Think Products, Inc. v. Acco Brands Corporation

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

THINK PRODUCTS, INC.,
Appellant

v.

ACCO BRANDS CORPORATION, ACCO BRANDS
USA LLC,
Appellees
______________________

2017-1360, 2017-1361
______________________

Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01167, IPR2015-01168.
______________________

Decided: February 14, 2018
______________________

EDWIN DAVID SCHINDLER, Huntington, NY, argued for
appellant. Also represented by JOHN FRANCIS VODOPIA.

MICHAEL R. WEINER, Marshall, Gerstein & Borun
LLP, Chicago, IL, argued for appellees. Also represented
by THOMAS LEE DUSTON, TRON Y. FU, SANDIP PATEL.
______________________

Before LOURIE, CHEN, and HUGHES, Circuit Judges.
2 THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION

CHEN, Circuit Judge.
Think Products, Inc. (Think Products) appeals the fi-
nal written decisions of the Patent Trial and Appeal
Board (Board) in inter partes review proceedings on U.S.
Patent Nos. 8,717,758 (the ’758 patent) and 8,837,144 (the
’144 patent). The ’758 patent and the ’144 patent, which
share the same specification, disclose security locking
devices for portable electronics, e.g., laptop computers.
ACCO Brands Corporation and ACCO Brands USA LLC
(collectively, ACCO) filed petitions for inter partes review
of claims 1–7, 9–14, and 16 of the ’758 patent and claims
1–12 and 14–20 of the ’144 patent (the challenged claims).
After instituting review, the Board ultimately held all of
the challenged claims to be unpatentable as anticipated
as well as obvious. For the reasons below, we agree with
the Board’s claim construction and affirm its obviousness
determination. 1
BACKGROUND
The challenged claims are directed to a locking as-
sembly comprising two elements: a “captive security rod”
and a “locking device.” One end of the captive security
rod is anchored to the portable electronic device which the
user desires to secure against theft. The other end of the
captive security rod is inserted into the locking device,
which securely grasps that end. The locking assembly is
then connected to a “substantially immovable object,”
such as a table. The captive security rod is depicted as
element 291 of a laptop computer in Fig. 30 of the shared
specifications:

1 Because we affirm the Board’s determination of
obviousness which renders unpatentable all of the chal-
lenged claims, we need not reach the Board’s determina-
tion of anticipation, which constitutes an alternate ground
of unpatentability.
THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION 3

’758 patent drawing sheet 24. Both the ’758 patent and
the ’144 patent contain apparatus and method claims.
Claim 1 of the ’758 patent is representative of the claims
of both patents: 2
1. A locking assembly for securing a portable elec-
tronic device having at least one housing to a sub-
stantially immovable object, the locking assembly
comprising:
a captive security rod having a locking end and an
anchoring end, wherein the anchoring end is
passed through the at least one housing to anchor
the captive security rod thereto;

2 The challenged claims also include substantially
similar method claims. On appeal, Think Products argues
all claims together and they thus rise and fall together.
See In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983).
4 THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION

said captive security rod partially in said at least
one housing and partially out of said at least one
housing during and before locking use; and
a locking device with a locking mechanism, where-
in the locking device is configured with an opening
to receive the locking end of the captive security
rod to activate the locking mechanism, where the
activation causes the locking mechanism to se-
curely grasp the locking end and thereby lock the
security rod and portable electronic device to the
locking device.
’758 patent col. 19, ll. 18–34.
The Board construed the term “captive security rod”
as “a rod-shaped portion of a locking assembly, wherein
the rod-shaped portion is anchored to a portable electronic
device.” J.A. 15. In so doing, the Board relied on the
specification’s discussion of “the captive security rod and
portable electronic device to which the captive security
rod is anchored,” ’758 patent col. 5, ll. 23–25, and an
embodiment in which the captive security rod was “fixedly
inserted through a surface of [the device] housing,” id. col.
6, ll. 21–22. The Board also rejected Think Products’s
argument that components which are not anchored to the
portable electronic device during non-locking use but are
attached to the device as part of the locking process are
captive security rods. The Board found this argument
inconsistent with the above statements from the specifica-
tion that the captive security rod is “anchored” and with
Fig. 30, which shows that the captive security rod 291 is
securely bonded to the device. In addition, the Board
noted that during prosecution, Think Products distin-
guished a prior art reference on the grounds that the
reference’s “rectangular T-shaped locking member 124 is
stored out of the housing 137 during non-use and between
deployments.” J.A. 14.
THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION 5

The Board then held the challenged claims to be un-
patentable as obvious over the combination of prior art
references U.S. Patent Nos. 6,360,405 (McDaid) and
5,829,280 (Chen). McDaid is directed to “an anchor/tether
assemblage for use with the security slot found on many
portable electronic devices.” McDaid col. 1, ll. 57–58.
Specifically, McDaid discloses (i) an anchor rod which is
securely attached to the electronic device; and (ii) a tether
with a locking device which locks onto that anchor rod by
use of a key:

J.A. 25 (Board’s concatenation of separate figures from
McDaid); see also McDaid col. 7, ll. 23–40. Chen is di-
rected to an easy-use bicycle lock including “a cable lock-
ing device . . . which allows the unlocked cable to be
inserted into and locked by the locking device without
having to use the key of the locking device.” Chen col. 1,
ll. 57–60.
The Board found that McDaid and Chen, taken to-
gether, disclose all the limitations of the challenged
claims. Specifically, the Board found that McDaid dis-
closed all the limitations of the challenged claims except
that McDaid’s locking action occurs by using a key rather
6 THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION

than by insertion, and that Chen taught insertion locking
for similar cable locking assemblies. The Board also
found that a skilled artisan would have been motivated to
combine McDaid and Chen because the artisan would
have known that automatically activated insertion locks
have advantages over key-activated locks and that Chen’s
automatic lock was suitable for use in McDaid’s locking
assembly. Think Products argued in response that
McDaid’s locking assembly prevents all rotation of the
locking head about the captive security rod and that a
skilled artisan would thus have been dissuaded from
combining Chen’s freely rotatable lock with McDaid’s
locking mechanism.
The Board disagreed, holding that the embodiment
depicted in Figure 2 of McDaid allowed rotation. In
particular, the Board relied on the statement with regard
to the alternate embodiment of Figure 4 that “[w]ith this
configuration, the locking head 104 will not rotate relative
to the anchor 20,” to infer that other embodiments, such
as figure 2, “permit[] rotation.” J.A. 28–29; McDaid col. 6,
ll. 20–21. The Board further noted that the testimony of
Think Products’s expert “fail[ed] to explain adequately
why a person of ordinary skill in the art would under-
stand from McDaid’s disclosure [] that the embodiment of
Figure 2 does not permit rotation”—i.e., that there was
nothing in the record before the Board to show that Fig-
ure 2 did not rotate. J.A. 29. Thus, the Board held that
McDaid did not teach away from a combination with Chen
and that all of the challenged claims would have been
obvious over the two references.
DISCUSSION
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
We review “Board decisions using the standard set forth
in the Administrative Procedure Act.” Pride Mobility
Prod. Corp. v. Permobil, Inc., 818 F.3d 1307, 1313 (Fed.
Cir. 2016). We set aside the decisions of the Board only if
THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION 7

they are “arbitrary, capricious, an abuse of discretion, or
otherwise not in accordance with law” or “unsupported by
substantial evidence.” Id. “Substantial evidence is more
than a mere scintilla. It means such relevant evidence as
a reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197,
217 (1938).
I. Claim Construction of “Captive Security Rod”
The Board is charged with construing claims in ac-
cordance with the broadest reasonable interpretation
consistent with the specification. Cuozzo Speed Techs.,
LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Claim construc-
tion is an issue of law reviewed de novo, with any under-
lying factual determinations made by the Board reviewed
for substantial evidence. Monsanto Tech. LLC v. E.I.
DuPont de Nemours & Co., 878 F.3d 1336, 1341 (Fed. Cir.
2018).
On appeal, Think Products disputes the Board’s con-
struction for “captive security rod” and instead advances
the broader construction “rod-shaped portion of a locking
assembly.” This construction, however, is not a reasona-
ble one consistent with the specification. As an initial
matter, the plain meaning of “captive” refers to a more
solid connection than being connected and disconnected
periodically. Consistent with this meaning, the claims at
issue describe the captive security rod’s “anchoring end”
as “passed through the [portable electronic device’s]
housing to anchor the captive security rod thereto.” See,
e.g., ’758 patent claim 1, col. 19, ll. 18–34. The claim
language further describes the captive security rod as
“partially in” the housing “during and before locking use.”
Id. The claims thus indicate that the “anchoring end” of
the captive security rod is anchored to the portable elec-
tronic device housing at all times. Similarly, the specifi-
cation consistently describes the captive security rod as
having “an anchoring end” used “to anchor the captive
8 THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION

security rod” to the housing. ’758 patent col. 5, ll. 13–16;
see also id. col. 5, ll. 22–25 (referring to the “captive
security rod and portable electronic device to which the
captive security rod is anchored”); id. col. 5, ll. 34–36
(“The locking end of the captive security rod operates to
collapse into the at least one housing during non-use.”).
The intrinsic description of the specification and claims
thus cabins the term “captive security rod” to a structure
which is securely anchored to the housing of the portable
electronic device.
Furthermore, as the Board noted in its final written
decisions, the specification explains that the captive
security rod embodiment is a “replacement” for the “sepa-
rate spike 285.” ’758 patent col. 14, ll. 28–29. The neces-
sary implication is that reasonable constructions of
“captive security rod” cannot be so broad as to sweep in
“separate spike 285,” a structure from which the captive
security rod was explicitly distinguished. And in the
prosecution history, Think Products explained in response
to a rejection over prior art that “[i]n contrast [to the prior
art,] in Applicant’s amended independent Claims 1 and
22, the locking rod is partially stored in the computer
housing during non-use . . . .” 3 J.A. 1277. A reasonable

3 Think Products argues that the statements in the
prosecution history distinguishing the prior art should not
have been considered by the Board because they relate to
the relationship between various elements of the locking
mechanism, not whether the captive security rod is stored
in the housing. We disagree. Think Products traversed a
prior art rejection by stating that the prior art rod “is
stored out of the housing 137 during non-use and between
deployments,” that “[i]n contrast . . . [Think Products’s]
locking rod is partially stored in the computer housing
during non-use,” and that on this basis, Think Products’s
“amended Claim 1 and 22 are distinguishable from [the
THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION 9

construction of captive security rod thus may not be so
broad as to capture structures which become anchored in
the housing only as part of locking use. Thus we agree
with the Board that the broadest reasonable construction
of “captive security rod” must include limitations which
require the captive security rod to be anchored in the
housing prior to locking use, and we find the Board’s
construction to be legally proper and supported by sub-
stantial evidence.
Think Products also argues that the Board’s construc-
tion improperly imports the structural limitation of a
“portable electronic device” into the definition of a “cap-
tive security rod.” Think Products argues that this is an
example of improper “inferential claiming,” i.e., importing
limitations into the claim which are not originally present
in it. We disagree for several reasons. First, and most
importantly, the Board’s construction does not state that
the captive security rod is a portable electronic device or
includes a portable electronic device but merely that it is
anchored to a portable electronic device. Second, as
discussed above, the Board’s construction does not read in
an additional limitation but merely gives full effect to the
claims as written, consistent with the specification. Here,
the “housing” of the “portable electronic device” is a
limitation of all the challenged claims, given that the
claims recite that the captive security rod is “in” the
portable electronic device housing during and before
locking use “to anchor the captive security rod thereto.”

prior art].” Think Products thus adopted the position that
the captive security rod is stored in the housing in order
to traverse the prior art, and it will be held to this posi-
tion in subsequent proceedings and litigation. See Com-
puter Docking Station Corp. v. Dell, Inc., 519 F.3d 1366,
1374 (Fed. Cir. 2008).
10 THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION

Thus, Think Product’s inferential claiming argument is
unavailing.
II. Obviousness over McDaid and Chen
When reviewing the Board’s determination of obvi-
ousness, we “review de novo the ultimate determination
. . . and compliance with legal standards, and we review
underlying factual findings for substantial evidence.”
Pride Mobility, 818 F.3d at 1314. A patent claim is un-
patentable when “the differences between the subject
matter sought to be patented and the prior art are such
that the subject matter as a whole would have been
obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject
matter pertains.” 35 U.S.C. § 103(a). 4 Obviousness “is a
question of law based on underlying findings of fact.” In
re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
On appeal, Think Products contests only the Board’s
finding that McDaid did not teach away from combination
with Chen. Think Products argues here, as before the
Board, that the embodiment of Figure 2 of McDaid, like
that of Figure 4, does not allow rotation. However, Think
Products cites nothing in the record, whether statements
from the prior art or expert testimony, to support this
understanding of Figure 2. See, e.g., Appellant’s Br. 50.
The Board (1) reasonably inferred from the disclosure

4 Congress amended § 103 when it passed the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the applications that led to the ’758 and ’144 pa-
tents never contained (1) a claim having an effective filing
date on or after March 16, 2013 or (2) a reference under
35 U.S.C §§ 120, 121, or 365(c) to any patent or applica-
tion that ever contained such a claim, the pre-AIA § 103
applies. See id. § 3(n)(1), 125 Stat. at 293.
THINK PRODUCTS, INC. v. ACCO BRANDS CORPORATION 11

that Figure 4 did not permit rotation that other embodi-
ments may permit rotation, (2) reasonably concluded that
the structure of Figure 2 appears susceptible to rotation,
and (3) correctly noted that nothing in the record, includ-
ing the testimony of Think Products’s expert, indicates
that the embodiment of Figure 2 does not permit rotation.
Thus, we find the Board’s conclusion of obviousness to be
supported by substantial evidence.
III. Expert Credibility
Think Products also argues that the testimony of
ACCO’s expert was unreliable because evidence in the
record supports a conclusion that ACCO’s expert did not
author his own expert report. Because substantial evi-
dence in the record apart from that expert report exists to
support the Board’s claim construction and finding of
obviousness, including the specification and claims of the
patents, the file histories of the patents, and the report of
Think Products’s own expert, we need not reach this
issue.
CONCLUSION
We have considered all of Think Products’s other ar-
guments and find them unpersuasive. For the foregoing
reasons, the final written decisions of the Board in these
appeals are
AFFIRMED