trials@uspto.gov
`571-272-7822
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`PGR2015-00019, Paper No. 53
`November 15, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`U.S. ENDODONTICS, LLC,
`Petitioner,
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`v.
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`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`____________
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`Case PGR2015-00019
`Patent 8,876,991 B2
`____________
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`Held: October 19, 2016
`____________
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`
`
`
`
`BEFORE: JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`October 19, 2016, commencing at 1:30 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`PGR2015-00019, Paper No. 53
`November 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`U.S. ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner.
`____________
`
`Case PGR2015-00019
`Patent 8,876,991 B2
`____________
`
`Held: October 19, 2016
`____________
`
`
`
`
`
`BEFORE: JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`October 19, 2016, commencing at 1:30 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`JEFFREY S. GINSBERG, ESQ.
`ABHISHEK BAPNA, ESQ.
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, New York 10036
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`DEREK F. DAHLGREN, ESQ.
`JASON M. NOLAN, ESQ.
`STEVEN LIEBERMAN, ESQ.
`Rothwell Figg Ernst & Manbeck
`607 Fourteenth Street, N.W., Suite 800
`Washington, DC 20005
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`P R O C E E D I N G S
`- - - - -
`JUDGE COCKS: We are here for oral argument in
`PGR2015-00019, involving Patent 8,876,991. At the outset, I
`would like to inform the parties, we do not have a court reporter
`available for today's hearing, but we are recording the hearing and
`the recording will be sent to a transcription service and we will
`produce a transcript.
`All right, let's begin with introductions of counsel. Will
`counsel for Petitioner please state their appearance today.
`MR. GINSBERG: Thank you, Your Honor, and good
`afternoon. My name is Jeff Ginsberg, I'm with the law firm of
`Patterson, Belknap, Webb & Tyler for Petitioner U.S.
`Endodontics, and with me is my colleague, Abhishek Bapna.
`JUDGE COCKS: Thank you, Mr. Ginsberg.
`And can counsel for Patent Owner please state their
`
`names.
`
`MR. DAHLGREN: Good afternoon, Your Honor. My
`name is Derek Dahlgren with Rothwell, Figg, Ernst & Manbeck,
`representing Patent Owner, Gold Standard Instruments, LLC.
`With me is lead counsel, Jason Nolan, back-up Steven
`Lieberman, also with Rothwell Figg.
`JUDGE COCKS: Thank you, Mr. Dahlgren.
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`Patent 8,876,991 B2
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`Now, as we set forth in the trial hearing order, each side
`has 45 minutes of argument time. The Petitioner will present
`their case first, and may reserve rebuttal time. The Patent Owner
`will then argue their opposition to the Petitioner's case, and
`because they have filed a motion to exclude, you may present any
`arguments you would like with respect to the motion to exclude,
`and in connection thereof, you may reserve rebuttal time. Then
`the Petitioner will then use any time they have reserved to
`respond to all aspects of the Patent Owner's case, and we will
`conclude with the Patent Owner using any time they have
`reserved in connection with the motion to exclude.
`I would also like to address Petitioner's notice of
`objections to the Patent Owner's demonstratives. I believe you
`had objected to ten slides on the basis essentially that some of the
`slides add new argument and some address content that you seek
`to exclude as a part of your motion to exclude. Let me tell the
`parties the following: Certainly demonstratives should not
`contain new argument, they are simply visual aids to highlight
`argument that has already been briefed, but to the extent that they
`do, it will not factor into our final written decision.
`Also, with respect to the motion to exclude, we have not
`decided either party's motion to exclude at this point. To the
`extent that we do grant either motion or portions of either motion,
`any content that is excluded also will not factor into our final
`written decision. So, we have taken note of your objections, but
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`we are not going to prohibit the display of any of the
`demonstratives today.
`All right, all of that being said, Mr. Ginsberg, you may
`begin when you are ready.
`MR. GINSBERG: Good afternoon, Your Honors. As
`mentioned, my name is Jeff Ginsberg, and I am with the law firm
`of Patterson Belknap representing the Petitioner U.S. Endodontics
`in this proceeding.
`As the Board is aware, this proceeding concerns U.S.
`Patent Number 8,876,991 to Neill Luebke. Now, the alleged
`invention concerns heat treating an endodontic instrument that
`includes a superelastic nickel titanium component so that it
`fractures less during use and is better able to negotiate the root
`canal without damaging the tooth. This can be found right in the
`exhibit of the patent at 1001, at column 9, lines 22 to 23.
`What's on slide 2 here is a picture of an endodontic
`instrument, this is taken from Exhibit 2007.
`JUDGE COCKS: Mr. Ginsberg, I'm sorry to interrupt,
`are you going to reserve rebuttal time?
`MR. GINSBERG: I apologize, Your Honor. Yes, I
`would like to reserve 15 minutes for rebuttal time.
`JUDGE COCKS: Thank you.
`MR. GINSBERG: Continuing with slide 2 of Plaintiff's
`demonstratives -- I'm sorry, with Petitioner's demonstratives,
`what is shown here is an endodontic file. As you can see, there's
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`essentially two main components. You have a handle that's on
`the left and then you have a nickel titanium shank component on
`the right.
`The alleged invention concerns heat treating that nickel
`titanium portion with the fluted edges that is actually used to cut
`tooth enamel during a root canal procedure. As this Board may
`recall from IPR2015-00632, which concerned Neill Luebke's
`related '773 patent, the heat treatment of superelastic endodontic
`instruments to remove the superelastic characteristic such that the
`heat-treated portion can retain its shape when bent was known in
`the art prior to Luebke's alleged invention. This is discussed, for
`example, in the application to Matsutani, as well as the Matsutani
`patent, which can be found at Exhibits 1025 and 2044.
`Moving to slide 3, this slide shows the grounds upon
`which trial was instituted. These include grounds that claims 12
`through 16 of the '991 patent are not enabled, they lack written
`description and are unpatentable over Luebke's 2008 published
`application, as well as the Kuhn prior art reference. Those are
`Exhibits 1022 and 1030.
`Moving to slide 4, we have here claim 12, this is the
`sole independent challenged claim. As you will see, it claims a
`method for manufacturing or modifying an endodontic instrument
`that includes two steps, one is providing an elongated shank that
`has a cutting edge. The shank is comprised of a superelastic
`nickel titanium alloy, and then heat treating the entire nickel
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`titanium shank at a temperature above 25 degrees Celsius, around
`77 degrees Fahrenheit, up to but not equal to the melting point of
`the superelastic nickel titanium alloy. And then there's a wherein
`clause which recites that the result of that heat treatment will
`provide 10 degrees of permanent deformation after torque at 45
`degrees of flexion when tested in accordance with ISO Standard
`3630-1.
`
`Slide 5 has two dependent claims, claim 13 and 14.
`Claim 13 adds reference to the heat treatment step taking place in
`an atmosphere that is either unreactive, ambient or it states, "any
`other acceptable heat treatment process." Claim 14 adds the
`limitation where it narrows the lower end range of the heat
`treatment temperature, it raises it from above 25 degrees Celsius
`to 300 degrees Celsius.
`JUDGE COCKS: Counsel, could you go back to slide
`4, please.
`MR. GINSBERG: Of course, Your Honor.
`JUDGE COCKS: So, in our decision instituting this
`proceeding, we determined for the purposes of that decision that
`the wherein clause is limiting, have you challenged that in the
`filings?
`
`MR. GINSBERG: We have not, Your Honor. For the
`purpose of this proceeding, we are not challenging it.
`Moving to dependent claims 15 and 16. Claim 15 adds
`the limitation that the shank has a diameter of 0.5 to 1.6
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`Patent 8,876,991 B2
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`millimeters. Claim 16 adds the limitation that the titanium alloy
`comprises 54 to 57 weight percent nickel.
`Now, it does not appear the Patent Owner makes any
`separate arguments for patentability based on the limitations that
`were added in dependent claims 13 through 16. Also of note, in
`this proceeding, moving on to slide 7, Patent Owner did not
`submit any declaration testimony from an expert to rebut the
`testimony of Petitioner's expert, Dr. Goldberg.
`As set forth in the institution decision, Petitioner
`maintains that claims 12 through 16 are eligible for post-grant
`review. Specifically, Petitioners demonstrated that the
`applications to which the '991 patent claimed priority do not
`provide an enabling disclosure for the methods recited in claims
`12 through 16, they do not provide written description support for
`the subject matter of claims 12 through 16, and therefore, the
`effective filing date for the challenged claims is the actual date of
`the application that was filed and resulted in the '991 patent.
`That's a 331 application that has a filing date of January 29th,
`2014, making this patent eligible for post-grant review.
`Moving to slide 9, there are some quotes here. This is
`turning now, I apologize, turning to enablement, in slide 9, we
`include here some quotes from several cases that were cited by
`the Petitioner in its petition at pages 34 and 40. We have a quote
`from the Sitrick case, "a patentee who chooses broad claim
`language must make sure the broad claims are fully enabled."
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`Patent 8,876,991 B2
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`JUDGE COCKS: Counsel, I'm sorry to interrupt.
`Could you go back one slide.
`MR. GINSBERG: Of course, Your Honor.
`JUDGE COCKS: I just wanted to make something very
`clear, which is that in our institution decision, we found that it
`was more likely than not that the Petitioner would succeed in the
`challenge. I think the statement that we have already concluded
`that you have demonstrated what you have on slide 8 is not
`entirely accurate.
`MR. GINSBERG: One second, Your Honor. What I
`was trying to quote --
`JUDGE COCKS: Do you disagree --
`MR. GINSBERG: -- is from page 21 of the institution
`decision, where the Board found that Petitioner has demonstrated
`adequately that the applications to which the '991 patent claims
`priority do not provide an enabling disclosure for the methods
`recited in claims 12 through 16.
`JUDGE COCKS: So, do you understand that was for
`purposes of that decision?
`MR. GINSBERG: Yes, I do, Your Honor.
`JUDGE COCKS: If it's not clear, we will make it clear
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`now.
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`MR. GINSBERG: Yes. And as the record has been
`more developed in this proceeding, Petitioner maintains that
`the -- that it has, in fact, demonstrated, for purposes of the final
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`Patent 8,876,991 B2
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`determination, that claims 12 through 16 do not, in fact, provide
`an enabling disclosure and do not provide written description
`support, and Petitioner has also demonstrated that the effective
`filing date for the claims should be the filing date of the 311
`application, which is January 29th of 2014.
`JUDGE COCKS: Thank you. Go ahead.
`MR. GINSBERG: Moving to slide 9, which includes
`some quotes from enablement cases from the Federal Circuit, we
`have the AK Steel case, which was also cited by the Board, when
`a range is claimed, there must be reasonable enablement of the
`scope of the range. We also included a quote from In re Corkill,
`claims which include "a substantial measure of inoperatives... are
`fairly rejected under 35 USC Section 112."
`Moving to slide 10, this slide sets forth factors that were
`identified as relevant to whether undue experimentation would be
`needed to practice the full scope of the invention from the In re
`Wands Federal Circuit decision. Factors relevant to undue
`experimentation include the quantity of experimentation
`necessary; the amount of direction or guidance presented; the
`presence or absence of working examples, et cetera.
`Slide 12. As Petitioner's expert testified, practicing the
`full scope of the claimed invention would require undue
`experimentation, as the results of heat treatment depend on
`several variables, including temperature, time, alloy composition
`and alloy treatment history. This can be found in the petition, it's
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`Case PGR2015-00019
`Patent 8,876,991 B2
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`paper number 1 at page 41. It was quoting Exhibit 1002, which is
`declaration testimony of Petitioner's expert, Jon Goldberg.
`By way of specific example --
`JUDGE GOODSON: Counsel, do you have a position
`on whether the relevant field of this invention is in a predictable
`or an unpredictable art?
`MR. GINSBERG: Yes, we -- as evidenced by the prior
`art references that have been cited, it is a very unpredictable art.
`There is one example disclosed in the '991 patent where a specific
`alloy composition was heat treated to a temperature of 500
`degrees Celsius for 75 minutes, and it was reported that a
`particular claimed amount -- the claimed amount of deformation
`was achieved.
`But if you look at other prior art references that were
`cited in the petition for post-grant review of the '991 patent,
`including a reference to Pelton, it shows that heat treatment
`temperatures in that same -- at that same temperature, at that
`same time, for an alloy composition that is different, did not yield
`the same results. So, it's a very unpredictable art.
`JUDGE GOODSON: Any other evidence that it's
`unpredictable in the record before us?
`MR. GINSBERG: There is declaration testimony from
`Dr. Goldberg, which I will be discussing a little bit more in detail
`shortly, where he talks about that changes in alloy composition of
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`as little as one percent can have a substantial effect as to whether
`or not you would be able to achieve the claimed deformation.
`There's also references that suggest that the way that the
`nickel titanium instrument is processed is going to have a
`material effect on the results. There's references to suggest that
`the flute geometry can have a material effect on the results that
`would be obtained. So, there's an abundance of prior art that
`shows and demonstrates that this art is very unpredictable.
`JUDGE GOODSON: Now, your argument a moment
`ago that the result that Pelton achieved when he heat treated at the
`same temperature and time as the example described in the
`specification and achieved different results, that's dependent on
`assuming that the austenite finish temperature is predictive or can
`be equated with the claimed deformation result?
`MR. GINSBERG: Yes, Your Honor, that's something
`that the applicant himself represented during the prosecution of
`the '991 patent and that is something that you would be able to
`predict whether or not you would get the claimed deformation by
`the austenite finish temperature, the transformation temperature.
`And that's discussed in the Pelton reference that I just mentioned,
`Exhibit 1020, where it showed that when you would heat treat it
`at 500 degrees for 75 minutes, you actually -- the austenite finish
`temperature was below body temperature, it was 30 degrees
`Celsius. And as set forth -- and it's actually acknowledged by the
`applicant himself, if you have an austenite finish temperature
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`Patent 8,876,991 B2
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`that's below body temperature, that's not expected to achieve the
`claimed result.
`JUDGE GOODSON: My understanding is that Patent
`Owner has argued that Dr. Goldberg's testimony also explains
`that you can't predict the deformation result solely based on
`austenite finish temperature, but other factors also bear on that
`result. Can you explain that?
`MR. GINSBERG: Sure. So, the Patent Owner, what
`they're doing is trying to look at the snippet of deposition
`testimony in a vacuum, and if you're looking at -- if you actually
`take a look at Dr. Goldberg's full testimony, where he explains
`that you don't look at it in a vacuum, you consider it a
`composition, you consider the heat treatment times and
`temperatures and other factors. When you have all that
`information, that's where you can make this prediction.
`And the prior art references that are a part of this
`proceeding are replete with references to the suggestion that
`raising the austenite finish temperature so that a nickel titanium
`file under conditions of use is in the martensite phase will result
`in a file that will be permanently deformable. Luebke himself,
`the applicant, represented this to the Patent Office. This can be
`found in the prosecution history of the '991 patent, Exhibit 1003,
`at page 129. And it's explained in further detail in Dr. Goldberg's
`declaration, Exhibit 1002, at paragraphs 31 through 34.
`JUDGE GOODSON: Thank you.
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`MR. GINSBERG: As mentioned earlier, Petitioner's
`expert, Dr. Goldberg, testified that small changes in composition
`of the nickel titanium alloy can have a substantial impact on the
`transformation temperature of the material, which determines
`whether the alloy will be permanently deformable as claimed.
`Slide 13 has some cross examination testimony where
`Dr. Goldberg again confirmed that small changes in composition
`can have this dramatic effect.
`Now, moving to slide 14, and the claims which are
`directed to heat treating as low as 25 degrees Celsius. This is -- I
`think it's warmer than 25 degrees Celsius here in Washington, DC
`today, according to the Patent Owner, this would be a heat
`treatment, just taking your files out for a walk today would be
`subjecting them to the claimed heat treatment step.
`Now, slide 14 provides a passage from Dr. Goldberg's
`testimony regarding why heat treating within the claimed range is
`not enabled. We provided testimony on this, that there would not
`be sufficient energy in subjecting a file to temperatures that are
`25 degrees Celsius to 37 degrees Celsius, which are mouth
`temperatures. That wouldn't provide a sufficient energy to have a
`file that's going to make it a superelastic file change into one that
`could be bent and meet the claim limitation.
`The examiner himself initially acknowledges during the
`prosecution of the '991 patent, you can find this in the prosecution
`history, Exhibit 1003, at 83 to 84. And, in fact, as cited, in our
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`papers, Luebke himself, when he was deposed during the IPR
`proceeding involving the '773 patent, he was asked whether or not
`he believed you could achieve the claimed deformation for a
`significant portion of the claim ranges, and he testified, "I don't
`believe you would be able to achieve the results." I asked him
`whether or not you could achieve the claimed result if you heat
`treated at 50, he said, "I would guess not."
`"100?
`"I would guess not.
`"150?
`"I would guess not.
`"250?"
`He said he didn't know. He actually said he would
`guess not. I asked him about higher temperatures, 375, 300
`degrees? He said, "I don't know, you would have to test it."
`This provides further evidence that the claims recited in
`12 through 16 are not enabled.
`JUDGE COCKS: Counsel, one question about slide 14
`and Dr. Goldberg's testimony at I guess paragraph 102 of Exhibit
`1002. Why did he focus on the range of 25 to 37 degrees
`Celsius? Does that imply that 38 degrees Celsius is sufficient to
`alter the transformation temperature of the nickel titanium
`instrument?
`MR. GINSBERG: Absolutely not, Your Honor. The
`reason why he was focusing on those temperatures is if you look
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`at independent claim 12, it recites 25 degrees Celsius. And one
`of the things that the Patent Owner has done is they said, well,
`actually the claims require heat treatment above 25 degrees
`Celsius. So, it seems that Patent Owner's position is, well, heat
`treating at 25 is not the claim, but heat treating at 26 degrees or
`27 degrees actually is what we're claiming.
`So, one of the reasons why Dr. Goldberg was focusing
`on that is to address that criticism. In addition, the reason why he
`is focused on 25 to 37 is 25 is the lower bound of claim 12, 37 is
`mouth temperature, body temperature, that's the temperature at
`which these files are used. They're inserted into a person's
`mouth. That temperature is 37 degrees. That's why we're looking
`at that initially in his declaration that was submitted with the
`petition.
`JUDGE COCKS: Okay. Thank you.
`MR. GINSBERG: And so I just want to be clear. I
`think I misspoke a little bit, this argument appeared in Dr.
`Goldberg's declaration testimony submitted with the petition. So,
`it was before the Patent Owner challenged certain testing that the
`Petitioner did at 25 degrees as opposed to above 25 degrees,
`which we will come to in a little bit. I just wanted to clear the
`record.
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`So, again, it's important to note that Luebke himself
`acknowledged that you couldn't heat treat at 25, 50, 100, 150,
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`250, and get the claimed result. This admission provides
`irrefutable evidence of the lack of enablement of these claims.
`Moving to slide 15. Now, during the prosecution of
`another one of Luebke's earlier filed related applications, the 625
`application, the applicant sought to traverse prior art rejection that
`was based on the criticality of the temperature being well above
`the temperatures currently being claimed in the '991 patent.
`There was a prior art rejection that disclosed heat treating an
`endodontic instrument to 375 degrees Celsius. In arguing over
`that rejection during the prosecution of this earlier-filed
`application, Luebke himself represented to the Patent Office that
`heat treating at 375 pales in comparison to what he's claiming,
`and what his application discloses, and that's heat treating at 500
`degrees for 75 minutes to get the claimed deformation. He
`pointed this right out during the prosecution history,
`distinguishing over prior art that disclosed heat treating at 375
`degrees Celsius.
`Now, the examiner, in charge of the '991 application,
`actually referred to the earlier related application in an office
`action, stating that it's unclear how a significant portion of the
`temperatures claimed in the '991 patent are now sufficient when
`they had previously been established to be outside the critical
`range. That's at Exhibit 1003, page 83.
`Now, although the -- moving to slide 16, although the
`applicant never addressed this enablement issue during the
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`prosecution of the 311 application that resulted in the '991 patent,
`the examiner ultimately allowed the claims. In doing so, the
`examiner made a mistake about the scope of the claims. As
`reflected in the notice of allowance that's set forth here on slide
`16, the Examiner mistakenly believed that the '991 patent claims
`a heat treatment at temperatures from 400 degrees Celsius to
`above the melting point.
`Now, this confusion, as stated in Petitioner's paper, may
`have resulted from the fact that the very same examiner was in
`charge of Luebke's prior applications, all of which require heat
`treating at these higher temperatures.
`In their response, Patent Owner says, oh, well, we
`actually provided a response to this notice of allowance, saying,
`hey, examiner, you're actually -- the claims are actually broader
`in scope. The fact that the examiner remains silent and never
`provided a substantive response does not create any implication
`one way or the other. This is set forth in the petition, page 39,
`citing 37 CFR 1.1048.
`Now, in order to confirm the lack of enablement of the
`challenged claims, Petitioner commissioned an independent lab to
`carry out testing on superelastic nickel titanium files. The testing
`provided further irrefutable evidence that heat treating within a
`substantial portion of the claimed range does not come close to
`achieving the claimed deformation.
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`In response, the Patent Owner argues, among other
`things, that the testing is not relevant because the claims are only
`directed to heat treatments that resulted in the claimed
`deformation, and not to inoperative elements. Such argument
`lacks any support and does not address the fact that the claims
`provide no teaching as to how to achieve the claimed deformation
`for a substantial portion of the claim ranges. There is no
`teaching, the claims are not enabled for a substantial portion of
`these claims.
`Patent Owner's argument that says --
`JUDGE GOODSON: Do you agree, though -- do you
`agree with their -- their reliance on case law that the entirety of a
`claimed range does not have to be enabled in order for a claim to
`comply with the enablement requirement?
`MR. GINSBERG: I understand the cases that the Patent
`Owner has cited, but they're missing the point here, because the
`chat -- they chose purposefully to claim this very broad range, 25
`up to the melting point of nickel titanium, 300 up to the melting
`point, where they have included a substantial portion. We have a
`substantial portion of the claimed range not being able to achieve
`the claimed result. The cases do not support that that is possible,
`that they could still be enabled. I haven't seen a case to that
`effect. And --
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`JUDGE GOODSON: Is there a case that illuminates
`how much of a claimed range has to be operative in order for a
`range to be enabled?
`MR. GINSBERG: Your Honor, sitting here right now, I
`don't recall a specific case on that point, but here, we have a
`substantial portion of the claimed range, and the response from
`Patent Owner that, well, we're only -- we're only trying to claim
`operative embodiments, that just shows the weakness of their
`position, because there is no teaching, whatsoever, and you're not
`going to hear anything from the Patent Owner as to how you
`could heat treat a file at 25 degrees Celsius and get the claimed
`result. How you could heat treat at 50, 150, 250. This was the
`range that the Patent Owner chose to put into the claims, and they
`are clearly not enabled.
`And this is further compounded by the fact that, again,
`during prosecution of earlier applications, all those earlier
`applications required heat treating at much higher temperatures,
`the applicant specifically disparaged heat treating at
`temperatures -- at a broad range of temperatures within the
`claimed range, saying 375 doesn't work.
`Now, in its response, the Patent Owner, just referring
`back to the previous testing, so that can be found at Exhibit 1018,
`that was accompanied by a declaration from a testing -- a person
`who actually carried out the mechanical testing. He wasn't a
`person of skill in the art in metallurgical engineering or material
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`science, he was the one who just performed the mechanical
`testing, that's Adam Kozak. Patent Owner tries to -- in its
`response, you'll see the Patent Owner showed Mr. Kozak, who is
`just somebody who carried out this testing, not a material
`scientist, they showed him the Kuhn reference and started asking
`him questions about a reference he hasn't seen, then cite to
`Mr. Kozak's testimony in advancing the position. That wasn't
`proper and that doesn't support any of the Patent Owner's
`positions in this case.
`Now, moving on to Exhibit 1041, and slide 18, in its
`response, Patent Owner raised some criticisms with Petitioner's
`testing. As mentioned, they argued that the claims require heat
`treating above 25 degrees Celsius, and therefore Petitioner's
`testing at 25 degrees was outside the claimed range. Patent
`Owner also argued there was an issue with the testing because
`there was a slight initial bend in the files that were tested, less
`than one degree. If you look at Exhibit 1018 at page 10, and the
`post heat treatment bend testing was conducted in the same
`direction as this initial bend.
`Now, while the Petitioner believed these criticisms were
`completely without merit, it actually commissioned a second
`independent testing lab to confirm its prior results, and it also had
`the testing lab heat treat at higher -- at longer times to rebut
`another unsubstantiated allegation from Patent Owner that we
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`purposefully did not heat treat at longer times because we thought
`the results would come out bad for us.
`So, we commissioned a second testing lab to heat treat
`at 40 degrees Celsius, indisputably above 25 degrees Celsius, and
`300 degrees. We increased the heat treatment times all the way
`up to 28 hours. What were the results? The results established
`that heat treating at temperatures within the broad range, in a
`substantial portion of the range, do not come close to meeting the
`claimed deformation limitation.
`JUDGE GOODSON: Is there any evidence in the
`record concerning temperatures above 300 degrees?
`MR. GINSBERG: The only evidence in the record is
`example 4 of the '991 patent, where you have a file that was heat
`treated at 500 degrees Celsius for 75 minutes, allegedly achieving
`the claimed result. That's the one heat treatment time and
`temperature referenced that actually is related to the claimed
`deformation.
`Patent Owner is going to get up and say, oh, there's
`reference to heat treating at 25 degrees, I think in three places,
`you have the abstract disclosure, summary of the invention. If
`you look at the passages that they're citing, none of that is tied in
`any way whatsoever to achieving the claimed deformation. There
`is nothing in the patent -- in the patent itself that says if you heat
`treat at 25, you're going to get the claimed deformation. You'll
`see what's cited. It's just not there.
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`So, there is, to answer your question, Judge Goodson,
`there is reference to, in exampl
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