UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP Inc.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`Patent No. 7,156,492
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,156,492
`CHALLENGING CLAIMS 6-8
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP Inc.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`Patent No. 7,156,492
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,156,492
`CHALLENGING CLAIMS 6-8
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ..........................................................................................1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .......................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)...........................2
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................2
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) and...........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 ’492 PATENT AND ITS PROSECUTION ..........................................4
`
`A.
`
`B.
`
`Summary of the Prosecution History ...................................................4
`
`Brief Description of the Patent.............................................................4
`
`VI.
`
`THE PRIOR ART...........................................................................................6
`
`A.
`
`B.
`
`Summary of the Prior Art.....................................................................6
`
`Brief Description of the Prior Art ........................................................8
`
`1.
`
`U.S. Patent No. 5,565,900 to Cowger et al. (“Cowger”)...........8
`
`2. WO 01/02172 A1 to Silverbrook et al. (“Silverbrook
`2172”).........................................................................................9
`
`3.
`
`U.S. Patent No. 6,428,142 to Silverbrook et al.
`(“Silverbrook 142”)....................................................................9
`
`i
`
`
`
`TABLE OF CONTENTS
`
`(continued)
`
`Page
`
`4.
`
`U.S. Patent No. 4,477,823 to Matsufuji et al.
`(“Matsufuji”)..............................................................................9
`
`C. Motivations to Combine.....................................................................10
`
`1.
`
`2.
`
`Cowger or Silverbrook 142 with Silverbrook 2172 ................10
`
`Cowger or Silverbrook 142 and Silverbrook 2172 with
`Matsufuji ..................................................................................11
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED .............................................................................12
`
`A.
`
`B.
`
`C.
`
`Claims For Which Review Is Requested ...........................................12
`
`Statutory Grounds Of Challenge........................................................12
`
`Proposed Claim Constructions...........................................................12
`
`1.
`
`2.
`
`“carrier”....................................................................................13
`
`“that can each transport a respective type of fluid”.................14
`
`VIII. DETAILED GROUNDS FOR UNPATENTABILITY...............................16
`
`A.
`
`Ground 1: Claims 6-8 are obvious under 35 U.S.C. § 103(a) in
`
`view of Cowger and Silverbrook 2172 in light of Matsufuji.............16
`
`1.
`
`2.
`
`Elements of claim 1 from which claims 6-8 depend ...............16
`
`Claim 5: capping arrangement for capping the printing
`modules is mounted on the carrier...........................................29
`
`ii
`
`
`
`TABLE OF CONTENTS
`
`(continued)
`
`Page
`
`3.
`
`4.
`
`5.
`
`Claim 6: the capping arrangement includes a plurality of
`caps for each capping a respective printing module................31
`
`Claim 7: a pair of supports each engage a respective end
`of the carrier, and a moving arrangement is supported by
`the supports and is operable to move the caps relative to
`the printing modules ................................................................32
`
`Claim 8: moving arrangement includes a camshaft
`rotatably mounted with respect to the carrier ..........................37
`
`B.
`
`Ground 2: Claims 6-8 are obvious under 35 U.S.C. § 103(a) in
`
`view of Silverbrook 142 and Silverbrook 2172 in light of
`
`Matsufuji ............................................................................................38
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Elements of claim 1 from which claims 6-8 depend ...............39
`
`Claim 5: capping arrangement for capping the printing
`modules is mounted on the carrier...........................................46
`
`Claim 6: the capping arrangement includes a plurality of
`caps for each capping a respective printing module................47
`
`Claim 7: a pair of supports each engage a respective end
`of the carrier, and a moving arrangement is supported by
`the supports and is operable to move the caps relative to
`the printing modules ................................................................47
`
`Claim 8: moving arrangement includes a camshaft
`rotatably mounted with respect to the carrier ..........................49
`
`C.
`
`Claim Chart for Grounds 1 And 2......................................................50
`
`iii
`
`
`
`TABLE OF CONTENTS
`
`(continued)
`
`Page
`
`IX. CONCLUSION.............................................................................................50
`
`iv
`
`
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 7,156,492 to Silverbrook et al.
`Declaration of Stephen F. Pond, Ph.D.
`File History of U.S. Patent 7,156,492
`U.S. Patent No. 5,565,900 to Cowger et al.
`WO 01/02172 A1 to Silverbrook et al.
`U.S. Patent No. 6,428,142 to Silverbrook et al.
`U.S. Patent No. 4,477,823 to Matsufuji et al.
`Curriculum Vitae of Stephen F. Pond, Ph.D.
`
`HP
`Exhibit #
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`
`v
`
`
`
`I.
`
`INTRODUCTION
`
`As will be shown below, dependent claims 6-8 of U.S. Patent No. 7,156,492
`
`(“’492 patent,” Ex. 1001) should be found unpatentable under pre-AIA 35 U.S.C.
`
`§ 103 because the prior art plainly confirms that the claims were well known in the
`
`art years before the ’492 patent application was filed. In particular, the ’492 patent
`
`claims straightforward elements of a modular printhead, with no inventive features.
`
`Petitioner previously filed an IPR Petition challenging claims 1, 2, 4, and 5
`
`of the ’492 patent. Petitioner did not then challenge dependent claims 6-7 as they
`
`were not previously asserted in the co-pending litigation in the Southern District of
`
`California, identified in Section II.B, below. However, the patent owner recently
`
`asserted these claims, and, as such, Petitioner hereby challenges the patentability of
`
`claims 6-7, along with claim 8. In the interests of conserving the Board’s and the
`
`Parties’ resources, Petitioner supports merging this proceeding with IPR2016-
`
`00537.
`
`As shown below, these dependent claims 6-8 contain straightforward
`
`elements that are clearly found in the prior art, including a U.S. Patent Application
`
`by a similar set of inventors to the ’492 patent, namely U.S. Patent No. 6,428,142,
`
`which Applicant for the ’492 patent failed to disclose to the USPTO. Accordingly,
`
`pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100 et seq., Petitioner, HP Inc.,
`
`hereby requests Inter Partes Review (“IPR”) of claims 6-8 of the ’492 patent.
`
`1
`
`
`
`Attorney Docket No. 069700-5011
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`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.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`As of the filing date of this petition, the ’492 patent is involved in litigation
`
`in the Southern District of California, captioned Memjet Technology Limited v.
`
`Hewlett-Packard Company, Case No. 3:15-cv-01769-BEN-BLM. The ‘492 patent
`
`is also the subject of a separate IPR petition, Case No. IPR2016-00537, filed
`
`January 29, 2016, which challenges claims 1, 2, 4, and 5 of the ‘492 patent.
`
`Petitioner is not aware of any other judicial or administrative matter involving the
`
`’492 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) and
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`following designation of counsel:
`
`1 Petitioner has concurrently filed Petitions for Inter Partes Review of U.S.
`
`Patent No. 9,056,475, U.S. Patent No. 6,575,549, U.S. Patent No. 6,880,914, U.S.
`
`Patent No. 8,678,550, U.S. Patent No. 8,696,096, and U.S. Patent No. 8,662,636,
`
`all of which are also asserted in the U.S. District Court Proceeding.
`
`2
`
`
`
`Attorney Docket No. 069700-5011
`
`Lead Counsel: Dion M. Bregman (Reg. No. 45,645); Tel: 650.843.7519.
`
`Backup Counsel: Andrew J. Gray IV (Reg. No. 41,796), Tel:
`
`650.843.7575; Bradford A. Cangro (Reg. No. 58,478), Tel: 202.739.5088; 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
`
`Petition.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service information is provided in Section II.C, above. Petitioners also
`
`consent to electronic service by email 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. 069700-5011).
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104
`
`Petitioner hereby certifies that claims 6-8 of the ’492 patent are available for
`
`3
`
`
`
`Attorney Docket No. 069700-5011
`
`IPR and that the Petitioner is not barred or estopped from requesting an IPR
`
`challenging claims 6-8 of the ’492 patent because it has not been a party to any
`
`other post-grant or Inter Partes Review of these claims of the ’492 patent.
`
`V.
`
`THE ’492 PATENT AND ITS PROSECUTION
`
`A.
`
`Summary of the Prosecution History
`
`The ’492 patent issued to Silverbrook Research Pty Ltd. on January 2, 2007,
`
`and appears to be currently assigned to Memjet Technology Limited (“Memjet”).
`
`The ’492 patent issued with nine claims, one of which is independent (claim 1).
`
`The application that led to the ’492 patent (“Application”) was filed on June
`
`12, 2006 and is a continuation of application No. 11/250,450, filed on October 17,
`
`2005, now U.S. Patent No. 7,066,573, which is a continuation of application No.
`
`10/728,922, filed on December 8, 2003, now U.S. Patent No. 6,997,545, which is a
`
`continuation of application No. 10/102,700, filed on March 22, 2002, now U.S.
`
`Patent No. 6,692,113. The application that led to the ’492 patent also claims
`
`priority to an Australian application (AU PR3996), filed on March 27, 2001. See
`
`Ex. 1003 at ¶¶ 26-29.
`
`B.
`
`Brief Description of the Patent
`
`The ’492 patent relates to a “modular printhead assembly” for a well-known
`
`type of printer called a “pagewidth” printer. Ex. 1001 at Abstract, col. 1, ll. 31-34.
`
`Pagewidth printers allow printing “without the need for scanning movement of the
`
`4
`
`
`
`Attorney Docket No. 069700-5011
`
`printhead across the paper width.” Id. at col. 1, ll. 60-64. “The overall design of a
`
`printer in which the printhead module assembly can be utilized revolves around the
`
`use of replaceable printhead modules in an array” Id. at col. 1, ll. 35-37. The ’492
`
`patent explains that “[a] printhead module in such a printer can be comprised of a
`
`‘Memjet’ chip, being a chip having mounted thereon a vast number of thermo-
`
`actuators in micro-mechanics and micro-electromechanical systems (MEMS).” Id.
`
`at col. 1, ll. 43-45. The purported benefits of a “modular” assembly include the
`
`ability to manufacture printheads of “arbitrary width,” as well as “the ability to
`
`easily remove and replace any defective modules,” which eliminates “having to
`
`scrap an entire printhead if only one chip is defective.” Id. at col. 1, ll. 65-67; col.
`
`1, ll. 35-41. The stated object of the ’492 patent is to “provide an improved printed
`
`module assembly” and, similarly, a “printhead assembly having improved modules
`
`therein.” Ex. 1001 at col. 2, ll. 6-10. See generally, Ex. 1002.
`
`The claims of the ’492 patent are directed to a modular printhead comprising
`
`a metal alloy carrier and plurality of printhead modules that are configured to be
`
`mounted on an elongate fluid transporter, which is received in the carrier and
`
`defines a plurality of channels for transporting different fluids. See Ex. 1001 at
`
`Abstract and claims. A schematic, exploded view of the “printhead assembly 10”
`
`having the elements of independent claim 1, is illustrated in Figure 2, below. As
`
`can be seen, the “printhead assembly 10” comprises “printhead modules 11” (one
`
`5
`
`
`
`of which is shown in blue), that “plug directly onto” an “elastomeric ink delivery
`
`Attorney Docket No. 069700-5011
`
`extrusion 15” (in purple), and are “situated
`
`along a metal ‘Invar’ channel 16” (in yellow).
`
`Id. at col. 4, ll. 48-67; col. 7, ll. 34-39.2
`
`Dependent claim element embodiments
`
`are also shown, such as (1) “capping device
`
`12” (in red) for claim 5’s “capping
`
`arrangement for capping the printing modules”
`
`and claim 6’s “plurality of caps”; (2)
`
`“printhead location moldings 14” for claim 7’s
`
`“pair of supports”; and (3) “camshaft 13” for
`
`claim 7’s “moving arrangement.” Id. at col. 5, ll. 10-16; col. 9, ll. 3-7.3
`
`VI. THE PRIOR ART
`
`Summary of the Prior Art
`A.
`U.S. Patent No. 5,565,900 to Cowger et al. (“Cowger”) is pre-AIA 35
`
`U.S.C. § 102(b) prior art to the ’492 patent, because it issued on October 15, 1996,
`
`which is more than one year prior to the ’492 patent’s U.S. application date of
`
`2 All colorization herein has been added by Petitioner.
`
`3 Petitioner cites these embodiments for illustrative purposes only.
`
`6
`
`
`
`Attorney Docket No. 069700-5011
`
`March 22, 2002. Compare Ex. 1004 with Ex. 1001.
`
`WO 01/02172 A1 to Silverbrook et al. (“Silverbrook 2172”) is prior art to
`
`the ’492 patent under at least 35 U.S.C. § 102(b) (pre-AIA), because it issued on
`
`January 11, 2001, which is more than one year prior to the ’492 patent’s U.S.
`
`application date of March 22, 2002. Compare Ex. 1005 with Ex. 1001.
`
`U.S. Patent No. 6,428,142 to Silverbrook et al. (“Silverbrook 142”) is pre-
`
`AIA 35 U.S.C. § 102(e) prior art to the ’492 patent under 35 U.S.C. § 102(e) (pre-
`
`AIA), as it was filed by another (i.e., at least one other inventor) in the United
`
`States on October 20, 2000, which is prior to the earliest possible date of invention
`
`of the ’492 patent (i.e., foreign priority of March 27, 2001). Compare Ex. 1006
`
`with Ex. 1001.
`
`U.S. Patent No. 4,477,823 to Matsufuji et al. (“Matsufuji”) is prior art to the
`
`’492 patent under at least 35 U.S.C. § 102(b) (pre-AIA) because it issued on
`
`October 16, 1984, which is more than one year before the earliest U.S. filing date
`
`to which the ’492 patent is entitled. Compare Ex. 1007 with Ex. 1001.
`
`With the exception of Silverbrook 2172, the Office has not previously
`
`considered the prior art references presented herein with respect to claims 6-8.4
`
`4 All of these references, with the exception of Matsufuji, are before the
`
`Board for its consideration of claims 1, 2, 4, and 5 in Case No. IPR2016-00537.
`
`7
`
`
`
`Attorney Docket No. 069700-5011
`
`See generally, Ex. 1003. While the Office considered Silverbrook 2172 during
`
`prosecution, the Board may nevertheless institute an IPR based on previously
`
`considered references where the patentability arguments in the IPR were not
`
`previously considered by the Office. See 35 U.S.C. § 325(d) and the decisions
`
`instituting IPR for IPR2013-00066 at p. 8 and IPR2013-00217 at p. 16. As the
`
`Office did not previously consider the arguments presented herein, Petitioner
`
`respectfully requests that the Board now consider the prior art and arguments
`
`presented herein, and find claims 6-8 of the ’492 patent unpatentable under pre-
`
`AIA 35 U.S.C. § 103.
`
`B.
`
`Brief Description of the Prior Art
`
`1.
`
`U.S. Patent No. 5,565,900 to Cowger et al. (“Cowger”)
`
`Cowger is directed to a print head assembly for inkjet printing in which a
`
`“pen” mounted to a printer can be “constructed to include a plurality of print heads
`
`that span across the entire width of a page that is advanced through the printer.”
`
`Ex. 1004 at col. 1, ll. 26-29. Like the ’492 patent, Cowger recognized that “a
`
`failure of one of the print heads… would ruin the entire pen and lead to expensive
`
`waste or re-work for repairing the pen,” and thus “is directed to a construction
`
`whereby ink-jet printer pens have modular or unit print head assemblies that can be
`
`readily mounted to and removed from [the] pen body in the event that the assembly
`
`needs repair or replacement.” See Ex. 1004 at col. 1, ll. 29-42.
`
`8
`
`
`
`Attorney Docket No. 069700-5011
`
`2.
`
`WO 01/02172 A1 to Silverbrook et al. (“Silverbrook 2172”)
`
`Silverbrook 2172 is also “broadly directed to the provision of a suitable
`
`printhead segment support structure and ink supply arrangement for an inkjet
`
`printhead assembly capable of single-pass, full-page-width printing as well as to
`
`such printhead assemblies.” Id. at col. 2, ll. 11-13. The “printhead assembly in
`
`accordance with the invention should in particular be useful where a plurality of
`
`generally elongate, but relatively small printhead segments are to be used to
`
`print across substantially the entire width of a sizable surface without the need for
`
`mechanically moving the printhead assembly or any printhead segment across as
`
`well as along the print surface.” Id. at col. 2, ll. 26-29.5
`
`3.
`
`U.S. Patent No. 6,428,142 to Silverbrook et al. (“Silverbrook
`142”)
`
`Another reference, Silverbrook 142, is also directed to a pagewidth inkjet
`
`printhead assembly. Id. at col. 1, ll. 6-8. According to Silverbrook 142, the
`
`“advantage” of using replaceable printhead modules is “the ability to easily remove
`
`and replace any defective modules,” which “eliminates having to scrap an entire
`
`printhead assembly” if only one is defective. Ex. 1006 at col. 2, ll. 22-26.
`
`4.
`
`U.S. Patent No. 4,477,823 to Matsufuji et al. (“Matsufuji”)
`
`Another reference, Matsufuji, “relates to an ink jet recording apparatus,” a
`
`5 All emphasis herein added unless otherwise indicated.
`
`9
`
`
`
`Attorney Docket No. 069700-5011
`
`pagewidth printhead assembly, for which it uses the term a “full line multi-array
`
`orifice type head.” Ex. 1007 at col. 1, ll. 5-10, 46-51. Matsufuji seeks to address
`
`problems that occur in the pagewidth printhead, including that “replacement work
`
`of the head is not easy thereby increasing [the] possibility of trouble and damage
`
`occurring in some part of the head. Further, from the economic aspect, the
`
`replacement of the entire head is limited.” Id. at col. 1, ll. 49-53; col. 2, ll. 8-18.
`
`C. Motivations to Combine
`
`Cowger or Silverbrook 142 with Silverbrook 2172
`1.
`It would have been obvious to one of ordinary skill in the art to combine the
`
`teachings of one or more of Cowger, Silverbrook 2172, and Silverbrook 142 for a
`
`number of reasons. First, these references are in the exact same field, namely
`
`inkjet printers, and all relate to printhead assemblies for “pagewidth” printers. See,
`
`e.g., Ex. 1004 at col. 1, ll. 7-10, 25-28; Ex. 1005 at col. 2, ll. 11-13; Ex. 1006 at
`
`col. 1, ll. 5-7; Ex. 1002 at ¶ 42. Second, these references also describe printhead
`
`segments or modules, and their corresponding support structures, both of which
`
`permit pagewidth printheads and further provide for variable-length printhead
`
`assemblies. Ex. 1002 at ¶ 42; see also, e.g., Ex. 1004 at col. 1, ll. 25-29, 36-42,
`
`col. 6, ll. 59-64; Ex. 1005 at col. 2, ll. 4-13, col. 5, ll. 19-24; Ex. 1006 at col. 5, ll.
`
`56-60. Third, Cowger and Silverbrook 142 address the same problem of providing
`
`a modular assembly that avoids having to replace an entire assembly when
`
`10
`
`
`
`Attorney Docket No. 069700-5011
`
`individual components are defective. Ex. 1002 at ¶ 42; see also, e.g., Ex. 1004 at
`
`col. 1, ll. 29-40; Ex. 1006 at col. 2, ll. 23-26. Fourth, both Silverbrook 2172 and
`
`Silverbrook 142 contemplate arranging their printhead modules in a substantially
`
`end-to-end relationship. Ex. 1002 at ¶ 42; see also, e.g., Ex. 1006 at col. 1, ll. 11-
`
`15; Ex. 1005 at col. 2, ll. 3-5.
`
`Finally, one of ordinary skill in the art would also be attuned to the three
`
`design challenges of rigidity, elasticity, and heat distribution that are associated
`
`with the longer pagewidth printhead assemblies contemplated by Cowger,
`
`Silverbrook 142, and Silverbrook 2712. Ex. 1002 at ¶ 43. Although plastic
`
`carriers were known, metal alloys are more rigid than plastic, which thus provide
`
`the necessary stiffness for a pagewidth printhead assembly, have better elasticity,
`
`which provides better clamping forces, and have better heat conductivity, which
`
`improves the operation of a printhead assembly that might otherwise heat non-
`
`uniformly. Id. at ¶¶ 44-45, 47-50. Thus, one of ordinary skill in the art in the early
`
`2000s would have been motivated to combine the metal alloy carrier of
`
`Silverbrook 2172 with the carriers of Cowger or Silverbrook 142. Id. at ¶¶ 46, 50.
`
`2.
`
`Cowger or Silverbrook 142 and Silverbrook 2172 with
`Matsufuji
`With the combination of Cowger or Silverbrook 142 with the metal carrier
`
`of Silverbrook 2172, one of ordinary skill in the art would have been further
`
`motivated to add the capping capability of Matsufuji to cap the printheads to
`11
`
`
`
`Attorney Docket No. 069700-5011
`
`protect them and prevent them from malfunctioning. Without a cap, the nozzles on
`
`the printhead can become contaminated, dry out, gum up, or attract dust. See, e.g.,
`
`Ex. 1007 at col. 1, ll. 57-62; Ex. 1002 at ¶¶ 51-54; see Ex. 1002, Appendix A.
`
`Thus, one of ordinary skill in the art in early 2001 would have known that
`
`incorporating the caps of Matsufuji into Cowger, Silverbrook 142, or Silverbrook
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`2172, as claimed in the ’492 patent, would help to keep the nozzles
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`uncontaminated, clean, dust free, and at the appropriate level of humidity. Ex.
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`1002 at ¶ 55.
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`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A.
`
`Claims For Which Review Is Requested
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`Petitioner respectfully requests review under 35 U.S.C. § 311 and 37 C.F.R.
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`§ 42.100 et seq. of claims 6-8 of the ’492 patent, and the cancellation of these
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`claims as unpatentable.
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`B.
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`Statutory Grounds Of Challenge
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`Petitioner requests that claims 6-8 of the ’492 patent be cancelled as
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`unpatentable under 35 U.S.C. § 103. The claim construction, reasons for
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`unpatentability, and specific evidence supporting this request are detailed below.
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`C.
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`Proposed Claim Constructions
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`Pursuant to 37 C.F.R. § 42.100(b), and solely for purposes of this IPR,
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`Petitioner construes the claim language such that the claim terms are given their
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`Attorney Docket No. 069700-5011
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`broadest reasonable interpretation. Because the broadest reasonable interpretation
`
`standard differs from the standard applied by the district courts, see In re Am.
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`Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner
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`reserves the right to argue alternative constructions in any other court proceeding.
`
`1.
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`“carrier”
`
`The broadest reasonable construction of the claim term “carrier,” which
`
`appears in claim 1, from which claims 6-8 depend, is a “support structure.” The
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`term “carrier” appears only in the title and the claims of the ’492 patent. The
`
`Abstract essentially restates claim 1, stating that:
`
`A modular printhead includes an elongate carrier. An elongate fluid
`transporter can be received in the carrier…. A flexible printed circuit
`board (PCB) is located between the carrier and the fluid transporter.
`
`Ex. 1001 at Abstract. The detailed description, however, does not use the term
`
`“carrier.” Instead, in describing an embodiment that includes the “elongate
`
`channel member” of claim 4, the ’492 explains that “at least one printhead module
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`[is] positioned in the support structure, along a length of the support structure….”
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`Id. at col. 2, ll. 19-20. The specification further explains that the “metal channel
`
`16 functions to capture the ‘Memjet’ printhead modules 11 in a precise alignment
`
`relative to each other” and “serves to hold the[m] in place….” Id. at col. 7, ll. 16-
`
`18; col. 5, ll. 6-7. Therefore, the broadest reasonable interpretation, namely a
`
`“support structure,” is consistent with the specification and what one of ordinary
`13
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`Attorney Docket No. 069700-5011
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`skill in the art would understand the term “carrier” to mean. Ex. 1002 at ¶¶ 30-34,
`
`36. Moreover, as dependent claim 4 requires the carrier to be “in the form of a
`
`channel member,” the “carrier” in claim 1 must be something broader than a
`
`“channel,” like a “support structure.” Ex. 1002 at ¶ 35.
`
`In the District Court litigation, and applying the Phillips and not the
`
`Broadest Reasonable Interpretation standard, Petitioner seeks a construction for the
`
`longer term “an elongate carrier” and the entire claim element “an elongate carrier
`
`of a metal alloy.” The proposed construction for an “an elongate carrier” proffered
`
`by the Patent Owner in the district court proceedings is “a structure longer than it is
`
`wide designed to carry another structure.” This construction is deficient at least as
`
`to its use of the verb “to carry,” which does not appear in the ‘492 patent, and its
`
`reference to “another structure,” which is ambiguous and unnecessary.
`
`2.
`
`“that can each transport a respective type of fluid”
`
`“[A] respective type of fluid,” which appears in the element “an elongate
`
`fluid transporter received in the carrier and defining a plurality of channels that can
`
`each transport a respective type of fluid,” which appears in claim 1, from which
`
`challenged claims 6-8 ultimately depend, imparts no patentable weight to the
`
`claims, as it is well established that “[e]xpressions relating the [claimed]
`
`apparatus to contents thereof during an intended operation are of no
`
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`Attorney Docket No. 069700-5011
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`significance in determining patentability of the apparatus claim.”6 Ex parte
`
`Thibault, 164 USPQ 666, 667 (Bd. App. 1969); see also MPEP § 2115. In fact, the
`
`Board confirmed this well-known tenet of patent law in an analogous IPR. See the
`
`decision instituting IPR for IPR2015-00009 at p. 9-11 (“properties of the fluids
`
`flowing through the claimed device impart no patentable weight”).
`
`Here, because the “respective type of fluid” is merely prospective fluid that
`
`could flow through the plurality of channels of the claimed elongate fluid
`
`transporter when the fluid transporter is in use, its presence and properties should
`
`be ignored as imparting no patentable weight to the claims. See IPR2015-00009 at
`
`9-11; MPEP § 2115; Ex. 1002 at ¶ 38.
`
`In the event that the term is found to impart patentable weight to the claims,
`
`there is nothing in the claims of the ’492 patent that require the channels of the
`
`fluid transporter to transport different types or colors of inks. Indeed, the
`
`Applicant acted as its own lexicographer to explain that “the term ‘ink’ is intended
`
`to mean any fluid which flows through the printhead to be delivered to print
`
`media,” and “[t]he fluid may be one of many different colored inks, infra-red ink, a
`
`fixative or the like.” Ex. 1001 at col. 3, ll. 54-57. Therefore, in the unlikely event
`
`that the claim term “that can each transport a respective type of fluid” is found to
`
`6 All emphasis herein added unless otherwise indicated.
`
`15
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`Attorney Docket No. 069700-5011
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`impart patentable weight to the claims, then the broadest reasonable interpretation
`
`of this phrase must mean: “that can each transport any type of fluid.” Ex. 1002
`
`at ¶¶ 39-40. Construction of this term is not before the District Court.
`
`VIII. DETAILED GROUNDS FOR UNPATENTABILITY
`
`Below is an explanation of each proposed ground of unpatentability in
`
`accordance with 37 C.F.R. §§ 42.104(b).
`
`A.
`
`Ground 1: Claims 6-8 are obvious under 35 U.S.C. § 103(a) in
`view of Cowger and Silverbrook 2172 in light of Matsufuji
`
`As shown below, Cowger discloses every limitation of claims 6-8 except
`
`for: (1) an explicit disclosure that the claimed carrier is made of a metal alloy, (2)
`
`disclosure of a capping arrangement, and (3) disclosure of a moving
`
`arrangement. Silverbrook 2172, however, clearly discloses a carrier made of a
`
`metal alloy. Ex. 1002 at ¶¶ 56-57. Similarly, Matsufuji discloses the claimed
`
`capping arrangement and moving arrangement. Ex. 1002 at ¶ 58.
`
`1.
`
`Elements of claim 1 from which claims 6-8 depend
`
`Claim 6 depends from claim 5, which in turn depends from independent
`
`claim 1. Claim 7 in turn depends from claim 6, and claim 8 from claim 7. Thus,
`
`the elements of claims 1 and 5, which are also disclosed by the prior art, are
`
`included in the discussion below.
`
`i.
`
`Claim 1: A modular printhead that comprises
`
`16
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`Attorney Docket No. 069700-5011
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`The preamble of claim 1 of the ’492 patent recites “a modular printhead that
`
`comprises….” To the extent that the preamble is limiting, the preamble of claim 1
`
`is clearly disclosed by both Cowger and Silverbrook 2172. Ex. 1002 at ¶ 59-61.
`
`Cowger is directed to a “modular-type manufacture of ink-jet printing
`
`pens, whereby a print head assembly is constructed as a unit and thereafter
`
`removably mounted to the pen body.” Ex. 1004 at col. 1, ll. 6-10. Similarly,
`
`Silverbrook 2172 discloses that its invention “relates to the field of ink jet
`
`printing systems,” including “an inkjet printhead assembly capable of single-
`
`pass, full-page-width printing,” noting that “it found desirable to use a number of
`
`individual printhead segments (CMOS chips) placed substantially end-to-end
`
`where large widths of printing are to be provided.” Ex. 1005 at col. 1, ll. 4-5, col.
`
`2, ll. 4-5, 12-13. See generally Ex. 1002, Appendix A. In other words, both
`
`Cowger and Silverbrook 2172 disclose a modular printhead. Also, as discussed
`
`above in Section VI, it would have been obvious to one of ordinary skill in the art
`
`to combine the teachings of Cowger and Silverbrook 2172.
`
`ii.
`
`Claim 1: An elongate carrier of a metal alloy
`
`Claim 1 of the ’492 patent recites “an elongate carrier of a metal alloy.”
`
`Cowger discloses “a substantially rigid body 24 [or pen body 24] to which the
`
`assemblies 22 are removably mounted.” Ex. 1004 at col. 2, ll. 12-13. Figure 2
`
`shows this element to be an elongate carrier just like carrier 16 in the ’492 patent:
`
`17
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`Attorney Docket No. 069700-5011
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`’492 patent, Fig. 2
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`Cowger, Fig. 2
`
`While Cowger is silent as to what material the rigid body 24 is made from, it
`
`is black letter law that selection of a known material based on its suitability for its
`
`intended use is obvious. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S.
`
`327, 65 USPQ 297 (1945). See also MPEP 2144.07; In re Leshin, 277 F.2d 197,
`
`125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of
`
`a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v.
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`Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). Here, it would
`
`have been obvious to a person of skill in the art at the time of invention to make
`
`Cowger’s rigid body from either a plastic or metal material. Ex. 1002 at ¶ 63.
`
`Moreover, it is – and was at the time of the alleged invention – exceedingly
`
`rare in industrial materials design fabrication for metals to be used in their
`
`elemental forms. Ex. 1002 at ¶ 64. Rather, skilled artisans had at their disposal a
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`Attorney Docket No. 069700-5011
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`variety of metal alloy combinations, and could select from among them depending
`
`on particular design needs, such as the need for strength, rigidity, elasticity,
`
`corrosion resistance, ease of manufacture, or a low coefficient of thermal
`
`expansion. Id. at ¶¶ 65-68. Therefore, one of ordinary skill would know of a
`
`number of metal alloy combinations available for selection, depending on the
`
`needs of the carrier. Id. at ¶ 69. In short, the selection of a metal alloy based on its
`
`suitability for its intended use in the rigid body of Cowger is obvious.
`
`However, to the extent that the Board disagrees, Silverbrook 2172 discloses
`
`a “profile member 10 (which is preferably an aluminium alloy extrusion [i.e.,
`
`the claimed metal alloy])” and which “serves as a frame and/or support
`
`structure [i.e., the elongate carrier] for the printhead segment carriers 8.” Ex.
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`1005 at col. 6, ll. 4-5. Figure 2 illustrates that profile member 10 (shown in
`
`yellow below) is an elongate carrier or support structure:
`
`’4
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