`U.S. PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`ORTHOPEDIATRICS CORP.,
`Petitioner,
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`v.
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`K2M, INC.,
`Patent Owner.
`
`__________
`
`Case IPR2018-00429 (Patent 9,532,816 B2)
`Case IPR2018-00521 (Patent 9,532,816 B2)
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`__________
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`Record of Oral Hearing
`Held: February 21, 2019
`__________
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`Before LYNNE H. BROWNE, MICHAEL L. WOODS, and ROBERT L.
`KINDER, Administrative Patent Judges.
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`
`
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
`
`JOHN F. BENNETT, ESQ.
`ELIZABETH CONKLIN, ESQ.
`CHRISTOPHER A. SINGH, ESQ.
`PAUL M. ULRICH, ESQ.
`of: Ulmer Attorneys
`600 Vine Street
`Suite 2800
`Cincinnati, Ohio 45202-2409
`jbennett@ulmer.com
`econklin@ulmer.com
`csingh@ulmer.com
`pulrich@ulmer.com
`
`ON BEHALF OF THE PATENT OWNER:
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`MICHAEL S. CONNOR, ESQ.
`CHRISTOPHER T.L. DOUGLAS
`CHRISTOPHER C. ZIEGLER, ESQ.
`Alston & Bird, LLP
`Bank of America Plaza
`Suite 4000
`101 South Tryon Street
`Charlotte, North Carolina 28280-4000
`mike.connor@alston.com
`christopher.douglas@alston.com
`chris.ziegler@alston.com
`
`
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`The above-entitled matter came on for hearing on Thursday,
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`February 21, 2019, commencing at 10:00 a.m. at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2018-00429 (Patent 9,532,816 B2)
`Case IPR2018-00521 (Patent 9,532,816 B2)
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`P-R-O-C-E-E-D-I-N-G-S
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`10:00 a.m.
`JUDGE KINDER: Good morning. Please be seated.
`Good morning, everyone. I'm Judge Kinder and with me today
`remotely are Judges Browne and Judge Woods. They're both coming
`from remote locations.
`So that being said, if you have demonstratives that you're presenting
`today, you need to clearly refer to the slide number so they have a chance to
`flip up your page on your demonstratives. So that's something that's a little
`abnormal when you're speaking -- for say slide number, but please do that so
`we can keep track of it.
`Today we're calling OrthoPediatrics Corp, Petitioner, versus K2M
`Inc., Patent Owner, Cases No. IPR 2018-00429 and 00521, both involving
`U.S. Patent No. 9,532,816. And if we could first get an appearance made
`for Petitioner and then Patent Owner?
`MR. BENNETT: Thank you, Your Honor. Good morning. John
`Bennett on behalf of the Petitioner OrthoPediatrics, and with me are lead
`counsel Paul Ulrich and backup counsel Christopher Singh.
`JUDGE KINDER: Okay. Thank you.
`MR. DOUGLAS: Good morning, Your Honor. My name is
`Christopher Douglas. I'm lead counsel for K2M with Alston & Bird. With
`me today are my colleagues Mike Connor and Christopher Ziegler.
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`Case IPR2018-00429 (Patent 9,532,816 B2)
`Case IPR2018-00521 (Patent 9,532,816 B2)
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`JUDGE KINDER: All right. Thank you. Just to reorient a few
`things that we put out in the original hearing order, each party -- and we do
`appreciate, by the way, everyone's willingness to meet one day later.
`Obviously with the snow day yesterday in the Federal Government, we're
`meeting today on February 21st. So we appreciate that and everyone
`sticking around. Hopefully it didn't interrupt your plans too much for
`travel.
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`Today each party will have one hour of total argument time to
`present arguments for both proceedings. Petitioner will open the hearing by
`presenting arguments including any arguments on its motions that are
`pending. Thereafter the Patent Owner will argue its opposition to
`Petitioner's arguments and any of its motions as well. Petitioner may
`reserve time for rebuttal arguments and may present arguments in opposition
`to the Patent Owner's motions.
`Petitioner obviously bears the ultimate burden to prove that the
`claims in the inter partes review are unpatentable, so one thing we've been
`doing lately is allowing the Patent Owner to have a very brief surrebuttal.
`So we'll go ahead and do that in this proceeding as well. It's just something
`we've been doing and it's very brief. I mean, it should be no more than a
`couple minutes.
`That being said, Petitioner, how long would you like to reserve for
`your rebuttal time?
`MR. BENNETT: Thank you. Twenty minutes, please.
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`JUDGE KINDER: All right. Mr. Bennett, 20 minutes. Mr.
`Douglas, how long would you like to reserve for the brief, brief surrebuttal?
`MR. DOUGLAS: We'll reserve five minutes, Your Honor.
`JUDGE KINDER: All right. And again, the rebuttals should
`present no new argument. It should be just in direct response to whatever
`the other party brought up during that time.
`So I see we do not have a clock in the hearing -- in this hearing
`room. We're in kind of the quaint cozy hearing room, which I actually like.
`It's more in-person, but you don't have a clock, so your colleague may want
`to keep track for you if you want warnings during the time. And I do have a
`master clock, but it just goes from red, yellow to green, so -- or from green,
`yellow to red. So if you want to keep your own time, that might be good.
`And I believe with that we are ready to go, unless my colleagues
`have any preliminary matters they want to discuss?
`(No audible response.)
`JUDGE KINDER: All right.
`JUDGE BROWNE: I don't have any.
`JUDGE KINDER: All right. Very good. Mr. Bennett?
`MR. BENNETT: Thank you, Your Honor. May it please the
`Board. After the Board instituted inter partes review in these two
`proceedings the parties have filed almost 300 pages of briefing and yet really
`all of the disputed issues concerning patentability can be distilled into a
`single question: Are the Board's claim constructions correct? The answer
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`Case IPR2018-00429 (Patent 9,532,816 B2)
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`is yes, the Board's claim constructions are correct. And that's important for
`a number of reasons. For one, it means that all of the challenged claims
`were properly construed made on the sole embodiment of the '816 Patent,
`but it also means for patentability all the challenged claims read on multiple
`102 references that are cited in the two petitions. For that reason the claims
`are patentable and the Board should cancel to them.
`Now it may take -- give me just a moment and take a step back to
`look at the patent from a macro point of view. Turning to slide 6, the patent
`has 22 claims all directed to a rod reducer. And as discussed in some detail
`in the Patent Owner's expert declarations, all of the patent claims fall general
`in one of two buckets.
`That is to say, the first bucket contains claims where the mechanism
`is expressly recited whereby -- turning to slide 8, whereby a mechanism is
`disclosed, or recited rather, where arms or grasping members of the
`instruments are pushed toward one another by way of a rod contact member
`or sleeve that slides over the arms. That mechanism is depicted in figures 2
`and 5 shown on slide 8. For example, figure 5 I believe it is on the right-
`hand side, is the instrument in its pre-activated state. The forward is
`reduced. Figure 2 shows the instrument after it is reduced and after the
`arms have been pushed toward one another through that mechanism.
`The second bucket of claims that were added later in prosecution do
`not expressly recite that mechanism. Those are the claims as shown on
`slide 7 that the Petitioner is challenging, those five claims. And because
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`those claims are so broad, again they are unpatentable. The Petitioner has
`identified six anticipating references in the two petitions. Turning to slide
`2, the first three are in the first petition on slide 2. In slide 3 the other three
`are in the second petition. So in all between obviousness and anticipation
`there are some 12 grounds for a patentability
`After the Board instituted inter partes review, or at institution rather,
`the Board undertook and applied claim construction and the Board found
`that the Petitioner had indeed demonstrated a reasonable likelihood of
`prevailing as to unpatentability of all the challenged claims. That happened
`at institution and nothing has changed since then.
`Patent Owner had the opportunity to amend the claims. Patent
`Owner did not amend the claims. And so to try to save the claims Patent
`Owner really must argue that the Board's constructions are false. Now they
`may not come out and put it quite like that, but they must show that the
`Board's constructions are wrong to save the claims because applying BRI,
`applying the Board's constructions will lead to cancellation.
`And so in the Patent Owner response, Patent Owner made a choice.
`Disregard the Board's constructions and do -- continue to advocate for a very
`narrow set of constructions. Those constructions though are wrong. They
`are narrower than BRI, they are narrower than Phillips and the Board should
`reject them.
`The first such claim term for which the Patent Owner is arguing
`overly narrow construction is grasping members. Grasping members. So
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`on slide 10 is grasping members. And to put that claim term into context by
`way of background, on slide 11 the Patent Owner filed a preliminary
`response in each proceeding and with those preliminary responses the Patent
`Owner included all of the claims construction briefing from the District
`Court proceedings. After filing the preliminary responses Patent Owner
`included the District Court's claim construction order. And then with all
`that information before the Board, the Board instituted inter partes review.
`In instituting inter partes review, in those institution decisions, I
`show on slide 12, the Board considered the request of the Patent Owner to
`construe grasping and to construe extending through the housing, and the
`Board concluded that construction of grasping of was unnecessary to resolve
`the controversy. So it did elect to construe extending through the housing
`but not grasping.
`So then in the next round of briefing the Patent Owner responds.
`Patent Owner could have sought amendment of the claims. Instead, chose
`to file a Patent Owner response and again argued for the first time that
`grasping members invokes 112, 6 as a means-plus-function on limitation.
`And the Patent Owner provides one reason why the Board should invoke
`112, 6: Consistency.
`According to the Patent Owner that is reason alone for the Board to
`find these claim terms invoked in 112, 6. There's no argument that any
`claim term is actually functional. There's no argument or analysis as to why
`112, 6 applies in the Patent Owner response to any of these claims.
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`JUDGE KINDER: Do you agree with the Patent Owner that you're
`taking an inconsistent position from District Court to this proceeding?
`MR. BENNETT: We're not taking an -- no, we're not taking an
`inconsistent position. We are not advocating for the same meaning, but
`we're not saying that a term is categorically not 112, 6. All we're saying is
`that there's a legal presumption. Something as a matter of law is not a 112,
`6 limitation until someone overcomes that presumption. What we're saying
`here is nobody has challenged the presentation so there's no reason for the
`Board to construe it under 112, 6.
`JUDGE KINDER: So you're relying upon the presumption. But
`you overcame that presumption in District Court, isn't that right?
`MR. BENNETT: That's right. That's right, Your Honor.
`JUDGE KINDER: So to some degree it does seem like an
`inconsistent position you're taking.
`MR. BENNETT: It -- it's inconsistent in that we're not asking the
`Board to construe it under 112, 6. It is consistent insofar as the Petitioner is
`asking the Board to recognize and to apply the presumption, meaning that
`until a party actually comes forward and says although the presumption
`generally is true, we'd recognize that one must change and overcome the
`presumption, but here the presumption is wrong. Here's why it's wrong.
`That has not happened in this case, Your Honor.
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`JUDGE KINDER: How does that interact with our regulation that
`specifically requires or puts a burden on a Petitioner to identify claims
`subject to 112, paragraph 6?
`MR. BENNETT: The claim term that is presumptively a means-
`plus-function limitation, that would apply for, so a claim term with the word
`means. But a claim term that does not have the word means should not fall
`within the scope of requiring the Petitioner to come up with a construction of
`means-plus-function if the Petitioner is not asking the Board to construe it
`under 112, 6.
`JUDGE KINDER: But why shouldn't we read that regulation that
`requires the Petitioner to identify terms under 112, 6 as also encompassing
`terms that in a related District Court proceeding would determine and
`advocated by the Petitioner to be under 112, paragraph 6?
`MR. BENNETT: Because as this Board has held a number of
`times; for example in the Caterpillar case, there's nothing wrong with a party
`taking inconsistent positions with District Court proceedings. There may be
`different burdens in the different fora. There may be different strategy,
`different counsel, different reasons. Different burdens may help one party
`in one proceeding and another party in the other, which is what is happening
`here.
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`So because the Petitioner sought 112, 6 construction in the District
`Court doesn't act as a judicial estoppel or a judicial admission, as it were.
`And the Petitioner is allowed of course to proceed under BRI if the Patent
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`Owner wants to invoke or challenge rather the presumption, it must do so.
`That's what the presumption is. It is not a 112, 6 limitation unless
`someone challenges it and overcomes it.
`JUDGE KINDER: One follow-up question.
`JUDGE WOODS: Mr. Bennett? Oh, I'm sorry. I interrupted you,
`Judge Kinder.
`JUDGE KINDER: Go ahead, Judge Woods.
`JUDGE WOODS: Yes, and I appreciate you answering this
`question for me, Mr. Bennett, and clarifying any confusion that I might
`have. The burden is not on the Patent Owner; it's on the Petitioner. And
`rule 104 doesn't just address 112, 6 limitations. Indeed, I think it requires
`that the petition has to set forth how each of the challenged claims are to be
`construed.
`So what exactly is a grasping member?
`MR. BENNETT: The Petitioner doesn't have a proposed
`construction for grasping member under BRI.
`JUDGE WOODS: And that's where I struggle because it seems to
`me that we did not construe that in our decision to institute, but through the
`course of trial it appears that that term -- the issue turns -- of unpatentability
`may turn on that term. So it's difficult for us to decide the issue without
`understanding Petitioner's position with respect to what that term means.
`MR. BENNETT: Well, the Petitioner's position is the same as it
`was for the most part at institution. The Board didn't need to construe
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`grasping member at institution because it wasn't in controversy. And
`although the Patent Owner is now arguing that the Board should invoke 112,
`6 until the presumption is overcome or at least challenged, it shouldn't be --
`it's not in controversy. All they've done is said the District Court and the
`Board should be consistent. That is taking a presumption and turning it on
`its head to say, well, we recognize there's a presumption here, but because
`the Petitioner argued otherwise in the District Court it's the burden of the
`Petitioner to disprove applicability of 112, 6. That's not how presumptions
`work.
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`So until and unless some party in these proceedings challenged the
`presumption to say that, no, it does not apply here, it shouldn't apply. And
`so it isn't in controversy.
`JUDGE KINDER: Are you relying upon the distinction we have
`where we apply BRI and the District Court is applying Phillips?
`MR. BENNETT: No, we agree that -- the Petitioner agrees that the
`two-step test of Donaldson, et cetera, applies equally under BRI and Phillips.
`But that is an analysis that begins once it's been determined that 112, 6
`applies. That is a threshold inquiry that has not been satisfied yet in this
`case. There is no analysis or even assertion that any claim term invokes
`112, 6. There's merely the argument that the District Court found so, and so
`too should the Board. And that's insufficient.
`And for example, on slide 13, Williamson, you know, starts with the
`concept; and this has been the framework for some 20 years, that claim
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`terms that do not invoke means, or rather that do not use the word means do
`not invoke 112, 6.
`JUDGE KINDER: So I think we're aware of this case law and it's
`something I struggle with in your case because there is that presumption, but
`you overcame that presumption in District Court. It wasn't just tentative
`positions. You at least have one ruling. And correct me if I'm wrong, but I
`don't think that ruling was final. The District Court hasn't entered
`judgment, right?
`MR. BENNETT: That's right.
`JUDGE KINDER: But the District Court has entered at least a
`tentative claim construction position adopting your position that this term is
`not subject -- or excuse me, is subject to 112, paragraph 6, the grasping
`member term, right?
`MR. BENNETT: That's right.
`JUDGE KINDER: So that's what I struggle with, a little bit at least,
`that I understand the presumption is there and you're relying upon that, but
`there's no first step here by Patent Owner to overcome it. But I guess from
`a judicial estoppel standpoint why should they have to put forth a position to
`overcome it when you already argued to the contrary in a different
`proceeding?
`MR. BENNETT: Because otherwise the same logic would apply to
`any construction that has been found by a District Court. I mean, that's
`what the argument is, that just because another judge somewhere found this
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`claim term invokes 112, 6, all that analysis has been done, the Board you
`should do it.
`What that is doing is essentially taking the burden that belongs on
`the challenging party, which in this case is the Patent Owner, shifting it from
`the shoulders of the Patent Owner and putting it on the Board as if to say we
`think the Board should be consistent with the District Court. We're not
`going to connect the dots for you. We're not going to say why a claim term
`here fails to recite sufficient definite structure or why a claim term is
`functional without reciting structure sufficient to perform the claimed
`function. We're going to let you figure it out. If you look at all of the
`documents and papers filed in District Court, we're confident you'll figure it
`out. That is ignoring the presumption.
`What that is doing is essentially saying the presumption is merely an
`observation that something is true more often than not. That's not what a
`presumption is. It is a legal presumption that something is true unless and
`until a party challenges it and overcomes it. And that hasn't happened here.
`JUDGE KINDER: I think the problem I'm struggling with is I agree
`with you that presumption is there and they have that burden, but our
`regulations put an affirmative burden on the Petitioner to construe claims
`that are necessary for resolution of the matter, but also to construe claims
`subject to 112, paragraph 6. So that's what I'm struggling with. To me it
`seems like there's conflicting burdens and it's almost how do we agree that
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`it's confirmed burdens. Obviously we're bound by Williamson, but we're
`also bound by our regulations.
`MR. BENNETT: Well, the regulations of the Board shouldn't
`apply -- should recognize the presumption against 112, 6 claims and if a
`claim term omits the word means, omits the word means, then there
`shouldn't be a burden on the Petitioner to go out of its way and come up with
`a construction that -- or a structure in the written description that
`corresponds to the claimed function just because the Patent Owner may
`decide to construe it or try to overcome the presumption.
`I know the subject of the decision last week, but the regulations --
`Petitioner agrees, if a claim term is written in means-plus-function format
`presumptively with means or step, then, yes, the Petitioner should identify
`what the claimed function is and what the structure is in order to satisfy the
`requirements of a petition. But here it is not in means-plus-function format
`presumptively and unless and until a party challenges it and overcomes it,
`it's not before the Board.
`JUDGE WOODS: Mr. Bennett, if I could ask a follow-up question.
`So I'm looking at Rule 104 and I'm going to read the relevant part out loud.
`The petition must set forth how the challenged claim is to be construed
`where the claim to be construed contains a means-plus-function or a step
`plus function limitation, then it requires additional analysis. But I read that
`to require that that -- setting forth how the claim is to be construed isn't
`limited to only means-plus-function claim terms.
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`So what I struggle with is ignore the fact that Patent Owner is
`arguing that it should be construed under 112, 6. Patent Owner is proposing
`an interpretation that differs from your interpretation, whatever that might
`be. And so it's difficult for us to understand Petitioner's position when you
`haven't set forth what a grasping member is in the briefing.
`MR. BENNETT: It shouldn't be any different than institution.
`JUDGE WOODS: Well, I don't know. I think that in its Patent
`Owner response Patent Owner presented arguments with respect to what a
`grasping member is. And I think in the Petitioner's reply that would have
`been the appropriate place to address that interpretation including proposing
`why that proposed interpretation is wrong and including what Petitioner's
`position or interpretation of that claim term is.
`MR. BENNETT: Yes, Petitioner understands the question, but
`unless and until there's a reason to construe grasping members different from
`broadest reasonable interpretation it isn't or shouldn't be in controversy
`because they haven't even attempted to overcome the presumption of
`Williamson and demonstrate that it actually invokes 112, 6.
`So all they've done is said we think this claim term has something
`different than BRI. That shouldn't force the Petitioner to have to come up
`with an alternative construction just because they've come up with some
`remote construction that the Board ultimately rejects. So what Petitioner is
`saying is should the Board reject the 112, 6 construction which Petitioner is
`respectfully asking? It's not in controversy. It's not an issue. The Board
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`may not figure out what BRI of grasping member is, just as it didn't have to
`at institution.
`JUDGE WOODS: Yes, I'm not convinced that the term should be
`construed under 112, 6, but at the same time I'm -- I struggle because I don't
`understand what the Petitioner's proposed interpretation of that limitation is.
`MR. BENNETT: Well, the petition certainly sets forth not a
`definition of what grasping members is under BRI, but it points to structures
`that would satisfy the limitation as under BRI. So we don't propose an
`explicit construction for grasping members, but we do point out what
`Petitioner believes would satisfy the condition or the claim limitation.
`JUDGE KINDER: Is your position grasping members is such a
`simplistic term that defining it would actually make it more of a complex
`issue?
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`MR. BENNETT: That's a good question. If I could confer for just
`a moment with --
`(Pause.)
`MR. BENNETT: Yes, Your Honor, I think that that's right. I think
`in its essence perhaps grasping members has two arms, but it may not help.
`It probably does not help to try to come up with a construction.
`And so the Patent Owner may have now sought construction of 112,
`6, turning to slide 14, but again there's no analysis whatsoever in the Patent
`Owner response that asserts that any claim term properly invokes 112, 6.
`And more importantly, there's no analysis as to why any alleged facts that
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`support 112, 6 actually do so. And the declarations cannot substitute for
`this lack of analysis.
`Turning to slide 15. But even if they could, the declarations contain
`nothing that's helpful regarding 112, 6. For example, there are some 400
`pages of declarations, and although presumably the Patent Owner's expert
`could have opined that grasping members is a nonce word or that one of the
`claim terms recites function without adequate structure to perform that
`function. There is not a single paragraph anywhere in all of their
`declarations that recite -- or rather that opine that a POSITA would believe
`so.
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`And so really at the end of the day the declarations assume that 112,
`6 applies, but there's zero support for its application. And the sur-replies
`really don't change that at all. All the sur-replies add is excerpts from the
`District Court proceedings, more or less the Petitioner's own arguments from
`those papers. But again, consistency is not a reason to invoke 112, 6.
`And when the Patent Owner had an opportunity to amend the claims,
`the Patent Owner had the deadline to file the Patent Owner response, it could
`have done one of two things: If it really sincerely wanted and wished to
`invoke 112, 6, the Patent Owner either could have overcome the
`presumption just as it could have in prosecution or it could have amended
`the claims to add the word means or step. It did not do so. There's no
`evidence on the record that the Patent Owner ties or connects with any claim
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`term invoking 112, 6. And for that reason the Board should not elect to
`invoke 112, 6 for these limitations.
`Turning to slide 16, the second claim term that the Patent Owner is
`requesting an excessively narrow construction for and which conflicts with
`the Board's instructions is extending through the housing.
`Turning to slide 17, to put the claim term in context the phrase is a
`rotatable member extending through the housing. So the preposition
`extending through the housing is -- relates to a rotatable member.
`Now turning to slide 19. So after the Board construed extending
`through the housing the Board considered the Patent Owner's request to
`construe the term very narrowly as requiring extension entirely through the
`housing. And the Board rejected it. One of the reasons the Board rejected
`it is because it would exclude the sole embodiment of the 816 Patent as
`shown on slide 8, again, Figures 2 and 5 of the 816 Patent. On Figure 2 on
`the left-hand side one can see that there is a portion of the rotatable member
`that is always within the housing and therefore it's actually easier to see on
`slide 32. I beg your pardon, on slide 32. One can see that a significant
`portion of the yellow rotatable member is always within the housing.
`Therefore, as the Board found, it does not extend entirely through the
`housing.
`And so after the Board declined to construe extending through so
`narrowly; back to slide 19, the Board did construe the entire phrase because
`housing is a word that is not used or defined in the written description for the
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`Case IPR2018-00429 (Patent 9,532,816 B2)
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`most part. And so the Board construed the entire phrase as extending
`through the fixed portion of the rod reducing device that defines the body
`through passage.
`In applying that claim construction to the various references in the
`429 position the Board found that they were all satisfied. So for example,
`slide 20. Slide 20 shows Iott, Runco and Trudeau. And these slides -- or
`this slide rather shows the figures colorized to correspond with how the
`petition identified the claim limitations. So yellow corresponds to how
`the petition identified the housing. The red corresponds to how the petition
`identified the rotatable member.
`Turning to slide 21. So one can see with respect to Iott even though
`the red rotatable member does not extend entirely through as the Patent
`Owner requested the phrase to be construed, the Board found the limitation
`was met because, quote, the limitation does not require extension of the
`rotatable member entirely through the housing.
`And then quickly slide 22. The same thing. Runco. Yellow
`corresponds to the housing. One can see that the red rotatable member may
`not extend entirely through the yellow housing. The Board found the
`limitation met nonetheless.
`And last, slide 23 with respect to Trudeau, it's a little harder to see.
`I wonder if we can zoom in. Yes. In the lower right corner on slide 23 one
`can see that the red rotatable member does in fact arguably not extend
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`entirely through, but the Board found that the limitation did not require
`entirely through under broadest reasonable interpretation.
`And so going back to slide 20, Patent Owner really has a classic
`dilemma as a result of this. Applied BRI in all of the Petitioner's references
`meet the limitation, apply something far narrower and the construed claims
`would exclude the sole embodiment. So the Patent Owner took a hybrid
`approach in the Patent Owner response.
`What the Patent Owner decided to do, turning to slide 24, was
`continue to apply an excessively narrow definition of through, or extending
`through, but not apply it to the rotatable member as claimed because as the
`Board found, if it were applied to the rotatable member's claim, it would
`have to exit the housing and then it would read out the sole embodiment,
`exclude the sole embodiment.
`So they are proposing that it be applied only to a portion, a portion of
`the claimed rotatable member. This hybrid approach is wrong for a number
`of reasons.
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