Paper No. __
`Filed: March 9, 2017
`
`Filed on behalf of: Fitbit, Inc.
`
`By: Naveen Modi (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Yar R. Chaikovsky (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Michael C. Hendershot (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`David T. Okano (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`FITBIT, INC.,
`
`Petitioner,
`
`v.
`
`ALIPHCOM, INC. D/B/A JAWBONE,
`
`Patent Owner.
`
`____________________
`
`Case IPR2016-00607
`Patent No. 8,529,811
`____________________
`
`PETITIONER’S REPLY
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`B. 
`
`C. 
`
`B. 
`
`C. 
`
`B. 
`
`C. 
`
`Introduction ..................................................................................................... 1 
`The Board should confirm its preliminary construction of “covers all
`or substantially all” ......................................................................................... 1 
`A. 
`Petitioner and the Board’s preliminary construction is
`consistent with the claim language ...................................................... 2 
`Petitioner and the Board’s preliminary construction is
`consistent with the specification, which defines “substantially”
`as “partially or entirely” ....................................................................... 2 
`Petitioner and the Board’s preliminary construction is
`consistent with the phrase’s ordinary meaning .................................... 4 
`III.  The Board should reject Patent Owner’s proposed construction of
`“covers all or substantially all” ....................................................................... 7 
`A. 
`Patent Owner’s unreasonable construction reads out the term
`“substantially all” from the claims ....................................................... 7 
`Patent Owner’s proposed construction is inconsistent with the
`surrounding claim language ................................................................. 9 
`The testimony of Patent Owner’s expert cannot override the
`intrinsic evidence ................................................................................ 13 
`IV.  Claims 16–19, 23, and 26 are anticipated by Lo .......................................... 17 
`A. 
`Patent Owner’s contention that Lo’s transmission medium does
`not “cover all or substantially all” the inner molding is based on
`its unreasonable construction ............................................................. 18 
`Patent Owner’s contention that the Lo transmission medium is
`not an outer molding is inconsistent with the claim language ........... 20 
`Patent Owner’s contention that Petitioner relies on multiple
`embodiments in Lo lacks merit .......................................................... 21 
`Claims 20–22 and 24–25 are invalid as obvious .......................................... 22 
`A. 
`Petitioner met its burden to establish obviousness ............................. 22 
`B. 
`The combination of Lo and Huang and Lo and the Handbook of
`Thermoplastic Elastomers renders claims 20–22, 24 obvious ........... 23 
`The combination of Lo and Toyoda renders claim 25 obvious ......... 25 
`
`V. 
`
`C. 
`
`i
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`VI.  Conclusion .................................................................................................... 25 
`
`
`
`
`
`-ii-
`
`
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Abbott Labs. v. Novopharm Ltd.,
`323 F.3d 1324 (Fed. Cir. 2003) ............................................................................ 3
`
`Aero Prod. Int’l, Inc. v. Intex Recreation Corp.,
`466 F.3d 1000 (Fed. Cir. 2006) ............................................................................ 8
`
`Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
`632 F.3d 1246 (Fed. Cir. 2011) .......................................................................... 16
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 8
`
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) .......................................................................... 24
`
`Deering Precision Instruments, L.L.C. v. Vector Distribution Sys., Inc.,
`347 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 5
`
`Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) ...................................................................... 3, 14
`
`Finisar Corp. v. DirecTV Group, Inc.,
`523 F.3d 1323 (Fed. Cir. 2008) .......................................................................... 17
`
`Haemonetics Corp. v. Baxter Healthcare Corp.,
`607 F.3d 776 (Fed. Cir. 2010) .......................................................................... 7, 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 23, 24, 25
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 13, 16
`
`Salesforce.com, Inc. v. VirtualAgility, Inc.,
` CBM2013-00024, 2014 WL 4675293
`
`(P.T.A.B. Sept. 16, 2014) ................................................................................... 16
`
`iii
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`
`In re Seid,
`
`161 F.2d 229 (CCPA 1947) ............................................................................... 24
`
`Slot Speaker Techs. v. Apple Inc.,
`No. 2015-2038, -2039, 2017 U.S. App. Lexis 2785
`(Fed. Cir. Feb. 17, 2017) ....................................................................................... 8
`
`Smith & Nephew, Inc. v. Convatec Techs., Inc.,
`
`IPR2013-00097, 2014 WL 2466142 (P.T.A.B. May 28, 2014) ........................... 5
`
`Toshiba Samsung Storage Tech. Korea Corp. v. LG Elecs., Inc.,
`
`IPR2014-00204, 2014 WL 2447195 (P.T.A.B. May 28, 2014) ........................... 3
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 13
`
`
`
`iv
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`
`LIST OF EXHIBITS
`
`Description
`
`1006
`
`Exhibit
`No.
`1001 U.S. Patent No. 8,529,811 to Drysdale et al.
`1002 Declaration of Dr. Darran R. Cairns
`1003 U.S. Patent Application Pub. No. 2006/0264756 to Lo et
`al.
`1004 U.S. Patent Application Pub. No. 2009/0047797 to
`Anderson et al.
`1005 U.S. Patent Application Pub. No. 2009/0295596 to
`Downey et al.
`Jiri G. Drobny, Handbook of Thermoplastic Elastomers
`(1st ed. 2007)
`1007 U.S. Patent Application Pub. No. 2006/0110537 to Huang
`et al.
`1008 U.S. Patent Application Pub. No. 2010/0178834 to
`Toyoda et al.
`1009 U.S. Patent No. 5,286,330 to Azuma et al.
`1010 U.S. Patent No. 5,844,523 to Brennan et al.
`1011 U.S. Patent No. 6,361,870 to Steffl et al.
`1012 U.S. Patent No. 6,447,886 to Mohamed et al.
`Eric L. Bruner, Edward Hughes, Surfaces Matter, 1209
`1013
`Mater. Res. Symp. Proc. (2010)
`1014 Marketing Materials, SRI International, Anti-Smudge,
`Easy-to-Clean Product Coatings (2010)
`1015 Marketing Materials, Henkel Corporation, Electronic
`Solutions (2005)
`Prosecution history of U.S. Application No. 13/135,728
`Prosecution history of U.S. Application No. 13/158,372
`Prosecution history of U.S. Application No. 13/158,416
`Prosecution history of U.S. Application No. 13/427,839
`Certain Activity Tracking Devices, Systems, and
`Components Thereof, ITC Inv. 337-TA-963, Complainant
`AliphCom’s Rebuttal Claim Construction Brief
`Certain Activity Tracking Devices, Systems, and
`Components Thereof, ITC Inv. 337-TA-963, Respondents
`Fitbit, Inc., Flextronics Int’l Ltd., and Flextronics Sales
`and Marketing (A-P) Ltd.’s Responsive Claim
`
`1016
`1017
`1018
`1019
`1020
`
`1021
`
`v
`
`Previously
`Submitted
`X
`X
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`X
`X
`X
`X
`X
`
`X
`
`X
`X
`X
`X
`X
`
`X
`
`X
`
`

`

`Exhibit
`No.
`
`Description
`
`1022
`1023
`
`Construction Brief
`CV of Dr. Darran R. Cairns
`Charles A. Harper, Handbook of Plastics, Elastomers,
`and Composites (3rd ed. 1996)
`Reserved
`1024
`1025 Geoffrey Holden, Hans R. Kricheldorf & Roderic P.
`Quirk, Thermoplastic Elastomers (3rd ed. 2004)
`1026 Marketing Materials, DuPont Engineering Polymers,
`Electrical/Electronic Thermoplastic Encapsulation
`(1997)
`1027 Marketing Materials, Dow Corning, Information About
`Dow Corning Brand® Conformal Coatings (2008)
`1028 Declaration of Michael C. Hendershot
`1029 Deposition transcript of Dr. Darrin G. Young
`
`
`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`Previously
`Submitted
`
`X
`X
`X
`X
`
`X
`
`X
`X
`
`
`vi
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`
`I.
`
`Introduction
`
`Petitioner Fitbit, Inc. (Fitbit) replies to the Patent Owner’s Response (Paper
`
`No. 21, Response) filed by AliphCom, Inc. d/b/a Jawbone (Patent Owner) and the
`
`Board’s decision to institute inter partes review (Paper No. 14, Institution
`
`Decision) of U.S. Patent No. 8,529,811 (the ’811 patent). Patent Owner confines
`
`its Response to a single limitation of the asserted claims. Moreover, Patent
`
`Owner’s Response relies on an unreasonable claim construction that reads out the
`
`word “substantially” from that limitation, contradicts the express language of the
`
`specification, and is inconsistent with the dependent claims. Patent Owner’s
`
`arguments should be rejected and claims 16–26 found unpatentable.
`
`II. The Board’s preliminary construction of “covers all or substantially all”
`is correct
`
`Consistent with Patent Owner’s position in a concurrent ITC investigation,
`
`Petitioner applied the phrase “covers all or substantially all” recited in claim 16 of
`
`the ’811 patent according to its ordinary meaning. See Petition at 18. The Board
`
`recognized the parties had used differing interpretations of the phrase in applying it
`
`to the prior art. Institution Decision at 7–8. The Board adopted a preliminary
`
`construction of the term as encompassing “on top of”—which was consistent with
`
`Petitioner’s understanding—and encouraged additional briefing on the phrase
`
`during trial. Id. at 8–9. The Board’s effective construction of this phrase is correct
`
`and need not be modified.
`
`1
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`The broadest reasonable interpretation of the phrase “covers all or
`
`substantially all,” in light of the specification, is “partially or entirely on top of.”
`
`Thus, the phrase “forming an outer molding of the wearable device that covers all
`
`or substantially all of the one or more inner moldings” should be understood as an
`
`outer molding that is partially or entirely on top of the inner moldings. This
`
`understanding is consistent with the claim language, the specification, and the
`
`phrase’s ordinary meaning.
`
`A.
`
`Petitioner and the Board’s preliminary construction is consistent
`with the claim language
`Claim 16 is clear: the outer molding must cover “all or substantially all” of
`
`the inner moldings. Use of the disjunctive condition “or substantially all”
`
`necessitates claim scope encompassing outer moldings that cover less than all of
`
`the inner moldings. As recited, the outer molding may entirely cover the inner
`
`moldings, such as by enclosing or encasing them. But the claimed outer molding is
`
`not limited to covering “all” of the inner moldings. The express recitation of “or
`
`substantially all” requires an alternative: the claimed outer molding may also cover
`
`“substantially all,” or be partially on top of, the inner moldings.
`
`B.
`
`Petitioner and the Board’s preliminary construction is consistent
`with the specification
`
`Petitioner’s (and the Board’s preliminary) construction is consistent with the
`
`specification, which expressly defines “substantially” as “partially or entirely”
`
`2
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`using the well-accepted definitional signal “i.e.,” or “it is.” See Ex. 1001 at 8:62–
`
`65.
`
`The Federal Circuit has found that the specification’s “use of ‘i.e.’ signals an
`
`intent to define the word to which it refers.” Toshiba Samsung Storage Tech.
`
`Korea Corp. v. LG Elecs., Inc., IPR2014-00204, 2014 WL 2447195, at *6
`
`(P.T.A.B. May 28, 2014) (quoting Edwards Lifesciences LLC v. Cook Inc., 582
`
`F.3d 1322, 1334 (Fed. Cir. 2009)); see also Abbott Labs. v. Novopharm Ltd., 323
`
`F.3d 1324, 1327, 1330 (Fed. Cir. 2003) (rejecting patentee’s proposed ordinary
`
`meaning construction of “co-micronization” and finding patentee had “explicitly”
`
`defined the term through use of the phrase “i.e.”). When terms are defined using
`
`“i.e.,” the Federal Circuit has determined those “definition[s] [are] not limited to
`
`the embodiment being discussed.” See Edwards, 582 F.3d at 1334.
`
`Here, Patent Owner signaled its intent to define “substantially” as “partially
`
`or entirely” through the use of “i.e.” in its discussion of the “component protective
`
`overmolding” process. The specification equates outer moldings with “protective
`
`overmolding.” For example, the outer molding of the wearable device depicted in
`
`Figure 8 is described as a “protective overmolding.” See, e.g., Ex. 1001 at 11:10–
`
`11. In discussing this molding process, the specification explains that “a securing
`
`coating may refer to any type of protective material, layer, cover, structure, liquid,
`
`gel, solid, or the like that is placed substantially (i.e., partially or entirely) over an
`
`3
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`item.” Id. at 8:62–65 (emphasis added). Patent Owner’s declarant Dr. Young also
`
`agreed during his deposition that the use of “i.e.” in the specification “defin[ed]
`
`‘substantially’ to include partially or entirely.” Ex. 1029 at 82:2–23.
`
`Consistent with this definition of “substantially” as “partially or entirely,”
`
`the specification instructs that “[i]n some examples, the protective layer, inner
`
`molding, and outer molding may be selectively, partially, or completely applied to
`
`a given item.” Ex. 1001 at 7:27–29 (emphases added). As an alternative to
`
`“selective[]” or “partial[]” application, the “outer molding may also be configured
`
`to completely enclose or encase an underlying item.” Id. at 7:29–31 (emphasis
`
`added). Thus, consistent with the claim language, the specification makes clear the
`
`outer molding (or inner molding or protective layer) can either completely
`
`enclose/encase (i.e., “cover all”) or partially cover (i.e., “or substantially all”) the
`
`inner moldings.
`
`C.
`
`Petitioner and the Board’s preliminary construction is consistent
`with the phrase’s ordinary meaning
`
`The Board’s preliminary construction of “covers all or substantially all” as
`
`encompassing “on top of” is also consistent with the phrase’s ordinary meaning.
`
`The Board noted that the broadest reasonable interpretation of the word “cover” is
`
`to “put something over [or] on top of.” Institution Decision at 9 (citing Ex. 3002).
`
`Patent Owner embraces a narrower and more restrictive meaning of the term as “to
`
`be over much or all of the surface of (something)” (Response at 16), or as testified
`
`4
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`by Dr. Young, to be “totally completely enclosing, encasing” something (Ex. 1029
`
`at 42:23–43:5; id. at 41:25–42:5, 45:12–17, 80:3–5). But as explained above,
`
`regardless of the ordinary meaning of “cover,” the claims expressly recite the
`
`disjunctive condition “or substantially all.” The claims thus encompass an outer
`
`molding that covers less than all of the inner moldings.
`
`The Federal Circuit has explained that “the term ‘substantially’ has
`
`numerous ordinary meanings” and that the “cases recognize the dual ordinary
`
`meaning of this term as connoting a term of approximation or a term of
`
`magnitude.” See Deering Precision Instruments, LLC. v. Vector Distribution Sys.,
`
`Inc., 347 F.3d 1314, 1322–23 (Fed. Cir. 2003); see also, Smith & Nephew, Inc. v.
`
`Convatec Techs., Inc., IPR2013-00097, 2014 WL 2466142, at *8 (P.T.A.B. May
`
`28, 2014) (citing Deering). Thus, courts must “turn to the intrinsic evidence to
`
`determine which interpretation should be adopted.” Deering, 347 F.3d at 1323.
`
`And as explained in section II.B, the specification expressly defines “substantially”
`
`as “partially or entirely.” Ex. 1001 at 8:62–65.
`
`Under its broadest reasonable interpretation, the ordinary meaning of
`
`“covers all or substantially all” encompasses an outer molding partially or entirely
`
`on top of the inner moldings, so long as it is also “configured to be positioned in
`
`contact with the user,” as recited by claim 16. Even under Patent Owner’s narrow
`
`5
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`interpretation, “covers all or substantially all” would encompass an outer molding
`
`that is only partially over the surface of something.
`
`In short, the key term in “covers all or substantially all” is “substantially,”
`
`not “covers.” Regardless of whether a broad or a narrow interpretation of “covers”
`
`is applied, the term “substantially”—as understood in view of the specification—
`
`expands the scope of the claim to include outer moldings that enclose/encase and
`
`outer moldings that partially cover the inner moldings.
`
`Moreover, Patent Owner’s identified dictionary definition is consistent with
`
`an interpretation of “cover” that does not require the outer molding to enclose or
`
`encase the inner molding. Ex. 2003. In particular, Patent Owner’s definition
`
`acknowledges that to “cover” means “to be over much or all of the surface”
`
`(Response at 16 (emphasis added)), and thus explicitly contemplates less-than-
`
`complete enclosure of the inner moldings. Indeed, an outer molding on top of or
`
`over all of a surface that is “configured to be positioned in contact with [a] user”
`
`(as recited by claim 16) falls within Patent Owner’s definition of “cover[ing]” that
`
`surface. In short, even if the claims did not recite the alternative of covering
`
`“substantially all” of the inner moldings, under either of the Board’s or Patent
`
`Owner’s dictionary definitions of “cover,” the broadest reasonable interpretation of
`
`the term encompasses an outer molding formed “on top of” the inner moldings.
`
`6
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`III. The Board should reject Patent Owner’s proposed construction of
`“covers all or substantially all”
`
`Patent Owner’s proposed construction should be rejected because it is
`
`unreasonably narrow in that it reads out limitations of the claims, improperly limits
`
`the claims to a single disclosed embodiment, and is inconsistent with the expansive
`
`claim language and non-limiting description in the specification.
`
`A.
`
`Patent Owner’s unreasonable construction reads out the term
`“substantially all”
`
`Patent Owner’s construction is unreasonable because it excises
`
`“substantially all” from the claims. Under Patent Owner’s construction, the claims
`
`would require that the outer molding encloses or encases—covers all of—the one
`
`or more inner moldings. But the claims recite that the outer molding must only
`
`“cover[] all or substantially all” of the inner moldings. Thus, for Patent Owner’s
`
`construction to be consistent with the claims, “substantially all” must be read out
`
`of the claims and rendered meaningless as follows: “forming an outer molding of
`
`the wearable device that covers all or substantially all of the one or more inner
`
`moldings.” This is improper.
`
`The notice function of patent claims “would be undermined . . . if courts
`
`construed claims so as to render physical structures and characteristics specifically
`
`described in those claims superfluous.” Haemonetics Corp. v. Baxter Healthcare
`
`Corp., 607 F.3d 776, 781 (Fed. Cir. 2010). As a result, “claims are interpreted with
`
`7
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`an eye toward giving effect to all terms in the claim.” Bicon, Inc. v. Straumann
`
`Co., 441 F.3d 945, 950 (Fed. Cir. 2006). This principle controls “even if it renders
`
`the claims inoperable or invalid.” See Haemonetics, 607 F.3d at 781; see also Slot
`
`Speaker Techs. v. Apple Inc., No. 2015-2038, -2039, 2017 WL 655440, at *7–8
`
`(Fed. Cir. Feb. 17, 2017) (nonprecedential) (reversing Board and finding
`
`obviousness even though reference did not disclose “back wall” element
`
`“follow[ing] the entire contour of the speaker cone,” because claim only required
`
`“back wall” to “substantially follow[] a curved contour of a portion of a drive unit
`
`cone” (emphases added)).
`
`Here, Patent Owner chose to pursue claims encompassing outer moldings
`
`that enclose/encase (i.e., cover all) the inner moldings, and outer moldings that
`
`partially cover (i.e., cover substantially all) the inner moldings. Having obtained
`
`claims with wider scope than complete enclosure, Patent Owner cannot attempt to
`
`construe its claims more narrowly for purposes of invalidity by rendering
`
`meaningless the express disjunctive condition “or substantially all” recited in the
`
`claims. See Aero Prod. Int’l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1013
`
`(Fed. Cir. 2006) (rejecting construction for claim reciting a “substantially hermetic
`
`seal” that would require the seal to “not allow any air to leak through” because
`
`such construction “would render the term ‘substantially’ illusory”).
`
`8
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`If Patent Owner had wanted to narrow its claims as it has proposed, it could
`
`have pursued claims requiring the outer molding to “completely enclose or encase”
`
`the inner moldings. See Ex. 1001 at 7:27–29. But Patent Owner did not. The Board
`
`should thus reject Patent Owner’s attempt to improperly narrow the claims by
`
`rendering meaningless the express limitation “substantially all.”
`
`B.
`
`Patent Owner’s proposed construction is inconsistent with
`surrounding claim language
`
`Patent Owner’s construction is also unreasonable because it is inconsistent
`
`with the broad language in other limitations of claim 16 and ignores the context in
`
`which the disputed limitation appears. In particular, the Patent Owner’s contention
`
`that “covers all or substantially all” means to “enclos[e] or encas[e] the inner
`
`moldings” (Response at 8) and requires “complete coverage” of the inner moldings
`
`(Ex. 1029 at 78:14–19), would require the outer molding to completely surround
`
`the underlying inner moldings, protective material, framework, and elements, when
`
`the other claim limitations make clear that only a “subset” of the underlying
`
`elements must be covered.
`
`For example, the first limitation of claim 16 recites “selectively applying at
`
`least one protective material substantially over one or more of a plurality of
`
`elements coupled with a framework for a wearable device.” Ex. 1001 at 14:24–26.
`
`This limitation requires only that a protective material is “selectively applied”
`
`“substantially over” one element coupled to a framework. As shown in
`
`9
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`Demonstrative 1, the scope of this claim limitation encompasses, for example, a
`
`protective material applied to cover part of an element on a framework.
`
`Demonstrative 1
`
`
`
`The second limitation of claim 16 recites “forming one or more inner
`
`moldings substantially over a subset or all of the framework, the at least one
`
`protective material and the plurality of elements.” Id. at 14:29–31. This limitation
`
`requires only that an inner molding is “form[ed]” “substantially over a subset” of
`
`the framework, protective material, and elements. In context of the first limitation,
`
`the scope of this second limitation encompasses, for example, an inner molding
`
`formed over the protective material covering one element of a framework (as
`
`shown in Demonstrative 2).
`
`10
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`
`Demonstrative 2
`
`
`
`The disputed third limitation of claim 16 recites “forming an outer molding
`
`of the wearable device that covers all or substantially all of the one or more inner
`
`moldings.” Id. at 14:34–36. This limitation, in context of the first and second
`
`limitations, requires that an outer molding is “form[ed]” that “covers all or
`
`substantially all” of the inner molding. It does not require the outer molding to
`
`cover the entirety of the framework or the protective material. In context of the
`
`first and second limitations, the scope of this third limitation encompasses, for
`
`example, an outer molding formed on top of the inner molding, one element
`
`coupled to the framework, and part of the framework (as shown in Demonstrative
`
`3).
`
`11
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`
`Demonstrative 3
`
`
`
`Importantly, in context of the first two limitations, this third limitation
`
`cannot require the outer molding to “enclos[e] or encas[e] the inner moldings,” as
`
`proposed by Patent Owner, because the claimed inner moldings are not required to
`
`enclose or encase the underlying layers, but are merely required to be formed
`
`“substantially over a subset” of the framework and its elements. Thus, although
`
`claim 16 encompasses an outer molding that completely surrounds the inner
`
`moldings, the limitations describing the protective material and inner moldings
`
`make clear that claim 16 also encompasses outer moldings that cover less than
`
`“all” of the inner moldings. In short, Patent Owner’s proposed construction of the
`
`disputed third limitation is unreasonable in context of the previous two limitations.
`
`12
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`C. Testimony of Patent Owner’s expert cannot override the intrinsic
`evidence
`
`The Board should reject Patent Owner’s efforts to redefine “covers all or
`
`substantially all” using the extrinsic evidence of Dr. Young’s testimony because
`
`his testimony conflicts with the specification and ignores the dependent claims.
`
`Courts “should discount any expert testimony that is clearly at odds with the
`
`claim construction mandated by the claims themselves, the written description, and
`
`the prosecution history, in other words, with the written record of the patent.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (internal
`
`quotations omitted). Indeed, “where the public record unambiguously describes the
`
`scope of the patented invention, reliance on any extrinsic evidence is improper.”
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
`
`As explained in section II, the intrinsic evidence mandates a construction of
`
`“covers all or substantially all” that encompasses an outer molding partially on top
`
`of the inner moldings. Dr. Young’s declaration (Ex. 2001) cannot eliminate the
`
`term “substantially all” from the claims or the express definition of “substantially”
`
`from the specification.
`
`As explained in section II.B, Dr. Young agreed that the specification defines
`
`“substantially” as “partially or entirely.” Ex. 1029 at 82:2–23. But his opinion—
`
`and Patent Owner’s construction—is premised on and requires that the term
`
`“substantially” have two different meanings within the same claim. Response at
`
`13
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`12–13, Ex. 2001 ¶ 34, Ex. 1029 at 88:25–89:10 (testifying that “substantially” in
`
`the first limitation should be interpreted differently from “substantially” in the third
`
`limitation of claim 16). Dr. Young’s conclusory assertion that the specification’s
`
`definition of “substantially” should be selectively applied conflicts with the
`
`Federal Circuit’s instruction that definitions using the term “i.e.” in the
`
`specification are “not limited to the embodiment being discussed.” See Edwards,
`
`582 F.3d at 1334.
`
`Dr. Young also ignores that the claims depending from claim 16 focus on
`
`protective properties of the inner—and not the outer—moldings. For example, Dr.
`
`Young criticizes Lo’s transmission medium because it “does not protect plastic
`
`housing 1474 [the inner molding].” Ex. 2001 ¶ 52. But, consistent with Petitioner
`
`and the Board’s preliminary construction, the dependent claims require the inner
`
`moldings—not the outer molding—to have protective properties associated with
`
`exposed exterior surfaces. See, e.g., Ex. 1001 at 14:42–45 (“waterproofing,” claim
`
`19), 14:48–49 (“oleophobic,” claim 21), 14:50–51 (“anti-bacterial,” claim 22).
`
`Indeed, Dr. Young pointed to similar “protective properties” in unrelated
`
`dependent claims as properties that would be present in outer moldings of wearable
`
`devices. See Ex. 2001 ¶ 51 (“waterproof[ing],” claim 6).
`
`If the claimed inner moldings could only be completely encased—and not
`
`exposed in part (as urged by Patent Owner and Dr. Young)—these “protective
`
`14
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`properties” of the inner moldings required by the dependent claims would be
`
`unnecessary. In fact, Dr. Young conceded that he “c[ould not] think of an example
`
`. . . of any commercial product where an inner molding that’s fully encased is
`
`antibacterial or oleophobic.” Ex. 1029 at 64:19–23, 67:7–11. Thus, Dr. Young’s
`
`testimony is inconsistent with the dependent claims, which contemplate that at
`
`least part of the inner molding may be uncovered (as opposed to fully enclosed).
`
`Additionally, Dr. Young does not address the specification’s clear intent to
`
`capture broad scope and to not limit the claims to the disclosed embodiments. For
`
`example, the specification repeatedly stresses that the steps in the disclosed process
`
`“are not limited to any of the examples shown and described” and the disclosed
`
`method “may be implemented differently in the order, function, configuration, or
`
`other aspects provided and is not limited to the examples shown and described.”
`
`Ex. 1001 at 9:52–57. See also id. at 7:51–54, 8:52–56, 10:38–41, 11:35–38 (same);
`
`id. at 12:1–5 (“[B]and 900 and the elements described above in connection with
`
`FIGS. 1-9, may be varied in type, configuration, function, structure, or other
`
`aspects, without limitation to any of the examples shown and described.”
`
`(emphasis added)). In short, Dr. Young’s attempt to limit “covers all or
`
`substantially all” to a particular embodiment is inconsistent with the specification’s
`
`15
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`rejection of a limited and narrow understanding of the disclosed embodiments and
`
`the expansive claim language.1
`
`Patent Owner’s attempt to limit the claims to an embodiment through
`
`extrinsic evidence is also inconsistent with fundamental principles of claim
`
`construction. The Federal Circuit has instructed: “although the specification often
`
`describes very specific embodiments of the invention, we have repeatedly warned
`
`against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323.
`
`Indeed, “even where a patent describes only a single embodiment, claims will not
`
`be read restrictively unless the patentee has demonstrated a clear intention to limit
`
`the claim scope using words or expressions of manifest exclusion or restriction.”
`
`See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed.
`
`Cir. 2011) (internal quotations omitted); see also Salesforce.com, Inc. v.
`
`VirtualAgility, Inc., CBM2013-00024, 2014 WL 4675293, at *21 (P.T.A.B. Sept.
`
`16, 2014) (citing Arlington). Here, rather than “manifest exclusion or restriction,”
`
`Patent Owner demonstrated a clear intent to expand claim scope by pursuing
`
`claims that recite the disjunctive condition of “or substantially all” and
`
`
`1 For example, Dr. Young admitted that he interpreted the claims to be limited to a
`
`single figure in the specification. Ex. 1029 at 120:11–25 (testifying that claim 16
`
`covers “what the patent teaches in figure 3”); id. at 114:16–24, 115:9–15.
`
`16
`
`

`

`Case IPR2016-00607
`U.S. Patent No. 8,529,811
`emphasizing that all disclosed embodiments are merely exemplary and can be
`
`modified “without limitation.” See, e.g., Ex. 1001 at 12:1–5. Thus, Patent Owner’s
`
`attempts to cabin the claims to a specific embodiment should be rejected.
`
`In sum, the specification and claims themselves unambiguously expand the
`
`scope of the claims to encompass more than an outer molding that encloses or
`
`encases the inner moldings. Patent Owner’s extrinsic evidence cannot serve to
`
`limit the claims in a manner that contradicts the intrinsic record. See Finisar Corp.
`
`v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008) (“When construing
`
`claims, . . . intrinsic evidence o