i before we begin the hearings we have a motion for admission morning made please the court ten gallon of paul weiss for the appellate needs you we respectfully submit that the judgment of invalidity on the nine to five patent and the nine six zero patent is not supported by substantial evidence it is based on expert testimony that is unsupported by and contradicted by the prior art in the record for example with respect to the nine to five pat the testimony was that the prior art arrests disclosed  it was raised in various locations which we cited in our brief throughout the course of the of the of the of the testimony if this was it we have it citations if for example appendix one nine seven six five and we have different citations in our brief where it was raised in the record before your honor but it was actually in the record a j m a well for starters here's the issue though your honor that the th testimony the testimony on the barrettes patton was what color is the phosphorus the answer yellow what kind of phosphorus answer yellow that's that one seven five eight three one seven five nine seven that testimony is objective lee wrong barrettes says repeatedly it's making it will white white with the use of green blue and red phosphorous that's it one nine seven six seven for example one nine seven six or perhaps a single fossil for that would be combined with an element mean rights of two answers to that your honor the answer number one is right when you read that passage in context it's discussing the different either of phosphor or it sometimes refers to it as a secondly it doesn't disclose a yellow phosphor alone it discusses red blue and green phosphorus repeatedly throughout the specification what if we were to conclude that at least you know under this very highly deferential substantial evidence standard we're left to conclude that bret's did suggest something about using a single foster not multiple fronts you're not saying that gets you know the jury all the way home think it's important it doesn't actually say that anywhere in the expert testimony was that it said yellow phosphorus and i think that's an important thing because it's a misstatement of the prior art a clear misstatement of the prior i don't think even if it s a yellow frost for all right let's let's assume for the moment it didn't say yellow fos for and perhaps that's a mistake and well then isn't that something for you to deal with on cross examination or closing already or something else there was cross examination on that question there was direct testimony that it didn't do it now unfortunately nature lost anyway but my suggestion to you your honor is that the question here is substantial evidence that is in the perfect world cross examination solves a problem granted but one expert gets on the stand and says the prior art says x and the prior does not say x it says something different it says three phosphor is an infringement case based on the same and while we would all wish the cross examination would solve the problem sometimes it doesn't and i don't think the fact that it got i don't i don't i mean i don't want to you know debate this but that's not the only tomorrow he comes through with the big breakthrough of a blue l e d which everybody had been hunting for for decades well you know now it's the pieces start to lead from that perspective fall together with just goes to the second point that i was going to address your honor is whether there's substantial evidence of motivation to come by and i respectfully submit there's not notwithstanding your point and here's why number one there's really three problems with the evidence  motivation to combine number one it started from the false position that bret's told a person of ordinary skill in the art go find something yellow reds didn't tell him that it said three it said blue green red it starts from the second proposition that to  the other primary reference disclose white light that was also a false incorrect statement wrong wrong to dr who does not it discloses a blue light improvement to blue light and then it said once you know you have a yellow fos for it's easy you just go over to hofmann and you just go over to philips and you find yeah but if you don't if it doesn't start from the false premise that bret's discloses e l o foster you don't get there secondly what the undisputed position of both parties and the all of the prior art that ever light advocates all through the prior art is the color rendering is very important to have a successful product that's what the market demand that's what a person of ordinary skill in the art would understand who read hoffman who read the reference who read philips all of them talk about the importance of color rendering but then it doesn't lead you to just combine blue and yellow because hoffman be rendering in the claims it's not in the claims i don't think it has to be in the claimed your honor under k s r and under this court's opinion in re pastore i think a s r makes it absolutely clear that in considering a motivation to combine it is proper to consider what a person of ordinary skill in the art would understand about market demands what a person of ordinary skill would understand about what's important in order to have a successful product in terms of what the prior art teaches and in re past ore it was that the question of whether the cell it was a quick case where we were putting it the foreign d n a into a cell if they'd not a claim the red brick was saying how this color rendering concept was something that wasn't really argued you have heard before you know maybe came up once in your dream long but it wasn't something that you were really talking about in front of the it was raised below repeatedly or it was raised below i can give your honor citations where it was raised below repeatedly it was in all of the in but all of the prior art has has it in and worked throughout the record there was discussion of color rendering i'm sure you're looking for th in order to make white light phillips color rendering example critical for white light well philips itself the actual the actual prior art reference itself says jaeger is detrimental to color right i think your honor it's a misreading of the prior art i think the part very clearly says hoffman at two zero four one zero says yeah go deaf it would definitely result in lower color rendering philips one nine seven eight six jaeger is detrimental to color rendering it is only when jaegers used after the blue faucet for is used that where you already have white li hoffman and phillips already had created white light and used multiple colors they then added jaeger in that context and they surprisingly found that in that context the color rendering was better but it sa color rendering in that nature's l e d had good color rendering every light represented in opening that color rendering was of employees a feature of that color rendering was a feature of hard to access maybe i want something  specific where did one of your witnesses tell the jury you would not combine these references together with the primary differences because color rendering is absolutely critical and look at these passages in the secondary references which talk about using this yag is not good for colorado i have a hunter i can give you a citation it's unfortunate it's not in the appendix on april sixteenth it will outline at pages eighty one to eighty three our expert said color rendering must be reserve some time for rebuttal thank you lines thirty eight to forty five where the specification states that you can get white light by taking the blue l e d and using either singular or plural fos for their expert heard our experts say by the by you're on i do not disagree with that art references japanese publications that all disclose the use of blue plus yellow to get the white light so is it emitted in their specification and their own their expert said that once the blue light came out everybody had a motivation to do a simple blue plus yellow solution to say that the conventional wisdom was to do a three color solution which was more complicated is contrary to the references their specifications and their experts admission that there was a very high level of motivation to make so when some is looking for the appropriate foster they have to look to some other lighting technologies and the one that was being used for lasers mercury vapor lamps etc with any harsh conditions with a gag if you want to it so did outram the jury had plenty of evidence to decide that in fact this was an obvious thing to do and i would also point out the color rendering your honor that there they did not bring that up with the jury at all it came up twice in the transcript i color rendering one time i had to do they're relying on paragraphs in both of those references that were never even testified to by either expert or brought to the attention the jury it simply counsels interpretation on appeal as to what that in fact would teach somebody and are you aware that expert statement that the other side raised in your opening argument that's doesn't happened in the current plan is in the record somewhere i am not aware they are we did a search of the appendix and we found color rendering had to do with and it had to do with coming up with a red foster that was invented at that point years later that made the color rendering better in other words they made a blue plus yellow and the color running wasn't as great as they wanted to be and they came up the red foster dad to it and they had a war for that nothing to do with  and we relied on the brats reference for that and the j p nine five nine was teaching you the how how to accomplish it in other words that figure one c shows you the gravity if you take the chip and you put the resin on top of that the phosphor intersperse you can accomplish either one of those two whether or not that's the final step doesn't really matter it has to do with how you accomplish it was if you let it sit there and let it settle to the chip and you don't flip it over you can concentrate towards a chip so it's simply there you are to show that some of you know how to achieve the concentration near the chip versus the surface but for rets is the one that provides the motivation and reason to do it why you would do it brett's teaches that certain phosphors are in fact subject to degradation and because they're subject t there's limited options then it is obvious to go do the routine predictable things in our evidence show there are only three options with respect to concentration one is you concentrate it away from the ship towards the surface the other is that you concentrate towards the sides here she decide is that something you want to place near the surface near the chip or it doesn't matter and i would like to point one other thing out before i get to the game all we're looking at right now your honor and that is the nine six zero pad is not teaching that it's against the conventional wisdom or it's something or something special about concentrating the fos for near the chest it actually is discloses that you can concentrate it towards a surface away from the chest or you can co plane three words away from the ship so there's nothing special here other than the obvious idea that there are some fosters that are subject to degradation as our experts testify due to intense heat from the chip ok near the chip for the type of fosters that rex was talking about that are subject to degradation due to the environment and once again their expert did not disagree with that the barrettes had that teaching and when he  think you're right please a court i'd like to address the nine six zero padding which i didn't do in the opening comments as judge chain you pointed out the issue with the nine six zero patent from our perspective is that their expert testified about step one see as if it was a final device and when the l m t devices inverted it does not teach force for settling down toward the l e d chip it teaches forms for in a uniform dome below the l e d chip the district court judge accepted at j m a well the characterization of one c as a teaching of the patent and that is wrong and when he cited one c the figure wasn't even in the evidence that he cited as support but it isn't what if there's a larger way of gradient and then it does in fact it's closed one see i mean it's caught i mean it's there it's illustrated in the app and we can't walk away from that and it can turn a blind eye to it i understand the argument that it's merely an intermediate step but then if you go on and say ok so there's only a few ways to concentrate the fos for warren is near the top and the other is near the bottom and then either one one is you know perhaps the express intention of the and nine six nine but nevertheless the other one is a very obvious alternative to that well your honor it actually doesn't teach how phosphor concentration near the only be chip in step one see it's not a final step so it doesn't teach about driving it doesn't teach you when the solvent dissolves what's going to happen we don't know what happens if you stop it figure one to see the pattern doesn't teach that it only teaches it about one easy one it says now you do two more things or three more things and you end up with a uniform dome shape so i don't think you have to you have to really you should read i'm sorry does not recognize the problem of moisture and it has more locations and none of which are a gradient toward the only teacher thank you very much