Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KATUN CORPORATION,
`Petitioner,
`
`v.
`
`TOSHIBA TEC CORPORATION and
`TOSHIBA AMERICA BUSINESS SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01010
`Patent 9,098,015 B2
`____________
`
`
`
`
`
`Before STACEY G. WHITE, JENNIFER MEYER CHAGNON, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571.272.7822
`
`Paper 10
`Entered: November 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KATUN CORPORATION,
`Petitioner,
`
`v.
`
`TOSHIBA TEC CORPORATION and
`TOSHIBA AMERICA BUSINESS SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01010
`Patent 9,098,015 B2
`____________
`
`
`
`
`
`Before STACEY G. WHITE, JENNIFER MEYER CHAGNON, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01010
`Patent 9,098,015 B2
`
`
`Katun Corporation (“Petitioner”) filed a Corrected Petition (Paper 4,
`
`“Pet.”) requesting inter partes review of claims 1–8 of U.S. Patent No.
`
`9,098,015 B2 (Ex. 1001, “the ’015 patent”). Toshiba Tec Corporation and
`
`Toshiba America Business Solutions, Inc. (collectively, “Patent Owner”)
`
`filed a Preliminary Response (Paper 8, “Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under
`
`35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . .
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” For the reasons that
`
`follow, we institute an inter partes review as to claims 1–8 of the ’015
`
`patent.
`
`
`
`I. BACKGROUND
`
`A. Related Proceedings
`
`The parties identify the following related case: Toshiba Tec Corp. v.
`
`Katun Corp., Civ. No. 8:15-cv-01979 (C.D. Cal. Nov. 25, 2015). Pet. 4;
`
`Paper 6, 2.
`
`
`
`B. The ’015 Patent
`
`The ’015 patent is titled “Toner Cartridge.” Ex. 1001, at [54].
`
`According to the ’015 patent, a copier may malfunction if the toner cartridge
`
`used is not genuine (i.e., recommended by the manufacturer). See id. at
`
`1:36–40. To address this problem, the ’015 patent provides a way to detect
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`whether a toner cartridge is genuine once it is mounted into the copier. Id. at
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`2:11–13.
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`IPR2016-01010
`Patent 9,098,015 B2
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`The toner cartridge of the ’015 patent is shown in Figure 6 of the
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`patent, which is reproduced below.
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`
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`Figure 6 shows the toner cartridge as viewed from its rear upper side.
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`Ex. 1001, 3:1–3. The cartridge includes at one end coupling member 501j,
`
`mixing gear 501l, and rotational body 501v. Id. at 6:1–7. Rotational body
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`501v has four slits spaced equally apart. Id. at 8:34–37.
`
`The copier of the ’015 patent includes an optical detector. Id. at 7:15–
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`16, Fig. 7. The optical detector has a light emitting element and a light
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`receiving element that face each other. Id. at 8:16–21. The light receiving
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`element receives light from the light emitting element. Id. at 8:33–35.
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`When the toner cartridge is mounted into the copier, rotational body
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`501v is sandwiched between the light emitting and light receiving elements.
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`Id. at 7:29–31, 8:59–61. Once the cartridge is mounted, rotational body 501v
`
`begins to rotate. Id. at 8:42–56. As rotational body 501v rotates, the light
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`Patent 9,098,015 B2
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`receiving element receives light that passes through the slits, but not light that
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`is blocked by portions of the rotational body between the slits. Id. at 8:63–
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`9:2, Fig. 6. When the light receiving element receives light, it outputs a signal
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`L in L time to a controlling unit; and when the light receiving element does
`
`not receive light, it outputs a signal H in H time to the controlling unit. Id. at
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`9:8–12, 9:20–22, Fig. 10. If the value of L time/H time falls between 0.2 and
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`0.8, then the controlling unit determines that the toner cartridge is a genuine
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`product. Id. at 9:29–32. If the value of L time/H time falls outside that range,
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`however, the controlling unit determines that the toner cartridge is not a
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`genuine product. Id. at 9:32–35.
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`The ’015 patent also provides a gear cover 501y for preventing
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`rotational body 501v and gears 501j, 501l from entangling lead wires used for
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`detection. Id. at 10:35–39, Figs. 6, 9.
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`
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–8 of the ’015 patent. Claims 1 and 7
`
`are independent. Claim 1 is illustrative of the claims under challenge:
`
`1. A toner cartridge comprising:
`
`a toner container which contains toner;
`
`a toner supplying opening which supplies the toner contained
`in the toner container to an image forming apparatus;
`
`an agitating member which agitates the toner contained in the
`toner container;
`
`a conveying member which conveys the toner contained in
`the toner container toward the toner supplying opening;
`
`a plurality of gears which are provided on an exterior portion
`of the toner container and rotate the conveying member
`and the agitating member, the plurality of gears including
`two gears which have different diameters;
`
`4
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`IPR2016-01010
`Patent 9,098,015 B2
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`an optical penetration member which has a plurality of optical
`penetration parts and is coaxially provided on a large gear
`of the two gears; and
`
`a gear cover which covers a part of the plurality of the gears,
`the gear cover being extended in the same direction as an
`extending direction of the optical penetration member.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1–8 of the ’015 patent on the following
`
`grounds. Pet. 4, 30–88.
`
`Reference(s)
`Sugita1
`Sugita
`Sugita and Nishimura2
`Matsuda3 and Yokoi4
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`
`Claims Challenged
`1, 7, and 8
`1–8
`1–8
`1–8
`
`As additional support, Petitioner proffers the Declaration of Dr. Larry A.
`
`Stauffer, Ph.D. (Ex. 1003). See id.
`
`
`
`E. Claim Interpretation
`
`We construe claims in an unexpired patent by applying the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard). Under this standard, claim terms
`
`generally are given their ordinary and customary meaning, as would be
`
`
`1 Sugita, U.S. Patent No. 6,687,478 B2, issued Feb. 3, 2004 (Ex. 1010).
`2 Nishimura, U.S. Design Patent No. D447,168 S, issued Aug. 28, 2001
`(Ex. 1011).
`3 Matsuda, U.S. Patent No. 7,003,233 B2, issued Feb. 21, 2006 (Ex. 1012).
`4 Yokoi, U.S. Patent No. 5,940,658, issued Aug. 17, 1999 (Ex. 1013).
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`Patent 9,098,015 B2
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`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). A “claim term will not receive its ordinary meaning if the patentee
`
`acted as his own lexicographer,” however, and clearly set forth a definition
`
`of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Petitioner provides proposed interpretations for various limitations of
`
`the claims. See Pet. 12–16. Patent Owner responds. Prelim. Resp. 9–25.
`
`For purposes of this Decision, we conclude that no term requires express
`
`interpretation at this time to resolve any controversy in this proceeding. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“only those terms need be construed that are in controversy, and only
`
`to the extent necessary to resolve the controversy”).
`
`
`
`II. DISCUSSION
`
`A. Anticipation by Sugita
`
`Petitioner argues that Sugita anticipates claims 1, 7, and 8 of the ’015
`
`patent under 35 U.S.C. § 102. Pet. 4, 30–45. For the reasons explained
`
`below, we are persuaded that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on its asserted ground.
`
`
`
`1. Sugita
`
`Sugita describes an image forming apparatus, such as a copying
`
`machine, with a detachably mounted developer replenishing portion.
`
`Ex. 1010, 1:8–12, 1:17–19. The developer replenishing portion includes a
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`replenishing screw and a developer discharge port. Id. at 6:1–4. When the
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`replenishing screw is rotated, a developer moves along the screw toward the
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`developer discharge port and empties into a developing portion of the
`
`copying machine. Id. at 6:4–12, Fig. 1.
`
`The copying machine has a developer level detecting means that
`
`detects a drop in developer level and transmits the detection signal to a
`
`control means. Id. at 7:37–41. The control means then determines how
`
`much rotation of the replenishing screw is needed to recover the developer
`
`level. Id. at 7:41–44. Once the rotation amount is determined, the
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`replenishing screw is rotated to start supplying the developer to the
`
`developing portion. Id. at 7:44–49. A rotation amount detecting means
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`tracks the amount of rotation of the replenishing screw and signals when to
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`stop rotating the screw. Id. at 7:50–56. In this way, the amount of developer
`
`supplied to the developing portion can be controlled. Id. at 7:56–59.
`
`
`
`2. Claims 1 and 7
`
`Petitioner explains in its Petition how Sugita discloses all the elements
`
`of independent claims 1 and 7. See Pet. 31–44. For example, Petitioner
`
`points to disclosures in Sugita as corresponding to certain elements in these
`
`claims.
`
`Element in Claims 1 and/or 7
`“toner cartridge”
`“toner container”
`“toner supplying opening”
`“image forming apparatus”
`“agitating member”
`“conveying member”
`“plurality of gears”
`“optical penetration member”
`“detecting unit”
`
`Disclosure in Sugita
`developer replenishing portion 6
`replenishing container 30
`developer discharge port 33
`image forming apparatus
`agitating means 31
`replenishing screw 32
`gear mechanism 46
`detecting shaft 48
`rotation amount detecting means 47
`
`7
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`See id. Petitioner also directs us to Figures 1 and 4 of Sugita, which are
`
`reproduced below. Id. at 34.
`
`
`
`
`
`Figure 1 illustrates cross-sectional views of developing portion 4 and
`
`developer replenishing portion 6 (“toner cartridge”), and Figure 4 illustrates
`
`a cross-sectional view of gear mechanism 46. Ex. 1010, 5:6–8, 5:15–16. On
`
`this record, we find Petitioner’s analysis of claims 1 and 7 in relation to
`
`Sugita persuasive.
`
`For instance, Petitioner argues that Figure 1 of Sugita shows gear
`
`mechanism 46 (“plurality of gears”) being provided on an exterior portion of
`
`the replenishing container 30 (“toner container”). See Pet. 34. We note that
`
`“two guide pins 43 and 44 protruding from the driving portion 40 [which
`
`includes gear mechanism 46] side are inserted into two guide cylinders
`
`protruding . . . from the end portion of the [replenishing container] 30” when
`
`replenishing container 30 is mounted on main body A of the image forming
`
`apparatus, as shown in Figure 1. Ex. 1010, 2:61–3:7.
`
`Petitioner further argues that gear mechanism 46 rotates agitating
`
`means 31 (“agitating member”) and replenishing screw 32 (“conveying
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`IPR2016-01010
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`member”). See Pet. 34. In support of this argument, Petitioner points out
`
`that Figure 4 of Sugita shows gear G5 being coupled to driving shaft 42 and
`
`gear G8 being coupled to driving shaft 41. Id. at 34–35 (citing Ex. 1010,
`
`6:33–43). Petitioner also points out that driving shafts 41 and 42 are
`
`connected to the rotary shafts of agitating means 31 and replenishing screw
`
`32, respectively. Id. at 35 (citing Ex. 1010, 2:63–65).
`
`Petitioner further argues that gear mechanism 46 also includes “at
`
`least two gears with different diameters.” Id. In support of this argument,
`
`Petitioner points out that the reduction gear ratio between gears G2 and G5
`
`is 3.00, while the rotating speed ratio between the two associated shafts is
`
`1/3. Id. (citing Ex. 1010, 7:25–29). Petitioner identifies gear G2 as a “large
`
`gear” and points out that detecting shaft 48 (“optical penetration member”)
`
`is coaxially provided on this gear. Id. at 37 (citing Ex. 1010, Figs. 1, 3); see
`
`also Ex. 1010, Fig. 4 (reproduced above). We note that detecting shaft 48
`
`has four flags 49 separated at intervals of 90 degrees. See Pet. 37–38 (citing
`
`Ex. 1010, 3:23–24).
`
`Finally, Petitioner argues that Figure 1 of Sugita shows a “gear
`
`cover.” Id. at 40–41. To illustrate this argument, Petitioner specifically
`
`directs us to its annotated version of Figure 1 of Sugita, which is reproduced
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`below.
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`As mentioned above, Figure 1 illustrates cross-sectional views of developing
`
`portion 4 and developer replenishing portion 6. Ex. 1010, 5:6–8. Sugita’s
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`gear cover (shown in orange) extends “from left to right,” which, according
`
`to Petitioner, is “in ‘the same direction’ as the optical penetration member
`
`[(detecting shaft 48)].” Pet. 41. Petitioner explains that, “[a]lthough Sugita
`
`effectively encases the gears, this is consistent with the language of Claim
`
`1—a comprising claim, such that any gear cover that goes beyond partial
`
`coverage still meets the [recited] element” of “cover[ing] a part of the
`
`plurality of the gears.” Id.
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`Upon review of the Petition and its supporting evidence, we are
`
`persuaded at this stage of the proceeding that Sugita discloses all the
`
`elements recited in claims 1 and 7.
`
`Patent Owner makes several arguments. Prelim. Resp. 31–38. For
`
`instance, Patent Owner argues that Sugita does not disclose the recited gears,
`
`“which are provided on an exterior portion of the toner container,” because
`
`Sugita’s “toner containers do not have any gears, much less gears projecting
`
`from the exterior surfaces of the containers.” Id. at 31–32. Patent Owner
`
`points out that the gears in Sugita are instead a “part of main body A of the
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`image forming apparatus.” Id. (emphasis omitted). We are unpersuaded by
`
`Patent Owner’s argument, as it is not commensurate in scope with the
`
`language of the claims and relies on distinctions not present in the claims.
`
`There is nothing in the claims that requires the toner container to “have any
`
`gears,” nor is there anything in the claims that requires the gears to
`
`“project[] from [an] exterior surface[] of the container[].” We nevertheless
`
`note that Figure 1 of Sugita shows replenishing container 30 with gear
`
`mechanism 46 projecting therefrom via shafts 41, 42 and guide pins 43, 44
`
`when container 30 is mounted on the image forming apparatus. See Ex.
`
`1010, Fig. 1, 2:61–3:4; see also Pet. 35 (“the plurality of gears . . . are
`
`located on the ‘developer replenishing portion’ (i.e., toner cartridge)”).
`
`There also is nothing in the claims that excludes from their scope a plurality
`
`of gears that are a “part of . . . an image forming apparatus.” Indeed, claim 7
`
`recites expressly that the image forming apparatus comprises the plurality of
`
`gears.
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`Still referring to the “provided on” language in the claims, Patent
`
`Owner further argues that Sugita does not disclose the recited gears because
`
`“Petitioner mischaracterizes driving portion 40 as a detachable, replaceable
`
`part.” Prelim. Resp. 32. We also are unpersuaded by this argument. Again,
`
`Patent Owner’s argument is not commensurate in scope with the language of
`
`the claims and relies on distinctions not present in the claims. There is
`
`nothing in the claims that specifies whether any of the recited elements is
`
`detachable or replaceable. Moreover, we are persuaded, based on the
`
`evidence now before us, that Sugita’s gear mechanism 46 is provided on an
`
`exterior portion of replenishing container 30 (via shafts 41, 42 and guide
`
`pins 43, 44) when container 30 is mounted on the image forming apparatus,
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`as shown in Figure 1 of Sugita, whether or not driving portion 40 is a
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`detachable, replaceable part. See Ex. 1010, Fig. 1; 2:61–3:4.
`
`Patent Owner further argues that Sugita additionally does not disclose
`
`the recited gear cover because Sugita’s “toner containers[] do not have gears
`
`or a gear cover.” Prelim. Resp. 34. We are unpersuaded by Patent Owner’s
`
`argument. As with the recited gears discussed above, there is nothing in the
`
`claims that requires the toner container to “have . . . a gear cover.” We
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`nevertheless note that Figure 1 of Sugita shows replenishing container 30
`
`with the gear cover attached thereto via shafts 41, 42 and guide pins 43, 44
`
`when container 30 is mounted on the image forming apparatus. See
`
`Ex. 1010, Fig. 1, 2:61–3:4; see also Prelim. Resp. 34 (explaining that
`
`Sugita’s “toner containers align with driving portion 40 . . . so that driving
`
`shafts on the driving portion can engage with separate shafts on the
`
`cartridge”).
`
`Patent Owner further argues that Sugita does not disclose the recited
`
`gear cover because Sugita’s “gear case [] encases and isolates the gears.”
`
`Prelim. Resp. 35. According to Patent Owner, the gear cover recited in
`
`claims 1 and 7 “covers only a part of the plurality of gears,” and Petitioner’s
`
`reliance on the term “comprising” in the preambles to argue “that references
`
`disclosing additional elements may anticipate the claimed elements” is
`
`improper. Id. at 36 (citing Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343
`
`(Fed. Cir. 2007)). We are unpersuaded by Patent Owner’s argument. The
`
`claims recite a “gear cover which covers a part of the plurality of the gears.”
`
`On this record, we are not persuaded that this language limits the claims to
`
`gear covers that only cover less than the entirety of the gears. Thus, as
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`discussed above, we agree with Petitioner that “any gear cover that goes
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`beyond partial coverage still meets the [recited] element.” See Pet. 41. If
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`Sugita’s gear cover provides full coverage of the gears, then it also provides
`
`partial coverage of the gears. Contra Prelim. Resp. 37 (“Unlike the claimed
`
`gear cover, Sugita’s gear cover encases the gears, and thus Petitioner relies
`
`on entirely different elements to attempt to anticipate the claimed
`
`elements.”) By contrast, the situation presented in Dippin’ Dots involved
`
`entirely different steps, with no overlap. See Dippin’ Dots, 476 F.3d at
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`1342–43.
`
`Lastly, Patent Owner argues that Sugita does not disclose the recited
`
`gear cover because Sugita’s gear cover “extend[s] in several directions.”
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`Prelim. Resp. 35. According to Patent Owner, the recited gear cover
`
`“extends only in the direction of the optical penetration member.” Id. at 36.
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`We are unpersuaded by Patent Owner’s argument. Claims 1 and 7 recite a
`
`“gear cover being extended in the same direction as an extending direction
`
`of the optical penetration member.” That the claims specify just one
`
`direction in which the gear cover extends does not mean that the gear cover
`
`cannot extend in other directions. Indeed, three-dimensional objects, such as
`
`the recited gear cover, extend in more than one direction. This is supported
`
`by the ’015 patent, which shows gear cover 501y extending in more than one
`
`direction. See Ex. 1001, Fig. 6.
`
`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`Sugita anticipates claims 1 and 7.
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`3. Claim 8
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`Claim 8 depends from claim 7 and recites “an outer edge of the gear
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`cover prevent[s] lead wires that are connected to the detecting unit from
`
`being entangled in the gears.” For this limitation, Petitioner argues that “[a]
`
`POSA would understand that the gear cover disclosed in Sugita, which
`
`completely encases the gears, would completely prevent any lead wires from
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`being entangled in the gears.” Pet. 45. We are persuaded by Petitioner’s
`
`argument.
`
`Petitioner appears to be relying on an inherency theory, as Sugita does
`
`not discuss preventing lead wires from being entangled in the gears. “If the
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`prior art reference does not expressly set forth a particular element of the
`
`claim, that reference still may anticipate if that element is ‘inherent’ in its
`
`disclosure.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “To
`
`establish inherency, the extrinsic evidence ‘must make clear that the missing
`
`descriptive matter is necessarily present in the thing described in the
`
`reference, and that it would be so recognized by persons of ordinary skill.’”
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`Id. (citation omitted). “Inherency, however, may not be established by
`
`probabilities or possibilities. The mere fact that a certain thing may result
`
`from a given set of circumstances is not sufficient.” Continental Can Co.
`
`USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
`
`As Petitioner points out, Sugita’s gear cover “completely encases the
`
`gears” in gear mechanism 46. Pet. 45. We are persuaded that completely
`
`encasing the gears would necessarily prevent any lead wires from being
`
`entangled in the gears.
`
`Patent Owner counters that encasing the gears renders Sugita’s gear
`
`cover without an “outer edge.” Prelim. Resp. 37–38. On the record
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`currently before us, we disagree with Patent Owner. Three-dimensional
`
`objects, such as Sugita’s gear cover, have surface areas that form the outer
`
`edges of the objects. Patent Owner does not explain persuasively how
`
`Sugita’s gear cover does not have an outer edge.
`
`In view of the foregoing, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that
`
`Sugita anticipates claim 8.
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`
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`B. Obviousness over Sugita
`
`Petitioner argues that claims 1–8 of the ’015 patent would have been
`
`obvious over Sugita under 35 U.S.C. § 103. Pet. 2, 45–66. For the reasons
`
`explained below, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on its asserted ground.
`
`As discussed above, Petitioner argues that Sugita anticipates claims 1
`
`and 7. Petitioner argues alternatively that these claims would have been
`
`obvious over Sugita. Pet. 48–53. For example, referring to the claim
`
`limitation requiring the plurality of gears to be “provided on an exterior
`
`portion of the toner container,” Petitioner contends that “a POSA would find
`
`it obvious . . . to provide the gears in Sugita to the exterior portion of the
`
`toner container [(replenishing container 30)], because such a design was
`
`well-known in the art.” Id. at 49. According to Petitioner, “[a] POSA would
`
`know that it is merely a design choice to have a detachable ‘driving portion’
`
`instead of direct attachment, and that both designs function in the same
`
`fashion.” Id. at 49–50. In support of its contention, Petitioner relies on
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`Dr. Stauffer’s declaration testimony, which explains that “whether the shafts
`
`(that support the gears of the conveying member and agitating member) are
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`IPR2016-01010
`Patent 9,098,015 B2
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`solid or in connected sections is only a design choice.” Ex. 1003 ¶ 110.
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`Based on the record before us, at this stage of the proceeding, we are
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`persuaded by Petitioner’s proffered reasoning for directly attaching Sugita’s
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`driving portion 40 (which includes gear mechanism 46) to an exterior
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`portion of replenishing container 30 as a design choice. See In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006) (“there must be some articulated reasoning
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`with some rational underpinning to support the legal conclusion of
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`obviousness”).
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`In response, Patent Owner makes several arguments. For instance,
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`Patent Owner argues that, “[w]hen the function of a claimed structure differs
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`from the prior art, it would not be obvious to a POSA to change the prior art
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`based on an ‘obvious design choice.’” Prelim. Resp. 40. According to
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`Patent Owner, “a POSA would not be motivated to rearrange or modify the
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`cited portions of Sugita to meet the claimed elements because the cited
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`portions of Sugita have a different function than the claimed elements.” Id.
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`For example, Patent Owner explains, Sugita describes detecting the number
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`of rotations in order to control toner supply, while the ’015 patent describes
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`detecting the number of rotations in order to determine the type of toner
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`cartridge that has been inserted into the image forming apparatus. See id. at
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`40–41.
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`We are unpersuaded by Patent Owner’s argument. As an initial
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`matter, we note that the claims do not recite the function of determining the
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`type of toner cartridge that has been inserted into an image forming
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`apparatus. The disputed limitation at issue concerns the recited plurality of
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`gears, which function to rotate the conveying member and the agitating
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`member. As discussed above with respect to Petitioner’s anticipation
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`analysis, we are persuaded that the recited plurality of gears is disclosed by
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`Sugita’s gear mechanism 46, which rotates replenishing screw 32
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`(“conveying member”) and agitating means 31 (“agitating member”).
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`Patent Owner further argues that Petitioner’s proposed design choices
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`do not “‘function in the same fashion’” because “the toner container of
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`Sugita is designed to be swapped out, leaving the motor, drive assembly, and
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`optical detection arrangement in place inside the image forming apparatus.”
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`Id. at 41. We are unpersuaded by this argument. It does not appear that
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`choosing to directly attach Sugita’s gear mechanism 46 to replenishing
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`container 30, as proposed by Petitioner, rather than choosing to detachably
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`attach gear mechanism 46 to replenishing container 30, as disclosed by
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`Sugita, would affect the function of gear mechanism 46. Although Sugita
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`may teach that certain elements are inside the image forming apparatus, we
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`note that “[a] person of ordinary skill is also a person of ordinary creativity,
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`not an automaton,” and would know whether to leave those elements in
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`Sugita inside the image forming apparatus based on the design choice. See
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`Lastly, Patent Owner argues that Sugita’s drive assembly 40 (which
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`includes gear mechanism 46) is neither replaceable nor detachable. Prelim.
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`Resp. 41. We are unpersuaded by this argument. It is our understanding
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`that assembly 40 is detachable with respect to replenishing container 30.
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`This is supported by Sugita, which teaches that “two guide pins 43 and 44
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`protruding from the driving portion 40 side are inserted into two guide
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`cylinders protruding in parallel to each other from the end portion of the
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`main body 30 [of developer replenishing portion 6], whereby accurate
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`positioning is accomplished.” Ex. 1010, 2:67–3:4; see also id. at 1:29–30
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`17
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`(“a developer replenishing portion 6 is detachably mounted on the main
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`body A of the apparatus”); id. at 10:16–17 (“said container is detachably
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`mountable on a main assembly of said image forming apparatus”). On this
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`record, we are persuaded that the recited gears would have been obvious
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`over Sugita. In addition, we remain persuaded that the recited gears would
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`have been obvious over Sugita whether or not drive assembly 40 is
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`replaceable.
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`In view of the foregoing, we determine that Petitioner has
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`demonstrated a reasonable likelihood of prevailing on its assertion that
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`claims 1 and 7 would have been obvious over Sugita. Having reviewed
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`Petitioner’s arguments asserting that dependent claims 2–6 and 8 would
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`have been obvious over Sugita (see Pet. 53–63, 65–66), we also determine
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`that Petitioner has demonstrated a reasonable likelihood of prevailing on its
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`assertion as to these claims.
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`
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`C. Obviousness over Sugita and Nishimura
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`Petitioner argues that claims 1–8 of the ’015 patent would have been
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`obvious over Sugita and Nishimura under 35 U.S.C. § 103. Pet. 4, 45–66.
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`For the reasons explained below, we are persuaded that Petitioner has
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`demonstrated a reasonable likelihood of prevailing on its asserted ground.
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`
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`1. Nishimura
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`Nishimura describes an ornamental design for a toner cartridge.
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`Ex. 1011, at [57].
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`
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`2. Analysis
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`With respect to claims 1 and 7, Petitioner relies primarily on Sugita.
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`See Pet. 49–53, 64 (discussing only the claimed “plurality of gears,” “optical
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`penetration member,” and “gear cover” in relation to Nishimura). Petitioner
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`additionally relies on Nishimura for certain of the limitations recited in these
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`claims, including the limitation “a plurality of gears which are provided on
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`an exterior portion of the toner container.” Id. at 49–50. For this limitation,
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`Petitioner relies on Nishimura to the extent that the term “provided on”
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`requires the gears to be directly attached to the toner container. See id. As
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`discussed above, Petitioner explains that Sugita’s gear mechanism 46
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`(“plurality of gears”) is detachably attached to replenishing container 30
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`(“toner container”). See id. Petitioner further asserts that Figure 4 of
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`Nishimura, which is reproduced below, shows “a gear arrangement that is
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`virtually identical to the ’015 Patent.” Id. at 50. We understand this to mean
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`that Petitioner is asserting that Nishimura teaches a gear arrangement that is
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`directly attached to a toner container.
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`Figure 4 of Nishimura shows a left side view of a toner cartridge. Ex. 1011
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`(Description).
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`In addition to showing that Nishimura teaches a plurality of gears
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`being attached directly to a toner container, Petitioner must provide “some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.” Kahn, 441 F.3d at 988; see KSR, 550 U.S. at
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`418. In that regard, Petitioner contends that direct “[a]ttachment of the gears
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`to the container, instead of in a detachable driving portion, would also be
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`obvious” as a design choice. See Pet. 49–50. For the reasons discussed
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`above with respect to obviousness over Sugita alone, we are persuaded that
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`Petitioner has provided adequately articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness. See Kahn, 441
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`F.3d at 988.
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`In view of the foregoing, we determine that Petitioner has
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`demonstrated a reasonable likelihood of prevailing on its assertion that
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`claims 1 and 7 would have been obvious over Sugita and Nishimura.
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`Having reviewed Petitioner’s arguments asserting that dependent claims 2–6
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`and 8 would have been obvious over Sugita and Nishimura, (see Pet. 53–63,
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`65–66), we also determine that Petitioner has demonstrated a reasonable
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`likelihood of prevailing on its assertion as to these claims.
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`
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`D. Obviousness over Matsuda and Yokoi
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`Petitioner argues that claims 1–8 of the ’015 patent would have been
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`obvious over Matsuda and Yokoi under 35 U.S.C. § 103. Pet. 4, 66–88. We
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`exercise our discretion and decline to institute this ground in light of the
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`asserted grounds of unpatentability on which we initiate inter partes review.
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`Accordingly, we do not authorize inter partes review on Petitioner’s asserted
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`ground that claims 1–8 would have been obvious over Matsuda and Yokoi.
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`See 37 C.F.R. § 42.108(a).
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`
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`III. CONCLUSION
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`For the foregoing reasons, we are persuaded that Petitioner has
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`demonstrated a reasonable likelihood that it would prevail in showing that
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`claims 1–8 of the ’015 patent are unpatentable. We have not, however,
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`made a final determination with respect to the patentability of these claims.
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`
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that inter partes review is instituted as to claims 1–8 of
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`the ’015 patent based on the following grounds:
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`A. Anticipation of claims 1, 7, and 8 by Sugita under 35 U.S.C.
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`§ 102;
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`B. Obviousness of claims 1–8 over Sugita under 35 U.S.C. § 103;
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`C. Obviousness of claims 1–8 over Sugita and Nishimura under
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`35 U.S.C. § 103;
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`FURTHER ORDERED that no other grounds of unpatentability are
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`authorized for an inter partes review as to any claim of the ’015 patent; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`will commence on the entry date of this decision.
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`
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`IPR2016-01010
`Patent 9,098,015 B2
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`PETITIONER:
`
`Cyrus Morton
`cmorton
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