Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: December 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PPC BROADBAND,INC.,
`Petitioner,
`
`V.
`
`TIMES FIBER COMMUNICATIONS, INC.,
`Patent Owner.
`
`IPR2022-00946
`Patent 10,988,342 B2
`
`Before BART A. GERSTENBLITH, GEORGER. HOSKINS, and
`FRANCESL. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 USC. $ 314(a)
`
`
`571-272-7822
`
`Paper 7
`Entered: December 7, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PPC BROADBAND,INC.,
`Petitioner,
`
`V.
`
`TIMES FIBER COMMUNICATIONS, INC.,
`Patent Owner.
`
`IPR2022-00946
`Patent 10,988,342 B2
`
`Before BART A. GERSTENBLITH, GEORGER. HOSKINS, and
`FRANCESL. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 USC. $ 314(a)
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`
`I.
`
`INTRODUCTION
`
`PPC BroadbandInc. (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1-12 and 14—22 of U.S. Patent No. 10,988,342 B2
`
`(Ex. 1001, “the ?342 patent”). Paper 2 (“Pet.”). Times Fiber
`
`Communications, Inc. (“Patent Owner’) did notfile a Preliminary Response
`
`to the Petition.
`
`Under 35 U.S.C. § 314(a), an inter partes review may notbeinstituted
`
`unless the information presented in the Petition and any responsethereto
`
`shows“there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challengedin the petition.”
`
`Considering the arguments presented in the Petition, we conclude that
`
`the information presented in the Petition establishes that there is a reasonable
`
`likelihood that Petitioner would prevail in challenging at least one of
`
`claims 1-12 and 14—22 of the ’342 patent as unpatentable under the grounds
`
`presented in the Petition. Pursuant to § 314, we herebyinstitute an inter
`
`partes review.
`
`A,
`
`Real Parties-in-Interest and Related Matters
`
`Petitioner identifies itself and Belden Inc. as real parties-in-interest.
`
`See Pet. 89. In its Mandatory Notices, Patent Owneridentifies itself as a real
`
`party-in-interest. See Paper 5, 1.
`
`There are five related IPR proceedings, challenging patents related to
`
`the ’342 patent. See, e.g., Paper 5,1. They are IPR2022-00830 (U.S. Patent
`
`No. 10,913,632 B2, in whichinstitution was denied after Patent Owner
`
`canceled all challenged claims); IPR2022-00831 (U.S. Patent
`
`No. 10,589,957 B2, in whichinstitution was denied after Patent Owner
`
`canceled all challenged claims); IPR2022-00947 (U.S. Patent
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`No. 11,001,471 B2); IPR2022-01087 (U.S. Patent No. 10,941,016 B2); and
`
`IPR2022-01088 (U.S. Patent No. 10,906,771 B2).
`
`The parties indicate that the °342 patent has been asserted in 7imes
`
`Fiber Communications, Inc. v. PPC Broadband, Inc., No. 1:21-cv-01823-
`
`UNA(D. Del.) filed December 27, 2021 (“District Court Litigation’’). Pet.
`
`89; Paper 5,1. On July 1, 2022, the District Court Litigation was stayed
`
`“pending at least a decision by the PTAB oninstitution of the [five] IPR
`
`petitions.” Times Fiber, Docket Nos. 36, 37.
`
`B.
`
`The ’342 Patent
`
`The °342 patent is directed generally to a system for using a cable
`
`reel. See Ex. 1001, code (57). Figure 1, reproduced below, showscablereel
`
`apparatus 100 without a supporting bag or box.
`
`/d. at 7:22-23.
`
`Figure 1, above, shows support frames 102 and 104 of cable reel 100 that
`
`rotatably support flanges 106 and 108 with hub member 110 therebetween.
`
`Id. at 8:40-43. The ’342 patent teaches that the support flanges may be
`
`sized to fit within the outer frame portionsof its respective support frame.
`
`Id. at 9:4-6. Further, the ’342 patent teaches that hub member 110 supports
`
`and holds the cable coil.
`
`/d. at 9:23—24. Additionally, the hub member may
`
`3
`
`
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`IPR2022-00946
`Patent 10,988,342 B2
`include a first hub portion and a second hub portion that are axially aligned
`
`and configured to mate with one another. See id. at 9:24—27.
`
`The °342 patent also discloses that cable reel 100 may beinserted into and
`
`supported by the payout bag or box wherein support frames 102 and 104 are
`
`attached to the bag’s cover and base.
`
`/d. at 8:46—50.
`
`C.
`
`Challenged Claims
`
`Petitioner challenges claims 1-12 and 14-22. Claims 1, 12, and 19
`
`are independent. Claims | and 12 are illustrative and reproduced below:
`
`1. A system for using a cable reel apparatus, comprising:
`
`providing components of a separable cable reel for assembly of
`a cable reel apparatus, the components of the separable
`cable reel including,
`
`a first frame,
`
`a second frame, the second frame being separate from the first
`frame,
`
`a first flange configured to engagethe first frame, the first flange
`having an inner side and an outer side, the outer side of the
`first flange faces the first frame when the first flange is
`engaged therewith,
`
`a second flange configured to engage the second frame, the
`second flange having an inner side and an outer side, the
`outer side of the second flange faces the second frame when
`the secondflange is engaged therewith;
`
`providing a bag having a base and a cover, wherein the bag is
`sized to hold the cable reel apparatus when assembled, the
`first frame has a geometry configured for placement in the
`base of the bag, and the second frame has a geometry
`configured for placementat or near the cover of the bag; and
`
`providing a pre-wound, reel-less coil of cable that is separate
`from the separable cablereel,
`
`wherein the first and second flanges are configured to releasably
`couple with one another to support the pre-wound,reel-less
`coil of cable therebetween.
`
`4
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`
`Ex. 1001, 11:35-61.
`
`12. A system for using a cable reel apparatus, comprising:
`
`providing components of a separable cable reel for assembly of
`a cable reel apparatus, the components of the separable
`cable reel including,
`
`a first frame,
`
`a second frame, the second frame being separate from the first
`frame,
`
`a first flange having an inner side and an outer side, the first
`flange being configured for engaging the first frame such
`that the outer side of the first flange faces the first frame,
`and the first flange having a first hub portion on the inner
`side of the first flange, and
`
`a second flange having an innerside and an outerside, the second
`flange being configured for engaging the second frame such
`that the outer side of the second flange faces the second
`frame, and the second flange having a second hub portion
`on the inner side of the second flange; and
`
`providing a bag having a base and a cover, wherein the bag is
`sized to hold the cable reel apparatus when assembled, the
`first frame is configured to be disposed in the base of the
`bag, and the second frame is configured to be disposed at or
`near the cover of the bag; and
`
`providing a pre-wound, reel-less coil of cable that is separate
`from the separable cable reel, and
`
`wherein the first and second hub portions are sized to fit within
`the inner diameter of the coil of cable and are configured to
`releasably couple with one another to form a hub member
`for supporting the pre-wound,
`reel-less coil of cable
`between thefirst and second flanges.
`
`Td. at 12:26—56.
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`D.
`
`Alleged Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`1-12, 14-22 Brochure,! Blunt?
`
`
`Brochure, Blunt, Fontanat*
`
`I-12, 14-22
`
`1-12, 14-22
`
`I-12, 14-22
`
`103
`
`Brochure, Blunt,
`Johanson?
`
`Brochure, Blunt,
`Johanson, Fontana
`
`Pet. 2. Petitioner asserts the references qualify as prior art to the ’342 patent
`
`by virtue of their respective publication dates preceding the ’342 patent’s
`
`earliest claimed priority date of February 27, 2015. See Pet. 1,4, 9-17. This
`
`assertion is undisputed at this stage of the proceeding.
`
`In addition to the references listed above, Petitioner relies on the
`
`Declaration of Charles Eldering, Ph.D. Ex. 1002.
`
`II.
`
`ANALYSIS
`
`A.—Principles ofLaw
`
`In Graham vy. John Deere Co. ofKansas City, 383 U.S. 1 (1966), the
`
`Supreme Court set out a framework for assessing obviousness under § 103
`
`' Perfect Tote™ 500 Eco Brochure, PPC (“Brochure,” Ex. 1006). Petitioner
`asserts Brochure is a printed publication as of September 25, 2014, whenit
`was disseminated at the Cable Tec Expo 2014 in Denver, Colorado. See Pet.
`9-17 (citing Exs. 1007, 1009, 1010, 1016, 1018-1038).
`2 U.S. Patent Application Publication No. US 2012/0168554 A1, published
`July 5, 2012 (“Blunt,” Ex. 1004).
`3 U.S. Patent No. 7,938,357 B2, issued May 10, 2011 (“Johanson,”
`Ex. 1013).
`*U.S. Patent No. 6,145,780, issued Nov. 14, 2000 (“Fontana,” Ex. 1005).
`
`6
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`that requires consideration of four factors: (1) the “level of ordinary skill in
`
`the pertinentart,” (2) the “scope and content of the priorart,”(3) the
`
`“differences between the prior art and the claimsat issue,” and
`
`(4) “secondary considerations” of non-obviousnesssuch as “commercial
`
`success, long-felt but unsolved needs, failure of others, etc.” /d. at 17-18.
`
`“While the sequence of these questions might be reordered in any particular
`
`case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the Federal
`
`Circuit has “repeatedly emphasized that an obviousness inquiry requires
`
`examination ofall four Graham factors and that an obviousness
`
`determination can be made only after consideration of each factor.” Nike,
`
`Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016).
`
`Wenote that, with respect to the fourth Graham factor, the current
`
`record in this proceeding does not include any argumentor evidence directed
`
`to secondary considerations of nonobviousness. The analysis below
`
`addresses thefirst three Graham factors.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`In determining the level of skill in the art, we consider the type of
`
`problems encounteredin the art, the prior art solutions to those problems, the
`
`rapidity with which innovations are made, the sophistication of the
`
`technology, and the educational level of active workers in the field. Custom
`
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`
`1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed.
`
`Cir. 1983).
`
`Petitioner contends that a person of ordinary skill in the art (POSITA)
`
`at the time of the invention of the 342 patent “would haveat least a
`
`bachelor’s degree in physics or engineering and experience with the
`
`installation of cable.” Pet. 4 (citing Ex. 1002 415). For purposesofthis
`
`7
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`
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`IPR2022-00946
`Patent 10,988,342 B2
`Decision, we adoptPetitioner’s proposal as reasonable and consistent with
`
`the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001) (the prior art may reflect an appropriate level of skill in the art).
`
`C.
`
`Claim Construction
`
`Weinterpret the °342 patent claims “using the same claim
`
`construction standard that would be used to construe the claim inacivil
`
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es]
`
`construing the claim[s] in accordance with the ordinary and customary
`
`meaning of such claim as understood by one of ordinary skill in the art and
`
`the prosecution history pertaining to the patent.” /d.
`
`Petitioner proposes “the plain meaning of each claim term can be
`
`applied.” Pet. 5.
`
`For purposesof this Decision, we do not expressly construe any
`
`terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir.
`
`2019) (“The Board is required to construe ‘only those terms .
`
`.
`
`. that are in
`
`controversy, and only to the extent necessary to resolve the controversy.’”’)
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)).
`
`D.
`
`Overview of the Prior Art
`
`1. Summary ofBrochure (Ex. 1006)
`
`Brochure is a one-page documentdescribing the features and use of
`
`the Perfect Tote™ 500 Eco made by PPC. Ex. 1006. Brochure describes
`
`howto install a cable reel in the bag so that the reel fits in the frame hub.
`
`/d.
`
`Below is a figure from Brochure showing the bag with a cable reel inside.
`
`Id.
`
`
`
`IPR2022-00946
`
`Patent 10,988,342 B2
`
`The figure above showsthe frame on the inside of the open flap, indicated
`
`by an arrow.
`
`/d. Brochure also shows wherethe cable payoutis located.
`
`/d.
`
`Features:
`
`Convenient shoulder
`wweStrap for hands-free ase
`
`
`Toot pockets
`
`
`
`Pouch for
`connectors |
`
`
`
`
`anneFaber pouch
`
`PQ,
`Sy, Elastic faops te hold
`cable whenset i ase
`
`
`SAOpeningfor smooth
`cable payout
`
`The figure above provides two viewsof the bag when closed and indicates
`
`the location of the cable payout opening.
`
`/d.
`
`Brochure further provides instructions on how to usethe illustrated
`
`cable tote. In step 1: “Insert the cable reel into the bag so that the flange
`
`center hole fits over the frame hub andso that the cable pays straight across
`
`the bottom of the reel and out the opening of the bag.” /d.
`
`In step 2: “Close
`
`the side panel and ensurethat the frame hubis positioned in the cable reel
`
`flange opening.” /d.
`
`In step 3: “Zip the side panel so it 1s secured.” Jd.
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`2. Summary ofBlunt (Ex. 1004)
`
`Bluntis a referencetitled “System for Storing a Bulk Supply of Cable
`
`for Controlled Payout and Method of Using the System.” Ex. 1004,
`
`code (54). Blunt discloses “a system for storing a wrapped supply of cable
`
`for controlled payout.” /d. § 30. Blunt further discloses that the wrapped
`
`supply of cable is placed within a container andsits on a first axis.
`
`/d. Blunt
`
`states that the supply of wrapped cable turns on the first axis and is
`
`“controllably paid out through the peripheral wall opening.” /d. Figure 11,
`
`reproduced below, showsan exploded view of the container and the supply
`
`of wrapped cable.
`
`Figure 11 above showsshaft 114 mounted to the bottom of container 18".
`
`Id. J§| 92-93. The cable reel sits on shaft 114 and rotates to payout cable.
`
`See id. J§| 30,97. Flange 40" maybe “selectively separated” from core 36"
`
`in order to add pre-wound cable 28 to cable reel 34". /d. 49] 72-73.
`
`10
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`
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`IPR2022-00946
`Patent 10,988,342 B2
`3. Summary ofFontana (Ex. 1005)
`
`Fontanais a reference titled “Portable Device for Dispensing Cables.”
`
`Ex. 1005, code (54). Fontana discloses a reusable cable payout system that
`
`eliminates plastic waste, which is a disadvantage of using cable on plastic
`
`reels.
`
`/d. at 1:10-20, 1:57-64. Fontana also discloses a mechanism that
`
`allows for the user to “partially rewind [the cable] when it is too long.” /d.
`
`at 1:62-64.
`
`Figure 6, reproduced in part below, shows an embodimentofa re-
`
`loadable cable supply.
`
`Figure 6 showsthe process of adding a cable that is not on a reel to a reel
`
`that fits within the payout device.
`
`/d. at 4:38-53.
`
`11
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`
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`IPR2022-00946
`Patent 10,988,342 B2
`4. Summary ofJohanson (Ex. 1013)
`
`Johanson is a referencetitled “Dispenser for Elongate Material.”
`
`Ex. 1013, code (54). Johanson discloses a device “for holding and
`
`dispensing elongate material, such as cable or wire, from a spoolorreel.”
`
`Id. at 1:5-6.
`
`Figure 1, reproduced below, shows a device according to an
`
`exemplary embodiment.
`
`
`
`Figure 1 above is a perspective view “of a dispensing device including a
`
`surrounding container, shown in phantom [view].” /d. at 2:16—17.
`
`Johanson’s dispensing device includes end plates 14 and spool 16.
`
`/d. at
`
`2:55-59.
`
`E.
`
`Obviousness Based on Brochure and Blunt
`
`Petitioner asserts that claims 1-12 and 14—22 would have been
`
`obviousbased on the teachings of Brochure and Blunt. Pet. 17-81. As
`
`mentioned, Patent Ownerdid notfile a preliminary response.
`
`Having considered the arguments and evidence before us, we find that
`
`the record establishes a reasonable likelihood that Petitioner would prevail
`
`12
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`
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`IPR2022-00946
`Patent 10,988,342 B2
`on this asserted ground of obviousness based on Brochure and Blunt for
`
`claims 1-12 and 14—22.
`
`1.
`
`Claim |
`
`Independent claim 1 recites, inter alia, “a system for using a cable reel
`99 ¢¢
`
`apparatus” including “a first frame,”
`
`“a second frame, the second frame
`
`being separate from the first frame,” and “‘a bag having a base and a cover,
`
`wherein the bag is sized to hold the cable reel apparatus when assembled,
`
`the first frame has a geometry configured for placement in the base of the
`
`bag, and the second frame has a geometry configured for placementat or
`
`near the cover of the bag.” Ex. 1001, 11:35—41, 11:51—56.
`
`Petitioner contends that Brochure discloses a cable reel apparatus
`
`comprising a bag that contains two frames, a base, and a cover, and is
`
`dimensioned to hold a cable reel. Pet. 34. Petitioner’s annotated version of
`
`a figure shown in Brochure1s provided below.
`
`
`
`Id. at 38. Petitioner marked one of Brochure’s figures to indicate a bag,
`
`base, first frame, cover, and second frame. According to Petitioner,
`
`13
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`
`
`IPR2022-00946
`Patent 10,988,342 B2
`Brochure demonstrates that the featured bag contains two separate frames,
`
`the first frame being located at the base of the bag and the second frame
`
`being located at the bag’s cover. /d. at 37-38, 45-47 (citing Ex. 1002
`
`{| 63-64, 76-79; Ex. 1006). Petitioner contends that a POSITA would
`
`understand that the base of the bag appears rigid and therefore contains an
`
`identical yet separate frame from the second frame, as shownin the below
`
`annotated figure provided by Petitioner. See id.
`
`Pet. 21-22. Petitioner annotated a figure from Brochureto indicatea first
`
`frame, a second frame, and a rigid support at the base of the bag. Referring
`
`to the annotated figure, Petitioner also asserts that the frames in Brochure are
`
`configured for placementinside the bag’s base and cover, and also for
`
`engagementwith a cable reel. /d.
`
`Atthis juncture, the preliminary record supports Petitioner’s position.
`
`Brochure providesinstructions for installing the cable reel in the bag.
`
`Ex. 1006. Step 1 instructs to “[i]nsert the cable reel into the bag so that the
`
`flange center hole fits over the frame hub,” and Step 2 states “[c]lose the
`
`side panel [to] ensure that the frame hub is positioned in the cable reel flange
`
`14
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`
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`IPR2022-00946
`Patent 10,988,342 B2
`opening.” /d. Read together, we agree with Dr. Eldering’s testimony that a
`
`POSITA would have understood that Step 1 is performed while the side
`
`panel(1.e., cover) is open, and that the “frame hub” of Step 1 is not the
`
`“frame hub”of the “second frame,” but a part of a duplicate frame in the
`
`base of the bag towards whichthe cable reel is inserted. See Ex. 1002 4 44.
`
`Dr. Eldering further explains that “it was well known to a POSITAthat a
`
`cable payout container includes two duplicate frames positioned on opposite
`
`ends inside the container, each frame including a frame hub to rotatably
`
`support a cable reel in the container for cable payout.” /d. 945. Because of
`
`this, Dr. Eldering reasonsthat “a POSITA would have understood that the
`
`Tote bag along withits installation instructions as disclosed in Brochure
`
`would have a duplicate frame in the base of the bag to support a cable reel
`
`for cable payout.” /d. Based on the preliminary record, including Dr.
`
`Eldering’s testimony and the relied upon disclosure in Brochure, we
`
`determine Petitioner has sufficiently explained how Brochure teaches or
`
`suggests these specific claim limitations.
`
`Additionally, claim 1 recites a separable cable reel containing “a first
`
`flange configured to engagethefirst frame, the first flange having an inner
`
`side and an outer side” and “a second flange configured to engage the
`
`second frame, the second flange having an inner side and an outer side.”
`
`Ex. 1001, 11:42-48.
`
`Petitioner asserts that Blunt discloses these limitations as shown in an
`
`annotated figure of Blunt’s Figure 3 that Petitioner provided on page 39 of
`
`the Petition. The annotated figure is reproduced below.
`
`15
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`
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`IPR2022-00946
`
`Patent 10,988,342 B2
`
`Pet. 39. Petitioner’s annotated version of Blunt’s Figure 3 marks Blunt’s
`
`cable reel with first and second flanges, and the inner and outer side of each
`
`flange. Id. More specifically, Petitioner refers to these annotations as
`
`showing that Blunt discloses cable reel 34 containingfirst flange 42 and
`
`second flange 40 where both flanges are depicted as having an inner and
`
`outer side.
`
`/d.
`
`Claim 1 further requires “‘a pre-wound,reel-less coil of cable that is
`
`separate from the separable cable reel,” and that “the first and second flanges
`
`are configured to releasably couple with one another to support the pre-
`
`wound,reel-less coil of cable therebetween.” Ex. 1001, 11:57-61.
`
`For these limitations, Petitioner contends that Blunt discloses a cable
`
`reel that is separable between the first and second flanges in order to load
`
`pre-wound coil, as shown in Petitioner’s annotated version of Blunt’s
`
`Figure 11 reproduced below.
`
`16
`
`
`
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`Kaygerggenoess
`
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`
`IPR2022-00946
`Patent 10,988,342 B2
`
`wo Maat
`Popes
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`
`Pet. 43-44; see Ex. 1004, Fig. 11. Petitioner’s annotated version of Blunt’s
`
`Figure 11 marks Blunt’s cable reel with first and second flanges, and an
`
`annular shoulder. Petitioner arguesthat first flange 42" 1s separated from
`
`second flange 40" by core 36" that is used to support pre-wound cable reel
`
`28. Pet. 47-48. According to Petitioner, second flange 40" can be released
`
`from core 36" andfirst flange 42" in orderto fit a pre-coiled supply of cable
`
`over the core 36".
`
`/d.
`
`In addition, Petitioner contends that a POSITA would understand that
`
`Brochure in combination with Blunt teachesthe “first flange configured to
`
`engage the first frame” and the “second flange configured to engage the
`
`second frame.” Pet. 42-44 (citing Ex. 1002 §/] 65-75; Ex. 1004 49 96-97,
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`Figs. 3, 11; Ex. 1006; Ex. 1001, 10:50-53). Specifically, Petitioner argues
`
`that a POSITA would understand that when the separable cable reel
`
`disclosed in Bluntis inserted into the bag in Brochure,“the ‘first flange’ is
`
`‘configured to engage’ the ‘first frame’ in the base of the bag and the outer
`
`17
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`IPR2022-00946
`Patent 10,988,342 B2
`side of the ‘first flange’ would face the “first frame’ when the ‘first flange’ is
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`engaged with the ‘first frame.” /d. at 40.
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`Petitioner reasons that a POSITA would understand that the cable
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`reels of Brochure and Blunt are similarly configured when the cable reel in
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`Blunt is assembled. Pet. 40 (citing Ex. 1002 4 68). According to Petitioner,
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`a POSITA would know that when the Blunt cable reel is inserted into the
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`Brochure bag, the outer side of the flange first inserted into the bag(1.e., the
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`“first flange’) is configured to engage with thefirst frame at the base of the
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`bag in Brochure.
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`/d. Petitioner explains the sameis true for the outer side
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`of the second flange, whichis the flange facing out of the bag cover.
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`/d.
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`Atthis stage, we note that the preliminary evidence supports
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`Petitioner’s contentions that Blunt teachesreel 34", flange 42", core 36", and
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`separate flange 40". Ex. 1004 § 96, Fig. 11. Further, Dr. Eldering’s
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`unrebutted testimony supports Petitioner’s position that a POSITA would
`
`have been motivated to implement a two-componentreel structure, such as
`
`Blunt’s cable reel 34", within Brochure’s cable reel apparatus. See Ex. 1002
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`4.57. Dr. Eldering also testifies a POSITA would understand the
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`environmentally friendly advantages of replenishing the supply of cable in
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`the cable reel installed in the Tote bag.
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`/d. § 53 (citing Ex. 1004 4 107).
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`Uponreview of the preliminary record and based on the evidence and
`
`arguments discussed, we determine that Petitioner has provided sufficient
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`argument and evidence in relation to the proposed obviousnessof claim 1
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`over Brochure and Blunt to demonstrate a reasonable likelihood that
`
`Petitioner would prevail with respect to this challenge. See Pet. 33-51.
`
`2.
`
`Claim 12
`
`Independentclaim 12 recites limitations similar to claim 1 but further
`
`includes a hub portion on the innerside of both the first and second flanges
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`18
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`IPR2022-00946
`Patent 10,988,342 B2
`such that “the first and second hubportions are sized to fit within the
`
`diameter of the coil of cable and are configured to releasably couple with
`
`one another to form a hub memberfor supporting the pre-wound,reel-less
`
`coil of cable betweenthe first and second flanges.” Ex. 1001, 12:51—56.
`
`For claim 12, Petitioner relies primarily on the arguments madefor claim 1,
`
`but adds Blunt discloses both a first and second hub portion that are
`
`releasably coupled with one another to create a support for the pre-wound
`
`coil. See Pet. 52—54 (citing Ex. 1002 44 91-93, 65-75, Ex. 1004, Figs. 3,
`
`11, § 96), 55-57 (citing Ex. 1002 4 98-103; Ex. 1004 4] 72-73). For these
`
`arguments, Petitioner relies on its annotated version of Blunt’s Figure 3
`
`provided below.
`
` ee
`
`A
`
` BS
`
`
`
`Pet. 53; see Ex. 1004, Fig. 3. Petitioner’s annotated version of Blunt’s
`
`Figure 3 marks Blunt’s cable reel with first and second flanges, a first hub
`
`portion, a second hub portion, and the inner sides of each flange. Petitioner
`
`asserts Blunt’s “flange 42" constitutes the claimed ‘first flange,’ core 36"
`
`constitutes the claimed ‘a first hub portion,’ flange 40" constitutes the
`
`19
`
`
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`IPR2022-00946
`Patent 10,988,342 B2
`claimed ‘second flange,’ and stub component 52" constitutes the claimed ‘a
`
`second hub portion.’” Pet. 54 (citing Ex. 1002 4 93). Petitioner arguesthat
`
`both hub portions are connected to the inner side of their respective flanges.
`
`Id.
`
`On page 56 of the Petition, Petitioner relies on another annotated
`
`version of Blunt’s Figure 11 to show Blunt’s purported first and second hub
`
`portions are releasably coupled to one another.
`
`Pet. 56. There, the annotated figure includes color and text indicating a
`
`second hub portion (gray) at flange 40" (green) and a first hub portion at
`
`core 36" (yellow) extending from flange 42" (blue). Petitioner contendsthat
`
`stub component 52" (or second hub portion) can be removed from core 36"
`
`(or first hub portion) in order to slide pre-woundcoil 28 onto the cable reel
`
`apparatus. /d.
`
`Petitioner adds that as discussed in the analysis of claim 1, a POSITA
`
`would have understood that Blunt’s core 36" (‘first hub portion’) and stub
`
`20
`
`
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`IPR2022-00946
`Patent 10,988,342 B2
`component 52" (‘second hub portion’) would releasably couple with one
`
`anothervia a friction fit or cooperating threads to form a hub memberto
`
`support the pre-coiled supply of cable 28 (‘pre-wound,reel-less coil of
`
`cable’) directed through core 36" between flange 42" and flange 40".”
`
`Pet. 57 (citing Ex. 1002 {ff 103, 83-86; Ex. 1004 4 73).
`
`Based on the preliminary record and Petitioner’s arguments and
`
`evidence discussed and cited above (including those presented for claim 1),
`
`we determinethat Petitioner has demonstrated a reasonable likelihood thatit
`
`would prevail with respect to this challenge for this claim. See Pet. 51-57.
`
`3.
`
`Claim 19
`
`Independent claim 19 is directed to a “system for using a cable reel
`
`apparatus.” See Ex. 1001, 13:13-14:18. Claim 19 recites limitations similar
`
`to those recited in independent claims | and 12 but further requires, among
`
`other things, “a longitudinal axis of the separable cable reel is horizontal”
`
`and “the base of the bag includes a payout opening sized for dispensing
`
`cable of the pre-wound,reel-less coil of cable therebetween once the bag and
`
`the separable cable reel are positioned in the horizontal orientation.” Jd.
`
`Petitioner relies largely on the analysis discussed above for claims 1
`
`and 12, but further contendsthat the central longitudinal axis of Brochure’s
`
`cable reel is oriented horizontally when the cable reel is horizontal inside the
`
`bag. Pet. 63. Petitioner’s annotated version of one of Brochure’s figures is
`
`provided below.
`
`21
`
`
`
`500 ft plastic cable reel
`
`8s
`ASSxx
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`IPR2022-00946
`Patent 10,988,342 B2
`
`8
`
`Pet. 63; Ex. 1006. Petitioner marked one of the figures from Brochure to
`
`identify a cable reel having a longitudinal axis and a bag containing a cable
`
`reel with the longitudinal axis in a horizontal configuration. Pet. 63.
`
`Referring to this annotated figure, Petitioner asserts that Brochure discloses
`
`a payout openingat the base of the bag from which the cable can be
`
`dispensed when in a horizontal configuration. /d.
`
`Based on the preliminary record and Petitioner’s arguments and
`
`evidence discussed and cited above (including those presented for claim 1),
`
`we determinethat Petitioner has demonstrated a reasonable likelihood thatit
`
`would prevail with respect to this challenge for this claim. See Pet. 57-65.
`
`4.
`
`Dependent Claims 2-11, 14-18, and 20-22
`
`“When instituting inter partes review, the Board will authorize the
`
`review to proceed onall of the challenged claims and on all grounds of
`
`unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). We must
`
`“either (1) institute as to all claims challenged in the petition and onall
`
`groundsin the petition, or (2) institute on no claims and denyinstitution.”
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide
`
`22
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`(Nov. 2019) (“CTPG”)°, 5-6, 64. We “will not institute on fewerthan all
`
`claimsor all challenges in a petition.” /d. at 5, 64; see also PGS
`
`Geophysical AS v. Iancu, 891 F.3d 1354, 1359-60 (Fed. Cir. 2018) (stating a
`
`decision to institute is “a simple yes-or-no institution choice respecting a
`
`petition, embracing all challenges included in the petition”).
`
`Thus, because we have decidedto grant institution on Ground 1
`
`against claims 1, 12, and 19, we do not need to address Petitioner’s
`
`contentions for claims 2—11, 14-18, and 20-22.
`
`Nonetheless, we note that Petitioner has also provided sufficient
`
`argument and evidence to demonstrate a reasonable likelihood that it would
`
`prevail with respect to this challenge. See Pet. 65—68 (claims 2, 17, 20), 68—
`
`69 (claims 3, 18, 21), 70 (claim 4), 70—73 (claims 5—6), 74-77 (claims 7-10,
`
`22), 78 (claim 11), 78-80 (claims 14-15), 80-81 (claim 16).
`
`Obviousness Based on Brochure, Blunt, and Johanson; Based
`E.
`on Brochure, Blunt and Fontana; and Based on Brochure, Blunt,
`Johanson, and Fontana — Claims 1-12 and 14-22
`
`Petitioner also asserts claims 1-12 and 14-22 would have been
`
`obvious based on the teachingsof: (1) Brochure, Blunt, and Johanson
`
`(Pet. 81-83); (2) Brochure, Blunt, and Fontana(id. at 83-86); and
`
`(3) Brochure, Blunt, Johanson, and Fontana (id.). Pursuant to U.S. Patent
`
`and Trademark Office rules and policy, we musteitherinstitute asto all
`
`groundsin the Petition, or deny institution entirely. Thus, because we have
`
`decided to grant institution on Ground 1, we do not need to address
`
`Petitioner’s contentions for Grounds 2—4.
`
`> Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`23
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`IPR2022-00946
`Patent 10,988,342 B2
`
`I.
`
`CONCLUSION
`
`After considering the evidence and arguments presented in the
`
`Petition, we determine that Petitioner has demonstrated a reasonable
`
`likelihood of success in provingthat at least one claim of the ’342 patent is
`
`unpatentable. Accordingly, an inter partes review of claims 1—12 and 14—22
`
`on all of the grounds presentedin the Petition is hereby instituted. See also
`
`PGS Geophysical AS, 891 F.3d at 1360 (indicating that a decision whether to
`
`institute an inter partes review “requires a simple yes-or-no institution
`
`choice respecting a petition, embracingall challenges included in the
`
`petition’).
`
`Atthis stage of the proceeding, the Board has not madea final
`
`determination as to the patentability of any challenged claim or any
`
`underlying factual or legal issues.
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1—12 and 14—22 of the °342 patentis instituted with respect
`
`to all groundsset forth in the Petition; and
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4(b), inter partes review of the ’342 patent shall commence
`
`on the entry date of this Order, and notice is hereby given ofthe institution
`
`of a trial.
`
`24
`
`
`
`IPR2022-00946
`Patent 10,988,342 B2
`
`For PETITIONER:
`
`CoryC. Bell
`Biu Chandran
`Xirui Zhang
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`cory.bell@finnegan.com
`biyu.chandran@finnegan.com
`xirul.zhang@finnegan.com
`
`For PATENT OWNER:
`
`Dale Chang
`Jonathan M.Strang
`Richard G. Frenkel
`LATHAM & WATKINS LLP
`dale.chang@lw.com
`jonathan .strang@lw.com
`rick.frenkel@lw.com
`
`25
`
`
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