UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`HP INC.
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`Petitioner,
`
`v.
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`MEMJET TECHNOLOGY LIMITED,
`
`Listed Patent Owner.
`
`____________
`
`U.S. Patent No. 7,156,492
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`“Modular Printhead Assembly With A Carrier Of A Metal Alloy”
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`____________
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`PATENT OWNER MEMJET TECHNOLOGY LIMITED’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.107
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`
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`

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`TABLE OF CONTENTS
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`Page
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`I.
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`INTRODUCTION ........................................................................................... 1
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`A.
`
`B.
`
`Background ........................................................................................... 1
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`Institution Should Be Denied ................................................................ 4
`
`II.
`
`CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`B.
`
`“carrier” (all challenged claims, in the phrase “an elongate
`carrier of a metal alloy”) ....................................................................... 9
`
`“an elongate fluid transporter … that can each transport a
`respective type of fluid” (all challenged claims)................................. 11
`
`1.
`
`The Claimed Channels Must Be Capable of Transporting
`Different Types of Fluid ........................................................... 12
`
`2. Memjet’s Construction Should be Adopted.............................. 13
`
`C.
`
`“the carrier, in the form of a channel member” (claim 4 only) ........... 16
`
`III. GROUNDS 3 AND 4 SHOULD NOT BE INSTITUTED BECAUSE
`SILVERBROOK 142 IS EXCLUDED AS PRIOR ART UNDER 35
`U.S.C. § 103(c) .............................................................................................. 17
`
`IV. GROUNDS 1 AND 2 SHOULD NOT BE INSTITUTED BECAUSE
`NEITHER COWGER NOR SILVERBROOK 2172 TEACH OR
`SUGGEST THE “ELONGATE CARRIER OF A METAL ALLOY”
`OR THE “ELONGATE FLUID TRANSPORTER …”
`LIMITATIONS .............................................................................................. 21
`
`A.
`
`B.
`
`Cowger Does Not Teach or Suggest the Claimed “elongate
`carrier of a metal alloy” Limitation ..................................................... 21
`
`Cowger Does Not Teach or Suggest the “elongate fluid
`transporter …” Limitation ................................................................... 23
`
`C.
`
`Cowger Also Does Not Teach “printing modules” Limitation ........... 26
`
`D. A POSITA Would Not Have Been Motivated To Combine the
`Teachings of Cowger and Silverbrook 2172 ....................................... 27
`
`1.
`
`The Pond Declaration is Conclusory and Simply Repeats
`the Petition Nearly Verbatim and Should Be Given No
`Weight ....................................................................................... 31
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`E.
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`Grounds 2-4 Fail For The Same Reasons As Ground 1 ...................... 33
`
`i
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`

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`V. ALL GROUNDS SHOULD BE DENIED BECAUSE
`ALL GROUNDS SHOULD BE DENIED BECAUSE
`SILVERBROOK 2172 WAS PREVIOUSLY CONSIDERED BY
`SILVERBROOK 2172 WAS PREVIOUSLY CONSIDERED BY
`THE PATENT OFFICE ................................................................................ 33
`THE PATENT OFFICE .............................................................................. ..33
`
`VI. CONCLUSION .............................................................................................. 35
`VI.
`CONCLUSION ............................................................................................ ..35
`
`
`
`
`
`ii
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`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Biodelivery Sci. Int’l, Inc. v. Monosol Rx, LLC,
`IPR2015-00167, Paper 6 (P.T.A.B. May 20, 2015) ......................................28
`
`Bio-Rad Labs., Inc. v. Cal. Inst. of Tech.,
`IPR2015-00009, Paper No. 16 (P.T.A.B. Apr. 24, 2015) .............................13
`
`Corning Inc. v. DSM IP Assets B.V.,
`IPR2013-00045, Paper 11 (P.T.A.B. Dec. 24, 2013) ................................9, 19
`
`Dominion Dealer Sol’ns, LLC v. AutoAlert, Inc.,
`IPR2013-00220, Paper 8 (P.T.A.B. Aug. 15, 2013) ............................... 29, 32
`
`Elektra Instrument S.A. v. O.U.R. Scientific Int'l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000) .....................................................................16
`
`Estee Lauder, Inc. v. L’Oreal, S.A.,
`129 F.3d 588 (Fed. Cir. 1997) .......................................................................31
`
`Ex parte GM Global Technology Operations LLC,
`2012 WL 5474209 (P.T.A.B. 2012) ..............................................................13
`
`Ex parte Thibault,
`164 U.S.P.Q. 666 (Bd. App. 1969) ................................................................12
`
`Global Tel*Link,
`IPR2014-00825, Paper No. 36 (P.T.A.B. Dec. 2, 2015) ...............................20
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (P.T.A.B. Jul. 31, 2013) ............................... 27, 29
`
`Hewlett-Packard Co. v. Bausch & Lomb Inc.,
`909 F.2d 1464 (Fed. Cir. 1990) .....................................................................12
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .......................................................................28
`
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) .....................................................................22
`
`iii
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`

`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ...................................................................8, 9
`
`Kara Tech. Inc. v. Stamps.com Inc.,
`582 F.3d 1341 (Fed. Cir. 2009) ....................................................................17
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......................................................................... 27, 28, 29
`
`Memjet Tech. Ltd. v. Hewlett-Packard Co.,
`Case No. 3:15-cv-01769-BEN-BLM (S.D. Cal.) ............................................ 1
`
`Moses Lake Indus. v. Enthone, Inc.,
`IPR2014-00243, Paper 6 (P.T.A.B. June 18, 2014) ......................................28
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 8
`
`Shire, LLC v. Amneal Pharms., LLC,
`802 F.3d 1301 (Fed. Cir. 2015) .....................................................................34
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (P.T.A.B. Mar. 25, 2013) ...................................... 8
`
`TRW Auto. US LLC v. Magna Elecs. Inc.,
`IPR2014-00293, Paper 19 (P.T.A.B. July 1, 2014) ................................ 28, 32
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, Paper 12 (P.T.A.B. Apr. 8, 2013) ......................................32
`
`Statutes
`
`35 U.S.C. § 102(a) ...................................................................................................18
`
`35 U.S.C. § 102(b) ...................................................................................................18
`
`35 U.S.C. § 102(e) .................................................................................. 5, 18, 19, 32
`
`35 U.S.C. § 103 ........................................................................................................17
`
`35 U.S.C. § 103(a) .................................................................................. 1, 19, 20, 32
`
`35 U.S.C. § 103(c) ........................................................................................... passim
`
`iv
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`

`
`35 U.S.C. § 103(c)(1) ...............................................................................................17
`
`35 U.S.C. § 21 ............................................................................................................ 1
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .......................................................................................................... 8
`
`35 U.S.C. § 325(d) ............................................................................................ 32, 33
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
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`37 C.F.R. § 42.107(a) ................................................................................................. 1
`
`37 C.F.R. § 42.108 ..................................................................................................... 8
`
`37 C.F.R. § 42.65 .....................................................................................................30
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`Other Authorities
`
`MPEP § 2136.04 ......................................................................................................18
`
`MPEP § 706.02 ........................................................................................................17
`
`MPEP § 706.02(I)(2)................................................................................................19
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`
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`v
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`

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`LIST OF PETITIONER’S EXHIBITS
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`Ex. 1001
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`U.S. Patent No. 7,156,492 to Silverbrook et al.
`
`Ex. 1002
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`Declaration of Stephen Pond, Ph.D. (“Pond Decl.”)
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`Ex. 1003
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`File History of U.S. Patent No. 7,156,492
`
`Ex. 1004
`
`U.S. Patent No. 5,565,900 to Cowger et al.
`
`Ex. 1005
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`WO 01/02172 A1 to Silverbrook et al.
`
`Ex. 1006
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`U.S. Patent No. 6,428,142 to Silverbrook et al.
`
`Ex. 1007
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`U.S. Patent No. 5,682,186 to Bohorquez et al.
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`Ex. 1008
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`Curriculum Vitae of Stephen Pond, Ph.D.
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`
`
`
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`PATENT OWNER’S LIST OF EXHIBITS
`
`Ex. 2001
`
`Assignment History of U.S. Patent No. 6,428,142
`
`Ex. 2002
`
`Reel/Frame No. 12583-712
`
`Ex. 2003
`
`IP Australia AusPat Application Details for 2001PR3996
`
`Ex. 2004
`
`Assignment History of U.S. Patent Application No.
`10/102,700
`
`Ex. 2005
`
`Reel/Frame No. 12726-690
`
`Ex. 2006
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`File History of U.S. Patent Application No. 11/450,440
`
`Ex. 2007
`
`G. Walters, “Lyra Symposium 2009 – The Death of
`Edgeline,” available at http://www.thedeathofthecopier.
`com/2009/01/lyra-symposium-2009-death-of-
`edgeline.html
`
`Ex. 2008
`
`U.S. Patent No. 5,428,383 to Shields et al.
`
`vi
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`

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`
`
`I.
`
`INTRODUCTION
`
`
`
`
`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Patent Owner Memjet
`
`Technology Limited (“Memjet”) submits this Preliminary Response to the Petition
`
`for Inter Partes Review (“the Petition”) filed in this matter.1 Petitioner HP Inc.
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`(“HP”) seeks Inter Partes Review (“IPR”) of claims 1, 2, 4 and 5 of U.S. Patent No.
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`7,156,492 (the “’492 Patent”), as allegedly being unpatentable under 35 U.S.C.
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`§ 103(a).2 The ’492 Patent is assigned to Memjet and is the subject of a co-pending
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`litigation, Memjet Tech. Ltd. v. Hewlett-Packard Co., Case No. 3:15-cv-01769-
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`BEN-BLM in the Southern District of California (“the Litigation”).
`
`A. Background
`
`The ’492 Patent is generally directed to a novel printhead assembly that may
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`be used in inkjet printers. Specifically, the printhead assemblies described in
`
`the ’492 Patent may be used in printers known as “pagewidth” printers. Ex. 1001 at
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`1:31-34. Pagewidth printers incorporate stationary printheads having thousands of
`
`nozzles and print in one pass without scanning back-and-forth. See id. at 3:4-8.
`
`
`1 This submission is timely under 35 U.S.C. § 21), as it is being filed within
`three months following the mailing date of the Notice of Filing Date Accorded to
`Petition. The three-month date following the February 9, 2016 mailing date is
`Monday, May 9, 2016. (Paper No. 4).
`
`2 In the co-pending district court litigation, Memjet has asserted
`infringement by HP of claims 1 and 5-7 of the ‘492 Patent. In response, HP filed
`the instant Petition, along with a separate petition for IPR of claims 6-8 of the ’492
`Patent (Case No. IPR2016-00873).
`
`
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`1
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`These printers, however, present a number of design challenges that are
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`directly addressed by the ’492 Patent. Production of a pagewidth printhead can be
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`complex and expensive, as even a single defective chip on the printhead can
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`compromise the entire system. Moreover, pagewidth printheads are susceptible to
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`temperature-induced alignment issues (the thousands of nozzles on the print chips
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`must be and remain aligned). At the time of the ’492 invention, attempts to provide
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`a pagewidth printhead suffered from at least some of these design problems. For
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`example, some of these printheads (such as those developed by HP) defined slots
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`and holes within a multilayered ceramic structure to deliver ink to print chips
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`soldered to a ceramic substrate. The ceramic structure was used to support print
`
`chips and ensure alignment of the nozzles. But such printheads proved too costly
`
`for the office market and lacked printing modules (e.g., tapered carriers upon which
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`a print chip can be mounted). See Ex. 2007 at 1-4 (discussing the failure of HP’s
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`Edgeline printers).
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`These are precisely the problems that the inventions of the ’492 Patent address,
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`by providing “a modular printhead comprising” an “elongate carrier of a metal alloy”
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`that receives “an elongate fluid transporter” upon which a plurality of printing
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`modules are mounted. Ex. 1001 at 1:35-41. Memjet’s novel solution enables the
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`production of reliable, low cost pagewidth printers. Rather than define slots and
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`holes using the prior art’s costly, multilayered ceramic structure to deliver ink,
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`
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`2
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`

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`Memjet’s solution enables alignment through a novel “elongate carrier of a metal
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`alloy.” The “metal alloy” required by the ’492 claims aids in alignment of the print
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`chips relative to each other. Id. at 7:16-21. The particular alloy may be chosen based
`
`on its coefficient of thermal expansion and for optimal dimensional stability. Id. at
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`7:11; 7:13-15. The similar coefficients of thermal expansion between the carrier and
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`printing modules allow relative movement during temperature changes, to assist in
`
`maintaining printhead alignment. Id. at 7:22-24.
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`Unlike other printheads (e.g., HP’s multilayered ceramic structure), the
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`claimed “elongate carrier of a metal alloy” does not come in physical contact with
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`the ink, but instead works in conjunction with an “elongate fluid transporter” having
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`channels that transport different colors of ink to print chips mounted on the printing
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`modules. The claimed carrier also has many other advantages over prior art
`
`printheads—the specific rigidity of Memjet’s claimed use of a metal alloy allows the
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`elongate fluid transporter to be made from other, less expensive materials. Memjet’s
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`carrier further provides a plurality of printing modules that can be individually
`
`manufactured and replaced if one of them is found to be defective. See id. at 1:35-
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`40. This modularity of the ’492 printhead allows the printhead modules to be
`
`arranged in any desired length, and is particularly suited for pagewidth printers. Id.
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`at 1:31-34.
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`3
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`The above-described solution is the culmination of years of research and
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`development and substantial financial investment by Memjet. When Memjet
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`learned that HP had incorporated its technologies into HP’s own PageWide printer
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`products, Memjet instituted the Litigation and asserted infringement of eight patents.
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`In response, HP has filed serial IPRs against all eight of the patents asserted by
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`Memjet. Memjet respectfully requests that HP’s Petition be denied and that no IPR
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`be instituted.
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`B.
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`Institution Should Be Denied
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`HP asserts that claims 1, 2 and 4 are obvious over Cowger and Silverbrook
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`2172. (Ground 1); and, alternatively, as obvious over Silverbrook 142 and
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`Silverbrook 2172 (Ground 3).3 Critically, and as discussed in greater detail below,
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`both Silverbrook references are Memjet’s inventions and disclose innovations that
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`Memjet patented. Just as important, Silverbrook 2172 was considered by the Patent
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`Office during the prosecution of the ’492 Patent – yet the PTO did not issue a single
`
`rejection based on Silverbrook 2172. Despite this fact, HP argues that Memjet’s
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`own patents render the ’492 Patent obvious. HP’s arguments lack merit.
`
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`3 HP also asserts that claim 5 is obvious over Cowger, Silverbrook 2172
`and Bohorquez (Ground 2); and, alternatively, as obvious over Silverbrook 142,
`Silverbrook 2172 and Bohorquez (Ground 4). These assertions are also without
`merit as discussed herein.
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`4
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`Indeed, Silverbrook 142 is excluded as an obviousness reference as a matter
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`of law and, on this basis alone, the PTAB should decline to institute HP’s requested
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`IPR on Grounds 3 and 4. Section 103(c) excludes prior art combinations based on
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`art that (1) qualifies as prior art under pre-AIA § 102(e) (among other sections), (2)
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`was invented by a different inventive entity and (3) at the time of the invention, was
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`owned by the same person that owned the patent that is allegedly invalid. See 35
`
`U.S.C. § 103(c)). Silverbrook 142 undisputedly qualifies as prior art only under
`
`§ 102(e), was invented by a different entity than the ’492 Patent, and was assigned
`
`to the same entity that owned the ’492 Patent at the time of the ’492 Patent’s
`
`invention. HP is thus attempting to use Silverbrook 142 against Memjet in a manner
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`that is expressly prohibited by 35 U.S.C. § 103(c).
`
`With respect to Ground 1, institution should be denied because the references
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`upon which HP relies fail to disclose several critical limitations of the claims,
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`including the “elongate carrier of metal alloy,” the “elongate fluid transporter,” and
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`the “printing modules.” This is unsurprising, as HP’s references disclose a
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`fundamentally different solution than the ’492 claimed inventions. Cowger, for
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`example, addresses the alignment problem in a fundamentally different way by using
`
`a flexible circuit 54 to cover its print heads 50 and serve as a common nozzle plate
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`for the print head assembly 22. Since the flexible circuit 54 is staked to the
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`underlying carrier 40 on which the print heads 50 are mounted (see Ex. 1001 at 2:60-
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`5
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`64), Cowger has no need for an “elongate carrier of a metal alloy” to align the inkjet
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`
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`nozzles. Nor would the use of one be obvious, since one of ordinary skill in the art
`
`would see no need to use such a carrier with the printhead described in Cowger.
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`With these fundamental differences in mind, and as HP concedes, it is clear
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`that Cowger does not disclose an elongate carrier of a metal alloy. Further, because
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`Cowger does not disclose the elongate carrier of a metal alloy, it also does not
`
`disclose the “elongate fluid transporter” received in the elongate carrier of a metal
`
`alloy.
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`Cowger also does not disclose the “elongate fluid transporter” for a separate,
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`independent reason. Namely, the claims require that the “elongate fluid transporter”
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`“defin[e] a plurality of channels that can each transport a respective type of fluid.”
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`Cowger discloses no such structure. Instead it uses a printhead assembly that is
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`designed to circulate a single type of ink (e.g.., a single color) through interconnected
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`passageways defined within a structure it coincidentally calls a “carrier.”4
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`Finally, Cowger does not disclose “printing modules” mounted on an elongate
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`fluid transporter. HP points to Cowger’s “print heads 50” as satisfying this
`
`limitation. But Cowger’s “print heads” are not “printing modules” – the ’492 Patent
`
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`4 HP does not identify the “carrier” of Cowger as meeting the “carrier”
`limitation of the ’492 Patent—as it is similar to the “carrier” of the ’492 claim in
`name only. There is no dispute on this point.
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`6
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`

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`
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`makes clear that its “modules” include both an ink supply structure and a print chip.
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`Cowger’s print heads include neither – Cowger is clear that the disclosed print heads
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`do not include any ink supply structure, and also lack the integrated circuitry
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`required to be a “chip.” In addition, Cowger’s “print heads 50” cannot be “printing
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`modules” for the simple reason that they do not print. Indeed, Cowger’s “print heads
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`50” completely lack nozzles and are incapable of printing.
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`Contrary to HP’s Petition, Silverbrook 2172 does not remedy Cowger’s
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`deficiencies. Like Cowger, Silverbrook 2172 does not disclose the claimed
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`“elongate carrier of a metal alloy,” nor the “elongate fluid transporter” received in
`
`the carrier. HP points to only a single element of Silverbrook 2172 – “elongate
`
`member 10” – as both the “elongate carrier of a metal alloy” and the “elongate fluid
`
`transporter” of the claims. In fact, it is neither. The “elongate member 10” is a
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`single structure that defines ink-carrying channels. It does not receive “an elongate
`
`fluid transporter” as required by the claims; nor is it “received by” an elongate carrier
`
`of a metal alloy. Thus, on these bases, Memjet respectfully requests that the PTAB
`
`decline to institute Grounds 1 and 2.
`
`The Petition should also be denied institution because it lacks any articulated
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`rationale or factual basis to support even a prima facie case of obviousness for any
`
`of these proposed grounds. Instead, HP provides conclusory assertions, generic to
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`each combination and all of the challenged claim elements, that it would have been
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`
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`7
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`

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`
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`obvious to combine the references because they all relate to pagewidth printers.
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
`
`
`
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`Petition at 9-10.
`
`In sum, HP’s arguments do not give rise to a reasonable likelihood that it will
`
`prevail with respect to any challenged claim of ’492 Patent, either alone or in
`
`combination with each other. Therefore, the Board should not institute review on
`
`any claim of the ’492 Patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.108.
`
`II. CLAIM CONSTRUCTION
`
`As part of the determination of whether to institute a trial, the Board must
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`interpret the challenged claims, which may include determining a specific meaning
`
`for certain critical claim terms or phrases, by applying the “broadest reasonable
`
`interpretation” standard. 37 C.F.R. § 42.100(b); see also Synopsys, Inc. v. Mentor
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`Graphics Corp., IPR2012-00041, Paper 16 at 5-7 (P.T.A.B. Mar. 25, 2013).
`
`Generally, claim terms should be given their ordinary and customary meaning as
`
`would be understood by one of ordinary skill in the art. Phillips v. AWH Corp., 415
`
`F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`This standard, however, does not give the petitioner “an unfettered license to
`
`interpret claims to embrace anything remotely related to the claimed invention.” In
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`re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). Rather, it is well
`
`settled that the “broadest reasonable interpretation” must be applied in view of the
`
`specification as interpreted by one of ordinary skill in the art at the time of the
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`8
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`invention. Thus, claim interpretations are only reasonable if they are consistent with
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`
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`the specification. Id. (“claims should always be read in light of the specification and
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`teachings in the underlying patent.”).
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`HP proposes constructions for several terms of the ’492 Patent that, while
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`purporting to be the “broadest reasonable interpretation,” in fact impose arbitrary
`
`constraints. Moreover, HP fails to explain why such constructions and constraints
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`are necessary to this proceeding. They are therefore improper, and should be
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`rejected. See, e.g., Corning Inc. v. DSM IP Assets B.V., IPR2013-00045, Paper 11
`
`at 6-7 (P.T.A.B. Dec. 24, 2013) (holding that claim terms whose meaning was clear
`
`from the specification and/or had no relevance to the arguments concerning the
`
`asserted references did not need to be given a specific construction).
`
`Memjet submits that the claim terms addressed in the Petition should be given
`
`their plain and ordinary meaning in light of the specification. Specifically, Memjet
`
`disagrees with HP’s proposals for the following claim terms5:
`
`A.
`
`“carrier” (all challenged claims, in the phrase “an elongate
`carrier of a metal alloy”)
`
`Memjet submits that the broadest reasonable construction in light of the
`
`specification for the term “carrier” is “a structure designed to carry another structure.”
`
`
`5 Each of the constructions proposed below are consistent with the
`constructions for these terms that Memjet proposed in the Litigation.
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`9
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`This construction is consistent with the plain and ordinary meaning of the term and
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`the description of the embodiments in the ’492 Patent specification. As shown in
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`Fig. 14 (reproduced below), for example, metal “Invar” channel 16 (shown in yellow)
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`– an “elongate carrier” – carries extrusion 15 (shown in purple) – an “elongate fluid
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`transporter.” Extrusion 15 “carries air, ink and fixative” in a plurality of channels.
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`Ex. 1001 at 4:61-64. Thus, Figure 14 shows that an “elongate fluid transporter can
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`be received in the carrier and defines a plurality of channels that can each transport
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`a respective type of fluid.” See id. at Abstract.
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`HP proposes that “carrier” be construed to mean “support structure.” As an
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`initial matter, HP’s proposed construction is, at best, unhelpful and unnecessary.
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`HP’s proposed definition does not clarify the proper meaning of this claim language
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`and, instead, appears to be a contrived attempt to construe “carrier” using language
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`from HP’s prior art, such as Silverbrook 2172’s profile member 10. Ex. 1005 at 6:45
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`(profile member 10 “serves as a frame and/or support structure for the printhead
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`segment carriers 8.”) (emphasis added).
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`B.
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` “an elongate fluid transporter … that can each transport a
`respective type of fluid” (all challenged claims)
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`Each of the challenged claims requires an “elongate fluid transporter” that
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`includes a plurality of channels “that can each transport a respective type of fluid.”
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`This language is clear on its face – each channel in the fluid transporter is designed
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`to transport a respective type of ink, e.g., different colored inks. Not only is this
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`construction mandated by the plain language of the claims, it is supported by the
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`specification, which plainly states that the disclosed printhead is designed for
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`printing “four color process (CMYK) as well as infrared ink and fixative.” Ex. 1001
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`at 1:53-59.
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`This construction, however, presents an insurmountable problem to HP’s
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`Petition, as HP’s principal prior art reference, Cowger, discloses a printhead that
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`prints only a single color, and, therefore, has no need for multiple channels to deliver
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`a “respective type of fluid.” HP attempts to side-step this problem by arguing that
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`the quoted claim language adds no patentable weight, and, as a fallback, that the
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`phrase encompasses any type of fluid. HP is wrong on both counts—as discussed
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`below, the cases it cites do not apply here, and the claim language cannot be ignored.
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`1.
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`The Claimed Channels Must Be Capable of Transporting
`Different Types of Fluid
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`HP argues that “[e]xpressions relating the [claimed] apparatus to contents
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`thereof during an intended operation are of no significance in determining
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`patentability of the apparatus claim.” Petition at 12 (quoting Ex parte Thibault, 164
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`U.S.P.Q. 666, 667 (Bd. App. 1969)).
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`But HP’s citation to Thibault is not relevant here. In Thibault, the rejected
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`apparatus claim included not only limitations to the apparatus, but also included
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`language directed to “the purpose to which the apparatus is to be put.” Id. Because
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`the language was directed to an intended use, the court found it added no patentable
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`weight. Thus, Thibault simply applied the well-known rule that apparatus claims
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`“cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch
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`& Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (emphasis in original).
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`The claim limitation here is different from the ones at issue in Thibault – the
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`limitation here is an express, structural limitation on what the apparatus is, not, as
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`HP states, what it does. The claim limitation requires that the channels are designed
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`for different, respective, types of fluid. Thus, the channels must be structurally
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`distinct—lest the different colors of ink mix. Indeed, the Board has cautioned
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`against the unbounded application of Thibault. See, e.g., Ex parte GM Global Tech.
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`Operations LLC, 2012 WL 5474209, at *4 (P.T.A.B. Nov. 7, 2012) (“Thibault’s
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`U.S. Patent No. 7,156,492
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`holding cannot be abstracted from its context”). Id.
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`HP’s citation to the decision in IPR2015-00009 is also unavailing. Just as in
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`Thibault, the PTAB found that the intended use of the channels (for liquid flow) did
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`not add patentable weight. Bio-Rad Labs., Inc. v. Cal. Inst. of Tech., IPR2015-00009,
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`Paper No. 16 at 10 (P.T.A.B. Apr. 24, 2015). This is not remotely analogous to
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`claim limitations requiring channels that are designed to carry different, “respective
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`types of fluid.”
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`Thus, for all the reasons set forth above, Memjet respectfully submits that the
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`PTAB should reject HP’s attempt to ignore distinguishing claim limitations.
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`2. Memjet’s Construction Should be Adopted
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`The broadest reasonable interpretation of an “elongate fluid transporter” that
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`includes channels “that can each transport a respective type of fluid” is an “elongate
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`fluid transporter” that includes channels “that can each transport an ink with a
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`different characteristic (e.g., different colored inks, infrared-ink, a fixative, and the
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`like).” This is the broadest, reasonable interpretation of this phrase that is consistent
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`with the specification.
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`In particular, the specification and claims make clear that each channel in the
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`elongate fluid transporter is designed to carry its own, different, respective type of
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`fluid. These types of fluid are not all the same, otherwise there would be no need
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`for a plurality of channels, and each channel would not be constructed to carry its
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`own respective type of fluid. Moreover, it is well known that different colors of ink
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`have different characteristics that cause them to interact differently when in contact
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`with different materials. Ex. 2008 at 1:29-40; 2:66-3:30. Thus, the respective type
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`of ink a given channel can carry is an important, functional and structural limitation
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`reflecting the material options for the respective channels.
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`Indeed, the specification repeatedly refers to the printhead of the invention as
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`having “six ink chambers” and being designed to print “four color process (CMYK)
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`as well as infrared ink and fixative.” Ex. 1001 at 1:53-57; see also id. at 4:54-57;
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`6:5-8. More specifically, the specification discloses that printhead “modules 11 plug
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`directly onto a flexible elastomeric extrusion 15 which carries air, ink and fixitive”
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`in channels, such as channels 49-55 depicted in Figure 15 below. Id. at 6:5-8. The
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`same channels, along with the “flexible elastomeric extrusion 15,” are also depicted
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`in Figure 9, below:
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`Case No. IPR2016-00537
`U.S. Patent No. 7,156,492
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`It follows that an important characteristic of the elongate fluid transporter
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`embodiment shown in Figures 9 and 15 is the capability to carry a plurality of
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`different kinds of fluid as disclosed in the ’492 Patent.
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`HP nevertheless asks the Board to read this limitation out of the claims by
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`construing the phrase as “that can each transport any type of fluid,” regardless of
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`whether the channels are designed differently or made of different materials.
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`Petition at 13 (emphasis added). The specification is clear that the channels must be
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`constructed to each carry “respective” liquids, e.g., inks with different characteristics.
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`HP’s proposed construction renders