university of texas 2017 giles sutherland rich ... · university of texas 2017 giles sutherland...

University of Texas 2017 Giles Sutherland Rich Intellectual Property Moot Court Application and Tryout Process

1

DEADLINES: Judy White at [email protected] is collecting applications. Applications are due by 5:00 PM on October 21 via the above e-mail or in Judy White’s office at TNH 4.112. Please review the application form carefully. For additional questions or information about these competitions contact the following team representatives: • Meredith J. Fitzpatrick at [email protected] or at 512-826-2279. • Peter McCabe at [email protected] • Jeffrey Mills at [email protected] BOA Tryouts: Tryouts will be held on November 1 and 2, in one of the practice court rooms (final location will be circulated at a later date). All tryouts will be recorded and distributed to the coaches. You may sign up for a tryout slot on the sheet provided outside of Judy White’s office. If you cannot make it on November 1 or 2, contact [email protected] to schedule a makeup date. The general case for the tryouts is the problem from the 2015 GSR Competition. The full problem, along with briefs for both appellant and appellee are attached to this application. The problem and both briefs cover two main issues: (1) claim construction; and (2) invalidity. In preparation for the tryout, you should only concentrate on the claim construction issue. You may argue for either the appellant or appellee. You should act as if a three-Judge panel of the Federal Circuit is reviewing the case. You do not need to do any further research outside of the attached briefs in preparation for the tryout. For the tryouts, choose one side and prepare an argument of approximately 5-7 minutes in length. The point of this exercise is simply to demonstrate your advocacy skills. You should not do any outside research or spend significant time on the question.

2

University of Texas 2017 Giles Sutherland Rich Intellectual Property Moot Court Student Application

Name Telephone Number(s) Graduation Year E-mail

EXPERIENCE COMPETITIONS (Please list the name of any advocacy competitions in which you have competed, the date of the competitions and your results, if any.) Response:

COURSES/EXPERIENCE (Please list any advocacy/appellate/brief writing courses you have taken or are currently taking, and any other academic, employment or other experience you have that may be relevant to the team(s) you would like to join. Response:

JOURNALS (Please list any experience you have with law journals or other high-level written work.) Response:

OTHER (Please list any other information or experience you would like considered.) Response:

3

ADDITIONAL REQUIREMENTS WRITING SAMPLE (Submit a writing sample with your application. Your writing sample can be a memo or brief or any other writing you have substantially prepared. If you have taken a brief writing course, please submit the brief you wrote for the course as your writing sample; if you have not taken a brief writing course, you are welcome to submit any other recent writing sample. Do not include any samples written during a judicial internship if your Judge edited the writing sample in any way.) RESUME (Submit a résumé with your application.) OTHER TIME COMMITMENTS (Please list all major time commitments or travel commitments that might affect your ability to prepare a brief or participate as an oral advocate on a team.) Response:

ACKNOWLEGDEMENT I understand and agree to the following if I am selected to compete on an interscholastic team: 1. I may not be a member of any other intramural or interscholastic advocacy team with conflicting practice or competition dates/times. 2. I understand that I may be required at times to practice as much as three or more nights a week and on some weekends. I understand that failure to attend practice, chronic tardiness, or chronic lack of preparation for practice may result in my disqualification from the team, which could subject me to sanctions by the Board of Advocates. I understand that voluntary withdrawal from the team will subject me to sanctions by the Board of Advocates, unless the coach releases me from the commitment in writing. 3. I understand that each team’s coach has the discretion to select the members of the team and assign roles within the team, and I agree to accept the coach’s decision. 4. I understand that my role on the team may be that of an alternate and not an advocate, and I am willing to participate fully on the team in that role. I understand that failure to participate fully on the team in the role to which I am assigned will result in my disqualification from the team and may subject me to sanctions by the Board of Advocates. 5. I agree to sign all forms required by UTLaw for travel, including an acknowledgement of travel policies, a release and indemnification agreement, proof of health insurance, and a travel release form. Signature______________________________________ Date________________________________

2015 Giles S. Rich Memorial Moot Court Problem This case involves an appeal from a decision from the United States District Court for the

Inventors Sylvester Gatto and Azrael LeChat filed suit against Katze Corporation, alleging

device infringes their US Patent 8,405,554 under 35 U.S.C. § 271(a).

The District Court held a Markman

patent, and the parties stipulated to non-

Gatto -

Pursuant to 28 U.S.C. §§ 1291 & 1295, Gatto and LeChat filed this appeal in the United

States Co

claim construction as well as the verdict of anticipation. The appeal was docketed as

Appeal No. 14-9999. On appeal the parties stipulated to arguing only two issues: 1) the

proper construction of claim 2, and 2) the public availability status of the KOT printed

publication.

Record Facts The record on appeal is confined to the following facts;; any fact not recited below is

without support except where clearly well-known universal facts may be judicially

noticed. Technological background

1. A new condition is devastating the cat population: Feline Hyperactive Internet Social

but it is clear that the disease starts with cat exposure to online social media and

image/video sharing, leading to months of highly variable psychological states, declining

overall health, and ultimately cat death. Until recently, no one knew how to treat the

problem in symptomatic cats.

2. In 2011, researchers Dr. Sylvester Gatto and Dr. Azrael LeChat made a breakthrough in

identifying changes in cat behavior that could be targeted for therapy before the full

onset of Feline HISS. The change is in the gait of the cats. Healthy cats maintain an

alert, even gait, but cats progressing to Feline HISS tend to walk erratically and in a

highly expressive, even comical manner, especially when exposed to a camera or video

recording device. These changes in gait can be corrected early, avoiding progression of

Feline HISS, by using a special cat treadmill including a uniquely-designed wobbler belt

that alters walking surface during operation. Specifically, Gatto and LeChat discovered

that a wobbler belt with a continuous surface that moves with multiple, smooth rises with

1-2-1-3 relative magnitudes treats Feline HISS when walked by a cat. For example, for

a taller cat, a series of 2-inch, 4-inch, 2-inch, and 6-inch rises between troughs in a

walking surface was found to cure Feline HISS. It is not understood why the 1-2-1-3

relative series of rises cures Feline HISS, but scientists hypothesize that the movement

mimics pre-Internet cat behavior.

3. Gatto and LeChat designed a treadmill with a wobbler belt that would achieve the 1-2-1-

3 movement by using a series of bumps on the underside of the belt. They filed a non-

provisional utility patent application on the treadmill in August 2011, which issued in

n the

1. An apparatus for treating Feline Hyperactive Internet Social Syndrome, comprising:

a plurality of support rollers;; and a belt coupled with the support rollers, wherein the belt includes a first side and a second side, wherein the first side faces away from the rollers and includes a walking surface, and wherein the second side faces toward the rollers and includes a plurality of bumps in a continuous and repeating 1-2-1-3 relative magnitude vertical sequence.

2. The apparatus of claim 1, further comprising: a motor;; and an anti-slip roller connected to the motor and the belt so that the second side moves with a surface of the anti-slip roller contacted by the second side.

4.

The inventors have discovered a treatment for the problem of Feline Hyperactive pet

cats as exposure to Internet social media and related technology increases. Specifically, by walking a subject feline over a surface with variable vertical offsets for several minutes, the symptoms and ultimate fatality associated with Feline HISS are reduced and even entirely prevented with rigorous treatment. The inventors have discovered a specific vertical rise sequence with relative heights of 1-2-1-3 in repeated succession without interruption achieves this treatment. To provide this therapeutic regimen, the inventors have created a treadmill that creates a continuous, uninterrupted sequence of vertical rises in a walkable path to treat affected felines. FIG. 1 is an illustration of the treadmill for treating Feline HISS.

5. Figure 1 illustrates the present invention - a treadmill embodiment that treats feline HISS. As shown in Figure 1, the treadmill 100 uses a belt 110 that runs around a front roller 140 and a back anti-slip roller 130. As rollers 140 and 130 rotate under the power of motor 120, belt 110 scrolls between the two, operating as a treadmill. A top of belt 110 is a walking surface for an animal, like a cat 10 being treated for Feline HISS. The underside of belt 110 includes several spaced bumps 111 with desired magnitudes. For example, bumps 111 may be in a 1-2-1-3 magnitude sequence from bump 111b, to 111c, to 111b, to 111a, respectively. In one example, bumps 111b may have a radius of 2 inches, bump 111c may have a radius of 4 inches, and bump 111a may have a radius of 6 inches, so as to produce a relative 1-2-1-3 magnitude vertical sequence as bumps 111 pass over support rollers 150. Of course, other specific magnitudes may be used based on overall animal and treadmill size. Similarly, any structure or device for creating a 1-2-1-3 magnitude vertical rise, such as springs, transducers, moving support rollers 150, etc. can be used in creating the 1-2-1-3 magnitude vertical rise of treadmill 100. As further shown in Figure 1, belt 110 secures to an anti-slip roller 130. Such a rigid connection ensures energy and motion from motor 120 are fully transmitted via anti-slip roller 130 to belt 110 without slipping. The connection also ensures belt 110 moves steadily and without jerking or sudden change in speed, which can cause injury or interrupt the necessary sequential rising and falling of the belt 110 and bumps 111 over support rollers 150. Anti-slip roller 130 uses a plurality of pegs 131 that mate with matching holes 132 in an underside of belt 110 so that belt 110 moves exactly with anti-slip roller 130 as it rotates during treadmill operation. In this way, forward progression and vertical movement of belt 110 can be achieved so as to treat Feline HISS in cat 10 walking on the treadmill 100.

6.

Several examples having been described, it is understood that routine variations and obvious improvements of these examples do not depart from the scope of the present invention. Rather, everything disclosed herein is an example of subject matter falling within the following claims that define the scope of the present invention.

7. The exact same language of the closing paragraph of

paragraphs of over 8,700 other US patents across nearly all technology areas.

8.

anticipated by an earlier patent to Snowball 1, which disclosed a pet treadmill with a

variable vertical walking surface connected to a motorized roller having a mechanical

zipper device that prevented the belt from moving relative to the roller by interlocking

teeth on the belt and roller. The Examiner reasoned that Snowball 1 disclosed all

aspects of original claims 1 and 2. The Examiner further cited as relevant, but did not

apply, a different patent to Snowball 2, which disclosed a similar treadmill as Snowball

1, but used a magnetic belt and magnetic roller to keep the two together during

operation. In response to the rejection over Snowball 1, Gatto and LeChat amended

claim 1 in the following manner:

1. (Currently Amended) An apparatus for treating Feline Hyperactive Internet Social Syndrome, comprising:

a plurality of support rollers;; and a belt coupled with the support rollers, wherein the belt includes a first side

and a second side, wherein the first side faces away from the rollers and includes a walking surface, and wherein the second side faces toward the rollers and includes a plurality of bumps in a continuous and repeating 1-2-1-3 relative magnitude vertical sequence.

9. Claim 2 remained in its original form. With these amendments, Gatto and LeChat

argued that Snowball 1 failed to disclose the 1-2-1-3 vertical bump magnitude amended

-

Examiner allowed claims 1 and 2 of the

-2-1-3 magnitude bumps recited in

claim 1.

10. In September 2013, a third party veterinary group called NYAN filed an Inter Partes

disclosed a belt with adjustable heights using an electro-mechanical actuator on the belt

that created bumps on the belt to treat a number of disorders affecting quadruped gait.

The NYAN publication also disclosed use of a rubberized rear roller to prevent belt

slipping through increased friction.

11. The USPTO initiated an IP

publication, finding a reasonable likelihood that NYAN would succeed in showing these

claims to be unpatentable.

12. However, in a written decision issued 1 year later in September 2014, the USPTO

conf

stated in relevant part:

The NYAN publication discloses a motorized treadmill for cats having a plurality of rollers and a belt with two sides that has a variable vertical sequence and an anti-slip roller. The NYAN publication enables a person skilled in the art to create a 1-2-1-3 vertical rise sequence in its treadmill by adjusting its belt actuators to form bumps of an appropriate size. . . . Under the evidence of unexpected results of record, however, the recited 1-2-1-3 relative vertical magnitude - while possible with the NYAN treadmill - is not specifically indicated or sufficiently motivated by the NYAN treadmill or other permissible sources to render the same obvious under 35 U.S.C. § 103(a). . . .Therefore, Petitioner has not shown, by a preponderance of the evidence, that claims would have been obvious over the NYAN publication.

shown to be unpatentable.

The KOT Article

13.

prior art databases In a commercial database called

Kottur, Maru

that was directed to a treadmill used in physical therapy for mammals. The KOT article

disclosed a 1-2-1-3 relative vertical rise created by bumps under the treadmill walking

surfa

14. The Kottur database included a notice that users had to purchase before downloading

articles, and Maru marked the KOT article for future purchase and download. Several

patent application for filing, Maru sought and was

unable to locate the KOT article in the Kottur database. Mr. Maru contacted the Kottur

database owner to inquire about the reference, and the owner stated that the KOT

paper had been inadvertently added to the database;; KOT had recently demanded that

the article be removed from the database and Kottur complied. Kottur has since gone

out of business.

15. Maru contacted KOT directly for a copy of the reference three times, but got no

response. Maru searched other databases and the Internet but could not otherwise find

without the KOT publication, and notified the Examiner of its believed existence but

inability to submit the same. The ROLLcat Dispute

16. In September 2013, competitor Katze offered for sale a treadmill with a wobbling

surface on the underside of the belt with a 1-2-1-3 magnitude rise pattern, called the

ROLLcat, which was fairly successful in treating Feline HISS. While the ROLLcat used

ROLLcat used a different type of roller than that

Specifically, ROLLcats use a roller with slight surface concavities into which top portions

of the belt bumps partially extend if aligned. The roller is covered with a proprietary

ditional surface area from

the concavities increase friction and adhesion between the roller and belt, allowing only

substantially adheres the roller and belt even after 12,000 of cycles of engagement and

coating begins to fail, and significant belt-roller slipping occurs because the roller

concavities are insufficient to prevent slippage of the belt. Katze has field service

promotional diagram of the ROLLcat was introduced in evidence below:

17. After sending cease and desist letters, Gatto and LeChat filed a patent infringement

lawsuit in the District Court. Katze argued noninfringement of claim 2 because the

- ted

invalidity of claim 1 as anticipated over the KOT publication.

18. At a preliminary Markman hearing, the parties submitted dueling expert testimony as to

-

intrinsic ev

following expert testimony of Dr. Heathcliff Garfield, a Ph.D. in mechanical engineering

with 15 years of experience designing treadmills and exercise equipment for human

use:

P Cou-

Garfield: Anti-slip rollers are commonly-used rollers that instead of

providing only support for a belt or walking surface -- like, see, a support roller is usually just a bare metal bar that rotates with and holds up the belt.

But anti-slip rollers keep the belt in sync with any motor or other controls. -slips basically prevent the belt from

slipping or jerking so that you have a safe, even progression of movement and have true belt speed in accordance with your controls. This also reduces heat and undue wear.

es the

anti-slip roller of claim 2 include?

-and-hole intermesh for an anti-slip roller. The belt has several rises on it where

nger pegs keep a lock on the belt in these challenges.

But any anti-slip mechanism would work there when adjusted for the bumps, like a capture or gripping-type interlock between belt and roller, a matching tread between belt and roller, I mean, uh . . .[inaudible]

I suppose even a magnetic or adhesive bond between the two. Several different designs are out there to prevent slipping in treadmill belts.

-slip roller what,

if anything, would be outside that coverage? Garfield: You could put an anti-slip device somewhere else, like not on the

roller. Some treadmills I know use a special latch and sensor along the belt and

matches with the controls. So a device that used only support rollers without any specific anti- -slip roller.

P Counsel: How much slipping typically occurs when using an anti-slip

roller? Garfield: Well any treadmill can slip under the right conditions, even ones

with really rigid mechanical interlocking anti-slip rollers. Like, a really sudden acceleration . . .uh, any force against the belt can throw off even a mechanical sync like between zipper teeth. You -slip rollers will typically cut back on most slipping and smooth it out during ordinary usage.

there is always some small slipping, some potential there no matter what you use.

19. Katze introduced the following expert testimony of Dr. Grumpy Long, a Ph.D. in

veterinary biomechanical engineering and a renowned researcher on Feline HISS:

, what is the purpose, or maybe the importance, of the anti-slip roller it uses?

Long: The genius and heart of the Gatto-LeChat treadmill is the 1-2-1-3

understand, this sequence of vertical movement, in walking succession by a feline subject, is really therapeutic against HISS. And the 1-2-1-3 up-and-down needs to be walkable and repetitive by the animal.

The anti-slip roller is required to make sure the critical 1-2-1-3 sequence is presented in even, continuous order to the animal. There can be no lag or gaps or jerking between the sequence for animal safety. The anti-slip roller sort of lets us get to the heart of the invention here and gets the 1-2-1-3 sequence evenly presented to the animal even when the belt is not smooth underneath.

D Counsel: Does the invention work if the belt slips? Long: No. Slippage in a treadmill is dangerous for any user, human or

animal. But here especially the 1-2-1-3 sequence might be interrupted by slipping, which would probably undermine the therapeutic value of that sequence for HISS.

D Counsel: So what is required for the anti-slip roller recited in claim 2

here?

-2-1-3 bumps on the belt that are going to interfere with the roller-belt connection.

this problem. An anti-slip roller has to use such rigid mechanical meshing to cut back on all slipping. A regular support roller or something without the secure and full, uh, ...mating really, between the roller and belt here would not be an anti-slip roller for the purposes of this treadmill.

----- [on cross-examination]

sufficient strength on the roller work as an anti-slip roller? Long: Maybe but not really. Well, let me say I see two problems. I, uh, can

kind of see two different things happening with that.

First is that an adhesive alone, even strong ones slathered over every nook and cranny, will allow more slipping than a mechanical mating between roller and belt. That is, an adhesive usually permits some elastic or plastic

bumps here, an adhesive is going to allow some slight slips or slow elastic drift between belt and roller, and I would have real worries about that impacting the 1-2-1-3 sequence.

Second is that nearly all adhesives lose adhesion over cycles of

the belt continuously meets and separates from the roller. You know, dust gets in there, the adhesive chemical properties fade. . . So an adhesive would not be a

P Counsel: But a roller with a properly-designed adhesive would still be

called an anti-slip roller in the treadmill, yes or no?

.

----- [on redirect] D Counsel: Please finish your thought from cross-examination. Does an

anti- 54 patent include a roller using an adhesive? Long: Right, thank you. No. I would have real concerns with any system

the 1-2-1-3 sequence repeated that is so important heverything to make sure you get that in a way that a cat can safely walk it over and over. An adhesive alone, even, a great one, would, you know, open up real risks of slipping or drift with the bumps here that might interfere and over time.

-belt mating with a peg and hole system. As I understand these circumstances,

-slip roller is.

20. As to the invalidity of claim 1, Katze introduced the KOT article. The parties stipulated

each and every element of claim 1. The parties, however, disputed that KOT was a

p

21. Katze offered the following testimony of patent attorney Mr. Bastet Maru to show public

availability of the KOT reference.

D Counsel: Mr. Maru, what is this?

Maru: This patent. The attachment is a letter that I submitted with the IDS. The letter describes how I found the KOT reference and that I was unable to download the reference some weeks later when I was preparing the application for filing.

D Counsel: What did your letter state? Maru: The letter informed the Examiner I was aware of my obligations to

the Office to disclose references that I know may be material to the claims. I located the KOT article while searching the Kottur database. This reference appeared relevant to the application because of its 1-2-1-3 bump arrangement, which I recall being similar to the disclosed invention. I was unsure of how exactly the KOT reference disclosed the claimed arrangement;; I only saw the download page with its abstract. I did not download the full KOT article, but marked it for later download. When I attempted to download the KOT article prior to filing the application, it was not available. The Kottur database owner said that the KOT reference had been removed.

D Counsel: I am handing the KOT reference to Mr. Maru. Mr. Maru, would you please review the KOT reference.

Maru: Yes, this looks familiar. How did you get it?

D Counsel: Mr. Maru, let me ask the questions.

Maru: [inaudible] . . . Okay.

Mr. Maru?

Maru: I did indeed contact the Kottur database owner, just like I said in the letter to the Examiner.

D Counsel: Let me

did you, Mr. Maru?

Mr. Maru: I did so. Or I should say, I made three attempts at directly contacting KOT through their public email address, but no one got back to me from KOT.

I also searched other databases and the Internet and an internet archive for the KOT article and other KOT contacts, but to no avail. I could not find the KOT article. . . positively, could not find this reference.

22. Katze further introduced the following testimony of Mr. Khernel Mao, the engineer who

procured the KOT article for Katze following the initiation of the infringement suit:

D Counsel: How did you obtain the KOT article?

Mao: I contacted KOT through their public email.

D Counsel: How many times did you contact KOT before they produced the KOT article?

Mao: Only once, and they produced the KOT paper a few days after the initial contact, about a week.


patent had issued? Mao: Yes. I did not contact KOT until well after the start of this trial. P Counsel: What were the terms of your receipt of the KOT article from

KOT? Mao: It cost $65,000. KOT granted rights to the KOT article solely for use

in this case as an exhibit. Other use or reproduction of the KOT article was prohibited. The exhibit states the copyright and limitations at the top.

23. Katze further introduced the following testimony of Ms. Kitty Goyang-i, the managing

principal of the KOT laboratory and an author of the KOT article.

D Counsel: Ms. Goyang-i, what is this exhibit?

Goyang-i: This is an article on a treadmill that we at KOT developed. I wrote this article.

D Counsel: Let the record show that Ms. Goyang-i has identified the KOT article. When did this article come into existence?

Goyang-i: I wrote this in early 2008.

D Counsel: Has KOT ever received a request for this article?

Goyang-i: Yes. I received a request from a Mr. Mao from you . . .from Katze.

D Counsel : How did you respond?

Goyang-i: I gave Mr. Mao the price and, upon payment, sent a copy of the article to Mr. Mao.

D Counsel: Is this typically how KOT handles requests? How were other requests to KOT for this article handled?

Goyang-i: Yes, the article was technology for license/sale. Any inquiry would have been met with that offer. But there were no other inquiries.

D Counsel: None? Are you aware that this article was indexed or available in the Kottur commercial database?

Goyang- D Counsel: How did this KOT article get into the Kottur database? Goyang-

who did it, and we have no idea how it got into or how long it stayed in the Kottur database. Kottur was a repository for earlier KOT publications, but that ongoing relationship ended well before I wrote this KOT article. Kottur is defunct now.

D Counsel: But you found out that the reference was in the Kottur database?

Goyang-i: Yes. KOT got quarterly statements and payments for hits and downloads from Kottur for our old articles transacted through the Kottur database. KOT received a quarterly notice of payment from Kottur for this article, or something like that. This was back in 2011. We indicated that this article was never part of our repository agreement and sent a demand letter to Kottur. They removed all references to the article. D Counsel: So what does KOT do with articles like this KOT article. . .

Goyang-i: We regard this article as a trade secret, or at least as proprietary information for sale. We use it in ongoing research, and, if a third-party wants a license or wants the paper, we entertain offers to give it to them.

D Counsel: How does KOT let people know of this availability? Goyang-i: KOT attends trade shows and gives presentations to

conferences and interested parties to advertise directly to relevant parties about specific tech or articles for purchase or license.

D Counsel: Have you given any presentations on the subject matter in the

KOT reference? Goyang-i: Yes. In 2008, three presentations in Hungary, three

presentations in the United Kingdom, and two in China, and in 2009 one presentation each in Katmandu, Muscat, Kolkata, and Catalonia.

D Counsel: How large were these conferences? Who attends? Goyang-i: It varied. But at least 100 people at these conferences, some as

large as 500. When I presented, it was usually to a group of at least 80 people in a large conference room. Over a dozen attendees approached KOT displays during each of these conferences. The conferences were specifically targeted for content that matched papers we were trying to sell, so these were all exercise equipment and physical therapy industry people in attendance where the KOT article was advertised as available.

D Counsel: What exactly was disclosed in these presentations and literature displays?

Goyang-i: The presentations just generally talked about research in disease states that could be treated with physical therapy. The literature and exhibition materials advertised specific developments. Several different developments were typically advertised.

For the stuff directed to the treadmill, the article was advertised as available for purchase or license . . . we indicated we had developed a treadmill with potential therapeutic properties, the tech was available for license, and we had a detailed white paper available for purchase - this KOT article. Mostly some brochures that we developed. Nothing like the KOT article as far as detail. The brochures had a fuzzy picture of the treadmill, and the pricing was wrong in them.

D Counsel: Did you give any presentations in the United States?

Goyang-i: No. We had planned to, at a conference in late August 2009. We had sent the poster boards in advance to the conference, as well as the literature. We had missed the deadline to include the materials in a CD that was supposed to be given to the participants. We did provide a general description on the treadmill article for the program;; that general description was exhibited along with the posters and promo literature.

D Counsel: Did any of these conference presentations or literature include

any information about HISS or the 1-2-1-3 relative bump height of the treadmill?

Goyang-i: No. Details were kept back in the proprietary article;; all these presentations and materials were sort of advertising for licensing or purchase of those details in the KOT article. We just said that we had had some exciting discoveries in treadmill use and that we had a unique treadmill that showed a lot of promise in tests. There was a fuzzy picture of the treadmill in our section of the program, but it did not talk about cats or show the 1-2-1-3 relative bump height at all like the actual KOT article.

D Counsel: How many parties contacted KOT about this article or the subject matter in it in response to this advertising?

Goyang-i: Two different Americans approached us abroad, but those were

preliminary talks motivated by the pricing errors in the brochure. No one approached us about the KOT article specifically, aside from Mr. Mao we talked about earlier.


P Counsel: Ms. Goyang-i, I have a question. You mentioned that Mr. Mao had contacted you for the KOT reference, but you said that no one else contacted you for the KOT reference. Are you familiar with a Mr. Maru?

Goyang-i: Yes, a guy n

through that email inbox later, I saw three emails, with subject lines that seemed to be getting pretty desperate, so I opened them. I wrote to Maru with the same general promotional stuff from the conferences and let him know the full KOT article was available for purchase.

But the email that I sent bounced back. The message said something like, trying again. I figured if the guy really wanted the

reference, he would contact me again. P Counsel: How many other requests ended up in this junk inbox?

Goyang-i: None that I know of, but I have no way of knowing for certain.

That inbox always has thousands of junk and spam emails in it. I only noticed the Maru emails because of the repeated, specific subjects. The inbox has since been purged without record several times.

P Counsel: So overall, in the context of all other KOT tech and article

holdings, how would you describe the interest in this KOT article on the 1-2-1-3 treadmill?

Goyang-i: It was disappointing. We had publicized this tech back in 2008

along with all our other holdings as I described, and nobody seemed interested or gave any real follow-up outside of the two Americans, Maru, and Mao. We had given it up by 2010. Maybe if we had been able to get on this HISS phenomenon there would have been more interest. As I mentioned, we never delivered the KOT article until Mr. Mao recently.

----- [on redirect]

D Counsel: So if Mr. Maru, or any other party, had asked about a KOT article about a treadmill with a 1-2-1-3 raised sequence back in 2011 or 2008 when you were publicizing it, would you have confirmed its existence and offered to let them purchase the article?

Goyang-i: Well. . . KOT would not have confirmed every technical detail,

just enough to verify a match. And yes, we would have offered the paper or other information for sale, just like we did for Mr. Mao. And had I established contact with Mr. Maru or talks gone further with the American inquiries from our presentations, the same type of offer would have been made.

24. Gatto and LeChat finally offered business records from the operator of the defunct

Kottur database. The records includ

was indexed and accessed in the Kottur database. The index page showed the KOT

article was accessible through the Kottur Internet-accessible search engine from at least

since December 2008 through December 2011, when its search index was deleted. The

KOT article was indexed by author and company name, by date received, and by

subject matter, including keywords -

showed approximately 850 views on

a user clicks through the search results. The index page did not contain information

about locations or unique users within these views, and it was possible that the views

included internal uses, bot crawls, and other non-human accesses. Further, the

business records were unable to verify if the KOT article had ever actually been

downloaded from Kottur.

Conclusions of Law Markman

Hearing and denial of JNOV following trial.

-Gatto and LeChat argue for a broad construction of the term, inclusive of any roller that includes a mechanism that non-negligibly reduces belt-roller slippage. Defendant Katze argues for a narrower of the term, one which requires a roller with a rigid mechanical interlock that prevents all relative belt-roller movement when engaged.

-slip

-roller that rigidly mates into a belt so there is no relative movement between the roller

adhesive that allows some belt-roller slippage without a rigid mechanical interlock. Plaintiffs - -

uses the term or how the person of ordinary skill in the art would understand it. See Phillips v. AWH Corp., 415 F.3d 1303, 1317-specification discloses a single treadmill using only a rigid, peg-and-hole mating in its self- -

- is no relative movement between the roller and belt when so mated. See Retractable Techs. Inc. v. Becton, Dickinson and Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). Contrary to Gatto

e claims under Liebel-Flarsheim v. Medrad

The prosecution history does not require any broader construction. See, e.g., Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1347-48 (Fed. Cir. 2001). Even if some references cited in the file wrapper have other types of rollersstandard, so claim scope determined through litigation is naturally narrower than the scope of some references considered by the USPTO. The remaining extrinsic expert testimony is due only limited weight under Phillips and does not trump the intrinsic evidence. See Inpro Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1357

the invention here and preventing any slipping between belt and roller through mechanical locking is the heart of the invention here. See Arlington Industries, Inc. v. Bridgeport Fittings, 632 F.3d 1246, 1257 (Fed. Cir. 2011) (Lourie, J. dissenting).

e KOT

Under cases like SRI International v. Internet Security Systems, 511 F.3d 1186 (Fed. Cir. 2008) and In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004), skilled searchers would have been able to find the KOT article at least since 2008. The KOT

reference had been indexed in the public Kottur database since 2008, which would have directed searchers to KOT to acquire the article, just as it did for Maru. The Kottur indexes, although not directly related to cat treatments, were directed to treadmills, which is what the claimed invention is. Availability of the KOT reference had been known and published world-wide since KOT began its presentations in several countries. The advertising materials with a picture of the treadmill and a general description of the treadmill provided would direct reasonable searchers to KOT to acquire the KOT article. Therefore, the KOT reference is a printed publication, and it anticipates claim 1.

2015 Giles S. Rich Memorial Moot Court Problem ERRATA SHEET

The 2015 Problem has been amended to correct the three errors

bulleted below. While these changes are not seen to materially

affect issues and arguments presented by the Problem, competitors

should brief and argue the Problem as amended.

Last updated December 5, 2014.

Paragraph 8 is amended so that claim 1 from the prosecution history matches claim 1 as issued. (Paragraph 3, containing claim

1 as issued, remains unchanged). Changed areas are italicized:

8.

anticipated by an earlier patent to Snowball 1, which disclosed a pet treadmill with a

variable vertical walking surface connected to a motorized roller having a mechanical

zipper device that prevented the belt from moving relative to the roller by interlocking

teeth on the belt and roller. The Examiner reasoned that Snowball 1 disclosed all

aspects of original claims 1 and 2. The Examiner further cited as relevant, but did not

apply, a different patent to Snowball 2, which disclosed a similar treadmill as Snowball

1, but used a magnetic belt and magnetic roller to keep the two together during

operation. In response to the rejection over Snowball 1, Gatto and LeChat amended

claim 1 in the following manner:

1. (Currently Amended) An apparatus for treating Feline Hyperactive Internet Social Syndrome, comprising:

a plurality of support rollers;; and a belt coupled with the support rollers, wherein the belt includes a first side

and a second side, wherein the first side faces away from the rollers and includes a walking surface, and wherein the second side faces toward the rollers and includes a plurality of bumps in a continuous and repeating 1-2-1-3 relative magnitude vertical sequence.

Paragraph 16 is amended to correct a typographical error in the second sentence; the image associated with Paragraph 16 is

unchanged. Changed areas are italicized: The ROLLcat Dispute

16. In September 2013, competitor Katze offered for sale a treadmill with a wobbling

surface on the underside of the belt with a 1-2-1-3 magnitude rise pattern, called the

ROLLcat, which was fairly successful in treating Feline HISS. While the ROLLcat used

the ROLLcat used a different type of roller than that

Specifically, ROLLcats use a roller with slight surface concavities into which top portions

of the belt bumps partially extend if aligned. The roller is covered with a proprietary

the concavities increase friction and adhesion between the roller and belt, allowing only

substantially adheres the roller and belt even after 12,000 of cycles of engagement and

coating begins to fail, and significant belt-roller slipping occurs because the roller

concavities are insufficient to prevent slippage of the belt. Katze has field service

promotional diagram of the ROLLcat was introduced in evidence below:

The final testimonial exchange of Paragraph 23 is amended to correct the witness name; the remainder of Paragraph 23 is

unchanged. The same witness, Goyang-‐‑i, is testifying throughout

Paragraph 23. Changed areas are italicized:

Goyang-i: Well. . . KOT would not have confirmed every technical detail, just enough to verify a match. And yes, we would have offered the paper or other information for sale, just like we did for Mr. Mao. And had I established contact with Mr. Maru or talks gone further with the American inquiries from our presentations, the same type of offer would have been made.

Appeal No. 14-9999

IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

SYLVESTER GATTO and AZRAEL LECHAT

Plaintiffs-Appellants

v.

KATZE CORPORATION

Defendant-Appellee

Appeal from the United States District Court for the District of

Katifornia Judge Felix Bigglesworth

BRIEF FOR PLAINTIFFS-APPELLANTS

Attorneys for Appellants Marta Chlistunoff Jun Zheng

i

CERTIFICATE OF INTEREST

Counsel for Plaintiffs-Appellants Sylvester Gatto and Azrael

LeChat certify the following:

1. The full names of every party or amicus represented by us

are:

Sylvester Gatto and Azrael LeChat.

2. The names of the real parties in interest represented by us

are:

Sylvester Gatto and Azrael LeChat.

3. All parent corporations and any publicly held companies that

own 10 percent or more of the stock of the party or amicus curiae

represented by us are:

N/A.

4. The names of all law firms and the partners or associates

that appeared for the party or amicus now represented by us in the

trial court or agency, or are expected to appear in this court are:

Marta Chlistunoff; and

Jun Zheng.

i

TABLE OF CONTENTS

Certificate of Interest........................................ i

Table of Contents.............................................. i

Table of Authorities......................................... iii

Statement of Jurisdiction...................................... 1

Statement of the Issues........................................ 1

Statement of the Case.......................................... 1

Statement of the Facts......................................... 2

A. The Patent-in-Suit ..................................... 2

B. The Claim Construction Dispute ......................... 3

C. The KOT Article ........................................ 5

Summary of the Argument........................................ 7

Standards of Review............................................ 8

Argument....................................................... 9

I. THE DISTRICT COURT ERRED IN ITS CONSTRUCTION OF ‘‘ANTI-SLIP

ROLLER’’ BECAUSE IT IMPERMISSIBLY READ LIMITATIONS FROM THE

SPECIFICATION INTO CLAIM 2 OF THE ’554 PATENT. ............... 9

A. The specification lacks a sufficiently manifest

disclaimer to justify the district court’s interpretation. 10

B. Neither the prosecution history nor inter partes review

of the ’554 patent demonstrate that Gatto and LeChat intended

to narrow the breadth of the ‘‘anti-slip roller’’ term. .... 13

C. Broad construction of ‘‘anti-slip roller’’ is consistent

with the purposes of the invention as enumerated in the

specification. ............................................ 15

D. Finally, Garfield’s testimony supports an understanding

of ‘‘anti-slip roller’’ which is inclusive of ‘‘any roller

ii

that includes a mechanism that non-negligibly reduces belt--

roller slippage.’’ ......................................... 18

II. THIS COURT SHOULD REVERSE THE DISTRICT COURT’S FINDING OF

INVALIDITY BECAUSE THE RECORD DOES NOT PROVIDE SUFFICIENT

SUPPORT TO SHOW BY CLEAR AND CONVINCING EVIDENCE THAT THE KOT

ARTICLE WAS PUBLICLY AVAILABLE. ............................. 21

A. Katze failed to provide sufficient evidence to show by

clear and convincing evidence that the KOT article was made

publicly available through the Kottur database. ........... 22

B. Likewise, Katze failed to provide sufficient evidence to

show with high probability that the KOT article was made

publicly accessible through the conferences. .............. 25

C. Even if this Court finds that there is sufficient

evidence to show an interested person would have been

successful in reaching KOT for the article, the record

indicates KOT had a reasonable expectation of

confidentiality, making the article generally not available.

26

Conclusion and Relief Requested............................... 29

iii

TABLE OF AUTHORITIES

Cases

Altiris, Inc. v. Symantec Corp., 318 F.3d 1363 (Fed. Cir. 2003) 11

Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296 (Fed.

Cir. 2013) .......................................................................................................................... 14

Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324 (Fed. Cir.

2013) ...................................................................................................................................... 14

Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed.

Cir. 1988) .......................................................................................................................... 24

Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed.

Cir. 2009) ............................................................................................................................ 9

Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed.

Cir. 2005) .......................................................................................................................... 12

Grober v. Mako Prods., 686 F.3d 1335 (Fed. Cir. 2012) ....................... 15

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed.

Cir. 2008) .......................................................................................................................... 16

Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir.

2014) ............................................................................................................................ 9, 10, 11

In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) ....................................... 22, 25

In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) ......................................... 9, 22

Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728 (Fed. Cir.

2002) ........................................................................................................................................ 8

Lemelson v. General Mills, Inc., 958 F.2d 1202 (Fed. Cir. 1992) 13

Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir.

2004) .................................................................................................................................. 9, 11

iv

Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353 (Fed. Cir.

2008) ........................................................................................................................................ 8

Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313 (Fed. Cir. 2005)

.................................................................................................................................................. 17

Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367 (Fed. Cir.

2003) ...................................................................................................................................... 18

Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238 (2011) ....... 9, 21

N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir.

1990) ...................................................................................................................................... 25

Norian Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2004) .... 24

Pall Corp. v. Hemasure Inc., 181 F.3d 1305 (Fed. Cir. 1999) ......... 17

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................. 10, 13

Pragmatus AV, LLC v. Yahoo! Inc., No. C-13-1176 EMC, 2014 WL

1922081 (N.D. Cal. May 13, 2014) ...................................................................... 15

Retractable Tech., Inc. v. Becton, Dickinson and Co., 653 F.3d

1296 (Fed. Cir. 2011) .......................................................................................... 12, 13

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242

F.3d 1337 (Fed. Cir. 2001) .................................................................................... 11

Smith v. Snow, 294 U.S. 1 (1935) ............................................................................ 9

SRAM Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351 (Fed. Cir. 2006) 15

SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed.

Cir. 2008) .......................................................................................................................... 23

Teva Pharms. USA, Inc. v. Sandoz, Inc., No. 13--854 (Jan. 20,

2015) .................................................................................................................................... 8, 9

v

Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365

(Fed. Cir. 2012) ............................................................................................................ 10

Va. Innovation Scis., Inc. v. Samsung Electronics Co., 983 F.

Supp. 2d 713 (E.D. Va. 2014) ............................................................................... 27

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.

1996) ...................................................................................................................................... 18

Statutes

28 U.S.C. § 1295(a)(1) .................................................................................................... 1

28 U.S.C. § 1331 .................................................................................................................. 1

28 U.S.C. § 1338(a) ........................................................................................................... 1

28 U.S.C. § 2107(a) ........................................................................................................... 1

35 U.S.C. § 102(b) ............................................................................................................. 1

35 U.S.C. § 103..................................................................................................................... 4

Rules

Fed. R. Civ. P. 52(a)(6) ............................................................................................... 9

Regulations

37 C.F.R. § 1.111(b)....................................................................................................... 14

1

STATEMENT OF JURISDICTION

The district court had jurisdiction under 28 U.S.C. §§ 1331

and 1338(a) (2012). The appellants timely filed notice of appeal

from the district court’s final judgment consistent with 28 U.S.C.

§ 2107(a) (2011) and Fed. R. App. P. 4(a). This Court has

jurisdiction under 28 U.S.C. § 1295(a)(1) (2012).

STATEMENT OF THE ISSUES

Issue 1: Whether the district court erred in its construction

of ‘‘anti-slip roller’’ by improperly reading limitations from the

specification into the claim?

Issue 2: Whether the district court erred in ruling that the

KOT article was publicly available so as to constitute a printed

publication under 35 U.S.C. § 102(b)?

STATEMENT OF THE CASE

Sylvester Gatto and Azrael LeChat (‘‘Gatto and LeChat’’) filed

suit against Katze Corporation (‘‘Katze’’) alleging Katze’s ROLLcat

device infringed their U.S. Patent No. 8,405,554 (filed August

2011) (‘‘the ’554 patent’’) under 35 U.S.C. § 271(a). After a

Markman hearing, the United States District Court for the District

of Katifornia (‘‘the district court’’) adopted Katze’s proposed

construction of the ‘‘anti-slip roller’’term in claim 2 of the ’554

patent, instead of Gatto and LeChat’s. Consequently, under the

court’s interpretation the parties stipulated that claim 2 was not

infringed by Katze’s ROLLcat device. As to claim 1, the jury found

that the KOT article was publicly available to constitute prior

art under pre-AIA 35 U.S.C. § 102(b) and anticipated claim 1; thus

rendering claim 1 invalid. After trial, the District Court denied

2

Gatto and LeChat’s motion for judgment as a matter of law on

validity of claim 1. Gatto and LeChat now appeal, seeking to

reverse the district court’s construction of the ‘‘anti-slip roller’’

term of claim 2 and the jury verdict of anticipation of claim 1.

STATEMENT OF THE FACTS

A. The Patent-in-Suit

Until 2011, when Gatto and LeChat (‘‘patentees’’ or

‘‘inventors’’) developed their innovative treadmill, Feline

Hyperactive Social Syndrome (‘‘Feline HISS’’) was decimating the

cat population. (R. ¶¶ 1--2). Gatto and LeChat determined that

targeting one particular change in feline behavior----the onset of

an erratic and highly expressive gait----could treat, or even cure

the affliction. (R. ¶¶ 1--2). Pursuant to this discovery, Gatto and

LeChat designed a highly specialized treadmill capable of

correcting the altered gait of an affected cat, which they claimed

in the ’554 patent. (R. ¶ 2).

The ’554 patent discloses a treadmill featuring a ‘‘wobbler

belt.’’ (R. ¶ 3). This belt, and its unique presentation of smooth

rises with 1-2-1-3 relative magnitudes, gives the apparatus

therapeutic capability to treat Feline HISS. (R. ¶¶ 3--4). The two

claims ultimately issuing in the ’554 patent recite:

1. An apparatus for treating Feline Hyperactive Internet Social Syndrome, comprising: a plurality of support rollers; and a belt coupled with the support rollers wherein the belt includes a first side and a second side, wherein the first side faces away from the rollers and includes a walking surface, and wherein the second side faces toward the rollers and includes a plurality of bumps in a continuous and repeating 1-2-1-3 relative magnitude vertical sequence.

3

2. The apparatus of claim 1, further comprising: a motor; and an anti-slip roller connected to the motor and the belt so that the second side moves with a surface of the anti-slip roller contacted by the second side.

(R. ¶ 3).

The ‘‘Summary of the Invention’’ describes a treadmill that

creates a continuous uninterrupted sequence of vertical rises with

relative heights of 1-2-1-3 in repeated succession. (R. ¶ 4).

Figure 1 and its accompanying description illustrate ‘‘a treadmill

embodiment that treats feline HISS’’ and disclose components of

the device. (R ¶ 5). These components include mechanisms for

creation of the 1-2-1-3 sequence and an ‘‘anti-slip roller.’’ (R.

¶ 5). In conclusion, the specification states, ‘‘everything

disclosed . . . is an example of subject matter falling within

the . . . claims that define the scope of the present invention.’’

(R. ¶ 6) (emphasis added).

B. The Claim Construction Dispute

During prosecution, the examiner initially rejected the two

original claims as anticipated by an earlier patent (Snowball 1)

and also cited a second reference (Snowball 2) as relevant. (R. ¶

8). Both references disclosed a pet treadmill with a variable

walking surface and a roller intended to prevent slipping of the

treadmill belt. (R. ¶ 8). While the anti-slip mechanism disclosed

in Snowball 1 featured a mechanical zipper mechanism wherein the

roller and belt contained interlocking teeth, Snowball 2 disclosed

a magnetic roller and belt for the same purpose. (R. ¶ 8). After

the applicants amended claim 1 to include specific language

4

regarding the ‘‘1-2-1-3 relative magnitude vertical sequence,’’

the examiner allowed both claims. (R. ¶ 9). The patent issued in

March 2013. (R. ¶ 3).

In September 2013, the ’554 patent faced and overcame a

challenge under 35 U.S.C. § 103 using the ‘‘NYAN reference’’ during

an Inter Partes Review proceeding (‘‘IPR’’). (R. ¶¶ 10--12). The

USPTO ultimately concluded that although the NYAN reference allowed

a person of skill in the art to create the desired 1-2-1-3 vertical

magnitude rise sequence, it did not sufficiently motivate that

particular sequence. (R. ¶ 12).

After September 2013, the present suit was filed and the

district court conducted a Markman hearing to determine the proper

construction of the claims. (R. ¶ 16). The parties disputed the

meaning of the term ‘‘anti-slip roller’’ and presented dueling

expert testimony on that issue.1 (R. ¶ 17--19). Dr. Heathcliff

Garfield (‘‘Garfield’’), a Ph.D. in mechanical engineering with 15

years of experience in designing treadmills, testified on behalf

of Gatto and LeChat. (R. ¶ 18). Dr. Grumpy Long (‘‘Long’’), whom

the record does not indicate has any experience with treadmills,

testified on behalf of Katze. (R. ¶ 19). Garfield distinguished

‘‘anti-slip rollers’’ from ‘‘support rollers’’ because they ‘‘keep

the belt in sync with any motor or other controls.’’ (R. ¶ 18). He

elaborated that the desired prevention of slipping or jerking can

be accomplished by a wide variety of anti-slip mechanisms including

those exhibiting a ‘‘magnetic or adhesive bond between the [belt

and the roller].’’ (R. ¶ 18). Garfield noted, however, that

1 The record lacks a definition of a person of ordinary skill in the art.

5

slipping is always a possibility, even when the anti-slip mechanism

involves rigid mechanical connection. (R. ¶ 18). Although Katze’s

expert, Long, highlighted the importance of an even and continuous

presentation of the 1-2-1-3 sequence to the subject animal and

argued that absolute prevention of slipping was ideal, he affirmed

that ‘‘a roller with a properly-designed adhesive would still be

called an anti-slip roller in the treadmill.’’ (R. ¶ 19).

C. The KOT Article

In early 2008, KOT authored an article (‘‘the KOT article’’)

disclosing a treadmill for physical therapy of mammals, which

exhibited a 1-2-1-3 vertical magnitude rise sequence. (R. ¶¶ 20,

23). KOT regarded this article as proprietary information for sale.

(R. ¶ 23). Therefore, although some brochures about the KOT article

were distributed at tradeshows and conferences and posters were

displayed at a conference in 2009, KOT held back key information

such as the 1-2-1-3 bump arrangement. (R. ¶ 23). In addition, the

brochures and posters did not even talk about cats----the subject of

the KOT article and the ’554 patent. (R. ¶ 23). Rather, the

brochures included only a fuzzy picture of the treadmill and

advertised the KOT article as available for purchase or license.

(R. ¶ 23). Although at least 100 people interested in exercise

equipment and physical therapy attended each of those conferences,

no one approached KOT about the article except for two persons who

pointed out pricing errors in the brochures. (R. ¶ 23).

From 2008 to 2011 the KOT article was listed on a commercial

database called Kottur. (R. ¶ 24). Although Kottur previously

served as a repository for the company’s articles, the KOT article

6

was inadvertently included on the database. (R. ¶ 23). While users

had access to a brief abstract of the article, they could not read

or download the full text without purchasing it. (R. ¶¶ 14, 21).

Moreover, no evidence shows the KOT article had ever actually been

downloaded from Kottur. (R. ¶ 24). Indeed, during the whole three

years of posting, the article’s download page had only

approximately 850 views. (R. ¶ 24). The record lacks evidence that

activities of interested persons resulted in any of these views----

as opposed to internal views, bot crawls and other non-human

activities. (R. ¶ 24).

Mr. Bastet Maru (‘‘Maru’’), Gatto and LeChat’s patent attorney,

first located the abstract for the KOT article----but not the article

itself----during prosecution. (R. ¶ 14). The abstract disclosed a

general description of a treadmill with a 1-2-1-3 vertical

magnitude rise sequence, but the record does not indicate that the

abstract disclosed every limitation of claim 1 or 2. (R. ¶ 14).

Maru emailed KOT three times and never received a reply. (R. ¶ 21).

As it turns out, Maru’s emails ended up in KOT’s corporate junk

email inbox. (R. ¶ 23). When KOT’s general manager, Ms. Kitty

Goyang-i (‘‘Goyang-i’’), serendipitously found Maru’s emails she

responded with KOT’s general promotional materials and offered to

sell the article to Maru. (R. ¶ 23). The record does not indicate

that Maru ever received Goyang-i’s email. (R. ¶¶ 14, 23).

In fact, the record does not show that anyone actually

received the KOT article before this lawsuit was filed. (R. ¶ 23).

As disclosed in the record, Mr. Khernel Mao (‘‘Mao’’), Katze’s

engineer, became the first person to obtain the KOT article. (R.

7

¶¶ 22--23). KOT charged Mao $65,000 for access and granted him only

limited rights to use the reference as an exhibit in this case.

(R. ¶ 22). ‘‘Other use or reproduction of the KOT article was

prohibited.’’ (R. ¶ 22).

SUMMARY OF THE ARGUMENT

The district court erred in construing the ‘‘anti-slip roller’’

term of the ’554 patent to require rigid belt--roller connection.

Not only is there a dearth of evidence in the specification,

prosecution history, and IPR showing that Gatto and LeChat intended

to limit the scope of their claim, but a broad construction would

also accomplish the purposes of the invention as enumerated in the

specification. Even if this Court resorts to expert testimony in

its construction of the claims, the district court committed clear

error in determining that Long’s testimony was owed more weight

than Garfield’s because Long has no expertise in the field of

invention. As a result this Court should adopt the broad

construction of ‘‘anti-slip roller’’ endorsed by Garfield.

The district court also erred in determining that the KOT

article was publicly available and thus constituted a printed

publication. The record is devoid of evidence showing that the

article was reasonably publicly accessible through Kottur, or that

the brochures and posters would have meaningfully directed

interested persons to contact KOT----or, that even if they did

contact KOT they would have successfully obtained the full article.

Moreover, restriction on obtaining the article and on its use

suggest that KOT enjoyed the expectation that the article would be

treated as confidential, making the article not publicly available.

8

Consequently this Court should reverse the district court’s

narrow interpretation of the ‘‘anti-slip roller’’ term of claim 2

and its determination that the KOT article was a printed

publication and thus anticipated claim 1.

STANDARDS OF REVIEW

This Court reviews a district court’s decision on a motion

for JMOL/JNOV without deference. Litecubes, LLC v. N. Light Prods.,

Inc., 523 F.3d 1353, 1369 (Fed. Cir. 2008) (citations omitted).

JMOL is required if ‘‘the jury’s factual findings were not

supported by substantial evidence or that the facts were not

sufficient to support the conclusions necessarily drawn by the

jury on the way to its verdict.’’ Id. ‘‘Substantial evidence is

such relevant evidence from the record taken as a whole as might

be accepted by a reasonable mind as adequate to support the finding

under review.’’ Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d

728, 736 (Fed. Cir. 2002).

Claim construction is a question of law and this Court shall

‘‘review . . . the district court’s ultimate interpretation of the

patent claims [de novo].’’ Teva Pharms. USA, Inc. v. Sandoz, Inc.,

No. 13--854, slip op. at 9 (Jan. 20, 2015). Nevertheless, the

Supreme Court recognized in Teva that claim construction may

require a district court to make subsidiary factual findings. Id.

at 12. This is particularly likely where a court turns to extrinsic

evidence2 in construing the claims----e.g. where a court considers

2 The Supreme Court reaffirmed that any determinations made by a district court regarding the intrinsic evidence----claim terms, specification, and prosecution history----are legal in nature and will continue to be reviewed de novo. Teva, slip op. at 11--12.

9

and weighs expert testimony. Id. Such subsidiary factual findings

are reviewed for clear error. Id. at 13 (citing Fed. R. Civ. P.

52(a)(6)). Accordingly, an appellate court sets aside factual

findings only where the district court’s determination was clearly

erroneous. Id. at 7.

Whether a reference ‘‘qualifies as a ‘printed

publication’ . . . is a legal conclusion based on underlying

factual determinations.’’ In re Lister, 583 F.3d 1307, 1311 (Fed.

Cir. 2009). A patent is presumed to be valid, and the party

asserting invalidity bears the burden to overcome the presumption

by clear and convincing evidence. Microsoft Corp. v. i4i Ltd.

P’ship, 131 S. Ct. 2238, 2242 (2011). Thus, in reviewing the jury’s

verdict of invalidity, this Court ‘‘must determine whether the jury

had substantial evidence upon which to conclude that the party

alleging invalidity met its burden . . . by clear and convincing

evidence.’’ Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d

1288, 1295 (Fed. Cir. 2009) (internal quotation marks omitted).

ARGUMENT

I. THE DISTRICT COURT ERRED IN ITS CONSTRUCTION OF ‘‘ANTI-SLIP ROLLER’’ BECAUSE IT IMPERMISSIBLY READ LIMITATIONS FROM THE SPECIFICATION INTO CLAIM 2 OF THE ’554 PATENT.

By adopting a narrow construction of ‘‘anti-slip roller,’’

the district court ignored this Court’s repeated warnings against

reading limitations from a patent specification into the claims.

See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371

(Fed. Cir. 2014); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d

898, 904 (Fed. Cir. 2004); see also Smith v. Snow, 294 U.S. 1, 11

(1935) (‘‘[An inventor] is not confined to [the] particular mode

10

of use [described in the specification] since the claims of the

patent, not its specifications, measure the invention.’’). During

claim construction, courts give claims their plain and ordinary

meaning to one of ordinary skill in the art in the context of the

specification and prosecution history. Hill-Rom, 755 F.3d at 1371

(Fed. Cir. 2014) (citing Phillips v. AWH Corp., 415 F.3d 1303,

1317 (Fed. Cir. 2005) (en banc)). There are but two exceptions to

this rule: ‘‘1) when a patentee sets out a definition and acts as

his own lexicographer[;] or 2) when the patentee disavows the full

scope of the claim term either in the specification or during

prosecution.’’ Id. (quoting Thorner v. Sony Computer Entm’t Am.

LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). If the meaning of the

claims remains ambiguous after the court considers the intrinsic

evidence----the claim language, specification, and prosecution

history----it will then consider any relevant extrinsic evidence.

See Phillips, 415 F.3d at 1317--19 (describing extrinsic evidence

as useful but less probative than the intrinsic record).

Here, the intrinsic evidence does not support that the

inventors intended a narrow interpretation of ‘‘anti-slip roller.’’

Moreover, the extrinsic evidence on balance suggests that an anti-

slip roller need only non-negligibly reduce slippage between the

treadmill roller and belt. Accordingly, Katze’s narrow definition

of ‘‘anti-slip roller’’ is unsupported and this Court should

instead adopt the definition proffered by Gatto and LeChat.

A. The specification lacks a sufficiently manifest disclaimer to justify the district court’s interpretation.

The ’554 patent specification lacks an express limitation on

the scope of ‘‘anti-slip roller.’’ This Court has described the

11

standard for disclaimer as ‘‘exacting.’’ Hill-Rom, 755 F.3d at 1371.

Disavowal of the claim scope requires that ‘‘the specification [or

prosecution history] make[] clear that the invention does not

include a particular feature.’’ Id. at 1372 (quoting SciMed Life

Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,

1341 (Fed. Cir. 2001)). This dictates that even where the

specification describes a single embodiment of the invention, this

Court will not, without more, require a commensurate constraint on

the subject matter covered by the claims. Id. at 1371--72 (citations

omitted). Rather, such limited description must be accompanied by

additional language necessitating restriction of the claim breadth.

For example, in Altiris, Inc. v. Symantec Corp., 318 F.3d

1363, 1371 (Fed. Cir. 2003), this Court found that ‘‘boot selection

flag’’ was not limited to the embodiment described in the

specification. The court noted that ‘‘there [were] no statements

in the specification or the prosecution history inviting, much

less requiring, [limitation of] the claims to the only disclosed

embodiment.’’ Id. Conversely, in SciMed, this Court found

limitation to the embodiments described in the patent specification

appropriate in the face of overwhelmingly broad and unequivocal

language demonstrating the patentee’s intent to do so. 242 F.3d at

1343--44. In that case, the court curtailed the scope of the claims

only where: (1) the abstract introduced the limitation; (2) the

patent discussed the alternative structure as a disadvantage; and

(3) the specification contained language noting that this

structural limitation applied to ‘‘all embodiments of the present

invention.’’ Id.

12

The ’554 patent lacks the multitude of evidence this Court

requires to read limitations into the claims from the specification.

Focus on the ‘‘present invention’’ language alone ignores the

context of that phrase. The ‘‘Detailed Description’’ section merely

specifies that Figure 1 ‘‘illustrates the present invention,’’

suggesting that the figure and accompanying language provide only

an example of what is claimed. (See R. ¶ 5) (emphasis added). The

language immediately following ‘‘present invention’’ further

supports this understanding. The beginning of the description notes

that Figure 1 is ‘‘a treadmill embodiment.’’ (R. ¶ 5) (emphasis

added). Use of the singular ‘‘a’’ rather than broad ‘‘all

embodiments’’ phraseology requires the reader to understand that

embodiments other than the one depicted in Figure 1 and the

accompanying description may exist within the claim scope. See,

e.g., Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367,

1373 (Fed. Cir. 2005) (concluding that the drafter’s use of ‘‘a

span’’ rather than ‘‘the span’’ to describe the distance between

first and second blades of the claimed razor recognized the

possibility that more than one such span could exist). Consequently,

the district court’s narrow definition of anti-slip roller is

incompatible with Gatto and LeChat’s intent per the specification.

Moreover, reliance on Retractable Tech., Inc. v. Becton,

Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011) is inapposite.

In Retractable, this Court only limited the definition of the

‘‘body’’ claim term to a one-piece body where the specification

supplied strong evidence of the patentee’s intention to do so. Id.

at 1304--05. Not only did the claims recite a one-piece body

13

explicitly, but they also did not refer to a multi-piece body----the

specification even taught away from prior art syringes with multi-

piece bodies. Id. at 1305. In restricting the definition of the

‘‘body’’ term, the court additionally focused on the patent’s overt

description of ‘‘the invention’’ as having a ‘‘one-piece body.’’

Id. (emphasis added).

No such evidence exists here. While the claims do not

expressly identify an anti-slip roller without rigid mechanical

connection, they also do not require it. The specification contains

no criticism of prior art rollers lacking this limitation and the

‘‘Detailed Description’’ contains no reference to ‘‘the invention.’’

Without more, the record does not provide enough evidence for this

Court to conclude Gatto and LeChat desired to limit the scope of

the ’554 patent to the embodiment delineated in the specification.

B. Neither the prosecution history nor inter partes review of the ’554 patent demonstrate that Gatto and LeChat intended to narrow the breadth of the ‘‘anti-slip roller’’ term.

Gatto and LeChat did not amend claim 2 to limit its scope

during prosecution or IPR. Along with the specification, this Court

has endorsed the use of the prosecution history in its claim

construction analysis. See Phillips, 415 F.3d at 1317 (‘‘[The court]

should also consider the patent's prosecution history, if it is in

evidence.’’) (citations omitted). Because the prosecution history

represents a negotiation between the patentee and the patent

examiner it can provide insight regarding the understanding of the

claims by those parties. Id. (citations omitted). However,

prosecution disclaimer only attaches where it is ‘‘clear and

unmistakable that the patentee intended that limitation.’’ Aria

14

Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1302 (Fed. Cir.

2013) (citations omitted).

Only claim 1 was amended during prosecution; claim 2 remained

unchanged. Gatto and LeChat’s response to the patent examiner

properly dealt only with the reference cited by the examiner as

her reason for rejection of the claims.3 The examiner applied the

Snowball 1 reference in making her rejection----a treadmill having

a ‘‘mechanical zipper device that prevent[s] the belt from moving

relative to the roller by interlocking teeth on the belt and

roller.’’ (R. ¶ 8). To overcome this rejection, Gatto and LeChat

amended claim 1 to require ‘‘a plurality of bumps’’ that create

the requisite ‘‘1-2-1-3 relative magnitude [sequence].’’ (R. ¶ 8).

This amendment thus limited claim 1 to embodiments exhibiting this

particular vertical magnitude rise. Because claim 2----containing

the anti-slip roller limitation----issued without amendment, and

because neither Gatto and LeChat nor the examiner discussed the

anti-slip roller during prosecution, there exists insufficient

evidence to show that claim 2 was limited through prosecution

disclaimer. Moreover, the mere fact that the USPTO applies the

broadest reasonable interpretation to the claims does not require

a narrowed interpretation during litigation absent evidence that

Gatto and LeChat intended such an interpretation.

In addition, IPR of the ’554 patent provides no support for

the narrow interpretation argued by Katze. Prior to passage of the

3 A patentee need only reply to references cited as the basis for the examiner’s rejection of the patent claims. See 37 C.F.R. § 1.111(b) (‘‘The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.’’) (emphasis added).

15

AIA, this Court announced that it was not bound by the claim

interpretation adopted by the USPTO during inter partes

reexamination because it reviews claim construction de novo. SRAM

Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006).

Rather, the relevance of reexamination is akin to that of the

prosecution history; the court should focus on any comments made

by the patentee limiting the claim scope. See Grober v. Mako Prods.,

686 F.3d 1335, 1341 (Fed. Cir. 2012) (‘‘When a patentee makes a

clear and unmistakable disavowal of scope during prosecution, a

claim's scope may be narrowed under the doctrine of prosecution

disclaimer. Statements made during reexamination can also be

considered in accordance with this doctrine . . . [T]he doctrine

of prosecution disclaimer only applies to unambiguous disavowals.’’)

(citations and internal quotation marks omitted). At least one

court has endorsed the same approach for inter partes review post-

AIA. See Pragmatus AV, LLC v. Yahoo! Inc., No. C-13-1176 EMC, 2014

WL 1922081, at *4--*5 (N.D. Cal. May 13, 2014) (citing Grober, 686

F.3d at 1341). Accordingly, the lack of statements by Gatto and

LeChat regarding the relevance of any reference at issue in the

IPR to the patentability of claims 1 and 2 should have no bearing

on the construction of the ‘‘anti-slip roller’’ term.

C. Broad construction of ‘‘anti-slip roller’’ is consistent with the purposes of the invention as enumerated in the specification.

A person having ordinary skill in the art would understand

the broad interpretation of ‘‘anti-slip roller’’ proffered by Gatto

and LeChat as consistent with the purposes of the treadmill, and

need not be limited to accomplish that function. The

specification’s enumeration of benefits regarding a particular

16

embodiment is alone insufficient to limit the claim scope.

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1250--

51 (Fed. Cir. 2008). For instance, in Halliburton, this Court

considered limiting the definition of ‘‘fragile gel’’ to gels that

‘‘have no or low organophillic clay or lignite.’’ Id. The patent

described one of the advantages of the invention as its ability to

‘‘suspend drill cuttings . . . without need for organophillic clays

to add viscosity to the fluid.’’ Id. at 1250. It also noted

‘‘preferably no organophillic clays [would be] added to the

drilling fluid.’’ Id. The court ultimately determined that while

the patent did couch this quality as an advantage of the invention,

nothing in the specification required it. Id. at 1250--51.

Consequently, the court found applying this narrow interpretation

of the ‘‘fragile gel’’ term was not appropriate in light of the

specification. Id.

Like in Halliburton, the ‘‘Detailed Description’’ of the ’554

patent merely describes one potential benefit of a preferred

embodiment of the invention at issue. Particularly, following its

description of an anti-slip roller using a rigid mechanical

connection between the belt and roller, the specification states:

‘‘In this way, forward progression and vertical movement of belt

110 can be achieved so as to treat Feline HISS.’’ (R. ¶ 5) (emphasis

added). The use of the permissive ‘‘can’’ instead of a more

restrictive term like ‘‘will’’ in connection with the anti-slip

roller description supports the understanding of that particular

description as a preferred embodiment, rather than a requirement

of the invention.

17

Even if the purpose can inform a court’s understanding of

claim terms, the claims need not be construed to require claim

limitations that would achieve the ‘‘gold standard’’ for the

invention. See, e.g., Medrad, Inc. v. MRI Devices Corp., 401 F.3d

1313, 1319--20 (Fed. Cir. 2005) (interpreting ‘‘uniform magnetic

field’’ to require only ‘‘sufficient uniformity to give a good

image’’ when using the MRI machine at issue). In fact, this court

has only emphasized the purpose of a limitation during claim

construction where a proffered interpretation of the terms

completely vitiates that function. See, e.g., Pall Corp. v.

Hemasure Inc., 181 F.3d 1305 (Fed. Cir. 1999) (rejecting a broad

construction of ‘‘gas outlet’’ where the only purpose of that

limitation----venting----would not be accomplished under that

interpretation).

Here, the interpretation of ‘‘anti-slip roller’’ argued by

Katze impermissibly confines Gatto and LeChat’s invention to an

embodiment that functions perfectly and gives the purposes cited

in the patent specification undue import. The ‘‘Detailed

Description’’ clarifies the ‘‘connection [between the anti-slip

roller and treadmill belt] ensures the belt . . . moves steadily

without jerking or sudden change in speed, which can cause injury

or interrupt the necessary sequential rising and falling of the

belt.’’ (R. ¶ 5). Although the specification notes that rigid belt--

roller mating can accomplish this objective, nothing suggests it

is required. While Katze’s observation may in essence be accurate----

that rigid mating is best suited to create the steady, long-lasting

motion necessary for the treatment of Feline HISS----it does not

18

compellingly argue that less-rigid connection would vitiate the

purpose of the anti-slip roller limitation. Since no instrinsic

evidence suggests that ‘‘non-negligibl[e] reduc[tion in] belt--

roller slippage’’ would be incapable of ensuring the type of steady

motion described, the term should not be narrowed to require rigid

mating.

D. Finally, Garfield’s testimony supports an understanding of ‘‘anti-slip roller’’ which is inclusive of ‘‘any roller that includes a mechanism that non-negligibly reduces belt--roller slippage.’’

The interpretation proffered by Gatto and LeChat should be

adopted in light of Garfield’s testimony regarding the meaning of

‘‘anti-slip roller.’’ Because none of the evidence intrinsic to

the ’554 patent clearly elucidates the proper interpretation of

‘‘anti-slip roller,’’ it is appropriate for this court to examine

extrinsic evidence----including expert testimony. See Vitronics Corp.

v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)

(citations omitted) (observing that in cases where the intrinsic

evidence leaves the meaning of the patent claim ambiguous, a court

may properly consider expert testimony to construe the claims).

Expert testimony can help the court determine the correct

understanding of the claims so long as that testimony does not

contradict the claim language or other parts of the specification.

Id. This Court has also held that the weight of such evidence is

limited by the specificity of the witness’s expertise. See, e.g.,

Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371--72 (Fed.

Cir. 2003) (noting that greater weight should be given to the

testimony of a pharmacologist than that of a general chemist when

the patent-at-issue was directed to a pharmaceutical substance).

19

The district court’s determination that Long was ‘‘better

qualified to testify on the nature of the invention,’’ (Conc. of

Law), was clearly erroneous because Garfield has more specific

knowledge of the inventive art.4 (R. ¶ 18). Nothing in the record

suggests that Long has any knowledge of treadmill engineering.5

Because the ’554 patent is directed toward a treadmill, and the

claim term being construed is ‘‘anti-slip roller’’----a mechanical

component of that treadmill----Long’s veterinary expertise is even

less pertinent to the invention than the general chemist’s

knowledge was to the pharmaceutical substance at issue in Merck.

Whereas the general chemist in Merck could have had some, albeit

generic familiarity with the import of terms for chemical

substances that make up a pharmaceutical drug, it is unlikely that

a veterinarian would be at all acquainted with terminology used by

treadmill engineers. By comparison, Garfield, a Ph.D. in mechanical

engineering, has 15 years of experience in the construction of

treadmills and thus has extensive knowledge of the language that

would be used in that field. (R. ¶ 18). Consequently, under the

Merck standard, this Court should find that weighing Long’s

testimony over Garfield’s was clear error.

Even if Long were a person of ordinary skill in the art this

Court should still reject his interpretation of ‘‘anti-slip roller.’’

First, Long’s testimony fails to unequivocally reject an anti-slip

4 Because the challenger bears the burden of showing invalidity, 35 U.S.C. § 282(a) (2012), the onus was on Katze to define a person of ordinary skill in the art. 5 Long himself admitted that the art at issue is the art of engineering treadmills. (R. ¶ 19).

20

roller without rigid mechanical mating. While Long emphasized the

importance of ‘‘absolutely prevent[ing] belt slippage,’’ his

criticism of a roller lacking rigid mechanical connection merely

observed that an adhesive, for example, could ‘‘open up . . . risks

of slipping or drift with the bumps . . . that might interfere

over time.’’ (R. ¶ 19) (emphasis added). Long’s testimony does not,

however, absolutely rebuke the notion that a non-mechanical

connection between the roller and belt could serve the desired

functions of that limitation. Therefore, this testimony goes merely

to describing the proverbial ‘‘gold standard’’ for the invention.

Second, Long’s testimony would so narrow claim 2 as to vitiate

the ‘‘anti-slip limitation.’’ According to Garfield, even rigid

mechanical mating between roller and belt would fail to completely

eliminate slippage. In light of this testimony, Long’s manifest

intent that the anti-slip roller ‘‘absolutely prevent belt slippage’’

would be impossible to achieve.

This Court should instead adopt Gatto and LeChat’s

interpretation of anti-slip roller. Garfield’s testimony supports

this interpretation----requiring the roller to non-negligibly reduce

belt--roller slippage is emblematic of the meaning of the term from

the perspective of one skilled in the art of treadmill engineering.

Garfield testified ‘‘anti-slip rollers’’ are merely distinct from

‘‘support rollers’’ because they ‘‘keep the belt in sync with any

motor or other controls . . . [and] basically prevent the belt

from slipping or jerking so that you have a safe, even progression

of movement.’’ (R. ¶ 18). He clarified that along with an anti-

slip mechanism with ‘‘capture or gripping-type interlock between

21

the belt and roller . . . a magnetic or adhesive bond between [belt

and roller]’’ would be considered sufficiently ‘‘anti-slip.’’ (R.

¶ 18). What is required, according to Garfield, is that an anti-

slip roller ‘‘typically cut back on most slipping and smooth it

out during ordinary usage.’’ (R. ¶ 18). Consistent with this

testimony, this Court should reverse the district court’s narrow

interpretation, and instead adopt the broader construction

proffered by Gatto and LeChat.

II. THIS COURT SHOULD REVERSE THE DISTRICT COURT’S FINDING OF INVALIDITY BECAUSE THE RECORD DOES NOT PROVIDE SUFFICIENT SUPPORT TO SHOW BY CLEAR AND CONVINCING EVIDENCE THAT THE KOT ARTICLE WAS PUBLICLY AVAILABLE.

Katze, as the party asserting invalidity, bore the burden to

prove with clear and convincing evidence6 that the KOT article was

publicly accessible under 35 U.S.C. § 102(b). Microsoft, 131 S.

Ct. at 2242. Katze failed to carry that burden because there was

insufficient evidence in the record to show: (1) the KOT article

was publicly accessible through the Kottur database; (2) the

conferences and posters meaningfully directed the interested

public to the full KOT article; and (3) preventive measures and

professional norms did not give rise to a reasonable expectation

of confidentiality regarding the article. Public accessibility is

‘‘the touchstone in determining whether a reference constitutes a

‘printed publication’ under 35 U.S.C. § 102(b).’’ In re Lister,

6 ‘‘[C]lear and convincing evidence has been described as evidence which produces in the mind of the trier of fact an abiding conviction that the truth of the factual contentions are highly probable.’’ Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988) (citing Colorado v. New Mexico, 467 U.S. 310, 316 (1984)) (quotations omitted). Evidence that factual findings that are ‘‘likely’’ true does not meet the clear and convincing evidence standard. Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 830 (Fed. Cir. 1991).

22

583 F.3d at 1311. ‘‘A reference is considered publicly accessible

if it was disseminated or otherwise made available to the extent

that persons interested and ordinarily skilled in the . . . art

exercising reasonable diligence, can locate it.’’ Id. (citation

omitted). This inquiry is done case-by-case based on the facts and

circumstances. Id.

A. Katze failed to provide sufficient evidence to show by clear and convincing evidence that the KOT article was made publicly available through the Kottur database.

The record does not provide sufficient support to show a high

probability that anyone----much less persons interested and

ordinarily skilled in the art----could actually access the KOT

article through the Kottur database using reasonable diligence.

See id. at 1311 (‘‘A reference is considered publicly accessible

if it was disseminated or otherwise made available to the extent

that persons interested and ordinarily skilled in the . . . art

exercising reasonable diligence, can locate it.’’).

First, there is insufficient evidence to show that the

interested public could have located the KOT article using the

Kottur database. Although there were approximately 850 views on

the download page, the record does not indicate that these views

were by interested persons, or even whether they were made by

persons at all----as opposed to ‘‘internal uses, bot crawls, and

other non-human accesses.’’ (R. ¶ 24). Despite evidence that Maru

was able to locate the abstract7 of the KOT article, there is no

7 The parties do not dispute that the abstract failed to disclose each and every element of claim 1 of the ’554 patent. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (noting a § 102(b) printed publication must ‘‘disclose each and every element of the claims invention’’ and ‘‘enable one of ordinary skill in the art to make the invention without undue experimentation’’).

23

evidence to show that the full article was ever downloaded. This

lack of actual receipt indicates that the article was not publicly

accessible. See SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511

F.3d 1186, 1197 (Fed. Cir. 2008) (concluding the lack of actual

retrieval is an indicator ‘‘suggesting an absence of actual public

accessibility’’).

Moreover, Maru’s inability to obtain the full article directly

from KOT, (R. ¶¶ 15, 23), raises doubts as to whether the Kottur

database meaningfully directed interested members of the public to

the KOT article. Indeed, the record supports a conclusion that an

interested party could not have acquired the full article even

after directly contacting KOT. Each of Maru’s three emails ended

up in KOT’s corporate junk email inbox. (R. ¶ 23). Although Goyang-

i eventually noticed and replied these emails, it was only by

happenstance. (R ¶ 23). The lack of evidence showing that an

interested person would have obtained the article absent such a

coincidence suggests that the article was not publicly accessible.

See SRI, 511 F.3d at 1197 (noting that a reference available only

to a person who may have discovered it ‘‘by happenstance’’ may not

constitute a printed publication). While she eventually responded,

Goyang-i did not send Maru the full article and the email was never

received. (R. ¶ 23). Although Goyang-i did respond to an inquiry

from Mao after this lawsuit was initiated,8 no evidence shows that

any other email request for the KOT article was successful prior

to the critical date. (R. ¶¶ 22, 23). Maru’s example demonstrates

8 Although Mao contacted KOT through their public email and obtained a copy of the KOT article, it happened years after the ’554 patent was issued. (R. ¶ 22).

24

that an interested person of ordinary skill in the art could not

have procured the KOT article with reasonable diligence. See

Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed.

Cir. 1988) (‘‘Accessibility goes to the issue of whether interested

members of the relevant public could obtain the information if

they wanted to.’’). Accordingly, Katze has failed to establish by

clear and convincing evidence that the KOT article was publicly

accessible through the Kottur database.

Further, mere likelihood of access is insufficient to show

public accessibility by clear and convincing evidence. See Norian

Corp. v. Stryker Corp., 363 F.3d 1321 (Fed. Cir. 2004). For example,

in Norian, one co-author testified that he took a copy of the

reference to give it to a meeting organizer, but he ‘‘could not

recall whether he attended the presentation and could not recall

whether copies of the [reference] were actually available to hand

out.’’ Id. at 1330. The other co-author did not testify about the

availability of the reference. Id. Although the evidence showed

likelihood of actual availability, this Court held that it did not

constitute ‘‘clear and convincing evidence that the [reference]

was actually available’’ at the conference, and thus was not a

printed publication. Id.

Here, Katze failed to provide sufficient evidence to show

that the KOT article was actually downloadable from the Kottur

database or obtainable from KOT. No evidence shows that the Kottur

database would have led a user to a valid download link or that

interested persons could have received the full article by directly

contacting KOT. Thus, similar to Norian, Katze did not meet its

25

burden to show that anyone could actually access the KOT article

through the posting on Kottur.

B. Likewise, Katze failed to provide sufficient evidence to show with high probability that the KOT article was made publicly accessible through the conferences.

Even if the brochures and posters distributed at conferences

directed interested members of the public to contact KOT, Katze

has not shown such a person would have been successful in obtaining

the full article.9 See N. Telecom, Inc. v. Datapoint Corp., 908

F.2d 931, 936 (Fed. Cir. 1990) (determining that to qualify as a

printed publication under § 102(b), a reference ‘‘must be generally

available’’). There is insufficient evidence in the record to show

the means by which a person who learned about the KOT article from

the brochures and conferences could have obtained the article from

KOT. While the record indicates that two persons approached KOT

abroad, (R. ¶ 23), that inquiry was motivated by pricing errors in

the brochures and there is insufficient evidence to show that an

interested person could have obtained the full article through

such contact. Moreover, the record fails to show that a party could

have contacted KOT directly in any other way than through their

public email address----and, as shown above, the record fails to

show that such contact would have been fruitful. (See R ¶¶ 21, 23).

Therefore, this Court should find the KOT article was not publicly

accessible through the conferences, and accordingly was not a

9 The brochures and posters distributed at the conferences themselves were not printed publications under § 102(b) because no evidence in the record shows that the brochures and posters disclose each and every element of claim 1 of the ’554 patent. Indeed, neither the brochures nor the posters disclosed the 1-2-1-3 bump arrangement, as required by claim 1. (R. ¶¶ 3, 23); See supra note 7.

26

printed publication under § 102(b).

C. Even if this Court finds that there is sufficient evidence to show an interested person would have been successful in reaching KOT for the article, the record indicates KOT had a reasonable expectation of confidentiality, making the article generally not available.

The KOT article was not publicly accessible because KOT had

a reasonable expectation of confidentiality regarding the article

and the professional norms also supports expectations of

confidentiality. For the article to qualify as a printed

publication under 35 U.S.C. § 102(b), Katze must prove that the

KOT article was ‘‘generally available’’ and accordingly, that it

was not kept confidential with clear and convincing evidence. N.

Telecom, 908 F.2d at 936. This Court has been reluctant to deem a

reference a ‘‘printed publication’’ when there is ‘‘a reasonable

expectation that information will not be copied or further

distributed.’’ Cordis Corp. v. Boston Scientific Corp., 561 F.3d

1319, 1333 (Fed. Cir. 2009). Expectations of confidentiality are

demonstrated by protective measures taken to prevent the public

from copying or further distributing. In re Klopfenstein, 380 F.3d

1345, 1351 (Fed. Cir. 2004). Such protective measures could include

license agreements, non-disclosure agreements, anti-copying

software, or simply marking the reference as confidential. Id.

Professional and behavioral norms may also support an expectation

of confidentiality. Id.

First, the KOT article was subject to expectations of

confidentiality because KOT took protective measures to prevent

its distribution to parties who did not directly purchase it. Such

preventive measures can be enough to find that the article did not

27

constitute a printed publication under 35 U.S.C. § 102. See, e.g.,

N. Telecom, 908 F.2d at 936--37. For instance, in Northern Telecom,

this Court held two reports were not printed publications where

the reports were marked ‘‘[r]eproduction or further dissemination

is not authorized . . . not for public release’’ and were housed

in a library whose access was restricted to authorized persons.

Id. The court reached this conclusion even though copies of the

reports were distributed to approximately fifty persons and

organizations. Id.

Similar to the reports in Northern Telecom, which were marked

with a confidentiality notice alerting recipients to the classified

nature of the documents, KOT took various measures to alert

interested persons that the KOT article should be treated as

confidential. (R. ¶ 23). For example, KOT held back details of the

article from the conference brochures and posters----including the

key 1-2-1-3 arrangement of the treadmill. (R. ¶ 23). Moreover, to

get full access to the article, an interested party was required

either to obtain a license or purchase the article.10 (R. ¶ 23).

KOT also restricted the use and further distribution of the article

by purchasers. (R ¶ 23). For example, KOT only granted Mao rights

to use the KOT article as an exhibit, and prohibited any other use

or reproduction. (R. ¶ 22). Even the Kottur database did not give

a user access to the full KOT article prior to purchase. (R. ¶¶

10 KOT charged $65,000 for access to the full KOT article (R. ¶ 22); this high price by itself renders the KOT article effectively inaccessible to the general members of the interested public. See Va. Innovation Scis., Inc. v. Samsung Elec. Co., 983 F. Supp. 2d 713, 738 (E.D. Va. 2014) (holding that a document was not a printed publication under § 102(b) because it was available ‘‘only at the cost of a $10,000 membership fee,’’ which is ‘‘too high’’ and renders ‘‘the document effectively inaccessible to the general members of the interested public’’)

28

14, 21). The active steps taken to restrict use and distribution

of the KOT article go beyond the protective measures this Court

found to indicate a reasonable expectation of confidentiality in

Northern Telecom. See N. Telecom, 908 F.2d at 936. Thus, the KOT

article does not constitute a printed publication under 35 U.S.C.

§ 102(b).

Second, professional norms in this case gave rise to an

expectation of confidentiality. Such norms can serve as a basis

for showing that a reference is not publicly accessible enough to

constitute a printed publication. See, e.g., Cordis, 561 F.3d at

1333--34. For example, in Cordis, an author gave copies of the

reference to six colleagues without overtly requesting that they

keep the paper confidential. Id. Because the norm of the academic

community was to keep such disclosures secret, this Court

determined that the reference was not a printed publication. Id.

Even though the author also distributed copies of the reference to

a commercial organization, the court found this distribution did

not make the article a printed publication because the author asked

the commercial organization to keep the reference confidential.

Id. at 1334.

Here, the record demonstrates even stronger evidence than was

the case in Cordis that confidentiality would be understood. More

than the academics in Cordis who----as a result of a professional

norm----understood that the disseminated reference should be kept

confidential, any recipient of the KOT article would expect that

KOT would want the article kept secret because only the purchaser

was given access. In fact, the record shows that use of the article

29

was restricted even where the interested persons, like Mao,

purchased the full reference. (R. ¶ 22). These added restrictions

on use of the article and the requirements for obtaining the

article in the first place indicate there was a greater expectation

of confidentiality here. This expectation of confidentiality

should lead this Court to the conclusion that the KOT article was

not publicly accessible and consequently was not a printed public

under 35 U.S.C. § 102(b).

CONCLUSION AND RELIEF REQUESTED

Accordingly this Court should reverse the district court’s

construction of ‘‘anti-slip roller’’ in claim 2 and adopt Gatto

and LeChat’s construction, and reverse the jury verdict of

anticipation of claim 1.

Date: January 23, 2015 Respectfully Submitted,

/s/ Marta Chlistunoff Marta Chlistunoff /s/ Jun Zheng Jun Zheng ATTORNEYS FOR APPELLANTS

CERTIFICATE OF SERVICE

We certify that on the 23rd day of January, 2015, a true and correct copy of this document was served on counsel of record for all parties in compliance with Fed. R. App. P. 25(b). By: /s/ Marta Chlistunoff /s/ Jun Zheng January 23, 2015 Marta Chlistunoff Jun Zheng Date ATTORNEYS FOR APPELLANTS

CERTIFICATE OF COMPLIANCE

We certify that the foregoing brief meets the technical rules promulgated by the Federal Circuit Court of Appeals. The appellants’ brief is in 12-point Courier font with a one-inch margin on all sides. This brief conforms to all page limitations set by this Court. By: /s/ Marta Chlistunoff /s/ Jun Zheng January 23, 2015 Marta Chlistunoff Jun Zheng Date ATTORNEYS FOR APPELLANTS

Appeal No. 14-9999

IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

SYLVESTER GATTO and AZRAEL LECHAT

Plaintiffs-Appellants

v.

KATZE CORPORATION

Defendant-Appellee

Appeal from the United States District Court for the District of

Katifornia Judge Felix Bigglesworth

BRIEF FOR DEFENDANT-APPELLEE

Attorneys for Appellee Marta Chlistunoff Jun Zheng

i

CERTIFICATE OF INTEREST

Counsel for Defendant-Appellee Katze Corporation certify the

following:

1. The full name of every party or amicus represented by us is:

Katze Corporation.

2. The name of the real party in interest represented by us is:

Katze Corporation.

3. All parent corporations and any publicly held companies that

own 10 percent or more of the stock of the party or amicus curiae

represented by me are:

N/A.

4. The names of all law firms and the partners or associates

that appeared for the party or amicus now represented by us in the

trial court or agency or are expected to appear in this court are:

Marta Chlistunoff; and

Jun Zheng.

i

TABLE OF CONTENTS

Certificate of Interest........................................ i

Table of Contents.............................................. i

Table of Authorities......................................... iii

Statement of Jurisdiction...................................... 1

Statement of the Issues........................................ 1

Statement of the Case.......................................... 1

Statement of the Facts......................................... 2

A. The Patent-in-Suit ...................................... 2

B. The Claim Construction Dispute .......................... 4

C. The KOT Article. ........................................ 5

Summary of the Argument........................................ 6

Standards of Review............................................ 7

Argument....................................................... 9

I. THE DISTRICT COURT PROPERLY CONSTRUED ANTI-SLIP ROLLER TO

REQUIRE RIGID MATING BETWEEN THE TREADMILL ROLLER AND BELT SUCH

THAT NO SLIPPING OCCURS WHEN THE TWO ARE SO MATED. ........... 9

A. The wording of the specification evidences the patentees

intended to limit the definition of ‘‘anti-slip roller’’ to

one requiring a rigid mechanical connection between the

roller and the treadmill belt. ............................. 9

B. The specification also fails to identify any embodiments

without rigid mating that would accomplish the intended

purposes of the ‘‘anti-slip roller’’ limitation. ........... 13

C. The USPTO’s citation to prior art references encompassing

a broader variety of ‘‘anti-slip rollers’’ is not sufficient

ii

to justify the broad interpretation advocated by the

patentees. ................................................ 14

D. Dr. Grumpy Long’s testimony suggests that only a rigid

belt--roller connection can ensure that the ’554 invention

accomplishes the purposes enumerated in the specification. 16

II. THIS COURT SHOULD AFFIRM THE DISTRICT COURT’S DECISION

REGARDING ANTICIPATION OF CLAIM 1 BECAUSE THE KOT ARTICLE WAS

PUBLICLY AVAILABLE UNDER 35 U.S.C. 102(B). .................. 19

A. The KOT article was publicly accessible because interested

members in the public could locate the article through the

Kottur database with reasonable diligence. ................ 20

B. The KOT article was publicly accessible because it was

generally available through the Kottur database and the

conference brochures and posters. ......................... 22

C. Finally, the KOT article was publicly accessible even if

no evidence shows actual receipt of the article before the

critical date. ............................................ 26

Conclusion and Relief Requested............................... 27

iii

TABLE OF AUTHORITIES

Cases

Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir.

2006) ................................................................................................................................ 22, 25

Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461 (Fed. Cir.

1988) ...................................................................................................................................... 20

Colorado v. New Mexico, 467 U.S. 310 (1984) ............................................... 20

Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d

1317 (Fed. Cir. 2002) ................................................................................................ 24

Cordis Corp. v. Boston Scientific Grp., 561 F.3d 1319 (Fed. Cir.

2009) ...................................................................................................................................... 15

Ericsson, Inc. v. D-Link Sys., Inc., 2014 WL 6804864 (Fed. Cir.

2014) ........................................................................................................................................ 9

Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed.

Cir. 2009) ............................................................................................................................ 8

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed.

Cir. 2008) .......................................................................................................................... 13

Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367(Fed. Cir.

2014) .................................................................................................................................. 9, 10

In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) ............................................. 21

In re Hall, 781 F.2d 897 (Fed. Cir. 1986) .............................................. 20, 26

In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004)............................... 23

In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) ...................................... passim

In re Wyer, 655 F.2d 221 (C.C.P.A. 1981)....................................................... 25

iv

Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821 (Fed. Cir.

1991) ...................................................................................................................................... 20

Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728 (Fed. Cir.

2002) ........................................................................................................................................ 7

Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir.

2004) ...................................................................................................................................... 12

Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353(Fed. Cir.

2008) ........................................................................................................................................ 7

Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367 (Fed. Cir.

2003) ...................................................................................................................................... 17

Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238 (2011) ....... 8, 20

Omega Eng’g v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) ......... 15

Pall Corp. v. Hemasure Inc., 181 F.3d 1305 (Fed. Cir. 1999) ......... 13

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................ passim

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed.

Cir. 1999) .......................................................................................................................... 17

Retractable Tech., Inc. v. Becton, Dickinson and Co., 653 F.3d

1296 (Fed. Cir. 2011) ................................................................................................ 10

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008)

.................................................................................................................................................. 16

SkinMedica, Inc. v. Histogen, Inc., 727 F.3d 1187 (Fed. Cir.

2013) ...................................................................................................................................... 17

SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed.

Cir. 2008) .......................................................................................................................... 25

v

Teva Pharms. USA, Inc. v. Sandoz, Inc., No. 13--854 (Jan. 20,

2015) .................................................................................................................................. 8, 17

Trading Techs. Int'l, Inc. v. eSpeed, Inc., 595 F3d 1340(Fed.

Cir. 2010) .................................................................................................................... 10, 11

United States v. Adams, 383 U.S. 39 (1966) .................................................. 10

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.

1996) ...................................................................................................................................... 16

World Class Tech. Corp. v. Ormco Corp., 2014 WL 5314631 (Fed.

Cir. 2014) .......................................................................................................................... 13

Statutes

28 U.S.C. § 1295(a)(1) .................................................................................................... 1

28 U.S.C. § 1331 .................................................................................................................. 1

28 U.S.C. § 1338(a) ........................................................................................................... 1

28 U.S.C. § 2107(a) ........................................................................................................... 1

35 U.S.C. § 102(b) ................................................................................................. 1, 19, 27

35 U.S.C. § 103..................................................................................................................... 3

35 U.S.C. § 271(a) ............................................................................................................. 1

Rules

Fed. R. Civ. P. 52(a)(6) ......................................................................................... 8, 17

Other Authorities

M.P.E.P. § 2100 (8th ed. Rev. 7, Sept. 2008) ............................................. 16

1

STATEMENT OF JURISDICTION

The district court had jurisdiction under 28 U.S.C. §§ 1331

and 1338(a) (2012). The appellants timely filed notice of appeal

from the district court’s final judgment consistent with 28 U.S.C.

§ 2107(a) (2011) and Fed. R. App. P. 4(a). This Court has

jurisdiction under 28 U.S.C. § 1295(a)(1) (2012).

STATEMENT OF THE ISSUES

Issue 1: Whether the district court correctly construed the

meaning of ‘‘anti-slip roller’’ by affording proper weights to the

claim language, specification, prosecution history, and other

extrinsic evidence?

Issue 2: Did the district court correctly rule that the KOT

article was publicly accessible so as to constitute a printed

publication under § 102(b)?

STATEMENT OF THE CASE

Sylvester Gatto and Azrael LeChat (‘‘the patentees’’) filed

suit against Katze Corporation (‘‘Katze’’), alleging Katze’s

ROLLcat device infringed their U.S. Patent No. 8,405,554 (filed

August 2011)(‘‘the ’554 patent’’) under 35 U.S.C. § 271(a).

Following a Markman hearing, the United States District Court for

the District of Katifornia (‘‘the district court’’) adopted Katze’s

proposed construction of the ‘‘anti-slip roller’’ term of claim 2,

instead of the patentees’. Under the court’s construction, the

parties stipulated that the ROLLcat device did not infringe claim

2 of the ’554 patent. With regard to claim 1, the jury found that

the KOT article was sufficiently publicly available to constitute

pre-AIA 35 U.S.C. § 102(b) prior art and thus anticipated claim 1.

2

After trial, the district court denied the patentees’ JMOL/JNOV

motions on the validity of claim 1. The patentees now appeal,

seeking to reverse the district court’s construction of ‘‘anti-

slip roller’’ in claim 2 and the jury verdict of anticipation with

respect to claim 1.

STATEMENT OF THE FACTS

A. The Patent-in-Suit

The ’554 patent discloses a treadmill to treat Feline

Hyperactive Internet Social Syndrome (‘‘Feline HISS’’), featuring

a ‘‘wobbler belt’’ that presents the subject animal with smooth

rises of 1-2-1-3 relative magnitudes. (R. ¶ 3). The ’554 patent,

as issued in March 2013, recites the following two claims:

1. An apparatus for treating Feline Hyperactive Internet Social Syndrome, comprising: a plurality of support rollers; and a belt coupled with the support rollers wherein the belt includes a first side and a second side, wherein the first side faces away from the rollers and includes a walking surface, and wherein the second side faces toward the rollers and includes a plurality of bumps in a continuous and repeating 1-2-1-3 relative magnitude vertical sequence. 2. The apparatus of claim 1, further comprising: a motor; and an anti-slip roller connected to the motor and the belt so that the second side moves with a surface of the anti-slip roller contacted by the second side.

(R. ¶ 3).

The ’554 patent’s ‘‘Summary of the Invention’’ section

identifies the ‘‘repeated succession [of the 1-2-1-3 sequence]

without interruption’’ as quintessential to the device’s

therapeutic function. (R. ¶ 4). Moreover, the ’554 patent features

a single figure depicting the treadmill and a ‘‘Detailed

3

Description’’ indicating ‘‘Figure 1 illustrates the present

invention.’’ (R. ¶ 4--5) (emphasis added). While this section

recognizes a variety of methods that could be used by the skilled

artisan to create the requisite 1-2-1-3 vertical magnitude rise,

it only describes a single construction of the ‘‘anti-slip roller’’

of claim 2----one requiring ‘‘rigid connection’’ between the

treadmill belt and the roller. (R. ¶ 5). The ‘‘Detailed Description’’

also emphasizes the importance of such a connection ‘‘so that belt

110 moves exactly with anti-slip roller 130 . . . [creating]

forward progression and vertical movement of belt 110 can be

achieved so as to treat Feline HISS.’’ (R. ¶ 5). Finally, the ’554

patent’s written description closes with a generic paragraph

attempting to limit the content of the specification to a mere

‘‘example’’ of the claimed subject matter. (R. ¶¶ 6--7).

During prosecution, the examiner initially rejected the two

original claims as anticipated by an earlier patent (Snowball 1),

disclosing a pet treadmill with a variable walking surface and a

mechanical zipper mechanism wherein the roller and belt contained

interlocking teeth. (R. ¶ 8). The examiner also cited a second

patent (Snowball 2) as relevant, but did not apply the reference

(R. ¶ 8). After the applicants amended claim 1 to include specific

language regarding the ‘‘1-2-1-3 relative magnitude vertical

sequence’’ the examiner allowed both claims. (R. ¶ 9). The patent

issued in March 2013. (R. ¶ 3).

In September 2013, the ’554 patent faced and eventually

overcame a challenge under 35 U.S.C. § 103 using the ‘‘NYAN

reference’’ during an Inter Partes Review proceeding (‘‘IPR’’). (R.

4

¶ 10--12). The USPTO ultimately concluded that although the NYAN

reference allowed a person of skill in the art to create the

desired 1-2-1-3 vertical magnitude rise sequence, it did not

sufficiently motivate that particular sequence. (R. ¶ 12).

B. The Claim Construction Dispute

The parties dispute the meaning of the term ‘‘anti-slip

roller.’’ (R. ¶ 17). At the Markman hearing, the parties presented

dueling expert testimony. (R. ¶ 18--19). Dr. Grumpy Long (‘‘Long’’),

a Ph.D. in veterinary biomechanical engineering and a renowned

researcher on Feline HISS, testified on behalf of Katze. (R. ¶ 19).

Dr. Heathcliff Garfield (‘‘Garfield’’), whom the record does not

indicate has any experience with the use of therapeutic treadmills

for animals, testified on behalf of the patentees. (R. ¶ 18). Long

touted the rigid mechanical connection between the ‘‘anti-slip

roller’’ and the treadmill belt as important to ensure that ‘‘a

cat can safely walk [the belt] over and over.’’ (R. ¶ 19). He

explained the very purpose of the invention----treating Feline HISS----

may be undermined in the absence of a rigid mating between roller

and belt. (See R. ¶ 19). Although Garfield merely described ‘‘anti-

slip rollers’’ as distinct from ‘‘support rollers,’’ his testimony

failed to consider the particular application of such technology

to the therapeutic nature of the treadmill. (R. ¶ 18). Garfield

argued that, in the context of treadmills designed for human use,

a wide variety of anti-slip mechanisms could prevent excessive

slipping or jerking, including those exhibiting a ‘‘magnetic or

adhesive bond between the [belt and the roller].’’ (R. ¶ 18).

5

C. The KOT Article.

Approximately two years prior to issuance of the ’554 patent,

KOT authored an article (‘‘the KOT article’’) disclosing a

treadmill for physical therapy of mammals featuring a 1-2-1-3

vertical magnitude rise sequence. (R. ¶¶ 3, 20, 23). Because KOT

treated the article as proprietary information for sale, it

actively advertised its availability. (R. ¶ 23). To this end, KOT

attended more than 10 conferences----each had at least 100 attendees

and targeted people in the exercise equipment and physical therapy

industries----where KOT promoted sale of the article-at-issue. (R.

¶ 23). KOT developed brochures and posters describing the article,

and indicated that the full article was available for purchase or

license. (R. ¶ 23). The brochures even included a picture of the

treadmill. (R. ¶ 23). At least two persons approached KOT about

the article. (R. ¶ 23).

From 2008 to 2011 the KOT article was posted on Kottur, a

commercial database. (R. ¶ 24). An abstract describing the

treadmill and disclosing the 1-2-1-3 vertical magnitude sequence

was freely accessible on Kottur and a user could download the full

KOT article after purchase. (R. ¶¶ 14, 21, 24). The article was

indexed in the Kottur database by subject matter with keywords

including: ‘‘variable-surface treadmill,’’ ‘‘walking therapies,’’

and ‘‘physical therapy.’’ (R. ¶ 24). By December 2011, the KOT

article’s download page had been viewed approximately 850 times.

(R. ¶ 24).

Mr. Bastet Maru (‘‘Maru’’), the patentees’ patent attorney,

located the KOT article on the Kottur database. (R. ¶¶ 14, 21).

6

Although Maru never downloaded the full KOT article from Kottur,

he was aware that he would need to purchase the article to gain

full access, and eventually emailed KOT directly in an attempt to

do so. (R ¶¶ 13--15). KOT’s manager, Ms. Kitty Goyang-i (‘‘Goyang-

i’’) replied to Maru’s emails to communicate that the full KOT

article was available for purchase----consistent with the company’s

general practice. (R. ¶¶ 21, 23). Because Maru’s email inbox was

full, the reply email bounced back. (R. ¶ 23).

Katze’s engineer, Mr. Khernel Mao (‘‘Mao’’), received the KOT

article after only one attempt at contacting KOT through their

public email. (R. ¶ 22). He received the article after paying

$65,000 only a few days following the initial contact. (R. ¶ 22).

SUMMARY OF THE ARGUMENT

The district court properly construed ‘‘anti-slip roller’’ in

claim 2 of the ’554 patent to require rigid mating between the

treadmill roller and belt. Intrinsic evidence regarding the ’554

patent suggests that Gatto and LeChat intended to adopt this narrow

definition. Not only does the specification fail to describe an

embodiment where the anti-slip roller would not require rigid

mating, but the patentees expressly describe ‘‘the present

invention’’ as such. Moreover, the patent’s prosecution history

and IPR provide no evidence of a broader construction. Even if

this Court determined that the term remains ambiguous after

considering this intrinsic evidence, Long’s testimony, which was

given greater weight by the district court----a determination which

must be given deference under Teva----suggests that only rigid mating

can accomplish the purposes of the invention enumerated by the

7

specification.

The district court also properly found the KOT article was a

printed publication under 35 U.S.C. § 102(b) and anticipated

the ’554 invention. First, the article was publicly accessible

since interested persons using reasonable diligence would have

been able to obtain it through Kottur. Second, both the abstract

on Kottur and the brochures and posters meaningfully directed

people to contact KOT to obtain the full article. Finally, the KOT

article’s public accessibility is not impacted by the lack of

evidence showing actual receipt. Consequently, the KOT article

should be considered a printed publication under 35 U.S.C. § 102(b).

Accordingly, this Court should affirm the district court’s

construction of ‘‘anti-slip roller’’ in claim 2 and its

determination that the KOT article was a printed publication that

anticipated claim 1 of the ’554 patent.

STANDARDS OF REVIEW

This Court reviews a district court’s decision on a motion

for JMOL without deference. Litecubes, LLC v. N. Light Prods.,

Inc., 523 F.3d 1353, 1369 (Fed. Cir. 2008) (citations omitted).

JMOL is required if ‘‘the jury’s factual findings were not

supported by substantial evidence or that the facts were not

sufficient to support the conclusions necessarily drawn by the

jury on the way to its verdict.’’ Id. ‘‘Substantial evidence is

such relevant evidence from the record taken as a whole as might

be accepted by a reasonable mind as adequate to support the finding

under review.’’ Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d

728, 736 (Fed. Cir. 2002).

8

Claim construction is a question of law and this Court shall

‘‘review . . . the district court’s ultimate interpretation of the

patent claims [de novo].’’ Teva Pharms. USA, Inc. v. Sandoz, Inc.,

No. 13--854, slip op. at 9 (Jan. 20, 2015). Nevertheless, the

Supreme Court recognized in Teva that claim construction may

require a district court to make subsidiary factual findings. Id.

at 12. This is particularly likely where a court turns to extrinsic

evidence in construing the claims----e.g. where a court considers

and weighs expert testimony. Id. Such subsidiary factual findings

are reviewed for clear error. Id. at 13 (citing Fed. R. Civ. P.

52(a)(6)). Accordingly, an appellate court sets aside factual

findings only where the district court’s determination was clearly

erroneous. Id. at 7.

Whether a reference ‘‘qualifies as a ‘printed

publication’ . . . is a legal conclusion based on underlying

factual determinations.’’ In re Lister, 583 F.3d 1307, 1311 (Fed.

Cir. 2009). A patent is presumed to be valid, and the party

asserting invalidity bears the burden to overcome the presumption

by clear and convincing evidence. Microsoft Corp. v. i4i Ltd.

P’ship, 131 S. Ct. 2238, 2242 (2011). Thus, in reviewing the jury’s

verdict of invalidity, this Court ‘‘must determine whether the jury

had substantial evidence upon which to conclude that the party

alleging invalidity met its burden . . . by clear and convincing

evidence.’’ Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d

1288, 1295 (Fed. Cir. 2009) (internal quotation marks omitted).

9

ARGUMENT

I. THE DISTRICT COURT PROPERLY CONSTRUED ANTI-SLIP ROLLER TO REQUIRE RIGID MATING BETWEEN THE TREADMILL ROLLER AND BELT SUCH THAT NO SLIPPING OCCURS WHEN THE TWO ARE SO MATED.

The district court appropriately narrowed the meaning of

‘‘anti-slip roller’’ in light of the intrinsic and extrinsic

evidence. This Court has recognized that claim language should be

given its ordinary meaning and should be understood from the

perspective of a person of ordinary skill in the inventive art.

Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.

Cir. 2014); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.

2005) (en banc). In adopting this perspective, the court should

‘‘review[] the same resources as would [an ordinary skilled

artisan], viz., the patent specification and the prosecution

history.’’ Phillips, 415 F.3d at 1313 (citations omitted). ‘‘In

fact, the specification is the single best guide to the meaning of

the claim terms; it is usually dispositive.’’ Ericsson, Inc. v. D-

Link Sys., Inc., 2014 WL 6804864, at *10 (Fed. Cir. 2014). Adopting

the appellants’ interpretation ignores the guidance of this Court

regarding claim construction analysis and must therefore be

rejected.

A. The wording of the specification evidences the patentees intended to limit the definition of ‘‘anti-slip roller’’ to one requiring a rigid mechanical connection between the roller and the treadmill belt.

The language of the specification and purposes of the

invention enumerated therein compel a narrow interpretation of

‘‘anti-slip roller.’’ This Court requires the terms in the claims

of a patent to be read consistently with the specification. See

10

Phillips, 415 F.3d at 1316 (noting the statutory basis for

requiring consistency between the specification and claims of a

patent) (citations omitted); see also United States v. Adams, 383

U.S. 39, 49 (1966) (‘‘[I]t is fundamental that claims are to be

construed in the light of the specifications and both are to be

read with a view to ascertaining the invention.’’). To that end,

reading a limitation from the specification into the claims is

appropriate where the patentee expresses a manifest intention to

do so. Hill-Rom, 755 F.3d at 1371.

This Court has found manifest intent to limit the claim scope

where the specification includes references to the invention as a

whole and describes a limitation consistently throughout the

specification. See, e.g., Retractable Tech., Inc. v. Becton,

Dickinson and Co., 653 F.3d 1296, 1304--05 (Fed. Cir. 2011) (finding

‘‘body’’ was limited to a one-piece body where: (1) the

specification described ‘‘[t]he invention [a]s a retractable

tamperproof syringe . . . that . . . features a one piece hollow

body;’’ (2) the specification only described embodiments with a

one-piece body; and (3) the specification described the prior art’s

failure to recognize an embodiment which could be molded as a

single piece) (emphasis added); Trading Techs. Int'l, Inc. v.

eSpeed, Inc., 595 F3d 1340, 1353--54 (Fed. Cir. 2010).

Particularly, use of ‘‘the present invention’’ language

combined with consistent description throughout the specification

may be enough to require narrow construction of a claim term.

Trading, 595 F3d at 1353--54. In Trading, this Court determined the

appropriate scope for the term ‘‘re-centering command’’ in a patent

11

claiming software. Id. at 1353. When affirming the district court’s

determination that the claimed re-centering was manual and not

automatic, this Court focused on the specification. Id. The court

noted that the specification: (1) included consistent description

of the re-centering function as manual; and (2) identified that

‘‘the present invention’’ addresse[d a particular problem] with a

one-click centering feature’’----a manual process. Id. While the

court expressed its general concern with reading limitations from

the specification into the claims, it ‘‘[took] some comfort against

this risk from the inventors' use of the term ‘the present

invention’ rather than ‘a preferred embodiment’’’ Id. It concluded

this phraseology constituted strong evidence of the inventors’

intent to limit the scope of their claims. Id. at 1354.

Here, the patentees demonstrated their intent that ‘‘anti-

slip roller’’ be construed narrowly in the specification. First,

both the ‘‘Summary of the Invention’’ and ‘‘Detailed Description’’

consistently describe the treadmill as featuring a rigid mechanical

connection between the anti-slip roller and the belt. (R. ¶¶ 4--5).

Like in Trading, where the specification only discussed a manual

re-centering function, the ’554 patent describes only a roller

with a rigid mechanical connection. (R. ¶¶ 4--5). Similar to the

specification of the patent-at-issue in Trading, which referred to

‘‘the present invention,’’ and described it having a manual re-

centering function, the ‘‘Detailed Description’’ of the ’554 patent

indicates ‘‘Figure 1 illustrates the present invention.’’ (R. ¶ 5)

(emphasis added). That section then proceeds to describe a roller

with a ‘‘rigid connection’’ between roller and belt accomplished

12

by a ‘‘plurality of pegs 131 that mate with matching holes . . .

so that the belt 110 moves exactly with the anti-slip roller.’’

(R. ¶ 5). The specification’s consistent reference to a rigid

connection between roller and belt suggests that any variant of

the invention must involve such mating.

Second, failure of the specification to recognize a roller

with a less rigid anti-slip mechanism, (R. ¶¶ 4--5), suggests no

such roller was contemplated. In particular, the second paragraph

of the ‘‘Detailed Description,’’ which describes a wide variety of

methods for creating the 1-2-1-3 vertical magnitude rise, (R. ¶

5), shows that the patentees were capable of broadly describing

the limitations in the claims. Nevertheless, the third paragraph

of that section, describing the anti-slip roller, was drafted much

more narrowly. (See R. ¶ 5) (describing only an anti-slip roller

featuring rigid mechanical connection between the roller and belt).

These conscious choices in drafting demonstrate the patentee’s

intent to limit the claim scope, not just a decision to illustrate

a single preferred embodiment. Cf. Liebel-Flarsheim Co. v. Medrad,

Inc., 358 F.3d 898, 906--08 (Fed. Cir. 2004) (comparing Federal

Circuit cases where the invention was limited to embodiments

disclosed in the specification based on the patentee’s drafting

choices to those where such limitation was rejected).

In fact, the only place where the patentees arguably express

an intent that ‘‘anti-slip roller’’ be construed broadly is in the

final paragraph of the written description. (R. ¶ 6). However,

this generic language is present in over 8,700 patents in a variety

of technology areas, (R. ¶ 7), and is hardly enough to overcome

13

the weight of evidence suggesting that a narrow interpretation was

intended. Construing ‘‘anti-slip roller’’ broadly on the basis of

this paragraph would also undermine the notice function of the

claims since the specification lacks specific evidence indicating

that the patentees contemplated non-rigid belt--roller mating. Cf.

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249

(Fed. Cir. 2008) (describing the importance of clear claim scope

to inform the public and inventor of their rights with respect to

patent infringement). Consequently, the constricted drafting of

the specification with respect to the ‘‘anti-slip roller’’

limitation is probative of the patentees’ intent to adopt a narrow

construction.

B. The specification also fails to identify any embodiments without rigid mating that would accomplish the intended purposes of the ‘‘anti-slip roller’’ limitation.

The specification only identifies embodiments containing

rigid mechanical mating between the treadmill roller and belt as

adequate to create the requisite continuous and even presentation

of the 1-2-1-3 vertical magnitude rise sequence. Consistent

interpretation between the different parts of a patent may require

the court to consider the purpose of the invention when construing

the claims. World Class Tech. Corp. v. Ormco Corp., 2014 WL 5314631,

*3--*5 (Fed. Cir. 2014). Along with the purpose of the invention as

a whole, the court should take into account the enumerated

purpose(s) of any particular claim limitation when interpreting

the coverage of that limitation. See Pall Corp. v. Hemasure Inc.,

181 F.3d 1305, 1310--11 (Fed. Cir. 1999) (concluding that a broad

interpretation of ‘‘gas outlet,’’ which would include a

14

‘‘hydrophilic membrane,’’ was impermissible where the purpose of

the limitation was to effect the release of gas from the claimed

system and a hydrophilic membrane failed to do so).

Here, the ‘‘Detailed Description’’ describes the roller as

‘‘ensur[ing] energy and motion from motor 120 are fully

transmitted . . . to belt 110 without slipping.’’ (R. ¶ 5). This

section goes on to note that the belt--roller connection ‘‘also

ensures belt 110 moves steadily and without jerking or sudden

change in speed, which can cause injury or interrupt the necessary

sequential rising and falling of the belt 110 and bumps 111 over

support rollers 150.’’ (R. ¶ 5). The only embodiment identified by

the specification to accomplish this purpose is one where the

treadmill roller and belt mate mechanically with one another. No

part of the specification suggests that less rigid mating could

accomplish this purpose.

C. The USPTO’s citation to prior art references encompassing a broader variety of ‘‘anti-slip rollers’’ is not sufficient to justify the broad interpretation advocated by the patentees.

The breadth of rollers described in the prior art cited by

the USPTO during prosecution and IPR does not require a broad

interpretation of the term at issue. The probative value of the

file wrapper to the claim construction analysis is limited. See

Phillips, 415 F.3d at 1317 (listing cases where the Federal Circuit

noted the ambiguity of the prosecution history as a reason to limit

its value during claim construction). Because the prosecution

history represents a negotiation between the patentee and the

patent examiner it can provide some insight regarding the

understanding of the claims by those parties. Id. (citation

15

omitted). However, unclear prosecution history cannot be used to

limit claims. Cordis Corp. v. Boston Scientific Grp., 561 F.3d

1319, 1329 (Fed. Cir. 2009). In fact, the purpose of the file

wrapper in claim construction analysis is typically limited to

determining whether any particular interpretations were expressly

disclaimed during the patent’s prosecution. See Phillips, 415 F.3d

at 1317 (citation omitted) (emphasis added); see also Hill-Rom,

755 F.3d at 1371 (describing the standard for prosecution

disclaimer as ‘‘exacting’’); Omega Eng’g v. Raytek Corp., 334 F.3d

1314, 1324 (Fed. Cir. 2003) (affirming that prosecution history is

primarily useful when there exists a clear disclaimer of claim

scope).

The prosecution of the ’554 patent is not probative of Gatto

and LeChat’s intentions regarding the scope of ‘‘anti-slip roller.’’

The only exchange between the patent examiner and the patentees

did not discuss the term at issue. (R. ¶¶ 8--9). Rather, the parties

only communicated regarding the vertical magnitude rise disclosed

in claim 1. (R. ¶¶ 8--9). While the examiner cited to a reference

disclosing an anti-slip roller without rigid mechanical mating,

that prior art was not applied in determining the claims’ validity.

(R. ¶ 8). Since the specific reason regarding why the examiner

cited the patent was not disclosed, the reference does not

necessitate a broader understanding of ‘‘anti-slip roller.’’ Even

if the citation was deemed probative of a broader understanding of

the claim term, its relevance is further limited by the differing

standards applied by the USPTO and the court. Phillips, 415 F.3d

at 1316 (explaining that the USPTO gives claims their ‘‘broadest

16

reasonable interpretation consistent with the specification’’);

see also M.P.E.P. § 2100 (8th ed. Rev. 7, Sept. 2008).

Similarly, IPR of the ’554 patent lacks any probative value

regarding the meaning of ‘‘anti-slip roller.’’ Because IPR of

the ’554 patent dealt with determining whether the invention was

obvious over the cited NYAN reference, (R. ¶¶ 10, 12), it required

consideration of the invention as a whole. See Sanofi-Synthelabo

v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008) (‘‘The

determination of obviousness is made with respect to the subject

matter as a whole, not separate pieces of the claim.’’). Therefore,

unlike an anticipation inquiry, the IPR here failed to apply a

claim-by-claim analysis that could illuminate the intended meaning

of the claim terms. Accordingly, this proceeding is of limited

relevance in the case now before this Court. Cf. Vitronics Corp.

v. Conceptronic, Inc., 90 F.3d 1576, 1582--83 (Fed. Cir. 1996)

(arguing that the relevance of the prosecution history to claim

construction analysis derives from the express representations

made regarding claim scope).

D. Dr. Grumpy Long’s testimony suggests that only a rigid belt--roller connection can ensure that the ’554 invention accomplishes the purposes enumerated in the specification.

The expert testimony proffered in this case suggests that

only rigid mating between the treadmill roller and belt can

accomplish the purposes of the invention. A broader interpretation

would thus run counter to the understanding of one skilled in the

inventive art1 and would be inconsistent with the content of the

1 Although the district court provided no direct definition of ‘‘a person of ordinary skill in the art’’ its determination that ‘‘Katze’s expert is better qualified to testify on the nature of the invention,’’ (Conc. of Law), must be

17

specification. The Court is permitted to consider the extrinsic

evidence----including expert testimony----when examination of the

intrinsic evidence leaves the claim language ambiguous. See

Phillips, 415 F.3d at 1317--19 (describing extrinsic evidence as

useful but less probative than the intrinsic record). Moreover,

this Court has repeatedly emphasized the relevance of expert

testimony to claim construction analysis. See, e.g., SkinMedica,

Inc. v. Histogen, Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013)

(citing Phillips, 415 F.3d at 1318); see also Pitney Bowes, Inc.

v. Hewlett-Packard Co., 182 F.3d 1298, 1308--09 (Fed. Cir. 1999)

(cited in Phillips 415 F.3d at 1318). Particularly, expert

testimony may be probative as long as it does not conflict with

the intrinsic evidence and should accordingly be considered against

a backdrop of that evidence. See Phillips, 415 F.3d at 1318--19

(‘‘We have viewed extrinsic evidence in general as less reliable

than the patent and its prosecution history in determining how to

read claim terms …’’). In considering the expert testimony, this

Court not only considers whether such testimony conflicts with the

specification, but also the specificity of the expert’s knowledge

regarding the inventive art. See, e.g., Merck & Co. v. Teva Pharms.

USA, Inc., 347 F.3d 1367, 1371--72 (Fed. Cir. 2003) (noting that

greater weight should be given to the testimony of a pharmacologist

than that of a general chemist when the patent-at-issue was

directed to a pharmaceutical substance).

Here, the specification and Long’s testimony together suggest

given deference by this Court. See Teva, slip op. at 13 (determining that subsidiary factual findings----including the weight given to an expert’s testimony----are reviewed for clear error per Fed. R. Civ. P. 52(a)(6)).

18

that Gatto and LeChat intended the anti-slip roller limitation to

require a rigid mechanical connection between the roller and the

treadmill belt. The specification describes the anti-slip roller

as (1) ensuring animal safety by preventing slipping between the

treadmill belt and the roller; and (2) guaranteeing effective

treatment of Feline HISS through the continuous and even

presentation of the 1-2-1-3 vertical magnitude rise sequence to

the subject animal. (R. ¶¶ 4--5). Long, a Ph.D. in veterinary

biomechanical engineering and renowned researcher on Feline HISS,

observed that these purposes can only be accomplished by

‘‘absolutely prevent[ing] belt slippage.’’ (R. ¶ 19). He

distinguished the ’554 patent from the typical treadmill because

any slipping resulting in the interruption of the 1-2-1-3 sequence

would ‘‘probably undermine the therapeutic value [of the device]

for [treatment of] HISS’’ even if some slipping may be generally

acceptable in other treadmills. (R. ¶ 19). Long consequently

endorses the rigid mechanical connection between the belt and

roller as described in the ’554 patent’s specification. (R. ¶ 19).

In light of this testimony, construing ‘‘anti-slip roller’’ broadly

would befall the same problem as the broad construction advocated

in Pall, and would fail to accomplish the only acknowledged

purposes of that limitation. Therefore, adopting the broader

interpretation put forth by Gatto and LeChat would run counter to

the understanding of the claim by a person skilled in treadmill

engineering in light of the specification. The patentees’

interpretation therefore should be rejected.

The district court’s conclusion that Long was more qualified

19

to testify on the nature of the invention was not clearly erroneous.

Even though Garfield has experience regarding human treadmill

construction, he has no comparable knowledge regarding the

treatment of Feline HISS. Garfield’s knowledge of the field is

therefore akin to that of the general chemist in Merck. On the

other hand, Long’s specific insight about the therapeutic treatment

of HISS is similar to the pharmacologist’s particular knowledge of

pharmaceutical substances. Garfield’s testimony was also properly

met with skepticism given his failure to provide reasons why his

definition of anti-slip roller is permissible in the context of a

treadmill for the treatment of Feline HISS. See, e.g., Phillips,

415 F.3d at 1318 (determining that conclusory, unsupported

assertions of experts are not useful to a court determining the

proper construction of claims).

Even if this Court determines the district court’s weighing

of the expert testimony is clearly erroneous, the intrinsic

evidence of the patentees’ intent to limit the scope of ‘‘anti-

slip roller’’ should be given greater weight than the testimony of

the appellants’ expert. See id. at 1318--19 (suggesting that

extrinsic evidence, in general, is due less weight because it is

susceptible to bias and is temporally remote from the time when

the patent claims were drafted).

II. THIS COURT SHOULD AFFIRM THE DISTRICT COURT’S DECISION REGARDING ANTICIPATION OF CLAIM 1 BECAUSE THE KOT ARTICLE WAS PUBLICLY AVAILABLE UNDER 35 U.S.C. 102(b).

The KOT article was sufficiently publicly available to

constitute a printed publication under 35 U.S.C. § 102(b). In the

court below, Katze was only required to prove with clear and

20

convincing evidence2 that the KOT article was publicly available

through either the Kottur database or the conference, brochures,

and posters. See Microsoft, 131 S. Ct. at 2242; In re Lister, 583

F.3d at 1311. Public accessibility is ‘‘the touchstone in

determining whether a reference is a ‘printed publication’’’ and

‘‘is determined on a case-by-case basis based on the facts and

circumstances surrounding the reference’s disclosure to members of

the public.’’ In re Lister, 583 F.3d at 1311. Because there is

sufficient evidence in the record showing that the KOT article was

publicly available through both sources named above, this Court

should find that the article was a printed publication.

A. The KOT article was publicly accessible because interested members in the public could locate the article through the Kottur database with reasonable diligence.

The KOT article was publicly accessible because interested

members in the public could have located the article through Kottur.

A reference is ‘‘publicly accessible if it was disseminated or

otherwise made available to the extent that persons interested and

ordinarily skilled in the . . . art exercising reasonable diligence,

can locate it.’’ Id. at 1311 (citation omitted). To this end,

proper indexing by subject matter is an important factor in

determining publicly accessibility. See In re Hall, 781 F.2d 897,

899--900 (Fed. Cir. 1986) (holding a single copy of a dissertation

in a foreign library was a printed publication because it was

2 ‘‘[C]lear and convincing evidence has been described as evidence which produces in the mind of the trier of fact an abiding conviction that the truth of the factual contentions are highly probable.’’ Buildex Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988) (citing Colorado v. New Mexico, 467 U.S. 310, 316 (1984)) (quotations omitted). Evidence that factual findings that are ‘‘likely’’ true does not meet the clear and convincing evidence standard. Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 830 (Fed. Cir. 1991).

21

indexed by subject matter in the library catalogue); cf. In re

Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (determining a student

thesis in a library was not a printed publication because the

thesis was only indexed by the author’s last name but not by

subject matter); see also In re Lister, 583 F.3d at 1315 (finding

a reference included in the Copyright Office’s automatic catalogue

was not a printed publication because the ‘‘catalogue was not

sorted by subject matter and could only be searched by either the

author's last name or the first word of the title of the work’’).

Here, as in In re Hall, the KOT article was properly indexed

by subject matter and searchable through the Kottur database. The

record shows that before the KOT article was removed and its search

index was deleted, it was ‘‘accessible through the Kottur Internet-

accessible search engine.’’ (R. ¶ 24). The KOT article was also

indexed with various keywords describing the subject matter----e.g.

‘‘physical therapy,’’ ‘‘variable-surface treadmill,’’ and ‘‘walking

therapies,’’ (R. ¶ 24). Because the ’554 invention discloses a

treadmill with variable bumps to provide physical therapy to cats,

(R. ¶ 3), these keywords are good descriptors of the invention.

Indeed, even Gatto and LeChat’s patent attorney located the KOT

article on Kottur while searching for potential prior art

references.3 (R. ¶ 21).

Although other relevant indexing keywords exist for the KOT

article, the public accessibility inquiry does not require indexing

3 Moreover, Katze does not bear the burden of showing that any interested person actually received the KOT article. See Lister, 583 F.3d at 1314 (concluding that once public accessibility is proven, there is no requirement to show that particular members of the public actually received the reference).

22

using every possible keyword. See In re Lister, 583 F.3d at 1315.

What matters is that the reference can be located through existing

keywords with reasonable diligence. Id. For instance, In re Lister

held that a reference about playing golf included on two commercial

databases was publicly accessible even though the reference was

not indexed by keywords such as ‘‘tee’’ or ‘‘ball.’’ Id. This Court

found it sufficient that the reference was indexed by keywords

such as ‘‘golf’’ and ‘‘handicap,’’ and determined that a reasonably

diligent researcher would have located the reference by searching

for ‘‘golf’’ in combination with ‘‘handicap.’’ Id. at 1315--16.

Similarly, in this case, a reasonably diligent researcher could

have located the KOT article by searching keywords such as

‘‘physical therapy,’’ ‘‘variable-surface treadmill,’’ and ‘‘walking

therapies’’ on Kottur. Consequently, the KOT article was publicly

accessible through the Kottur database.

B. The KOT article was publicly accessible because it was generally available through the Kottur database and the conference brochures and posters.

Factors considered by this Court to show public accessibility

support the conclusion that the KOT article was generally available

through Kottur and the brochures and posters disseminated at

conferences. Moreover, the abstract, brochures, and posters also

meaningfully directed the interested public to the KOT article,

and KOT actively advertised availability of the article. A

reference is publicly accessible when it is generally available.

Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir.

2006); In re Lister, 583 F.3d at 1311.

23

1. All relevant factors show that the KOT article was publicly accessible.

All relevant factors in this case weigh in favor of finding

the KOT article was publicly accessible. To determine whether a

reference was publicly accessible, a court ‘‘must consider all of

the facts and circumstances surrounding the disclosure.’’ In re

Lister, 583 F.3d at 1312. This Court announced four exemplary

factors that bear on this determination: (1) the length of time

the display was exhibited; (2) the expertise of the target audience;

(3) the existence (or lack thereof) of reasonable expectations

that the material displayed would not be copied; and (4) the

simplicity or ease with which the material displayed could have

been copied. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.

2004). Here, all four factors weigh in favor of finding that the

KOT article was publicly accessible.

First, as to the duration of the display, the KOT article was

posted on Kottur for three years, and the brochures and posters

for the KOT article were distributed or displayed at more than 10

conferences. (R. ¶¶ 23--24). This is a much longer duration than

the slides at issue in In re Klopfenstein, which were displayed

for only three days. 380 F.3d at 135. Second, as for the target

audience, Kottur was accessible to any person through its search

engine. (R. ¶ 24). Anyone, skilled or unskilled in the art, could

have searched for the KOT article using Kottur’s search function.

(R. ¶ 24). In addition, over 100 people in the exercise equipment

and physical therapy industries attended each of the more than ten

conferences where KOT’s brochures and posters were distributed or

24

displayed. (R. ¶ 23). Third, as for the ease or simplicity of

copying, a person could have simply downloaded the KOT article

through Kottur after purchase, or could otherwise have obtained a

copy from KOT directly. (R. ¶¶ 14, 23).

Finally, as for expectations of confidentiality, the record

does not show that access to the KOT article was restricted. KOT

regarded the article as proprietary information for sale and

actively advertised its availability at conferences in the United

States and abroad. (R. ¶ 23). In addition, the KOT article was

posted on Kottur for three years. (R. ¶¶ 23--24). Although KOT

imposed some restrictions on Mao’s use of the KOT article, this

occurred years after the ’554 application. (R. ¶ 22). Such limited

restrictions did not give rise to the level of an expectation

confidentiality since KOT actively advertised the article for sale

and licensing. See Cooper Cameron Corp. v. Kvaerner Oilfield Prods.,

Inc., 291 F.3d 1317, 1324 (Fed. Cir. 2002) (holding that a report

was publicly accessible even though it contained a

‘‘confidentiality notice relating to financial information’’

because the report was made available to ‘‘joint venture members,

participants, and their contractors and licensees’’).4 Accordingly,

each of the Klopfenstein factors weigh in favor of finding that

the KOT article was publicly available.

4 The KOT article’s case of public accessibility is even stronger than Cooper Cameron because no evidence shows that the KOT article included an express confidentiality notice.

25

2. The KOT article was publicly accessible because the abstract on Kottur and the brochures and posters available at conferences meaningfully directed the interested public to the full article.

The KOT article was publicly accessible because the abstract

on Kottur and the brochures and posters made available at over ten

conferences meaningfully directed the interested public to KOT to

obtain the full article. A reference is a printed publication as

long as some research aids meaningfully assist interested members

of the public to locate it with reasonable diligence. SRI Int’l,

Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir.

2008). For example, this Court held that a reference stored on

microfilms was publicly accessible because an abstract, which

described the reference and was published, properly indexed, and

catalogued could lead the interested public to the reference. In

re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981). Similarly, in

Bruckelmyer this Court found that two figures not included in an

issued Canadian patent but included in the file wrapper were

printed publications, because the issued patent could lead an

interested person to the figures. 445 F.3d at 1378.

Like the abstract in In re Wyer, which described and directed

interested persons to the full reference, the abstract at issue

here described the content of the full KOT article. (R. ¶ 21). The

fact that the abstract led Maru to contact KOT directly for the

article, (R. ¶ 21), also suggests that it meaningfully directed

the interested public to the full KOT article----just like the

abstract in In re Wyer. The brochures and posters distributed at

the conferences also served to direct interested parties to contact

KOT for the article. Even more so than in Bruckelmyer----where the

26

court determined that an issued patent could have led an interested

person to two figures only available in the file history----the

brochures and posters seem to have expressly directed interested

parties to the full KOT article. In fact, unlike the issued patent

in Bruckelmyer, which did not overtly hint at the existence of the

figures at issue, here the brochures at least included a fuzzy

picture of the treadmill described in the KOT article. (R. ¶ 23).

Moreover, the fact that two persons approached KOT about the

article because of the brochures illustrates their effectiveness

in directing interested persons to KOT for the full article. (R.

¶ 23).

3. The KOT article was publicly accessible despite the requirement that an interested party purchase the reference before obtaining access.

Having to pay a fee before obtaining a copy of the KOT article

does not affect the article’s public accessibility. See In re

Lister, 583 F.3d at 1313 (noting that neither the difficulty of

traveling to Washington D.C. to inspect a reference in the

Copyright Office, nor the difficulty in accessing the reference on

Westlaw----which requires payment of a subscription fee----prevented

the reference from being deemed publicly accessible); see also In

re Hall, 781 F.2d at 899--900 (the difficulty of traveling to a

foreign country to inspect a reference did not prevent the

reference from being publicly accessible).

C. Finally, the KOT article was publicly accessible even if no evidence shows actual receipt of the article before the critical date.

The KOT article was publicly accessible even if the record

provides no evidence to show actual receipt of the article because

27

Katze bore no burden to prove that any specific member of the

interested public actually received the KOT article. See In re

Lister, 583 F.3d at 1314 (once public accessibility is proven,

there is no requirement to show that particular members of the

public actually received the reference). Indeed, the fact that Mao

actually received a copy of the KOT article makes the case for

public accessibility even stronger. (R. ¶ 22).

Consequently, this Court should find that KOT article was

publicly available under 35 U.S.C. § 102(b) prior to the ’554

patent’s critical date.

CONCLUSION AND RELIEF REQUESTED

Accordingly, this Court should affirm the district court’s

construction of the ‘‘anti-slip roller’’ term in claim 2 and the

jury verdict that the KOT article anticipated claim 1.

Date: January 23, 2015 Respectfully Submitted,

/s/ Marta Chlistunoff Marta Chlistunoff /s/ Jun Zheng Jun Zheng ATTORNEYS FOR APPELLEE

CERTIFICATE OF SERVICE

We certify that on the 23rd day of January, 2015, a true and correct copy of this document was served on counsel of record for all parties in compliance with Fed. R. App. P. 25(b). By: /s/ Marta Chlistunoff /s/ Jun Zheng January 23, 2015 Marta Chlistunoff Jun Zheng Date ATTORNEYS FOR APPELLEE

CERTIFICATE OF COMPLIANCE

We certify that the foregoing brief meets the technical rules promulgated by the Federal Circuit Court of Appeals. The appellee’s brief is in 12-point Courier font with a one-inch margin on all sides. This brief conforms to all page limitations set by this Court. By: /s/ Marta Chlistunoff /s/ Jun Zheng January 23, 2015 Marta Chlistunoff Jun Zheng Date ATTORNEYS FOR APPELLEE

university of texas 2017 giles sutherland rich ... · university of texas 2017 giles sutherland...

Documents