`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 38
`
`RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. and AUGUST HOME, INC.,
`Petitioner,
`
`v.
`
`MARK W. KILBOURNE,
`Patent Owner.
`____________
`
`IPR 2019-00233
`Patent 7,373,795 B2
`____________
`
`Oral Hearing Held: January 30, 2020
`____________
`
`Before GEORGE R. HOSKINS, RICHARD H. MARSCHALL, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOSEPH A. HYNDS, ESQUIRE
`JENNIFER P. NOCK, ESQUIRE
`ERIC D. BLATT, ESQUIRE
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, NW, Suite 800
`Washington, D.C. 20005
`202-783-6040
`jhynds@rfem.com; jnock@rfem.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ROBERT J. McAUGHAN, JR., ESQUIRE
`ALBERT B. DEAVER, ESQUIRE
`CHRISTOPHER M. LONVICK, ESQUIRE
`McAughan Deaver, PLLC
`bmcaughan@md-iplaw.com
`adeaver@md-iplaw.com
`clonvick@md-iplaw.com
`
`ALSO PRESENT:
`
`MATT CLEMENTS
`Apple Inc.
`
`PAGE HESLIN
`Assa Abloy
`
`
`The above-entitled matter came on for hearing on Thursday,
`
`January 30, 2020, commencing at 1:30 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`2
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE HOSKINS: Good afternoon, everyone. We're here today to
`
`receive oral argument in Inter Partes Review Number 2019-00233, the
`challenged patent here is U.S. Patent Number 7,373,795. Our Petitioner
`today is Apple Inc., and August Home, Inc. And our Patent Owner is Mark
`W. Kilbourne, who also happens to be the solely-named inventor on the
`challenged 795 Patent.
`So, with that let me ask Counsel to make their entries today, and also
`make whatever other introductions of the people in the hearing room, they
`care to make. And we'll start with Counsel for Petitioner, please.
`MR. HYNDS: Good afternoon, Your Honors. My name is Joe
`Hynds, I'm with the Rothwell Figg Firm, and I'm representing Petitioners
`Apple and Assa Abloy. With me here today is Jen Nock from the Rothwell,
`Figg firm, and also here today is Matt Clements from Apple, and Page
`Heslin from Assa Abloy.
`JUDGE HOSKINS: Thank you, and welcome.
`MR. HYNDS: Thank you.
`JUDGE HOSKINS: And Counsel for Patent Owner?
`MR. McAUGHAN: Yes, Your Honors. Thank you. My name is Bob
`McAughan, I'm with McAughan Deaver in Houston Texas, and I represent
`Mr. Mark Kilbourne, the Patent Owner.
`JUDGE HOSKINS: Thank you. And welcome, Mr. McAughan. I
`forgot to introduce you to your panelists today. So, my name is George
`Hoskins. Obviously, I'm participating remotely. My colleagues there in the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`3
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`room are Judge Richard Marschall, he's in the center chair; and Judge Jason
`Melvin, to Judge Marschall's left.
`Before we turn to argument, I want to raise just one preliminary issue,
`so that we all understand what's in play. This is Patent Owner's motion to
`exclude where the Patent Owner identified a number of arguments and
`evidence raised in the Petitioner's reply, that in the Patent Owner's view
`exceeds the proper scope of reply. The Patent Owner has withdrawn the
`motion, but asked us to nonetheless consider the merits of whether the
`challenged subject matter is a proper scope for reply.
`Given that the issue has been briefed fully, and there's no time issue
`here, we are going to go ahead and consider that issue of whether Petitioner's
`reply is or is not within the scope of our rules of proper reply to the Patent
`Owner's response. So, feel free to argue it. Petitioner, if you want to
`address it, feel free to address it; and Patent Owner, if you want to address it
`feel free to address it. It's still a live issue. Are there any questions on that
`front?
`MR. HYNDS: I have no questions on that front, Your Honor.
`MR. McAUGHAN: No, Your Honor.
`JUDGE HOSKINS: Okay. Thank you. So, under the trial hearing
`order, each side has 60 minutes, Petitioner, Mr. Hynds, you can reserve time
`if you want. And do you want to reserve time for rebuttal?
`MR. HYNDS: Yes, Your Honor. I'd like to reserve 20 minutes for
`rebuttal.
`JUDGE HOSKINS: Okay. My colleague, Judge Marschall, is going
`to keep time there for you in the room. I think there's a clock, where you
`can kind of keep track on where you are. And just one final reminder before
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`4
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`we begin, please, when you're using your demonstrative exhibits and the
`slides, please try to refer to the slide number when you turn to a particular
`slide. It helps clear up the record, and it helps me to follow, because I'm
`working off of the computer screen, and it's different than the projection
`screen there in the room.
`So, with those preliminary remarks, let me just make sure there are no
`kind of procedural questions, before we turn to arguments. So, Mr. Hynds?
`MR. HYNDS: The only procedural issue I have, Your Honors, I have
`some paper copies of the slides, if I can hand them up, and how many copies
`would you guys --
`JUDGE HOSKINS: That will be great, thank you. Yeah.
`Mr. McAughan, do you have any questions before we start argument?
`MR. McAUGHAN: No, Your Honor.
`JUDGE HOSKINS: Okay. Thank you very much. So, Mr. Hynds,
`feel free to proceed when you're ready.
`MR. HYNDS: Okay. Good afternoon again, Your Honors. This IPR
`was instituted on two grounds. The first ground relates to claims 11 through
`15 and 17 of the 795 Patent, and the second ground relates to dependent
`claim 16. And both of these grounds are based on the combination of Padiak
`and Anderson, and I'm referring to slide 2.
`Before I jump into the issues, I just wanted to do a brief overview of
`the challenged 795 Patent and the Padiak and Anderson references. So, I'm
`going to refer to slide number 3, which has several figures of the 795 Patent.
`The 795 Patent is directed to an electronic deadbolt adaptor that can
`be attached to a preexisting deadbolt. The splined stem which is shown in
`purple, attaches on one end to the tail piece of a preexisting deadbolt lock,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`5
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`and the other end communicates with the knob gear, which is colored in blue
`there, so that the motor can turn the splined stem to lock and unlock the
`door.
`Different deadbolt manufacturers use different shaped tail pieces, so
`in order to work with a different manufacturer deadbolts, the splined stem is
`capable of engaging these different shaped tail pieces. And as you can see
`there on Figure 6C, there are different shaped tail pieces and that splined
`stem is reversible.
`So, I'm turning now to slide 4, and these are Figures from the Padiak
`reference. So, like the 795 Patent, Padiak teaches an electronic actuator
`system that is retrofitted to an existing deadbolt lock, Padiak teaches an
`adaptor 880 that fits over the tail piece of a preexisting deadbolt lock, and
`the other end of the adaptor which is colored in purple, slides into the lever
`assembly, and in particular a bore 894, which is colored in aqua, and that
`lever assembly is indisputably housed within that deadbolt activating
`system. So, in operation, we have rotation of the lever assembly, it rotates
`the adaptor, which rotates the deadbolt, which causes the door to lock and
`unlock.
`As shown here on slide 5, we have Anderson which teaches a
`reversible screwdriver bit to accommodate different shaped screws, and as
`we established in the Petition, it was obvious to a person of skill in the art to
`make Padiak's adaptor reversible just like the reversible screwdriver bit
`shown in Anderson.
`So there are very few issues here remaining in this IPR, Your Honors.
`And I'm on slide 6 right now. The Patent Owner doesn’t dispute that it
`would have been obvious to modify Padiak's adaptor to be a reversible
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`6
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`elongated member in view of Anderson. And the Patent Owner also does
`not dispute that a person of ordinary skill in the art would have been
`motivated to combine Padiak and Anderson, and with a reasonable
`expectation of success in doing so.
`So, also not at issue here, Your Honors, are the arguments for
`patentability raised in the preliminary response, and I'm referring to slide 7.
`Those arguments were properly rejected in the institution decision, the
`Patent Owner did not renew these arguments in its Patent Owner response.
`And they are now waived.
`So, let's get to the disputed issues, and I'm turning to slide 8.
`Regarding independent claim 11, the only disputed issue here is whether
`Padiak teaches housing said reversible elongated member in a deadbolt
`activating system. As to the other elements of claim 11, we've demonstrated
`in the petition that these elements are met. The institution decision found
`our showing sufficient for institution, and the Patent Owner does not dispute
`these conclusions.
`Regarding challenged claims 12 through 17, here again, the Patent
`Owner disputes Petitioner's demonstration of obviousness only as to claim
`14. It's undisputed that claims 12, and 13, and 15, and 17, do not contribute
`to patentability, so with respect to claim 14, the only remaining issue is
`whether Padiak teaches comprising composing the deadbolt activating
`system of a gear carriage, a motor and battery carriage, and a gear base.
`So, let's turn to claim 11. And I'm referring to slide 11, Your Honors.
`So again, the dispute here is whether Padiak teaches housing said reversible
`elongated member in a deadbolt activating system, and we've established in
`the petition that it does.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`7
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`So turning to slide 12, the petition clearly demonstrates that applying
`the ordinary meaning of housing, Padiak's adaptor is housed within a
`deadbolt activating system. So, if we look at Figure 22 of the Padiak which
`is shown in slide 12, this shows that the adaptor 880 fits snugly into the bore
`894 of the lever assembly and in this configuration, the lever assembly is
`clearly inside the deadbolt activating system. So the reversible elongated
`member --
`JUDGE HOSKINS: Mr. Hynds?
`MR. HYNDS: Sure. Yes?
`JUDGE HOSKINS: When you say clearly, why clearly? This is an
`exploded view shown here in Figure 22, what is it that tells us that when it's
`-- when all these parts are put together, the part that is colored aqua is inside
`of the box, that then is formed by the cover on the base plate?
`MR. HYNDS: Well, Your Honor, I think it can be shown, and I know
`this is an exploded view, but put together I think it can be fairly inferred that
`it is inside, and I also think, Your Honor, that the Padiak reference itself says
`that it's inside. Okay. So, it says that in one of the ways, in that it is
`attached to the door, it says you're putting the adaptor inside of the combined
`deadbolt activating system.
`So I think, Your Honor, if you look at the figures themselves, and at
`the words of Padiak, himself, I think it's clear that, you know, there is at
`least a portion of that adaptor that sits inside that lever assembly, inside that
`894 which is housed inside that deadbolt activating system.
`JUDGE HOSKINS: I guess it is Padiak column 17 line 48. Is that
`right?
`MR. HYNDS: Yes, Your Honor.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`8
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`JUDGE HOSKINS: Okay. Thank you.
`MR. HYNDS: And also just the testimony from our expert Dr. Pratt
`as well, and also I would say, Your Honor, that I don't even think this is in
`dispute, I think that the Patent Owner has even admitted that there's at least a
`portion of that adaptor which fits into -- which is housed inside of that
`deadbolt activating system, and I would refer to the Patent Owner response
`bridging pages 1 and 2. So, I think there's a lot of evidence of record, Your
`Honor, admissions by the Patent Owner, the expert, and just the document
`itself, Padiak itself.
`JUDGE HOSKINS: Thank you. And you also take a position that
`regardless of the position of the adaptor with respect to the box, that the
`adaptor is also in the lever, so if the adaptor doesn’t extend inside of the box,
`we still have the adaptor and the lever, and the lever is part of the deadbolt
`activating system. Do I have that correct?
`MR. HYNDS: Exactly Your Honor.
`JUDGE HOSKINS: Okay. Thank you.
`MR. HYNDS: But we think it's clear and undisputed actually that it is
`inside. So, the reversible elongated member is positioned in and received in
`this deadbolt activating system and thus housed in this deadbolt activating
`system. Now, Patent Owner responds to this evidence by introducing a new,
`narrow claim construction for the term "housing".
`And referring to slide 13, the Patent Owner argues for the first time, in
`the Patent Owner's response, that housing requires that the reversible
`elongated member be positioned in the deadbolt activating system, such that
`it is enclosed in the deadbolt activating system and cannot be withdrawn
`without opening the housing.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`9
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`Now Petitioners dispute this construction, the plain meaning of
`housing doesn’t require that the housed object be constrained in its egress
`from the housing, or does it require that the reversible elongated member
`cannot be withdrawn without opening the housing. Now, the Patent Owner
`really fails to provide any evidence whatsoever, that this narrow construction
`is the broadest reasonable interpretation if it were housed in the context of
`the 795 Patent.
`And when we look at the intrinsic evidence, Your Honors, I think it's
`very clear that this construction is plainly incorrect. So, let's first look at the
`specification. Now, the Patent Owner cites four passages from the
`specification in support of this construction, but each of them is irrelevant.
`Not one of them says anything whatsoever, about constraining the splined
`stem within the deadbolt activating system, or requiring the opening of the
`housing to remove the reversible elongated member.
`The Patent Owner also relies on Figure 3, and I'm turning to slide 15,
`they rely on Figure 3 to support its construction of housing but that didn’t
`help either. Patent Owner argues that in Figure 3, it shows a splined stem
`that is constrained within the housing. The Patent Owner argues that
`because the splined section is allegedly wider than the opening in the
`template unit, that this allegedly constrains the splined stem so that it can't
`be removed without first opening the housing.
`But there are several problems with this argument, number one,
`Figure 3 doesn’t explicitly illustrate an opening in the template unit 13, and
`the size of any opening in the template unit 13, relative to the size of the
`splined stem, just as an illustrated or described anywhere in the 795 Patent,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`10
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`and I've also pointed out, Your Honors, that you can't infer dimensions from
`these patent drawings as we know.
`But most importantly, Your Honors, the Patent Owner -- and I'm
`referring to slide 17 -- the Patent Owner entirely ignores the preferred
`embodiment of the splined stem, and that is illustrated in Figure 6C, this is
`the only embodiment described in the 795 Patent as being reversible, which
`is required by claim 11. And critically this splined stem illustrated in Figure
`6C, has a uniform cross-sectional diameter, it has no shoulder, it doesn’t
`have any other structure that would constrain it in the housing.
`Now this preferred embodiment is directly contrary to the Patent
`Owner's claim construction, because there is just no structure that can even
`arguably be present to constrain this reversible elongated member in that
`housing.
`And importantly, Your Honors, the Patent Owner just completely
`ignores this embodiment. They ignored it in the Patent Owner response
`when they made this narrow construction in the first place. They ignored in
`the sur-reply, and this is after we went to great lengths in our Patent Owner -
`- in our reply, the Petitioner's reply, explaining why this Figure 6C
`embodiment is inconsistent with their narrowing claim construction.
`The fact is, Your Honor, that this, Figure 6C embodiment is
`inconsistent with Patent Owner's narrow claim construction, and the Patent
`Owner makes no attempt to address it. And as we're all aware Your Honors,
`a claim interpretation that excludes the preferred embodiment from the
`scope of the claim is rarely if ever correct, and that's certainly the case here.
`I want to go back, now that we've had a chance to look at the
`reversible elongated member in Figure 6C, which is the preferred
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`11
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`embodiment, I want to go back and compare this to the splined stem 4 in
`Figure 3, and I'm on slide 18. If the splined stem in Figure 3 -- as reflected
`in Figure 3, if that is indeed reversible, it needs to have a matching splined
`section on the other end of stem 4. It has to have that because when it's
`reversed it has to have something which engages the motor.
`So this splined stem would look something like a dumbbell, it would
`have, kind of have like a pin here, Your Honors, with two caps on the end.
`It has to have something on each end to engage the motor. If that's the case,
`Your Honors, then this splined stem if it's reversible, it has to go through a
`hole in template 13, or otherwise it would just be stuck. Okay?
`So, we would submit that even Figure 3 construed as being reversible,
`as the Patent Owner says it must, shows that it has to go through a hole in
`that template unit 13. This is exactly what Dr. Pratt testifies to in his
`declaration, and that's also included on slide 18, Your Honor. So, again, the
`specification just doesn’t support Patent Owner's claim construction.
`And Your Honors, we've just talked about how Figure 13 isn't
`constrained in the housing, but even if it was constrained in there, even if
`Patent Owner's interpretation of that Figure 3 embodiment were correct, that
`is just no basis to apply the narrowing construction that Patent Owner is now
`advocating. It's Black Letter Law that the claim should not be limited to a
`specific disclosed embodiment, and that's especially true here, where the
`construction would exclude the preferred embodiment.
`So, based on the extrinsic that we've seen, Your Honors, from the
`specification, and so forth, if Patent Owner's narrowing construction isn't
`correct it should be rejected.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`12
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`So, I'm going to turn to slide 21, Your Honors. And I'm going to shift
`gears a little bit here, and I want to address Patent Owner's argument that the
`term "housing" cannot include a releasable attachment.
`Patent Owner's argument is without merit, but it's also inconsistent
`with the plain meaning of housing that the Patent Owner applied in its Patent
`Owner preliminary response. There, the Patent Owner argued that in
`Kilbourne the reversible elongated member is clearly housed in
`communication with the gear recited in claim 11, because the member is
`contained within and positioned within the gear.
`Contained within and positioned within says nothing about
`constraining an egress. And to the contrary, reversible elongated member
`here, Your Honors, is just releasably attached to that gear, can slide into and
`out of that gear. So, the Patent Owner's use of housed in its preliminary
`response actually included a releasable attachment. I think this is also
`important Your Honors, because it shows that the Patent Owner's new
`narrow construction, really isn't the plain and ordinary meaning of the term
`"housing".
`JUDGE MELVIN: Well, a Patent Owner can change its construction,
`right? Why should they be bound to some implicit construction that they
`applied in the preliminary response?
`MR. HYNDS: Your Honor, I would say that that's kind of explicit
`here, and if I'm referring to slide 21, here they're saying it's clearly housed
`because, okay, it's housed because it's contained within and positioned
`within, so I think they're pretty much, you know, saying, this is what the
`ordinary, plain and ordinary meaning of housing is. Are they technically
`bound by that under these procedures? Technically, no, I mean --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`13
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`JUDGE MELVIN: Would they be bound by that under any
`procedures? I mean, this is not that -- judicial estoppel, for example, would
`not apply to that.
`MR. HYNDS: I don't think it would, Your Honor. My point is this is
`the way they looked and interpreted housing back then, and now they’ve
`come up with a completely different construction that requires open the
`housing to take out the reversible elongated member. I would say that this is
`actually closer to what the plain and ordinary meaning is, and that's just
`evidence of that, that's really kind of what my point is here, Your Honor.
`JUDGE MELVIN: Okay.
`MR. HYNDS: I'm just going to switch to a different slide for a
`second, if you'll bear with me. Okay, so what I have put up here now is a
`slide from Mr. Kilbourne's presentation. This is slide 8, and it's just really
`claim 11. And this is back on the point, Your Honors, where they're now
`saying that housed in cannot include releasably attaching. And they’re
`saying that, I presume because both of those terms are used in claim 11, and
`apparently the contention is so they must have different meanings.
`But these terms are not redundant, Your Honor, under Petitioner's
`plain meaning construction, the plain meaning of housing means positioned
`in, or received in and other element, and housing can include a releasable
`attachment, but it doesn’t have to have it. And the terms housing and
`releasably attaching just simply describe different relationships. What we
`see here in that green, and just leading into that green, is that claim 11 uses
`releasably attaching to describe how the reversible elongated member
`attaches to the deadbolt tail piece.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`14
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`There, the reversible elongated member fits over the tail piece, it's
`releasably attached to the tail piece, but it's not housed in the tail piece. So,
`all we're saying here Your Honors, is that housing and releasably attaching
`have different meanings, they're not redundant, and this in no way supports
`the argument that housing cannot include releasable attachment.
`Bear with me. Pardon me. Okay, so I'm referring now to slide 24.
`So, Petitioners submit that under the plain meaning of housing, there really
`isn't a dispute that Padiak's reversible elongated member is housed inside of
`the deadbolt activating system, as we already talked about, Your Honors,
`Padiak teaches that the adaptor 880 fits into the bore of 894, which is inside
`the deadbolt activating system, and Padiak also teaches that the adaptor is
`placed in the preassembled actuator prior to placing the whole system over
`the tail piece.
`So, for at least these reasons, Your Honor, Padiak discloses housing
`the reversible elongated member in the deadbolt activating system as
`required by claim 11, and I did want to point out that slide 25, Your Honors,
`that I don't think this is really in dispute, because here is the portion of the
`Patent Owner's response where they admit a portion of the alleged reversible
`elongated member in the proposed combination is releasably attached to a
`component housed in the deadbolt activating system. So, I really don't think
`this issue is in dispute.
`Turning now to slide 26; we have explained in Petitioner's reply how
`Padiak teaches and rendered obvious housing the reversible elongated
`member in the deadbolt activating system, even under Patent Owner's
`incorrect claim construction. I don't think you have to reach that issue, Your
`Honors, I think that that's because the Patent Owner's construction is clearly
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`15
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`incorrect, so unless you have any questions on that, Your Honors, I was
`going to move on to claim 14.
`JUDGE HOSKINS: So, I just have one quick question at least.
`MR. HYNDS: Sure.
`JUDGE HOSKINS: It's a little bit of an unfair question, but I'm going
`to ask it of Patent Owner --
`MR. HYNDS: Okay, my favorite kind.
`JUDGE HOSKINS: Okay. I'm going to ask it of Patent Owner, so
`I'm going to ask it of you, alright?
`MR. HYNDS: Sure.
`JUDGE HOSKINS: In reading Patent Owner's argument, it's not clear
`to me whether one of their positions on their claim construction issue is
`whether the reversible elongated member has to be entirely within a housing,
`or can it just be partially within a housing, and partially outside of the
`housing, and still be quote/unquote, "housed in the housing". How did you
`understand Patent Owner's argument to be from that perspective?
`MR. HYNDS: I understand Patent Owner's argument very clearly to
`be saying that the reversible elongated member does not have to be entirely
`within the housing. And on page 21 of the Patent Owner response, they
`have this analogy of the prisoner in a jail cell, right? So the prisoner in the
`jail cell can have his hands outside of the jail cell so it extends out, but that
`jail cell still constrains that prisoner's egress from getting out of prison.
`So, I think, you know, from at least their admission, that it can extend
`out beyond -- I think their interpretation, if we look at the Figure 3, that's
`reversible, that extends beyond the end of template 13, and there's also
`testimony in Dr. Pratt's declaration, which I think it's unrebutted, he said,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`16
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`that's how a person of ordinary skill in the art would construe the reversible
`elongated member in the context of the 795 Patent.
`JUDGE HOSKINS: Okay. Thank you.
`MR. HYNDS: Turning to claim 14, and I'm referring to slide 31. So
`the issue here, Your Honors, is whether Padiak teaches comprising
`composing the deadbolt activating system of a gear carriage, a motor battery
`carriage, and a gear base, and we contend that it does.
`Now turning to slide 32, the petition demonstrates that Padiak teaches
`distinct components corresponding to the elements of claim 14, first we have
`the structure labeled "gear carriage" in red. That supports the gears of the
`gear reduction assembly 804 and is therefore a gear carriage. In the base
`plate, that's element 812, and it's in yellow that supports the gear reduction
`assembly 804, and that is a gear base.
`In the cover, which is element 884, and that's shown in light-blue, and
`the base plate again, that's in yellow they, together, enclose and house the
`motor and batteries, and therefore collectively define the motor and battery
`carriage. So, we submit, Your Honor, that Padiak clearly teaches the
`elements of claim 14 under the ordinary meaning of those terms.
`Now, Patent Owner responds to this evidence, with yet another new
`claim construction raised for the first time, in the Patent Owner response.
`And I'm referring to, now to slide 33. Now, the Patent Owner's argument is
`somewhat convoluted, but it boils down to the argument that claim 14
`requires three distinct structures, a gear carriage, a motor battery carriage,
`and a gear base, that these are independently movable from one another.
`And I think what they're really getting at here, Your Honor, is that the
`motor and battery carriage has to be separate from the gear base and the gear
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`17
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`carriage. We disagree with this construction, we disagree that these claim
`elements correspond to entirely distinct and independently movable
`structures. We think there's no support for this construction, and the
`intrinsic evidence or the law that they can rely on.
`So let's take this in order. First of all, Your Honors, we believe that
`this construction is wrong, it's a matter of law, and I'm referring to slide 34.
`The Federal Circuit has repeatedly held that a single structure can teach
`multiple claim elements. In the Applied Medical Research case the Federal
`Circuit says, "The use of two terms in a claim requires that they connote
`different meanings, not that they necessarily refer to two different
`structures."
`In the Linear Tech case, Your Honors, the Federal Circuit says,
`"There is nothing in the claim language or specification that supports
`narrowly construing the terms to require specific structural requirements, or
`entirely distinct second and third circuits. Rather, the second and third
`circuits must only perform their stated functions.”
`And we think the same is true here, Your Honors. There's nothing in
`the claim language, or the specification that requires that these elements be
`separate and independently movable. And the Patent Owner does not
`distinguish these cases in their sur-reply.
`So, let's look at the intrinsic evidence, and let's start with the claims,
`and I'm turning to slide 35. Is there anything in the language of claim 14
`that indicates that the separate structures are required? There is not. There
`is no surrounding claim language indicating that these components must be
`physically separated, it just lists the three components.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`18
`
`
`
`IPR 2019-00233
`Patent 7,373,795 B2
`
`
`So, I would submit, Your Honors, that claim 14 is different from the
`claims in the Becton, Dickinson and the Regents cases relied on by the
`Patent Owner. There, the surrounding claim language actually required
`separateness, or for example --
`JUDGE HOSKINS: Mr. Hynds?
`MR. HYNDS: Yes.
`JUDGE HOSKINS: So, I realize one of your responses to the term
`"composing" in the claim is that it was brought up for the first time in the
`Patent Owner's sur-reply.
`MR. HYNDS: Right.
`JUDGE HOSKINS: But I'm hoping you can address the merits of that
`term in the claim, and why, at least in your view, it doesn’t support what
`Patent Owner is trying to get to here.
`MR. HYNDS: Sure. Your Honor, we are like to do that now, or can I
`finish my point on these cases?
`JUDGE HOSKINS: If it's in your presentation later, feel free to --
`MR. HYNDS: No. I'm going to get to it very, very quickly. I just
`wanted to point out that in fact that in Becton, Dickinson it claims a spring
`means connected to a hinged arm, and in the Regents case the claims are
`directed to a first and second disk affixed to one another. So, with respect to
`the word "composing" it is our contention that this argument was raised for
`the first time in a sur-reply, and it certainly provided extrinsic evidence for
`the first time in a sur-reply, and that it shouldn’t be considered, but even if it
`is considered, Your Honor, composing in this context, in our view, just
`means constituting or comprising.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
