
That's at page 31 of their opinion.

[00:03:35] Speaker 03:
The second rationale that they give is the fact that the art taught this iterative process, this idea that

[00:03:44] Speaker 03:
to achieve this result, you – What's your own expert validated?

[00:03:49] Speaker 03:
Well, our expert validated it, yeah.

[00:03:52] Speaker 03:
Well, certainly, our expert says that this is a general process that you can use to solve this kind of problem.

[00:03:57] Speaker 01:
Well, no one there still in the art, including me, knows to do this.

[00:04:01] Speaker 01:
Knows to do this.

[00:04:02] Speaker 01:
And Zmax, there's – you just go to a computer-generated software program, and people know how to run it.

[00:04:09] Speaker 01:
And we ran it.

[00:04:10] Speaker 01:
It took, what, 20 hours?

[00:04:13] Speaker 01:
And boom, it did it.

[00:04:15] Speaker 03:
So I think, again, this court's cases draw this important distinction between a check, between success being achieved because something in the art provides some actual teaching on how to do it.

[00:04:26] Speaker 01:
In cases in which- It's kind of like, you know, you have a group of people over here in a corner that deal with adopting lenses, and everybody knows you get a lower f-stop faster, better light, quicker action.

[00:04:38] Speaker 01:
Clearly desirable to do this.

[00:04:40] Speaker 01:
And there is a well-known program, computer program.

[00:04:44] Speaker 01:
Sure, you have to go for steps.

[00:04:47] Speaker 01:
You start slow.

[00:04:48] Speaker 01:
You go informatically.

[00:04:50] Speaker 01:
The program tells you how to do it.

[00:04:53] Speaker 03:
No, but that's the key mistake, I think, in that final argument, is the computer does not tell you how to do it.

[00:04:59] Speaker 03:
The doctor must acknowledge that there has to be something there.

[00:05:02] Speaker 01:
We haven't shown that it didn't.

[00:05:04] Speaker 01:
Well, Dr. – nobody claims that – Well, part of the problem here is that both of the board and him, nobody tells us much exactly how ZMAX is really working.

[00:05:12] Speaker 01:
We have the testimony from their expert that says, we ran it.

[00:05:16] Speaker 01:
Here's what I did.

[00:05:17] Speaker 01:
Didn't create any particular obstacles for me.

[00:05:19] Speaker 03:
So if you look at paragraphs 24 and 25 of Dr. Milster's reply declaration, which is where he explains in the greatest detail what he did with the ZMAX software, he explains that the way it all works

[00:05:33] Speaker 03:
is you, at each step, have to identify which of the dozens of variables you're going to hold constant or make into variables that can be looked at.

[00:05:41] Speaker 01:
And he said, I did it.

[00:05:42] Speaker 01:
I did it.

[00:05:42] Speaker 03:
Well, but the question then is, what did he do it just because there was something general and some general guidance on the other?

[00:05:49] Speaker 01:
He did it because he had a skill in the art and he has a tool here to use this and go to step one and look and see, oh my god, it isn't working.

[00:05:57] Speaker 01:
And then you use your

[00:05:59] Speaker 01:
general knowledge in the field to figure out which lens is the problem and what you have to do to adjust it a little bit and adjust it.

[00:06:06] Speaker 01:
And then you run and say, OK, now it got that f-stop.

[00:06:09] Speaker 01:
You dial, go down a little lower and try the next one.

[00:06:12] Speaker 01:
That's the way I understood it worked.

[00:06:14] Speaker 03:
I think that is a general description of it, except that.

[00:06:17] Speaker 03:
And you are correct to describe it.

[00:06:18] Speaker 01:
So that's what one of the engineers doing here is motoring along.

[00:06:21] Speaker 01:
And boy, he gets the first time and he works.

[00:06:24] Speaker 01:
He said, this is working.

[00:06:25] Speaker 01:
I'll keep going.

[00:06:26] Speaker 01:
I have motivation to go to the next step.

[00:06:28] Speaker 01:
I go to the next step.

[00:06:29] Speaker 01:
And he does.

[00:06:31] Speaker 01:
So what you are describing, Your Honor – And, you know, an F-1 6 – I mean, to start as a record, I mean, Leica had an F-1 – go to F-1-0 in 1970.

[00:06:44] Speaker 03:
But you didn't get F-1 or anything like it in a mobile phone until very recently, which shows – I suggest that it isn't completely obvious how to do it.

[00:06:53] Speaker 03:
Let me use an – the example of an actual case.

[00:06:55] Speaker 03:
So in – in a Grunenthal,

[00:06:57] Speaker 03:
This court confronted a similar situation where the question was, was it obvious how to find a polymorph of a particular compound?

[00:07:06] Speaker 03:
And the court said, look, there wasn't any detailed methodology how to do it.

[00:07:10] Speaker 03:
Instead, what the challenger pointed to was an iterative process like this and a flow chart that looks very much like the one in this case.

[00:07:18] Speaker 03:
And this court said that it's not enough if that process simply provides general guidance for a course of general experimentation.

[00:07:27] Speaker 03:
So there is a distinction we have to draw between whether this iterative process, whether the decisions the POSET is making at those stages where they're deciding what variables to leave constant, which values to assign to other ones, is that then just experimenting, which Imre Grunenthal says is not sufficient, or is it something that they're being taught in the art specifically, in that we know that the board did not ask that question.

[00:07:51] Speaker 03:
That's the key question, and it didn't answer it, because when we objected

[00:07:55] Speaker 03:
that Dr. Milster didn't record the data from each of his iterative steps.

[00:07:59] Speaker 03:
The board said it didn't matter.

[00:08:01] Speaker 03:
And that's – and this is at page 46 of their opinion.

[00:08:04] Speaker 03:
And they said it didn't matter because we view Dr. Milster's ZMAX modeling as being directed to showing that the iterative optimization process would have resulted in actual success.

[00:08:14] Speaker 03:
So the only thing they took away from his ZMAX modeling was that it was successful.

[00:08:20] Speaker 03:
And they assumed that because he was successful, it must be something that Opposa

[00:08:25] Speaker 03:
would have been successful at doing as well.

[00:08:27] Speaker 03:
And that doesn't follow.

[00:08:28] Speaker 03:
And it doesn't draw the decision.

[00:08:29] Speaker 00:
So you're not disputing the board's definition of a person of ordinary skill in the art, though, right?

[00:08:33] Speaker 03:
Yeah, I'm not.

[00:08:35] Speaker 00:
OK.

[00:08:35] Speaker 00:
And also, you don't dispute that lowering the F number was known in the art for multi-limb systems, right?

[00:08:41] Speaker 03:
That it had been achieved in some other systems, although there wasn't any proof that those systems were so similar that they provided any actual teaching about how to do it to this system.

[00:08:51] Speaker 03:
And so there's a best, very indirect evidence that it might be possible

[00:08:54] Speaker 03:
It's certainly not the case that every multi-line system is this fast.

[00:08:58] Speaker 03:
And so it raises the question.

[00:08:59] Speaker 00:
But you are acknowledging, just so that we can level set here, that at least in some multi-line systems, lowering F number was known in the art, correct?

[00:09:08] Speaker 03:
That it had been accomplished in the art.

[00:09:10] Speaker 03:
How to do it and whether that teaching was applicable to KR 872 is the real question here, right?

[00:09:17] Speaker 03:
And the question is, is there something in the art that taught somebody how to achieve what they had done in these other systems with this system?

[00:09:23] Speaker 03:
And simply the fact that they have achieved it in some other system doesn't mean that they could do it for K8R872.

[00:09:29] Speaker 03:
And again, as I mentioned, Dr. Milster, when he achieved the same result, he never pointed to those other examples and said, I learned anything from these other systems or did what those people did.

[00:09:39] Speaker 04:
The standard is a reasonable expectation of success, not certainty that there's going to be success.

[00:09:44] Speaker 03:
To be sure.

[00:09:45] Speaker 04:
That there is a motivation to combine, which I think there was here in terms of the benefits that derive from a lower F number,

[00:09:53] Speaker 04:
That's what PSR says we do.

[00:09:57] Speaker 03:
That's right.

[00:09:57] Speaker 03:
I'm sorry.

[00:09:57] Speaker 04:
And particularly given the findings based on expert testimony that the board chose to credit and a substantial evidence review, I don't know how we avoid the result.

[00:10:07] Speaker 03:
Again, and I'm sorry if I'm repeating myself, I think the legal error was the failure to distinguish between whether what Dr. Milster accomplished was the result of general experimentation, which Gunenthal, Hinrich Cuban, O'Farrell all say is insufficient.

[00:10:23] Speaker 03:
Or instead was either something directed, more directed by the arts, something somebody would know how to do at each step, which Dr. Moster said, but he said it in a completely conclusory fashion, or was within the KSR obvious to try.

[00:10:37] Speaker 03:
In the bill to its credit, recognize that the existence of the iterative process at best showed only that it was obvious to try, but it then misapplied KSR's test by asking

[00:10:49] Speaker 03:
by saying that there are a finite number of predictable solutions, because there was only one solution to try, which was to lower the F number.

[00:10:55] Speaker 03:
We've explained, though, that that's not right, because everybody agrees, if you just lower the F number, you end up with a lens system that doesn't work.

[00:11:02] Speaker 03:
And nobody would be motivated to create a lens system that doesn't work.

[00:11:05] Speaker 01:
Well, it depends on how you lower it.

[00:11:07] Speaker 01:
If you lower it all the way to F1, yes.

[00:11:10] Speaker 01:
Well, no, it's – so, Dr. Nilsson – The existing lens has got an F12.

[00:11:15] Speaker 01:
and you go to F11.9, and it works.

[00:11:19] Speaker 01:
Then you go to 11.8, and it works.

[00:11:21] Speaker 01:
And then 11.7, and it works.

[00:11:24] Speaker 01:
You just dial down to see how low you get.

[00:11:26] Speaker 01:
That's what ZMAX does.

[00:11:28] Speaker 03:
Two things about that.

[00:11:29] Speaker 03:
One is, Dr. Noster admitted that you couldn't just put a lower F number in it.

[00:11:35] Speaker 03:
No, but that's a no-brainer, right?

[00:11:38] Speaker 03:
So the question is, what additional steps do you have to take?

[00:11:43] Speaker 03:
And he did not testify that you can just do it in an anchor lens and the computer will figure the rest out.

[00:11:47] Speaker 01:
If you take the lens you're trying to modify with Zmax and you plug in all the characteristics of the lens, nobody disagrees with that, right?

[00:11:55] Speaker 01:
And then you make some type of a prediction about what the f-stop is on that particular lens with those six components put together.

[00:12:03] Speaker 01:
Nobody disagrees that that's possible when I'm still in New York to do that.

[00:12:07] Speaker 01:
So let's just assume that

[00:12:09] Speaker 01:
the Korean reference had of whatever it was.

[00:12:11] Speaker 01:
I mean, nobody disagrees.

[00:12:12] Speaker 01:
That's what it wants to start with.

[00:12:14] Speaker 01:
The editing process says, don't go to F1, because that won't work.

[00:12:18] Speaker 01:
Elroy knows that.

[00:12:19] Speaker 01:
So assume that the Korean patent was F7.

[00:12:23] Speaker 01:
You go to 6.9.

[00:12:25] Speaker 01:
See what happens.

[00:12:26] Speaker 03:
And when you see what happens, you will find that it still doesn't work.

[00:12:29] Speaker 03:
And you've got to make some modifications.

[00:12:31] Speaker 03:
And then the lens designer has to make some choices.

[00:12:34] Speaker 03:
And the question is whether those choices are taught in the art

[00:12:37] Speaker 03:
or instead is just general experimentation.

[00:12:41] Speaker 03:
That's the key question, and it's a question that the board did not ask.

[00:12:44] Speaker 03:
Because the only thing that should be asked is that.

[00:12:45] Speaker 01:
Well, you asked them to ask that.

[00:12:47] Speaker 03:
We complained.

[00:12:48] Speaker 01:
I mean, we complained literally.

[00:12:50] Speaker 01:
Is that in your brief?

[00:12:51] Speaker 01:
I mean, it sounds like a new argument to me.

[00:12:53] Speaker 03:
In our brief to you?

[00:12:54] Speaker 03:
I mean, this is our principal argument in the brief to this court.

[00:12:58] Speaker 03:
We made the argument to the board that it could not consider whether or not this was obvious without knowing the data.

[00:13:04] Speaker 03:
from the interim steps.

[00:13:06] Speaker 03:
And this is what I was discussing before.

[00:13:07] Speaker 03:
And they said, we don't have to have that data, because the only thing we're looking at is the last step and the fact that it was successful.

[00:13:15] Speaker 03:
Right?

[00:13:15] Speaker 03:
And so our legal error that we're trying to establish here is that the board was required under Greeningfall and Inner Cuban to distinguish between whether success would be achieved simply through experimentation.

[00:13:27] Speaker 03:
Because we have.

[00:13:28] Speaker 03:
We know that experimentation can lead to success.

[00:13:31] Speaker 03:
We can even expect that it will.

[00:13:33] Speaker 03:
We can expect that, you know, vaccine scientists will find a cure.

[00:13:37] Speaker 01:
I'm wondering, in your questions presented, whether you argue there's a legal error.

[00:13:44] Speaker 01:
With motivation and blind reason, why foundation's success?

[00:13:47] Speaker 01:
I don't see any legal error argument being presented to us.

[00:13:52] Speaker 03:
I respectfully disagree.

[00:13:54] Speaker 03:
Could follow my colleague from the last argument example and provide you the site at rebuttal.

[00:13:59] Speaker 01:
I'm just looking at the front page here real brief.

[00:14:11] Speaker 01:
Misapplied obvious to try.

[00:14:13] Speaker 01:
I understand that argument.

[00:14:14] Speaker 01:
I understand that legal error.

[00:14:18] Speaker 03:
the error in concluding that a person of reasonable skill and error would have the motivation of reasonable success – expectation of success to combine these things, simply because doing so was desirable, and the land system did not share KF – KR872's design of lower F numbers.

[00:14:37] Speaker 03:
So that – that – so that is an objection to their principal argument, that this idea that it was desirable.

[00:14:41] Speaker 01:
No, but I mean, there's a way in the English language you say that fundamental problem here is that they committed a real legal error.

[00:14:48] Speaker 01:
That would have caught my attention.

[00:14:50] Speaker 03:
So that's point two on the next page.

[00:14:53] Speaker 03:
This is our objection to that.

[00:14:54] Speaker 03:
So they have their principal argument that there are other systems, and it's desirable.

[00:14:58] Speaker 03:
And we say that's not good enough.

[00:14:59] Speaker 03:
You can call that substantial evidence.

[00:15:01] Speaker 03:
You can call that a legal error.

[00:15:03] Speaker 03:
They also say, get rid of process.

[00:15:05] Speaker 03:
And that's our objection number two on the next page, where we say that this misapplied the obvious detriton number two and three.

[00:15:13] Speaker 03:
We both say that that's not substantial evidence.

[00:15:16] Speaker 03:
And what most of the board was wanting to say about this

[00:15:18] Speaker 03:
was that it was obvious to try.

[00:15:20] Speaker 03:
I see that I've run nearly out of time.

[00:15:33] Speaker 02:
Good morning, and may I please support – it sounds like the only dispositive issue is whether substantial evidence supports the board's finding that there was a reasonable expectation of success here.

[00:15:43] Speaker 02:
We submitted, does.

[00:15:44] Speaker 02:
The board relied on layers of evidence.

[00:15:46] Speaker 02:
I think we have already discussed the numerous prior art designs that were discussed by Dr. Milster, Motorola's expert, in concluding and opining that it was known that designs of this type could reach low – F numbers as low as 1.5.

[00:16:01] Speaker 02:
In addition to that, Dr. – you know, Largan's only argument at the board

[00:16:08] Speaker 02:
distinguishing those prior art designs was, well, some of them have five elements, not six.

[00:16:13] Speaker 02:
And the board addressed that in Appendix 31 to 32, saying, well, some of these designs have six elements, just like the Korean reference, just like KR 872.

[00:16:22] Speaker 02:
There were no other differences pointed out at the board.

[00:16:25] Speaker 02:
The board noted these are all for electronic devices.

[00:16:28] Speaker 02:
These are six-element designs.

[00:16:31] Speaker 02:
So in addition to those prior art designs, Dr. Milster also

[00:16:35] Speaker 02:
cited evidence, including a textbook from 2008, and this is at appendix 6817 to 6820, paragraphs 18 and 19.

[00:16:43] Speaker 02:
He discussed and explained why KR 872 was inherently capable of reaching a low F number within the claimed range.

[00:16:51] Speaker 02:
He also cited at appendix 6823 to 24 – this is in paragraph 23 of his declaration – that

[00:16:58] Speaker 02:
Largan's expert, Dr. Bentley, identified a similar starting point for KR872 as, quote, at least a good place to start.

[00:17:06] Speaker 02:
So it seems that all were in agreement.

[00:17:08] Speaker 02:
And I don't see this disputed in their briefing.

[00:17:10] Speaker 02:
This design was inherently capable.

[00:17:13] Speaker 02:
And Skilled Olysses would recognize it as inherently capable of reaching these lower F numbers.

[00:17:18] Speaker 02:
That alone right there is enough for the reasonable expectation of success.

[00:17:23] Speaker 02:
No, there's not absolute certainty.

[00:17:24] Speaker 02:
I would submit there's actually certainty here.

[00:17:28] Speaker 02:
But even absent that certainty, there's certainly an expectation of success.

[00:17:33] Speaker 04:
Well, we mentioned a few times this morning a case called Gunthal.

[00:17:38] Speaker 04:
And he did cite it in blue a number of times.

[00:17:41] Speaker 04:
And I didn't see in red when he responded to that.

[00:17:45] Speaker 02:
respond to that now.

[00:18:04] Speaker 02:
defined path for reaching a low F number.

[00:18:07] Speaker 02:
So you have the specific software.

[00:18:09] Speaker 02:
You have the ZMAC software.

[00:18:10] Speaker 02:
That's discussed at appendix 40, citing to appendix 427, paragraph 34.

[00:18:15] Speaker 02:
You have a specific command within that ZMAC software.

[00:18:18] Speaker 02:
This is at appendix 3523, where it says, quote, most design programs have the capability to easily adjust or scale the aperture.

[00:18:26] Speaker 02:
And then, in addition to that, here we have a specific lens design form

[00:18:31] Speaker 02:
in the Korean reference, right?

[00:18:33] Speaker 02:
This provides the form.

[00:18:35] Speaker 02:
And Dr. Bentley, their expert's own book, says when you're doing this optimization, you want to maintain the basic design form.

[00:18:43] Speaker 02:
KR872 provides this.

[00:18:45] Speaker 02:
The board discussed this at appendix 33 to 34.

[00:18:47] Speaker 02:
Dr. Milster

[00:18:50] Speaker 02:
explained that this was a suitable starting point for F numbers as low as 1.2.

[00:18:56] Speaker 02:
So in addition to that specific theorem, we have a specific process for lowering the F number.

[00:19:02] Speaker 02:
This was not general experimentation.

[00:19:04] Speaker 02:
Smith, at Appendix 3523, says you lower it 10 to 50 percent at a time, optimizing between each step.

[00:19:13] Speaker 02:
And he goes on to say on that same page, this works well.

[00:19:18] Speaker 02:
assuming you have a design that can accommodate the lower F number.

[00:19:21] Speaker 02:
Well, it's undisputed that this design could accommodate the lower F number.

[00:19:25] Speaker 02:
And then we go on to Bentley's own book, Appendix 6580, where she says this is one of the most common scenarios for lens designers.

[00:19:35] Speaker 02:
This was pedestrian.

[00:19:36] Speaker 02:
This was not some general experimentation in a brave new field.

[00:19:41] Speaker 02:
This was something lens designers regularly did.

[00:19:43] Speaker 02:
And at the bottom of that page,

[00:19:45] Speaker 02:
Appendix 6580.

[00:19:46] Speaker 02:
She says, the solution.

[00:19:48] Speaker 02:
And she lays out what the solution is.

[00:19:51] Speaker 02:
In addition to that, we also have testimony and evidence that seems to be undisputed about the level of skill in the art, right?

[00:19:59] Speaker 02:
Poseidus had specific experience using this process.

[00:20:02] Speaker 02:
So the board discusses this, for example, at Appendix 40, citing Appendix 427, paragraph 34 of Milster.

[00:20:09] Speaker 02:
that skilled artisans would have regularly used this type of software, quote, to create new lens designs, often using pre-existing lens designs as a starting point, and then performing routine optimizations to reach a desired design.

[00:20:23] Speaker 02:
Unlike the other cases cited by Pat and owner, here we've got very specific guidance on how to do this.

[00:20:30] Speaker 02:
There's more than a reasonable expectation of success.

[00:20:32] Speaker 02:
And that's not even getting to Dr. Milster's actual modeling, which showed actual success.

[00:20:38] Speaker 02:
And I think what's telling here is the different approaches taken by the experts.

[00:20:45] Speaker 02:
On the one hand, we have Dr. Bentley, Largan's expert, who authored a book

[00:20:49] Speaker 02:
describing, quote, the solution to this very problem, which she characterized as a common scenario.

[00:20:56] Speaker 02:
She'd read that KR872 provided a good starting point.

[00:20:59] Speaker 02:
That's at Appendix 6815, but did not even follow her own solution in purportedly attempting to lower its F number rate.

[00:21:07] Speaker 02:
She gave up after it didn't work.

[00:21:09] Speaker 02:
In contrast to that, we had Dr. Milster, who twice, you know, ran this optimization process on the KR872 design, addressing supposed issues or errors that Lardin had identified in its patent-owner response, and followed Dr. Bentley and the solution laid out in her book, which had been described as early as 2005, and then the Smith-Lenz freeze before that.

[00:21:32] Speaker 02:
The board analyzed and credited Milster's testimony, and it largely found that

[00:21:37] Speaker 02:
Dr. Bentley's testimony was not credible here.

[00:21:39] Speaker 00:
So unless there are further questions, I don't know if you're trying to sit down or if you're just moving on to another issue, but you can go to the same issue if you were going to move on to it.

[00:21:49] Speaker 00:
I want you to respond to the purported errors that opposing counsel says in the board's analysis on the obvious to try.

[00:22:00] Speaker 02:
Yeah, so first of all, we submit that the board got obvious to try right here.

[00:22:05] Speaker 02:
I think if we look at the board's analysis, and this is at page appendix 36, and it's – well, 46 to 37, spanning those pages.

[00:22:17] Speaker 01:
So on page 36, it begins to – Did you argue this, or did this board bring this up on its own?

[00:22:24] Speaker 02:
Oh, the obvious to try.

[00:22:25] Speaker 02:
Yeah, we did not argue obvious to try.

[00:22:27] Speaker 02:
Yeah, and so we would submit that.

[00:22:30] Speaker 04:
The court also raised it as an alternative.

[00:22:33] Speaker 04:
It's clear that they found this was obvious.

[00:22:36] Speaker 02:
Yeah, and I think that maybe that's a better place to start is this obvious to try that the court need not even reach these obvious to try issues.

[00:22:42] Speaker 02:
The board clearly found a reasonable expectation of success that is more than supported by substantial evidence, and the court should affirm on that basis alone.

[00:22:51] Speaker 00:
So in our opinion, we don't need to address obvious to try to ruin your favors, like you said.

[00:22:55] Speaker 02:
You need not address obvious to try.

[00:22:56] Speaker 02:
But if you do, please submit that based on what we say in the papers, that it was obvious to try, in part for the reasons I just articulated.

[00:23:04] Speaker 02:
Namely, this was not general experimentation.

[00:23:06] Speaker 02:
This is something someone knew, hey, as Dr. Bentley said, it's the solution to lowering the F number.

[00:23:14] Speaker 02:
If there are no further questions, I will cede my time.

[00:23:21] Speaker 03:
Thank you.

[00:23:25] Speaker 03:
I could just make three quick points.

[00:23:27] Speaker 03:
First, I don't think there's any genuine dispute that the board's application of KSR was wrong.

[00:23:34] Speaker 03:
They don't explain why the board identified the right solution when it said there was only one solution to try.

[00:23:42] Speaker 04:
But that point you're making kind of a legal error deals with the obvious detritus.

[00:23:48] Speaker 04:
So all you're left with then is either the point.

[00:23:52] Speaker 03:
That's right.

[00:23:53] Speaker 03:
It only deals with that problem.

[00:23:54] Speaker 03:
So you're going to have to affirm on either the ground that it was desirable, which this court has repeatedly said is not sufficient, and simply the fact that some other lens systems with no proof

[00:24:05] Speaker 03:
that they have any teachings in them, or sufficiently similar to this one, to provide concrete guidance on how to achieve the same result.

[00:24:12] Speaker 00:
In this sense, or – Council, what about the distinction that opposing council is drawing here, where you're relying on some cases that deal with unpredictable arts versus cases that deal with predictable arts?

[00:24:22] Speaker 03:
I don't think the board here made a finding about whether this is a predictable art or not.

[00:24:26] Speaker 03:
But we know that it's not predictable.

[00:24:28] Speaker 03:
The whole premise of the iterative process is the only way to find out whether any solution will work.

[00:24:33] Speaker 03:
see if it works and if it doesn't, try something else.

[00:24:36] Speaker 03:
And so that's always going to be possible in a case like this to hire an expert who says, you know, I reproduced the same invention through an iterative process.

[00:24:45] Speaker 03:
And that's going to be the end of lens design patents unless the board is forced to go a step further and say,

[00:24:50] Speaker 03:
Look at what you actually did and decide whether that falls on the line of general experimentation that the court said was insufficient in Grunenthal, in other cases, in Roy Cuban, or whether it satisfies KSR, which we've taken off the table, or whether it provides what he says was very – my friend said was very specific guidance.

[00:25:10] Speaker 03:
And I urge you to look at the things that he pointed to.

[00:25:12] Speaker 03:
Dr. Milster's very specific guidance was simply just this iterative process.

[00:25:16] Speaker 03:
Try something.

[00:25:17] Speaker 03:
If it doesn't work, try something else.

[00:25:19] Speaker 03:
It is not the case that the computer can solve these problems for you.

[00:25:22] Speaker 03:
Dr. Milster acknowledged that it requires the judgment of a lens designer, which he had a bunch of.

[00:25:29] Speaker 03:
And we can't just simply assume that because he was able to accomplish this result, opposed it would as well.

[00:25:34] Speaker 04:
Thank you.

[00:25:35] Speaker 03:
Thank you.

[00:25:35] Speaker 04:
Case is amended.

[00:25:36] Speaker 04:
Thank you.