UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`RUBICON COMMUNICATIONS, LP
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`Petitioner,
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`v.
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`LEGO A/S
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`Patent Owner.
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`________________________
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`Case IPR2016-01187
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`Patent 8,894,066
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`PETITIONER’S REPLY
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`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`RUBICON COMMUNICATIONS, LP
`
`Petitioner,
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`
`
`v.
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`
`
`LEGO A/S
`
`Patent Owner.
`
`________________________
`
`Case IPR2016-01187
`
`Patent 8,894,066
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`
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`PETITIONER’S REPLY
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`I.
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`Introduction
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`The ’066 Patent discloses a casing for an electronic controller. The casing
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`has a patterned surface that allows mating with “building elements,” thereby
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`enabling expression of the user’s creative preferences. Contrary to Patent Owner’s
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`assertions, Response 2, the ’066 Patent does not purport to have invented a
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`“controller.” Indeed, the Background of the ’066 Patent acknowledges the
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`prevalence of numerous types of controllers, including cellular telephones,
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`television remote controllers, and video game peripherals. ’066 Patent 1:43-47;
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`see also Declaration of Jay P. Kesan (“Decl.”), Exhibit 1036, ¶25. Properly
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`understood, the focus of the ’066 Patent is a customizable casing for a controller,
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`not any improvement to a controller itself. Decl. ¶28. The controller plays no
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`particular functional role in the ’066, other than being passively modified by the
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`recited “casing” and the “building elements” mated to it.
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`
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`In its Response, Patent Owner insists that the cited references “do not
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`disclose each and every element of the challenged claims nor do they render
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`obvious the subject matter of the ’066 Patent.” Response 1. As discussed below,
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`Petitioner disagrees, and respectfully requests cancellation of claims 1-8.
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` II. Claim Construction
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`Patent Owner proposes constructions for the controller “housing” and the
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`“casing” that receives it, for “conformably fit” and “mating,” and for “manipulate.”
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`1
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`
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`The proposed constructions of “casing” and “housing” reintroduce ambiguity
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`regarding their separability, and so require clarification. Patent Owner’s reliance
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`on “joining” in its proposed constructions of “conformably fit” and “mating”
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`likewise requires clarification to ensure Patent Owner’s preferred embodiment is
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`not excluded. Finally, Patent Owner’s construction of “manipulate” is never
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`employed and is faulty, and should therefore be rejected.
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`A.
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`Patent Owner’s proposed construction of “casing” merely requires that it be
`distinguishable from the “housing,” rather than separable or removable.
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`Patent Owner originally argued that a “casing” must be “separable from” the
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`recited “housing.” Preliminary Response (Paper 20) 20-22. The Board rejected
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`this construction, finding that Patent Owner failed to establish “why a structure
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`inseparably attached to a housing cannot constitute” the recited “casing.”
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`Institution Decision (Paper 38) 11.
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`Patent Owner now proposes that the broadest reasonable interpretation (BRI)
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`of “casing” is “[a] structure that is separate from and covers one or more surfaces
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`of the housing of the manual controller.” Response (Paper 70) 8. “Separable” is
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`absent. But in justifying its proposed construction, Patent Owner emphasizes the
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`passage of the ’066 Patent stating that “[m]ain housing 14 … is readily separable
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`from main casing 16.” Response 9 (quoting ’066 Patent 3:7-8) (Patent Owner’s
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`emphasis). Patent Owner also argues that the “casing” must be “separate and
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`2
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`distinct” from the “housing” for the former to “fit around” and “receive” the latter.
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`Response 10.
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`The ’066 Patent does state that the “casing” of Figure 1 is “separable.” But
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`the claims nowhere use language of separability or removability, and nowhere does
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`the ’066 Patent’s intrinsic record show intent to limit the claims. Indeed, the ’066
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`Patent characterizes Figure 1 as merely a “preferred embodiment,” and states that
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`“many changes may be made to the details of the above-described embodiments”
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`and “[t]he scope of the present invention should … be determined only by the
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`following claims.” ’066 Patent, 2:67; 6:45-50.
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`
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`The Federal Circuit has “repeatedly cautioned against limiting the claimed
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`invention to preferred embodiments or specific examples” absent intrinsic evidence
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`of intent to do so. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed.
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`Cir. 2015) (internal citations/quotations omitted).1 Absent such evidence, the mere
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`fact that Figure 1 discloses a separable “casing” does not entail that an inseparable
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`“casing” cannot satisfy the claim language—consistent with the Board’s original
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`statement. All that Patent Owner’s construction requires is that the “casing” be
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`distinguishable from the “housing.” Decl. ¶30.
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`1 The narrower Markman standard applied in Williamson. But if it is
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`improper to import a limitation under a narrower standard, it is equally improper to
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`do so under BRI.
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`3
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`Moreover, a “casing” that is distinguishable from a “housing” prior to final
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`assembly remains “separate and distinct” even if inseparably assembled with the
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`“housing.” Decl. ¶¶31-32. Contrary to Patent Owner’s suggestion, inseparable
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`assembly does not prevent a “casing” from “fit[ting] around” and “receiv[ing]” the
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`“housing,” as the claims require. Decl. ¶33.
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`B.
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`If “joining” is properly part of Patent Owner’s proposed constructions of
`“conformably fit” and “mating” under the BRI standard, it must encompass
`joining by abutment without requiring fastening or connection.
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`
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`Patent Owner proposes that “conformably fit” means “[j]oining of parts
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`relying on matching forms and dimensions,” and that “mating” means “[j]oining of
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`building element(s) to the patterned surface using cylindrical bosses and recesses.”
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`Response 8. Patent Owner originally contended that “conformably fit” and
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`“mating” have non-overlapping meanings, but facing skepticism from the Board,
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`Patent Owner now concedes that these terms may overlap, and that “‘mating’ could
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`constitute one way to ‘conformably fit.’” Preliminary Response 24-25; Institution
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`Decision 8-9; Response 11.
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`The dictionary definition of “join” carries connotations of linking or
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`connecting: “to put or bring together so as to form a unit” as in to “join two blocks
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`of wood with glue,” or “to come together so as to be connected” as in “the place
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`where two rivers join.” Exhibit 1038. The specification does not use the terms
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`“join,” “fasten,” “link,” “connect,” or similar terms to describe the relationship
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`4
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`between housing 14 and casing 16 in Figure 1. Indeed, Figure 1 appears to show
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`that the controller merely slides into casing 16 and is “joined” by abutment rather
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`than fastening or connection. Decl. ¶¶36-37.
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`The claims are admittedly to the “preferred embodiment” of Figure 1.
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`Response 3-5. “[A] claim construction that excludes a preferred embodiment ... is
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`rarely, if ever correct and would require highly persuasive evidentiary support.”
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`Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014)
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`(internal citation omitted). Accordingly, if “joining” is properly part of the
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`construction of “conformably fit” or “mating,” “joining” must encompass
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`engagement of surfaces that does not require fastening or connection; otherwise,
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`“joining” would impermissibly exclude the embodiment of Figure 1.2
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`C.
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`Patent Owner’s construction of “manipulate” is never applied, and
`impermissibly emphasizes optional language within a proffered dictionary
`definition while ignoring its core.
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`Patent Owner newly proposes that the term “manipulate” be construed to
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`mean “changing in a skillful manner.” Response 9. In support, Patent Owner cites
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`2 The issue discussed above—whether the claims should be limited to a
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`removable/separable casing—is distinct from and not inconsistent with the issue
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`presented here: whether the claims can be construed to exclude such a casing.
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`5
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`its dictionary definition of “to treat or operate with or as if with the hands or by
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`mechanical means especially in a skillful manner.” Id. 12 (citing Exhibit 2027).
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`Having proposed this construction, however, neither Patent Owner nor its
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`expert ever rely on it with respect to the grounds of rejection—evidencing no need
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`for this construction. For this reason alone, this construction should be rejected.
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`Beyond lacking utility, this construction is flawed. First, it is grounded in a
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`plainly optional aspect of the dictionary definition: “especially in a skillful
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`manner.” From the qualifier “especially,” one of ordinary skill would understand
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`that the definition encompasses actions that are not “skillful.” Decl. ¶39. Patent
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`Owner has not established why, under the BRI standard, the claim should be
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`narrowed to an optional part of the dictionary definition.
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`Second, “skillful” is both subjective and a term of degree for which the
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`specification provides no frame of reference. Decl. ¶40. Put simply, Patent Owner
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`proffers a construction that itself requires construction: how is “skillful” to be
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`interpreted? At best, Patent Owner’s construction is incomplete; at worst, it is
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`indefinite and therefore improper.
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`Petitioner proposes that one of ordinary skill would more correctly
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`understand “manipulate” to mean “changing with or as if with the hands, or by
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`mechanical or electronic means.” Decl. ¶41. This construction bears fidelity to the
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`core of Patent Owner’s cited dictionary definition while omitting the unnecessary
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`6
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`and unclear “skillful manner.” Further, because the ’066 Patent discloses
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`electronic controllers, “manipulate” is not properly limited to “mechanical means”;
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`thus, the proposed construction encompasses electronic controllers also. Id.
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`III. Ground III
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`A.
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`Petitioner’s identification of the “main casing” was sufficiently clear in
`context to enable Patent Owner to respond.
`Patent Owner first complains that Petitioner “did not specify which part of
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`Philo constitutes a ‘main casing’ that is distinct and separate from a ‘housing’ or
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`‘building elements.’” Response 14. Patent Owner then quotes Petitioner’s
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`statement that “[t]he main casing has Lego elements with a patterned surface
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`portion that supports a set of building elements” including “Simon color button
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`elements and lid elements mount[ed] on top of casing.”3 Id. 15 (quoting Petition
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`27). Petitioner also stated that Philo discloses “a main casing [that] conformably
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`fits around a portion of the exterior surface of the housing of the RCX brick.”
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`Petition 26.
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`The “main casing” in Philo is abundantly clear from the context provided.
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`First, Philo clearly illustrates the boundaries of the RCX brick. Moreover,
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`Petitioner identified elements corresponding to the “subset of building elements”
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`3 For clarity, Petitioner here discusses only the Brick Simon model of Philo,
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`since this model is sufficient to show anticipation.
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`7
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`(the Simon color button elements and lid elements mounted atop the casing). From
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`this context, it is evident that the main casing includes at least those elements,
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`distinct from the “subset of building elements,” that “conformably fit” the RCX
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`brick. Indeed, Patent Owner concedes that Philo shows that Lego elements
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`“contact the gray bottom and one or two sides of the RCX brick.” Response 18.
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`The fact that Patent Owner disputes that these aspects of Philo correspond to a
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`“casing” does not entail that Petitioner failed to identify them—a point buttressed
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`by the Board’s prior consideration and rejection of Patent Owner’s similar
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`complaints.
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` See Preliminary Response 43-44; Institution Decision 18-20
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`(instituting trial on Ground III).
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`B.
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`Contrary to Patent Owner’s assertion, Philo anticipates at least claims 1, 4-6,
`and 8.
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`Independent of its contentions regarding the Petition’s sufficiency, Patent
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`Owner categorically asserts that “Philo does not anticipate” any of the claims for
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`which it is offered. Response 18, 20. Petitioner responds to Patent Owner’s
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`assertions regarding anticipation as follows.
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`Claim 1:
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`Philo discloses a “casing configured to conformably fit around a portion”
`1.
`of a controller.
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`Patent Owner asserts that “Philo do[es] not show any putative casing
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`configured to conformably fit around a portion of the RCX brick,” although Patent
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`8
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`Owner concedes that “LEGO elements contact the gray bottom and one or two
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`sides of the RCX brick,” while dismissing this as “short of fitting around a portion
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`of the controller.” Response 18. Patent Owner further asserts that “no putative
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`casing is shown to join the RCX brick relying on matching forms and dimensions,
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`as the flat piece in the Brick Simon page … appears to join the RCX brick using
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`cylindrical bosses and recesses.” Response 18-19.
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`Patent Owner is mistaken.
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` Although Philo’s Brick Simon is an
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`uncomplicated example that is facially clear, Petitioner reproduces the view of
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`Philo from the Petition in annotated form to explicitly identify its inherent features:
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`9
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`Petition 25 (annotated); see also Exhibit 1017 10.
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`Philo shows that the RCX brick is the “controller” that operates the Brick
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`Simon game, which is received within a “casing” formed by other Lego elements
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`that, in this view, contact the left and bottom sides of the RCX brick. Decl. ¶43.
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`Moreover, Philo shows the Simon button elements and ornamental lid elements
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`mounted to the black Lego pieces of the “casing.” Decl. ¶44.
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`Other views of Brick Simon confirm these details. The bottom view of
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`Brick Simon is reproduced below:
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`10
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`Exhibit 1017 12 (annotated). Here, the bottom of the RCX brick is seen attached
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`to additional Lego pieces that are additional elements of the “casing.” Decl. ¶45.
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`Finally, the right side of Brick Simon is reproduced below.
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`Exhibit 1017 13 (annotated). As shown here, further Lego elements attach to the
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`bottom of the “casing” and effectively extend the “casing” to the right side of the
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`RCX brick. Decl. ¶46.
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`Philo quite clearly illustrates a “main casing” that abuts or contacts the RCX
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`brick on at least its bottom, left, and right sides. Decl. ¶47. Patent Owner concedes
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`11
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`that Lego elements make contact on the “bottom and one or two sides” of the RCX
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`brick, but offers a conclusory assertion that this is “short of fitting around a portion
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`of the controller”—citing only to its expert, who merely parrots the same assertion
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`without explanation. Response 18 (citing Knight Decl. ¶34). Patent Owner
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`proposes no construction for “portion,” the dictionary definition of which is “an
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`often limited part of a whole.” Exhibit 1039. Indeed, Patent Owner’s position on
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`“portion” contradicts its construction of “casing,” which refers to covering “one or
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`more surfaces of the housing.” Response 8. Because Brick Simon’s “casing”
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`admittedly fits around several sides of the RCX brick, one of ordinary skill would
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`readily conclude that it fits around a “portion” of the RCX brick. Decl. ¶47.
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`Moreover, the casing elements fit the RCX brick “relying on matching forms
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`and dimensions,” and so “conformably fit” under Patent Owner’s construction.
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`Patent Owner conceded that “mating” of Lego elements “could constitute one way
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`to conformably fit.” Response 11. Because the RCX brick is “mated” to Lego
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`casing elements on its bottom and right sides, the casing “conformably fits” those
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`surfaces. Decl. ¶48. Moreover, the left side of the RCX brick at least abuts the
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`black Lego casing. Decl. ¶49. The bottom and left surfaces of the RCX brick abut
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`or join the casing elements with little appreciable gap, and the front edges of the
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`RCX brick are flush with the casing at these locations. Id. Accordingly, the Brick
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`Simon casing is joined to the RCX brick “relying on matching forms and
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`12
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`dimensions,” and thus “conformably fits” at least to the same extent as the
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`preferred embodiment in Figure 1 of the ’066 Patent. Decl. ¶50.
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`Philo discloses “manipulating image[s] or symbols on the display” of a
`2.
`controller.
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`Patent Owner further asserts that “Philo does not disclose any manipulation
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`of images or symbols,” and that “[a]t most, Philo indicates that numbers are
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`displayed, without any ‘manipulating’ or change by the user.” Response 20.
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`Patent Owner is again mistaken. The Petition quotes extensively from Brick
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`Simon’s initialization procedure, in which “Brick Simon will first ask for the play
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`difficulty level. RCX LCD shows a walking 1234 pattern, waiting for a key to be
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`pressed.” Petition 26. Once selected, “[t]he chosen difficulty level is then
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`displayed as 1111, 2222, 3333 or 4444” and play begins. Id.; see also Exhibit
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`1017 12.
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`One of ordinary skill would readily understand that Brick Simon first
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`displays a pattern of numbers, which are facially “symbols.” Decl. ¶52. Further,
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`Philo explicitly states that the displayed pattern of symbols changes in response to
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`the user’s keypress to select a difficulty level. Decl. ¶53. That is, the user’s
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`keypress provides input to the RCX brick, which then changes its display of
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`symbols to confirm that input. One of ordinary skill would understand this to be
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`13
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`“changing with or as if with the hands, or by mechanical or electronic means,” and
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`thus “manipulation” of the symbols. Id.
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`Claims 2, 3:
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`For concision, Petitioner defers discussion of these claims to Ground VII,
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`below.
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`Claim 4:
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`Patent Owner asserts that “Petitioner erroneously argued Philo discloses
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`‘touch sensors,’” and that “Philo does not describe that touch sensors produce
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`signals for manipulating images or symbols.” Response 22 (citing Knight Dec.
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`¶48, which merely repeats the assertion). Patent Owner’s assertion is groundless.
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`The Petition’s discussion of claim 1 demonstrates that Brick Simon includes
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`buttons, the inherent purpose of which is to be pressed—as illustrated by the
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`annotated view of Brick Simon’s right side reproduced above, which shows such a
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`keypress. Decl. ¶54. A keypress is “user tactile manipulation” under any
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`reasonable construction of that term. Decl. ¶55. Moreover, as discussed above,
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`Philo discloses that Brick Simon’s keys are pressed to select the play difficulty
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`level, which results in “manipulating” symbols on the RCX brick display. Id. The
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`additional details cited with respect to claim 4 (from Exhibit 1017, 11) merely
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`amplify the fact that Philo meets this claim.
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`14
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`Claim 5:
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`Patent Owner asserts that “Philo does not disclose any gripping or grasping
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`of components by a user during play activity,” and that Brick Simon is “shown as
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`placed on the floor during play activity.” Response 23 (citing Knight Decl. ¶52,
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`which also asserts that Philo depicts Brick Simon as being “placed on a table”).
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`Claim 5 is broadly drafted to identify a structural characteristic, not to require
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`actual use of that structure: it merely requires that there be a “hand grip section
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`having a patterned surface portion … on which the user can grasp during play
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`activity.” Decl. ¶56. So long as Philo discloses a section that is capable of being
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`grasped by a user, is “patterned,” and is “operative[ly] connect[ed] to the main
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`casing,” then claim 5 is met. Id.
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`Philo discloses numerous such sections, including the body, lid, or prop
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`stand of Brick Simon as originally identified in the Petition. Decl. ¶57. Moreover,
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`one of ordinary skill would recognize an inherent requirement for Brick Simon to
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`be grasped or stabilized during play activity. Brick Simon’s bottom surface, as
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`shown above, is entirely constructed of rigid plastic Lego elements. Decl. ¶58.
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`One of ordinary skill would recognize that if placed on a table, as Patent Owner’s
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`expert conceded that Philo illustrates, the hard plastic bottom of Brick Simon
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`would tend to slide if a user pressed its keys with significant force, and would
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`require grasping to be stabilized. Id. Moreover, many types of movement to
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`15
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`reposition Brick Simon during “play activity” would similarly necessitate grasping,
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`for which numerous patterned surfaces of Brick Simon would be appropriate. Id.
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`Claims 6, 8:
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`Patent Owner does not separately argue these claims, thus conceding that
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`they stand or fall with claim 1. Response 23-24.
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`IV. Ground IV
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`Patent Owner takes issue with the sufficiency of Petitioner’s argument that it
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`would have been obvious to modify the RCX brick of Philo, which communicates
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`with a personal computer via infrared link according to Building Robots, to instead
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`provide communications between the RCX brick and a cellular telephone “to allow
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`users to interact with the [RCX brick] by a more portable device than a personal
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`computer.” Petition 31; Response 24-27. Principally, Patent Owner argues that it
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`is improper to infer the existence of a cellular telephone under Arendi, that
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`“Building Robots teaches away from using a non-infrared source of control,” and
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`that secondary considerations support a finding of nonobviousness. Response 25-
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`27. Petitioner responds to these positions as follows.
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`A.
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`Arendi is distinguishable from the facts presented here.
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`Arendi held that it was improper to infer the presence of a missing claim
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`limitation where the missing feature “plays a major role in the subject matter
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`claimed.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).
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`16
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`Specifically, the missing feature in Arendi related to a particular manner of
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`performing a search, such that if omitted, “the claims would be almost void of
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`content because the premise of the patent is to use information in a first program to
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`find related information in a second program.” Id. (internal quotations omitted).
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`In reviewing precedent, the Arendi panel reemphasized the significance of the
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`omitted limitation when considering the propriety of inferring its presence,
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`characterizing the inquiry as whether the missing feature is “an important structural
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`limitation that is not evidently and indisputably within the common knowledge of
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`those skilled in the art.” Id. 1363 (quoting K/S HIMPP v. Hear-Wear Technologies,
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`LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014) (emphasis omitted). By contrast,
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`the court was considerably less concerned about inferring a limitation when “the
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`limitation in question was unusually simple and the technology particularly
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`straightforward.” Arendi 1362 (citing Perfect Web Techs., Inc. v. InfoUSA, Inc.,
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`587 F.3d 1324, 1326 (Fed. Cir. 2009)).
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`Arendi is distinguishable from the present facts. First, unlike Arendi, the
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`cellular telephone of claim 7 does not “play[] a major role in the subject matter
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`claimed.” The ’066 Patent does not purport to have invented the cellular
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`telephone—and could not have, given that cellular telephony was unquestionably
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`common knowledge well prior to the ’066 Patent’s 2006 priority date, as its
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`background section suggests. ’066 Patent 1:38-43. Unlike Arendi, omitting the
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`17
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`
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`cellular telephone does not render the claims “almost void of content,” because the
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`“premise” of the ’066 Patent is not cellular telephony or even controllers per se.
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`Rather, the ’066 Patent is principally directed to a customizable casing, the
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`patterned surface of which “facilitat[es] user preference in creative design of a
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`controller.” ’066 Patent, Title (emphasis added); Decl. ¶59. That is, the “premise”
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`of the ’066 Patent is to provide, for a controller, a casing having certain
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`customizable properties. Decl ¶59. The controller’s role is passive—to be
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`“received” by the casing. Considering claim 7 specifically, the recited cellular
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`telephone performs no particular role beyond existing in its conventional form
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`within the context of claim 1’s “casing.” Accordingly, as recited in claim 7, the
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`role of the cellular telephone is indeed “unusually simple.” Decl. ¶61.
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`As to the “common knowledge” status of the proposed modification of Philo
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`in view of Building Robots, the use of infrared technology to communicate digital
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`information—as employed by the RCX brick—is a notoriously old and well-
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`known technology, having existed since at least 1978. Decl. ¶62; Exhibit 1041.
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`The applicability of infrared technology for digital communication by cellular
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`telephones was well known since at least 1994—12 years prior to the ’066 Patent’s
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`2006 priority date. Decl. ¶63; Exhibit 1042. One specific example of such a
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`cellular telephone was the palmOne Treo 650, widely available in 2005, which
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`18
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`included an infrared port for “‘beaming’ information and software between
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`devices.” Decl. ¶64; Exhibit 1043.
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`In summary, the “cellular telephone” feature of claim 7 does not “play[] a
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`major role” in that claim, being peripheral to the “premise” of the ’066 Patent.
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`Moreover, the proposed modification to replace the personal computer of Building
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`Robots with a cellular telephone, to communicate via infrared with the RCX brick,
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`involves only the use of old techniques well within the common knowledge of one
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`of ordinary skill to obtain predictable results. Decl. ¶65, 67. Further, contrary to
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`Patent Owner’s assertion, Petitioner provided a reasoned motivation to perform the
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`modification: in order communicate with the RCX brick via a “more portable
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`device than a personal computer.” Petition 31; Decl. ¶66. (While this is a facially
`
`sufficient motivation, Petitioner did further state that Building Robots discusses
`
`contests at competition sites, and that “[i]n such settings, small, portable devices to
`
`interact with the RCX brick would clearly be desirable.” Petition 23-24; Response
`
`25.) Therefore, this case is readily distinguishable from Arendi.
`
`B.
`
`Patent Owner’s “teaching away” argument is fallacious.
`
`
`
`Patent Owner asserts that “Building Robots teaches away from using a non-
`
`infrared source of control,” citing its expert’s statement that “[u]se of a non-
`
`adaptable technology such as cellular communications would destroy [the]
`
`additional capability of the RCX brick” to use its infrared LED as “a sort of radar.”
`
`19
`
`
`
`Response 27 (citing Knight Decl. ¶63). First, the Petition proposed replacing the
`
`personal computer of Building Robots with a cellular telephone; it did not propose
`
`replacing the infrared communication capabilities of the RCX brick with radio
`
`frequency technology. Petition 31. “Using a non-infrared source of control” is
`
`therefore a strawman. Second, to the extent that Patent Owner alleges that cellular
`
`telephone technology is incompatible with infrared technology, this conclusion is
`
`flatly contradicted by the evidence cited above, which demonstrates general and
`
`specific examples of cellular phones with infrared capabilities.
`
`C.
`
`
`
`
`Patent Owner’s assertions of secondary considerations lack evidence,
`relevance, and nexus.
`
`Patent Owner asserts that secondary considerations support a finding of
`
`nonobviousness, referring first to the fact that Petitioner obtained its own patent on
`
`a configurable phone casing, and second to alleged “widespread professional
`
`recognition” of the subject matter of the ’066 Patent, citing to a single Engadget
`
`article. Response 27-28. First, Patent Owner does not even allege that Petitioner’s
`
`patent resulted from copying, much less adduce evidence to that effect. Second,
`
`one article hardly amounts to “widespread professional recognition,” and more
`
`damningly, this article refers only to a Wii controller and makes no mention of the
`
`cellular telephone that is recited in claim 7. Decl. ¶68.
`
`20
`
`
`
`“For objective indicia evidence to be accorded substantial weight … a nexus
`
`must exist between the evidence and the merits of the claimed invention.”
`
`Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017). Patent
`
`Owner does not demonstrate the required nexus, or even present competent
`
`evidence to support its allegations of secondary considerations.
`
`V. Ground VII
`
`
`
`Beyond faulting the adequacy of the Petition, Patent Owner categorically
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`asserts that “Anderson does not disclose[] each and every limitation of Claims 1-4,
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`6, and 8 of the ’066 Patent.” Response 28. Petitioner responds to this assertion as
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`follows.
`
`Claim 1:
`
`
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`Patent Owner first asserts that “Anderson does not disclose a ‘casing’ that is
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`distinct and separate from the housing of the controller and, instead, it merely
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`shows that the controller may be disposed within a putative casing,” concluding
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`from this that “Anderson does not disclose a casing that is configured to ‘receive’
`
`the controller housing.” Response 28-29. Second, Patent Owner asserts that
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`Anderson “does not disclose the putative casing is configured to ‘conformably fit’
`
`relying on matching forms and dimensions,” and more specifically, because
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`Anderson’s “entire controller is disposed within the putative casing, it does not
`
`21
`
`
`
`disclose that the putative casing conformably fits around a portion of the
`
`controller.” Response 30-31 (original emphasis). Patent Owner is mistaken.
`
`A. Anderson discloses a “casing” that is distinct and separate from, and
`receives, a controller “housing.”
`
`
`
`
`As discussed in Section II.A above, Patent Owner’s constructions of
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`“casing” and “housing” only require that these structures be distinguishable.
`
`Anderson [0037] discusses controller 106 of FIG. 1 in greater detail with respect to
`
`FIG. 4, which shows an “exemplary embodiment” of construction elements “for
`
`assembly of a physical model as described in the discussion of FIGS. 1 through 3.”
`
`
`
`22
`
`
`
`Controller 406, which corresponds to controller 106, can be a “microcontroller or
`
`microprocessor.” Anderson [0037]. These devices are inherently known to have
`
`packages that protect and interface to the integrated circuit within. Decl. ¶71;
`
`Exhibit 1044, FIGs. 1A-1C. Therefore, controller 406 would inherently have an
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`“exterior shell”—its package—that “covers the internal electronics of the
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`controller”—the integrated circuit—and is thus a “housing” under Patent Owner’s
`
`construction. Decl. ¶72.
`
`
`
`Moreover, element 404 (which corresponds to one of the multiple elements
`
`102 of FIG. 1) is “a structure separate from” controller 406, and “covers one or
`
`more surfaces” of the package, or “housing,” of controller 406. Element 404 is
`
`therefore a “casing” under Patent Owner’s construction. Decl. ¶73. Even if
`
`element 404 completely and inseparably encloses controller 406, these elements
`
`nevertheless remain identifiably distinct. Id. Thus, Anderson discloses both the
`
`recited “casing” and “housing.”
`
`
`
`As to whether Anderson’s “casing” “receive[s]” the identified “housing,”
`
`Patent Owner proposes no construction for “receive” and cites its dictionary
`
`definition as “to act as a receptacle or container for.” Response 10 (fn.7). Anderson
`
`indisputably shows that controller 406 is situated within element 404. Whether
`
`controller 406 is entirely encased within element 404 (e.g., molded) or simply
`
`23
`
`
`
`fitted into a recess, element 404 “act[s] as a receptacle or container for” controller
`
`406, and thus “receives” controller 406. Decl. ¶73.
`
`B. Anderson’s “casing” “conformably fit[s] around a portion of the exterior
`surface of … the housing.”
`
`
`
`
`Anderson’s FIG. 4 and corresponding discussion expands on corresponding
`
`elements of FIG. 1. Anderson shows controller 406, having a “housing” as
`
`discussed above, as being surrounded on at least the top and sides by the building
`
`element 404 in which the controller is situated. Regardless of whether the
`
`controller is entirely encased or only partially enclosed by element 404, to be
`
`retained within element 404, one of ordinary skill would recognize controller 406
`
`to be “joined” to element 404 “relying on matching forms and dimensions” of
`
`controller 406. Decl. ¶74.
`
`
`
`Anderson illustrates this in FIG. 6, which shows a cross-sectional view of
`
`construction elements 602-604.
`
`24
`
`
`
`
`
`
`
`Although these elements are shaped differently than element 404, they “include[] a
`
`memory device 606, or alternately, a controller … as described in the discussion of
`
`FIG[]. 4.” Anderson [0044]. As shown, device 606—which, as Anderson states,
`
`encompasses controller 406—is enclosed on at least four sides by the material of
`
`element 602. That is,
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