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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`QUEST USA CORP.,
`Petitioner
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`v.
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`POPSOCKETS LLC,
`Patent Owner
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`_______________
`
`Case IPR2019-01067
`Patent 9,958,107
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`____________
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`
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`10745680
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`TABLE OF CONTENTS
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`I.
`II.
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`Page
`Introduction ............................................................................................ 1
`Petitioner’s Proposed Meaning Of “Lock” Is Incorrect ......................... 1
`Petitioner’s proposed meaning ignores the explicit
`function of “lock” in the ’107 Patent. .......................................... 1
`Petitioner’s proposed meaning ignores the use of “lock”
`and other terms in the claims of the ’107 Patent. ......................... 3
`Petitioner’s remaining arguments are meritless. .......................... 5
`
`Petitioner’s Arguments Regarding “Secure” Are Improper ................... 8
`III.
`VI. Conclusion ............................................................................................ 10
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`709 F.3d 1348 (Fed. Cir. 2013) ...................................................................... 5
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................... 6
`In re Power Integrations, Inc.,
`884 F.3d 1370 (Fed. Cir. 2018) .............................................................. 4, 5, 6
`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`529 F.3d 1364 (Fed. Cir. 2008) ...................................................................... 6
`Statutes
`35 U.S.C. § 282(b) ............................................................................................... 1
`Other Authorities
`37 C.F.R. § 42.200(b) ...................................................................................... 1, 3
`83 Fed. Reg. 51,340 (Oct. 11, 2018) ................................................................... 1
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`I.
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`Introduction
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`Per the Board’s Order, Paper 10, Patent Owner submits this Preliminary
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`Sur-Reply. The terms are construed using the same claim construction
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`standard as in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.200(b)
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`(as amended Oct. 11, 2018).1
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`II.
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`Petitioner’s Proposed Meaning Of “Lock” Is Incorrect
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`Petitioner suggests that the plain and ordinary meaning of “lock” is “a
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`mechanism in which a projection is secured in a recess.” Paper 11 at 1-8. This
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`meaning is incorrect in the context of the ’107 patent.
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`
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`Petitioner’s proposed meaning ignores the explicit function of
`“lock” in the ’107 Patent.
`To begin with, Petitioner’s proposed meaning ignores that the explicit
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`function of the “lock” as claimed in the ’107 patent is to fix the socket in a
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`compressed position by securing the button to the platform. The invention
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`claimed by the ’107 Patent includes a biasing element arranged to bias the
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`button away from the platform. See, e.g., Ex. 1001 at 8:9-11. As a result, in
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`the claimed embodiments the expandable socket of the ’107 Patent will revert
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`to its expanded position, moving the button away from the platform, unless it is
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`1 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 (Oct. 11, 2018).
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`restrained in some way. See, e.g., id. at 6:20-24 (“Once the lock 214 has been
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`released, the biasing force of the coil spring 218 drives the button 204 and the
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`cover 212 outward, away from the base 206, until the button 204 and the cover
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`212 reach the expanded configuration.”).
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`The ’107 Patent discloses and extensively discusses a “lock” to secure
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`the socket in its collapsed configuration. The ’107 Patent states:
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`The expandable socket 200 generally includes . . . a lock 214
`configured to releasably secure the expandable socket 200 in a
`collapsed configuration . . .
`[T]he first projection 210, the second projections 208, and the recess
`216 define or form the lock 214 that locks the expandable socket
`200 in the collapsed configuration.
`One of ordinary skill in the art will appreciate that the first
`projection 210 and the second projections 208 can be reversed and
`yet still interact to help lock the Popsocket 200 in the collapsed
`configuration . . . .
`The user of the expandable socket 200 may move the expandable
`socket 200 from the collapsed configuration to the expanded
`configuration by releasing the lock 214.
`Id. at 4:37-45, 6:2-15; see also, e.g., id. at 6:15-24.
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`If the “lock” in the claimed embodiments of the ’107 patent does not
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`cause the button and platform to maintain a fixed distance from each other,
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`then the socket will not be fixed in its compressed position. See id. Thus,
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`under Petitioner’s proposed meaning, something could qualify as a “lock” even
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`if it does not perform the function of a “lock” that is explicitly set out in the
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`patent – for example, a loose electrical connection. See Paper 11 at 1-8.
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`Petitioner’s meaning is incorrect because it does not properly construe the
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`claim term in accordance with its ordinary and customary meaning, as would
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`be understood by one of ordinary skill in the art, and the patent at issue. See 37
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`C.F.R. § 42.200(b) (as amended Oct. 11, 2018).
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`
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`Petitioner’s proposed meaning ignores the use of “lock” and
`other terms in the claims of the ’107 Patent.
`Moreover, in addition to ignoring the explicit purpose and function of
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`the lock claimed in the ’107 patent, Petitioner’s proposed meaning also ignores
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`the language of the claims in the ’107 patent. Petitioner’s proposed meaning
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`appears to be taken from certain elements that certain claims state the lock
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`“comprises.” Claim 1, for example, claims a lock comprising a first projection,
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`a second projection, and a recess:
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`a lock configured to releasably secure the button to the platform,
`the lock comprising a first projection carried by the button and
`arranged to engage a second projection carried by the platform
`when the lock releasably secures the button to the platform . . .
`wherein the lock comprises a recess defined by the platform or the
`button, the recess configured to receive the first or second projection
`when the lock releasably secures the button to the platform
`Ex. 1001 at 8:13-25.
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`In a contrasting example, Claim 16 claims a lock comprising a first
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`projection and a second projection, with no mention of a recess:
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`a lock for selectively coupling the button to the platform such that
`the skin occupies the collapsed configuration when the button and
`platform are coupled, the lock comprising a first projection carried
`by the button and arranged to engage a second projection carried by
`the platform when the lock selectively couples the button to the
`platform.
`Ex. 1001 at 10:17-23.
`Petitioner’s proposal defines “lock” to include a projection and a recess,
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`but no second projection. Paper 11 at 1-8. Petitioner offers no explanation of
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`why it would be appropriate for the Board to pick and choose between separate
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`claim elements in this way: taking two elements from claim 1, one of which
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`does not appear in claim 16, but ignoring a third element of claim 1, which
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`does appear in claim 16, and using those two cherrypicked elements to define
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`yet a separate element. In any event, under Petitioner’s proposal, the claim
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`language of claim 1 stating that the lock must include a projection and a recess
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`would be rendered superfluous. Ex. 1001 at 8:13-25. This meaning of “lock”
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`thus should be disfavored. In re Power Integrations, Inc., 884 F.3d 1370,
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`1375-77 (Fed. Cir. 2018); id. at 1376 (collecting cases). The proposal would
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`also read into Claim 16 a requirement for a recess, which Petitioner does not
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`explain or justify.
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`More generally, the claims of the ’107 patent use the terms “projection”
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`and “recess” separately from the term “lock,” and Petitioner does not explain
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`why these terms should be conflated. Claim 15, for example, requires a
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`“recess” and (because it depends from Claim 9) a “projection,” but never
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`mentions a “lock.” Ex. 1001 at 8:58-64, 9:15-18; see also id. at 6:6-8
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`(protrusion and recess can be reversed while remaining a “lock”). By
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`conflating these various elements, Petitioner’s proposal would effectively read
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`the term “lock” out of numerous of the challenged claims. For example, even
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`without the term “lock,” Claim 1 already requires “secure,” “projection,” and
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`“recess,” and the projection must be “receive[d]” by the recess. Id. at 8:12,
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`8:13, 8:22-23. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
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`709 F.3d 1348, 1357-58 (Fed. Cir. 2013) (constructions rendering claim
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`language superfluous disfavored);2 Power Intgs., 884 F.3d at 1376.
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`Petitioner’s remaining arguments are meritless.
`Petitioner further relies on arguments regarding Claim 16 and Figure 3.
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`These arguments do not support Petitioner’s position.
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`Regarding Claim 16, Petitioner argues that the claim language “the skin
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`occupies the collapsed configuration when the button and platform are
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`coupled” should not be interpreted to mean that the skin occupies the collapsed
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`2 Petitioner twice seems to suggest that statements that certain
`components “define or form” and “define” a lock provide a semantic
`“definition” of the term lock. Paper 11 at 3, 4. This is incorrect: as the
`specification makes clear, certain locks are constituted by certain components,
`but these components do not provide a definition of the word in general; this is
`why different sets of components can “define” different locks.
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`configuration when the button and platform are coupled. Paper 11 at 6. To the
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`contrary, Petitioner argues, “This language does not prohibit the skin from
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`occupying other configurations when the button and platform are coupled.” Id.
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`Petitioner does not explain why a claim requirement that skin occupy a certain
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`configuration does not prohibit the skin from occupying other configurations.
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`The patent discusses at length that the purpose of coupling the button and
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`platform is to secure the socket in its collapsed configuration. Supra § II.A.
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`Thus, Petitioner’s unsupported interpretation of this language is not supported
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`by the specification of the ’107 patent. See Power Intgs., 884 F.3d at 1376-77.
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`Finally, Petitioner wrongly relies on Figure 3 as support for its proposed
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`meaning of “lock” in the claims. Paper 11 at 4-6. This is improper because
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`Figure 3 is an unclaimed embodiment: for example, the Figure 3 embodiment
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`does not require the “biasing element” or “spring” that is included in each
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`claim of the ’107 Patent. Ex. 1001 at 6:25-7:67; Figs. 3A – 3C; TIP Sys., LLC
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`v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1372-73 (Fed. Cir. 2008)
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`(use of term “through” in unclaimed embodiment not probative of use in
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`claims); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
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`Indeed, even the ‘lock’ in Figure 3 is an unclaimed embodiment: Figure 3 does
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`not teach a first projection carried by the button and arranged to engage a
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`second projection carried by the platform, but rather shows the first projection
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`314 (the inner surface of projection 308) engaged with ring 322.
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`Moreover, even if the unclaimed embodiment of Figure 3 were relevant
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`to construction of the claim term, Figure 3 would not show that a “lock” does
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`not maintain the button and platform a fixed distance from one another. The
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`’107 Patent states, “the expandable socket 300 includes a lock that may in turn
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`lock, or securely retain, the expandable socket 300 in this expanded
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`configuration.” Ex. 1001 at 7:40-42. Petitioner suggests that if friction
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`between concentric rings 322 helps to hold the socket in its expanded position,
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`the lock does not maintain a fixed distance, but this is incorrect: just as a
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`standard bolt lock relies on background conditions to “help” the lock to
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`function properly—e.g., screws retaining a mounting plate in the doorjamb—
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`the unclaimed Figure 3 “lock” relies on background conditions to “help” it
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`function—e.g., the concentric rings jointly forming an extended rigid wall—in
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`order for the “lock” to play its role of fixing the distance between the button
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`and the platform, in part by locking the concentric rings in their extended rigid
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`configuration.
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`Finally, if the unclaimed embodiment of Figure 3 were relevant to
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`construction of the claim term, it would be inconsistent with Petitioner’s
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`construction. The patent reads, “In this example, the lock is a friction-based
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`lock that is defined by the detent 313 and the inner surface 315 [sic],3 which
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`not only help to maintain the concentric rings 322 in the proper position
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`between the button 304 and the base 306, but also respectively frictionally
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`engage the innermost and outermost of the concentric rings 322 . . . .” Id. at
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`7:42-48 (emphasis added). But neither detent 313 nor inner surface 314 is a
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`recess, contrary to Petitioner’s construction.
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`The Board should afford “lock” its ordinary and customary meaning in
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`the context of the ’107 Patent as: a mechanism when engaged causes the button
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`and the platform to maintain a fixed distance from each other. This
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`construction is supported by the intrinsic record. Paper 8 at 11. This
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`construction is also supported by extrinsic dictionary definitions. Ex. 2008.
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`III. Petitioner’s Arguments Regarding “Secure” Are Improper
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`When requesting the opportunity for additional preliminary briefing
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`regarding the claim terms “lock” and “secure,” Petitioner represented to the
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`Board, “Petitioner would like the opportunity to provide its own preferred
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`constructions for these terms and a preliminary reply.” Ex. 1021 at 6:24-7:2.
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`The Board ordered that “Petitioner’s reply shall be limited to Petitioner’s
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`proposed constructions of the claim terms ‘lock’ and ‘secure’ . . . .” Paper 10
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`3 ‘Inner surface 315’ plainly should read ‘inner surface 314’, as that is
`what frictionally engages the outermost concentric ring.
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`at 5. The Board specifically emphasized that “Petitioner’s argument and
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`evidence in its reply shall be limited to those in support of Petitioner’s
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`proposed constructions of those terms as well as counter-arguments to Patent
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`Owner’s proposed constructions.” Id. at 3.
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`In fact, Petitioner has no construction to propose for the term “secure”:
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`Petitioner agrees with Patent Owner’s proposed construction. Paper 11 at 8.
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`Petitioner seems to suggest that this agreed-upon construction is not properly
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`applied in Patent Owner’s arguments regarding the ten grounds of challenge
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`raised in the Petition. Id. However, this is quite different from what Petitioner
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`requested and what the Board ordered.4 Given that Petitioner believes “The
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`parties appear to agree that ‘secure’ should be construed to mean ‘to make fast
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`or hold,’” it is surprising that Petitioner chose not to disclose this to the Board
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`when requesting additional briefing regarding the construction of “secure.” Id.
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`Any argument or implied argument in the Preliminary Reply regarding
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`the ten grounds for challenge is beyond the scope of permitted briefing and
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`should be ignored. If the Board chooses to reach these improper arguments,
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`Patent Owner requests the opportunity to respond to their substance. As an
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`4 The suggestion is also false. Patent Owner explicitly applies the
`construction “make fast or hold” in its briefing regarding the grounds of
`challenge. See, e.g., Paper 8 at 21, 24.
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`example, Petitioner suggests at the conclusion of the Preliminary Reply that
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`something not held at a fixed distance might still meet the agreed-upon
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`construction of “secure” because of a dictionary definition that provides “a
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`bike to a tree” as an example of “to make fast.” Paper 11 at 10 n.3. Petitioner,
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`citing no support, asserts that “In such an example, the bike is not maintained
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`at a fixed distance from the tree.” Id. If the Board reaches Petitioner’s
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`improper implied argument that the loose electrical connection of accordion
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`flex circuit 16 in Barnett PCT somehow “makes fast” button 9 and platform 2,
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`Patent Owner requests the opportunity for responsive briefing. Ex. 1008.
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`VI. Conclusion
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`Petitioner’s claim construction proposals are incorrect, and the Board
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`should determine that Petitioner has not satisfied its burden to establish that
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`any of challenged claims 1-16 are unpatentable.
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`Dated: October 4, 2019
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`Respectfully submitted,
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`/Michael R. Fleming/
`Michael R. Fleming (Reg. No. 67,933)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`E: mfleming@irell.com
`E: PopsocketsIPR@irell.com
`Patent Owner Lead Counsel
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, pursuant to 37 CFR § 42.6(e), a
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`copy of the foregoing PATENT OWNER’S PRELIMINARY SUR-REPLY
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`was served electronically via electronic mail on counsel for the Petitioner as
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`follows:
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`bryan.jaketic@squirepb.com
`steven.auvil@squirepb.com
`sfripdocket@squirepb.com
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`October 4, 2019
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`By: /s/ Pia S. Kamath
`Pia S. Kamath
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