UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`THE CLOROX COMPANY
`Petitioner
`v.
`
`AUTO-KAPS, LLC
`Patent Owner
`Patent No. 7,490,743
`Filing Date: October 22, 2004
`Issue Date: February 17, 2009
`Title: DISPENSER ASSEMBLY
`
`
`
`
`Inter Partes Review No._____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`INTRODUCTION ...................................................................................... - 1 -
`
`FORMALITIES .......................................................................................... - 1 -
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ....................................................................... - 1 -
`
`Related Matters ................................................................................. - 2 -
`
`Fees ................................................................................................... - 2 -
`
`D. Designation of Lead Counsel ........................................................... - 2 -
`
`E.
`
`F.
`
`G.
`
`Service Information .......................................................................... - 2 -
`
`Power of Attorney ............................................................................ - 2 -
`
`Standing and Eligibility .................................................................... - 3 -
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND PRECISE RELIEF
`REQUESTED ............................................................................................. - 3 -
`
`A.
`
`B.
`
`The Challenged Claims .................................................................... - 3 -
`
`Identification of the Prior Art References ........................................ - 3 -
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`U.S. Patent No. Re 33,480 (Ex. 1003, “Guss”) ..................... - 3 -
`
`U.S. Patent No. 5,246,146 (Ex. 1004, “Bartimes”) ............... - 3 -
`
`French Patent No. 2,820,726 (Exs. 1005, 1006;
`“Campagnolo”) ...................................................................... - 3 -
`
`U.S. Patent No. 5,464,129 (Ex. 1007, “Ho”) ......................... - 4 -
`
`U.S. Patent No. 6,367,665 (Ex. 1008, “Barriac”) ................. - 4 -
`
`U.S. Patent No. 5,152,431 (Ex. 1009, “Gardner”) ................ - 4 -
`
`U.S. Patent No. 5,147,074 (Ex. 1010, “Battegazzore”) ......... - 4 -
`
`i
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`8.
`
`French Patent No. 2,828,480 (Exs. 1011, 1012;
`“Bonneyrat”) .......................................................................... - 4 -
`
`
`
`9.
`
`U.S. Patent No. 3,197,066 (Ex. 1013, “Denzler”) ................. - 4 -
`
`10. U.S. Patent No. 2,690,278 (Ex. 1014, “Bacheller”) .............. - 5 -
`
`C.
`
`Statement of the Precise Relief Requested ....................................... - 5 -
`
`1.
`
`Table Listing Grounds 1 Through 16 .................................... - 5 -
`
`IV. OVERVIEW OF THE ’743 PATENT (EX. 1001) .................................... - 7 -
`
`A.
`
`B.
`
`Priority Date ..................................................................................... - 7 -
`
`Background and Admitted Prior Art (APA) .................................... - 7 -
`
`C. Description of the Alleged Invention ............................................... - 8 -
`
`D.
`
`E.
`
`Relevant Prosecution History ......................................................... - 10 -
`
`Person of Ordinary Skill in the Art ................................................ - 12 -
`
`V.
`
`PROPOSED CLAIM CONSTRUCTION ................................................ - 12 -
`
`A.
`
`B.
`
`The Standard for Claim Construction ............................................ - 12 -
`
`Claim Terms ................................................................................... - 14 -
`
`1.
`
`2.
`
`“coupling arrangement” and “mating arrangement” ........... - 14 -
`
`“pump passageway is non-axial” ......................................... - 16 -
`
`VI. PROPOSED REJECTIONS SHOWING THAT PETITIONER HAS A
`REASONABLE LIKELIHOOD OF PREVAILING ............................... - 20 -
`
`A. Ground 1: Independent Claim 1 is Anticipated by Guss (Ex.
`1003) ............................................................................................... - 20 -
`
`B.
`
`Ground 2: Independent Claim 1 is Anticipated by Bartimes (Ex.
`1004) ............................................................................................... - 26 -
`
`ii
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`C. Ground 3: Independent Claim 1 and Dependent Claim 6 are
`Obvious over Guss (Ex. 1003) in view of Campagnolo (Exs.
`1005, 1006) ..................................................................................... - 33 -
`
`
`
`D. Ground 4: Dependent Claim 2 is Obvious over Guss (Ex. 1003)
`and Campagnolo (Exs. 1005, 1006) in view of Ho (Ex. 1007) ..... - 36 -
`
`E.
`
`F.
`
`Ground 5: Dependent Claim 2 is Obvious over Bartimes (Ex.
`1004) in view of Ho (Ex. 1007) ..................................................... - 38 -
`
`Ground 6: Dependent Claim 3 is Obvious over Guss (Ex. 1003)
`and Campagnolo (Exs. 1005, 1006) in view of Ho (Ex. 1007)
`and further in view of Barriac (Ex. 1008) ..................................... - 39 -
`
`G. Ground 7: Dependent Claim 3 is Obvious over Bartimes (Ex.
`1004) in view of Ho (Ex. 1007) and further in view of Barriac
`(Ex. 1008) ....................................................................................... - 40 -
`
`H. Ground 8: Dependent Claims 4 and 5 are Obvious over Guss
`(Ex. 1003) and Campagnolo (Exs. 1005, 1006) in view of Ho
`(Ex. 1007) and further in view of Gardner (Ex. 1009) .................. - 41 -
`
`I.
`
`J.
`
`Ground 9: Dependent Claims 4 and 5 are Obvious over
`Bartimes (Ex. 1004) in view of Gardner (Ex. 1009) ..................... - 43 -
`
`Ground 10: Dependent Claim 6 is Obvious over Bartimes (Ex.
`1004) in view of Campagnolo (Exs. 1005, 1006) .......................... - 44 -
`
`K. Ground 11: Dependent Claims 7 and 8 are Obvious over
`Bartimes (Ex. 1004) in view of Battegazzore (Ex. 1010) .............. - 44 -
`
`L.
`
`Ground 12: Dependent Claims 7 and 8 are Obvious over Guss
`(Ex. 1003) in view of Campagnolo (Exs. 1005, 1006) and
`further in view of Battegazzore (Ex. 1010) .................................... - 46 -
`
`M. Ground 13: Dependent Claim 9 is Obvious over Guss (Ex.
`1003) in view Campagnolo (Exs. 1005 and 1006) and further in
`view of Bonneyrat (Exs. 1011, 1012) ............................................ - 47 -
`
`iii
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`N. Ground 14: Dependent Claim 9 is Obvious over Bartimes (Ex.
`1004) in view Campagnolo (Exs. 1005 and 1006) and further in
`view of Bonneyrat (Exs. 1011, 1012) ............................................ - 48 -
`
`
`
`O. Ground 15: Dependent Claim 10 is Obvious over Guss (Ex.
`1003) in view of Campagnolo (Exs. 1005, 1006) and further in
`view of Bonneyrat (Exs. 1011, 1012) and Denzler (Ex. 1013) ...... - 49 -
`
`P.
`
`16: Dependent Claim 10 is Obvious over Bartimes (Ex. 1004)
`in view of Campagnolo (Exs. 1005, 1006) and further in view
`of Bonneyrat (Exs. 1011, 1012) and Denzler (Ex. 1013) .............. - 52 -
`
`VII. CONCLUSION ......................................................................................... - 52 -
`
`
`
`iv
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`EXHIBIT LIST
`
`Exhibit No. Description
`
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`
`
`U.S. Patent No. 7,490,743 to Herzog (“the ’743 patent”)
`
`Selected portions of the Prosecution History of the ’743 patent
`
`U.S. Patent No. RE 33,480 (“Guss”)
`
`U.S. Patent No. 5,246,146 (“Bartimes”)
`
`French Patent No. 2,820,726 (“Campagnolo”)
`
`Certified English translation of Campagnolo
`
`U.S. Patent No. 5,464,129 (“Ho”)
`
`U.S. Patent No. 6,367,665 (“Barriac”)
`
`U.S. Patent No. 5,152,431 (“Gardner”)
`
`U.S. Patent No. 5,147,074 (“Battegazzore”)
`
`French Patent No. 2,828,480 (“Bonneyrat”)
`
`Certified English translation of Bonneyrat
`
`U.S. Patent No. 3,197,066 (“Denzler”)
`
`U.S. Patent No. 2,690,278 (“Bacheller”)
`
`Complaint in Auto-Kaps LLC v. Clorox Company, 2:15-cv-
`01737-BMC, U.S. District Court, Eastern District of New York
`(Central Islip), filed April 1, 2015
`
`Auto-Kaps LLC Preliminary Infringement Contentions in Auto-
`Kaps LLC v. Clorox Company, filed September 25, 2015.
`
`Declaration of Kerry Azelton (“Azelton Declaration”)
`
`v
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`I.
`
`INTRODUCTION
`
`
`
`U.S. Patent No. 7,490,743 (Ex. 1001, the “’743 patent”) discloses a
`
`container-mounted pump dispenser for liquids such as “liquid soaps” and
`
`“household cleaners, hair spray and perfumes, etc.” (Id. at 1:11-14.) The patent
`
`shows a cap that includes a manually operated pump. The pump has a pickup tube
`
`(“cap passageway”) that engages a dip tube (“passageway”) mounted on the
`
`interior sidewall of the container. All of this is admitted to be prior art. The
`
`purported innovation is configuring the components such that when the cap is
`
`mated to the container, the pickup tube to the pump will be aligned with the dip
`
`tube in the container.
`
`Petitioner The Clorox Company (“Clorox” or “Petitioner”) respectfully
`
`petitions the Office to initiate inter partes review of claims 1 through 10 of the
`
`’743 patent under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`(“Petition”).
`
`II.
`
`FORMALITIES
`
`A. Real Party-in-Interest
`
`Petitioner certifies The Clorox Company is the real party-in-interest.
`
`Petitioner also certifies no other party has exercised control or could exercise
`
`control over The Clorox Company’s participation in this proceeding, filing of this
`
`Petition, or conduct of any ensuing trial. 37 C.F.R. § 42.8(b)(1).
`
`- 1 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`B. Related Matters
`
`
`
`Patent Owner has asserted the ’743 patent against Petitioner in Auto-Kaps
`
`LLC v. Clorox Company, 2:15-cv-01737-BMC, U.S. District Court, Eastern
`
`District of New York, filed April 1, 2015.
`
`C.
`
`Fees
`
`A payment of $23,000 accompanies this Petition, which seeks review of
`
`fewer than 20 claims. See 37 C.F.R. § 42.15. This Petition meets the fee
`
`requirements under 35 U.S.C. § 312(a)(1).
`
`D. Designation of Lead Counsel
`
`Lead counsel for Petitioner is Paul C. Haughey (Reg. No. 31,836) of
`
`Kilpatrick Townsend & Stockton LLP. Back-up counsel is A. James Isbester (Reg.
`
`No. 36,315) of Kilpatrick Townsend & Stockton LLP.
`
`Service Information
`
`E.
`Petitioner is serving a copy of this Petition on the address of the agent of
`
`record in the Patent Office for the ’743 patent. See attached Certificate of Service.
`
`Petitioner may be served at the offices of its counsel, Kilpatrick Townsend &
`
`Stockton LLP.
`
`F.
`
`Power of Attorney
`
`Petitioner is filing powers of attorney with the designation of counsel under
`
`37 C.F.R. § 42.10(b).
`
`- 2 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`Standing and Eligibility
`
`G.
`Petitioner has filed this Petition within one year of Patent Owner’s first
`
`
`
`serving Petitioner with a complaint for patent infringement. Petitioner does not
`
`own the ’743 patent and is not otherwise barred or estopped from requesting IPR.
`
`Therefore, Petitioner is eligible to request inter partes review of the ’743 patent.
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND PRECISE RELIEF
`REQUESTED
`A. The Challenged Claims
`Petitioner challenges claims 1 through 10 (the “challenged claims”) of the
`
`’743 patent.
`
`Identification of the Prior Art References
`
`B.
`1.
`U.S. Patent No. Re 33,480 (Ex. 1003, “Guss”)
`Guss reissued on December 11, 1990 and is prior art under 35 U.S.C. §
`
`102(b). Guss discloses a pump and container with an integral dip tube.
`
`2.
`U.S. Patent No. 5,246,146 (Ex. 1004, “Bartimes”)
`Bartimes issued on September 21, 1993 and is prior art under 35 U.S.C. §
`
`102(b). Bartimes teaches a dispenser with an integral dip tube.
`
`3.
`
`French Patent No. 2,820,726 (Exs. 1005, 1006;
`“Campagnolo”)
`Campagnolo published August 16, 2002 and is prior art under 35 U.S.C. §
`
`102(b). Campagnolo discloses a cosmetic fluid dispenser with an integral dip tube.
`
`- 3 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`U.S. Patent No. 5,464,129 (Ex. 1007, “Ho”)
`
`4.
`Ho issued on Nov. 7, 1995 and is prior art under 35 U.S.C. § 102(b). Ho
`
`
`
`discloses a pump spray bottle with a funnel end and press fit between a container
`
`tube attached to a sidewall and a pump cap pick-up tube.
`
`U.S. Patent No. 6,367,665 (Ex. 1008, “Barriac”)
`
`5.
`Barriac issued on April 9, 2002 and is prior art under 35 U.S.C. § 102(b).
`
`Barriac discloses a coupling with flexible and rigid tubes.
`
`6.
`U.S. Patent No. 5,152,431 (Ex. 1009, “Gardner”)
`Gardner issued on October 6, 1992 and is prior art under 35 U.S.C. §
`
`102(b). Gardner discloses removable dip tube connections with O-rings.
`
`7.
`U.S. Patent No. 5,147,074 (Ex. 1010, “Battegazzore”)
`Battegazzore issued on September 15, 1992 and is prior art under 35 U.S.C.
`
`§ 102(b). Battegazzore teaches threaded and snap-on dispenser couplings.
`
`8.
`French Patent No. 2,828,480 (Exs. 1011, 1012; “Bonneyrat”)
`Bonneyrat published on February 14, 2003 and is prior art under 35 U.S.C. §
`
`102(b). Bonneyrat discloses a pump dispenser with a coaxial container.
`
`9.
`U.S. Patent No. 3,197,066 (Ex. 1013, “Denzler”)
`Denzler issued on September 7, 1962 and is prior art under 35 U.S.C. §
`
`102(b). Denzler discloses a multi-compartment dispenser.
`
`- 4 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`10. U.S. Patent No. 2,690,278 (Ex. 1014, “Bacheller”)
`Bacheller issued on Sept. 28, 1954 and is prior art under 35 U.S.C. § 102(b).
`
`
`
`Bacheller discloses a pump for small containers with a pick-up tube engaging a
`
`larger diameter tube in the pump.
`
`Statement of the Precise Relief Requested
`
`C.
`Petitioner requests cancellation of claims 1 through 10 of the ’743 patent.
`
`Claim 1 is the only independent claim of this group. The request rests primarily
`
`upon the Guss and Bartimes references. Grounds 1 and 2 set forth how these
`
`references each anticipate claim 1. Ground 3 considers an alternative construction
`
`of the term “non-circular,” found in claim 1, and demonstrates that even under this
`
`construction, claim 1 is obvious over Guss in combination of Campagnolo. All the
`
`other grounds address the various minor features of the dependent claims using
`
`Guss and Bartimes in combinations with the remaining references.
`
`1.
`
`Table Listing Grounds 1 Through 16
`
`Ground
`
`’743 Claims
`
`Basis of Challenge
`
`Ground 1 Claim 1
`
`Anticipated by Guss
`
`Ground 2 Claim 1
`
`Anticipated by Bartimes
`
`Ground 3 Claims 1, 6
`
`Depending upon claim construction, obvious over
`Guss in view of Campagnolo
`
`- 5 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`Ground
`
`’743 Claims
`
`Basis of Challenge
`
`
`
`Ground 4 Claim 2
`
`Obvious over Guss and Campagnolo in view of
`Ho
`
`Ground 5 Claim 2
`
`Obvious over Bartimes in view of Ho
`
`Ground 6 Claim 3
`
`Ground 7 Claim 3
`
`Obvious over Guss and Campagnolo in view of
`Ho and further in view of Barriac
`
`Obvious over Bartimes in view of Ho and further
`in view of Barriac
`
`Ground 8 Claims 4, 5
`
`Obvious over Guss and Campagnolo in view of
`Ho and further in view of Gardner
`
`Ground 9 Claims 4, 5
`
`Obvious over Bartimes in view of Ho and further
`in view of of Gardner
`
`Ground 10 Claim 6
`
`Obvious over Bartimes in view of Campagnolo
`
`Ground 11 Claims 7, 8
`
`Obvious over Bartimes in view of Battegazzore
`
`Ground 12 Claims 7, 8
`
`Obvious over Guss in view of Campagnolo and
`further in view of Battegazzore
`
`Ground 13 Claim 9
`
`Ground 14 Claim 9
`
`Obvious over Guss in view of Campagnolo and
`further in view of Bonneyrat
`
`Obvious over Bartimes in view of Campagnolo
`and further in view of Bonneyrat
`
`Ground 15 Claim 10
`
`Obvious over Guss in view of Campagnolo and
`
`- 6 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`Ground
`
`’743 Claims
`
`Basis of Challenge
`
`
`
`further in view of Bonneyrat and Denzler
`
`Ground 16 Claim 10
`
`Obvious over Bartimes in view of Campagnolo
`and further in view of Bonneyrat and Denzler
`
`IV. OVERVIEW OF THE ’743 PATENT (EX. 1001)
`A.
`Priority Date
`The application for the ’743 patent was filed on October 22, 2004. As there
`
`is no claim to any earlier priority application, this is the priority date of the patent.
`
`Background and Admitted Prior Art (APA)
`
`B.
`Applicant summarized the prior art in the Background of the Invention as
`
`follows:
`
`Container and pump assemblies for products such as liquid soaps which are
`pumped, as well as products which are sprayed, such as household cleaners,
`hair spray and perfumes, etc. are known. Such conventional assemblies
`include a container having a neck and a pump connected to the neck. The
`pump has an elongated pick-up tube. … In another type of assembly, as
`taught by U.S. Pat. No. 5,246,146 [Bartimes], the pick-up tube is molded as
`an integral part of the container. The problem with this type of construction
`is that it allows the pump cap to only be mounted in a single orientation
`relative to the container.”
`
`(Ex. 1001, ’743 patent at 1:11-31.)
`
`- 7 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`C. Description of the Alleged Invention
`
`The ’743 Patent describes four embodiments:
`
`
`
`1. Container with dual dip
`
`tubes. In this embodiment, shown in
`
`Figure 1 of the patent (annotations
`
`added), the container has container
`
`passageways 130a, 130b opposite each
`
`other on the inside of the container.
`
`The cap can be mated to the container
`
`in two positions such that the pump
`
`passageway 150 mates with either
`
`container passageway 130a or 130b.
`
`Id. at 2:63-3:14, 3:42-51, 3:67-4:3.
`
`2. Container within a container,
`
`forming an annular space. In the embodiment shown in Figure 2, a smaller
`
`container is placed coaxially inside an outer container to form an annular space
`
`between the two. The inner container has no bottom. The annular space serves as
`
`a passageway such that liquid inside the container can be drawn up to the top of the
`
`container. This configuration allows an assembler to attach the cap to the
`
`container in any orientation. (Id at 3:15-36.)
`
`- 8 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`
`3. Oval container mouth and cap. In this embodiment, the cap is oval, such
`
`as shown in Figure 3A, and mates to a container with a matching oval mouth. The
`
`oval mouth and cap allow an assembler to mate the cap to the container in only two
`
`rotational orientations. (Id. at 4:24-4:50.)
`
`“As described above, in the exemplary embodiment illustrated in FIG. 1, the
`oval shape of the coupling and mating arrangements 160, 165 permits pump
`cap 105 to be detachably coupled to container 110 in only one of two
`positions, …”
`
`(Id. at 4:39-42 (emphasis added).) A modified embodiment with a projection
`
`allows only one rotational orientation:
`
`“For example, coupling arrangement 160 may include a projection (not
`shown) structured to communicate with a corresponding groove (not shown)
`of mating arrangement 165 to ensure that oval-shaped coupling arrangement
`160 is coupleable to mating arrangement 165 in only one position.”
`
`(Id. at 4:57-62 (emphasis added).)
`
`4. Annular trough in cap that mates with top of container dip tube.
`
`Figures 4 through 6B describe a circular or oval trough (405 in Fig. 5) extending
`
`around the perimeter of the container mouth and connecting to the dip tube. The
`
`trough-related claims were a non-elected species and never pursued. (Ex. 1002,
`
`2006-04-17 Non-Final Rejection, pp. 2, 3.)
`
`- 9 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`Independent claim 11 expressly specifies the dual dip tube embodiment.
`
`
`
`Independent claim 16 expressly specifies the oval shape embodiment. Petitioner
`
`does not challenge either of these claims or the claims depending therefrom.
`
`Claim 1, however, is far broader. Regardless of the claim construction standard
`
`applied (discuss below), claim 1 covers the prior art, including the cited Bartimes
`
`reference, and should be found invalid.
`
`D. Relevant Prosecution History
`In the first office action, the Examiner rejected claims 1-4, 6 and 8-10 as
`
`anticipated by Ho and rejected claim 5 as obvious in light of Ho. (Ex. 1002, 2006-
`
`04-17 Non-Final Rejection, pp. 2, 5-
`
`7.)
`
`As shown in Figure 1 of Ho
`
`(right), Ho teaches a dispenser with a
`
`dip tube mounted to the inner surface
`
`of the container wall and a cap that
`
`removably couples to the container.
`
`When the cap is in place, a pick-up
`
`tube 26 extending down from the cap
`
`fits into a funnel 32 in the top of the
`
`container dip tube 34 to form a fluid connection. (Ex. 1007, Ho at 2:16-24)
`
`- 10 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`After the Examiner maintained the rejections (Ex. 1002, 2006-10-05 Final
`
`
`
`Rejection, pp. 23-27), Applicant conducted a pair of interviews with the Examiner
`
`and later amended claim 1 in two significant ways.
`
`First, Applicant added the limitation “wherein the coupling arrangement and
`
`the mating arrangement are non-circular in shape such that the coupling
`
`arrangement and the mating arrangement are coupled.” (Id. at 2007-04-05
`
`Applicant Response, p. 33.) Second, Applicant took the Examiner’s suggestion
`
`and added the limitation “wherein the pump passageway is non-axial with respect
`
`to the pump mechanism.” (Id.)
`
`The Examiner later reaffirmed the rejection to Ho, despite the addition of the
`
`non-axial language. (Id. at 2007-05-02 Non-Final Rejection, pp. 42-45.) In
`
`response, Applicant pointed out it was the Examiner who suggested the non-axial
`
`language, and described the Ho passageway as “coaxial with the pump
`
`mechanism.” (Id. at 2007-11-02 Applicant Response, p. 55.)
`
`In the next Office Action, the Examiner agreed Ho “lacks a pump cap
`
`having a non-axial pump passageway.” (Id. at 2008-02-08 Non-Final Rejection, p.
`
`60.) The Examiner instead rejected claim 1 as obvious over Ho in view of
`
`Gardner, which “teaches a pump dispenser having a pump cap ... with a non-axial
`
`pump passageway.” (Id.) The Examiner also noted that non-axial pump passages
`
`were not unique to Gardner: “Graubart is another type of non-axial pump cap
`
`- 11 -
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`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`passageway.” (Id.) The applicant argued successfully that there was no
`
`
`
`motivation to combine these references and the Examiner allowed the claims. (Id.
`
`at p. 62) The Examiner then allowed the claims, but did not provide a Statement of
`
`Reasons for Allowance.
`
`E.
`
`Person of Ordinary Skill in the Art
`
`On the Priority Date (October 22, 2004), one of ordinary skill in the art had
`
`an undergraduate degree in Mechanical Engineering or its equivalent, or equivalent
`
`work experience, including familiarity with manually operated pumps for liquid
`
`containers. (Azelton Declaration, ¶3.)
`
`V.
`
`PROPOSED CLAIM CONSTRUCTION
`A. The Standard for Claim Construction
`Under current law, a claim under inter partes review receives the “broadest
`
`reasonable construction in light of the specification.” 37 C.F.R. § 42.100(b). This
`
`standard contrasts with the approach applied by a district court, as set forth in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir., 2005). Under Phillips, courts are
`
`to apply the “ordinary and customary” meaning of claim language in light of the
`
`specification, file history, and various other types of intrinsic and extrinsic
`
`evidence. While one would not expect these two approaches to result in directly
`
`contradictory understandings of claim language, it is commonly understood that
`
`- 12 -
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`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`the Phillips approach may result in a narrower understanding of some terms of a
`
`
`
`claim.
`
`The applicability of the broadest reasonable interpretation standard in inter
`
`partes review is currently before the Supreme Court. Cuzzo Speed Technologies v.
`
`Lee, Supreme Court Case No. 15-446 (order granting petition for certiorari,
`
`January 15, 2016). It is likely that the question will be decided while this IPR is
`
`pending. Petitioner is concerned that if it rests this petition upon the current BRI
`
`standard, and that standard is overturned, much time and effort will have been
`
`wasted. At the same time, Petitioner believes that the prior art described herein
`
`invalidates the challenged claims regardless of whether the claims are construed
`
`under the BRI standard or the narrower Phillips standard. Accordingly, Petitioner
`
`here provides its views as to the correct interpretation of the claims under Phillips,
`
`understanding that if the Supreme Court confirms the applicability of the BRI
`
`standard, the only possible effect will be to make the claims even broader and
`
`therefore, even more susceptible to exactly the same invalidity arguments set
`
`forther herein.
`
`Claim terms not listed below are presumed to take on their plain and
`
`ordinary meaning as understood by one of ordinary skill.
`
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`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`B. Claim Terms
`1.
`“coupling arrangement” and “mating arrangement”
`Claim 1 of the ’743 patent recites:
`
`
`
`a container having … a mating arrangement, … and:
`a pump cap having … a coupling arrangement arranged on the pump cap
`body and configured to detachably couple to the mating arrangement of the
`container ….”
`The ’743 patent teaches that the “coupling and mating arrangements 160,
`
`165 may include any mechanism, device, construction, and/or shape that permits
`
`pump cap 105 to be detachably coupled to container 110.” (’743 patent, at 5:7-10.)
`
`Using the language “and/or” clarifies that the terms should cover any of the listed
`
`things, such as the shape alone or a mechanism alone. Accordingly, under the
`
`broadest reasonable construction, the “coupling arrangement” and “mating
`
`arrangement” might include “any mechanism, device, construction, and/or shape.”
`
`The claim, however, includes a further restriction, stating: “wherein the
`
`coupling arrangement and the mating arrangement are non-circular in shape such
`
`that the coupling arrangement and the mating arrangement are coupled only if the
`
`container passageway is aligned with the pump cap passageway, ….” This
`
`limitation was not in the claim as originally submitted. Rather, it was added by
`
`amendment to distinguish the claim over the Ho reference. (Ex. 1002, 2007-04-05
`
`Applicant Response, p. 33.) It does so in two ways.
`
`- 14 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`First, in Ho, the cap is round and screws onto the threaded, round mouth of
`
`
`
`the container. The term “non-circular” therefore is intended to mean that the
`
`coupling shape or mechanism is something other than the round cap and container
`
`Excerpted Fig. 4 submitted with
`Patent Owner’s claim chart
`
`mouth of Ho.
`
`Patent Owner’s infringement
`
`position in the current litigation, as set
`
`forth in Patent Owner’s claim chart
`
`(Ex. 1016) is inconsistent with this
`
`interpretation. Both the bottle mouth
`
`and the cap of Petitioner’s product are
`
`round. Patent Owner’s claim chart, however, identifies the bayonet tab 20 on the
`
`cap of the product as the “non-circular coupling arrangement” of the cap and a
`
`corresponding “protrusion” labeled 1d on the bottle as the “non-circular mating
`
`arrangement,” despite the fact that, as can be seen in the photo above, these
`
`structures are at least curved. (Id. at Claim Chart, Fig. 2, Fig. 3.)
`
`Second, the cap of Ho can screw on even if there is no alignment of the pick-
`
`up tube with the container dip tube. The added claim language, in contrast,
`
`requires that the cap and the container mate only if the passageways form a fluid
`
`connection from the container to the pump: “the coupling arrangement and the
`
`- 15 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`mating arrangement are coupled only if the container passageway is aligned with
`
`
`
`the pump cap passageway….”
`
`Even under the BRI standard, the “non-circular” and “passageway is
`
`aligned” limitations require that the coupling arrangement on the cap and the
`
`mating arrangement on the container be read more narrowly than merely any
`
`mechanism, device, construction or shape. Phillips similarly mandates a narrower
`
`construction. Petitioner therefore proposes that the term “coupling arrangement”
`
`means: any non-circular mechanism, device, construction, and/or shape on a pump
`
`cap body that permits the pump cap to detachably couple to the container only if a
`
`container passageway is aligned with a pump passageway.
`
`Petitioner further proposes that under the broadest reasonable interpretation
`
`standard, the term “mating arrangement” means: any non-circular mechanism,
`
`device, construction, and/or shape on a container that permits the pump cap to
`
`detachably couple to the container only if a container passageway is aligned with
`
`a pump passageway.
`
`“pump passageway is non-axial”
`
`2.
`Claim 1 recites “the pump passageway is non-axial relative to the pump
`
`mechanism.” As discussed above, the Examiner suggested that Applicant add the
`
`non-axial claim language to distinguish the pending claims over the prior art Ho
`
`patent. (Ex. 1002, 04-05-2007 Applicant Response, pp. 38-39.)
`
`- 16 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`
`The first step in understanding this phrase is identifying an axis to the “pump
`
`mechanism.” Neither the specification nor the file history specifically discusses
`
`this axis. Rather, the specification merely
`
`describes the pump mechanism itself as
`
`“conventional” and shows it as a barrel-
`
`shaped structure 140 in the cap. (Ex.
`
`1001, ’743 patent at 3:38.)
`
`The claim language compares the axis of the pump mechanism to the axis of
`
`the vertically descending pump passageway. The axis of the pump passageway is
`
`therefore vertical. The pump passageway will therefore always be non-axial with
`
`respect to any non-vertical axis of the pump. The claim limitation has no meaning
`
`unless it is referring to a vertical axis of the pump. In the absence of any other
`
`guidance, therefore, Petitioner suggests that the axis of the pump mechanism must
`
`be the vertical center line of that component.
`
`The next step in understanding this term is parsing the modifier “non-axial.”
`
`Here, however, the file history does provide guidance. The Examiner expressly
`
`stated that Gardner and Graubart, like the ’743 patent, disclose a pump
`
`passageway that is “non-axial” to the pump mechanism while Ho does not.
`
`Applicant did not dispute those assessments. Below are exemplary drawings from
`
`the ’743 patent and these three references.
`
`- 17 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`’743 patent (non-axial)
`
`Gardner (non-axial)
`
`
`
`
`
`Ho (coaxial)
`
`Graubart (non-axial)
`
`
`
`
`
`
`
`All four designs show a pump passageway that meets the pump on what
`
`would appear to be the vertical centerline of the pump. But in the three “non-
`
`axial” designs (the ’743 patent, Gardner, and Graubert), the pump passageway
`
`dog legs to the side immediately below the pump, such that at the point where the
`
`cap meets the container, the pump passageways are noticeably off center. In Ho,
`
`on the other hand, the pump passageway descends straight down from the pump
`
`and angles off to meet the container dip tube only once it is within the container,
`
`below the level of the cap.
`
`- 18 -
`
`

`
`PETITION FOR INTER PARTES REVIEW
`U.S. PATENT NO. 7,490,743
`
`
`The common feature among the two prior art “non-axial” pump
`
`
`
`passageways (Gardner and Graubert) and the supporting portion of the ’743 patent
`
`specification is this radial offset of the pump passageway from the vertical
`
`centerline of the pump at the plane where the cap meets the container. This
`
`appears, therefore, to be the best interpretation of the term.
`
`Patent Owner’s infringement contention is consistent
`
`with this interpretation. Patent Owner contends “A pump
`
`cap passageway 12 is coupled to the pump 10 and is non-
`
`axial thereto.” (E