UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`NORMAN INTERNATIONAL, INC.
`
`Petitioner
`
`v.
`
`ANDREW J. TOTI TESTAMENTARY TRUST, RUSSELL L. HINCKLEY, SR.
`(CO-TRUSTEE) and ROBERT F. MILLER (CO-TRUSTEE)
`
`Patent Owner
`
`_________________________
`
`CASE: IPR2014-00283
`Patent No. 6,283,192 B1
`
`_________________________
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE OF SEPTEMBER 10, 2014
`
`
`
`
`
`
`
`
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`NORMAN INTERNATIONAL, INC.
`
`Petitioner
`
`v.
`
`ANDREW J. TOTI TESTAMENTARY TRUST, RUSSELL L. HINCKLEY, SR.
`(CO-TRUSTEE) and ROBERT F. MILLER (CO-TRUSTEE)
`
`Patent Owner
`
`_________________________
`
`CASE: IPR2014-00283
`Patent No. 6,283,192 B1
`
`_________________________
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE OF SEPTEMBER 10, 2014
`
`
`
`
`
`
`
`
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`SUMMARY OF OPINIONS .......................................................................... 2
`II.
`III. QUALIFICATIONS AND EXPERIENCE .................................................... 3
`A.
`Education and Work Experience .......................................................... 3
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 5
`V. UNPATENTABILITY OF CLAIMS 17 AND 26 ......................................... 6
`A. Claim 17 is Anticipated by Tachikawa ...................................................... 6
`1.
`Construction of “Inherent Inertia” ............................................. 7
`2.
`Tachikawa Discloses Element [J] ............................................ 13
`Claim 26 Is Rendered Obvious By Tachikawa in View of Todd ...... 15
`1.
`The Combination of Tachikawa and Todd Discloses
`Element [F] .............................................................................. 16
`Adding Multiple Spring Drives to Tachikawa Is
`Consistent With The Purposes and Disclosures of
`Tachikawa and Todd ................................................................ 18
`
`B.
`
`2.
`
`
`
`
`
`-i-
`
`
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`I.
`
`INTRODUCTION
`
`1. My name is Lawrence E. Carlson, and I am a Professor Emeritus of
`
`Mechanical Engineering at the University of Colorado at Boulder. I am also an
`
`independent consultant on various matters involving mechanical engineering.
`
`2.
`
`I have been engaged by Norman International, Inc. (“Norman” or
`
`“Petitioner”) to investigate and opine on certain issues relating to U.S. Patent No.
`
`6,283,192 B1 entitled “FLAT SPRING DRIVE SYSTEM AND WINDOW
`
`COVER” (“192 patent”).
`
`3. My previous declaration in this inter partes review dated December
`
`20, 2013, at Exhibit 1008 (my “2013 Declaration”), provides helpful explanation
`
`of my credentials and experience, the relevant technology, and my opinions with
`
`respect to the 192 patent. I understand that the Board decided not to give any
`
`weight to my 2013 Declaration for purposes of its Decision on Institution of Inter
`
`Partes Review because Petitioner failed to state its relevance or identify specific
`
`portions that support the challenge. (Paper 9 at 11.) I believe the 2013 Declaration
`
`is relevant to this declaration, and I identify below specific portions of my 2013
`
`Declaration that are relevant to the issues raised by Patent Owner.
`
`4.
`
`In this declaration, I will address only those issues necessary to reply
`
`to and rebut arguments or issues raised in Patent Owner’s Response under 37
`
`C.F.R. § 42.120 filed on September 10, 2014 (Paper 23) (“Response”), and the
`
`
`
`-1-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`Expert Declaration of John A. Corey, P.E. (Exhibit 2006) (“Corey Declaration”) in
`
`support thereof.
`
`5.
`
`This declaration is based on the information currently available to me,
`
`including the 192 patent, the prosecution history for the 192 patent, the prior art
`
`references and information discussed in this declaration and my previous
`
`declaration, other references specifically identified in this declaration and my
`
`previous declaration, and the Patent Owner’s Response filed on September 10,
`
`2014, including the Declaration of John A. Corey and all other exhibits. I also rely
`
`upon my own experience and expertise in the relevant technologies and systems.
`
`If additional information becomes available, I reserve the right to continue my
`
`investigation and study.
`
`II.
`
`SUMMARY OF OPINIONS
`
`6.
`
`For the purpose of this Declaration, I have been asked by Petitioner’s
`
`counsel to provide facts and my opinions in response to specific arguments and
`
`evidence raised by Patent Owner in Patent Owner’s Response.
`
`7.
`
`In my opinion, claim 17 is anticipated by Japanese Unexamined
`
`Patent Application Publication S54-38648 in Exhibit 1002 (“Tachikawa”). (See
`
`also Exhibit 1008 at ¶¶ 72-83.) Patent Owner’s Response and Mr. Corey’s
`
`Declaration addressed only element [J] of claim 17, so it is my understanding that
`
`
`
`
`-2-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`Patent Owner conceded that the remaining elements are disclosed in Tachikawa.
`
`(See Paper 23 at 27-29; Exhibit 2006 at ¶¶ 80-83.) Therefore, I will only address
`
`element [J] in this declaration, but I reserve the right to further opine on additional
`
`limitations.
`
`8.
`
`In my opinion, claim 26 is rendered invalid as obvious by Tachikawa
`
`in view of U.S. Patent No. 6,056,036 to Todd et al. (“Todd”). (See also Exhibit
`
`1008 at ¶¶ 93-103.) Patent Owner’s Response appeared to concede that Tachikawa
`
`and Todd disclose all elements of claim 26 except for element [F]. (See Paper 23
`
`at 31-32; Exhibit 2006 at ¶¶ 85-87.) Patent Owner also argued that a person of
`
`ordinary skill in the art would not have had reason to combine Tachikawa and
`
`Todd. (Paper 23 at 33-40; Exhibit 2006 at ¶¶ 88-96.) I will therefore focus on
`
`element [F] and Patent Owner’s arguments on obviousness, but I reserve the right
`
`to further opine on additional limitations and arguments that Patent Owner may
`
`raise.
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`9.
`A more detailed explanation of my educational and work credentials
`
`is provided in Paragraphs 11 through 17 of my December 20, 2013 declaration in
`
`Exhibit 1008 and in my CV, which was included in Attachment A to Exhibit 1008.
`
`But to highlight a few key qualifications, I received a Bachelor of Science degree
`-3-
`
`
`
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`in Mechanical Engineering from the University of Wisconsin in 1967. I also
`
`received Master’s (M.S.) and Doctorate (D.Eng.) degrees in Mechanical
`
`Engineering from the University of California at Berkeley in 1968 and 1971,
`
`respectively.
`
`10.
`
`I spent nearly 40 years educating engineering students about
`
`mechanical design. As a Professor of Mechanical Engineering, I regularly taught
`
`mechanical design courses at the University of Colorado beginning in 1974,
`
`including Component Design, Design for Manufacturability, Invention and
`
`Innovation, and hands-on mechanical design project courses at the undergraduate
`
`and graduate levels. It was my responsibility to teach engineering students how to
`
`describe and apply fundamental machine elements to many types of mechanical
`
`systems. I also reviewed several textbooks relating to component design.
`
`11.
`
`In short, I spent my career educating engineering students about
`
`fundamental design components and how to design simple mechanical systems
`
`utilizing these components. The spring drive systems described in claims 17 and
`
`26 of the 192 patent are examples of simple mechanical systems utilizing basic
`
`design components.
`
`
`
`
`-4-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`12.
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner contended that the original IPR petition by Petitioner failed to provide a
`
`description of “one of ordinary skill in art.” (Paper 23 at 29.)
`
`13. This statement by Patent Owner is puzzling and is simply not true
`
`because I specifically provided such a description and supporting explanation in
`
`my previous declaration (Exhibit 1008) at Paragraphs 23 to 26. To be more
`
`specific, my previous declaration defined a person having ordinary skill in the art
`
`as having “an associate’s degree or a bachelor’s degree in mechanical engineering,
`
`or a related field involving mechanical design coursework, and a few years of
`
`working experience in the area of mechanical design.” (Id. at ¶ 26.) This
`
`description is approximate and additional educational experience in mechanical
`
`design could make up for less work experience in mechanical design and vice
`
`versa. (Id.) It is my understanding that my earlier declaration was filed with the
`
`IPR petition as part of and in support of the IPR petition as Exhibit 1008. (See also
`
`Paper 2 at ¶ 4 (identifying my previous declaration as “supporting the grounds for
`
`claim rejections”).)
`
`14. Patent Owner and Mr. Corey argued that the person of ordinary skill
`
`in the art at the time of invention for the 192 patent would possess “at least three
`
`
`
`
`-5-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`(3) years of experience in the window covering industry, and more specifically, in
`
`the development of ‘hard’ window coverings and their components.” (Paper 23 at
`
`30 n.6; Exhibit 2006 at ¶ 34.) I disagree. The 192 patent does not disclose or
`
`claim particularly sophisticated or complex mechanical components, and I do not
`
`believe that experience specific to development of “hard” window coverings and
`
`their components would be necessary to understand these basic mechanical
`
`components, which are taught to undergraduate mechanical engineering students.
`
`Any accredited mechanical engineering program in the United States (including
`
`the University of Colorado) teaches these basic mechanical elements.
`
`V. UNPATENTABILITY OF CLAIMS 17 AND 26
`A. Claim 17 is Anticipated by Tachikawa
`15.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner contended that “Tachikawa does not anticipate Claim 17” and that
`
`“[s]pecifically, Tachikawa does not disclose at least Element [J] of Claim 17.”
`
`(Paper 23 at 27; see also Exhibit 2006 at ¶¶ 80-83.) I disagree because Patent
`
`Owner’s contention contradicts the clear teaching in Tachikawa with respect to
`
`claim 17.
`
`16. As explained in my earlier declaration, Tachikawa teaches every
`
`element of claim 17 (Exhibit 1008 at ¶¶ 72-83). However, Patent Owner only
`
`
`
`
`-6-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`argued in its Response that Tachikawa fails to teach element [J]. (Paper 23 at 26-
`
`29; see also Exhibit 2006 at ¶¶ 80-83.) Element [J] reads:
`
`[T]he spring drive thereby applying the varying torque or
`
`force to the cover and having inherent inertia maintaining
`
`the position of the cover.
`
`17. To analyze the above contention by Patent Owner, I will first address
`
`construction of the phrase “inherent inertia” in response to Patent Owner’s claim
`
`construction of the same term and then respond to Patent Owner’s arguments in
`
`Patent Owner’s Response filed on September 10, 2014.
`
`Construction of “Inherent Inertia”
`
`1.
`In Patent Owner’s Response, Patent Owner argued that no
`
`18.
`
`construction is necessary and that one of ordinary skill in the art would understand
`
`“inherent inertia,” but it failed to provide its understanding of that term, which
`
`does not appear in the specification or the file history. (Paper 23 at 17-19; see also
`
`Exhibit 2006 at ¶¶ 72-73.) I disagree with Patent Owner for reasons that are
`
`explained below.
`
`19. Petitioner’s construction of “inherent inertia” is “a property of matter
`
`whereby it remains at rest or continues in uniform motion unless acted upon by
`
`some outside force.” (Petition at 14-15; see also Ex. 1009 (The New Merriam-
`
`
`
`
`-7-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`Webster Dictionary) (defining “inertia” as “a property of matter whereby it
`
`remains at rest or continues in uniform motion unless acted upon by some outside
`
`force”).) In my opinion, Petitioner’s construction is correct and reflects the
`
`broadest reasonable interpretation of the term in light of the specification.
`
`20. Petitioner’s construction is consistent with the understanding of a
`
`person of ordinary skill in the art and Newton’s Laws of Motion. Newton’s First
`
`Law of Motion, also known as the “Law of Inertia” in physics, is generally
`
`understood as: an object at rest stays at rest and an object in motion stays in
`
`motion with the same speed and in the same direction unless acted upon by an
`
`unbalanced force. In other words, inertia is the resistance any object has to a
`
`change in its state of motion. Petitioner’s construction of “inherent inertia” is
`
`consistent with fundamental physics.
`
`21. Patent Owner failed to explain any effect of the word “inherent” on
`
`“inertia,” and by relying on some unspecified understanding of “inherent inertia”
`
`Patent Owner either (1) appeared to implicitly agree that a dictionary definition of
`
`“inertia” would be adequate to define “inherent inertia” or (2) left this term
`
`insolubly ambiguous. (See Paper 23 at 17-18; Exhibit 2006 at ¶¶ 72-23.) Adding
`
`the modifier “inherent” to “inertia” is redundant and therefore meaningless.
`
`
`
`
`-8-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`22.
`
`I understand that there is no discussion of “inherent inertia” in the file
`
`history that would help one of ordinary skill in the art understand if the applicant
`
`intended some special meaning for this term. Patent Owner identified five
`
`references to the term “inertia” in the 192 patent specification; none of these
`
`references include the word “inherent.” (See Paper 23 at 18.) My analysis of each
`
`reference to “inertia” supports Petitioner’s definition of “inherent inertia” as
`
`explained below:
`
`23.
`
` First, the specification of the 192 patent says that “In addition to
`
`controlling the applied force of the spring, the transmissions alter the length of the
`
`cover and provide inertia and friction for maintaining the blind at selected
`
`positions between and including open and closed positions.” (192 patent at 3:47-51
`
`(emphasis added).) This merely illustrates the intrinsic physical truth that all
`
`mechanical systems — including the transmissions described in the 192 patent —
`
`have inertia and friction which have the tendency to hold the system in a particular
`
`position. The specification does not explain what is meant by “inertia,” but one of
`
`ordinary skill in the art would understand that the specification simply refers to
`
`inertia as explained by Newton’s First Law, also known as the Law of Inertia. The
`
`alleged invention in the 192 patent simply takes advantage of this inherent property
`
`
`
`
`-9-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`of inertia in all objects as well understood in physics to help maintain a position of
`
`the blind.
`
`24. Second, the specification says that “FIG. 15A depicts a spring drive
`
`which...includes a recoil roll or wheel or simply recoiler 154, FIG. 33A, mounted
`
`adjacent and in contact with the output spool of the spring drive 31, 41, for
`
`facilitating recoil of the spring when needed, preventing ‘explosion’ of the spring,
`
`and providing braking action for supplementing the inertia of the unit to maintain
`
`the spring and associated window cover in the desired position.” (192 patent at
`
`12:54-61 (emphasis added).) This passage refers to inertia of the spring drive unit
`
`but again provides no definition for “inertia” beyond the commonly understood
`
`meaning, let alone “inherent inertia.”
`
`25. Third, the specification says that “The recoiler 154 is mounted
`
`adjacent and in contact with an associated spool of a spring drive such as 31, 41,
`
`for facilitating recoil of the spring when needed, preventing ‘explosion’ of the
`
`spring, and providing braking action for supplementing the inertia of the spring
`
`drive unit to maintain the spring and associated window cover in desired
`
`positions.” (192 patent at 16:32-37 (emphasis added).) Again, this passage refers
`
`to inertia of the spring drive unit but provides no definition for “inertia” beyond the
`
`commonly understood meaning, let alone “inherent inertia.”
`
`
`
`
`-10-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`26. Fourth, the specification says that “The coil spring recoiler 161
`
`opposes the unwinding of the spring and facilitates recoiling of the spring when
`
`needed, preventing ‘explosion’ of the spring, and provides braking action for
`
`supplementing the torque and inertia of the spring drive unit to maintain the spring
`
`and associated window cover in desired positions.” (192 patent at 16:43-49
`
`(emphasis added).) Again, this passage refers to inertia of the spring drive unit but
`
`provides no definition for “inertia” beyond the commonly understood meaning, let
`
`alone “inherent inertia.”
`
`27. The fifth reference to “inertia” in the specification says that “The
`
`recoilers 154-154 facilitate recoil of the associated spring when needed, prevent
`
`‘explosion’ of that spring, and provide braking action for supplementing the inertia
`
`of the spring drive units to maintain the springs and associated window cover in
`
`desired positions.” (192 patent at 17: 20-24 (emphasis added).) Again, this passage
`
`refers to inertia of the spring drive unit but provides no definition for “inertia”
`
`beyond the commonly understood meaning, let alone “inherent inertia.”
`
`28. As described above, each reference to inertia in the specification of
`
`the 192 patent merely illustrates the commonly-understood concept of inertia in
`
`physics, an unavoidable and inherent property of all mechanical systems simply
`
`because all mechanical components have mass. Therefore, taken together, inherent
`
`
`
`
`-11-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`inertia is simply the inertia inherent (i.e., necessarily existing in) in any mechanical
`
`system, including the spring drive system in the 192 patent.
`
`29. The dictionary definition proposed by Petitioner is necessary to
`
`explain what the specification apparently assumes: that the inertia of the
`
`mechanical systems claimed by the 192 patent causes the systems to remain at rest
`
`or continue in uniform motion unless acted upon by some outside force. As
`
`described below, the mechanical system disclosed in Tachikawa, which was
`
`publicly available years before the 192 patent priority date, both possessed and
`
`disclosed this same property.
`
`30.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner stated that “Claim 17 discloses a system wherein the inherent inertia of the
`
`spring drive itself must ‘maintain[] the position of the cover’ without the benefit of
`
`any external operating cord separately manipulated by the operator” (Paper 23 at
`
`28-29). In addition, as explained above, the five references to “inertia” in the
`
`specification of the 192 patent on which Patent Owner relies — and all other
`
`references to “inertia” in the specification — merely illustrate the commonly-
`
`understood concept of inertia in physics. Based on my review of the language of
`
`claim 17 in the 192 patent, the contended features of maintaining the window
`
`cover position “without the benefit of any external operating cord separately
`
`
`
`
`-12-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`manipulated by the operator” are not found anywhere in claim 17. It is my
`
`understanding that, under the law, such statements by Patent Owner are outside the
`
`scope of claim 17 in this IPR trial and thus should be discarded as being irrelevant.
`
`Tachikawa Discloses Element [J]
`
`2.
`In my opinion, Patent Owner’s statement of that “[s]pecifically,
`
`31.
`
`Tachikawa does not disclose at least Element [J] of Claim 17” (Paper 23 at 27) is
`
`incorrect in light of the specific teaching in Tachikawa with respect to claim 17.
`
`(See also Exhibit 2006 at ¶¶ 80-83.)
`
`32. Tachikawa expressly discloses element [J]: “the spring drive thereby
`
`applying the varying torque or force to the cover and having inherent inertia
`
`maintaining the position of the cover.” (192 patent at 24:64-67.) There can be no
`
`dispute that Tachikawa expressly describes a spring drive applying varying torque
`
`or force. Patent Owner appears to dispute whether Tachikawa discloses “inherent
`
`inertia maintaining the position of the cover.” (Paper 23 at 27-28; Exhibit 2006 at
`
`¶¶ 80-83.) In my opinion, Tachikawa does in fact disclose a spring drive
`
`possessing “inherent” inertia that maintains the position of the cover.
`
`33. Tachikawa describes a spring drive applying varying torque or force.
`
`Specifically, Tachikawa’s spring 17 applies its varying torque or force to bevel
`
`gear 8 via shaft 9: the spring “constantly generate[s] a spring torque in the
`
`
`
`
`-13-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`opposite direction and identical to the torque due to the load of the blinds acting
`
`upon the operating shaft” and “it is ideal to change the radius of curvature of the
`
`constant force spring 17 in response to change in load of the blinds such that its
`
`torque changes gradually” (Tachikawa at P.209-210 (emphasis added)). Bevel
`
`gear 8 in turn applies the varying torque to bevel gear 7 which is connected to shaft
`
`2. Shaft 2 is connected to pulleys 3. Tapes 4 are wound on pulleys 3 and pass
`
`through holes in slats 5. Therefore, Tachikawa’s disclosure corresponds to the
`
`spring drive applying varying torque or force to the cover.
`
`34. Patent Owner and Mr. Corey argued that it is the manipulation of the
`
`endless chain in Tachikawa that maintains the position of the cover. (Paper 23 at
`
`28-29; Ex. 2006 at ¶ 83.) Patent Owner and Mr. Corey are wrong: Tachikawa
`
`expressly discloses that “if the manipulation of the endless chain 11 is stopped
`
`mid-way during roll-up or roll-down of the blinds, the torque of the blinds
`
`descending under their own weight will be balanced out by an identical spring
`
`torque in the opposite direction due to the constant force spring, so the blinds will
`
`stop at the mid-way position.” (Tachikawa at P.210.)
`
`35. Contrary to what Patent Owner and Mr. Corey assert, it is clear to me
`
`that “manipulation of the endless chain” in fact actuates Tachikawa’s blinds up or
`
`down; it does not maintain the position of the cover. Instead, there are three
`
`
`
`
`-14-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`factors that cause the blinds to “stop at the mid-way position” (i.e. maintain the
`
`position of the cover): 1) the spring torque described above, 2) the inherent inertia
`
`necessarily present in all mechanical systems, and 3) the friction that is also
`
`inherently present in mechanical systems.
`
`36.
`
` In sum, Tachikawa’s spring drive fundamentally discloses “inherent
`
`inertia maintaining the position of the cover” because, as I have explained above,
`
`all mechanical systems have mass and therefore possess the property of inertia.
`
`B. Claim 26 Is Rendered Obvious By Tachikawa in View of Todd
`37.
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner contended that “Petitioner also has failed to make a prima facie showing
`
`that all of the elements of Claim 26 are disclosed in either Tachikawa or Todd.”
`
`(Paper 23 at 31; see also Exhibit 2006 at ¶¶ 85-87.) I disagree because Patent
`
`Owner’s contention contradicts the clear teachings in Tachikawa and Todd and
`
`their combination as presented in Petitioner’s IPR petition.
`
`38. As explained in my earlier declaration, it would have been obvious to
`
`modify Tachikawa with a plurality of spring drives depending on the weight and
`
`size of a window cover, as demonstrated by Todd, and that the combination of
`
`Tachikawa and Todd discloses all elements of claim 26. (Exhibit 1008 at ¶¶ 93-
`
`103.)
`
`
`
`
`-15-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`39. Both Tachikawa and Todd are directed to window blinds or coverings
`
`having spring drives for raising and lowering a blind or cover. Specifically, the
`
`field of endeavor of the 192 patent relates to drive mechanisms for window
`
`coverings. (192 patent at Abstract.) Tachikawa and Todd fall squarely within this
`
`same field of endeavor: Tachikawa relates to a roll-up device for venetian blinds
`
`utilizing a constant-force spring (Tachikawa at P.209) and Todd relates to a
`
`cordless drive mechanism for use in a shade (Todd at Abstract).
`
`1.
`Element [F]
`
`The Combination of Tachikawa and Todd Discloses
`
`40. Based on my review of Patent Owner’s Response, I understand that
`
`Patent Owner only disputes the disclosure of element [F] of claim 26 in the
`
`combination of Tachikawa and Todd. (Paper 23 at 31 and 32; Exhibit 2006 at
`
`¶¶ 85-87.) Element [F] describes “and a flat spring wound on and between the first
`
`and second spools”.
`
`41.
`
`In my opinion, Tachikawa expressly discloses element [F]. As
`
`explained in the Petition and in my previous declaration, Tachikawa discloses
`
`drum 14 and drum 16, which correspond to the first and second spools of claim 26.
`
`(Petition at 34; Ex. 1008 at ¶ 99.) A flat spring (“constant-force spring”) is wound
`
`on and between these spools (“drums”). (Petition at 34; Ex. 1008 at ¶ 99;
`
`Tachikawa at Fig. 5.)
`
`
`
`
`-16-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`
`
`Tachikawa Fig. 5
`
`42. Accordingly, Tachikawa discloses flat springs which are wound on
`
`first and second spools. (See Tachikawa at Fig. 5; Petition at 34-35; Ex. 1008 at
`
`¶¶ 99-100.) Patent Owner deliberately ignores Tachikawa’s disclosure of element
`
`[F] by focusing on the Petition’s alternate argument that this limitation is also
`
`disclosed by Todd. (Paper 23 at 31.)
`
`43.
`
`In addition to Tachikawa’s express disclosure of element [F], I also
`
`believe the combination of Tachikawa and Todd teaches element [F]. Todd
`
`discloses a spool. (See, e.g., Todd at 5:40-46 (“spring take-up spool 56” for
`
`“spring 58”).) Todd also discloses a flat spring wound on the spool. (See Todd at
`
`Fig. 3, elements 56, 58.)
`
`
`
`
`-17-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`Todd Fig. 3
`
`
`
`44.
`
`In view of the disclosures of Tachikawa and Todd, it would have been
`
`obvious to use the flat spring of Todd in conjunction with the spools of Tachikawa
`
`because it was known, as taught by both Todd and Tachikawa, along with general
`
`mechanical knowledge to one of ordinary skill in the art at the time, that flat
`
`springs could be wound on and between spools to provide function and storage.
`
`(See also Petition at 34-35; Ex. 1008 at ¶¶ 28-31.) The presence or absence of an
`
`additional spool would have been simply a matter of obvious design choice, related
`
`to factors like cost, simplicity, and reliability, that a person of ordinary skill in the
`
`art would have known to consider.
`
`2.
`Adding Multiple Spring Drives to Tachikawa Is Consistent
`With The Purposes and Disclosures of Tachikawa and Todd
`
`
`
`
`-18-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`45.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner objected to the combination of Tachikawa and Todd described in the
`
`Petition to demonstrate the invalidity of claim 26. (Paper 23 at 31-40; but see
`
`Paper 2 at 31-36.)
`
`46. Tachikawa is a patent document that was published in 1979.
`
`Tachikawa describes spring drive designs and related transmission mechanisms for
`
`raising and lowering venetian-type window blinds. (Tachikawa at P.209.)
`
`Tachikawa discloses technical solutions and designs overlapping those disclosed in
`
`the 192 patent. For example, Tachikawa discloses that “a constant force spring is
`
`mounted on a drive shaft or operating shaft for performing the rolling up of
`
`venetian blinds.” (Id.) Tachikawa’s venetian-type window blinds use spring drive
`
`designs and transmission mechanisms to address the problem of a “change in the
`
`gradually increasing load as the blinds are rolled up”. (Id.) This is the same
`
`problem that the 192 patent also attempts to address. (192 patent at Abstract (“The
`
`combination permits the spring drive force at the cover to be tailored to the weight
`
`and/or compression characteristics of the window cover such as a horizontal slat or
`
`pleated or box blind as the cover is opened and closed.”); 2:14-20 (noting that the
`
`slat weight to be supported changes as the blind is lowered).) Tachikawa is
`
`
`
`
`-19-
`
`Norman Int., Ex. 1017
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF LAWRENCE E. CARLSON
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`therefore not only in the same field of endeavor as the 192 patent but also identifies
`
`and addresses problems or issues disclosed in the 192 patent.
`
`47. Todd is in the same window blind and covering field as Tachikawa
`
`and the 192 patent because Todd is directed to spring-based systems for raising and
`
`lowering a window covering. (Todd at Abstract.) It is my opinion that a person of
`
`ordinary skill in the art would be motiv
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
