LaRose Industries, LLCv.Capriola Corporation

Patent Trial and Appeal Board

Jun 26, 2014

11839444 (P.T.A.B. Jun. 26, 2014)

Trials@uspto.gov Paper 37
571-272-7822 Entered: June 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LAROSE INDUSTRIES, LLC
Petitioner

v.

CAPRIOLA CORP.
Patent Owner
____________

Case IPR2013-001201
Patent 7,731,558 B2

Before KEVIN F. TURNER, JUSTIN T. ARBES, and JAMES B. ARPIN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1 Case IPR2013-00121 has been joined with this proceeding.
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Patent 7,731,558 B2
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I. INTRODUCTION
On January 30, 2013, LaRose Industries, LLC (“Petitioner”) filed a
corrected petition (Paper 10)2 challenging claims 1-27 of Patent No. US
7,731,558 B2 (Ex. 1001, “the ’558 Patent”). In the corrected petition,
Petitioner identifies the following prior art references:
Dunfee US 750,953 Feb. 2, 1904 (Ex. 1007)
Pacent US 1,552,227 Sep. 1, 1925 (Ex. 1008)
Engstrom US 1,642,064 Sep. 13, 1927 (Ex. 1009)
Calvin US 2,440,661 Apr. 27, 1948 (Ex. 1010)
Ziemianin US 2,657,369 Oct. 27, 1953 (Ex. 1011)
Bird US 2,703,393 Mar. 1, 1955 (Ex. 1012)
Geib US 2,731,614 Jan. 17, 1956 (Ex. 1013)
Pawloski US 3,289,149 Apr. 28, 1964 (Ex. 1029)
Barrett US 3,418,438 Dec. 24, 1968 (Ex. 1014)
Edward US 3,626,360 Dec. 7, 1971 (Ex. 1015)
Teller US 3,696,548 Oct. 10, 1972 (Ex. 1006)
Taylor US 4,096,379 June 20, 1978 (Ex. 1017)
Williams US 4,223,377 Sep. 16, 1980 (Ex. 1024)3
Robb US 5,018,980 May 28, 1991 (Ex. 1026)
Lie US 5,020,253 June 4, 1991 (Ex. 1021)
Yuen US 5,778,579 July 14, 1998 (Ex. 1025)
Stewart US 6,019,486 Feb. 1, 2000 (Ex. 1023)
Dai US 6,241,371 B1 June 5, 2001 (Ex. 1019)
Feuerborn US 7,080,927 B2 July 25, 2006 (Ex. 1022)

2 Unless indicated otherwise, references to papers are to papers filed in
IPR2013-00120.
3 Petitioner initially filed Exhibits 1022-1027 in IPR2013-00121. In
accordance with our order, Petitioner re-filed these exhibits in IPR2013-
00120 after the joinder of these cases. See Papers 16 and 17.
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Arlinsky US 2003/0148700 A1 Aug. 7, 2003 (Ex. 1016)
Rosen I US 2006/0134978 A1 June 22, 2006 (Ex. 1005)
Doherty US 2007/0184722 A1 Aug. 9, 2007 (Ex. 1020)

Callegari EP 1 162 400 A2 Dec. 12, 2001 (Ex. 1027)

Product packaging and instruction manual for
Dynatech “ATOMIC BLOX Zetatron” toy construction set
(“Atomic Blox”) (attached as Ex. B to Ex. 1018)

On April 24, 2013, Capriola Corp. (“Patent Owner”) filed a patent owner
preliminary response (Paper 13). In a decision to institute (Paper 14), issued
June 28, 2013, we instituted inter partes review of all of the challenged
claims as to the following grounds for review:
claims 1-27 under 35 U.S.C. § 103(a), as unpatentable over Teller and
Rosen I (Paper 14, 17-23);
claims 1-6, 8-22, 24, 26, and 27 under 35 U.S.C. § 102(e), as
anticipated by Doherty (id. at 23-25); and
claims 7, 23, and 25 under 35 U.S.C. § 103(a), as unpatentable over
Doherty and Rosen I (id. at 25).
In a contemporaneous decision to institute in IPR2013-00121, we instituted
inter partes review of claims 18-25 as to the following ground for review:
claims 18-25 under 35 U.S.C. § 103(a), as unpatentable over
Feuerborn and Rosen I. IPR2013-00121, Paper 11, 20-22.
IPR2013-00121 was joined with IPR2013-00120 and terminated. See
IPR2013-00121, Paper 11, 24-25.
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On September 27, 2013, Patent Owner filed a motion to amend,
accompanied by a single exhibit, Patent No. US 8,371,894 B1 (Ex. 2001,
“Rosen II”), but elected not to file a patent owner response. In the
scheduling order mailed June 28, 2013 (Paper 15, 2-3), we had cautioned
Patent Owner that any arguments for patentability not raised in the patent
owner response are deemed waived. On December 27, 2013, Petitioner filed
an opposition (Paper 25) to the motion to amend, including three additional
exhibits: the declaration of Ronald M. Barrett Ph.D. (Ex. 1028) and Patent
Nos. US 3,289,149, issued November 29, 1966 (Ex. 1029, “Pawloski”), and
US 5,409,403, issued April 25, 1995 (Ex. 1030, “Falossi”). On January 27,
2014, Patent Owner filed a reply (Paper 28) to Petitioner’s opposition to the
motion to amend.
On February 18, 2014, Petitioner filed a motion to exclude evidence
(Paper 29). Specifically, Petitioner moved to exclude Rosen II (Ex. 2001) as
allegedly lacking relevance to the instant case. Paper 29, 2. On March 3,
2014, Patent Owner filed Patent Owner’s opposition (Paper 32) to
Petitioner’s motion to exclude evidence, and, on March 10, 2014, Petitioner
filed a reply (Paper 33) to Patent Owner’s opposition to Petitioner’s motion
to exclude evidence.
Although only Petitioner requested an oral hearing (Paper 30), we
ordered an oral hearing (Paper 31). The oral hearing was conducted on
March 24, 2014.4

4 A transcript of the hearing is included in the record as Paper 36.
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We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is entered in IPR2013-00120, pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, based on our review of the evidence
presented, we conclude that Petitioner has established by a preponderance of
the evidence that claims 1-27 of the ’558 Patent are unpatentable. The
motion to amend requesting entry of substitute claims 47-50 is denied.
Petitioner’s motion to exclude evidence is dismissed.
A. Related Proceedings
The ʼ558 Patent is involved in a Federal district court case, Capriola
Corp. v. LaRose Industries, LLC, Civil Action No. 8:12-cv-02346 (M.D.
Fla.).
B. The ’558 Patent
The ’558 Patent, titled “Illuminated Toy Building Structures,” issued
on June 8, 2010, based on U.S. Patent Application No. 11/839,444 (“the
’444 Application”), filed August 15, 2007. The ’558 Patent relates to
“building blocks incorporating a variety of colored lights that can mimic the
look of a laser and can be interlocked to make a variety of multi-colored 3-
dimensional shapes.” Ex. 1001, col. 1, ll. 42-45. The patent describes
building blocks of various shapes, such as a cylinder (Figure 1), a rectangle
(Figure 2), a cylinder with a 90-degree bend (Figure 3), and a wheel (Figure
4). Figure 1 is reproduced below:

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Figure 1 depicts cylindrical, building block 10 comprising non-opaque
body 30 with two mechanical connectors 40, one male and one female, for
connection to adjoining blocks; light emitting diode (LED) 60; and at least
two electrically independent conductors 50 that traverse the body from one
connector to the other. Id. at col. 3, ll. 46-63. Power source 70 (not shown
in Figure 1) provides electric current, which passes from one building block
to the next via conductors 50 and is used to power LED 60. Id. at col. 3,
ll. 52-55; col. 4, ll. 43-49. Figure 5C is reproduced below:

Figure 5C depicts exemplary power source 70. Id. at col. 3, ll. 52-55; col. 4,
ll. 43-49; col. 5, ll. 50-66. Power source 70 comprises battery 75, conductor
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wire 85, mechanical connector 40 with conductors 50 for connecting to a
building block and conducting electric current to the block, and electrical
switch 80 that controls the flow of current to the connected block(s). Id. at
col. 5, ll. 50-66. When the LEDs in a set of building blocks are illuminated,
each building block “mimics the look of [a] laser as colored light passes”
from one block to the next. Id. at col. 4, ll. 26-29.
C. Status of the Claims
Of the challenged claims, claims 1, 12, 18, and 26 are independent.
Independent claims 1, 12, 18, and 26 recite similar limitations describing the
embodiments of linkable blocks or sets of blocks for forming an illuminated
structure. As to the dependent claims, claims 2-11, 16, and 17 depend from
claim 1; claims 13-15 depend from claim 12; claims 19-25 depend from
claim 18; and claim 27 depends from claim 26.
In its motion to amend, Patent Owner proposes four substitute claims,
claims 28-31, based on original, independent claims 1, 12, 18, and 26. The
substitute claims are reproduced below, with underlined material indicating
language added to the existing claims and material in brackets indicating
language removed from the existing claims:
28. (Proposed substitute for claim 1) A building block
comprising:
a non-opaque body comprising at least two non-
conductive mechanical connectors, at least one of the
connectors of the body comprising a male connector and at least
one of the other connectors of the body comprising a female
connector;
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two electrical conductors each traversing the body from
each connector to each other connector;
at least one LED within the body and electrically
connected across the two conductors;
each connector having a housing coupled to the two
conductors so as to close a circuit between the conductors and
illuminate the LED upon application of a power source to the
two conductors of the connector and also transmit power to
each other connector of the body along the two conductors; and
whereby with at least two of the building blocks
mechanically connected, a power source applied to the two
conductors at any one of the connectors of either of the building
blocks illuminates each LED;
wherein the non-conductive mechanical connectors are
cylindrical and the conductors are arranged such that at least
two of the building blocks are mechanically and electrically
connectable thereby at any degree of rotation about a
connection axis therebetween.

29. (Proposed substitute for claim 12) A building block set
comprising:
at least two blocks each having a non-opaque body and
each having at least two non-conductive mechanical connectors,
one of which is a male connector and the other of which is a
female connector, at least two electrical conductors each
traversing the respective body from each connector to each
other connector and at least one LED disposed within each
body and electrically connected to the two electrical conductors
of the respective body;
a power source unit having at least one mechanical
connector and at least two electrical conductors each traversing
the power source unit from each connector of the power source
unit to a battery, the battery connected at either end to one of
the conductors;
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an electrical switch electrically disposed between one end
of the battery and one of the connectors of the power source
unit;
each connector having a housing coupled to the two
conductors so as to close a circuit between the conductors and
illuminate the LED upon application of a power source to the
connector and also transmit power to each other connector of
the body along the two conductors; and
whereby when the blocks and the power source unit are
connected to the two conductors at just one of the mechanical
connectors of each block, the LEDs of all of the blocks are
powered by the battery;
wherein the non-conductive mechanical connectors are
cylindrical and the conductors are arranged such that the at least
two blocks are mechanically and electrically connectable
thereby at any degree of rotation about a connection axis
therebetween.

30. (Proposed substitute for claim 18) An illuminated toy
building block set comprising:
at least one rectangular block having first and second
opposing sides and third and fourth opposing sides, with an
electrically conductive male mechanical connector attached
with and extending laterally away from each of the first and
third sides, and with an electrically conductive female
mechanical connector attached with and extending inwardly
into the rectangular block from each of the second and fourth
sides;
at least one cylindrical block having first and second
opposing ends with an electrically conductive male mechanical
connector attached at and extending axially from the first end
and an electrically conductive female mechanical connector
attached at the second end and extending axially inwardly into
the cylindrical block;
an LED fitted within each block;
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means for conducting electrical current through the LED
in each block and each of the electrically conductive
mechanical connectors of each block; and wherein
the electrically conductive male mechanical connectors
and the electrically conductive female mechanical connectors of
each block [[is]] each include nonconductive cylindrical
portions and two electrical conductors arranged therewith and
are dimensioned so that all of the non-conductive portions of
the male connectors are mechanically interconnectable thereby
with the non-conductive portions of the female connectors of
other blocks at any degree of rotation about a connection axis
therebetween with their respective electrical conductors
adjoined in an electrically conductive manner.

31. (Proposed substitute for claim 26) An illuminated building
block comprising:
[[a]] at least two non-opaque [[body]] bodies, each
comprising two nonconductive mechanical connectors, one of
the connectors comprising a male connector and the other
connector comprising a female connector;
two electrical conductors traversing [[the]] each body
from each connector to each other connector with each
connector having a housing coupled to the two conductors so as
to close a circuit between the conductors and illuminate the
LED upon application of a power source to the connector and
also transmit power to each other connector of the body along
the two conductors, with all of connectors electrically coupled
together within the body;
an LED fitted within [[the body]] at least one of the
bodies and electrically connected to the two conductors thereof;
and wherein
with the at least two bodies connected by respective
connectors at any degree of rotation about a connection axis
therebetween a power source applied to the two conductors at
any one connector of either body illuminates the LED.
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Paper 22, 2-7. Thus, Patent Owner proposes amending independent claims
1, 12, 18, and 26 to recite in substitute claims 28-31 that the mechanical
connectors of each body or block are “non-conductive” and that the
mechanical connectors are rotatable “at any degree of rotation” about a
connection axis therebetween. Paper 22, 7-8; Paper 25, 2-3. Further, Patent
Owner proposes amending independent claims 1, 12, and 18 to recite in
substitute claims 28-30 that the mechanical conductors are “cylindrical.” Id.
II. DISCUSSION
As noted above, Patent Owner did not file a patent owner response to
the petitions. We have reviewed the evidence presented by Petitioner
regarding the claims upon which we instituted inter partes review and
determine that Petitioner has shown that those claims are unpatentable by a
preponderance of the evidence. See Paper 10, 16-32 (combination of Teller
and Rosen I), id. at 32-43 (Doherty, and combination of Doherty and
Rosen I); Paper 14, 17-25; IPR2013-00121, Paper 1, 23-25 (combination of
Feuerborn and Rosen I); IPR2013-00121, Paper 11, 18-22. Specifically,
Petitioner has shown by a preponderance of the evidence that claims 1-27
are unpatentable under 35 U.S.C. § 103(a), as obvious over Teller and
Rosen I; claims 1-6, 8-22, 24, 26, and 27 are unpatentable under 35 U.S.C.
§ 102(e), as anticipated by Doherty; claims 7, 23, and 25 are unpatentable
under 35 U.S.C. § 103(a), as obvious over Doherty and Rosen I; and claims
18-25 are unpatentable under 35 U.S.C. § 103(a), as obvious over
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Feuerborn and Rosen I. Therefore, we focus our discussion on Patent
Owner’s motion to amend.
An inter partes review is more adjudicatory than examinational in
nature. See Abbott Labs v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
2013). A motion to amend in an inter partes review is not itself an
amendment. As the moving party, Patent Owner bears the burden of
establishing that it is entitled to the relief requested. 37 C.F.R. § 42.20(c);
see also Paper 36, 32-33 (discussion of burden in motions to amend). Thus,
Patent Owner’s proposed substitute claims are not entered automatically, but
only would be entered if Patent Owner demonstrates the patentability of the
substitute claims. Id.
A. Claim Construction
Claim construction is an important step in a patentability
determination. Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed.
Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) (“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.”; internal citations omitted). Thus,
a panel of the Board has determined previously, and we agree, that a motion
to amend should identify how the proposed substitute claims are to be
construed, especially when the proposed substitute claims introduce new
claim terms or features. See Idle Free Sys., Inc. v. Bergstrom, Inc.,
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IPR2012-00027, Paper 26, 7 (PTAB June 11, 2013). The motion to amend
also must explain how the construed claim is distinguishable over the art.
Neither Patent Owner nor Petitioner challenges our interpretation in
the decision to institute of certain terms of claim 1, 12, 18, and 26 that also
appear in substitute claims 28-31. Paper 22, 2–7. Because the
interpretations of those terms are not challenged, to the extent that they are
necessary for assessing the application of the cited art to the substitute
claims, they are adopted for purposes of this final decision. See Paper 14, 8-
17.
1. Preamble Terms
The substitute claims recite the following preambles: “[a] building
block comprising” (claim 28), “[a] building block set comprising” (claim
29), “[a]n illuminated toy building block set comprising” (claim 30), and
“[a]n illuminated building block comprising” (claim 31). As we determined
with respect to the challenged claims, the preambles of the substitute claims
do not recite additional structure that is absent from the bodies of the claims
or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8-
9. Applying the broadest reasonable interpretation of the substitute claims in
light of the Specification, we again conclude that the preamble terms are not
limiting and, in particular, that the recitations of “building block,” “building
block set,” and “toy building block set” in the preambles do not limit the
scope of the claims to toy blocks or toy block sets. Id.
2. Male and Female Mechanical Connectors
Each of substitute claims 28-31 recites a plurality of “mechanical
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connectors,” at least one comprising a “male” connector and another
comprising a “female” connector. The parties do not contend that the
modified claim language in the substitute claims alters the meaning of
“mechanical connector” in each claim in any way. Consequently, for
purposes of the substitute claims, we adopt our previous analysis. See id. at
9-13. Specifically, the connectors in substitute claims 28 and 31 must be
part “of” the non-opaque body, the blocks in substitute claim 29 must
“hav[e]” connectors, and the connectors in substitute claim 30 may be
attached permanently or removably. See Paper 13, 3.
3. “Means for Conducting Electrical Current Through the LED in
Each Block and Each of the Electrically Conductive Mechanical
Connectors of Each Block”
The parties do not dispute our interpretation of “means for conducting
electrical current through the LED in each block and each of the electrically
conductive mechanical connectors of each block” in original claim 18. See
Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous
analysis and interpret the identical means-plus-function limitation to have
the function of “conducting electrical current through the LED in each block
and each of the electrically conductive mechanical connectors of each
block” and the corresponding structure of power source 70.
4. Claim Language Added In Substitute Claims
Neither party proposes constructions for the claim language added in
substitute claims 28-31. In particular, neither party proposes a construction
for the terms: “non-conductive,” “at any degree of rotation,” or
“cylindrical.” Further, we note that the Specification of the ’558 Patent does
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not include definitions of these terms. We determine that these terms need
to be construed for our analysis of the substitute claims. For purposes of this
final decision, we give these terms their ordinary and customary meanings,
consistent with the Specification, as those terms would be understood by one
with ordinary skill in the art. We address our construction of each of these
terms below.
a. Non-conductive
A relevant definition of the term “conductive” is “having the property
or capability of conducting.” RANDOM HOUSE WEBSTER’S COLLEGE
DICTIONARY 277 (2d Random House ed. 1999) (Ex. 3001). However, the
term “conductive” is used in the Specification to describe the property of
conducting electricity. Ex. 1001, col. 4, ll. 43-56. Further, the entire
Specification is directed to conducting electricity to illuminate a set of
building blocks, and no other type of energy conduction is described that
would allow building blocks to be so illuminated. This supports interpreting
the claim term as limited, under the circumstances, to conducting electricity.
Thus, we construe “non-conductive” as the opposite of conductive, i.e.,
lacking the property or capability of conducting electricity.
b. Cylindrical
A relevant definition of the term “cylindrical” is “of, pertaining to, or
having the form of a cylinder,” and a relevant definition of the word
“cylinder” is “a surface or solid bounded by two parallel planes and
generated by a straight line moving parallel to the given planes and tracing a
curve bounded by the planes and lying in a plane perpendicular or oblique to
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them.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 331(Ex.
3001). Further, the term “cylindrical” is used in the Specification to
describe the cylindrical embodiment of Figure 1 of the ’558 Patent. Ex.
1001, fig. 1; col. 4, l. 66-col. 5, l. 1 ((“In the embodiment illustrated in
[Figure 1], the body 30 is substantially cylindrical 31 with one of the
mechanical connectors at either end 32 thereof.”; emphasis added)). Thus,
we construe “cylindrical” as an adjective describing a structure as “of,
pertaining to, or having the form of a cylinder,” where a cylinder is a surface
or solid bounded by two parallel planes and generated by a straight line
moving parallel to the given planes and tracing a curve bounded by the
planes and lying in a plane perpendicular or oblique to them.
c. At Any Degree of Rotation
A relevant definition of the word “degree” is “the 360th part of a
complete angle or turn . . .” (emphasis added); a relevant definition of the
word “turn” is “to cause to move around or on an axis or about a center;
rotate: to turn a wheel” (emphasis added); and a relevant definition of the
word “rotation” is “the act of rotating; a turning around as on an axis” or
“one complete turn of such a body.” RANDOM HOUSE WEBSTER’S COLLEGE
DICTIONARY at 349, 1145, 1406 (Ex. 3001). Further, rotational axis lr is
depicted in Figure 4 of the ’558 Patent and described in the Specification
with respect to the rotation of a block body in the form of wheel 38. Ex.
1001, fig. 4; col. 5, ll. 9-11. Referring to Figures 7 and 8 of the ’558 Patent,
wheels 38 may be used to create a wheeled structure resembling a vehicle.
Id. at figs. 7, 8; col. 5, ll. 11-13. Thus, we construe the term “at any degree
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of rotation” as any part of one complete turn of a body as on an axis, such as,
for example, any part of one complete turn of a wheel on a rotational axis.
4. Remaining Claim Terms or Phrases
No other terms require express construction in reaching our decision
in this proceeding.
B. Scope of Motion to Amend
Pursuant to 37 C.F.R. § 42.121(a)(2), a motion to amend may be
denied if: (1) the amendments seek to enlarge the scope of the original
claims; (2) the amendments introduce new subject matter; or (3) the
amendments do not respond to a ground of unpatentability, upon which trial
was instituted. For the reasons discussed below, we determine that the
substitute claims presented in Patent Owner’s motion to amend: (1) narrow
the scope of the original claims, (2) do not introduce new subject matter, and
(3) respond to grounds of unpatentability, upon which trial was instituted.
See Paper 14, 27. Further, contrary to Petitioner’s assertion, we determine
that the substitute claims are not indefinite. Nevertheless, because, as set
forth below, we deny Patent Owner’s motion to amend for other reasons, we
do not discuss further Patent Owner’s arguments regarding the patentability
of the substitute claims over the grounds on which we instituted inter partes
review or Petitioner’s lack of response in its opposition to those arguments.
See Paper 22, 11-21.
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1. Narrowing Amendments
With respect to substitute claim 28, Patent Owner proposes to amend
original claim 1 to recite that
a non-opaque body comprising at least two non-
conductive mechanical connectors, at least one of the
connectors of the body comprising a male connector and at least
one of the other connectors of the body comprising a female
connector;
two electrical conductors each traversing the body from each
connector to each other connector;

Paper 22, 2 (emphasis added). Substitute claims 29 and 31 include similar
limitations.5 Id. at 3-4, 6-7. Petitioner contends that, because each of
original claims 1, 12, and 26 recites “upon application of a power source to
the connector” and “transmit power to each other connector of the body”
(emphases added), the original claims require, at least implicitly, that the
connectors are electrically conductive. Paper 25, 10. Consequently,
Petitioner contends that, by amending the original claims to describe the
connectors as “non-conductive,” Patent Owner’s substitute claims
impermissibly broaden the scope of the original claims. Id.; see 35 U.S.C.
§ 316(d)(3) (“An amendment under this subsection may not enlarge the
scope of the claims of the patent . . .”); 37 C.F.R. § 42.121(a)(2) (rule
implementing the statutory requirement). Petitioner does not contend that

5 Petitioner refers to original claims 1, 12, and 26 and, alternately, to claims
28, 29, and 30 and to claims 28, 29, and 31. Paper 25, 10. Because original
claim 26 corresponds to substitute claim 31, we treat the reference to claim
30 here as a typographical error.
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other limitations added in substitute claims 28, 29, and 31 broaden the scope
of original claims 1, 12, or 26. See Paper 25, 10.
Patent Owner disagrees and argues that
[t]he original claims also all indicate that a closed circuit
allowing illumination of the LED is achieved when a power
source is applied to any single connector. If the entire
mechanical body of the connector were conductive, this would
not be possible – as the entirety of the connector body would
then be a permanent short circuit between the two claimed
conductors, and the LED would never illuminate.

Paper 28, 1. We note that claims 1, 12, and 26 describe the connectors as
“mechanical” connectors and do not state whether the connectors themselves
are or are not conductive. See Ex. 1001, col. 6, ll. 46-47 (claim 1); col. 7,
l. 36 (claim 12); col. 10, ll. 8-9 (claim 26). Moreover, claim 1 recites that
the body comprises “two electrical conductors each traversing the body from
each connector to each other connector” (emphases added), and each of
claims 12 and 26 recites similar limitations. Ex. 1001, col. 6, ll. 51-52
(claim 1); col. 7, ll. 39-41 (claim 12); col. 10, ll. 11-12 (claim 26). Thus, we
conclude that each of the original claims recites that it is the conductors
traversing the body that conduct electricity between the connectors, and we
are not persuaded that the connectors are required, implicitly or expressly, to
be conductive.
For the foregoing reasons, we determine that Patent Owner’s proposed
substitute claims 28, 29, and 31 narrow the scope of the original claims 1,
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12, or 26, and comply with 35 U.S.C. § 316(d)(3) and 37 C.F.R.
§ 42.121(a)(2).
2. Written Description for Substitute Claims
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
the applicant was in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “[T]he written
description requirement is satisfied by the patentee’s disclosure of ‘such
descriptive means as words, structures, figures, diagrams, formulas, etc., that
fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe
Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis added)). Patent Owner
argues that the additional limitations of substitute claims 28-31 are
supported by the disclosure of the patent application, the ’444 Application,
from which the ’558 Patent issued. Paper 22, 9-10 (citing Ex. 1004, figs. 1,
2, and 8). For the reasons set forth below, we agree.
a. Non-Conductive
Substitute claim 28 recites “[a] building block comprising: a non-
opaque body comprising at least two non-conductive mechanical
connectors.” Similar language appears in substitute claims 29 and 31.
Petitioner contends that the ’444 Application provides no support for
amending the mechanical connectors of original claims 1, 12, and 26 to be
“non-conductive” mechanical connectors in substitute claims 28, 29, and 31.
Case IPR2013-00120
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Paper 25, 6-7. Specifically, Petitioner contends that the term “non-
conductive” appears nowhere in the ’444 Application and that Patent Owner
fails to demonstrate that a person of ordinary skill in the art at the time of the
filing of the ’444 Application would have recognized that the inventors were
in possession of the subject matter of the substitute claims. Id.
Patent Owner argues that Figures 1 and 2 of the ’444 Application
depict mechanical connectors 40 as distinct from electrical conductors 50,
and that the ’444 Application describes body 30, which comprises
connectors 40 formed from acrylic or rigid plastic. Id. at 6 (quoting Paper
22, 8). From this, Petitioner concludes that the disclosures merely indicate
that the connectors can be made from the identified materials, but these
disclosures do not teach that the connectors are “non-conductive.” Paper 25,
6.
Petitioner acknowledges, however, that “[a]n element having a non-
conductive part may still be electrically conductive as a whole (e.g., an
electrical plug having an outer non-conductive housing and electrical wires
therein).” Id. at 6-7. Patent Owner does not disagree with Petitioner’s
description of a “non-conductive” part of an electrically conductive element.
In fact, we understand this to be precisely the argument that Patent Owner is
attempting to make, namely, that a person of ordinary skill in the art would
understand that a “non-conductive” part may still conduct electricity via
electrically conductive components housed within it. See Paper 28, 1 (“The
claimed non-conductive mechanical connectors are non-conductive of the
electricity that is conducted by the electrical conductors.”).
Case IPR2013-00120
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Neither party disputes that the term “non-conductive” does not appear
in the ’444 Application, nor does either party show evidence that the
mechanical connectors of the ’444 Application are limited to those made
entirely from conductive materials. Further, neither party contends that a
person of ordinary skill in the art would fail to understand that parts within a
mechanical connector, such as electrical conductors, still may be electrically
conductive, even though the mechanical connector is “non-conductive,” as
explained by Patent Owner. See Paper 25, 6-7; Paper 28, 2 (statement by
Patent Owner, in its annotations to Figure 2 of the ’444 Application, that
“[t]he presence of these electrical conductors allow the connectors, as a
whole, to conduct electricity”).
Patent Owner also argues that, “[i]f the entire mechanical body of the
connector were conductive, this would not be possible – as the entirety of
the connector body would then be a permanent short circuit between the two
claimed conductors, and the LED would never illuminate.” Paper 28, 1.
Based on the record before us, and given Petitioner’s example of “an
electrical plug,” we are not persuaded that a person of ordinary skill in the
art would understand the disclosure to describe non-functional blocks or
block sets. Thus, we determine that the “non-conductive” mechanical
connector, as recited in claims 28, 29, and 31, is supported adequately by the
Specification of the ’444 Application.
b. Cylindrical
Substitute claim 28 recites that “the non-conductive mechanical
connectors are cylindrical.” Similar language appears in substitute claims
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29-31. Petitioner contends that Patent Owner fails to demonstrate support
for this added limitation, other than by reference to the drawings of the
’444 Application. Paper 25, 8; see Paper 22, 9 (reproducing Figures 1 and 2
of the ’444 Application). Petitioner argues that
none of the drawings shows connectors that are,
unambiguously, cylindrical. That is, because the drawings only
illustrate the connectors in perspective views and do not
specifically show a circular cross-section of a connector, the
drawings simply illustrate that the connectors are provided
some round shapes, including elliptical or oval shapes.

Paper 25, 8 (emphasis added); Paper 36, 22 (arguing that the
’444 Application does not include the term “cylindrical” or show a
cylindrical or circular cross-section). Further, Petitioner argues that, when
provided with elliptical or oval-shaped cross-sections, the connectors would
not be rotatable relative to one another. Id. Consequently, because Figure 8
of the ’444 Application depicts blocks oriented “at a couple of different
angles,” Petitioner argues that it is reasonable to interpret Figures 1 and 2 as
depicting oval, rather than cylindrical, shaped connectors. Id. We do not
agree.
Initially, we note that, with respect to Figure 1, the ’444 Application
describes a perspective view of a “cylindrical embodiment of a building
block.” Ex. 1004, 280 (emphasis added). Thus, although the ’444
Application does not describe expressly that the connectors are or may be
cylindrical, Figure 1 depicts cylindrical body 31 of non-opaque body 30. Id.
at 284 (“In the embodiment illustrated in [Figure 1], the body 30 is
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substantially cylindrical 31 with one of the mechanical connectors at either
end 32 thereof.”). A visual comparison of the shape of cylindrical body 31
with the shape of connector 40, as depicted in Figure 1 of the ’444
Application, indicates that both are cylindrical in cross-section. Petitioner’s
expert, Dr. Ronald Barrett, testified that, despite the depiction in Figure 1, it
is his “opinion that a person skilled in the art would not reasonably conclude
that the inventor had possession of connectors that are cylindrical in shape
(i.e., in circular cross-sections) or having cylindrical portions (i.e., in circular
cross-sections).” Ex. 1028 ¶ 30.
Nevertheless, in his analysis, Dr. Barrett fails to explain his opinion in
view of the apparent similarity between the shape of the cylindrical body 31
and connector 40 in Figure 1 of the ’558 Patent. Id. Further, Dr. Barrett
bases his opinion regarding a person of ordinary skill in the art’s
interpretation of the shape of the connector, at least in part, on the depiction
of discrete angles of orientation in Figure 8 of the ’444 Application. Id.
However, Dr. Barrett does not explain sufficiently why the depicted discrete
angles cannot be achieved by a cylindrical-shaped connector, instead of an
oval-shaped connector. Because we are persuaded that at least Figures 1, 2,
and 8 of the ’444 Application depict a cylindrical connector, and, because
we are not persuaded by Dr. Barrett’s testimony to the contrary, we conclude
that the ’444 Application provides adequate support for the cylindrical
connector, as recited in substitute claims 28-31.
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c. At Any Degree of Rotation
Substitute claim 28 recites that “the conductors are arranged such that
at least two of the building blocks are mechanically and electrically
connectable thereby at any degree of rotation about a connection axis
therebetween” (emphasis added). Similar language appears in substitute
claims 29-31.
Patent Owner argues that corresponding, cylindrical, male and female
connectors are depicted in Figures 1 and 2 of the ’444 Application and that,
given the shape of the connectors and the ring-shaped structure of the
conductors, the blocks may be connected mechanically and electrically “at
any degree of rotation.” Paper 22, 9. Further, although Patent Owner
acknowledges that a “connection axis” is not depicted or described expressly
in the Specification of the ’444 Application, Patent Owner maintains that
this limitation merely refers to the frame of reference created by the
insertion of a cylindrical male connector into a cylindrical female connector.
Id. Consequently, Patent Owner argues that the male and female connectors
each have a “connection axis” frame of reference, whether or not such an
axis is mentioned explicitly in the written description. Id.; see also id. at 10
(Figure 8 of the ’444 Application annotated to depict connection axes by
broken lines).
In addition, referring to Figure 8 of the ’444 Application, blocks are
depicted as connected at various angles. Id. at 10. Although Figure 8 does
not depict connected blocks oriented at every possible degree of rotation,
Patent Owner argues that the wide variety of angles depicted in this figure
Case IPR2013-00120
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discloses that the blocks may be oriented “at any degree of rotation.” Id.;
see Paper 28, 2-4. Moreover, referring to Figure 4 of the ’444 Application,
Patent Owner notes that wheel 38 is depicted, which has connector 40 on
either side 39 along a “rotational axis Ir.” Paper 28, 2-3. As depicted in
Figure 7 of the ’444 Application, wheel 38 may be used to construct a
wheeled vehicle. Id. at 3.
As noted above, the limitation “at any degree of rotation” does not
appear anywhere in the Specification of the ’444 Application. Paper 25, 8-9.
Further, Petitioner contends that Patent Owner’s reliance on what a person
of ordinary skill in the art allegedly would understand from the drawings is
insufficient to demonstrate support for the introduction of this limitation in
the substitute claims. Id. at 9. Moreover, relying on the testimony of
Dr. Barrett, Petitioner contends that, even accepting that connectors 40 are
cylindrical, a person of ordinary skill in the art would not understand that the
blocks depicted in the ’444 Application could be connected to each other,
mechanically and electrically, at any degree of rotation. Id. at 10 (citing Ex.
1028 ¶¶ 32-38). We are not persuaded by Petitioner’s contentions that this
limitation lacks sufficient support in the Specification of the ’444
Application.
Patent Owner argues that, if a block having a cylindrical male
connector is connected to a block having a cylindrical female connector,
absent some other teaching, a person of ordinary skill in the art would
understand that the blocks may be rotated with respect to each other and may
remain connected mechanically to each other “at any degree of rotation.”
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See Paper 22, 9-10. During the hearing, we noted this argument to
Petitioner’s counsel. Paper 36, 21-22. Petitioner did not disagree that the
resulting structure would disclose mechanically rotatable blocks, but argued
instead that the Specification of the ’444 Application failed to disclose
cylindrical connectors. For the reasons set forth above, we are persuaded
that the figures of the ’444 Application disclose cylindrical connectors.
With respect to whether the Specification of the ’444 Application
discloses that such blocks also may be connected electrically “at any degree
of rotation,” we note that, in Figures 1 and 2 of the ’444 Application, ring-
shaped portions of conductors 50 are within connectors 40 and that, “[a]s
each additional building block 10 is connected, the electrical current from
power source 70 is transferred from building block 10 to building block 10
via the conductors 50.” Ex. 1001, col. 4, ll. 45-48. Petitioner’s expert, Dr.
Barrett, noted that the Specification of the ’444 Application discloses that
conductive rings 52 are used to make these inter-block electrical
connections. Ex. 1028 ¶ 33 (citing Ex. 1004, 11; fig. 5D). Dr. Barrett
concluded that, despite corresponding conductive rings 52 on male and
female connectors 40, electrical current would not be conducted at any
degree of rotation between joined connectors. Id. In particular, Dr. Barrett
concluded that the build-up of an oxide layer on the metal of conductive
rings 52 (see Ex. 1028 ¶¶ 34-35), imprecise manufacturing tolerances in
conductive rings 52 (see id. at ¶¶ 36-37), or the lack of wipers, such as those
taught by Dunfee and Pawloski (see id. at ¶ 34), would prevent electrical
connections at any degree of rotation. Nevertheless, as noted during the
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hearing, the Specification of the ’444 Application does not specify the type
of metal used in conductive rings 52, and not all conductive metals would
suffer from the oxidation problems described by Dr. Barrett. Paper 36, 27-
29; see Ex. 1028 ¶ 42; Paper 36, 28 (statement by Petitioner’s counsel that “I
believe the expert said that only if [the conductive ring] was made of gold
that may provide some electrical connectability”). Moreover, wipers, taught
by Dunfee and Pawloski, would not be required if an oxide layer was not
formed on conductive rings 52. See Paper 36, 28-29. Finally, the deficient
tolerances described by Dr. Barrett are not disclosed in the Specification of
the ’444 Application, and Petitioner fails to demonstrate that they
necessarily would affect all blocks made in accordance with the substitute
claims. Id. at 30 (rebuttal by Patent Owner’s counsel). Consequently, in
view of the depiction of the male and female connectors and the associated
conductors in Figures 1, 2, and 8 of the ’444 Application, we are persuaded
that the Specification of the ’444 Application adequately supports the
language added to original claims 1, 12, 18, and 26 in substitute claims 28-
31.
d. At Least Two Bodies
Substitute claim 31 recites that “[a]n illuminated building block
compris[es] at least two non-opaque bodies, each comprising two
nonconductive mechanical connectors” (emphases added). Petitioner
contends that “[t]here is no written support in the original disclosure of the
’558 Patent for a single building block having multiple bodies.” Paper 25,
10. For the reasons set forth below, we are not persuaded that the
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amendments to original claim 26 lack sufficient support in the
’444 Application.
Initially, we note that original claim 26 recited that “[a]n illuminated
building block compris[es] a non-opaque body” (emphasis added). As the
U.S. Court of Appeals for the Federal Circuit has explained, “an indefinite
article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in
open-ended claims containing the transitional phrase ‘comprising.’”
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir.
2008) (citations omitted); see also Harari v. Lee, 656 F.3d 1331, 1341 (Fed.
Cir. 2011). As the Federal Circuit also has explained, “[t]he original claims
as filed are part of the patent specification.” Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 938 (Fed. Cir. 1990). Because claim 1 of
the ’444 Application, as filed, recites “[a] building block comprising: a non-
opaque body,” we conclude that the ’444 Application discloses a block
comprising one or more non-opaque bodies. See Ex. 1004, figs. 3, 7, 8
(depicting L-shaped blocks, each formed of two bodies at right angles to
each other). Moreover, we find nothing in the disclosure of the
’444 Application that would cause us to limit the interpretation of the
language of claim 1 of the ’444 Application, as filed, to a block comprising
only a single, non-opaque body. See Baldwin Graphic Sys., 512 F.3d at
1342-43. Consequently, we conclude that substitute claim 31 merely
narrows the recitation of original claim 26 to exclude blocks comprising
only a single non-opaque body and that blocks comprising at least two, i.e.,
two or more, bodies are supported by the disclosure of the ’444 Application.
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e. Conclusion
Pursuant to 37 C.F.R. § 42.121(b)(1), a motion to amend in an inter
partes review must set forth “[t]he support in the original disclosure of the
patent for each claim that is added or amended.” We conclude that Patent
Owner has made a sufficient showing that proposed substitute claims 28-31
as a whole, including the new limitations added to the proposed substitute
claims as explained above, have written description support in the disclosure
of the ’444 Application, as filed. See Paper 22, 7-10.
3. Definiteness of Substitute Claims
Under 35 U.S.C. § 112, ¶ 2, “[t]he specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” In Nautilus,
Inc. v. BioSig Instruments, Inc., No. 13-369, 2014 WL 2440536, at *7 (U.S.
June 2, 2014), the U.S. Supreme Court read “§112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with
reasonable certainty.” We apply this standard in our review in the context of
our use of the broadest reasonable interpretation standard for claim
construction (37 C.F.R. § 42.100(b))6 and, given that the challenged claim

6 See SAP Am., Inc. v. Versata Dev. Grp., Inc., Case CBM2012-00001, slip.
op. 7-8 (PTAB June 11, 2013) (Paper 70, Final Written Decision) (“Through
the use of the broadest reasonable interpretation standard, the Office is able
to encourage inventors to amend their claims to remove uncertainties and
over breadth of claim scope.”); see also SAS Institute, Inc. v.
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terms were introduced in a motion to amend, in the absence of prosecution
history with respect to the language of the proposed substitute claims.7
Petitioner contends that substitute claims 28-31 are indefinite. Paper 25, 3-
5. We disagree.
a. Non-Conductive
As noted above, Patent Owner proposes amendments to original
claims 1, 12, 18, and 26 to recite that the mechanical connectors are “non-
conductive.” Paper 22, 1-7. Petitioner contends that materials may be
conductive or non-conductive of multiple types of energy, such as electrical,
thermal, or acoustic energy. Paper 25, 4. Petitioner also contends that,
because the Specification of the ’558 Patent fails to include the term “non-
conductive,” it is not clear what type of non-conductive material is meant by
this claim term. Id. Further, Petitioner contends that, because substitute
claims 28, 29, and 31 also describe that electrical power is transmitted from
a connector to each other connector in the body, the claim language requires
that the connectors are both conductive and non-conductive. Id. Petitioner
contends that this requirement is contradictory and, hence, indefinite. Id.

Complementsoft, LLC, Case IPR2013-00226 (PTAB Mar. 20, 2014) (Paper
27) (order permitting the filing of a second motion to amend to correct
antecedent basis error).
7 See In re Packard, No. 2013-1204, 2014 WL 1775996, at *16 (Fed. Cir.
May 6, 2014) (Plager, J., concurring) (“[U]nlike courts which have a full
prosecution record to consider, the prosecution record before the USPTO is
in development and not fixed during examination, and the USPTO does not
rely on it for interpreting claims.”).
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Initially, we note that the Specification of the ’558 Patent only
describes conducting electrical energy between the blocks. E.g., Ex. 1001,
Abstract; col. 4, ll. 43-56. Petitioner fails to identify any reference to any
other type of energy and, in particular, to thermal or acoustic energy in the
Specification of the ’558 Patent. Because the claim language is construed in
view of the Specification, we are not persuaded that the term “non-
conductive” is construed properly to refer, with reasonable certainty, to any
type of energy other than electrical energy. See supra Section II.A.4.a. As
Patent Owner argues, no other construction makes sense. Paper 28, 1.
Referring to substitute claim 28, the recited body comprises at least
two non-conductive, mechanical connectors and “two electrical conductors
each traversing the body from each connector to each other connector”
(emphasis added). Similar language appears in substitute claims 29-31.
This quoted claim language appears in original claim 1, upon which
substitute claim 28 is based. Paper 22, 2-3. As this quoted claim language
makes clear, electrical power is transmitted between the connectors via the
“electrical conductors.” As Patent Owner explains, the original claims do
not describe expressly the nature of the material from which the mechanical
connectors are made, but original claim 1 and substitute claim 28 recite that
each connector has a housing that is coupled to the conductors. See supra
Section I.C.. If the connector itself was entirely conductive, the housing
would be superfluous. Thus, it is logical to conclude that those connectors
may be made from a non-conductive material in order to avoid short circuits.
Paper 28, 1. Consequently, we conclude that a person of ordinary skill in the
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relevant art at the time the application was filed would have understood the
term “non-conductive” to describe not electrically conductive, with
reasonable certainty. Therefore, we are not persuaded that the term “non-
conductive” in substitute claims 28-31 is indefinite.
b. At Any Degree of Rotation
As noted above, Patent Owner proposes amendments to original
claims 1, 12, 18, and 26 to recite that “the conductors are arranged such that
at least two of the building blocks are mechanically and electrically
connectable thereby at any degree of rotation about a connection axis
therebetween.” Paper 22, 1-7. Petitioner contends that the Specification of
the ’558 Patent fails to mention the word “rotation” and, as a result,
Petitioner contends that it is not clear what is meant by “rotation” in the
added limitation. Paper 25, 5. In particular, Petitioner contends that,
because “rotation” is not used in the Specification of the ’558 Patent, the
claim language has at least two alternative constructions. Id.; see Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). First, the
claim may recite that two blocks may be connected at any degree of rotation,
i.e., the blocks may be rotated with respect to each other before they are
connected. Id. Second, the blocks may be connected first and rotated
thereafter with respect to each other. Id.
Initially, Petitioner is not entirely correct when it contends that the
word “rotation” is not mentioned in the Specification of the ’558 Patent. As
noted above, the Specification of the ’558 Patent discloses that, “[i]n the
embodiment illustrated in FIG. 4, the body takes the form of a wheel 38,
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with a connector 40 on either side 39 along a rotational axis lr thereof [sic]
This embodiment permits a user to create a wheeled structure resembling a
vehicle (FIGS. 7 and 8).” Ex. 1001, col. 5, ll. 9-13 (emphases added). Even
without the express reference to a “rotational axis,” it is axiomatic that
wheels of a vehicle rotate. Moreover, in view of the recited cylindrical
structure of the male and female connectors in substitute claims 28-31, we
conclude that blocks may be rotated before or after they are connected “to
any degree of rotation.” As Patent Owner notes, breadth of interpretation
does not render the substitute claims indefinite. Paper 28, 3. Thus, we
conclude that a person of ordinary skill in the relevant art at the time the
application was filed would have understood the recitation that the blocks
may be rotated “at any degree of rotation,” with reasonable certainty.
Therefore, we are not persuaded that substitute claims 28-31 are indefinite
because they recite “at any degree of rotation.”
C. Patentability Over Prior Art
An inter partes review is neither a patent examination proceeding nor
a patent reexamination proceeding. The substitute claims proposed in a
motion to amend are not entered automatically and then subjected to
examination. Rather, the proposed substitute claims will be added directly
to the patent, without examination, if the patent owner’s motion to amend
claims is granted. In a motion to amend, the patent owner is not rebutting a
rejection in an office action, as though this proceeding were a patent
examination or a reexamination. Instead, the patent owner, as the movant,
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bears the burden of establishing the patentability of the proposed substitute
claims over the prior art of record and also other prior art known to the
patent owner. See Paper 36, 32-33. We deny the motion to amend here
(1) because Patent Owner has not met this burden and (2) because Petitioner
has persuaded us that the substitute claims would have been rendered
obvious over the teachings of Teller, Rosen I, and Pawloski.
1. Patentability Over Other Art Raised by Petitioner or Known To
Patent Owner

In the motion to amend, Patent Owner limits its discussion of the prior
art solely to those references upon which we instituted inter partes review.
Paper 22, 11-21. Although Petitioner presents arguments challenging the
patentability of the substitute claims in its opposition to the motion to amend
(Paper 25, 11-22), Patent Owner does not respond to any of Petitioner’s
arguments for unpatentability based on combinations including newly cited
references. Instead, in its response to Petitioner’s opposition to the motion
to amend, Patent Owner contends that
Petitioner argues that other references, either cited but not relied
on, or entirely new, might suffice to render the proposed
amended claims unpatentable. It is not clear to Patent Owner
that the Board has the statutory or regulatory authority to
substitute new grounds of rejection for those for which review
was instituted.

Paper 28, 5 (emphasis added). Thus, Patent Owner misunderstands the
nature of Petitioner’s opposition to, and our consideration of, the motion to
amend.
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As explained above, inter partes review is an adjudicatory
proceeding, not a prosecutorial proceeding, before the Office. H.R. Rep.
No. 112-98 Part 1 (2011) at 46–47 (“The [AIA] converts inter partes
reexamination from an examinational to an adjudicative proceeding, and
renames the proceeding ‘inter partes review.’”; emphasis added); see also id.
at 75 (“Subsections (a) and (d) [of Section 6 of the AIA] enact new chapters
31 and 32, which create adjudicative systems of post-grant and inter partes
review.”; emphasis added). Thus, when considering a motion to amend, we
do not examine and allow or reject the substitute claims. Instead, we
determine whether the patent owner, as movant, has met its burden of
establishing that it is entitled to the substitute claims that it seeks in its
motion to amend. If we grant or deny the patent owner’s motion, we are not
allowing or rejecting claims, as an examiner would when acting on a patent
application or a request for reexamination during prosecution; rather, we are
entering claims as relief to which the patent owner has proven itself entitled.
In its opposition, Petitioner is responding to Patent Owner’s motion
for the entry of substitute claims that have not before been considered by
Petitioner in this proceeding or by the Office in another proceeding, in lieu
of the challenged claims of the ’558 Patent, upon which we instituted inter
partes review. Consequently, Petitioner is not raising new grounds of
rejection, but is presenting arguments and evidence in opposition to Patent
Owner’s request for relief in its motion to amend.
Similarly, in considering Patent Owner’s motion to amend, we
determine whether Patent Owner has met its burden of demonstrating that it
Case IPR2013-00120
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is entitled to entry of the substitute claims. Neither Patent Owner’s motion
to amend nor its response to Petitioner’s opposition to the motion to amend
discusses (1) the level of ordinary skill in the art, explaining the basic
knowledge and skill set already possessed by one of ordinary skill in the art,
with respect to the new claim limitations or (2) any other prior art known to
Patent Owner. Paper 22, 11-21; Paper 28, 4. Moreover, as noted above,
Patent Owner limits its arguments largely to the references relied upon in the
petition and provides only conclusory remarks with respect to the new
references or combinations of references raised in Petitioner’s opposition to
the motion to amend. Paper 28, 5.
In a prior order, we directed Patent Owner to Idle Free, IPR2012-
00027, Paper 26, as providing guidance on motions to amend. Paper 21, 2-
3. In Idle Free, a panel of the Board advised the patent owner that, in a
motion to amend:
A patent owner should identify specifically the feature or
features added to each substitute claim, as compared to the
challenged claim it replaces, and come forward with technical
facts and reasoning about those feature(s), including
construction of new claim terms, sufficient to persuade the
Board that the proposed substitute claim is patentable over the
prior art of record, and over prior art not of record but known to
the patent owner. The burden is not on the petitioner to show
unpatentability, but on the patent owner to show patentable
distinction over the prior art of record and also prior art known
to the patent owner. Some representation should be made about
the specific technical disclosure of the closest prior art known
to the patent owner, and not just a conclusory remark that no
prior art known to the patent owner renders obvious the
proposed substitute claims.
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A showing of patentable distinction can rely on
declaration testimony of a technical expert about the
significance and usefulness of the feature(s) added by the
proposed substitute claim, from the perspective of one with
ordinary skill in the art, and also on the level of ordinary skill,
in terms of ordinary creativity and the basic skill set. A mere
conclusory statement by counsel, in the motion to amend, to the
effect that one or more added features are not described in any
prior art, and would not have been suggested or rendered
obvious by prior art, is on its face inadequate.

Idle Free, IPR2012-00027, Paper 26, 7-8 (emphases added); see also Idle
Free, IPR2012-00027, Paper 66, 33-38 (denying motion to amend in final
written decision). Yet, in its motion to amend, Patent Owner addresses only
the references asserted in the petition. Paper 22, 11-21; see also Paper 28, 4.
As explained in Idle Free, “[d]istinguishing the proposed substitute claims
only from the prior art references applied to the original patent claims,
however, is insufficient to demonstrate general patentability over prior art.”
Idle Free, IPR2012-00027, Paper 66, 33. Consequently, Patent Owner’s
motion to amend is denied.
2. Obviousness over Teller, Rosen I, and Pawloski
Further, an additional, independent reason for our denial of Patent
Owner’s motion to amend, based on the arguments presented by the parties,
is that Patent Owner has not met its burden to show that proposed substitute
claims 28-31 would not have been obvious over the prior art. As noted
above, we instituted inter partes review of original, independent claims 1,
12, 18, and 26, because we determined that Petitioner had demonstrated a
reasonable likelihood of showing that those claims were rendered obvious
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by Teller and Rosen I. Paper 14, 27. Petitioner now argues that substitute
claims 28-31 are unpatentable as rendered obvious by Teller, Rosen I, and
Pawloski. Paper 25, 18-21. Patent Owner did not file a patent owner
response to the petition. As explained above, in this final decision, we
remain persuaded that Teller and Rosen I teach or suggest all of the
limitations of original claims 1, 12, 18, and 26 of the ’558 Patent, and we
now consider only whether Pawloski teaches or suggests the limitations
added in substitute claims 28-31 and whether Petitioner has shown some
reasoning supported by a rational underpinning for combining the teachings
of Teller and Rosen I with those of Pawloski to achieve the invention recited
in the substitute claims. For the reasons set forth below, we are persuaded
that Teller, Rosen I, and Pawloski render substitute claims 28-31 obvious.
Petitioner argues that Pawloski teaches “a multiple contact jack
assembly of a jack and jack plug having notable utility in telephone
communication systems.” Paper 25, 18 (quoting Ex. 1029, col. 1, ll. 9-11).
Figures 1 and 2 of Pawloski are reproduced below:

Fig. 1 
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In particular, Pawloski’s Figures 1 and 2 depict jack plug element 10
including forward plug element 19 having forward contact 40 and
cylindrically-shaped ring contacts 42. Ex. 1029, col. 2, ll. 1-5. Petitioner
explains that

[c]ylindrical insulators 44 are included in the plug element 19
for providing axially spacing between the contacts 40, 42. A
rear end insulator 46 is also provided. [Ex. 1029, col. 2, ll. 5-
10.] The insulators 44, 46 and the contacts 42 have equal
diameters, whereby “the external surface of the plug is
generally smooth and of generally cylindrical configuration”.
[id. at col. 2, ll. 25-26.]

Paper 25, 18. Consequently, Petitioner contends Pawloski teaches that
insulator 46 is a non-conductive and cylindrical portion of plug element 19.
Id.
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Referring to Figures 1 and 2, wire conductor leads 60-63 extend
through cylindrical insulators 44, 46 to allow electricity to be conducted to
contacts 40, 42. Id. at 19; Ex. 1029, col. 2, ll. 1-11. Thus, Pawloski teaches
equipping jack plug element 10, a male mechanical connector, with a
plurality of contacts and conductor leads. Id. (citing Ex. 1028 ¶ 61).
Therefore, Pawloski teaches or suggests a block comprising a body, which
comprises a non-conductive, male, mechanical connector.
Pawloski’s Figures 3 and 4 are reproduced below:

Referring to Figures 3 and 4, jack 12 is depicted including housing 90 and a
plurality of leads 15-18. Paper 25, 19. Further, housing 90 may be formed
preferably of molded plastic. Ex. 1029, col. 3, ll. 32-34. Referring to Figure
4, Pawloski teaches passage 96 for receiving plug element 19. Leads 15-18
are disposed within passage 96, such that an electrical connection is made
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between contacts 40, 42 and leads 15-18 when jack plug element 10 is
inserted into passage 96. Paper 25, 19; Ex. 1029, col. 3, ll. 50-55. Further,
the shape of passage 96 is cylindrical in order to receive cylindrical, jack
plug element 10. Thus, Pawloski also teaches or suggests a block
comprising a body, which comprises a non-conductive, female, mechanical
connector.
Further, Petitioner contends that, because of the cylindrical shape of
plug element 19 of plug 10, including that of insulator 46, and because of the
point contacts made between contact portions 50 of electrical leads 15-18 of
jack 12 and contacts 40, 42 of plug element 19, plug 10 is rotatable relative
to jack 12. Paper 25, 20. In particular, Petitioner contends that insulator 46
of plug 10 and non-conductive, cylindrical portion of housing 90 of jack 12
are interconnectable mechanically at any degree of rotation about their
common longitudinal axis. Id.; see Ex. 1029, col. 3, ll. 15-29 (describing
cylindrical ring contacts 42). Consequently, the respective electrical
conductors of plug 10, namely contacts 42, and of jack 12, namely contact
portions 50, adjoin each other in an electrically conductive manner,
regardless of the degree of rotation between plug 10 and jack 12. Id. (citing
Ex. 1028 ¶ 63).
In its reply, Patent Owner does not challenge Petitioner’s assessment
of the teachings of these references, or dispute that all of the limitations of
the substitute claims are taught in the combined references.
Petitioner contends that Teller and Pawloski address similar problems.
See Paper 25, 21 n.3. Teller states that “[m]any different types of electrical
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connectors could be used. For example, instead of using a separate
connector for each pole, a single bipolar connector, similar to a telephone
jack, could be utilized.” Ex. 1006, col. 3, ll. 5-8 (emphasis added).
Pawloski discloses “a multiple contact jack assembly of a jack and jack plug
having notable utility in telephone communications systems.” Ex. 1029, col.
1, ll. 9-11 (emphasis added). Petitioner contends that Pawloski’s plug and
jack assembly is the same type of “telephone jack” taught in Teller. Paper
25, 21 n.3. Petitioner contends, therefore, that a person of ordinary skill in
the art would have had reason to combine the teachings of these three
references to achieve the invention recited in substitute claims 28-31. Id. at
21.
Patent Owner argues that “with the exception of Robb, none of the
additional references teaches or suggests any particular suitability for
connecting toy building structures and are largely addressed by Patent
Owner’s existing remarks on other references of record.” Paper 28, 5
(emphasis added). As noted in Section II.A.1 above, however, we do not
determine that the substitute claims are limited to recitations of toy building
blocks.8 As the U.S. Supreme Court explained,

8 Patent Owner argues that Rosen II, which is assigned to Petitioner, is
evidence of copying, which is an objective consideration arguing against a
determination of obviousness. Paper 28, 4. Patent Owner, however, fails to
explain this argument in any detail or show, on a limitation-by-limitation
basis, that Petitioner copied Patent Owner’s claimed invention in its blocks
disclosed in Rosen II. See Paper 14, 8-9. Therefore, we are not persuaded
by Patent Owner’s arguments regarding secondary considerations.
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[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (emphasis added).
Because we are persuaded that Petitioner has demonstrated that Teller,
Rosen I, and Pawloski teach or suggest all of the limitations of substitute
claims 28-31 and that a person of ordinary skill in the art would have had
reason to combine the teachings of these references in the manner proposed
by Petitioner to achieve the recited blocks and block sets, we determine that
Patent Owner fails to meet its burden of showing that it is entitled to the
relief requested in its motion to amend. See Paper 36, 32-33. Consequently,
in addition to Patent Owner’s failure to address references other than those
asserted in the Petition, Patent Owner’s motion to amend also is denied for
failing to demonstrate that the substitute claims are patentable over Teller,
Rosen I, and Pawloski.
D. Petitioner’s Motion to Exclude
On February 18, 2014, Petitioner filed a motion seeking to exclude
Rosen II (Ex. 2001), which Patent Owner submitted on September 27, 2013,
in support of its motion to amend. Paper 29, 1. Patent Owner argues that
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Rosen II discloses a “non-conductive connection” similar to that recited in
proposed substitute claims 28-31. Paper 22, 15-16. Petitioner argues that
Rosen II is irrelevant to this proceeding, because: (1) Rosen II “discloses and
claims an invention that is structurally and functionally different from the
’558 Patent,” (2) the Office held the claims of Rosen II were patentably
distinguishable over the disclosure of the ’558 Patent, which was cited
during the prosecution of Rosen II, and (3) Rosen II “was based on a
December 2011 provisional application, and is thus not relevant to an
obviousness analysis of the ’558 Patent, which has an earlier filing date (i.e.,
August 15, 2007).” Paper 29, 2-3.
As noted above, we do not rely on Rosen II in denying Patent Owner’s
motion to amend. See supra n.7. Moreover, Patent Owner points to some
alleged similarity between the invention claimed in Rosen II and Patent
Owner’s invention, as recited in the substitute claims, and makes allegations
that Petitioner had access to a product embodying Patent Owner’s claimed
invention before the filing date of the Rosen II application. Patent Owner,
however, fails to provide persuasive evidence that Petitioner copied Patent
Owner’s invention. See Paper 22, 15-16 (“Petitioner (now) expressly
recognizes the functional advantage achieved by interconnected cylindrical
non-conductive components . . . which renders the proposed substitute
claims patentable over the prior art.”); Paper 32, 2-4 (“Indeed, part of the
relevance of [Rosen II] teaching the same male-female non-conductive block
interface that appears in the proposed substitute claims is precisely because
it was not filed until well after Petitioner learned of Patent Owner’s
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invention.”); see also Paper 36, 13-14 (Patent Owner alleges that Petitioner
saw a product embodying features recited in the substitute claims at the New
York Toy Fair before the priority date of Rosen II).
Thus, the current situation does not require us to assess the merits of
Petitioner’s motion to exclude. Accordingly, Petitioner’s motion to exclude
evidence is dismissed as moot.
III. CONCLUSION
For the reasons set forth above, we determine that claims 1-27 of the
’558 Patent are unpatentable. In its motion to amend, Patent Owner has not
met its burden of establishing the patentability of the substitute claims.
Therefore, we deny the motion to amend. This is a final decision. Parties to
the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1-27 of the ’558 Patent are determined to be
unpatentable;
FURTHER ORDERED that Patent Owner’s motion to amend is
denied; and
FURTHER ORDERED that Petitioner’s motion to exclude evidence
is dismissed.
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FURTHER ORDERED that, because this is a final written
decision, parties to the proceeding seeking judicial review of the decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Ralph W. Selitto, Jr.
John K. Kim
GREENBERG TRAURIG, LLP
selittor@gtlaw.com
kimjo@gtlaw.com

PATENT OWNER:

Justin R. Sauer
Robert H. Thornburg
ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A.
jsauer@addmg.com