Trials@uspto.gov
`571.272.7822
`
`Paper No. 19
`Filed: March 24, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`IMATION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00066
`Patent 6,890,188 B1
`____________
`
`
`
`Before KEVIN F. TURNER, STACEY G. WHITE, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`Kingston Technology Company, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 10–14 and 20 of U.S. Patent
`No. 6,890,188 B1 (Ex. 1001, “the ’188 patent”). Paper 2 (“Pet.”). Pursuant
`to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
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`IPR2015-00066
`Patent 6,890,188 B1
`claims 10–14 and 20, and instituted an inter partes review of these claims on
`certain asserted grounds of unpatentability. Paper 6 (“Inst. Dec.”). Patent
`Owner Imation Corporation (“Patent Owner”) filed a Patent Owner
`Response. Paper 11 (“PO Resp.”). Petitioner filed a Reply to Patent
`Owner’s Response. Paper 12 (“Reply”). An oral hearing was held on
`January 15, 2016, pursuant to requests by both Petitioner and Patent Owner.
`Paper 18 (“Tr.”); see Papers 14–16.
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine Petitioner
`has not proven by a preponderance of the evidence that claims 10–14 and 20
`of the ’188 patent are unpatentable. See 35 U.S.C. § 316(e).
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties indicate that Patent Owner asserted the ’188 patent against
`
`Petitioner in the U.S. District Court for the District of Minnesota, No. 14-cv-
`1385. Pet. 1; Paper 5. The ’188 patent also is the subject of another pending
`inter partes review, IPR2015-01557, filed by Sony Corporation (“Sony”).
`See IPR2015-01557, Decision – Institution of Inter Partes Review (PTAB
`Jan. 4, 2016) (Paper 7) (“IPR2015-01557 Inst. Dec.”).
`B. THE ’188 PATENT
`The ’188 patent is directed to a memory card that includes both a
`device connector, conforming to a device connection standard, and a host
`connector, conforming to a host connection standard. Ex. 1001, [54], [57],
`1:61–2:6, 3:58–61. For example, the device connector may conform to a
`Memory Stick (“MS”), MultiMediaCard (“MMC”), or Secure Digital
`(“SD”) standard, whereas the host connector may conform to a Universal
`
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`IPR2015-00066
`Patent 6,890,188 B1
`Serial Bus (“USB”) standard, such as a “USB tab without a conventional
`electrical shield.” Id. at 2:6–10, 3:61–4:9, 12:18–21.
`The dimensions of the memory card, including height, width, and
`thickness, “may substantially conform” to dimensions defined by a memory
`card standard. Id. at 2:11–12, 4:30–32. The memory card, however, may
`include “irregularities” in its shape “that are not consistent with the form
`factor of the memory card standard.” Id. at 2:12–18, 4:32–40.
`The memory card may “include a cover to fit over the host
`connector.” Id. at 2:19–20, 4:10–23. With the cover over the host
`connector, the form factor of the memory card conforms to a “form factor of
`the memory card standard.” Id. at 2:20–22. The cover may be removable or
`secured to the housing with a hinge. Id. at 6:24–27, 6:63–64; see id. at
`Fig. 4A, Fig. 5A.
`Figure 2 of the ’188 patent is reproduced below.
`
`
`Figure 2 depicts “a perspective view of . . . exemplary” memory card 10
`with housing 11, device connector 12, shieldless tab 13, and cover 19. See
`id. at 3:38–40, 4:43–46, 6:18–23. Shieldless tab 13, which “protrud[es]
`from the housing,” “is one example of a host connector in accordance with
`the [disclosed] invention.” Id. at 4:43–47.
`
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`IPR2015-00066
`Patent 6,890,188 B1
`
`C. ILLUSTRATIVE CLAIM
`Claim 10, the only independent claim of the ’188 patent challenged in
`the Petition, is illustrative of the claimed subject matter:
`10. A memory card comprising:
`a housing;
`a memory in the housing;
`a device connector accessible through the housing, the device
`connector conforming to the device connection standard and
`allowing access to the memory by a device compatible with
`the device connection standard;
`a host connector protruding from the housing, the host
`connector conforming to a host connection standard and
`allowing access to the memory upon insertion of the host
`connector into a computer interface compatible with the host
`connection standard; and
`a cover to cover the host connector, wherein the housing and
`the cover collectively define a form factor of the memory
`card that substantially conforms to a form factor of the
`memory card standard.
`Id. at 13:39–14:6.
`D. INSTITUTED GROUNDS OF UNPATENTABILITY
`We instituted an inter partes review of the ’188 patent on the
`following grounds of unpatentability asserted in the Petition. Inst. Dec. 16.
`Claim[s]
`Basis
`Reference[s]
`10–13 and 201 § 1022 European Patent Application EP 1333531 A1
`
`
`1 The Petition also challenged claim 14 under 35 U.S.C. § 102 based on
`Yen. See Pet. 3, 18, 29. We, however, did not institute review of claim 14
`on this asserted ground, because we determined that the Petition did not
`show a reasonable likelihood that Petitioner would prevail in establishing
`that Yen anticipated the claim. See Inst. Dec. 13–14; Ex. 1001, 14:27–28.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29
`(2011), revised 35 U.S.C. §§ 102–103, effective March 16, 2013. Because
`the ’188 patent has an effective filing date before this date, we refer to the
`pre-AIA versions of §§ 102 and 103.
`
`
`
`4
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`IPR2015-00066
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`Claim[s]
`Basis
`
`14
`
`Reference[s]
`(published Aug. 6, 2003) (Ex. 1002, “Yen”).
`§ 103 Yen and U.S. Patent No. 6,763,410 B2 (filed Mar.
`10, 2003) (issued July 13, 2004) (Ex. 1005, “Yu”)
`
`U.S. Patent No. 6,813,164 B2 to Yen (“Yen ’164 patent”), which shares a
`common written description with Yen, was cited by the examiner during the
`prosecution of the ’188 patent. See Ex. 1001, [56]; Ex. 2007, 54; Ex. 2008.
`II. ANALYSIS
`A. LEVEL OF ORDINARY SKILL IN THE ART
`We begin our analysis by addressing the level of ordinary skill in the
`art. Although the parties’ briefing does not address the issue, each party’s
`expert opines as to the level of ordinary skill in the art. Specifically,
`Petitioner’s expert, Andrew Wolfe, Ph.D., proposes that a person of ordinary
`skill in the art would have had: (1) “a Bachelor[] of Science degree in
`Electrical Engineering or the equivalent,” and (2) “two to four years of
`practical experience in digital electronics, including standard-conforming
`devices with flash memory.” Ex. 1006 (“Wolfe Decl.”) ¶ 38. Patent
`Owner’s expert, Kenneth W. Fernald, Ph.D., takes the position that a person
`of ordinary skill would have had: (1) “the equivalent of a four-year degree
`in electrical engineering,” and (2) “four years of experience in technologies
`relevant to memory storage systems.” Ex. 2004 (“Fernald Decl.”) ¶ 31.
`We see no meaningful difference in the substance of each expert’s
`opinion regarding the education required to qualify as a person of ordinary
`skill in the art. As to work experience, however, we agree with Dr. Wolfe
`that only two to four years of relevant experience is required to be a person
`of ordinary skill in the art, rather than four years as proposed by
`
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`Dr. Fernald.3 Accordingly, based on our review of the ’188 patent, the
`problems and solutions described in the patent, the prior art involved in this
`proceeding, and the testimony of the parties’ experts, we conclude that a
`person of ordinary skill in the art at the time of the claimed invention would
`have had: (1) the equivalent of a Bachelor of Science or other four-year
`degree in electrical engineering, and (2) two to four years of practical
`experience related to memory storage devices and relevant industry
`standards. See, e.g., Ex. 1001, [57], 1:5–9, 2:1–10, 5:15–28, 12:22–38,
`12:56–13:9, 13:39–14:6.
`
`B. CLAIM CONSTRUCTION
`We next address the meaning of the claims. We interpret claims in an
`unexpired patent using the “broadest reasonable construction in light of the
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b).
`Under this standard, we presume a claim term carries its “ordinary and
`customary meaning,” which “is the meaning that the term would have to a
`person of ordinary skill in the art in question” at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`1. “host connector”
`We did not construe the term “host connector,” as recited in claim 10,
`in our Decision on Institution. Neither Petitioner nor Patent Owner has
`proffered a construction for the term. At the oral hearing, however,
`Petitioner represented that its theory for the ground of anticipation by Yen
`turns on the construction of “host connector.” See, e.g., Tr. 71:22–72:11,
`
`
`3 We note that the experience required to qualify as a person of ordinary
`skill does not impact our analysis in this decision. Even if we adopted the
`proposal of Dr. Fernald, we would reach the same conclusions.
`
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`72:19–73:12.4 Accordingly, we address the proper construction of “host
`connector,” as recited in claim 10.
`Independent claims 1 and 10 each recite a “host connector,” as part of
`a “memory card,” with several requirements, namely that the host connector
`“protrud[e] from the housing,” “conform[] to a host connection standard,”
`and “allow[] access to the memory upon insertion of the host connector into
`a computer interface compatible with the host connection standard.”
`Ex. 1001, 12:64–13:1, 13:46–14:2. Claims 4 and 20, which depend from
`claims 1 and 10, respectively, add a requirement that the “host connector
`comprises a shieldless Universal Serial Bus (USB) tab.” Id. at 13:15–17,
`14:44–46. Accordingly, the claim language shows that the “host connector”
`recited in claim 10 is broad enough to encompass a USB tab without a
`shield. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1242 (Fed. Cir. 2003)
`(“Under the doctrine of claim differentiation,” independent claims are
`presumed to be “at least as broad as the claims that depend from them.”);
`Ex. 1001, 3:15–18, 3:65–4:1, 5:32–33.
`Dependent claims 3, 11, and 12, which depend directly or indirectly
`from claims 1 and 10, further specify the “host connection standard” to
`which the “host connector” conforms. Ex. 1001, 13:12–14, 14:7–17, 14:21–
`23. In claims 3 and 12, the “host connection standard comprises a Universal
`Serial Bus (USB) standard.” Id. at 13:12–14, 14:21–23. Claim 11, in turn,
`lists numerous standards, including “a Universal Serial Bus (USB) standard
`[and] a Universal Serial Bus 2 (USB2) standard,” any one of which may be
`the “host connection standard.” Id. at 14:7–17.
`
`
`4 In Section II.C.1.c.i, we address how Petitioner’s approach to the
`construction of this term violates various regulatory provisions.
`
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`IPR2015-00066
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`
`The remainder of the specification often restates the claim language,
`stating that the “host connector” “protrud[es] from the housing,” “conforms
`to a host connection standard,” and “allows access to the memory upon
`insertion of the host connector into a host computer interface compatible
`with the host connection standard.” Id. at 2:31–36, 2:53–58; see, e.g., 2:3–6,
`4:45–47, 7:20–22, 7:42–46, 8:25–28, 8:55–57. These statements do not
`provide additional clarity as to the meaning of the term “host connector.”
`
`The specification also explains the function of a host connector,
`namely, to couple or connect to a host computer. In contrast to conventional
`memory cards that have only a device connector and therefore require an
`adaptor or reader to be read by a host computer, the disclosed memory
`card—which also includes a host connector that “can be directly inserted
`into a host computer interface”—“can be coupled directly to a host computer
`device without using an adapter or reader.” Id. at 1:61–2:6, 2:63–3:4.
`Similarly, in discussing an embodiment of the disclosed memory card with
`additional connectors that each conform to either a device connection or host
`connection standard, the specification states that the “[e]xtra connectors
`allow memory card 80 to couple to several portable device contacts” (device
`connectors) “and several computing device ports” (host connectors). Id. at
`10:56–58. Likewise, in other “exemplary” embodiments where the host
`connector is a shieldless USB tab, the “tab connects directly to a USB port”
`and “may couple directly to a computing device’s USB port allowing
`communication between the computing device and controller 94 [of the
`memory card] without an adapt[e]r or reader.” Id. at 3:58–4:4, 10:63–67,
`11:19–22.
`
`In addition, the specification describes various “exemplary”
`embodiments in which the host connector constitutes a shieldless USB tab,
`
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`i.e., a USB tab without the conventional electrical shield. See, e.g., id. at
`3:15–18, 3:34–4:1, 4:43–47, 5:3–4, 5:32–33, 5:65–67, 6:36–42, 6:65–7:3;
`Figs. 1–9; PO Resp. 3. The specification further notes that other host
`connection standards “in which a shield is conventionally included on the
`connector” “may similarly be supported via a shieldless tab.” Id. at 4:6–9.
`
`Yet the specification makes clear that a host connector is not limited
`to a shieldless tab or, more specifically, a shieldless USB tab. Rather, the
`specification explains that although “[t]he host connector of the memory
`card has been exemplified by a shieldless USB tab,” the host connector may
`conform to a list of numerous standards, including “a Universal Serial Bus
`(USB) standard [and] a Universal Serial Bus 2 (USB2) standard,” “or the
`like.” Id. at 12:22–38; see also id. at 5:15–25 (explaining the host connector
`may conform to a list of specific host connection standards “or another host
`connector standard”). Moreover, in discussing one embodiment, the
`specification states that “shieldless tab 13 is one example of a host
`connector,” but “[i]n other examples, different types of host connectors may
`be used with or without shields.” Id. at 4:46–49. Similarly, the specification
`discloses another embodiment with a “plurality of host connectors,” which
`“may or may not comprise shieldless tabs.” Id. at 5:48–51.
`Based on our review of the ’188 patent specification, the specification
`does not evidence an attempt by the patentee to depart from the ordinary and
`customary meaning of the term “host connector.” Because we see nothing
`that further informs the meaning of the term “host connector” in the
`prosecution history, see Ex. 2007, we next consider contemporaneous
`technical dictionaries to shed light on the meaning of the term in the relevant
`art. See Phillips v. AWH Corp., 415 F.3d 1303, 1317–18 (Fed. Cir. 2005).
`THE COMPUTER GLOSSARY (9th ed. 2001) defines a “connector” as “[a]ny
`
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`plug, socket or wire that links two devices together.” Ex. 3004, 73. In
`addition, THE ILLUSTRATED DICTIONARY OF ELECTRONICS (8th ed. 2001)
`provides the following definitions of a “connector”: “1. A device that
`provides electrical connection. 2. A fixture (either male or female) attached
`to a cable or chassis for quickly making and breaking one or more circuits.”
`Ex. 3005, 141. These definitions reinforce the function of the host connector
`discussed in the specification.
`
`Accordingly, based on the record before us, we conclude that a “host
`connector,” as recited in claim 10, means a device or fixture that couples or
`connects to a host computer.
`2. “host connector protruding from the housing”
`In our Decision on Institution, we did not construe or address the
`scope of “host connector protruding from the housing,” as recited in
`claim 10. After institution, Patent Owner raised arguments regarding the
`scope of the term in the Response and Petitioner made responsive arguments
`in the Reply, which require us to address aspects of its scope. See PO
`Resp. 3–5, 24–27; Reply 1–11.5
`
`
`5 At the oral hearing, we overruled Patent Owner’s objections to Petitioner’s
`references to our construction of the “host connector protruding from the
`housing” limitation of claim 10 of the ’188 patent in the decision on
`institution in IPR2015-01557. See Tr. 5:16–8:22, 18:23–20:13, 26:24–32:9;
`IPR2015-01557 Inst. Dec., 6–10. Under the specific circumstances of this
`proceeding, we found it appropriate for both parties to have the opportunity
`to refer to and address that claim construction during the oral hearing.
`Because the decision in IPR2015-01557 issued after briefing in this
`proceeding was complete, neither party could have referenced the
`construction from that decision in their briefing. Patent Owner raised the
`same issue of the scope of the “host connector protruding from the housing”
`in its Response as in its Preliminary Response in IPR2015-01557, and
`Petitioner proffered responsive arguments in the Reply, which largely
`
`
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`IPR2015-00066
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`
`a. Alleged Boundary Requirement
`Patent Owner, in its Response, argues that the “host connector
`protruding from the housing” limitation requires that “the host connector
`must extend beyond the housing, or jut out from the housing, with a clear
`boundary line between the housing and the host connector that extends
`beyond it.” PO Resp. 3–4, 25–26 (emphasis added). Patent Owner argues
`that this is the plain and ordinary meaning of the claim language and the
`’188 patent “compels” this interpretation. Id. According to Patent Owner,
`the ’188 patent “make[s] clear” that the host connector is “distinct from the
`housing,” specifically “the housing boundary completely ends and the host
`connector protrudes beyond the boundary of the housing.” PO Resp. 3–4.
`In other words, Patent Owner appears to argue that the claim language
`requires the recited host connector and housing to be physically “distinct,”
`and does not encompass “unitary” or “continuous” pieces. See id. at 3–5,
`18, 23–24.
`Petitioner responds that “host connector protruding from the housing,”
`as recited in claim 10, is broad enough to encompass both unitary and
`separate structures for the host connector and the housing. Reply 2–7, 9–11.
`In particular, Petitioner argues that neither the ’188 patent specification nor
`the prosecution history disavows a “unitary structure with a host connector
`portion and a housing portion” without a clear boundary between the host
`
`overlap with our subsequent claim construction analysis in our decision in
`IPR2015-01557. See PO Resp. 3–5, 24–27; Reply 2–11; IPR2015-01557
`Inst. Dec., 6–10. Therefore, we found it reasonable to allow references to
`our intervening decision on the same issue of claim construction, which was
`briefed and ripe for decision in this proceeding. Moreover, we note that in
`reaching our conclusion on the claim construction in this Final Written
`Decision, we rely on the arguments and evidence presented in the parties’
`briefs and the record in this proceeding.
`
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`IPR2015-00066
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`connector and housing portions. Id. at 10; see id. at 3–5. Petitioner also
`asserts that the claim language encompasses separate host connector and
`housing structures that have been “joined together.” Id. at 2 & n.1.
`Moreover, Petitioner contends that Patent Owner’s proposed plain and
`ordinary meaning of “host connector protruding from the housing” is flawed,
`as it contradicts the intrinsic record and excludes common uses of
`“protruding from.” Id. at 3, 9–11 & n.7.
`A claim term will be interpreted more narrowly than its ordinary and
`customary meaning only under two circumstances: (1) the “patentee sets out
`a definition and acts as [its] own lexicographer,” or (2) the “patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330
`(Fed. Cir. 2012). Such redefinition or disavowal may be explicit or implicit.
`See Trs. of Columbia Univ. of New York v. Symantec Corp., 811 F.3d 1359,
`1363–64 & n.2 (Fed. Cir. 2016).
`To act as a lexicographer, the patentee “must clearly set forth a
`definition of the disputed claim term other than its plain and ordinary
`meaning,” or in other words, “must clearly express an intent to redefine the
`term.” Aventis, 675 F.3d at 1330 (internal citations and quotations omitted).
`“This clear expression . . . may be inferred from clear limiting descriptions
`of the invention in the specification or prosecution history.” Id.
`Similarly, to disavow claim scope, the specification or prosecution
`history must “make[] clear that the invention does not include a particular
`feature” and the feature is then “deemed to be outside the reach of the claims
`of the patent, even though the language of the claims, read without reference
`to the specification” or prosecution history, “might be considered broad
`enough to encompass the feature in question.” SciMed Life Sys., Inc. v.
`
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`Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001);
`see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may
`“include[] in the specification expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope.” Aventis, 675
`F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient
`“that the only embodiments, or all of the embodiments, contain a particular
`limitation.” Id. Nor is it sufficient that “the patent drawings depict a
`particular embodiment of the patent.” See Anchor Wall Sys., Inc. v.
`Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 (Fed. Cir. 2003).
`We first consider the ordinary meaning of “a host connector
`protruding from the housing.” As Patent Owner points out, MERRIAM-
`WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2003) defines “protrude” as
`“to jut out from the surrounding surface or context.” Ex. 2010, 1000;
`PO Resp. 25. Patent Owner also cites a definition of “from” in THE OXFORD
`ENGLISH DICTIONARY (2d ed. 1989), namely “[i]ndicating the starting-point
`or the first considered of two boundaries adopted in defining a given extent
`in space.” Ex. 2011, 211. This dictionary has a copyright date of 1989—
`fifteen years before the 2004 filing date of the ’188 patent. See
`Ex. 1001, [22]; Ex. 2011, 1–2.6 Thus, we also consider more
`contemporaneous definitions of “from.” See, e.g., Phillips, 415 F.3d at 1313
`(“[T]he ordinary and customary meaning of a claim term is the meaning that
`the term would have to a person of ordinary skill in the art in question at the
`time of the invention, i.e., as of the effective filing date of the patent
`application.”). The OXFORD COMPACT ENGLISH DICTIONARY (2d. ed. rev.
`2003) defines “from” as “indicating the point in space or time at which a
`
`6 Because the relevant pages in Exhibit 2011 are not numbered, the citation
`is to the page numbers of the exhibit.
`
`
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`journey, process, or action starts.” Ex. 3006, 442. THE AMERICAN
`HERITAGE DICTIONARY (4th ed. 2001) defines “from” as “[u]sed to indicate
`. . . a place or time as a starting point.” Ex. 3007, 344. Together, these
`dictionaries demonstrate that “from” indicates the space or location of a
`starting point.
`We do not agree with Patent Owner that the dictionary definitions of
`“protruding” and “from” support a narrow interpretation of the “host
`connector protruding from the housing,” requiring a “clear boundary line
`between the housing and the host connector that extends beyond it,” which
`Patent Owner proffers as the ordinary and customary meaning.
`PO Resp. 24–25; see Ex. 2010, 1000; Ex. 2011, 211; Ex. 3006, 442;
`Ex. 3007, 344. In this context, we find useful Petitioner’s analogy to a “nose
`protruding from one’s face.” Reply 10 n.7. We agree with Petitioner that in
`common usage, a nose would be considered to protrude from a face, even
`though the two parts do not have an explicit boundary, division, or other
`demarcation and are connected or molded to one another. We conclude that,
`under the ordinary and customary meaning of “protruding from,” one part
`(“host connector”) can protrude, or jut out, from another part (“housing”)
`even if the two parts combine to form a single structure or are otherwise
`attached, connected, joined, or molded to one another. See Reply 10; NTP,
`Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1309–11 (Fed. Cir. 2005),
`abrogated on other grounds by Zoltek Corp. v. United States, 672 F.3d
`1309, 1320–23 (Fed. Cir. 2012) (holding that the recited “RF receiver” and
`“destination processor” were not required to be “physically separate”
`because the claim language, including “transfer,” “connected to,” and
`“coupled to,” did not support such a narrow interpretation and instead could
`be satisfied even if the two components were not physically separate).
`
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`Having considered the ordinary and customary meaning of “host
`connector protruding from the housing,” we now consider whether the
`specification or the prosecution history redefines the term or disavows its
`scope. We conclude that they do not.
`Beginning with the claims, independent claim 1, like claim 10, recites
`“[a] memory card comprising: a housing” and “a host connector protruding
`from the housing.” Ex. 1001, 12:55–64, 13:39–46. Neither claim 10 nor
`claim 1 provides any requirements regarding the manufacturing of the host
`connector or the housing that would limit the scope of the “protruding from”
`language. See id.; see also Ex. 4001 (“Wolfe Reply Decl.”) ¶¶ 20–21.
`
`Turning to the written description, Patent Owner cites to the figures of
`the ’188 patent, particularly Figure 2 reproduced below, as evidence that the
`patent “compels” its more narrow interpretation of the claim language,
`requiring a boundary between the host connector and the housing, because
`“the housing boundary completely ends and the host connector protrudes
`beyond the boundary of the housing.” PO Resp. 3–5, 25–27; Tr. 43:18–
`44:8, 47:3–7, 48:23–49:6.
`
`
`
`Patent Owner’s arguments appear to focus on the boundary or dividing line
`depicted between housing 11 and shieldless tab 13 of memory card 10 in
`Figure 2. As Patent Owner notes, the specification explains that in Figure 2,
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`IPR2015-00066
`Patent 6,890,188 B1
`shieldless tab 13, which is identified as a host connector, “protrude[s] from
`. . . housing [11].” Ex. 1001, 4:43–46. A similar line between the host
`connector and the housing appears in Figures 1 and 3–6, but the
`specification does not contain a corresponding statement specific to these
`figures regarding the host connector protruding from the housing. See id.
`at Figs. 1, 3–6.
`The specification’s depiction of a boundary or line between the host
`connector and the housing in these figures and reference to the host
`connector in Figure 2 as protruding from the housing, however, do not
`suffice to limit the claim language. See, e.g., Aventis, 675 F.3d at 1330 (“[I]t
`is . . . not enough that the only embodiments, or all of the embodiments,
`contain a particular limitation to limit a claim term beyond its ordinary
`meaning.”) (internal quotations and citations omitted); Anchor Wall Sys.,
`340 F.3d at 1306–07 (“[T]he mere fact that the patent drawings depict a
`particular embodiment of the patent does not operate to limit the claims to
`that specific configuration.”). As Patent Owner concedes, this boundary
`between the host connector and housing is not discussed or mentioned in the
`specification. See Tr. 43:18–44:1. Moreover, the specification describes
`each figure as merely “exemplary.” Ex. 1001, 3:34–52, 4:43–45; see
`Reply 5.
`Other relevant statements in the specification echo the claim language
`“host connector protruding from the housing” without providing any
`additional guidance on the meaning of the phrase. See, e.g., Ex. 1001, 2:31–
`32, 2:54–55. Further, Petitioner represents that the specification does not
`include any detail regarding the manufacturing of the host connector and the
`housing that would limit the scope of the relevant claim language, and we
`see no such discussion in our review of the specification. Reply 4 n.2;
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`IPR2015-00066
`Patent 6,890,188 B1
`Wolfe Reply Decl. ¶ 17; Tr. 18:13–15. In sum, we conclude that the
`’188 patent specification lacks the clarity required to demonstrate that the
`patentee intended to redefine the claim language or disavow the claim scope.
`
`Turning to the prosecution history, we agree with Petitioner’s
`representation that the prosecution history provides no amendments or
`arguments that would inform the meaning of the “host connector protruding
`from the housing” limitation. See Ex. 2007; Reply 5 n.3. Thus, the
`prosecution history also does not evidence a disavowal of claim scope.
`Accordingly, we conclude that the patentee of the ’188 patent did not
`narrow the ordinary and customary meaning of “host connector protruding
`from the housing” by either acting as a lexicographer or disclaiming claim
`scope. We disagree with Patent Owner’s assertions that the plain and
`ordinary meaning of “host connector protruding from the housing” requires
`physically distinct or separately molded parts or structures, with a boundary
`between them. See Retractable Techs. v. Becton, Dickinson & Co., 653 F.3d
`1296, 1303–04 (Fed. Cir. 2011) (holding that the claims, specification, and
`prosecution history indicated that the claimed “retainer member” and
`“needle holder” need not be “separately molded pieces” and instead could
`cover “distinct portions of a single structure”). Rather, we determine that
`the “host connector protruding from the housing” encompasses the host
`connector and the housing as different parts of a single structure, i.e.,
`attached, connected, joined, or molded to one another.
`b. Alleged Interchangeability of “protruding from the housing”
`and “accessible through the housing”
`The parties also dispute whether the ’188 patent uses the terms
`
`“protruding from the housing” and “accessible through the housing,” as
`recited in claim 10, interchangeably such that the terms should be
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`IPR2015-00066
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`understood to have the same meaning. See PO Resp. 4–5; Reply 7–9, 11;
`Ex. 1001, 13:42–46. According to Petitioner, the ’188 patent describes the
`“same host connector structure” as both “protruding from” and “accessible
`through” the housing and, therefore, “the terms are used interchangeably and
`should be interpreted to mean the same thing.” Reply 8. Patent Owner,
`however, argues that the difference in claim language evidences that the
`terms have a different meaning, reflecting a difference in positioning
`between the recited “host connector” and “device connector” relative to the
`recited “housing.” PO Resp. 4–5 (citing Fernald Decl. ¶ 37).
`
`Independent claims 1 and 10 each recite a “device connector
`accessible through the housing” and a “host connector protruding from the
`housing.” Ex. 1001, 12:59–64, 13:42–46 (emphases added). As Petitioner
`acknowledges, absent contrary evidence, we presume the use of different
`terms in the claims, i.e., “protruding from” versus “accessible through,”
`connotes different meanings. Baran v. Med. Device Techs., Inc., 616 F.3d
`1309, 1313, 1316 (Fed. Cir. 2010); CAE Screenplates Inc. v. Heinrich
`Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000); Reply 7.
`This presumption “is overcome where . . . the evidence indicates that the
`patentee used the two terms interchangeably.” Baran, 616 F.3d at 1316.
`Petitioner’s argume