Filed on behalf of: Canon Kabushiki Kaisha
`
`Paper No. ____
`Filed: August 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`General Plastic Industrial Co., Ltd.
`Petitioner,
`v.
`Canon Kabushiki Kaisha
`Patent Owner.
`________________
`
`Case IPR2016-01360
`U.S. Patent 8,909,094
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C.
`§ 314(a)............................................................................................................4
`
`III.
`
`TECHNOLOGICAL BACKGROUND ........................................................11
`
`A.
`
`B.
`
`C.
`
`D.
`
`The ’094 Patent ...................................................................................11
`
`Yoshiki ................................................................................................22
`
`Koide ...................................................................................................24
`
`Kato .....................................................................................................25
`
`E. Matsuoka .............................................................................................26
`
`F.
`
`Ikesue...................................................................................................28
`
`IV.
`
`V.
`
`PERSON OF ORDINARY SKILL ...............................................................30
`
`CLAIM CONSTRUCTION ..........................................................................30
`
`A.
`
`B.
`
`C.
`
`D.
`
`“A toner supply container”..................................................................31
`
`“a rotational force receiving portion …” ............................................32
`
`“displacing force receiving portion …” and “projecting
`portion …”...........................................................................................35
`
`“configured and positioned to receive a rotational drive
`force …”..............................................................................................37
`
`VI.
`
`LEGAL STANDARDS .................................................................................41
`
`VII. YOSHIKI AND KOIDE IN VIEW OF KATO, MATSUOKA,
`AND IKESUE DO NOT RENDER OBVIOUS ANY OF
`CLAIMS 1 AND 7-9 .....................................................................................42
`
`A.
`
`Petitioner Fails to Show that Yoshiki and Koide, In View
`of Kato, Matsuoka, and Ikesue, Disclose or Suggest a
`
`ii
`
`

`
`B.
`
`C.
`
`Coupling Portion “Configured and Positioned to Receive
`a Rotational Drive Force” ...................................................................42
`
`Petitioner Fails to Show that Yoshiki and Koide, In View
`of Kato, Matsuoka, and Ikesue, Disclose or Suggest the
`“Rotational Force Receiving Portion” Required by Claim
`1 ...........................................................................................................49
`
`Petitioner Fails to Show that Yoshiki and Koide, In View
`of Kato, Matsuoka, and Ikesue, Disclose or Suggest an
`“Engaging Portion” or “Displacing Force Receiving
`Portion” Displaceable with the Alleged “Supporting
`Portion”................................................................................................52
`
`D.
`
`Petitioner Fails to Show the Asserted References Teach
`All the Limitations of Claims that Depend from Claim 1...................56
`
`VIII. YOSHIKI AND KOIDE, IN VIEW OF IKESUE, DO NOT
`RENDER OBVIOUS CLAIM 29..................................................................58
`
`IX. CONCLUSION..............................................................................................60
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012) .....................................................................39
`
`Cuozzo Speed. Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016)...............................................................................4, 30
`
`Ex parte Icon Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .....................................................................35
`
`Gardner v. TEC Sys., Inc.,
`725 F.2d 1338 (Fed. Cir. 1984) .....................................................................58
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17-18 (1966) ...............................................................................41
`
`Hartness Int’l Inc. v. Simplimatic Eng’g Co.,
`819 F.2d 1100 (Fed. Cir. 1987) .....................................................................56
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir. 1997) .....................................................................46
`
`In re Giannelli,
`739 F.3d 1375 (Fed. Cir. 2014) ........................................................ 35, 39, 44
`
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) .......................................................................47
`
`In re Haruna,
`249 F.3d 1327 (Fed. Cir. 2001) .....................................................................47
`
`In re Malagari,
`499 F.2d 1297 (CCPA 1974).........................................................................46
`
`In re Man Machine Interface Techs. LLC,
`822 F.3d 1282 (Fed. Cir. 2016) .............................................................. 30, 39
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)................................................................................ 41, 46
`
`iv
`
`

`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .....................................................................30
`
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) .....................................................................38
`
`Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
`192 F.3d 1353 (Fed. Cir. 1999) .....................................................................47
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .....................................................................38
`
`Statutes
`
`35 U.S.C. § 314(a) .................................................................................. 2, 3, 4, 9, 41
`
`35 U.S.C. § 316(a)(11)...............................................................................................5
`
`35 U.S.C. § 325(d) .....................................................................................................4
`
`Regulations
`
`37 C.F.R. § 42.65(a).................................................................................... 41, 56, 57
`
`37 C.F.R. § 42.100(b) ..............................................................................................30
`
`37 C.F.R. § 42.104(b)(4)..........................................................................................41
`
`37 C.F.R. § 42.104(b)(5)..........................................................................................41
`
`37 C.F.R. § 42.108(a).................................................................................................4
`
`37 C.F.R. § 42.108(b) ................................................................................................4
`
`37 C.F.R. § 42.108(c)...........................................................................................3, 41
`
`P.T.A.B.
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00506, Paper 25 (P.T.A.B. Dec. 10, 2014)......................................6
`
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper 21 (P.T.A.B. Oct. 20, 2014).......................................9
`
`v
`
`

`
`Ex parte Ahlfeld,
`Appeal 2012-006205, 2015 WL 6774437 (P.T.A.B. Oct. 30, 2015) ............38
`
`Ex parte Goodrich,
`Appeal 2009-009437, 2010 WL 3441066 (B.P.A.I. Aug. 30, 2010) ............58
`
`Ex parte Icon Health & Fitness, Inc.,
`Appeal No. 2006-0790, 2006 WL 1665623 (B.P.A.I. May 16, 2006)..........35
`
`Ex parte Lee,
`Appeal 2013-009889, 2015 WL 5719912 (P.T.A.B. Sept. 22, 2015)...........39
`
`Ex parte Lin,
`Appeal 2011-010005, 2015 WL 2063245 (P.T.A.B. May 1, 2015)..............39
`
`Ex parte Murata,
`Appeal 2013-007289, 2015 WL 4628749 (P.T.A.B. July 31, 2015) ............58
`
`Ex parte Tombroff,
`Appeal 2012-010047, 2015 WL 779583 (P.T.A.B. Feb. 20, 2015)..............39
`
`General Elec. Co. v. TAS Energy Inc.,
`IPR2014-00163, Paper 11 (P.T.A.B. May 13, 2014) ....................... 42, 56, 57
`
`General Plastic Indus. Co. v. Canon Inc.,
`IPR2015-01954, Paper 9 (P.T.A.B. Mar. 9, 2016)....................................1, 28
`
`General Plastic Indus. Co. v. Canon Inc.,
`IPR2015-01954, Paper 11 (P.T.A.B. May 19, 2016) ................................1, 28
`
`Great West Cas. Co. v. Intellectual Ventures II LLC,
`IPR2016-00453, Paper 12 (P.T.A.B. June 9, 2016) ....................................5, 9
`
`NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, Paper 9 (P.T.A.B. May 4, 2016) ........................... 3, 5, 9, 10
`
`Roche Molecular Sys., Inc. v. Illumina, Inc.,
`IPR2015-01091, Paper 18 (P.T.A.B. Oct. 30, 2015).......................................9
`
`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`IPR2015-00118, Paper 14 (P.T.A.B. Jan. 28, 2015) .......................................6
`
`vi
`
`

`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) ....................................41
`
`Travelocity.com L.P. v. Cronos Techs., LLC,
`CBM2015-00047, Paper 7 (P.T.A.B. June 15, 2015) .....................................6
`
`vii
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`Canon Kabushiki Kaisha1
`
`(“Patent Owner”)
`
`respectfully submits this
`
`preliminary response to the petition of General Plastic Industrial Co., Ltd.
`
`(“Petitioner”) seeking inter partes review (“IPR”) of claims 1, 7-9, and 29 of U.S.
`
`Patent No. 8,909,094 (“the ’094 patent”).
`
`I.
`
`INTRODUCTION
`
`This is not Petitioner’s first attempt at challenging claims 1, 7-9, and 29 of
`
`the ’094 patent. Previously, on September 25, 2015, in IPR2015-01954, Petitioner
`
`alleged claims 1, 7-9, 11, 16-18, 29, and 38 of the ’094 patent were unpatentable
`
`over U.S. Patent No. 5,903,806 (“Matsuoka”).
`
`That previous petition was
`
`supported by the declaration of Dr. Brian Springett, the same declarant who
`
`submitted a declaration in support of the instant petition. The Board found that the
`
`previous petition failed to establish a reasonable likelihood of prevailing with
`
`respect to any challenged claim and declined to institute IPR. General Plastic
`
`Indus. Co. v. Canon Inc., IPR2015-01954, Paper 9 (P.T.A.B. Mar. 9, 2016)
`
`(denying institution); General Plastic Indus. Co. v. Canon Inc., IPR2015-01954,
`
`Paper 11 (P.T.A.B. May 19, 2016) (denying rehearing).
`
`1 The English translation of “Canon Kabushiki Kaisha” is “Canon Inc.”
`
`1
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`Petitioner filed the instant petition, as well as two additional petitions
`
`challenging some or all of the same previously-challenged ’094 patent claims
`
`(IPR2016-01359 and -01361), after it had received Patent Owner’s preliminary
`
`response and the Board’s non-institution and rehearing decisions in IPR2015-
`
`01954.2 The instant petition (and the additional petitions) are devoid of any
`
`explanation as to whether Petitioner knew of the prior art that it now asserts and
`
`why petitioner waited more than nine months since its first petition to file
`
`additional petitions against the same claims.3
`
`Consistent with its precedent and policy, the Board should exercise its
`
`discretion to deny institution pursuant to 35 U.S.C. § 314(a). As explained below,
`
`2
`
`In addition to the four petitions challenging the ’094 patent, Petitioner also filed
`
`one previously-denied petition (IPR2015-01966) and two pending petitions
`
`(IPR2016-01357 and -01358) challenging Patent Owner’s related U.S. Patent
`
`No. 9,046,820 (“the ’820 patent”). Each petition against the ’094 and ’820
`
`patents was accompanied by a declaration of Dr. Springett.
`
`3 As detailed in Section II below, the record makes clear that Petitioner knew or
`
`should have known of at least some of the prior art that it now asserts when it
`
`filed its first petition.
`
`2
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`the factors outlined in NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper
`
`9 (P.T.A.B. May 4, 2016) (“NVIDIA factors”) weigh heavily against institution
`
`here. Petitioner already has had its chance to challenge the ’094 patent claims at
`
`issue here, and failed in its attempt to do so. Now, without justification, and with
`
`the Patent Owner’s preliminary response and the Board’s prior decisions from
`
`IPR2015-01954 in hand, Petitioner seeks another opportunity to attack the same
`
`claims. Such serial attacks waste the Board’s limited resources, impose undue
`
`burdens on Patent Owner, and frustrate the final resolution of the dispute between
`
`the parties.
`
`The Board should also decline to authorize IPR because Petitioner has failed
`
`to meet its burden of demonstrating a reasonable likelihood of prevailing with
`
`respect to at least one claim under either of its two alleged obviousness grounds.
`
`See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). Challenged claims 1, 7-9, and 29
`
`of the ’094 patent are each directed a toner supply container, such as a toner bottle
`
`that would be used for supplying toner to a copy machine. Petitioner requests
`
`institution of IPR for alleged obviousness over: (1) the combination of U.S. Patent
`
`No. 5,765,079 (“Yoshiki”) and Japanese Patent Appln. Pub. No. H10-171230
`
`(“Koide”), in view of U.S. Patent No. 6,118,951 (“Kato”), Matsuoka, and U.S.
`
`3
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`Patent No. 5,598,254 (“Ikesue”), for claims 1 and 7-9; and (2) Yoshiki and Koide,
`
`in view of Ikesue for claim 29.
`
`Petitioner has failed to show that the asserted references disclose or suggest
`
`multiple limitations of each of the challenged claims, and therefore has not
`
`established a likelihood of success with respect to either ground, as discussed in
`
`Sections VII and VIII below. For example, Petitioner’s asserted combination of
`
`references does not disclose or suggest a toner supply container with a sealing
`
`member that has a coupling portion “configured and positioned to receive a
`
`rotational drive force,” as required by all of the challenged claims. As another
`
`example, the asserted combination of references does not disclose or suggest the
`
`rotational force receiving portion required by claims 1 and 7-9. Sections VII and
`
`VIII below also identify additional limitations of each challenged claim that
`
`Petitioner has failed to show are taught or suggested by the prior art.
`
`II.
`
`THE PETITION SHOULD BE DENIED
`UNDER 35 U.S.C. § 314(a)
`
`Institution of
`
`IPR is discretionary.
`
`35 U.S.C. § 314(a); 37 C.F.R.
`
`§ 42.108(a)-(b); Cuozzo Speed. Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016);
`
`see also 35 U.S.C. § 325(d). When exercising its discretion with respect to a
`
`follow-on IPR petition, such as the instant one, the Board considers the following
`
`non-limiting factors:
`
`4
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`(1) the finite resources of the Board;
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review;
`(3) whether the same petitioner already previously filed a petition
`directed to the same claims of the same patent;
`(4) whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should have
`known about it;
`(5) whether at the time of filing of the second petition the petitioner
`already received patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the first petition;
`(6) the length of time that elapsed between the time petitioner learned
`of the prior art asserted in the second petition and filing of the
`second petition; and
`(7) whether petitioner provides adequate explanations for the time
`elapsed between the filings of multiple petitions directed to the
`same claims of the same patent.
`
`NVIDIA, IPR2016-00134, Paper 9, at 6-7; Great West Cas. Co. v. Intellectual
`
`Ventures II LLC, IPR2016-00453, Paper 12, at 7-8 (P.T.A.B. June 9, 2016). The
`
`foregoing NVIDIA factors, and additional considerations, weigh heavily against
`
`authorizing IPR in this case.
`
`5
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`With respect to the Board’s limited resources and the statutory requirement
`
`for it to issue a final determination no later than one year after institution (NVIDIA
`
`factors 1-2), the Board has explained that allowing petitioners to file follow-on
`
`second petitions in an attempt to correct deficiencies noted by the Board when
`
`denying first petitions “would allow petitioners to unveil strategically their best
`
`prior art and arguments in serial petitions, using [the Board’s] decisions on
`
`institution as a roadmap, until a ground is advanced that results in review—a
`
`practice that would tax Board resources, and force patent owners to defend
`
`multiple attacks.” Conopco, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper
`
`25, at 4-5 (P.T.A.B. Dec. 10, 2014). The Board has similarly explained that an
`
`institution denial “is not simply part of a feedback loop by which a petitioner may
`
`perfect
`
`its challenges through a subsequent filing,” and “[p]ermitting second
`
`chances without constraint ties up the Board’s limited resources; [the Board] must
`
`be mindful not only of
`
`this proceeding, but of
`
`‘every proceeding.’”
`
`Travelocity.com L.P. v. Cronos Techs., LLC, CBM2015-00047, Paper 7, at 13
`
`(P.T.A.B. June 15, 2015); Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`
`IPR2015-00118, Paper 14, at 6 (P.T.A.B. Jan. 28, 2015) (citations omitted).
`
`As noted above, the same Petitioner previously filed a petition directed to
`
`the same claims (plus additional claims) of the same patent on September 25, 2015
`
`6
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`(NVIDIA factor 3). When it filed the instant petition on July 8, 2016, Petitioner
`
`had received Patent Owner’s December 22, 2015 preliminary response in prior
`
`IPR2015-01954, as well as the Board’s March 9, 2016 decision declining to
`
`institute IPR and the Board’s May 19, 2016 decision denying Petitioner’s request
`
`for rehearing (NVIDIA factor 5). Petitioner has not provided any explanation, let
`
`alone an adequate one, for the time elapsed between its filings of multiple petitions
`
`directed to the same claims of the same patent (NVIDIA factor 7). Furthermore,
`
`Petitioner has not
`
`identified when it first
`
`learned of the presently asserted
`
`references, or justified any time that elapsed between when it learned of those
`
`references and its filing of the instant petition on July 8, 2016 (NVIDIA factors 4
`
`and 6).
`
`Clearly Petitioner knew of Matsuoka when it filed its first petition based
`
`solely on that reference. Petitioner also knew of at least two of the other presently-
`
`asserted references well before filing its first petition. For example, Petitioner
`
`knew of Yoshiki and Ikesue at least as early as May 8, 2012, when Petitioner
`
`identified both as prior art against Patent Owner’s related U.S. Patent No.
`
`7,647,012 (“the ’012 patent”) in Canon Inc. v. Color Imaging, Inc., et al., Case No.
`
`7
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`11-cv-3855 (N.D. Ga.) (“the ’012 district court litigation”).4 Ex. 2103 at 10; see
`
`also Ex. 2104 at 10. Yoshiki, Matsuoka, and Ikesue also were all of record during
`
`prosecution of the ’094 patent. Petitioner does not state when it first learned of
`
`Koide, but states that it does not rely on Koide to modify a tab on Yoshiki’s cap,
`
`but rather as “confirmatory evidence” of what a person of ordinary skill allegedly
`
`would understand about how Yoshiki’s tab could be used. Petition at 28. Notably,
`
`4 The ’094 patent claims priority to the application that issued as the ’012 patent.
`
`Ex. 1001 at col. 1:8-17. Exs. 2103 and 2104 are Petitioner’s May 8, 2012 and
`
`April 9, 2014 invalidity contentions from the ’012 district court litigation.
`
`In
`
`that litigation, Dr. Springett—who is Petitioner’s declarant here—submitted
`
`two expert reports opining that the asserted claims of the ’012 patent are
`
`invalid, and the district court granted summary judgment of no invalidity. Both
`
`Yoshiki and Matsuoka were the subject of the summary judgment briefing
`
`Petitioner submitted in that case.
`
`See, e.g., Ex. 2106 at 41-42, 49-62
`
`(describing arguments made by Petitioner and its co-defendant regarding, inter
`
`alia, Yoshiki and Matsuoka); Ex. 2107 at 4 (referring to further arguments
`
`made by Petitioner and its co-defendant regarding Yoshiki).
`
`8
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`Petitioner does not contend that Koide teaches anything beyond Yoshiki, and
`
`Petitioner’s decision to include Koide appears to have been motivated by nothing
`
`more than a desire to assert at least one reference not previously of record. As for
`
`Kato, Petitioner at least should have known of that reference before filing its first
`
`IPR petition, since Kato likewise was of record during prosecution of the ’094
`
`patent. See Ex. 1001 at 2. At the very least, Petitioner’s failure to offer any
`
`explanation of when it learned of the references upon which it relies supports a
`
`reasonable inference that all were known or available to Petitioner at the time it
`
`filed its first petition. Roche Molecular Sys., Inc. v. Illumina, Inc., IPR2015-
`
`01091, Paper 18, at 15 (P.T.A.B. Oct. 30, 2015); Conopco, Inc. v. Procter &
`
`Gamble Co., IPR2014-00628, Paper 21, at 11 (P.T.A.B. Oct. 20, 2014).
`
`The Board’s precedent and policy support declining review pursuant to 35
`
`U.S.C. § 314(a). See, e.g., Great West Cas., IPR2016-00453, Paper 12, at 7-13;
`
`NVIDIA, IPR2016-00134, Paper 9, at 6-12; Conopco, IPR2014-00628, Paper 21, at
`
`11-12. Petitioner’s serial filings place unjustified burdens on both the Board and
`
`Patent Owner. As the Board has explained, declining review under circumstances
`
`such as these will,
`
`in the interests of
`
`fairness, economy, and efficiency,
`
`“discourage[] the filing of a first petition that holds back prior art for use in
`
`successive attacks, should the first petition be denied.” Conopco, IPR2014-00628,
`
`9
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`Paper 21, at 11. And declining review will avoid the inequity to Patent Owner that
`
`would result from Petitioner having received the benefit of studying Patent
`
`Owner’s preliminary response and the Board’s decisions in earlier IPR2015-01954
`
`before filing the instant petition. NVIDIA, IPR2016-00134, Paper 9, at 8.
`
`It is also worth noting that, prior to filing any of its IPR petitions, Petitioner
`
`declined an opportunity to challenge the ’094 patent’s validity in In the Matter of
`
`Certain Toner Supply Containers and Components Thereof, Inv. No. 337-TA-960
`
`(U.S.I.T.C. instituted July 10, 2015). In that case, Patent Owner accused Petitioner
`
`of infringing the same ’094 patent claims now at issue. Instead of defending itself,
`
`Petitioner unilaterally moved to terminate the investigation based on a voluntary
`
`consent order prohibiting future infringement. Ex. 2101; Ex. 2102.
`
`In so doing,
`
`Petitioner represented that termination would be “in the public interest, which
`
`favors the settlement of dispute[s] to avoid needless litigation and to conserve
`
`resources,” because it would “conserve the time and resources of both the
`
`Commission and the private parties ….” Ex. 2101 at 2, 7-8. Patent Owner did not
`
`oppose, and the ITC granted Petitioner’s motion and entered the consent order that
`
`Petitioner requested on September 2, 2015. Ex. 2102. As it turns out, the consent
`
`order did not settle the dispute, because Petitioner has since filed four IPR petitions
`
`asking both the government and Patent Owner to expend time and resources
`
`10
`
`

`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`repeatedly addressing the ’094 patent’s validity, in an attempt to get out from
`
`under the very consent order to which Petitioner voluntarily agreed. The Board
`
`should exercise its discretion and deny institution here to discourage such
`
`gamesmanship.
`
`III. TECHNOLOGICAL BACKGROUND
`
`A.
`
`The ’094 Patent
`
`The challenged claims of the ’094 patent are directed to a toner supply
`
`container of the type used in an electrophotographic image forming apparatus, such
`
`as a copying machine. Ex. 1001 at col. 1:26-36, claims 1, 7-9, 29. In FIG. 3 of the
`
`’094 patent, shown below, an exemplary toner supply container is denoted by
`
`reference number 1 and a main assembly of a copier is denoted by reference
`
`number 100. The toner supply container is installed in the copier by inserting it in
`
`the direction indicated by arrow “a.” Id. at cols. 7:5-23, 9:25-27.
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`FIG. 3
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`The toner supply container has an opening 1a at one end. Id. at FIGS. 8, 10,
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`col. 9:37-39. The opening is sealed when the toner supply container is outside of
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`the copier. Id. at col. 9:41-47. When the toner supply container is installed in the
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`copier, two things happen: (1) the opening is unsealed; and (2) when the copier is
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`being used, the toner supply container is rotated. Id. at cols. 7:24-8:54. The toner
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`supply container has an internal structure, such as the helical projection shown in
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`FIG. 8 of the ’094 patent, that causes the toner inside of the container to be fed out
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`of the opening and into a toner hopper within the copier when the container is
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`rotated. Id. at FIG. 8, cols. 9:64-10:37.
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`The challenged independent claims recite as follows:
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`1. A toner supply container comprising:
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`U.S. Patent No. 8,909,094
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`i) a container body configured to contain toner and rotatable about an
`axis thereof, the container body including a cylindrical portion and an
`opening provided at one axial end portion thereof and configured to
`permit discharge of the toner contained in the container body; and
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`ii) a sealing member provided at the one axial end portion of the
`container body, the sealing member being movable relative to the
`container body in an axial direction of the container body, the sealing
`member including:
`
`ii-i) a sealing portion provided at a side adjacent the container
`body and configured to seal the opening when the sealing member
`and the container body are in a first position relative to one
`another, the opening becoming unsealed by relative movement of
`the sealing member and the container body away from one another
`from the first position to a second position relative to one another;
`and
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`ii-ii) a coupling portion provided at a side remote from the
`container body and configured and positioned to receive a
`rotational drive force for rotating the sealing member and the
`container body about the rotation axis of the container body, the
`coupling portion including:
`ii-ii-i) a supporting portion provided on the sealing portion, the
`supporting portion being elastically displaceable in an inward
`direction toward the rotation axis of the container body and
`elastically restorable in an outward direction away from the
`rotation axis of the container body;
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`ii-ii-ii) an engaging portion provided at a free end of the
`supporting portion and being displaceable with the supporting
`portion, the engaging portion including:
`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; and
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`ii-ii-ii-ii) a locking portion capable of being abutted in a
`direction parallel to the rotation axis of the container body to
`enable the relative movement of the sealing member and the
`container body from the first position, in which the opening
`is sealed, to the second position, in which the opening is
`unsealed; and
`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,
`the engaging portion, and the
`wherein the supporting portion,
`displacing force receiving portion are integrally molded.
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`29. A toner supply container comprising:
`i) a container body configured to contain toner and rotatable about an
`axis thereof, the container body including a cylindrical portion and an
`opening provided at one axial end portion thereof and configured to
`permit discharge of the toner contained in the container body; and
`ii) a sealing member provided at the one axial end portion of the
`container body, the sealing member being movable relative to the
`container body in an axial direction of the container body,
`the sealing member including:
`ii-i) a sealing portion provided at a side adjacent the container
`body and configured to seal the opening when the sealing member
`and the container body are in a first position relative to one
`another, the opening becoming unsealed by relative movement of
`the sealing member and the container body away from one another
`from the first position to a second position relative to one another;
`and
`ii-ii) a coupling portion provided at a side remote from the
`container body and configured and positioned to receive a
`rotational drive force, the coupling portion including;
`iiii-i) a supporting portion provided on the sealing portion, the
`supporting portion being elastically displaceable in an inward
`direction toward the axis of the container body and elastically
`restorable in an outward direction away from the axis of the
`container body;
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`ii-ii-ii) an engaging portion provided at a free end of the
`supporting portion and being displaceable with the supporting
`portion; and
`ii-ii-iii) a projecting portion provided at a position closer to the
`container body than the engaging portion, the projecting portion
`projecting radially from an outer surface of the supporting
`portion such that a radially outermost part of the projecting
`portion is more remote from the axis of the container body than
`a radially outermost part of the engaging portion, and the
`projecting portion being displaceable with the supporting
`portion,
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`the engaging portion, and the
`wherein the supporting portion,
`projecting portion are integrally molded.
`Id. at claims 1, 29.
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`Elements of the claimed toner supply container include a container body and
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`a sealing member, the latter having a sealing portion (labeled 2b in FIG. 36A
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`below) and a coupling portion (labeled 2c in FIG. 36A below). The coupling
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`portion, in turn, includes a supporting portion (not labeled in FIG. 36A below, but
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`labeled 2f in other figures of the ’094 patent, e.g., FIG. 23), an engaging portion
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`(labeled 3 in FIG. 36A below), and a displacing force receiving portion5 (labeled 4
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`in FIG. 36A below). Each engaging portion has two sub-portions—a rotational
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`force receiving portion and a locking portion—which, although not labeled in FIG.
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`36A below, are labeled in other figures of the ’094 patent, e.g., reference numbers
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`3a and 3b, respectively, in FIGS. 12 and 13. The sealing member’s coupling
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`portion is engageable with a part in the copier, specifically, a hollow cylindrical
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`driving member (labeled 20 in FIG. 36A below). The driving member contains a
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`slot 20h, which is interrupted by a pair of ribs 20a.
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`5 Challenged claim 29 recites a projecting portion instead of a displacing force
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`receiving portion.
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`FIG. 36A
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`When the toner supply container is installed in the copier, the supporting
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`portions of the sealing member first elastically displace inwardly so that the
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`coupling portion can enter the driving member, and then elastically restore
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`outwardly (that is, back to their original position) so that the engaging portions
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`engage with the slot in the driving member.
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`Id. at cols. 12:57-13:7, 18:28-32.
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`FIG. 24 of the ’094 patent, shown below, provides a cross-sectional view of the
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`state in which the coupling portion of the sealing member has entered the driving
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`member 20 and the engaging portions 3 have engaged with the slot of the driving
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`member.6
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`6
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`In addition to showing the toner supply container, the sealing member, and the
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`driving member, FIG. 24 also shows a hollow cylinder 21. The hollo