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Our next case is Townsend versus Brooks Sports Inc.

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Case number 21-2143.

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Mr. Hampton?

[00:00:10] Speaker 00:
Yes, Your Honor.

[00:00:11] Speaker 00:
Yes.

[00:00:12] Speaker 00:
I see you have reserved, is it six minutes or seven minutes of time for... I thought we said seven, but six is fine.

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It's up to you.

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Six.

[00:00:22] Speaker 00:
Six minutes.

[00:00:23] Speaker 00:
Okay.

[00:00:24] Speaker 00:
All right.

[00:00:25] Speaker 00:
You may begin.

[00:00:29] Speaker 01:
Good morning.

[00:00:29] Speaker 01:
May it please the court, I'm Steve Hampton for the appellant, Mr. Herbert Townsend.

[00:00:35] Speaker 01:
The 416 patent discloses a shoe with midsole components that enhance both cushioning and running speed.

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As claim one recites, the midsole component is material consisting essentially of a dilatant compound that fills a cavity in the midsole.

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The 416 patent explains that the dilatant compound is soft and pliable under slow loading

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and is elastic and bouncy under rapid loading.

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And those very different behaviors provide both enhanced cushioning and enhanced running speed.

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The board decided that claim one was unpatentable on two obviousness grounds.

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For one ground, the board decided that it would have been obvious to replace the silicone bouncing putty in the midsole of the shoe disclosed by the Izumi reference with the recited material.

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For the other ground, the board decided that it would have been obvious to replace a fluid-containing cushioning device in the midsole of a shoe disclosed by the Rudy reference with body padding disclosed by the plant reference.

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Both decisions are based on legal errors, including erroneous claim construction, failure to ascertain and consider differences between the claimed invention and the prior art, failure to consider obviousness of the invention as a whole,

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and failure to identify a motivation to combine or modify prior art.

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The board's decisions that claim one is unpatentable over Izumi are based on its erroneous construction of the term material consisting essentially of a dilatant compound.

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Material consisting essentially of is a partially open transition phrase that should be construed to require the listed material, in this case a dilatant compound,

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and materials that do not affect the basic and novel properties.

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The essential properties of a dilating compound are set out by the board's construction of that term.

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Those properties are soft and pliable under slow loading and elastic and bouncy under rapid loading.

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One of your arguments is that the board's construction includes materials that were disavowed during prosecution, correct?

[00:02:48] Speaker 00:
Yes.

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Show me where that material was disavowed during prosecution.

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If it's in the prosecution history, I believe, at appendix page 958.

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Do you want to identify for us?

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Are you going to identify us with the specific sentences that you're relying on?

[00:03:09] Speaker 01:
Yes, I will.

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The background of this is that they originally tried to distinguish it using formulations.

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They were told they couldn't based on 112.

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So they removed from the claims the limitations directed to the formulation.

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And they argued that they were disavowing the Rhodes material.

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They were distinguishing the Rhodes reference material based on its maximizing energy return.

[00:03:43] Speaker 00:
Can you show me where I can see a clear, non-mistakable disavow?

[00:03:53] Speaker 01:
On appendix page 958, in the section under two small i's, near the top of the page, five down, the statement is made, on the other hand, applicant teaches the maximization of energy returning depending on the load for the purpose of maximizing running speed, that is faster running for more energy return, which in turn enables faster running.

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as opposed to at the beginning it says also Rhodes teaches the Rhodes medium must contain fiber filler to stabilize the competition so its static viscosity is high and expressly to minimize the inherent energy return of the dilating compound.

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Now to return to your question we are not arguing that this is a disavowal because we believe a disavowal would be to narrow

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the claim in a way that it wasn't narrowed by prosecution, by the meaning of the claim, by ordinary construction.

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Fair enough.

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You can go on to another argument.

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Returning to construction of material consisting essentially of a dilatant compound, the board ignored the properties of a dilatant compound as the board had construed that term to construe material consisting essentially of a dilatant compound to be materials whose formulation

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contain substances that are not dilatant so long as those other substances do not render the material non-dilatant as a whole.

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The board did not explain what non-dilatant as a whole means and did not explain why it adopted that construction.

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The board's construction is error, we believe, because it does not incorporate the properties of a dilatant compound.

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Mr. Townsend's proposed construction, on the other hand, requires a dilatant compound

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and other materials that do not significantly diminish energy returned by the delayed compound under rapid loading.

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I'm having a little bit of a hard time understanding the difference between your proposed construction and the board's.

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With regard to Izumi, I'm failing to see why your changed construction, which only slightly differs from the board's, makes any difference.

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Could you explain that to me?

[00:06:16] Speaker 01:
Well, I think it's very different than what the board said.

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Because our construction begins by saying a dilating compound, which is what it's a material consisting essentially of a dilating compound.

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So we have a dilating compound plus other components, so long as they don't materially affect the dilating compound in a way relevant to the invention.

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So your view is that Izumi doesn't disclose a dilating compound?

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As construed, no.

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And we believe that's the reason that the board rejected anticipation by Izumi, which was round one.

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I thought that the dilating compound simply was a polymeric material that changes from soft and pliable under slow application of a load to elastic and bouncy under rapid application of a load.

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If you look at Izumi, it does disclose a putty that has that characteristic.

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Is this characteristic?

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I agree with half of that.

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I agree that under slow application of loading, the Izumi material is not significantly different in a relevant way from the dilatant compound that is the dilatant compound claimed for the 416 patent.

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On the other hand, under rapid loading, we think it's very different.

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This was the basis of the argument before the board on the anticipation ground.

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And the difference is that rather than behaving elastically, in other words, like a spring, you can compress it and it springs back.

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That's the delighting compound that we are claiming in the 416 patent.

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It's elastic and bouncy.

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I'm sorry.

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Izumi, on the other hand, is directed to stability.

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In other words, under very fast loading, the shoe, this midsole in particular, doesn't compress because it's supported.

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And that's a different behavior

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than the behavior under rapid loading of the delayed compound.

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This was addressed in more specificity with respect to the anticipation ground, of course.

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These materials, these polymeric materials are formulated.

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It falls within the area of polymer viscoelasticity and polymer rheology.

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And material scientists, such as the expert that supported Mr. Townsend before the board,

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work in this area and they formulate materials specific, they have specific behaviors.

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In this case, the Izumi has one behavior under a rapid loading and the 416 patent behavior has a different loading, has a different behavior.

[00:08:58] Speaker 00:
Okay, you're into your rebuttal, Hamd, do you want to reserve that or you can continue on if you like?

[00:09:10] Speaker 01:
I guess I would just

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If I may, I'd just like to adjust the claim construction issue that's relevant to the other obviousness ground that's at issue here.

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And that is the obviousness over rooting plant.

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The board's decision on that ground is directed to the erroneous construction of the limitation, a cavity formed inside top surface of a midsole.

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The board construed that limitation as a space within the midsole that may or may not open to the top surface of the midsole.

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The board did not explain how a cavity that does not open to the top surface of the midsole could be formed in said top surface or why it adopted that construction.

[00:09:50] Speaker 01:
The board's construction is error because it is not limited as the plain language of the claim requires.

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The board's construction is also error because it does not require the cavity to open only to the top surface.

[00:10:04] Speaker 03:
Why does it have to open only to the top surface?

[00:10:07] Speaker 03:
I see your argument with respect to the other part of the claim construction, but I don't know why it's proper to read the word only into this claim term.

[00:10:17] Speaker 01:
There are two bases for that, we believe, Your Honor.

[00:10:20] Speaker 01:
One is that the appropriate definition of a cavity is being in space that's within the body.

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If it's within the body, it would be entirely within the body, we believe.

[00:10:30] Speaker 01:
The other reason is that it is the way... Couldn't it be within the body but have an opening like two places?

[00:10:39] Speaker 01:
Potentially, yes, but that's where the specification of the 416 patent comes in.

[00:10:44] Speaker 01:
I'm referring now to appendix page 96, and this is at column 5, lines 35 through 41, which say that under slow loading, this material behaves like a putty.

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If it was on a table in front of us and we pushed it, it would just become a pancake.

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that wouldn't be good in the sole of a shoe.

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And so what stops that from happening is the fact that the surrounding midsole now supports it.

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It's trying to flow, it's trying to go away, but the midsole stops it.

[00:11:17] Speaker 01:
That's what is described at this point in the 416 patent.

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And that's the reason that another hole, an exit out of the cavity for the material would

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prevent that transfer of load to the midsole, which isn't an essential part.

[00:11:34] Speaker 01:
It's half of the improvement in the invention.

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In other words, it's the cushioning of the midsole that's holding the slowly loaded, dilating compound from moving, from leaving the cavity.

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So your view is that we have to read the word only in there, because otherwise the invention won't work?

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Is that what I hear you to be saying?

[00:11:56] Speaker 01:
It won't work as described, no.

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But will it work as claimed?

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I mean, claims don't have to be perfect.

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And there is no language of only in the claim.

[00:12:06] Speaker 01:
Well, we rely on the definition of cavity for that.

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And we think that's consistent with both the disclosure by the 416PAT and, in particular, this disclosure of how the midsole and this material work together under slow loading.

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Mr. Donnelly.

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May I proceed?

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Yes, you may proceed, please.

[00:12:33] Speaker 02:
Thank you, Your Honor.

[00:12:33] Speaker 02:
May it please the court, Darren Donnelly, and I represent Brooks Sports.

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Before responding to some of the arguments my opponent made, because there are so many issues and I won't be able to address all of them, I'd like to make a few general comments about the issues in the proceedings below.

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First, because the board found the challenge claims unpatentable both on

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the grounds based on Izumi and Rudian plant.

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My opponent needs to show air on both those grounds in order to call into question the decision below.

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Second, to provide a little context for the issues here from what happened below, on the Izumi grounds, there was a classic battle of the experts.

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The board below credited Brooks expert, Dr. Shorten,

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made factual findings consistent with Dr. Shorten's opinions, and that largely determined the outcome of the Izumi part of the case.

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On Rudy and Plant, there wasn't a battle of the expert at all, because Townsend did not put in any expert evidence on the Rudy-Plant combination.

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So when the board made factual findings

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and credited parts of the record from Brooks, there was no competing expert testimony for the board to possibly adopt.

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On the plan construction issues, on the Izumi side, the board below, as Your Honors observed, rejected Townsend's argument that the

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Claim language material consisting essentially of a delayed in compound.

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We shorthand it as the material term Should not have a limitation read into it do not significantly diminish energy storage and return at high rates of loading

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And on the Rudian plant side, whether the term cavity formed in the top surface of the midsole only opens to the top surface of the midsole.

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Those two issues make it up here today, as well as a couple of new issues on appeal.

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And I'll talk about those.

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Finally, Brooks raised an anticipation argument below that the board rejected.

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That anticipation argument was based on

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the contention from Brooks that a person of ordinary skill in the art would understand Izumi's Bouncing Putty to refer to Silly Putty or its generic equivalent, Dow.

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Why did the board say that those claims were not anticipated by Izumi?

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And I notice you're not challenging that.

[00:15:20] Speaker 03:
We just have to assume that whatever the board said is true, right?

[00:15:25] Speaker 03:
I didn't mean to interrupt anyone.

[00:15:27] Speaker 03:
So could you just tell me why it is that Izumi was found to not anticipate?

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What was the missing limitation?

[00:15:34] Speaker 02:
Yeah, and just to be clear, as we understand this court's precedent, we did not have grounds to cross-appeal that issue.

[00:15:42] Speaker 02:
And if we didn't, we would have, I don't think.

[00:15:47] Speaker 01:
OK, that's fine.

[00:15:48] Speaker 01:
Why don't you read it into the question?

[00:15:50] Speaker 01:
The alternative for a permit's going to connect you up.

[00:15:52] Speaker 02:
We certainly could have given the dozens of issues in the briefing.

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One additional one did not.

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So we need to accept that fact-finding is true, but what is the fact-finding?

[00:16:04] Speaker 03:
I assume it doesn't teach what?

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That it doesn't teach a dilatant compound or material consisting essentially of a dilatant compound?

[00:16:12] Speaker 02:
No.

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I think the board's fact-finding is that

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Well, I would characterize it differently.

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I think the board didn't like the way we cast the anticipation argument.

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And what I mean by that is our anticipation argument made sort of, I guess, two parts to it.

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One, we argued that a person of skill in the art would understand

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Izumi's bouncing putty to refer to silly putty.

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We argued silly putty is an embodiment of the claims of the claim one of the 416 patent.

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And just kind of transitivity, bouncing putty suggests silly putty, silly putty is an embodiment.

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Can I ask you a question?

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On page 834 of the board's decision, it says, we also find that Izumi does not disclose expressly

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that its silicone bouncing putty is or must be necessarily the dilatant compound.

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Is that the finding?

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So 34?

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Yes.

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I think that's the finding that we're going to start with for our business, right?

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This is on the anticipation section.

[00:17:42] Speaker 02:
Yeah, yeah.

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So if I can explain a bit how we got here.

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And what I think this statement means is I don't think it adds anything to what came before for the reasons I'll get into.

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So what the anticipation ground was was first this argument based on just basically the lighting.

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I want to just make sure you're using your time.

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I want to make sure you're using it.

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What my question is, given this sentence and this finding by the board, I just want to make sure nonetheless the board made, is there substantial evidence to support the board's finding that nonetheless Izumi renders the claim obvious?

[00:18:24] Speaker 02:
Yes there is.

[00:18:25] Speaker 02:
Okay.

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So the board made specific factual findings that the dilatant compound in Izumi has

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similar properties to the... The bouncing putty in Izumi has similar properties to the dilatant compound that is present in the 416 patent.

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It made specific findings that the composition of Izumi's bouncing putty is similar to the composition of what is taught in the 416 patents within the scope of the claims and in

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its obviousness analysis combines those specific findings to show that Izumi's bouncing putty meets each and every element of the claim as the board construed the claim.

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And so what I think the anticipation section here really says is the board didn't agree with

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Brooks's contention that silly putty was called to mind by reference to bouncing putty in Izumi in an express sense.

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He did not find expressed disclosure of silly putty.

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And then Brooks also argued based on

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the description of the chemical formulation of the material Inazumi and the chemical formulation that's described in the 416 patent about the Dow compound.

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that a person of skill would have understood the reference to that chemical formulation of Izumi's bouncing putty to suggest or teach the Dow 3179 compound.

[00:20:21] Speaker 02:
The board said we didn't find that expressly in Izumi.

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And then the board in the paragraph you were looking at, Your Honor, addresses the third paragraph in

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Brooks's anticipation argument.

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And we made this one argument based on the language that bouncing putty and silly putty are kind of terms used to refer to the same thing.

[00:20:47] Speaker 02:
The board didn't agree that there was expressed disclosure of silly putty.

[00:20:51] Speaker 02:
We make this argument that the chemical formulations are similar.

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The board said, I didn't find expressed disclosure of Dow 3179 in Izumi.

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And then we make an argument that

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there are similar properties between the two compounds.

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And this paragraph is saying, even if I agree with you, Brooks, that there are similar properties and compositions, it doesn't change my mind that there's not expressed disclosures.

[00:21:19] Speaker 03:
Because it's expressly.

[00:21:21] Speaker 03:
Pardon?

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You're focusing on the word use of the phrase expressly by the board.

[00:21:25] Speaker 02:
Yeah, right.

[00:21:26] Speaker 02:
I think the board effectively used

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And its system is verbose or in hack-verba language or mindset on anticipation.

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And then when it turned to obviousness, it said one of ordinary skills would have known that the goal was to exhibit the properties of a dilating compound.

[00:21:48] Speaker 02:
Right.

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The board made those factual findings, and I think the board

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I think the board in its anticipation section was saying, we were not persuaded by your anticipation argument as you framed it, Brooks.

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But when we get to obviousness, we've got clear factual

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support from Dr. Shorten and my opponent's expert, Dr. McKinley, that show that the properties of Izumi's bouncing putty are similar to those of the clay material.

[00:22:30] Speaker 02:
The composition of Izumi's bouncing putty is similar to the composition of the clay material.

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The board's construction shows that with those factual findings, all the elements of the construction are present.

[00:22:45] Speaker 02:
There is material that behaves as a dilating compound, has similar properties.

[00:22:50] Speaker 02:
There is material that is added filler, but overall it still maintains those similar properties.

[00:22:59] Speaker 02:
Overall, the zoomies bouncing putty acts as a dilating compound.

[00:23:03] Speaker 02:
There is the finding based on Professor McKinley's declaration that the reaction product in Izumi is delayed at high speeds.

[00:23:16] Speaker 02:
And with those factual findings, the board's obviousness conclusion follows from a straightforward application of those findings to its claim.

[00:23:28] Speaker 02:
Let me address briefly the argument my friend made about the claim construction issues regarding the term consisting essentially of a dilating compound and cavity.

[00:23:56] Speaker 02:
The portion of the prosecution history my friend pointed you to, that was a reference to the teachings of the subject application.

[00:24:07] Speaker 02:
There's a contrast of what applicant teaches.

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There's no description of what applicant claimed.

[00:24:13] Speaker 02:
There's no discussion of the invention as a whole.

[00:24:15] Speaker 02:
That paragraph doesn't rise to the level of a disclaimer under this court's jurisprudence as to what is required to be a clear disavowal of claims.

[00:24:27] Speaker 02:
whether or not they want to call it a disclaimer or something else.

[00:24:32] Speaker 02:
Ultimately, it is an attempt to read the limitation in from the prosecution history as disavowing what would otherwise be scope within the claim.

[00:24:43] Speaker 02:
And the prosecution history doesn't support that.

[00:24:47] Speaker 02:
And the language after that portion of the specification that my friend quoted provides a difference

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rationale for why the claim was patentable.

[00:24:59] Speaker 02:
And it is that invention as a whole that's claimed structural combination with

[00:25:04] Speaker 02:
are located in particular portions.

[00:25:07] Speaker 02:
And that's an argument that shows up elsewhere in the prosecution history.

[00:25:11] Speaker 02:
We cite it in our papers.

[00:25:13] Speaker 02:
And it is a different argument for patentability than what my friend argues was the supposed disavowal that led to allowance.

[00:25:29] Speaker 02:
a claim construction issue related to cavity.

[00:25:34] Speaker 02:
I wanted to spend a little time to make clear that there's two issues, one which the court observed whether cavity needs to only open to the top surface, the midsole.

[00:25:47] Speaker 02:
The board found below that the ordinary meaning of that did not require it in addition to the specification.

[00:25:54] Speaker 02:
And there was no reference or no reliance on the prosecution history.

[00:25:59] Speaker 02:
But I wanted to be very clear that the other aspect of that construction, this may or may not open, is completely irrelevant.

[00:26:07] Speaker 02:
There is no item of prior art that doesn't open to the top surface of the midsole.

[00:26:13] Speaker 02:
Brooks made no argument about.

[00:26:15] Speaker 02:
the interpretation of this below.

[00:26:18] Speaker 02:
All of our prior art opens to the top surface in the midsole.

[00:26:23] Speaker 03:
In your view, it doesn't matter if it opens to the top surface as well as another surface?

[00:26:28] Speaker 02:
Well, there's an argument about may or may not open to the top surface.

[00:26:34] Speaker 02:
We don't think it matters whether or not it doesn't open the top surface.

[00:26:39] Speaker 02:
All of our prior art opens to the top surface.

[00:26:41] Speaker 02:
So if the court can distribute, if the board

[00:26:45] Speaker 02:
construction had some issue with not open to the top surface.

[00:26:51] Speaker 02:
There's no way that can change the outcome.

[00:26:53] Speaker 02:
You're saying that's harmless error.

[00:26:55] Speaker 03:
But what about the argument that it should only open to the top surface?

[00:27:01] Speaker 02:
Yeah, we disagreed with that.

[00:27:02] Speaker 02:
We disagreed with that below.

[00:27:03] Speaker 02:
And the argument that my friend made pointing to specific parts of the specification, that

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one, doesn't rise to a disavowal from the specification under this court case law.

[00:27:19] Speaker 02:
And if you look at figure four of the Rudy patent, which is at APTX 740, the Rudy patent shows Rudy's device

[00:27:39] Speaker 02:
when it is being crushed.

[00:27:41] Speaker 02:
You can finish that thought.

[00:27:48] Speaker 02:
Rudy is the Nike heir.

[00:27:50] Speaker 02:
Rudy is sort of the father of Nike heir.

[00:27:52] Speaker 02:
And that picture shows someone stepping on a rock.

[00:27:56] Speaker 02:
And the Nike heir, the heir doesn't blow out of the shoe.

[00:28:00] Speaker 02:
It is contained in the shell.

[00:28:03] Speaker 02:
So this notion that it would be impossible to control and prevent the invention from working, it's just inconsistent with how people in the art understand how this type of work works.

[00:28:16] Speaker 02:
Thank you, Your Honor.

[00:28:18] Speaker 00:
Thank you.

[00:28:19] Speaker 00:
Mr. Hampton, you have three minutes.

[00:28:22] Speaker 01:
Thank you, Your Honor.

[00:28:23] Speaker 01:
To begin briefly with the rejection of anticipation by the board

[00:28:29] Speaker 01:
There are actually two places in the decision that I think are relevant.

[00:28:33] Speaker 01:
One is at APPX 34, which you discussed with Mr. Donnelly.

[00:28:39] Speaker 01:
And the other place is at APPX 79, which is the rehearing decision.

[00:28:45] Speaker 01:
And what happened there was that the board did not reach a ground that was asserted.

[00:28:53] Speaker 01:
but that ground relied on Izumi for disclosing material consisting essentially of a dilatant compound and on rehearing the board rejected that ground specifically because as it sets out on page 8 PPX 79 they found that that Izumi does not disclose material consisting essentially of a dilatant compound.

[00:29:19] Speaker 01:
There are many

[00:29:22] Speaker 01:
errors we believe in the way the board addressed obviousness in both cases.

[00:29:26] Speaker 01:
We don't believe that Mr. Donnelly talked a great deal about similarities between the Izumi material and the 416 dilatant compound.

[00:29:38] Speaker 01:
But obviousness is not based on similarities.

[00:29:40] Speaker 01:
Obviousness is based on differences.

[00:29:42] Speaker 01:
And the board never identified the differences between the dilatant compound disclosed by the 416 patent

[00:29:51] Speaker 01:
and the silicone bouncing putty disclosed by Izumi, even though that was certainly an issue that was presented to them.

[00:30:00] Speaker 01:
Therefore, the board had no idea how, under the board's analysis, you wouldn't know how to modify the Izumi material to make it the 416 material, because you wouldn't know how it was different.

[00:30:13] Speaker 01:
And if you didn't know how to modify it, you couldn't find a motivation to modify, and the board didn't in any case in this year.

[00:30:22] Speaker 01:
With respect to a lot of the record below, this is not an appeal of the record below.

[00:30:30] Speaker 01:
This is an appeal of the decision of the board.

[00:30:34] Speaker 01:
And as the court made clear in the Alacrotec versus Intel case, if the record below that was submitted by the parties is part of the decision, the board has to adopt that and state reasons for adopting that record.

[00:30:48] Speaker 01:
And the board did not do that in this case.

[00:30:53] Speaker 01:
And I guess I'd just like to finish with sort of the last issue that was presented by the briefing, and that is the board's decision to disregard testimony by Brooks' expert.

[00:31:05] Speaker 01:
They failed to make a shoe, as Mr. Townsend had disclosed it.

[00:31:11] Speaker 01:
And the board disregarded that testimony in the final written decision.

[00:31:16] Speaker 01:
We asked on rehearing for the board to reconsider and explain it.

[00:31:21] Speaker 01:
The board's response was,

[00:31:26] Speaker 01:
that there was a conflict between the expert testimony in which we relied and later expert testimony, and that resolving that conflict, and that the board resolved that conflict by disregarding the testimony in which we relied.

[00:31:39] Speaker 01:
But the board didn't identify the conflict, and the board didn't explain why it resolved the conflict in the way it did.

[00:31:47] Speaker 01:
So we believe that the board should have done both.

[00:31:52] Speaker 01:
And just to point out that even Brooks's briefing points out that there's not necessarily a conflict between those two groups of testimony.

[00:32:04] Speaker 01:
I yield the rest of my time.

[00:32:06] Speaker 01:
OK, thank you very much.