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`Paper 1
`Filed: November 21, 2018
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`UNITED STATES PATENT AND 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 No. 10,026,281
`
`PETITION FOR POST-GRANT REVIEW
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................... 1 
`REQUIREMENTS FOR PGR UNDER 37 C.F.R. § 42.204 .......................... 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.204(a)................................. 2 
`B.  Challenge Under 37 C.F.R. § 42.204(b) and Relief Requested ............... 2 
`C.  Claim Construction under 37 C.F.R. §§ 42.204(b)(3) .............................. 3 
`SUMMARY OF THE ‘281 PATENT ............................................................. 4 
`A.  Background ............................................................................................... 4 
`B.  Person of Ordinary Skill in the Art ........................................................... 5 
`C.  MTI’s Unsupported Priority Claims ......................................................... 5 
`1. 
`Revival of MTI’s 2009 Application Should be Revoked and/or
`Ignored ............................................................................................. 6 
`Claims 1-30 are not supported by the disclosure of the ’837
`application. .................................................................................... 10 
`IV.  KNOWN PRIOR ART .................................................................................. 14 
`A.  Deconinck (X1002) ................................................................................. 14 
`B.  Contact Charging Prior Art ..................................................................... 16 
`C.  MTI’s Wheeler Publication (X1008) ...................................................... 23 
`D.  MTI’s 2009 Virtual Store Tour Video (X1014) ..................................... 23 
`CLAIMS 1-30 ARE UNPATENTABLE ...................................................... 26 
`A.  Ground 1: Claims 1-12, 22-23, 25-27, and 30 are Rendered Obvious by
`Deconinck in View of Hotelling/Chatterjee and the Knowledge in the
`Art 26 
`1. 
`Independent Claims 1, 25, and 30 ................................................. 26 
`2.  Dependent Claims 2-12, 22-23, 26-27 .......................................... 37 
`
`2. 
`
`V. 
`
`i
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`

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`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`B.  Grounds 2 and 3: Dependent Claims 13-21, 24, 28-29 are Obvious in
`View of Deconinck and Hotelling/Chatterjee (Ground 2) and in further
`view of Darwinkel/Taylor (Ground 3), along with the Knowledge in the
`Art.
` ....................................................................................................... 44 
`C.  Grounds 4 and 5: Claims 1-30 are Anticipated by Wheeler and Obvious
`in View of the MTI Video and the Knowledge in the Art ...................... 69 
`VI.  NO OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS ......................... 90 
`VII.  PAYMENT OF FEES – 37 C.F.R. § 42.203 ................................................. 90 
`VIII.  CONCLUSION .............................................................................................. 91 
`IX.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 91 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 91 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 91 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 91 
`D.  Service Information ................................................................................ 92 
`
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`
`ii
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`

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`X1001
`
`X1002
`
`X1003
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`X1004
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`X1005
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`X1006
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`X1007
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`X1008
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`X1009
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`X1010
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`X1011
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`X1012
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`X1013
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`X1014
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`X1015
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`X1016
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`X1017
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`X1018
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`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`
`EXHIBITS
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`U.S. Patent No. 10,026,281 (Henson)
`
`U.S. Patent No. 7,327,276 (Deconinck)
`
`U.S. Patent No. 7,352,567 (Hotelling)
`
`U.S. Patent App. Pub. No. 20100081473 (Chaterjee)
`
`Expert Declaration of H. Direen
`
`International Patent Pub. No. WO2009001273 (Darwinkel)
`
`U.S. Patent No. 6,314,236 (Taylor)
`
`U.S. Patent App. Pub. No. 20140159898 (Wheeler)
`
`U.S. Patent App Ser. No. 12/351,837 – Published (Henson)
`
`Henson ‘281 Patent Prosecution History – Priority Change
`
`InVue’s Answer to Complaint – California Litigation
`
`U.S. Patent No. 7,710,071 (Rodarte)
`
`Judicial Admission of Video Publication Date
`
`MTI Video.mp4
`
`2009 Virtual Store Tour Video Transcript
`
`MTI Admission of Video Publication
`
`U.S. Patent No. 3,274,631 (Spohr)
`
`IPR2018-00481 Paper No. 1
`
`iii
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`

`

`X1019
`
`Curriculum Vitae of Harry Direen
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`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`
`X1020
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`X1021
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`X1022
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`X1023
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`X1024
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`X1025
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`X1026
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`X1027
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`X1028
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`X1029
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`X1030
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`X1031
`
`X1032
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 3,840,795 (Roszyck)
`
`U.S. Pat. App. Pub. No. 2009032278 (Franks)
`
`U.S. Patent No. 8,558,688 (Henson)
`
`U.S. Patent App. Pub. No. 20080204239 (Marszalek)
`
`March 2010 MTI LP3 Product Manual
`
`‘281 Patent File History
`
`‘837 Patent Application Select File History
`
`Excerpt of MTI Petition in IPR2017-01901
`
`U.S. Patent App. Ser. No. 12/819,944 (MTI)
`
`InVue’s Answer to Complaint – N.C. Litigation
`
`MTI Office Action Response – ‘837 Application
`
`Text Comparison – ‘281 Patent and ‘898 Publication
`
`ADS filed in U.S. Pat. Appl. No. 14/092,845 (Wheeler)
`
`
`
`iv
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`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`
`I.
`
`INTRODUCTION
`InVue Security Products, Inc. (“Petitioner” or “InVue”) petitions for Post-
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`Grant Review (“PGR”) under 35 U.S.C. §§ 321–329 and 37 C.F.R. §42 of claims
`
`1-30 of U.S. Patent No. 10,026,281 (“the ‘281 patent,” X1001). The ‘281 patent is
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`generally directed to displays for powering and securing electronic devices in a
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`retail setting. Such systems, well-known before the ’281 patent, generally included
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`(i) a base for receiving and distributing power, (ii) a puck with a security sensor for
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`monitoring the electronic device, and (iii) a retractable tether connecting the puck
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`and base so that the device could be “lifted” from the base and viewed by the
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`consumer while remaining secured by the tether (see generally X1001, 1:19-60).
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`Prior art tether retractors included “multi-conductor” tethers for providing
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`power and signals between the puck and base (X1001, 2:24-29). The ’281 patent
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`thus alleges “a long-felt need to eliminate” such tethers and describes as its alleged
`
`invention a device with no tether conductors where power is provided by charging
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`on the base and security condition signals are transmitted wirelessly from the puck
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`(X1001, 3:23-26, 4:6-10, 53-59, 5:50—6:25).
`
`This assertion of a “long felt need,” however, was not correct. Because
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`display devices with pucks that charge when resting on the base and that transmit
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`security signals wirelessly from the puck were well-known before the earliest ’281
`
`patent priority date, InVue respectfully requests that claims 1-30 be found
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`unpatentable and cancelled.
`
`1
`
`

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`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`II. REQUIREMENTS FOR PGR UNDER 37 C.F.R. § 42.204
`A. Grounds for Standing Under 37 C.F.R. § 42.204(a)
`The ’281 patent is eligible for PGR.1 InVue is not barred or estopped from
`
`requesting review of the claims or grounds in this petition.
`
`B. Challenge Under 37 C.F.R. § 42.204(b) and Relief Requested
`InVue requests claims 1-30 be found unpatentable as follows:2
`
`Ground 1: Deconinck (X1002) renders obvious claims 1-12, 22-23, 25-27,
`and 30 in combination with Hotelling (X1003) and/or Chatterjee
`(X1004) under 35 U.S.C. §103
`Ground 2: Deconinck renders obvious Claims 13-21, 24, and 28-29 in
`combination with Hotelling and/or Chatterjee under 35 U.S.C.
`§103
`Ground 3: Deconinck renders obvious Claims 13-21, 24, and 28-29 in
`combination with Hotelling/Chatterjee and further in view of
`Darwinkel (X1006) and/or Taylor (X1007) under 35 U.S.C. §103
`Ground 4: MTI’s Wheeler publication (X1008) anticipates Claims 1-30
`under 35 U.S.C. § 102(a)(1)
`
`
`1 The ’281 patent was examined under the American Invents Act (AIA) (X1025,
`65). The ’281 patent claimed priority originally to AIA applications, including the
`’140 patent filed July 27, 2016 and Wheeler (X1008) filed November 27, 2013
`(see X1025, 79-80). MTI admitted that Wheeler was an AIA application (X1032,
`3). Further, the claims of the ’281 patent have an effective filing date after March
`16, 2013 (see Section III.C.).
`2 The USPTO did not substantively address this prior art during prosecution of the
`’281 patent.
`
`2
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`Ground 5: MTI’s 2009 Video publication (X1014) anticipates Claims 1-30
`under 35 U.S.C. §102(a)(1) and/or renders these Claims Obvious
`under 35 U.S.C. §103
`
`
`Additional explanation and support is set forth below and in the Declaration of
`
`Harry Direen, Ph.D. (X1005) referenced throughout this Petition.
`
`C. Claim Construction under 37 C.F.R. §§ 42.204(b)(3)
`At this time, InVue submits the only construction at issue is “tether
`
`assembly,” recited in all claims. InVue reserves the right to oppose any
`
`constructions that MTI may suggest.
`
`MTI’s priority application disclaimed tethers with any conductors as part of
`
`the tether assembly between the base and puck (see Section III.C.1.). MTI’s ’281
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`patent, however, sought to reclaim this subject matter. Claim 7 of the ’281 patent
`
`expressly recites that the “tether assembly [recited in claim 1] comprises a
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`retractable tether that does not include multiple conductors.” Similarly, Claim 23
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`recites “a retractable tether that does not provide power,” and Claim 27 recites a
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`“tether that does not provide power … and does not communicate the security
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`condition signal.” Thus, claims 1, 25, and 30 can be read to cover a “tether
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`assembly” with multi-conductors as a result of MTI’s attempt to reclaim this
`
`3
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`subject matter through claim differentiation.3 See EcoLab, Inc. v. Paraclipse, Inc.,
`
`285 F.3d 1362, 1375 (Fed. Cir. 2002), reh’g denied, 2002 U.S. App. LEXIS 13287.
`
`III. SUMMARY OF THE ‘281 PATENT
`A. Background
`Displays for electronic devices having a base, puck, and tether were well-
`
`known (X1001, 1:26-53). The patent asserts that problems existed with “multi-
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`conductor” tethers (X1001, 2:24-29). The ’281 patent proposes a mechanical
`
`tether that “lacks conductor wires” (id. at 6:13-15), where the puck is charged
`
`when it is “at rest” on the base (id. at 11:1-3) and security signals are
`
`communicated wirelessly (id. at 5:8-14). The ’281 patent confirms that “there is
`
`no power or power signal delivered to the puck via the mechanical tether because it
`
`lacks conductor wires” (X1001, 6:13-15). The priority application to the ‘281
`
`patent makes this express, disparaging and disclaiming conductor cables in the
`
`
`3 While MTI wrote the claims to include conductors in a “tether assembly,” InVue
`does not concede the effectiveness of the attempt. Claim differentiation cannot
`broaden a narrowly defined invention. Cave Consulting Grp., LLC
`v. OptumInsight, Inc., No. 17-1060, 725 Fed. Appx. 988, 995 (Fed. Cir. Mar. 21,
`2018) (“[T]he specification … distinguishes its invention from [the prior art], []
`pointing out what the invention does not use.”). Here, the “tether assembly” in
`claims 1-30 either (i) do not include a tether with a conductor based on the
`statements in the priority application or (ii) cover subject matter not supported by
`the 2009 priority application (see Section III.C.2.).
`4
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`tether (see Section III.C.2.). Accordingly, instead of using tethers with
`
`conductors, the ’281 patent claims power transfer to the puck through electrical
`
`contacts on the base and puck assembly and wireless security signals (X1001, 5:8-
`
`14, 6:15-18, 41-50).
`
`B.
`Person of Ordinary Skill in the Art
`The ’281 patent discloses microprocessors (or microcontrollers), electronic
`
`circuitry, and embedded software. A person of ordinary skill in the art (POSITA)
`
`would have had the equivalent of a four-year degree (e.g., B.S. degree) in electrical
`
`engineering, computer engineering, computer science, mechanical engineering,
`
`industrial technology, or other similar technology or engineering degrees (X1005,
`
`29-36). A POSITA would also have approximately two to five years of
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`professional experience and be trained in electronics including microcontrollers,
`
`and embedded programming for microcontrollers (id.). A POSITA would also: (1)
`
`be familiar with turning flowcharts and operational descriptions into working
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`software/firmware; (2) be familiar with asynchronous serial communications; and
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`(3) be adept at turning design concepts into working products (id.). MTI has
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`conceded in other IPR proceedings that such education and experience would be
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`representative of a POSITA for technology relating to display and security systems
`
`for electronic devices (see IPR2018-00481, Paper 1, 11-12; Ex. 1018, ¶23).
`
`C. MTI’s Unsupported Priority Claims
`The ’281 patent is a continuation-in-part and claims sole priority to U.S.
`
`5
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`Appl. No. 12/351,837 (“the ’837 application”), filed January 10, 2009 and
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`published February 22, 2018 (X1009). The ’837 application, however, was both
`
`filed and abandoned by MTI in 2009. Over eight years later, in July of 2017,
`
`MTI sought revival of this application solely based on a declaration filed by MTI’s
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`prior counsel that fails to set forth facts demonstrating MTI’s abandonment was
`
`unintentional (X1026, 45-53). The revival of the ’837 application was thus in error
`
`and cannot support MTI’s priority claim.
`
`Further, the ’281 patent claims are not supported by the ’837 application.
`
`The ’837 application disparaged and disclaimed multiple conductor tethers.
`
`Claims 1, 25, and 30 of the ’281 patent, however, recite a “tether assembly” that
`
`can be read to cover multiple conductors. As such, claims 1-30 have an effective
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`filing date as of November 29, 2017.
`
`1.
`
`Revival of MTI’s 2009 Application Should be
`Revoked and/or Ignored
`The ’281 patent originally claimed priority to a first series of continuations
`
`and continuations-in-parts to application number 12/819,944 (“the ’944
`
`application”), filed June 21, 2010 (X1028, 244). The ’281 patent also claimed
`
`priority through the ’837 application filed on Jan. 10, 2009 (see X1009, 245).
`
`On December 13, 2017, in litigation against InVue by MTI regarding U.S.
`
`Patent No. 9,786,140 (“the ’140 patent”), InVue asserted inequitable conduct
`
`relating to MTI’s non-disclosure of a video published by MTI in 2009 (see Section
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`6
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`IV.D.) affecting the patentability of MTI’s patents in the first series (X1011, 45-
`
`127; X1029). Thereafter, on April 20, 2018, MTI abandoned all priority claims in
`
`the first series and sought to proceed based solely on its claim to the ’837
`
`application (see X1025, 39-40, 51-52). Hence, MTI attempted to “sanitize” the
`
`‘281 patent of inequitable conduct by alleging that all claims of the ’281 patent
`
`were supported solely by the ‘837 application (see X1025, 39-64).
`
`The ’837 application, however, cannot support priority for the ’281 patent
`
`because the ’837 application was abandoned in 2009 (shortly after it was filed)
`
`and revived only eight-years later (shortly before the ’281 patent was filed)
`
`through a petition that failed to provide facts sufficient to show unintentional
`
`abandonment under 37 CFR §1.137. Specifically, in October 2009, MTI failed to
`
`respond to a Notice of Missing Parts for the ’837 application, and the USPTO
`
`mailed a Notice of Abandonment (X1026, 114). From October 2009 forward—
`
`and for nearly eight years—neither MTI nor its attorneys mentioned the ’837
`
`application. This is despite MTI and the same inventors prosecuting additional
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`patent applications in mid-2010, eight-months after the ’837 application Notice of
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`Abandonment was mailed (see X1008 (listing MTI’s applications filed from June
`
`21, 2010)). Notably, MTI did not explain in its petition for revival whether MTI or
`
`the named inventors knew of the lapse of the ’837 application when MTI began
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`prosecution applications again in 2010 or at any time thereafter.
`
`MTI filed for revival of the ’837 application on July 17, 2017—after InVue
`7
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`and MTI became involved in litigation (X1026, 45-53). In support, MTI offered
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`only a four-page declaration from its prior attorney (Bruce Kaser) claiming that the
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`application was unintentionally abandoned, which was premised on the attorney’s
`
`filing of the application on a weekend and the attorney moving offices around the
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`2000 time-frame (see id. at 48-53). No other explanation beyond this declaration
`
`was given for the alleged unintentional abandonment or delay. Indeed, no
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`evidence at all was provided from any of the inventors or anyone at MTI stating
`
`that the abandonment had not been intentional. Nor was any explanation given as
`
`to why MTI first discovered the abandoned application in 2017 (seven years after
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`prosecution began on other MTI applications).
`
`37 CFR §1.137(a) requires a showing that the “entire delay in filing the
`
`required reply … was unintentional” (see X1026, 43 n.2). The conclusory, four-
`
`page declaration by MTI’s prior counsel averring to his supposed belief as to the
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`unintentional abandonment provides no factual information as to the inventor’s or
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`assignee’s beliefs or intentions at all (see X1026, 53 (“I believe the abandonment
`
`of this patent application was unintentional….”) (emphasis added)).4 As such,
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`InVue submits that the USPTO erred in granting the revival of the ’837 application
`
`on which the ’281 patent relies solely for priority. Because MTI’s petition for
`
`
`4 37 CFR 1.137 requires an affirmative statement that “the entire delay in filing …
`was unintentional” (X1026, 43 n. 2).
`
`8
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`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`revival did not provide facts sufficient to show that MTI did not intend to abandon
`
`the application between 2009 and 2017, InVue submits that the revival of the ’837
`
`application should be revoked and/or ignored for purpose of this proceeding.
`
`InVue submits that the PTAB is the proper forum for bringing a challenge to
`
`an error relating to improperly revived priority applications. The PTAB and post-
`
`grant review process were created to correct errors of the Director (see 37 CFR
`
`41.31), of which improper priority comprises one such error. See, e.g., U.S.
`
`Endodontics, LLC v. Gold Standard Instruments, LLC, PGR 2015-00019, Paper
`
`54, 2016 Pat. App. LEXIS 13328 at *53) (priority assessed as part of ground).
`
`Indeed, just as the Director’s decisions to allow a patent application are reviewed
`
`through a PGR proceeding, the Director’s decision to allow a Patent Owner to
`
`reverse history without providing evidence of actual unintended abandonment
`
`should likewise be reviewed and scrutinized.
`
`Under 35 U.S.C. §324, a PGR may be instituted if “the petition raises a
`
`novel or unsettled legal question that is important to other patents or patent
`
`applications.” Here, the issue of revival of an application abandoned eight years
`
`ago (and revived amidst the backdrop of litigation between competitors) raises
`
`unsettled legal questions about when and where such challenges can be mounted,
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`affecting not only the ’281 patent, but other patent applications filed by MTI.
`
`Further, because agency decisions on issues such as unintentional abandonment are
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`typically given deference by the courts, see Click-To-Call Techs., LP v. Ingenio,
`9
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`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`Inc., YellowPages.com, LLC, 899 F.3d 1321, 1329 (Fed. Cir. 2018), this
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`proceeding is the best (if not only) forum in which the impropriety of MTI’s
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`revival can be contested.
`
`While the Board has previously declined to consider issues around a petition
`
`to revive in an IPR, see Apple Inc. v. E-Watch, Inc., IPR2015-00411, Paper 12,
`
`here the Board can address whether the more limited nine-month period for PGRs
`
`allow for challenge of a grant of revival when there appears to be no other avenue
`
`for such a challenge under the APA or in federal court. Further, while the Federal
`
`Circuit has found that a third party may not obtain judicial review of a PTO revival
`
`ruling, such decisions do not address the properness of assessing revivals within
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`the PGR context under 35 U.S.C. §324. See Exela Pharma Sciences, LLC v. Lee,
`
`781 F.3d 1349, 1351 (Fed. Cir. 2015). Moreover, as set forth in Judge Dyk’s
`
`dissenting opinion, there are important practical reasons why “en banc action to
`
`reconsider” the Federal Circuit’s prior decisions as to third party attack on revival
`
`applications “may [also] be appropriate.” 781 F.3d at 1356. As such,
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`consideration of this issue by the Board is warranted here.
`
`2.
`
`Claims 1-30 are not supported by the disclosure of the
`’837 application.
`“For a claim in a later-filed application to be entitled to the filing date of an
`
`earlier application … the earlier application must comply with the written
`
`description requirement of 35 U.S.C. § 112(a).” Tronzo v. Biomet, Inc., 156 F.3d
`
`10
`
`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`1154, 1158 (Fed. Cir. 1998) (citations omitted). During prosecution of the ‘281
`
`patent, MTI asserted that claims 1-30 were supported by the ‘837 application and
`
`thus entitled to the 2009 priority date (X1025, 52). As noted in Section II.C.,
`
`however, MTI has sought to expand the term “tether assembly” in claims 1-30 to
`
`cover tethers with conductors. Because tether assemblies with conductors were
`
`disclaimed and disavowed in the ’837 application, claims 1-30 are not supported
`
`by the ’837 application disclosure. Indeed, “[w]here the specification makes clear
`
`that the invention does not include a particular feature, that feature is deemed to be
`
`outside the reach of the claims of the patent.” SciMed Life Sys., Inc. v. Advanced
`
`Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see also Watts v.
`
`XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000) (stating “one purpose for
`
`examining the specification is to determine if the patentee has limited the scope of
`
`the claims.”).
`
`Here, the’837 application makes clear that the alleged invention did not
`
`include tether assemblies with conductors (X1009, ¶[0015-0020], [0024], [0079]).
`
`Indeed, MTI disparaged multi-conductor cables as having “problems relat[ing] to
`
`wear and tear” (id. at ¶[0015]); “not physically robust” (id. at ¶[0017]); “less
`
`secure” than mechanical-only tethers (id. at ¶[0019]); and “lead[ing] to [] electrical
`
`connection problems” (X1009, ¶[0008]-[0009]). MTI then expressly framed the
`
`“present invention” as not including such prior art cables, stating unequivocally:
`
` “[t]he present invention is differentiated from prior designs
`11
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`

`

`Attorney Docket. No. 10463-023PGR
`PGR2019-00019
`because it successfully eliminates the need or requirement for a
`
`multi-conductor retractor cable….” (X1009, ¶[0024] (emphasis
`
`added));
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` “the present design wirelessly severs the puck-mounted power
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`and alarm circuitry from prior reliance on conductor wires in a
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`retractor cable” (X1009, ¶[0036] (emphasis added)); and
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` the “arrangement eliminates the need for the kinds of multi-
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`conductor retractor cables used in earlier designs, along with
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`the drawbacks attached to the same” (X1009, ¶[0029]).
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`Accordingly, by disparaging and emphasizing the absence of multi-
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`conductor tethers in its alleged invention, MTI affirmatively disclaimed and
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`limited its invention to tether assemblies without conductors. See, e.g., Hill-Rom
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`Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed Cir. 2014) (finding disclaimer
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`“when the specification described [a] feature as a ‘very important feature in an
`
`aspect of the present invention’” and “disparaged alternatives to that feature”).
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`Notably, MTI did not differentiate between conductors that provide power or
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`security; rather, MTI made clear that all conductors have disadvantages and that its
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`alleged invention eliminated conductors for power and security. Therefore, MTI
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`unequivocally stated what their invention was and was not—entitling the public to
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`rely on such statements as defining the alleged invention. See, e.g., SciMed Life
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`Sys., 242 F.3d at 1341.
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`Under analogous facts, the Federal Circuit has found a lack of written
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`description support in a priority application. In Anascape, Ltd. v. Nintendo of Am.
`
`Inc., the court found that claims reciting a video game controller with multiple
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`input members lacked written description support in a priority application that
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`disparaged controllers with such features and described as its invention a controller
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`with only single input members. 601 F.3d 1333, 1341 (Fed. Cir. 2010). In so
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`finding, the court noted that the priority application affirmatively limited its
`
`alleged invention because (1) the references to prior art were not “not a description
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`of the [] invention” (id. at 1336-37); (2) the priority application “stresse[d] the
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`advantages of using [the alleged invention]” (id.); and (3) the priority application
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`“describe[d] the use of [the prior art features] as having ‘significant
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`disadvantages’” (id. at 1337). Thus, just as in Anascape, MTI’s claims here should
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`be found to lack written description support in the ’837 application in view of the
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`priority document’s disparaging and disclaiming statements as to multi-conductor
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`tether assemblies.
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`Because MTI alleges that the ’281 patent claims are supported by the ’837
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`application, it cannot ignore the “bad” parts of the priority disclosure in favor of
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`the “good” parts. MTI cannot have it both ways by contending that it is entitled to
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`the priority date of the ‘837 application while disregarding how MTI described its
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`invention in the same application. Indeed, clear disclaimers made in a parent
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`application cannot be rectified by a later filed continuation-in-part application. See
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`Attorney Docket. No. 10463-023PGR
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`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003).
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`Accordingly, because MTI has sought to extend the claims of the ’281 patent
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`to include a “tether assembly” that is expressly disparaged and disclaimed by the
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`’837 application, claims 1-30 should be found to lack written description support in
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`the ’837 application.
`
`IV. KNOWN PRIOR ART
`A discussion of features disclosed in the primary references and the known
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`prior art is provided below.
`
`A. Deconinck (X1002)
`Deconinck5 discloses a device for displaying electronics comprising a stand
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`assembly 10 (“base”) that supports a housing 30 (“puck”) in the rest position
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`(X1002, Abstract, 6:31-39, Figure 1).
`
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`5 Deconinck (X1002) is prior art under 35 U.S.C. §102(a)(1).
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`Attorney Docket. No. 10463-023PGR
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`
`
`Deconinck discloses sending a security condition signal “via an electrically
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`conducting wire or wirelessly” (X1002, 11:25-28). In wireless embodiments,
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`“[p]ower for the handheld electronic device 200, sensor, output voltage controller
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`40 and other housing 30 circuitry is provided by [an] internal rechargeable battery
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`44 which is charged by non-contact means when housing 30 is seated in stand
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`assembly 10” (X1002, 9:30-34), such as shown in Figure 18:
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`15
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`Attorney Docket. No. 10463-023PGR
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`
`
`Deconinck further discloses a retractable cable that “may be a single …
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`[conductor] cable” and “may provide power to handheld electronic device 100 and
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`or a means for communicating with a sensor which produces a detectable signal
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`when the handheld electronic device 200 is moved from an authorized state”
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`(X1002, 12:21-40). The cable may also “serve only as a mechanical tether for
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`securing housing 30 to the system” (X1002, 9:37-40, 12:43-47).
`
`B. Contact Charging Prior Art
`Independent claims 1, 25, and 30 recite electrical contacts on the puck and
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`base assemblies for charging the puck when in the resting position. Electrical
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`contacts were well-known means for providing power from a base to an electronic
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`device (X1005, ¶¶49-52). Spohr discloses this as early as the mid-1960s (X1017,
`
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`Attorney Docket. No. 10463-023PGR
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`1:41-45). Marszalek6 likewise discloses a system that charges a battery in a puck
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`(“head”) via an electrical connection when “located on the display stand” so that
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`the puck can transmit security signals wirelessly when lifted from the stand (see
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`X1023, Abstract, ¶[0007], ¶[0042], ¶[0076]). And as discussed, Deconinck
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`discloses charging a battery in its puck by wireless induction transfer from the base
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`(see Section IV.A.).
`
`A POSITA would have known that electrical contacts were an obvious
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`substitute for wireless induction for power transfer between components (X1005,
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`¶¶48-63, 69-70, 87-98). Roszyk,7 issued in 1974, provided “inductive coupling
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`means” to replace “charging unit contacts” (X1020, 2:42-47) for charging a
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`rechargeable battery via a base. Additional prior art confirms this substitution:
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`Hotelling8 states that “inductive charging units have been implemented” in place
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`of electrical contacts (X1003, 1:20-47); Chatterjee,9 discloses that “an alternative
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`to a continuously conductive signal path … is inductive or transductive” power
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`transfer (X1004, ¶[0096]); Franks,10 states that “charging and/or powering may be
`
`performed using inductive charging as opposed to direct conductive charging”
`
`
`6 Marszalek (X1023) is prior art under 35 U.S.C. §102(a)(1).
`7 Roszyk (X1020) is prior art under 35 U.S.C. §102(a)(1).
`8 Hotelling (X1003) is prior art under 35 U.S.C. §102(a)(1).
`9 Chatterjee (X1004) is prior art at least under 35 U.S.C. §102(a)(2).
`10 Franks (X1021) is prior art at least under 35 U.S.C. §102(a)(2).
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`Attorney Docket. No. 10463-023PGR
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`(X1021, 5:12-15); and Marszalek specifies no required power transfer means
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`between the base and puck, implicitly disclosing all known means (X1023,
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`¶[0067]; X1005, ¶¶57-58).
`
`MTI has acknowledged that electrical contacts would have been an obvious
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`substitute for induction coils, affirming in a related application that “wire-to-wire”
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`contacts and “inductive transmitter and receiver coils” are interchangeable ways to
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`“accomplish the same functions” (X1022, 15:35-47, 64-67)11 and arguing in
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`proceedings before the Board that replacing wireless means with electrical contacts
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`was an been obvious substitution (see X1027, 2-3).
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`As such, electrical contacts for charging were both (i) known and (ii) known
`
`to be interchangeable with wireless induction means – making the substitution
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`obvious to a POSITA. See, e.g., In re Kuhle, 526 F.2d 553, 555 (C.C.P.A. 1975)
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`(“[U]se of [] a means of electrical connection in lieu of those [] in the references …
`
`would be an obvious matter of design choice….”).
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`Further, the prior art recognized a benefit to providing multiple contacts in a
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`circumferential arrangement for charging electronic devices on display. This
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`design preference can be dated back to at least 1963, where Spohr provided for
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`charging an electronic device using a “cup-shaped contact 104” and “fingers 114”
`
`
`11 A later disclosure can be used to show state of prior art. In re Hogan, 559 F.2d
`595, 605 (C.C.P.A. 1977).
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`18
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`Attorney Docket. No. 10463-023PGR
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`on the electronic device (X1017, 8:29-52, 10:8-14), allowing the user to “merely
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`drop