PTAB

IPR2015-00779

Esselte Corp v. Dymo BVBA

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Tape Printing Apparatus
  • Brief Description: The ’623 patent relates to a tape printing apparatus with a print head that moves between a first printing position, a second non-printing position, and a third intermediate position. The invention centers on a "moving means" that automatically shifts the print head from the third (intermediate) position to the first (printing) position.

3. Grounds for Unpatentability

Ground 1: Obviousness over Thom - Claims 19-21 and 28 are obvious over Thom

  • Prior Art Relied Upon: Thom (Patent 5,424,757).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Thom, by itself, discloses a thermal tape printer that meets every limitation of the challenged claims. Thom teaches a print head that moves between an operative (first) position and an inoperative (second) position. The movement is controlled by a linkage coupled to the printer’s lid, and an intermediate (third) position necessarily exists between the fully open and closed states. Petitioner asserted that Thom’s cam-and-spring mechanism, actuated by closing the lid, constitutes the claimed "moving means," "biasing means," and "spring" that automatically moves the print head from the intermediate position to the printing position. The mechanism also functions as an "over-center mechanism" as it provides positive spring action to hold the lid in either the open or closed position.
    • Motivation to Combine (for §103 grounds): As this ground relied on a single reference, the argument was that Thom’s teachings alone, when viewed by a person of ordinary skill in the art (POSITA), would have rendered the claims obvious. The ’623 patent itself cited a European counterpart to Thom as known background art, acknowledging its relevance.

Ground 2: Obviousness over Keung in view of Thom - Claims 19-21 and 28 are obvious over Keung in view of Thom

  • Prior Art Relied Upon: Keung (Patent 5,521,627) and Thom (Patent 5,424,757).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Keung discloses a thermal printer with a sophisticated drive mechanism that meets the key functional limitations of the claims. Keung teaches a drive housing with a print roller that moves relative to a stationary print head between a home, print, and eject position. This movement is achieved using a torsional spring and an over-center mechanism, directly mapping to the "moving means," "biasing means," "spring," and "over-center mechanism" of claims 19, 20, 21, and 28. The primary reference Thom was introduced to supply the teaching of a cassette-based system for holding a supply of image-receiving tape, which corresponds to the claimed "means for receiving a supply of image receiving tape."
    • Motivation to Combine: A POSITA would combine Keung’s drive mechanism with Thom’s well-known cassette-based tape supply to apply Keung's efficient movement mechanism to a device that prints on a continuous tape roll rather than on discrete sheets. Petitioner argued this combination was merely the predictable substitution of one known type of media supply system (Thom's cassette) for another to achieve the known benefits of both technologies. Further, Petitioner asserted that swapping a moving print roller (per Keung) for a moving print head (per the ’623 patent) was an obvious and interchangeable design choice.
    • Expectation of Success: A POSITA would have a high expectation of success in this combination, as integrating known mechanical systems for media handling and print head actuation was a routine and predictable task in the field of printer design.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Kunimitsu (Patent 4,838,713) in view of Thom, and Schmidt (Patent 5,265,966) in view of Keung. These grounds relied on similar rationales of combining known print head movement mechanisms, including cam-follower and linkage systems, with cassette-based tape supply systems to achieve the claimed apparatus.

4. Key Claim Construction Positions

  • "moving means arranged automatically to move said print head from said third position to said first position": Petitioner argued this is a means-plus-function limitation under 35 U.S.C. §112, ¶ 6. The claimed function is to automatically move the print head from the intermediate position to the printing position without manual user actuation. The corresponding structure identified in the ’623 patent specification is "a spring attached to an L-shaped print head arm and its equivalents," which Petitioner contended includes well-known mechanisms like cams and toggle linkages.
  • "over-center": Petitioner proposed this term be given its plain and ordinary meaning: "a position at which a mechanical system is bi-stable." This construction was central to arguing that prior art mechanisms in Keung and Schmidt, which are designed to "snap" into one of two stable positions after passing a peak or tipping point, meet this limitation even if they do not explicitly use the term.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 19-21 and 28 of Patent 6,152,623 as unpatentable.