UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE CLOROX COMPANY
`Petitioner,
`
`v.
`
`AUTO-KAPS, LLC
`Patent Owner
`
`Case IPR2016-00821
`U.S. Patent No. 7,490,743
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`UNDER 37 C.F.R. §42.107 TO THE CLOROX COMPANY’S
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,490,743
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the
`USPTO on this 7th day of July, 2016.
`
`By:
`
`/Jeannie Ngai/
`Jeannie Ngai
`
`{01934432.1}
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE CLOROX COMPANY
`Petitioner,
`
`v.
`
`AUTO-KAPS, LLC
`Patent Owner
`
`Case IPR2016-00821
`U.S. Patent No. 7,490,743
`
`PRELIMINARY RESPONSE BY PATENT OWNER
`UNDER 37 C.F.R. §42.107 TO THE CLOROX COMPANY’S
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,490,743
`
`Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the
`USPTO on this 7th day of July, 2016.
`
`By:
`
`/Jeannie Ngai/
`Jeannie Ngai
`
`{01934432.1}
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`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PRELIMINARY STATEMENT .....................................................................1
`
`INTRODUCTION ...........................................................................................1
`
`III.
`
`THE ‘743 PATENT.........................................................................................3
`
`IV. CLAIM CONSTRUCTION ............................................................................5
`
`A.
`
`B.
`
`“a mating arrangement” and “a coupling arrangement” .......................8
`
`“pump passageway is non-axial” ........................................................10
`
`V.
`
`TO ESTABLISH A REASONABLE
`PETITION FAILS
`THE
`LIKELIHOOD THAT PETITIONER WILL PREVAIL..............................11
`
`A.
`
`The Prior Art Fails To Anticipate Claim 1..........................................12
`
`1.
`
`2.
`
`The Guss Reference ..................................................................12
`
`The Bartimes Reference............................................................15
`
`B.
`
`C.
`
`Claim 1 Is Not Obvious Over Guss and Campagnolo ........................17
`
`Dependent Claims 2-10.......................................................................24
`
`1.
`
`2.
`
`any
`The Dependent Claims Are Not Obvious Over
`Combination of Guss and Campagnolo....................................25
`
`The Dependent Claims Are Not Obvious Over Bartimes ........32
`
`VI. CONCLUSION..............................................................................................38
`
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`TABLE OF AUTHORITIES
`
`Cases
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .......................................................................5
`Cuozzo Speed Techs., LLC v. Lee,
`No. 15–446, slip op. (U.S. June 20, 2016) ......................................................5
`Graham v. John Deere Co.,
`383 U.S. 1 (1966).................................................................................... 17, 18
`InterDigital Commc’ns, LLC v. Int’l Trade Comm’n,
`690 F.3d 1318 (Fed. Cir. 2012) .......................................................................5
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......................................................................................18
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................5
`Statutes
`35 U.S.C. §314(a) ....................................................................................................11
`Other Authorities
`M.P.E.P. 2111.01 II....................................................................................................5
`Rules
`37 C.F.R. §42.100(b) .................................................................................................5
`37 C.F.R. §42.104(b)(4).............................................................................................2
`37 C.F.R. §42.107(a)..................................................................................................1
`37 C.F.R. §42.107(b) .................................................................................................1
`37 C.F.R. §42.65(a)..................................................................................................24
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`Exhibit
`
`2001
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`TABLE OF EXHIBITS
`
`Description
`Declaration of Dr. James Rice
`Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11
`(P.T.A.B. July 23, 2014)
`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243,
`Paper 6 (P.T.A.B. June 18, 2014)
`Zimmer Holdings, Inc. and Zimmer, Inc. v. Bonutti Skeletal
`Innovations LLC, IPR2014-01078, Paper 17 (P.T.A.B. Oct.
`30, 2014)
`Beckton, Dickinson and Company v. One Stockduq Holdings,
`LLC, IPR2013-00235, Paper No. 10 (P.T.A.B. Oct. 1, 2013)
`Volkswagen Group of America, Inc. v. Velocity Patent LLC,
`IPR2015-00276, Paper No. 8 (P.T.A.B. June 1, 2015)
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`I.
`
`PRELIMINARY STATEMENT
`
`The following constitutes the Preliminary Response under 37 C.F.R.
`
`§42.107(a) of Patent Owner, Auto-Kaps, LLC. (“Patent Owner”), to the
`
`Petition (Paper No. 1) filed by The Clorox Company (“Petitioner”) for Inter
`
`Partes Review of U.S. Patent No. 7,490,743 (“the ‘743 patent”). The
`
`“Notice of Filing Date Accorded to Petition and Time for Filing Patent
`
`Owner Preliminary Response” (Paper No. 3) from the Patent Trial and
`
`Appeal Board (“Board”) bears a mailing date of April 7, 2016. Thus, this
`
`Preliminary Response is being timely submitted pursuant
`
`to 37 C.F.R.
`
`§42.107(b).
`
`II.
`
`INTRODUCTION
`
`Petitioner alleges that claims 1-10 of the ‘743 patent are invalid in
`
`view of
`
`two primary references combined with various
`
`secondary
`
`references. The first primary reference relied on by the Petitioner is U.S.
`
`Patent No. RE 33,480 to Guss (“Guss”)(Ex. 1003). The second primary
`
`reference relied on by the Petitioner is U.S. Patent No. 5,246,146 to
`
`Bartimes (“Bartimes”)(Ex. 1004). Patent Owner notes that the Bartimes
`
`reference was considered by the Examiner during prosecution of the ‘743
`
`patent and that claims 1-10 were issued over this reference. Petitioner relies
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`on several secondary references to allegedly disclose features of the
`
`dependent claims.
`
`Several of
`
`these secondary references were also
`
`considered by the Examiner during prosecution of the ‘743 patent prior to
`
`allowance of claims 1-10.
`
`Petitioner alleges 16 separate grounds of rejection; however, only
`
`Grounds 1 and 2 are based on alleged anticipation of a claim of the ‘743
`
`patent. See Petition, pp. 5-6. The remaining 14 grounds of rejection are
`
`based on “alternative” claim constructions or combinations of additional
`
`references that allegedly render the dependent claims obvious.
`
`Id. The
`
`Board should deny institution of inter partes review since all of the grounds
`
`alleged by Petitioner are flawed. Neither of the primary references
`
`identified by the Petitioner discloses all of the features of any of the claims
`
`at issue such that the Petition fails to meet the requirements of 37 C.F.R.
`
`§42.104(b)(4). Further, with respect to the grounds of rejection based on
`
`obviousness, not only do the proposed combinations of references rely on
`
`the flawed primary references, but Petitioner’s arguments fail to address the
`
`Graham factors and fail to identify any combination of references that
`
`discloses, shows or suggests all of the features of the claims at issue.
`
`In
`
`view of these numerous problems, Petitioner has not established a likelihood
`
`that it will prevail with respect to any of claims 1-10 of the ‘743 patent.
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`III. THE ‘743 PATENT
`
`The ‘743 patent issued on February 17, 2009 based on U.S. Patent
`
`Application Serial No. 10/971,516, which was filed on October 23, 2004.
`
`The ‘743 patent includes claims 1-19. Only claims 1-10 are at issue in the
`
`Petition. See Petition, pp. 1 and 5, for example.
`
`The ’743 patent relates to an improved dispensing assembly that is
`
`simple to assemble compared with prior assemblies. See Exhibit 1001, 1:18-
`
`26. In accordance with one embodiment, the dispensing assembly includes
`
`“a container” with “a mating arrangement,” and “at least one container
`
`passageway mounted” on a sidewall of the container and “extending from
`
`the open top of the container to a position proximate to the bottom of the
`
`container,” and “a pump cap having a cap body, a pump mechanism
`
`arranged within the cap body, a pump cap passageway coupled to the pump
`
`mechanism, wherein the pump passageway is non-axial relative to the pump
`
`mechanism, and a coupling arrangement arranged on the pump cap body and
`
`configured to detachably couple to the mating arrangement of
`
`the
`
`container… such that the container passageway sealingly engages the pump
`
`cap passageway in a fluid connection when the pump cap is mounted to the
`
`container; wherein a fluid arranged within the container flows through the
`
`container passageway and the pump cap passageway when the pump
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`mechanism of the pump cap is activated.” See Exhibit 1001, 6:7-32 (claim
`
`1). FIG. 1 of the ‘743 patent is reproduced below and illustrates such an
`
`exemplary embodiment of the dispensing assembly of the ‘743 patent.
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`IV. CLAIM CONSTRUCTION
`
`Pursuant to 37 C.F.R. §42.100(b), the claims of an unexpired patent
`
`subject to inter partes review receives the “broadest reasonable construction
`
`in light of the specification of the patent in which [they] appear.” 37 C.F.R.
`
`§42.100(b). The Supreme Court recently confirmed that this standard was
`
`appropriate in Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. at 12–
`
`20 (U.S. June 20, 2016).
`
`Under
`
`the
`
`"broadest
`
`reasonable
`
`interpretation"
`
`standard,
`
`the
`
`specification is used as a guide to understanding the claim term; however, it
`
`is improper to import limitations from the specification into the claim. See
`
`M.P.E.P. 2111.01 II. Regardless of the standard used, “[t]he plain meaning
`
`of claim language ordinarily controls unless the patentee acts as his own
`
`lexicographer and provides a special definition for a particular claim terms
`
`or the patentee disavows the ordinary scope of a claim term either in the
`
`specification or during prosecution.” See InterDigital Commc’ns, LLC v.
`
`Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012) (citing Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)).
`
`Indeed, there is a
`
`"'heavy presumption' that a claim term carries its ordinary and customary
`
`meaning." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002).
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`Petitioner admits that despite the fact that it was aware that the
`
`broadest reasonable interpretation standard would be applied by the Board, it
`
`chose not to interpret the claims under this standard. See Petition, p. 13.
`
`Indeed, Petitioner explicitly states that its claim constructions in the Petition
`
`are based on the Philips standard that is applied in district court.
`
`Id. The
`
`Philips standard, however, is not the correct standard to be applied in the
`
`present proceeding. As noted above,
`
`the Supreme Court has recently
`
`confirmed that the Board is correct in applying the broadest reasonable
`
`interpretation such that the Philips standard applied by the Petitioner is
`
`incorrect.
`
`See Cuozzo Speed Techs, No. 15–446, slip op. at 12–20.
`
`Confusingly, while admitting that its claim construction is based on the
`
`Philips standard, Petitioner nonetheless refers to the broadest reasonable
`
`interpretation when discussing its constructions.
`
`See Petition, p. 16.
`
`Further, in its discussion of claim construction, Petitioner refers to Patent
`
`Owner’s Preliminary Infringement Contentions from the currently pending
`
`litigation between the parties in the U.S. District Court for the Eastern
`
`District of New York. These contentions have no bearing on claim
`
`construction in the present matter as these contentions do not include any
`
`specific claim construction, and even if they did, the Philips standard of
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`construction would apply to them.
`
`In any event, in view of Petitioner’s
`
`admission that its claim constructions are based on the incorrect standard,
`
`the Board should disregard these constructions.
`
`While Petitioner alleges that the claims at issue are unpatentable
`
`regardless of which standard is used, Petitioner admits to using the wrong
`
`standard in arriving at its proposed constructions.
`
`See Petition, p. 13.
`
`Petitioner also reasons that the claims, if construed under the broadest
`
`reasonable interpretation standard, would simply be even broader in scope
`
`than under its proposed constructions in the Petition, such that the claims
`
`would be invalid in any event.
`
`Id. The Petitioner, however, offers no
`
`guidance as to how the claims at issue would be broader and does not
`
`propose any sort of alternative construction under the proper broadest
`
`reasonable interpretation standard. Accordingly, Patent Owner respectfully
`
`submits that the constructions set forth by the Petitioner in the Petition are
`
`based on the wrong standard, and thus cannot be correct.
`
`Patent Owner respectfully submits that the claims should be construed
`
`in accordance with their plain and ordinary meaning. Nevertheless, to the
`
`extent that the Board determines that the terms identified by the Petitioner
`
`require construction, these terms are addressed below.
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`A.
`
`“a mating arrangement” and “a coupling arrangement”
`
`Claim 1 of the ‘743 patent recites “a container having… a mating
`
`arrangement,” and further requires “a coupling arrangement arranged on the
`
`pump cap body and configured to detachably couple to the mating
`
`arrangement of the container, wherein the coupling arrangement and the
`
`mating arrangement are non-circular in shape.” Patent Owner respectfully
`
`submits that this claim language is clear on its face such that construction is
`
`not necessary.
`
`To the extent
`
`that construction of these terms is deemed to be
`
`necessary, the plain language of the claim makes the meaning clear.
`
`In
`
`particular, “a mating arrangement” as used in claim 1 is a non-circular
`
`structure fixedly attached or integrally formed with a pump cap body that
`
`permits the pump cap to detachably couple to the container when the
`
`container passageway is aligned with the pump cap passageway. See Ex.
`
`2001, Paragraphs 28-31 and 33. Similarly, the “coupling arrangement” of
`
`claim 1 is a non-circular structure fixedly attached or integrally formed with
`
`the pump cap that permits the pump cap to detachably couple to the
`
`container when the passageway is aligned with the pump passageway. See
`
`Ex. 2001, Paragraphs 28-32. These constructions are consistent with the
`
`plain language of the claims, as recited above, as well as the specification of
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`the ‘743 patent as understood by one skilled in the art. For example, with
`
`respect to the exemplary embodiment of Fig. 1 of the ‘743 patent, the
`
`specification recites “[m]ating arrangement 165 of container 110 includes an
`
`annular groove 175 extending around the entire outer circumference of
`
`container 110 in an area adjacent to open top 120.” Ex. 1001, 4:4-6. The
`
`specification also describes that “coupling arrangement 160 of cap body 145
`
`includes an annular tab 170 that extends around the entire inner periphery of
`
`cap body 145.” Ex. 1001,
`
`4:8-10. As can be seen with reference to the
`
`reproduced portion of Fig. 1 below, the “mating arrangement” 165 is fixed
`
`with respect to the container 110. Similarly, the “coupling arrangement”
`
`160 is fixed with respect to the cap body 145 such that one of skill in the art
`
`would understand these terms to have the meaning set forth above. See
`
`Exhibit 2001, Paragraphs 28-33.
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`Thus, the constructions proposed above are proper in view of the plain
`
`language of the claim as well as the specification of the ‘743 patent and
`
`should be adopted by the Board.
`
`Further,
`
`these constructions stand
`
`unopposed by Petitioner, since the proposals made by Petitioner must be
`
`disregarded.
`
`B.
`
`“pump passageway is non-axial”
`
`Claim 1 of the ’743 also specifies that “the pump passageway is non-
`
`axial relative to the pump mechanism.” Patent Owner respectfully submits
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`that the plain language of this term is clear such that construction is not
`
`necessary. That is, the meaning of this term is consistent with the ordinary
`
`meaning of the words therein such that the pump passageway does not share
`
`the central axis of the pump. This is consistent with the plain language of
`
`the claims as wells as the specification and drawings of the claims. As can
`
`be seen in the reproduced portion of Fig. 1 above, the pump passageway 150
`
`does not share the axis of the pump mechanism 140.
`
`Accordingly, to the extent that the plain and ordinary meaning of the
`
`claims language is not used, the above constructions are consistent with both
`
`the claim language and specification of the ‘743 patent and should be
`
`adopted by the Board.
`
`V.
`
`THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT PETITIONER WILL PREVAIL
`
`In accordance with 35 U.S.C. §314(a), “[t]he Director may not
`
`authorize an inter partes review to be instituted unless the Director
`
`determines that the information presented in the petition filed under section
`
`311 and any response filed under section 313 shows that
`
`there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. §314(a). In the present
`
`case, the Petition suffers from a variety of flaws such that Petitioner has
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`failed establish a reasonable likelihood that it will prevail with respect to any
`
`claim of the ‘743 patent.
`
`As noted above, claims 1-10 of the ‘743 patent are at issue in the
`
`Petition.
`
`See Petition, p. 5. Claim 1 is the only independent claim
`
`challenged by Petitioner. The Petitioner, however, fails to identify any prior
`
`art reference that discloses all of the features of independent claim 1.
`
`Indeed, the Petitioner fails to identify any combination of prior art references
`
`that disclose all of the features of claim 1 or the claims depending thereon.
`
`A.
`
`The Prior Art Fails To Anticipate Claim 1
`
`1.
`
`The Guss Reference
`
`The prior art cited by Petitioner fails to disclose the “coupling
`
`arrangement,” required by claim 1 of the ‘743 patent.
`
`In Ground 1 of the
`
`Petition, Petitioner asserts that U.S. Patent No. RE33,480 to Guss
`
`anticipates claim 1 of the ‘743 patent. See Petition, pp. 20-26. In particular,
`
`Petitioner alleges that the tubular portion 66 with internal threads 70 of Guss
`
`corresponds to the “coupling arrangement” of claim 1.
`
`Id. at 24. In FIG. 1
`
`of Guss, reproduced below, the tubular portion 66 and the threads 70 formed
`
`thereon are circular. Indeed, this is necessary in order for the tubular portion
`
`66 to fit over the neck 18 of the container and engage with the thread 24
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`thereof, which is also circular as can be seen in FIGS. 2-3 of Guss, also
`
`reproduced below. See also Exhibit 2001, Paragraphs 36-37.
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`Petitioner’s reference to the rear portion 32 of the housing 30 of the
`
`pump unit 14 as a “second coupling portion” is incorrect. The rear portion
`
`32 merely sits on top of the protrusion 34 of the container 10. Neither the
`
`protrusion 34 nor the portion 32 of the housing 30 provide any sort of
`
`coupling, and thus, cannot be considered the “coupling arrangement.” See
`
`Exhibit 2001, Paragraph 36. Even under Petitioner’s admittedly flawed
`
`claim construction, the “coupling arrangement” must be non-circular. See
`
`Petition, p. 16. Since the tubular portion 66 of Guss is circular, as are the
`
`threads 70 formed thereon, neither can be a “coupling arrangement” as
`
`required by claim 1 of the present application. See Exhibit 2001, Paragraphs
`
`37-38.
`
`Further, the tubular portion 66 in Guss is freely rotatable relative to
`
`the tubular housing member 60 of the pump unit 14. See Exhibit 2001,
`
`Paragraph 37. Guss explains that “[t]he tubular portion 66 is provided with
`
`internal threads 70 which cooperate with the threads 24 on the neck finish 18
`
`so as to draw the annular end panel 68 down tight against the upper surface
`
`of the mounting portion 62.” See Ex. 1004, 3:29-33. Accordingly, the
`
`tubular portion 66 must rotate relative to the housing member 60 to allow the
`
`threads 70 to secure the pump unit to the container and is not fixed or
`
`formed integrally with the housing 60 of the pump unit 14. Thus, the tubular
`14
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`member 66 cannot be a “coupling arrangement” as required by claim 1. See
`
`also Ex. 2001, Paragraph 37.
`
`Accordingly, Guss fails to disclose all of the limitations of claim 1 of
`
`the ‘743 patent such that Petitioner has failed to establish a likelihood that it
`
`will prevail with respect to Ground 1 of the Petition.
`
`2.
`
`The Bartimes Reference
`
`In Ground 2, Petitioner argues that the Bartimes reference discloses
`
`all of the features of claim 1 of the ‘743 patent. See Petition, pp. 26-32. As
`
`mentioned above and conceded by Petitioner, the Bartimes reference was
`
`identified to the Examiner during prosecution of the ‘743 patent, and claim 1
`
`was allowed over this reference. See Petition, p. 26. Bartimes also fails to
`
`disclose all of the features of claim 1. The Petitioner incorrectly argues that
`
`the nut 66 of Bartimes corresponds to the “coupling arrangement” of claim
`
`1. This cannot be correct. FIG. 1 of Bartimes is reproduced below showing
`
`the nut 66.
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`Bartimes explains that “[t]he nut 66 is provided with internal threads
`
`68 which are engagable with the partial threads 32, 38 of the container neck
`
`finish 28 so as to fixedly secure the pump 20 on to the container 22.” Ex.
`
`1004, 3:15-18.
`
`It is therefore clear that the nut 66 is not fixed or formed
`
`integrally with the pump 20, and thus, cannot be the “coupling arrangement”
`
`of claim 1 as properly construed. See also Ex. 2001, Paragraphs 39-40.
`
`In addition, as can be seen in reproduced FIG. 3 of Bartimes above,
`
`the nut 66 and the threads 68 formed thereon are circular in shape. As noted
`
`above, Petitioner has conceded that the “coupling assembly” of claim 1 must
`
`be “non-circular” in shape such that the circular nut 66 and threads 68 of
`
`Bartimes cannot be the “coupling arrangement” of claim 1. See also Ex.
`
`2001, Paragraphs 39-40.
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`Accordingly, Guss fails to disclose all of the limitations of claim 1 of
`
`the ‘743 patent and Petitioner has failed to establish a likelihood that it will
`
`prevail with respect to Ground 2 of the Petition.
`
`B.
`
`Claim 1 Is Not Obvious Over Guss and Campagnolo
`
`Grounds 2-16 of the Petition assert that the claims are obvious in view
`
`of Guss or Bartimes in combination with a variety of secondary references.
`
`See Petition, pp. 5-6. Petitioner’s obviousness arguments, however, are
`
`fatally flawed in that they fail to take into account the Graham factors,
`
`and/or fail to provide any rationale as to why one skilled in the art would
`
`combine the references identified by the Petitioner in the manner suggested
`
`by the Petition.
`
`For example, in Ground 3, Petitioner alleges that the combination of
`
`Guss and French Patent No. 2 820 726 to Campagnolo (“Campagnolo”)(Ex.
`
`1005, 1006) renders claims 1 and 6 of the ‘743 patent obvious. See Petition,
`
`p. 33. Petitioner’s obviousness analysis with respect to claims 1 and 6 in
`
`Ground 3, however, fails to comply with the requirements of Graham v.
`
`John Deere. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In
`
`Graham v. John Deere, the Supreme Court set forth a number of factual
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`issued to be addressed in an obviousness analysis “including (1) the scope
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`and content of the prior art, (2) any differences between the claimed subject
`17
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`{01934432.1}
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`IPR2016-00821
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`matter and the prior art, and (3) the level of ordinary skill in the art.” Eizo
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`Corp. v. Barco N.V., IPR2014-00358, Paper 11 at 29 (P.T.A.B. July 23,
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`2014) (Ex. 2002) (citing Graham, 383 U.S. at 17-18; KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 406 (2007)). The Board has made it clear that
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`petitions for inter partes reviews “must address the Graham factors.” Id. at
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`29-30.
`
`In Eizo Corp., the Board found the petitioner’s argument regarding
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`obviousness insufficient since it was based on a “conclusory assertion” that
`
`“[t]o the extent [the first prior art reference] may not explicitly teach” the
`
`limitation, the second prior art reference “explicitly teaches this limitation.”
`
`Id. at 30. In particular, the Board found that this argument failed to “resolve
`
`the exact differences sought
`
`to be derived from” the second prior art
`
`reference. Id. The Board concluded that the Petition did not establish that
`
`Petitioner had a reasonable likelihood of prevailing on its obviousness
`
`argument. The Board has made similar findings with respect to other
`
`Petitioners who failed to specify the differences between the claims and the
`
`primary reference.
`
`See, e.g., Moses Lake Indus., Inc. v. Enthone, Inc.,
`
`IPR2014-00243, Paper 6 at 18 (P.T.A.B. June 18, 2014) (Ex. 2003)
`
`(petitioner failed to “explain[] any differences between the claimed subject
`
`matter and the prior art”).
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`{01934432.1}
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`18
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`
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`IPR2016-00821
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`Similarly, in the present case, Petitioner has failed to sufficiently
`
`address the Graham factors in its argument that claims 1 and 6 of the ‘743
`
`patent are unpatentable as obvious over the combination of Guss and
`
`Campagnolo.
`
`In particular, Petitioner has failed to sufficiently identify the
`
`differences between the claimed subject matter and the prior art.
`
`Petitioner contends that the obviousness argument of Ground 3 is
`
`presented in view of an alternative claim construction. See Id. It is unclear,
`
`however, exactly what claim term construction Petitioner is referring to.
`
`Petitioner notes that “the claim requirement that the apparatus for coupling
`
`the cap to the container be ‘non-circular’ may be read as requiring that there
`
`be no circularity to it at all.” Id. Petitioner concludes that in that case, “the
`
`combination of Guss with Campagnolo renders claims 1 and 6 obvious.” Id.
`
`It is unclear, however, which claim term Petitioner is attempting to redefine
`
`the term “non-circular” for. To add to the confusion, in Ground 1, Petitioner
`
`asserted that Guss discloses a non-circular “coupling arrangement” as well
`
`as a non-circular “mating arrangement.” Accordingly, Patent Owner and the
`
`Board are left to guess what specific claim feature is allegedly missing in
`
`Guss in the argument of Ground 3. Thus, Petitioner’s obviousness argument
`
`in Ground 3 fails to meet the requirements of the Graham factors at least
`
`{01934432.1}
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`19
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`IPR2016-00821
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`because Petitioner has failed to identify the differences between the claimed
`
`subject matter and the prior art.
`
`In addition, the Petition fails to provide any rationale for modifying
`
`the container of Guss to include the neck of Campagnolo. It is black letter
`
`law that an obviousness argument cannot be supported by “mere conclusory
`
`statements; instead; there must be some articulated reasoning with some
`
`rational underpinning to support
`
`the legal conclusion of obviousness.”
`
`Zimmer Holdings, Inc. and Zimmer, Inc. v. Bonutti Skeletal Innovations
`
`LLC, IPR2014-01078, Paper 17 at 21 (P.T.A.B. Oct. 30, 2014)(Ex. 2004)
`
`citing KSR, 550 U.S. at 418. Petitioner fails to provide such an explanation.
`
`Petitioner, and its expert Kerry Azelton, contends that one skilled in the art
`
`would have considered Campagnolo in attempting to modify Guss to
`
`eliminate the projection 34 of Guss. See Petition, p. 34 and Ex. 1017,
`
`Paragraph 12. This is incorrect. The Guss reference itself explicitly teaches
`
`that the protrusion 34 can be removed such that one skilled in the art would
`
`have no need to look to the disparate teachings of Campagnolo. See Ex.
`
`1003, 4:24-28 and Ex. 2001, Paragraphs 42-43.
`
`Petitioner, and its expert, also attempts to justify the proposed
`
`modification of Guss in view of Campagnolo based on the alleged fact that
`
`both Guss and Campagnolo teach integral dip tubes. See Petition, p. 35 and
`20
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`{01934432.1}
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`
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`IPR2016-00821
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`Ex. 1017, Paragraph 13. This is simply incorrect. The tube 7 in Figs. 3 and
`
`3A of Campagnolo is not “built in” as described by Petitioner. See Petition,
`
`p. 37. To the contrary, Campagnolo discloses that “the head (8) with the
`
`tube (7) has been force fitted while orienting it so that
`
`the tube (7)
`
`cooperates with the groove (40).” Ex. 1006, p. 8. That is, the tube 7 extends
`
`from the head 8, similar to a conventional dip tube, but rests in the groove
`
`40. The tube 7, however, is not built into or integral with the groove 40.
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`Thus, Guss and Campagnolo do not share the same dip tube structure, and
`
`the modification suggested by Petitioner would require additional changes to
`
`Guss that are not addressed or acknowledged by Petitioner or its expert. See
`
`Ex. 2001, Paragraph 41. As a result, it would not have been obvious to
`
`modify Guss in view of the alleged teachings of Campagnolo.
`
`Finally, notwithstanding the fatal flaws with Petitioner’s obviousness
`
`arguments in Ground 3 described above, neither Guss nor Campagnolo
`
`discloses all of the features of claims 1 or 6. Petitioner appears to argue that
`
`the neck of the container in Campagolo is non-circular. See Petition, p. 33.
`
`Campagnolo does not disclose this feature.
`
`In particular, Petitioner argues
`
`that FIG. 3A of Campagnolo shows a container with an oval-shaped cross
`
`section.
`
`Id. Petitioner then notes that Campagnolo discloses that the
`
`dispensing head attaches to the bottle “by force-fitting, screwing, or
`21
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`{01934432.1}
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`
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`IPR2016-00821
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`snapping on.” Id. The Petitioner concludes that a force fit or snap-fit of an
`
`oval-shaped container mouth would require a matching oval-shaped
`
`dispenser head.
`
`Petitioner’s argument
`
`is fundamentally flawed since
`
`Campagnolo does not disclose an oval-shaped container mouth. FIG. 3A of
`
`Campagnolo is a cross section of the middle of the flask, not the neck or
`
`mouth thereof, as can be seen in reproduced Figs. 3-3a below. See also Ex.
`
`2001, Paragraph 41.
`
`There is no disclosure in Campagnolo that the mouth of the flask
`
`therein is oval-shaped, nor does FIG. 3A illustrate the shape of the mouth.
`
`See also Ex. 2001, Paragraphs 42-43. Campagnolo simply does not disclose
`
`an oval-shaped container mouth as argued by Petitioner.
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`{01934432.1}
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`22
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`
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`IPR2016-00821
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`Further, to the extent that Petitioner is arguing that an oval-shaped
`
`container mouth is somehow an inherent feature of an oval shaped container
`
`body, this argument is not set forth in the Petition nor does Petitioner
`
`establish the facts necessary to establish a proper argument of inherency. In
`
`order to show that a particular feature is inherent to a reference, Petitioner
`
`must show that it is necessarily present.
`
`See Beckton, Dickinson and
`
`Company v. One Stockduq Holdings, LLC,
`
`IPR2013-00235, Paper No. 10,
`
`p. 22 (October 1, 2013)(Ex. 2005) citing In Re Roberston, 169 F. 3d 743,
`
`745 (Fed. Cir. 1999). It is well established that the “mere fact that a certain
`
`thing may result from a given set of circumstances is not sufficient.” Id.
`
`citing In re Oelrich, 666 F.3d 578, 581 (CCPA 1981). Petitioner cites to no
`
`factual support to suggest that an oval shaped mouth is a necessary feature of
`
`an oval shaped container or flask, such as that disclosed in Campagnolo.
`
`Instead Petitioner simply assumes an oval shaped mouth without any
`
`support, either in the Campagnolo reference or elsewhere. Mr. Azelton also
`
`fails to establish any support for an inherency argument but merely makes
`
`the conclusory statement that the mouth is oval shaped without any support.
`
`In light of the above, not only do the references relied on by the
`
`Petitioner fail to disclose, show or suggest all of the features of claims 1 and
`
`6 of the ‘743 patent, even if they did, it would not have been obvious to
`23
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`{01934432.1}
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`
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`IPR2016-00821
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`combine the references as suggested by the Petitioner since the Petition fails
`
`to meet the Graham factor requirements and fails to articulate a rationale for
`
`making such a combination.
`
`Accordingly, Petitioner has failed to establish a likelihood of
`
`prevailing with respect to claims 1 and 6 of the ‘743 patent.
`
`C.
`
`Dependent Claims 2-10
`
`Claims 2-10 all depend on claim 1, either directly, or indirectly, that
`
`is,
`
`through other dependent claims.
`
`In Grounds 4-15 of the Petition,
`
`Petitioner argues that the dependent claims are obvious in view of (1) Guss
`
`and Campagnolo, and/or
`
`(2) Bartimes,
`
`in view of other secondary
`
`references. Petitioner’s obviousness arguments set forth in Grounds 4-15 are
`
`equally as flawed as those set forth in Ground 3 discussed above. For
`
`example, Petitioner’s obviousness arguments with respect
`
`to all of the
`
`dependent claim are flawed in that they p
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