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 ........................................................................................ 6
`
`III. COMPENSATION AND PRIOR TESTIMONY ........................................... 8
`
`IV. LEGAL STANDARDS ................................................................................... 8
`
`A. Anticipation ........................................................................................... 9
`
`B. Obviousness ........................................................................................... 9
`
`C. A Person of Ordinary Skill in the Art ................................................... 9
`
`V.
`
`TECHNICAL BACKGROUND ................................................................... 10
`
`A.
`
`The ‘338 Patent and the Prior Art ....................................................... 13
`
`1.
`
`2.
`
`The ‘338 Patent ......................................................................... 13
`
`The Prior Art ............................................................................. 15
`
`B.
`
`Summary of the Examination History of the ‘338 Patent ................... 20
`
`1.
`
`2.
`
`This Declaration Relies on Connector Structure
`Disclosed by Bence Not Relied Upon by the Examiner
`During ex parte Prosecution ..................................................... 22
`
`The Reasoning of This Declaration is Distinct from the
`Reasoning During ex parte Prosecution ................................... 24
`
`VI. CLAIM CONSTRUCTION .......................................................................... 24
`
`A.
`
`B.
`
`C.
`
`D.
`
`PPC’s Infringement Allegations in the Related Litigation ................. 25
`
`Construction of “post” ......................................................................... 28
`
`Construction of “a plurality of engagement fingers” .......................... 29
`
`Construction of “biased into a position of interference” ..................... 30
`
`i
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`

`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`Construction of “physical and electrical continuity” .......................... 31
`
`Construction of “axially aligned slots” ............................................... 32
`
`Construction of “on” ........................................................................... 32
`
`E.
`
`F.
`
`G.
`
`VII. Claims 5, 6, and 8 are Obvious Over Matthews in View of Aujla and Bence34
`
`A.
`
`B.
`
`Reference to Where the Elements of Claims 5, 6, and 8 Are
`Found in the Prior Art ......................................................................... 34
`
`Explanation of Why Claims 5, 6, and 8 Would Have Been
`Obvious................................................................................................ 69
`
`1. Matthews discloses virtually all of the features recited in
`claim 5 of the ‘338 Patent ......................................................... 70
`
`2.
`
`3.
`
`The spring projections disclosed by Aujla constitute a
`plurality of engagement fingers that are spaced apart by
`axially aligned slots ................................................................... 72
`
`It would have been obvious to modify Matthews to have
`an axially slotted post with engagement fingers in view
`of Aujla and Bence .................................................................... 75
`
`C. Any Purported Secondary Considerations Evidence Does Not
`Overcome the Strong Evidence of the Obviousness ........................... 93
`
`VIII. CONCLUSION .............................................................................................. 93
`
`
`
`
`
`
`
`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
`
`1.
`
`I have been retained by Buchanan Ingersoll & Rooney PC to provide
`
`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 obvious to the
`
`ordinarily skilled artisan over the cited prior art documents. I have reviewed the
`
`documents set forth in Table 1 below. This Declaration sets forth the basis and
`
`reasons for my opinion, including the additional materials and information 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
`
`1005
`
`Combined Decision in IPR2014-00440, IPR2014-00441 and
`
`IPR2014-00736 issued on August 18, 2015
`
`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”)
`
`2
`
`

`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1014
`
`Office Action Response filed in U.S. Patent Application No.
`
`12/906,503 on August 31, 2011
`
`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)
`
`3
`
`

`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1022
`
`Cantilever Beams Part 2 – Analysis, TECHNICAL TIDBITS, Issue No.
`
`21 (Brush Wellman Inc. 2010)
`
`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”)
`
`4
`
`

`
`
`EXHIBIT
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`DESCRIPTION
`
`1032
`
`U.S. Patent No. 4,426,127, issued on January 17, 1984 to James
`
`Kubota (“Kubota”)
`
`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”)
`
`1035
`
`U.S. Patent No. 3,781,762 issued on December 25, 1973 to Edward
`
`C. Quackenbush (“Quackenbush”)
`
`1036
`
`U.S. Patent No. 5,362,250 issued on November 9, 1994 to Corey
`
`McMills (“McMills”)
`
`1037
`
`Certified English Translation of Japanese Publication No. JP2000-
`
`2002-15823, published on January 18, 2002 (“JP ‘823”)
`
`1038
`
`Japanese Publication No. 2002-15823, published on January 18,
`
`2002
`
`
`
`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 yet produced. I further reserve the right
`
`5
`
`

`
`
`to expand or otherwise modify my opinions and conclusions as my investigation
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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 are unpatentable under 35 U.S.C. §
`
`103(a) as being obvious over U.S. Patent Application Publication No.
`
`2006/0110977 (“Matthews”) (Ex. 1019), in view of U.S. Patent No. 4,156,554
`
`(“Aujla”) (Ex. 1029) and U.S. Patent No. 7,114,990 (“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
`
`diagnosis of failed connectors, the design of new connectors, competitive product
`
`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
`
`6
`
`

`
`
`telecommunication connectors. My responsibilities also included assuring product
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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
`
`responsibilities included the design and development of electromechanical
`
`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
`
`7
`
`

`
`
`Polyethylene Jacketed Cable;” and U.S. Patent No. 5,651,698 entitled “Coaxial
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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.
`
`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.
`
`8
`
`

`
`
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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.
`
`C. A Person of Ordinary Skill in the Art
`15. One of ordinary skill in this art would be able to read 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
`
`9
`
`

`
`
`relating to the design, manufacture, and installation of coaxial cable connectors.
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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
`
`
`
`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
`
`10
`
`

`
`
`conductor is surrounded by a nonconductive material that acts as an environmental
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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
`
`about the post. The inner conductor of the coaxial cable must be connected
`
`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
`
`11
`
`

`
`
`to the ground of the device. Typically, the interface port, the nut, and the post are
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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. However, connectors are often times not properly tightened or
`
`installed on the interface port. Ex. 1001 at 1:38-42, 6:3-8; 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
`
`the interface port to extend the electrical ground path and electromagnetic
`
`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
`
`12
`
`

`
`
`interface port and the post. Such a direct ground path exists in the ‘338 Patent
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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 and the Prior Art
`The ‘338 Patent
`1.
`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:
`
`13
`
`

`
`
`
`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:
`
`14
`
`

`
`
`
`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)
`
`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
`
`The Prior Art
`
`2.
`It is my opinion that Patent Owner (“PPC”) was neither the first nor
`
`24.
`
`the only industry participant that recognized the problem of loose connectors. For
`
`1 The ‘338 Patent provides additional description concerning the engagement
`
`fingers and slots, discussed below in sections VI and VII.
`
`15
`
`

`
`
`example, U.S. Patent No. 7,114,990 (Ex. 1002, “Bence”) recognized that loose
`
`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`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 teaches 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. See also
`
`Ex. 1028 at 5:2-3 (“The threaded nut 30 may be formed of conductive materials
`
`facilitating grounding through the nut.”); Ex. 1007 at ¶¶ 6-7, 11-12, 16-18.
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`25.
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`I am of the opinion that Bence describes a solution to these problems
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`associated with loose connectors. Bence discloses a connector which provides a
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`stable and reliable alternate ground path between the port coupling element and the
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`post. Bence discloses that by providing resilient contact between a
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`2 I understand that Petitioner has obtained patents in the field of the ‘338 Patent
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`including, e.g., U.S. Patent Nos. 9,172,154, 9,287,659, and 9,407,016. The claims
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`of these patents recite features that are not present in the challenged claims of the
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`‘338 Patent.
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`16
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`
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`projection/finger extending outwardly from the post and an inner surface of the
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`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
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`port coupling element, a constant, reliable alternate grounding path between the
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`post and the coupler (post coupling element) can be attained while still allowing
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`for sufficient rotation of the port coupling element. Ex. 1002 at 3:14-16 (“a
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`resilient, electrically-conductive grounding member is disposed between the
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`tubular post and the coupler. This grounding member engages both the tubular
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`post and the coupler for providing an electrically-conductive path therebetween,
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`but without restricting rotation of the coupler relative to the tubular post.”), 10:26-
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`30 (“the present invention provides a coaxial cable connector that ensures a
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`reliable grounding path without creating undue interference with free rotation of
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`the coupler relative to the remaining components of the connector”), Figs. 7-7C,
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`11-11D.
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`26. Bence discloses using a resilient, electrically-conductive grounding
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`member having components such as fingers or projections which provide a
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`constant, reliable electrically-conductive path between the post and the coupler
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`while allowing for free rotation of the coupler relative to the tubular post. Id. at
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`3:15-20, 3:46-52, 8:13-39, 9:64-10:30, Figs. 7-7C, 11-11D.
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`17
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`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
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`Flange of the post
`
`Port coupling
`element
`
`Flange of the post
`
`Port coupling
`element
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`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
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`27. Bence demonstrates that it was known in the art that even if a
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`
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`
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`connector is not properly installed on an interface port (and no direct ground path
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`between the interface port and the post exists), grounding can be achieved through
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`an alternate ground path, i.e., a ground path extending from the interface port, to
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`the port coupling element, to the post, to the outer conductor of the coaxial cable.
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`Other industry participants also recognized the desirability of a reliable alternate
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`ground path extending through the port coupling element and the post. See, e.g.,
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`Exs. 1007, 1008 at ¶¶ 11-17; Ex. 1009 at 1:29-2:8, 3:4-14; Ex. 1010 at 1:45-2:34,
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`5:11-16.
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`28.
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`It is my opinion that coaxial cable connectors having a post, port
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`coupling element, connector body, and fastener member that are substantially
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`identical to the post, port coupling element, and connector body, and fastener
`
`member depicted in Figs. 1-3 of the ‘338 Patent are known. See, e.g., Ex. 1019 at
`
`18
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`

`
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`Figs. 1, 7, 8; Ex. 1028 at 1, 4, 8. Bence also discloses a coaxial cable connector
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`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
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`having the same general components (post component, port coupling element
`
`component, and connector body component) described in the ‘338 Patent. Ex.
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`1002 at Figs. 1-3, 7-7C, 11-11D. It is also my opinion that coaxial cable
`
`connectors having a post with exemplary axially aligned slots are also known. See,
`
`e.g., Ex. 1029 at Figs. 2-6; Ex. 1035 at Figs. 1-6; Ex. 1036 at Figs. 1-3.
`
`29. For the reasons discussed herein, it is my opinion that a person of
`
`ordinary skill, as described in section IV.C. above, for example, would be able to
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`construct the Bence connector using the knowledge and techniques available at the
`
`time. Such a connector would address the problem of grounding loose connectors
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`without interfering with the rotation of the coupler. I am also of the opinion that a
`
`person of ordinary skill in the art would have recognized that the concepts taught
`
`by Bence including the concept of employing resilient contact with a port coupling
`
`element to provide a constant, reliable alternate ground path between the coupler
`
`(port coupling element) and the post while allowing for sufficient rotation of the
`
`port coupling element, would have been applicable to other coaxial cable
`
`connectors, including the coaxial cable connectors disclosed by Matthews. I am
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`also of the opinion that a person of ordinary skill in the art would have recognized
`
`that the concepts taught by Aujla including the concept of employing a post having
`
`19
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`
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`a slotted flange with spring projections for maintaining electrical contact with a
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`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`port coupling element, would have been applicable to other connectors such as the
`
`connector disclosed by Matthews.
`
`30.
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`I am of the opinion that other industry participants also recognized the
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`desirability of a reliable alternate ground path extending through the port coupling
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`element and the post. See, e.g., Exs. 1007, 1008 at ¶¶ 11-17; Ex. 1009 at 1:29-2:8,
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`3:4-14; Ex. 1010 at 1:45-2:34, 5:11-16.
`
`B.
`31.
`
`Summary of the Examination History of the ‘338 Patent
`
`I understand that the ‘338 Patent issued on December 13, 2011, from
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`U.S. Patent Application Serial No. 12/906,503, filed on October 18, 2010 (“the
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`‘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:
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`
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`20
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`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
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`Fig. 2 of Spencer (Excerpt)
`
`32.
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`I understand the Examiner stated that the collet 1 having slots 7
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`disclosed by Spencer is a slotted post, and proposed modifying the flanged post of
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`Bence to have the slots 7 that radially extend through the entire thickness of the
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`wall of the collet 1 disclosed by Spencer. Ex. 1012.
`
`33.
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`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
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`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.
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`connector.” Id. at 12-14.
`
`34.
`
`I understand that in the Examiner’s 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.
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`21
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`Declaration of Ronald P. Locati
`Inter Partes Review of U.S. Patent No. 8,075,338
`
`36. My conclusions concerning the 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. Outside of this discussion, I do not make reference to Spencer. I am
`
`therefore of the opinion that the Examiner’s rationale for allowing the ‘503
`
`application is not applicable or relevant to the 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.
`
`In addition to Bence, this declaration relies on Matthews and Aujla,
`
`prior art references which were not relied upon by the Examiner during ex parte
`
`prosecution of the ’503 application.
`
`38. As discussed below in sections VII., my reasoning in this Declaration
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`relies on, inter alia, Bence’s disclosure of projections 1117 of the connector 1100
`
`depicted in Figs. 11-11D an