Filed on behalf of Petitioners
`By: Todd R. Walters, Esq.
`Roger H. Lee, Esq.
`Jonathan R. Bowser, Esq.
`Kyle K. Tsui, Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone (703) 836-6620
`Facsimile (703) 836-2021
`todd.walters@bipc.com
`roger.lee@bipc.com
`jon.bowser@bipc.com
`kyle.tsui@bipc.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`Corning Optical Communications RF LLC,
`Corning Incorporated, and Corning Optical Communications LLC
`Petitioners
`
`v.
`
`PPC Broadband, Inc.
`Patent Owner
`__________________
`
`Case No.: To be assigned
`Patent 8,075,338
`__________________
`
`DECLARATION OF RONALD P. LOCATI
`FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,075,338 (CLAIMS 5, 6, AND 8)
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100
`
`CORNING EXHIBIT 1003
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II. QUALIFICATIONS ........................................................................................ 5
`
`III. COMPENSATION AND PRIOR TESTIMONY ........................................... 7
`
`IV. LEGAL STANDARDS ................................................................................... 8
`
`A. Anticipation ........................................................................................... 8
`
`B. Obviousness ........................................................................................... 8
`
`C. A Person of Ordinary Skill in the Art ................................................... 9
`
`V.
`
`TECHNICAL BACKGROUND ..................................................................... 9
`
`A.
`
`B.
`
`C.
`
`The ‘338 Patent ................................................................................... 12
`
`The Prior Art ....................................................................................... 15
`
`Summary of the Examination History of the ‘338 Patent ................... 18
`
`1.
`
`2.
`
`This Declaration Relies on Connector Structure
`Disclosed by Bence Not Relied Upon by the Examiner
`During ex parte Prosecution ..................................................... 20
`
`The Reasoning of This Declaration is Distinct from the
`Application of Bence During ex parte Prosecution .................. 21
`
`VI. CLAIM CONSTRUCTION .......................................................................... 22
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`PPC’s Infringement Allegations in the Related Litigation ................. 22
`
`Construction of “post” ......................................................................... 25
`
`Construction of “a plurality of engagement fingers” .......................... 26
`
`Construction of “biased into a position of interference” ..................... 28
`
`Construction of “physical and electrical continuity” .......................... 28
`
`i
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`Construction of “axially aligned slots” ............................................... 29
`
`Construction of “on” ........................................................................... 30
`
`F.
`
`G.
`
`VII. Claims 5, 6, and 8 Are Anticipated by Bence ............................................... 32
`
`A.
`
`B.
`
`Reference to Where the Elements of Claims 5, 6, and 8 Are
`Found in the Prior Art ......................................................................... 32
`
`Explanation of Why Claims 5, 6, and 8 Are Anticipated by
`Bence 57
`
`1.
`
`2.
`
`3.
`
`Bence discloses the “plurality of engagement fingers” ............ 57
`
`Bence discloses the “axially aligned slots”............................... 58
`
`Bence discloses axially aligned slots that are positioned
`“on” the post .............................................................................. 59
`
`VIII. Claims 5, 6, and 8 Would Have Been Obvious Over Bence ......................... 60
`
`A.
`
`B.
`
`Reference to Where the Elements of Claims 5, 6, and 8 Are
`Found in the Prior Art ......................................................................... 61
`
`Explanation of Why Claims 5, 6, and 8 Would Have Been
`Obvious................................................................................................ 88
`
`C. Any Purported Secondary Considerations Evidence Does Not
`Overcome the Strong Evidence of the Obviousness ......................... 107
`
`IX. Conclusion ................................................................................................... 108
`
`
`
`
`
`
`
`ii
`
`

`
`I, Ronald P. Locati, hereby state as follows:
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`
`I.
`
`INTRODUCTION
`I have been retained by Buchanan Ingersoll & Rooney PC to provide
`1.
`
`technical assistance related to the filing of a Petition for Inter Partes Review of
`
`U.S. Patent No. 8,075,338 (“Petition”). I am working as a private consultant on
`
`this matter and the opinions presented here are my own.
`
`2.
`
`I have been asked to prepare a written report including comments
`
`related to the Petition regarding whether Claims 5, 6, and 8 of U.S. Patent No.
`
`8,075,338 (“the ‘338 Patent”) (Ex. 1001) would have been anticipated by or
`
`obvious to the ordinarily skilled artisan over the prior art. I have reviewed the
`
`documents set forth in Table 1 below to come to this conclusion. This Declaration
`
`presents the basis and reasons for my opinion, including the materials and
`
`information I relied upon in forming those opinions and conclusions.
`
`EXHIBIT
`
`DESCRIPTION
`
`1001
`
`U.S. Patent No. 8,075,338, issued on December 13, 2011 to Noah
`
`Montena (“the ‘338 Patent”)
`
`1002
`
`U.S. Patent No. 7,114,990, issued on October 3, 2006 to Bruce D.
`
`Bence et al. (“Bence”)
`
`1004
`
`Curriculum Vitae of Ronald P. Locati
`
`1
`
`

`
`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1006
`
`Complaint filed in PPC Broadband, Inc. v. Corning Optical
`
`Communications RF, LLC., 5:16-00162 (N.D.N.Y.) dated February
`
`11, 2016
`
`1007
`
`Certified English Translation of Japanese Publication No. JP2000-
`
`1008
`
`1009
`
`40564 (“JP ‘564”)
`
`Japanese Publication No. JP2000-40564
`
`U.S. Patent No. 7,892,024, issued on February 22, 2011 to Han-
`
`Jung Chen (“the ‘024 Patent”)
`
`1010
`
`U.S. Patent No. 7,674,132, issued on March 9, 2010 to Yi-Hsiang
`
`Chen (“the ‘132 Patent”)
`
`1011
`
`U.S. Patent Application No. 12/906,503, filed on October 18, 2010
`
`to Noah Montena (“the ‘503 Application”)
`
`1012
`
`Office Action in U.S. Patent Application No. 12/906,503, dated
`
`May 31, 2011
`
`1013
`
`U.S. Patent No. 4,979,911, issued on December 25, 1990 to Mark
`
`Spencer (“Spencer”)
`
`1014
`
`Office Action Response filed in U.S. Patent Application No.
`
`12/906,503 on August 31, 2011
`
`2
`
`

`
`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1015
`
`Notice of Allowance in Application No. 12/906,503, dated October
`
`18, 2011
`
`1016
`
`1017
`
`1018
`
`The American Heritage College Dictionary 910 (3rd ed. 1997)
`
`The American Heritage College Dictionary 1102 (3rd ed. 1997)
`
`[REDACTED] Drawing of a connector (NS-12045) accused of
`
`infringement in the Complaint by Patent Owner in the related
`
`litigation, PPC Broadband, Inc. v. Corning Optical
`
`Communications RF, LLC., 5:16-00162 (N.D.N.Y.)
`
`1019
`
`U.S. Patent Application Publication No. 2006/0110977, published
`
`on May 25, 2006 to Roger Matthews (“Matthews”)
`
`1020
`
`Machinery’s Handbook: A Reference Book for the Mechanical
`
`Engineer, Draftsman, Toolmaker and Machinist, Erik Oberg and
`
`Franklin D. Jones, pp. 494, 497 (19th ed. 1973)
`
`1021
`
`Cantilever Beams Part 1 – Beam Stiffness, TECHNICAL TIDBITS,
`
`Issue No. 20 (Brush Wellman Inc. 2010)
`
`1022
`
`Cantilever Beams Part 2 – Analysis, TECHNICAL TIDBITS, Issue No.
`
`21 (Brush Wellman Inc. 2010)
`
`3
`
`

`
`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1023
`
`U.S. Patent No. 3,288,914, issued on November 29, 1966 to G. A.
`
`Fuller et al. (“Fuller”)
`
`1024
`
`Paul A. Tipler. Physics: For Scientists and Engineers. 3rd ed.,
`
`1025
`
`1026
`
`1991, Vol. 1. Worth Publishers: New York, NY, pp. 90-91.
`
`The Random House College Dictionary 1123 (Revised ed. 1980)
`
`Definition of “Resilient” downloaded from
`
`http://www.dictionary.com/browse/resilient on July 28, 2016
`
`1027
`
`U.S. Patent No. 7,086,876, issued on August 8, 2006 to Noah P.
`
`Montena (“the ‘876 Patent”)
`
`1028
`
`U.S. Patent No. 7,097,499, issued on August 29, 2006 to Eric Purdy
`
`(“the ‘499 Patent” or “Purdy”)
`
`1029
`
`U.S. Patent No. 4,156,554, issued on May 29, 1979 to Sharanjit S.
`
`Aujla (“Aujla”)
`
`1030
`
`1031
`
`The American Heritage College Dictionary 953 (3rd ed. 1997)
`
`U.S. Patent No. 6,406,330, issued on June 18, 2002 to Burton B.
`
`Bruce (“Bruce”)
`
`1032
`
`U.S. Patent No. 4,426,127, issued on January 17, 1984 to James
`
`Kubota (“Kubota”)
`
`4
`
`

`
`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1033
`
`Patent Owner’s Patent Marking Website, available at
`
`http://www.ppc-online.com/Patents/index.cfm
`
`1034
`
`U.S. Patent No. 8,323,053, issued on December 4, 2012 to Noah
`
`Montena (“the ‘053 Patent”)
`
`3.
`
`This report is based on information currently available to me. I
`
`reserve the right to continue my investigation and analysis, which may include a
`
`review of documents and information not listed above. I also reserve the right to
`
`expand or otherwise modify my opinions and conclusions as my investigation and
`
`study continues, and to supplement my opinions and conclusions in response to
`
`any additional information that becomes available to me.
`
`4.
`
`In my opinion, claims 5, 6, and 8 of U.S. Patent No. 8,075,338 (Ex.
`
`1001) are anticipated by Bence (Ex. 1002). In my opinion, claims 5, 6, and 8 of
`
`U.S. Patent No. 8,075,338 are obvious over Bence (Ex. 1002).
`
`II. QUALIFICATIONS
`I am the President and Principal Consultant of APEX Electrical
`5.
`
`Interconnection Consultants, LLC, a firm which has provided engineering and
`
`technology solutions for the design, manufacture, and application of
`
`interconnection products, since 2002. My consultation services relate to the
`
`5
`
`

`
`
`diagnosis of failed connectors, the design of new connectors, competitive product
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`assessments, and analytical testing and interpretation of testing results.
`
`6.
`
`From 1997 to 2002, I held the position of Vice President,
`
`Product/Process Engineering Director, Product Development, at Stewart Connector
`
`Systems. While at Stewart Connector, I directed the engineering department
`
`responsible for the design of the company’s modular jack and plug
`
`telecommunication connectors. My responsibilities also included assuring product
`
`reliability through design robustness.
`
`7.
`
`From 1994 to 1997, I held the position of Engineering Director at
`
`LRC Electronics. I was responsible for the design, development, and technical
`
`performance of coaxial cable connectors. I was also the primary technical
`
`interface with major customers constructing and maintaining CATV systems, and
`
`also invented and developed various coaxial interconnection products that helped
`
`improve the reliability and performance of coaxial cable connectors.
`
`8.
`
`I worked at AMP Incorporated from 1979 to 1994 in various roles
`
`including Advanced Development Team Leader in Corporate Research and
`
`Development, Project Team Leader for Product Design and Operations, Product
`
`Design Development Engineer, and Technical Product Support Engineer. My
`
`6
`
`

`
`
`responsibilities included the design and development of electromechanical
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`connector products including coaxial cable connectors.
`
`9.
`
`I am one of the named inventors of over thirty patents, including
`
`several patents relating to coaxial cable connector technology including U.S.
`
`Patent No. 6,089,912 entitled “Post-Less Coaxial Cable Connector;” U.S. Patent
`
`No. 5,800,211 entitled “Snap Together CATV Connector for Indoor Use;” U.S.
`
`Patent No. 5,769,662 entitled “Snap Together Coaxial Connector for Use with
`
`Polyethylene Jacketed Cable;” and U.S. Patent No. 5,651,698 entitled “Coaxial
`
`Cable Connector.”
`
`III. COMPENSATION AND PRIOR TESTIMONY
`I am billing at an hourly rate of three hundred seventy-five dollars
`10.
`
`($375) for my time spent studying materials, working on reports, and participating
`
`in depositions. These rates are my standard rates, regardless of whether my
`
`opinions positively or negatively affect Buchanan Ingersoll & Rooney PC in this
`
`matter. It is my understanding that my compensation is not contingent upon the
`
`outcome of this matter. I expect to be reimbursed for reasonable expenses
`
`associated with travel, including lodging, ground transportation, and other
`
`expenses incurred in connection with this engagement.
`
`11. An updated list of matters in which I have previously testified as an
`
`expert is provided in Appendix 1.
`
`7
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`
`IV. LEGAL STANDARDS
`I am not an attorney and do not expect to offer any opinions regarding
`12.
`
`the law. However, I have been informed of certain legal principles relating to
`
`standards of patentability that I relied on in reaching the opinions set forth in this
`
`report.
`
`A. Anticipation
`I understand that for a claim to be anticipated, each and every claim
`13.
`
`element set forth in the claim must be found, either expressly or inherently in a
`
`prior art reference. I understand that extrinsic evidence may be used to explain but
`
`not expand the meaning of terms and phrases used in the reference relied upon as
`
`anticipatory of the claimed subject matter.
`
`B. Obviousness
`I understand that even if a claim is not anticipated, an invention that
`14.
`
`would have been obvious to a person of ordinary skill at the time of the invention
`
`is not patentable. I understand that obviousness is determined by evaluating
`
`several factors, including: determining the scope and content of the prior art,
`
`ascertaining the differences between the claimed invention and the prior art, and
`
`resolving the level of ordinary skill in the relevant art as well as considering any
`
`objective evidence of “secondary considerations” relevant to obviousness.
`
`8
`
`

`
`
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`C. A Person of Ordinary Skill in the Art
`In my opinion, one of ordinary skill in this art would be able to read
`15.
`
`and understand the ‘338 Patent, and then using his or her ordinary skill and
`
`knowledge should be able to create (or be able to specify completely) the coaxial
`
`cable connector. One of ordinary skill in this art could also possess a bachelor’s
`
`degree in engineering and several years of experience in the cable and
`
`telecommunications industry relating to the design, manufacture, and installation
`
`of coaxial cable connectors. Ten or more years of experience in the art could be a
`
`substitute for a bachelor’s degree in engineering.
`
`V. TECHNICAL BACKGROUND
`16. A coaxial cable is designed to transmit radio-frequency (RF)
`
`transmissions, and is typically used to connect televisions, set-top boxes,
`
`computers, modems, and the like to signal sources such as satellite dishes, cable
`
`television distribution lines, antennae, and the like. As shown below, coaxial
`
`cables are constructed in layers.
`
`Central electrical
`conductor
`
`Outer electrical
`conductor (ground)
`
`Central electrical
`conductor
`
`Outer electrical
`conductor (ground)
`
`Insulating layer
`(dielectric)
`
`Protective jacket
`
`Insulating layer
`(dielectric)
`
`Protective jacket
`
`
`Conventional Coaxial Cable
`
`
`
`9
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`17. A central (inner) electrical conductor (the “signal feed” or “signal”) is
`
`
`
`surrounded by an insulating layer (the “dielectric”) and an optional foil layer,
`
`which are surrounded by an outer electrical conductor (the “ground return,”
`
`“ground,” or “shield”) that may be in the form of a metal braid. The outer
`
`conductor is surrounded by a nonconductive material that acts as an environmental
`
`seal and protective jacket.
`
`18. A coaxial cable connector is installed at the end of a coaxial cable to
`
`connect the cable to an interface port of an electrical device such as a television,
`
`set-top box, or modem. A conventional coaxial cable connector attached to a
`
`coaxial cable is depicted below:
`
`Nut (coupler or port
`coupling element)
`
`Body
`
`To interface
`port
`
`Post
`
`Coaxial cable
`
`Conventional Coaxial Cable Connector
`
`
`
`19. One conventional type of coaxial cable connector has a nut (coupler
`
`or port coupling element), a post, and a body. The nut allows the coaxial cable
`
`connector to be secured to the interface port by rotating the port coupling element
`
`10
`
`

`
`
`about the post. The inner conductor of the coaxial cable must be connected
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`securely (mechanically and electrically) to a central pin receptacle on the interface
`
`port, while the outer conductor of the coaxial cable must be electrically connected
`
`to the ground of the device. Typically, the interface port, the nut, and the post are
`
`conductive.
`
`20. To attach a coaxial cable connector to the coaxial cable, the center
`
`conductor, insulating layer and optional foil of the cable are typically inserted into
`
`the post in the connector, while the outer conductor, any additional foil layer(s)
`
`surrounding the outer conductor, and the jacket are captured between the post and
`
`the inner wall of the connector body of the coaxial cable connector, as shown
`
`above. The coaxial cable connector is connected to the interface port, e.g., by
`
`threading the nut onto the interface port. A fully tightened threaded connection of
`
`the connector to the interface port ensures a ground connection from the interface
`
`port, to the post, to the outer electrical conductor of the coaxial cable.
`
`21. Connectors, however, are often times not properly tightened or
`
`installed on the interface port. Ex. 1001 at 1:38-42; Ex. 1002 at 1:60-2:3. The
`
`structure of common connectors may permit loss and discontinuity of the
`
`electromagnetic shield. Ex. 1001 at 1:42-45. When a connector is installed
`
`properly onto an interface port, the front face of the post contacts the front face of
`
`11
`
`

`
`
`the interface port to extend the electrical ground path and electromagnetic
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`shielding provided by the cable’s outer conductor through the post and to the
`
`interface port. This arrangement is referred to as a direct ground path between the
`
`interface port and the post. A direct ground path exists in the ‘338 Patent when the
`
`front (mating) face of the post makes physical and electrical contact with the
`
`mating edge of the interface port. Ex. 1001 at 5:58-61. When a connector is not
`
`properly tightened on the interface port, proper electrical mating of the connector
`
`with the interface port does not occur. When the connector is loose on the
`
`interface port, a gap exists between the front face of the post and the front face of
`
`the port which prevents the direct ground path from being formed.
`
`A. The ‘338 Patent
`22. The ‘338 Patent attempts to address the problems caused by
`
`connectors not being properly installed on the interface port. Ex. 1001 at 1:41-51.
`
`The ‘338 Patent discloses a coaxial cable connector that is designed to extend
`
`electrical continuity through the connector by maintaining electrical and physical
`
`communication between the post and the port coupling element (i.e., the coupling
`
`nut or coupler). Ex. 1001 at 1:17-18, 47-51. Fig. 2 of the ‘338 Patent depicts an
`
`exemplary embodiment:
`
`12
`
`

`
`
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`Fig. 2 of the ‘338 Patent
`
`
`
`23. The coaxial cable connector comprises a connector body attached to a
`
`post, the post having a first end and an opposing second end. Ex. 1001 at 1:62-64.
`
`The connector comprises a port coupling element rotatable about the post and
`
`having an inner surface. Ex. 1001 at 1:65-66. The connector also comprises a
`
`plurality of engagement fingers proximate the second end of the post, wherein the
`
`plurality of engagement fingers are biased into a position of interference with the
`
`inner surface of the port coupling element. Ex. 1001 at 1:65-2:3. The plurality of
`
`engagement fingers are separated, or spaced apart, by slots running axially.
`
`Ex. 1001 at 8:16-18. Exemplary engagement fingers and slots are depicted in the
`
`drawings of the ‘338 Patent:
`
`13
`
`

`
`
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`Exemplary
`engagement finger
`
`Exemplary slot that extends
`through the entire thickness
`of the wall of the post
`Fig. 3 of the ‘338 Patent (Annotated)
`
`
`
`Exemplary slots that extend
`through the entire thickness
`of the wall of the post
`
`
`
`Fig. 3 of the ‘338 Patent (Annotated)
`
`24.
`
`In the exemplary connector depicted in the drawings of the ‘338
`
`Patent, the slots extend through the entire thickness of the wall of the post.1
`
`
`1 The ‘338 Patent provides additional description regarding the engagement fingers
`
`and slots which are discussed below in sections VI to VIII below.
`
`14
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`The Prior Art
`
`I am of the opinion that Patent Owner (“PPC”) was neither the first
`
`
`
`B.
`25.
`
`nor the only industry participant that recognized the problem of loose connectors.
`
`The inventors of U.S. Patent No. 7,114,990 (Ex. 1002, “Bence”) recognized that
`
`loose connectors result in gaps that exist between the outer conductor of the
`
`appliance port and the tubular post. 2 Ex. 1002 at 1:54-2:2. Bence also discloses
`
`that manufacturers routinely dimensioned the flange of the tubular post to be
`
`smaller than the dimension of an inner diameter of a coupler (port coupling
`
`element) to provide free rotation of the nut. Id. at 2:5-13. Bence explicitly teaches
`
`that while components dimensioned in such a manner may fortuitously provide an
`
`alternate ground path (created by contact between the port coupling element and
`
`the post), the alternate ground path created by such fortuitous contact is not stable.
`
`Id. at 2:8-26.
`
`26.
`
`I am of the opinion that Bence describes one solution to these
`
`problems associated with loose connectors. Bence discloses a connector which
`
`
`2 I understand that Petitioner has obtained patents in the field of the ‘338 Patent
`
`including, e.g., U.S. Patent Nos. 9,172,154, 9,287,659, and 9,407,016. The claims
`
`of these patents recite features that are not present in the challenged claims of the
`
`‘338 Patent.
`
`15
`
`

`
`
`provides a stable and reliable alternate ground path between the port coupling
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`element and the post. Bence discloses providing contact between the post and the
`
`port coupling element by way of a projection (or finger) that extends outwardly
`
`from the post such that it makes resilient contact with an inner surface of the port
`
`coupling element. Bence discloses that by providing resilient contact between the
`
`projection/finger extending outwardly from the post and an inner surface of the
`
`port coupling element, a constant, reliable alternate grounding path between the
`
`post and the post coupling element (coupler) can be attained while still allowing
`
`for sufficient rotation of the port coupling element. Ex. 1002 at 3:14-16 (“a
`
`resilient, electrically-conductive grounding member is disposed between the
`
`tubular post and the coupler. This grounding member engages both the tubular
`
`post and the coupler for providing an electrically-conductive path therebetween,
`
`but without restricting rotation of the coupler relative to the tubular post.”), 10:26-
`
`30 (“the present invention provides a coaxial cable connector that ensures a
`
`reliable grounding path without creating undue interference with free rotation of
`
`the coupler relative to the remaining components of the connector”), Figs. 7-7C,
`
`11-11D.
`
`27. Bence discloses using a resilient, electrically-conductive grounding
`
`member having components such as fingers or projections which provide a
`
`16
`
`

`
`
`constant, reliable electrically-conductive path between the post and the coupler
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`while allowing for free rotation of the coupler relative to the tubular post. Id. at
`
`3:15-20, 3:46-52, 8:18-39, 9:64-10:30, Figs. 7-7C, 11-11D.
`
`Flange of the post
`
`Port coupling
`element
`
`Flange of the post
`
`Port coupling
`element
`
`Resilient, electrically-
`Resilient, electrically-
`conductive grounding member
`conductive grounding member
`Fig. 7A of Bence (Annotated)
`Fig. 11A of Bence (Annotated)
`Resilient Contact Between the Post and the Port Coupling Element in Bence
`
`28. Bence demonstrates that it was known in the art that even if a
`
`
`
`
`
`connector is not properly installed on an interface port (and no direct ground path
`
`between the interface port and the post exists), grounding can be achieved through
`
`an alternate ground path, i.e., a ground path extending from the interface port, to
`
`the port coupling element, to the post, to the outer conductor of the coaxial cable.
`
`29.
`
`It is my opinion that a person of ordinary skill, as described in section
`
`IV.C. above for example, would be able to construct the Bence connector using the
`
`knowledge and techniques available at the time. Such a connector would address
`
`the problem of grounding loose connectors without unduly interfering with the
`
`rotation of the coupler.
`
`17
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`30.
`
`I am of the opinion that other industry participants also recognized the
`
`
`
`desirability of a reliable alternate ground path extending through the port coupling
`
`element and the post. See, e.g., Exs. 1007, 1008 at ¶¶ 11-17; Ex. 1009 at 1:29-2:8,
`
`3:4-14; Ex. 1010 at 1:45-2:34, 5:11-16.
`
`C.
`31.
`
`Summary of the Examination History of the ‘338 Patent
`
`I understand that the ‘338 Patent issued on December 13, 2011, from
`
`U.S. Patent Application Serial No. 12/906,503, filed on October 18, 2010 (“the
`
`‘503 application”) (Ex. 1011). I understand the Examiner rejected claims 1-21 of
`
`the ‘503 application under 35 U.S.C. § 103(a) as being unpatentable over Bence in
`
`view of U.S. Patent No. 4,979,911 to Spencer (Ex. 1013). Ex. 1012. Spencer
`
`discloses a collet 1 having slots 7 that radially extend through the entire thickness
`
`of the wall of the collet 1:
`
`Fig. 2 of Spencer (Excerpt)
`
`
`
`32.
`
`I understand the Examiner stated that the collet 1 having slots 7
`
`disclosed by Spencer is a slotted post, and proposed modifying the flanged post of
`
`18
`
`

`
`
`Bence to have the slots 7 that radially extend through the entire thickness of the
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`wall of the collet 1 disclosed by Spencer. Ex. 1012.
`
`33.
`
`I understand that in response, Applicant argued that “one having
`
`ordinary skill in the art would not combine Bence et al. with Spencer.” Ex. 1014 at
`
`12. The Applicant argued that slotting the post of Bence as disclosed by Spencer
`
`“would render the grounding member 110 obsolete” and “would interfere with the
`
`performance of the grounding member,” and “a person having ordinary skill in the
`
`art would not be motivated to combine the collet ‘1’ with the Bence et al.
`
`connector.” Id. at 12-14.
`
`34.
`
`I understand that in the Examiner’s statement of reasons for allowance,
`
`the Examiner explained that “it would not have been obvious to modify Bence et al
`
`in view of any teachings of Spencer for the reasons given by applicant.” Ex. 1015
`
`at 6.
`
`35. Given this information, I am of the opinion that the ‘503 application
`
`was allowed because the Examiner found that Bence would not have been
`
`combined with Spencer.
`
`36. My conclusions concerning the anticipation and obviousness of claims
`
`5, 6, and 8 of the ‘338 Patent set forth in this Declaration do not rely on the
`
`features or teachings of Spencer. I am therefore of the opinion that the Examiner’s
`
`19
`
`

`
`
`rationale for allowing the ‘503 application is not applicable or relevant to the
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`challenges supported by this Declaration. In addition, the Examiner’s rejection
`
`based on Bence is very different from the challenges supported by this Declaration
`
`for the following reasons.
`
`1.
`
`This Declaration Relies on Connector Structure Disclosed
`by Bence Not Relied Upon by the Examiner During ex parte
`Prosecution
`
`37. As discussed below in sections VII and VIII., my reasoning in this
`
`Declaration relies on, inter alia, Bence’s disclosure of projections 1117 of the
`
`connector 1100 depicted in Figs. 11-11D and fingers 703 of the connector 700
`
`depicted in Figs. 7-7C:
`
`Connector Body
`
`Post
`
`Port coupling
`element
`
`Engagement
`fingers
`
`Figs. 11, 11A of Bence (Annotated)
`
`
`
`20
`
`

`
`
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`Post
`
`Connector Body
`
`Port coupling
`element
`
`Engagement
`fingers
`Figs. 7, 7A of Bence (Annotated)
`
`
`
`38. During prosecution of the ‘338 patent, the Examiner did not rely on
`
`these structures disclosed by Bence, and did not allege that Bence itself discloses
`
`the engagement fingers recited in independent claim 5 of the ‘338 Patent. As noted
`
`above, the Examiner relied on Spencer for disclosing a slotted post (Ex. 1012 at 2).
`
`2.
`
`The Reasoning of This Declaration is Distinct from the
`Application of Bence During ex parte Prosecution
`39. The reasoning in this Declaration does not rely on the Spencer
`
`reference, which the Examiner found to be non-combinable with Bence during ex
`
`parte prosecution.
`
`21
`
`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`40. This Declaration presents arguments and rationales that were not
`
`
`
`considered by the Examiner and are very different from those considered by the
`
`Examiner. In my opinion, the rejection during ex parte prosecution based on
`
`Bence and Spencer is not duplicative of my reasoning set forth below.
`
`VI. CLAIM CONSTRUCTION
`It is my understanding that in an inter partes review proceeding, the
`41.
`
`terms in the claims are to be given their broadest reasonable interpretation, as
`
`understood by one skilled in the art, consistent with the disclosure of the ‘338
`
`Patent. I have applied the broadest reasonable interpretation in interpreting the
`
`claims of the ‘338 Patent.
`
`A.
`42.
`
`PPC’s Infringement Allegations in the Related Litigation
`
`I understand that, in the related litigation, PPC has alleged that certain
`
`connectors belonging to Petitioner Corning Optical Communication RF LLC’s
`
`EFC series connectors infringe claims 5, 6, and 8 of the ‘338 Patent.3 Ex. 1006 at
`
`5. I understand that one such connector (hereinafter the “Accused Connector”) is
`
`depicted below:
`
`
`
`
`3 Claims 5, 6, and 8 are the claims addressed by this Declaration.
`
`22
`
`

`
`
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`Connector Accused by Patent Owner of Infringing
`Claims 5, 6, and 8 of the ‘338 Patent (Ex. 1018)
`
`I understand that by alleging that the Accused Connector infringes
`
`
`
`43.
`
`claims 5, 6, and 8 of the ‘338 Patent, Patent Owner has alleged that the Accused
`
`Connector satisfies the recitations of such asserted claims.
`
`44. As seen from the above drawings, the Accused Connector does not
`
`have slots which extend through the entire thickness of the wall of the post as
`
`show