Paper 5
`Filed: March 6, 2019
`
`
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`INVUE SECURITY PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MOBILE TECH, INC.
`Patent Owner.
`________________
`
`Case PGR2019-00019
`U.S. Patent 10,026,281
`________________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. 42.207
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`

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`PGR2019-00019
`Patent 10,026,281
`
`
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .............................................................................................. 1
`
`II. THE PETITION SHOULD BE DENIED BECAUSE INVUE HAS NOT
`ESTABLISHED WHEELER OR THE VIDEO ARE PRIOR ART ............. 1
`
`A. InVue’s Revival Argument Is Not Challengeable in a PGR, and in
`Any Event, Is Incorrect ................................................................................. 2
`
`1. PGR Proceedings Are Limited in Scope ................................................ 2
`
`2. The Federal Circuit Held § 282(b) Does Not Allow Challenges
`to Decisions To Revive a Patent Application ......................................... 3
`
`3. Past Board Decisions Have Also Rejected Revival Challenges
`Like InVue’s .............................................................................................. 5
`
`4. No Novel or Unsettled Legal Question Exists ........................................ 7
`
`5. In Addition to Lack of Jurisdiction, InVue’s Revival Argument
`Is Incorrect ................................................................................................ 9
`
`B. InVue’s “Multi-Conductor” Argument Is Incorrect, as
`Conductive Tethers Were Not Disclaimed in the ’837 Application ........ 10
`
`1. Disclaimers Must Be Clear and Unmistakable .................................... 11
`
`2. The ’837 Application Does Not Include “Expressions of
`Manifest Exclusion or Restriction” ....................................................... 12
`
`3. The ’837 Application Isn’t Directed to Tethers, but Explains a
`Benefit Is that Conductive Tethers Aren’t Required .......................... 13
`
`4. The Original Claims Confirm that No Particular Type of
`Tether Is Required by the Invention .................................................... 14
`
`5. Federal Circuit Precedent Confirms No Disclaimer in the ’837
`Application .............................................................................................. 15
`
`C. All Claims Are Entitled to a January 10, 2009 Priority Date,
`Before the Alleged Publication of Wheeler and the Video ...................... 19
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`PGR2019-00019
`Patent 10,026,281
`III. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`IDENTIFY THE SPECIFIC GROUNDS OF INVALIDITY ...................... 20
`
`A. InVue’s Purported Identification of the Grounds .................................... 21
`
`B. InVue’s Identification Fails To Comply with the Rules .......................... 22
`
`IV. THE PETITION SHOULD BE DENIED FOR SETTING FORTH
`NUMEROUS, UNDERDEVELOPED OBVIOUSNESS GROUNDS ......... 26
`
`A. The Board Declines To Institute IPR Where Large Number of
`Grounds Are Presented ............................................................................... 26
`
`B. The Petition Sets Forth Thousands of Different Invalidity
`Grounds ........................................................................................................ 28
`
`C. InVue Has Not Adequately Explained Each of Its Proposed
`Obviousness Combinations ......................................................................... 31
`
`V. INVUE FAILED TO CARRY ITS BURDEN TO SHOW ANY OF THE
`CHALLENGED CLAIMS ARE OBVIOUS .................................................. 32
`
`A. InVue’s Petition Fails To Present Evidence for at Least One
`Element of Each Independent Claim ......................................................... 32
`
`1. InVue Failed To Show that the Claimed Tether Connections
`Are in Any Asserted Prior Art Reference ............................................ 32
`
`2. Claims 25 and 30 Require that Power Drawn from the Power
`Source Is Provided to the Connector When in the Rest State............ 36
`
`3. None of InVue’s Stated Grounds Disclose This Limitation, or
`Render the Claim Obvious .................................................................... 39
`
`B. InVue Provides No Evidence To Support Combining Any of the
`Asserted Prior Art References. ................................................................... 42
`
`C. The Petition Should Be Denied Because InVue Failed To Establish
`Reasonable Expectation of Success ............................................................ 48
`
`VI. CONCLUSION ............................................................................................ 49
`
`
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`PGR2019-00019
`Patent 10,026,281
`I.
`INTRODUCTION
`
`Patent Owner, Mobile Tech, Inc. (“MTI” or “Patent Owner”), submits the
`
`following Preliminary Response to the Petition for Post-Grant Review (“PGR”) of
`
`U.S. Patent 10,026,281 (“the ’281 Patent”) filed by Petitioner InVue Security
`
`Products (“InVue” or “Petitioner”) in Case PGR2018-00019. See 37 C.F.R.
`
`§ 42.207.
`
`MTI requests that the Board reject the Petition and refuse to institute PGR
`
`for at least the following reasons:
`
`II. THE PETITION SHOULD BE DENIED BECAUSE INVUE HAS NOT
`ESTABLISHED WHEELER OR THE VIDEO ARE PRIOR ART
`
`InVue’s Ground 4 relies upon U.S. Patent Application Publication No.
`
`2014/0159898 (“Wheeler,” Ex. 1008), which published June 12, 2014 and has an
`
`earliest priority date of June 21, 2010. Ground 5 relies upon a video identified as
`
`“MTI’s 2009 Virtual Store Tour Video” (“the Video,” Ex. 1014), which InVue
`
`alleges was publicly disclosed on May 8, 2009. See Paper 1, 23.
`
`Every challenged claim of the ’281 Patent, however, is entitled to an
`
`effective filing date of January 10, 2009. See Ex. 1001, 1. As such, neither Wheeler
`
`nor the Video are prior art to the ’281 Patent. While InVue makes two arguments
`
`as to why Claims 1-30 are not entitled to the filing date of Application Serial No.
`
`12/351,837 (“the ’837 application”), both are incorrect.
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`PGR2019-00019
`Patent 10,026,281
`A.
`InVue’s Revival Argument Is Not Challengeable in a PGR, and in
`Any Event, Is Incorrect
`
`InVue argues the ’281 Patent’s priority claim to the ’837 application, filed
`
`January 10, 2009, should be ignored because allegedly the Patent Office
`
`improperly revived the application. Paper 1, 6-10. But this argument is not
`
`challengeable in a PGR and the Board has no jurisdiction over it. Plus, InVue is
`
`wrong on the merits.
`
`1.
`
`PGR Proceedings Are Limited in Scope
`
`Like every Board proceeding, PGR proceedings are of limited scope. See
`
`Symantec Corp. v. Finjan, Inc., IPR2015-01895, 2016 WL 1082105, at *6 (PTAB
`
`Feb. 26, 2016) (“The Board is not a court of general jurisdiction, but an
`
`administrative tribunal with limited jurisdiction.”). Specifically, the scope of a
`
`PGR proceeding is limited by statute to “any ground that could be raised under
`
`paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any
`
`claim).” 35 U.S.C. § 321(b). These paragraphs of § 282(b), in turn, allow defenses
`
`of invalidity based upon “any ground specified in part II [of the Patent Act] as a
`
`condition for patentability” (i.e., §§ 102 and 103), “any requirement of section
`
`112” (except best mode) and “any requirement of section 251” (regarding reissue
`
`patents). See 35 U.S.C. § 282(b).
`
`
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`PGR2019-00019
`Patent 10,026,281
`For this reason, PGR proceedings are limited to a subset of the grounds that
`
`can be raised in district-court litigation. PGR proceedings cannot address
`
`inequitable conduct, obviousness-type double patenting, or any other argument not
`
`within the scope of § 282(b)(2) or (3). See, e.g., Apple Inc. v. SightSound Techs.,
`
`LLC, CBM2013-00021, 2013 WL 8538869, at *15-16 (PTAB Oct. 8, 2013)
`
`(finding obviousness-type double patenting not within the scope); U.S. Postal Serv.
`
`v. Return Mail, Inc., CBM2014-00116, 2014 WL 5339212, at *17 (PTAB Oct. 16,
`
`2014) (finding “impermissible reexamination broadening under 35 U.S.C. § 305”
`
`not within the scope).1
`
`2.
`
`The Federal Circuit Held § 282(b) Does Not Allow
`Challenges to Decisions To Revive a Patent Application
`
`In Aristocrat Technologies Australia Pty, Ltd. v. International Game
`
`Technology, the Federal Circuit addressed and decided the same issue present here.
`
`See 543 F.3d 657 (Fed. Cir. 2008). There, the district court found a patent
`
`“improperly revived” and therefore held it invalid. Id. at 659. The district court
`
`
`1 Other than for some exceptions not relevant here, covered business method
`
`proceedings have the same scope as PGR proceedings. See Int’l Sec. Exch., LLC
`
`Petitioner v. Chicago Board Options Exchange, Inc., CBM2013-00049, 2014 WL
`
`1252855, at *10 (PTAB Mar. 4, 2014).
`
`
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`PGR2019-00019
`Patent 10,026,281
`further found that a continuation patent’s priority claim to the improperly revived
`
`patent was also improper, and thus the revived patent invalidated that continuation
`
`under pre-AIA § 102(b). Id. at 660.
`
`The Federal Circuit, however, reversed the district court. It “conclude[d] that
`
`‘improper revival’ may not be raised as a defense in an action involving the
`
`validity or infringement of a patent.” Id. at 661; see also id. at 664-65 (agreeing
`
`improper revival cannot be used to cut the chain of priority short). The Federal
`
`Circuit did so after analyzing § 282, which is at issue here. Id. at 661-63.2 This
`
`ends the analysis and directly answers the present question. Since improper revival
`
`is not a defense under § 282(b)(2) or (3), it cannot be raised in a PGR.
`
`In addition to ruling improper revival is unavailable as a defense under
`
`§ 282, the Federal Circuit also ruled it could not be raised in district-court litigation
`
`at all. Unlike PGR proceedings, some defenses outside of § 282 are allowed in
`
`district court, such as obviousness-type double patenting and arguments that “a
`
`patentee…improperly enlarged the scope of its claims during reexamination, in
`
`violation of 35 U.S.C. § 305.” Id. at 664. The Federal Circuit, however, declined
`
`
`2 Section 282 was amended by the AIA to remove best mode as a defense and to
`
`organize the section into parts (a) and (b). The differences in pre-AIA and post-
`
`AIA § 282, however, are not relevant to the present case.
`
`
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`PGR2019-00019
`Patent 10,026,281
`the opportunity to make “improper revival” such a defense, explaining “[t]here is
`
`good reason not to permit procedural irregularities during prosecution, such as the
`
`one at issue here, to provide a basis for invalidity.” Id. at 663.
`
`Given that “improper revival” is not a defense in district court, it certainly is
`
`not proper to consider in PGR proceedings, in which only a subset of the district-
`
`court defenses are available. Indeed, Judge Newman, citing to Aristocrat
`
`Technologies, explained that “[a] PTO decision to excuse a tardy filing is not a
`
`statutory ground of invalidity or defense to infringement under 35 U.S.C. § 282,
`
`nor is it a ground on which third persons can initiate and participate in post-
`
`issuance disputes, see … Chapter 32 (post-grant review).” Exela Pharma Scis.,
`
`LLC v. Lee, 781 F.3d 1349, 1353 (Fed. Cir. 2015) (Newman, J., concurring).
`
`“Rather, it is an irregularity in prosecution that ‘becomes irrelevant after the patent
`
`has issued.’” Id. (quoting Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 960
`
`(Fed. Cir. 1997)).
`
`3.
`
`Past Board Decisions Have Also Rejected Revival
`Challenges Like InVue’s
`
`The Board has also repeatedly rejected challenges to the revival of an
`
`application. As InVue acknowledges (see Paper 1, 10), the Board previously found
`
`a revival decision is not subject to review during inter partes review (“IPR”)
`
`because the issue is outside the limited scope of the Board’s authority. See Apple
`
`
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`PGR2019-00019
`Patent 10,026,281
`Inc. v. e-Watch, Inc., IPR2015-00411, 2015 WL 2231905, at *5 (PTAB May 7,
`
`2015). And it reached the same conclusion in other proceedings. See also
`
`Symantec, 2016 WL 1082105, at *5-6; Samsung Elecs. Co. v. e-Watch, Inc.,
`
`IPR2015-00612, 2015 WL 4151051, at *5 (PTAB Jul. 8, 2015).
`
`Although the scope of review for PGRs under 35 U.S.C. § 321(b) is different
`
`from that of IPR under § 311(b)), InVue failed to explain how those differences
`
`matter here for a challenge to revival. Nor could it. PGRs are still restricted to
`
`topics within the scope of § 282(b)(2) and (3), which do not include a review of
`
`merely procedural prosecution issues such as the decision to revive an application.
`
`This is not only the rule in AIA trials, but also in other proceedings before
`
`the Board. As the Board held over forty-five years ago in Fryer v. Tachikawa, 179
`
`U.S.P.Q. 381 (BPAI May 5, 1972), “it has long been settled that the discretionary
`
`action of the Commissioner in reviving an abandoned patent application is not
`
`subject to collateral attack in an interference proceeding.” Just as revival is not
`
`subject to attack in interferences, it also isn’t in IPR or PGR proceedings. And
`
`there is no reason to depart from this long and well-established rule (or the plain
`
`statutory text).
`
`Contrary to InVue’s argument, the PGR process does not grant the Board
`
`jurisdiction to broadly “correct errors of the Director.” See Paper 1, 9. The statutes
`
`and regulations that created and govern PGRs limit their scope to the enumerated
`
`
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`PGR2019-00019
`Patent 10,026,281
`categories of defenses available under § 282(b)(2) and (3). See 35 U.S.C. § 321(b);
`
`37 CFR § 42.204(b)(2). As improper revival is not enumerated in those sections,
`
`InVue’s challenge fails.3
`
`4.
`
`No Novel or Unsettled Legal Question Exists
`
`Contrary to InVue’s assertions (Paper 1, 9-10), whether improper revival is
`
`an argument available in PGR proceedings is not “a novel or unsettled legal
`
`question that is important to other patents or patent applications” such as to justify
`
`instituting review. See 35 U.S.C. § 324(b). As explained above, this issue is neither
`
`novel nor unsettled. It has been raised and addressed repeatedly by the Board and
`
`Federal Circuit.
`
`And while InVue cites to Judge Dyk’s concurring opinion in Exela Pharma,
`
`his opinion has no effect on the present issue. Judge Dyk agreed “there is no APA
`
`review for improper revivals and no alternative mechanism for review.” 781 F.3d
`
`at 1355 (Dyk, J., concurring). That is, he agreed with Judge Newman that improper
`
`revival is not available in PGRs. See id. at 1353 (Newman, J., concurring) (stating
`
`
`3 InVue cites to U.S. Endodontics, LLC v. Gold Standard Instruments, LLC, No.
`
`PGR2015–00019, 2016 WL 7985423, at *4 (PTAB Dec. 28, 2016). See Paper 1, 9.
`
`That decision analyzed the substance of a priority application’s disclosure, and did
`
`not involve a challenge to the revival of an application.
`
`
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`PGR2019-00019
`Patent 10,026,281
`improper revival is not a “ground on which third persons can initiate and
`
`participate in post-issuance disputes”). Instead, he called for potential en banc
`
`action to consider whether a “non-listed defense” of improper revival should be
`
`allowed in district court, such as with other judicially created doctrines like
`
`obviousness-type double patenting and patent misuse. Id. at 1355-56. But since
`
`improper revival isn’t listed in § 282(b)(2) or (3), it would remain unavailable in
`
`PGRs regardless of whether Aristocrat is ever reconsidered and regardless of
`
`whether the defense is allowed in district court.
`
`Moreover, one judge’s call for potential en banc action does not make an
`
`issue “new or unsettled.” The very issue has been addressed and settled by the
`
`Federal Circuit. Judge Dyk’s call to potentially consider changing Aristocrat does
`
`not unsettle it. Aristocrat is binding authority, and no Supreme Court decision has
`
`called its holding into question. As such, the Board should follow its own past
`
`decisions, and reject InVue’s improper revival argument. Moreover, it can do so in
`
`a decision denying institution, if it so chooses. There is no need to institute. The
`
`’281 Patent is entitled to the January 10, 2009 filing date of the ’837 application,
`
`and therefore Wheeler and the Video are not prior art.
`
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`PGR2019-00019
`Patent 10,026,281
`5.
`
`In Addition to Lack of Jurisdiction, InVue’s Revival
`Argument Is Incorrect
`
`Moreover, the revival of MTI’s ’837 application was correct. InVue argues
`
`that revival requires a “showing that the ‘entire delay…was unintentional.’” Paper
`
`1, 8 (emphasis added). This is incorrect. The revival regulations require only a
`
`“statement” to that effect. See 37 C.F.R. § 1.137(b)(4) (“A statement that the entire
`
`delay in filing the required reply from the due date for the reply until the filing of a
`
`grantable petition pursuant to this section was unintentional.”).
`
`MTI’s petition contained multiple statements that satisfy this condition. See
`
`Ex. 1026, 46 & 48 (“Applicant states that the entire delay in filing the required
`
`reply from the due date for the reply until the filing of this petition pursuant to 37
`
`CFR 1.137 was unintentional.” (emphasis in original)). There is no reason to
`
`believe these statements were inaccurate or insufficient to meet the requirement, or
`
`that the revival petition was required to include further evidence to satisfy an
`
`alleged infringer’s imagined standard of proof. While InVue focuses on the
`
`language of the Kaser declaration (see Paper 1, 8), a declaration was not even
`
`required under 37 C.F.R. § 1.137.
`
`Further, the Director is expressly given the discretion to decide whether to
`
`request more information on the veracity of the petition’s statement regarding the
`
`delay being unintentional. See 37 C.F.R. § 1.137(b)(4) (“The Director may require
`
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`PGR2019-00019
`Patent 10,026,281
`additional information where there is a question whether the delay was
`
`unintentional.”) (emphasis added). Here, no such request was made, and thus MTI
`
`was under no obligation to provide further evidence or explanation to justify the
`
`delay. The Patent Office, as delegated by the Director, found the statements made
`
`in the petition to revive sufficient to satisfy the regulatory requirements. InVue’s
`
`challenge, which is, in effect, an argument that the Patent Office either abused its
`
`discretion or should establish more stringent regulatory requirements for revival,
`
`must be rejected.
`
`Moreover, while not required under the rules, the Kaser declaration that
`
`accompanied the petition actually did provide an explanation for the delay. See Ex.
`
`1026, 50-53. InVue’s assertion to the contrary is incorrect. And since InVue does
`
`not argue any of the other requirements for revival were not met, InVue’s
`
`challenge fails (even disregarding the fact it isn’t challengeable). Because the ’281
`
`Patent has a priority date of January 10, 2009, Wheeler and the Video are not prior
`
`art.
`
`B.
`
`InVue’s “Multi-Conductor” Argument Is Incorrect, as
`Conductive Tethers Were Not Disclaimed in the ’837 Application
`
`InVue also alleges Claims 1-30 are not supported by the disclosure of the
`
`’837 application. Paper 1, 10-14. InVue does not assert any particular limitation of
`
`Claims 1-30 is unsupported by the ’837 Application. Instead, InVue challenges the
`
`
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`PGR2019-00019
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`priority claim based on an argument that a tether containing a conductor—which,
`
`as InVue acknowledges, is within the scope of the “tether assembly” element
`
`recited in every claim (see Paper 1, 3-4)—was disclaimed in the ’837 application.
`
`See Paper 1, 10-14. But the ’837 application does not disclaim a tether containing a
`
`conductor or any other possible tether option, as explained below.
`
`Each of the claims in the ’281 Patent is adequately supported by the ’837
`
`Application. The claims of the ’281 Patent, therefore, are entitled to the priority
`
`date of the ’837 Application—January 10, 2009. See Ex. 1001, 1. As such,
`
`Wheeler and the Video are not prior art to the ’281 Patent.
`
`1.
`
`Disclaimers Must Be Clear and Unmistakable
`
`Disclaimer of subject matter is not to be easily inferred from a specification.
`
`“To constitute disclaimer, there must be a clear and unmistakable disclaimer.”
`
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir.
`
`2012). “Absent a clear disclaimer of particular subject matter, the fact that the
`
`inventor may have anticipated that the invention would be used in a particular way
`
`does not mean that the scope of the patent is limited to that context.” Northrop
`
`Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1355 (Fed. Cir. 2003).
`
`“Mere criticism of a particular embodiment encompassed in the plain
`
`meaning of a claim term is not sufficient to rise to the level of clear disavowal.”
`
`Thorner, 669 F.3d at 1366. Disclaimer demands more; it requires “expressions of
`
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`PGR2019-00019
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`manifest exclusion or restriction, representing a clear disavowal of claim scope.”
`
`Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)
`
`(quotation marks omitted).
`
`2.
`
`The ’837 Application Does Not Include “Expressions of
`Manifest Exclusion or Restriction”
`
`Nothing in the ’837 application suggests disclaimer relating to the tether
`
`assembly, and therefore nothing in the application rises to the level of “clear and
`
`unmistakable disclaimer.” InVue argues the ’837 application disclaimed tethers
`
`with conductors because it “disparaged” them. Paper 1, 11-12 (citing Ex. 1009
`
`¶¶ 8-9, 15-20, 24, 29, 36, 79).4 InVue, however, points to no “expressions of
`
`manifest exclusion or restriction,” as required under Federal Circuit precedent. See
`
`Epistar Corp, 566 F.3d at 1335. While the ’837 application may have explained
`
`that multi-conductor cables had “problems relat[ing] to wear and tear” and were
`
`“not physically robust” (see Paper 1, 11 (quoting Ex. 1009 ¶¶ 15-17)), nowhere
`
`
`4 InVue analyzed the ’837 application, as published. Technically, the ’837
`
`application, as filed, is relevant. See Ex. 1026 at 121-55. However, because no
`
`modifications were made to the application before publication, and the as-filed
`
`application doesn’t include paragraph or line numbers, MTI cites to the publication
`
`(Ex. 1009) for convenience.
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`PGR2019-00019
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`does it manifestly exclude multi-conductor tethers in its invention. InVue provides
`
`no such citation, nor could it.
`
`3.
`
`The ’837 Application Isn’t Directed to Tethers, but Explains
`a Benefit Is that Conductive Tethers Aren’t Required
`
`A full review of the ’837 application demonstrates that the application was
`
`focused on multiple aspects of the apparatus other than the tether assembly. For
`
`example, the application describes a configuration that delivers power to the
`
`electronic device by supplying it from the base through the puck while the puck is
`
`in contact with the base. Ex. 1009 ¶¶ 25-28, 57-70. The application further
`
`describes a wireless alarm system that allows, for example, a violation of a
`
`distance restriction to cause an alarm to sound. Id. ¶¶ 37-38, 72-78. In addition, the
`
`application discloses multiple embodiments in which only the puck has a battery,
`
`in which only the hand-held device has a battery, and in which both have batteries.
`
`Id. ¶¶ 30-34, 67-70. These concepts are either unrelated to a tether or allow for
`
`more flexibility in deciding if a tether is desired—and if so, what kind—without
`
`compromising power delivery or alarm functionality. See id. ¶¶ 24, 38, 79. Nothing
`
`about the tether assembly itself is necessary or essential to practicing the
`
`inventions described in the ’837 application.
`
`Although the application describes the downsides of using a multi-conductor
`
`cable, it does not expressly disclaim any tether option. Instead, the described
`
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`inventions create more choice regarding a tether by providing power through the
`
`base and/or wireless alarm functionality though the improved puck. Even the
`
`quotations cited in InVue’s disclaimer argument explain that the flexibility to
`
`choose from the many tether options—instead of being required to use a cable that
`
`contains wiring for both power and alarm signaling—is one of the key benefits of
`
`the concepts taught in the ’837 application. See Ex. 1009 ¶¶ 24 (“The present
`
`invention … eliminates the need or requirement for a multi-conductor cable….”),
`
`29 (“[T]he above arrangement eliminates the need for the kinds of multi-conductor
`
`retractor cables….”), 36 (“[T]he present design severs the puck… from prior
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`reliance on conductor wires in a retractor cable.”) (emphases added). Indeed, the
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`’837 application goes on to explain that the described innovations allow for the
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`option of not having any tethering at all. See id. ¶ 36 (“[T]he present invention
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`allows a combined hand-held/puck/patch cord implementation that can provide
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`power and a security alarm without any physical tethering at all.”).
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`4.
`
`The Original Claims Confirm that No Particular Type of
`Tether Is Required by the Invention
`
`The non-essential nature of any particular type of tether is further confirmed
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`by the ’837 application and its original claims. See Crown Packaging Tech., Inc. v.
`
`Ball Metal Beverage Container Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011)
`
`(“Original claims are part of the specification and in many cases will satisfy the
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`written description requirement.”). At the end of the specification, the ’837
`
`application explains that “the invention described above is not to be limited to the
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`particular details of the foregoing description.” Ex. 1009 ¶ 79. “Instead, the scope
`
`of the invention and/or the scope of the patent rights is to be limited only by the
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`patent claims….” Id.; see also Acceleration Bay, LLC v. Activision Blizzard Inc.,
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`908 F.3d 765, 771 (Fed. Cir. 2018) (giving effect to similar language).
`
`And the first two original claims in the ’837 application do not mention
`
`tethering at all, let alone any particular tethering restriction such as a non-multi-
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`conductor tethering. Ex. 1009, Claims 1-2. This demonstrates that the inventions in
`
`question are focused on the configuration and functionality of the base and/or
`
`puck. Contrary to InVue’s arguments, the inventions of the ’837 application are not
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`limited to—or exclusionary of—any particular type of tether.
`
`5.
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`Federal Circuit Precedent Confirms No Disclaimer in the
`’837 Application
`
`The disclosure of the ’837 application is similar to that analyzed by the
`
`Federal Circuit in numerous cases, in which no disclaimer was found. For example,
`
`in ScriptPro LLC v. Innovation Associates, the court explained:
`
`[A] specification’s focus on one particular embodiment or purpose
`
`cannot limit the described invention where that specification
`
`expressly contemplates other embodiments or purposes. This is
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`especially true in cases such as this, where the originally filed claims
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`are not limited to the embodiment or purpose that is the focus of the
`
`specification.
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`833 F.3d 1336, 1341-42 (Fed. Cir. 2016) (emphasis added). As in ScriptPro, the
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`specification and claims in the ’837 application do not create a requirement that
`
`one particular aspect mentioned as one of the purposes of the invention in the
`
`specification—i.e., no requirement of a multi-conductor cable—be in every claim.
`
`InVue’s selected quotations from the ’837 application do not suggest
`
`disclaimer. Notably, none of the quotations cited by InVue to support its disclaimer
`
`argument are complete sentences from the ’837 application. See Paper 1, 11-12.
`
`InVue instead selectively edited, truncated, and decontextualized the quotations to
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`conflate one of the stated benefits of the invention with some kind of disclaimer or
`
`essential element requirement. Compare id., with Ex. 1009 ¶¶ 24, 29, 36. This is
`
`improper as written description must be analyzed by reviewing the entire
`
`application, not just selected and snipped language. See Ariad Pharm., Inc. v. Eli
`
`Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); Rambus Inc. v.
`
`Infineon Techs. AG, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (“While clear language
`
`characterizing ‘the present invention’ may limit the ordinary meaning of claim
`
`terms, such language must be read in context of the entire specification and the
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`prosecution history.”) (citations omitted). As shown above, the paragraphs from
`
`which the quotations were pulled do not demonstrate an express disavowal of
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`
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`conductive tethers and, when read in context of the rest of the application, are
`
`clearly describing a benefit of a certain embodiment of the described inventions.
`
`The Federal Circuit has repeatedly recognized that there is no requirement—
`
`based on the written description requirement of § 112 or any other part of the
`
`Patent Act—that a benefit recited by the specification be a part of the claims. See
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`ScriptPro, 833 F.3d at 1342 (“Not every claim must contain every limitation or
`
`achieve every disclosed purpose.”); Carnegie Mellon Univ. v. Hoffmann-La Roche
`
`Inc., 541 F.3d 1115, 1127 (Fed. Cir. 2008) (finding the district court erred, because
`
`the lack of a claim limitation requiring not killing the bacteria used in the claimed
`
`process, which was “a reason for the claimed invention,” did not make the claim
`
`invalid for lack of written description); see also Liebel-Flarsheim Co. v. Medrad,
`
`Inc., 358 F.3d 898, 908 (Fed. Cir. 2004) (“The fact that a patent asserts that an
`
`invention achieves several objectives does not require that each of the claims be
`
`construed as limited to structures that are capable of achieving all of the
`
`objectives.”).
`
`Indeed, the decision in i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831
`
`(Fed. Cir. 2010), is similar to the situation here. There, Microsoft argued that the
`
`claims must be narrowed to require “independent manipulation” based upon
`
`statements in the specification. Id. at 843-44. But the Federal Circuit explained
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`“these statements are best understood as describing the advantages of separate
`
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`storage, the real claim limitation.” Id. at 844. While “independent manipulation”
`
`may have been an intended “benefit,” it was “not itself a limitation.” Id. Here,
`
`similarly, while an intended benefit of the inventions described in the ’837
`
`application may have been that multi-conductor cables would not be required, that
`
`benefit is not a claim limitation. The claims are limited by the actual claim
`
`limitations dealing with the puck and base (i.e., the real claim limitations), which
`
`are described as the invention throughout the ’837 application. There is no
`
`requirement in the claims that a certain type of tether or no tether be used, and
`
`none is dictated by the ’837 application.
`
`The cases cited by InVue do not support a contrary conclusion. In particular,
`
`those cases found a disclaimer to the scope regarding only the components that
`
`were improved, instead of restricting the scope to require the consequences of that
`
`improvement. For example, in Anascape, Ltd. v. Nintendo of America, Inc., the
`
`innovative aspect of the disclosure was a single-input member that accomplished
`
`the task of providing input for six degrees of freedom. 601 F.3d 1333, 1335-37
`
`(Fed. Cir. 2010). The single-input member was the invention (and not a benefit of
`
`the invention). Id. at 1336. Anascape improperly tried to flee that restrictive
`
`language in its continuation-in-part by substituting “at least one input member” for
`
`16 instances of “single input member,” even though it was clear that the
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`application’s supposed invention was the single input member itself. See id. at
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`1336-40.
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`Anascape is inapplicable to the present matter. The invention disclosed in
`
`the ’837