Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: December 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`
`v.
`
`LEGO A/S,
`Patent Owner.
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 38
`Entered: December 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`
`v.
`
`LEGO A/S,
`Patent Owner.
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`I. INTRODUCTION
`
`A. Background
`Rubicon Communications, LP (“Petitioner”) filed a Petition
`requesting an inter partes review of claims 1–8 of U.S. Patent
`No. 8,894,066 B2 (Ex. 1001, “the ’066 patent”). Paper 1 (“Pet.”). Patent
`Owner, LEGO A/S, filed a Corrected Preliminary Response. Paper 20
`(“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`After considering the Petition and Preliminary Response, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the unpatentability of claims 1–8. Accordingly, we
`institute inter partes review of these challenged claims.
`
`B. Related Matters
`The ’066 patent has been asserted in Lego Systems A/S v. Rubicon
`Communications, LP dba Smallworks and Smallworks, LLC, Case No. 3:15-
`cv-00823 (VLB) (D. Connecticut). See Pet. 5; see Paper 5, 2.
`
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`Patent 8,894,066 B2
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`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–8 of the ’066 patent are unpatentable
`based on the following grounds:
`Ground
`Reference(s)
`
`Challenged Claim(s)
`
`I
`
`II
`
`III
`
`IV
`
`V
`
`VI
`
`Building Robots1
`
`Building Robots
`
`Philo2
`
`Philo and Building
`Robots
`Philo, Building
`Robots, and
`Gasperi4
`Shackleford6
`
`VII
`
`Anderson7
`
`Statutory
`Basis
`35 U.S.C.
`§ 102(b)
`35 U.S.C.
`§ 103(a)
`35 U.S.C.
`§ 102(b)
`35 U.S.C.
`§ 103(a)
`35 U.S.C.
`§ 103(a)
`
`1–6 and 8
`
`1–8
`
`1–6 and 8
`
`73
`
`2 and 35
`
`35 U.S.C.
`§ 102(b)
`35 U.S.C.
`§ 102(b)
`
`1–4, 6, and 8
`
`1–4, 6, and 8
`
`
`1 Mario Ferrari et al., Building Robots with Lego® MindstormsTM: The
`ULTIMATE Tool for Mindstorms Maniacs!, published 2002 (Exhibit B1).
`2 Philo’s Home page, www.philohome.com (Exhibit B2).
`3 On page 7, the Petition identifies claims 1–8 as challenged based on Philo
`in combination with Building Robots. The Petition’s substantive discussion
`of this challenge, however, only discusses claim 7. Pet. 31.
`4 Dave Baum et al., Gasperi’s Mindstorms RCX Sensor Input Page,
`www.plazaearth.com/usr/gasperi/lego.htm (Exhibit B3).
`5 Page 7 of the Petition indicates that this challenge addresses claims 2–4,
`but the substantive explanation of this challenge on pages 32–33 of the
`Petition discusses only claims 2 and 3.
`6 U.S. Patent No. 6,443,796 (Exhibit B4).
`7 U.S. Patent Publication 2002/0196250 A1 (Exhibit B5).
`
`3
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`Case IPR2016-01187
`Patent 8,894,066 B2
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`Ground
`
`Reference(s)
`
`VIII Anderson and Xbox
`Forums8
`
`Statutory
`Basis
`35 U.S.C.
`§ 103(a)
`
`8
`
`Challenged Claim(s)
`
`D. The ’066 Patent
`The ’066 patent “relates to a manual controller for manipulating
`images or symbols on a visual display and, in particular, to a controller that
`can be constructed with user-arranged matable building elements to exhibit a
`customized shape and style depending on user game-inspired, ergonomic, or
`appearance preferences.” Ex. A1, 1:29–34.9 The ’066 patent discusses one
`example in connection with Figure 1, which is reproduced below.
`
`
`8 Xbox Forums web page (Exhibit B6).
`9 For Petitioner’s future reference, as noted by Patent Owner (Prelim.
`Resp. 15), Petitioner’s exhibit-labeling scheme does not comply with
`37 C.F.R. § 42.63(c). In this case, with the current record having extensive
`citations to Petitioner’s exhibits as initially labeled, we waive the
`requirements of 37 C.F.R. § 42.63(c). See 37 C.F.R. § 42.5(b)
`
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`Figure 1 shows manual controller 10 left-hand grip 30, and right-hand
`grip 32. Id. at 3:5–7, 3:18–20. Manual controller 10 includes main
`housing 14 and main casing 16, which “conformably fits around the side
`surface of main housing 14.” Id. at 3:5–7. Main casing 16 includes
`patterned surface portion 20, which includes cylindrical mating features or
`bosses 80. Id. at 3:11–12, 3:35–38. Each hand grip 30, 32 has
`corresponding recesses 84 for snugly attaching hand grips 30, 32 to bosses
`80 on main casing 16. Id. at 3:38–45.
`
`E. Illustrative Claim
`Claim 1 is independent. Each of the other challenged claims depends
`from claim 1. Claim 1 is illustrative and recites:
`
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`1. A method of facilitating user preference in creative design of
`a controller for manipulating images or symbols on a display, the
`controller having a housing with an exterior surface and an
`interior region confining electrical components for producing
`signals for manipulating image or symbols on the display,
`comprising
`providing a main casing configured to conformably fit around a
`portion of the exterior surface of and thereby receive the
`housing of the controller, the main casing having a patterned
`surface portion configured to support a set of building
`elements that are configurable for mating to the patterned
`surface portion; and
`providing in the set of building elements a subset of building
`elements that are matable to one another and configured for a
`user to build on the patterned surface portion of the main
`casing a customized replica of at least a portion of a play item
`and thereby transform the exterior surface of the housing of
`the controller to a customized shape and appearance in
`accordance with the user's preference.
`Ex. A1, 6:52–7:4.
`
`II. ANALYSIS
`
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). We presume a claim term carries its
`“ordinary and customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007) (citation and quotations omitted). This presumption, however, is
`rebutted when the patentee acts as his own lexicographer by giving the term
`a particular meaning in the specification with “reasonable clarity,
`
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`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner and Patent Owner address the construction of a number of
`claim terms. Pet. 11–14; Prelim. Resp. 16–25. For purposes of this
`decision, we address only certain terms and only to the extent necessary to
`resolve whether there is a reasonable likelihood of Petitioner prevailing on
`its claim challenges. See 35 U.S.C. § 314(a); Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`1. “conformably fit” and “mating”
`Claim 1 recites a “casing configured to conformably fit around a
`portion of the exterior surface of . . . the housing of the controller” and “a
`subset of building elements matable to one another.” Ex. A1, 6:58–60,
`6:64–65 (emphases added). Petitioner does not proffer a construction for
`either “conformably fit” or “matable.” See Pet. 11–14.
`Apparently referring to the claim term “matable,” Patent Owner
`argues that “mating” means “joining building element(s), such as LEGO
`bricks, to the patterned surface with the use of the cylindrical bosses and
`recesses.” Prelim. Resp. 23. In support of this construction, Patent Owner
`quotes the ’066 patent’s disclosure at column 3, lines 41–45 that “[t]he
`diameter and depth of each recess 84 and the spacing distances between
`adjacent ones of recesses 84 are established so that recesses 84 mate with
`corresponding bosses 80 and provide a snug, releasable attachment of each
`of hand grips 30 and 32 to main casing 16.” Id. Patent Owner also asserts
`that “[t]he ordinary and accustomed meaning of the term also supports such
`
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`a construction” (Prelim. Resp. 24), citing Ms. Knight’s testimony that
`“[f]rom my examination of the ’066 Patent, I confirm the broadest
`reasonable interpretation of the term ‘mating’ is ‘joining of building
`elements to the patterned surface using cylindrical bosses and recesses.’”
`Ex. 2006 ¶ 20.
`Patent Owner argues that “conformably fit” means “joining parts
`relying on matching forms and dimensions.” Prelim. Resp. 24. In support
`of this assertion, Patent Owner quotes the ’066 patent’s disclosure at
`column 3, lines 5–14 that “a main casing . . . conformably fits around the
`side surface of main housing 14.” Id. Patent Owner also cites Ms. Knight’s
`testimony that “[f]rom my examination of the ’066 Patent, I confirm the
`broadest reasonable interpretation of the term ‘conformably fit’ is ‘joining of
`parts relying on matching forms and dimensions.’” Ex. 2006 ¶ 19; Prelim.
`Resp. 24.
`Patent Owner further argues that “mating” and “conformably fit” have
`two distinct meanings. Prelim. Resp. 24. Patent Owner asserts that:
`There is no instance of a “casing” configured to “mate” to a
`“housing,” or of building elements that “conformably fit” around
`a patterned surface portion. Doing so would be inconsistent with
`the claimed inventions of the ’066 Patent, as it would effectively
`render the term ‘casing’ to be indistinguishable from building
`elements.
`Id. at 24–25.
`At this stage, we are not persuaded that the broadest reasonable
`interpretations of “conformably fit” and “mating” are the constructions
`proffered by Patent Owner. Consistent with Patent Owner’s arguments, the
`’066 patent contains an example in which bosses 80 and recesses 84 “mate”
`with one another. Ex. A1, 3:41–45. But the evidence and arguments
`
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`Patent 8,894,066 B2
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`presented by Patent Owner do not persuade us that we should import this
`example into the claims as a limitation. For instance, the testimony of Ms.
`Knight cited by Patent Owner provides no reasoning or underlying evidence
`to support her conclusion regarding the meaning of “mating.” See Ex. 2006
`¶ 20.
`
`Regarding “conformably fit,” Patent Owner provides no explanation
`of how the ’066 patent’s disclosure that “a main casing 16 . . . conformably
`fits around the side surface of main housing 14” indicates that “conformably
`fit” refers to “joining parts relying on matching forms and dimensions.” See
`Prelim. Resp. 24. And again, Ms. Knight’s testimony regarding this claim
`term offers no reasoning or evidence to support her conclusion regarding the
`meaning of the term. See Ex. 2006 ¶ 19.
`Furthermore, assuming, arguendo, that “mating” and “conformably
`fit” mean different things, we do not necessarily agree with Patent Owner’s
`implication that the terms must have mutually exclusive scopes. Indeed, the
`Patent Owner’s proffered constructions of the terms appear to have
`overlapping scope. In particular, it would appear that joining with
`cylindrical bosses and recesses would constitute an example (or subset) of
`joining relying on matching forms and dimensions. Thus, under Patent
`Owner’s proffered constructions, “mating” would appear to constitute one
`way to “conformably fit” parts to one another, and there may exist other
`ways to “conformably fit” parts to one another.
`Similarly, we do not find persuasive Patent Owner’s concern about
`“render[ing] the term ‘casing’ indistinguishable from ‘building elements.’”
`See Prelim. Resp. 24–25. Here again, assuming that the terms “casing” and
`“building elements” have different meanings, that does not dictate that they
`
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`have mutually exclusive scopes. At this stage, Patent Owner does not
`provide reasoning or evidence that would persuade us that the terms
`“casing” and “building elements” cannot overlap in scope. Accordingly,
`Patent Owner’s arguments do not persuade us that the terms “conformably
`fit” and “mating” are mutually exclusive in scope.
`
`2. “casing”
`Petitioner does not proffer a construction for the claim term “casing.”
`See Pet. 11–14. Patent Owner asserts that “casing” means “[a] structure that
`is separable from and covers one or more surfaces of the housing of the
`manual controller.” Prelim. Resp. 20. Patent Owner asserts that this
`construction is “consistent with the intrinsic record and agreed to by the
`Petitioner and Smallworks, LLC in the co-pending related action.” Id. at 21
`(citing Ex. 2008; Ex. A1, Fig. 1). Patent Owner’s proffered construction for
`“casing” is, in fact, the same construction to which Patent Owner and
`Petitioner stipulated for the term “casing” in the related district court
`proceeding. See Ex. 2008, 15–16. Noting that district courts use a different
`claim construction standard, Patent Owner nonetheless asserts that the
`stipulated construction from the district court proceeding is also the broadest
`reasonable interpretation of “casing.” Prelim. Resp. 21.
`Patent Owner explains that the ’066 patent discloses a “casing” and
`“housing” separable from one another. Id. at 21–22. Patent Owner asserts
`that “LEGO’s expert, Elizabeth Knight, found it is important that a ‘casing’
`be separable from a ‘housing;’ otherwise, ‘casing becomes another layer of
`‘housing’ and not configurable to ‘receive the housing of the controller.’”
`Id. at 22 (citing Ex. 2006 ¶¶ 17, 18; Ex. A1, Fig. 1).
`
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`At this stage, we are not persuaded that the broadest reasonable
`interpretation of “casing” requires the casing to be separable from the
`housing. Regarding the meaning of “casing,” Ms. Knight testifies only that
`“[f]rom my examination of the ’066 Patent, I confirm the broadest
`reasonable interpretation of the term ‘casing’ is ‘a structure that is separable
`from and covers one or more surfaces of the housing of the manual
`controller.’” Ex. 2006 ¶ 18. Contrary to Patent Owner’s suggestion, this
`does not indicate that it is important that a casing be separable from a
`housing, much less provide a reason why. Regarding Patent Owner’s
`attorney argument that it is important for a casing to be separable from a
`housing, Patent Owner provides no reasoning or evidence to explain why a
`structure inseparably attached to a housing cannot constitute a “casing
`configured to conformably fit around a portion of the exterior surface of and
`thereby receive the housing.” See Prelim. Resp. 22.
`
`B. Smallworks, LLC as Real Party-In-Interest
`Patent Owner argues that, in violation of 35 U.S.C. § 312(a)(2), the
`Petition fails to list Smallworks, LLC as a real party-in-interest. Prelim.
`Resp. 9–16. Concurrent with this decision, we have authorized Petitioner to
`file a corrected Petition listing Smallworks, LLC as a real party-in-interest,
`while maintaining the June 10, 2016 filing date of the Petition. Accordingly,
`Patent Owner’s argument that Smallworks, LLC should have been listed as a
`real party-in-interest is moot.
`
`C. Patent Owner’s Assertion That Petitioner Did Not Submit
`References
`Patent Owner argues that Petitioner “frequently cited from but did not
`submit” Anderson (Exhibit B5) or chapter 17 of Building Robots (Exhibit
`
`11
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`B1). Prelim. Resp. 26. Patent Owner asserts that Petitioner entered
`Anderson in the record “nearly two months after filing the Petition.” Id. at
`27.
`
`Anderson is a published U.S. Patent Application, readily accessible
`through various resources. Petitioner’s late filing of Anderson appears not
`to have prejudiced Patent Owner’s ability to locate Anderson and respond to
`Petitioner’s substantive allegations regarding Anderson, given that the
`Preliminary Response contains substantive discussion of the contents of
`Anderson. See Prelim. Resp. 49–52. In view of this, we excuse Petitioner’s
`late filing because we determine that it is in the interests of justice to
`consider Anderson and Petitioner’s challenges based on Anderson. See
`37 C.F.R. § 42.5(c)(3).
`It appears Petitioner never entered into the record chapter 17 of
`Building Robots. Accordingly, we will not consider on the merits any
`citation within the Petition to Chapter 17 of Building Robots.
`
`D. Patent Owner’s Argument That Petitioner Did Not Authenticate
`References
`Patent Owner argues that Philo, Gasperi, and Xbox Forums are
`inadmissible because Petitioner did not authenticate them. Prelim.
`Resp. 27–29. Philo and Gasperi bear the logo of the Internet Archive’s
`Wayback Machine, as well as a URL indicating the Internet Archive as the
`source. See Ex. B2,1; Ex. B3, 1. At this stage of the proceeding, in view of
`the content of Philo and Gasperi, we determine that Petitioner has made a
`sufficient threshold showing regarding the authenticity of Philo and Gasperi.
`To the extent Patent Owner timely objects to Philo and Gasperi under 37
`C.F.R. § 42.64(b)(1) after the entry of this Decision, however, Patent Owner
`
`12
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`Case IPR2016-01187
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`may still challenge the authenticity of Philo and Gasperi with a Motion to
`Exclude.
`Regarding Xbox Forums (Exhibit B6), we agree with Patent Owner
`that the evidence provides insufficient indicia of authenticity. In contrast to
`Philo and Gasperi, Xbox Forums does not bear the logo or a URL indicating
`the Internet Archive as a source. See Ex. B6, 1–8. Additionally, the Xbox
`forums bears multiple dates, including dates in 2005, as well as May 26,
`2011. Id. And Petitioner provides no evidence other than the exhibit itself,
`nor any explanation to demonstrate authenticity of the Xbox Forums.
`
`E. Patent Owner’s Argument That Petitioner Did Not Show
`References Are Printed Publications
`Patent Owner argues that Petitioner did not demonstrate Philo and
`Gasperi are printed publications.10 Prelim. Resp. 30–31. Patent Owner
`argues that the presence of a webpage on the Internet does not make a
`webpage publicly accessible. Id. Patent Owner cites other Board decisions
`that denied institution of petitions due to inadequate evidence of public
`accessibility.
`With respect to Philo and Gasperi, we find Patent Owner’s arguments
`unpersuasive at this stage of the proceeding. As noted above, Philo and
`Gasperi bear the logo of the Internet Archive’s Wayback Machine, as well as
`a URL indicating the Internet Archive as the source. See Ex. B2,1; Ex. B3,
`1. This constitutes at least an initial indication of public accessibility of
`Philo and Gasperi. In view of the content of Philo and Gasperi, we
`
`
`10 Patent Owner’s argument regarding public accessibility of Xbox Forums
`is moot in view of our determination that there is not a reasonable likelihood
`of Petitioner prevailing regarding the authenticity of Xbox Forums.
`
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`determine Petitioner has made a sufficient threshold showing, for purposes
`of this Decision, regarding the public accessibility of Philo and Gasperi.
`The evidentiary record, including evidence regarding the public accessibility
`of Philo and Gasperi, may be further developed over the course of the trial.
`See Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharma. Inc., 825
`F.3d 1360, 1367 (Fed. Cir. 2016) (“The development of evidence in the
`course of the trial is in keeping with the oppositional nature of an inter
`partes review proceeding. . . . The purpose of the trial in an inter partes
`review proceeding is to give the parties an opportunity to build a record by
`introducing evidence—not simply to weigh evidence of which the Board is
`already aware.”).
`Cases cited by Patent Owner where institution was denied because of
`insufficient evidence of public accessibility differ from the facts of the
`present case. For example, in Cisco Systems, Inc. v. Constellation Techs.,
`IPR2014-00871, it was determined that there was insufficient evidence of
`public accessibility of a reference that was “an Internet-Draft, which was
`‘valid’ for only a limited time and was deemed inappropriate for citation.”
`IPR2014-00871, Paper 12 at 9 (P.T.A.B. Dec. 19, 2014).
`
`F. Patent Owner’s Argument That Petitioner Did Not Demonstrate
`References Are Prior Art
`Patent Owner argues that Petitioner did not demonstrate that Building
`Robots, Philo, and Gasperi are prior art to the challenged claims of the ’066
`patent. Prelim. Resp. 31–34. Petitioner notes that Building Robots bears a
`copyright date of 2002. Pet. 14; see Ex. B1, 3. Philo and Gasperi bear dates
`in their upper right corners. See Ex. B2, 2; Ex. B3, 2. These dates appear
`within a header bearing the Wayback Machine logo. Id. Patent Owner
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`argues that the dates appearing in Building Robots, Philo, and Gasperi are
`inadmissible hearsay. Prelim. Resp. 31–33.
`At this stage of the proceeding, we find Patent Owner’s arguments
`unpersuasive. We deem the copyright date in Building Robots and the dates
`in the upper right corners of Philo and Gasperi sufficient indicia of the dates
`of these references the references are prior art to the challenged claims for
`purposes of this Decision. To the extent Patent Owner timely objects to
`Philo and Gasperi under 37 C.F.R. § 42.64(b)(1) after the entry of this
`Decision, however, Patent Owner may still challenge the authenticity of
`Philo and Gasperi with a Motion to Exclude. We further note that it remains
`to be determined whether, on the fuller record expected at the completion of
`trial, Petitioner will have demonstrated by a preponderance of the evidence
`that Building Robots, Philo, and Gasperi are prior art to the challenged
`claims.
`
`G. Alleged Anticipation by Building Robots
`Petitioner asserts that Building Robots discloses each of the
`limitations in claims 1–6 and 8, citing to record evidence. Pet. 13–15, 23–
`31, 37–38, 40–46. With respect to the claim 1 limitation of “providing a
`main casing configured to conformably fit around a portion of the exterior
`surface of and thereby receive the housing of the controller,” Petitioner
`states that “Building Robots discloses a main casing that conformably fits
`around a portion of the exterior surface of the housing.” Pet. 17. In support
`
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`of this assertion, Petitioner cites Figures 18.1 and 18.2 of Building Robots.11
`Id. Petitioner elaborates that:
`The main casing has Lego elements with a patterned surface
`portion that supports a set of building elements that mate to the
`patterned surface portion. See, for example, id., Figure 18.1 and
`17.8 (above), in which Lego elements are stacked on Lego
`elements forming the portion of the casing that receives the RCX
`brick.
`Id. at 18.
`
`Regarding the claim 1 limitation “providing in the set of
`building elements a subset of building elements,” Petitioner asserts
`that “Building Robots discloses a subset of building elements.” Id. In
`support of this assertion, Petitioner cites Figures 18.1, 18.12, and 21.1
`of Building Robots.12 Id.
`
`Patent Owner argues the Petition does not explain adequately
`how Building Robots discloses the limitations of claim 1. Prelim.
`Resp. 36–39 (citing 37 C.F.R. § 42.22(a)(2) (requiring the Petition to
`provide “a detailed explanation of the significance of the evidence”);
`37 C.F.R. § 42.104(b)(4) (requiring that “[t]he petition must specify
`where each element of the claim is found in the prior art patents or
`printed publications relied upon”)). We agree.
`
`
`11 Petitioner also cites Figures 17.8 and 17.13 of Building Robots, but those
`figures appear in chapter 17 of Building Robots, which Petitioner has not
`submitted into evidence. Accordingly, we do not consider Figures 17.8 and
`17.13.
`12 Here again, we do not consider Petitioner’s citation to Figure 17.8, as
`Petitioner has not entered chapter 17 of Building Robots into evidence.
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`With respect to the recited “subset of building elements,” in
`particular, the Petition provides no explanation of which part of the
`cited figures allegedly discloses these elements. See Pet. 18–19. The
`Petition cites Figure 18.1 as disclosing both the “subset of building
`elements” and the “casing” of claim 1, without providing any
`indication of how we might distinguish between the parts that
`allegedly constitute the “subset of building elements” and the parts
`that allegedly constitute the “casing.” Id. With respect to Figures
`18.12, and 21.1, the Petition never clearly asserts that these figures
`disclose the claimed “casing,” much less provide any explanation of
`how to distinguish between any parts of these figures that might
`disclose the “casing” versus the “subset of building elements.” For
`these reasons, we do not institute trial with respect to Petitioner’s
`challenge of claims 1–6 and 8.
`
`H. Alleged Obviousness Over Building Robots
`Petitioner asserts that claims 1–6 and 8 would have been obvious in
`view of Building Robots. Pet. 22–23. Petitioner advances this challenge as
`an alternative to its assertion that Building Robots anticipates claims 1–6 and
`8. See id. at 22. To the extent Building Robots does not anticipate the
`claims, Petitioner argues, “the collective teachings of Building Robots
`nevertheless would be readily combinable by one of ordinary skill to yield
`the claimed subject matter.” Id.
`Petitioner argues that claim 7 would also have been obvious over
`Building Robots. Id. at 23–24. Petitioner notes that Building Robots
`discloses a communication link between a personal computer and the RCX
`brick. Id. at 23. Petitioner asserts that it would have been obvious to
`
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`Case IPR2016-01187
`Patent 8,894,066 B2
`
`provide a communication link between a cellular telephone and the RCX
`brick to enable users to interact with the RCX brick using a more portable
`device. Id.
`Neither Petitioner’s assertions regarding the obviousness of claims 1–
`6 and 8 nor Petitioner’s assertions regarding the obviousness of claim 7
`cures the problems discussed in Section II.G with Petitioner’s explanation of
`how Building Robots allegedly discloses the limitations of claim 1.
`Accordingly, we do not institute trial on Petitioner’s challenge of claims 1–8
`as allegedly obvious over Building Robots.
`
`I. Alleged Anticipation by Philo
`Petitioner explains how it believes Philo discloses the limitations of
`each of claims 1–6 and 8, citing to record evidence. Pet. 24–31. Patent
`Owner asserts that Petitioner has not demonstrated how Philo anticipates the
`challenged claims. Prelim. Resp. 43–44. Petitioner’s explanation and
`evidence persuade us that there is a reasonable likelihood of Petitioner
`prevailing on its challenge of claims 1–6 and 8 as anticipated by Philo. At
`this stage, we find Patent Owner’s arguments to the contrary unpersuasive.
`Petitioner indicates the RCX brick disclosed in Philo corresponds to
`the “controller having a housing” in claim 1. See Pet. 25–26. Regarding the
`claimed “casing” and “subset of building elements,” Petitioner cites Philo’s
`Brick Simon page and Rack and steering car page. Id. at 26–27. Regarding
`the Brick Simon page, Petitioner indicates that the claimed “subset of
`building elements” include the “Simon color button elements and lid
`elements” mounted on top of other Lego elements that compose the claimed
`“casing.” Id. at 26–27. Regarding the Rack and Pinion Steering Car page,
`Petitioner indicates that the “subset of building elements” include the “car
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`Patent 8,894,066 B2
`
`roof, hood, fenders, and accessories,” and other Lego building elements
`adjacent the RCX brick compose the “casing.” Id.
`Patent Owner argues that Petitioner did not explain adequately how
`Philo allegedly discloses the limitations of the challenged claims, and that
`Philo “does not disclose at least two material limitations, ‘casing’ and
`‘conformably fit,’ from claim 1.” Prelim. Resp. 43–44. Similarly, Ms.
`Knight testifies that “Philo’s Home Page does not disclose a ‘casing’ that
`‘conformably’ fits around a ‘housing’ of a controller.” Ex. 2006 ¶ 24.
`Patent Owner reasons that assuming the alleged “casing” in Philo includes
`LEGO bricks adjacent the RCX brick, “the casing then (1) is not
`distinguishable from building elements and (2) is reliant on cylindrical
`bosses and recesses for joining instead of matching forms and dimensions.”
`Prelim. Resp. 44.
`Contrary to the thrust of Patent Owner’s arguments, we determine that
`Petitioner has demonstrated a reasonable likelihood of establishing that Philo
`discloses a “casing configured to conformably fit around a portion of the
`exterior surface of and thereby receive the housing of the controller,” as well
`as a separately distinguishable “subset of building elements.” In particular,
`having identified the “Simon color button elements and lid elements” as a
`“subset of building elements,” there is a reasonable likelihood of Petitioner
`demonstrating that other building elements shown in the Brick Simon page
`compose a separately distinguishable “casing.” Likewise, having identified
`the “car roof, hood, fenders, and accessories” as a “subset of building
`elements,” there is a reasonable likelihood of Petitioner demonstrating that
`other building elements shown in the Rack and Pinion Steering Car page
`compose a separately distinguishable “casing.” See Pet. 27.
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`Case IPR2016-01187
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`At this stage, we find unpersuasive Patent Owner’s suggestion that
`building elements could not compose a “casing” that will “conformably fit”
`the “housing of the controller.” As explained above in Section II.A.1, we
`currently are not persuaded that “conformably fit” and “mating” have
`mutually exclusive meanings. As noted above, where “conformably fit”
`means relying on matching forms and dimensions, it currently appears that
`attaching Lego building elements with cylindrical bosses and recesses would
`fit this meaning. Indeed, Ms. Knight provides no reasoning or evidence to
`explain why mating Lego building elements with cylindrical bosses and
`recesses would not constitute relying on matching forms and dimensions to
`fit components together. See Ex. 2006 ¶¶ 19, 20, 22–24.
`In view of the foregoing, we determine that Petitioner has
`demonstrated a reasonable likelihood of demonstrating that Philo anticipates
`claims 1–6 and 8.
`
`J. Alleged Obviousness Over Philo and Building Robots
`Petitioner explains how it believes claim 7 would have been obvious
`in view of Philo and Building Robots. Pet. 31. Patent Owner argues
`Petitioner has not demonstrated obviousness of claim 7. Prelim. Resp. 44–
`45. Petitioner’s explanation and evidence persuade us that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its challenge of
`claim 7 as obvious over Philo and Building Robots.
`Petitioner notes that Building Robots discloses a communication link
`between a personal computer and the RCX brick (which is disclosed in Philo
`and Building Robots). Pet. 44. Petitioner asserts that:
`Although neither Building Robots nor Philo appear to expressly
`disclose a cellular phone operationally responsive to user-entered
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`commands that are delivered to the control section, it would have
`been obvious to one of ordinary skill in the art at the time of the
`invention to provide a communication link between the control
`section of the RCX and a cellular telephone to allow users to
`interact with the by a more portable device than a personal
`computer.
`Id. at 31.
`Patent Owner argues that Petitioner fails to explain “what part of
`[Philo] in
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