UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`CHANGER & DRESSER, INC.
`Petitioner,
`
`v.
`
`002152706 ONTARIO LIMITED,
`Patent Owner.
`_______________________
`
`Case IPR2017-00341
`Patent 9,393,639
`_______________________
`
`PETITIONER’S REPLY
`
`
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`CHANGER & DRESSER, INC.
`Petitioner,
`
`v.
`
`002152706 ONTARIO LIMITED,
`Patent Owner.
`_______________________
`
`Case IPR2017-00341
`Patent 9,393,639
`_______________________
`
`PETITIONER’S REPLY
`
`
`
`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS............................................................................................i
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`LIST OF EXHIBITS................................................................................................ iii
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`LILLEY IS ANALOGOUS ART TO THE ‘639 PATENT............................2
`
`III. A POSITA WOULD HAVE BEEN MOTIVATED TO MODIFY THE
`CYLINDER OF TAKABA TO INCLUDE HOLES ......................................9
`
`A.
`
`B.
`
`A POSITA Would Have Been Motivated To Modify Takaba To
`Include Holes To Ensure Proper Cap Alignment................................10
`
`A POSITA Would Have Been Motivated To Modify Takaba To
`Include Holes To Reduce Pressure On The Caps ...............................18
`
`IV. A POSITA WOULD HAVE BEEN ABLE TO MODIFY THE
`CYLINDER OF TAKABA TO INCLUDE HOLES ....................................21
`
`V.
`
`DR. DERBY IS QUALIFIED TO RENDER OPINIONS IN THIS
`PROCEEDING..............................................................................................26
`
`VI. CONCLUSION..............................................................................................29
`
`i
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`
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`Case No. IPR2017-00341
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`Petitioner’s Reply
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`TABLE OF AUTHORITIES
`
`Cases
`
`Crane Co. v. Automated Merchandising Sys., Inc.,
`APPEAL 2013-007855, 2013 WL 5460569 (Sept. 27, 2013) ...............................4
`
`Husky Injection Molding Sys. Ltd. v. Plastics Eng’g & Tech. Serv., Inc.,
`IPR2016-00431, 2017 WL 2608721 (June 15, 2017) ................................... 27, 28
`
`In re Keller, +
`642 F.2d 413 (CCPA 1981)..................................................................................21
`
`KSR Int’l Co. v. Teleflex Inc.,
`127 S.Ct. 1727 (2007) ..........................................................................................23
`
`Micron Tech., Inc. v. Innovative Memory Systems, Inc.,
`IPR2016-00320, Paper 44 (Dec. 6, 2017) ............................................................22
`
`Schrader-Bridgeport Int'l, Inc. v. Continental Automotive Systems US, Inc.,
`IPR2013-00014, 2013 WL 5970135 (Mar. 13, 2013)............................................4
`
`Sci. Plastic Prod., Inc. v. Biotage AB,
`766 F.3d 1355 (Fed. Cir. 2014)..............................................................................3
`
`Tietex Int’l, Ltd. v. Precision Fabrics Grp., Inc.,
`IPR2014-01248, 2016 WL 763086 (Feb. 27, 2016) ..................................... 27, 28
`
`Wyers v. Mast Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010)................................................................. 3, 23, 26
`Rules
`
`Fed. R. Evid. 702 .....................................................................................................27
`
`ii
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`
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`Case No. IPR2017-00341
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`Petitioner’s Reply
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`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`
`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 9,393,639 to Kaeseler
`Declaration of Mr. Vernon L. Mangold, Jr.
`Curriculum Vitae of Mr. Vernon L. Mangold, Jr.
`Excerpts from Prosecution History of the ‘609 Patent
`U.S. Patent No. 8,314,356 to Kaeseler
`U.S. Patent No. 8,742,281 to Kaeseler
`U.S. Patent No. 9,168,609 to Kaeseler
`Excerpts from Prosecution History of the ‘639 Patent
`U.S. Patent No. 4,986,251 to Lilley (“Lilley”)
`JP 2002-079381 (“Takaba”)
`Certified Translation of JP 2002-079381 (“Takaba”)
`Declaration of Anna Lee (Translator) re JP 2002-079381
`DE 199 05 477 (“Koch”)
`Certified Translation of DE 199 05 477 (“Koch”)
`Declaration of Anna Lee (Translator) re DE 199 05 477
`U.S. Patent No. 6,837,844 to Ellard et al.
`Excerpt from Prosecution History of Ellard
`Dictionary.com Definition of “Magazine”
`DE 102 22 248 (“Kaeseler”)
`Certified Translation of DE 102 22 248
`Declaration of Kiril Nazarov (Translator) re DE 102 22 248
`Expunged
`Expunged
`Expunged
`Expunged
`Expunged
`Expunged
`Declaration of Stephen J. Derby, Ph.D.
`Curriculum Vitae of Stephen J. Derby, Ph.D.
`Transcript of Deposition of Robert H. Wagoner, Ph.D.
`
`iii
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`I.
`
`INTRODUCTION
`
`Patent Owner raises four primary arguments in response to Petitioner’s
`
`obviousness arguments, none of which can save claims 1 and 35 of the ‘639 patent
`
`from cancelation. First, Patent Owner adopts an overly narrow view of what
`
`constitutes analogous art to argue that Lilley is non-analogous art to the ‘639
`
`patent. But the scope of analogous art is broad, and both Lilley and the ‘639 patent
`
`address
`
`the problem of automatically and reliably providing replaceable
`
`components at a consistent location. Second, Patent Owner relies on a strained and
`
`unsupported interpretation of Takaba to allege that there would be no reason to
`
`combine the holes of Koch or Lilley with the magazine of Takaba. But under
`
`either of Petitioner’s or Patent Owner’s interpretation of Takaba, a person of
`
`ordinary skill in the art (POSITA) would have been motivated to modify Takaba to
`
`include holes, as taught by Koch and Lilley.
`
`Third, Patent Owner applies an overly-rigid obviousness standard in arguing
`
`that the holes of Lilley or Koch could not be physically incorporated into the
`
`Takaba magazine. But as the Board noted in its Institution Decision, the standard
`
`is not whether particular embodiments of one reference can be bodily incorporated
`
`into the structure of another reference, but whether the combined teachings of the
`
`prior art would suggest the combination. Lastly, Patent Owner incorrectly asserts
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`1
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`that Petitioner’s declarant, Dr. Derby, is not qualified to render opinions in this
`
`proceeding because he allegedly does not have experience in spot welding. Dr.
`
`Derby is familiar with spot welding, but regardless, the purported invention of the
`
`‘639 patent is merely a mechanical device for feeding replacement caps, the
`
`operation of which is not impacted by the actual act of welding at all. Dr. Derby’s
`
`vast experience in various mechanical engineering disciplines, including welding,
`
`qualifies him to render opinions in this proceeding. For these reasons, claims 1
`
`and 35 of the ‘639 patent should be canceled.
`
`II. LILLEY IS ANALOGOUS ART TO THE ‘639 PATENT
`
`Lilley and the ‘639 patent both relate to automatically and reliably providing
`
`frequently replaced disposable components (i.e., pellets and welding caps), such
`
`that Lilley is analogous art to the ‘639 patent. Patent Owner argues that the
`
`problem addressed in the ‘639 patent relates to reliably providing welding caps to a
`
`stationary welding electrode, while Lilley relates to reliably providing diabolo
`
`pellets. See Paper 19 (“Resp.”) at 30-32. Patent Owner argues that because Lilley
`
`relates to problems associated with diabolo pellets, it addresses a different problem
`
`than the stationary welding electrode issues addressed by the ‘639 patent. See id.
`
`However, there are two ways in which a prior art reference can be analogous art to
`
`the challenged patent: (1) if the two are from the same field of endeavor; or (2) if
`
`2
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`the reference is reasonably pertinent to the particular problem the inventor is trying
`
`to solve. Wyers v. Mast Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). Patent
`
`Owner’s argument
`
`that Lilley cannot be analogous art because it addresses
`
`problems relating to diabolo pellets would essentially collapse the two prongs into
`
`a single requirement that the reference must be from the same field of endeavor as
`
`the challenged patent. Indeed, under Patent Owner’s argument, Lilley would only
`
`be analogous art to patents related to handling diabolo pellets.
`
`But the Federal Circuit and the Board have made clear that the scope of
`
`analogous art should be construed broadly, and that a prior art reference can be
`
`analogous art to a challenged patent, even if the two are from very different fields.
`
`See e.g., Wyers, 616 F.3d at 1238; see also Sci. Plastic Prod., Inc. v. Biotage AB,
`
`766 F.3d 1355, 1360 (Fed. Cir. 2014) (finding prior art relating to resealable
`
`beverage containers analogous to patent relating to resealable cartridge for low
`
`pressure liquid chromatography); Schrader-Bridgeport Int'l, Inc. v. Continental
`
`Automotive Systems US, Inc., IPR2013-00014, 2013 WL 5970135, at *11 (Mar. 13,
`
`2013) (finding prior art relating to reading multiple RFID tags analogous to patent
`
`relating to transmitting data in a tire-pressure monitoring system of a vehicle);
`
`Crane Co. v. Automated Merchandising Sys., Inc., APPEAL 2013-007855, 2013
`
`WL 5460569, at *1 (Sept. 27, 2013) (finding patent relating to optical sensing unit
`
`3
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`for counting seeds moving through seed transport ducts analogous to patent for
`
`glass front vending machine including optical system for sensing when product is
`
`provided). Likewise here, although Lilley and the ‘639 patent are from different
`
`fields,
`
`they both address the same problem,
`
`i.e., reliably and automatically
`
`supplying disposable components that require frequent replacement.
`
`Patent Owner states that the purpose of ‘639 patent is to address problems
`
`with providing replacement caps to stationary welding machines. See Resp. at 30.
`
`Because the welding machine is stationary, the cap magazine must be moved to the
`
`welding machine, and this movement can cause the replacement welding caps to
`
`become misaligned. See e.g., Ex. 2002 at ¶ 118. For example, a magazine that
`
`relies on gravity to pull the caps into position for attachment to the welding
`
`electrode, would not be able to reliably provide each cap in the precise removal
`
`location if, for example, the magazine was inverted. See id. Therefore, as Patent
`
`Owner contends,
`
`the ‘639 patent attempts to solve the problem of reliably
`
`providing the replacement caps in the precise access position each time, even if the
`
`magazine must be moved to the stationary electrode. See e.g., Resp. at 5-6; Ex.
`
`1030 at 72:24-73:2. The precise location of the cap is critical, given the limited
`
`mobility of the electrode. See e.g., Ex. 2002 at ¶¶ 41-45; Ex. 1030 at 72:7-23. In
`
`particular, the replacement cap must be precisely located so that the electrode can
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`4
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`be axially inserted into the cap. See e.g., Ex. 1030 at 72:7-73:2. If the replacement
`
`cap is even slightly misaligned, the electrode may hit the edge of the cap or a
`
`different part of the magazine, which may damage the replacement cap, the
`
`electrode, and/or the magazine. See id. at 76:10-78:6. Therefore, the problem
`
`addressed by the ‘639 patent is to reliably provide frequently replaced components
`
`(e.g., caps) in a precise access position so that they can be reliably extracted.
`
`Similarly, Lilley addresses the same reliable-feeding problems as the ‘639
`
`patent, but in the context of diabolo-shaped pellets, and pellets having other
`
`shapes. See e.g., Ex. 2002 at ¶ 114 (noting that diabolo pellets are “unsuitable for
`
`use with repeating mechanisms for consistent feeding.”).
`
`Lilley repeatedly
`
`mentions reliability as an object of the invention. See Ex. 1009 at 1:11 (seeking to
`
`provide an “effective and reliable magazine”); 1:21-22 (advantageous if magazine
`
`“could operate reliably with a wide range of different pellet weights and lengths”);
`
`1:25-26 (noting previous attempts to “provide versatile and reliable magazine
`
`facilities on airguns”); 1:65 (previous systems were not “even reasonably reliable
`
`for feeding Diabolos”); 2:13-16 (spring-loaded tube magazines only function with
`
`“moderate reliability with selected Diabolo pellets”); 2:26-28 (‘639 patent
`
`embodiments are “both simple and extremely reliable”) (emphasis added). To
`
`achieve this reliability, Lilley describes a magazine that ensures the pellet about to
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`5
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`be fired “will always be located in exactly the same position.” Id. at 5:61-63; see
`
`also Ex. 1030 at 142:2-11. To accomplish this, the Lilley magazine includes a post
`
`8 having an abutment surface 11 “which is arranged to abut each successive pellet
`
`in the pellet carrier so as to ensure registration of that pellet with the breech of the
`
`airgun,” as shown in Figs. 1 and 7 of Lilley below. Ex. 1009 at 3:9-12.
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`6
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`As shown in Fig. 5 of Lilley (below), the spring 4 causes the pellet carrier 2
`
`to rotate until the pellet 39 becomes trapped between the walls 40 and 41 of the
`
`chamber 21 and the abutment face 11 of the pellet stop post 8. See id. at 5:46-52;
`
`Fig. 5. The pellets themselves serve as part of the indexing mechanism to align the
`
`pellets with the breech of the airgun. See id. at 11:49-55.
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`7
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`As shown in Fig. 8 of Lilley, probe 64 pushes the pellet 61 out of the
`
`chamber 21 of magazine 57 into the barrel. Id. at 6:63-68. Lilley explains that the
`
`diameter of the chamber 21, and the diameter of the probe 64 are slightly larger
`
`than the diameter of the pellet. Id. at 6:2-4; 8:5-10. Probe 64 actually engages the
`
`walls of the chamber 21 and the abutment face 11 as the probe 64 is projected into
`
`the magazine. Id at 8:11-19. That is, the probe 64 and the chamber 21 are nearly
`
`identical in diameter, such that even a slight misalignment of the chamber with the
`
`probe will result in a malfunction because the probe would contact the edge of the
`
`chamber 21, and would therefore not be able to push the pellet through the
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`8
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`chamber into the barrel. See Ex. 1030 at 143:22-146:19. By ensuring that the
`
`pellet
`
`to be fired is “located in exactly the same position,” Lilley provides
`
`“extremely reliable magazines.” Ex. 1009 at 5:61-63, 11:29. Moreover, contrary
`
`to Patent Owner’s arguments that Lilley solely addresses issues related to diabolo
`
`pellets, Lilley explains that the magazines can be reliably used “with either or both
`
`ball or diabolo pellets of a calibre to suit the airgun and may be insensitive to the
`
`shape or length of the pellets.” Id. at 11:27-31. Therefore, Lilley addresses the
`
`broader problem of reliably and automatically feeding pellets—of various shapes
`
`and sizes—to a removal position, much like the ‘639 patent reliably feeds welding
`
`caps to an access position. Lilley is therefore analogous art to the ‘639 patent.
`
`III. A POSITA WOULD HAVE BEEN MOTIVATED TO MODIFY THE
`CYLINDER OF TAKABA TO INCLUDE HOLES
`
`Patent Owner argues that a POSITA would have no reason to modify the
`
`magazine of Takaba to include the holes of either Koch or Lilley because the
`
`Takaba magazine allegedly already sufficiently constrains the caps. See Resp. at
`
`32-39. However, Patent Owner’s argument is premised on an incorrect and
`
`unsupported interpretation of Takaba that improperly conflates the teachings of
`
`two separate embodiments. But even under Patent Owner’s interpretation of
`
`Takaba, a POSITA would have been motivated to modify Takaba to include a hole
`
`9
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`for each cap to reduce the pressure applied to each cap, and thereby avoid
`
`damaging the caps.
`
`A.
`
`A POSITA Would Have Been Motivated To Modify Takaba To
`Include Holes To Ensure Proper Cap Alignment
`
`Takaba discloses five examples, of which Petitioner relies on example 2.
`
`See Ex. 1011 at ¶¶ [0028]-[0032]. The parties agree that in example 2, spiral
`
`spring 62 causes the cylinder 611 to rotate in order to bring the caps to the removal
`
`area. See Paper 1 at 51-53; Resp. at 16. Fig. 5 of Takaba (below) shows the
`
`magazine of example 2:
`
`1 In a footnote in its Response, Patent Owner states that Takaba does not disclose
`
`the claimed “cap carrier” because cylinder 61 “does not have a mechanism that
`
`holds and carries spot welding caps,” but notes that the “Board does not have to
`
`resolve that question.” Resp. at 33, note 4. To the extent the Board does resolve
`
`this question, Petitioner submits that the cylinder 61 of Takaba corresponds to the
`
`claimed “cap carrier” at least for the reasons set forth at pages 51-56 of the
`
`Petition.
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`10
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`Takaba explains that the center end of the spring 62 is attached to a center
`
`axis 63, and rotates the cylinder 61 clockwise until a tip 18 comes into contact with
`
`the upper side installing part 23A to stop the cylinder 61 from rotating. See Ex.
`
`1011 at ¶¶ [0029]-[0030]. Although Takaba does not explicitly describe the outer
`
`end of the spring 62, Dr. Derby explained that Takaba’s disclosure that the spring
`
`62 causes the cylinder 61 to rotate, indicates that the outer end of the spring 62 is
`
`attached to the cylinder 61. See Ex. 2004 at 30:8-19; 33:9-19; 35:2-21; 37:7-24;
`
`38:4-16. Dr. Derby also testified that a POSITA would understand that, in the
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`11
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`embodiment described in example 2, the welding tips 18 “still have some space to
`
`move within the cylinder 61,” which could lead to similar misalignment problems
`
`experienced in gravity-fed magazines. Ex. 1002 at ¶ 88; see also Ex. 2004 at
`
`206:1-207:6.
`
`In arguing that the outer end of the spring 62 is not attached to the cylinder
`
`61 in example 2, Patent Owner relies on a completely different embodiment
`
`(example 4).
`
`In contrast to example 2, example 4 of Takaba discloses that the
`
`cylinder 61 is fastened between partitioning plates 64A, 64B, and 64C, and the
`
`spring causes the caps to rotate within the stationary cylinder to a removal position.
`
`See Ex. 1011 at ¶ [0038]. Fig. 9 of Takaba (below) shows the cylinder of example
`
`4:
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`12
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`Takaba – Fig. 9
`
`As shown above, the inner end of spring 62 is attached to a center axis 63,
`
`while the outer end of the spring makes contact with the last cap 18 in the cylinder.
`
`Because the cylinder 61 in example 4 is fastened between the partitioning plates,
`
`the tips are pressed by the spring to move in a clockwise direction along the outer
`
`circumference of the cylinder. See Ex. 1011 at ¶ [0038]. Based on this description
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`of example 4, Patent Owner’s declarant, Dr. Wagoner, opines that there are no
`
`spaces between the tips 18 themselves, between the tips and the inside surface of
`
`cylinder 61, or between the tips 18 and the spring 62 that would allow
`
`misalignment. See Ex. 2002 at ¶ 66. However, Dr. Wagoner’s opinion is based on
`
`the flawed assumption that the outer end of the spring 62 is not attached to the
`
`cylinder 61 in example 2, but rather presses against the last cap.
`
`In his deposition, Dr. Wagoner agreed that Takaba does not explicitly state
`
`whether the spring is attached to the cylinder in example 2. Ex. 1030 at 101:18-21.
`
`Dr. Wagoner also agreed that it would be possible to rotate the cylinder in example
`
`2 of Takaba by attaching the outer end of the spring to the cylinder, and that a
`
`POSITA would be aware of a variety ways of attaching the spring to the cylinder.
`
`Id. at 102:18-21; 103:21-104:6.
`
`In addition,
`
`the Brief Description Of The
`
`Drawings section of Takaba specifically identifies Fig. 5 as referring to example 2,
`
`and Fig. 9 as referring to example 4, further supporting the distinctions between the
`
`two embodiments. Ex. 1011 at p. 15.
`
`Moreover, Dr. Wagoner speculates that the spring could cause the cylinder
`
`to rotate by only contacting the caps (as shown in Fig. 9), but provides no
`
`explanation as to how that could be possible. See Ex. 2001 at ¶ 63.
`
`In his
`
`deposition, Dr. Derby noted that it may be theoretically possible to rotate the
`
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`carrier by merely having the outer end of the spring contact the last cap, however
`
`Dr. Derby noted that it would depend on the friction between the caps and the
`
`cylinder. See Ex. 2004 at 32:2-33:19. But Takaba is noticeably silent about
`
`friction forces between the caps and the cylinder. Thus, in an attempt to discredit
`
`Dr. Derby’s logical interpretation that the attachment of the spring to the cylinder
`
`is what causes the cylinder to rotate, Patent Owner merely speculates that the
`
`spring would be able to rotate the cylinder by pressing against the last cap. Dr.
`
`Derby’s correct conclusion that the spring is attached to the cylinder in example 2
`
`of Takaba supports his opinion that the caps in Takaba are not held so tightly to
`
`avoid all movement within the cylinder, and that a POSITA would therefore have
`
`been motivated to modify Takaba to include holes for each cap in order to avoid
`
`misalignment. See e.g., Ex. 1002 at ¶¶ 88, 98.
`
`Koch further supports this motivation to use holes, even in a spring-loaded
`
`magazine. The first embodiment of Koch (shown below) discloses a spring-loaded
`
`cap magazine that holds multiple caps in a magazine chamber 5a.
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`Koch – Fig. 1
`
`The caps rest on the top side of a slide 6a, while the bottom side of the slide
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`6a is attached to a spring 6. See Ex. 1014 at 9:18-19. The spring 6 pushes the slide
`
`6a and the caps towards a removal area 19, until the first cap makes contact with
`
`the arch-shaped top portion of the magazine chamber 5a.
`
`Id. at 9:16-24. Koch
`
`explains that the magazine includes holding members in the removal area 19 to
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`16
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`ensure secure positioning of the cap in the removal position. See id. at 9:25-10:2.
`
`In particular, Koch explains that “the holding device used engages around the
`
`entire circumferential surface of the electrode caps or at least a portion of the
`
`circumferential surface that is large enough to ensure the exact positing of the
`
`electrode caps.” Id. at 2:3-5. That is, even though the spring 6 and slide 6a press
`
`the caps against the arch-shaped stop of the magazine chamber 5a, Koch discloses
`
`that holding devices that engage around the entire circumferential surface of the
`
`electrode caps are beneficial to “ensure the exact positioning of the electrode
`
`caps.” As a POSITA would understand, the holes of Koch would also engage
`
`around the entire (or, in Lilley, nearly the entire) circumferential surface of the
`
`caps, and would therefore provide the same advantage of ensuring exact
`
`positioning at the removal area. Therefore, contrary to Patent Owner's argument
`
`that the magazine of Takaba does not need holes to hold the caps in proper
`
`alignment because the caps are spring-loaded, a POSITA would be motivated to
`
`modify Takaba to include holes in order to ensure proper cap alignment, as
`
`explained by Koch.
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`17
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`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
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`B.
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`A POSITA Would Have Been Motivated To Modify Takaba To
`Include Holes To Reduce Pressure On The Caps
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`Although Petitioner disagrees with Patent Owner’s interpretation of Takaba
`
`raised in Patent Owner’s Response (see e.g., Resp. at 17-18; Ex. 2002 at ¶¶ 61-66),
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`even under Patent Owner’s interpretation, a POSITA would have been motivated
`
`to modify Takaba to include holes to reduce the pressure on the caps, and thereby
`
`avoid damaging the caps. Under Patent Owner’s interpretation of example 2 of
`
`Takaba, the spring presses outwardly so that the tip 18 is pressed against an inner
`
`circumferential surface of the cylinder 61, and the outer end of the spring pushes
`
`directly against the last tip 18 so that each tip (other than the first and last tip) is
`
`pressed against its neighboring tips. See Ex. 2002 at ¶¶ 58-66; Resp. at 35-36; Ex.
`
`1030 at 93:21-94:9. Therefore, as Dr. Wagoner testified, each cap would be held
`
`by applying pressure at four points on the cap. Ex. 1030 at 94:1-13. An annotated
`
`illustration of the four contact points is shown below:
`
`18
`
`
`
`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
`
`Takaba – Fig. 9 (annotated)
`
`However, Koch, which is from the same field of endeavor as the ‘639 patent,
`
`notes that applying a high contact pressure to the surface of the caps can damage
`
`the electrode caps. See Ex. 1014 at 3:9-13. To address this problem, Koch
`
`explains that in the second embodiment (which includes a plurality of holes), each
`
`hole includes a holding member that “ensures uniform pressure distribution over
`
`the entire circumference of the electrode cap, it being possible to select a lower
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`19
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`
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`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
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`pressure in comparison to pressing members acting in a point-wise manner
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`without having a negative impact on the desired holding effect.” Id. at 7:1-5. That
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`is, by constraining the cap around the entire circumference of the cap, a lower
`
`pressure can be used to hold the cap, as compared with the pressure needed to hold
`
`the cap at discrete points. Thus, Koch teaches that restraining the cap around the
`
`entire circumference of the cap avoids applying high pressure that can damage the
`
`cap. Id. at 3:9-17.
`
`Because the caps in Takaba, according to Dr. Wagoner, experience point-
`
`wise pressure at four contact points, a POSITA would have been motivated to
`
`modify Takaba to include holes for each cap in order to reduce the pressure on the
`
`caps. As Koch explains, the holes would allow the pressure needed to adequately
`
`hold the caps to be distributed around the circumference of the cap, and thereby
`
`reduce the pressure at any one point along the circumference of the cap. Id. at 7:2-
`
`5. Thus, even under Patent Owner’s interpretation of example 2 of Takaba, in
`
`which the end of the spring presses against the caps directly, a POSITA would
`
`have been motivated to modify Takaba to include holes, as taught by Lilley or
`
`Koch.
`
`20
`
`
`
`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
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`IV. A POSITA WOULD HAVE BEEN ABLE TO MODIFY THE
`CYLINDER OF TAKABA TO INCLUDE HOLES
`
`In its Response, Patent Owner argues that the holes of Lilley and Koch
`
`allegedly could not be physically incorporated into the cylinder of Takaba. See
`
`Resp. at 39-54. For example, Patent Owner argues that the holes of Lilley are not
`
`combinable with Takaba because diabolo pellets are allegedly not the same size as
`
`spot welding caps. See id. at 45-46. However, as the Board noted in the Institution
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`Decision, Petitioner is arguing that a POSITA “would have combined the
`
`teachings of
`
`[Lilley and Koch], not
`
`the embodiments disclosed by these
`
`references.” Paper 8, at 19 (emphasis added). “The test for obviousness is not
`
`whether the features of a secondary reference may be bodily incorporated into the
`
`structure of the primary reference . . . Rather, the test is what the combined
`
`teachings of the references would have suggested to those of ordinary skill in the
`
`art.” Id. (quoting In re Keller, 642 F.2d 413, 425-26 (CCPA 1981)). Therefore,
`
`Patent Owner’s arguments regarding the alleged inability to bodily incorporate the
`
`holes of either Lilley or Koch into the magazine of Takaba are inapposite.
`
`Nevertheless, a POSITA would have been able to modify the Takaba
`
`magazine to include holes. For example, at his deposition, Dr. Wagoner testified
`
`that the spring 62 could be attached to the cylinder 61 in order to rotate the
`
`21
`
`
`
`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
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`cylinder. Ex. 1030 at 102:3-21. Dr. Wagoner testified that a POSITA would
`
`understand that “there are a variety of means” to attach the spring to the cylinder,
`
`noting that “[y]ou could weld it . . . You could screw it in there. You could glue it.
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`You could use a frictional contact.” Id. at 103:21-104: 6. Moreover, Dr. Wagoner
`
`provided no explanation as to why such attachment means would not function with
`
`a cylinder having holes. Tellingly, the ‘639 patent does not explain how the spring
`
`is attached to the cap carrier (see Ex. 1001 at 3:41-46), which indicates a POSITA
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`would have been readily able to attach the spring to a cylinder modified to include
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`holes. See Micron Tech., Inc. v. Innovative Memory Systems, Inc., IPR2016-
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`00320, Paper 44 at 53 (Dec. 6, 2017) (Petitioner need not show all specific details
`
`of proposed combination, especially when challenged patent is silent with respect
`
`to such details). As Dr. Derby also testified, the spring of Takaba would function
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`in the same way if attached to a cylinder with holes as it functions with the
`
`cylinder of Takaba. See e.g., Ex. 1002 at ¶¶ 89, 99. Therefore, a POSITA would
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`have been able to modify the cylinder of Takaba to include holes, and use the
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`existing spring of Takaba to rotate the cylinder by using known methods to attach
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`the spring to the cylinder. See Wyers, 616 F.3d at 1245 (invalidating patent that
`
`was “no more than ‘the predictable use of prior art elements according to their
`
`22
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`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
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`established functions.’”) (quoting KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
`
`1740 (2007)).
`
`In further arguing that a POSITA would not be able to modify the cylinder
`
`of Takaba to include holes, Patent Owner relies on yet another unsupported
`
`interpretation of Takaba. Patent Owner contends that the tip fastener 67 of Takaba
`
`serves as the stop that contacts the caps at the installing port 66. See Ex. 2002 at
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`¶ 144. Patent Owner argues that the tip fastener 67 extends throughout the entire
`
`height of the cylinder 61, such that a cylinder that is modified to have holes would
`
`not be able to rotate because the tip fastener 67 would contact the sidewalls of the
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`holes. Id.
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`However, Patent Owner cannot identify any disclosure in Takaba to support
`
`its position that the tip fastener 67 functions as a stop. In fact, the tip fastener is
`
`only mentioned twice in Takaba. Takaba states first that “[a]n L-shaped tip
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`fastener 67 is attached by a screw 68 in the clockwise direction of the installing
`
`port 66.” Ex. 1011 at ¶ [0030]. And secondly, Takaba explains that “[a]fter the tip
`
`18 and shank 19 are removed by the tip fastener 67, the subsequent tip 18 is
`
`stopped by the upper side installing part 23A and lower side installing part 23B,
`
`and provided for the next installation.”
`
`Id. Therefore, even though the only
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`23
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`
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`Case No. IPR2017-00341
`U.S. Patent No. 9,393,639
`Petitioner’s Reply
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`description in Takaba of the tip fastener 67 is that it removes the tip 18 and shank
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`19, Patent Owner baselessly theorizes that the tip fastener 67 functions as a stop.
`
`Patent Owner’s unsupported interpretation is even more brazen given that in
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`the very same sentence explaining that the tip fastener 67 is used to remove the tip
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`18 and shank 19, Takaba explains that it is the upper and lower side installing parts
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`23A and 23B that stop the subsequent tip 18. When asked to support his
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`interpretation regarding tip fastener 67, Dr. Wagoner acknowledged that there is no
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`disclosure in Takaba stating that tip fastener 67 functions as a stop. See Ex. 1030
`
`at 104:14-106:4. Dr. Wagoner speculates that
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`the lack of support for his
`
`interpretation is based on a translation of Takaba from Japanese to English,
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`however the translation provided by Petitioner was certified (see Ex. 1013), and
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`neither Patent Owner nor Dr. Wagoner bothered to obtain a second translation of
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`Takaba to verify their unsupported theory. See Ex. 1030 at 106:13-25. Therefore,
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`Patent Owner's unsupported arguments with respect to the tip fastener 67 should be
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`rejected.
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`But even if the tip fastener 67 of Takaba functions as the stop, a POSITA
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`would still be able to modify the cylinder of Takaba to include holes. Under Patent
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`Owner’s unsupported interpretation of Takaba,
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`the tip fastener 67 extends
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`downward (in the case of the upper cylinder 61) nearly the entire height of
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