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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`____________
`
`Case PGR2017-00015
`Patent 9,527,612 B2
`____________
`
`Record of Oral Hearing
`Held: August 31, 2018
`____________
`
`
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`
`
`
`
`Case PGR2017-00015
`Patent 9,527,612 B2
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`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER: (via telephone)
`
`
`TONIA SAYOUR, ESQUIRE
`Cooper & Dunham, LLP
`30 Rockefeller Plaza
`Floor 20
`New York, NY 10112
`
`
`
`
`The above-entitled matter came on for hearing on Friday, August 31,
`
`2018, commencing at 1:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
`
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`2
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`Case PGR2017-00015
`Patent 9,527,612 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE CHERRY: Good afternoon. This is Judge Cherry, and
`with me in the room here in Alexandria is Judge Kim. There are no
`attendees from the public.
`
`
`MS. SAYOUR: Okay. Good afternoon.
`
`
`JUDGE CHERRY: Will the parties please make their
`appearances. And Judge Ippolito is here as well. She’s on the phone.
`
`
`MS. SAYOUR: On the phone, right, okay.
`
`
`Judge Ippolito, can you hear me?
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`JUDGE IPPOLITO: I can.
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`MS. SAYOUR: Okay, good. I just wanted to make sure I
`could hear you as well.
`
`
`Appearances, this is Tonia Sayour. I’m with Cooper &
`Dunham. I’m here for the Petitioner, Telebrands Corp.
`
`
`JUDGE CHERRY: Good afternoon, Ms. Sayour.
`
`
`Do you know if anyone -- is anyone from the Patent Owner
`here?
`(No response.)
`
`
`JUDGE CHERRY: Did you -- Ms. Sayour, did you hear
`
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`anything from them?
`
`
`MS. SAYOUR: No, I have not heard from them. I’m
`presuming that in line with what they previously stated, they are not going to
`be joining. So -- but I have not heard from them, and I didn’t know by the
`silence whether they were on the line, but I don’t -- I don’t think they are.
`
`
`JUDGE CHERRY: All right. I just wanted to confirm.
`
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`Case PGR2017-00015
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`All right, this is the hearing in Telebrands Corporation versus
`
`
`Tinnus, PGR2017-00015. Counsel for Petitioner, if you want to begin.
`
`
`MS. SAYOUR: Thank you, Your Honor. I just wanted to start
`off by thanking the Board for accommodating us after our delayed arrival a
`couple of weeks ago and apologize for any confusion. I, for one, sincerely
`appreciate not having to travel today, as it is a day before a holiday
`weekend. So I just wanted to thank you for that.
`
`
`JUDGE CHERRY: Oh, you’re welcome, and we wanted to
`apologize for the -- we had gotten a miscommunication, and we would have
`waited had we known if you were coming, but I’m glad you could make it
`today, and please go ahead.
`
`
`MS. SAYOUR: Thank you. We’re here today to speak about
`the ‘612 patent. It’s a patent that relates to a device for filling multiple self-
`sealing balloons with water. It’s a device that’s no stranger to the Board as
`there have been other proceedings relating to other patents in the same
`family. But as we’ll get to, this is a different patent. It has different claim
`limitations, and there certainly is a different record here.
`
`
`Noticeably absent today is counsel for Patent Owner, who,
`quite frankly, has a client that seems to have given up on these proceedings.
`The Patent Owner was free to make its case, so to rely on its preliminary
`patent owner response, and it’s my hope that once we spend some time
`going over the evidence that’s of record in this proceeding and the claims
`that are at issue in this proceeding that you will find that this patent is more
`likely than not invalid.
`
`
`So I know I’m not there, and I guess you have all the slides in
`front of you.
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`Patent 9,527,612 B2
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`JUDGE CHERRY: Yes.
`
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`MS. SAYOUR: Okay. That’s easy to assume. I’d ask that we
`
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`turn to Slide 4, if that’s okay.
`
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`JUDGE KIM: And, Counsel, this is Judge Kim. Yes, I was
`hoping you could -- you sort of alluded to it, but, yes, if you could please
`emphasize any differences in the language between this case and the other
`cases, I think that would be helpful for us.
`
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`MS. SAYOUR: Sure. In terms of the claim language, you
`mean?
`JUDGE KIM: That is correct. And evidence, too, but I think
`
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`primarily claim language.
`
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`MS. SAYOUR: Do you want me to do that now, or do you
`want me to do that as I go through?
`
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`JUDGE KIM: No, no. You can feel free to do it as you’re
`going along.
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`MS. SAYOUR: Sure, sure.
`
`
`JUDGE KIM: I just wanted to make --
`
`
`MS. SAYOUR: Okay, of course. Thank you.
`
`
`So if we look at Slide 4, the alleged invention here is simple
`and basic. It’s not particularly complex, as this Board has pointed out in its
`institution decision, and it relates to a system and method for filling
`containers with fluid, it’s worth mentioning that the patent contemplates not
`only toys, shown in the figure, but also medical applications. Figure 5 is on
`the screen, and it has an embodiment where someone is using the device to
`collect blood.
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`If we turn to Figure 5, there is one independent claim at issue
`
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`here, an apparatus claim. It comprises four structural elements that have
`housing, plurality of hollow tubes, a plurality of containers, and a plurality
`of elastic fasteners. If we turn to Slide 6, the heart of this dispute really lies
`in the elastic fastener limitation. The claim recites an elastic fastener that
`has four functional limitations. The elastic fastener has to clamp a container
`to a tube. It has to be configured to restrict attachment of the container from
`the hollow tube. It also has to automatically seal the container upon
`detachment from the tube. And it has to permit its respective container to
`detach from the hollow tube by at least partially filling it with water.
`
`
`Now, based on the Patent Owner’s preliminary response, we’re
`really going to be focusing our discussion today on the fourth element,
`which is in yellow. It’s the sufficiently limited limitation. And we want to
`start with the obviousness grounds of the petition. And I want to focus today
`on the grounds that combine Saggio and Donaldson. Time permitting, we
`can talk about Saggio and Lee, and then get into indefiniteness and, again,
`time permitting, written descriptions.
`
`
`So moving on to Slide 8, devices for filling -- simultaneously
`filling, that is, multiple self-sealing containers with a fluid are not new. The
`Saggio reference teaches a device for filling multiple self-sealing water
`balloons. Just like Mr. Malone, Dr. Saggio was trying to come up with a
`way to solve the problem of filling multiple water balloons without having
`to tie them, and like the ‘612 patent, Saggio had the housing, it connected to
`a hose, it had the plurality of hollow tubes and containers, which are the
`balloons, and in Saggio, the containers are sealed by using a self-sealing
`internal membrane.
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`If we turn to Slide 9, that’s an animation that shows the
`
`
`operation of Saggio’s water balloon system. And if you play it, hopefully it
`will play. But it shows Figure 7 of Saggio, it has the multiple tube
`assembly, it shows Figure 1, which is the balloon disclosed in Saggio, and it
`subscribes that the tubes are inserted in the neck to the balloons, the device
`is hooked up to a hose, and water fills the balloon.
`
`
`Now, it doesn’t appear that the Patent Owner is disputing that
`Saggio discloses a housing, the containers, and the tube limitation. Again,
`the point of dispute is in the elastic fastener limitation, and that is what is
`missing in Saggio and where Donaldson and/or Lee would come in.
`
`
`So if we turn to Slide 10, please, Donaldson teaches a balloon-
`inflating device. It includes an elastic fastener, which is an O-ring. It’s
`shown in the figure as Element 20 in red. The Donaldson O-ring clamps the
`balloon to a tube, and it restricts detachment during filling. And Slide 11,
`Donaldson also discloses sealing upon detachment.
`
`
`And if we turn to Slide 12, the point of contention between the
`parties lies in this final functional element of the elastic fastener. And when
`we look at that claim language, it specifically talks about the restriction of
`the elastic fastener being sufficiently limited to permit its respective
`container to detach from its respective tube by at least partially filling the
`container.
`What it doesn’t say is that the restriction is limited such that the
`
`
`respective container detaches only by partially filling. And I just want to
`note that it is a comprising claim, so of course there could be other things
`going on. And another important point to note, and that’s when you read the
`Patent Owner response, there’s a lot of argument that the Patent Owner
`
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`Patent 9,527,612 B2
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`makes that the references do not show automatic detachment by at least
`partially filling.
`
`
`And the claims here don’t require automatic detachment of the
`balloon by partially filling. They could have claimed that as an active step;
`they didn’t. I think in other patents, in the family, they did. But here we’re
`just focused on an elastic fastener that permits detachment by at least
`partially filling. And I think the Board acknowledged that point in their
`institution decision. I think it was in connection with indefiniteness, but it
`was something that the Board did acknowledge.
`
`
`If we turn to Slide 13, please, it’s our position that Donaldson
`meets the sufficiently limited limitation. Slide 13 shows Figure 2 through 5
`of Donaldson. They show the device includes an inner and an outer tube; an
`O-ring clamps the balloon to the device. That’s shown in red in the figure.
`And when the container holding the pressurized fluid is punctured,
`pressurized fluid fills the balloon. When its threshold pressure is reached,
`the pressurized fluid causes the inner tube to move relative to the outer tube.
`The balloon and the O-ring release from the tube. And upon release, the O-
`ring automatically seals the balloon. And you see that in Figure 5.
`
`
`JUDGE CHERRY: So, Ms. Sayour --
`
`
`MS. SAYOUR: Yes.
`
`
`JUDGE CHERRY: -- are you -- you’re not contending any
`longer that the -- that the automatic detachment occurs because of the
`pressure alone? Are you kind of -- are you acknowledging -- I mean, I know
`the other cases kind of already made this argument that the figures aren’t --
`don’t quite line up with the text.
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`MS. SAYOUR: There is -- you mean in the other -- in the other
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`JUDGE CHERRY: In the other cases, yeah, the 30 and 31
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`Case PGR2017-00015
`Patent 9,527,612 B2
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`proceeding?
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`cases.
`MS. SAYOUR: I think that the pressurized fluid does -- I
`
`
`mean, there is certainly a mechanical aspect to it, right? I think we’ve --
`there is a mechanical actuation that the Patent Owner focuses on, saying that
`that causes the detachment. And certainly I think we’ve embraced that. It’s
`not that we’re not saying it doesn’t happen, but I think it’s more the process
`of detachment is triggered by filling the balloon with the pressurized fluid.
`
`
`And, ultimately, when you do that, right, physics will dictate
`that the pressure will inflate the balloon, and when it does, there’s a force
`that’s exerted on that elastic fastener. And what’s important is that at some
`point when the force exerted on the fastener exceeds the connection force,
`that elastic fastener will permit the balloon to detach from its respective tube
`by partially filling it.
`
`
`JUDGE CHERRY: So would you say you’re kind of relying
`more on the “at least” language where you would say that this is at least by
`partially filling?
`
`
`MS. SAYOUR: In part, yes, Your Honor.
`
`
`So the claim doesn’t rule out that other forces could be acting
`on the elastic fastener. And it’s also that it permits it to detach. I think part
`of it is -- I mean, ultimately, filling it will permit it. It’s sufficiently limited
`such that when it’s filled, it will be permitted to detach. We know this
`because it ultimately does come off. And, so, that’s part of it as well.
`
`
`JUDGE CHERRY: Thank you.
`
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`MS. SAYOUR: Thank you.
`
`
`Now, what’s not in Donaldson is water. Donaldson does have a
`
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`gas. And it’s our position that it doesn’t matter what the material is that’s
`filling the balloon, whether it’s gas or water. Donaldson shows that the
`elastic fastener permits detachment by partially filling with gas. It’s
`teaching that the connecting force of that elastic fastener is sufficiently
`limited to permit it to detach. It comes off without popping or tearing.
`
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`And because it permits detachment by at least partially filling
`with the gas, it doesn’t matter what’s in the balloon that overcomes the
`connecting force because it’s going to be the same amount no matter what
`that material is, and that’s the -- that’s the pure physics of it. It’s in
`Newton’s second law, force equals mass times acceleration. You know you
`simply need to exceed the connecting force in order to detach the balloon. It
`doesn’t matter the material in the balloon. All that matters is the force that’s
`supplied to the fastener. The magnitude of that force gets dictated by the
`mass of the material.
`
`
`And here the undisputed evidence shows that one of ordinary
`skill in the art would know that the elastic fastener would be sufficiently
`limited to necessarily permit detachment by at least partially filling with
`water. I think here when we talk about obviousness and the differences
`between this case and other cases, there is no expert testimony submitted by
`the Patent Owner with respect to obviousness. And, so, we have Dr.
`Kamrin’s testimony, and that’s what’s in the record here.
`
`
`JUDGE CHERRY: But how should we weigh -- I mean, Dr.
`Kamrin, I think, in his original declaration, he kind of embraced more this --
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`I’d say the original theory of operation of Donaldson. Is that -- is that fair to
`say?
`MS. SAYOUR: Well, I think, you know, certainly I know the
`
`
`Board had a position on that, and obviously we disagree with it, but, yes,
`you know, I know -- I’m aware of the Board’s previous decision. And I
`don’t -- I don’t necessarily think -- I think when Dr. Kamrin looked at it, he
`looked at the figures, and he said, well, the figures teach me, I understand.
`I’m a person of ordinary skill in the art, and I’m reading those figures, and I
`understand those figures show, even if unintended, Your Honor, I think
`under the MPEP even figures can render obvious a claimed invention, even
`if something was unintended.
`
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`And, so, I think the question becomes you have to look at what
`they reasonably suggest to a person of ordinary skill in the art. And I know
`the Board had a position on that, but we don’t necessarily -- respectfully, we
`disagree, but that -- I don’t know if that answers the question.
`
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`JUDGE CHERRY: No, no, that does. Thank you.
`
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`MS. SAYOUR: Thank you. Okay, I think I’m about 15
`minutes in.
`JUDGE CHERRY: No, you’ve got about 16. I started a little
`
`
`bit after we -- I didn’t count the beginning part against you, so you have like
`16 minutes.
`MS. SAYOUR: Thank you, Your Honor. I apologize if I’m
`
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`speaking fast. I’m just trying to get it all in.
`
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`So before I address, then, motivation to combine, I want to
`briefly address the Lee reference, which is an alternative reference that
`teaches and suggests the claim’s elastic fastener. Now, if we turn to Slide
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`14, Lee involves an endoscopic balloon insertion device for treating obesity.
`It teaches a device for filling a self-sealing balloon with a fluid, which
`includes a balloon, it includes a hollow tube and an elastic fastener, which is
`a rubber band.
`
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`In Lee, the rubber band clamps a balloon to a tube so the
`balloon stays attached while it’s being filled with fluid. And the rubber band
`seals the balloon when it’s detached from the tube. So it meets the first three
`functional limitations of the claimed fastener. In Slide 15, it also shows
`sealing upon detachment.
`
`
`In Slide 16, and for similar reasons we just discussed with
`respect to Donaldson, Lee’s rubber band also meets the sufficiently limited
`limitation. For Lee, after the balloon is expanded with air, an outer guide
`pipe pushes the rubber band off the tube, and the balloon moves off with the
`rubber band. Lee describes that the rubber band is sufficiently limited to
`permit the container to detach, otherwise it wouldn’t work.
`
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`And for partial filling, as we discussed in connection with
`Donaldson, all that matters in the analysis is the force that’s applied to the
`fastener. So once the fluid goes into the balloon, it exerts the force on the
`fastener, and that there is a sliding force is kind of irrelevant in light of the
`claimed language because it has to have a restriction that permits it to detach
`by at least partially filling. It doesn’t say only; it says at least. It’s
`comprising. And there is necessarily a force from filling the balloon that is
`acting on the fastener.
`
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`And, ultimately, that elastic fastener is sufficiently limited to
`permit detachment. And while Lee does not expressly show that the fluid
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`filling the balloon is water, the type of fluid is irrelevant in the analysis. As
`we already discussed in Donaldson, it’s inherent that the force equals MA.
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`If we turn to Slide 17 --
`
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`JUDGE CHERRY: Ms. Sayour?
`
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`MS. SAYOUR: Yes.
`
`
`JUDGE CHERRY: Do you think that that language -- does the
`reference have to teach that -- does the reference have to show at least that
`it’s possible to detach based on the fluid alone, even if it doesn’t require that
`the fluid alone do it? Doesn’t the claim kind of suggest that we should be
`looking for detachment on -- based on the fluid? The pressure of the fluid?
`And at least some teaching about that? Direct teaching?
`
`
`MS. SAYOUR: Well, I think that one of ordinary skill in the
`art, I think the evidence of record here is that one of ordinary skill in the art
`would understand that there is a teaching here that shows that it would
`detach based on the fluid alone, and that testimony is undisputed. But I
`think because of the claim language here, I think we have it.
`
`
`JUDGE KIM: I have a question about Lee. We do have -- for
`the ‘066 patent, we do have a Federal Circuit decision affirming the District
`Court’s finding in that case that Lee is not pertinent to, I guess, the subject
`matter. Do you have a response to that on how we should treat it here in
`view of that?
`
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`MS. SAYOUR: Your Honor, it leads me into Slide 17, but,
`yes, I think that the Patent Owner here has not refuted that Lee -- it’s the
`question of analogous art is what the Circuit was dealing with, and they did
`not think it was analogous art. And in our -- I believe it’s in our reply brief,
`we do have citation of some law on that, so I would direct the Board to that.
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`But here Lee is not limited -- I’m sorry, not Lee. The ‘612 patent is not
`limited to toy embodiments. I think it contemplates medical applications.
`And because both are from the field of filling and sealing balloons with fluid
`and have applications in the medical context, we would respectfully submit
`that they should be considered analogous art.
`
`
`JUDGE CHERRY: I mean, I understand that, but wasn’t that
`same language before the Federal Circuit in the -- in the prior decision?
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`MS. SAYOUR: The same language that we’re looking at here?
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`JUDGE CHERRY: Yes. From the specification.
`
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`MS. SAYOUR: I am not 100 percent certain whether that’s the
`case, Your Honor. I think we addressed it in our -- I’m trying to pull up our
`supplemental response, if you’ll just give me one moment, which I probably
`don’t have.
`JUDGE CHERRY: I mean, I guess my concern is that the
`
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`Federal Circuit seemed pretty emphatic that it wasn’t analogous art. I mean,
`I might have a different view of that, but shouldn’t I follow what the Federal
`Circuit has said?
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`MS. SAYOUR: So I think maybe the issue now that I’m
`focused more on are the footnote, and again, I’m not entirely familiar with
`that proceeding, but based on what was -- what’s of record here, the issue
`that I think that the Circuit was toying with was the problem that was facing
`the inventor with filling multiple containers with a fluid, and they felt that
`that was a little bit more far removed because obviously Lee is a single
`balloon on a tube.
`
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`And I guess people wouldn’t want multiple balloons in their
`stomach, but I think the takeaway from that is that there is law in the Federal
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`Circuit that if there is a closure of a device that has a single element that is
`analogous to a device that has multiple elements, and we cited some law in
`our brief on that.
`
`
`JUDGE CHERRY: Great. Thank you.
`
`
`MS. SAYOUR: Thank you. It’s on page 9 of our supplemental
`reply, Footnote 4.
`
`
`Okay. If we turn to Slide 18, we talked about Saggio,
`Donaldson, and Lee very briefly, and we can turn to the motivation to
`combine. Mr. Malone was not the first person to recognize the problem of
`filling and tying multiple water balloons. That problem was recognized by
`Dr. Saggio in 2011. That was years before Mr. Malone. Dr. Saggio
`recognized there was a need for a water balloon that does not require tying
`and a system and method of providing a plurality of water balloons
`relatively quickly.
`
`
`So Dr. Saggio came up with a water-balloon-filling device that
`attaches to a hose and has multiple tubes. And he also came up with a water
`balloon that would operate with his water-balloon-filling device. If we turn
`to Slide 19, Dr. Saggio’s balloons included an internal sealing membrane to
`seal the balloon with water. But let’s say a POSA couldn’t use the sealing
`means in Saggio to replace, if you will, the internal elastic membrane of
`Saggio with a different closure. One of ordinary skill in the art would look
`to ways that others have used to attach, detach, and seal balloons from tubes.
`And that’s where Donaldson and Lee both come in.
`
`
`Your Honors, we have a simple technology here. It’s a well-
`developed, it’s a predictable field. You indicated that in your institution
`decision. And as was the case in Intercontinental, there was a known
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`problem here. It was a need for the balloon-filling device with self-sealing
`balloons. A POSA would have thought to substitute the O-ring of
`Donaldson or the rubber bands of Lee with the internal sealing member of
`Saggio’s balloons.
`
`
`The elements are in the prior art; it’s a combination that would
`have been entirely predictable and grounded in common sense. And it’s
`especially the case because we are not talking about a specifically
`engineered elastic fastener here. There are no variables in the ‘612 patent
`with respect to this elastic fastener. The inventor admitted that it was an off-
`the-shelf elastic fastener. And we respectfully submit that it would be
`common sense.
`
`
`If we turn to Slide 20, the O-ring of Donaldson and the rubber
`bands of Lee would be a simple substitution for the elastic internal
`membrane of Saggio because it is well known that rubber bands and O-rings
`achieve a predictable result of clamping and self-sealing water balloons.
`And KSR holds that when a patent claims a structure already known in the
`prior art that is altered by the mere substitution of one element for another
`known in the field, the combination must do more than yield a predictable
`result.
`And here it doesn’t. What we have is a simple substitution of
`
`
`one known element for another -- the internal membrane for the fasteners --
`to obtain predictable results, those of clamping and self-sealing.
`
`
`JUDGE CHERRY: But aren’t there some differences between
`these devices? I mean, Donaldson -- I mean, even though we talked about
`that the -- you know, there is a filling of the device, and it affects it, there’s
`still this mechanical element in both -- mechanical action -- kind of
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`mechanical element in both Lee and Donaldson in terms of, you know, in
`Donaldson there’s this motion of the inner -- the inner part -- I can’t
`remember what the component’s name is -- the inner tube --
`
`
`MS. SAYOUR: Tube, yes.
`
`
`JUDGE CHERRY: -- of the device. And then in Lee, there’s
`this tube to push it off. I mean, isn’t it a little bit of a different -- kind of
`different -- I mean, the technology is simple, but these are kind of --
`wouldn’t these kind of lead a person of ordinary skill away from this?
`
`
`MS. SAYOUR: No -- Your Honor, yes, I hear what you’re
`saying, but I think it becomes a function of you have Saggio, right, you have
`this -- you have this whole system here really, and the one thing that’s
`missing from that is the elastic fastener. And we have an elastic fastener.
`There’s no specific requirement for that elastic fastener. No one is saying
`that it has to be configured a certain way with respect to -- well, I mean, I
`understand what the claim language says, but it has to permit detachment by
`-- that’s all it has to do. There’s no specific variables that are listed.
`
`
`And, really, what we’re doing is saying, okay, these other -- in
`Saggio -- not Saggio -- in Donaldson and Lee, they have fasteners. We’re
`just using something that’s well known to seal a balloon in order to close it
`and seal it. And I think that it’s a simple analysis, and particularly because
`what we’re talking about is such a simple technology, and particularly
`because it was a known problem. This isn’t like he came -- Mr. Malone
`came out with it and said, oh, there’s this problem and no one had ever heard
`of it. We have these references out there. And it becomes a simpler
`analysis.
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`JUDGE CHERRY: I wonder for a moment if you’d talk about
`
`
`Claim 3. I’m sure you know in our other case in the PGR2016-31 we found
`that, you know, that there was no teaching of the “pressed against” limitation
`in Saggio. I wondered if you had anything to say about that.
`
`
`MS. SAYOUR: Yes, I do, Your Honor. I don’t know that -- I
`guess it probably wouldn’t surprise you to say that we obviously disagree
`with that. And I guess that -- are you talking about indefiniteness now, or
`are we talking about --
`
`
`JUDGE CHERRY: Well, no, I’m talking about the
`obviousness.
`
`
`MS. SAYOUR: Oh, okay, I’m sorry. I was skipping ahead. I
`didn’t know if you were jumping to indefiniteness with the time. But, yes,
`Your Honor, for -- in that claim, we’re talking about Claim 3 -- I’m sorry, I
`just lost my place because --
`
`
`JUDGE CHERRY: That’s okay. It’s not really -- I mean, it
`wasn’t -- it wasn’t directly argued, but we did -- we did talk about it in the
`31 case, and, I mean, I think we have an independent obligation to assess the
`record, so we just wanted to -- you know, we found in that case that Saggio
`didn’t teach the press against limitation, which I think you relied on it in the
`Saggio and -- the Saggio-based -- the combinations without Cooper. And I
`just wondered if you had any opinion that does Saggio teaches this pressed
`against limitation besides what’s in the petition.
`
`
`MS. SAYOUR: I think we have an argument that we laid out
`in our petition on that that it would have been obvious to a person of
`ordinary skill to take Saggio and maybe move them at angles so that they
`pressed against each other. So I think that is laid out in our petition, and I
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`would stand by that. Separate and apart from that, I don’t have a separate
`opinion on that at the moment.
`
`
`JUDGE CHERRY: Okay, but I just wanted to give you a
`chance on that one.
`
`
`MS. SAYOUR: Thank you, Your Honor.
`
`
`JUDGE CHERRY: Do you want to move to the indefiniteness
`for -- you have two minutes left.
`
`
`MS. SAYOUR: Let’s see how fast I can speak. But, yes, I was
`--
`JUDGE CHERRY: Oh, don’t speak too fast. You can have an
`
`
`extra -- don’t make the court reporter’s hands bleed.
`
`
`MS. SAYOUR: Okay. Well, I guess we would -- so I know to
`tie up the motivation -- yeah, I’ll move on to indefiniteness. We’ll stand by
`on the papers with respect to everything else. So we are -- for
`indefiniteness, it falls on Claim 3, which is the pressing limitation. Now,
`both parties have agreed that the filled space is an end point on the system.
`So in order to know whether one reaches the scope of Claim 3, you need to
`know that the container -- when the container reaches the filled space
`because that’s the end point where those containers need to be pressing,
`according to the claim language.
`
`
`But the problem with the container being filled is that it is
`subjective. It’s a point where a user subjectively determines that the desired
`size or volume has been reached. You don’t know --
`
`
`JUDGE CHERRY: Ms. Sayour, my problem with this
`argument is isn’t it what the Federal Circuit just rejected in the appeal of the
`PGR, I think it’s 2015-18.
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`MS. SAYOUR: Is that -- you’re talking about the ‘066 patent?
`JUDGE CHERRY: The ‘066 patent.
`MS. SAYOUR: Yeah, no, I don’t think this element was in the
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`‘066 patent.
`JUDGE CHERRY: But I’m saying this argument about the
`
`
`filled state. The Federal Circuit said a person of ordinary skill in the art
`would know when a water balloon was filled, was sufficiently filled.
`
`
`MS. SAYOUR: Adequately filled, I guess, is the question right
`now, and it was substantially filled and it was in the context of -- but here I
`think we’d have to look, again, at the language. And I think the struggle
`we’re having with it is that containers -- I mean, containers may press
`against each other when they’re unfilled, if we start there, okay? And
`someone is filling it up, and there is a function of the orientation of the
`apparatus, which is not claimed in these claims.
`
`
`And say you’re starting off with empty containers, they’re
`unfilled, they’re pressing, you say, okay, I meet the elements of this claim.
`You turn on the water, you hold the device upright because your outdoor
`
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