UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`NIKE, INC.,
`Petitioner,
`
`v.
`
`JEZIGN LICENSING INC.,
`Patent Owner.
`__________
`
`Case IPR2017-00246
`Patent 6,837,590 B2
`__________
`
`Record of Oral Hearing
`Held: February 28, 2018
`__________
`
`
`
`
`Before KRISTEN L. DROESCH, PHILLIP J. KAUFFMAN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`NIKE, INC.,
`Petitioner,
`
`v.
`
`JEZIGN LICENSING INC.,
`Patent Owner.
`__________
`
`Case IPR2017-00246
`Patent 6,837,590 B2
`__________
`
`Record of Oral Hearing
`Held: February 28, 2018
`__________
`
`
`
`
`Before KRISTEN L. DROESCH, PHILLIP J. KAUFFMAN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00246
`Patent 6,837,590 B2
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`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`EDWARD SIKORSKI, ESQ.
`KIM VAN VOORHIS, ESQ.
`401 B Street
`Suite 1700
`San Diego CA 92101
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOSEPH ZITO, ESQ.
`RICHARD CASTELLANO, ESQ.
`1250 Connecticut Ave, NW
`Suite 200
`Washington DC, DC 20036
`
`and
`
`JEZ MARSTON, INVENTOR
`
`
`
`
`The above-entitled matter came for hearing on Wednesday, February
`
`28, 2018 at Tulane Law School, Weinmann Hall, 6329 Freret Street New
`Orleans, Louisiana 70118, beginning at 4:10 p.m.
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`Case IPR2017-00246
`Patent 6,837,590 B2
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`P R O C E E D I N G S
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`4:10 p.m.
`JUDGE DROESCH: Okay. We are on the record. This is the hearing
`for inter partes review 2017-00246 between petitioner, Nike Incorporated
`and patent owner, Jezign Licensing. Each party has 30 minutes for oral
`argument. Because petitioner has the ultimate burden, petitioner will
`proceed first with arguments followed by patent owner.
`Petitioner may reserve some time for rebuttal. Counsel for petitioner,
`you may begin when you're ready, and please introduce yourself and
`everybody else that is in attendance for your party.
`MR. SIKORSKI: Thank you, Your Honor. Edward
`Sikorski from DLA Piper on behalf of Nike, Inc. With me today is Kim Van
`Voorhis, assistant general counsel for Global IP litigation of Nike.
`If it please the court, I plan to reserve maybe ten minutes for rebuttal
`following the 30-minute presentation. As we were kindly introduced by the
`Tulane student body, we’d also like to thank the Tulane school for hosting
`this hearing. We’re here today to discuss U.S. patent number 6,837,590,
`which as the introductory remarks indicated, is entitled illuminated hat and
`shoe.
`
`As the panel no doubt knows, the claims themselves are directed
`solely to a shoe. The hat is not germane to today's discussion. I’ve got a
`slide presentation. I’ll endeavor to identify which slide I’m on during the
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`course of the presentation. If the court has any questions, I’m glad to be
`interrupted.
`Here on slide 2, what I’ve offered for the court, or for the board,
`excuse me, is generally an overview of where we are today. As you know,
`the board’s initial decision indicated that we, Nike, have a reasonable
`likelihood of prevailing as to the unpatentability of Claims 1, 2, and 3. In
`other words, all the claims of the 590 patent. It is our position that the
`Board's initial decision is correct, and we would urge that the Board
`continue to find, on the bottom half of slide 2, Claims 1 and 2 anticipated by
`the Shkalim reference. Claims 1 and 2 anticipated by the Chiaramonte
`reference, Claim 1 anticipated by the Chien reference, and Claim 3, which is
`a separate independent claim obvious for any of those three references in
`view of Powell.
`The board in its decision was also asked and rendered a decision as
`the claim construction of one term. The term is sole, shoe sole, and the
`board in its initial decision was to construe that term as the part of a shoe
`that sits below wearer’s foot. We would urge that the board continue to
`maintain that construction that is, in our view, correct for the 590 patent.
`JUDGE DROESCH: I have a question for you. Does the sole of the
`shoe include the heel, or does it exclude the heel?
`MR. SIKORSKI: As the panel’s aware, that is the primary argument
`from Jezign, patent owner, as the claim construction. It’s our position -- and
`I’m glad to go through the intrinsic evidence that supports our position --
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`Patent 6,837,590 B2
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`there’s no question. And it’s a bit of an astonishing argument that they
`would argue otherwise.
`In our view, the sole of the shoe is the entirety of the portion that sits
`below the wearer’s foot. I'm paraphrasing your construction, but I think
`your construction is correct. In other words, looking at Figure 3 of a 590
`patent, it’s our contention that the sole extends from the tip of the toe to the
`back of the heel of the foot.
`JUDGE KAUFFMAN: And could you please comment on the
`definition that's offered by patent owner.
`MR. SIKORSKI: Patent owner doesn't really offer a counter
`construction. In their arguments, they say that they, I believe they don't
`dispute are the words they use. The correctness insofar as -- if I can quote
`them correctly -- here on slide 8, I’ve excerpted a portion of patent owner's
`response at page 7 of paper 16. They do, as part of their argument -- in the
`beginning of their argument, they say that they do not dispute the proposing
`construction of sole insofar as the sole is a portion of a shoe that sits below a
`wearer’s foot.
`So in that capacity, I believe they think the construction is correct.
`That said, they have a position, which I find to have no merit that somehow
`the term sole excludes the heel. Here on slide 8, to continue the
`conversation, Figure 3 of the patent, the 590 patent, illustrates the shoe and
`its various components. Among those components is sole 105. 105 is the
`reference numeral that the patent uses to point out the sole of the shoe. A
`very similar drawing is found in Figure 5, and the lead line for reference
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`numeral 105 is pointing to the same portion of the sole as it is here in Figure
`3, namely the heel.
`I can't imagine the lead line for 105 going further to the left further to
`the back of the shoe than it is illustrated here in Figure 3. And this is
`probably the strongest intrinsic evidence that we have to indicate that the
`entire sole is the sole. There’s no -- the term sole in other words, does not
`point to simply portions of the component that lies underneath the wearer’s
`foot but rather to the entirety of that component from toe to behind the heel.
`JUDGE BRADEN: So is it your position then that the sole includes
`the heel?
`MR. SIKORSKI: Correct, yes. The sole includes
`a heel, it includes an instep, it includes a toe portion and any other subpart of
`a heel that one can think of. But yes, for the 590 patent, the term sole
`includes heel.
`JUDGE BRADEN: What about in shoes that have a
`separate portion that’s underneath the heel part of the foot that’s separate
`and apart? Where here, what you see is almost a continuous piece in that
`Figure 3. Well, what about in a situation where you have a piece that goes
`towards what you said the instep and the toe portion, but there's a separate
`part that’s underneath the heel portion of the foot; would that still be
`considered?
`MR. SIKORSKI: For illustration purposes, I’ll refer maybe to a high-
`heeled shoe.
`JUDGE BRADEN: Yes.
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`MR. SIKORSKI: Yes, it is our position that the elevated part
`underneath the rest of the shoe, that kind of stiletto piece, so to speak, that
`would be embraced within the term sole for this patent. Had it been
`otherwise, had a heel been such an important distinction to be made between
`the rest of the underside of the shoe, then certainly there would be some
`discussion in the specification distinguishing the two, identifying the two, or
`otherwise. And frankly the word heel appears once in the spec in the
`background not to the actual disclosed invention. So when the patent talks
`about sole, I think the only conclusion that can be reached is that it’s the
`entire, again, subpart, subcomponent -B shouldn’t say sub -- the entire
`component that lies underneath the wearer’s foot, consistent with what the
`board’s initial construction has been.
`JUDGE KAUFFMAN: Just to clarify that, I know you were going to
`talk about it later, but could you flip to your slide 19 and answer her
`question with respect to this shoe and the heel-and-sole distinction.
`MR. SIKORSKI: Glad to. For context, slide 19 has the Chiaramonte
`that we’ve asserted against Claims 1, 2, and 3. Chiaramonte discloses a
`disco shoe. It dates 1977. And here we have in Figure 1, what Nike’s
`position is, the sole of the shoe. In other words, the upper is not illustrated.
`In our opinion, it’s inherent because you wouldn’t dance in a disco without
`an upper -- above this thing. But Figure 1 for our purposes shows the entire
`sole.
`In the middle of Figure 1, you see number 15. That’s the riser; it
`shows you how thick this shoe sole is. If there is a "heel@ in this shoe, it’s
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`our position that it's only the red highlighted portion in slide 19. In other
`words, what I'm saying is Jezign’s proposal to exclude heel at best would
`exclude the red portion highlighted in this slide 19.
`JUDGE BRADEN: So it’s your position that it would not exclude
`part 40 or the battery part of the Lucite shoe?
`MR. SIKORSKI: No. So I’ll answer that in two parts. Nike’s
`position is that the entirety of what we see here in Figure 1 is the sole,
`spanning from --
`JUDGE BRADEN: So it’s not just A -- or is that A, or 17?
`MR. SIKORSKI: So I would say it’s our position that the sole on the
`right side of Figure 1 extends from parts 27, reference numeral 27 all the
`way back to where the red circle and circles that switch S. That’s the front-
`to-back extension to sole, and the top-to-bottom extension includes the upper
`plate B, capital B, and it includes the lower plate A. And again, our position
`is that the construction as it is and as it should be upheld would include the
`term sole as properly construed would include the red highlighted portion.
`If on the other hand I understand Jezign’s alternate or request for
`modification on claim construction, my answer’s the same. But at best
`they’re arguing that the little red highlighted portion is somehow a heel. I
`hope that answered your question.
`JUDGE BRADEN: Thank you.
`JUDGE KAUFFMAN: Earlier I asked you to comment on the
`definition that was offered by patent owner, and I didn’t ask that question
`well. So on page 11 of the patent owner's response, they offer as a
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`definition, the section forming the underside of a piece of footwear typically
`excluding the heel from this@ -- and then it’s in parentheses -- “(when this
`forms a distinctive part.)” Can you comment on that definition, please?
`MR. SIKORSKI: I can, Your Honor. That definition, as I flip to that
`page, that definition, I recall, was pulled from a website that they --
`JUDGE KAUFFMAN: From Oxforddictionary.com
`MR. SIKORSKI: Correct. There it is. Again, I didn’t understand
`that this definition was something that they’re proposing, but assuming that
`is, if this definition at the top of page 11 in the response were accepted as a
`more appropriate definition, then to answer your question, I feel that this
`heel that would be excluded from sole in reference to Figure 19 would only
`exclude the component that elevates, that raises the sole of the shoe further
`from the floor. In other words, going back to Your Honor’s question about
`what’s a stiletto. The vertical spike might be the heel, but there’s certainly a
`sole above that. And I believe patent owner's argument is consistent with
`that because in their opposition, on my slide 26, their patent owner response
`paper 16 and page 12 -- excuse me -- they indicate that Aa heel supports a
`sole. A sole supports a wearer’s foot.@
`JUDGE KAUFFMAN: I feel like you’re making a two-layered
`argument; that the heel is part of the sole, and even if it isn’t a separate part,
`there’s still a sole above the heel.
`MR. SIKORSKI: Nike’s position is that the heel, whether it’s an
`elevated part or not, is part of the sole. A sole embraces -- the term sole for
`the ’590 patent embraces all of that below the wearer’s foot.
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`If the board were to entertain a modification to that claim construction
`and to somehow exclude heel, the portion that would be excluded would
`simply be the portion that elevates the rest of the sole -- does that makes
`sense -- that rises above the ground. I can only point to my slide 19 again
`because it’s hard to describe the --
`JUDGE BRADEN: So in order to be a heel, it has to have some sort
`of elevation, or does it have to just be underneath the heel portion of the
`foot?
`
`MR. SIKORSKI: Well, their proposal on page 11 where the
`parenthetical says typically excluding the heel when this forms a distinct
`part, that certainly, in our view, refers only to the stiletto, the vertical part of
`a high-heeled shoe or the highlighted red portion of Chiaramonte’s disco
`shoe. There’s going to be a portion of the sole -- even under Jezign’s
`proposed modification, there would still be a sole above that heel, and if you
`keep going up, you’d hit the wearer’s foot.
`JUDGE BRADEN: Under that, there has to be some sort of elevation
`in order for it to constitute being a distinct part.
`MR. SIKORSKI: Yes.
`JUDGE BRADEN: Okay.
`JUDGE KAUFFMAN: I think I’d like to ask you one more thing
`about their definition, please, before we move on. So for me, we’re applying
`broadest reasonable interpretation, and it says that typically excludes the
`heel.
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`Doesn't that mean that at times it doesn't exclude the heel, and then
`wouldn’t the broadest reasonable interpretation encompass both when the
`heel is part of the sole and when the heel is a separate part from the sole?
`MR. SIKORSKI: That’s Nike’s ultimate position; that regardless
`whether the heel is a separate component or not, in the context of the ’590
`patent, the term sole includes that extra component.
`JUDGE KAUFFMAN: And in the shoe that’s in the ’590 patent in
`Figure 3, does this sole 105 include a heel?
`MR. SIKORSKI: Yes.
`JUDGE KAUFFMAN: Okay. Maybe you would call it an integral
`
`heel?
`
`MR. SIKORSKI: I would say the heeled portion of the sole. In other
`words, looking at Figure 3, it’s our position that lead line for 105, 105 is the
`word that the patent uses for the sole. Lead line 105 is pointing to the heel
`portion of the sole.
`JUDGE KAUFFMAN: Thank you.
`MR. SIKORSKI: Getting back to slide 3, just the other parts of the
`shoe disclosing the 590 patent are a little bit less germane to our
`conversation, but suffice it to say that the arguments for patentability
`presented the file history and in the patent specification turned on the use of
`this switch 125.
`The patent acknowledges that lighted shoes existed in the prior art, but
`they were largely triggered by pressure-sensitive switches, where when only
`when people struck their foot to the ground would some sort of illumination
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`blink or what have you in the past. The specifications are a little bit more
`specific on the various types of illumination.
`So the ’590 patent discloses this switch 125, which when activated
`causes continuous illumination of the light sources -- source or sources --
`that are disposed within sole 105 here in Figure 3. I’ll walk through the
`prior art, quickly. As you would expect, the components are extraordinarily
`similar. The Shkalim reference from 1993 shown here on slide 4 in the
`upper right, there’s an upper number 1, there's a pushbutton switch 2, which
`when activated, causes lights within the Figure 1a and 1b are unfortunately
`drawn pretty small, but you can see what I will call a rope designated by the
`reference numeral 3. The reference calls it a cover. It’s essentially a tube
`that contains plural light sources. The light source number 4 is one example.
`There's another Figure 5 that shows more detail.
`In Figure 1b, we see that this light cord is inserted within a channel 15
`in the sole. I will quickly move --
`JUDGE KAUFFMAN: Can I just ask you to please be very specific
`about hearing you say the word within.
`MR. SIKORSKI: Sure. The patent, I’ve moved to slide 12 to put
`Claim 1 up against the Shkalim reference. Where -- there’s a claim
`limitation in the middle of Claim 1; a light source disposed within said sole.
`It’s our position, we’ve presented, that the Shkalim reference has a light
`source. It’s number 4 in another figure. We can see that there’s plural light
`bulbs within this cover 3. Cover 3, as you see in Figure 1a and as recited in
`Shkalim on page 3 starting line 14, there's a channel in the sole, a deep
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`groove, so to speak. You can see it's kind of a squared-off region in Figure
`1b. That cover 3 is as Shkalim said, Aput into" this channel 15. And then
`the patent elaborates, or the Shkalim reference elaborates that this light cord,
`for lack of a better word, is either glued or heat welded into the sole. So in
`other words, this light cord 3 -B light cord is my term -- and its light sources
`4 or 11 are disposed within the sole of Shkalim’s shoe.
`JUDGE KAUFFMAN: You have equated the word “into” from the
`reference with the word “within” from the claim. And that row partially
`protrudes from the sole of that reference. Why is that still “within”?
`MR. SIKORSKI: There’s some embodiments where it protrudes. I
`don’t have it here. I believe it’s another figure of Shkalim, where this cover
`3 is attached to the outside of the sole without the benefit of groove 15.
`However, in Figure 1b, there’s no question that this cover 3, in our
`view, shares the same outer perimeter as the rest of the sole. It looks flush,
`and even if it bulges out a little bit, it’s nevertheless within the confines of
`the sole. But more importantly, once cord is glued or heat welded, to be part
`of the rest of that sole, it’s a part of the sole.
`JUDGE KAUFFMAN: I’m kind of surprised by that
`argument. I thought you would say that within just means partially within,
`and it doesn’t necessarily have to mean completely within. But it sounds
`like you’re saying that the reference discloses it is completely within.
`MR. SIKORSKI: It’s our belief that it’s completely within.
`Absolutely. I didn’t realize your question was going towards the distinction
`of partially within or fully within. Regardless, I believe the light sources 4
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`are not only within the confines of this cover 3, but certainly within the
`confines of the sole. So to us, there's no question that Shkalim’s light
`sources are disposed within said sole as Claim 1 and Claim 3 recite.
`JUDGE BRADEN: So how deep does a channel have to be to get
`within the sole and not just on the sole?
`MR. SIKORSKI: Again, if this cover 3 is glued to or welded onto
`heat -- heat is the other mechanism that Shkalim uses -- once it’s secured to
`the sole, it’s part of the sole. It's hard for me to distinguish the two; whether
`the hash-marked rubber in Figure 1b or the cover 3, well, once that’s glued,
`it’s part of the sole. So it’s no doubt going to be disposed within. Shkalim
`talks about --
`JUDGE BRADEN: So now, it’s no longer a cover, it’s sole. It’s not
`just something that you stuck onto the sole.
`MR. SIKORSKI: Correct. Correct. Now, Shkalim goes so far as to
`say that the groove, you know, shouldn’t be so deep as to interfere with a
`light exiting. I’m not sure how germane that is to the conversation, but
`certainly as we see here in Figure 1b, the lights, and detailed in another
`figure number 11, are certainly disposed within the sole.
`And the other B- again, on slide 12, the other excerpt from Shkalim
`that’s relevant to our conversation today is Shkalim’s indication that this
`channel 15 runs, as he puts it, the whole sole of the shoe. In other words, all
`around. And why is that relevant? In one of patent owner's arguments, here
`on slide 14, they say on paper 16 -- page 16, that some sort of criticism, and
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`I didn’t quite follow what they said; that Shkalim’s lights are not exposed
`along a sole of a shoe.”
`I think that’s in the context of their argument that Shkalim’s lights are
`only in a heel. Again, I don’t follow because this cover 3 is, as seen in
`Figure 1, it has to be everywhere.
`Perhaps given the time, I should move to the next reference, Chien.
`Also in the context of Claim 1 here on slide 15, we see that obviously there’s
`no reference numeral on Figure 10, but it’s there. There’s a pushbutton
`switch 17 that points basically to this basketball-like icon. When you press
`that, it turns this -- the light in the shoe continuously on.
`The light source that the board adopted in its decision is 2h. It’s a
`light strip that’s seen in Figure 7. That light strip, 2h, is inserted into an
`internal channel in some sort of puck thing that you see in Figure 7, and the
`outer perimeter of that component is seen from top view in Figure 5 at 18.
`It’s described as a light transmissive, so that the light from 2h exits.
`Again, here on slide 15, we’ve put those components against each of
`the reference -- each of the claim limitations, and on slide 16, Jezign’s only
`argument that we could make out from the response is that Chien’s light
`source is within the heel.
`Frankly, when you look at Chien’s Figure 10 and put it up against the
`590 Figure 3, the light source seems to be in the exact same spot. So we
`really see no difference at all between Chien and the disclosed shoe, so in
`our view, Chien anticipates Claim 1.
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`JUDGE DROESCH: All right. Just to let you know, you have about
`five minutes left of your 30 minutes.
`MR. SIKORSKI: Thank you. I’ll go quickly through Chiaramonte.
`We saw it a little bit -- we discussed it a little bit earlier. It likewise has a
`switch, as here on slide 17 circled in red. There are two light sources; 37
`seen in Figure 3. Figure 1 doesn't quite show those two light sources
`because of some other components that I don't believe are germane to our
`analysis. It’s a light filter that spends to make the disco shoe a little prettier.
`And I’ll move -- because of time, I’ll
`move to the obviousness argument. To paraphrase or to make the
`conversation short, Claim 3 is very similar to Claim 1 but for the fact that
`the illuminated regions of the sole include, as we see here in slide 20
`bracketed in green, these regions are in the shape of alphanumeric
`characters. We’ve combined each of the three references we discussed
`earlier today with Powell, who as you can see here in Figure 3 encircled by
`reference numeral 60, is an alphanumeric personal label.
`Moving to slide 24, the obviousness for combining any of the three
`first references with Powell is supported in our petition by the declaration of
`Lance Rake. He went through an extensive analysis that was also copied
`into the petition regarding the application of ordinary skill, talking about
`simple substitution of elements with nothing more than predictable results,
`and he added the fact that in the 1990s, there was a demand for personalized
`apparel.
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`Case IPR2017-00246
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`As the board knows in their initial decision, they indicated that the
`patent owner’s preliminary response didn’t challenge any of the motivations
`or reasons to combine. Looking at patent owner’s response today, the one
`that came after the board's initial decision, there's still no evidence to rebut
`the declaration of Lance Rake.
`For the record, as I’ll stop talking, we’d like to point out that attorney
`argument is not evidence, especially for purposes of Claim 3. And to the
`extent that we’ve somehow not discerned some sort of argument that Jezign
`might present their portion, there's case law supporting that skeletal or
`undeveloped arguments are waived.
`I’m not sure if the board has a preference for me to address objections,
`but I’ll tend not to interrupt Jezign’s presentation. Thank you.
`JUDGE KAUFFMAN: I would just point out, please don’t just to
`tend not to interrupt, don't interrupt patent owner’s presentation.
`Afterwards, if you want to talk about something, we can talk about it.
`MR. SIKORSKI: Thank you.
`JUDGE DROESCH: Counsel for patent owner, whenever you’re
`ready to begin, we’ll begin. Please introduce yourself and everybody else
`that’s in attendance for your party.
`MR. ZITO: Thank you. Good afternoon. I’m
`Joseph Zito, here on behalf of the patent owner, Jezign. With me is Richard
`Castellano, who’s co-counsel in the IPR, and I’ve got Mr. Marston, inventor
`of the patent also here.
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`Shkalim does not have lights within the sole of the shoe. Shkalim has
`lights glued to the outside of the sole of the shoe. And that’s the distinction
`we made in our patent owner’s response; that within doesn’t mean partially
`within, it doesn’t mean glued on the outside, it means disposable in the sole.
`If you look at the language of the claim itself, it says, the distinction between
`the sole and the translucent perimeter portion of the sole. The claim says --
`JUDGE BRADEN: Wait. But you just said the
`translucent perimeter portion of the sole.
`MR. ZITO: Correct.
`JUDGE BRADEN: So why wouldn’t this, if it’s in a channel and it’s
`glued in, so it’s permanent, why isn’t that a translucent portion of the sole?
`MR. ZITO: Because the lights are in the sole, and the lights transmit
`through the translucent perimeter portion of the sole. They’re not in
`translucent perimeter portion of the sole, so even if you were to consider the
`--
`
`JUDGE BRADEN: Say that again because I’m not sure I understood
`
`that.
`
`MR. ZITO: You have a sole, and the lights are within the sole, and its
`taught in patent -- I'll show you what it is in Figures 2 and 3 -- the lights
`transmit through the translucent perimeter portion -- translucent perimeter
`portion of the sole, not from within the translucent perimeter portion of the
`sole.
`So we think if you define what within the sole means, as we’ve said in
`-- according to what the patent teaches, given its broadest and possible
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`meaning, it doesn't mean partially within as it’s been suggested. What does
`it mean? It --
`JUDGE BRADEN: It has to be completely buried within?
`MR. ZITO: Lights have to be within, so they can shine through the
`separate, peripheral transparent portion of the sole.
`JUDGE DROESCH: But the claim says that the sole includes the
`translucent perimeter surfaces, not the translucent perimeter surface is not
`separate from the sole; correct?
`MR. ZITO: If you look at Claim 3, it’s more distinct there, where it
`says, a light source -- and I'm looking at column 6, the second line -- a light
`source disposed within said sole so that the light source provides
`illumination to the translucent regions. Okay. It’s not in the translucent
`regions; it’s in the sole providing illumination to the transparent region. I
`think that you have to --
`JUDGE KAUFFMAN: Claim 3 has the same issue in slightly
`different language. It says, the sole including an opaque perimeter surface.
`So the light source is disposed within the sole, and the sole includes the
`opaque perimeter surface. You’re arguing as if the sole and the opaque
`perimeter surface are distinct parts when the claim defines them as the
`opaque part as part of the sole.
`MR. ZITO: If you look at Figure 2 and 3 of
`Marston patent --
`JUDGE BRADEN: And that would be Exhibit 1001?
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`MR. ZITO: Exhibit 1001, the 590 patent. And I’m sorry, Figure 4 --
`Figure 3 and Figure 4, you see where the lights 115 are within the sole
`portion? They’re shown in the circles in Figure 3 and shown as also a partial
`circle in the back of Figure 3. If you look at Figure 4, they’re shown in the
`circles that are inside, not in the peripheral portion because if you look at
`115 on the left, it’s going from being a circle to an oval to an almost straight
`line, almost a side view well within the sole, separate from the translucent
`peripheral portion.
`JUDGE BRADEN: The circle, isn’t that like a cord that’s going
`through there? It looks like it’s a cord. It’s showing like a cylinder, a cord,
`that’s going around that outer perimeter, and you’ve got just some plastic,
`non-translucent portions that are holding that on to or breaking up, so it’s a
`non-continuous light portion. But I mean, even here you can see 115 kind of
`bulges out.
`MR. ZITO: And you’re looking at Figure 4?
`JUDGE BRADEN: Yes, sir.
`MR. ZITO: In Figure 4 where you see 115 on the
`right-hand side?
`JUDGE BRADEN: Yes.
`MR. ZITO: That’s pointed to the light that’s inside the translucent
`portion, and I’m referring to the circles that are shown on the backside of the
`one on the left that’s also indicated as 115. That’s not a bar; that’s the light
`– that’s a series of separate LEDs.
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`JUDGE DROESCH: So are you saying that those circles that are
`shown on the back portion of the shoe, that they’re located a certain depth
`away from the perimeter?
`MR. ZITO: Correct.
`JUDGE BRADEN: Is that claimed?
`JUDGE DROESCH: How do you know what the depth is?
`MR. ZITO: Well, you can see that on the one on
`the left, which shows -- these are the circles, as you can see in Figure 3,
`looking straight at the LED only circular when you see 135.
`And when you’re looking at the side of the LED, it becomes more and
`more of an oval shape. So other than the fact that 115 is an oval shape that
`has to be facing the side, not the back at that point and set off that far from
`the peripheral.
`JUDGE BRADEN: Is there something in the written specification
`that says there’s a specific depth away from the outer portion of the sole for
`these to be embedded?
`MR. ZITO: There’s nothing in the written
`specification that indicates the depth of embedding of the lights.
`JUDGE DROESCH: So we’re left with what’s disclosed in the
`pictures?
`MR. ZITO: Yes. The pictures are a part of the disclosure of the
`patent, and the picture shows the depth.
`JUDGE KAUFFMAN: For me -- help me understand there -B for me,
`drawings are exemplary; right? So you could put the lights in the absolute
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`symmetrical center of the sole; right, of the heel portion of the sole. That
`would be one way to meet your claim.
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