`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`In the Matter of
`
`CERTAIN ICEMAKING MACHINES
`AND COMPONENTS THEREOF
`
`
`
`
`
`
`
`Inv. No. 337-TA-1369
`
`COMPLAINANT’S RESPONSE TO RESPONDENTS’
`WRITTEN SUBMISSION ON THE ISSUES UNDER REVIEW
`AND ON REMEDY, THE PUBLIC INTEREST, AND BONDING
`
`
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`
`
`
`I.
`
`II.
`
`d)
`e)
`
`ARGUMENT ...................................................................................................................... 1
`Response to Respondents’ Submission on the Commission’s
`A.
`Questions for Further Briefing ................................................................................ 1
`1.
`Response to Respondents’ Submission on Question No. 1 ........................ 1
`2.
`Response to Respondents’ Submission on Question No. 2 ........................ 3
`a)
`Respondents’ Surface Area Arguments Fail. .................................. 4
`b)
`Respondents’ Temperature-Based Arguments Fail. ....................... 5
`c)
`Respondents’ Arguments Relating to Ice Formation
`Fail .................................................................................................. 6
`Respondents’ Ice Separation Arguments Fail. ................................ 7
`Howmedica Osteonics Corp. v. Zimmer, Inc. Does
`Not Support Respondents’ Arguments. .......................................... 8
`Response to Respondents’ Submission on Question No. 3 ........................ 9
`3.
`Response to Respondents’ Submission on Question No. 4 ...................... 10
`4.
`Response to Respondents’ Submission on Question No. 5 ...................... 14
`5.
`Response to Respondents’ Submission on Question No. 6 ...................... 15
`6.
`Response to Respondents’ Submission on Question No. 7 ...................... 17
`7.
`Response to Respondents’ Submission on Question No. 8 ...................... 17
`8.
`Response to Respondents’ Submission on Question No. 9 ...................... 18
`9.
`Response to Respondents’ Submission on Question No. 10 .................... 18
`10.
`Response to Respondents’ Submission on Question No. 11 .................... 19
`11.
`Response to Respondents’ Submission on Remedy, the Public
`Interest, and Bonding ............................................................................................ 23
`There is no Rational Basis to Deny Entry of the Requested
`1.
`Remedial Orders. ...................................................................................... 23
`Respondents’ Public Interest Arguments Fail........................................... 24
`Respondents’ Bond Arguments Fail. ........................................................ 27
`
`
`B.
`
`2.
`3.
`
`
`
`
`
`i
`
`PUBLIC VERSION
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Aquatex Industries, Inc. v. Techniche Solutions,
`479 F.3d 1320 (Fed. Cir. 2007) .............................................................................................. 2, 3
`Certain Collapsible and Portable Furniture,
`Inv. No. 337-TA-1178, Comm’n Op. (May 18, 2021) ............................................................. 14
`Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc.,
`222 F.3d 951 (Fed. Cir. 2000) .................................................................................................. 20
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`No. CIV.05-897(WHW), 2008 WL 3871733 (D.N.J. Aug. 19, 2008) ....................................... 9
`Perkin-Elmer Corp. v. Westinghouse Electric Corp.,
`822 F.2d 1528 (Fed. Cir. 1987) .................................................................................................. 3
`Trading Technologies International, Inc. v. eSpeed, Inc.,
`595 F.3d 1340 (Fed. Cir. 2010) ................................................................................................ 16
`VLSI Technology LLC v. Intel Corp.,
`87 F.4th 1332 (Fed. Cir. 2023) .............................................................................................. 2, 13
`Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,
`520 U.S. 17 (1997) ...................................................................................................................... 3
`Other Authorities
`19 C.F.R. § 210.43(a)(1) ............................................................................................................... 16
`19 C.F.R. § 210.43(b)(4) ............................................................................................................... 16
`
`
`
`ii
`
`PUBLIC VERSION
`
`

`

`I.
`
`INTRODUCTION
`
`Complainant Hoshizaki America, Inc. (“Hoshizaki” or “Complainant”) hereby responds
`
`to Respondents’ written submission in response to the Notice of a Commission Determination to
`
`Review a Final Initial Determination (“ID”) Finding a Violation of Section 337 (“Notice”).1
`
`
`
`II.
`
`ARGUMENT
`A.
`
`Response to Respondents’ Submission on the Commission’s Questions
`for Further Briefing
`1.
`
`Response to Respondents’ Submission on Question No. 1
`
`Respondents acknowledge that the doctrine of equivalents analysis should focus on the
`
`specific function of the claim limitation at issue. Resp’ts’ Initial Written Submission (“RWS”) at
`
`1. Respondents also concede that “inquiries as to the claim limitation’s function must ‘focus[] on
`
`an examination of the claim and the explanation of it found in the written description of the
`
`patent.’” RWS at 2. Despite those acknowledgments, Respondents advocate for defining the
`
`function to include “making/forming ice[,]” the function of the overall machine of which the
`
`claimed evaporator is a part. See RWS at 1; JX-0002 at 7:42 (claim preamble claiming an
`
`evaporator with the limitations set forth in the claim body). Further, Respondents argue that
`
`“narrowly defining the function of inner flat portions to just the separation of active and passive
`
`cavities would improperly generalize the claimed scope of the inner flat portions limitation and
`
`disregard the role played by the express limitation in the context of the claim.” RWS at 4.
`
`Respondents’ arguments conflict with the governing law and with Respondents’
`
`concession that the limitation is described in the specification as separating the active and
`
`passive cavities to define ice forming sites. See RWS at 1 (“[T]he claims and specification of the
`
`
`1 Unless otherwise specified, Complainant uses the abbreviations set forth in the ID.
`
`1
`
`PUBLIC VERSION
`
`

`

`
`
`’785 and ’692 Patents require the ‘inner flat portions’ to separate active and passive cavities to
`
`‘define a plurality of ice forming sites.’”). Respondents improperly attempt to expand that
`
`limited, narrow function to include “other functions” related to ice formation, including the
`
`topics about which Dr. Pokharna testified. RWS at 3–4 (“The other functions the inner flat
`
`portions play with respect to ice formation . . . include the formation of boundary layers, the
`
`amount of surface area of contact between the plates and water, and the shape of the surrounding
`
`tubing coil.”). These additional functions are found nowhere in the patents’ common
`
`specification, and Respondents’ attempt to include them represents a blatant attempt to make Dr.
`
`Pokharna’s testimony relevant to the function described in the specification and identified by the
`
`CALJ.
`
`The cases cited by Respondents do not remotely suggest that those additional functions
`
`must be included in the function of the claimed “inner flat portions,” nor do Respondents make
`
`any argument that they compel that result. See RWS at 1, 4. VLSI Technology LLC v. Intel Corp.,
`
`cited by Respondents, confirms that the CALJ was correct to define the function in a limitation-
`
`specific manner, informed by the role each element plays in the context of the claim. 87 F.4th
`
`1332, 1342 (Fed. Cir. 2023). Respondents provide no explanation or support for their argument
`
`that focusing on the specific function of the inner flat portions results in improper
`
`“generaliz[ing]” the scope of that limitation. See RWS at 4. Indeed, characterizing the function
`
`of the inner flat portions as “ice-making” would be far more general and would disregard the
`
`specific role of the inner flat portions. The cited portions of Aquatex Industries, Inc. v. Techniche
`
`Solutions, similarly, demonstrate that the ALJ correctly defined the function of the claimed inner
`
`flat portions. See 479 F.3d 1320, 1326-28 (Fed. Cir. 2007). Aquatex Industries specifically
`
`provides that the function of the overall machine, or even a broader portion thereof, should not
`
`2
`
`PUBLIC VERSION
`
`

`

`
`
`be used to define the function of a specific limitation. Id. at 1327 (finding error in defining the
`
`function of the “fiberfill batting material” to be the overall function of the filler layer as a whole).
`
`In defining the function to include ice-making, Respondents seek to broaden the function far
`
`beyond the function of even the entire evaporator, of which the inner flat portions are a part. The
`
`Perkin-Elmer Corp. v. Westinghouse Electric Corp. case cited by Respondents also provides no
`
`support for their argument that the CALJ erred. See 822 F.2d 1528, 1532-35 (Fed. Cir. 1987).
`
`That case was decided before the Supreme Court decided Warner-Jenkinson Co. v. Hilton Davis
`
`Chemical Co., 520 U.S. 17 (1997), and appears to conflict with the Supreme Court’s holding that
`
`“the doctrine of equivalents must be applied to individual elements of the claim, not to the
`
`invention as a whole.” Perkin-Elmer Corp., 822 F.2d at 1534 (“The district court properly
`
`viewed the entire claim, including clauses (h) and (i), and found that the accused devices did not
`
`operate in substantially the same way as did the claimed invention.”). Nor does the case relate to
`
`defining a function of a claim limitation, focusing instead on the “specific manner or way of
`
`impedance matching and frequency tuning” associated with the claimed function of “tap
`
`coupling.” See id. at 1354. Respondents make no argument that the specification of the ’785 and
`
`’692 patents defines such a specific “manner or way” in which the inner flat portions contribute
`
`to the process of icemaking.
`
`For the reasons detailed above, Respondents’ arguments that the Commission should
`
`broaden the function defined by the CALJ in the ID, even if preserved (see Section II.A.6.,
`
`infra), fail and should be rejected.
`
`2.
`
`Response to Respondents’ Submission on Question No. 2
`
`As detailed in Hoshizaki’s Opening Brief, the CALJ correctly found that “the way the
`
`accused inner curved portions separate active and passive cavities in the BLMI-500A is the same
`
`as the way the ‘inner flat portions’ of limitation 1[c] provide the same separation in the in the
`
`3
`
`PUBLIC VERSION
`
`

`

`
`
`claimed invention.” See ID at 71. Respondents’ arguments inherently require the CALJ’s
`
`determination regarding the function of the claimed “inner flat portions” to be expanded to the
`
`overall function of the machine, i.e., ice-making. But even if ice formation is included in the
`
`function of the limitation, the slightly curved inner portions in the accused products play the
`
`same role in ice formation as the inner flat portions in the claimed invention: ice first forms on
`
`the first protrusion (which defines the active cavity) and grows laterally outwardly, onto the
`
`slightly curved inner portions and onto at least part of the adjacent second protrusion (which
`
`defines the passive cavity). See Compl’ts’ Initial Written Submission (“CWS”) at 6–7; JX-0002
`
`at 5:11-19; Tr. (Tanbour) at 317:10-318:12 (explaining how ice grows in the BLMI-500A).
`
`Respondents’ four asserted differences in the “way” ice is formed do not represent a difference
`
`in the way ice is formed, as properly described above. In any event, as demonstrated below, each
`
`of Respondents’ arguments fails.2
`
`a)
`
`Respondents’ Surface Area Arguments Fail.
`
`Respondents’ arguments related to the differences in surface area between an inner flat
`
`portion and a slightly curved inner portion fail to demonstrate any difference in the way ice is
`
`made, to the extent ice-making is included in the function related to the limitation.
`
`First, the minimal testimony provided by Dr. Pokharna regarding surface area
`
`demonstrated that he improperly compared an embodiment in the patent (Figure 2) to the
`
`accused device. See Tr. (Pokharna) at 522:4-11. That led him to base his opinion on the
`
`unclaimed shape of the tube and on the unclaimed length of the inner flat portion depicted in
`
`
`2 Respondents also provide argument that a flat inner portion cannot be equivalent to a
`curved inner portion. RWS at 4–5. That argument is not responsive to the Commission’s Notice
`and should be disregarded. To the extent considered, Respondents have demonstrated no error in
`the CALJ’s extensive treatment of that argument in the ID. See ID at 67–70; see also § II.A.5,
`infra.
`
`4
`
`PUBLIC VERSION
`
`

`

`
`
`Figure 2. See id. (“So as you can see with the flattened tube that is described in the Figure 2 and
`
`a sort of long flat section of the inner flat portion . . . , there is more surface area in contact with
`
`water on the outside.”). A proper comparison that holds the unclaimed features constant, and
`
`modifies only the shape of the inner portion, demonstrates no increase in surface area in the
`
`claimed inner flat portion as compared to the slightly curved inner portion used by Respondents:
`
`CDX-0001.56 (citing JPX-0003C). Accordingly, even if additional surface area were determined
`
`to substantially affect the “way” in which ice is formed, there is no showing that introducing a
`
`slight curve to an inner flat portion decreases surface area at all, and no showing that any such
`
`decrease would substantially affect the way in which ice is formed. In fact, Respondents’
`
`argument is belied by the geometric maxim that a straight line is the shortest distance between
`
`two points (i.e., the two points on the dimple where the slightly curved inner portion begins and
`
`ends).
`
`b)
`
`Respondents’ Temperature-Based Arguments Fail.
`
`Respondents’ arguments that the water temperature will be lower in a design with more
`
`surface area fail for the reasons discussed above; in particular, Respondents have made no
`
`showing that introducing a slight curve to an inner flat portion even affects the surface area.
`
`Moreover, Respondents have not shown that any difference in surface area resulting from
`
`5
`
`PUBLIC VERSION
`
`

`

`
`
`introducing the slight curve at the bottoms of the dimples in the accused products would
`
`substantially affect the temperature “on the outside of the tube[,]” nor that any change in that
`
`temperature would affect the “way” in which ice is formed. See RWS at 7–8.
`
`c)
`
`Respondents’ Arguments Relating to Ice Formation Fail
`
`Respondents’ arguments related to the formation of boundary layers or changes in surface
`
`tension suffer from the same flaw as the arguments discussed above, i.e., that Dr. Pokharna
`
`improperly compared an embodiment in the specification to the accused products. See Tr.
`
`(Pokharna) at 523:17-22 (“Q. Turning to slide 33 and to the fourth difference between these two
`
`designs, how does ice formation differ?”) (emphasis added). Based on that improper comparison,
`
`Dr. Pokharna offered an opinion that “the boundary layer gets fully formed” in the design in
`
`Figure 2. Tr. (Pokharna) at 524:1-4. Dr. Pokharna’s surface tension arguments are in response to
`
`the same question, which focuses on differences in design between the embodiment depicted in
`
`Figure 2 and the accused products, as opposed to merely changing the shape of the inner portion
`
`that forms the bottom of the dimple.
`
`More fundamentally, Dr. Pokharna failed to demonstrate how the purported formation of
`
`a boundary layer, or how a purported difference in surface tension, substantially affects the way
`
`ice is formed. Stated differently, the alleged microscopic differences in the way that ice begins to
`
`form in a curved versus a flat surface do not affect the overall way in which ice is formed in the
`
`accused products, even if that were an appropriate consideration.
`
`Demonstrating the insubstantial differences, Dr. Tanbour testified that the modification
`
`made by Respondents in the accused products to introduce a slight curve at the bottom of the
`
`dimples does not introduce any substantial difference “from a heat transfer point of view”
`
`because the bottom of the dimple, because the feature that separates the active and passive
`
`cavities, is not in contact with the refrigerant conduit. Tr. (Tanbour) at 335:1-20, 338:21-23. Dr.
`
`6
`
`PUBLIC VERSION
`
`

`

`
`
`Tanbour’s testimony also warrants disregard of Dr. Pokharna’s opinions, even if those opinions
`
`were based on a proper comparison, which they are not.
`
`d)
`
`Respondents’ Ice Separation Arguments Fail.
`
`Respondents’ arguments related to the alleged substantial differences in the way ice
`
`separates from an evaporator plate with slightly curved inner portions rely on Dr. Pokharna’s
`
`testimony that the alleged differences in how ice separates from the plate relies on “the same
`
`physics applie[d] in kind of reverse manner” as ice formation. See Tr. (Pokharna) at 525:11-15.
`
`Accordingly, this argument fails for the same reasons as Dr. Pokharna’s arguments related to the
`
`alleged efficiency gains in the accused products’ design, when compared to Figure 2 of the ’785
`
`and ’692 patents. See § II.A.3., infra. Specifically, Dr. Pokharna conducted an improper
`
`comparison of the accused products to an embodiment of the patent, relying on unclaimed
`
`features such as the shape of the tube and the length of the inner flat portion depicted in Figure 2.
`
`Moreover, Dr. Pokharna demonstrated no substantial difference in the way ice is formed between
`
`the two designs, and likewise showed no substantial difference in the way ice is separated.
`
`Indeed, ice formation and separation occurs in the accused products in the exact manner
`
`described in the ’785 and ’692 patents. Ice forms on the first protrusion and grows laterally
`
`outwardly, onto the adjacent inner portions and onto the curved portion of the second protrusion.
`
`See JX-0002 at 5:13-19; Tr. (Tanbour) at 317:10-318:12 (explaining how ice grows in the
`
`BLMI-500A). Once cubes of the desired size are formed, the ice maker harvests the ice by
`
`passing warm coolant through the refrigerant conduit, as described in the patent. See id. at 5:28-
`
`32; Tr. (Pokharna) at 525:5-10. When the way ice is formed is described in that manner, Dr.
`
`Pokharna’s arguments about alleged efficiency gains do not affect the way in which ice is
`
`formed or separated at all. See also Tr. (Tanbour) at 333:25-335:19 (agreeing that “a dimple with
`
`7
`
`PUBLIC VERSION
`
`

`

`
`
`a slightly curved bottom portion performs identically to a dimple with . . . a planar bottom
`
`portion”); Tr. (Sellers) at 840:15-22.
`
`Confirming that any change to the shape of the dimple does not result in any substantial
`
`difference in ice separation, Hoshizaki witness David Sellers testified that Hoshizaki
`
`
`
` Tr. (Sellers) at
`
`840:15-22.
`
`e)
`
`Howmedica Osteonics Corp. v. Zimmer, Inc. Does Not
`Support Respondents’ Arguments.
`
`Respondents repeatedly cite the Howmedica Osteonics case in support of their arguments
`
`that the alleged differences testified to by Dr. Pokharna in the way ice is made in an evaporator
`
`with slightly curved inner portions are substantial. See RWS at 7, 8, 10. That case, even if it were
`
`binding precedent (which it is not), does not support Respondents’ argument.
`
`As an initial matter, Respondents have not demonstrated any difference in “heating or
`
`melting temperature” between an evaporator with slightly curved inner portions and one with
`
`inner flat portions. See id. But Respondents’ reliance on Howmedica Osteonics suffers an even
`
`greater flaw, which is that the claims at issue—unlike the claims in the ’785 and ’692 patents—
`
`required annealing at a particular temperature range. 2008 WL 3871733 at *5, Civ. No. 05-897
`
`(Aug. 19, 2008).
`
`That case, therefore, does not stand for the blanket proposition that any change in
`
`temperature in a device covered by claims that relate to heating or cooling is significant. But
`
`even if it did, Respondents have not demonstrated any such difference in temperature between
`
`the accused devices and one with “inner flat portions.”
`
`8
`
`PUBLIC VERSION
`
`

`

`
`
`3.
`
`Response to Respondents’ Submission on Question No. 3
`
`Respondents’ response to the Commission’s third question demonstrates a fundamental
`
`flaw in their application of the function-way-result test. Specifically, Respondents merely rely on
`
`the same four, flawed arguments that they assert constitute a substantial difference in the “way”
`
`the slightly curved inner portions perform the function of the claimed “inner flat portions” to
`
`assert that the slightly curved inner portion produces a substantial difference in the “result” of
`
`that function. RWS at 11–12.
`
`As with their arguments regarding alleged differences in “way” ice is formed,
`
`Respondents’ arguments rest upon an assumption that the CALJ’s definition of the function of
`
`the “inner flat portions” be modified to include the overall function of the machine, i.e., ice-
`
`making. Respondents assert, with no supporting testing or analysis, that Dr. Pokharna’s
`
`arguments related to differences between Figure 2 and the accused products “demonstrate that
`
`the efficiency of the icemaking process and the resultant quality and amount of generated ice are
`
`all substantially affected” by the difference between an inner flat portion and a slightly curved
`
`inner portion. RWS at 12. As detailed above and in Hoshizaki’s opening submission, even if any
`
`change in efficiency were enough to negate equivalence, Respondents’ arguments are based on a
`
`flawed comparison between an embodiment in the ’785 and ’692 patents and the accused
`
`products as a whole, and do not demonstrate the substantiality of any efficiency gains from
`
`introducing a slight curve to the bottom of the dimples. See CWS at 12–13; § II.A.2, supra.
`
`Respondents’ reliance on Dr. Tanbour’s description of testing performed by Hoshizaki
`
`demonstrates the lack of credibility of Dr. Pokharna’s testimony regarding alleged efficiency
`
`gains achieved by a curved-bottom dimple. See RWS at 10–11. In particular, Dr. Tanbour
`
`testified that Hoshizaki’s testing demonstrated that flat-bottomed dimples produced “slightly”
`
`better efficiency results. Tr. (Tanbour) at 434:13-21. That the difference in efficiency was slight
`
`9
`
`PUBLIC VERSION
`
`

`

`
`
`is sufficient to demonstrate that “substantially the same performance” is achieved between the
`
`two shapes. Tr. (Tanbour) at 434:13-21; see also ID at 72 (defining the “result” of including
`
`“inner flat portions” in the claimed design). In addition to demonstrating an insubstantial
`
`difference in efficiency between the two designs, Dr. Tanbour’s testimony demonstrates that Dr.
`
`Pokharna’s assertion that better efficiency results would be achieved by a curved bottom dimple
`
`is incorrect. See id.
`
`Moreover, Hoshizaki witness David Sellers testified at length that the “
`
`
`
`
`
` Tr. (Sellers) at 842:24-843:7.
`
`Further undermining the credibility of Dr. Pokharna’s unsupported arguments, Mr. Sellers
`
`testified that Hoshizaki
`
`
`
`. Tr. (Sellers) at 840:15-22. Respondents’ arguments therefore fail and, indeed,
`
`demonstrate the lack of any substantial difference in result between employing inner flat portions
`
`or slightly curved inner portions.
`
`Accordingly, if icemaker efficiency is considered as part of the result of including inner
`
`flat portions, the record demonstrates no substantial difference in icemaker efficiency between
`
`the claimed “inner flat portions” and Respondents’ slightly curved inner portions. See CWS at
`
`13.
`
`4.
`
`Response to Respondents’ Submission on Question No. 4
`
`Respondents’ response to Question No. 4 rests largely on two incorrect assertions: (1)
`
`that Dr. Pokharna testified “at great length regarding the substantial differences between the
`
`claimed inner flat portions and the curved portions of the Accused Products” and (2) that Dr.
`
`Tanbour’s comparison of the BLM-500A’s slightly curved inner portions to a modified version
`
`of those portions to include inarguably flat inner portions was “premised on an improper
`
`10
`
`PUBLIC VERSION
`
`

`

`
`
`manipulation of the underlying evidence[.]” RWS at 12, 14–15; see also RWS at 15 (“In its
`
`function, way, result analysis, the ID does not address Dr. Pokharna’s voluminous testimony.”).
`
`Regarding the first argument, the hearing transcript reflects that Dr. Pokharna’s testimony
`
`was quite conclusory. See Tr. (Pokharna) at 521:24-525:19. Dr. Pokharna provided limited
`
`testimony about the differences between the two designs, unsupported by any testing,
`
`calculations, or observations. See id. For example, Respondents argue that Dr. Pokharna testified
`
`at great length about how a curved-bottom dimple in the accused products prevents boundary
`
`layers from forming. See RWS at 12–13. But Dr. Pokharna’s testimony did not actually
`
`demonstrate that a boundary layer forms when a flat-bottomed dimple is employed, nor did Dr.
`
`Pokharna demonstrate that such a layer does not form in a curved-bottom dimple. See Tr.
`
`(Pokharna) at 523:20-524:10. And the bulk of Dr. Pokharna’s cited testimony relates to the
`
`design of a prior art product, and thus has nothing to do with the difference between a flat- or
`
`curved-bottom dimple. See RWS at 12–13 (citing Tr. (Pokharna) at 777:10-780:6). The
`
`remainder of Dr. Pokharna’s testimony, which was largely uncited by Respondents, is equally
`
`conclusory.
`
`Respondents’ assertions that the comparison presented by Dr. Tanbour was improper also
`
`fail. See RWS at 14–15. Dr. Tanbour properly compared Respondents’ accused products, which
`
`have been conclusively determined to literally meet every limitation in the asserted claims except
`
`for “inner flat portions,” to a modified image that changes the slightly curved inner portions such
`
`that they inarguably satisfy the “inner flat portions” limitation. See RWS at 15 (citing CDX-
`
`0001.0056). In so doing, Dr. Tanbour was able to properly compare the accused product, with its
`
`slightly curved inner portions, to the asserted claims, i.e., a slightly modified product that
`
`satisfies the “inner flat portions” limitation, as well as the remaining limitations. That allowed for
`
`11
`
`PUBLIC VERSION
`
`

`

`
`
`a comparison of the difference between the claims (which require “inner flat portions”) to the
`
`accused device (which has slightly curved inner portions). Dr. Tanbour provided extensive
`
`testimony about the lack of impact that minimal change would have. See Tr. (Tanbour) at 336:3–
`
`340:5.
`
`There is nothing improper or deceptive about Dr. Tanbour’s comparison, which properly
`
`holds all other features of Respondents’ products constant, while changing only the shape of the
`
`bottom of the dimple. Indeed, Respondents’ protestations regarding the propriety of Dr.
`
`Tanbour’s straightforward comparison serve to highlight the flaw in their own analysis, which
`
`compared the accused products to an embodiment with different, optional, unclaimed features
`
`such as a flattened refrigerant conduit and a long inner flat portion. See CWS at 7–11, 13–16,
`
`21–22. The remainder of Respondents’ arguments regarding Dr. Tanbour’s testimony do not
`
`even allege a lack of credibility or veracity regarding Dr. Tanbour’s conclusion that “there’s no
`
`substantial difference” between the accused products and a product with inner flat portions at the
`
`bottom of the dimples therein. See, e.g., Tr. (Tanbour) at 338:7–23.
`
`The cases cited by Respondents, and the arguments made with respect to those cases, also
`
`fail to show any flaw in Dr. Tanbour’s analysis, or the CALJ’s reliance thereon. Respondents
`
`first suggest that VLSI Technology LLC v. Intel Corp., 87 F.4th 1332, 1342 (Fed. Cir. 2023),
`
`supports its argument that Dr. Tanbour’s extensive testimony was not particularized enough to
`
`demonstrate the insubstantiality of any differences. RWS at 13, 15. VLSI, however, involved
`
`entirely different technology, microprocessors, and Respondents’ citation to the expert’s
`
`testimony that “an engineer could ‘draw[] . . . [a] line’ in different places” related to “a schematic
`
`drawing used to illustrate functions” of the microprocessor. VLSI Tech., 87 F.4th at 1343-44. That
`
`testimony is entirely different from Dr. Tanbour’s straightforward demonstration of the
`
`12
`
`PUBLIC VERSION
`
`

`

`
`
`mechanical and thermodynamic principles demonstrating that an evaporator with inner flat
`
`portions would achieve the same function, way, and result as the accused products’ evaporator
`
`with slightly curved inner portions. Tr. (Tanbour) at 335:1-20 (testifying that neither the slightly
`
`curved inner portion nor the inner flat portion depicted are in contact with the refrigerant tube).
`
`Respondents also cite, without textual analysis, Certain Collapsible and Portable
`
`Furniture, Inv. No. 337-TA-1178, Comm’n Op. (May 18, 2021) in support of their arguments
`
`that Dr. Tanbour’s testimony was insufficient. That case, too, presents an entirely different
`
`factual scenario; there, the complainant “relied on a novel legal framework for analyzing
`
`equivalence” where the complainant “argued that the bending motion of compliant members in
`
`the accused chairs could be approximated with simplified models . . . .” Collapsible and Portable
`
`Furniture, Comm’n Op. at 37–38. As detailed by the Commission, the complainant then
`
`effectively performed a comparison of the accused chairs to those models, instead of to the
`
`asserted claims. Id. at 38. The Commission rejected the complainant’s equivalence argument for
`
`failing to show that the models accurately modeled the relevant components of the accused
`
`chairs. Id. Here, Dr. Tanbour’s simple demonstration of the insubstantial differences between the
`
`accused products, with slightly curved inner portions, and the same products, modified to include
`
`inner flat portions, did not involve a simplified model, or a comparison to that model, and
`
`therefore Collapsible and Portable Furniture does not suggest any error in Hoshizaki’s
`
`presentation.
`
`As demonstrated in Complainants’ Submission, Dr. Pokharna’s testimony was correctly
`
`determined to be less credible than Dr. Tanbour’s. See CWS at 13–17. The CALJ, therefore,
`
`properly credited Dr. Tanbour’s extensive testimony that changing the shape of the bottom of the
`
`dimple from flat to slightly curved has no substantial effect on icemaking performance.
`
`13
`
`PUBLIC VERSION
`
`

`

`
`
`5.
`
`Response to Respondents’ Submission on Question No. 5
`
`Respondents’ response to Question No. 5 fails to address evidence regarding what
`
`constitutes the “slightly curved inner portions” in the accused products as characterized in the
`
`ID. Instead, Respondents again argue that Dr. Tanbour’s demonstration of equivalence was
`
`improper. RWS at 16–17. Those arguments fail because, as discussed above in Section II.A.4,
`
`Dr. Tanbour’s demonstration allowed for a proper comparison of the accused device to the
`
`asserted claims, by demonstrating what the same product would look like if it literally satisfied
`
`the “inner flat portions” limitation. Respondents also take issue with the ID’s characterization of
`
`the inner portions in its products as slightly curved, asserting that they should be characterized as
`
`“curved.” See RWS at 19. Though Respondents’ response is largely non-responsive,
`
`Respondents do not appear to disagree with Complainants regarding the portion of the accused
`
`products that the ID identifies as the “slightly curved inner portions.” Compare RWS at 19
`
`(citing RDX-0003.0020; JPX-0003C (annotated); RDX-0003.0021; JPX-0007C (annotated) with
`
`CWS at 17–19 (citing, inter alia, JPX-0003C).
`
`Respondents’ response to the Commission’s inquiry regarding the degree of curvature is,
`
`similarly, largely non-responsive. See RWS at 19–22. To the extent Respondents provide a
`
`response, they appear to assert that even the slightest curvature would avoid infringement, even
`
`under the doctrine of equivalents, based on the incorrect assertion that “curved” is the opposite of
`
`“flat.” See RWS at 19–21. That argument fails because, contrary to Respondents’ assertion, the
`
`difference between flat and c