Trials@uspto.gov
`571-272-7822
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`Paper No. 51
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SIMPSON STRONG-TIE COMPANY INC.,
`Petitioner,
`
`v.
`
`COLUMBIA INSURANCE COMPANY,
`Patent Owner.
`
`____________
`
`PGR2019-00063
`Patent 10,316,510 B2
`____________
`
`
`Record of Oral Hearing
`Held: January 14, 2021
`
`____________
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`
`
`
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`571-272-7822
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`Paper No. 51
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SIMPSON STRONG-TIE COMPANY INC.,
`Petitioner,
`
`v.
`
`COLUMBIA INSURANCE COMPANY,
`Patent Owner.
`
`____________
`
`PGR2019-00063
`Patent 10,316,510 B2
`____________
`
`
`Record of Oral Hearing
`Held: January 14, 2021
`
`____________
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2019-00063
`Patent 10,316,510 B2
`
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`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`MICHELLE K. HOLOUBEK, ESQUIRE
`SEAN C. FLOOD, ESQUIRE
`ALI H. ALLAWI, ESQUIRE
`Sterne, Kessler, Goldstein & Fox, P.L.L.C.
`1100 New York Ave, N.W.
`Suite 600
`Washington, D.C. 20005
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`KURT F. JAMES, ESQUIRE
`STEVEN N. LEVITT, ESQUIRE
`JOHN R. SCHROEDER, ESQUIRE
`Stinson LLP
`7700 Forsyth Boulevard
`Suite 1100
`St. Louis, MO 63105
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing 1:00 p.m., EDT on
`Thursday, January 14, 2021, by video/by telephone.
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`Patent 10,316,510 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE BELISLE: Good afternoon. This is a hearing conducted by
`
`video conference for PGR 2019-00063 involving U.S. Patent No.
`10,316,510 B2. Petitioner is Simpson Strong-Tie Company Inc. Patent
`Owner is Columbia Insurance Company.
`
`I am Judge Belisle and I am joined by Judges Daniels and Powell.
`Each of us has a copy of both party's demonstrative exhibits.
`
`Now an important point. Because we are conducting this hearing by
`video conference, please speak clearly and deliberately and take extra care
`not to speak over each other. This will help the court reporter and improve
`the clarity of the record. When counsel is referring to material appearing on
`a slide from your demonstrative exhibits, please provide the page number of
`that slide, again so that the record is clear.
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`And as everybody can hear right now, if you're not speaking, please
`put yourself on mute so that we don't get a lot of background noise from
`multiple microphones. Now having said that, when you speak please
`remember to take yourself off mute so that we don't have to continue to sort
`of pause and get people back onto the microphones.
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`So pursuant to our hearing order, each party has 60 minutes to present
`its argument. Each party may reserve up to 20 minutes solely to rebut the
`opposing party's arguments. You may not use the rebuttal to address an
`issue for the first time during the hearing. Petitioner will proceed first
`because it bears the burden of proving unpatentability. So I will keep time
`and try to provide updates on the remaining time during the hearing. Please
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`do feel free to ask about your remaining time if there's a question about it.
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`For the record, please introduce yourselves and anyone else listening
`to the hearing who is associated with your client and we'll begin with
`counsel for Petitioner.
`
`MS. HOLOUBEK: Thank you, Your Honor. May it please the
`Board. My name is Michelle Holoubek and I represent Petitioner, Simpson
`Strong-Tie. I am joined, I believe on the audio line, by my colleagues Ali
`Allawi also from Sterne Kessler and Joe Mauch from the law firm of
`Shartsis Friese all of record on behalf of Petitioner.
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`At the outset, I would like to reserve 20 minutes for rebuttal. And
`should I pause to allow Patent Owner to introduce themselves or should I --
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`JUDGE BELISLE: Yes.
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`MS. HOLOUBEK: -- jump in?
`
`JUDGE BELISLE: Yes. So counsel for Patent Owner, please
`introduce yourselves and anyone else on the line.
`
`MR. JAMES: Hello. Yes, this is Kurt James, counsel for the Patent
`Owner, and with me here in the room is John Schroeder also counsel of
`record. Listening to this proceeding are also Scott Eidson and Steven Levitt
`who are of record in this case.
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`JUDGE BELISLE: Thank you. Is there anyone else on the line either
`by video or merely by telephone line whose name has not been entered into
`the record as being part of this call?
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`(No response.)
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`JUDGE BELISLE: Okay. Thank you. Petitioner's counsel, you may
`begin. You have --
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`MS. HOLOUBEK: Thank you, Your Honor.
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`JUDGE BELISLE: -- and you have 40 minutes.
`
`MS. HOLOUBEK: Thank you. So today we are here to talk about
`
`very simple technology, a metal joist hanger that connects a floor joist or a
`roof truss to a wall in a way that fits over sheathing such as drywall. This is
`a predictable art that makes use of well-known mechanical principles to
`carry a load.
`
`Now, it is a common and unfortunate occurrence in patents that an
`inventor may have invented something very specifically and designed to
`address a very specific purpose, but in an effort not to limit the patent in the
`future, the claims are drafted more broadly than that specific-use case.
`
`In that breath, claims often cover more than what the inventor may
`have intended, and this case is no different. Despite the Patent Owner's
`attempts to impart some special definitions to very common claim terms and
`cabin those claims to a very particular use case or idealized requirements
`that are not recited in the claims, claims are not so putting (phonetic).
`
`As the Board noted in your Institution Decision, all these claims are
`concerned with is the structure of a hanger. A hanger structure does not
`include a wall, does not include sheathing, recites no limitation on the size of
`any sheathing cutout. Today we plan to show that the hanger as actually
`claimed in the '510 Patent is nothing more than a combination of well-
`known prior art elements combined according to known methods to yield
`predictable results.
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`We'd like to first walk through the claim language and talk about what
`the actual language of the claims is/is not, limited to. This includes a
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`Patent 10,316,510 B2
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`discussion of claim construction that sets the stage for how the prior art is
`applied. Petitioners previously identified the Gilb '155 combination as
`rendering the claims obvious and we'd like to show how none of Patent
`Owner's argument disturbed that finding, but we'd also like to talk a little
`more about some of the grounds that the Board did not find favor with to
`explain their context and to show why the alleged distinctions are not
`actually distinctions at all. This will deal with respect to the Tsukamoto and
`Timony grounds.
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`Our understanding is that we also, in addition to the case-in-chief, we
`need to address the motion to amend during our primary argument and so
`we'll do that as well.
`
`First, let's make sure we're all on the same page as to what's being
`claimed in the '510 Patent. I'd like to turn to Slide 4 of the Petitioner's
`demonstratives and we go all through the elements in more detail by
`showing the claims vis-a-vis these drawings. The claim includes some
`preamble language about intended use that structurally requires three
`components; a channel-shaped portion, an extension portion, and a
`connection portion. Connection portion is repeated on Slide 5. It just didn't
`all fit on one slide.
`
`Looking at Slide 4 now, the channel-shaped portion is the part of the
`hanger that holds the joist and that's shown in green at the bottom of Figure
`7 there on the left. You have a connection portion that connects the hanger
`to the wall, shown here in this slide as blue at the top of Figure 7, and then
`you have an extension portion in the middle, shown in red, that connects the
`connection portion to the channel-shaped portion.
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`Patent 10,316,510 B2
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`Looking at Claim 1, the preamble merely says that this hanger is for
`
`connecting a structural component; a beam, a joist, a truss, connects it to a
`wall. It's merely a statement of intended use because the specific type of
`wall makes no difference regarding the structural components of the claim.
`As claimed, the extension portion can extend through sheathing once the
`sheathing is installed, but as Your Honors noted in the Institution Decision
`as well as the recent preliminary guidance, sheathing and installation are not
`positively recited in the claims. It's simply a claim to the hanger's structure.
`
`Turning to Slide 5 just to round out this claim, the connection portion
`introduces this concept of a top flange and a back flange where the top
`flange attaches to the top plate of a wall and the back flange extends
`downward from that.
`
`And then lastly, the claim specifies the extension portion dimension.
`It's easiest to see there in Figure 7 on the left of Slide 5. That's the part
`labeled as 68. It's essentially the distance between the connection portion
`that's in blue and that channel-shaped portion that's shown in green here.
`
`And all Claim 1 does is define what that distance should be. It should
`be large enough to permit two layers of 5/8-inch thick sheathing to be
`received in that space, but it's too small to permit three layers of 5/8-inch-
`thick sheathing. This language is just a way to determine what the physical
`size of that extension spacing is; the distance between 1 1/4-inch and 1 7/8-
`inch.
`Going to Slide 6, you can see all of the independent claims side-by-
`
`side. Each of the claims refer to the sheathing in a slightly different way, but
`the main differences are the details of hanger elements. Claim 1 we've
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`already discussed.
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`In Claim 13 here, as you can see, the side panels of a channel-shaped
`portion in Claim 13 are not required to have rearward edges laying in a rear
`edge plane. So that's the key structural distinction between Claim 1 and
`Claim 13.
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`And then Claim 20 just identifies the channel-shaped portion that
`receives the structural element and the extension portion and for the
`connection portion, the spacing is simply identified as being large enough to
`fit drywall, presumably of any size, between the back flange plane and the
`connection portion.
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`I'll just note at the outset, all parties agree that drywall is naturally
`fire-resistant and it's also a type of sheathing. So the differences in those
`terms throughout the independent claims, "sheathing," "drywall," "fire-
`resistant sheathing," don't really make any difference vis-a-vis the art which
`actually teaches that it's common to use such hangers with two sheets of
`drywall.
`
`As I've said before, these claims are just combinations of known
`elements combined in predictable ways as taught by the art, so let's look at
`what those known elements are. If we turn to Slide 7, you can see that
`Patent Owner admitted that the combination of a back flange and a top
`flange is already known from conventional hangers.
`
`Turning to Slide 8, the Patent Owner admitted that it was typical for
`wood frame construction to use a double layer of 5/8-inch thick Type-X
`Gypsum wallboard.
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`And just in the interest of time, I'll move quickly through the next
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`slides, but you can see in Slides 9, 10, 11, and 12 that these combinations
`were known. It was known to have hangers; it was known to install double
`layers of sheathing. We'll get to the art in a little bit more detail, but there's
`no surprises here. Again, this is a predictable art.
`
`So with that in mind, I'd like to talk about claim construction because
`Patent Owner is trying to avoid all this known art by reading a lot into the
`claims that simply isn't there. And I mentioned the intended use there for a
`minute, so I'd like to jump actually to Slide 30 first.
`
`And on Slide 30, you can see each of the independent claims again
`and you can see that each claim recites that the extension portion is
`configured to extend through something. In Claim 1, that something is
`sheathing. Claim 13, it's fire-resistant sheathing. In Claim 20, it's drywall.
`As I've mentioned, you know, it's taught by the art, it's well-known in the
`art. Drywall is fire-resistant sheathing so those are all kind of taught by the
`same thing. Doesn't have to be used for what the Patent Owner calls a "fire
`code resilient fire barrier." The drywall, just in and of itself, is fire-resistant
`sheathing.
`
`So as the Board rightly noted in its Institution Decision, to satisfy this
`claim element, it's sufficient for a prior art hanger to have an extension
`portion that spaces the channel-shaped portion from the back flange by the
`recited distance. The claim doesn't recite sheathing. Doesn’t even require a
`use with sheathing for all claim limitations to be met.
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`Now, if we go back (indiscernible) slides to Slide 27, you can see that
`the Patent Owner is asserting that the phrase "configured to" does not simply
`mean capable of, but rather that the extension portion is explicitly designed
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`Patent 10,316,510 B2
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`only for use with sheathing and not just any sheathing, but sheathing having
`properties and dimensions to satisfy an International Building Code's
`definition of a "fire barrier" such that the extension portion is in "close
`conformance" with the exposed edges of the opening of the fire barrier when
`installed, but this argument is an improper reading of a specific embodiment
`which the Patent itself says is an uplifting (phonetic) into the claims.
`
` I'd like to start off by looking at the case law because that's one thing
`that I know the Patent Owner mentions in its various replies. While there is
`a line of --
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`JUDGE BELISLE: Ms. Holoubek?
`
`MS. HOLOUBEK: Yes?
`
`JUDGE BELISLE: This is Judge Belisle. One question on this
`"configured to extend through" language. I understand that there is --
`
`MS. HOLOUBEK: Yes, Your Honor.
`
`JUDGE BELISLE: -- there's a district court litigation that's also
`related to this patent. Is Patent Owner asserting infringement by just a
`hanger or hangers after they've been installed?
`
`MS. HOLOUBEK: I believe, Your Honor, it's by just a hanger and
`that is -- if you go to Slide 15, you can see an example there of what the
`Patent Owner is asserting these claims against. Claim 15 addresses
`specifically Claim 9 because this is shown because we wanted to talk a little
`bit about the term "formed into one piece," but my understanding is that
`these hangers, as they appear here, uninstalled, unloaded, are being alleged
`to be infringed by the '510 Patent.
`
`JUDGE BELISLE: Thank you.
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`MS. HOLOUBEK: Certainly.
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`So touching base on the case law, I mentioned that there is this line of
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`cases that Patent Owner is relying on and it's the Giannelli progeny of cases,
`and there are those cases that interpret "configure to" in certain situations as
`"designed to," but the federal circuit has explained that that particular line of
`the Giannelli cases is limited to fact patterns where the intended function
`was a necessary result of the recited structure.
`
`So for example, in Giannelli, you had a handle for a rowing machine
`where the entire function of the row -- of the handle was to be pulled on to
`enact the rowing machine. The handle was useless if it wasn't attached to a
`rowing machine.
`
`Similarly, Patent Owner relies on Acclarent and Acclarent was
`another situation where the claims were recited as specific to a catheter
`handle. It had no use other than to allow the catheter operator to manipulate
`the catheter, and that's just simply not the case here. It's not like this hanger
`that we're talking about in the '510 Patent has no use but for with
`code-compliant fire barriers. In fact, you wouldn't have to install any
`sheathing and the hanger would still hang a joist on a wall.
`
`And if we turn to Slide 28, it's important to remember that, as stated in
`the federal circuit's decision in ParkerVisionv. Qualcomm, "Apparatus
`claims cover what a device is, not what a device does."
`
`Turning to Claim 29, it's a tenet of patent law that a particular
`embodiment appearing in the written description may not be read into the
`claim when the claim language is broader than the embodiment or as the
`inimitable Judge Rich once said, "The name of the game is the claim." We
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`Patent 10,316,510 B2
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`look to the claim to see what it recites. This is a structural claim where all
`claimed elements are met.
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`As ParkerVision tells us, "A prior art reference may render an
`apparatus claim obvious if the art discloses an apparatus that is reasonably
`capable of operating so as to meet the claim limitations even if it doesn't
`meet the claim limitation in all modes of operation."
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`Your Honors already seemed to have understood this point stating in
`the Institution Decision that "configured to," "extend through" is to be
`construed as "capable of extending through."
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`Now as I mentioned, Patent Owner relies on aspects of Giannelli and
`Acclarent for its assertion that "configure to" means "explicitly designed to"
`some element of manufacturer intent. But as I had mentioned that was the
`case and all of those cases, the intended function was a necessary result of a
`recited structure and that's just simply not the case here.
`
`And interestingly enough, I'd like to point out that even Giannelli,
`which they rely on, states that the phrase "configure to" can also mean
`"capable of" or "suitable for" under different fact patterns. It specified in
`Giannelli that that fact pattern was one where, you know, the handle of the
`rowing machine was useless but for the recited structure, but indicated that if
`a specification wasn't so limited that, in fact, that term could mean
`something like "capable of," in fact, specifically referred to "capable of."
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`In turning to Slide 31, the specification here clearly states that not
`only are there other configurations of fire-retardant sheathing within the
`scope of the claims, but other wall configurations including different wall
`constructions and materials are within the scope of the present invention.
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`Patent 10,316,510 B2
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`Shown here is an excerpt from the specification stating just that. The
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`2-hour fire-resistant wall assembly that Patent Owner clings to is just one
`example of a wall assembly, but the specification specifically states its
`intended to apply to situations where both other -- the fire-rated wall
`assemblies, by comparison non-fire-rated wall assemblies are identified. So
`as such, the cases cited by Patent Owner are not, in fact, analogous to the
`claims at issue and there's no requirement of close conformance. Patent
`Owner's arguments shouldn't disturb the Board's initial finding.
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`So at this juncture, unless the Board has any questions on that, I'd like
`to go back to Slide 20 and talk about the term "extending from," which
`appears in several of the claims. It's also relevant to the motion to amend.
`So Patent Owner tries to say that when the claim recites the phrase
`"extending from A to B," that means that the starting point of Element A is
`on Element B, but that's simply not supported by the specification nor is it
`how this term would have been understood by a person having skill in the
`art.
`And if the comment in the preliminary guidance for the motion to
`
`amend that was kind of the same issue, it was about the exact same issue,
`and it was alleged that Petitioner was relying on extrinsic evidence rather
`than intrinsic evidence like the Patent Owner was supposedly doing. And I
`just want to take a minute to address that because, as best as I can tell, the
`Patent Owner is the one who went straight to a dictionary definition while
`Petitioner's expert actually looked at the different phrases in the specification
`to see how a person of skill in the art would interpret the claim.
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`And first, I'll also want to make clear that our position is not that these
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`Patent 10,316,510 B2
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`terms "extending from" and "extending away from" which both appear in the
`patent specification, mean exactly the same thing. The phrase "extending
`from" should -- or it is our position that the phrase "extending from" should
`not be construed as more narrowly than the phrase "extending away from."
`Both of these phrases appear in the specification. Both of these phrases
`appear in the claims.
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`Despite what the Patent Owner says, they both appear in the claims,
`Claim 18 specifically which I'll get to in a minute. But I just want to make it
`clear that our position is that the addition of the word "away" in the phrase
`"extending away from" doesn't change any starting point from which the
`element extends. It might add a direction and so that way the whole term is
`different. Stating "outwardly from" is certainly different and more precise
`than the generic term "extending from."
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`JUDGE DANIELS: Ms. Holoubek --
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`MS. HOLOUBEK: But to argue that "extending from" --
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`JUDGE DANIELS: Ms. Holoubek --
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`MS. HOLOUBEK: I beg your pardon?
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`JUDGE DANIELS: -- this is Judge Daniels. I've got a question on
`this. I'd like to know, if you could show us in the specification specifically,
`and let me tell you what the problem -- you know, I see your argument. It
`makes some sense, but my concern is that when we talk about an element
`extending from another element, if we think about it as broadly, consider it
`as broadly as you would like us to, how many intervening components can
`we have then? That seems almost too broad, what you're arguing for.
`
`Where in this -- is there something in the specification that helps us
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`PGR2019-00063
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`understand your broader interpretation of "extending from?"
`
`MS. HOLOUBEK: Yes, Your Honor. If you turn to Slide 21, and I
`think that addresses this, 21 highlights the uses in the specification of
`"extends from" as well as "extending away from," and I understand your
`point about, you know, how many elements is it that you can connect. You
`know, I don't know that through this we have to determine exactly what that
`number is, but certainly the specification gives the example where it's at
`least one element intervening.
`
`And, you know, so I think there's an example there that kind of gets to
`that, and let me just walk through these examples for a second. So we've
`highlighted -- so in the upper right-hand corner of Slide 21, this is a portion
`from the specification and what we've done is put that right next to the two
`elements from the two figures which are color-coded to kind of show what
`we mean here.
`
`So first of all, the specification states that the extension portion
`"extends from," that's the first highlighted element, "extends from the
`channel-shaped portion." So on the bottom figure, you can see that the
`extension portion there is in red and the channel-shaped portion is in blue,
`and the specification -- you know, and so they say, "Well, that -- the
`extension portion in red extends from the channel-shaped portion in blue."
`But the specification also refers to the phrase "extend away from" a couple
`of times. And so for example, just looking at the third --
`
`JUDGE BELISLE: Ms. Holoubek, this is Judge Belisle. The
`extension portion --
`
`MS. HOLOUBEK: Yes.
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`PGR2019-00063
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`JUDGE BELISLE: Tell me again what you're pointing to for the
`
`extension portion in Slide 21.
`
`MS. HOLOUBEK: Sure. So the extension portion is highlighted in
`red. It's Element 60, and that overlaps with the extension flanges. The
`extension portion is essentially made of two extension flanges and so that's
`why you see it in the slide there labeled as "extension flanges." So the
`extension portion is that piece that separates the connection portion that
`connects to the wall and the channel-shaped portion.
`
`JUDGE BELISLE: Okay. Because the top figure also has things in
`red and those are not the extension portions.
`
`MS. HOLOUBEK: Right, right. Yes. So right now I'm just talking
`about the bottom where there's an arrow that points to the extension flanges
`and those extension flanges are essentially 100 percent overlapping with the
`extension portion here.
`
`JUDGE BELISLE: Okay. And so the extension flanges that the
`arrow points to in this slide --
`
`MS. HOLOUBEK: Uh-huh.
`
`JUDGE BELISLE: -- the specification states that they're extending
`from the channel-shaped portion, and in that figure are not the extension
`flanges directly and immediately connected to the channel-shaped portion?
`
`MS. HOLOUBEK: They are, Your Honor, and you point that out and
`I'd like to actually point to a couple other things to say about the
`specification, but I'd like to point to Claims 4 and 18 and look at a
`comparison which talks about the relationship between those two very
`components.
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`PGR2019-00063
`Patent 10,316,510 B2
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`Claim 4, which almost exactly matches the specification, says that
`
`"extension flanges extending from the channel-shaped portion," but Claim
`18 refers to that exact same relationship and says, "extension flanges
`extending away from the channel-shaped portion." So now we have that
`different term used to describe the exact same relationship here.
`
`And if we go back to the specification section --
`
`JUDGE POWELL: Well -- sorry, this is Judge Powell.
`
`MS. HOLOUBEK: Uh-huh.
`
`JUDGE POWELL: Well, is it possible then both of those terms apply
`to that situation because one is narrower than the other?
`
`MS. HOLOUBEK: It is possible, but I'd ask you to consider which
`one should be narrower than the other. Does it really make sense that the
`phrase "extending from," which has no implication of direction, should
`somehow be narrower than the phrase "extending away from," which
`includes the exact same words, "extending from," but now with an element
`of directionality. And it's important to note that both experts have agreed
`that the term "away" doesn't affect the starting point of "extending from." In
`fact --
`
`JUDGE POWELL: So I guess -- so you make a very good point there
`that perhaps one is not strictly narrower, then maybe I should ask is it
`possible that they just overlap, that the meaning of those terms just overlaps
`and that that particular example falls in the overlap and that's why the spec is
`using this, two different terms to -- applying it to those, that one example?
`
`MS. HOLOUBEK: Yes, Your Honor. I think that there is an overlap.
`But again, when we look at the application of that -- but let's remember what
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`Patent 10,316,510 B2
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`Patent Owner's arguing here. They're saying that term "extending from,"
`which includes no other description, just the term "extending from," means
`that the -- that Element A, for example, must have a starting point on
`Element B. Now, the phrase --
`
`JUDGE POWELL: Is there --
`
`MS. HOLOUBEK: -- "extending away from" --
`
`JUDGE POWELL: I'm sorry. Is there an example in the
`specification that uses the language "extending from" applied to something
`with an intermediate structure between the two things?
`
`MS. HOLOUBEK: No, Your Honor. There's not an example of
`anything where the term "extending from" applies to two separate structures,
`but I guess, you know, when we think about it, it's like the Patent Owner
`would have you believe that that distinction is intentional and that
`"extending from" is only used when one element is on another and
`"extending away from" is only used where one surface is not on another.
`
`The claims, in comparison, as you can see here, you know, they don't
`support that. The same relationship is defined as both "extending from" and
`"extending away from." And, you know, just looking at the examples in the
`specification, the specification says that the extension flanges, that's shown
`in red, extends away from the base of the channel-shaped portion.
`Connection portion extends away from the back panel of the channel-shaped
`portion, so that's kind of what's shown in that upper right-hand corner.
`
`But again, you know, when we think about these terms, the patent
`does, at least certainly in the claims, uses these terms to compare or to apply
`to the same component and I think that the key point here is that the
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`specification then uses that phrase "extending away from" where there is an
`intermediate element. And so if the word "extending away from" can have
`an intervening element -- I'm sorry, the phrase "extending away from" can
`include an intervening element and Patent Owner's expert, Petitioner's expert
`both agree that the term "away" doesn't change the starting point, all it does
`is signify a directionality, then how can the starting point of an element in
`the phrase "extending from" now be different from the starting point of an
`element in the phrase "extending away from?"
`
`So I realize that that's -- it's, you know, a lot of points there, but
`essentially if the term "extending away from" is not limited to having one
`element starting on another and all that "away" does is change the direction,
`and parties are in agreement that it doesn't change the starting point, starting
`point's not on another, there was no change in the starting point, then how
`can we now construe "extending from" to require a starting point on another
`element?
`
`So, you know --
`
`JUDGE BELISLE: Counsel --
`
`MS. HOLOUBEK: -- I think that's --
`
`JUDGE BELISLE: -- let me --
`
`MS. HOLOUBEK: I'm sorry.
`
`JUDGE BELISLE: Analogies are always dangerous in these cases,
`but let me try to just do a simple one and see if it works. My understanding
`of "extending from" would apply to my arm extending from my shoulder. I
`think that's a fair assessment that the interpretation of "extending from"
`could apply to a human arm extending from the shoulder. But what I
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`understand Petitioner's argument to be is that my finger also can be
`characterized and would be included within "extending from" my shoulder.
`
`So Petitioner wants us to take a position that "extending from" applies
`to an arm extending from a shoulder, but also applies to a finger extending
`from a shoulder and I'm having difficulty with that because, yeah, there's an
`intermediary object there. It's my arm. And I have difficulty getting past
`how it's possible that what appears to be straight forward in the spec as far as
`an object extending from another object and
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