CamelBak Products, LLCv.Ignite USA, LLC

Patent Trial and Appeal Board

Jun 7, 2016

14094128 (P.T.A.B. Jun. 7, 2016)

Trials@uspto.gov Paper 37
571-272-7822 Entered: June 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CAMELBAK PRODUCTS, LLC,
Petitioner,

v.

IGNITE USA, LLC,
Patent Owner.
____________

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Patent 8,863,979 B2
____________

Before SALLY C. MEDLEY, KEN B. BARRETT, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Petitioner, CamelBak Products, LLC, filed a Petition requesting an
inter partes review of claims 1, 3, 6, 7, and 10–15 of U.S. Patent No.
8,863,979 B2 (Ex. 1001, “the ’979 patent”) under 35 U.S.C. §§ 311–319.
Paper 1 (“Pet.”). Patent Owner, Ignite USA, LLC, filed a Preliminary
Response. Paper 10 (“Prelim. Resp.”). Upon consideration of the Petition
and Preliminary Response, on August 26, 2015, we instituted an inter partes
review of claims 1, 3, 6, 7, and 10–15 on two grounds of unpatentability,
pursuant to 35 U.S.C. § 314. Paper 15 (“Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response and Petitioner filed a Reply. Paper 19 (“PO Resp.”); Paper 22
(“Pet. Reply”).
Patent Owner filed a Motion for Observation on Cross-Examination
Testimony on the second deposition of Dr. Alexander H. Slocum, Ph.D.,
Petitioner’s declarant. Paper 29 (“PO Mot. for Observation”). Petitioner
filed an Opposition to the Motion for Observation. Paper 33 (“Pet.
Observation Opp.”).
Patent Owner filed a Motion to Exclude Exhibits 1004–1007, Exhibits
1010–1012, testimonial evidence provided during the second deposition of
Dr. Slocum, and the opinions and conclusions of Dr. Slocum. Paper 30
(“PO Mot. to Exclude”). Petitioner filed an Opposition to the Motion to
Exclude and Patent Owner filed a Reply. Paper 34 (“Pet. Exclude Opp.”);
Paper 35 (“PO Exclude Reply”).
An oral hearing was held on May 9, 2016, and a transcript of the
hearing is included in the record. (Paper 36 (“Tr.”)).
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The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1, 3, 6, 7, and 10–15 of the ’979
patent are unpatentable.
A. Related Matter
According to Petitioner, the ’979 patent is involved in the following
lawsuit: Ignite USA, LLC v. CamelBak Prods., LLC, No. 14-cv-09210 (N.D.
Ill.). Pet. 1.
B. The ’979 Patent
The ’979 patent relates to “a lid for a beverage container having a
drop-down seal assembly for easy cleaning of the seal assembly and the
associated drink apertures.” Ex. 1001, 1:47–49. The seal assembly is
movable between a first, operable position and a second, cleaning position.
Id. at 1:55–57.
C. Illustrative Claims
Claims 1, 10, and 13 are the only independent claims. Claims 3, 6, 7,
11, 12, 14, and 15 depend directly or indirectly from independent claim 1,
10, or 13.
Claim 1, reproduced below, is illustrative:
1. A lid assembly for a beverage container,
comprising:
a lid housing having a drink aperture;
a seal arm connected to the lid housing and movable
between a first position, wherein the seal arm is adjacent the
drink aperture, and a second position, wherein the seal arm is
distal the drink aperture, the seal arm being connected to the lid
housing in the first position and the second position, the first
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position being an operable position for assisting in opening and
closing the drink aperture, and the second position being a
cleaning position wherein the drink aperture is open for
cleaning the lid assembly and wherein the seal arm is not
capable of assisting in closing the drink aperture in the second
position;
a drink seal connected to one of the drink aperture and
the seal arm to assist in sealing the drink aperture; and,
a trigger member connected to the lid housing, wherein
the trigger member is capable of operating the seal arm in the
first position, and wherein the seal arm cannot be operated by
the trigger member in the second position.
Ex. 1001, 11:36–55.
D. Grounds of Unpatentability
We instituted an inter partes review of claims 1, 3, 6, and 10–15 on
the ground of anticipation by Oosterling1 under 35 U.S.C. § 102(b), and we
instituted an inter partes review of claim 7 on the ground of obviousness
over Oosterling under 35 U.S.C. § 103(a).

II. ANALYSIS
A. Level of Skill of Person in the Art
Petitioner and Patent Owner dispute the appropriate level of ordinary
skill in the art. Compare Pet. 11, with PO Resp. 19.
We find that the level of ordinary skill in the art is reflected by the
prior art of record, and the dispute between Petitioner and Patent Owner is
not determinative of any issue in this proceeding. See In re GPAC Inc., 57
F.3d 1573, 1579 (Fed. Cir. 1995); see also Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001).

1 WO Publication 2005/115204 A1, published Dec. 8, 2005. Ex. 1003
(“Oosterling”).
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B. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted
sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
Under the broadest reasonable construction standard, claim terms are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
However, an inventor may provide a meaning for a term that is different
from its ordinary meaning by defining the term in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
1. “connected” (all challenged claims)
Independent claims 1, 10, and 13 recite that a seal arm is “connected
to the lid housing” in the first and second positions. Ex. 1001, 11:41–43,
12:39–40, 12:64–65. Additionally, independent claim 1 and dependent
claims 12 and 14 recite that a trigger member or actuator is “connected to
the lid housing.” Id. at 11:52, 12:53, 13:10.
In its Preliminary Response, Patent Owner contends that the term
“connected” requires a “permanent, secure, [and] non-removable”
connection. Prelim. Resp. 11–12; see also id. at 13–14, 17 (discussing the
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lack of “permanent” connections in asserted prior art). Moreover, in its
Patent Owner Response, Patent Owner contends that the Board’s
preliminary construction of “connected” as including non-permanent
connections, see Dec. 7, “misconstrue[s] Patent Owner’s use of the term
[permanent].” PO Resp. 14 n.2. Patent Owner contends that “connected”
should be construed instead as “a connection that prevents the component
from being misplaced or disassociated from the lid assembly in both the
operable and cleaning positions.” Id. at 17–18. By contrast, Petitioner
contends implicitly that this term also includes non-permanent connections.
See Pet. 19–20, 23–24, 27–28, 31–32, 34, 37, 39–41, 45, and 48 (applying
prior art with a broader construction of “connected”); see also Pet. Reply 1.
Patent Owner’s Response does not explain how the construction
offered therein varies from that proposed in the Preliminary Response. At
the oral hearing, Patent Owner admitted that the two proposed constructions
present a “difference without a distinction,” with respect to the prior art. Tr.
17:22–18:2. Indeed, a “permanent” connection “prevents the component
from being misplaced or disassociated.” Id. at 17:4–10. Therefore, we
consider these constructions together.
In support of its construction, Patent Owner directs us to the ’979
patent Specification, which purportedly uses the term “connected” to
describe “a purposeful connection that prevents [components] from being
removed from the lid assembly.” PO Resp. 11–12 (citing Ex. 1001, 1:33–
51, 4:35–45).
We have reviewed the passages to which Patent Owner directs our
attention and we are not persuaded that the ’979 patent Specification
provides a special definition. In particular, the Specification does not define
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“connected” with clarity, deliberateness, and precision. See In re Paulsen,
30 F.3d at 1480. Although the Specification discloses an embodiment in
which components “are at all times connected to the lid assembly . . . [and]
are not removed and therefore cannot be misplaced or disassociated from the
lid assembly,” (see Ex. 1001, 4:35–45), it does not redefine explicitly the
term “connected” to require that all connections are permanent and prevent
disassociation of components. Specifically, these passages contain no
indication that they provide a definition for “connected” rather than an
example of what a connection may entail. See In re Paulson, 30 F.3d at
1480. As such, Patent Owner’s proposed construction goes beyond the plain
and ordinary meaning of the term by adding elements from the Specification
into the term. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
(Fed. Cir. 2004) (“Even when the specification describes only a single
embodiment, the claims of the patent will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using
‘words or expressions of manifest exclusion or restriction.’”) (quoting
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)).
Patent Owner argues that In re Paulson is distinguishable because the
’979 patent Specification “expressly includes the word ‘importantly’ before
declaring that the trigger member and seal arm are connected ‘at all times’
and in such a way that they ‘cannot be misplaced or disassociated from the
lid assembly.’” PO Resp. 15. Patent Owner contrasts this disclosure with
that in Paulson, which did not clearly redefine the term “computer,” but
“‘describe[d] in a general fashion certain features and capabilities desirable
in a portable computer.’” Id. at 14–15 (quoting Paulson, 30 F.3d at 1480).
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We are not persuaded. Although the term “[i]mportantly” is used in
relation to the cited embodiment, the ’979 patent Specification as a whole
suggests that this disclosure is merely a description of “certain features or
capabilities desirable in a [‘connection’],” as in Paulson, rather than a
redefinition of the term. For example, the Specification states that “the
present disclosure is to be considered as an exemplification . . . and is not
intended to limit the broad aspect of the invention to the embodiments
illustrated.” Ex. 1001, 4:9–13. Furthermore, the Specification uses the
terms “connection” and “connected” in reference to other non-permanent
connections that permit disassociation of the connected components. For
example, the Specification discloses a “connection between the container
body 12 and the lid assembly 14” that is non-permanent and permits
disassociation. Ex. 1001, 4:63–67, Figs. 1–2; see also id. at 7:7–11, 7:49–
54, Fig. 5. This usage of the term suggests that the inventors did not
redefine “connected” to include only permanent connections.
Patent Owner also argues that the term “connected” is “subject to
varying meanings” and, therefore, the Specification should guide its
interpretation. PO Resp. 15–17 (citing Kaneka Corp. v. Xiamen
Kingdomway Grp. Co., 790 F.3d 1298 (Fed. Cir. 2015)). This argument is
not persuasive, however, because Patent Owner has not shown persuasively
that the Board’s preliminary construction of “connected” is inconsistent with
the broad usage of this term within the Specification. Indeed, the
construction adopted preliminarily by the Board encompasses fully all
embodiments disclosed in the ’979 patent. See id. at 16 n.3; Ex. 1001, 4:9–
12, 4:35–45.
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Patent Owner directs our attention to the Declaration of Jeff
Steininger. PO Resp. 12 (citing Ex. 2002 ¶ 44) (the “Steininger
Declaration”). We have reviewed the cited portions; however, we afford this
testimony little if any weight. Mr. Steininger’s opinion on claim
construction is supported only by the embodiment disclosed at column 4,
lines 35–45 of the ’979 patent. As discussed above, this portion of the
Specification discloses one embodiment of a connection but other passages
of the Specification employ more broadly the term “connected.” See, e.g.,
Ex. 1001, 4:9–12, 4:63–67.
Patent Owner also directs our attention to deposition testimony of Dr.
Slocum, Petitioner’s declarant. PO Resp. 12–13 (citing Ex. 2004, 92:5–
100:18). We have reviewed the cited portions; however, we afford this
testimony little if any weight because this testimony also concerns only the
embodiment disclosed at column 4, lines 35–45 of the ’979 patent.
Furthermore, we are unpersuaded by Patent Owner’s argument that Dr.
Slocum’s agreement that “the claim is consistent with, and does not
contradict or vice versa, the text in Column 4,” (Ex. 2004, 96:18–22),
supports Patent Owner’s narrow construction. That the claim may be
consistent with the embodiment disclosed at column 4, lines 35–45 of the
’979 patent does not restrict the term to that embodiment.
Finally, Patent Owner argues that the ’979 patent solved the problem
of lid component separation. PO Resp. 11–12 (citing Ex. 1001, 1:36–39;
Ex. 2002 ¶ 35), 36. However, the cited portion of the Specification is
directed to a slightly different problem, e.g., that “components of the seal
mechanism are difficult to properly clean.” Furthermore, Patent Owner’s
cited evidence does not establish that either of these problems was solved by
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a permanent connection, rather than the disclosed second cleaning position.
See, e.g., Ex. 1001, 1:55–60 (describing a second cleaning position in which
“the first drink aperture is open for cleaning the lid assembly in the cleaning
position”). Finally, we have reviewed the cited portion of the Steininger
Declaration in support of this argument, but we afford it little if any weight
because Mr. Steininger does not provide an adequate factual basis, including
citation to the ’979 patent Specification, to support his testimony that the
’979 patent “prevented the components from being disassociated.” Ex. 2002
¶ 35; see 37 C.F.R. § 42.65(a).
In sum, we find that a person of ordinary skill in the art would have
understood the term “connected,” as used in the ’979 patent, to include non-
permanent connections. Patent Owner urges a construction that is too
narrow, by focusing on the preferred embodiment while disregarding the
more expansive disclosure of the patent. We must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Van Geuns, 988
F.2d at 1184. Here, Patent Owner chose to claim its invention broadly, and
we are provided insufficient evidence before us to construe the claim more
narrowly.
For the reasons discussed above, “connected” does not require a
permanent connection and does not require that the connection “prevent the
component from being misplaced or disassociated from the lid assembly in
both the operable and cleaning positions,” as Patent Owner urges. PO Resp.
17–18. Rather, “connected” includes non-permanent connections.
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2. “lid assembly” (all challenged claims)
The preambles of the challenged claims recite a “lid assembly.” Ex.
1001, 11:36, 11:60, 12:16, 12:20, 12:32, 12:49, 12:52, 12:57, 13:9, 13:12.
Additionally, “the lid assembly” is referred to in the body of claims 1, 10,
and 13. Id. at 11:46–47, 12:45–46, 13:4.
Patent Owner contends that this preamble phrase should be construed
as “a component separate and apart from the body or vessel of the beverage
container.” PO Resp. 18.
“In general, a preamble limits the invention if it recites essential
structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
the claim,” but does not limit the invention “where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations
omitted).
The preambles of the challenged claims do not recite essential
structure and are not necessary to give life, meaning, or vitality to the
claims. For example, the body of claim 1 recites a lid housing, a seal arm, a
drink seal, and a trigger member, which together present a structurally
complete invention that has meaning independent of the preamble. Ex.
1001, 11:37–55. The preamble indicates merely how these components are
intended to be used, i.e., as a “lid assembly for a beverage container.” Id. at
11:36. Nothing in the portions of the Specification cited by Patent Owner
compels a different conclusion. See id. at 4:13–15.
Therefore, we conclude that the preamble phrase “lid assembly” is not
limiting and does not require construction as advocated by Patent Owner.
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C. Anticipation by Oosterling
Petitioner contends that claims 1, 3, 6, and 10–15 are anticipated
under 35 U.S.C. § 102(b) by Oosterling. Pet. 11, 18–39. In its Petition,
Petitioner explains how Oosterling discloses each and every element of the
challenged claims. Id. at 18–39.
Patent Owner argues that Oosterling does not disclose “a lid
assembly” comprising a “first position” (claims 1, 10, 13); “a seal arm []
connected to the lid housing” (claims 1, 10, 13); “a first position, wherein
the seal arm is adjacent the drink aperture” (claims 1, 10, 13); “a trigger
member [or ‘actuator’] connected to the lid housing” (claims 1, 12, 14); a
“seal arm [that] pivots away from a drink surface of the lid housing”
(claim 3); or a “trigger member [that] is pivotally connected to the lid
housing” (claim 6). PO Resp. 23–41.
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1. Oosterling
Oosterling relates generally to a closable drinking beaker. Ex. 1003,
Abstract. Oosterling’s Figure 8a is reproduced below.

Figure 8a depicts drinking beaker 2, to which lid 4 may be attached. Id. at
3:12–13, 8:5–9. As shown in Figure 8a, lid 4 includes drinking nozzle 7
with drinking aperture 8. Id. at 8:24–25. Drinking nozzle 7 may be closed
by valve 6, which is located on, and moved by, lever 37. Id. at 8:29–31.
“[L]ever 37 is hingedly connected to the inside of the lid 4 by a hinge
coupling . . . formed by shaft supports 33 into which shaft journals 36 can be
fitted.” Id. at 8:31–34. As shown in Figure 8a, lever 37 also includes spring
element 40 at its end and projection 35 extending from the top of the lever.
Id. at 8:16–19, 8:34–38.
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Oosterling’s Figure 8d is reproduced below.

Figure 8d depicts lid 4 attached to beaker 2. As shown in the figure, when
lid 4 is placed on beaker 2, spring element 40 “presses against the inside of
the beaker” and “ensures that the valve 6 seals the drinking nozzle 7.” Id. at
8:34–38. From this position, valve 6 may be opened by pressing operating
arm 52 toward the side of beaker 2, causing operating arm’s pressure surface
43 to “press the projection 35 downward . . . as a result of which the lever 37
moves down and the valve 6 opens,” to permit liquid to flow out of the
beaker’s nozzle. Id. at 9:7–12; see also id. at 8:16–19, 9:26–32.
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Oosterling’s Figure 9 is reproduced below.

Figure 9 depicts lid 4 removed from beaker 2. As shown in Figure 9, the
lid’s sidewall includes opening 34 through which spring element 40 may
extend, when the lid is removed from the beaker. Id. at 9:13–19. Oosterling
discloses that this arrangement permits lever 37 to rotate downward such
that “the top of the valve 6 is readily accessible for cleaning when the lid 4
with the lever 37 is placed in a dishwasher.” Id.2
2. Analysis
Petitioner provides detailed analysis showing where Oosterling
discloses each limitation of the challenged claims. Pet. 18–39.
a. Independent Claims 1, 10, and 13
For independent claim 1, Petitioner contends that Oosterling discloses
a lid housing (i.e., lid 4) having a drink aperture (i.e., drinking aperture 8,
having inlet and outlet). Id. at 18–19 (citing Ex. 1003, 3:23–25, 8:24–25,
9:30–32). Petitioner contends that Oosterling discloses a seal arm (i.e.,

2 Although Figure 9 depicts an alternate embodiment, having convex valve 6
and guide cams 48, the downward rotation of lever 37 depicted in Figure 9
appears identical to the operation disclosed with respect to the embodiment
shown in Figures 8a–8d. Compare Ex. 1003, 9:13–19, with id. at Fig. 9,
10:39–11:12.
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lever 37) that is movable between a first position (i.e., when lid 4 is attached
to beaker 2; Fig. 8d) and a second position wherein the seal arm is distal the
drink aperture (i.e., when lid 4 is not attached to beaker 2; Fig. 9). Id. at 19–
23 (citing Ex. 1003, 8:31–9:3, 9:15–17, Figs. 8a–8b, Fig. 9). Petitioner
contends that Oosterling discloses that the first position is an operable
position for assisting in opening and closing the drink aperture, (id. at 24–25
(citing Ex. 1003, 8:34–9:3, 9:26–33, Fig. 8d)), and the second position is a
cleaning position wherein the drink aperture is open for cleaning the lid
assembly. Id. at 25 (citing Ex. 1003, 9:15–19, Fig. 8c, Fig. 9). Petitioner
contends that Oosterling discloses that the seal arm is not capable of
assisting in closing the drink aperture in the second position. Id. at 25–27
(citing Ex. 1003, 8:34–9:3, 9:26–33, Fig. 8d , Fig. 9). Petitioner contends
that Oosterling discloses a drink seal (i.e., seal ring) connected to the seal
arm to assist in sealing the drink aperture. Id. at 27 (citing Ex. 1003, 4:8–10,
10:14–15). Petitioner contends that Oosterling discloses a trigger member
(i.e., operating arm 52), wherein the trigger member is capable of operating
the seal arm in the first position and wherein the seal arm cannot be operated
by the trigger member in the second position. Id. at 27–29 (citing Ex. 1003,
8:20–21, 8:34–9:3, 9:26–33, 12:34–36, Fig. 8d, Fig. 9).
Independent claim 10 contains substantially similar limitations as
claim 1, and Petitioner provides substantially similar contentions. See Ex.
1001, 12:32–48; Pet. 31–34. Claim 10 varies from claim 1, however, in that
it specifies that the first position includes an “open position” and “closed
position,” and that “the [second] cleaning position of the seal arm [is]
different from the open position and the closed position” of the first
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position.3 Ex. 1001, 12:40–48. Petitioner contends that Oosterling discloses
that the second cleaning position of the seal arm is different from open and
closed positions of the first position. Pet. 32–34 (citing Ex. 1003, 8:34–39,
9:13–33, Fig. 8d, Fig. 9).
Independent claim 13 contains substantially similar limitations as
claim 1, and Petitioner provides substantially similar contentions. See Ex.
1001, 12:57–13:8; Pet. 35–37. Claim 13 varies from claim 1, however, in
that it specifies that the seal arm is “actuated.” Ex. 1001, 12:59. Petitioner
contends that Oosterling discloses an actuated seal arm (i.e., lever 37). Pet.
35 (citing Ex. 1003, 9:1–3, 26–33).
We are persuaded by Petitioner’s showing, and adopt it as our own,
that Oosterling discloses these elements of independent claims 1, 10, and 13.
Patent Owner does not contend that any of these limitations are not met by
Oosterling.
Patent Owner disputes whether Oosterling discloses the following
limitations of independent claims 1, 10, and 13: (1) “a lid assembly” that
comprises “a first position”; (2) a “seal arm connected to the lid housing . . .
in the first position and the second position”; (3) “a first position, wherein
the seal arm is adjacent the drink aperture.” PO Resp. 34–41. Patent Owner
also disputes whether Oosterling discloses the following limitation of
independent claim 1: “a trigger member connected to the lid housing.” Id. at
23–33.

3 Claim 1 does not recite an “open position” or a “closed position,” or that
they are different from the cleaning position. See Ex. 1001, 11:36–55.
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(1) “a lid assembly” and “a first position” (Claims 1, 10, and 13)
To meet the limitation requiring “a lid assembly” and “a first
position,” the Petition provides that “[i]f the preamble is determined to be
limiting, Oosterling discloses a lid (lid assembly) for a beaker (beverage
container).” Pet. 18 (citing Ex. 1003, 3:23–25). The Petition also provides
that Oosterling discloses a “lever 37 (seal arm) . . . [that is] in the first
position whenever the lid 4 is attached to the beaker 2.” Id. at 19–21 (citing
Ex. 1003, 8:31–9:3, Figs. 8a–8b, Fig. 8d).
Patent Owner argues that Oosterling’s “lid assembly comprises a first
(operable) position only when the lid is attached to the beaker” and,
therefore, fails to comprise a first position “independent of the [beaker].”
PO Resp. 38–39 (emphasis omitted) (citing Ex. 2002 ¶¶ 56, 58, 65, 67–68,
72, 75; Ex. 1008 ¶¶ 24.g, 27.b).
Patent Owner’s argument is based on a construction of the preamble
as limiting and as requiring that the “lid assembly” is a “component separate
and apart from the body or vessel of the beverage container.” As explained
in the Claim Interpretation section of this Decision, (see Section II(B)), we
do not construe the preamble to be limiting and we do not construe “lid
assembly” as Patent Owner urges. Patent Owner makes no other arguments
regarding this limitation of claims 1, 10, and 13. For the reasons above, we
are persuaded by Petitioner’s showing, and adopt it as our own, that
Oosterling discloses a lid assembly and a first position as claimed. Ex.
1003, 3:23–25, 8:31–9:3, Figs. 8a–8b, Fig. 8d.
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(2) “a seal arm [] connected to the lid housing . . . in the first position
and the second position” (Claims 1, 10, and 13)
To meet the limitation requiring “a seal arm [] connected to the lid
housing . . . in the first position and the second position,” the Petition
provides that Oosterling discloses:
a lever 37 (seal arm) that is . . . “hingedly connected to the
inside of the lid 4 by a hinge coupling, which in this
embodiment is formed by shaft supports 33 into which shaft
journals 36 can be fitted.” These journals, or pins, and the
corresponding shaft supports 33, connect the lever 37 to the lid
4, allowing the seal arm to rotate to open and close the drink
aperture.
Pet. 19–20 (citation omitted; citing Ex. 1003, 8:31–34, Fig. 8a– 8b). The
Petition also provides that Oosterling’s lever 37 is connected in the first and
second positions. Id. at 23–24 (citing Ex. 1003, 8:31–34, 10:33–39, 11:13–
14, 11:23–24, Figs. 8a–8d, Fig. 9).
Patent Owner argues that Oosterling’s “loose hinge is not a
connection” because it “can and will be removed under minimal forces.” PO
Resp. 35–37 (citing Ex. 2002 ¶¶ 18, 79; Ex. [2004], 156:12–25).
Patent Owner’s arguments are based on a narrow construction of the
term “connected” to require a permanent connection, e.g., a connection that
prevents disassociation of the connected component. As explained in the
Claim Interpretation section of this Decision, (see Section II(B)), we do not
construe “connected” so narrowly. Patent Owner makes no other arguments
regarding this limitation of claims 1, 10, and 13. For the reasons above, we
are persuaded by Petitioner’s showing, and adopt it as our own, that
Oosterling discloses a seal arm connected to the lid housing in the first and
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second positions. Ex. 1003, 8:31–34, 10:33–39, 11:13–14, 11:23–24, Figs.
8a–8d, Fig. 9.
Nonetheless, even under Patent Owner’s proposed construction, we
are persuaded by Petitioner’s showing that Oosterling discloses “a seal arm
[] connected to the lid housing” in the first and second positions. Petitioner
has shown that Oosterling’s seal arm (i.e., lever 37) is “hingedly connected”
to the lid housing through the fitting of shaft journals 36 into shaft supports
33, and remains so connected in both the first and second positions. Pet. 19–
20, 23–24. Oosterling need not state specifically that this hinged connection
will not unintentionally disconnect, (see PO Resp. 36), because Oosterling
shows explicitly shaft journals 36 retained within shaft supports 33 in a
secure manner.4 See Ex. 1003, Fig. 8b (showing shaft journal 36 retained
within hole 53 of support 33); see also id. at 12:21–26 (claiming a pin and
hole connection), 11:14–23 (disclosing an alternative lever 37 that is
removable for separate cleaning).
Patent Owner provides no persuasive evidence to rebut this showing,
or to support its contention that the connection “can and will be removed
under minimal forces.” PO Resp. 35–36. Patent Owner’s reliance on the
Steininger Declaration is unfounded. Mr. Steininger testifies:
While I agree that the lever 37 shown in Oosterling is
connected by the shaft and supports shown in Fig. 8b, I also
understand this to be a very “loose” connection . . . . Because of

4 We are not persuaded by Patent Owner’s suggestion that Dr. Slocum
provides an unsupported opinion on obviousness through his testimony that
it is “implicit” that Oosterling’s coupling would not disconnect. PO Resp.
36–37 (citing Ex. 2004, 157:1–158:24, 160:7–16). Dr. Slocum identifies
specifically Oosterling’s disclosure that the seal arm is connected by “shaft
journal 36 in the hole 53” and is “properly constrained,” providing an
opinion on anticipation. Ex. 2004, 157:25–158:24.
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this loose hinge connection, it is more possible, versus a more
permanent hinge connection design, that the lever could
become disassociated (e.g., blown off) of the Oosterling lid
assembly during a dish washing cycle.
Ex. 2002 ¶ 79 (emphases added). This testimony is afforded little if any
weight because it presents only speculation that the admittedly connected
seal arm could possibly become disassociated. See also Ex. 1013, 118:11–
15, 122:2–18. Similarly, Patent Owner’s reliance on Dr. Slocum’s
deposition testimony that the connection is “not tight fitting” is also
unfounded. PO Resp. 36 (citing Ex. 2004, 156:12–25).5 It is not necessary
for a connection to be “tight fitting,” even to satisfy Patent Owner’s
construction of “connected.”
For the reasons above, we are persuaded by Petitioner’s showing, and
adopt it as our own, that Oosterling discloses “a seal arm [] connected to the
lid housing . . . in the first position and the second position,” even under
Patent Owner’s construction of “connected.” Ex. 1003, 8:31–34, 10:33–39,
11:13–14, 11:23–24, Figs. 8a–8d, Fig. 9.
(3) “a first position, wherein the seal arm is adjacent the drink aperture”
(Claims 1, 10, and 13)
To meet the limitation requiring “a first position, wherein the seal arm
is adjacent the drink aperture,” the Petition provides that:
[T]he drinking aperture 8 of Oosterling’s lid 4 provides an inlet
in the underside of the lid 4 that is selectively opened and
closed by the lever 37 to respectively permit and obstruct liquid
from flowing through the drinking aperture 8 to the drink
aperture’s outlet, where the liquid is dispensed.
Pet. 18–19 (citing Ex. 1003, 9:30–32). The Petition provides further:

5 The citation to Exhibit 2002 provided in Patent Owner’s Response appears
to be a typographical error. See PO Resp. 36.
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In [the] first position, the spring element 40 . . . biases the lever
37 into a closed position where the seal 6 of the lever engages
the inlet of the drinking aperture 8 to close the drink
aperture. . . . Because the seal 6 of the lever 37 (seal arm)
engages the inlet of the drink aperture 8 to close the drink
aperture, the lever is clearly adjacent the drink aperture and
prevents any fluid from flowing from inside the beaker through
the drink aperture.
Id. at 20–21 (citing Ex. 1003, 8:34–9:3, Fig. 8d).
Patent Owner argues that Oosterling’s “drinking aperture is the hole 8
at the top of the drinking nozzle 7,” such that “the lever 37 is not adjacent to
the drinking aperture.” PO Resp. 40 (citing Ex. 2004, 165:2–167:9). Patent
Owner also argues that the seal arm is not adjacent the drink aperture
because the seal arm and drink aperture are “separated by vent 10.” Id.
(citing Ex. 2002 ¶¶ 60, 66).
Patent Owner’s arguments are based on the view that Petitioner relies
solely on Oosterling’s two-dimensional hole as the claimed “drink
aperture.”6 However, the Petition discusses that Oosterling’s “drinking
aperture 8 . . . provides an inlet in the underside of the lid 4 . . . [and an]
outlet, where the liquid is dispensed.” Pet. 18–19; see also Ex. 1001, Fig. 10
(showing that the ’979 patent’s drink apertures 18a, 18b extend similarly
from an outlet on the outside of lid 4 to an inlet on the inside of lid 4).
Therefore, Patent Owner’s arguments do not address the totality of the
structure identified as Oosterling’s drink aperture, or the Petition’s
discussion that Oosterling’s seal arm “engages the inlet of the drink aperture

6 Patent Owner directs us to Dr. Slocum’s testimony, however, this
testimony does not support Patent Owner’s position. PO Resp. 40; Ex.
2004, 165:21–23 (“Q. The aperture here is 8 in Figure 8? A. That’s the
opening for the aperture, correct.”).
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8 to close the drink aperture, [and] is clearly adjacent the drink aperture.”
Id. at 20–21. Neither Patent Owner’s argument that “lever 37 is not adjacent
to the drinking aperture” nor Mr. Steininger’s testimony about the location
of vent 10 is responsive to the Petition. PO Resp. 40; Ex. 2002 ¶¶ 60, 66.
For the reasons above, we are persuaded by Petitioner’s showing, and
adopt it as our own, that Oosterling discloses a first position, wherein the
seal arm is adjacent the drink aperture. Ex. 1003, 8:34–9:3, Fig. 8d.
(4) “a trigger member connected to the lid housing” (Claim 1)
To meet the limitation requiring “a trigger member connected to the
lid housing,” the Petition provides that “Oosterling discloses an operating
arm 52 (trigger member) connected to the lid 4 (lid housing) . . . using a
hook 42 fitted through the opening 41 in the sidewall of the lid.” Pet. 27–28
(citing Ex. 1003, 8:20–21, Fig. 8d, Fig. 9). The Petition also provides that
the operating arm 52 may be “coupled to the lid (4) by a second hinge
coupling (18; 41, 42).” Id. at 28 (citing Ex. 1003, 12:34–36).
Patent Owner argues that Oosterling “describes a simple hook and
hole configuration . . . [that] does not prevent the operating arm 52 from
being removed (i.e., misplaced or disassociated) from the lid assembly when
the beaker is removed and the lever 37 [is] moved to the alleged cleaning
position.”7 PO Resp. 23–25, 32 (emphasis omitted) (citing Ex. 2002 ¶¶ 4,
25–26, 71, 74, 77–78; Ex. 2004, 150:17–19).
Patent Owner’s arguments are based on a narrow construction of the
term “connected” to require a permanent connection, e.g., a connection that
prevents disassociation of the connected component. As explained in the

7 For purposes of this Decision, we accept Patent Owner’s argument that the
“wherein” clause of claim 1 requires that the trigger be connected to the lid
housing in both the first and second positions. PO Resp. 23–24.
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Claim Interpretation section of this Decision, (see Section II(B)), we do not
construe “connected” so narrowly. Patent Owner makes no other arguments
regarding this limitation of claim 1. For the reasons above, we are
persuaded by Petitioner’s showing, and adopt it as our own, that Oosterling
discloses a trigger member connected to the lid housing. Ex. 1003, 8:20–21,
12:34–36, Fig. 8d, Fig. 9.
Nonetheless, even under Patent Owner’s proposed construction, we
are persuaded by Petitioner’s showing that Oosterling discloses “a trigger
member connected to the lid housing.” Petitioner has shown that Oosterling
discloses a “hinge coupling” between the trigger member (i.e., operating arm
52) and lid housing (i.e., lid 4), in which hook 42 is fitted through opening
41. Pet. 27–28. Oosterling does not disclose that the trigger member is
removable and, instead, shows explicitly that the trigger member is
connected to the lid assembly in both the first position, (see Ex. 1003, Fig.
8d), and the second position (see id. at Fig. 9). Oosterling need not state
explicitly that this “hinge coupling” will not unintentionally disconnect, (see
PO Resp. 31–32), because Oosterling shows the trigger member connected
to the lid housing even when the lid housing is removed from the container.
Unlike Oosterling’s disclosure of an alternative embodiment of a removable
seal arm, (see Ex. 1003, 11:14–23), Oosterling does not disclose any
embodiment in which the trigger member is described as removable.
Patent Owner provides no persuasive argument or evidence to rebut
this showing, or to support its contention that Oosterling’s connection “does
not prevent the operating arm 52 from being removed (i.e., misplaced or
disassociated) from the lid assembly.” PO Resp. 24 (emphasis omitted). At
the oral hearing, Patent Owner directed attention to Figures 8a and 8b, which
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purportedly depict the operating arm disassociated from the lid. Tr. 22:23–
23:3. However, we agree with Petitioner that these figures depict an
exploded view of Oosterling’s assembly. See, e.g., id. at 9:7–11, 22:23–
23:13, 25:12–26:3, 36:7–11.
Further, Patent Owner’s reliance on Mr. Steininger’s opinion that “the
trigger will fall off the lid when the lid is removed from the vessel,” (Ex.
2002 ¶¶ 25–26), is not persuasive because Mr. Steininger bases his opinion
solely on the center of gravity and relative dimensions of Oosterling’s
opening 41 and hook 42, as depicted in the figures. Id.; see also id. ¶¶ 71,
74, 77–78. However, Oosterling’s specification is silent as to these
dimensions, and “it is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed.
Cir. 2000). Furthermore, this opinion does not account for Oosterling’s
Figure 9, which shows explicitly the trigger member connected to the lid
housing “when the lid is removed from the vessel,” the condition upon
which Mr. Steininger based his opinion. Therefore, we afford this testimony
little if any weight.
We are also unpersuaded by Patent Owner’s argument that “it is
logical that [Oosterling] intended for the operating arm 52 to disconnect to
ensure proper cleaning of the lid behind the hook 41 and around the opening
42” because this argument is speculative and ignores Oosterling’s clear
depiction of the lid in a cleaning position in which the trigger member is
attached. See PO Resp. 32 (citing Ex. 2002 ¶¶ 26–28); Ex. 1003, Fig. 9.
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We also afford little weight to Dr. Slocum’s testimony that the trigger
would not be connected “if the trigger member falls off when the lid
assembly is removed from the container.” Ex. 2004, 89:25–90:10, 90:25–
91:5; PO Resp. 24. This testimony relates to a circumstance not reflected in
Oosterling, which shows the trigger member connected to the lid when the
lid assembly is removed from the container. See Ex. 1003, Fig. 9.8
For the reasons above, we are persuaded by Petitioner’s showing, and
adopt it as our own, that Oosterling discloses “a trigger member connected
to the lid housing,” even under Patent Owner’s construction of “connected.”
Ex. 1003, 8:20–21, 12:34–36, Fig. 8d, Fig. 9.
b. Dependent Claim 3
For dependent claim 3, the Petition provides that “Oosterling discloses
a lever (seal arm [37]) that pivots away from the drink surface of the lid (lid
housing [4]) when it moves to the second position.” Pet. 29. In other words,
in moving to Oosterling’s second position, in which the lid is removed from
the beaker, “the lever 37 (seal arm) pivots via the hinge assembly 33 away
from the first position’s open and closed states and thus away from drinking
aperture 8.” Pet. 29–30 (citing Ex. 1003, 8:31–32, 9:16–17). The Petition
further provides that Oosterling’s “hinge coupling is the same thing as a
pivot connection.” Id. at 30.

8 We are not persuaded by Patent Owner’s suggestion that Dr. Slocum
provides an unsupported opinion on obviousness. PO Resp. 28, 30–31
(citing Ex. 2004 at 152:11–153:17). Dr. Slocum identifies specifically
Oosterling’s disclosure that the trigger arm is connected by a hinge coupling,
as specified in claim 5 and as shown in the figures, as support for
anticipation of this limitation. Ex. 2004, 152:11–156:7 (contrasting
Oosterling’s disclosure of an alternative removable seal arm).
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Patent Owner contends that “drinking surface 7 is located on the
outside of the lid and is . . . separated from the lever 37 by the vent 10,” such
that “the lever 37 does not pivot away from the drink surface.” PO Resp.
40–41 (citing Ex. 2002 ¶¶ 61, 73; Ex. 2004, 165:2–167).
We afford little if any weight to Mr. Steininger’s conclusory opinion
that “[t]he drink surface . . . is at the end of the nozzle so the seal arm cannot
pivot away from the drink surface since it is not near or in direct contact
with the drink surface.” Ex. 2002 ¶ 61; see also id. ¶ 73. Mr. Steininger’s
testimony is not commensurate with the scope of claim 3, which does not
recite that the seal arm is “near” or “in direct contact with” the claimed drink
surface. Furthermore, neither Patent Owner nor Mr. Steininger explain how
the presence of vent 10 in drink nozzle 7 precludes the claimed pivoting in a
direction “away from” a drink surface, even if that surface is on the outside
of the lid. See PO Resp. 40–41.
For the reasons above, we are persuaded by Petitioner’s showing, and
adopt it as our own, that Oosterling discloses a seal arm that pivots away
from a drink surface of the lid housing when it moves to the second position.
Ex. 1003, 8:31–32, 9:16–17.
c. Dependent Claim 6
For dependent claim 6, the Petition provides that Oosterling’s
“operating arm 52 is connected to the lid 4 using a hook 42 fitted through the
opening 41[, which] allows the operating arm 52 to pivot at the opening in
the sidewall of the lid 4.” Pet. 30 (citing Ex. 1003, 8:20–21, 12:34–36, Fig.
8d, Fig. 9). The Petition further provides that:
Figure 8d shows the operating arm 52 in the normal or use
position . . . [and Figure 9 shows] operating arm 52 in the open
(second, or cleaning) position, in which it remains connected to
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the lid 4 but is pivoted away from the lid 4 for cleaning
purposes.
Id. at 31.
Patent Owner contends that, as asserted with respect to claims 1, 12,
and 14, Oosterling fails to disclose that the “operating arm is connected to
the lid when the lid is placed in [the] cleaning position,” and, therefore,
Oosterling also fails to disclose the limitations of claim 6. PO Resp. 33–34.
As discussed above with respect to claim 1, Patent Owner’s
arguments are based on a narrow construction of the term “connected” to
require a permanent connection, e.g., a connection that prevents
disassociation of the connected component. As explained in the Claim
Interpretation section of this Decision, (see Section II(B)), we do not
construe “connected” so narrowly. Patent Owner makes no other arguments
regarding this limitation of claim 6. For the reasons above, we are
persuaded by Petitioner’s showing, and adopt it as our own, that Oosterling
discloses a trigger member pivotally connected to the lid housing, such that
it can be pivoted from a normal, use position to an open position for
cleaning. Ex. 1003, 8:20–21, 12:34–36, Fig. 8d, Fig. 9.
Nonetheless, even under Patent Owner’s proposed construction, we
are persuaded by Petitioner’s showing that Oosterling discloses a trigger
member as required by claim 6. Petitioner has shown that Oosterling
discloses a “hinge coupling” between the trigger member (i.e., operating arm
52) and lid housing (i.e., lid 4), in which hook 42 is fitted through opening
41. Pet. 30–31 (citing Ex. 1003, 8:20–21, 12:34–36, Fig. 8d, Fig. 9).
Petitioner has shown that this hinge coupling pivots between a normal, use
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position, (see Ex. 1003, Fig. 8d), and an open position for cleaning (see id. at
Fig. 9).
For the reasons above, we are persuaded by Petitioner’s showing, and
adopt it as our own, that Oosterling discloses a trigger member pivotally
connected to the lid housing, such that it can be pivoted from a normal, use
position to an open position for cleaning, even under Patent Owner’s
construction of “connected.” Ex. 1003, 8:20–21, 12:34–36, Fig. 8d, Fig. 9.
d. Dependent Claim 11
Petitioner contends that Oosterling discloses a drink seal (i.e., seal
ring) connected to the seal arm to assist in sealing the drink aperture. Pet.
27, 34 (citing Ex. 1003, 4:8–10, 10:14–15).
We are persuaded by Petitioner’s showing, and adopt it as our own,
that Oosterling discloses this element of dependent claim 11. Patent Owner
does not contend that this limitation is not met by Oosterling.
e. Dependent Claim 12
Petitioner contends that Oosterling discloses a trigger member (i.e.,
operating arm 52) connected to the lid housing, wherein the trigger member
is capable of operating the seal arm in the first position, and wherein the seal
arm cannot be operated by the trigger member in the second position. Pet.
27–29, 34–35 (citing Ex. 1003, 8:20–21, 9:26–32, 12:34–36, Fig. 8d, Fig. 9).
Patent Owner contends that Oosterling does not disclose a trigger
member that is “connected” to the lid housing, as discussed with respect to
claim 1. PO Resp. 23–33.
For the reasons discussed above with respect to claim 1, we are
persuaded by Petitioner’s showing, and adopt it as our own, that Oosterling
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discloses this element of dependent claim 12, under both the claim
construction adopted by the Board and that proposed by Patent Owner.
f. Dependent Claim 14
Petitioner contends that Oosterling discloses an actuator (i.e.,
operating arm 52) operably connected to the lid housing to actuate the seal
arm when the seal arm is in the first position. Pet. 37–38 (citing Ex. 1003,
8:20–21, 9:19–33, 12:34–36, Fig. 8b, Fig. 8d, Fig. 9).
Patent Owner contends that Oosterling does not disclose an actuator
that is “connected” to the lid housing, as discussed with respect to claim 1.
PO Resp. 23–33.
For the reasons discussed above, with respect to claim 1, we are
persuaded by Petitioner’s showing, and adopt it as our own, that Oosterling
discloses this element of dependent claim 14, under both the claim
construction adopted by the Board and that proposed by Patent Owner.
g. Dependent Claim 15
Petitioner contends that Oosterling discloses that the actuator cannot
actuate the seal arm when the seal arm is in the second position. Pet. 38–39
(citing Ex. 1003, 9:28–33, Fig. 8c, Fig. 9).
We are persuaded by Petitioner’s showing, and adopt it as our own,
that Oosterling discloses this element of dependent claim 15. Patent Owner
does not contend that this limitation is not met by Oosterling.
D. Obviousness based on Oosterling
Petitioner contends that claim 7 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over Oosterling. Pet. 41–42. To support its contention,
Petitioner provides a detailed explanation as to how Oosterling renders
obvious the claimed subject matter. Id. at 42. Petitioner also relies upon the
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Declaration of Dr. Alexander H. Slocum, Ph.D. (Ex. 1008 (the “Slocum
Declaration”)) and the Supplemental Declaration of Dr. Alexander Slocum,
Ph.D. (Ex. 1012 (the “Supplemental Slocum Declaration”)) to support its
position. Id. at 41–42; Pet. Reply 22–25.
1. Analysis
Petitioner contends that Oosterling teaches a first operable position
and a second cleaning position, as well as rotation of the seal arm to
transition between these positions. Pet. 41–42. Petitioner states that
Oosterling does not disclose expressly that the seal arm rotates 90 degrees,
but contends that it would have been obvious to a person of ordinary skill in
the art “to modify the lid 4 of Oosterling to allow the lever 37 to pivot
approximately 90 degrees when transitioning from the first position to the
second position, as recited in Claim 7.” Id. at 42. Petitioner relies on Dr.
Slocum’s opinion that such a modification would “allow increased cleaning
access to the lever” and would “prevent the action of the dishwasher spray
from inadvertently closing the lever.” Ex. 1008 ¶ 33d; see Pet. 42. Dr.
Slocum also opines that such a modification could be “accomplished in a
multitude of ways that would have been obvious design choices and well
known to one of ordinary skill, including increasing the width of the opening
(34) and changing the shape or size of the spring (40).” Ex. 1008 ¶ 33d; see
Pet. 42.
Patent Owner contends that a person of ordinary skill in the art would
not have been motivated to alter Oosterling’s lid as proposed by Petitioner
because “the Oosterling design already accomplishes the goal of preventing
accidental closure of the lever 37 during washing because of the intended
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interference between the spring 40 and opening 34.” PO Resp. 46–47 (citing
Ex. 2002 ¶¶ 21, 83, 85–86).
We are unpersuaded by this argument. Patent Owner has not
established persuasively that any existing interference fit, which may assist
in preventing accidental closure, eliminates the asserted motivation
articulated by Petitioner. Specifically, Patent Owner has not established that
increasing the pivot angle as proposed would be ineffective to further realize
this benefit. For example, Mr. Steininger opines only that, due to the
existing interference fit, “there is no need (and therefore no motivation) for
the change suggested by Dr. Slocum.” Ex. 2002 ¶ 83. Mr. Steininger does
not establish persuasively, however, that a person of ordinary skill in the art
would not expect any further improvement to the ability to prevent
accidental closure upon making the proposed modification. See id.
Additionally, in its Motion for Observation, Patent Owner argues that
a person of ordinary skill in the art would not have been motivated to alter
Oosterling for cleaning purposes, based on testimony provided by Dr.
Slocum. PO Mot. for Observation 3.9 We have considered the cited
testimony; however, we are not persuaded by Patent Owner’s contention.
Dr. Slocum’s testimony demonstrates that the appropriate pivot angle for
proper cleaning access depends on a variety of factors. See, e.g., Ex. 2006,
248:22–249:7 (noting that a pivot of 30 degrees may be sufficient for many
users, but “maybe some particularly demanding users end up with that’s not

9 We note that newly presented arguments are not permitted in a Motion for
Observation. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,768 (Aug. 14, 2012) (“An observation . . . is not an opportunity to raise
new issues, re-argue issues, or pursue objections.”); see also Paper 24, 2
(Conduct of the Proceeding Order).
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enough”); Ex. 2004, 178:23–179:11 (noting that proper cleaning depends on
proper dishwasher loading). We do not find Dr. Slocum’s testimony to
discredit the motivations articulated in the Petition.
Regarding implementation of the proposed modification, Patent
Owner contends that “Petitioner’s proposed modifications oversimplify the
impact of altering the lid assembly of Oosterling and ignore key features
required for Oosterling to properly function.” PO Resp. 41–42. For
example, Patent Owner contends that “if the shape/size of the spring arm 40
is changed the lever 37 cannot get to a 90 degree pivot due to interference
with the portion lever 37 extending between shaft support 33 and spring arm
40 impacting the size of the lid and/or opening 34.” Id. at 43 (citing Ex.
[2002] ¶ 84).10
We are not persuaded by Patent Owner’s argument, or the cited
testimony of Mr. Steininger. Patent Owner fails to explain cogently how the
portion of the lever between shaft supports (33) and spring arm (40) is
related in any way to either the size of the lid or the size of the opening, or
how that structure creates “interference,” or how an “impact[]” on the size of
the lid and/or opening prohibits the claimed 90 degree pivot. It appears,
perhaps, that Patent Owner may have intended to argue that this portion of
the lever may impact “the [side] of the lid and/or opening.” Id. at 43
(alteration added). However, under either understanding, Patent Owner
provides no technical reasoning to explain how a spring modified as

10 We note Patent Owner’s contention that changing the size of opening 34
would eliminate the interference fit between spring arm 40 and opening 34.
PO Resp. 42–43. Because we find the Petition establishes the obviousness of
a 90 degree pivot through a change to the size or shape of the spring, we
need not consider this argument about an alternate modification.
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proposed by Petitioner would be ineffective to pivot 90 degrees due to
impact with the size, or the side, of the lid or opening.
Similarly, we are unpersuaded by Patent Owner’s contention that the
seal arm of a modified lid “would be prohibited from opening 90 degrees
through its impact with the seal 46,” as depicted in annotated Figures
provided in Patent Owner’s Response. PO Resp. 43–45. The annotated
figures do not depict a spring that has been modified as proposed in the
Petition. See id. (showing spring 40 as disclosed by Oosterling, without
modification to size or shape, as proposed by Petitioner); Tr. 30:16–31:18.
Therefore, Patent Owner’s argument is not responsive to the Petition
because it does not address the proposed modification.
Mr. Steininger’s testimony is equally unpersuasive. See Ex. 2002 ¶ 84
(“[T]he lever cannot get to the required 90 degrees due to interference of the
lever 37 hitting the opening 34”). Again, Mr. Steininger’s testimony does
not account for the proposed modification to the size or shape of the spring
but, instead, considers the spring as disclosed by Oosterling. Id.
Finally, we are unpersuaded by Patent Owner’s argument that the
proposed modification “lacks any consideration of the significant redesign to
the Oosterling lid that would actually be required.” PO Resp. 45–46 (citing
Ex. 2002 ¶ 85). Patent Owner has not provided persuasive evidence to
establish that significant redesign would be necessary to permit a 90 degree
pivot, as proposed by Petitioner. Mr. Steininger opines that “a step or notch
in the lever 37 would be required” to avoid seal 46, and that the spring rate
“must also be designed properly.” Ex. 2002 ¶¶ 85–86. Mr. Steininger has
not established, however, that such changes would have been beyond the
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capability of a person of ordinary skill in the art.11 “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Patent Owner has not shown
that the modification (i.e., allowing the seal arm to pivot 90 degrees) would
have been uniquely challenging or difficult for an ordinary artisan, or would
have represented an unobvious step over the prior art. See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR,
550 U.S. at 418).
Petitioner explains how the proffered modification of Oosterling
based on the knowledge of a person of ordinary skill in the art renders
obvious the subject matter of claim 7, and presents rationales for such a
modification. Patent Owner has not rebutted persuasively that showing.
Therefore, for the reasons above, we are persuaded by Petitioner’s
reasoning, and adopt it as our own, in concluding that it would have been
obvious to a person of ordinary skill in the art to have modified Oosterling to
provide a seal arm that can pivot approximately 90 degrees to transition
from the first position to the second position.
E. Patent Owner’s Motion for Observation
Patent Owner filed a Motion for Observation on Cross-Examination
Testimony of Petitioner’s reply witness, Dr. Slocum, who was cross-

11 In its Reply, Petitioner provides the Supplemental Slocum Declaration
(Ex. 1012), in response to Patent Owner’s argument that the proposed
modification would be ineffective and would require significant redesign.
Pet. Reply 22–25. In this Decision, we do not rely on the Supplemental
Slocum Declaration, because we find the evidence submitted with the
Petition is sufficient to satisfy Petitioner’s burden. In this case, we find that
the technical details of how the proposed modification would be
implemented are not necessary to determine whether the proposed
modification itself would have been obvious to a person of ordinary skill.
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examined for a second time after Petitioner filed its Reply. See PO Mot. for
Observation. Petitioner, in turn, filed an Opposition to the Motion for
Observation. See Pet. Observation Opp.
We have considered Patent Owner’s observations and Petitioner’s
responses in rendering this Decision, and we have accorded Dr. Slocum’s
testimony appropriate weight where necessary. See PO Mot. for
Observation 1–6; Pet. Observation Opp.
F. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude. See PO Mot. to Exclude.
Petitioner filed an Opposition to Patent Owner’s Motion to Exclude (see Pet.
Exclude Opp.), and Patent Owner filed a Reply (see PO Exclude Reply).
For the following reasons, Patent Owner’s Motion is dismissed-in-part and
denied-in-part.
1. Exhibit 1013 and Petitioner’s Reply
Patent Owner asserts that the Supplemental Slocum Declaration (Ex.
1013), and Petitioner’s Reply arguments relying on that declaration, exceed
the scope of a reply under 37 C.F.R. § 42.23(b). PO Mot. to Exclude 1–7.
Patent Owner argues that these papers present a new obviousness rationale
that could have been presented in the Petition. Id. at 3.
As an initial matter, a Motion to Exclude is not the proper vehicle for
a party to raise the issue of arguments exceeding the scope of a reply.
Whether a reply contains arguments or evidence that are outside of a proper
reply under 37 C.F.R. § 42.23(b) is left to our determination. See Paper 24
(Conduct of the Proceeding Order).
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Furthermore, because this Decision does not rely on Exhibit 1013, or
the portions of the Reply relying upon Exhibit 1013, Patent Owner’s Motion
to Exclude Exhibit 1013 and Petitioner’s Reply is dismissed as moot.
2. Exhibits 1004, 1005, 1006, 1007, 1010, and 1011
Patent Owner challenges the admissibility of Exhibits 1004, 1005,
1006, 1007, 1010, and 1011 under Federal Rules of Evidence (“FRE”) 401
and 403. PO Mot. to Exclude 8–9.
Because this Decision does not rely on these exhibits, Patent Owner’s
Motion to Exclude these exhibits is dismissed as moot.
3. Exhibit 2006, References to Consumer Perception
Patent Owner asserts that certain deposition testimony of Dr. Slocum
regarding “consumer perception” is “a new and unsupported obviousness
rationale” that violates FRE 403 and exceeds impermissibly the scope of a
reply under 37 C.F.R. § 42.23(b). PO Mot. Exclude 9–10 (citing Ex. 2006,
250:2–14, 251:22–252:3, 288:13–290:2).
Because neither Petitioner’s papers nor this Decision rely on the cited
testimony, which was introduced into the record by Patent Owner, Patent
Owner’s Motion to Exclude is dismissed as moot.
4. Exhibits 1008 and 1013
Patent Owner moves to exclude the opinions and conclusions of Dr.
Slocum, Petitioner’s declarant, under FRE 401, 403, and 702. PO Mot. to
Exclude 10–12. Patent Owner contends that Dr. Slocum lacks knowledge in
the relevant technical field, and bases his opinions on “the wrong person of
ordinary skill in the art,” e.g., one who “does not have knowledge relating to
the design of lid assemblies for beverage containers . . . [and] need only be a
mechanical engineer and have drunk from a beverage container.” Id. at 10–
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11. Therefore, Patent Owner asks that the Board act as “gatekeeper” and
exclude Dr. Slocum’s opinions, as based on improper methodology. Id. at
11.
Petitioner responds that because this case presents “relatively
straightforward and uncomplicated” problems, prior art solutions, and
technology, it is sufficient for a person of ordinary skill in the art to have
“bachelor’s degree level training in mechanical engineering and design
principles and three years of experience working as a mechanical engineer,”
which would provide experience in “general mechanical engineering
principles, linkages and seals, mechanisms, fluids, and human factors,” as
Dr. Slocum opined. Pet. Exclude Opp. 9–10 (citing Ex. 1008 ¶¶ 5, 12).
Petitioner contends that “Dr. Slocum, a tenured professor at Massachusetts
Institute of Technology . . . has extensive experience in all of these areas.”
Id. at 10. Petitioner contends that Dr. Slocum did not testify that a person of
ordinary skill in the art would not have experience with the design of lid
assemblies for beverage containers, or that he does not have that experience.
Instead, Petitioner contends that Dr. Slocum testified that such knowledge is
not necessarily required, given the straightforward technology at issue. Id.
at 10–11 (citing Ex. 2006, 309:2–309:5, 308:20–24; Ex. 1012 ¶ 5).
FRE 702 provides that a witness qualified as an expert by knowledge,
skill, experience, training, or education may testify in the form of an opinion
if (a) the expert’s knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue, (b) the testimony is based upon
sufficient facts or data, (c) the testimony is the product of reliable principles
and methods, and (d) the witness has applied the principles and methods
reliably to the facts of the case. Testimony on the issue of unpatentability
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proffered by a witness who is not “qualified in the pertinent art” is not
generally admissible under FRE 702. Sundance, Inc. v. DeMonte
Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). In determining
who is qualified in the pertinent art under FRE 702, we need not find a
complete overlap between the witness’s technical qualifications and the
problem confronting the inventor or the field of endeavor. See SEB S.A. v.
Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010)
(upholding admission of the testimony of an expert who admittedly lacked
expertise in the design of the patented invention, but had experience with
materials selected for use in the invention); Mytee Prods., Inc. v. Harris
Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-
precedential) (same).
Patent Owner’s arguments do not persuade us that Dr. Slocum’s
opinions are irrelevant under FRE 401 or 402, or are based on an unreliable
methodology under FRE 702. Here, the challenged claims relate to a lid
assembly for a beverage container. Ex. 1003. Dr. Slocum testifies that he
has Bachelor’s, Master’s, and Doctorate Degrees in Mechanical
Engineering, each from the Massachusetts Institute of Technology, and has
experience in mechanical engineering and mechanical design, including
design related to snap-on lids for beverage containers. Ex. 1008 ¶¶ 3–4; Ex.
2004, 10:10–15:14. Dr. Slocum’s qualifications align sufficiently with the
challenged subject matter such that he is “qualified in the pertinent art,” and
his knowledge is helpful in understanding the evidence and determining
facts in issue in this case. Sundance, 550 F.3d at 1363–64.
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Consequently, Petitioner has not demonstrated that the Declarations of
Dr. Slocum (Ex. 1008 and 1013) should be excluded. See 37 C.F.R.
§§ 42.20(c), 42.22, 42.62(a), 42.64.
III. CONCLUSION
Based on the evidence and arguments, Petitioner has demonstrated by
a preponderance of the evidence that claims 1, 3, 6, and 10–15 of the ’979
patent are unpatentable under 35 U.S.C. § 102(b) as anticipated by
Oosterling, and that claim 7 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Oosterling.
IV. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 1, 3, 6, 7, and 10–15 of the ’979 patent are
held to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed-in-part and denied-in-part; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

David D’Ascenzo
David@dascenzoiplaw.com

PATENT OWNER:

David Moreland
litdocketing@mcciplaw.com
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Jessica Keesee
jkeesee@mcciplaw.com

Walter Levie, III
tlevie@mcciplaw.com