trials@uspto.gov
`571-272-7822
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`IPR2016-00060, Paper No. 35
`January 12, 2017
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`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`ANCESTRY.COM DNA, LLC,
`Petitioner,
`vs.
`DNA GENOTEK INC.,
`Patent Owner.
`- - - - - -
`Case IPR2016-00060
`Patent 8,221,381 B2
`Technology Center 3700
`Oral Hearing on Tuesday, December 6, 2016
`
`Before: WILLIAM V. SAINDON, HYUN J. JUNG, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday,
`December 6, 2016, at 10:02 a.m., Hearing Room B, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY RAYMOND G. BRYNTESON, RMR, CRR,
`
`RDR
`
`
`571-272-7822
`
`IPR2016-00060, Paper No. 35
`January 12, 2017
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`ANCESTRY.COM DNA, LLC,
`Petitioner,
`vs.
`DNA GENOTEK INC.,
`Patent Owner.
`- - - - - -
`Case IPR2016-00060
`Patent 8,221,381 B2
`Technology Center 3700
`Oral Hearing on Tuesday, December 6, 2016
`
`Before: WILLIAM V. SAINDON, HYUN J. JUNG, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday,
`December 6, 2016, at 10:02 a.m., Hearing Room B, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY RAYMOND G. BRYNTESON, RMR, CRR,
`
`RDR
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`DANIEL M. BECKER, M.D.
`JENNIFER R. BUSH, ESQ.
`Fenwick & West LLP
`801 California Street
`Mountain View, California 94041
`650-998-8500
`
`MICHAEL SACKSTEDER, ESQ.
`Fenwick & West LLP
`555 California Street, 12th Floor
`San Francisco, California 94104
`415-875-2300
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`ON BEHALF OF THE PATENT OWNER:
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`
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`BRIAN M. KRAMER, ESQ.
`JOHN R. LANHAM, ESQ.
`Morrison Foerster LLP
`12531 High Bluff Drive, Suite 100
`San Diego, California 92130-2040
`858-720-5100
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
`
`
`P R O C E E D I N G S
`
`(10:02 a.m.)
`JUDGE WORMMEESTER: Good morning. This
`morning we have our final hearing in IPR2016- 00060,
`Ancestry.com DNA v. DNA Genotek Inc. which concerns U.S.
`Patent Number 8,221,381.
`I'm Judge Wormmeester. To my right is Judge
`Saindon and to my left is Judge Jung.
`Let's get the parties' appearances, please. Who do
`we have for Petitioner?
`MR. BECKER: Daniel Becker. I'm lead counsel
`for Petitioner. I'm joined by backup counsel, Jennifer Bush,
`and my partner, Mike Sacksteder. Mr. Sacksteder has been
`admitted pro hac vice and he will be arguing for Petitioner.
`JUDGE WORMMEESTER: Okay. Thank you.
`Good morning, counsel. And for Patent Owner who do we
`have?
`
`MR. KRAMER: I'm Brian Kramer with Morrison
`& Foerster LLP. With me today is Mr. John Lanham, who is
`admitted pro hac vice to this case.
`JUDGE WORMMEESTER: Okay. Thank you.
`And you will be presenting today?
`MR. KRAMER: I will, Your Honor.
`JUDGE WORMMEESTER: Welcome. It is good to
`have you here. We set forth the procedure for today's hearing
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`in our trial order, but just to remind everyone the way this will
`work, each party will have 30 minutes to present arguments.
`Petitioner has the burden and will go first and may reserve
`time for rebuttal. Patent Owner will then have the opportunity
`to present its response.
`We remind you that the demonstrative exhibits that
`you submitted are not part of the record. The record of the
`hearing will be the transcript. We will give you a warning
`when you are into your rebuttal time or reaching the end of
`your argument time.
`Are there any questions before we proceed?
`MR. SACKSTEDER: No, Your Honor.
`JUDGE WORMMEESTER: Mr. Sacksteder, will
`you be reserving any time?
`MR. SACKSTEDER: I will be reserving five
`minutes, please. And, Your Honors, before we get started, the
`parties have, with the Board's permission, made kind of a joint
`request that Mr. Kramer will address.
`JUDGE WORMMEESTER: Sure.
`MR. KRAMER: Thank you, Mr. Sacksteder. We
`wanted to inform the Board that the parties are close to
`settling the case and that we expect that there will be a motion
`to dismiss filed at some point between now and perhaps the
`end of January.
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`Of course the Board can issue its opinion whenever
`the Board sees fit, but we would ask that the court not do so
`significantly in advance of its statutory deadline. To do so
`that would help facilitate finalization of the settlement
`agreement. We've agreed to proceed today to proceed with the
`IPR hearing, but we thought that it would be perhaps
`beneficial for the Board to know that we do expect that there
`may be a dismissal filed shortly in this case.
`JUDGE WORMMEESTER: Okay. Thank you.
`JUDGE JUNG: Sorry, you expect that to be filed
`within, or the request made within a couple weeks, or a
`month? What time frame are we talking about here?
`MR. KRAMER: I think that it is safe to say we
`expect it to be done before the end of January, hopefully
`before the end of December. The parties are at that stage of
`exchanging settlement drafts but we are close to settlement.
`We have had a Markman hearing on Friday before
`the District of Delaware and we said the same thing to the
`District Judge in that case who has a deadline of January 17th
`to issue a Markman ruling in a related litigation. The parties
`made the same representation to that court, too.
`JUDGE JUNG: Thank you.
`JUDGE WORMMEESTER: All right. So you will
`have about 25 minutes. You can begin when you are ready.
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`MR. SACKSTEDER: Thank you, Your Honors.
`Good morning. As I said, I'm Michael Sacksteder. I'm from
`Fenwick & West and I represent Ancestry DNA, Ancestry.Com
`DNA.
`
`Can we go to slide 2. The patent at issue here is
`the '381 patent. It is drawn to a container system for
`releasably storing a substance, that includes a lid with a
`membrane for initially holding the substance within the lid and
`then there are piercing members in the vial when the lid is
`attached to the vial and --
`JUDGE SAINDON: Counsel, can I jump in just for
`a second here? Were these slides submitted?
`MR. SACKSTEDER: Yes, they were.
`JUDGE SAINDON: To the trial's email box?
`MR. SACKSTEDER: Yes, they were. Do you not
`have them?
`JUDGE SAINDON: Just one second. Let me
`double-check here. If not, it won't be an issue.
`MR. SACKSTEDER: I apologize. We intended to.
`I didn't personally file them but the people who did tell me
`they did. So if there was a problem I apologize for it. And,
`unfortunately, since we thought you had them, we did not
`bring our own copies for you. I apologize for that as well.
`Are we okay?
`JUDGE SAINDON: Please proceed.
`
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`Patent No. 8,221,381 B2
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`MR. SACKSTEDER: All right. So when the lid is
`attached and moved to piercing position, then the membrane
`for the reservoir is pierced and the substance comes down into
`the body of the vial.
`Slide 3, please. The claim, the primary
`independent claim that we are addressing is claim 1. I'm not
`going to read it.
`Let's go to slide 4. And then the primary reference
`is the O'Donovan patent. The grounds for institution are that
`it anticipates claims 1, 2, 4, 5, 8, 11, 12, 15, 16, 17, 20, 41, 44
`and 49. As you can see there is, again, a vial called a cuvette
`or chamber 2 sometimes in the O'Donovan patent.
`There is a lid or chamber 3 which is pushed down
`using a friction fit. The spikes in the tube vent pierce the
`membrane, it's a foil membrane, and the substance that is in
`the lid comes down into the vial.
`Slide 5, please. And then the second ground is
`obviousness, O'Donovan and a reference that we have called
`KCCL, rendering obvious claims 1 and claim 7.
`Next slide, slide 6, please. Just a quick road map.
`First, I'm going to briefly address what I think we don't have
`to address, and that is arguments that I believe there is no
`dispute have been waived, and then address the arguments that
`are actually at issue today. One, whether O'Donovan discloses
`the limitation “configured to removably engage” and, second,
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`whether there is sufficient motivation to combine O'Donovan
`and KCCL in ground 2.
`And we believe that the Patent Owner presents no
`legitimate challenge to the Board's Institution Decision
`finding that the claims that are instituted are invalid.
`Slide 7, please. Slide 8. So this is briefly talking
`about what we think we don't need to talk about, the
`Institution Decision found Petitioner's arguments concerning
`anticipation to be persuasive.
`Slide 9. Specifically, I'm not going to read the
`slide, but the slide goes through, and you will ultimately get it
`if you haven't gotten it already. It goes through the Board's
`Institution Decision concerning the limitations that are
`disclosed by O'Donovan.
`Slide 10, please. The one issue in claim 1 that
`remains is the question of whether O'Donovan discloses a lid
`configured to removably engage said vial, said lid comprising,
`but I don't think there is a dispute over that.
`Slide 11. So, again, that's the only limitation that
`we believe is at issue for claim 1.
`Slide 12. Slide 13. Again -- slide 14, the Patent
`Owner's Response, although there were additional issues
`raised in the preliminary response, these issues were not raised
`in the Patent Owner Response with the exception of the ones
`that I have mentioned.
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`The Patent Owner's response doesn't mention or
`address any other limitations besides the “configured to
`removably engage” or any of the limitations in the
`combination of O'Donovan and KCCL for claim 1 and claim 7
`in ground 2.
`Slide 15. So as we argued in our reply, we believe
`that the Patent Owner has waived their arguments under the
`SAP/Versata case.
`Slide 16. So the first issue is whether O'Donovan
`discloses “configured to removably engage.”
`Slide 17. In the Institution Decision the Board
`found that that limitation was present, specifically focused on
`some things that I am going to argue in more detail as we go
`along, but the optional cover, and the friction fit that is the
`mechanism for removably engaging. Patent Owner now argues
`a different claim construction of this. We are calling it
`limitation 1- 6.
`Slide 18. So the Petitioner's claim construction
`position is that it is plain meaning, that the lid can be attached
`in various ways and later removed. The Institution Decision
`concluded that no term requires interpretation at this time.
`Patent Owner has taken three different positions, if
`you look at the litigation that is running in parallel with the
`IPR, and also in the preliminary response and the Patent
`Owner's Response.
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`Slide 19. The litigation position is the first one,
`and it is basically consistent with the plain meaning
`construction that has been given in this case. The litigation
`position is one that came up in arguments that were raised and
`evidence that was presented by an expert in connection with
`the preliminary injunction motion that was filed in the
`litigation.
`And specifically the Spectrum product is --
`Spectrum is a supplier for Ancestry, so there are multiple
`lawsuits, one of which relates to Spectrum and there was a
`preliminary injunction motion in that case.
`And the expert declaration that addresses that just
`simply says that this limitation is a lid configured to
`removably engage said vial, and argued that when the
`Spectrum product arrives at the lab, the lab staff removes the
`lid and assesses the sample.
`In other words, you can remove the lid. There isn't
`anything further about that in the intended use or inherent
`features or anything that has come up since then.
`Slide 20.
`JUDGE SAINDON: Counsel, do we have a picture
`of that product just to know what the context was?
`MR. SACKSTEDER: A picture of the accused
`product? We do not. The accused product actually -- I don't
`know if Mr. Kramer will agree with me -- but the accused
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`product looks basically like the KCCL product. It has a
`piercing insert in the lid of the vial, which when the lid is
`screwed onto the vial then the piercing insert is pushed up by
`screwing it on.
`JUDGE SAINDON: So it is threaded?
`MR. SACKSTEDER: Exactly, yes.
`MS. BUSH: If we actually have it, if they wanted
`to see it, they can bring --
`JUDGE SAINDON: If it's not of record, then --
`MR. SACKSTEDER: Okay. I don't believe it is.
`
`Is it?
`
`MS. BUSH: Exhibit 1003, at 46.
`JUDGE SAINDON: If you could just repeat at the
`microphone what the cite was?
`MS. BUSH: Layton declaration, Exhibit 1003 at
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`46.
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`MR. SACKSTEDER: Exhibit 1003 at 46,
`paragraph 46.
`MS. BUSH: Right.
`JUDGE SAINDON: Thank you.
`MR. SACKSTEDER: And that's the insert, right,
`that doesn't show the whole accused product. Is there another?
`MS. BUSH: I will see.
`MR. SACKSTEDER: So, anyway, just to move
`along if we could. In the preliminary response Patent Owner
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`did not really argue that “configured to” had any special
`meaning in the phrase that is in question. Instead argued that
`the Petitioner's argument conflates engaged with removably
`engaged and, thus, reads removably out of removably engaged.
`So the term is getting longer as we go along.
`Slide 21. In the Patent Owner's Response, then we
`see, and this is the first time, we see that the argument is that
`the broadest reasonable interpretation does not include a lid
`that can attach to a vial and is merely capable of later
`removal. This contradicts the litigation position where the
`argument was you can remove the lid and so it is configured to
`be removably engaged.
`Slide 22. So slide 22 just shows side-by-side the
`three positions that Patent Owner has taken.
`Slide 23. So slide 23, again, is just, you know, it
`is our position that failure to submit the position from the
`litigation is not consistent with 35 USC 301(a)(2), which
`encourages submission of claim construction positions.
`Now, this was technically an infringement
`argument but it relied on the claim construction that is just
`that you can remove the lid and that means it is configured to
`be removably engaged.
`Slide 24. So there are a number of arguments
`regarding this claim limitation that are now raised for the first
`time in the Patent Owner Response. There are a couple of
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`them relating to claim construction, one relating to
`consideration of the intended use of the product, and one
`arguing that there must be an inherent feature for removal.
`And then there are a number of sort of factual
`issues that I also would like to discuss concerning whether
`factually O'Donovan does disclose “configured to removably
`engage.”
`
`Slide 25. So in the Patent Owner's Response,
`Patent Owner newly argued that “configured to” is informed
`by the intended use. Dr. Collins, who is Patent Owner's
`expert, admitted that he can't think of any two- piece assembly
`that can't be separated in some way.
`26. That is just his testimony. I'm not going to
`read it into the record but he says that it is correct that
`when -- he always inserts the context of how the device is
`intended to be used, and it is correct that the lid and vial in
`O'Donovan can be removed from one another.
`Slide 27. But in the Ex Parte Masham case, it is
`clear that when you have an apparatus or system claim that it
`doesn't matter what the intended use is. The question is
`whether the reference actually discloses the limitation, not
`whether it discloses it within some particular context.
`Slide 28. So there are two arguments that we
`believe mischaracterize either the legal precedent or
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`selectively rely upon evidence that is not shown in full, and
`we have tried to show it in full.
`First there is the question of whether the lid must
`have an inherent feature for removal. And the second is
`whether this coefficient of friction, which according to Patent
`Owner makes it harder to pull the lid out than to put it in, one,
`that it has any bearing and two, whether that is even accurate.
`Slide 29. So there is an argument in the Patent
`Owner's Response that “configured to” requires presence of an
`inherent feature. The quote in the middle is the quote from the
`response.
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`It said the Federal Circuit held the term, the,
`quote, term mountable is a modifying word in, ellipses,
`mountable picture frame, close quote, and that broader words,
`quote, such as capable of, were absent from the claims, close
`quote.
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`That implies a distinction between broadening
`terms and “configured to.” The problem is that if you look at
`the actual Profectus case, slide 30, the full sentence says:
`Absent from the claims are words that embrace broader
`meaning, such as “capable of,” “adapted to,” or “configured
`to.” In other words, saying that “configured to” is a term that
`actually broadens the meaning, not that it narrows it.
`Slide 31. So before we go into the coefficient of
`friction, I do want to point out that in our reply we point out
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`that there is a feature that causes the lid in O'Donovan to be
`configured to be removably engaged. And that is the friction
`fit itself.
`
`There is also the tapered socket that the friction fit
`goes into. And we will discuss that a little bit more in a
`moment. But it is designed to be -- it is configured or
`designed to be removably engaged because it is a friction fit.
`It is not some other fitting that is locked in. And, in fact,
`there is the optional cover which we will also discuss later on
`which does lock in the lid if you want to.
`So, anyway, getting back to the coefficient of
`friction, there is an argument -- if we can go to slide 32 --
`there is an argument based on a test method for static and
`kinetic coefficients of friction document, that Patent Owner's
`expert relied on to show, at least my understanding is, the
`attempt is to show that it is harder basically for a plastic
`component to be removed, requires more force, than it does to
`insert it.
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`So that is contradicted by the document itself.
`Slide 33. And it also is not relevant, which I think is in slide
`31, which I skipped over a little bit, but it is also not relevant
`because it doesn't matter if you can -- if it is harder to pull it
`out than it is to put it in. It just matters that it is designed so
`you can pull it out.
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`I have more difficulty pulling the cork out of a
`wine bottle than I have putting the cork back in, except for my
`motivation for doing so.
`But that doesn't mean that the cork is not
`configured to be engaged and removably engaged. It is not
`configured so I can take it out. So, anyway, there is also an
`issue with the article on which Dr. Collins relied.
`Let's go to slide 33. This is the part -- Table 2 is
`the part that Dr. Collins relies on. It is some testing that was
`performed at 38 degrees Celsius, which is approximately 100.4
`degrees Fahrenheit. And it shows that for a particular
`polyethylene material that the coefficient of friction is higher,
`the static coefficient is higher than the kinetic or dynamic.
`Slide 34. But in slide 34, we see that that is not
`the only table in the article. There is another table, Table 1,
`which is testing performed at 23 degrees Celsius, which is
`approximately 73.4 degrees Fahrenheit, which is much closer
`to room temperature. And, again, it is a kind of polyethylene
`plastic.
`
`And that shows that within the margin of error that
`actually the static coefficient of friction is lower than the
`dynamic coefficient of friction. So not only is the evidence
`that is submitted by Patent Owner not relevant, but it also is
`not supportive of Patent Owner's position.
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`Slide 35. Slide 35, and the next few, slide 36,
`slide 37, slide 38, I think those slides actually are just the
`testimony which are referenced also in our reply that show Dr.
`Collins admitting that the article is authoritative, at least in
`his mind, and ultimately that the static coefficient in Table 1
`shown for the particular polyethylene is higher, or, rather,
`lower than the dynamic coefficient in that same table.
`JUDGE JUNG: Mr. Sacksteder, before you go on,
`I have a question about the claim construction. Is my
`understanding correct that Petitioner's position is no matter
`what the construction of “configured to removably engage” is,
`the underlying facts support Petitioner's position?
`MR. SACKSTEDER: That's correct.
`JUDGE JUNG: So you don't believe this Panel
`needs to actually construe “configured to removably engage?”
`MR. SACKSTEDER: Well, the Panel has not done
`so thus far. I think that if the Panel -- I think the correct
`construction does not require an inherent feature. But even
`under the construction that is advanced now by the Patent
`Owner, we think that the O'Donovan reference satisfies that.
`JUDGE JUNG: Thank you, Mr. Sacksteder.
`JUDGE SAINDON: Counsel, I have another
`question for you. So let's picture a lid that is not configured
`to be removably engaged. That would be something in your
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`mind that is designed specifically not to be engaged -- not to
`be removed?
`MR. SACKSTEDER: Sure, something that is
`
`locked in.
`
`JUDGE SAINDON: And anything that -- anything
`less than locked is removably engaged?
`MR. SACKSTEDER: I don't know if I would say
`that as a blanket statement, but when the connection is a
`friction fit I would say that's true. A friction fit is something
`typically that you can pull out.
`Our expert testified, you know, he tried to think of
`whether he could think of anything, any situation where you
`could not remove a lid that was a friction fit. He couldn't
`think of anything but he didn't foreclose the possibility.
`But Patent Owner's expert testified that even the
`lid in the O'Donovan, you know, under, you know, he said
`circumstances outside the intended use, but that you could
`remove the lid.
`JUDGE SAINDON: So, counsel, let's say that we
`were to agree that friction fit lids are generally removable.
`One potential issue I see is with the specific configuration of
`O'Donovan and specifically the shroud that surrounds the cap
`once it is inserted. I'm looking at figure 2 of O'Donovan but I
`think the other figures more or less show the other thing.
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
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`And if that shroud weren't there I could see how it
`would be pretty easy to just yank the cap right back off, but as
`it is right now there's -- I'm having a hard time thinking about
`how this is still removable because, you know, you can't --
`there is no place to grab onto with your fingers. If there was a
`tool or something that did it, you know, there could be grooves
`or something specific to be able to pull it out. Whereas, this
`is more or less a flush fit and the shroud is more or less
`covering up the entire lid.
`So can you speak to that?
`MR. SACKSTEDER: Sure. We have slides on
`that, coincidentally.
`JUDGE SAINDON: Great.
`MR. SACKSTEDER: So a couple of things: One,
`it requires a fairly close reading of the claim, which is, of
`course, what we do. And the removably engaged -- can we
`have the slide? We're looking at slide 45 right now for the
`record.
`
`So slide 46 shows the limitation 1.9, wherein when
`said system is closed by removable engagement of said vial
`with said lid, said vial and said lid are movable to a piercing
`position, i.e., they are not yet there, in which the piercing
`member disrupts the pierceable membrane to allow fluid
`communication between said reservoir and said chamber.
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`Patent No. 8,221,381 B2
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`So what 1.9 says is that you put the cap on part
`way or you insert it part way and at that point it is removably
`engaged. And then it is movable to a further position, which
`the claim recites as piercing position. And when it is not fully
`inserted, it is something that we don't concede at all that doing
`it with your fingers is what is required but you could remove it
`with your fingers when it is not pushed all of the way in.
`Slide 47 --
`JUDGE WORMMEESTER: Counsel, when you
`first put the lid on, is that where the friction fit starts?
`MR. SACKSTEDER: That's our position, yes, that
`you start to put it in, it starts to engage, it's a tapered socket,
`so at some point it starts to hit the walls and at that point
`that's where the friction fit starts. It is completed when you
`push it all of the way in, and that also pierces the membrane.
`JUDGE SAINDON: So once it, if this is a
`two-stage -- so it is a removably engageable lid at the top and
`then, once it gets pushed in all of the way, no longer
`removable?
`MR. SACKSTEDER: I don't think --
`JUDGE SAINDON: Not going that far?
`MR. SACKSTEDER: I don't think that that is
`correct either, Your Honor, respectfully. So we can address
`that as well if there are no questions, further questions about
`the first argument there.
`
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`Case IPR2016-00060
`Patent No. 8,221,381 B2
`
`
`If we can go to slide 47. So then there was
`testimony from Dr. Collins that the lid is flush with the vial.
`Now, there is an illustration of one embodiment where the lid
`is flush with the vial.
`That is not necessarily the only embodiment that is
`required by the O'Donovan reference. And there is nothing in
`the text of the specification of O'Donovan that says anything
`about where the top of the lid has to be with regard to the
`bottom.
`
`Slide 48. There was also an argument by Dr.
`Collins that the gap between the lid and the vial is very small.
`He didn't do anything to determine how small it was. He, in
`his words -- actually my words which he agreed with -- he
`eyeballed it and said, well, that looks pretty little.
`But then going on to 49, and then the other
`assumption is that you have to do it by hand, you know, he
`said there is no way to get ahold of it and pull it out with my
`fingers. But that is not required.
`And, in fact, on slide 50, it shows that the '381
`patent actually teaches using robotic tools. The one that is
`referenced and disclosed in the '381 is something called the
`Beckman Biomek FX product. And we submitted
`documentation for that product and they have something called
`a gripper that actually places lids on and removes lids from lab
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`Case IPR2016-00060
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`ware. So these can be removed by a machine as well as by
`fingers.
`
`So the speculation of the expert about whether he
`could remove it with his fingers or not we don't think is
`relevant to the determination.
`Slide 51. Dr. Collins also admitted that robotic
`tools could be used.
`Slide 52. So, again, these sub- arguments in our
`view are not relevant anyway because that is what happens
`after the lid is placed in piercing position, which is something
`that happens after it is removably engaged. Slide 53.
`Okay. So that's it for the “configured to
`removably engage” limitation. Any further questions or may I
`move on?
`
`JUDGE WORMMEESTER: I have one question.
`On the O'Donovan, column 2, lines 63 to about 66, it says the
`spikes 20 are located so that there is just enough space for the
`rim 11 of the chamber 3 to fit between the spikes 20 and the
`wall of the socket 6 with the friction fit.
`So it seems to suggest that the friction fit is when
`the rim is between the spikes and the wall of the socket?
`MR. SACKSTEDER: I would say the complete
`friction fit is at that point where you have not just a contact
`with the inner wall of the socket but also a contact, you know,
`where the lid is between the inner wall of the socket and the
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`Case IPR2016-00060
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`spikes, but that doesn't mean there isn't friction fit that is
`occurring before that.
`JUDGE WORMMEESTER: Okay.
`MR. SACKSTEDER: And one thing, if we could
`go back to slide 40 for a moment, just one argument, since we
`skipped ahead a little bit. Here the argument is the optional
`cover that is disclosed. And the Board specifically points this
`out.
`
`In O'Donovan it says that there is an optional cover
`that would ensure that the lid is held in place in the socket,
`which implies that it can be removed. And the Board agreed
`with that, that position. So now we can go back to 53.
`Okay. So now on 53 we will start talking about the
`motivation to combine O'Donovan and KCCL in ground 2.
`That is just two claims, claim 1 and claim 7. In claim 7, I
`don't have the exact wording in the slides, but it has to do with
`whether the top and the bottom of the vial are equivalent in
`size.
`
`Slide 54. So, first, there is no contention by Dr.
`Collins that all limitations of claim 1 are not found in the
`combination of O'Donovan and KCCL. It is not found in his
`declaration submitted with the Patent Owner's Response.
`Slide 54 -- 55, I apologize. He also admitted in
`the Spectrum litigation that KCCL's lid satisfies the removably
`engaged limitation.
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`JUDGE WORMMEESTER: Counsel, I will give
`you about two more minutes.
`MR. SACKSTEDER: Okay. Thank you. Two
`more minutes before I hit my rebuttal time? All right. Thank
`you.
`
`56. Patent Owner didn't challenge that all of the
`limitations of claim 7 are found in the combination of
`O'Donovan and KCCL. As you can see from KCCL's figure,
`the top and bottom are approximately equivalent. Dr. Collins
`doesn't say anything about claim 7's limitations in his
`declaration. And that is shown on slide 56 with his testimony.
`Slide 57. So there is an argument that combining
`O'Donovan's vial with KCCL's vial would render the device
`inoperable because O'Donovan's spikes are in the vial and
`KCCL's spikes are in the lid. We are not saying that KCCL's
`vials should in its entirety be combined, you know, with
`O'Donovan's lid, and that you don't still have the spikes in the
`vial.
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`All we're saying is that KCCL teaches that you can
`have a vial in a combination where there is a reservoir in the
`cap where the top and the bottom are roughly the same size.
`Slide 58. There is a position in litigation, we don't
`agree with it, but Patent Owner has argued that the timing of
`when the spikes are in the vial does not matter. It is our
`position that the spikes are in the vi
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