UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANGER & DRESSER, INC.,
`Petitioner,
`
`v.
`
`002152706 ONTARIO LIMITED,
`Patent Owner.
`______________
`
`Case IPR2017-00341
`Patent 9,393,639 B2
`_____________
`
`Record of Oral Hearing
`Held: February 28, 2018
`____________
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHANGER & DRESSER, INC.,
`Petitioner,
`
`v.
`
`002152706 ONTARIO LIMITED,
`Patent Owner.
`______________
`
`Case IPR2017-00341
`Patent 9,393,639 B2
`_____________
`
`Record of Oral Hearing
`Held: February 28, 2018
`____________
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`Case IPR2017-00341
`Patent 9,393,639 B2
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`HARVEY S. KAUGET, ESQ.
`RYAN M. CORBETT, ESQ.
`Burr & Forman LLP
`One Tampa City Center, Suite 3200
`201 North Franklin Street
`Tampa, Florida 33602
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`MARSHALL J. SCHMITT, ESQ.
`GILBERTO E. ESPINOZA, ESQ.
`Michael Best & Friedrich LLP
`River Point
`444 West Lake Street, Suite 3200
`Chicago, Illinois 60606
`
`and
`
`Tasha Yarbrough, Court Clerk
`Jason Hynes, Petitioner representative
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`February 28, 2018, commencing at 11:03 a.m., at the U.S. Patent and
`Trademark Office, Rocky Mountain Regional Office, 1961 Stout Street,
`Denver, Colorado.
`
`
`
`
`
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`Case IPR2017-00341
`Patent 9,393,639 B2
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`
`P R O C E E D I N G S
`- - - - -
` (WHEREUPON, the following was transcribed from an
`audio recording, as follows:)
` JUDGE KAISER: All right. Hopefully everybody's
`in the right place. We're here for IPR2017-00341, talking
`about US Patent No. 9,393,639.
` Can we do a roll call, if anybody is here from
`petitioner, please.
` MR. CORBETT: Yes, Your Honor. For petitioner,
`Ryan Corbett.
` JUDGE KAISER: Okay.
` MR. KAUGET: For petitioner, Harvey Kauget.
` JUDGE KAISER: Okay. Patent owner?
` MR. SCHMITT: For patent owner, Marshall Schmitt
`and Gilberto Espinoza. Also in the room is Jason Hynes.
` JUDGE KAISER: Okay. All right. So we've got, I
`think we said, 30 minutes per side today. Petitioner,
`you're allowed to reserve time for rebuttal. Do you want to
`reserve any time?
` MR. CORBETT: Yes, Your Honor. Ten minutes.
` JUDGE KAISER: Okay. We'll try to keep track of
`the time up here for you, and I will try to give you a
`warning when you're getting close to your 20 minutes.
` MR. CORBETT: I appreciate that, Your Honor. Just
`to make sure I am not overstepping any bounds, we had
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`discussed previously using a timer on a cell phone, if
`that's okay, as well.
` JUDGE KAISER: I think that's fine, as long as you
`use it at the podium and not at the table.
` MR. CORBETT: Understood.
` MR. SCHMITT: Your Honor, just a point of order.
` JUDGE KAISER: Uh-huh.
` MR. SCHMITT: We have a motion to exclude
`evidence, and I'm wondering whether I can reserve a minute
`for rebuttal to the extent that it is addressed during
`patent owner's -- during petitioner's presentation.
` JUDGE KAISER: Do you have any objection to that,
`to Mr. Schmitt reserving one minute for rebuttal on the
`motion to exclude evidence?
` MR. CORBETT: Just so I am clear, this would be
`after --
` JUDGE KAISER: After your rebuttal.
` MR. CORBETT: After my rebuttal.
` JUDGE KAISER: Assuming you address it in your
`rebuttal, I suppose.
` MR. CORBETT: Right. Well, I guess I would want
`to -- if he's going to raise it, it's his motion, I guess, I
`don't know, reserve -- reserve time, I don't know.
` JUDGE KAISER: He's got -- I think he's got the
`burden, and this is a question I actually have for you
`during the hearing today, is who actually has the burden
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`when it comes to motions to exclude evidence. Because in
`district court, of course, you are moving evidence into the
`record, and we've got a question of usually the person who's
`moving evidence into the record has the burden, and I think
`you cite in your motion, at least in your reply, that the
`burden is the same here. But I'm not sure it is. The
`evidence is in the record, and you are moving to exclude it.
`So I think patent owner has the burden on the motion to
`exclude evidence. So in that case, I think he probably
`ought to have the last word on that.
` MR. SCHMITT: I just want to clarify, Your Honor,
`that someone propounding evidence always has the burden of
`establishing that it's admissible. We have I think the
`burden of perhaps showing it is inadmissible, but they have
`a motion of showing that it is admissible.
` JUDGE KAISER: Okay.
` MR. CORBETT: So, I guess back to the original
`question, I guess under this proposal, petitioner would go
`first, patent owner would use 29 of their 30 minutes, I
`would use my remaining ten, he would use his last one, if --
`that's fine with petitioner.
` JUDGE KAISER: Okay. Well, that's the way we'll
`proceed then.
` MR. SCHMITT: Okay. Thank you, Your Honor.
` JUDGE KAISER: All right. So first thing on the
`order of business or next thing on the order of business, I
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`suppose, we've got some objections by patent owner to some
`of petitioner's demonstrative exhibits. The panel has
`considered those objections. We are going to overrule them
`at this time. Feel free to use the demonstrative exhibits
`that were forwarded to the board earlier. Those exhibits
`I'll emphasize are not evidence. They're aids to the
`argument of both sides, and they -- they're not part of the
`record, they haven't been filed, but they have been served
`on both sides. If you want to use your time to talk about
`any objectionable matter in the other side's exhibits during
`your case in chief, feel free to do that.
` One other thing, we put this I think in the
`hearing order, but we do have a judge who's appearing
`remotely, Judge Roesel appearing from Alexandria, Virginia.
`We've got -- she cannot see anything that goes on in this
`room. So to the extent you put anything up on the screen or
`I guess wall here, she won't be able to see that. So if you
`are going to talk about a slide or an exhibit in the record,
`please identify it clearly. One, it helps us make a clear
`transcript, and, two, it will let her see it on her screen
`in Virginia.
` Finally, remember to speak into the microphones
`here in the room so that -- particularly so that Judge
`Roesel can hear you. Some of the microphones may be muted.
`If you -- there's a green light on the base of the
`microphone. If that light is off, no one can hear you
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`speaking into that. So push the button that says "push" to
`turn that light on when you want to speak. And usually a
`good practice, at least in this room because it is so small
`and overfed with speakers, turn the microphone off when you
`are not speaking into it, if you can remember to.
` All right. So, with that, petitioner you have 20
`minutes. You can start whenever you are ready.
` MR. CORBETT: I apologize, Your Honor. I had my
`screen set up, and it just went blank on me. If I can have
`just a moment to get it rebooted here.
` JUDGE KAISER: Sure.
` MR. SCHMITT: Your Honors, while we're waiting for
`that, we have hard copies of the -- our demonstrative
`exhibit, if that would be helpful for you.
` JUDGE KAISER: Sure.
` MR. SCHMITT: I don't know if you have it, but if
`it will be helpful, I can approach.
` JUDGE KALAN: Please.
` JUDGE KAISER: Yeah, sure. That's fine.
` MR. CORBETT: May it please the board. My name is
`Ryan Corbett. I am counsel for petitioner in this inter
`party review. This IPR relates to US patent owner
`9,393,639, which as shown here in slide two of petitioner's
`demonstrative exhibit, relates to a spot loading cap
`changer. The spot loading cap changer includes two primary
`components. One component that removes the cap and then
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`Case IPR2017-00341
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`magazines that holds replacement caps to attach to the
`welding head or welding electrode once the old cap has been
`removed. For purposes of this IPR, only the magazines are
`at issue, not the component that removes the old caps.
` As shown here in slide 3, the challenge claim in
`this IPR Claims 1 and 35, the claims are very similar and
`any differences are not relevant for this proceeding, so we
`will focus on Claim 1 as representative of both.
` On slide 4-1 we have Claim 1 on the left, and
`Fig. 5 of the '639 patent shown on the right-hand side.
`There are four primary components of Claim 1. As shown in
`slide 4-2, there is a cap carrier, which is shown in blue on
`the right-hand side, and holes, which are shown in yellow on
`the right-hand side in slide 4-2. As shown in the left
`side, the cap carrier has the plurality of holes, and the
`holes are sized and shaped to receive a plurality of spot
`welding caps in a circular arrangement, as shown in Fig. 5.
` The remaining two primary components are a spring,
`which is shown here in slide 4-3, and the center, it's
`referencing 33, and a stop referencing 32, and the lid,
`which is also shown here in yellow in slide 4-3. In
`operation, how this works is the spring causes the cap
`carrier to rotate until the cap, a cap hits against the stop
`32, and stops the carrier from rotating.
` So what happens at that point is the electrode
`comes down and is inserted into the cap, removes the cap,
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`and the spring causes the cap carrier to rotate until the
`next cap abuts against the stop, and then the next cap is
`ready for removal.
` Grounds instituted in this IPR, there are two of
`them, as shown here in slide 6. There's Takaba in view of
`Koch, and Takaba in view of Lilley. The Takaba references
`Japanese patent application 2002-79381, Fig. 5 of which is
`shown on both the left and right side of slide 6. Koch is a
`German patent application No. DE-19905477. Fig. 5 of Koch
`is shown on the left side of slide 6. And Lilley is a US
`patent, No. 4,986,251, and Fig. 1 of Lilley is shown on the
`bottom right of slide 6.
` Now, in both grounds of rejection, petitioner
`asserts that Takaba discloses all of the claims, except for
`a plurality of holes. On slide 8-1 there is text of Takaba
`shown on the left side, and on the right side Fig. 5 of the
`Takaba is shown. On slide 8-2, Takaba's magazine includes
`two cylinders, which are shown in blue and purple in slide
`8-2. And those cylinders hold multiple welding caps in a
`circular arrangement, both in the top cylinder and in the
`bottom cylinder.
` In slide 8-3, there's a spring that's shown in
`yellow that's located in the center of the cap carrier and
`provides a rotational force that causes the cylinder to
`rotate.
` And the last element I'll point out here in slide
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`8-4 is an upper side installing part, 23A, which Takaba
`explains that the subsequent tip is stopped by the upper
`side installing part and, therefore, ready for extraction
`when needed.
` So in slide 8-5, you've got the comparison here of
`the '639 patent on the left, and Fig. 5 of Takaba on the
`right. The cylinder in Takaba, of course, runs to the cap
`carrier in the '639, the spring, obviously corresponds to
`the spring in the '639 patent, and the upper side installing
`part of Takaba corresponds to the stop. And so the only
`thing that's missing in Takaba is the plurality of holes,
`which as explained here in slide 9, both Koch and Lilley
`disclose magazines that have a plurality of holes.
` I'll start first with Koch. In slide 10-1, there
`is Fig. 5 is shown, and Fig. 5 of Koch shows a device for
`delivery of electrode caps and includes magazine 1A, that's
`shown here in slide 10-2, and receptacles, reference number
`2, which are highlighted here in yellow, and slide 10-3,
`that are located around the edge of the circular magazine.
` Moving to Lilley, Lilley, as shown here in slide
`11, is related to an air gun magazine, instead of a welding
`cap magazine, but as shown in the abstract here in slide 11,
`Lilley -- the magazine of Lilley includes a circular pellet
`carrier that is rotatably mounted and also includes a coil
`spring that is -- that biases the pellet carrier towards an
`end position where the pellet is able to be removed from the
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`magazine.
` Shown in more detail here on slide 12-1, there's
`Fig. 1 on the right with corresponding text of Lilley on the
`left. Slide 12-2, shows the relevant portions of Lilley,
`and it includes a pellet carrier two, a plurality of holes
`or chambers, as Lilley calls it, which are referenced in 21
`shown in yellow here in slide 12-2. There's also a spring,
`which is shown here in 12-3, highlighted in yellow, that is
`located in the center of the pellet carrier.
` And the last component is an abutment face 11,
`that that Lilley explains is used to stop the -- stop the
`pellet as it rotates so that the pellet is in alignment with
`the exit holes so that the pellet can be pushed out of the
`magazine.
` So the first issue that the parties dispute is
`whether Lilley is analogous art. And so, of course, there
`are two ways in which a prior art reference can be analogous
`art, whether it's from the same field of endeavor as the
`patent at issue or if it's pertinent to the particular
`problem that the '639 patent inventor was trying to solve.
`And so, of course, Lilley is not related to spot welding
`caps so it doesn't satisfy that first prong, but in our view
`it does satisfy the second prong as analogous art because it
`is pertinent to the particular problem that the '639 patent
`addresses. And as shown --
` JUDGE KAISER: Your definition of the problem, I
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`think you're just about to get to, right?
` MR. CORBETT: Yes, Your Honor.
` JUDGE KAISER: Is reliably automatically supplying
`disposable components at a consistent location. That seems
`like a really broad statement of the problem. If we
`disagree with you on the statement of -- on that problem, I
`mean, is there a narrower problem that is pertinent to both
`Lilley and the challenged patent?
` MR. CORBETT: I guess to state it narrowly, I
`would say that they also both -- they also both remove the
`cap or the pellet in a similar way, in that they are both
`removed in axial directions so that would be another way of
`stating the problem in a more narrow way.
` JUDGE KAISER: Okay.
` MR. CORBETT: And so as Your Honor mentioned, that
`is our statement of the problem that's being solved, and
`I'll explain how it relates to both of them, both Lilley and
`the '639 patent.
` So in the '639 patent, as the '639 patent
`explains, and as the patent owner has also explained, the
`idea in the '639 patent is that the magazine needs to move
`to a stationary welding head. And that's to be contrasted
`with the scenario where the welding head is able to move to
`the cap magazine order to get a new cap out.
` And the reason this presents a problem is that
`that movement of the magazine can cause the caps in the
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`magazine to become misaligned or jostled in a way that
`there's not going to be -- there will be an error or
`misalignment that occurs that the cap will not be able to be
`extracted by the electrode.
` And so what the '639 patent does to address this
`problem is ensures that consistent location of the cap so
`that even when it's moved around to the stationary welding
`head, it is able to provide the cap in a reliable way that
`it can be extracted. And as shown here in slide 14-5, this
`is demonstrated here where the welding electrode is shown in
`yellow. Slide 14-6, in green shows the welding cap, and in
`slide 14-7, demonstrates the movement of the welding
`electrode so that it aligns with the welding cap, showing
`that that alignment is a key component.
` Lilley similarly focuses on reliability and being
`able to reliably provide those pellets in a way that they'll
`be located in the exact same position, as shown here in 15-1
`and 15-2. The -- there's a quote from column 5 of Lilley
`where it explains that the pellet that's about to be fired
`will always be located in exactly the same position abutting
`that abutment face 11.
` JUDGE ROESEL: Can counsel direct us to something
`in the challenged patent that supports the problem to be
`solved?
` MR. CORBETT: In the challenged patent, yes,
`Your Honor. It is -- this way -- in the background of the
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`patent it explains this difference, this notion where the
`magazine needs to be moved around in order to accommodate a
`stationary welding head. I don't have the cite handy right
`at this moment, but I would -- I believe it's in our
`previous slide 14-6 or 7, we cite to -- in addition to the
`disclosure of the '639 patent, the patent owner's expert's
`declaration also explains that this is the object of the
`problem that the '639 patent is trying to solve.
` Moving to slide 15-4, there's another quote from
`column 3 of Lilley that explains that there's an indexing
`means, and that that indexing means is the abutment surface
`that ensures registration of the pellet that's about to be
`fired with the breech of the gun. Again, further supporting
`this alignment problem that Lilley tries to solve. And this
`is demonstrated here in slide 16, which is Fig. 7 of Lilley.
`In this slide there's a pellet shown in green, and exit
`holes shown in yellow, and the breech of the air gun shown
`in blue. And you can see here that all three are aligned in
`order to get the pellet out of the magazine and into the
`breech so it can be fired.
` Slide 17 shows the next step in this process,
`where there's a probe, reference number 64, that has been
`moved to the left in order to push the pellet out of the
`exit hole and into the breech. And so slide 17 demonstrates
`that this alignment problem is -- or alignment goal is
`critical because if any of those, the probe, the exit hole,
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`the pellet, the breech, are not in alignment, it is not
`going to work.
` And so to address patent owner's argument in slide
`18-1, patent owner views Lilley as relating to only diabolo
`pellets in trying to address problems that are unique to
`diabolo pellets. And diabolo pellets are explained in
`Lilley as being these -- having a shape where the two ends
`are wider than the middle. The middle is narrower. And so
`the patent owner's argument, because Lilley relates to
`diabolo pellets and '639 patent relates to welding caps,
`they are not analogous art. Petitioner disagrees with that
`characterization.
` As we explained, the goal in Lilley, and as we
`argued in our papers, that reliability is really the key,
`and it is not unique to diabolo pellets. And this is
`supported by Lilley itself, as shown in slide 18-2 and 18-3,
`where column 11 of Lilley explains that the embodiments
`provide extremely reliable magazines that can be loaded with
`either/or both, ball or diabolo pellets of a caliber to suit
`the air gun, and may be insensitive to the shape or length
`of the pellets. So this again supports the petitioner's
`argument that it's not specific to diabolo pellets, it's
`really about reliability of being able to handle multiple
`pellets of different shapes, sizes, calibers, lengths, in a
`reliable manner.
` Essentially what -- in petitioner's view,
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`essentially what patent owner's argument boils down to is
`that Lilley relates to pellets, air gun pellets, and '639
`pallets relates to welding caps, and, therefore, can't be
`analogous art. Of course, that would collapse the two
`prongs of analogous art into a single prong, and in that
`scenario nothing that's unrelated to welding caps will
`qualify as prior art, which is incorrect in petitioner's
`view.
` So moving to 19-01, reasons for modifying Takaba,
`the reason for modifying Takaba to include holes is to
`maintain that proper alignment and positioning. I will
`actually skip over 19.2 and move to 20-1. In 20-1 --
` JUDGE KAISER: I'm sorry. Can I just stop you for
`one second?
` MR. CORBETT: Yes.
` JUDGE KAISER: You skipped over the other part on
`19, but I wanted to hit you on this for one second. So
`there were two reasons given in the record. There's the
`maintaining proper alignment reason, and then there's the
`reducing pressure on the caps reason. Reducing pressure on
`the caps reason, as patent owner has pointed out, I think
`appears for the first time in the reply; is that right?
` MR. CORBETT: Yes, Your Honor, it does.
` JUDGE KAISER: Is there a reason why we ought to
`consider it, you know, that it couldn't have been brought up
`in the petition?
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` MR. CORBETT: The reason that it wasn't brought up
`in the petition is because it was responsive to an
`interpretation that -- of Takaba that patent owner adopted.
`So in Takaba there's multiple embodiments. Petitioner was
`drawing on one embodiment, patent owner interpreted it as
`operating in the same way as a different embodiment. And so
`in that embodiment the pressure is different in our view,
`and so that necessitated the additional argument about
`pressure based on patent owner's interpretation of Takaba.
` JUDGE KAISER: Okay. All right. Go ahead.
` MR. CORBETT: So as shown here in slide 20-1,
`Takaba shows the -- how the cap is -- the alignment issue is
`another example, the alignment issue, 20-1 shows the shank
`or the electrode in yellow, 20-2 shows the replacement caps
`in green, and 20-3 shows how the shank is inserted in the
`replacement cap, very similar to '639 patent, in that that
`alignment is critical. Slide 21, also we note here the
`patent owner's expert Dr. Wagoner also agreed that
`misalignment of the caps in the electrode is problematic in
`that it could bend the electrode and break down and damage
`caps. And perhaps most importantly, is not actually
`functional to remove the cap from the magazine.
` And so the motivation to modify Takaba to include
`holes is that holes provide less space for the cap to move
`and ensure that correct orientation and location. And --
` JUDGE KAISER: Do we know -- I'm sorry. Is there
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`evidence in the record that caps moving around or being
`slightly out of alignment or tipped over or jammed or
`something like that, is a problem with a magazine of the
`type that Takaba discloses, as opposed to other types of
`magazines that existed either at that time or earlier?
` MR. CORBETT: Yes, Your Honor, there is. And that
`brings me to the next point that that's precisely patent
`owner's argument, is that in Takaba there is a spring that
`presses the caps in an outward direction so they're pressed
`up against that outer wall of the cylinder. And we
`acknowledge that, yes, that Takaba does disclose that,
`however, it doesn't mean necessarily that the cap is not
`allowed to move at all. And, secondly, in our reply, which
`we stated was on page 17 of our reply, we noted that in
`Koch, Koch does disclose an embodiment in which there's a
`spring loaded magazine and -- but it also discloses that on
`the end, at the access position, there's a holding element
`that encircles and engages the entire circumference of the
`circle -- the circumference of the cap, or at least a large
`portion of the cap in order to ensure that -- in order to
`ensure that proper location.
` So Koch, which is from the same field of endeavor
`of both the '639 patent and Takaba, does provide evidence
`that one skilled in the art would understand that even in
`the spring loaded magazine, holes or something that
`encircles or engages the entire circumference of the cap,
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`would provide the benefit of ensuring alignment of the cap.
` And I would also point out, I know my time is up,
`but also want to add that that argument in the reply was
`directly responsive to an argument that patent owner made in
`their response, I believe it was on page 36 of their
`response, where they stated that Koch provides no indication
`that spring loaded magazines suffer from the same problems,
`these alignment problems, as rolling magazines or grabbing
`fed magazines.
` JUDGE KAISER: I guess my question is, is Koch's
`spring loaded magazine spring loaded in the same way that
`Takaba's magazine is a spring loaded magazine. And they
`both operate using spring tension, spring pressure. But
`Takaba seems like it's pushing the caps along their
`direction of travel, but, also, orthogonal to that
`direction, that is, out against the outer wall of the
`cylinder that's containing them. Whereas Koch's magazine,
`the spring loaded magazine in Koch, seems to be only pushing
`in the direction of travel. In other words, if those caps
`aren't constrained laterally, that push in the direction of
`travel could cause them to get off track a little bit or
`something. In a way that -- it isn't self-evidently obvious
`to me is the case in Takaba. I guess, what's the evidence
`that it is the same?
` MR. CORBETT: Right. I think that also kind of
`goes to the discrepancy between the parties, in which
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`embodiment of Takaba is relevant here and whether in example
`two, which is Fig. 5, whether that spring is attached to the
`carrier or not. And so in Fig. 9, which is a different
`embodiment than what patent owner -- or the petitioner is
`relying on, there is that spring that's pushing against that
`last cap. So in that embodiment, yes, it is pushing out and
`on the backside so on the direction of travel, but in the
`Fig. 5, if it's attached to the cylinder, it doesn't provide
`that same pushing force on that last cap because it's
`attached to the cylinder. And so I would say that there's a
`difference -- that could be the key that's the difference,
`but, you know, ultimately, in petitioner's view it is still
`evidence that even if there -- even if it is spring loaded
`and caps can be restrained via the force of the spring,
`there's still evidence in the record that alignment or
`tilting could still occur, and that a holding member or a
`holding device, such as a hole, that encircles the entire
`circumference would be helpful to ensure alignment.
` JUDGE KAISER: Okay.
` MR. CORBETT: And I'll reserve the rest of my
`time.
` JUDGE KAISER: All right. So you've got about
`seven minutes left.
` MR. CORBETT: Thank you.
` JUDGE KAISER: Okay. Whenever you're ready?
` MR. SCHMITT: May it please the board,
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`petitioner's counsel. My name is Marshall Schmitt, and I
`represent the patent owner in this case, Ontario Limited. I
`am here with my co-counsel Gilberto Espinoza.
` Before I get into the meat of my presentation, I
`want to address one factual detail that I believe my
`esteemed opposing counsel got wrong. The holding member as
`described in Koch is not the hole. The holding member is a
`ring that goes around the hole so patent owner's argument --
`or, excuse me, petitioner's argument proves too much
`because, in fact, Koch's teaching is that a hole is not
`sufficient to hold the cap in the position.
` Now we go to slide 4. Why patent owner wins in
`this case is very simple. Petitioner bears the burden of
`proof in this case, and in at least four respects petitioner
`has failed to carry that burden.
` Petitioner's failed to establish why or how the
`teachings of Takaba would be combined with the teachings of
`either Lilley or Koch, with a reasonable expectation of
`success. Petitioner has failed to establish with admissible
`evidence that Lilley discloses holes sized and shaped to
`receive spot welding caps. And, finally, petitioner has
`failed to establish that Lilley is analogous.
` Now, the reply in context tells us something.
`Repeatedly confronted with the reality of what is in the
`petition, in the Derby declaration, and in Dr. Derby's
`testimony, petitioner has sought to cure fatal flaws that
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`have been pointed out, invoking hindsight or re-crafting its
`case, but hindsight and new theories and retracted positions
`cannot render Claims 1 and 35 unpatentable. For example,
`when Dr. Derby testified that Takaba did exactly what
`Your Honor indicated, which is that the spring pushes
`orthogonally to prevent the caps from rattling around,
`suddenly in reply the theory changed. Now it is all about
`pressure. And the pressure came about because Dr. Wagoner
`pointed out the ambiguity in the explanation that petitioner
`provided both in the evidence and the petition. And, again,
`it is petitioner's burden to prove what Takaba teaches. So
`to the extent that there's a question about whether the
`spring is attached or not, and that's material, we don't
`believe it is material necessarily to the ultimate outcome,
`but to the extent that it is material, petitioner has
`failed. Failed in their burden.
` When Dr. Derby testified at his deposition that
`there's no need to explain how one of ordinary skill would
`combine the teachings of the various references, we propose
`there's really no need to explain, it was just obvious.
` In reply, petitioner tried to fill all the gaps by
`kind of laying out how it would be done, and claiming that
`patent owner's expert explained how that would be done.
`That all had to be done in the petition. That was the
`burden that they had, that the petitioner had that they
`failed in.
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` And, finally, as an example, is
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