`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPI CARD GROUP -- MINNESOTA, INC.,
`Patent Owner.
`__________
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`__________
`
`Record of Oral Hearing
`Held: October 3, 2018
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MARK D. ROWLAND, ESQ
`HENRY Y. HUANG, ESQ
`KEYNA CHOW, ESQ
`Ropes & Gray LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, California 94303-2284
`(650) 617-4000
`mark.rowland@ropesgray.com
`henry.huang@ropesgray.com
`keyna.chow@ropesgray.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MICHAEL J. SCHEER, ESQ.
`The Law Office of Michael J. Scheer
`5531 Murietta Avenue
`Sherman Oaks, California 91401
`(818) 616-3363
`mscheer@michaeljscheer.com
`
`JAMES C. LIN, ESQ
`Winston & Strawn LLP
`275 Middlefield Road, Suite 205
`Menlo Park, California 94025
`(650) 858-6434
`JaLin@winston.com
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`October 3, commencing at 1:00 p.m. at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE OBERMANN: Welcome to the PTAB. This is a final
`hearing in IPR 2071-01650. The Petitioner is Multi Packaging Solutions,
`Inc., and the patent owner is CPI Card Group, Inc.
`Petitioner challenges the patentability of all claims, that's claims 1
`through 30, of U.S. Patent Number 8,419,889.
`I'm Judge Obermann, and with me today on the panel are
`Christopher Kaiser who's appearing from -- remotely from Denver. He's on
`the screen.
`And to my left is Judge Jeffrey Abraham.
`Let's start with counsel introductions, beginning with Petitioner.
`MR. ROWLAND: Thank you, Your Honor. Mark Rowland of
`Ropes and Gray on behalf of Petitioner.
`With me at the table is Keyna Chow and Henry Huang, also of
`Ropes and Gray.
`And, with us, we have our client representative, Kym Wellons.
`JUDGE OBERMANN: Thank you. And Mr. Rowland, will you be
`presenting argument fully today or will you be handing it off to anyone?
`MR. ROWLAND: I will present our opening -- I'll make our opening
`presentation; Mr. Huang will handle the rebuttal.
`JUDGE OBERMANN: Okay, thank you so much.
`Who do we have for patent owner?
`
`3
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`MR. SCHEER: Michael Scheer of the Law Office of Michael J.
`Scheer, representing patent owner CPI Group, Incorporated. And with me
`is James Lin of the law firm of Winston and Strawn.
`And, I will be doing all of the presentation today.
`JUDGE OBERMANN: Okay. Thank you, Mr. Scheer.
`Okay. Each party has 60 minutes of total time to present their
`arguments, and both sides in this case may reserve some rebuttal time.
`The hearing is open to the public. Does any party feel that they're
`going to be needing to disclose confidential information as opposed to just
`referring us by page or line number to confidential information?
`MR. ROWLAND: Your Honor, I think by agreement, we're not
`going to --
`JUDGE OBERMANN: Okay.
`MR. ROWLAND: -- be revealing the confidential information itself.
`JUDGE OBERMANN: Okay. Thank you. So, in that case, we're
`going to keep the hearing room open at all times.
`I would like to keep as a goal, the hearing should be focused on the
`merits. So, towards that end, I'm going to ask Counsel not to interrupt each
`other to object to anything. If you have objections, you can raise and
`discuss them during your own response or rebuttal.
`So, in other words, any objections you make should count against
`your own time.
`The only exception to that rule is if either a party or a Judge
`inadvertently discloses confidential information, then the owner should jump
`4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`up and we'll mark the record, and we'll try to remediate that as soon as
`possible.
`The ultimate burden is on the party making the disclosure though to
`bring it to our attention, please.
`The panel has considered patent owner's objections to Petitioner's
`demonstrative exhibits, and I just want to confirm that we received no
`objections filed by Petitioner as to patent owner's demonstratives. Is that
`correct?
`MR. SCHEER: That's correct, Your Honor.
`JUDGE OBERMANN: Okay, great.
`We have considered patent owner's objections, and we find that none
`warrants the exclusion of any demonstrative exhibit. Petitioner, you are
`free to use your exhibits during the presentation, and the panel will take
`account of any objection that the patent owner has raised in connection with
`any particular one.
`To the extent the patent owner argues that certain of Petitioner's
`demonstratives present argument that exceeds the scope of a proper reply,
`we take account of the fact that you, the patent owner, have filed a surreply
`and we are very used to having to discern argument that's advanced in a
`reply brief in trying to calculate whether it's new or fairly responsive. And
`we'll do that in our final written decision.
`But that said, I know that there were a couple of slides, I think it was
`slides 12 and 25 where patent owner has actually alleged that there's
`information on those slides that wasn't included in either the Petition or a
`5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`reply. And so, Petitioner, if you plan to refer to slides 12 or 25, I will ask
`you to identify where the information was cited in a brief.
`Okay, I think that about wraps up the preliminaries. So, with that,
`I'm going to invite Petitioner's counsel to the podium. And I will set your
`clock for your primary argument.
`I need to know, Mr. Rowland, whether you plan to reserve any time
`for rebuttal?
`MR. ROWLAND: Yes, Your Honor. If you would set the clock for
`40 minutes.
`JUDGE OBERMANN: Forty? Okay.
`MR. ROLAND: Thank you.
`JUDGE OBERMANN: And take it this is so I can hear.
`Okay, and when you begin speaking I will begin the clock running,
`Mr. Rowland.
`MR. ROWLAND: Thank you, Your Honor.
`And good afternoon and good morning to you, Judge Kaiser. The
`889 patent that we're dealing with today is an example of a classic case of
`obviousness. Here, the patentee's claim making a package using known
`materials and known production techniques according to their established
`functions.
`As shown on slide 2, the patent owner has admitted that the materials
`described in the 889 patent were not new. But the evidence supporting
`obviousness goes beyond that.
`
`6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`The evidence submitted with the Petition and evidence adduced
`during discovery in this proceeding demonstrate, in addition, making
`packaging panels from clay coated paper stock, making a secure card
`package with heat activated adhesive, using heat activated adhesive with
`polyurethane as a component in packaging applications, printing the heat
`activated adhesive and allowing it to dry before activation and sealing a
`package substantially around a product and sealing a package by selectively
`applying heat and pressure to the region in which bonding is desired.
`I'll highlight some of this evidence in the presentation, otherwise,
`refer the Board to our briefs.
`Turning to slide 3, we --
`JUDGE OBERMANN: I would just like to --
`MR. ROWLAND: Yes?
`JUDGE OBERMANN: -- confirm though, that there is no example
`in the prior art of a packaging for a wallet card that has either C1S or C2S
`materials in the packaging. Is that correct?
`MR. ROWLAND: I would say, Your Honor, that the Willard
`reference talks about paperboard, it's generic to the use of paperboard. It
`doesn't specify the particular type and we would submit that it was known
`that a conventional type of paperboard was C2S.
`JUDGE OBERMANN: But does Willard discuss coating the
`paperboard at all?
`MR. ROWLAND: It does not refer to any coating on the paperboard.
`
`7
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`JUDGE OBERMANN: Do any of the references refer to a packaging
`for a wallet card that contains coated paper?
`MR. ROWLAND: No, Your Honor.
`JUDGE OBERMANN: Okay, thank you. That's fine.
`MR. ROWLAND: In slide 3, we have identified the instituted
`grounds and each of those grounds relies on the combination of references in
`support of each ground and each claim, Petitioner provided extensive
`reasoning in the Petition why POSITA would have been motivated to apply
`the teachings of the references in making the secure card packages claimed.
`And I'll turn to slide 4, the prior art is not separately argued, grounds
`4 through 8, nor does the patent owner separately argue a number of the
`depending claims which we've listed there, Claims 2, 3, 7, 9, 12 through 16,
`20 to 22 or 28 to 29.
`Turning to slide 5, patent owner focuses his challenge on a step in
`the independent claims relating to activation of a heat activated adhesive by
`applying heat and pressure in a region substantially surrounding offset from
`the card to seal the card in a package.
`Now this disputed language is highlighted on slide 5, the same
`language appears in the other independent claim of the 889 patent, Claim 18
`and then we'll spend some time talking about that.
`And as we submit, the extensive body of art in the evidence makes
`clear that selectively applying heat and pressure around the perimeter of a
`package to seal it was conventional; it would have been an obvious step in
`making a secure package.
`
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`On slide 7, as the threshold matter -- could you please to turn to slide
`7? Thank you.
`On slide 7, as a threshold matter, we note that the patent owner
`characterized the last step as requiring heat and pressure to be applied so that
`it activates the adhesive in a region substantially surrounding an offset from
`the card.
`That is, in litigation, the locational language in a region substantially
`surrounding an offset from the card was said to modify where the adhesive is
`activated. This can be seen in the, quote, next to the second bullet on the
`slide.
`
`The District Court also concluded that the disputed language directed
`to where the adhesive is activated.
`The patent owner's expert opined that the Court's interpretation was
`the broadest reasonable interpretation.
`The Petition demonstrates that a POSITA, I'm sorry, person of
`ordinary skill in the art, I'll refer to POSITA, would have understood Willard
`to teach the disputed limitation as characterized by the patent owner in
`District Court in litigation and that it would also have been obvious from
`Willard, alone or in combination, with the teaching of at least Maak or Jones
`or both together.
`The Petition goes further, however, also demonstrating they're
`applying heat and pressure only in the specified region to activate the
`adhesive would have been understood to be taught by --
`
`9
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`JUDGE OBERMANN: Could I ask a clarifying -- just a second,
`what's the status of the District Court litigation?
`MR. ROWLAND: It's -- the litigation is stayed, pending the outcome
`of this action.
`JUDGE OBERMANN: So, all we have there is basically a Markman
`Hearing where you resolve the claim construction?
`MR. ROWLAND: That's correct, Your Honor.
`JUDGE OBERMANN: Thank you.
`MR. ROWLAND: So, the Petition goes further and we submit that --
`we demonstrate that specifically applying heat and pressure only in the
`specified region to activate the adhesive would have been understood be
`taught by an obvious from Willard and the other references.
`Therefore, the Petition itself does not turn on the interpretation of
`this limitation because the limitation was taught by our obvious from the art
`under all interpretations.
`So, let's turn to Willard in slide 8. As highlighted and circled in
`blue on this slide, Willard teaches a package in which paperboard panels
`close about and secure the card.
`Willard also teaches using heat activated adhesive to seal the panels
`together. But that is the paperboard panels of the card package together.
`Patent owner has argued that Willard is teaching only to use the
`adhesive to hold the panels together in a folded position, but as is
`highlighted here on this slide, it specifically says to seal the panels together,
`not just hold them in a folded position.
`10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`I think patent owner's arguments also ignore that Willard teaches in
`paragraph 31 that the panels can be separate pieces. So, a POSITA would
`understand that Willard's teaching of using heat activated adhesive to seal
`together the panels would apply in that circumstance as well. And there,
`we're not even talking about folding panels together.
`As is also illustrated on slide 8, Willard teaches to seal the panels
`together by selectively applying heat and pressure to the panels.
`Now, a person of ordinary skill in the art would read selective not to
`mean applying heat and pressure everywhere, because that would render --
`obviously that would render the word selectively meaningless, they would
`also not need it to mean selectively applying it somewhere where you don't
`want a sealing because it's clearly teaching you to seal -- that the purpose of
`selectively applying the heat and pressure is to seal the panels together.
`JUDGE OBERMANN: How does someone know where it is not
`desired to have a seal mean?
`MR. ROWLAND: Well, we'll show that in a minute when you look
`at the package. And we would say that if you look at what the package, it
`would clearly indicate to you that there's a secure space in the middle of the
`package. The whole point is to create this space and that's where you would
`not want a sealing and that space is where the cards are.
`A POSITA would read, therefore, “selectively” to mean applying the
`heat and pressure where sealing is to occur. And as we'll show, that is --
`that's going to be on the outside of the package.
`
`11
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`Now, the patent owner takes issue with the art because it does not,
`and particularly will, it does not explicitly describe or discuss in words
`particularly where to apply the heat and pressure.
`The proper question, however, is what the prior art taken as a whole
`fairly teaches. And as we cited, the in re Merck Case on slide 9, this a brief
`for that point.
`But there is much more in Willard and the other references that
`support the conclusion that the disputed limitation would have been unsuited
`as being taught are obvious.
`So, let's turn to slide 10.
`First of all, our expert, in his declaration, specifically said that
`Willard discloses this limitation of the claims. He also said that, at a
`minimum, it would have been obvious from Willard and the other
`disclosures because, from that, it would have been apparent that the only
`place --
`JUDGE OBERMANN: Did you cite in your Petition something that,
`you know, cites this? Because I know there's a dispute about whether the
`Petition actually states the obviousness based on Willard alone or whether
`the Petition actually requires us to look at Jones and Maak.
`MR. ROWLAND: We did, Your Honor. It's in paragraph 20 --
`sorry, page 28, we cited to this paragraph of Dr. Singh. And we also said
`that Wilson's -- sorry, that Willard discloses this limitation.
`JUDGE OBERMANN: Okay. So, when you go on to talk about
`Maak in your claim chart, that's just bolstering it? It -- you -- your position
`12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`is that this provided patent owner a sufficient notice that you were relying on
`the disclosure of Willard alone?
`MR. ROWLAND: Yes.
`JUDGE OBERMANN: Okay.
`MR. ROWLAND: And then, in addition, we were saying that
`Willard discloses it. And then, in addition, there are supporting references
`which, together, would also support the same reading.
`JUDGE OBERMANN: Is there a part of the textual argument in the
`Petition where that is clear what's happening in the claim chart?
`MR. ROWLAND: I think the combination of the claim chart stating
`specifically that Willard discloses this language and then, that citing to the
`expert's opinion that Willard discloses this language is the record we created.
`JUDGE OBERMANN: Okay.
`MR. ROWLAND: Now, on slide 11, Dr. Singh also opined that it
`would have, as I just mentioned, would have been obvious from the
`references.
`Now, let's look at the package that Willard actually discloses. Now,
`here, Willard shows in Figures 6 and 7 a package and, in this package, you
`can clearly see that there's a card enclosed in the space between the
`paperboard panels.
`The secure space is accessed by tearing the rear panel, 514, so that's
`what you're seeing actually in Figures 6 and 7 is the rear panel of the
`package, and you would tear it along the cut line, 518. That cut like is
`generally highlighted in yellow on the slide.
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`This cut line extends, as you can see in Figure 7, extends all around
`the card. It's clearly indicative that the secured space in which the card is
`enclosed is in that line we'll see within that line, because you can see the
`card peeking out.
`And then, it's also shown again in Figure 9 the same way.
`Now, viewed in light of the package -- oh, I should also point out,
`you can see that on the inside of the rear panel, the folded down part of it,
`there is a number, a code that appears there. It's printed on the inside, you'll
`see as we go through other slides that there's additional information printed
`on other interior surfaces of the package.
`Again, this is demonstrative of the fact that that is part of the interior
`space of the card. And by tearing -- continuing to tear that cut line around,
`the customer can not only access the card but also remove it from the
`package as described at paragraph 42 of Willard.
`Viewed in light of this description of the package, a person of
`ordinary skill would understand that the cut line is provided in the region of
`the rear panel around the enclosed cards because they're sealed together.
`The panels are sealed together outside of that cut line, creating enclosed and
`sealed space while enabling the cards to be accessed using the cut line to
`open the rear package.
`This way, the customer does not have to separate the panels at the
`edge where they're sealed. The customer also does not have to disturb any
`of the printing that's on the inside because it's all within the bounds of that
`cut line.
`
`14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`Now, please turn to slide 13. Now, we discussed, by the way, you
`asked me where this cut line is referenced, it's discussed in the obviousness
`section with respect to Claim 1 that said Petition 28, which is the chart and
`then, again, at 48, and as we indicated on the slide, it's also discussed in Dr.
`Singh's declaration, it's 114 and through 116 all the way too his reference in
`the discussion of this limitation of Claim 1.
`Please turn to slide 13. Now, I mentioned earlier that Willard
`discloses generally rectangular separate panels, that is, it can be made by --
`the package can be made using disconnected pieces sealed together. We've
`identified those in the disclosures on page 13. And that's also discussed in -
`- it's in paragraphs 23, 24 and 31 of Willard.
`A person of ordinary skill in the art would have understood that, as I
`mentioned earlier, that where the package is being completed from two
`separate panels that the heat activated adhesive and the selected activation of
`that adhesive would apply in this construction as well.
`CPI's expert agreed to the obvious point, that a point assumes that a
`person of ordinary skill in the art -- that if one assumes a person of ordinary
`skill of the art would not leave a side of a secure package open, the adhesive
`would be applied all around the edge, and obviously so would the sealing.
`Now, additional figures are in Willard confirm that the package has
`secure space within the cut line. If you look at Figures 5 and 8, we can see
`the front of the package and in Figure 8, it is showing the access flap opened
`up.
`
`15
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`But in this case, in this time, the front of the package has been folded
`forward, the flap that it was showing folded backwards in the previous slide
`is now standing up behind the card, and you can see there is printing on the
`interior of the front side of the package including shown in the pink area a
`number that has been printed inside such as a card number.
`JUDGE OBERMANN: May I just ask one question?
`MR. ROWLAND: Yes, go ahead.
`JUDGE OBERMANN: Is it your position that for Willard to actually
`-- that the only thing lacking in Willard is the application of the coating
`between the paperboard and the adhesive on both sides?
`MR. ROWLAND: Yes, Your Honor.
`JUDGE OBERMANN: Okay. And that's for Claim 1. But for
`Claim 18, you would then have to turn to, I think it's Maak for the adhesive,
`the polyvinyl, the polyurethane?
`MR. ROWLAND: Actually, Maak or ASI, which is a reference
`specifically describing the use of a polyurethane adhesive in various
`applications, including packaging.
`JUDGE OBERMANN: Okay. So, those are the only real two
`changes that you have to make to Willard?
`MR. ROWLAND: That's right.
`JUDGE OBERMANN: To get both the claims that are in
`independent form?
`MR. ROWLAND: That's correct, Your Honor.
`JUDGE OBERMANN: Okay.
`16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`MR. ROWLAND: The next slide, slide 15, this is Figures 6 and 7
`again. Just we colored it so we -- so it would be clear what the different
`surfaces are that are being shown.
`You can see in Figure 7, this is the rear of the package. And when
`the flap is pulled down, looking at the card and you also then, looking at the
`interior -- looking through to the interior surface of the back of the front
`panel.
`
`All right, now, turning to slide 16, we show Figure 9, and there was
`some discussion in the briefs about this. Here, Figure 9 illustrates where
`the cut line is relative to the cards that are enclosed. You can see the cut
`line is on the outside of those cards. It's also on the outside the one the card
`-- when the package is closed, it would be on the outside of where all the
`printing is.
`They have important information on the card on the interior side of
`the package. Together, when you look at this, a person of ordinary skill in
`the art would certainly understand that the sealing is happening outside of
`that cut line.
`Because, otherwise, you would be ripping into the area where the --
`if you had a -- if it was sealed inside, you'd be ripping into the area where
`the printing is. And that would be problematic.
`And as this slide illustrates, the cards are within that area and what
`Willard was attempting to do here was provide a way to open up the package
`so that the cards can be removed without having to tear in through the -- or
`separate the sealed parts of the package.
`17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`And that's -- that was something he criticized the prior art for, if you
`look at the background section of the -- of Willard, it talks about the
`difficulty of in prior art packages of having to actually separate the sealed
`package.
`JUDGE ABRAHAM: Did you make the argument about tearing into
`the printing on the panels in your petition --
`MR. ROWLAND: We pointed it to -- we pointed out the fact that
`there was printing on the inside and outside and that that was a reason -- that
`was one of the reasons why you would use C2S.
`We also pointed out that the cut line would allow you to open up the
`package that way.
`JUDGE OBERMANN: Which page of your Petition discusses the
`fact that the cut line would have suggested having the sealant outside the
`perimeter of the cut line?
`MR. ROWLAND: In page 48, we discussed it in the context of
`forming a secure space. That is, the idea is the space or the point we're
`trying to make was that the cut line defines the secure space in that, that
`disclosure is how you access it is through the secure -- it's how you access
`that space.
`And that's what we're -- that's the context in which we discuss it
`which the natural consequence of that is that the space is defined by the
`sealing which is outside of it.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`18
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`And so, if that is -- if the panel -- if the cut line is being used to
`access that space, that's -- it -- that is clearly, that cut line would demonstrate
`that it's within the space.
`JUDGE OBERMANN: I'm not seeing a discussion of the cut line on
`page 49 of the Petition.
`MR. ROWLAND: Sorry --
`JUDGE ABRAHAM: Forty-eight.
`JUDGE OBERMANN: Oh, 48 --
`MR. ROWLAND: Forty-eight --
`JUDGE OBERMANN: -- I'm sorry, thank you.
`MR. ROWLAND: And we're referencing the -- Dr. Singh's
`declaration in which he discusses the cut line in paragraphs I think 115 and
`116, particularly going on explaining about how the cut lines are used to
`access and remove panels from the secure space -- cards from the secure
`space, excuse me.
`Now, if we turn to slide 18, we'll see that during a deposition, Dr.
`Singh was asked about exactly this question. And patent owner elicited the
`testimony that appears on slide 18 in which Dr. Singh clearly explained
`exactly what we're talking about. And patent owner put this testimony into
`the record.
`And during the deposition, Dr. Singh illustrated where he thought
`the cut line was, and that's the blue line he's -- rather that's where he's
`showing where he thinks the sealing is going to be and then there was some
`
`19
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`question about whether there would be sealing on the top of the package,
`whether it went all the way around the edge.
`And he colored that area yellow to indicate that the way it's
`illustrated in this particular figure, that -- you're actually looking at the back
`side of the top of the rear panel that, for whatever reason, has been shown
`sealed still to the front side of the package.
`So, in his opinion, that is indicative of there'd be sealing all around.
`Patent owner had suggested that, while there would only be sealing on three
`sides down around the bottom and along the sides and not on the top, and
`Dr. Singh was addressing that with the yellow coloring.
`Now, on slide 19, we address another patent owner argument, which
`is that Dr. Singh supposedly admitted that Willard didn't describe or discuss
`particularly where the heat and pressure applied.
`And his answers are addressing the literal language which we've
`already discussed, but that's an overly literal approach. An explicit
`statement of the particular location of the panels where heat and pressure
`would be selectively applied was unnecessary to understand from the
`disclosure we've just gone through where it would have been applied.
`Now, we cited, in addition, as -- we, and too -- in addition to
`Willard, we cited the Maak and Jones references with respect to this
`limitation as adding further disclosure or confirming what you'd understand
`from Willard.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`20
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`If we look in Maak, Maak demonstrates that it was Willard that said
`to selectively apply heat and pressure only in locations where sealing is
`desired.
`And --
`JUDGE OBERMANN: Before you start talking about Maak --
`MR. ROWLAND: Yes?
`JUDGE OBERMANN: -- what is the -- what is your best evidence
`for defining the field of this invention as general packaging and not wallet
`card packaging?
`MR. ROWLAND: We've discussed that, bear with me for a moment,
`if we turn to slide 32, please? Okay, here, we have evidence that the
`experts agree that the relevant field is packaging. We cite -- we've
`discussed this in the Petition and Reply. The experts -- CPI's expert pointed
`to the fact that you would conclude a combination of engineering fields as
`various fields as comparable.
`And then, CPI agrees that the prior art itself is sufficient to
`demonstrate the level of ordinary skill in the art. And the asserted prior art
`includes a variety of packaging in addition to a wallet card.
`And even during prosecution of the 889 patent, CPI itself submitted
`prior at that included blister packaging products. It wasn't limited to wallet
`card prior art.
`And then, finally, in its surreply, CPI agrees that the relevant field is
`packaging.
`
`21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`Returning to Maak, as I mentioned, it teaches to apply adhesive -- it
`teaches you to apply -- I'm sorry, to apply heat and pressure only in the
`locations where you desire a cheaper bond. This is very similar to language
`that -- how it was characterized by the patent owner.
`I will also add that, if we turn to slide 21, there is additional
`disclosure in the background art which we talked about in the Petition that it
`was conventional in a package of this type that is a card -- a package that
`holds a card, it was conventional to include a pair of paperboard panels that
`were glued together about the card.
`I mean, it was clearly conventional to seal around the card. And
`based on this evidence --
`JUDGE KAISER: Is there evidence in the record that “about” means
`surrounding?
`MR. ROWLAND: The -- that's the testimony of the expert and in the
`paragraphs we cite. I think you could also see that even in the prior art
`that's discussed in the Willard patent.
`JUDGE OBERMANN: But Willard -- oh yes, okay.
`MR. ROWLAND: Now, I'll turn to slide 22. This is where we talk
`about Jones. Jones was an additional reference we cited.
`Now, Jones teaches a package, we've got a couple figures from Jones
`on slide 22, you see on the left, this is the package before it's sealed together.
`On the left two quadrants are labeled panel 16 and 20, those are
`where a flat insert would be located.
`
`22
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`On the right is where a pill, something that requires a blister to hold
`it because it's thicker than the panels. That's where you'd put a pill, and it
`also provides for a trap door as you can see there that's part of the panel.
`There's perforations and it enables you to push through the panel to get at the
`card to get at the pill.
`Once the -- once it's sealed, it -- the package looks like it's shown in
`Figure 2.
`And now, the relevant disclosures about sealing are identified on
`page 23, slide 23. Generally says that the various panels are matingly
`sealed.
`
`And then, with respect to the panel in which a flat insert is included,
`it says, the p
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
