UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`RIDDELL, INC.,
`Petitioner,
`
`v.
`
`KRANOS IP II CORP.,
`Patent Owner.
`__________
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`__________
`
`Record of Oral Hearing
`Held: September 5, 2019
`__________
`
`Before HYUN J. JUNG, JAMES A. TARTAL, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`RIDDELL, INC.,
`Petitioner,
`
`v.
`
`KRANOS IP II CORP.,
`Patent Owner.
`__________
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`__________
`
`Record of Oral Hearing
`Held: September 5, 2019
`__________
`
`Before HYUN J. JUNG, JAMES A. TARTAL, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ANDREW T. DUFRESNE, Ph.D., ESQ.
`Perkins Coie LLP
`33 East Main Street, Suite 201
`Madison, Wisconsin 53703
`608-663-7492
`adufresne@perkinscoie.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BENJAMIN P. GILFORD, ESQ.
`Greenberg Traurig, LLP
`77 West Wacker Drive, Suite 3100
`Chicago, Illinois 60601
`312-364-1658
`gilfordb@gtlaw.com
`
`
`
`The above-entitled matter came on for hearing on Thursday, September
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`5, 2019, commencing at 10:00 a.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`Patent 6,434,755 B1
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`P-R-O-C-E-E-D-I-N-G-S
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`10:00 a.m.
`JUDGE TARTAL: Good morning. Please be seated.
`We are here for a final hearing in an inter partes review case
`captioned Riddell Incorporated, Petitioner v. Kranos IP II Corp, Patent
`Owner, Case IPR 2018-01164 concerning U.S. Patent No. 6,434,755 B1.
`First, let me begin by introducing the Panel. I'm joined by Judge
`Jung and remotely by Judge Moore, and I am Judge Tartal.
`May we please have the parties’ appearances. Who do we have
`appearing today on behalf of Petitioner?
`MR. DUFRESNE: Your Honor, I'm Andrew Dufresne from
`Perkins Coie, -- Petitioner, Riddell.
`JUDGE TARTAL: Good morning and welcome. And for Patent
`Owner, who do we have appearing today?
`MR. GILFORD: Your Honors, Ben Gilford on behalf Patent
`Owner, Kranos IP II Corp.
`JUDGE TARTAL: Okay. Thank you and welcome to you as
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`well.
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`We set forth the procedures for today's hearing in our trial order.
`And as a reminder, each party will have 45 minutes of total time to present
`arguments in the case.
`Petitioner has the burden of proof and will go first. Patent Owner
`will then present opposition arguments for the case.
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`Then to the extent Petitioner has reserved time, Petitioner will
`present arguments in reply. And if Patent Owner has reserved time, we
`permit Patent Owner to also present rebuttal arguments.
`Are there any questions in that regard, Counsel?
`MR. DUFRESNE: No, Your Honor.
`JUDGE TARTAL: For clarity of the transcript and for the
`particular benefit of Judge Moore, please when you refer to an exhibit on the
`screen, state for the record the exhibit and page number. Or for
`demonstratives, the slide number to which you are referring.
`I'll remind each party that under no circumstances are they to
`interrupt the other party during a presentation of its arguments and
`demonstratives.
`Any additional questions on behalf of Patent Owner at this time?
`MR. GILFORD: No, Your Honor.
`JUDGE TARTAL: And any questions from Petitioner at this time?
`MR. DUFRESNE: No, Your Honor.
`JUDGE TARTAL: Petitioner, would you like to reserve a certain
`amount of the 45 minutes for your --
`MR. DUFRESNE: Yes, I'd like to reserve 10 minutes if I may.
`JUDGE TARTAL: Okay. We have a clock that will show you
`the time available. So I'll set it at 35 minutes and that will give you an
`indication as to when you are through with that. And you'll still have the
`remaining 10 minutes.
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`MR. DUFRESNE: Thank you.
`JUDGE TARTAL: You may proceed when you're ready.
`MR. DUFRESNE: I have brought paper copies of my
`demonstratives --
`(Simultaneous speaking.)
`JUDGE TARTAL: That'll be fine if you want to pass those up.
`MR. DUFRESNE: Okay.
`JUDGE TARTAL: Thank you. Counsel, can I ask you to begin
`with just a brief explanation of the status of proceedings in the District Court
`and any appeals that are pending?
`MR. DUFRESNE: Absolutely. So as you reference this, this is
`part of a broader matter that's been in District Court litigation between these
`two parties on a number of patents, including this one.
`Currently, all of the District Court proceedings are resolved in the
`District Court. There is an appeal pending.
`Right now, a briefing has not -- or the first brief has not been filed
`yet. But it's due, I believe, sometime in --
`MR. GILFORD: October.
`MR. DUFRESNE: -- late October is when the first brief will be
`due in that case.
`And that includes the district or the summary judgment decision
`invalidating Claim 11 of the '755 Patent as part of that appeal.
`JUDGE TARTAL: Okay. Thank you.
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`MR. DUFRESNE: So as I said, Your Honor, I'm Andrew Dufresne
`appearing for the Petitioner, Riddell.
`What I thought I would do today would be to start with claim
`instruction issues, proceed through the disputed terms that have been
`discussed on the record between the parties, and then move on as time
`permits to the five instituted grounds of unpatentability in this case.
`And of course, happy to answer any questions or take any diversions
`of the path along the way.
`So for a very brief introduction on the '755 Patent, this is a patent
`that pertains to a sports helmet.
`The specification describes an offset having a thickness substantially
`corresponding to the thickness of the shell and define a continuous portion
`of the shell.
`And the specification provides drawings that exemplify the offset
`that's described in the specification.
`This is on Slide 4. Exhibit 1001, Figure 1-A shows the offset 28 in
`one exemplary embodiment.
`Moving to Slide 5. Again, from Exhibit 1001, Figure 2 shows
`another view of an embodiment of the specification showing an offset of 28
`in one embodiment.
`JUDGE TARTAL: Counsel, if I may ask, is it your understanding
`or -- again, there's probably not an answer. But in the figures showing on
`4, is Element 32 shown or not shown?
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`MR. DUFRESNE: You're at Figure 4, Your Honor?
`JUDGE TARTAL: On demonstrative page number 4, Figure 1A.
`MR. DUFRESNE: Right. And the question is whether what is
`shown?
`JUDGE TARTAL: Is Element 32 missing from that figure? Or is
`it there?
`MR. DUFRESNE: Well, there is a line pointing to a lower portion
`of the shell that says 32. And what 32 is described as in the specification of
`course is the edged lip.
`There is one might say some inconsistency in the way it's referred to
`in the drawings between, for example, Figure 1A.
`And then Figure 3 on Slide 5, there is a line there. And the line
`corresponding to 32 points to the bottom edge of the shell as well.
`So it's maybe a little bit ambiguous as to how it's treated in the
`different figures. There is only one claim challenged in this IPR. It's Claim
`11 from the '755 Patent.
`And moving to Slide 7. There are only three terms in that claim --
`in that single claim that had been disputed by the parties. It was the offset
`ear holes and it extends substantially between the ear holes, terms. So I
`thought I would start with the offset term.
`Moving to Slide 8. I put up the parties' two constructions.
`Riddell's construction would construe to be a portion of the shell that defines
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`the surface that lies in a plane above or below a neighboring surface of the
`shell.
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`On the other hand, Kranos' proposed construction would impute two
`specific limitations into that term. One would be a requirement that there be
`surfaces on both sides of the offset. And the second is a requirement for
`transition walls. And it's our position that neither of those limitations that
`Kranos is proposing has any support in the record.
`So Slide 9, the Board did address this term in its institution decision.
`And the Board concluded that the term offset was limited to offsets that
`extend only below the surface of the shell. And the outer surface wasn't
`limited to offsets that have an equal thickness with the rest of the shell and
`did not necessarily require a standoff in both the exterior and interior surface
`of the shell.
`But the Board did not address at that time the both sides or transition
`walls limitations that Patent Owner is now proposing.
`JUDGE TARTAL: And that was a preliminary decision based on
`the record for institution, not on the complete record?
`MR. DUFRESNE: Absolutely. That was clear in the institution
`decision, Your Honor.
`Moving to Slide 10. Again, the Patent Owner proposes these two
`limitations, and neither has support in the record.
`If we move to Slide 11, this slide deals with the both-sides limitation
`that the Patent Owner is proposing.
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`And we view this as an attempt to read in a limitation from the
`specific embodiment shown in the figures in the specification.
`So some of the figures in Exhibit 1001 do show an offset. I'm
`looking, for example, at Figure 1, Exhibit 1001.
`They do show an offset that appears to have material above and
`below the offset surface in the helmet.
`But nothing in the specification requires that, and there's no both-
`sides limitation in the claim itself. It just says an offset.
`And the specification -- if you look at the specification, what it says
`about an offset -- I'm looking at Exhibit 1001, Column 3, Lines 22 to 25. It
`says, the offset defines an exterior surface that lies in a plane below the
`exterior surface.
`So it only refers to one surface of the rest of the shell, not surfaces on
`both sides. And the specification also talks about upper and lower
`longitudinal lines as exemplary boundaries of the offset.
`I'm looking again at Column 3, Lines 48 to 55, or so. But even that
`is only described as being preferable. It says whether it preferably has upper
`latitudinal line and a lower latitudinal line which indicates that neither is
`actually required.
`In addition, Demonstrative Slide 11 reproduced Figure 2 from
`Exhibit 1001. And that figure appears to show the offset 28 extending all the
`way down to the lower lip, 32 which means there's no surface below the
`offset as Kranos' proposed construction would require.
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`So we'd submit that this both-sides construction would improperly
`limit the claim term to a feature that's in preferred embodiments in the
`specification is certainly not the broadest reasonable interpretation of this
`term.
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`Slide 12, moving to the transition walls limitation.
`This limitation similarly has no support at all in the '755 Patent. It's
`found nowhere in the specification. The term, transition walls, appears
`nowhere. It's not indicated in any of the figures. All of the figures show the
`offset. It's just a simple line demarcating the offset from the rest of the
`surface. And there's no indication of any kind of a transitional wall
`anywhere in the specification at all.
`So there's no basis in the '755 Patent to import that limitation into the
`offset term.
`JUDGE TARTAL: Counsel, do any of the grounds of alleged
`unpatentability turn on whether or not whether a transition wall is required?
`MR. DUFRESNE: Your Honor, you anticipated my next slide.
`So I've switched to Demonstrative Slide 13.
`And the answer to your question would be no. I think even if you
`think that the transition walls limitation would be somehow proper in this
`claim, it wouldn't matter to patentability in this case because -- likely
`because there's no indication of transition walls anywhere in the '755 Patent
`itself.
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`Patent Owner has pointed to the prior art that's in the instituted
`grounds to exemplify transition walls and has indicated those as being
`present in the transitions between the offsets we've identified and the rest of
`the shell in those references. And that's indicated with both Tang and Cooper
`in Demonstrative Slide 13.
`So even if you thought that was a proper limitation in the claim
`which we again think there's no basis to import that into this claim, it would
`be immaterial to the patentability issues in this case.
`Moving to Slide 14 just briefly to touch on the District Court case
`that Your Honor mentioned at the beginning of the hearing. The District
`Court considered these same arguments from the Patent Owner about the
`construction of offset and rejected them out of hand. And that was under
`the narrower Phillips construction standard. And the Court said that there
`was no basis to import those limitations into the term. If that's true under the
`Phillips standard, we think it's also true certainly under the BRI standard that
`applies here.
`If there are no questions about the offset term, I'll move to the ear
`holes term under Demonstrative Slide 15. Here I've reproduced the parties'
`proposed constructions for the ear holes term.
`Riddell has proposed construction that would include gaps or
`apertures that accommodate the wearer's ears while the helmet is in use.
`While the Patent Owner has proposed a more restrictive construction that
`would recite hollow places in a shell surface for a wearer's ears.
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`And then separately in its briefing, the Patent Owner has also argued
`that the term ear hole should be limited such that it can't include gaps or
`apertures and it requires material on all sides that completely surrounds the
`ear hole as used in this patent.
`Slide 16. Now ear holes are not discussed in depth in the
`specification. They're exclusively used to describe reference points for other
`features on the helmet that's disclosed in the specification. There are no
`specified structural characteristics for an ear hold anywhere in the
`specification.
`Slide 17. The figures are described very specifically in the
`specification as providing only a preferred embodiment that is non-limiting
`in the specification of the '755 Patent. If you look at Exhibit 1001, Column
`7, Lines 11 to 16. It makes very clear that the embodiments shown in the
`figures are not meant to be limiting.
`So while the figures in Exhibit 1001 such as Figure 1A is reproduced
`on Demonstrative Slide 17 do show an ear hole that's noted by Reference
`Numeral 30 as being completely surrounded by material. That embodiment
`is not limiting, and the term does not necessarily have to be limited to that
`type of an ear hole.
`JUDGE S. MOORE: Counsel, did your expert provide testimony
`on this issue?
`MR. DUFRESNE: On the completely surrounded?
`JUDGE S. MOORE: Yes.
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`MR. DUFRESNE: I believe he agreed with our construction that it
`includes gaps or apertures and that the ear holes in the Tang reference could
`qualify -- under that construction.
`JUDGE S. MOORE: Okay. Thank you.
`MR. DUFRESNE: I'm on Slide 18 now. So as I mentioned, the
`specification does not necessarily limit the term to ear holes completely
`surrounded by material. And in fact, Kranos' stated definition also does not.
`It only calls for hollow places in a shell surface for a wearer's ears. And I
`don't find anywhere in the Patent Owner's briefing that's explained why that
`proposed definition necessarily itself would require the ear hole to be
`completely surrounded by material. And the dictionary exhibits that Kranos
`has submitted in this case I think further provides support for the Petitioner's
`position, especially under the broadest reasonable construction standard.
`So the definition of hole that the Patent Owner provided in Exhibit
`2011 includes as one definition an aperture passing through something
`which is consistent with Riddell's construction of this term. Patent Owner
`also submitted dictionary definitions for gap and aperture. Those were
`Exhibits 2014 and 2015. And those both identified the term hole as among
`the reciprocal definitions for those terms.
`So I think the Patent Owner's own dictionary exhibits demonstrate
`that our proposed construction is at least reasonable and it's certainly broader
`than the construction the Patent Owner is proposing.
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`JUDGE TARTAL: Is there -- can I ask, is there any additional
`evidence that Petitioner provided in support of its proposed definition? So
`we have a definition that Petitioner asserts that “hole” includes gaps or
`apertures. What is that based on?
`MR. DUFRESNE: Well, I --
`JUDGE TARTAL: What is supporting -- what is the evidence that
`supports that definition that Petitioner has provided?
`MR. DUFRESNE: So our expert testified that he would understand
`that term as a person skilled in the art as including gaps or apertures. And it's
`basically based on a plain meaning kind of interpretation. This isn't a highly
`technical term, so we didn't think we needed to submit dictionaries or any
`more involved evidence on that point.
`If there are no further questions on the ear holes, I'll move on to,
`extends substantially between the ear holes. That starts on Slide 19.
`So again, here I've laid out the parties' two proposed constructions.
`Riddell proposes a construction that would limit the offset's length whereas
`the Patent Owner has proposed a construction that it says is required to limit
`the offset's length and its position.
`Slide 20. And the Patent Owner has taken issue with our proposed
`construction that defines the extends substantially between the ear holes
`term as extending at least most of the circumferential difference -- distance,
`I'm sorry, between the ear holes. But that's consistent with the specification,
`as you can see in this excerpt from the '755 Patent on Demonstrative Slide
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`20. It says that the offset preferably extends the circumferential distance
`between the ear holes. It also makes sense to include that when you're
`talking about a football helmet which is a globe-shaped thing and the
`distance is going to be part of the shell which the claim clearly specifies.
`Without specifying circumferential difference, you might, for example, talk
`about the distance between the ear holes that spans directly across the
`interior of the helmet which wouldn't have much to do with the shell and
`wouldn't make a lot of sense.
`Moving to Slide 21. Again, just briefly, the Board did touch on this
`term in the institution decision. But as Judge Tartal pointed out, before that,
`it was a preliminary decision and it's certainly not binding on the Court's
`final construction of the term.
`Moving to Exhibit Slide 22. I would point out to the Panel that
`Claim 11 already requires a separate positional limitation. And that's
`explicitly recited right in the claim. And it requires that the offset extends
`between the rear and opposite side portions of the shell. So that would tend
`to indicate or suggest that the between the ear holes term is not another
`positional limitation. The position has already been defined separately right
`in the claim in a separate limitation.
`Turning to Slide 23. Consistent with that reading of the claim, the
`specification discusses offset position without reference to the ear holes, and
`that's a consistent theme throughout the specification. Every time it talks
`about the location of the offset, there's no reference to the ear holes at all. So
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`I've pulled some excerpts from Exhibit 1001, Column 1 and Column 2 that
`demonstrate that.
`Moving to Slide 24. And we know when the specification does talk
`about the ear holes, it's talking about -- oh, excuse me. Slide 24 is another
`example of where we're talking about the location of the offset with
`reference to other features of the helmet or their landmarks that are not the
`ear holes. Here, it's the user's occipital protuberance and the lip of the
`helmet.
`Slide 25, then when the specification does return to ear holes, it's
`talking about offset length. So this is an excerpt from Exhibit 1001 at
`Column 3. And here it's talking specifically about the length of the offset.
`And there it says it extends the distance between the ear holes which
`provides further support for Petitioner's construction that this is -- it's
`between the -- extending between the ear holes term is really about offset
`length.
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`Slide 26. The Patent Owner really doesn't have a lot to point to in
`the specification. So they look for support for their construction in the
`prosecution history. And specifically, the Patent Owner points to comments
`that the applicant made during prosecution to overcome a rejection based on
`Flynn which is Exhibit 1012. The Figure 1 from Flynn is reproduced here on
`Demonstrative Slide 26. But the prosecution history regarding that prior art
`reference does not support the -- importing the location construction that the
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`Patent Owner is requesting. So those comments that the Patent Owner -- or
`the applicants made during prosecution.
`Demonstrative Slide 27 shows those comments. This is an excerpt
`from Exhibit 1010 at page 122. And what the applicant did was to
`distinguish Flynn's offset in terms of position by citing the separate
`limitation that I talked about before that requires the offset to be admitted,
`rear and opposite side portions. And they said that the offsets in Flynn were
`on the top. And so it couldn't be in the rear and side portions like the claim
`required.
`Slide 28. When they moved to talking about the ear holes, they
`didn't talk about position. They talked about distance. So they said Flynn's
`offsets also do not extend substantially from the left side ear hole to the right
`side ear hole which is a clear indication that they're talking about distance
`traveled. It's from-to is how they talk about when they're discussing ear
`holes in the prosecution history. And they also say it wasn't for increasing
`flexural resistance. So they made a lot of different arguments. None of
`them depended on the location of the offset relative to the ear holes. And the
`most you can say is that there's no clear unmistakable disclaimer which
`would be required to narrow the claim based on the prosecution history here.
`So we would submit that Kranos' narrow construction here certainly
`can't be the broadest reasonable interpretation of this term.
`JUDGE TARTAL: Is it Petitioner’s contention that “extending
`substantially” includes an offset that extends beyond the ear holes?
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`MR. DUFRESNE: So the claim language, extending substantially
`between?
`JUDGE TARTAL: Right.
`MR. DUFRESNE: Yeah, I think that would because you'd be
`covering at least most of the circumferential distance between the ear holes.
`If you extend beyond, you've still covered the distance between. So I think
`that you'd still be covered there.
`Moving to Slide 29. Now I'm going to transition and talk briefly
`about each of these grounds if time permits. And the first ground was
`Ground 1 which was anticipation by the Cooper reference.
`Slide 31 shows the Cooper reference. It's a prior art Canadian
`patent that is -- directed to a hockey helmet.
`Slide 32 shows some figures illustrating the helmet that's disclosed
`in the Cooper reference. And those figures illustrate that the Cooper
`reference helmet, the helmet that's disclosed in that reference includes all of
`the features that are recited in the brief Claim 11 of '755 Patent, including an
`offset that extends around the rear and side portions of the helmet between
`the ear holes that's at a lower elevation than the neighboring shell surface
`above it.
`Slide 33, just referring briefly back to the District Court litigation
`again. The District Court invalidated Claim 11 of the '755 Patent at summary
`judgment, as anticipated by Cooper, the exact same reference that we
`presented to the Board here today. And the Court did that under the clear and
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`convincing evidence standard and the narrow claim construction standards
`that were applicable in that proceeding.
`I'll move to Slide 35. So there are only three limitations that are in
`dispute regarding Cooper and Claim 11. Those are the offset, the increasing
`flexural resistance of the shell, and the extending substantially between the
`ear holes.
`On Slide 36, we've indicated here where Cooper includes an offset.
`Like I mentioned, it's the lower elevation portion of the rear side of the
`helmet. It's extending around the back of the helmet and into the sides, close
`to the ear holes. It's indicated by arrows, and the figure is reproduced on
`Slide 36.
`If you agree with us on claim construction, specifically that there's
`no both-sides requirement. Then the offset, this is definitely an offset and
`Cooper definitely anticipates. Even if you don't agree with us and you
`believe that there is some both-sides requirement displayed no basis for that
`in the specification. This would still be an offset even under the Patent
`Owner's construction.
`So the offset -- I'm on Slide 37. The offset that's disclosed in
`Cooper extends down to the lower edge lip in the Cooper helmet. You can
`see that on Figure 3 that's been reproduced on Slide 37. And it looks
`remarkably similar to Figure 2 from the '755 Patent where the offset 28 is
`shown extending down and it looks like it's meeting what's demarcated as lip
`32 in that figure.
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`And as our expert, Mr. Shewchenko, testified in his reply
`declaration, this edge lip actually has a surface that is elevated from the
`lower elevation of the offset. You can see that when the offset in the Cooper
`reference is shown in from the side view that's shown in Figure 2 of Exhibit
`1002.
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`So even under the Patent Owner's construction, there is still a surface
`at a different elevation, both above and below the offset in the Cooper
`reference.
`JUDGE TARTAL: And does he address -- does the expert you
`provided address whether that lip is a “substantially continuous” portion of
`the shell?
`MR. DUFRESNE: I believe he did, Your Honor. I could pull out
`his declaration if you'd like me to examine that. Or I could do that in
`rebuttal too.
`JUDGE TARTAL: You can do it in rebuttal. But can you explain
`your contention in that regard? You can decide where it is supported by the
`evidence. But --
`MR. DUFRESNE: Sure.
`JUDGE TARTAL: -- what is the rationale for why, even assuming
`that that lip is at a higher surface, that it's a substantially continuous portion
`of the shell?
`MR. DUFRESNE: Well, I don't know that there's any requirement
`for the -- again, I'm discussing this construction that I disagree with for the
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`both-sides limitation to be substantially continuous. I think the offset is
`what's in the claim as specified as being substantially continuous.
`But any rate, the lip is certainly part of the shell in the Cooper
`reference. It's a thickened, kind of rolled up edge lip on the edge of the shell.
`And I'm quite sure that our expert testified that that lip is part of the shell
`itself.
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`Does that answer Your Honor's question?
`JUDGE TARTAL: I think so. So you're contending that in the
`claim language “an offset defined on a substantially continuous portion of
`the shell,” even if that requires an elevation, even if we were to determine
`that it requires an elevation above and below the offset at a different height
`or depth, that the lip is not what's being referred to as being on a
`substantially continuous portion of the shell. It's the offset.
`MR. DUFRESNE: Yeah, that's -- Claim 11 says an offset defined
`as a substantially continuous portion of the shell.
`So to me, that language is referring to the offset itself.
`JUDGE TARTAL: Okay.
`MR. DUFRESNE: I'll move to Slide 39. If you determine that
`Cooper does have an offset, there's really no dispute that it increases flexural
`resistance. The Patent Owners agree that any offset is necessarily going to
`increase flexural resistance.
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`JUDGE TARTAL: Can you start with whether or not the claim
`limitation “for increasing the flexural resistance” is or is not entitled to
`patentable weight? And have you made the argument that it isn't?
`MR. DUFRESNE: We did not make an argument either way on
`that in our petition. We didn't think that it mattered because these offsets that
`are shown in the prior art are necessarily going to increase flexural
`resistance. That's described in the Clement reference.
`But it's also well known in the art that if you put an offset structure
`in there, it's going to do that. It's very longstanding knowledge in the field.
`But I would agree there's at least a real question of whether this language is
`entitled to patentable weight. It's just a functional limitation.
`JUDGE TARTAL: Just to be clear. You said it's in the Clement
`reference, correct?
`MR. DUFRESNE: The Clement reference is the one that has the
`specification that explicitly talks about ribbing or offsets that will provide
`increased flexural resistance. But the language in the claim about increasing
`flexural resistance is a clear functional limitation. And I think everybody
`agrees that if you provide the structure that's explicitly recited in the claim,
`that function is necessarily going to follow. So I don't know that -- I think
`there's a real question it may not be entitled to patentable weight. But
`whether it is or it isn't, I think the prior art certainly provides for increased
`functional resistance with the structures that it discloses.
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`JUDGE TARTAL: And so for an anticipation ground, you're
`relying on inherency?
`MR. DUFRESNE: Yes, yes. That's right. And I don't think
`there's a dispute about that. As we showed here in this excerpt from Paper
`13, the Patent Owner agrees that an offset necessarily increases flexural
`resistance of the shell. So that speaks directly to inherency, I think.
`And Slide 40 provides further evidence along that score. Our expert,
`Mr. Shewchenko, testified that an offset necessarily increases flexural
`rigidity. And a person skilled in the art would've known that at the time of
`the priority date of the '755 Patent.
`The Patent Owner has also disputed whether or not Cooper's offset
`extends substantially between the ear holes, apparently arguing that it needs
`to extend further. This is not far enough in the Cooper reference.
`But that ignores the explicit claim language that's in the '755 Patent
`itself which requires substantially b
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