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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`APEX TOOL GROUP, LLC,
`Petitioner,
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`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`________________
`Case No. PGR2020-00056
`Patent 10,422,617
`________________
`__________________________________________________________
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`TABLE OF CONTENTS
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`B.
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`
`INTRODUCTION .......................................................................................... 1
`I.
`II. OVERVIEW OF PETITIONER’S GROUNDS AND SUMMARY OF
`REASONS TO DENY INSTITUTION ......................................................... 1
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 6
`IV. OVERVIEW OF PATENT OWNER MILWAUKEE TOOL’S
`INNOVATIVE TAPE MEASURE PROFILE DESIGNS ............................. 6
`V. OVERVIEW OF THE CLAIMS OF THE ’617 PATENT .......................... 11
`VI. CLAIM CONSTRUCTION ......................................................................... 12
`A.
`“a flat width” and “a curved width” (Terms 1 and 2) ........................ 15
`B.
`“a curved profile…the upper surface…the lower surface”
`(Terms 3 and 4) .................................................................................. 16
`VII. AAPA-BASED GROUNDS 1-3 FAIL BECAUSE THE RELIED-
`UPON CAWB 55 DEG DESIGN DOES NOT QUALIFY AS
`STATUTORY PRIOR ART ......................................................................... 27
`A.
`Petitioner’s Failure to Explain How the CAWB 55 Deg Design
`Was Publicly Disclosed is Fatal to Grounds 1-3 ................................ 28
`The CAWB 55 Deg Design Was Never Disclosed to the Public
`and Does Not Qualify as Statutory Prior Art ..................................... 30
`VIII. GROUNDS 4-5 FAIL BECAUSE CRAIG’S SINE-WAVE-SHAPED
`BLADE DOES NOT DISCLOSE THE CLAIMED “CURVED
`PROFILE,” AS PROPERLY CONSTRUED .............................................. 33
`IX. GROUNDS 6-8 FAIL BECAUSE MURRAY TEACHES AWAY
`FROM THE MODIFICATIONS PROPOSED IN THE PETITION ........... 35
`A.
`Petitioner’s Proposed Modification to Adjust Curved Width of
`Murray’s Blade is Undermined by Murray’s Own Teachings ........... 35
`Petitioner’s Proposed Modifications to Murray Introduce
`Additional Substantive Deficiencies .................................................. 41
`PETITION-WIDE FAILURE: THE TWO DIFFERENT CLAIMED
`RATIOS HAVE NOT BEEN SHOWN TO BE KNOWN RESULT-
`EFFECTIVE VARIABLES .......................................................................... 42
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`B.
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`X.
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`XI. DEPENDENT CLAIM-SPECIFIC DEFICIENCIES .................................. 45
`A. Grounds 4-5: Petitioner’s Challenges to Claims 8-10 Fail for
`Additional Reasons............................................................................. 45
`B. Grounds 3, 5, and 8: The Challenges to Claims 8-10 Based on
`Critelli Fail for Additional Reasons ................................................... 47
`XII. THE GROUND-SPECIFIC AND PETITION-WIDE DEFICIENCIES
`ARE ALL INCURABLE .............................................................................. 50
`XIII. CONCLUSION ............................................................................................. 51
`LISTING OF CLAIMS ........................................................................................... 52
`CERTIFICATION OF COMPLIANCE WITH TYPE-VOLUME LIMITS .......... 79
`CERTIFICATE OF SERVICE ............................................................................... 80
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`PATENT OWNER’S EXHIBIT LIST
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`Description
`Exhibit
`Ex. 2001 Declaration of Expert Witness Dr. Kimberly Cameron
`Ex. 2002 Declaration of Inventor Abhijeet A. Khanagar
`Ex. 2003 Canadian Woodworking & Home Improvement Website on Release
`of Certain of Milwaukee Electric Corporation’s Canadian Wide
`Blade (CAWB) Tape Measures in Canada
`Ex. 2004 Claim Construction Order from Case No. CDCA-8-03-cv-00655-60
`Ex. 2005 Claim Construction Order from Case No. DMN-0-13-cv-01287-155
`Ex. 2006 Dictionary Definition of “profile”
`Ex. 2007 Dictionary Definition of “such that”
`Ex. 2008
`Patent Office Assignment Record for Gilliam reference of Ex. 1013
`Ex. 2009 Milwaukee Tool Internal stand out issue analysis 8-May-2017
`Ex. 2010 Dr. Kimberly Cameron’s Curriculum Vitae (CV)
`Ex. 2011 Dr. Kimberly Cameron’s Testifying Experience
`Ex. 2012 Dictionary Definition of “define”
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner Milwaukee Electric Tool
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`I.
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`Corporation (“Patent Owner” or “Patent Owner Milwaukee Tool”) submits this
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`preliminary response to the petition (Paper 1, “Petition”) to demonstrate that
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`institution is wholly unwarranted. The Petition is fatally flawed because its eight
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`grounds fall well short of establishing a reasonable likelihood of success as to sole
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`independent claim 1. The Petition’s deficiencies range from (i) relying on alleged
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`AAPA that is not statutory prior art (Grounds 1-3); (ii) requiring claim
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`construction positions that mischaracterize the intrinsic record to make the Craig
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`reference relevant, when it clearly is not under proper constructions of the claim
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`terms (Grounds 4-5); and (iii) proposing a modification to Murray that Murray
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`teaches away from (Grounds 6-8).
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`In short, instituting would be a waste of the Board’s limited resources as the
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`Petition cannot succeed in demonstrating unpatentability as to the sole independent
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`claim, so there is no reasonable likelihood of success as to any of challenged
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`claims 1-11.
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`II. OVERVIEW OF PETITIONER’S GROUNDS AND SUMMARY OF
`REASONS TO DENY INSTITUTION
`Petitioner alleges the following eight grounds of unpatentability:
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`1
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`Ground Basis
`1
`§ 103
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`Petitioner’s References
`AAPA and general knowledge of skilled artisan
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`Claims
`1-11
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`§ 103
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`§ 103
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`AAPA, Rutty, general knowledge of skilled
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`artisan
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`AAPA, Critelli, general knowledge of skilled
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`artisan
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`6-7
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`8-10
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`§ 103
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`Craig and general knowledge of skilled artisan
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`1-11
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`§ 103
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`Craig, Critelli, and general knowledge of skilled
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`artisan
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`8-10
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`§ 103
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`Murray and general knowledge of skilled artisan 1-11
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`§ 103
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`§ 103
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`Murray, Rutty, and general knowledge of skilled
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`artisan
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`Murray, Critelli, and general knowledge of
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`skilled artisan
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`6-7
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`8-10
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`Grounds 1-3 allege that a CAWB 55 deg design discussed in the ’617 patent
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`is AAPA, and rely on it as the “primary reference.” While Petitioner is correct that
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`Table 3 in the ’617 patent includes the label “Prior Art 2 (CAWB 55 deg),” that
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`label alone is legally insufficient to establish that the CAWB 55 deg design
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`qualifies as statutory prior art. As explained by the Federal Circuit, “[i]t is
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`common sense that an inventor, regardless of an admission, has knowledge of his
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`own work,” but “his foundational work product should not, without a statutory
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`basis, be treated as prior art solely because he admits knowledge of his own
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`work.” Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748
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`F.2d 645, 650 (Fed. Cir. 1984); see also MPEP § 2129 (“However, even if labeled
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`as “prior art,” the work of the same inventive entity may not be considered prior
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`art against the claims unless it falls under one of the statutory categories.”).1
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`Here, the CAWB 55 deg design was Patent Owner’s prototype design, and it was
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`not publicly disclosed, as explained by an inventor of the ’617 patent and project
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`leader for the CAWB 55 deg design. Ex. 2002; see also infra Section VII. For this
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`reason alone, the AAPA-based Grounds 1-3 should be rejected.
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`Grounds 4-5 rely on Craig as a primary reference, but Craig does not
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`disclose “a curved profile” under the proper construction of that term. The curved
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`profile must have a “concave upper surface” and a “convex lower surface” on the
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`entire elongate tape measure blade, not on some lesser portion thereof as Petitioner
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`proffers. Infra Section VI.B. Because Craig’s blade has a sine-wave shape (i.e., it
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`has both concave and convex curves on its upper surface), Craig’s blade is not
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`relevant to the claimed tape measure, which has a curved profile across the entire
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`1 All emphasis in quotations and highlighting in figures has been added, unless
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`explicitly indicated otherwise.
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`elongate blade. Infra Section VIII. As such, the Board should reject Petitioner’s
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`flawed claim constructions and also reject the grounds relying thereon—Craig-
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`based Grounds 4-5.
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`Grounds 6-8 rely on modifying Murray, the primary reference. However,
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`Murray teaches away from the exact modification proposed by Petitioner.
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`Petitioner argues that Murray’s tape measure would be “routinely optimized” to
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`have a taller and narrower tape measure blade. But that argument is untenable in
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`view of Murray’s explicit teaching that making a taller and narrower blade would
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`create a less readable blade and that doing so would be commercially impractical.
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`Put simply, Murray explicitly addressed Petitioner’s proposed modification and
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`rejected it. Ex. 1010, 7:45-50 (“the blade height H to be increased without
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`increasing the overall blade curvature to a degree that would make reading the
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`gradations and lettering printed on the concave surface of the blade 16
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`difficult.”). As such, Petitioner’s proposed modification of Murray is contradicted
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`by Murray. Infra Section IX. The Board should thus reject Petitioner’s Murray-
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`based Grounds 6-8.
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`Finally, Grounds 1-8 also fail because of an additional Petition-wide defect.
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`The Petition asserts that “degree of curvature” was a result-effective variable
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`(Petition, 29) and that “the flat width is result-effective” (id., 37). In general, the
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`Petition argues that a person having ordinary skill in the art would have known that
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`increasing the degree of curvature of a blade or increasing the flat width of the
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`blade would result in greater standout distance. These assertions are insufficient to
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`undermine the challenged claims, because “degree of curvature” is not recited in
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`the claims, and “flat width” is only one of the numerical limitations of the claims.
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`Claim 1 actually recites a blade that is capable of meeting two ratios: (1) “a ratio
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`of the curved width to the flat width [] less than 0.8” and (2) “a ratio of curved
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`height to flat width [] greater than 0.24.” Ex. 1001, claim 1; see also infra p. 52
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`(listing of claims). The Petition fails to assert, let alone prove, that these claimed
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`ratios were known result-effective parameters. Infra Section XI.
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`As such, Petitioner’s arguments related to result-effective variables should
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`be ignored as irrelevant because the Petition fails to address the claimed ratios.
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`See General Electric Co. v. Raytheon Tech. Corp., IPR2020-00346, Paper 9 at 22
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`(PTAB June 23, 2020) (denying institution and explaining that “Petitioner must
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`demonstrate that the ratio was recognized to be a result-effective parameter, not
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`simply that the numerator (OD) and the denominator (D) were each known
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`separately to be result-effective variables”). For this additional reason, Grounds 1-
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`8 also fail and should all be rejected by the Board.
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`In summary, Petitioner has not shown a reasonable likelihood of success as
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`to any claim in any of Grounds 1-8. Patent Owner respectfully requests the Board
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`to deny institution.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`Even under Petitioner’s definition of the level of ordinary skill in the art
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`(Petition, 14-15), Petitioner’s challenges fail to establish a reasonable likelihood of
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`prevailing as to any claim of the ’617 patent. As such, and for the purposes of this
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`Preliminary Response only, Patent Owner does not offer a competing definition of
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`the level of ordinary skill in the art and reserves the right to do so in the unlikely
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`event that the Board institutes review.
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`Patent Owner refers to a person of ordinary skill in the art as a “PHOSITA.”
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`IV. OVERVIEW OF PATENT OWNER MILWAUKEE TOOL’S
`INNOVATIVE TAPE MEASURE PROFILE DESIGNS
`Consistent with Patent Owner Milwaukee Tool’s established reputation for
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`delivering innovative products, the ’617 patent reflects a significant engineering
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`undertaking to identify tape measure blade profiles resulting in improved
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`performance, including improved standout distances. As the ’617 patent explains,
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`with reference to Figure 4, standout distance is “the maximum length, L1, of tape
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`blade 14 that can be extended from tape housing 18 when the tape housing 18 is
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`positioned such that the tape blade exits the housing in a direction perpendicular to
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`gravity while self-supporting its own weight without buckling and without
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`additional support being provided other than what the tape measure housing itself
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`provides (e.g., without the tape blade being supported by the user’s hand).” Ex.
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`1001, 7:55-63; see also id., Figure 4 (reproduced below).
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`There has been a long-felt need in the market for tape measures with an
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`improved standout distance, which Petitioner acknowledges. Petition, 1.
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`However, Petitioner oversimplifies the engineering challenges necessary to create
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`a tape measure with improved standout distances without also (i) altering retraction
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`torque requirements, (ii) negatively impacting readability of the measurement
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`indications on the blade, and/or (iii) using expensive or exotic materials. Ex. 2001,
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`¶ 23. Patent Owner spent years working on these engineering challenges, and
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`ultimately solved these problems with its innovative tape measures. The ’617
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`patent describes these innovations.
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`Indeed, the ’617 patent explains that it worked against “conventional
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`wisdom” by achieving tape blade profiles that “provide a combination of increased
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`standout[,] lower retraction torque and/or increased readability, while maintaining
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`a relatively low thickness tape blade.” Ex. 1001, 5:9; see also id., 15:3:9
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`7
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`(reiterating that the inventors of the ’617 patent worked “in contrast to this
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`conventional wisdom” and “unexpectedly discovered a variety of tape blade widths
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`and curvatures that provide for increased standout (for a tape blade of a given
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`thickness) without substantially altering the increasing torque that needs to be
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`delivered by the retraction system to rewind the spring.”); Ex. 2001, ¶ 23.
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`The data in the ’617 patent illustrates how Patent Owner was able to achieve
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`these results as compared to the failure of others to meet this long-felt need with
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`existing blade profile designs. Id., ¶ 24. For example, Table 1 compares Patent
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`Owner’s innovative designs A, B, and C (data highlighted in yellow below) to
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`existing tape measure designs, which are identified in the last three rows of Table 1
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`(data highlighted in purple below).2
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`2 Table 1 also includes Milwaukee Tool’s tape measures that were commercially
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`available at that time. These tape measures do not meet many of the claim
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`limitations of the challenged claims and are not relied on as prior art in Petitioner’s
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`Grounds 1-8. As such, they are not discussed in detail herein.
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`Patent Owner’s innovative designs (i.e., A-C) have blades with a narrower
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`flat width and thinner steel thickness than the prior art designs in Table 1, yet
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`utilize Patent Owner’s inventive tape blade profile designs to achieve increased
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`standout distances and decreased droop as compared to existing tape measure
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`designs. Ex. 2001, ¶ 24-25. This is contrary to conventional wisdom because it
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`was previously believed that bigger tape blades (i.e., wider flat width and greater
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`thickness) were necessary to decrease droop and increase standout. Id., ¶ 25.
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`However, Patent Owner’s innovative designs do not follow this conventional
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`wisdom. They have smaller blades than the competitor prior art designs in Table 1
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`(i.e., flat width of 30 mm compared to 31.75 mm, and a thickness of 0.11 mm
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`compared to 0.13 mm), yet they have less droop (i.e., about 20-25 inches compared
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`to 28-33 inches) and more standout (i.e., about 156-164 inches compared to 138-
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`149 inches). Id., ¶ 26.
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`Additionally, for the first time in this field, the ’617 patent identified the
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`blade-dimension ratios that should be maintained to achieve these advantageous
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`results, including (i) a ratio of curved height to flat width, (ii) a ratio of curved
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`height to steel thickness, (iii) a ratio of curved width to flat width, and (iv) a ratio
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`of blade angle to flat width. See, e.g., Ex. 1001, Table 2 (13:34-60); see also Ex.
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`2001, ¶ 26.
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`These innovations are reflected in the claims of the ’617 patent. In
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`particular, the claims recite appropriate blade dimensions and ratios between these
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`dimensions (i.e., ratio of curved width to flat width and ratio of curved height to
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`flat width). Ex. 1001, claim 1; see also id., claims 2-3 and 10 (also reciting ratio of
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`curved height to steel thickness T1). Patent Owner’s careful balance of
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`determining the right blade dimensions (e.g., to keep material costs down and to
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`reduce the size the tape measure) while also maintaining necessary ratios between
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`these dimensions, allowed Patent Owner to create a new tape measure with less
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`droop and more standout. Ex. 2001, ¶¶ 19-27.
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`V. OVERVIEW OF THE CLAIMS OF THE ’617 PATENT
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`As it relates to the Petition, many of the limitations of the ’617 Patent’s
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`claims recite surfaces, dimensions, and calculated ratios of an elongate blade of a
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`tape measure. The elongate blade has two primary surfaces: an upper surface (e.g.,
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`where markings are typically printed) and an opposing lower surface. These upper
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`and lower surfaces are described as having a particular geometric shape, i.e., the
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`upper surface is “the concave upper surface” in the patent, and the lower surface is
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`“the convex lower surface” in the patent. Ex. 1001, 6:41-43. In other words, the
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`upper surface of the elongate blade is concave (i.e., having a surface that curves
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`inward like the interior of a circle), and the lower surface of the elongate blade is
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`convex (i.e., having a surface curved like the exterior of a circle).
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`The elongate blade, and its upper and lower surfaces, can be viewed from a
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`variety of angles. For example, the elongate blade can be viewed from the top or
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`bottom, or via an isometric perspective. The elongate blade can also be viewed in
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`profile (i.e., a cross-sectional view). Viewing the elongate blade in profile depicts
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`an outline of the entire elongate blade, including its concave upper surface and
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`convex lower surface.
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`The patent includes numerous cross-sectional views showing the profile of
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`such elongate blades. For example, Figure 14 (below) depicts a profile of an
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`elongate blade. This figure identifies the curved width (labelled as “total width”)
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`and the curved height (labelled as “total height”) of the elongate blade. Ex. 2001, ¶
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`21. It also identifies various sections of the profile, including a curve with one
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`radius (labelled as the “center curvature area”) and two other curves with a
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`different radius than the center curve (labeled as the “edge curvature areas”).
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`Ex. 1001, Figure 14.
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`VI. CLAIM CONSTRUCTION
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`Petitioner proposes construing four terms: (1) “a flat width”; (2) “a curved
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`width,” (3) “the upper surface …”; and (4) “the lower surface …” Petition, 15-25.
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`For terms 1 and 2, Petitioner argues that these refer to the width of the entire
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`elongate blade, yet for terms 3 and 4, Petitioner takes the opposite position that
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`only a portion of the width of the elongate blade is pertinent, i.e., that only a
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`portion of the elongate blade’s upper (or lower) surfaces need to be concave (or
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`convex), respectively. Petition, 16 (“The entire lower surface is not required to be
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`convex” and “the entire upper surface is not required to be concave.”). Petitioner’s
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`need for these conflicting constructions is transparent—to sweep the sine-wave-
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`shaped tape measure blade of Craig within the scope of the challenged claims. The
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`challenged claims, however, are directed to a generally U-shaped blade profile.
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`Specifically, the claims state that “the elongate blade” comprises a “curved profile
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`such that the upper surface of the elongate blade defines a concave surface and the
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`lower surface defines a convex surface.” Ex. 1001, claim 1; see also id., Figure 14
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`(above).
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`Unlike the challenged claims, Craig’s blade has a concave curve (trough 9 of
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`Craig’s blade 2, shown below) and two convex curves (peaks 7 of Craig’s blade 2,
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`shown below) on the upper surface of the tape measure blade. Compare Ex. 1009,
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`Figure 4 (below) with Ex. 1001, Figure 14 (below).
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`Ex. 1009, Figure 4 (showing Craig’s sine-wave-shaped blade).
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`Ex. 1001, Figure 14 (showing the ’617 patent’s generally U-shaped blade).
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`Because Craig’s sine-wave-shaped blade is so different than the ’617
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`patent’s generally U-shaped blade, Petitioner argues that the Board should adopt
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`constructions that shoehorn Craig’s sine-wave-shaped blade within the scope of the
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`claims. Petitioner’s position requires accepting its inconsistent arguments that the
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`same elongate blade in claim 1 sometimes refers to the width of the entire elongate
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`blade (for the “curved width” and “flat width” terms) and at other times only refers
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`to a portion of the width of the same elongate blade (for the “curved profile” term).
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`The Board should not accept such inconsistencies, especially because Petitioner’s
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`construction for “curved profile” has no support in either the intrinsic or extrinsic
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`evidence. As a result, Craig’s sine-wave-shaped tape measure blade is not relevant
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`to the challenged claims, and the Board should reject Petitioner’s attempt to wish it
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`so with its flawed claim constructions.
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`“a flat width” and “a curved width” (Terms 1 and 2)
`A.
`In the interest of narrowing the disputed issues, Patent Owner agrees that the
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`Petition’s constructions of “a flat width” and “a curved width” are consistent with
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`the intrinsic evidence. For both terms, the Petition acknowledges that these terms
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`are related to “the elongate blade comprising,” and then argues that because of
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`this, (i) “the flat width recited in the claim is the flat width of the entirety of the
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`blade” (Petition, 22) and (ii) “the relevant curved width is the curved width of the
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`entire elongate blade” (id., 23). Construing these terms to refer to the entire width
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`of the elongate blade is consistent with the intrinsic evidence. As such, Patent
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`Owner agrees with these constructions.
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`B.
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`“a curved profile…the upper surface…the lower surface” (Terms
`3 and 4)
`Patent Owner does not agree with Petitioner’s constructions of “upper
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`surface” and “lower surface,” because those constructions are not supported by the
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`intrinsic evidence and are inconsistent with Petitioner’s construction for terms 1
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`and 2. The Petition’s focus on “upper surface” and “lower surface,” and its
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`inclusion of a negative limitation, removes these terms from their proper context as
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`part of the “curved profile” limitation in claim 1. Just like the “flat width” and
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`“curved width” terms discussed above, the “curved profile” also refers to “the
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`elongate blade comprising,” as shown in claim 1 below:
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`1. A tape measure comprising:
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`a housing;
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`a tape reel rotatably mounted within the housing;
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`an elongate blade wound around the reel, the elongate blade comprising:
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`an upper surface;
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`a lower surface;
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`a curved profile such that the upper surface of the elongate blade
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`defines a concave surface and the lower surface defines a convex surface;
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`a flat width greater than or equal to 29 mm and less than 32 mm;
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`a curved width between 20 mm and 23 mm;
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`…
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`Ex, 1001, Claim 1.
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`Thus, just like Petitioner’s constructions for other component parts of the
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`elongate blade, the “curved profile” also refers to the width of the entire elongate
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`blade, not only a portion of it, as Petitioner argues with its negative limitation. The
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`disputed constructions for “curved profile” are summarized below:
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`“A curved profile such that the upper surface of the elongate blade defines a
`concave surface and the lower surface defines a convex surface”
`Petitioner’s Proposed Construction
`Patent Owner’s Proposed Construction
`The upper surface of the elongate blade
`must make or form a concave surface.
`The entire upper surface is not required
`to be concave. Petition, 15.
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`The lower surface of the elongate blade
`must form a convex surface. The
`entire lower surface is not required to
`be convex. Petition, 16.
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`“an outline of the curved width of the
`entire elongate blade that results in (i) a
`concave upper surface and (ii) a
`convex lower surface”
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`The parties agree that these terms refer to the width of the elongate blade.
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`The parties’ primary dispute centers on one aspect of these terms. Petitioner
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`argues that only a portion of the upper/top surface needs to be concave and that
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`only a portion of the lower/bottom surface needs to be convex (Petition 15-16),
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`while Patent Owner (and the claim itself) explains that curved profile refers to the
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`entire elongate blade where the upper/top and lower/bottom surfaces, respectively,
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`have concave and convex surfaces. In short, the entire elongate blade is concave
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`or convex, and not only some undefined portion of the elongate blade.
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`The claim language supports Patent Owner’s construction. Indeed, Patent
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`Owner’s construction of “curved profile” as “an outline of the curved width of the
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`entire elongate blade that results in (i) a concave upper surface and (ii) a convex
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`lower surface” properly accounts for the upper and lower surfaces being part of the
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`recited “curved profile” of the elongate blade. Patent Owner’s construction also
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`accounts for the recited “curved profile” referring to the entire elongate blade
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`because it is part of “the elongate blade comprising” (i.e., “the” refers to the earlier
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`antecedent of “an elongate blade wound around the reel”), and not only a portion
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`of that elongate blade.
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`Petitioner agrees that the same claim language of “the elongate blade
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`comprising: …” requires construing the “flat width” and “curved width” terms to
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`refer to the entire width of the elongate blade, as explained above (supra Section
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`VI.A). By Petitioner’s own logic, the “curved profile” term must also refer to the
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`width of the entire elongate blade. Instead of following its own logic, Petitioner
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`seeks to read the phrase “curved profile” out of the claims by arguing that the
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`“entire upper surface is not required to be concave” and that the “entire lower
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`surface is not required to be convex.” Petition, 15-16. In an attempt to support this
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`position, Petitioner focuses on Figure 6 of the ’617 patent. Specifically, Petitioner
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`alleges that Figure 6 (Petitioner’s annotation shown below in red) depicts both a
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`concave and a convex curve on the upper surface of the blade, and thus the claims
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`must be construed to cover a blade where only a portion of the upper surface is
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`concave. Petition, 17-18.
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`Id., 18 (Figure 6 of patent with red annotations added by Petitioner).
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`Petitioner’s annotations of Figure 6 (in red above) identifying alleged
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`convex portions are demonstrably wrong, which is one of the five reasons
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`explained below for rejecting Petitioner’s claim construction position.
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`First, the patent explains that Figure 6 is an exaggerated view of the profile
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`of a blade. It does not show the actual curved profile of a blade. Ex. 2001, ¶¶ 30-
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`33. Instead, this exaggerated view shows a compound surface with more than one
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`concave curve (i.e., at least one curve in the middle with a small radius and at least
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`one other curve formed at the edges with a larger radius). In particular, the
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`specification explicitly states that in Figure 6 “the relative position between the
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`central section 122 of profile 120 and the widthwise outer sections 124 of profile
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`120 is exaggerated to better demonstrate the shape of profile 120,” and then states
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`that “profile 120 is not a continuous curve.” Id., 10:63-66. The specification goes
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`on to explain that “the upper surfaces of outer sections 124 have a greater radius of
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`curvature than central section 122.” (Ex. 1001, 11:1-2).
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`As such, Figure 6 is an exaggerated view of the actual curved profile of the
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`blade, and it is merely intended to show that this blade comprises multiple concave
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`curves, each with a different radius, along the upper surface. Ex. 2001, ¶¶ 30-33.
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`The patent never describes any curve of the upper surface of Figure 6 as a convex
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`curve. Figure 6 merely confirms that the entire curved profile 120 can be formed
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`of multiple concave curves (i.e., a compound curve) as opposed to a single
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`continuous concave curve (i.e., a simple curve).
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`In addition to Figure 6, the specification also includes numerous other
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`figures that undermine Petitioner’s argument that Figure 6 depicts a blade having
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`an upper surface that is both concave and convex. Ex. 2001, ¶¶ 34-37. Figure 5
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`depicts the same curved profile 120 as Figure 6. However, Figure 5 depicts the
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`actual shape of the curved profile and is not exaggerated as it was in Figure 6.
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`These two figures are repoduced below.
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`Id., Figures 5-6. Figure 5 confirms that the upper surface of the curved profile 120
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`of the elongate blade forms a concave upper surface with no convex curves. Ex.
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`2001, ¶ 34.
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`Other figures in the patent confirm that the curved profile of the elongate
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`blade forms a concave upper surface with no convex curves. See, e.g., Figure 14
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`(below).
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`Patent Owner’s Preliminary Response
`Patent No. 10,422,617 – PGR2020-00056
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`Ex. 1001, Figure 14; see also id., 4:18-19 (describing Figure 14 as showing “an
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`exemplary tape blade profile labeling the various dimensions listed in Table 3.”).
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`Similar to Figures 5 and 6, Figure 14 also depicts two edge areas and a
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`center curvature area. Unlike Figure 6, Figure 14 does not exaggerate the junction
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`between these areas. As such, Figure 14 further confirms that there is no convex
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`curve on any por