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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC. and
`EVERLIGHT ELECTRONIC CO., LTD.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-005221
`Patent 7,524, 087 B1
`____________
`
`Record of Oral Hearing
`Held: April 4, 2019
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL Administrative Patent Judges.
`
`
`
`1 Everlight Electronics Co., Ltd., which filed a Petition in IPR2018-01226,
`has been joined as a petitioner in this proceeding.
`
`

`

`Case IPR2018-00522
`Patent 7,524, 087 B1
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL EISENBERG, ESQUIRE
`Holland & Knight LLP
`31 West 52nd Street
`New York, NY 10019
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`WAYNE HELGE, ESQUIRE
`JAMES T. WILSON, ESQUIRE
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, April 4,
`2019, commencing at 1:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`2
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`Case IPR2018-00522
`Patent 7,524, 087 B1
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE MEDLEY: Mr. Murphy?
`REPORTER: Yes, Your Honor.
`JUDGE MEDLEY: Are you ready to go?
`REPORTER: Yes, Your Honor.
`JUDGE MEDLEY: Okay. Let’s get started then.
`THE REPORTER: Thank you.
`JUDGE MEDLEY: Good afternoon. This is the hearing for IPR
`2018-00522 Seoul Semiconductor, et al, v. Document Security Systems. At
`this time, we’d like the parties to please introduce counsel for the record,
`beginning with the Petitioner.
`MR. EISENBERG: Michael Eisenberg of Holland and Knight on
`behalf of the Petitioner.
`JUDGE MEDLEY: Okay. Thank you, Mr. Eisenberg. And for
`Patent Owner?
`MR. HELGE: Good afternoon, Your Honor. My name is Wayne
`Helge for the Patent Owner and with me at counsel’s table is Mr. James
`Wilson also of record in this case.
`JUDGE MEDLEY: Okay. Thank you, Mr. Helge.
`Each party has 30 minutes total time to present your arguments.
`Petitioner, you’ll proceed first to present your case with respect to the
`challenged claims and grounds for which the Board instituted trial, and you
`may reserve some of your argument time to respond to arguments presented
`by Patent Owner. And then Patent Owner you’ll respond to Petitioner’s
`presentation and you may reserve argument time for sur-rebuttal. Are there
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`Case IPR2018-00522
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`any questions as to what are presentations?
`MR. EISENBERG: No, Your Honor.
`MR. HELGE: No, Your Honor.
`JUDGE MEDLEY: Okay. Petitioner, do you wish to reserve time for
`rebuttal?
`MR. EISENBERG: Your Honor, I’d like to reserve 10 minutes.
`JUDGE MEDLEY: Okay. And I would just warn you that you
`should probably keep track of it because I’m -- you’re responsible. Okay.
`Thank you. And then Patent Owner would you like to reserve time for sur-
`rebuttal?
`MR. HELGE: Yes, Your Honor. Please. Two minutes.
`JUDGE MEDLEY: Two minutes. Okay. And again, you need to
`kind of keep track of the time.
`So I’d like to remind the parties that this hearing is open to the public
`and the transcript will be entered into the public record of the proceeding,
`which I don’t think is an issue in this case. And as you can see, we have two
`remote judges, Judge’s Dougal and Moore. Actually, the name plates are
`backwards so the person on the right is Judge Moore and the person on the
`left is Judge Dougal. And they cannot see the slides so when you put up the
`slides, as you know, you have to say which of your slides you’re on so that
`they know, so they can follow along. So with that having been said, let’s get
`started with the Petitioner.
`MR. EISENBERG: Thank you, Your Honor. So given the amount of
`time that the parties have provided and decided that is proper for this
`proceeding, I think two things that I would like to do. One, is to address any
`questions that any of the judges have about the papers, the arguments, the
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`issues. I want to make sure that those are all addressed.
`Beyond that, I think the focus of my presentation today, and my
`prepared remarks, and the slides, is really on the issue of peripheral sidewall.
`And both, importantly, how that term has been applied in this proceeding
`and the evidence in support of Petitioner’s position that both of the central
`prior art references here disclose that element.
`To move into my presentation, I’m now on Slide 8. This is just a
`transition into what I’d like to discuss today. On Slide 9, I have prepared a
`slide that shows what we have from the Board's initial decision instituting
`and what we have is what is now the undisputed construction of the term
`“peripheral sidewall.” The Board said and the parties have now agreed that
`a peripheral sidewall is a feature having a wall-like appearance arranged at
`the periphery of the reflector housing; that’s the construction.
`The Board also left a question open for the parties to address. That
`question is addressed on Slide 10, and the issue that the Board asked for
`further information on is what does it mean for the peripheral sidewall to
`extend between the end faces of the housing.
`Moving onto Slide 12, the Patent Owner was the first to respond on
`this issue in their reply -- in their response. And what the Patent Owner said
`was we agree with the same construction that the Board applied. That it is
`simply a wall-like feature that appears at the periphery of the reflector
`housing, exactly as the Board had said. They said also, that that feature has
`to extend between the first and second end faces of the reflector housing.
`That was precisely the language that the Board asked for further information
`on so, in essence, what the Patent Owner said is that additional language
`should be given its plain and ordinary meaning. That position is also
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`Case IPR2018-00522
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`consistent with the position that the Patent Owner took in the litigation
`where the Patent Owner did not request a construction of either peripheral
`sidewall or how a peripheral sidewall goes from the top to the bottom. The
`main argument raised by Patent Owner, and this addressed on Slide 13, is
`that in the petition when Petitioner addressed this issue, they treated the
`sidewall as a two-dimensional feature instead of a three-dimensional feature.
`That it was simply a face or a surface -- a face or an area. And that is the
`fundamental, as I understand it, issue that Patent Owner takes with the
`presentation that Petitioner’s made in the petition. And Patent Owner
`provided the helpful image on Slide 14 where two large semi-rectangular
`shapes were added in red to identify what Patent Owner believes are the
`peripheral sidewalls.
`As the Board can see, and is clear in this image, there’s no particular
`dividing line identifying where this peripheral begins or ends. It’s simply a
`large rectangular shape, two of them provided that identify an area that must
`include somewhere a peripheral sidewall. So I’d like to move on now to the
`evidence of disclosure in the prior art. And what’s important here to
`remember is this evidence, some of it was cited in the petition, some of the
`evidence came forward during the pendency of this proceeding. The Board
`is capable and allowed of receiving additional evidence during the course of
`a proceeding. That’s exactly what the Federal Circuit said in Anacor.
`That’s why depositions are taken. We are permitted to provide additional
`declarations. This is not a proceeding that begins and ends with the petition
`itself. So what evidence do we have? On Slide 16, I’ve reproduced and
`highlighted parts of Dr. Pecht’s second declaration. Dr. Pecht’s declaration
`which was -- is a professor in packaging and he has written numerous books
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`Case IPR2018-00522
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`about semiconductor packaging including with respect to LED’s. And what
`Dr. Pecht said was consistent with the Board’s interpretation and the parties
`agreed construction that both references Kyowa and Matsumura, “Depict
`features that have a wall-like appearance arranged at the periphery of a
`reflector housing. Those features are solid structures that extend from the
`top to the bottom around the outside of the reflector housing.” That’s the
`first highlighted section.
`The second, there Dr. Pecht explained, “Every feature and part of
`those structures, the walls, have some depth and therefore cannot be defined
`in any meaningful way as merely two-dimensional.” This is again, from his
`second declaration. As he also explained, and this came up in detail in his
`deposition, the issue that’s raised by Patent Owner is a difficult one. How
`deep or thick must a peripheral sidewall be? It must clearly have some
`thickness, some depth. It can’t simply be a mathematical construct. And
`what Dr. Pecht said was, “The issue would have been to identify a solid
`structure” -- this is one Slide 17. My apologies. “Having the external
`appearance of a wall, which is in my view, entirely consistent with my
`original declaration and my testimony.” As Dr. Pecht further explained, and
`this is reproduced on Slide 18, when looking at the housing even in the
`preferred embodiment disclosed in the 087 Patent, if you were to look at the
`middle of the package from top to bottom, you could extend a line as a solid
`surface -- as a solid element completely across the housing. So there is no
`specific depth that you can identify for a peripheral sidewall especially in the
`middle.
`The same issue also arises throughout the peripheral sidewall in that
`there is no consistent thickness or depth that you can identify. So moving
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`onto Slide 19, what Dr. Pecht said was I can look at the prior art. In this
`case he was looking at Kyowa and was looking at the mold that is used to
`create the housing of Kyowa that includes the lead frame and he says, “A
`person having ordinary skill would’ve understood the outer periphery of the
`housing to present a solid structure from the top to the bottom of the
`housing, extending depth-wise into the housing.”
`On Slide 20, this is part of the testimony from Dr. Pecht’s sworn
`deposition. He said, “And I think it’s clear from the various picture that this
`housing,” that’s the housing of Kyowa, “housing encompasses the lead
`frame. So it has an outer peripheral wall, it goes -- the housing goes around
`the whole package and there’s a -- on the outside periphery, there’s a feature
`that’s wall-like.” Similarly, on Slide 21, he explained, and I’ll just skip
`ahead, that there is a sidewall and that it has some depth with cavities in it.
`On Slide 22, he explained --
`JUDGE DOUGAL: Counsel, can I pause you for a second?
`MR. EISENBERG: Yes, Your Honor.
`JUDGE DOUGAL: Can we go back to your Slide 19 or -- yeah, Slide
`19. So when Dr. Pecht is saying that one of skill in the art would’ve
`understood the outer periphery to present a solid structure from top to
`bottom, extending depth-wise into the housing, is this essentially his
`definition of a wall or -- I just want to connect this with, you know, our
`claim construction and the claim language “the peripheral wall.” Could you
`just expand on that a little bit more?
`MR. EISENBERG: Sure, Your Honor.
`JUDGE DOUGAL: To the connection between this and the claim
`language or our claim construction.
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`
`MR. EISENBERG: And despite the name tags, that is Judge Dougal.
`Thank you, Your Honor. So the issue here is what does it mean for the
`feature to be “wall-like.” And what Dr. Pecht is trying to say is that looking
`at the structure depicted, and this is a cross sectional view, what he in his
`opinion sees is a solid package viewed from the outside that has a top and a
`bottom. The solid feature extends from the top to the bottom and it has
`some depth that is wall-like. So it’s his attempt and this continues on the
`previous -- on Slide 17 where what he’s trying to say is there is no particular
`depth that you could look at. It has to be wall-like, that’s the Board’s
`construction, but beyond that requirement, what it needs is some thickness.
`Something more than just two dimensionality which is what Patent Owner
`said was the error in the petition. It was never Petitioner’s intent to say it
`can be a mathematical construct. Petitioner understood that it has to be a
`physical structure that has some depth. The difficulty is there’s no magical
`this thickness is a wall, and this thickness is not, and this thickness is not.
`There’s no dividing line between wall-like and non-wall-like simply based
`on thickness. Does that answer the question?
`JUDGE DOUGAL: Yes, it does. Thank you.
`MR. EISENBERG: I think I was on Slide 22. And that’s exactly
`what he says in his deposition transcript. This is from Pages 50 and 51 of
`his deposition. He said, “I don’t think it’s necessary to even worry in some
`sense, what’s the inside, what’s the internal structure of the wall because
`that’s not something that’s clearly defined either in the claims or more -- or
`importantly, in the specification of the ’087 Patent, where the wall starts and
`stops in thickness.” Clearly, the wall thickness is for the package in the ’087
`vary. It’s just a feature that has the appearance of a wall.
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`
`JUDGE MEDLEY: So is it -- I’m sorry. Is it your position then that
`just like a solid block that does not have a wall on the peripheral that it has
`to have some depth as you were speaking of earlier in crevices, if you will,
`within the block?
`MR. EISENBERG: I mean, when you look at the claims, there must
`be a first pocket and a second pocket. It can’t be a solid cube, but you have
`to look elsewhere in the claims to figure out that there are spaces. It’s not a
`solid block. Such an interpretation would be inconsistent with the claims as
`a whole and the specification. The issue is simply, and you can see in the
`lower left on Slide 22 and I presented this earlier, the ’087 Patent, the
`preferred embodiment is in its center, effectively a solid block.
`It does go all the way across from one edge to the other in a solid line.
`So for there to be a wall there, it clearly can in some instances be solid
`throughout, but when you look at the claim as a whole, you see there must
`be first and second pockets. That’s the distinction that Patent Owner ignores
`when it says the claims encompass a cube. Clearly, they do not. They
`encompass a package that has two pockets and has peripheral sidewalls.
`Does that answer the question?
`JUDGE MEDLEY: Yes, thank you.
`MR. EISENBERG: Moving ahead to Slide 23, this is again from Dr.
`Pecht’s declaration, and he’s again explaining with respect to Matsumura
`how you can identify a peripheral sidewall exactly how it’s identified by the
`Patent Owner in its own argument. It’s, in effect, indistinguishable
`structurally -- and it's the structure that’s important here -- indistinguishable
`structurally, and that’s what he explained and that’s what’s not even
`disputed here by Patent Owner by reliable evidence; only arguments. And
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`again, in his deposition when he was testifying under oath, he explained,
`“I’m pointing to the outside periphery of the wall, of the side wall.” And
`again, the depth of this going from the top to the bottom up is again, as I
`mentioned, would not be -- is not really relevant to the claim elements. He
`concedes that it has depths. He describes it as having depth. He just says, “I
`can’t arbitrarily pick a specific minimum or maximum depth to make this
`work. It simply has to have depth.” That was on Slide 24. That was the
`evidence of disclosure with respect to the peripheral sidewall element.
`I have slides that identify all of the other features that I could go
`through. I think the only one that really -- there are two that have some
`dispute remaining. Slide 32 is about the lead receiving compartment. The
`issue here is, and as I said in the briefing, was sort of a chicken and egg
`situation. There’s clearly a space within the housing that is instead taken up
`by metal. What Patent Owner says is that that space must be separate and
`apart from the metal, but there’s nothing in the claims themselves that
`require it. The claims are structural and though it says, “formed in,” at best
`that’s a requirement that it’s a product by process limitation. For purposes
`of validity, product by process is not a limitation in the claims. So what we
`have --
`JUDGE DOUGAL: Can we go back real quick?
`MR. EISENBERG: Yes, Your Honor.
`JUDGE DOUGAL: So just back on peripheral sidewall, one last
`point -- or question. On your Slide 23, you have this statement about
`Matsumura that one of skill in the art would understand the figures to depict
`structures having a wall-like appearance that extend from the top to the
`bottom of the housing. Do you have a similar statement from your expert on
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`Kyowa? I guess this is -- this uses the claim language in our construction
`fairly clearly and I’m just wondering if you -- if there’s a similar statement
`from the declarant on Kyowa?
`MR. EISENBERG: There is a similar statement, and this is on Slide
`19. And I believe it continues, though I might not have it here in a slide, I’ll
`have to check, the next paragraph, Paragraph 9. But Paragraph 8 of his
`declaration -- second declaration is what Dr. Pecht says is the exact same
`structure used -- symbol used to identify a sidewall can be applied exactly to
`the mold shape for the housing in Kyowa.
`So what he’s saying is the shape is effectively the same that you have
`a shape extending from top to bottom with the two pockets as shown. I
`believe there was also a statement -- no, it was not Paragraph 9. What he
`said on Slide 17 is -- Dr. Pecht’s analysis was, “When looking for a
`peripheral sidewall, what somebody would look like is for a solid structure
`having the external appearance of a wall, which is in my view, entirely
`consistent with my original declaration and my testimony.” So that’s again,
`wall-like, he was saying the appearance of a wall. And moving onto Slide
`18 -- so what he also said in Paragraph 8, and I did not reproduce it here
`was, “The outer periphery of Kyowa’s housing as indicated in the cross
`section, which is the cross section shown here on Slide 19 of the mold, is in
`my view, every bit as wall-like as the outer surface of the housing depicted
`in the 486 Patent.”
`So he’s saying the feature here is a wall-like structure, as shown in the
`figure, extends from the top to the bottom, and it has some depth and
`thickness exactly as is shown in the 087 Patent. And the part that’s
`highlighted is, he says, “You need a structure, a solid structure that extends
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`from the top to the bottom of the housing and has some depth to be wall-like
`according to the Board’s construction,” which is exactly what he explains in
`the highlight on Slide 19.
`JUDGE DOUGAL: Okay.
`MR. EISENBERG: About 30 seconds into my rebuttal time. If --
`JUDGE DOUGAL: Yeah. That’s fine.
`MR. EISENBERG: -- there are any further questions.
`JUDGE DOUGAL: That answers my questions.
`MR. EISENBERG: Thank you. I appreciate that, Your Honor.
`JUDGE MEDLEY: Okay. You have about, yeah, nine-and-a-half
`minutes left. When you’re ready.
`MR. HELGE: Thank you, Your Honor. May it please the Board,
`Your Honors, to establish unpatentability in an IPR, it is incumbent upon
`Petitioner to prove that all elements of the claims are either present or
`suggested by the prior art. That proof cannot be met by overlooking the
`claim language of the challenged claims by comparing the art to the
`challenged patent’s drawings or even by comparing the art to products that
`may or may not be at issue in a co-pending litigation.
`Under the proper test of evaluating the prior art against the challenged
`claims, Petitioners have failed to prove unpatentability in this case. Their
`leading mistake, as proposing counsel didn’t suggest or at least insinuate in
`the sense that this is a key issue in this case, their leading mistake, Patent
`Owner’s believe, has been to reduce the claimed peripheral sidewall
`extending between a first end face and a second end face of a reflector
`housing to mean that the claimed reflector housing has nothing more than
`sides. We saw that argument on Page 16 of the petition and the Board
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`Case IPR2018-00522
`Patent 7,524, 087 B1
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`rejected that point correctly.
`But on Page 16 of the petition they do write, “In the example
`embodiment of the ’087 Patent, the peripheral wall/sidewall comprises the
`sides of the housing.” What I put up on the screen for Judge Dougal and
`Judge Moore is our Slide 6. And I’d like to start with the intrinsic record of
`the ’087 Patent to address this point. In the portion that Petitioner’s cite to
`in the petition on Page 16, which is in effect Column 2, Lines 12 through 17
`in our specification describing Figures 1 and 2, the peripheral sidewall is
`described as Element 26. Now, here as I show on Figures 1 and 2, Element
`26 is not referring to a side of the reflector housing. In fact, you can see
`Element 26 shows up in Figure 1 as a structural element. It’s actually
`pointing to what would be, I think, fairly called part of the first end face or
`the top end face in Figure 1.
`But again, it’s pointing to a structure. There is a portion -- or a top
`portion of a wall in Figure 1 -- being shown in Figure 1. In Figure 2, again,
`you see Element 26. The same Element 26 in Figure 2, showing the bottom
`portion of that same wall. And, in fact, if we look to the specification and
`see how the specification describes that language, specification states here,
`beginning on Line 12, “The Housing 20 has a Top 22, also referred to as a
`first end face, and a Bottom 24, Figure 2, also referred to as a second end
`face with a Peripheral Wall 26, also referred to as a sidewall, extending
`between the First End Face 22, and the Second End Face 24, and running
`around the sides of the Housing 20.”
`So in effect, what we get from that portion of the specification is a
`very clear picture that the peripheral sidewall runs around the sides. It’s not
`simply the side of the reflector housing; it’s different. Then we see that also
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`Case IPR2018-00522
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`in the claim language of the challenged claims. These challenged claims
`could have recited that the reflector housing includes as it does a first end
`face, referring to the top for example; a second end face referring, again,
`exemplary bottom of the reflector housing and sides or side faces. It doesn’t
`do that. It requires a specific structure of a peripheral sidewall extending
`between the first end face and the second end face.
`JUDGE MOORE: Counsel, doesn’t the exterior wall of that cube-like
`structure, you know, extend about? I’m trying to -- just trying to understand.
`You know, so we’ve got the wall of the structure. I understand that you’re
`saying that’s not a peripheral sidewall necessarily because there has to be
`some depth, but, you know, there is a surface. There are four surfaces that
`extend between the -- I forget the exact word the claims used but the ends.
`Let me use the exact words. “There are four surfaces that extend
`between the first end face and the second end face,” about the periphery of
`the reflector housing. So, I mean, I think you understand the issue, but I’m
`just trying -- struggling to understand why those four surfaces that extend
`between the first end face and the second end face are not, by themselves, a
`wall. And in that regard, I note that Claim 1 introduces the element, the
`peripheral sidewall, before it even starts talking about the pockets.
`MR. HELGE: That’s correct, Your Honor. What I think what we’ve
`got here is we have a specification that’s consistent with the claims which is
`the idea that we have a peripheral sidewall as a structure. I think Figure 1,
`Figure 2, the specification itself which tell us that they -- the peripheral
`sidewall runs around the side. It’s not simply the same as the side, but it
`follows a peripheral path around the side. To say that this is not the same
`thing, the claims, again, use the term “peripheral sidewall” to be something
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`distinct from a face. Had it simply been a face, they could have described it
`as a face, but they didn’t. They could’ve described it as a surface; they
`didn’t. They said it’s a peripheral sidewall running around the sides. We
`know it needs to be along the periphery. Only thing that establishes is the
`side portion but the wall --
`JUDGE MOORE: But don’t the faces run along the sides? And what
`part of the claim is inconsistent with that is what I’m struggling to
`understand.
`MR. HELGE: Well, Your Honor, I would say very specifically that
`the specification itself tells us that the peripheral sidewall is a structure by
`pointing 26 Element -- Element 26 not to the sides but to the top and the
`bottom. They’re showing us that there is a top portion of that wall that
`extends all the way to the top of the first end face and none of that is
`consistent with the claim.
`JUDGE MOORE: But the specification description is not a claim
`limitation and aren’t we under broadest reasonable interpretation here?
`MR. HELGE: We are under broadest -- that’s correct, Your Honor.
`What I think we should talk about here, if I may, is Dr. Pecht’s testimony,
`and we’ve included this on Slide 19, and it’s
`-- what Dr. Pecht tells us in Slide 19 -- I’m going to move to this here
`-- something very specific because, Your Honor, I think the question you’re
`asking me is can’t we just determine if it’s a wall by looking at the outside.
`Just like Dr. Pecht says in deposition and as he really says in his second
`declaration. I’d like to get to that at some point here as well, Your Honor.
`But --
`JUDGE MOORE: That’s correct. And, you know, when you’re
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`answering the question, you know, please address, you know -- I understand
`you disagree with that. You know, any evidence you can point to in the
`patent, the claims themselves that contradict that would be very helpful.
`MR. HELGE: Oh. Your Honor, if I may just make the point here.
`What he’s saying is that you can’t simply look at the outside -- in this
`testimony that I’ve got here on Slide 19 -- you can’t just look at the outside
`because, in fact, once you look at the inside, it may not turn out to be a wall.
`He says you look at the inside and you look at the sort of the more meaty
`part of Kyowa, the lower portion there, and he says when you look at that
`you may wonder whether there’s even a wall there. And I think that
`testimony is directly on point with your question which is to look at the
`outer surface or face of a reflector housing, you don’t know whether you
`actually have a feature that’s wall-like just as Dr. Pecht says here on Slide
`19, you may have something that you say well, looking at the whole picture,
`looking at this from multiple perspectives, it actually turns out you’re not
`sure it’s a wall at all. What Dr. Pecht is really advocating for is to look at
`only half of the picture because if you look behind -- if you look at the cross
`section like we have here in Kyowa, you may find that it’s not a wall at all
`and that’s critical testimony because the claims do require a peripheral
`sidewall.
`Again, which I would contend from the claim itself, that the use of
`word “sidewall” -- “peripheral sidewall,” the Roman Numeral 20 -- or not
`Roman -- Numeral 26 pointing actually to the portion of the structure of that
`sidewall on the first end face and the second end face, shows you that, in
`fact, this is a structural feature that has to be present.
`Your Honor, I hope I’ve answered your question by now. Please let
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`me know if not.
`JUDGE MOORE: No. I believe so. So it sounds like the primary
`evidence you’re relying on here is this portion of the testimony of Dr. Pecht
`as well as the example given in the specification that, in fact, that it
`identifies not necessarily -- it appears that it might not necessarily be the
`outside surfaces, but the top and the bottom which, in your opinion, indicates
`that there has to be some depth and not just the surfaces that match your
`summation.
`MR. HELGE: That is correct, Your Honor. Although, I would also
`add, again, the claim language itself which uses the term “peripheral
`sidewall” in a way that’s different -- we know what an end face is. An end
`face really is, in fact, a surface and I think we have to certainly include that
`claim language among the factors that encourage us to correctly interpret
`this peripheral sidewall to be something more than a surface. As the Board
`correctly noted in the petition, Petitioner’s never explained, in fact, why it
`would be correct to reduce the peripheral sidewall structure down to a
`surface and, in fact, they still haven’t done that. There’s certainly nothing in
`their reply that supports that position, Your Honor.
`JUDGE DOUGAL: So are you arguing against our claim
`construction from the Institution Decision or that under our claim
`construction, Petitioner has not shown the sidewall?
`MR. HELGE: Your Honor, we fully endorse the claim construction.
`In fact, as Your Honor may recall, in fact, the Board adopted the Patent
`Owner’s claim construction for the term “peripheral sidewall” and asked for
`more evidence on what it means -- what structure is required to have a
`peripheral sidewall that extends from the first face -- first end face to the
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`second end face. Our position, very clearly, is that the Petitioners have not
`shown any peripheral sidewall that extends between a first end face and a
`second end face, and actually, I believe, yeah, Judge Dougal, one of the
`things that I think I need to correct is the Petitioner's reliance on Paragraphs
`8 and 9 from Dr. Pecht’s second declaration. These are the -- you may
`recall, these were the images in the slides that he had. It was -- it was Slides
`-- I’m sorry. I believe it was 19 and 23 when he was pointing -- yes, 19 to
`23 where he was showing you images, cross sections of Kyowa and in
`Matsumura