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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`HAAG-STREIT AG,
`Petitioner
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`v.
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`EIDOLON OPTICAL, LLC,
`Patent Owner
`____________
`
`Case IPR2018-01311
`Patent 6,547,394 B2
`____________
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`RECORD OF ORAL HEARING
`Held: October 9, 2019
`____________
`
`Before PATRICK R. SCANLON, SCOTT A. DANIELS and
`ERIC C. JESCHKE, Administrative Patent Judges.
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`Case IPR2018-01311
`Patent 6,547,394 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`R. ERIC GAUM, ESQUIRE
`Taft Stettinius & Hollister LLP
`200 Public Square
`Suite 3500
`Cleveland, OH 44114-2302
`RYAN O. WHITE, ESQUIRE
`Taft Stettinius & Hollister LLP
`One Indiana Square
`Suite 3500
`Indianapolis, IN 46204-2023
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JODI-ANN MCLANE, ESQUIRE
`McInnes McLane
`128 Dorrance Street
`Providence, RI 02903
`
`ALISSA DIGMAN, ESQUIRE
`McInnes McLane
`318 W. Adams Street
`Suite 1616
`Chicago, IL 60606
`
`JOHN T. MCINNES, ESQUIRE
`McInnes McLane
`9 Exchange Street
`Worcester, MA 01608
`
`
`The above-entitled matter came on for hearing on Wednesday,
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`October 9, 2019, commencing at 1:00 p.m., at the United States Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Patent 6,547,394 B2
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`P R O C E E D I N G S
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`JUDGE JESCHKE: Well, good morning. Welcome to the Patent
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`Trial and Appeal Board. This is an oral hearing in IPR2018-01311 between
`petitioner Haag-Streit AG and patent owner Eidolon Optical LLC. The
`challenged patent is U.S. Patent Number 6,547,394 B2.
`I am Judge Eric Jeschke. With me today on the panel are Judges
`Scanlon and Daniels. You can see the plates underneath with their names.
`Obviously they are remotely located.
`Can we start with counsel introductions? Please step up to the
`microphone because otherwise the remote judges won’t be able to hear you.
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`MR. GAUM: Your Honor, counsel for -- I am Eric Gaum, counsel for
`the petitioner, Haag-Streit AG. And with me is my partner, Ryan White.
`
`JUDGE JESCHKE: Good afternoon.
`
`MS. MCLANE: Good afternoon. I'm Jodie McLane here for the
`patent owner, Eidolon and with me is Alissa Digman and my partner John
`McInnes as well. Your Honor, we have hard copy for the demonstratives,
`would you like that for your --
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`JUDGE JESCHKE: I won’t need them.
`MS. MCLANE: Okay.
`JUDGE JESCHKE: As long as you have given them to the court
`reporter. I have -- both of the remote judges as well as myself we have all of
`the demonstratives here in front of us so feel free to, you know, point to
`specific places and things. We can, we have everything. I do appreciate that
`though.
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`Quick question for housekeeping. It looks like Joshua Stockwell, he
`is not representing -- okay. Got it.
`MS. MCLANE: He’s not, thank you.
`JUDGE JESCHKE: As provided in the hearing order, each side will
`have a total of 45 minutes to present their arguments. As you know,
`petitioner bears the burden of persuasion here and will proceed first followed
`by patent owner.
`Petitioner may reserve some of their 45 minutes for rebuttal if it
`would like. Patent owner also may reserve some of their 45 minutes for sur-
`rebuttal if it would like.
`The -- there are some motions currently pending -- oh, I will keep
`time up here. I don’t believe there is a -- some of the other hearing rooms
`have the time behind me. You may want to bring a timer up for yourself. I
`will keep the time up here, the official time but it may be in your best
`interest to have it up there as well.
`MR. GAUM: Your Honor?
`JUDGE JESCHKE: Yes.
`MR. GAUM: I see the lights sitting there.
`JUDGE JESCHKE: Yes.
`MR. GAUM: Are those --
`JUDGE JESCHKE: So those should -- they should turn yellow. It
`will be green when your normal time is going on. It will turn orange or
`yellow for the last two minutes of the total time. My plan was to actually
`time, excuse me, 45 minutes on and, you know, whenever you want to stop
`you can stop and you’ll get the balance of that time in your rebuttal time.
`That was my plan for the timing. Did, I'm sorry, did I answer your question?
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`MR. GAUM: You did, Your Honor, thank you.
`JUDGE JESCHKE: Yeah. Okay. There are some motions currently
`pending. Petitioner and patent owner can use some of their allotted time to
`address those issues if they’d like.
`For clarity of the record and for the benefit of the remote judges,
`please make sure to identify the current slide number as often as possible for
`the demonstratives. It makes for a much clearer record and it makes it easier
`for us to follow as well.
`Also, as I mentioned, try to make use to speak into the microphone to
`allow the remote judges to hear better. Am I right that no one is going to be
`using a projector of any kind or? Yeah. Let's see. Sounds like everyone has
`given the demonstratives to our able court reporter.
`Because we would like to keep the arguments focused on the merits
`here, counsel is encouraged not to interrupt the other side to make
`objections. Instead, counsel may raise and discuss objections during their
`own time for response, rebuttal or sur-rebuttal.
`On the topic of objections, we have reviewed the jointly filed
`objectives -- excuse me, objections to the demonstratives. We have
`considered the objections but we will not rule on those objections at this
`time.
`For the objections, kind of the first two sets that essentially object to
`the discussion of exhibits at issue in the pending motions to exclude, to the
`extent that any of those exhibits are excluded in the final written decision we
`will not consider the discussion here today that addresses those exhibits.
`As to patent owner’s second objection, to essentially the right side of
`petitioner’s slide 13, we will allow petitioner to discuss that portion of the
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`slide but in writing the final decision we will assess whether any new
`arguments and evidence were provided on that slide.
`And with that, unless there are any questions, presenting counsel for
`petitioner may proceed to the podium and begin. Before the presentations,
`I’ll just ask for, you don’t have to, just a general idea of how long you’d like
`for your rebuttal, just to give a sense for patent owner about when they need
`to start getting ready?
`MR. GAUM: Well, yeah, I wanted to reserve 20 minutes for rebuttal.
`JUDGE JESCHKE: Okay. Okay. Well, I will again start the timer at
`45 minutes and I will note whatever time you have in balance and I'll let you
`know that after the fact. And with that, whenever you’re ready, Mr. Gaum,
`you can begin.
`MR. GAUM: Thank you, Your Honor. I'm going to jump right in to
`what I think is the central issue which is the limitation of the first
`independent claim which is kind of mirrored in Claim 15 as well. At least
`one light emitting diode for generating blue light energy.
`You know, what we have argued and what the Board agreed with in
`the initial, in the decision instituting the IPR was that Longobardi discloses
`essentially two embodiments.
`In Figure 1 -- well, I'm going to back up. First of all, in discussing
`generally what is in Longobardi, the reference says and this is on Exhibit
`1004 at column 4 lines 7 through 15.
`It starts: an interference filter with a suitably predetermined pass band
`is interposed between the light source and the fundus of the eye. For retinal
`fluoroscopy angiography, two filters are normally used: one transmits blue
`light between 465 and 490 nanometers representing the absorption peak of
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`the excitation of fluorescein.
`Fluorescein is referenced several times in Longobardi as sodium
`fluorescein. For that, Exhibit 1004 column 3 lines 41 through 43 and
`column 4 lines 52 through 53. So as it, when it says fluorescein, it’s talking
`about sodium fluorescein, just as recited in the claim. And it's using blue
`light to excite it and that’s fine.
`And then what Longobardi does is it describes, let me go to slide eight
`but I'm going to cite to the specification more so but Figure 1 is a diagram of
`one embodiment of the device for retinal angiography. That’s a quote right
`out of column 8 lines 4 through 5.
`And what the spec says is in that embodiment, the device comprises a
`continuous light source 1 of low power, and that it transmits light toward a
`filter and in particular, that filter is a series of pass bands centered on typical
`absorption and fluorescent wavelengths of the various tracers.
`And then in parentheses it says fluorescein comma indocyanine green
`close paren, used for observation of the various layers of the fundus of the
`eye. This is in Longobardi at column 8 lines 15 through 30.
`So again, it’s talking about Figure 1 being one embodiment. That
`happens to be a regular light bulb, incoherent light through the filter using
`blue light and that is to cause various tracers, fluorescein, sodium fluorescein
`to excite and give off a glow and so that is Figure 1.
`But then Longobardi gives a modified embodiment of Figure 1. In
`column 8 line 6 it describes Figure 1A as a diagram of a modified
`embodiment. And what the specification says and this is column 9 lines 39
`through 55, is in the embodiment of Figure 1A.
`And then in parenthesis it says in which the identical numbers indicate
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`parts identical to the corresponding to those of embodiment Figure 1 again
`leaving no doubt that it is just a modified version of what’s in Figure 1. It
`says the light source consists of a set of three light emitting diodes. And it
`shows them, 1A, 1B, 1C. And you’ve gotten rid of the light source, you’ve
`gotten rid of the filters.
`And then the specification actually says by using LEDs which emit at
`predetermined wavelengths, it doesn’t identify the wavelengths but it just
`says at predetermined wavelengths, it is thus possible to avoid the use of
`interference filters further simplifying the structure of the equipment.
`And again, it says this is because each LED emits at one of the
`wavelengths usable for the examination of the fundus of the eye. We’ve
`already talked about one of those wavelengths for examiner -- examination
`of the fundus of the eye is that 465 to 490 nanometers, blue light.
`JUDGE JESCHKE: Right. But down at the bottom of column 4,
`lines 36 to 48, there are a number of other different wavelengths that are
`discussed, right?
`MR. GAUM: There are.
`JUDGE JESCHKE: So I think the question that I'm trying to make
`sure I understand is the reference at column 9 lines 47 to 52, when it’s
`discussing the wavelengths usable for the examination of the fundus of the
`eye, what exactly is that referring to? Which of the discussions?
`And you’ve brought up the discussion at column 4 lines 7 to 15 which
`certainly does discuss in the context of filters at least blue light. But there is
`also the discussion further down.
`You seem to be saying that that reference at the bottom of column 9 is
`referring to column 4 lines 7 to 15. And I'm trying to understand why it’s
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`not potentially also or instead referring to column 4 lines 36 to 48.
`MR. GAUM: It could be referring to one of the other bands. But
`what it’s saying is essentially whatever you have in Figure 1, you can
`replicate using LEDs by just choosing an LED at that predetermined
`wavelength that you’re looking to use.
`JUDGE JESCHKE: And what’s the support for that? So I’m looking
`at column 9 lines 39 to 41 or so, what it says in parenthesis is referring to
`Figure 1A, in which identical numbers indicate parts identical or
`corresponding to those of the embodiment in Figure 1.
`You are, it sounds like, taking that to mean that the functionality of
`Figure 1 will be replicated in 1A. But I'm wondering what the support
`necessarily is for that functionality. In other words, the generation of blue
`light being necessarily present in 1A given, it sounds like, the statement in
`column 9 lines 39 to 41. Is that what -- is that statement what you’re
`pointing to for what you just said?
`MR. GAUM: Yeah.
`JUDGE JESCHKE: Okay.
`MR. GAUM: I think so. Let me -- I don’t have the exact lines in
`front of me but at the end of what I was reading and I got through part of it
`so this is because each LED emits that one of the wavelengths usable for the
`examination of the fundus of the eye. And the selection of the correct
`wavelength of the light source is made simply by positioning the correct
`LED in the optical path.
`And what we contend Longobardi in Figure 1A and the description
`show is you can substitute out any of the usable wavelengths for examining
`different parts of the eye, the fundus of the eye of which they go through a
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`number by simply getting rid of the incoherent light and the filters and
`substituting them with a LED at that same wavelength.
`No, it doesn’t identify -- it identifies three LEDs but never once says
`which one it’s applying to. But what it’s suggesting to and what we think it
`explicitly teaches to a person of ordinary skill in the art is it’s a simple
`substitution.
`If you’re trying to examine or get sodium fluorescein to excite, pick
`an LED that gives you blue light. If you’re at one of the other spectrums,
`pick the appropriate LED. And that's really what this suggests, what we
`contend it suggests to a person of ordinary skill in the art which is basically
`what our expert has testified to.
`Dr. Jiao testified that the person of ordinary skill in the art knew that
`sodium fluorescein dyes fluoresce when illuminated or eradiated with blue
`light. Exhibit 1002 at paragraph 81. He also testified that as a result of the
`portions that I have just cited, a person of ordinary skill in the art would
`understand Longobardi's teaching of using sodium fluorescein for imaging
`purposes.
`Again necessarily means that you are going to emit blue light.
`Paragraph 78. And he testified that as a result of that at least one of the light
`emitting diodes for generating blue light energy in response would be or, I'm
`sorry, at least one of the light emitting diodes I mean -- let me say this
`properly. (Laughter) He testified that Longobardi therefore discloses at
`least one light emitting diode for generating blue light energy and that's
`paragraph 79 of his declaration.
`I want to talk a little bit about some of the arguments that have come,
`the patent owner has lodged against this. I don’t think although they have
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`made some arguments, I don’t think they’re really contesting foregoing
`because the bulk of what they're arguing is now that in 1992 blue LEDs
`didn’t have sufficient output power to work in the invention.
`But restated and this is never actually stated this way by the patent
`owner, but restated that in 1992, blue LEDs did not have sufficient output
`power to excite sodium fluorescein. They don’t say that. But that’s really
`implicit in their argument or it has to be because that’s the whole point in
`using blue light in the invention.
`What they do, that entire line of argument is based on a quote from an
`article published in 2014, that’s Exhibit 2014, not to confuse the two. And
`that quote is for LEDs to be useful for real world applications, the light
`output power needs to be well in excess of one milliwatt. Page 9 of Exhibit
`2014.
`There’s a number of problems with this quote well in excess of one
`milliwatt. As we have argued in our motion to exclude, the statement itself
`is inadmissible hearsay.
`It’s clearly an out of state -- out of court statement and it’s used for
`the truth of the matter asserted. They've argued that it is somewhat -- and I
`think the patent owner has argued that it really shows the state of the art at
`the time of Longobardi. I don’t think it can. It’s a 2014, it’s an article from
`2014 not from 1992.
`JUDGE JESCHKE: But it could still reflect that persons
`understanding, right?
`MR. GAUM: It could reflect that persons understanding but the -- I
`still think at that point its hearsay because they’re still lining it up and using
`it as a fact.
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`JUDGE JESCHKE: Okay. I had one quick question, Mr. Gaum,
`about the 1992 date. In your reply at page 30, you said that the entire debate
`over whether commercially available blue LEDs had sufficient output power
`in 1992 is a red herring.
`It seems like you are focusing more on I think 1997 as the date of
`relevance here and I'm trying to make sure I understand why given that
`Longobardi, the filing date was 1992. The publication date was 1993.
`So whether or not a blue LED existed, that could be used in, you
`know, these ophthalmological devices, would seem relevant as of 1992 or
`1993, correct?
`MR. GAUM: Yes, Your Honor. And I remember the line but I don’t
`remember the context in my brief.
`JUDGE JESCHKE: Fair enough.
`MR. GAUM: But I would have to look it up to get the full context.
`But yeah, they are arguing that certainly -- they're saying if an LED in 1992
`could not -- was -- didn’t have sufficient optical output power to make
`sodium fluorescein excite and fluoresce, then it can't be inherent in
`Longobardi. I get that.
`JUDGE JESCHKE: Okay. So you agree then that the relevant date
`for whether or not these blue LEDs existed is 1992?
`MR. GAUM: Yes.
`JUDGE JESCHKE: Okay.
`MR. GAUM: I'll agree with that.
`JUDGE JESCHKE: Okay.
`MR. GAUM: Our contention is they did exist and I don’t think there
`is any -- I don’t think the patent owner has taken the position that blue
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`LEDs did not exist in 1992.
`Their position is that the optical output power was not sufficient.
`Actually I don’t even know that they say that. They basically just use that
`statement from the article in 2014 to create this line in the sand at one
`milliwatt and then if you didn’t have an optical output power of at least one
`milliwatt in 1992, they say well it couldn’t have existed, it couldn’t have
`been useful.
`JUDGE JESCHKE: Right.
`MR. GAUM: But they don’t contest that blue LEDs existed in 1992.
`JUDGE JESCHKE: In the general sense.
`MR. GAUM: Just period. They did exist, they were commercially
`available. Their argument is that their output power was below this one
`milliwatt line.
`JUDGE JESCHKE: Okay. And I have one question on that point as
`well. In the, in your reply and again I don’t, sorry for quoting it, I know you
`have not memorized it. On page 28 of the reply you said, it says kind of
`near the bottom: Dr. Lebby was asked about blue LEDs that were
`commercially available by CREE Inc. in 1992.
`And similarly on page 32, it says: Nevertheless, the Patent Owner’s
`arguments are wrong in that blue LEDs having sufficient output power to
`cause sodium fluorescein to fluoresce existed in 1992 at the time of
`Longobardi.
`I'm just wondering what the record support is for those statements? In
`other words that CREE, at least for the first statement had commercially
`available blue LEDs in 1992?
`MR. GAUM: I'm not sure off the top of my head --
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`JUDGE JESCHKE: Okay.
`MR. GAUM: -- what that was. It may have been one of their own
`articles because they do cite to a number of articles showing that blue LEDs
`existed and they have some tables and I can find the exhibit number. I think
`it's 2024.
`I could dig it out but the patent owner cites to some charts to show
`that at the time of Longobardi, blue LEDs were very low. And I don’t recall
`offhand if they were CREE or just some other, I would be happy to find that.
`JUDGE JESCHKE: Yeah.
`MR. GAUM: I know it’s in there.
`JUDGE JESCHKE: If you could get that in reply or whenever --
`MR. GAUM: Okay. Well, I'll --
`JUDGE JESCHKE: -- I would just like to have any answer that you
`may have.
`MR. GAUM: Sure.
`JUDGE JESCHKE: For those two statements that I pointed out on
`pages 28 and 32 of the reply.
`MR. GAUM: Okay. As far -- okay.
`JUDGE JESCHKE: Okay.
`JUDGE SCANLON: Excuse me, Counselor?
`MR. GAUM: Yes.
`JUDGE SCANLON: Before we move on, I had a question from
`something I believe you said a few moments ago. Did you say that
`Longobardi explicitly discloses blue LED?
`MR. GAUM: If I did, I didn’t mean to. It does not --
`JUDGE SCANLON: Okay.
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`MR. GAUM: -- actually say that, no.
`JUDGE SCANLON: Yes. And my follow up question is is it your
`position that it implicitly teaches or teaches inherently the blue LED?
`MR. GAUM: I guess I'm going to take the position it implicitly
`teaches it because it suggests a whole range of wavelengths usable for
`examination of fundus of the eye goes to -- and talks a great deal not only on
`some of the other ones but of sodium fluorescein specifically sets forth the
`wavelengths of blue light, et cetera.
`And then it teaches that if you want to examine those different parts of
`the eye, you just pick the right LED to substitute for what and provide
`whatever wavelength you need for that.
`So with Figure 1A they're saying okay, here is a filter, you shove light
`through it. You can get a number of different lights. If you use the
`appropriate filter, you’ll get blue light and they talk about blue light.
`And then like I -- as I -- I don’t mean to repeat myself too many times
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`--
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`JUDGE SCANLON: Sure, yeah.
`MR. GAUM: -- in Figure 1A, it basically says you can substitute that
`out. Just find the right LED that gives you the right wavelength and you can
`use it for any of the stuff you are looking to examine. And --
`JUDGE SCANLON: Okay.
`MR. GAUM: And so it is implicit and it would certainly lead a
`person of ordinary skill in the art that wanted to examine the portions of the
`eye, the fundus of the eye that would be visible with sodium fluorescein to
`use blue light or a blue LED in that case.
`JUDGE SCANLON: Okay, thank you.
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`JUDGE DANIELS: Counselor, let me follow up on that question as
`well. Was there anywhere, and I understand this might perhaps be a better
`question for, or a similar question for patent owners counsel, but I'm looking
`at your declarant’s testimony well, at least the initial declaration at
`paragraph 78. Was there any rebuttal for patent owner that fluorescein
`would necessarily implicate a blue light?
`MR. GAUM: I don’t -- you’re saying -- let me say it back to you to
`make sure I understand it. Anything from the patent owner or any evidence
`in the record that if you’re talking about exciting sodium fluorescein you
`would use something other than blue light or you wouldn’t use --
`JUDGE DANIELS: Correct.
`MR. GAUM: I am not aware of anything. I thought it's been pretty --
`it’s been uncontested that sodium fluorescein is blue light and that also
`seems to be, I don’t have the cites in front of me, but certainly the ’394
`patent seems to make that pretty clear as well.
`JUDGE DANIELS: So there’s no -- so there’s -- so as far as we're
`concerned, this is the best evidence we have on top of the documents and the
`what you have shown us in Longobardi, you know, that is confirmed that
`there is no other -- there is nothing other than blue light that would make
`sodium fluorescein fluoresce other that blue light?
`MR. GAUM: That’s my understanding, Your Honor. It is a certain
`and a specific wavelength and it’s been defined as the wavelength for blue
`light. What -- now what it does so, I will say this because this gets a little
`confusing.
`When you excite sodium fluorescein with blue light, it fluoresces a
`different color and I don’t have a cite for that. I know I have read that. So
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`you excite it with blue light and what comes back is some form of green.
`And so if we need to be careful if we are looking at references if there
`is reference to another color, it's probably -- it could be the -- what the
`sodium fluorescein is fluorescing, giving off, not what’s required to excite it
`which is the blue light.
`JUDGE DANIELS: All right, thank you.
`MR. GAUM: I don’t know if that’s helpful but.
`JUDGE DANIELS: No, thank you. That is, yes.
`MR. GAUM: How am I on time? Okay. got 81 --
`JUDGE JESCHKE: You're about halfway through your time. So you
`have two minutes or so until your --
`MR. GAUM: Well, let me -- I'm going to skip ahead really quickly
`because I want to cover claims 9 and 10 briefly. 9 and 10 of course are the
`claims that the Board did not find a reasonable likelihood of success on in
`the initial decision.
`And in particular on that decision, paper 9 page 34 the Board says
`even assuming that petitioner is correct that one of ordinary skill in the art
`would have known that blue LEDs are generally powered by gallium nitride
`or silicon carbide, this statement raised at least two issues.
`First, that the blue LEDs are quote generally powered by these
`compounds, indicates that blue LEDs are not necessarily powered by these
`compounds as would have been required under a proper inherency theory.
`In part two second it says the presence of and or between the two
`claimed compounds in petitioner’s statement also indicates that blue LEDs
`are not necessarily powered by either one of the claimed compounds.
`In the statement of our expert, Dr. Jiao, as it is known by those
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`POSAs that blue LEDs are generally powered by gallium nitride and or
`silicon carbide.
`I want to first address the Board’s comment about even assuming the
`petitioner is correct. In citing to his declaration, Dr. Jiao cites to himself in
`part of the support for that statement, at least a half dozen U.S. patents to
`support both that the prior art showed gallium nitride that’s for claim 9 and
`silicon carbide in claim 10.
`If you look at his declaration, he provides support for that. And then
`he goes further. He says according -- and this is paragraph 116 of Exhibit
`1002, Dr. Jiao’s initial declaration.
`He says accordingly, a POSA would immediately think of an LED
`powered by gallium nitride upon reading Longobardi's disclosure of
`fluorescein enhanced retinal and choroidal angiographic lumination devices
`using blue LEDs since that is one of only two practically viable options for a
`blue LED available to those POSAs.
`That’s page 38 again paragraph 16 of his declaration. So what --
`although he said at the start of that paragraph he used generally and then said
`and or. He is not saying it can be something else. He's specifically saying
`they have two, only two, his words, only two viable options for, I'm sorry,
`only two practically viable options for a blue LED.
`So, you know, I'm not sure about the word generally but he does -- he
`is very specific about the two and that there is only two options and the and
`or doesn’t really reflect as I think the Board found that it could be something
`else. He is clearly talking about one or the other.
`JUDGE JESCHKE: Right. And kind of in line with that, at the end
`of paragraph 22 which is on the next page, that has the same statement that
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`you just read except with gallium nitride taken out and silicon carbide put in
`which would, those are what to that you're referring to, right?
`MR. GAUM: Yeah. I saw that. It looks like it might have been a
`typo and somebody was rushing the paragraph but --
`JUDGE JESCHKE: But that’s not my point that whether a typo was
`there or not. My point is that to say something somebody would
`immediately think of an LED powered by fill in the blank upon reading that,
`and having two statements in paragraphs in 116 and 122 that say essentially
`list the two different options.
`Why doesn’t that undermine the necessarily aspect that maybe
`necessary for inherency? I'm still trying to understand that point.
`MR. GAUM: I think his point is there is only, there were only two
`ways to do it at that time. And a person of ordinary skill in the art would
`have known it’s one or the other. A gallium arsenide or the silicon carbide.
`JUDGE JESCHKE: Okay.
`MR. GAUM: I think I'm out of time.
`JUDGE JESCHKE: You would have about 18 minutes and 45
`seconds left.
`MR. GAUM: I will save that for rebuttal. Thank you, Your Honor.
`JUDGE JESCHKE: Certainly. I will write that down. 18:45.
`MS. MCLANE: Good afternoon. We are going to take about 35
`minutes and reserve the other 10 please.
`JUDGE JESCHKE: Okay. Start whenever you are ready.
`MS. MCLANE: All right. So I would like to start speaking about the
`primary reference here that petitioner has put forward in their petition and
`that is what we have been talking about, which is Longobardi. And I do
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`want to talk to specifically some of the things that Longobardi is dealing
`with here.
`JUDGE JESCHKE: And we are on slide 6.
`MS. MCLANE: And we are on slide 6, yes. Thank you. So on slide
`6, you can see the first thing is that Longobardi requires an image intensifier
`with the known light source.
`And that image intensifier is crucial to Longobardi. That is what the
`Longobardi patent is focused on is reducing the light source in order that the
`brightness isn’t as intense and the heat and other things and it speaks over
`and over again to that point.
`And an image intensifier is a required element in Longobardi. It also
`teaches of two different methods for using the light source for the
`fluoroscopic angiography. And we talk about these two different methods,
`these are the figures that petitioner was referring to previously.
`We have the non LED light source which uses a filter and an image
`intensifier. And then we have the LED light source that uses an image
`intensifier. And I'm going to skip ahead in my slides to the same figures that
`petitioner was talking about. Where we disagree --
`JUDGE JESCHKE: So slide 9.
`MS. MCLANE: This is slide 9. Yes, sorry. This is slide 9. Where
`we disagree is what these figures mean. You know, petitioner was saying
`that what’s in Figure 1 could be replicated by using a pre-determined
`wavelength. You’d basically just swap out the light producers.
`Figure 1A is a, is, you know, basically just F
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