UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ACCO Brands Corporation and
`ACCO Brands USA LLC
`Petitioner
`
`v.
`
`Think Products, Inc.
`Patent Owner
`
`_______________
`
`Case IPR2015-01168
`Patent 8,837,144
`_______________
`
`PETITIONER’S REPLY
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ACCO Brands Corporation and
`ACCO Brands USA LLC
`Petitioner
`
`v.
`
`Think Products, Inc.
`Patent Owner
`
`_______________
`
`Case IPR2015-01168
`Patent 8,837,144
`_______________
`
`PETITIONER’S REPLY
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`ARGUMENT...................................................................................................2
`
`A.
`
`Construction of Captive Security Rod...................................................2
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`The Board Correctly Construed Captive Security Rod...............2
`
`The Patent Owner’s Proposed Construction is
`Inconsistent with the Claim Language........................................5
`
`The Patent Owner’s Proposed Construction is
`Inconsistent with the Specification.............................................9
`
`The Patent Owner’s Proposed Construction is
`Inconsistent with the File History.............................................14
`
`The ’144 Patent Does Not Depict Any Embodiment of
`the Claimed Invention...............................................................15
`
`B.
`
`C.
`
`D.
`
`The Board Correctly Determined that the Challenged Claims
`Are Not Entitled to a Priority Benefit Date Earlier Than
`February 18, 2011................................................................................16
`
`The Challenged Claims Are Unpatentable over ClickSafe.................18
`
`The Challenged Claims Are Unpatentable over McDaid and
`Chen.....................................................................................................18
`
`III. CONCLUSION..............................................................................................23
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Allergan, Inc. v. Sandoz, Inc.,
`726 F.3d 1286 (Fed. Cir. 2013) .....................................................................22
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .....................................................................19
`
`Statutes
`
`35 U.S.C. § 112........................................................................................................16
`
`35 U.S.C. § 311........................................................................................................16
`
`Rules
`
`37 C.F.R. § 42.63 .......................................................................................................7
`
`
`
`I.
`
`INTRODUCTION
`
`The Petition established that the challenged claims of the ’144 patent are
`
`unpatentable on the three instituted grounds: (A) claims 1-11 and 14-20 are
`
`anticipated by the ClickSafe video; (B) claim 12 is obvious over the ClickSafe
`
`video and McDaid; and (C) claims 1-12 and 14-20 are obvious over McDaid and
`
`Chen.
`
`The Patent Owner does not dispute that the Petition correctly identified
`
`disclosures of each challenged claim limitation in the ClickSafe video, McDaid,
`
`and Chen. Accordingly, the Reply addresses the issues of claim construction,
`
`support in alleged priority applications, and motivation to combine addressed in
`
`the Patent Owner’s Response.
`
`The Board correctly construed the term captive security rod and determined
`
`that there is no disclosure of the claimed subject matter in the Patent Owner’s
`
`alleged priority documents. Accordingly, the ClickSafe video is prior art and
`
`anticipates claims 1-11 and 14-20; and claim 12 is obvious over the ClickSafe
`
`video and McDaid.
`
`McDaid does not teach away from combining its disclosure with the
`
`automatic lock mechanism disclosed in Chen; and Chen itself provides an express
`
`motivation to combine. Accordingly, the challenged claims are obvious over
`
`McDaid and Chen.
`
`1
`
`
`
`II.
`
`A.
`
`ARGUMENT
`Construction of Captive Security Rod
`The Board Correctly Construed Captive Security Rod
`1.
`In its Institution Decision, the Board correctly construed captive security rod
`
`to mean: “a rod-shaped portion of a locking assembly, wherein the rod is anchored
`
`to the housing of a portable electronic device.” Institution Decision, Paper No. 13
`
`at 7, 8; see Ex. 1024, White Suppl. Decl. ¶¶ 7-9.1
`
`The term captive security rod is recited in the three challenged independent
`
`claims, 1, 14, and 20. Ex. 1003 at 19:19-26, 20:18-22, 21:2-11. As recited in claim
`
`1, which is representative of the claimed subject matter, the captive security rod
`
`has a locking end and an anchoring end, wherein the anchoring end is installed in
`
`the at least one housing to anchor the captive security rod thereto, and the captive
`
`security rod is partially in the housing after installation and partially out of the
`
`housing before and during use after installation. Likewise, claim 14 recites that a
`
`captive security rod or spike has a locking end and an anchoring end, the anchoring
`
`1 This Reply is supported by a Supplemental Declaration of Ryan White, Ex. 1024,
`
`which addresses the following issues raised in the Patent Owner’s Response: (a)
`
`construction of captive security rod; (b) the subject matter disclosed in McDaid,
`
`Ex. 1008; and (c) whether POSA had a reason to combine McDaid, Ex. 1008 with
`
`Chen, Ex. 1009. See Ex. 1024, White Suppl. Decl. ¶¶ 1-6.
`
`2
`
`
`
`end configured for installing to the housing by anchoring to the portable electronic
`
`device through the housing, the installed captive security rod or spike positioned in
`
`a recess in the housing during non-use. Claim 20 recites a method for securing a
`
`portable electronic device utilizing a locking assembly comprising a [captive]
`
`security rod or spike formed with an anchoring end separated axially by a
`
`protruding end, the method including a step of securely installing the anchoring
`
`end of the [captive] security rod or spike to the portable electronic device in the
`
`housing.2
`
`According to the Board’s construction, “the rod is anchored to the housing
`
`of a portable electronic device.” This construction reflects the ordinary meaning of
`
`the claim language stating that the anchoring end of the captive security rod is
`
`installed in the housing “to anchor the captive security rod thereto” (claim 1); the
`
`“anchoring end of said captive security rod or spike configured for installing to the
`
`housing by anchoring to the portable electronic device through the at least one
`
`2 The Patent Owner does not dispute that claim 1 is representative of the claimed
`
`subject matter, and this Reply focuses on the language of claim 1. Claims 1 and 14
`
`recite a captive security rod; claim 20 recites a “security rod or spike” with an
`
`anchoring end that is installed in the housing, which is identical in scope to a
`
`captive security rod.
`
`3
`
`
`
`housing” (claim 14); and “securely installing the anchoring end of the [captive]
`
`security rod or spike to the portable electronic device in the housing” (claim 20).
`
`The Petition does not include a proposed construction of captive security
`
`rod, relying on its ordinary meaning in the context of the patent. However the
`
`Petition’s analysis of whether a captive security rod is described in the alleged
`
`priority documents, and whether a captive security rod is disclosed in the prior art,
`
`addressed in detail all of the claim language, consistent with the Board’s
`
`construction.
`
`The Board’s construction expressly states that the captive security rod is
`
`anchored to the housing, as required by the claims. The Board’s construction does
`
`not expressly state that: (1) the captive security rod has two ends, (a) a locking end
`
`and (b) an anchoring end; (2) that the anchoring end anchors the captive security
`
`rod to the housing; and (3) that the captive security rod is captive in the housing,
`
`partially in the housing, and partially out of the housing, before and during locking
`
`use. Likewise the Petitioner did not propose a construction of each of these terms
`
`recited in the claims, relying on their ordinary meaning. See Ex. 1003 at 19:16-33;
`
`Petition at 4-11. Although each recited limitation does not need to be included in
`
`an express construction of captive security rod, each limitation must be considered
`
`and given weight to determine whether each feature is shown in the prior art, and
`
`4
`
`
`
`in evaluating whether the Patent Owner’s alleged priority applications provide
`
`support for the claims.
`
`2.
`
`The Patent Owner’s Proposed Construction is Inconsistent
`with the Claim Language
`The Patent Owner ignores the claim language surrounding the words captive
`
`security rod, arguing for the following “construction”:
`
`Accordingly, Think Products respectfully submits that
`the proper construction of the “captive security rod”
`claim term includes, but is not necessarily limited to, a
`rod or spike 285 that may include a ferrule 286 so that,
`upon insertion through a hole of a locking mechanism,
`the rod, spike or anchor is locked, via, e.g., a pin lock
`110 or another type of locking device, within the hole
`sufficient for barring unintended removal of the spike or
`rod from the hole.
`
`Response at 12 (italics emphasis added). The Patent Owner’s proposed
`
`construction of captive security rod is based on definitions of the three words
`
`captive, security, and rod taken out of context, without proper consideration of the
`
`claim language, specification, and file history, as confirmed by the deposition
`
`testimony of the Patent Owner’s witness, Robert Mahaffey. See Ex. 1023,
`
`Mahaffey Dep. Tr. 98:14-99:21.
`
`Although the language quoted above is identified as the “proper
`
`construction” by the Patent Owner, what is provided instead is a non-exclusive list
`
`5
`
`
`
`(“includes, but is not necessarily limited to”) of what might be encompassed by a
`
`captive security rod (“a rod or spike 285 that may include a ferrule 286”). The
`
`Patent Owner makes additional, inconsistent statements concerning its proposed
`
`construction. See, e.g., Response at 8 (stating that the “’144 Patent disclosure
`
`provides that the ferrule 286 is the captive security rod”); Response at 10 (“Figs.
`
`29, 30, and 31 depict alternative embodiments of captive security rods 291, 296,
`
`299”); Response at 11 (“both spike 285 and ferrule 286 are ‘captive security
`
`rods’”).
`
`In its discussion of the construction of captive security rod, the Patent
`
`Owner also states the following, relying on Mr. Mahaffey’s declaration:
`
`20. A captive security rod can be a rod, ferrule or spike
`that passed through a hole (unidirectionally), but could
`have freedom to slide back-and-forth as well as rotate.
`This rod becomes “captive” when a locking device (such
`as lockhead) is attached to far distal end. Once attached
`to a locking device, the rod is now captive in the hole and
`prevents the device to which the assembly has been
`applied, from being removed. The locking assembly, i.e.,
`the captive security rod, the locking device or head and
`device to he secured, are now captive. With locking
`device applied to security rod, the security rod itself may
`still rotate and but retained or “captive.”
`
`6
`
`
`
`Response at 8 (quoting Ex. 6,3 Mahaffey Decl. ¶ 20) (emphasis added).
`
`As explained below, the Patent Owner’s construction and Mr. Mahaffey’s
`
`discussion ignore express claim language that modifies captive security rod.
`
`Moreover, a rod or spike 285 that may include a ferrule 286, as described in the
`
`specification, cannot be a captive security rod, as discussed in detail in the Petition
`
`and supporting testimony. See Petition at 15-19; Ex. 1021, White Decl. ¶¶ 51-62;
`
`Ex. 1024, White Suppl. Decl. ¶¶ 10-14.
`
`The Patent Owner seeks a construction that ignores claim language other
`
`than the three words “captive security rod.” In particular, the Patent Owner, and its
`
`witness, Mr. Mahaffey ignore the claim language stating that: (1) the captive
`
`security rod has two ends, (a) a locking end and (b) an anchoring end; (2) that the
`
`anchoring end anchors the captive security rod to the housing; and (3) that the
`
`captive security rod is captive in the housing, partially in the housing, and partially
`
`out of the housing, before and during locking use. See Ex. 1024, White Suppl.
`
`Decl. ¶ 15.
`
`The Patent Owner ignores this claim language in its discussion of claim
`
`construction (Response at 6-12), as well as in its analysis of alleged support in
`
`3 This Reply cites the Patent Owner’s exhibit numbers, as filed with the Response,
`
`although the Patent Owner’s numbering does not comply with 37 C.F.R. §
`
`42.63(c).
`
`7
`
`
`
`earlier-filed applications (Response at 12-14). For example, the Patent Owner
`
`quotes Mr. Mahaffey as stating that the captive security rod “becomes ‘captive’
`
`when a locking device (such as lockhead) is attached to far distal end.” Response at
`
`8 (quoting Ex. 6, Mahaffey Decl. ¶ 20) (emphasis added). In his deposition, Mr.
`
`Mahaffey admitted that a spike 285, ferrule 286, and rod 291 are not “captive,” and
`
`cannot be captive security rods until after they are locked. Ex. 1023, Mahaffey
`
`Dep. Tr. 100:5-10. This construction directly contradicts express claim language
`
`stating that the captive security rod must be captive during and before locking use,
`
`not only after a lock is engaged. This claim language is reflected in the Board’s
`
`construction, stating that the captive security rod is anchored to the housing, but is
`
`ignored by the Patent Owner. See Ex. 1024, White Suppl. Decl. ¶ 16.
`
`The Response acknowledges that the claims under review recite that a
`
`captive security rod has a locking end and an anchoring end. See Response at 7
`
`(“Independent apparatus Claims 1, 14 of U.S. Patent No. 8,837,414 recites [sic] a
`
`‘captive security rod’ as ‘having a locking end and an anchoring end,’ while
`
`independent method Claim 20 provides that ‘a captive security rod or spike [is]
`
`formed with an anchoring end separated axially by a protruding end.’”). The
`
`Response, however, omits these features from its construction of captive security
`
`rod, and ignores these features in its analysis of alleged support in the priority
`
`8
`
`
`
`applications. See Response at 8-14. Accordingly, the Patent Owner’s proposed
`
`construction is inconsistent with the claim language.
`
`3.
`
`The Patent Owner’s Proposed Construction is Inconsistent
`with the Specification
`
`At pages 8-9 of the Response, Patent Owner argues that the “ferrule 286” is
`
`a captive security rod, as shown in Figs. 28C and 28D:
`
`The ’144 Patent disclosure provides that ferrule 286 is
`the captive security rod to lock notebook computer 500 in
`place once the lock is operated as shown in Fig. 28D; the
`ferrule 286 is now a captive security rod in the housing of
`the computer, as can be seen from Figs. 28C and 28D:
`
`Response at 8. In support of this argument, Patent Owner relies on copies of Figs.
`
`28C and 28D that the Patent Owner annotated in a manner that is inconsistent with
`
`the claim language, patent figures, and specification. Response at 9. The Patent
`
`Owner’s annotated Fig. 28C is reproduced below:
`
`9
`
`
`
`Response at 9 (red highlighting added); see Ex. 1024, White Suppl. Decl. ¶¶ 17,
`
`18.
`
`The annotated copies of Figs. 28C and 28D in the Response incorrectly
`
`identify the ferrule 286 as the “[a]nchoring end of captive security rod or spike,”
`
`and the Response fails to acknowledge that what is incorrectly annotated as an
`
`“anchoring” end of the ferrule: (1) is located on a flexible cable 210, not on a rod
`
`or spike; (2) is not described as an anchoring end in the specification; and (3) is
`
`shown outside of the housing, not anchored to the housing, as required by the
`
`claims. Accordingly, the ferrule 286 does not include an anchoring end. See Ex.
`
`1024, White Suppl. Decl. ¶ 15; Ex. 1023, Mahaffey Dep. Tr. 92:15-18 (stating that
`
`10
`
`
`
`what is annotated as the “anchoring end” in Fig. 28C is the same as the locking
`
`end).
`
`Moreover, the ferrule 286 (alone or in combination with attached cable 210)
`
`cannot be the claimed captive security rod because the ferrule 286 is not partially
`
`in the housing and partially out of the housing before and during locking use, as
`
`recited in the claims. Fig. 28C depicts the ferrule 286 completely out of the housing
`
`before locking use, not partially in the housing as recited in the claims. See ’144
`
`patent at 8:4-6 (“FIG. 28C is a perspective view of the computer of FIG. 28B with
`
`a pin lock and locking ferrule aligned prior to insertion through security hole.”).
`
`The Patent Owner’s argument that Fig. 28C depicts a captive security rod, and
`
`cited supporting testimony (Ex. 6, Mahaffey Decl. ¶ 23), ignores this express claim
`
`language and what is actually depicted in Fig. 28C. For these reasons, in addition
`
`to the reasons addressed in the Petition and supporting evidence, Figures 28C and
`
`28D do not depict a claimed captive security rod. See Petition at 14, 15; see also
`
`Ex. 1021, White Decl. ¶¶ 54, 55; Ex. 1024, White Suppl. Decl. ¶ 19.
`
`At page 10 of the Response, the Patent Owner argues that “Figs. 29, 30, and
`
`31 depict alternative embodiments of captive security rods 291, 296, 299,” as
`
`claimed in the ’144 patent. As shown below, and as discussed in the Petition and
`
`supporting evidence, these figures do not depict a claimed captive security rod.
`
`11
`
`
`
`Contrary to the Patent Owner’s argument, Fig. 29 does not depict any of
`
`“rods 291, 296, 299.” Instead, Fig. 29 depicts a locking rod or spike 285, with a
`
`hole in which ferrule 286 is inserted, not a captive security rod that includes a
`
`locking end and anchoring end, and other features recited in the claims. As
`
`discussed in detail in the Petition and supporting evidence, the locking rod or spike
`
`285, alone or in combination with the ferrule 286, cannot be a captive security rod
`
`as claimed. See Petition at 15-17; Ex. 1021, White Decl. ¶¶ 56, 57.
`
`With respect to Fig. 30, the Patent Owner’s argument relies on a copy of Fig.
`
`30 that the Patent Owner annotated in a manner inconsistent with the claim
`
`language, patent figures, and specification:
`
`Response at 10 (red highlighting added). Fig. 30 depicts a rod 291, which the
`
`specification describes as a “captive security rod.” Indeed, rod 291 is the only
`
`12
`
`
`
`structure identified in the specification as a captive security rod. As discussed in
`
`detail in the Petition and supporting evidence, rod 291 cannot be a captive security
`
`rod as claimed, because similar to the spike 285, the rod 291 is not inserted into the
`
`opening of a lock mechanism as recited in the claims. Instead, in the embodiment
`
`of Fig. 30, the laptop is secured by inserting ferrule 286 through a hole (292) in the
`
`rod 291 and then engaging the ferrule into a pin lock 110. Accordingly, rod 291
`
`cannot be a captive security rod because it does not include a locking end, as
`
`required by the claims. The annotated copy of Fig. 30 in the Response
`
`misleadingly indicates that Fig. 30 depicts an “anchoring end” of “captive security
`
`rod” 291, but ignores the absence of any locking end in the rod 291, which is
`
`required in the claimed captive security rod. For these reasons, in addition to the
`
`reasons discussed in the Petition, rod 291 cannot be a captive security rod. See
`
`Petition at 17-19; White Decl. ¶¶ 58, 59.
`
`Fig. 31 depicts a long spike 296 and transverse pin 299, but as discussed in
`
`detail in the Petition and supporting evidence, long spike 296 and transverse pin
`
`299 are not captive security rods as claimed. The spike 296 is inserted through a
`
`housing of a laptop, but is not inserted into a locking mechanism as the claimed
`
`captive security rod; instead the spike 296 is secured by using a transverse pin and
`
`a pin lock. Accordingly, Fig. 31 does not depict a captive security rod. See Petition
`
`at 18, 19; Ex. 1021, White Decl. ¶ 60.
`
`13
`
`
`
`4.
`
`The Patent Owner’s Proposed Construction is Inconsistent
`with the File History
`
`The Response’s argument that Figs. 28, 28C, 28D, 29, 30, or 31, and
`
`accompanying specification text support the Patent Owner’s proposed construction
`
`of captive security rod is directly contradicted by the Patent Owner’s arguments
`
`made in the file history, during prosecution of the application that issued as the
`
`’758 patent (the parent of the ’144 patent), in particular, arguments distinguishing
`
`Ex. 1019, Murray, U.S. Patent No. 5,502,989. See Petition at 16, 17; Ex. 1002 at
`
`942 (Amendment dated November 22, 2013). Although the Petition explained how
`
`the Patent Owner’s arguments distinguishing Murray contradict any argument that
`
`a spike and ferrule locking arrangement depicted in the specification discloses a
`
`claimed captive security rod, the Response and Mr. Mahaffey’s declaration (Ex. 6)
`
`ignore the file history. Ex. 1024, White Suppl. Decl. ¶ 20. Mr. Mahaffey is not
`
`even familiar with the file history, and counsel for the Patent Owner objected when
`
`Mr. Mahaffey was questioned during his deposition about Murray and the file
`
`history. Ex. 1023, Mahaffey Dep. Tr. 108:15-111:11.
`
`As argued by the Patent Owner in the file history, Murray fails to disclose a
`
`captive security rod, which the Patent Owner acknowledged must be stored in the
`
`housing “during non-use and between deployments,” and must include a locking
`
`end, such that “the locking end of the captive security rod is received into the
`
`locking mechanism.” Ex. 1002 at 942. In view of the Patent Owner’s file history
`
`14
`
`
`
`arguments, the ferrule 286, rod 291, long spike 296, and transverse pin 299, as
`
`depicted in Figs. 28, 28C, 28D, 29, 30, or 31, do not support the Patent Owner’s
`
`proposed construction of captive security rod. Similar to the cited prior art
`
`(“Murray’s rectangular T-shaped locking member 124”), as characterized by the
`
`Patent Owner, these figures do not disclose a structure that is “stored out of the
`
`housing 137 during non-use and between deployments” and that includes a locking
`
`end that is “received into the locking mechanism,” as required for a claimed
`
`captive security rod. Ex. 1024, White Suppl. Decl. ¶¶ 21, 22.
`
`5.
`
`The ’144 Patent Does Not Depict Any Embodiment of the
`Claimed Invention
`
`The Response repeatedly argues that the Petition and Institution Decision’s
`
`construction of captive security rod is improperly based on alleged “preferred
`
`embodiments,” a “specific embodiment,” or a result of “importing limitations”
`
`from the specification. This argument is puzzling because neither the Petition nor
`
`the Institution Decision identify any disclosed embodiment that supports the
`
`challenged claims; indeed the specification of the ’144 patent does not disclose any
`
`embodiment of a captive security rod as recited in the claims.
`
`As shown in the Petition and supporting evidence, there is no disclosure of
`
`the claimed subject matter in Figs. 1-58, or in the text of Ex. 1007, the ’356 patent.
`
`See Petition at 11-19; Ex. 1021, White Decl. ¶¶ 44-62. The relationship between
`
`the ’356 patent and the ’144 patent is discussed in the Institution Decision at 2-3:
`
`15
`
`
`
`The ’488 patent is a CIP of the ’356 patent, the ’758 patent is a continuation of the
`
`’488 patent, and the ’144 patent is a continuation of the ’758 patent. Consequently,
`
`the ’356 patent and the ’144 patent contain identical Figs. 1-58 and accompanying
`
`text. Other than its claims, the ’144 patent does contain some limited, additional
`
`text not found in the ’356 patent, primarily the summary of the invention section,
`
`which paraphrases the claim language. See Ex. 1003 at 3:13-4:37, 4:62-6:24. The
`
`’144 patent also contains Figs. 59-65 and accompanying text, which the Response
`
`does not dispute, are not pertinent to the challenged claims. For these reasons, the
`
`’144 patent may very well be invalid for failure to satisfy the written description
`
`requirement of 35 U.S.C. § 112.4
`
`B.
`
`The Board Correctly Determined that the Challenged Claims Are
`Not Entitled to a Priority Benefit Date Earlier Than February 18,
`2011
`
`At pages 12-14, the Response argues that the challenged claims have a
`
`priority benefit date of May 23, 2008, based on the filing date of Ex. 5, U.S. Patent
`
`No. 7,724,520, relying on the subject matter illustrated in Figs. 28, 28A-D, and 29
`
`4 Although lack of written description is not an issue subject to review in an IPR,
`
`35 U.S.C. § 311(b), the Petitioner addresses this issue to rebut the Patent Owner’s
`
`arguments concerning alleged disclosure of preferred embodiments, and to avoid
`
`any misreading of the Petition, as somehow indicating that there is adequate
`
`disclosure of the claimed subject matter in the ’144 patent.
`
`16
`
`
`
`of the ’520 patent, which the Response apparently argues is also found in Ex. 3,
`
`U.S. Patent No. 8,223,488; and Ex. 4, U.S. Patent No. 8,139,356 (identical to Ex.
`
`1007). The Response at page 13, lines 3, 6, and 9 actually refers to Figs. “29A-D,”
`
`but we understand this to refer to Figs. 28A-D, because there are no Figs. “29A-D”
`
`in any of these patents. (However, we also note that the Response nowhere refers
`
`to Fig. 28A.)
`
`As discussed in detail in the Petition and supporting evidence, the ’356
`
`patent does not contain any disclosure of the claimed subject matter, in Figs. 28,
`
`28A-D, 29, or anywhere else. See Petition at 11-19, Ex. 1021, White Decl. ¶¶ 44-
`
`62. For the same reasons, the claimed subject matter is also not disclosed in the
`
`other alleged priority documents on which the Patent Owner relies.
`
`The Patent Owner’s arguments concerning alleged priority benefit are
`
`entirely based on, and overlap with its arguments concerning construction of
`
`captive security rod (Response at 5-14). Accordingly, for the reasons discussed in
`
`Section II.A above (addressing claim construction), in addition to the reasons
`
`discussed in the Petition and supporting evidence (see Petition at 11-19, Ex. 1021,
`
`White Decl. ¶¶ 44-62), the Board correctly determined that the ’144 patent is not
`
`entitled to an effective filing date earlier than February 18, 2011. Institution
`
`Decision at 11-13.
`
`17
`
`
`
`C.
`
`The Challenged Claims Are Unpatentable over ClickSafe
`
`At pages 12-14 of the Response, the Patent Owner argues that the challenged
`
`claims are not unpatentable over the cited art, because the claims are entitled to a
`
`priority benefit date of May 23, 2008, which is earlier than the publication date of
`
`the Clicksafe video, October 12, 2010. The Response does not dispute that the
`
`Clicksafe video discloses all limitations of claims 1-11 and 14-20 of the ’144
`
`patent, and that if the ’144 patent is not entitled to a priority date earlier than
`
`October 12, 2010, then claim 12 is obvious over the combination of the Clicksafe
`
`video and Chen.
`
`As shown in Section II.B above and in the Petition at 11-19, and as
`
`determined by the Board (Institution Decision at 11-13), the ’144 patent is not
`
`entitled to an effective filing date earlier than February 18, 2011. Accordingly,
`
`claims 1-11 and 14-20 are anticipated by the ClickSafe video; and claim 12 is
`
`obvious over the ClickSafe video and McDaid.
`
`D.
`
`The Challenged Claims Are Unpatentable over McDaid and Chen
`
`The Response does not dispute that all limitations of the challenged claims
`
`are disclosed by the combination of McDaid and Chen, and that these references
`
`are prior art. However, the Response argues that the claims are not unpatentable
`
`because McDaid teaches away from the combination, and because POSA would
`
`not have had a motivation to combine these references. Response at 14-21. The
`
`18
`
`
`
`Petition and supporting testimony establish that POSA would have had a reason to
`
`combine the references. Petition at 47; Ex. 1021, White Decl. ¶ 117. Moreover, the
`
`Board correctly determined that McDaid does not teach away from the
`
`combination with Chen. Even if McDaid did teach away, the prior art as a whole
`
`provides a motivation to combine the references. For these reasons the claims
`
`would have been obvious over McDaid and Chen.
`
`In its Preliminary Response, the Patent Owner argued that McDaid teaches
`
`away from using an “axial” locking mechanism (as disclosed in Chen), in the
`
`context of the McDaid locking device, which includes a “radial” locking
`
`mechanism, because McDaid teaches that the locking head in the disclosed device
`
`“should not be rotatable relative to the anchor.” Preliminary Response at 3 (citing
`
`Ex. 1008, McDaid at 6:20-28). In its Institution Decision, the Board quoted this
`
`cited portion of McDaid in context, and explained that this discussion in McDaid,
`
`prefaced by the phrase “[i]in another configuration,” refers to a particular
`
`embodiment. The Board accordingly determined that McDaid’s disclosure of one
`
`embodiment did not teach away from other disclosed embodiments, such as those
`
`that may permit rotation of the locking head relative to the anchor. See Institution
`
`Decision at 18-20 (citing In re Fulton, 391 F.3d 1195, 1202 (Fed. Cir. 2004)).
`
`In its Response, the Patent Owner does not directly address the Board’s
`
`analysis of this issue in the Institution Decision, citing other passages in McDaid,
`
`19
`
`
`
`namely Ex. 1008 at 2:38-45 and 6:29-48, instead of at 6:22-28. Response at 16. As
`
`the Board correctly determined, McDaid discloses two embodiments (or
`
`configurations) of a locking device: (1) a first configuration in which a round
`
`external member 64 mates with the locking head 104; and (2) a second
`
`configuration in which the external member 64 contains peaks and valleys, that
`
`mate with corresponding peaks and valleys of the locking head. As stated in
`
`McDaid:
`
`[1] In one configuration, the opening 132 is round to
`mate with a round external member skirt 64. [2] In
`another configuration, shown in FIGS. 8, the opening
`132 is shaped with peaks 134 and valleys 136 to mate
`with the valleys 66 and peaks 68 of the 20 external
`member skirt 64 of FIG. 4. With this configuration, the
`locking head 104 will not rotate relative to the anchor 20
`when they are engaged.
`
`Ex. 1008 at 6:15-22 (emphasis added). POSA would have understood that the first
`
`embodiment of McDaid is shown in Fig. 2, which depicts a round external member
`
`64, and that in this embodiment the locking head would be free to rotate about the
`
`member 64. Ex. 1024, White Suppl. Decl. ¶¶ 25-27.
`
`The second McDaid embodiment is depicted in Figs. 4 and 8, and includes
`
`peaks and valleys in the external member 64, which mate with peaks and valleys in
`
`the locking head, to prevent rotation. As stated in McDaid, rotation is prevented in
`
`20
`
`
`
`the second embodiment. Ex. 1008 at 6:15-22. Ex. 1024, White Suppl. Decl. ¶¶ 28-
`
`32.
`
`There is no support for the Patent Owner’s argument that the absence of
`
`rotation is “critical” in McDaid. As acknowledged by the Patent Owner, McDaid
`
`discloses a ring 170 designed to permit rotation of the cable relative to the anchor,
`
`even if the lock head itself cannot rotate. See Ex. 1008 at 7:4-7; Response at 17,
`
`18. Mr. Mahaffey admits that in all McDaid embodiments the cable “has to” be
`
`permitted to rotate relative to the captive security rod. Ex. 1023, Mahaffey Dep.
`
`Tr. 119:4-18. Accordingly, even the McDaid embodiment relied on by the Patent
`
`Owner permits relative rotation of the cable and anchor. Ex. 1024, White Suppl.
`
`Decl. ¶ 33.
`
`Even if the Board were to agree with the Patent Owner’s argument that
`
`McDaid teaches that preventing rotation between the lock head and the captive
`
`security rod is desirable, Chen itself provides an express motivation to substitute an
`
`axial lock mechanism for McDaid’s radial lock mechanism:
`
`It is a further objective of the present invention to
`provide a cable locking device with an automatic pop-up
`feature which utilizes an axial locking mechanism instead
`of a radial locking mechanism as in prior art that allows
`the locking device to be more easily operable than the
`prior art.
`
`21
`
`
`
`Ex. 1009 at 1:63-65 (emphasis added); Response at 19. Ex. 1024, White Suppl.
`
`Decl. ¶¶ 34-37.
`
`The Patent Owner and Mr. Mahaffey quote this portion of Chen, but
`
`apparently fail to appreciate that this quoted language supplies exactly the
`
`motivation to combine that the Patent Owner argues is lacking in the prior art. This
`
`portion of Chen supports Mr. White’s testimony that POSA knew that the
`
`automatic lock mechanisms disclosed in Chen had known advantages relative to
`
`key-operated mechanisms as disclosed in McDaid, and therefore would have had a
`
`reason to combine the references. See Ex. 1021, White Decl. at ¶ 117. Indeed, Mr.
`
`Mahaffey, a person of ordinary skill, “no more, no less,” was aware of McDaid but
`
`was not discouraged from developing a computer lock product (ClickSafe) that
`
`contains an axial lock engagement mechanism, and which permits the lock head to
`
`turn relative to a captive security rod. Ex. 1023, Mahaffey Dep. Tr. 68:20-69:17,
`
`75:4-8, 79:20-80:11, 93:22-95:6.
`
`Considering the prior art as a whole, the Board must conclude that there was
`
`a motivation to combine McDaid and Chen, even if the Board agrees with the
`
`Patent Owner’s argument that McDaid by i
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