Petitioner Brooks Sports, Inc.’s Materials
`
`Brooks Sports, Inc. v. Herbert E. Townsend
`Case IPR2018-00577
`Patent No. 7,460,416
`
`May 9, 2019
`
`DEMONSTRATIVE EXHIBITS
`
`Brooks Sports
`Exhibit 1080
`Page 1 of 153
`
`
`
`Brooks Sports, Inc. v. Herbert E. Townsend
`Case IPR2018-00577
`Patent No. 7,460,416
`
`May 9, 2019
`
`DEMONSTRATIVE EXHIBITS
`
`Brooks Sports
`Exhibit 1080
`Page 1 of 153
`
`
`
`Overview
`
`Claim Construction
` “dilatant compound”
`
` “material consisting essentially of a dilatant
`compound”
` “below the bottom of the foot”
` “cavity formed in said top surface”
`Izumi grounds for claim 1
` Anticipation and obviousness (grounds 1 and 2)
`AAPA ground 8.
`
`Rudy-based ground 4
`Level of ordinary skill in the art
`Claim 6
`
`1
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`Brooks Sports
`Exhibit 1080
`Page 2 of 153
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`
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`Claim Construction
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`Brooks Sports
`Exhibit 1080
`Page 3 of 153
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`“dilatant compound”
`
`For purposes of this invention, a dilatant compound is [1] a polymeric material
`that changes from soft and pliable under slow application of a load to elastic and
`bouncy under rapid application of a load. Technically, this means that a dilatant
`compound is [2] a polymeric material whose yield point and elastic modulus
`increase with increasing strain rate. In other words, [3] it is a liquid with inverse
`thixotropy, that is, [4] a viscous liquid suspension that temporarily solidifies
`under applied pressure. Alternatively, [5] it can be described as a liquid
`suspension in which the resistance to flow increases faster than the rate of flow.
`
`Petitioner’s construction encompasses materials that meet one (or more) of Inventor
`Townsend’s characterizations.
`
`Ex.1001 (numbering added), Pet. 28; Ex.1047 ¶202.
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`3
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`Brooks Sports
`Exhibit 1080
`Page 4 of 153
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`“dilatant compound”—
`Patent Owner’s Construction
`
`For purposes of this invention, a dilatant compound is [1] a polymeric material
`that changes from soft and pliable under slow application of a load to elastic and
`bouncy under rapid application of a load. Technically, this means that a dilatant
`compound is [2] a polymeric material whose yield point and elastic modulus
`increase with increasing strain rate. In other words, [3] it is a liquid with inverse
`thixotropy, that is, [4] a viscous liquid suspension that temporarily solidifies
`under applied pressure. Alternatively, [5] it can be described as a liquid
`suspension in which the resistance to flow increases faster than the rate of flow.
`
`4
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`Brooks Sports
`Exhibit 1080
`Page 5 of 153
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`“dilatant compound”—
`Patent Owner’s Construction
`
`For purposes of this invention, a dilatant compound is a polymeric material that
`changes fromis soft and, pliable, and has a low elastic modulus and low yield
`point under slow application of a load and slow strain rate, but becomes to
`elastic and bouncy and has a substantially higher elastic modulus under rapid
`application of a load. Technically, this means that a dilatant compound is a
`polymeric material whose yield point and elastic modulus increase with
`increasing strain rate. In other words, it is a liquid with inverse thixotropy, that
`is, a viscous liquid suspension that temporarily solidifies under or at high
`applied pressure. Alternatively, it can be described as a liquid suspension in
`which the resistance to flow increases faster than the strain rate of flow.
`
`Reply,p.4
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`5
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`Brooks Sports
`Exhibit 1080
`Page 6 of 153
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`“dilatant compound”—
`Patent Owner’s Construction
`
`“a polymeric material that is soft, pliable, and has a low elastic modulus and low yield
`point under slow application of a load and slow strain rate, but becomes elastic and
`bouncy and has a substantially higher elastic modulus under rapid application of a
`load or at high applied strain rate.”
`Writes out inventors’ favored definition
` “[A] dilatant compound is . . . . a liquid with inverse thixotropy, that is, a viscous liquid
`suspension that temporarily solidifies under applied pressure. Alternatively . . . a liquid
`suspension . . . .” Ex.1001(2:45–50).
` Inventor repeatedly describes embodiments with the “inverse thixotropy” definition.
`5:61–64; 5:43–44; 5:53–55; 5:57–58; 6:1–3.
`
`POR, p.15; Reply, p. 4-5
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`6
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`Brooks Sports
`Exhibit 1080
`Page 7 of 153
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`“dilatant compound”—PO’s Construction: Dr. McKinley rejects
`Inventor’s meaning
`
`Q: So do you agree that the '416 patent states that inverse thixotropic materials are dilatant
`compounds?
`A: Yes.
`Q:
`. . . Do you believe that's accurate for a dilatant compound?
`A: No, I don't think that's good writing. . . . .
`Q:
`[] [W]hat do you mean by its -- what did you mean by you don't think it is good writing?
`A:
`I–if I can refer to my declaration, I discuss that extensively in Section 10 under Paragraph
`66 and onwards, particularly 67. [¶] "Thixotropy" means something different
`to a
`rheologist than "dilatancy."
`So is a viscous liquid suspension that temporarily solidifies under applied pressure, is
`that within your description of what a dilatant compound is?
`A: No. That would be in my description of what an inverse thixotropic compound is.
`
`Q:
`
`Ex.1068, 190:6-9; 64:5-19; 66:5-10; Reply, p.5
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`7
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`Brooks Sports
`Exhibit 1080
`Page 8 of 153
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`“dilatant compound”—PO’s Construction:
`Dr. McKinley rejects Inventor’s meaning
`
`Patent Owner’s expert explained, the use of the term ‘inverse thixotropic’ to refer to the
`dilatant materials described by the 416 patent is a misuse of that term. . . . Patent Owner’s
`construction of ‘dilatant compound’ sets out the correct behavior . . . .
`
`Patentee can, of course, set our her own definition which
`cannot be ignored.
` Allergan, Inc. v. Apotex Inc., 754 F. 3d 952, 957–58 (2014)
`
`Surreply, p.11; Rep., p. 5.
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`8
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`Brooks Sports
`Exhibit 1080
`Page 9 of 153
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`“dilatant compound”—PO’s construction:
`Selective broadening and narrowing
`
`For purposes of this invention, a dilatant compound is a polymeric material that changes fromis soft and,
`pliable, and has a low elastic modulus and low yield point under slow application of a load and slow
`strain rate, but becomes to elastic and bouncy and has a substantially higher elastic modulus under rapid
`application of a load. Technically, this means that a dilatant compound is a polymeric material whose
`yield point and elastic modulus increase with increasing strain rate. In other words, it is a liquid wih
`inverse thixotropy, that is, a viscous liquid suspension that temporarily solidifies under or at high applied
`pressure. Alternatively, it can be described as a liquid suspension in which the resistance to flow
`increases faster than the strain rate of flow.
`
`Adds “low elastic modulus and yield point” but not “high yield point”
`Selectively broadens and narrows in different ways
`Not based on BRI standard, either in briefing or by Dr. McKinley
`No § 112 support
`
`Reply,p.4-5
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`9
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`Brooks Sports
`Exhibit 1080
`Page 10 of 153
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`“material consisting essentially of a dilatant compound”—
`Petitioner’s construction
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`1. A shoe to be worn on a foot, said shoe comprising a midsole having a top surface, said shoe
`midsole fabricated from material having a fixed elastic modulus and having at least one cavity
`formed in said top surface below the bottom of the foot, said at least one cavity filled with
`material consisting essentially of a dilatant compound, all of which material consisting
`essentially of a dilatant compound is retained below the bottom of the foot.
`
`Material’s formulation may contain “substances that are not dilatant so
`long as those other substances do not render the material non-dilatant
`as a whole.”
`
`Ex.1001 8:27-35; Pet., p. 29; Ex. 1047, ¶203-05; Reply, p.4
`
`10
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`Brooks Sports
`Exhibit 1080
`Page 11 of 153
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`“material consisting essentially of a dilatant compound”—
`Petitioner’s construction
`
`“Consisting essentially of” permits inclusion of components not listed in the claim
`provided that they do materially affect the basic and novel properties of the material
` AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1239 (Fed. Cir. 2003); PPG Indus. v.
`Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)
`No novel properties
` The ’416 recognizes dilatant compounds were known and teaches nothing new about
`them
`Basic properties are its dilatancy
` “For purposes of this invention,” those are at ‘416 2:39–50
`
`Pet., p.25, 29; Ex.1047(¶203–05); Ex.1071(¶¶21-22,77); Reply, p.4
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`11
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`Brooks Sports
`Exhibit 1080
`Page 12 of 153
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`“material consisting essentially of a dilatant compound”—PO’s
`construction
`
`a dilatant compound and other material compounds and additives
`that do not significantly diminish the energy storage and return of
`the dilatant compound at high rates of loading and/or high strain
`rates.
`Problems with PO’s construction
` Conflates supposed “energy return” outcome of running shoe use
`with material property.
` Prosecution history squarely contradicts argument PO makes based on it
` Textually unsupported and unjustified
`
`POR, p.16; Reply., p. 6-10
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`12
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`Brooks Sports
`Exhibit 1080
`Page 13 of 153
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`“material consisting essentially of a dilatant compound”—PO’s
`construction conflates supposed “energy return”
`ABSTRACT
`An athletic shoe, in particular a running shoe, having improved cushioning and energy
`returning properties that vary depending upon the speed of the runner due to incorporation
`of at least one insert containing dilatant compound encapsulated in a shell …
`
`It is desirable during periods of actual competition to maximize the elastic behavior of a
`running shoe each time the runner's foot hits the ground, so as to conserve energy and
`provide a spring-like energy-returning effect with each step the runner makes and thereby
`assist the runner in achieving and sustaining higher speed, while nevertheless giving a
`level of cushioning and energy absorption suitable for comfort and injury and damage
`prevention.
`
`POR, p.16
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`13
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`Brooks Sports
`Exhibit 1080
`Page 14 of 153
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`“material consisting essentially of a dilatant compound”—PO’s
`construction conflates supposed “energy return”
`
`[T]hose in the art do not understand “energy return” in a running shoe as a material(s)
`property. Rather, it is often described as an outcome of the combination of forces applied
`by the runner while running and interacting with the shoe.
`
`27. The behavior of a shoe worn by a runner is not simply a property of the material(s) in the
`shoe midsole or cushioning system. A midsole is part of a cushioning system, not a material.
`The midsole’s properties are system properties and do not depend solely on material properties.
`Similarly, desirable outcomes (e.g., impact attenuation, energy absorption, peak pressure
`redistribution, energy return, comfort) are dynamic system outcomes that are not dependent on
`material properties alone.
`
`Ex. 1071, ¶27, 67; Ex. 1070 at 2
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`14
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`Brooks Sports
`Exhibit 1080
`Page 15 of 153
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`“material consisting essentially of a dilatant compound”—
`McKinley’s “energy return” is not what is the ‘416 meaning
`Q.
`[In Paragraph 39] [y]ou write, "...do not significantly diminish the energy storage and return."
`A. Uh-huh.
`. . . .
`Q. What would you measure?
`A. As we described earlier on, I would measure the complex modulus -- so the elastic modulus, which is
`the real part, and the viscous modulus, which is the imaginary part. And I would make sure that those did
`not change significantly when I put the compound into the shoe.
`Q. So would you test it under actual running conditions or not?
`A. No, I would test just the properties of the material.
`. . .
`Q.
`I'm trying to understand, is it your opinion that the energy return that a runner may experience is a
`material property?
`A.
`I'm not expressing an opinion about energy return by a runner here in Paragraph 39. I'm expressing an
`opinion that a dilatant compound has not changed its energy storage and return. I'm only referring in
`Paragraph 39 to people of ordinary skill in the art testing a material, not a shoe.
`
`Ex. 1068, 94:14-15; 95:5–96:9
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`15
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`Brooks Sports
`Exhibit 1080
`Page 16 of 153
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`“material consisting essentially of a dilatant compound”—
`McKinley’s “energy return” is not what is the ‘416 states
`Q. And what I was trying to understand is why in Paragraph 39 of your
`declaration did you drop off or not include cushioning?
`
`A.
`I don't use speed, either. I'm focusing on scientific properties of the
`material. So cushioning and speed are descriptive adjectives that are
`presumably properties of the whole shoe.
`I'm focusing on the elastic
`modulus and viscous modulus of the dilatant compound.
`
`Ex. 1068, 97:15–25
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`16
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`Brooks Sports
`Exhibit 1080
`Page 17 of 153
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`“material consisting essentially of a dilatant compound”—PO’s
`construction conflates supposed “energy return”
`
`While it has been taught to interpose devices having variable elastic moduli between a
`runner's foot and the midsoles of running shoes so as to provide variable shock absorbing
`and cushioning properties, it has not been taught to provide midsoles that achieve higher
`energy storing and returning properties at higher running speeds.
`
`Ex. 1001, 3:1-6, 7:18-33
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`17
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`Brooks Sports
`Exhibit 1080
`Page 18 of 153
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`“material consisting essentially of a dilatant compound”—PO’s
`prosecution history (Rhoades) argument
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`All claims were allowed after that response emphasized the energy return of the claimed
`material “consisting essentially of a dilatant compound” as distinguishing the dilatant
`energy absorbing mixture disclosed by Rhoades.
`
`POR, p.7
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`18
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`Brooks Sports
`Exhibit 1080
`Page 19 of 153
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`“ . . . consisting essentially of . . . ”—PO’s “energy absorbing” vs.
`“energy returning” prosecution history (Rhoades) argument
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`By providing a controlled hysteresis, the absorption of energy by elastic compression can be
`carefully tuned to serve the requirements of use in a highly protective and efficient fashion.
`In like fashion, it is possible to control, within limits, the proportion of applied energy
`returned and transmitted by any elastic rebound, and the proportion dissipated or absorbed
`and changed into other forms of energy, i.e. heat.
`
`At moderate to high stress, such as the imposition of sudden impact, and consequently a
`high rate of applied force, the material deforms and absorbs or dissipates the imposed
`energy by viscoelastic deformation or elastic compression. Both the rate of energy
`absorption, resulting from deceleration of the impact force, and the rate of elastic rebound
`are controlled by determining the elastic hysteresis. The major effect is spreading the
`energy transfer associated with the sudden impact over a much greater time span so that
`the peak incident force levels transferred to the object are reduced.
`Ex.1045, 3:50-56; 3:66-4:9; Surreply, p. 13
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`19
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`Brooks Sports
`Exhibit 1080
`Page 20 of 153
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`“ . . . consisting essentially of . . . ”—PO’s “energy absorbing” vs.
`“energy returning” prosecution history (Rhoades) argument
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`While the response of the composition to sudden impact forces is generally described in
`terms of energy absorbing for the purpose of convenience, these compositions actually
`absorb little energy. Rather, the time dependent, or rate dependent, response of the material
`composition to sudden impact enables the distribution of a localized load or impact over a
`larger surface area and over a longer period of time which results in lower peak stresses
`being transmitted to the protected animate or inanimate object. The energy absorption
`through plastic or viscous deformation is minimal. This can be demonstrated by loading the
`novel absorbent material composition cyclically and observing that the resultant thermal
`increase is minimal.
`
`Ex.1045, 8:25-38; Reply, p.9
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`20
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`Brooks Sports
`Exhibit 1080
`Page 21 of 153
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`“ . . . consisting essentially of . . . ”—PO’s “energy absorbing” vs.
`“energy returning” prosecution history (Rhoades) argument
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`Ex.1065,p.1; Reply, p.9
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`21
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`Brooks Sports
`Exhibit 1080
`Page 22 of 153
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`“ . . . consisting essentially of . . . ”—PO’s “energy absorbing” vs.
`“energy returning” prosecution history (Rhoades) argument
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`The preferred range of composition is, in weight percentages, from 90% polymer to less
`than 20% polymer; lubricant from about 20% to about 60%; and filler from 0 to 90%,
`dependent on the particle size and specific gravity of the filler. A typical high-impact,
`energy-absorbent material formulation in accordance with this invention would be 70%
`polyborosiloxane; 20% lubricant; and 10% filler.
`
`Ex.1045, 10:53-59
`Reply, p.9
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`22
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`Brooks Sports
`Exhibit 1080
`Page 23 of 153
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`PO’s “energy absorbing” vs. “energy returning” prosecution history
`(Rhoades) argument—POR
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`POR, p.7
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`23
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`Brooks Sports
`Exhibit 1080
`Page 24 of 153
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`PO’s “energy absorbing” vs. “energy returning” prosecution history
`(Rhoades) argument—POR
`
`Applicant’s arguments contrasted the “teaching” of the ’416 application with
`Rhoades.
`Statements about the ‘416 patent’s “teaching”, not about the ‘416 claims, that
`mention “energy return.”
`Statements about claims made no mention of “energy return.”
`
`Reply, p. 9-10; Ex. 1018, p.10-11; Ex. 1071, ¶91-92
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`24
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`Brooks Sports
`Exhibit 1080
`Page 25 of 153
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`Plant (Ex. 1006) undermines PO’s “energy absorbing” vs. “energy
`returning” (Rhoades) argument
`
`A protective member primarily for use as an energy absorbing pad
`
`The preferred material is a Dimethyl siloxane hydroterminated polymer
`such as the material sold by DOW CORNING under their Catalogue or
`Trade number 3179.
`
`Reply, p. 9; Ex.1006(Abstract, 8:26–28).
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`25
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`Brooks Sports
`Exhibit 1080
`Page 26 of 153
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`Plant (Ex. 1006) undermines PO’s “energy absorbing” vs. “energy
`returning” (Rhoades) argument
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`PO’s Surreply, pg. 13
`
`PO’s Response, p. 8-9
`
`As incorporated into the members disclosed
`by Plant, incorporated into protective
`garments, and subjected to impact, Dow
`Corning Dilatant Compound No. 3179 may
`absorb energy. But the protective members
`disclosed by Plant are not constructed or
`loaded as the midsole recited by claim 1 of
`the 416 patent.
`
`The argued distinction [of Rhoades] was the
`different behavior of the materials: the
`applicant’s claimed material maximizes energy
`return vs. the Rhoades combination that
`absorbs energy to minimize energy return. A
`mixture as disclosed by Rhoades that
`minimized energy return is excluded from the
`Applicant’s claims.
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`26
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`Brooks Sports
`Exhibit 1080
`Page 27 of 153
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`PO’s actual prosecution history (Rhoades) argument
`
`Rhoades teaches an energy and shock absorption and vibration
`dissipation medium (Col 7, lines 27-39) comprising a dilatant compound
`including a polymer and a lubricant and a fibrous filler . . . . All of
`Rhoades' claims include both additives, so they must be important to
`Rhoades, but Applicant's claims, which are limited to "consisting
`essentially of dilatant compound," i.e., no combination of said additives.
`
`Ex. 1018, p. 10
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`27
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`Brooks Sports
`Exhibit 1080
`Page 28 of 153
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`Dilatant compound is retained “below the bottom of the foot”
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`1. A shoe to be worn on a foot, said shoe comprising a midsole having a top surface, said shoe
`midsole fabricated from material having a fixed elastic modulus and having at least one cavity
`formed in said top surface below the bottom of the foot, said at least one cavity filled with
`material consisting essentially of a dilatant compound, all of which material consisting
`essentially of a dilatant compound is retained below the bottom of the foot.
`
`PO’s construction:
`“The entire cavity, including in the top surface, is directly
`under the foot.”
`PO’s construction rejected in Institution Decision
`
`Ex.1001 8:27-35
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`28
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`Brooks Sports
`Exhibit 1080
`Page 29 of 153
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`Dilatant compound is retained “below the bottom of the foot”
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`PO relies on second dictionary definition in Ex. 2001
`Other definitions given “at a lower level” and “downward from” are also within the
`BRI standard.
`
`Reply, p. 11-12, Ex. 2001 at 4
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`29
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`Brooks Sports
`Exhibit 1080
`Page 30 of 153
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`“below the bottom of the foot”—No mandate for PO’s construction
`in specification
`
`Running shoes that interpose low-modulus materials between the bottom of the foot and the
`walking and running surface are better for absorbing energy to provide cushioning and shock
`absorption between the bottom of the foot and the . . . surface
`
`“between the bottom of the foot and the . . . surface”
`Contemplates parts of the shoe that are outside “the
`perimeter” of the foot which PO argued in POR
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`Reply, p. 11-12, Ex. 1001 at 2:10-13; POR, p.10.
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`30
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`Brooks Sports
`Exhibit 1080
`Page 31 of 153
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`“below the bottom of the foot”—PO’s construction reads in
`limitations from preferred embodiment
`
`If the inner perimeter of the top edge 40 of the insert shell is larger than the perimeter of the
`portion of the runner’s heel that exerts a degree of compressive impact on the insert necessary
`to cause the dilatant compound to exhibit its inverse thixotropic properties during running,
`portions of the dilatant compound will initially become relocated by “oozing”
`
`No disclaimer or lexicography
`No reason to read in limitations from preferred embodiment
`Can be contained in other ways
`
`POR, p.9-10; Reply., 12-13
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`31
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`Brooks Sports
`Exhibit 1080
`Page 32 of 153
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`“below the bottom of the foot”—Prosecution history undermines
`PO’s construction
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`[T]he placement of the dilatant compound in Kita to extend above the
`bottom of the foot and above the midsole
`
`PO’s arguments inconsistent with construction
` If “bottom of the foot” meant the foot’s perimeter, the inside of
`the foot is “above the bottom of the foot
`
`.
`
`Ex. 1018, p.8; Reply, p. 12
`
`32
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`Brooks Sports
`Exhibit 1080
`Page 33 of 153
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`"cavity formed in said top surface“—PO’s construction
`
`1. A shoe to be worn on a foot, said shoe comprising a midsole having a top surface, said shoe
`midsole fabricated from material having a fixed elastic modulus and having at least one cavity
`formed in said top surface below the bottom of the foot, said at least one cavity filled with
`material consisting essentially of a dilatant compound, all of which material consisting
`essentially of a dilatant compound is retained below the bottom of the foot.
`
`“a space within the midsole that opens only to the top surface
`of the midsole”
`
`POR, p.17.
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`33
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`Brooks Sports
`Exhibit 1080
`Page 34 of 153
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`"cavity formed in said top surface“—PO’s arguments misplaced
`
`“[I]t is essential that the dilatant [sic] material is confined in the cavity.” POR at 18
` Reading in preferred embodiment without identifying any lexicography or disclaimer
` The compound may be “confined” for purposes of the invention in multiple other ways.
`Dictionary on which PO relies provides other broader appropriate definitions
`Limitations PO reads in to construction not justified by specification or claims
`
`POR, p.18; Reply., p.11.
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`34
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`Brooks Sports
`Exhibit 1080
`Page 35 of 153
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`Grounds 1 and 2: Izumi anticipates and
`renders obvious claim 1
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`Brooks Sports
`Exhibit 1080
`Page 36 of 153
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`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`Izumi discloses “bouncing putty” inserts in the midsole of a sport shoe as well as
`other elements of claim 1, anticipating and rendering obvious claim 1.
`
`Ex. 1002 at p. 5 (highlighting added); Pet., 31-41; Ex. 1047¶¶209-228.
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`36
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`Brooks Sports
`Exhibit 1080
`Page 37 of 153
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`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
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`Claim 1: “a shoe to be worn on a foot, said shoe comprising a midsole having a top
`surface”
`
`Ex. 1002 “Izumi” at title; ¶17; ¶19, FIG. 3 (red arrows added); Pet., 31-32; Ex. 1047 ¶¶209─210.
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`37
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`Brooks Sports
`Exhibit 1080
`Page 38 of 153
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`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
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`Claim 1: “said shoe midsole fabricated from material having a fixed elastic modulus”
`
`Ex. 1001 ‘416 Patent at 3:47-50.
`
`Ex. 1002 “Izumi” ¶17.
`
`Pet., 32-33; Ex. 1047 ¶¶206─213.
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`38
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`Brooks Sports
`Exhibit 1080
`Page 39 of 153
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`
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`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`The ‘416 patent states that prior art shoes “are generally constructed of materials
`and in such a manner as to interpose materials having fixed elastic moduli between a
`runner’s foot and the walking and running surface.” Ex. 1001 at 3:33-38.
`
`PO does not dispute EVA and PU
`have a fixed elastic modulus
`
`Pet., 32-33; Ex. 1047 ¶¶206─213; POR, pp. 27-28.
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`39
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`Brooks Sports
`Exhibit 1080
`Page 40 of 153
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`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`Claim 1: “said shoe midsole . . . having at least one cavity formed in said top surface
`below the bottom of the foot”
`
`Ex. 1002 “Izumi” ¶19.
`
`Ex. 1002 “Izumi” ¶27.
`
`Pet., 33-36; Ex. 1047 ¶¶214─218.
`
`40
`
`Brooks Sports
`Exhibit 1080
`Page 41 of 153
`
`
`
`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`Claim 1: “said at least one cavity filled with material consisting essentially of a dilatant
`compound”
`
`[0017]
`. . . .
`layered between the outer sole 2 and the inner
`sole 3, a foam mid sole 4 that functions as a
`shock mitigating layer . . . where two hollow
`portions 6 that are filled with silicone bouncing
`putty 5
`
`Ex. 1002 “Izumi” ¶17.
`
`Ex. 1002 “Izumi” ¶27.
`
`Pet., 36-38; Ex. 1047 ¶¶219─223.
`
`41
`
`Brooks Sports
`Exhibit 1080
`Page 42 of 153
`
`
`
`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`A POSA would have understood that Izumi’s “silicone bouncing putty” refers to
`dilatant compounds, including Silly Putty, which is often called bouncing putty.
`
`Dilatant compounds are also sometimes referred to as
`bouncing putty (U.S. Pat. No. 5,319,021. One of the most
`familiar of these is known as Silly Putty . . . as described in
`U.S. Pat. No. 2,541,851.
`Ex. 1012 at p. 4.
`
`Pet., 36-38; Ex. 1047; ¶¶219-20; Ex. 1071 ¶¶94-101.
`
`42
`
`Brooks Sports
`Exhibit 1080
`Page 43 of 153
`
`
`
`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`Izumi discloses that its “silicone bouncing putty . . . is a mixture of silica, as a filler, in a
`reaction product of dimethyl polysiloxane and a boric acid compound.” (Ex. 1002 ¶13)
`This composition is equivalent to Dow’s “Dilatant Compound No. 3179” described in
`the ‘416 patent and used in a preferred embodiment.
`
`Ex. 1002 ¶13.
`
`Pet., 36-38; Ex. 1047; ¶¶219-223; Ex. 1071 ¶¶94-101.
`
`43
`
`Ex. 1001at 4:16-23.
`
`Brooks Sports
`Exhibit 1080
`Page 44 of 153
`
`
`
`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`The ‘416 patent states that Silly Putty is a “well-known example of dilatant
`compound” and is described in Wright. Wright, like Izumi, refers to the substance as
`“bouncing putties.”
`
`The present invention relates to . . .
`compositions which because of their
`unusual properties may best be
`described as “bouncing putties.”
`Ex. 1009 at 1:1-5.
`
`Ex. 1001 at 2:51-52.
`
`Pet., 36-38; Ex. 1047 ¶¶219─223.
`
`44
`
`Brooks Sports
`Exhibit 1080
`Page 45 of 153
`
`
`
`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`Izumi’s silicone bouncing putty has the physical properties of a dilatant compound:
`Ex. 1002 ¶18.
`
`[S]ilicone bouncing putty . . . has the peculiar property of behaving like a liquid when the
`applied force is small, while behaving as a rigid body, with a large coefficient of restitution,
`when the applied force is large.
`Ex. 1002 ¶18.
`
`Pet., 36-38; Ex. 1047; ¶¶40, 219-223; Ex. 1002.
`
`45
`
`Brooks Sports
`Exhibit 1080
`Page 46 of 153
`
`
`
`Izumi Anticipates and Renders Obvious Claim 1 (Grounds 1 and 2)
`
`Claim 1: “all of which material consisting essentially of the dilatant compound is
`retained below the bottom of the foot”
`Izumi’s silicone bouncing putty 5 is contained in the hollow portion 6 under the inner
`sole 3.
`Because the bottom of the wearer’s foot
`rests on the top surface of the inner sole 3,
`the dilatant compound is in turn retained
`below the bottom of the foot. Ex. 1047
`¶224; Ex. 1071 ¶¶145-163.
`Petition showed that Izumi met this
`limitation under either party’s construction
`
`Ex. 1002 FIG. 3.
`
`Pet., 38-40; Ex. 1047; ¶¶224-226; Ex. 1071 ¶¶145-163.
`
`46
`
`Brooks Sports
`Exhibit 1080
`Page 47 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail
`
`Patent Owner constructs two narratives in attempting to distinguish Izumi
` One based on Untenable Premise
` One based on a Wrong Comparison
`
`Petitioner’s Reply, p. 14-16.
`
`47
`
`Brooks Sports
`Exhibit 1080
`Page 48 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is like a “Rigid Body”
`
`Patent Owner attempts to distinguish Izumi by arguing that Izumi’s statement that
`Izumi’s bouncing putty “acts as rigid bodies” refers to a formal, mathematical “rigid
`body,” or something like it, rather than a how dilatant compound, like Dow 3179,
`behaves under rapid loading.
`
`Ex. 2011 ¶49.
`
`Petitioner’s Reply, p. 15-16; Ex. 1071 ¶¶103-111.
`
`48
`
`Brooks Sports
`Exhibit 1080
`Page 49 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`This false premise builds to the assertion in Ex. 2011 ¶62 that Izumi’s bouncing putty
`“does not store and return the amounts of energy that the dilatant compound
`disclosed by the ’416 Patent stores and returns”.
`
`Petitioner’s Reply, p. 15-16.
`
`49
`
`Brooks Sports
`Exhibit 1080
`Page 50 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`The PO then argues the assumed “rigidity” causes
`less “energy return”
`
`. . . the Izumi ‘silicone bouncing putty’ is not energy returning because it is rigid (or nearly
`so) so that it does not store energy as much as does the dilatant compound in the mixture
`and therefore returns less energy than the dilatant material.
`
`POR, p. 42-43; Petitioner’s Reply, p.15.
`
`50
`
`Brooks Sports
`Exhibit 1080
`Page 51 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`Dr. McKinley’s interpretation hinges on one word in Izumi, “rigid.”
`
`Ex. 1002 ¶18.
`Petitioner’s Reply, p. 16.
`
`51
`
`Brooks Sports
`Exhibit 1080
`Page 52 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`Dr. McKinley’s interpretation hinges on one word in Izumi, “rigid.”
`
`Ex. 1068 107:12-17.
`
`Petitioner’s Reply, p. 16.
`
`52
`
`Brooks Sports
`Exhibit 1080
`Page 53 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`Dr. McKinley’s interpretation hinges on one word in Izumi, “rigid.”
`From this, he concludes that Izumi’s bouncing putty is fundamentally different from,
`e.g., Dow 3179.
`
`Ex. 1068 110:1-3.
`Petitioner’s Reply, p. 16.
`
`53
`
`Brooks Sports
`Exhibit 1080
`Page 54 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`Dr. McKinley’s interpretation hinges on one word in Izumi, “rigid.”
`
`Ex. 1068 105:4-106:4.
`
`Petitioner’s Reply, p. 16-18.
`
`54
`
`Brooks Sports
`Exhibit 1080
`Page 55 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`Dr. McKinley’s interpretation hinges on one word in Izumi, “rigid.”
`
`Ex. 1068 119:21-120:12.
`
`Petitioner’s Reply, p. 16-18.
`
`55
`
`Brooks Sports
`Exhibit 1080
`Page 56 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`Dr. McKinley’s interpretation hinges on one word in Izumi, “rigid.”
`
`Ex. 1068 119:21-120:12.
`
`Petitioner’s Reply, p. 16-18.
`
`56
`
`Brooks Sports
`Exhibit 1080
`Page 57 of 153
`
`
`
`Patent Owner’s Attempts to Distinguish Izumi Fail – (1) Untenable
`Premise that Izumi’s “Bouncing Putty” is a “Rigid Body”
`
`The premise is untenable because it is:
`•
`inconsistent with the usage of the term in the art
`•
`inconsistent with Izumi’s statement of “large coefficients of
`restitution”
`inconsistent with PO’s expert’s own belief that his interpretation
`was not what Izumi intended.
`
`•
`
`Petitioner’s Reply, p. 15.
`
`57
`
`Brooks Sports
`Exhibit 1080
`Page 58 of 153
`
`
`
`(1) Untenable Premise that Izumi’s “Bouncing Putty” is a “Rigid Body” -
`Inconsistent With The Usage of the Term “Rigid” in the Art
`
`“Rigid” is used in the art to describe Dow 3179 under fast loading.
`Similar terms “solid,” and “solidifies” are used in the art and the ’416 Patent to
`describe the same response.
`Dr. McKinley’s interpretation and the distinctions he draws from it are not consistent
`with the art.
`
`Ex. 1001 at 2:39-50.
`
`Petitioner’s Reply, p. 17.
`
`58
`
`Brooks Sports
`Exhibit 1080
`Page 59 of 153
`
`
`
`(1) Untenable Premise that Izumi’s “Bouncing Putty” is a “Rigid Body” -
`Inconsistent With The Usage of the Term “Rigid” in the Art
`
`Plant and Wright use the ordinary language of the prior art.
`
`Plant Ex. 1006 at 11:1-10.
`
`Petitioner’s Reply, p. 17.
`
`59
`
`Brooks Sports
`Exhibit 1080
`Page 60 of 153
`
`
`
`(1) Untenable Premise that Izumi’s “Bouncing Putty” is a “Rigid Body” -
`Inconsistent With The Usage of the Term “Rigid” in the Art
`
`Plant Ex. 1006 at 5:1-10.
`
`Ex. 1068 at 107:2-17.
`
`Petitio
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