[00:00:00] Speaker 02:
EGLE Industries, Inc.

[00:00:04] Speaker 02:
vs. Miniature Precision Components.

[00:00:47] Speaker 02:
Mr. Keering?

[00:00:47] Speaker 01:
Good morning, Your Honors.

[00:00:59] Speaker 01:
May it please the Court?

[00:01:01] Speaker 02:
This appeal presents two key... Would it be fair to say that on appeal you're not challenging the claim construction?

[00:01:10] Speaker 01:
Yes, Your Honor, that's absolutely fair.

[00:01:12] Speaker ?:
Okay.

[00:01:13] Speaker 02:
So your contention is that there has to be some process, some sort of bonding process, which is part of the process covered by the claim.

[00:01:34] Speaker 02:
Is that what it is?

[00:01:35] Speaker 01:
No, Your Honor.

[00:01:36] Speaker 01:
As a matter of fact, what we're saying is that the word embedded

[00:01:40] Speaker 01:
in the claim construction for embedded protective coding has to have some structural meaning.

[00:01:46] Speaker 01:
And in this case, the parties actually agreed as to what both the construction was and the import of that construction.

[00:01:56] Speaker 01:
The party said that an embedded protective coding is one that is integrated and firmly affixed, but that that integration results in a coding that is

[00:02:06] Speaker 01:
an integral component with the underlying engine coding and that results in a single piece.

[00:02:14] Speaker 02:
Okay, but what I'm confused about is that the specification here of the 592 patent in

[00:02:23] Speaker 02:
column 3 beginning around line 45 seems to describe exactly what's in Polytech, that is, spray coating on the phone.

[00:02:42] Speaker 02:
It then goes on to say, paint can form an in-mold embedded coating.

[00:02:49] Speaker 02:
So why doesn't that suggest that what you have in Polytech is an embedded coating?

[00:02:58] Speaker 01:
So for that, Your Honor, I'd point you to... So first of all, the citation that you're pointing to is about a method of manufacture.

[00:03:06] Speaker 01:
It's not about an end product.

[00:03:08] Speaker 01:
You have to assume that the end product structure necessarily and certainly follows from the use of that structure in order for you to identify that the disclosure of the method of manufacture, spraying a coating,

[00:03:24] Speaker 01:
discloses the underlying structure of what happens after you spray that coating.

[00:03:30] Speaker 01:
And here, the only evidence that was submitted by either party related to what structure results from the application of the two methods that the board of patent appeals identified that was in mold coating and spray coating.

[00:03:48] Speaker 02:
I'm sorry, I don't understand.

[00:03:49] Speaker 02:
Sure.

[00:03:49] Speaker 02:
I mean, polytech involves spray coating, right?

[00:03:54] Speaker 01:
It does involve that method of manufacture, yes.

[00:03:57] Speaker 02:
Okay.

[00:03:58] Speaker 02:
And so this then says paint referring to the spray painting can form an in-mold embedded coating.

[00:04:09] Speaker 02:
That would seem to be a problem for you because that seems to suggest that this spraying process can form an embedded coating.

[00:04:20] Speaker 01:
We don't disagree that the method might result in that structure.

[00:04:27] Speaker 01:
But the evidence that was submitted here is that Polytech does not.

[00:04:32] Speaker 01:
Polytech, and I point you to appendix 637 to 639, which was the testimony of Dr. Herman relating to Polytech and the method that you're talking about right there.

[00:04:44] Speaker 04:
Just getting back to Judge Dyck's question about this.

[00:04:49] Speaker 04:
We're trying to understand what the word embedded means.

[00:04:53] Speaker 04:
And this spec seems to say you spray the coating in the mold, right?

[00:04:59] Speaker 04:
And then you're going to have an in-mold embedded coating on your resulting engine cover after you inject the foam materials into the mold.

[00:05:12] Speaker 01:
Well, this is where... Sorry, you're on.

[00:05:18] Speaker 04:
The specification of the patent tells us how to understand embedded.

[00:05:22] Speaker 04:
There doesn't seem to be any more extra requirements on that meaning.

[00:05:30] Speaker 04:
And this disclosure, as Judge Dyke points out, mirrors the disclosure in polytech.

[00:05:40] Speaker 04:
What more is needed to accomplish embedding other than you spray the paint into the mold?

[00:05:49] Speaker 01:
In the context of the 592 patent, the abstract of the invention, the background of the invention, differentiates the invention in the 592 patent from the multi-layer structures in the prior art.

[00:06:02] Speaker 04:
You mean the multi-piece structures in the prior art?

[00:06:05] Speaker 01:
Multi-piece, multi-layer.

[00:06:06] Speaker 04:
In this case, both parties, well... No, nobody agrees that multi-piece means multi-layer.

[00:06:13] Speaker 04:
Well, you agree to that, but that's just you.

[00:06:16] Speaker 01:
Well, and Dr. Herman does as well.

[00:06:18] Speaker 01:
OK.

[00:06:20] Speaker 04:
OK, great.

[00:06:21] Speaker 04:
You have an expert that says that, too.

[00:06:22] Speaker 04:
Keep going.

[00:06:23] Speaker 01:
So, but multi-piece or multi-layer, whatever label you want to put on it, what it's describing is a distinction between levels within the- Your blue brief at page 9 says, quote, the cover in Polytech, however,

[00:06:42] Speaker 04:
is a quote unquote multi-piece cover.

[00:06:46] Speaker 04:
And then you cite some pages from Polytech.

[00:06:50] Speaker 04:
But when I looked at A521, A525, and A529, I did not see the term multi-piece anywhere.

[00:06:58] Speaker 01:
But you quoted the word multi-piece in your brief.

[00:07:03] Speaker 01:
So what's going on there?

[00:07:05] Speaker 01:
Well, within Poly, Your Honor, if we misquoted there, then I apologize.

[00:07:10] Speaker 01:
What Polytech does say is it's a multi-layer cover.

[00:07:14] Speaker 01:
And it discloses that in the abstract of the invention, at page three, line 11, where it says... So why can't a multi-layer piece have one layer embedded in the other?

[00:07:32] Speaker 01:
Well, within the 592 patent, they disclose.

[00:07:36] Speaker 02:
But what's the answer to that?

[00:07:37] Speaker 02:
I mean, it's not inconsistent to have a multi-layer cover where one layer is embedded in the other one, right?

[00:07:45] Speaker 01:
Well, on this record, there's no evidence of how.

[00:07:49] Speaker 02:
Now go answer my question.

[00:07:52] Speaker 01:
I'm trying to, Your Honor.

[00:07:53] Speaker 02:
Well, try again.

[00:07:55] Speaker 02:
OK.

[00:07:56] Speaker 02:
There's nothing inconsistent with having a multi-layer cover.

[00:08:03] Speaker 02:
where one layer is embedded in the other layer, right?

[00:08:12] Speaker 01:
I don't quite know how to answer that question, Your Honor.

[00:08:15] Speaker 01:
The word embedded has to have a meaning here.

[00:08:19] Speaker 01:
And so how one would embed

[00:08:22] Speaker 01:
one layer into another layer so that the two layers form an integral component with one another and form a single piece, as the Borg interpreted.

[00:08:34] Speaker 01:
I don't have that information.

[00:08:35] Speaker 01:
The board down below suggested there might be a way of physically interacting two layers, a multi-layer structure, to make it one layer integrate into the other or embed into the other.

[00:08:48] Speaker 01:
But there's no expert testimony, nor am I aware of any technology that would facilitate that kind of a connection.

[00:08:55] Speaker 04:
I mean, as I understood your expert, your expert was saying how

[00:09:01] Speaker 04:
Well, to understand the word embedded, what that really means is you spray the paint into the mold, and then you don't let it fully cure.

[00:09:10] Speaker 04:
Normally, it's always fully cured, and then you inject the foam.

[00:09:14] Speaker 04:
But the genius of this invention is you don't let it fully cure, and then you inject the foam into the mold.

[00:09:22] Speaker 04:
And then with the non-fully cured paint, it somehow

[00:09:28] Speaker 04:
integrates with the foam so that it all chemically bonds together.

[00:09:34] Speaker 04:
That was, as I understand, your expert testimony to what embedded means.

[00:09:40] Speaker 04:
And the problem I have with that is there's just no written description support for all of this.

[00:09:46] Speaker 04:
I mean, if that's truly your point of novelty of injecting the foam materials into the mold before the spray on paint fully cures,

[00:09:58] Speaker 04:
That seems like some after the fact invention by the expert and not actually anything that's part of the four corners of the 592 specification.

[00:10:13] Speaker 04:
That's the concern I have right now.

[00:10:14] Speaker 04:
I don't see anything in the 592 that has this elaborate explanation that the expert came up with.

[00:10:23] Speaker 01:
I direct you again to the discussion in the background that differentiates the Eagle patent or the 592 patent from the prior art and talks about separate layers, adhering one layer to another layer as opposed to the embedded coding that's disclosed in the 592 patent.

[00:10:42] Speaker 01:
Dr. Herman understood what it meant.

[00:10:44] Speaker 01:
in terms of the eventual function or structure of a final embedded coding.

[00:10:50] Speaker 01:
And so I think that there's expert testimony here that supports the construction as one of ordinary skill in the art reviewing the term.

[00:10:58] Speaker 01:
And again, the term embedded needs to have a meaning here, and it has to be something different than, as both parties have identified, having two layers that are just adhered to one another.

[00:11:09] Speaker 01:
I see I'm in my rebuttal time.

[00:11:11] Speaker 01:
I'm happy to answer any questions.

[00:11:13] Speaker 01:
Otherwise, I'll let the appellee speak.

[00:11:16] Speaker 02:
OK.

[00:11:17] Speaker 02:
Thank you.

[00:11:20] Speaker 02:
Mr. Hartz?

[00:11:23] Speaker 00:
Yeah, good morning.

[00:11:24] Speaker 00:
May it please the court.

[00:11:26] Speaker 00:
I mean, the simple issue here is whether Polytech teaches the embedded protective coding limitation of the 592 patent.

[00:11:33] Speaker 00:
And I appreciate your honors acknowledging that we do not have agreement on claim construction.

[00:11:39] Speaker 00:
We proposed a claim construction.

[00:11:41] Speaker 00:
They opposed it.

[00:11:42] Speaker 00:
And then they come back and say that they agreed to, but try to do a little bit of linguistics about layer and piece.

[00:11:49] Speaker 00:
The simple fact is, under the court's claim construction, their expert agrees that the poly... You agreed on the claim construction, but not in the interpretation of the claim construction.

[00:12:01] Speaker 00:
You're right, Your Honor, that's just incorrect.

[00:12:04] Speaker 00:
We agree on the claim construction, but with the impact or application of that to Polytech, the simple fact is that their expert, everyone agrees that the Polytech reference results in a one-piece engine cover having a foam core as well as a design surface that can either be a spray skin or an in-mold coating.

[00:12:26] Speaker 00:
And that's really all that was required, because that's all that the claim required.

[00:12:31] Speaker 00:
And as they sit here and they try to dissect the teachings of Polytech about that there's not substantial evidence to support the board's decision about Polytech's teaching, the irony is that, as Your Honor noted, what Polytech teaches, the sufficiency of the disclosure of Polytech, is exactly the same disclosure that's in the 592 patent.

[00:12:55] Speaker 00:
The 592 patent makes clear, as the board found, when you're looking at what the embedded protective coating is, that the invention, the same as Polytech, was to solve the problem that existed that required two separate engine covers, one that had a foam body and then another one that was in the design surface with a separate plastic piece that had to be attached.

[00:13:19] Speaker 00:
The applicant and the patentee told the patent office in the background was that required two pieces.

[00:13:25] Speaker 00:
Our novelty is that we've got one piece.

[00:13:29] Speaker 00:
It wasn't in some special process of in-mold coating.

[00:13:32] Speaker 00:
In-mold coating at that time was well known.

[00:13:34] Speaker 00:
It was particularly well known in the automotive industry.

[00:13:37] Speaker 00:
What they told the public is that we have been able to apply an in-mold coating such that we've got it all in a single piece.

[00:13:45] Speaker 00:
And that's the exact same thing that the Polytech reference taught.

[00:13:48] Speaker 00:
It sought to solve the same problem.

[00:13:51] Speaker 00:
It sought to do it in the exact same way by providing a single structure.

[00:13:55] Speaker 00:
And the example coatings that it provided to apply to the design surface were exactly the same as existed in the 592 patent.

[00:14:05] Speaker 00:
And Your Honors, that really is this case in a nutshell, unless Your Honors have any questions.

[00:14:12] Speaker 03:
speak to the, is it Dr. Herman, the expert on the other side, 639, 637, 639, that describes how when you look at polytech because each of the layers of paint is being cured before foam ever gets into the process, that's the two different processes, you're not going to have an embedding.

[00:14:41] Speaker 03:
Why is What did the board do with that?

[00:14:46] Speaker 00:
well the the board looked at that testimony as they were advancing it because he was asserting that the claims required some sort of chemical bond they were saying that the embedded protective coating required that there be a bond between a

[00:15:01] Speaker 00:
the foam body as well as the coating such that it became a quote-unquote single layer, such that it became an integral homogenous structure.

[00:15:11] Speaker 00:
And the board said that's not required.

[00:15:13] Speaker 00:
That's not what the claim says.

[00:15:15] Speaker 00:
I mean, there is no evidence in either the 592 patent that that's really the process that's being employed.

[00:15:22] Speaker 00:
Similarly, there's not evidence in Polytech that it's not.

[00:15:26] Speaker 00:
But what Mr. Herman or Dr. Herman did also say under testimony in its

[00:15:31] Speaker 00:
I'll get to the side here in a second, but asked him, how is it that this chemical bond is achieved?

[00:15:39] Speaker 00:
Meaning how do we know?

[00:15:40] Speaker 00:
And he says it's based on compatibility of materials.

[00:15:44] Speaker 00:
If you have a polyurethane foam,

[00:15:47] Speaker 00:
and you have a polyurethane paint, which is what's disclosed in the 592 patent, you're going to have the reaction because they're compatible to yield a chemical bond.

[00:15:57] Speaker 00:
But you look at Polytech, and this is from Dr. Wagner's testimony as well, they also disclose a polyurethane foam.

[00:16:04] Speaker 00:
It's exactly the same, the same density as what exists in the 592 patent.

[00:16:09] Speaker 00:
They also disclose a polyurethane spray skin.

[00:16:13] Speaker 00:
So even the chemical bond requirement

[00:16:15] Speaker 03:
And whether it's wet, cured, or uncured makes no difference.

[00:16:26] Speaker 00:
It could make a difference as to whether or not there's different layers, Your Honor.

[00:16:32] Speaker 00:
I guess that is their argument as to whether or not they're adhered, but they're not made homogenous.

[00:16:38] Speaker 00:
But that's just something that's not something that's required by the claims.

[00:16:43] Speaker 03:
And the irony is that- Is it your view that the prior art does not have to teach that the result is integral?

[00:16:59] Speaker 00:
The prior art has to teach that there's an integral engine cover, a one-piece engine cover that has both a foam body and the coating applied to that foam body surface.

[00:17:13] Speaker 02:
I thought Polytech did use the word integral, am I mistaken?

[00:17:16] Speaker 00:
Polytech does use the word integral.

[00:17:19] Speaker 00:
Integral skin?

[00:17:20] Speaker 00:
It uses integral skin.

[00:17:24] Speaker 00:
doesn't use one piece, but it makes it clear that... It says not separate parts.

[00:17:29] Speaker 00:
Yes, that was the language I was looking for.

[00:17:30] Speaker 00:
Which you can do is the same thing as a single piece.

[00:17:32] Speaker 00:
Yes, and you can look in figures two and three, where figure two is a cross-section, figure three is a perspective view where they're describing the foam body having the design surface.

[00:17:46] Speaker 00:
And then if you look at figures four or five, I believe it is,

[00:17:51] Speaker 00:
where they make clear that they're, for pedestrian purposes, that they actually attach a plastic piece over top of the foam.

[00:18:01] Speaker 00:
And so that part of the upper foam surface is serving as the design element, some of it is not.

[00:18:07] Speaker 00:
But the point being is that's later, but as to these embodiments, they're making it entirely clear that the foam

[00:18:14] Speaker 00:
the upper part of the foam surface is the design surface, that it's all in one piece.

[00:18:19] Speaker 04:
It doesn't matter whether or not it's a, there's a... So polytech, when it says integral, it's talking about, it understands integral to mean a single piece.

[00:18:32] Speaker 04:
multiple layers, but a single piece.

[00:18:35] Speaker 00:
Yes, your honor.

[00:18:35] Speaker 00:
That's exactly right.

[00:18:36] Speaker 00:
They're basically saying we've got a foam body and then you've basically got a layer of paint on it.

[00:18:41] Speaker 00:
How that layer of paint or how that coating gets attached is just simply not a requirement of this claim, as the board found, nor can they point to anything in the specification by list or otherwise that's going to support such a construction.

[00:18:55] Speaker 00:
As your honor noted, it's really just a

[00:18:57] Speaker 00:
and after the fact machination of their expert to try to come up with some distinction between the claim and the prior art.

[00:19:06] Speaker 00:
OK.

[00:19:06] Speaker 00:
Thank you, Mr. Moore.

[00:19:07] Speaker 00:
Thank you, Your Honor.

[00:19:10] Speaker 01:
Mr. Carroll.

[00:19:14] Speaker 01:
Thank you, Your Honor.

[00:19:15] Speaker 01:
I did want to address the question that Judge Chen just raised about the use of the word integral in the polytech patent.

[00:19:23] Speaker 01:
So the word integral is used three times.

[00:19:26] Speaker 01:
one time to use to refer to what's called integral skin.

[00:19:31] Speaker 01:
And as the testimony of Dr. Herman showed us, that term, integral skin, does not refer to the relationship between the coating and the underlying foam.

[00:19:41] Speaker 01:
It refers to a particular product.

[00:19:44] Speaker 01:
As a matter of fact, it refers to a term of art for a particular kind of way of making foam.

[00:19:52] Speaker 01:
And as Dr. Herman testified, that way of making foam isn't relevant here, because even under modern technology, they can't make the foam medium density in the middle of it.

[00:20:05] Speaker 01:
And so therefore, even if it has a skin, it's for an irrelevant product.

[00:20:09] Speaker 01:
Now, the most, I think, interesting and I think misleading part of the Polytech reference, and where I think that the board went astray here, relates to what I think this panel has referenced, is the reference in paragraph three to a design surface and it being formed as part of the sound absorber.

[00:20:33] Speaker 01:
Now, we need to be clear here.

[00:20:34] Speaker 01:
The allegation based on petitioner's allegation and based on the board was that there is a coding that is applied using particular methods.

[00:20:44] Speaker 01:
So the coding is applied someplace.

[00:20:46] Speaker 01:
Well, where is it applied?

[00:20:48] Speaker 01:
Page three, lines four to five state that there is a design surface that is a part of the product in Polytech, but the next line says the design surface can be optically enhanced

[00:21:02] Speaker 01:
For instance, by surface treating, and I skipped some words down to the end, by surface treating the foam body, for instance, using in-mold coating or PU spray skin or PU cast skin.

[00:21:13] Speaker 01:
So the design surface is not the coating.

[00:21:16] Speaker 01:
It is the surface on which the coding is applied.

[00:21:21] Speaker 01:
And there is no disclosure in Polytech that says that there is any sort of a relationship between the coding that is applied using those methods and the underlying design surface.

[00:21:33] Speaker 01:
Instead, what the next sentence says, and this is page three, line 11, the present invention relates to a multi-layer cover.

[00:21:41] Speaker 01:
Now, I understand that there's some distinction here between layer and piece, but that disclosure is telling us that the design surface, which in 4 and 5 is discussed as being a part of the underlying sound absorber, the same foam material that's being used throughout, that design surface has a surface that's placed on top of it, which Polytech then refers to as a multi-layer cover.

[00:22:07] Speaker 01:
So what is the layer?

[00:22:09] Speaker 01:
The layer is that extra coding that's applied using the method of manufacture that's disclosed.

[00:22:15] Speaker 01:
Now, we understand the challenge on the claim construction.

[00:22:22] Speaker 01:
The parties here, however, have agreed that the term embedded means integrated and firmly affixed.

[00:22:31] Speaker 04:
Incorporated and firmly affixed, right?

[00:22:33] Speaker 01:
Thank you, Your Honor.

[00:22:33] Speaker 01:
Sorry.

[00:22:34] Speaker 01:
Incorporated and firmly affixed.

[00:22:37] Speaker 01:
If it's incorporated, the question is, incorporated how?

[00:22:42] Speaker 01:
And there has to be some structural meaning to that term.

[00:22:46] Speaker 01:
And here, the only evidence that was presented as to the relationship between the coding and the underlying foam comes from patent owner's expert.

[00:22:55] Speaker 01:
All of the other testimony from Dr. Waggoner.

[00:22:57] Speaker 04:
What does your 592 specification inform us what embedded means?

[00:23:03] Speaker 01:
The 592 specification says what it says.

[00:23:09] Speaker 02:
Yes, it does.

[00:23:11] Speaker 02:
But that was not an answer.

[00:23:13] Speaker 01:
Well, but to one of ordinary skill in the art, taking a look at that specification, seeing that the difference between the prior art and this is the difference between having one layer and two layers, and the fact that the word embedded has to have some structural meaning.

[00:23:32] Speaker 01:
Dr. Herman testified about what that meaning meant.

[00:23:36] Speaker 01:
Now, to him, it meant a chemical bond between the two.

[00:23:39] Speaker 01:
The board disagreed and said there might be some sort of physical integration of the two layers.

[00:23:46] Speaker 01:
Either way, it requires a particular structural relationship and one that we believe that is not shown here and can't be shown by just assuming the structure is produced from a particular function or from a particular manufacturing method.

[00:24:00] Speaker 02:
Okay.

[00:24:00] Speaker 02:
Thank you, Mr. Chairman.

[00:24:01] Speaker 02:
Thank you.

[00:24:01] Speaker 02:
Thank you both, Council.

[00:24:02] Speaker 02:
The case is submitted.

[00:24:02] Speaker 02:
That concludes our session.