DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`NORMAN INTERNATIONAL, INC.
`
`Petitioner
`
`v.
`
`HUNTER DOUGLAS, INC., ANDREW J. TOTI TESTAMENTA RY TRUST,
`RUSSELL L. HINCKLEY, SR. (CO-TRUSTEE), and ROBERT F. MILLER
`(CO-TRUSTEE)
`
`Patent Owner
`
`_________________________
`
`CASE: To Be Assigned
`
`Patent No. 6,283,192 B1
`
`_________________________
`
`DECLARATION OF PATRICK E. FOLEY
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`
`
`
`Norman Int. Exhibit 1007
`
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`NORMAN INTERNATIONAL, INC.
`
`Petitioner
`
`v.
`
`HUNTER DOUGLAS, INC., ANDREW J. TOTI TESTAMENTA RY TRUST,
`RUSSELL L. HINCKLEY, SR. (CO-TRUSTEE), and ROBERT F. MILLER
`(CO-TRUSTEE)
`
`Patent Owner
`
`_________________________
`
`CASE: To Be Assigned
`
`Patent No. 6,283,192 B1
`
`_________________________
`
`DECLARATION OF PATRICK E. FOLEY
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`
`
`
`Norman Int. Exhibit 1007
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`SUMMARY OF OPINIONS ........................................................................... 2
`II.
`III. QUALIFICATIONS AND EXPERIENCE ..................................................... 4
`A. Education and Work Experience ............................................................ 4
`B. Compensation ......................................................................................... 6
`C. Documents and Other Materials Relied Upon ....................................... 6
`IV. STATEMENT OF LEGAL PRINCIPLES ...................................................... 7
`A. Obviousness ............................................................................................ 7
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
`V.
`VI. THE RELEVANT PRIORITY DATE .......................................................... 11
`VII. TECHNOLOGY BACKGROUND OF CLAIMED SUBJECT MATTER OF
`THE 192 PATENT ........................................................................................ 11
`VIII. REASONS TO COMBINE TACHIKAWA, SUZUKI, SKIDMORE, AND
`LOHR ............................................................................................................. 15
`A. Tachikawa, Suzuki, Skidmore, and Lohr Are Analogous Art ............. 16
`B. A Person Having Ordinary Skill Would Have Combined Tachikawa
`With Suzuki, Skidmore, and Lohr ........................................................ 21
`
`-i-
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`Norman Int. Exhibit 1007
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`I.
`
`INTRODUCTION
`
`1. My name is Patrick E. Foley. A mechanical engineer by training and
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`by profession, I am an Engineering Manager with Blount International, Inc., a
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`global manufacturer and marketer of replacement parts, equipment, and accessories
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`for various applications and industries including forestry, farm, and agriculture.
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`The business of Blount International, Inc. is outside of technologies for window
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`blinds and coverings. I am submitting this declaration as an independent
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`consultant.
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`2.
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`I have been engaged by Norman International, Inc. (“Norman”) to
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`investigate and opine on certain issues relating to U.S. Patent No. 6,283,192 B1
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`entitled “FLAT SPRING DRIVE SYSTEM AND WINDOW COVER” (“192
`
`Patent”) and three other patents, U.S. Patent Nos. 6,648,050 B1, 6,968,884 B2, and
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`8,230,896 B2. I understand those four patents are being asserted against Norman
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`and other entities in an on-going patent infringement lawsuit brought by Hunter
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`Douglas, Inc. in Hunter Douglas, Inc. et al. v. Nien Made Enterprise Co., Ltd. et
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`al., Case No. 1:13-cv-01412-MSK-MJW filed in the U.S. District Court of
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`Colorado on May 31, 2013.
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`3.
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`In this declaration, I will discuss the technology related to the 192
`
`Patent, including an overview of that technology as it was known by November 4,
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`
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`Norman Int. Exhibit 1007
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`
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
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`1997, which I understand is the earliest filing date to which the 192 Patent may
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`claim priority.
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`4.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`supplement my opinions following further investigation and study, which may
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`include a review of documents and information that may be produced, as well as
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`testimony from depositions that may not yet be taken.
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`II.
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`SUMMARY OF OPINIONS
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`5.
`
`The 192 Patent describes window cover systems and associated spring
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`drive systems and transmissions for window covers. I understand Norman is
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`requesting that the Patent Office review the patentability of Claims 17, 18, 26, 31,
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`35, 36, 38, 42, and 43 of the 192 Patent and cancel those claims in light of prior art.
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`6.
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`I was asked by Norman’s counsel to analyze four prior art references:
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` Japanese Unexamined Patent Application Publication S54-38648
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`to Tachikawa (“Tachikawa”);
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` Japanese Unexamined Patent Application Publication S53-126478
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`to Suzuki (“Suzuki”);
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` G.B. Patent No. 1,174,127 to Skidmore (“Skidmore”); and
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` United States Patent No. 3,216,528 to Lohr (“Lohr”).
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`-2-
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`Norman Int. Exhibit 1007
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`
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`
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`7.
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`I understand that true and accurate copies of the Tachikawa, Suzuki,
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`Skidmore, and Lohr prior art references are attached as Exhibits 1002, 1003, 1004,
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`and 1005 to a petition by Norman for inter partes review of the 192 Patent.
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`8.
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`Based on my review of the evidence and facts, it is my opinion that
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`Tachikawa, Suzuki, Skidmore, and Lohr are in the same field of endeavor as the
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`claimed subject matter in the 192 Patent. It is also my opinion that a person having
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`ordinary skill in the art at the time of the earliest possible priority date of the
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`claimed subject matter in the 192 Patent—November 4, 1997—would have had
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`reasons and motivations to combine Tachikawa with Suzuki, Skidmore, and Lohr.
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`These prior art references disclose well-known elements in the art that are closely
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`related to common technical features in window blinds and thus could be
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`combined, in the eyes of a person having ordinary skill in the art of window blinds
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`and coverings, to yield predictable results.
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`9.
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`I understand that another expert, Professor Lawrence Carlson, has
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`determined that the claimed combination in each of Claims 17, 18, 26, 31, 35, 36,
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`38, 42, and 43 of the 192 Patent contain nothing novel or inventive and that those
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`claims are unpatentable and invalid under the patentability standard of 35 U.S.C.
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`§ 102 and/or § 103 in view of Tachikawa in various combinations with Suzuki,
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`Skidmore, or Lohr.
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`-3-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`
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`10. The subsequent sections of this declaration will first provide my
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`qualifications and experience and then describe details of my analysis and
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`observations.
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`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`11.
`I received a Bachelor of Science in Mechanical Engineering from
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`North Carolina State University in 1993. I also participated in the New Product
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`Development program offered by the Massachusetts Institute of Technology Sloan
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`School of Management in 2007.
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`12.
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`I have worked as a mechanical engineer for more than 20 years in
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`several industries. After graduation I first worked as an R&D Machine Design
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`Engineer for Unifi, Inc. from 1993 to 2001. After that I was a Research and
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`Development Engineering Manager for the Consumer Product Development Group
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`with Newell Rubbermaid, Inc. and Newell Window Furnishings, Inc. (“Newell
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`Rubbermaid”) from 2001 to 2010. I then served as a Mechanical Engineering
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`Manager with Thermo Fisher Scientific from 2010 to 2013, at which time I began
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`my current position as an Engineering Manager with Blount International, Inc. A
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`true and accurate copy of my resume is included in Attachment A.
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`13. While I was with Newell Rubbermaid, I directed a team of five
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`engineers in new product design for consumer products, including window
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`-4-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
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`coverings. My work included research and design of new cellular shade and
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`cordless shade and blind products for window covering applications. In
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`connection with that work, I researched and designed cordless cellular shade
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`products. This included in-depth work on cordless window covering designs that
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`were based on the work of Mr. Otto Kuhar. Mr. Kuhar is a named inventor of
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`various patents on window covering technologies, including, among others: (1)
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`Patent No. 5,482,100 for “Cordless, Balanced Venetian Blind or Shade with
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`Consistent Variable Force Spring Motor”; (2) Patent No. 4,982,776 for “Cord Lock
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`for a Venetian Blind or a Shade”; (3) Patent No. 5,143,135 for “Low Profile
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`Headrail Venetian Blind”; (4) Patent No. 5,531,257 for “Cordless, Balanced
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`Window Covering”; (5) Patent No. 6,491,084 for “Bottom Rail Weight and
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`Balancing System”; and (6) Patent No. 7,503,370 for “Cordless Balanced Window
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`Covering.” True and accurate copies of these patents are attached as Attachments
`
`B-G.
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`14.
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`In my work at Newell Rubbermaid I became intimately familiar with
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`the state of the art in window coverings, generally, and cordless window coverings,
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`specifically. Part of my job was to become educated on new designs and product
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`offerings, which included research into various alternatives for the mechanics of
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`cordless window coverings. My work included research into designs, products,
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`-5-
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`Norman Int. Exhibit 1007
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`
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`and patents known in the field in and prior to 1997, as many of the designs and
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`products were still on the market, and certain patents that predated 1997 would
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`have still been in force during my tenure at Newell Rubbermaid.
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`15.
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`I am a named inventor of four United States patents that relate to
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`window coverings: (1) Patent No. 8,256,333 issued September 4, 2012, entitled
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`“Window Covering Sizing Method and Apparatus”; (2) Patent No. 8,087,445
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`issued January 3, 2012, entitled “Spring Motor and Window Covering”; (3) Patent
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`No. 7,721,782 issued May 25, 2010, entitled “Arched Window Covering”; and (4)
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`Patent No. 7,048,028 issued May 23, 2006, entitled “Mounting Bracket and
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`Headrail Assembly.” U.S. Patent No. 8,087,445 claims an invention for an
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`improvement on a spring motor unit for cordless shades.
`
`B. Compensation
`16.
`I am being compensated at the rate of $250 per hour for the services I
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`am providing in this case. The compensation is not contingent upon my
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`performance, the outcome of this inter partes review or any other proceeding, or
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`any issues involved in or related to this inter partes review.
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`C. Documents and Other Materials Relied Upon
`17. The documents on which I rely for the opinions expressed in this
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`declaration are the 192 Patent, the prior art references and information discussed in
`
`this declaration, and any other references specifically identified in this declaration,
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`-6-
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`Norman Int. Exhibit 1007
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`
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
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`in their entirety, even if only portions of those documents are discussed in an
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`exemplary fashion. I also rely on my own experience and expertise in the relevant
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`technologies and systems that were already in use prior to, and within the time of
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`the earliest possible priority date of the claimed subject matter in the 192 Patent—
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`November 4, 1997.
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`IV. STATEMENT OF LEGAL PRINCIPLES
`A. Obviousness
`18. Norman’s counsel has advised that obviousness under 35 U.S.C.
`
`§ 103 is a basis for invalidity. I understand that where a prior art reference
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`discloses less than all of the limitations of a given patent claim, that patent claim is
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`invalid if the differences between the claimed subject matter and the prior art
`
`reference are such that the claimed subject matter as a whole would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`relevant art. I understand that obviousness can be based on a single prior art
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`reference or a combination of references that either expressly or inherently disclose
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`all limitations of the claimed invention. Prior art also includes the understanding
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`of one of ordinary skill in the art.
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`19. Norman’s counsel has explained that prior art needs to be either (a) in
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`the same field of endeavor as the claimed invention, even if it addresses a different
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`problem than the claimed invention, or (b) reasonably pertinent to the problem
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`-7-
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`Norman Int. Exhibit 1007
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`
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
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`faced by the inventor, even if it is not in the same field of endeavor as the claimed
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`invention. I understand that prior art is reasonably pertinent to the problem when it
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`would have logically presented itself to an inventor’s attention in considering the
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`problem. Norman’s counsel has also explained that in a simple mechanical
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`invention, a broad spectrum of prior art must be explored, and it is reasonable to
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`inquire into other areas where one of ordinary skill in the art would be aware that
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`similar problems exist, including where other areas have inventions with similar
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`structure and function.
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`20. Norman’s counsel has also explained that a conclusion of obviousness
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`can be supported by a number of reasons. Obviousness can be based on
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`inferences, creative steps, and even routine steps and ordinary ingenuity that an
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`inventor would employ. A conclusion of obviousness can be supported by
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`combining or substituting known elements according to known methods to yield
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`predictable results, or by using known techniques to improve similar devices in the
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`same way, or by trying predictable solutions with a reasonable expectation of
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`success, among other reasons.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`21.
`I understand from Norman’s counsel that the claims and specification
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`of a patent must be read and construed through the eyes of a person of ordinary
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`-8-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
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`skill in the art at the time of the priority date of the claims. I have also been
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`advised that to determine the appropriate level of a person having ordinary skill in
`
`the art, the following factors may be considered: (a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (b) the
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`sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`22. The relevant technologies to the 192 Patent are spring drive systems
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`utilized in window covers. This is consistent with, and is reflected by, the title,
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`abstract, specification, and drawings in the 192 Patent.
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`23. The technical problems encountered in spring drive systems in
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`window covers are basic mechanical design issues. This is consistent with the
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`patentee’s description of the “Current State of the Relevant Field” provided in the
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`192 Patent at 1:48-2:25. For instance, the patentee explains that:
`
`The operating characteristics of conventional constant
`torque flat spring drives, especially long blinds, make it
`difficult to assist the opening and closing operation of
`horizontal and flat blinds. As applied to downward-
`closing embodiments of such blinds, spring drives
`usually are mounted at the top of the blind, and are
`operatively connected or coupled to the shaft about
`which the blind lift cords are wound. As described
`above, as the blind is lowered, the slat weight supported
`by the lift cords decreases and the compression of the
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`-9-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`
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`pleats decreases. However, the torque force of the spring
`remains relatively constant, with the result that the spring
`torque may overcome the decreasing supported weight or
`the decreasing compression force, and raise the blind in a
`fast, uncontrolled fashion. Also, it may be difficult to
`keep the blind at a selected position. Furthermore, if the
`blind is heavy, and requires a strong spring to maintain
`the blind open, the blind is particularly susceptible to
`instability and uncontrolled raising operation when
`partially or fully closed.
`
`192 Patent at 2:7-35.
`
`24. Based on my review of the 192 Patent, it is my opinion that the
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`technology in the 192 Patent reflects well-known components, modules and
`
`designs for spring drive-based window blinds and coverings. The disclosed
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`systems utilize basic mechanical components, such as flat springs, bevel gears,
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`cords and pulleys, shafts, brakes, gears, transmissions, spools, cranks, and brake
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`devices. The features in the 192 Patent were, and continue to be, routine and
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`conventional features, designed for providing well-known functions or solving
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`commonly recognized operational issues in window blinds and coverings, and used
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`commercially for many years in window blind and covering products.
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`25.
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`In my experience, many active workers in the field of window blinds
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`and coverings had a degree in mechanical or textile engineering or had extensive
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`experience in mechanical devices or systems. I am not currently aware of the
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`named inventor’s educational background.
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`-10-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`26. Based on the above considerations and factors, it is my opinion that a
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`person having ordinary skill in the art would have an associate’s degree or a
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`bachelor’s degree in mechanical engineering, textile engineering, or a related field
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`involving mechanical design coursework and a few years of working experience in
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`the area of mechanical design. This description is approximate, and additional
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`education in mechanical design could make up for less work experience and vice
`
`versa. This opinion is consistent with my own experience in the window covering
`
`industry.
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`VI. THE RELEVANT PRIORITY DATE
`27.
`I have been advised by Norman’s counsel that the earliest potential
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`priority date for the claims of the 192 Patent is the filing date of the earliest
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`application to which the 192 Patent claims priority, which I have been informed is
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`November 4, 1997. This date is indicated on the cover page under “Related U.S.
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`Application Data” of the 192 Patent.
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`VII. TECHNOLOGY BACKGROUND OF CLAIMED SUBJECT
`MATTER OF THE 192 PATENT
`28. Window coverings are consumer products, and so a product design
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`tends to be influenced by consumer trends and feedback. In the 1990’s, there was
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`an increased consumer and industry interest in cordless window covering products
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`to improve the safety, ease of use, and aesthetics of window covering products.
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`-11-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`Cordless window coverings were around long before the 1990’s, but there was a
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`renewed interest in those products at that time.
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`29. Window covering technology generally involves basic principles of
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`mechanical design. While various forms of spring motors have been used in
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`cordless window cover designs, persons of ordinary skill in the art recognized that
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`a flat spring drive possessed particular advantages well before November 4, 1997.
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`30. For example, Mr. Otto Kuhar filed a patent application on April 6,
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`1994, which later issued as U.S. Patent No. 5,482,100 (“100 Patent”) on January 9,
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`1996, entitled “Cordless, Balanced Venetian Blind or Shade with Consistent
`
`Variable Force Spring Motor.” A true and correct copy of the 100 Patent is
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`included in Attachment B. For instance, Mr. Kuhar’s 100 Patent shows a flat
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`spring in the cordless window covering in Figure 2. As explained in the Abstract,
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`the 100 Patent discloses “one or more constant variable force spring motors” in a
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`lift system for a window covering. (100 Patent at Abstract.)
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`31. Therefore, by the relevant priority date—November 4, 1997—a
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`person of skill in the art of window blinds and coverings knew and understood the
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`advantages of utilizing flat springs in window coverings, such as the compact size
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`(which enables the design of a longer length shade), predictable consistent or
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`variable force as needed, reliability of those springs, and low cost.
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`-12-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`32. By the same date, a person of ordinary skill in the art likewise knew
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`and understood the necessity of combining a spring motor with other basic
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`mechanical components to lift or manipulate objects like window coverings.
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`These basic mechanical components, including bevel gears, cords and pulleys,
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`shafts, brakes, gears, transmissions, spools, cranks, and brake devices, were known
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`elements used by known methods to achieve predictable results with an
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`expectation of success. In fact, based on my work on window covering designs, I
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`would expect a person of ordinary skill in the art at the time to have broadly
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`researched available publications (including published patents and patent
`
`applications) and products for inspiration. This would include not only
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`investigating current and prior designs of window coverings, but also looking at
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`products and systems in other industries that used similar mechanical components.
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`33. For example, spring drive units or spring motors and associated
`
`transmission designs for transferring or regulating rotation motion caused by
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`springs were and continue to be ubiquitous and common mechanical devices used
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`in a range of window blinds and coverings on the market and in many other
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`applications. When I worked on designs for window coverings based on spring
`
`drive units or spring motors, my colleagues and I routinely researched designs in
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`window coverings and similar or related designs in other applications. For
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`-13-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`instance, my colleagues and I researched toys with spring drives, tape measures,
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`awnings, garage door openers, sails, and one-way bearings.
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`34.
`
`If, for example, a person of ordinary skill needed to design a spring
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`motor mechanism to lift and counterbalance a load, such as the weight of a window
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`covering, that person would combine and substitute a variety of those known
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`elements according to known methods to counterbalance the particular load.
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`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
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`various combinations of those mechanical elements that could be used to adapt a
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`particular design to a specific load.
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`35. The patentee of the 192 Patent apparently also understood that was the
`
`case and included the following language in the specification:
`
`One familiar with the art to which the present invention
`pertains will appreciate from the various carriers and
`blind/cover arrangements disclosed here, that the present
`invention is applicable in general to articles, objects or
`systems designed for support by and traversal along
`tracks. Adaptation of the system to other articles, objects
`and systems, including other blinds will be readily done
`by those of usual skill in the art. The invention is defined
`[sic] by the claims appended hereto.
`
`192 Patent at 23:12-20.
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`-14-
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`Norman Int. Exhibit 1007
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
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`
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`36. Combinations of these mechanical components were known in the art
`
`before November 4, 1997. Tachikawa, Suzuki, Skidmore, and Lohr are just four
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`specific examples.
`
`VIII. REASONS TO COMBINE TACHIKAWA, SUZUKI, SKIDMORE,
`AND LOHR
`
`37.
`
`I have been asked to review Tachikawa, Suzuki, Skidmore, and Lohr
`
`with respect to the 192 Patent. Tachikawa, Suzuki, Skidmore and Lohr are patent
`
`filings and patent documents that were published decades before the earliest
`
`priority date of the claimed subject matter in the 192 Patent—November 4, 1997.
`
`38. Tachikawa and Suzuki are patent filings on spring drive designs and
`
`related transmission mechanisms for raising and lowering venetian-type window
`
`blinds, which were filed in 1977. Both Tachikawa and Suzuki are based on
`
`inventions made in Japan and initial patent filings at the Japanese Patent Office.
`
`39. Skidmore is a 1969 patent on geared transmission designs for raising
`
`and lowering blinds in a venetian window blind system. Skidmore is based on a
`
`filing made at the United Kingdom Patent Office in July of 1967—almost exactly
`
`30 years before the earliest priority date claimed by the 192 Patent.
`
`40. Lohr describes in detail components and interconnections of spring
`
`motor drives for “common use in several fields.” Lohr is a United States patent
`
`-15-
`
`Norman Int. Exhibit 1007
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`granted in 1965 and is based on a patent filing in December of 1963, nearly 34
`
`years before the earliest priority date claimed by the 192 Patent.
`
`41. Therefore, the teachings in Tachikawa, Suzuki, Skidmore, and Lohr
`
`reflect the state of the technology in spring drive units/spring motors and the use of
`
`spring drive units/spring motors and related transmission mechanisms for raising
`
`and lowering window blinds in the 1960’s and 1970’s. Those teachings
`
`demonstrate that the designs, components, functions, and features in the 192 Patent
`
`were well developed in the 1960’s and 1970’s.
`
`42.
`
`It is my opinion that a person having ordinary skill in the art of
`
`window blinds and coverings would have identified Tachikawa, Suzuki, Skidmore,
`
`and Lohr as relevant art and had reasons and motivations to combine the known
`
`elements in these publications before November 4, 1997.
`
`A. Tachikawa, Suzuki, Skidmore, and Lohr Are Analogous Art
`43. Tachikawa is entitled “Venetian Blinds Roll-up Device” and discloses
`
`“a constant force spring is mounted on a drive shaft or operating shaft for
`
`performing the rolling up of venetian blinds.” (Tachikawa at 1:4-7.) Venetian
`
`blinds are one type of window covering having horizontal slats, and Tachikawa is
`
`directed to the problem of a “gradually increasing change in the load as the blinds
`
`are rolled up” (Tachikawa at 1:9-10), a problem that the 192 Patent also discusses
`
`-16-
`
`Norman Int. Exhibit 1007
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`and addresses. (192 Patent at Abstract (“The combination permits the spring drive
`
`force at the cover to be tailored to the weight and/or compression characteristics of
`
`the window cover such as a horizontal slat or pleated or box blind as the cover is
`
`opened and closed.”); 2:14-20 (noting that slat weight that needs to be supported
`
`changes as the blinds are lowered).) Tachikawa is therefore in the same field of
`
`endeavor as the 192 Patent and identifies and addresses a similar problem.
`
`44. Suzuki is entitled “Spring-type Balancer” and “relates to a spring-type
`
`balancer used for blinds and other apparatuses.” (Suzuki at 2:3, 2:15-16.) Suzuki
`
`identifies and addresses a problem of “unbalancing … if the slat load varies as the
`
`blind raises and falls.” (Suzuki at 2:23.) Blinds are a window covering, so Suzuki
`
`is in the same field of endeavor for spring drive designs for raising and lowering
`
`window coverings as the 192 Patent. Moreover, Suzuki is also directed to the
`
`same problem as the claimed invention of the 192 Patent, a varying slat load that
`
`depends on the position of window blinds. (192 Patent at 1:53-63 (“However, as
`
`the blind is raised, the slats are ‘collected’ on the bottom rail, and the support of
`
`the slats is thus increasingly transferred from the cord ladder to the bottom rail and
`
`the weight supported by the rail and the lift cords increases.”).) Further, Suzuki
`
`addresses the problem in a similar way; Suzuki anticipated and disclosed the flat
`
`-17-
`
`Norman Int. Exhibit 1007
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`spring drive in connection with a transmission for raising and lowering blinds.
`
`(Suzuki at 2:27-29.)
`
`45. Skidmore, which is entitled “Venetian Blind,” discloses a venetian
`
`window cover that includes a drive mechanism to raise or lower the bottom rail of
`
`the blind. (Skidmore at 1:47-50.) In short, Skidmore discloses devices for
`
`assisting in the raising and lowering of a window covering. (Skidmore at 4:14-31.)
`
`The disclosure of Skidmore covers or overlaps with the disclosure in the 192
`
`Patent. For example, similar to Skidmore, the 192 Patent also discloses a device
`
`for assisting in the raising and lowering of a window covering. (192 Patent at
`
`3:39-42 (“In specific applications embodying the present invention, one or more of
`
`the spring drives are incorporated in window cover systems for providing torque or
`
`force tailored to the operating characteristics of the cover.”).) More specifically,
`
`both Skidmore and the 192 Patent acknowledge the importance of a design that can
`
`be moved with little effort. (Skidmore at 4:20-31 (allowing operation with only
`
`“very light force” and “without requiring an excessive amount of pulling”); 192
`
`Patent at 20:64-67 (“combinations” of mechanical components in a locking cord
`
`system result in “little effort being required to operate a covering using the cord”)
`
`& 22:19-28 (noting that the combination of various mechanical components in a
`
`crank system provide “ease of operation, stability and accessibility”).
`
`-18-
`
`Norman Int. Exhibit 1007
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,283,192 B1
`
`
`
`46. Further, Skidmore and the 192 Patent share the goal of applying the
`
`correct amount of force as the blinds are lowered. (Skidmore at 3:11-23 (referring
`
`to adjustment “such that no undue force is required” but that the force is “sufficient
`
`to prevent the weight of the bottom stick 44 and slats 41 from lowering the blind
`
`from its raised position”); 192 Patent at Abstract (“The combination permits the
`
`spring drive force at the cover to be tailored to the weight and/or compression
`
`characteristics of the window cover such as a horizontal slat or pleated or box blind
`
`as the cover is opened and closed.”) & 2:14-20 (noting that slat weight that needs
`
`to be supported changes as the blinds are lowered).) Skidmore is therefore in the
`
`same field of endeavor for using mechanical devices to raise and lower window
`
`blinds as the 192 Patent and identifies and addresses a similar problem in window
`
`blinds as the later-filed 192 Patent.
`
`47. Skidmore discloses geared drive mechanisms in window blinds
`
`generally and is relevant to and closely related to the geared transmission designs
`
`in connection with the spring drive for window blinds in the 192 Patent. One of
`
`ordinary skill in the art would understand that this is the same field of endeavor.
`
`Indeed, the patentee for the 192 Patent understood that the relevant art could
`
`include other forms of drive mechanisms, including motors, and disclosed U.S.
`
`Patent Nos. 3,139,877 and 4,472,910 to the Patent Office as relevant art during
`
`-19-
`
`Norman Int. Exhibit 1007
`
`
`
`DECLAR
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