trials@uspto.gov
`571-272-7822
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`IPR2015-01691, Paper No. 43
`November 14, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ALLSTEEL, INC.,
`Petitioner,
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`v.
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`DIRTT ENVIRONMENTAL SOLUTIONS, LTD.,
`Patent Owner.
`____________
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`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
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`Held: October 13, 2016
`____________
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`
`
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`BEFORE: SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`October 13, 2016, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2015-01691, Paper No. 43
`November 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL, INC.,
`Petitioner,
`
`v.
`
`DIRTT ENVIRONMENTAL SOLUTIONS, LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
`
`Held: October 13, 2016
`____________
`
`
`
`
`
`BEFORE: SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`October 13, 2016, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2015-01691
`Patent 8,024,901 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`TREVOR CARTER, ESQUIRE
`TIMOTHY M. SULLIVAN, ESQUIRE
`VICTOR JONAS, ESQUIRE
`Faegre Baker Daniels, LLP
`2200 Wells Fargo Center
`90 South Seventh Street
`Minneapolis, Minnesota 55402-3901
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`CHAD E. NYDEGGER, ESQUIRE
`DAVID R. TODD, ESQUIRE
`MICHAEL FRODSHAM, ESQUIRE
`Workman Nydegger
`60 East South Temple
`Suite 1000
`Salt Lake City, Utah 84111
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`Case IPR2015-01691
`Patent 8,024,901 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE MEDLEY: Good afternoon. This is the
`hearing for IPR2015-01691 between petitioner, Allsteel, and
`patent owner, DIRTT Environmental Solutions, involving claims
`1, 4 through 7, 9, 10, 14 through 20 and 25 of U.S. patent
`8,024,901.
`Per the September 16th order, each party will have
`60 minutes of total time to present arguments. Petitioner, you
`will proceed first to present your case with respect to the
`challenged claims and grounds for which the Board instituted
`trial. Thereafter, patent owner, you will have time to respond to
`petitioner's presentation. And then petitioner, you may reserve
`rebuttal time. At this time we would like the parties to please
`introduce themselves, beginning with petitioner.
`MR. CARTER: Hi, on behalf of petitioner, Trevor
`Carter from Faegre Baker Daniels, and with me from Faegre
`Baker Daniels is Tim Sullivan and lead counsel, Victor Jonas.
`And from the client, Allsteel, is general counsel, Steven Bradford
`and in-house intellectual property counsel Allison O'Brien.
`JUDGE MEDLEY: Mr. Carter you will be presenting
`
`MR. CARTER: Yes, Your Honor.
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`MR. NYDEGGER: Good afternoon. My name is Chad
`Nydegger from Workman Nydegger, representing the patent
`owner, DIRTT Environmental Solutions, Limited. With me I
`have my partner, David Todd, my partner, Michael Frodsham,
`and we have with us a client representative today, Dale Sawyer.
`JUDGE MEDLEY: Mr. Nydegger, you will be
`presenting?
`MR. NYDEGGER: I will.
`JUDGE MEDLEY: So Mr. Carter, would you like to
`reserve rebuttal time?
`MR. CARTER: Yes. I would like to reserve
`approximately 30 minutes with the understanding that my
`primary role here is to answer whatever questions you have
`today. So if we need to go beyond that to answer your questions,
`that's fine with me.
`JUDGE MEDLEY: Unfortunately, we don't have a
`display of the time remaining like we do in some of the other
`hearing rooms. So I'll just alert to you when you get close to that
`30 minutes.
`MR. CARTER: Thank you very much.
`JUDGE MEDLEY: You may begin.
`MR. CARTER: Thank you. So as a starting point, we
`are here to talk about the instituted grounds. There are several
`grounds all involving the Raith reference in combination with
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`what we refer to as the EVH reference, the Yu reference, the
`MacGregor reference and MacGregor and Rozier.
`Since the institution decision, the only claims that have
`been at issue during the trial phase have been the only
`independent claim, claim 1, and one dependent claim, claim 5.
`So where we are today, we think that, as we set out in our reply
`paper, that the dispute between the parties now is very narrow.
`There is no dispute that the prior art is analogous. There's no
`dispute that all of the elements in the prior -- that the prior art
`teaches all of the elements in the claims. And there is no dispute
`that a person of ordinary skill in the art would combine the
`references. The issue is down to what combinations would a
`person of ordinary skill in the art come to looking at the overall
`teachings of the references.
`So first, looking at whether the prior art is analogous,
`this is in our reply paper at 3. I'm on slide 5, testimony from
`Dr. Dix where he is agreeing to the underlying elements that
`indeed Raith, EVH, Yu and MacGregor are analogous art.
`Second, undisputed that for the elements at issue here,
`the prior art teaches all of them. And it was not disputed by the
`patent owner at any time during the trial phase. And as this panel
`set out in the institution decision, the patent owner was cautioned
`that any arguments for patentability not raised in the response
`will be deemed waived, as we have here in slide 7.
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`Now, I think at this point when we were looking at the
`claim elements, it's helpful to take a step back to the underlying
`prosecution of the patent. And during that underlying
`prosecution the focus was all on the beaded portions. It was the
`beaded portions on the removable connecting strip and the beaded
`portions on the end frames and how those beaded portions
`interacted with each other.
`Looking at the claim leading into this proceeding when
`the petition was filed, that's what this claim was about. Slide 9
`has highlighted all of the details regarding the beaded portions
`that DIRTT had to add and argue to get the claim allowed. The
`Raith reference that is used in every instituted combination, we
`are now on slide 10, shows the beaded portions on the removable
`connecting strip and on the frame. And there has been no dispute
`in this proceeding at all from DIRTT that Raith teaches those
`beaded portions.
`So what we are down to is from patent owner's
`perspective, they say that Raith does not teach a plurality of
`horizontal stringers affixed between vertical end frames nor an
`aesthetic surface that is affixed to said stringers as set out on slide
`11.
`
`In slide 12, we think that it's helpful to look at the claim
`as a whole, this claim that is to a movable, reconfigurable wall
`system. We are down to just these two elements, a plurality of
`horizontal stringers and an aesthetic surface affixed to the
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`stringers that are claimed at a very high level. Compared to the
`detail that we have in the claim regarding the beaded portions,
`these elements that we are now talking about are just the
`horizontal stringers and just an aesthetic surface without any
`detail surrounding them.
`These are, I would like to think of them as contextual,
`that when you look at a movable, reconfigurable wall system,
`these are items that were very well known in the prior art to have
`these horizontal stringers or horizontal structural supports and
`aesthetic surfaces, whether it be glass or vinyl or a solid panel of
`some sort. That was well known.
`And in the institution decision, there were three separate
`grounds instituted for claim 1 because a person of ordinary skill
`in the art would look at the teachings of Raith and the fact that
`you want these movable, reconfigurable wall systems with
`flexibility to set them up in different ways and realize that I could
`have EVH with the glass that is height-adjustable or I could have
`Yu where you have the snap-in tiles that are easy to snap in and
`out and change. And then the same horizontal structure that
`holds the snap-in tiles also holds furniture. And in MacGregor
`you have the horizontal supports that holds cover panels as well
`as a wide variety of other components such as televisions and
`other consumer electronic-type equipment.
`And the patent owner and Dr. Dix do not dispute that
`any of these references teach these limitations.
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`JUDGE MEDLEY: I was just going to say, and that's
`including their construction that there is no dispute, even if we
`construe horizontal stringer the way that patent owner proposes,
`we interpret it, excuse me, then there still is no issue as to
`whether the secondary references describe a horizontal stringer?
`MR. CARTER: Yes. That's a great question, Judge
`Medley. Even under the definition that DIRTT advances, which
`is different from this panel's definition in the institution decision
`that requires the stringer to be placed above the ground, all of the
`stringer references that we have on slide 13, EVH has the stringer
`above the ground, Yu has the stringers above the ground, as does
`MacGregor.
`JUDGE MEDLEY: And provides vertical structural
`support, excuse me, for the vertical end frames, correct?
`MR. CARTER: That's correct. All of these references
`clearly expressly disclose at least a nut-and-bolt type connection
`between the stringer and the vertical end frame pieces. And they
`also expressly disclose that you affix the aesthetic surface. So in
`EVH, it has the distance channels with the grooves that the glass
`goes into. In Yu it has the clip-on type arrangements for the
`aesthetic tiles as well as it has an L-shaped channel to hold
`accessories such as furniture. And MacGregor has a variety of
`mounting holes when you look at those horizontal structure
`members for holding the cover panels as well as the consumer
`electronics.
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`Patent 8,024,901 B2
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`
`Sorry, Judge Daniels, I believe you had a question.
`JUDGE DANIELS: It was essentially same question
`that Judge Medley asked. Thank you.
`MR. CARTER: So then previewing where we are
`going, there's no dispute that the prior art has all of these
`elements. Dr. Dix, in his deposition, was asked questions taking
`him out of the mindset of the declaration where, in our view, he
`was limiting himself in looking at Raith and unnecessarily being
`limited in its disclosure. We were asking him questions about
`what his senior design students, people who are at the cusp of
`graduating with an ME degree, what it is that they would do when
`they were designing their own horizontal structural support to
`pair it with a connecting strip system of a Raith. That is what
`would be in their toolbox of knowledge and creativity.
`And so at a summary of the questioning, it was asked,
`So they could use something like Yu, they could use something
`like EVH, they could use something like MacGregor. But maybe
`more probable they would just design their own horizontal
`structural support member to pair with the Raith connecting
`system, right? And the answer was, Right.
`JUDGE MEDLEY: So what is the relevance to that and
`how much weight should we give it? Because it seems like he
`was being asked as of today. Not at the time of the invention. So
`how are we to understand that with respect to the obviousness
`conclusion?
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`Patent 8,024,901 B2
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`MR. CARTER: I will go back and look. I think that
`just if you look at the overall context of the deposition, it was
`clear we were talking about 2004, 2005. But even if it isn't, and
`I'm going to assume that it was asked in present day, the
`technology that we are speaking of here of how to connect a
`horizontal structural member to end frames and what type of
`options would be available, that is technology that hasn't changed.
`The basic toolbox of knowledge that an ME graduate has today is
`not any different than 2004, 2005.
`JUDGE MEDLEY: And the person of ordinary skill in
`the art, I thought that in your petition you said it would be
`someone with a bachelor's degree.
`MR. CARTER: That is correct.
`JUDGE MEDLEY: So this is someone with a master's
`degree. Does that matter?
`MR. CARTER: No, the senior design student would be
`somebody who is just on the cusp of receiving their bachelor's
`degree in mechanical engineering. So a senior design class. And
`in fact, I believe it was on redirect, questions that were asked by
`Mr. Nydegger, Dr. Dix confirmed that the person he is speaking
`of in a senior design class is the same as a person of ordinary skill
`in the art. Kind of you can think of it as the penultimate class.
`You have all of your undergraduate classes. You take your senior
`design class or its project base where you are given projects and
`coming up with it. So these are people who are at the same level
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`of skill as a person of ordinary skill in the art in this case, which
`is an ME graduate.
`JUDGE MEDLEY: The patent owner seems to dispute
`the skill set of a person of ordinary skill in the art. They agree
`with -- perhaps they agree with your characterization of the
`degree and experience, but not the experience really because they
`say it's someone who would take direction from a more senior
`level, if I understand. And I'll ask the same question when they
`get up. Is it necessary for us to resolve that or can we just look to
`the prior art of record since we have case law that says you can
`look at the prior art itself to determine the skill set? And that to
`me is more helpful than trying to figure out how many years
`experience one would have, that sort of thing.
`So my question to you, is it necessary for us to resolve
`the dispute or can we just make our determinations based on the
`prior art before us?
`MR. CARTER: So I think that the dispute about the
`skill level of a person of ordinary skill in the art, there are a
`couple different ways to look at it based on patent owner's
`arguments. First is they are limiting them because they say they
`are in an apprentice-like position as opposed to we have
`testimony that we have cited in our papers, and we have it in our
`slides, where Dr. Dix, when he is outside the context of his
`declaration, when he is talking about what his students would do,
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`he is talking about this issue right here of coming up with
`horizontal supports not even involving creativity.
`So I don't think that that is something that should impact
`the decision one way or another, but I do think that in Dr. Dix's
`and the patent owner's analysis, they do unduly limit the
`creativity of a person of ordinary skill in the art. They turn them
`into an automaton, which the case law says very clearly that a
`person of ordinary skill in the art is a person of ordinary
`creativity, not an automaton, someone who was just going to
`follow directions.
`The other aspect that we'll get into is that the person of
`ordinary skill in the art here is unduly limited by the so-called
`Raith manufacturing environment. So even though Raith
`discloses various forms of manufacturing techniques, it primarily
`discusses roll forming but it says other manufacturing techniques
`can be used. Dr. Dix, when he was looking at what a person of
`ordinary skill in the art would do, was improperly limiting that
`person of ordinary skill in the art to only look at I have to keep as
`much of Raith as possible and I can't change Raith very much at
`all. When Raith does not have a teaching away that forces that,
`you are able to look at the overall teaching of Raith with the
`overall teaching of these other references.
`So to answer your question, I think there are probably
`parts of the person of ordinary skill in the art that you can
`overlook such as just a basic how much creativity they have and
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`just go with looking at the prior art and looking at the case law.
`But I think that there are parts of the patent owner's arguments
`and Dr. Dix's analysis where they have unduly limited,
`unnecessarily limited how the person of ordinary skill in the art
`would attack these problems based on their interpretation of
`Raith.
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`JUDGE MEDLEY: Thank you. I understand.
`JUDGE DANIELS: Mr. Carter, some of these
`questions that you were asking Dr. Dix, some of these leading
`questions here, don't these sort of -- aren't you sort of asking him
`to opine upon a hindsight issue? I mean, if you are just asking
`him if they could use something like Yu, EVH and MacGregor,
`isn't he essentially imparting that if you just combine these, that
`anyone could do this? I mean, isn't that sort of -- you know,
`aren't we just talking about hindsight there?
`MR. CARTER: That is a very good question, Judge
`Daniels. That leads right in to my next slide. So I'm going to
`answer your question going to my next couple of slides. So we
`have, the next is would a person of skill in the art combine the
`prior art. And that is undisputed because we have from Dr. Dix
`and patent owner that -- and I think of it as their at-most
`argument, that the person of skill may have modified Raith to
`incorporate the grooves shown in the distance channels of EVH.
`This is at the top of slide 16. But then going to 17, what's in blue,
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`but they would not further import the horizontal distance channels
`from EVH into Raith.
`Similar issue with Yu and Raith in slide 16, in red the
`person of skill may have modified Raith to incorporate the tiles
`and associated snap-fit connection shown in Yu. Then going to
`slide 17, but would not substitute entirely new structural elements
`such as the cross rails from Yu into the Raith system. And we
`have the same thing with MacGregor where they have an at most,
`here is what the person of ordinary skill in the art would have
`done, but they would not have substituted the cross members
`from MacGregor.
`So what we are down to, you know, the small issue that
`we are down to is patent owner and Dr. Dix have already
`marched a whole long way down showing that claim 1 is obvious.
`They just don't agree that you would combine the prior art in a
`way that meets the claim limitations. That is, they would take
`part of what you have in EVH, Yu and MacGregor and
`incorporate it in Raith, but they don't take what it would need to
`meet the claim limitations.
`So to answer your question, Judge Daniels, the
`hypothetical that is being posed to Dr. Dix, it was from scratch, if
`you want to have the connecting strips and the horizontal
`members, and we give you all the prior art, what would you come
`up with. That was the hypothetical. So I agree with you that it
`wasn't a hypothetical of go build a modular wall system and we
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`would like the modular wall system to support components and to
`be able to be easily removed.
`But we didn't need to ask that hypothetical because
`DIRTT and Dr. Dix have already marched so far down the line of
`obviousness, we are just down to, all right, you would combine
`the references together. It's just when the person of ordinary skill
`in the art is combining the references together, why are they
`stopping where DIRTT says you would stop. I like to think about
`this as think about obviousness in some kind of a Venn-type
`diagram and you have all of the different ways that you can do
`combinations for obviousness, and overall, you are looking at the
`overall teachings and what those teachings would lead a person of
`ordinary skill in the art to do.
`A part of that analysis is what I consider to be a
`cut-and-paste or blueprint kind of analysis where you are
`physically taking one piece from one piece of prior art and
`putting it into another. So part of that analysis can include a
`cut-and-paste or blueprint analysis, but it isn't limited to that.
`Within that small universe of cut-and-paste and the
`overall realm of combinations that you can do, DIRTT has just a
`very, very limited cut-and-paste. They definitely limit
`themselves to cut-and-paste. In fact, I think they limit themselves
`to paste when I look at their arguments, that they are only adding
`things on. But they are limiting themselves to this very small
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`universe of what a person of ordinary skill in the art would do in
`making these combinations.
`These questions to Dr. Dix, Judge Daniels, were to get
`him out of the context where he was unduly limiting his analysis
`based on how he thought Raith limited a person of ordinary skill
`in the art. We were asking these questions for him to just think
`about a person of ordinary skill in the art, one of his senior
`mechanical engineering design students, and if they were
`combining the prior art, what are the different ways they would
`combine the prior art.
`And in fact, his testimony is very clear. It would not be
`limited in the way that he set out in his report and in the way
`patent owner has argued. So that to us is the relevance of this.
`We don't think it's case determinative, but we think that it is very
`good evidence from patent owner's expert that when you take him
`out of the confines of when he was working on his declaration,
`take him out of that, put him into an environment where he is
`working with a lot of people of skill in the art, how it is that those
`people react. And over and over he talked about all the
`combinations his students would come up with, and over and over
`he says this really doesn't take creativity. Does that answer your
`question?
`JUDGE DANIELS: Thank you, yes.
`MR. CARTER: Thank you. So what is left? Would a
`person of skill have combined the prior art in a manner that meets
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`the disputed claims as I have been discussing? We believe the
`answer to that is clearly yes.
`Once again, Raith takes out the vast majority of the
`limitations. No dispute about that. We are down to these very
`high-level limitations of horizontal stringers and an aesthetic
`surface with no to very little detail about what is required. You
`have the Raith reference teaching that you have these modular
`structural components may be easily assembled and disassembled
`with various head and base assemblies to create a variety of
`different screen or partition systems and still more particularly to
`such a partition system with accessory-supporting capabilities.
`JUDGE MEDLEY: Do you have testimony as to what
`that means? Are we talking like the very top of the wall and the
`very bottom of the manufactured wall or are we talking about just
`one panel?
`MR. CARTER: One panel at the very top and the very
`bottom. So for example, I forget what it is I was reading in the
`past 24 hours, but it talks about changing out the distance
`channels in EVH for the head and base assemblies. So it's the
`very top and the very bottom.
`JUDGE MEDLEY: Those aren't horizontal stringers.
`That's not your position?
`MR. CARTER: I'm sorry?
`JUDGE MEDLEY: Those would not be horizontal
`stringers?
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`MR. CARTER: In EVH, they would. In EVH, that
`bottom horizontal support is definitely up off of the ground. It is
`bolted into the end frames and it has the groove that receives the
`glass so that the glass is clearly affixed in that component. No
`dispute about that.
`JUDGE MEDLEY: So you are not relying on this
`description as horizontal stringers?
`MR. CARTER: No. This is in Raith. What we are
`relying on this for -- can you pull up the slide that has Figure 13
`from Raith? So Figure 13 of Raith that Mr. Sullivan is pulling up
`here, this is the figure in Raith that shows the different ways that
`somebody might want to configure a room. The teaching in all of
`the references is that you want flexibility. You want to be able to
`go into a room and say, I want glass here and then I want a solid
`panel and then I want a panel that is at the bottom solid and at the
`top glass, and then I want a panel that has a door, just teaching
`that you can have a variety of different screen or partition
`systems. So that's what that is going at when it's talking about the
`different head and base assemblies that you would use to create
`these different partitions.
`When you look at -- if you want to go back to the deck,
`please. When you look at EVH, Yu and MacGregor, those are
`providing other options for a person of skill in the art when they
`are looking at designing what do we want in our partition system.
`You know, they can have EVH with the glass that is fixed in
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`Case IPR2015-01691
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`differently on the bottom and that you can raise and lower. You
`have Yu that has the snap-in tiles and the horizontal that will hold
`furniture. And in MacGregor, it has the cover panels and the
`consumer electronics that will be affixed on those horizontals.
`So this is just pointing out -- and there's teaching in
`Raith why it is that a person of ordinary skill in the art is going to
`want to be looking for what can I do to have different screen or
`partition systems, which is then, as we see in slide 23, I just
`walked through what it is that these other references that are
`combined with Raith teach and add to that and why a person of
`ordinary skill in the art would be interested in using these.
`JUDGE MEDLEY: So in Raith, how is it that the glass
`partition is affixed? For example, in that Figure 13, I think it is --
`MR. CARTER: Right. Figure 13, there are cross
`sections. I don't think we have a slide of the cross section, but it
`does look like in the cross sections that it rests on something flat.
`And that is -- I mean, we do not use Raith as a 102 reference for
`that reason alone of is that glass affixed to that bottom member as
`opposed to resting on it.
`JUDGE MEDLEY: So like in the one panel, I believe I
`read in the reference it's like the second wall back where there's a
`piece of glass above the chair rail and it describes it as a chair
`rail.
`
`MR. CARTER: I'm going to point to it right here. Is
`that the one you are thinking of? I apologize to the people on the
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`video. We are on slide 95 looking at, I think that might be, 264 is
`the number.
`JUDGE MEDLEY: So how is that -- is that supported
`by the chair rail or is it supported strictly by the vertical pieces?
`MR. CARTER: There just isn't a lot of teaching of that.
`I don't think that's the point of Raith. We do know that it has
`channels in the verticals where the glass goes into. And we know
`that there's the teaching that you want to be able to with those
`removable connecting strips, you want to be able to take an entire
`wall panel out. You want it to hold together. You don't want
`pieces to be falling out of each other. That's the teaching of what
`it is that you are wanting. You want to be able to move it and put
`it someplace else.
`And that is in Mr. Beaman's deck and in our petition.
`You know, that's one reason why somebody would want to
`combine EVH is so that you have that good, firm connection for
`the glass in the horizontal using those distance channels.
`JUDGE MEDLEY: Is it that you really need it or it's
`just another way of doing that?
`MR. CARTER: I think it's another way of doing it and
`it's a more secure connection when you are moving these modules
`around.
`
`JUDGE MEDLEY: Okay. Thank you.
`MR. CARTER: Because the teaching for all of these
`references isn't that -- it's like what we have -- I don't know
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`exactly how this room is put together, but that it goes in a room
`and it's put together. You want to be able to go in and say, you
`know what, I don't want glass here. I want something with a
`whiteboard that's solid behind it and be able to take that whole
`panel and pull it out, move it, not have it fall apart and put
`another panel in its place.
`JUDGE MEDLEY: I'm sorry, you have 32 minutes.
`MR. CARTER: Thank you. So Dr. Beaman, in slides
`24, 25, 26, just some of his higher-level statements about why a
`person of ordinary skill in the art would have made these
`combinations. And then once again, we have the testimony from
`Dr. Dix talking about what it is that his students would be doing
`when they would be designing a horizontal structural support to
`connect it with the Raith connecting strip system in slide 27.
`The patent owner's analysis is flawed for four reasons.
`One is they rely on bodily incorporation arguments. Two, they
`limit the analysis based on what they see as the Raith
`manufacturing environment. Three, they limit the creativity of a
`person of skill. And last, they have an improper narrow
`interpretation of what it is that we argued in our petition and in
`Dr. Beaman's declaration.
`So first on bodily incorporation, slide 30, we are
`quoting from the institution decision where this panel recognized
`that the test for obviousness is not whether one reference can be
`bodily incorporated. Slide 31 shows analysis from Dr. Dix in his
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`Case IPR2015-01691
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`declaration where you can see how he's implementing this
`improper bodily incorporation where he is saying that if you
`would replace the chair rail assembly or base structure in Raith
`with the distance channel, there would be a gap. So he isn't
`allowing for any creativity at all for a person of ordinary skill in
`the art to put something in place to fill that gap.
`Obviousness does not have to be just a cut-and-paste
`and what do you end up with. That's clear when you look at --
`these are just examples. I'm on slide 31 for Raith and EVH. At
`slide 32, he has the same analysis for Raith and Yu and Raith and
`MacGregor. And he confirmed this, Dr. Dix confirmed this in his
`deposition, as we see in slide 33, when he was asked -- when he
`is looking at how he would put physical structures of EVH into
`Raith.
`
`Patent owner, in their reply, said only components that
`can be physically incorporated into that structure can possibly
`satisfy claim 1 of the '901 patent. And that's just an improper
`recitation of the law.
`We've talked about the Raith manufacturing
`environment. Slide 36, Dr. Dix was clear that his answers were
`in the context of Raith and being in the Raith manufacturing
`environment. And he was asked if his analysis was limited to
`analyzing what a person of skill would do within the confines of
`the principles of the Raith system. He said, That's the way I
`understo
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