throbber

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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 27
`Entered: July 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`L&P PROPERTY MANAGEMENT COMPANY,
`Petitioner,
`
`v.
`
`NATIONAL PRODUCTS INC.,
`Patent Owner.
`
`Case IPR2016-00475
`Patent 9,036,343 B2
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Petitioner, L&P Property Management Company (“L&P”), filed a
`Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–20 of
`U.S. Patent No. 9,036,343 B2 (Ex. 1001, “the ’343 patent”) pursuant to
`35 U.S.C. §§ 311–319. Patent Owner, National Products Inc. (“NPI”), filed
`a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the
`arguments presented in NPI’s Preliminary Response, we determined that the
`information presented in the Petition established that there is a reasonable
`
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`IPR2016-00475
`Patent 9,036,343 B2
`
`likelihood that L&P would prevail in challenging claims 1–20 of the
`’343 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we
`instituted this proceeding on July 21, 2016, as to these claims of the
`’343 patent. Paper 8 (“Institution Decision” or “Dec. on Inst.”).
`During the course of trial, NPI filed a Patent Owner Response
`(Paper 12, “PO Resp.”), and L&P filed a Reply to the Patent Owner
`Response (Paper 17, “Pet. Reply”). An oral hearing was held on April 27,
`2017, and a transcript of the hearing is included in the record. Paper 26
`(“Tr.”).
`L&P proffered a Declaration of Jason Lewandowski (Ex. 1014) with
`its Petition. NPI proffered a Declaration of Jeffrey D. Carnevali (Ex. 2014)
`with its Response. L&P also filed a transcript of the deposition of
`Mr. Carnevali (Ex. 1049).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 1–20 of the ’343 patent. For the reasons discussed below, L&P has
`demonstrated by a preponderance of the evidence that these claims are
`unpatentable under § 103(a).
`
`
`I. BACKGROUND
`
`Related Proceeding
`A.
`Both parties identify the following proceeding related to the
`
`’343 patent (Pet. 1; Paper 5, 2): National Products, Inc. v. Gamber-Johnson
`LLC, Case No. 2:15-cv-01571-MJP (W.D. Wash. filed Oct. 1, 2015).
`
`
`2
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`IPR2016-00475
`Patent 9,036,343 B2
`
`B.
`
`The ’343 patent
`The ’343 patent is directed to “quick release docking stations for
`portable computers and other portable electronics devices having one or
`more input/output (I/O) communication ports.” Ex. 1001, 1:20–23. Figure 5
`of the ’343 patent is reproduced below.
`
`
`Figure 5 is a perspective view of docking station 100 having two-piece body
`102 with upper body portion 102a connected to lower body portion 102b
`along line 103 of mutual contact. Id. at 12:21–30. Bearing surface 104 is
`structured to support the bottom of a portable computer, whereas connector
`presentation surface 106 is structured to present an expansion connector
`1081 to the back of the portable computer. Id. at 12:30–38. Receiver
`structure 110 is positioned opposite from connector presentation surface 106
`
`1 We agree with L&P that expansion connector 108 is mislabeled as 118 in
`the upper portion of Figure 5. See Pet. 4. Reference numeral 118 in the
`lower portion of Figure 5 correctly identifies sliding expansion connector
`drive mechanism 118.
`
`3
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`
`and includes open jaw structure 112 structured to mate with a tongue on the
`front of the portable computer. Id. at 12:43–49. Operation of sliding
`expansion connector drive mechanism 118 causes expansion connector 108
`and guide pins arms 116a, 116b to move toward open jaw structure 112 so
`that guide arms 116a, 116b are fitted in interface apertures in the rear of the
`portable computer before expansion connector 108 connects with the
`portable computer’s input/output connector. Locking latch mechanism 134
`may be used to constrain expansion connector drive mechanism 118 such
`that expansion connector 108 and guide arms 116a, 116b remain in a
`deployed position. Id. at 14:51–59. Display unit support 142 supports the
`display portion of the portable computer. Id. at 15:61–65.
`Figure 16 of the ’343 patent is reproduced below.
`
`
`Figure 16 is a perspective view of the inside of upper body portion 102a
`showing more detail of expansion connector drive mechanism 118. Id. at
`20:38–42. Retraction mechanism 246 is used to retract expansion connector
`
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`IPR2016-00475
`Patent 9,036,343 B2
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`108; it includes resilient retraction mechanism 250, such as a spring, to urge
`connector drive mechanism 118 toward a disengaged position. Id. at 23:4–
`23.
`
`C.
`
`L&P contends June 30, 2006, is the earliest possible priority date to
`which the claims of the ’343 patent are entitled. Pet. 3; Ex. 1001, at [63].
`As discussed below, L&P establishes that its asserted references qualify as
`prior art even when assuming that June 30, 2006, is the effective filing date
`for the challenged claims of the ’343 patent.
`
`Illustrative Claim
`Claims 1, 9, and 10 of the ’343 patent are independent. Claims 2–8,
`15, 16, 19, and 20 directly or indirectly depend from claim 1, and claims 11–
`14, 17, and 18 directly or indirectly depend from claim 10. Claim 1 is
`illustrative of the challenged claims and recites:
`1.
`A molded docking station for laptops, mini-laptops,
`notebooks, netbooks, and ultra mobile personal computers
`(UMPCs), the docking station adapted for mounting in vehicle
`applications and comprising:
`a housing comprising:
`a molded wall,
`a device bearing surface on a first portion of an
`outer surface of the wall between opposing side edges
`thereof,
`an expansion connector presentation edge of the
`wall positioned adjacent to a rear portion of the device
`bearing surface between the opposing side edges of the
`wall, and
`a mounting structure coupled for securely mounting
`the housing in a vehicle;
`
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`IPR2016-00475
`Patent 9,036,343 B2
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`a linear expansion connector drive mechanism having a
`movable connector seat portion movably coupled to a portion of
`the molded wall between the opposing side edges thereof for
`substantially linear motion along a linear drive axis relative to
`the expansion connector presentation edge of the wall, and a
`driver that is movable between the opposing side edges of the
`wall and is further coupled to the movable connector seat portion
`for linear motion thereof;
`an expansion connector coupled to the movable connector
`seat portion of the expansion connector drive mechanism for
`motion relative to the expansion connector presentation edge of
`the wall;
`a handle coupled to the linear expansion connector drive
`mechanism for moving the expansion connector between
`engaged and disengaged positions; and
`a resilient retraction mechanism coupled to the linear
`expansion connector drive mechanism for urging the expansion
`connector toward the disengaged position.
`Ex. 1001, 51:51–52:17.
`
`The Prior Art
`L&P relies on the following prior art:
`Nguyen et al., U.S. Patent No. 6,280,212 B1, filed Apr. 18,
`2000, issued Aug. 28, 2001 (Ex. 1003, “Nguyen”);
`Installation Instructions for Revolution Docking Station,
`Form #INST-197, dated Feb. 25, 2004 (Ex. 1004, “Revolution
`Instructions”);
`Revolution In-Vehicle Docking Station User Guide,
`Version 1.0, dated Mar. 30, 2004 (Ex. 1005, “Revolution
`Guide”);
`Yamamoto, U.S. Patent No. 5,701,229, filed Apr. 17,
`1996, issued Dec. 23, 1997 (Ex. 1006, “Yamamoto”)
`
`D.
`
`6
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`Patent 9,036,343 B2
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`for Panasonic Toughbook
`Instructions
`Installation
`27/28/29 Docking Stations, Form # INST-200, dated Oct. 29,
`2004 (Ex. 1007, “Pandock Instructions”)
`Excerpts from 2005 Gamber-Johnson Product Catalog,
`“2005 Solutions Manual” (Ex. 1008, “2005 Catalog”); and
`Nakajima et al., U.S. Patent No. 5,796,579, filed Feb. 7,
`1997, issued Aug. 18, 1998 (Ex. 1009, “Nakajima”).
`
`Instituted Grounds
`We instituted trial based on the following grounds (Dec. on Inst. 26):
`References
`Basis
`Claims Challenged
`
`E.
`
`35 U.S.C. § 103(a) 1–20
`
`35 U.S.C. § 103(a) 1–20
`
`Nguyen, Revolution2,
`Pandock3, and
`Yamamoto
`Nguyen, Revolution,
`Pandock, Yamamoto,
`and Nakajima
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`
`2 In its unpatentability contentions, L&P’s references to “Revolution”
`collectively refer to the Revolution Instructions and the Revolution Guide.
`See Pet. 15–16; see also infra § II.A.4.
`3 In its unpatentability contentions, L&P’s references to “Pandock”
`collectively refer to the Pandock Instructions and the 2005 Catalog. See
`Pet. 24; see also infra § II.A.5.
`
`F.
`
`7
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`IPR2016-00475
`Patent 9,036,343 B2
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`proceeding). Under the broadest reasonable interpretation standard, and
`absent any special definitions, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech. Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim
`terms or phrases must be set forth “with reasonable clarity, deliberateness,
`and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`L&P’s Arguments Regarding 35 U.S.C. § 112 ¶ 6
`1.
`Although L&P provides no supporting analysis under 35 U.S.C. § 112
`¶ 6,4 L&P proposes constructions for three claim limitations “to the extent
`the Board concludes they are means-plus-function limitations.” Pet. 9–11.
`We observe that none of the three claim limitations at issue—(1) “guide
`mechanism,” (2) “guide mechanism supporting structure,” and (3) “resilient
`retraction mechanism”—includes the word “means.” The absence of the
`word “means” in a claim limitation creates a rebuttable presumption that
`35 U.S.C. § 112 ¶ 6 does not apply. See Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1348–49 (Fed. Cir. 2015). “[T]his presumption ‘imposes on
`[the party seeking to overcome the presumption] the burden of going
`forward with evidence to rebut … the presumption.’” Apex Inc. v. Raritan
`Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003) (quoting Fed. R. Evid.
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103 & 112. Because the
`challenged claims of the ’343 patent have an effective filing date before the
`effective date of the applicable AIA amendments, throughout this Final
`Written Decision we refer to the pre-AIA versions of 35 U.S.C. §§ 102, 103
`& 112.
`
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`IPR2016-00475
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`301). Thus, for § 112 ¶ 6 to apply to these three claim limitations, “a
`preponderance of the evidence [must show] that the limitations, as a whole,
`do not connote sufficiently definite structure to one of ordinary skill in the
`art.” Id. at 1375.
`NPI argues that L&P has failed to rebut the presumption that § 112 ¶ 6
`does not apply. PO Resp. 19–22. Because of the absence of any developed
`argument from L&P, we agree with NPI. Accordingly, we decline to adopt
`L&P’s proffered constructions based on § 112 ¶ 6.
`
`“resilient retraction mechanism”
`2.
`Despite our determination above regarding treatment under § 112 ¶ 6,
`the parties dispute the meaning of “resilient retraction mechanism” in
`claims 1, 9, and 10. See PO Resp. 17–21; Pet. Reply 11–15. NPI contends
`this term should be construed as “a retraction structure adapted for automatic
`linear retraction that includes a spring or equivalent.” PO Resp. 17. This is
`the same construction that NPI propounded in its Preliminary Response
`except that NPI has added the word “automatic.” Compare Prelim. Resp. 4,
`with PO Resp. 17. NPI cites other limitations in claims 1, 9, and 10 as
`requiring “the expansion connector drive mechanism [to] drive[] the
`expansion connector between the engaged and disengaged positions in a
`linear fashion”; thus, according to NPI, “the resilient retraction mechanism
`must also be linear.” PO Resp. 18. NPI also argues the Specification of the
`’343 patent “repeatedly indicates that the biasing mechanism ‘operates to
`automatically retract the expansion connector’ from the deployed position.”
`Id. at 19 (quoting Ex. 1001, 23:15–20) (emphasis added by NPI).
`
`9
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`L&P asks us to reject NPI’s proposed construction “because it
`attempts to read into the claims extraneous limitations, namely, ‘automatic’
`and ‘linear.’” Pet. Reply 11. Instead, L&P proposes the following
`construction: “a spring or similar item that is capable of regaining its
`original shape or position after being bent, stretched, or compressed and that
`is used to urge an expansion connector to the disengaged position.” Id. at
`14–15.
`Both parties acknowledge that, outside of the claims, the Specification
`of the ’343 patent never uses the term “resilient retraction mechanism.” PO
`Resp. 18; Pet. Reply 12. Both parties cite the Specification’s description of
`“resilient biasing mechanism 250, such as a tension spring” as informing the
`proper construction of the recited “resilient retraction mechanism.” See
`Pet. 11; PO Resp. 18; Pet. Reply 13 (all quoting Ex. 1001, 23:9–10).
`Notwithstanding, NPI attempts to differentiate between resilient biasing
`mechanism 250 and retraction mechanism 246. PO Resp. 18. In particular,
`NPI focuses on the Specification’s statement that “the retraction
`mechanism 246 includes a resilient biasing mechanism 250.” Id. (quoting
`Ex. 1001, 23:8–10) (emphasis added by NPI). Accordingly, NPI argues
`“[r]esilient biasing mechanism 250, which may but need not be a spring, is
`merely part of that retraction mechanism.” Id. at 18–19. In reply, L&P
`argues “the ’343 patent specification uses retraction mechanism and biasing
`mechanism interchangeably.” Pet. Reply 13 (citing Ex. 1001, 7:15–22,
`23:4–30, 27:49–53, 31:11–32, 48:59–49:4, 49:54–60, 49:65–50:11). L&P
`quotes a Specification statement referring to “the retraction mechanism 246,
`for example the tension spring shown” as supporting the interchangeable use
`
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`IPR2016-00475
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`of the mechanism 246 and mechanism 250. Id. (quoting Ex. 1001, 27:49–
`53) (emphasis added by L&P).
`Having reviewed the Specification, we do not agree with NPI that
`retraction mechanism 246 and resilient biasing mechanism 250 must be
`different structures (i.e., that they cannot be one and the same). As
`mentioned by L&P, reference numerals 246 and 250 point to the same spring
`in each figure. Id. at 12 (citing Ex. 1001, Figs. 16, 18, 19, 20, 21, 28).
`Furthermore, the passage cited by L&P (id. at 13) equates retraction
`mechanism 246 to a tension spring, which is expressly stated to be an
`example of a resilient biasing mechanism 250. See Ex. 1001, 23:8–10,
`27:49–53. Thus, in the context of our broadest reasonable interpretation
`standard, we discern no difference between mechanisms 246 and 250 that
`bears on the construction of a “resilient retraction mechanism.”
`Regarding NPI’s contention that the “resilient retraction mechanism”
`must be “linear,” NPI’s arguments relate to the surrounding claim limitations
`in claims 1, 9, and 10, as opposed to the “resilient retraction mechanism.”
`See PO Resp. 18. More specifically, the “linear” aspect of the claim
`limitation is expressly ascribed to “expansion connector drive mechanism,”
`not the “resilient retraction mechanism.” See, e.g., Ex. 1001, 52:15–17. In
`the absence of any evidence that the “resilient retraction mechanism” itself
`must be linear, we decline to construe it as such.
`NPI’s contention that the “resilient retraction mechanism” must be
`“automatic” similarly relies on extraneous claim language. In particular,
`NPI’s arguments focus on the effect of the resilient retraction mechanism,
`which is “to automatically retract the expansion connector.” See PO
`Resp. 19 (citing Ex. 1001, 23:15–20, 31:11–14, 49:65–50:2). In our view,
`
`11
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`IPR2016-00475
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`
`NPI’s added “automatic” language is unnecessary and does not further
`elucidate the construction of “resilient retraction mechanism,” because
`claims 1, 9, and 10 already recite that the resilient retraction mechanism
`“urg[es] the expansion connector toward the disengaged position.” In
`addition, we agree with L&P (Pet. Reply 12) that the Specification section
`about automatic retraction cited by NPI is made “by example and without
`limitation,” so we need not restrict the “resilient retraction mechanism” in
`the manner proposed by NPI. See Ex. 1001, 23:8.
`Having considered the parties’ arguments and the treatment of the
`term in the Specification, we interpret “resilient retraction mechanism” to
`mean “a resilient mechanism, such as a spring, for retracting/urging the
`expansion connector toward the disengaged position.”
`
`“molded”
`3.
`
`The challenged claims include limitations directed to a “molded
`docking station,” a “molded wall,” and a “molded apparatus body.” In our
`Decision on Institution, we determined that claims containing “molded”
`limitations are product-by-process claims, because these limitations are
`defined by the process by which they are made, molding. Dec. on Inst. 8–9.
`NPI cites 3M Innovative Properties Co. v. Avery Dennison Corp., 350
`F.3d 1365, 1371 (Fed. Cir. 2003), for the proposition that “even words of
`limitation that can connote with equal force a structural characteristic of the
`product or a process of manufacture are commonly and by default
`interpreted in their structural sense, unless the patentee has demonstrated
`otherwise.” PO Resp. 13. NPI contends an ordinarily skilled artisan would
`have recognized that “a molded part [is] structurally different than a
`
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`corresponding non-molded part . . . because a molded part—including any
`integral features—is made of a single, uniform piece of material” with “no
`seams, joints, fasteners, or adhesives holding it together.” Id. at 14–15
`(citing Ex. 2014 ¶¶ 22–27). Therefore, NPI argues “molded” should be
`construed as “an adjective describing the structure of the claimed docking
`stations, and not as incorporating an unspecified process of manufacture.”
`Id. at 16–17.
`L&P argues that, “[t]o the extent there are structural differences
`between molded parts and non-molded parts, the claims do not recite those
`structural differences.” PO Resp. 5. Citing to portions of the Specification
`that associate the words “method” and “formed” with “molding” or
`“molded,” L&P contends “[t]he challenged claims use the term ‘molded’
`merely as an adjective to describe the process used to form a part.” Id. at 3–
`4 (citing Ex. 1001, 43:48–53, 44:1–33; 45:14–61; 46:8–62, 47:5–55). L&P
`also contends that NPI’s cited cases favoring a structural connotation
`involved claim terms that “defined a claimed structural characteristic or
`relationship,” whereas the ’343 patent and Mr. Carnevali’s declaration
`“describe the claimed docking station only as a product made by a molding
`process.” Id. at 5–6 (citing Ex. 1001, 43:48–47:55; Ex. 2014 ¶¶ 13–21, 23–
`28).
`
`Regarding the alleged structural connotation of “molded,” the
`Specification describes “molding” in terms of processes, rather than
`particular structures that result from a process. See Ex. 1001, 43:47–67
`(referring to “the ‘molding’ process”). Moreover, NPI’s citation of the
`Specification’s description of “the materials of which the molded housing
`might be made” (PO Resp. 15 (citing Ex. 1001, 43:59–67)) undermines,
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`rather than supports, a structural connotation to “molded,” because this also
`focuses on the process, not the structure. Nor do references to the cost,
`strength, quality, or consistency of molded parts in the Specification (see id.
`(citing Ex. 1001, 5:3–5)) impart a structural meaning to “molded” parts.
`Furthermore, the fact that the Specification also mentions the optional
`integral molding of “additional structures such as the integral housing
`portion and device receiver structure” (id. (citing Ex. 1001, 44:33–55,
`44:60–66)) does not support NPI’s position. To the extent NPI contends that
`the word “molded” implies these optional structures are integral to the
`recited “molded wall,” certain claims already recite the integral nature of
`such structures separate from the word “molded.” See Ex. 1001, 53:53–54
`(claim 10 reciting “the device receiver structure is integrally molded with
`the molded wall” (emphasis added)), 54:60–61 (same recitation in claim 20).
`This shows that the patentee knew how to expressly claim characteristics
`NPI now ascribes to “molded”; we decline to read in such characteristics in
`the absence of express claim language.
`In addition, we do not agree with NPI that “molding” as used in
`’343 patent is “unspecified” simply because molding “encompasses many
`different methods of manufacture.” See PO Resp. 15–17 (citing Ex. 2014
`¶¶ 12–21). The fact that the Specification describes varieties of “molding”
`(Ex. 1001, 43:47–67) does not change our analysis. Rather, the
`Specification’s description of the various molding processes by which an
`ordinarily skilled artisan might create “molded” components further supports
`our determination that the “molded” limitations are process limitations. And
`NPI’s cited cases regarding “twisted together” and “integral” limitations (see
`PO Resp. 15 (citing Belden Inc. v. Berk-Tek LLC, 610 F. App’x 997, 1004
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`(Fed. Cir. 2015)); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234
`F.3d 1370, 1372 (Fed. Cir. 2000)) are distinguishable because these
`limitations are not tied to a “particular manufacturing process” in the way
`that “molded” is. Thus, we determine the intrinsic evidence does not
`support a structural connotation for “molded.”
`“Extrinsic evidence, such as dictionaries and expert testimony, may be
`useful, but it is unlikely to result in a reliable interpretation of patent claim
`scope unless considered in the context of the intrinsic evidence.” Phillips v.
`AWH Corp., 415 F.3d 1303, 1319. Extrinsic evidence is generally
`considered “less significant than the intrinsic record.” Id. at 1317–18. The
`extrinsic evidence of record does not affect our determination regarding the
`“molded” limitations. Mr. Lewandowski simply restates the Specification’s
`examples of molding processes. Ex. 1014 ¶ 28 (citing Ex. 1001, 43:34–67).
`Mr. Carnevali testifies that “molded parts share structural and functional
`characteristics that differentiate them from non-molded parts manufactured
`through other processes.” Ex. 2014 ¶ 22. But, for the same reasons
`mentioned above, Mr. Carnevali’s annunciation of those characteristics, such
`as being “made of a single, uniform piece, with no seams, joints, fasteners,
`or adhesives holding it together” (id. ¶ 23), do not impart a structural
`connotation in the absence of support in the Specification and where other
`claims expressly recite certain of these characteristics. The remainder of
`Mr. Carnevali’s testimony on the subject of molding focuses on
`characteristics and qualities of molded parts, rather than structure that
`necessary stems from the word “molded.” See id. ¶¶ 22–28.
`We additionally observe that NPI’s failure to propose a construction
`reflecting the alleged structural connotation beclouds NPI’s arguments. See
`
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`Tr. 26:4–8. Although we acknowledge that NPI is not required to proffer a
`construction, the absence of such a proffer leaves us with no clear position
`from NPI on how we should compare the alleged structure of the “molded”
`limitations to the prior art. For example, when L&P pointed out various
`characteristics of the docking station in Nguyen that are indicative of
`molding (see Pet. 35–36)—even certain characteristics mentioned by NPI—
`NPI responded by arguing, inter alia, that “Nguyen makes no mention
`whatsoever of whether its docking stations are molded, fabricated, or
`otherwise manufactured.” PO Resp. 24–25 (emphasis added). NPI cannot
`make allegations of structure associated with molding, and then revert a
`process-based rationale for distinguishing the prior art when certain
`indicators of that purported structure are present in the prior art. This
`inconsistency also cuts against a structural connotation for “molded.”
`For these reasons, we maintain our determination that the challenged
`claims containing “molded” limitations are product-by-process claims; the
`recited docking station, wall, and apparatus body are defined by the process
`by which they are made, namely molding. See SmithKline Beecham Corp. v.
`Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (“A product-by-process
`claim is one in which the product is defined at least in part in terms of the
`method or process by which it is made.” (internal quotation omitted)). As
`such, our patentability determination will focus on the product and not on
`the process of making it. See Purdue Pharma L.P. v. Epic Pharma, LLC,
`811 F.3d 1345, 1354 (Fed. Cir.), cert. denied, 137 S. Ct. 475, and cert.
`denied sub nom. Grunenthal GmbH v. Teva Pharm. USA, Inc., 137 S. Ct.
`476 (2016); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369–
`70 & n.14 (Fed. Cir. 2009). Therefore, a reference describing a docking
`
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`station, wall, and apparatus body in accordance with the claims would teach
`or suggest the recited structure even if the reference’s structure is formed by
`a process different than molding.
`
`
`A.
`
`II. ANALYSIS
`Obviousness Ground Based on Nguyen, Revolution, Pandock, and
`Yamamoto
`L&P contends claims 1–20 would have been obvious over the
`combination of Nguyen, Revolution, Pandock, and Yamamoto. Pet. 29–58.
`NPI disputes L&P’s contention. PO Resp. 22–46.
`
`Principles of Law
`1.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`also recognize that prior art references must be “considered together with the
`knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at
`1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). We analyze
`L&P’s obviousness grounds with the principles identified above in mind.
`
`
`17
`
`

`

`IPR2016-00475
`Patent 9,036,343 B2
`
`Level of Skill in the Art
`2.
`In determining the level of skill in the art, various factors may be
`considered, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
`(Fed. Cir. 1986)). In addition, the prior art of record in this proceeding—
`namely, Nguyen, Revolution, Pandock, Yamamoto, and Nakajima—is
`indicative of the level of skill in the art. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579
`F.2d 86, 91 (CCPA 1978).
`L&P contends an ordinarily skilled artisan “would have had at least an
`associate degree in mechanical design, industrial technology or a related
`technical field and at least three years of experience designing and
`developing docking stations for portable computers and other electronic
`devices or equivalent training, education, or work experience.” Pet. 27
`(citing Ex. 1014 ¶ 6). L&P gives an example of such credentials with
`reference to a person having a Bachelor of Science degree in a technical
`field and, inconsistently, “at least two years of experience designing and
`developing docking stations for portable computers and other electronic
`devices.” Id. (emphasis added).
`Citing Mr. Carnevali’s testimony, NPI contends an ordinarily skilled
`artisan would have been “an engineer or a product designer with at least six
`years of experience with mechanical design and manufacture, obtained
`through vocational studies, from working in the mechanical arts, or a
`
`18
`
`

`

`IPR2016-00475
`Patent 9,036,343 B2
`
`combination of both.” PO Resp. 11 (citing Ex. 2014 ¶ 9). NPI disputes
`L&P’s contention that such a person must have at least an associate’s
`degree, because Mr. Carnivali, who also is the patentee, does not have this
`educational background. Id. (citing Ex. 2014 ¶¶ 2–8).
`Mr. Carnivali’s background is weak evidence that an ordinarily skilled
`artisan would not necessarily have attained a technical degree.
`Notwithstanding, ordinarily skilled artisans in the field of the ’343 patent
`would have benefitted from the background that such a degree provides.
`The differences in the parties’ requirements for years of experience
`correlates to the different educational backgrounds they propose. Compare
`Pet. 27 (requiring three years of experience with a technical degree), with
`PO Resp. 11 (requiring six years of experience without a technical degree).
`Our analysis below would not change based on these differences. Thus, our
`definition of the level of skill in the art accounts for these varied sets of
`credentials.
`In light of the types of problems addressed in the ’343 patent and in
`the prior art of record, we determine that an ordinarily skilled artisan at the
`time of the ’343 patent would have possessed (1) at least an associate degree
`in mechanical design, industrial technology, or a related technical field and
`at least three years of experience with mechanical design and manufacture;
`or (2) at least six years of experience with mechanical design and
`manufacture. We, therefore, apply this definition of the level of skill in the
`art to our obviousness evaluation below.
`
`
`19
`
`

`

`IPR2016-00475
`Patent 9,036,343 B2
`
`Nguyen
`3.
`Nguyen is directed to “a docking station mateable with a portable
`computer and operative to couple it to desktop peripheral devices such as a
`keyboard, mouse and monitor.” Ex. 1003, 1:6–11. Figure 1 of Nguyen is
`reproduced below.
`
`
`Figure 1 depicts docking station 12 having rectangular hollow housing 18
`with upper section 18a and lower section 18b. Id. at 2:56–59, 3:44–47.
`Rectangular receiving and holding area 66 is disposed on top side 20 of
`upper docking station section 18a to receive a portable computer. Id. 4:14–
`22. Movable docking connector structure 72 includes docking connector
`body 68 and multi-pin electrical plug connector 74. Id. at 4:40–46.
`Connector 74 projects forwardly from front upper side portion 76 of
`connector body 68 and is flanked on its opposite ends by forwardly
`projecting guide pin members 78. Id.
`Figure 4 of Nguyen is reproduced below.
`
`20
`
`

`

`IPR2016-00475
`Patent 9,036,343 B2
`
`
`Figure 4 depicts slide plate structure 80 supported by bottom side 118 of
`upper section 18a. Id. at 4:62–64. Slide plate structure 80 is slidably guided
`by elongated grooves 122 that are formed in parallel elongated brackets 120
`positioned on bottom side 118. Id. at 4:62–5:5. Elongated lever member
`128 has inner end portion 128a pivotally connected at 130 and outer end
`portion 128b that projects outwardly beyond a right side portion of the

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