Trials@uspto.gov
`571-272-7822
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`Paper 45
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`Entered: February 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC
`Petitioner
`
`v.
`
`ARNOUSE DIGITAL DEVICES CORPORATION and
`MICHAEL ARNOUSE
`Exclusive Licensee and Patent Owner
`____________
`
`Case IPR2013-00010
`Patent 7,516,484
`____________
`
`
`
`Before MICHAEL P. TIERNEY, JONI Y. CHANG and
`WILLIAM V. SAINDON, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`Paper 45
`
`
`
`Entered: February 11, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC
`Petitioner
`
`v.
`
`ARNOUSE DIGITAL DEVICES CORPORATION and
`MICHAEL ARNOUSE
`Exclusive Licensee and Patent Owner
`____________
`
`Case IPR2013-00010
`Patent 7,516,484
`____________
`
`
`
`Before MICHAEL P. TIERNEY, JONI Y. CHANG and
`WILLIAM V. SAINDON, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`Case IPR2013-00010
`Patent 7,516,484
`
`INTRODUCTION
`
`On October 2, 2012, Motorola Mobility LLC (“Motorola”) filed
`a petition requesting an inter partes review of U.S. Patent No. 7,516,484
`(“the ’484 patent”). Paper 2 (“Pet.”). Arnouse Digital Devices Corporation
`and Michael Arnouse (collectively “ADDC”) filed a patent owner
`preliminary response. Paper 14 (“Prelim. Resp.”). Taking into account
`ADDC’s preliminary response, the Board determined that the information
`presented in Motorola’s petition demonstrated that there was a reasonable
`likelihood that Motorola would prevail with respect to at least one
`challenged claim. Pursuant to 35 U.S.C. § 314, the Board instituted this trial
`on February 12, 2013, as to claims 1, 3, 7, 15, 16, 18, and 20 of the ’484
`patent. Paper 21 (“Dec.”).
`During the trial, ADDC filed a patent owner response (Paper 33,
`“PO Resp.”), and Motorola filed a reply (Paper 39, “Reply”). No oral
`hearing was held. Paper 43.
`The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is a
`final written decision under 35 U.S.C. § 318(a) as to the patentability of the
`involved claims. We hold that claims 1, 3, 7, 15, 16, 18, and 20 of the ’484
`patent are unpatentable under 35 U.S.C. § 102.
`
`A. Related Proceedings
`
`Motorola indicates that the ’484 patent is the subject of litigation
`styled Arnouse Digital Devices Corp. v. Motorola Mobility, Inc., No. 5:11-
`cv-00155-cr (D. Vt.). Pet. 2.
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`B. The ’484 Patent
`The ’484 patent describes a reader adapted for a portable computer.
`Ex. 1001, Abs. According to the ’484 patent, when the reader and portable
`computer are connected together, the combined system becomes a fully
`functional personal computer. Id. By itself, without connecting to the
`portable computer, the reader is a non-functioning “shell” that includes at
`least one input device and at least one output device, such as a keyboard and
`a display. Id. A user cannot interact with the portable computer without the
`reader. Id.
`Figure 4, reproduced below, shows an embodiment of the ’484 patent.
`
`
`Figure 4 illustrates a portable computer and a plurality of readers.
`
`As shown in Figure 4, a plurality of readers may be located at various
`locations so that a user may use the portable computer in those remote
`locations. Id. at 6:59-7:6. The main function of the readers is to allow a
`user to interact with the portable computer. Id.
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`C. Exemplary Claim
`Of the involved claims, claims 1 and 15 are the only independent
`claims. Claims 3 and 7 depend from claim 1, and claims 16, 18, and 20
`depend from claim 15. Claim 15 is exemplary of the claimed subject matter
`of the ’484 patent, and is reproduced below (emphasis added):
`15. A computing system comprising:
`at least one portable computer, each comprising:
`storage; and
`at least one connector for connecting to at least one
`reader;
`at least one reader, each comprising:
`an input device;
`an output device; and
`a connector for connecting to the at least one portable
`computer,
`wherein the portable computer excludes means for a user to
`interact directly with the portable computer,
`wherein the reader and portable computer are configured to
`become a fully functioning computer when connected,
`wherein the readers are configured so that they will not
`operate with a computer other than a portable computer of the
`system, and
`wherein the reader is configured to be a non-functioning
`shell when not connected to the portable computer.
`
`
`
`D. Prior Art Relied Upon
`Motorola relies upon the following prior art references:
`Kobayashi US 5,463,742
` Oct. 31, 1995 (Ex. 1003)
`Nelson
`US 5,436,857
` July 25, 1995 (Ex. 1004)
`Jenkins
`US 6,029,183
` Feb. 22, 2000 (Ex. 1005)
`Warren
`US 6,999,792 B2
` Feb. 14, 2006 (Ex. 1006)
`
`
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`E. Grounds of Unpatentability
`The Board instituted the instant trial based on the following grounds
`of unpatentability:
`
`Claims
`
`1, 3, 7, 15, 16, 18, and 20
`
`1, 3, 7, 15, 16, 18, and 20
`
`
`Basis
`
`References
`
`§ 102(b)
`
`§ 102(b)
`
`Kobayashi
`
`Nelson
`
`ANALYSIS
`
`A. Claim Construction
`
`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). 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).
`
`1. “connector for connecting”
`The phrase “connector for connecting” appears in claims 1 and 15.
`For example, claim 15 recites “at least one portable computer, each
`comprising . . . at least one connector for connecting to at least one reader”
`and “at least one reader, each comprising . . . a connector for connecting to
`the at least one portable computer.” Essentially, the claim phrase “connector
`for connection” is recited in two claim limitations: (1) a portable computer
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`connector for connecting a portable computer to a reader; and (2) a reader
`connector for connecting a reader to a portable computer.
`Through its arguments concerning the instituted grounds of
`unpatentability, ADDC attempts to import improperly a limitation—a reader
`slot or hole—from an embodiment described in the specification into the
`claims. PO Resp. 15. For the reasons stated below, we decline to import
`that limitation into the claim phrase “connector for connecting.” In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (We must be careful not to
`read limitations from a particular embodiment appearing in the written
`description into the claim if the claim language is broader than the
`embodiment.)
`In support of its contentions, ADDC directs our attention to the
`following portions of the specification of the ’484 patent (PO Resp. 14-15):
`The readers also comprise at least one connector for attaching
`the portable computer to the reader. In one embodiment, the
`connector is attached to the housing of the portable computer
`readers. In the embodiments shown in FIGS. 4-7, the connector
`is within a slot or hole for receiving the portable computer.
`The slot may be located anywhere on the reader, for example,
`on the keyboard, as shown in FIG. 4 or on the monitor, as
`shown in FIG. 5.
`Ex. 1001, 7:59-66 (emphasis added by ADDC).
`“Connecting” refers to being attached or in communication with
`the portable computer reader by being affixed to, stored within
`or in operable communication with the portable computer
`reader.
`Id. at 6:35-38.
`
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`ADDC argues that the broadest reasonable interpretation of the claim
`phrase “a connector for connecting” includes the embodiment of a reader
`having a slot or hole with a connector therein, as shown in Figures 4
`through 7. PO Resp. 15. According to ADDC, “this configuration is clearly
`contemplated by the patentee as a desirable place for the connector.” Id.
`In particular, ADDC alleges (id. n.3):
`It should be readily apparent that, if the connector is designed
`to be inside the slot, the portable computer and reader are
`necessarily
`designed
`to
`accommodate
`this
`feature.
`Unremarkably, in order for . . . any two devices to be
`connected, the devices each must have conforming designs to
`allow for the connection.
`We are not persuaded by ADDC’s arguments, as they fail to recognize
`that the specification discloses other embodiments in which a reader is
`connected to a portable computer without using a reader slot or hole. For
`example, in one embodiment, the portable computer connector is attached
`merely to the housing of the readers. Ex. 1001, 7:60-62. The reader
`connector is configured to mate with a universal connector on the portable
`computer. Id. at 6:37-42; 7:66-8:2. In another example, as shown in
`Figures 4 through 6, the connector includes a wireless connection between
`the portable computer and reader—the portable computer has a wireless
`transmitter, and the reader has a receiver, or vice versa. Id. at 6:42-46. As
`described in the specification, the connection between a portable computer
`and a reader does not include necessarily a reader slot or hole. Therefore,
`we do not import the limitation of a reader slot or hole, as urged by ADDC,
`from the specification into the claims.
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`Even in cases where the specification describes only a single
`embodiment, we do not construe necessarily the claims as being limited to
`that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d
`1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or
`all of the embodiments, contain a particular limitation.). Moreover, we
`decline to add limitations into the claims in absence of a special definition
`set forth in the specification. An inventor may set out a definition and act as
`its own lexicographer by providing a definition of the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, ADDC has not alleged
`that the inventor of the ’484 patent acted as his own lexicographer and
`provided a special definition in the specification for the claim term
`“connector” or the claim phrase “connector for connecting” that is different
`from its recognized meaning to one with ordinary skill in the art.
`In light of the specification and in the context of the claims, we
`construe the claim phrase “connector for connecting” broadly, but
`reasonably, as a device or configuration that establishes a wireless or
`physical communication connection between a reader and a portable
`computer.
`
`2. “wherein the readers are configured so that they will not operate with
`a computer other than a portable computer of the system”
`Claims 1 and 15 each recite this “reader configuration” limitation.
`ADDC, through its arguments concerning the grounds of unpatentability,
`alleges that the “reader configuration” limitation requires that “the portable
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`computers and readers are matched via security protocols so as to eliminate
`the possibility of access to the portable computers by just any reader.” PO
`Resp. 22 (emphasis added). We disagree with ADDC, as such a
`construction would import improperly a limitation from the specification
`into the claims. Van Geuns, 988 F.2d at 1184. We do not find any special
`definition of the claim terms, set forth in the specification, that would
`require matching security protocols, and ADDC has not identified one.
`Motorola points out that the claim construction urged by ADDC in the
`instant proceeding is narrower than the one advocated by ADDC in the
`related district court litigation. Reply 3-4, 8. The chart below compares
`ADDC’s proposed claim construction submitted in the instant inter partes
`review (“IPR”), with ADDC’s claim construction submitted in the related
`district court litigation (PO Resp. 22; Ex. 1013 at 4, col. 3, row 2 (emphases
`added)):
`
`Claim Limitation
`
`ADDC’s proposed
`construction in the instant
`IPR proceeding
`
`ADDC’s construction
`submitted in the
`related district court
`litigation
`
`“wherein the readers
`are configured so
`that they will not
`operate with a
`computer other than
`a portable computer
`of the system”
`
`“the portable computers
`and readers are matched
`via security protocols
`so as to eliminate the
`possibility of access to
`the portable computers
`by just any reader.”
`
`“the reader has a non-
`universal design that
`limits the types of
`portable computers
`that may be used with
`the reader.”
`
`
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`We observe that ADDC’s claim construction for the “reader
`configuration” limitation submitted in the instant proceeding is overly
`narrow. In fact, ADDC’s claim construction submitted in the related district
`court litigation is broader and does not require matching security protocols.
`Ex. 1013 at 4, col. 3, row 2. The “reader configuration” limitation is
`concerned with the types of portable computers being used with the reader,
`as opposed to the reader’s security protocol.
`In support of its position, ADDC argues that the patentee invented the
`computer system to overcome problems in the prior art regarding
`information security breaches and virus transmission. PO Resp. 20. ADDC
`also cites portions of the specification for support. Id. at 17-18. We have
`reviewed those portions of the specification cited by ADDC, and observe
`that they do not support ADDC’s contention that the “reader configuration”
`limitation requires matching security protocols. The cited portions of the
`specification are directed to an exemplary embodiment. See, e.g., Ex. 1001,
`5:19-31 (“The portable computer may also comprise a GPS chip, a
`specialized reader contact, a logic element, a smart card device, and RFID
`crypto memory” (emphasis added).); 5:45-59 (“[T]he portable computer may
`include security information in the software. . . . Preferably, the portable
`computer reader or computer would comprise means for reading the
`biometric information . . .” (emphases added).).
`ADDC’s arguments also fail to take into account other embodiments
`—the design of the interface, communication protocols, and software
`configuration—that do not include matching security protocols. Id. at 6:16-
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`21; 6:50-58; 7:62-64, 7:66-8:1; Figs. 4-7. Moreover, the specification
`explicitly warns that the invention disclosed in the ’484 patent is not limited
`to any specific exemplary embodiment described in the specification. Id. at
`13:1-6 (“Although the invention has been described in terms of exemplary
`embodiments, it is not limited thereto. Rather, the appended claims should
`be construed broadly to include other variants and embodiments of the
`invention . . . .” (emphasis added).).
`The claim language itself—“not operate with a computer other than a
`portable computer of the system”—is broad, and is not limited to a specific
`reader configuration. We decline to construe the “reader configuration”
`limitation to require matching security protocols, as urged ADDC, which
`would limit improperly the claims to a preferred embodiment described in
`the specification. Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383
`F.3d 1352, 1366 (Fed. Cir. 2004) (expressly rejecting the contention that
`claims must be construed as being limited to an embodiment disclosed in the
`patent).
`For the foregoing reasons, we construe the “reader configuration”
`limitation as the readers each having a non-universal design that limits the
`types of portable computers that may be used with the reader.
`
`3. “means for a user to interact directly with the portable computer”
`The “means for interacting” limitation appears in claims 1, 15, and 18.
`For example, claim 15 recites “wherein the portable computer excludes
`means for a user to interact directly with the portable computer.”
`We determine that the “means for interacting” claim limitation is a means-
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`plus-function claim limitation that invokes 35 U.S.C. § 112, ¶ 6.1
`We observe that: (1) the limitation uses the term “means for”; (2) the term
`“means for” is modified by functional language; and (3) the term “means
`for” is not modified by any structure recited in the claim to perform the
`claimed function. Personalized Media Commc’ns LLC v. Int’l Trade
`Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998) (A limitation that uses the
`term “means for” which creates a rebuttable presumption that the drafter
`intended to invoke 35 U.S.C. § 112, ¶ 6.); Sage Prods., Inc. v. Devon Indus.,
`Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997) (The presumption is not
`rebutted if the term “means for” is modified by functional language, and it is
`not modified by any structure recited in the claim to perform the claimed
`function.).
`We identify the claimed function for this limitation to be “for a user to
`interact directly with the portable computer.” Based on the specification of
`the ’484 patent, the corresponding structure that performs the recited
`function is a component that allows a user to provide information to, or
`receive information from, the portable computer, directly—e.g., a keyboard,
`keypad, display, or voice input device, on the portable computer. See, e.g.,
`Ex. 1001, 5:63-6:31.
`
`
`1 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
`§ 112(f). We refer to the pre-AIA version of 35 U.S.C. § 112, because the
`’484 patent has a filing date before September 16, 2012 (effective date).
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`4. “the portable computer excludes means for a user to interact directly
`with the portable computer”
`Motorola seeks the claim construction of this “excluding” limitation,
`which appears in claim 15. Pet. 39-42. In the related district court
`proceeding, ADDC construed this “excluding” limitation as:
`By itself the portable computer cannot provide information to a
`user or receive information from a user. In other words, the
`portable computer needs the reader for the user to interact with
`the programs, hardware, and user information of the portable
`computer.
`Ex. 1013 at 6, col. 3, row 2 (emphasis added).
`
`Motorola submitted the same construction—“[b]y itself the portable
`computer cannot provide information to a user or receive information from a
`user.” Ex. 1013 at 6, col. 2, row 2. As that construction also is consistent
`with the specification of the ’484 patent and the plain meaning of the claim
`terms, we adopt it as the broadest reasonable construction for the
`“excluding” limitation. See, e.g., Ex. 1001, 5:63-6:31.
`
`5. Preamble of claim 1
`The claim language “the portable computer excludes means for a user
`to interact directly with the portable computer” similarly is recited in the
`preamble of claim 1— “a portable computer without input and output means
`for interacting directly therewith.” 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. Pitney Bowes, Inc. v. Hewlett-
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Here, the preamble of
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`claim 1 is entitled to patentable weight as it recites additional structure that
`is not included in the claim body. As the claim construction chart submitted
`by the parties in the related district court litigation shows, the parties agree
`that the preamble of claim 1 is limiting. Ex. 1013 at 1, col. 1-3, row 1.
`
`B. Anticipated by Kobayashi
`Motorola asserts that the challenged claims are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Kobayashi. Pet. 6. Motorola provides
`explanations as to how each limitation is met by Kobayashi. Id. at 6-13.
`Upon review of Motorola’s analysis and ADDC’s patent owner response, we
`determine that Motorola has demonstrated, by a preponderance of the
`evidence, that claims 1, 3, 7, 15, 16, 18, and 20 are anticipated by
`Kobayashi.
`To establish anticipation, each and every element in a claim, arranged
`as is recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`
`1. Overview of Kobayashi
`Kobayashi discloses a single user computer system that can be
`separated into two parts: (1) a personal processor module (PPM) that can be
`easily transported, which Motorola equates to as a “portable computer”
`(Pet. 7); and (2) a docking station that includes input and output devices
`such as a keyboard and a display, which Motorola equates to as a “reader”
`(id.). Ex. 1003, 3:9-17. The user gains access to the computer system by
`connecting the PPM to the docking station. Id. at 3:24-31. Each PPM has a
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`processor with related logic, memory (RAM/ROM/CACHE MEMORY),
`and a mass storage device. Id. at 3:40-47. The PPM accommodates the
`hardware and software related to personal processing capability, the
`customized operating system, the graphic user interface, and the application
`software. Id. at 3:18-23.
`Figure 1 of Kobayashi is reproduced below:
`
`
`Figure 1 of Kobayashi illustrates several PPMs and docking stations.
`
`As shown in Figure 1 of Kobayashi, PPM 2 does not contain user
`interface input or output devices. Id. at 3:53-55. Therefore, PPM 2 always
`needs a docking station to allow user interaction. Id. at 6:37-39.
`According to Kobayashi, the PPM works once it is connected to a
`docking station through a multi-connector. Id. at 3:54-60. The docking
`station has physical connector 24 that interfaces with PPM connector 22. Id.
`at 5:64 to 6:1. The docking station is configured specifically to interact with
`the PPM. Id. at Fig. 2.
`
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`The docking station includes a housing, the input and output devices
`(e.g., keyboard and display), and the interfaces to those devices. Id. at 4:2-5.
`For example, Figure 1 of Kobayashi shows computer notebook 4 where the
`input device of the docking station comprises a keyboard and the connector
`is contained on the keyboard. Id. at Fig. 1. The docking station does not
`include a processor, the application software, and operating system, but
`rather these components are supplied by the PPM. Id. at 5:55-63; 6:14-26.
`
`2. Discussion
`The explanations provided by Motorola as to how each claim
`limitation of the challenged claims is met by Kobayashi have merit.
`Pet. 6-14. ADDC counters that Kobayashi fails to describe the “reader
`configuration” claim limitation—“wherein the readers are configured so that
`they will not operate with a computer other than a portable computer of the
`system”—as required by claims 1, 3, 7, 15, 16, 18, and 20. PO Resp. 23-24.
`In particular, ADDC alleges that the “reader configuration” limitation
`requires that “the portable computers and readers are matched via security
`protocols so as to eliminate the possibility of access to the portable
`computers by just any reader.” Id. at 22 (emphasis added). ADDC contends
`that Kobayashi does not describe matching security protocols. Id. at 22-23.
`ADDC’s arguments are unavailing, as they are not commensurate
`with the scope of the claims. Specifically, they are premised on an overly
`narrow claim construction of the “reader configuration” limitation, requiring
`matching security protocols (id. at 22). As discussed above, we decline to
`adopt such an overly narrow construction, because it would import
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`limitations from the specification into the claims, improperly limiting the
`claims to a preferred embodiment. Rather, we construe the “reader
`configuration” limitation as the readers each having a non-universal design
`that limits the types of portable computers that may be used with the reader.
`In its petition, Motorola asserts that Kobayashi meets the “reader
`configuration” claim limitation. Pet. 10. Motorola points out that
`Kobayashi discloses that “[t]he PPM works after being connected to the
`docking stations through a multi-connector and is capable of being
`connected to several types of docking stations such as desktop, desk side or
`portable depending on the task to be undertaken by the user.” Id. (citing
`Ex. 1003, 3:55-60).
`We agree with Motorola, as its assertion is supported by a
`preponderance of the evidence. Indeed, Kobayashi describes a docking
`station that limits the types of computers that may be used with the docking
`station. See, e.g., Ex. 1003, 3:55-60. For instance, Kobayashi describes that
`the PPM and docking station are connected together by a processor
`independent of connection, such as the PC Peripheral Component
`Independent (PCI) Bus. Id. at 3:12-15.
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`Figure 2 of Kobayashi is reproduced below (emphasis added):
`
`
`
`Figure 2 of Kobayashi illustrates the relationship
`between a PPM and a docking station.
`
`As shown in Figure 2 of Kobayashi, docking station 3 includes local
`bus 33 for communicating across the interface. Ex. 1003, 5:64-6:1. Local
`bus 33 includes physical connector 24 for connecting docking station 3 with
`PPM 2. Id. Similarly, PPM 2 includes connector 22 for connecting PPM 2
`with docking station 3. Id. at Fig. 2.
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`Figures 18 and 19 of Kobayashi are reproduced below (emphasis
`added):
`
`
`
`
`
`
`
`Figures 18 and 19 of Kobayashi depict a docking station and
`the physical mechanisms that are used to move and lock the
`PPM in the docking station.
`
`
`As shown in Figures 18 and 19, PPM 2 is inserted into docking station
`130. Id. at 10:7-8. More specifically, PPM 2 is inserted inside front wall
`132 of docking station 130 and between arms 134 and 136, which will be
`moved laterally by motor 138 to grasp the sides of PPM 2 and hold it in
`docking station 130 while the PPM is activated. Id. at 10:8-13. PPM
`connector 22 extends slightly beyond the end of PPM 2 so that it may
`interface with connector 24 in the docking station. Id. at 10:18-20.
`Clearly, Kobayashi’s docking station is configured physically so that it will
`not operate with a computer other than a PPM that has the appropriate
`configuration.
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`ADDC also alleges that Kobayashi’s connectors do not meet the
`“reader configuration” limitation, because they are the same features relied
`upon by Motorola for meeting the “connector for connecting” claim
`limitations—(1) a portable computer connector for connecting the portable
`computer to a reader; and (2) a reader connector for connecting the reader to
`a portable computer (claims 1 and 15). PO Resp. 23-24. According to
`ADDC, when the claim phrase “connector for connecting” is construed to
`require a reader having a slot or hole, Kobayashi’s connectors merely meet
`the “connector for connecting” limitations, and not the “reader
`configuration” limitation. Id. at 22-24.
`ADDC’s arguments are inapposite because they are premised on an
`overly narrow claim construction of the claim phase “connector for
`connecting,” requiring a reader slot or hole (id. at 15). As we discussed
`above in the claim construction section, we decline to adopt such an overly
`narrow construction, because it would import limitations improperly from
`the specification into the claims. Rather, we construe the claim phrase
`“connector for connecting” as a device or configuration that establishes a
`wireless or physical communication connection between a reader and a
`portable computer.
`Although Kobayashi discloses a docking station having a slot (see,
`e.g., Ex. 1003, Fig. 18), that feature is not needed to meet the “connector for
`connecting” limitations. According to Motorola, Kobayashi meets the
`“connector for connecting” limitations because Kobayashi discloses a
`docking station that has a multi-connector that connects to a PPM with a
`
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`mating multi-connector. Pet. 8, 10 (citing Ex. 1003, 3:55-58). We agree
`with Motorola. As noted above, Figures 2 and 19 of Kobayashi illustrate
`that docking station 3 includes connector 24 for connecting docking station
`3 with PPM 2, and PPM 2 includes connector 22 for connecting PPM 2 with
`docking station 3. Ex. 1003, 5:64-6:1, Figs. 2, 19.
`For the reasons stated above, we agree with Motorola that Kobayashi
`discloses all of the limitations of claims 1 and 15, including the “reader
`configuration” limitation and the “connector for connecting” limitations.
`ADDC’s arguments are directed to independent claims 1 and 15, and
`ADDC does not address dependent claims 3, 7, 16, 18, and 20 with separate,
`specific arguments. PO Resp. 24. As to dependent claims 3, 7, 16, 18, and
`20, Motorola provides sufficient evidence to show that Kobayashi discloses
`the additional recited limitations in those claims. Pet. 10-14. For example,
`with respect to claim 3 (which requires a keyboard and display),
`Kobayashi’s docketing stations each, as shown in Figure 1, have a keyboard
`and display. As another example, claim 18 recites “wherein the computer
`comprises substantially all of the components of a fully functional general
`purpose computer excluding means for a user to interact with the computer.”
`As illustrated in Figures 1 and 2 of Kobayashi, PPM 2 has all of the
`components of a fully functional, general purpose computer (e.g., CPU 10,
`Memory 19, and Battery 18), but it does not include input and output devices
`for a user to interact directly with PPM 2 (e.g., a keyboard and display).
`Ex. 1003, 3:53-55; 6:3-39.
`
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`For the foregoing reasons, we hold that Motorola has demonstrated,
`by a preponderance of the evidence, that claims 1, 3, 7, 15, 16, 18, and 20
`are anticipated by Kobayashi.
`
`C. Anticipated by Nelson
`Motorola asserts that the challenged claims are unpatentable under
`35 U.S.C. § 102(b) as anticipated by Nelson. Pet. 14. Motorola provides
`explanations as to how each limitation is met by Nelson. Id. at 14-23.
`Upon review of Motorola’s analysis and ADDC’s patent owner response, we
`determine that Motorola has demonstrated, by a preponderance of the
`evidence, that claims 1, 3, 7, 15, 16, 18, and 20 are anticipated by Nelson.
`
`1. Overview of Nelson
`Nelson describes a personal computer module system that has two
`separable parts: (1) the processor module, which Motorola equates to as the
`“portable computer” (Pet. at 14); and (2) a PC base unit, which Motorola
`equates to as the “reader” (id. at 14-15). Ex. 1004, 1:37-52.
`Figure 2 of Nelson is reproduced below:
`
`
`Figure 2 of Nelson illustrates a PC base unit and a processor module.
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`As depicted in Figure 2 of Nelson, PC base unit 36 includes a
`housing, display 38, keyboard 40, base unit 12, and receptacle 42 that is
`configured to receive processor module 10. Ex. 1004, 2:51-63. Processor
`module 10 may be inserted into PC base unit 36 to enable operations of the
`combined units as a complete data processing system. Id. Processor module
`10 includes processor 14, memory 16, hard disk unit 18, system controller
`20, and interface 22. Id. at 2:25-30.
`Figure 1 of Nelson is reproduced below:
`
`
`Figure 1 of Nelson depicts a processor module and a PC base unit.
`
`As shown in Figure 1, processor module 10 does not include input and
`output devices for a user to interact directly with processor module 10.
`Further, PC base unit 12 does not include a processor, system controller, and
`memory, and therefore it could not function when it is not connected to
`processor module 10.
`
`2. Discussion
`The explanations provided by Motorola as to how each claim
`limitation of the challenged claims is met by Nelson have merit. Pet. 14-23.
`ADDC counters that Nelson does not describe the “reader configuration”
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`limitation, as required by 1, 3, 7, 15, 16, 18, and 20 claims. PO Resp. 13-23.
`ADDC argues that the “reader configuration” limitation requires that “the
`portable computers and readers are matched via security protocols so as to
`eliminate the possibility of access to the portable computers by just any
`reader.” PO Resp. 22 (emphasis added). ADDC also argues that the claim
`phrase “conne
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