UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`PRONG, INC.,
`Petitioner
`
`v.
`
`YEOSHUA SORIAS,
`Patent Owner
`
`__________________
`
`Case IPR2015-01317
`Patent 8,712,486 B2
`__________________
`
`
`
`DECLARATION OF MR. JOSEPH C. McALEXANDER III
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF
`PATENT OWNER SORIAS’ RESPONSE
`
`
`
`
`
`
`
`
`
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`
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`
`
`Respectfully submitted,
`
`__________________________
`Mr. Joseph C. McAlexander III
`
`Date: March 18, 2016
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`
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`Sorias EX 2091 Pg.001
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`
`CONTENTS
`
`I.
`
`Introduction .................................................................................................... 1
`
`II. Qualifications ................................................................................................. 6
`
`III. Understanding of Applicable Legal Standards ........................................... 8
`
`A.
`
`Level of Ordinary Skill ......................................................................... 8
`
`B.
`
`Claim Construction................................................................................ 8
`
`C.
`
`Invalidity Based on Anticipation Under 35 U.S.C. § 102 ..................11
`
`D.
`
`Invalidity Based on Obviousness Under 35 U.S.C. § 103 ..................11
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`IV. Level of Ordinary Skill in the Pertinent Art .............................................12
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`V.
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`Broadest Reasonable Interpretation ..........................................................13
`
`A.
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`“connection structure” .........................................................................14
`
`B.
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`“charger plug” .....................................................................................17
`
`C.
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`“physically integrated with” ................................................................18
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`VI. The ‘486 Patent ............................................................................................20
`
`A.
`
`Background of the Field Relevant to the ’486 Patent Invention .........20
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`B.
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`Summary of the ’486 Patent Inventions ..............................................21
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`VII. Detailed Invalidity Analysis ........................................................................21
`
`A.
`
`Prior Art References ............................................................................21
`
`1.
`2.
`3.
`
`Lanni (U.S. Patent Number 5,838,554) ....................................21
`Chung (U.S. Design Patent D543,541 S)..................................29
`Steiert (U.S. Patent Number 6,585,530) ...................................30
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`
`
`ii
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`
`4.
`5.
`
`Tsang (U.S. Patent Number 5,780,993) ....................................32
`Garcia (U.S. Patent Application Publication
`2008/0157712 A1) ....................................................................33
`
`B.
`
`Challenged Claims ..............................................................................34
`
`C.
`
`None of the Proposed Prior Art Combinations Identify All of
`the Required Claim Elements of Any of the ‘486 Patent
`Challenged Claims 1-8, 10, 11-12, 15, and 16 ....................................39
`
`1.
`
`2.
`
`3.
`
`The Proposed Prior Art Combinations of Lanni in View
`of Chung, Steiert, and Tsang do not Identify All of the
`Required Claim Elements of any of the Challenged
`Claims 1-8, 11-12, and 15 .........................................................42
`The Proposed Prior Art Combinations of Lanni in View
`of Chung and Steiert do not Identify All of the Required
`Claim Elements of Challenged Claim 10 - “the AC
`Prongs Lie Flat with Their Respective Main Bodies being
`Flush with an Outer Surface of a Back Side of the Main
`Body of the Charger” ................................................................50
`The Proposed Prior Art Combinations of Lanni in View
`of Chung, Steiert, and Tsang do not Identify All of the
`Required Claim Elements Required by Dependent
`Challenged Claim 16 .................................................................51
`
`VIII. CONCLUSION ............................................................................................51
`
`iii
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`I, Joseph C. McAlexander III, do hereby declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I have been retained by Gottlieb, Rackman & Reisman, P.C., counsel
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`for Patent Owner Yeoshua Sorias (“Sorias”) in the above captioned Inter Partes
`
`Review (“IPR”) to provide my opinion regarding the validity of claims 1-12, 15, and
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`16 (“the Challenged Claims”) of U.S. Patent No. 8,712,486 B2 (the “’486 Patent”).
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`Specifically, I have been asked to analyze whether the Challenged Claims are
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`rendered obvious under 35 U.S.C. § 103, based on the art cited by the Patent Trial
`
`and Appeal Board (“Board”) in its Decision to Institute the IPR, entered December
`
`9, 2015.1 The Board determined “there is a reasonable likelihood that Petitioner
`
`would prevail in challenging claims 1-12, 15, and 16”2 and instituted the IPR “for
`
`the following grounds of unpatentability:”3
`
`
`1 Decision, Institution of Inter Partes Review, 37 C.F.R. § 42.108, December 9, 2015
`(“Institution Decision”).
`2 Id. at 37.
`3 Id. at 38.
`
`
`
`1
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`
`Table 14
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`
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`2.
`
`The ’486 Patent, titled “Detachably Integrated Battery Charger for
`
`Mobile Cell Phones and Like Devices,” was filed on January 11, 2012 and issued on
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`April 29, 2014.5 The ’486 Patent names Yeoshua Sorias and Max Moskowitz as the
`
`inventors and lists Yeoshua Sorias as the assignee.6 The ’486 Patent claims priority
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`to U.S. Provisional Patent Application No. 61/432,050 (the “’050 Application”),
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`filed on January 12, 2011.7 That Provisional application is incorporated by reference
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`in its entirety into the ’486 Patent.8
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`3.
`
`I understand that, on April 29, 2014, Petitioner Prong, Inc., filed a
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`Petition for Inter Partes Review (“Petition”) of claims 1-16 of the ‘486 Patent,
`
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`4 References: Lanni (U.S. Patent Number 5,838,554); Chung (U.S. Design Patent
`D543,541 S); Steiert (U.S. Patent Number 6,585,530); Tsang (U.S. Patent Number
`5,780,993); and Garcia (U.S. Patent Application Publication 2008/0157712 A1).
`5 ‘486 Patent.
`6 Id.
`7 Id.
`8 Id. at 1:8-13.
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`
`
`2
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`alleging that the claims are invalid under 35 U.S.C. §§ 102 and 103.9 I understand
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`that, on December 9, 2015, the Board granted the Petition in part, instituting review
`
`only on the grounds identified in Table 1 above (“Institution Decision”).10
`
`4.
`
`I also understand that the Board found there was no reasonable
`
`likelihood that Petitioner would prevail in showing that claims 1, 5, 9, 10, and 12
`
`were anticipated by Behar or that claims 1-5 and 9-12 were anticipated by Lanni.11
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`I further understand that the Board found there was no reasonable likelihood that
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`Petitioner would prevail in showing that claims 13 and 14 would be rendered
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`obvious. I also understand that the Board declined to institute an IPR on alternative
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`grounds for invalidity advanced by the Petitioner.12
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`5.
`
`I have considered each of the references and invalidity positions
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`proffered by Prong’s Petition and have further considered the Board’s Institution
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`Decision. While I am generally aware of the bases for invalidity advanced by the
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`Petitioner, I am confining my opinion to the issues raised by the prior art cited by
`
`the Board in instituting this IPR and in the Petitioner’s arguments related to those
`
`references. I conclude that each of the asserted claims of the ’486 Patent is valid. In
`
`
`9
`10 Institution Decision at 38.
`11 Id. at 14-17, 36.
`12 Id. at 28-31, 31-33, 36-37.
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`
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`3
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`my opinion, Petitioner fails to meet the preponderance-of-evidence burden of proof
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`standard to support a finding of invalidity of the ’486 Patent’s claims 1-12 and 15-
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`16, even under the broadest reasonable interpretation.
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`6.
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`In forming the opinions expressed in this Declaration, I relied upon my
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`education and experience in the relevant field of art, and have considered and applied
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`the viewpoint of a person having ordinary skill in the relevant art, as of January 12,
`
`2011.
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`7.
`
`In forming my opinions, I reviewed and considered the exhibits
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`submitted by both the Petitioner and the Patent Owner in the Petition and the
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`Preliminary Response to it. I have also relied upon my education, experience, and
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`knowledge of basic engineering practices in the industry as well as my understanding
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`of the applicable legal principals described below.
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`8. My work in this matter is billed through McAlexander Sound, Inc.
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`(“McASI”) at a rate of $495.00 per hour. My compensation does not depend upon
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`the outcome of this Inter Partes Review.
`
`9.
`
`It is my opinion that Petitioner fails to show that any combination of
`
`references identified above in Table 1 renders obvious the Challenged Claims under
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`35 U.S.C. § 103. It is my opinion that the proffered combinations are each based on
`
`
`
`4
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
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`impermissible hindsight and each ignores the teachings of Lanni. I present in
`
`Section VII.C below the support for these opinions.
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`10.
`
`I also note that Lanni was before the Examiner during prosecution of
`
`the ‘486 Patent and that each of the Challenged Claims was issued over Lanni. I
`
`understand that the Board did not find Lanni to anticipate any of these claims.13
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`Rather, the Board is considering an obviousness argument by the Petitioner in which
`
`Lanni is modified based on specific disclosures of other references, namely Steiert,
`
`Tsang, Chung, and Garcia.
`
`11.
`
`In my opinion, Lanni fails to show at least the following limitations
`
`from each of the independent claims 1, 4, 7, 8, and 10:
`
`‘486 Patent Claim
`
`Missing Claim Limitation
`
`1, 4, 7, 8, and 10
`
`“a connection structure formed integrally with the
`main body, the connection structure extends from the
`main body and is configured to grasp onto and hold
`the charger secured to the mobile device” (as that
`limitation in the ‘486 Patent claims should be
`construed)
`
`“the charger being so configured as to enable it to be
`connected physically and electrically to the mobile
`device during the use of the mobile device”
`
`“the charger is physically integrated with the mobile
`device”
`
`“a charger plug integrally formed with the charger and
`located on the charger such as to allow the charger
`
`
`13 Id. at 14-17.
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`
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`5
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`
`‘486 Patent Claim
`
`Missing Claim Limitation
`
`plug to be inserted into a charging port of the mobile
`device”
`
`“in their stowed positions, the AC prongs lie flat so
`that a main body plane of each said AC prongs is
`aligned with a respective main body plane of the main
`body of the charger”
`
`“the AC prongs lie flat with their respective main
`bodies being flush with an outer surface of a back side
`of the main body of the charger”
`
`1
`
`10
`
`
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`12. Lanni also fails to show or describe at least the additional limitations
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`required by dependent claims 2, 3, 5, 6, and 16. It is my understanding that the
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`Patent Owner is disclaiming claim 9 and so I am not addressing that claim in my
`
`analysis.
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`13. To overcome all of these deficiencies in Lanni, one must show that a
`
`person of ordinary skill in the art at the time of the invention would find each of the
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`Challenged Claims obvious over Lanni in view of the combinations of other
`
`references listed in Table 1 above as proposed by the Petitioner. In my opinion, the
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`Petitioner has failed to demonstrate obviousness.
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`II. Qualifications
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`14. My name is Joseph C. McAlexander III, President of McAlexander
`
`Sound, Inc., located at 101 W. Renner Rd., Suite 350, Richardson, TX 75082. I am
`
`
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`6
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
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`over eighteen years of age and I would be competent to testify as to the matters set
`
`forth herein if I am called upon to do so.
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`15.
`
`I am a technical expert in the subject matter areas relevant to this IPR,
`
`including the design, testing, and packaging of integrated circuit components such
`
`as voltage and current supplies and associated control circuits. I am qualified to
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`reach the opinions and conclusions stated in this Declaration.
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`16.
`
`I am a Registered Professional Engineer (#79454) in the State of Texas
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`and hold a Bachelor of Science degree in Electrical Engineering from North Carolina
`
`State University. I have been associated with the integrated circuit and electronics
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`industry as a designer and consultant for the past 43 years and am a named inventor
`
`on 31 U.S. patents and a number of foreign patents, some of which are directly
`
`related to the design and operation of integrated circuits, including the design of
`
`integrated power supplies. As a circuit designer, I also address issues related to
`
`circuit packaging and am familiar with the issues related to heat generation for high
`
`power circuits and the need for adequate cooling of the circuits.
`
`17. My skills and experience are more generally in areas of circuit design
`
`and analysis, fabrication and assembly, testing, marketing, control system design
`
`and analysis, manufacturing operations, software development, management, and
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`respective areas of quality, reliability, and defect/failure analysis. Because of my
`
`
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`7
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
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`background, training, and experience, I am qualified as an expert to opine on the
`
`validity of the ‘486 Patent Challenged Claims. A more detailed account of my work
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`experience and other qualifications is listed in my Curriculum Vitae attached as
`
`Exhibit A to this Declaration.
`
`III. Understanding of Applicable Legal Standards
`
`A. Level of Ordinary Skill
`
`18.
`
`I provide herein an opinion regarding the level of ordinary skill in the
`
`art relevant to the ’486 Patent. I understand that factors, such as the education level
`
`of those working in the field, sophistication of the technology, types of problems
`
`encountered in the art, prior art solutions to those problems, and speed at which
`
`innovations are made, may help establish the level of skill in the art.
`
`B. Claim Construction
`
`19.
`
`I understand that determination of validity requires a two-step analysis.
`
`I understand that the first step in determining validity is properly construing the
`
`claims to determine claim scope and meaning.
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`20.
`
`I have been informed that the meanings of the claim terms are to be
`
`understood from the perspective of the person of ordinary skill in the pertinent art.
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`I have been informed that claim construction begins with the ordinary and customary
`
`meanings of the claim terms. I further understand that the meanings of terms used
`
`
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`8
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
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`in the claims should be understood primarily in view of the intrinsic evidence. I
`
`have been informed that, in the context of an inter partes review, claim terms are to
`
`be given their broadest reasonable interpretation in view of the applicable evidence.
`
`21.
`
`I understand that the Board determined that the following claim terms
`
`need construction for purpose of the IPR. I have considered that decision in my
`
`analysis. The terms identified are:
`
`- “main body plane” and “main body”14
`- “generally flat body with a substantially uniform
`thickness dimension”15
`
`
`
`22. The Board defined the above terms as:
`
`- we construe “main body plane” to refer to the largest
`(main) plane of the body of the charger (or
`prongs);16
`- we apply the plain and customary meaning and
`construe the phrase “main body is a generally flat
`body with a substantially uniform thickness
`dimension” as referring to a body that is for the most
`part flat and has a thickness that is generally uniform
`throughout.17
`
`
`
`
`14 Institution Decision at 7-9, referencing the ‘486 Patent claims 1 and 4 (“main body
`plane”) and claims 1-5 and 7-10 (“main body”).
`15 Id. at 9, referencing ‘486 Patent claims 2 and 3.
`16 Id. at 9. (emphasis added)
`17 Id. (emphasis added)
`
`
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
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`23. The Board further stated, “For purposes of this Decision, we do not find
`
`it necessary to construe any additional claim terms expressly.”18 As addressed
`
`further below, I provide constructions for some additional terms.
`
`24.
`
`I understand that there are special rules of construction for claim
`
`elements recited in means-plus-function format according to 35 U.S.C § 112(6).
`
`These elements are limited to means that perform the identical function as recited in
`
`the element. Moreover, means-plus-function elements are limited to the necessary
`
`structures disclosed in the specification, and any equivalents, that correspond to and
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`are needed to perform the recited function; structures which may be disclosed in the
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`specification but which are not necessary to perform the claimed function should not
`
`be part of the construed term. I further understand from counsel that the
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`corresponding structure in the specification is “corresponding structure” only if the
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`specification clearly links or associates that structure to the claimed function. I
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`understand that means-plus-function elements are not unbounded and cannot
`
`correspond to all means that perform the recited function.
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`
`18 Id. at 10.
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
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`C.
`
`25.
`
`Invalidity Based on Anticipation Under 35 U.S.C. § 102
`
`I understand that the Board rejected Petitioner’s anticipation arguments
`
`and did not institute any invalidity grounds based on anticipation.
`
`D.
`
`26.
`
`Invalidity Based on Obviousness Under 35 U.S.C. § 103
`
`I understand that, even if a claim is not anticipated, the claim may be
`
`found invalid if the differences between the claimed subject matter and the prior art
`
`are such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person of ordinary skill in the pertinent art.
`
`27.
`
`I understand that a person of ordinary skill in the art provides a
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`reference point from which the prior art and claimed invention should be viewed.
`
`This reference point prevents one from using insight or hindsight in deciding
`
`whether a claim is obvious. Thus, “hindsight reconstruction” cannot be used to
`
`combine references together to reach a conclusion of obviousness.
`
`28.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors, such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations,
`
`objective evidence (secondary indicia) of non-obviousness, to the extent such exists.
`
`
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`11
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
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`29.
`
`I have been informed and understand that the obviousness analysis
`
`requires a comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis. I also have been informed that a combination of
`
`claimed elements in a patent claim is obvious when all of the claimed elements were
`
`known in the prior art and there was a reason for a person of ordinary skill to combine
`
`or modify the prior art to obtain the elements as claimed with no change in their
`
`respective functions.
`
`30.
`
`I have been informed that, for a dependent claim to be obvious, the
`
`combination of claimed elements in the dependent claim and all of the limitations
`
`recited in the base claim(s) from which the dependent claim depends must be
`
`obvious in view of the prior art.
`
`IV. Level of Ordinary Skill in the Pertinent Art
`
`31.
`
`I understand that the Patent Owner contended in its preliminary
`
`response that a person of ordinary skill in the art at the time of the invention would
`
`have “two years’ of experience in designing product packages and two years’
`
`experience working with low voltage power supplies.”19 I understand that the Board
`
`
`19 Preliminary Response by Patent Owner Under 37 C.F.R. § 42.107 to Prong, Inc.’s
`Petition for Inter Partes Review of U.S. Patent No. 8,712,486 at 44.
`
`
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`12
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
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`has held that the person of ordinary skill in the art is reflected by the prior art of
`
`record.20 I agree. As it relates to the circuit housing and electrical aspects at issue,
`
`a person of ordinary skill in the art at the time of the filing of the ‘486 Patent would
`
`have at least two years’ of experience in working with low voltage power supplies.
`
`I further understand that the Petitioner contends that a person of ordinary skill in the
`
`art at the time of the invention would have “a degree in electro-mechanical product
`
`design or two years’ experience in designing power supplies.”21 My background,
`
`including a Bachelor of Science degree in Electrical Engineering, many years of
`
`experience in working with low voltage power supplies, designing product packages,
`
`and designing voltage and current supplies, meets at least the minimum requirements
`
`suggested by the Petitioner and by the Patent Owner. In issuing my opinions, I have
`
`considered the viewpoint of one of ordinary skill.
`
`V. Broadest Reasonable Interpretation
`
`32.
`
`I understand that, under the broadest reasonable interpretation, the
`
`interpretation must be “reasonable.” I accept the Board’s following interpretations
`
`for the purpose of this Declaration:
`
`
`20 Paper 10 at 18.
`21 Prong, Inc. Petition for Inter Partes Review at 16.
`
`
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`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`
`- “main body plane” refers to the largest (main) plane
`of the body of the charger (or prongs);22
`- “main body is a generally flat body with a
`substantially uniform thickness dimension” refers to
`a body that is for the most part flat and has a
`thickness that is generally uniform throughout.23
`
`
`33. Although I understand the Board stated, for purposes of its decision,
`
`that it did not find it necessary to construe any additional claim terms expressly, I
`
`find that a person of ordinary skill in the art at the time of the invention would require
`
`definitions for several additional terms. These terms are: (1) “connection structure,”
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`found identically in each of the independent Challenged Claims 1, 4, 7, 8, and 10;
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`and (2) “charger plug,” found in Challenged Claims 1, 4, 7, 8, 10, and 16. Also, I
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`believe it appropriate to define the construction of “physically integrated with,”
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`found in Challenged Claims 1, 4, 7, 8, and 10.
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`A.
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`“connection structure”
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`“. . . a connection structure formed integrally with the
`main body, the connection structure extends from the main
`body and is configured to grasp onto and hold the charger
`secured to the mobile device. . .”24 (emphasis added)
`
`
`
`
`22 Institution Decision at 9. (emphasis added)
`23 Id. (emphasis added)
`24 ‘486 Patent, co. 9:01-04, 9:31-34, 9:66-10:02, 10:22-25, 10:49-53.
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`14
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`Sorias EX 2091 Pg.017
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
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`34. The term “connection structure,” used in each of the independent
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`Challenged Claims 1, 4, 7, 8, and 10, in my opinion, is a nonce phrase written in
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`means-plus-function format. The claim element quoted above lacks any structure,
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`only identifying that the “connection structure” is formed with, and extends from,
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`the main body and functions “to grasp onto and hold the charger secured to the
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`mobile device.” In addition, the claimed element for “connection structure” in each
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`independent Challenged Claim imposes additional limitations on that structure; the
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`“connection structure” is “formed integrally with the main body” and “extends from
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`the main body.” This is purely functional, telling what the connection structure
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`should do and where it is located, but not what it is. Thus, one must go to the
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`specification to identify the corresponding structure that performs the claimed
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`function.
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`35. The structures disclosed in the ‘486 Patent specification which perform
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`this function are left and right resilient panels which are configured to either allow
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`the mobile device to be slid therebetween or to be forcefully snapped onto the back
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`side of the mobile device, both of which grasp and hold the side walls of the mobile
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`device.25 The ‘486 Patent specification discloses that, “instead of resilient panels,
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`25 ‘486 Patent at 2:17-20, 59-67; also 3:18-21, 4:20-37, and Fig. 3, 3A, 3E.
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`
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`15
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`Sorias EX 2091 Pg.018
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`one may use straps, for example, rubber straps by which the charger is held to the
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`phone body.”26 Provided the straps were formed integrally with and extended from
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`the main body, this would also be corresponding structure. Finally, the patent
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`discloses a “cage-like plasticized body 111…which allows the charger 100 to be
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`slipped on the top of the cell phone.”27 Although not well described, this structure
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`also appears to be a type that would grasp and hold the charger secured to the mobile
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`device. Dependent Challenged Claims 5 and 6 further limit the “connection
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`structure” as comprising “left and right resilient holding panels” which is a subset of
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`the structures encompassed by the “connection structure” of claim 1.28
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`36. The ‘486 Patent specification also discloses a removable back cover of
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`the mobile device that utilizes the built-in connection mechanism of the mobile
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`device and where tongues 34, 36 on the charger body would engage slots in the
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`housing (not shown) in place of the tongues on the battery cover.29 However, the
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`patent explains that this structure attaches the charger “without at all grabbing on”
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`to the sides of the case.30 The claims specifically require the connection structure of
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`26 Id. at 4:38-40.
`27 Id. at 7:14-17 and Fig. 6.
`28 Id. at 9:50:54, 9:55-67, 10:14.
`29 Id. at 3:1-3.
`30 Id. at 6:66-7:1.
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`
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`16
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`Sorias EX 2091 Pg.019
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`the charger to perform the function to “grasp” the mobile device.31 In my opinion,
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`while this tongue-in-groove configuration may provide a secure connection, the
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`tongues on the charger body would not “grasp” or grab the mobile device, as the
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`claim requires. To the extent there is any grasping, the walls of the grooves on the
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`mobile device would grasp the tongues on the mobile device cover, the opposite of
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`what the claims require. Thus, this would not be corresponding structure because it
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`does not perform the claimed function.
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`B.
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`“charger plug”
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`37. Challenged Claims 1, 4, 7, 8, and 10 identically incorporate the term
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`“charger plug.”
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`“a charger plug integrally formed with the charger and
`located on the charger such as to allow the charger plug
`to be inserted into a charging port of the mobile device.”32
`(emphasis added)
`
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`Challenged Claim 16 uses the term “charger plug,” but only by way of another
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`element coupled to it.
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`38. A person of ordinary skill in the art at the time of the invention would
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`understand the claimed “plug” to be the physical male part of an electrical fitting
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`31 Id. at 9:01-04, 9:31-34, 9:66-10:02, 10:22-25, 10:49-53.
`32 Id. at 9:5-7, 9:35-37, 10:3-5, 10:26-28 and 10:54-56.
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`
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`17
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`Sorias EX 2091 Pg.020
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`having conductive prongs, blades, or pins that is configured to be inserted into a
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`female hole or slot of another physical part of the electrical fitting, commonly
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`referred to as the “socket.” This is also consistent with the dictionary definition of a
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`Plug.33 Thus, a “charger plug” would be understood to be “the male portion of an
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`electrical fitting that is configured to be inserted into a female socket in a device to
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`be charged.” This understanding is consistent with the use of this term in the ‘486
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`Patent claims and specification, including that the claims require the plug to be
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`“inserted” into the charging port of the mobile device.34
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`C.
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`“physically integrated with”
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`39. Challenged claims 1, 4, 7, 8, and 10 identically incorporate the term
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`“physically integrated with.”
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`“the charger is physically integrated with the mobile
`device” (emphasis added)
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`
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`40. This language modifies the prior portion of each of the independent
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`Challenged Claims, requiring the charger to be configured “to enable it to be
`
`
`33 See Webster’s II New College Dictionary, Houghton Mifflin Company, 1995, at
`848 (“2. Elect. a. A fitting, commonly having two metal prongs for insertion into a
`fixed socket, used to connect an appliance to a power supply.
`34 ‘486 patent at 2:43-45 (“a charger plug is integrally formed with the charger and
`located on the charger such as to allow the charger plug to be inserted into a charging
`port of the mobile device”).
`
`
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`18
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`Sorias EX 2091 Pg.021
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`

`
`Case IPR2015-01317, U.S. Patent No. 8,712,486 B2
`Declaration of Mr. Joseph McAlexander III Under 37 C.F.R. § 1.68
`in Support of Patent Owner Sorias’ Response
`
`
`connected physically and electrically to the mobile device during the use of the
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`mobile device