MOTOROLA MOBILITY LLCv.ARNOUSE DIGITAL DEVICES CORPORATION and MICHAEL ARNOUSE

Patent Trial and Appeal Board

Feb 11, 2014

12099032 (P.T.A.B. Feb. 11, 2014)

Trials@uspto.gov Paper 45
571-272-7822 Entered: February 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC
Petitioner

v.

ARNOUSE DIGITAL DEVICES CORPORATION and
MICHAEL ARNOUSE
Exclusive Licensee and Patent Owner
____________

Case IPR2013-00010
Patent 7,516,484
____________

Before MICHAEL P. TIERNEY, JONI Y. CHANG and
WILLIAM V. SAINDON, Administrative Patent Judges.

CHANG, Administrative Patent Judge.

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

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INTRODUCTION
On October 2, 2012, Motorola Mobility LLC (“Motorola”) filed
a petition requesting an inter partes review of U.S. Patent No. 7,516,484
(“the ’484 patent”). Paper 2 (“Pet.”). Arnouse Digital Devices Corporation
and Michael Arnouse (collectively “ADDC”) filed a patent owner
preliminary response. Paper 14 (“Prelim. Resp.”). Taking into account
ADDC’s preliminary response, the Board determined that the information
presented in Motorola’s petition demonstrated that there was a reasonable
likelihood that Motorola would prevail with respect to at least one
challenged claim. Pursuant to 35 U.S.C. § 314, the Board instituted this trial
on February 12, 2013, as to claims 1, 3, 7, 15, 16, 18, and 20 of the ’484
patent. Paper 21 (“Dec.”).
During the trial, ADDC filed a patent owner response (Paper 33,
“PO Resp.”), and Motorola filed a reply (Paper 39, “Reply”). No oral
hearing was held. Paper 43.
The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is a
final written decision under 35 U.S.C. § 318(a) as to the patentability of the
involved claims. We hold that claims 1, 3, 7, 15, 16, 18, and 20 of the ’484
patent are unpatentable under 35 U.S.C. § 102.
A. Related Proceedings
Motorola indicates that the ’484 patent is the subject of litigation
styled Arnouse Digital Devices Corp. v. Motorola Mobility, Inc., No. 5:11-
cv-00155-cr (D. Vt.). Pet. 2.
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B. The ’484 Patent
The ’484 patent describes a reader adapted for a portable computer.
Ex. 1001, Abs. According to the ’484 patent, when the reader and portable
computer are connected together, the combined system becomes a fully
functional personal computer. Id. By itself, without connecting to the
portable computer, the reader is a non-functioning “shell” that includes at
least one input device and at least one output device, such as a keyboard and
a display. Id. A user cannot interact with the portable computer without the
reader. Id.
Figure 4, reproduced below, shows an embodiment of the ’484 patent.

Figure 4 illustrates a portable computer and a plurality of readers.

As shown in Figure 4, a plurality of readers may be located at various
locations so that a user may use the portable computer in those remote
locations. Id. at 6:59-7:6. The main function of the readers is to allow a
user to interact with the portable computer. Id.
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C. Exemplary Claim
Of the involved claims, claims 1 and 15 are the only independent
claims. Claims 3 and 7 depend from claim 1, and claims 16, 18, and 20
depend from claim 15. Claim 15 is exemplary of the claimed subject matter
of the ’484 patent, and is reproduced below (emphasis added):
15. A computing system comprising:
at least one portable computer, each comprising:
storage; and
at least one connector for connecting to at least one
reader;
at least one reader, each comprising:
an input device;
an output device; and
a connector for connecting to the at least one portable
computer,
wherein the portable computer excludes means for a user to
interact directly with the portable computer,
wherein the reader and portable computer are configured to
become a fully functioning computer when connected,
wherein the readers are configured so that they will not
operate with a computer other than a portable computer of the
system, and
wherein the reader is configured to be a non-functioning
shell when not connected to the portable computer.
D. Prior Art Relied Upon
Motorola relies upon the following prior art references:
Kobayashi US 5,463,742 Oct. 31, 1995 (Ex. 1003)
Nelson US 5,436,857 July 25, 1995 (Ex. 1004)
Jenkins US 6,029,183 Feb. 22, 2000 (Ex. 1005)
Warren US 6,999,792 B2 Feb. 14, 2006 (Ex. 1006)

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E. Grounds of Unpatentability
The Board instituted the instant trial based on the following grounds
of unpatentability:
Claims Basis References
1, 3, 7, 15, 16, 18, and 20 § 102(b) Kobayashi
1, 3, 7, 15, 16, 18, and 20 § 102(b) Nelson

ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
reasonable construction 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).
1. “connector for connecting”
The phrase “connector for connecting” appears in claims 1 and 15.
For example, claim 15 recites “at least one portable computer, each
comprising . . . at least one connector for connecting to at least one reader”
and “at least one reader, each comprising . . . a connector for connecting to
the at least one portable computer.” Essentially, the claim phrase “connector
for connection” is recited in two claim limitations: (1) a portable computer
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connector for connecting a portable computer to a reader; and (2) a reader
connector for connecting a reader to a portable computer.
Through its arguments concerning the instituted grounds of
unpatentability, ADDC attempts to import improperly a limitation—a reader
slot or hole—from an embodiment described in the specification into the
claims. PO Resp. 15. For the reasons stated below, we decline to import
that limitation into the claim phrase “connector for connecting.” In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (We must be careful not to
read limitations from a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment.)
In support of its contentions, ADDC directs our attention to the
following portions of the specification of the ’484 patent (PO Resp. 14-15):
The readers also comprise at least one connector for attaching
the portable computer to the reader. In one embodiment, the
connector is attached to the housing of the portable computer
readers. In the embodiments shown in FIGS. 4-7, the connector
is within a slot or hole for receiving the portable computer.
The slot may be located anywhere on the reader, for example,
on the keyboard, as shown in FIG. 4 or on the monitor, as
shown in FIG. 5.
Ex. 1001, 7:59-66 (emphasis added by ADDC).
“Connecting” refers to being attached or in communication with
the portable computer reader by being affixed to, stored within
or in operable communication with the portable computer
reader.
Id. at 6:35-38.
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ADDC argues that the broadest reasonable interpretation of the claim
phrase “a connector for connecting” includes the embodiment of a reader
having a slot or hole with a connector therein, as shown in Figures 4
through 7. PO Resp. 15. According to ADDC, “this configuration is clearly
contemplated by the patentee as a desirable place for the connector.” Id.
In particular, ADDC alleges (id. n.3):
It should be readily apparent that, if the connector is designed
to be inside the slot, the portable computer and reader are
necessarily designed to accommodate this feature.
Unremarkably, in order for . . . any two devices to be
connected, the devices each must have conforming designs to
allow for the connection.
We are not persuaded by ADDC’s arguments, as they fail to recognize
that the specification discloses other embodiments in which a reader is
connected to a portable computer without using a reader slot or hole. For
example, in one embodiment, the portable computer connector is attached
merely to the housing of the readers. Ex. 1001, 7:60-62. The reader
connector is configured to mate with a universal connector on the portable
computer. Id. at 6:37-42; 7:66-8:2. In another example, as shown in
Figures 4 through 6, the connector includes a wireless connection between
the portable computer and reader—the portable computer has a wireless
transmitter, and the reader has a receiver, or vice versa. Id. at 6:42-46. As
described in the specification, the connection between a portable computer
and a reader does not include necessarily a reader slot or hole. Therefore,
we do not import the limitation of a reader slot or hole, as urged by ADDC,
from the specification into the claims.
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Even in cases where the specification describes only a single
embodiment, we do not construe necessarily the claims as being limited to
that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d
1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or
all of the embodiments, contain a particular limitation.). Moreover, we
decline to add limitations into the claims in absence of a special definition
set forth in the specification. An inventor may set out a definition and act as
its own lexicographer by providing a definition of the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, ADDC has not alleged
that the inventor of the ’484 patent acted as his own lexicographer and
provided a special definition in the specification for the claim term
“connector” or the claim phrase “connector for connecting” that is different
from its recognized meaning to one with ordinary skill in the art.
In light of the specification and in the context of the claims, we
construe the claim phrase “connector for connecting” broadly, but
reasonably, as a device or configuration that establishes a wireless or
physical communication connection between a reader and a portable
computer.
2. “wherein the readers are configured so that they will not operate with
a computer other than a portable computer of the system”
Claims 1 and 15 each recite this “reader configuration” limitation.
ADDC, through its arguments concerning the grounds of unpatentability,
alleges that the “reader configuration” limitation requires that “the portable
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computers and readers are matched via security protocols so as to eliminate
the possibility of access to the portable computers by just any reader.” PO
Resp. 22 (emphasis added). We disagree with ADDC, as such a
construction would import improperly a limitation from the specification
into the claims. Van Geuns, 988 F.2d at 1184. We do not find any special
definition of the claim terms, set forth in the specification, that would
require matching security protocols, and ADDC has not identified one.
Motorola points out that the claim construction urged by ADDC in the
instant proceeding is narrower than the one advocated by ADDC in the
related district court litigation. Reply 3-4, 8. The chart below compares
ADDC’s proposed claim construction submitted in the instant inter partes
review (“IPR”), with ADDC’s claim construction submitted in the related
district court litigation (PO Resp. 22; Ex. 1013 at 4, col. 3, row 2 (emphases
added)):
Claim Limitation
ADDC’s proposed
construction in the instant
IPR proceeding
ADDC’s construction
submitted in the
related district court
litigation
“wherein the readers
are configured so
that they will not
operate with a
computer other than
a portable computer
of the system”
“the portable computers
and readers are matched
via security protocols
so as to eliminate the
possibility of access to
the portable computers
by just any reader.”
“the reader has a non-
universal design that
limits the types of
portable computers
that may be used with
the reader.”

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We observe that ADDC’s claim construction for the “reader
configuration” limitation submitted in the instant proceeding is overly
narrow. In fact, ADDC’s claim construction submitted in the related district
court litigation is broader and does not require matching security protocols.
Ex. 1013 at 4, col. 3, row 2. The “reader configuration” limitation is
concerned with the types of portable computers being used with the reader,
as opposed to the reader’s security protocol.
In support of its position, ADDC argues that the patentee invented the
computer system to overcome problems in the prior art regarding
information security breaches and virus transmission. PO Resp. 20. ADDC
also cites portions of the specification for support. Id. at 17-18. We have
reviewed those portions of the specification cited by ADDC, and observe
that they do not support ADDC’s contention that the “reader configuration”
limitation requires matching security protocols. The cited portions of the
specification are directed to an exemplary embodiment. See, e.g., Ex. 1001,
5:19-31 (“The portable computer may also comprise a GPS chip, a
specialized reader contact, a logic element, a smart card device, and RFID
crypto memory” (emphasis added).); 5:45-59 (“[T]he portable computer may
include security information in the software. . . . Preferably, the portable
computer reader or computer would comprise means for reading the
biometric information . . .” (emphases added).).
ADDC’s arguments also fail to take into account other embodiments
—the design of the interface, communication protocols, and software
configuration—that do not include matching security protocols. Id. at 6:16-
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21; 6:50-58; 7:62-64, 7:66-8:1; Figs. 4-7. Moreover, the specification
explicitly warns that the invention disclosed in the ’484 patent is not limited
to any specific exemplary embodiment described in the specification. Id. at
13:1-6 (“Although the invention has been described in terms of exemplary
embodiments, it is not limited thereto. Rather, the appended claims should
be construed broadly to include other variants and embodiments of the
invention . . . .” (emphasis added).).
The claim language itself—“not operate with a computer other than a
portable computer of the system”—is broad, and is not limited to a specific
reader configuration. We decline to construe the “reader configuration”
limitation to require matching security protocols, as urged ADDC, which
would limit improperly the claims to a preferred embodiment described in
the specification. Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383
F.3d 1352, 1366 (Fed. Cir. 2004) (expressly rejecting the contention that
claims must be construed as being limited to an embodiment disclosed in the
patent).
For the foregoing reasons, we construe the “reader configuration”
limitation as the readers each having a non-universal design that limits the
types of portable computers that may be used with the reader.
3. “means for a user to interact directly with the portable computer”
The “means for interacting” limitation appears in claims 1, 15, and 18.
For example, claim 15 recites “wherein the portable computer excludes
means for a user to interact directly with the portable computer.”
We determine that the “means for interacting” claim limitation is a means-
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plus-function claim limitation that invokes 35 U.S.C. § 112, ¶ 6.1
We observe that: (1) the limitation uses the term “means for”; (2) the term
“means for” is modified by functional language; and (3) the term “means
for” is not modified by any structure recited in the claim to perform the
claimed function. Personalized Media Commc’ns LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998) (A limitation that uses the
term “means for” which creates a rebuttable presumption that the drafter
intended to invoke 35 U.S.C. § 112, ¶ 6.); Sage Prods., Inc. v. Devon Indus.,
Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997) (The presumption is not
rebutted if the term “means for” is modified by functional language, and it is
not modified by any structure recited in the claim to perform the claimed
function.).
We identify the claimed function for this limitation to be “for a user to
interact directly with the portable computer.” Based on the specification of
the ’484 patent, the corresponding structure that performs the recited
function is a component that allows a user to provide information to, or
receive information from, the portable computer, directly—e.g., a keyboard,
keypad, display, or voice input device, on the portable computer. See, e.g.,
Ex. 1001, 5:63-6:31.

1 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C.
§ 112(f). We refer to the pre-AIA version of 35 U.S.C. § 112, because the
’484 patent has a filing date before September 16, 2012 (effective date).
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4. “the portable computer excludes means for a user to interact directly
with the portable computer”
Motorola seeks the claim construction of this “excluding” limitation,
which appears in claim 15. Pet. 39-42. In the related district court
proceeding, ADDC construed this “excluding” limitation as:
By itself the portable computer cannot provide information to a
user or receive information from a user. In other words, the
portable computer needs the reader for the user to interact with
the programs, hardware, and user information of the portable
computer.
Ex. 1013 at 6, col. 3, row 2 (emphasis added).
Motorola submitted the same construction—“[b]y itself the portable
computer cannot provide information to a user or receive information from a
user.” Ex. 1013 at 6, col. 2, row 2. As that construction also is consistent
with the specification of the ’484 patent and the plain meaning of the claim
terms, we adopt it as the broadest reasonable construction for the
“excluding” limitation. See, e.g., Ex. 1001, 5:63-6:31.
5. Preamble of claim 1
The claim language “the portable computer excludes means for a user
to interact directly with the portable computer” similarly is recited in the
preamble of claim 1— “a portable computer without input and output means
for interacting directly therewith.” In general, a preamble limits the
invention if it recites essential structure or steps, or if it is “necessary to give
life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Here, the preamble of
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claim 1 is entitled to patentable weight as it recites additional structure that
is not included in the claim body. As the claim construction chart submitted
by the parties in the related district court litigation shows, the parties agree
that the preamble of claim 1 is limiting. Ex. 1013 at 1, col. 1-3, row 1.
B. Anticipated by Kobayashi
Motorola asserts that the challenged claims are unpatentable under
35 U.S.C. § 102(b) as anticipated by Kobayashi. Pet. 6. Motorola provides
explanations as to how each limitation is met by Kobayashi. Id. at 6-13.
Upon review of Motorola’s analysis and ADDC’s patent owner response, we
determine that Motorola has demonstrated, by a preponderance of the
evidence, that claims 1, 3, 7, 15, 16, 18, and 20 are anticipated by
Kobayashi.
To establish anticipation, each and every element in a claim, arranged
as is recited in the claim, must be found in a single prior art reference. Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
1. Overview of Kobayashi
Kobayashi discloses a single user computer system that can be
separated into two parts: (1) a personal processor module (PPM) that can be
easily transported, which Motorola equates to as a “portable computer”
(Pet. 7); and (2) a docking station that includes input and output devices
such as a keyboard and a display, which Motorola equates to as a “reader”
(id.). Ex. 1003, 3:9-17. The user gains access to the computer system by
connecting the PPM to the docking station. Id. at 3:24-31. Each PPM has a
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processor with related logic, memory (RAM/ROM/CACHE MEMORY),
and a mass storage device. Id. at 3:40-47. The PPM accommodates the
hardware and software related to personal processing capability, the
customized operating system, the graphic user interface, and the application
software. Id. at 3:18-23.
Figure 1 of Kobayashi is reproduced below:

Figure 1 of Kobayashi illustrates several PPMs and docking stations.
As shown in Figure 1 of Kobayashi, PPM 2 does not contain user
interface input or output devices. Id. at 3:53-55. Therefore, PPM 2 always
needs a docking station to allow user interaction. Id. at 6:37-39.
According to Kobayashi, the PPM works once it is connected to a
docking station through a multi-connector. Id. at 3:54-60. The docking
station has physical connector 24 that interfaces with PPM connector 22. Id.
at 5:64 to 6:1. The docking station is configured specifically to interact with
the PPM. Id. at Fig. 2.
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The docking station includes a housing, the input and output devices
(e.g., keyboard and display), and the interfaces to those devices. Id. at 4:2-5.
For example, Figure 1 of Kobayashi shows computer notebook 4 where the
input device of the docking station comprises a keyboard and the connector
is contained on the keyboard. Id. at Fig. 1. The docking station does not
include a processor, the application software, and operating system, but
rather these components are supplied by the PPM. Id. at 5:55-63; 6:14-26.
2. Discussion
The explanations provided by Motorola as to how each claim
limitation of the challenged claims is met by Kobayashi have merit.
Pet. 6-14. ADDC counters that Kobayashi fails to describe the “reader
configuration” claim limitation—“wherein the readers are configured so that
they will not operate with a computer other than a portable computer of the
system”—as required by claims 1, 3, 7, 15, 16, 18, and 20. PO Resp. 23-24.
In particular, ADDC alleges that the “reader configuration” limitation
requires that “the portable computers and readers are matched via security
protocols so as to eliminate the possibility of access to the portable
computers by just any reader.” Id. at 22 (emphasis added). ADDC contends
that Kobayashi does not describe matching security protocols. Id. at 22-23.
ADDC’s arguments are unavailing, as they are not commensurate
with the scope of the claims. Specifically, they are premised on an overly
narrow claim construction of the “reader configuration” limitation, requiring
matching security protocols (id. at 22). As discussed above, we decline to
adopt such an overly narrow construction, because it would import
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limitations from the specification into the claims, improperly limiting the
claims to a preferred embodiment. Rather, we construe the “reader
configuration” limitation as the readers each having a non-universal design
that limits the types of portable computers that may be used with the reader.
In its petition, Motorola asserts that Kobayashi meets the “reader
configuration” claim limitation. Pet. 10. Motorola points out that
Kobayashi discloses that “[t]he PPM works after being connected to the
docking stations through a multi-connector and is capable of being
connected to several types of docking stations such as desktop, desk side or
portable depending on the task to be undertaken by the user.” Id. (citing
Ex. 1003, 3:55-60).
We agree with Motorola, as its assertion is supported by a
preponderance of the evidence. Indeed, Kobayashi describes a docking
station that limits the types of computers that may be used with the docking
station. See, e.g., Ex. 1003, 3:55-60. For instance, Kobayashi describes that
the PPM and docking station are connected together by a processor
independent of connection, such as the PC Peripheral Component
Independent (PCI) Bus. Id. at 3:12-15.
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Figure 2 of Kobayashi is reproduced below (emphasis added):

Figure 2 of Kobayashi illustrates the relationship
between a PPM and a docking station.

As shown in Figure 2 of Kobayashi, docking station 3 includes local
bus 33 for communicating across the interface. Ex. 1003, 5:64-6:1. Local
bus 33 includes physical connector 24 for connecting docking station 3 with
PPM 2. Id. Similarly, PPM 2 includes connector 22 for connecting PPM 2
with docking station 3. Id. at Fig. 2.
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Figures 18 and 19 of Kobayashi are reproduced below (emphasis
added):

Figures 18 and 19 of Kobayashi depict a docking station and
the physical mechanisms that are used to move and lock the
PPM in the docking station.

As shown in Figures 18 and 19, PPM 2 is inserted into docking station
130. Id. at 10:7-8. More specifically, PPM 2 is inserted inside front wall
132 of docking station 130 and between arms 134 and 136, which will be
moved laterally by motor 138 to grasp the sides of PPM 2 and hold it in
docking station 130 while the PPM is activated. Id. at 10:8-13. PPM
connector 22 extends slightly beyond the end of PPM 2 so that it may
interface with connector 24 in the docking station. Id. at 10:18-20.
Clearly, Kobayashi’s docking station is configured physically so that it will
not operate with a computer other than a PPM that has the appropriate
configuration.
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ADDC also alleges that Kobayashi’s connectors do not meet the
“reader configuration” limitation, because they are the same features relied
upon by Motorola for meeting the “connector for connecting” claim
limitations—(1) a portable computer connector for connecting the portable
computer to a reader; and (2) a reader connector for connecting the reader to
a portable computer (claims 1 and 15). PO Resp. 23-24. According to
ADDC, when the claim phrase “connector for connecting” is construed to
require a reader having a slot or hole, Kobayashi’s connectors merely meet
the “connector for connecting” limitations, and not the “reader
configuration” limitation. Id. at 22-24.
ADDC’s arguments are inapposite because they are premised on an
overly narrow claim construction of the claim phase “connector for
connecting,” requiring a reader slot or hole (id. at 15). As we discussed
above in the claim construction section, we decline to adopt such an overly
narrow construction, because it would import limitations improperly from
the specification into the claims. Rather, we construe the claim phrase
“connector for connecting” as a device or configuration that establishes a
wireless or physical communication connection between a reader and a
portable computer.
Although Kobayashi discloses a docking station having a slot (see,
e.g., Ex. 1003, Fig. 18), that feature is not needed to meet the “connector for
connecting” limitations. According to Motorola, Kobayashi meets the
“connector for connecting” limitations because Kobayashi discloses a
docking station that has a multi-connector that connects to a PPM with a
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mating multi-connector. Pet. 8, 10 (citing Ex. 1003, 3:55-58). We agree
with Motorola. As noted above, Figures 2 and 19 of Kobayashi illustrate
that docking station 3 includes connector 24 for connecting docking station
3 with PPM 2, and PPM 2 includes connector 22 for connecting PPM 2 with
docking station 3. Ex. 1003, 5:64-6:1, Figs. 2, 19.
For the reasons stated above, we agree with Motorola that Kobayashi
discloses all of the limitations of claims 1 and 15, including the “reader
configuration” limitation and the “connector for connecting” limitations.
ADDC’s arguments are directed to independent claims 1 and 15, and
ADDC does not address dependent claims 3, 7, 16, 18, and 20 with separate,
specific arguments. PO Resp. 24. As to dependent claims 3, 7, 16, 18, and
20, Motorola provides sufficient evidence to show that Kobayashi discloses
the additional recited limitations in those claims. Pet. 10-14. For example,
with respect to claim 3 (which requires a keyboard and display),
Kobayashi’s docketing stations each, as shown in Figure 1, have a keyboard
and display. As another example, claim 18 recites “wherein the computer
comprises substantially all of the components of a fully functional general
purpose computer excluding means for a user to interact with the computer.”
As illustrated in Figures 1 and 2 of Kobayashi, PPM 2 has all of the
components of a fully functional, general purpose computer (e.g., CPU 10,
Memory 19, and Battery 18), but it does not include input and output devices
for a user to interact directly with PPM 2 (e.g., a keyboard and display).
Ex. 1003, 3:53-55; 6:3-39.
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For the foregoing reasons, we hold that Motorola has demonstrated,
by a preponderance of the evidence, that claims 1, 3, 7, 15, 16, 18, and 20
are anticipated by Kobayashi.
C. Anticipated by Nelson
Motorola asserts that the challenged claims are unpatentable under
35 U.S.C. § 102(b) as anticipated by Nelson. Pet. 14. Motorola provides
explanations as to how each limitation is met by Nelson. Id. at 14-23.
Upon review of Motorola’s analysis and ADDC’s patent owner response, we
determine that Motorola has demonstrated, by a preponderance of the
evidence, that claims 1, 3, 7, 15, 16, 18, and 20 are anticipated by Nelson.
1. Overview of Nelson
Nelson describes a personal computer module system that has two
separable parts: (1) the processor module, which Motorola equates to as the
“portable computer” (Pet. at 14); and (2) a PC base unit, which Motorola
equates to as the “reader” (id. at 14-15). Ex. 1004, 1:37-52.
Figure 2 of Nelson is reproduced below:

Figure 2 of Nelson illustrates a PC base unit and a processor module.
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As depicted in Figure 2 of Nelson, PC base unit 36 includes a
housing, display 38, keyboard 40, base unit 12, and receptacle 42 that is
configured to receive processor module 10. Ex. 1004, 2:51-63. Processor
module 10 may be inserted into PC base unit 36 to enable operations of the
combined units as a complete data processing system. Id. Processor module
10 includes processor 14, memory 16, hard disk unit 18, system controller
20, and interface 22. Id. at 2:25-30.
Figure 1 of Nelson is reproduced below:

Figure 1 of Nelson depicts a processor module and a PC base unit.
As shown in Figure 1, processor module 10 does not include input and
output devices for a user to interact directly with processor module 10.
Further, PC base unit 12 does not include a processor, system controller, and
memory, and therefore it could not function when it is not connected to
processor module 10.
2. Discussion
The explanations provided by Motorola as to how each claim
limitation of the challenged claims is met by Nelson have merit. Pet. 14-23.
ADDC counters that Nelson does not describe the “reader configuration”
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limitation, as required by 1, 3, 7, 15, 16, 18, and 20 claims. PO Resp. 13-23.
ADDC argues that the “reader configuration” limitation requires that “the
portable computers and readers are matched via security protocols so as to
eliminate the possibility of access to the portable computers by just any
reader.” PO Resp. 22 (emphasis added). ADDC also argues that the claim
phrase “connector for connecting” requires a reader slot or hole. Id. at 15.
Applying its proposed claim constructions submitted in the instant
proceeding, ADDC maintains that Nelson does not disclose matching
security protocols to prevent unauthorized access to the data on the
processor module. Id. at 22. According to ADDC, Motorola has rendered
the disputed limitation “superfluous by construing it to have the exact same
scope and meaning as the element ‘connectors for connecting.’” Id. at 13.
We are not persuaded by ADDC’s arguments, as they are not
commensurate with the scope of the claims. Further, ADDC’s arguments
are based on an unduly narrow construction of the “reader configuration”
limitation, requiring matching security protocols, and based on an improper
interpretation of the claim phrase “connector for connecting,” requiring a
reader slot or hole. As discussed above, we decline to adopt those overly
narrow claim constructions, because they would import limitations from the
specification into the claims, improperly limiting the claims to a preferred
embodiment.
In its petition, Motorola asserts that Nelson meets the “reader
configuration” claim limitation. Pet. 17-18. Motorola notes that Nelson’s
base unit is configured so that it will not operate with a computer other than
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a portable module of the system. Id. (citing Ex. 1004, 2:30-34; 2:57-63;
2:27-29; Figs. 2-3). Specifically, Motorola notes that Nelson’s processor
module is packaged in a case that enables it to be installed and locked into a
PC base unit, a host device. Pet. 17 (citing Ex. 1004, 2:30-34). Motorola
asserts that “for the module to include functionally to be ‘optionally locked
into a host device,’ it would require a design that is specific to that host
device, or . . . specific to that type of host device.” Id.
We agree with Motorola, as its assertions are supported by a
preponderance of the evidence. Indeed, Nelson describes a PC base unit that
limits the types of computers that may be used with the PC base unit. See,
e.g., Ex. 1004, 2:30-34 (“The module is packaged in a case which provides
mechanical modularity which enables it to be installed and optionally locked
into a host device.”); 2:54-63 (“The portable PC 36 includes . . . a receptacle
42 which is appropriately configured to receive the module 10. As
represented by double-headed arrow 44 in FIG. 2, the module 10 may be
readily moved into and out of the housing of portable PC 36 . . . .”).
As to ADDC’s argument regarding the claim phrase “connector for
connecting” (PO Resp. 13-16), we are not persuaded. Although Nelson
discloses a PC base unit having a receptacle (i.e., a slot or hole) configured
to receive a processor module (Ex. 1004, 2:56-57; Fig. 2), that feature is not
needed to meet the “connector for connecting” limitations. As shown in
Figure 1 of Nelson, processor module 10 has interface 22 that enables
processor module 10 to be coupled with PC base unit 12 (i.e., a portable
computer connector for connecting the portable computer to a reader). Id. at
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2:27-29. Similarly, Nelson’s PC base unit 12 has interface 26 that engages
interface 22 to couple the PC base unit with processor module 10 (i.e., a
reader having a connector for connecting to a computer). Id. at 2:35-37.
For the reasons provided above, we agree with Motorola that Nelson
describes all of the limitations of claims 1 and 15, including the “reader
configuration” limitation and the “connector for connecting” limitations.
ADDC’s arguments are directed to independent claims 1 and 15, and
ADDC does not address dependent claims 3, 7, 16, 18, and 20 with separate,
specific arguments. PO Resp. 22-23. As to dependent claims 3, 7, 16, 18,
and 20, Motorola provides sufficient evidence to show that Nelson discloses
the additional recited limitation in those claims. Pet. 14-23. For example, as
to claim 3 (which requires a keyboard and display), Nelson’s PC base unit
includes a keyboard and display (Ex. 1004, 2:54-55, Fig. 2). As another
example, claim 18 recites “wherein the computer comprises substantially all
of the components of a fully functional general purpose computer excluding
means for a user to interact with the computer.” As shown in Figures 1 and
2 of Nelson, processor module 10 includes all of the components of a fully
functional general purpose computer (e.g., processor 14, system controller
20, and memory 16), but it does not include input and output devices for a
user to interact directly with processor module 10 (e.g., a keyboard and
display).
For the foregoing reasons, we hold that Motorola has demonstrated,
by a preponderance of the evidence, that claims 1, 3, 7, 15, 16, 18, and 20
are anticipated by Nelson.
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CONCLUSION
Motorola has met its burden of proof, by a preponderance of the
evidence, in showing that claims 1, 3, 7, 15, 16, 18, and 20 of the ’484 patent
are unpatentable based on the following grounds of unpatentability:
A. Claims 1, 3, 7, 15, 16, 18, and 20 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Kobayashi; and
B. Claims 1, 3, 7, 15, 16, 18, and 20 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Nelson.
ORDER
In consideration of the foregoing, it is
ORDERED that claims 1, 3, 7, 15, 16, 18, and 20 of the ’484 patent
are CANCELLED.

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PETITIONER:

Ko-Fang Chang,
Steven D. Moore,
KILPATRICK TOWNSEND & STOCKTON LLP
kchang@kilpatricktownsend.com
smoore@kilpatricktownsend.com

PATENT OWNER:

Justin W. McCabe
Geoff Hand
DUNKIEL SAUNDERS ELLIOTT RAUBVOGEL & HAND PLLC
jmccabe@dunkielsaunders.com
ghand@dunkielsaunders.com