HAAG-STREIT AG loses appeal at CAFC in case involving state of blue LED art

The matter of the blue LED arises in the case:


Second, the Board found that Dr. Jiao’s testimony did not support the position that one of ordinary skill in the art would have understood Longobardi to implicitly disclose the presence of a blue LED. In particular, the Board found that none of Dr. Jiao’s testimony “actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by [Haag-Streit], is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” Board Decision, 2019 Pat. App. LEXIS 13545, at *33. The Board explained that, although Dr. Jiao’s original declaration filed with the IPR petition stated that “one of ordinary skill in the art ‘would understand Longobardi’s teaching of using fluorescein for imaging purposes [to] necessarily mean[] that the instrument emits blue light’” he failed to “adequately support the view that one of ordinary skill in the art would have understood Longobardi to implicitly disclose the presence of a blue LED.” Id. at *33. Indeed, the Board noted that Dr. Jiao’s testimony on this issue “makes no reference to a blue LED.” Id. On appeal, Haag-Streit argues that the Board’s finding that “none of Dr. Jiao’s testimony supports the contention that Longobardi implicitly discloses a blue LED” is inconsistent with findings the Board made in its Institution Decision. Appellant’s Br. 34. But it is well established that “the Board is not bound by any findings made in its Institution Decision.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (explaining that, at the institution phase, “the Board is considering the matter preliminarily without the benefit of a full record”). In any event, we disagree with Haag-Streit’s assertion that the Board’s findings in the Institution Decision are inconsistent with those in its final written decision. In the Institution Decision, the Board never said that Dr. Jiao’s testimony supports the position that one of ordinary skill in the art would have understood Longobardi to implicitly disclose the presence of a blue LED. Instead, the Board acknowledged that “Petitioner (via Dr. Jiao) [took] the position that one of ordinary skill in the art would view Longobardi as at least implicitly teaching or suggesting the use of a blue LED to generate blue light energy,” while “Patent Owner (via Dr. Lebby) [took] the position that blue LEDs did not exist at the time for medical use and that one of ordinary skill in the art would not have used a blue LED for medical use.” Haag-Streit AG v. Eidolon Optical, LLC, No. IPR2018-01311, 2019 WL 171684, at *10 (P.T.A.B. Jan. 11, 2019). The Board found that this conflicting testimony created a genuine issue of material fact which, at that stage in the proceedings, had to be viewed in the light most favorable to Haag-Streit. Id. In its final written decision, the Board carefully considered Dr. Jiao’s declarations, but agreed with Eidolon’s evidence and argument in finding that his testimony failed to demonstrate that one of ordinary skill in the art would have understood Longobardi to implicitly disclose the presence of a blue LED. Board Decision, 2019 Pat. App. LEXIS 13545, at *31–33. “[I]t is not for us to second-guess the Board’s assessment of the evidence.” Velander v. Garner, 348 F.3d 1359, 1378–79 (Fed. Cir. 2003) (“Our task is to determine whether substantial evidence supports the conclusion chosen by the Board.”). Finally, the Board found that Haag-Streit did not carry its burden to establish that “a blue LED with sufficient power output to cause sodium fluorescein to fluoresce existed as of February 5, 1992.” Board Decision, 2019 Pat. App. LEXIS 13545, at *34. On this point, Eidolon presented expert testimony that, “[a]t the time of Longobardi, 1992, an LED capable of generating blue light energy suitable for diagnostic medical applications such as retinal angiography simply did not exist.” Id. at *34–35. The Board found that this evidence shifted the burden of production to Haag-Streit to establish that blue LEDs sufficient to excite sodium fluorescein existed as of February 5, 1992. Id. at *35–36. Haag-Streit’s expert, Dr. Jiao, admitted that he did not know the specific amount of power output needed for an LED to cause sodium fluorescein to fluoresce