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`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SHENZHEN KEAN SILICONE PRODUCT CO., LTD.,
`Petitioner,
`
`v.
`
`PKOH NYC, LLC,
`Patent Owner.
`__________
`
`Case IPR2017-01327
`Patent 7,959,036 B2
`__________
`
`Record of Oral Hearing
`Held: August 29, 2018
`_________
`
`
`
`
`
`Case IPR2017-01327
`Patent 7,959,036 B2
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`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`PETE WOLFGRAM, ESQ.
`XIYAN ZHANG, ESQ.
`Stratum Law LLC
`150 Monument Road, Suite 207
`Bala Cynwyd, PA 19004
`(262) 501-2858 (Wolfgram)
`(215) 395-8756 (Zhang)
`pwolfgram@stratumlaw.com
`xzhang@stratumlaw.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`TOD M. MELGAR, ESQ.
`STEVEN Z. LUKSENBERG, ESQ.
`Sills Cummis & Gross
`101 Park Avenue, 28th floor
`New York, NY 10178
`(212) 643-6500 (Melgar)
`(212) 643-7000 (Luksenberg)
`tmelgar@sillcummis.com
`sluksenberg@sillscummis.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`August 29, 2018, commencing at 1:00 p.m. at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2017-01327
`Patent 7,959,036 B2
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`P R O C E E D I N G S
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`1:02 p.m.
`JUDGE KINDER: Please be seated. Good afternoon,
`everyone. I'm Judge Kinder, and with me are Judges Tartal and
`Weatherly, and today we are going to call Case No. IPR 2017-01327,
`Shenzhen Kean Silicone Product Company v PKOH NYC LLC, and
`this involves US Patent No. 7,959,036.
`If I could have each party, starting with Petitioner, stand up
`and enter an appearance and tell us who will be arguing today.
`MR. WOLFGRAM: Good afternoon, Your Honors. My
`name is Pete Wolfgram. I represent Shenzhen Kean Silicone
`Company. I'm joined by my colleague, Mr. Xiyan Zhang, who is
`listed as lead counsel in this case, but I will be presenting.
`JUDGE KINDER: All right, Mr. Wolfgram, thank you.
`And for the Patent Owner?
`MR. MELGAR: Tod Melgar for Patent Owner, PKOH NYC
`LLC, from Sills Cummis & Gross. With me today is Steve
`Luksenberg, also from Sills Cummis & Gross. I'll be arguing today.
`JUDGE KINDER: All right. That's Mr. Melgar, right?
`MR. MELGAR: Yes.
`JUDGE KINDER: Thank you, sir. Just to go over a few
`preliminary matters; the parties, I think, requested no more than 30
`minutes in this case. I think Petitioner may not have had a specific
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`time. In our order, we granted that each party is accorded 40
`minutes. I believe, based upon the issues involved in the case, that that
`should be enough time. The argument time will be divided up;
`Petitioner will go first, because the Petitioner has the burden of proof
`in the matter. Petitioner may reserve time; I think in the order I said
`up to 15 minutes. How much time would you like to reserve?
`MR. WOLFGRAM: Five minutes, Your Honor.
`JUDGE KINDER: Again, this was in our order, but just to
`reiterate that the parties were allowed to produce demonstratives to
`aid in the oral argument, but that's all those are, are aids in oral
`argument. As we stated in our order, they are not evidence, but
`merely an aid to use during the hearing.
`We looked at the parties' objections; I believe Patent Owner
`had a couple of objections that you are free to discuss during the
`hearing today, but you should also remember that we consider
`demonstrative exhibits only to the extent that they include arguments
`or evidence that are already of record in the proceedings, and if that
`evidence or argument is in the proceeding, and there was no objection
`that was supported by, for example, a motion to exclude or other
`motion, we're not likely to sustain objections to underlying evidence
`or materials unless they were objected to in the original filings. So
`just to give you a little about where we're at with that, and depending
`on how much time you want to spend on that, you may.
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`We'll call the Petitioner first, and Mr. Wolfgram, you have 35
`minutes. I don't know for sure if you have a timer in front of you,
`but we can certainly let you know when you've got five minutes left, if
`that's okay.
`MR. WOLFGRAM: Thank you very much.
`JUDGE KINDER: All right, Mr. Wolfgram. You may
`proceed now.
`MR. WOLFGRAM: All right, thank you. Good afternoon,
`Your Honors, my name is Pete Wolfgram. I represent Shenzhen
`Kean Silicone Product Company. Today I'm going to go over the
`major points of contention raised throughout the course of these
`proceedings and also address some of the points made in Opposing
`Counsel's demonstratives, which we were served in advance.
`I would say that the technology in this case is relatively
`simple. The '036 patent discloses an elastomeric dispensing
`container. It has an elastomeric receptacle body, a neck, an integral
`gasket at the end there, which sticks out. It has a plastic sleeve,
`Figure 2C, which fits over the integral gasket. The integral gasket is
`compressed inward, goes through the plastic sleeve, and then is
`connected to the top of the plastic sleeve. There was also an
`ordinary hinged cap which is screwed onto the plastic sleeve via an
`ordinary screw and threading finish.
`The key limitations in Independent Claim 1, which we argued
`was obvious based in light of Cho in view of Mueller. The key
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`limitation is a resilient, interformable wall which is a predetermined,
`non-deformed configuration. We argue that our primary reference,
`Cho, covered that limitation.
`The second key limitation is a cap having a lid covering, and
`we argue that the Mueller reference covered that limitation, and then
`when the two elements are combined, which a person skilled in the art
`would have a motivation to do, it renders the '036 patent, specifically
`this claim, obvious.
`JUDGE KINDER: Do you have an argument that Cho alone
`meets the cap limitation?
`MR. WOLFGRAM: No, we do not, Your Honor. We
`relied on Mueller for that limitation.
`JUDGE KINDER: Because I was looking at what we
`instituted on; we instituted on Cho alone, on Claim 1 --
`MR. WOLFGRAM: I believe --
`JUDGE KINDER: -- for obviousness.
`MR. WOLFGRAM: So in Mueller 1, 3, and 6, I copied and
`pasted this from the trial list to the document.
`JUDGE KINDER: But the first ground is Cho for Claim 1
`alone, correct?
`MR. WOLFGRAM: Yes, that's correct.
`JUDGE KINDER: So you'd also have --
`MR. WOLFGRAM: Oh, yes. Let me go back. Initially,
`we did argue that Cho, with the nipple cap, satisfied that limitation.
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`JUDGE KINDER: Are you still maintaining that position?
`MR. WOLFGRAM: I'm not going to argue it today. Our
`main argument is Cho in view of Mueller.
`JUDGE KINDER: All right, go on.
`MR. WOLFGRAM: Okay, thank you. So here's our
`primary reference, the Cho reference. At first glance, the similarities
`between the '036 patent are immediately apparent. Cho also has a
`receptacle body, an integral gasket that's on top of the neck. It has a
`plastic sleeve which fits over the integral gasket, and then the nipple
`cap. And we argue in light of Cho, that that would simply be
`substituted with the ordinary hinge cap in Muller.
`JUDGE KINDER: And again, you also argue the cap in Cho
`alone --
`MR. WOLFGRAM: Yes.
`JUDGE KINDER: -- satisfies Claim 1, the claim limitations,
`
`right?
`
`MR. WOLFGRAM: Yes.
`JUDGE KINDER: Okay.
`MR. WOLFGRAM: So the Cho reference discloses a bottle
`body made of a silicone material, and that is the main point of
`contention. Patent Owner argued that Cho must disclose a hard
`silicone container body to overcome the Cho reference. Our
`response is that Patent Owner's interpretation of a hard silicone
`container body would render the baby bottle in Cho completely
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`inoperable and does not make sense in light of the figures and physics.
`This was --
`JUDGE KINDER: Let me ask a couple of questions about
`the underlying reference. We might have to explain this to the court
`reporter; when we're talking about silicon, which is S-I-L-I-C-O-N --
`MR. WOLFGRAM: Right.
`JUDGE KINDER: -- versus silicone, which is, as written up
`there, S-I-L-I-C-O-N-E. So if we make sure the court reporter
`understands which on we're referring to --
`MR. WOLFGRAM: Sure.
`JUDGE KINDER: The reference lists silicon, but I presume
`that was some type of typographical error --
`MR. WOLFGRAM: Yes.
`JUDGE KINDER: -- in transcription?
`MR. WOLFGRAM: Correct.
`JUDGE KINDER: Could silicon, which is like the naturally-
`occurring element that can be refined and used on computer chips; is
`that something that is used in these types of manufacturing processes?
`MR. WOLFGRAM: Our expert didn't think so.
`JUDGE KINDER: Okay. So the Patent Owner seemed to
`almost concede that they probably meant silicone here.
`MR. WOLFGRAM: Well, they argue that it was based on --
`they took out the opportunity to argue that it was silicon, but we argue
`that that was an unreasonable interpretation in light of the known uses
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`for silicon in the semiconductor industry. It's just not used in these
`products.
`JUDGE KINDER: Okay. So now we're talking about
`silicone, which has many varied properties, but it's also used in a
`number of manufacturing processes, sometimes in lieu of plastics.
`MR. WOLFGRAM: Correct.
`JUDGE KINDER: Okay.
`MR. WOLFGRAM: Again, so in Patent Owner's
`interpretation, he must argue that the silicone container body is hard,
`not soft. We argue that that was unreasonable, just based on the
`figure there. So Figure 5 shows the integral gasket having precisely
`the same diameter as the plastic sleeve. In order to fit the integral
`gasket through the plastic sleeve, it must collapse inwards, move
`through the sleeve, where it then bounces back to its original shape.
`It is then, "fitted and coupled onto the plastic sleeve," to quote the
`specification of Cho. Figure 3 is a better depiction of this.
`JUDGE KINDER: You say the gasket must be squeezed
`inward to allow the plastic sleeve to fit over it.
`MR. WOLFGRAM: Correct.
`JUDGE KINDER: Couldn't the plastic sleeve be resilient
`alone, without the bottle also being resilient?
`MR. WOLFGRAM: There is no indication in the Cho
`reference. The plastic sleeve is rigid.
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`JUDGE KINDER: So the sleeve 22 in Cho is made of a
`plastic?
`MR. WOLFGRAM: Correct, yes. It's referred to as a
`plastic bottle coupler.
`JUDGE KINDER: So that would presume it's not as flexible
`as the silicone body?
`MR. WOLFGRAM: Correct.
`JUDGE KINDER: And that's your argument?
`MR. WOLFGRAM: Yes.
`JUDGE KINDER: Okay.
`MR. WOLFGRAM: And the lead lines in Figure 3
`demonstrate that the integral gasket is compressed inwards, pushed
`through the plastic sleeve, and then move outwards to retain its
`original shape, where it is then fitted and coupled onto the top plastic
`sleeve.
`
`JUDGE KINDER: So in your view, this is evidence that the
`body itself would also be resiliently-deformable silicone?
`MR. WOLFGRAM: Correct. That Cho discloses an
`elastomeric silicone is consistent with the well-known characteristics
`of silicone in the container and bottling industry, namely that the
`silicone is known to be rubber-like and flexible; it is an extremely
`versatile silicone; it has been widely used in the container industry for
`decades. Our petition cited the Vanderburg reference from 1966,
`which discloses a non-rigid silicone container.
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`JUDGE KINDER: I understand all the prior art --
`MR. WOLFGRAM: Okay.
`JUDGE KINDER: -- it's not actually prior art, but the
`tertiary type references that shows silicone can be that. But my
`question is, a person of skill in the art would know they could adopt a
`soft kind of flexible silicone, and the reference talks about using a soft
`silicone for the tip of the nipple. Why would one of skill in the art
`decide, in this case, to make the body itself of soft silicone that's
`flexible?
`MR. WOLFGRAM: Well, the advantages of elastomeric
`silicone were described in those tertiary references, namely that you
`can regulate the internal pressure of the bottle by just squeezing the
`side walls. Also, that was referenced in Okosumi and the Myers
`reference.
`JUDGE KINDER: So these tertiary references you're
`bringing in are really to explain why a person of ordinary skill in the
`art with different design options would pick the soft silicone?
`MR. WOLFGRAM: Right.
`JUDGE KINDER: And not necessarily prove that, Hey, we
`would use this type of soft silicone, but just to show design
`characteristics that would lead one skilled in the art to that decision?
`MR. WOLFGRAM: Correct. And as I mentioned, silicone
`has been widely used in the container and bottling industry. It's
`durable, flexible, chemically inert, heat resistant. It has good
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`formability, so it's easy to manufacture. It's got great breakage
`resistance; it's shatterproof, so a person skilled in the art would
`understand this when viewing the Cho reference, and would
`understand that the body is elastomeric.
`And then, elastic silicone is specifically useful in baby bottles.
`Patent Owner argued that Cho teaches away from an elastomeric
`silicone bottle; that it has to be a hard bottle, because baby bottles,
`according to Patent Owner, would not be elastomeric silicone,
`because it would force too much liquid into the baby's mouth.
`To respond to that, we cited that tertiary reference of the
`Okosumi reference, which discloses a baby bottle having two silicone
`portions: hard silicone portion 1 on the bottom there, and a thin
`silicone portion 2 --
`JUDGE KINDER: Well, we really don't know how that thin
`silicone portion operates, do we? The Patent Owner's position is that
`it just collapses, basically. It wouldn't be resilient.
`MR. WOLFGRAM: Well, the language says that it shrinks
`at ambient pressure, and Patent Owner argued that it just shrinks, but
`it doesn't return to its -- it's not elastic. We argue that Okosumi
`doesn't disclose a disposable baby bottle or a baby bottle with a bag-
`like liner, as Patent Owner necessarily contends. We argue that the
`zig-zag lines are an indication that the bottle, prior to feeding the
`baby, the air is squeezed through the nipple, and the baby feeds from
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`the bottle. After the baby is finished, the air re-enters the bottle, and
`the thin silicone portion resumes its original shape.
`JUDGE KINDER: And again, this reference isn't prior art;
`it's just used to show its own characteristics of silicone?
`MR. WOLFGRAM: Correct; in the baby bottle industry,
`because one of their main arguments was that the Cho reference
`teaches away from soft silicone, because baby bottles would never
`have resiliently-deformable characteristics; they would be rigid. So
`a designer would never interpret Cho as having a resiliently-
`deformable receptacle body.
`JUDGE KINDER: Okay.
`MR. WOLFGRAM: And the Patent Owner's expert raised
`several arguments how why bottles do not have soft side walls for the
`following reason: their main reason was the choking hazard, that the
`soft baby bottle would allow the baby to force too much liquid into
`her mouth.
`JUDGE KINDER: I feel like the focus of this case kind of
`shifted to what's proper feeding technique for baby bottles, as opposed
`to the invention itself, which is just an elastomeric container.
`MR. WOLFGRAM: Right.
`JUDGE KINDER: I think you guys came back with a decent
`point that depending on the age of the toddler or infant, these things
`would work differently for a 9- to 12-month-old than a 6-month-old.
`MR. WOLFGRAM: Right.
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`JUDGE KINDER: But try to stay focused on the claim
`itself, but bring all these back into it, if you can. We appreciate -- I
`think your rebuttal evidence here shows on Slide 15 that these current
`bottles are made of a soft silicone, but none of these are prior art. Is
`that right?
`MR. WOLFGRAM: They're not prior art, but Patent
`Owner's expert made a general argument as to why baby bottles
`would not have hard silicone shells, would not have a resiliently-
`deformable silicone shells. We thought that the argument was very
`questionable, just given the abundance of elastomeric silicone bottles
`on the market today.
`JUDGE KINDER: So by introducing these, it brings a few
`things into question. For example, has the nipple technology
`changed, where they could have soft, and they couldn't have it before?
`So there's a few questions by bringing these in; it didn't seem to be
`supported in your expert declaration, like the ancillary design features,
`whether or not any of those would impact the ability to use soft
`silicone now versus at the time of the invention.
`MR. WOLFGRAM: Right. Well, these products do
`mention the exact same advantages for soft silicone that the Stroud
`reference and the Okosumi reference and the Myers reference cited,
`namely that it's easier for the toddler to hold. That advantage was
`referenced in the Stroud reference. It regulates the internal pressure
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`better with the soft side wall that was mentioned in the Okosumi and
`the Myers reference.
`JUDGE KINDER: Okay. So basically, you're relying upon
`these just to support your original expert opinion that the design
`choice of soft silicone would be a design choice that could be chosen
`for the existing bottle of Cho, based upon the disclosure within Cho
`itself?
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`MR. WOLFGRAM: Correct. So in summary, based on the
`known advantages of soft silicone, the versatility of it, the text in Cho
`that the plastic cap would not fit over the integral gasket -- over a hard
`integral gasket -- and the tertiary references, we believe that Cho
`teaches a resiliently-deformable silicone container bottle.
`So we then combined that with the Mueller reference, which is
`basically an ordinary hinged cap.
`JUDGE KINDER: Is Mueller made of plastic?
`MR. WOLFGRAM: Yes.
`JUDGE KINDER: So that's one of the things that Patent
`Owner mentioned, and you point out Cho, that the purpose of using
`silicone is for chemical inertness, and here, Mueller is plastic. So
`wouldn't combining Mueller with Cho kind of defeat the purpose of
`Cho, which is to use silicone, an inert chemical, to not release toxins
`by having Mueller's plastic toxin cap?
`MR. WOLFGRAM: Well, that is Patent Owner's argument
`based on a very narrow interpretation of 103, if I'm understanding you
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`correctly. That was one of the reasons cited in Cho, that the
`chemical inertness -- but again, when combined with the cap in Cho,
`you're not drinking from it, like a baby.
`JUDGE KINDER: Okay.
`MR. WOLFGRAM: You're combining --
`JUDGE WEATHERLY: You combine the cap in Mueller?
`MR. WOLFGRAM: Correct.
`JUDGE WEATHERLY: Okay.
`JUDGE KINDER: So basically, you're saying we need to
`not look at Cho as a feeder -- as a baby bottle -- but as a container?
`MR. WOLFGRAM: Correct.
`JUDGE KINDER: The Patent Owner's argument seems to
`really focus on Cho as a baby bottle, as a dispenser of liquid for
`people to consume. That underlying purpose is distorted by the
`combination, or at least negatively impacted in several ways, which
`we'll talk about. But in order to get where you're at, we have to look
`at Cho as a container.
`MR. WOLFGRAM: Correct, and that's supported by KSR.
`You're right, Patent Owner argued that Cho and Mueller are no
`analogous art, but as In re Icon argued, familiar items may be obvious
`beyond primary purposes, and the KSR test, which is cited in
`USPTO's guidelines for exemplary obviousness says the combination
`of familiar elements according to known methods is likely to be
`obvious when it does no more than yield predictable results.
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`JUDGE KINDER: Yes, but in the overall analysis of
`obviousness, we look at whether or not one of skill in the art would
`pick this particular combination, and if they're looking at Mueller or
`Cho as a baby bottle for a feeder, there would be no reason to put the
`plastic cap in Mueller on it. I mean, two reasons against it, right?
`You have the fact that it's plastic; then the second fact is, it's kind of a
`squeeze-release type of cap, which wouldn't be good for feeding
`babies at all. It wouldn't work, right?
`MR. WOLFGRAM: Well, our position is that it's a very
`narrow interpretation of Section 103. There's nothing particularly
`unique about the receptacle body in Cho that suits it for a baby bottle.
`It can be used for a variety of purposes, as our expert testified.
`JUDGE KINDER: Okay. But you do agree that the
`combination would seemingly negatively impact the ability to use
`Cho as a baby bottle?
`MR. WOLFGRAM: With the plastic cap in Mueller?
`JUDGE KINDER: Correct.
`MR. WOLFGRAM: I agree; a baby bottle would not drink
`from a plastic cap in Mueller, no.
`So going back to the KSR test, again, we just believe that it's a
`simple substitution without having any modifications of the nipple cap
`in Cho with the plastic cap in Mueller. Our expert had several
`economic design and other motivation for combining the two
`references.
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`JUDGE KINDER: So we're pretty familiar with this; I mean,
`we've certainly looked at it, and you talk about different market needs,
`that they're essentially interchangeable, that one can be used for
`another. One who is skilled in the art would know the
`interchangeability. Patent Owner comes back with a pretty focused
`argument that, okay, you could do this. There could be hundreds of
`potential combinations with bottle/cap, but why would you pick this
`specific combination? Do we need to get to the why this particular
`combination would be picked in order to find it obvious?
`That's what they say you're lacking: Why would a person of
`skill in the art be motivated to combine Cho's baby bottle with the cap
`in Mueller to arrive at the '036 patent?
`MR. WOLFGRAM: Right.
`JUDGE KINDER: First of all, do we need to get to the why?
`And then, what is the why?
`MR. WOLFGRAM: Well, why would they pick the
`particular container in Cho?
`JUDGE KINDER: Correct. Why would they make the
`combination? That's the question. That's the legal question.
`MR. WOLFGRAM: Right. We argue that the receptacle
`design in Cho, again, wouldn't need any modification with the plastic
`cap in Mueller.
`JUDGE KINDER: Well, you're answering why they could
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`do it.
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`MR. WOLFGRAM: Right.
`JUDGE KINDER: And I think we all agree, they can do it.
`MR. WOLFGRAM: Right. Why they would do it?
`Without making any modifications to the design, they can greatly
`expand the marketability of the receptacle bottle, simply by swapping
`the nipple cap with the hinged cap, due to the standardized finishes,
`the threading and the ridges on the cap and the plastic sleeve. So
`with minimal expense, you can expand your market.
`JUDGE KINDER: So I understand the economics. It
`sounds like you're kind of resting on your expert's economic analysis,
`that they're interchangeable and would allow more options for
`producers to pick this. But the question still is, why would this
`particular combination be picked out of all of the combinations
`possible that are on the market? What's the market justification for
`why this one would be advantageous, that's in the record before us?
`MR. WOLFGRAM: Other than the expert's testimony, I
`don't have anything off the top of my head.
`JUDGE KINDER: So back to my first question: Do we need
`to reach the why? If you've proven that they're clearly
`interchangeable, that the industry substitutes bottles and caps pretty
`interchangeably, and if they can be compatible, it's almost like an
`interchangeability issue. Do we even need to reach the why under
`KSR analysis?
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`MR. WOLFGRAM: I don't think so, under KSR. I mean,
`the KSR says that if you can swap out known elements and they have
`pretty typical variations, then it would likely be obvious.
`JUDGE KINDER: Why are the number of variations in this
`case predictable?
`MR. WOLFGRAM: The number of variations?
`JUDGE KINDER: Yes. You said any cap for any bottle,
`but couldn't it be an unlimited number of potential caps and bottles?
`Or is it a smaller, predictable subset?
`MR. WOLFGRAM: Well, there would be -- bottles and caps
`come in all shapes and sizes, but they're fundamentally the same.
`They have a receptacle body and then a cap with the ordinary screw
`threading, so there might be a great variety in form. But in actuality,
`the receptacle body is a reusable storage container, and the cap is just
`what it is. It's a plastic cap.
`JUDGE KINDER: Go ahead.
`MR. WOLFGRAM: So I'm going to move on to --
`JUDGE KINDER: If you can, yes. Claim 2, we'd like to
`talk about that. First question I think I have is, what is a squeeze
`bulb?
`
`MR. WOLFGRAM: A squeeze bulb? A bulb that, in our
`interpretation, has a rounded end wall.
`JUDGE KINDER: Did you offer any interpretation, or is it
`just kind of inherent in your analysis?
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`MR. WOLFGRAM: It's inherent in our analysis.
`JUDGE KINDER: Okay. So why would Cho be a bulb,
`then? What you just showed me, a rounded top, Cho doesn't have.
`MR. WOLFGRAM: Right. We argue that in light of the
`Daley case and the Gardener case, that it's a de minimis design change
`over the bottle in Cho; that basically all they're doing is rounding off
`the end wall of the receptacle body in Cho.
`JUDGE KINDER: Why is that design change de minimis?
`I mean, that's the heart of this issue, right? Why is it a de minimis
`design change?
`MR. WOLFGRAM: Patent Owner hasn't -- the advantages
`of a squeeze-ball design in the receptacle industry are obvious, in that
`it reduces the amount for force necessary for --
`JUDGE KINDER: Were they obvious at the time of filing
`though?
`MR. WOLFGRAM: According to our expert, they were.
`He testified to that, and Patent Owner's argument that a baby bottle
`would not have a rounded end, and therefore he argued that Cho
`teaches away from a squeeze bulb configuration was countered by our
`Patent Owner's argument that that's not the case. Many baby bottles
`do have rounded ends --
`JUDGE KINDER: The baby bottles you showed us with
`rounded ends are all recent, is that right?
`MR. WOLFGRAM: That's correct, yes.
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`JUDGE KINDER: So you didn't show us any prior art with
`rounded baby bottle ends?
`MR. WOLFGRAM: No, Your Honor.
`JUDGE KINDER: Okay. So as far as we know, at the time
`of filing, you haven't produced any rounded baby bottles that would
`show compatibility with Cho for a bulb, is that right?
`MR. WOLFGRAM: No prior art specifically, but our expert
`did testify that at the time of Cho, that baby bottles could have a
`squeeze-bulb shape.
`JUDGE KINDER: They could; I don't think that's an issue.
`But why is that a de minimis design change, though? It seems kind
`of -- especially for baby bottles, it seems like, even aesthetically, and
`even for the baby to hold it, it's a much different product, in my mind.
`MR. WOLFGRAM: Well, again, we are using, I guess, a
`broader interpretation in Section 103, that because the container is a
`familiar item of Cho, it's basically a reusable storage container; it's not
`particularly suited to baby bottles. In that light, simply rounding off
`the end wall would be a de minimis design change from Cho.
`JUDGE KINDER: And your support for that is just your
`expert testimony saying that that's what you believed at the time of
`filing?
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`MR. WOLFGRAM: Correct, and the case law of Gardner
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`and --
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`JUDGE KINDER: Okay. You can move on.
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`MR. WOLFGRAM: Okay. Now I'd like to talk about
`Independent Claim 14, which recites an annular rib formed -- can I
`ask for a time check, Your Honor?
`JUDGE KINDER: You have seven and a half minutes --
`MR. WOLFGRAM: All right, thank you.
`JUDGE KINDER: -- in your opening time.
`MR. WOLFGRAM: Thank you. Independent Claim 14
`recites an annular rib formed on the sleeve lower face, and an annular
`channel formed on the integral gasket facing the sleeve lower face.
`We argue that Cho strongly suggests the use of an annular rib and
`channel to fasten the soft gasket to the plastic sleeve. In our reply
`brief, I had quoted some language of Cho based on the words, fitting
`and coupling.
`JUDGE WEATHERLY: So there's no explicit --
`MR. WOLFGRAM: It does not --
`JUDGE WEATHERLY: -- structure; the claimed structure --
`MR. WOLFGRAM: Correct, sorry.
`JUDGE WEATHERLY: It's very difficult for him, the court
`reporter, if we speak over each other.
`MR. WOLFGRAM: Sorry.
`JUDGE WEATHERLY: So your argument, as I understand
`it, is that because Cho says that the structure seals, that suggests the
`claimed channel and rib structure in Claim 14?
`MR. WOLFGRAM: Correct.
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`JUDGE WEATHERLY: And what exactly is the evidence
`testimony from your expert?
`MR. WOLFGRAM: That the annular rib and channel
`mechanisms are not -- not only have they been used for a long time in
`the receptacle industry, and using annular ribs would be immediately
`apparent to a person skilled in the art, based on the language of Cho --
`JUDGE WEATHERLY: What about the particular
`arrangement of the channel and the rib? It's not really just the
`channel or the rib; it's the channel that faces a particular direction and
`to a particular structure and a complementary rib, right?
`MR. WOLFGRAM: Correct, correct. He specifically
`argued --
`JUDGE WEATHERLY: Where is the argument? Is it in a
`supplementary declaration, or --
`MR. WOLFGRAM: It's in the second declaration.
`JUDGE WEATHERLY: Okay. Which paragraph, do you
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`know?
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`JUDGE KINDER: It's like 46. I think it's paragraph 46, is
`that correct?
`JUDGE WEATHERLY: It appears to address Claim 24.
`MR. WOLFGRAM: Sorry about that.
`JUDGE KINDER:
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