Paper 20
`Filed: July 9, 2019
`
`UNITED STATES PATENT & TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`SENNCO SOLUTIONS INC.,
`Patent Owner.
`________________
`
`Case IPR2018-01218
`U.S. Patent 9,664,336
`________________
`
`PETITIONER’S RESPONSE IN OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Filed: July 9, 2019
`
`UNITED STATES PATENT & TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`MOBILE TECH, INC.,
`Petitioner,
`
`v.
`
`SENNCO SOLUTIONS INC.,
`Patent Owner.
`________________
`
`Case IPR2018-01218
`U.S. Patent 9,664,336
`________________
`
`PETITIONER’S RESPONSE IN OPPOSITION TO
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2018-01218
`Patent 9,664,336
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ......................................................................... iii
`PETITIONER’S RESPONSE TO CONTINGENT MOTION TO AMEND .... 1
`I. THE SUBSTITUTE CLAIMS ARE INDEFINITE AND/OR LACK
`WRITTEN DESCRIPTION .............................................................................. 1
`A. Legal Standards for Indefiniteness in Motions to Amend ......................... 1
`B. Sennco’s Substitute Claims Are Indefinite and/or Lack Written-
`Description Support ...................................................................................... 3
`1. Substitute Claims 21-27 are Indefinite and/or Lack Written
`Description ................................................................................................ 3
`2. Substitute Claims 28-32 are Indefinite and/or Lack Written
`Description .............................................................................................. 13
`3. Substitute Claims 33-39 are Indefinite and/or Lack Written
`Description .............................................................................................. 17
`II. THE SUBSTITUTE CLAIMS ARE NOT PATENTABLE OVER THE
`PRIOR ART ...................................................................................................... 19
`III. CONCLUSION ............................................................................................ 25
`
`- ii -
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`
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`IPR2018-01218
`Patent 9,664,336
`
`MTI
`Exhibit No.
`
`PETITIONER’S EXHIBIT LIST
`
`Document
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 9,664,336 to Ewen et al. (“the ’336 Patent”)
`
`WIPO Publication No. 2012/069816 to Seabrook (“Seabrook”)
`
`U.S. Patent No. 7,327,276 to Deconinck et al. (“Deconinck”)
`
`U.S. Patent No. 7,667,601 to Rabinowitz (“Rabinowitz”)
`
`Freedom ONE Product Manual (“FOPM”)
`
`U.S. Patent Application Publication No. 2011/0047844 (“Fawcett”)
`
`“Spring,” A Dictionary of Mechanical Engineering 344 (1st ed.
`2013)
`
`U.S. Patent No. 7,710,266 to Belden (“Belden”)
`
`U.S. Patent Publication 2005/0073413 to Sedon et al. (“Sedon”)
`
`U.S. Patent Publication 2011/0068920 to Yeager (“Yeager”)
`
`U.S. Patent Publication 2009/0173868 (“’868 Fawcett”)
`
`Declaration of Dr. Kimberly K. Cameron
`
`Definition of “On” from Dictionary.com
`(http://www.dictionary.com/browse/on?s=t)
`
`1014
`
`Declaration of Wade Wheeler
`
`- iii -
`
`
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`IPR2018-01218
`Patent 9,664,336
`
`1015
`
`Sales Data for Freedom ONE
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`Wayback Machine Archive of Freedom ONE Online Landing Page
`on September 25, 2011
`
`Wayback Machine Archive of MTI Library Landing Page on
`January 26, 2012
`
`U.S. Patent No. 9,303,809 to Reynolds et al. (“the ’809 Patent”)
`
`Cross-Examination of Mr. Robert Mizek (June 24, 2019)
`
`Supplemental Declaration of Dr. Kimberly K. Cameron
`
`Excerpts from Michael J. Troughton (editor), Handbook of Plastics
`Joining: A Practical Guide (2nd ed. 2008)
`
`Mustafa Aydin (2010) Effects of Welding Parameters and Pre-
`Heating on the Friction Stir Welding of UHMW-Polyethylene,
`Polymer-Plastics Technology and Engineering, 49:6, 595-601, DOI:
`10.1080/03602551003664503
`
`- iv -
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`
`
`Paper 20
`Filed: July 9, 2019
`
`PETITIONER’S RESPONSE TO CONTINGENT MOTION TO AMEND
`Sennco’s Contingent Motion to Amend (Paper 16) should be denied for at
`
`least the below reasons. Sennco’s substitute claims do not overcome MTI’s
`
`invalidity arguments, and, in fact, only raise additional validity defects. Simply
`
`put, they would be invalid if allowed.
`
`I.
`
`THE SUBSTITUTE CLAIMS ARE INDEFINITE AND/OR LACK
`WRITTEN DESCRIPTION
`A.
`Legal Standards for Indefiniteness in Motions to Amend
`A claim does not comply with 35 U.S.C. § 112(b) “when it contains words
`
`or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314
`
`(Fed. Cir. 2014) (approving, for pre-issuance claims, the standard from MPEP §
`
`2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL
`
`3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the Packard
`
`approach for assessing indefiniteness in prosecution). In other words, “claims are
`
`required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.”
`
`Packard, 751 F.3d at 1313. A claim is also indefinite if it is “amenable to two or
`
`more plausible claim constructions.” Ex parte Miyazaki, Appeal 2007-3300, 2008
`
`WL 5105055, at *5 (BPAI Nov. 19, 2008) (precedential).
`
`While the Federal Circuit has not yet addressed the issue, the Board applies
`
`the Packard standard when reviewing the patentability of original claims in AIA
`
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`
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`IPR2018-01218
`Patent 9,664,336
`post-grant trial proceedings. See, e.g., SZ DJI Tech. Co. v. Autel Robotics USA
`
`LLC, Case PGR2019-00014, 2019 WL 2223428, at *16 (PTAB May 22, 2019);
`
`Tinnus Enterprises, LLC v. Telebrands Corp., 733 F. App’x 1011, 1015 (Fed. Cir.
`
`May 30, 2018). In Tinnus, the issue of the correct standard was raised, but
`
`ultimately not reached by the Federal Circuit. The Office, however, intervened and
`
`“advanced the Packard standard as the correct indefiniteness standard in both
`
`examinations and PGR proceedings….” Id. at 1015 n.1.
`
`The Office later withdrew as an intervenor from Tinnus because the Director
`
`was actively reconsidering the Board’s “approach to claim construction and
`
`indefiniteness.” Id. Ultimately, the Office published regulations changing from
`
`broadest reasonable construction to the Phillips standard for claim construction.
`
`See Changes to the Claim Construction Standard for Interpreting Claims in Trial
`
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340, 51340
`
`(Oct. 11, 2018). But that rule change expressly does not apply to petitions filed
`
`prior to November 13, 2018, such as the present one. Id. Thus, the Office’s
`
`position of applying Packard to AIA proceedings under the broadest reasonable
`
`construction, such as the present one, still equally stands.
`
`Moreover, the rationale for applying Packard is even stronger with respect
`
`to motions to amend, as opposed to SZ DJI and Tinnus, where the standard was
`
`applied to original claims in a PGR. Here, Sennco is requesting the Board grant
`
`- 2 -
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`IPR2018-01218
`Patent 9,664,336
`new claims, not yet examined or issued by the Office. Given that broadest
`
`reasonable construction applies and a motion to amend is more akin to
`
`examination, the Packard standard applies.
`
`Even should the Board apply the district-court standard, the substitute claims
`
`are still indefinite. Under that standard, “a patent is invalid for indefiniteness if its
`
`claims, read in light of the specification…and the prosecution history, fail to
`
`inform, with reasonable certainty, those skilled in the art about the scope of the
`
`invention.” Nautilus, Inc. v. Biosig Instr., Inc., 134 S. Ct. 2120, 2124 (2014).
`
`B.
`
`Sennco’s Substitute Claims Are Indefinite and/or Lack Written-
`Description Support
`Each of Sennco’s independent substitute claims (and thus all substitute
`
`claims) are invalid as indefinite and/or for lacking written-description support
`
`under 35 U.S.C. § 112, as set forth below.
`
`1.
`
`Substitute Claims 21-27 are Indefinite and/or Lack Written
`Description
`Substitute Claim 21, which is a method claim, is invalid under § 112 for a
`
`variety of independent reasons. Multiple elements of the claim are indefinite, and
`
`some, if definite, are not adequately supported in the patent’s specification.
`
`First, Claim 21’s method step of “providing a post having a cable and a
`
`connector” that is further modified with the clause “wherein the post mounts on the
`
`fixture” is indefinite. It is unclear at what point this claim would be infringed, and
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`- 3 -
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`IPR2018-01218
`Patent 9,664,336
`therefore its scope is uncertain. Given that Claim 21 is a method claim and the
`
`wherein clause is drafted using the active verb “mounts,” it is possible this
`
`limitation may not be met until an accused post actually mounts on a fixture. See
`
`Ex. 1019, 134:7-135:5 (Sennco’s declarant interpreting the claim in this manner).
`
`Alternatively, this limitation may recite a method of providing a post, which
`
`has the capability of mounting to the fixture. This construction would be consistent
`
`with MasterMine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 1315 (Fed. Cir.
`
`2017). There, using active verbs, a system claim recited “wherein the reporting
`
`module … presents … receives … and generates….” Id. And the Federal Circuit
`
`interpreted the claim as merely reciting a module with the capability of performing
`
`the functionality recited by these verbs. Id. It, however, is uncertain whether the
`
`MasterMine case controls, given that the claim there (and in the precedent
`
`discussed internally in that case) was a system or apparatus, as opposed to the
`
`present method claim. It is, therefore, ambiguous whether the post must actually
`
`mount on a fixture or whether it must simply be capable of such in order to
`
`infringe Substitute Claim 21.
`
`Second, it is not clear what “providing a post having a cable and connector”
`
`means. “Having” is typically treated like “comprising” when used in a claim. See,
`
`e.g., In re Qapsule Tech., Inc., 759 F. App’x 975, 980 (Fed. Cir. Mar. 11, 2019);
`
`Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1380-81 (Fed.
`
`- 4 -
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`
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`IPR2018-01218
`Patent 9,664,336
`Cir. 2018). But a post comprising a cable and connector is ambiguous. This
`
`limitation perhaps could be interpreted such that the claim is redefining the term
`
`“post” to be something that includes at least a cable and a connector. But a cable
`
`and connector on their own certainly aren’t a post, as explained in the ’336 Patent.1
`
`Or perhaps the limitation means there must be a post that includes at least a cable
`
`and connector. But this conflicts with the specification of the ’336 Patent, in which
`
`the cable and connector are separate from the post. And to the extent this is
`
`definitional meaning just a cable and connector qualify as a post, the additional
`
`limitations of Substitute Claim 21 are indefinite. For example, it is uncertain how
`
`one could “insert[] the head unit into the post,” as recited by Claim 21, if the post
`
`were just a cable and connector.
`
`Alternatively, “having” might be used in a possessive sense, e.g., a cup
`
`having water. Under that interpretation, when the post is provided, it must have the
`
`cable and connector, i.e., the cable and connector must be within the post. But this
`
`only raises additional ambiguity in the claim. To the extent “wherein the post
`
`mounts on the fixture” is a requirement (and not a capability), it is unclear whether
`
`1 The disclosures of the ’336 Patent (Ex. 1001), ’802 Application (Ex. 2012) and
`
`’047 Application are substantively the same. For convenience, this opposition cites
`
`to the ’336 Patent.
`
`- 5 -
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`IPR2018-01218
`Patent 9,664,336
`the cable and connector must still be within the post when it is mounted. Thus, for
`
`these reasons the claim is either indefinite or lacks written-description support.
`
`Third, Substitute Claim 21 recites “connecting a head unit to the post with
`
`the connector.” As described above, the claim previously recites the “post having
`
`… a connector.” So “connecting a head unit to the post with the connector” in
`
`Substitute Claim 21 may require connecting a head unit to the post that has the
`
`connector (“post with the connector”). Alternatively, it may require connecting a
`
`head unit to the post by using the connector. As the limitation is subject to different
`
`interpretations, it is indefinite.
`
`Fourth, in addition to “connecting a head unit to the post with the
`
`connector,” Substitute Claim 21 separately recites
`
`“inserting the head unit into the post to connect the head
`
`unit to the connector.” The ’336 Patent teaches
`
`connecting a head unit to a post by attaching the head
`
`unit to a cable/tether via a connector on the end of the
`
`tether. See, e.g., Ex. 1001, Figs. 1-11. The connecting
`
`step recites connecting the head unit to the post with the
`
`connector. But the inserting step duplicates this limitation, requiring the head unit
`
`to connect to the connector, even though that already must have occurred to
`
`connect the head unit to the post. See Ex parte Heck, 2018 WL 3855133, at *5
`
`- 6 -
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`
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`IPR2018-01218
`Patent 9,664,336
`(PTAB July 26, 2018) (affirming rejection where two method steps appeared
`
`“redundant” of each other); Ex parte Davis, 2011 WL 1730472, at *3 (BPAI May
`
`3, 2011) (raising new rejection for duplicative steps). Claim 21, therefore, should
`
`be rejected for reciting unclear and redundant steps.
`
`It is also unclear whether an alleged infringer performing one step can meet
`
`both of these connecting and inserting limitations or whether two separate steps are
`
`required. For example, assume an accused infringer inserts a head unit into a post,
`
`which causes the head unit to attach to a connector at the end of a tether, and
`
`thereby connect to the post. It is uncertain whether this satisfies both limitations, as
`
`Sennco’s declarant asserts. See Ex. 1019, 124:8-127:2. Alternatively, because there
`
`are two separate method steps, the claim might require connecting to perform the
`
`connecting step, then somehow disconnecting (in an unclaimed step), and then
`
`essentially reconnecting to perform the inserting step. See Ex parte Heck, 2018
`
`WL 3855133, at *5. But there is certainly no written-description support for this.
`
`The ’336 Patent never describes such a process. See generally Ex. 1001.
`
`Fifth, Substitute Claim 21 is invalid because there is no written-description
`
`support for this “inserting the head unit into the post to connect the head unit to the
`
`connector” limitation. In this proceeding, Sennco has consistently, clearly and
`
`unambiguously argued that the post and crown are separate, and that the crown is
`
`not part of the post. See Paper 15, 12-18; Ex. 1019, 149:17-150:6. These
`
`- 7 -
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`IPR2018-01218
`Patent 9,664,336
`statements from Sennco rise to the level of prosecution-history disclaimer. See
`
`Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360-61 (Fed. Cir. 2017)
`
`(disclaimer applies to statements made in IPRs). This disclaimer, however, cannot
`
`save the original claims, because disclaimer “generally only binds the patent
`
`owner”; they don’t bind the Office or MTI. See Tempo Lighting, Inc. v. Tivoli,
`
`LLC, 742 F.3d 973, 978 (Fed. Cir. 2014); see also eBay, Inc. v. XPRT Ventures,
`
`LLC, 2018 WL 2192352, at *1 (PTAB May 9, 2018). And as explained in MTI’s
`
`reply, Sennco’s interpretation is not the broadest reasonable interpretation (and the
`
`original claims are invalid under either proposed construction).
`
`But Sennco’s disclaimers can and should be used against it, as they do bind
`
`the patent owner. See Tempo Lighting, 742 F.3d at 978. Sennco’s disclaimers
`
`regarding the interpretation of the “post” and “crown,” therefore, should be
`
`considered when determining whether to grant or deny the motion to amend. Even
`
`though Sennco’s claim construction is wrong and should be rejected when
`
`considering the invalidity of the original claims, it should be understood as a
`
`disclaimer when considering similar limitations in the proposed amended claims.
`
`See, e.g., Springs Window Fashions LP v. Novo Inds., LP, 323 F.3d 989, 993-96
`
`(Fed. Cir. 2003) (finding disclaimer applies based on arguments made during
`
`prosecution, even where the patent office rejected those arguments). Otherwise, the
`
`Board risks allowing fatally flawed claims that are assured to be found invalid in
`
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`IPR2018-01218
`Patent 9,664,336
`future cases. Under Aylus and Springs Window, there is no doubt that Sennco’s
`
`disclaimers would be binding against it in future litigation and Board proceedings.
`
`Applying Sennco’s repeated assertions that the crown is not the post, the
`
`added limitation to the claims requiring “inserting
`
`the head unit into the post to connect the head unit to
`
`the connector” is not supported by the ’336 Patent’s
`
`specification. The specification of the ’336 Patent
`
`never discloses inserting the head unit into the post.
`
`The ’336 Patent instead teaches inserting the head
`
`unit into the “crown 6” or “cap 32.” The
`
`specification discloses that the “cap 32” has a “recession 90,” which is “sized to
`
`receive the head unit 8….” Ex. 1001, 6:54-59. The cap, in turn, has a “lower side
`
`88,” which is “fastened to the upper end 76 of the crown 6.” Id., 6:48-55. And as
`
`seen in the figures, when the head unit is inserted into the cap’s recession, it
`
`remains above the crown with its “crown magnets 112.” Id., 7:56-61. So while the
`
`specification may support inserting the head unit into the cap, there is no support
`
`for inserting the head unit into the post to connect the head unit to the connector.
`
`Indeed, the only possible support is a sentence in the Summary of the
`
`Invention that states: “In an embodiment, the method has the step of inserting the
`
`head unit into the post to connect the head unit to the connector.” Id., 3:13-15. And
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`IPR2018-01218
`Patent 9,664,336
`the Summary of the Invention also refers to the post as having the recession. Id.,
`
`2:57-58. But nowhere does the specification describe how inserting the head unit
`
`into the post or a recession in the post would connect the head unit to the
`
`connector. Indeed, these sentences from the Summary of the Invention only
`
`confirm MTI’s construction—i.e., the cap and crown can be part of the post. This
`
`is the only way to resolve otherwise inconsistencies in the ’336 Patent, as Sennco’s
`
`expert agreed. See Ex. 1019, 42:18-43:19.
`
`Sennco, however, cannot now use this interpretation for its motion to amend.
`
`Because of its disclaimer, it is barred from arguing the crown and cap are part of
`
`the post. “Prosecution disclaimer precludes patentees from recapturing through
`
`claim interpretation specific meanings disclaimed during prosecution.” Aylus, 856
`
`F.3d at 1359 (internal quotation marks and citation omitted). And Sennco
`
`apparently doesn’t want to use such an interpretation. Its declarant, Mr. Mizek,
`
`specifically testified that to meet this claim limitation, the head unit must insert at
`
`least partially into the post and not just into the cap or crown. See Ex. 1019, 153:2-
`
`158:15. For this reason, the claim is invalid for lack of written-description support.
`
`And at a minimum, because it is unclear whether the crown is part of the post or
`
`not, the claim is invalid for indefiniteness.
`
`Sixth, Substitute Claim 21’s connecting limitation recites “wherein the head
`
`unit attaches to the device.” Similar to the “mounts on the fixture” limitation,
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`IPR2018-01218
`Patent 9,664,336
`discussed above, it is unclear whether a head unit must actually attach to a device
`
`to meet this method step, or if it is met by connecting a head unit to the post,
`
`wherein the head unit is capable of attaching to a device. Indeed, Sennco’s
`
`declarant (allegedly testifying from the perspective of a person of ordinary skill in
`
`the art) was uncertain. See Ex. 1019, 128:18-134:6 (vacillating between
`
`interpreting the claims as reciting merely a capability and an actual required step).
`
`While the MasterMine case might indicate the claim recites only a capability (and
`
`thus the “device” is not required to infringe), the claim goes on to recite “detaching
`
`the connector from the head unit to release the device from the post.” The claim
`
`affirmatively recites the device, and therefore might actually require attachment of
`
`the device to the post. Accordingly, Substitute Claim 21 is indefinite.
`
`Seventh, Substitute Claim 21 recites the following two steps: “inserting a
`
`key into the head unit to allow for removal of the cable from the head unit” and
`
`“detaching the connector from the head unit to release the device from the post.”
`
`Similar to the connecting and inserting limitations discussed above, the “detaching
`
`the connector” step seemingly duplicates the “inserting a key” step, and thus the
`
`claim is indefinite. In the ’336 Patent:
`
`The key 70 may be used to detach the cable 34 from the head unit 8.
`The key 70 may be inserted into the keyhole 60 and/or may be guided
`by the vertical guide walls 82 to ensure the key 70 may contact the
`second end 66 of the spring 62. As a result, the key 70 may deflect the
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`IPR2018-01218
`Patent 9,664,336
`spring 62 in a direction away from the opening
`50. The key 70 may deflect the spring until the
`spring 62 is no longer located in a position
`overlapping the opening 50 and/or in contact
`with the anchor 38 and/or groove.
`
`Ex. 1001, 8:66-9:7. That is, with one action, the key
`
`deflects the spring, causing the anchor (and thus the
`
`cable) to fall out of the head unit.
`
`But it is unclear whether Substitute Claim 21 is covering a method wherein
`
`one action disconnects the cable from the head unit, as explained in the ’336
`
`Patent, or whether it is claiming a method where two actions are required (or
`
`whether it is intended to broadly cover both). On its face, Substitute Claim 21
`
`recites one step wherein a key is inserted to allow for removal of the cable, and a
`
`second step wherein detaching of the connector from the head unit occurs. This is
`
`contrary to Substitute Claim 28 where a one-step process is clearly disclosed—
`
`“inserting a key into a corresponding keyhole in the head unit to move the spring to
`
`detach the cable from the head unit.”
`
`The ’336 Patent never describes a method in which two actions are
`
`performed to disconnect the cable from the head unit. In the specification, inserting
`
`the key doesn’t allow for removal of the cable. Instead, it actually causes removal
`
`of the cable. And inserting the key is not a different step from detaching the
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`IPR2018-01218
`Patent 9,664,336
`connector. The two are inextricably linked, as inserting the key causes the
`
`detachment. This is true in not only the ’336 Patent, but also the ’802 Application
`
`as filed and the ’047 Application from which it claims priority. See Exs. 2011-
`
`2012. Notably, the ’802 Application as filed recites a one-step process. See Ex.
`
`2012, Claim 1 (reciting only “detaching the connector”). Only later in prosecution
`
`did Sennco cause this substantial ambiguity and/or lack of written-description
`
`support by amending the claim to recite a two-step process that includes both
`
`“inserting the key” and separately “detaching the connector.” Accordingly,
`
`Substitute Claim 21 is invalid for indefiniteness and lack of written-description
`
`support. Substitute Claims 22-27 depend from Substitute Claim 21 and are
`
`therefore invalid under §112 for at least the same reasons as Substitute Claim 21.
`
`Because Substitute Claims 21-27 are unclear, ambiguous and subject to
`
`multiple plausible interpretations, they are indefinite. Additionally, these claims
`
`are invalid for lack of written-description support. The Board, therefore, should
`
`deny Sennco’s motion to amend.
`
`2.
`
`Substitute Claims 28-32 are Indefinite and/or Lack Written
`Description
`Substitute Claim 28 is similarly invalid for a variety of independent reasons.
`
`First, the meaning of “attaching a post to the fixture, the post having a crown and
`
`cable” in Substitute Claim 28 is unclear. As discussed for Substitute Claim 21,
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`IPR2018-01218
`Patent 9,664,336
`“having” is typically treated like “comprising” when used in a claim but is
`
`ambiguous when used in a claim to describe the relation of a post to a cable. This
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`limitation perhaps could be interpreted so that the claim redefines the term “post”
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`to be something that includes at least a crown and cable. But a cable and crown on
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`their own certainly aren’t a post, as explained in the ’336 Patent. Or perhaps the
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`limitation means the post includes at least a cable and connector. This, however,
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`conflicts with the specification of the ’336 Patent, in which the cable and connector
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`are separate from the post. And if the limitation is “definitional,” defining a post as
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`a crown and cable, this renders the claim ambiguous. It is, for example, unclear
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`how one could “insert[] the head unit into the post,” as required by Claim 28, if the
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`post is just a crown and cable.
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`To the extent “having” means the cable and crown are within the post, this
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`lacks support. The ’336 Patent doesn’t describe the crown as within the post, as
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`potentially recited in this limitation, added during prosecution. See Ex. 2012. And
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`it would then be unclear whether the crown and cable must be within the post when
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`the post is attached to the fixture. Thus, for these reasons the claim is either
`
`indefinite or lacks written-description support.
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`Second, the claim recites “securing a head unit to the post by the cable
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`through an opening in the head unit.” But this phrase, added during prosecution, is
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`ambiguous. See Ex. 2012. It is not clear what “through an opening in the head
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`- 14 -
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`IPR2018-01218
`Patent 9,664,336
`unit” modifies. From an English perspective, it might modify “securing a head unit
`
`to the post,” such that it reads “securing a head unit to the post … through an
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`opening in the head unit.” To infringe under this interpretation, one must secure the
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`head unit to the post using an opening in the head unit. Alternatively, the clause
`
`might modify “by the cable,” such that it reads “by the cable through an opening in
`
`the head unit.” Under this interpretation, one must secure the head unit to the post
`
`using a “cable through an opening in the head unit.” But this interpretation only
`
`leads to further ambiguity. Perhaps several words are just missing from the claim,
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`and it was intended to read “securing a head unit to the post by the cable, which
`
`extends through an opening in the head unit.” This would logically make sense, but
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`it is improper to rewrite claims in such a manner through claim construction.
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`Instead, it is the patent owner’s responsibility to propose valid claims.
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`Third, after this securing step, the claim further recites “inserting the head
`
`unit into the post to connect the head unit to a connector of the cable.” Similar to as
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`discussed with Substitute Claim 21, the claim appears to redundantly recite both a
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`securing and an inserting step. See Ex parte Heck, 2018 WL 3855133, at *5
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`(affirming rejection where two method steps appeared “redundant” of each other).
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`As disclosed by the specification, a head unit is secured to the post by the cable, by
`
`connecting the head unit the connector (which is attached to the cable). Yet,
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`Substitute Claim 28 recites, after the securing step, inserting the head unit into the
`
`- 15 -
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`
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`IPR2018-01218
`Patent 9,664,336
`post “to connect the head unit to a connector of the cable.” In order for the head
`
`unit to be secured to the post, this must have already occurred. Thus, it is unclear,
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`as discussed above, whether an accused infringer inserting a head unit into a post,
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`which causes the head unit to attach to a connector at the end of a tether and
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`thereby connect to the post, satisfies both the connecting and inserting limitations.
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`Or perhaps because there are two separate method steps, the claim requires
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`connecting the head unit to the post to perform the securing step, then somehow
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`disconnecting (in an unclaimed step), and then essentially reconnecting to perform
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`the inserting step. But again, there is certainly no written-description support for
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`this because the specification never describes such a process. See Ex. 1001.
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`Fourth, as described for Substitute Claim 21, the “inserting the head unit into
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`the post to connect the head unit to a connector of the cable” limitation lacks
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`written-description support in the specification. Moreover, this claim, which recites
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`both a post and crown, is invalid for indefiniteness because it is unclear whether
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`the crown is part of or separate from the post.
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`Fifth, Substitute Claim 28 recites “wherein the PCB wirelessly
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`communicates with an alarm to provide electrical security to the device.” As
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`discussed with Claim 21 above, it is unclear whether this is an actual requirement
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`of the claim (i.e., that the PCB must communicate), or whether the PCB must only
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`have the capability of wirelessly communicating.
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`- 16 -
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`
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`IPR2018-01218
`Patent 9,664,336
`Substitute Claims 29-32 depend from Substitute Claim 28 and are therefore
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`invalid under §112 for at least the same reasons as Substitute Claim 28. Because
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`Claims 28-32 are unclear, ambiguous and subject to multiple plausible
`
`interpretations, they are indefinite. Additionally, they lack written-description
`
`support. The Board, therefore, should deny Sennco’s motion to amend.
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`3.
`
`Substitute Claims 33-39 are Indefinite and/or Lack Written
`Description
`Substitute Claim 33 is also invalid as indefinite for a variety of independent
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`reasons, similar to those described above. First, similar to Substitute Claim 21, it
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`recites “wherein the base mounts to the fixture.” Given the clause is almost
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`identical to that of Claim 21 (except “on” is changed to “to”), it should be
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`construed similarly. Differently, however, Substitute Claim 33 is a system claim,
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`not a method claim. Thus, it is unclear whether the claim recites a method step,
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`improperly mixing statutory classes under IPXL Holdings, LLC v. Amazon.com,
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`Inc., 430 F.3d 1377 (Fed. Cir. 2005), or whether it recites a capability as in the
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`MasterMine case, discussed above.
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`Second, Substitute Claim 33 suffers from the same infirmity with respect to
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`the limitations “wherein the head unit attaches to the device” and “wherein the
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`head unit inserts into the post….” Again, it is unclear whether the head unit must
`
`- 17 -
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`
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`IPR2018-01218
`Patent 9,664,336
`actually attach to a device and insert into a post to infringe, or whether the head
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`unit must only have that capability.
`
`Claim 33 further indicates that it would be improper to construe these
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`limitations as mere capabilities, as in the MasterMine case. The claim has further
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`“wherein” clauses that explicitly recite capabilities. For example, the claim recites
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`“wherein the head unit is removable from the post”—removable meaning capable
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`of being removed. It also recites “wherein … the head unit houses a printed circuit
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`board (‘PCB’) configured to monitor attachment….” These limitations show
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`Sennco knew how to draft claims directed at a capability or with structure
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`configured to (or adapted to) perform functionality where so intended. It didn’t, for
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`example, draft “wherein … the PCB monitors attachment….” It also didn’t recite
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`“the PCB wirelessly communicates with an alarm box,” instead reciting “the PCB
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`is configured for wireless communication….” Unlike the claims in MasterMine,
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`which were drafted using consistent language, the inconsistent language used by
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`Sennco renders the claims indefinite. See 874 F.3d at 1315.
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`Third, Substitute Claim 33 also recites “a head unit connected to the cable.”
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`As described above, the ’336 Patent describes this occurs by connecting the head
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`unit to the cable via the connector that is attached to the cable. Yet, Claim 33 later
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`repeats “wherein the head unit inserts into the post to connect the head unit to a
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`connector of the cable.” It is unclear how a head unit defined as being already
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`- 18 -
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`
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`IPR2018-01218
`Patent 9,664,336
`connected to the cable could then insert into the post to connect the head unit to a
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`connector of the cable. As described with respect to Substitute Claims 21 and 28,
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`these limitations are redundant and duplicative, and leave substantial ambiguity.
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`And the ’336 Patent certainly provides no written-description support for
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`nonsensically inserting a head unit already connected to the cable to connect the
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`head unit to a connector of the cable.
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`Fourth, as described for Substitute Claim 21, the “wherein the head unit
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`inserts int
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