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`IPR2017-00694
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ALBAAD MASSUOT YITZHAK, LTD. AND ALBAAD USA, INC.,
`Petitioner,
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`v.
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`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
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`Case IPR2017-00694
`Patent 6,432,075 B1
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`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-00694
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`Patent Owner Preliminary Response
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`TABLE OF CONTENTS
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`B. 
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`2. 
`3. 
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`Page
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`I. 
`INTRODUCTION ........................................................................................... 2 
`BACKGROUND ............................................................................................. 4 
`II. 
`III.  GROUND 1 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT KOCH ANTICIPATES ANY
`OF THE CHALLENGED CLAIMS ............................................................. 12 
`A. 
`The Petition Unfairly Second-Guesses the Previous Decision of
`the Office, Causing Inefficient Use of Resources for Both
`PTAB and the Patent Owner ............................................................... 13 
`The Petitioner Fails to Demonstrate a Reasonable Likelihood
`that Koch Teaches Claim Elements 1g and 1h, Claims 2 and 4,
`and Claim Elements 5f, 5h, and 5i ...................................................... 15 
`1. 
`Reliance on Patent Drawings to Show Precision is
`Improper .................................................................................... 16 
`Koch Fails to Disclose Claim Element 1g ................................ 17 
`Koch Fails to Disclose Claim Element 1h ................................ 24 
`a) 
`The Petitioner Relies on Improper Measurements ......... 26 
`b) 
`The Petitioner Relies on Improper Assumption that
`All of Koch’s Petals Are Equal ...................................... 28 
`Koch Fails to Disclose Claim 2 ................................................ 30 
`4. 
`Koch Fails to Disclose Claims 3 and 4 ..................................... 32 
`5. 
`Koch Fails to Disclose Claim Element 5f ................................. 35 
`6. 
`Koch Fails to Disclose Claim Element 5h ................................ 38 
`7. 
`Koch Fails to Disclose Claim Element 5i ................................. 38 
`8. 
`IV.  GROUND 2 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT KOCH RENDERS CLAIM 6
`OBVIOUS ...................................................................................................... 39 
`V.  GROUND 3 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT BALZAR ANTICIPATES
`CLAIMS 1-3 AND 6 ..................................................................................... 40 
`A. 
`Balzar Fails to Disclose Claim Element 1a ......................................... 40 
`B. 
`Balzar Fails to Disclose Claim Element 1g ......................................... 41 
`C. 
`Balzar Fails to Disclose Claim Element 1h ......................................... 45 
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`2. 
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`B. 
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`Balzar Fails to Disclose Claim 2 ......................................................... 47 
`D. 
`Balzar Fails to Disclose Claim 3 ......................................................... 48 
`E. 
`Balzar Fails to Disclose Claim Elements 6g and 6h ........................... 48 
`F. 
`VI.  GROUND 4 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT BALZAR AND KOCH
`RENDER CLAIM 4 AND 5 OBVIOUS ....................................................... 49 
`A. 
`Balzar and Koch Fail to Render Obvious Dependent Claim 4 ........... 49 
`1. 
`Adding Koch to Balzar Still Does Not Teach All the
`Elements of Dependent Claim 4 ............................................... 49 
`The Petition Fails to Provide a Motivation for Combining
`Balzar and Koch to Invalidate Claim 4 ..................................... 50 
`Balzar and Koch Fail to Render Obvious Claim 5 .............................. 52 
`1. 
`Balzar and Koch Fail to Disclose the Elements of Claim 5 ..... 52 
`2. 
`The Petitioner Fails to State a Motivation for Combining
`Balzar and Koch to Develop Its Positions on Claim 5 ............. 53 
`VII.  GROUND 5 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT LOYER ANTICIPATES
`CLAIMS 1, 2, 3, AND 6 ............................................................................... 54 
`A. 
`The Petitioner Improperly Relies on Hand-Measurements of
`Loyer’s Non-Scaled Patent Drawings ................................................. 54 
`Loyer Fails to Disclose Claim Element 1g ......................................... 55 
`B. 
`The Petitioner’s Analysis of Claim Element 1h is Also Flawed ........ 58 
`C. 
`Loyer Fails to Disclose the Elements of Dependent Claim 2 ............. 61 
`D. 
`Loyer Fails to Disclose the Elements of Dependent Claim 3 ............. 62 
`E. 
`Loyer Fails to Disclose Claim Elements 6g and 6h ............................ 62 
`F. 
`VIII.  GROUND 6 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT LOYER AND KOCH
`RENDER CLAIM 4 AND 5 OBVIOUS ....................................................... 63 
`A. 
`Loyer and Koch Fail to Render Claim 4 Obvious .............................. 63 
`B. 
`Loyer and Koch Fail to Render Claim 5 Obvious .............................. 64 
`IX.  GROUND 7 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT BERGER ANTICIPATES
`CLAIM ELEMENTS 1, 2, 3 and 6 ................................................................ 66 
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`A. 
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`The Petitioner Improperly Relies on Hand-Measurements of
`Berger’s Patent Drawings to Dimensions, While Ignoring
`Berger’s Actual Teaching of Dimensions ........................................... 66 
`Not Only Does Berger Fails to Disclose Claim Element 1g, but
`the Petitioner Uses the Wrong Dimension for Axial Length “B” ....... 67 
`In Addition to Berger Not Teaching Claim Element 1h, the
`Petitioner Substitutes the Wrong Measurement for “L” from
`Berger’s FIG ........................................................................................ 69 
`Berger Fails to Disclose Dependent Claim 2 ...................................... 71 
`D. 
`Berger Fails to Disclose Dependent Claim 3 ...................................... 71 
`E. 
`Berger Fails to Disclose Claim Elements 6g and 6h ........................... 72 
`F. 
`X.  GROUND 8 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT BERGER AND KOCH
`RENDER CLAIM 4 AND 5 OBVIOUS ....................................................... 72 
`A. 
`Berger and Koch Fail to Render Dependent Claim 4 Obvious ........... 72 
`B. 
`Berger and Koch Cannot Render Claim 5 Obvious ............................ 74 
`XI.  THE BOARD SHOULD NOT INSTITUTE INTER PARTES
`REVIEW ........................................................................................................ 76 
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`B. 
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`C. 
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
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`Page(s)
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`Avaya Inc., Dell Inc., Sony Corp. of Am., and Hewlett-Packard Co. v.
`Network-1 Sec. Sols. Inc., IPR2013-00071 ..................................................................68
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`Ex parte LeMay, 2008
`2008 Pat. App. LEXIS 6774 (BPAI Sep. 24, 2008) .............................................63, 73
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`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) .........................................................................................16
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`In re Chitayat,
`408 F.2d 475 (CCPA 1969) ..............................................................................................16
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`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................... passim
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`In re Wilson,
`312 F.2d 449 (CCPA 1963) ........................................................................................17, 22
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`In re Wright,
`569 F.2d 1124 (CCPA 1977) ...........................................................................................16
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...............................................................................................39, 51, 63
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`Nu Mark LLC v. Fontem Holdings 1, B.V., IPR2016-01309 .........................................13
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`Nystrom v. TREX Co, Inc.,
`424 F.3d 1136 (Fed. Cir. 2005) ............................................................................... passim
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`FEDERAL STATUTES
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`35 U.S.C. § 325(d) ..............................................................................................................13, 15
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`U.S.C. § 314(a) ..........................................................................................................................13
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`REGULATIONS
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`37 C.F.R. § 42.65(a) ......................................................................................................... passim
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`37 C.F.R. § 42.107(a) .................................................................................................................1
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`37 C.F.R. § 42.108 ....................................................................................................................13
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`37 C.F.R. § 42.108(c) ...............................................................................................................76
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`LIST OF EXHIBITS
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`Ex. No.
`2001
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`2002
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`2003
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`Description
`Confirmation of Exclusive Licensee Edgewell Personal Care
`Brands, LLC’s Authority to Conduct Inter Partes Review
`Second Amended Complaint in Civil Action No. 1:15-cv-
`01188-RGA (D. Del.)
`Declaration of Donald Sheldon Under 37 C.F.R. § 1.68 in Support
`of Patent Owner Preliminary Response
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`IPR2017-00694
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`Pursuant to 37 C.F.R.§ 42.107(a), the effective patent owner1, Edgewell
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`Personal Care Brands, LLC (“Edgewell”), hereby submits the following Patent
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`Owner Preliminary Response in response to the Petition for Inter Partes Review of
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`U.S. Patent No. 6,432,075 (“the ’075 patent”).
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`As discussed below, the Petition is, in essence, a “copy-and-paste” version
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`of the Expert’s Declaration that consists almost entirely of:
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` arbitrary and nebulous dimensions that are pulled from imprecise and
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`non-scaled patent drawings by use of “a ruler” or visual estimations;
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` arguments alleging the claimed invention is obvious that are
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`completely silent on the critical explanation of why a skilled artisan
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`would be motivated to combine cited references; and
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` unsupported and conclusory statements regarding prior art teachings
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`that lack any underlying analysis and should be entitled to little or no
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`weight because they do “not disclose the underlying facts or data on
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`which the opinion is based.” 37 C.F.R. § 42.65(a).
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`For these reasons and several others listed below, the Petitioner has failed to
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`meet their burden of establishing that this Inter Partes Review should be instituted.
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`1 See paper submitted by Edgewell on April 28, 2017, and Ex. 2001, confirming
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`authority to conduct present inter partes proceeding.
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`I.
`INTRODUCTION
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`Edgewell is a leading provider of personal care products and sells a wide
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`range of feminine products, including tampons marketed under the Playtex®
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`brand. Edgewell is the exclusive licensee of the ‘075 patent, titled “Applicator For
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`Tampons,” which is at issue here.
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`The Petitioner, Albaad Massuot Yitzhak, Ltd. and Albaad USA Inc., is
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`selling a tampon that Edgewell believes is infringing the ‘075 patent. Edgewell
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`filed its Complaint for patent infringement against Albaad on December 21, 2015,
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`in the United States District Court for the District of Delaware (Case 1:15-cv-
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`01188-RGA).
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`The Petitioner is now attacking the validity of the ‘075 patent in the present
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`Petition for Inter Partes Review. According to the Petition, Ground 1 alleges that
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`claims 1-5 are anticipated by U.S. Design Patent No. 250,663 to Koch (hereinafter
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`“Koch”), while Ground 2 alleges that claim 6 is obvious in view of Koch.
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`Ground 3 alleges that claims 1-3 and 6 are also anticipated by U.S. Patent
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`No. 5,807,372 to Balzar (hereinafter “Balzar”). Ground 4 alleges that claims 4 and
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`5 are further obvious over a combination of Koch and Balzar.
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`Ground 5 alleges that claims 1-3 and 6 are also anticipated by U.S. Patent
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`No. 3,628,533 to Loyer (hereinafter “Loyer”). Ground 6 alleges that claims 4 and
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`5 are further obvious over a combination of Koch and Loyer.
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`Ground 7 alleges that claims 1-3 and 6 are also anticipated by U.S. Patent
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`No. 3,895,634 to Berger (hereinafter “Berger”). Ground 8 alleges that claims 4
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`and 5 are further obvious over a combination of Koch and Berger.
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`As a brief summary, Grounds 1-8 are based on the following legal errors
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`and/or factual inaccuracies:
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` Grounds 1-8 all improperly rely on arbitrary dimensions that are
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`pulled by the Petitioner’s Expert from non-scaled patent drawings by
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`use of a ruler or some other type of “eyeballing” of the patent figures;
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` Grounds 2, 4, 6, and 8 improperly rely on an obviousness analysis in
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`which the Petitioner either (i) provides no motivation to combine or
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`modify the references or (ii) states that the motivation is “to arrive at
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`the claimed invention”;
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` Grounds 1 and 2 rely on Koch’s single design patent figure in which
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`the Petitioner can only speculate as to the existence and location of the
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`claimed inflection points and the claimed radii of curvature;
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` Not only do Grounds 3-8 rely on the Petitioner’s improper hand
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`measurements of patent drawings, but the Petitioner then incorrectly
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`substitutes the straight petal length “L” for the curved tip length “B”
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`(measured from the first inflection point) in calculating the claimed
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`ratios (or vice versa);
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` Grounds 5 and 6 rely on the Petitioner’s improper hand measurements
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`taken from Loyer’s FIGs. 2, 3, and 5, although FIG. 2 has a clearly
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`different (enlarged) scale relative to FIGS. 3 and 5;
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` Grounds 7 and 8 rely on an improper hand measurement taken from
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`Berger’s patent drawings, although that Petitioner’s ruler-based
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`measurement is inconsistent with what Berger’s specification teaches
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`for that dimension; and
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` Grounds 7 and 8 further rely on improper ruler-based measurements
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`of the petal length (11 mm) taken from Berger’s patent drawings, and
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`then use a different and undisclosed petal length (14 mm) for
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`calculating the claimed ratios.
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`In addition to these legal errors and factual inaccuracies, other problems
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`with Grounds 1-8 are also discussed below.
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`II. BACKGROUND
`The ‘075 patent is an older patent, claiming priority to a 1999 Japanese
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`application. The ‘075 patent discloses, inter alia, an applicator for a tampon
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`having an outer cylinder with a plurality of valves and a push-out member movably
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`inserted in the outer cylinder, a leading portion of the outer cylinder being shaped
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`for easy insertion into a vaginal cavity. Ex. 1001, 2:23-38; FIG. 1.
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`The outer cylinder’s configuration, which is dependent on specific geometric
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`ratios, provides an improvement in performance when compared to prior
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`assemblies. Id. at 1:57-62. Accordingly, the shaped leading end of the outer
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`cylinder eliminates or reduces previous known problems, such as causing
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`unnecessary resistance in the body or injuring the body upon insertion into the
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`vaginal cavity. Id. at 2:5-9.
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`According to one embodiment, illustrated below in annotated FIG. 1 of the
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`‘075 patent, an applicator for a tampon includes an outer cylinder 1 having a
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`plurality of valves 17 and a push-out member in the form of an inner cylinder 2.
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`Id. at 3:41-48 and 4:31-33. The outer cylinder 1 has a forward end and a rearward
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`end, with a first portion being on a side of the forward end in the form of a large
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`diameter portion 7, for fitting a tampon 3. Id. at 3:43-46 and 4:20-22.
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`The outer cylinder 1 further has a second portion on a side of the rearward end in
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`the form of a small diameter portion 8, in which the push-out member 2 is movably
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`inserted. Id. 4:9-11.
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`As further illustrated below in a first annotated version of FIG. 3, the ‘075
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`patent, the valves 17 converge to have a curved face portion 7a. Id. at 4:64-67.
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`The curved face portion 7a is diametrically gradually reduced toward a leading end
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`portion 7b. Id. at 5:6-12.
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`In a second annotated version of FIG. 3 of the ‘075 patent, reproduced
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`below, an outer face of the outer cylinder 1 has a radius A at a first inflection point
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`Z at a boundary between (a) a maximum diameter portion of the first (or large)
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`diameter portion 7 and (b) the curved face portion 7a. Id. at 5:2-5 and 5:20-24.
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`The forward end of the outer cylinder 1 further has an axial length B from the
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`inflection point Z to the leading end of the applicator. Id. at 4:63-64. The axial
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`length B is a straight dimension having a different dimensional value than a curved
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`tip length, which follows the curvature of the curved face portion 7a from the
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`inflection point Z to the leading end portion 7b. The inflection point “Z” is defined
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`as the point at which the large diameter portion 7 leads into the curved face portion
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`71. Id. at 5:12-13. While the inflection point “Z” of the illustrated embodiment is
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`at the root ends of the valves 17, the inflection point Z is not required to be
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`coterminous with the root end of the valves 17, as dictated by claim differentiation
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`through dependent claim 2. For all claims in the ‘075 patent, the ratio of the
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`Radius A to Axial Length B (A/B) is at most 0.8. Id. at 5:20-24.
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`The claimed invention of ‘075 patent also focuses on the details of each
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`individual valve 17. In annotated versions of FIGS. 2A and 2B of the ‘075 patent
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`reproduced below, each valve 17 has a straight length L, as taken in an axial
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`direction of the outer cylinder 1, and a width W at its root end. Id. at 4:35-39. The
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`length L of valves 17 refers to the length before the valves 17 are bent by a mold to
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`become curved. While the straight, pre-formed length L of the valves 17
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`(illustrated below) is most likely the same as its curved, post-formed length (e.g.,
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`illustrated above as the curved tip length), the length L is not the same as the axial
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`length B. This is an important distinction that the Petitioner repeatedly fails to take
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`in account in its analysis.
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`The ratio of the length L to width W (L/W) of 1.0 to 2.0 was chosen by the
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`inventors to meet certain manufacturing and functional characteristics. Id. at 5:32-
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`34.
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`It is noteworthy that the straight length L of each valve 17 in FIG. 2A is
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`different from the length B of the curved tip in FIG. 3. In other words, the straight
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`length L of each valve 17 in FIG. 2 is a measurement of each valve 17 before being
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`thermally formed into the final shape resulting in the curved tip of FIG. 3. Id. at
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`4:55-57. Furthermore, because the length B of the curved tip is measured from the
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`first inflection point Z, which is not always coterminous with the root end of the
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`valves 17 (as dictated by claim differentiation through dependent claim 2), the first
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`inflection point Z could be located more forwardly into the valves 17 or more
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`rearwardly into the cylindrical first portion 7, yielding a much different length B
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`for the curved tip.
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`In another aspect of the claimed invention set forth in independent claim 5,
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`as illustrated below in another annotated version of FIG. 3 of the ‘075 patent, the
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`outer cylinder 1 further has a second inflection point S adjacent to the leading end
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`portion 7b. Id. at 5:12-16. The first inflection point Z has a different curvature
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`radius than the second inflection point S. Id. at 5:16-19 and 5:64-66. Because of
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`the sharper curvature created by the smaller radius of curvature at the second
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`inflection point Z, the tendency of the valves 17 to become open, when inserted
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`into the human body, is minimized. Id. at 3:7-15.
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`III. GROUND 1 – THE PETITION FAILS TO DEMONSTRATE A
`REASONABLE LIKELIHOOD THAT KOCH ANTICIPATES ANY
`OF THE CHALLENGED CLAIMS
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`Ground 1 should not be instituted for at least three reasons. First, Koch was
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`already considered “pertinent” art by the Examiner during the prosecution of the
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`‘075 patent before allowing the claims. Second, the Petition’s reliance on Koch’s
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`single design patent figure to find the claimed geometric relationships is legal
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`error. And third, Koch fails to teach all the elements of the challenged claims 1-5.
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`IPR2017-00694
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`Patent Owner Preliminary Response
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`A. The Petition Unfairly Second-Guesses the Previous Decision of the
`Office, Causing Inefficient Use of Resources for Both PTAB and
`the Patent Owner
`It is well established that institution of Inter Partes review is discretionary.
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`See 35. U.S.C. § 314(a); 37 C.F.R. § 42.108. The discretion on whether to institute
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`Inter Partes review is guided by 35 U.S.C. § 325(d), which states that “the
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`Director may take into account whether, and reject the petition or request because,
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`the same or substantially the same prior art or arguments previously were
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`presented to the Office.” When a Petitioner relies on the same art that was
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`previously considered by the PTO, the Petitioner is “asking the Board, essentially,
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`to second-guess the Office’s previous decision on substantially the same issues,”
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`imposing an unnecessary burden and expense on the patent owner and the PTO.
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`Nu Mark LLC v. Fontem Holdings 1, B.V., IPR2016-01309, Paper 11 at 6, 12-13
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`(PTAB Dec. 15, 2016).
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`Similar to the Nu Mark IPR proceeding, Ground 1 presents the same art
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`previously considered by the Examiner. In fact, while the primary reference in the
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`Nu Mark IPR proceeding was not identical to previously considered prior art (but
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`deemed to be “the same or substantially the same” as previously presented prior
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`art), Ground 1 relies on Koch, which is the exact reference considered by the
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`Examiner. Specifically, the Examiner identified “Koch et al. (D250663)” as prior
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`art “considered pertinent to application’s disclosure.” Ex. 1002, p. 37 (emphasis
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`added). Koch is also listed on the face of the ‘075 patent. Ex. 1001, p. 1.
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`Notably, Koch is prior art that was searched for and identified by the
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`Examiner. Koch is one of a mere six references identified and considered by the
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`Examiner. Unlike a situation in which the Examiner is forced to consider dozens
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`of prior art references, it could never be reasonably argued that the Examiner
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`neglected, misunderstood, or otherwise ignored Koch. Despite Koch being
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`reviewed and considered, the Examiner decided not to reject any claim based on
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`Koch (although Koch was “considered pertinent” to the claimed invention), likely
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`for the reason that it would have been improper to rely on Koch’s single, non-
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`scaled and imprecise design patent drawing to find the detailed dimensional
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`limitations of the claims of the ‘075 patent. After considering Koch as pertinent
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`prior art, the Examiner allowed the claims. Id. at p. 56.
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`The Petitioner acknowledges that Koch “was made of record by the
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`Examiner.” Petition at p. 24. The Petitioner has attempted to downplay the
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`Examiner’s consideration of Koch, commenting that Koch was “not relied upon
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`during the prosecution of the ‘075 patent.” Id. Yet, the Petitioner has cited to no
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`case law or rule stating that prior art the Examiner “considered pertinent” to the
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`claims prior to allowance should be treated differently from prior art “relied upon.”
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`Importantly, Koch is not a piece of prior art with a lengthy disclosure in
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`which hidden teachings of high relevance may have been overlooked. Koch’s only
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`teaching is a single design drawing—thus, the Examiner understood the entirety of
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`Koch’s disclosure after reviewing its single drawing. In summary, the Examiner
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`searched for and located Koch, surely understood Koch’s single design patent
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`drawing, noted in the file history that Koch was “considered pertinent,” but
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`nevertheless allowed the claims over Koch. The Examiner believed (as the Patent
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`Owner does) that the single, vague drawing of Koch does not anticipate the ‘075
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`patent.
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`Because the Examiner evaluated and considered Koch before allowing the
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`‘075 patent, the Patent Owner respectfully requests the Board to exercise its
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`discretion under 35 U.S.C. § 325(d) and deny institution of Ground 1 (and any
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`other contention based on the previously considered Koch reference) because the
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`same prior art was previously presented to the Office.
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`B.
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`The Petitioner Fails to Demonstrate a Reasonable Likelihood that
`Koch Teaches Claim Elements 1g and 1h, Claims 2 and 4, and
`Claim Elements 5f, 5h, and 5i
`Ground 1 of the Petition is based entirely on the Petitioner’s and its Expert’s
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`assumptions as to what Koch discloses in its single, vague design patent drawing.
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`However, reliance on these assumptions is improper. And, even if proper (which it
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`is not), Koch would still fail to disclose all of the claimed elements.
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`1.
`Reliance on Patent Drawings to Show Precision is Improper
`The Petitioner and its Expert attempt to measure and analyze that which is
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`simply not intended for measurement purposes. They improperly rely on Koch’s
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`figure as if it were an engineer’s mechanical drawing with precise dimensions and
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`an exact scale. For authority, the Petitioner cites to two cases for the general
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`proposition that patent drawings can be used in anticipation or obviousness
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`rejections. Petition at p. 24.
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`Yet, the Petitioner ignores the overwhelming case law prohibiting use of
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`patent drawings to arrive at precise dimensions, proportions, or scale of the
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`drawings when no such disclosure is presented in the prior art reference’s
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`specification. Nystrom v. TREX Co, Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005)
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`(emphasizing that “patent drawings do not define the precise proportions of the
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`elements and may not be relied on to show particular sizes if the specification is
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`completely silent on the issue”); Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
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`222 F.3d 951, 956 (Fed. Cir. 2000); In re Wright, 569 F.2d 1124, 1127 (CCPA
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`1977) (“[a]bsent any written description in the specification of quantitative values,
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`arguments based on measurement of a drawing are of little value”); In re Chitayat,
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`408 F.2d 475, 478 (CCPA 1969) (“in view of the absence in [the reference’s]
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`specification of any written description of the quantitative value of the image
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`displacement relative to fiber diameter, the arguments based on mere measurement
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`of the drawings appear to us of little value”); MPEP § 2125 (II), p. 2100-66.
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`Here, to find the precise dimensions and specific proportions for their
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`invalidity allegations, the Petitioner is forced to develop enlarged versions of one
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`aspect of Koch’s figure, which, by itself, may introduce scaling errors and is also
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`disfavored under the law. See In re Wilson, 312 F.2d 449, 454 (CCPA 1963)
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`(“Patent drawings are not working drawings and this argument is predicated,
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`moreover, on a greatly enlarged section of a small drawing obviously never
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`intended to show the dimensions of anything. We do not find it persuasive”).
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`In short, because it is a design patent, Koch’s “specification is completely
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`silent on the issue” of dimensions and proportions of its “single FIGURE.” Ex.
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`1004, p. 1. Based on well-established case law, the Petitioner’s Ground 1 should
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`fail for this reason alone.
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`2. Koch Fails to Disclose Claim Element 1g
`Even if reliance on the single figure of Koch is proper (which it is not), the
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`Petitioner and its Expert misconstrue the disclosure of Koch and arbitrarily
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`measure the alleged radius and axial length in their hasty attempt to find a teaching
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`of claim element 1g. By way of overview, claim element 1g requires the following
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`configuration:
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`wherein a ratio of a radius of an outer face at an
`inflection point of a boundary between a maximum
`diameter portion of said first diameter portion and said
`curved face portion to an axial length of the outer face
`from the inflection point to the leading end of said curved
`face portion is at most 0.8.
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`The claimed configuration is represented below, by way of example, in the
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`annotated version of FIG. 3 of the ‘075 patent.
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`FIG. 3 of the ‘075 patent is a side elevation view that shows the state in which
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`valves 17 are curved. Ex. 1001, 3:26-27. As a two-dimensional side view, FIG. 3
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`clearly shows the example configuration with a radius A and an axial length B, as
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`well as the boundary between the maximum diameter portion and the curved face
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`portion. The claimed ratio of A/B being at most 0.8 is clearly described and
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`illustrated in the side view of the ‘075 patent.
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`Unlike the clear representation from FIG. 3 of the ‘075 patent above, the
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`Petitioner relies on Koch’s three-dimensional “isometric” view in its single figure
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`in which many of the dimensions are not illustrated clearly, if at all, and which do
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`not appear equal to each other (as would be required in a true “isometric” view).
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`For example, the inflection point (“Z” in FIG. 3 above) is the point “at which the
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`large diameter portion leads into the curved face portion 7a” (Ex. 1001, 5:12-14)
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`and its location is critical because the axial length “B” is determined “from the
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`inflection point to the leading end of said curved face portion” in independent
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`claims 1, 5, and 6. Yet, the Petitioner arbitrarily picks and chooses an erroneous
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`location for the “inflection point” that is clearly not the inflection point, leading to
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`an improper and erroneous calculation for the ratio of radius “A” to axial length
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`“B.” Additionally, the Petitioner’s red arrowed line to measure the axial length
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`“B” appears at an arbitrary position somewhere near, but not at, “the leading end”
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`as required in independent claims 1, 5, and 6. Ex. 2003, ¶¶ 52-55 (Declaration of
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`Donald Sheldon). The Petitioner’s arbitrary position is completely erroneous,
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`based in great part on a