UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NORMAN INTERNATIONAL, INC.
`Petitioner
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`v.
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`HUNTER DOUGLAS INC.
`Patent Owner
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`CASE IPR2014-01175
`Patent No. 6,968,884
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Paper 10
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`July 23, 2015
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`NORMAN INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`HUNTER DOUGLAS INC.
`Patent Owner
`
`
`
`
`
`CASE IPR2014-01175
`Patent No. 6,968,884
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Paper 10
`
`July 23, 2015
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`E.
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`F.
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`INTRODUCTION .......................................................................................... 1
`RESPONSE TO PATENT OWNER’S ARGUMENTS ................................ 2
`A. Only Limited Construction Is Required ............................................... 3
`B.
`Claim 7 Is Invalid as Obvious Over Cohn in view of Strahm ............. 4
`1.
`It Would Have Been Obvious to Combine Cohn and
`Strahm ........................................................................................ 4
`Patent Owner’s Perceived Complexity In Combining
`Cohn and Strahm is Irrelevant, Incorrect, and Lacks
`Legal Basis ................................................................................. 8
`Adding Strahm’s One-Way Friction Brake to Cohn’s
`Assembly is Consistent with the Purposes and
`Disclosures of Strahm and Cohn.............................................. 15
`Patent Owner Failed to Establish Objective Indicia ................ 19
`4.
`C. Declaration of Lawrence E. Carlson (Ex. 1009) Is Relevant and
`Merits Full Weight and Consideration ............................................... 21
`D. Declaration of Patrick E. Foley (Ex. 1010) Is Relevant and
`Merits Full Weight and Consideration ............................................... 23
`The Petition and this Trial Present New Prior Art and
`Arguments Not Before the Office in Prior Proceedings .................... 23
`The Board Should Give No Weight to Declaration of John
`Corey .................................................................................................. 24
`III. CONCLUSION ............................................................................................. 25
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`2.
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`3.
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`-i-
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`
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`EXHIBIT LIST
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`Brief Description
`U.S. Patent No. 6,968,884 B2 (“the 884 Patent”)
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`Norman
`Exhibit #
`1001
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`1002
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`Japanese Patent Application Publication S54-38648 (“Tachikawa”)
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`Pages 1-4: English Translation
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`Pages 5-8: Original Japanese Publication
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`Page 9: Translator Certification
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`1003
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`U.S. Patent No. 3,327,765 (“Strahm”)
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`1004
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`Great Britain Patent No. 1,174,127 (“Skidmore”)
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`1005
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`U.S. Patent No. 1,870,532 (“Schuetz”)
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`1006
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`U.S. Patent No. 2,390,826 (“Cohn”)
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`1007
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`U.S. Patent No. 6,056,036 (“Todd”)
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`1008
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`U.S. Patent No. 6,293,329 (“Toti”)
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`
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`1009
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`Declaration of Lawrence E. Carlson in Support of Petition for Inter
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`Partes Review of U.S. Patent No. 6,968,884B2 (“Carlson Declaration
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`on 884 Patent”)
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`-ii-
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`Norman
`Exhibit #
`1010
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`
`
`Brief Description
`Declaration of Patrick E. Foley in Support of Petition for Inter Partes
`
`Review of U.S. Patent No. 6,968,884B2 (“Foley Declaration on 884
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`Patent”)
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`1011
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`Proof Of Service on July 16, 2013 of Summons in Civil Action No.
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`1:13-cv-01412-MSK-MJW (D. COLO.) (“Proof of Service”)
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`1012
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`Declaration Of Sara Hare (“Hare Declaration”)
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`1013
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`Declaration of Lawrence E. Carlson in Support of Petitioner’s Reply to
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`Patent Owner’s Response of May 4, 2015
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`-iii-
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
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`I.
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`INTRODUCTION
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`The Board instituted inter partes review of the 884 patent on the ground of
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`obviousness of claim 7 over Cohn (Ex. 1006) in view of Strahm (Ex. 1003). (Paper
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`7, at 2) (“we determine Petitioner established a reasonable likelihood that it would
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`prevail in showing the unpatentability of claim 7.”) Patent Owner filed its
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`Response to the Petition on May 4, 2015. (Paper 9). Petitioner timely submits this
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`reply under 37 C.F.R. § 42.23 pursuant to the February 10, 2015 Scheduling Order
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`to rebut Patent Owner’s arguments. (Paper 8, at 6). With this reply, Petitioner also
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`submits a rebuttal declaration by Professor Lawrence Carlson (Ex. 1013) that
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`supports Petitioner’s position that claim 7 is obvious and not patentable.
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`In view of all the evidence and analysis in the record of this proceeding,
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`Petitioners have shown, by a preponderance of the evidence, that claim 7 is invalid
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`under § 103 and thus must be canceled. Specifically, the Petition and all the
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`evidence on record demonstrate that the teachings of Cohn and Strahm would
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`motivate and provide ample reasons for a POSITA to combine the references, that
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`every element of claim 7 was disclosed by the combination, and that the subject
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`matter of the combination as claimed in claim 7 as a whole is a predictable and
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`obvious combination. Patent Owner’s Response has failed to overcome this
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`demonstration or otherwise rebut the unpatentability of claim 7. And Patent
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`Owner’s reliance on secondary considerations to allege that claim 7 satisfies some
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`-1-
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`unspecified long-felt need lacks both factual and legal support and must be
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`dismissed. Accordingly, Petitioner respectfully requests that the Board cancel
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`claim 7.
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`II. RESPONSE TO PATENT OWNER’S ARGUMENTS
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`Claim 7 is vaguely and confusingly worded and fails to point out and
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`distinctly claim how the one-way friction brake would provide the claimed braking
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`force and what structure would enable opposing the rotation of the rotating output
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`in one direction. (Paper 1, 6-8). To the extent it can be understood, claim 7 is
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`directed to a covering for an architectural opening having several basic and well
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`known mechanical components. (See Paper 1, 6; Ex. 1009, ¶ 35, 44; Ex. 1010, ¶¶
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`5, 24; Ex. 1013, ¶¶32-33). The 884 patent does not describe a pioneering invention
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`and the components in claim 7 and the 884 patent have been well known
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`individually and in various combinations long before the 884 patent’s parent
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`application was filed. (See Paper 1, 6, 20; Ex. 1010, ¶ 28; Ex. 1009, ¶ 35; Exs.
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`1002-1008). For example, one-way friction brakes were known. (See, e.g., Ex.
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`1003). And the prior art already disclosed both cordless blinds and mechanisms
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`that provided variable force depending on the position of the blinds (features that
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`are omitted from claim 7). (See, e.g., Ex. 1002; Ex. 1006 (disclosing cordless
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`blinds); Paper 1, 16).
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`- 2 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`Patent Owner’s Response (Paper 9) merely repeats the same arguments that
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`the Board has already rejected in the Patent Owner Preliminary Response.1 (See
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`Paper 7, 20) (“Patent Owner's arguments are not persuasive.”). In light of all the
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`evidence and analysis by Petitioner and by Patent Owner on the record in this
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`proceeding, the Board should continue to find claim 7 unpatentable and that Patent
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`Owner’s arguments lack evidentiary support and are unpersuasive.
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`A. Only Limited Construction Is Required
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`The only term for which construction may be necessary to this review is
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`“one-way friction brake,” which is not found in the description or drawings of the
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`884 patent outside the claims. (Paper 1, 12; see Ex. 1009, ¶67). Petitioner
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`maintains its broadest reasonable interpretation in the Petition, which is consistent
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`with the claims themselves. (Paper 1, 12; see Ex. 1009, ¶¶ 33, 46-47, 68-69, 71;
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`Ex. 1013, ¶¶ 35-37).
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`
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`1. In the Preliminary Response and in the Response, Patent Owner argued only
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`that 1) Petitioner did not explain why a POSITA would have combined Cohn and
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`Strahm (Paper 6, 33; compare Paper 9, 2); 2) Petitioner has not explained how the
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`multiple components of Strahm would incorporate into Cohn (Paper 6, 34;
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`compare Paper 9, 22); and 3) Strahm’s brake would not be suitable for stopping
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`Cohn’s blind (Paper 6, 34; compare Paper 9, 23).
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`- 3 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`B. Claim 7 Is Invalid as Obvious Over Cohn in view of Strahm
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`1.
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`It Would Have Been Obvious to Combine Cohn and Strahm
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`Patent Owner’s Response contends that the Petition lacked sufficient reason
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`to combine Cohn and Strahm. (See Paper 9 at 18). This contention is plainly wrong
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`and contradicts the Petition’s express explanations and articulated reasons for
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`combining the references. Contrary to Patent Owner's assertions (see Paper 9, 20,
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`22), the Petition and the accompanying declarations filed with the Petition
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`articulated the reasons and motivations for a POSITA to make the combination of
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`Cohn and Strahm to invalidate claim 7.
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`The Petition has established that it would have been obvious to combine
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`elements of Cohn and Strahm, two references that each suggest a braking
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`mechanism in a window covering system, to render claim 7 obvious and
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`unpatentable. (See Paper 1, at 20-21, 49, 56, 58-59) (explaining Cohn's “suitable
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`means” to stop and maintain the blind at a desired height and Strahm's suitable
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`means in the form of a one-way friction brake to control descent of the blind and
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`permit raising the blind with minimum effort). The Petition and the accompanying
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`2014 Carlson Declaration (Ex. 1009) each further identify specific teachings in the
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`prior art regarding each element, explicitly noting how the specific teachings in
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`Cohn or Strahm correspond with claim elements. (Paper 1, 57-59; Ex. 1009, ¶¶
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`165-173).
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`- 4 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`In determining the reasonable likelihood that Petitioner would prevail in
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`showing the unpatentability of claim 7, the Board has already recognized that there
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`was “sufficient support for Petitioner's contention that one of ordinary skill in the
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`art would have considered Strahm's friction brake a suitable means for stopping
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`and maintaining Cohn's venetian blind” and “implementation of Strahm's friction
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`brake in Cohn's device [is] nothing more than a predictable variation of Cohn's
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`pawl stops.” (Paper 7, at 2, 20-21). Petitioner and its expert, Prof. Carlson, agree
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`with the Board in this regard. (Ex. 1013, at ¶11, 25).
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`Specifically, the Board instituted Ground 6 based on the combination of
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`Cohn and Strahm in Section VI(F) of the Petition, which was built upon
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`discussions and explanations on Cohn and Strahm and their combination in
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`preceding sections of the Petition for Ground 4 (Paper 1, at 46-48) and for Ground
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`1 (Id. at 20-23, explaining Strahm's disclosure of "a raising and lowering
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`mechanism for a blind and including a brake which operates to brake the rate of
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`descent of the blind, so that it can be lowered in a controlled manner, but which is
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`automatically released during raising of the blind so that raising can be performed
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`with the minimum of effort."). (See, id., at 85-59). Prof. Carlson’s 2014
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`Declaration (Ex. 1009, at ¶¶138-142 and 164-174) and Mr. Foley’s 2014
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`Declaration (Ex. 1010, at 44, 47 and 57) also provide detailed explanations why a
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`POSITA would be motivated to combine Cohn and Strahm with respect to claim 7.
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`- 5 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`As explained in the Petition (at 46-48), Cohn teaches a system for covering
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`an architectural opening with a cordless Venetian blind. One objective of Cohn’s
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`invention is to provide a cordless blind that is “universally adaptable … and which
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`can be installed in windows of various widths by the simple expedient of varying
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`the length of the drive shaft” (see 1:37-40 on pg. 1 of Cohn), which is similar to the
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`primary objective of the 884 Patent (at 3:10-19). Like the 884 patent, Cohn
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`discloses transport mechanisms and systems for a covering an architectural
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`opening in the form of a cordless Venetian blind having a covering (e.g., slats), lift
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`cords that extend and retract the slats and wraps onto/off of lift spools (e.g., drums
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`or reels), a rotating shaft that causes the lift spools to take up/down the lift cords,
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`and a spring motor that drives rotation of a rotating shaft. These components and
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`mechanisms are structurally comparable and functionally and operationally the
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`same as the components and mechanisms claimed in claim 7, as well as
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`interchangeable and combinable with other components and mechanisms in other
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`window covering systems, such as the one-way friction brake of Strahm. (See, e.g.,
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`Ex. 1009 at ¶¶138-174; Ex. 1010 at ¶¶ 43-44, 47-48, 54-58).
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`The Petition explained that Cohn’s cordless Venetian blind includes a
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`horizontal, rotatable shaft that operatively couples to other independent mechanical
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`components to raise and lower the covering via a lifting mechanism including one
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`or more spring motors. (Paper 1 at 47-48). Cohn’s cordless blind also includes a
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`brake mechanism operatively coupled to the horizontal shaft. Cohn teaches that “I
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`do not mean to limit myself to [the disclosed form of the invention], but intend to
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`include all equivalents thereof as defined by the appended claims.” (Id.; see also,
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`e.g., Ex. 1006 at 4). Claim 1 in Cohn discloses a “releasable means associated with
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`said shaft adapted to lock said shaft against rotation.” Therefore, Cohn suggests
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`any suitable brake that can stop and maintain the window casing at a desired
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`height. This suitable brake can be the one in Strahm, which teaches a one-way
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`friction brake mechanism for a window covering that applies frictional braking
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`against lowering of the covering and releases when the covering is being raised.
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`(Paper 1 at 47-48).
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`The Petition further articulated how a POSITA would be guided by the clear
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`teachings in Cohn and Strahm to combine them. The technology disclosed in Cohn
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`and Strahm addresses the same technical challenges of controlling the rotation of a
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`rotating shaft that raises and lowers a window covering (e.g., a blind or shade) so
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`that the window covering can be reliably raised and lowered by a user to remain in
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`the intended position. (Paper 1, 48). Cohn and Strahm employ comparable and
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`commonly known mechanical components and mechanisms that could have been
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`easily combined or interchanged by a person of ordinary skill in the art at the time
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`of the 884 Patent, as discussed in the Carlson Declaration at, e.g., ¶¶138-174 (Ex.
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`1009).
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`Therefore, the Petition (Paper 1), Cohn (Ex. 1006), Strahm (Ex. 1003), the
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`2014 Carlson Declaration (Ex. 1009) and the 2014 Foley Declaration (Ex. 1010)
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`provide detailed explanations, ample evidence and specific articulation of the
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`reasons and motivations for a POSITA to combine Cohn and Strahm with respect
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`to claim 7.
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`2.
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`Patent Owner’s Perceived Complexity In Combining Cohn and
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`Strahm is Irrelevant, Incorrect, and Lacks Legal Basis
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`Patent Owner’s Response distorts the scope and nature of Petitioner’s
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`analysis and evidence for this proceeding and is based on a contention that lacks
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`legal basis. For example, Patent Owner has alleged that Petitioner has not
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`explained how the references would be combined. (Paper 9, 22). But as the Board
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`already recognized, “[a] determination of obviousness based on teachings from
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`multiple references does not require an actual, physical substitution of elements”
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`and “[i]f a person of ordinary skill can implement a predictable variation, § 103
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`likely bars its patentability.” (Paper 7, 20) (internal quotation and citation omitted).
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`Accordingly, Patent Owner's conclusory allegation that “the braking mechanism in
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`Strahm is not compatible with Cohn based on complexity alone” is not helpful, is
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`misleading and incorrect, and fails to overcome the evidence and showing of
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`obviousness by Petitioner. (See Paper 9, 22; In re Sneed, 710 F.2d 1544, 1550
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`(Fed. Cir. 1983) (“it is not necessary that the inventions of the references be
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`- 8 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`physically combinable to render obvious the invention”). Petitioner has made
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`ample showing beyond Patent Owner’s allegation of “mix-and-matching”
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`components, to satisfy the preponderance of evidence standard. (See Paper 9, 20).
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`Specifically, the technical disclosures in Cohn and Strahm as cited and
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`explained in the Petition are related and compatible with each other as explained
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`above and as explained in the original Petition and the expert declarations by Prof.
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`Carlson and Mr. Foley. In rebuttal to the Patent Owner’s Response, Petitioner’s
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`expert, Prof. Carlson, has provided additional testimony. (Ex. 1013, e.g., ¶¶10, 18-
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`41).
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`Prof. Carlson explains that Cohn’s blind is raised and lowered using a
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`horizontal, rotatable shaft coupled to a lifting mechanism including a spring motor.
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`(Ex. 1013, ¶22; Ex. 1009, ¶141; Ex. 1006, p. 1-2). One of ordinary skill in the art
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`would have understood that a horizontal, rotatable shaft – including the shaft
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`disclosed in Cohn – could be slowed or stopped using some form of braking
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`mechanism. (Ex. 1013, ¶22; see Exhibit 1009, ¶¶141, 171). And that is precisely
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`what Cohn suggests: that any “suitable means” may be used to stop and maintain
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`the height of the blind. (Ex. 1006, pg. 3, right column, lines 1-3; Ex. 1009, ¶¶141,
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`171; Paper 1, p. 58; Ex. 1013, at ¶22).
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`According to Prof. Carlson, Cohn’s choice of “suitable means” was a set of
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`centrifugal pawl stops that allowed rotation of the shaft when they were released,
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`but one of ordinary skill in the art would have understood that there were a
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`multitude of suitable brakes that could be employed to limit or control rotation of
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`the shaft in Cohn. (Ex. 1013, ¶23; Ex. 1006, pg. 3, Fig. 11; Paper 7, pgs. 2, 20-21).
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`Cohn does not limit the braking mechanism to pawl stops, and a person of ordinary
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`skill in the art would have the basic mechanical understanding to try some suitable
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`brake configuration and would understand how to implement it. (Ex. 1013, at ¶23.)
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`As would have been known to a person of ordinary skill in the art at the
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`time, one example brake configuration would have been a one-way friction brake
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`(as taught by Strahm). (Ex. 1013, ¶24). A one-way friction brake is a mechanical
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`device that resists rotation in one direction (either slowing or stopping it), while
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`more easily allowing rotation in the other direction. (Id.; Ex. 1009, ¶¶ 47-48). A
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`typical way to achieve this function is with two components: a one-way clutch
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`coupled to a bi-directional friction brake. (Id.). Strahm provided an example of
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`this kind of one-way friction brake. And it is functionally identical to the one-way
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`friction brake in the 884 patent. (See, e.g., Ex. 1009, ¶¶ 33, 84, 100, 101, 110, 112,
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`157; Ex. 1013, at ¶24).
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`In Prof. Carlson’s view, Strahm disclosed what is sometimes called a wrap
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`spring clutch to provide the one-way rotation aspect of a one-way friction brake.
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`(See, e.g., Ex. 1009, ¶¶110; Ex. 1013, ¶26). In Strahm, springs 21 and/or 30 have
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`directions of winding (called “hand”) that allow rotation in one direction but not
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`- 10 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`the other. (See Ex. 1003, col. 2, lines 45-53 (“The hand of winding of the spring
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`21 is such that the same tightens and clamps the sleeve 19 and gear 18 when the
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`sleeve 19 rotates to the hand corresponding to a raising of the blind…; when the
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`spring 21 opens, it can slip as the sleeve 19 is driven in the opposite direction …
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`corresponding to a lowering of the blind”); Id., col. 3, lines 25-32 (“The spring 30
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`forms a one-way coupling between the sleeves 19 and 32 and is wound in a sense
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`such that there is a rigid connection between the sleeves 32 and 19 when the sleeve
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`19 rotates…corresponding to a lowering of the blind, whereas the coupling slips
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`when the sleeve 19 rotates…corresponding to the blind being raised.”); Ex. 1009,
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`¶¶ 83, 100-101, 110, 141, 157, 171). The springs 21 and/or 30 engage when
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`lowering the blind, and slip when the blind is raised. (Ex. 1013, at ¶26.)
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`The friction brake aspect of Strahm arises from conical washers 33 and 36
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`that frictionally engage the wall 34 when the sleeve 32 is rotated. (Ex. 1003, col. 3,
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`lines 15-25 (“The sleeve 32 has a shoulder 32’ and two conical washers or the like
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`33 are axially clamped between the shoulder 32’ and the left-hand surface of a
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`transverse wall 34…. A screwthreaded ring 35 screwed on the sleeve 32 forms a
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`shoulder for two conical washers or the like 36 which are clamped axially between
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`the ring 35 and the right-hand surface of the wall 34. The ring 35 is so screwed on
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`the sleeve 32 as to considerably compress the conical washers 33, 36 forming a
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`- 11 -
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`friction brake between the stationary wall 34 and the rotatable sleeve 32.”); see Ex.
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`1009, ¶¶ 100, 110, 157, 171; Ex. 1013, at ¶27).
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`Prof. Carlson further explains that the combination of the above-described
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`springs and washers in Strahm creates the one-way friction brake, which is
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`operatively connected to the rotating output (rotating shaft 4 of Strahm) to provide
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`a braking force that opposes the rotation of the rotating shaft 4 in one direction and
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`permits the rotating shaft 4 to rotate freely in the other direction, providing
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`controlled operation of the blind. (Ex. 1013, at ¶28; Ex. 1003, col. 1, lines 28-34
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`(“brake which operates to brake the rate of descent of the blind, so that it can be
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`lowered in a controlled manner, but which is automatically released during raising
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`of the blind”); id., col. 3, lines 11-35 (describing the friction brake and the one-way
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`coupling); id., col. 4, lines 31-33; id., Fig. 6; Ex. 1009, ¶¶ 83, 110, 157, 171; Paper
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`1, pg. 27, 29-30, 50-54).
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`Accordingly, because Strahm’s brake was one known mechanism for
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`controlling movement of a blind, Strahm’s brake satisfies the “suitable means”
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`desired in Cohn, which also highlights the importance of controlled movement.
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`(See, e.g., Ex. 1006, pg. 3, right column, lines 33-36) (“flow of power will be even
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`and uniform…to preclude any possibility of the blinds raising too fast.”).
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`Therefore, one of ordinary skill in the art would have looked to Strahm as an
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`obvious suitable means of braking in Cohn, and would not have been dissuaded by
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`any alleged complexity. (See Ex. 1013, at ¶29.)
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`Moreover, in further response to Patent Owner’s contention that “the braking
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`mechanism of Strahm is not compatible with Cohn based on complexity alone”
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`(Paper 9, pg. 22), Prof. Carlson disagrees because the mechanisms disclosed in
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`Cohn, Strahm, the 884 patent, and other references he reviewed for this proceeding
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`are (and were, at the time of the invention claimed in claim 7 of the 884 patent) all
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`basic and predictable combinations of known components with specific functions.
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`(Ex. 1013, at ¶35).
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`For example, Prof. Carlson observes that the 884 patent discloses and
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`attempts to belatedly claim a one-way friction brake mechanism similar to what
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`Strahm previously disclosed. Specifically, although the 884 patent recites a one-
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`way friction brake in the claims, the 884 patent actually describes and
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`schematically illustrates a one-way clutch mechanism that is in series with a
`
`friction brake mechanism, and it terms this combination as a one-way friction
`
`brake module (e.g., variable or manually adjustable). (Ex. 1009, ¶¶ 33, 47, 68-69,
`
`71; Ex. 1013, ¶ 38). In the 884 patent, for example, the toothed drive 932 shown in
`
`Figure 183B functions as the one-way clutch, engaging the brake when the blind is
`
`lowered, but not when it is raised. (Ex. 1009, ¶33, 47, 68-69, 71; Ex 1001, Figure
`
`183B; Ex. 1013, ¶ 39). This is functionally equivalent to the wrap spring clutch
`
`- 13 -
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`disclosed in Strahm. (See, e.g., Ex. 1009, ¶¶ 69, 110, 171; Ex. 1013, at ¶ 39). And
`
`in the 884 patent, like in Strahm, a friction brake slows and/or stops the motion of
`
`the blind. (Ex. 1013, at ¶ 40). In the 884 patent, an example friction brake is
`
`shown in Figure 183B, formed from brake drum 926 and brake shoe 928, which is
`
`forced against the brake drum 926 by a compression spring 942. The combination
`
`of toothed drive 932, for example, and the brake drum 926 and brake shoe 928
`
`forms the 884 patent’s claimed one-way friction brake. (Ex. 1013, at ¶¶38-40).
`
`A POSITA would have known to integrate Strahm’s mechanism into Cohn’s
`
`design and how to do so. (See, e.g., Ex. 1013, ¶19, et seq.). Specifically, as
`
`described by Prof. Carlson, Cohn’s blind is raised and lowered using a horizontal,
`
`rotatable shaft coupled to a lifting mechanism including a spring motor. (Ex. 1013,
`
`¶22; Ex. 1009, ¶141; Ex. 1006). One of ordinary skill in the art would have
`
`understood that a horizontal, rotatable shaft could be slowed or stopped using some
`
`form of braking mechanism. (Ex. 1013, ¶22; Ex. 1009, ¶141). Cohn suggests that a
`
`“suitable means” is all that is needed, without limiting the means to the disclosed
`
`pawl stops. (Ex. 1006, 3; Paper 1, 58; Ex. 1013, ¶23 (“a multitude of suitable
`
`brakes…could be employed”)).
`
`Accordingly, a POSITA would have the basic mechanical understanding to
`
`try some suitable brake configuration and would understand how to implement it.
`
`(Id.) One example brake configuration would have been a one-way friction brake,
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`- 14 -
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`as taught by Strahm. (Ex. 1013, ¶23, 24-26, 38-40 (describing Strahm’s brake
`
`formed by a wrap spring clutch and washers in frictional engagement with a wall,
`
`and the functional identity with the 884 patent’s disclosure); see Ex. 1009, ¶¶ 33,
`
`47-48). Because Strahm’s brake was one known mechanism for controlling
`
`movement of a blind, Strahm’s brake satisfies the “suitable means” desired in
`
`Cohn. (See Ex. 1013, ¶29 (describing both Strahm’s and Cohn’s interest in
`
`controlled movement).
`
`3.
`
`Adding Strahm’s One-Way Friction Brake to Cohn’s Assembly is
`
`Consistent with the Purposes and Disclosures of Strahm and Cohn
`
`Patent Owner’s Response contends that Strahm teaches away from the
`
`combination with Cohn, asserting that “the brake in Strahm is not a ‘suitable
`
`means’ for stopping and maintaining the blind ‘at any desired height.’” (Paper 9,
`
`23; Ex. 2001, ¶¶ 40-46). In response, Petitioner and Petitioner’s expert, Prof.
`
`Carlson, disagree with Patent Owner and its expert. (Ex. 1013, at ¶¶30-41.) Patent
`
`Owner’s contention has no basis in Strahm and Cohn.
`
`Prof. Carlson opines that a person of ordinary skill in the art at the time of
`
`the invention of the subject matter claimed in claim 7 would have interpreted
`
`Strahm’s disclosure as encompassing a brake that can altogether stop the blind at a
`
`desired height. (Ex. 1013, ¶31). This is so at least because there is nothing in
`
`Strahm that limits Strahm’s disclosure to a brake that cannot fully stop the blind
`
`- 15 -
`
`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`from moving. (Id.). Accordingly, Strahm does not teach away from stopping the
`
`rotation of a rotatable shaft or stopping and maintaining a blind at a desired height.
`
`Id.; Ex. 1003, 1:30-32; Paper 9, 23; Paper 1, 21).
`
`Specifically, whether Strahm’s brake slows or stops the blind depends upon
`
`the friction characteristics of washers 33, 36, and the wall 34 and how tightly the
`
`washers 33, 36 are forced together against the wall 34, as described above. (See
`
`Ex. 1013, ¶ 32). It is a matter of basic physics that if the friction applied by
`
`Strahm’s brake is greater than the weight of the blind, the blind will stay in its
`
`desired position. (Ex. 1013, ¶29-32). Therefore, Prof. Carlson opines that Strahm
`
`broadly discloses a one-way friction brake that one of ordinary skill in the art
`
`would understand to be able to, or to be easily configured to, halt movement of a
`
`rotatable shaft and therefore maintain a blind at a desired height, thereby rendering
`
`obvious the combination of Strahm into Cohn. (Ex. 1013, at ¶¶33-34.)
`
`Furthermore, Prof. Carlson opines that that even if Strahm’s system is
`
`deemed to exclude a brake that allows for maintaining the blind at a given position
`
`(which in his opinion is not the case), one of ordinary skill in the art would still
`
`look to Strahm for the braking arrangement and calibrate it to be a suitable means
`
`for stopping a blind, such as the blind in Cohn. (Ex. 1013, ¶34). Specifically, one
`
`of ordinary skill in the art would look to the screwthreaded ring 35 of Strahm,
`
`which “is so screwed on the sleeve 32 as to considerably compress the conical
`
`- 16 -
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`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`washers 33, 36, forming a friction brake” and would simply tighten or loosen the
`
`screwthreaded ring 35 depending on the desired friction for calibrating motion of a
`
`blind. (See Ex. 1003, col. 3, lines 22-24; Ex. 1013, ¶34). Because Cohn seeks a
`
`“suitable means” to maintain the position of the blind, one of ordinary skill in the
`
`art would have looked to the mechanism in Strahm, adjusted it, and used it in the
`
`mechanism of Cohn. (Id.). This was all within the purview and capabilities of a
`
`mechanical engineer at the time of the invention described in claim 7. (Ex. 1013, at
`
`¶ 34).
`
`Further, all of this is consistent with Cohn, which discloses the importance
`
`of controlled movement. (See Ex. 1006, 3 (“flow of power will be even and
`
`uniform…to preclude any possibility of the blinds raising too fast”; Ex. 1013,
`
`¶29)). Accordingly, adding Strahm's one-way friction brake to Cohn's system
`
`would not render Cohn's system non-functional, as Patent Owner now argues. (See
`
`Paper 9, 23).
`
`In any event, Patent Owner’s argument that the Strahm teaches away from a
`
`combination with Cohn attempts to impermissibly inject or add limitations to claim
`
`7 that are not part of claim 7. Claim 7 recites a “one-way friction brake providing
`
`braking force opposing 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,”
`
`without regard to holding or stopping the blind. (Ex. 1001 (emphasis added);
`
`- 17 -
`
`
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`CASE IPR2014-01175 (Patent 6,968,884)
`Petitioner’s Reply To Patent Owner’s Response
`compare Ex. 1001, Claim 5 (reciting a “one-way friction brake providing a braking
`
`force
`
`that stops
`
`the rotation of
`
`the
`
`rotating output
`
`in one of
`
`the
`
`directions…”)(emphasis added)). As described above, claim 7 is obvious as it is
`
`written. (Paper 1, 58-59; see Paper 7, 20).
`
`In further agreement with Petitioner’s position, Prof. Carlson opines that
`
`Strahm discloses the suitable means to stop and maintain the blind at a desired
`
`position and, therefore, Strahm provides an obvious means for opposing the
`
`rotation of Cohn’s rotating output for the reasons expressed in his previous
`
`declaration and further elaborated above in response to Patent Owner’s new
`
`arguments. (Ex. 1013, at ¶¶36-37; see, e.g., Paper 1, pg. 58-59; Ex. 1009, ¶¶ 82,
`
`141, 157-58, 171.)
`
`Based on the above evidence and analyses, Prof. Carlson declares that the
`
`system in claim 7 would have been obvious to one of ordinary skill in the art at the
`
`time of the invention over Cohn in view of Strahm. (Ex. 1009, ¶¶110, 141, 157-58,
`
`164,171-173; Ex. 1013, at ¶ 41).
`
`As the Board observes, Patent Owner has failed to offer “argument or
`
`evidence to refute Petitioner’s contention that Strahm’s one-way friction brake
`
`would be ‘capable of providing a braking force that stops the rotation of the
`
`rotating shaft [] in one direction.’” (Paper 7, 20-21). Patent Owner’s Response
`
`does
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