iUNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`SECOND PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,909,094
`
`Case No. IPR2016-01359
`
`NY 824496v.1
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER ACCOMMODATING CONTAINER
`AND IMAGING FORMING APPARATUS
`
`SECOND PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,909,094
`
`Case No. IPR2016-01359
`
`NY 824496v.1
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...........................................................................................1
`I.
`II. MANDATORY NOTICES (37 C.F.R. §42.8)................................................2
`A.
`Real Party in Interest (37 C.F.R. §42.8(b)(1))............................2
`B.
`Related Matters (37 C.F.R. §42.8(b)(2)) ....................................2
`C.
`Lead and Back-Up Counsel (37 C.F.R.
`§42.8(b)(3)).................................................................................3
`Service Information (37 C.F.R. §42.8(b)(4))..............................3
`D.
`III. GROUNDS FOR STANDING........................................................................3
`IV.
`IDENTIFICATION OF CHALLENGE (37 C.F.R.
`§42.104(b)(1)-(3)) and RELIEF REQUESTED (37 C.F.R.
`§42.22(a)(1))....................................................................................................4
`A.
`Background of the ‘094 Patent ...................................................4
`B.
`The Disclosure of the ‘094 Patent...............................................4
`C.
`Prosecution History of the ‘094 Patent.....................................10
`D.
`Patents and Printed Publications Relied On .............................15
`E.
`Statutory Grounds for Challenge (37 C.F.R.
`§42.104(b)(1)-(2) ......................................................................15
`Claim Construction (37 C.F.R. §42.104(b)(3)) ........................15
`F.
`HOW CHALLENGED CLAIMS ARE UNPATENTABLE
`(37 C.F.R. §42.104(b)(4)-(5))........................................................................20
`VI. CONCLUSION..............................................................................................54
`
`V.
`
`NY 824496v.1
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`
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`TABLE OF AUTHORITIES
`
`Cases
`Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ..............................................................................17
`
`Gardner v. TEC Sys., Inc.,
`725 F.2d 1338 (Fed. Cir. 1984)............................................................... 30, 31, 47
`
`Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
`Final Written Decision (PTAB Nov. 13, 2013),
`aff’d sub nom, In re Cuozzo Speed Techs. LLC, 793 F.3d 1268
`(Fed. Cir. 2015), aff’d, ____ U.S. ____ (June 20, 2016) .....................................48
`
`General Plastic v. Canon, IPR2015-01954, Decision (Paper 9)
`(PTAB, Mar. 9, 2016).............................................................................................3
`
`In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) ............................................................21
`
`In re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998)....................................................2
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) .................................16
`
`In the Matter of Certain Toner Supply Containers And Components Thereof,
`Inv. No. 337-TA-960 (U.S. Int’l Trade Comm’n) .................................................2
`
`Statutes
`35 U.S.C. §102(b) ....................................................................................................15
`
`35 U.S.C. §103................................................................................................. passim
`
`35 U.S.C. §119...........................................................................................................4
`
`35 U.S.C. §120.....................................................................................................4, 10
`
`35 U.S.C. §315(d) ......................................................................................................3
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`NY 824496v.1
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`
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`Other Authorities
`MPEP §2111.01(II)..................................................................................................16
`MPEP §2111.04 .......................................................................................................18
`MPEP §2143 ............................................................................................................35
`MPEP§2144.04(IV)(A)..................................................................................... 31, 43
`www.merriam-webster.com/dictionary ...................................................................18
`
`Regulations
`37 C.F.R. §42.100(b) ...............................................................................................15
`
`NY 824496v.1
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`iii
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`
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`LISTING OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent No. 8,909,094 to Yamada, et al.
`
`Exhibit 1002
`
`Prosecution History for U.S. Patent Application Serial
`No. 13/617,050, Filed On September 14, 2012
`
`Exhibit 1003
`
`U.S. Patent No. 7,647,012 to Yamada, et al.
`
`Exhibit 1004
`
`Exhibit 1005
`
`Special Master’s Claims Construction Report and Recommendations
`dated Nov. 8, 2013, in Case No. 1:11-cv-03855-RLV in the U.S.
`District Court, Northern District of Georgia
`
`Court’s Order dated January 9, 2014, in Case
`No. 1:11-cv-03855-RLV in the U.S. District Court, Northern District
`of Georgia
`
`Exhibit 1006
`
`Japanese Patent Application Publication No. 2000-305346 to Suzuki
`(including certified English translation)
`
`Exhibit 1007
`
`U.S. Patent No. 5,598,254 to Ikesue, et al.
`
`Exhibit 1008
`
`Declaration of Brian Springett, Ph.D.
`
`NY 824496v.1
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`iv
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`
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §311 and 37 C.F.R. §42.1 et seq., General Plastic
`
`Industrial Co., Ltd. (hereinafter, “Petitioner”) requests inter partes review of
`
`claims 1, 7-9, and 29 (the “challenged claims”) of U.S. Patent No. 8,909,094 (“the
`
`’094 patent,” Ex. 1001). The Board is authorized to deduct all required fees
`
`associated with this petition from Locke Lord LLP Deposit Account No. 121781,
`
`under Order No. 1007369.00003.
`
`The ‘094 patent specification describes a toner supply container, which
`
`includes a rotatable container body and a sealing member provided at its axial end,
`
`that may be inserted into an image-forming apparatus such as a copier. The sealing
`
`member, quite simply, seals or unseals an opening in the container body so that
`
`toner may be discharged therefrom.
`
`The challenged claims, which were deliberately drafted by the Patent Owner
`
`to recite just the toner supply container and make no mention of the image-forming
`
`apparatus, are invalid under 35 U.S.C. §103 based on known toner supply
`
`containers. Prior art toner supply containers had a container body that was
`
`rotatable about its longitudinal axis and a sealing member that would unseal an
`
`opening in an axial end of the container’s body by the relative movement of the
`
`sealing member away from the container body and later reseal that opening. Any
`
`inventive advance disclosed in the ‘094 patent specification is limited to the
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`NY 824496v.1
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`
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`structure and operation of the snap-fit connection actually formed between the
`
`copier and the toner supply container, which is simply not recited in the challenged
`
`claims. It is axiomatic that the challenged claims cannot be held to be patentable
`
`based on a structure not actually recited in the claim. See In re Hiniker Co.,
`
`150 F.3d 1362, 1369 (Fed. Cir. 1998) (“The invention disclosed in Hiniker’s
`
`written description may be outstanding in its field, but the name of the game is the
`
`claim.”).
`
`II. MANDATORY NOTICES (37 C.F.R. §42.8)
`Real Party in Interest (37 C.F.R. §42.8(b)(1))
`
`A.
`
`General Plastic Industrial Co., Ltd. is the real party-in-interest.
`
`B.
`
`Related Matters (37 C.F.R. §42.8(b)(2))
`
`The ‘094 patent was the subject of the following Investigation:
`
`In the
`
`Matter of Certain Toner Supply Containers And Components Thereof, Inv.
`
`No. 337-TA-960 (U.S. Int’l Trade Comm’n) which was instituted on July 10, 2015
`
`(hereinafter, “the Investigation”). General Plastic Industrial Co. Ltd. was a named
`
`Respondent in this Investigation, which terminated based upon General Plastic
`
`Industrial Co., Ltd.’s stipulation to a consent order.
`
`The ‘094 patent was the subject of an IPR petition filed by the Petitioner on
`
`September 25, 2015. A trial was not instituted on any challenged claim. See
`
`General Plastic v. Canon, IPR2015-01954, Decision (Paper 9) (PTAB, Mar. 9,
`
`NY 824496v.1
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`2
`
`
`
`2016). This Second Petition does not raise the same grounds presented in that
`
`denied petition. See 35 U.S.C. §315(d).
`
`C.
`
`Lead and Back-Up Counsel (37 C.F.R. §42.8(b)(3))
`
`Lead counsel: Steven F. Meyer (Reg. No. 35,613)
`
`Back-up counsel: Tim Tingkang Xia (Reg. No. 45,242)
`
`D.
`
`Service Information (37 C.F.R. §42.8(b)(4))
`
`Electronic Service:
`
`smeyer@lockelord.com
`
`Post and Delivery:
`
`Locke Lord LLP, 3 World Financial Center
`Brookfield Place, 200 Vesey Street, 20th Floor
`New York, NY 10281
`
`Phone:
`
`(212) 415-8600
`
`Fax: (212) 303-2754
`
`Petitioner consents to electronic service.
`
`III. GROUNDS FOR STANDING
`Petitioner hereby certifies that the ‘094 patent is available for inter partes
`
`review, and that Petitioner is not barred or estopped from requesting an inter partes
`
`review challenging the claims of the ‘094 patent on the grounds identified in this
`
`petition. More particularly, Petitioner certifies that: (1) Petitioner is not the owner
`
`of the ‘094 patent; (2) the ‘094 patent issued on December 9, 2014, more than nine
`
`months ago; (3) Petitioner has not filed a civil action challenging the validity of
`
`any claim of the ‘094 patent; (4) Petitioner was served less than one year ago with
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`NY 824496v.1
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`
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`the complaint in the Investigation alleging infringement of the ‘094 patent; and
`
`(5) Petitioner is not estopped from challenging the claims of the ‘094 patent.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. §42.104(b)(1)-(3))
`and RELIEF REQUESTED (37 C.F.R. §42.22(a)(1))
`
`Petitioner challenges claims 1, 7-9, and 29 of
`
`the ‘094 patent under
`
`35 U.S.C. §103, and cancellation of those claims is requested.
`
`A.
`
`Background of the ‘094 Patent
`
`The ‘094 patent issued on application ser. no. 13/617,050 (Ex. 1002), which
`
`was filed on September 14, 2012. The ‘094 patent claims the benefit of application
`
`serial no. 10/076,430, filed on February 19, 2002, now U.S. Patent No. 6,879,789,
`
`under 35 U.S.C. §120. The ‘094 patent also claims the benefit of Japanese
`
`application nos. 2001-197546 filed on June 28, 2001 and 2001-042536 filed on
`
`February 19, 2001, under 35 U.S.C. §119.
`
`B.
`
`The Disclosure of the ‘094 Patent
`
`The ‘094 patent describes a toner supply container that is usable in, for
`
`example, a copier. Figure 3 illustrates an exemplary toner bottle 1 and a copier
`
`100.
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`The toner bottle 1 is installed in the copier 100 by inserting it in the direction
`
`indicated by arrow a.
`
`Figure 8 is a partly broken perspective view of toner bottle 1.
`
`The toner bottle 1 is generally cylindrical, and one end thereof has an opening 1a
`
`through which toner may flow. Ex. 1001 at col. 9, ln. 37-39. The opening 1a is
`
`plugged with a sealing member 2 for sealing the opening 1a. The opening 1a is
`
`unsealed and resealed by the sliding motion of the sealing member 2 relative to the
`
`toner bottle 1 in the longitudinal direction (arrow a↔b) of the toner bottle 1. See
`
`Col. 9, ln. 41-47.
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`NY 824496v.1
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`The ‘094 patent discloses several embodiments of the sealing member 2.
`
`The challenged claims read on the embodiment of sealing member 2 illustrated in
`
`Figures 23(A) and 23(B).
`
`The sealing member 2 has two main portions: a sealing portion 2b, and a
`
`coupling portion 2c. See Col. 11, ln. 21-25. The sealing portion 2b fits snugly
`
`within the opening 1a to seal the toner bottle 1. See Col. 11, ln. 28-30. The
`
`coupling portion 2c locks with a part in the copier 100 in order to (1) move the
`
`sealing member 2 and the toner bottle 1 relatively away from each other to unseal
`
`the opening 1a; and (2) receive a rotational drive force from the copier 100. See
`
`Col. 11, ln. 31 - col. 12, ln. 18. To these ends, the coupling portion 2c includes
`
`supporting portions 2f, engaging projections 3, and releasing force receiving
`
`portions 4.
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`NY 824496v.1
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`“The coupling engagement portion 2c of the sealing member 2 has an
`
`engaging projection 3 for receiving the driving force from [the copier 100]”.
`
`Col. 11, ln. 63-65.
`
`“The engaging projection 3 is projected radially outwardly
`
`from the peripheral surface of the cylindrical portion of the coupling engagement
`
`portion 2c.” Col. 11, ln. 65 - col. 12, ln. 1. Each engaging projection 3 has two
`
`sub-portions -- a rotational force receiving portion 3a and a locking portion 3b,
`
`which, although not labeled in Figures 23(A) and 23(B), are labeled in Figures 12
`
`and 13.
`
`“The engaging projection comprises a drive receiving surface 3a (driving force
`
`receiving portion) for receiving the rotational driving force from [the copier 100];
`
`and a locking surface 3b (locking portion) for snap-fit type locking of the sealing
`
`member 2 into a locking hole (portion to be locked) provided in [the copier 100]
`
`when the sealing member 2 and the toner bottle 1 are moved away from each other
`
`(from the closed state to the open state).” Col. 12, ln. 1-9.
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`NY 824496v.1
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`The sealing member 2 may include a releasing force receiving portion 4 for
`
`disengaging the coupling engagement portion 2c from the copier 100. See Col. 9,
`
`ln. 48-52. Referring back to Figures 23(A) and 23(B) reproduced above, the
`
`releasing force receiving portion 4 lies between the engaging projection 3 and the
`
`sealing portion 2b.
`
`“The engaging projection 3 has a driving force receiving function as well as
`
`the locking function and, therefore, it has a certain degree of rigidity. In view of
`
`this, slits 2e or the like are formed at lateral ends of the engaging projection 3, so
`
`that only the part of the coupling engagement portion 2c where the engaging
`
`projection 3 is provided, can relatively freely deform elastically toward the inside.”
`
`Col. 12, ln. 44-50. More particularly, “[s]lits 2e are formed at the lateral sides of
`
`the supporting portion 2f for the engaging projection 3 and the releasing portion 4
`
`to facilitate inward elastic deformation of the engaging projection 3 and the
`
`releasing portion 4 and restoration.” Col. 18, ln. 52-56.
`
`As discussed above, the coupling portion 2c engages with a part in the
`
`copier 100 referred to as a driving portion 20. See Col. 7, ln. 31-34 & col. 9,
`
`ln. 58-60. An example of the hollow cylindrical driving portion 20 is depicted in
`
`the left-hand portion of Figure 14.
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`This hollow cylindrical driving portion 20 contains a locking slot 20h that extends
`
`in a circumferencial direction. See Col. 14, ln. 29-32. The locking slot 20h is
`
`interrupted by a pair of ribs 20a. A motor within the copier 100 rotates the driving
`
`portion 20. See Col. 7, ln. 35-38. The driving portion 20, in turn, rotates the toner
`
`bottle 1 through the abutment of the rotating engaging rib 20a with the drive
`
`receiving surface 3a of the engaging projection 3 of the sealing member 2. See
`
`Col. 14, ln. 41-45.
`
`Once the engaging projections 3 have engaged with the locking slot 20h of
`
`the driving portion 20, the driving portion 20 and the toner bottle 1 are moved
`
`relatively away from each other, thereby pulling the sealing member 2 out of the
`
`opening 1a in the container body. See, e.g., Col. 8, ln. 9-17, col. 13, ln. 8-16, &
`
`col. 15, ln. 4-13. Figure 25A illustrates the unsealed state in which the sealing
`
`member 2 has been moved relatively away from the toner bottle 1 [see Col. 18,
`
`ln. 61-63].
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`NY 824496v.1
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`
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`With the opening 1a unsealed, the driving portion 20 rotates the toner bottle 1
`
`through the abutment of the rib 20a with the sealing member’s rotational force
`
`receiving portion 3a. This rotation of the toner bottle 1 causes the toner to be fed
`
`out of the opening 1a in the toner bottle 1.
`
`However, the challenged claims are directed to just the toner bottle 1 and its
`
`sealing member 2, and do not recite the copier 100 and its driving portion 20 or
`
`any connectability between the toner bottle 1 and the driving portion 20.
`
`C.
`
`Prosecution History of the ‘094 Patent
`
`The ‘094 patent issued on application ser. no. 13/617,050 which claims
`
`priority under 35 U.S.C. §120 to application ser. no. 12/169,895 that issued as U.S.
`
`Patent No. 7,647,012 (Ex. 1003, “the ‘012 patent”). The Patent Owner filed a
`
`patent
`
`infringement suit asserting claims 24, 25 and 30 of the ‘012 patent.
`
`Independent claim 24, in pertinent part, recites:
`
`24. A toner supply container detachably mountable to an
`assembly of an electrophotographic imaging forming
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`
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`apparatus having a hollow cylindrical driving member
`that has a slot formed therein, which slot extends in a
`circumferential direction and defines a plurality of
`interior
`surfaces of
`the hollow cylindrical driving
`member, and a hollow cylinder that
`is substantially
`concentric with the hollow cylindrical driving member,
`said toner supply container comprising:
`
`*
`
`*
`
`*
`
`ii-ii-ii-i) a rotational force receiving portion capable of
`being abutted in a circumferential direction of the hollow
`cylindrical driving member by at least a portion of a first
`interior surface of the hollow cylindrical driving member
`defined by the slot to receive a rotational drive force
`from the hollow cylindrical driving member to rotate
`said container body; and
`
`ii-ii-ii-ii) a locking portion capable of being abutted in
`an axial direction of
`the hollow cylindrical driving
`member by at
`least a portion of a second interior
`surface of
`the hollow cylindrical driving member
`defined by the slot to prevent the sealing member from
`moving in the axial direction of the container body
`when said container body moves away from the hollow
`cylindrical driving member, thus causing the relative
`movement of said sealing member and said container
`body from the first position, in which said opening is
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`NY 824496v.1
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`
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`sealed, to the second position, in which said opening is
`unsealed; and
`
`ii-ii-iii) a displacing force receiving portion provided at a
`position closer to said container body than said engaging
`portion,
`said
`displacing
`force
`receiving
`portion
`configured and positioned to receive a force from the
`hollow cylinder and cause said supporting portion to
`elastically displace in an inward direction,....
`
`Ex. 1003 at col. 27, ln. 35 - col. 28, ln. 45 (emphasis added).
`
`In the infringement suit, a Special Master issued, on November 8, 2013, his
`
`“Claim Construction Report And Recommendations” addressing the construction
`
`of terms recited in claim 24. Over Patent Owner’s objections, the Special Master
`
`recommended that the preamble to claim 24 is a limiting element of the claim. See
`
`Ex. 1004 at pp. 21-52. The District Court, on January 9, 2014, adopted the Special
`
`Master’s Claim Construction Report And Recommendations “as the opinion and
`
`order” of the court. Ex. 1005.
`
`Prior to the issuance of the Special Master’s Claim Construction Report And
`
`Recommendations on November 8, 2013, in application ser. no. 13/617,050 (which
`
`issued as the ‘094 patent), the patentee was prosecuting application claim 21 which
`
`recited word-for-word the same preamble as claim 24 of the ‘012 patent. See
`
`Ex. 1002 at pp. 322-23 (Amendment dated April 11, 2013).
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`On January 31, 2014, shortly after the district court’s adoption of the Special
`
`Master’s Claim Construction Report And Recommendations on January 9, 2014,
`
`the Patent Owner canceled application claim 21 and added new claims 22-74.
`
`Ex. 1002 at pp. 273-90 (Preliminary Amendment). The preamble of each of
`
`independent claims 22, 32, 41, 50, 59 and 67 recite “[a] toner supply container”
`
`only, and make no mention of a copier or the container being detachably
`
`mountable to the copier’s hollow cylindrical driving member. Furthermore, unlike
`
`claim 24 of the ‘012 patent, the “rotational force receiving portion” limitation
`
`recited in application claim 22, which is reproduced below, makes no mention of
`
`receiving the rotational drive force from the image forming apparatus’ hollow
`
`cylindrical driving member.
`
`ii-ii-ii-i) a rotational force receiving portion capable of
`being abutted in a direction that is concentric with a
`circumference of the cylindrical portion of the container
`body to receive a rotational drive force for rotating the
`sealing member and the container body....
`
`Compare Ex. 1002 at p. 275 and Ex. 1003 at col. 28, ln. 14-21. That is, application
`
`claim 22 does not recite the source of the rotational drive force to be received by
`
`the recited rotational force receiving portion. While application claims 22, 32 and
`
`41 all recite this “rotational force receiving portion” limitation, application
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`
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`claims 50, 59 and 67 do not recite the rotational force receiving portion. See
`
`Ex. 1002 at pp. 274-88.
`
`Likewise, unlike claim 24 of the ‘012 patent, the “displacing force receiving
`
`portion” limitation recited in application claim 22, which is reproduced below,
`
`makes no mention of being displaced by a force received from the image forming
`
`apparatus’ hollow cylinder:
`
`ii-ii-iii) a displacing force receiving portion provided on
`the supporting portion at a position closer to the container
`body than the engaging portion,
`the displacing force
`receiving portion being displaceable with the supporting
`portion and having a radially outermost part that is more
`remote from the rotation axis of the container body than a
`radially outermost part of the engaging portion ....
`
`Compare Ex. 1002 at p. 275 & Ex. 1003 at col. 28, ln. 35-41. The “displacing
`
`force receiving portion” limitation is also recited in application claims 32 and 41.
`
`See Ex. 1002 at pp. 277-81. The corresponding “projecting portion” limitation
`
`recited in application claims 50, 59 and 67, likewise, makes no mention of being
`
`displaced by a force received from the image forming apparatus’ hollow cylinder.
`
`See Ex. 1002 at pp. 283-88.
`
`During a personal interview on February 12, 2014, the Patent Owner and the
`
`Examiner “discussed the differences between the limitations in claim 21 of this
`
`application and the limitations of the newly filed claims 22, 32, 41, 50, 59, and 67
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`NY 824496v.1
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`
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`in the RCE filed 1/31/2014. Also, the reference to US 7,647,012 part of the patent
`
`family of this application was discussed specifically claim 24.” Ex. 1002 at
`
`pp. 253 & 257 (emphasis added).
`
`After a terminal disclaimer was filed by the Patent Owner, claims 22-74
`
`were allowed. Ex. 1002 at pp. 92-98.
`
`D.
`
`Patents and Printed Publications Relied On
`
`Petitioner relies on the following patents and publications:
`
`1.
`
`Japanese Patent Application Publication No. 2000-305346 (“Suzuki”,
`
`Ex. 1006) published on November 2, 2000 and therefore constitutes prior art
`
`against the ‘094 patent under 35 U.S.C. §102(b).
`
`2.
`
`U.S. Patent No. 5,598,254 (“Ikesue”, Ex. 1007) issued on January 28,
`
`1997 and therefore constitutes prior art against the ‘094 patent under §102(b)
`
`E.
`
`Statutory Grounds for Challenge (37 C.F.R. §42.104(b)(1)-(2)
`
`Cancellation of claims 1, 7-9, and 29 of the ‘094 patent is requested on the
`
`following grounds:
`
`1.
`
`Claims 1, 7-9 and 29 would have been obvious under 35 U.S.C. §103
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`over Suzuki and Ikesue.
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`F.
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`Claim Construction (37 C.F.R. §42.104(b)(3))
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`The claim terms should be given their broadest reasonable construction in
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`view of the specification.
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`37 C.F.R. §42.100(b). Even under the broadest
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`NY 824496v.1
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`15
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`
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`reasonable interpretation standard, claim terms are generally given their ordinary
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`and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007). “Though understanding the claim language may be aided by
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`explanations contained in the written description, it is important not to import into
`
`a claim limitations that are not part of the claim. For example, a particular
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`embodiment appearing in the written description may not be read into a claim
`
`when the claim language is broader than the embodiment.” MPEP §2111.01(II).
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`Thus, the structural elements of the copier and their functionality, as described in
`
`the ‘094 patent specification, cannot be read into the challenged claims which are
`
`more broadly directed to just the toner supply container.
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`Furthermore, prior to the prosecution of the challenged ‘094 patent, the
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`Patent Owner had already been issued the related ‘012 patent having claim 24 that
`
`expressly recites both the copier (i.e., image-forming apparatus) and the toner
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`supply container, as well as the engageability therebetween.
`
`See supra at
`
`pp. 10-12. The challenged claims of the ‘094 patent should not be narrowly
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`construed herein so as to have the same narrow scope as claim 24 of the
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`‘012 patent (Ex. 1003).
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`Petitioner proposes the following claim constructions for the purposes of this
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`Petition only.
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`NY 824496v.1
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`16
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`1. “A toner supply container comprising”
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`The preamble of challenged independent claims 1 and 29 each reads
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`“[a] toner supply container”. The only purpose or intended use stated in the
`
`preamble is that the container is to contain a supply of toner, which is repeated in
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`the body of each challenged independent claim -- “a container body configured to
`
`contain toner”. See Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc.,
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`289 F.3d 801, 808 (Fed. Cir. 2002). Because the claim preamble was effectively
`
`amended during prosecution to delete any mention of a copier or its parts (see
`
`supra at p. 13), the environment of use is not limited to a copier. See Id. at 808-09.
`
`“Moreover, preambles describing the use of an invention generally do not
`
`limit the claims because the patentability of apparatus or composition claims
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`depends on the claimed structure, not on the use or purpose of that structure.”
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`Catalina, 289 F.3d at 809. Because the preamble of each challenged claim is
`
`limited to just a toner supply container and omits any mention of a copier, the
`
`challenged claims do not require any recited structural element to receive a force
`
`actually exerted by a copier. See Ex. 1008, Springett Decl. at ¶¶19-21.
`
`2.
`
`“a rotational force receiving portion …”
`
`Challenged claim 1 recites “a rotational force receiving portion capable of
`
`being abutted in a direction that
`
`is concentric with a circumference of the
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`cylindrical portion of the container body to receive a rotational drive force for
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`NY 824496v.1
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`17
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`
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`rotating the sealing member and container body”. The dictionary definition of
`
`“abut” is “to touch along a border or with a projecting part”.
`
`See
`
`www.merriam-webster.com/dictionary/abut. The plain and ordinary meaning of
`
`this limitation is that the rotational force receiving portion need only be capable of
`
`receiving a rotational drive force from any source that would be applied in a
`
`direction concentric with the circumference of the container body’s cylindrical
`
`portion for rotating the sealing member and container body. See Ex. 1008,
`
`Springett Decl. at ¶¶22-24.
`
`None of the challenged claims recites that a rotational drive force is actually
`
`received by the coupling portion or its rotational force receiving portion, much less
`
`what structure would be applying the rotational drive force to the coupling portion
`
`or its rotational force receiving portion. “Claim scope is not limited by claim
`
`language that suggests or makes optional but does not require steps to be
`
`performed, or by claim language that does not limit a claim to a particular
`
`structure.” MPEP §2111.04.
`
`3.
`
`“displacing force receiving portion being displaceable with the
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`supporting portion” & “projecting portion being displaceable with the
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`supporting portion”
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`Claim 1 further recites “a displacing force receiving portion provided on the
`
`supporting portion at a position closer to the container body than the engaging
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`NY 824496v.1
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`18
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`
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`portion,
`
`the displacing force receiving portion being displaceable with the
`
`supporting portion and having a radially outermost part that is more remote from
`
`the rotation axis of the container body than a radially outermost part of the
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`engaging portion”. The corresponding limitation in claim 29 is similarly worded to
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`that recited in claim 1 but uses the phrase “projecting portion”, rather than
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`“displacing force receiving portion”. A person of ordinary skill1 would understand
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`this term to refer to “a portion of the coupling portion that is provided at the recited
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`location vis-à-vis the engaging portion and container body.” Ex. 1008, Springett
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`Decl. at ¶27.
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`1 A person of ordinary skill in the art of the ‘094 patent would be a person with
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`(1) a bachelor’s degree in mechanical engineering, or a similar technical field;
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`(2) a working knowledge of electrophotographic imaging systems, image forming
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`apparatuses, toner containers, and the like; (3) at least two years of experience in
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`analysis, design and development of such electrographic imaging systems, image
`
`forming apparatuses, and toner containers; and (4) an understanding of the prior art
`
`and an understanding that design concepts can be adopted from other contexts
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`where the problems or needs might be similar, and relevant technical literature and
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`publications. Ex. 1008, Springett Decl. at ¶15.
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`NY 824496v.1
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`19
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`
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`These limitations do not require the portion to be actually displaced by the
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`application of any recited force, but rather merely requires the portion to be
`
`displaceable. That is, because the preamble of the challenged claims does not
`
`recite a snap-fit connection between a copier and the toner supply container, there
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`is no recitation of a force being exerted by the copier and received by the portion
`
`or the portion’s reaction to the receipt of such a force. Consequently, the phrases
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`“the displacing force receiving portion being displaceable with the supporting
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`portion” and “the projecting portion being displaceable with the supporting
`
`portion” simply mean that the displacing force receiving portion or the projecting
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`portion is capable of displacing with the supporting portion on which it
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`is
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`provided. Ex. 1008, Springett Decl. at ¶28.
`
`V.
`
`HOW CHALLENGED CLAIMS ARE UNPATENTABLE (37 C.F.R.
`§42.104(B)(4)-(5))
`
`Claims 1, 7-9 and 29 of the ‘094 patent would have been obvious under
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`§103 based on Suzuki (Ex. 1006) and Ikesue (Ex. 1007).
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`Suzuki was not
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`considered by the Examiner during prosecution of the ‘094 patent. See Ex. 1001 at
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`p. 3; Ex. 1002. Ikesue was made of record during prosecution of the ‘094 patent,
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`but was not applied by the Examiner to reject any application claim. See Ex. 1001
`
`at p. 2; Ex. 1002. Suzuki and Ikesue qualify as analogous prior art because they
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`both disclose a sealed toner bottle that, once installed in an image forming device
`
`(such as a copier), would be automatically unsealed to disperse toner out of the
`
`NY 824496v.1
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`20
`
`
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`toner bottle, and later resealed, thereby preventing spillage of toner [see Ex. 1008,
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`Springett Decl. at ¶¶31 & 53]. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
`
`2004).
`
`The
`
`challenged claims
`
`require
`
`the displacing force
`
`receiving
`
`portion/projecting portion to be provided at a position closer to the container body
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`than the engaging portion. Suzuki does not anticipate the challenged independent
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`claims 1 and 29 solely because the engaging portion (i.e., protruding part 13) is
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`slightly closer
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`to the package body 2 than the displacing force receiving
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`portion/projecting portion (i.e., flange portion of cap part 9). Challenged claims 1,
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`7-9 and 29 would have, nevertheless, been obvious over Suzuki in view of Ikesue
`
`which discloses the recited orientation of the engaging portion and the displacing
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`force receiving portion/projecting portion vis-a-vis the container body for an
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`almost identical geometric configuration of sealing, engaging and displacing force
`
`receiving/projecting portions.
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`As illustrated in Figure 4, Suzuki discloses a toner container 1 comprising a
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`cylindrical container main unit 2 and an inner cap 3 for opening/closing an opening
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`portion 7 provided in an axial end of the container main unit 2.
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`NY 824496v.1
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`21
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`
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`The container main unit 2 contains toner, and is rotatable. See Ex. 1006 at ¶0017.
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`Petitioner correlates the opening portion 7 with the recited “opening”, and
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`the inner cap 3 with the recited “sealing member”.
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`A person of ordinary skill would understand Figure 4 as depicting the inner
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`cap 3 to be of one-piece construction. See Ex. 1008, Springett Decl. at ¶35.
`
`Suzuki explains that the i
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