UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`
`
`Patent No. 6,575,549
`
`
`
`_____________________________________________________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 6,575,549
`
`CHALLENGING CLAIMS 1-16 AND 19-20
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION .......................................................................................... 1 
`
`I. 
`
`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) ................. 2 
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) .............................. 3 
`
`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 ’549 PATENT AND ITS PROSECUTION .......................................... 3 
`
`A. 
`
`B. 
`
`Summary of the Prosecution History ................................................... 3 
`
`Brief Description of the Patent ............................................................. 3 
`
`VI.  THE PRIOR ART ........................................................................................... 5 
`
`A. 
`
`B. 
`
`Summary of the Prior Art ..................................................................... 5 
`
`Brief Description of the Prior Art ........................................................ 6 
`
`1. 
`
`2. 
`
`Adler ........................................................................................... 6 
`
`JPH10-006488 ............................................................................ 7 
`
`3.  McClellan ................................................................................... 9 
`
`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 ........................................................... 10 
`
`i
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`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`“longitudinally” & “transversely” ........................................... 11 
`
`1. 
`
`2.  Means-Plus-Function Limitations of Claims 11-20 ................ 12 
`
`i. 
`
`ii. 
`
`“means to move the substrate relative to said row
`of devices in a direction generally perpendicular to
`said row of dots” ............................................................ 13 
`
`“means to determine if one or more of said devices
`is not operating correctly” ............................................. 16 
`
`iii. 
`
`“control means” ............................................................. 17 
`
`VIII.  DETAILED GROUNDS FOR UNPATENTABILITY ............................... 22 
`
`A.  Ground 1: Claims 1-4, 6-12, 16, and 19 are anticipated under 35
`U.S.C. § 102(b) by Adler. .................................................................. 22 
`
`1. 
`
`Claim 1 ..................................................................................... 22 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`i. 
`
`ii. 
`
`A method of modifying an image .................................. 22 
`
`Identifying said specific location or locations ............... 23 
`
`iii. 
`
`Shifting the printed position of the ink .......................... 24 
`
`Claims 2-4 and 7-8 ................................................................... 25 
`
`Claim 6 ..................................................................................... 28 
`
`Claim 9 ..................................................................................... 30 
`
`Claim 10 ................................................................................... 30 
`
`Claim 11 ................................................................................... 31 
`
`i. 
`
`A printer having a row of devices which cause
`rows of dots to be deposited onto a substrate ................ 31 
`
`ii.  Means to move the substrate ......................................... 32 
`
`ii
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`iii.  Means to determine if one or more of said devices
`is not operating correctly ............................................... 33 
`
`iv. 
`
`Control means ................................................................ 34 
`
`7. 
`
`8. 
`
`9. 
`
`Claim 12 ................................................................................... 36 
`
`Claim 16 ................................................................................... 39 
`
`Claim 19 ................................................................................... 39 
`
`B. 
`
`C. 
`
`Ground 2: Claims 12-14 are obvious under 35 U.S.C. § 103(a)
`in view of Adler .................................................................................. 40 
`
`Ground 3: Claim 5 is anticipated under 35 U.S.C. § 102(b) by
`JPH10-006488 .................................................................................... 45 
`
`1. 
`
`Elements of claim 1 from which claim 5 depends ................... 45 
`
`i. 
`
`ii. 
`
`A method of modifying an image to be printed ............ 45 
`
`Identifying said specific location or locations ............... 46 
`
`iii. 
`
`Shifting the printed position of the ink .......................... 47 
`
`2. 
`
`Additional elements of claim 5 ................................................ 49 
`
`D.  Ground 4: Claims 15 and 20 are anticipated under 35 U.S.C. §
`102(e) by McClellan ........................................................................... 50 
`
`1. 
`
`Elements of claim 11 from which claims 15 and 20
`depend ...................................................................................... 50 
`
`i. 
`
`A printer having a row of devices which cause
`rows of dots to be deposited onto a substrate ................ 51 
`
`ii.  Means to move the substrate ......................................... 52 
`
`iii.  Means to determine if one or more of said devices
`is not operating correctly ............................................... 53 
`
`iv. 
`
`Control means ................................................................ 54 
`
`iii
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`Additional element of claim 15................................................ 57 
`
`Additional elements of claim 20 .............................................. 58 
`
`2. 
`
`3. 
`
`IX.  CONCLUSION ............................................................................................. 60 
`
`
`
`iv
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`

`
`Attorney Docket No. 069700-5005
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,575,549 to Silverbrook
`Declaration of Stephen Pond, Ph.D.
`File History of U.S. Patent 6,575,549
`Prosecution History of EP1303410
`WO 97/31781 to Adler et al.
`JPH10-006488
`U.S. Patent No. 6,439,681 to McClellan
`U.S. Patent No. 6,270,187 to Murcia et al.
`Curriculum Vitae of Stephen Pond, Ph.D.
`Memjet’s Patent Local Rule 4.1 Preliminary Responsive Claim
`Constructions And Preliminary Identification of Extrinsic
`Evidence
`
`HP
`Exhibit #
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`
`
`v
`
`

`
`Attorney Docket No. 069700-5005
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100 et seq., Petitioner, HP
`
`Inc. (formerly known as Hewlett-Packard Company), hereby requests Inter Partes
`
`Review (hereinafter “IPR”) for claims 1-16 and 19-20 of U.S. Patent No.
`
`6,575,549 (“the ’549 patent,” Ex. 1001), which issued to Silverbrook on June 10,
`
`2003, and is currently assigned to the Memjet Technology Limited (“Memjet”).
`
`As will be shown below, claims 1-16 and 19-20 of the ’549 patent should be found
`
`unpatentable under pre-AIA 35 U.S.C. §§ 102 and 103 because the prior art
`
`confirms that the claims were well known in the art years before it was filed. See
`
`Ex. 1002. While many of the references described herein can anticipate or render
`
`obvious most or all of the claims, we present the best reference for each claim
`
`based on the technical approach most aligned with a given claim.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`Pursuant to 37 C.F.R. § 42.8(a)(1), the following mandatory notices are
`
`provided as part of this Petition.
`
`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 for the Petitioner.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`As of the filing date of this petition, the ’549 patent is the subject of a
`
`pending litigation involving the Petitioner: Memjet Technology Limited v. Hewlett-
`
`1
`
`

`
`Attorney Docket No. 069700-5005
`
`Packard Company, Case No. 3:15-cv-01769-BEN-BLM in the Southern District of
`
`California. Petitioner is not aware of any other judicial or administrative matter
`
`involving the ’549 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)
`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: Bradford A. Cangro (Reg. No. 58,478), Tel:
`
`202.739.5088; Andrew J. Gray IV (Reg. No. 41,796), Tel: 650.843.7575; 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, 1400 Page Mill Road,
`
`Palo Alto, CA 94304.
`
`Fax: 650.843.4001
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`
`
`1 Although unrelated to the ’549 patent, Petitioner filed petitions requesting IPR for
`
`other patents in the district court suit, including U.S. Patent Nos. 7,156,492
`
`(IPR2016-00537); 9,056,475 (IPR2016-00356); and 6,880,914 (concurrently filed).
`
`2
`
`

`
`Attorney Docket No. 069700-5005
`
`Petition.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Service information is provided in Section II.C, above. Petitioner consents
`
`to electronic service 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. 069700-5005).
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104
`Petitioner hereby certifies that the ’549 patent is available for IPR and that
`
`the Petitioner is not barred or estopped from requesting IPR challenging the claims
`
`of the ’549 patent because it has not been a party to any other post-grant or inter
`
`partes review of the ’549 patent.
`
`V. THE ’549 PATENT AND ITS PROSECUTION
`A.
`Summary of the Prosecution History
`The ’549 patent issued to Silverbrook on June 10, 2003, and from USPTO
`
`records, appears to be currently assigned to Memjet Technology Limited
`
`(“Memjet”). The ’549 patent issued with 20 claims, two of which are independent.
`
`The application that led to the ’549 patent was filed June 30, 2000.
`
`Brief Description of the Patent
`
`B.
`The ’549 patent is directed to a printer and method for modifying an image
`
`3
`
`

`
`Attorney Docket No. 069700-5005
`
`to be printed in order to compensate for failure of certain nozzles of the device to
`
`print ink correctly. See Ex. 1001 at Abstract and claims. The image is modified so
`
`that adjacent nozzles print dots originally intended for the failed nozzles. Id.
`
`Figure 1 (below) shows a printhead 10 with an array of ink jet nozzles 12
`
`arranged in a single line. Ex. 1001 at 2:33-34. Paper is passed under the printhead
`
`in a direction generally perpendicular to the line of nozzles and fed in the direction
`
`indicated by arrow 14 in Figure 2 (further below). Ex. 1001 at 2:37-39, 3:5-6.
`
`Ex. 1001, Figure 1
`
`
`
`Figure 2 schematically shows a portion of printing performed by the
`
`printhead 10 without fault correction. Id. at 2:60-62.
`
`Ex. 1001, Figure 2
`(no fault correction)
`
`
`
`Ex. 1001, Figure 3
`(fault correction)
`
`Ex. 1001, Figure 3
`(annotated)2
`
`In this example, Inkjets A-G and I-N are operating correctly, but inkjet H is
`
`
`
`2 All colorized figures have been colorized by Petitioner.
`
`4
`
`

`
`Attorney Docket No. 069700-5005
`
`not. Id. at 2:62-64. The unshaded circles 16, 18, 20, and 22 represent drops of ink
`
`which should have been printed in column H but were not. Id. at 2:67-3:2.
`
`Figure 3 (above) shows the same image printed with fault correction. Id.
`
`1001 at 3:2-4. Dot 16 should be printed at row 1, column H. Id. at 3:6-7. Since
`
`nozzle H is not functioning and adjacent nozzles G and I are available (i.e., no
`
`drops are to be printed there), a dot is placed in column G. Id. at 3:7-12. In this
`
`embodiment, dot replacement alternates between column G and I. Id. at 3:13-20.
`
`Row 3 has a dot 18 required at column H and again columns G and I are free. Id.
`
`at 3:27-28. Because the last extra dot printed (at row 1) was printed in column G,
`
`the extra dot is printed in column I. Id. at 3:27-30. Row 4 also has a dot 20
`
`intended for column H, but in this row, dots are already required at both columns G
`
`and I. Therefore, because no dot is required in column H in row 5 and both
`
`columns G and I are free, a dot is printed in row 5, in column G because the prior
`
`replacement dot (at row 3) was printed in column I (i.e., alternates from side to
`
`side). Id. at 3:31-37. Row 6 also has a dot 22 required at column H but again both
`
`columns G and I are already used so the extra dot is carried to the next row, row 7.
`
`As only column G is available, the extra dot is printed there. Id. at 3:38-46.
`
`VI. THE PRIOR ART
`A.
`Summary of the Prior Art
`WO 97/31781 to Adler et al. (“Adler”) qualifies as pre-AIA 35 U.S.C.
`
`5
`
`

`
`Attorney Docket No. 069700-5005
`
`§ 102(b) prior art to the ’549 patent, as it published on Sep. 4, 1997, which is more
`
`than one year prior to the filing date of the ’549 patent.
`
`JPH10-006488 qualifies as pre-AIA 35 U.S.C. § 102(b) prior art to the ’549
`
`patent, as it published on Jan. 13, 1998, which is more than one year prior to the
`
`filing date of the ’549 patent.
`
`U.S. Patent No. 6,439,681 to McClellan (“McClellan”) qualifies as pre-AIA
`
`35 U.S.C. § 102(e) prior art to the ’549 patent, as it was filed on Jan. 27, 2000,
`
`which is prior to the date of invention of the ’549 patent.
`
`The Office did not previously consider Adler, JPH10-006488, McClellan, or
`
`the arguments presented herein. Accordingly, Petitioner respectfully requests that
`
`the Board consider the prior art and arguments presented herein, and find claims 1-
`
`16 and 19-20 of the ’549 patent invalid under pre-AIA 35 U.S.C. §§ 102 and 103.
`
`B.
`
`Brief Description of the Prior Art
`1.
`Figure 2 of Adler below is a schematic view of a rotatable drum type ink jet
`
`Adler
`
`printer (cropped to omit the ink jet printer controller 6). Ex. 1005 at 6:9-11.
`
`As shown to the right, Adler discloses
`
`a rotatable drum type ink jet printer where
`
`the print head extends parallel to the
`
`substrate 3 (e.g., paper shown in blue) which
`
`6
`
`Ex. 1005, Figure 2 (cropped)
`
`
`
`

`
`Attorney Docket No. 069700-5005
`
`is borne on the drum 2 (orange) for printing parallel ink dot lines on a substrate 3
`
`(blue). Ex. 1005 at 2:1-5, 6:27-30. The print head carriage 8 (yellow) includes a
`
`print head 10 which extends nearly the entire length of the drum 2 corresponding
`
`to the maximum width of substrate 3 to be printed. Id. at 7:6-8.
`
`Figure 5 (right) illustrates an ellipse printed by the ink jet printer of Figure 2
`
`having a defective (blocked) ink jet head (S). Ex. 1005 at 6:17-19. Adler teaches
`
`compensating for an unprinted ink dot line
`
`(like from ink jet head S in the above
`
`example) by printing an ink dot line
`
`adjacent to an unprinted ink dot line with
`
`either additional ink dots or larger ink dots,
`
`if possible, so as to restore the original dot
`
`Ex. 1005, Figure 5
`percentage. Ex. 1005 at 4:26-29. This manner of printing replacement dots
`
`anticipates and/or renders obvious the challenged claims of the ’549 patent.
`
`JPH10-006488
`
`2.
`JPH10-006488 is directed to an
`
`ink jet recording (i.e., printing)
`
`method and device for printing a high
`
`quality image even with a faulty
`
`printing element. Ex. 1006 at
`
`Ex. 1006, Figure 1
`
`
`
`7
`
`

`
`Attorney Docket No. 069700-5005
`
`Abstract. Figure 1 (above right) illustrates an ink jet recording device of an
`
`embodiment of JPH10-006488. Id. at (0014).
`
`Paper 1 (blue) is separated one sheet at a time, taken into the device by the
`
`rotation of a paper supply roller 2 (orange), and passed under a full-line recording
`
`head 5 (yellow). Ex. 1006 at (0015). Two rows of ink discharge nozzles 6 and 7
`
`span the entire width of the recording paper and are disposed on the bottom of the
`
`recording head 5 (yellow). Id. When the recording paper 1 (blue) passes under the
`
`recording head 5 (yellow), ink droplets are discharged from each of the nozzles of
`
`the recording head 5 (yellow) in accordance with a recorded image signal so that
`
`an image 8 (green) is formed on the recording paper 1 (blue). Id. at (0016).
`
`In one embodiment, JPH10-006488 teaches that the two rows of nozzles are
`
`staggered at high resolutions such that, as illustrated in Figure 7(A), dots (×)
`
`recorded by one row of nozzles may be positioned in roughly the center of a square
`
`formed by rows of dots (lattice (●)) recorded by the other row of nozzles . Id. at
`
`(0045). Figure 7(B) shows one of the nozzles for printing a portion of dots
`
`represented by (x) is unable to discharge. In this case, JPH10-006488 teaches
`
`using complementary dots represented by (●) on each side of the blank line created
`
`by the failed nozzle, in an alternating manner on the left and right. Id. at (0046).
`
`8
`
`

`
`Attorney Docket No. 069700-5005
`
`
`
`Ex. 1006, Figure 7(A)
`
`Ex. 1006, Figure 7(B)
`
`
`
`Ex. 1006, Figure 7(B)
`(replacement dots in blue)
`
`3. McClellan
`McClellan discloses a thermal ink jet print head that uses arrays of
`
`individually-addressable printing elements (i.e., nozzles). Ex. 1007 at 1: 51-52.
`
`When a printing element fails, image quality suffers. Id. at Abstract. McClellan
`
`describes compensating for the failure by increasing the firing rate or firing pulse
`
`duration of one or more of the printing elements that are adjacent to the failed
`
`element. Id. The ink deposited by the adjacent elements bleed into the area left
`
`vacant by the failed element. Id. Figures 3B, 3C, and 3D illustrate how the output
`
`of ink-energizing elements can be modified to compensate for a failed element.
`
`Ex. 1007, Figure 3B
`
`
`
`Ex. 1007, Figure 3C
`
`Ex. 1007, Figure 3D
`
`Figure 3B shows an exemplary dot pattern produced by an ink jet printer
`
`when three co-linear ink-energizing elements are functioning properly. Ex. 1007 at
`
`3:58-60. Figure 3C shows the effect of a single failed ink-energizing element. Id.
`
`9
`
`

`
`Attorney Docket No. 069700-5005
`
`at 3:65-66. A missing or failed nozzle (i.e., ink-energizing element) causes an
`
`entire row not to be printed. Id. at 3:66-67. Figure 3D shows how the printed
`
`output is improved by increased drop firing rate of adjacent nozzles, resulting in
`
`additional dots being dropped near the location of the failed nozzle. Id. at 4:1-2.
`
`Extra ink from the two functioning ink-energizing elements bleeds into the area
`
`normally printed by the failed nozzle, and at least part of the region between the
`
`upper and lower rows (i.e., the missing row) is filled. Id. at 4:2-4.
`
`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 1-16 and 19-20 of the ’549 patent, and the cancellation
`
`of these claims as unpatentable.
`
`Statutory Grounds Of Challenge
`
`B.
`Petitioner requests that claims 1-16 and 19-20 of the ’549 patent be
`
`cancelled as unpatentable under 35 U.S.C. §§ 102 and 103. The claim
`
`construction, reasons for unpatentability, and specific evidence supporting this
`
`request are detailed below.
`
`Proposed Claim Constructions
`
`C.
`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
`
`10
`
`

`
`Attorney Docket No. 069700-5005
`
`broadest reasonable interpretation as understood by one of ordinary skill in the art
`
`and consistent with the specification. Because the broadest reasonable
`
`interpretation standard differs from the standard applied by 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 other proceedings.
`
`“longitudinally” & “transversely”
`
`1.
`The terms “longitudinally” and “transversely” are used in dependent claims
`
`2-4, 7, and 8 to describe the shift in ink location. One of ordinary skill in the art,
`
`defining the broadest reasonable construction of these claim terms in the context of
`
`the patent would understand “longitudinally” to mean “parallel to the defective or
`
`blank line caused by the failed nozzle” and “transversely” to mean
`
`“perpendicular to the defective or blank line caused by the failed nozzle.” See,
`
`e.g., Ex. 1001 at 2:1-7 (“The defective device will result in a defect line…
`
`Preferably, the ink is only shifted side-ways relative to the line, but if no location is
`
`available in the same row, the ink may be shifted both longitudinally and
`
`transversely and longitudinally along the line.”).
`
`During prosecution of the European counterpart, the patentee defined the
`
`longitudinal direction as the paper feed direction. See, e.g., Ex. 1004 at 60 (July 7,
`
`2008 Response). This definition, however, excludes some embodiments of the
`
`patent. In order to cover all embodiments, Petitioner’s proposed interpretation for
`
`11
`
`

`
`Attorney Docket No. 069700-5005
`
`these terms in the ’549 patent is broader than, but consistent with, the definition
`
`proposed by the patentee in the European counterpart. For example, in a stationary
`
`pagewide printhead (the preferred embodiment of the ’549 patent), paper moves
`
`under the printhead in its lengthwise direction, so the blank line created by a failed
`
`nozzle is along the length of the page. In this system, the page-feed direction is the
`
`same as the direction of the blank line caused by the failed nozzle, i.e., the
`
`longitudinal direction is the paper feed direction. However, Petitioner’s definition
`
`encompasses scanning printheads (which are also disclosed in the ’549 patent) that
`
`travel across the width of the page, such that a failed nozzle creates a blank line
`
`across the width of the page. See Ex. 1001 at 1:19-22. (“A blocked nozzle will
`
`result in multiple horizontal blank lines, in the case of a scanning type printhead, or
`
`a blank vertical line in the case of a page width printhead.”). The general meaning
`
`of “transverse” to a longitudinal axis, to one skilled in the art, is perpendicular or at
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`a right angle to a longitudinal axis. Ex. 1002 at ¶¶ 40-45. Therefore, the broadest
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`reasonable interpretation of “longitudinally” is “parallel to the defective or blank
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`line caused by the failed nozzle”, and of “transversely” is “perpendicular to the
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`defective or blank line caused by the failed nozzle.”
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`2. Means-Plus-Function Limitations of Claims 11-20
`Pursuant to 37 CFR § 42.104(b)(3), Petitioner proposes constructions for the
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`means-plus-function limitations included in claims 11-20. Independent claim 11
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`12
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`Attorney Docket No. 069700-5005
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`includes three means-plus-function elements. Claims 12-20 depend from claim
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`11.3 Each of the following terms includes the word “means” followed by
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`functional language. The use of the word “means” creates a rebuttable
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`presumption that § 112, ¶ 6 (now 35 U.S.C. § 112(f)) applies. Personalized Media
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`Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998).
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`Next, the claim elements are analyzed to determine whether they elaborate
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`sufficient structure to rebut the means-plus-function presumption. Becton,
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`Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1263 (Fed. Cir.
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`2010). Here, these elements are described in purely functional terms without any
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`elaboration of structure to rebut the presumption. Ex. 1002 at ¶ 48.
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`i.
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`“means to move the substrate relative to said row of
`devices in a direction generally perpendicular to said
`row of dots”
`The phrase “means to move the substrate relative to said row of devices in a
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`direction generally perpendicular to said row of dots” is used in the preamble of
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`claim 11, which states: “A printer having a row of devices which cause rows of
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`3 Claim 12, as written, depends from claim 1, but this may be a typographical error
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`because claim 12 references “the control means,” which appears in claim 11, but
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`not claim 1. Without conceding definiteness, in order to preserve the claim’s
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`validity for this proceeding, Petitioner treats claim 12 as depending from claim 11.
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`13
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`Attorney Docket No. 069700-5005
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`dots to be deposited onto a substrate and means to move the substrate relative to
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`said row of devices in a direction generally perpendicular to said row of dots.” To
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`the extent the preamble is limiting, the function of this term is “mov[ing] the
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`substrate relative to said row of devices in a direction generally perpendicular to
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`said row of dots.” The substrate is anything that can be printed, such as a piece of
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`paper. Ex. 1002 at ¶ 50. The specification does not disclose any structure that
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`performs this function (Ex. 1002 at ¶¶ 51-52); it simply states that “[t]he printhead
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`may print by scanning across the substrate to print horizontal bands or, if it is a full
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`page width printhead, it may pass along the length of the page” (Ex. 1001 at 1:16-
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`19), and “the paper is fed past the printhead in the direction of arrow 14 . . .” (Id. at
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`3:5-6). The only potential structure in the specification is a “means to move the
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`substrate relative to said row of devices in a direction generally perpendicular to
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`said row of dots.” Id. at 1:51-54 (emphasis added)4.5 However, this is merely an
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`4 Unless otherwise noted, all emphasis has been added by Petitioner.
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`5 In the district court litigation, Patent Owner has proposed that the corresponding
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`structure for this term is “Digital printing device, ink ejection device, page width
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`printer, laser or LED type printer that passes paper underneath its printhead.” Ex.
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`1010 at 8. This is nonsensical as it points to a printer as the means for moving, but
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`claim 11 is a printer, with a means to move as a subcomponent of the printer.
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`14
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`Attorney Docket No. 069700-5005
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`identical recitation of the claim language itself; thus, it is not a sufficient structure.
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`“Even if the specification discloses a ‘corresponding structure,’ the disclosure must
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`be adequate.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012).
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`The structure must be one recognized by a person of ordinary skill in the art as a
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`known structure. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d
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`1361, 1364 (Fed. Cir. 2012); Biomedino, LLC v. Waters Techs. Corp., 490 F.3d
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`946, 953 (Fed. Cir. 2007) (“The inquiry is whether one of skill in the art would
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`understand the specification itself to disclose a structure, not simply whether that
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`person would be capable of implementing a structure.”). While reserving its rights
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`to challenge the definiteness of this claim in any litigation or other proceeding,
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`Petitioner proposes that the broadest reasonable interpretation of the corresponding
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`structure for this term in this proceeding is “any suitable structure to cause the
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`substrate to move relative to a printhead.”6 Ex. 1002 at ¶ 53.
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`6 The Petitioner believes, and reserves its right to contend in litigation, that the
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`means‐plus‐function limitations addressed in Section VII.C.2 fail 35 U.S.C. § 112,
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`¶ 2. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir.
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`1994) (in banc); see also In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881,
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`1884-85 (Fed. Cir. 1997);  35 U.S.C. § 112, ¶ 2. Because indefiniteness may not
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`be raised in this IPR, Petitioner advances a BRI for this proceeding alone.
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`Attorney Docket No. 069700-5005
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`ii.
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`“means to determine if one or more of said devices is
`not operating correctly”
`The phrase “means to determine if one or more of said devices is not
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`operating correctly” appears as an element in independent claim 11. The function
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`is “determin[ing] if one or more of said devices is not operating correctly.” The
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`specification’s only disclosure with respect to performance of this function is: “[i]t
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`is [] assumed that the diagnostic systems of the printer, which will be well
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`understood by those skilled in the art, have detected that nozzle h is not functioning
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`correctly.” Ex. 1001 at 2:53-56. Accordingly, the only potential structure
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`identified in the specification is “diagnostic systems of the printer.” However, this
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`potential corresponding structure is insufficient. “Even if the specification
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`discloses a ‘corresponding structure,’ the disclosure must be adequate.” Noah, 675
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`F.3d at 1311. The structure must be one recognized by a person of ordinary skill in
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`the art as a known structure. See Ergo, 673 F.3d at 1364; Biomedino, 490 F.3d at
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`953 (“The inquiry is whether one of skill in the art would understand the
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`specification itself to disclose a structure, not simply whether that person would be
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`capable of implementing a structure.”). Here, “diagnostic systems” is too generic
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`to conjure up a specific structure in the mind of one of ordinary skill in the art. Ex.
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`1002 at ¶ 57. The word “diagnostic” is merely describing the function and the
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`word “system” is just a nonce word. Verint Sys. Inc. v. Red Box Recorders Ltd.,
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`No. 14-CV-5403(SAS), 2016 WL 54688, at *11 (S.D.N.Y. Jan. 4, 2016)
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`16
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`Attorney Docket No. 069700-5005
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`(“‘System’ standing alone is a nonce word that does not describe a structure…);
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`see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015)
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`(“Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words
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`that reflect nothing more than verbal constructs … typically do not connote
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`sufficiently definite structure”) (internal quotation omitted). While reserving its
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`rights to challenge the definiteness of this claim in any litigation or other
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`proceeding, Petitioner proposes that the broadest reasonable interpretation of the
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`corresponding structure for this term in this proceeding is “a diagnostic system or
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`equivalents thereto.”6 Ex. 1002 at ¶ 58.
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`iii.
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`“control means”
`(1)
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`Independent claim 11
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`The term “control means” appears in independent claim 11, which states:
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`“control means to analyse images to be printed and to identify when a dot of ink
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`should be printed by activation of the failed device and to shift the position of the
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`dot in the printed image such that the dot is printed by activation of one of the
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`devices on either side of the failed device.” The function is “analys[ing] images to
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`be printed and [] identify[ing] when a dot of ink should be printed by activation of
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`the failed device and [] shift[ing] the position of the dot in the printed image such
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`that the dot is printed by activation of one of the devices on either side of the failed
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`device.” The only possible structure disclosed in the specification for performing
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`17
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`Attorney Docket No. 069700-5005
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`the claimed function is the “control system.” Ex. 1001 at 3:8. However, the term
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`“control system” is no more specific than the claimed “control means.”7 Ergo, 673
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`at 1363-64 (“The recitation of ‘control device’ provides no more structure than the
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`term