General Plastic Industrial Co., Ltd.v.Canon Kabushiki Kaisha

Patent Trial and Appeal Board

Mar 9, 2016

14532438 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper No. 9
571-272-7822 Entered: March 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GENERAL PLASTIC INDUSTRIAL CO., LTD.,
Petitioner,

v.

CANON KABUSHIKI KAISHA,
Patent Owner.
____________

Case IPR2015-01966
Patent 9,046,820 B1
____________

Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a) and 37 C.F.R. § 42.108

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I. INTRODUCTION
General Plastic Industrial Co., Ltd., (hereafter “General Plastic” or
“Petitioner”) filed a Petition (“Pet.”) requesting an inter partes review of claims 1,
7–9, and 16 of U.S. Patent No. 9,046,820 B1 (“the ’820 patent,” Ex. 1001). Paper
2. Canon Kabushiki Kaisha (hereafter “Canon” or “Patent Owner”) timely filed a
Preliminary Response (“Prelim. Resp.”). Paper 6.
We have authority under 35 U.S.C. § 314(a), which provides that an inter
partes review may not be instituted unless the information presented in the Petition
shows “there is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.” Taking into account
Canon’s Preliminary Response, and for the reasons that follow, we conclude that
the information presented in the Petition does not establish that there is a
reasonable likelihood that General Plastic will prevail in challenging claims 1, 8, 9,
and 16 as anticipated under 35 U.S.C. § 102(b), or claims 1, 7–9, and 16 as
unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we hereby
decline to authorize an inter partes review of the ’820 patent.
II. BACKGROUND
A. Related Matters
According to the parties, the ’820 patent is involved in the following
investigation, which was instituted at the U.S. International Trade Commission: In
the Matter of Certain Toner Supply Containers And Components Thereof, Inv. No.
337-TA-960 (U.S. Int’l Trade Comm’n). Pet. 2; Paper 5, 2.
In addition to this Petition, General Plastic filed another petition in Case
IPR2015-01954 challenging the patentability of a certain subset of claims in U.S.
Patent No. 8,909,094 B2 owned by Canon.
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B. The ’820 Patent
The ’820 patent, titled “Sealing Member, Toner Accommodating Container
and Image Forming Apparatus,” issued June 2, 2015, from U.S. Patent Application
No. 14/532,438, filed on November 4, 2014. Ex. 1001, at [54], [45], [21], [22].
The ’820 patent relates to addressing engagement problems associated with
known toner supply containers used with image forming apparatuses such as
copying machines, printers, and facsimile machines. Ex. 1001, 1:27–30, 2:7–62.
A toner supply container is placed inside the main assembly of the image forming
apparatus, and it gradually supplies the toner through a small opening to avoid
scattering of the toner. Id. at 1:45–49. The toner supply container of the invention,
such as a toner bottle, is generally cylindrical and one end has center opening 1a,
which is plugged with a sealing member, where opening 1a is unsealed and
resealed automatically by the sliding motion of sealing member 2 relative to toner
bottle 1 in the longitudinal direction of the toner body. Id. at 9:24–34. Toner
bottle 1 has an inside projection 1c that extends helically, and as the toner bottle
rotates, the toner is fed in the axial direction along the helical projection, and
discharged through opening 1a. Id. at 9:51–59. When the toner supply container is
installed in an image forming apparatus, the opening is unsealed, and then when
the apparatus is being used, the toner supply container is rotated. Id. at 7:62–8:22.
Fig. 8 of the ’820 patent is reproduced below.
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Figure 8 is a partly broken perspective view of a toner supply container
according to an embodiment of the invention. Ex. 1001, 3:58–60.

At the free end of sealing member 2 depicted in Figure 8, there is a
cylindrical portion that has engaging projection 3 and releasing force receiving
portion 4 for disengaging from a driving portion. Ex. 1001, 9:35–38. Further
detail on the sealing member indicates that it has two parts, sealing portion 2b,
where the sealing portion fits within opening 1a to seal the toner in the toner bottle,
and coupling portion 2c. Id. at 11:9–18, 11:51–53. Figure 14, reproduced below,
presents more detail on sealing member 2 and driving portion 20.
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Figure 14 is a perspective view of a driving force
transmitting portion and a driving force receiving portion
according to an embodiment of the invention. Ex. 1001,
4:11–13.

In the embodiment depicted in Figure 14, sealing member 2 has coupling
engagement portion 2c that functions as the drive receiving member to receive the
driving force from driving force transmitting portion 20. Ex. 1001, 14:1–5. In
coupling engagement portion 2c, the engaging projections 3 are elastically
deformable to engage when pressed into driving portion 20. Id. at 14:7–13.
Driving portion 20 has engaging rib 20a for rotating toner bottle 1, by transmitting
the rotational driving force to the sealing member after the engaging projection is
engaged with locking hole 20h. Id. at 14:27–31.
C. Illustrative Claim
Of the challenged claims, claims 1 and 16 are independent claims. Claims
7–9 depend directly or indirectly from claim 1. Claim 1 is illustrative of the
invention and is reproduced below:
1. A toner supply container comprising:
i) a container body configured to contain toner and rotatable about an axis thereof,
the container body including a cylindrical portion and an opening provided at one
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axial end portion thereof and configured to permit discharge of the toner
contained in the container body; and
ii) a sealing member provided at the one axial end portion of the container body,
the sealing member being movable relative to the container body in an axial
direction of the container body, the sealing member including:
ii-i) a sealing portion provided at a side adjacent the container body and
configured to seal the opening when the sealing member and the container
body are in a first position relative to one another, the opening becoming
unsealed by relative movement of the sealing member and the container body
away from one another from the first position to a second position relative to
one another; and
ii-ii) a coupling portion provided at a side remote from the container body and
configured and positioned to receive a rotational drive force for rotating the
sealing member and the container body about the rotation axis of the
container body, the coupling portion including:
ii-ii-i) a supporting portion provided on the sealing portion, the
supporting portion being elastically displaceable in an inward direction
toward the rotation axis of the container body and elastically restorable
in an outward direction away from the rotation axis of the container
body;
ii-ii-ii) an engaging portion provided at a free end of the supporting
portion and being displaceable with the supporting portion, the
engaging portion including:
ii-ii-ii-i) a rotational force receiving portion capable of being
abutted in a direction that is concentric with a circumference of
the cylindrical portion of the container body to receive a
rotational drive force for rotating the sealing member and the
container body; and
ii-ii-ii-ii) a locking portion capable of being abutted in a direction
parallel to the rotation axis of the container body to enable the
relative movement of the sealing member and the container body
from the first position, in which the opening is sealed, to the
second position, in which the opening is unsealed; and
ii-ii-iii) a displacing force receiving portion provided on the
supporting portion at a position closer to the container body than
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the engaging portion, the displacing force receiving portion
being displaceable with the supporting portion and having a
radially outermost part that is more remote from the rotation axis
of the container body than a radially outermost part of the
engaging portion,
wherein a radially outermost part of the container body is more remote from
the rotation axis of the container body than the radially outermost part of the
displacing force receiving portion.

Ex. 1001, 24:5–61.

D. Prior Art Relied Upon
General Plastic relies upon Matsuoka, U.S. Patent 5,903,806, issued on May
11, 1999, as the prior art reference. Pet. 16; Ex. 1006.

E. Alleged Grounds of Unpatentability
General Plastic challenges claims 1, 7–9, and 16 of the ’820 patent based on
the alleged grounds of unpatentability set forth in the table below. Pet. 16–17.
Reference Basis Claims Challenged
Matsuoka § 102(b) 1, 8, 9, and 16
Matsuoka § 103(a) 1, 7–9, and 16

III. ANALYSIS
A. Claim Interpretation
Consistent with the statute and legislative history of the Leahy-Smith
America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011), the Patent
Trial and Appeal Board (“Board”) construes claims by applying the broadest
reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); see In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015); cert.
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granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW. 3218 (U.S. Jan.
15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard,
claim terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art, in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
The parties offer constructions for three claim terms or phrases. Pet. 18–24;
Prelim. Resp. 18–29. We, however, need only assess the parties’ proposed
constructions for the claim phrases directed to “the sealing member” and “a sealing
portion” because they are necessary to resolve the dispositive issues discussed
below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to
be construed, and only to the extent necessary to resolve the controversy).
Claims 1 and 16 contain the limitations “the sealing member being movable
relative to the container body in an axial direction of the container body,” and “a
sealing portion … configured to seal the opening when the sealing member and the
container body are in a first position relative to one another, the opening becoming
unsealed by relative movement of the sealing member and the container body away
from one another from the first position to a second position relative to one
another.”1 The parties have differing views on the construction of these phrases, as
summarized below:

1 General Plastic identifies a more truncated portion of the claim limitation
“a sealing portion … configured” as part of its proffered construction. See Pet. 19–
22. We do not discern any material differences to the claim construction analysis
herein because we base it upon a more complete version of the claim term.
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Terms General Plastic’s Proposed
Construction
Canon’s
Proposed
Construction
“the sealing member
being movable relative to
the container body in an
axial direction of the
container body” and “a
sealing portion …
configured to seal the
opening when the sealing
member and the
container body are in a
first position relative to
one another, the opening
becoming unsealed by
relative movement of the
sealing member and the
container body away
from one another from
the first position to a
second position relative
to one another.”
Option 1 - the sealing member can
move axially relative to the
container body, and the sealing
portion is moveable from a first
position sealing the container
body’s opening to a second
position unsealing the container
body’s opening; or

Option 2 - the sealing member
can move axially relative to the
container body, and when the
sealing portion is in a first
position sealing the container
body’s opening, an axial end of
the container body can relatively
move away from an axial end of
the seal member so as to displace
the sealing portion into a second
position unsealing the container
body’s opening. Pet. 20.
plain and
ordinary
meaning.
Prelim. Resp.
20–21.

In support of its first proposed construction option, General Plastic identifies
that when the toner body is not within a copier the toner’s bottle opening 1b is
intended to be sealed, and the preamble of claims 1 and 16 recite only a “a toner
supply container” and not a copier. Pet. 21. General Plastic notes that this is
consistent with Canon’s modifications to the claims during prosecution, which
cancelled any recitations to an image forming apparatus, such as a copier. Id.
Based upon this, General Plastic argues that the “relative movement” limitation is
directed to the manner in which the toner supply container is to be used in the
copier, not its structure. Id. at 22. As such, General Plastic advocates that the
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“relative movement” limitation should be disregarded in the construction of the
phrases at issue. Id.
General Plastic argues as its second alternative construction that the claim
limitation should be construed to require that an axial end of the container body
relatively moves axially away from an axial end of the sealing member. Id. at 22.
General Plastic alleges that the proposed construction is supported by the ’820
patent specification, pointing to Figures 7(B) and 7(C) of ’820 patent where “the
copier 100 moves the toner bottle 1 axially away from now the axially-stationary
sealing member 2.” Id. at 20, 22.
Canon advocates that the plain and ordinary meaning of the claim terms
should be used, and General Plastic’s proposed constructions impermissibly omit
or alter the claim limitations at issue. Prelim. Resp. 20, 22. Canon asserts that the
embodiment that General Plastic refers to in Figures 7(B) and 7(C) also would
support that the sealing member is fixed and the toner body moves away from it, so
that embodiment does not provide a reason to depart from the plain and ordinary
meaning of the aforementioned claim phrases. Id. at 23–24. Additionally, Canon
acknowledges that the claims at issue are directed to a toner supply container only,
but asserts that the “relative movement” limitation cannot be disregarded because it
represents a “meaningful structural limitation that describes how the container
elements are configured to move in relation to each other.” Id. at 24.
For the first proposed construction, we agree with General Plastic that claim
language that suggests or makes optional, but does not require, steps to be
performed does not limit a claim to a particular structure. However, functional
apparatus claim recitations are afforded weight in that the corresponding structures
must possess the capability of performing the recited function. See In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997). Here, the claim term requires that the
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“sealing portion” must have the structure that is “configured to seal” in the manner
claimed. Therefore, we determine that the “relative movement” limitation as
recited in claims 1 and 16 cannot be disregarded because it is directed to the
required configuration of the apparatus structure.
For the second proposed construction, General Plastic adds “axial ends” of
components to the claim term, without providing a rationale for doing so, except
that one of the embodiments would support its revisions. We find, however, that
Canon’s assertion that the same embodiment also would support the construction
of the claim phrases as written also is correct.
There is a presumption that a claim term carries its ordinary and customary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002). The ’820 patent does not provide a special definition for the claim phrases
at issue, and on this record, we have not been persuaded that we should adopt a
meaning for these terms that varies from the ordinary and customary meaning.
Therefore, for purposes of this decision, we adopt the ordinary and customary
meaning of these claim phrases as would be understood by one of ordinary skill in
the art in the context of the ’820 patent. See Translogic, 504 F.3d at 1257.
B. Alleged Anticipation of Claims 1, 8, 9, and 16 by Matsuoka

General Plastic contends that claims 1, 8, 9, and 16 are anticipated under 35
U.S.C. § 102(b) by Matsuoka. Pet. 24–46. To support its contentions, General
Plastic provides arguments as to how Matsuoka discloses each claim limitation.
Id. General Plastic also relies upon the Declaration of Brian Springett, Ph.D. (Ex.
1007) to support its positions. Canon counters that Matsuoka does not anticipate
these claims because it does not disclose certain claim limitations. Prelim. Resp.
31–39. We are not persuaded by General Plastic’s assertion of anticipation
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because Matsuoka does not disclose the movement of the sealing member and
container body “away from” each other, nor is there sufficient support provided by
General Plastic that other claim elements are disclosed by Matsuoka.
We begin our discussion with a brief summary of Matsuoka, and then
address the arguments presented by the parties.
1. Matsuoka (Ex. 1006)
Matsuoka discloses cartridge 30 that is correlated to the toner supply bottle
of the claims at issue. Ex. 1006, 7:1–7; Pet. 24–25. Cartridge 30 is composed of
container main body 31, which is a cylinder having opening 312 at the end. Ex.
1006, 7:22–30. Figure 4(d) of Matsuoka is reproduced below.

Figure 4 represents an exploded top view of the cartridge.
Ex. 1006, 3:24–26.

Container main body 31 has fixed cover 32 that is fixed with opening 312 of
the container main body, and cartridge opening/closing cover 33 is engaged within
fixed cover 32 and takes the form of an expandable bellows. Ex. 1006, 7:22–31.
Figure 5(a) is reproduced below.
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Figure 5(a) represents a partial section of a cartridge. Ex. 1006, 3:27–29.

Figure 6, reproduced below with General Plastic’s highlighting included,
depicts developing agent receiving port 42, with cartridge 30 attached.

Figure 6 depicts a sectional view of a developing agent receiving
port in the state where a cartridge is attached on a cartridge attachment
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section and a sectional view of a developing agent conveying section,
with General Plastic’s highlighting added. Ex. 1006, 3:30–33.

Rotary power transmitting member 44 is highlighted in red and fixed cover
32 is highlighted in yellow. See Pet. 28. Fixed cartridge-turning gear 47 on the
end of rotary power transmitting member 44 is driven to rotate by a driving source
(not depicted). Ex. 1006, 8:5–8. When cartridge opening/closing cover 33 and
rotary power transmitting member 44 are engaged, gear 47 turns and developing
agents in container main body 31 are propelled towards opening 312. Id. at 9:55–
67.
Before rotary power transmitting member 44 and cartridge 30 are fully
engaged as shown in Figure 6, an intermediate stage of engagement is depicted in
Figure 10(b), reproduced below, and the stage where the engagement is complete
is depicted in Figure 11, also reproduced below.

Figure 10(b) represents a sectional view showing the
intermediate process of the attachment of a cartridge on a developing
agent replenishing apparatus. Ex. 1006, 3:45–47. Figure 11 depicts a
cartridge that has been attached on a developing agent replenishing
apparatus. Id. at 3:48–50.
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2. Analysis of the Arguments and Issues
General Plastic correlates Matsuoka’s fixed cover 32 and rotary power
transmitting member 44 with the “sealing member” of the claims. Pet. 26, 35.
This is based upon the view that power transmitting member 44 and fixed cover 32
are combined integrally by coming-off preventing portion 444. Id. at 28. The
“container body” is correlated to container main body 31 with its opening 321,
which General Plastic considers to be the cartridge of Matsuoka. Id. at 25, 35.
General Plastic also correlates Matsuoka’s fixed opening/closing cover 33 with the
“sealing portion” of the claims, and with the state depicted in Figure 10(b)
considered to be the “first position” of the claims and the state of Figure 11
considered the “second position.” Id. at 28–29. General Plastic additionally
corresponds the rotary power transmitting member 44 to the “coupling portion” of
the claims, and portions of rotary power transmitting member 44 with the
“supporting portion.” Id. at 30. Engagement claw portion 443 of power
transmitting member 44 is correlated with the “engaging portion” of the claims,
and the outwardly radially extending claw portion of engagement claw portion 443
is corresponded to the “locking portion” of the claims by General Plastic. Id. at
32–33. Finally, the recited “rotational force receiving portion” is correlated with a
portion of the engagement claw portion 443 and/or the outer circumferential wall
of rotary shaft portion 442 extending through cartridge-turning gear 47. Id. at 38.
Canon contends Matsuoka fails to disclose elements of the claimed “toner
supply container” because General Plastic relies on rotary power transmitting
member 44 for teaching some of the elements, even though it is not included in the
cartridge 30. Prelim. Resp. 32. Canon refers to General Plastic’s
“acknowledge[ment] that each of the challenged claims is directed to a ‘toner
supply container’ alone, without any part of a copier,” further arguing that in spite
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of this acknowledgment, General Plastic relies on rotary power transmitting
member 44, which is part of the apparatus of the copier for elements of the claim.
Id. at 31–32. Canon disagrees with General Plastic’s view that Matsuoka’s rotary
power transmitting member 44 is “integrally combined” with fixed cover 32
because these components are engaged “on a detachable basis” only. Id. at 33
(citing Ex. 1006, 7:38–56, 8:34–38).
Canon additionally argues that Matsuoka fails to describe the claim elements
of claims 1 and 16 of “the opening becoming unsealed by relative movement of the
sealing member and the container body away from one another.” Prelim. Resp. 37.
Canon alleges that “[t]he part in Matsuoka that [General Plastic] contends moves
relatively away from the container main body—opening/closing cover 33—
[General Plastic] correlates with the claimed sealing portion, which is not the same
as the claimed sealing member.” Id. at 38 (referring to Pet. 28, 35–36, 42). Canon
argues that “the cartridge’s opening is unsealed by relative movement of part of the
alleged sealing member (rotary power transmitting member 44) toward the
container body (cartridge 30 having container main body 31), which is the opposite
of what the challenged claims require.” Id. at 37.
On this record, General Plastic has not presented sufficient evidence to
support a finding that Matsuoka anticipates claims 1 and 16. “A claim is
anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.” Verdegaal Bros.
v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Under the ordinary
meaning of claim 1’s term, “unsealed by relative movement of the sealing member
and the container body away from one another,” the claim requires a structure such
that the “sealing member” and the “container body” would be capable of moving
the components away from each other during unsealing. Here, using General
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Plastic’s stated correlation of elements, with Matsuoka’s fixed cover 32 and rotary
power transmitting member 44 considered the “sealing member,” and the container
main body 31 with opening considered the “container body,” Matsuoka’s teachings
support, at most, that a portion of the “sealing member” that is a portion of fixed
cover 32 remains stationary in relation to the container body when it becomes
unsealed. However, the other mapped portion of the “sealing member,” rotary
power transmitting member 44 and a portion of the fixed cover 32, moves towards
the container body when becoming unsealed. Therefore, there is no evidence
provided that Matsuoka discloses a structure capable of meeting the limitation that
the sealing member and container body move away from each other when
becoming unsealed.
Additionally, in an anticipation rejection, “it is not enough that the prior art
reference . . . includes multiple, distinct teachings that [an ordinary] artisan might
somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[D]ifferences between the
prior art reference and a claimed invention, however slight, invoke the question of
obviousness, not anticipation.” Id. at 1371. Here, independent claims 1 and 16 are
directed to a “toner supply container,” which General Plastic correlates to cartridge
30 in portions of its claim chart, and then in other portions of the chart it also
inconsistently indicates that the toner supply container includes other elements—
more specifically, power rotary power transmitting member 44 as part of the “toner
supply container.” Pet. 35–40, 41–46. Inconsistencies aside, General Plastic bases
the inclusion of the power transmitting member on the view that it and fixed cover
32 of the container are “integrally combined.” Pet. 28. This is supported by
conclusory statements only from Dr. Springett. Ex. 1007 ¶¶ 51, 52.
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Matsuoka discloses that its rotary power transmitting member 44 is a
component or part of the replenishment apparatus portion of the copier. See e.g.,
Ex. 1006, Fig. 3 and 6. The Petition lacks sufficient evidence to support that one
of ordinary skill in the art would have viewed a component of the copier to be a
part of the sealing member of the toner supply container, particularly in light of
Matsuoka’s disclosures that its containers are used for replenishment purposes and
they are detachable from the power rotary power transmitting member of the
copier. See, e.g., Ex. 1006, 7:54–56, 8:34–38.
Accordingly, on this record, General Plastic has not established a reasonable
likelihood of prevailing in showing that claims 1, 8, 9, and 16 of the ’820 patent
are anticipated by Matsuoka.
C. Alleged Obviousness of Claims 1, 7–9, and 16 over Matsuoka
General Plastic contends that claims 1, 7–9, and 16 are unpatentable under 35
U.S.C. § 103(a) based on Matsuoka. Pet. 46–49. To support its contentions,
General Plastic provides explanations as to how this prior art would be modified or
viewed to disclose each claim limitation. Id. General Plastic also relies upon the
Springett Declaration (Ex. 1007) to support its positions. In its Preliminary
Response, Canon argues that the evidence provided to support General Plastic’s
modifications or views of Matsuoka is insufficient and inconsistent. See generally
Prelim. Resp. 39–44.
At this stage in the proceeding, and based on the evidence of record, we are
not persuaded by General Plastic’s explanations and supporting evidence in
support of the obviousness ground asserted against claims 1, 7–9, and 16 for the
reasons discussed below.
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1. Analysis of the Arguments and Issues
In support of its obviousness assertions, General Plastic argues that a person
of ordinary skill in the art would have recognized that because there is a snap-fit
connection between rotary shaft portion 442 and gear 47 of Matsuoka, that
cartridge 30 can be withdrawn out of the printer’s cartridge attaching section 41
with power transmitting member 44 still attached. Pet. 47 (citing Ex. 1006, Fig. 6;
Ex. 1007, ¶¶ 70, 71). General Plastic contends that a “person of ordinary skill in
the art would be motivated to [perform the removal in the manner proposed] in
order to ensure that an empty cartridge 30 could still be removed from the
receiving port 42 in the event that the coming-off preventing portion 444 cannot
disengage from the engagement portion 328 of the fixed cover.” Id. (citing MPEP
§ 2143(G); Ex. 1007 ¶ 72). General Plastic also asserts that, to the extent that
Matsuoka’s structure is argued to have too many parts, it “‘would be merely a
matter of obvious engineering choice’ to use a one-piece construction instead.” Id.
(citing Ex. 1007 ¶ 74).
Dependent claim 7, recites, “the supporting position is wider than the
displacing force receiving portion.” Ex. 1001, 25:13–15. General Plastic contends
that, although Matsuoka discloses a coming-off prevention portion with the same
width as the supporting portion, a device having the claimed relative dimensions
would not perform differently than the prior art; therefore, claim 7 is obvious over
Matsuoka. Pet. 48– 49 (citing Ex. 1006, Fig 7(b); Ex. 1007, ¶ 75).
In addition to some of the arguments it presents on anticipation, Canon also
contends that General Plastic’s scenario of withdrawing cartridge 30 with power
transmitting member still engaged is based on a situation that should not occur
because the engagement of the cartridge is taught to be detachable in Matsuoka.
Prelim. Resp. 40. Canon also alleges that, if “the cartridge 30 was removed with
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the rotary power transmitting member 44 and the fixed cover 32 still engaged, the
cartridge 30 would not be sealed” and there would be toner spillage, which is the
problem that Matsuoka is directed to avoid. Id. at 40–41. Canon challenges Dr.
Springett’s view of the one-piece construction, alleging that it is unsupported. Id.
at 41 (citing Ex. 1007, ¶¶ 70–73). Canon also asserts that General Plastic’s
obviousness challenge to claim 7 is also impermissibly based upon unsupported
expert opinion. Id. at 43–44 (citing Ex. 1007 ¶ 75).
Our view is that General Plastic has not provided sufficient evidence to
support that one of ordinary skill in the art would have been motivated to modify
Matsuoka in the manner alleged in the Petition. There are no teachings or
suggestions in Matsuoka that cartridge 30 should be withdrawn from copier with
rotary power transmitting member 44 attached because, in fact, the reference
teaches otherwise—i.e., that the cartridge 30 with its fixed cover 32 should be
detached from the rotary power transmitting member 44. Dr. Springett fails to
provide any evidence to explain why an ordinary person of skill in the art would
envision a scenario that the detachment as taught would not occur, or even that the
scenario would be viewed as probable or even relatively possible. See Perreira v.
Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An
expert opinion is no better than the soundness of the reasons supporting it.”).
Additionally, no support has been provided for the view that it is a mere design
choice to remove the cartridge and the rotary power transmitting member as one
piece. That is, there is little, if any, explanation as to why one of ordinary skill
would have made that specific design choice. As such, the statements are
conclusory and fail to provide any articulated reasoning sufficient that would
support a conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
IPR2015-01966
Patent 9,046,820 B1

21

Accordingly, on this record, General Plastic has not established a reasonable
likelihood of prevailing in showing that claims 1, 7–9, and 16 would have been
obvious over Matsuoka.
IV. CONCLUSION
For the foregoing reasons, the information presented in the Petition does not
demonstrate that there is a reasonable likelihood that General Plastic would prevail
in challenging claims 1, 7–9, and 16 of the ’820 patent as unpatentable under 35
U.S.C. §§ 102(b) and 103(a).
V. ORDER
Accordingly, it is:
ORDERED that the Petition is denied as to the challenged claims of the ’820
patent; and
FURTHER ORDERED that no inter partes review is instituted.

For PETITIONER:
Steven F. Meyer
Tim Tingkang Xia
LOCKE LORD LLP
smeyer@lockelord.com
ptopatentcommunication@lockelord.com

For PATENT OWNER:
Justin J. Oliver
Edmund J. Haughey
FITZPATRICK, CELLA, HARPER & SCINTO
Canon820IPR@fchs.com