[00:00:00] Speaker 04:
Our next case for argument is 24-1611, Inray Blue Buffalo Enterprises.

[00:00:10] Speaker 04:
Mr. Jordan, please proceed.

[00:00:11] Speaker 01:
Thank you, Your Honor.

[00:00:14] Speaker 01:
May it please the court, Vidalano Jordan for Appellant Blue Buffalo.

[00:00:20] Speaker 01:
Good morning and thank you.

[00:00:22] Speaker 01:
We are asking the court to reverse the sole

[00:00:27] Speaker 01:
non-obviousness rejection presented in this case for primarily two reasons, either of which would justify reversal.

[00:00:38] Speaker 01:
Those two reasons are first, a failure of the board to establish a prima facie case of obviousness, and two, an interpretation of Configure 2 and Configure 4 as capable of

[00:00:57] Speaker 01:
in conflict with case law established by this court.

[00:01:04] Speaker 01:
On the first point, the board ignored the teachings of Coleman that teach away from the claimed invention and made arguments that destroyed Coleman for its intended purpose through modifications being made through impermissible hindsight.

[00:01:22] Speaker 01:
Applicants and inventors identified that wet pet food is commonly removed from a can with a utensil and placed on a dish or a plate for consumption.

[00:01:34] Speaker 01:
Many consumers would prefer not to use a utensil that they themselves eat with or to purchase dedicated pet utensils.

[00:01:47] Speaker 01:
The claimed invention avoids this problem.

[00:01:49] Speaker 01:
by specifically configuring a container to enable a user to readily compress the sidewall of the container to reduce its volume in order to dispense food from the container.

[00:02:06] Speaker 01:
The inventors also took into account that stored pet foods of higher quality typically have chunks of food, such as chicken or beef chunks.

[00:02:17] Speaker 01:
to specifically be able to break up and or tenderize these chunks of the dispensed food product.

[00:02:24] Speaker 04:
But this is, counsel, this is a product claim.

[00:02:28] Speaker 04:
It's not a method claim, right?

[00:02:29] Speaker 01:
Correct.

[00:02:30] Speaker 04:
And it's a product claim that requires that the container be configured to readily deformable by hand of a user, the volume in the storage area, which is the food.

[00:02:42] Speaker 01:
Correct.

[00:02:42] Speaker 04:
So why isn't the PTO right, that that just means

[00:02:48] Speaker 04:
container has to be capable of doing so.

[00:02:50] Speaker 04:
So any container that is capable of doing that, whether that was the reason they made it that way or not, is going to fall within that language.

[00:03:00] Speaker 01:
That actually goes to our second point, and that's relevant to the case law of this court.

[00:03:05] Speaker 04:
Well, the case law in this court that you cited doesn't construe the word configure to.

[00:03:09] Speaker 04:
It's construes the word adapted to.

[00:03:11] Speaker 04:
And those cases also relied on surrounding language in the specification.

[00:03:16] Speaker 04:
It wasn't limited exclusively to the word adapted to even.

[00:03:20] Speaker 04:
So it's not the same term.

[00:03:22] Speaker 04:
So I don't see how we're bound by that.

[00:03:24] Speaker 04:
And it used other things.

[00:03:26] Speaker 04:
So my concern at a high level is that you're taking a product claim that has to have structural limitations.

[00:03:34] Speaker 04:
and you're infusing an intent element, intent, that the person had to design this structure with this intent in mind.

[00:03:42] Speaker 04:
As opposed to, we design the structure without that intent, but it happens to actually do that.

[00:03:48] Speaker 04:
I feel like that's good enough, because it's a product claim.

[00:03:51] Speaker 01:
Your Honor, respectfully, the Aspects Eyewear case and the Giannelli Court cases helped establish, sort of clarify your question.

[00:04:02] Speaker 01:
They could not, you're correct, that the claims in those cases were cited adapted to.

[00:04:10] Speaker 01:
And if you, by reading those decisions,

[00:04:15] Speaker 01:
they necessarily refer to and use, configure to, in reaching their decision.

[00:04:23] Speaker 01:
I'll give the example.

[00:04:25] Speaker 01:
So the court basically makes clear that there are distinctions to be made between capable of versus adapted to versus configured or designed to, with capable of being on one end of the spectrum or scale.

[00:04:40] Speaker 01:
In other words, less specific in scope and easily met by the prior arc.

[00:04:45] Speaker 01:
on the other end of the spectrum or scale is configured or designed to, in other words, more specific in scope and harder to meet with prior art, with adapted to limitations being really in between these two ends of the spectrum, as held in aspects eyewear and GNLE.

[00:05:06] Speaker 01:
The GNLE case really is particularly on point.

[00:05:09] Speaker 01:
And that rejection was an obvious misrejection, and the claims recited adapted to language, which is relevant to configure to and configure for language, as recited in applicants' claims.

[00:05:23] Speaker 01:
Neither of these facts are true with regard to the Schreiber case.

[00:05:26] Speaker 01:
The Giannelli court was dealing with a bench pressure machine being modified by the rejection

[00:05:34] Speaker 01:
into a rowing machine.

[00:05:35] Speaker 01:
In other words, a user sitting backwards on the machine.

[00:05:38] Speaker 04:
Can you maybe go back to my original question, which was, I feel like you're trying to infuse intent, intent to design something this way into the analysis.

[00:05:51] Speaker 04:
And I don't see how that's relevant.

[00:05:53] Speaker 04:
What's relevant is that the product itself is capable of doing this.

[00:05:58] Speaker 04:
It's not really matter whether you did it for a particular reason or not, right?

[00:06:04] Speaker 04:
I don't see what's wrong with that.

[00:06:06] Speaker 04:
At the end of the day, it's kind of where the PTO came out, and I think that's unassailable.

[00:06:10] Speaker 04:
So that's my problem.

[00:06:11] Speaker 01:
I would submit, Your Honor, that the aspects I wear in Janelli cases have very similar claim limitations in that there is functional language and a structural and an apparatus claim.

[00:06:26] Speaker 01:
And those cases

[00:06:28] Speaker 01:
support that contention that that is permissible and the language following configured to should not be ignored or considered or be interpreted as just anything being capable.

[00:06:40] Speaker 03:
Following up on the Chief Judge's questions, I guess the concern I have then is taking out your spinning out your theory to the next step.

[00:06:49] Speaker 03:
Does that mean that configured to can be magic words added anywhere to have the effect that you're talking about to add this intent element?

[00:06:58] Speaker 01:
No, I think actually the opposite is what capable of is magic.

[00:07:04] Speaker 01:
There's no bounds to it, because capability is very, very broad.

[00:07:10] Speaker 01:
And interpreting configure 2 to be more narrow and very specific as to clarifying what the structure in the claim, how it functions, which is permissible to have functional term for claiming in apparatus claims.

[00:07:27] Speaker 01:
It's very clear from those two decisions that Configure 2 is actually more narrow than Adapted 2, and it's not an intent.

[00:07:39] Speaker 01:
It's really clarifying the structure that's present in the claims.

[00:07:43] Speaker 00:
Well, how is it not an intent?

[00:07:45] Speaker 00:
And I know it seems

[00:07:49] Speaker 00:
I'm not sure what else it can be.

[00:07:52] Speaker 00:
You have to identify either the defendant's accused infringer, the defendant's designer or manufacturer, and what that entity or person was thinking about when creating this particular structure.

[00:08:14] Speaker 00:
What use?

[00:08:17] Speaker 00:
that person or entity he was thinking about.

[00:08:20] Speaker 00:
It does feel like it might have been the same.

[00:08:23] Speaker 00:
The same question might well have been asked in GNLE and aspects.

[00:08:28] Speaker 00:
Was that worry about building an intent in disgust in either of those opinions?

[00:08:39] Speaker 01:
Not that I recall, Your Honor, but to the Chief Judge's question with regard to looking to the specification.

[00:08:46] Speaker 01:
It is true that the JNLA court looked to the specification to arrive at a narrower interpretation capable of.

[00:08:55] Speaker 01:
The same can be done in this case.

[00:08:58] Speaker 01:
Paragraphs 18 through 20 of Pellant's specification, that's Appendix 31 for the record, provide a significant amount of detail as to what it means to configure the claimed sidewall to be readily deformable.

[00:09:14] Speaker 01:
They mention below molding and magnitudes of thinness.

[00:09:18] Speaker 01:
And it also is clear that what it means to configure the claimed projection for use in breaking up and or Tenderizing the food product after the food product is removed from the storage area.

[00:09:32] Speaker 04:
I'm on page 31 of your appendix, which is where 18 through 20 are contained and this it seems to me

[00:09:40] Speaker 04:
is mainly defining how the structure ought to be so that it will be able to allow the ready deformability that is sought.

[00:09:53] Speaker 04:
So it's very structural, right?

[00:09:56] Speaker 01:
So that's my point, Your Honor.

[00:09:58] Speaker 01:
Yes, go ahead.

[00:09:59] Speaker 01:
But it's providing structure to support what it means to be readily deformable in this, for the sidewall to be readily deformable.

[00:10:08] Speaker 04:
But I don't know how that gives me any information about whether the term configured to should be construed as capable of because

[00:10:22] Speaker 04:
If the word configured to is construed as capable of, it's completely consistent with everything in 18 to 20.

[00:10:30] Speaker 04:
I don't see a problem with the PTO's construction.

[00:10:33] Speaker 04:
I don't see how these paragraphs, 18 through 20, help your argument.

[00:10:40] Speaker 04:
What am I missing?

[00:10:42] Speaker 01:
It's going to the intent question.

[00:10:44] Speaker 04:
The fact that this is more than just- Well, it's telling you why you're building it this way.

[00:10:49] Speaker 04:
You're building it this way so that it'll be able to chop the food up.

[00:10:56] Speaker 01:
Yes, Your Honor, the deformability of the sidewall is to inject the food from the container, which runs contrary to what's taught in Coleman.

[00:11:09] Speaker 01:
Coleman teaches that the food remains in the container.

[00:11:12] Speaker 01:
for consumption.

[00:11:13] Speaker 01:
There's no reason to deform the sidewalls of Coleman, based on the teachings of Coleman, to eject food from that container.

[00:11:24] Speaker 01:
It's a feeding container.

[00:11:27] Speaker 04:
Did you claim in claim one that there has to be food ejection sometimes?

[00:11:33] Speaker 01:
Yes.

[00:11:33] Speaker 01:
It's mentioned twice.

[00:11:34] Speaker 01:
It says, causes the food product to exit the storage area for further processing with the tool portion.

[00:11:42] Speaker 01:
And then in the last passage, break up and or tenderizing the food product after the food product is removed from the storage area.

[00:11:52] Speaker 01:
Coleman is that runs contrary to everything that Coleman teaches.

[00:12:00] Speaker 01:
It's taught to be able to, if you're on the move, you want to feed your pet very quickly, you can put it down and pull it off and that's it.

[00:12:12] Speaker 01:
If you dispense the food from the container,

[00:12:16] Speaker 01:
you're defeating the purpose of that first purpose.

[00:12:19] Speaker 01:
And then if once the food is out of the container, why do you need the bottom store, the non slip surface on the bottom of the container to keep it from slipping?

[00:12:29] Speaker 04:
So are you saying the Coleman product itself isn't capable of breaking up or tenderizing the food product after the food product is removed from the storage area?

[00:12:41] Speaker 01:
I'm saying, no, Your Honor, I'm saying it's not configured to do that.

[00:12:47] Speaker 01:
And if you modify Coleman, as we have recited in our claims, you destroy it for its intended purpose.

[00:12:55] Speaker 01:
And that is to feed the pet and to keep the container from moving around on the floor.

[00:13:00] Speaker 01:
Once the food is out of the container, there's no need to have the non-slip surface on the bottom.

[00:13:06] Speaker 04:
OK, if I do not agree with your claim construction,

[00:13:08] Speaker 04:
If I think the PTO is correct in concluding configured to means capable of under the facts of this case, do you have any remaining argument about the obviousness determination that is not predicated on you prevailing on claim construction?

[00:13:27] Speaker 01:
It's yes, primarily it's the rationale, having a rationale to modify Coleman.

[00:13:35] Speaker 04:
If I take the intent piece off the table, that's your claim construction.

[00:13:40] Speaker 04:
If I say that the structure just has to be capable of doing this, then do you have any remaining

[00:13:46] Speaker 04:
Is there anything else to this case?

[00:13:48] Speaker 04:
Did you argue that even if you adopt the board's claim construction, we still should win because?

[00:13:56] Speaker 04:
I don't see that in your brief, so I'm just as a housekeeping matter.

[00:14:01] Speaker 04:
I need to know.

[00:14:02] Speaker 01:
Well, we did also argue the shift of the burden, the fact that the board's reliance on basically this capability being equivalent to an inherency was basically incorrectly shifting the burden on applicants to prove a negative, which is essentially impossible, impossibility.

[00:14:24] Speaker 04:
OK, so those are both legal arguments.

[00:14:30] Speaker 04:
Your argument is they shift the burden.

[00:14:32] Speaker 04:
That's a legal argument.

[00:14:33] Speaker 04:
I've got to figure out if they shifted the burden.

[00:14:34] Speaker 04:
And then the other legal argument is the claim construction argument.

[00:14:39] Speaker 04:
But are you agreeing that you do not have a separate obviousness argument under the correct claim construction if the correct claim construction is capable of?

[00:14:54] Speaker 01:
The other main issue is obviously the case law of this court.

[00:15:00] Speaker 01:
That's aspects I aware of.

[00:15:01] Speaker 04:
No, that's claim construction.

[00:15:03] Speaker 04:
I don't see how that has anything to do.

[00:15:04] Speaker 04:
I'm asking you if you have a fact argument about a particular prior art references that does not hinge on me agreeing with your claim construction argument.

[00:15:15] Speaker 01:
Primarily, it's teaching away.

[00:15:16] Speaker 01:
It's a teaching away of modification of Russian, which is the foundation of obviousness.

[00:15:22] Speaker 04:
What's teaching away?

[00:15:23] Speaker 01:
modifying... You don't have to modify Coleman if it's capable of.

[00:15:28] Speaker 04:
Do you dispute that Coleman is capable of these things?

[00:15:32] Speaker 04:
Do you dispute that?

[00:15:32] Speaker 04:
If the word had not been configured to have been capable of, do you dispute that Coleman is capable of those things?

[00:15:39] Speaker 01:
Your Honor, anything is capable but I would say that

[00:15:47] Speaker 01:
Capability is so broad, it's very difficult to combat that.

[00:15:50] Speaker 04:
I'm not asking if you want to combat it now as a matter of first principles.

[00:15:53] Speaker 04:
I'm asking, did you argue in your brief that Coleman is not capable of doing this?

[00:16:01] Speaker 01:
We did not.

[00:16:01] Speaker 01:
We argued that our claims are capable.

[00:16:04] Speaker 01:
It is not configured to perform the structural effort.

[00:16:07] Speaker 01:
I understand.

[00:16:08] Speaker 04:
I agree you argued that, 100%.

[00:16:09] Speaker 04:
OK, let's hear from Ms.

[00:16:11] Speaker 04:
Lateef, and then I'm going to restore two minutes of your rebuttal time.

[00:16:26] Speaker 02:
Good morning.

[00:16:26] Speaker 02:
May it please the court?

[00:16:28] Speaker 02:
I just want to start off by saying that opposing counsel here has made a bunch of arguments about the fact that Coleman is not configured to do the tenderizing.

[00:16:40] Speaker 02:
And Coleman doesn't have to be configured to do that, I think as Chief Judge Moore stated several times.

[00:16:46] Speaker 02:
All that needs to happen here is that Coleman has to be capable of tenderizing the food.

[00:16:52] Speaker 02:
And Coleman is capable of doing so because Coleman has projections at the bottom of its container that are shaped similarly to blue buffalo's projections.

[00:17:02] Speaker 02:
And as a result of having that structure, they are capable of tenderizing.

[00:17:08] Speaker 00:
I'm sorry.

[00:17:09] Speaker 00:
Did you just say that?

[00:17:11] Speaker 00:
It doesn't have to be configured to if it's capable of, and thereby implying that configured doesn't here mean capable of.

[00:17:19] Speaker 02:
What I may have misspoke.

[00:17:20] Speaker 02:
What I was really trying to say is there is a big talk about whether or not Coleman can just deposit the food onto a plate or something, inject the pet food.

[00:17:29] Speaker 02:
And what I really was trying to articulate was that that doesn't matter whether Coleman holds the food or not.

[00:17:35] Speaker 02:
The fact that Coleman has the capability to tenderize food if it is outside of the container

[00:17:41] Speaker 02:
is all that is needed here because what you do is you look at a functional claim limitation and you say is there a corresponding structure in the prior art and if there is a corresponding structure within the prior art then

[00:17:56] Speaker 02:
the burden shifts to the applicant to say, well, let me show you how that corresponding structure cannot do this same thing that my structure can do.

[00:18:05] Speaker 02:
And they did not do that here.

[00:18:06] Speaker 03:
And is Coleman the only prior art relevant to our discussion here?

[00:18:09] Speaker 03:
Should we, can we also discuss Lowden, Williamson, Shin?

[00:18:15] Speaker 02:
With respect to the projections, the only prior art reference that matters is Coleman.

[00:18:19] Speaker 02:
Lowden related to whether or not there was

[00:18:22] Speaker 02:
the projections integrally related to the container.

[00:18:26] Speaker 02:
And then Williamson and Shin talked about the deformable walls.

[00:18:29] Speaker 02:
But in the blue brief to this court, the whole focus was on whether or not these projections existed that could be configured for tenderizing the food.

[00:18:38] Speaker 02:
So the only thing that this court needs to focus on is whether or not Coleman has such projections.

[00:18:44] Speaker 02:
And Coleman does.

[00:18:45] Speaker 02:
And the board made that finding and said, look,

[00:18:49] Speaker 02:
They both are pyramidal.

[00:18:51] Speaker 02:
They both are at the bottom of the container.

[00:18:53] Speaker 02:
And therefore, because they have the same structure, Coleman is capable of doing that thing.

[00:19:00] Speaker 02:
I think so.

[00:19:01] Speaker 02:
If there are no further questions.

[00:19:02] Speaker 00:
Oh, yeah.

[00:19:03] Speaker 00:
Sure.

[00:19:03] Speaker 00:
Go ahead.

[00:19:03] Speaker 00:
But configured to.

[00:19:05] Speaker 00:
Yes.

[00:19:05] Speaker 00:
Right.

[00:19:06] Speaker 00:
I mean, I think you just made an argument that assumes the answer to, I think, the claim construction question that we were talking about the last 15 minutes.

[00:19:14] Speaker 00:
That configured to requires nothing more than capability.

[00:19:19] Speaker 02:
So sorry, I'm sorry.

[00:19:21] Speaker 00:
No, no and the principal argument at least as I hear it and process it is that the Aspects and G and le cases in interpreting a different phrase adapted to a

[00:19:42] Speaker 00:
pretty clearly understood that configured to was different from capability because aspects lays out, well, there are several different possible meanings.

[00:19:57] Speaker 00:
One of them is capable of, the other is configured, designed to, and here we think adapted to can be this narrower one.

[00:20:08] Speaker 00:
So it's not

[00:20:09] Speaker 00:
neither Aspects nor GNLE is strictly interpreting the acclaim phrase adapted to and maybe that's crucial, but it's assuming that configured to is different from capability.

[00:20:25] Speaker 00:
So the related question is why doesn't that involve the very same injecting intent that

[00:20:36] Speaker 00:
is the worrisome aspect of the current debate.

[00:20:40] Speaker 02:
So I think what those two cases are doing is saying there's no per se meaning behind the word adapted to or configured for or any variation of that.

[00:20:52] Speaker 02:
What it is saying is sometimes those phrases can be read narrowly.

[00:20:55] Speaker 02:
Sometimes those phrases can be read broadly to mean capable of.

[00:20:59] Speaker 02:
But what you have to do is look at what's going on in the specification or the claims.

[00:21:03] Speaker 02:
That is where I would start with those cases.

[00:21:06] Speaker 02:
We are in a situation where this is examination.

[00:21:09] Speaker 02:
So we're under a BRI standard.

[00:21:10] Speaker 02:
So we must look at this broadly.

[00:21:12] Speaker 02:
I know Aspects, in particular, was litigation.

[00:21:16] Speaker 02:
So that would be under a Phillips standard.

[00:21:18] Speaker 02:
But in addition to that, when they looked at the claims.

[00:21:21] Speaker 00:
Right, but Giannelli was not.

[00:21:23] Speaker 00:
Correct.

[00:21:24] Speaker 00:
Although I don't have your brief in that case, you lost.

[00:21:31] Speaker 00:
Yeah.

[00:21:32] Speaker 02:
Yeah.

[00:21:33] Speaker 02:
And I will get to Giannelli.

[00:21:34] Speaker 02:
I just wanted to make the point

[00:21:36] Speaker 02:
that you're looking at not just that language and making a role and saying, configured form means this or means that.

[00:21:42] Speaker 02:
You then look at how is it being used within the specification.

[00:21:46] Speaker 02:
So even in ASPEX, and I will get to Junella, Your Honor, I promise.

[00:21:50] Speaker 02:
But in ASPEX, the magnetic members on the eyewear, they looked at there was a little claim differentiation issue there.

[00:21:56] Speaker 02:
So you had a claim, I might have the numbers wrong, but I think in ASPEX it was a claim 20 that used adapted to, and then in claim 19, they used capable of.

[00:22:07] Speaker 02:
So they said, well, obviously in this particular case, those mean different things.

[00:22:11] Speaker 02:
And they took the narrower application of adapted to, because you wouldn't have, if you wanted

[00:22:16] Speaker 02:
adapted to in that sense to be capable of, you wouldn't have used it in the claim earlier.

[00:22:21] Speaker 02:
With respect to Giannelli, again, you have to look at what's going on factually in the case.

[00:22:26] Speaker 02:
And in that situation, again, it was how the bars were, the levers on the arms were connected such that one could pull or push.

[00:22:38] Speaker 02:
And in Giannelli, it was sort of like the way they were made structurally, there was no way for the prior art

[00:22:47] Speaker 02:
to be capable of.

[00:22:48] Speaker 02:
So in that sense, when you looked at the facts of the case, there was no other way to read it but in a narrow reading.

[00:22:55] Speaker 02:
Here is a little bit different.

[00:22:57] Speaker 02:
When you look at the prior art of Coleman, there's nothing precluding it from looking at configured for to be broader.

[00:23:06] Speaker 02:
And again, we're under BRI.

[00:23:08] Speaker 02:
There's no way that the projections are explained or described such that you would narrow

[00:23:16] Speaker 02:
the definition of those particular projections.

[00:23:18] Speaker 02:
So just to reframe, it's not a matter of configured form must mean this all the time or adapted to must mean that all the time.

[00:23:25] Speaker 02:
You really have to look at the context of the specification in the cases in which you're trying to understand how to construe that particular phrase.

[00:23:40] Speaker 01:
And if there are no further questions, I respectfully ask that you affirm the board's decision I would like to point out that this is an obvious misrejection which is

[00:24:02] Speaker 01:
it puts implicitly an indication on the part of the board and the office that there are some aspects of the primary reference Coleman that are not met and that if you look at if you look at Williamson and Shin there would be no reason to use those reference in combination with Williams to achieve this

[00:24:26] Speaker 01:
What is being used in the rejection capability?

[00:24:31] Speaker 04:
to arrive at the rejected claims Anything further, okay, we thank both counsel this case is taken at our submission