Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 37
`
` Entered: June 26, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LAROSE INDUSTRIES, LLC
`Petitioner
`
`v.
`
`CAPRIOLA CORP.
`Patent Owner
`____________
`
`
`
`
`
`
`
`Case IPR2013-001201
`Patent 7,731,558 B2
`
`
`Before KEVIN F. TURNER, JUSTIN T. ARBES, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Case IPR2013-00121 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
` Paper 37
`
` Entered: June 26, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LAROSE INDUSTRIES, LLC
`Petitioner
`
`v.
`
`CAPRIOLA CORP.
`Patent Owner
`____________
`
`
`
`
`
`
`
`Case IPR2013-001201
`Patent 7,731,558 B2
`
`
`Before KEVIN F. TURNER, JUSTIN T. ARBES, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Case IPR2013-00121 has been joined with this proceeding.
`
`
`
`Case IPR2013-00120
`Patent 7,731,558 B2
`
`I.
`INTRODUCTION
`On January 30, 2013, LaRose Industries, LLC (“Petitioner”) filed a
`corrected petition (Paper 10)2 challenging claims 1-27 of Patent No. US
`7,731,558 B2 (Ex. 1001, “the ’558 Patent”). In the corrected petition,
`Petitioner identifies the following prior art references:
`
`US 750,953
`Dunfee
`US 1,552,227
`Pacent
`Engstrom US 1,642,064
`Calvin
`US 2,440,661
`Ziemianin US 2,657,369
`Bird
`
`US 2,703,393
`Geib
`US 2,731,614
`Pawloski US 3,289,149
`Barrett
`US 3,418,438
`Edward
`US 3,626,360
`Teller
`US 3,696,548
`Taylor
`US 4,096,379
`Williams US 4,223,377
`Robb
`US 5,018,980
`Lie
`
`US 5,020,253
`Yuen
`US 5,778,579
`Stewart
`US 6,019,486
`Dai
`
`US 6,241,371 B1
`Feuerborn US 7,080,927 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Feb. 2, 1904
`Sep. 1, 1925
`Sep. 13, 1927
`Apr. 27, 1948
`Oct. 27, 1953
`Mar. 1, 1955
`Jan. 17, 1956
`Apr. 28, 1964
`Dec. 24, 1968
`Dec. 7, 1971
`Oct. 10, 1972
`June 20, 1978
`Sep. 16, 1980
`May 28, 1991
`June 4, 1991
`July 14, 1998
`Feb. 1, 2000
`June 5, 2001
`July 25, 2006
`
`(Ex. 1007)
`(Ex. 1008)
`(Ex. 1009)
`(Ex. 1010)
`(Ex. 1011)
`(Ex. 1012)
`(Ex. 1013)
`(Ex. 1029)
`(Ex. 1014)
`(Ex. 1015)
`(Ex. 1006)
`(Ex. 1017)
`(Ex. 1024)3
`(Ex. 1026)
`(Ex. 1021)
`(Ex. 1025)
`(Ex. 1023)
`(Ex. 1019)
`(Ex. 1022)
`
`
`2 Unless indicated otherwise, references to papers are to papers filed in
`IPR2013-00120.
`3 Petitioner initially filed Exhibits 1022-1027 in IPR2013-00121. In
`accordance with our order, Petitioner re-filed these exhibits in IPR2013-
`00120 after the joinder of these cases. See Papers 16 and 17.
`2
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`
`
`
`(Ex. 1016)
`(Ex. 1005)
`(Ex. 1020)
`
`Arlinsky US 2003/0148700 A1 Aug. 7, 2003
`Rosen I
`US 2006/0134978 A1
`June 22, 2006
`Doherty
`US 2007/0184722 A1 Aug. 9, 2007
`
`Callegari
`
`Product packaging and instruction manual for
`Dynatech “ATOMIC BLOX Zetatron” toy construction set
`(“Atomic Blox”) (attached as Ex. B to Ex. 1018)
`
`On April 24, 2013, Capriola Corp. (“Patent Owner”) filed a patent owner
`preliminary response (Paper 13). In a decision to institute (Paper 14), issued
`June 28, 2013, we instituted inter partes review of all of the challenged
`claims as to the following grounds for review:
`claims 1-27 under 35 U.S.C. § 103(a), as unpatentable over Teller and
`Rosen I (Paper 14, 17-23);
`claims 1-6, 8-22, 24, 26, and 27 under 35 U.S.C. § 102(e), as
`anticipated by Doherty (id. at 23-25); and
`claims 7, 23, and 25 under 35 U.S.C. § 103(a), as unpatentable over
`Doherty and Rosen I (id. at 25).
`In a contemporaneous decision to institute in IPR2013-00121, we instituted
`inter partes review of claims 18-25 as to the following ground for review:
`claims 18-25 under 35 U.S.C. § 103(a), as unpatentable over
`Feuerborn and Rosen I. IPR2013-00121, Paper 11, 20-22.
`
`EP 1 162 400 A2
`
`
`
`Dec. 12, 2001
`
`(Ex. 1027)
`
`IPR2013-00121 was joined with IPR2013-00120 and terminated. See
`IPR2013-00121, Paper 11, 24-25.
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`On September 27, 2013, Patent Owner filed a motion to amend,
`
`accompanied by a single exhibit, Patent No. US 8,371,894 B1 (Ex. 2001,
`“Rosen II”), but elected not to file a patent owner response. In the
`scheduling order mailed June 28, 2013 (Paper 15, 2-3), we had cautioned
`Patent Owner that any arguments for patentability not raised in the patent
`owner response are deemed waived. On December 27, 2013, Petitioner filed
`an opposition (Paper 25) to the motion to amend, including three additional
`exhibits: the declaration of Ronald M. Barrett Ph.D. (Ex. 1028) and Patent
`Nos. US 3,289,149, issued November 29, 1966 (Ex. 1029, “Pawloski”), and
`US 5,409,403, issued April 25, 1995 (Ex. 1030, “Falossi”). On January 27,
`2014, Patent Owner filed a reply (Paper 28) to Petitioner’s opposition to the
`motion to amend.
`
`On February 18, 2014, Petitioner filed a motion to exclude evidence
`(Paper 29). Specifically, Petitioner moved to exclude Rosen II (Ex. 2001) as
`allegedly lacking relevance to the instant case. Paper 29, 2. On March 3,
`2014, Patent Owner filed Patent Owner’s opposition (Paper 32) to
`Petitioner’s motion to exclude evidence, and, on March 10, 2014, Petitioner
`filed a reply (Paper 33) to Patent Owner’s opposition to Petitioner’s motion
`to exclude evidence.
`
`Although only Petitioner requested an oral hearing (Paper 30), we
`ordered an oral hearing (Paper 31). The oral hearing was conducted on
`March 24, 2014.4
`
`4 A transcript of the hearing is included in the record as Paper 36.
`4
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`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is entered in IPR2013-00120, pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, based on our review of the evidence
`presented, we conclude that Petitioner has established by a preponderance of
`the evidence that claims 1-27 of the ’558 Patent are unpatentable. The
`motion to amend requesting entry of substitute claims 47-50 is denied.
`Petitioner’s motion to exclude evidence is dismissed.
`
`A. Related Proceedings
`The ʼ558 Patent is involved in a Federal district court case, Capriola
`
`Corp. v. LaRose Industries, LLC, Civil Action No. 8:12-cv-02346 (M.D.
`Fla.).
`
`B. The ’558 Patent
`The ’558 Patent, titled “Illuminated Toy Building Structures,” issued
`on June 8, 2010, based on U.S. Patent Application No. 11/839,444 (“the
`’444 Application”), filed August 15, 2007. The ’558 Patent relates to
`“building blocks incorporating a variety of colored lights that can mimic the
`look of a laser and can be interlocked to make a variety of multi-colored 3-
`dimensional shapes.” Ex. 1001, col. 1, ll. 42-45. The patent describes
`building blocks of various shapes, such as a cylinder (Figure 1), a rectangle
`(Figure 2), a cylinder with a 90-degree bend (Figure 3), and a wheel (Figure
`4). Figure 1 is reproduced below:
`
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`Figure 1 depicts cylindrical, building block 10 comprising non-opaque
`body 30 with two mechanical connectors 40, one male and one female, for
`connection to adjoining blocks; light emitting diode (LED) 60; and at least
`two electrically independent conductors 50 that traverse the body from one
`connector to the other. Id. at col. 3, ll. 46-63. Power source 70 (not shown
`in Figure 1) provides electric current, which passes from one building block
`to the next via conductors 50 and is used to power LED 60. Id. at col. 3,
`ll. 52-55; col. 4, ll. 43-49. Figure 5C is reproduced below:
`
`
`Figure 5C depicts exemplary power source 70. Id. at col. 3, ll. 52-55; col. 4,
`ll. 43-49; col. 5, ll. 50-66. Power source 70 comprises battery 75, conductor
`
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`wire 85, mechanical connector 40 with conductors 50 for connecting to a
`building block and conducting electric current to the block, and electrical
`switch 80 that controls the flow of current to the connected block(s). Id. at
`col. 5, ll. 50-66. When the LEDs in a set of building blocks are illuminated,
`each building block “mimics the look of [a] laser as colored light passes”
`from one block to the next. Id. at col. 4, ll. 26-29.
`
`C. Status of the Claims
`Of the challenged claims, claims 1, 12, 18, and 26 are independent.
`Independent claims 1, 12, 18, and 26 recite similar limitations describing the
`embodiments of linkable blocks or sets of blocks for forming an illuminated
`structure. As to the dependent claims, claims 2-11, 16, and 17 depend from
`claim 1; claims 13-15 depend from claim 12; claims 19-25 depend from
`claim 18; and claim 27 depends from claim 26.
`In its motion to amend, Patent Owner proposes four substitute claims,
`claims 28-31, based on original, independent claims 1, 12, 18, and 26. The
`substitute claims are reproduced below, with underlined material indicating
`language added to the existing claims and material in brackets indicating
`language removed from the existing claims:
`28. (Proposed substitute for claim 1) A building block
`comprising:
`
`a non-opaque body comprising at least two non-
`conductive mechanical connectors, at least one of the
`connectors of the body comprising a male connector and at least
`one of the other connectors of the body comprising a female
`connector;
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`two electrical conductors each traversing the body from
`
`each connector to each other connector;
`
`at least one LED within the body and electrically
`connected across the two conductors;
`
`each connector having a housing coupled to the two
`conductors so as to close a circuit between the conductors and
`illuminate the LED upon application of a power source to the
`two conductors of the connector and also transmit power to
`each other connector of the body along the two conductors; and
`
`whereby with at least two of the building blocks
`mechanically connected, a power source applied to the two
`conductors at any one of the connectors of either of the building
`blocks illuminates each LED;
`
`wherein the non-conductive mechanical connectors are
`cylindrical and the conductors are arranged such that at least
`two of the building blocks are mechanically and electrically
`connectable thereby at any degree of rotation about a
`connection axis therebetween.
`
`29. (Proposed substitute for claim 12) A building block set
`comprising:
`
`at least two blocks each having a non-opaque body and
`each having at least two non-conductive mechanical connectors,
`one of which is a male connector and the other of which is a
`female connector, at least two electrical conductors each
`traversing the respective body from each connector to each
`other connector and at least one LED disposed within each
`body and electrically connected to the two electrical conductors
`of the respective body;
`
`a power source unit having at least one mechanical
`connector and at least two electrical conductors each traversing
`the power source unit from each connector of the power source
`unit to a battery, the battery connected at either end to one of
`the conductors;
`
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`an electrical switch electrically disposed between one end
`
`of the battery and one of the connectors of the power source
`unit;
`each connector having a housing coupled to the two
`
`conductors so as to close a circuit between the conductors and
`illuminate the LED upon application of a power source to the
`connector and also transmit power to each other connector of
`the body along the two conductors; and
`
`whereby when the blocks and the power source unit are
`connected to the two conductors at just one of the mechanical
`connectors of each block, the LEDs of all of the blocks are
`powered by the battery;
`
`wherein the non-conductive mechanical connectors are
`cylindrical and the conductors are arranged such that the at least
`two blocks are mechanically and electrically connectable
`thereby at any degree of rotation about a connection axis
`therebetween.
`
`30. (Proposed substitute for claim 18) An illuminated toy
`building block set comprising:
`
`at least one rectangular block having first and second
`opposing sides and third and fourth opposing sides, with an
`electrically conductive male mechanical connector attached
`with and extending laterally away from each of the first and
`third sides, and with an electrically conductive female
`mechanical connector attached with and extending inwardly
`into the rectangular block from each of the second and fourth
`sides;
`at least one cylindrical block having first and second
`
`opposing ends with an electrically conductive male mechanical
`connector attached at and extending axially from the first end
`and an electrically conductive female mechanical connector
`attached at the second end and extending axially inwardly into
`the cylindrical block;
`
`an LED fitted within each block;
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`means for conducting electrical current through the LED
`
`in each block and each of the electrically conductive
`mechanical connectors of each block; and wherein
`
`the electrically conductive male mechanical connectors
`and the electrically conductive female mechanical connectors of
`each block [[is]] each include nonconductive cylindrical
`portions and two electrical conductors arranged therewith and
`are dimensioned so that all of the non-conductive portions of
`the male connectors are mechanically interconnectable thereby
`with the non-conductive portions of the female connectors of
`other blocks at any degree of rotation about a connection axis
`therebetween with their respective electrical conductors
`adjoined in an electrically conductive manner.
`
`31. (Proposed substitute for claim 26) An illuminated building
`block comprising:
`
`[[a]] at least two non-opaque [[body]] bodies, each
`comprising two nonconductive mechanical connectors, one of
`the connectors comprising a male connector and the other
`connector comprising a female connector;
`
`two electrical conductors traversing [[the]] each body
`from each connector to each other connector with each
`connector having a housing coupled to the two conductors so as
`to close a circuit between the conductors and illuminate the
`LED upon application of a power source to the connector and
`also transmit power to each other connector of the body along
`the two conductors, with all of connectors electrically coupled
`together within the body;
`
`an LED fitted within [[the body]] at least one of the
`bodies and electrically connected to the two conductors thereof;
`and wherein
`
`with the at least two bodies connected by respective
`connectors at any degree of rotation about a connection axis
`therebetween a power source applied to the two conductors at
`any one connector of either body illuminates the LED.
`
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`
`Paper 22, 2-7. Thus, Patent Owner proposes amending independent claims
`1, 12, 18, and 26 to recite in substitute claims 28-31 that the mechanical
`connectors of each body or block are “non-conductive” and that the
`mechanical connectors are rotatable “at any degree of rotation” about a
`connection axis therebetween. Paper 22, 7-8; Paper 25, 2-3. Further, Patent
`Owner proposes amending independent claims 1, 12, and 18 to recite in
`substitute claims 28-30 that the mechanical conductors are “cylindrical.” Id.
`
`II. DISCUSSION
` As noted above, Patent Owner did not file a patent owner response to
`the petitions. We have reviewed the evidence presented by Petitioner
`regarding the claims upon which we instituted inter partes review and
`determine that Petitioner has shown that those claims are unpatentable by a
`preponderance of the evidence. See Paper 10, 16-32 (combination of Teller
`and Rosen I), id. at 32-43 (Doherty, and combination of Doherty and
`Rosen I); Paper 14, 17-25; IPR2013-00121, Paper 1, 23-25 (combination of
`Feuerborn and Rosen I); IPR2013-00121, Paper 11, 18-22. Specifically,
`Petitioner has shown by a preponderance of the evidence that claims 1-27
`are unpatentable under 35 U.S.C. § 103(a), as obvious over Teller and
`Rosen I; claims 1-6, 8-22, 24, 26, and 27 are unpatentable under 35 U.S.C.
`§ 102(e), as anticipated by Doherty; claims 7, 23, and 25 are unpatentable
`under 35 U.S.C. § 103(a), as obvious over Doherty and Rosen I; and claims
`18-25 are unpatentable under 35 U.S.C. § 103(a), as obvious over
`
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`Feuerborn and Rosen I. Therefore, we focus our discussion on Patent
`Owner’s motion to amend.
`An inter partes review is more adjudicatory than examinational in
`nature. See Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
`2013). A motion to amend in an inter partes review is not itself an
`amendment. As the moving party, Patent Owner bears the burden of
`establishing that it is entitled to the relief requested. 37 C.F.R. § 42.20(c);
`see also Paper 36, 32-33 (discussion of burden in motions to amend). Thus,
`Patent Owner’s proposed substitute claims are not entered automatically, but
`only would be entered if Patent Owner demonstrates the patentability of the
`substitute claims. Id.
`
`A. Claim Construction
`Claim construction is an important step in a patentability
`determination. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed.
`Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
`2003) (“Both anticipation under § 102 and obviousness under § 103 are two-
`step inquiries. The first step in both analyses is a proper construction of the
`claims. . . . The second step in the analyses requires a comparison of the
`properly construed claim to the prior art.”; internal citations omitted). Thus,
`a panel of the Board has determined previously, and we agree, that a motion
`to amend should identify how the proposed substitute claims are to be
`construed, especially when the proposed substitute claims introduce new
`claim terms or features. See Idle Free Sys., Inc. v. Bergstrom, Inc.,
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`IPR2012-00027, Paper 26, 7 (PTAB June 11, 2013). The motion to amend
`also must explain how the construed claim is distinguishable over the art.
`Neither Patent Owner nor Petitioner challenges our interpretation in
`the decision to institute of certain terms of claim 1, 12, 18, and 26 that also
`appear in substitute claims 28-31. Paper 22, 2–7. Because the
`interpretations of those terms are not challenged, to the extent that they are
`necessary for assessing the application of the cited art to the substitute
`claims, they are adopted for purposes of this final decision. See Paper 14, 8-
`17.
`
`1. Preamble Terms
`The substitute claims recite the following preambles: “[a] building
`block comprising” (claim 28), “[a] building block set comprising” (claim
`29), “[a]n illuminated toy building block set comprising” (claim 30), and
`“[a]n illuminated building block comprising” (claim 31). As we determined
`with respect to the challenged claims, the preambles of the substitute claims
`do not recite additional structure that is absent from the bodies of the claims
`or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8-
`9. Applying the broadest reasonable interpretation of the substitute claims in
`light of the Specification, we again conclude that the preamble terms are not
`limiting and, in particular, that the recitations of “building block,” “building
`block set,” and “toy building block set” in the preambles do not limit the
`scope of the claims to toy blocks or toy block sets. Id.
`2. Male and Female Mechanical Connectors
`Each of substitute claims 28-31 recites a plurality of “mechanical
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`connectors,” at least one comprising a “male” connector and another
`comprising a “female” connector. The parties do not contend that the
`modified claim language in the substitute claims alters the meaning of
`“mechanical connector” in each claim in any way. Consequently, for
`purposes of the substitute claims, we adopt our previous analysis. See id. at
`9-13. Specifically, the connectors in substitute claims 28 and 31 must be
`part “of” the non-opaque body, the blocks in substitute claim 29 must
`“hav[e]” connectors, and the connectors in substitute claim 30 may be
`attached permanently or removably. See Paper 13, 3.
`3. “Means for Conducting Electrical Current Through the LED in
`Each Block and Each of the Electrically Conductive Mechanical
`Connectors of Each Block”
`The parties do not dispute our interpretation of “means for conducting
`electrical current through the LED in each block and each of the electrically
`conductive mechanical connectors of each block” in original claim 18. See
`Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous
`analysis and interpret the identical means-plus-function limitation to have
`the function of “conducting electrical current through the LED in each block
`and each of the electrically conductive mechanical connectors of each
`block” and the corresponding structure of power source 70.
`4. Claim Language Added In Substitute Claims
`Neither party proposes constructions for the claim language added in
`substitute claims 28-31. In particular, neither party proposes a construction
`for the terms: “non-conductive,” “at any degree of rotation,” or
`“cylindrical.” Further, we note that the Specification of the ’558 Patent does
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`not include definitions of these terms. We determine that these terms need
`to be construed for our analysis of the substitute claims. For purposes of this
`final decision, we give these terms their ordinary and customary meanings,
`consistent with the Specification, as those terms would be understood by one
`with ordinary skill in the art. We address our construction of each of these
`terms below.
`a. Non-conductive
`A relevant definition of the term “conductive” is “having the property
`or capability of conducting.” RANDOM HOUSE WEBSTER’S COLLEGE
`DICTIONARY 277 (2d Random House ed. 1999) (Ex. 3001). However, the
`term “conductive” is used in the Specification to describe the property of
`conducting electricity. Ex. 1001, col. 4, ll. 43-56. Further, the entire
`Specification is directed to conducting electricity to illuminate a set of
`building blocks, and no other type of energy conduction is described that
`would allow building blocks to be so illuminated. This supports interpreting
`the claim term as limited, under the circumstances, to conducting electricity.
`Thus, we construe “non-conductive” as the opposite of conductive, i.e.,
`lacking the property or capability of conducting electricity.
`b. Cylindrical
`A relevant definition of the term “cylindrical” is “of, pertaining to, or
`having the form of a cylinder,” and a relevant definition of the word
`“cylinder” is “a surface or solid bounded by two parallel planes and
`generated by a straight line moving parallel to the given planes and tracing a
`curve bounded by the planes and lying in a plane perpendicular or oblique to
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`them.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 331(Ex.
`3001). Further, the term “cylindrical” is used in the Specification to
`describe the cylindrical embodiment of Figure 1 of the ’558 Patent. Ex.
`1001, fig. 1; col. 4, l. 66-col. 5, l. 1 ((“In the embodiment illustrated in
`[Figure 1], the body 30 is substantially cylindrical 31 with one of the
`mechanical connectors at either end 32 thereof.”; emphasis added)). Thus,
`we construe “cylindrical” as an adjective describing a structure as “of,
`pertaining to, or having the form of a cylinder,” where a cylinder is a surface
`or solid bounded by two parallel planes and generated by a straight line
`moving parallel to the given planes and tracing a curve bounded by the
`planes and lying in a plane perpendicular or oblique to them.
`c. At Any Degree of Rotation
`A relevant definition of the word “degree” is “the 360th part of a
`complete angle or turn . . .” (emphasis added); a relevant definition of the
`word “turn” is “to cause to move around or on an axis or about a center;
`rotate: to turn a wheel” (emphasis added); and a relevant definition of the
`word “rotation” is “the act of rotating; a turning around as on an axis” or
`“one complete turn of such a body.” RANDOM HOUSE WEBSTER’S COLLEGE
`DICTIONARY at 349, 1145, 1406 (Ex. 3001). Further, rotational axis lr is
`depicted in Figure 4 of the ’558 Patent and described in the Specification
`with respect to the rotation of a block body in the form of wheel 38. Ex.
`1001, fig. 4; col. 5, ll. 9-11. Referring to Figures 7 and 8 of the ’558 Patent,
`wheels 38 may be used to create a wheeled structure resembling a vehicle.
`Id. at figs. 7, 8; col. 5, ll. 11-13. Thus, we construe the term “at any degree
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`Patent 7,731,558 B2
`
`of rotation” as any part of one complete turn of a body as on an axis, such as,
`for example, any part of one complete turn of a wheel on a rotational axis.
`
`4. Remaining Claim Terms or Phrases
`No other terms require express construction in reaching our decision
`in this proceeding.
`
`B. Scope of Motion to Amend
`Pursuant to 37 C.F.R. § 42.121(a)(2), a motion to amend may be
`denied if: (1) the amendments seek to enlarge the scope of the original
`claims; (2) the amendments introduce new subject matter; or (3) the
`amendments do not respond to a ground of unpatentability, upon which trial
`was instituted. For the reasons discussed below, we determine that the
`substitute claims presented in Patent Owner’s motion to amend: (1) narrow
`the scope of the original claims, (2) do not introduce new subject matter, and
`(3) respond to grounds of unpatentability, upon which trial was instituted.
`See Paper 14, 27. Further, contrary to Petitioner’s assertion, we determine
`that the substitute claims are not indefinite. Nevertheless, because, as set
`forth below, we deny Patent Owner’s motion to amend for other reasons, we
`do not discuss further Patent Owner’s arguments regarding the patentability
`of the substitute claims over the grounds on which we instituted inter partes
`review or Petitioner’s lack of response in its opposition to those arguments.
`See Paper 22, 11-21.
`
`17
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`Case IPR2013-00120
`Patent 7,731,558 B2
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`1. Narrowing Amendments
`With respect to substitute claim 28, Patent Owner proposes to amend
`original claim 1 to recite that
`a non-opaque body comprising at least two non-
`conductive mechanical connectors, at least one of the
`connectors of the body comprising a male connector and at least
`one of the other connectors of the body comprising a female
`connector;
`two electrical conductors each traversing the body from each
`connector to each other connector;
`
`
`Paper 22, 2 (emphasis added). Substitute claims 29 and 31 include similar
`limitations.5 Id. at 3-4, 6-7. Petitioner contends that, because each of
`original claims 1, 12, and 26 recites “upon application of a power source to
`the connector” and “transmit power to each other connector of the body”
`(emphases added), the original claims require, at least implicitly, that the
`connectors are electrically conductive. Paper 25, 10. Consequently,
`Petitioner contends that, by amending the original claims to describe the
`connectors as “non-conductive,” Patent Owner’s substitute claims
`impermissibly broaden the scope of the original claims. Id.; see 35 U.S.C.
`§ 316(d)(3) (“An amendment under this subsection may not enlarge the
`scope of the claims of the patent . . .”); 37 C.F.R. § 42.121(a)(2) (rule
`implementing the statutory requirement). Petitioner does not contend that
`
`5 Petitioner refers to original claims 1, 12, and 26 and, alternately, to claims
`28, 29, and 30 and to claims 28, 29, and 31. Paper 25, 10. Because original
`claim 26 corresponds to substitute claim 31, we treat the reference to claim
`30 here as a typographical error.
`
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`Case IPR2013-00120
`Patent 7,731,558 B2
`
`other limitations added in substitute claims 28, 29, and 31 broaden the scope
`of original claims 1, 12, or 26. See Paper 25, 10.
`Patent Owner disagrees and argues that
`[t]he original claims also all indicate that a closed circuit
`allowing illumination of the LED is achieved when a power
`source is applied to any single connector. If the entire
`mechanical body of the connector were conductive, this would
`not be possible – as the entirety of the connector body would
`then be a permanent short circuit between the two claimed
`conductors, and the LED would never illuminate.
`
`
`Paper 28, 1. We note that claims 1, 12, and 26 describe the connectors as
`“mechanical” connectors and do not state whether the connectors themselves
`are or are not conductive. See Ex. 1001, col. 6, ll. 46-47 (claim 1); col. 7,
`l. 36 (claim 12); col. 10, ll. 8-9 (claim 26). Moreover, claim 1 recites that
`the body comprises “two electrical conductors each traversing the body from
`each connector to each other connector” (emphases added), and each of
`claims 12 and 26 recites similar limitations. Ex. 1001, col. 6, ll. 51-52
`(claim 1); col. 7, ll. 39-41 (claim 12); col. 10, ll. 11-12 (claim 26). Thus, we
`conclude that each of the original claims recites that it is the conductors
`traversing the body that conduct electricity between the connectors, and we
`are not persuaded that the connectors are required, implicitly or expressly, to
`be conductive.
`For the foregoing reasons, we determine that Patent Owner’s proposed
`substitute claims 28, 29, and 31 narrow the scope of the original claims 1,
`
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`Case IPR2013-00120
`Patent 7,731,558 B2
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`12, or 26, and comply with 35 U.S.C. § 316(d)(3) and 37 C.F.R.
`§ 42.121(a)(2).
`
`2. Written Description for Substitute Claims
`The purpose of the written description requirement is to convey with
`reasonable clarity to those skilled in the art that, as of the filing date sought,
`the applicant was in possession of the invention as now claimed. Vas-Cath,
`Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “[T]he written
`description requirement is satisfied by the patentee’s disclosure of ‘such
`descriptive means as words, structures, figures, diagrams, formulas, etc., that
`fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe
`Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines,
`Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis added)). Patent Owner
`argues that the additional limitations of substitute claims 28-31 are
`supported by the disclosure of the patent application, the ’444 Application,
`from which the ’558 Patent issued. Paper 22, 9-10 (citing Ex. 1004, figs. 1,
`2, and 8). For the reasons set forth below, we agree.
`
`a. Non-Conductive
`Substitute claim 28 recites “[a] building block comprising: a non-
`opaque body comprising at least two non-conductive mechanical
`connectors.” Similar language appears in substitute claims 29 and 31.
`Petitioner contends that the ’444 Application provides no support for
`amending the mechanical connectors of original claims 1, 12, and 26 to be
`“non-conductive” mechanical connectors in substitute claims 28, 29, and 31.
`
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`Case IPR2013-00120
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`Paper 25, 6-7. Specifically, Petitioner contends that the term “non-
`conductive” appears nowhere in the ’444 Application and that Patent Owner
`fails to demonstrate that a person of ordinary skill in the art at the time of the
`filing of the ’444 Application would have recognized that the inventors were
`in possession of the subject matter of the substitute claims. Id.
`Patent Owner argues that Figures 1 and 2 of the ’444 Application
`depict mechanical connectors 40 as distinct from electrical conductors 50,
`and that the ’444 Application describes body 30, which comprises
`connectors 40 formed from acrylic or rigid plastic. Id. at 6 (quoting Paper
`22, 8). From this, Petitioner concludes that the disclosures merely indicate
`that the connectors can be made from the identified materials, but these
`disclosures do not teach that the connectors are “non-conductive.” Paper 25,
`6.
`
`Petitioner acknowledges, however, that “[a]n element having a non-
`conductive part may still be electrically conductive as a whole (e.g., an
`electrical plug having an outer non-conductive housing and electrical wires
`therein).” Id. at 6-7. Patent Owner does not disagree with Petitioner’s
`description of a “non-conductive” part of an electrically conductive element.
`In fact, we understand this to be precisely the argument that Patent Owner is
`attempting to make,
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