UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`HP INC.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`
`
`Patent No. 8,678,550
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,678,550
`
`CHALLENGING CLAIMS 1-4
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION .......................................................................................... 1 
`
` I. 
`
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ....................... 1 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1 
`
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1 
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 2 
`
`Service Information under 37 C.F.R. § 42.8(b)(4) ............................... 3 
`
`III. 
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 ...................................... 3 
`
`IV.  GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104 ........................ 3 
`
`V. 
`
`THE ’550 PATENT AND ITS PROSECUTION .......................................... 4 
`
`A. 
`
`B. 
`
`Summary of the Prosecution History ................................................... 4 
`
`Brief Description of the Patent ............................................................. 5 
`
`VI.  THE PRIOR ART ........................................................................................... 9 
`
`A. 
`
`B. 
`
`Summary of the Prior Art ..................................................................... 9 
`
`Brief Description of the Prior Art ...................................................... 11 
`
`1. 
`
`Boyd ......................................................................................... 11 
`
`2.  Waller ....................................................................................... 13 
`
`3. 
`
`Ayata ........................................................................................ 14 
`
`VII.  STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................. 15 
`
`A. 
`
`B. 
`
`C. 
`
`Claims for Which Review Is Requested ............................................ 15 
`
`Statutory Grounds of Challenge ......................................................... 15 
`
`Proposed Claim Constructions ........................................................... 16 
`
`1. 
`
`“laminated ink distribution stack” ........................................... 16 
`
`i
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`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`“transitional ducts” ................................................................... 19 
`
`2. 
`
`VIII.  DETAILED GROUNDS FOR UNPATENTABILITY ............................... 20 
`
`A.  Grounds 1-2 ........................................................................................ 21 
`
`1. 
`
`2. 
`
`Ground 1: Claims 1-3 Are Obvious under 35 U.S.C.
`§ 103(a) in View of Boyd and Waller. ..................................... 21 
`
`Ground 2: Claim 4 Is Obvious under 35 U.S.C. § 103(a)
`in View of Boyd, Waller, and Ayata ....................................... 45 
`
`B. 
`
`Claim Chart for Grounds 1-2 ............................................................. 47 
`
`IX.  CONCLUSION ............................................................................................. 60 
`
`
`
`ii
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`

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`
`
`HP
`Exhibit #
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`
`EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 8,678,550 to Silverbrook
`Declaration of Stephen Pond, Ph.D.
`File History of U.S. Patent 8,678,550
`U.S. Patent No. 6,322,206 to Boyd et al.
`U.S. Patent No. 6,250,738 to Waller et al.
`U.S. Patent No. 4,463,359 to Ayata et al.
`Curriculum Vitae of Stephen Pond, Ph.D.
`Excerpt from American Heritage College Dictionary (4th ed. 2007)
`Excerpt from McGraw-Hill Dictionary of Scientific and Technical
`Terms (5th ed. 1994)
`Certified Translation of Final Judgment in Docket No. 21 O
`20498/15 before Regional Court of Munich I dated January 29,
`2016
`Memjet’s Responsive Claim Constructions served March 7, 2016 in
`Case No. 3:15-cv-01769-BEN-BLM (S.D. Cal.)
`U.S. Patent No. 5,917,527 to Boyd et al.
`
`iii
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`

`
`Attorney Docket No. 069700-5008
`
`I.
`
`INTRODUCTION
`
` As will be shown below, claims 1-4 of U.S. Patent No. 8,678,550 (“the ’550
`
`patent,” Ex. 1001) should be found unpatentable under pre-AIA 35 U.S.C. § 103.
`
`The prior art plainly confirms that the elements of all claims were well known in
`
`the art before the application that issued as the ’550 patent was filed and it would
`
`have been obvious to one of ordinary skill in the art, at the time of the alleged
`
`invention of the ’550 patent, to combine these elements in the claimed manner.
`
`Accordingly, pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100 et seq.,
`
`Petitioner HP Inc. (“Petitioner”) hereby requests Inter Partes Review (hereinafter
`
`“IPR”) for claims 1-4 of the ’550 patent.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), the following mandatory notices are
`
`provided as part of this Petition.
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`
`HP Inc. (formerly known as Hewlett-Packard Company) is the real party-in-
`
`interest for the Petitioner.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`As of the filing date of this Petition, the ’550 patent is involved in litigation
`
`in the Southern District of California, captioned Memjet Technology Limited v.
`
`Hewlett-Packard Company, Case No. 3:15-cv-01769-BEN-BLM. The ’550 patent
`
`
`
`1
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`

`
`Attorney Docket No. 069700-5008
`
`is the subject of another petition for IPR filed by Petitioner concurrently with this
`
`Petition. Moreover, Petitioner brings to the Board’s attention the following foreign
`
`proceedings relating to European Patent No. 1 292 451 (“the EP ’451 patent”):
`
`Request for Preliminary Injunction (No. 21 O 20498/15) filed on November 13,
`
`2015 in Munich, Germany; Nullity Suit filed on Dec. 16, 2015 in the German
`
`Federal Patent Court; Petition (2016 No. 1PAP) and Plenary Summons (2016 No.
`
`776P) filed on January 28, 2016 in the High Court in Ireland; Claims (HP-2016-
`
`000005 and HP-2016-000006) filed on January 28, 2016 in the High Court of
`
`Justice in the United Kingdom; and Main Action (No. 4a O 8/16) filed on February
`
`5, 2016 in Dusseldorf, Germany. The EP ’451 patents is directed to subject matter
`
`similar to that of the ’550 patent, and has a nearly-identical specification.
`
`Finally, although unrelated to the ’550 patent, Petitioner filed petitions
`
`requesting IPR for other patents in the district court suit, including U.S. Patent
`
`Nos. 9,056,475 (IPR2016-00356); 7,156,492 (IPR2016-00537); 6,575,549
`
`(IPR2016-00746); and 6,880,914 (IPR2016-00752).
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner provides the
`
`following designation of counsel:
`
`Lead Counsel: Dion M. Bregman (Reg. No. 45,645), Tel: 650.843.7519.
`
`Backup Counsel: Jacob A. Snodgrass (Reg. No. 66,032), Tel:
`
`
`
`2
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`

`
`Attorney Docket No. 069700-5008
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`202.739.5836; Andrew J. Gray IV (Reg. No. 41,796), Tel: 650.843.7575; Bradford
`
`A. Cangro (Reg. No. 58,478), Tel: 202.739.5088; Archis (Neil) V. Ozarkar (Reg.
`
`No. 71,265), Tel: 713.890.5401.
`
`Service Address: Morgan, Lewis & Bockius LLP, 1400 Page Mill Road,
`
`Palo Alto, CA 94304. Fax: 650.843.4001.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`D.
`
`Service Information under 37 C.F.R. § 42.8(b)(4)
`
`Service information is provided in Section II.C, above. Petitioner consents to
`
`electronic service at the following address: HP-PTAB@morganlewis.com.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 50-0310 (order no. 069700-5008).
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104
`
`Petitioner hereby certifies that the ’550 patent is available for IPR and that
`
`the Petitioner is not barred or estopped from requesting IPR challenging the claims
`
`of the ’550 patent because it has not been a party to any other post-grant or Inter
`
`Partes Review of the ’550 patent.
`
`
`
`3
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`

`
`Attorney Docket No. 069700-5008
`
`V. THE ’550 PATENT AND ITS PROSECUTION
`
`A.
`
`Summary of the Prosecution History
`
`The ’550 patent issued to Kia Silverbrook on Mar. 25, 2014, and from
`
`USPTO records appears to be currently assigned to Memjet Technology Limited
`
`(“Memjet”). The ’550 patent issued with four claims, one of which is independent.
`
`The application that led to the ’550 patent was filed on July 13, 2010, and
`
`purports to be a continuation of application No. 11/779,845, filed on July 18, 2007,
`
`now Pat. No. 7,758,181, which purports to be a continuation of application No.
`
`11/227,240, filed on Sept. 16, 2005, now Pat. No. 7,258,430, which purports to be
`
`a continuation of application No. 10/974,751 (“the ’751 application”), filed on Oct.
`
`28, 2004, now Pat. No. 6,966,625, which purports to be a continuation of
`
`application No. 10/296,438 (“the ’438 application”), filed in Australia as PCT
`
`application No. PCT/AU00/00597 (designating the United States) on May 24,
`
`2000, now Pat. No. 6,824,242.
`
`Due to a failure to comply with statutory requirements,1 the ’751 application
`
`is not entitled to claim priority to the ’438 application. Thus, the filing date of the
`
`’751 application is the date on which the application was filed, October 28, 2004.
`
`
`
`1 The particular failures are detailed in a concurrently-filed Petition for IPR filed
`
`by Petitioner, also with regards the ’550 patent.
`
`
`
`4
`
`

`
`Attorney Docket No. 069700-5008
`
`Accordingly, the ’550 patent is entitled to claim a priority date no earlier than
`
`October 28, 2004. See Encyclopedia Britannica, Inc. v. Alpine Elecs. of Am., Inc.,
`
`609 F.3d 1345, 1352 (Fed. Cir. 2010) (holding that a patent may not claim priority
`
`to a first-filed application when an intervening application may not claim priority
`
`to the first-filed application). Pre-AIA 35 U.S.C. applies. Despite the above, and
`
`as described below, all prior art relied upon herein predates even the earliest
`
`claimed (but invalid) priority date of May 24, 2000.
`
`B.
`
`Brief Description of the Patent
`
`The ’550 patent relates to a printhead assembly (for example, an assembly
`
`used in a pagewidth printer) that includes an ink distribution assembly for
`
`distributing ink from multiple sources to multiple printhead chips. Specifically, the
`
`’550 patent describes a drop on demand printhead assembly with replaceable
`
`printhead modules. Ex. 1001 at 1:20-24, 1:25-31. Multiple modules may be
`
`arrayed across a pagewidth printing zone, thus allowing for single-pass pagewide
`
`printing. Id. at 1:47-54. Each of the printhead modules receives multiple inks
`
`from multiple sources. Id. at 5:14-23, 6:1-6. Ink from these sources is supplied to
`
`channels of an ink distribution molding. Id. at 4:44-58. The ink is then fed to a
`
`laminated stack of ink distribution sheets. Id. at 5:14-23. The sheets include holes
`
`and slots that are positioned such that, when the layers are stacked and laminated,
`
`paths are formed to distribute ink from the sources to the printhead modules. Id. at
`
`
`
`5
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`

`
`Attorney Docket No. 069700-5008
`
`5:24-6:6.
`
`Figures 6, 7, 8, 9A, 9B, and 12 illustrate an embodiment of the purported
`
`invention of the ’550 patent. As shown in the figure below, ink is fed from ink
`
`sources through inlet ports 34 (light blue) of ducts cover 39 (blue):
`
`Ex. 1001 at Fig. 62; see also id. at 4:44-
`
`49
`
`
`
`With reference to Figure 7 below, ink entering at the inlet ports 34 (light
`
`blue) is then distributed to ink ducts 40 (light orange) of ink distribution molding
`
`35 (orange) by way of cross-flow ink channels 42 (dark blue):
`
`
`
`2 All colorized figures have been colorized by Petitioner.
`
`
`
`6
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`

`
`Attorney Docket No. 069700-5008
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`
`
`Id. at Fig. 7; see also id. at 4:49-54
`
`
`
`Id. at Fig. 8; see also id. at 5:20-23
`
`With reference to Figure 8 above, from the ink ducts 40 (light orange), ink
`
`travels through a transfer port 50 (brown) to transitional ducts 51 (pink). Id. at
`
`6:24-29. Ink travels from transitional ducts 51 (pink) to the laminated stack 36
`
`(green):
`
`In the laminated stack, sheets 52 (orange), 56 (green), 60 (brown), 62
`
`(purple), and 64 (light blue) are stacked on top of each other, with sheet 52
`
`(orange) disposed adjacent the ink distribution molding, and with print chips 27
`
`(red) disposed in cavities formed in layers 62 (purple) and 64 (light blue) such that
`
`the print chips 27 (red) abut the bottom of layer 60 (brown).
`
`
`
`
`
`7
`
`

`
`Attorney Docket No. 069700-5008
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`Slots 59
`
`Slots 57
`
`
`
`Id. at Figs. 9a and 9b (annotated); see also id. at Fig. 6.
`
`Ink holes 53 are formed in layers 52, 56, and 60. Id. at 5:24-27, 5:42-46,
`
`5:59-67. Slots 57 and 59 (annotated in the figure above) are formed in layers 56
`
`and 60. Id. at 5:40-41, 5:50-51. Recesses 55, channels 58, and channels 61 are
`
`formed on the underside of layers 52, 56, and 60. Id. at 5:33-39, 5:47-51, 5:62-67.
`
`Six inks travel through each of six holes 53. Two inks travel through the
`
`Id. at Fig. 12
`
`
`
`8
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`

`
`Attorney Docket No. 069700-5008
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`two center-most holes 53 to recesses 55 and four inks travel from other ink holes
`
`53 to channels 58 or 61 to slots 57 or 59. Id. From there, ink travels to print chip
`
`27 (red). Id. at 6:1-6. The ink flow through the above-mentioned holes, recesses,
`
`slots, and channels is shown by the red arrows below:
`
`Slots 59
`
`Slots 57
`
`
`
`Id. at Fig. 9b (annotated).
`
`VI. THE PRIOR ART
`
`A.
`
`Summary of the Prior Art
`
`U.S. Patent No. 6,322,206 to Boyd et al. (“Boyd”) qualifies as pre-AIA 35
`
`U.S.C. §§ 102(a) and 102(e) prior art to the ’550 patent, because it was filed on
`
`Dec. 17, 1998, and published on November 27, 2001. Boyd therefore was filed
`
`before the earliest-claimed (but invalid) priority date of the ’550 patent (i.e., May
`
`24, 2000) and published before the earliest valid priority date of the ’550 patent
`
`(i.e., October 28, 2004). Compare Ex. 1004 with Ex. 1001.
`
`U.S. Patent No. 6,250,738 to Waller et al. (“Waller”) qualifies as pre-AIA
`
`
`
`9
`
`

`
`Attorney Docket No. 069700-5008
`
`35 U.S.C. §§ 102(a) and 102(e) prior art to the ’550 patent, because it was filed on
`
`Dec. 17, 1998 and published on June 26, 2001. Waller therefore was filed before
`
`the earliest-claimed (but invalid) priority date of the ’550 patent (i.e., May 24,
`
`2000) and published before the earliest valid priority date of the ’550 patent (i.e.,
`
`October 28, 2004). Compare Ex. 1005 with Ex. 1001.
`
`U.S. Patent No. 4,463,359 to Ayata et al. (“Ayata”) qualifies as pre-AIA 35
`
`U.S.C. § 102(b) prior art to the ’550 patent, because it issued on July 31, 1984,
`
`which is more than one year prior to the earliest-claimed (but invalid) priority date
`
`of the ’550 patent (i.e., May 24, 2000). Compare Ex. 1006 with Ex. 1001.
`
`While the Office considered Boyd during prosecution, and Waller is cited on
`
`the face of the ’550 patent, the Board may nevertheless institute an IPR based on
`
`previously considered references where the same patentability arguments were not
`
`previously considered by the Office. See, e.g., 35 U.S.C. § 325(d) and the
`
`decisions instituting IPR for IPR2013-00066 at p. 8 and IPR2013-00217 at p. 16.
`
`In particular, the Examiner applied Boyd in an Office Action dated August 7,
`
`2013. Ex. 1003 at 58-63. In that Office Action, the Examiner found that Boyd
`
`discloses all elements of the claims of the ’550 patent except one—the “cover”
`
`element of claim 1. Id. at 62. However, the Office did not previously apply a
`
`combination of Boyd and Waller, which as described below, renders obvious the
`
`claimed combination including a “cover.” Finally, the Office did not previously
`
`
`
`10
`
`

`
`Attorney Docket No. 069700-5008
`
`consider Ayata or the arguments related to Ayata presented herein. Accordingly,
`
`Petitioner respectfully requests that the Board consider the prior art and arguments
`
`presented herein, and find claims 1-4 of the ’550 patent unpatentable under pre-
`
`AIA 35 U.S.C. § 103.
`
`B.
`
`Brief Description of the Prior Art
`
`1.
`
`Boyd
`
`Boyd is directed towards an inkjet printhead with multiple printhead dies.
`
`Ex. 1004 at Abstract. In one embodiment, ink is distributed from multiple
`
`reservoirs 202, 204, and 206 (shown in yellow, magenta, and cyan below) to a
`
`plurality of printheads 30 (shown in red below) via channels that are formed in
`
`substrate 32 (shown in purple, orange, and green). Id. at Abstract, Fig. 17.
`
`Ex. 1004 at Fig. 17
`
`Substrate 32 consists of a bottom layer 72 (shown in purple above), a top
`
`layer 70 (green), and intermediary layers 73 (collectively shown in orange). Id. at
`
`Figs. 12-17. The bottom layer 72 includes inlets 86a, 86b, and 86c (shown in light
`
`
`
`11
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`

`
`Attorney Docket No. 069700-5008
`
`purple above), and outlets 88a, 88b, and 88c3 for communicating with ink
`
`reservoirs 202, 204, and 206 (yellow, magenta, and cyan). Id. at 8:9-12, 8:43-47.
`
`The top layer 70 (shown in green above) includes outlet slots 84′, 84′′, and 84′′′.
`
`Id. at 8:21-31, Fig. 16. The outlet slots 84′, 84′′, and 84′′′ are grouped such that a
`
`single printhead die 30 is mounted on the top layer 70 to fluidly couple to a group
`
`of three outlet slots 84′, 84′′, and 84′′′. Id. at 8:28-31, Fig. 16. The intermediary
`
`layers 73a, 73b, and 73c (shown in orange above) include slots 100-135 and 137-
`
`166. These slots are arranged such that, when the layers 70, 73a-c, and 72 are
`
`stacked, ink inlet 86a feeds the slots 84′ and the outlet 88a; ink inlet 86b feeds the
`
`slots 84′′ and the outlet 88b; and ink inlet 86c feeds the slots 84′′′ and the outlet
`
`88c. Id. at 8:31-37. Thus, three ink channels are formed, each serving a respective
`
`one of the reservoirs 202, 204, and 206. Id. at 8:37-39.
`
`Boyd further discloses a printhead assembly with multiple subassemblies.
`
`Id. at 5:43-57, Fig. 3. For example, Figure 3 shows two subassemblies 13, each
`
`having ten printhead chips (shown in red below). Id. at Fig. 3.
`
`
`
`3 The structure of the inlets 86a-c and outlets 88a-c is the same, and these features
`
`are differentiated only by their respective functions, i.e., during certain operations,
`
`the inlets receive ink from the reservoirs 202, 204, and 206, and the outlets provide
`
`ink to the reservoirs 202, 204, and 206.
`
`
`
`12
`
`

`
`Attorney Docket No. 069700-5008
`
`Ex. 1004 at Fig. 3
`
`2. Waller
`
`Waller is a continuation-in-part of Boyd, and both Waller and Boyd are
`
`continuations-in-part of U.S. Pat. No. 6,123,410. Ex. 1004; Ex. 1005. Waller is
`
`directed towards an inkjet printhead with multiple printhead dies. Ex. 1005 at
`
`Abstract, Fig. 2.
`
`Ex. 1005 at Fig. 2
`
`In one embodiment, the printhead includes a substrate 32 (shown in green
`
`above) with multiple printhead dies 30 (red) mounted on one of its surfaces. Id. at
`
`5:7-10, Fig. 2. An ink manifold 33 (in orange above) is mounted on the other
`
`
`
`13
`
`

`
`Attorney Docket No. 069700-5008
`
`surface. Id. at 5:10-12, Fig. 2. The ink manifold (in orange above) may be a
`
`molded plastic, and includes channels 60a, 60b, and 60c (one of which is shown in
`
`cyan below, in Fig. 6A). Id. at 8:12-21, 7:29-8:2, Figs. 5, 6A-6C.
`
`Ex. 1005 at Fig. 5
`
`Ex. 1005 at Fig. 6A
`
`The manifold 33 receives ink at inlets 37a, 37b, and 37c (shown in yellow,
`
`magenta, and cyan), transfers the ink along the channels 60a, 60b, and 60c to fill
`
`openings 61a, 61b, and 61c, and then transfers the ink to outlets 39a, 39b, and 39c
`
`(also shown in yellow, magenta, and cyan). Id. at 7:29-8:2, Figs. 6A-6C.
`
`3.
`
`Ayata
`
`Ayata is directed towards an inkjet printer. Ex. 1006 at Abstract. In one
`
`embodiment, staggered inkjet head blocks (shown in red below) together with
`
`substrates (shown in green below) are provided on a metal substrate (shown in
`
`yellow below). Id. at 13:54-61, Fig. 17.
`
`
`
`14
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`

`
`Attorney Docket No. 069700-5008
`
`Ex. 1006 at Fig. 17
`
`VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A. Claims for Which Review Is Requested
`
`Petitioner respectfully requests review under 35 U.S.C. § 311 and 37 C.F.R.
`
`§ 42.100 et seq. of claims 1-4 of the ’550 patent, and the cancellation of these
`
`claims as unpatentable.
`
`B.
`
`Statutory Grounds of Challenge
`
`Petitioner requests that claims 1-4 of the ’550 patent be cancelled as
`
`unpatentable under pre-AIA 35 U.S.C. § 103. In particular, Petitioner submits the
`
`following grounds of unpatentability:
`
`Ground
`1
`2
`
`Statute(s)
`35 U.S.C. § 103
`35 U.S.C. § 103
`
`Reference(s)
`Boyd and Waller
`Boyd, Waller, and Ayata
`
`Claim(s)
`1-3
`4
`
`
`
`15
`
`

`
`The claim constructions, reasons for unpatentability, and specific evidence
`
`Attorney Docket No. 069700-5008
`
`supporting this request are detailed below.
`
`C.
`
`Proposed Claim Constructions
`
`Pursuant to 37 C.F.R. § 42.100(b), and solely for purposes of this IPR,
`
`Petitioner construes the claim language such that the claim terms are given their
`
`broadest reasonable interpretation. Because the broadest reasonable interpretation
`
`standard differs from the standard applied by courts, see In re Am. Acad. of Sci.
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`Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004), Petitioner reserves the right
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`to argue alternative constructions in any other proceedings.
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`1.
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`“laminated ink distribution stack”
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`The claim term “laminated ink distribution stack” appears in claim 1, which
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`states: “a laminated ink distribution stack connected to the ink distribution
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`molding, the laminated ink distribution stack comprising a plurality of layers” and
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`“each print chip being in fluid communication with a respective set of outlets
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`defined in the laminated ink distribution stack.” Ex. 1001 at 8:66-9:1, 9:9-11.
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`One of ordinary skill in the art, defining the broadest reasonable
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`interpretation of the claim term in the context of the ’550 patent, would understand
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`“a laminated ink distribution stack” to mean “an ink distribution structure
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`manufactured by layering thin, flat sheets one on top of the other and gluing
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`or otherwise bonding them together.” Ex. 1002, ¶ 34.
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`Attorney Docket No. 069700-5008
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`This construction is supported by both the intrinsic and extrinsic evidence.
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`The specification of the ’550 patent describes the laminated ink distribution stack
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`36 as “a number of laminated layers” 52, 56, 60, 62, and 64. Ex. 1001 at 4:62-65,
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`6:46-49, 6:13-14, and Figs. 9A, 9B, 12-19.
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`
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`Ex. 1001 at Fig. 9B.
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`The specification also states that “[t]he individual layers of the laminated
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`stack . . . can be glued or otherwise bonded together to provide a sealed unit.” Ex.
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`1001 at 6:39-41. Thus, as shown in Figs. 9A, 9B, 12-19, the “laminated ink
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`distribution stack” is “an ink distribution structure manufactured by layering thin,
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`flat sheets one on top of the other and gluing or otherwise bonding them together.”
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`This construction is also consistent with dictionary definitions of
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`“laminated.” In particular, one definition of “laminate” is “a sheet of material
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`made of several different bonded layers.” Ex. 1002 at ¶ 37. Further, definitions of
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`“laminated” are “composed of layers bonded together” and “arranged in laminae,”
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`Attorney Docket No. 069700-5008
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`while a definition of “lamina” is “a thin plate, sheet, or layer.” Id.
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`Finally, this construction is in accord with the Final Judgment of the
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`Regional Court of Munich I, which considered the meaning of a nearly identical
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`claim term in the German proceeding noted in section II.B supra. In particular, in
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`denying Memjet’s application for a preliminary injunction, the Munich court
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`considered the meaning of the German term corresponding to a “laminated ink
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`distribution structure.” Specifically, the court found that the person skilled in the
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`art would understand that:
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`the laminated ink distribution structure consists of multiple layers
`positioned on top of each other [0016], and that the individual
`layers of the laminated stack are connected, preferentially glued,
`with each other [0023] so as to form a sealed unit [0057] [and] . . .
`the laminated layers are flat plates.
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`Ex. 1010 at p. 14, ll. 12-18 (internal citations to EP ’451 patent).
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`In the district court case, Memjet has proposed an overly-broad construction
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`that should not be adopted here. In particular, Memjet proposes that “laminated
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`ink distribution stack” should be construed as “a stack of firmly united layers for
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`distributing ink”. Ex. 1011 at 32. This is far too broad of an interpretation, even
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`under the broadest reasonable interpretation standard. Memjet’s proposal would
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`encompass thick and non-uniform structures that are joined to one another by any
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`means, such as screws or clips,4 and one skilled in the art would not understand the
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`Attorney Docket No. 069700-5008
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`same to be a “laminated” “stack.” Ex. 1002 at 39.
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`2.
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`“transitional ducts”
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`The claim terms “transitional ducts” and “transitional ink duct” appear in
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`claim 1, which states: “an ink distribution molding comprising . . . one or more
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`transitional ducts extending from each of the longitudinally extending ink ducts”
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`and “a laminated ink distribution stack . . . comprising a plurality of layers,
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`wherein an uppermost layer has a plurality of inlets for receiving ink from the
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`transitional ink duct.” Ex. 1001 at 8:61-9:3.
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`One of ordinary skill in the art, defining the broadest reasonable
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`interpretation of the phrase “transitional ducts” in the context of the ’550 patent,
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`would understand it to mean “channels for carrying ink from one structure to
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`an adjoining structure.”
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`The specification discloses the path of ink from the distribution molding to
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`the laminated stack as follows: ink travels from ink ducts 40 (light orange) of
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`distribution molding 35 (orange) through a transfer port 50 (brown) to transitional
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`
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`4 Indeed, under Memjet’s proposal, the components of an automobile engine (i.e., a
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`cylinder head cover ,cylinder head, engine block, and oil pan) would be
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`“laminated.”
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`Attorney Docket No. 069700-5008
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`ducts 51 (pink). Id. at 6:24-29. Ink travels from transitional ducts 51 (pink) to the
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`laminated stack 32 (green):
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`
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`Id. at Fig. 8; see also id. at 5:20-23.
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`Moreover, the above proposed interpretation is consistent with the structure
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`of claim 1. In particular, the claim states that the transitional ducts extend from
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`each of the longitudinally extending ink ducts, which are part of the ink
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`distribution structure, to the upper-most layer of the laminated ink distribution
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`structure, which is separate from and connected to the ink distribution structure.
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`Ex. 1001 at 8:61-9:3.
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`Thus, transitional ducts 51 are “channels for carrying ink from one structure
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`[i.e., the distribution molding] to an adjoining structure [i.e., the laminated stack].”
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`This construction is also consistent with dictionary definitions of
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`“transitional.” In particular, one definition of “transition” is “passage from one
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`form, state, style, or place to another.” Ex. 1002 at ¶ 44.
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`VIII. DETAILED GROUNDS FOR UNPATENTABILITY
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`Below is an explanation of each proposed ground of unpatentability in
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`Attorney Docket No. 069700-5008
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`accordance with 37 C.F.R. § 42.104(b). Grounds 1-2 are discussed below and
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`followed by a claim chart. Petitioner requests that the following claims of the ’550
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`patent be cancelled as unpatentable under 35 U.S.C. § 103:
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`A. Grounds 1-2
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`1.
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`Ground 1: Claims 1-3 Are Obvious under 35 U.S.C. § 103(a)
`in View of Boyd and Waller.
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`The following claims are obvious over Boyd and in view of Waller.
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`i.
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`Claim 1
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`As shown below, all elements of claim 1 are disclosed by the combination of
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`Boyd and Waller. To the extent that Boyd does not disclose the claimed “ink
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`distribution molding,” “transitional ducts,” and “cover,” these features are all
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`unambiguously disclosed by Waller. One of skill in the art would have been
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`prompted to combine Boyd and Waller to arrive at the claimed invention.
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`It would have been obvious to one of skill in the art to combine the teachings
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`of Boyd and Waller. Boyd and Waller are directed to very similar technology, and,
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`in fact, Waller is a continuation-in-part of Boyd and includes some of the same
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`disclosure. Ex. 1004 (U.S. Patent Application No. 09/216,606); Ex. 1005
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`(continuation-in-part of U.S. Patent Application No. 09/216,606); compare Ex.
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`1004 at Fig. 1 with Ex. 1005 at Fig. 1 (same figures). Both are directed at
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`distributing ink from ink sources to inlets in a substrate, which carry ink to a
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`plurality of printhead chips. Specifically, Boyd, in its three color embodiment,
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`Attorney Docket No. 069700-5008
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`employs reservoirs 202, 204, and 206 to feed ink to substrate 32. Ex. 1004 at Fig.
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`17. Substrate 32 of Boyd carries ink to printhead dies 30. Id. Waller, in a three
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`color embodiment, employs manifold 33 to feed ink to substrate 32. Ex. 1005 at
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`Fig. 5. Substrate 32 of Waller carries ink to printhead dies 30. Id. at Fig. 7.
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`Specifically, it would have been obvious to one of ordinary skill in the art to
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`incorporate the ink inlets 37 of Waller into the teachings of Boyd because inlets
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`would necessarily be required by Boyd. Ex. 1002 at ¶ 62. Further, it would have
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`been obvious to use a manifold, similar to manifold 33 of Waller, to distribute ink
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`to the various ink inlets 86a-c of Boyd. Ex. 1002 at ¶ 64. One would have been
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`especially motivated to do so in the embodiment of Boyd, shown in Figure 3 of
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`Boyd, in which a printhead assembly 12 is composed of multiple subassemblies
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`13. This is because the design of Waller allows for ink to be fed to the particular
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`ink inlet locations without being fed to the seam between the subassemblies. Id.
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`Finally, the teachings of Waller could be combined to improve the performance of
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`Boyd in the case of an extended pagewidth. Specifically, the design of the
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`manifold 33 of Waller need not include channels as narrow as the slots in the
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`laminated stack of Boyd. Ex. 1002 at ¶ 65. Thus, by incorporating the design of
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`manifold 33 of Waller to the system of Boyd, ink could be carried effectively
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`across an extended pagewidth. Id.
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`Attorney Docket No. 069700-5008
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`(1) Printhead assembly for pagewidth printhead
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`The preamble of claim 1 of the ’550 patent recites a “printhead assembly for
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`a pagewidth printhead.” To the extent that the preamble is limiting, the preamble
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`of claim 1 is disclosed by both Boyd and Waller. Ex. 1002 at ¶¶ 68-71.
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`Boyd is directed to “[a]n inkjet pen include[ing] a multilayered platform and
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`a plurality of printhead dies each mounted on the multilayered platform.” Ex. 1004
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`at Abstract. Boyd discloses “a thermal inkjet printing system 10 includes an inkjet
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`printhead assembly 12, an ink supply assembly 14, a mounting assembly 16, a
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`media transport assembly 18, a housing 20 and an electronic controller 22.” Ex.
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`1004 at 4:22-25. This is shown in Figure 1 of Boyd:
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`Ex. 1004 at Fig. 1
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`The inkjet assembly of Boyd “includes one or more printheads having a
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`plurality of inkjet nozzles 17 which eject ink onto a media sheet M. The printhead
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`assembly 12 receives ink from the ink supply assembly 14. The ink supply
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`assembly 14 includes a reservoir 15 for storing the ink.” Ex. 1004 at 4:27-32.
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`Moreover, Boyd discloses that the printhead may span a page width: “The
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`Attorney Docket No. 069700-5008
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`printhead assembly 12 may span a nominal page width or a shorter or longer width,
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`and may be of the scanning type or non-scanning type.” Ex. 1004 at 5:35-37.
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`Waller similarly discloses a printhead assembly for a pagewidth printhead.
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`Waller includes disclosure nearly identical to that cited in Boyd above. See Ex.
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`1005 at 4:3-13 (“[A] thermal inkjet printing system 10 includes an inkjet printhead
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`assembly 12, an ink supply assembly 14, a mount