Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 7
`Entered: February 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NORMAN INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`HUNTER DOUGLAS INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01175
`Patent 6,968,884 B2
`_______________
`
`
`
`Before LINDA M. GAUDETTE, JAMES P. CALVE and
`HYUN J. JUNG, Administrative Patent Judges.
`
`GAUDETTE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 7
`Entered: February 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NORMAN INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`HUNTER DOUGLAS INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01175
`Patent 6,968,884 B2
`_______________
`
`
`
`Before LINDA M. GAUDETTE, JAMES P. CALVE and
`HYUN J. JUNG, Administrative Patent Judges.
`
`GAUDETTE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01175
`Patent 6,968,884 B2
`
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`I. INTRODUCTION
`
`On July 16, 2014, Norman International, Inc. (“Petitioner”) filed a
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`Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 5–7
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`(the “challenged claims”) of U.S. Patent No. 6,968,884 B2 (Ex. 1001, “the
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`’884 patent”). 35 U.S.C. § 311. Hunter Douglas Inc. (“Patent Owner”)
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`timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have
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`jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” Upon consideration of Petitioner’s
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`Petition and Patent Owner’s Preliminary Response, we determine Petitioner
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`established a reasonable likelihood that it would prevail in showing the
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`unpatentability of claim 7. Accordingly, pursuant to 35 U.S.C. § 314, we
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`institute an inter partes review as to claim 7. Our factual findings and
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`conclusions at this stage of the proceeding are based on the evidentiary
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`record developed thus far (prior to Patent Owner’s Response). This is not a
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`final decision as to patentability of claims for which inter partes review is
`
`instituted. Our final decision will be based on the record as fully developed
`
`during trial.
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`II. BACKGROUND
`
`A. Related Matters
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`Contemporaneous with the instant Petition, Petitioner also filed
`
`Petitions for inter partes review of U.S. Patent Nos. 8,230,896 B2,
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`6,283,192 B1, and 6,648,050 B1. Pet. 2. These Petitions have been assigned
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`the following case numbers: IPR 2014-01176, IPR 2014-01174 and IPR
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` 2
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`IPR2014-01175
`Patent 6,968,884 B2
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`2014-01173, respectively. Of the patents at issue in these proceedings, only
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`U.S. Patent No. 8,230,896 B2 (at issue in IPR 2014-01176) is in the same
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`patent family as the ’884 patent. Petitioner previously submitted petitions for
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`inter partes review of the same four patents on December 19–20, 2013. Pet.
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`2. On June 20, 2014, trial was instituted on claims 17 and 26 of U.S. Patent
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`No. 6,283,192 B1 in IPR2014-00283 (Paper 9). Trial was denied in the
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`remaining three petitions: IPR2014-00276 (Paper 11), IPR2014-00282
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`(Paper 8), and IPR2014-00286 (Paper 8). Petitioner indicates that Patent
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`Owner filed suit against Petitioner alleging infringement of the ’884 patent
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`and the aforementioned three patents in Hunter Douglas Inc. v. Nien Made
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`Enterprise Co., 1:13-cv-01412-MSK-MJW (D. Colo. May 31, 2013). Pet.
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`1–2. Petitioner was served with a complaint in the district court action on
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`July 16, 2013. Id. at 3; Ex. 1011.
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`B. The ’884 patent (Ex. 1001)
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`The ’884 patent relates to a modular transport system for opening and
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`closing coverings for architectural openings such as venetian blinds, pleated
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`shades, and other blinds and shades. Ex. 1001, Title, 1:14–16. Typically, a
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`transport system for such coverings includes a top head rail which both
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`supports the covering and hides the mechanisms used to raise and lower,
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`and/or open and close the covering. Id. at 1:21–23. A goal of the invention
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`is to provide a system wherein these mechanisms are housed in independent,
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`self-contained modules that are readily interconnected to satisfy the
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`requirements of a multitude of different window covering systems. Id. at
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`3:10–18. “Each module is easily and readily installed, mounted, replaced,
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`removed, and interconnected within the blind transport system with an
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`absolute minimum of time and expense.” Id. at 3:22–25.
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` 3
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`IPR2014-01175
`Patent 6,968,884 B2
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`One embodiment of the invention described in the ’884 patent is
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`depicted in Figure 1, reproduced below.
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`
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`Figure 1, above, is a partially broken away and partially exploded
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`view of an embodiment of a blind transport system. Ex. 1001, 5:54–56.
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`Blind 10 includes a plurality of slats 14 suspended from head rail 12 by
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`ladder tapes 22. Id. at 17:10–13. Two lift cords 16 extend through holes 17
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`in slats 14 and are fastened to bottom rail 14A. Id. at 17:13–15. Positioned
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`inside head rail 12 are spring motor power module 20, transmission module
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`30, two lifting modules 40, and lift rod 26. Id. at 17:17–20, 23–24. Spring
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`motor power module 20 includes coil spring 200, storage spool 206, and
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` 4
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`IPR2014-01175
`Patent 6,968,884 B2
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`power spool 208. Id. at 17:39–41. Power spool 208 drives rotation of lift
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`rod 26 via transmission 30, causing lift cords 16 to either wind onto or
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`unwind from lifting modules 40, thereby raising or lowering blind 10. Id. at
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`18:42–47, 26:6–16.
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`The transport system has a certain amount of system inertia caused by
`
`the mass of the covering as well as the frictional resistance of the
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`components. Id. at 58:10–13. “[W]hen the blind is in the fully raised
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`position, the available force to keep the blind in that raised position must be
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`equal to or greater than weight (gravitational force) pulling down on the
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`blind minus the system inertia which acts so as to keep the blind in the raised
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`position.” Id. at 58:16–21. “[T]he force required to keep the blind in the
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`fully lowered position must be less than the weight of the blind . . . plus the
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`system inertia which acts to keep the blind in the lowered position.” Id. at
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`58:24–28.
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`The ’884 patent also describes the use of a one-way brake to provide
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`artificial system inertia. Id. at 58:43–45. An embodiment of a one-way
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`brake is illustrated in Figure 183B below.
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` 5
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`IPR2014-01175
`Patent 6,968,884 B2
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`Figure 183B, above, is an exploded view of a one-way adjustable
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`brake module 900A. Ex. 1001, 15:29–30. Input shaft 914 of brake module
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`900A mates with a shaft of an adjacent module, e.g., transmission module
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`30. Id. at 58:64–67. Input shaft 914 drives cogged drive 916, which drives
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`output shaft 922. Id. at 60:9–11. Output shaft 922 of brake module 900A
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`connects to lift rod 26. Id. at 58:67–59:1. Toothed drive 932 is mounted
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`over cogged drive 916 and drives brake drum 926. Id. at 60:12–13. The
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`rear face of toothed drive 932 defines a plurality of inclined teeth 940, which
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`mate with corresponding inclined teeth 940A in the front face of brake drum
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`926. Id. at 59:22–25. When the blind is lowered, input shaft 914 rotates in
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`one direction causing teeth 940 of toothed drive 932 to push against teeth
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`940A of brake drum 926. Id. at 59:25–28. When the blind is raised, input
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` 6
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`Patent 6,968,884 B2
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`shaft 914 rotates in the opposite direction and toothed drive 932 does not
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`push against brake drum 926, allowing brake drum 926 to spin freely. Id. at
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`59:28–32. In other words, brake module 900A provides a force that operates
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`against the lowering of the blind, but provides no braking force when the
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`blind is being raised. Id. at 58:55–58.
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`Brake shoe 928 is urged against brake drum 926 by the force of spring
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`942. Id. at 60:15–16. Screw 944 controls the tension of spring 942, and can
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`be tightened or loosened to adjust the amount of friction between brake shoe
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`928 and brake drum 926. Id. at 60:16–18. The ’884 patent also describes an
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`alternative embodiment wherein screw 944 automatically increases friction
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`between brake shoe 928 and brake drum 926 the higher blind 10 is raised,
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`and decreases friction between brake shoe 928 and brake drum 926 the more
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`blind 10 is lowered. See id. at 59:51–62.
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`C. Illustrative Claims
`
`Of the challenged claims, claims 5 and 7 are independent. Claim 6
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`depends from claim 5. Claim 5, reproduced below, is illustrative of the
`
`claimed subject matter:
`
`5. A system for covering an architectural opening,
`comprising:
`
`a covering movable between an extended position for
`covering the opening and a retracted position for uncovering the
`opening;
`
`a spring motor including a coil spring and a power spool,
`wherein said coil spring wraps onto and off of said power
`spool;
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`a rotating output operatively connected to the power
`spool of the spring motor;
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`a lift cord operatively connected to the rotating output
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` 7
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`IPR2014-01175
`Patent 6,968,884 B2
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`and to the covering;
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`said rotating output being rotatable in clockwise and
`counterclockwise directions to move the covering between its
`extended and retracted positions; and
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`a one-way friction brake operatively connected to said
`rotating output, said one-way friction brake providing a braking
`force that stops the rotation of the rotating output in one of the
`directions while permitting the rotating output to rotate freely in
`the other of said directions.
`
`Independent claim 7 is similar to claim 5, but does not specify that the
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`spring motor includes a coil spring and a power spool. However, unlike
`
`claim 5, claim 7 includes the following clause:
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`wherein said one-way brake applies a braking force opposing
`rotation of the rotating output for movement of the covering to
`the extended position while permitting free rotation for
`movement of the covering to the retracted position.
`
`D. The Evidence of Record
`
`Petitioner’s patentability challenges are based on the following
`
`references:
`
`References
`
`Patents/Printed Publications
`
`Exhibit
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`Tachikawa
`
`Strahm
`
`Japanese Patent Application S54-38648
`(English Translation)
`US 3,327,765
`
`Skidmore
`
`GB 1,174,127
`
`Schuetz
`
`US 1,870,532
`
` 8
`
`
`
`US 2,390,826
`
`US 6,056,036
`
`US 6,293,329
`
`Cohn
`
`Todd
`
`Toti
`
`
`
`
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`IPR2014-01175
`Patent 6,968,884 B2
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`Petitioner also relies on the declaration of Lawrence E. Carlson,
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`executed July 16, 2014 (Ex. 1009, “Carlson Declaration”), and the
`
`declaration of Patrick E. Foley, excuted July 16, 2014 (Ex. 1010, “Foley
`
`Declaration”) in support of its patentability challenges. Pet. 4.
`
`E. The Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability claims 5-7 of the ’884 patent
`
`based on the following grounds:
`
`References
`
`Basis
`
`Claims challenged
`
`Tachikawa and Strahm
`
`§103
`
` 5 and 7
`
`Tachikawa, Strahm, and
`Toti
`Tachikawa, Skidmore,
`and Schuetz
`Cohn and Strahm
`
`§103
`
`§103
`
`§103
`
`Cohn, Strahm, and Todd
`
`§103
`
`Cohn, Strahm, Todd, and
`Toti
`
`
`§103
`
`6
`
`5 and 7
`
`7
`
`5
`
`6
`
`III. CLAIM CONSTRUCTION
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`Claims of an unexpired patent are interpreted using the broadest
`
`reasonable construction in light of the specification of the patent. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
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`37 C.F.R. § 42.100(b). At this stage of the proceeding, for purposes of this
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`Decision, we determine no express construction of the claim language is
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` 9
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`
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`required.
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`IPR2014-01175
`Patent 6,968,884 B2
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`IV. ANALYSIS
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`A. Obviousness of Claims 5 and 7 Over Tachikawa in View of
`Strahm
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`1. Tachikawa (Ex. 1002)
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`Tachikawa Figure 2, reproduced below, presents a vertical front,
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`cross-sectional view of a device for raising and lowering venetian blinds.
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`Ex. 1002, 1:2, 4:29–30.
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`As shown in Figure 2, above, Tachikawa’s device for raising and
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`lowering venetian blinds comprises upper case 1 having rotatable operating
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`shaft 2 mounted thereon. Id. at 2:12–13. Drums 3 are attached to multiple
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`locations on operating shaft 2. Id. at 2:14–16. Tapes 4 are wound onto
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`drums 3, passed through through-holes in blind slats 5, and coupled to lower
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`case 6. Id. at 2:14–18. Bevel gear 7 is attached to one end of operating shaft
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`2 and engages bevel gear 8. Id. at 2:18–21. Chain pulley 10 is fixed to drive
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`
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`10
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`IPR2014-01175
`Patent 6,968,884 B2
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`shaft 9 of bevel gear 8. Id. at 2:19–20. Endless chain 11 is hung on chain
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`pulley 10 and is suspended downward. Id. at 2:21–22.
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`The blinds are raised or lowered by pulling chain 11 to turn chain
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`pulley 10, thereby turning operating shaft 2 through engagement and
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`interlocking of bevel gears 7, 8. See id. at 3:1–5. When the blinds are
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`raised, tapes 4 wrap around drums 3 that turn in the same direction as
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`operating shaft 2, pulling lower case 6 and sequentially stacking slats 5 on
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`lower case 6. Id. at 3:7–9. In the closed, or lower-most position of the
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`blinds, the load is only that of lower case 6. Id. at 3:9–11. As the blinds are
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`raised, the torque required to turn operating shaft 2 increases as the load of
`
`slats 5 is applied. Id. at 3:11–14. Conversely, when the blinds are lowered,
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`the load becomes smaller, decreasing the force necessary to turn operating
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`shaft 2. Id. at 1:17–19.
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`To eliminate the problem of torque variance during operation of the
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`blinds, Tachikawa employs spring 17. See id. at 3:15–22. Spring 17 is
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`wound between drum 16 and drum 14. Id. at 3:26–28. Drum 16 is rotatably,
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`axially fitted onto center shaft 15 on support plate 12, mounted inside upper
`
`case 1. Id. at 3:22–23, 28–30. Drum 14 is fixed to shaft tube 13 (through
`
`which operating shaft 2 passes), also mounted on support plate 12. Id. at
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`3:23–28. Alternatively, drum 14 is fixed to drive shaft 9. Id. at 4:22–24.
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`[I]n response to the torque of turning the operating shaft 2
`based on the load P as the blinds are rolled up to the uppermost
`end, . . . spring 17 produces a torque T in the opposite direction
`and identical to the torque due to the load P by making
`curvature radius R small at the starting end wound onto drum
`14.
`
`Id. at 3:30–37.
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`11
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`IPR2014-01175
`Patent 6,968,884 B2
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`[A]s the blinds are rolled down, the load P decreases gradually,
`changing gradually to load p when the blinds are rolled down to
`the lowermost end, while the curvature radius of . . . spring 17
`is gradually increased from the curvature radius R of the
`starting end to the curvature radius r of the terminal end . . . so
`that a spring torque t in the opposite direction and identical to
`the torque on the operating shaft 2 due to load p is generated at
`the terminal end.
`
`Id. at 3:38–48.
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`2. Strahm (Exhibit 1003)
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`Strahm describes “a raising and lowering mechanism for a blind” that
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`includes a brake for controlling the rate of descent of the blind, the brake
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`being “automatically released during raising of the blind so that raising can
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`be performed with the minimum of effort.” Ex. 1003, 1:29–34. The blind
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`comprises a number of parallel slats 1 suspended from operating shaft 4 by
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`flexible ladders 2. Id. at 2:2–9. Operating shaft 4 can be driven by a crank
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`or a motor. Id. at 4:10–11. Pull-tapes 6, attached to bottom cross-member 5
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`of the blind, are wound around drums 11, 12, which are disposed in the
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`raising and lowering mechanism. Id. at 2:14–16, 33–34. A cross-sectional
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`view of the raising and lowering mechanism is shown in Figure 6 below. Id.
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`at 1:68–71.
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`12
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` As shown in Figure 6 above, drums 11, 12 are rigidly connected to
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`bevel gears 11’, 12’, which mesh with bevel gear 18. Ex. 1003, 2:36–40.
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`Bevel gear 18 is freely rotatable on shaft 4 and connected to drive sleeve 19
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`via helical spring 21. Id. at 2:39–42. Sleeve 32 is also freely rotatable on
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`operating shaft 4. Id. at 3:14. Ring 35 is screwed on sleeve 32 in a manner
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`that compresses conical washers 33, 36, forming a friction brake between
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`stationary wall 34 and rotatable sleeve 32. Id. at 3:19–25. Helical spring 30
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`forms a one-way coupling between drive sleeve 19 and sleeve 32 when
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`sleeve 19 rotates in the direction indicated by arrow B, corresponding to
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`lowering the blind. Id. at 3:25–30. The coupling slips when sleeve 19
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`rotates in the direction indicated by arrow A, corresponding to raising the
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`blind. Id. at 3:30–32. “The brake therefore operates only during the descent
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`of the blind and is automatically cut out of operation during the raising of
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`the blind.” Id. at 3:32–35; see also, id. at 4:32–33 (“The brake 32 is ‘off’ for
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`ascent, so that relatively little torque is required.”).
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`3. Analysis
`
`Petitioner contends Tachikawa describes a system for covering an
`
`architectural opening as recited in claims 5 and 7 with the exception of “a
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`one-way friction brake.” Pet. 23–29. Petitioner notes that Tachikawa
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`“balance[s] the blind to remain stationary” using a spring motor. Id. at 26–
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`27. Petitioner contends “[a]nother way to achieve this is to also include a
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`brake to further assist in balancing the window covering at the desired
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`position.” Id. at 27. Petitioner contends Strahm describes the use of a one-
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`way friction brake in a window covering system, the brake being capable of
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`functioning in the manner recited in claims 5 and 7. Id. at 27, 29–30.
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`Petitioner contends “[o]ne of ordinary skill in the art at the time of the 884
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`Patent could easily have combined the one-way friction brake of Strahm
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`with the venetian blind of Tachikawa.” Id. at 28; see id. at 30.
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`We agree with Patent Owner that Petitioner failed to provide
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`sufficient explanation as to why one of ordinary skill in the art would have
`
`been motivated to modify Tachikawa in view of Strahm. Prelim. Resp. 25–
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`26 (“Simply stating that these could have been ‘easily [] combined’ because
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`the Strahm brake is allegedly connected to a ‘shaft’ is far from sufficient.”).
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`Petitioner’s assertions that Tachikawa and Strahm could have been
`
`combined do not amount to an articulated reasoning with rational
`
`underpinning sufficient to establish a reasonable likelihood that Petitioner
`
`would prevail in showing the unpatentability of claims 5 and 7. See Unigene
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`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citations
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`omitted) (“Obviousness requires more than a mere showing that the prior art
`
`includes separate references covering each separate limitation in a claim”);
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`In re Chaganti, 554 F. App’x 917, 922 (Fed. Cir. 2014) (nonprecedential)
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`(“We caution the Board and the PTO that such reasons [to combine] must be
`
`clearly articulated. It is not enough to say that there would have been a
`
`reason to combine two references because to do so would ‘have been
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`obvious to one of ordinary skill.’ Such circular reasoning is not sufficient.”
`
`(internal citation omitted)). In addition, Petitioner has not explained
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`adequately why one of ordinary skill in the art would have added Strahm’s
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`one-way friction brake to Tachikawa’s system, given Petitioner’s statement
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`that Tachikawa’s spring motor already achieves the same effect as a brake in
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`that it balances a window covering to maintain stationary. See Pet. 27.
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`For the above reasons, Petitioner has not shown a reasonable
`
`likelihood it would prevail in showing claims 5 and 7 would have been
`
`obvious in view of Tachikawa and Strahm.
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`B. Obviousness of Claims 5 and 7 Over Tachikawa in View of
`Skidmore and Schuetz
`
`1. Skidmore (Ex. 1004)
`
`Skidmore describes a cord drive arrangement for venetian blinds
`
`whereby a single cord is used for both raising/lowering and tilting the slats.
`
`Ex. 1004, 1:70–74. Skidmore Figure 4, below, is a horizontal section taken
`
`through part of head member 11 of the Figure 1 venetian blind, showing the
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`cord drive arrangement. See id. at 2:27–37.
`
`
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`As shown in Figure 4, above, the cord drive arrangement includes
`
`gear box 12, having input driving pulley 14 mounted on input shaft 13. Id.
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`at 2:43–45. To raise and lower slats 41of the venetian blind, endless cord 15
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`15
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`is operated to rotate driving pulley 14. Id. at 2:112–115. Driving pulley 14,
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`in turn, rotates tape winding drum 16 via spur gears 17, 18, shaft 19, and
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`spur gears 21, 22, 23, spur gear 22 being free to rotate on shaft 13 on bearing
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`24. Id. at 2:60–64. Lifting tapes 27, 28 extend from head member 11 to
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`bottom stick 34 of the venetian blind, and wind onto or off of tape winding
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`drum 16 to raise or lower bottom stick 34, whereby slats 41 are also raised
`
`or lowered. Id. at 2:115–120. Friction brake member 42 is used to prevent
`
`slats 41 and bottom stick 34 from falling due to their weight when in a raised
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`position Id. at 2:121–128.
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`
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`2. Schuetz (Ex.1005)
`
`Schuetz describes a friction brake for use with “a worm drive used in
`
`connection with hoisting apparatus.” Ex. 1005, p. 1, ll. 1–5. According to
`
`Schuetz, the brake “will act instantly to resist the reverse-rotation of the
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`worm shaft when the hoist drum is under load.” Id. at ll. 9–11.
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`3. Analysis
`
`As in its challenge based on Tachikawa and Strahm (Section IV.A.3.,
`
`above), Petitioner relies on Tachikawa for a description of the features
`
`recited in claims 5 and 7 with the exception of “a one-way friction brake.”
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`Pet. 39–46. Petitioner notes that Tachikawa “balance[s] the blind to remain
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`stationary” using a spring motor, and, similar to its challenge based on
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`Tachikawa and Strahm, contends a friction brake, as used by Skidmore for
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`holding a window covering at a desired position, is “[a]nother way to
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`achieve this.” Id. at 41. Petitioner acknowledges Skidmore does not
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`disclose a “one-way” friction brake as required by claims 5 and 7, but
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`contends Schuetz uses a one-way friction brake for a rotary shaft to address
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`the same technical issue as Skidmore. Id. Petitioner contends “Schuetz’s
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`16
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`IPR2014-01175
`Patent 6,968,884 B2
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`one-way friction brake corresponds to and discloses the one-way friction
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`brake of Claim 5” and “[o]ne of ordinary skill in the art at the time of the
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`884 Patent could easily have combined the one-way friction brake of
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`Schuetz with the venetian blind of Tachikawa.” Id. at 42–43; see also id. at
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`44–45 (wherein Petitioner makes similar arguments as to claim 7).
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`For the same reasons discussed above in connection with Petitioner’s
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`challenge based on Tachikawa and Strahm (Section IV.A.3.), Petitioner has
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`not shown a reasonable likelihood it would prevail in showing claims 5 and
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`7 would have been obvious over Tachikawa in view of Skidmore and
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`Schuetz, namely: (1) Petitioner’s assertions that Tachikawa and Schuetz
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`could have been combined does not articulate a reason to combine; and
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`(2) Petitioner has not explained adequately why one of ordinary skill in the
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`art would have added Schuetz’s one-way friction brake to Tachikawa’s
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`system, given Petitioner’s statement that Tachikawa’s spring motor already
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`achieves the same effect as Skidmore’s brake in balancing a window
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`covering to maintain stationary, see Pet. 41.
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`C. Obviousness of Claim 7 Over Cohn in View of Strahm
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`1. Cohn (Ex. 1006)
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`Cohn describes a cordless venetian blind. Ex. 1006, title. Cohn
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`Figure 1 is a fragmentary, front elevational view of the venetian blind. Id. at
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`1, right col., ll. 1–2. An upper portion of Figure 1 is reproduced below.
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`17
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`IPR2014-01175
`Patent 6,968,884 B2
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`As shown in Figure 1, above, Cohn’s venetian blind A includes drums
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`8 mounted on shaft 7. Id. at 1, right col., ll. 36–37. Flexible metal lift tapes
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`10 are wound on drums 8 (id. at ll. 39–40) and connected to bottom rail 13,
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`for raising and lowering slats 17 (id. at 2, left col., ll. 3–6). “[T]o lower the
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`blind, a person merely grasps [] bottom rail 18 and pulls it
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`downwardly[,] . . . effect[ing] an unreeling of [] lift tapes 10 from [] drums 8
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`and caus[ing] rotation of said drums and [] shaft 7, upon which they are
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`mounted.” Id. at 3, left col., ll. 43–48. “The blind may be stopped and
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`maintained at any desired height . . . by suitable means, such as centrifugal
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`pawl stops [43].” Id. at 3, right col., ll. 1–3. To raise the blind from a
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`lowered position, pawl stops 43 must be released (id. at ll. 20–21) to allow
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`spring motor 20 to raise the blind (id. at 3, left col., ll. 16–17). This is
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`accomplished by a quick downward pull followed by a sudden relaxing of
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`the pull “in the well known manner used in operating conventional window
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`shades.” Id. at 3, right col., ll. 22–24.
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`Spring motor 20 includes casing 49 having at least one cup-shaped
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`housing 51 contained therein and connected to shaft 7. Id. at 3, left col., ll.
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`18
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`IPR2014-01175
`Patent 6,968,884 B2
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`22–23, 49–51; see id. at 3, right col., ll. 37–41. Flat coil spring 54, disposed
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`spirally within cup-shaped housing 51, has an outer end secured to cup-
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`shaped housing 51 and an inner end secured to casing 49 via hub 55. Id. at
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`3, left col., ll. 27–31. As the blind is lowered, lift tapes 10 unreel from
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`drums 8, causing rotation of drums 8 and shaft 7. Id. at ll. 45–48. Rotation
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`of shaft 7 causes rotation of cup-shaped housing 51, exerting a winding force
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`on the outer coils of spring 54, the winding force being transferred to the
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`inner coils with continued rotation. Id. at ll. 51–54. Conversely, when pawl
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`stops 43 are released to raise the blind, the loose outer coils of spring 54
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`unwind first to prevent the blind from rising too quickly, allowing an even
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`and uniform flow of power throughout the raising of the blind. Id. at 3, right
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`col., ll. 29–36.
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`2. Analysis
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`Petitioner contends Cohn describes a system for covering an
`
`architectural opening as recited in claim 7, with the exception of “a one-way
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`friction brake.” Pet. 57–58. Petitioner notes Cohn states that the blind may
`
`be stopped and maintained at any desired height using suitable means. Id. at
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`58 (quoting Ex. 1006, 3, right col., ll. 1–3). Petitioner contends Strahm’s
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`one-way friction brake is “a suitable means to provide braking force” in a
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`window cover system such as Cohn’s. See id. Petitioner further contends
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`Strahm’s one-way friction brake is capable of functioning in the manner
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`recited in claim 7. Id. at 58–59. Petitioner thus contends it would have been
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`obvious to one of ordinary skill in the art to use Strahm’s one-way friction
`
`brake to retain Cohn’s window covering at its intended position. See id. at
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`47–48.
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`Patent Owner argues Petitioner has not explained sufficiently why one
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`19
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`of ordinary skill in the art would have combined Cohn and Strahm. Prelim.
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`Resp. 33. Patent Owner further argues Petitioner has not explained how the
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`multiple components required for proper functioning of Strahm’s one-way
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`brake would be incorporated into Cohn’s system. Id. at 34. Patent Owner
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`also contends Strahm describes its friction brake as merely slowing rotation
`
`of the blind and, therefore, it would not be suitable for stopping and
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`maintaining Cohn’s blind at a desired height. Id.
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`Patent Owner’s arguments are not persuasive. “A determination of
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`obviousness based on teachings from multiple references does not require an
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`actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
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`1332 (Fed. Cir. 2012). “If a person of ordinary skill can implement a
`
`predictable variation, §103 likely bars its patentability.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398,417 (2007).
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`Cohn states that “suitable means” may be used to hold the described
`
`venetian blind, and Strahm describes a friction brake for controlling descent
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`of a venetian blind. Ex. 1006, 3, right col., ll. 1–3; Ex. 1003, 1:30–31, 3:32–
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`35. At this stage of the proceeding, for purposes of this decision, these
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`disclosures provide sufficient support for Petitioner’s contention that one of
`
`ordinary skill in the art would have considered Strahm’s friction brake a
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`suitable means for stopping and maintaining Cohn’s venetian blind, and
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`found implementation of Strahm’s friction brake in Cohn’s device to be
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`nothing more than a predictable variation of Cohn’s pawl stops 43.
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`Although Strahm does not explicitly describe using its friction brake to hold
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`the blind at a specific height, on the record before us, there is no argument or
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`evidence to refute Petitioner’s contention that Strahm’s one-way friction
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`brake would be “capable of providing a braking force that stops the rotation
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`20
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`Patent 6,968,884 B2
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`of the rotating shaft [] in one direction.” Pet. 54, 56–59.
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`In sum, based on the discussion above and the further arguments in
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`the Petition, we are persuaded that, on this record, Petitioner has
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`demonstrated a reasonable likelihood it would prevail on the ground that
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`claim 7 would have been obvious over Cohn in view of Strahm.
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`D. Obviousness of Claim 5 Over Cohn in View of Strahm and Todd
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`As noted in Section II.C, above, independent claims 5 and 7 both
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`recite “a spring motor.” However, only claim 5 specifies that the spring
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`motor “include[es] a coil spring and a power spool.” Ex. 1001, claim 5.
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`Petitioner relies on Todd for a disclosure of this feature. See Pet. 51.
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`1. Todd (Exhibit 1007)
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`Todd describes a roller shade for a window that includes shade 14
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`extending between and secured to upper rail assembly 16 and lower rail
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`assembly 12. Ex. 1007, 3:64–65, 4:3–4. Upper rail assembly 16 includes
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`decorative top rail 18, mounted within window frame 22, and drive
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`mechanism 20 housed in top rail 18. Id. at 3:65–4:2, 4:8–10, Fig. 1. Shade
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`14 is operatively connected to shaft 30. See id. at 6:29–34. Retraction of
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`shade 14 is effected by drive mechanism 20 which includes constant torque
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`spring 58, pre-loaded to apply enough tension to shaft 30 to support shade
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`14 when it is in a fully retracted position. Id. at 5:50–52, 6:29–34. More
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`specifically, spring 58 includes an end 72 which is received within opening
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`74 of spring take-up spool 56, mounted on shaft 30. Id. at 5:40–41, Fig. 6.
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`As shaft 30 turns in a counter-clockwise direction during extension of shade
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`14, spring 58 is drawn upon take-up spool 56. Id. at 5:41–45, 6:10–15.
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`Shade 14 is locked in position at a desired height by one-way operation of
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`brake/ clutch mechanism 28. Id. at 5:53–55. When brake/clutch mechanism
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`21
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`IPR2014-01175
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`28 is released, spring 58 winds back upon itself, exerting a force causing
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`shaft 30 to rotate in a clockwise direction to raise shade 14. Id. at 4:46–50.
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`2. Analysis
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`Petitioner contends Cohn describes a system for covering an
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`architectural opening as recited in claim 5 with the exception of a spring
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`motor “including a coil spring and a power spool” and “a one-way friction
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`brake.” Pet. 50–55. Similar to its challenge as to claim 7 based on Cohn
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`and Strahm (Section IV.C.2, above), Petitioner contends it would have been
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`obvious to one of ordinary skill in the art to use Strahm’s one-way friction
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`brake to retain Cohn’s window covering at its intended position. Pet. 47–48.
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`With respect to the claim 5 limitations relating to the spring motor,
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`Petitioner contends Todd describes the use of a spring drive mechanism, as
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`claimed, to assist in raising and lowering a window covering. Id. at 48, 51.
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`Petitioner maintains Todd’s spring drive mechanism 20 is “operationally
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`equivalent” to Cohn’s clock spring motor 20. Id. at 51. Petitioner contends
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`“[i]t would [have been] obvious to one of ordinary skill in the art to employ
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`the spring drive mechanism of Todd in the cordless Venetian blind of Cohn
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`if one desired such a spring motor design having a power spool, as that of
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`Todd.” Id.
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`On this record, Petitioner has not identified sufficient evidence to
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`support its contention that Todd’s spring drive 20 is operationally equivalent
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`to Cohn’s clock spring motor 20. Cohn’s spring 54 prevents a blind from
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`rising too quickly, allowing an even and uniform flow of power throughout
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`the raising of the blind. Ex. 1006 , p. 3, right col., ll. 29–36. Todd uses
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`spring 58 to retract shade 14, but additionally requires brake shoes which
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`exert centrifugal braking along shaft 30 to effect a constant and controlled
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`IPR2014-01175
`Patent 6,968,884 B2
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`retraction
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