Filed on behalf of: Canon Inc.
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`Paper No. ____
`Filed: December 22, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`General Plastic Industrial Co., Ltd.
`Petitioner,
`v.
`Canon Inc.
`Patent Owner.
`________________
`
`Case IPR2015-01954
`U.S. Patent 8,909,094
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`
`
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`
`BACKGROUND ............................................................................................. 3 
`
`A. 
`
`The ’094 Patent ..................................................................................... 3 
`
`B.  Matsuoka ............................................................................................. 12 
`
`III. 
`
`PERSON OF ORDINARY SKILL ............................................................... 17 
`
`IV.  CLAIM CONSTRUCTION .......................................................................... 18 
`
`A. 
`
`B. 
`
`“toner” ................................................................................................. 19 
`
`“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” ............................................................................................... 20 
`
`C. 
`
`“displacing force receiving portion …” and “projecting
`portion …” ........................................................................................... 25 
`
`V. 
`
`LEGAL STANDARDS ................................................................................. 31 
`
`VI.  MATSUOKA DOES NOT ANTICIPATE ANY OF THE
`CHALLENGED CLAIMS ............................................................................ 33 
`
`A. 
`
`Petitioner Has Failed to Show that Matsuoka’s Cartridge
`Includes Each of the Container Elements Recited in the
`Challenged Claims .............................................................................. 33 
`
`B.  Matsuoka Would Not Anticipate Independent Claims 1,
`11, 29, and 38 Even If Rotary Power Transmitting
`Member 44 Could Be Considered Part of the Claimed
`Toner Supply Container ...................................................................... 37 
`
`ii
`
`

`
`
`
`C. 
`
`Petitioner Fails to Show that Matsuoka Teaches All the
`Limitations of Claims that Depend from Claims 1 and 11 ................. 40 
`
`VII.  MATSUOKA DOES NOT RENDER OBVIOUS ANY OF
`THE CHALLENGED CLAIMS ................................................................... 41 
`
`A. 
`
`B. 
`
`Removing Matsuoka’s Cartridge With the Rotary Power
`Transmitting Member Still Attached Would Not Change
`the Fact that the Latter Is Part of the Apparatus and Not
`the Cartridge ........................................................................................ 41 
`
`Petitioner’s Conclusory Argument Regarding Claims 7
`and 16 Is Insufficient to Establish that Those Claims Are
`Obvious ............................................................................................... 45 
`
`VIII.  CONCLUSION .............................................................................................. 47 
`
`
`
`iii
`
`

`
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`Chef Am., Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) ..................................................................... 23
`
`Gardner v. TEC Sys., Inc.,
`722 F.2d 1338 (Fed. Cir. 1984) ..................................................................... 46
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ........................................................................................... 32
`
`Hartness Int’l Inc. v. Simplimatic Eng’g Co.,
`819 F.2d 1100 (Fed. Cir. 1987) .............................................................. 41, 45
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ..................................................................... 18
`
`In re Giannelli,
`739 F.3d 1375 (Fed. Cir. 2014) .............................................................. 24, 43
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)....................................................................................... 32
`
`Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) ..................................................................... 32
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ........................................................ 31, 32, 36
`
`Statutes 
`
`35 U.S.C. § 102 ........................................................................................................ 31
`
`35 U.S.C. § 314(a) .............................................................................................. 3, 31
`
`Regulations 
`
`37 C.F.R. § 42.65(a) .......................................................................................... 32, 46
`
`37 C.F.R. § 42.100(b) .............................................................................................. 18
`
`iv
`
`

`
`
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 32
`
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 32
`
`37 C.F.R. § 42.108(c) .......................................................................................... 3, 31
`
`P.T.A.B. 
`Ex parte Goodrich,
`Appeal 2009-009437, 2010 WL 3441066 (B.P.A.I. Aug. 30, 2010) ............ 46
`
`Ex parte Icon Health & Fitness, Inc.,
`Appeal No. 2006-0790, 2006 WL 1665623 (B.P.A.I. May 16, 2006) .......... 25
`
`Ex parte Murata,
`Appeal 2013-007289, 2015 WL 4628749 (P.T.A.B. Jul. 31, 2015) ............. 46
`
`General Elec. Co. v. TAS Energy Inc.,
`IPR2014-00163, Paper 11 (P.T.A.B. May 13, 2014) ............................. 32, 46
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014) ..................................... 44
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) .................................... 32
`
`
`
`v
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`

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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
`
`Canon Inc. (“Patent Owner”) respectfully submits this preliminary response
`
`
`
`
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`to the petition of General Plastic Industrial Co., Ltd. (“Petitioner”) seeking inter
`
`partes review of U.S. Patent No. 8,909,094 (“the ’094 patent”).1
`
`I.
`
`INTRODUCTION
`
`Petitioner requests institution of inter partes review on the basis of alleged
`
`anticipation and/or obviousness of claims 1, 7-9, 11, 16-18, 29, and 38 of the ’094
`
`patent. Each of those claims is directed to a toner supply container for use in an
`
`electrophotographic image forming apparatus, such as a copier. The sole reference
`
`upon which Petitioner relies is U.S. Patent No. 5,903,806 (“Matsuoka”), which was
`
`of record during prosecution of the ’094 patent.
`
`The challenged claims of the ’094 patent are directed a toner supply
`
`container, such as a toner bottle that would be used for supplying toner to a laser
`
`copy machine or laser printer. Petitioner acknowledges that “[t]he challenged
`
`claims of the ‘094 patent are directed to just the toner bottle … and do not recite
`
`
`1 Petitioner has filed another petition for inter partes review challenging Patent
`
`Owner’s related U.S. Patent No. 9,046,820 (“the ’820 patent”), which is the
`
`subject of IPR2015-01966. The ’820 patent issued from a division of the
`
`application that issued as the ’094 patent.
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`1
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`the copier ....” Petition at 12. But in arguing that Matsuoka discloses the required
`
`elements of the claimed toner supply container, Petitioner relies heavily on
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`Matsuoka’s rotary power transmitting member 44. That member is part of a
`
`developing agent replenishing apparatus 40 on the color printer side, and is not part
`
`of Matsuoka’s cartridge 30. Petitioner’s reliance on Matsuoka’s rotary power
`
`transmitting member 44 is improper because it is not part of the cartridge 30 that
`
`Petitioner correlates with the claimed toner supply container.
`
`Even if one could consider Matsuoka’s rotary power transmitting member
`
`44 to be part of the claimed toner supply container, Matsuoka still fails to satisfy at
`
`least one other limitation of the challenged claims. In particular, all the challenged
`
`claims require a sealing member including a sealing portion configured such that
`
`the toner supply container’s opening becomes unsealed by relative movement of
`
`the sealing member and the container body away from one another. In contrast,
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`Matsuoka’s cartridge 30 is unsealed by advancing the cartridge 30 with its fixed
`
`cover 32 toward the rotary power transmitting member 44, which causes an
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`opening/closing cover 33 to be compressed, much like an accordion. Thus, the
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`manner in which Matsuoka’s cartridge 30 unseals is the exact opposite of what the
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`challenged claims require.
`
`2
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`Furthermore, Petitioner’s conclusory and unsubstantiated arguments do not
`
`
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`
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`demonstrate prima facie obviousness because they employ the same flawed
`
`reliance on the rotary power transmitting member 44 mentioned above, and
`
`Petitioner fails to provide any credible explanation as to why a person of ordinary
`
`skill in the art would have modified Matsuoka’s cartridge 30 to arrive at the
`
`claimed invention. Additional unmet limitations of dependent claims 7 and 16 are
`
`also discussed below in Section VII.B.
`
`For at least these reasons, Petitioner has failed to meet its burden of
`
`demonstrating a reasonable likelihood of prevailing with respect to at least one
`
`claim, under either alleged ground. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c).
`
`II. BACKGROUND
`
`A. The ’094 Patent
`
`The challenged claims of the ’094 patent are directed to a toner supply
`
`container of the type used in an electrophotographic image forming apparatus, such
`
`as a copying machine. Ex. 1001 at col. 1:26-36, claims 1, 7-9, 11, 16-18, 29, 38.
`
`In FIG. 3 of the ’094 patent, shown below, an exemplary toner supply container is
`
`denoted by reference number 1 and a main assembly of a copier is denoted by
`
`reference number 100. The toner supply container is installed in the copier by
`
`inserting it in the direction indicated by arrow “a.” Id. at cols. 7:5-23, 9:25-27.
`
`3
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`FIG. 3
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`The toner supply container has an opening 1a at one end. Id. at FIGS. 8, 10,
`
`col. 9:37-39. The opening is sealed when the toner supply container is outside of
`
`the copier. Id. at col. 9:41-47. When the toner supply container is installed in the
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`copier, two things happen: (1) the opening is unsealed; and (2) when the copier is
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`being used, the toner supply container is rotated. Id. at cols. 7:24-8:54. The toner
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`supply container has an internal structure, such as the helical projection shown in
`
`FIG. 8 of the ’094 patent, that causes the toner inside of the container to be fed out
`
`of the opening and into a toner hopper within the copier when the container is
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`rotated. Id. at FIG. 8, cols. 9:64-10:37.
`
`For purposes of the arguments herein, challenged claims 1 and 7 are
`
`illustrative. Those claims recite as follows:
`
`4
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`U.S. Patent No. 8,909,094
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`1. A toner supply container comprising:
`
`i) a container body configured to contain toner and rotatable about an
`axis thereof, the container body including a cylindrical portion and an
`opening provided at one axial end portion thereof and configured to
`permit discharge of the toner contained in the container body; and
`
`ii) a sealing member provided at the one axial end portion of the
`container body, the sealing member being movable relative to the
`container body in an axial direction of the container body, the sealing
`member including:
`
`ii-i) a sealing portion provided at a side adjacent the container
`body and 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;
`and
`
`ii-ii) a coupling portion provided at a side remote from the
`container body and configured and positioned to receive a
`rotational drive force for rotating the sealing member and the
`container body about the rotation axis of the container body, the
`coupling portion including:
`
`ii-ii-i) a supporting portion provided on the sealing portion, the
`supporting portion being elastically displaceable in an inward
`direction toward the rotation axis of the container body and
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`5
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`U.S. Patent No. 8,909,094
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`elastically restorable in an outward direction away from the
`rotation axis of the container body;
`
`ii-ii-ii) an engaging portion provided at a free end of the
`supporting portion and being displaceable with the supporting
`portion, the engaging portion including:
`
`ii-ii-ii-i) a rotational force receiving portion capable of being
`abutted in a direction that is concentric with a circumference
`of the cylindrical portion of the container body to receive a
`rotational drive force for rotating the sealing member and
`the container body; and
`
`ii-ii-ii-ii) a locking portion capable of being abutted in a
`direction parallel to the rotation axis of the container body to
`enable the relative movement of the sealing member and the
`container body from the first position, in which the opening
`is sealed, to the second position, in which the opening is
`unsealed; and
`
`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 radially outermost
`part of the engaging portion,
`
`wherein the supporting portion, the engaging portion, and the
`displacing force receiving portion are integrally molded.
`
`6
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`U.S. Patent No. 8,909,094
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`7. The toner supply container of claim 1, wherein the supporting
`portion is wider than the displacing force receiving portion.
`
`
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`
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`Id. at claims 1, 7.
`
`Elements of the claimed toner supply container include a container body and
`
`a sealing member, the latter having a sealing portion (labeled 2b in FIG. 36A
`
`below) and a coupling portion (labeled 2c in FIG. 36A below). The coupling
`
`portion, in turn, includes a supporting portion (not labeled in FIG. 36A below, but
`
`labeled 2f in other figures of the ’094 patent, e.g., FIG. 23), an engaging portion
`
`(labeled 3 in FIG. 36A below), and a displacing force receiving portion2 (labeled 4
`
`in FIG. 36A below).
`
`
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`2 Challenged claims 29 and 38 recite a projecting portion instead of a displacing
`
`force receiving portion.
`
`7
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`U.S. Patent No. 8,909,094
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`FIG. 36A
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`The sealing member’s coupling portion is engageable with a part in the
`
`copier, specifically, a hollow cylindrical driving member (labeled 20 in FIG. 36A
`
`above). The driving member contains a slot 20h, which is interrupted by a pair of
`
`ribs 20a. A motor (not shown) within the copier rotates the driving member. That
`
`member, in turn, rotates the toner supply container through the abutment of one or
`
`both ribs with one or more engaging portions of the sealing member. Id. at col.
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`14:29-45.
`
`When the toner supply container is installed in the copier, the supporting
`
`portions of the sealing member first elastically displace inwardly so that the
`
`coupling portion can enter the driving member, and then elastically restore
`
`outwardly (that is, back to their original position) so that the engaging portions
`
`engage with the slot in the driving member. Id. at cols. 12:57-13:7, 18:28-32.
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`FIG. 24 of the ’094 patent, shown below, provides a cross-sectional view of the
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`8
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`U.S. Patent No. 8,909,094
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`state in which the coupling portion of the sealing member has entered the driving
`
`member 20 and the engaging portions 3 have engaged with the slot of the driving
`
`member.3
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`
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`FIG. 24
`
`Once the engaging portions have engaged with the slot of the driving
`
`member, the driving member and the container body are moved relatively away
`
`
`3 In addition to showing the toner supply container, the sealing member, and the
`
`driving member, FIG. 24 also shows a hollow cylinder 21. The hollow
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`cylinder, not to be confused with the hollow cylindrical driving member 20, is a
`
`part of the copier that is concentric with and movable relative to the driving
`
`member. As discussed in more detail below, the hollow cylinder plays a role in
`
`disengaging the engaging portions from the slot in the driving member when
`
`the container is removed from the copier.
`
`9
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`U.S. Patent No. 8,909,094
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`from each other. This movement may be caused, for example, by the closing of a
`
`cover on the copier. As the driving member and the container body move
`
`relatively away from each other, so too do the sealing member and the container
`
`body. This is because the engaging portions are engaged with the slot of the
`
`driving member. Therefore, as the driving member and the container body pull
`
`away from each other, the sealing member is pulled out of the opening in the
`
`container body. Id. at cols. 8:9-17, 9:25-32, 15:4-18, 18:28-32. FIG. 25A, shown
`
`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 container body.
`
`Id. at col. 18:61-63.
`
`
`
`FIG. 25A
`
`In this state, with the opening unsealed, the driving member rotates the toner
`
`supply container through the abutment of one or both ribs with the engaging
`
`portions of the sealing member. This rotation of the toner supply container causes
`
`10
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`the toner to be fed out of the opening in the container body and into the toner
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`hopper within the copier. Id. at cols. 8:49-54, 18:28-32.
`
`To remove the toner supply container from the copier, the engaging portions
`
`are disengaged from the slot in the driving member and the sealing portion of the
`
`sealing member is resealed within the opening of the container body. This is
`
`illustrated below in FIGS. 25B and 25C, which show the hollow cylinder 21
`
`advancing toward the container body in direction a. As the hollow cylinder
`
`advances toward the container body, two things happen: (1) the hollow cylinder 21
`
`forces the displacing force receiving portions 4 inward, causing the supporting
`
`portions to elastically displace in an inward direction and the engaging portions 3
`
`to disengage from the slot (shown in FIG. 25B); and (2) the hollow cylinder 21
`
`pushes the sealing member 2 toward the container body 1 and snugly fits the
`
`sealing portion back into the opening 1a (shown in FIG. 25C). At this point, the
`
`sealing member is disengaged from the driving member, the opening is resealed,
`
`and the toner supply container can be safely removed from the copier without
`
`spillage of any toner that may remain in the container. Id. at cols. 18:64-19:15.
`
`11
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`U.S. Patent No. 8,909,094
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`FIG. 25B
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`FIG. 25C
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`B. Matsuoka
`As the petition notes, Matsuoka is a reference that was of record during
`
`prosecution of the ’094 patent. Petition at 23; see also Ex. 1001 at p. 2; Ex. 1002
`
`at p. 128.
`
`Matsuoka discloses a developing agent replenishing apparatus 40 (part of the
`
`printer) and a cartridge 30 (which contains a developing agent), as shown in FIGS.
`
`6 and 7, reproduced below. FIGS. 7(a) and 7(b) provide exploded views of the
`
`cartridge 30 and the apparatus 40’s rotary power transmitting member 44,
`
`respectively.
`
`12
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`U.S. Patent No. 8,909,094
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`The cartridge 30 consists of a container main body 31, a fixed cover 32
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`“which is fixed solidly with opening 312 of the container main body 31,” and an
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`opening/closing cover 33 in the form of expandable bellows. Ex. 1006 at col.
`
`7:22-30.
`
`The rotary power transmitting member 44 is part of the printer’s developing
`
`agent replenishing apparatus 40, and is fixed at one end to a cartridge-turning gear
`
`47. Id. at col. 8:5-7. “At two locations on the rotary power transmitting member
`
`44 cartridge coming-off prevention portion 444 is provided to be projected so that
`
`it may be engaged on a detachable basis with engagement portion 328 of the fixed
`
`cover 32.” Id. at col. 8:33-37; see also id. at col. 8:45-50 (explaining how portions
`
`within the rotary power transmitting member 44 also “engage on a detachable
`
`basis” with a portion within the fixed cover 32 of the cartridge 30).
`
`13
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`FIGS. 9(a), 9(b), 10(a), 10(b), and 11 of Matsuoka, reproduced below, show
`
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`
`
`
`how the cartridge 30 is attached to the printer’s development agent replenishing
`
`apparatus 40. Id. at col. 8:54-56. FIG. 9(a) shows the cartridge 30 before it is
`
`attached to the development agent replenishing apparatus 40. Id. at col. 8:60-62.
`
`In this state, the cartridge opening/closing cover 33 is in its expanded state so that
`
`no developing agent can escape from the cartridge 30. Id. at cols. 8:62-9:2.
`
` 
`
`In FIG. 9(b), the cartridge 30 (including the fixed cover 32) has been
`
`advanced toward the rotary power transmitting member 44 in the direction of the
`
`arrow, and is about to be attached to the development agent replenishing apparatus
`
`40. Id. at col. 9:3-6.
`
`14
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`FIG. 11 shows the cartridge 30 after it has advanced all the way toward the
`
`rotary power transmitting member 44. In this state, the engagement portion 328 of
`
`the fixed cover 32 engages with the cartridge coming-off preventing portion 444 of
`
`the rotary power transmitting member 44, and both the cartridge opening/closing
`
`cover 33 and a development agent replenishing apparatus opening/closing cover 45
`
`are compressed, creating an opening 321. Id. at col. 9:45-54. As the rotary power
`
`transmitting member 44 rotates the cartridge 30, developing agent is dispensed
`
`through the opening 321. Id. at cols. 9:55-10:12.
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`15
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`To detach the cartridge 30 from the development agent replenishing
`
`apparatus 40, the cartridge 30 is moved in the opposite direction away from the
`
`rotary power transmitting member 44, as shown by the arrow in FIG. 14(a) below.
`
`In the state shown in FIG. 14(a), the cartridge opening/closing cover 33 and the
`
`development agent replenishing apparatus opening/closing cover 45 have once
`
`again expanded, thereby sealing the cartridge 30 so that no residual toner scatters
`
`in the machine or soils the operator’s hands. Id. at cols. 10:50-11:2.
`
`16
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`III. PERSON OF ORDINARY SKILL
`
`Petitioner has proposed the following definition of the person of ordinary
`
` 
`
`skill in the art:
`
`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.
`
`17
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`U.S. Patent No. 8,909,094
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`Petition at 17 n.2. Patent Owner reserves the right to dispute Petitioner’s proposed
`
`definition if inter partes review is instituted. For present purposes, the definition
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`does not matter, as the Petition fails to demonstrate that any of the challenged
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`claims are likely anticipated or obvious regardless of the level of ordinary skill in
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`the art.
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`IV. CLAIM CONSTRUCTION
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`Claims are given their “broadest reasonable construction in light of the
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`specification of the patent in which [they] appear.” 37 C.F.R. § 42.100(b); see also
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`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015).
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`Petitioner has asked the Board to construe five terms recited in independent
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`claims 1, 11, 29, and 38, which it groups into the three categories discussed below.
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`Patent Owner believes that most of these terms do not require construction, and
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`that Petitioner’s proposed constructions should be rejected for at least the
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`following reasons.
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`18
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`A.
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`“toner”
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`
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`Petitioner proposes construing “toner” to mean “a powder that can be
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`contained in and discharged from a container,” whereas Patent Owner believes the
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`term should be accorded its readily understandable plain and ordinary meaning4:
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`Patent Owner’s
`Proposed Construction 
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`Petitioner’s
`Proposed Construction 
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`plain and ordinary meaning 
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`a powder that can be contained in and
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`discharged from a container 
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`In addition to being unnecessary, Petitioner’s proposed construction is
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`overbroad because it would encompass powders that no one would consider toner
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`(e.g., baby powder).
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`4 Patent Owner does not dispute that Matsuoka’s cartridge 30 contains toner. See
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`Ex. 1006 at col. 6:50-51 (disclosing a “2-component developing agent
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`composed of toner and carrier”).
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`19
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`“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”
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`B.
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`
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`Claims 1, 11, 29, and 38 of the ’094 patent include two limitations, italicized
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`below, that Petitioner has proposed construing together:
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`ii) a sealing member provided at the one axial end portion of the
`container body, the sealing member being movable relative to the
`container body in an axial direction of the container body, the sealing
`member including:
`ii-i) a sealing portion provided at a side adjacent the container
`body and 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;
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`Ex. 1001 at claims 1, 11, 29, 38. Patent Owner believes that both italicized phrases
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`should be accorded their plain and ordinary meaning, whereas Petitioner proposes
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`the following two alternative constructions:
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`20
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`

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`
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`Patent Owner’s
`Proposed Construction
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`Petitioner’s
`Proposed Construction
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`
`
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`plain and ordinary meaning
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`(1) the sealing member can move axially
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`relative to the container body, and the
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`sealing portion is moveable from a first
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`position sealing the container body’s
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`opening to a second position unsealing
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`the container body’s opening;
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`or
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`(2) the sealing member can move axially
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`relative to the container body, and when
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`the sealing portion is in a first position
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`sealing the container body’s opening, an
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`axial end of the container body can
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`relatively move away from an axial end
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`of the seal member so as to displace the
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`sealing portion into a second position
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`unsealing the container body’s opening
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`Both of Petitioner’s proposed constructions change the explicit claim
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`21
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`
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`
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`language by eliminating or altering limitations that Matsuoka fails to meet.
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`Specifically, each of the challenged independent claims expressly states that the
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`sealing portion is configured such that the container’s opening becomes unsealed
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`by relative movement of the sealing member and the container body away from
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`one another, for example, as illustrated in FIGS. 7(A)-(C) of the ’094 patent.
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`Petitioner’s first proposed construction entirely omits this requirement, while its
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`second proposed construction rewrites the claim language to mean something other
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`than what it actually says. Whereas the claims recite that the opening becomes
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`unsealed by relative movement of the sealing member and the container body away
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`from one another, Petitioner’s second proposed construction would result in the
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`claims reading on a container in which the opening becomes unsealed by relative
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`movement of the sealing member and the container body toward one another, so
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`long as an axial end of the container body moves relatively away from an axial end
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`of the sealing member.5
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`5 This could occur, for example, if the sealing member is partly inside the
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`container body. In that situation, when the sealing member and the container
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`body move toward each other, the axial end of the sealing member that is inside
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`
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`22
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`Petitioner argues that both of its proposed constructions are correct because
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`
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`
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`they accurately describe what is depicted in FIGS. 7(B) and 7(C) of the ’094
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`patent. See Petition at 19-22. But simply because a construction covers a
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`disclosed embodiment does not make it correct. The purpose of claim construction
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`is to construe the claims as they are written, not as they could have been written.
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`Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).
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`Whether Patent Owner could have claimed that the opening is unsealed by relative
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`movement between the sealing member and the container body, regardless of
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`direction, or claimed that the opening is unsealed by an axial end of the sealing
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`member moving relatively away from an axial end of the container body, is
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`irrelevant because that is not what Patent Owner claimed. Patent Owner claimed
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`that the container’s opening becomes unsealed by relative movement of the sealing
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`member and the container body away from one another. This, too, accurately
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`describes what is depicted in FIGS. 7(B) and 7(C) of the ’094 patent, where the
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`sealing member 2 is held fixed while the main body 1A of the toner bottle moves
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`away from it in the direction of arrow “b.” FIGS. 7(B) and 7(C) thus do not
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`the container body would move away from an axial end of the container body
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`as the sealing member moves farther into the container body.
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`23
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`Case IPR2015-01954
`U.S. Patent No. 8,909,094
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`
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`provide a reason to depart from the plain and ordinary meaning of the claim
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`language.
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`Petitioner also argues that the manner in which the opening becomes
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`unsealed is not a claim limitation because the relative movement between the
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`sealing member and the container body is not intended to occur unless and until the
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`container is inserted into a copier, the latter of which is not an element of the
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`challenged claims. See Petition at 20-21. Petitioner is