`
`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 PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE OF SEPTEMBER 10, 2014
`
`
`
`
`
`Norman Int., Ex. 1018
`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
`B.
`Compensation ....................................................................................... 5
`C. Documents and Other Materials Relied Upon ..................................... 5
`IT WOULD HAVE BEEN OBVIOUS TO COMBINE
`TACHIKAWA AND TODD .......................................................................... 6
`A. A POSITA Had Reason to Combine Tachikawa And Todd ................ 6
`B. Adding Multiple Spring Drives to Tachikawa Is Consistent with
`the Purposes and Disclosures of Tachikawa and Todd ...................... 11
`PATENT OWNER PRESENTS NO EVIDENCE OF LONG-FELT
`NEED, COPYING, OR PRAISE ................................................................. 16
`
`IV.
`
`V.
`
`
`
`
`
`-i-
`
`
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`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 Patrick E. Foley. I am a mechanical engineer. I am
`
`currently an Engineering Manager with Blount International, Inc., a global
`
`manufacturer and marketer of replacement parts, equipment, and accessories for
`
`various applications and industries. I formerly worked for Newell Window
`
`Furnishings, Inc. as a Research and Development Engineering Manager. I am
`
`submitting this declaration as an independent consultant.
`
`2.
`
`I have been engaged by Norman International, Inc. (“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”), which is under review by the Patent Trial and Appeal Board (“PTAB”) in
`
`the instituted inter partes review (IPR) trial in case number IPR2014-00283.
`
`3.
`
`In this declaration, I will provide my analysis in response to
`
`arguments and evidence raised in Patent Owner’s Response under 37 C.F.R.
`
`§ 42.120 (“Response”) (Paper 23).
`
`4.
`
`This declaration is based on information currently available to me. To
`
`the extent that additional information becomes available, I reserve the right to
`
`supplement my opinions following further investigation and study, which may
`
`include a review of documents and information that may be produced, as well as
`
`testimony from depositions that may not yet be taken.
`
`-1-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`II.
`
`SUMMARY OF OPINIONS
`
`5.
`
`The 192 patent describes window cover systems and associated spring
`
`drive systems and transmissions for window covers. I understand the USPTO has
`
`instituted an inter partes review of the patentability of Claims 17 and 26 of the 192
`
`patent in the IPR proceeding under case number IPR2014-00283.
`
`6.
`
`Petitioner’s counsel asked me to analyze two prior art references for
`
`the purposes of this inter partes review: Japanese Unexamined Patent Application
`
`Publication S54-38648 to Tachikawa in Exhibit 1002 (“Tachikawa”) and U.S.
`
`Patent No. 6,056,036 to Todd et al. in Exhibit 1003 (“Todd”).
`
`7.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner argued that “one of ordinary skill in the art would not modify Tachikawa as
`
`alleged based on the disclosure of Todd.” (Paper 23 at 40.) Based on my review
`
`of the evidence and facts, it is my opinion that a person having ordinary skill in the
`
`art at the time of the earliest possible priority date of the claimed subject matter in
`
`the 192 patent—November 4, 1997—would have had reasons and motivations to
`
`combine the teachings of Tachikawa and Todd. These prior art references disclose
`
`well-known elements in the art that are common technical features in window
`
`blinds and thus could be readily recognized as such and combined by a person
`
`-2-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`having ordinary skill in the art of window blinds and coverings to yield predictable
`
`results.
`
`8.
`
`In the subsequent sections of this declaration, I will first provide my
`
`qualifications and experience and then describe my analysis of and observations
`
`regarding the arguments and evidence raised in Patent Owner’s Response.
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`9.
`I received a Bachelor of Science degree in Mechanical Engineering
`
`from North Carolina State University in 1993. I also participated in the New
`
`Product Development program offered by the Massachusetts Institute of
`
`Technology Sloan School of Management in 2007.
`
`10.
`
`I have worked as a mechanical engineer for more than 20 years in
`
`several industries. After graduation I first worked as an R&D Machine Design
`
`Engineer for Unifi, Inc. from 1993 to 2001. From 2001 to 2010, I was a Research
`
`and Development Engineering Manager for the Consumer Product Development
`
`Group with Newell Rubbermaid, Inc. and Newell Window Furnishings, Inc.
`
`(“Newell Rubbermaid”). I then served as a Mechanical Engineering Manager with
`
`Thermo Fisher Scientific from 2010 to 2013, at which time I began my current
`
`position as an Engineering Manager with Blount International, Inc. A true and
`
`accurate copy of my resume is included in Attachment A.
`
`-3-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`11. While I was with Newell Rubbermaid, I directed a team of engineers
`
`in new product design for consumer products, including window coverings. My
`
`work included research and design of new cellular shade and cordless shade and
`
`blind products for window covering applications. In connection with that work, I
`
`researched and designed cordless cellular shade products.
`
`12.
`
`In my work at Newell Rubbermaid I became intimately familiar with
`
`the state of the art in window coverings, generally, and cordless window coverings,
`
`specifically. Part of my job was to become educated on old and new designs and
`
`product offerings, which included research into various alternatives for the
`
`mechanics of cordless window coverings. These mechanics often included flat
`
`springs and spring drive systems.
`
`13. My work at Newell Rubbermaid included research into designs,
`
`products, and patents known in the field in and prior to November 1997, many of
`
`which were still in use and for sale after 1997. These designs, products, and
`
`patents included mechanical elements that form the technology of the 192 patent,
`
`including flat springs and spring drive systems.
`
`14.
`
`I am a named inventor of four United States patents that relate to
`
`window coverings: (1) Patent No. 8,256,333 issued September 4, 2012, entitled
`
`“Window Covering Sizing Method and Apparatus”; (2) Patent No. 8,087,445
`
`-4-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`issued January 3, 2012, entitled “Spring Motor and Window Covering”; (3) Patent
`
`No. 7,721,782 issued May 25, 2010, entitled “Arched Window Covering”; and (4)
`
`Patent No. 7,048,028 issued May 23, 2006, entitled “Mounting Bracket and
`
`Headrail Assembly.” U.S. Patent No. 8,087,445 claims an invention for an
`
`improvement on a spring motor unit for cordless shades.
`
`B. Compensation
`15.
`I am being compensated at the rate of $250 per hour for the services I
`
`am providing in this case. The compensation is not contingent upon my
`
`performance, the outcome of this inter partes review or any other proceeding, or
`
`any issues involved in or related to this inter partes review.
`
`C. Documents and Other Materials Relied Upon
`16. The documents on which I rely for the opinions expressed in this
`
`declaration include the 192 patent, the IPR petition filed by Norman (including the
`
`exhibits to the petition), the prior art references and information discussed in the
`
`IPR petition and this declaration, and Patent Owner’s Response (Paper 23) filed
`
`with the Declaration of John A. Corey (Exhibit 2006) on September 10, 2014. I
`
`also rely on my own experience and expertise in the relevant technologies and
`
`systems that were already in use prior to, and within the time of the earliest
`
`possible priority date of the claimed subject matter in the 192 patent, which I
`
`understand is November 4, 1997.
`
`-5-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`IV.
`
`IT WOULD HAVE BEEN OBVIOUS TO COMBINE TACHIKAWA
`AND TODD
`
`A. A POSITA Had Reason to Combine Tachikawa And Todd
`17.
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner and Mr. Corey argued that there is no reason why a person of ordinary skill
`
`in the art would combine Tachikawa and Todd with respect to claim 26. (Paper 23
`
`at 35; Exhibit 2006 at ¶ 88.) I disagree for the reasons I provide below.
`
`18. Tachikawa, which is titled “Venetian Blinds Roll-up Device,” is a
`
`patent document that was published in 1979, many years before the 192 patent’s
`
`priority date. Tachikawa describes spring drive designs and related transmission
`
`mechanisms for raising and lowering venetian-type window blinds. Specifically,
`
`Tachikawa discloses that “a constant force spring is mounted on a drive shaft or
`
`operating shaft for performing the rolling up of venetian blinds.” (Tachikawa at
`
`P.209.)
`
`19. Window coverings are consumer products, so product design tends to
`
`be influenced by consumer trends and feedback. Cordless window coverings, in
`
`particular, were around long before the 1990’s, but there was a renewed interest in
`
`those products during the 1990’s because of increased consumer and industry
`
`interest in improving the safety, ease of use, and aesthetics of window covering
`
`products. While various forms of spring motors have been used in cordless
`
`-6-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`window cover designs, persons of ordinary skill in the art recognized that a flat
`
`spring drive, alone or in tandem with other flat spring drives, possessed particular
`
`advantages well before November 4, 1997. For example, the invalidating
`
`references Petitioner cited in its Petition for inter partes review include other
`
`examples, such as the Todd and Tachikawa references discussed herein.
`
`20. Tachikawa discloses technical issues later described in the
`
`specification of the 192 patent and further teaches technical solutions or designs to
`
`address those technical issues. Tachikawa’s venetian-type window blinds use
`
`spring drive designs and transmission mechanisms to address the problem of a
`
`“gradually increasing change in the load as the blinds are rolled up” (Tachikawa at
`
`P.209), a problem that the 192 patent also discusses and 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.”); P.210 (noting that slat weight that needs to be supported changes as the
`
`blinds are lowered).)
`
`21.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner described one problem solved by “the invention of the ‘192 Patent” as
`
`follows: “At the time of the invention of the ‘192 Patent, one common horizontal
`
`-7-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`window covering included a series of slats in a blind. As the blind was raised, the
`
`slats were ‘collected’ on the bottom rail by lift cords, which increased the weight
`
`supported by the rail and the cords. Similarly, in non-slat coverings (for example,
`
`pleated, cellular, and box shades), as the resilient covering material was raised
`
`toward the fully open position, the material both gathered on the lift rail and
`
`became more compressed. This required increasingly greater force to overcome the
`
`compression and weight forces to move and hold the shade in place as it was
`
`raised.” This problem identified by the 192 patent was a common problem in
`
`window coverings and was well recognized in the window covering industry long
`
`before November 1997. As one example, Tachikawa is a 1979 publication of a
`
`patent application filed in 1977 that explicitly described this problem (Tachikawa
`
`at Abstract, P.209.)
`
`22. Tachikawa solved this problem with a spring drive applying varying
`
`torque or force to the window cover. The 192 patent later attempted to solve the
`
`same problem in the same way. 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 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
`
`-8-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`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, P.210.)
`
`23. Tachikawa is therefore in the same field of endeavor as the 192 patent
`
`and it identifies and addresses the same or similar problems or issues later
`
`disclosed in the 192 patent.
`
`24. Todd is a United States patent in the same window blind and covering
`
`field as the 192 patent and Tachikawa. Todd discloses multiple flat spring drive
`
`mechanisms for use in a window shade. Todd is analogous art to the 192 patent
`
`because both Todd and the 192 patent are directed to spring-based systems for
`
`raising and lowering a window covering. (Todd at Abstract; 192 patent at
`
`Abstract.) Therefore, Tachikawa (see, e.g., Tachikawa at P.209) and Todd are in
`
`the same field of endeavor as the 192 patent (see, e.g., 192 patent at Abstract.)
`
`25. With respect to the obviousness of claim 26 (Paper 2 at 31-36), Patent
`
`Owner’s Response contended that the Petition failed to identify a reason to
`
`combine Tachikawa and Todd. (Paper 23 at 33-35.) I reviewed the Petition and
`
`Dr. Carlson’s declaration in support of the Petition and, based on my review of
`
`relevant facts, I disagree with Patent Owner. Petitioner’s reason to combine is
`
`sound. (See Paper 2 at 31-36 (describing that it was well known to use multiple
`
`spring drives to assist extension and retraction of a window cover); Ex. 1008 at
`
`-9-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`¶¶ 93-103 (same).) Patent Owner further presented arguments that one of ordinary
`
`skill in the art would not combine Tachikawa and Todd. (Paper 23 at 33-40.)
`
`Patent Owner’s contention directly contradicts specific and relevant teachings in
`
`Tachikawa and Todd as discussed in the Petition and in this declaration.
`
`26. For example, the 192 patent discloses in its “Summary of the
`
`Invention” section that “[t]he present invention is also embodied in window cover
`
`systems which include one or more spring drives of the type described herein.”
`
`(192 patent at 3:25-27.) In this regard, I note that Tachikawa, as discussed above,
`
`discloses an example of a window covering having a spring motor and that Todd
`
`teaches the use of multiple spring drive mechanisms for the purpose of
`
`accommodating larger and heavier shades. Todd specifically discloses that “[m]ore
`
`spring assemblies may be added to the drive mechanism for larger and heavier
`
`shades.” (Todd at Abstract.) This teaching in Todd corresponds with the
`
`disclosure of “a plurality of spring drives” in claim 26 of the 192 patent.
`
`27. Based on my own experience working in the window covering
`
`industry and my review of the 192 patent, I agree with Petitioner’s definition of a
`
`person having ordinary skill in the art as a person having an associate’s degree or a
`
`bachelor’s degree in mechanical engineering, or a related field involving
`
`-10-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`mechanical design coursework and a few years of working experience in the area
`
`of mechanical design. (Exhibit 1008 at ¶ 26.)
`
`28. Based on my review of Tachikawa and Todd, it is my opinion that a
`
`person having ordinary skill in the art of window blinds and coverings would have
`
`identified Tachikawa as relevant art and would have had reasons and motivations
`
`to combine it with the disclosed technology in the Todd reference before
`
`November 4, 1997, in order to accommodate different sizes, weights, and/or
`
`lengths of window coverings, and that the combination would have yielded
`
`predictable results.
`
`B. Adding Multiple Spring Drives to Tachikawa Is Consistent with
`the Purposes and Disclosures of Tachikawa and Todd
`
`29.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner’s expert, Mr. Corey, opined that “[t]he use of multiple spring drives in
`
`Todd is disclosed for only one purpose — to provide the additional force necessary
`
`to retract (i.e., raise or ‘roll-up’) the shade automatically without the involvement
`
`of an external operating cord.” (Exhibit 2006 at ¶ 90; see also Paper 23 at 36-37.)
`
`Mr. Corey and Patent Owner inappropriately limited Todd’s disclosure. While
`
`Todd teaches multiple spring drives in the context of a cordless window covering,
`
`one of ordinary skill in the art would understand that Todd’s disclosure of multiple
`
`-11-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`spring drives is applicable to any window covering that uses a spring drive
`
`mechanism, regardless of the user interface.
`
`30. First, the recited feature of a plurality of spring drives in claim 26 of
`
`the 192 patent was a well-known and common feature in window covering
`
`products before November 1997. Todd’s disclosure illustrates this. Based on
`
`Todd and my knowledge of window covering technology, it is my opinion that
`
`there is nothing novel in using multiple spring drives in the claimed window
`
`covering system.
`
`31. Second, a review of Todd reveals that Todd’s teaching of the use of
`
`multiple drive mechanisms is for accommodating larger and heavier shades. (See,
`
`e.g. Todd at Abstract (“More spring assemblies may be added to the drive
`
`mechanism for larger and heavier shades.”); 4:24-26 (“As shade 14 becomes
`
`longer, and therefore heavier, more spools assemblies 24 and spring assemblies 26
`
`will be required.”); 5:31-34 (“[B]ecause the spring assemblies 26 are modular, any
`
`required additional force, e.g. to raise a longer shade, may be applied to shaft 30
`
`merely by increasing the number of spring assemblies 26 attached thereto.”).)
`
`Therefore, Todd’s teaching of the use of multiple drive mechanisms is applicable
`
`to window blinds of various kinds involving large and heave shades or covering
`
`-12-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`materials used. This aspect of Todd’s teaching is relied upon in the combination of
`
`Tachikawa and Todd in the Petition. (See Paper 2 at 31-36.)
`
`32.
`
`It is my opinion that Todd’s teaching of the use of multiple drive
`
`mechanisms is not limited to blinds with an external operating cord or cordless
`
`blinds without an external operating cord. The disclosure of Todd is not limited to
`
`cordless window coverings. For example, while Todd’s claim 2 specifies “a
`
`cordless roller type shade retraction system,” claim 1 omits any reference to
`
`cordless roller type shade retraction systems. (Todd at 6:52-8:8.) It is my
`
`understanding that the purposeful omission of a cordless limitation in claim 1
`
`means that the Todd reference considered non-cordless applications within the
`
`scope of the invention as claimed.
`
`33.
`
`In my experience, one of ordinary skill in the art would understand the
`
`inventions in Todd to be useful in any retractable shade or covering application
`
`because Todd teaches using additional spring drives to account for larger or
`
`heavier shades or blinds. (See, e.g., Abstract (“More spring assemblies may be
`
`added to the drive mechanism for larger and heavier shades.”).) This benefit would
`
`have been useful in any kind of blinds, regardless of the presence or lack of a cord,
`
`and regardless of whether the spring drives are being used to move the blind in one
`
`or both directions.
`
`-13-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`34.
`
`Instead, both Tachikawa and Todd sought to solve the same technical
`
`problem of reducing operator effort to retract various weights and sizes of window
`
`coverings. Todd describes the problem primarily in the context of cordless
`
`window shades, but multiple spring drives would have the same effect in
`
`Tachikawa.
`
`35. Patent Owner and Mr. Corey argued that adding multiple spring
`
`drives to Tachikawa would “frustrate the intended purpose” of Tachikawa because
`
`Tachikawa has an “existing and carefully-calibrated spring drive [that] “would
`
`overpower the weight of the blind,” causing Tachikawa to fail to maintain the
`
`desired position. (See Paper 23 at 37; Exhibit 2006 at 29.) Patent Owner and Mr.
`
`Corey underestimated the simplicity of this combination. Tachikawa’s window
`
`covering is not limited to a single size and weight blind. One of ordinary skill in
`
`the art would understand that calibration is required to balance the torque created
`
`by any window covering’s weight with the torque created by a single spring drive
`
`or a number of spring drives in the balanced system that Tachikawa discloses.
`
`This calibration would have been within the skill set of the ordinary artisan without
`
`undue experimentation, and it would have further been aided by the plot of
`
`elongation and torque (load) Tachikawa provided in Figure 9. (Tachikawa at 4.)
`
`-14-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`
`36.
`
`I also disagree with Patent Owner’s argument that Todd criticizes
`
`blinds that utilize a “continuous loop cord” in an attempt to avoid the combination
`
`of Tachikawa and Todd. (Paper 23 at 36.) Todd states: “In systems which utilize
`
`a clutch system, a continuous loop cord, not unlike the system use[d] [sic] in
`
`raising and lowering a flag on a flagpole, is used.” (Todd at 1:23-28 (emphasis
`
`added).) First, Tachikawa teaches the use of an “endless chain,” which is used by
`
`the operator to manipulate a balanced system where the torque required to hold the
`
`window covering in a desired position is identical to the torque provided from a
`
`spring based system. The balanced system described by Tachikawa does not use a
`
`clutch and brake system, such as described in Todd. (See Tachikawa at P.210.)
`
`Second, I disagree that Todd teaches away from use of multiple springs drives in a
`
`clutch and cord system, and merely identifies the disadvantages of such an operator
`
`interface. In my opinion, the manner in which the blinds are raised and lowered is
`
`irrelevant to combining the teachings of Todd regarding multiple spring drives
`
`with the arrangement in Tachikawa.
`
`37. Patent Owner and Mr. Corey also argued that “multiple spring drives
`
`oriented and arranged as disclosed in Todd would not fit inside the housing of the
`
`blind disclosed in Tachikawa.” (Exhibit 2006 at ¶ 92; see also Paper 23 at 38.) I
`
`do not agree. To the best of my understanding, none of the disclosures or claims of
`
`-15-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`the 192 patent or the Todd or Tachikawa references require particular size or
`
`aesthetic constraints. Regardless, it is my opinion that one of ordinary skill in the
`
`art would have had the skill set to arrange and size multiple spring drives and to
`
`design a headrail or other supporting hardware to account for space or design
`
`considerations without undue experimentation. That kind of design and
`
`arrangement was commonplace in the mechanical arts, and specifically in window
`
`covering design, before November 1997.
`
`38.
`
`In sum, I do not believe there is any inconsistency between Tachikawa
`
`and Todd that would prevent their obvious combination by a person of ordinary
`
`skill in the art.
`
`V.
`
`PATENT OWNER PRESENTS NO EVIDENCE OF LONG-FELT
`NEED, COPYING, OR PRAISE
`
`39.
`
`In Patent Owner’s Response filed on September 10, 2014, Patent
`
`Owner and Mr. Corey argued that purported “objective indicia of non-
`
`obviousness” support their position. (Paper 23 at 41; Exhibit 2006 at ¶¶ 97-105.) I
`
`disagree that the claimed invention met any long felt but unsolved need, and I am
`
`unaware of any copying or praise by others.
`
`40. First, the Patent Owner and Mr. Corey never explained what they
`
`consider to be the long-felt or unsolved need, nor did they explain how they
`
`believed that unspecified need is purportedly met by any element of claim 26.
`
`-16-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`(Paper 23 at 41-42; Exhibit 2006 at ¶¶ 98-101.) But under my best understanding
`
`of claim 26, and based on my knowledge and experience in the art, I do not believe
`
`that the claimed invention of claim 26 satisfied any long-felt needs. To the
`
`contrary, any needs that could be met by claim 26 were already well-known in the
`
`art. Claim 26 merely regurgitates one example of many possible obvious
`
`combinations of known elements in order to create an arrangement of the kind
`
`already known and in use in window blinds before November 1997. It is my
`
`experience from the window covering industry that there is a large number of
`
`possible permutations and combinations of mechanisms that could be used to
`
`operate a window blind, and that almost any of these combinations could satisfy a
`
`given design need, such as cordless, corded, heavy weight, low profile, or other
`
`design parameters. Because these mechanical components are so basic to anyone
`
`with a mechanical engineering background, a person of ordinary skill in the art
`
`would understand the various combinations of those mechanical elements that
`
`could be used to adapt a particular design to a specific load.
`
`41. Mr. Corey opined “I understand that Petitioner sells near-identical
`
`copies of the invention described in the ‘192 patent.” (Exhibit 2006 at ¶ 103.) It is
`
`my understanding from Petitioner’s counsel that to show copying, a patent owner
`
`must show that a product was copied. Patent Owner and Mr. Corey have not
`
`-17-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`identified a product, or even a feature of a product, that was allegedly copied. Mr.
`
`Corey never even suggested that the claimed invention of the 192 patent was
`
`copied; he instead described Petitioner’s products as “near-identical copies.”
`
`42.
`
`I am also unaware of any praise by others for the claimed invention in
`
`claim 26, and I do not believe that Patent Owner or Mr. Corey identified any
`
`purported praise by others.
`
`43.
`
`It is my opinion that the 192 patent — and the combination in claim
`
`26, in particular — represents an obvious, run-of-the-mill combination of simple
`
`elements chosen for their known properties to function in known ways taught by
`
`the prior art.
`
` hereby declare that all the statements made in this declaration are of my
`
` I
`
`own knowledge and true; that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under 18 U.S.C. § 1001.
`
`The contents of this declaration are true under penalty of perjury of the laws
`
`of the United States.
`
`
`
`-18-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`CASE IPR2014-00283 (U.S. PATENT NO. 6,283,192 B1)
`
`
`ATTACHMENT A: RESUME OF PATRICK E. FOLEY
`
`
`-20-
`
`Norman Int., Ex. 1018
`Norman Int. v. Andrew J. Toti et al., IPR2014-00283
`
`
`
`RESUME OF PATRICK E. FOLEY
`
`EXPERIENCE
`
`Blount International, Inc.
`Engineering Manager
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2013 - Present
`
` Engineering Manager for farm, ranch and related markets, which includes log splitters, post
`hole diggers, and tractor components and accessories; and
` Leading a team of 8 engineers in New Product Development, Existing Product Support,
`Project Management, and Supplier Development.
`
`
`
`
`
`
`
` 2010 - 2013
`
`
`Thermo Fisher Scientific
`
`
`
`Mechanical Engineering Manager (2011 - 2013)
`Project Engineer (2010 - 2011)
`
`
` Engineering work in Laboratory Equipment Division and Cold Storage Business Unit;
` Engineering work regarding Laboratory Refrigerators, Freezers, Ultra Low Temperature
`Freezers; and
` Led team of 6 engineers in New Product Development, Sustaining Engineering, Product
`Quality Improvement, and Project Management.
`
`
`2001 - 2010
`Newell Rubbermaid I
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