Upload
others
View
4
Download
0
Embed Size (px)
Citation preview
Paper No.: ____ Filed: March 3, 2015
Filed on behalf of: Tristar Products, Inc. By:
Noam J. Kritzer Email: [email protected]
Ryan S. McPhee Email: [email protected]
BAKOS & KRITZER
UNITED STATES PATENT AND TRADEMARK OFFICE
_________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________________
TRISTAR PRODUCTS, INC.
Petitioner
v.
CHOON’S DESIGN INC. Patent Owner
_________________________
Patent No. 8,485,565 _________________________
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,485,565
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
ii
TABLE OF CONTENTS I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 1
A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1) .............. 1 B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) .......................... 1 C. LEAD AND BACK-UP COUNSEL .......................................................... 4 D. SERVICE INFORMATION ...................................................................... 5
II. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 5 III. REQUIREMENTS FOR INTER PARTES REVIEW
UNDER 37 C.F.R. § 42.104 ............................................................................ 5 A. Grounds for Standing Under 37 C.F.R. § 42.104(a) .................................. 5 B. Identification of Challenge Under 37 C.F.R. § 42.104(b)
and Relief Requested .................................................................................. 5 1. Effective Filing Date ......................................................................... 7 2. Claims 9 and 14 ................................................................................ 7 3. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ....................... 8
IV. SUMMARY OF THE ‘565 PATENT ........................................................... 12 V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
CLAIM OF THE ‘565 PATENT IS UNPATENTABLE ............................. 14 A. GROUND I: CLAIMS 9 AND 14 ARE NOT PATENTABLY
DISTINCT FROM A CANCELLED CLAIM ......................................... 14 1. Patent Owner is Estopped From Arguing Patentability ................. 14 2. Claim 9 Is Not Patentably Distinct From Cancelled Claim 11 ...... 15 3. Claim 14 Is Not Patentably Distinct From Cancelled Claims ........ 21 4. Claim 12 Is Not Patentably Distinct From Cancelled Claims ........ 21 5. Claim 13 Is Not Patentably Distinct From Cancelled Claims ........ 24 a. Claim 14 Is Not Patentably Distinct From Cancelled Claims ........ 25
B. GROUND II: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND PHELPS ....................................................... 26 1. Claim 1 Is Anticipated by Pugh ...................................................... 27 2. Claim 9 Is Obvious in View of Pugh and Phelps ........................... 28
C. GROUND III: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND NORRIS ....................................................... 33
D. GROUND IV: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF GUSTIN IN VIEW OF PHELPS OR NORRIS ................ 35
E. GROUND V: CLAIM 9 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY CHARMAN ........................................................ 37
F. GROUND VI: CLAIM 14 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY MACBAIN ......................................................... 44 1. Claim 12 is Anticipated by Macbain .............................................. 44
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
iii
2. Claim 13 is Anticipated by Macbain .............................................. 52 3. Claim 14 is Anticipated by Macbain .............................................. 53
G. GROUND VII: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH IN VIEW OF CARRUTH OR MELTZER ........... 54
VI. CONCLUSION .............................................................................................. 56
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
iv
TABLE OF AUTHORITIES
Cases Page(s)
Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629 (Fed. Cir. 2011) ............................................................................ 11
Clio USA, Inc. v. The Procter and Gamble Co.,
IPR2013-00438 (PTAB) ....................................................................................... 3
Graves v. Principi,
294 F.3d 1350 (Fed. Cir. 2002) ............................................................................ 3
In re Ngai, 367,
F.3d 1336 (Fed. Cir. 2004) ................................................................................. 41
In re Venezia,
530 F.2d 956 (C.C.P.A. 1976) ............................................................................ 41
Invue Security Prods. v. Merchandising Techs., Inc.,
IPR2013-00122 (PTAB) ....................................................................................... 3
Nautique Boat Co., Inc. v. Malibu Boats, LLC,
IPR2014-01045 (PTAB) ....................................................................................... 3
NTP, Inc. v. Research in Motion, Ltd.,
418 F.3d 1282 (Fed. Cir. 2005) .......................................................................... 12
Toshiba Corp. v. Imation Corp.,
681 F.3d 1358 (Fed. Cir. 2012) .......................................................................... 40
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
v
Warner-Lambert Co. v. Apotex Corp.,
316 F.3d 1348 (Fed. Cir. 2003) .......................................................................... 12
Statutes
35 U.S.C. § 102 .................................................................................................passim
35 U.S.C. § 103 .................................................................................................passim
35 U.S.C. §§ 311-319 ............................................................................................ 1, 3
Regulations
37 C.F.R. § 42 et seq .........................................................................................passim
Rules of Practice, 77 Fed. Reg. No. 157 ............................................................ 14, 21
Other Authorities
MPEP 2114 ........................................................................................................ 11, 40
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
vi
EXHIBITS
Ex. 1001. U.S. Patent No. 8,485,565
Ex. 1002. File History of U.S. Patent No. 8,485,565
Ex. 1003. File History of U.S. Provisional Application No. 61/410,399
Ex. 1004. Certificate of Service in the 10848 Litigation
Ex. 1005. Stipulated Order of Dismissal Without Prejudice in the 01254
Litigation
Ex. 1006. Petition for Inter Partes Review in the ‘218 IPR
Ex. 1007. Decision to Institute Inter Partes Review in the ‘218 IPR
Ex. 1008. Judgment and Final Written Decision in the ‘218 IPR
Ex. 1009. Rules of Practice, 77 Fed. Reg. No. 157 (Aug. 14, 2012)
Ex. 1010. Pugh U.K. Patent Publication No. GB 2147918 A (“Pugh”)
Ex. 1011. Gustin U.S. Patent No. 7,506,524 (“Gustin”)
Ex. 1012. Charman U.S. Patent No. 3,905,133 (“Charman”)
Ex. 1013. Macbain U.S. Patent No. 5,231,742 (“Macbain”)
Ex. 1014. Carruth et al. U.S. Patent No. 8,418,434 (“Carruth”)
Ex. 1015. Meltzer U.S. Patent No. 5,426,788 (“Meltzer”)
Ex. 1016. Linstead U.S. Patent No. 3,432,223 (“Linstead”)
Ex. 1017. Yates U.S. Patent No. 2,274,572 (“Yates”)
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
vii
Ex. 1018. Phelps, Isela. Looming Knitting Primer (New York: St.
Martin’s Griffin 2007) (“Phelps”)
Ex. 1019. Norris, Kathy. I Can’t Believe I’m Loom Knitting! (Little
Rock, AR: Leisure Arts, Inc. 2010) (“Norris”)
Ex. 1020. The American Heritage Dictionary
Ex. 1021. Declaration of Youjiang Wang, Ph.D., P.E.
Ex. 1022. Declaration of Woli I. Urbe, Esq.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
1
Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Tristar Products, Inc.
(“Petitioner”) respectfully petitions for Inter Partes Review (IPR) of claims 9 and
14 of U.S. Patent No. 8,485,565 (“the ‘565 Patent”), which was filed on September
8, 2011 and issued on July 16, 2013, to Cheong Choon Ng, and is currently assigned
to Choon’s Design Inc. (“Patent Owner”) according to the United States Patent and
Trademark Office assignment records.
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
Petitioner Tristar Products, Inc. is the real party-in-interest for the instant
petition.
B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
The ‘565 Patent has been asserted by the Patent Owner in the following
litigations in the United States District Court for the Eastern District of Michigan:
Choon’s Design LLC v. Zenacon, LLC, filed August 19, 2013 (2:13-cv-13568;
Choon’s Design LLC v. LaRose Indus., LLC, filed August 19, 2013 (4:13-cv-13569;
Choon’s Design Inc. v. NGS iCommerce Enters. Corp., filed February 24, 2014
(2:14-cv-10847); Choon’s Design Inc. v. Tristar Products, Inc., filed February 24,
2014 (2:14-cv-10848) (“the 10848 Litigation”); Choon’s Design Inc. v. Quality
Innovations Inc., filed March 14, 2014 (2:14-cv-11102); Choon’s Design Inc. v.
Altatac, Inc., filed April 8, 2014 (2:14-cv-11442); Choon’s Design Inc. v. Jayfinn,
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
2
LLC, filed May 5, 2014 (2:14-cv-11802); Choon’s Design Inc. v. My Imports USA
LLC, filed June 6, 2014 (2:14-cv-12259); and Choon’s Design Inc. v. Midwest
Trading Group, Inc., filed September 22, 2014 (4:14-cv-13666). Petitioner is the
named defendant in the Choon 10848 Litigation. The earliest that Petitioner was
served was March 4, 2014. Ex. 1004.
The ‘565 Patent has been asserted by Patent Owner in the following litigations
in the United States District Court for the District of New Jersey: Choon’s Design
Inc. v. AC Moore Inc., filed February 18, 2014 (1:14-cv-00980); Choon’s Design
Inc. v. ARCO Int’l, Inc., filed September 17, 2014 (3:14-cv-05794); Choon’s Design
Inc. v. Essaar Inc., filed October 20, 2014 (2:14-cv-06458).
The ‘565 Patent has been asserted by Patent Owner in the United States
International Trade Commission, In the Matter of Certain Loom Kits for Creating
Linked Articles, Inv. No. 337-TA-923.
The ‘565 Patent was the subject of a complaint by LaRose Industries, LLC for
declaratory judgment filed in the United States District Court for the District of New
Jersey in LaRose Indus., LLC v. Choon’s Design LLC, filed August 28, 2013 (2:13-
cv-05172).
The ‘565 Patent was the subject of a complaint by Petitioner for declaratory
judgment filed in the United States District Court for the District of New Jersey in
Tristar Products, Inc. v. Choon’s Design LLC, filed February 25, 2014 (2:14-cv-
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
3
01254) (“the ‘01254 Litigation”). Petitioner and Patent Owner stipulated to a
dismissal of the ‘01254 Litigation on September 8, 2014, and the ‘01254 Litigation
was dismissed without prejudice on September 9, 2014. Ex. 1005.
Although the ‘01254 Litigation was a civil action challenging the validity of
the ‘565 Patent, the ‘01254 Litigation is not a bar to this petition under 35 U.S.C. §
315(a)(1). The Court of Appeals for the Federal Circuit has held that “[t]he dismissal
of an action without prejudice leaves the parties as though the action had never been
brought.” Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002). On this
principle, the Board has repeatedly held that dismissal of a civil action without
prejudice does not bar inter partes review under 35 U.S.C. § 315(a). See, e.g.,
Nautique Boat Co., Inc. v. Malibu Boats, LLC, IPR2014-01045, Paper 13 at 9-11
(PTAB Nov. 26, 2014) (holding that petitioner’s declaratory judgment action for
invalidity in the United States District Court for the Middle District of Florida, which
was dismissed without prejudice, did not bar inter partes review); Invue Security
Prods. v. Merchandising Techs., Inc., IPR2013-00122, Paper 17 at 8-10 (PTAB, Jun.
27, 2013) (holding that dismissal without prejudice of petitioner’s declaratory
judgment action in the United States District Court for the Western District of North
Carolina does not trigger the statutory bar prohibiting inter partes review); Clio
USA, Inc. v. The Procter and Gamble Co., IPR2013-00438, Paper 9 at 6-9 (PTAB,
Jan. 9, 2014) (holding that where petitioner’s action for declaratory judgment was
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
4
dismissed without prejudice, it is treated as if it never existed, and does not bar inter
partes review under 35 U.S.C. § 315(a)).
The ‘565 Patent has been the subject of two other IPR proceedings: IPR2014-
00218 (“the ‘218 IPR”) and IPR2014-01353 (“the ‘353 IPR”). The first Petition for
Inter Partes Review was filed by LaRose Industries, LLC (“LaRose”) and
challenged claims 1 and 5-14 of the ‘565 Patent. LaRose Indus., LLC v. Choon’s
Design LLC, IPR2014-00218, Paper 1 (PTAB, Dec. 3, 2013). The Board instituted
Inter Partes Review of claims 1, 5-8, 10, and 11. Id., Paper 9 (PTAB, May 20,
2014). On June 7, 2014, the Board issued a Judgment and Final Written Decision
granting a Joint Motion for Adverse Judgment and cancelling claims 1, 5-8, 10, and
11.
The second Petition for Inter Partes Review was also filed by LaRose and
challenged claims 9 and 12-18 of the ‘565 Patent. LaRose Indus. LLC v. Choon’s
Design Inc., IPR2014-01353, Paper 1 (PTAB Aug. 20, 2014). The Board terminated
the proceeding pursuant to a Joint Motion to Terminate and a Written Settlement
Agreement submitted by the parties. Id., Paper 9 (PTAB Jan. 5, 2015). The Board
had not determined whether to institute inter partes review of the ‘565 Patent at the
time of termination. Id., at 3.
C. LEAD AND BACK-UP COUNSEL
Petitioner provides the following designation of counsel.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
5
LEAD COUNSEL:
Noam J. Kritzer Email: [email protected] Bakos & Kritzer 147 Columbia Turnpike Suite 102 Florham Park, New Jersey 07932 Tel: 908-273-0770 Fax: 973-520-8260
BACKUP COUNSEL:
Ryan S. McPhee Email: [email protected] Bakos & Kritzer 945 Fourth Avenue Suite 411 San Diego, California 92101 Tel: 619-377-0770 Fax: 973-520-8260
D. SERVICE INFORMATION
Please address all correspondence to the lead counsel at the address provided
in section I.C of this Petition. Petitioner also consents to electronic service by email
II. PAYMENT OF FEES – 37 C.F.R. § 42.103
Petitioner submits herewith the fees set forth in 37 C.F.R. § 42.15(a) for this
Petition for Inter Partes Review.
III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104
A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
Petitioner certifies that the ‘565 Patent is available for IPR and that Petitioner
is not barred or estopped from requesting IPR.
B. Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
Petitioner requests inter partes review of claims 9 and 14 of the ‘565 Patent
on the grounds set forth in the table below and requests that each of the claims be
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
6
found unpatentable. An explanation of how claims 9 and 14 are unpatentable under
the statutory grounds identified below, including the identification of where each
element is found in the prior art references, and the relevance of each of the prior art
references, is provided in the form of detailed claim charts. Additional explanation
and support for each ground of rejection is set forth in the Declaration of Youjiang
Wang, Ph.D., P.E. Ex. 1021.
Ground ‘565 Patent Claims
Basis for Unpatentability
Ground I Claims 9 and 14 Not patentably distinct from a cancelled claim Ground II Claim 9 Obvious under 35 U.S.C. § 103(a) in view of
Pugh U.K. Patent Publication No. GB 2147918 A (“Pugh”) and Isela Phelps, Looming Knitting Primer (New York: St. Martin’s Griffin 2007) (“Phelps”)
Ground III Claim 9 Obvious under 35 U.S.C. § 103(a) in view of Pugh and Kathy Norris, I Can’t Believe I’m Loom Knitting! (Little Rock, AR: Leisure Arts, Inc. 2010) (“Norris”)
Ground IV Claim 9 Obvious under 35 U.S.C. § 103(a) in view of Gustin U.S. Patent No. 7,506,524 (“Gustin”) in view of Phelps or Norris
Ground V Claim 9 Anticipated under 35 U.S.C. § 102(b) by Charman U.S. Patent No. 3,905,133 (“Charman”)
Ground VI Claim 14 Anticipated under 35 U.S.C. § 102(b) by Macbain U.S. Patent No. 5,231,742 (“Macbain”)
Ground VII Claim 14 Obvious under 35 U.S.C. § 103(a) in view of Pugh in view of Carruth et al. U.S. Patent No. 8,418,434 (“Carruth”) or Meltzer U.S. Patent No. 5,426,788 (“Meltzer”)
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
7
1. Effective Filing Date
The ‘565 Patent issued from U.S. Application Serial No. 13/227,638 which
was filed on September 8, 2011 (“the ‘638 Application”) and claims priority to U.S.
Provisional Application No. 61/410,399 which was filed on November 5, 2010 (“the
‘399 Application”). Copies of the USPTO file wrappers for the ‘638 and ‘399
Applications are submitted as Exhibits 1002 and 1003, respectively. The earliest
effective filing date for claims 9 and 14 is November 5, 2010.
2. Claims 9 and 14
Claim 9 is dependent on claim 1. Claim 14 is dependent on claim 13, which
is dependent on claim 12. The relevant claims are reprinted below:
1. A kit for creating an item consisting of a series of links, the device
comprising:
a base; and
at least one pin bar supported on the base, the pin bar including a
plurality of pins each including a top flared portion for holding a
link in a desired orientation and an opening on a front side of each
of the plurality of pins.
9. The kit as recited in claim 1, including a clip for securing ends of the
series of links together.
12. A method of creating a linked item comprising the steps of:
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
8
supporting at least one pin bar including a plurality of pins to a base to
define a desired relative special relationship between at least two
adjacent pins;
assembling at least two elastic bands across adjacent pins;
capturing one end of an elastic band and pulling the end over and onto
an adjacent pin while engaged with another elastic band; and
capturing and pulling subsequent ends over until a desired link length
and configuration is obtained.
13. The method as recited in claim 12, wherein a second of the at least
two elastic bands is placed atop one end of the first of the at least
two elastic bands on a common pin.
14. The method as recited in claim 13, wherein capturing one end of the
elastic band includes using a hook tool reaching into an access
groove of the pin to extend below the top most elastic band and grasp
a bottom elastic band with the hook tool.
3. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
Pursuant to 37 C.F.R. § 42.100(b), and solely for the purpose of this review,
Petitioner construes the claim language such that the claims are given their broadest
reasonable interpretation in light of the specification of the ‘565 Patent. For terms
not specifically listed and construed below, Petitioner construes them for purposes
of this review in accordance with their plain and ordinary meaning under the required
broadest reasonable interpretation.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
9
Petitioner reserves the right to challenge the validity of claims 9 and 14 as
failing to satisfy the requirements of 35 U.S.C. § 112, and Petitioner’s proposed
claim constructions should not be construed as a waiver to challenge the claims on
such grounds. For the purpose of discussing invalidity of claims 9 and 14 in view
of prior art references, Petitioner will attempt to construe various ambiguous claim
terms under the broadest reasonable interpretation standard.
a. The Preamble of Claim 1
Claim 9 depends on claim 1. The preamble of claim 1 (i.e., “[a] kit for creating
an item consisting of a series of links”) is not a claim limitation. In the ‘218 IPR,
the Board held that the preamble in claim 1 is not a claim limitation. ‘218 IPR, Paper
9. In light of the adverse judgment against Patent Owner in the ‘218 IPR, Patent
Owner is estopped from arguing that any portion of the preamble of claim 1 is a
claim limitation.
b. “an opening on a front side of each of the plurality of pins”
In the ‘218 IPR, the Board construed the phrase “front side” of claim 1 as
follows:
Patent Owner contends that the front side recited in claims 1 and
5-11 requires that the openings on all pins face the same
direction. ... We see no such requirement. The phrase “a front
side” applies to the pins individually. The pins may have
openings facing in different directions relative to one another,
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
10
although each opening is still on the front side of the pin relative
to some common reference point.
‘218 IPR, Paper 9 at 8; Ex. 1007 at 9. Petitioner requests that the Board adopt
the same interpretation used in the ‘218 IPR for the term “a front side.” Because
Patent Owner has accepted adverse judgment with respect to claim 1 in the ‘218 IPR,
it is estopped from presenting any claim construction inconsistent with the foregoing
construction. 37 C.F.R. § 42.73(d)(3).
c. “top flared portion”
Claim 1 requires “a plurality of pins each including a top flared portion for
holding a link in a desired orientation.” Petitioner requests that the term “top flared
portion” should be construed to mean “a portion of a pin located at the top of the pin
and expanding outward in shape.” The ordinary and customary meaning of the term
“flare” is “to expand or open outward in shape.” See Ex. 1020 at 2. Consistent with
the foregoing construction, the ‘565 Patent discloses a “flanged top 38 that is flared
outward.” Ex. 1001 at 3:10-11, Fig. 6. Because claim 1 does not limit the direction
in which the top flared portion expands, Petitioner submits that the direction of
expansion can be in any direction, including laterally, radially, or axially.
d. “clip for securing ends of the series of links together”
Claim 9 is dependent on claim 1 and further recites “a clip for securing ends
of the series of links together.” In the ‘218 IPR, the Board ruled that the term “clip”
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
11
means “a device for gripping or holding things together.” ‘218 IPR, Paper 9 at 10.
Petitioner hereby proposes the same claim construction for the term “clip.”
Petitioner submits that the phrase “for securing ends of the series of links
together” recites an intended use of the clip and does not constitute a limitation of
claim 9. If a prior art reference discloses a device that corresponds to the structure
of the clip of claim 9, the prior art device would read on the claim. If the Board
construes this phrase as a limitation, a prior art device need only be capable of
performing the recited function. See, Bettcher Indus., Inc. v. Bunzl USA, Inc., 661
F.3d 629, 654 (Fed. Cir. 2011) (“Where all structural elements of a claim exist in a
prior art product, and that prior art product is capable of satisfying all functional
or intended use limitations, the claimed invention is nothing more than an
unpatentable new use for an old product.”) (citation omitted); see also MPEP 2114.
e. “capturing one end of an elastic band…”
Claim 14 is dependent on claim 13, which is dependent on claim 12. Claim
12 is a method claim and recites “capturing one end of an elastic band and pulling
the end over and onto an adjacent pin while engaged with another elastic band.”
The phrase “an elastic band” uses the indefinite article “an” to describe the
element “elastic band.” Given the specific use of the indefinite article “an,” rather
than a definite article “the” or “said,” it is clear that the element does not take
antecedent basis from any element previously recited in the claim. See NTP, Inc. v.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
12
Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005); Warner-Lambert
Co. v. Apotex Corp., 316 F.3d 1348, 1356 (Fed. Cir. 2003). Therefore, the phrase
“an elastic band” does not refer back to the “at least two elastic bands” recited in the
preceding step in claim 12 (i.e., “assembling at least two elastic bands...”). Instead,
the phrase refers to an additional, separate elastic band. For this reason, Petitioner
submits that the phrase “an elastic band” should be construed as “an additional
elastic band.”
The phrase “while engaged with another elastic band” was construed by the
Board in the ‘218 IPR to require that the elastic band be engaged with another elastic
band.
f. “capturing and pulling subsequent ends over…”
Claim 12 recites “capturing and pulling subsequent ends over until a desired
link length and configuration is obtained.” For the purpose of this petition only,
Petitioner submits that “capturing and pulling subsequent ends over” may be
construed as “capturing and pulling ends of subsequent or additional elastic bands
over adjacent pins.”
IV. SUMMARY OF THE ‘565 PATENT
The ‘565 Patent is directed to a kit for making an item formed by a series of
Brunnian links. The ‘565 Patent discloses that “[a] Brunnian link is a link formed
from a closed loop doubled over itself to capture another closed loop to form a
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
13
chain.” Ex. 1001 at 1:27-29. With reference to Fig. 1, the kit 10 includes a plurality
of bases 12 (three bases 12 are shown in Fig. 1) and a plurality of pin bars 14 (three
pin bars 14 are shown in Fig. 1) supported on the bases 12. Ex. 1001 at 2:42-43,
Fig. 1. Each of the pin bars 14 includes a plurality of pins 26. Ex. 1001 at 2:42-44,
Fig. 1. The kit 10 also includes a hook 16. Ex. 1001 at 2:44, Fig. 1.
With reference to Fig. 6, each of the pins 26 includes a flanged top 38 that is
flared outward. Ex. 1001 at 3:10-11, Fig. 6. Each of the pins 26 also includes an
access groove 40 formed on a front side thereof, as well as bottom portion 44, which
is flared outward, and a mid portion 46, where a band is secured during assembly.
Ex. 1001 at 3:7, 3:18-21, Fig. 6.
Fig. 14A-C (reproduced below) illustrate a method of forming Brunnian links.
Elastic bands 52, 54, and 56 are placed on pins 26. Ex. 1001 at 3:62-4:4, Fig. 14A.
Once the bands are placed on each of the pins, hook 16 is used to grip and pull ends
of the elastic bands as shown in Figs. 14B-C. Ex. 1001 at 4:9-11, Figs. 14B-C.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
14
V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘565 PATENT IS UNPATENTABLE
A. GROUND I: CLAIMS 9 AND 14 ARE NOT PATENTABLY DISTINCT FROM A CANCELLED CLAIM
Claims 9 and 14 are not patentably distinct from a cancelled claim, and Patent
Owner is estopped from arguing that claims 9 and 14 are patentable.
1. Patent Owner is Estopped From Arguing Patentability
In the ‘218 IPR, Patent Owner requested judgment against itself in the form
of cancellation of all claims such that Patent Owner had no remaining claim in the
trial. See 37 C.F.R. § 42.73(b)(2). Under 37 C.F.R. § 42.73(d)(3), “[a] patent
applicant or owner is precluded from taking action inconsistent with the adverse
judgment, including obtaining in any patent…[a] claim that is not patentably distinct
from a…canceled claim….” According to the Rules of Practice for Trials and
Appeal Board Decisions, § 42.73(d)(3) applies to inter partes review. Rules of
Practice, 77 Fed. Reg. No. 157 at 48649 (see Ex. 1009 at 39).
In the ‘218 IPR, Patent Owner voluntarily disclaimed claims 1, 5-8, 10, and
11 of the ‘565 Patent and requested the Board to issue judgment adverse to Patent
Owner. ‘218 IPR, Paper 18 at 2; Ex. 1008 at 2. The Board then entered adverse
judgment against Patent Owner under 37 C.F.R. § 42.72(b)(2). ‘218 IPR, Paper 18
at 2-3; Ex. 1008 at 2-3. Thus, Patent Owner is estopped from taking any action that
is inconsistent with the adverse judgment, including obtaining any patent claims that
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
15
are patentably indistinct from those disclaimed by Patent Owner in the ‘218 IPR.
Claim 9 and 14 are patentably indistinct from one or more of claims 1, 5-8, 10, and
11. Accordingly, Patent Owner is estopped from arguing that claims 9 and 14 are
patentable.
2. Claim 9 Is Not Patentably Distinct From Cancelled Claim 11
Claim 9 recites “a clip for securing ends of the series of links together.” For
the reasons discussed below, Petitioner submits that claim 9 is obvious over the
subject matter of claim 11, either by itself or in view of Carruth (Ex. 1014) or Meltzer
(Ex. 1015). Ex. 1021 at ¶¶ 1005-1006.
Claim 11 does not specifically recite the clip required by claim 9. However,
claim 1, from which both claims 9 and 11 depend, is directed to “a kit for creating
an item consisting of a series of links,” while claim 11 additionally requires that “the
series of links comprise a series of Brunnian links.” In the ‘218 IPR, the Board
construed the term “Brunnian link” as “a link formed from a closed loop doubled
over itself to capture another closed loop to form a chain.” ‘218 IPR, Paper 9 at 10;
Ex. 1007 at 10. The ‘565 Patent further discloses:
Referring to FIG. 3, a Brunnian link 20 is formed from a continuous
looped structure without forming an actual knot. Several links are
formed in a chain to form a circular structure. The ends are then
secured and a durable wearable item is created. … Each link is formed
by capturing ends 22 of one loop structure with a mid portion 24 of
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
16
another loop structure in series. Each link depends on the previous and
subsequent links to maintain the desired shape and integrity. Removing
one link 20 results in all of the links becoming loose from each other.
Ex. 1001 at 2:31-41 (emphasis added).
‘565 Patent; Ex. 1001, Fig. 3.
As admitted in the specification of the ‘565 Patent, it is known to form a
Brunnian link in a circular structure (see Ex. 1021 at ¶ 21; Ex. 1014 at Fig. 2; Ex.
1014 at Fig. 3). It is also known that removing one link from a chain of Brunnian
links will cause all of the links to unravel. Ex. 1021 at 21. In such circumstances, a
person skilled in the art (“a skilled person”) would have readily recognized that ends
of the series of Brunnian links recited in claim 11 must be secured to one another
with a clip (i.e., a device for gripping or holding things together) to prevent the links
from unraveling. Accordingly, it would have been obvious to a skilled person to
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
17
provide the kit of claim 11 with a clip. Ex. 1021 at ¶ 103. Thus, claim 9 is patentably
indistinct from claim 11.
As noted above, Brunnian links are known in the art. Ex. 1021 at ¶ 15. For
instance, the links disclosed in Carruth and Meltzer are formed in exactly the same
manner as described in the ‘565 Patent. Ex. 1021 at ¶ 15. Referring to Figs. 2-3,
Carruth describes its links as follows:
The units 110 are interlocked to form a continuous chain (e.g., via a
connecting mechanism). For example, as shown in FIG. 3, to form the
chain, a first unit 110 a is folded (e.g., in half) in a folded configuration,
wherein the folded configuration has a first top arc 210 a and a second
top arc 210 b that are positioned next to each other, and a first bottom
hook 220 a and a second bottom hook 220 b, wherein the bottom hooks
220 are positioned across from each other. A second unit 110 b is fed
through both bottom hooks 220 of the first unit 110, then the second
unit 110 b is folded to the folded configuration (as described above).
Ex. 1014 at 2:30-40.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
18
Carruth, Ex. 1014, Figs. 2-3.
Meltzer also discloses a chain formed by Brunnian links. Referring to Figs.
4-5, Meltzer discloses:
[T]o make the ornament 20 the connecting loop 24 is supported by hand
(or by some mechanical means) and a second toroidal loop 26 is
connected to it to form the first looped link 22A. In particular, the
second toroidal loop 26 is squeezed together to flatten it somewhat.
This flattened loop is then passed through the central opening 28 of the
looped connecting member 24. Then the ends of the flattened second
toroidal loop 26 are opened while its mid-portion is within the opening
28 of the looped connecting member 24 so that the second toroidal loop
26 is in a configuration having a bridging midsection 30 and a pair of
end openings 32, with the bridging midsection 30 extending through
the opening 28 in the looped connecting member 24 and the end
openings 32 being axially aligned with each other and located outside
of the looped connecting member 24. … After the first looped link 22A
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
19
is formed (and connected to the connecting loop 24) a third toroidal
loop 26 is squeezed flat and inserted through the axially aligned
extending end openings 32 of the first looped link 22A. The third
toroidal shaped loop 26 is then opened so that it is in the same
configuration as the first looped link 22A, to thereby form the third
toroidal loop into the second looped link 22B. This procedure is then
repeated to form and connect the remaining looped links 22C-22H of
the ornament 20.
Meltzer, Ex. 1015 at 4:21-49.
Meltzer, Ex. 1015, Figs. 4-5.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
20
Because the links formed in Carruth and Metlzer must be secured in order to
prevent the links from unraveling, each discloses a clip or equivalent mechanism to
secure ends of the links together and to form a circular chain. For instance, Carruth
discloses a clip mechanism for connecting opposite ends of the disclosed chain:
When the units 110 are interlocked to form a
continuous chain, the accessory has a first
end 101 and a second end 102…[which] can be
connected together via a locking means 150.
The locking means 150 may be one or more of
any securing or locking devices … e.g., a clip
mechanism….
Carruth, Ex. 1014 at 2:45-51, Fig. 4.
Similarly, Meltzer includes a connecting loop 24 for connecting ends of the
chain. See Meltzer, Ex. 1015, Fig. 5 (reproduced above).
As illustrated above, Meltzer and Carruth disclose a series of links that are
identical t the series of Brunnian links described in the ’565 Patent and recited in
claim 11. Meltzer and Carruth also utilize a device for gripping or holding ends of
the series of links disclosed therein. Since the ‘565 Patent itself recognizes that
“[r]emoving one link 20 results in all of the links becoming loose from each other”
Ex. 1001 at 2:40-41, it would have been obvious to provide the kit of claim 11 with
a clip to secure the ends of the series of Brunnian links together in order to prevent
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
21
unraveling of the links and to form a ring structure that can be worn by a person.
Ex. 1021 at ¶ 103. Thus, claim 9 is obvious over claim 11 in view of Meltzer or
Carruth.
As explained above, claim 11 was disclaimed by Patent Owner in the ‘218
IPR, and Patent Owner is prohibited from obtaining any claim that is not patentably
distinct from cancelled claim 11. 37 C.F.R. § 42.73(d); see also Ex. 1009 at 39.
Because claim 9 is obvious over claim 11 in view of Meltzer or Carruth, claim 9 is
unpatentable.
3. Claim 14 Is Not Patentably Distinct From Cancelled Claims
Claim 14 is dependent on claim 13, which is dependent on claim 12. In the
‘218 IPR, Patent Owner requested adverse judgment against claims 1, 5-8, 10 and
11. ‘218 IPR, Paper 18; Ex. 1008 at 2. Thus, Patent Owner has admitted that the
collective subject matter recited in these claims is unpatentable, as well as any
subject matter that is not patentably distinct over such subject matter. Claims 12,
13, and 14 are obvious over the subject matter of the cancelled claims.
4. Claim 12 Is Not Patentably Distinct From Cancelled Claims
The following chart compares claim 12 to cancelled claims 1, 8, 10, and 11.
12. A method of creating a linked item comprising the steps of: supporting at least one pin bar including a plurality of pins to a base to
1. A kit for creating an item consisting of a series of links, the device comprising: a base; and
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
22
define a desired relative special relationship between at least two adjacent pins; assembling at least two elastic bands across adjacent pins; capturing one end of an elastic band and pulling the end over and onto an adjacent in while engaged with another elastic band; and capturing and pulling subsequent ends over until a desired link length and configuration is obtained.
at least one pin bar supported on the base, the pin bar including a plurality of pins each including a top flared portion for holding a link in a desired orientation and an opening on a front side of each of the plurality of pins. 8. The kit as recited in claim 1, including a hook adapted to extend into the access groove for capturing one end of a link. 10. The kit as recited in claim 1, wherein the series of links comprises a series of elastic bands. 11. The kit as recited in claim 1, wherein the series of links comprise a series of Brunnian links.
Claim 1 is directed to a kit having a base and a pin bar with a plurality of pins.
When these elements are assembled with each other, their assembly would
necessarily involve the supporting step recited in claim 12. Moreover, claim 11
recites that the kit (i.e., the base and pin bar with the pins) of claim 1 is for creating
an item consisting of a series of Brunnian links, while claim 10 recites a series of
elastic bands. When using the kit of claim 1, the elastic bands of claim 10, and the
hook of claim 8 to create the Brunnian links of claim 11, it would have been obvious
to a skilled person to perform the remaining three steps recited in claim 12.
As evidenced by Carruth and Meltzer and as acknowledged by Patent Owner
in the ‘565 Patent, methods of manually creating Brunnian links with elastic bands
are well known in the art. See, e.g., Ex. 1014 at 2:30-49; Ex. 1015 at 4:19-55; Ex.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
23
1001 at 2:31-41 and Fig. 3. See also Ex. 1021 at ¶ 25. The methods are virtually
identical to one another and basically involve the steps of (1) holding a first elastic
band, (2) inserting one end of a second elastic band through an opening formed in
the first elastic band, (3) folding over the end of the second elastic band onto the
opposite end of the second elastic band, (4) inserting one end of a third elastic band
through the openings formed in the folded-over ends of the second elastic band, (5)
folding over the second end of the third elastic band onto the opposite end of the
third elastic band to link the third elastic band to the second elastic band, and (6)
continue with subsequent elastic bands. Id.
When the foregoing steps are performed manually, the elastic bands are held
by a person’s fingers. When the steps are performed on the device of claim 1, as
recited in claim 11, a skilled person would have readily recognized that the elastic
bands could be loaded on, and held by, the pins of such device (instead of such
person’s fingers) in order to facilitate the performance of these steps. For example,
a skilled person would have recognized the need to load two or more elastic bands
on a plurality of pins in a certain desired relationship (i.e., the elastic bands in each
adjacent pair need to be assembled on a common pin) and that an end of an elastic
band below an end of the other elastic band on the same common pin would need to
be gripped by a hook and pulled over onto an adjacent pin, and so on. The basic
method steps involved in forming Brunnian links (i.e., inserting an end of an elastic
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
24
band through an opening of another elastic band and folding over that end onto the
opposite end of the elastic band to link the two bands together) would remain the
same, regardless of the instrumentalities utilized to hold, grip and pull the elastic
bands. As a result, there are only a very limited set of predictable options or
modifications that could be tried to form Brunnian links out of elastic bands using
the device of claim 1. Ex. 1021 ¶ 26. A skilled person would have utilized ordinary
skill and common sense in trying these options and would, through trial and error,
have figured out how these bands need to be held, grasped, and pulled to carry out
steps (1)-(6) above to form Brunnian links identical to those in the prior art. Id. In
such circumstances, claim 12 is not patentably distinct over claims 1, 5-8, 10 and/or
11, either alone or in view of Meltzer or Carruth. See also KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (holding that when “there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill and common
sense.”).
5. Claim 13 Is Not Patentably Distinct From Cancelled Claims
Claim 13 is dependent on claim 12 and further recites: “wherein a second of
the at least two elastic bands is placed atop one end of the first of the at least two
elastic bands on a common pin.” As demonstrated above, claim 12 is not patentably
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
25
distinct over cancelled claims 1, 8, 10, and 11. Creating a linked item by further
placing a second elastic band atop one end of the first elastic band is a basic method
step involved in forming Brunnian links (which are recited in cancelled claim 11).
Placing the second elastic band atop one end of the first elastic band on a common
pin is also obvious. A person of skill would find it obvious to do so when using the
kit of cancelled claims 1, 8, 10, and 11. Thus, claim 13 is not patentably distinct
over the cancelled claims.
a. Claim 14 Is Not Patentably Distinct From Cancelled Claims
Claim 14 is dependent on claim 13 and further recites: “wherein capturing
one end of the elastic band includes using a hook tool reaching into an access groove
of the pin to extend below the top most elastic band and grasp a bottom elastic band
with the hook tool.” As demonstrated above, claims 12 and 13 are not patentably
distinct over cancelled claims 1, 8, 10, and 11. Cancelled claim 8 recites “a hook
adapted to extend into the access groove for capturing one end of a link,” and
cancelled claim 11 recites “wherein the series of links comprise a series of Brunnian
links.” A person of skill would find it obvious that creating Brunnian links (as
recited in claim 11) using a hook adapted to extend into the access groove (as recited
in claim 8) involves using the hook to reach into the access groove to grasp the
bottom elastic band with the hook. Thus, claim 14 is not patentably distinct over
cancelled claims 1, 8, 10, and 11.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
26
B. GROUND II: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND PHELPS
Pugh (Ex. 1010) was published on May 22, 1985 and therefore constitutes
prior art against the ‘565 Patent under 35 U.S.C. § 102(b). Referring to Figs. 1-3,
the knitting apparatus disclosed in Pugh includes a frame member 1, and a pair of
bars 1’ supported on the frame member 1. Each of the bars 1’ includes a plurality
of pins 5 removably arranged on a corresponding one of the bars 1’. The pins 5 are
formed with grooves 7, which extend lengthwise of the pins 5 (i.e., heightwise) for
receiving a knitting hook, and plate-like overhanging portions 32 at top ends thereof
for retaining a wool (i.e., yarn) on the pins 5 until lifted therefrom during a knitting
operation.
Pugh, Ex. 1010, Fig. 1 Pugh, Ex. 1010, Fig. 2 Pugh, Ex. 1010, Fig. 3
Claim 9 is dependent on claim 1. As discussed below, claim 1 is anticipated
by Pugh, and claim 9 is obvious in view of Pugh and Phelps.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
27
1. Claim 1 Is Anticipated by Pugh
In the ‘218 IPR, the Board ruled that the petitioner had a reasonable likelihood
of prevailing at trial showing that claim 1 is anticipated by Pugh (‘218 IPR, Paper 9
at 17-18), and Patent Owner voluntarily requested and accepted adverse judgment
with respect to claim 1 (‘218 IPR, Paper 18 at 2). As such, Patent Owner conceded
to the unpatentability of claim 1 over Pugh. While the adverse judgment
conclusively establishes that claim 1 is anticipated by Pugh, for the Board’s benefit,
Petitioner is providing the following chart demonstrating that claim 1 is anticipated
by Pugh.
Claim 1 Pugh GB 2 147 918 A 1. A kit for creating an item consisting of a series of links, the device comprising:
Pugh discloses a knitting apparatus for use in creating a knitted item (see Ex. 1010 at p. 1, lns. 5-7) which consists of a series of links.
a base; and The knitting apparatus disclosed by Pugh includes a frame member 1 (see Ex. 1010 at p. 2, lns. 11-12, Figs. 1-3).
at least one pin bar supported on the base,
Bars 1’ are supported on the frame member 1. See, e.g., Ex. 1010 at p. 2, lns. 61-63, Fig. 3.
the pin bar including a plurality of pins
Each of bars 1’ includes a plurality of pins 5. See, e.g., Ex. 1010 at p. 2, lns. 61-63, Figs. 2-3.
each including a top flared portion
Each of pins 5 includes an upper plate-like overhanging portion 32 at a top end thereof. See, e.g., Ex. 1010 at p. 2, lns. 114-121. As illustrated in Fig. 2, the overhanging portions 32 extend outward from their corresponding pins 5.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
28
for holding a link in a desired orientation and
Each of pins 5 holds yarns or the like in a desired orientation. Pugh also discloses “overhanging portion 32 providing the hook proper for retaining the wool on the hooks until lifted thereoff during the knitting operation by manipulation of a hand-held knitting hook….” Ex. 1010 at p. 2, lns. 117-121.
an opening on a front side of each of the plurality of pins.
Each of pins 5 has a groove 7 on an outwardly facing side (i.e., a front side) thereof. See Ex. 1010 at p. 2, lns. 18-20, Figs. 1-2.
2. Claim 9 Is Obvious in View of Pugh and Phelps
Phelps has a copyright date of 2007 (Ex. 1018 at 2), which is more than one
year before the filing date of the ‘565 Patent. Because Phelps was not cited in the
‘218 IPR or during the prosecution of the ‘565 Patent, the Board did not previously
consider the unpatentability of claim 8 based on the Pugh/Phelps combination.
Claim 9 is dependent on claim 1 and further requires “a clip for securing ends
of the series of links together.” In the ‘218 IPR, the Board construed the term “clip”
as “a device for gripping or holding things together.” Ex. 1007 at 10. While Pugh
does not specifically teach such a “clip,” Phelps does. More particularly, Phelps
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
29
discloses various methods of making knitted articles with the use of looms. Ex. 1018
at 3-13. As part of components for use with looms, Phelps discloses stitch holders,
such as those illustrated herein, “for holding live stitches that will be worked on later
in the project, like a neckline or a tricky bit of shaping.” Ex. 1018 at 8 (emphasis
added).
The use and function of stitch holders, such as those in Phelps, are well known
in the art. Ex. 1021 at ¶ 43. For instance, Yates (Ex. 1017) and Linstead (Ex. 1016)
disclose examples of such stitch holders. Yates describes stitch holders as follows:
In the art of hand knitting it is customary, when knitting various
garments which require that one or more openings be maintained in the
body of the garment, at some given point or points, to temporarily
transfer from the knitting needles a number of stitches to a stitch holder
for later consideration, so that the main knitting can be continued
irrespective of the stitches on the stitch holder. The stitches on the
stitch holder are later picked up and knitted in, when finishing that
section of the garment.
Ex. 1017 at 1:3-13. As shown in Fig. 4, a piece of knitting is placed on the stitch
holder, wherein each of the stitch loops of the piece is loaded onto, and held by, a
leg portion 11 of the holder such that the stitch loops are prevented from becoming
loose (i.e., unraveled).
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
30
Yates, Ex. 1017, Fig. 4 (with annotation).
Linstead (Ex. 1016) also discloses a stitch holder 10 used for basically the
same purpose as in Yates. The stitch holder 10 is illustrated in Figure 1.
Linstead, Ex. 1016, Fig. 1 (with annotation).
As shown above, stitch holders and their usage/functions are well known in
the art. Ex. 1021 at ¶ 43. Accordingly, when the stitch holders shown in Phelps are
used in conjunction with the loom knitting as taught by Pugh, they receive and hold
“live stitches” or stitch loops of a knitted component from the loom for assembly
with another knitted component so as to complete a finished knit article. Ex. 1021
Piece of knitting
Stitch loops
Stitch holder Stitch loops
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
31
at ¶ 48. The following illustration depicts how the stitch holder in Phelps would
hold live stitches together. Ex. 1021 at ¶ 49.
As shown above, the live stitches of the knit component are loaded onto and
held by the stitch holder in Phelps. Each of these live stitches is an end of a series
of knitted loops and therefore constitutes an “end of a series of links.” Ex. 1021 at
¶ 50. Accordingly, the stitch holder of Phelps holds and thereby secures ends of a
series of links together. At a minimum, the stitch holder of Phelps is capable of
securing ends of a series of links together. Thus, Phelps discloses the clip recited in
claim 9 of the ‘565 Patent. Ex. 1021 at ¶ 51.
The device disclosed in Pugh is a knitting apparatus (i.e., loom). Phelps
specifically teaches that its stitch holder can be used when knitting with a loom,
stating “Essential Tools for your Loomy Bag.” Ex. 1018 at 8. Thus, a skilled person
would have been motivated to provide the knitting apparatus of Pugh with the Phelps
stitch holder such that a partially finished component made with the Pugh knitting
apparatus could be loaded onto the stitch holder for assembly with another knit
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
32
component for completing a finished knit article. Ex. 1021 at ¶ 54. Accordingly,
claim 9 is obvious over Pugh in view of Phelps. Ex. 1021 at ¶ 55.
Phelps also teaches additional “clips” (i.e., devices for holding things
together) for securing ends of a series of links made with the use of knitting looms.
Phelps discloses a scarflet comprising a series of links, and two ends thereof secured
to one another by a pin/brooch (i.e., a clip). Ex. 1018 at 14. The pin/brooch
disclosed by Phelps would inherently have a backside pin fastener or clasp to secure
the pin/brooch to the scarflet. Ex. 1021 at ¶ 57.
Phelps also teaches an eyeglass case having a series of links. Two ends of the
case are secured to one another by buttons (i.e., clips). Ex. 1018 at 13.
As demonstrated, Phelps teaches use of these additional holding devices (i.e.,
the pin/brook and buttons) specifically in conjunction with knit articles made with
the use of knitting looms. Ex. 1018 at 13-14. In such circumstances, a skilled person
Pin/brooch (clip)
Ends of series of links
Buttons (clips)
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
33
would have been motivated to provide the knitting apparatus of Pugh with the Phelps
pin/brooch and buttons as part of a kit such that two ends of a linked article can be
secured to one another. Ex. 1021 at ¶ 61. Accordingly, claim 9 is obvious over Pugh
in view of Phelps. Ex. 1021 at ¶ 55.
C. GROUND III: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF PUGH AND NORRIS
Claim 9 is unpatentable over Pugh and Norris. Norris (Ex. 1019) was
published on or about May 1, 2010 (Ex. 1021 at ¶ 6) and constitutes prior art against
the ‘565 Patent. Norris was not cited during prosecution of the ‘565 Patent or in the
‘218 IPR. Norris was cited in the petition in the ‘353 IPR, but the proceedings were
terminated before a decision on institution was made. Thus, Norris was not
previously considered by the Board.
Norris teaches that “stitches [can be] removed from the pegs and placed on a
cable needle while other stitches are being worked. We used a U-shaped cable
needle.” Ex. 1019 at 3.
Norris, Ex. 1019 at 4-5.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
34
As illustrated above, the cable needle in Norris holds together two live stitches
or loops when they are removed from the loom while other stitches are worked on.
Since each of these live stitches form ends of a series of knitted knots, they constitute
“ends of a series of links.” Ex. 1021 at ¶ 69. Accordingly, Norris’ cable needle
holds and secures ends of a series of links together. To the extent that the cable
needle does not specifically perform that function, it is certainly capable of
performing that function. Ex. 1021 at ¶ 52.
Besides the cable needle, Norris disclose other types of “clips” (i.e., devices
for holding things together) for securing ends of a series of links together. For
instance, Norris discloses a scarf set and vest, each comprising a series of links, and
two ends thereof being secured to one another by buttons (i.e., clips). Ex. 1019 at 6-
7.
Norris, Ex. 1019 at 6-7.
The device in Pugh is a knitting apparatus (i.e., a loom). Norris specifically
teaches that its “clip” devices, including the cable needle and buttons discussed
Buttons Button
Ends of series of links Ends of series of links
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
35
above, are used in conjunction with knitting with a loom. Ex. 1019 at 3-5, 8. In
such circumstances, a skilled person would have been motivated to provide the
knitting apparatus of Pugh with the Norris clip devices for the same purposes
disclosed in Norris. Ex. 1021 at ¶ 72. Accordingly, claim 9 is obvious over Pugh in
view of Norris. Ex. 1021 at ¶ 73.
D. GROUND IV: CLAIM 9 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF GUSTIN IN VIEW OF PHELPS OR NORRIS
Claim 9 is unpatentable in view of Gustin and Phelps or Norris. Gustin (Ex.
1011) issued on March 24, 2009 and thereby constitutes prior art to claim 9 of the
‘565 patent. Gustin discloses a hand knitting loom
100 and a method of using same. With reference
to Figs. 1 (at right) and 5A and 5B (below), the
loom includes a base structure 100 and a plurality
of pegs 1-18 mounted thereon. The loom 100 is
also provided cross-bridges 400 for providing an
additional row of pegs or pins 501 between the
pegs 1-18.
Gustin states that “the knitting pegs may have a groove or channel starting at
or near the top end of the knitting peg and running to the bottom end or near the
bottom end” (see Ex. 1011 at 2:61-64). Each of these grooves or channels is used
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
36
for receiving a hook tool for moving stitches on the pegs and is provided on a front
side of its corresponding peg. Ex. 1021 at ¶ 80.
The following chart demonstrates that claim 1 is anticipated and rendered
unpatentable by Gustin under 35 U.S.C. § 102(b).
Claim 1 Gustin U.S. Patent No. 7,506,524 1. A kit for creating an item consisting of a series of links, the device comprising:
Gustin discloses a hand knitting loom for use in creating a knitted item. See Ex. 1011, Abstract.
a base; and Gustin discloses a loom with a base structure 100. Ex. 1011 at 2:66-67, Figs. 5A-5C.
at least one pin bar supported on the base,
Gustin discloses a cross-bridge 400 removably supported on the base 100. Ex. 1011 at 4:25-27, Figs. 5A-5C.
the pin bar including a plurality of pins
The cross-bridge 400 includes a pin 501, 505. Ex. 1011 at 4:56-64, Figs. 5A-5C. Two or more pins may be provided on a single cross-bridge: “[O]ne or more knitting pegs may be located between the substantially parallel rows of knitting pegs by means of a cross-bridge 400….” Ex. 1011 at 4:24-26 (emphasis added).
each including a top flared portion
The pin 501, 505 includes a flanged top. See Figs. 5A-5C.
for holding a link in a desired orientation and
The pin 501, 505 holds yarn in a desired orientation. See Figs. 1, 2A-2C.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
37
an opening on a front side of each of the plurality of pins.
Gustin discloses that “the knitting pegs may have a groove or channel starting at or near the top end of the knitting pin and running to the bottom end or near the bottom end of the knitting peg.” Ex. 1011 at 2:61-64. A groove formed in accordance with this description would be formed on a front side of the pin. Ex. 1011 at ¶ 81.
As indicated above, Gustin discloses all of the elements of claim 1. Claim 9,
which is dependent on claim 1, further requires “a clip for securing ends of the series
of links together.” While Gustin does not specifically disclose a clip, Phelps and
Norris disclose various “clips” such as stitch holders, pin/brooches, cable needles
and buttons, etc., all of which are specifically used in conjunction with knitting
looms. See Section V(B)(2) above. Gustin discloses a knitting loom. Ex. 1011 at
1:13-14. Thus, for the reasons previously discussed, a skilled person would have
been motivated to provide Gustin with the clips disclosed in Phelps and Norris. Ex.
1021 at ¶ 89. Thus, claim 9 is obvious over Gustin in view of Phelps or Norris. Ex.
1021 at ¶ 90.
E. GROUND V: CLAIM 9 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY CHARMAN
Claims 9 is anticipated by Charman (Ex. 1012). Charman issued on
September 16, 1975 and is prior art to the ‘565 Patent under 35 U.S.C. § 102(b).
Charman was not cited during prosecution of the ‘565 Patent or in the ‘218 IPR.
Charman was cited in the petition in the ‘353 IPR, but the proceedings were
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
38
terminated before a decision on institution was made. Thus, Charman was not
previously considered by the Board.
With reference to Fig. 2, Charman discloses and claims a “kit” for making
“threaded designs,” which includes a base board 1 and strips 2 removably mounted
thereon. Each of the strips 2 includes a spine that supports a plurality of spaced
parallel pins or rods 4 which are molded integrally with the spines of the strips 2.
Each rod 4 has an enlarged portion in the form of an enlarged head 4A at the free
end of the rod to “provide positive resistance to the slipping of thread loos over such
heads 4A.” Ex. 1012 at 3:7-9.
Charman, Ex. 1012 at Fig. 2.
The kit disclosed by Charman is capable of making “thread designs,” which
are created by looping thread around pins positioned on the strips 2 supported on the
base board 1. See Ex. 1012 at 1:4-7. The threads are looped around the pins
according to a predetermined pattern (i.e., a desired orientation) so as to create a
“threaded design.” Ex. 1012 at 2:58-64.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
39
Charman discloses an alternate embodiment wherein
the pins have more than one enlargement. Ex. 1012 at 3:38-
40. These “enlargements would be opened lengthwise of
the pin.” See Ex. 1012 at 3:38-40 (emphasis added).
Petitioner’s rendering of this alternate embodiment is
presented (at right) as Fig. A. Ex. 1021 at ¶ 92. Each
“opening” runs lengthwise (i.e., vertically) along the depicted pin.
Charman also discloses an alternate means of attaching the strip 2 to the base
board 1 via the use of “separable clips.” See Ex. 1012 at 3:21-22. Petitioner’s
rendering of this alternate attachment means is presented (at
right) as Fig. B. See also Ex. 1021 at ¶ 96. As shown, the
inverted U-shape of the depicted clip is dictated by the fact
that it must be adapted to grip the strip 2 (which has a
rectangular cross-section) and then plug into the holes 6 in
the base board 1. Ex. 1012 at 3:22-24. As a result, the “clip” disclosed in Charman
satisfies the Board’s previous construction of the term “clip” (i.e., it is a device “for
gripping or holding things together.”). See Ex. 1007 at 10.
Patent Owner may argue that claim 9 includes functional language (i.e., “for
securing ends of the series of links together”) that limits the clip recited in the claim.
However, the law is clear that functional language which does not structurally
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
40
differentiate the claimed apparatus, such as a new or intended use, cannot
differentiate the claimed apparatus over the prior art. See Toshiba Corp. v. Imation
Corp., 681 F.3d 1358 (Fed. Cir. 2012) (“[A]pparatus claims cover what a device is,
not what a device does”) (quoting Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1469 (Fed. Cir. 1990)); see also MPEP 2114. Thus, where the prior art
discloses a structurally equivalent device, a new or intended use will not save an
apparatus claim from being unpatentable in view of the equivalent device.
With regard to claim 9, the functional language “for securing ends of the series
of links together” is merely an intended use and does not structurally differentiate
the claimed apparatus (i.e., the clip of claim 9 or any of the component parts of the
kit recited in claim 1). For example, the phrase “the series of links” has no
antecedent basis in the bodies of either claim 1 or claim 9. Although the preamble
of claim 1 mentions a “series of links,” the Board held in the ‘218 IPR that the
preamble does not limit claim 1. ‘218 IPR, Paper 9 at 20; Ex. 1007 at 20. As a
result, there is no structural element in either claim 1 or claim 9 that can be modified
by the functional language of claim 9. The functional language merely recites an
intended use of the clip recited in claim 9 and does not further limit the structure of
the claimed apparatus. Therefore, claim 9 recites one structural limitation – the clip.
The term “clip” has already been construed in the ‘218 IPR as “a device for gripping
or holding things together.” ‘218 IPR, Paper 9 at 10; Ex. 1007 at 10. Applying this
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
41
definition, the term “clip” in claim 9 reads on the clip disclosed by Charman.
Charman therefore anticipates claim 9.
While “kit” claims are not per se unpatentable, the claim elements must be
structurally interrelated in order to qualify for patent protection, assuming the kit
otherwise satisfies the requirements of patentability. See, e.g., In re Venezia, 530
F.2d 956 (C.C.P.A. 1976) (finding that the components of a “splice connector kit”
were sufficiently interrelated because they were described in relation to each other).
The elements must be so interrelated that one element requires the other to function,
and vice versa. See, e.g., In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (holding
that printed matter in a kit claim must relate to the underlying product such that its
purpose could not be fulfilled without the product, and the product would be
similarly inoperable without the printed matter).
The “clip” and the “series of links” of claim 9 are not structurally interrelated
with any of the component parts of the kit recited in claim 1. While the kit
components recited in claim 1 structurally limit one another (e.g., “a base; and at
least one pin bar supported on the base”), the term “clip” in claim 9 does not impart
any structural limitation to either the base or the pin bar recited in claim 1, or to any
other element or feature which is positively recited in claim 1. Even if the functional
language of claim 9 were considered a claim limitation, such functional language
relates to a term (i.e., “series of links”) recited only in the preamble of claim 1, and
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
42
the preamble has already been excluded as a claim limitation in the ‘218 IPR. ‘218
IPR, Paper 9 at 20; Ex. 1007 at 20. Accordingly, claim 9 does not further limit claim
1. Because claim 9 does not add any structural limitation to the “kit” of claim 1, the
subject matter of claim 9 (i.e., the recited “clip,” with or without its associated
functional language) is anticipated by Charman.
Finally, even assuming that the functional language of claim 9 further limits
the claimed device or kit, the Charman clip is capable of performing the recited
function of “securing ends of the series of links together,” thereby anticipating the
subject matter of claim 9. Ex. 1021 at ¶¶ 99-100. As shown in Fig. B (above), the
“separable clips” of Charman include a crossbar extending between a pair of legs,
each of which is capable of gripping or otherwise holding the end of a link such that
the associated clip is capable of securing “ends of the series of links together.” Ex.
1021 at ¶¶ 96, 98. Thus, claim 9 is anticipated by Charman, even if the functional
language of claim 9 is considered a limitation.
The following chart demonstrates that claim 9 is anticipated and rendered
unpatentable by Charman under 35 U.S.C. § 102(b).
Claim 1 Charman U.S. Patent No. 3,905,133 1. A kit for creating an item consisting of a series of links, the device comprising:
The preamble of claim 1 is not a limitation. Notwithstanding, Charman discloses a kit capable of creating threaded loops looped over pins. See, e.g., Ex. 1012 at 1:5-7, 2:55-57.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
43
a base; and Charman discloses a base board 1 for supporting strips 2. See, e.g., Ex. 1012 at 2:35-40, Fig. 2.
at least one pin bar supported on the base,
The “strips 2 are firmly mounted on a base board 1….” Ex. 1012 at 2:35-40.
the pin bar including a plurality of pins
As shown in Fig. 2 (above), Charman discloses spaced apart parallel pins or rods 4 which are integrally formed with the spine of the strip 2. See, e.g., Ex. 1012 at 2:51-52, Fig. 2.
each including a top flared portion
As shown in Fig. 2 (above), “each rod 4 has an enlarged portion in the form of an enlarged head 4A at the outer extremity thereof.” Ex. 1012 at 2:52-54, see also Fig. 2.
for holding a link in a desired orientation and
“The heads 4A … provide positive resistance to the slipping of thread loops over such heads 4A….” Ex. 1012 at 3:7-9, see also Fig. 2.
an opening on a front side of each of the plurality of pins.
Charman discloses providing pins that have more than one enlargement (i.e., enlarged head 4A), and such enlargements are “opened lengthwise of the pin.” Ex. 1012 at 3:37-40. Petitioner’s rendering of this design is reproduced herein.
Claim 9 Charman U.S. Patent No. 3,905,133 9. The kit as recited in claim 1, including
See above with respect to claim 1.
a clip for securing ends of the series of links together.
Charman discloses that “separable clips may be used for attaching the strips to the base board, such clips being adapted to wrap round the strip spine and plug
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
44
into the holes in the base board….” Ex. 1012 at 3:21-25, see also Fig. B. If the phrase “for securing ends of the series of links together” is considered a limitation, Charman discloses a clip capable of serving this function. Petitioner’s rendering of the design is reproduced herein.
For the foregoing reasons, claim 9 is anticipated by Charman.
F. GROUND VI: CLAIM 14 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY MACBAIN
Claim 14 is unpatentable over Macbain (Ex. 1013), which issued on August
9, 1993 and is thus prior art against the ‘565 Patent under 35 U.S.C. § 102(b).
Because claim 14 is dependent on claim 13, which is dependent on claim 12, each
of these claims will be addressed in order.
1. Claim 12 is Anticipated by Macbain
Macbain discloses a weaving apparatus including a loom 11 having a base 13
and a plurality of plates 15, 17 removably supported on the base 13 and having a
plurality of through holes 49, 59, 61 therein. The weaving apparatus also includes a
plurality of elongated loom fingers 19 adapted to be mounted to the plates 15, 17
through the holes 49, 59, 61. Each of the loom fingers 19 is elongated and has an
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
45
elongated groove 77 running the entire length thereof for receiving a hook 105. As
illustrated in Figs. 2, 3, and 7A-8, each opposite end of the elongated groove 77 is
flared outwardly, presumably to facilitate entry of hook 105 into the elongated
groove 77, thereby forming a top flared portion on its corresponding loom finger 19.
Each of the loom fingers 19 also has opposing ends 731, 732 with tapered portions
751, 752, respectively. Ex. 1013 at Fig. 3.
Macbain, Ex. 1013 at Figs. 2-3.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
46
The plates 15, 17 are assembled with the base 13 as illustrated in Figs. 2-3.
Ex. 1013 at 5:11-20. Macbain teaches that the
number of plates 15, 17 held by the base 13 can be
varied to form a desired hole pattern (e.g., circle,
oval, partial oval, semi-circle, or straight line, as
illustrated in Figs. 4-6). See Ex. 1013 at 4:36-43.
After mounting the plates 15, 17 on the base 13, a desired number of loom
fingers 191,2,3,4… are slidably received in the holes 49, 59 and/or 61 of the plates 15,
17. Macbain specifically teaches that while only four loom fingers 19 are illustrated
in Figs. 2 and 3, “an elongated straight line of loom fingers can be formed utilizing
all of openings 61. Alternatively, a closed oval can be formed utilizing all of
openings 49, 59.” Ex. 1013 at 5:16-20.
The apparatus of Macbain is used to weave closed loop wefts (i.e., bands) or
the like. With reference to Figs. 7B-7D, closd loop wefts 1011, 1012 are twined on
loom fingers 19 such that the closed loop wefts 1011, 1012 are weaved onto a
common loom finger 193. Ex. 1013 at 5:30-45, Figs. 7B, 7D.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
47
More particularly, the closed loop weft 1011 is wrapped around opposite sides of
each loom finger 191,2. Ex. 1013 at 5:30-32. When an end of the row is reached, the
weft 1011 is double turned around the loom finger 193. Ex. 1013 at 5:32-34, Fig. 7C.
Once the weft 1011 has been wrapped around the loom fingers 191-3, a second closed
loop weft (i.e., the weft 1012) is weaved on adjacent loom fingers. The first loop of
the second weft 1012 is attached to the same loom finger 193 on which the previous
weft 1011 ended. Ex. 1013 at 5:39-43, Fig. 7D.
After the weft weaving has been completed as illustrated in Figs. 7B-7D
(above), a conventional hook 105 having a hook portion 107 is then inserted into the
groove 77 of one of the loom fingers (see loom finger 192 in Fig. 8) and then moved
toward an opposite end of
loom finger 192 such that the
hook portion 107 is positioned
below the weft 1011. See Ex.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
48
1013 at Fig. 8. A warp thread 103 (illustrated in Fig. 8 as a band) is grasped by the
hook portion 107 of the hook 105 and pulled through the groove 77 of the loom
finger 192. The warp thread 103 “is passed through grooves 77 of loom fingers 19.”
Ex. 1013 at 5:62-66.
It is inhere that as the warp thread 103 is pulled through the loom finger 192
by the hook 105, it would engage the closed loop weft 1011. This engagement would
necessarily occur due to the manner in which the warp 103 is pulled through the
loom finger 192 by hook 105, as well as the physical dimensions of the relevant parts
of Macbain’s loom, namely, the depth of the channel 77 of the loom finger 192 and
the diameters of the hook 105 and the warp 103, which is shown in Fig. 8 in the form
of a band (i.e., a closed loop having a pair of opposed arcuate ends and a pair of
opposed legs extending between the arcuate ends).
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
49
Referring to the modified view of Fig. 7A shown below, the warp 103 is in
the form of a band. Ex. 1013 at Fig. 8. Thus, the two strands of the warp 103 would
have to pass through the weft 1011 when the warp 103 is pulled through the loom
finger 192 by the hook 105. At the point
where the hook portion 107 of hook 105
reaches the weft 1011, the hook portion
107 would need to pass through the
weft 1011 together with the two warp
strands. At such point, hook 105 and its
hook portion 107 complete occupy the
channel 77 (see Fig. 8), thereby causing both of the warp strands to be positioned
outside the channel 77. The modified view of Fig. 7A herein shows the hook portion
107 (the solid black circle) and the two warp strands of the warp 103 (the two white
circles) as they pass through the weft 1011. It should be noted that the weft 1011
illustrated in Fig. 7A is wrapped loosely around the loom fingers 191, 192, 193 such
that it is spaced from their associated channels 77. However, Fig. 7A illustrates the
weft 1011 prior to it being completely wrapped around the loom fingers 191, 192, 193.
Once the wrapped weft 1011 is tightened around the loom fingers 191, 192, 193 as
illustrated in Figs. 7C and 8, loom fingers 191-3 are roped between the weft 1011 such
that the weft 1011 is positioned directly against the channels 77. With the weft 1011
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
50
in such a position, when the two strands of the warp 103 and the hook portion 107
of the hook 105 pass through the weft 1011 simultaneously, the warp strands would
necessarily engage the weft 1011, as shown in the modified view of Fig. 7A above.
After the hook portion 107 passes through the weft 1011, there would be
continued engagement between the weft 1011 and the warp 103 as the two strands
of the warp 103 are pulled through the weft 1011. As illustrated in the modified
version of Fig. 7A shown above, the depth of channels 77 is substantially similar to
the diameter of warp 103. As a result, channel 77 of the loom finger 192 is only large
enough to receive, at most, one of the two warp strands as warp 103 is pulled through
the weft 1011. In such circumstances, only one of the two warp strands (“the 1st
strand”) could possibly pass through channel 77 of loom finger 192. The other strand
of warp 103 (“the 2nd strand”) must pass through the weft 1011 while positioned
outside channel 77. When the weft 1011 is roped (i.e., tightly wrapped) around the
loom fingers 191-3 such that the weft 1011 is positioned directly against the loom
fingers’ channels 77 (see Figs. 7C and 8), at least the 2nd strand of the warp 103
would continue to be engaged with the weft 1011. For the foregoing reasons, it is
inherent that the warp 103 would engage the weft 1011 while it is being pulled over
and onto the loom finger 192.
Macbain teaches that “it is preferred to use closed loop material made from
fabric which as some elasticity, such as closed loops made from T-shirt type
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
51
material.” Ex. 1013 at 5:24-27 (emphasis added). Accordingly, the wefts 1011, 1012,
each of which is in the form of a band, and the warp 103, which is illustrated in Fig.
8 as a band, constitute elastic bands.
The following chart demonstrates that claim 12, on which claim 14 is
dependent, is anticipated by Macbain.
Claim 12 Macbain U.S. Patent No. 5,231,742 12. A method of creating a linked item comprising the steps of:
Macbain discloses a method for twining or weaving (i.e., creating a linked item).
supporting at least one pin bar including a plurality of pins to a base to define a desired relative special relationship between at least two adjacent pins;
Macbain discloses the step of supporting plates 15, 17 (i.e., pin bars) to a base 13. See, e.g., Ex. 1013 at 5:11-12, Figs. 2, 4-6. The plates 15, 17 include loom fingers 19 (i.e., pins). When supported on the base 13, the plates 15, 17 define a desired relative special relationship between at least two adjacent loom fingers 19. “The pattern formed by openings 61 is a straight line. As is also evident with reference to FIGS. 4, 5, and 6, the number of plates held by base 13 can be varied to form the desired hole pattern (e.g., circle, oval, partial oval, semi-circle, or straight line) and the desired size.” Ex. 1013 at 4:38-43.
assembling at least two elastic bands across adjacent pins;
At least two closed loop wefts (i.e., bands) 1011 and 1012 are assembled across adjacent loom fingers 192, 193, 194 (see Fig. 7D). The wefts 1011 and 1012 are elastic bands. See Ex. 1013 at 5:24-27.
capturing one end of an elastic band and pulling the end over and onto an adjacent pin while
Macbain discloses that once the closed loop wefts 1011, 1012 have been placed on the loom fingers 192, 193, 194, an end of a warp 103 (see Fig. 8) is captured and pulled over and onto an adjacent pin (loom finger 192 in Fig. 8).
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
52
engaged with another elastic band; and
capturing and pulling subsequent ends over until a desired link length and configuration is obtained.
Macbain contemplates additional loom fingers 19 to be used in twining or weaving. “In operation, with plates 15 and 17 assembled with base 13 as illustrated in FIGS. 2 and 3, the desired plurality of loom fingers 191,2,3,4… are slidably received in opening 49, 59 and/or 61.” Ex. 1013 at 5:11-14. “While only four loom fingers 19 are illustrated, it will be appreciated that, for instance, an elongated straight line of loom fingers can be formed utilizing all of openings 61.” Ex. 1013 at 5:16-19.
With reference to the last limitation recited in claim 12 (i.e., “capturing and
pulling subsequent ends…”), Macbain contemplates utilizing a large number of
loom fingers 19 and utilizing long plates to link two or more base members 13. Ex.
1013 at 4:46-47, 5:16-19. When loom fingers 19 are utilized in large numbers,
additional warp loops 103 would be required to be inserted into a large weft
formation formed by multiple closed loop wefts. Accordingly, subsequent ends of
additional warp bands are captured and pulled over and through the loom fingers
until a desired link length and configuration is obtained.
2. Claim 13 is Anticipated by Macbain
Claim 13 is dependent on claim 12 and further recites: “wherein a second of
the at least two elastic bands is placed atop one end of the first of the at least two
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
53
elastic bands on a common pin.” As demonstrated in the following chart, Mabain
discloses this limitation.
Claim 13 Macbain U.S. Patent No. 5,231,742 13. The method as recited in claim 12,
Macbain discloses the method of claim 12. See chart above.
wherein a second of the at least two elastic bands is placed atop one end of the first of the at least two elastic bands on a common pin.
One of the two closed loop elastic wefts 1011, 1012 (i.e., bands) is placed atop one end of the other closed loop elastic wefts on a common loom finger (i.e., the loom finger 193. See Ex. 1013 at Fig. 7D.
3. Claim 14 is Anticipated by Macbain
Claim 14 is dependent on claim 13 and further recites: “wherein capturing
one end of the elastic band includes using a hook tool reaching into an access groove
of the pin to extend below the top most elastic band and grasp a bottom elastic band
with the hook tool.” As demonstrated in the following chart, Mabain discloses this
limitation.
Claim 14 Macbain U.S. Patent No. 5,231,742 14. The method as recited in claim 13,
Macbain discloses the method of claim 13. See chart above.
wherein capturing one end of the elastic band includes using a hook tool reaching into an access groove of the pin to extend below the top most elastic band and grasp a bottom elastic band with the hook tool.
After the wefts 1011, 1012 (i.e., bands) are weaved or twined on the loom fingers 19 as illustrated in Fig. 7D (see Ex. 1013 at 5:30-45), a hook 105 having a hook portion 107 is inserted into the grooves 77 of the loom fingers 19 such that the hook portion 15 extends
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
54
below the weft 1011 and grasps a warp thread 103 (shown as a band in Fig. 8).
G. GROUND VII: CLAIM 14 IS OBVIOUS UNDER 35 U.S.C. § 103(a)
IN VIEW OF PUGH IN VIEW OF CARRUTH OR MELTZER
Claim 14 is unpatentable as obvious over Pugh in view of Carruth or Meltzer.
Claim 14 is dependent on claim 13, which is dependent on claim 12. Each of these
claims will be addressed in order.
In the ‘218 IPR, the Board held that claim 11 is anticipated by Pugh. ‘218
IPR, Paper 9 at 20, Ex. 1007 at 20. This holding establishes that the device disclosed
in Pugh is identical to the device recited in claim 11. As demonstrated above in
Section V(A)(4), claim 12 is obvious over claim 11, either alone or in view of
Carruth or Meltzer. For the same reasons discussed above, Petitioner submits that
Pugh renders claim 12 obvious when considered in combination with Carruth or
Meltzer.
While Pugh does not disclose Brunnian links, both Carruth and Meltzer
provide a motivation or suggestion for using a device like that disclosed by Pugh to
make Brunnian links. For example, Carruth teaches that the “the present invention
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
55
is constructed by linking the units 110 through a predetermined looping or linking
guide … The guide may be replaced with any other type device that services the
same function as would be evident and obvious to those of ordinary skill in the art.”
Ex. 1014 at 3:10-20. Similarly, Meltzer teaches that “the connecting loop 24 is
supported by … some mechanical means….” Ex. 1015 at 4:21-22. Accordingly,
both Carruth and Meltzer suggest using mechanical devices to facilitate the
construction of Brunnian links. Given this suggestion and various similarities
existing between Brunnian links and knitted links, a skilled person would have
readily recognized that the knitting device of Pugh is especially suited for making
Brunnian links. See KSR, 550 U.S. at 421 (holding that when “there are a finite
number of identified, predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her technical grasp.”).
As discussed in Section V(A)(5) above, claim 13 (from which claim 14
depends) is obvious over one or more of claims 1, 5-8, 10, and 11. In the ‘218 IPR,
the Board held that each of claims 1, 5-8, 10, and 11 is anticipated by Pugh. Ex.
1007, Paper 9 at 23; Ex. 1007 at 23. Accordingly, for the same reasons discussed
above, claim 13 is obvious over Pugh in view of Carruth or Meltzer.
Likewise, as discussed in Section V(A)(6), claim 14 is obvious over one or
more of claims 1, 5-8, 10, and 11. In the ‘218 IPR, the Board held that each of claims
1, 5-8, 10, and 11 is anticipated by Pugh. Ex. 1007, Paper 9 at 23; Ex. 1007 at 23.
Petition for Inter Partes Review of U.S. Patent No. 8,485,565
56
Accordingly, for the same reasons discussed above, claim 14 is obvious over Pugh
in view of Carruth or Meltzer.
VI. CONCLUSION
For the above reasons, Petitioner respectfully requests institution of inter
partes review of claims 9 and 14 of the ‘565 Patent.
Dated: March 3, 2015 Respectfully submitted, /Noam J. Kritzer/ Noam J. Kritzer, Lead Counsel Registration No. 60,369 Ryan S. McPhee, Backup Counsel Registration No. 59,752 BAKOS & KRITZER
CERTIFICATE OF SERVICE
I hereby certify that on this 3rd day of March, 2015, a copy of the foregoing
Petition for Inter Partes Review of U.S. Patent No. 8,485,565 and all supporting
exhibits were served by Federal Express upon the following party, listed as the
correspondence address of record for U.S. Patent No. 8,485,565:
John M. Siragusa, Esq. Carlson, Gaskey & Olds, P.C. 400 West Maple Road, Suite 350 Birmingham, Michigan 48009
Dated: March 3, 2015 Respectfully submitted, /Ryan S. McPhee/ Ryan S. McPhee BAKOS & KRITZER