Patent No. 8,075,338
`IPR2015-01573
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`Filed on behalf of Patent Owner, PPC Broadband, Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________
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`CORNING OPTICAL COMMUNICATIONS RF LLC, CORNING
`INCORPORATED, AND CORNING OPTICAL COMMUNICATIONS LLC,
`Petitioners,
`
`v.
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`PPC BROADBAND, INC.,
`Patent Owner.
`__________
`
`Case IPR2016-01573
`Patent 8,075,338
`__________
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`
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`PRELIMINARY PATENT OWNER RESPONSE
`37 C.F.R. § 42.107
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`Patent No. 8,075,338
`IPR2015-01573
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`THE „338 PATENT ......................................................................................... 3
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`III. CLAIM CONSTRUCTION ............................................................................ 4
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`A.
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`B.
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`C.
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`The Intrinsic Evidence, And Even Petitioner‟s Own Admissions
`In Parallel Claim Construction Proceedings, Confirm That The
`Claimed “Plurality Of Engagement Fingers” Must Be A Portion
`Of, And Integral With, The Post. .......................................................... 6
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`Contrary To Petitioner‟s Made-Up BRI Theory, The
`Specification Does Not “Expressly Contradict” A Construction
`That The Post Is A Single Component. ...............................................13
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`Petitioner‟s Cherry-Picked Dictionary Definition Of “On”
`Should Be Rejected Because It Is Contrary To What the‟338
`Patent Fundamentally Teaches, Including How The “Axially
`Aligned Slots” Limitations of Claim 8 Must Be Formed In The
`Post. .....................................................................................................14
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`IV. THE PRIOR ART CANNOT RENDER THE CLAIMED „338 PATENT
`INVENTION OBVIOUS BECAUSE IT NOT ONLY FAILS TO DISCLOSE
`OR SUGGEST EACH AND EVERY CLAIM LIMITATION, IT ALSO
`TEACHES AWAY FROM THEM. ..............................................................18
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`A.
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`B.
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`The Level Of Ordinary Skill In The Art At The Time Of The
`Invention Confirms That The Prior Art Teaches Away From The
`Claimed Invention. ..............................................................................19
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`The Scope And Content Of The Prior Art, Which Taught The
`Use Of A Separate Grounding Member From The Post That
`Would Not Interfere With Nut Rotation, Teaches Away From
`The Claimed Invention. .......................................................................28
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`1.
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`Bence, Which Discloses A Separate Grounding Member
`From The Post That Would Not Interfere With Nut
`Rotation, Is The Antithesis Of, And Teaches Away, From
`The Claimed Invention. ............................................................28
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`2. Matthews Also Discloses A Different Solution To The
`Loose Connector Problem Using A Separate Grounding
`Member. ....................................................................................33
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`3.
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`Aujla Not Only Fails to Make-Up for the Deficiencies of
`Bence and Matthews, It also Teaches Away From The
`Claimed Invention Because It Involves A Completely
`Different Connector Having A Nut That Does Not Rotate
`With Respect To The Post. .......................................................34
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`C.
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`The Differences Between The Claimed „338 Patent Invention
`And The Prior Art And Petitioner‟s Proposed Modification Of
`Matthews That Would Render It Inoperable For Its Intended
`Purpose, Confirm That The Challenged Claims Are Not
`Obvious. ..............................................................................................40
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`1.
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`2.
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`3.
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`4.
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`5.
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`Petitioner Fails To Acknowledge The Differences
`Between The Claimed Invention And The Prior Art. ...............40
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`Bence Teaches Away From Petitioner‟s Imagined
`Modification Of Matthews To Have Engagement Fingers
`Of The Post Interfering With The Inner Surface Of A
`Rotating Nut, Which Would Render Matthews Inoperable
`For Its Intended Purpose. ..........................................................44
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`Since Bence And Matthews Already Taught Different
`Solutions To The Loose Connector Problem, One of
`Ordinary Skill in the Art Would Have No Reason To
`Substantially Modify Their Teachings In the Superfluous
`Manner Imagined By Petitioner. ...............................................48
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`The Conclusory Purported “Rationales” Offered By
`Petitioner Do Not Provide Any Evidence That The
`Asserted Claims Are Obvious. ..................................................50
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`A Person Of Ordinary Skill In The Art Not Have Modified
`Matthews To Create A Slotted Flange Of A Post, As That
`Would Have Rendered Matthews Inoperable For Its
`Intended Purpose. ......................................................................53
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`V.
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`SINCE THE SAME PRIOR ART AND ARGUMENTS WERE ALREADY
`CONSIDERED DURING PROSECUTION OF THE „338 PATENT, THE
`BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C. §
`325(D) AND DENY THIS PETITION. ........................................................61
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`VI. PETITIONER‟S ALTERNATIVE GROUNDS OF UNPATENTABILITY
`ASSERTED IN MULTIPLE PETITIONS AGAINST THE SAME
`CHALLENGED CLAIMS ARE REDUNDANT AND SHOULD BE
`DENIED.........................................................................................................66
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`Patent No. 8,075,338
`IPR2015-01573
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`I.
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`INTRODUCTION
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`Patent Owner, PPC Broadband, Inc. (“PPC”), respectfully submits this
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`Preliminary Patent Owner Response to the Petition for Inter Partes Review (“IPR”)
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`of claims 5, 6, and 8 of U.S. Patent No. 8,075,338 (the “„338 Patent”)(EX1001) filed
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`by Petitioner, Corning Optical Communications RF, LLC et al. (“Petitioner”).
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`Petitioner alleges that the challenged claims are obvious based on U.S. Patent
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`Application Publication No. 2006/0110977 (“Matthews”)(EX1019) in view of U.S.
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`Patent No. 4,156,554 (“Aujla”)(EX1029) and U.S. Patent No. 7,114,990 (“Bence”)
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`(EX1002).
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`The petition should be denied for several reasons. First, Petitioner invites the
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`Board to commit legal error by centering its petition on made-up claim construction
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`theories that are unreasonable in light of what the „338 Patent clearly teaches. For
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`instance, Petitioner proposes to construe the claimed „338 Patent “engagement
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`fingers” to cover “engagement fingers,” which are not integral with the post – even
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`though the only “engagement fingers” taught by the „338 Patent must be integral
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`with the post. Furthermore, Petitioner has admitted in parallel claim construction
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`proceedings that the claimed “engagement fingers” must be “portions of the post.”
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`Second, Petitioner invites the Board to commit legal error by proposing
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`made-up obviousness theories that cannot satisfy its burden of establishing prima
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`facie obviousness under longstanding Supreme Court and Federal Circuit precedent.
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`Petitioner did not even attempt to satisfy the analysis required by Graham regarding
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`the level of ordinary skill at the time of the „338 Patent invention. In fact, a wealth
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`of objective and contemporaneous evidence demonstrates how one of ordinary skill
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`at that time would have readily recognized how the prior art teaches away from the
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`claimed invention of having the post interfere with the nut. In other words, the
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`claimed „338 Patent invention went against conventional wisdom and was contrary
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`to how those of ordinary skill at that time tried to solve the same loose connector
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`problem. It is clear that Petitioner‟s imagined modification of Matthews is a
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`hindsight-driven exercise, simply using the „338 Patent as a blueprint to create the
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`claimed invention.
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`Moreover, one skilled in the art at the time of the „338 Patent invention would
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`not have considered making Petitioner‟s imagined modifications of Matthews
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`because it would impermissibly render Matthews inoperable for its intended
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`purposes (e.g., connecting a cable to an equipment port by rotating the nut onto the
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`port) and substantially change its principles of operation. It is only through
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`hindsight afforded by the „338 Patent‟s own disclosure that Petitioner could imagine
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`such modifications.
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`Finally, Petitioner has asserted three different grounds of unpatentability
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`based on Bence against the same challenged claims, one in this IPR and another in
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`IPR2016-01569. But since Petitioner failed to explain why any alternative ground is
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`not redundant, any alternative ground should be denied. Furthermore, since the
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`subject matter disclosed by the asserted prior art and the issues presented here were
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`fully considered during the prosecution of the „338 Patent, this petition should be
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`denied under 35 U.S.C. § 325(d).
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`II. THE „338 PATENT
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`The „338 Patent invention is directed to coaxial cable connectors for
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`connecting a coaxial cable to an equipment port.
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`As shown, when properly
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`installed on a port, the front face of a
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`connector‟s “post” component contacts
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`the front face of the port to extend the
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`electrical ground path and
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`electromagnetic shielding of the outer
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`conductor of the cable to the port. (EX2030 ¶¶ 19-23.)
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`In practice, “[h]owever, connectors are often times not properly tightened or
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`otherwise installed.” (EX1001 1:41-42.) As shown, when the connector is loose on
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`the port, gaps formed in the connector can
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`prevent the ground path and electromagnetic
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`shielding provided by the cable‟s outer
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`conductor from extending to the port.
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`Loose connectors thus can result in significant performance problems. (EX2030 ¶
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`24.)
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`In the 2009/2010 timeframe, PPC‟s engineers devised one solution to the
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`loose connector problem that led to the „338 Patent, which is entitled “Connector
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`Having a Constant Contact Post.” 1 (EX1001 Title.) As shown in the following
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`annotated version of Fig. 2, the‟338 Patent discloses a “constant contact post” (red)
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`with a “plurality of engagement fingers” designed to exert a constant biasing force
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`against the inner surface of the port coupling element (blue) and thus maintain
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`constant contact between the post (red) and the port coupling element (blue) even
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`when the connector is loose on a port. (EX1001 4:18-50; EX2030 ¶ 25.)
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`III. CLAIM CONSTRUCTION
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`In an IPR, claim terms in an unexpired patent are given their broadest
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`reasonable construction interpretation (“BRI”) in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.
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`1 Unless otherwise noted, all emphasis is added.
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`Lee, 136 S. Ct. 2131, 2144–46 (2016). “That is not to say, however, that the Board
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`may construe claims during IPR so broadly that its constructions are unreasonable
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`under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015)(emphasis in original); In re Suitco Surface,
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`Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)(“The broadest-construction rubric
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`coupled with the term „comprising‟ does not give the PTO an unfettered license to
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`interpret claims to embrace anything remotely related to the claimed invention.”).
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`Petitioner offers claim constructions for six different claim elements. Several
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`of the proposed constructions for claim elements (i.e., “biased into a position of
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`interference,” “physical and electrical continuity,” and “axially aligned slots”) are
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`not necessary to resolve any controversy at this stage of the proceeding and
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`therefore need not be construed. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999)(“[O]nly those terms need be construed that are
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`in controversy, and only to the extent necessary to resolve the controversy.”) And
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`for those claim elements that do require construction, Petitioner invites the Board to
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`commit clear legal error by adopting unreasonably broad constructions that are
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`“divorced from the specification and the record evidence.” In re NTP, Inc., 654
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`F.3d 1279, 1288 (Fed. Cir. 2011).
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`A. The Intrinsic Evidence, And Even Petitioner‟s Own Admissions In
`Parallel Claim Construction Proceedings, Confirm That The
`Claimed “Plurality Of Engagement Fingers” Must Be A Portion
`Of, And Integral With, The Post.
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`Claim 5 of the „338 Patent requires “a plurality of engagement fingers
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`proximate the second end [of the post], wherein the plurality of engagement fingers
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`are biased into a position of interference with the inner surface of the port coupling
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`element.” According to Petitioner‟s made-up claim construction theory, which is
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`divorced from the specification, the claimed “„plurality of engagement fingers‟ are
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`not required to be portions of the post, nor are the plurality of engagement fingers‟
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`required to be formed with the post into an integral component.” (Pet. at 25-26.)
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`But Petitioner‟s theory is contrary to not only the „338 Patent‟s intrinsic evidence,
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`but also Petitioner‟s own admissions in the related litigation that the claimed
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`“engagement fingers” are indeed “portions of the post.” (EX2001 at 7.)
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`Turning first to the specification, to solve the loose connector problem, the
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`„338 Patent specification teaches that the invention fundamentally centers on “an
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`improved connector having a constant contact post for ensuring ground continuity
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`through the connector, and establishing and maintaining electrical and physical
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`communication between the post and a port coupling element.” (EX1001 1:47-51.)
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`The Field of the Invention also confirms that the “present invention relates to . . .
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`embodiments of a coaxial cable connector having a constant contact post that
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`extends electrical continuity through the connector.” (EX1001 1:14-18.) The title
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`of the „338 Patent – “Connector Having A Constant Contact Post” leaves no doubt
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`that it is the inventive “post” of the „338 Patent, and not some other component, that
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`is resolving the loose connector problem. (EX2030 ¶ 27.)
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`Consistent with these statements – which confirm that the fundamental
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`feature of the „338 Patent is the constant contact post – all of the embodiments
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`disclosed in the „338 Patent teach that it is the post 40 (e.g., the engagement fingers
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`145 or the flange 44 generally), and only the post, that provides constant contact
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`with the port coupling element 30 to maintain physical and electrical continuity
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`between the post 40 and the port coupling element 30. (EX2030 ¶ 28.)
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`When the nut 30 is attached to the post 40 (i.e. while operably
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`configured), the resilient engagement fingers 145 should flex, expand,
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`or “spring” back in a radially outward direction, applying a constant
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`radial contact force with the nut 30, in particular, the inner surface 35
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`of the nut 30. The constant radial contact force applied by the
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`engagement fingers 145 against the inside surface of the nut 30 may
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`establish and maintain physical and electrical continuity between the
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`post 40 and the nut 30. (EX1001 8:33-41.)
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`[A] post 40, the post 40 having a first end 41 and an opposing second
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`end 42, . . . and a plurality of engagement fingers 145 proximate the
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`second end 42, . . . the plurality of engagement fingers 145 exerting a
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`radially outward force against the port coupling element 30, wherein
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`the radially outward force against the port coupling element 30
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`establishes and maintains physical and electrical continuity between the
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`post 40 and the port coupling element 30 regardless of the relative axial
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`position between the post 40 and the port coupling element 30.
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`(EX1001 10:40-57.)
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`See also EX1001 4:39-59, 7:44-48, 7:60-65.
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`„338 Patent (EX1001)
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`Turning back to the claim language itself, claim 5 requires that “the plurality
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`of engagement fingers are biased into a position of interference with the inner
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`surface of the port coupling element.” In other words, it is the engagement fingers
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`of the constant contact post that are biased so as to contact the inner surface of the
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`port coupling element. (EX2030 ¶ 29.)
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`Tellingly, Petitioner proposes a made-up BRI theory based on what it wishes
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`the „338 Patent taught, not based on what the „338 Patent actually teaches.
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`Petitioner‟s theory must be rejected because it is so unreasonable as to cover
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`engagement fingers that are somehow part of another unidentified and undisclosed
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`component beyond the scope of the „338 Patent disclosure itself, and run counter to
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`what the „338 Patent actually teaches is the fundamental feature of the claimed
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`invention – the “constant contact post.” See Praxair, Inc. v. ATMI, Inc., 543 F.3d
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`1306, 1324 (Fed. Cir. 2008)(“The claims of the patent must be read in light of the
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`specification‟s consistent emphasis on this fundamental feature of the invention.”).
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`Moreover, the „338 Patent prosecution history confirms that the constant
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`contact post is the fundamental feature of the invention, thus further belying not
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`only Petitioner‟s made-up BRI theory, but also its reliance on Bence. The Examiner
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`rejected the claims, stating that Bence “substantially discloses the claimed invention
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`except for the flanged post 104, 106 being slotted.” (EX1012 at 2; EX2030 ¶ 30.)
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`In response, the Applicants explained how the “connector taught by Bence et
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`al. includes an additional grounding member „110,‟ which „contacts both the
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`tubular post 104 and the coupling nut 105 for providing an electrically-conductive
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`path therebetween.‟” The Applicant also explained how Bence fails to teach the
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`fundamental feature of the claimed invention (i.e., the constant contact post) stating
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`that “when the connector is not mated onto a port, the slotted post ensures
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`mechanical interference between the port and the coupling element.” (EX1014 at p.
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`16; EX2030 ¶ 31.)
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`In this IPR, Petitioner attempted to sidestep such compelling evidence by
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`cherry-picking one carefully selected passage from the „338 Patent. (Pet. at
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`25)(citing EX1001 8:16-23.) The complete passage from the „338 Patent
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`specification is shown below (with emphasis on the language Petitioner selectively
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`omitted).
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`Petitioner‟s Cited Passage
`(Pet. at 25)
`Engagement fingers 145 can be portions
`of the post 40 . . . . Engagement fingers
`145 may also be resilient members,
`biasing members, fingers, biasing
`fingers, post fingers, teeth, engagement
`teeth, post teeth, expanding members,
`flexible members, and the like.
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`Complete Cited Passage
`(EX1001 8:16-23.)
`Engagement fingers 145 can be portions
`of the post 40 proximate or otherwise
`near the second end 42 that are
`separated, or spaced apart, by slots 140
`running axially through the flange 44
`and a portion of the post 40 proximate
`or otherwise near the second end 42.
`Engagement fingers 145 may also be
`resilient members, biasing members,
`fingers, biasing fingers, post fingers,
`teeth, engagement teeth, post teeth,
`expanding members, flexible members,
`and the like.”
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`The language omitted by Petitioner provides the necessary context for the
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`excerpted statement that the “[e]ngagement fingers can be portions of the post 40.”
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`Consistent with the fundamental feature of the invention – the constant contact post
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`– while the disclosed fingers are part of the post, they can be (1) located proximate
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`or otherwise near the second end of the post, or (2) spaced apart by slots running
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`through the flange and portion of the post. A person of ordinary skill would
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`recognize that such a passage simply refers to a possible location and arrangement
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`of the engagement fingers of the post. (EX2030 ¶¶ 32-33.)
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`Further undermining Petitioner‟s unreasonably broad proposed construction is
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`its own proposed construction and statements in the related district court litigation,
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`where it agrees that the “[i]t is clear from the specification that the claimed
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`engagement fingers are portions of the post . . . .” (EX2001 at 7.)2
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`Finally, Petitioner tries to disregard the fact that claim 5 specifically requires
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`that a “plurality of engagement fingers proximate the second end [of the post]” in
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`advancing its made-up BRI theory. As is made clear throughout the specification,
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`the claim requirement that the “engagement fingers” must be “proximate the second
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`end” of the post specifies that the engagement fingers are located on the constant
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`contact post near the second end (i.e., the front or forward end) of the post. For
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`example, FIG. 3 illustrates that in all of the exemplary embodiments described in the
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`specification, the “plurality of engagement fingers 145 [are] proximate the second
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`end 42” (i.e., the fingers are a portion of the post near the second end of the post).
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`(EX1001 4:29-37; see also EX 1001 8:12-16, 10:40-46, 10:57-67; EX2030 ¶ 34.)
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`2 While Petitioner indicates (Pet. at 22, n.2) that its constructions under the BRI
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`standard differ from the constructions offered in the district court litigation under
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`Phillips, it fails to provide any explanation of why the two constructions would be
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`different in this instance.
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`engagement fingers (145)
`are a portion of the post
`(40) near the second end
`(42) of the post
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`Accordingly, the engagement fingers are consistently described in the
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`specification as being proximate the second end of the post, and in each and every
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`disclosed embodiment of the‟338 Patent specification, the engagement fingers are
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`a portion of, and integral with, the post. (EX2030 ¶ 35.) In fact, each and every
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`time the term “proximate” an end of a component is used to describe a structural
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`feature, that structural feature is a portion of, and integral with, the component itself
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`(i.e., not separate from and only near the component). (EX2030 ¶ 36.)
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` “a flange 44 proximate the second end 42” of the post 40 (EX1001
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`4:21-24)
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` “an internal lip 34 located proximate, or otherwise near to the second
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`end 32” of the nut 30 (EX1001 4:56-59)
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` “a post mounting portion 57 proximate or otherwise near the first end
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`51 of the body 50” (EX1001 8:50-57)
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` “an outer annular recess 58 located proximate or near the first end 51
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`of the connector body 50” (EX1001 8:57-59)
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` “an external annular detent 53 located proximate or close to the second
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`end 52 of the connector body 50” (EX1001 8:64-66)
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` “the fastener member 60 may comprise an exterior surface feature 69
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`positioned proximate with or close to the second end 62 of the fastener
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`member 60” (EX 1001 9:38-41)
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`Accordingly, one of ordinary skill would readily recognize that the ordinary
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`and customary meaning of “proximate the second end” of the post in claim 5 is
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`simply that the engagement fingers are a portion of the post located near the second
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`end of the post. The intrinsic evidence, and Petitioner‟s own admissions, make it
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`clear that, under the BRI, the claimed “plurality of engagement fingers” are a
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`portion of, and integral with, the post. (EX2030 ¶ 37.)
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`B. Contrary To Petitioner‟s Made-Up BRI Theory, The Specification
`Does Not “Expressly Contradict” A Construction That The Post Is
`A Single Component.
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`Claim 5 requires “a post, the post having a first end and an opposing second
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`end.” According to Petitioner, “there is nothing in the „338 Patent that indicates, in
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`any way, that the „post‟ must be a single, homogeneous, inseparable component;
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`instead, the „338 Patent expressly contradicts such an interpretation.” (Pet. at 25.)
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`But in reality, nothing could be farther from the truth.
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`For instance, each and every embodiment of the post 40 in the specification
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`of the „338 Patent discloses a single, inseparable component. And while the
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`specification discloses that “the post 40 may be formed of a combination of both
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`conductive and non-conductive materials,” this disclosure simple refers to “a metal
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`coating or layer . . .applied to a polymer of other non-conductive material” (EX1001
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`6:10-17), which would still produce a single, integral component.
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`Accordingly, the claimed “plurality of engagement fingers” of claim 5 must be a
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`portion of, and integral with, the post. (EX2030 ¶ 37.)
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`C.
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`Petitioner‟s Cherry-Picked Dictionary Definition Of “On” Should
`Be Rejected Because It Is Contrary To What the‟338 Patent
`Fundamentally Teaches, Including How The “Axially Aligned
`Slots” Limitations of Claim 8 Must Be Formed In The Post.
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`Claim 8 of the „338 Patent depends from claim 5, and further requires that
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`“the plurality of engagement fingers are spaced apart by axially aligned slots
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`positioned on the post proximate the second end.” Without citing to a single word
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`from the specification concerning the disclosure of the axially aligned slots on the
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`post, Petitioner proposes that the term “on” be construed based solely on a general
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`purpose dictionary. (Pet. at 29)(citing EX1030.) According to Petitioner, based on
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`these dictionary definitions, the “term „on‟ encompasses a position that is above and
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`supported over, and does not require a position that is directly above or in direct
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`contact with.” (Pet. at 30.)
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`But Petitioner‟s unreasonably broad dictionary-based construction is not only
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`contradicted by the intrinsic evidence, it is also contradicted by Petitioner‟s own
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`position in the related litigation where it advocates for a claim construction
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`confirming that the axially aligned slots are merely “positioned on” the post as
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`expressly recited in the claim. (EX2001 at 14.) All of this evidence confirms that
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`the axially aligned slots “positioned on” the post as expressly recited in the claim
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`should be construed as being formed in the post.
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`Furthermore, Petitioner‟s practice of proposing a construction of a claim term
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`based solely on a general purpose dictionary without any support in the specification
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`has already been rejected by the Federal Circuit. Earlier this year, in an appeal of
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`another IPR proceeding between these same parties, the Federal Circuit reversed the
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`Board‟s adoption of Petitioner‟s dictionary-based definition of the claim term
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`“reside around” that “fail[ed] to account for how the claims themselves and the
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`specification inform the ordinary skilled artisan as to precisely which ordinary
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`definition the patentee was using.” PPC Broadband, Inc., v. Corning Optical
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`Comms. RF, LLC, 815 F.3d 747, 752 (Fed. Cir. 2016).
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`Turning to the specification involved here, the „338 Patent confirms that the
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`claimed slots can take a variety of forms, including openings, spaces, cuts, grooves,
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`etc. (EX2030 ¶ 40.)
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`With continued reference to FIG. 1, and additional reference to FIG. 3,
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`post 40 includes a plurality of slots 140 positioned somewhere on or
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`around the post 40 proximate or otherwise near the second end 42. A
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`plurality of slots 140 may be a plurality of openings, spaces, voids,
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`apertures, holes, cuts, channels, grooves, and the like, positioned on
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`the flange 44 and a portion of the post 40 proximate or otherwise near
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`the second end 42 of the post 40. (EX1001 6:18-25.)
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`slots (140)
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`Notably, the slots described in the cited language from the specification
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`(EX1001 6:18-25) are either “positioned . . . on or around,” while claim 8 expressly
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`requires that the slots be “positioned on” (i.e., and not merely just “around”) the
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`post. That language from the specification demonstrates that, while claim 8 could
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`have used broader language allowing the claimed slots to be simply “around” the
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`post, the actual language is more restrictive, requiring that the slots be positioned on
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`the post. (EX2030 ¶ 41.)
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`In determining the proper construction of the term “positioned on” in
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`reference to the claimed “slots,” one of ordinary skill in the art would readily
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`recognize that the slots (e.g., openings, spaces, voids, apertures, holes, cuts,
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`channels, grooves)(EX1001 6:18-21) describe areas of missing material that are
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`formed in the post as disclosed in the specification and shown in the figures.
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`(EX2030 ¶ 42.)
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`The number of engagement fingers 145 depends on the number of slots
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`140 positioned on the post 40. For example, if the post 40 has six slots
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`140 axially extending from the second end 42, six engagement fingers
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`145 would be formed. (EX1001 8:24-26.)
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`Patent Owner‟ s proposed construction that the claimed slots “positioned on”
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`the post requires that the slots be “formed in” the post (or require certainly more
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`than being “above and supported over” the post as proposed by Petitioner) is further
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`supported by Petitioner‟s own interpretation of the „338 Patent submitted in the
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`parallel litigation. In its claim construction submission, Petitioner asserted that “the
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`„338 Patent addresses potential loss of electrical signal by forming slots on the end
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`of the post to create resilient fingers that keep the post and nut in contact.” (EX2001
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`at 1.) But this was not even the first time that Petitioner has characterized the slots
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`of the „338 Patent as being formed in the post.
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`On October 16, 2012, Petitioner filed its own patent that issued as U.S. Patent
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`No. 9,407,016 B2 (“Corning „016”). (EX2004.) During prosecution, the claims
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`were rejected as anticipated and/or obvious over the „338 Patent. (EX2006 at 5-10.)
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`In response, Petitioner attempted to distinguish the „338 Patent and admitted that the
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`invention of the „338 Patent was directed to “a post that includes a plurality of
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`openings or slots in between a plurality of fingers at the flange of the post.”
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`(EX2007 at 9)(emphasis in original).
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`Accordingly, the intrinsic evidence and Petitioner‟s own admissions make it
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`clear that, under the BRI, the claimed “axially aligned slots positioned on the post”
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`requires that the slots be formed in the post. (EX2030 ¶ 43.)
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`IV. THE PRIOR ART CANNOT RENDER THE CLAIMED „338 PATENT
`INVENTION OBVIOUS BECAUSE IT NOT ONLY FAILS TO
`DISCLOSE OR SUGGEST EACH AND EVERY CLAIM
`LIMITATION, IT ALSO TEACHES AWAY FROM THEM.
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`Petitioner claims that Matthews in view of Aujla and Bence renders obvious
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`claims 5, 6, and 8 of the „338 Patent. But Petitioner failed to address the underlying
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`factual determinations required by the Supreme Court‟s decision in Graham,
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`including: (1) the scope and content of the prior art; (2) the differences between the
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`claimed subject matter and the prior art; and (3) the level of ordinary skill in the art.
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Notably, Petitioner failed to
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`show how its proposed obviousness theories, including its conclusory and
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`unsupported series of imagined modifications of Matthews, arose from what the
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`prior art actually teaches, instead of using the claimed invention itself as the
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`roadmap for making up such theories. See, e.g., KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 421 (2007); see also St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d
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`1369, 1381 (Fed. Cir. 2013)(even under KSR‟s “expansive and flexible”
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`obviousness analysis set forth in KSR, “we must guard against „hindsight bias‟ and
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`„ex post reasoning.‟”); M.P.E.P. § 2142 (“[I]mpermissible hindsight must be
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`avoided and the legal conclusion must be reached on the basis of the facts gleaned
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`from the prior art.”) Accordingly, Petitioner has failed to meet its burden of
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`establishing a prima facie case of obviousness. 35 U.S.C. § 316(e); 37 C.F.R. §
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`42.1(d).
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`A. The Level Of Ordinary Skill In The Art At The Time Of The
`Invention Confirms That The Prior Art Teaches Away From The
`Claimed Invention.
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`For the „338 Patent, the relevant “time of the invention” was 2010, when
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`Patent Owner filed i