UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC MARKET INTERNATIONAL, LLC,
`Petitioner,
`
`v.
`
`IGNITE USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01875
`Patent 8,360,267 B1
`____________
`
`Record of Oral Hearing
`Held: December 12, 2017
`____________
`
`
`
`
`Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and JAMES
`A. WORTH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC MARKET INTERNATIONAL, LLC,
`Petitioner,
`
`v.
`
`IGNITE USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01875
`Patent 8,360,267 B1
`____________
`
`Record of Oral Hearing
`Held: December 12, 2017
`____________
`
`
`
`
`Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and JAMES
`A. WORTH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`Case IPR2016-01875
`Patent 8,360,267 B1
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ANTON HANDAL, ESQUIRE
`Greenspoon Marder
`401 West A Street
`Suite 1150
`San Diego, California 92101
`
`and
`
`GEORGE C. RONDEAU, Jr., ESQUIRE
`Davis, Wright & Tremaine, LLP
`1201 Third Avenue, Suite 2200
`Seattle, Washington 98101-3045
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`STEPHEN M. SCHAETZEL, ESQUIRE
`JESSICA A. KEESEE, ESQUIRE
`Meunier, Carlin & Curfman, LLC
`999 Peachtree Street, N.E.
`Suite 1300
`Atlanta, Georgia 30309
`
`
`
`The above-entitled matter came on for hearing on Tuesday, December
`
`12, 2017, commencing at 9:35 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2016-01875
`Patent 8,360,267 B1
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`P R O C E E D I N G S
`- - - - -
`JUDGE WEATHERLY: This is the hearing for IPR2016-01875
`involving U.S. patent number 8,360,267. My name is Judge Weatherly and
`I'm here with Judge Worth on my left and Judge Cocks on my right.
`Because petitioner bears the burden of proof, they'll go first during
`the hearing today. We'll have each side taking 60 minutes. Patent owner
`will go second. Petitioner, you can reserve time, if you would like, for
`rebuttal. Before we begin, I would like to know -- have everyone
`reintroduce themselves. I know this is not the first time we've seen each
`other, but if everyone could reintroduce themselves, beginning with
`petitioner and the people you brought with you also, please.
`MR. HANDAL: I'd be glad to. Thank you. Anton Handal,
`H-A-N-D-A-L, I'll be giving the oral presentation today, of the law firm
`Greenspoon Marder on behalf of Pacific Market International. I have with
`me my co-counsel at the firm Kelly Hollowell, H-O-L-L-O-W-E-L-L, and
`also Justin McNaughton of our firm. Lead counsel, Mr. George Rondeau,
`R-O-N-D-E-A-U, of the firm Davis Wright Tremaine and Mr. Derek de
`Bakker, general counsel to Pacific Market International.
`JUDGE WEATHERLY: Thank you. Patent owner.
`MR. SCHAETZEL: Thank you. Steve Schaetzel and Jessica
`Keesee of the firm Meunier, Carlin & Curfman. We are here on behalf of
`patent owner, Ignite.
`JUDGE WEATHERLY: Thanks very much. Petitioner, how
`much time, if any, would you like to reserve for rebuttal?
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`MR. HANDAL: My opening presentation is probably 20 to
`30 minutes and I would like to reserve the balance of my time for rebuttal.
`JUDGE WEATHERLY: Okay. As soon as I get the timer set, I
`will call you to the podium to begin. So I'm going to set it for 25 minutes,
`20 minutes?
`MR. HANDAL: Set it for 20. I'm going to be optimistic.
`JUDGE WEATHERLY: Great. You can begin whenever you are
`
`ready.
`
`MR. HANDAL: Thank you. I'm told that the video system
`sometimes doesn't like to play well with Mac. So I'm going to try to not
`touch my computer as much as possible and hope that we can maintain
`through the entire presentation.
`Again, this is the matter of Pacific Market International, petitioner,
`versus patent owner, Ignite USA. Today petitioner will argue three of the
`issues identified by the Board in its decision to institute. Petitioner will
`submit on the briefing for the issues that I am not going to address in this
`oral presentation.
`The first issue I would like to address is whether any items recited
`in the preamble of claim 10 is limiting. It's petitioner's position that the term
`"drinking" of claim 10 is not limiting. The same analysis I'm going to go
`through for claim 10 would apply to claim 14. However, the petitioner has
`not taken a position on whether the preamble of claim 14 is limiting.
`Petitioner asserts, however, that claim 14 is rendered obvious in light of
`Albert combined with Milian.
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`Claim 10, which is pictured on the display, is directed to a locking
`mechanism for a container. Although the word "container" highlighted in
`red does appear in the body of claim 10, the term "drinking" highlighted in
`yellow does not. The term "drinking" does not therefore provide an
`antecedent basis for any element in the claimed body.
`JUDGE WEATHERLY: I apologize for the interruption.
`Normally I ask parties, I remind parties to refer to slide numbers while they
`are using them. It just makes the transcript a lot easier for us to use. If you
`could do that, that would be helpful.
`MR. HANDAL: Yes. You can see here from slide 1 that also a
`plain reading of claim 10 and its dependent claims reveals that the term
`"drinking" does not recite additional structure or steps necessary to
`understand the claims. In essence, the term "drinking" is little more than a
`convenient label to describe the intended purpose for a locking mechanism.
`JUDGE WORTH: Would you say that it's necessary to breathe life
`and meaning into the claim?
`MR. HANDAL: I would not simply because the claim itself is
`directed to a locking mechanism of a container. And the container, as you
`will see through the presentation, can be any number of things. So the word
`"drinking" doesn't breathe life into the body of the claim 10 or any of the
`dependent claims, in our view.
`JUDGE COCKS: Counsel, let me ask you, then, let's say for
`argument's sake we were to disagree with you, what would that mean for the
`grounds?
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`MR. HANDAL: Well, I think at the end of the day in the final
`analysis it would mean little, because petitioner's position is also that
`claim 10 is obvious in light of Albert combined with Milian. And Albert
`clearly discloses a drinking container. Further, Milian, if you really break it
`down, also discloses a drinking container.
`So notwithstanding the fact that our position is the preamble is not
`limiting with respect to the word "drinking," at the end of the day in the final
`analysis, Milian discloses a drinking container, Albert discloses a drinking
`container and so therefore, the claim is invalid because it's either anticipated
`by Milian, obvious in view of Milian or rendered obvious in view of Albert
`combined with Milian. Does that answer the question?
`JUDGE COCKS: Yes, thank you.
`JUDGE WORTH: I think that there was some discussion with the
`expert about whether the expert had relied on Albert for that, whether your
`expert had relied on Albert for drinking in the contentions for the combined
`ground. Can you address that?
`MR. HANDAL: Yes. I do recall that there was some inquiry as to
`whether or not he had specifically relied on Albert in connection with the
`obviousness -- obviousness when combined with Milian. And I believe his
`testimony was that he may have stopped short of coming to that conclusion
`because he determined before that that claim 10 was invalid in view of
`Milian because Milian -- it's anticipated in view of Milian or rendered
`obvious in view of Milian because in his view, Milian also disclosed a
`drinking container.
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`JUDGE WORTH: And do you otherwise rely on Albert for the
`drinking limitation in the petition, let's say?
`MR. HANDAL: There are portions of the petition that do rely on
`Albert combined with Milian. And anecdotally, we point out that Albert
`does disclose a drinking container. So we are not bothered by the issue of
`whether the term "drinking" in the preamble claim 10 is limiting because at
`the end of the day, if you determine that it is limiting, the references that
`we've cited would render the claim either anticipated or obvious.
`JUDGE WEATHERLY: Why do you say that Milian describes a
`drinking container?
`MR. HANDAL: I have dedicated many slides to that. I can touch
`
`on it.
`
`JUDGE WEATHERLY: That's okay.
`MR. HANDAL: I think it's important since you asked the question
`at this point. Milian discloses use in food industries. And as you will see,
`food has been equated to include drinks. Drinks by their very nature would
`be in a container. Also, owner's expert pretty much agreed that Milian can
`be directed to food applications and he also agreed that food would include
`beverages. So that's why we think it would be -- Milian is also directed to a
`drinking container.
`On PMI demonstrative slide 2, we offered in support of petitioner
`owner's expert testified that he was able to understand and interpret claim 10
`without regard for the word "drinking" in the preamble. His testimony,
`therefore, supports petitioner's view that the body of claim 10 is structurally
`complete and the word "drinking" in the preamble is not limiting.
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`This next slide, it's not numbered because it's just a heading for
`kind of organizational purposes, relates to an issue raised by the Board in the
`decision to institute relating to the meaning of the term "first direction about
`the longitudinal axis of the container body" in claim 12.
`And although this slide is rather messy, I'll try to focus on the
`arguments and the issues without confusing things. Petitioner proposes in
`response to the Board's question that the first direction about the longitudinal
`axis of the container body means a locking portion of the button moves from
`a first locked position to a second unlocked position which is at a different
`location along the longitudinal axis of the container body. That proposition
`is contained in PMI 1047, paragraphs 26 through 27.
`JUDGE WEATHERLY: That implies that you don't care what
`direction it moves to get from one position to the other.
`MR. HANDAL: Mostly, yes. We don't care how the button
`moves so long as the first locked position and the second unlocked position
`are in some way along a longitudinal axis. So it can be in any number of
`different directions. Hence, the diagram on the lower right.
`JUDGE WEATHERLY: So the direction must contain at least a
`component that is parallel to the longitudinal axis?
`MR. HANDAL: I don't know if parallel, but generally along or
`generally about has been interpreted by owner's expert and by petitioner's
`expert to be in any direction just so long as there is some movement relative
`or in relation to the longitudinal axis. And I point to the vector illustration
`with a number of vectors. All of the vectors except the 90-degree one would
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`be consistent with being generally along the longitudinal axis of the
`container body.
`JUDGE WEATHERLY: And patent owner asserts that about a
`longitudinal axis can refer to around the longitudinal axis, rotated around the
`longitudinal axis. And that would be in your slide what you have labeled as
`a 90-degree direction, wouldn't it?
`MR. HANDAL: Well, no, I don't quite accept that proposition.
`JUDGE WEATHERLY: Maybe you should have objected to the
`form of my question as being compound.
`MR. HANDAL: I will do that.
`JUDGE WEATHERLY: Because you were about to answer a
`question that I wasn't intending to ask. Your slide shows a direction
`90 degrees. Isn't that 90-degree direction the same as around, rotating
`around the longitudinal axis?
`MR. HANDAL: Okay. Petitioner's position is that the
`90-degree --
`JUDGE WEATHERLY: That's a yes or no.
`MR. HANDAL: No.
`JUDGE WEATHERLY: Okay. Why?
`MR. HANDAL: Because petitioner's position is that the 90-degree
`vector is transverse to the longitudinal axis.
`JUDGE WEATHERLY: But if I were to rotate that button around
`the longitudinal axis, wouldn't it move in that 90-degree direction that you
`have imposed?
`MR. HANDAL: I suppose, yes.
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`JUDGE WEATHERLY: That's all I'm asking.
`MR. HANDAL: In that characterization, yes.
`JUDGE WEATHERLY: This is why people don't like lawyers.
`MR. HANDAL: We never answer a question.
`JUDGE WEATHERLY: I know. And I would recommend that
`you answer the questions that we are asking. That would be the way to be
`most helpful to your case.
`MR. HANDAL: Be happy to. I would like to point out the
`specification of the patent teaches that movement of the button may be in
`any direction to effectuate locking and unlocking of the trigger assembly.
`That's from column 3, lines 47 through 54.
`JUDGE WEATHERLY: Why doesn't that refer to first direction
`as it's recited in the independent claim?
`MR. HANDAL: I'm sorry, why doesn't it refer to?
`JUDGE WEATHERLY: The any direction portion from the spec.
`It's pretty clear that claim 10 recites first direction in a much broader way
`than claim 12 does. So there's got to be a distinction between the two.
`MR. HANDAL: I think the context is from a first locked position
`to a second unlocked position. To effectuate that functionality, the button
`member, at least the locking portion of the button member needs to move in
`a relation along the longitudinal axis of the container body.
`JUDGE WEATHERLY: It sounds like you are arguing about the
`meaning of first direction in claim 10 to me. And I want you to focus on the
`meaning of first direction, as further refined by the words, is generally about
`a longitudinal axis of the container body. You want me to interpret claim 10
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`and claim 12 the same way, that first direction means any direction so long
`as there's a difference in along the longitudinal axis in the beginning location
`and the end location. Am I understanding you correctly?
`MR. HANDAL: Yes.
`JUDGE WEATHERLY: That's kind of a weak argument. Okay.
`MR. HANDAL: The specification also teaches that the only
`relevant movement is the locking portion 28 of the button 20 moving from a
`first locked position to a second unlocked position along the longitudinal
`axis of the container body. That's from the lower specification, column 4, 35
`to 44.
`
`The specification teaches that the direction of movement of the
`locking portion of the button may be in any direction relative to the
`longitudinal axis. That would include arcward movement. That's a point I
`want to emphasize. Accordingly, different vectors of the direction, other
`than the 90 in our view shown on this slide, would all be consistent with the
`requirements of claim 12 in the specification.
`JUDGE WEATHERLY: I'm going to interrupt again. I want to
`ask -- and this is going to be both parties are going to get this question. So
`you can feel confident that I'll have a similar question for your opposing
`party. The parties, in their briefing, appear to address this concept of first
`direction the same way for claims 12 and claim 15. And the phraseology is
`different in the two claims. And I would like to know whether -- the
`briefing seems to indicate that the difference doesn't make a difference, but I
`want to ask if that's really true, because to me it seems that there is a
`difference that might make a difference.
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`MR. HANDAL: Well, I think the distinction -- just to clarify, I
`think the distinction you are referring to is that the movement is in claim 12
`about the longitudinal axis of the container body. Whereas, in claim 10, it's
`about --
`
`JUDGE WEATHERLY: Claim 15. Claim 12 and claim 15.
`Claim 15 recites, for example, that the first direction of movement of the
`button member is about a generally longitudinal axis. Claim 12 recites first
`direction is generally about, generally about the longitudinal axis. So
`generally is placed differently. The word "about" is placed differently. And
`I want to know if you have any information for me about whether those
`different positions, the different positioning of the words "generally" and
`"about" in those two different claims makes a difference.
`MR. HANDAL: Petitioner's position is that with respect to claims
`12 and 15, no. Our argument is that generally about in the context of each of
`those claims is a movement in some way in relation to a longitudinal axis.
`JUDGE WEATHERLY: Well, claim 12 recites generally about.
`Claim 15 recites about a generally longitudinal axis. Those mean the same
`thing?
`
`MR. HANDAL: Yes, I think generally they do.
`JUDGE WEATHERLY: All right. Generally they do?
`MR. HANDAL: They do, yes.
`JUDGE WEATHERLY: Pun intended?
`MR. HANDAL: Not intended, but, yes.
`JUDGE WEATHERLY: Okay.
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`MR. HANDAL: Now, with respect to demonstrative slide 51,
`which is the seventh slide in the series, what we have here is basically
`movement along a path that gives you from a first locked position to a
`second locked position relative to a longitudinal axis satisfies the claim.
`This slide shows movement that would be considered in any direction from a
`first locked position to a second locked position. PMI 1056 on the left is an
`illustration that demonstrates a locking member C1 moved to a second
`position at either C2 or C3 along pass P1 or P2, each in a direction generally
`about a longitudinal axis with a resulting vertical travel distance equal to D.
`JUDGE WEATHERLY: You have often phrased your argument
`as requiring displacement along the longitudinal axis between the locked and
`unlocked position. Where are you getting this concept of along? From
`where is that coming?
`MR. HANDAL: Well, I think it's a natural derivation from the
`claim language itself which refers to two situational positions, a first locked
`and a second unlocked, which to petitioner would seem to indicate -- would
`indicate that there are two positions. And the discussion of longitudinal
`would suggest a direction. So in the combination, we come to that
`conclusion.
`JUDGE WEATHERLY: But you used the word "along," and the
`claim doesn't say the word "along."
`MR. HANDAL: No, but from the specification the word "along"
`is used. It's generally about.
`JUDGE WEATHERLY: Where?
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`MR. HANDAL: Well, the specification from back to slide 3 talks
`about may be moved in any direction.
`JUDGE WEATHERLY: My quick search of the patent and the
`entire specification says that it doesn't use the word "along" once.
`MR. HANDAL: Right there, moved along the longitudinal axis.
`JUDGE WEATHERLY: My OCR of the document must be bad.
`MR. HANDAL: So that's the nub of how we come to that
`conclusion.
`JUDGE WEATHERLY: Okay.
`JUDGE COCKS: So are you reading the term "about" and the
`term "along" as synonymous at least in the context of the claim or claims?
`MR. HANDAL: No, I don't believe they are synonymous, but they
`are related. I mean, along is in a path, but generally about seems to be
`something a little bit broader, that any -- not confined. So I guess
`together -- yeah, I guess they are consistent. Along is in a direction and
`generally about could refer to the method and manner of the direction.
`JUDGE COCKS: So “about” is a broader term than “along”? I
`think I heard you say that.
`MR. HANDAL: Yeah, we would agree with that.
`JUDGE COCKS: Go ahead, please.
`MR. HANDAL: Thank you. Back to slide 51, PMI 1060 on the
`right illustrates that the limitations of claim 12 are satisfied by a rotating
`button member where the locking position F1 moves relative to the
`longitudinal axis of the container body.
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`JUDGE COCKS: Counsel, if I could interrupt you, which slide is
`
`this?
`
`MR. HANDAL: This is 51, demonstrative slide 51. It's the
`seventh slide in the series of this presentation. And it's a composite of PMI
`1056 and PMI 1061, which are two pieces of -- 1060, which are exhibits
`filed in this action.
`The illustration then, PMI 1060, the locking position F1 moves
`relative to the longitudinal axis of the container body from a first locked
`position to a second unlocked position at F3 passing through F2 and having
`the same vertical travel distance D as illustrated in PMI 1056. Notably, the
`extent of the lateral movement is not relevant to this illustration.
`PMI 1051 further illustrates this point by showing movement of
`the locking member portion 111 in red relative to the longitudinal axis of a
`container body as all 112 portions of the button rotate. Nothing in the claims
`or specification requires the entire button member to move or prohibits
`rotational movement of the button member. If even one part of the button
`member moves relative to the longitudinal axis to effectuate movement from
`a first locked position to a second unlocked position, the claim is satisfied, in
`petitioner's view. Had the patentee intended a more limiting interpretation
`of the movement of the button member, he would have clearly expressed it.
`Owner's expert concurs that the rotation of the button member
`shown in PMI 1060 affects the movement from F1 to F3 which can be
`unambiguously construed to be along the longitudinal axis. Accordingly,
`petitioner's proposed meaning for the first direction about a longitudinal axis
`of the container body should be adopted, which is the locking portion of the
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`button moves from a first locked position to a second unlocked position
`which is at a different location along the longitudinal axis of the container
`body.
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`Issue number 5 from the Board's decision to institute relates to the
`meaning of the term "disposed between" as recited in claim 17. Petitioner's
`position is that the words "disposed between" are merely location-indicating
`words without reference to structure. In the context of claim 17, the term
`indicates the location where a portion of the manifold 26A, there underlined
`in green, 26A, 26 A and B and 26, is located between a portion of the button
`member 20 and the button lock 22. Accordingly, petitioner proposes that the
`term simply means located between. Again, if patentee had intended on
`more than position or location wording, he should have manifested a clear
`intent but did not do so.
`I know I'm hitting my mark of time. May I go over?
`JUDGE WEATHERLY: Probably my fault. You can use as much
`of your 60 minutes as you would like. Also, it might be somewhat likely
`that we use more than 60 minutes per side given my behavior.
`MR. HANDAL: Fair enough. I would like to turn now to
`petitioner's affirmative position in this IPR including that the '267 patent is
`anticipated and obvious in view of Milian and obvious in view of Albert as
`combined with Milian.
`First I would like to point out that the locking mechanism of the
`'267 patent and Milian are fundamentally the same. The locking portion of
`the button member shown in blue in Figure 2 of the patent and Figure 5A of
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`Milian are both engaging a stop shown in pink in the illustrations at the top
`of the slide. You see the structure in blue engaging the pink stop.
`The locking portion of the button -- as the button member moves
`from a first locked position to a second unlocked position, the locking
`portion of each button member clears the stop as shown on the bottom two
`illustrations. Essentially, the locking mechanisms function the same.
`Owner has argued that petitioner has not met its burden of proving
`that claims 10, 11 and 13 are rendered obvious in view of Milian. Petitioner
`disagrees. On page 31 of the petition, petitioner argues how claims 10, 11
`and 13 are anticipated and obvious in view of Milian. At page 55 of the
`petition, petitioner offers evidence on the issue of anticipation and
`obviousness in view of Milian.
`JUDGE WEATHERLY: Where is the evidence of obviousness in
`your petition?
`MR. HANDAL: Good question. If I may, I do get to that in my
`next slide. Petitioner's evidence includes Mr. Dahlgren's declaration, PMI
`1027 at 84 through paragraph 91, together with claim charts 1, 3 and 5 from
`the petition at pages 31 through 35 which are offered to support a finding
`that Milian anticipates claims 10, 11 and 13. That same evidence is
`sufficient to prove that Milian renders claims 10, 11 and 13 obvious.
`JUDGE WEATHERLY: Then why did you add evidence and
`testimony in the reply?
`MR. HANDAL: I'm sorry?
`JUDGE WEATHERLY: Then why did you add Mr. Dahlgren's
`evidence in the reply on this point?
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`MR. HANDAL: I think the reply pointed patent owner back to
`where that evidence was located.
`JUDGE WEATHERLY: I disagree. But how so?
`MR. HANDAL: Well, I think first of all, Mr. Dahlgren and in the
`reply petitioner pointed the patent owner back to the references that I just
`shared with you, claim charts 1, 3 and 5 from the petition. And
`Mr. Dahlgren offered some explanatory commentary as to how the evidence
`is construed, can be construed as rendering claims 10, 11 and 13 obvious in
`view of Milian. The same evidence is sufficient to prove that Milian renders
`the claims obvious. He explained it in paragraphs 52 through 55 of his
`reply.
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`But this is instructive. A summary of the corresponding elements
`of claim 10 in Milian taken from paragraph 128 of the declaration in support
`of the petition --
`JUDGE WEATHERLY: This is slide 14?
`MR. HANDAL: I'm sorry, slide 14. I'll try to do better.
`Demonstrative 14. It is the 15th slide of the presentation. It's taken from
`paragraph 120 of the declaration in support of the petition to show an
`element-by-element comparison of the two patents which leads to the
`conclusion that every element of claim 10 is anticipated. If, however, each
`of the elements is not found to be literally identical, they could be deemed to
`be obviously equivalent since the Board may draw any reasonable inference
`from the evidence to determine the issue.
`JUDGE WEATHERLY: Well, you didn't provide any inferences
`for us to draw. You didn't make any implication that what we should draw
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`other than say that the claim is also obvious in your petition. I'm unable to
`identify any portion of your petition that addresses specifically why the
`claim would be obvious rather than anticipated. And there's a motion to
`exclude pending that relates at least in part to this notion that you improperly
`added evidence and changed the nature of your challenge in your reply.
`Now, I would really -- if there's anything that I have missed in
`your petition that is directed solely to obviousness, now is your chance to
`point it out to me, because I can't see anything.
`MR. HANDAL: The petition at pages --
`JUDGE WEATHERLY: Rather than just cite to pages, show me.
`Don't just tell me pages because I have read the pages. And I'm telling you,
`I can't find support for an obviousness challenge on the single reference
`Milian. Certainly it wouldn't be the first time I have been wrong about
`something. I have already been wrong about at least one thing during this
`hearing. So help me understand why I might be wrong about that.
`MR. HANDAL: Page 31 of the petition goes into an argument, an
`analysis of claims 10, 11, 13, and the heading proposition is that claims 10,
`11, 13 are anticipated and obvious. It's expressly stated on page 31 in
`considering Milian. The analysis then goes through and talks about the
`elements of the patent as compared to Milian. Obviousness, to the extent
`that all of the elements are there and clearly could be deemed identical, then
`Milian anticipates it.
`To the extent, however, and that's the point here, that there is
`some -- is deemed that, for example, container body and receptacle 6 are not
`literally identical, then it's reasonable to draw an inference that they are
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`obvious variations and would be identical, simply equivalents. And I think
`that's the point of the argument. I mean, we only have so many words, and
`we focused on what we believe laid out the elements of anticipation and
`obviousness in this section starting on page 31 of the petition.
`JUDGE WEATHERLY: Your obviousness argument appeared to
`me to be a placeholder so that you might be able to argue something later.
`And yet, there was nothing there other than a placeholder. And I think our
`rules impose a duty upon petitioners to make out their case with
`particularity, and I don't see it. I guess I'm asking you to help me see if I
`have missed something, and so far I don't think I have.
`JUDGE COCKS: Counsel, can I frame a question. Is your
`obviousness position, does it require this panel to make inferences that were
`not made in the petition?
`MR. HANDAL: No, I don't believe so, because the petition laid
`out in claim charts the comparison, the element-by-element comparison of
`the claim 10 --
`JUDGE COCKS: I think we understand that. That's the context of
`the anticipation. But you are asking or saying if the panel is to determine
`that a feature was not disclosed or was not anticipated, that we should infer
`something to reach an obviousness approach. And --
`MR. HANDAL: That specific assertion is not made in the petition.
`However, as I indicated, the term in claim 10 "lid" may be clearly inferred to
`be a fastening ring 4, pusher 2, et cetera, stated in the chart.
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`And drawing reasonable inferences is a natural, normal course of
`any inquiry, factual inquiry, and I would submit that what we laid out here is
`not only an anticipation illustration but also an obviousness illustration.
`JUDGE WORTH: So when the statute says that the petitioner
`bears the burden of proof, I'm referring to 316, do you interpret that to mean
`that the inquiry searches the record and that the argument does not have to
`be made by the petitioner?
`MR. HANDAL: Well, I think any argument can be made from
`evidence that's in the record. And what I'm urging is that the argument
`is -- this evidence is in the record and reasonable inferences can be drawn
`from it.
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`JUDGE WORTH: Whether or not argued?
`MR. HANDAL: Whether or not argued. I'm asserting it now. I'm
`arguing that this is -- these limitations compared side by side, if they are not
`anticipate
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