Final Written Decision IPR2013-00229

Finding All Challenged Claims (1-13 and 1618) Unpatentable
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Takeaway: Pursuant to 37 C.F.R. § 42.6(a)(3), a party involved in a proceeding before the Board is forbidden from incorporating arguments from one document (e.g., a Preliminary Response) into another document (such as the Patent Owner Response).

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that claims 1-13 and 16-18 of the ’094 patent were unpatentable. Petitioner had requested inter partes review of claims 1-13 and 16-18 of the ’094 patent, which relates to “connector assemblies with a sleeve . . . to facilitate gripping and mating of a connector to its counterpart connector.”

The Board began by noting that it had previously provided, in its Decision to Institute, a construction for a number of terms. The parties did not directly dispute the Board’s initial constructions during trial. However, in reviewing Patent Owner’s arguments regarding alleged differences between the prior art and the challenged claims, the Board determined that the scope of the term “sleeve” was in dispute.

In instituting trial, the Board had “construed ‘sleeve’ to mean ‘an encasement into which an object fits.’” Patent Owner argued that the sleeve must “enclose the first and second ends of the connector,” for it to be an encasement. Patent Owner submitted a dictionary definition of the word “encasement,” even though the term was not recited in the claims. Accordingly, Patent Owner argued that the sleeve must enclose the part of the connector that has the mechanism for terminating the cable. However, the Board found that there was not support in the claim language for this interpretation. Specifically, the Board was not persuaded that just because the second end is configured to terminate a cable, the “sleeve” must enclose the termination. Further, the Board determined that the specification confirms its interpretation.

The Board was persuaded by a preponderance of the evidence that claims 1, 3-5, 7, 8, 10, and 16-18 are anticipated by Smith. The Patent Owner argued that Smith did not disclose the “sleeve” limitation based on its claim interpretation. However, based on the claim interpretation adopted, the Board determined that this limitation was also disclosed in Smith.

The Board was persuaded by a preponderance of the evidence that claims 1-13 and 16-18 are rendered obvious over Burris combined with common knowledge or over Burris combined with Smith. Petitioner’s and Patent Owner’s declarants differed on their understanding of what a person of ordinary skill in the art would have understood with regard to the structure and function of the rib in Burris. Petitioner’s declarant explained that the known problem of losing parts of a connector would have motivated one of ordinary skill to recognize that the rib depicted in Burris as a solution. Patent Owner’s declarant opined that the rib was intended only as support for thin walls to avoid collapse. The Board concluded that even though the function of the rib in Burris was for providing support, it was known to include such a structure in the inner bore of a “sleeve,” and that other motivations could also be found.

The Board further analyzed Patent Owner’s evidence of commercial success. The Board agreed that Patent Owner failed to show sufficient evidence of nexus. Specifically, the Board found that the evidence of a demand for the product centered around a feature that shown to be known in the prior art. The Board stated that because the alleged commercial success is due to an element in the prior art, no nexus exists.

PCT International, Inc. v. Amphenol Corporation, IPR2013-00229
Paper 30: Final Written Decision
Dated: September 11, 2014
Patent 7,544,094 B1
Before: Brian J. McNamara, James B. Arpin, and Miriam L. Quinn
Written by: Quinn