`
`Paper No. 6
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`CHUMS, INC., and CROAKIES, INC.
`
`Petitioners
`
`v.
`
`CABLZ, INC.
`
`Patent Owner
`
`_______________________
`
`IPR 2014-01240
`
`Patent No. 8,366,268
`
`Issue Date: February 5, 2013
`
`Title: Eye Wear Retention Device
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. §42.107
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF EXHIBITS ........................................................................................... iv 
`INTRODUCTION ..................................................................................................... 1 
`SUMMARY OF ARGUMENT ................................................................................. 1 
`BACKGROUND ....................................................................................................... 3 
`CLAIM CONSTRUCTION ....................................................................................... 5 
`“Resilient Cable” ............................................................................................. 5 
`“Temple Retainer” ........................................................................................... 7 
`DESCRIPTION OF PRIOR ART ON WHICH PETITIONERS RELY .................. 8 
`A.  Monroe (Paper 1, Ex. 1002) .................................................................. 8 
`B.  MacKay (Ex. 1003) ............................................................................. 10 
`C. 
`Chisolm (Ex. 1005) ............................................................................. 13 
`D.  McClellan (Ex. 1006) .......................................................................... 14 
`E.  Miller (Ex. 1004). ................................................................................ 16 
`REASONS WHY NO INTER PARTES REVIEW SHOULD BE INSTITUTED
`UNDER 35 U.S.C. § 314 ......................................................................................... 19 
`I. 
`THE PRIOR ART DOES NOT TEACH ALL ELEMENTS OF
`THE CLAIMED INVENTION. .......................................................... 19 
`OBJECTIVE EVIDENCE—INCLUDING PETITIONERS’ OWN
`CONDUCT—DEMONSTRATES PRIOR ART DOES NOT
`TEACH THE COMBINATION OF A RESILIENT CABLE OR
`MEMBER CONNECTED TO A TEMPLE RETAINER .................. 23 
`III.  THE SPECIFIC COMBINATIONS ALLEGED
`IN THE
`PETITION ........................................................................................... 31 
`a. 
`Ground 1: Claims 1, 3-9, and 11-17 of the ‘268 Patent are
`unpatentable under 35 U.S.C. § 103(a) over Monroe in view
`of Mackay. ................................................................................ 31 
`Ground 2: Claims 1-17 of the ‘268 Patent are unpatentable
`under 35 U.S.C. § 103(a) over Monroe in view of Mackay
`and Miller. ................................................................................. 33 
`
`II. 
`
`b. 
`
`
`
`i
`
`

`

`d. 
`
`e. 
`
`f. 
`
`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`c. 
`Ground 3: Claims 1, 3-9, and 11-17 of the ‘268 Patent are
`unpatentable under 35 U.S.C. § 103(a) over Chisolm in
`view of Monroe. ........................................................................ 34 
`Ground 4: Claims 1-17 of the ‘268 Patent are unpatentable
`under 35 U.S.C. § 103(a) over Chisolm in view of Monroe
`and Miller. ................................................................................. 35 
`Ground 5: Claims 1, 3-6, 8, 9, 11-14, 16, and 17 of the ’268
`Patent are unpatentable under 35 U.S.C. § 103(a) over
`Monroe in view of McClellan. .................................................. 35 
`Ground 6: Claims 1-6, 8-14, 16, and 17 of the ‘268 Patent
`are unpatentable under 35 U.S.C. § 103(a) over Monroe in
`view of McClellan and Miller. .................................................. 37 
`IV.  THE PETITION FAILS TO ADDRESS KNOWN EVIDENCE
`OF SECONDARY CONSIDERATIONS ........................................... 37 
`a. 
`Copying by Others .................................................................... 38 
`i. 
`. ....... 38 
`i. 
`Copying by Croakies ...................................................... 41 
`Commercial Success ................................................................. 43 
`i. 
`Chums Has Enjoyed Substantial Commercial Success
`with its Orbiter Products Embodying the ‘268 Patent. ... 44 
`Cablz Has Grown from a Mom-and-Pop Outfit in the
`Inventor’s Garage
`to a Multi-Million Dollar
`International Company Based on Commercial
`Success of Products Embodying the ‘268 Patent, its
`Sole Product Line. .......................................................... 46 
`iii.  Nexus Between
`the Patented Features
`and
`Commercial Success ....................................................... 47 
`Industry Recognition ................................................................. 48 
`i. 
`American Sportfishing Association – Best of Show
`Award ............................................................................. 48 
`V.  MULTIPLE PERSONS OF AT LEAST ORDINARY SKILL IN
`THE ART EMPLOYED BY PETITIONERS CROAKIES AND
`CHUMS DID NOT PRODUCE THE INVENTION CLAIMED
`IN THE ‘268 PATENT, DESPITE ACTUAL KNOWLEDGE OF
`
`ii. 
`
`b. 
`
`c. 
`
`1/2686612.14
`
`ii
`
`Redacted
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`MONROE’S (SOSIN’S) HAND-TIED PLASTIC LINE ON
`GLASSES AND “COMMONPLACE” TEMPLE RETAINERS. ..... 52 
`Actual Persons of Ordinary Skill at Petitioner Croakies with
`a. 
`Actual Knowledge of the Prior Art Failed to Produce the
`Combination. ............................................................................. 53 
`Actual Persons of At Least Ordinary Skill at Petitioner
`Chums with Actual Knowledge of the Prior Art Failed to
`Produce the Combination. ......................................................... 54 
`CONCLUSION ........................................................................................................ 59 
`CERTIFICATE OF SERVICE ................................................................................ 60 
`
`
`
`b. 
`
`1/2686612.14
`
`iii
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`TABLE OF EXHIBITS
`
`Ex 2001 August 3, 2009 email exchange between Katie Burns and John Bercaw
`(CHUMS0051577-579) - Chums Employee Deposition Exhibit 86
`
`Ex 2002 May 17, 2010 email from Katie Burns (CHUMS0012435-436,
`0012432-434) - Chums Employee Deposition Exhibit 89
`
`Ex 2003 October 2010 email exchange between Katie Burns and John Bercaw
`(CHUMS0034521) - Chums Employee Deposition Exhibit 90
`
`Ex 2004 November 19, 2013 email from Mike Neary (CHUMS0011439) -
`Chums Employee Deposition Exhibit 19
`
`Ex 2005 October 16, 2012 email from Tom Ferries (CHUMS0009759) - Chums
`Employee Deposition Exhibit 11
`
`Ex 2006 Composite exhibit (CHUMS0041263, 0041261, 0038190, 0007180,
`0041337, 0000232, 0005939, 0005938) - Chums Employee Deposition
`Exhibit 15
`
`Ex 2007 Composite exhibit (CHUMS0037691-92, 0038259-60, 0037995-96,
`0038000-02, 0038485-86, 0038502-03, 0038508-09, 0038617-18,
`0038020-21, 0010543-44, 0011439, 0011607, 0011605, 0011610-12,
`0011616-19, 0039647-50) - Chums Employee Deposition Exhibit 10
`
`Ex 2008 April 16, 2011 email from Jackie Arevalo (CHUMS0009438) - Chums
`Employee Deposition Exhibit 130
`
`June 25, 2010 email chain involving Sterling McMurrin
`(CHUMS0012659) - Chums Employee Deposition Exhibit 128
`
`Ex 2010 November 22, 2013 email exchange among Scott Whitley and Sterling
`McMurrin (CHUMS0011441) - Chums Employee Deposition Exhibit
`126
`
`Ex 2011 August 12, 2009 email exchange between Sterling McMurrin and
`Chuck Ferries (CEO) (CHUMS0051590) - Chums Employee
`Deposition Exhibit 111
`
`
`Ex 2009
`
`1/2686612.14
`
`iv
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`Ex 2012 March 2011 email exchange between Sterling McMurrin and John
`Spencer (CHUMS0009434) - Chums Employee Deposition Exhibit 129
`
`Ex 2013 May 17, 2012 email from Cass Schrock (CHUMS0038588) - Chums
`Employee Deposition Exhibit 131
`
`Ex 2014 February 26, 2014 email from Jeremy Hadden attaching summary of
`Chums projects (CHUMS0011970-76) - Chums Employee Deposition
`Exhibit 25
`
`Ex 2015 Excerpts from Beirne Chisolm Expert Report dated June 30, 2014
`
`Ex 2016 Excerpts from Lee Moradi Expert Report dated June 30, 2014
`
`Ex 2017 November 13, 2008 email from John Spencer (CHUMS0051096) -
`Chums Employee Deposition Exhibit 114
`
`Ex 2018 February 9, 2009 email from Mike Neary (CHUMS0051103) - Chums
`Employee Deposition Exhibit 116
`
`Ex 2019 May 4, 2009 email from Travis Owens (CHUMS0051552) - Chums
`Employee Deposition Exhibit 118
`
`Ex 2020 August 3, 2009 email from John Bercaw (CHUMS0051951) - Chums
`Employee Deposition Exhibit 64
`
`Ex 2021 February 8, 2010 email from Bercaw (CHUMS0012237-38) - Chums
`Employee Deposition Exhibit 112
`
`Ex 2022 April 19, 2010 email from John Bercaw (CHUMS0051702) - Chums
`Employee Deposition Exhibit 113
`
`Ex 2023 http//floateyes.comn/a - Chums Employee Deposition Exhibit 127
`
`Ex 2024 CHUMS 2013 Product Guide (CHUMS0013260-307) - Chums
`Employee Deposition Exhibit 29
`
`
`1/2686612.14
`
`v
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`Ex 2025 February 23, 2011 email from Tom Ferries (CHUMS0009271) - Chums
`Employee Deposition Exhibit 76
`
`Ex 2026 March 21, 2011 email from Mike Neary (CHUMS0034769) - Chums
`Employee Deposition Exhibit 75
`
`Ex 2027 November 3, 2009 email from John Krisik with license agreement
`(CABLZ-28688) - John Krisik Deposition Exhibit 17
`
`Ex 2028 November 25, 2009 email from John Krisik (CABLZ-28710) - John
`Krisik Deposition Exhibit 22
`
`Ex 2029 Excerpts from Denise Dauphin's Expert Report dated July 25, 2014
`
`Ex 2030 Chums Interrogatory Answer #1, April 22, 2014
`
`Ex 2031 March 27, 2010 email from Tom Ferries to Scott Whitley
`(CHUMS0012443) - Chums Employee Deposition Exhibit 34
`
`Ex 2032 March 1, 2011 email from Tom Ferries to Sterling McMurrin
`(CHUMS0009390) - Chums Employee Deposition Exhibit 39
`
`Ex 2033 May 13, 2011 e-mails between Tom Ferries and Laura Patten
`(CHUMS0038096) - Chums Employee Deposition Exhibit 40
`
`Ex 2034 May 26, 2011 email exchange between Tom Ferries, Ed Moody and
`Katie Campbell (CHUMS0038044) - Chums Employee Deposition
`Exhibit 41
`
`July 6, 2011 e-mail exchange between Tom Ferries, Frazier Sayre, Ed
`Moody and Katie Campbell (CHUMS0038164) - Chums Employee
`Deposition Exhibit 42
`
`Ex 2036 February 3, 2012 email from Tom Ferries (CHUMS0028236) - Chums
`Employee Deposition Exhibit 46
`
`Ex 2037 February 7, 2012 email from Frazier Sayre to Tom Ferries
`(CHUMS0038574) - Chums Employee Deposition Exhibit 47
`
`
`Ex 2035
`
`1/2686612.14
`
`vi
`
`

`

`Patent No. 8,366,268
`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`Patent Owner’s Preliminary Response
`Ex 2038 August 20, 2012 email from Tom Ferries (CHUMS0038925,0038824-
`Ex 2038 August 20, 2012 email from Tom Ferries (CHUMSOO38925,0038824—
`25) - Chums Employee Deposition Exhibit 50
`25) - Chums Employee Deposition Exhibit 50
`
`Ex 2039 August 6, 2012 email from Tom Ferries (CHUMS0038828) - Chums
`Ex 2039 August 6, 2012 email from Tom Ferries (CHUMSOO38828) - Chums
`Employee Deposition Exhibit 48
`Employee Deposition Exhibit 48
`
`Ex 2040 August 13, 2012 email from Katie Burns (CHUMS0038892) - Chums
`Ex 2040 August 13, 2012 email from Katie Burns (CHUMSOO38892) - Chums
`Employee Deposition Exhibit 49
`Employee Deposition Exhibit 49
`
`Ex 2041 August 9, 2012 email exchange between Fletch Robins and Tom
`Ex 2041 August 9, 2012 email exchange between Fletch Robins and Tom
`Ferries (CHUM0038848) - Chums Employee Deposition Exhibit 51
`Ferries (CHUM0038848) - Chums Employee Deposition Exhibit 51
`
`Ex 2042 May 10, 2010 email from Mike Neary (CHUMS0012429) - Chums
`Ex 2042 May 10, 2010 email from Mike Neary (CHUMSOOl2429) - Chums
`Employee Deposition Exhibit 91
`Employee Deposition Exhibit 91
`
`Ex 2043 2009 ICAST New Product Showcase Official Rules (ASA00006-09) -
`2009 ICAST New Product Showcase Official Rules (ASA00006-09) -
`Ex 2043
`ASA Deposition Exhibit 3
`ASA Deosition Exhibit 3
`“Sportfishing Industry Awards 2009 ‘Best of Show’ Honors”
`“Sportfishing Industry Awards 2009 ‘Best of Show’ Honors”
`(ASA00216-18) - ASA Deposition Exhibit 5
`(ASA00216-18) - ASA Deposition Exhibit 5
`
`“ICAST 2009: Where Sportfishing Means Business” (ASA00539-41) -
`“ICAST 2009: Where Sportfishing Means Business” (ASA00539-41) -
`ASA Deposition Exhibit 6
`ASA Deposition Exhibit 6
`
`“ICAST 2009 Highlights”, http://asafishing.org - ASA Deposition
`“ICAST 2009 Highlights”, http://asafishing.org - ASA Deposition
`Exhibit 7
`Exhibit 7
`
`Ex 2047 Croakies 1994 Catalog - John Krisik Deposition Exhibit 4
`
`Ex 2048 Croakies 1998 Catalog - John Krisik Deposition Exhibit 5
`
`Ex 2049 Croakies 2001 Catalog - John Krisik Deposition Exhibit 6
`
`Ex 2050 Croakies World Cords Photo - John Krisik Deposition Exhibit 7
`
`Ex 2051 Cablz brochure (CABLZ-00611-12)
`
`Ex 2052 Fishing Tackle Retailer, page 52, July 2010 Article, Top Picks: Most
`Fishing Tackle Retailer, page 52, July 2010 Article, Top Picks: Most
`Ex 2052
`Innovative Products of 2010 (CABLZ-00128-29)
`Innovative Products of 2010 (CABLZ—00128-29)
`
`
`
`
`Ex 2044
`Ex 2044
`
`Ex 2045
`Ex 2045
`
`Ex 2046
`Ex 2046
`
`1/2686612.14
`1/2686612.14
`
`vii
`
`Vii
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`Ex 2053 Excerpts from the Deposition of Sterling McMurrin
`
`Ex 2054 Excerpts from the Deposition of Tom Ferries
`
`Ex 2055 Excerpts from the Deposition of Charles Ferries
`
`Ex 2056 Excerpts from the Deposition of John Bercaw
`
`Ex 2057 Excerpts from the Deposition of Mike Neary
`
`Ex 2058 Excerpts from the Deposition of John Krisik
`
`Ex 2059 Excerpts from the Deposition of Kenneth Andres
`
`Ex 2060 Excerpts from the Deposition of Michael Nussman
`
`
`
`
`1/2686612.14
`
`viii
`
`

`

`
`
`INTRODUCTION
`
`Patent Owner Cablz, Inc. (“Cablz”) respectfully submits this Preliminary
`
`Response to the Petition for Inter Partes Review of U.S. Patent No. 8,366,268 (the
`
`“‘268 Patent”) filed by Petitioners Chums, Inc. (“Chums”) and Croakies, Inc.
`
`(“Croakies”) (collectively referred to as “Petitioners”). The Petition is due to be
`
`denied because Petitioners have not met their burden of showing that there is a
`
`reasonable likelihood that they would prevail with respect to at least one of the
`
`claims challenged in the Petition. 35 U.S.C. § 314(a). Cablz has sued both of
`
`Petitioners in the United States District Court for the Northern District of Alabama,
`
`and discovery has been completed in the case against Chums. By agreement of the
`
`parties, the Chums case was set specially for a jury trial on December 1, 2014, but
`
`the Court recently stayed that case as well as the Croakies case, pending the
`
`Board’s decision on the Petition.
`
`SUMMARY OF ARGUMENT
`
`
`
`The Board should deny the Petition because the prior art cited by Petitioners
`
`fails to teach—in any possible combination—each and every element of the
`
`invention of claims 1-17 of the ‘268 Patent. Each claim requires two temple
`
`retainers connected to a resilient cable or member, such that when this combination
`
`is attached to a pair of eyeglasses, the cable extends rearward from the head and is
`
`
`
`1
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`suspended from the neck of the wearer. Petitioners’ primary reference, Monroe,
`
`teaches a stiff, stout, heavy monofilament line that is hand tied to a length of a
`
`rigid plastic eyeglass temple. There is no temple retainer, and consequently, there
`
`is no connection of the monofilament to a temple retainer. The stiff monofilament
`
`of Monroe—supported by a length of the rigid plastic of the eyeglass temple to
`
`which it is bound—sticks straight out at all times behind the head and never
`
`touches the head. The other cited references teach entirely different structures:
`
`flexible, soft ropes and cords with their tips glued or molded to a shallow opening
`
`in a temple retainer such that the ropes or cords hang down. These references
`
`explicitly teach that these soft cords are cinched or otherwise snugged against the
`
`head—the precise opposite of Monroe’s object. No cited reference teaches a
`
`resilient cable as described and claimed in the ‘268 Patent connected to a temple
`
`retainer. This combination is entirely missing from the art. Even if one ignored
`
`the fact that all of Petitioners’ secondary references are at cross purposes with and
`
`expressly teach away from Monroe, there is nothing in any of them to suggest that
`
`if their soft flexible cords were replaced by Monroe’s stiff heavy monofilament,
`
`the combination would allow Monroe’s monofilament to extend rearward from the
`
`head and be suspended above the neck. Monroe, after all, requires an elongate
`
`rigid support structure for his heavy monofilament—a structure entirely missing
`
`from the other references.
`
`1/2686612.14
`
`2
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`Next, even if one assumed the prior art taught all elements of the claimed
`
`invention, Patent Owner Cablz has presented substantial evidence of three
`
`secondary considerations of nonobviousness: copying by others, commercial
`
`success, and industry praise. Petitioners—though aware of this evidence before
`
`filing their petition—failed to rebut any of it. Moreover, Petitioners, which are
`
`leading designers and manufacturers of eyewear retainers, employ multiple persons
`
`of ordinary skill in the art. These actual persons of ordinary skill were actually
`
`aware of the actual prior art before the Board in the Petition long before the
`
`priority date of the ‘268 Patent, including specifically the hand-tied monofilament
`
`device described in the Monroe reference. Despite having decades of experience
`
`in design of eyewear retainers, actual knowledge of the prior art before the Board,
`
`and the strongest of incentives to make the combination now urged as obvious by
`
`Petitioners, Petitioners’ multiple persons of ordinary skill failed to do so until they
`
`saw Patent Owner’s device on the market. When they saw the invention of the
`
`‘268 Patent, they copied it. Petitioners’ own actions provide overwhelming and
`
`unprecedented evidence of non-obviousness.
`
`BACKGROUND
`
`As explained in the background of the ‘268 Patent, eyewear users have long
`
`attached “strings, cloth-based retainers, lightweight chains, and small ropes to
`
`eyeglasses” so they can be conveniently hung from the neck when not in use. Ex.
`
`1/2686612.14
`
`3
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`1001, 1:12-16. The ‘268 Patent cites as an example of these devices a “Croakies”
`
`retainer, a popular neoprene retainer with tubular end portions that slip over the
`
`ends of the eyeglass temples. Id. The problem with these and similar retainers is
`
`that the retention strap lays directly on wearer’s neck or shirt collar and could
`
`become ensnared. Id. at 1:48-55. Further, when the eyeglasses were worn around
`
`the neck, the materials these old retainers were made of could become soiled or
`
`discolored by sweat, suntan lotion, and the like. Id. at 1:56-67.
`
`The ‘268 Patent disclosed and claimed a new eyewear retention device made
`
`of resilient cable with a smooth plastic covering connected on either end to temple
`
`retainers that could be easily slid over the ends of the temples of pair of glasses.
`
`Id. at 2:48-66. When the glasses were worn by the user, instead of the strap laying
`
`on the collar or neck, the combination of the resilient cable connected to the temple
`
`retainer allowed the cable to extend rearward from the head in the elevated arc
`
`position shown in Figure 4 below, above the wearer’s rear neck and lower head
`
`area and not contacting the collar. Id. at 4:1-8 & Fig. 4.
`
`1/2686612.14
`
`4
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`
`CLAIM CONSTRUCTION
`
`
`
`“Resilient Cable”
`
`The Board gives each claim “its broadest reasonable construction in light of
`
`the specification of the patent in which it appears.” 37 C.F.R. § 42.100 (emphasis
`
`added). Petitioners propose construing only the term “resilient cable” of the ‘268
`
`Patent. Paper 1 at 8. In doing so, however, and contrary to the foregoing rule,
`
`Petitioners erroneously suggests that the Board take cues from the specifications of
`
`other patents, namely U.S. Patents 7,845,795 and 8,092,009, which are different
`
`from that of the ‘268 Patent. At any rate, Petitioners conclude that the claim term
`
`“ ‘resilient cable’ is reasonably interpreted to mean, at a minimum, ‘a plastic
`
`coated wound wire cable or a replacement member exhibiting resiliency
`
`characteristics similar to a plastic coated wound wire cable, such as a resilient
`
`plastic or carbon fiber replacement member.’ ” Paper 1, at 13.
`
`1/2686612.14
`
`5
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`Petitioners’ definition of “resilient cable” is somewhat circular and
`
`incomplete, in that while it addresses the meaning of “cable,” it fails to provide any
`
`meaning to the term “resilient” in the context of the specification of the ‘268
`
`Patent. The ‘268 Patent explains that the plastic coated wound metal embodiment
`
`of the cable “is of sufficient diameter and internal wiring resiliency such that its
`
`shape is resiliently biased toward a zero axis deflection orientation. In other
`
`words, the cable does not easily exhibit deflection memory, as one would find in a
`
`solid copper or aluminum wire of equal diameter, and resists attempts to deform
`
`the cable and maintains a linear shape in all weather conditions.” Ex. 1001, at
`
`2:52-58. When attached to a pair of glasses as shown in Fig. 4, the patentee states:
`
`“Importantly, the resiliency of the cabling 11 in combination with the secure
`
`structure of retention tubing 12, with its inherent resiliency, creates an internal
`
`resilience within cabling 11 such that the cable maintains an elevated arc position
`
`above a wearer’s rear neck and lower head area. Therefore, due to the internal
`
`resiliency of the cable, and the positioning of the tubing on the eyeglass temples,
`
`the cabling does not contact a wearer’s back or collar, or other vestment worn by a
`
`user, but instead maintains a spaced position extending backwards from the user.”
`
`Id. at 3:66-4:8. All claims require that when the combination of the cable
`
`connected to two temple retainers is attached to eyeglasses and worn over the ears
`
`of the wearer, the cable “extends rearward from the head of the wearer and is
`
`1/2686612.14
`
`6
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`suspended off the neck of the wearer.” Ex. 1001, Claims 1, 9. This requirement of
`
`the resilient cable having a degree of stiffness is missing from Petitioner’s
`
`proposed definition of “resilient cable.” Therefore, “resilient” should be construed
`
`to mean “having sufficient stiffness to maintain its shape but not easily exhibiting
`
`deflection memory, as one would find in a solid copper or aluminum wire of equal
`
`diameter.”
`
`“Temple Retainer”
`
`All claims of the ‘268 Patent require the resilient cable or member to be
`
`connected to two “temple retainers.” See Ex. 1001 at Claims 1, 9. Petitioners do
`
`not explicitly propose a definition for “temple retainer” in their section on claims
`
`construction, although they explain in the context of the prior art that “the ‘268
`
`patent uses the term ‘temple retainers’ for the components of an eyewear retention
`
`device that are `attached to a pair of glasses.’” Paper 1 at 23. While accurate, this
`
`description is incomplete.
`
`The ‘268 Patent explains that the eyewear retention device has “retention
`
`tubes 12 at each end of the cable,” each of which “include a temple retention
`
`opening 18 having sufficient diameter to pass over the end portions of a typically
`
`sized eyeglass temple. Retention tube 12 opening 18 is also sized to exhibit certain
`
`friction characteristics to allow easy sliding of the retention tubing 12 onto the end
`
`portion of a typical eyeglass temple, while providing sufficient frictional qualities
`
`1/2686612.14
`
`7
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`to avoid easy removal.” Ex. 1001 at 2:59-66. The claim term “temple retainer”
`
`corresponds to the described retention tubing and clearly is a component that is
`
`removably attached to a pair of eyeglass temples. “Temple retainer” therefore
`
`should be construed to include “a hollow structure sized to be slid onto and off of
`
`the end portions of an eyeglass temple with sufficient frictional qualities to avoid
`
`easy removal from the eyeglass temples.”
`
`DESCRIPTION OF PRIOR ART ON WHICH PETITIONERS RELY
`
`
`
`Petitioners rely on five references for their proposed rejections: Bill Monroe,
`
`“Outdoor folks don’t use trendy glasses-holders,” The Oregonian, July 4, 1991
`
`(“Monroe,” Ex. 1002); U.S. Pat. No. 6,941,619 to Mackay et al. (“MacKay,” Ex.
`
`1003), U.S. Pat. No. 6,764,177 to Chisolm (“Chisolm,” Ex. 1005), U.S. Pat. No.
`
`5,181,052 to McClellan (“McClellan,” Ex. 1006), and U.S. Pat. Pub. No.
`
`2007/0046889 to Miller (“Miller,” Ex. 1004). Each is discussed below.
`
`A. Monroe (Paper 1, Ex. 1002).
`
`Monroe, a newspaper article, describes various types of eyewear retainers
`
`made from “fishing line.” Monroe describes a device made by fisherman Mark
`
`Sosin who “[doesn’t] like light line that falls on my neck on the heat.” Instead,
`
`“[Sosin] bends a length of 300-pound test monofilament so thick and stiff that the
`
`only knot it would take would be big enough to tie up a small ship. . . . He cuts off
`
`a slice of the heavy line and ties it to the frame by wrapping dental floss around it
`
`1/2686612.14
`
`8
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`and finishes off the knot as if he were tying a fly.” Ex. 1002, p.1 (emphasis
`
`added). “His retainer never hangs up and never drapes around his neck. Indeed, it
`
`sticks straight out behind his head at all times the glasses are worn . . . .” Id. The
`
`caption under Monroe’s photograph of Sosin’s device describes it as using “stout
`
`fishing line” and shows that stout line is tightly wrapped for at least an inch along
`
`the length of the temple piece of the sunglasses with dental floss. Id. Sosin heats
`
`the end of this thick, stiff monofilament so it that expands and does not slip
`
`through the fishing knot tied with dental floss.
`
`
`
`Notably, Monroe does not disclose a temple retainer, nor do Petitioners
`
`contend that it does. Indeed, it appears from Monroe that the heavy, thick
`
`monofilament is tied by hand to the rigid temple piece of the glasses such that the
`
`dental floss must be cut to remove the monofilament from the eyeglasses; the
`
`device is thus a one-time permanent fixture to the glasses which can be removed
`
`only by destroying it. Monroe describes the need to “bend” into place the 300-
`
`pound test monofilament, which is “so thick and stiff that the only knot it would
`
`take would be big enough to tie up a small ship,” and the photograph shows at least
`
`an inch of tightly wound dental floss needed to bind the monofilament to the
`
`glasses (perhaps scores of wraps around the stout line). It is apparent the stiff,
`
`heavy line of Monroe exerts a substantial torque on the dental floss and does not
`
`want to stay on the glasses. Indeed, even the poor quality photograph of Monroe
`
`1/2686612.14
`
`9
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`shows the heavy monofilament bulging under the dental floss. As to the floss
`
`itself, the tightly wound wraps form an inflexible shell encasing the monofilament.
`
`In sum, Monroe teaches lashing down at least an inch-long section of the
`
`heavy monofilament
`
`to
`
`the rigid, hard plastic of
`
`the eyeglass
`
`temple.
`
`Consequently, the heavy monofilament is supported by both the rigid structure of
`
`the eyeglass temple to which it is permanently affixed and the hard shell of the
`
`tightly wrapped dental floss encasing it. Monroe thus teaches a connection of the
`
`monofilament to the eyeglasses constituting an elongate, rigid, support structure
`
`binding the two permanently together. It is with this rigid support structure that
`
`Monroe connects monofilament to eyeglasses to achieve the alleged “off the neck”
`
`feature.
`
`B. MacKay (Ex. 1003)
`
`As shown in Fig. 2A below, MacKay discloses a typical prior art eyewear
`
`retainer comprising a “cord” having its “distal tip” glued to two “connectors,” the
`
`rope having a “slide” for cinching “the retainer against the user’s head, [so that] the
`
`retainer maintains eyeglass on the user’s face in a desired position.” Ex. 1003, at
`
`1:18-21; 2:38.
`
`1/2686612.14
`
`10
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`
`
`
`The cord in MacKay as depicted in the figures is a braided rope, see, e.g., id.
`
`Figs. 3A and 3B, and the device may optionally comprise a slider to cinch the cord
`
`snugly against the user’s head. Id. 5:18-21. However, in embodiments where no
`
`slider is used, the cord is “worn about the neck while the eyeglass is in use,” id.
`
`5:28-33, clearly indicating that the cord is a highly flexible member with no
`
`significant stiffness or resilience, as shown in the figures. MacKay says the cord
`
`for example “may comprise a flexible braided line, a wire, a chain, a rope, a string,
`
`an elongate elastomeric member, a leather or cloth member, a strand, or a variety
`
`of other elongate members comprised of a variety of different materials that can
`
`serve as a retainer cord.” (id. 5: 37-43). MacKay expressly teaches that just the
`
`“distal tip 14a of the cord is mounted within a cord receiving chamber of the
`
`connector.” Id. 2:38-40 & Fig. 3A.
`
`MacKay’s braided line, wire, string, leather or cloth member, or strand are
`
`precisely what the ‘268 Patent teaches away from (Ex. 1001, 1:12-16) and clearly
`
`1/2686612.14
`
`11
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`do not disclose a resilient cable or resilient member with stiffness to stay-off-the-
`
`neck as disclosed in the ‘268 application, nor does MacKay suggest the use of a
`
`thick, heavy, monofilament that could be used to “tie up a small ship.” In fact,
`
`MacKay teaches that it is advantageous to secure the glasses actively to the face
`
`with “a slider 54 (FIG. 1) configured to selectively cinch retainer 10 snugly against
`
`the head of a user. Slider 54 has first and second tubular chambers 56, 58 through
`
`which respective cord portions pass. Slider 54 slides over opposing portions of
`
`cord 12, then cinches adjacent the head of a user, thereby causing retainer 10 to
`
`tighten on the user’s head.” Id. 5:19-25. One would not use the “heavy,” “thick,”
`
`“stiff,” “stout” line of Monroe (which must be “bent” actively to tie it down to the
`
`eyeglass temples) to cinching eyeglasses against the head with a slider as taught by
`
`MacKay. MacKay’s tightening the glasses to secure them to the user’s face is a
`
`different object than that of the ‘268 patent. In fact, McKay’s active tightening
`
`against the head of a floppy cord with a cinch teaches away from the passive stay-
`
`off-the-neck property of the ‘268 patent.
`
`As shown in Fig. 3A, MacKay, which teaches inserting just the “tip” of the
`
`flexible cord into the temple retainer, does not teach a temple retainer or
`
`connection suitable to hold in place the stiff heavy line of Monroe—at least an inch
`
`of which must be tied down with inflexible tightly wound floss to a rigid length of
`
`the eyeglass temple—to allow it to extend from the head and not touch the neck.
`
`1/2686612.14
`
`12
`
`

`

`Patent No. 8,366,268
`Patent Owner’s Preliminary Response
`C. Chisolm (Ex. 1005)
`
`Chisolm is redundant of MacKay. Like MacKay, Chisolm discloses an
`
`eyewear retainer with temple retainers, referred to as gripping members 18, 20,
`
`connected to a flexible cord, referred to as “filament member 12,” which would
`
`drape down the wearer’s neck when worn. Ex. 1005 at 3:13-18 and Fig. 6 (below).
`
`
`
`Like MacKay, Chisolm’s filament member 12 may be optionally provided
`
`with an “adjustment member 26” (or slider) with a pair of openings 28 through
`
`which the filament member 12 passes so the slider may be slid on the filament
`
`member toward the gripping members to bring the glasses “closer to the wearer’s
`
`body, thereby securing the glasses to the face.” Id. 3:37-41. Like MacKay,
`
`Chisolm states that the filament may be of “any suitable material” including
`
`“metal, woven or non-woven cord that