UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,909,094
`
`Case No. IPR2015-01954
`
`NY 802320v.1
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,909,094
`
`Case No. IPR2015-01954
`
`NY 802320v.1
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`II. MANDATORY NOTICES (37 C.F.R. §42.8)................................................1
`A.
`Real Party in Interest (37 C.F.R. §42.8(b)(1))............................1
`B.
`Related Matters (37 C.F.R. §42.8(b)(2)) ....................................2
`C.
`Lead and Back-Up Counsel (37 C.F.R.
`§42.8(b)(3)).................................................................................2
`Service Information (37 C.F.R. §42.8(b)(4))..............................2
`
`D.
`
`III. GROUNDS FOR STANDING........................................................................2
`
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R.
`§42.104(b)(1)-(3)) and RELIEF REQUESTED (37 C.F.R.
`§42.22(a)(1))....................................................................................................3
`A.
`Background of the ‘094 Patent ...................................................3
`B.
`The Disclosure of the ‘094 Patent...............................................4
`C.
`Prosecution History of the ‘094 Patent.....................................12
`D.
`Patents and Printed Publications Relied On .............................15
`E.
`Statutory Grounds for Challenge (37 C.F.R.
`§42.104(b)(1)-(2) ......................................................................16
`Claim Construction (37 C.F.R. §42.104(b)(3)) ........................16
`
`F.
`
`V.
`
`HOW CHALLENGED CLAIMS ARE UNPATENTABLE
`(37 C.F.R. §42.104(b)(4)-(5))........................................................................23
`A.
`Claims 1, 8-9, 11, 17-18, 29 and 38 are
`Anticipated by Matsuoka ..........................................................23
`Claims 1, 7-9, 11, 16-18, 29 and 38 Would Have
`Been Obvious over Matsuoka...................................................56
`
`B.
`
`VI. CONCLUSION..............................................................................................59
`
`NY 802320v.1
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`TABLE OF AUTHORITIES
`
`Cases
`Ex Parte Masham, 2 USPQ2d 1647
`(Bd. Pat. App. & Inter. 1987) ...............................................................................21
`
`Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984)..............................59
`
`In re Johnson, 162 F.2d 924 (CCPA 1947) .............................................................26
`
`In re Larson, 340 F.2d, 965 (CCPA 1965) ..............................................................58
`
`In re Mullin, 481 F.2d 1333 (CCPA 1973)..............................................................26
`
`Lighting World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354 (Fed. Cir. 2004)............................................................................16
`
`Statutes
`35 U.S.C. §102(b) ....................................................................................... 16, 24, 59
`
`35 U.S.C. §103........................................................................................ 3, 16, 56, 59
`
`35 U.S.C. §315(e)(1)..................................................................................................3
`
`Other Authorities
`MPEP§2111.04 ........................................................................................................21
`
`MPEP§2114 .............................................................................................................22
`
`MPEP §2143(G).......................................................................................................58
`
`MPEP§2144.04(IV)(A)............................................................................................59
`
`Regulations
`37 C.F.R. §42.100(b) ...............................................................................................16
`
`37 C.F.R. §42.102(a)(2).............................................................................................3
`
`NY 802320v.1
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`LISTING OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent No. 8,909,094 to Yamada, et al.
`
`Exhibit 1002
`
`Prosecution History for U.S. Patent Application Serial
`No. 13/617,050, Filed On September 14, 2012
`
`Exhibit 1003
`
`U.S. Patent No. 7,647,012 to Yamada, et al.
`
`Exhibit 1004
`
`Exhibit 1005
`
`Special Master’s Claims Construction Report and Recommendations
`dated Nov. 8, 2013, in Case No. 1:11-cv-03855-RLV in the U.S.
`District Court, Northern District of Georgia
`
`Court’s Order dated January 9, 2014, in Case
`No. 1:11-cv-03855-RLV in the U.S. District Court, Northern District
`of Georgia
`
`Exhibit 1006
`
`U.S. Patent No. 5,903,806 to Matsuoka
`
`Exhibit 1007
`
`Declaration of Brian Springett, Ph.D.
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`NY 802320v.1
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §311 and 37 C.F.R. §42.1 et seq., General Plastic
`
`Industrial Co., Ltd. (hereinafter, “Petitioner”) requests inter partes review of
`
`claims 1, 7-9, 11, 16-18, 29 and 38 (the “challenged claims”) of U.S. Patent
`
`No. 8,909,094 (“the ’094 patent,” Ex. 1001), which issued on December 9, 2014.
`
`The Board is authorized to deduct all required fees associated with this petition
`
`from Locke Lord LLP Deposit Account No. 504827, under Order No.
`
`1007369.00003.
`
`The ‘094 patent is generally directed to a toner supply container, which
`
`includes a rotatable container body and a sealing member provided at its axial end
`
`portion, that may be used with an electrophotographic image forming apparatus
`
`such as a copier, a printer or a facsimile machine. The sealing member, quite
`
`simply, seals or unseals an opening in the container body so that toner may be
`
`discharged therefrom. The challenged claims, which were deliberately drafted by
`
`the Patent Owner to cover just the toner supply container, are invalid based on a
`
`prior art toner cartridge.
`
`II. MANDATORY NOTICES (37 C.F.R. §42.8)
`Real Party in Interest (37 C.F.R. §42.8(b)(1))
`
`A.
`
`General Plastic Industrial Co., Ltd. is the real party-in-interest.
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`NY 802320v.1
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`B.
`
`Related Matters (37 C.F.R. §42.8(b)(2))
`
`The ‘094 patent was the subject of the following Investigation:
`
`In the
`
`Matter of Certain Toner Supply Containers And Components Thereof, Inv.
`
`No. 337-TA-960 (U.S. Int’l Trade Comm’n) which was instituted on July 10, 2015
`
`(hereinafter, “the Investigation”). General Plastic Industrial Co. Ltd. was a named
`
`Respondent in this Investigation, which terminated based upon General Plastic
`
`Industrial Co., Ltd.’s stipulation to a consent order.
`
`C.
`
`Lead and Back-Up Counsel (37 C.F.R. §42.8(b)(3))
`
`Lead counsel: Steven F. Meyer (Reg. No. 35,613)
`
`Back-up counsel: Tim Tingkang Xia (Reg. No. 45,242)
`
`D.
`
`Service Information (37 C.F.R. §42.8(b)(4))
`
`Electronic Service:
`
`ptopatentcommunication@lockelord.com
`
`Post and Delivery:
`
`Locke Lord LLP, 3 World Financial Center
`(20th Floor), New York, NY 10281
`
`Phone:
`
`(212) 415-8600
`
`Fax: (212) 303-2754
`
`Petitioner consents to electronic service.
`
`III. GROUNDS FOR STANDING
`Petitioner hereby certifies that the ‘094 patent is available for inter partes
`
`review, and that Petitioner is not barred or estopped from requesting an inter partes
`
`review challenging the claims of the ‘094 patent on the grounds identified in this
`
`petition. More particularly, Petitioner certifies that: (1) Petitioner is not the owner
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`NY 802320v.1
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`
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`of the ‘094 patent; (2) while the ‘094 patent issued on December 9, 2014, it is not a
`
`patent described in section 3(n)(1) of the Leahy-Smith America Invents Act (see
`
`37 C.F.R. §42.102(a)(2)); (3) Petitioner has not filed a civil action challenging the
`
`validity of any claim of the ‘094 patent; (4) Petitioner was served less than one
`
`year ago with the complaint in the Investigation alleging infringement of the
`
`‘094 patent; and (5) Petitioner is not estopped from challenging the claims of the
`
`‘094 patent on the grounds identified in this petition whether under the estoppel
`
`provisions of 35 U.S.C. §315(e)(1) or otherwise.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. §42.104(b)(1)-(3))
`and RELIEF REQUESTED (37 C.F.R. §42.22(a)(1))
`
`Petitioner challenges claims 1, 7-9, 11, 16-18, 29 and 38 of the ‘094 patent
`
`under 35 U.S.C. §§102(b) and 103, and cancellation of those claims is requested.
`
`A.
`
`Background of the ‘094 Patent
`
`The ‘094 patent issued on application ser. no. 13/617,050 (Ex. 1002), which
`
`was filed on September 14, 2012. Through a series of divisional applications, the
`
`‘094 patent claims the benefit of application serial no. 10/429,741, filed on May 6,
`
`2003, now U.S. Patent No. 6,990,301, which is a continuation-in-part of
`
`application serial no. 10/076,430, filed on February 19, 2002, now U.S. Patent
`
`No. 6,879,789, under 35 U.S.C. §120. The ‘094 patent also claims the benefit of
`
`Japanese application nos. 2001-197546 filed on June 28, 2001 and 2001-042536
`
`filed on February 19, 2001, under 35 U.S.C. §119.
`
`NY 802320v.1
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`B.
`
`The Disclosure of the ‘094 Patent
`
`The ‘094 patent describes a toner supply container that is usable in, for
`
`example, a copier. At a basic level, a copier works by adhering a fine powdery
`
`substance, called toner, to a sheet of paper in a pattern that matches the text or
`
`image being copied. Because toner is used each time a copy is made, from time to
`
`time a copier’s toner supply must be replenished. Because toner is messy,
`
`manufacturers often supply toner in the form of a sealed container that can be
`
`installed in the copier whenever a fresh supply of toner is needed. See Ex. 1001 at
`
`col. 1, ln. 26-48 & col. 6, ln. 44-51. When the toner supply is depleted, the user
`
`removes the empty toner container and replaces it with a full one. See Ex. 1001 at
`
`col. 8, ln. 58 - col. 9, ln. 33.
`
`Figure 3 of the ‘094 patent, which is reproduced below,
`
`illustrates an
`
`exemplary toner bottle 1 and a copier 100.
`
`The toner bottle 1 is installed in the copier 100 by inserting it in the direction
`
`indicated by arrow a in Figure 3.
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`NY 802320v.1
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`Figure 8 of the ‘094 patent, which is reproduced below, is a partly broken
`
`perspective view of toner bottle 1.
`
`The toner bottle 1 is generally cylindrical, and one end thereof has an opening 1a
`
`through which toner may flow. Ex. 1001 at col. 9, ln. 37-39. The opening 1a is
`
`plugged with a sealing member 2 for sealing the opening 1a. The opening 1a is
`
`unsealed and resealed by the sliding motion of the sealing member 2 relative to the
`
`toner bottle 1 in the longitudinal direction (arrow a↔b) of the toner bottle 1. See
`
`Ex. 1001 at col. 9, ln. 41-47.
`
`The opening 1a is sealed when the toner bottle 1 is outside of the copier 100.
`
`When the toner bottle 1 is installed in the copier 100, two things happen: (1) the
`
`opening 1a is unsealed; and (2) when the copier is being used, the toner bottle 1 is
`
`rotated. The rotation of the toner bottle 1 causes the toner inside of it to be fed out
`
`of the opening 1a and into a toner hopper within the copier 100, so that the toner in
`
`the hopper can be used to make copies.
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`NY 802320v.1
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`The ‘094 patent discloses several embodiments of the sealing member 2
`
`suitable for sealing and unsealing the opening 1a in the toner bottle 1. The
`
`challenged claims read on the embodiment of sealing member 2 illustrated in
`
`Figures 23(A) and 23(B) of the ‘094 patent, which are reproduced below.
`
`The sealing member 2 has two main portions: a sealing portion 2b, and a
`
`coupling portion 2c. Ex. 1001 at col. 11, ln. 21-25. The sealing portion 2b fits
`
`snugly within the opening 1a in order to seal the toner within the toner bottle 1. Id.
`
`at col. 11, ln. 28-30. The coupling portion 2c is engageable with a part in the
`
`copier 100 in order to (1) move the sealing member 2 and the toner bottle 1
`
`relatively away from each other to unseal the opening 1a, and (2) receive rotational
`
`drive force from the copier 100. See Id. at col. 11, ln. 31 - col. 12, ln. 18. To these
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`NY 802320v.1
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`ends, the coupling portion 2c includes supporting portions 2f, engaging projections
`
`3, and releasing force receiving portions 4.
`
`“The coupling engagement portion 2c of the sealing member 2 has an
`
`engaging projection 3 for receiving the driving force from [the copier 100]”. Id. at
`
`col. 11, ln. 63-65. “The engaging projection 3 is projected radially outwardly from
`
`the peripheral surface of the cylindrical portion of the coupling engagement portion
`
`2c.” Id. at col. 11, ln. 65 - col. 12, ln. 1. Each engaging projection 3 has two
`
`sub-portions -- a rotational force receiving portion 3a and a locking portion 3b,
`
`which, although not labeled in Figures 23(A) and 23(B), are labeled in Figures 12
`
`and 13, which are reproduced below.
`
`“The engaging projection comprises a drive receiving surface 3a (drive force
`
`receiving portion) for receiving the rotational driving force from [the copier 100];
`
`and a locking surface 3b (locking portion) for snap-fit type locking of the sealing
`
`member 2 into a locking hole (portion to be locked) provided in [the copier 100]
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`NY 802320v.1
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`when the sealing member 2 and the toner bottle 1 are moved away from each other
`
`(from the closed state to the open state).” Id. at col. 12, ln. 1-9.
`
`The sealing member 2 may include a releasing force receiving portion 4 for
`
`disengaging the coupling engagement portion 2c from the copier 100.
`
`See
`
`Ex. 1001 at col. 9,
`
`ln. 48-52.
`
`Referring back to Figures 23(A) and 23(B)
`
`reproduced above,
`
`the releasing force receiving portion 4 lies between the
`
`engaging projection 3 and the sealing portion 2b. That is, the releasing force
`
`receiving portion 4 is located closer to the toner bottle 1 than is the engaging
`
`portion 3. The releasing force receiving portion 4 extends radially outwardly to a
`
`greater extent than the radially outermost part of the engaging projection 3. See
`
`Ex. 1001 at col. 18, ln. 33-36.
`
`“The engaging projection 3 has a driving force receiving function as well as
`
`the locking function and, therefore, it has a certain degree of rigidity. In view of
`
`this, slits 2e or the like are formed at lateral ends of the engaging projection 3, so
`
`that only the part of the coupling engagement portion 2c where the engaging
`
`projection 3 is provided can relatively freely deform elastically toward the inside.”
`
`Ex. 1001 at col. 12, ln. 44-50. More particularly, “[s]lits 2e are formed at the
`
`lateral sides of the supporting portion 2f for the engaging projection 3 and the
`
`releasing portion 4 to facilitate inward elastic deformation of the engaging
`
`projection 3 and the releasing portion 4 and restoration.” Ex. 1001 at col. 18,
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`NY 802320v.1
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`ln. 52-56. The engaging projection 3 and the releasing force receiving portion 4
`
`may be integral with the supporting portion 2f. See Ex. 1001 at col. 14, ln. 26-28.
`
`In the embodiment illustrated in Figures 23(A) and 23(B), there are four
`
`supporting portions 2f, four engaging projections 3, and four releasing force
`
`receiving portions 4 (see Ex. 1001 at col. 18, ln. 36-59), but the precise number of
`
`each of these structural elements can vary. For example, in the embodiment
`
`illustrated in Figures 35A, 35B, and 35C of the ‘094 patent, reproduced below,
`
`there are only two supporting portions, two engaging portions, and two displacing
`
`force receiving portions.
`
`As discussed above, the coupling portion 2c is engageable with a part in the
`
`copier 100 referred to as a driving portion 20. See Ex. 1001 at col. 7, ln. 31-34 &
`
`col. 9, ln. 58-60. An example of the hollow cylindrical driving portion 20 is
`
`depicted in the left-hand portion of Figure 14 of the ‘094 patent, which is
`
`reproduced below.
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`NY 802320v.1
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`This hollow cylindrical driving portion 20 contains a locking slot 20h that extends
`
`in a circumferencial direction. See Ex. 1001 at col. 14, ln. 29-32. The locking slot
`
`20h is interrupted by a pair of ribs 20a, which in this example are spaced
`
`approximately 180 degrees apart. A motor (not shown) within the copier 100
`
`rotates the driving portion 20. Id. at col. 7, ln. 35-38. The driving portion 20, in
`
`turn, rotates the toner bottle 1 through the abutment of one or both of the rotating
`
`engaging ribs 20a with the drive receiving surface 3a of one or more engaging
`
`projections 3 of the sealing member 2. See Id. at col. 14, ln. 41-45.
`
`Once the engaging projections 3 have engaged with the locking slot 20h of
`
`the driving portion 20, the driving portion 20 and the toner bottle 1 are moved
`
`relatively away from each other. This relative movement may be caused, for
`
`example, by a manual lever or by the closing of a cover on the copier. As the
`
`driving portion 20 and the toner bottle 1 move relatively away from each other, so
`
`too do the sealing member 2 and the toner bottle 1. This is because the locking
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`NY 802320v.1
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`
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`portions of the engaging portions are abutted against an interior surface of the slot
`
`of the driving member. Therefore, as the driving member and the container body
`
`pull away from each other, the engaging portions 3 remain engaged with the slot of
`
`the driving member and the sealing member 2 is pulled out of the opening 1a in the
`
`container body. See, e.g., Ex. 1001 at col. 8, ln. 9-17, col. 13, ln. 8-16, & col. 15,
`
`ln. 4-13.
`
`Figure 25A of the ‘094 patent, which is reproduced below, illustrates the
`
`unsealed state in which the driving member 20, and with it, the sealing member 2,
`
`have been moved relatively away from the toner bottle 1 (See Ex. 1001 at col. 18,
`
`ln. 61-63).
`
`In this state, with the opening 1a unsealed, the driving portion 20 rotates the toner
`
`bottle 1 through the abutment of one or both ribs 20a with the rotational force
`
`receiving portion 3a of one or more engaging projections 3 of the sealing member
`
`2. This rotation of the toner bottle 1 causes the toner to be fed out of the opening
`
`1a in the toner bottle 1 and into the toner hopper within the copier 100.
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`NY 802320v.1
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`The challenged claims of the ‘094 patent are directed to just the toner bottle
`
`1 and its sealing member 2, and do not recite the copier 100 and its driving portion
`
`20 or any connectability between the toner bottle 1 and the hollow cylindrical
`
`driving portion 20.
`
`C.
`
`Prosecution History of the ‘094 Patent
`
`The
`
`‘094 patent
`
`issued
`
`on
`
`application
`
`ser.
`
`no. 13/617,050
`
`(filed
`
`September 14, 2012) which claims priority under 35 U.S.C. §120 to application
`
`ser. no. 12/169,895 (filed July 9, 2008) that issued as U.S. Patent No. 7,647,012
`
`(Ex. 1003, “the ‘012 patent”). The Patent Owner filed a patent infringement suit in
`
`the Northern District of Georgia (1:11-cv-03855-RLV), asserting claims 24, 25 and
`
`30 of the ‘012 patent. Independent claim 24, in pertinent part recites:
`
`24. A toner supply container detachably mountable to an
`assembly of an electrophotographic imaging forming
`apparatus having a hollow cylindrical driving member
`that has a slot formed therein, which slot extends in a
`circumferential direction and defines a plurality of
`interior
`surfaces of
`the hollow cylindrical driving
`member, and a hollow cylinder that
`is substantially
`concentric with the hollow cylindrical driving member,
`said toner supply container comprising:
`
`*
`
`*
`
`*
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`NY 802320v.1
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`ii-ii-iii) a displacing force receiving portion provided at a
`position closer to said container body than said engaging
`portion,
`said
`displacing
`force
`receiving
`portion
`configured and positioned to receive a force from the
`hollow cylinder and cause said supporting portion to
`elastically displace in an inward direction,….
`
`Ex. 1003 at col. 27, ln. 35 - col. 28, ln. 45.
`
`In the infringement suit, a Special Master issued, on November 8, 2013, his
`
`“Claim Construction Report And Recommendations” addressing the construction
`
`of terms recited in claim 24.1 Over Patent Owner’s objections, the Special Master
`
`recommended that the preamble to claim 24 is a limiting element of the claim. See
`
`Ex. 1004 at pp. 21-52. The Special Master also recommended that the “detachably
`
`mounted” phrase recited in the preamble connotes that the toner supply container is
`
`“capable of being mounted and demounted”
`
`to/from the
`
`copier
`
`(i.e.,
`
`“electrophotographic imaging forming apparatus”), such as by a so-called
`
`“snap-fit” connector. See Ex. 1004 at pp. 52-59. With respect to the “displacing
`
`force receiving portion” limitation, the Special Master recommended that the
`
`phrase “configured and positioned to receive a force from the hollow cylinder and
`
`1 The face of the ‘094 patent reflects that the Special Master’s Claims Construction
`
`Report And Recommendations (Ex. 1004) was made part of the prosecution
`
`history of the ‘094 patent. See Ex. 1001 at p. 3 (right-hand column).
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`NY 802320v.1
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`cause said supporting portion to elastically displace in an inward direction” be
`
`given its “plain meaning”. Ex. 1004 at pp. 124-130.
`
`The District Court, on January 9, 2014, adopted the Special Master’s Claim
`
`Construction Report And Recommendations “as the opinion and order” of the
`
`court. Ex. 1005.
`
`Prior to the issuance of the Special Master’s Claim Construction Report And
`
`Recommendations on November 8, 2013, in application ser. no. 13/617,050 (which
`
`issued as the ‘094 patent), the patentee was prosecuting application claim 21 which
`
`recited word-for-word the same preamble and “displacing force receiving portion”
`
`limitation as claim 24 of the ‘012 patent. See Ex. 1002 at pp. 322-23 (Amendment
`
`dated April 11, 2013).
`
`On January 31, 2014, shortly after the district court’s adoption of the Special
`
`Master’s Claim Construction Report And Recommendations on January 9, 2014,
`
`the Patent Owner canceled application claim 21 and added new claims 22-74.
`
`Ex. 1002 at pp. 273-90 (Preliminary Amendment). The preamble of each of
`
`independent claims 22, 32, 41, 50, 59 and 67 recite “[a] toner supply container”
`
`only, and make no mention of a copier or the container being detachably
`
`mountable to the copier’s hollow cylindrical driving member. Consequently, the
`
`“displacing force receiving portion” limitation recited in each of independent
`
`claims 22, 32, 41, 50, 59 and 67 make no mention of being displaced by a force
`
`NY 802320v.1
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`
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`received from the copier’s hollow cylinder.
`
`In this regard, the “displacing force
`
`receiving portion” recited in application claim 22 is representative:
`
`ii-ii-iii) a displacing force receiving portion provided on
`the supporting portion at a position closer to the container
`body than the engaging portion,
`the displacing force
`receiving portion being displaceable with the supporting
`portion and having a radially outermost part that is more
`remote from the rotation axis of the container body than a
`radically outermost part of the engaging portion,
`
`Ex. 1002 at p. 275
`
`During a personal interview on February 12, 2014, the Patent Owner and the
`
`Examiner “discussed the differences between the limitations in claim 21 of this
`
`application and the limitations of the newly filed claims 22, 32, 41, 50, 59, and 67
`
`in the RCE filed 1/31/2014. Also, the reference to US 7,647,012 part of the patent
`
`family of this application was discussed specifically claim 24.” Ex. 1002 at
`
`pp. 253 & 257.
`
`After a terminal disclaimer was filed by the Patent Owner, claims 22-74
`
`were allowed. Ex. 1002 at pp. 92-98. On December 9, 2014, the ‘094 patent
`
`issued. See Ex. 1001 at p. 1.
`
`D.
`
`Patents and Printed Publications Relied On
`
`Petitioner relies on the following patents and publications:
`
`NY 802320v.1
`
`15
`
`
`
`1.
`
`U.S. Patent No. 5,903,806 (“Matsuoka,” Ex. 1006) issued on May 11,
`
`1999, and therefore constitutes prior art against the ‘094 patent under 35 U.S.C.
`
`§102(b).
`
`E.
`
`Statutory Grounds for Challenge (37 C.F.R. §42.104(b)(1)-(2)
`
`Cancellation of claims 1, 7-9, 11, 16-18, 29 and 38 of the ‘094 patent is
`
`requested on the following grounds:
`
`1.
`
`Claims 1, 8-9, 11, 17-18, 29 and 38 are anticipated under 35 U.S.C.
`
`§102(b) by Matsuoka.
`
`2.
`
`Claims 1, 7-9, 11, 16-18, 29 and 38 would have been obvious under
`
`35 U.S.C. §103 over Matsuoka.
`
`F.
`
`Claim Construction (37 C.F.R. §42.104(b)(3))
`
`The claim terms should be given their broadest reasonable construction in
`
`view of the specification. 37 C.F.R. §42.100(b). The claim terms are generally
`
`presumed to take on their ordinary and customary meaning. Because the term
`
`“means” is absent in the challenged claims, there is a strong presumption that
`
`35 U.S.C. §112, ¶6 does not apply. Lighting World, Inc. v. Birchwood Lighting,
`
`Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). Furthermore, because the preamble of
`
`each challenged claim is limited to just a toner supply container and omits any
`
`mention of a copier,
`
`the challenged claims do not require the toner supply
`
`container to be detachably mountable to a copier, such as by a “snap-fit”
`
`NY 802320v.1
`
`16
`
`
`
`connection. Also, because the preamble of each challenged claim is limited to just
`
`a toner supply container and omits any mention of a copier, the challenged claims
`
`do not require any recited structural element to actually receive a force exerted by a
`
`copier. See Ex. 1007, Springett Decl. at ¶¶19-21.
`
`Petitioner proposes the following claim constructions for the purposes of this
`
`Petition only.
`
`1.
`
`“toner”
`
`Challenged independent claims 1, 11, 29 and 38 of the ‘094 patent all recite
`
`“a container body configured to contain toner … and configured to permit
`
`discharge of the toner contained in the container body”. A person of ordinary
`
`skill2 would understand the “toner” term to mean a powder for developing an
`
`2 A person of ordinary skill in the art of the ‘094 patent would be a person with
`
`(1) a bachelor’s degree in mechanical engineering, or a similar technical field;
`
`(2) a working knowledge of electrophotographic imaging systems, image forming
`
`apparatuses, toner containers, and the like; (3) at least two years of experience in
`
`analysis, design and development of such electrographic imaging systems, image
`
`forming apparatuses, and toner containers; and (4) an understanding of the prior art
`
`and an understanding that design concepts can be adopted from other contexts
`
`where the problems or needs might be similar, and relevant technical literature and
`
`publications. Ex. 1007, Springett Decl. at ¶15.
`
`NY 802320v.1
`
`17
`
`
`
`electrostatic image created within an electrophotographic image forming apparatus
`
`such as a copier, a printer or a facsimile machine. Synonymous terms for “toner”
`
`include “replenisher,” “replenishing agent,” “developer,” and “developing agent”.
`
`Ex. 1007, Springett Decl. at ¶¶22-25. Thus, in the context of the challenged
`
`claims, the “toner” term means “a powder that can be contained in and discharged
`
`from a container”. This proposed construction comports with the ‘094 patent
`
`specification which states:
`
`In a conventional electrophotographic image forming
`apparatus such as an electrographic copying machine or a
`printer, fine particle toner is used as a developer….
`*
`*
`*
`Since the toner is a very fine powder, it is known to
`place, upon toner supplying operation, a toner supply
`container inside the main assembly of the image forming
`apparatus and to gradually supply the toner through a
`small opening to avoid scattering the toner.
`
`Ex. 1001 at col. 1, ln. 30-48.
`
`2.
`
`“the sealing member being movable relative to the container body
`
`in an axial direction of the container body” and “the opening becoming
`
`unsealed by relative movement of the sealing member and the container body
`
`away from one another”
`
`NY 802320v.1
`
`18
`
`
`
`Challenged independent claims 1, 11, 29 and 38 all recite that “the sealing
`
`member being movable relative to the container body in an axial direction of the
`
`container body” and “a sealing portion … configured to seal the opening when the
`
`sealing member and the container body are in a first position relative to one
`
`another, the opening becoming unsealed by relative movement of the sealing
`
`member and the container body away from one another from the first position to a
`
`second position relative to one another”. Petitioner proposes two alternative
`
`constructions:
`
`(1) the sealing member can move axially relative to the container
`
`body, and the sealing portion is moveable from a first position sealing the
`
`container body’s opening to a second position unsealing the container body’s
`
`opening; or (2) the sealing member can move axially relative to the container
`
`body, and when the sealing portion is in a first position sealing the container
`
`body’s opening, an axial end of the container body can relatively move away from
`
`an axial end of the seal member so as to displace the sealing portion into a second
`
`position unsealing the container body’s opening.
`
`Both of Petitioner’s proposed constructions are supported by the ‘094 patent
`
`specification. More particularly, as illustrated in Figures 7(B) and 7(C) of the
`
`‘094 patent, which are reproduced below, after the engaging projection 3 locks the
`
`sealing member 2 to the axially-stationary driving portion 20, the copier 100
`
`NY 802320v.1
`
`19
`
`
`
`moves the toner bottle 1 axially away from now the axially-stationary sealing
`
`member 2.
`
`“As will be understood from FIG. 7(C), after sealing member 2 and the driving
`
`portion 20 are engaged, a slidable member 300 is retracted in a direction indicated
`
`by an arrow b in interrelation with a closing operation of the front cover 15 for
`
`exchange of the bottle. By this, the toner bottle 1 is retracted, too, but the sealing
`
`member is locked within the main assembly side of the [copier 100], and therefore,
`
`the sealing member 2 is away from the toner bottle 1, thus opening the opening 1a
`
`to enable toner supply.” Ex. 1001 at col. 8, ln. 9-17.
`
`When the toner bottle 1 is not within the copier 100, the toner bottle’s
`
`opening 1a is intended to be sealed. See, e.g., Ex. 1001 at col. 7, ln. 46-51 &
`
`col. 9, ln. 1-33. Thus, the recited “relative movement of the sealing member and
`
`the container body away from one another from the first position to a second
`
`position relative to one another” is not intended to occur unless and until the toner
`
`bottle 1 is inserted into copier 100. See Ex. 1001 at Figs. 7(A)-7(C). However, the
`
`NY 802320v.1
`
`20
`
`
`
`preamble of challenged independent claims 1, 11, 29 and 38 recites “a toner supply
`
`container” itself, and does not explicitly recite a copier or the alike. Indeed, during
`
`prosecution of the ‘094 patent, Patent Owner effectively canceled the recitation to
`
`a copier or the like from the preamble, by cancelling application claim 21 and
`
`adding new application claims 22-74. See supra at pp. 14-15.
`
`“Claim scope is not limited by language that suggests or makes optional but
`
`does not require steps to be performed, or by claim language that does not limit a
`
`claim to a particular structure.” MPEP§2111.04. “A claim containing a ‘recitation
`
`with respect
`
`to the manner in which a claimed apparatus is intended to be
`
`employed does not differentiate the claimed apparatus from a prior art apparatus’ if
`
`the prior art apparatus teaches all
`
`the structural
`
`limitations of the claim.”
`
`MPEP§2114 (quotinq Ex Parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter.
`
`1987)). This “relative movement” limitation recites the manner in which the toner
`
`supply container is to be used, i.e., in a copier or the alike. Consequently, the
`
`“relative movement” limitation should be disregarded by the Board, leaving the
`
`structural limitation that the sealing portion is movable from a first position sealing
`
`the container body’s opening to a second position unsealing the container body’s
`
`opening. See Ex. 1007, Springett Decl. at ¶¶28-31.
`
`Alternatively, the limitation should be construed to require that an axial end
`
`of the container body relatively moves axially away from an axial end of the
`
`NY 802320v.1
`
`21
`
`
`
`sealing member, thereby unsealing the container body’s opening. As depicted in
`
`Figures 7(B) and 7(C), the axial end of the toner bottle 1 having opening 1a is
`
`moved axially away from the axial end of sealing member 2 having sealing portion
`
`2b, thereby unsealing the opening 1a. See Ex. 1007, Springett Decl. at ¶¶32-33.
`
`3.
`
`“displacing force receiving portion …” & “projecting portion …”
`
`Claim 1 recites “a displacing force receiving portion provided on the
`
`supporting portion at a position closer to the container body than the engaging
`
`portion,
`
`the displacing force receiving portion being displaceable with the
`
`supporting portion”. The corresponding limitation recited in claim 11 is similarly
`
`worded
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