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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARROWS UP, LLC,
`Petitioner,
`
`v.
`
`OREN TECHNOLOGIES, LLC,
`Patent Owner.
`_____________
`
`Case IPR2018-01232 (Patent 9,682,815 B2)
`Case IPR2018-01233 (Patent 9,914,602 B2)
`_____________
`
`Held: October 25, 2019
`_____________
`
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
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`IPR2018-01232 (Patent 9,682,815 B2)
`IPR2018-01233 (Patent 9,914,602 B2)
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`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONR:
`
`
`ALLISON M. LUCIER, ESQ.
`Holland & Knight LLP
`10 St. James Avenue
`Boston, MA 02116
`
`ROBERT S. HILL, ESQ.
`Holland & Knight LLP
`200 Crescent Court
`Suite 1600
`Dallas, TX 75201
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`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOEL R. MERKIN, ESQ.
`KYLE KANTAREK, ESQ.
`Kirkland & Ellis LLP
`300 North LaSalle Street
`Chicago, IL 60654
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`
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`
`
`The above-entitled matter came on for hearing on Friday, October 25,
`2019, commencing at 10:00 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`IPR2018-01232 (Patent 9,682,815 B2)
`IPR2018-01233 (Patent 9,914,602 B2)
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`P R O C E E D I N G S
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`JUDGE TARTAL: Please be seated. Good morning and welcome.
`We are here for a final hearing in two Inter Partes Review cases captioned
`Arrows Up, LLC, Petitioner, versus Oren Technologies, LLC, Patent Owner,
`case IPR2018-01232 concerning U.S. patent No. 9,682,815 B2 and case
`IPR2018-01233 concerning U.S. patent No. 9,914,602 B2. First, let me
`begin by introducing the panel. I am joined by Judge Weatherly and Judge
`Korniczky, and I am Judge Tartal. Could we please have the parties'
`appearances. Who do we have appearing today on behalf of Petitioner?
`MR. HILL: Robert Hill.
`MS. LUCIER: And Allison Lucier.
`JUDGE TARTAL: Thank you counsel and welcome, and who do
`we have appearing today on behalf of Patent Owner?
`MR. MERKIN: Good morning, Your Honor. Joel Merkin on behalf
`of Patent Owner.
`MR. KANTAREK: Kyle Kantarek on behalf of Patent Owner.
`JUDGE TARTAL: Thank you and welcome as well. We set forth the
`procedure for today's hearing in our Trial Order and for a reminder each
`party will have 45 minutes of total time to present their arguments in both
`cases. Petitioner has the burden of proof and will go first for both cases.
`Patent Owner will then present opposition arguments for the cases and, to
`the extent Petitioner has reserved time, Petitioner will present reply
`arguments for both cases. And finally, if Patent Owner has reserved time,
`Patent Owner may present reply arguments. Counsel, are there any
`questions in that regard?
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`For the clarity of the transcript and for the benefit of Judge Korniczky
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`who is participating remotely, when you are referring to an exhibit on the
`screen please state for the record the exhibit page number or, for
`demonstratives, the slide number to which you are referring. We also
`remind the parties that under no circumstances are they to interrupt the other
`party while they are presenting their arguments and demonstratives. Any
`additional questions from Patent Owner at this time?
`MR. MERKIN: No, Your Honor.
`JUDGE TARTAL: And any questions from Petitioner?
`MR. HILL: No, Your Honor.
`JUDGE TARTAL: Would you like to reserve a certain amount of
`time out of the 45 minutes for reply?
`MR. HILL: Yes, we'll reserve five minutes.
`JUDGE TARTAL: There will be a timer clock, it will be set for 40
`minutes. It will show your count down and then, if you finish early, any
`extra time you have will be remaining. Counsel, you can proceed when you
`are ready.
`MS. LUCIER: I have extra copies of the slides if you'd like.
`JUDGE TARTAL: Yes, please.
`MS. LUCIER: Good morning. My name is Allison Lucier of Holland
`& Knight and I am here on behalf of the Petitioner. With me is Robert Hill,
`also of Holland & Knight. I'll be speaking about the stacking adjacent
`around line limitations and the flow gate limitations, and then I will turn the
`rest over to Rob.
`Today we are dealing with two patents that are related to each other
`and share a specification, the 815 patent and the 602 patent. In general,
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`these patents relate to container for delivery, transporting and storing
`proppant such as sand to the well site. On slide 5 for reference, we have the
`grounds on which the 815 and 602 patents have been challenged. We'll be
`talking mostly today about the Sheesely and Mintz references. These
`references, like the 815 and 602 patents, deal with containers for delivering,
`transporting and storing proppant to the well site.
`Turning to slide 8 for reference, we have an index of the issues we'll
`discuss today. Outside of these limitations Patent Owner does not dispute
`that the prior art combinations meet the remaining limitations.
`Turning to slide 9, we have the first limitation at issue. Stacking one
`or more of a plurality of containers adjacent a rail line.
`Turning to slide 10, this limitation is found in claim 1 of the 602
`patent and essentially requires stacking containers filled with proppant
`adjacent a rail line. Patent Owner argues that the Sheesley reference does
`not disclose this limitation and we of course disagree.
`Turning to slide 11, you can see that Sheesley clearly teaches that
`containers may be stacked while empty or filled with sand, and turning to
`slide 12 Sheesley teaches that the containers may be filled at any point along
`the supply chain and this includes at a rail site.
`Turning to slide 13, Sheesley teaches that the containers may be filled
`with proppant while they are stacked. While figure 5 specifically portrays
`these stack containers being filled on a rail car, as discussed, Sheesley makes
`clear the containers may be filled at any location along the supply chain. So
`taken together, these disclosures teaches that Sheesley's containers may be
`stacked, empty or filled, at any point in the supply chain including at the rail
`line and those containers may be filled while stacked. When stacked
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`containers are filled from the rail line, they will be adjacent to the rail line.
`Patent Owner attacks these disclosures by trying to look at what
`Sheesley teaches in isolation rather than with the wholistic approach, let
`alone from the viewpoint of a person of ordinary skill in the art. For
`example, Patent Owner argues that Sheesley discloses only containers
`stacked in transit or at the frac site focusing on figures 3 and 5 of Sheesley
`and figure 5 you can see on slide 13.
`Now first, the containers in figure 5 are not in transit or at the frac
`site, they are stationed when being filled. But more importantly, by focusing
`on these features in isolation Patent Owner misses the larger teaching of
`Sheesley for a person of ordinary skill in the art. Again, as because
`Sheesley's containers may be stacked and they may be filled while stacked at
`any point in the supply chain including at a rail site, containers that are filled
`with proppant will be stacked adjacent to rail line when they are filled at the
`rail line.
`Patent Owner also fixates on Petitioner's use of the words like
`"could". The use of "could" here is not a speculation about modifications
`that could be made to Sheesley. Rather, it's to reflect that Sheesley provides
`for numerous options for moving frac sand from one place to a well site.
`There's not one correct answer in Sheesley.
`Turning to the next limitation flow gate, this limitation appears in all
`claims of the 815 patent and the 602 patent and it requires a flow gate
`positioned adjacent to the outlet to control the flow of proppant through the
`outlet of each of the plurality of containers. Patent owner argues that the
`Mintz reference does not meet this limitation.
`Mintz discloses a container for transporting frac sand and I think that's
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`pretty uncontroverted. Referencing figures 1 through 8, Mintz explains that
`each container has a discharge port, number 4 in figures, and Mintz explains
`that discharge port 4 typically has a four inch outlet and a 24 inch x 24 inch
`sliding gate valve. This disclosure is clear. Mintz discloses the discharge
`port 4 typically has an outlet and a sliding gate valve. The use of "and" here
`is critical. The use of "and" signals that both that outlet and the sliding gate
`valve are associated with discharge port 4. That sentence is not ambiguous.
`Despite this clear disclosure Patent Owner argues that this passage
`refers to two alternative embodiments. The first is the disclosed
`embodiment shown in figures 1 through 8 of Mintz which includes discharge
`port 4 and an outlet. The second is some undisclosed embodiment which
`includes a sliding gate valve in some undisclosed location.
`JUDGE TARTAL: Is there a figure counsel that shows the 24 x 24
`inch sliding gate valve in Mintz?
`MS. LUCIER: There's not, but to be fair Mintz does not purport to
`show the figure. It does not number it or anything. It's silent as to the
`sliding gate valve except that it is clear that it is associated with discharge
`port 4 which is identified. Patent Owner bases this two embodiment theory
`on the fact that Mintz teaches two ways of emptying the container. One,
`through the use of a blower and two, through the use of dumping. But it is
`clear from --
`JUDGE KORNICZKY: So if -- counsel? So if you're going to use a
`blower, where is the blower going to exit the container?
`MS. LUCIER: You mean the sand?
`JUDGE KORNICZKY: Yes.
`MS. LUCIER: It'll exit through the outlet, discharge port --
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`JUDGE KORNICZKY: How does Mintz close the outlet if it uses a
`blower?
`MS. LUCKER: Through the sliding gate valve. I mean, taking a step
`back, Mintz discloses that it typically has a outlet and a sliding gate valve
`and I think that's how Mintz envisioned that you will put the outlet. But I
`think a person of ordinary skill in the art would understand that you can
`close the outlet in any way.
`JUDGE KORNICZKY: And are you saying that one way to close it
`is the use of sliding gage valve?
`MS. LUCIER: Yes, the way that's specifically disclosed in Mintz,
`and it's clear that Mintz is referring to that outlet when it's referring to
`emptying sand from the siding gate valve. In column 5, Mintz explains that
`of course those skilled in the art will readily appreciate that if and when a
`gate valve were used in conjunction with an embodiment of the present
`invention, then frac sand will be unloaded or dumped into the dolly hopper
`or the like.
`Mintz continues and explains that under these circumstances, that is
`when a gate valve is used, the dolly hopper should preferably be constructed
`from two thin gauge sheet metal telescoping tubes which are raised to meet
`the flange disposed on the bottom of the large hopper unit 50 and if you look
`at figure 1 you can see discharge port 4, which is located at the bottom of
`hopper 50 which we've got circled here on slide 21, and discharge port 4 has
`a flange surrounding it, and Mr. Smith, Patent Owner's expert, confirmed
`that discharge port 4 has a flange surrounding it. At his deposition, he was
`asked to draw what a flange looks like. His drawing, which is reproduced
`on slide 21, looks very similar to discharge port 4. Thus it is clear from
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`Mintz that sand is unloaded from the outlet of discharge port 4 into the dolly
`hopper when a sliding gate valve is used.
`Patent Owner argues that it's absurd to use a 24 inch sliding gate valve
`to cover a 4 inch outlet. Specifically Mr. Smith, Patent Owner's expert, says
`that it would be much more expensive to do so. But the fact is that
`something is less than optimal does not mean it's not explicitly disclosed and
`Mintz explicitly discloses using an outlet and a sliding gate valve. Notably,
`Patent Owner and Mr. Smith do not dispute that the combination would
`work, they only say that it's more expensive than using something like 4 inch
`gate valve and again, Mintz states that discharge port 4 typically has a 4 inch
`outlet and a 24 inch by 24 inch sliding gate valve. It understands that a
`person of skill in the art may want to use some other type of valve with the
`discharge port and a person of ordinary skill in the art would understand that
`other sizes such as a 4 inch sliding gate valve may be suitable which Mr.
`Smith seems to think is more appropriate.
`But really this is all a distraction. There's no dispute that Mintz
`discloses the use of a sliding gate valve to unload sand from a container.
`Patent Owner says as much in its surreply and there can be no dispute that to
`unload sand from the container of Mintz, there must be an outlet in the
`container and that's all that the claims of the 602 and the 815 require, and if
`there are no further questions on these limitations I will pass off to Rob.
`JUDGE KORNICZKY: I have a question counsel.
`MS. LUCIER: Yes.
`JUDGE KORNICZKY: Would you go back to your limitation -- let
`me get the proper slide here, one second -- it's where you're talking about
`whether the --
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`MS. LUCIER: Adjacent to rail line?
`JUDGE KORNICZKY: Yes. Would you address the Patent Owner's
`position about what adjacent means?
`MS. LUCIER: So our primary argument is that Sheesley discloses
`adjacent under Patent Owner's interpretation or any interpretation like be
`next to, but Patent Owner also argues that adjacent does not mean on and the
`patent actually uses adjacent extremely broadly and could be used to
`encompass on a rail line. So, for example, claim 1 of the 602 patent requires
`an opening adjacent atop of the container to load proppant therein and if you
`look at -- looking back at slide 3 -- that shows figure 1 of the 602 patent, the
`opening of figure 1 is on the top. So clearly the patent is using adjacent to
`encompass on.
`JUDGE KORNICZKY: Would you look at figure 5 of Sheesley?
`MS. LUCIER: Yes.
`JUDGE KORNICZKY: And it shows that a container is about three -
`- a few feet above the rail line. Is it your position that that's adjacent, that
`that shows that the containers are adjacent to the rails?
`MS. LUCIER: That is not our primary position but we do believe that
`that is also adjacent.
`JUDGE KORNICZKY: What's your primary position?
`MS. LUCIER: That Sheesley discloses filling the containers even
`next to the rail line, if you will. Because if you're filling the containers from
`a rail car, which Sheesley shows is one of the places where sand comes from
`in figure 1 in the prior art, you wouldn't be filling both from the rail car and
`filling on to another rail car where the trains wouldn't run into each other, it
`would be next to, and we base secondary argument that again, Sheesley
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`discloses moving the containers through the rail, and so I'm on slide 15 now.
`Sheesley discloses that you move the containers from the quarry or
`the source all the way to the well site and one of the ways that Sheesley
`explicitly discloses that you get there is by moving from rail to truck and
`Sheesley teaches that you're going to want to limit the amount of demurrage
`which means waiting any of the transportation. In order to do this you
`would empty the cars from the rail site and stack them next to the rail site
`while you wait for trucks to come because you're not going to have trucks
`sitting around because again that would just be increasing demurrage, the
`thing you're seeking to avoid.
`Any further questions, Your Honors? I'll pass over to Rob.
`JUDGE TARTAL: Thank you, counsel.
`MR. HILL: Thank you. I will now begin with slide 22 and I will
`address the scaling limitation which is found in all the claims of the 602
`patent.
`The full limitation is shown here on slide 23 in context for future
`reference in the hard copy. But the essence of this limitation is quite
`straightforward. You figure out how much proppant you need at a well site
`and then you send that many containers to satisfy that need.
`Moving now to slide 24. I address the argument that Patent Owner
`has made that in essence Mintz doesn't teach this limitation because the
`word scaling itself isn't in Mintz. But of course that's not a proper approach
`because the scaling concept is very much in Mintz. Instead we're looking at
`what a person of ordinary skill in the art reading Mintz would understand
`and they would understand that concept. From that perspective it is quite
`clear that Mintz teaches this limitation. So, for example, Mintz at column 1,
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`lines 50 through 54, talks about the prior art disadvantage being a situation
`where several material transfers are prerequisite for ultimate delivery of
`sufficient frac sand and/or proppant to the intended well site.
`Mintz then goes on to state what's shown here on this slide, that it is
`directed to an apparatus and methodology for improving the logistics for
`transporting frac sand and proppant proximal to well sites. It goes on to say
`it's about efficiently and securely achieving prerequisite sand and proppant
`material transfer from such adapted containers to fracking operations
`regardless of the remoteness and limited accessibility of a diversity of well
`site locations. Mintz further emphasizes the importance of maintaining frac
`fluid inventory with virtually unlimited storage. Mintz permits the necessary
`amount of proppant to be delivered to the well site. Mintz at figure 9 further
`emphasizes its invention permits the necessary --
`JUDGE KORNICZKY: Excuse me, counsel.
`MR. HILL: Sure.
`JUDGE KORNICZKY: What slide are you on?
`MR. HILL: I'm sorry. I just changed to slide 25.
`JUDGE KORNICZKY: Right, thank you.
`MR. HILL: If we look at slide 25, we see again this logistical aspect
`of the Mintz disclosure as emphasized. We see improving tracking
`inventory and quality control at the top. We see at the bottom seamless
`timely delivery to rig, the ability to store and deliver higher volumes of sand.
`It talks about the ability to live on site, the elimination of crew and rig
`downtime. So therefore any argument that Mintz is only about unloading
`proppant from a container ignores important aspects of its disclosed
`invention, specifically the elimination of downtime and demurrage fees
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`resulting from not having the required amount of proppant at the well site.
`JUDGE TARTAL: Counsel, is that addressed by your expert?
`MR. HILL: Yes. It's addressed by our expert as well.
`JUDGE TARTAL: Do you know off hand where?
`MR. HILL: We can get that to you either now or during the rebuttal.
`Are there any other questions because I will be able to point to that, but
`other questions on this limitation before I move on? All right.
`Hearing none, I plan now to turn now to slide 26 and I'd like to talk
`about the plurality of structural uprights element in the 815 patent, claims 1
`through 10. So turning to slide 26, we're now looking at this full limitation
`in context at slide 27, and then slide 28 is queuing up Sheesley and its corner
`post element which meets the plurality of structural uprights limitation.
`JUDGE TARTAL: Counsel, can we just stop for a minute on the full
`claim language.
`MR. HILL: Sure.
`JUDGE TARTAL: And what is Petitioner's contention in regards to
`what is meant by “thereby increase the weight carrying capacity of each of
`the plurality of containers”? And, in particular, given that it's in the context
`of this stacking limitation, is Petitioner agreeing with Patent Owner that that
`refers to how much weight a container, itself, can carry as opposed to the
`amount of weight that can be stacked upon a container?
`MR. HILL: I would say that we believe that to the extent that that
`claim limitation does have meaning, it relates to the strength, in this context,
`the strength of the container to hold the material within as opposed to just
`the stacking element because of that additional limitation. That is the
`thereby increase the weight carrying capacity of each of the plurality of
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`containers when fracking proppant is positioned therein.
`So our view, and this is informed in part by column 8 lines 45 through
`46 of for example, the 815 patent, when it talks about the structural members
`44 and 46 which are the structural uprights. It talks about enhancing the
`integrity of the container 12 to the heavy weight supported therein. It seems
`to be talking about being more robust with respect to the weight inside.
`JUDGE TARTAL: Thank you.
`MR. HILL: So Sheesley discloses this element through its corner
`posts, and I'm back on slide 28, and now if we move here to slide 29, we can
`see that Sheesley's corner posts are structural uprights positioned to extend
`from the bottom to the top under any interpretation of those words and
`notably Patent Owner does not dispute this. Rather, Patent Owner argues
`only that this is a new argument. But when we go to slide 30 we see that --
`JUDGE WEATHERLY: Before you move on from that slide.
`MR. HILL: Yes, sir.
`JUDGE WEATHERLY: Let me make sure that I get exactly the same
`citation that you provide on that slide, is that it's Sheesley figure 9 et al., and
`paper 2 at 52.
`MR. HILL: Yes.
`JUDGE WEATHERLY: Okay. Sorry for the interruption. I'll ask
`my question in a different way later.
`MR. HILL: Certainly. Thank you. So if we advance to slide 30 we
`see that in fact this argument is not new. Petitioner did set out on page 52 of
`the petition with respect to the structural upright element those parts of
`Sheesley and as shown on this slide, slide 30, the Board's Institution decision
`recognized and specifically cited this Sheesley argument with respect to this
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`claim limitation. So we think it's quite clear that this argument is not new in
`any sense.
`Moving on to slide 31. We'll talk for a moment about how claim 1 of
`the 815 patent requires both structural uprights and structural members.
`Now Patent Owner argues that the Petitioner has not identified a structural
`upright distinct from a structural member. In fact, structural uprights are a
`subset of structural members but putting that aside, even under Patent
`Owner's argument Sheesley does meet this limitation. So specifically as we
`see on this slide 31, Petitioner has identified a structural member pink that's
`different from the structural upright blue. So even if there has to be different
`elements identified there, they have been identified. If we turn now to slide
`--
`
`JUDGE WEATHERLY: So this is where I really wanted to ask my
`question. So this figure appears in your petition at cited location pages 78,
`79, I think the figure itself is actually on page 79 and that is an analysis that
`you offer in connection with dependent claim 9.
`MR. HILL: Yes.
`JUDGE WEATHERLY: The argument you're presenting here is an
`argument that you're making in connection with claim 1, correct?
`MR. HILL: Correct.
`JUDGE WEATHERLY: And my understanding of the record is that
`you don't really focus the argument this particular way for claim 1 until the
`reply.
`
`MR. HILL: Yes. So, Your Honor, the way I --
`JUDGE WEATHERLY: Yet you don't cite the reply here on this
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`slide.
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`IPR2018-01232 (Patent 9,682,815 B2)
`IPR2018-01233 (Patent 9,914,602 B2)
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`MR. HILL: So --
`JUDGE WEATHERLY: There is a question in my mind about
`whether it's proper for you to wait until your reply to focus your argument
`properly.
`MR. HILL: So if I may answer this, I believe my next slide I think
`anticipates this point.
`JUDGE WEATHERLY: Okay.
`MR. HILL: If I may, and tell me if it does not. So again, Petitioner's
`position which we think is quite clear is in fact that this distinction between
`structural uprights and structural members with respect to claim 1 is not a
`real distinction based on the very clear disclosures in the patent itself.
`JUDGE WEATHERLY: What do you mean it's not a real distinction?
`MR. HILL: Well what I mean is --
`JUDGE WEATHERLY: In what sense?
`MR. HILL: Yes. So if we look at slide 32 we see that the patent
`figure 2 identifies elements 44 and 46 as structural uprights, and the
`discussion we're about to have is of the only disclosures in the 815 patent
`about structural uprights. So what we're about to walk through is the full set
`of disclosure in the challenged patent and we see on this textual cite from
`column 8, 39 through 47, that first structural uprights 44 and 46 are
`identified. Then it goes on to call them again, further down we see
`highlighted in blue on this slide, structural uprights 44 and 46 again are
`called structural uprights. But at the end of the paragraph we see again the
`structural members 44, 46, 48 and 50 enhance the integrity of the container
`to the heavy weight supported therein, a sentence that I've referenced
`previously.
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`IPR2018-01232 (Patent 9,682,815 B2)
`IPR2018-01233 (Patent 9,914,602 B2)
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`JUDGE WEATHERLY: So in that sense the word members is used
`in a more abstract way than upright, or at least that's what's implied to me in
`the specification but I'm more interested in the way that the elements are
`arranged in the claim.
`MR. HILL: So, Your Honor, what we would say is we think that for
`claim 1 we think that both the structural uprights and the horizontal
`elements, all of these elements are satisfying the limitation.
`JUDGE WEATHERLY: Well except that the structural uprights are
`recited not just as uprights, but their location is recited -- there's a functional
`effect that they're described as needing to meet in claim 1. The structural
`members by contrast seem to be referring to a different structural support
`member, excuse me, are positioned in a different location than the structural
`uprights that are recited earlier in the claim and appear also to be limited,
`well I guess just by their location there doesn't seem to be a functional
`limitation in claim 1.
`So I frankly found the petition to be very confusing about what
`exactly you're identifying this as what and I thought that your reply was
`perhaps more rigorous about the mapping and one of the questions I have in
`my mind is whether how much of the record we should weigh procedurally.
`I think the Patent Owner wants us procedurally to sort of exclude your
`clarification from our consideration and so I'm trying to understand why we
`shouldn't do that from your perspective, why we shouldn't exclude it.
`MR. HILL: I would start by saying just to point back to the petition, I
`think that there's additional things that we can point to there that I think
`further explicate this. So, for example, on pages 59 through 60 in the
`structural member limitation we identify both the corners and the edges. So
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`IPR2018-01233 (Patent 9,914,602 B2)
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`I think that, you know, perhaps it was more crisply stated in the reply after
`we fully appreciated the argument that Patent Owner was going to make.
`But I think that we did have that concept in the written word from the initial
`petition and --
`JUDGE WEATHERLY: Well I also note that claim 9, when you're
`analyzing dependent claim 9, at least dependent claim 9 appears to be a
`further limitation on the structural support members that are introduced in
`claim 1. So to the extent that you're identifying structure that meets those
`limitations for claim 9, I suppose it's true that you're also talking about
`something that's within the scope of the structural support members that is
`recited more broadly in claim 1.
`MR. HILL: That is our view, Your Honor.
`JUDGE WEATHERLY: Okay. All right. I'll be interested to get the
`Patent Owner's take on all that.
`MR. HILL: Certainly. Well I will add then, I'm moving now to slide
`33 and here we're just showing some case citations for future reference
`wherein we believe the Patent Owner is contrary to the precedent where
`cases are quite clear that terms, when they're used synonymously or very
`similarly can have the same meaning as we think they do, at least with
`respect to the claim 1 portion given the specific citation that I just gave.
`JUDGE TARTAL: That isn't really your argument though, is it
`counsel? Aren't you just arguing that one class is a more narrow subset of
`another and not that they mean the same thing?
`MR. HILL: Yes. I guess what I should say -- yes. One is a more
`narrow subset of the other but the way they're identified structural uprights
`are always structural members and so with respect to the claim at issue that
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`we're talking about, for that subset they are the same. But yes, we agree
`more broadly.
`JUDGE TARTAL: And they're different elements required in the
`claim?
`MR. HILL: Yes.
`JUDGE TARTAL: The claims in reciting the same thing twice can’t
`mean the same feature.
`MR. HILL: It's clear -- in claim 9 we think it's more clear what
`specific elements, whether it's the edges or the corners are required because
`of additional limitations. In claim 1 we think that either element would
`satisfy under the (indiscernible) standard.
`JUDGE TARTAL: Okay. But the corner post can't be both a
`structural upright under the scaling limitation as well as the structural
`member under the stacking limitation?
`MR. HILL: I guess what I would say, I think the best way to frame
`our argument with respect to slide 31 for example is that both the horizontal
`elements and the vertical elements were identified, each are structural
`members. The corner posts are also structural uprights.
`JUDGE WEATHERLY: You know what? I'm not going to let you
`get away with that because you keep switching between contexts. I mean
`there's context set by the claim. That's the only context I care about. What
`you just said is switching to just the English language as context and this
`sort of notion of abstraction that uprights are a more narrowly understood
`concept within a broader subset of member, so I disagree with what you just
`said and so, you know, you shouldn't
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