`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`WILLIS ELECTRIC COMPANY, LIMITED,
`Petitioner,
`
`v.
`
`POLYGROUP MACAU LIMITED (BVI),
`Patent Owner.
` ____________
`
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
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`Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
` ____________
`
`Record of Oral Hearing
` Held: February 5, 2018
`______________
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` Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`LARINA ALTON, ESQ.
`of: Fox Rothschild LLP
`Campbell Mithun Tower
`222 South Ninth Street, Suite 2000
`Minneapolis, Minnesota 55402-3338
`(612) 607-7000
`lalton@foxrothschild.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`ROBERT ANGLE, ESQ.
`CHRISTOPHER FORSTNER, ESQ.
`ALEXIS N. SIMPSON, ESQ.
`of: Troutman Sanders LLP
`600 Peachtree Street, N.E., Suite 3000
`Atlanta, Georgia 30308
`(804) 697-1246
`robert.angle@troutmansanders.com
`
`
`
`
`The above-entitled matter came on for hearing on Monday,
`
`February 5, 2018, commencing at 2:52 p.m. at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`__________________
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` IPR2017-00332 has been consolidated with this proceeding.
`2 IPR2017-00335 has been consolidated with this proceeding.
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` Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`P-R-O-C-E-E-D-I-N-G-S
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`2:52 p.m.
`JUDGE PARVIS: Please be seated. This is an oral
`argument in IPR2017-00309, 331, 332, 334 and 335. Challenged
`patents are U.S. Patents Numbers 8,863,416 B2, 9,119,495 B2 and
`8,959,810 B2.
`The Petitioner is Willis Electric Company Limited. Patent
`Owner is Polygroup Macau Limited, BVI.
`As you know from our trial order, trial hearing order of
`January 4th, 2018, each side will have 60 minutes total time to present
`its arguments. Petitioner will proceed first followed by Patent
`Owner.
`Petitioner may reserve some time today for rebuttal, limited to
`what Patent Owner says today.
`The ground rules are the same as we discussed earlier, and
`also that were set forth in the hearing that you're familiar with,
`December 15, 2017.
`Any time you're ready, Counsel for Petitioner, you may
`proceed.
`MS. ALTON: Hi, I'm Larina Alton. I am Counsel for
`Petitioner, Willis Electric, in this matter.
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`JUDGE PARVIS: How much time would you like to
`reserve?
`MS. ALTON: I'd actually like to reserve 40 minutes. I think
`we're counting down from 60.
`JUDGE PARVIS: You have an hour and you're reserving 40
`minutes.
`MS. ALTON: Yes.
`JUDGE PARVIS: So the yellow will go -- would you rather
`me just give you 20?
`MS. ALTON: Oh, no, that's fine. This is fine. I'm sorry, I
`didn't understand the --
`JUDGE PARVIS: In case, you know, it's your rebuttal time,
`and you know how much rebuttal time you have left.
`MS. ALTON: All right.
`JUDGE PARVIS: But if you have a preference, I can set it
`however is easiest for you.
`MS. ALTON: No, this is fine. Thanks a lot.
`The reason I reserved most of time today is because the
`analysis that we've set forth in the petitions that have been instituted I
`feel is fairly straightforward.
`It doesn't have to be complicated because most of the claimed
`elements are disclosed already in Willis Electric's Patent 186, patent
`that is also be challenged before this particular patent, or Panel.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`That patent application was published in 2012, and shortly
`thereafter the Patent Owner began filing some very highly related
`patents in a similar area.
`In fact, if there could be said to be any elements that aren't
`disclosed by the Chen patent itself, they're very limited to incremental
`or additional limited disclosures that are sometimes considered to be
`intrinsic in something like an electrical connection.
`For example, Chen discloses a tree trunk that has an electrical
`contact within the trunk that allows for a fully rotatable or any
`direction electrical connection, and the additional structural elements
`that are added by the 186, or I'm sorry, by the 416 family, are in many
`respects, just a structural elements that cover a normal coaxial
`connection.
`Indeed, I know Petitioner has taken the position that those
`sorts of structural additions add nothing innovative or of value in a
`related proceeding before this Panel.
`Otherwise, the additional structural elements that are claimed
`across the claims of the 416 family are either inherent or at least
`incredibly common in coaxial connectors or other types of electrical
`connectors. Such as spring based contact sections.
`A spring contact section merely means that the electrical
`connections are sort of held together with some sort of tension or
`force. And that's to keep the electrical connection constant so that
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`you don't get flickering of lights or an inconsistent electrical
`connection or to avoid arcing between the electrical contacts.
`Other minimal, additional structural elements that are claimed,
`relate to things like the vertical extending section, which is not
`defined anywhere in the specification but can just sort of be identified
`as anything that vertically extends. Sometimes in-between electrical
`contacts, depending on the length of the claim language.
`Notably, Chen covers an entire tree and specifies structural
`elements of lights, branches and other aspects of a pre-lit tree.
`Petitioner claims are even broader because they relate only to
`trunk sections. Whether in a lit or an unlit tree, with or without
`branches.
`So, because of this distinction, there is a number of various
`historical pieces of art, such as Otto, that disclose all or nearly all of
`the claimed elements. And again, there are only very limited
`distinctions between the challenged claims and the art.
`I'm actually going to skip past claim constructions to sort of
`summarize the 186 in this provisional application. I'm on Slide 11 of
`24.
`
`And this is just some quotes from our brief regarding the
`connectors disposed in the 186. As I indicated before, the 186 relates
`to a fully rotatable electrical connection inside of a tree trunk.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`The 186 discloses that this is an advantage to users who are
`assembling a tree because it allows them to orient the heavy tree
`portions laid in with branches and lights across one and another
`without having to line up specific prongs and holes to make an
`electrical connection. And this exact same benefit is the one
`articulated in the 416 patent family.
`JUDGE PLENZLER: I'd just like to ask just one basic
`question because I know you mentioned the Chen patent and the
`provisional. Just to be very clear, because I know there is a lot of
`argument back and forth about what to do with this provisional, you're
`not trying to assert in any way that the provisional standing by itself is
`102 art, correct?
`It's just that it's coming in and its part of the disclosure of the
`Chen patent itself, is that a correct understanding?
`MS. ALTON: I'm sorry, I keep accidentally talking over you,
`please accept my apologies.
`Yes, that's correct. So the Chen provisional, I just will skip to
`that. There is no real argument, from my perspective, that the Chen
`provisional is properly incorporated into Chen.
`I know, like you said, there have been a lot of dramatics on
`that point but the fact is that there is two separate issues here. One is
`the priority date of Chen and the other is, what does the disclosure of
`Chen actually include.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`As far as I can tell, the Patent Owner is confusing those two
`issues. We proved the priority date of Chen through a 112 Dynamic
`Drinkware analysis.
`And by doing that we showed it was the same inventor, we
`have got 112 support for the claims as issued in the 186, in the
`provisional application. Under Dynamic Drinkware, that's all we
`need to do to show that we've got priority back to that provisional
`application.
`They said, well, we have to show that everything that was
`disclosed in Chen has to be public as of that priority date. That
`doesn't make any sense because Chen, itself, the patent application,
`hadn't even been written yet.
`The priority date is established by statute 35 U.S.C. 119(e)(1).
`And that analysis hasn't been challenged by the Patent Owner.
`The separate issue is, what is disclosed in Chen as a reference.
`And it is a, I think foreign book law that is discloses all of this stuff on
`the face of Chen, as well as those materials that are incorporated by
`reference properly.
`The Patent Owner --
`JUDGE PLENZLER: Let me interrupt you real quick, sorry.
`MS. ALTON: Sorry.
`JUDGE PLENZLER: I know you talked about the two issues
`right, do you need the priority date of the provisional to succeed?
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`MS. ALTON: No. We only added the priority date of the
`provisional because at the time that you file a petition, you don't know
`if they're going to try swear behind the asserted reference. And we
`weren't 102 (b) because we were less than a year.
`So, I did that analysis simply to foreclose the possibility of
`any antedating declaration by the inventor. I don't need that priority
`date, it has been established in the petition, just to foreclose that
`possibility.
`JUDGE PLENZLER: Okay. I just wanted to be clear. I'm
`just trying to figure out what the dispositive issues are here. And I
`didn't really see where the Petitioner was coming back with the, I'm
`sorry, the Patent Owner was coming back in this proceeding with
`anything that would require you to have that priority date. I just
`wanted to make sure that was a correct understanding.
`MS. ALTON: Yes, they did not. It's just a, I made the
`judgment call at the outset to make sure that I had established that. I
`don't think it's required.
`The publication date and the filing date of Chen itself is
`qualified as the prior art against the challenged patents. But --
`JUDGE PLENZLER: You said there was no real issue, sorry.
`Sorry to interrupt you.
`There is no real issue then, like what you were talking about as
`far as the public availability of the provisional materials itself, right?
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` Case IPR2017-003311 (Patent 9,119,495 B2)
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`I know there's that argument you mentioned that if the
`provisional materials themselves, may not have been available at the
`exact date, right, for the priority claim if you're using the provisional
`claim. However, if we just look at the priority date for the Chen
`patent itself, the provisional documents were public and available to
`anyone that wanted them, is that correct?
`MS. ALTON: That is correct. They were published as of
`the publication date of the Chen patent. Which was before the date
`of the issuance.
`So, that's just be operation of statute. They're available on
`PAIR now.
`So that was what I was going to say, is that they have certain
`cases that said incorporation by reference was improper where the
`materials were secret. These materials were not secret, they are
`publicly available and have been so since the publication date of
`Chen.
`
`There is no obligation to show that they are public as of a
`certain date of priority. Like I said, that's not how the statute
`operates.
`They've also cited to a certain number of cases that certainly
`relate to improper incorporation by reference. For example, there's a
`case where there is no incorporation by reference whatsoever.
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`Well, obviously that was insufficient to incorporate another
`reference.
`There is also a case that they cited that said, we refer to
`relevant portions of another disclosure. We haven't done that here.
`The patent, Chen, incorporates its provisional application in its
`entirety.
`So, I guess I'll reserve much of any rebuttal on that point, but
`as far as I can tell, this is much to do about nothing. The Chen
`disclosure includes the Chen provisional. Which is highly related to
`its own disclosures.
`And really only varies in some differences for how it
`structurally discloses the coaxial electrical connector inside the trunk
`and some other portions that are relevant to claim construction. As
`asserted by the Patent Owner.
`If that's all on that topic, I was just going to do a high level
`summary of the disclosure of Chen and its provisional application.
`And some of the other asserted references.
`Turning to slide 12, they didn't challenge the male side of the
`connector. We have a male prong and a male channel prong. They
`haven't disputed our understanding of those claim terms or whether or
`not those structures are present in Chen.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
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`But basically you've got one half of the electrical connector
`with a terminal on the inside, a barrel connector surrounding that
`electrical connector. The barrel connector is entirely made of metal.
`So, they've made much assertive, in a way, which side the
`connector is going to make an electrical connection on. Because you
`can have plastic insulation on any side of a barrel connector.
`In this case, you can make an electrical connection on the
`inside or the outside of a barrel connector, it doesn't really make a
`material difference. In other words, they're not saying that there is
`secondary considerations or some huge innovation that is
`differentiating their products from this one, based upon the small
`incremental differences in structure.
`In turning to the next slide, this is the female side of the
`electrical connector as disclosed in Chen. I'm on slide 13, paper 2 at
`33 through 35.
`We just cited 810 matter, just for convenience. So, all of the
`slides have citations to that brief. There is other relevant disclosures
`in the other briefs of course.
`This just discloses that there's a channel void around the
`electrical connector, which enables the electrical connector to make an
`electrical contact. Obviously, you have to have a space there for
`another electrical connector housing to make electrical connection.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`In just summarizing what I had said about the provisional
`application, the male side of the provisional application is extremely
`similar to the Chen disclosure. I will note that it expressly calls out
`the male prong on the top side of the connector. I am now on slide
`14, figure 13 of the Chen provisional.
`JUDGE PARVIS: I have a question on, I think it's slide 13.
`It's the original Chen disclosure. The 186 patent.
`Willis Electric argues that the Chen discloses that contact 306
`is completely recessed. Is that correct in, I think it's in the reply.
`Willis Electric's reply.
`MS. ALTON: Right. Right.
`JUDGE PARVIS: So, is that, contact 306, is that actually
`shown in figure 16b or is that the contact 306 in say figure 9 in slide
`13?
`
`MS. ALTON: Yes.
`JUDGE PARVIS: I just wanted to make sure it was Contact
`306, it wasn't a typo or something. Contact 302. So, page 21 of the
`reply brief.
`MS. ALTON: In 810?
`JUDGE PARVIS: Well, I'm sorry, no. It's in the 331 and
`332 IPR. So it's the 495 patent.
`MS. ALTON: Did you say page 31?
`JUDGE PARVIS: I'm sorry, page 21.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
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`MS. ALTON: 21.
`JUDGE PARVIS: This is figure 16b, I think immediately
`follows your argument. And it's referring to Element 302. And I
`just want to show that you're referring to contact 306.
`MS. ALTON: It should be, I think actually it's either 308 or
`302, right? 302 is the external kind of barrel connector and 308 is the
`connector that's inside that recess 310. Either of them would be
`completely recessed.
`JUDGE PARVIS: Okay.
`MS. ALTON: We did note, to the extent some extra housing,
`as they've argued, is required to be recessed, it's disclosed by the
`provisional, that's on the next page, on page 22. And you can see it
`on this slide here.
`That there's the central void connector at the bottom of the
`recess, similar to where it is in the Chen patent. That that's
`completely recessed within the connector housing.
`And then also, the outer channel void is this ring that
`surrounds nonconductive area, a barrel connector. And then there is
`connector walls defining the outer limits of the voids that rise above
`both sides of the connector.
`So I think that both disclosures do have that fully recessed
`characteristic.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
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`JUDGE PLENZLER: But, can I ask you real quick though?
`Even if we accept Patent Owner's construction for the female end
`structure, would you still prevail with the provisional disclosure --
`MS. ALTON: Absolutely.
`JUDGE PLENZLER: -- or do you need the construction?
`MS. ALTON: No. I mean, I believe that that's why they
`didn't address the provisional application substantively in their Patent
`Owner response.
`Because you can see that both parts of their claim
`construction, which I believe is an incorrect claim construction by the
`way, but they're requiring that there is a void that is limited or
`channeled by something other than the trunk walls.
`If you look at the female side of figure 13, that is the case
`here. There's, the trunk walls are labeled as these two parts, they're
`going to sleeve together with the upper trunk walls. I've got two
`different annotations here.
`The mechanical connection is made between the projecting
`wall four by four and four, two, two. That's the top and bottom.
`And then this sort of black electrical housing is the connector housing.
`It's those prongs that are sticking up.
`So to the extent that they prevail on their claim construction
`requiring some extra piece of plastic to surround that channel, that's
`expressly disclosed in the Chen provisional application. And
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`similarly to the extent that the female end has to be recessed within a
`connector instead of just a tree trunk, that's disclosed in the
`provisional application as well.
`JUDGE PARVIS: And the contact 306 and contact 308 is the
`description here, I think in column 12.
`MS. ALTON: The contact, pardon me, the contact numbers
`are different in the provisional.
`JUDGE PARVIS: Oh, okay. But in the 186 patent it's
`contact 306 and contact 308? As described in the middle Column 12.
`MS. ALTON: I think that there is --
`JUDGE PARVIS: Or is that not?
`MS. ALTON: It might be a typo. It's --
`JUDGE PARVIS: If you want to look at it and then answer
`the question --
`MS. ALTON: Yes, I will. Okay.
`JUDGE PARVIS: Thank you.
`JUDGE PLENZLER: Let me go back to the claim
`construction then. Let's assume for arguments sake that for one
`reason or another the provisional information is no good that you need
`Chen or you need Otto for one of these things, right? So you need a
`construction for a female end.
`What is the difference between female end of a trunk portion
`or a female end of a power distribution system?
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` Case IPR2017-003311 (Patent 9,119,495 B2)
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`I mean, it seems like those are possibly different things that
`are, they're recited in the claim in a different way, right? So I can see
`maybe a female end of a trunk section having a male connector, right?
`It doesn't necessarily specify the type of connector.
`But now when we go to the other claim that talks about the
`female end of a power distribution system, what meaning are you
`giving to the term, female end?
`I mean, it's kind of coming back to almost the tree portion
`discussion we had in the other case, but now you're on the other side
`and we're looking at, okay, is this is the label or is this how it's
`structured? I'm just curious.
`Under your construction, what's the structure for female end
`beyond a label, right, because it has other things in the claim after it.
`The channels and all that good stuff.
`But, what structure do you give to female end?
`MS. ALTON: Well, I do think that it's defined by the claims.
`I mean, the female end is consistently defined as the one with a central
`void and a channel void. And that's in this, or a channel void I
`suppose, sometimes it doesn't necessarily say that it needs to have
`both.
`
`But, a female end, I think in the understanding of a POSA, is
`the one that has at least one void. And then the male end similarly.
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` Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`We had construed it, I think originally, as having a male prong
`and a channel prong. Just because the structures are identified in the
`specification.
`Now, as I've said, a POSA understands female and male to be
`relative. So, because there is no lexicography in the patent
`specification that says, I mean female end to be one that is housed in
`an electrical connector or has some other special characteristics, that's
`not identified in the specification at all so we're left with, well, the
`understanding of a person of ordinary skill in the art, I guess if you're
`going to say a female end, a person of ordinary skill in the art would
`say it has to have some aspect where it receives another component.
`And it's specified in the course of their claims that it has two
`such areas. Does that make sense?
`JUDGE PLENZLER: It does. But, I mean, would you agree
`also that it seems like the typical meaning of female, at least in the
`context of the power distribution system, right, forget about the trunk
`section, would be the end that provides the power not the end that
`receives the power? You know what I mean?
`It kind of goes along with Patent Owner's argument of not
`wanting exposed contact, right, because if I have power coming out of
`a source, I want the contacts to be concealed so I don't electrocute
`myself, right?
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` Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`MS. ALTON: Well, that's certainly a position that they
`haven't put forth. In terms of a female end, I guess I was relying on
`my expert to understand that it has to have at least one receiving
`portion. And --
`JUDGE PLENZLER: Isn't that a position they put forth
`though because they talk about the shock risk, right, for having
`exposed contacts?
`You're not going to have a shock risk if you're not providing
`power from that end, right?
`If I'm on the end receiving power I'm not going to get shocked
`by that because I'm just going to plug it in.
`MS. ALTON: I think that that end is talking about the male
`end, correct?
`I mean, the language that they have set forth in their brief
`relates to the risk of shock by the male end. And it says it may be
`electrically conductive, not that it is.
`I'm just trying to turn to that quote.
`JUDGE PLENZLER: But that's like the Chen nontraditional
`arrangement, right?
`I mean, where things are flopped. You've got the male and
`female and were using that in the opposite contexts. Or am I
`misunderstanding?
`MS. ALTON: I'm not sure if I understand your question.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`JUDGE PLENZLER: In the non-provisional disclosure for
`Chen, right, just what's in the regular non-provisional filing that's
`published, right?
`MS. ALTON: Yes.
`JUDGE PLENZLER: It's the male and female that are
`flopped. So you have, on what you're considering the female end in
`Chen, some sort of exposed contact, correct?
`MS. ALTON: On the female end I guess it depends on what
`you're calling exposed. It's recessed within a trunk portion. But --
`JUDGE PLENZLER: That's just where my thought was
`coming from in looking at this thing is, where is the power coming
`from, right?
`It kind of makes sense with what they're saying so I was just
`curious how the POSA's understanding comes to terms, into play there
`to kind of address that.
`MS. ALTON: Sure.
`JUDGE PLENZLER: I mean, it all comes back to giving
`some meaning to the term female end, right, because otherwise we're
`just saying first end, second end, and what's the difference between
`saying that and saying male and female under the construction you
`have?
`
`MS. ALTON: Understood. I did pull up the quote that you
`were indicating that they cited to. It's on their slide 5.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`That it can improve safety during assembly because the
`exposed male prongs are not energized. They're talking about having
`male prongs on the top portion and they don't have electricity as
`they're inserted into female end.
`It says, that the lowest section comprises a male end 205,
`energized prongs can be exposed and accidental electric shock can
`result.
`
`So, energized prongs can be exposed, it doesn't say that there
`is two of them or that they are necessarily going to be exposed. And
`I think that we've put forth evidence in our petitions that a, and in fact
`actually, a secondary resource in our reply that states that the terms
`male and female are relative and they're often confusing because
`you're talking about things nesting or fitting into one another.
`So I would say that a female end, when you identify that it's
`not meaningless, it's just that it has to have at least one portion that
`receives something else. And their claim is further specifying that in
`their female end there are two sets of receiving ports. That there is a
`central and a channel void.
`Otherwise you wouldn't know necessarily how many receiving
`ports you're going to have on your female end. Does that make
`sense?
`
`JUDGE PLENZLER: I understand your position now.
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` Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`MS. ALTON: Okay. All right. Well, with that I think that
`I'll, unless you have any other questions from me, I'll hear from the
`Patent Owner and then reserve the rest of my time for rebuttal.
`JUDGE PARVIS: Thank you.
`MR. ANGLE: May it please the Board, Robert Angle on
`behalf of the Patent Owner in this instance, Polygroup Limited. With
`me are Chris Forstner, Alexis Simpson.
`While the parties dispute each other on almost every issue, we
`believe that there are few issues that really are dispositive here. That
`are not, that are not or really cannot be disputed. And that are
`dispositive on most the grounds asserted by the Petitioner.
`I'm going to focus really on those dispositive issues, Judge
`Plenzler, you asked at the beginning of Petitioner's argument about
`what are the really dispositive issues. I'm going to try to focus just on
`those.
`
`You recall, turning to slide 2, the grounds here asserted by the
`Petitioner are based on two primary references, the Chen patent,
`which we've talked about in the other proceedings pretty extensively,
`and the Otto grounds, which also we've discussed at some length.
`In the decisions on institution, the board noted that neither
`Chen nor Otto taught the spring activated contact section required by
`all the claims, of the 416 and 810 patents.
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` Case IPR2017-00309 (Patent 8,863,416 B2)
` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`As I'll discuss, Petitioner has failed to adequately explain how
`Chen, or how Otto, would be combined with McLeish to meet that
`element. Thus, failing their obligations under that ground.
`Turning to slide 11. Petitioner acknowledges that Chen does
`not teach a spring activated contact section within the central void of
`the female as required by the claims.
`Instead, Petitioner argues that a POSA would combine Chen
`with McLeish to meet this element. Petitioner argues that McLeish's
`spring finger 551, which is shown on the left-hand side of the slide, is
`the red little piece that goes right up the inside of the connector.
`Petitioner argues that that spring finger could be used in place of the
`second electrical contact 308, which is the little figure on the right, to
`provide the spring activated contact section.
`Now, in the petitions, Petitioner provides no explanation
`whatsoever as to how this would be done. And that's not an
`insignificant thing because as you can see, looking at the McLeish
`figure, the spring finger that runs up the inside is intended to bend
`back against the interior wall of the tube there.
`If that were to happen in Chen, if it were inside the contact set
`302 and were run up the side, first electrical contact 306, it would
`short out. In fact, the claims require that the male prong, of the male
`connector piece, push against the spring activate contact section.
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` Case IPR2017-003311 (Patent 9,119,495 B2)
` Case IPR2017-003342 (Patent 8,959,810 B2)
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`So the spring activated contact section in the claims, is there to
`press against the male prong to maintain electrical contact
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