Paper No._________
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`TEMPUR SEALY INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`SELECT COMFORT CORPORATION,
`Patent Owner.
`
`______________
`
`Case IPR2014-01419
`Patent 5,904,172
`
`______________
`
`PATENT OWNER'S PRELIMINARY RESPONSE
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`
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`i
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`

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`I.
`
`INTRODUCTION ........................................................................................ 1
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`II.
`
`IPR SHOULD NOT BE INSTITUTED BECAUSE, CONTRARY
`TO THE RULES, THE PETITION FAILS TO ARTICULATE A
`REASON WITH RATIONAL UNDERPINNING FOR
`COMBINING THE CITED REFERENCES .............................................. 4
`
`III. SUMMARY OF THE PATENTED TECHNOLOGY ............................. 12
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`IV. THE '172 PATENT'S IMPROVEMENTS OVER
`CONVENTIONAL SYSTEMS .................................................................. 14
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`V. CLAIM CONSTRUCTION ........................................................................ 18
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`
`
`
`
`
`
`A.
`
`The Preamble of the Claims is Legally Limiting ................................ 20
`
`Broadest Reasonable Interpretation of “Pressure Monitor
`B.
`Means” ........................................................................................................... 20
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`Broadest Reasonable Interpretation of the “Monitoring Terms”
`C.
`[Claims 2-3, 6, 9, 12, 13, 16 and 20] ........................................................... 26
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`VI. OVERVIEW OF THE PRIOR ART RELIED UPON BY
`PETITIONER .............................................................................................. 31
`
`
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`
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`A. U.S. Pat. No. 5,509,154 to Schafer et al. ("Schafer et al.") (Pet.
`Ex. 1009) ........................................................................................................ 32
`
`B. U.S. Pat. No. 3,784,994 to Kery ("Kery") (Pet. Ex. 1006) ................. 34
`
`C. U.S. Pat. No. 5,235,713 to Guthrie et al. ("Guthrie et al.") (Pet.
`Ex. 1008) ........................................................................................................ 37
`
`D. U.S. Pat. No. 4,527,298 to Moulton ("Moulton") (Petitioner Ex.
`1007) ............................................................................................................. 43
`
`VII. THE PETITIONER HAS NOT MET ITS BURDEN OF
`PROVING A REASONABLE LIKELIHOOD THAT IT WOULD
`PREVAIL IN SHOWING UNPATENTABILITY OF AT LEAST
`ONE CLAIM. ............................................................................................... 44
`
`A. Anticipation ......................................................................................... 44
`
`B. Obviousness ......................................................................................... 44
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`i
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`C.
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`Preliminary Response to Challenge No. 1 .......................................... 46
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`1. Claim 6 ........................................................................................... 47
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`2. Claim 16 ......................................................................................... 51
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`3. Claims 20 and 21 ............................................................................ 52
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`D.
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`Preliminary Response to Challenge No. 2 .......................................... 53
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`E.
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`F.
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`1. Claims 2 and 3 ................................................................................ 54
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`2. Claims 12 and 13 ............................................................................ 55
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`3. Claims 22, 23, 24 and 25 ................................................................ 55
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`Preliminary Response to Challenge No. 3 .......................................... 56
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`Preliminary Response to Challenge No. 4 .......................................... 58
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`VIII. CONCLUSION ............................................................................................ 60
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`ii
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`
`
`TABLE OF AUTHORITIES
`
`
`CASES AND BOARD DECISIONS
`
`Page(s)
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
`296 F.3d 1106 (Fed. Cir. 2002) ...................................................................................... 20
`
`Cisco v. C-Cation Technologies,
`IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ........................................... 7
`
`Fidelity National v. DataTreasury,
`IPR 2014-00491, Paper 9 (P.T.A.B. Aug. 12, 2014) ........................................ 6, 7
`
`Generation II Orthotics Inc. v. Med. Tech. Inc.,
`263 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 22
`
`Golight, Inc. v. Wal-Mart Stores Inc.,
`355 F.3d 1327 (Fed. Cir. 2004) .......................................................................... 24
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 45
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .................................................................... 46, 54
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 45
`
`In re Grasselli,
`713 F.2d 731 (Fed. Cir. 1983) ............................................................................ 45
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 5
`
`In re Translogic Tech.,
`504 F. 3d 1249 (Fed. Cir. 2007) ......................................................................... 19
`
`InTouch Technologies, Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ............................................................................ 8
`
`
`
`iii
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`

`
`JVW Enterprises, Inc. v. Interact Accessories, Inc.,
`424 F.3d 1324 (Fed. Cir. 2005) .................................................................... 22, 24
`
`Kemco Sales, Inc. v. Control Papers Co.,
`208 F.3d 1352 (Fed. Cir. 2000) .......................................................................... 44
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .....................................................................................passim
`
`Medical Instrumentation & Diagnostics Corp. v. Elekta AB,
`344 F3d. 1205 (Fed. Cir. 2003) .......................................................................... 20
`
`Micro Chem., Inc. v. Great Plains Chem. Co.,
`194 F. 3d 1250 (Fed. Cir. 1999) ......................................................................... 22
`
`Micro Motion, Inc. v. Invensys Systems, Inc.,
`IPR2014-0393, Paper 16 (P.T.A.B. Aug. 4, 2014) ............................................... 7
`
`Odetics Inc. v. Storage Tech. Corp.
`185 F. 3d 1259 (Fed. Cir. 1999) ......................................................................... 44
`
`O.I. Corp. v. Tekmar Co.,
`115 F.3d 1576 (Fed. Cir. 1997) .......................................................................... 30
`
`Omega Eng'g, Inc, v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) .......................................................................... 22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 28
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) .................................................................... 20, 29
`
`Power-One, Inc. v. Artesyn Techs., Inc.,
`599 F.3d 1343 (Fed. Cir. 2010) .................................................................... 32, 45
`
`Seachange Int'l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005) .......................................................................... 30
`
`Shaw Industries Group, Inc. v. Automated Creel Sys., Inc.,
`IPR2013-00584, Paper 16 (P.T.A.B. Dec. 21, 2013) ........................................... 7
`
`
`
`iv
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`

`
`Synopsis v. Mentor,
`IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) ............................................ 9
`
`Tasco, Inc. v. Pagnani,
`IP2013-00103, Paper 6 (May 23, 2013) ............................................................... 9
`
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 44
`
`Wowza Media Sys., LLC, et al. v. Adobe Sys. Inc.
`IPR2013-00054, Paper 16 (July 13, 2013) ......................................................... 10
`
`STATUTES
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`35 U.S.C. §103(a) .................................................................................... 3, 46, 53, 58
`
`35 U.S.C. §112, ¶6 ................................................................................................... 20
`
`RULES AND REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 18
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 9
`
`37 CFR § 42.6(a)(3) ............................................................................................... 6, 9
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`37 CFR § 42.22(a)(2) ..................................................................................... 5, 6, 7, 9
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`37 CFR § 42.24(a)(1)(i) ......................................................................................... 6, 9
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`37 CFR § 42.104(b)(4)-(5) ..................................................................................... 5, 9
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`77 Fed. Reg. 48,756 ................................................................................................. 19
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`v
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
`
`I.
`
`INTRODUCTION
`
`
`
`
`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`The Patent Owner, Select Comfort Corporation (“Patent Owner”), develops,
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`manufactures and sells unique air bed products under the Sleep Number brand.
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`Patent Owner’s Sleep Number® bed is an adjustable air bed that allows the
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`firmness on each side to be adjusted independently of the other side, allowing each
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`user to determine his or her own precise firmness setting.
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`The Patent Owner’s Sleep Number® products are protected by hard-earned
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`patents, including the ‘172 Patent. The ‘172 Patent discloses and claims an
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`improved “valve enclosure assembly,” a critical component of an adjustable air
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`bed because it provides a means to adjust the firmness of either side of the bed by
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`adding or subtracting air from the bladder located inside the bed. A key
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`improvement of this valve enclosure assembly is that it includes pressure monitor
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`means that monitors the pressure in the air bladders during the inflate/deflate cycle
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`to achieve the desired firmness setting for each side of the bed.
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`The conventional systems described in the background of the ‘172 Patent
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`posed several problems, including inefficiencies caused by failure to continuously
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`monitor the pressure in the bladders during the inflate/deflate cycles, overheating
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`caused by the need for large solenoids to operate the valves and air leaks caused by
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`high pressure on the sealing disks of the valves, resulting in slow deflation of the
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`1
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`

`

`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`bladder. Ex. 1001, Col. 2, lines 4-33. The ‘172 Patent teaches and discloses a
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`
`
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`valve enclosure assembly that improves over the conventional systems described in
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`the background by providing a pressure sensor for monitoring the pressure in the
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`air bladders during the inflate/deflate cycle, minimizing leaks, reducing the risk of
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`overheating, and increasing product efficiencies by reducing assembly time. Id. at
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`Col. 2, line 35 to Col. 3, line 2.
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` The ‘172 Patent emerged from an ex parte reexamination in January 2014.
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`The examiner confirmed the validity of nearly all the claims in the ‘172 Patent,
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`including the majority of those Petitioner puts at issue. The Petitioner now seeks
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`inter partes review of claims 2-3, 6, 9, 12-13 and 20-25. The Patent Trial and
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`Appeal Board (the “Board”), however, should decline to initiate inter partes
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`review for two key reasons.
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`First, as a threshold issue cutting across Petitioner’s entire challenge, the
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`Petition fails to articulate a reason with rational underpinning for combining the
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`references claimed in its Petition. Instead, the Petition contains numerous
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`conclusory statements that a skilled person would find combinations obvious, but
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`fails to articulate any support for such conclusions. Indeed, Petitioner never cites
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`to a single column or line number of the prior art references it asserts renders the
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`claims of the '172 Patent obvious. Instead, Petitioner improperly incorporates an
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`2
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`

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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`80 page declaration, which in turn references a 44 page claim chart, to support its
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`
`
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`arguments—a tactic prohibited by the rules on incorporation of arguments from
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`one document to another. The Board has repeatedly denied institution of petitions
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`using similar tactics and attempting to circumvent page limitations. The Board
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`should similarly refuse to initiate inter partes review in this case.
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`Second, the Petitioner fails to satisfy its burden of showing a reasonable
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`likelihood that it would prevail in showing unpatentability of at least one claim.
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`Petitioner alleges that claims 6, 16, and 20-21 are obvious under §103(a) based on
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`Kery combined with Guthrie et al. This combination, however, would not result in
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`monitoring of the pressure in the air bladders during the inflate/deflate cycle as
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`claimed in claims 6, 16, and 20-21. To the contrary, Guthrie et al. teaches away
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`from a pressure sensor that monitors pressure in the manifold and air bags at the
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`same time. Moreover, combining Kery with Guthrie et al. would result in an
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`impractical, inefficient and cumbersome invention that would not make claims 6,
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`16, and 20-21 obvious or address the prior art problems solved by the ‘172 Patent.
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` Petitioner also alleges that claims 2-3, 12-13 and 22-25 are obvious based
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`on Kery in view of Guthrie et al. and further in view of Moulton. Again, Kery
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`combined with Guthrie et al. does not disclose, teach or suggest pressure
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`
`
`3
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`

`

`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`monitoring means for monitoring or continuously monitoring the pressure in the air
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`
`
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`bladders during an inflate/deflate cycle, nor does Moulton cure the deficiency.
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` Finally, Petitioner challenges Claim 9 as being anticipated by Kery or in the
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`alternative obvious over Kery in view of Guthrie et al. But Kery does not
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`anticipate Claim 9 because it does not provide a "commanded" pressure. Similarly,
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`the combination of Kery and Guthrie et al. does not make claim 9 obvious because
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`the combination do not provide pressure sensor means that monitors pressure in the
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`the air bladders during the inflate/deflate cycle.
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` Thus, even if the Petitioner had properly articulated a rationale for
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`combining the cited references, the Petitioner has not met its burden of proving to a
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`reasonable likelihood that it would prevail in showing unpatentability of at least
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`one claim. Accordingly, the Patent Owner respectfully requests that the Board
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`decline to initiate inter partes review (“IPR”) of any claim of the ‘172 Patent.
`
`IPR SHOULD NOT BE INSTITUTED BECAUSE, CONTRARY TO
`II.
`THE RULES, THE PETITION FAILS TO ARTICULATE A REASON
`WITH RATIONAL UNDERPINNING FOR COMBINING THE CITED
`REFERENCES
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`As a threshold matter, the Petition should be denied in its entirety because it
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`fails to articulate why one skilled in the art would have combined the cited
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`references. The rules require that “[e]ach petition…must include…A full statement
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`of the reasons for the relief requested, including a detailed explanation of the
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`4
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`significance of the evidence.” 37 CFR § 42.22(a)(2); see also 37 CFR §
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`
`
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`42.104(b)(4)-(5).
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` As explained by the Supreme Court, “[R]ejections on
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`obviousness grounds cannot be sustained by mere conclusory statements; instead,
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`there must be some articulated reasoning with some rational underpinning to
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`support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In
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`this case, the Petition only and insufficiently includes conclusory statements that
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`the prior art references disclose various claim elements and that it would have been
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`obvious to combine the references, without actually articulating why it would have
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`been obvious to combine the references.
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`Claim 16 is exemplary. The Petition argues that “Each of the elements of
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`claim 16 is disclosed in Kery and/or taught by Guthrie" allegedly because "the
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`skilled person would have found it obvious to automate Kery in view of Guthrie."
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`Pet. at p. 12. The Petition, however, asserts the naked conclusion that “the skilled
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`person would have found it obvious” without actually articulating a reason for
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`why the person would have found it obvious, let alone a reason with rational
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`underpinning as required by the law. Two pages later, the Petition already assumes
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`that the Kery reference should be combined with the Guthrie reference, repeatedly
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`stating: “The automated system of Kery+Guthrie would [have certain claimed
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`5
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`

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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`structure]” without articulating why one would have been motivated to combine
`
`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`
`
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`Kery and Guthrie at all, let alone as claimed in the ‘172 patent. Pet. at p. 14-15.
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`Similarly, at pages 12-15, the Petition cites generally to approximately 18
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`pages of an 80 page declaration, which in turn cites to the entirety of a separate 44
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`page single-spaced claim chart — none of which is included in the Petition.
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`Incorporating arguments from these additional documents is prohibited by the
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`rules. 37 CFR § 42.6(a)(3) (“Arguments must not be incorporated by reference
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`from one document into another document”); see also 37 CFR § 42.24(a)(1)(i)
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`(limiting the size of the Petition to “60 pages”). The Petitioner cannot circumvent
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`the requirements of 37 CFR § 42.22(a)(2) by filing a conclusory Petition with
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`additional arguments in separate declarations and claim charts.
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`The Board has previously denied institution of Petitions that fail to include
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`all argument and analysis in the Petition. For example, in Fidelity National v.
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`DataTreasury the Board considered a deficient Petition, stating:
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`Under our rules, the petition must contain a “full statement of
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`the reasons for the relief requested, including a detailed explanation of
`
`the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). We,
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`therefore, decline to consider
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`information presented
`
`in a
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`supporting declaration, but not discussed sufficiently in a petition;
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`among other reasons, doing so would permit the use of declarations to
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`6
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
`
`
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`
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`circumvent the page limits that apply to petitions. For the same
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`reasons, our rules prohibit arguments made in a supporting
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`document from being incorporated by reference into a petition.
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`See 37 C.F.R. § 42.6(a)(3).
`
`
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`IPR2014-00491, Paper 9, p. 8 (P.T.A.B. Aug. 13, 2014) (emphasis added); see also
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`Micro Motion, Inc. v. Invensys Systems, Inc., IPR2014-0393, Paper 16, p. 16
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`(P.T.A.B. Aug. 4, 2014) (refusing to consider argument improperly incorporated
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`by reference from claim chart, where the obviousness analysis was lacking in the
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`petition); Shaw Industries Group, Inc. v. Automated Creel Sys., Inc., IPR2013-
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`00584, Paper 16, p. 10 n.5 (P.T.A.B. Dec. 21, 2013) (refusing to consider argument
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`improperly incorporated by reference). In Cisco v. C-Cation Technologies, the
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`Board stated that the “practice of citing the Declaration to support conclusory
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`statements that are not otherwise supported in the Petition also amounts to
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`incorporation by reference.” IPR2014-00454, Paper 12, p. 9 (P.T.A.B. Aug. 29,
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`2014). The Board also stated that “citing to other claim charts in another document
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`also amounts to incorporation by reference.” Id. The rules requiring that all
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`arguments be present in the petition may not be circumvented.
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`The Petition does not articulate why it would have been obvious to combine
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`Kery with Guthrie (or Moulton) prior to the ‘172 patent or why one skilled in the
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`7
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`art would have been motivated to combine the references in the manner claimed.
`
`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`
`
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`This is true for claim 16 as well as for the other claims, as the Petition includes the
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`same conclusory arguments without articulating and explaining the reason for
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`combining the references throughout. See Petition, passim. Having an articulated
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`reasoning with rational underpinning for obviousness is not optional—it is a
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`“must.” KSR, 550 U.S. at 418. “A reason for combining disparate prior art
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`references is a critical component of an obviousness analysis.” InTouch
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`Technologies, Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014)
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`(reversing finding of obviousness where there was a lack of articulated reasoning
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`with rational underpinning). The Supreme Court has explained: “a patent
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`composed of several elements is not proved obvious merely by demonstrating that
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`each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at
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`418.
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`Not only does the Petition fail to articulate why references should be
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`combined, but the Petition also fails to actually cite to the text of the references. In
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`fact, the Petition cites to the Declaration at Ex. 1011 over 180 times, but never
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`cites to a column or line of Kery, Guthrie, or Moulton a single time. See Petition,
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`passim. The Petition does not cite specific portions of any of these references in
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`the obviousness argument, in the anticipation argument, or anywhere. See Petition,
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`8
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`passim. The Petition is the epitome of an improper incorporation by reference, in
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`
`
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`violation of the rules. 37 CFR § 42.22(a)(2) (requiring that “[e]ach petition…must
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`include…A full statement of the reasons for the relief requested, including a
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`detailed explanation of the significance of the evidence”); 37 CFR § 42.6(a)(3)
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`(“Arguments must not be incorporated by reference from one document into
`
`another document”); 37 CFR § 42.24(a)(1)(i) (limiting the size of the Petition to
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`“60 pages”); 37 CFR § 42.104(b)(4)-(5) (requiring that the petition sets forth an
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`identification of “specific portions of the evidence that support the challenge” and
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`“where each element of the claim is found in the prior art patents or printed
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`publications relied upon”).
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`The Board has repeatedly held that “the petition must specify where each
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`element of a challenged claim is found in the prior art patents or printed
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`publications.” Synopsys v. Mentor, IPR2012-00041, Paper 16, p. 14 (PTAB Feb.
`
`22, 2013) (declining institution of faulty petition); see also Tasco, Inc. v. Pagnani,
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`IPR2013-00103, Paper 6, p. 11, 22 (May 23, 2013) (“Rather than providing
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`citations to supporting evidence in [a reference] Petitioner provides conclusory
`
`statements”). Denial of institution for a “Petition [that] did not comply with 37
`
`C.F.R. § 42.104(b)(4)” is proper because “failure to point out where each element
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`is found in the prior art is a deficiency in the substantive requirements of the
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`
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`9
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`

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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
`
`petition.” Wowza Media Sys., LLC et al. v. Adobe Sys., Inc., IPR2013-00054,
`
`Case IPR2014-01419
`Attorney Docket No.: 8929-819
`
`
`
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`Paper 16, p. 3 (July 13, 2013). The Board has never, to Patent Owner’s
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`knowledge, instituted IPR based on a petition that fails to cite to the actual text of
`
`the references. The Petition in this case is pure incorporation by reference,
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`including neither the requisite articulated reasoning nor citations to evidence.
`
`The Petition’s failure to properly and meaningfully address motivation to
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`combine is especially telling here. That is because the combination of Kery and
`
`Guthrie would result in an automated device that is not only inefficient and
`
`cumbersome, but may not even work. The combination certainly would not
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`address the deficiencies in prior art valve assemblies discussed in the ‘172 patent
`
`including overheating, assembly time, and potential for leaks. Ex. 1001, Col. 2,
`
`lines 4-32. The ‘172 patent addresses these problems and deficiencies by claiming
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`and disclosing a solution with a single pressure sensor and a limited number of
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`solenoids. Ex. 1001, FIG. 4, Col. 4, lines 30-36, Col. 7, lines 1-15, Col. 7, lines
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`50-62. In sharp contrast, the combination of Kery and Guthrie would add 48
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`pressure sensors and 48 solenoids to Kery’s 48 air lines and valves,1 exacerbating
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`1 Figs. 9 and 10 of Kery show the distributor 88 having an array of valves 86 that is
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`six by eight, for a total of 48 valves connected to a total of 48 air tubes 66. [Ex.
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`1006, Figs. 9 and 10, col. 4, lines 13-18.]
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`
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`10
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`all of the problems to be solved: overheating, assembly time, and potential for
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`leaks.2 Petitioner offers no evidence that one skilled in the art would be motivated
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`to design such a ridiculously poor, misguided system. This is Petitioner’s burden.
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`It stands common sense on its head to suggest that one skilled in the art would
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`combine these two references so as to exacerbate all of the problems the system of
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`the ‘172 patent was designed to correct [Ex. 1001, col. 2, lines 4-55], perhaps
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`explaining why the Petition ignores motivation to combine.
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`Because the Petition fails to set forth an articulated reasoning with rational
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`underpinning for combining the references, it should be denied in its entirety.
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`2 The ‘172 Patent explains solenoid heat, assembly time, and valve leaking to be
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`problems of prior art systems [See Ex. 1001, col. 2, lines 4-32] and describes the
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`invention as improving on those issues [Ex. 1001, col. 2, lines 36-55]. Modifying
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`Kery to include a solenoid and pressure sensor for each air tube as required for the
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`system of Guthrie [Ex. 1008, Col. 2 lines 35-61, col. 10, line 48 to col. 11, line 17]
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`would increase (not decrease) assembly time and would increase solenoid heat
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`generated and the number of possible solenoid-valve failures by an order of
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`magnitude over the system disclosed in the ‘172 patent.
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`III. SUMMARY OF THE PATENTED TECHNOLOGY
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`The ‘172 Patent was filed on July 28, 1997, and issued on May 18, 1999.
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`The patent discloses and claims an improved “valve enclosure assembly.” A valve
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`enclosure assembly is critical to an adjustable air bed because it provides a means
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`to adjust the firmness of the bed by adding or subtracting air from the bladders
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`located inside a mattress.
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`The innovative features that provide the improvements over the prior art and
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`which are disclosed and claimed in the ‘172 Patent are best illustrated in Figure 4:
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`The ‘172 Patent discloses a valve enclosure assembly that includes an
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`enclosure 130 and a rear cover 132 which define an air chamber 133 therein. A
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`recessed portion 140 on the rear cover 132 includes a pressure monitoring port 146
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`or "tap" fluidly coupled to the interior of the air chamber 132 and has an outwardly
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`directed portion that is designed to receive a small tube thereon (not shown) for
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`conveying the pressure inside the air chamber and the bladders to a pressure sensor
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`(not shown – but presumably on a circuit board). The recessed portion 140 also
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`includes a first inlet port 148 and a second inlet port 150 depending on what type
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`of pump will be utilized. The second inlet port 150 is designed to mate flush with
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`an outlet port of pump 112.
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`To fluidly seal the air chamber 132 a deformable gasket 202 is interposed
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`between the rear cover 132 and the enclosure 130. The deformable gasket 202 has
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`a plurality of port bores 204 that are designed to be in registry with the pressure
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`monitoring port 146, the first inlet port 148 and the second inlet port 150.
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`The improved valve assembly is designed to monitor the pressure inside
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`bladders 122, 124 during an inflate/deflate cycle in response to commands
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`provided by a processor. In order to monitor at least one of the valves 218 must be
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`in the open position – if all the valves are seated then the pressure cannot be
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`monitored or continuously monitored. Monitoring and continuous monitoring is
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`Pat. No. 5,904,172
`Patent Owner's Preliminary Response
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`accomplished because
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`the pressure sensor means
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`is
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`in continuous fluid
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`communication with the pressure in both the valve closure assembly and the air
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`bladders because at least one of the valves is in the open position.
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`According to the specification of the '172 Patent, there was a need in the
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`industry to provide for increased production efficiencies, such as reducing
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`assembly time while maintaining the required level of accuracy. Ex. 1001, Col. 2,
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`lines 27-32. With reference to FIG. 4 above, and to solve assembly inefficiencies
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`the improved valve assembly includes two solenoid guides 196 formed at the
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`bottom 170 of the inner surface 194. The solenoid guides 196 correctly laterally
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`position solenoids within the improved valve enclosure assembly. In addition,
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`toward the front face 172 of the enclosure 130, solenoid stops 198 are formed on
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`the inner surface of the bottom 170. The solenoid stops 198 act to limit the travel
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`of a solenoid motor in relation to the front face 172. Thus, the foregoing guides
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`196 and stops 198 help correctly position the solenoids during the assembly
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`process to make assembly easier, faster and more efficient.
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`IV. THE '172 PATENT'S IMPROVEMENTS OVER CONVENTIONAL
`SYSTEMS
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`The specification of the '172 Patent describes U.S. 5,509,154 to Schafer
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`("Schafer") (Ex. 1009) as the prior art existing at the time of the invention claimed
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`Pat. No. 5,904,172
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`in the ‘172 Patent. The Schafer valve assembly, while useful, posed several
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`Case IPR2014-01419
`Attorney Docket No.: 8929-819
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`problems. Schafer discloses right and left solenoids within the valve enclosure
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`assembly. The solenoids have shiftable plungers at the end of which are sealing
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`disks. Between each solenoid and sealing disk is a coil spring. When in the closed
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`configuration, the coil springs cause the sealing disks to close the air outlets,
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`sealing the mattress off from the prior art valve enclosure assembly. Using
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`pressure sensors, the left or right solenoid is actuated in the Schafer device by
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`opening the sealing disk on the right or left air outlet to inflate the corresponding
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`air bladder in the mattress. See Ex. 1001, Col. 1, lines 41-52.
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`However, significant problems existed with the Schafer valve assemblies.
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`First, they were prone to overheating. Because the pressure from the air bladders,
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`located inside the mattress, constantly acts on the area of the sealing disk, the coil
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`spring biasing the sealing disk in the closed configuration must have substantial
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`strength to counteract force from that bladder pressure. As such, a very large
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`solenoid was required to overcome the bias from the coil spring so that the
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`solenoids could unseat the sealing disk and