Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NORMAN INTERNATIONAL, INC.
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`Petitioner
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`v.
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`HUNTER DOUGLAS INC.
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`Patent Owner
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`CASE: Unassigned
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`Patent No. 6,968,884 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`TABLE OF CONTENTS
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`EXHIBIT LIST ........................................................................................................iv
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`I.
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`INTRODUCTION .......................................................................................... 1
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B) ............................ 1
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`A.
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`B.
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`REAL PARTY IN INTEREST ............................................................ 1
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`RELATED MATTERS ........................................................................ 1
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
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`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 2
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`A. GROUND FOR STANDING............................................................... 3
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`B.
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`IDENTIFICATION OF CHALLENGE ............................................... 3
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Claims Challenged ..................................................................... 3
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`The Prior Art .............................................................................. 3
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`Supporting Evidence Relied Upon For The Challenge ............. 3
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`Statutory Ground(s) Of Challenge And Legal Principles .......... 3
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`Claim Construction .................................................................... 4
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`How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104(b)(2) ........................................ 4
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`IV. OVERVIEW OF THE 884 PATENT ............................................................. 4
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`A.
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`B.
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`C.
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`D.
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`PRIORITY DATE OF THE 884 PATENT ......................................... 4
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`SUMMARY OF THE 884 PATENT ................................................... 5
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`SUMMARY OF PROSECUTION FILE HISTORY........................... 7
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`CLAIM CONSTRUCTION ............................................................... 10
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`“System for Covering an Architectural Opening” ................... 10
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`“Covering” ............................................................................... 11
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`“Power Spool” .......................................................................... 11
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`“Spring Motor” ........................................................................ 11
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`“Rotating Output” .................................................................... 12
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`“Lift Cord” ............................................................................... 12
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`-i-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`TABLE OF CONTENTS
`(continued)
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`7.
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`8.
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`“One-Way Friction Brake” ...................................................... 13
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`“Transmission” ......................................................................... 14
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`V.
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 884 PATENT IS UNPATENTABLE .................... 14
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 15
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`1.
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`2.
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`3.
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`4.
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`Todd as Prior Art under 35 U.S.C. § 102(e) ............................ 15
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`Strahm as Prior Art under 35 U.S.C. § 102(b) ......................... 15
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`Kuhar as Prior Art under 35 U.S.C. § 102(b) .......................... 15
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`Lohr as Prior Art under 35 U.S.C. § 102(b) ............................ 16
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`5. McClintock as Prior Art under 35 U.S.C. § 102(b) ................. 16
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`B.
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`SUMMARY OF INVALIDITY POSITIONS ................................... 16
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT
`REDUNDANT ................................................................................... 17
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 5-7 OF 884 PATENT ....................... 18
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`A. GROUND 1: CLAIMS 5-7 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103(a) AS BEING OBVIOUS OVER TODD ............... 18
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`1.
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`2.
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`3.
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`Claim 5 Is Rendered Obvious By Todd ................................... 19
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`Claim 6 Is Rendered Obvious By Todd ................................... 23
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`Claim 7 Is Rendered Obvious By Todd ................................... 23
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`B. GROUND 2: CLAIMS 5-7 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103(a) AS BEING OBVIOUS OVER TODD IN
`VIEW OF STRAHM .......................................................................... 27
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`1.
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`2.
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`Claim 5 Is Rendered Obvious By Todd In View Of
`Strahm ...................................................................................... 28
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`Claim 6 Is Rendered Obvious By Todd In View Of
`Strahm ...................................................................................... 32
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`TABLE OF CONTENTS
`(continued)
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`3.
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`Claim 7 Is Rendered Obvious By Todd In View Of
`Strahm ...................................................................................... 33
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`C. GROUND 3: CLAIM 6 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER TODD IN
`VIEW OF STRAHM AND IN FURTHER VIEW OF
`McCLINTOCK .................................................................................. 36
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`D. GROUND 4: CLAIMS 5-7 ARE UNPATENTABLE UNDER
`35 U.S.C. § 103(a) AS BEING OBVIOUS OVER KUHAR IN
`VIEW OF LOHR................................................................................ 36
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`1.
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`2.
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`3.
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`Claim 5 Is Rendered Obvious By Kuhar In View Of Lohr ..... 37
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`Claim 6 Is Rendered Obvious By Kuhar In View Of Lohr ..... 41
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`Claim 7 Is Rendered Obvious By Kuhar In View Of Lohr ..... 41
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`E.
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`GROUND 5: CLAIM 6 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER KUHAR IN
`VIEW OF LOHR AND IN FURTHER VIEW OF
`McCLINTOCK .................................................................................. 45
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`VII. CONCLUSION ............................................................................................. 46
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`Petition for Inter Partes Review of U.S. Patent 6,968,884 B2
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 6,968,884 B2 (“the 884 Patent”)
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`Ex. 1002 U.S. Patent No. 6,056,036 (“Todd”)
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`Ex. 1003 U.S. Patent No. 3,327,765 (“Strahm”)
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`Ex. 1004 U.S. Patent No. 5,531,257 (“Kuhar”)
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`Ex. 1005 U.S. Patent No. 3,216,528 (“Lohr”)
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`Ex. 1006 U.S. Patent No. 5,641,229 (“McClintock”)
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`Ex. 1007 Declaration of Lawrence E. Carlson in Support of Petition for Inter
`Partes Review of U.S. Patent No. 6,968,884 B2 (“Carlson Declaration
`on 884 Patent”)
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`-iv-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, NORMAN
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`INTERNATIONAL, INC. (“Petitioner”) petitions for inter partes review of claims
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`5-7 of U.S. Pat. No. 6,968,884 B2 (“the 884 Patent,” Ex. 1001), assigned to
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`5
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`HUNTER DOUGLAS INC. (“Patent Owner”), based on the record at the USPTO.1
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`This Petition shows that there is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the claims 5-7 challenged. Claims 5-7 are
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`unpatentable under pre-AIA 35 U.S.C. § 103(a). The Office is respectfully
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`requested to institute a trial for inter partes review and to cancel claims 5-7.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
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`A. REAL PARTY IN INTEREST
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`Petitioner NORMAN INTERNATIONAL INC. is the real party in interest.
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`B. RELATED MATTERS
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`The 884 Patent is being asserted against Petitioner in an on-going patent
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`15
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`infringement lawsuit brought by Patent Owner in Hunter Douglas, Inc. et al. v.
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`Nien Made Enterprise Co., Ltd. et al., 1:13-cv-01412-MSK-MJW filed in the U.S.
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`District Court of Colorado on May 31, 2013. Specifically, Patent Owner is
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` Inventors assigned the 884 Patent to Hunter Douglas, Inc. via an assignment of
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`the parent patent 6,536,503 to Hunter Douglas, Inc. executed on November 25,
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`2002 and recorded at Reel/Frame 013775/0749.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`asserting Claims 5-7 of the 884 Patent against Petitioner Norman International Inc.
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`and other entities. Rejection and cancelation of claims 5-7 of the 884 Patent will
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`prevent Patent Owner from improperly claiming technologies in the public domain
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`as its own and from improperly asserting invalid claims to exclude others in
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`commerce.
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`In addition, Petitioner is pursuing petitions for inter partes review of three
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`additional U.S. Patents that are asserted by Patent Owner in the above litigation:
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`Patent Nos. 8,230,896 B2; 6,283,192 B1; and 6,648,050 B1.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
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`10
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`Pursuant to 37 C.F.R. § 42.8(b)(3) and 42.10(a), Petitioner appoints Bing Ai
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`(Reg. No. 43,312) as lead counsel and Kourtney Mueller Merrill (Reg. No. 58,195)
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`as its back-up counsel, all at the mailing address of Perkins Coie LLP, 11988 El
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`Camino Real, Suite 350, San Diego, CA 92130, contact numbers of 858-720-5700
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`(phone) and 858-720-5799 (fax), and the following email for service and all
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`communications:
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`norman-hd-ipr@perkinscoie.com
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney executed by Petitioner
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`Norman International, Inc. for appointing the above designated counsel is
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`concurrently filed.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
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`-2-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`This Petition meets and complies with all requirements under 37 C.F.R.
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`§ 42.104 for inter partes review of the 884 Patent.
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`A. GROUND FOR STANDING
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`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the 884
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`5
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`Patent is available for inter partes review and that the Petitioner is not barred or
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`estopped from requesting inter partes review challenging claims of the 884 Patent
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`on the grounds identified herein.
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`B.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested by Petitioner
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`10
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`is that the Patent Trial and Appeal Board invalidate Claims 5-7 of the 884 Patent.
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`1.
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`Claims Challenged
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`Claims 5-7 of the 884 Patent are challenged in this Petition.
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`2.
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`The Prior Art
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`The prior art references relied upon are Todd (Ex. 1002), Strahm (Ex. 1003),
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`Kuhar (Ex. 1004), Lohr (Ex. 1005), and McClintock (Ex. 1006) in the Exhibit List.
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`3.
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`Supporting Evidence Relied Upon For The Challenge
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`Concurrently filed with this Petition are the Declaration of Professor
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`Lawrence Carlson on the 884 Patent (Ex. 1007, Carlson Declaration) supporting
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`the grounds for claim rejections and providing other supporting evidence.
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`4.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`-3-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`The review of patentability of claims 5-7 of the 884 Patent requested in this
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`Petition is governed by statutory provisions under pre-AIA 35 U.S.C. §§ 102 and
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`103 that were in effect before March 16, 2013. Statutory provisions 35 U.S.C.
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`§§ 311 to 319 that took effect on September 16, 2012 govern this inter partes
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`5
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`review.
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`5.
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`Claim Construction
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`A claim subject to inter partes review shall be given by the Patent Office
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`“its broadest reasonable construction in light of the specification of the patent in
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`which it appears” to one of ordinary skill in the art. 37 C.F.R. §§ 42.100(b) and
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`42.103(b)(3).
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`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. § 42.104(b)(2)
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`An explanation of how claims 5-7 of the 884 Patent are unpatentable,
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`including the identification of where each element of each claim is found in the
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`15
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`prior art patents or printed publications, is provided in Section VI below.
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`IV. OVERVIEW OF THE 884 PATENT
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`A.
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`PRIORITY DATE OF THE 884 PATENT
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`The 884 Patent is granted from Appl. No. 10/184,008 filed June 26, 2002
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`and claims priority as a continuation application of U.S. Appl. No. 09/528,951
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`20
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`filed on March 20, 2000 (now U.S. Patent No. 6,536,503 B1), which further claims
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`priority from U.S. Provisional Appl. No. 60/125,776 filed on March 23, 1999.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`Therefore, the earliest priority date of the 884 Patent is no earlier than March 23,
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`1999.
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`B.
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`SUMMARY OF THE 884 PATENT
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`The 884 Patent describes a modular system of components to retract and
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`5
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`extend a window covering. The 884 Patent teaches modularity and
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`interchangeability of individual modules in function groups such as a power and
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`power transmission group, a lift and/or tilt stations group, a tilt mechanisms group,
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`or others. See, e.g., 3:10-4:16 of the 884 Patent.
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`Claims 5-7 challenged in this Petition attempt to claim systems for covering
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`10
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`an architectural opening that use well-known mechanical components in
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`commonly used combinations in the window coverings industry and are based on
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`routine mechanical engineering designs that were documented before the earliest
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`priority date of the 884 Patent. As shown by evidence in this Petition, a person
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`having ordinary skill in the art of mechanical components in late 1990’s would
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`readily recognize that Claims 5-7 cover nothing novel, only obvious and routine
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`combinations of features that were known in the window coverings industry and
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`mechanical engineering. Claims 5-7 are a bold but belated attempt by Patent
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`Owner to claim what was already known in that industry.
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`Claims 5-7 are vaguely and confusingly worded and thus fail to point out
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`and distinctly claim the subject matter which the applicant regards as his invention.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`For example, Claims 5 and 7 recite a “one-way friction brake” that provides
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`a braking force “that stops” [Claim 5] or “opposing” [Claim 7] “the rotation of the
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`rotating output in one of the directions while permitting the rotating output to
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`rotate freely in the other of said directions.” Both Claims 5 and 7 fail to point out
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`5
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`and distinctly claim how the one-way friction brake would provide such braking
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`force. Notably, Claims 5 and 7 fail to recite any structure in the one-way friction
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`brake to enable stopping or opposing the rotation of the rotating output in one of
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`the directions while permitting the rotating output to rotate freely in the other of
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`said directions.
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`The specification of the 884 Patent fails to provide sufficient support for the
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`claimed one-way friction brake. The 884 Patent discloses two examples of a brake
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`module, a variable brake module (i.e., “variable brake 900,” described at 58:51-
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`59:64 and shown in FIGS. 175-182) and an adjustable brake module (i.e.,
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`“adjustable brake 900A,” described at 59:65-60:21 and shown in FIGS. 183A-190),
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`15
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`and a one-way clutch coupled within the disclosed brake modules. Briefly, these
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`embodiments include a housing for the brake module, an input shaft, an output
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`shaft, a brake drum, and a brake shoe, as well as several other components
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`including various types of gears, springs, shaft members, etc., with specific ways to
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`mechanically couple to one another. The specification of the 884 Patent, however,
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`20
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`does not disclose “said one-way friction brake providing a braking force that stops
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`the rotation of the rotating output in one of the directions while permitting the
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`rotating output to rotate freely in the other of said directions” as recited in Claim 5
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`and “said one-way friction brake providing braking force opposing the rotation of
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`the rotating output in one of the directions while permitting the rotating output to
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`5
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`rotate freely in the other of said directions; wherein said one-way brake applies a
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`braking force opposing rotation of the rotating output for movement of the
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`covering to the extended position while permitting free rotation for movement of
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`the covering to the retracted position” as recited in Claim 7.
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`C.
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`SUMMARY OF PROSECUTION FILE HISTORY
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`The 884 Patent underwent the original examination leading to the issuance
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`on November 29, 2005 and a subsequent certificate of correction correcting parts
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`of the description on March 14, 2006. USPTO records show no further post-grant
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`proceedings on the 884 Patent.
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`In the original examination of the 884 Patent, the Office issued one
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`restriction requirement on October 2, 2003, two non-final office actions rejecting
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`claims based on prior art on January 22, 2004 and June 15, 2004, and a final office
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`action rejecting claims based on prior art on December 8, 2004. In response to
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`those four actions, Patent Owner amended claims four times. Claim 5-7 are not
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`originally filed claims and correspond to Claims 126, 128 and 127, respectively,
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`20
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`which were added and further amended during the original examination.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`The Office records show Patent Owner’s response and claim amendments
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`filed on February 5, 2005 in response to the final office action and the Notice of
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`Allowance on May 6, 2005 where Examiner Blaire M. Johnson rejected prior
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`versions of Claim 5 (i.e., original Claim 126 added and amended during
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`5
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`prosecution) and its dependent Claim 6 (i.e., original Claim 128 added and
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`amended during prosecution) over the cited prior art. Examiner Johnson allowed
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`Claims 5 and 6 only after Patent Owner amended Claim 5 to include features to the
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`remaining claim elements and the following additional limitations of (1) the recited
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`spring motor including “a coil spring and a power spool, wherein said coil spring
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`wraps onto and off of said power spool,” (2) the recited rotating output
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`“operatively connected to the power spool of the spring motor,” and (3) the recited
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`one-way friction brake to provide “a braking force that stops the rotation of the
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`rotating output” rather than providing a braking force that opposes the rotation of
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`the rotating output.
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`The above Office records also show that Claim 7 (i.e., original Claim 127
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`added and amended during prosecution) was allowed because the Examiner
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`believed, based on the prior art on record during the original examination, the
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`features of “wherein said one-way brake applies a braking force opposing rotation
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`of the rotating output for movement of the covering to the extended position while
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`permitting free rotation for movement of the covering to the retracted position”
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`render Claim 7 patentable.
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`The Office records of the original examination show that various relevant
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`references cited in this Petition were not before or relied upon by the Examiner.
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`5
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`The Strahm, Lohr and McClintock references were not on the record and were not
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`before the Examiner in the original examination. The Todd reference was entered
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`on record in the second non-final office action dated June 15, 2004, and the Kuhar
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`reference was entered on record on July 24, 2002. However, there was no record of
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`any discussion on any teaching or relevance of the cited Todd and Kuhar
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`references with respect to issued Claims 5-7 (or any other claims) in the file history
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`of the original examination. As shown by the disclosures in Todd and Kuhar and
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`the analysis of their relevance to the challenged claims in this Petition, Todd and
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`Kuhar in their respective combinations with other prior art disclose all features of
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`Claims 5-7 and render Claims 5-7 unpatentable.
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`The evidence presented in this Petition demonstrates that the original
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`examination of the 884 Patent was conducted based on an incomplete record of
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`relevant prior art and was conducted without due consideration of the technical
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`disclosure and the relevance of some of the prior art on record. The lack of due
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`consideration of relevant prior art in the original examination led to the issuance of
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`Claims 5-7 that are invalid. Therefore, the institution of the inter partes review of
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`Claims 5-7 of the 884 Patent should be granted.
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`D. CLAIM CONSTRUCTION
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`Petitioner presents construction of certain claim terms below pursuant to the
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`5
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`broadest reasonable interpretation (BRI) standard for inter partes review. The BRI
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`claim constructions are offered only to comply with 37 C.F.R. §§ 42.100(b) and
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`42.104(b)(3) and for the sole purpose of this Petition. Therefore, the BRI claim
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`constructions in this Petition do not necessarily reflect appropriate claim
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`constructions to be used in litigation and other proceedings where a different claim
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`construction standard applies.
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`1.
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`“System for Covering an Architectural Opening”
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`The BRI claim construction for the term “system for covering an
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`architectural opening” is “a group of functional components that retract and extend
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`a window blind or shade.”
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`The BRI claim construction is supported by the 884 Patent. The 884 Patent
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`describes systems of window blinds or shades, including Venetian blinds, pleated
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`shades, or other horizontal or vertical blinds or shades. The basis in the 884 Patent
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`for the BRI claim construction includes, e.g., Abstract; 1:14-18; and FIGS. 1-13C
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`and associated textual description. The description of the 884 Patent does not
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`explicitly recite the term “system for covering an architectural opening” outside of
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`the claims but does use other terms to refer to such a system for window blinds or
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`shades, including “architectural coverings” and “coverings for architectural
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`openings.” See, e.g., Title, 33:66, and 68:4.
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`2.
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`“Covering”
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`5
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`The BRI claim construction for the term “covering” is “a group of slats, a
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`pleated fabric shade, or a roller shade.” The basis in the 884 Patent for the BRI
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`claim construction includes: blind slats (FIGS. 1-7, 11-13, and 13B-13C), pleated
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`fabric shades (FIGS. 8-10, 13A, and 214-216), and roller shades (FIGS. 217-220)
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`and associated textual description. The 884 Patent specifically discloses Venetian
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`10
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`blinds, pleated shades, or other horizontal or vertical blinds or shades (1:15-18).
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`3.
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`“Power Spool”
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`The BRI claim construction for the term “power spool” is “a component to
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`hold and wind a spring.” The basis in the 884 Patent for the BRI claim construction
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`includes, e.g., Claim 5, 17:55-56; 19:5-6; 17:49-51; and FIGS. 16, 21-25, 28, and
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`30-38 and associated textual description.
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`4.
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`“Spring Motor”
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`The BRI claim construction for the term “spring motor” is “a mechanism
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`that uses a spring to output mechanical power to another component or
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`components.” The 884 patent discloses several spring motors under various terms
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`including “spring motor,” “spring motor module,” “coiled spring motor,” “coiled
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`spring motor power unit,” “coil spring motor,” “coiled spring motor module,” “coil
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`spring motor power module,” “spring motor power module” or “spring motor
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`power unit.” The disclosed spring motors include, at least, a spring and a spool that
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`winds or unwinds the spring. The disclosed spring motors are in coaxial and
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`transaxial arrangements of the spring and its spools with respect to a rotating rod in
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`5
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`which the winding or unwinding of the spring motor causes the rotating rod to
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`rotate in raising or lowering the covering. Examples of support in the 884 Patent
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`include 17:32-24:34; FIGS. 14-63 and associated textual description.
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`5.
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`“Rotating Output”
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`The BRI claim construction for the term “rotating output” is “a component
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`to rotate upon actuation by another component.” The specification of the 884
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`Patent is consistent with the above BRI claim construction. The claim term
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`“rotating output” is not explicitly used in the description or drawings of the 884
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`Patent outside the claims, but the 884 Patent describes a lifting rod that provides
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`the function and structure of this “rotating output” such as the lift rod 26 featured
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`in several embodiments of a blind, e.g., FIGS. 1-13C and 214-216, or elongated
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`spool 1070, e.g., FIGS. 217-220 and associated textual description.
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`6.
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`“Lift Cord”
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`The BRI claim construction for the term “lift cord” is “a flexible line or cord
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`capable of being wound or unwound, to cause lifting or lowering of the covering of
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`a window blind or shade.” The basis in the 884 Patent for the BRI claim
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`construction includes description and figures of a lift cord 16 featured in several
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`embodiments of a blind, e.g., FIGS. 1-13C and 214-216 and associated textual
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`description.
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`7.
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`“One-Way Friction Brake”
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`5
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`The BRI claim construction for the term “one-way friction brake” is “a
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`mechanism that applies a frictional braking force against a rotational motion of the
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`rotating output in one rotational direction and insubstantial frictional braking force
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`in the other rotational direction.”
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`The claim term “one-way friction brake” is not found in the description or
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`drawings of the 884 Patent outside the claims. In addition, there is not sufficient
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`support in the original specification for the following claimed features for “one-
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`way friction brake” as recited in Claim 5: “said one-way friction brake providing a
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`braking force that stops the rotation of the rotating output in one of the directions
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`while permitting the rotating output to rotate freely in the other of said directions.”
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`Also, the original specification of the 884 Patent does not provide sufficient
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`support for the following claimed features for “one-way friction brake” as recited
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`in Claim 7: “said one-way brake applies a braking force opposing rotation of the
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`rotating output for movement of the covering to the extended position while
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`permitting free rotation for movement of the covering to the retracted position.”
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`The above BRI claim construction for “one-way friction brake” is based on
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`the claim language in the claims. For the purpose of the BRI claim construction,
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`Petitioner identifies the following examples in the description and figures of the
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`884 Patent as support for the BRI claim construction: a variable brake module 900,
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`5
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`e.g., 58:51-59:64; FIGS. 175-182; and an adjustable brake module 900A, e.g.,
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`59:65-60:21 and FIGS. 183A-190.
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`8.
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`“Transmission”
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`The BRI claim construction for the term “transmission” used in Claim 6 is
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`“a mechanism coupled to the spring motor and the rotating output to transmit
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`motion between the rotation of the spring motor and the rotation of the rotating
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`output.” Examples in the specification of the 884 Patent for the BRI claim
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`construction include, among others, transmission modules described in 24:35-
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`33:63 and FIGS. 64-90B, 208A, 208B and 210.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE 884 PATENT IS UNPATENTABLE
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`The applicable patent statutory provisions for this Petition are pre-AIA 35
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`U.S.C. §§ 102 or 103 that were in effect before March 16, 2013.
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`Evidence and analysis presented in this Petition demonstrate that there is a
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`reasonable likelihood that Claims 5-7 are unpatentable under pre-AIA 35 U.S.C.
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`20
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`§ 103(a) for being obvious because the combinations in Claims 5-7 merely recite
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`known, predictable and/or obvious combinations of features disclosed in the cited
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`prior art references.
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART
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`1.
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`Todd as Prior Art under 35 U.S.C. § 102(e)
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`5
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`U.S. Patent No. 6,056,036 to Todd was issued on May 2, 2000 from a patent
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`application filed May 1, 1997 (Ex. 1002). The May 1, 1997 filing date of Todd
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`predates the earliest priority date of March 23, 1999 claimed by the 884 Patent.
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`Therefore, Todd qualifies as prior art under 35 U.S.C. § 102(e) with respect to the
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`884 Patent.
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`2.
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`Strahm as Prior Art under 35 U.S.C. § 102(b)
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`U.S. Patent No. 3,327,765 to Strahm was issued June 27, 1967 based on a
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`patent application filed on June 29, 1965 (Ex. 1003), and thus predates the earliest
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`priority date of March 23, 1999 claimed by the 884 Patent by more than one year.
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`Therefore, Strahm is prior art under 35 U.S.C. § 102(b) with respect to the 884
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`Patent.
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`3. Kuhar as Prior Art under 35 U.S.C. § 102(b)
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`U.S. Patent No. 5,531,257 to Kuhar was issued July 2, 1996 from a patent
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`application filed September 9, 1994 (Ex. 1004). The issue date of July 2, 1996 of
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`Kuhar predates the March 23, 1999 priority date claimed by the 884 Patent by
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`more than one year. Therefore, Kuhar qualifies as prior art under 35 U.S.C.
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`§ 102(b) with respect to the 884 Patent.
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`4.
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`Lohr as Prior Art under 35 U.S.C. § 102(b)
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`U.S. Patent No. 3,216,528 to Lohr was issued November 9, 1965 (Ex. 1005)
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`and predates the March 23, 1999 priority date claimed by the 884 Patent by more
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`than one year. Therefore, Lohr is prior art under 35 U.S.C. § 102(b) with respect to
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`5
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`the 884 Patent.
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`5. McClintock as Prior Art under 35 U.S.C. § 102(b)
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`U.S. Patent No. 5,641,229 to McClintock was issued June 24, 1997 (Ex.
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`1006) and predates the March 23, 1999 priority date claimed by the 884 Patent by
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`more than one year. Therefore, McClintock is prior art under 35 U.S.C. § 102(b)
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`10
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`with respect to the 884 Patent.
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`B.
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`SUMMARY OF INVALIDITY POSITIONS
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`The cited references, not previously before or relied upon by the Office in
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`the original examination of the 884 Patent, disclose the claimed elements and
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`limitations of the systems for covering an architectural opening of Claims 5-7, in
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`combination, and in particular, teach the technical features that the Examiner
`
`determined to be lacking in the prior art on record in the original examination.
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`Therefore, there is a reasonable likelihood that Petitioner will prevail with respect
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`to at least one of Claims 5-7. Specifically, Claims 5-7 are rendered obvious by
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`Todd alone, by Todd in view of Strahm, and by Kuhar in view of Lohr.
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`Additionally, Claim 6 is further rendered obvious by Todd in view of Strahm and
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`in further view of McClintock, and by Kuhar in view of Lohr and in further view
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`of McClintock.
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT REDUNDANT
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`5
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`This Petition provides independent and distinctive invalidity positions under
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`35 U.S.C. §§ 102 and 103 against each of Claims 5-7 based on cited prior art
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`references: (1) Todd, (2) Todd and Strahm and (3) Kuhar and Lohr.
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`Those references are selected because of their distinctive teachings that
`
`cover different technical aspects of Claims 5-7 of the 884 Patent and provide the
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`10
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`Office and the public with a fuller view of the prior art landscape prior to the filing
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`of the 884 Patent that was not discussed or duly considered during the original
`
`examination.
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`To facilitate “just, speedy and inexpensive resolution” in the spirit of 35
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`C.F.R. § 42.1(b), Petitioner has exercised due diligence in minimizing both the
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`15
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`number of references and the number of invalidity positions against Claims 5-7.
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`The requirements of the speedy and inexpensive resolution are duly met by this
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`Petition.
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`Rule 35 C.F.R. § 42.1(b) also requires the just resolution of the
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`unpatentability issues. In this consideration, Petitioner respectfully reminds the
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`20
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`Office that the absence of full and proper prior art references and lack of due
`
`consideration to cited Todd and Kuhar during the original examination of the 884
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`Petition for Inter Partes Review of U.S. Pat. No. 6,968,884 B2
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`Patent led to the issuance of invalid Claims 5-7 being asserted in patent litigation.
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`Claims 5-7 fail to meet the statutory requirements on multiple grounds for mult