SOFTBELLYS, INC. v. TY INC.
Oral Argument — 02/07/2023 · Case 22-1146 · 33:00
0:00
Judge Lourie
Our next case is Soft Bellies, Incorporated versus Tye, Incorporated, 2022-11-46.
0:11
Is that the topic, is it?
0:13
Appellant Attorney (Matthew Topic)
It is, Your Honor.
0:14
Judge Lourie
Tye?
0:15
Appellant Attorney (Matthew Topic)
Yes, that's correct.
0:18
Good morning.
0:19
May it please the Court.
0:20
I'd like to focus primarily on the claim construction issues and especially Tye's argument about the in-part language found in Section 3B of Tye's brief.
0:30
And then if time allows, I have a few brief points on the NIDAC issues.
0:34
Of course, the starting point in construing claims is their plain language.
0:41
Here, the term is in-part.
0:44
Tye's construction would allow for something that forms an inner chamber in whole to form it in part, whole being the antonym of part.
0:56
It's completely inconsistent with the plain language.
0:59
of that term.
1:01
Turning to Section 3B of their brief, Tye now argues that in-part does not modify the strip, or sorry, that does not modify the chamber, but instead it modifies the strip so that a strip of fabric can form the entire inner chamber plus something else, and that is how they get to in-part.
1:20
And there's a number of problems with that argument.
1:22
First and foremost, it was forfeited.
1:25
Tye argued to the board that there can be two strips of optical fabric.
1:29
to form the chamber, plus a non-optical strip somewhere else.
1:33
They did not argue this single strip chamber that's in Appendix 366 and in Mrs. Ryan's declaration at 2306.
1:45
And this is not simply sort of, you know, expanding upon or slightly modifying what was argued below.
1:50
It's completely inconsistent.
1:51
It is a different argument entirely.
1:54
And so the court really should not even be considering it.
1:57
There's also no evidence.
1:59
It was presented that that configuration exists in Ogawa, which was the reference at issue.
2:04
Judge Chen
But just so I understand it, if we disagree with your understanding of the claim and conclude that there's nothing in the claim that requires the inner chamber to be composed of at least one other strip that's non-optical grade fabric,
2:31
then does that result in an affirmance here?
2:34
Appellant Attorney (Matthew Topic)
Correct.
2:34
We need to win both arguments.
2:36
We need to win the claim construction argument, and we need to win the NYDEC argument.
2:39
Judge Chen
Okay.
2:40
So when the claim says, okay, we have an inner chamber, and there's a strip that forms in part that inner chamber made of optical grade fabric,
2:57
why does that preclude the other or any...
3:02
the other strip of fabric from being also an optical-grade fabric.
3:09
Appellant Attorney (Matthew Topic)
Because then it would be made in a whole of strips that are optical fabric and not in part.
3:12
Judge Chen
I guess what I'm trying to get at is that the claim limitation seems to be focused that,
3:20
okay, this inner chamber has got to be made up of some strips.
3:24
But one strip, I'm telling you right now, has to be composed of optical-grade, period.
3:30
And I guess I don't understand, just based on that limitation, why that also is telling me,
3:39
and by the way, no other strip of fabric that is part of the inner chamber can be made of optical-grade fabric.
3:48
It doesn't say it like that.
3:49
So I'm just trying to understand why is there this negative limitation embedded in this limitation
3:55
where it's really just focused on one of the strips and what is a feature of one of those strips
4:00
and the fabric.
4:01
The feature it's calling out is that feature has to be optical-grade.
4:04
Why does that require any kind of understanding and commentary about the other strips that will make up the inner chamber?
4:14
Appellant Attorney (Matthew Topic)
Because that interpretation would render, in part, meaningless.
4:19
If the claim read, at least in part, then I would agree that it would allow for the rest of the strips could also be optical-grade fabric.
4:29
But by saying in part, it means...
4:31
Necessarily means not in whole.
4:33
Judge Prost
Can I ask you, just as a follow-up to Judge Janssen, maybe, the independent claim is the one that says in part.
4:41
But we're dealing here with the dependent claims, right?
4:44
And nothing in the dependent claim which introduces the non-optical fabric requirement
4:49
requires that the non-optical fabric form any other part of the inner chamber.
4:56
Is that fair? Is that right?
4:58
Appellant Attorney (Matthew Topic)
Well, you have...
5:00
Judge Prost
It just requires...
5:00
The dependent claim only requires that another of said strips of fabric, referring back to the phrase,
5:06
strips of fabric sewn together to form a doll-like figure party, be non-optical.
5:11
Appellant Attorney (Matthew Topic)
Well, the provision we're relying on is in part, which is in the...
5:15
Both the, as you referred to, the originally independent claim and the dependent claim.
5:20
There's now only one claim.
5:22
The originally independent claim was canceled.
5:27
So, at most, that could mean that...
5:30
You could have a chamber formed in part by optical grade fabric and in part by something else that isn't fabric.
5:37
Now, there's no teachings in the patent that say anything about that.
5:41
There's no embodiment that matches it.
5:43
And there's no evidence that Ogawa teaches that either, that the tie refers to it.
5:48
Perhaps it could be wood or metal or plastic.
5:51
So, in part, has to mean something other than in whole.
5:55
And even if they're correct about that, the rest of it doesn't...
6:00
It doesn't have to be non-optical grade.
6:02
I don't think they're correct because when you read the claim as a whole, it's talking about fabric.
6:05
It's talking about two kinds of fabric that are mutually exclusive.
6:09
If it's not optical grade fabric and it needs to be fabric, then it would necessarily be non-optical grade fabric.
6:15
So, when you read the claim as a whole and when you look to the embodiments
6:18
and when you look to the purpose of that limitation, which the patent owner referred to in the re-exam at Appendix 1288,
6:29
the purpose...
6:30
Was cost savings, that you wouldn't use any more optical grade fabric than you would need to.
6:36
And so, yes, could you put non-optical grade fabric somewhere else?
6:41
You could.
6:42
But it's inconsistent with the purpose that you mentioned to sort of make the whole thing out of optical grade fabric
6:47
and then stick some piece of non-optical fabric elsewhere when the purpose of it is to reduce the cost associated with it.
6:56
Judge Prost
And I think this is maybe just a different version of the way...
7:00
of the question Judge Chen was raising, which is, just because it says, in part,
7:07
what prevents the rest of the inner chamber from being formed by yet another strip of optical fiber, fabric?
7:15
Appellant Attorney (Matthew Topic)
Because it would then be formed in whole by strips of optical grade fabric.
7:20
And it would...
7:21
That would remove, in part.
7:23
I mean, under that interpretation, you could remove the word, in part, and that's where you would get.
7:29
And so, in part, would be superfluous.
7:31
There wouldn't be any...
7:34
It wouldn't serve any purpose.
7:36
It also...
7:37
I mean, there are different embodiments that are disclosed.
7:41
The preferred embodiment was for optical grade mixed with non-optical grade in the inner chamber,
7:49
which matches into our read of this claim.
7:52
And, again, Tai's argument now is different.
7:56
That's not their argument now.
7:58
Their argument now is the whole strip...
8:00
The...
8:01
The...
8:01
There would be one strip that forms the entire inner chamber,
8:04
and so long as it also forms something else with it, then it's in part.
8:08
This is their effort to move beyond just the dependent claim language
8:13
and into the actual term, in part,
8:15
because they need to explain what does in part mean then, if it's not in whole.
8:20
And so, there is no embodiment that they cite to that references that.
8:25
Page 50 of their brief, I think they try to suggest that there are embodiments of...
8:29
That do that.
8:31
That do that, but when you look at them, they're not.
8:34
All of the passages that they cite are to multiple strips forming an inner chamber.
8:41
So...
8:41
Judge Chen
I'm still trying...
8:43
I'm still struggling here because, I mean, this limitation is about two things about a particular strip of fabric.
8:52
Thing one is one particular strip of fabric will, in part, form the inner chamber.
9:02
Okay?
9:02
Okay.
9:03
So, that tells us that the inner chamber is going to be made up of a second part.
9:09
And then the second thing this limitation is telling us about this particular strip
9:13
is that it's made of optical-grade fabric.
9:16
So, I guess if I read it that way,
9:21
then the focus of this limitation is about two features of just this strip in particular.
9:28
And it's not about a commentary on the chamber itself.
9:32
It's a commentary on the strip.
9:34
The strip is going to contribute to forming the chamber,
9:41
but it's not the only thing that's going to form the chamber.
9:45
And then secondly, the strip is made of optical-grade fabric.
9:51
Right.
9:52
So, I guess what's wrong with what I just said there,
9:56
and then, you know, necessarily, the limitation isn't saying anything else about what else forms the inner chamber.
10:06
So, I guess what's wrong with what I just said there,
10:06
in, you know, in combination with said strip here.
10:12
Appellant Attorney (Matthew Topic)
So, the chamber is formed at least in part,
10:15
or, sorry, the chamber is formed in part.
10:18
Judge Chen
Well, it says here the strip.
10:20
Right.
10:21
Right?
10:21
The fabric strip, in part, forms the inner chamber.
10:28
Right.
10:28
Well, forms in part the chamber.
10:31
So, okay, we know that this particular fabric strip is,
10:36
in combination with something else,
10:38
forming the inner chamber.
10:43
Appellant Attorney (Matthew Topic)
The characteristics of the strip are that it forms part of the inner chamber
10:48
and is composed of an optical-grade fabric,
10:51
but only forms in part,
10:53
which leaves you with something else that needs to form the rest of the chamber.
10:58
Yep.
10:59
Right.
10:59
And so, given the embodiment in the specification,
11:04
the purpose of the invention being cost-saving,
11:07
the most natural read of that,
11:09
that phrase is that the one strip,
11:13
the inner chamber is formed by a strip of optical-grade fabric,
11:19
potentially more than one strip of optical-grade fabric,
11:21
but it is not in whole formed by optical-grade fabric.
11:26
Now, to the extent there's any ambiguity here,
11:30
we would look to the specification,
11:32
we would look to the purpose of the limitation,
11:34
and those things both point not to forming the entire inner chamber
11:38
out of optical-grade fabric,
11:40
there's clearly a preference in the specification towards combining both
11:45
and in not using unnecessary amounts of optical-grade fabric,
11:51
and that would allow,
11:52
I mean, you would basically then be putting on a piece of non-optical-grade fabric
11:57
as an afterthought that doesn't really serve what the purpose of that limitation is.
12:01
So that construction would be inconsistent with the purpose of that.
12:08
I'm almost into my rebuttal time.
12:10
Just briefly,
12:10
on NIDAC,
12:12
the board said that it was silent.
12:15
The board went on to cite Kenna Metal
12:17
and used the word envisaging and envisioning.
12:21
If what the board meant to do was a straightforward,
12:23
this is just what one of Skilling the Art would understand,
12:26
why would they have written the opinion that way?
12:28
It would have been very straightforward to do that.
12:31
The answer is because it is silent.
12:34
It doesn't say anything about it.
12:35
The evidence that they rely on from Ryan isn't interpreting that claim language.
12:39
It's bringing in the opinion that it's not.
12:40
It's bringing in other material
12:41
that perhaps could have been part of an obviousness analysis,
12:44
but there was no such argument brought forth,
12:47
and there's no room to address that now.
12:50
Judge Prost
Well, why is it,
12:51
I mean, are we not free to say,
12:54
well, there may have been some ambiguity in what the board said.
12:57
It said silent,
12:58
and then at another point it talks about something in Ogawa
13:02
for us to say, forget Kenna Metal.
13:06
We think there was enough here to support the board's conclusion.
13:10
Appellant Attorney (Matthew Topic)
Because you need to reverse or affirm on the grounds that the board relied upon.
13:15
And because the board relied upon a Kenna Metal analysis,
13:21
because their finding that it was silent is subject to substantial evidence review,
13:25
then there is not any room to say sort of we can affirm on alternative grounds
13:29
and say, you know, we disagree about Kenna Metal,
13:32
but we find that there was evidence to under a more traditional anticipation analysis
13:38
or under an, I mean, there was no obvious,
13:40
there was no obviousness argument based on this anyway.
13:43
So there would be no room at all for even the board to have done that.
13:48
Judge Lourie
Counsel, as you indicated, you're into your rebuttal time.
13:51
We'll give you three minutes for rebuttal.
13:53
Appellant Attorney (Matthew Topic)
Thank you.
13:54
Judge Lourie
Mr. Segrist.
13:58
Appellee Attorney
Your Honors, may it please the court.
14:01
The board did a very straightforward analysis here.
14:04
It didn't...
14:05
I'm not so sure of that.
14:07
Judge Chen
Where did this Kenna Metal come from?
14:09
Appellee Attorney
So the board cited Kenna Metal for the proposition,
14:13
that a reference is read from the perspective...
14:16
Where did it come from?
14:16
It didn't come from you, right?
14:17
Judge Chen
No, we didn't cite Kenna Metal.
14:18
So that just came up on its own?
14:21
Perhaps sua sponte?
14:23
Appellee Attorney
Yes.
14:24
Your Honor, the board is...
14:25
Judge Chen
It just popped out of nowhere in the final written decision.
14:30
Appellee Attorney
The board can certainly cite cases other than what either party decides.
14:34
Sure, but I'm just trying to, you know, get a lay of the land.
14:37
Sure, and yes.
14:38
Nobody...
14:39
Judge Chen
Nobody cited it.
14:40
Nobody said Kenna Metal.
14:41
Appellee Attorney
That's correct.
14:42
Judge Chen
In the briefing, in the hearing,
14:44
and then all of a sudden, like, it just popped up out of a coffin.
14:49
Kenna Metal.
14:50
Appellee Attorney
Yes, that's the case...
14:51
Judge Chen
You can't examine this under Kenna Metal.
14:53
Appellee Attorney
No, that's the case that the board cited for the proposition
14:56
that a prior art reference, Hiragawa,
14:59
is read from the perspective of a person of ordinary skill in the art.
15:02
And that's all they cited it for.
15:04
Judge Prost
Wait, wait, wait.
15:05
But they used the word silent in connection with Kenna Metal
15:08
to say that the reference was silent on this limitation.
15:12
I mean, they said that, right?
15:13
Appellee Attorney
They did.
15:13
They did.
15:14
But...
15:14
But that's not all that they said.
15:15
It's on page 25 in our brief.
15:17
We've got the full quote from the board's paragraph that cites this.
15:23
And what they said is that it's silent, but our analysis doesn't end there.
15:29
Because where a reference is silent,
15:33
a reference doesn't include everything that a person of ordinary skill in the art already knows.
15:38
That's assumed to be out there.
15:40
You know, a reference on chemistry doesn't have to include a full freshman,
15:45
a freshman text on chemistry,
15:47
that all of that is already assumed to be known.
15:49
So the board here said,
15:51
it's silent, but our analysis does not end there.
15:55
That's what they cited Kenna Metal for.
15:57
Because even if it does not expressly spell out the limitations,
16:01
you look at what a person of ordinary skill in the art would know or understand.
16:05
Judge Prost
So you could strewing silent to mean kind of ambiguous,
16:08
that it doesn't directly say this,
16:10
but a person skilled in the art would understand that's what it meant?
16:15
Yes.
16:15
Appellee Attorney
Because I don't think it's ambiguous, Your Honor.
16:17
I think that it's saying that you did not have to provide assembly instructions
16:23
on a stuffed animal to a person of ordinary skill in the art and design.
16:28
That a person of ordinary skill in the art would already know how you make one of these figures.
16:33
And so it is silent on that.
16:35
It didn't expressly spell out those details.
16:37
But a person of ordinary skill in the art brings that knowledge with them when they read Ogawa.
16:43
Judge Chen
Yeah, but throughout,
16:45
the reasoning in this board's opinion,
16:49
the board keeps using the term envisage.
16:53
And that's a word that comes directly out of Kenna Metal.
16:56
And it's a code term that tells me that the board was looking at this anticipation analysis
17:05
through the lens of Kenna Metal and through the idea of
17:08
even though the reference doesn't expressly say something,
17:12
a skilled artisan would envisage,
17:15
this silent limitation in the content of this reference.
17:21
And that is not the way that the opinion,
17:27
our court's opinion in Kenna Metal was using the term envisage.
17:31
And so that's the concern I have here.
17:35
Now, I understand your theory, your argument, which is,
17:39
well, yes, it referred to Kenna Metal, but don't worry about that.
17:44
And don't look at that.
17:45
And it was,
17:45
it was just really just a casual drive-by reference to Kenna Metal.
17:50
And the reasoning here can stand on its own
17:54
if you just rip out all references to Kenna Metal and envisage.
17:59
I understand that, but...
18:01
Appellee Attorney
I don't think that's your argument, Your Honor, but please continue.
18:04
Judge Chen
Okay, well, I mean, to me, that's the only way that we could accept the reasoning here
18:11
is if you rip out the references to Kenna Metal
18:14
because the Kenna Metal is a reference to Kenna Metal.
18:15
Kenna Metal discussion here is wrongheaded
18:19
and a misapplication and a misunderstanding of our Kenna Metal case.
18:26
So, therefore, we're left with, okay,
18:28
is there some way to construe what the board did here
18:33
independent of any reliance on Kenna Metal and the term envisage?
18:37
Appellee Attorney
So, Your Honor, we're not saying you need to ignore the word envisage
18:40
or ignore Kenna Metal.
18:42
Yeah, I'm saying you do.
18:43
Kenna Metal did not come up with the word envisage.
18:47
That's not where that comes from.
18:48
The word envisage comes from Enright Petering.
18:50
Sixty years ago, the Court of Customs and Patent Appeals used that word
18:54
to describe how, yes, a species can be anticipated by a genus
19:00
if merely saying that genus, a person of ordinary steel,
19:04
would immediately envisage all of the members of the species.
19:07
Judge Lourie
But aren't there other envisage decisions different from Petering?
19:13
Appellee Attorney
There are. There are others different from Petering.
19:16
Kenna Metal was a little different.
19:17
And NEDAC is an example of a case where envisage was misused
19:22
because in NEDAC, the reference only disclosed the waves
19:29
in a stationary frame of reference.
19:31
I'm not very specific about that.
19:32
And the board in the NEDAC case had said,
19:35
well, a person of ordinary steel in the art would envisage
19:38
the rotating frame of reference that's in the claims.
19:42
Well, that you can't do.
19:44
You can't look at something that is expressly not,
19:47
in the disclosure, that the disclosure contradicts,
19:50
and say, well, I would envisage something else.
19:52
That's a one-reference obvious analysis.
19:54
But that's not what the board did here.
19:56
The board used envisage in its analysis,
19:59
and it used it interchangeably with the word understand.
20:02
They were applying a conventional anticipation analysis
20:05
where they look at what a person of ordinary steel in the art
20:09
would understand or infer the reference discloses.
20:12
They were looking at Ogawa to see what it discloses.
20:14
Judge Chen
I'm just concerned about this invocation.
20:17
The sua sponte invocation of Kenna metal by the board.
20:22
You could still pivot to and affirm through the claim construction.
20:27
Appellee Attorney
Oh, absolutely.
20:28
I mean, those are independent grounds.
20:30
In our view, the board's analysis was correct.
20:32
They could have cited any other case for this proposition.
20:35
Judge Prost
Why don't you pivot to the claim construction?
20:37
Sure.
20:39
Appellee Attorney
And on the claim construction, I think page 7 in our brief
20:42
has copies of the independent and the dependent claim.
20:49
And to us, the claim construction is straightforward.
20:51
The independent claim, which was canceled in the reexamination,
20:55
says there's a plurality of strips of fabric.
20:58
So at least two, maybe three, maybe four, maybe five, maybe something else.
21:02
But it's an open-ended claim.
21:04
It's a comprising claim.
21:05
So this figure can be made of something other than these plurality of strips of fabric,
21:09
as long as it's made of those.
21:11
And then we've highlighted this in yellow on page 7.
21:15
It says one of those strips of fabric,
21:18
forms in part the inner chambers.
21:20
That's strip A.
21:21
It's got a form in part the inner chamber.
21:23
Now, the word in part is just set off by commas there.
21:28
Indefiniteness is not something that the board can consider.
21:30
It's not something we argue below.
21:31
But there's lots of different ways that could apply.
21:33
But it only applies here to that one strip of fabric that's called out,
21:39
the recited strip, strip A.
21:41
That has to form in part the inner chamber,
21:44
and it has to be optical gray.
21:46
The rest of the inner chamber can be made of anything.
21:48
Any of those other strips of fabric,
21:50
any other material,
21:51
and it's still within the scope of the claim
21:52
because it uses this comprising language.
21:54
The rest of the inner chamber could be
21:56
that optical gray strip of fabric tied onto a plastic handle
22:00
or a piece of wood or anything, glass.
22:03
So then that claim got canceled in the reexamination
22:06
because there was a reference which showed
22:08
the entire figure made out of this optical gray.
22:12
And so this language that says
22:18
formed in part of optical gray fabric,
22:20
the board in that reexamination 20 years ago
22:23
held that, well, that would read on this figure
22:27
that's made entirely out of optical gray fabric,
22:29
which clearly shows that in part doesn't mean
22:31
that they can't be made entirely out of optical gray fabric.
22:35
And their specification also says
22:37
the figure can be made entirely out of optical gray fabric.
22:40
What they added in the reexamination
22:42
in these claims 15 and 16 is just that
22:43
another one of these plurality of strips,
22:46
this is strip B, the second recited strip,
22:48
that has to be non-optical gray.
22:50
But unlike the optical gray,
22:52
they didn't say where it has to be on the figure.
22:54
It can be anywhere.
22:55
It can be used to form part of the inner chamber.
22:58
It can be used for anything else.
23:00
Their example figure is a little mouse.
23:03
It could be the ears on the mouse.
23:05
It could be the tail on the mouse.
23:06
It could be the appendages.
23:07
It doesn't have to form the inner chamber
23:09
because that's not what the claim says.
23:11
And even though there's a preferred embodiment
23:13
in which it does form part of the inner chamber,
23:15
and sure, it can do that,
23:16
but the claim doesn't require it.
23:17
So the claim reads on Ogawa,
23:20
even if you think that for some reason
23:23
Ogawa has this hidden structure
23:26
that their expert, Dr. Adner,
23:28
says it has this secret wall
23:29
in between the white part and the gripped body.
23:35
But even under that,
23:37
this claim would read on Ogawa
23:39
and it is still invalid.
23:40
So yes, to answer your question,
23:43
you can definitely affirm on the basis of
23:44
under a correct claim construction,
23:46
the claim does not require
23:48
that the recited non-optical,
23:50
appropriate fabric
23:51
form any part of the inner chamber.
23:53
That's just not part of the claim.
23:56
Judge Chen
Is there any co-pending litigation here?
23:59
Appellee Attorney
There is.
24:00
There is a lawsuit filed
24:01
at the Northern District of Illinois,
24:02
which was stayed pending the IPR,
24:05
and I think the stay is still in place.
24:06
Judge Prost
Same claims as here,
24:07
or a variation of these claims?
24:09
Appellee Attorney
No, it's the same
24:12
re-examination certificate patent,
24:14
so claims 15 and 16
24:15
are the only claims that are out there.
24:17
That suit was filed after the patent had expired,
24:19
and of course the IPR was filed after that.
24:21
Judge Lourie
To finish the question,
24:23
this is an expired patent, right?
24:25
Appellee Attorney
It is, Your Honor.
24:27
Judge Chen
This claim construction issue is so straightforward.
24:32
Why did the Board dodge it?
24:34
Appellee Attorney
You know, I don't know that the Board was dodging it.
24:37
I think that from the Board's perspective,
24:39
the factual information was just so persuasive.
24:43
It was absolutely clear to the Board
24:45
that a person of ordinary skill in the art
24:48
would understand how you make one of these figures.
24:51
And
24:52
there was a lot of evidence about that.
24:54
The Ogawa reference itself is evidence of that.
24:57
Ms. Ryan's testimony was a lot of evidence about that,
25:00
and she has 26 years' experience
25:01
in the design of these types of figures,
25:04
and she's taught courses on it.
25:07
Even Dr. Adler's own testimony in his deposition
25:13
confirms that this is how a person of ordinary skill
25:18
would understand these references.
25:22
His testimony is on page Appendix 2378.
25:30
And I think it's telling,
25:32
because the question he was actually asked was,
25:35
is it fair to say, though,
25:38
that you don't consider yourself an expert in plush toy design?
25:41
That was the question that was asked,
25:43
because Dr. Adler is really an expert in textile engineering.
25:46
And before the Board,
25:49
there was a lot of emphasis on whether the cloth in Ogawa,
25:53
the white part,
25:53
was optical grade.
25:54
That's not an issue on appeal,
25:55
but that was one of the issues before the Board
25:57
that they were addressing.
25:59
And so the question was asked to Dr. Adler,
26:00
but you may be an expert in textile engineering,
26:02
but you're not an expert in plush toy design, are you?
26:05
Well, his answer to that is illuminating,
26:09
because he says that he has some familiarity with it.
26:12
It's probably not really his area of expertise,
26:14
but he goes on to describe how you make these things.
26:16
And his description is exactly what Ms. Ryan had said,
26:20
and exactly what the Board describes.
26:22
You take the two pieces of fabric,
26:24
you sew them together first,
26:26
and then you fill them with the material.
26:29
And so when Ogawa says something is sewn and it's filled,
26:32
it's not describing manufacturing stuff.
26:34
It's just describing the figure that was depicted there.
26:37
And in that figure,
26:38
you've got this white part on the bottom,
26:40
you've got the body grip on the top,
26:42
and when you look and you describe it...
26:44
Judge Chen
There's a portion of Ogawa, though,
26:45
that talks about something like a gripped body
26:48
and then a white part.
26:50
Yes.
26:50
And then there's some...
26:52
language in there that could be read as saying
26:55
you fill up the gripped body
26:58
and then you fill up the white part.
27:00
And that makes it almost sound like,
27:02
well, maybe these are two different little containers
27:06
that you take care of independently.
27:09
And then, after you finish them off,
27:12
you stitch them together.
27:13
Appellee Attorney
And that is how...
27:14
Judge Chen
And so that's really the debate,
27:16
not what one of ordinary skill in the art would do
27:19
to manufacture a stuffed toy.
27:22
I mean, that's outside what is really going on
27:26
and trying to confront the language of Ogawa
27:29
and trying to discern what is Ogawa really trying to say
27:34
when it talks about these two independent things
27:38
called a gripped body and a white part.
27:40
Appellee Attorney
So, Your Honor, Ogawa begins on Appendix Page 2136.
27:44
And that's not really a different question
27:46
because when you look at Ogawa
27:48
and you try to figure out what it's trying to say,
27:50
you have to do that from the perspective
27:53
of a person of ordinary skill in the art.
27:55
Sure, but you've got to wrestle with the language.
27:57
Judge Chen
You've got to wrestle with the text.
27:58
And you've got to say, okay,
28:00
even though the text seems to be talking about
28:03
two different things here,
28:05
let me tell you why it's really just two components of one thing
28:09
that are unfinished until they are stitched together.
28:14
Appellee Attorney
Okay, and when you look at it
28:17
with the understanding of a person of ordinary skill in the art,
28:19
you have to look at...
28:20
the language that was used and what does it mean.
28:22
Now, it does not say, stitch it together.
28:25
It does not say, fill it up.
28:27
It uses the word, you know, it is filled.
28:30
And it uses the word, it is stitched together.
28:33
You know, that's how it was described.
28:35
And the reason it's doing that is it never says steps.
28:39
It never says an assembly process.
28:42
It's describing the structure of the figure,
28:44
which includes the stitching, includes the filling,
28:46
and both of the top half and the bottom half
28:48
are filled in the thing that's different.
28:50
I see I'm out of my time.
28:53
Thank you.
28:55
Judge Lourie
Thank you, counsel.
28:56
Mr. Topic has three minutes for the bottom.
28:58
Thank you.
29:01
Appellant Attorney (Matthew Topic)
I was hoping to just address some of the claim construction points
29:05
that counsel made.
29:05
First was reliance on the comprising nature of the claim.
29:10
Is this court held in spectrum versus sterile?
29:13
Comprising is not a weasel word
29:15
in which to abrogate claim limitations.
29:17
And essentially, relying on comprising to say,
29:21
in part can mean in whole is doing exactly that.
29:24
It's rendering, it's abrogating the meaning of in part.
29:29
The next point I wanted to make was about
29:32
the dependent claim slash independent claim
29:35
and what happened in the re-exam.
29:38
And let me just find the, it's 1297.
29:45
The patent owner explained new independent claim 15
29:48
emphasizes that the fabric material other than
29:51
the optical grade material is not optical grade.
29:54
So it would not be unheard of for an applicant
29:58
or a patent owner in a re-exam to make more clear
30:02
what was believed to be already contained in an independent claim.
30:06
It's simply providing more clarity and certainty
30:08
so that the examiner feels more comfortable
30:10
going forward with allowance.
30:12
And so by merely emphasizing that the fabric
30:16
other than optical grade material is not optical grade,
30:19
it's not, it doesn't distinguish
30:21
the dependent claim from what was originally
30:23
the independent claim.
30:24
And of course, the presumption about differences
30:27
between dependent and independent claims
30:29
can be overcome if the circumstances suggest
30:32
a different explanation or if the evidence favoring
30:35
a different claim construction is strong.
30:37
That's Leibold-Farsham versus Medrad.
30:39
And that's what we have here.
30:41
The purpose of this limitation was to reduce costs.
30:45
The interpretation that would allow you to just
30:48
stick a piece of non-optical grade fabric anywhere
30:51
is not consistent with any embodiments.
30:53
It's not consistent with what the purpose was.
30:57
And I did not hear counsel try to defend
31:00
the new construction for, or even address
31:03
the new construction for IMPART,
31:05
which is not that there is two optical grade fabrics
31:08
comprising the chamber plus something else somewhere else.
31:12
It's that IMPART does have meaning
31:13
and that it reads instead on the strip
31:16
and not on the chamber.
31:18
And there's no evidence that OGAW,
31:20
which teaches that.
31:21
Judge Chen
The appellee doesn't need that argument
31:24
to prevail on a claim construction bill, correct?
31:29
Appellant Attorney (Matthew Topic)
Well, that's the construction that they're putting forward
31:31
to explain IMPART.
31:33
I mean, they otherwise only address
31:35
the dependent versus independent in the fact
31:38
that the limitation on non-optical grade
31:41
doesn't specify where it has to go,
31:43
but they still have to deal with IMPART.
31:45
Judge Chen
But just so I understand it,
31:46
their position all along has been
31:48
the inner chamber is made up of more
31:52
than one strip.
31:53
One strip has to be optical grade fabric,
31:56
but the other strip, or strips,
31:59
can be made of anything.
32:01
Appellant Attorney (Matthew Topic)
That is not how I understand
32:02
their claim construction on appeal to be.
32:05
Their claim construction on appeal,
32:07
this is section 3B of their brief, is...
32:09
Judge Chen
Well, if that's how we understand the claim,
32:13
then we still are in the same place
32:16
within a firm.
32:19
Appellant Attorney (Matthew Topic)
If you...
32:20
Well, if you were to revert
32:23
to their original construction,
32:24
that there could be two strips
32:27
making up the fabric both optical grade,
32:30
then we still have our arguments
32:32
that if it's formed in whole
32:34
by strips of optical grade fabric,
32:35
it's not formed IMPART by optical grade fabric.
32:38
That argument is still there.
32:40
Judge Chen
That argument, I'm saying,
32:43
if we were to understand the claim in that way,
32:45
that would result in an affirmance.
32:48
Appellant Attorney (Matthew Topic)
If you found that IMPART could be satisfied
32:51
by multiple strips
32:53
of optical grade fabric,
32:54
then you would affirm.
32:55
Correct.
32:57
Judge Lourie
Thank you, counsel.
32:58
Thank you.
32:59
Case is submitted.