UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EURO-PRO OPERATING LLC
`Petitioner
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`v.
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`ACORNE ENTERPRISES, LLC
`Patent Owner
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`U.S. Patent No. 6,624,392
`Issue Date: September 23, 2003
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`Title: MULTIFUNCTIONAL COOKING SYSTEM
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`Inter Partes Review No. Unassigned
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`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`EURO-PRO OPERATING LLC
`Petitioner
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`v.
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`ACORNE ENTERPRISES, LLC
`Patent Owner
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`
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`U.S. Patent No. 6,624,392
`Issue Date: September 23, 2003
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`Title: MULTIFUNCTIONAL COOKING SYSTEM
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`
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`Inter Partes Review No. Unassigned
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`
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`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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`Petitioner’s Exhibit List
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`Description
`U.S. Patent No. 6,624,392 (the “’392 Patent”)
`U.S. Patent No. 6,515,262 (the “’262 Patent”)
`Acorne’s Litigation Counsel’s Consent to Electronic Service
`U.S. Patent No. 6,274,847 (“Hlava”)
`U.S. Patent No. 2,187,888 (“Nachumsohn”)
`Excerpts from “Integrating Electrical Heating Elements in
`Appliance Design” (“Hegbom”)
`U.S. Patent No. 2,778,914 (“Vallorani”)
`U.S. Patent No. 5,512,733 (“Takikawa”)
`U.S. Patent No. 5,580,594 (“Matsumoto”)
`U.S. Patent No. 4,024,377 (“Henke”)
`U.S. Patent No. 3,393,295 (“Jepson”)
`U.S. Patent No. 5,359,179 (“Desloge”)
`U.S. Patent No. 3,881,090 (“Scott”)
`U.S. Patent No. 3,508,485 (“Munsey”)
`U.S. Patent No. 2,103,560 (“Smith”)
`Definition of “heating element” from McGraw-Hill Dictionary of
`Scientific and Technical Terms
`Acorne Enterprises, LLC’s Response to Amended Invalidity
`Contentions
`U.S. Patent No. 6,573,483 (“DeCobert”)
`Declaration of Robert Sherwood (“Sherwood”)
`Declaration of Mark T. Garrett
`IPR Petition Associated with IRP2014-00186
`Exhibits 1001 – 1019 to Exhibit 1021 IPR Petition
`$23,000 Fee Receipt for IPR2014-00186
`EM Receipt for Service of Exhibits 1021 and 1022
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
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`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
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`1017
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`1018
`1019
`1020
`1021
`1022
`1023
`1024
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`Email for Service of Exhibits 1021 and 1022
`Power of Attorney for Exhibit 1021 and Certificate of Service for
`Same
`Email Reflecting EM Service of Exhibit 1026
`Email for Service of Exhibit 1026
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`1025
`1026
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`1027
`1028
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`53341732.1
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., Euro-Pro
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`Operating LLC (“Petitioner”) requests inter partes review of claims 1 and 12 (the
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`“Challenged Claims”) of U.S. Patent No. 6,624,392 (“the ’392 Patent,” Ex. 1001),
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`which issued on September 23, 2003.
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`II. MANDATORY NOTICES
`A. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
`Euro-Pro Operating LLC (“Petitioner”) is the real party-in-interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The following matter may affect, or be affected by, a decision in this
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`proceeding: Acorne Enterprises, LLC v. Euro-Pro Operating LLC, Civil Action
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`No. 3:12-cv-00602-RCJ-WGC (D. Nev.) (the “Litigation”). The ’392 Patent is a
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`CIP of U.S. 6,515,262 (the “’262 Patent” – Ex. 1002), which is the subject of a
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`concurrently-filed petition for inter partes review. Acorne (“Patent Owner”) sued
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`Petitioner for infringement of the ’392 and ’262 Patents in the Litigation. Counsel
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`for Patent Owner in the Litigation consented, on behalf of Patent Owner, to
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`electronic service of this petition and its exhibits. See Ex. 1003.
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`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`C.
`Lead counsel: Mark T. Garrett (Reg. No. 44,699)
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`Back-up counsel: Brandon J. Karam (Reg. No. 69,130)
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`D.
`Email: mark.garrett@nortonrosefulbright.com
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`Post: Mark T. Garrett, Fulbright & Jaworski LLP, 98 San Jacinto
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`Boulevard, Suite 1100, Austin, TX 78701
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`Phone: 512.536.3031
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`Fax: 512.536.4598
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`Petitioner consents to electronic service.
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`III. GROUNDS FOR STANDING
`This petition is substantively identical to the petition attached as Exhibit
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`1021. See Ex. 1020 at ¶ 2; compare present petition to Ex. 1021. Exhibits 1001 to
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`1019 are identical to the 19 documents attached as Exhibit 1022, which were
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`Exhibits 1001 to 1019 to the Exhibit 1021 petition. See Ex. 1020 at ¶ 3; compare
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`Exs. 1001-1019 to Ex. 1022. The Exhibit 1021 petition (certificate of service at
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`end) and the 19 exhibits of Exhibit 1022 were uploaded to the PTAB’s website
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`(https://ptabtrials.uspto.gov/) on November 21, 2013; the fee of $23,000 was paid
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`(as reflected in Exhibit 1023 fee receipt); and then a “submit” button on the
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`website was pushed. See Ex. 1020 at ¶ 4; Ex. 1023. Additional documents reflect
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`service of the Exhibit 1021 petition and 19 exhibits of Exhibit 1022 on November
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`21, 2013: Exhibit 1024 (see Ex. 1020 at ¶ 5) and Exhibit 1025 (see Ex. 1020 at ¶
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`6). On November 22, 2013, the power of attorney and certificate of service that
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`comprise Exhibit 1026 were uploaded and submitted on the PTAB’s website via
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`the IPR2014-00186 file associated with the “My Docket” designation for the
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`undersigned and served. See Ex. 1020 at ¶ 7; Ex. 1026. Such service is also
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`reflected in Exhibits 1027 and 1028. See Ex. 1020 at ¶¶ 8 & 9; Exs. 1027 and
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`1028. Thus, pursuant to 35 U.S.C. §§ 311 and 312 and 37 C.F.R. § 42.106, this
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`petition is entitled to a filing date of no later than November 22, 2013, which is
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`within one year of the earliest date Petitioner and Petitioner’s co-defendants were
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`served with a complaint in the Litigation. As a result, Petitioner certifies that the
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`’392 Patent is available for inter partes review, and that Petitioner is not barred or
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`estopped from requesting an inter partes review challenging the Challenged
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`Claims on the grounds identified in this Petition. Petitioner intends, at the
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`suggestion of Board staff, to request permission to move the Board to accord this
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`petition a filing date of no later than November 22, 2013. See Ex. 1020 at ¶ 10.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review is Requested (37 C.F.R. § 42.104(b)(1))
`Petitioner requests review and the cancellation as invalid of claims 1 and 12
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`of the ’392 Patent.
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`Statutory Grounds of Challenge (37 C.F.R. § 42.104( b)(2))
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`B.
`For the reasons presented below, Petitioner seeks the following relief:
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`Ground 1: Invalidation of claim 1 under 35 U.S.C. § 103(a) (“Section
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`103(a)”) based on Hlava (U.S. Patent No. 6,274,847 – Ex. 1004) in view of
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`Applicant-admitted prior art (which is discussed below with reference to the ’392
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`Patent). Hlava was filed on May 8, 2000 and issued on August 14, 2001, rendering
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`it prior art to the ’392 Patent (which claims a priority date of July 11, 2001, and
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`which was filed on January 14, 2002) under at least 35 U.S.C. § 102(e);
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`Ground 2: Invalidation of claim 1 under Section 103(a) based on Hlava in
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`view of Nachumsohn (U.S. Patent No. 2,187,888 – Ex. 1005). Nachumsohn issued
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`in 1936, rendering it prior art under 35 U.S.C. § 102(b);
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`Ground 3: Invalidation of claim 12 under Section 103(a) based on Hlava in
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`view of Applicant-admitted prior art or Nachumsohn, and further in view of
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`Hegbom (“Integrating Electrical Heating Elements in Appliance Design” – Ex.
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`1006). Hegbom’s copyright date is 1997, rendering it prior art under least 35
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`U.S.C. § 102(b);
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`Ground 4: Invalidation of claim 1 under Section 103(a) based on
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`Nachumsohn in view of the knowledge of one of ordinary skill by at least July 11,
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`2001;
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`Ground 5: Invalidation of claim 1 under Section 103(a) based on
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`Nachumsohn in view of Hlava;
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`Ground 6: Invalidation of claim 1 under Section 103(a) based on
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`Nachumsohn in view of Vallorani (U.S. Patent No. 2,778,914 – Ex. 1007).
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`Vallorani issued in 1957, rendering it prior art under 35 U.S.C. § 102(b);
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`Ground 7: Invalidation of claim 12 under Section 103(a) based on
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`Nachumsohn in view of the knowledge of one of ordinary skill by at least July 11,
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`2001, Hlava, or Vallorani, and and further in view of Hegbom;
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`Ground 8: Invalidation of claim 1 under Section 103(a) based on Takikawa
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`(U.S. Patent No. 5,512,733 – Ex. 1008) in view of Hlava. Takikawa was issued in
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`1996, rendering it prior art under 35 U.S.C. § 102(b);
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`Ground 9: Invalidation of claim 1 under Section 103(a) based on Takikawa
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`in view of Nachumson;
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`Ground 10: Invalidation of claim 1 under Section 103(a) based on
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`Takikawa in view of Vallorani; and
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`Ground 11: Invalidation of claim 12 under Section 103(a) based on
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`Takikawa in view of Hlava, Nachumsohn, or Vallorani, and further in view of
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`Hegbom.
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`Ground 12: Invalidation of claim 12 under Section 103(a) based on
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`Takikawa in view of Hlava, Nachumsohn, or Vallorani, and further in view of
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`Hegbom and Matsumoto (U.S. Patent No. 5,580,594 – Ex. 1009), which issued in
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`1996 and is prior art under 35 U.S.C. § 102(b).
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`V. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§
`42.22(a)(2) AND 42.104(b)(4)
`A.
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`Background
`1.
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`Prosecution History
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`The Challenged Claims were rejected over claims 1-19 of U.S. Patent No.
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`6,509,550 (same inventor) on the ground of obviousness-type double patenting. A
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`terminal disclaimer was filed to overcome the rejection. No other rejections were
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`made.
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`2. The ’392 Patent
`As the BACKGROUND OF THE INVENTION section and some claims
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`reflect: (1) prior art cookers with deep well members included bottom heating
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`elements, (2) the inventor believed his invention related at least in part to the use of
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`a wrap-around (i.e., side) heating element. However, as the prior art discussed
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`below reveals, wrap-around heating elements were also well-known in the prior
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`art.
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`The “Field of the Invention” section of the ’392 Patent explains that the
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`“present invention relates to . . . a multifunctional cooking system including a deep
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`well cooker having a plurality of heating elements capable of being selectively
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`energized to correspond to different cooking modes.” Ex. 1001 at 1:13-17. This
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`section states that electric cooking pots for preparing and serving hot foods are
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`well known and typically include a deep well member and a heating element “for
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`supplying heat.” Id. at 1:18-21. This section states that such deep well members
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`are often made of stainless steel or enameled steel material, which have relatively
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`low coefficients of heat conductivity. Id. at 1:21-26. When heat is applied only to
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`the bottom of such a deep well member, this section explains, the upper portion of
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`the deep well member can be insufficiently heated. Id. at 1:27-30. This can result
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`in the food in the upper portion of the deep well member becoming too cool for
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`serving due to heat loss combined with the low rate of heat conductivity of the
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`material and the slow rate at which heat is supplied to the upper portion. Id. at
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`1:30-35.
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`In the “Description of the Prior Art” section of the ’392 Patent, the inventor
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`admits that “[v]arious solutions have been proposed in the prior art to solve this
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`problem.” Id. at 1:37-38. The inventor then describes Henke (U.S. 4,024,377 –
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`Ex. 1010) as disclosing a heat sink made of aluminum of another material having a
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`relatively high coefficient of heat conductivity that is positioned below the deep
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`well member. Id. at 1:38-43. The inventor explains that the heat sink is generally
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`U-shaped and has a bottom part that is parallel to and spaced apart from the bottom
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`of the well member and side parts that parallel to and in heat-exchanging contact
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`with the sides of the well member. Id. at 1:43-47. The inventor explains that when
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`an electric heating element that is disposed between the bottoms of the heat sink
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`and the well member is energized, heat is supplied to well member bottom by
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`“direct radiation and by radiation from the bottom part” of the heat sink, and by
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`convection from
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`the air around
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`the heating element.
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` Id. at 1:47-53.
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`Simultaneously, the inventor explains, heat also flows through conduction up the
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`sides of the heat sink from the bottom of the heat sink and into the sides of the well
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`member, “for more uniform heating of the well member while also providing for
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`more efficient utilization of the energy supplied to the heating element.” Id. at
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`1:54-60.
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`In this same section, the inventor describes Jepson (U.S. 3,393,295 – Ex.
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`1011) as “[a]nother example of a prior art cooking device having multiple heating
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`elements[,]”—specifically lower and upper heating elements. Ex. 1001 at 1:61-65.
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`The inventor explains that Jepson also discloses a “thermostatic control” that
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`“serves thermostatically to control the energization of either [heating] element in a
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`repeating, alternating sequence and is capable of performing the functions of a
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`frying pan, broiler, and oven.” Id. at 1:66-2:6. The inventor then distinguishes
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`Jepson as “not directly applicable to deep well cookers” and also states that it does
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`not disclose “a wrap-around heating element for controlling heat distribution to the
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`upper surfaces of a deep well member within such a cooker.” Id. at 2:6-10.
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`This latter statement—distinguishing Jepson because it lacks a side heating
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`element—together with the subject matter of original claim 15 reflects that the
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`inventor likely believed that an important aspect of his invention was a side heating
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`element. Specifically, claim 15 (which issued as it was originally filed) is drafted
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`in Jepson format with the preamble disclosing as prior art: a deep well cooker
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`having an outer housing, a deep well member residing within the outer housing and
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`having a bottom surface with integrally formed side walls and an open top defining
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`a cooking pot, a bottom heating element disposed adjacent the bottom surface of
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`the deep well member and between the outer housing and deep well member, and a
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`temperature control switch electrically interconnected to the bottom heating
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`element. The improvement is claimed as a wrap-around (i.e., side) heating element
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`electrically interconnected to the temperature control switch, radially disposed
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`about the side walls of the deep well member, and positioned between the deep
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`well member and the outer housing; and a multi-function control switch
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`electrically interconnected to the temperature control switch and the bottom and
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`side heating elements, enabling each of the heating elements to be selectively
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`energized to provide variable cooking modes.
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`The inventor concludes the BACKGROUND section by stating that “the
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`present invention has been developed to provide an alternative solution to the
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`problem of regulating the distribution of heat to all surfaces within a deep well
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`cooker and to provide other functional advantages over the prior art.” Id. at 2:11-
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`15.
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`B. Claim Construction (37 C.F.R. § 42.104(b)(3))1
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`1 Other forums, such as district courts, apply different standards of proof and claim
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`interpretation. Any interpretation, construction, or application of the Challenged
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`Claims in this Petition (whether implicit or explicit) are specific to the broadest
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`In an inter partes review, a claim in an unexpired patent is given the
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`“broadest reasonable construction in light of the specification of the patent in
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`which it appears.” 37 C.F.R. § 42.100(b). Petitioner therefore requests that the
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`claim terms be given their broadest reasonable interpretation, as understood by one
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`of ordinary skill in the art and consistent with the disclosure. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012).
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`There are three means-plus-function limitations in the challenged claims.
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`However, as explained in further detail below, the “heating means” is not entitled
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`to treatment under 35 U.S.C. § 112, paragraph 6 (“Section 112/6”) because claim 1
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`recites sufficient structure for achieving the specified function of “heating.”
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`“heating means”
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`1.
`The challenged claims recite:
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`heating means including a bottom heating element and a wrap-around
`heating element radially disposed about said deep well member and
`positioned intermediate said housing and said deep well member[.]
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`Ex. 1001 at 7:21-242. The use of the word “means” gives rise to a rebuttable
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`presumption that this phrase should be construed under Section 112/6. See Sage
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`reasonable interpretation standard. Petitioner reserves the right to revise its
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`interpretation, construction, or application of the Challenged Claims under any
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`standard other than the broadest reasonable interpretation standard.
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`2 A reference to “7:21-24” represents a reference to column 7, lines 21-24.
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`Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997). The
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`function, as explicitly recited in claim language, is “heating.” See Signtech USA,
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`Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (construing function of
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`“ink delivery means” to be “ink delivery”); Micro Chem., Inc. v. Great Plains
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`Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) (“The statute does not permit
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`limitation of a means-plus-function claim by adopting a function different from
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`that explicitly recited in the claim.”).
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`Claim 1 recites sufficient structure to perform the claimed function,
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`beginning with the “heating means” element itself: a bottom heating element and a
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`wrap-around heating element radially disposed about the deep well member and
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`positioned intermediate the housing and the deep well member. The balance of
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`claim 1 recites that the temperature of the heating elements is regulated by the
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`temperature controlling means and that the function controlling means enables the
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`heating elements to be selectively energized to provide variable cooking modes. In
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`view of this usage of “heating element” in the claim itself, the term represents a
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`structure that heats. Furthermore, as the use of “heating element” in the
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`BACKGROUND OF THE INVENTION section demonstrates (Ex. 1001 at 1:19-
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`21 (“[Electric cooking pots] typically include a deep well member and a heating
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`element arranged in functional relation thereto for supplying heat.”) (emphasis
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`added), 1:47-60 (discussing Henke), and 1:1:63-2:6 (discussing Jepson), and as the
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`prior art cited on the face of the ’392 Patent shows, the term “heating element” has
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`a well-understood meaning in the relevant art as a structure that heats. See, e.g.,
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`Hlava at 1:20-22 (in Background: “Roasters include one or more heating
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`elements that are capable of producing the high temperature required for
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`roasting.”) (emphasis added), 2:1-5 (“The control circuit of roasters typically
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`includes a thermostat which turns on a heating element until a desired temperature
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`level is reached and then the element is shut off. The cycling on and off of the
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`heating element is used to control the temperature.”) (emphasis added), and 4:13-
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`17 (“Heating device 30 preferably includes a plurality of resistance type heating
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`elements formed in a band wrapping around liner side wall 34. Heating elements
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`when supplied with power transfer heat to liner 28 side wall, which through
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`conduction carries the heat throughout the liner.”) (emphasis added); Desloge (U.S.
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`Patent No. 5,359,179 – Ex. 1012) at, e.g., 3:50-62 (describing different types of
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`“heating elements” with which the subject heater construction is adaptable), and
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`5:54-6:10 and FIG. 2 (describing/showing construction of “heating element 20”);
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`Henke at, e.g., Abstract, and 2:60-66 and FIGs. 1-4 (describing/showing “heating
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`element 38”); Scott (U.S. Patent No. 3,881,090 – Ex. 1013) at 4:32-38 (describing
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`“heating element” in claim 1); Munsey (U.S. Patent No. 3,508,485 – Ex. 1014) at,
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`e.g., Abstract, 2:56-59, and 2:last line-3:18 and FIGs. 2-3 (describing/showing
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`“heating element 20”); Jepson at, e.g., Abstract, 4:43-58 (describing “lower heating
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`element 34”), 5:30-44 (describing “upper heating element 62”), and FIGs. 14 and
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`21; Nachumsohn at, e.g., brief description of FIGs. 4 and 5 in first column on
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`second page and those figures, pages 2 and 3 (describing side “heating element 8”
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`(beginning at third full paragraph of first column on page 2) and a bottom heating
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`element constituted by ribbon resistor 20 (beginning at first full paragraph of first
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`column of page 3)); and Smith (U.S. Patent No. 2,103,560 – Ex. 1015) at, e.g.,
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`page 2, first column, lines 29-54 (describing side heating elements 10 and 12 and
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`“bottom heating coil 14,” which is described in claims 1 and 2 (on pages 3 and 4)
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`as a “heating element”), and FIG. 1. This is also clear from extrinsic evidence
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`such as Hegbom’s book “Integrating Electrical Heating Elements in Appliance
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`Design” (emphasis added – Ex. 1006), which includes a definition of “electrical
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`heating element” on pages 81-82, and which recommends tubular and sheathed
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`mica heating elements for slow cookers (page 379 at 10.1.22.), the tubular heating
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`element being described starting on page 236 and the sheathed mica heating
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`element being described starting on page 315, and from the McGraw-Hill
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`Dictionary of Scientific and Technical Terms, 5th Ed., ©1994 (Ex. 1016), which
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`defines “heating element” as “[t]he part of a heating appliance in which electrical
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`energy is transformed into heat.”
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`Accordingly, claim 1 recites sufficient structure to perform the claimed
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`function of heating and the rebuttable presumption that the claimed “heating
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`means” should be construed under Section 112/6 is overcome. See Envirco Corp.
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`v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000). As a result, the
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`claim language of the heating means element of the challenged claims should be
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`given its broadest reasonable interpretation, as understood by one of ordinary skill
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`in the art and consistent with the disclosure.
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`“temperature controlling means”
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`2.
`The challenged claims recite:
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`temperature controlling means electrically interconnected to said heating
`means for regulating the temperature of said heating elements[.]
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`Ex. 1001 at 7:25-27. The use of “means … for” raises the rebuttable presumption
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`that this phrase should be construed under 112/6. This presumption remains intact
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`because the claimed temperature controlling means is associated with a function,
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`and the claim does not recite structure sufficient to perform the claimed function.
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`The claimed function is: “regulating the temperature of said heating
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`elements.” The phrase “regulating the temperature of said heating elements” is not
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`used in the specification, and there is no evidence that the inventor acted as his
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`own lexicographer and set forth a special meaning for this phrase or any of its
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`terms. The specification does not describe how any particular structure achieves
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`the claimed temperature regulating function.
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`The term “regulate” (or a form thereof) is not used with the term
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`“temperature” in the specification or elsewhere in the claims. The term
`53341732.1
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`“regulating” appears in only one location outside of the claims, and it is in the
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`context of heat distribution. Id. at 2:11-15. The term “regulate” is used only once
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`outside the claims: “The temperature control switch 32 and the function control
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`switch 34 are electrically interconnected with the bottom heating element 38 and
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`the wrap-around heating element 40 and regulate their operation as explained
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`hereinafter in further detail.” Id. at 3:57-61 (emphasis added). The phrase “heat
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`regulation” is used three times: in the Abstract (“Both the bottom heating element
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`and the wrap-around heating element are electrically interconnected by a
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`temperature controlling device for heat regulation and a multi-function controller
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`for selectively energizing the heating elements individually or in combination for
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`various cooking modes.”) (emphasis added); in the second sentence of the
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`SUMMARY OF THE INVENTION section (“The bottom heating element and the
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`wrap-around heating element are interconnected by a temperature control switch
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`for heat regulation and a function control switch for selectively energizing the
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`desired heating elements individually or in combination to provide various
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`different cooking modes.”) (emphasis added); and at 6:55-59 (“The bottom heating
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`element and the wrap-around heating element are interconnected by a temperature
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`control switch for heat regulation and a multi-function control switch for
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`selectively energizing the desired heating elements of the system for different
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`cooking modes.”) (emphasis added).
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`53341732.1
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`-15-
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`The specification uses several terms to refer to possible structures for
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`performing the claimed function: “temperature controlling device” (Abstract);
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`“temperature control switch” (2:23-24 and 6:56); “temperature control switch 32”
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`(3:54, 3:57, 4:14, 4:17); and “Temperature Controller” 32 (FIG. 3). See Ex. 1001.
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`Element number 32 is depicted in FIGs. 1A-2 as including a knob that is accessible
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`on the outside of cooker 10. Id. The term “temperature control switch” is also
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`used in claim 15. Id. at 8:30-31 The term “temperature controls” (plural) is used
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`twice in the specification to refers to structures that are apparently in proximity to
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`but insulated from the heater lead wire assembly 50 of at least wraparound heater
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`element 40. See id. at 4:37-45.
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`Patent Owner has indicated in the Litigation that a type of temperature
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`control switch that is sufficiently disclosed in the specification, and that qualifies
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`as corresponding structure for the claimed function of regulating the temperature of
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`the heating elements, is a “thermostat.” Ex. 1017 (Acorne Enterprises, LLC’s
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`Response to Amended Invalidity Contentions, served October 7, 2013) at 3
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`(“Defendants argue that temperature control switch 32 is not capable of regulating
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`the temperature of the heating elements. Defendants’ assertion is incorrect. For
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`example, a thermostat is a type of switch that is capable of regulating the
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`temperature of the heating elements.”). The term “thermostatic control” is used in
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`the BACKGROUND OF THE INVENTION section to describe an aspect of the
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`53341732.1
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`disclosure of Jepson that “serves thermostatically to control the energization of
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`either [heating] element in a repeating, alternating sequence and is capable of
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`performing the functions of a frying pan, broiler, and oven.” Ex. 1001 at 1:66-2:6.
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`Patent Owner has also contended that a thermostat is not the only type of
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`allegedly disclosed structure that corresponds to the claimed temperature
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`regulating function. Specifically, Patent Owner has contended that temperature
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`controller 32 of FIG. 3 can be—by virtue of at least a technical dictionary
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`definition of “controller”—a “structure for controlling . . . the heating elements . . .
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`.” Ex. 1017 at 3. However, a structure for controlling the heating elements is no
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`more structurally specific than the claimed temperature controlling means. Ergo
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`Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361, 1363-64 (Fed. Cir. 2012).
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`Moreover, the term “controller” has been used in the prior art to refer to a
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`microprocessor (see DeCobert (U.S. Patent No. 6,573,483 – Ex. 1018) at 1:30-49),
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`and no algorithm has been disclosed in Patent Owner’s specification. Ergo
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`Licensing, 673 F.3d at 1364-65 (assuming that “control device” was corresponding
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`structure for claimed “programmable control means” and affirming district court’s
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`judgment that “programmable control means” term was invalid as indefinite
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`because no algorithm was disclosed).
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`Any corresponding structure for the claimed temperature regulating function
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`should be one that, as reflected in FIGs. 1A-2, can be manipulated from outside the
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`53341732.1
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`outer housing of the deep well cooker. Beyond this, it is not necessary to identify
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`the corresponding structure for the claimed temperature regulating function
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`because: the primary references on which Petitioner relies disclose thermostats,
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`and if a thermostat were used as “Temperature Controller” 32 in FIG. 3, such a
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`device would be capable of accepting full power such that, depending on its state,
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`alternating current (AC) could flow through it to power the rest of the circuit, as
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`would be required of element 32 as shown in FIG. 3. See Sherwood (Declaration
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`of Robert Sherwood in Support of Euro-Pro Operating, LLC’s Petitions for Inter
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`Partes Review of U.S. Patent No. 6,515,262 and U.S. Patent No. 6,624,392 – Ex.
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`1019) at ¶¶ 22, 23.3
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`“function controlling means”
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`3.
`The challenged claims recite:
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`function controlling means electrically interconnected to said temperature
`controlling means and to said heating elements enabling said bottom heating
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`3 Mr. Sherwood has significant engineering experience, including with the design
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`of control systems for cookers, and a knowledge of the relevant art as reflected in
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`paragraphs 1-14, which enables him to provide the opinions set forth herein about
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`the understanding one of ordinary skill in the art would have about certain subjects.
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`Ex. 1019. The preparation and perspective for his opinions is explained in
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`paragraphs 15-22 of Exhibit 1019.
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`53341732.1
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`element and said wrap-around heating element to be selectively energized to
`provide variable cooking modes.
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`Ex. 1001 at 7:29-33. The use of “means … for” raises the rebuttable presumption
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`that this phrase should be construed under Section 112/6. This presumption
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`remains intact because the claimed function controlling means is associated with a
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`function, and the claim does not recite structure sufficient to perform the claimed
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`function.
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`The claimed function is: “enabling said bottom heating element and said
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`wrap-around heating element to be selectively energized to provide variable
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`cooking modes.” This phrase is not used in the specification, though claim 15 uses
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`similar language to the describe the functionality of a claimed “multi-function
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`control switch . . . enabling each of said [bottom and wrap-around] heating
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`elements to be selectively energized to provide variable cooking modes for said
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`cooker.” See Ex. 1001. The specification uses similar language with reference to
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`energizing the disclosed heating elements “individually or in combination” (id. at
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`Abstract (second to last sentence), 3:57-61, and 4:17-22). However, in other
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`locations, more general language is used: selectively energizing the disclosed
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`heating elements for different cooking modes. Id. at 1:first sentence of Field of
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`Invention section, 2:third sentence of SUMMARY OF THE INVENTION section,
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`and 6:56-59. Therefore, the broadest reasonable interpretation of the claimed
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`53341732.1
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`-19-
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`function does not require enabling the energization of the side and bottom heating
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`elements individually or in combination (i.e., one, the other, or both), but instead
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`merely requires enabling the energization of the side and bottom heating elements
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`to provide variable4 cooking modes.
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`The specification uses several terms to refer to possible structures for
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`performing
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`the claimed function:
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` “multi-function controller” (Abstract);;
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`“function control switch” (2:second sentence of “SUMMARY OF THE
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`INVENTION” section, and 5:54), “multi-function control switch” (6:57, and claim
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`15); “Multi-Function Controller” 34 (FIG. 3); “multi-function control switch 34”
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`(3:54-55); and “function control switch 34” (3:58, 4:18, and 4:27). See Ex. 1001.
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`Element number 34 is depicted in FIGs. 1A and 1B as including a knob that
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`is accessible on the outside of cooker 10. Referring to FIG. 3, the specification
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`4 The term “variable” is used only in the claims and not in the specification of Ex.
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`1001. It should be given no special meaning and is, if anything, an inherent
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`characteristic of a cooking mode that can be affected by the use of the claimed
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`temperature controlling means (which, as explained above, Patent Owner has
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`contended is satisfied by a thermostat). The term “various” is used several tim
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