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., ANDREW J. TOTI TESTAMENTARY TRUST,
`RUSSELL L. HINCKLEY, SR., and ROBERT F. MILLER
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`Patent Owner
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`CASE: Unassigned
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`Patent No. 6,283,192 B2
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B2
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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST ......................................................................................................... v
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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 ........................................................................ 2
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION ............. 2
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`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 3
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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 .............................................................................. 4
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`Supporting Evidence Relied Upon For The Challenge ............. 4
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`Statutory Ground(s) Of Challenge And Legal Principles .......... 4
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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) ....................................... 5
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`IV. OVERVIEW OF THE 192 PATENT ............................................................. 5
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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 192 PATENT ......................................... 5
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`SUMMARY OF THE 192 PATENT ................................................... 5
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`SUMMARY OF PROSECUTION FILE HISTORY........................... 7
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`PROPOSED CLAIM CONSTRUCTION............................................ 9
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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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` “Window cover” ....................................................................... 9
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`“Housing” ................................................................................. 10
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`“Lift cord” ................................................................................ 10
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`“Pulley” .................................................................................... 11
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`“Spring drive system” .............................................................. 11
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`6.
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`7.
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`8.
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`9.
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`“Flat spring” ............................................................................. 12
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`“Substantially flat spring” ........................................................ 12
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`“Rotatable end” and “Output end” ........................................... 13
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`“Output Spool” ......................................................................... 13
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`10.
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`“Storage end” and “Storage Spool” ......................................... 14
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`11.
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`“Bevel gear set” and “Pair of meshed bevel gears” ................. 14
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`12.
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`“Inherent inertia” ...................................................................... 14
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`13.
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`“Transmission” ......................................................................... 15
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`14.
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`“Gear transmission” ................................................................. 16
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`15.
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`“Plurality of intermeshed gears interconnecting the two
`transmission shafts” ................................................................. 17
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`16.
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`“Brake member positioned adjacent the spring drive” ............ 18
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`17.
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`18.
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`19.
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`“Torque or force which decreases as the cover is
`extended and increases as the cover is retracted” .................... 19
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`“A selected gear ratio which alters the torque or force of
`the spring drive applied to the second transmission shaft
`as the spring winds and unwinds” ............................................ 19
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`“Decreases the torque or force of the spring drive applied
`to the second transmission shaft as the spring is unwound
`and increases the torque or force of the spring drive
`applied to the second transmission shaft as the spring is
`rewound” .................................................................................. 20
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`V.
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`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE 192 PATENT IS UNPATENTABLE .................... 21
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`A.
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`IDENTIFICATION OF THE REFERENCES AS PRIOR ART ....... 21
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`1.
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`2.
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`3.
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`Tachikawa as Prior Art under 35 U.S.C. § 102(b) ................... 21
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`Todd as Prior Art under 35 U.S.C. § 102(e) ............................ 21
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`Kuhar as Prior Art under 35 U.S.C. § 102(b) .......................... 22
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`-ii-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`4. McClintock as Prior Art under 35 U.S.C. § 102(b) ................. 22
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`5.
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`6.
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`Ringle as Prior Art under 35 U.S.C. § 102(b).......................... 22
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`Lohr as Prior Art under 35 U.S.C. § 102(b) ............................ 22
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`B.
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`SUMMARY OF INVALIDITY POSITIONS ................................... 23
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`C. Different invalidity positions against each claim are
`independent, distinctive and Not redundant ....................................... 23
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 17, 18, 26, 31, 35, 36, 38, 42,
`AND 43 OF 192 PATENT ........................................................................... 25
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`A. GROUND 1: CLAIM 17 IS UNPATENTABLE UNDER 35
`U.S.C. § 102(b) AS BEING ANTICIPATED BY
`TACHIKAWA ................................................................................... 25
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`1.
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`Claim 17 Is Anticipated By Tachikawa ................................... 25
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`B. GROUND 2: CLAIM 26 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER TACHIKAWA
`IN VIEW TODD ................................................................................ 31
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`C. GROUND 3: CLAIM 26 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER TACHIKAWA
`IN VIEW OF KUHAR ....................................................................... 36
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`D.
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` GROUND 4: CLAIMS 18, 31, 35, 36, 38, AND 42 ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103(a) AS BEING
`OBVIOUS OVER TACHIKAWA IN VIEW OF RINGLE
`AND McCLINTOCK ......................................................................... 37
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`1.
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`2.
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`3.
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`Claim 18 Is Rendered Obvious By Tachikawa In View
`Of Ringle And McClintock ...................................................... 37
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`Claim 31 and 38 Are Rendered Obvious By Tachikawa
`In View Of Ringle And McClintock ........................................ 41
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`Claim 35 and 42 Are Rendered Obvious By Tachikawa
`in view of Ringle And McClintock .......................................... 47
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`-iii-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`4.
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`Claim 36 Is Rendered Obvious By Tachikawa in view of
`Ringle And McClintock ........................................................... 49
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`E.
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`GROUND 4: CLAIMS 43 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER TACHIKAWA
`IN VIEW OF RINGLE and McCLINTOCK AND FURTHER
`IN VIEW OF LOHR .......................................................................... 51
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`VII. CONCLUSION ............................................................................................. 52
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`-iv-
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`Petition for Inter Partes Review of U.S. Patent 6,283,192 B2
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 6,283,192 B2 (“the 192 Patent”)
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`Ex. 1002
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`Japanese Patent Application Publication S54-38648 (“Tachikawa”):
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`Pages 1-4: English Translation
`Pages 5-8: Original Japanese Publication
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`Ex. 1003 U.S. Patent No. 6,056,036 (“Todd”)
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`Ex. 1004 U.S. Patent No. 5,531,257 (“Kuhar”)
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`Ex. 1005 U.S. Patent No. 5,641,229 (“McClintock”)
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`Ex. 1006 U.S. Patent No. 4,096,903 (“Ringle”)
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`Ex. 1007 U.S. Patent No. 3,216,528 (“Lohr”)
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`Ex. 1008 Declaration of Lawrence E. Carlson in Support of Petition for Inter
`Partes Review of U.S. Patent No. 6,283,192 B2 (“Carlson Declaration
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`on 192 Patent”)
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`Ex. 1009 Definition of “inherent inertia”” in The New Merriam-Webster
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`Dictionary, Copyright 1989, Pg. 380.
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`-v-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 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
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`claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 of U.S. Pat. No. 6,283,192 B2 (“the
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`5
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`192 Patent,” Ex. 1001). Based on assignment information available in the United
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`States Patent and Trademark Office Patent Assignment Database, the 192 Patent
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`was initially issued to named inventor, Andrew J. Toti and is currently assigned to,
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`the Andrew J. Toti Testamentary Trust and its co-trustees, Russell L. Hinckley, Sr.
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`and Robert F. Miller. In addition, based on information and belief including a
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`10
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`representation made by Hunter Douglas Inc., Hunter Douglas Inc. is the exclusive
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`licensee of the 192 Patent in the field of window covering products. All of these
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`individuals and entities including Hunter Douglas Inc. are therefore collectively
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`referred to as “Patent Owner” in this Petition.
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`This Petition shows that there is a reasonable likelihood that Petitioner will
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`15
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`prevail with respect to at least one of Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43
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`challenged. Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 are unpatentable under 35
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`U.S.C. §102 or §103. The Office is respectfully requested to institute a trial for
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`Inter Partes Review and to cancel Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)
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`20
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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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`-1-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`B. RELATED MATTERS
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`The 192 Patent, along with U.S. Patent Nos. 6,648,050 B1; 6,968,884 B2;
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`and 8,230,896 B2, is being asserted against Petitioner in an on-going patent
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`infringement lawsuit brought by Hunter Douglas Inc. in in Hunter Douglas, Inc. et
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`5
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`al. v. Nien Made Enterprise Co., Ltd. et al., 1:13-cv-01412-MSK-MJW filed in the
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`U.S. District Court of Colorado on May 31, 2013. In the above litigation, Hunter
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`Douglas is asserting Claims 17, 26, 31, 35, 36, 38, 42, and 43 of the 192 Patent that
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`were already disclosed by the prior art and that are invalid. Rejection and
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`cancelation of Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 of the 192 Patent will
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`10
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`prevent Patent Owner from claiming technologies in the public domain as its own
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`and prevent Hunter Douglas from asserting these invalid claims to exclude others
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`in commerce.
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`In addition, Petitioner is pursuing petitions for Inter Partes Review of U.S.
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`Patent Nos. 6,648,050 B1; 6,968,884 B2; and 8,230,896 B2 asserted in the above
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`litigation.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
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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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`20
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`Camino Real, Suite 200, San Diego, CA 92130, contact numbers of 858-720-5700
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`-2-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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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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`5
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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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`This Petition meets and complies with all requirements under 37 C.F.R.
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`§ 42.104 for Inter Partes Review of Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43
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`10
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`of the 192 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 192
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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 192 Patent
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`15
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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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`is that the Patent Trial and Appeal Board invalidate Claims 17, 18, 26, 31, 35, 36,
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`38, 42, and 43 of the 192 Patent.
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`20
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`1.
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`Claims Challenged
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`-3-
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 of the 192 Patent are
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`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 Japanese Unexamined Patent
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`5
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`Application Publication S54-38648 to Tachikawa (“Tachikawa”) (Ex. 1002), U.S.
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`Patent No. 6,056,036 to Todd et al. (“Todd”) (Ex. 1003), U.S. Patent No.
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`5,531,257 to Kuhar (“Kuhar”) (Ex. 1004), U.S. Patent No. 5,641,229 to
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`McClintock et al. (“McClintock”) (Ex. 1005), U.S. Patent No. 4,096,903 to Ringle,
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`III (“Ringle”) (Ex. 1006) and U.S. Patent No. 3,216,528 to Lohr (“Lohr”) (Ex.
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`10
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`1007).
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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 192 Patent (Ex. 1008) supporting the grounds for claim
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`rejections and other supporting evidence in the Exhibit List.
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`15
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`4.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`The review of patentability of claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 of
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`the 192 Patent requested in this Petition is governed by statutory provisions under
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`pre-AIA 35 U.S.C. §§ 102 and 103 that were in effect before March 16, 2013.
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`Statutory provisions 35 U.S.C. §§ 311 to 319 that took effect on September 16,
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`20
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`2012 govern this Inter Partes Review.
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`5.
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`Claim Construction
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`-4-
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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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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`5
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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 17, 18, 26, 31, 35, 36, 38, 42, and 43 of the
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`192 Patent are unpatentable, including the identification of where each element of
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`the claim is found in the prior art patents or printed publications, is provided in
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`10
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`Section VI below.
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`IV. OVERVIEW OF THE 192 PATENT
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`A.
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`PRIORITY DATE OF THE 192 PATENT
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`The 192 Patent is granted from Appl. No. 09/229,595, filed January 13, 1999,
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`and claims priority to two prior patent filings, including a priority claim as a
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`15
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`continuation-in-part of Appl. No. 08/989,142, filed December 11, 1997 (now
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`abandoned), which is a continuation-in-part of Appl. No. 08/963,774, filed
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`November 4, 1997 (now abandoned). Therefore, the earliest priority date of the
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`192 Patent is no earlier than November 4, 1997.
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`B.
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`SUMMARY OF THE 192 PATENT
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`20
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`The 192 Patent describes window cover systems and associated spring drive
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`systems and transmissions for window covers. The Abstract of the 192 Patent
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`-5-
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`states that the disclosed spring system for window covers includes a so-called flat
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`spring drive and a combination of elements selected from a group which includes
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`(1) a band transmission which provides varying ratio power transfer as the cover is
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`opened and closed; (2) a gear system selected from various gear sets which provide
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`5
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`frictional holding force and fixed power transfer ratios; and (3) a gear transmission
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`which provides fixed ratio power transfer as the cover is opened or closed. The
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`combination permits the spring drive force at the cover to be tailored to the weight
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`and/or compression characteristics of the window cover such as a horizontal slat or
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`pleated or box blind as the cover is opened and closed. Claims 17, 18, 26, 31, 35,
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`10
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`36, 38, 42, and 43 of the 192 Patent that are challenged in this Petition include
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`independent Claims 17, 26, 31, and 38 and all recite spring drive systems that
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`include a spring drive having a flat spring. Those claims further recite a bevel gear
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`set (Claims 17 and 18), a pair of meshed bevel gears (Claim 26), or a transmission
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`applying a selected gear ratio between two transmission shafts (Claims 31, 35, 36,
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`15
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`38, 42, and 43).
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`As shown by evidence in this Petition, Claims 17, 18, 26, 31, 35, 36, 38, 42,
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`and 43 of the 192 Patent contain nothing novel but mere known 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 17, 18, 26, 31, 35, 36, 38, 42, and 43 reflect a bold
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`-6-
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`but belated attempt by Patent Owner to claim what was already known in that
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`industry.
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`C.
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`SUMMARY OF PROSECUTION FILE HISTORY
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`The 192 Patent underwent the original examination leading to the issuance
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`5
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`on September 4, 2001. USPTO records show no further post-grant proceedings on
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`the 192 Patent. In the original examination, on May 4, 1999, the applicant filed an
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`Amendment Prior to Examination that amended various claims to recite
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`“substantially flat spring,” canceled claims 17 and 25, and added claim 34.
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`Subsequently, Claims 35-42 were added in a Second Amendment Prior to
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`10
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`Examination dated January 24, 2000.
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`All of the pending claims were rejected in a first office action mailed
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`February 2, 2000 (claims 35-42 were not examined in the first office action). In
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`the first office action, claim 24 was rejected as anticipated by U.S. Patent No.
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`5,482,100 to Kuhar and claims 1-16, 18-24, and 26-34 were provisionally rejected
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`15
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`under the doctrine of non-statutory double patenting over the parent patent
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`application under Appl. No. 08/989,142 which was later abandoned.
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`In a supplemental office action mailed February 16, 2000, claims 1-16, 18-
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`24, 26-34, and 42 were rejected and claims 35-41 were allowed. In the office
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`action, claim 42 was rejected as anticipated by U.S. Patent No. 5,482,100. In an
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`-7-
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`amendment filed July 28, 2000, claims 43-49 were added and claims 24 and 42
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`were canceled.
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`Next, the Office issued a final office action on August 11, 2000 allowing
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`claims 1-16, 18-23, 34-41, and 43-49, and rejecting claims 26-33 as depending
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`5
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`from a canceled claim. An amendment was filed December 15, 2000, which
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`canceled claim 27 and amended claims 26, 28-30, 33, and 43. Thereafter, a notice
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`of allowability was issued on February 26, 2001.
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`The Office records of the original examination of the 192 Patent show that
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`various relevant references cited in this Petition were not before or relied upon by
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`10
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`the Examiner. For example, none of the prior art references relied upon in this
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`Petition (Tachikawa, Todd, Kuhar, McClintock, Ringle, and Lohr) were cited or
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`relied upon in the original examination of the issued Claims 17, 18, 26, 31, 35, 36,
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`38, 42, and 43 of the 192 Patent. Tachikawa, Todd, McClintock, Ringle, and Lohr
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`were never before the Examiner during the original examination.
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`15
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`The evidence presented in this Petition demonstrates that the original
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`examination of the 192 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 the prior art as cited in this Petition. The lack of
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`due consideration of relevant prior art in the original examination led to the
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`20
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`issuance of Claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 of the 192 Patent that are
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`-8-
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`invalid. Therefore, the institution of the inter partes review of Claims 17, 18, 26,
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`31, 35, 36, 38, 42, and 43 of the 192 Patent should be granted.
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`D.
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`PROPOSED CLAIM CONSTRUCTION
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`5
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`Petitioner presents construction of certain claim terms below pursuant to the
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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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`10
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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.
`
` “Window cover”
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`The BRI claim construction for this term is “window covering of an
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`expandable or extendible structure including slats and/or fabric.” This BRI claim
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`15
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`construction is supported by the specification of the 192 Patent. For example, the
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`192 Patent at 1:21-28 states, among others, “Typically, as used here, “cover” refers
`
`to expandable or extendible structures. These include slat structures such as so-
`
`called venetian or slat blinds and so-called mini-blinds. These structures also
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`include pleated folding structures such as single and plural pleat structures and box,
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`20
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`hollow and cellular structures. "Cover" also refers to flat, sheet-type covers such as
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`-9-
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`

`

`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`roller blinds. In this document, "cover" and "blind" are frequently used
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`interchangeably.” Additional support sections include, e.g., 5:58-6:34; Figs. 1-4. In
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`particular, the 192 Patent describes “a conventional horizontal slat (venetian)
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`window cover system” (5:59-60; Figs. 1 and 2) and “a conventional horizontal
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`5
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`pleated blind cover system…The associated blind 22 typically comprises light
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`weight fabric or other material” (6:1-6; Figs. 3 and 4).
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`2.
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`“Housing”
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`The BRI claim construction for this term is “a structure, housing, or support
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`within which the spring drive unit is mounted.” This BRI claim construction is
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`10
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`supported by the specification of the 192 Patent. For example, window cover
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`system is described to comprise “an elongate top housing or support 11 within
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`which the spring drive unit such as unit 15, FIG. 13, is mounted” (5:62-64).
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`3.
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`“Lift cord”
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`The BRI claim construction for this term is “an elongate cord, band, or strip
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`15
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`attached to the window cover.” This BRI claim construction is supported by the
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`specification of the 192 Patent. For example, “the spaced lift cords 16 and 17 are
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`attached to bottom rail 14 and are wound about the pulleys 19” (10:41-44; Figs 1,
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`3). In addition, “a pair of drums or spools 22, 23, about which is wound a cord or
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`band 24. Preferably the band is an elongated strip of thin cloth or thin steel having
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`a flat rectangular cross-section. However, other suitable materials can be used, and
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`other cross-section shapes can be used,” (6:44-48; Fig. 5).
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`4.
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`“Pulley”
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`The BRI claim construction for this term is “a spool, drum, or pulley around
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`5
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`which a lift cord is wrapped.” This BRI claim construction is supported by the
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`specification of the 192 Patent. For example, the 192 Patent explains that “the
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`spaced lift cords 16 and 17 are attached to bottom rail 14 (FIG. 1), 24 (FIG. 3) and
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`are wound about the pulleys 19-19” (10:44-46). The 192 Patent equates pulleys
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`and spools - “a pair of pulleys or spools 176 and 178” (18:12-13). Similarly, the
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`10
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`192 Patent equates drums and spools - “a first spring drive comprising storage
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`drum or spool 132” (18:60).
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`5.
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`“Spring drive system”
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`The BRI claim construction for this term is “a system including a flat spring
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`drive and a combination of elements for assisting the raising and lowering of the
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`15
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`window cover.” This BRI claim construction is supported by the specification of
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`the 192 Patent. For example, the 192 Patent explains that “a spring drive system
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`for window covers is disclosed, which includes a so-called flat spring drive and the
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`combination whose elements are selected from a group which includes (1) a band
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`transmission which provides varying ratio power transfer as the cover is opened
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`20
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`and closed; (2) a gear system selected from various gear sets which provide
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`frictional holding force and fixed power transfer ratios; and (3) a gear transmission
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`which provides fixed ratio power transfer as the cover is opened or closed. The
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`combination permits the spring drive force at the cover to be tailored to the weight
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`and/or compression characteristics of the window cover such as a horizontal slat or
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`5
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`pleated or box blind as the cover is opened and closed” (Abstract).
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`6.
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`“Flat spring”
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`The BRI claim construction for this term is “coiled transversely flat spring.”
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`This BRI claim construction is supported by specification of the 192 Patent. For
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`example, in Figs. 6 and 10, a “conventional ‘flat’ spring drive unit 31 comprises a
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`10
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`pair of drums or spools 27, 28, about which is wound a flat metal spring 29 that
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`provides nearly constant torque regardless of its wound position on the drums”
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`(7:21-25). As shown in Fig. 10, the flat spring is flat in the transverse direction. In
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`contrast, the 192 Patent characterizes the curved spring 34 shown in Fig. 11 as
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`having “a cove or transverse curvature” (7:31-32).
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`15
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`7.
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`“Substantially flat spring”
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`The BRI construction for this term is “transversely curved or coved spring.”
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`Although the term “substantially flat spring” is not explained in the specification,
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`the basis for this construction is provided in the prosecution history of the 192
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`Patent. In a response filed on May 4, 1999, in connection with the addition of the
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`20
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`term “substantially flat” to several of the claims, the Patent Owner represented to
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`the Patent Office that “the present application defines the term "flat spring" to
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`include a transversely curved or coved spring, that is, "flat spring" is defined as
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`including a cove or curved shape. See, for example, the passages cited in the
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`preceding paragraph, each of which defines "flat spring" as including a curved or
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`5
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`coved spring.”.
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`8.
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`“Rotatable end” and “Output end”
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`The BRI claim construction for “rotatable end” and “output end” is “end that
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`is operatively connected to the lift cord pulleys.” Support for this BRI claim
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`construction can be found in the 192 Patent, for example. Claim 17 describes “one
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`10
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`gear connected to the rotatable spring end and a second gear operatively connected
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`to the shaft for rotating the lift cord pulleys.” In addition, the 192 Patent discloses
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`that “the output of the spring drive 26, 31, 41 is connected via power transfer bevel
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`gear set 60 and transmission 70 to the cord pulleys 19-19” (10:66-11:1).
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`9.
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`“Output Spool”
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`15
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`The BRI claim construction for “output spool” is “spool, drum, or pulley
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`operatively connected to the lift cord pulleys.” Support for this BRI claim
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`construction can be found in the 192 Patent, for example. Claim 26 describes an
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`“output spool operatively connected to the pulley.” In addition, the 192 Patent
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`discloses that “the output of the spring drive 26, 31, 41 is connected via power
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`transfer bevel gear set 60 and transmission 70 to the cord pulleys 19-19” (10:66-
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`11:1).
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`10.
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`“Storage end” and “Storage Spool”
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`The BRI claim construction for “storage end” is “end opposite the rotatable
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`5
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`end.” The BRI claim construction for “storage spool” is “spool, drum, or pulley
`
`opposite the output spool.” The above BRI claim construction is supported by the
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`specification of the 192 Patent, e.g., various drawings including Figs. 6-8 that show
`
`the storage end and storage spool as being opposite the rotatable end or output
`
`spool.
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`10
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`11.
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`“Bevel gear set” and “Pair of meshed bevel gears”
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`The BRI claim construction for both terms is “a combination of a first bevel
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`gear and a second bevel gear meshed together and interconnecting non-parallel
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`components.” This BRI claim construction is supported by the specification of the
`
`192 Patent. For example, the 192 Patent explains that “FIGS. 14A and 14B depict
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`15
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`the use of bevel gear sets to interconnect non-parallel components such as the
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`pulley(s) and spring drives” (4:29-31). In another example, “the gear train shaft is
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`oriented 90° to the associated pulley shaft and is connected to that pulley shaft by
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`bevel gear set 60” (12:12-14).
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`12.
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`“Inherent inertia”
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`20
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`The term “inherent inertia” is only recited in the issued claims including
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`Claims 17, 31 and 38 that are challenged in this Petition. The specification of the
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`192 Patent does not use or mention the term “inherent inertia” in the text and
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`drawings. The BRI claim construction for this term is its ordinary meaning, which
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`is “a property of matter whereby it remains at rest or continues in uniform motion
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`unless acted upon by some outside force” (Ex. 1009, The New Merriam-Webster
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`5
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`Dictionary, Copyright 1989, Pg.380).
`
`13.
`
`“Transmission”
`
`The term “transmission” in this Petition is the “transmission” recited in
`
`Claims 31, 35, 36, 38, 42, and 43 that are challenged in this Petition. The BRI
`
`claim construction for this term is “a device including a first rotatable shaft and a
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`10
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`second, rotatable shaft with a selected gear ratio applied therebetween.” This BRI
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`claim construction is supported by the specification of the 192 Patent. The 192
`
`Patent describes several transmissions including gear transmissions (Figs. 13, 18,
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`19), band transmissions (Figs. 5, 17, 19), and cord transmissions (Figs. 51, 52)
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`each of which includes rotatable parallel shafts and applies a selected gear ratio
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`15
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`between two parallel shafts.
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`For independent Claim 17, its dependent Claim 18 recites “a gear
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`transmission” as a separate structure from the “transmission” in Claim 17, and
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`similarly, the dependent Claim 36 recites “a bevel gear set” as a separate structure
`
`from the “transmission” recited in Claim 36 (which was first introduced in the
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`independent Claim 31) and from the “gear transmission” recited in Claim 36
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`(which was first introduced in Claim 35).
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`14.
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`“Gear transmission”
`
`The term “gear transmission” in this Petition is the “gear transmission”
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`5
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`recited in Claims 18, 35 and 36 that are challenged in this Petition. The BRI
`
`construction for this term is “a combination of gears engaged to transfer rotation
`
`therebeteween.” The 192 Patent defines a gear transmission and provides the basis
`
`for this BRI construction. For example, the 192 Patent states that “the transmission
`
`70 comprises an array of gears 71, 73, 75 and 77, in which idler gears 71 and 73
`
`10
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`are intermeshed and idler gear 75 and power gear 77 are intermeshed. Idler gear 71
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`and an integral sleeve or collar are mounted on and rotate with shaft section 53 and
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`vice versa. Gears 73 and 75 are joined, forming a gear set. This gear set and an
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`integral collar are mounted on and fastened to shaft 74, which is mounted to and
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`between supports 84 and 86. Power gear 77 and an integral collar are mounted on
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`15
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`and fastened to shaft section 53. Power gear 77 meshes with gear 75 of the two-
`
`gear set, the other gear 73 of which meshes with idler gear 71.” (9:34-45; Fig. 13).
`
`The 192 Patent explains that “at one end of the transmission gear train, power gear
`
`77 is joined to and rotates at the same rate as the shaft 53 and lift cord pulleys 19-
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`19. At the opposite end of the transmission gear train, idler gear 71 and
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`Petition for Inter Partes Review of U.S. Pat. No. 6,283,192 B2
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`interconnected bevel gear 62 rotate freely about the shaft