`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KRANOS CORPORATION,
`Petitioner,
`v.
`
`RIDDELL, INC.,
`Patent Owner.
`____________
`
` IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
`____________
`
`Record of Oral Hearing
` Held: November 7, 2017
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN , BARRY L. GROSSMAN,
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`JAMES J. LUKAS, JR., ESQ.
`BEN GUILFORD, ESQ.
`Greenberg Traurig, LLP
`77 West Whacker Drive, Suite 300
`Chicago, IL 60601
`312.456.1038
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`CHRISTOPHER M. SCHARFF, ESQ.
`HANK SPUHLER, ESQ.
`Mcandrews Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`312.775.8000
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, November
`7, 2017, at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia.
`
`
`
`
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`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE GROSSMAN: We're here this morning
`for the combined hearing in three cases, IPR2116-01646,
`01649 and 01650. I know we have some
`demonstratives. Have you given a copy of the
`demonstratives to the court reporter?
`MR. SCHARFF: We have, Your Honor.
`JUDGE GROSSMAN: Thank you. We have
`electronic copies and we also have electronic access to
`all the record on the screen, so if you see us looking at
`the screen or typing something, it's not that we're not
`paying attention, we're making some notes on our copies
`of the record.
`We sent out a trial order that laid out the basic
`ground rules. I'll just mention them very quickly.
`Petitioner, you have the burden of proof and you will
`proceed first to present your case. You will have 60
`minutes. You can reserve some of rebuttal time.
`After the Petitioner finishes its initial argument,
`Patent Owner will have 60 minutes to respond and after
`the Patent Owner concludes, the Petitioner may use its
`rebuttal time, if any, to respond to the Patent Owner's
`arguments.
`One administrative matter, just to clarify, is we
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`have -- there are no outstanding motions on evidence or
`things like that, except there is a motion to seal that is
`still outstanding. And the same motion has been filed in
`all three cases. We will issue an order in 1646 and 1650,
`but it looks like there's a little glitch in the 1649 motion
`that I will bring to your attention and we can fix at some
`later time. In that, in 1649, the motion is the Petitioner's
`unopposed motion to seal the deposition transcript of
`Nicholas Shewchenko, which in case 1649, is paper
`number 18. Paper number 18 refers to case 1646, not
`1649. It refers only to the evidence that was filed in
`1646 by exhibit number. It refers to the patent in 1646
`by patent number and there's no reference that it relates
`in any way to 1649. So either 1649 doesn't need the
`motion to seal because right now the record in 1649
`doesn't have copies of the deposition transcript, they're
`not even filed in 1649. So I will leave to the parties to
`figure out whether the motion was filed in 1649 in error
`or whether you still need a motion in 1649. And if you
`do, you have authorization to file that and we'll consider
`it when filed.
`Having taken care of that, let me first have --
`before we begin the formal presentation, I'll let the
`parties identify themselves for the transcript and we'll
`start with the Petitioner.
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`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`MR. LUKAS: Good morning, James Lukas on
`behalf of the Petitioner, Kranos Corporation, d/b/a
`Schutt Sports; with me is Ben Guilford.
`JUDGE GROSSMAN: Will you be doing the
`argument?
`MR. LUKAS: I'll be doing the argument on
`IPR1646 and 1650. I believe we'll be starting with that.
`And then Mr. Guilford will be doing the 1649.
`JUDGE GROSSMAN: For Patent Owner.
`MR. SCHARFF: Christopher Scharff, back-up
`counsel for Patent Owner, Riddell, Incorporated. And
`with me is Hank Spuhler, lead counsel. I will also be
`doing the argument for 1646 and 1650 and then I'll
`switch it over to Mr. Spuhler to discuss the 1649 matter.
`JUDGE GROSSMAN: Okay. Petitioner, I'll let
`you make your way to the podium and as you're doing
`that, I'll ask if you want to reserve any rebuttal time.
`MR. LUKAS: We'll preserve 15 minutes, Your
`Honor.
`JUDGE GROSSMAN: You may proceed.
`MR. LUKAS: Good morning, Your Honors,
`James Lukas, on behalf of the Petitioner, Kranos
`Corporation, d/b/a Schutt Sports. I'm going to be talking
`about the '118 and the '818 Patents, IPR1646 and 1650
`as shown. We have a lot of background slides. I'll
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`trying to through it rather quickly and get to the more
`important issues at hand, but I think some of it is
`important because of the grounds of anticipation and
`obviousness. This is just the background on the actual
`claims at slides 3 and 4, that were instituted.
`Why don't we show an exemplary claim of the
`'118 Patent at slide 5 and then exemplary Claim 41 of
`the '818 Patent at slide 6. At slide 7 we just presented an
`overview. I kind of want to go through that briefly at
`slide 7 on the instituted claims of the '118 Patent. On the
`left it shows all the claims. They're instituted as
`anticipated by Sears and then you also see the three
`combinations that were also instituted on under
`obviousness, Sears and Halstead, Rappleyea and
`Halstead and Monica and Halstead and that's for the '118
`Patent.
`Then for the '818 Patent, slide 8, this shows the
`three grounds that were instituted for the '818 Patent,
`Sears and Halstead again, Rappleyea and Halstead again
`and Sears, Halstead and Marietta for Claims 58 and 64.
`I think we present a quick overview of one of the
`exemplary claims, because I think it's really important to
`look at what's actually claimed by an exemplary claim,
`instituted claim. A plastic shell, we've highlighted that,
`an ear flap, a face guard and face guard connector, a chin
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`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`strap and a raised central band in the shell and first
`priority of vent openings aligned along the first side of
`the raised central band. That's all Claim 25 of the '118
`Patent.
`What's important, to just give context of the whole
`analysis, at slide 15 is that in the actual specifications of
`the '118 and the '818, the Patent Owner admits that all of
`this is known in the art, just about everything -- there's
`clear admissions in the specification at slide 15 that an
`outer shell, a plastic shock absorbing liner, a face guard,
`a chin protector, a chin strap and ear flaps are all known.
`What we've done here, highlighted Fig. 1 of the '118
`Patent, shown all the clear admissions in the
`specification of the '118 and the '818 of what's in the
`prior art.
`In fact, if you look right at the '818 Patent at
`Column 1, Lines 40 to 50, I'm looking at the second
`paragraph, the Patentee admits that the overall
`configuration and shape of a football helmet has
`remained the same for many years. So we're talking
`about, when we get into this, we're talking about macro
`level of features of football helmets that have been
`around since the '20s, the '30s, the '40s.
`I can show you examples, it's just to give context,
`there's leather helmets with raised center bands, there's
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`leather helmets from the '30s, '40s, with lined vent holes,
`so this is all known on the art.
`JUDGE GROSSMAN: Is that evidence in this
`
`case?
`
`the --
`
`MR. LUKAS: No, just context. Consistent with
`
`JUDGE GROSSMAN: Is there any evidence to
`support what you've just said about aligned vent holes
`and raised bands and leather helmets and all that stuff, I
`understand your argument, but is there evidence you
`could point us to?
`MR. LUKAS: I don't think there's specific
`evidence. Clearly there's the prior art that's an issue.
`Obviously, those are not leather helmets. Just to give
`you the overall -- it's consistent with the statement the
`overall configuration and shape of the football helmet
`has been the same for like 40 years, no leather helmets in
`the art.
`JUDGE GROSSMAN: Are there any vent holes
`that are aligned that are shown in those older helmets?
`MR. LUKAS: I do not believe that's accurate. I
`don't think we talked about leather helmets. It's not
`really necessary because of the prior art and plastic
`helmets and because of specific limitations that talk
`about plastic. But anyway, that gives you some
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`background at slide 15.
`And then slide 16, because as I pointed out, the
`only admissions you don't get directly in the spec are a
`raised center band and vent holes. They don't actually
`say that those are in the art. So those are not highlighted
`at slide 15.
`But then we go to that, clearly, raised center band,
`the Patent Owner's expert admits that a raised center
`band was known in the art. The Patent Owner used a
`raised central band or a iconic ridge, raised ridge, and
`that was like kind of the Patent Owner's expert admits
`that that was like their mark for Riddell helmets. They
`had this raised central ridge or central band in their prior
`helmets, so that comes up.
`Patent Owner's expert also admits vent holes at
`the top of the helmet, known in the art, elongated vent
`holes, known in the art, and also vent holes on the sides
`of the raised central band. He says, at slide 16, the
`question multiple vents on each sides of the vent,
`correct. That was known in prior art, yes. So what we're
`doing here at slide 16 is showing you that, in
`combination, you have the specification right off the bat
`admitting almost all of the elements of the instituted
`claims known in the art, have been known for a very
`long time and then you have Patent Owner's expert
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`filling in the remaining, the raised central band and the
`vent holes, because there's no explicit admission on that
`in the specification.
`Going to get in, briefly, to the claim construction
`first. There's only really two issues that have been
`raised, integrally formed, the claim construction
`integrally formed and also aligned along is the other
`term.
`
`Let's talk briefly about integrally formed at slide
`17. Petitioner's constructions constructed or attached
`together is a single or integrated unit. And then Patent
`Owner's construction does not include a separate
`element attached to the shell. The claimed terms in the
`claims state integrally formed as part of the shell. We
`just cite some law at slide 18, integrally formed known
`by the Federal Circuit and other cases as meaning as
`long as they're constructed or attached as a single or
`integrated unit. That's what integrally formed means.
`At slide 18, these cases support that.
`At slide 19, very limited disclosure of integrally
`formed. As you can see from the prosecution, it was not
`included in the original provisional application or the
`original application for the '118. And what happened is
`it was added to a claim to get around some prior art later
`on. So there's very limited support for the word
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`"integrally formed".
`JUDGE MAYBERRY: Excuse me, Counsel,
`focused on the phrase "integrally formed". I'm
`interested in how the next few words inform the
`construction—as part of the shell. That seemed to be a
`key phrase to the District Court judge in his
`construction.
`MR. LUKAS: True. What the District judge said
`was it has to be kind of -- he used it to say that it limited
`one piece construction, but I think there's a fine line,
`we're going to get into that, you can -- the fine line is we
`start adding the process and Patent Owner's expert gets
`into that and I don't know if it goes too far to actually to
`say that they have to -- I believe, we believe, that it goes
`too far to say they have to be formed in the same process
`as the shell because I think there's no support for that,
`first of all, in the specification. There's no method of
`how to form the shell with the integrally formed raised
`center band. So I think the only interpretation that's
`correct is that it has to be formed as an integrated unit
`with the shell -- with the shell in some way. That's our
`interpretation.
`To be honest, it doesn't really become a major
`issue as we're going to get into because we believe that
`all the prior art has uniformly raised center bands, but I
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`do think it's a concern because on that issue, and I
`touched on the indefiniteness issue, you have a
`specification that, as I said, never even mentions
`integrally formed until later when there was an
`amendment to a claim. It was never included in the
`provisional that they're claiming priority to. It was never
`included in the original application for the '118. So
`there's no disclosure of integrally formed and now we've
`taken that term and added a process or a manufacturing
`step. And there's clearly no discussion of any type of
`manufacturing step of how to form these helmets.
`However, that being said, this is, I think, there's a
`general agreement that helmets around the time plastic
`helmets were formed by injection molding. That's
`important we'll touch on in the prior art, they were
`formed in an injection molded process.
`I don't want to leave the issue on indefiniteness
`because Patent Owner's now gone forward and said,
`look, their expert clearly says that that term means it has
`to be formed during the same method or manufacturing
`process as the rest of the helmet. And when you start
`getting into that, remember, we're dealing with all
`apparatus claims. He's very clear, he says formed in the
`same process. They can't be manufactured in separate
`steps. And when I see that, when I see these statements,
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`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`explicit statement, they're not just in the deposition,
`they're in his declarations that you have -- in order to
`construe that you have to construe it as that the shell has
`to be formed in the same manufacturing process as the
`raised center band. It sets off alarms because I don't
`think you can have apparatus claims with method steps
`in them. And I think what they've done is they've taken
`that integrally formed as part of the shell and they've
`created that they've added -- in construing that, they've
`added a method step to an apparatus claims. So we
`believe that if that construction is correct, or excuse me,
`if that's adopted, then the claims are all indefinite under
`IPXL. I think that's made right here at -- that point's
`made at slide 20, 430 F.3d 1377, 1384. The claim
`reciting both a system and a method for using the system
`is invalid under Section 112, Paragraph 2.
`JUDGE KAUFFMAN: Mr. Lukas, just to be
`clear, are you contending that Claim 25 is indefinite or
`are you saying Patent Owner's claim construction is
`wrong because that interpretation would render it
`indefinite?
`MR. LUKAS: I think, obviously, the best answer
`is, well, I think it's indefinite, if that construction's
`adopted; if their construction's adopted, then it's
`indefinite, yes. Does that answer your question?
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`JUDGE KAUFFMAN: I think so.
`JUDGE GROSSMAN: Let me just clarify one
`other thing. I'm sure you're well aware, we don't look at
`indefiniteness in an IPR proceeding. The only issues of
`patentability before us are under 102 or 103 and we don't
`address 112. So 112, we're going to do a claim
`interpretation, and you may disagree with our claim
`interpretation and think that our claim interpretation
`skews it to something that was indefinite, but your
`argument that we should -- I want to make sure I
`understand, you're not arguing that we should determine
`that it's unpatentable under 112 because that's beyond
`our jurisdiction.
`MR. LUKAS: We did not raise it in our petition,
`but in response to that, in response to construction, we
`are making that argument. You obviously are a lot more
`aware of what you're empowered to do. I thought, I was
`under the impression, that there is some law that says
`you can find claims indefinite in IPR, maybe I'm wrong.
`JUDGE KAUFFMAN: The normal way for a
`panel to deal with that at institution would be to not
`institute on that claim because we don't know what it
`means and we can't read the art against it. If we have
`instituted on a claim, ordinarily a panel would go back
`and, not invalidate, but get rid of that part of the
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`institution and say I shouldn't institute it because we
`don't know what this claim means. Sort of what you're
`asking us to do is to not reach the patentability of this
`claim.
`MR. LUKAS: No. I'm not asking you to do that.
`I'm saying, the argument is essentially that if you're
`saying you can't find it indefinite, I'm saying that their
`construction is indefinite and ours should be adopted, I
`guess, in so many words.
`JUDGE KAUFFMAN: To some extent, I feel like
`you're making a written description argument. You're
`saying, well, integrally formed in the shell isn't
`described in the specification. Well, if it's known in the
`art, it doesn't have to be described in the specification,
`right? That's a written description issue, but still even
`they'd be okay even under written description if it was
`known in the art.
`MR. LUKAS: I don't necessarily agree with that.
`JUDGE KAUFFMAN: Tell me what you think
`
`then.
`
`MR. LUKAS: I believe it has to be described,
`you have to actually describe the process. If we're
`talking about integrally formed as part of the shell, you'd
`have to actually describe how that process is done in the
`specification.
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`JUDGE KAUFFMAN: Even if that were a
`product by process claim, a product by process claim is a
`product, as long as the products are the same, it doesn't
`matter what process was used to come to that end. And I
`think there's no doubt that Claim 25, for example, is an
`apparatus claim device, right?
`MR. LUKAS: That's correct.
`JUDGE KAUFFMAN: So we're only concerned
`with the process of making it to the extent that it makes
`the final product different. And that's what we'd like you
`to talk about is how would the product be different under
`that method of making the product.
`MR. LUKAS: I don't necessarily know the
`answer. It sounds like you're saying -- taking your
`question, you're saying it almost implies that you -- that
`you can have a method, I don't want to put words in your
`mouth, but I think the question implies you can have a
`method step in an apparatus claim and I disagree with
`that.
`
`JUDGE KAUFFMAN: You can't. That's right.
`You can't have a method step in a product claim, but to
`some extent, that's what the product by process claim is,
`right? You made the product by this process.
`MR. LUKAS: I agree with that.
`JUDGE KAUFFMAN: So what I'm saying is
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`IPR2016-01649 (Patent 8,813,269 B2)
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`even those claims you interpret as what the final product
`is. This is an apparatus claim and that's what we're
`concerned about is what is the final product here in the
`shell, what does it mean to be integrally formed in the
`shell and extending between the crown region and the
`rear region, what does that mean.
`MR. LUKAS: We believe that it means it formed
`as an integrating unit. That's our construction, that it
`doesn't have to be one piece. I understand that the
`District Court disagreed with that, but that was our point.
`I was -- just this whole background, yes, just pointing
`out that their construction is arguably indefinite, that was
`the point of that.
`JUDGE KAUFFMAN: Thank you.
`MR. LUKAS: So we're going to go into the -- the
`only other term aligned along and aligned along appears
`in '118 Patent at Claim 34, independent claim, and the
`'818 Patent at Claims 41 and 62.
`There's also this aligned and positioned along
`term and the aligned and reside along. They're at the
`'118 patent Claim 1 and '118 Patent Claim 25. I'm
`looking at slide 22.
`Riddell and its expert do not offer construction of
`aligned and positioned along. So as I'm going to go
`back to 22 here showing the construction's, just so we're
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`clear, the only construction at issue is aligned along in
`Claims 34 of the '118 Patent and Claims 41 and 62 of the
`'818 Patent. And at Claim 23 this is just support that
`they did not offer construction of aligned along.
`JUDGE GROSSMAN: Mr. Lukas, Claim 41 of
`the '118 I think the phrase they use is reside outside, not
`resided along. Your same argument for reside along,
`your suggesting is it also applies to reside outside.
`MR. LUKAS: I thought it also used the words
`aligned along because I did not know -- there was no
`construction of reside outside.
`JUDGE GROSSMAN: I've got a -- the copy that
`I have is Claim 41, Column 18, Lines 29 to 30, use
`reside outside and Lines 34 uses reside outside. My
`question is simply, is their argument about reside along
`also apply to reside outside or is there a difference
`between along and outside?
`MR. LUKAS: So I think we are only offering
`construction for aligned along. I'm looking at Claim 41
`and so it's different. There is no construction offered for
`reside outside. The only claim terms on 41 that we're
`arguing is aligned along and that does show up later on.
`I think reside outside, we didn't offer construction, but I
`think the broadest meaning is they just have to be
`outside the band.
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`JUDGE GROSSMAN: Thank you.
`MR. LUKAS: Then we talk about, in slide 24, we
`talk about the construction of aligned and positioned
`along and aligned and reside along. The Board has
`previously construed that the vent holes have to be
`aligned with respect to each other in their institution
`decision and then also -- and positioned along or
`residing along the first side, that was brought up -- that
`construction was adopted in the '118 institution decision.
`Riddell has not challenged that that we have any
`argument that it's not proper. That's slide 24.
`Slide 25 we just go through the two constructions.
`Petitioner's construction two or more vent openings,
`aligned with respect to each other and beside the side
`wall of the raised central band. Patent Owner's
`construction, two or more vent openings positioned in
`relation to and beside the first side of the raised central
`band. That's at slide 25.
`I'm going to get into it briefly. As you have
`probably seen in the arguments, Petitioner's position is
`that regardless of the constructions of both of these
`terms, if you adopt Patent Owner's construction of both
`terms, they're still -- all the instituted claims are still
`invalid. I just want to make that point.
`The one issue is that -- it's unclear as to whether
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`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`they're trying to argument that they have to be almost
`touching the band. I think that's incorrect and I think the
`Board previously did not adopt a construction like that.
`That would be the one issue where the Board understood
`the term along to be beside, so beside the side wall or the
`side of the raised central band. That's at slide 27.
`Slide 28, we're going to get into the first instituted
`grounds and that's the Sears reference. The Sears
`reference is a catalog from, approximately, 1971, I
`believe, and the Board instituted on claims 1, 2, 5, 11,
`25, 27, 30 and 32. We've underlined at slide 28 the
`independent claims that are instituted.
`Slide 29 is just a summary of what's not disputed.
`I can -- as been seen by the papers, the only issue is that
`that Petitioner challenges is whether Sears discloses a
`raised central band limitation, disputing only that Sears'
`raised central band is integrally formed and the vent
`openings limitation, disputing only that Sears vent
`openings are present. Those are the only two issues.
`JUDGE KAUFFMAN: If I understand your
`second bullet, you say that Patent Owner does not
`dispute that Sears discloses every limitation of, then you
`list the dependent claims, do you mean every additional?
`MR. LUKAS: That's correct. They didn't
`challenge any of the dependent claims separately, so just
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`IPR2016-01646 (Patent 8,528,118 B2)
`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`to be clear, that's what that means, yes.
`JUDGE MAYBERRY: Counsel, just so we're
`clear on that point, with your cite to Duke University, are
`you suggesting that we do not have to determine whether
`the information in the complete record demonstrates by
`preponderance of the evidence that the subject matter of
`the dependent claims are unpatentable because Patent
`Owner did not argue them?
`MR. LUKAS: Yes, I'm saying --
`JUDGE MAYBERRY: So if we find that the
`information in the total record is sufficient to find that
`the independent claims are unpatentable and because
`Patent Owner did not argue the dependent claims, then
`we must find that the dependent claims are also
`unpatentable for that very reason.
`MR. LUKAS: I agree, that's exactly what our
`position is, yes.
`JUDGE KAUFFMAN: Mr. Lukas, is that an ex
`parte case, what kind of case is that?
`MR. LUKAS: Are you talking about Duke
`University?
`JUDGE KAUFFMAN: I guess it's not ex parte.
`MR. LUKAS: I don't know exactly, but I can find
`out, Your Honor, I just don't know exactly.
`JUDGE KAUFFMAN: We'll look at it.
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`MR. LUKAS: The point is that there was a
`petition and there was no challenge that the -- the patent
`team never challenged that the dependent separately that
`the dependent claims were unpatentable and, therefore,
`they've waived any argument that they're not. I think
`that's consistent with most -- for instance, if it was a
`District Court litigation that would be a summary
`judgment stage or a trial. There's no evidence in the
`record of any challenge to those claims. So, therefore,
`our argument is there's no genuine issue of fact is how I
`would say in a summary judgment proceeding, that
`they've not challenged that and that they've waived any
`right to challenge that in the record.
`JUDGE GROSSMAN: Do you think that Duke
`changes your burden of proof then, does that remove
`your burden to prove by a preponderance of the evidence
`that the dependent claims are unpatentable? If the Patent
`Owner came in and said I read the petition and I don't
`agree with it and that's a one sentence response, does
`that remove the burden of your proof to prove by
`preponderance of the evidence that the claims are
`unpatentable?
`MR. LUKAS: I want to say it doesn't remove the
`burden of proof, no. I think the burden of proof stays
`there, but I think we've showed -- the Board has
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`instituted on those claims and there's been no challenge
`such that I think it goes to that the Petitioner has shown
`by preponderance of evidence, it goes to that because
`there's no challenge to that.
`JUDGE GROSSMAN: Your point is there's no
`contrary evidence, the only evidence is the evidence
`you've offered?
`MR. LUKAS: It's clearly going to weigh slightly
`one way versus the other, that would be the argument.
`But I don't know the law in that. It seems appropriate.
`So back to slide 30. The two issues raised by
`Patent Owner that there's -- the raised central band of
`Sears is not integrally formed as part of the shell and
`there are no vent openings in Sears' helmet.
`Slide 31, we go through the evidence showing that
`Sears discloses the raised central band limitation. We
`cite to the papers, the declarations, the charts and make
`the point that there's no dispute that it discloses a raised
`central band. They just -- the Patent Owner just argues
`that it's not integrally formed.
`JUDGE MAYBERRY: I notice in your first dash,
`one of the evidences that you point to is Exhibit 1014,
`and what is that exhibit?
`MR. LUKAS: I believe that's a claim chart that
`was included with Mr. Float's declaration, the
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`IPR2016-01649 (Patent 8,813,269 B2)
`IPR2016-01650 (Patent 8,938,818 B2)
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`Petitioner's expert's declaration, also include separately
`as an exhibit to the petition.
`JUDGE MAYBERRY: And does Mr. Float say
`that he prepared, I have a more basic question, who
`prepared that claim chart?
`MR. LUKAS: I believe it was prepared by him
`but in coordination with counsel, obviously.
`JUDGE MAYBERRY: And his de
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