Patent No. 8,075,338
`IPR2015-01569
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`Filed on behalf of Patent Owner, PPC Broadband, Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________
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`CORNING OPTICAL COMMUNICATIONS RF LLC, CORNING
`INCORPORATED, AND CORNING OPTICAL COMMUNICATIONS LLC,
`Cornings,
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`v.
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`PPC BROADBAND, INC.,
`Patent Owner.
`__________
`
`Case IPR2016-01569
`Patent 8,075,338
`__________
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`
`
`DECLARATION OF CHARLES A. ELDERING, PH.D.
`IN SUPPORT OF PATENT OWNER’S
`PRELIMINARY PATENT OWNER RESPONSE
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`IPR2015-01569
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`Filed on behalf of Patent Owner, PPC Broadband, Inc.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________
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`CORNING OPTICAL COMMUNICATIONS RF LLC, CORNING
`INCORPORATED, AND CORNING OPTICAL COMMUNICATIONS LLC,
`Cornings,
`
`v.
`
`PPC BROADBAND, INC.,
`Patent Owner.
`__________
`
`Case IPR2016-01569
`Patent 8,075,338
`__________
`
`
`
`DECLARATION OF CHARLES A. ELDERING, PH.D.
`IN SUPPORT OF PATENT OWNER’S
`PRELIMINARY PATENT OWNER RESPONSE
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`Patent No. 8,075,338
`IPR2015-01569
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`1.
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`I, Charles A. Eldering, Ph.D., submit this Declaration in support of
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`PPC Broadband, Inc.‟s (“PPC”) Preliminary Patent Owner Response to the Petition
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`for Inter Partes Review (“IPR”) of claims 5, 6, and 8 of U.S. Patent No. 8,075,338
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`(the “„338 Patent”)(EX1001) filed by Petitioner, Corning Optical Communications
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`RF, LLC et al. (“Corning”) based upon my personal knowledge and my review of
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`materials and information discussed in this Declaration.
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`2.
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`I have been asked to review the Declaration of Mr. Locati (EX1003)
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`and the Petition submitted in the above-captioned IPR (and exhibits cited therein
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`respectively) where Corning and Mr. Locati have asserted and offered opinions that
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`claims 5, 6, and 8 of the „336 Patent are anticipated and obvious.
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`3.
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`I understand that Corning and Mr. Locati are of the view that that the
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`claims 5, 6, and 8 of the „336 Patent based on U.S. Patent No. 7,114,990 (“Bence”)
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`(EX1002) are anticipated and obvious.
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`4.
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`For the reasons that follow, I respectfully disagree with Mr. Locati‟s
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`opinions, and, instead, I am of the opinion that the prior art, including Bence does
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`not anticipate or render the claimed invention obvious.
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`5.
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`I have been asked by PPC to prepare this Declaration setting forth my
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`comments and opinions on whether the claims involved in these proceedings would
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`have been anticipated or obvious to a person of ordinary skill in the art at the time
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`the „336 Patent was filed (2010) as asserted by Corning. In addition, I have
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`reviewed the exhibits and other documents referenced in this Declaration. This
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`Declaration sets forth my opinions and the basis, reasons, and evidence relied upon
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`in forming those opinions.
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`6.
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`I am being compensated for my services as an expert in this case at a
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`billing rate of $390 per hour.
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`7.
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`I understand that the ultimate question of obviousness is a question of
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`law with underlying facts for the trier of fact to decide. In determining whether a
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`claimed invention is obvious I understand that the trier of fact must determine the
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`scope and content of the prior art, identify the differences between the asserted
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`claims and the prior art, determine the level of ordinary skill in the pertinent art at
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`the time the invention was made, then decide whether each claim as a whole would
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`have been obvious to a person of ordinary skill in the pertinent art when viewing the
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`prior art.
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`8.
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`To find that a combination of prior art rendered the invention obvious, I
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`understand that a prima facie case of obviousness can only be established if each
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`and every limitation in the claim are taught or suggested by the prior art.
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`9. Moreover, even if the prior art teaches each and every element in the
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`claims at issue (which they did not), I understand that fact alone would not prove
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`obviousness. Most, if not all, inventions rely on building blocks of prior art. I
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`understand that it is necessary to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`10. Thus, in evaluating whether a claimed invention is obvious, I must
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`consider whether there was a reason that would have prompted a person having
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`ordinary skill in the art to combine the known elements in a way the claimed
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`invention does, taking into account factors such as whether the claimed invention
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`was merely the predictable result of using prior art elements according to their
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`known function, whether the claimed invention provides an obvious solution to a
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`known problem in the relevant field, whether the prior art teaches or suggests the
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`desirability of combining elements claimed in the invention, whether the prior art
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`teaches away from combining elements in the claimed invention, whether it would
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`have been obvious to try the combinations of elements, such as when there is a
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`design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, and whether the change resulted more from design
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`incentives or other market forces.
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`11.
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`In addition, to find that the prior art rendered the invention obvious, I
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`must find that it provided a reasonable expectation of success, and I must consider
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`each claim separately, and I cannot use hindsight – i.e., I can consider only what
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`was known at the time of the invention.
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`Experience, Qualifications, And Prior Testimony
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`12.
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`I am an electrical engineer with over twenty years of experience
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`spanning the fields of electronics and microelectronics, cable and telephone
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`communications systems, optics, and intellectual property. A copy of my
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`curriculum vitae has been submitted as Exhibit 2007 (EX2007).
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`13. My work experience includes working as an officer in the United States
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`Air Force where I analyzed the reliability of microelectronic and electronic systems.
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`I also conducted research in the areas of optics and materials at the University of
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`California at Davis, where I was awarded a Ph.D. in electrical engineering. In
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`addition, I worked for cable television and other companies in the
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`telecommunications industry where I developed electronic and optical equipment
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`and worked extensively with coaxial cable connectors, such as the ones involved in
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`this case. A list of my publications can be found in my curriculum vitae.
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`14.
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`I have been named as an inventor on over seventy issued United States
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`patents listed in my in my curriculum vitae. I am a registered United States Patent
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`Agent. As an agent, I have prosecuted patents before the United States Patent and
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`Trademark Office.
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`15.
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`I have been qualified as an expert witness on the topic of coaxial cable
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`connectors several times and have testified as an expert witness for PPC in several
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`cases.
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`16. The art involved in the „336 Patent is the design, manufacture, or
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`utilization of coaxial cable connectors.
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`17. One of ordinary skill in the art is a person that has at least a bachelor‟s
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`degree in engineering and several years experience in the cable and
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`telecommunications industry relating to the design, manufacture, or utilization of
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`coaxial cable connectors in communications systems. Bachelor‟s degrees in
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`engineering require basic coursework in physics and mechanics, and experience in
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`the cable and telecommunications industry will result in use of the knowledge
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`obtained in those courses as applied to particular engineering problems which occur
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`with coaxial cable connectors. I am at least of ordinary skill in the art based on my
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`years experience in the telecommunications field, and more specifically with coaxial
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`cable connectors.
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`I.
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`SUMMARY OF OPINIONS
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`18. For the reasons explained herein, it is my opinion that claims 5, 6, and
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`8 of the „336 Patent are not anticipated or obvious based on Bence.
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`II. THE ‘338 PATENT
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`19. The „336 Patent invention is directed to coaxial cable connectors for
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`connecting a coaxial cable to an equipment port.
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`20. A coaxial cable connector creates a continuous waveguide structure and
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`extends the physical and electromagnetic shielding structure of the cable all the way
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`through to the port on the television, set top box, broadband modem or other device
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`that the cable is being attached to. It also facilitates attachment of the cable to the
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`port by use of a threaded nut or other means.
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`21. Although there are many different types of coaxial cable connectors,
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`the most common among them typically have some form of environmental sealing
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`that extends the weatherproofing protection afforded by the outer jacket of the cable,
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`a component (most often referred to as the “post” or the “tubular post”) that extends
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`the electromagnetic shielding and waveguide structure provided by the cable‟s braid
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`and foil, and a cavity or other structure through which the center conductor is able to
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`make an electrical connection with the port.
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`22. A connector is required to extend the physical structure of the coaxial
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`cable all the way to the interface port of a device. For instance, a connector with a
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`“post” component can allow the electrical grounding and electromagnetic shielding
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`provided by the cable‟s outer conductor to be extended, if pressed into contact with
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`a receiving element, all the way to the port.
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`23. When installed properly onto a port, the front face of the post
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`electrically contacts the front face of the port to extend the electrical ground path
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`and electromagnetic shielding provided by the cable‟s outer conductor through the
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`post and all the way to the port.
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`24. As illustrated, when the connector is loose on the port, gaps can exist
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`between the front face of the post and the front face of the port, which prevent the
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`ground path and electromagnetic shielding from extending through the post and all
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`the way to the port. While the nut is in electrical contact with the outside of the port
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`even when the connector is only loosely attached to the port, the gaps that exist
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`between the nut and the post prevent the nut and the post from sufficiently
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`contacting each other to allow the ground path and electromagnetic shielding to be
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`extended all the way to the port. Without a reliable ground path and the shielding
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`that results, significant signal transmission problems can occur, including signal
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`interruption, video pixilation, and data loss.
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`25.
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`In the 2009/2010 timeframe, PPC‟s engineers developed a solution to
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`the loose connector problem that led to the „338 Patent, which is entitled “Connector
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`Having a Constant Contact Post.” (EX1001 Title.) As shown in the following
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`annotated version of Fig. 2, the‟338 Patent discloses a “constant contact post” (red)
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`with a “plurality of engagement fingers” designed to exert a constant biasing force
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`against the inner surface of the port coupling element (blue) and thus maintain
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`constant contact between the post (red) and the port coupling element (blue) even
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`when the connector is loose on a port. (EX1001 4:18-50.)
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`III. CLAIM CONSTRUCTION
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`26. Claim 5 of the „338 Patent requires “a plurality of engagement fingers
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`proximate the second end [of the post], wherein the plurality of engagement fingers
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`are biased into a position of interference with the inner surface of the port coupling
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`element.”
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`27. To solve the loose connector problem, the „338 Patent specification
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`teaches “an improved connector having a constant contact post for ensuring ground
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`continuity through the connector, and establishing and maintaining electrical and
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`physical communication between the post and a port coupling element.” (EX1001
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`1:47-51.) The Field of the Invention states that the “present invention relates to . . .
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`embodiments of a coaxial cable connector having a constant contact post that
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`extends electrical continuity through the connector.” (EX1001 1:14-18.) The title
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`of the „338 Patent – “Connector Having A Constant Contact Post” shows that it is
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`the inventive “post” of the „338 Patent, and not some other component, that is
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`resolving the loose connector problem.
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`28. All of the embodiments disclosed in the „338 Patent teach that it is the post 40
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`(e.g., the engagement fingers 145 or the flange 44 generally) that provides constant
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`contact with the port coupling element 30 to maintain physical and electrical
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`continuity between the post 40 and the port coupling element 30. EX1001 8:33-41,
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`10:40-57, 4:39-59, 7:44-48, 7:60-65.)
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`„338 Patent (EX1001)
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`29. Claim 5 requires that “the plurality of engagement fingers are biased
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`into a position of interference with the inner surface of the port coupling element.”
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`In other words, it is the engagement fingers of the constant contact post that are
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`biased so as to contact the inner surface of the port coupling element.
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`30. The „338 Patent prosecution history confirms that the constant contact
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`post is the fundamental feature of the invention. The Examiner rejected the claims,
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`stating that Bence “substantially discloses the claimed invention except for the
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`flanged post 104, 106 being slotted.” (EX1012 at 2.)
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`31. The Applicants explained how the “connector taught by Bence et al.
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`includes an additional grounding member „110,‟ which „contacts both the tubular
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`post 104 and the coupling nut 105 for providing an electrically-conductive path
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`therebetween.‟” The Applicant also explained how Bence fails to teach the
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`fundamental feature of the claimed invention (i.e., the constant contact post) stating
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`that “when the connector is not mated onto a port, the slotted post ensures
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`mechanical interference between the port and the coupling element.” (EX1014 at p.
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`16.)
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`32. The specification of the „338 Patent discloses :
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`Engagement fingers 145 can be portions of the post 40 proximate or
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`otherwise near the second end 42 that are separated, or spaced apart, by
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`slots 140 running axially through the flange 44 and a portion of the post
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`40 proximate or otherwise near the second end 42. Engagement fingers
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`145 may also be resilient members, biasing members, fingers, biasing
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`fingers, post fingers, teeth, engagement teeth, post teeth, expanding
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`members, flexible members, and the like. (EX1001 8:16-23.)
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`33. This teaches that while the disclosed fingers are part of the post, they
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`can be (1) located proximate or otherwise near the second end of the post, or (2)
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`spaced apart by slots running through the flange and portion of the post. A person
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`of ordinary skill would thus readily recognize that such a passage simply refers to a
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`possible location and arrangement of the engagement fingers of the post.
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`34. Claim 5 specifically requires that a “plurality of engagement fingers
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`proximate the second end [of the post]”. As is made clear throughout the
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`specification, the claim requirement that the “engagement fingers” must be
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`“proximate the second end” of the post specifies that the engagement fingers are
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`located on the post near the second end (i.e., the front or forward end) of the post.
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`For example, FIG. 3 illustrates that in all of the exemplary embodiments described
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`in the specification, the “plurality of engagement fingers 145 [are] proximate the
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`second end 42” (i.e., the fingers are a portion of the post near the second end of the
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`post). (EX1001 4:29-37; see also EX 1001 8:12-16, 10:40-46, 10:57-67.)
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`engagement fingers (145)
`are a portion of the post
`(40) near the second end
`(42) of the post
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`35. The engagement fingers are consistently described in the specification
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`as being proximate the second end of the post, and in each and every disclosed
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`embodiment of the‟338 Patent specification, the engagement fingers are a portion
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`of, and integral with, the post.
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`36. Each and every time the term “proximate” an end of a component is
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`used to describe a structural feature, that structural feature is a portion of, and
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`integral with, the component itself (i.e., not separate from and only near the
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`component).
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` “a flange 44 proximate the second end 42” of the post 40 (EX1001
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`4:21-24)
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` “an internal lip 34 located proximate, or otherwise near to the second
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`end 32” of the nut 30 (EX1001 4:56-59)
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` “a post mounting portion 57 proximate or otherwise near the first end
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`51 of the body 50” (EX1001 8:50-57)
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` “an outer annular recess 58 located proximate or near the first end 51 of
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`the connector body 50” (EX1001 8:57-59)
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` “an external annular detent 53 located proximate or close to the second
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`end 52 of the connector body 50” (EX1001 8:64-66)
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` “the fastener member 60 may comprise an exterior surface feature 69
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`positioned proximate with or close to the second end 62 of the fastener
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`member 60” (EX 1001 9:38-41)
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`37. One of ordinary skill would understand that the ordinary and customary
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`meaning of “proximate the second end” of the post in claim 5 is that the engagement
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`fingers are a portion of the post located near the second end of the post. The
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`claimed “plurality of engagement fingers” are a portion of, and integral with, the
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`post.
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`38. Claim 5 requires “a post, the post having a first end and an opposing
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`second end.” Each and every embodiment of the post 40 in the specification of the
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`„338 Patent discloses a single, inseparable component. And while the specification
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`discloses that “the post 40 may be formed of a combination of both conductive and
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`non-conductive materials,” this disclosure simple refers to “a metal coating or layer .
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`. .applied to a polymer of other non-conductive material” (EX1001 6:10-17), which
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`would still produce a single, integral component. The claimed “plurality of
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`engagement fingers” of claim 5 must be a portion of, and integral with, the post.
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`39. Claim 8 of the „338 Patent depends from claim 5, and further requires
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`that “the plurality of engagement fingers are spaced apart by axially aligned slots
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`positioned on the post proximate the second end.”
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`40. The „338 Patent discloses that the claimed slots can take a variety of
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`forms, including openings, spaces, cuts, grooves, etc.
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`With continued reference to FIG. 1, and additional reference to FIG. 3,
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`post 40 includes a plurality of slots 140 positioned somewhere on or
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`around the post 40 proximate or otherwise near the second end 42. A
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`plurality of slots 140 may be a plurality of openings, spaces, voids,
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`apertures, holes, cuts, channels, grooves, and the like, positioned on the
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`flange 44 and a portion of the post 40 proximate or otherwise near the
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`second end 42 of the post 40. (EX1001 6:18-25.)
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`slots (140)
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`41. The slots described in the cited language from the specification
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`(EX1001 6:18-25) are either “positioned . . . on or around,” while claim 8 expressly
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`requires that the slots be “positioned on” (i.e., and not merely just “around”) the
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`post. That language from the specification demonstrates that, while claim 8 could
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`have used broader language allowing the claimed slots to be simply “around” the
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`post, the actual language is more restrictive, requiring that the slots be positioned on
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`the post.
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`42. One of ordinary skill in the art would recognize that the slots (e.g.,
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`openings, spaces, voids, apertures, holes, cuts, channels, grooves)(EX1001 6:18-21)
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`describe areas of missing material that are formed in the post as disclosed in the
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`specification and shown in the figures.
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`The number of engagement fingers 145 depends on the number of slots
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`140 positioned on the post 40. For example, if the post 40 has six slots
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`140 axially extending from the second end 42, six engagement fingers
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`145 would be formed. (EX1001 8:24-26.)
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`43. The claimed “axially aligned slots positioned on the post” requires that
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`the slots be formed in the post.
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`IV. ANTICIPATION.
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`44. Claim 5 of the „338 Patent requires “a plurality of engagement fingers
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`proximate the second end [of the post], wherein the plurality of engagement fingers
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`are biased into a position of interference with the inner surface of the port coupling
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`element.” The claimed “plurality of engagement fingers proximate the second end
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`[of the post]” requires that the engagement fingers be a portion of, and integral with,
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`the post. Bence does not disclose the claimed “plurality of engagement fingers
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`proximate the second end [of the post]” since Bence‟s disclosed grounding members
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`and spring fingers are separate from the post.
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`45. Bence discloses fingers 703 of the grounding member 701 shown in
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`FIGS. 7-7C and the fingers 1117 of the grounding member 1101 shown in FIGS. 11-
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`11D.
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`46. Bence‟s grounding members 701/1101, and their fingers 703/1117, are
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`separate components from the post 104/1104. (EX1002 8:26-29; 10:22-25.)
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`Accordingly, Bence‟s disclosure of separate grounding members 701/1101 with
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`fingers 703/1117 that are separate components from the post 104/1104 are not a
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`portion of, and integral with, the post, and therefore, do not disclose, teach, or
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`otherwise suggest the “plurality of engagement fingers” required by independent
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`claim 5 (and dependent claims 6 and 8).
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`47. Claim 8 of the „338 Patent depends from claim 5, and further requires
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`that “the plurality of engagement fingers are spaced apart by axially aligned slots
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`positioned on the post proximate the second end.” The claimed “axially aligned
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`slots positioned on the post” in dependent claim 8 requires that the slots be formed
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`in the post. Bence cannot disclose or suggest the claimed “axially aligned slots
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`positioned on the post” since the posts disclosed in Bence do not have any slots at
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`all.
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`48. Bence discloses fingers 703 of the grounding member 701 shown in
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`FIGS. 7-7C and the fingers 1117 of the grounding member 1101 shown in FIGS. 11-
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`11D.
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`Pet. at 44
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`Pet. at 44
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`49. Any axially aligned slots in Bence are positioned on the grounding
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`members 701/1101 between the fingers 703/1117 and are not formed in the post.
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`Bence‟s disclosure of fingers 703/1117 on members 701/1101 does not disclose,
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`teach, or otherwise suggest the “axially aligned slots positioned on the post”
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`required by dependent claim 6, since Bence‟s alleged slots are not formed in the
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`post.
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`V. OBVIOUSNESS
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`A. The Level Of Ordinary Skill In The Art At The Time Of The
`Invention Confirms That The Prior Art Teaches Away From The
`Claimed Invention.
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`50.
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`In determining the level of one of ordinary skill in the art at the relevant
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`time of the invention, I understand that contemporaneous documentary evidence
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`should be considered, including “prior art solutions to those problems.” In this IPR,
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`several contemporaneous patents and patent applications provide evidence as to the
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`level of ordinary skill in the art at the time of the invention, and demonstrate that
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`persons of ordinary skill in the art at the time of the invention were pursuing loose
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`connector solutions that were far different than PPC‟s design in the „336 Patent.
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`51. These patent applications and patents demonstrate that, at the time of
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`the claimed „336 Patent invention, those of ordinary skill in the art tried to solve the
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`loose connector problem by (1) preventing the nut from becoming loose on the port
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`after it is tightened, (2) pushing the post toward the port, or (3) eliminating or
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`bridging certain gaps with a separate conductive grounding member. These
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`contemporaneous patents and patent applications also demonstrate that those of
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`ordinary skill understood that, at the time of the‟336 Patent invention, any solution
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`to the loose connector problem must avoid interfering with the rotation of the
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`nut/coupler about the post when tightening the connector onto the port.
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`52. U.S. Patent No. 8,376,769 (“Holland”) (EX2008) provides an objective
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`summary of the state of the art at the time of the invention. Holland also addressed
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`the loose connector problem. (EX2008 1:26-33.)
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`53. Holland discussed several prior art designs. The first solution was to
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`prevent the nut from becoming loose on the port after it is tightened. Holland
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`described an existing design (U.S. Patent No. 6,712,631 (“Youtsey”)(EX2009)) for
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`maintaining a tight nut using a separate lock washer. (EX2008 1:34-40.) The lock
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`washer (50) was a “lock washer [30] placed inside the coupling nut that produces a
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`constant tension against a mated male coaxial connector to prevent its loosening or
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`separation during use, especially during periods of vibration and thermal cycling.”
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`(EX2009 2:9-13.)
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`Youtsey (Fig. 2)(EX2009)
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`separate lock washer
`between the nut (30) and the
`flange (44) of the post
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`54. Holland described another existing design using a separate spring
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`component:
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`A second approach . . . [involves a] spring 16 behind the [post] flange
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`26 design as shown in . . . U.S. Pat. No. 6,716,062 to Palinkas et al. . . .
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`[EX2010] [T]he second approach is implemented using a compressed
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`spring that surrounds the post and operates to push the flange away
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`from the rear wall of the nut which tends to press the male connector‟s
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`flange against the female connector‟s mating front face. (EX2008
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`1:44-52.)
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`55.
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`In Palinkas, the separate coil spring (16) was designed to eliminate the
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`gap between the post and the port by forcing the flange of the post forward away
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`from the nut to contact the port.
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`Palinkas (Fig. 3)(EX2010)
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`separate coil spring (16)
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`56. Palinkas emphasized that, in attempting to address the loose connector
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`problem, “the nut is connected to the flanged end of the post and is freely rotatable.”
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`(EX2010 1:56-61.)
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`57. Another example discussed by Holland was the use of a separate
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`conductive “spring 12 in front of the flange design as shown in . . . U.S. Pat. No.
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`7,753,705 to Montena [EX2011].” (EX2008 1:56-58.) In Montena, a separate
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`conductive spring (10, 20) was designed to bridge the gap between the post and the
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`port to resolve “service quality problems resulting from loose connections.”
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`(EX2011 1:22-23, 2:6-9, 2:43-46.)
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`Montena „705 (Figure 3)(EX2011)
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`separate spring (or RF seal
`(10, 20))
`
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`In Montena‟s proposed solution to the loose connector problem, the
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`58.
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`“nut 30 rotates freely around a post 40.” (EX2011 4:22-35.)
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`59. Holland also discussed a “third approach has been to attach an
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`electrically conductive spring 110 between the loose nut and the flange as . . .
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`disclosed in U.S. Pat. No. 7,479,035 to Bence et al. [EX2012] (“Bence „035”).
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`(EX2008 1:64-67.)
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`60. As shown in Bence „035, the grounding member (110) was a separate
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`conductive component designed to bridge the gap between the post and the nut on
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`the forward side of the nut. (EX2012 2:1-5.)
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`Bence „035 (Fig. 5A)(EX2012)
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`separate grounding
`member (110)
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`61. Bence „035 emphasized that the loose connector solution would
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`maintain the free rotation of the nut relative to the post:
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`In a preferred embodiment of the present invention, a resilient,
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`electrically-conductive grounding member is disposed between the
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`tubular post and the coupler. This grounding member engages both the
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`tubular post and the coupler for providing an electrically-conductive
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`path therebetween, but without restricting rotation of the coupler
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`relative to the tubular post. (EX2012 3:14-20.)
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`62. Holland itself taught the use of a separate “conductive bridge 210
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`providing an electrical connection between the nut 202 and the body 206.”
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`(EX2008 4:3-5.)
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`Holland (Figure 2)(EX2008)
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`separate
`conductive bridge
`(210)
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`63. Holland also disclosed that in his loose connector solution “[n]otably,
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`the nut is free to rotate with respect to the connector body as the bridge rubs against
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`one or both of the nut and the body.” (EX2008 3:28-30.)
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`64. Another solution was shown in U.S. Patent Application Publication
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`No. 2010/0255719 A1 (“Purdy „719”)(EX2013), which is owned by PPC. Purdy
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`„719 used a separate conductive component (continuity member 70) to provide
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`contact between the nut and the post. (EX2013 ¶¶ [00028], [0032].)
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`Purdy „719 (EX2013)
`(FIG. 5)
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`separate continuity
`member (70)
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`65. Purdy „719 disclosed that “a continuity connector 100 is assembled, the
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`continuity member 70 contacts both the tubular post 40 and the coupling nut 30 for
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`providing an electrically-conductive path therebetween, but without restricting
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`rotation of the coupling nut 30 relative to the tubular post 40.” (EX2013 ¶ [0033].)
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`66. U.S. Patent Nos. 8,062,063 (“Malloy „063”)(EX2014) & 8,113,875
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`(“Malloy „875”)(EX2015) also disclosed loose connector solutions. Each of the
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`disclosed embodiments located a separate conductive grounding member forward of
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`the lip of the nut to bridge the gap with the interface port. (EX2014 Figs. 4, 6A,
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`7A, 8, 9, 11, 13, 15A, 15B, 23; EX2015 Figs. 2-7.)
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`Malloy „063 (EX2014)(Fig. 8.)
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`separate grounding member
`(810)
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`67.
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`In the 2010 timeframe, Corning Engineers, Donald Burris and William
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`Lutz, who were co-inventors of Bence (EX1007), filed patents directed to a loose
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`connector solutions, including U.S. Patent Nos. 8,517,763 (“Corning
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`„763”)(EX2017) & 8,272,893 (“Corning „893”)(EX2018).
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`68. The Corning applications list the same patents discussed in Holland,
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`including Bence (EX1007), Bence „035 (EX2012), Palinkas (EX2010), and U.S.
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`Patent Application No. 2008/0102696 (EX2016), from which Montena (EX2011)
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`issued as a continuation. (EX2017 1:53-67; EX2018 1:53-57.)
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`69. The Corning applications then provided several alternative
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`embodiments attempting to solve the loose connector problem by positioning
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`separate conductive grounding members at locations forward of the lip of the nut.
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`(EX2017 Figs. 1, 7, 8; EX2018 Figs. 1, 9, 15.)
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`Corning „763 (EX2017)
`Ring (90)
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`Corning „893 (EX2018)
`Ring (90)
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`70. Corning „893 noted that the “coupler 30 is free to rotate around the post
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`110.” (EX2017 4:3-4.)
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`71. Corning‟s Mr. Burris filed another application in 2010 trying to address
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`the loose connector problem. (U.S. Patent Application Publication No.
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`2012/0040537 (“Corning „537”)(EX2019) ¶ [0007].) The proposed solution was to
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`use a separate conductive component (shield 102) to create the conductive path.
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`(EX2019 ¶ [0025].)
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`Corning „537 (EX2019)
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`Corning „537 (EX2019)
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`72. Corning „537 stated that “[a]t the same time the shield is firmly
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`captured and grounded between the body 114 and the tubular post 104 providing
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`assured electrical and mechanical communication between the coupler 106, the body
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`114 and the tubular post 104 while allowing smooth and easy rotation of the coupler
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`112.” (EX2019 ¶ [00031], [0012], [0026], [0034]-[0036].) One of the claims of
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`Corning „537 required that “the shield provides for unrestricted rotation of the
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`coupler.” (EX2019 Claim 19.)
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`73. These patents and applications from the time of the invention evidence
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`that the conventional wisdom of cable connector designers and manufacturers
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`attempting to solve the loose connector problem was to try to use a separate
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`conductive component that wound not impede rotation of the nut/coupler with
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`respect to the post. These prior art solutions were different than the design claimed
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`in the „336 Patent.
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`74. Rather than use a separate component to provide a ground path between
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`the nut/coupler and the post, the inventive solution of the „338 Patent involved the
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`use of engage
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