Trials@uspto.gov
` 571-272-7822
`
`
`
`
`
`Paper No. 49
` Entered: January 7, 2015
`
`
`
` 1 RECORD OF ORAL HEARING
`
` 2 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 3 - - - - - -
`
` 4 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 5 - - - - - -
`
` 6
`
` 7 TOYOTA MOTOR CORPORATION,
`
` 8 Petitioner,
`
` 9 vs.
`
` 10 AMERICAN VEHICULAR SCIENCES LLC,
`
` 11 Patent Owner.
`
` 12 - - - - - -
`
` 13 Case No. IPR2013-00419 (Patent No. 6,772,057 B2)
`
` 14 Case No. IPR2013-00424 (Patent No. 5,845,000)
`
` 15
`
` 16 Technology Center 3600
`
` 17 - - - - - -
`
` 18 Oral Hearing Held: August 18, 2014
`
` 19
`
` 20 Before: JAMESON LEE, LYNNE PETTIGREW, TREVOR
`
` 21 JEFFERSON, Administrative Patent Judges.
`
` 22 The above-entitled matter came on for hearing on
`
` 23 Monday, August 18, 2014 at the U.S. Patent and Trademark
`
` 24 Office, 600 Dulany Street, Alexandria, Virginia at 1:00 p.m.,
`
` 25 in Hearing Room B.
`
`
`
` 1
`
`

`

` Trials@uspto.gov
` 571-272-7822
`
`
` 1 APPEARANCES:
`
`
`
`
`Paper No. 49
` Entered: January 7, 2015
`
`
`
` 2 ON BEHALF OF THE PETITIONER:
`
` 3 MATT BERKOWITZ, ESQ.
`
` 4 GEORGE E. BADENOCH, ESQ.
`
` 5 VINCENT J. RUBINO, ESQ.
`
` 6 Kenyon & Kenyon
`
` 7 One Broadway
`
` 8 New York, New York 10004-1007
`
` 9 212-425-7200
`
` 10 mberkowitz@kenyon.com
`
` 11
`
` 12 ON BEHALF OF THE PATENT OWNER:
`
` 13 CHRISTOPHER M. SCHARFF, ESQ.
`
` 14 THOMAS J. WIMBISCUS, ESQ.
`
` 15 SCOTT P. McBRIDE, ESQ.
`
` 16 McAndrews Held & Malloy Ltd.
`
` 17 500 West Madison Street, 34th Floor
`
` 18 Chicago, Illinois 60661
`
` 19 312-775-8039
`
` 20 cscharff@mcandrews.ip.com
`
` 21
`
` 22
`
` 23
`
` 24
`
` 25
`
`
`
` 2
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 P R O C E E D I N G S
`
` 2 (1:00 p.m.)
`
` 3 JUDGE LEE: Good afternoon. Please have a seat.
`
` 4 This is the consolidated oral argument for two inter partes
`
` 5 reviews that would be IPR 2013-00419 and IPR 2013-00424.
`
` 6 Each party will have a total argument time of 90
`
` 7 minutes. We will begin with the Petitioner, followed by the
`
` 8 Patent Owner. And whatever time the Petitioner does not use
`
` 9 in its first time up, you may use for your rebuttal.
`
` 10 Now can we have Petitioner's counsel introduce
`
` 11 themselves.
`
` 12 MR. BERKOWITZ: Of course, Your Honor, Matt
`
` 13 Berkowitz from Kenyon & Kenyon on behalf of Petitioner. And
`
` 14 I have a few of my colleagues with me here, Vincent Rubino,
`
` 15 also from Kenyon & Kenyon, my partner George Badenoch. And
`
` 16 then also from Petitioner, Toyota Motor Corporation, Masanobu
`
` 17 Yamashita and Takehiko Nakajima.
`
` 18 And, Your Honor, after introductions if we could
`
` 19 just have a minute to finish setting up the projector.
`
` 20 JUDGE LEE: Certainly. Thank you. Welcome to the
`
` 21 Board. And we will have counsel for Patent Owner introduce
`
` 22 your party, please.
`
` 23 MR. SCHARFF: Yes, Your Honor, Christopher Scharff
`
` 24 on behalf of the Patent Owner, Advanced Vehicular Sciences.
`
` 25 And with me are my partners, Tom Wimbiscus and Scott McBride.
`
`
`
` 3
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 JUDGE LEE: Thank you, and welcome the Board.
`
` 2 Let's hold for a couple minutes while the lawyers finish
`
` 3 setting up.
`
` 4 MR. BERKOWITZ: Thank you.
`
` 5 (Pause in the proceedings.)
`
` 6 MR. BERKOWITZ: So if the Board is ready, I think
`
` 7 we're set up.
`
` 8 JUDGE LEE: All right. Let's go on the record,
`
` 9 please. You may begin, Mr. Berkowitz.
`
` 10 MR. BERKOWITZ: May it please the Board, again, my
`
` 11 name is Matt Berkowitz on behalf of Petitioner here. We are
`
` 12 here on two IPRs, IPR 2013-00419 and 00424. There are some
`
` 13 overlapping issues, so my intention is to address both of
`
` 14 them at the same time with a single slide presentation.
`
` 15 Slide 2, please.
`
` 16 On the slide here, Your Honor, is a list of the
`
` 17 grounds of review, as well as the claims that are at issue
`
` 18 and being challenged. I recognize that there are a lot of
`
` 19 claims here and a lot of grounds of review.
`
` 20 However, I think that it boils down to really just
`
` 21 three issues, with one being primary and overlapping, both of
`
` 22 the IPR proceedings. The other two issues are -- one is
`
` 23 particular to the 419 IPR and one is particular to the 424.
`
` 24 The first primary issue, Your Honor, Your Honors,
`
` 25 concerns the Lemelson reference, which is at issue in many of
`
`
`
` 4
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 these grounds. And one particular claim phrase that is found
`
` 2 in some form or another in many of the, in many of the
`
` 3 challenged claims. It is a claim phrase I will be referring
`
` 4 to as the "generated from" claim phrase. And I will get to
`
` 5 that in a minute in specifics.
`
` 6 But that issue -- I'm sorry, there are four
`
` 7 independent claims in the 419 IPR, 1, 30, 40, and 56. And
`
` 8 that, that issue with respect to Lemelson and the "generated
`
` 9 from" phrase is dispositive with respect to all but claim 30
`
` 10 and its dependent claims, 31 through 34, 37 through 39, as
`
` 11 well as claim 62, which depends from 56.
`
` 12 In the 424 IPR, the '000 patent, the same phrase
`
` 13 regarding the Lemelson and the "generated from" phrase is
`
` 14 dispositive with respect to grounds of review 1 and 2. That
`
` 15 is independent claim 10, dependent claims 11 and 19, and
`
` 16 independent claim 23.
`
` 17 The second issue that I will discuss concerns a
`
` 18 limitation found in -- this is particular to the 419 IPR. It
`
` 19 concerns a limitation that's found in independent claim 30
`
` 20 and concerns the location of a receiver, and particularly the
`
` 21 placement of a receiver on a rear-view mirror in a vehicle.
`
` 22 These are claims about exterior monitoring outside a vehicle
`
` 23 and this is, this is particular to the placement of that
`
` 24 receiver.
`
` 25 So there is one issue that concerns -- that
`
`
`
` 5
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 relates to those claims, and that concerns the Borcherts
`
` 2 reference and whether it would have been obvious to place a
`
` 3 receiver on a rear-view mirror in view of the Borcherts
`
` 4 reference. So that relates to claim -- independent claim 30,
`
` 5 as well as dependent claims 31 through 34 and 37 through 39,
`
` 6 as well as 62, which also contains that limitation.
`
` 7 The final issue is particular to the 424 IPR and
`
` 8 concerns ground of review 3. That's independent claims 16,
`
` 9 and dependent claims 17 and 20. And independent claim 16 is
`
` 10 what I will refer to as an auto headlight dimming claim.
`
` 11 And so the issue there concerns whether it would
`
` 12 have been obvious in view of Yanagawa, which is an auto
`
` 13 headlight dimming reference to put a neural network in such
`
` 14 -- in the Yanagawa reference in view of the Lemelson patent.
`
` 15 Slide 3, please.
`
` 16 So this is the claim language that I was
`
` 17 discussing, the "generated from" claim language. And what I
`
` 18 am going to do is start with the primary issue here that
`
` 19 overlaps both of the IPRs.
`
` 20 On the left of the slide I have claim 1 of the
`
` 21 '057 patent. And what I have highlighted there is some of
`
` 22 the key claim language that we will be discussing. "Pattern
`
` 23 recognition algorithm generated from data of possible
`
` 24 exterior objects and patterns of received waves from the
`
` 25 possible exterior objects."
`
`
`
` 6
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 I believe that that language appears in slightly
`
` 2 different forms throughout the '057 patent, but for the
`
` 3 purposes of the parties' dispute, I think it is
`
` 4 representative have what we're talking about.
`
` 5 Same with claim 10 of the '000 patent, which I
`
` 6 have on the right. That is also an exterior monitoring claim
`
` 7 for outside a vehicle. And the language I have highlighted
`
` 8 is "pattern recognition algorithm generated from data of
`
` 9 possible exterior objects and patterns of received
`
` 10 electromagnetic illumination from the possible exterior
`
` 11 objects."
`
` 12 So that is also, I believe, representative. And
`
` 13 for purposes of the parties' dispute, the issue is the same
`
` 14 with respect to claim 10 and 23 as it is -- as it is with the
`
` 15 '057 patent.
`
` 16 Now, AVS contends that the -- this language, this
`
` 17 "generated from" language, is limited to training, training
`
` 18 of an algorithm using a certain type of data, not just any
`
` 19 data, but AVS contends that it is limited to training pattern
`
` 20 recognition means with actual data, real data, for example,
`
` 21 data obtained from imaging real objects outside of a vehicle
`
` 22 using a camera with the light; as opposed to simulated data.
`
` 23 So, for example, computer simulations or what I will refer to
`
` 24 as partial data.
`
` 25 And partial data, we understand AVS's contention
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`
`
` 7
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 to be, something like a license plate. So, for example, once
`
` 2 again, these are claims directed to monitoring environment
`
` 3 outside of a vehicle and identifying different objects or
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` 4 sources of illumination. And it would be training the
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` 5 processor using something like a license plate, license plate
`
` 6 information or tail light information in order to identif y
`
` 7 the object as a car.
`
` 8 So something less than the whole. This is --
`
` 9 JUDGE LEE: Mr. Berkowitz, in what way does -- do
`
` 10 data train an algorithm?
`
` 11 MR. BERKOWITZ: Data can be used to, for example,
`
` 12 what we're dealing with primarily here, at least in the prior
`
` 13 art, would be like a neural network. So a neural network is
`
` 14 a system that can mimic the human brain, in a sense, and
`
` 15 learn to take actions depending upon or similar to what a
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` 16 human might take by feeding inputs and, and correlating those
`
` 17 to particular outputs.
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` 18 So, for example, if you are driving a car down the
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` 19 road and the camera -- and you see a deer up ahead, you might
`
` 20 steer the car away from the deer. The algorithm, the neural
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` 21 network, can learn to mimic those types of actions by feeding
`
` 22 it with certain information, certain data and then
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` 23 correlating it to the output, steering the car away from the
`
` 24 deer.
`
` 25 So that's the type of -- that's the type of
`
`
`
` 8
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 situation that we're talking about.
`
` 2 JUDGE LEE: Then what difference does it make
`
` 3 whether the data is obtained from actual situations versus
`
` 4 assimilated situations as far as the algorithm goes, it
`
` 5 doesn't know whether the input is coming from real-life
`
` 6 situation or simulated, I mean, it is going to get trained
`
` 7 anyway.
`
` 8 MR. BERKOWITZ: We agree, Your Honor. I mean,
`
` 9 this is -- the data is a representation of some type of
`
` 10 information that's going to be used to train the neural
`
` 11 network regardless of whether -- where it originated from.
`
` 12 It is going to be translated into zeros and ones regardless
`
` 13 of how -- of where it originated from. We agree with that
`
` 14 position.
`
` 15 JUDGE PETTIGREW: Mr. Berkowitz, this sounds like
`
` 16 a claim construction argument. Is that correct?
`
` 17 MR. BERKOWITZ: We didn't believe it was a claim
`
` 18 construction argument when we filed the petition. It has
`
` 19 since potentially turned into one. And so the issue, yeah,
`
` 20 the issue that we have is that we don't see -- or one of the
`
` 21 issues, we don't see anything in that claim phrase that
`
` 22 recites the word "actual data" or "real data."
`
` 23 The plain meaning of, for example, "data of
`
` 24 possible exterior objects" is just like a photograph of a
`
` 25 car. It is something that's maybe representative of a
`
`
`
` 9
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 possible exterior object but not necessarily a possible
`
` 2 object itself. Same with "patterns of received waves." It
`
` 3 is still a pattern in some sort of data or graph or something
`
` 4 like that. It is some sort of transformation of information
`
` 5 or representation of it.
`
` 6 So it -- these are all -- that's what we think the
`
` 7 plain meaning of "data of" or "patterns of" means. Nowhere
`
` 8 in there does it say training using received waves from
`
` 9 actual cars or actual received waves. It doesn't say
`
` 10 anything like that.
`
` 11 So we think that AVS has sort of deviated from the
`
` 12 plain and ordinary meaning here by taking this as something
`
` 13 that's limited to just actual data, real data.
`
` 14 So there are really, I think, three disputes that
`
` 15 we have here with respect to this, with respect to this claim
`
` 16 phrase. And I think Your Honor just hit upon one of them.
`
` 17 The first one I was going to address is that this
`
` 18 is not actually a limitation on the claim at all. We set
`
` 19 this out in our briefing that these are, with the exception
`
` 20 of independent claim 23 in the '000 patent, these are all
`
` 21 system claims.
`
` 22 And what that language specifies is a process, a
`
` 23 step by which the algorithm is created. It is a
`
` 24 product-by-process claim. And it is well established now in
`
` 25 Federal Circuit jurisprudence that for purposes of
`
`
`
` 10
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 patentability, infringement issues aside, of course, for
`
` 2 purposes of patentability, a process step is not a limitation
`
` 3 on patent ability. So that's the first issue with respect to
`
` 4 this claim phrase.
`
` 5 The second one as Judge Pettigrew hit upon is,
`
` 6 even if it is a limitation, is it as narrow as AVS says it
`
` 7 is? And we would say, no, that the broadest reasonable
`
` 8 construction of this claim phrase is that it would include
`
` 9 any type of data. It is zeros and ones. It is information
`
` 10 regardless of where it originated from.
`
` 11 And, third, even if it is a claim limitation, and
`
` 12 even if it is as narrow as AVS says it is, Lemelson discloses
`
` 13 it. And I will get into that. That's -- Lemelson is the
`
` 14 primary reference that we're relying on with respect to
`
` 15 anticipation in the '057 patent IPR and the '000 patent IPR.
`
` 16 So the first issue, Your Honor, is that this is
`
` 17 not a limitation at all. Like I said, it is well
`
` 18 established, the SmithKline Beecham case that we cite in our
`
` 19 briefing, for example, is one of the leading cases, the 2006
`
` 20 Federal Circuit case that for purposes of patentability, a
`
` 21 process step, within a product claim, is not a limitation.
`
` 22 And the Federal Circuit has applied this to
`
` 23 software before. There is the Warmerdam case, which we cite
`
` 24 in our briefing as well. That case involved actually
`
` 25 something very similar to what we have here. It was a robot
`
`
`
` 11
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 collision avoidance-type invention. And in that -- excuse me
`
` 2 -- in that invention, it was about a robot that would create
`
` 3 artificial bubbles around an exterior object that it
`
` 4 detected.
`
` 5 So it would see an exterior object and create
`
` 6 bubbles around them in order to create a buffer zone, in
`
` 7 order to avoid hitting that, in order to avoid hitting that
`
` 8 exterior object. The claims, the claims in that case, the
`
` 9 first four were method claims and were directed to a method
`
` 10 for generating a data structure which represents the shape of
`
` 11 physical objects using a bubble hierarchy. So they are
`
` 12 method claims.
`
` 13 Claim 6, however, was a data structure generated
`
` 14 by the method of any of claims 1 through 4. So almost
`
` 15 something exactly what we have here. It was "generated by"
`
` 16 in that case, here is a "generated from."
`
` 17 And there was actually a 112 rejection that had
`
` 18 been made in the Patent Office. And the Fed Circuit -- and
`
` 19 on the grounds that this was not a classic product-by-process
`
` 20 claim, the Fed Circuit rejects that and says, no, this is a
`
` 21 product-by-process claim.
`
` 22 A data structure generated by the method of any
`
` 23 one -- any of claims 1 through 4, which were methods for
`
` 24 creating these bubble hierarchies.
`
` 25 JUDGE LEE: Is there evidence in the record that
`
`
`
` 12
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 the algorithm would be different depending on whether it is
`
` 2 generated one way versus the other?
`
` 3 MR. BERKOWITZ: There is no evidence --
`
` 4 JUDGE LEE: In terms of accuracy or ease of use or
`
` 5 something like that?
`
` 6 MR. BERKOWITZ: There is no evidence in the
`
` 7 record, Your Honor. And that's actually patentee's burden,
`
` 8 even in inter partes proceedings like this.
`
` 9 And they have put forth no such evidence that
`
` 10 anything is different about it. In fact, their response
`
` 11 actually implies that everything, all -- any kind of data
`
` 12 would work just fine, regardless of whether it is real,
`
` 13 simulated, partial, whatever it might be.
`
` 14 So it is actually the total opposite, Your Honor.
`
` 15 We recognize that that could be an exception in the
`
` 16 product-by-process realm, if that -- the process step imparts
`
` 17 some sort of different structure, changes the algorithm in
`
` 18 some way, recognize that could be an exception, but there has
`
` 19 been no argument to that effect. Not only no argument, there
`
` 20 is certainly nothing in the specification to that effect.
`
` 21 So that's really -- that's really the first issue.
`
` 22 JUDGE PETTIGREW: So your argument is that
`
` 23 everything from "generated from" through "possible exterior
`
` 24 objects" is not a limitation, not to be read into the claim
`
` 25 at all?
`
`
`
` 13
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 MR. BERKOWITZ: For purposes of the patentability,
`
` 2 yeah, this is -- this is, we think, established -- and I can
`
` 3 quote -- this is the SmithKline Beecham case, the Federal
`
` 4 Circuit reaffirmed the long-standing role -- and this is a
`
` 5 quote from the case -- "it has long been established that one
`
` 6 cannot avoid anticipation by an earlier product disclosure by
`
` 7 claiming the same product more narrowly; that is, by claiming
`
` 8 the product as produced by a particular process."
`
` 9 And that's the establishment. That goes back
`
` 10 years to In re Thorpe and cases before that.
`
` 11 JUDGE PETTIGREW: Don't you have to have an
`
` 12 algorithm trained in this way -- the training has to have
`
` 13 something to do with the possible exterior objects in order
`
` 14 to work?
`
` 15 MR. BERKOWITZ: The training, the training is one
`
` 16 way to create an algorithm, whether it is programming or
`
` 17 training. And it is actually sort of a funny distinction in
`
` 18 the law where for purposes of infringement, of course, that
`
` 19 it would be a limitation, but this is actually a classic
`
` 20 situation of a method of creating a product, generating the
`
` 21 algorithm from something.
`
` 22 And that's the classic situation where, where it
`
` 23 is not a limitation for purposes of patentability. Nor does
`
` 24 it have to be -- and I guess I should clarify this -- nor
`
` 25 does it have to be something where every step, every part of
`
`
`
` 14
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 the claim is a process step.
`
` 2 There are certainly cases where it can be just one
`
` 3 limitation or one phrase within a bigger claim can be held to
`
` 4 be a product-by-process step that does not limit --
`
` 5 JUDGE LEE: Is the case you cited one such example
`
` 6 where it is only an element that's of this nature?
`
` 7 MR. BERKOWITZ: We did cite a Board opinion, Ex
`
` 8 Parte Klasing, if I am saying that correctly. The Warmerdam
`
` 9 case, the Fed Circuit case was not that. I mean, they appear
`
` 10 in different forms, but the one thing the Warmerdam case does
`
` 11 say is that there is no rigid definition of a
`
` 12 product-by-process claim.
`
` 13 And that was one of the things they held in saying
`
` 14 that the claim was definite, that it did meet the 112
`
` 15 standard. But the Ex Parte Klasing case that we do cite in
`
` 16 our brief, that limitation was a one piece metal casting.
`
` 17 And so the prior art in that case was a fabricated assembly,
`
` 18 so it wasn't a casting.
`
` 19 But it was still held to anticipate just the same.
`
` 20 JUDGE LEE: Does the specification describe
`
` 21 anything else about the algorithm or is this it? That it is
`
` 22 generated from something?
`
` 23 MR. BERKOWITZ: It is sparse, Your Honor. It is
`
` 24 very sparse. There is a little bit of additional discussion
`
` 25 with respect to interior vehicle monitoring, so monitoring
`
`
`
` 15
`
`

`

`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
`
`
`
` 1 inside of a car, perhaps, to identify a particular person
`
` 2 that might be sitting in the seat or whether it is -- you can
`
` 3 imagine air bag sensors. Do you have a bag of groceries on
`
` 4 the seat or do you have a person sitting there?
`
` 5 So for interior monitoring, which involves a
`
` 6 totally different set of considerations, but in terms of
`
` 7 exterior monitoring, there is nothing. There is nothing
`
` 8 there.
`
` 9 JUDGE LEE: So we don't really know what such an
`
` 10 algorithm would be, what it looks like?
`
` 11 MR. BERKOWITZ: We don't know how it might be
`
` 12 different, depending on how you generated it.
`
` 13 JUDGE LEE: Yeah, I understand that. But my
`
` 14 question now pertains to what actually is the resulting
`
` 15 algorithm. Do we have an example of it? Do we know what it
`
` 16 looks like? Such that -- an algorithm is a formula. So I am
`
` 17 looking for something like if this, then that, something of
`
` 18 that sort.
`
` 19 MR. BERKOWITZ: No, there is no such disclosure,
`
` 20 Your Honor, other than just a neural network or reference --
`
` 21 basically a recitation or a repeating of the claim language,
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` 22 trained pattern recognition algorithm generated from data of
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` 23 possible exterior objects. That's it, as I understand it.
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` 24 JUDGE JEFFERSON: Counsel, did you raise this
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` 25 argument in your petition?
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` 16
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`

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`Case No. IPR2013-00419 (Patent 6,772,057 B2)
`Case No. IPR2013-00424 (Patent 5,845,000)
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` 1 MR. BERKOWITZ: The product-by-process point?
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` 2 JUDGE JEFFERSON: Yes.
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` 3 MR. BERKOWITZ: What we did, Your Honor, is we set
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` 4 forth how Lemelson anticipates. We matched up -- and I will
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` 5 explain how we still think Lemelson meets this -- we
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` 6 explained how Lemelson anticipates, how it meets everything,
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` 7 the preamble included, everything.
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` 8 AVS comes and makes this process step the focus of
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` 9 its opposition, and so we responded to it. We replied to it.
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` 10 We made a legal argument. We didn't rely on any new
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` 11 declaration evidence, nothing of that sort.
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` 12 JUDGE LEE: How did you account for the generated
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` 13 portion of the claim in your petition?
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` 14 MR. BERKOWITZ: We matched up Lemelson against
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` 15 everything, against -- against everything in the claim, the
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` 16 preamble included, everything.
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` 17 And, you know, it was one of these things where we
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` 18 felt it was our burden to come forward with all the possible
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