Trials@uspto.gov
`571-272-7822
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`Paper No. 38
`Entered: February 6, 2015
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`- - - - - -
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - -
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`ZIMMER HOLDINGS, INC. and ZIMMER, INC.
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`Petitioners
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`vs.
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`BONUTTI SKELETAL INNOVATIONS LLC
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`Patent Owner
`
`- - - - - - -
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`Case No. IPR2014-00191
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`Patent No. 7,837,736
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`Technology Center 3700
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`- - - - - -
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`Oral Hearing Held: Friday, January 9, 2015
`
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and RICHARD
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`E. RICE, Administrative Patent Judges.
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`
`
`The above-entitled matter came on for hearing on Friday, January 9, 2015, at
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`10:00 a.m., in Hearing Room D, taken at the U.S. Patent and Trademark
`
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`571-272-7822
`
`
`Paper No. 38
`Entered: February 6, 2015
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`- - - - - -
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - -
`
`
`
`ZIMMER HOLDINGS, INC. and ZIMMER, INC.
`
`Petitioners
`
`vs.
`
`BONUTTI SKELETAL INNOVATIONS LLC
`
`Patent Owner
`
`- - - - - - -
`
`Case No. IPR2014-00191
`
`Patent No. 7,837,736
`
`Technology Center 3700
`
`- - - - - -
`
`Oral Hearing Held: Friday, January 9, 2015
`
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER, and RICHARD
`
`E. RICE, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Friday, January 9, 2015, at
`
`10:00 a.m., in Hearing Room D, taken at the U.S. Patent and Trademark
`
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`Patent No. 7,837,736
`Technology Center 3700
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`NAVEEN MODI, ESQ.
`JOSEPH E. PALYS, ESQ.
`PAROMITA (MITA) CHATTERJEE, ESQ.
`Paul Hastings LLP
`875 Fifteenth Street, N.W.
`Washington, D.C. 20005
`202-551-1700
`
`MATTHEW B. SKAGGS, ESQ.
`Senior Patent Counsel
`Zimmer
`1800 West Center Street
`Warsaw, Indiana 46580
`574-371-8822
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`APPEARANCES:
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`ON BEHALF OF PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`CARY S. KAPPEL, ESQ.
`DAVID PETROFF, ESQ.
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`14th Floor
`New York, New York 10018
`212-736-1940
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`Patent No. 7,837,736
`Technology Center 3700
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`P R O C E E D I N G S
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`(10:00 a. m. )
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`JUDGE S AI NDON: Good mornin g. Please be
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`seated. We a re h er e toda y fo r a he aring on IPR2014 -00191.
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`We have allo tted one -half hour per side.
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`We will start wit h the Petitioner. If you would
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`like to reserve some ti me , please l et me know.
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`MR. MODI: Tha nk you, Your Hon or. I would like
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`to reserve 10 minutes.
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`Good mo rning. Ma y it please the Board, Naveen
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`Modi on behalf of Zi mme r . As the Board knows, this
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`proceeding involves the '736 patent . The Boa rd instituted
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`review based on t he petition and supporting evidence filed b y
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`Zi mmer .
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`The record no w c ontains even mor e evidence that
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`supports the Board's decision, so we sub mit it is now ti me for
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`the Board to enter its final de cision cancelling all o f the
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`clai ms at issue. Let me explain wh y.
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`So the '736 patent is generall y dire cted to surgical
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`devices and meth ods. The clai ms at issue are direct ed to joint
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`replace ment devi ces, or an y arthroplasty device, an d I will
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`show you the clai ms in a minute.
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`Both parties rel y on figure 90 as support for
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`certain fe atures. So I figured we would start with th at toda y.
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`Patent No. 7,837,736
`Technology Center 3700
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`So if you look at figure 90 -- and t his is fro m the
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`'736 patent -- wh at it shows us is a knee i mplant 1290. The
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`knee i mplant 1290 includes a fe mo ral co mponent tha t's not
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`shown here but th at is secured to th e fe mu r. And it i ncludes a
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`tibial co mponent that is s hown her e, 1292.
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`The tibial co mpo nent includes two subco mponents,
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`a bearing insert 1296 and a tra y 12 94. The tra y 1294, as the
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`Board can see, in cludes a post 1306, and then the be aring
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`insert 1296 includes a r ecess 1308.
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`Now, if you look at the patent what it tells us
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`about those two e le ments is shown on the right. It is ver y
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`brief. Wh at it sa ys is: "Superior surface 1302" -- s o that's the
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`surface on the tra y -- "is provided with a post 1306 that
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`cooperates with a rec ess 1308 located on bearing inse rt 1296
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`to per mit rotation of bea ring insert 1296 with respect to tibial
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`tra y 1294."
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`The patent also s a ys -- and you ca n see that at the
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`bottom -- it r ecognizes that knee i mplants were wel l known in
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`the prior art . And one of those ref erences is the one that is at
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`issue here. It's th e Walker patent .
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`So looking at the procedural history of this case ,
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`the Board instituted revie w of clai ms 15 through 22, 26
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`through 28, 31 through 36, based o n Walker .
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`The Board was ve r y clear in its inst itution
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`decision. It said: " Having revie wed Petitioner's assertions
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`Patent No. 7,837,736
`Technology Center 3700
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`and the cited port ions of the reco rd, we are persuade d that
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`Petitioner has de monstrated a r eas onable likelihood of
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`prevailing on its contention that Walker anticipates clai ms 15
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`through 22, 26 through 28, and 31 through 36 of the '736
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`patent."
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`In response the P atent Owner filed a statutor y
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`disclai mer with r espect to clai ms 15 through 20 and 26
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`through 28. So t he onl y cl ai ms th at re main at issue are clai ms
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`21, 22 and 31 thr ough 36. And I will spend the r est of the
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`ti me talking about those clai ms.
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`So if we turn to c lai ms 21 and 22 - - and we are on
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`slide 7 now - - if you turn to cl ai ms 21 through 22 the y depend
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`fro m clai m 15. And that's the re as on you see clai m 15 there
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`even though it has been disclai med .
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`So if you look at clai m 15, it is a d evice to r eplace
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`an articulating surface of a fi rst side of the joint. And it
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`recites a bunch of ele ments. One of the m is the base
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`co mponent, a bas e co mponent. So that would be si milar to the
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`tra y that is shown h ere in figure 90.
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`You have a mova ble co mponent th at would be
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`si milar to the bea ring insert that is shown in figure 90. Then
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`you have a protru sion on the base s liding side or the movable
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`sliding side. So, again, that would be this post 1306. And
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`then you have a r ecess sized to rec eive said protrusion, and
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`that would be ele ment 1308, si mil a r to ele ment 1308.
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`Patent No. 7,837,736
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`Now, cl ai m 21 de pends fro m 15 an d it recites that
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`the protrusion and recess engage t o per mit r elative
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`rotation about an axis of said protr usion. And clai m 22
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`depends fro m 15, and it states said protrusion is a pin, and
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`then the rec ess is a hole sized to re ceive said pin.
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`Again, we will ge t into the issues surrounding
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`these ele ments in a couple minutes. I just wanted to put the
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`clai ms up on the s creen for the Board.
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`Clai ms 31 through 36 are si mil ar. Clai m 31 is
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`directed to a knee arthroplast y device. And it recites a tibial
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`tra y, a tibial tra y insert, and the rot ation aspects.
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`The ma in diffe rence bet ween clai m 31 and 21 and
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`22 is clai m 21 is directed to a knee arthroplast y device and it
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`actuall y recites th e word "tibial tra y" and a "tibial tr a y insert,"
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`whereas clai ms 2 1 and 22 are a little bit broader .
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`Clai m 32 through 36, I will just me ntion those
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`briefl y. We a re n ot going to get into th ose unless the Board
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`has an y questions. The P atent Own er r eall y hasn't a r gued
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`those separatel y. So fo r purposes of toda y I will fo cus on
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`clai ms 21, 22 and 31, again , unless the Board has an y
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`questions.
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`So turning to the prior art issue, Walker. I want to
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`spend just a minute on Walker. If you look at Walk er, it also
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`discloses a knee i mplant. And wha t it shows us is a tibial
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`platfor m 41, si mi lar to the base co mponent that we saw in the
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`clai ms . And it ha s a moving co mp onent, which is a meniscal
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`co mpone nt 44 her e. The tibial plat for m has an abut ment 50
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`and the meniscal co mponent has a recess 51.
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`And the wa y this device operates is that you can
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`see that the meniscal co mponent 44 rotates about abu t ment 50 .
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`Again, I will expl ain and we will g et into a l ot mo re details in
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`the next fe w minu tes.
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`So what are the is sues in dispute? This case boils
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`down to three issues in dispute. One is whethe r the abut ment
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`50 of Walke r me e ts the clai m require ments of the pi n and post,
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`whether the rec ess 51 in Walke r meet s the clai med hole and
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`cavit y li mitations and, finall y, whe ther Walke r discl oses the
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`clai med rotation f eatures.
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`We sub mit that Walker discloses ea ch and ever y
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`feature that is in dispute, as the Bo ard has al read y fo und, and
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`the Board should enter a final deci sion at this point. I will get
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`into each of those issues now.
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`Turning to the fir st issue, whether Walker
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`discloses the claimed pin or post. Let's go back and look at
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`the clai m again. So clai m 22 recit es that the protru sion is a
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`pin. Clai m 31 r e cite s that the tibi al tra y has a post.
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`Slide 13. We a re on slide 13 now. So if you look
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`at slide 13, we sub mit the Board sh ould, as it did in its
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`institution decision, continue to a pply the broadest reasonable
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`Patent No. 7,837,736
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`interpretation to these clai ms, and t hat here is the pla in and
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`ordinar y me aning of these ter ms .
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`So if you look at a dictionar y, the dictionary
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`defines a post as basicall y a struct ure that is used to support.
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`It is an upstanding structure that's used to support.
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`Abut ment 50 of Walker plainl y meets t his
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`definition. Walk er itself -- this is a quote fro m Wal ker -- it
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`sa ys: "A se mi -ci r cular abut ment 50 which is upstanding at the
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`medial side of the platfor m." It cl e arl y meets this limitation
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`and it certainl y p rovides support also.
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`In fact , Patent Own er's expert, Dr. Schoifet, when I
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`asked hi m during deposition whether it met both of those
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`li mitations, he ag reed.
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`If we now turn to the pin fe ature, s orr y, to the post
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`feature, the pin fe ature, the Patent Owne r is reall y n ot
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`distinguishing pin here for purposes of this c ase. The y have
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`relied and pointed to the sa me stru ctures for pin and post. If
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`you re call, figure 90 called 1306 a post. The y have
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`interchangeably s aid that's a pin an d a post. This is fro m
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`Patent Owner 's r e sponse.
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`And I asked their expert during deposition, I said:
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`"Question: You' r e not differ entiating between a
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`post and pin for p urposes of your opinions; right?
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`"Answer: Correc t."
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`Patent No. 7,837,736
`Technology Center 3700
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`So, again , for pur poses of this case the sa me
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`definition applies. Even the P atent Owner agrees .
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`So what is the ar gu ment that the y have? The
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`Patent Owner arg ues for a nar row construction of a pin and a
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`post. The y argue that the pin or p ost is t ypicall y used to fix or
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`align one device t o another device. We ar e on slide 16 now.
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`We believe that's a narro w construction. It 's not
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`the broadest reas onable interpretation of the clai ms . But even
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`if the Boa rd were to acc ept this co nstruction, we sub mit that
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`Walker discloses these features .
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`So if we go back to Walker , what i t discloses,
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`again, is an a butment 50 and then, again, you have t he recess
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`here. And Walke r clea rl y states: " Figure 2c shows t he manner
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`in which the meniscal co mponent c an be fitted to the tibial
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`platfor m b y enga ging the abut ment 50 in the recess 51." So,
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`again, Walker me ets even their nar row construction.
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`Turning now to th e hole or cavit y li mitations. So
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`clai m 15 r ecites a rec ess, and clai m 22 sa ys said r ece ss is a
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`hole sized to re ce ive said pin. 31 r ecites a cavit y.
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`So, again , let 's go back to the broadest reasonable
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`interp retation. We sub mit that's th e plain and ordin ar y
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`me aning and that' s what the Board applied in its institution
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`decision, and the Board should now go ahead and confir m its
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`decision and enter a final decision.
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`Patent No. 7,837,736
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`As you can see , t he definitions define hole a s "a
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`cavit y in a solid," and "an opening. " It defines cavity as "a
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`hollow; a hole," a nd "a hollow a rea within the bod y. " So
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`essentially a hole or c avit y is a hol low ar ea. And Walker
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`me ets ea ch of the se definitions, the re cess of Walke r.
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`I even asked their expert, Dr. Schoi fet:
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`"Question: Do you agree recess 5 1 contains a
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`hollow area?
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`"Answer: I do."
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`This is probabl y one of the few an swers where he
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`actuall y did not a rgue with me bac k and forth. He c learl y
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`agreed that it includes a hollow a re a.
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`So what are their argu ments no w? The y, again,
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`want to construe hole/cavity ver y narrowl y. So I as ked hi m,
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`well, what is your definition of ca vity -- and this is during his
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`cross exa mination -- and he said, well, a cavit y is a hole
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`with di mensionalit y. I tried to ask hi m, well, what d oes
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`di mensionality mean? We went ba ck and forth.
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`To the extent I understood his definition of
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`di mensionality, a gain, we believe Walker meets tha t. The
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`meniscal co mponent in Walker , wh ich is shown here , the
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`recess 51 menis ca l co mponent has so me thickness to it. It is a
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`medical device and there is di mensi onality to it as shown b y
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`the recess 51. So , again , it even meets their nar row definition.
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`Patent No. 7,837,736
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`So what is the ot her argu ment that the P atent
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`Owne r has here? The Patent Owne r argues that the r ecess in
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`Walker is reall y a notch, it is not a recess. So we bel ieve this
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`is actuall y a red - herring because what the y a re doing is the y
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`are flipping what needs to be done here.
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`Wh at needs to be done here is you l ook at the
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`clai ms , det e r mine what is the mean ing of a hole or c avity, and
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`then you appl y th at meaning to the prior a rt to see if the prior
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`art me ets the li mi tation.
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`The y a re turning that anal ysis on it s head. The y
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`are sa ying, well , the prior art calls this a notch so, t heref ore , it
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`is not a hole or c avity.
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`So we sub mit to you, again, this is a red -he rring.
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`But even if we go through the argument , we believe the recess
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`or notch 51 -- I will just call it ite m 51 so we don't argue over
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`what Walker calls it -- me ets the li mitat ions of the c lai m.
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`So starting with f igure 90, one thin g I want to
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`point out is, even their o wn patent, figure 90 that the y rel y
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`upon, it calls, wh at the y want to c a ll a hole, a rec ess. It
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`doesn't call it a h ole. It doesn't ca ll it a cavit y.
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`But even if we le ave that aside, yo u look at
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`Walker, Walker only re fers to ite m 51 as a notch only one
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`single ti me . Eve r y other ti me it re f ers to it as a rec e ss. And,
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`again, what the B oard needs to do here is look at the definition
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`of a hole or a cav ity, under t he bro adest reasonable
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`interpretation it is a hollow area , r ecess 51 or ite m 51 clearl y
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`me ets that li mitat ion, as their expe rt even agr eed.
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`So then turning to the last li mitati on, it is the
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`"about an axis of a protrusion/about a post." So let's look at
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`the clai m languag e again. What we have is clai m 21, wher e it
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`sa ys: "Protrusion and re cess engag e to per mit relati ve rotation
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`about an axis of s aid protrusion." Clai m 31 sa ys: " Wh erein
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`said tibial tra y insert rotationall y moves with r espect to said
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`tibial tra y, about said post."
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`So the y dispute that Walker doesn' t disclose this
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`li mitation. But, a gain, Your Honor s, I don't think yo u need to
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`go be yond what Dr . S choifet said when I asked hi m about this
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`during his deposition.
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`Let me show you a figure th at he d rew for me at
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`his deposition. This is Exhibit 1020. I asked hi m, I said, sir,
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`can you show me how the rotation works in Walker? And you
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`can see this is his annotation. He shows that Walker rotates
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`this wa y, and it is around abut ment 50. It is a bout ab ut ment
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`50, about an axis of abut ment 50.
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`If you look at the record , Dr . Erd man, our expert,
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`testified consistently and said, yes , the meniscal component
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`rotates about abutment 50, about an axis of abut ment 50.
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`JUDGE ZECHER: M r. Modi, is the re an y thing in
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`Walker that explicitl y describes this rotation?
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`MR. MODI: Yes , Your Honor. Th ere are a fe w
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`places and I can point those out for you.
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`So, Your Honor, f irst I would point to colu mn 4,
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`and it is lines 22 through 26, and I will re ad that for you , Your
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`Honor, if it is helpful. It sa ys: Ro tation of the meni scal
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`co mponent 44 ab out an axis at the edge of the tibial platfor m
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`is controlled b y s e mici rcular abutment 50 which is upstanding
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`at the medial side of the platfor m.
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`And another plac e, Your Ho nor, is colu mn 6.
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`JUDGE R IC E: C ould I stop you th ere?
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`MR. MODI: Sure , Your Honor.
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`JUDGE R IC E: Where is axis X?
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`MR. MODI: Your Honor, axis X, i t sa ys it is at the
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`tibial platfor m. S o we would sa y it would be around here.
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`JUDGE R IC E: B ut that's no t explicitl y disclosed
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`in Walker?
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`MR. MODI: Your Honor, it is not, but one of skill
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`in the art reading this disclosure, a s our expert did, i f you look
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`at his testi mon y h e clea rl y testified that there is an a xis of the
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`abut ment and the meniscal co mponent rotates about that axis.
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`Another place , Your Honor, whe re we believe the
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`rotational aspects are described is colu mn 6, lines 3 0 through
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`34. And there it sa ys: An abut me nt upstanding at one edge of
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`the tibial platform which engages with a recess in o ne edge of
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`Patent No. 7,837,736
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`the meniscal co mponent, thereb y guiding a li miting move ment
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`of the meniscal c o mponent in an ar c around the abutment .
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`So we believe that also further supports the
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`conclusion that the Board found in its institution decision
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`based on the petition a nd the supporting evidence.
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`JUDGE R IC E: Thank you.
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`MR. MODI: And, Your Honor, I b elieve the y
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`agree, the y quibble with us , but I b elieve the y agre e, and you
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`obviously can ask the m when the y make their argu ment, these
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`are quotations fro m their pape rs. Th e y sa y: A pe rson of skill
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`in the art at the time of the invention would understand Walker
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`as describing a tr anslational/rotational move ment . And this is
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`on slide 27.
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`And I think their argu ment is, well , the abut ment
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`50 allows for so me translational move ment. But the y don't
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`dispute that there is also rotational move ment her e.
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`And, again, if we go back to the figure that I put
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`up -- this is on sli de 26, Exhibit 1020 -- their expert drew this
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`for us. It clea rl y shows rotation about abut ment 50, about an
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`axis of abut ment 50.
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`So for those reas ons we believe the Board did get
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`this right in its institution decision and should confir m its
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`initial decision and issue a final d ecision cancelling the clai ms
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`at issue.
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`Unless the Boa rd has an y other que stions, I will
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`reserve the rest o f my ti me for reb uttal.
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`JUDGE S AI NDON: Thank you.
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`(Pause)
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`MR. KAPP EL: M a y it please the C ourt. Starting
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`on slide 2, in our view the sole issue in this proceedi ng is
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`whether Petitioner has proven b y a preponderance of the
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`evidence that clai ms 21, 22 and 31 are anticipated b y Walker ,
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`and toda y I would like to focus on three wa ys in whic h
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`Petitioner has fail ed to meet that b urden.
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`First, Petitioner has not established that the notch
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`of Walker is a hole as required b y c lai m 22. Petitioner has not
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`established that Walker pe r mits r otation of the alle ged
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`movable sliding side about an axis of the protrusion as
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`required b y clai m 21.
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`And also Petitioner has not established that the
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`notch of Walker i s a c avit y as r equired b y clai m 3 1 , whether a
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`tibial tra y insert of Walker moves rotationally about the
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`alleged post, as r equired b y clai m 31.
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`Let's start on slid e 4. Her e we see clai m 22 and
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`clai m 15 upon wh ich it depends. And you see clai m 15
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`requires a base co mponent, which c an be the tibial tr a y 1294,
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`and a movable component which ca n be the be aring i nsert
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`1296. And one of the co mponents i ncludes a protrusion that is
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`substantially offs et with regard to the midline in the joint, and
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`the other includes a recess .
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`And clai m 22 furt h er narro ws clai m 15 b y
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`requiring the rece ss to be a hole an d the protrusion to be a pin.
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`And in figure 90 we se e a tibial tra y 1294 has a prot rusion
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`1306 in the for m of a pin, and we a lso see that the bearing
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`insert 1296 includes a r ecess that's in the fo r m of a hole 1308.
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`And we c an tell it is a hole because it is depicted
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`in dashed lines, s o it's indicating a hidden co mpone nt. So
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`right there you ar e seeing a hole lo cated in the mova ble
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`co mponent.
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`And turning now to slide 3, we see figure 2a of
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`Walker. And, ac c ording to Petitioner, the se micir cular
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`abut ment 50 is the clai m pin and n otch 51 is the clai med hole.
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`So what is the iss ue here? This is what he discusses a little
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`bit. And in our view, even the Cou rt's broadest r eas onable
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`construction, cons istent with the s pecification, a notch is
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`si mpl y not a hole.
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`Wh at Walker depi cts, and we see here on slide 3 , is
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`what would be co nsidered a notch. And these are or dinar y
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`words in the Engl ish language and we think it is fair l y
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`self-evident.
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`Here on the slide s is an illustration fro m the
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`Internet that I inc luded, Exhibit 2003. And if I took all of
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`those words off of this illustration, I walk up to 10 p eople on
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`the street and I sa id point to me the notch and point to me the
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`hole, the y wouldn't be confuse d. The y all know wha t is the
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`hole and what is t he notch. These are ordinar y Engl ish
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`language words. The y a re understood to mean diff er ent
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`things. And as we will see, what Walker is showing is clearl y
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`a notch, not a hole.
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`JUDGE ZECHER: Fi rst question: Can I ask wh y
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`you focus your ar gu ments pri maril y on ite m 51 bein g a notch?
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`It see ms as if Walker sa ys a re cess or notch 51.
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`MR. KAPP EL: Well, the question is what is it
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`showing there? And it is showing a recess in the fo r m of a
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`notch. And if I b road en to the wor d recess, I would sa y the
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`clai ms the mselve s in this patent distinguish between a recess
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`and a notch.
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`Clai m 15 r ecites a re cess. Clai m 2 2 further
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`narrows it to sa y the recess is a hole. So not ever y r ecess is a
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`hole. A rec ess co uld be a no tch. A rec ess could be a cavit y.
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`A recess could be a hole . But not ever y re cess is a hole or a
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`cavit y, and I will give you an exa mple.
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`If I have this cup, I would sa y it ha s a hole. I
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`would sa y it has a cavit y. You wouldn't describe it as having
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`a n otch.
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`JUDGE ZECHER: Wh y do you think Walker is
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`describing ite m 1 as a re cess in the for m o f a notch? It clearl y
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`uses the language "or," which is an alternative.
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`MR. KAPP EL: Well, I think if you look at what is
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`showing there, and let's go her e on slide 9, you can see what it
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`is showing there as ite m 51, and th e y describe it as a re cess or
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`notch that is rounded.
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`And the dictionar y de finition of notch is a
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`V-shaped cut, it matches exactl y, a V -shaped cut which has
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`been rounded. The y are using that ter m in ac cordance with its
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`ordinar y me aning. And what the y are showing ther e is a
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`notch. The y a re not showing a hole, which is the re al
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`question, are the y showing a hole t here?
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`I will give you an other exa mple. If we take a look
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`at --
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`JUDGE ZECHER: Does it explicitly sa y it is
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`rounded or do yo u just gather that fro m the illustrati on?
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`MR. KAPP EL: No, it sa ys it is rou nded. That's a
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`direct quote.
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`JUDGE ZECHER: Oka y. I think I see whe re it is
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`in colu mn 4 .
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`MR. KAPP EL: And I will point out, for exa mp le ,
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`that there is another re cess describ ed in that sa me fi gure, and
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`that is recess 49. You can see it th ere. That mates with the
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`rail 48.
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`Now, that's a rece ss. However, I ' m sure, I would
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`sub mit that you would not describe recess 49 as a hole and you
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`wouldn't describe it as a cavit y. It is basicall y an L - shaped
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`shelf. So I think you have to look at what we a re t alking about
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`here. And what t he y are showing there in 51 is a no tch. It
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`me ets exactl y the definition. The y specificall y r efer ence it as
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`a n otch. And the question is, is that a hole? That is not a hole
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`in our esti mation.
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`That's a hole, that 's not a cavit y, th at does not have
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`a notch (indicating).
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`JUDGE ZECHER: I think I underst and your
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`position. Judge Rice, you had a question?
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`JUDGE R IC E: I t hink you covered it.
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`MR. KAPP EL: I would also like to point out that
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`the specification also supports the point that a notch is not the
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`sa me thing as a h ole. In f act, the s pecification uses the ter m
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`hole and notch in the sa me sentenc e re ferring to the fact that a
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`hole is drilled in the center of the notch.
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`And, again, this just reflects, these are ordinar y
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`English language words. The y a re understood to have
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`different me anings.
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`JUDGE ZECHER: That citation to the
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`specification there, is that t he e mb odi ment that you are rel ying
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`on?
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`MR. KAPP EL: No, it is not. It is not. Again, I
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`cite it si mpl y for the fact that it is showing the manner in
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`which -- the ordi nar y meaning of the words hole an d notch.
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`JUDGE ZECHER: But that is a dif ferent
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`e mbod i ment?
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`MR. KAPP EL: That is a dif ferent e mbodi ment.
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`That is not discussing the mobile ti bial tra y insert. That is
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`showing drilling a hole in the cent er of the intercon d ylar
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`notch.
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`JUDGE R IC E: What is the support in the
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`specification for t he hole?
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`MR. KAPP EL: Oka y. I' m glad yo u asked that.
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`The i mportant sp ecification in the hole is figure 90. And you
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`see there 1308 is depicted in dashed lines, which indicates it is
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`a hidden co mpone nt and, there fore , what you are dep icting
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`there is a hole.
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`And I would also refer to - - I ' m sor r y I' m ju mping
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`around here a little bit, but, here we go, on Dr. Scho ifet's
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`declaration wher e , again , he is noting the dashed lines, and
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`that is understood as a wa y to illustrate a hidden -- a hole, in
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`fact, you know, i n a p atent dr awin g that's how you i ndicate a
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`hidden me mbe r. I' m sur e I don't h ave to infor m the Board of
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`that, but it is in , f or exa mple, MP EP 60802(ix).
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`JUDGE R IC E: What is the support in the
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`specification for t he recited recess?
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`MR. KAPP EL: The recess -- well, I would sa y that
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`there is t wo diffe rent rec esses that could fall within that.
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`There is a re cess 1308 which is in the for m o f a hole. And
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`then if you look a t figure 89, which I don't have in o ne of my
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`slides, if you look at figure 89 you have a re cess tha t's in the
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`for m of a dovetai l shaped groove.
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`So I think there i s a couple of diff erent
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`e mbodi ments in t he drawings. An d if you look at, f or
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`exa mple , clai m 2 3 of the patent , whereas clai m 22 d epends
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`fro m clai m 21 an d sa ys a recess is a hole, clai m 23 , if you read
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`it, further defines the re cess as a dovetail.
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`Let me read it ex actl y. Clai m 23 , wherein -- and
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`said recess is a d ovetail. So the clai ms the ms elves t ell you
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`that recess is not s ynon ymous with hole or cavit y. It is a
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`narrowing. I thin k you need to give that diffe rence i n clai m
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`ter ms , you know, credit.
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`And I think you c ould also take a l ook, you know,
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`at Walke r again a nd looking at rec ess 49. I do not believe
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`an yone would look at re cess 49 and sa y that's a hole or that's a
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`cavit y. The ter m recess, the broade r generic ter m, we have
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`narrowed it in cla i m 22 to be a hol e. And we f eel th at Walke r
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`is not describing a hole. There fore , it does not meet each and
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`ever y li mitation of the cl ai m and you can't find anticipation.
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`JUDGE R IC E: C an you explain more full y wh y it
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`is your position that Walker is not disclosing a hole?
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`MR. KAPP EL: Wh at you have th ere, you have a
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`disk there, all rig ht, with a se mi cir cular cutout in it. And
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`that's not a hole. That 's not a cavit y. That's what is
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`co mmonl y r efer re d to as a notch.
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`And I can give yo u reasoning behind that, but the
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`biggest reason is that this is the co mmonl y understood
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`me aning of these words. You woul d not look at that, walk up
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`to a person and sa y, is that a hole? The y would sa y, no, that's
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`a notch.
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`And a hole, if I were to sta rt, you know, giving
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`additional infor mation on it, as Dr. Schoifet actuall y testified,
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`when you look at a hole it is contained. That's a notch. A
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`notch is open, a V -shaped notch.
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`Again, that 's a hole. You wouldn't call that a
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`notch. I don't thi nk you look at a notch and call it a
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