Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 33
`Entered: December 3, 2018
`
`
`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
`_______________
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL,
`and ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2017-01327
`Patent 7,959,036 B2
`
`
`Shenzhen Kean Silicone Product Co., Ltd. (“Petitioner”) filed a
`
`Petition (Paper 1, “the Petition” or “Pet.”)1 to institute an inter partes review
`
`of claims 1–7, 10–15, 20–32, and 35–38 of U.S. Patent No. 7,959,036 B2
`
`(Ex. 1001, “the ’036 patent”). PKOH NYC, LLC (“Patent Owner”) filed a
`
`Preliminary Response (Paper 11, “Prelim. Resp.”).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`
`demonstration of a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one challenged claim, we instituted an inter partes review,
`
`but not as to all challenged claims or as to all alleged grounds of
`
`unpatentability. (Paper 14, “Dec.,” 44).
`
`During the trial, Patent Owner filed a Patent Owner Response
`
`(Paper 18, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner
`
`Response (Paper 24, “Pet. Reply”). An oral hearing was held on August 29,
`
`2018, and a copy of the transcript has been made part of the record.
`
`Paper 32 (“Tr.”).
`
`On April 24, 2018, the Supreme Court determined that a decision to
`
`institute under 35 U.S.C. § 314 may not institute review of fewer than all
`
`claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348,
`
`1359–60 (2018). On April 26, 2018, the Office issued Guidance on the
`
`Impact of SAS on AIA Trial Proceedings, which states that “if the PTAB
`
`institutes a trial, the PTAB will institute on all challenges raised in the
`
`petition.” https://www.uspto.gov/patents-application-process/patent-trial-
`
`
`1 See Decision on Institution, Paper 14, 2–4 (determining that we only
`consider those grounds and arguments presented in the original Petition
`(Paper 1) and expunging the First Amended Petition and the Second
`Amended Petition from the proceeding as unauthorized filings).
`
`2
`
`

`

`IPR2017-01327
`Patent 7,959,036 B2
`
`and-appeal-board/trials/guidance-impact-sas-aia-trial. Subsequently, on
`
`April 30, 2018, we issued an Order modifying the Decision on Institution “to
`
`institute on all of the challenged claims and all of the grounds presented in
`
`the Petition.” Paper 19, 2.
`
`Pursuant to our authorization (Paper 21), the parties thereafter filed a
`
`“Joint Motion to Limit Proceeding” (Paper 22), requesting that we “limit[]
`
`the inter partes review proceeding IPR2017-01327 to the grounds and
`
`claims instituted on December 6, 2017, in the Decision on Institution
`
`(Paper 14).” Paper 22, 2. Specifically, the parties requested that the
`
`proceeding be limited to the following claims and grounds:
`
`Reference
`
`Cho
`
`Basis
`
`§ 103
`
`Claim(s)
`
`1, 2, 14, 21, 22, 24, and 26
`
`Cho and Mueller
`
`§ 103
`
`1, 3–6, 10–13, 20, and 28–32
`
`Cho, Mueller, and Rohr
`
`Cho and Raja
`
`Cho and Trecek
`
`§ 103
`
`§ 103
`
`§ 103
`
`31, 32, and 35–38
`
`7
`
`24 and 26
`
`Paper 22, 4; see also Paper 14, 44. On May 24, 2018, we granted the
`
`Parties’ Joint Motion to Limit Proceeding. Paper 23, 2. Accordingly, this
`
`Decision addresses only the claims and grounds set forth above.
`
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`
`claims for which we instituted trial. Based on the final trial record, we
`
`determine that Petitioner has shown, by a preponderance of the evidence,
`
`that claims 1, 2–7, 10–13, 20–22, 24, 26, 28–32, and 35–38 of the ’036
`
`patent are unpatentable. Petitioner has not shown that claim 14 is
`
`unpatentable.
`
`3
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`

`

`IPR2017-01327
`Patent 7,959,036 B2
`
`
`I.
`
`BACKGROUND
`
`A.
`
`The ’036 Patent (Ex. 1001)
`
`The ’036 patent is titled “Elastomeric Dispensing Container” and is
`
`directed to “[a]n elastomeric dispensing container for a fluid.” Ex. 1001,
`
`[54], [57]. The invention “relates broadly to containers for storing and
`
`dispensing fluids, [and] specifically to such containers of the type utilizing
`
`an elastomeric receptacle and a dispensing cap.” Id. at 1:17–19. As
`
`explained by the ’036 patent, “it is an object and advantage of the present
`
`invention to provide an elastomeric dispensing container comprising an
`
`elastomeric receptacle and a dispensing cap in secure and substantially fluid-
`
`tight engagement which also facilitates attachment and detachment of the
`
`cap.” Id. at 1:53–57. The elastomeric receptacle defines an internal
`
`chamber and has “an integrally formed gasket extending radially from an
`
`opening formed on a lower end and a receptacle neck providing
`
`communications between the chamber and the opening.” Id. at 1:66–2:4. A
`
`cap having a lid covers the receptacle opening. Id. at 2:4–10.
`
`The “flexible and resilient” receptacle 200, depicted below in
`
`Figure 2B, is described as being made of an “elastomeric material,”
`
`“preferably silicone for its favorable mechanical properties and chemical
`
`inertness, although any other suitable elastomeric material could be used.”
`
`Id. at 2:55–57.
`
`4
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`

`IPR2017-01327
`Patent 7,959,036 B2
`
`
`
`
`Figure 2B is a side cross-sectional view of an elastomeric receptacle. The
`
`elastomeric wall portion of the receptacle is configured to be “resiliently
`
`deformable and which has a predetermined, non-deformed configuration.”
`
`Id. at 5:9–20; see also id. at 2:59–63 (“The elastomeric material is . . . of an
`
`appropriate durometer . . . to make the squeeze bulb 200 substantially
`
`deformable yet resilient”). The wall portion returns to the “predetermined,
`
`non-deformed” configuration after being compressed by the user. Id.
`
`at 5:9–20
`
`B.
`
`Illustrative Claim
`
`Claims 1 and 31 are independent and claim 1 is illustrative of the
`
`claims at issue:
`
`An elastomeric dispensing container
`1.
`comprising:
`
`for a
`
`fluid
`
`a flexible and resilient receptacle composed of an elastomeric
`material defining a chamber therein;
`
`5
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`

`IPR2017-01327
`Patent 7,959,036 B2
`
`
`opposite upper and lower ends of the receptacle with the
`receptacle having a central, longitudinal axis extending between
`the opposite ends thereof and a predetermined axial length of the
`receptacle between the opposite ends,
`
`an integral gasket of the receptacle extending radially from an
`opening formed at the receptacle lower end;
`
`a receptacle neck extending up from the receptacle lower end for
`providing communications between the chamber and the
`opening, wherein the integral gasket and the receptacle are
`fabricated as a single piece from the elastomeric material,
`
`a discrete sleeve composed of a substantially rigid material and
`having opposite upper and lower ends, with the sleeve being
`disposed concentrically about the receptacle neck having a sleeve
`neck with a lower face at the sleeve lower end and which is
`disposed adjacent to the integral gasket,
`
`a cap having a lid covering the receptacle opening and the
`integral gasket with a dispensing orifice formed therein and a cap
`neck extending from the lid disposed concentrically about the
`sleeve neck, the cap having open and closed positions,
`
`engaging means formed on the sleeve neck and the cap neck
`providing removable attachment therebetween wherein the
`engaging means secures the integral gasket in a compressed and
`substantially fluid-tight state between the lid and the sleeve lower
`face; and
`
`a wall portion of the receptacle that is configured to be resiliently
`deformable and which has a predetermined, non-deformed
`configuration, the wall portion extending about the chamber and
`upwardly from the sleeve upper end to the receptacle upper end
`so that the entirety of the receptacle exposed above the
`substantially rigid sleeve is available to be compressed to
`pressurize fluid in the chamber for expelling the fluid from the
`receptacle chamber through the cap orifice with the cap in the
`open position and to allow air to be drawn into the receptacle
`chamber as
`the wall portion resiliently returns
`to
`the
`predetermined, non-deformed configuration thereof.
`
`Ex. 1001, 4:45–5:20.
`
`6
`
`

`

`IPR2017-01327
`Patent 7,959,036 B2
`
`
`C.
`
`Related Proceedings
`
`There are currently no pending related matters. Paper 4, 2.
`
`D.
`
`References Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`International Publication No. WO 2005/004788 A1 published Jan. 20,
`
`2005 (“Cho”) (Ex. 1002);
`
`U.S. Patent No. 6,112,951, issued on Sept. 5, 2000 (“Mueller”)
`
`(Ex. 1003);
`
`U.S. Patent No. 5,271,531, issued Dec. 21, 1993 (“Rohr”) (Ex. 1004);
`
`U.S. Patent No. 7,207,467 B1, issued on Apr. 24, 2007 (“Raja”)
`
`(Ex. 1005);
`
`U.S. Patent No. 3,504,067, issued Mar. 31, 1970 (“Trecek”)
`
`(Ex. 1006); and
`
`Petitioner also relies on the testimony of James Goldman (Exs. 1014,
`
`1021). Patent Owner relies on the testimony of Timothy P. Fletcher (Ex.
`
`2008).
`
`
`
`
`
`
`7
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`

`IPR2017-01327
`Patent 7,959,036 B2
`
`
`E.
`
`Instituted Grounds of Unpatentability
`
`As noted above, the proceeding has been limited to the following
`
`grounds and claims:
`
`Reference(s)
`
`Cho
`
`Basis
`
`§ 103
`
`Claim(s)
`
`1, 2, 14, 21, 22, 24, and 262
`
`Cho and Mueller
`
`§ 103
`
`1, 3–6, 10–13, 20, and 28–32
`
`Cho, Mueller, and Rohr
`
`§ 103
`
`31, 32, and 35–38
`
`Cho and Raja
`
`§ 103
`
`7
`
`Cho and Trecek
`
`§ 103
`
`24 and 26
`
`
`
`II.
`
`CLAIM CONSTRUCTION
`
`Claims in an inter partes review are given the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`
`appear[].” 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2136 (2016).
`
`Petitioner proposes claim constructions for the terms “elastomeric
`
`material” and “resiliently deformable.” Pet. 11–13. Patent Owner, in
`
`response, does not provide a specific proposal for interpreting any claim
`
`term. See generally PO Resp. Below, we address these two limitations
`
`together.
`
`
`2 Petitioner’s Reply erroneously asserts that claims 1, 3–6, 10–13, 20,
`28–32, and 35–38 are rendered obvious over Cho. Pet. Reply 2, 19. This
`assertion is contrary to the agreed upon scope of this proceeding as being
`limited to whether claims 1, 2, 14, 21, 22, 24, and 26 are rendered obvious
`over Cho. Paper 23, 2.
`
`8
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`IPR2017-01327
`Patent 7,959,036 B2
`
`
`Petitioner contends that the term “elastomeric material” is “used
`
`widely throughout the prior art to describe materials having at least some
`
`degree of stretch, or flexibility,” and an elastomer means “‘any material,
`
`such as natural or synthetic rubber, that is able to resume its original shape
`
`when a deforming force is removed.’” Id. at 12 (quoting Ex. 1018, 2).
`
`According to Petitioner, the ’036 patent discloses silicone as an elastomeric
`
`material. Id. (citing Ex. 1001, 2:54–56). Petitioner argues that “the claims
`
`do not limit ‘elastomeric material’ to elastomers with a particular range of
`
`flexibility or resistance threshold.” Id. Thus, according to Petitioner, “even
`
`those materials having minimal flexibility (e.g., certain plastics and harder
`
`rubbers) are classified as ‘elastomeric material’ within the art and the
`
`’036 patent because they return to their original shape after being deformed
`
`at least to some extent.” Id. (citing Ex. 1014 ¶ 17).
`
`Petitioner contends that “[t]he term ‘resiliently deformable’ should be
`
`construed consistently with ‘elastomeric material,’ to mean any material that
`
`is capable of returning to its original shape after a deforming force is
`
`removed.” Id. at 13; see also Ex. 1014 ¶ 26.
`
`Patent Owner notes that the surrounding claim language suggests that
`
`a “resiliently deformable” material “deforms when pressure is applied to the
`
`receptacle walls 201,” but also “returns to its original shape when pressure is
`
`removed.” PO Resp. 5; see also Tr. 36:9–37:14 (discussing the distinction
`
`in “resiliently deformable” claim language between claims 1 and 31).
`
`The Specification of the ’036 patent describes “[t]he elastomeric
`
`material is . . . of an appropriate durometer, such as 40 Shore A, to make the
`
`squeeze bulb 200 substantially deformable yet resilient,” and the elastomeric
`
`material is preferably silicone. Ex. 1001, 2:54–63. Only the claimed wall
`
`9
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`

`IPR2017-01327
`Patent 7,959,036 B2
`
`portion of the receptacle is claimed to be “resiliently deformable.” Id.
`
`at 5:9–10. Nothing in the claim, however, precludes or requires any other
`
`portion of the receptacle (comprised of elastomeric material) from also being
`
`resiliently deformable. Id. at 4:47–48. Notably, the receptacle is claimed to
`
`be “flexible and resilient.” Id. Although the “flexible and resilient”
`
`receptacle and its wall being “resiliently deformable” are not necessarily
`
`identical, this distinction appears to be minor considering the written
`
`description of the ’036 patent. Based on the foregoing, we give each of
`
`these claim terms their plain and ordinary meaning as understood by a
`
`person or ordinary skill in the art. The surrounding claim language for each
`
`claim limitation focuses the scope of these terms such that any interpretation
`
`we could provide would not be as helpful in understanding the terms as the
`
`surrounding claim language.
`
`We determine that no terms require express construction for the
`
`purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642
`
`F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to
`
`the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc.
`
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`
`
`III. ANALYSIS
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and the burden of persuasion never shifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts
`
`supporting its challenge by a preponderance of the evidence. 35 U.S.C.
`
`§ 316(e); 37 C.F.R. § 42.1(d).
`
`10
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`IPR2017-01327
`Patent 7,959,036 B2
`
`
`A. Principles of Law
`
`1. Obviousness
`
`A claim is unpatentable under § 103(a) if “the differences between the
`
`[claimed] subject matter [] and the prior art are such that the subject matter,
`
`as a whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) where in evidence,3 secondary considerations. Graham v.
`
`John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
`
`B. Person of Ordinary Skill in the Art
`
`Petitioner’s expert, Mr. Goldman, proposes that a person of ordinary
`
`skill in the bottle/container field as of the time of the filing of the application
`
`that became the ’036 patent “would have a bachelor’s degree (or equivalent)
`
`in mechanical engineering and at least one or two years’ experience
`
`developing container technology.” Ex. 1014 ¶ 4. Patent Owner does not
`
`dispute Petitioner’s proposal, and based on the final record, we adopt it for
`
`purposes of this Decision.
`
`C. Obviousness of Claims 1, 2, 14, 21, 22, 24, and 26 over Cho
`
`Petitioner contends that claims 1, 2, 14, 21, 22, 24, and 26 are obvious
`
`in view of Cho. Pet. 23, Paper 23, 2. Patent Owner challenges Petitioner’s
`
`assertions for both claim 1 and several dependent claims. See PO
`
`
`3 Neither party has addressed secondary considerations in this proceeding.
`Tr. 33:4–12.
`
`11
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`

`IPR2017-01327
`Patent 7,959,036 B2
`
`Resp. 1–21, 49–60. For the reasons that follow, Petitioner has proven by a
`
`preponderance of the evidence that claims 1, 2, 21, 22, 24, and 26 are
`
`unpatentable over Cho, but not claim 14.
`
`1. Overview of Cho (Ex. 1002)
`
`Cho is titled “Silicon Baby Bottle,” and it is directed to a silicone4
`
`baby bottle with a bottle coupler that is fitted and coupled onto an outer
`
`peripheral surface of a silicone baby bottle. Ex. 1002, (54), Abst. (57). Cho
`
`states that “[t]he present invention relates to a silicon[e] baby bottle, and
`
`more particularly to a silicon[e] baby bottle made of a silicon[e] material.”
`
`Id. at 1:4–6. As depicted in Figure 2 below, Cho discloses bottle body 110
`
`made of a silicone material. Id., Fig. 2.
`
`
`4 Cho uses the term “silicon” throughout its disclosure. Based upon the
`totality of the record, we determine that the use of “silicon” was in error and
`that Cho is referring to the material commonly known as “silicone.”
`Tr. 8:3–9:16 (“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.”); Ex. 1014 ¶¶ 13, 16–18,
`25, 29, 30 (“In my opinion, the cylindrical container walls in Cho and Shu
`can certainly be composed of an elastomeric, flexible silicone substance in
`light of the patent’s specification and claims, longstanding industry practice,
`and the prior art of baby bottles.”). Patent Owner’s expert, Mr. Fletcher,
`explains that he proceeds with his analysis “as if the prior art [Cho]
`disclosed silicone,” and he recognizes that “[s]ilicon is a chemical element
`that is characteristically hard and brittle crystalline solid, and could not be
`deformable.” Ex 2008, 29, n.1. The bottle described in Cho is not hard and
`brittle, and thus, Cho must be referring to “silicone” and not “silicon.” See
`Ex. 1002, 1:24–26 (“The nipple 13 is made of a soft material (silicon).”).
`
`12
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`IPR2017-01327
`Patent 7,959,036 B2
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`
`
`
`Figure 2 is an exploded perspective view showing a silicone baby bottle 100.
`
`The bottle body includes a container neck and receptacle
`
`opening 110b with protrusion portion 110c formed thereon. Id. at 4:12–5:4.
`
`Bottle coupler 120 is coupled onto bottle body 110. Id. Nipple cap 130 is
`
`coupled onto bottle coupler 120, which includes body portion 120a adapted
`
`to receive a portion of bottle body 110 therein. Id. “[U]pper insertion
`
`opening 120c is formed in an upper portion of the body portion 120a and
`
`adapted to guide the protrusion portion 110c of the bottle body 110, which
`
`has been inserted into the body portion 120a so that it protrudes to the
`
`outside.” Id. at 4:27–5:3. Threaded groove 120d is formed on an outer
`
`peripheral surface of insertion opening 120c. “The nipple 140 is made of a
`
`13
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`

`IPR2017-01327
`Patent 7,959,036 B2
`
`silicon[e] material and is provided with a nipple aperture 140a so that an
`
`infant can suck milk.” Id. at 5:10–11. The liquid is transferred from bottle
`
`body 110, “which is made of silicon[e], through the nipple 140, which is
`
`also made of silicon[e], into the infant’s mouth.” Id. at 6:1–3.
`
`2. Discussion
`
`Petitioner provides analysis as to how Cho teaches the limitations of
`
`claims 1, 2, 14, 21, 22, 24, and 26. Pet. 23–27, 45–53. Petitioner also
`
`provides a claim chart (Pet. 45–53, Chart 1) and further supports its analysis
`
`with testimony of Mr. Goldman (Exs. 1014 and 1021). Patent Owner
`
`challenges whether Cho teaches certain limitations of these claims and
`
`Patent Owner supports its analysis with testimony of Mr. Fletcher
`
`(Ex. 2008). See PO Resp. 2–4 (summarizing arguments).
`
`a. Claim 1—Uncontested Limitations
`
`We previously instructed Patent Owner that “any arguments for
`
`patentability not raised in the [Patent Owner Response] will be deemed
`
`waived.” Paper 15, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not
`
`specifically denied may be considered admitted.”); In re NuVasive, Inc., 842
`
`F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding patent owner waived an
`
`argument addressed in the preliminary response by not raising the same
`
`argument in the patent owner response). Additionally, the Board’s Patent
`
`Trial Practice Guide states that the Patent Owner Response “should identify
`
`all the involved claims that are believed to be patentable and state the basis
`
`for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012).
`
`With the complete trial record before us, we note that we have
`
`reviewed arguments and evidence advanced by Petitioner to support its
`
`14
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`IPR2017-01327
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`
`unpatentability contentions where Patent Owner chose not to address certain
`
`limitations in its Patent Owner Response. In this regard, the record now
`
`contains persuasive arguments and evidence presented by Petitioner, many
`
`of which are unrebutted, regarding the manner in which the asserted prior art
`
`teaches corresponding limitations of the claims against which that prior art is
`
`asserted. Based on the preponderance of the evidence before us, we
`
`conclude that the prior art identified by Petitioner teaches all uncontested
`
`limitations of claim 1. Below, we discuss a few of the uncontested
`
`limitations followed by a detailed analysis of the contested limitations of
`
`claim 1.
`
`Petitioner’s analysis demonstrates where each unchallenged limitation
`
`of claim 1 is taught by Cho. Pet. 23–32, 45–53. Claim 1 is directed to “[a]n
`
`elastomeric dispensing container for a fluid.” Ex. 1001, 4:45–5:20. The
`
`claim first requires “a flexible and resilient receptacle composed of an
`
`elastomeric material defining a chamber therein,” and Petitioner relies
`
`persuasively on Cho’s disclosure of a bottle formed of a silicone material,
`
`which a person of ordinary skill in the art would understand to be a flexible
`
`and resilient elastomeric material as used in Cho’s bottle. Pet. 29, 30, 45;
`
`Ex. 1014 ¶¶ 13–25. Petitioner shows how Cho’s “protrusion portion 110c”
`
`that extends radially from the “pouring opening 110(b)” at the receptacle
`
`lower end discloses the claimed “integral gasket of the receptacle.” Pet. 46.
`
`Petitioner establishes persuasively that the claimed “receptacle neck
`
`extending up from the receptacle lower end” limitations are taught by Cho’s
`
`“upper outer portion of the bottle body 110,” which “extends upwards from
`
`the receptacle lower end for providing communications between the
`
`chamber and the opening.” Id. (citing Ex. 1002, 4, Figs. 2–3).
`
`15
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`IPR2017-01327
`Patent 7,959,036 B2
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`
`Claim 1 further requires “a discrete sleeve composed of a substantially
`
`rigid material,” which Petitioner persuasively maps to Cho’s bottle coupler
`
`120 made of a rigid plastic material. Pet. 47; Ex. 1002, 6:4. Petitioner also
`
`explains how the bottle coupler has upper and lower ends and the lower end
`
`further has a sleeve neck with a lower face as depicted in Cho Figure 2. Id.
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`Petitioner sufficiently shows on the final record that Cho teaches the
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`remaining unchallenged limitations of claim 1, including “a cap having a lid
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`covering the receptacle opening and the integral gasket with a dispensing
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`orifice formed therein”5 as being taught by Cho’s “nipple cap 130” fitted to,
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`and covered by, “bottle cap 150.” Pet. 48.
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`Having now considered the evidence in the complete record
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`established during trial, we are persuaded that Petitioner has demonstrated
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`by a preponderance of the evidence that the uncontested limitations of claim
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`1 are taught by Cho. The limitations that Patent Owner contests in the
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`Patent Owner Response are addressed below.
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`b. Claim 1—Contested Limitations
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`Pertinent for our analysis, claim 1 requires “a wall portion of the
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`receptacle that is configured to be resiliently deformable and which has a
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`predetermined, non-deformed configuration.” 1001, 5:9–12. Petitioner
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`contends that “[i]n Cho, the walls of bottle body 110 (wall portion of the
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`5 Petitioner’s claim chart and analysis (Pet. 50) provide an alternative basis
`as to how this limitation is met based on the combination of Cho and
`Mueller, which we address below. Patent Owner has not challenged whether
`Cho alone teaches the dispensing cap limitation. See generally PO Resp.
`For example, Petitioner alleges, and Patent Owner does not refute, that when
`Cho’s bottle cap 150 closes over the nipple cap 130 to produce a fluid-tight
`seal, the cap has “open and closed positions.” Pet. 48.
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`receptacle) are formed from a ‘silicone material,’” and “a POSA would
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`understand that this silicone material can include a soft, flexible silicone
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`(e.g., silicone rubber) that retains its shape after being squeezed or
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`deformed.” Pet. 52 (citing Ex. 1002, Abst. (57); Ex. 1014 ¶¶ 34, 35, 36).
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`Petitioner relies on Cho’s teachings of an elastomeric silicone
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`dispensing container for fluid. Pet. 45 (citing Ex. 1002, 4:15–19; Abst.).
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`According to Petitioner, Cho’s silicone based elastomer would be “a flexible
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`and resilient receptacle” that holds liquid as required by claim 1. Petitioner
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`relies on the knowledge of a person of ordinary skill in the art to appreciate
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`that the silicone disclosed in Cho could be a soft silicone material. Id.
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`Petitioner points out that Cho also discloses the use of soft silicone:
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`“[t]he nipple 13 is made of a soft material (silicon[e]).” Id. at 29 (quoting
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`Ex. 1002, 1:24–25). Petitioner reasons that a person of ordinary skill in the
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`art would take this teaching of using soft silicone and apply it to the bottle
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`body because “Cho makes no distinction between the grade of silicon[e]
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`comprising the nipple 140 and bottle body 110.” Id. at 30. For example,
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`Petitioner relies on a sentence in Cho that infers both the bottle body and
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`nipple could be made from the same soft silicone: “‘The powdered milk
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`contained in the bottle body 110 is transferred from the bottle body 110,
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`which is made of silicon[e], through the nipple 140, which is also made from
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`silicon[e], into the infant’s mouth.’” Id. (quoting Ex. 1002, 6:1–4)
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`(emphasis by Petitioner). Thus, according to Petitioner and Mr. Goldman,
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`“one would logically infer that the bottle body 110 is made from the same
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`soft silicone as the nipple 140, especially in light of the extensive prior art of
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`elastomeric baby bottles.” Pet. 30; Ex. 1014 ¶ 30. Petitioner also argues
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`that “a POSA would understand that this silicone material can include a soft,
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`flexible silicone (e.g., silicone rubber) that retains its shape after being
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`squeezed or deformed.” Pet. 52; Ex. 1014 ¶¶ 34–36.
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`Petitioner also relies on expert testimony and several secondary
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`references to support its contention that a person of ordinary skill in the art
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`would understand to use soft silicone for the body of a baby bottle as
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`disclosed in Cho. See id. at 29–34 (Ex. 1014 ¶ 34; Ex. 1018, 2; Ex. 1010,
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`1:11–12; 2:55–63; Figs. 2, 4; Ex. 1011, 2:5–8, Fig. 5; Ex. 1012, Abst., ¶ 5
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`(disclosing a “thin silicon[e]” outer wall 2 to “reduce suction of air similarly
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`to breast milk”)).
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`Patent Owner asserts that Cho fails to teach the “resiliently
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`deformable” limitation of claim 1. PO Resp. 14–30. Patent Owner relies on
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`the prosecution history of the ’036 patent wherein the Office previously
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`considered Cho. Id. at 15. Patent Owner contends “that baby bottles
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`featuring nipples, like those disclosed in Cho, regulate flow via the baby’s
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`suction and would therefore not have flexible and resilient receptacles with
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`resiliently-deformable walls, which would [] forc[e] additional fluid into the
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`baby’s mouth [upon] compression.” Id. at 16. Patent Owner offers
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`testimony from its expert as to why Cho’s baby bottle should not be
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`squeezable and “that a bottle should not be held by the baby, rather by the
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`person feeding.” Id. at 17 (citing Ex. 2008 ¶¶ 86–88).
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`Patent Owner recognizes that Cho discloses silicone but contends this
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`is not enough because “Cho does not discuss the physical properties or
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`firmness of the silicon[e] baby bottle receptacle.” PO Resp. 19. Patent
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`Owner relies on “the traditional design of baby bottles and nipples, the
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`longstanding tenets of proper infant feeding/nursing,” and “Cho’s
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`specification” to argue “that the baby bottle would be constructed of hard,
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`not soft, silicone.” Id. Patent Owner also argues “that the prior art teaches
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`away from flexible and resilient receptacles with resiliently deformable walls
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`in a baby bottle.” Id. at 21.
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`Patent Owner also relies on the prosecution history of the ’036 patent.
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`PO Resp. 11–15. Patent Owner contends that during prosecution of the
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`’036 patent, “the Examiner agreed that Cho did not disclose, teach, or
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`suggest a flexible and resilient elastomeric receptacle with resiliently
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`deformable walls.” Id. at 15 (citing Ex. 2003, 253 (Notice of Allowability)).
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`Patent Owner’s attorney arguments made during prosecution, such as how it
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`would be undesirable for liquid to be forced into an infant’s mouth by
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`squeezing the cylindrical wall of a baby bottle, mirror the arguments made in
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`this proceeding. We find these arguments unpersuasive for the reasons set
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`forth below.
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`On the record before us, Petitioner demonstrates persuasively that Cho
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`teaches “a flexible and resilient receptacle” and “a wall portion of the
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`receptacle that is configured to be resiliently deformable and which has a
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`predetermined, non-deformed configuration” as required by claim 1.
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`Both parties, and their experts, spend considerable effort in trying to
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`persuade us how a normal baby bottle should feel and work—Petitioner
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`arguing that silicone baby bottles may be soft and resiliently deformable and
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`Patent Owner arguing that silicone baby bottles similar to Cho must be hard
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`to prevent a baby from choking. Compare Pet. Reply 11–14 (“soft baby
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`bottles mimic the actual breastfeeding experience more accurately than rigid
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`bottles”); Ex. 1021 ¶¶ 13–18, with PO Resp. 17 (“Thus, designing a baby
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`bottle that would permit an infant to increase the fluid-flow through
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`squeezing the bottle’s sidewalls while already engaging in its natural
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`sucking action, and thereby forcing additional fluid into a baby’s mouth,
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`would present clear and obvious choking dangers”); Ex. 2008 ¶ 87. See also
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`Tr. 40:10–42:5. Both parties cite to evidence,6 much of which we find either
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`unpersuasive or unnecessary to determine what Cho teaches. Further, the
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`parties’ focus on silicone baby bottles generally misses the core issue—
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`considering Cho as a whole, would a person of ordinary skill in the art
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`understand that Cho teaches a liquid container made from a resiliently
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`deformable (silicone) material as claimed in the ’036 patent. As explained
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`below, we rely primarily on the teachings of Cho in order to answer the
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`question before us.
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`Cho describes the use of “soft” silicone for the nipple of the bottle.
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`Ex. 1002, 1:24. Cho also suggests that the same soft silicone used for the
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`nipple could be used in the body of the bottle. Cho states: “The powdered
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`milk contained in the bottle body 110 is transferred from the bottle body
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`110, which is made of silicon[e], through the nipple 140, which is also made
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`from silicon[e], into the infant’s mouth.” Id. at 6:1–3 (emphases added).
`
`
`6 In our decision, we give little weight to Petitioner’s evidence of “scores of
`popular baby bottles currently on the market,” because the design of these
`new bottles does not indicate the state of the art at the time the ’036 patent
`was filed. Further, Petitioner has failed to provide any corroborating
`testimony related to these new bottles—recent advertisements d