UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`CAMPBELL SOUP COMPANY, CAMPBELL SALES COMPANY,
`AND TRINITY MANUFACTURING, L.L.C.,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`_________
`
`Case IPR2017-00087
`Patent 8,827,111 B2
`___________
`
`Record of Oral Hearing
`Held: January 23, 2018
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`CAMPBELL SOUP COMPANY, CAMPBELL SALES COMPANY,
`AND TRINITY MANUFACTURING, L.L.C.,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`_________
`
`Case IPR2017-00087
`Patent 8,827,111 B2
`___________
`
`Record of Oral Hearing
`Held: January 23, 2018
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
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`Case IPR2017-00087
`Patent 8,827,111 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`TRACY ZURZOLO QUINN, ESQUIRE
`Reed Smith LLP
`Three Logan Square
`1717 Arch Street, Suite 3100
`Philadelphia, PA 19103
`
`GERARD M. DONOVAN, ESQUIRE
`Reed Smith LLP
`1301 K Street
`Suite 1000-East Tower
`Washington, DC 20005
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ANDREW L. TIAJOLOFF, ESQUIRE
`Tiajoloff & Kelly LLP
`Chrysler Building, 37th Floor
`405 Lexington Avenue
`New York, NY 10174
`
`
`
`and:
`
`Darren Mogil, Esquire (Trinity)
`Kelly Grady, Esquire (Campbell)
`
`
`
`
`The above-entitled matter came on for hearing Thursday, January 23,
`
`2018, commencing at 9:00 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
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`Case IPR2017-00087
`Patent 8,827,111 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE GERSTENBLITH: Good morning, everyone. So
`
`
`we're here now for a hearing in IPR2017-00087, Campbell Soup Company,
`Campbell Sales Company, and Trinity Manufacturing v. Gamon Plus, Inc.
`
`
`I'm Judge Gerstenblith. To my right is Judge Obermann, to my
`left is Judge Kinder.
`
`
`Starting with Petitioner, let's have each counsel please come up
`to the podium and enter your appearance for the record.
`
`
`MR. DONOVAN: Good morning, Your Honor, this is Gerard
`Donovan for the Campbell Petitioners. And would you like me to introduce
`the others or would you like each to come up individually?
`
`
`JUDGE GERSTENBLITH: You can introduce them, please.
`
`
`MR. DONOVAN: All right, then this is Tracy Quinn for the
`Campbell Petitioners and Darren Mogil for the Trinity Petitioner, and Tracy
`Quinn will be presenting arguments today.
`
`
`JUDGE GERSTENBLITH: Okay, thank you. Welcome.
`
`
`MR. TIAJOLOFF: Good morning, I'm Drew Tiajoloff, I am
`the only person here for Gamon Plus.
`
`
`JUDGE GERSTENBLITH: Good morning.
`
`
`May I ask, ma'am, are you with either side?
`
`
`MS. GRADY: Yes, certainly. I am Kelly Grady; I am in-house
`with Campbell Soup.
`
`
`JUDGE GERSTENBLITH: Okay. Is everybody here on the
`protective order?
`
`
`MS. QUINN: I'm not sure if Ms. Grady as in-house counsel is,
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`but the only protective order-related material is Campbell material and she is
`in-house for Campbell.
`
`
`JUDGE GERSTENBLITH: Okay. Before we begin -- oh, so
`thank you very much for the introductions everyone. If you have paper
`copies of your demonstratives, feel free to hand them up. At a minimum, we
`request at least one copy for the court reporter. We have the electronic
`copies, but if you would like to hand up paper copies, you can do that as
`well.
`(Pause.)
`
`
`JUDGE GERSTENBLITH: Also, let me just confirm the
`
`
`pending motions that we have. I believe, but please correct me if I'm wrong,
`Ms. Quinn, that we have two pending motions, both filed by Petitioner, a
`motion to exclude and a motion to seal?
`
`
`MS. QUINN: Correct, Your Honor.
`
`
`THE COURT: Okay, thank you. And we forth the procedure
`for today's hearing in our trial order, which is paper 55. Each party will
`have 35 minutes of total argument time. We'll begin with Petitioner, who
`will start with its case in chief, and can also address either of its motions, if
`you choose. And you can also -- Petitioner can reserve time for rebuttal.
`And after Petitioner presents its opening arguments, it will be Patent
`Owner's turn to respond to those arguments. After Patent Owner's response,
`Petitioner can have whatever time it reserved for rebuttal to respond to
`Patent Owner's arguments.
`
`
`Now, in this case, because Patent Owner doesn't have any
`outstanding motions, Patent Owner only has one opportunity to make its
`arguments after Petitioner's opening.
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`Now, I have a timer up here that I can use and I can set for
`
`
`whatever time you would like. It's going to start counting down and then
`lights start doing different things, but we can also -- I'm also happy to sort of
`raise my hand if, you know, there's a five-minute warning or whatever you
`would like. So when it's your turn to come up to the podium, if you would
`like me to set the timer to any particular amount, just let me know.
`
`
`Does anybody have any questions about the order of the
`hearing for our case now, for 87? Petitioner?
`
`
`MS. QUINN: No, Your Honor.
`
`
`JUDGE GERSTENBLITH: Patent Owner?
`
`
`MR. TIAJOLOFF: No, Your Honor.
`
`
`JUDGE GERSTENBLITH: Okay. With that, Petitioner,
`whenever you're ready to proceed.
`
`
`MS. QUINN: Thank you, Your Honor, and good morning to
`the Board. My name is Tracy Quinn from Reed Smith, I'm here for the
`Petitioners. I'd like to reserve ten minutes for rebuttal. And at the outset,
`on the pending motions, I think we're fine resting on the papers on our
`motion to exclude.
`
`
`Briefly, on the motion to seal, I note that Patent Owner has
`opposed it. The material they're looking to un-redact that we had proposed
`to redact reflects confidential research done by our client. The fact that it's
`research relating to a gravity feed system does not make it not confidential,
`does not make it public.
`
`
`JUDGE KINDER: Does the time impact that? I mean, it was
`research that was done over 15 years ago.
`
`
`MS. QUINN: It does not impact that, because the research, if
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`you look at what's actually in there, is still as current today. It's consumer
`impressions on how they shop the soup aisle, consumer impressions on what
`they think about gravity feed dispensers and how that impacts their shopping
`experience. People haven't changed that much in 10 or 15 years that that
`research would be irrelevant.
`
`
`JUDGE KINDER: But the research was before gravity feed
`dispensers were really widespread and now they're widespread. So I'm just
`having trouble understanding how that research is that valuable of a business
`secret today.
`
`
`MS. QUINN: Sure. The fact that gravity feed dispensers are
`more known now than they were before I'm not sure really bears on the
`motion to seal. So, gravity feed dispensers were out there in the market
`before, we've seen all the prior art that they were known. The research in
`particular that we have proposed to redact and that Patent Owner wants to
`un-redact relates to how much the use of gravity feed dispensers had a
`particular impact on sales of condensed soups, on sales of store brands, on
`sales of soup as a whole, and those consumer impressions and those
`particular impacts on our client's business is confidential information.
`
`
`JUDGE KINDER: Okay, understood.
`
`
`JUDGE GERSTENBLITH: Just one more question about that.
`Petitioner proposed redactions for the exhibits and gave them to Patent
`Owner to file, and were they filed?
`
`
`MS. QUINN: I don't believe they were, Your Honor.
`
`
`JUDGE GERSTENBLITH: Okay.
`
`
`MS. QUINN: I believe that was -- the panel had instructed
`Patent Owner to file them and we have not seen them --
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`JUDGE GERSTENBLITH: Okay.
`
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`MS. QUINN: -- on the record yet.
`
`
`JUDGE GERSTENBLITH: Okay. Would you like me to set
`
`
`the timer for any particular amount of time or give you a heads-up when --
`
`
`MS. QUINN: If you wouldn't mind setting it for 25 minutes
`and then I'll reserve 10 for rebuttal? Thank you.
`
`
`JUDGE GERSTENBLITH: I'm going to take us down slightly,
`just because we already had begun --
`
`
`MS. QUINN: Fair enough. Thank you.
`
`
`JUDGE GERSTENBLITH: Okay, whenever you're ready.
`
`
`MS. QUINN: Great. Thanks very much, Your Honor.
`
`
`So the patent at issue today, U.S. Patent 8,827,111, is directed
`to a display rack, a gravity feed display rack for cans. I've borrowed here,
`with counsel's consent, one of their demonstrative slides, which is just an
`exhibit figure from the 111 Patent. So, broadly stated, the patent is directed
`to a gravity feed dispenser that has two loading shoots behind a door with a
`label area, and then the -- it's a loading dispenser for cans, then the cans
`come out the bottom, two dispensing ends at the bottom, an upper and a
`lower one, and, as described in the patent, a consumer can remove a can
`from the lower dispensing and return it by placing it on top of the can that
`falls into the dispensing end into that place.
`
`
`There's only one claim that's really at issue before us today and
`that's independent claim 27. There are certain dependent claims that are also
`at issue in this IPR, dependent claims 28 and 32 through 35, but Patent
`Owner has not addressed any of our arguments that were specifically
`directed to those dependent claims. So, if claim 27 is invalided, the other
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`claims should fall as well. So we're going to focus today just on claim 27,
`with the panel's permission.
`
`
`In the institution decision, the panel organized claim 27 into 11
`limitations, and those are set out here on our Exhibit 1069, which is our
`demonstrative exhibit at page 3.
`
`
`We're talking about two pieces of prior art today, the first is
`Weichselbaum, U.S. Patent 2,382,191. Weichselbaum teaches a gravity feed
`dispenser with one loading chute and two dispensing ends. And then Nesso,
`European patent 490,693, which teaches a dispenser for cylindrical objects
`with two nested chutes with two loading ends and two dispensing ends, with
`the loading ends behind a door.
`
`
`Going back to claim 27, Patent Owner does not dispute that the
`combination of Weichselbaum and Nesso meets limitations 1 through 8. So
`we've laid out in our petition at pages 28 to 31 and 56 a chart showing how
`that combination of Weichselbaum and Nesso meets all the elements of
`claim 27. Nesso essentially brings the second loading end and the door to
`the device of Weichselbaum.
`
`
`So there's no dispute for purposes of today as to limitations 1
`through 8. We're really just focused on limitations 9, 10 and 11. Limitation
`9, for ease of reference, I'll refer to as the return feature. That is the feature
`that allows a consumer to remove a can from the bottom dispensing end and
`then replace the can back on top of the can that's sitting there. And
`limitations 10 and 11 together I'll refer to as the forward edge portion
`feature, which is the claim element directed to certain features and attributes
`of the forward edge portion of the side panels of the gravity feed dispenser.
`
`
`So with Claim 27, if you -- I want to talk first about the
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`propriety of combining Weichselbaum and Nesso, because once you get past
`the threshold that in order to combine Weichselbaum and Nesso in the ways
`that we proposed, it takes limitations 1 through 8 off the table, and then all
`you're left with is 9, 10 and 11, and Weichselbaum clearly teaches those
`three limitations.
`
`
`So, on the motivation to combine, in the institution decision
`Your Honors agreed that a person of ordinary skill in the art would have
`been motivated to combine the Weichselbaum and Nesso references for at
`least two reasons. First, adding the second loading chute and the hinged
`door in front of the loading area of Nesso, that adding that second loading
`chute would allow for two different types of canned products to be
`dispensed. It also is a way to increase the capacity of the dispenser while
`using still roughly the same amount of shelf space. So the Board in its
`decision found that motivation and also noted that Weichselbaum expressly
`talks about the fact that its device is intended to fit normally on the shelves
`in a grocery store and that Patent Owner had not come forward with
`anything to show that adding the second loading chute of Nesso would
`defeat that objective.
`
`
`Now that the briefing is done and that the evidence is in, Patent
`Owner has still not come forward with any evidence to call into question
`those findings that the Board included in its institution decision. Patent
`Owner has presented no evidence to suggest that a person of ordinary skill
`would not have been motivated to combine the references in order to
`dispense cans of different size or increase loading capacity. And there's no
`evidence that the combination of Weichselbaum with the second chute of
`Nesso would not fit on a store shelf.
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`Instead, Patent Owner argues that modifying Weichselbaum
`
`
`with the additional loading chute of Nesso would be inconsistent with the
`operation and stated objectives of Weichselbaum. And they focus
`particularly on one of the stated objectives of Weichselbaum, which is that
`the way that Weichselbaum moves products through its dispenser from
`loading to dispensing end with a guide-and-lock function of the cans, 35.
`
`
`There are a couple problems with Patent Owner's argument.
`The first is that when you look at the stated objects of Weichselbaum -- and
`there are six -- the proposed combination of Weichselbaum and Nesso
`undisputedly meets nearly all of them. So, for example, the primary object
`of Nesso -- I'm sorry, of Weichselbaum, which is in column 1 -- and I'll
`paraphrase here, but the primary object of Weichselbaum is to move goods
`along so that cans don't linger on the shelf, a first-in-first-out principle.
`
`
`A further object of Weichselbaum is that the device should fit
`normally between grocery store shelves. Patent Owner argues that the
`Weichselbaum-Nesso combination would add height to the device, but they
`never actually argue and they put in no evidence to show that that added
`height would keep the device from fitting on a grocery store shelf.
`
`
`The third stated object of Weichselbaum is that the contents of
`the dispenser will always be accessible no matter how many cans are left.
`There's no dispute that the combination of Weichselbaum and Nesso would
`do that.
`A further stated objective of Weichselbaum is that the device
`
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`has no moveable parts. There's no dispute here that the combination of
`Weichselbaum and Nesso would meet that.
`
`
`The fifth stated objective of Weichselbaum is that the device
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`may be able to accommodate the entire contents of a case of cans. That
`stated objective is not disputed in terms of the proposed combination.
`
`
`And so it's only the last, the sixth and last stated objective of
`Weichselbaum that Patent Owner claims is not met, which is the use of that
`guide-and-lock function to move cans through the dispenser.
`
`
`First, we've shown in our reply on page 19 that in fact the
`combination of Weichselbaum and Nesso can meet that guide-and-lock
`function. So our expert, Steven Visser, has testified that when you use
`smaller cans in a Weichselbaum dispenser that that guide-and-lock function
`is still met. And again, that's on page 19 of our reply brief, and that's
`working with the proposed combination of Weichselbaum and Nesso that
`Patent Owner has urged, which is just adding one loading chute and one
`loading -- and at the top and having a single chute at the back where the cans
`roll through.
`
`
`So, first, even under Patent Owner's hypothetical combination,
`that guide-and-lock feature is met, but regardless, whether the guide-and-
`lock feature is met by Patent Owner's combination or whether you stick with
`the combination that we actually propose and that the Board instituted on,
`which is simply adding the two-nested-chute concept of Nesso to our
`(indiscernible) we still meet all of the stated objectives, the primary and the
`further and still further stated objectives of Weichselbaum of moving cans
`through the dispenser, always having something available, nothing left
`lingering on the shelf, all of that is met and you don't need the guide-and-
`lock function.
`
`
`So the fact that one of the proposed combinations of
`Weichselbaum and Nesso doesn't operate in a guide-lock function does not
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`make the combination of Weichselbaum and Nesso improper. Patent Owner
`cites the Plas-Pak case for the proposition that a combination that would
`render a reference unsuitable for its intended purpose is improper, but this is
`not a Plas-Pak case and we believe that Patent Owner is citing it over-
`broadly.
`So in Plas-Pak, which is a nonprecedential opinion, the Federal
`
`
`Circuit noted that whether a proposed combination would render a reference
`unsuitable for its intended purpose is a fact to consider when you're deciding
`whether a person of ordinary skill would be motivated to combine
`references. That's one factor in deciding whether that person of ordinary
`skill actually would be motivated to try and combine those references.
`
`
`Well, here, when you look at the evidence as a whole, we have
`two reasons, which the Board instituted on and which Patent Owner hasn't
`disputed, why a person of ordinary skill would be motivated to combine the
`Weichselbaum and Nesso dispensers to dispense cans of different size and to
`add increased capacity, and we have evidence that the combination -- or at
`least there's no dispute that the combination would meet five of the six stated
`objectives of Nesso -- of Weichselbaum and in all likelihood, according to
`our expert, would meet the sixth as well.
`
`
`So the Plas-Pak case really does not come into play here. This
`is a case where there's clear evidence of a motivation to combine, there's
`clear evidence that the combination is consistent with the intended purpose
`of both Weichselbaum and Nesso. So, with that, the motivation to combine
`is proper, and once you get past that hurdle of the motivation to combine,
`again, limitations 1 through 8 of claim 27 are off the table and we're left
`talking about limitations 9 through 11.
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`JUDGE GERSTENBLITH: So, Ms. Quinn, let me ask you, do
`
`
`you -- my understanding is that Petitioner agrees that Weichselbaum would
`need to be modified additionally with respect to the size of the cans shown
`in the figure 3.
`
`
`MS. QUINN: So, yes. So for purposes of meeting the return
`feature -- actually, Your Honor, you're going to limitation 9, which is where
`I was headed -- so you would have to modify -- well, you wouldn't have to
`modify the Weichselbaum dispenser necessarily, all you would have to do is
`load smaller cans into it in order to meet that return feature.
`
`
`JUDGE GERSTENBLITH: And what is the reason in the
`record, if any, for modifying the size of the cans?
`
`
`MS. QUINN: Weichselbaum itself, Your Honor. So
`Weichselbaum itself at column 4, lines 29 through 32, expressly states,
`among other things, that the device can be made any size and it can be made
`any size to accommodate different size cans. That's Weichselbaum's own
`express teaching in its specification.
`
`
`JUDGE GERSTENBLITH: So does that say to change the size
`of the cans or does that say to change the size of the device if you're
`changing the size of the can?
`
`
`MS. QUINN: That's a fair question, Your Honor. I think that -
`- I'll pull up the language here. So the specific language is, "Obviously, the
`device may be made of any desired type of material or in any desired size to
`accommodate varying sizes of cans to facilitate the dispensing thereof."
`
`
`I'd argue, Your Honor, that that certain contemplates and would
`suggest to a person of ordinary skill the concept of introducing cans of
`different size into the device, and then possibly changing the device, the size
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`of the device, if needed, to accommodate those cans.
`
`
`JUDGE KINDER: It seems to me that it requires a direct
`proportionality. If you're changing the size of the can, you would
`correspondingly change the size of the device to match the cans, so the
`proportionality would be the same.
`
`
`MS. QUINN: Possibly, not necessarily always, depending on
`the size of the can. So our expert, Mr. Visser, addressed that a bit.
`
`
`The guiding principle there that Weichselbaum teaches is that
`you don't want the shelf length to be a direct multiple of the diameter of the
`can, because then you'll get cans wedged in the back and they won't roll
`through. So if your smaller cans do not have that direct relationship that it's
`not a multiple of the diameter of the can, you might not need to adjust the
`device at all, but if the shelf length that you're starting with is a multiple of
`the diameter of the can, then, yes, you make the shelf shorter or longer, and
`Weichselbaum teaches that.
`
`
`JUDGE KINDER: So, just to make sure I understand, the
`column where we're reading in Weichselbaum that says "the device may be
`made of any desired size to accommodate varying size cans," you talked
`about the expert referring to possibly changing the device, possibly not
`changing the device, so is it equally reasonable that if a smaller size can
`were used one might change the device, one might not, we don't know, is
`that right?
`MS. QUINN: As a real-world answer, you put the cans in and
`
`
`you see if they roll through, and if they don't roll through, you make the
`device shorter or longer.
`
`
`JUDGE KINDER: So if one were to read Weichselbaum as
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`saying you can change the size of the device to accommodate different size
`cans, and so if you change the size of the can to make it smaller and
`Weichselbaum isn't saying anything in particular about what you might
`change about the device, but if one reads that to say, okay, I'm going to
`make the device smaller, I have to make the chutes smaller, the distance
`between the stops smaller, and essentially shrunk it accordingly
`proportionate to the size of the can, we wouldn't end with the claim
`limitation, right? Because we'd end up with essentially the same figure we
`have now, which isn't necessarily drawn to scale, but the proportions would
`be the same as what we're looking at in figure 3?
`
`
`MS. QUINN: So if I understand Your Honor correctly, you're
`saying, if you shrink all of Weichselbaum proportionately to address a
`smaller can, that that shrunken device would not meet the return feature of
`limitation 9?
`
`
`JUDGE KINDER: Right.
`
`
`MS. QUINN: So I understand Your Honor's point. I think that
`is one possibility, but I think that the broader concept is that Weichselbaum
`teaches the use of smaller cans. Depending on the size of the can, you don't
`need to do anything to the device, just throw smaller cans in there and with
`no adjustments to the device at all, as our expert has shown, you get the
`return feature solely by introducing smaller cans into the device.
`
`
`JUDGE KINDER: So does Weichselbaum ever teach using
`smaller cans without changing the device?
`
`
`MS. QUINN: I think it comes back to how you would parse
`that language. So it says, "The device may be made of any type of desired
`material or in any desired size," so arguably the size that's shown in the
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`figure or any other size, "to accommodate varying sizes of cans."
`
`
`What Weichselbaum teaches is, here's the device, you can put
`smaller cans in it; we contemplate loading smaller or larger cans in. The
`guiding principle is that proportionality between the diameter of the can and
`the length of the shelf. So they teach -- Weichselbaum teaches that you can
`load smaller cans or larger cans into the device, and it says, if you do that,
`just make sure the diameter of the can -- that the shelf is not a multiple of the
`diameter of the can, and a person of ordinary skill, as our expert has
`testified, it's well within the knowledge of a person of ordinary skill to know
`to adjust the shelf length to meet those objectives.
`
`
`JUDGE KINDER: Thank you.
`
`
`MS. QUINN: So, interestingly, Your Honors, given the
`discussion we just had, the Patent Owner actually has not disputed that if
`you put smaller cans into Weichselbaum you will achieve that functionality,
`that return feature, that return functionality. Instead, what Patent Owner has
`argued is that you just shouldn't be putting smaller cans in Weichselbaum at
`all. They argue that Weichselbaum teaches away from using smaller cans,
`because it also teaches the importance of the relative size of the can versus
`the shelf, which we've talked about, and they also argue that the return
`feature limitation, that limitation 9 of claim 27, is actually not -- that it
`actually requires a particular structure and that it's not a functional
`limitation, as the Board found in its institution decision.
`
`
`We think that latter argument is wrong just as a matter of law
`under In re Schreiber. I think the Board got that right in its institution
`decision and we've addressed that in our reply brief. But, again, once you
`get to the point that Weichselbaum contemplates introducing smaller cans --
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`again, or larger ones -- the Patent Owner has not disputed, has not
`challenged, has not argued that the use of smaller cans would not meet that
`return feature functionality.
`
`
`So I think the real question here on limitation 9 is whether the
`Board accepts that Weichselbaum contemplates -- that Weichselbaum
`teaches the use of smaller cans, because if that proposition is accepted, then
`there doesn't seem to be any dispute, there's certainly no dispute in the
`record that doing so would meet the return feature functionality of limitation
`9.
`So with a few minutes left, I want to touch briefly --
`
`
`JUDGE OBERMANN: Ms. Quinn, may I just ask --
`
`
`MS. QUINN: Yes, of course.
`
`
`JUDGE OBERMANN: -- you mentioned In re Schreiber, and I
`
`
`notice that the Patent Owner distinguishes that case based on the fact that
`your claim requires cylindrical products but in Schreiber the did not require
`the popcorn. What's your response to that?
`
`
`MS. QUINN: So our response to that, Your Honor, is twofold.
`First, the fact that the claim requires a plurality of cylindrical objects that are
`generally the same size, it still doesn't describe any particular structure for
`the return limitation that we're talking about.
`
`
`Second, the fact that the popcorn in In re Schreiber was of
`indeterminate size does not seem to have had any bearing on the Federal
`Circuit's analysis or reasoning in that case. There's nothing to suggest that if
`the claimant had said popcorn having a particular size is --
`
`
`JUDGE OBERMANN: The popcorn had to be able to leave the
`oil can.
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`MS. QUINN: The popcorn had to be able to leave the oil can,
`
`
`so -- but, again, not of a particular size. But what the Federal Circuit
`focused on was if you're defining a claim feature in functional language by
`virtue of what it does rather than describing the structure itself, that's the real
`issue. Have you described a particular structure? Have you defined what
`the structure looks like and in structural words or have you just defined it by
`saying here's how it works?
`
`
`And so in this case, when you look at that claim limitation -- it's
`a little tough to read, but claim limitation 9 does not describe a structure.
`Instead, what it says is that the distance between the stock structures of the
`first and second chute is sufficient for one of the products removed to be
`replaced. They're describing the functionality rather than any particular
`distance. They're not measuring the distance in proportion to any other --
`you know, in terms of can diameter or anything else. So there's no structural
`definition in limitation 9.
`
`
`JUDGE OBERMANN: Is there any intrinsic support for your
`position that a person of ordinary skill would have -- recognize the
`desirability of changing the can size?
`
`
`MS. QUINN: Of changing the can size? So, again, I think that
`comes back to Weichselbaum's teaching that the device of Weichselbaum
`can be used to accommodate varying sized cans. So it's there in
`Weichselbaum itself. It's there in the testimony that we put in from our
`expert in --
`JUDGE OBERMANN: That's not intrinsic.
`
`
`MS. QUINN: Oh, I'm sorry. I had missed the word intrinsic,
`
`
`my apologies, Your Honor. I don't recall there being intrinsic evidence on
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`that particular point. I can double check that in the break, but I don't recall
`intrinsic evidence in the 111 Patent prosecution history.
`
`
`JUDGE OBERMANN: Well, this is in the response of Patent
`Owner that he says none of Weichselbaum, Nesso or Mellion references hint
`of the desirability or need to replace the removed article and that the sole
`basis for your position is really extrinsic.
`
`
`MS. QUINN: So they don't specifically discuss the return of a
`removed article. Mellion, certainly -- if you look at the structure of Mellion,
`that feature is there. So that would be evidence within Mellion itself. But
`the -- I'm sorry, maybe I've lost the thread of your question, Your Honor.
`
`
`JUDGE OBERMANN: No, that's okay. I'm just trying to get a
`grip on your reason to, you know, modify in that way and I'm wondering if
`whether there's some -- there's a real hook in the intrinsic evidence or
`whether you're really relying on your expert to find it.
`
`
`MS. QUINN: Okay, that's a fair question, Your Honor, but I
`think that it comes -- so the -- I'm sorry, so it's the motivation to create -- to
`put in that return feature?
`
`
`JUDGE OBERMANN: To do what you're doing to reach the
`invention.
`MS. QUINN: To reach the invention, okay. So I think the
`
`
`motivation -- let me gather my thoughts so I can answer this correctly, Your
`Honor.
`So the question is, is there a motivation specifically to create a
`
`
`return feature. I'm not sure that that's really been argued or addressed --
`
`
`JUDGE OBERMANN: Well, I think it's your burden in your
`prima facie case to establish the reason to arrive at the claim.
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`MS. QUINN: Right. So the motivation is the reason to arrive
`
`
`at the claim itself, we've talked about, which is to be able to dispense cans of
`dif
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