[00:00:00] Speaker 02:
Our next case is Soft Kelly's Incorporated versus Ty Incorporated, 2022, 1146.

[00:00:07] Speaker 02:
Mr. Toppett, is it?

[00:00:12] Speaker 01:
It is, Your Honor.

[00:00:14] Speaker 02:
Ty?

[00:00:15] Speaker 01:
Yes, that's correct.

[00:00:16] Speaker 01:
Good morning.

[00:00:19] Speaker 01:
May it please the court?

[00:00:21] Speaker 01:
I'd like to focus primarily on the claim construction issues, and especially Ty's argument

[00:00:26] Speaker 01:
about the impart language found in section 3B of Ty's brief.

[00:00:30] Speaker 01:
And then if time allows, I have a few brief points on the NIDAC issues.

[00:00:35] Speaker 01:
Of course, the starting point in construing claims is their plain language.

[00:00:41] Speaker 01:
Here, the term is impart.

[00:00:44] Speaker 01:
Ty's construction would allow for something that forms an inner chamber in whole to form it impart.

[00:00:51] Speaker 01:
Whole being the antonym of

[00:00:53] Speaker 01:
of part that it's completely inconsistent with the plain language of that term.

[00:01:01] Speaker 01:
Turning to section 3b of their brief, Ty now argues that impart does not modify the strip, or sorry, that does not modify the chamber, but instead it modifies the strip so that a strip of fabric can form the entire inner chamber

[00:01:17] Speaker 01:
plus something else, and that is how they get to impart.

[00:01:20] Speaker 01:
And there's a number of problems with that argument.

[00:01:23] Speaker 01:
First and foremost, it was forfeited.

[00:01:25] Speaker 01:
Ty argued to the board that there can be two strips of optical fabric to form the chamber plus

[00:01:31] Speaker 01:
a non-optical strip somewhere else.

[00:01:33] Speaker 01:
They did not argue this single strip chamber that's in Appendix 366 and in Mrs. Ryan's declaration at 2306.

[00:01:45] Speaker 01:
And this is not simply expanding upon or slightly modifying what was argued below.

[00:01:50] Speaker 01:
It's completely inconsistent.

[00:01:52] Speaker 01:
It is a different argument entirely.

[00:01:54] Speaker 01:
And so the court really should not even be considering it.

[00:01:57] Speaker 01:
There's also no evidence that was presented that that configuration exists in Ogawa, which was the reference at issue.

[00:02:05] Speaker 03:
But just so I understand it, if we disagree with your understanding of the claim and

[00:02:14] Speaker 03:
and conclude that there's nothing in the claim that requires the inner chamber to be composed of at least one other strip that's non-optical grade fabric, then does that result in an affirmance here?

[00:02:34] Speaker 01:
Correct.

[00:02:34] Speaker 01:
We need to win both arguments.

[00:02:36] Speaker 01:
We need to win the claim construction argument, and we need to win the NIDAC argument.

[00:02:40] Speaker 03:
OK.

[00:02:40] Speaker 03:
So when the claim says, OK,

[00:02:43] Speaker 03:
We have an inner chamber and there's a strip that forms in part that inner chamber made of optical-grade fabric.

[00:02:58] Speaker 03:
Why does that preclude the other or any other strip of fabric from being also an optical-grade fabric?

[00:03:09] Speaker 01:
Because then it would be made in a whole of strips that are optical fabric and not imparted.

[00:03:13] Speaker 03:
I guess what I'm trying to get at is that the claim limitation seems to be focused that, OK, this inner chamber has got to be made up of some strips.

[00:03:24] Speaker 03:
But one strip, I'm telling you right now, has to be composed of optical grade, period.

[00:03:31] Speaker 03:
And I guess I don't understand, just based on that limitation, why that

[00:03:38] Speaker 03:
also is telling me, and by the way, no other strip of fabric that is part of the inner chamber can be made of optical gray fabric.

[00:03:48] Speaker 03:
It doesn't say it like that, so I'm just trying to understand why is there this negative limitation embedded in this limitation where it's really just focused on one of the strips and what is a feature of one of those strips and the feature it's calling out is that feature has to be optical gray.

[00:04:05] Speaker 03:
Why does that

[00:04:07] Speaker 03:
require any kind of understanding and commentary about the other strips that will make up the inner chamber?

[00:04:14] Speaker 01:
Because that interpretation would render in part meaningless.

[00:04:19] Speaker 01:
If the claim read, at least in part, then I would agree that it would allow for the rest of the strips could also be optical

[00:04:29] Speaker 01:
But by saying impart, it necessarily means not in whole.

[00:04:34] Speaker 00:
Can I ask you, just as a follow up to Judge Jensen, maybe the independent claim is the one that says impart.

[00:04:41] Speaker 00:
But we're dealing here with the dependent claims, right?

[00:04:44] Speaker 00:
And nothing in the dependent claim which introduces the non-optical fabric requirement requires that the non-optical fabric form any other part of the inner chamber.

[00:04:57] Speaker 00:
That fair?

[00:04:58] Speaker 00:
Is that right?

[00:04:59] Speaker 00:
The dependent claim only requires that another of said strips of fabric, referring back to the phrase, strips of fabric sewn together to form a doll-like figure party, be non-optical.

[00:05:12] Speaker 01:
Well, the provision we're relying on is in part, which is in both the, as you referred to, the originally independent claim and the dependent claim.

[00:05:20] Speaker 01:
There's now only one claim.

[00:05:21] Speaker 01:
The originally independent claim was canceled.

[00:05:27] Speaker 01:
So at most, that could mean that you could have a chamber formed in part by optical grade fabric and in part by something else that isn't fabric.

[00:05:38] Speaker 01:
Now, there's no teachings in the patent that say anything about that.

[00:05:41] Speaker 01:
There's no embodiment that matches it.

[00:05:43] Speaker 01:
And there's no evidence that Ogawa teaches that either, that Tai refers to it.

[00:05:48] Speaker 01:
Perhaps it could be wood or metal or plastic.

[00:05:51] Speaker 01:
So in part, it has to mean something other than in whole.

[00:05:56] Speaker 01:
even if they're correct about that, the rest of it doesn't have to be non-optical grade.

[00:06:02] Speaker 01:
I don't think they're correct because when you read the claim as a whole, it's talking about fabric.

[00:06:05] Speaker 01:
It's talking about two kinds of fabric that are mutually exclusive.

[00:06:09] Speaker 01:
If it's not optical grade fabric and it needs to be fabric, then it would necessarily be non-optical grade fabric.

[00:06:15] Speaker 01:
So when you read the claim as a whole and when you look to the embodiments and when you look to the purpose,

[00:06:20] Speaker 01:
Of that limitation, which the patent owner referred to in the re-exam at Appendix 1288, the purpose was cost savings, that you wouldn't use any more optical-grade fabric than you would need to.

[00:06:36] Speaker 01:
And so, yes, could you put non-optical-grade fabric somewhere else?

[00:06:41] Speaker 01:
You could, but it's inconsistent with the purpose that you mentioned to sort of make the whole thing out of optical-grade fabric and then stick some piece of

[00:06:49] Speaker 01:
non-optical fabric elsewhere when the purpose of it is to reduce the cost associated with it.

[00:06:57] Speaker 00:
And I think this is maybe just a different version of the question Judge Chen was raising, which is just because it says impart, what prevents the rest of the inner chamber from being formed by yet another strip of optical fabric?

[00:07:15] Speaker 01:
because it would then be formed in whole by strips of optical-grade fabric.

[00:07:21] Speaker 01:
And that would remove impart.

[00:07:24] Speaker 01:
Under that interpretation, you could remove the word impart, and that's where you would get.

[00:07:29] Speaker 01:
And so impart would be superfluous.

[00:07:32] Speaker 01:
It wouldn't serve any purpose.

[00:07:36] Speaker 01:
It also, I mean, there are different embodiments that are disclosed.

[00:07:42] Speaker 01:
The preferred embodiment was for optical grade mixed with non-optical grade in the inner chamber, which matches into our read of this claim.

[00:07:53] Speaker 01:
And again, Ty's argument now is different.

[00:07:56] Speaker 01:
That's not their argument now.

[00:07:58] Speaker 01:
Their argument now is the whole strip.

[00:08:00] Speaker 01:
There can be one strip that forms the entire inner chamber

[00:08:04] Speaker 01:
And so long as it also forms something else with it, then it's impart.

[00:08:08] Speaker 01:
This is their effort to move beyond just the dependent claim language and into the actual term impart, because they need to explain what does impart mean then if it's not in whole.

[00:08:20] Speaker 01:
And so there is no embodiment that they cite to that references that.

[00:08:26] Speaker 01:
Page 50 of their brief

[00:08:27] Speaker 01:
I think they try to suggest that there are embodiments that do that, but when you look at them, they're not.

[00:08:34] Speaker 01:
All of the passages that they cite are to multiple strips forming an inner chamber.

[00:08:41] Speaker 03:
I'm still struggling here because this limitation is about two things about a particular strip of fabric.

[00:08:53] Speaker 03:
Thing one is

[00:08:55] Speaker 03:
one particular strip of fabric will in part form the inner chamber.

[00:09:03] Speaker 03:
So that tells us that the inner chamber is going to be made up the second part.

[00:09:09] Speaker 03:
And then the second thing this limitation is telling us about this particular strip is that it's made of optical-grade fabric.

[00:09:17] Speaker 03:
So I guess if I read it that way, then the focus of this limitation is about two features of just this strip in particular.

[00:09:28] Speaker 03:
And it's not about a commentary on the chamber itself.

[00:09:32] Speaker 03:
It's a commentary on the strip.

[00:09:36] Speaker 03:
The strip is going to contribute to forming the chamber, but it's not the only thing that's going to form the chamber.

[00:09:45] Speaker 03:
And then secondly, the strip is made of optical grade fabric.

[00:09:52] Speaker 03:
Right.

[00:09:53] Speaker 03:
So what, I guess what's wrong with what I just said there.

[00:09:56] Speaker 03:
And then, you know, necessarily the limitation isn't saying anything else about what else forms the inner chamber in, you know, in combination with said strip here.

[00:10:11] Speaker 01:
So the chamber is formed at least in part, or sorry, the chamber is formed in part.

[00:10:18] Speaker 03:
Well, it says here the strip.

[00:10:21] Speaker 03:
Right?

[00:10:21] Speaker 03:
The fabric strip in part forms the inner chamber.

[00:10:28] Speaker 03:
Right.

[00:10:28] Speaker 03:
Well, forms in part the chamber.

[00:10:31] Speaker 03:
So OK, we know that this particular fabric strip is in combination with something else forming the inner chamber.

[00:10:42] Speaker 01:
The characteristics of the strip are that it forms part of the inner chamber and is composed of an optical grade fabric, but only forms in part, which leaves you with something else that needs to form the rest of the chamber.

[00:10:59] Speaker 01:
Yep.

[00:10:59] Speaker 01:
And so given the embodiment in the specification, the purpose of the invention being cost saving, the most natural read of that phrase is that the one strip, the inner chamber is formed by a strip of optical-grade fabric, potentially more than one strip of optical-grade fabric, but it is not in whole formed by optical-grade fabric.

[00:11:26] Speaker 01:
To the extent there's any ambiguity here, we would look to the specification, we would look to the purpose of the limitation.

[00:11:34] Speaker 01:
And those things both point not to forming the entire inner chamber out of optical-grade fabric.

[00:11:41] Speaker 01:
There's clearly a preference in the specification.

[00:11:43] Speaker 01:
towards combining both and in not using unnecessary amounts of optical-grade fabric.

[00:11:51] Speaker 01:
And that would allow, I mean, you would basically then be putting on a piece of non-optical-grade fabric as an afterthought that doesn't really serve what the purpose of that limitation is.

[00:12:02] Speaker 01:
So that construction would be inconsistent with the purpose of that.

[00:12:08] Speaker 01:
I'm almost into my rebuttal time.

[00:12:10] Speaker 01:
Just briefly on NIDAC, the board said that it was silent.

[00:12:16] Speaker 01:
The board went on to cite KenaMetal and use the word envisaging and envisioning.

[00:12:21] Speaker 01:
If what the board meant to do was a straightforward, this is just what one of skill and the art would understand, why would they have written the opinion that way?

[00:12:29] Speaker 01:
been very straightforward to do that.

[00:12:31] Speaker 01:
The answer is because it is silent.

[00:12:34] Speaker 01:
It doesn't say anything about it.

[00:12:36] Speaker 01:
The evidence that they rely on from Ryan isn't interpreting that claim language.

[00:12:40] Speaker 01:
It's bringing in other material that perhaps could have been part of an obvious analysis.

[00:12:45] Speaker 01:
But there was no such argument brought forth, and there's no room to address that.

[00:12:51] Speaker 00:
Well, why is it, I mean, are we not free to say, well, there may have been some ambiguity in what the board said.

[00:12:57] Speaker 00:
It said silent.

[00:12:58] Speaker 00:
And then at another point, it talks about something in Ogawa for us to say, forget Kenamettle.

[00:13:07] Speaker 00:
We think there was enough here for our conclusion.

[00:13:10] Speaker 01:
Because you need to reverse or affirm on the grounds that the board relied upon.

[00:13:16] Speaker 01:
And because the board relied upon a Ken Amedal analysis, because their finding that it was silent is subject to substantial evidence review, then there is not any room to say we can affirm on alternative grounds and say,

[00:13:30] Speaker 01:
You know, we disagree about kind of amount, but we find that there was evidence to, under a more traditional anticipation analysis or under an, I mean, there was no obvious argument based on this anyway.

[00:13:43] Speaker 01:
So there would be no room at all for even the board to have done that.

[00:13:48] Speaker 02:
Council, as you indicated, you're into your rebuttal time.

[00:13:52] Speaker 02:
We'll give you three minutes for rebuttal.

[00:13:54] Speaker 02:
Thank you.

[00:13:55] Speaker 02:
Mr. Segrist.

[00:13:59] Speaker 04:
Your Honors, may I please record?

[00:14:02] Speaker 04:
The board did a very straightforward analysis here.

[00:14:04] Speaker 04:
It didn't misinterpret it.

[00:14:05] Speaker 03:
I'm not so sure of that.

[00:14:07] Speaker 03:
Where did this KineMetal come from?

[00:14:10] Speaker 04:
So the board cited KineMetal for the proposition that a reference is read from the perspective.

[00:14:16] Speaker 04:
Who did it come from?

[00:14:16] Speaker 03:
It didn't come from you, right?

[00:14:18] Speaker 03:
No, we didn't cite KineMetal.

[00:14:18] Speaker 03:
So that just came up on its own?

[00:14:21] Speaker 03:
Perhaps, sui sponte?

[00:14:24] Speaker 04:
Yes, Your Honor.

[00:14:24] Speaker 04:
The board is entitled to that.

[00:14:26] Speaker 03:
It just popped out of nowhere in the final written decision.

[00:14:30] Speaker 04:
The board can certainly cite cases other than what either party has heard.

[00:14:34] Speaker 03:
Sure, but I'm just trying to get a lay of the land.

[00:14:40] Speaker 03:
Nobody said Kennametal.

[00:14:41] Speaker 03:
That's correct.

[00:14:42] Speaker 03:
In the briefing and the hearing, and then all of a sudden, it just popped up out of a coffin.

[00:14:49] Speaker 03:
Kennametal.

[00:14:51] Speaker 04:
Yes, that's the case.

[00:14:52] Speaker 03:
I'm going to examine this under Kennametal.

[00:14:53] Speaker 04:
No, that's the case that the board cited for the proposition that a prior art reference, Hiragawa,

[00:14:59] Speaker 04:
is read from the perspective of a person of ordinary skill in the art.

[00:15:03] Speaker 04:
And that's all they cited it for.

[00:15:04] Speaker 00:
Wait, wait, wait.

[00:15:05] Speaker 00:
Did they use the word silent in connection with Ken and Mettle to say that the reference was silent on this limitation?

[00:15:12] Speaker 00:
I mean, they said that, right?

[00:15:13] Speaker 04:
They did.

[00:15:14] Speaker 04:
But that's not all that they said.

[00:15:15] Speaker 04:
It's on page 25 in our brief.

[00:15:17] Speaker 04:
We've got the whole quote from the board's paragraph that cites this.

[00:15:24] Speaker 04:
And what they said is that it's silent, but our analysis doesn't end there.

[00:15:29] Speaker 04:
because where a reference is silent, a reference doesn't include everything that a person of ordinary skill in the art already knows.

[00:15:38] Speaker 04:
That's assumed to be out there.

[00:15:41] Speaker 04:
A reference on chemistry doesn't have to include a full freshman text on chemistry.

[00:15:47] Speaker 04:
All of that is already assumed to be known.

[00:15:49] Speaker 04:
So the board here said,

[00:15:52] Speaker 04:
It's silent, but our analysis does not end there.

[00:15:55] Speaker 04:
That's what they cited kinamentals for, because even if it does not expressly spell out the limitations, you look at what a person of ordinary skill in the art would know or understand from it.

[00:16:05] Speaker 00:
So you could strewing silent to mean kind of ambiguous, that it doesn't directly say this, but a person skilled in the art would understand that's what it meant?

[00:16:15] Speaker 04:
Yes, I don't think ambiguous, Your Honor.

[00:16:17] Speaker 04:
I think that it's saying that you

[00:16:20] Speaker 04:
You did not have to provide assembly instructions on a stuffed animal to a person of ordinary skill in the art and design, that a person of ordinary skill in the art would already know how you make one of these figures.

[00:16:33] Speaker 04:
And so it is silent on that.

[00:16:35] Speaker 04:
It didn't expressly spell out those details.

[00:16:38] Speaker 04:
But a person of ordinary skill in the art brings that knowledge with them when they read Ogawa.

[00:16:43] Speaker 03:
Yeah, but throughout the reasoning and this board opinion,

[00:16:50] Speaker 03:
the board keeps using the term envisage.

[00:16:53] Speaker 03:
And that's a word that comes directly out of Kennametal.

[00:16:57] Speaker 03:
And it's a code term that tells me that the board was looking at this anticipation analysis through the lens of Kennametal and through the idea of even though the reference doesn't expressly say something, a skilled artisan would envisage this silent limitation

[00:17:19] Speaker 03:
in the content of this reference.

[00:17:22] Speaker 03:
And that is not the way that the opinion, our court's opinion in Kennametal, was using the term envisage.

[00:17:32] Speaker 03:
And so that's the concern I have here.

[00:17:35] Speaker 03:
Now, I understand your theory, your argument, which is, well,

[00:17:41] Speaker 03:
Yes, it referred to Kennametal, but don't worry about that and don't look at that.

[00:17:45] Speaker 03:
And it was just really just a casual drive-by reference to Kennametal.

[00:17:50] Speaker 03:
And the reasoning here can stand on its own if you just rip out all references to Kennametal and the envisaged track.

[00:18:00] Speaker 03:
I understand that, but.

[00:18:01] Speaker 04:
I don't think that's your argument, Your Honor, but please continue.

[00:18:04] Speaker 03:
OK.

[00:18:04] Speaker 03:
Well, I mean, to me, that's the only way

[00:18:08] Speaker 03:
that we could accept the reasoning here is if you rip out the reference of the Kenna Medal, because the Kenna Medal discussion here is wrongheaded and a misapplication and a misunderstanding of our Kenna Medal case.

[00:18:25] Speaker 03:
So therefore, we're left with, OK, is there some way to construe what the board did here, independent of any reliance on Kenna Medal and the term envisage?

[00:18:38] Speaker 04:
So, Your Honor, we're not saying you need to ignore the word envisage or kinemetal.

[00:18:42] Speaker 04:
Yeah, I'm saying you do.

[00:18:44] Speaker 04:
Kinemetal did not come up with the word envisage.

[00:18:47] Speaker 04:
That's not where that comes from.

[00:18:48] Speaker 04:
The word envisage comes from in-rate petering.

[00:18:51] Speaker 04:
60 years ago, the Court of Customs and Patent Appeals used that word to describe how, yes, a species can be anticipated by a genus if merely saying that genus

[00:19:03] Speaker 04:
a person of ordinary steel would immediately envisage all of the members of the species.

[00:19:07] Speaker 02:
But are there other envisage decisions different from petering?

[00:19:14] Speaker 04:
There are.

[00:19:14] Speaker 04:
There are others different from petering.

[00:19:16] Speaker 04:
Kinemetal is a little different from petering.

[00:19:18] Speaker 04:
And NEDEC is an example of a case where envisage was misused.

[00:19:22] Speaker 04:
Because in NEDEC, the reference only disclosed the waves in a stationary frame of reference.

[00:19:31] Speaker 04:
And we're very specific about that.

[00:19:33] Speaker 04:
And the board, in the NEDA case, it said, well, a person of ordinary skill in the art would envisage the rotating frame of reference in the claims.

[00:19:43] Speaker 04:
Well, that you can't do.

[00:19:44] Speaker 04:
You can't look at something that is expressly not in the disclosure that the disclosure contradicts and say, well, I would envisage something else.

[00:19:52] Speaker 04:
That's a one-reference-obviousness analysis.

[00:19:54] Speaker 04:
But that's not what the board did here.

[00:19:56] Speaker 04:
The board put it used envisage in its analysis, and it used it interchangeably with the word understand.

[00:20:02] Speaker 04:
They were applying a conventional anticipation analysis where they look at what a person of ordinary skill in the art would understand or infer the reference discloses.

[00:20:12] Speaker 04:
They were looking at Ogawa to see what it discloses.

[00:20:14] Speaker 03:
If the court is concerned about this invocation, the sua sponte invocation of kenna metal by the board, you could still pivot to an affirm through the claim construction.

[00:20:27] Speaker 04:
Oh, absolutely.

[00:20:28] Speaker 04:
I mean, those are independent grounds.

[00:20:30] Speaker 04:
in our view, the board's analysis was correct.

[00:20:33] Speaker 04:
They could have cited any other case for this proposition.

[00:20:35] Speaker 00:
Why don't you pivot to the claim construction?

[00:20:39] Speaker 00:
Sure.

[00:20:40] Speaker 04:
And on the claim construction, I think page seven on our brief has copies of the independent of the dependent claim.

[00:20:49] Speaker 04:
And to us, the claim instruction is straightforward.

[00:20:51] Speaker 04:
The independent claim, which was canceled in the reexamination, says there's a plurality of strips of fabric.

[00:20:58] Speaker 04:
So at least two, maybe three, maybe four, maybe five, maybe something else.

[00:21:02] Speaker 04:
But it's an open-ended claim.

[00:21:04] Speaker 04:
It's a comprising claim.

[00:21:05] Speaker 04:
So this figure can be made of something other than these plurality of strips of fabric, as long as it's made of those.

[00:21:11] Speaker 04:
And then we've highlighted this in yellow on page 7.

[00:21:15] Speaker 04:
It says one of those strips of fabric

[00:21:18] Speaker 04:
Forms impart the inner chambers.

[00:21:20] Speaker 04:
That's strip A. It's got to form and impart the inner chamber.

[00:21:23] Speaker 04:
Now, the word impart is just set off by commas there.

[00:21:28] Speaker 04:
Indefiniteness is not something that the board can consider.

[00:21:30] Speaker 04:
It's not something we argue below.

[00:21:32] Speaker 04:
But there's lots of different ways that can apply.

[00:21:33] Speaker 04:
But it only applies here to that one strip of fabric that's called out, the recited strip, strip A. That has to form and impart the inner chamber.

[00:21:44] Speaker 04:
And it has to be optical braids.

[00:21:46] Speaker 04:
The rest of the inner chamber can be made of anything, any of those other strips of fabric, any other material, and it's still within the scope of the claim because it uses this comprising language.

[00:21:55] Speaker 04:
The rest of the inner chamber could be that optical grade strip of fabric tied onto a plastic handle or a piece of wood or anything, glass.

[00:22:04] Speaker 04:
So then that claim got canceled in the re-examination because there was a reference which showed the entire figure made out of this optical grade.

[00:22:12] Speaker 04:
And so this language,

[00:22:16] Speaker 04:
that says formed in part of optical-grade fabric, the board in that reexamination 20 years ago held that, well, that would read on this figure that's made entirely out of optical-grade fabric, which clearly shows that in part doesn't mean that they can be made entirely out of optical-grade fabric.

[00:22:35] Speaker 04:
And their specification also says the figure can be made entirely out of optical-grade fabric.

[00:22:40] Speaker 04:
What they added in the reexamination in these claims 15 and 16 is just that

[00:22:44] Speaker 04:
Another one of these plurality of strips, this is strip B, the second recited strip.

[00:22:49] Speaker 04:
That has to be non-optical grade.

[00:22:51] Speaker 04:
But unlike the optical grade, they didn't say where it has to be on the figure.

[00:22:54] Speaker 04:
It can be anywhere.

[00:22:55] Speaker 04:
It can be used to form part of the inner chamber.

[00:22:59] Speaker 04:
It can be used for anything else.

[00:23:00] Speaker 04:
Their example figure is a little mouse.

[00:23:04] Speaker 04:
It could be the ears on the mouse.

[00:23:05] Speaker 04:
It could be the tail on the mouse.

[00:23:06] Speaker 04:
It could be the appendages.

[00:23:08] Speaker 04:
It doesn't have to form the inner chamber because that's not what the claim says.

[00:23:12] Speaker 04:
And even though there's a preferred embodiment in which it does form part of the entertainment, sure, it can do that.

[00:23:16] Speaker 04:
But the claim doesn't require it.

[00:23:18] Speaker 04:
So the claim reads on Ogawa, even if you think that for some reason, Ogawa has this hidden structure that their expert, Dr. Adner, says it has this secret wall in between the white part and the grip body.

[00:23:35] Speaker 04:
But even under that,

[00:23:37] Speaker 04:
this claim would read on agawa and it is still invalid.

[00:23:40] Speaker 04:
So yes, to answer your question, you can definitely affirm on the basis of under correct claim construction.

[00:23:47] Speaker 04:
The claim does not require that the recited non-optical strip of fabric form any part of the inner chamber.

[00:23:53] Speaker 04:
That's just not part of the claim.

[00:23:57] Speaker 03:
Is there any copending litigation here?

[00:23:59] Speaker 04:
There is.

[00:24:00] Speaker 04:
There is a lawsuit filed at the Northern District of Illinois, which was stayed pending the IPR, and I think the state is still in place.

[00:24:07] Speaker 00:
Same claims this year or a variation of these claims?

[00:24:10] Speaker 04:
No, it's the same re-examination certificate patent.

[00:24:14] Speaker 04:
So claims 15 and 16 are the only claims that are out there.

[00:24:17] Speaker 04:
That suit was filed after the patent expired, or the IPR was filed after that.

[00:24:22] Speaker 02:
To finish the question, this is an expired patent, right?

[00:24:25] Speaker 04:
It is, Your Honor.

[00:24:27] Speaker 03:
If this claim construction issue is so straightforward, why didn't the board dodge it?

[00:24:34] Speaker 04:
You know, I don't know that the board was dodging it.

[00:24:37] Speaker 04:
I think that from the board's perspective, the factual information was just so persuasive.

[00:24:43] Speaker 04:
It was absolutely clear to the board that a person of ordinary skill in the art would understand how you make one of these figures.

[00:24:51] Speaker 04:
And there was a lot of evidence in about that, that El Gavo referenced itself.

[00:24:56] Speaker 04:
is evidence of that.

[00:24:57] Speaker 04:
Ms.

[00:24:57] Speaker 04:
Ryan's testimony was a lot of evidence about that.

[00:25:00] Speaker 04:
And she has 26 years experience in design of these types of figures, and she's taught courses on it.

[00:25:07] Speaker 04:
Even Dr. Adner's own testimony in his deposition confirms that this is how a person of ordinary skill would understand these references.

[00:25:26] Speaker 04:
testimony is on page appendix 2378.

[00:25:29] Speaker 04:
I think it's telling because the question he was actually asked was, is it fair to say though that you don't consider yourself an expert in plush toy design?

[00:25:42] Speaker 04:
That was the question that was asked because Dr. Agner is really an expert in textile engineering.

[00:25:48] Speaker 04:
Before the board, there was a lot of emphasis on whether the cloth in a valve on the white part was optical gray.

[00:25:54] Speaker 04:
That's not an issue on appeal, but that was one of the issues before the board that they were addressing.

[00:25:59] Speaker 04:
And so the question was asked to Dr. Adner, but you may be an expert in textile engineering, but you're not an expert in plush toy design, are you?

[00:26:05] Speaker 04:
Well, his answer to that is illuminating, because he says that he has some familiarity with this.

[00:26:13] Speaker 04:
Probably not really his area of expertise, but he goes on to describe how you make these things.

[00:26:17] Speaker 04:
And his description

[00:26:18] Speaker 04:
is exactly what Ms.

[00:26:19] Speaker 04:
Ryan had said, and exactly what the board describes.

[00:26:22] Speaker 04:
You take the two pieces of fabric, you sew them together first, and then you fill them with the material.

[00:26:29] Speaker 04:
And so when Ogawa says something is sewn and it's filled, it's not describing manufacturing stuff.

[00:26:34] Speaker 04:
It's just describing the figure that was depicted there.

[00:26:37] Speaker 04:
And in that figure, you've got this white part on the bottom, got the body grip on the top,

[00:26:42] Speaker 03:
And when you look and you start- There's a portion of vocabo though that talks about something like a grip body and then a white part.

[00:26:50] Speaker 03:
Yes.

[00:26:51] Speaker 03:
And then there's some language in there that could be read as saying you fill up the grip body and then you fill up the white part.

[00:27:01] Speaker 03:
And that makes it almost sound like, well,

[00:27:04] Speaker 03:
maybe these are two different little containers that you take care of independently, and then after you finish them off, you stitch them together.

[00:27:14] Speaker 03:
That's really the debate, not what one of ordinary skill in the art would do to manufacture a stuffed toy.

[00:27:21] Speaker 03:
That's outside

[00:27:25] Speaker 03:
what is really going on and trying to confront the language of Ogawa and trying to discern what is Ogawa really trying to say when it talks about these two independent things called a grip body and a wipe apart.

[00:27:41] Speaker 04:
So Your Honor, Ogawa begins on appendix page 2136.

[00:27:44] Speaker 04:
And that's not really a different question because when you look at Ogawa and you try to figure out what it's trying to say,

[00:27:51] Speaker 04:
you have to do that from the perspective of a person of ordinary skill in the art.

[00:27:55] Speaker 03:
But you've got to wrestle with the language.

[00:27:57] Speaker 03:
You've got to wrestle with the text.

[00:27:59] Speaker 03:
And you've got to say, OK, even though the text seems to be talking about two different things here, let me tell you why.

[00:28:06] Speaker 03:
It's really just two components of one thing that are unfinished until they are stitched together.

[00:28:14] Speaker 04:
OK.

[00:28:16] Speaker 04:
When you look at it with the understanding of a person of ordinary skill in the art, you have to look at the language that was used and what does it mean.

[00:28:22] Speaker 04:
Now, it does not say, stitch it together.

[00:28:25] Speaker 04:
It does not say, fill it up.

[00:28:27] Speaker 04:
It uses the word, you know, it is filled.

[00:28:30] Speaker 04:
It uses the word, it is stitched together.

[00:28:33] Speaker 04:
You know, that's how it was described.

[00:28:35] Speaker 04:
And the reason it's doing that is it never says steps.

[00:28:39] Speaker 04:
It never says an assembly process.

[00:28:42] Speaker 04:
is describing the structure of the figure, which includes the stitching, includes the filling, and both of the top half and the bottom half are filled in the thing that's depicted.

[00:28:51] Speaker 04:
I see I'm out of my time.

[00:28:53] Speaker 04:
Thank you.

[00:28:55] Speaker 02:
Thank you, counsel.

[00:28:56] Speaker 02:
Mr. Toppick has three minutes for the bottom.

[00:29:01] Speaker 01:
Thank you.

[00:29:01] Speaker 01:
I was hoping to just address some of the claim construction points that counsel made.

[00:29:06] Speaker 01:
First was reliance on the comprising nature of the claim.

[00:29:10] Speaker 01:
Is this court held in spectrum?

[00:29:13] Speaker 01:
sterile, comprising is not a weasel word in which to abrogate claim limitations.

[00:29:18] Speaker 01:
And essentially relying on comprising to say, in part can mean in whole, is doing exactly that.

[00:29:24] Speaker 01:
It's abrogating the meaning of impart.

[00:29:30] Speaker 01:
The next point I wanted to make was about the dependent claim slash independent claim and what happened in the reading exam.

[00:29:42] Speaker 01:
It's $1297.

[00:29:44] Speaker 01:
The Patent Owner Explained New Independent Claim 15 emphasizes that the fabric material other than the optical grade material is not optical grade.

[00:29:54] Speaker 01:
So it would not be unheard of for an applicant or a patent owner in a re-exam to make more clear what was believed to be already contained in an independent claim.

[00:30:06] Speaker 01:
It's simply providing more clarity and certainty so that the examiner feels more comfortable

[00:30:11] Speaker 01:
going forward with allowance.

[00:30:13] Speaker 01:
And so by merely emphasizing that the fabric other than optical-grade material is not optical-grade, it doesn't distinguish the dependent claim from what was originally the independent claim.

[00:30:25] Speaker 01:
And of course, the presumption about differences between dependent and independent claims can be overcome if the circumstances suggest a different explanation or if the evidence favoring a different claim construction is strong.

[00:30:37] Speaker 01:
That's libel farsham versus medrad.

[00:30:40] Speaker 01:
And that's what we have here.

[00:30:42] Speaker 01:
The purpose of this limitation was to reduce costs.

[00:30:46] Speaker 01:
The interpretation that would allow you to just stick a piece of non-optical grade fabric anywhere is not consistent with any embodiments.

[00:30:53] Speaker 01:
It's not consistent with what the purpose was.

[00:30:58] Speaker 01:
And I did not hear counsel try to defend the new construction for, or even address the new construction for impart, which is not that there is two optical grade fabrics comprising the chamber plus something else somewhere else.

[00:31:12] Speaker 01:
It's that impart does have meaning and that it reads instead on the strip and not on the chamber.

[00:31:19] Speaker 01:
And there's no evidence that Ogawa teaches that.

[00:31:21] Speaker 03:
So the appellee doesn't need that argument to prevail on a claim construction bill, correct?

[00:31:28] Speaker 01:
Well, that's the construction that they're putting forward to explain impart.

[00:31:33] Speaker 01:
I mean, they otherwise only address the sort of the dependent versus independent in the fact that the limitation on non-optical grade doesn't specify where it has to go, but they still have to deal with impart.

[00:31:45] Speaker 03:
But just so I understand it, their position all along has been the inner chamber is made up of more than one strip.

[00:31:53] Speaker 03:
One strip has to be optical grade fabric, but the

[00:31:58] Speaker 03:
Other strip or strips can be made of anything.

[00:32:01] Speaker 01:
That is not how I understand their claim construction on appeal to be.

[00:32:05] Speaker 01:
Their claim construction on appeal is the section 3B of their brief.

[00:32:10] Speaker 03:
Well, if that's how we understand the claim, then we still are in the same place with an affirm.

[00:32:19] Speaker 01:
if you were to revert to their original construction that there could be two strips making up the fabric, both optical grade, then we still have our arguments that if it's formed in whole by strips of optical grade fabric, it's not formed in part by optical grade fabric.

[00:32:39] Speaker 01:
That argument is still there.

[00:32:40] Speaker 03:
That argument, I'm saying, if we were to understand the claim in that way, that would result in an affirmance.

[00:32:48] Speaker 01:
If you found it, in part, could be satisfied by multiple strips of optical-grade fabric, then you would have found it.

[00:32:56] Speaker 01:
Correct.

[00:32:58] Speaker 02:
Thank you, counsel.

[00:32:58] Speaker 02:
Thank you.

[00:32:59] Speaker 02:
The case is submitted.