Trials@uspto.gov
`571-272-7822
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`Paper 46
`Entered: May 15, 2023
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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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`SENSOR ELECTRONIC TECHNOLOGY, INC.,
`Petitioner,
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`v.
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`LITE-ON TECHNOLOGY CORPORATION AND GENESIS
`PHOTONICS, INC.,
`Patent Owner.
`____________
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`IPR2022-00395
`Patent 10,916,685 B2
`____________
`
`Record of Oral Hearing
`Held: March 20, 2023
`____________
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`
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`Before JEAN R. HOMERE, LYNNE E. PETTIGREW, and ELIZABETH
`M. ROESEL, Administrative Patent Judges.
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`571-272-7822
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`Paper 46
`Entered: May 15, 2023
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SENSOR ELECTRONIC TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`LITE-ON TECHNOLOGY CORPORATION AND GENESIS
`PHOTONICS, INC.,
`Patent Owner.
`____________
`
`IPR2022-00395
`Patent 10,916,685 B2
`____________
`
`Record of Oral Hearing
`Held: March 20, 2023
`____________
`
`
`
`Before JEAN R. HOMERE, LYNNE E. PETTIGREW, and ELIZABETH
`M. ROESEL, Administrative Patent Judges.
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`IPR2022-00395
`Patent 10,916,685 B2
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`APPEARANCES:
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`ON BEHALF OF PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`ETAI LEHAV, ESQUIRE
`JONATHAN AUERBACH, ESQUIRE
`Radulescu, L.L.P.
`5 Penn Plaza, 19th Floor
`New York, NY 10001
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`
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`CHRISTOPHER KAO, ESQUIRE
`PATRICK DOODY, ESQUIRE
`Pillsbury, Winthrop, Shaw & Pittman, L.L.P.
`1650 Tysons Boulevard, 14th Floor
`McLean VA 22102-4856
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`The above-entitled matter came on for hearing 1:00 p.m., EDT on
`Monday, March 20, 2023, before Chris Hofer, Notary Public.
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`IPR2022-00395
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`P R O C E E D I N G S
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`JUDGE HOMERE: Welcome to the Board. This is an oral argument
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`in IPR 2022-00395. The trial patent at issue is Patent No. 10,916,685.
`Petitioner is Sensor Electronics Technology. Patent Owner is Lite-On
`Technology Corporation.
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`I am Judge Homere and with me are Judge Roesel here and Judge
`Pettigrew is appearing remotely. Okay. At this time, we'd like to introduce
`-- we'd like counsel to introduce yourselves, your partners and your guests
`starting with Petitioner. Please step up to the microphone.
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`MR. LEHAV: Etai Lehav of the Radulescu firm on behalf of
`Petitioner. With me as my colleague, Jonathan Auerbach. Thank you, Your
`Honors.
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`MR. KAO: Chris Kao with Pillsbury, Winthrop, Shaw & Pittman on
`behalf of the Patent Owner, Lite-On Technology Corporation. With me is
`my colleague, Pat Doody.
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`JUDGE HOMERE: Okay. Thank you. Before we begin, we remind
`the parties that the guidance for this hearing was provided in an oral hearing
`order of February 27, 2023, Paper No. 37. As you know from our February
`27th oral hearing order, each side has been given 60 minutes' total time for
`oral argument.
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`Petitioner will proceed first to present its case as to the challenged
`patent and the proposed amended claims. Petitioner may reserve time for
`rebuttal for its presentation. Thereafter, Patent Owner will argue supposition
`to Petitioner's case. Patent Owner may also reserve time for surrebuttal and
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`IPR2022-00395
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`for supposition to Petitioner's presentation.
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`Absent special circumstances, Petitioner may reserve no more than
`half of its time for rebuttal and Patent Owner may reserve no more than half
`of it's time for surrebuttal.
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`We have a few other reminders. A full transcript of the entire hearing
`will become part of the record. Also, please remember to speak into the
`microphone at the podium so that judges, including the remote judge, can
`hear you.
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`Additionally, please identify any demonstrative or any document
`projected on the screen as what is projected on the screen will not be
`viewable by anyone reading the transcript or the judge appearing remotely.
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`The hearing is open to the public. Any time you ready, counsel for
`Petitioner, you may proceed.
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`MR. LEHAV: Thank you, Your Honors. I'd like to reserve 20
`minutes of rebuttal time. I have printed copies of the slide presentation.
`Would you like those? Are they helpful to you?
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`JUDGE PETTIGREW: Not for me. Thank you.
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`JUDGE HOMERE: No, no. We have it.
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`MR. LEHAV: You're good?
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`JUDGE HOMERE: Yes. Thank you.
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`MR. LEHAV: Okay. May I proceed?
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`JUDGE HOMERE: Please.
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`MR. LEHAV: Good afternoon again. My name is Etai Lehav here on
`behalf of Petitioner. I will start out addressing the petition and then move on
`to the contingent motion to amend. Before seeing Patent Owner's slides, I
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`thought we would -- might have some disagreement about what we need to
`focus on, but it looks like from both slide presentations the issues have been
`crystallized to a few discrete issues on the petition. So I think we can go
`through and just get right to the claim construction question of "center of a
`curvature."
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`And before I address that claim construction, I just want to set out
`where we are in the following sense. From our perspective, if Petitioner
`wins the claim construction battle, I think there's no dispute that the
`limitations are met. They don't have any argument from Patent Owner as to
`whether those limitations are met.
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`If Patent Owner's claim construction is adopted, we still believe we
`meet the limitation under Petitioner's claim construction. We assert, as we'll
`go into, that Petitioner doesn't -- excuse me, Patent Owner doesn't even
`apply their own claim construction. They apply some modified version of
`their claim construction. We think we -- our expert actually also
`demonstrated that we meet the limitations even under their modified version.
`So from our perspective, we went either way and they need to convince the
`Board that to -- on three decisions in order for them to avoid application of
`that limitation.
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`JUDGE ROESEL: How about the Board's claim construction?
`Where does that fit in?
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`MR. LEHAV: Oh, I've been assuming -- I think the claim
`construction from Petitioner and the Board's were the same functionally. So
`--
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`JUDGE ROESEL: You say "Petitioner's." Petitioner's claim
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`construction?
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`MR. LEHAV: I apologize. The Board -- can you ask your question
`again? I may have gotten confused.
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`JUDGE ROESEL: Okay. Where does the Board's claim construction
`fit in this? Does Petitioner contend that it has shown unpatentability under
`the Board's --
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`MR. LEHAV: Yes.
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`JUDGE ROESEL: -- construction?
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`MR. LEHAV: Yes, Your Honor. We understood the Board to have
`adopted Patent Owner's construction. That's -- so I've been using those --
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`JUDGE HOMERE: That is correct?
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`MR. LEHAV: Yeah, I've been using those synonymously. I
`apologize for that confusion. So here is -- I've put on Slide 10 the claim
`construction debate. And on Slide 11, the question is whether the term
`should be given its plain and ordinary meaning, obviously, in view of the
`intrinsic evidence and most importantly, the prosecution history, which has
`received some attention or whether we should focus on the mathematical
`dictionary definition out of the context of the claim. That is how we see the
`claim construction debate.
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`And so here we start with the claims. The claim recites "a center of
`curvature of the top surface of the surrounding portion is outside of the
`accommodating space." Since it's "a," we presumptively apply a one or
`more understanding to that which in already -- it is contrary to Patent
`Owner's construction. Similarly, this specification talks about "a center of
`curvature of the top surface."
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`Now I'm going to Slide 14. This is powerful evidence that the way
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`Patent Owner has argued the center of curvature limitation from prosecution
`and in various points in this proceeding, has relied on three different centers
`of curvature. This is -- this exhibit, 1016, was prepared by our expert by
`putting the Figure 14A of the patent to scale from the file history and from
`the preliminary response and the Patent Owner response and showing that
`there are at least three centers of curvature that Patent Owner has asserted
`between prosecution and in this proceeding, which demonstrates that more
`than one center of curvature could be evaluated.
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`And Slide 15 and then Slide 16, showing it colored in. Indeed, the
`original examiner used an ellipse in order to demonstrate a radius of
`curvature in the prior art in a rejection. This is really important because
`Patent Owner did not argue that that was incorrect. Didn't really say
`anything about it. Eventually amended a different limitation of the claim.
`But let this analysis of using an ellipse for measuring the center of curvature
`stand in prosecution.
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`JUDGE ROESEL: So --
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`JUDGE HOMERE: Counselor --
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`JUDGE ROESEL: Go ahead.
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`JUDGE HOMERE: -- in the definition that the Board provided in the
`institution decision, we construed "center of curvature" as the "center of the
`circle," which best fits a curve at a particular point of the curve. So if the
`construction is about the center of a circle, how can you present an ellipse
`here, you know, as --
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`MR. LEHAV: So --
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`JUDGE HOMERE: Yeah, as substitute. Yes?
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`MR. LEHAV: Right. What I'm suggesting is that the evidence at
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`Exhibit 1002 at 290 is contradictory to the Board's claim construction, right?
`That that the Board's claim construction is inconsistent with the file history,
`okay. What I'm arguing to Your Honors is that the Board's preliminary
`construction was incorrect in view of the file history which did not limit that
`analysis to a circle.
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`And I think even applying the Board's construction, we can
`demonstrate the limitation and we'll get there, but I think that the Board's
`construction is incorrect in view of the file history.
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`JUDGE ROESEL: So --
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`JUDGE HOMERE: Okay. Well, what is it in the file history that
`(indiscernible) the claim construction?
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`MR. LEHAV: Well, the -- because the claim construction requires a
`circle and a circle only and the examiner, in assessing this limitation, used an
`ellipse, and the Patent Owner was silent about that, right. It's a bit of an
`inverse -- it's not -- we can't call it a disclaimer, right, because it didn't --
`it's not narrowing, right? But it's just an interpretation by the patent office of
`the breadth of that claim limitation and that is broader than the Board's
`preliminary construction.
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`JUDGE ROESEL: So what does it matter if ovals or ellipses are part
`of the claim construction if -- I mean, does it make any difference as far as
`our analysis of the prior art is concerned?
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`MR. LEHAV: In in in some sense, no, because as I said, we can
`demonstrate it under a, you know, a circle as well. But since Patent Owner
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`is pushing the idea that there is only one and only one circle and all of the
`debate about that limitation is about the circle, right? If an ellipse is
`included and we have demonstrated an ellipse that is unrebutted, then then
`we win on limitation.
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`Now, if we are talking about circles, I think we still win, as I said
`originally, but then we have to get into, you know, the next level of debates.
`Is that -- does that answer your question, Your Honor?
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`JUDGE ROESEL: Yes, it does.
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`MR. LEHAV: Okay. So and on its final paper, Lite-On finally
`addressed this question about whether their silence in the file history is
`meaningful. We think that argument is waived because it wasn't -- we made
`this argument in our petition and they didn't argue it on reply. Finally, on
`surreply, they make this argument, but notably they're saying they traversed
`the rejection, although as you can see on Slide 17, the excerpt that we give,
`they don't cite any part of the file history where they argued with the
`examiner and disagreed with that interpretation because they didn't. They
`just left that that analysis then.
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`So instead, what we have is an extrinsic evidence definition used by
`Patent Owner, and we're on Slide 18 and I think it's important. So Patent
`Owner is suggesting that we take, you know, essentially most of what's
`highlighted in pink on this Slide 18 which says "the center of curvature is the
`center of that best-fitting circle known as the circle of curvature."
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`And that is a mathematics definition, but I think what's important and
`this is teed up at the next part of this dispute. And even if you accept this
`construction, well, what is the center of that best-fitting circle? Well, we
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`need to look at the sentence that came before. There's a definition of the
`radius of curvature, which is "the radius of the circle, which best fits the
`curve at that point, matching the position, the gradient, and the second
`differential of the curve at that point."
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`So as we might expect, a mathematics definition is fairly precise and
`it's defining a center of curvature with respect to a point, which is something
`that Patent Owner imported into their claim construction and the Board
`adopted. Since the definition, and this is, you know, debated throughout the
`papers, since the definition of "center of curvature," that Patent Owner has
`asked the Board to adopt and the Board preliminarily adopted talks about the
`center of curvature for a point, and the claim limitation is talking about a
`surface.
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`It means by definition, by just applying the mathematical definition
`that there are going to be various points along the curve for which you can
`have a center of curvature. And then --
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`JUDGE ROESEL: So it's Petitioner's position that it can be any point
`along the surface of the -- that material that the can have the center of
`curvature as defined?
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`MR. LEHAV: So this is how we read Patent Owner's construction
`and if you take --
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`JUDGE ROESEL: No, I want to know Petitioner's position. What is
`Petitioner's position as to which point we should look at along that surface?
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`MR. LEHAV: You can look at several. You can look at several
`points and draw several different circles or ellipses, again according to our
`position, and define a center of curvature based on that surface. In real
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`world devices, there's some debate in the papers about, you know, is there a
`curve? Is there not a curve? Nothing is going to be, you know, perfect in
`that application. So you have to, you know, your -- there are various points
`where you might draw that circle. I don't --
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`JUDGE ROESEL: So you would say several, but is any point, any
`point along that surface is acceptable?
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`MR. LEHAV: I'm not sure where the limit of that would be. I'm sure
`we can define a point that everyone would -- might say is problematic to
`draw from any particular point. But again, this is the application of the
`construction that they are putting forth.
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`JUDGE ROESEL: Yes, but it's Petitioner's petition so we need to
`know --
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`MR. LEHAV: Correct.
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`JUDGE ROESEL: -- Petitioner's position as to how we analyze the
`prior art and what Petitioner's --
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`MR. LEHAV: Right. So --
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`JUDGE ROESEL: See, "plain and ordinary meaning," frankly,
`doesn't help us very much. So it would be helpful if Petitioner would be
`more precise --
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`MR. LEHAV: Yeah. Well --
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`JUDGE ROESEL: -- as to how you construe the claim.
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`MR. LEHAV: Right. So what we did is we applied it at the kind of
`center of that curve, and we drew a circle. We drew an ellipse right at that
`center. We think that is sufficient. You don't have to get into this, you
`know, mathematical definition, which really, I mean, if we understand
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`Exhibit 2002, it's talking about, you know, taking the first derivative and
`second derivative and, you know, this very precise mathematical thing. We
`think if you just draw it at the center of that and we showed two examples of
`that, it is met. That's our position.
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`I think -- so, on Slide 21 I asked Lite-On's expert whether "a" in
`Claim 1 means one or more. He, of course, agreed with that, which would
`again suggest that that multiple centers could be used. I'm going to skip 22,
`and we've not heard at all an explanation from Patent Owner or it's expert
`throughout this entire proceeding, we put it right front and center in our
`petition, about how can you have multiple under your theory, right. How
`can you have multiple centers of curvature? They never answered that
`question, and when I asked Dr. Lebby about that, his answer was, "I don't
`have a theory on how that could be the case."
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`So I think they're being inconsistent when they're arguing to the Patent
`Owner's and they're drawing different centers of curvature. They're clearly
`using more than one center.
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`JUDGE HOMERE: Now, but your -- counselor, you said that the
`center of curvature can be any point, but another requirement of the claim is
`that it says that "a center of curvature of the top surface" --
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`MR. LEHAV: Uh-huh.
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`JUDGE HOMERE: -- "of the surrounding portion is arranged outside
`of the accommodating space." So it's not just any -- that you draw any
`circle, but at the end of day, the center of coverage has to be outside of the
`accommodating space." And on top of that, it has to be the center of
`curvature of the top surface.
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`MR. LEHAV: Oh, I -- of course. I just -- I didn't mean to suggest
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`that. It, of course, has to be a center of curvature of the top surface, right.
`The only question is, you know, can you have more than one? Can it be an
`ellipse or not, right, but of course, it has to be a center of curvature that
`relates to the top surface. There's no debate among the parties about that,
`right. You can't draw a circle, you know, somewhere off in, you know, in
`the ether. It has to be drawn such that it's attempting to adopt the curvature
`of that top surface. I mean, that, I don't think, is a debate between the parties
`and I didn't mean to suggest otherwise.
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`And I just want to point out again on this, "at a particular point" part,
`we were -- and this is on Slide 25. In Patent Owner's surreply, we were
`criticized for focusing on the "at a particular point," but as we show in Slide
`25, that is specifically the claim construction that Patent Owner adopted and
`asked this panel to adopt.
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`Okay. So now I want to go to the application, so now I'm turning to
`Slide 27 and here we have Slide 28.
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`JUDGE HOMERE: No. Well, counsel --
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`MR. LEHAV: Yeah?
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`JUDGE HOMERE: -- before you go to the application --
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`MR. LEHAV: Sure.
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`JUDGE HOMERE: -- regarding the Board's construction, one of the
`requirements is that the center that you're picking is at least the one that fits,
`best fits, the curve. And one of your arguments presented by Patent Owner
`is that the surface has to be large enough that, you know, it covers a good
`portion of the curvature.
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`So in that support, it also supported, I believe, the Patent Owner in the
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`specification. So how would your definition meet that if you pick any point
`because the requirement is that, you know, that circle, that circle that best
`fits the curvature has to occupy a maximum portion of the curvature?
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`MR. LEHAV: Right. So --
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`JUDGE HOMERE: How will it fit?
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`MR. LEHAV: Again, I think the way we put it in our petition, we
`showed -- we took the middle of that top surface and we showed a circle and
`we showed an ellipse that, in our view, best fit, although we weren't using
`that language. But you can see, you know, what we drew in our petition and
`what our expert did.
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`Now you're asking the question of the best fit that -- I've put back on
`the screen Slide 25 which has Patent Owner's proposed construction, and
`that construction is not best fit to a curve, right? This is the construction that
`they put forward and then the panel adopted. We're just reacting, right, to
`the implications of that right. The center of the circle, which best fits a
`curve at a particular point on the curve, right.
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`There is a precise mathematical definition of what that means and
`that's what they have -- that's what they have urged the panel to adopt and
`what the panel adopted provisionally. And the implication of that is that
`there can be many, many different points on the curve that can best fit at that
`point. Because again, if you go back to the math, without, you know, getting
`deep into the calculus, this is Slide 18 again, what it means to be "best fit"
`for a point means that you match the position, the gradient and the second
`differential of the curve at that point. That's the position, and first derivative
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`and second derivative. That's what this mathematical definition on Slide 18
`means.
`
`And so that's -- when you go back to their to their proposed
`construction on Slide 25, they're importing that mathematical definition
`here, all right. Their expert didn't start -- take derivatives, right, didn't try to
`model the curve and take a point and say, what is the first derivative, what's
`the second derivative, and try to fit it. That that's literally what it means to
`best fit a curve at a point. That's what they have proposed.
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`JUDGE ROESEL: Did Petitioner's expert do that?
`
`MR. LEHAV: No, we did not do that. Again, we're not trying to use
`that mathematical definition. We think it doesn't fit for all the reasons we've
`said, both the file history and the -- we're -- the claim limitation, right, is
`talking about the curve. So we drew it much like -- we followed the
`guidance of the file history, right. The file history told us, right, when we
`were sitting, you know, looking at the petition, you know, drafting the
`petition and looking, you know, "What does this mean?" "Oh, well, the
`patent examiner told us." Okay.
`
`You draw this ellipse or circle at that center of that of that curve,
`which is what we did, right, and tried by -- I mean, try by eye to fit it, if you
`can, which is what we did. We think that this mathematical definition
`imposes too much, frankly. Any other questions --
`
`JUDGE PETTIGREW: Counsel?
`
`MR. LEHAV: Yes.
`
`JUDGE PETTIGREW: Yes, I do. You said the prosecution history
`tells us. Did the examiner specifically say you draw a curve at the -- I mean,
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`you -- it's based on the center of a curve, which I think is what you're
`proposing?
`
`MR. LEHAV: What the examiner did was draw one at the center of
`that curve. So I don't think the -- my recollection is, and we can pull up the
`exhibit, but the -- my recollection is that there was a reference to drawing an
`oval.
`JUDGE PETTIGREW: I'm just following up on what I thought you
`
`said, which is the prosecution history tells us.
`
`MR. LEHAV: Yeah. So the file history, this is page 289 of Exhibit
`1002. And the examiner says, "See the modified Figure of Yoon and Suzuki
`below," which is the prior art reference they were assessing, "as a matter of
`how to be shaped to define a center of curvature, for example, an oval shape
`as shown below," and it's below on the on the next page in the file history.
`That's 290 of Exhibit 1002, and you see that the examiner draws these ovals
`and it is centered on that surface. So that's -- it wasn't said ad verbum, but
`the figure drawn by the examiner guided us.
`
`JUDGE PETTIGREW: Okay. Thank you.
`
`MR. LEHAV: Okay. So now I'm going to the application.
`
`JUDGE HOMERE: Well, before you get --
`
`MR. LEHAV: No?
`
`JUDGE HOMERE: Before you get there, one last question. What is
`your response to Patent Owner's argument that there's a requirement that you
`get -- that "best-fitting curve" requires that you have the most overlap or the
`maximum coincidence between the circle and the curvature?
`
`MR. LEHAV: Sorry?
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`JUDGE HOMERE: Patent Owner's argument, what is your response
`
`to that, that the definition required -- "best-fitting curve" requires that you
`have the most overlap or the maximum coincidence between the top surface
`in the circle itself?
`
`MR. LEHAV: So two responses. One is on some level, that's what
`we attempted to do. Those are extra limitations or a construction of a
`construction that they're doing of their own construction that they're adding
`into that and it's -- again, you can do it by eye. Their --
`
`JUDGE HOMERE: In your presentation, what slide meets that?
`What slide where you have a circle that has the, you know, the best-fitting
`circle that has a maximum overlap or the maximum coincidence?
`
`MR. LEHAV: So, for example, here this is Slide 31. This is for
`Nichia-825. This is our Exhibit 1007, Figure 4 and we did one with a circle,
`one with an ellipse, and then we have it, if you look at Slide 34, we did it for
`Nichia-824 as well.
`
`So now -- I just want to make sure I don't interrupt thought processes.
`So now we go to the actual application and I'll just go back actually to 31.
`So this is after the Board had agreed with Patent Owner as to its
`construction, still found at institution that this was met with. We think it is
`still met because I think our construction still allows us to apply it under
`either construction, right. There is a point, there is -- that it is best fit to that
`curve.
`
`And we asked the Dr. Josefowicz to actually opine on that after we --
`you know, we didn't have a construction ahead of time, but he did it and his
`testimony that is at Exhibit 1025, paragraph 17 to 18. So I think 824 is
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`much the same.
`
`So this is now on Slide 36. I think that -- as we've said, we think that
`Patent Owner has added this "most overlap or maximum coincidence."
`That's an additional limitation that they didn't argue for explicitly and they
`saw that the Board agreed that the limitation was met even under their
`construction, so this was an attempt by them to try to add a little bit more to
`the construction.
`
`They also have this argument about the top ends of the attaching
`portion. They have to be at the same height and that is somehow implicated
`by the claim construction. We think those are other claim limitations that
`are separately -- well, required by some of their amendments. But, and as I
`said before, they really don't address the "at a point." When they go to apply
`their claim construction, they do not address this "at a point" issue at all.
`
`So, Dr. Lebby, this is a Slide 38 talking about the most overlap or
`maximum coincidence. A lot of this is repetitive, what we have talked
`about. So this is Slide 41. I asked him about that and he says, "I don't
`actually call out of point." There's a proposed construction with reference to
`a point, and this is their expert not even using the construction.
`
`JUDGE HOMERE: And Petitioner's expert, on the other hand,
`looked at only one point, right?
`
`MR. LEHAV: Correct. Correct. Drew the ellipse and the circle at
`that same point from the center, correct. And again on Slide 42, showing
`that Patent Owner's expert did not apply that construction as well.
`
`So on Slide 43, the point is -- to the extent you're going to go with
`some sort of, you know, best fit according to this mathematical definition,
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`you need to do some math in order to figure that out. I'm just pointing out
`that under their own theory, none of those calculations were made.
`
`And then we -- there's this side conversation about to the extent that
`the Board is going to agree with us and bringing ellipse into the discussion.
`There was also some discussion about the difference between the center
`point of an ellipse and focal points of an ellipse and an ellipse has both focal
`points and the center point. We were criticized for not focusing on the focal
`points. I'm not really sure why. We used the center point, which is what
`you would do center of a curvature.
`
`And there's a resurrected argument about that there's not even a
`curvature in Nichia-825 with respect to applying this claim limitation. It
`was argued by Patent Owner in the preliminary response, not put in the
`response and that, under the Board's law is a waiver. They bring it back out
`and in surreply and we think that's inappropriate.
`
`Okay. So now we want to get to Claim 3 which is Grounds 3 and 6.
`Anymore questions?
`
`
`JUDGE ROESEL: Okay. Could I ask a couple more questions --
`
`MR. LEHAV: Sure.
`
`JUDGE ROESEL: -- on the circles issue, and that is if -- your
`Petitioner's Slide 43, I think you've reproduced Patent Owner's exhibits with
`their expert's circles. So Petitioner agrees that it's possible to draw multiple
`circles that meet the definition of this center of curvature; is that right?
`
`MR. LEHAV: Yes.
`
`JUDGE ROESEL: It is one of those multiple circles, the one that
`Patent Owner's expert has drawn?
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`MR. LEHAV: Is one of the multiple circles that -- well, I guess the
`
`question is under whose construction? So --
`
`JUDGE ROESEL: Under any proper construction from Petitioner's
`point of view. In other words, is the circle that Patent Owner's expert has
`drawn, is that correct under a proper construction of the claim?
`
`MR. LEHAV: No. So our expert explained why he didn't think it
`was best fit to that surface, but --
`
`JUDGE ROESEL: And why is that?
`
`MR. LEHAV: So the -- there was some debate about how you
`account for the corners. It's hard to see right now, but there was discussions
`about how you account for the corners of the curves in the two prior art
`references.
`
`JUDGE ROESEL: Well, let's simplify this.
`
`MR. LEHAV: Yeah.
`
`JUDGE ROESEL: First of all, is the circle that's drawn by Patent
`Owner's expert, is it wrong? And if it's wrong, why is it wrong?
`
`MR. LEHAV: It's wrong because it doesn't best fit the curve.
`
`JUDGE HOMERE: Why not?
`
`MR. LEHAV: That's what I was talking about, the -- what's going on
`at the edges. There is no way that it -- let me say one other point. In a world
`in which there -- you know, we're living in the world where there's more
`than one potential center of curvature, right. The claim limitation only
`requires one of them to be met, right. I think that's an important feature of a
`comprising claim.
`
`So -- oh, yes, I remember this. I got a note to remind me. It wasn't
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`drawn to intersect the top surface. That's why it w
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