`571-272-7822
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` Paper No. 11
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` Entered: January 23, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QUEST USA CORP.,
`Petitioner,
`
`v.
`
`POPSOCKETS LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01294
`Patent 8,560,031
`____________
`
`
`
`Before CHRISTA P. ZADO, JESSICA C. KAISER, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.4(a);
`Denying Petitioner’s Motion for Joinder or Consolidation
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) or
`35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a)
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`IPR2018-01294
`Patent 8,560,031
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`I. INTRODUCTION
`Petitioner, Quest USA Corp.,1 filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–3 and 6 (“challenged claims”)
`of U.S. Patent No. 8,560,031 B2 (Ex. 1001, “the ’031 patent”). Pet. 7.
`Patent Owner, PopSockets LLC,2 filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314. Under 35 U.S.C. § 314, the
`Board “may not authorize an inter partes review to be instituted unless . . .
`the information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” Upon consideration of
`the Petition and the Preliminary Response, we determine that the
`information presented shows a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of at least one challenged claim of
`the ’031 patent.
`
`
`1 Petitioner identifies itself and Isaac Srour as real parties-in-interest in this
`proceeding pursuant to 37 C.F.R. § 42.8. Pet. 3.
`2 Patent Owner identifies itself as real party-in-interest in this proceeding
`pursuant to 37 C.F.R. § 42.8. Paper 3, 2.
`2
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`IPR2018-01294
`Patent 8,560,031
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`
`The ’031 Patent
`A.
`The ’031 patent, titled “Extending Socket for Portable Media Player,”
`was filed on February 23, 2012. Ex. 1001, at [22]. The ’031 patent claims
`priority to Provisional Application No. 61/453,375, filed March 16, 2011.
`The ’031 patent specification (“Specification”) describes extending
`sockets for attaching to the back of a portable media player or media player
`case. Ex. 1001, at [57]. The Summary of Invention lists a number of
`purposes for the extending sockets, including
`storing headphone cords and preventing the cords from tangling,
`forming stand legs, forming gaming grips, clipping to belts,
`waistbands and shirt pockets, forming legs for wedging [media]
`players that are phones between the shoulder and ear, and
`forming a grip that allows a user to securely hold and manipulate
`the [media] player with one hand.
`
`
`Id. at 1:37–45. Figures 6–11 depict some of these uses of the extending
`sockets.
`With respect to the embodiment depicted in Figures 1 through 3,
`“socket 24 generally comprises a collapsible accordion 2.” Id. at 4:44–45.
`Figure 3A is reproduced below.
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`Id. at Fig. 3A. Figure 3A illustrates a preferred embodiment of accordion 2
`in its expanded configuration. Accordion 2 includes “a folding section 29
`comprising a series of relatively rigid walls 10, 11, and 12 interspersed with
`flexural (or ‘living’) hinges 9, which flex as accordion 2 is collapsed or
`expanded.” Id. at 5:50–53. In this embodiment, “button 1 is attached to the
`distal end of accordion 2.” Id. at 4:46–47.
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`Figure 5 is reproduced below.
`
`
`Figure 5 shows accordion 2 in its collapsed configuration. Id. at 6:7–10. In
`the collapsed configuration illustrated in Figure 5, the “flexing of hinges 9
`allows walls 10 and 11 to fold up in a generally parallel configuration next
`to one another, rather than stacking on top of one another.” Id. at 6:11–13.
`The Specification discloses an alternative accordion structure that
`allows “the buttons to extend not just straight outward from the case, but
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`also to curve away from the outward axis at various oblique angles.” Id. at
`2:7–10. Figure 3B, reproduced below, depicts such a structure.
`
`
`Id. at Fig. 3B. Figure 3B shows folding sections 29A comprising flexible
`membranes including hinges. Id. at 5:57–58. The Specification states that
`the structure in Figure 3A forms a cone that “allows walls 8, 10, 11, 12 to
`fold next to one another (as shown in FIG. 5) rather than stacking on top of
`one another as is the case with the embodiment of [Figure] 3B.” Id. at 5:58–
`63.
`
`Related Cases
`B.
`According to the parties, Patent Owner has asserted the ’031 patent
`
`against Petitioner in the following proceeding: PopSockets LLC v. Quest
`USA Corp., et al., No. 1-17-cv-03653 (E.D.N.Y.) (filed June 16, 2017).
`Pet. 3; Paper 3, 2. Patent Owner contends the ’031 patent has also been
`asserted in the following additional proceedings: PopSockets LLC v. Digital
`Metro USA, Inc. d/b/a Wireless Stop and Akbar Tejani, No. 3-17-cv-02398
`(N.D. Tex.); PopSockets LLC v. GiftekTM LLC, et al., No. 8:17-cv-01825
`(C.D. Cal.); PopSockets LLC v. Craig Hueffner, Individual and d/b/a/
`Absolute Marketing, No. 2-17-cv-00827 (E.D. Wis.); and In the Matter of
`Certain Collapsible Sockets For Mobile Electronic Devices And Components
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`Thereof, Investigation No. 337-TA-1056 (U.S. Int’l Trade Comm’n).
`Paper 3, 2–3. The parties also identify the following request for inter partes
`review of the ’031 patent, filed by Petitioner: IPR2018-00497. Pet. 3;
`Paper 3, 2.
`
`Claims of the ’031 Patent
`C.
`Of the challenged claims, claim 1 is independent, and claims 2, 3, and
`6 depend either directly or indirectly from claim 1. Claim 1 is reproduced
`below (with the same bracketing and lettering used by Petitioner):
`1. A portable media player case for housing a
`portable media player, comprising:
`[a] a case body for housing the portable media
`player; and
`[b] an extendable socket attached to the case body,
`[c] the socket including:
`an accordion forming a tapered shape capable of
`extending outward from the case body generally
`along its [axis] and retracting back toward the case
`body by collapsing generally along its axis, and
`[d] a foot disposed at the distal end of the accordion.
`Ex. 1001, 7:30–39 (brackets and lettering added); Pet. 28–30; see also id. at
`Certificate of Correction (correcting claim 1 as follows, “At Column 7, Line
`37, ‘its and’ should be – its axis and –”).
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`Asserted Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds of unpatentability. Pet. 7.
`Reference(s)
`Ground
`Claims
`§ 102(b)
`1–3 and 6
`§ 103(a)
`3 and 6
`§ 102(e)
`1 and 6
`§ 103(a)
`1–3 and 6
`
`Grinfas3
`Grinfas
`Karmatz4
`Karmatz and Mikol5
`
`
`
`To support its showing, Petitioner relies on the Declaration of Glenn
`E. Vallee, Ph.D. Ex. 1004 (“Vallee Declaration”).
`II. DISCUSSION
`Level of Ordinary Skill in the Art
`A.
`Petitioner, citing the testimony of its declarant, Dr. Vallee, asserts that
`“[t]he prior art references show that a person of ordinary skill in the field, at
`the time the ’031 patent was effectively filed, would have either (1) five
`years or more of experience in mechanical product design, or (2) a
`bachelor’s degree in Mechanical Engineering and one year or more of
`experience in mechanical product design.” Pet. 9 (citing Ex. 1004 ¶ 28).
`Patent Owner does not dispute Petitioner’s assessment of the level of
`ordinary skill in the art. Prelim. Resp. 3.
`
`
`3 UK Patent Application GB 2 316 263 A (published Feb. 18, 1998).
`Ex. 1005 (“Grinfas”).
`4 Petitioner asserts “Karmatz” refers collectively to U.S. Patent Publication
`No. 2012/0042476 A1 (filed Oct. 26, 2010, issued Feb. 23, 2012), Ex. 1006
`(“Karmatz publication”), and U.S. Provisional Application No. 61/375,096,
`Ex. 1007 (“Karmatz provisional”). Pet. 6.
`5 Mikol, U.S. Patent No. 4,927,191 (issued May 22, 1990). Ex. 1009
`(“Mikol”).
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`For purposes of this Decision, and based on the record before us, we
`adopt Petitioner’s assessment of the level of ordinary skill in the art.
`Claim Construction
`B.
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).6
`Consistent with that standard, we assign claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention, in the context of the entire patent disclosure.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Only those terms that are in controversy need be construed, and only to the
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`Petitioner proposes constructions for the terms “socket,” “accordion,”
`“foot,” “flexural hinge,” and “button.” Pet. 20–26. Patent Owner disagrees
`
`
`6 The Office recently changed the claim construction standard used in inter
`partes review proceedings. 37 C.F.R. § 42.100(b) (2018). As stated in the
`Federal Register notice, however, the new rule applies only to petitions filed
`on or after November 13, 2018, and, therefore, does not impact this
`matter. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (stating “[t]his rule is effective on
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date”).
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`with Petitioner’s proposed constructions and proposes its own constructions
`for these terms. Prelim. Resp. 4–23. For purposes of this Decision, we
`determine that no terms require express construction.
`
`Assertions of Unpatentability
`C.
`As indicated above, Petitioner asserts claims 1–3 and 6 are
`
`unpatentable based on the following references. Pet. 7.
`1. Overview of Grinfas (Ex. 1005)
`Grinfas is a UK patent application published on February 18, 1998.
`Ex. 1005, at [43]. Petitioner asserts Grinfas is prior art under 35 U.S.C.
`§ 102(b). Pet. 5–6. Because Grinfas’s publication date is more than one
`year before the filing of the earliest application to which the ’031 patent
`claims priority, we are satisfied for purposes of this Decision that Grinfas is
`prior art under 35 U.S.C. § 102(b).
`Grinfas relates to a collapsible sound conduit for attaching to a
`cellular telephone. Id. at [57]. Grinfas states that a concern had arisen
`regarding the safety of users of portable hand-held cellular telephones,
`namely with regard to radiation emitted by such telephones. Id. at 1:8–11.
`To address such concern, Grinfas discloses a collapsible sound conduit
`placed between the telephone’s earpiece and the user’s ear, for enabling a
`user to maintain the telephone at a spaced distance away from the user’s
`head to reduce radiation exposure while nevertheless maintaining an
`acceptable level of hearing. Id. at 1:17–25. Figure 2 of Grinfas, reproduced
`below, illustrates an example of a collapsible sound conduit. Id. at 4:9–11.
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`Id. at Fig. 2. Figure 2 depicts user 32 with telephone 10. Collapsible
`conduit 30 is shown in an extended state, is between user 32 and
`telephone 10, and “enables a user 32 to space earpiece 20 [of telephone 10]
`from his/her head while nevertheless maintaining an acceptable level of
`hearing.” Id. at 7:24–25. Figure 1 depicts collapsible conduit 30 in a
`collapsed state when the conduit is not in use. Id. at 7:18–20, Fig. 1.
`Grinfas discloses that the collapsible sound conduit can be “attached
`to either the telephone or the carrying case,” by bonding or fastening. Id. at
`1:28–2:3. Bonding may be achieved with adhesive or adhesive pad 46, as
`illustrated in Figure 3. Id. at 8:6–9, Fig. 3. Fastening may be achieved with
`straps 54, as shown in Figures 4A–B. Id. at 8:10–17, Figs. 4A–B.
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`Grinfas discloses various embodiments of a collapsible sound conduit.
`“In a first embodiment, the collapsible sound conduit includes a plurality of
`telescoping sections.” Id. at 2:7–8. “In a second embodiment, the
`collapsible sound conduit includes a resilient portion which is collapsible
`and foldable into itself,” and may “further include a plurality of stiffeners”
`that may include ribs arranged to define an acoustical path and which may
`be adapted to limit collapsing of the conduit beyond a predetermined
`position. Id. at 2:12–19. “In a third embodiment, the collapsible sound
`conduit includes a bellows” that “may have a surface which is tiltable about
`a pivot.” Id. at 2:20–22. “In a fourth embodiment, the collapsible sound
`conduit includes a conduit pivotable about a pivot.” Id. at 2:23–24.
`2. Overview of Karmatz (collectively Ex. 1006 and Ex. 1007)
`The Karmatz publication is a published U.S. patent application filed
`on October 26, 2010 and published on February 23, 2012. Ex. 1006, at [22],
`[43]. The Karmatz publication claims priority to the Karmatz provisional
`filed on August 19, 2010. Id. at [60]; see also Ex. 1007. Petitioner asserts
`Karmatz is prior art under 35 U.S.C. § 102(e). Pet. 6. Because the filing
`date of the Karmatz publication is prior to the filing of the earliest
`application to which the ’031 patent claims priority, March 16, 2011, we are
`satisfied for purposes of this Decision that the Karmatz publication is prior
`art under 35 U.S.C. § 102(e).
`Karmatz relates to an “apparatus for gripping a handheld device.”
`Ex. 1006, Abstract, ¶ 3. Karmatz states that the “use of handheld electronic
`devices such as Personal Digital Assistants (PDAs) and smartphones, has
`increased significantly.” Id. ¶ 5. According to Karmatz, the use of large
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`touch-screen displays on such devices, “although allowing a user to easily
`access a large touch screen, may create difficulty for users to securely grip
`these devices with a single hand, which results in users frequently dropping
`and damaging their devices.” Id. ¶¶ 5–6. To address the issue of securely
`gripping these devices, Karmatz discloses “a finger grip apparatus for a
`handheld device.” Id. ¶ 11.
`Figure 1 of Karmatz, reproduced below, illustrates “a conventional
`hand-held device gripped by a user’s hand.” Id. ¶ 14, Figs. 1A–B.
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`Id. at Figs. 1A–B. Figures 1A–B depict handheld device 10 being gripped
`by a user’s hand, and in particular, depict with a dotted line the range of
`motion of the user’s thumb on device 10’s touch screen. Id. ¶ 8. “In order
`to reach other areas of the front surface of the handheld device 10 with the
`user’s thumb, a user must either reposition the device with a similar grip . . .
`or a user must use a relaxed grip.” Id. ¶ 9. “In either case, a user must grip
`the handheld device 10 less securely and/or shift the handheld device 100
`with respect to the user’s hand, in order for a user to access an entire range
`of the front surface [] of the device with the user’s thumb.” Id. “Therefore,
`there is a need for an apparatus for securely holding devices [] with a single
`hand while allowing greater range of movement of a user’s fingers while
`holding the device.” Id. ¶ 10.
`Figure 3 of Karmatz illustrates “a grip device having a base integrated
`into a sleeve of a handheld device,” and Figure 4 illustrates another
`embodiment of a grip device that “allows a user to rest fingertips along the
`back of the handheld device 140 instead of wrapping fingers around an
`entire back of the handheld device 140.” Id. ¶¶ 16, 27, Figs. 3–4. Figure 4
`is reproduced below.
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`Ex. 1006, Fig. 4. Figure 4 depicts handheld device 140 with grip 130
`attached thereto. Id. When device 140 “is a touch-screen device, the finger
`grip apparatus allows a user to rest fingertips along the back of the handheld
`device 140 instead of wrapping fingers around an entire back of the
`handheld device 140.” Id. ¶ 27. The positioning shown in Figure 4 “allows
`a user’s thumb to more easily reach an entire range of a touch screen,
`thereby allowing a user to more easily operate a touch-screen device with a
`single hand.” Id. Figures 4–25 of Karmatz illustrate embodiments of
`various grip devices.
`3. Overview of Mikol (Ex. 1009)
`Petitioner asserts Mikol is prior art under 35 U.S.C. § 102(b). Pet. 7.
`
`Mikol issued as a patent on May 22, 1990 (Ex. 1009, at [45]), more than one
`year prior to the earliest possible priority date of the ’031 patent claims.
`Therefore, Mikol is prior art under 35 U.S.C. § 102(b).
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`
`Mikol generally relates to “an adjustable tubular wall structure for
`tubular connectors, conduits, containers, and the like, and more particularly,
`to a pleated tubular body that is extensible [and] [] contractible . . . both
`longitudinally and laterally . . . and [] may be angled relative to its central
`axis” for accommodating a connection between out of alignment discharge
`and intake ports, for example in the field of plumbing and installation of
`drain systems. Ex. 1009, 1:7–17, 7:45–46. Mikol relates also to “an
`adjustable, non-cylindrical wall structure, particularly designed for
`containers,” which is extensible and contractible, both longitudinally and
`laterally, may be angled relative to its central axis, may be contracted into a
`“nested” configuration, and is “particularly well adapted to serve as a
`pouring spout or other adjustable spout.” Id. at 1:18–27.
`4. Asserted Anticipation by Grinfas
`As we discussed above, Petitioner asserts claims 1–3 and 6 are
`unpatentable as anticipated by Grinfas. Pet. 27–39. Patent Owner responds
`that Grinfas does not anticipate these claims. Prelim. Resp. 23–28. For the
`foregoing reasons, we determine Petitioner has demonstrated a reasonable
`likelihood that at least one claim of the ’031 patent is unpatentable as
`anticipated by Grinfas.
`
`a. Claim 1
`The preamble of claim 1 recites “[a] portable media player case for
`housing a portable media player, comprising.” For disclosure of a portable
`media player, Petitioner relies on Grinfas’s cellular telephone 70, and relies
`on carrying case 71 for disclosure of a portable media player case for
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`housing the portable media player. Pet. 27. Patent Owner does not dispute
`that Grinfas discloses the preamble of claim 1.
`For limitation 1[a], which recites “a case body for housing the
`portable media player,” Petitioner asserts carrying case 71 includes a case
`body for housing cellular telephone 70, as depicted in Figure 6 of Grinfas.
`Id. at 28. Patent Owner does not dispute that Grinfas discloses this claim
`limitation.
`For limitation 1[b], which recites “an extendable socket attached to
`the case body,” Petitioner relies on Grinfas’s disclosure of collapsible
`conduit 72 attached to carrying case 71. Id. at 28–29. For the requirement
`that the socket be attached to the case body, Petitioner relies on disclosure
`that collapsible conduit 72 “may be integrally formed with carrying
`case 71.” Id. at 29 (quoting Ex. 1005, 9:2–3). Petitioner relies also on
`disclosure that the conduit may alternatively “be manufactured separately for
`later attachment thereto, such as by bonding, either by a manufacturer or a
`user.” Id. (quoting Ex. 1005, 9:3–5 and citing id. at 1:26–2:6, 8:3–17).
`Patent Owner does not dispute that Grinfas discloses this claim limitation.
`Limitation 1[c] recites that the socket includes “an accordion forming
`a tapered shape capable of extending outward from the case body generally
`along its [axis] and retracting back toward the case body by collapsing
`generally along its axis.” Petitioner relies on the collapsible conduit
`embodiment of Figures 7A–B of Grinfas, reproduced below. Pet. 29–30.
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`Ex. 1005, Figs. 7A–B. Figure 7A illustrates collapsible conduit 80 in an
`extended configuration, and Figure 7B illustrates the collapsed
`configuration. Id. at 9:9–12. Conduit 80 comprises resilient portions 82
`interspersed with recesses 84. Id. at 9:15, 9:22. Resilient portions 82 are
`made of “any elastometric material . . . with a suitable durometer” so that
`conduit 80 “has sufficient stiffness or hardness when fully extended.” Id. at
`9:13–18. Recesses 84 “increase the foldability of collapsible sound
`conduit 80.” Id. at 9:21–23. Petitioner argues that Grinfas discloses that
`conduit 80 is an accordion having a tapered shape capable of extending and
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`retracting by collapsing generally along its axis, as recited in claim 1.
`Pet. 29–30.
`There is no dispute that conduit 80 has a tapered shape and is capable
`of extending and retracting along its axis. See, e.g., Prelim. Resp. 24–25
`(Grinfas “has an ‘extended state when in use,’” and “a ‘collapsed state when
`not in use,’” and “Figs. 7A and 7B (relied on in the Petition) depict
`‘respective extended and collapsed states’ of an embodiment of the sound
`conduit 80”) (citing Ex. 1005, Abstract, 1:18–19, 5:4–7, 9:9–10:7, Figs. 7A–
`B). Patent Owner disputes, however, whether conduit 80 is an accordion.
`Id. at 25 (“Grinfas, and in particular Figs. 7A and 7B, fails to disclose an
`accordion.”).
`The ’031 Specification states that the disclosed sockets “include
`extending elements, called ‘accordions,’ comprising cylindrical or conical
`membranes with flexural hinges having feet at their distal ends.” Ex. 1001,
`1:45–48. Figures 3A–B illustrate “a preferred embodiment of accordion 2 in
`detail.” Id. at 5:48–50. The Specification states that accordion 2 “includes a
`folding section 29 comprising a series of relatively rigid walls 10, 11, 12
`interspersed with flexural (or ‘living’) hinges 9, which flex as accordion 2 is
`collapsed or expanded.” Id. at 5:50–53. Figure 5 depicts accordion 2 in a
`collapsed configuration. Id. at 6:7–31, Fig. 5. In the collapsed configuration
`shown in Figure 5, flexing of hinges 9 allows walls 10 and 11 to fold up
`generally in parallel to each other, rather than stacking on top of one another.
`Id. at 6:7–31, Fig. 5. Based on the Specification, we determine on the
`preliminary record that the term “accordion” includes structures that have
`flexural hinges. We find sufficient evidence for purposes of institution that,
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`as disclosed in Grinfas, recesses 84 (shown in Figure 7A) form flexural
`hinges that flex and fold, thus facilitating the retracted conduit configuration
`depicted in Grinfas’s Figure 7B. Ex. 1005, Figs. 7A, 7B. We are persuaded
`Petitioner has made a sufficient showing, at this stage of the proceeding,
`with regard to this claim limitation.
`Patent Owner argues that an accordion, properly construed, is “a
`structure with pleated folds so as to collapse like the bellows of a musical
`accordion.” Prelim. Resp. 10. Patent Owner argues “pleated folds are not
`merely a feature that accordions have in some configuration(s), but rather
`the mechanism by which accordions collapse.” Id. at 25. According to
`Patent Owner, because the collapsible conduit depicted in Figures 7A–B of
`Grinfas does not include pleated folds in the extended configuration, the
`conduit is not an accordion. Id. Patent Owner asserts Grinfas is “silent as to
`how the structure collapses.” Id. at 26. Patent Owner acknowledges
`recesses 84 increase foldability of collapsible conduit 80, but states,
`“[w]hatever mechanism the structure of Figs. 7A and 7B is supposed to
`employ for collapse, it is not pleated folds, and it is therefore not an
`accordion.” Id.
`We find Grinfas provides more information regarding how conduit 80
`collapses than is indicated by Patent Owner’s arguments. Figure 7B,
`illustrating conduit 80 in a collapsed state, depicts folds occurring at
`recesses 84. Ex. 1005, Figs. 7A, 7B. Figures 7A–B, combined with
`Grinfas’s disclosure that resilient portions 82 may include stiffeners or
`stiffening material to achieve sufficient stiffness when fully extended and
`with the disclosure that recesses 84 increase the foldability of collapsible
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`conduit 80 (id. at 9:15–23), provide sufficient disclosure of how conduit 80
`collapses for purposes of this stage of the proceeding.
`Regarding construction of the term “accordion,” on the current record,
`we do not find that the term precludes the structure illustrated in Figure 7A
`of Grinfas. Patent Owner’s proposal of limiting “accordion” to requiring
`“pleated folds so as to collapse like the bellows of a musical accordion” is
`not sufficiently supported by the intrinsic evidence. On the current record,
`we are not persuaded that the Specification or file history limit the claimed
`accordion to a structure that collapses like the bellows of a musical
`accordion.
`Limitation 1[d] recites “a foot disposed at the distal end of the
`accordion.” In the embodiments of the ’031 Specification, the distal end of
`the accordion is the end opposite the end with the securing element. See
`Ex. 1001, 4:47–48, Fig. 1 (describing button 1 attached at the distal end of
`the accordion). As an example of a foot, the Specification discloses “buttons
`may snap onto the ends of the accordions, be glued on, or be feet integrally
`formed with the accordions.” Id. at 2:10–12. Petitioner argues that if the
`term “foot” is interpreted to mean the distal end of the accordion, the distal
`end of conduit 82 in Grinfas discloses a “foot.” Pet. 30–31. Petitioner
`argues that if “foot” must be a structure separate from the accordion,
`Grinfas’s user listening portion 88 at the end of conduit 82 discloses a foot.
`Id. at 31. Patent Owner does not dispute that Grinfas discloses this claim
`limitation.
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`For the foregoing reasons, we are persuaded Petitioner has
`demonstrated a reasonable likelihood it would prevail in showing that
`claim 1 is anticipated by Grinfas.
`b. Claim 2
`Claim 2 depends from claim 1, and further recites “[t]he case of claim
`1 wherein the accordion comprises rigid walls interspersed with flexural
`hinges.” Ex. 1001, 7:40–41. Petitioner relies on resilient portions 82 having
`resilient portions 82 and recesses 84 for disclosure of rigid walls interspersed
`with flexural hinges. Pet. 31–32. We agree with Petitioner on the current
`record that Grinfas’s resilient portions 82 are interspersed with recessed
`portions 84, as illustrated in Figure 7A. Ex. 1005, Fig. 7A. Patent Owner
`raises the same arguments for claim 2 that it raises for claim 1. Prelim.
`Resp. 23–28.
`
`c. Claim 3
`Claim 3 depends from claim 2 and further recites “[t]he case of
`claim 3 wherein the tapered shape comprises a cone shape constructed and
`arranged such that the walls fold generally parallel to the axis of the
`accordion when the accordion is collapsed.” Ex. 1001, 7:42–45. For this
`claim, Petitioner relies on Figure 7 of Grinfas. Pet. 32–33 (citing Ex. 1005,
`Fig. 7B; Ex. 1004 ¶ 70). Dr. Vallee acknowledges that “Grinfas does not
`expressly disclose whether the embodiment disclosed in Figures 7A and 7B
`(shown in cross-section only) has a square base or a circular base.”
`Ex. 1004 ¶ 70. He states, nonetheless, that it is reasonable to infer that it has
`any of the bases shown in Figures 2–6 (square) or Figures 9–12 (circular).
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`Id. Dr. Vallee further testifies that in a commercial context, the term “cone”
`includes “tapered shapes having a square base, such as a traffic cone.” Id.
`Patent Owner does not raise any arguments in its Preliminary
`Response directed to the “cone shape” requirement of claim 3 as to this
`ground. At this stage of the proceeding, we note that Petitioner’s
`contentions, and Dr. Vallee’s testimony, do not persuade us that Grinfas
`discloses a circular base in connection with the Figure 7 embodiment.
`Figure 7 depicts a particular structure comprising resilient portions 82
`interspersed with recessed portions 84 to increase foldability. Ex. 1005,
`9:13–23. In contrast, Figures 9–12 (which depict circular bases) are
`described as using telescoping sections as a means of collapsing the conduit.
`Id. at 10:23–11:22. Petitioner, and Dr. Vallee, do not explain sufficiently
`why one would have inferred that the structure illustrated in Figure 7 of
`Grinfas, which relies on thinner and thicker wall portions to collapse, would
`have had a circular base like the embodiments illustrated in Figures 9–12. In
`addition, Dr. Vallee’s testimony that a cone may have a square base, such as
`a traffic cone, is unavailing because the conduit in Figures 2–6 (having a
`square base) has square shaped cross sections throughout the conduit, unlike
`a traffic cone whose body has circular-shaped cross-sections.
`d. Claim 6
`Claim 6 depends from claim 1, and further recites “[t]he case of
`claim 1 further comprising a button attached to the foot, the button formed
`of a rigid material and extending radially past the foot.” Ex. 1001, 7:53–55.
`Patent Owner raises the same arguments for claim 6 that it raises for claim 1.
`Prelim. Resp. 23–28.
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`5. Asserted Obviousness Over Grinfas
`Petitioner asserts that claims 3 and 6 are unpatentable as obvious over
`Grinfas. Pet. 39–42. Patent Owner responds that claims 3 and 6 are not
`obvious in view of Grinfas because Grinfas does not disclose an accordion
`forming a tapered shape, and Petitioner does not argue that it would have
`been obvious to substitute the collapsible conduit in Grinfas with such an
`accordion. Prelim. Resp. 28–29. Above, we addressed the parties’
`arguments regarding disclosure in Grinfas of an accordion. With regard to
`claim 3, Patent Owner also argues that a “cone shape” requires a circular
`base, and Petitioner has not shown that it would have been obvious to
`modify the embodiment in Figure 7 of Grinfas to have a circular base. Id. at
`29. We note that Patent Owner does not address Dr. Vallee’s example of a
`traffic cone, which may have a square base (Ex. 1004 ¶ 70).
`6. Asserted Anticipation by Karmatz
`Petitioner asserts claims 1 and 6 of the ’031 patent are unpatentable
`under 35 U.S.C. § 102(e) as anticipated by Karmatz. Pet. 42–55.
`We are not persuaded Petitioner has shown Karmatz discloses “an
`accordion forming a tapered shape,” as recited in claim 1. Ex. 1001, 7:35
`(emphasis added). With regard to this recitation, Petitioner states only that
`“Karmatz discloses various extensions 120, including one extension 120
`shown in Figure 20 of the Karmatz publication that is an accordion forming
`a tapered shape.” Pet. 45. Petitioner cites paragraphs 29 and 43 and
`Figure 20 of the Karmatz publication, and to page 6 of the Karmatz
`provisional. Id. (citing Ex. 1006 ¶¶ 29, 43, Fig. 20; Ex. 1007, 6). The cited
`portions of the Karmatz publication disclose extension 120, asserted by
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`Petitioner to be an accordion, as being “a single piece or a series of
`telescopic pieces 124 that expand/collapse together as the grip device moves
`from the open to the closed position.” Ex. 1006 ¶ 43. This description is
`consistent with Figure 20, which depicts telescoping structure 120. Page 6
`of the Karmatz provisional similarly describes a telescoping structure.
`Ex. 1007, 6. Petitioner offers no explanation as to why a telescoping
`structure with annular pieces that slide over one another would have been
`considered an “accordion,” as recited in claim 1. Dr. Vallee’s testimony,
`upon which Petitioner relies, adds nothing to Petit