UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`
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`
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`Willis Electric Co., Ltd.
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`Petitioner
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`v.
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`Polygroup Macau Limited (BVI)
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`Patent Owner
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`_________________________
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`Case Number Unassigned
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`Patent 9,119,495
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`_________________________
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`
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`Declaration of William K. Durfee, Ph.D. in support of petition for inter
`partes review of U.S. Pat. No. 9,119,495 Claims 21-30
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`1
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`WILLIS EXHIBIT 1002 -1
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`TABLE OF CONTENTS
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`Page
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`I.
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`BACKGROUND ............................................................................................... 1
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`II. QUALIFICATIONS .......................................................................................... 1
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`III. RELEVANT FIELD AND ORDINARY SKILL IN THE ART ....................... 3
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`A. Summary of the ‘495 Patent .......................................................................... 4
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`IV. CLAIM CONSTRUCTION FOR THE ‘495 ..................................................... 9
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`A.
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`“central prong” .............................................................................................10
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`B.
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`“channel prong” ...........................................................................................11
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`C.
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`“channel void”..............................................................................................14
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` D.
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`“plurality of locations, each location providing a different rotational
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`alignment” of independent claims 21, 28 ............................................................15
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`E.
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`“vertically extending section” of Claims 21, 28 ..........................................18
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`A. Priority date of the ‘495 patent ....................................................................20
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`B. Summary of the prior art ..............................................................................25
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Patent No. 8,454,186 to Chen ..................................................................25
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`‘186 Priority Date ....................................................................................33
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`Patent No. DE 8436328 to Otto ...............................................................34
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`POSA Knowledge ....................................................................................36
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`U.S. Patent Application No. US 2010/0072747 to Krize ........................36
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`U.S. Patent No 4,437,782 to Geisthoff ....................................................38
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`i
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`WILLIS EXHIBIT 1002 -2
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`Declaration of William K. Durfee, Ph.D.
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`7.
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`U.S. Patent No. 2,910,842 to Sensenig ....................................................38
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`V. THE GROUNDS..............................................................................................39
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` A. Ground 1: Chen renders Claims 1-20 of the ‘495 Patent Obvious in
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`Light of the Skill of a POSA ................................................................................41
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`i.
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`Chen Discloses Claims 21, 28 Elements (a-b) .........................................41
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`ii.
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`Chen Discloses Claims 21, 28, Element (c) ............................................41
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`iii. Chen Discloses Claims 21, 28 Element (d) .............................................46
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`iv.
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`Chen Discloses Claims 21, 28 Element (e) .............................................50
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`v.
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`1.
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`i.
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`Chen Discloses Claims 21, 28 Element (f) ..............................................51
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`Chen Discloses All Dependent Claims ....................................................54
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`Dependent Claims 22 and 23 ...................................................................54
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`ii.
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`Dependent Claims 24, 25 .........................................................................56
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`iii. Claims 26, 27 ...........................................................................................57
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`iv.
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`Claim 29 ...................................................................................................59
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`v.
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`Claim 30 ...................................................................................................60
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`vi.
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`The Chen Provisional Discloses Elements (a-b) .....................................61
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`vii. The Chen Provisional Discloses Element (c) ..........................................62
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`viii. Chen Provisional Discloses Element (d) .................................................63
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`ix.
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`Chen Provisional Discloses Element (e) ..................................................65
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` x.
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`The Chen Provisional Discloses Element (f) and Renders it
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`Obvious ............................................................................................................67
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`xi. Dependent Claims 22 and 23 ...................................................................70
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`ii
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`WILLIS EXHIBIT 1002 -3
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`Declaration of William K. Durfee, Ph.D.
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`xii. Claims 24, 25 ...........................................................................................71
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`xiii. Dependent Claims 26, 27 .........................................................................71
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`xiv. Dependent Claim 29, 30 ..........................................................................73
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`B. Ground 2: Chen in view of Geisthoff Renders Claims 1-20 Obvious. ........74
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` C. Ground 3: Otto in View of McLeish Renders Independent Claims 21,
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`28 and Dependent Claims 22-27, 29-30 Obvious. ...............................................76
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`1.
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`i.
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`ii.
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`Independent claims 1, 11 .........................................................................76
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`Otto Discloses Claims 21, 28 Elements (a-b) ..........................................76
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`Otto Discloses Discloses 21[c] (and 28[c]) .............................................77
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`iii. Otto in View of McLeish Discloses 28[c] ...............................................77
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`iv. Otto Discloses Claims 21, 28 Element (d) ...............................................79
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`v.
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`Otto in View of McLeish Discloses 21[d] and 29 ...................................80
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`vi. Otto Discloses Claims 21, 28 Element (e) ...............................................81
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`vii. Otto Discloses Claims 21, 28 Element (f) ...............................................81
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` 2.
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`Otto in View of McLeish Discloses Dependent Claims 22-27 and
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`29-30 ................................................................................................................82
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`i.
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`Claim 22 ...................................................................................................82
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`ii.
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`Claims 23, 26, 27 .....................................................................................82
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`iii. Claims 24 and 25 .....................................................................................82
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`iv.
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`Claim 30 ...................................................................................................83
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`VI. RIGHT TO SUPPLEMENT ............................................................................84
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`VII. CONCLUSION ................................................................................................84
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`iii
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`WILLIS EXHIBIT 1002 -4
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`VIII.JURAT .............................................................................................................85
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`Declaration of William K. Durfee, Ph.D.
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`WILLIS EXHIBIT 1002 -5
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`Declaration of William K. Durfee, Ph.D
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` Background I.
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`I, William K. Durfee, declare as follows:
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`1. I am currently a Professor and the Director of Design Education in the
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`Department of Mechanical Engineering at the University of Minnesota. I
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`have been retained on behalf of Willis Electric Co., Ltd. (“Willis Electric”) to
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`prepare a declaration in support of their Petition for Inter Partes Review of
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`U.S. Patent No. 9,119,495 (the “‘495”). My billing rate is $250 an hour. My
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`fee is not contingent on the outcome of any matter or on any of the technical
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`positions that I explain in this declaration. I have no financial interest in Willis
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`Electric or the outcome of this Petition.
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`2. This declaration briefly sets forth my background and qualifications to
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`provide my opinion, describes the technology at issue and background of the
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`art, identifies the materials I reviewed to prepare this declaration, and sets
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`forth my understanding of the patent claims at issue and my analysis regarding
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`the application to the patent claims of the prior art provided to me. I reserve
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`the right to supplement my opinions in the future, to clarify responses where
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`appropriate, and to take into account new information as it becomes available
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`to me.
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` Qualifications II.
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`3. My qualifications as an expert in the general field of mechanical engineering
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`and mechanical design with an emphasis on human factors are set forth in the
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`1
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`WILLIS EXHIBIT 1002 -6
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`Declaration of William K. Durfee, Ph.D.
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`paragraphs below. A copy of my latest curriculum vitae (C.V.) is attached as
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`Appendix A.
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`4. I have more than 30 years of experience working in the field of mechanical
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`engineering. I obtained a Ph.D. in Mechanical Engineering from the
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`Massachusetts Institute of Technology in 1985, a M.S. in Mechanical
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`Engineering from the Massachusetts Institute of Technology in 1981, and an
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`A.B. in Engineering and Applied Physics from Harvard University in 1976. I
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`am a named inventor on four U.S. patents and one European patent.
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`5. In my current position as Professor and Director of Design Education in the
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`Department of Mechanical Engineering at the University of Minnesota, I
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`teach, conduct research, and publish in the area of mechanical design. In
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`addition, I serve as a faculty member in the University of Minnesota Human
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`Factors program because of my work in human-machine interaction, including
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`ergonomics, as well as my expertise in biomechanics. I teach principles of
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`mechanical design in my courses and I advise graduate and undergraduate
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`student design teams conducting mechanical design projects.
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`6. The opinions expressed in this declaration are mine and they were developed
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`after studying the ’495 patent, and related documents such as the prior art
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`publications referenced in the ’495 file history and other documents
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`referenced herein. I have reviewed all the documents submitted with this
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`Petition. I am not a lawyer and have no legal training. I have been informed
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`2
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`WILLIS EXHIBIT 1002 -7
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`Declaration of William K. Durfee, Ph.D.
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`by Willis Electric’s counsel about various legal principles and rules, which I
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`have assumed and applied in my analysis.
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` Relevant Field and Ordinary Skill in the Art III.
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`7.
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`I have been asked to offer an opinion on the characteristics of a person
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`having ordinary skill in the art at the time of the alleged invention of the ‘495
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`Patent. I have reviewed the ’495 patent and portions of its prosecution history in
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`the United States Patent and Trademark Office. I understand that the ‘495 Patent
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`relates to the field of pre-lit artificial holiday trees. The relevant date of invention
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`is October 24, 2012. However, I understand that Patent Owner will contend that
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`the relevant date of invention is a year earlier, on October 28, 2011. The year
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`difference does not impact my opinion regarding the understanding of a person of
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`ordinary skill in the art (a “POSA”).
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`8.
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`I understand that a POSA is presumed to be a person with at least a
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`particular level of skill and knowledge in a certain field or industry and that is
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`capable of understanding and practicing the technology described in the patent at
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`issue. I understand factors to consider in assessing the level of ordinary skill
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`include (1) education level of inventor; (2) education level of active workers in the
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`field; (3) type of problems encountered in the art; (4) prior solutions to such
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`problems; (5) the rate of innovation in the field; and (6) the sophistication of the
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`technology. A POSA during the relevant timeframe would have been a person with
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`at least a bachelor’s degree in mechanical engineering or electrical engineering and
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`at least one to two years of experience in mechanical and electrical design aspects
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`3
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`WILLIS EXHIBIT 1002 -8
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`Declaration of William K. Durfee, Ph.D.
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`of products having mechanical and electrical connections, or a designer with at
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`least one to two years of experience in designing lighted artificial trees. A POSA
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`would be aware of mechanisms present in the art for aligning tree trunk sections,
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`including Krize, (Ex. 1012); Geisthoff, (Ex. 1013); Sensenig, ( Ex. 1014). Based
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`upon my education and experience, as set forth herein, I would qualify as at least a
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`POSA in the relevant time frame.
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`A.
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`Summary of the ‘495 Patent
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`9.
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`The alleged invention of the ‘495 patent relates to a tree construction to
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`transfer electrical power between tree trunk sections in an artificial tree. (Ex. 1001,
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`1:22-25.) The ‘495 specification identifies several aspects of the invention and
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`asserts that they were well known; I have incorporated this understanding into my
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`analysis.
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`10. Artificial Christmas trees comprising a plurality of trunk sections
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`connectable to one another is well known in the art. (Id. at 1:43-2:23.) In some
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`artificial trees, the trunk sections contain electrical systems allowing electricity to
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`flow through the trunk of the tree. (Id. at 2:11-23.) The problem identified, and
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`sought to be solved, by the ‘495 Patent is the difficulty in aligning the electrical
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`connectors in one trunk section with the electrical connectors in another trunk
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`section during assembly. (Id., 2:24-30.) Thus, the ‘495 Patent discloses a “power
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`transfer system for an artificial tree that allows a user to connect neighboring tree
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`trunk sections without the need to rotationally alight [sic] the trunk sections.” (Id.)
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`4
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`WILLIS EXHIBIT 1002 -9
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`11. The ’495 patent discloses several embodiments. In one embodiment, an
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`Declaration of William K. Durfee, Ph.D.
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`5
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`electrical connector at least
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`partially internal to a trunk
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`body includes two prongs
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`on the male side, one of
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`which is oriented in the
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`center of the connector, the
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`other of which is offset; and
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`a central hole and a circular
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`channel in which the prongs
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`fit on the female side:
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`WILLIS EXHIBIT 1002 -10
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`Declaration of William K. Durfee, Ph.D.
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`(Ex. 1001 Figs 3a, 3b (showing central prong 210, channel prong 215, central void
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`110, channel void 115); 10:37-57.)
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`12.
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`In another embodiment, the ‘495 discloses a circular prong, rather than a
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`projecting part, that fits into the circular female void:
`Fig. 8
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`Fig. 11
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`
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`(Id., Fig. 8 (disclosing female terminals 810 and 805); Fig. 11 (disclosing male
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`terminals 1005 and 1015); see also 12:33-48; 13:14-14:13.)
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`13. The ‘495 Patent has four independent claims that are substantially similar to
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`each other. Independent Claims 1 and 11 are presented in this petition. The only
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`differences are highlighted below.
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`Claim 21
`a An artificial tree comprising:
`b a plurality of tree trunk sections;
`c a male end of a first trunk section of
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`
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`Claim 28
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`
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`a male end of a first trunk section of
`6
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`WILLIS EXHIBIT 1002 -11
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`Declaration of William K. Durfee, Ph.D.
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`the plurality of tree trunk sections, the
`male end having a central prong and a
`channel prong, the central prong and
`the channel prong configured to
`conduct electricity; and
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`d a female end of a second trunk section
`of the plurality of tree trunk sections,
`the female end having a central void
`disposed within a vertically extending
`section, the central void having a
`central contact device disposed at least
`partially therein, the female end also
`having a channel void disposed around
`the vertically extending section, the
`channel void having a channel contact
`device disposed at least partially
`therein, the channel contact device
`disposed around the vertically
`extending section, and the central
`contact device and the channel contact
`device configured to conduct
`electricity;
`e wherein the central prong of the male
`end is configured to engage the central
`contact device of the female end and
`the channel prong of the male end is
`configured to engage the channel
`contact device of the female end to
`conduct electricity between the male
`end of the first trunk section and the
`female end of the second trunk
`section; and
`f wherein the channel prong of the male
`end is configured to engage the
`channel contact device of the female
`
`
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`the plurality of tree trunk sections, the
`male end having a vertically extending
`section, a central prong, and a channel
`prong, the central prong and the
`channel prong disposed at least
`partially interior to the vertically
`extending section, and the central
`prong and the channel prong
`configured to conduct electricity; and
`a female end of a second trunk section
`of the plurality of tree trunk sections,
`the female end having a central void
`and a channel void, the central void
`having a central contact device
`disposed at least partially therein, and
`the channel void having a channel
`contact device disposed at least
`partially therein, the channel contact
`device disposed around the central
`void, and the central contact device
`and the channel contact device
`configured to conduct electricity;
`
`
`
`wherein the channel prong of the male
`end is configured to engage the
`channel contact device of the female
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`7
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`WILLIS EXHIBIT 1002 -12
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`Declaration of William K. Durfee, Ph.D.
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`end at a plurality of locations on the
`channel contact device, each location
`providing a different rotational
`alignment of the first trunk section
`with respect to the second trunk
`section
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`end at a plurality of locations on the
`channel contact device, each location
`providing a different rotational
`alignment of the first trunk section
`with respect to the second trunk
`section
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`
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`14. The ‘495 patent acknowledges that electrical systems disposed within the
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`trunk sections is known in the art. (Id. at 2:12-23.) The electrical systems
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`comprising electrical prongs and electrical slots, wherein the prongs engage the
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`slots to allow electricity to flow through the trunk of the tree is also known. (Id.)
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`Thus, the only purportedly novel features remaining is a central prong that pushes
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`a spring activated contact section, which causes the spring activated contact section
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`to press against the central prong to maintain electrical contact. As I describe
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`below, these features are well-known, and/or would be obvious, given the prior art
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`and understanding of a POSA.
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`15. The dependent claims add nothing new or non-obvious and are substantially
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`similar.
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`8
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`WILLIS EXHIBIT 1002 -13
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`Claim 21 Dependents
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`Declaration of William K. Durfee, Ph.D.
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`Claim 28
`Dependents
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`30. The artificial tree of claim 29,
`wherein the channel void of the female
`end is disposed 360 degrees around the
`central void of the female end.
`29. The artificial tree of claim 28, the
`female end comprising a vertically
`extending section, the central void
`disposed within the vertically
`extending section of the female end,
`and the channel contact device
`disposed around the vertically
`extending section of the female end.
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`i
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`j
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`g 22. The artificial tree of claim 21,
`wherein the channel contact device of
`the female end is disposed on the
`surface of the vertically extending
`section of the female end.
`h 23. The artificial tree of claim 21,
`wherein the vertically extending
`section of the female end is
`substantially cylindrical.
`24. The artificial tree of claim 21, the
`male end having a vertically
`extending section, the vertically
`extending section having a central
`void, and wherein the central prong
`and the channel prong are disposed at
`least partially within the central void
`of the vertically extending section of
`the male end.
`25. The artificial tree of claim 24,
`wherein the vertically extending
`section of the male end is
`substantially cylindrical.
`k 26. The artificial tree of claim 21,
`wherein the channel contact device of
`the female end is at least partially
`cylindrical.
`27. The artificial tree of claim 21,
`wherein the channel contact device is
`disposed 360 degrees around the
`central void of the female end.
`
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`l
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` Claim Construction for the ‘495
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`IV.
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`16. The ‘495 Patent relates to the field of pre-lit artificial holiday trees. I have
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`employed the plain and ordinary meaning for all elements of claims 1-20
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`9
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`WILLIS EXHIBIT 1002 -14
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`Declaration of William K. Durfee, Ph.D.
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`except where indicated below. I understand from counsel that in this
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`proceeding, the claims must be given their broadest reasonable construction in
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`light of the specification. 37 CFR 42.100(b). I also understand that if an
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`inventor acts as his or her own lexicographer, the definition must be set forth
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`in the specification with reasonable clarity, deliberateness, and precision.
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` “central prong” A.
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`17. The broadest reasonable construction of “central prong” is an “electrically
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`conductive slender projecting part, which is axially extending from the
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`center of the male end of a power distribution subsystem.” The ʼ495 patent
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`does not state an explicit definition of the term “central prong.” (See Ex. 1001
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`at 2:54-55; 3:10-11; 3:30-33.) The disclosure associates a “central male
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`prong” with element 210, (id. at Figs. 2, 3b, 3c; 8:47-9:3; 9:42-53; 10:46-50),
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`and with element 1005 (id. at 13: 31-32 (“As shown in FIG. 10, male end
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`1000 can have a central male prong 1005 and a channel male prong 1010.”);
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`see also Figs. 10, 11, 12a, 12b, 12c, 12d; 13:40-45; 14:3-5; 14:36-39, 14:49-
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`53.) The specification consistently associates a “central prong” with a slender
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`projecting part. (See id.) This is in accordance with modern parlance and the
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`understanding of a POSA, which would ordinarily consider a “prong” to be a
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`slender projection. Dictionaries can give further relevant insight into a
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`POSA’s understanding. Some definitions include: “a slender pointed or
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`projecting part” (Ex. 1019, p. 922); “sharply pointed part of a tool or
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`instrument, such as a tine of a fork; a sharply pointed projection” (Ex. 1020, p.
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`
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`10
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`WILLIS EXHIBIT 1002 -15
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`Declaration of William K. Durfee, Ph.D.
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`991-92); “any pointed projecting part” (Ex. 1021, p. 1077); and (“each pointed
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`member of a fork” (Ex. 1022, p. 979). Thus, this construction simply
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`identifies what a “prong” is and how it is “central.” It is the broadest
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`reasonable interpretation of “central prong.”
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`B.
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`“channel prong”
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`18. Petitioner submits that the broadest reasonable construction of “channel
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`prong” as used in the claims of the ‘495 patent is an “electrically conductive
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`protrusion radially offset from the central prong.” The ‘495 patent does not
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`state an explicit definition of the term “channel prong.” The specification
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`associates a “channel prong,” or in some instances, a “channel male prong”
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`with element 215 (id. at Figs. 2, 3b, 3c; 8:47-52; 9:4-15; 9:42-53; 10:40-50)
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`and with element 1010 (id. at Figs. 10, 11, 12b, 12c; 13:31-14:13; 14:36-61).
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`(See also Fig. 4a-c; 10:55-62 (depicting “male plug” with “prongs” but no
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`“central” or “channel” prongs.)
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`19. Upon my review of the nonprovisional application filing, I noted the
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`specification was amended from the provisional to add disclosures related to a
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`“channel male prong” with a configuration that a POSA would not consider to
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`be a “prong.” As discussed above, a POSA would understand a “prong” to
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`include a slender or pointed projectile as is common in modern parlance, such
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`as the prong of a fork or antler. Ex. 1012, p. 922 (“a slender pointed or
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`projecting part”); Ex. 1013, p. 991-92 (“sharply pointed part of a tool or
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`instrument, such as a tine of a fork; a sharply pointed projection”); Ex. 1014,
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`11
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`WILLIS EXHIBIT 1002 -16
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`Declaration of William K. Durfee, Ph.D.
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`p. 1077 (“any pointed projecting part”); Ex. 1015, p. 979 (”each pointed
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`member of a fork”).) However, the disclosure as amended in the
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`nonprovisional includes a “channel male prong” as element 1010 shown in
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`FIGS. 10-11, 12b, and 12c, which is a tabular, non “prong–like” structure, and
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`discloses that it can further comprise a circular structure enclosing the central
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`prong.
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`(Ex. 1001 at Fig. 8 element 715 (depicting circular safety cover to be pushed by
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`circular pushing surface 1020); Fig. 11 (depicting circular pushing surface as a
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`portion of channel male prong 1010); see also 13:64-65 (“the channel male prong
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`1010 can further comprise a pushing surface 1020”). As such, according to the
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`‘495, a prong may comprise a circular structure that surrounds the central prong
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`and is configured to fit into a circular void, because the entire circular pushing
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`12
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`WILLIS EXHIBIT 1002 -17
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`Declaration of William K. Durfee, Ph.D.
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`surface may comprise a portion of the channel prong. In this manner, the Patent
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`Owner appears to have acted as its own lexographer to include structures as a
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`“channel prong” that are not “prong-like” structures within the understanding of a
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`POSA. Therefore, under the broadest reasonable construction, channel prong, as
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`described by the specification, can include other structures, which under the
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`understanding of a POSA, are not traditionally considered prongs, or pointed
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`projecting parts.
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`20. Indeed, as demonstrated by Patent Owner’s infringement contentions, this
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`construction has been adopted by the PO in co-pending litigation asserted
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`against
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`Petitioner:
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`(Ex. 1015 at 3 (asserting that circular conductive structure meets the claimed
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`limitation of a “channel prong”).)
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`21. This understanding was not enabled by the provisional application, which
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`made no such disclosures. (See generally Exhibit 1003.) The provisional
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`13
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`WILLIS EXHIBIT 1002 -18
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`Declaration of William K. Durfee, Ph.D.
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`application does not disclose or enable a channel “prong” having a structure
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`other than a slender or pointed projectile part, (id.); because there is no
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`Section 112 support or written enablement for such a structure, the priority
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`date for this element is the date of the nonprovisional filing.
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`C.
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`“channel void”
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`22. Petitioner submits that the broadest reasonable construction of “channel void”
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`as used in the claims of the ‘495 patent is a hollow or aperture which may be
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`substantially circular, offset from the central void and configured to receive
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`and engage a portion of another connector.” The ʼ495 patent does not state
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`an explicit definition of the term “channel void.” But the ʼ495 patent states
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`that the channel void can be circular. (Ex. 1001, 3:26-27 (central void “can be
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`disposed proximate the center of the substantially circular channel void.”)
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`Dependent claim 5 claims that the channel void is “substantially circular.” The
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`channel void is further described below:
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`Female end 105 can comprise central receiving void 110 for engaging
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`with a prong of a male end and channel receiving void 115 for
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`engaging with another prong of a male end.
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`In some embodiments, the voids 110, 115 can be hollows or apertures
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`that receive and engage with other electrical connectors, such as
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`prongs, and enable the electrical connectors to conduct electrical
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`power through the trunk of the tree.
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`(Id., 2:57-64; 4:13-14, 4:18-20; 14:60-64.) A POSA would understand this to mean
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`that the channel void is a space, separate from the central void. A POSA would
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`further understand this space would be configured to allow a prong, such as the
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`14
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`WILLIS EXHIBIT 1002 -19
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`Declaration of William K. Durfee, Ph.D.
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`channel prong, to engage with or enter the space in order to connect with an
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`electrical contact. In addition, in order to ensure the connectors could engage
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`without the need to rotationally align the connectors, a POSA would appreciate
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`that the channel void would be substantially circular.
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`D.
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`“plurality of locations, each location providing a different rotational
`alignment” of independent claims 21, 28
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`23. Petitioner submits that the broadest reasonable construction of “plurality of
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`locations on the channel contact device” is its plain and ordinary meaning,
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`allowing any/infinite number of configurations or alignments for any/infinite
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`number of rotational alignments. Thus, the phrase does not need to be
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`construed. Indeed, PO has taken the position – and based upon the disclosure
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`of multi-directional connectors, the PTAB has preliminarily adopted – that “at
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`least four different rotational alignments” of a connectable trunk portion
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`includes “an infinite number of rotational alignments.” (Ex. 1017 at 7-9; Ex.
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`1018 at 7-9.)
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`24. PO may claim construction requires a particular number of specific
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`alignments. But such a limiting construction would not be the broadest
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`reasonable interpretation for “plurality of locations” and, I understand, would
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`violate the principle that limitations stated in dependent claims are not to be
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`read into the independent claims from which they depend.
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`25. First, the number of locations for the rotational alignment is not limited by the
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`claim language, which claims only a “plurality” of locations.
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`15
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`WILLIS EXHIBIT 1002 -20
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`Declaration of William K. Durfee, Ph.D.
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`26. Second, the specification does not ever describe a specific number of
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`alignments that may constitute the plurality of configurations/locations
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`allowing a different rotational alignment as it appears in the claims. To the
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`contrary, it is clear that the two trunk segments can be engaged “regardless of
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`the angular relationship, or rotational alignment, between the male end 205
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`and the female end 105. Indeed, in “some embodiments, therefore, the
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`angular displacement between connecting trunk sections 100 is not
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`problematic during assembly because the trunk sections 100 can be joined at
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`any number of angular displacements.” (Ex. 1001 at 9:25-28 (emphasis
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`added).)
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`27. The claim, therefore, is not limited to any specific number of alignments or to
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`limiting rotation in any way.
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`28. I understand Patent Owner may rely on certain figures that depict “alignment
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`mechanisms” or “clutch elements” that will fit together to register the two
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`trunk sections to each other, and prevent rotation once they are assembled.
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`(E.g., id. Figs 1-2, (elements 125, 225); Figs. 14a-14b, (elements 1405,
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`1410).)
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`29. This is a different aspect of the alleged invention than appears in the
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`independent claims directed to any number of angular displacements. The
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`‘495’s stated purpose of the alignment mechanism or clutch elements is to
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`prevent the trunk sections from rotating with respect to each other. (Ex. 1001
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`at 15:35-37.) This teaching is the specific subject of a dependent claim, not
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`16
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`WILLIS EXHIBIT 1002 -21
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`Declaration of William K. Durfee, Ph.D.
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`the subject of this Petition, (Claim 20), directed to “one or more alignment
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`mechanisms” to prevent rotation. The dependent claim is narrower than the
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`“plurality of locations” in the independent claims, which do not contain
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`analogous and specific limiting language. Because dependent Claim 20
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`provides limitations regarding alignment mechanisms “to prevent the first tree
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`trunk section from rotating with respect to the second tree trunk section,” it is
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`my understanding that Claims 21 and 28 (and any other claims reciting a
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`“plurality of” configurations or locations) cannot include the same limitations
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`as Claim 20.
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`30. In addition, I understand Patent Owner is on record using a sworn statement
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`that such claim language is not to be limited to a particular discrete number of
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`positions.” Ex. 1016 (construing “in at least four different rotational
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`orientations” to cover “an infinite number of rotational alignments.”
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`(emphasis added)).
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`31. Thus, the broadest reasonable interpretation of the “plurality of
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`configurations” phrase is unlimited as to number of configurations or whether
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`to allow rotation after assembly.
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`32. I note that a broader construction would not be supported by the provisional
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`application. There is no support for a rotational alignment limitation – and in
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`fact the provisional teaches the opposite, stati