DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`NORMAN INTERNATIONAL, INC.
`
`Petitioner
`
`v.
`
`HUNTER DOUGLAS, INC.
`Patent Owner
`
`_________________________
`
`CASE: To Be Assigned
`
`Patent No. 6,968,884 B2
`
`_________________________
`
`DECLARATION OF PATRICK E. FOLEY
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,968,884 B2
`
`LEGAL122737632.6
`
`Norman Int. Exhibit 1010
`
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`NORMAN INTERNATIONAL, INC.
`
`Petitioner
`
`v.
`
`HUNTER DOUGLAS, INC.
`Patent Owner
`
`_________________________
`
`CASE: To Be Assigned
`
`Patent No. 6,968,884 B2
`
`_________________________
`
`DECLARATION OF PATRICK E. FOLEY
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 6,968,884 B2
`
`LEGAL122737632.6
`
`Norman Int. Exhibit 1010
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`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 ...................................... 7
`IV. STATEMENT OF LEGAL PRINCIPLES ...................................................... 7
`A. Obviousness ........................................................................................... 7
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`V.
`VI. THE RELEVANT PRIORITY DATE .......................................................... 11
`VII. TECHNOLOGY BACKGROUND OF CLAIMED SUBJECT MATTER OF
`THE 884 PATENT ........................................................................................ 11
`VIII. REASONS TO COMBINE TACHIKAWA, STRAHM, SKIDMORE,
`SCHUETZ, COHN, TODD, AND TOTI ...................................................... 15
`A.
`Tachikawa, Strahm, Skidmore, Schuetz, Cohn, Todd, and Toti Are
`Analogous Art ..................................................................................... 16
`B. A Person Having Ordinary Skill Would Have Combined Tachikawa,
`Strahm, Skidmore, Schuetz, Cohn, Todd, and Toti ............................ 22
`
`LEGAL122737632.6
`
`-i-
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`Norman Int. Exhibit 1010
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Patrick E. Foley. A mechanical engineer by training and
`
`by profession, I am an Engineering Manager with Blount International, Inc., a
`
`global manufacturer and marketer of replacement parts, equipment, and accessories
`
`for various applications and industries including forestry, farm, and agriculture.
`
`The business of Blount International, Inc. is outside of technologies for window
`
`blinds and coverings. I am submitting this declaration as an independent
`
`consultant.
`
`2.
`
`I have been engaged by Norman International, Inc. (“Norman”) to
`
`investigate and opine on certain issues relating to U.S. Patent No. 6,968,884 B2
`
`entitled “MODULAR TRANSPORT SYSTEM FOR COVERINGS FOR
`
`ARCHITECTURAL OPENINGS” (“884 Patent”) and three other patents, U.S.
`
`Patent Nos. 6,283,192 B1, 6,648,050 B1, and 8,230,896 B2. I understand those
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`four patents are being asserted against Norman and other entities in an on-going
`
`patent infringement lawsuit brought by Hunter Douglas, Inc. in Hunter Douglas,
`
`Inc. et al. v. Nien Made Enterprise Co., Ltd. et al., Case No. 1:13-cv-01412-MSK-
`
`MJW filed in the U.S. District Court of Colorado on May 31, 2013.
`
`3.
`
`In this declaration, I will discuss the technology related to the 884
`
`Patent, including an overview of that technology as it was known by March 23,
`
`LEGAL122737632.6
`
`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`1999, which I understand is the earliest filing date to which the 884 Patent may
`
`claim priority.
`
`4.
`
`This declaration is based on the information currently available to me.
`
`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
`
`testimony from depositions that may not yet be taken.
`
`II.
`
`SUMMARY OF OPINIONS
`
`5.
`
`The 884 Patent describes technology related to window covers,
`
`specifically including spring motors and brakes involving basic mechanical design
`
`components. I understand Norman is requesting that the Patent Office review the
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`patentability of Claims 5-7 of the 884 Patent and cancel those claims in light of
`
`prior art.
`
`6.
`
`I was asked by Norman’s counsel to analyze the following prior art
`
`references:
`
`(cid:120) Japanese Unexamined Patent Application Publication S54-38648
`to Tachikawa (“Tachikawa”);
`
`(cid:120) U.S. Patent No. 3,327,765 to Strahm (“Strahm”);
`
`(cid:120) British Patent No. 1,174,127 to Skidmore (“Skidmore”);
`
`(cid:120) U.S. Patent No. 1,870,532 to Schuetz (“Schuetz”);
`
`-2-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`(cid:120) U.S. Patent No. 2,390,826 to Cohn (“Cohn”);
`
`(cid:120) U.S. Patent No. 6,056,036 to Todd et al. (“Todd”); and
`
`(cid:120) U.S. Patent No. 6,293,329 to Toti (“Toti”).
`
`7.
`
`I understand that copies of the Tachikawa, Strahm, Skidmore,
`
`Schuetz, Cohn, Todd, and Toti prior art references are attached as Exhibits 1002-
`
`1008 to a petition by Norman for inter partes review of the 884 Patent.
`
`8.
`
`Based on my review of the evidence and facts, it is my opinion that
`
`Tachikawa, Strahm, Skidmore, Schuetz, Cohn, Todd, and Toti are in the same field
`
`of endeavor as the claimed subject matter in the 884 Patent. It is also my opinion
`
`that a person having ordinary skill in the art at the time of the earliest possible
`
`priority date of the claimed subject matter in the 884 Patent—March 23, 1999—
`
`would have had reasons and motivations to combine these prior art references.
`
`These references disclose well-known elements in the art that are closely related to
`
`common technical features in window blinds and thus could be combined, in the
`
`eyes of a person having ordinary skill in the art of window blinds and coverings, to
`
`yield predictable results.
`
`9.
`
`I understand that another expert, Professor Lawrence Carlson, has
`
`determined that the claimed combination in each of Claims 5-7 of the 884 Patent
`
`contain nothing novel or inventive and that those claims are unpatentable and
`
`-3-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`invalid under the patentability standard of 35 U.S.C. § 103 in view of various
`
`combinations of Tachikawa, Strahm, Skidmore, Schuetz, Cohn, Todd, or Toti.
`
`10.
`
`The subsequent sections of this declaration will first provide my
`
`qualifications and experience and then describe details of my analysis and
`
`observations.
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A.
`
`11.
`
`Education and Work Experience
`
`I received a Bachelor of Science in Mechanical Engineering from
`
`North Carolina State University in 1993. I also participated in the New Product
`
`Development program offered by the Massachusetts Institute of Technology Sloan
`
`School of Management in 2007.
`
`12.
`
`I have worked as a mechanical engineer for more than 20 years in
`
`several industries. After graduation I first worked as an R&D Machine Design
`
`Engineer for Unifi, Inc. from 1993 to 2001. After that I was a Research and
`
`Development Engineering Manager for the Consumer Product Development Group
`
`with Newell Rubbermaid, Inc. and Newell Window Furnishings, Inc. (“Newell
`
`Rubbermaid”) from 2001 to 2010. I then served as a Mechanical Engineering
`
`Manager with Thermo Fisher Scientific from 2010 to 2013, at which time I began
`
`my current position as an Engineering Manager with Blount International, Inc. A
`
`true and accurate copy of my resume is included in Attachment A.
`
`-4-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`13. While I was with Newell Rubbermaid, I directed a team of five
`
`engineers in new product design for consumer products, including window
`
`coverings. My work included research and design of new cellular shade and
`
`cordless shade and blind products for window covering applications. In
`
`connection with that work, I researched and designed cordless cellular shade
`
`products. This included in-depth work on cordless window covering designs that
`
`were based on the work of Mr. Otto Kuhar. Mr. Kuhar is a named inventor of
`
`various patents on window covering technologies, including, among others: (1)
`
`Patent No. 5,482,100 for “Cordless, Balanced Venetian Blind or Shade with
`
`Consistent Variable Force Spring Motor”; (2) Patent No. 4,982,776 for “Cord Lock
`
`for a Venetian Blind or a Shade”; (3) Patent No. 5,143,135 for “Low Profile
`
`Headrail Venetian Blind”; (4) Patent No. 5,531,257 for “Cordless, Balanced
`
`Window Covering”; (5) Patent No. 6,491,084 for “Bottom Rail Weight and
`
`Balancing System”; and (6) Patent No. 7,503,370 for “Cordless Balanced Window
`
`Covering.” True and accurate copies of these patents are attached as Attachments
`
`B-G.
`
`14.
`
`In my work at Newell Rubbermaid I became intimately familiar with
`
`the state of the art in window coverings, generally, and cordless window coverings,
`
`specifically. Part of my job was to become educated on new designs and product
`
`-5-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`offerings, which included research into various alternatives for the mechanics of
`
`cordless window coverings. My work included research into designs, products,
`
`and patents known in the field in and prior to 1997, as many of the designs and
`
`products were still on the market, and certain patents that predated 1997 would
`
`have still been in force during my tenure at Newell Rubbermaid.
`
`15.
`
`I am a named inventor of four United States patents that relate to
`
`window coverings: (1) Patent No. 8,256,333 issued September 4, 2012, entitled
`
`“Window Covering Sizing Method and Apparatus”; (2) Patent No. 8,087,445
`
`issued January 3, 2012, entitled “Spring Motor and Window Covering”; (3) Patent
`
`No. 7,721,782 issued May 25, 2010, entitled “Arched Window Covering”; and (4)
`
`Patent No. 7,048,028 issued May 23, 2006, entitled “Mounting Bracket and
`
`Headrail Assembly.” U.S. Patent No. 8,087,445 claims an invention for an
`
`improvement on a spring motor unit for cordless shades.
`
`B.
`
`16.
`
`Compensation
`
`I am being compensated at the rate of $250 per hour for the services I
`
`am providing in this case. The compensation is not contingent upon my
`
`performance, the outcome of this inter partes review or any other proceeding, or
`
`any issues involved in or related to this inter partes review.
`
`-6-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`C.
`
`17.
`
`Documents and Other Materials Relied Upon
`
`The documents on which I rely for the opinions expressed in this
`
`declaration are the 884 Patent, the prior art references and information discussed in
`
`this declaration, and any other references specifically identified in this declaration,
`
`in their entirety, even if only portions of those documents are discussed in an
`
`exemplary fashion. I also rely on my own experience and expertise in the relevant
`
`technologies and systems that were already in use prior to, and within the time of
`
`the earliest possible priority date of the claimed subject matter in the 884 Patent—
`
`March 23, 1999.
`
`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
`
`discloses less than all of the limitations of a given patent claim, that patent claim is
`
`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
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`relevant art. I understand that obviousness can be based on a single prior art
`
`reference or a combination of references that either expressly or inherently disclose
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`-7-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`all limitations of the claimed invention. Prior art also includes the understanding
`
`of one of ordinary skill in the art.
`
`19. Norman’s counsel has explained that prior art needs to be either (a) in
`
`the same field of endeavor as the claimed invention, even if it addresses a different
`
`problem than the claimed invention, or (b) reasonably pertinent to the problem
`
`faced by the inventor, even if it is not in the same field of endeavor as the claimed
`
`invention. I understand that prior art is reasonably pertinent to the problem when it
`
`would have logically presented itself to an inventor’s attention in considering the
`
`problem. Norman’s counsel has also explained that in a simple mechanical
`
`invention, a broad spectrum of prior art must be explored, and it is reasonable to
`
`inquire into other areas where one of ordinary skill in the art would be aware that
`
`similar problems exist, including where other areas have inventions with similar
`
`structure and function.
`
`20.
`
` Norman’s counsel has also explained that a conclusion of
`
`obviousness can be supported by a number of reasons. Obviousness can be based
`
`on inferences, creative steps, and even routine steps and ordinary ingenuity that an
`
`inventor would employ. A conclusion of obviousness can be supported by
`
`combining or substituting known elements according to known methods to yield
`
`predictable results, or by using known techniques to improve similar devices in the
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`-8-
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`Norman Int. Exhibit 1010
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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. 6,968,884 B2
`
`same way, or by trying predictable solutions with a reasonable expectation of
`
`success, among other reasons.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`21.
`
`I understand from Norman’s counsel that the claims and specification
`
`of a patent must be read and construed through the eyes of a person of ordinary
`
`skill in the art at the time of the priority date of the claims. I have also been
`
`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
`
`encountered by those working in the field and prior art solutions thereto; (b) the
`
`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the
`
`field; and (d) the educational level of the inventor.
`
`22.
`
`The relevant technologies to the 884 Patent are basic mechanical
`
`design components utilized in window coverings, including spring motors and
`
`brakes. This is consistent with, and is reflected by, the title, abstract, specification,
`
`and drawings of the 884 Patent.
`
`23.
`
`The technical problems encountered in these types of systems are
`
`basic mechanical design issues that the 884 Patent attempts to address with various
`
`-9-
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`Norman Int. Exhibit 1010
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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. 6,968,884 B2
`
`mechanical design components, including spring motors and brakes. This again is
`
`consistent with the 884 Patent read in light of my experience.
`
`24. Based on my review of the 884 Patent, it is my opinion that the
`
`technology in the 884 Patent reflects well-known components, modules, and
`
`designs for window coverings. The disclosed systems utilize basic mechanical
`
`components, such as springs, spring motors, brakes, power spools, outputs, and lift
`
`cords. The features in the 884 Patent are routine and conventional features, were
`
`designed for providing well-known functions or solving commonly recognized
`
`operational issues in window blinds and coverings, and were used commercially
`
`for many years in window blind and covering products.
`
`25.
`
`In my experience, many active workers in the field of window blinds
`
`and coverings had a degree in mechanical or textile engineering or had extensive
`
`experience in mechanical devices or systems. I am not currently aware of the
`
`named inventor’s educational background.
`
`26. Based on the above considerations and factors, it is my opinion that a
`
`person having ordinary skill in the art would have an associate’s degree or a
`
`bachelor’s degree in mechanical engineering, textile engineering, or a related field
`
`involving mechanical design coursework and a few years of working experience in
`
`the area of mechanical design. This description is approximate, and additional
`
`-10-
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`Norman Int. Exhibit 1010
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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. 6,968,884 B2
`
`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.
`
`VI. THE RELEVANT PRIORITY DATE
`
`27.
`
`I have been advised by Norman’s counsel that the earliest potential
`
`priority date for the claims of the 884 Patent is the filing date of the earliest
`
`application to which the 884 Patent claims priority, which I have been informed is
`
`March 23, 1999. This date is indicated on the cover page under “Related U.S.
`
`Application Data” of the 884 Patent.
`
`VII. TECHNOLOGY BACKGROUND OF CLAIMED SUBJECT
`MATTER OF THE 884 PATENT
`
`28. Window covering technology generally involves basic principles of
`
`mechanical design. The components discussed in the 884 Patent, including spring
`
`motors and friction brakes, have been well known individually and in various
`
`combinations long before 1999.
`
`29. Before 1999, it was well known that various types of springs,
`
`including coil springs, constant force springs, and flat springs, could be utilized in
`
`a variety of applications with predictable results. For example, Mr. Otto Kuhar,
`
`filed a patent application on April 6, 1994, which later issued as U.S. Patent No.
`
`5,482,100 (the “100 Patent”) on January 9, 1996, entitled “Cordless, Balanced
`
`-11-
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`Norman Int. Exhibit 1010
`
`
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`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`Venetian Blind or Shade with Consistent Variable Force Spring Motor.” A true
`
`and correct copy of the 100 Patent is included in Attachment B. Mr. Kuhar’s
`
`patent shows a flat spring in the cordless window covering in Figure 2. As
`
`explained in the Abstract, the 100 Patent discloses “one or more constant variable
`
`force spring motors” in a lift system for a window covering. (100 Patent at
`
`Abstract.) And in his patent issued in 1945, Cohn disclosed a spiral spring for use
`
`in a Venetian blind. (Cohn at p4:25.)
`
`30.
`
`The 884 Patent also describes “one-way friction brakes,” which were
`
`well-known in the art. (884 Patent at 69:21.) In a rotational system, a brake
`
`absorbs or transfers the energy of the rotation to slow or stop the machine or part
`
`of the machine to a desired location. More specifically, a friction brake absorbs or
`
`transfers the energy through surface resistance (commonly called friction). The
`
`884 Patent describes a one-way friction brake as one that applies a frictional
`
`braking force against a rotational motion of the rotating output in one rotational
`
`direction and insubstantial frictional braking force in the other direction, so that the
`
`rotational motion will slow in one direction but run more freely in the other
`
`direction. Those types of brakes, and the predictability of their results in many
`
`uses, were well-known in the art long before 1999. In a spring-balanced rotational
`
`system, like a spring drive in a window covering application, it is inherent that the
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`-12-
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`Norman Int. Exhibit 1010
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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. 6,968,884 B2
`
`force is biased in one direction, eliminating the need for a two-way brake. A one-
`
`way brake, therefore, is a sufficient and obvious component to one of ordinary skill
`
`in the art in 1999.
`
`31. By the same date, a person of ordinary skill in the art likewise knew
`
`and understood the necessity of combining various basic mechanical components
`
`(including spring motors and friction brakes) to achieve lift, stop, and otherwise
`
`manipulate objects like window coverings.
`
`In fact, the 884 Patent is based on the
`
`premise that various general mechanical components can be included or not
`
`included in window covering systems depending on the particular application.
`
`(884 Patent at 4:11-16 (“It is important to note that a particular blind transport
`
`system may include more than one of any of these groups [of mechanical
`
`components], and it may also be that any one or more of these groups are absent in
`
`a particular blind transport system.”).) Indeed, the 884 Patent cites various general
`
`mechanical component prior art references outside of the window covering
`
`context. (884 Patent at 1 (listing as “References Cited,” for example, U.S. Patent
`
`Nos. 3,194,343 (generic spring motor); 3,358,612 (towing device); 3,984,063 (seat
`
`belt retractor); and 4,433,765 (spring clutch).)
`
`32.
`
`Further, based on my work on window covering designs, I would
`
`expect a person of ordinary skill in the art at the time to have broadly researched
`
`-13-
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`Norman Int. Exhibit 1010
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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. 6,968,884 B2
`
`available publications (including published patents and patent applications) and
`
`products for inspiration. This would include not only investigating current and
`
`prior designs of window coverings, but also looking at products and systems in
`
`other industries that used similar mechanical components. Basic mechanical
`
`components, such as gears, cords and pulleys, shafts, transmissions, spools, cranks,
`
`and brake devices were known elements used by known methods to achieve
`
`predictable results with an expectation of success. For example, spring drive units
`
`or spring motors and associated transmission designs for transferring or regulating
`
`rotation motion caused by springs were and continue to be ubiquitous and common
`
`mechanical devices used in a range of window blinds and coverings on the market
`
`and in many other 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 window coverings and similar or related designs in other
`
`applications. For instance, my colleagues and I researched toys with spring drives,
`
`tape measures, awnings, garage door openers, sails, and one-way bearings.
`
`33. Combinations of these mechanical components were known in the art
`
`before March 23, 1999. The prior art references mentioned in this declaration are
`
`just some of the examples.
`
`-14-
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`Norman Int. Exhibit 1010
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`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`VIII. REASONS TO COMBINE TACHIKAWA, STRAHM, SKIDMORE,
`SCHUETZ, COHN, TODD, AND TOTI
`
`34.
`
`It is my opinion that a person having ordinary skill in the art would
`
`have identified Tachikawa, Strahm, Skidmore, Schuetz, Cohn, Todd, and Toti as
`
`relevant art and had reason to combine the known elements in these publications
`
`before the earliest possible priority date of the claimed subject matter in the 884
`
`Patent, March 23, 1999.
`
`35.
`
`Tachikawa is a late 1970’s patent application on spring drive designs
`
`and related transmission mechanisms for raising and lowering venetian-type
`
`window blinds, published 20 years before the 884 Patent’s earliest possible priority
`
`date. Tachikawa is based on inventions made in Japan and initial patent
`
`applications at the Japanese Patent Office.
`
`36.
`
`Strahm is a 1967 United State patent relating to using springs, brakes,
`
`and other mechanical components to raise and lower venetian blinds, issued 32
`
`years before the 884 Patent’s earliest possible priority date.
`
`37.
`
`Skidmore is a 1969 British patent related to lifting mechanisms with
`
`gear transmissions and a friction brake for raising or lowering venetian blinds
`
`against gravity, published 30 years before the 884 Patent’s earliest priority date.
`
`38.
`
`Schuetz is a 1929 United States patent discussing braking
`
`mechanisms, issued 70 years before the 884 Patent’s earliest priority date.
`
`-15-
`
`Norman Int. Exhibit 1010
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`39. Cohn is a 1945 United States patent about a cordless Venetian blind,
`
`issued 54 years before the 884 Patent’s earliest priority date.
`
`40.
`
`Todd is a 2000 United States patent disclosing a window covering
`
`system including a spring assembly and a brake and clutch. Although issued in
`
`2000, Todd is based on an application filed on May 1, 1997.
`
`41.
`
`Toti is a 2001 United States patent discussing using a spring-based
`
`window covering system along with a transmission. Toti is based on an
`
`application filed on December 11, 1997, which was a continuation-in-part of an
`
`application filed on November 4, 1997.
`
`42.
`
`The teachings in Tachikawa, Strahm, Skidmore, Schuetz, Cohn, Todd,
`
`and Toti, therefore, reflect the state of the technology in spring motors and friction
`
`brakes years, and sometimes decades, before March 23, 1999.
`
`A.
`
`Tachikawa, Strahm, Skidmore, Schuetz, Cohn, Todd, and Toti
`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 both the 884
`
`Patent and Tachikawa recognize the importance of being able to manipulate the
`
`covering with only a small amount of force, as well as accommodating for the
`
`-16-
`
`Norman Int. Exhibit 1010
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`difficulty of applying the correct amount of force as blinds are raised and lowered,
`
`so that the blind may be easily and precisely moved to the desired position. (884
`
`Patent at 1:19-64 (noting that “progressively more force is required to continue to
`
`raise the blind” as more slats are stacked); Tachikawa at 1:9-10 (“gradually
`
`increasing change in the load as the blinds are rolled up”), 2:7-10 (invention aimed
`
`so that “blinds do not fall spontaneously”).) The 884 Patent and Tachikawa
`
`likewise recognize the use of constant force spring technology to achieve
`
`functioning window coverings. (884 Patent at 69:10-15, 69:37-39 (claiming a
`
`spring motor); Tachikawa at 1:3-12 (scope of patent claim includes a constant
`
`force spring)). Tachikawa is therefore in the same field of endeavor as the 884
`
`Patent and identifies and addresses a similar problem.
`
`44.
`
`Strahm is entitled “Venetian Blinds” and “relates to a slatted blind
`
`comprising a flexible pull member to which a bottom cross-member of the blind is
`
`suspended and which is wound around a drum rotatable to either hand to raise and
`
`lower the blind,” as well as a “brake which operates to brake the rate of descent of
`
`the blind, so that it can be lowered in a controlled manner, but which is
`
`automatically released during raising of the blind so that raising can be performed
`
`with the minimum of effort.” (Strahm at 1:9-14, 1:27-34.) As I note above, the 884
`
`Patent likewise relates to the mechanical movement of window coverings,
`
`-17-
`
`Norman Int. Exhibit 1010
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`including similar goals of preventing the coverings from undesirably falling out of
`
`place. (884 Patent at 57:63-60:55 (discussing brake); Strahm at 1:9-14 (brake to
`
`allow blind to be lowered in a controlled manner); Strahm at 4:32-56 (brake is off
`
`on ascent and then the coupling disengages automatically so that the pull tapes
`
`cannot be overloaded)). In fact, Strahm expressly references a “friction brake”
`
`(Strahm at 3:22-25), which the 884 Patent claims years later (884 Patent at 69:21).
`
`Strahm also compares to the 884 Patent in that both expressly aim to prevent pull
`
`cords from being tangled. (Strahm at 1:52-55; 884 Patent at 52:32-34) Further,
`
`like the 884 Patent, Strahm achieves its goals in a similarly basic way, by utilizing
`
`well-known mechanical components, such as springs, slats, lift, rotating shaft, and
`
`a drive mechanism (e.g., motor) that rotates the shaft, all of which could be applied
`
`and combined by a person of ordinary skill in the art in various ways to achieve
`
`predictable results. (Strahm at 4:10-11, 5:13, 5:28, 5:36.) I therefore conclude that
`
`Strahm is in the same field of endeavor as the 884 Patent.
`
`45.
`
`Skidmore, which is entitled “Venetian Blind,” discloses a window
`
`cover that includes a drive mechanism to raise or lower the bottom rail of the blind.
`
`(Skidmore at 1:47-50.) Skidmore explains that it discloses devices for assisting in
`
`the raising and lowering of a window covering. (Skidmore at 4:14-31.)
`
`Skidmore’s raising and lowering mechanism includes gear transmissions and a
`
`-18-
`
`Norman Int. Exhibit 1010
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`friction brake. The friction brake, shown in FIG. 2 of Skidmore, is described to
`
`hold the blind in a raised or partially raised position against the gravity in a
`
`venetian blind covering. Due to the operation of the gravity on the blinds, “there is
`
`a tendency for the weight of the bottom rail 34 and slats 41 to rotate the winding
`
`drum 16 and other components of the gear box due to tension 125 in the tapes 27
`
`and 28. In order to overcome this tendency, a friction brake is provided as shown
`
`in Figure 2.” (Skidmore at 2:121-128.) Like the 884 Patent, Tachikawa, and
`
`Strahm, Skidmore achieves its goals in a similarly basic way, by utilizing well-
`
`known mechanical components, such as drive mechanisms, lifting cords, friction
`
`brakes, gears, and shafts, which could be applied and combined by a person of
`
`ordinary skill in the art in various ways to achieve predictable results. I therefore
`
`conclude that Skidmore is in the same field of endeavor as the 884 Patent.
`
`46.
`
`Schuetz discloses “new and useful improvements in friction brakes,”
`
`particularly related to “hoisting apparatuses.” (Schuetz at 1:5.) Schuetz
`
`accomplishes this using comparable and commonly known mechanical
`
`components to develop a mechanical, one-way friction brake that is similar to the
`
`one claimed by the 884 Patent. The 884 Patent also discloses a one-way friction
`
`brake. (884 Patent at 69:21-26.) Although Schuetz is not in the context of window
`
`coverings, a person of ordinary skill in the art would consider one-way friction
`
`-19-
`
`Norman Int. Exhibit 1010
`
`
`
`DECLARATION OF PATRICK E. FOLEY
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,968,884 B2
`
`brakes in any system to be analogous art in the same field of endeavor because a
`
`friction brake performs essentially the same, well-known function regardless of its
`
`application. This is especially true because, just as the 884 Patent and Tachikawa
`
`are concerned with raising a window covering to a desired location without it
`
`falling, Schuetz is similarly concerned with hoisting an object to a desired location
`
`without a retrograde motion causing the object to fall. (Schuetz at 1:1-11.) In fact,
`
`in my own work in the window cove
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