Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper # 78
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA, LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`____________
`
`Record of Oral Hearing
`Held Virtually: Tuesday, October 12, 2021
`____________
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper # 78
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA, LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`____________
`
`Record of Oral Hearing
`Held Virtually: Tuesday, October 12, 2021
`____________
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. WORTH,
`MICHAEL L. WOODS, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MARK WALTERS, ESQUIRE
`LOWE GRAHAM JONES, PLLC
`701 5th Ave Suite 3420
`Seattle, Washington 98104
`
`AND
`
`JASON A. FITZSIMMONS, ESQUIRE
`STEPHEN A. MERRILL, ESQUIRE
`R. WILSON POWERS, III, PhD., ESQUIRE
`STERNE KESSLER GOLDSTEIN & FOX PLLC
`1100 New York Ave NW, Suite 600
`Washington, D.C. 20005
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`DAVID G. WILLE, ESQUIRE
`CLARKE STAVINOHA, ESQUIRE
`CHAD C. WALTERS, ESQUIRE
`BAKER BOTTS LLP
`2001 Ross Avenue, Suite 900
`Dallas, Texas 75201-2980
`
`
`
`The above-entitled matter came on for hearing on Tuesday, October 12,
`2021, commencing at 1:01 p.m. EST, by video/by telephone.
`
`
`
`
`
`
`
`2
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`
`
`PROCEEDINGS
` (Proceedings begin at 1:01 p.m.)
` JUDGE WOODS: Good afternoon, and welcome to the
`Patent Trial & Appeal Board.
` Today's hearing is for inter partes review Nos.
`IPR2020-01139 and IPR2020-01142 between petitioner, Yita LLC,
`and patent owner, MacNeil IP LLC.
` The challenged patents are U.S. Patent
` Nos. 8,832,186 and 8,833,834.
` I am APJ Michael Woods, and with me today are APJs
` Arthur Peslak, James Worth, and Mitch Weatherly.
` Moving on to counsel appearances.
` Will petitioner's counsel please state your
` appearance, and please spell the names for our court
` reporter.
` MR. WALTERS: Good afternoon, Your Honor.
` Mark Walters, lead counsel for the petitioner, Yita
`LLC.
` With me is Jason Fitzsimmons, of Sterne Kessler, and
`Steve Merrill, of Sterne Kessler.
` My last name is spelled W-a-l-t-e-r-s, and
`Mr. Fitzsimmons is F-i-t-z-s-i-m-m-o-n-s. Mr. Merrill's last
`name is M-e-r-r-i-l-l.
` And Mr. Fitzsimmons and Mr. Merrill will handle the
`argument today for the petitioner.
`
`3
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` JUDGE WOODS: All right. Thank you, Mr. Walters.
` And for patent owner, will patent owner's counsel
`please state your appearance and also provide spelling for
`our court reporter.
` MR. WILLE: Thank you, Your Honor.
` This is David Wille with Baker Botts for the patent
`owner.
` With me in the room are Chad Walters and Clark
`Stavinoha.
` My last name is spelled W-i-l-l-e. Mr. Stavinoha's
`last name is spelled S-t-a-v-i-n-o-h-a.
` And also, with us on the phone should be Mr. Jeff
` Perkins and Mr. Tim Schaum, S-c-h-a-u-m.
` I will be arguing the petitions for the patent
` owner. Mr. Stavinoha will be arguing the motion to strike.
` When we transition between us, basically, I'm going to get
` up and he's going to come and sit where I am, so --
` JUDGE WOODS: All right. Thank you, Mr. Wille.
` So as set forth in our hearing order, each party has
`a total of 60 minutes to present their arguments.
` As you know, petitioner bears the burden of
`persuasion with respect to the petition and will proceed
`first. Petitioner may also reserve some of its time for
`rebuttal if they would like. Patent owner may also reserve
`time for surrebuttal if it would like.
` I'll set my watch to indicate when the requested
`
`4
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` time has expired. I ask that each party also keep track of
` time so that we can stay on the schedule.
` Also, I understand that patent owner filed an
` opposed motion to strike and the parties have filed
` unopposed motions to seal. The parties may also use their
` time to address these motions if they would like.
` As for ground rules and clarity of record, and for
` the benefit of everyone, please identify your name prior to
` speaking, and identify early and often the current slide
` number for demonstrative exhibits. This helps our court
` reporter as well as those listening.
` Also, as I also believe the parties understand, the
` hearing is open to the public and we may have members of the
` public listening in today, so please do not discuss any
` confidential information, including information filed under
` seal.
` Counsel may object if he believes that opposing
` counsel is about to discuss confidential information.
` Otherwise, counsel is directed not to interrupt the other
` side to make objections.
` Mr. Walters, do you wish to reserve any of your --
` any portion of your 60 minutes for rebuttal?
` MR. FITZSIMMONS: Your Honor, this is Jason
`Fitzsimmons on behalf of the petitioner.
` We'd like to reserve 20 minutes for rebuttal,
`please.
`
`5
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` JUDGE WOODS: 20. Okay. Thank you,
`Mr. Fitzsimmons.
` Okay. I'll set your time for your opening
`presentation at 40 minutes, and I'll start the clock when you
`begin to speak.
` MR. FITZSIMMONS: Thank you, and good afternoon,
`Your Honors. And may it please the Board.
` My name is Jason Fitzsimmons from Sterne Kessler
`Goldstein & Fox on behalf of petitioner, Yita LLC.
` And as you previously heard, joining me today are
`Mark Walters from Lowe Graham Jones, and then also with me is
`Ralph Powers, III and Stephen Merrill from Sterne Kessler.
` And Mr. Merrill will be joining me in the argument
`today and addressing any issues of secondary considerations
`and the motion to strike.
` Your Honors, as we start on Slide 2 of petitioner's
`demonstratives, the petitions here clearly showed that the
`claims of '186 and the '834 patents are unpatentable, and
`this is a straightforward case of obviousness for the
`petitions explained how the prior art discloses each claim
`element and why a skilled artisan would have combined the
`applied references with a reasonable expectation of success.
` And so today I'll first explain the petitioner's
`affirmative theory of the case, and then I'll address the
`patent owner's primary counterarguments.
` And so with respect to the petitioner's case, as a
`
`6
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`summary, the grounds apply the Rabbe reference, whose floor
`tray discloses most of the claim elements, including the
`disputed close conformance limitations, as we'll discuss
`today.
` This is in combination with the Yung reference,
`which discloses a floor tray made of thermoplastic
`materials, and discloses other known floor tray features,
`like the reservoir with baffles.
` And because Rabbe doesn't expressly disclose a
`method of manufacturing, Rabbe and Yung are tried together
`with the Gruenwald thermoforming treatise.
` And now all of this, Your Honors, is with the
`backdrop that vehicle floor trays were already known to be
`thermoformed from thermoplastic materials, and the
`thermoforming technique would have been at the very
`forefront of the skilled artisan's mind.
` Regarding the patent owner's primary arguments, they
`relate to the close conformance limitations and the
`suitability of thermoforming in the applied combination.
` And as a general theme of patent owner's arguments,
`they take a myopic view of the prior art and the
`petitioner's rationales, they ignore the lens through which
`the skilled artisan would view the Rabbe, Yung, and
`Gruenwald combination, and they disregard the Supreme
`Court's expansive and flexible approach to obviousness,
`instead taking a far too narrow and improper bodily
`
`7
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`incorporation approach to obviousness.
` And even still, Your Honors, the petitioner replies
`and their supporting expert testimony prove each of patent
`owner's arguments wrong with concrete evidentiary support,
` in contrast to the patent owner's declarants who provided
` unsupported and conclusory testimony.
` So to orient Your Honors, on Slide 2 here of
` petitioner's demonstratives, we have an overview of the
` grounds.
` The '186 patent has one independent claim, Claim 1.
` The '834 patent claim has Independent Claims 1, 5, 9, and
` 13. And all of the independent claims would have been
` obvious over the Rabbe, Yung, and Gruenwald combination, and
` the patent owner has not separately argued for the
` patentability of any dependent claims in either proceeding.
` Turning to Slide 3 of petitioner's demonstratives
` now, your Honors.
` The highlighted elements here are the elements of
` the claim that the patent owner disputes, those being that
` the tray is thermoformed, and tie with that that the panels
` are integrally formed.
` Also --
` JUDGEPESLAK: Mr. Fitzsimmons?
` MR. FITZSIMMONS: Yes, Your Honor.
` JUDGE PESLAK: Patent owner takes the position that
`the preamble in this claim is limiting, basically because it
`
`8
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`provides antecedent basis for the rest of the limitations,
`and petitioner didn't dispute that, but patent owner doesn't
`provide any context for what thermoformed means in this
`claim. One could look at this as now a product by process
`claim.
` Is there any dispute that thermoformed is a
`limitation here? And if so, what does it mean in the context
`of this claim?
` MR. FITZSIMMONS: So in the context of this claim,
`Your Honor, the petitioner didn't take a position as to
`whether the preamble was limiting, and that's because the
`prior art combination clearly discloses a vehicle floor tray
`being thermoformed. And so whether or not the preamble is
`limiting here, Your Honor, the prior art combination
`discloses this limitation.
` So the other limitations that the patent owner
` disputes are these closely conforming limitations of the
` claims, Your Honor.
` And if we turn --
` I'm sorry. Before we turn to the next slide, Your
` Honors, the petitioner here should prevail in these
` proceedings for two primary reasons; one being that under
`either party's translation, the Rabbe reference discloses
`the so-called close conformance limitations between the
`floor tray walls and the footwell walls, and two, the person
`of ordinary skill in the art would have been motivated to
`
`9
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`thermoform Rabbe's floor trays in view of Yung and
`Gruenwald.
` So now turning to Slide 4, Your Honors.
` The '834 patent claims are very similar to Claim 1
`of the '186 patent that was just shown, and most of the
`elements are not disputed.
` Instead of closely conforming, the '834 patent
`claims here, they recite a one-eighth inch tolerance between
`a portion of the tray walls and the respective footwell
`walls.
` But the '834 patent claims, they don't recite, and
`so in some sense are broader, in that the tray is not
`required to be thermoformed, the walls are not required to
`be integrally formed, and it doesn't recite thermoplastic
`materials.
` And I'll also note that Claim 13 of the '834 patent
`doesn't actually recite any level of conformance, either
`closely conforming or one-eighth of an inch or otherwise.
` Moving to Slide 7 now of the petitioner's
`demonstratives.
` Custom thermoformed floor trays were known in the
`prior art, and Slide 7 here shows examples from the petition
`of actual thermoformed prior art products.
` Now, this is the lens, Your Honors, through which
`the skilled artisan would have been looking through as they
`looked at the references applied in the petitions, and this
`
`10
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`is especially, as we'll discuss, in view of the patent
`owner's definition of the person skilled in the art which
`specifically requires thermoforming experience.
` Now, thermoforming plastic parts, it was old -- it's
`an old and very well-known art, and there's no dispute that
`thermoformed floor trays custom fit for specific vehicles
`were already known in the prior art.
` The patent owner's declarant, Mr. Sherman,
`acknowledged this, and the record is filled with prior art
`thermoformed floor trays.
` An example here on Slide 7, Your Honors, being the
`Black Armor product, it's Exhibit 1017 in this proceeding,
`which is described as being precision crafted to the exact
`fit and shape of the vehicle. It's made from a polymer
`material that's heated and then vacuum formed over a
`vehicle-specific mold.
` The petition background section, Your Honors, for
`example in the 1139 petition, pages 6 through 8, discuss a
`number of other references, like the Buss patent,
`Exhibit 1012, which said that thermoforming floor trays was
`common by as early as 2000. And we're looking here at the
`2014 timeframe.
` The McIntosh patent, Exhibit 1013, which was a
`thermoformed floor tray, and it also described conforming to
`the contours of the interior of the vehicle.
` And so this is the context that we're looking at
`
`11
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`this combination of prior art from, Your Honors, and how the
`person skilled in the art would look at it.
` So as a brief overview of the combination here, I
`direct Your Honors now to Slide 9 of the petitioner's
`demonstratives.
` So Slides 9 and 10 show excerpts and annotated
`versions from the Rabbe patent. And Rabbe discloses nearly
`all of the elements related to the various panels recited in
`the claims.
` On Slide 11, we see Yung, and Yung discloses curved
`transitions, a reservoir, and the baffle features recited in
`the claims.
` And on Slides 12 and 13, we have excerpts from the
`Gruenwald thermoforming treatise which discloses and
`discusses thermoforming techniques and benefits of
`thermoforming, such as the low-cost molds, the short tooling
`time to make them, and the ability to control the wall
`thickness.
` Now, the patent owner here tries to downplay the
`Gruenwald reference, and they practically ignore it by
`arguing that the thermoformed trays with integral panels
`aren't disclosed by the combination.
` But not only were thermoformed trays well known in
`the prior art, as I just discussed, but the Gruenwald
`thermoforming treatise is part of this applied combination
`and it discloses any of the thermoforming techniques that
`
`12
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`the skilled artisan would have used to thermoform the tray
`in combination with Rabbe and Yung.
` Turning next to Slide 14 of petitioner's
`demonstratives, Your Honors.
` The patent owner, MacNeil here, their definition of
`the person of ordinary skill in the art specifically
`requires thermoforming experience, and so thermoforming
`would have been at the very forefront of the skilled
`artisan's mind when considering how to manufacture the floor
`trays in Rabbe and Yung.
` Now looking at Slide 15, Your Honors, I'd like to
`discuss briefly the rationales provided in the petition.
` Now, the petition provided many reasons that the
`skilled artisan would have been motivated to combine Rabbe,
`Yung, and Gruenwald, and had a reasonable expectation of
`success in doing so.
` Now, because Rabbe is silent on the exact materials
`and process for making its floor tray, what the petition's
`explained was that the person skilled in the art would have
`looked to common materials and cost-effective processes
`known in the art.
` They also would have -- in view of Rabbe's
`disclosure of semirigid rubber or other materials having the
`same properties, that would have suggested to the skilled
`artisan to consider thermoplastics, which were well-known
`materials in this art.
`
`13
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` And so just considering what types of materials and
`processes to use would have led the skilled artisan, who the
` patent owner proposes has specific thermoforming experience,
` it would have led them directly to thermoplastic materials
` and thermoforming processes.
` This is, again, in the view of the backdrop that
` that skilled artisan would have known of prior art floor
` trays made of thermoplastic, and they would have known of
` the advantages of thermoforming, like its low cost and
` versatility.
` JUDGE PESLAK: Mr. Fitzsimmons, in the 1139 case, is
`it your position that Yung's mat is thermoformed, and does it
`matter to your case if Yung is compression molded?
` MR. FITZSIMMONS: So it is our position, Your Honor,
`that Yung is thermoformed, and there's a number of reasons
`for that, and I'll be happy to discuss those now, or I'll get
`to them later.
` But there's indicia in there that Yung's mat is
`thermoformed. Not only is it made of thermoformed materials,
`but the step-wise function of its baffles suggests
`thermoforming.
` But even if Yung isn't thermoformed, Your Honor,
`it's our position that the combination here of Rabbe, Yung,
`and Gruenwald discloses and suggests that persons skilled in
`the art thermoforming techniques. Again, the patent owner
`proposes that the skilled artisan would have had
`
`14
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`thermoforming experience. It's a natural technique for them
`to consider when applying and making this combination.
` So now I direct Your Honors to Slide 17 and the
` reasonable expectation of success here.
` Now, before 2004, thermoforming technology was an
` old, well-known, and predictable art, and the technology for
` 3D data modeling of a vehicle footwell was already
` commercially available before the '186 and '834 patents.
` Now, as the petition explained, there were many
` prior art coordinate measuring machines that were suitable
` for collecting this data from a vehicle footwell and for
` creating a 3D computer model of that, and from that, the
` skilled artisan would make the thermoforming mold.
` So what they're doing is they're taking measurements
` with commercially available tools, they're creating a 3D
` computer model with commercially available tools and
` software and using that to create the thermoforming mold.
` These were all known techniques, known tools that the
` skilled artisan would have known and understood.
` Now, if we look at Slide 18, and then also 19, of
`petitioner's demonstratives.
` Now, the patent owner alleges there was no way to
`obtain an accurate scan of the footwell or to use that scan
`data to create a mold, and that's simply untrue.
` Not only were the tools used by the '186 and '834
`patents commercially available to anyone, but there's
`
`15
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`specific examples in the record here of tools that they
`would have used.
` And so in rebutting the patent owner's position,
`Mr. Perreault, petitioner's expert, he discussed the FaroArm, which is
`specifically mentioned in the '186 and '834
`patents, as a possible tool to use. And he described his
`experience with that and how it was already extensively used
`in the auto industry in that the person skilled in the art
`would take data from -- scan data from a tool, such as the
`FaroArm or another coordinate measuring machine, and use
`that in a CAD software program in order to create this mold.
`These were all routine techniques known to the person
`skilled in the art.
` So shifting gears now, Your Honors, I'd like to
`address some of the patent owner's arguments here, and I'll
`direct you to -- starting on Slide 20.
` Now, the patent owner's primary argument against
` Rabbe disclosing a close conformance claim element is that
` the patent owner disputes that the translation of a word in
` Rabbe, which discloses that the sides perfectly conform to
` the contour of the vehicle interior, the patent owner takes
` the position that this should say either the rims or flanges
` perfectly conform.
` And now the patent owner tries to --
` JUDGE PESLAK: Mr. Fitzsimmons, what does closely
`conforming mean in Claim 1 of the '186 patent?
`
`16
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` I mean, your prior -- you're relying on this
`statement and your translation that it perfectly conforms.
`So if we don't have that, we need some guidance from the
`parties as to what closely conform means.
` MR. FITZSIMMONS: So, Your Honors, we didn't
`specifically construe the term closely conformed, we give it
`its plain and ordinary meaning.
` The patent owner, in its patent owner's response,
` they construed that term to mean that the outer surface of
` the first panel closely conforms to the surface of the first
` vehicle footwell, and so that's essentially a plain and
` ordinary meaning.
` In their surreply, the patent owner made a new
`argument trying to import the one-eighth inch tolerance.
`That is not only a new argument, it's wrong, and clear from
`the '834 patent that they knew how to claim that one-eighth
`inch tolerance if they wanted to.
` But, in any event, Your Honors, the closely conform
`limitation is disclosed by Rabbe for a number of reasons,
`and these are shown here on Slide 20. It's not just this
`one sentence that the patent owner tries to focus the
`Board's attention on. Right?
` As shown here on Slide 20, it's clearly not the case
`that the petition only relied on this sentence, there are
`many portions in Rabbe that disclose close conformance.
` This includes that the raised edges -- these are the
`
`17
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`sidewalls -- the raised edges 2 and 3, they conform to the
`topography of the interior, and that's so as not to change
`the esthetic that's desired by the manufacturer.
` The raised edges 2, they are also conforming to the
`interior part of the vehicle.
` And also, notably, the rigidity of the material in
`Rabbe, it presses the unit against the sidewalls of the
`vehicle.
` And so the side panels here in Rabbe are described
` as being pressed against the sidewalls of the footwell, and
` so that means that they're touching those sidewalls, and so
` this is even less than one-eighth of an inch. So under any
` reading of closely conformed, the Rabbe reference discloses
` this limitation.
` An additional --
` JUDGE WORTH: Sorry.
` MR. FITZSIMMONS: -- disclosure in Rabbe --
` JUDGE WORTH: Can you say that again? What is
`touching the sidewall?
` MR. FITZSIMMONS: So, in here, Rabbe describes that
`the rigidity of the material used presses the unit against
`the sidewalls. So it presses the unit, the floor tray,
`against the sidewalls of the vehicle interior.
` JUDGE WOODS: Do we know what part of the unit is
`pressing against the sidewall -- pressing against the car?
` MR. FITZSIMMONS: Yes, Your Honor. So I'll direct
`
`18
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`you now to Slide 23 of the petitioner's demonstrative.
` And so, to this point, Rabbe discloses also close
` conformance under either translation.
` Mr. Dawson is the petitioner's translator, and
` Dr. Popp is the patent owner's translator.
` Now, both of them interpret Rabbe as -- you'll see
` in the very first box here, Rabbe, under Mr. Dawson's
` translation, it presses the raised edges, those are two,
` against the walls of the vehicle.
` And Mr. -- under Dr. Popp's translation from the
` patent owner, the stiffness of the material it's referring
` to, so the stiffness flattens the raised edges against the
` walls, and so it's these raised edges 2 shown in Rabbe that
` are disclosed as being flattened against or pressed against
` the sidewalls of the vehicle interior, Your Honor, and so
` that's what's contacting the sidewalls.
` Now, if we turn to Slide --
` JUDGE WOODS: I'm sorry to interrupt,
`Mr. Fitzsimmons, but if I could interrupt to focus on this
`before we move on to the next issue.
` So, you know, we also have to be careful because we
` have two patents with different claims, and they require
` different things.
` And so if we could turn to the '834 patent,
` Independent Claims 1, 5, and 9 specifically recite that, for
` example, Claim 1 requires at least 90 percent of one-third
`
`19
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` of the outer surfaces of the first, second, and third tray
` walls are closest to the respective top margins of the
` first, second, or third tray walls being within one-eighth
` of an inch of the respective footwell walls.
` So I understand that as requiring the top third of
` those three walls as being within one-eighth of an inch, and
` so even if, for example, Rabbe discloses that you've got the
` top edge lip or flange that's in contact, I'm not sure it
` satisfies the limitations of those claims.
` Could you respond to that, please?
` MR. FITZSIMMONS: Yes, Your Honor.
` And so it's not just the top edge or rim that's
`contacting that, Your Honor, it's the raised edges which are
`two, it's the sidewalls of the panel, and that's what Rabbe
`describes as being pressed against the walls or being
`flattened against the walls.
` And so it's those side panels, Your Honor -- I
` direct you to Slide 25 which shows the images from the
` figures from Rabbe, and that's what's being pressed against
` the walls. So that panel is being pressed against the
` interior of the walls.
` So under closely conforming in the '186 patent, or
` these one-eighth of an inch tolerance limitations in the
` '834 patent, it's still disclosed by Rabbe. All of those
` limitations are still disclosed by Rabbe, Your Honor.
` JUDGE WOODS: And if I could follow up.
`
`20
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` So I understand that in the petition, the petitioner
`relied on Figures 3 and 4, and so what these figures also
`show is a flange or possibly a raised edge or a lip on those
`sidewalls, and so it seems to me that that would prevent that
`top portion of those sidewalls from actually contacting the
`footwell wall within the vehicle.
` Could you respond to that?
` MR. FITZSIMMONS: Well, and so that's -- so what
`Rabbe's describing, though, Your Honor, is the contact
`between these panels and that wall.
` And so Rabbe actually doesn't require that every
`panel has flanges. It describes that some rims will have a
`retentive shape 4, and in Rabbe's claims, the rims -- it
`calls them rims may be retaining 4 -- that's in a dependent
`claim. So Rabbe's not even saying that these rims are
`required. Yes, they're illustrated in these figures, but if
`you look at, say, Figure 2, there are no flanges or rims,
`say, on panel 2, and so those aren't a required element here
`in Rabbe, either, and so we need to go and look at Rabbe's
`express disclosure of flattening or pressing the raised
`edges 2 against the interior of the vehicle, Your Honor.
` JUDGE PESLAK: What's illustrated in Rabbe,
`Figure 2? Is that a floor tray, or what is that?
` MR. FITZSIMMONS: That is a floor tray, Your Honor,
`that would be, for example, in the rear passenger's seats.
` JUDGE PESLAK: Okay.
`
`21
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` MR. FITZSIMMONS: So on this point of the raised
`edges and the top perimeter, Your Honor.
` So if you're still on Slide 25 here. Right?
` So the patent owner argues that the raised edges 2
`only correspond to the very top edge of Rabbe's side panels.
` Now, this is just an implausible argument. Both
` translations refer to the raised edges 2, and if we look
` here at Slide 25 of petitioner's demonstratives, all of
` Rabbe's figures show number 2 pointing to the middle of that
` side panel in every figure and not an upper perimeter.
` And so in order to buy the patent owner's argument,
` every single one of Rabbe's figures would need to
` misidentify the raised edges 2, and that's just not
` reasonable, Your Honors.
` I'd like to turn now to Slide 27 and address another
` argument that the patent owner makes with respect to Rabbe.
` JUDGE WOODS: I'd sorry. If I can interrupt to ask.
`This is an important point to me so I'd like to ask another
`question.
` So the Rabbe patent describes raised edges 2. And I
` understand your argument that the lead line shows -- it's
` pointed to the middle of the wall, but it's also called a
` raised edge, and I understand it's not called a raised wall.
` And so, to me, the edge would be the part that
` terminates at the top, that would be the edge, and that
` would be consistent and support patent owner's argument
`
`22
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
` otherwise.
` Could you respond to that?
` MR. FITZSIMMONS: Yes, Your Honor.
` So I think, if we're looking at Rabbe at a whole
` here, if we're seeing how Rabbe is discussing the raised
` edges and how they're pressed against the sidewalls of the
` vehicle, it's not just that top part, it's the entire
` sidewall there in Rabbe.
` It also talks about -- Rabbe talks about how it
` particularly closely conforms at the portion of the wheel
` well and identifies that as being area 3, and so it's not
` just -- if you look at, say, Figures 1, and then Figure 3,
` for example -- so it's not just the top part that's
` conforming, it wants to conform also to that wheel well
` area, so it has to be that entire side panel, Your Honor.
` And that's what the person of ordinary skill in the
` art would take from Rabbe, viewing the figures here, but
` more importantly, in Rabbe's express disclosure of what is
` conforming.
` JUDGE WOODS: All right. Thank you.
` JUDGE WORTH: Counselor, you mentioned that
`dependent claim versus the independent claim of Rabbe.
` Where is that in your briefing?
` MR. FITZSIMMONS: That point, Your Honor -- I would
`need to look specifically for that. But if you look at the
`Rabbe reference, it's specifically -- the claims are at the
`
`23
`
`
`
`
`IPR2020-01139 (Patent 8,382,186 B2)
`IPR2020-01142 (Patent 8,833,834 B2)
`
`end there, and we would direct Your Honors to that.
` So the next point, Your Honors, I'd like to make is
` to address the comparison that the patent owner makes
` between Rabbe's drawings and the scan that it took of the
` Lada Niva footwell.
` Now, this is the patent owner's other
`non-conformance argument, and it's really based on an
`irrelevant comparison between Rabbe's patent line drawings
`and these 3D scans of the Lada Niva footwell.
` Now, nor does Rabbe say that its drawings are
`production-level scam action, there's no evidence that
`Rabbe's figures are anything other than simple line
`drawings.
` And the patent owner's declarant, Mr. Granger,
`admits that. He says there's no dimensions on the drawings,
`that they're not to scale, and that he can't -- he doesn't
`know how to compare the drawing to a scan.
` And the person skilled in the art would have known
`that no objective comparison can be made between Rabbe's
`patent line drawings and a three-dimensional s
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
