UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP Inc.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`Patent No. 7,156,492
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,156,492
`CHALLENGING CLAIMS 1, 2, 4, and 5
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP Inc.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`Patent No. 7,156,492
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,156,492
`CHALLENGING CLAIMS 1, 2, 4, and 5
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ..........................................................................................1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .......................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)...........................1
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................1
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) and...........2
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)..............................2
`
`III.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103......................................3
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104........................3
`
`V.
`
`THE ’492 PATENT AND ITS PROSECUTION ..........................................3
`
`A.
`
`B.
`
`Summary of the Prosecution History ...................................................3
`
`Brief Description of the Patent.............................................................4
`
`VI.
`
`THE PRIOR ART...........................................................................................6
`
`A.
`
`B.
`
`Summary of the Prior Art.....................................................................6
`
`Brief Description of the Prior Art ........................................................7
`
`1.
`
`U.S. Patent No. 5,565,900 to Cowger et al. (“Cowger”)...........7
`
`2. WO 01/02172 A1 to Silverbrook et al. (“Silverbrook
`2172”).........................................................................................8
`
`3.
`
`U.S. Patent No. 6,428,142 to Silverbrook et al.
`(“Silverbrook 142”)....................................................................8
`
`C. Motivations to Combine Cowger, Silverbrook 2172, and
`Silverbrook 142 ....................................................................................9
`
`i
`
`
`
`TABLE OF CONTENTS
`
`(continued)
`
`Page
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED .............................................................................10
`
`A.
`
`B.
`
`C.
`
`Claims For Which Review Is Requested ...........................................10
`
`Statutory Grounds Of Challenge........................................................10
`
`Proposed Claim Constructions...........................................................11
`
`1.
`
`2.
`
`3.
`
`“carrier”....................................................................................11
`
`“that can each transport a respective type of fluid”.................12
`
`“the carrier, in the form of a channel member”.......................13
`
`VIII. DETAILED GROUNDS FOR UNPATENTABILITY...............................15
`
`A.
`
`Ground 1: Claims 1, 2, and 4 are obvious under 35 U.S.C.
`§ 103(a) in view of Cowger and Silverbrook 2172............................15
`
`1.
`
`2.
`
`3.
`
`Claim 1.....................................................................................15
`
`Claim 2.....................................................................................28
`
`Claim 4.....................................................................................30
`
`B.
`
`C.
`
`Ground 2: Claim 5 is obvious under 35 U.S.C. § 103(a) in view
`of Cowger and Silverbrook 2172 in light of Bohorquez....................31
`
`Ground 3: Claims 1-2, and 4 are obvious under 35 U.S.C.
`§ 103(a) in view of Silverbrook 142 and Silverbrook 2172 ..............32
`
`1.
`
`2.
`
`3.
`
`Claim 1.....................................................................................32
`
`Claim 2.....................................................................................39
`
`Claim 4.....................................................................................41
`ii
`
`
`
`TABLE OF CONTENTS
`
`(continued)
`
`Page
`
`D.
`
`E.
`
`Ground 4: Claim 5 is obvious under 35 U.S.C. § 103(a) in view
`of Silverbrook 142 and Silverbrook 2172 in light of Bohorquez ......42
`
`Claim Chart for Grounds 1-4 .............................................................43
`
`IX. CONCLUSION.............................................................................................60
`
`iii
`
`
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 7,156,492 to Silverbrook et al.
`Declaration of Stephen Pond, Ph.D. (“Pond Decl.”)
`File History of U.S. Patent 7,156,492
`U.S. Patent No. 5,565,900 to Cowger et al.
`WO 01/02172 A1 to Silverbrook et al.
`U.S. Patent No. 6,428,142 to Silverbrook et al.
`U.S. Patent No. 5,682,186 to Bohorquez et al.
`Curriculum Vitae of Stephen Pond, Ph.D.
`
`HP
`Exhibit #
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`As will be shown below, claims 1, 2, 4, and 5 of U.S. Patent No. 7,156,492
`
`(“’492 patent,” Ex. 1001) should be found unpatentable under pre-AIA 35 U.S.C.
`
`§ 103 because the prior art plainly confirms that the claims were well known in the
`
`art years before the ’492 patent application was filed. In particular, the ’492 patent
`
`broadly claims straightforward elements of a modular printhead, with no inventive
`
`features. As shown below, these straightforward elements were present in the prior
`
`art, including a then-co-pending U.S. Patent Application by a similar set of
`
`inventors to the ’492 patent, namely U.S. Patent No. 6,428,142, which Applicant
`
`for the ’492 patent failed to disclose to the USPTO. Accordingly, pursuant to 35
`
`U.S.C. § 311 and 37 C.F.R. § 42.100 et seq., Petitioner, HP Inc., hereby requests
`
`Inter Partes Review (“IPR”) of claims 1, 2, 4, and 5 (collectively, the “Challenged
`
`Claims”) of the ’492 patent.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`HP Inc. (formerly known as Hewlett-Packard Company) is the real party-in-
`
`interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`As of the filing date of this petition, the ’492 patent is involved in litigation
`
`in the Southern District of California, captioned Memjet Technology Limited v.
`
`1
`
`
`
`Attorney Docket No. 069700-5002
`
`Hewlett-Packard Company, Case No. 3:15-cv-01769-BEN-BLM. Petitioner is not
`
`aware of any other judicial or administrative matter involving the ’492 patent that
`
`would affect, or be affected by, a decision in the requested IPR.1
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) and
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`following designation of counsel:
`
`Lead Counsel: Dion M. Bregman (Reg. No. 45,645); Tel: 650.843.7519.
`
`Backup Counsel: Andrew J. Gray IV (Reg. No. 41,796), Tel:
`
`650.843.7575; Bradford A. Cangro (Reg. No. 58,478), Tel: 202.739.5088; Jacob
`
`A. Snodgrass (Reg. No. 66,032), Tel: 202.739.5836; Archis (Neil) V. Ozarkar
`
`(Reg. No. 71,265), Tel: 713.890.5401.
`
`Service Address: Morgan, Lewis & Bockius LLP, Two Palo Alto Square,
`
`3000 El Camino Real, Suite 700 Palo Alto, CA 94306.
`
`Fax: 650.843.4001
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`1 Petitioner has concurrently filed a Petition for Inter Partes Review of U.S.
`
`Patent No. 9,056,475, also asserted in the U.S. District Court Proceeding.
`
`2
`
`
`
`Attorney Docket No. 069700-5002
`
`Service information is provided in Section II.C, above. Petitioners also
`
`consent to electronic service by email at the following address: HP-
`
`PTAB@morganlewis.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 50-0310 (order no. 069700-5002).
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104
`
`Petitioner hereby certifies that the ’492 patent is available for IPR and that
`
`the Petitioner is not barred or estopped from requesting an IPR challenging the
`
`claims of the ’492 patent because it has not been a party to any other post-grant or
`
`Inter Partes Review of the ’492 patent.
`
`V.
`
`THE ’492 PATENT AND ITS PROSECUTION
`
`A.
`
`Summary of the Prosecution History
`
`The ’492 patent issued to Silverbrook Research Pty Ltd. on January 2, 2007,
`
`and appears to be currently assigned to Memjet Technology Limited (“Memjet”).
`
`The ’492 patent issued with nine claims, one of which is independent (claim 1).
`
`The application that led to the ’492 patent (“Application”) was filed on June
`
`12, 2006 and is a continuation of application No. 11/250,450, filed on October 17,
`
`2005, now U.S. Patent No. 7,066,573, which is a continuation of application No.
`
`3
`
`
`
`Attorney Docket No. 069700-5002
`
`10/728,922, filed on December 8, 2003, now U.S. Patent No. 6,997,545, which is a
`
`continuation of application No. 10/102,700, filed on March 22, 2002, now U.S.
`
`Patent No. 6,692,113. The application also claims priority to an Australian
`
`application (AU PR3996), filed on March 27, 2001. See Ex. 1003 at ¶¶ 26-29.
`
`B.
`
`Brief Description of the Patent
`
`The ’492 patent relates to a “modular printhead assembly” for a well-known
`
`type of printer called a “pagewidth” printer. Ex. 1001 at Abstract, col. 1, ll. 31-34.
`
`Pagewidth printers allow printing “without the need for scanning movement of the
`
`printhead across the paper width.” Id. at col. 1, ll. 60-64. “The overall design of a
`
`printer in which the printhead module assembly can be utilized revolves around the
`
`use of replaceable printhead modules in an array” Id. at col. 1, ll. 35-37. The ’492
`
`patent explains that “[a] printhead module in such a printer can be comprised of a
`
`‘Memjet’ chip, being a chip having mounted thereon a vast number of thermo-
`
`actuators in micro-mechanics and micro-electromechanical systems (MEMS).” Id.
`
`at col. 1, ll. 43-45. The purported benefits of a “modular” assembly include the
`
`ability to manufacture printheads of “arbitrary width,” as well as “the ability to
`
`easily remove and replace any defective modules,” which eliminates “having to
`
`scrap an entire printhead if only one chip is defective.” Id. at col. 1, ll. 65-67; col.
`
`1, ll. 35-41. The stated object of the ’492 patent is to “provide an improved printed
`
`module assembly” and, similarly, a “printhead assembly having improved modules
`
`4
`
`
`
`Attorney Docket No. 069700-5002
`
`therein.” Ex. 1001 at col. 2, ll. 6-10. See generally, Ex. 1002.
`
`The claims of the ’492 patent are directed to a modular printhead comprising
`
`a metal alloy carrier and plurality of printhead modules that are configured to be
`
`mounted on an elongate fluid transporter, which in turn is received in the carrier
`
`and defines a plurality of channels for transporting different fluids. See Ex. 1001
`
`at Abstract and claims. A schematic, exploded view of the “printhead assembly
`
`10” having the elements of independent
`
`claim 1, is illustrated in Figure 2, at
`
`right. As can be seen, the “printhead
`
`assembly 10” comprises “printhead
`
`modules 11” (one of which is shown in
`
`blue), that “plug directly onto” an
`
`“elastomeric ink delivery extrusion 15”
`
`(in purple), and are “situated along a
`
`metal ‘Invar’ channel 16” (in yellow).
`
`Id. at col. 4, ll. 48-67; col. 7, ll. 34-39.2
`
`Dependent claim element embodiments are also shown in this figure, such as
`
`(1) “flex PCB 17” (in green) located “between the carrier and the ink transporter”;
`
`2 All colorization herein has been added by Petitioner.
`
`5
`
`
`
`Attorney Docket No. 069700-5002
`
`and (2) “capping device 12” (shown in red) for claim 5’s “capping arrangement for
`
`capping the printing modules.” Id. at col. 7, ll. 3-6; id. at col. 5, ll. 10-15.3
`
`VI. THE PRIOR ART
`
`Summary of the Prior Art
`A.
`U.S. Patent No. 5,565,900 to Cowger et al. (“Cowger”) is pre-AIA 35
`
`U.S.C. § 102(b) prior art to the ’492 patent, because it issued on October 15, 1996,
`
`which is more than one year prior to the ’492 patent’s U.S. application date of
`
`March 22, 2002. Compare Ex. 1004 with Ex. 1001.
`
`WO 01/02172 A1 to Silverbrook et al. (“Silverbrook 2172”) is prior art to
`
`the ’492 patent under at least 35 U.S.C. § 102(b) (pre-AIA), because it issued on
`
`January 11, 2001, which is more than one year prior to the ’492 patent’s U.S.
`
`application date of March 22, 2002. Compare Ex. 1005 with Ex. 1001.
`
`U.S. Patent No. 6,428,142 to Silverbrook et al. (“Silverbrook 142”) is pre-
`
`AIA 35 U.S.C. § 102(e) prior art to the ’492 patent under 35 U.S.C. § 102(e) (pre-
`
`AIA), as it was filed by another (i.e., at least one other inventor) in the United
`
`States on October 20, 2000, which is prior to the earliest possible date of invention
`
`of the ’492 patent (i.e., foreign priority of March 27, 2001). Compare Ex. 1006
`
`with Ex. 1001.
`
`3 Petitioner cites these embodiments for illustrative purposes only.
`
`6
`
`
`
`Attorney Docket No. 069700-5002
`
`U.S. Patent No. 5,682,186 to Bohorquez (“Bohorquez”) is prior art to the
`
`’492 patent under 35 U.S.C. § 102(b) (pre-AIA) because it issued on October 28,
`
`1997, which is more than one year prior to the ’492 patent’s U.S. application date
`
`of March 22, 2002. Compare Ex. 1007 with Ex. 1001.
`
`With the exception of Silverbrook 2172, the Office has not previously
`
`considered the prior art references presented herein. See generally, Ex. 1003.
`
`While the Office considered Silverbrook 2172 during prosecution, the Board may
`
`nevertheless institute an IPR based on previously considered references where the
`
`patentability arguments in the IPR were not previously considered by the Office.
`
`See 35 U.S.C. § 325(d) and the decisions instituting IPR for IPR2013-00066 at p. 8
`
`and IPR2013-00217 at p. 16. As the Office did not previously consider the
`
`arguments presented herein, Petitioner respectfully requests that the Board now
`
`consider the prior art and arguments presented herein, and find claims 1, 2, 4, and 5
`
`of the ’492 patent unpatentable under pre-AIA 35 U.S.C. § 103.
`
`B.
`
`Brief Description of the Prior Art
`
`1.
`
`U.S. Patent No. 5,565,900 to Cowger et al. (“Cowger”)
`
`Cowger is directed to a print head assembly for inkjet printing in which a
`
`“pen” mounted to a printer can be “constructed to include a plurality of print heads
`
`that span across the entire width of a page that is advanced through the printer.”
`
`Ex. 1004 at col. 1, ll. 26-29. Like the ’492 patent, Cowger recognized that “a
`
`7
`
`
`
`Attorney Docket No. 069700-5002
`
`failure of one of the print heads… would ruin the entire pen and lead to expensive
`
`waste or re-work for repairing the pen,” and thus “is directed to a construction
`
`whereby ink-jet printer pens have modular or unit print head assemblies that can be
`
`readily mounted to and removed from [the] pen body in the event that the assembly
`
`needs repair or replacement.” See Ex. 1004 at col. 1, ll. 29-42.
`
`2.
`
`WO 01/02172 A1 to Silverbrook et al. (“Silverbrook 2172”)
`
`Silverbrook 2172 is also “broadly directed to the provision of a suitable
`
`printhead segment support structure and ink supply arrangement for an inkjet
`
`printhead assembly capable of single-pass, full-page-width printing as well as to
`
`such printhead assemblies.” Id. at col. 2, ll. 11-13. The “printhead assembly in
`
`accordance with the invention should in particular be useful where a plurality of
`
`generally elongate, but relatively small printhead segments are to be used to
`
`print across substantially the entire width of a sizable surface without the need for
`
`mechanically moving the printhead assembly or any printhead segment across as
`
`well as along the print surface.” Id. at col. 2, ll. 26-29.4
`
`3.
`
`U.S. Patent No. 6,428,142 to Silverbrook et al. (“Silverbrook
`142”)
`
`Another reference, Silverbrook 142, is also directed to a pagewidth inkjet
`
`printhead assembly. Id. at col. 1, ll. 6-8. According to Silverbrook 142, the
`
`4 All emphasis herein added unless otherwise indicated.
`
`8
`
`
`
`Attorney Docket No. 069700-5002
`
`“advantage” of using replaceable printhead modules is “the ability to easily remove
`
`and replace any defective modules,” which “eliminates having to scrap an entire
`
`printhead assembly” if only one is defective. Ex. 1006 at col. 2, ll. 22-26.
`
`C. Motivations to Combine Cowger, Silverbrook 2172, and
`Silverbrook 142
`
`It would have been obvious to one of ordinary skill in the art to combine the
`
`teachings of one or more of Cowger, Silverbrook 2172, and Silverbrook 142 for a
`
`number of reasons. First, these references are in the exact same field, namely
`
`inkjet printers, and all relate to printhead assemblies for “pagewidth” printers. See,
`
`e.g., Ex. 1004 at col. 1, ll. 7-10, 25-28; Ex. 1005 at col. 2, ll. 11-13; Ex. 1006 at
`
`col. 1, ll. 5-7; Ex. 1002 at ¶ 44. Second, these references also describe printhead
`
`segments or modules, and their corresponding support structures, both of which
`
`permit pagewidth printheads and further provide for variable-length printhead
`
`assemblies. Ex. 1002 at ¶ 44; see also, e.g., Ex. 1004 at col. 1, ll. 25-29, 36-42,
`
`col. 6, ll. 59-64; Ex. 1005 at col. 2, ll. 4-13, col. 5, ll. 19-24; Ex. 1006 at col. 5, ll.
`
`56-60. Third, Cowger and Silverbrook 142 address the same problem of
`
`providing a modular assembly that avoids having to replace an entire assembly
`
`when individual components are defective. Ex. 1002 at ¶ 44; see also, e.g., Ex.
`
`1004 at col. 1, ll. 29-40; Ex. 1006 at col. 2, ll. 23-26. Fourth, both Silverbrook
`
`2172 and Silverbrook 142 contemplate arranging their printhead modules in a
`
`substantially end-to-end relationship. Ex. 1002 at ¶ 44; see also, e.g., Ex. 1006 at
`9
`
`
`
`Attorney Docket No. 069700-5002
`
`col. 1, ll. 11-15; Ex. 1005 at col. 2, ll. 3-5.
`
`Finally, one of ordinary skill in the art would also be attuned to the three
`
`design challenges of rigidity, elasticity, and heat distribution that are associated
`
`with the longer pagewidth printhead assemblies contemplated by Cowger,
`
`Silverbrook 142, and Silverbrook 2712. Ex. 1002 at ¶ 45. Although plastic
`
`carriers were known, metal alloys are more rigid than plastic, which thus provide
`
`the necessary stiffness for a pagewidth printhead assembly, have better elasticity,
`
`which provides better clamping forces, and have better heat conductivity, which
`
`improves the operation of a printhead assembly that might otherwise heat non-
`
`uniformly. Id. at ¶¶ 46-47, 49-52. Thus, one of ordinary skill in the art in the early
`
`2000s would have been motivated to combine the metal alloy carrier of
`
`Silverbrook 2172 with the carriers of Cowger or Silverbrook 142. Id. at ¶¶ 48, 52.
`
`As further discussed below, these references, and others discussed below,
`
`render obvious claims 1, 2, 4, and 5 of the ’492 patent.
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A.
`
`Claims For Which Review Is Requested
`
`Petitioner respectfully requests review under 35 U.S.C. § 311 and 37 C.F.R.
`
`§ 42.100 et seq. of claims 1, 2, 4, and 5 of the ’492 patent, and the cancellation of
`
`these claims as unpatentable.
`
`B.
`
`Statutory Grounds Of Challenge
`10
`
`
`
`Attorney Docket No. 069700-5002
`
`Petitioner requests that claims 1, 2, 4, and 5 of the ’492 patent be cancelled
`
`as unpatentable under 35 U.S.C. § 103. The claim construction, reasons for
`
`unpatentability, and specific evidence supporting this request are detailed below.
`
`C.
`
`Proposed Claim Constructions
`
`Pursuant to 37 C.F.R. § 42.100(b), and solely for purposes of this IPR,
`
`Petitioner construes the claim language such that the claim terms are given their
`
`broadest reasonable interpretation. Because the broadest reasonable interpretation
`
`standard differs from the standard applied by the district courts, see In re Am.
`
`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner
`
`reserves the right to argue alternative constructions in any other court proceeding.
`
`1.
`
`“carrier”
`
`The broadest reasonable construction of the claim term “carrier” is a
`
`“support structure.” The term “carrier” appears only in the title and the claims of
`
`the ’492 patent. The Abstract essentially restates claim 1, stating that:
`
`A modular printhead includes an elongate carrier. An elongate fluid
`transporter can be received in the carrier…. A flexible printed circuit
`board (PCB) is located between the carrier and the fluid transporter.
`
`Ex. 1001 at Abstract. The detailed description, however, does not use the term
`
`“carrier.” Instead, in describing an embodiment that includes the “elongate
`
`channel member” of claim 4, the ’492 explains that “at least one printhead module
`
`[is] positioned in the support structure, along a length of the support structure….”
`11
`
`
`
`Attorney Docket No. 069700-5002
`
`Id. at col. 2, ll. 19-20. The specification further explains that the “metal channel
`
`16 functions to capture the ‘Memjet’ printhead modules 11 in a precise alignment
`
`relative to each other” and “serves to hold the[m] in place….” Id. at col. 7, ll. 16-
`
`18; col. 5, ll. 6-7. Therefore, the broadest reasonable interpretation, namely a
`
`“support structure,” is consistent with the specification and what one of ordinary
`
`skill in the art would understand the term “carrier” to mean. Ex. 1002 at ¶¶ 31-34,
`
`36. Moreover, as dependent claim 4 requires the carrier to be “in the form of a
`
`channel member,” the “carrier” in claim 1 must be something broader than a
`
`“channel,” like a “support structure.” Ex. 1002 at ¶ 35.
`
`2.
`
`“that can each transport a respective type of fluid”
`
`“[A] respective type of fluid,” which appears in the element “an elongate
`
`fluid transporter received in the carrier and defining a plurality of channels that can
`
`each transport a respective type of fluid,” imparts no patentable weight to the
`
`claims, as it is well established that “[e]xpressions relating the [claimed]
`
`apparatus to contents thereof during an intended operation are of no
`
`significance in determining patentability of the apparatus claim.”5 Ex parte
`
`Thibault, 164 USPQ 666, 667 (Bd. App. 1969); see also MPEP § 2115. In fact, the
`
`Board confirmed this well-known tenet of patent law in an analogous IPR. See the
`
`5 All emphasis herein added unless otherwise indicated.
`
`12
`
`
`
`Attorney Docket No. 069700-5002
`
`decision instituting IPR for IPR2015-00009 at p. 9-11 (“properties of the fluids
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`flowing through the claimed device impart no patentable weight”).
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`Here, because the “respective type of fluid” of claim 1 is merely prospective
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`fluid that could flow through the plurality of channels of the claimed elongate fluid
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`transporter when the fluid transporter is in use, its presence and properties should
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`be ignored as imparting no patentable weight to the claims. See IPR2015-00009 at
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`9-11; MPEP § 2115; Ex. 1002 at ¶ 38.
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`However, in the event that the term is found to impart patentable weight to
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`the claims, there is nothing in the claims of the ’492 patent that require the
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`channels of the fluid transporter to transport different types or colors of inks.
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`Indeed, the Applicant acted as its own lexicographer to explain that “the term ‘ink’
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`is intended to mean any fluid which flows through the printhead to be delivered to
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`print media,” and “[t]he fluid may be one of many different colored inks, infra-red
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`ink, a fixative or the like.” Ex. 1001 at col. 3, ll. 54-57. Therefore, in the unlikely
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`event that the claim term “that can each transport a respective type of fluid” is
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`found to impart patentable weight to the claims, then the broadest reasonable
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`interpretation of this phrase must mean: “that can each transport any type of fluid.”
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`Ex. 1002 at ¶¶ 39-40.
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`“the carrier, in the form of a channel member”
`3.
`The broadest reasonable construction of the claim 4 phrase “the carrier, in
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`Attorney Docket No. 069700-5002
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`the form of a channel member,” which appears in the element “wherein the
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`printing modules are received within the carrier, in the form of a channel member,”
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`is “the support structure, having a floor and a pair of opposed side walls.”
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`First, claim 1, upon which claim 4 depends, requires that the printing
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`modules are “mounted to the elongate fluid transporter,” which is in turn “received
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`in the carrier.” As such, to the extent that claim 4 is not indefinite, claim 4’s
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`“printing modules received within the carrier” must mean that the printing modules
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`are mounted to the elongate fluid transporter, which is received within the carrier.
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`Second, the ’492 describes a “channel member” as: “[a]ccording to a first
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`aspect of the invention, there is provided a printhead assembly which comprises an
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`elongate channel member having a floor and a pair of opposed side walls….” Ex.
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`1001 at col. 2, ll. 14-17. This embodiment also contemplates a “printhead module”
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`“comprising” an “elongate ink supply assembly that is positioned in the channel,”
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`with a “printhead chip” mounted to same. Id. at col. 2, ll. 20-31. Although claim 1
`
`recites a different embodiment of a “printhead module,” this first embodiment’s
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`description of a “channel member” comports with the carrier in claim 4. Thus, the
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`broadest reasonable interpretation of the claim term “the carrier, in the form of a
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`channel member,” in the context of the ’492 patent, is “the support structure,
`
`having a floor and a pair of opposed side walls.” Ex. 1002 at ¶¶ 41-42.
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`14
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`Attorney Docket No. 069700-5002
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`VIII. DETAILED GROUNDS FOR UNPATENTABILITY
`
`Below is an explanation of each proposed ground of unpatentability in
`
`accordance with 37 C.F.R. §§ 42.104(b).
`
`A.
`
`Ground 1: Claims 1, 2, and 4 are obvious under 35 U.S.C. § 103(a)
`in view of Cowger and Silverbrook 2172
`
`1.
`
`Claim 1
`
`As shown below, Cowger discloses every limitation of claim 1 except for an
`
`explicit disclosure that the claimed carrier is made of a metal alloy. Silverbrook
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`2172, however, clearly discloses a carrier made of a metal alloy. Ex. 1002 at ¶ 54.
`
`i.
`
`A modular printhead that comprises
`
`The preamble of claim 1 of the ’492 patent recites “a modular printhead that
`
`comprises….” To the extent that the preamble is limiting, the preamble of claim 1
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`is clearly disclosed by both Cowger and Silverbrook 2172. Ex. 1002 at ¶ 55-57.
`
`Cowger is directed to a “modular-type manufacture of ink-jet printing
`
`pens, whereby a print head assembly is constructed as a unit and thereafter
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`removably mounted to the pen body.” Ex. 1004 at col. 1, ll. 6-10. Similarly,
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`Silverbrook 2172 discloses that its invention “relates to the field of ink jet
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`printing systems,” including “an inkjet printhead assembly capable of single-
`
`pass, full-page-width printing,” noting that “it found desirable to use a number of
`
`individual printhead segments (CMOS chips) placed substantially end-to-end
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`Attorney Docket No. 069700-5002
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`where large widths of printing are to be provided.” Ex. 1005 at col. 1, ll. 4-5, col.
`
`2, ll. 4-5, 12-13. See generally Chart. In other words, both Cowger and
`
`Silverbrook 2172 disclose a modular printhead. Also, as discussed above in
`
`Section VI, it would have been obvious to one of ordinary skill in the art to
`
`combine the teachings of Cowger and Silverbrook 2172.
`
`ii.
`
`An elongate carrier of a metal alloy
`
`Claim 1 of the ’492 patent further recites “an elongate carrier of a metal
`
`alloy.” Cowger discloses “a substantially rigid body 24 to which the assemblies
`
`22 are removably mounted.” Ex. 1004 at col. 2, ll. 12-13. Figure 2 of Cowger
`
`shows this element, also referred to as pen body 24 to be an elongate carrier like
`
`the ’492 patent’s carrier 16:
`
`’492 patent, Fig. 2
`
`Cowger, Fig. 2
`
`16
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`Attorney Docket No. 069700-5002
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`While Cowger is silent as to what material the rigid body 24 is made from, it
`
`is black letter law that selection of a known material based on its suitability for its
`
`intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S.
`
`327, 65 USPQ 297 (1945). See also MPEP 2144.07; In re Leshin, 277 F.2d 197,
`
`125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of
`
`a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v.
`
`Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Here, it would
`
`have been obvious to a person of skill in the art at the time of invention to make
`
`Cowger’s rigid body from either a plastic or metal material. Ex. 1002 at ¶ 59.
`
`Moreover, it is – and was at the time of the alleged invention – exceedingly
`
`rare in industrial materials design fabrication for metals to be used in their
`
`elemental forms. Ex. 1002 at ¶ 60. Rather, skilled artisans had at their disposal a
`
`variety of metal alloy combinations (such as invar), and could select from among
`
`them depending on particular design needs, such as the need for strength, rigidity,
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`elasticity, corrosion resistance, ease of manufacture, or a low coefficient of thermal
`
`expansion. Id. at ¶¶ 61-63. Therefore, one of ordinary skill would know of a
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`number of metal alloy combinations available for selection, depending on the
`
`needs of the carrier. Id. at ¶ 65. In short, the selection of a metal alloy based on its
`
`suitability for its intended use in the rigid body of Cowger is obvious.
`
`However, to the extent that the Board disagrees, Silverbrook 2172 discloses
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`17
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`Attorney Docket No. 069700-5002
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`a “profile member 10 (which is preferably an aluminium alloy extrusion [i.e.,
`
`the claimed metal alloy])” and which “serves as a frame and/or support
`
`structure [i.e., the elongate carrier] for the printhead segment carriers 8.” Ex.
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`1005 at col. 6, ll. 4-5. Figure 2 of Silverbrook 2172 illustrates that profile
`
`member 10 (shown in yellow below) is an elongate carrier or support
`
`structure:
`
`’492 patent, Fig. 2
`
`Silverbrook 2172, Fig. 3
`
`Given the highly related teachings of Cowger and Silverbrook 2172, as
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`discussed above in Section VI.C, it would have been obvious to one of ordinary
`
`skill in the art to make the pen body 24 of Cowger out of the metal alloy of
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`Silverbrook 2172. Ex. 1002 at ¶¶ 66-67.
`
`iii.
`
`An elongate fluid transporter received in the carrier
`and defining a plurality of channels that can each
`transport a respective type of fluid
`Claim 1 of the ’492 patent further recites “an elongate fluid transporter [i]
`
`received in the carrier and [ii] defining a plurality of channels that [iii] can each
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`transport a respective type of fluid” (roman numerals added). This element, and its
`18
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`Attorney Docket No. 069700-5002
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`three subparts denoted by [i], [ii], and [iii], are disclosed by the combination of
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`Cowger and Silverbrook 2172. Ex. 1002 at ¶ 68.
`
`(1) An elongate fluid transporter [i] received in the
`carrier….
`
`Cowger discloses, as illustrated by
`
`Figure 2 an “elongate fluid transporter,”
`
`namely, carrier 40 (shown in purple),
`
`being part of print head assembly 22,
`
`which is “received in the carrier,” namely
`
`pen body 24 (shown in yellow). See also
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`Ex. 1004 at col. 2, ll. 39-40 (“A print head
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`assembly 22 includes a carrier 40 made of molded plastic.”); id. at col. 2, ll. 13-14
`
`(“[t]he pen 20 includes a substantially rigid body 24 to which the assemblies 22
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`are removably mounted”); id. at col. 5, ll. 40-45 (“a print head assembly 22 may
`
`be snap-fit into a pen body 224 that has protruding lips 204, 206 shaped to
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`generally conform to the rounded long edges 55 of the carrier”) (The “carrier 40”
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`in Cowger carries the printhead chips 50 and should not be confused with the term
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`“carrier” in the ’492 patent that receives the fluid transporter, see Ex. 1002 at ¶ 70).
`
`Thus, and as further illustrated below, the “elongate fluid transporter received in
`
`the carrier” of the ’492 is disclosed by the carrier 40 received in the rigid pen body
`
`24 of Cowger. Ex. 1002 at ¶¶ 68-69, 71.
`
`19
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`Attorney Docket No. 069700-5002
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`(2) An elongate fluid transporter…[ii] defining a
`plurality of channels
`
`Cowger further discloses that carrier 40 defines ink passageways 72, 74, via
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`84, and ducts 91:
`
`As Fig. 6 illustrates, “the passageways 72, 74 are substantially enclosed along their
`
`length by the print head 50, carrier 40, and the underside of the circuit 54.” Ex.
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`1004 at col. 3, ll. 42-44. In turn, “[a]t the end of each passageway 72, 74, there is
`
`formed through the carrier a via[e] 84 (FIGS. 4 and 5). The viae 84 conduct the
`
`flow of ink in the associated ink passageway 72 or 74 between that passageway
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`and a corresponding one of a series of ducts 91 that are defined by the underside
`
`of the carrier 40 and the bottom plate 85.” Id. at col. 3, ll. 45-51. The top view of
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`Fig. 6 shows “by arrows 93 the continuous path of ink through the ducts 91,
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`passageways 72, 74, and viae 84.” Id. at col. 3, ll. 62-65. Thus, Cowger discloses
`
`an elongate fluid transporter defining a plurality of channels. Ex. 1002 at ¶ 72.
`
`(3) An elongate fluid transporter…[iii] that can each
`transport a
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