UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. THE HILLMAN GROUP, INC., Petitioner. MINUTE KEY INC.

Transcription

1 Filed on behalf of: The Hillman Group, Inc. By: Daniel C. Cooley Christopher P. Isaac FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Telephone: Facsimile: UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD THE HILLMAN GROUP, INC., Petitioner v. MINUTE KEY INC., Patent Owner IPR Patent No. 8,979,446 Filed: May 7, 2015 PETITION FOR INTER PARTES REVIEW

2 TABLE OF CONTENTS IPR I. Introduction... 1 II. Mandatory Notices... 2 III. Payment of Fees... 2 IV. Grounds for Standing... 2 A. At Least One Challenged Claim Is Unpatentable... 3 V. Statement of Precise Relief Requested for Each Claim Challenged... 3 VI. Background of the Technology... 4 A. The 446 Patent... 4 B. The Decades-Old Technology of Self-Service Key Cutting Kiosks... 6 C. Scope and Content of the Prior Art... 8 VII. Claim Construction A. One of Ordinary Skill in the Art B. Claim Terms VIII. The Challenged Claims of the 446 Patent Are Unpatentable A. Independent Claim 1 Is Obvious in View of Freeman and Barber B. Independent Claim 31 Is Obvious in View of Freeman and Barber C. Independent Claim 57 Is Obvious in View of Freeman, Barber, and Almblad D. Independent Claim 83 Is Obvious in View of Freeman, Barber, and Wills E. Independent Claim 108 Is Obvious in View of Freeman, Barber, and Prescott i

3 F. The Challenged Dependent Claims Are Unpatentable as Obvious Under 35 U.S.C. 103(a) IX. Patent Owner s Purported Evidence of Secondary Considerations Does Not Support Patentability of the Challenged Claims X. Conclusion ii

4 TABLE OF AUTHORITIES IPR Page(s) Federal Cases In re Cuozzo Speed Techs., LLC, No , 2015 WL (Fed. Cir. Feb. 4, 2015) KSR Int l Co. v. Teleflex Inc., 550 U.S. 398 (2007) Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984) Federal Statutes 35 U.S.C. 102(b) U.S.C U.S.C. 103(a)... 4, 18, U.S.C. 314(a)... 3 Federal Regulations 37 C.F.R (b) C.F.R (a) C.F.R (a)... 2 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) iii

5 LIST OF EXHIBITS IPR Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit to Freeman ( the 446 patent ) Declaration of George L. Heredia, with C.V. U.S. Patent Application Publication No. 2008/ to Freeman et al. ( Freeman ) U.S. Patent Application Publication No. 2007/ to Barber et al. ( Barber ) U.S. Patent No. 5,807,042 to Almblad et al. ( Almblad ) U.S. Patent No. 6,588,995 to Wills et al. ( Wills ) U.S. Patent No. 5,590,809 to Prescott et al. ( Prescott ) U.S. Patent No. 3,358,561 to Roxburgh et al. ( Roxburgh ) U.S. Patent No. 3,442,174 to Weiner et al. ( Weiner ) U.S. Patent No. 3,796,130 to Gartner ( Gartner ) U.S. Patent No. 5,617,323 to Stansberry et al. ( Stansberry ) Exhibit Merriam-Webster s Collegiate Dictionary (11th ed. 2011), p. 688 Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit Exhibit U.S. Patent No. 3,172,969 to Haggstrom ( Haggstrom ) U.S. Patent No. 5,351,409 to Heredia ( Heredia ) U.S. Patent No. 6,839,449 to Campbell et al. ( Campbell ) U.S. Design Patent No. D348,393 to Neitzke et al. ( Neitzke ) RESERVED U.S. Patent No. 7,891,919 to Bass et al. ( Bass ) Declaration of Randall Fagundo submitted in U.S. Patent Application No. 13/743,053 Better Business Bureau Complaints for Minute Key, printed April 27, 2015 iv

6 Exhibit IPR Hillman s Preliminary Claim Constructions and Identification of 35 U.S.C. 112, 6 Corresponding Structures from Hillman Group, Inc. v. Minute Key Inc., No. 1:13-CV-707 (S.D. Ohio Oct. 1, 2014) v

7 I. Introduction IPR ( the 446 patent ) claims an invention of a selfservice kiosk for duplicating keys. But nearly every feature claimed in the 446 patent had already been disclosed several years prior by Daniel Freeman one of the contributors to the 446 patent in U.S. Patent Application Publication No. 2008/ ( Freeman ). Freeman and the 446 patent even use similar nomenclature the 446 patent disclosing a key-alignment mechanism where Freeman discloses a key-alignment module ; the 446 patent disclosing a key blank extraction system where Freeman discloses a key blank extraction module. Semantics aside, any sliver of daylight between the claims of the 446 patent and the disclosure of Freeman results not from innovation in the 446 patent, but from its recitation of obvious soft features like a display that instructs the customer how to begin a purchase transaction or informs the customer that the inserted key cannot be duplicated and should be removed from the kiosk. Providing a screen that prompts a user to insert a key during a key duplication process is not a patentable invention it is common sense. Other prior art key duplication machines, including U.S. Patent No. 6,588,995 to Wills et al. and U.S. Patent No. 5,807,042 to Almblad et al., disclose these exact sorts of screen prompts. Indeed, all of the features not disclosed by Freeman are implicit or predictable implementations of well-known technologies in the key cutting and vending machine arts. For these reasons, the challenged claims are unpatentable and should be canceled. 1

8 II. Mandatory Notices Real Party-in-Interest: The Hillman Group, Inc. IPR Related Matters: Hillman Group, Inc. v. Minute Key Inc., No. 1:13-CV-707 (S.D. Ohio Oct. 1, 2014). Lead Counsel: Daniel C. Cooley: Reg. No. 59,639; telephone ; Back-up Counsel: Christopher P. Isaac: Reg. No. 32,616; telephone: ; Service Information: Please send all correspondence to: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Two Freedom Square, Freedom Drive, Reston, VA Petitioner consents to service by at the following addresses: III. Payment of Fees The required fees are submitted herewith pursuant to 37 C.F.R (a) and 42.15(b). If additional fees to be paid by the Petitioner are due during this proceeding, the Office is authorized to charge Deposit Account No IV. Grounds for Standing Pursuant to 37 C.F.R (a), Petitioner certifies that the 446 patent is available for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review of the 446 patent challenging the patent claims on the grounds identified in this petition. 2

9 A. At Least One Challenged Claim Is Unpatentable IPR As further detailed below, claims 1, 7, 8, 11, 12, 15-18, 20, 23-26, 31, 32, 38, 39, 42, 43, 46-49, 51, 54-58, 64, 65, 68, 69, 72, 74, 76, 79-84, 90, 91, 94, 95, 98, 100, and of the 446 patent ( the challenged claims ) are each unpatentable under 35 U.S.C There is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in this petition. 35 U.S.C. 314(a). V. Statement of Precise Relief Requested for Each Claim Challenged The challenged claims of the 446 patent are unpatentable and should be canceled in view of the following prior art references and grounds of unpatentability. Reference 1: U.S. Patent Application Publication No. 2008/ to Freeman et al., published June 19, 2008 ( Freeman ) (Ex. 1003). Reference 2: U.S. Patent Application Publication No. 2007/ to Barber et al., published March 1, 2007 ( Barber ) (Ex. 1004). Reference 3: U.S. Patent No. 5,807,042 to Almblad et al., issued September 15, 1998 ( Almblad ) (Ex. 1005). Reference 4: U.S. Patent No. 6,588,995 to Wills et al., issued July 8, 2003 ( Wills ) (Ex. 1006). Reference 5: U.S. Patent No. 5,590,809 to Prescott et al., issued January 7, 1997 ( Prescott ) (Ex. 1007). Ground 1: Claims 1, 7, 8, 11, 12, 15, 18, 24, 25, 31, 32, 38, 39, 42, 43, 46, 49, 55, 58, 64, 65, 68, 69, 72, 74, 80, 81, 84, 90, 91, 94, 95, 98, 100, 105, and 106 are 3

10 unpatentable under 35 U.S.C. 103(a) as obvious in view of Freeman and Barber. Ground 2: Claims 16, 17, 47, 48, and 57 are unpatentable under 35 U.S.C. 103(a) as obvious in view of Freeman, Barber, and Almblad. Ground 3: Claims 20, 26, 51, 56, 76, 82, 83, and 107 are unpatentable under 35 U.S.C. 103(a) as obvious in view of Freeman, Barber, and Wills. Ground 4: Claims 23, 54, 79, 104, and 108 are unpatentable under 35 U.S.C. 103(a) as obvious in view of Freeman, Barber, and Prescott. The 446 patent issued from a pre-aia patent application filed on June 3, 2011, which claims priority to provisional application no. 61/351,046 filed on June 3, Each prior art reference cited by Petitioner published at least one year prior to June 3, 2010, and is therefore prior art to the 446 patent under 35 U.S.C. 102(b). VI. Background of the Technology A. The 446 Patent The 446 patent is entitled Fully Automatic Self-Service Key Duplicating Kiosk. Ex title. The key duplicating kiosk includes a housing 10 with a touchscreen display 11 and a payment device 12 (e.g., a coin acceptor, a bill acceptor, or a credit or debit card reader). Id. at abstract, col.4 ll.39-42, col.5 ll.13-19, FIG. 1 (annotated below). The machine also includes a key analysis system, a key blank extraction system, and a key duplicating system. Id. at abstract. 4

11 Touch-screen display Payment device Key-receiving entry Housing Output tray FIG. 1 of 446 patent depicting the self-service key duplicating kiosk During use, a customer inserts a blade of a key through an entry in the machine. Id. at col.1 ll The key analysis system analyzes the blade to determine whether the key matches one of a group of preselected key types stored in a magazine in the kiosk. Id. at col.1 ll If the machine matches the customer s key to one of the preselected key types, a key blank extraction system extracts an appropriate key blank from the magazine and positions the key blank in a clamp for cutting. Id. at col.1 ll.41-44, col.15 l.42 - col.16 l.16. The machine then replicates the tooth pattern of the customer s key on the blade of the extracted key blank. Id. at col.1 ll.44-47, FIGS. 58, 59. The machine ejects the cut key from the clamp, and the ejected key slides down a dispensing chute 143 into the duplicate-key output tray 15 so that the 5

12 customer can remove the key from the kiosk. Id. at col.1 ll.47-49, col.17 ll.24-31, FIG. 1; see also Ex B. The Decades-Old Technology of Self-Service Key Cutting Kiosks Self-service key cutting kiosks have been contemplated and described in technical literature for nearly 50 years. See Ex (providing the nomenclature and fundamentals of key cutting). These prior art kiosks had all of the major components claimed in the 446 patent, including key-identification systems, key cutting systems, user interfaces, and payment systems. Id For example, Roxburgh patented a key cutting vending machine in Ex Roxburgh s vending machine includes a mechanism for receiving the customer s key, a cutting unit to duplicate the customer s key, a blank key storage turret with stacks of key blanks, and a key withdrawal mechanism. Id. at col.4 ll The vending machine also provides a customer interface (buttons) and a payment device (coin receptor). Id. at col.18 ll To operate the machine disclosed in Roxburgh, a customer inserts money into the coin receptor, depresses a button to select an appropriate key blank, and inserts a key into a key slot for duplication. Id. at col.18 ll The machine places the key blank into position for cutting, id. at col.18 ll.42-45, and uses a tracing mechanism to trace the customer s key and cut the key blank to correspond to the customer s [key] pattern, id. at col.1 ll.17-21, col.1 ll After the cutting process concludes, the machine ejects the cut key, which slides down chutes for delivery to the customer. Id. at col.20 ll.12-16, FIGS. 1, 4, 14. 6

13 Roxburgh self-service key duplication machine (left); Weiner self-service key duplication machine (center); Gartner self-service key duplication machine (right) Weiner, which was filed as a patent application in 1961 and patented in 1969, provides another example of a self-service key duplication machine. Ex Weiner recognized the trend toward vending-type apparatus, id. at col.1 ll.24-28, and proposed a key-blank dispenser and key-blank cutter that are operable in response to a single coin-controlled means, id. at col.1 ll The machine includes a key-blank container, a key-blank removal means, and a key-blank cutter apparatus. Id. at col.1 ll These components serve as a source of key blanks and as a means for duplicating the key blank to match the customer s key. Id. at col.2 ll Gartner provides a third example of a self-service key duplicating machine. Even in the early 1970s, Gartner recognized that manual duplication of keys by an operator was a very inefficient process. Ex col.1 ll.5-6. Gartner states that manual key duplication must be performed by a trained operator due to the skill 7

14 involved in operating the key duplicating machines, and that there is quite obviously a great loss in labor since the operator will rarely be continuously engaged in the duplication of keys for customers. Id. at col.1 ll To overcome these issues, Gartner proposes a semi-automatic unattended duplicate key vending machine for use by the general public which includes a housing, coin receiving means for operation of the machine..., [and] at least one key opening or slot in the exterior of the machine housing into which a key may be inserted by a customer for selection of a key blank of appropriate cross section for duplication. Id. at col.3 ll Gartner s machine includes a key blade blank supply means, means for selecting and positioning the blank, key profile milling means including a milling cutter and tracer, and means for discharging the key blade and head from the machine to the customer. Id. at col.3 ll C. Scope and Content of the Prior Art Roxburgh, Weiner, and Gartner confirm that key duplication kiosks had long been contemplated in the key cutting and vending machine arts, and so had the various internal components included in such machines. See Ex More recent key duplication and vending machine patents have married technologies described in Roxburgh, Weiner, and Gartner with other previously developed technologies, including touch-screen interfaces, user prompts, indicator lights, and inventory sensors. Id

15 1. Freeman IPR Freeman discloses a self-service key duplicating machine that includes a master key alignment module 50; master key clamping module 100; master key identification module 130; key blank extractor module 150; key cutting module 200; and central positioning base 250. Ex [0062]. Freeman has at least one magazine... for housing a plurality of key blanks, and each magazine is adapted to house a different model or color of the key blanks. Id. [0011]. Magazines Follower Key blank clamp Key blank Master key Master key clamp Cutter Freeman FIG. 17A key duplication machine (left); FIG. 2A key blank cutting module (right) The operation of Freeman s machine is straightforward and predictable. Ex When Freeman s key identification module matches the customer s key to one of the key blanks in the magazine, the key blank extractor module extracts an appropriate key blank from the magazine by push[ing] the lowermost key blank out of the magazine. Ex [0017], [0025]. The machine clamps the key blank using a blank clamp (labeled as 14 or 270), and cuts the key blank using a follower 12 that 9

16 traces the tooth pattern of the master key. Id. [0026], [0060], [0065], FIG. 2A (above). When the duplicate key is finished and ready to be removed from the machine, a device engages with a hole in the head of the cut key, and slides the cut key out of the blank clamp. Id. [0091]. The key then falls down a dispensing chute or into a tray (not shown). Id. Freeman confirms that the key duplicating machine is a self-service kiosk, stating that it fulfills the... need[] of providing a fully automatic key identifying and/or duplicating machine that can be operated by an ordinary consumer in a manner as easy as purchasing an item from a vending machine or receiving money from an automated teller machine. Id. [0009]-[0010]. 2. Almblad, Wills, Barber, and Prescott Freeman is silent regarding the details of its customer interface, but customer interfaces were already known in the art prior to the 446 patent. Ex For example, Almblad discloses a key duplication vending machine that includes a customer interface having a monitor that displays... a variety of instructions, Ex col.13 ll.23-25, including how to enter a number of copies of keys desired to be made and how much money to put in a currency acceptor, id. at col.18 ll The customer interface also instructs the user when to place the key [for identification]. Id. at col.9 ll If the Almblad machine cannot identify the customer s key, the monitor will instruct the customer that [the] key making apparatus cannot currently make a duplicate of the object key and that it should be 10

17 taken to a locksmith. Id. at col.13 ll The monitor and other user-interface features in Almblad are designed to make it a self-service key making apparatus requiring few instructions and little or no skill or special knowledge on the part of the customer. Id. at col.5 ll Even though Almblad discloses a monitor, not a touch screen, those skilled in the art at the time of the invention used touch-screen monitors in key duplication machines, as evidenced by the key duplication machine in Bass. See Ex col.6 ll.41-43; Ex Wills recognizes that key duplication can be difficult, particularly for someone with little training or experience in the art. Ex col.1 ll Wills therefore discloses a key duplication machine that has an output subsystem providing simple instructions, like directing the operator to insert the master key. Id. at col.7 ll The same output subsystem notifies the operator that the key has been duplicated and provides a visual readout to signal to the operator that the key blank may be removed. Id. at col.30 ll Indicator lights were a well-known technology at the time of the invention, Ex , and Wills confirms as much, stating that other embodiments of the output subsystem may include a CRT, a printout, or a series of signal lights, Ex col.6 ll.5-6. In addition to key cutting machines, those of ordinary skill in the art would have been familiar with technologies used in vending machines, given their overlap with key cutting machines and given their ubiquity. Ex For example, Barber discloses a DVD rental kiosk that interfaces with and provides instructions to 11

18 customers using a graphical user interface (GUI) utilizing a touch screen display. Ex [0063]-[0066]. Barber recognizes that a graphical user interface (GUI) utilizing a touch screen display provides a user-friendly interface even to consumers lacking computer experience. Id. [0063]. The kiosk in Barber also includes a magnetic strip reader configured to receive payment. Id. [0085] ( Magnetic strip reader 911 is used by kiosk 200, FIG. 2, to identify a customer or member, and/or to bill the customer, and/or to verify age. ). Prescott discloses a food product vending machine that provides inventory control using sensors and a computer. Prescott uses a Hall effect sensor to determine whether a predetermined level of product is present in an inventory magazine. Ex col.12 ll So long as at least one product is present in an inventory magazine, the Hall effect sensor indicates to a control board that the inventory magazine is not empty. Id. at col.12 ll When the predetermined level is reached (e.g., the inventory magazine has no product), the Hall effect sensor notifies the control board that the magazine is empty, and the control board causes a series of three dashes to be displayed in the appropriate price display rather than the price for that product. Id. at col.12 ll In sum, whether the claims at issue are directed to hardware such as a touch screen display, a key blank extraction system, or a sensor or soft features such as a display that instructs the customer how to begin a purchase transaction or generates a display that informs the customer that the inserted key cannot be 12

19 duplicated and should be removed from the kiosk all of the claimed features in the 446 patent are obvious and predictable implementations of well-known technologies in the key cutting and vending machine arts. Ex VII. Claim Construction Claim terms are generally given their ordinary and customary meaning, which is the meaning that the term would have to a person of ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1313 (Fed. Cir. 2005) (en banc)). In the present proceeding, the Board should apply the broadest reasonable interpretation ( BRI ) standard to construe claim terms. In re Cuozzo Speed Techs., LLC, No , 2015 WL , at *8 (Fed. Cir. Feb. 4, 2015). Under the BRI standard, claim terms are given their broadest reasonable interpretation, consistent with the specification. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012). A. One of Ordinary Skill in the Art A person of ordinary skill in the art at the time of the alleged invention would have had a degree in engineering and three years of experience involving key duplication equipment. Ex This level of skill is approximate and more experience would compensate for less formal education, and vice versa. For example, an individual having no degree in engineering, but ten years of key duplication equipment experience would qualify as a person of ordinary skill in the art. Id. The 13

20 experience in the field of key duplication equipment may include experience with various types of key duplication equipment, including vending machines. Id. B. Claim Terms The terms self-service, kiosk, and a key blank magazine... configured to store key blanks for each of said preselected key types of the 446 patent should be construed as follows. 1. self-service Each of the challenged claims recites self-service. One having ordinary skill in the art at the time of the invention would have understood the broadest reasonable interpretation of self-service to be permitting one to serve oneself. Id. 58. This construction is consistent with the plain meaning of the term and is supported by the specification, which describes the background of the invention involving a need for a fully automatic key identifying and/or duplicating machine for an ordinary consumer that is like purchasing an item from a vending machine or receiving money from an automated teller machine. Ex col.1 ll Vending machines and teller machines were well-known self-service machines operated directly by consumers without assistance from clerks or store employees. The specification further states that the disclosed kiosk requires no trained human operator and only requires a customer. Id. at col.1 ll Since the disclosed machine only requires a customer in order to be operated, it is self-service. Ex

21 2. kiosk IPR Each of the challenged claims recites a kiosk. One having ordinary skill in the art at the time of the invention would have understood the broadest reasonable interpretation of kiosk to be a structure that provides information or services to customers. Id This construction is supported by the specification, which discloses a structure for providing a service in the form of automatic key duplication. Ex title. The specification describes the components located inside of the kiosk, confirming that it is a structure. Id. at col.1 ll.44-47, col.4 ll The kiosk of the 446 patent is small and commercial in nature; it is designed to attract customers and has a footprint [that] is less than about 6 square feet, to minimize the floor space occupied by the kiosk in a retail store. Id. at col.4 ll Hillman s proposed construction of kiosk is also consistent with standard dictionary definitions for the term: a small structure with one or more open sides that is used to vend merchandise (as newspapers) or services (as film developing) ; or a small stand-alone device providing information and services on a computer screen <a museum with interactive [kiosks]>. Ex a key blank magazine... configured to store key blanks for each of said preselected key types Each of independent claims 1, 31, 57, 83, and 108 recites a key blank magazine... configured to store key blanks for each of said preselected key types. The broadest reasonable interpretation of this phrase is a structure having multiple 15

22 compartments that include an enclosed space configured to hold a supply of preselected key blanks. 1 Ex This meaning is consistent with the language from the claims. For example, the claim language states that the magazine is configured to store key blanks for each of said preselected types, which requires that the magazine hold more than one type of key blank (i.e., key types). Other language from the claims refers to a key blank extraction system configured to extract from said magazine a key blank for the preselected key type matched by the blade of said key inserted in said key-receiving entry. See, e.g., Ex col.21 ll (same language appears in all of the challenged independent claims). The key blank extraction system could not extract from the magazine a key blank for the preselected key type unless the magazine was itself configured to house that type of key. Therefore, the key blank magazine must have multiple compartments configured to hold key blanks that match the preselected type for that compartment. Ex Using the district court claim construction standard, Hillman proposed a construction for key blank magazine in a prior district court case with Minute Key over U.S. Patent No. 8,532,809 ( the 809 patent ). See Ex Minute Key did not respond with its own preliminary construction, neither Hillman nor Minute Key provided a final construction, and the Court never ruled on the construction. 16

23 The specification provides further support for the construction, disclosing a key blank magazine for storing key blanks of different types (e.g., Schlage, Kwikset, Weiser, etc.) and different styles (plain brass, colored flag pattern, colored flower pattern, etc.). Ex col.6 ll The 446 patent depicts key blank magazine 80 in FIGS , 48-55, and 57, and it is shown as having multiple compartments with an enclosed space for holding a supply of key blanks. Magazine FIG. 31 of the 446 patent depicting the magazine Therefore, the claim phrase key blank magazine... configured to store key blanks for each of said preselected key types means a structure having multiple compartments that include an enclosed space configured to hold a supply of preselected key blanks. Ex The 446 patent uses the term magazines interchangeably with the term magazine. Ex For example, the 446 patent discloses key-blank magazines that hold various different types of key blanks. Ex col.17 ll ( These video images may be used for different purposes, such as... monitoring the 17

24 numbers of different types of key blanks remaining in the key-blank magazines ) (emphasis added), col.11 ll (key blank is extracted from the blank-key magazines ). However, the patent also discusses a key blank magazine (singular) that holds different types of key blanks. See id. at col.6 ll (noting that kiosk includes a key blank magazine for storing key blanks of different types (e.g., Schlage, Kwikset, Weiser, etc.) ). Therefore, for the broadest reasonable interpretation to be consistent with the specification, the term a key blank magazine in the claim should be construed as interchangeable with the term key blank magazines. Ex VIII. The Challenged Claims of the 446 Patent Are Unpatentable As the prior art and the discussion below demonstrates, the challenged claims are unpatentable under 35 U.S.C. 103(a) because they would have been obvious to one of ordinary skill in the art at the time of the alleged invention. The claims of the 446 patent could have been achieved by combining familiar elements from the prior art according to known methods with predictable results. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). A. Independent Claim 1 Is Obvious in View of Freeman and Barber 1. A self-service kiosk for duplicating keys, comprising Freeman discloses a fully automatic key duplicating machine. Ex abstract. The key duplicating machine 40 duplicates keys using a master key alignment module 50; master key clamping module 100; master key identification module 130; key blank extractor module 150; key cutting module 200; and central 18

25 positioning base 250. Id. [0062]. Freeman confirms that the key duplicating machine is a self-service kiosk, stating that a customer, not a skilled operator, uses the machine. See, e.g., id. [0069] ( When the customer begins the ordering process... ; Before the customer inserts a key... ; The customer is then instructed to insert her key into [a] slot... ). The key duplication machine is a kiosk as it is a structure (e.g., a machine) that provides information or services (e.g., duplicated keys) to customers. Freeman further confirms that the key duplicating machine is a self-service kiosk by stating that it fulfills the... need[] of providing a fully automatic key identifying and/or duplicating machine that can be operated by an ordinary consumer in a manner as easy as purchasing an item from a vending machine or receiving money from an automated teller machine. Id. [0009]-[0010]. Therefore, Freeman discloses a self-service kiosk for duplicating keys. See Ex a kiosk housing having a customer interface configure [sic] to receive payment from a customer for the purchase of at least one duplicate of the customer s key Freeman s key duplicating machine 40 has an outer wall or housing 400, i.e., a kiosk housing. Ex [0066]. Freeman FIG. 17A depicts walls around various components of key duplicating machine 40. And even if Freeman did not disclose a housing, which it does, one of ordinary skill in the art at the time of the invention would have found it obvious to locate key duplicating machine 40 in a shell or protective housing, such as the kiosk housing 900 disclosed in Barber. Ex [0082], [0088]; Ex The need for a housing for Freeman is obvious 19

26 because key duplicating machine 40 includes: cutting wheels and other moving components that could injure a consumer; mechanical parts that could be damaged; and key-blank inventory that could be stolen. Ex It would have been common sense to use a shell or kiosk housing, such as the housing of Barber discussed below, to house the Freeman machine. Housing Walls Freeman FIG. 4A depicting a housing (left); Freeman FIG. 17A depicting a housing (right) Freeman does not explicitly disclose a customer interface configure[d] to receive payment from a customer for the purchase of at least one duplicate of the customer s key. However, Freeman discloses a customer interfacing with the machine. See, e.g., Ex [0069] ( When the customer begins the ordering process... ; The customer is then instructed to insert her key into [a] slot... ). And the claimed customer interface would have been an obvious feature for a machine that fulfills the... need[] of providing a fully automatic key identifying and/or 20

27 duplicating machine that can be operated by an ordinary consumer in a manner as easy as purchasing an item from a vending machine or receiving money from an automated teller machine. Id. [0009]-[0010]. It would have been obvious like a vending machine to configure the user interface to receive payment. Ex Barber too confirms the obviousness of a customer interface, disclosing a kiosk for dispensing DVDs that interfaces with customers using a graphical user interface (GUI) utilizing a touch screen display. Ex [0063]-[0066]; Ex Barber s interface is configured to receive payment from a customer using a magnetic strip reader 911. Ex [0085] ( Magnetic strip reader 911 is used by kiosk 200, FIG. 2, to identify a customer or member, and/or to bill the customer, and/or to verify age. Reader 911 is thus preferably usable with magnetic strips used in driver s licenses, credit cards, membership cards, student body cards, etc. ). Kiosk housing Touch-screen display Magnetic strip card reader FIG. 8 of Barber depicting kiosk housing with a touch-screen display and payment device 21

28 Barber explains the value of a customer interface, stating that a touch screen display provides a user-friendly interface even to consumers lacking computer experience. Id. [0063]. Freeman suggests a similar desire for a simple, user-friendly experience, such that its machine can be operated by an ordinary consumer in a manner as easy as purchasing an item from a vending machine or receiving money from an automated teller machine. Ex [0009]-[0010]. It would have been obvious to a person having ordinary skill in the art at the time of the invention to combine a customer interface that receives payment as taught by Barber with a selfservice kiosk for duplicating keys as taught by Freeman. Ex Moreover, combining a key duplicating machine with a customer interface that receives payment was well known in the art, as evidenced by Almblad, which discloses an automatic key making apparatus that has a monitor that gives the customer instructions on how to enter a number of copies of keys desired to be made and how much money to put in a currency acceptor. Ex col.18 ll.54-61; Ex Accordingly, it would have been obvious to a person having ordinary skill in the art at the time of the invention to combine the teaching of a self-service key duplication machine as taught in Freeman with a customer interface configured to receive payment from a customer, as taught by Barber, for the purchase of at least one duplicate of the customer s key. Ex

29 3. a key-receiving entry in said housing configured to receive at least a portion of the customer s key to be duplicated, wherein the key-receiving entry blocks insertion of the head of an inserted key so that only the blade of an inserted key extends into the kiosk housing Freeman discloses this feature. Id Freeman discloses a slot S into which the customer... insert[s] her key. Ex [0069]. The slot S is in housing 400 and receives the blade of the customer s key. Id. at FIGS. 4A-4D (below). Housing Customer (i.e., master) key inserted into key entry Keyreceiving entry S Slot S for receiving the customer s key (Freeman FIGS. 4A and 4D) To shed light on the feature of block[ing] insertion of the head of an inserted key so that only the blade of an inserted key extends into the kiosk housing, the 446 patent states that slot 104 is dimensioned to block the head portion of the key from entering the kiosk, and therefore, only the blade portion of the key extends inside the kiosk. Ex col.5 ll Slot 104 is formed in plate 102, id. at col.8 ll.28-40, and this arrangement is depicted in FIG. 58 (shown below), which shows a master key K inserted into the slot in plate 102 with only the blade extending inside of the 23

30 kiosk housing. The prior art, Freeman, discloses a nearly identical figure (FIG. 2A) (below) depicting a master key A inserted into the slot in a plate with only the blade extending inside of the kiosk housing. Freeman states that it is desirable to... have the key duplicated from the insertion point with the head of the key always projecting from the machine. Ex [0059]. Accordingly, Freeman discloses a key-receiving entry that blocks insertion of the head of an inserted key so that only the blade of an inserted key extends into the kiosk housing. Ex Key entry Plate Key entry Plate FIG. 58 of the 446 patent depicting the blade of the key in the housing (left); FIG. 2A of Freeman depicting the blade of the key in the housing (right) Even if Freeman did not disclose this claim feature, which it does, the feature would have been obvious in view of Freeman. Id. 81. All of the key features analyzed in Freeman are on the blade. See infra Section VIII.A.4. Therefore, only the blade needs to enter the machine for analysis. And identifying a key based on features of the blade was well known, as evidenced by Freeman and further evidenced by Stansberry, see Ex abstract. Freeman also provides a motivation to block the key 24

31 head from entering into the machine: Consumers become nervous when their personal property such as a key is fully withdrawn into a machine. Ex [0059]. Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to design a key duplication machine as taught by Freeman with a key-receiving entry that blocks insertion of the head of an inserted key so that only the blade of an inserted key extends into the kiosk housing. Ex a key analysis system within said housing configured to analyze the blade of a key inserted in said key-receiving entry to determine whether the inserted key matches one of a group of preselected key types and, if so, which preselected key type is matched, Freeman discloses this feature as well. See id Freeman states that key duplication requires the analysis of the master key to determine [its] model.... Ex [0057]. To analyze the key and determine the key model, Freeman discloses a master key identification module that identifies a type of key secured in the master key clamping module. Id. [0010]. The master key identification module is within the housing. Id. [0062], [0066], FIGS. 4D, 11A, 11B. Freeman s master key identification module includes a blade length sensing element and [a]t least one blade cross-section detector. Id. [0017]. The blade length sensing element determines the length of the inserted master key, and the blade cross-section detector engages with the side of the key blade to detect the profile. Id. [0017], [0074]-[0082]. The cross-section detector may include sliding elements with profiles that correspond to different key types. Id. [0076]. For example, [a] profile 25

32 142A may correspond to a Schlage key, [a] profile 142B may correspond to a Kwikset key, and [a] profile 142C may correspond to a Weiser key. Id.; see also annotated FIGS. 11A, 11B below. When the sliding elements engage a key of the type corresponding to its profile, the sliding elements substantially close around the master key blade, and when the sliding elements engage a key not of the type corresponding to the profile, the sliding elements do not close around the master key blade or close too far around the master key blade. Id. [0017]. Profile 140A (e.g., Schlage) Profile 140B (e.g., Kwikset) Master key Profile 140C (e.g., Weiser) Profile 140B (e.g., Kwikset) Freeman s cross-section detector prior to engaging with the key blade (FIG. 11A) Master key Freeman s cross-section detector engaging the key blade (FIG. 11B) 26

33 After the cross-section detector finds a key type match (e.g., by closing around the key blade) and the blade length sensing element determines the length of the inserted master key, the master key identification module uses this information to determine the specific key model of the master key. Id. [0017], [0074]-[0082]. In this way, Freeman discloses a key analysis system within the housing configured to analyze the blade of a key inserted in the key-receiving entry to determine whether the inserted key matches one of a group of preselected key types and, if so, which preselected key type is matched. Ex a key blank magazine within said housing configured to store key blanks for each of said preselected key types, Freeman discloses a structure having multiple compartments that include an enclosed space configured to hold a supply of preselected key blanks. See id In particular, Freeman discloses at least one magazine... for housing a plurality of key blanks. Ex [0011], [0086]-[0087]. Magazines The key blank magazines as shown in FIG. 17A of Freeman 27

34 Freeman s key blank magazine is within a housing, as depicted in FIG. 17A (above), which provides an exploded view of several individual magazines that depicts how the magazines attach to the inside wall of the key duplication machine on a magazine rack 192 where it is made accessible to the key extraction mechanism. See id. [0086]; see also supra Section VIII.A.2 (regarding obviousness of housing). As explained in Section VII.B.3, Freeman s magazines are a magazine in the language of the 446 claims. Both Freeman s magazines and the 446 patent s magazine(s) have the same basic structural features, as can be seen by comparing Freeman (Ex. 1003) FIG. 17A and the 446 patent (Ex. 1001) FIG. 31. Freeman discloses that each magazine includes a compartment with an enclosed space. See Ex FIG. 18. Freeman also discloses that the magazine compartments each include an enclosed space for holding a supply of preselected key blanks. In particular, Freeman states that each of the magazines [is] adapted to house a different model or color of the key blanks. Id. [0011]. 6. a key blank extraction system configured to extract from said magazine a key blank for the preselected key type matched by the blade of said key inserted in said keyreceiving entry, Freeman discloses a key blank extraction system configured to extract from said magazine a key blank for the preselected key type matched by the blade of said key inserted in said key-receiving entry. See Ex Freeman provides a 28

35 key blank extraction module 150 that includes a push rod 159 and a motor 154 that causes push rod 159 to move. Ex [0083]. Key blank magazine Key blank extraction module Clamped key blank Central positioning base Top view of key blank extraction module in FIG. 13B of Freeman According to Freeman, [e]xtraction module 150 is disposed below and behind the lowermost key blank housed in a magazine 190 so that when motor 154 causes push rod 159 to move, push rod 159 pushes the key blank B out of magazine 190 and into key blank clamp 270 of central positioning base 250 (see FIGS. 13-A-B). Id. One of ordinary skill in the art would have understood that Freeman extracts a blank key that is matched to the blade of the master key as determined by the identification module. Ex It would not make sense for Freeman to use a key blank that does not match the master key because such a key would not operate properly in the lock. Ex [0007]. 29

36 Freeman also discloses that the matched key blank is extracted from the magazine. The extracted key blank is for the preselected key type. Id. [0025] ( [T]he invention is a system for extracting a key blank from a pre-selected plurality of key blanks for cutting into a duplicate of a master key. ), [0027] ( Preferably, a plurality of key blanks are provided in at least one magazine, more preferably a plurality of magazines each housing a different type, model, or color of key blank. The physical parameters determined in said identifying step enable automatic selection and extraction of a key blank from a specific magazine. Preferably, one key blank is extracted from the magazine by pushing on the lowermost key blank in the magazine and guiding the lowermost key blank into a key blank receiving groove. ); see also supra Section VIII.A.5. Thus, Freeman discloses a key blank extraction system configured to extract from said magazine a key blank for the preselected key type matched by the blade of said key inserted in said key-receiving entry. Ex a key duplicating system within said kiosk configured to replicate the tooth pattern of the blade of said key inserted in said key-receiving entry, on the blade of said extracted key blank, and Freeman discloses this feature. See id Freeman provides a key cutting module 200. The key cutting module 200 is located in the housing depicted in FIG. 17A, and it would have been obvious for the key cutting module and the other components of the key duplication machine to be located within a housing as explained above in Section VIII.A.2. According to Freeman, a key blank is positioned 30

37 in a blank clamp 270 and is then moved into engagement with the key cutting module 200 and is cut in accordance with the tooth pattern of master key A in clamping module 100. Ex [0065]. The key cutting module uses a tracing mechanism (i.e., follower 12) to trace the bitting pattern on the master key and replicate that pattern in the key blank. Id. [0060], [0092]. The master key is located in the key-receiving entry during this process. See id. at FIG. 2A (annotated below). Follower Master key Key blank Freeman FIG. 2A depicting the key duplication system Cutter Accordingly, Freeman discloses a key duplicating system within the kiosk configured to replicate the tooth pattern of the blade of the key inserted in the keyreceiving entry, on the blade of the extracted key blank. Ex a key-removal exit in said housing providing customer access to the key with the replicated tooth pattern for removal from the kiosk. Freeman discloses a key-removal exit. See id. 92. Freeman discloses that [w]hen the duplicate key is finished and ready to be removed from the machine 40, central positioning base 250 moves the key under removal base 300 as shown in 31

38 FIG. 15. Ex [0091]. At this point, [p]in 302 engages the hole of key B, blank clamp 270 releases the securing force on key B, and central positioning base 250 moves away from base 300. Because pin 302 is projecting within the hole of key B, the key slides out of blank clamp 270 and falls down a dispensing chute or into a tray (not shown). Id. A person having ordinary skill in the art at the time of the invention would have understood dispensing chute or tray as referring to a keyremoval exit providing customer access to the key for removal from the kiosk. Freeman has a key-removal exit because there must be a way for the duplicate key to exit the machine. Ex And such a feature also would have been obvious for the same reason. Therefore, Freeman discloses a key-removal exit in the housing providing customer access to the key with the replicated tooth pattern for removal from the kiosk. Id. B. Independent Claim 31 Is Obvious in View of Freeman and Barber Most of the limitations in independent claim 31 are exactly the same as the limitations in independent claim 1, see id. 93, and the analysis of Freeman and Barber provided above in Section VIII.A applies equally to the same limitations appearing in claim 31. Claim 31 lacks a portion of a claim limitation found in claim 1, but this does not change the analysis. See Ex Independent claim 31 also includes one additional limitation not found in claim 1 wherein the key-removal exit includes a dispensing mechanism configured to dispense the key with the replicated tooth pattern to the customer for removal from the kiosk. However, Freeman discloses 32

39 that feature as well, making independent claim 31 unpatentable in view of Freeman and Barber. Id In particular, Freeman discloses a dispensing mechanism that has a removal base 300 with a pin 302 that engages with a hole in the head of the key. This arrangement is depicted in FIG. 15 (below). Removal base Pin Cut key FIG. 15 of Freeman depicting the removal base for removing the cut key Freeman states that [w]hen the duplicate key is finished and ready to be removed from the machine 40, central positioning base 250 moves the key under removal base 300 as shown in FIG. 15. Ex [0091]. Then [p]in 302 engages the hole of key B, blank clamp 270 releases the securing force on key B, and central positioning base 250 moves away from base 300. Because pin 302 is projecting within the hole of key B, the key slides out of blank clamp 270 and falls down a dispensing chute or into a tray (not shown). Id. Therefore, Freeman discloses a key-removal exit that includes a dispensing mechanism configured to dispense the key with the 33

40 replicated tooth pattern to the customer for removal from the kiosk. Ex C. Independent Claim 57 Is Obvious in View of Freeman, Barber, and Almblad Independent claim 57 includes two additional limitations beyond the features of independent claim 1: (1) wherein the customer interface includes a processorcontrolled touch-screen display configured to interact with a customer, and (2) wherein the key analysis system produces an unacceptable key signal when an inserted key does not match any of said preselected key types, and the customer interface is responsive to the unacceptable key signal to generate a display that informs the customer that the inserted key cannot be duplicated and should be removed from the kiosk. 2 However, the teachings of Freeman, Barber, and Almblad confirm that these features and the other claimed features would have been obvious to one of ordinary skill in the art at the time of the invention. See id wherein the customer interface includes a processorcontrolled touch-screen display configured to interact with a customer Although Freeman is silent regarding the details of its customer interface, 2 For the common elements, the analysis of Freeman and Barber provided above in Section VIII.A applies equally to claim 57. Claim 57 also lacks a portion of a claim limitation found in claim 1, but this does not change the analysis. See Ex