UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`CAMPBELL SOUP COMPANY, CAMPBELL SALES COMPANY,
`AND TRINITY MANUFACTURING, LLC,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`_________
`
`Case IPR2017-00091 (Patent D621,645 S)
`Case IPR2017-00094 (Patent D612,646 S)
`___________
`
`
`
`
`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, LLC,
`Petitioner,
`
`v.
`
`GAMON PLUS, INC.,
`Patent Owner.
`_________
`
`Case IPR2017-00091 (Patent D621,645 S)
`Case IPR2017-00094 (Patent D612,646 S)
`___________
`
`
`
`
`Before GRACE KARAFFA OBERMANN, BART A. GERSTENBLITH,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`
`
`
`
`
`
`Case IPR2017-00091 (Patent D621,645 S)
`Case IPR2017-00094 (Patent D612,646 S)
`
`
`
`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 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 Tuesday, January 23,
`
`2018, commencing at 10:41 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
`
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`Case IPR2017-00091 (Patent D621,645 S)
`Case IPR2017-00094 (Patent D612,646 S)
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE GERSTENBLITH: Good morning, everyone. We are
`
`
`here for a hearing in IPR2017-00091 and IPR2017-00094, 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, will you please come up to the podium
`and enter your appearance for the record.
`
`
`MR. DONOVAN: This is Gerard Donovan and with me today
`is Tracy Quinn for the Campbell Petitioners. Also with us today is Darren
`Mogil for the Trinity Petitioner and a representative from our client,
`Campbell, Kelly Grady.
`
`
`JUDGE GERSTENBLITH: Thank you. And I would just
`confirm that either everyone here is under the protective order or it's not an
`issue for those here.
`
`
`MR. DONOVAN: That's correct, Your Honor. And Mrs.
`Quinn will be presenting arguments.
`
`
`JUDGE GERSTENBLITH: Thank you.
`
`
`MR. TIAJOLOFF: Good morning, Your Honor. My name is
`Drew Tiajoloff, I am here for Gamon Plus, the Patent Owner in this case,
`nobody else is present.
`
`
`JUDGE GERSTENBLITH: Thank you. If either side brought
`a copy, has a copy of its demonstratives, feel free to hand that to the court
`reporter and to us. We also have the electronic version.
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`(Pause.)
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`
`JUDGE GERSTENBLITH: Thank you.
`
`
`Before we begin, let me just confirm that we have three pending
`
`
`motions. We have Petitioner's motion to exclude, Patent Owner's motion to
`exclude, and Petitioner's motion to seal. Am I missing anything from
`Petitioner?
`MS. QUINN: I don't believe so, Your Honor.
`
`
`JUDGE GERSTENBLITH: Thank you.
`
`
`Am I missing anything from Patent Owner?
`
`
`MR. TIAJOLOFF: No, Your Honor.
`
`
`JUDGE GERSTENBLITH: Thank you. We set forth the
`
`
`procedure for today's hearing in our trial order, which is Paper 62 in each
`case. Each party will have 40 minutes of total argument time.
`
`
`We will begin with Petitioner, who will start with its case in
`chief and may also address either of its motions. Petitioner may reserve time
`for rebuttal. And after Petitioner presents its opening arguments, it will be
`Patent Owner's turn to respond to those arguments and raise any argument
`that it wishes on its motion to exclude. At that time, Petitioner may use its
`rebuttal time to respond to arguments raised by Patent Owner directed to
`Petitioner's case in chief, and also respond to any arguments that Patent
`Owner raises on its motion to exclude.
`
`
`Now, Patent Owner has an opportunity to reserve time as well.
`If Patent Owner chooses to reserve time, that time may only be used to
`respond to arguments raised by Petitioner during its rebuttal time directed to
`Patent Owner's motion to exclude. This is a little bit, I don't want to say
`tricky, but essentially if Petitioner -- if Patent Owner discusses its motion to
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`exclude when it's first at the podium and Petitioner responds to that motion,
`then Patent Owner will have an opportunity to respond. So -- however, if
`the Petitioner does not respond to Patent Owner's motion to exclude, then
`Patent Owner only has the one opportunity to present argument.
`
`
`Does anybody have any questions about that process, from
`Petitioner?
`MS. QUINN: No, Your Honor.
`
`
`JUDGE GERSTENBLITH: From Patent Owner?
`
`
`MR. TIAJOLOFF: No, Your Honor.
`
`
`JUDGE GERSTENBLITH: Okay. I have a timer here, I can
`
`
`set it for any time you wish to give you a reminder. When you come up to
`the podium, just let me know. And, Ms. Quinn, whenever you're ready, you
`may proceed.
`
`
`MS. QUINN: Thank you, Your Honor.
`
`
`I may be going without the demonstratives, as --
`
`
`(Pause.)
`
`
`JUDGE GERSTENBLITH: We have them here also --
`
`
`MS. QUINN: Yes.
`
`
`JUDGE GERSTENBLITH: -- if you have -- do you still have a
`paper copy?
`MS. QUINN: I do, Your Honor. So it probably makes sense
`
`
`(indiscernible) thank you, Your Honor. I'd like to reserve ten minutes for
`rebuttal.
`JUDGE GERSTENBLITH: Okay.
`
`
`MS. QUINN: We are happy to rest on our papers on the
`
`
`motion to exclude. I don't know if the panel wants to hear our issues related
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`Case IPR2017-00094 (Patent D612,646 S)
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`to the motion to seal at this time.
`
`
`JUDGE GERSTENBLITH: Whatever you prefer, but we
`understand Petitioner’s position.
`
`
`MS. QUINN: Okay. Thank you, Your Honor. In that case, I'll
`move ahead.
`
`
`So we are dealing here with two design patents, U.S. Patent
`Nos. D621,645 and 612,646. The sole figure from each of those patents is
`shown on page 2 of our demonstrative exhibit, Exhibit 1023. And as the
`panel will see, the 645 patent is titled, "A Gravity Feed Dispenser Display,"
`claim -- its sole claim recites, "The ornamental design for a gravity feed
`dispenser display as shown and described." And the 646 patent similarly is
`titled, "A Gravity Feed Dispenser Display," and recites, "The ornamental
`design for a gravity feed dispenser display as shown and described."
`
`
`There's a sole figure in each patent and, as the panel can see on
`page 2 of Exhibit 1023, each figure is drawn in a combination of broken and
`solid lines, the bulk of the drawings being in broken lines.
`
`
`Each patent has a clear disclaimer on it. On page 3 of Exhibit
`1023 is the disclaimer in the 645 patent, which states that "the broken line
`showing is for the purpose of illustrating portions of the gravity feed
`dispenser display and forms no part of the claimed design." And on page 4
`of Exhibit 1023 is the disclaimer from the 646 patent that "the broken line
`disclosure in the views is understood to represent the article in which the
`claimed design is embodied."
`
`
`JUDGE KINDER: Let me ask a question real quick.
`
`
`MS. QUINN: Of course, sure.
`
`
`JUDGE KINDER: Why do you call it a disclaimer? Is that
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`language used? And that's kind of getting to a lot of the Patent Owner's
`objections, which you seem to have shifted from saying here's what the
`claim's scope is to saying, well, certain things are disclaimed.
`
`
`MS. QUINN: Okay. I think that it's --
`
`
`JUDGE KINDER: Do we need that language? Why do we
`need to say it's disclaimed?
`
`
`MS. QUINN: I don't think we need -- I'm happy to use
`different language, Your Honor. That language to me was sort of a
`descriptor of what the broken line disclosure is, but I think we can just as
`easily say that the -- each patent makes clear that the only thing that is
`claimed is that which is shown in solid lines. So if that helps resolve that
`concern, I'm happy to speak to it that way instead.
`
`
`JUDGE KINDER: It seems like, you know, Patent Owner did
`raise a point that you're making kind of a disclaimer argument, which in kind
`of a prosecution history context disclaimer has a certain --
`
`
`MS. QUINN: Sure.
`
`
`JUDGE KINDER: -- meaning in the art. I don't see it that way.
`I think the description lays out specifically what is and what is not claimed.
`There's a little bit of difference in the descriptions, as you're probably aware.
`In the 94 case, the description actually goes into a little bit more detail about
`the boundaries and I think that's the issue -- one of the issues the Patent
`Owner has is that you're kind of changing your tune, so to speak, on how the
`boundaries are claimed.
`
`
`MS. QUINN: And to be honest, Your Honor, I really hadn't
`intended to do that. What we really are focusing on is claim scope. So I'm
`happy to talk about what's claimed, because the only thing that's claimed is
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`what's shown in solid lines. And so if that resolves that issue, I'm more than
`happy to use that language going forward and to make clear we weren't
`arguing substantively anything different than that.
`
`
`Focusing on what actually is claimed, if you look at slides 5 and
`6. So in slide 5, you see -- these are drawings, images taken from the
`institution decision where the claimed elements are highlighted in blue for
`the 645 and 646 patents. And then if you look at page 6, these are images
`from our reply, which, again, just to really focus the panel's attention on
`what is claimed, those images show the figures from 645 and 646 patents
`with the broken line portions of the drawings removed.
`
`
`So the issue here really I think for the Board when you're
`looking at these is, is the claim scope really -- is the claim scope going to be
`construed to mean what the patentee said in the patent, that they're claiming
`what's shown in solid lines, which is what appears on page 6, because if the
`answer to that is yes, I think that the walking through of the prior art is a
`pretty straightforward exercise, because what's claimed really is not
`particularly unique, novel or ornamental. But if the answer is going to be
`no, that the claim scope somehow exceeds what's shown on page 6, then
`we're going to have to talk about where you're going to -- where to draw that
`line, so to speak. Not to play with words too much, but if the claimed -- if
`the claim scope is going to be more than what's shown in solid lines, where
`are you going to draw those boundaries and where is the public being put on
`notice of where those boundaries should be drawn if it's not what the Patent
`Owner specifically said in its patents.
`
`
`As we'll note, there obviously is a difference between what
`Petitioners say should be deemed to be the claim scope and what Patent
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`Owner argues about, but as you'll see as we go through this, to a large extent
`it's almost a moot point, because even accepting for the sake of the argument
`Patent Owner's description of its claim scope, the prior art still reads -- is
`almost perfectly aligned with it.
`
`
`JUDGE KINDER: Let me ask one question --
`
`
`MS. QUINN: Sure.
`
`
`JUDGE KINDER: -- about what you just said. The scope of
`the claim clearly is what is not in broken lines, but broken lines are used in
`the design patent context to place the claim scope into context.
`
`
`MS. QUINN: Uh-huh.
`
`
`JUDGE KINDER: Here you're kind of cherry-picking, if you
`will, just the non-broken lines out and I don't know if that's necessarily
`proper, because you lose the context of the overall invention, which is a
`gravity feed dispenser display, and -- if you can go into that a little bit, and
`then also the spatial relationship is still there. You still have portions
`claimed in relation to one another in a spatial relationship and the broken
`lines -- you know, I've had several cases, design patent, and they're there to
`put things into context, when you pull this out, to me it takes it out of that
`context.
`MS. QUINN: Okay. So going back to page 5, which shows the
`
`
`claimed portion in context -- I mean, I agree, the broken lines provide
`environmental context, they show the person of ordinary skill that this -- that
`the context in which this design appears is the context of a gravity feed
`dispenser. The point of page 6 is really, as we're talking about whether or
`not the actual claim scope is taught by the prior art, we really should be
`focusing on the claimed elements as opposed to the environmental context.
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`So we can alternate or look at whichever you're more comfortable with, page
`5 or page 6, but page 6 is really highlighting and calling into focus the
`specific claim elements.
`
`
`In terms of the relationship between what's claimed, I agree, so
`-- but what's shown there is a label area above a can or, in the case of the
`646 patent, a can behind stops. So there is that proportionality, the label area
`does appear above the can, but beyond that there's no specific claim as to
`how high it is, how far it is above the can, how close it is to the can, how
`narrow, how wide. Those are the elements of proportionality that we say are
`not captured in the claim scope.
`
`
`Does that answer your question, Your Honor?
`
`
`JUDGE KINDER: Yes, thank you.
`
`
`MS. QUINN: Okay. So the two pieces of prior art that we're
`talking about are shown on pages 7 and 8, U.S. Patent D405,622, the Linz
`patent, and Great Britain Patent Application 2,303,624, the Samways patent.
`
`
`So Linz, which is shown on page 7, which was art of record,
`but not applied by the examiner in prosecution, is titled, "A display rack,"
`claims an ornamental design for a display rack. And as shown in figure 1 of
`Linz, it shows a top portion, a label area, and a bottom portion, a display
`area, for a cylindrical object that would be lying on its side with stops
`positioned --
`
`
`JUDGE KINDER: When you stay a cylindrical object --
`
`
`MS. QUINN: Yes.
`
`
`JUDGE KINDER: -- that would be lying on its side, is there
`anything in Linz to suggest it has to be a perfect cylinder lying on its side?
`
`
`MS. QUINN: A perfect cylinder lying on its side, probably not
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`in those specific words, but what you have in Linz is the teaching that, first,
`it's a display rack. If you look at the dispensing area of the rack, it's a
`dispensing area that is shaped to hold what appears to be a cylindrical object
`on its side.
`JUDGE KINDER: Patent Owner raises, which I think in
`
`
`hindsight is kind of an interesting theory, in that it could be a number of
`differently sized and shaped objects that are meant to be displayed. It could
`be, for example, like a spool of thread that has cylinders on the side that it's
`smaller diameter in the middle. I mean, why -- my point is, what do you
`have to do to get to the point where you know that it's a cylinder there?
`There's nothing in Linz that tells you the design and shape of the object to be
`displayed.
`MS. QUINN: I think it would be clear to a person of ordinary
`
`
`skill, to a designer of ordinary skill in the art that the object to be displayed
`there is a cylinder lying on its side, including, as Your Honor pointed out,
`from the environmental context showing how the gravity feed dispenser
`works that objects are loaded into the top and slide down around the back,
`down that chute, and then come out through the dispensing area, that a
`designer of ordinary skill would understand the general shape of what that
`object should be and I believe --
`
`
`JUDGE KINDER: Could it be a differently sized and shaped
`object?
`MS. QUINN: So, in other words, just a smaller one, as
`
`
`opposed to a soup can, for example?
`
`
`JUDGE KINDER: A different shape. Could it be a different
`shaped object besides a cylinder?
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`JUDGE GERSTENBLITH: For example, circular?
`
`
`MS. QUINN: I think that between the display area that's shown
`
`
`and the context suggested by the broken lines, I'm not sure that a designer of
`ordinary skill would see a sphere or a circle being used that, and certainly
`our expert has opined to the contrary and I don't believe there's been any
`evidence from Patent Owner suggesting that, that that's how a designer of
`ordinary skill would understand Linz.
`
`
`JUDGE OBERMANN: Don't you need a reference that is
`essentially the same as the drawing in the patent?
`
`
`MS. QUINN: So you need -- to be a primary reference, to be --
`
`
`JUDGE OBERMANN: To be a Rosen reference.
`
`
`MS. QUINN: -- to be a Rosen reference. So the design
`characteristics have to be basically the same, but as the Federal Circuit held
`in MRC Innovations, it doesn't have to be identical. If it were identical, then
`you wouldn't be doing an obviousness analysis in the first case.
`
`
`JUDGE OBERMANN: Do you have a case where an element
`like this was missing in the Rosen reference?
`
`
`MS. QUINN: So I will check the record for something
`specifically on that. What we have in MRC Hunter, it's not that it was
`missing; it was that it was affirmatively different. And the court there still
`found the reference to be a proper Rosen reference. So they were sweaters
`for dogs and one had, you know, a rounded collar, the other had a V-neck
`collar. They were made of different materials, there were different design
`elements in the stitching, so it's not even that something --
`
`
`JUDGE OBERMANN: It depicted the element a collar.
`
`
`MS. QUINN: Of a collar, but with different -- but a different
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`JUDGE KINDER: -- you're probably not going to win the day,
`
`JUDGE OBERMANN: Right.
`JUDGE KINDER: -- we can easily change our minds, so --
`MS. QUINN: Oh, I understand. I'm not suggesting the panel is
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`type of collar, different types of materials.
`
`
`JUDGE OBERMANN: So why does that take you there?
`Because here you do not have an object in that space.
`
`
`MS. QUINN: You do not have an object in that space, but as
`the Board found in its institution decision --
`
`
`JUDGE KINDER: If you're citing our institution decision --
`
`
`JUDGE OBERMANN: We didn't find -- yeah, that's not good
`enough --
`
`
`because --
`
`
`
`
`
`
`--
`JUDGE KINDER: And we know --
`
`
`MS. QUINN: -- bound by it.
`
`
`JUDGE KINDER: -- what we said, so --
`
`
`MS. QUINN: I'm sorry?
`
`
`JUDGE KINDER: We know what we said --
`
`
`MS. QUINN: Right.
`
`
`JUDGE KINDER: -- in our institution, so --
`
`
`MS. QUINN: Okay.
`
`
`JUDGE OBERMANN: That's okay. I wouldn't mind hearing
`
`
`which part you're --
`
`
`JUDGE KINDER: Go ahead, Ms. Quinn.
`
`
`JUDGE OBERMANN: Sorry.
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`Case IPR2017-00091 (Patent D621,645 S)
`Case IPR2017-00094 (Patent D612,646 S)
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`MS. QUINN: Sure. So --
`
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`JUDGE OBERMANN: But if it's just us saying that, I mean,
`
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`you don't have to use your time on it, but --
`
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`MS. QUINN: Sure. No, no, I understand, and I certainly
`understand the panel is not bound by the institution decision, but just to
`borrow the language from it to point Your Honor to it. So, it was page 18,
`that Linz depicts an ornamental design for a gravity feed dispenser display
`with various elements. Linz does not display a cylindrical object, but it
`defines a space for displaying such an object.
`
`
`JUDGE OBERMANN: That doesn't mean it's good enough
`under In re Rosen, you know, and I am concerned about that, because it
`seems to me here you're missing a third of the entire design that's claimed.
`
`
`MS. QUINN: Well, and that's why we understand the panel
`decided not to institute on anticipation or obviousness in view of Linz alone,
`because you do need to combine Linz with something else to arrive at that.
`
`
`JUDGE KINDER: So let me stop you right there. And I think
`that's a crutch for your position in that you have to combine Linz with
`something else. When you're looking at a Rosen reference -- and I'm
`referring to the Durling case by the Federal Circuit -- "before one can begin
`to combine prior art designs, one must find a single reference, a something
`in existence the design characteristics of which are basically the same." It
`seems to me that you have to modify this to get it to the point where it could
`be a Rosen reference by adding the cylinder.
`
`
`MS. QUINN: And let me clarify what I meant when I talked
`about having to combine. I was referring only to the next part of the
`analysis, which is once you have your primary reference, we understand --
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`we understood that the panel did not institute on Linz for anticipation or for
`obviousness alone in view of Linz because the obviousness analysis would
`require some combination to bring in the can.
`
`
`But for Linz as a primary reference, I understand Your Honor's
`point that the can is not there and you're questioning whether Linz can still
`be --
`JUDGE OBERMANN: To me, that's the big issue. I mean, I'm
`
`
`following what happens if you can rely on Linz as a Rosen reference, but I'm
`wondering whether we overlooked that in the decision to institute in
`whether, you know, you really made that out.
`
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`MS. QUINN: Okay. I mean, I can point the panel -- obviously,
`our expert opined on -- our expert opined on --
`
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`JUDGE OBERMANN: You know me and intrinsic evidence.
`
`
`(Laughter.)
`
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`JUDGE OBERMANN: I just wondered if you had an
`opportunity to find some case that might be comparable where a Rosen
`reference was a Rosen reference notwithstanding the fact that you had to
`import, you know, an entire element into the drawing.
`
`
`MS. QUINN: Standing here at the podium, Your Honor, I'm
`not recalling a case specifically on that point. I would say, though, that from
`what the Federal Circuit did in the case that we talked about --
`
`
`JUDGE OBERMANN: That's in your reply?
`
`
`MS. QUINN: It is, Your Honor.
`
`
`JUDGE OBERMANN: See, just based on what you say, it
`sounds like that's distinguishable because the Rosen reference in that case
`had the element, it was a collar, and the change came about by changing the
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`design of that collar that was in the Rosen reference.
`
`
`MS. QUINN: There also in that case, Your Honor, were
`different ornamental features that varied from reference to reference. So I
`don't know that the Federal Circuit focused so much on -- it was looking at
`overall visual impression.
`
`
`JUDGE OBERMANN: Right. And I do think that we need to
`be careful not to import the principles that apply to a utility patent, but I am
`concerned that there's a complete absence in Linz of the can that's required
`in the design.
`
`
`MS. QUINN: I understand, Your Honor. Again, I can just
`point you to Linz itself, which suggests to a designer of ordinary skill, it
`suggests the place for the can that a designer of ordinary skill effectively
`would look at that figure 1 of Linz --
`
`
`JUDGE OBERMANN: See, that's what is --
`
`
`MS. QUINN: -- and see the can.
`
`
`JUDGE OBERMANN: -- interesting to me. Is there anything
`that supports your view that the suggestion is enough to the ordinary artisan
`in this context of the Rosen reference?
`
`
`MS. QUINN: Right. And again, Your Honor, I don't have the
`specific case on point standing here that I know -- I understand what you're
`asking. I would just refer back to the guidance from the Federal Circuit that
`the primary reference does not have to be identical. They don't really say
`more than that about what it does or doesn't have to have, just it doesn't have
`to be identical, because that's why you're doing obviousness at all.
`
`
`JUDGE OBERMANN: I don't think the test is whether it's
`identical. I think my colleague cited -- was it Darling?
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`JUDGE KINDER: Durling.
`
`
`JUDGE OBERMANN: -- Durling, that doesn't seem to really
`
`
`support the idea that if it would have been obvious to an ordinary artisan it's
`okay to import in.
`
`
`MS. QUINN: Right. Your Honor, I do understand the point.
`Again, I think we have made the case that Linz suggests the appearance of
`the can, but I do -- I understand the question Your Honor is raising.
`
`
`JUDGE OBERMANN: All right.
`
`
`MS. QUINN: I think perhaps we can address that, since we
`have a time limit here, even just by looking at Samways, which takes that
`issue off the table. So Samways does teach the cylindrical object directly, it
`shows it, and Samways also is a primary -- is an appropriate Rosen
`reference.
`So Samways, which is shown on page 8 of Exhibit 1023, again,
`
`
`is a gravity feed dispenser specifically for cylindrical objects that creates
`basically the same visual impression. You have the label area over a
`dispensing area. Now, this -- and this, unlike Linz, does actually show the
`cylindrical objects.
`
`
`JUDGE KINDER: So Samways does show a cylindrical
`object, but Samways seems to be very distinct in the embodiments that are
`depicted, they're all the two-channel or two-can embodiments that are
`depicted in the figures, such as figure 3 of Samways. In our decision to
`institute, I think we took a step to say, well, the specification describes a
`single-track embodiment and we kind of combined those. Is that proper to
`get to a Rosen reference to combine in a single art reference?
`
`
`MS. QUINN: From a single reference, I think, Your Honor,
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`you can look at the teachings of the reference as a whole, looking at the
`reference in its entirety.
`
`
`JUDGE KINDER: But I think that's utility. Going back and
`looking at Durling, which I've already read, you know, Durling is pretty
`explicit. Before one can begin to combine prior art designs, you have to
`have something in existence. And what we did in the decision to institute,
`we didn't take something in existence, we -- I think we kind of speculated as
`to how it would come into existence and we combined distinct
`embodiments, and I'm not for sure if that's correct even for a single reference
`to get to a Rosen reference.
`
`
`Do you have any kind of theory or, you know, something we
`can look at where that's been done, you can pick and choose embodiments in
`a single reference?
`
`
`MS. QUINN: Well, the something in existence is described in
`claim 9 of Samways, that's the single-path design. I can provide column
`numbers, but I believe it's claim 9.
`
`
`JUDGE KINDER: Yeah, I'm familiar with the claim and --
`
`
`MS. QUINN: Right.
`
`
`JUDGE KINDER: -- you know, Patent Owner had a couple
`points there that it doesn't necessarily have to be a single track, it could be
`one or more, which was, you know, kind of basic claim construction, but
`even there you're not depicting that design. It leaves a lot to the imagination.
`I think in the decision to institute we certainly kind of envisioned that, but
`I'm still not convinced that's the correct approach, and can you touch on that
`a little more?
`
`
`MS. QUINN: Sure. Well, so the embodiment that we propose,
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`the one delivery path, which is on page 9 -- and maybe if you look at page 9
`in conjunction with page 8. So, page 8 shows figure 3 of Samways. Figure
`3 of Samways shows a dispenser, it has a single-label area over a dispensing
`area, and the dispensing area is divided for two cans to be dispensed.
`
`
`JUDGE KINDER: But what you've done here is you've made
`significant modifications to figure 3. And look at your slide itself, it says
`figures 3 and 5 modified to have only one delivery path. You know, Durling
`says you can't begin to combine or modify references to achieve a Rosen
`reference. So that's where we're held up at. Everything you're showing me
`here has already been modified. And, yeah, I mean, from a utility
`standpoint, I think this is the way you would do it, but from a design
`standpoint and what we're bound by, it's a close call here.
`
`
`MS. QUINN: So I think we have to read Durling in
`conjunction with MRC Innovations, which again the Federal Circuit was
`saying in MRC Innovations that the primary reference can have differences
`from -- you know, from the design that you're looking at. So, again, they
`were looking at dog sweaters that had, you know, V-neck versus a collar,
`they were made from different materials, one had mesh in certain places
`where the other did not --
`
`
`JUDGE OBERMANN: Was the mesh claimed?
`
`
`MS. QUINN: I will have to -- if Your Honor doesn't mind, I
`can go back and look specifically at how the claim language was worded. I
`know that was an element that the court was looking at in terms of assessing
`the overall visual impression. I believe that it was, but I can double check
`that.
`
`
`So the Federal Circuit is saying, you know, you can look at a
`
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`reference as a primary reference even though it differs in some respects from
`what you're comparing it to, so long as the overall visual impression has the
`same basic design characteristics. And so --
`
`
`JUDGE KINDER: Does a single -- in the claims we have kind
`of a single label area with a single cylindrical object below, is that
`substantially the same, though, as a dual-track system with a much wider
`label area that covers both tracks?
`
`
`MS. QUINN: Well, so, Your Honor, maybe to answer this, if
`you compare figure 3, unadorned figure 3 in -- on page 8 of our Exhibit
`1023, with page 9, which shows the modification, if you're looking at the
`overall visual impression of that design, you've got that label area. So the
`label area itself is not divided in terms of the visual impression it creates,
`right? It's got that covered door. The single-label area, the dispensing area
`is the same. Really the only thing that changes for purposes of the visual
`impression is that divider in the dispensing
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