Case IPR2020-00007
`Patent 9,849,061
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EIS GMBH,
`Petitioner,
`
`v.
`
`NOVOLUTO GMBH,
`Patent Owner.
`____________
`
`Case IPR2020-00007
`Patent 9,849,061
`
`PATENT OWNER’S SUR-REPLY
`PURSUANT TO 37 C.F.R. § 42.23
`
`
`
`
`
`
`
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`

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`Case IPR2020-00007
`Patent 9,849,061
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`V. 
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`I. 
`NEW REPLY ARGUMENTS ARE PROPERLY IGNORED ....................... 1 
`II. 
`III.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2 
`IV.  CLAIM CONSTRUCTION ............................................................................ 3 
`A. 
`“Reference Pressure” ............................................................................. 3 
`B. 
`“Pressure Field Generating Arrangement” ............................................ 7 
`THE EVIDENCE STILL SHOWS CHALLENGED CLAIMS ARE
`PATENTABLE .............................................................................................. 10 
`A.  None of the Prior Art Contemplates Modulation of Positive and
`Negative Pressures .............................................................................. 10 
`Petitioner’s Speculative Arguments Contradict the Prior Art and The
`Law ...................................................................................................... 12 
`1. 
`Taylor ........................................................................................ 12 
`2. 
`Hovland ..................................................................................... 17 
`VI.  EVIDENCE SHOWS NO MOTIVATION TO COMBINE ......................... 22 
`VII.  SECONDARY CONSIDERATIONS ARE ESTABLISHED ...................... 24 
`A.  Nexus ................................................................................................... 24 
`B. 
`Copying ............................................................................................... 26 
`C. 
`Long-felt Need .................................................................................... 26 
`D. 
`Expert Skepticism................................................................................ 27 
`VIII.  EXPERT TESTIMONY STILL WEIGHS IN FAVOR OF
`PATENTABILITY ........................................................................................ 27 
`IX.  CONCLUSION .............................................................................................. 28 
`
`B. 
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`Case IPR2020-00007
`Patent 9,849,061
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`TABLE OF AUTHORITIES
`
`
`Cases 
`Cipher Pharm. Inc. v. Actavis Labs.s FL, Inc.,
` 99 F.Supp.3d 508 (D.N.J. 2015) ................................................................... 18
`
`In re Kumar,
`418 F.3d 131 (Fed. Cir. 2005) ....................................................................... 11
`
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
` 853 F.3d 1272 (Fed. Cir. 2017) ...................................................................... 1
`
`Other Authorities 
`PTAB Consolidated Trial Practice Guide (November 2019) .................................... 1
`
`
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`ii
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`Case IPR2020-00007
`Patent 9,849,061
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`
`EXHIBIT LIST
`
`Exhibit #
`2001
`
`2002
`
`Description
`Declaration of Morten Olgaard Jensen, Ph.D., DR.MED. in support
`of Patent Owner Preliminary Response, dated January 8, 2020
`Curriculum Vitae of Morten Olgaard Jensen, Ph.D., DR.MED.
`(2019)
`2003 Webster’s Ninth New Collegiate Dictionary Definition: “bellows”
`Merriam-Webster Inc. (1991)
`Declaration of Debra Herbenick, Ph.D., in support
`of Patent Owner Preliminary Response, dated January 8, 2020
`Curriculum Vitae of Debra Herbenick, Ph.D. (2019)
`Robert T. Michael et al., Sex in America: A Definitive Survey,
`Chapter 8, pp. 155- 168 (1994)
`D.S. Solurush et al., The Human Sexuality Education of Physicians
`in North American Medical Schools, International Journal of
`Impotence Research, 15 Supp. 5 S41-S45 (2003)
`Debra Herbenick et al., Prevalence and Characteristics of Vibrator
`Use by Woman in the United States: Results from a Nationally
`Representative Study, The Journal of Sexual Medicine 2009, 6,
`1857-66 (2009)
`2009 Womanizer Webpage: Womanizer - InsideOut, (Jan. 6, 2020, 11:04
`AM), https://www.womanizer.com/us/womanizer-insideout
`Claim Chart for Commercial Embodiments of the ’061 Patent
`Debby Herbenick et al., An event‐level analysis of the sexual
`characteristics and composition among adults ages 18 to 59:
`Results from a national probability sample in the United States, The
`Journal of Sexual Medicine 2010, 7, 346-361 (2010)
`Debby Herbenick et al., Women's Experiences With Genital
`Touching, Sexual pleasure, and Orgasm: Results From a US
`Probability Sample of Women Ages 18 to 94, The Journal of Sex &
`Marital Therapy, 44(2), 201-212 (2017)
`
`
`2004
`
`2005
`2006
`
`2007
`
`2008
`
`2010
`2011
`
`2012
`
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`Case IPR2020-00007
`Patent 9,849,061
`
`
`2014
`
`2015
`
`2016
`
`2017
`2018
`2019
`2020
`2021
`
`Description
`Exhibit #
`2013 Mayte Parada et al., Clitorodynia: A Descriptive Study of Clitoral
`Pain, The Journal of Sexual Medicine, 12(8), 1772-1780 (2015)
`Hans Verstraelen et al., Persistent aching and itching of the clitoris,
`Archives of Gynecology and Obstetrics, 288, 233-234 (2013)
`Debby Herbenick, SL Letter of the Day: By Special Guest Debby
`Herbenick, SAVAGE LOVE, (Jul. 30, 2012, 1:33pm),
`https://www.thestranger.com/slog/archives/2012/07/30/sl-letter-of-
`the-day-by-special-guest-debby-herbenick
`Debby Herbenick, Sex Made Easy: Your Awkward Questions
`Answered – For Better, Smarter, Amazing Sex, Running Press
`(2012)
`Compilation of Womanizer Reviews from Amazon.com
`Compilation of Womanizer Reviews from Websites
`Selected Womanizer Reviews from Websites
`Compilation of Womanizer Awards
`Satisfyer Pro G-Spot Rabbit, (Nov. 14, 2019),
`https://www.satisfyer.com/int/satisfyer/31/satisfyer-pro-g-spot-
`rabbit
`Evidence of Copying
`Examples of Product Descriptions
`EIS, Inc. v. WOW Tech Int’l GmbH, et al., C.A. No. 1:19-cv-01227-
`LPS (D. Delaware), Exhibit 15 to Original Complaint (D.E. 1)
`Erika Lynae, Satisfyer Pro 2 Review, (Aug. 25, 2016),
`https://erikalynae.com/2016/08/25/satisfyer-pro-2-review
`2026 Womanizer v. Satisfyer Comparison Guide, (Nov. 6, 2016),
`http://dangerouslilly.com/2016/11/womanizer-vs-satisfyer-who-
`reigns-supreme
`Greater Than, Less Than, Equal To?: Womanizer vs. Satisfyer
`Secret Pleasures Boutique, (Aug. 30, 2017),
`https://secretpleasuresblog.com/2017/08/30/greater-than-less-than-
`equal-to-womanizer-vs-satisfyer
`
`2022
`2023
`2024
`
`2025
`
`2027
`
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`Case IPR2020-00007
`Patent 9,849,061
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`
`2029
`
`2030
`2031
`
`2032
`
`2034
`
`Description
`Exhibit #
`2028 Womanizer vs. Satisfyer Clash of the Clit Suckers, (July 25, 2017),
`http://marvelous-darling.com/2017/07/womanizer_satisfyer
`U.S. Patent No. 6,464,653 B2 to Hovland et al., issued on October
`15, 2002
`Press Release
`Satisfyer Pro 2 Website, (Nov. 14, 2019),
`https://us.satisfyer.com/us/satisfyer/1/pro-2
`EIS, Inc. v. WOW Tech Int’l GmbH, et al., C.A. No. 1:19-cv-01227-
`LPS (D. Del.), Complaint Excerpts (D.E. 1)
`Declaration of Morten Olgaard Jensen, Ph.D., DR.MED. in support
`of Patent Owner Response, dated December 18, 2020 and
`Curriculum Vitae of Morten Olgaard Jensen, Ph.D., DR.MED.
`(2020)
`Declaration of Debra Herbenick, Ph.D. in support of Patent Owner
`Response, dated November 3, 2020
`Curriculum Vitae of Debra Herbenick, Ph.D. (2020)
`2036
`Claim Chart in support of Patent Owner Response
`2037
`2038 Womanizer® DUO Rabbit Vibrator,
`https://www.womanizer.com/us/womanizer-duo-bordeaux (Sept. 9,
`2020).
`21 C.F.R. § 884.5960 (2019)
`Debbie Josefson, FDA approves device for female sexual
`dysfunction, BMJ: British Medical Journal, 320 (7247), 1427 (2000)
`Jordan E. Rullo, et al., Genital vibration for sexual function and
`enhancement: a review of evidence, Sexual and Relationship
`Therapy, 33(3), 263–274 (2018)
`Emmanuele A. Jannini, et al., Ethical aspects of sexual medicine.
`Internet, vibrators, and other sex aids: toys or therapeutic
`instruments?, The Journal of Sexual Medicine, 9(12), 2994-3001
`(2012)
`
`2039
`2040
`
`2035
`
`2041
`
`2042
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`Case IPR2020-00007
`Patent 9,849,061
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`
`Exhibit #
`2043
`
`2044
`
`Description
`Daniel Ventus, et al., Vibrator-Assisted Start–Stop Exercises
`Improve Premature Ejaculation Symptoms: A Randomized
`Controlled Trial, Archives of Sexual Behavior, 1-15 (2019)
`Debby Herbenick, et al., Vibrators and other sex toys are commonly
`recommended to patients, but does size matter? Dimensions of
`commonly sold products, The Journal of Sexual Medicine, 12(3),
`641-645 (2015)
`Alexander Semaan, et al., Severe vaginal burns in a 5-year-old girl
`due to an alkaline battery in the vagina, Journal of Pediatric and
`Adolescent Gynecology, 28(5), e147-e148 (2015)
`2046 Mollie K. McConnell, When button batteries become breakfast: the
`hidden dangers of button battery ingestion, Journal of Pediatric
`Nursing, 28(6), e42-e49 (2013)
`Russell Griffin, et al., Sexual stimulation device-related injuries.
`Journal of Sex & Marital Therapy, 35(4), 253-261 (2009)
`T.A. Anderson, et al., A study of human papillomavirus on
`vaginally inserted sex toys, before and after cleaning, among
`women who have sex with women and men, Sexually transmitted
`infections, 90(7), 529-531 (2014)
`Zdenek Halata, et al., The neuroanatomical basis for the
`protopathic sensibility of the human glans penis, Brain research,
`371(2), 205-230 (1986)
`David M. Ferguson, et al., Randomized, placebo-controlled, double
`blind, crossover design trial of the efficacy and safety of Zestra for
`Women in women with and without female sexual arousal disorder,
`Journal of sex & marital therapy, 29(sup1), 33-44 (2003)
`J. Patterson, Moisturizers, lubricants, and vulvar hygiene products:
`issues, answers, and clinical implications, Current Sexual Health
`Reports, 8(4), 213-221 (2016)
`2052 Miranda Farage, et al., The vulvar epithelium differs from the skin:
`implications for cutaneous testing to address topical vulvar
`exposures, Contact dermatitis, 51(4), 201-209 (2004)
`
`2045
`
`2047
`
`2048
`
`2049
`
`2050
`
`2051
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`Patent 9,849,061
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`Exhibit #
`2053
`
`2054
`
`2055
`
`2057
`
`Description
`Suzannah Weiss, Fear of the Clit': A Brief History of Medical
`Books Erasing Women's Genitalia, Vice, (May 3, 2017),
`https://www.vice.com/en/article/nejny8/fear-of-the-clit-a-brief-
`history-of-medical-books-erasing-womens-genitalia
`Virginia Braun, et al., Telling it straight? Dictionary definitions of
`women’s genitals, Journal of Sociolinguistics, 5(2), 214-232 (2001)
`Jillian Lloyd, et al., Female genital appearance: ‘normality’unfolds,
`BJOG: An International Journal of Obstetrics & Gynaecology,
`112(5), 643-646 (2005)
`2056 Womanizer® Classic, Premium, Starlet, Liberty, and Pro Sales Data
`with Certified Translation. PROTECTIVE ORDER MATERIAL
`– ATTORNEYS EYES ONLY (filed under seal)
`Debby Herbenick, et al., Women's vibrator use in sexual
`partnerships: Results from a nationally representative survey in the
`United States, Journal of Sex & Marital Therapy, 36(1), 49-65
`(2010)
`2058 Womanizer Study (2013) with Certified Translation
`2059 Womanizer Vibe Review, (Oct. 7, 2015),
`http://arollinthehay.com/2015/10/07/womanizer-vibe-review
`Compilation of Womanizer Awards
`Evidence of Copying by Parties Other Than Petitioner with
`Certified Translation
`Press Release with Certified Translation
`Egan, Mary Ellen, The Love Machine , Forbes, (July 2, 2000),
`https://www.forbes.com/forbes/2000/0703/6601124a.html
`2064 MaryAnn Schroder, et al., Clitoral therapy device for treatment of
`sexual dysfunction in irradiated cervical cancer patients,
`International Journal of Radiation Oncology* Biology* Physics,
`61(4), 1078-1086 (2005)
`2065 Womanizer InsideOut Webpage, (Dec. 17, 2020),
`https://www.womanizer.com/us/insideout
`
`2060
`2061
`
`2062
`2063
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`Description
`Exhibit #
`2066 Womanizer InsideOut Manual,
`https://www.womanizer.com/media/catalog/we-vibe/inside-out.pdf
`2067 Womanizer Duo - Bordeaux Gold Webpage, (December 17, 2020)
`https://www.womanizer.com/us/duo
`2068 Womanizer Duo Manual,
`https://www.womanizer.com/media/catalog/we-
`vibe/12_DUO_WEBmanual-compressed.pdf
`How the Womanizer Works - Pleasure Air Technology Webpage,
`(Dec. 17, 2020), https://www.womanizer.com/us/how-it-works
`Agreed Protective Order
`Agreed Protective order (Redlined)
`Declaration of Jason L. Tucker
`Certificate of Correction (“COC”) for the patent-at-issue, U.S. Pat.
`No. 9,849,061
`Transcript of Cross-Examination of Dr. Michael R. Prisco
`(“Prisco”), held January 6, 2021
`
`2069
`
`2070
`2071
`2072
`2073
`
`2074
`
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`I.
`
`INTRODUCTION
`
`The Board correctly denied institution before. Now the record is complete
`
`and Petitioner-favored-pre-institution presumptions do not apply.
`
`The evidence shows none of the prior art contemplates a sexual stimulation
`
`device that generates a stimulating pressure field with a pattern of negative and
`
`positive pressures modulated with respect to a reference pressure to stimulate an
`
`erogenous zone and that has a vaginal-insertion appendage.
`
`Petitioner has not met its burden. The Board should confirm patentability.
`
`II. NEW REPLY ARGUMENTS ARE PROPERLY IGNORED
`
`“[A] reply … that raises a new issue or belatedly presents evidence may not
`
`be considered.” PTAB Consolidated Trial Practice Guide (November 2019), 74;
`
`see, e.g., Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed.
`
`Cir. 2017) (rejecting reply’s attempt to cure petition’s deficiencies, noting the
`
`“obligation for petitioners to make their case in their petition”).
`
`Petitioner advances new theories in its Reply that could and should have been
`
`in the Petition, but were not. These include:
`
`1.
`
`2.
`
`3.
`
`New “intended use” argument (Reply 2);
`
`New proposed construction of “reference pressure” (Reply 3-5); and,
`
`New interpretations of Taylor (Reply 5-7, 12-14).
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`Petitioner’s new arguments should be disregarded.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`Although the Board preliminarily adopted Petitioner’s POSITA definition, its
`
`final analysis must include a proper standard that includes knowledge and
`
`experience relevant to this patent’s technological art. Ex. 2035, ¶¶ 28-37.
`
`Petitioner’s only reply to Novoluto’s evidence supporting a standard properly
`
`accounting for necessary relevant experience (Exs. 2034, ¶¶ 68-69; 2035, ¶ 28) is a
`
`new and unfounded argument that sexual stimulation is an “intended use,” and that,
`
`therefore, the Board should ignore knowledge of female sexuality when evaluating
`
`the level of skill. This new argument should be disregarded, and, regardless, is
`
`without merit. The relevant experience or education in sexual health or related fields
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`has nothing to do with “intended use.”
`
`The ’061 Patent exclusively deals with sexual stimulation devices and related
`
`methods, in which the device or system generates a stimulating pressure field with a
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`pattern of negative and positive pressures modulated with respect to a reference
`
`pressure and includes a vaginal insertion dildo. Ignoring sexual health and the vulva
`
`would be to ignore the context within which and how the modulated pattern of
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`negative and positive pressures limitation present in all the challenged claims (and
`
`absent from all prior art) was so innovative, nonobvious, and key to this invention.
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`Petitioner’s only hope its arguments can gain any traction is to ignore this necessary
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`context of sexual health, including the field of the invention and the unrebutted
`
`evidence (i.e., the ’061 Patent and asserted references), and to downplay its experts’
`
`lack of significant relevant education and experience. Novoluto urges the Board not
`
`to ignore such important evidence in its final analysis.
`
`IV. CLAIM CONSTRUCTION
`
`“Reference Pressure”
`A.
`All claims require “a pattern of negative and positive pressures, modulated
`
`with respect to a reference pressure” caused by changing the volume of a chamber
`
`or pressure field generating arrangement. Exs. 1001, 16:22-18:51; 2073. Because
`
`this issue is central in this case, a proper understanding and construction of
`
`“reference pressure” is critical.
`
`Petitioner originally expressly disclaimed the need to construe any term other
`
`than “pressure field generating arrangement” (Pet., 17), and Petitioner’s arguments
`
`assumed and expressed a consistent understanding of “reference pressure” as
`
`ambient pressure. Pet. 68-69. The Board correctly noted that despite Petitioner not
`
`expressly calling the term into dispute, both sides consistently argued that “reference
`
`pressure” is the prevailing atmospheric or ambient pressure. Paper 8, 12-14. The
`
`Board therefore correctly concluded “the parties appear to agree that the ‘reference
`
`pressure’ as used in the ’061 patent is the prevailing atmospheric or ambient
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`pressure.” Paper 8, 14. The evidence supporting this construction has not changed.
`
`The Board should adopt the same definition now for the same reasons explained in
`
`Paper 8.
`
`As the ’061 Patent shows, “reference pressure” is the prevailing pressure
`
`acting on the sexual stimulation device prior to placing the device on the area to be
`
`stimulated, i.e., the ambient or atmospheric pressure. Exs. 1001, 3:38–49, 10:61-65,
`
`14:49-15:8; 2034, ¶¶ 39, 77-79.
`
`The specification explains:
`
`The reference pressure is usually the atmospheric pressure acting on the
`stimulation device that prevails when application begins (i.e. prior to
`placing the stimulation device on the area of skin to be stimulated). In
`the preferred application of the stimulation device with air, the
`reference pressure is the currently prevailing air pressure or normal
`pressure.
`Ex. 1001, 3:38–43. The reference pressure is not an absolute value because ambient
`
`pressure changes based on location. Id., 3:26-49.
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`The ’061 Patent also illustrates “reference pressure” in Figs. 14a-c:
`
`
`
`
`
`
`
`The Board correctly understood this concept in Paper 8.
`
`For the first time in its Reply, Petitioner proposes that “reference pressure”
`
`should be construed to mean a “given pressure,” arguing that Novoluto’s
`
`construction improperly limits “reference pressure” to atmospheric pressure. Not
`
`only is this argument nowhere in the Petition, but it also argues against a position
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`Novoluto has never taken, introduces baseless confusion to the meaning of
`
`“reference pressure,” and ignores the patent.
`
`Novoluto has never taken the position that “reference pressure” must be
`
`limited to atmospheric pressure, nor would it, as doing so would ignore the plain
`
`language of the ’061 Patent. The patent explains the device may be used in various
`
`environments, meaning the prevailing pressure acting on the device prior to
`
`operation (the reference pressure) would have a different value depending on the
`
`environment (e.g., in a bathtub versus on a bed). Ex. 1001, 3:26-49. But always,
`
`the reference pressure is that prevailing pressure acting on the device prior to placing
`
`the device on the area of skin to be stimulated. Id. Petitioner’s argument that
`
`Novoluto’s proffered construction would limit the term to a single embodiment
`
`(Reply 3-4) is baseless and misleading.
`
`In this straw-man argument, Petitioner also advances a brand-new theory that
`
`systolic blood pressure somehow transforms the reference pressure to a point above
`
`ambient pressure. Reply 3-4. This argument is nowhere in the Petition or in Dr.
`
`Prisco’s 137-page declaration (Ex. 1002), and completely misses the point. The
`
`reference pressure is the prevailing pressure acting on the device prior to placing the
`
`device on the area to be stimulated—none of Petitioner’s handwaving changes that.
`
`Petitioner’s new and made-up definition for “reference pressure” ignores the
`
`most important and only relevant evidence—the patent. As Dr. Prisco admitted
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`when asked about why he ignored contiguous language in the ’061’s child patent1
`
`that similarly and clearly explains reference pressure, and instead focused on the
`
`next two sentences that discuss the device’s operation out of context, he selectively
`
`looked at “the applicable part [of the patent] to the point that I was making.” Ex.
`
`2074, 111:4-11. According to Dr. Prisco, ignoring contrary surrounding sentences
`
`is appropriate: “[o]ne doesn't need to consider every -- every sentence to make a
`
`point that a different sentence is making.” Id., 111:16-18.
`
`This deceptive selective reliance on out-of-context excerpts not only destroys
`
`Dr. Prisco’s and Petitioner’s credibility, but also contradicts basic patent law.
`
`The Board should construe “reference pressure” as “a prevailing pressure
`
`acting on the device prior to placing the stimulation device on the area of the skin to
`
`be stimulated”—not a random pressure arbitrarily selected at any point during the
`
`device’s operation.
`
`“Pressure Field Generating Arrangement”
`B.
`The Board also correctly determined that construing “pressure field
`
`generating arrangement” was unnecessary pre-institution. Paper 8, 12. The same is
`
`true post-institution. None of Petitioner’s prior art grounds require construction of
`
`the term and the ’061 Patent unambiguously describes the “pressure field generating
`
`
`1 U.S. Patent No. 9,937,097 (subject of IPR2019-01302).
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`arrangement” and its structural features. This case is not about the meaning of
`
`“pressure field generating arrangement.”
`
` Nonetheless, Petitioner seeks a
`
`construction of this term in this proceeding to create a non-infringement position in
`
`other litigation. The Board should resist such manipulation.
`
`Even if the term was relevant here, construction is unnecessary because the
`
`’061 Patent is clear about what a “pressure field generating arrangement” is, i.e., an
`
`arrangement of components that generates a pressure field. The claims
`
`unambiguously describe the pressure field generating arrangement’s specific
`
`structural features and its relationship to other structures. See, e.g., Ex. 1001, Claims
`
`1-21. The term does not describe a function disembodied from structure, as
`
`Petitioner argued, and its structural features are easily understood.
`
`No evidence supports Petitioner’s construction requiring at least two
`
`chambers. Instead, Petitioner relies almost entirely on mischaracterized evidence to
`
`support its position. Reply 25-26. First, Petitioner falsely claims Dr. Jensen “admits
`
`that the ‘pressure field generating arrangement’ is functional and does not refer to
`
`any particular structure or apparatus.” Reply 25. Dr. Jensen makes no such
`
`admission:
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`
`Q. So is the pressure field generating arrangement
`defined by its function, then?
`
`A. The pressure field generating arrangement is
`basically anything made from structural components that
`a POSITA can use to make a pressure field generating
`arrangement. It is not specified and it is up to a POSITA
`how that pressure field generating arrangement should be
`made.
`
`Ex. 1014, 36:3-14. In other words, the term “pressure field generating arrangement”
`
`does not need to be further defined because the claims specify the structural
`
`components of the claimed device and its corresponding pressure field generating
`
`arrangement. For example, Claim 1 requires a “pressure field generating
`
`arrangement with: at least one first chamber; [and] at least one second chamber.” To
`
`define “pressure field generating arrangement” as requiring two chambers would
`
`render claim language redundant and superfluous, which contravenes basic patent
`
`law.
`
`Second, the ’061 Patent specification describes examples of embodiments by
`
`referring to “this embodiment” or a “first embodiment” as having various features
`
`throughout the specification. Ex. 1001, 3:11-61, 8:26-59, 10:49-56, 12:33-47,
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`13:13-27, 15:22-29. Nowhere is the “pressure field generating arrangement” limited
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`to having two chambers in all embodiments. Even if all disclosed embodiments of
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`the invention in the ’061 Patent included a pressure field generating arrangement
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`with two chambers, however, that does not mean all such arrangements have two
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`chambers. No basis in law or fact for that proposition exists in this case.
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`In sum, construction of “pressure field generating arrangement” is
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`unnecessary and its plain and ordinary meaning (an arrangement of components that
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`generates a pressure field) is easily understood from the ’061 Patent.
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`V. THE EVIDENCE STILL SHOWS CHALLENGED CLAIMS ARE
`PATENTABLE
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`As Novoluto has argued in its responses, the prior art fails to disclose, teach,
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`or suggest the ’061 Patent’s claimed structure. Until the ’061 Patent, no one had
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`contemplated the claimed sexual stimulation device that modulates negative and
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`positive pressures relative to a reference pressure.
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`A. None of the Prior Art Contemplates Modulation of Positive and
`Negative Pressures
`None of the prior art discloses, teaches, or suggests modulating between
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`negative and positive pressures with respect to a reference pressure. This is evident
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`to anyone understanding “reference pressure” in the context of the ’061 Patent and
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`reading the prior art references from the perspective of a POSITA, without using the
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`’061 Patent as a roadmap. Ex. 2034, ¶¶ 96-138, 147-148.
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`Taylor and Hovland (Petitioner’s only references for this claim limitation)
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`disclose a vacuum applied, released, and applied again, i.e., repetitive negative
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`pressures. Exs. 1004; 1006; 2034, ¶ 97-138, 147-148. Meanwhile, an alternate
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`embodiment of Hovland at most discloses repetitive positive pressures by
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`mentioning the possibility for an alternative superatmospheric pressure application
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`for urinary incontinence, with no enabling details as to its design and operation. Exs.
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`1006-1007; 2034, ¶¶ 96-101.
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`None of these contemplates the ’061 Patent’s claimed modulating negative
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`and positive pressures with respect to a reference pressure, let alone the entire
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`claimed invention. In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (“to render
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`an invention [obvious], the prior art must enable a [POSITA] to make and use the
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`[claimed] invention”). Neither Taylor nor Hovland even hints at the idea of a sexual
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`stimulation device that applies a negative pressure, surpasses the prevailing pressure
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`that was acting on the device prior to its placement on the body (i.e., the reference
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`pressure), then applies a positive pressure relative to the reference pressure, and
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`modulates back and forth between positive and negative pressures over and under
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`that reference pressure.
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`The evidence speaks for itself as much now as when the Board correctly
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`denied institution. The challenged claims are not unpatentable.
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`B.
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`Petitioner’s Speculative Arguments Contradict the Prior Art and
`The Law
`Novoluto urges the Board to stick to the evidence, not Petitioner’s theories,
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`attorney argument, and untrue and unfounded “expert” interpretations.
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`1.
`Taylor
`Taylor is a suction-only system. Petitioner initially took the nearly
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`incomprehensible position in its Petition that Taylor possibly could be interpreted to
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`inherently disclose the modulation of positive and negative pressures relative to a
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`reference pressure if one were to imagine components Taylor does not actually
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`disclose. Now, Petitioner raises the new argument in its Reply that if the Board only
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`changes its understanding of “reference pressure” to mean a “given pressure,” then
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`Taylor discloses this claim limitation. Reply 3-4, 7-8. This new argument should
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`be ignored entirely and is without merit.
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`The whole point of calling the surrounding pressure acting on a device prior
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`to operation the “reference pressure” is to have an understandable, consistent, and
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`reliable baseline from which to demonstrate the patented feature of applying positive
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`and negative pressures to a body part. Petitioner’s newly-proffered construction
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`creates a confusing moving target that changes depending on what made-for-
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`litigation argument is convenient to Petitioner in this and other proceedings. As
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`discussed above and in Novoluto’s responses, the meaning of reference pressure is
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`clearly explained in the ’061 Patent, and Taylor does not disclose modulation of
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`positive and negative pressures with respect to it. Paper 6 (POPR) 53-62, Paper 24
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`(POR) 31-49.
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`Petitioner also argues a new theory that Taylor’s suction cup somehow
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`operates to create positive pressure (despite Taylor’s only stated objective of
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`applying only vacuum), based on made-up drawings presented for the first time in
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`the Reply. Reply 8-14. These expert-imagined drawings (Reply 12-13) are not
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`evidence and their concepts are nowhere in Taylor. They are based on a new-after-
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`the-fact-made-up theory about Taylor that now Dr. Prisco insists is critical (Ex.
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`1018, ¶¶ 51-52), but that he neither mentioned anywhere in the 137 pages of his
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`original Petition declaration, nor was able to defend during deposition in IPR2019-
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`01302. Ex. 2074, 36:9-54:14; 124:25-126:4. To give Petitioner’s new argument an
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`impression of legitimacy, Dr. Prisco quotes two sentences in the ’061 Patent, while
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`cropping out and ignoring the previous sentence, which provides full context and
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`shows Petitioner’s argument contradicts the direct evidence. Ex. 1018, ¶ 15. In his
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`words, Dr. Prisco only “looked at … the applicable part to the point that I was
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`making,” when evaluating identical language in the ’061 child patent. Ex. 2074,
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`111:4-11. This is just one example of Petitioner and its expert pointing to out-of-
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`context excerpts to support Petitioner’s position, while willfully ignoring direct
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`evidence that destroys Petitioner’s position and supports the Board’s initial correct
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`decision. Dr. Prisco’s testimony should be given very little weight, if any.
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`Petitioner’s new arguments also contradict Taylor’s explicit disclosures and
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`logic. Taylor discloses a suction-only system that, in one embodiment (the only
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`embodiment Petitioner relies on in the Petition), uses a bellows to apply “cyclical
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`vacuum phenomenon” to suction cups to stimulate the upper vulva and nipples. Ex.
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`1004, 5:29-49; Ex. 2034, ¶¶ 104-112. Regardless of what position the bellows
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`begins operation, cyclical vacuum is repetitive negative pressure, not modulation of
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`positive and negative pressures. Ex. 2034, ¶¶ 109-112, 116, 118. Petitioner’s
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`belated identification of components in and around Taylor’s bellows that may or
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`may not actually exist or be disclosed (Reply 8-14) does not change this fact.
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`Introducing positive pressures relative to the reference pressure, which, again is the
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`prevailing ambient pressure acting on the device prior to operation, would, by
`
`definition, cause Taylor’s system to stop introducing a cyclical vacuum and would
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`cause the suction cups to disengage or fall off, rendering the system inoperable. Ex.
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`2034, ¶¶ 111, 122. Petitioner points to nothing in Taylor that rebuts this simple truth.
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`Indeed, the stark absence of evidence in Taylor is glaring in Petitioner’s first
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`(and presumably its best) argument that Taylor discloses the modulated-pressures
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`limitation of the ’061 Patent—that “Taylor does not disclose or suggest a valve in
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`bellows 160.” Reply 5-6. This argument, another red herring, is also based on
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`mischaracterized testimony and irrelevant comparisons. There is no meaningful
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`dispute that in the Petitioner-relied-on-embodiment of Taylor, a bellows carries out
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`Taylor’s explicitly-stated objective of creating “cyclical vacuum” through a suction
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`cup. Whether or not Taylor’s bellows has a valv