IPR2019-01067
`Patent 9,958,107 B1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`QUEST USA CORP.,
`Petitioner
`v.
`POPSOCKETS LLC,
`Patent Owner
`___________________
`Case No. IPR2019-01067
`U.S. Patent No. 9,958,107
`___________________
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`
`Patent 9,958,107 B1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`QUEST USA CORP.,
`Petitioner
`v.
`POPSOCKETS LLC,
`Patent Owner
`___________________
`Case No. IPR2019-01067
`U.S. Patent No. 9,958,107
`___________________
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`TABLE OF CONTENTS
`
`2.
`3.
`4.
`
`2.
`3.
`
`
`I.
`II.
`
`B.
`
`Legal Principles ............................................................................................... 1
`Argument ......................................................................................................... 1
`A.
`The ordinary and customary meaning of “lock” is “a mechanism in
`which a projection is secured in a recess.” ............................................ 1
`1.
`The specification provides two examples of locks, both of
`support Petitioner’s proposed construction................................. 2
`The claim language further supports Petitioner’s proposal. ....... 6
`Petitioner’s proposal is consistent with the prosecution history. 7
`Dictionaries are consistent with Petitioner’s proposed
`construction. ................................................................................ 7
`The ordinary and customary meaning of “secure” is “to make fast or
`hold.” ..................................................................................................... 8
`1.
`It is undisputed that the specification supports Petitioner’s
`proposed construction ................................................................. 9
`Petitioner’s proposal is consistent with the claims. .................... 9
`The prosecution history is consistent with Petitioner’s proposed
`construction. ................................................................................ 9
`The dictionaries of record support Petitioner’s proposal. ......... 10
`4.
`III. Conclusion ..................................................................................................... 10
`
`
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`
`i
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`IPR2019-01067
`Patent 9,958,107 B1
`As authorized by the Board’s Order in Paper No. 10, Quest USA Corp.
`
`(“Petitioner”) submits this preliminary reply to provide its proposed constructions
`
`of the terms “lock” and “secure” as recited in claims 1, 9, 15, and 16 of U.S. Patent
`
`No. 9,958,107 B1 (“the ‘107 patent”). (See also, Ex. 1021, Conf. Call Trans.)
`
`I.
`
`Legal Principles
`
`This Board is very familiar with claim construction principles, which are not
`
`repeated here. See 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc).
`
`II. Argument
`
`Petitioner has requested that the plain and ordinary meaning be applied to all
`
`terms for the purposes of IPR. (Paper 2, p. 23.) Claims 1–16 of the ‘107 patent are
`
`unpatentable for the reasons set forth in the petition under the plain and ordinary
`
`meaning of the terms.
`
`PO asserts that “lock” and “secure” now require construction, but proposes a
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`construction of “lock” and applies a construction of “secure” that do not reflect the
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`plain and ordinary meaning of those terms. Petitioner offers constructions that do.
`
`A. The ordinary and customary meaning of “lock” is “a mechanism
`in which a projection is secured in a recess.”
`
`Petitioner’s Proposed
`Construction
`
`PO’s Proposed Construction
`
`
`
`1
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`“a mechanism in which a projection
`is secured in a recess”
`
`“a mechanism when engaged
`causes the button and the platform
`to maintain a fixed distance from
`each other”
`
`
`
`The parties agree that a “lock,” as used in the ‘107 patent, is a mechanism.
`
`Petitioner submits a lock is further defined by the components of that mechanism.
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`Both the intrinsic and extrinsic evidence support such a structural definition.
`
`PO defines “lock” in terms of how it affects external components specific to
`
`the claimed “expandable socket.” Such a construction does not reflect the
`
`“ordinary and customary meaning” of lock, but is instead a highly specialized
`
`definition that is not supported by the record. Moreover, the specification and the
`
`claims both define a lock in terms of its structure, and then separately recite the
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`function of the lock. Claim 1 recites “a lock configured to releasably secure the
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`button to the platform,” and claim 16 recites “a lock for selectively coupling the
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`button to the platform.” These expressly claimed functions should not be restricted
`
`by an overly narrow definition of the term “lock.”
`
`1.
`
`The specification provides two examples of locks, both of
`support Petitioner’s proposed construction.
`The ‘107 patent describes multiple embodiments of “expandable sockets.”
`
`Figures 2 and 3 are both described as including locks.
`
`With respect to the Figure 2 embodiment (reproduced below), the
`
`specification states, “[t]he expandable socket 200 generally includes … a lock 214
`
`
`
`2
`
`
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`IPR2019-01067
`Patent 9,958,107 B1
`configured to releasably secure the expandable socket 200 in a collapsed
`
`configuration that is not shown ….” (Ex. 1001, 4:37–48.)1 The specification
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`further explains that “the first projection 210, the second projections 208, and the
`
`recess 216 define or form the lock 214 that locks the expandable socket 200 in the
`
`collapsed configuration.” (Id., 6:2–5, emphasis added.) Thus, in this embodiment,
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`the lock is expressly defined by a projection and a recess.
`
`‘107 Patent (Ex. 1001), Fig. 2
`
`
`
`While the specification states that the lock 214 will “secure” or “lock[]” the
`
`expandable socket 200 in a collapsed configuration in the Figure 2 embodiment
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`(id., 4:43–48 and 6:2–5), it does not require a lock to fix the distance between the
`
`button 204 and the platform 206. Instead, it states, “[b]y virtue of the shape and
`
`size of the first projection 210 and the second projections 208, the first projection
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`210 is securely retained in the recess 216.” (Id., 5:66–6:2.) PO cites to this same
`
`1 PO asserts that reference numeral 214 in Figure 2 is an error. (Paper No. 8 at 5,
`
`n.1.) No certificate of correction has been filed. (See Ex. 1002.)
`
`
`
`3
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`
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`IPR2019-01067
`Patent 9,958,107 B1
`passage, but offers no explanation why the Board should equate “securely
`
`retained” with a fixed distance between the button and the platform. Nor does PO
`
`explain why the Board should import such a narrow requirement into the claims.
`
`Neither action is proper. See In re American Acad. of Sci. Tech. Ctr., 367 F.3d
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`1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a
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`claim from the preferred embodiment described in the specification.”).
`
`With respect to the Figure 3 embodiment (reproduced below), the
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`specification states, “[t]he expandable socket 300 is similar to the expandable
`
`socket 200 in that it includes … a lock configured to releasably secure the
`
`expandable socket 300 in an expanded configuration (shown in FIG. 3B)….” (Ex.
`
`1001, 6:27–34.) The specification also notes, “the expandable socket 300 includes
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`a lock that may in turn lock, or securely retain, the expandable socket 300 in this
`
`expanded configuration.” (Id., 7:39–41.)
`
`
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`‘107 Patent (Ex. 1001), Fig. 3A
`
`
`
`‘107 Patent (Ex. 1001), Fig. 3B
`
`
`
`The specification explains, “[i]n this example, the lock is a friction-based
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`lock that is defined by the detent 313 and the inner surface 315….” (Id., 7:42–44,
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`emphasis added.) Reference numeral 315 does not appear in the figures, but the
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`
`
`4
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`
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`IPR2019-01067
`Patent 9,958,107 B1
`specification notes, “[t]he detent 313 is thus arranged to interface with an
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`innermost one of the concentric rings 322 (the concentric ring 322C in this
`
`example),” and that “the innermost concentric ring 322 (322C in this example)
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`may also include a groove that is sized to receive and interferingly engage the
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`detent 313 in order to further help maintain the concentric rings 322 in the proper
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`position.” (Id., 7:20–29.)2 Thus, in the Figure 3 embodiment, the “lock” is again
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`defined by a projection (the detent) and a recess (the groove), consistent with
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`Petitioner’s proposed construction.
`
`While the specification notes that in this embodiment the lock can “help to
`
`maintain the concentric rings 322 in the proper position between the button 304
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`and the base 306” (id., 7:44–46, emphasis added), it also makes clear that the lock
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`alone is not capable of fixing the distance between the button and the platform.
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`Instead, “the concentric rings 322 are also shaped so as to frictionally engage one
`
`or both adjacent concentric rings 322 when the expandable socket 300 is in the
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`expanded configuration, thereby helping to lock the expandable socket 300 in the
`
`
`2 The ‘107 patent refers elsewhere to an “inner surface 314.” (Ex. 1001, 6:67, 7:2.)
`
`Due to the absence of reference numeral 315 from the drawings, it is not clear
`
`whether the “inner surface 315” is meant to refer to inner surface 314 or to the
`
`grooved inner surface of the inner concentric ring 322C.
`
`
`
`5
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`
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`IPR2019-01067
`Patent 9,958,107 B1
`expanded configuration.” (Id., 7:50–54.) Because the Figure 3 embodiment
`
`requires the concentric rings 322 to keep the expandable socket 300 in the
`
`expanded configuration, PO’s proposal is inconsistent with the lock that is
`
`expressly described in this embodiment.
`
`The claim language further supports Petitioner’s proposal.
`2.
`Claims 1 and 16 both recite a “lock.” Although the specification describes
`
`locks that can be “configured to releasably secure the expandable socket … in [a
`
`collapsed/an expanded] configuration” (id., 4:43–45; 6:31–32), neither claim
`
`recites such a function, or otherwise suggests that the lock causes the button and
`
`the platform to maintain a fixed distance from each other. Instead, claim 1 recites
`
`“a lock configured to releasably secure the button to the platform.” Claim 1
`
`additionally recites structures of the lock, including projections and recesses, but
`
`does not identify any other function.
`
`Claim 16 recites “a lock for selectively coupling the button to the platform
`
`such that the skin occupies the collapsed configuration when the button and
`
`platform are coupled.” This language does not prohibit the skin from occupying
`
`other configurations when the button and platform are coupled. Claim 16 also
`
`states that the lock includes projections. Thus, both claims 1 and 16 are consistent
`
`with Petitioner’s proposed construction, but do not support PO.
`
`
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`6
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`
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`IPR2019-01067
`Patent 9,958,107 B1
`
`3.
`
`Petitioner’s proposal is consistent with the prosecution
`history.
`In the notice of allowance, the Examiner noted that the prior art of record
`
`“fail[s] to specifically disclose ‘a lock configured to releasably secure the button to
`
`the platform, the lock comprising a first projection carried by the button and
`
`arranged to engage a second projection carried by the platform when the lock
`
`releasably secures the button to the platform.’” (Ex. 1002 at 9.) The prosecution
`
`history otherwise does not address the term “lock.” It is thus consistent with
`
`Petitioner’s proposal, but provides little guidance.
`
`4.
`
`Dictionaries are consistent with Petitioner’s proposed
`construction.
`PO cites no extrinsic evidence for “lock.” The dictionaries now of record
`
`are consistent with Petitioner’s proposal. Webster’s Third New International
`
`Dictionary (“Webster’s”) defines the term as “a fastening (as for a door, box,
`
`trunk lid, drawer) in which a bolt is secured by any of various mechanisms and can
`
`be released by inserting and turning a key or by operating a special device (as a
`
`combination, time clock, automatic release button, magnetic solenoid).” (Ex.
`
`1022.) Merriam-Webster’s Collegiate Dictionary (“Merriam-Webster’s”) defines
`
`“lock” as “a fastening (as for a door) operated by a key or a combination.” (Ex.
`
`1023.)
`
`
`
`7
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`IPR2019-01067
`Patent 9,958,107 B1
`Neither definition suggests that the ordinary and customary meaning of
`
`“lock” must maintain a fixed distance between a button and a platform, as PO
`
`suggests. By contrast, both definitions recite structure such as a bolt (i.e., a
`
`projection) for fastening. Thus the dictionaries support Petitioner.
`
`* * *
`Because Petitioner’s proposed construction of “lock” is consistent with the
`
`claims, the specification, the prosecution history, and the extrinsic evidence of
`
`record, it should be adopted by the Board.
`
`B.
`
`The ordinary and customary meaning of “secure” is “to make fast
`or hold.”
`
`Petitioner’s Proposed
`Construction
`“to make fast or hold”
`
`The parties appear to agree that “secure” should be construed to mean “to
`
`PO’s Proposed
`Construction
`“to make fast or hold”
`
`PO’s Applied
`Construction
`“to hold fast”
`
`make fast or hold.” PO, however, does not apply this construction in its analysis.
`
`Instead, PO applies a construction of “to hold fast” when addressing the prior art of
`
`record. (See Paper 8 at 21, 24, 26, 31, 34, and 37.) The intrinsic and extrinsic
`
`record does not support this narrower definition, but instead shows that “secure”
`
`should be construed to mean “to make fast or hold.”
`
`
`
`8
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`1.
`
`It is undisputed that the specification supports Petitioner’s
`proposed construction
`PO notes, “[t]he ‘107 specification discloses that the lock 214 holds button
`
`to the platform by virtue of the shape and size of the first projection 210 and
`
`second projection 208 by virtue of these projections.” (Paper 8, p. 11, citing Ex.
`
`1001 at 5:59–6:5, emphasis added.) This passage of the specification states, “[b]y
`
`virtue of the shape and size of the first projection 210 and the second projections
`
`208, the first projection 210 is securely retained in the recess 216.” (Ex. 1001,
`
`5:66–6:2.) In other words, the first projection is held in the recess in this
`
`embodiment. Thus, the specification supports Petitioner’s proposed construction.
`
`Petitioner’s proposal is consistent with the claims.
`2.
`Claims 1, 9, and 15 recite “secure.” PO agrees that “[a]s used in the claims
`
`and in the ’107 Patent specification, a POSA would understand that the ordinary
`
`and custom meaning of ‘secure’ is ‘to make fast or hold.’” (Paper 8, p. 11.)
`
`3.
`
`The prosecution history is consistent with Petitioner’s
`proposed construction.
`As noted above, the Examiner of the ‘107 patent relied on the recitation of a
`
`“lock configured to releasably secure” in his reasons for allowance. (Ex. 1002 at
`
`9.) The prosecution history does not provide guidance on the meaning of “secure,”
`
`but it is consistent with Petitioner’s proposal.
`
`
`
`9
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`The dictionaries of record support Petitioner’s proposal.
`4.
`Webster’s defines “secure” as “4a: to seize and confine (a person) : hold fast
`
`: pinion (~ a prisoner with handcuffs) (two redcoats quickly secured him—Rex
`
`Ingamells) b : to make fast : tie down : seal (~ a door) (~ the hatches of a ship) (~ a
`
`letter with a wax seal).” (Ex. 1022.) Merriam-Webster’s similarly defines this
`
`term as “2a : to take (a person) into custody : hold fast: pinion b : to make fast (~ a
`
`door) (~ a bike to a tree).”3 (Ex. 1023.) Although both dictionaries offer an
`
`alternative definition of “hold fast,” PO agrees that Merriam-Webster’s supports
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`construing “secure” to mean “to make fast or hold.” (Paper 8 at 11.)
`
`* * *
`Because the parties agree that Petitioner’s proposed construction of “secure”
`
`is consistent with the claims, the specification, the prosecution history, and the
`
`extrinsic evidence of record, it should be adopted by the Board.
`
`III. Conclusion
`
`Based on the above, Petitioner respectfully requests that the Board adopt its
`
`proposed constructions for the claimed terms “lock” and “secure.”
`
`3 Notably, Merriam-Webster’s provides “a bike to a tree” as an example of “to
`
`make fast.” In such an example, the bike is not maintained at a fixed distance from
`
`the tree. Thus, the construction of “to make fast or hold” should not be seen as
`
`equivalent to PO’s proposed construction for “lock.”
`
`
`
`10
`
`
`
`
`
`Dated: September 20, 2019
`
`
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`
`/Steven M. Auvil/
`STEVEN M. AUVIL (Reg. No. 40,492)
`BRYAN J. JAKETIC (Reg. No. 56,280)
`Squire Patton Boggs (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, OH 44114
`Tel: 216-479-8500
`Fax: 216-479-8780
`Email: steven.auvil@squirepb.com
`bryan.jaketic@squirepb.com
`
`
`
`
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2019-01067
`Patent 9,958,107 B1
`
`The undersigned certifies, pursuant to 37 C.F.R. § 42.6(e), that on
`
`
`
`September 20, 2019, a copy of the foregoing “PETITIONER’S PRELIMINARY
`
`REPLY” was served via electronic mail upon counsel of record for the Patent
`
`Owner as follows:
`
`
`
`Michael R. Fleming
`Kamran Vakili
`Ian R. Washburn
`
`
`
`
`Dated: September 20, 2019
`
`mfleming@irell.com
`kvakili@irell.com
`iwashburn@irell.com
`PopsocketsIPR@irell.com
`
`
`
`
`/Steven M. Auvil/
`STEVEN M. AUVIL (Reg. No. 40,492)
`Squire Patton Boggs (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, OH 44114
`Tel: 216-479-8500
`Fax: 216-479-8780
`Email: steven.auvil@squirepb.com
`
`
`
`
`
`
`
`
`
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