UNIITED STATES DUST!' IICT COURT
`NORTHERN MISTRliCT OF MHO
`
`SAUDE MANUFACTURING
`COMPANY,
`
`Plaintiff,
`
`SQUA RED, ffNC. d/b/a UNIVERaiTY
`LOFT COMPANY,
`
`efendant
`
`Timothy E. Eagle (Ohio Bar No. 0037972)
`Varnum LLP
`Attorneys for Plaintiff
`P. O. Box 352
`Grand Rapids, MI 49501-0352
`(616) 336-6000 / (616) 337-7000 Fax
`teeagle@varnumlaw.com
`
`Thomas N. Young (P22656)
`Young Basile Hanlon & MacFarlane, PC
`Attorneys for Plaintiffs
`3001 W. Big Beaver Road, Suite 624
`Troy, MI 48084
`(248) 649-3333 / (248) 649-3338 Fax
`young @youngbasile.com
`
`Case No. 3:16-ev-110962-JZ
`Hon. ]Jack Zouhary, U.S. District ]Judge
`Magistrate Judge James R. Knepp, III[
`
`Philip R. Bautista
`Thomas R. DeVoe
`Taft Stettinius & Hollister
`Attorneys for Defendant
`One Indiana Square, Suite 3500
`Indianapolis, IN 46204
`(317) 713-3591 / (317) 713-3699 Fax
`tdevoe@taftlaw.com
`
`PLAINTIIFF'S SUBMiSSI[ON OF PROPOSED
`CLAJIM TERMS OF U. S. PATENT NO. 0,585,136
`REQUIRING MARKMAN ANALYSIS BY THE COUP" T
`
`Plaintiff Sauder Manufacturing Company submits the following list of terms in the
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`asserted claims which, according to Defendant J Squared's Non-Infringement Contentions
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`already served, are in dispute and require Markman interpretation by the Court.
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`IYB.00211891 DOCX )
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`1
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`J Squared, Inc. – Ex. 1016, p. 1
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`

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`This submission is made in two parts: the first part incorporated herein identifies the
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`claim limitations in dispute and further provides a brief statement as to how and why Plaintiff
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`believes the limitations should be construed.
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`The second part is a chart of each of the asserted claims showing the full claim language
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`in the left column, and Plaintiff's interpretation in the right column.
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`Claims where there is no dispute or where the dispute is the result of claim dependency,
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`are omitted. This document is not intended to be a complete legal brief.
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`CLAIM LIMITATIONS IN DISPUTE
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`Claim 1
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`A. "A saddle adapted to releasably engage said chair"
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`Plaintiff submits that this limitation should be construed, consistent with the
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`specification, to call for a physical characteristic or structural aspect built or designed into
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`the saddle (the tabletop element of the base on which the chair sits in the coupled
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`configuration), that renders it capable of being releasably coupled to the chair.
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`B.
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`"said chair being coupled to said saddle"
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`Plaintiff similarly submits that this limitation calls for a mechanism on the chair
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`for coupling the chair to the saddle and, consistent with the proposition that claims are to
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`be interpreted as a whole, must be construed in combination limitation "A" set forth
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`above. The term "coupled" and variations thereof is found approximately thirty times
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`throughout the patent specification and, gives clear meaning to the claim.
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`(YB:0021189I.DOCX )
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`2
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`Ex. 1016, p. 2
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`

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`C.
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`"assembly positioned below said sitting portion and forming a pair of base legs ...
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`structure ... to function as rockers"
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`Plaintiff submits that this limitation should be construed to call for structure under
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`the seat that includes two rigid supports or "legs" that extend from the back of the seat to
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`the front of the seat in a configuration that provides a rocker capability. The specification
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`clearly and repeatedly refers to the chair portion as a "floor rocker" and the drawings
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`indicate the exact manner in which this leg assembly is structured, and in which it
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`performs the recited function.
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`Claim 3
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`A.
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`"perimeter edge ... with a rotationally asymmetric geometry ... "
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`Plaintiff submits that this limitation should be construed to call for a saddle
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`(tabletop mounted on top of the base) with any physical structure in or closely associated
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`with the perimeter edge of the saddle that allows the saddle to be coupled to the chair in
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`only one rotational orientation; i.e., the front of the chair must point in the same direction
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`as the front of the tabletop in order for the two to be latched together.
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`B.
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`"lower portion receptacle"
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`Plaintiff submits that this is simply the structural character of the chair base which
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`receives the tabletop in the coupled condition.
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`(YB:00211891.DOCX )
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`Ex. 1016, p. 3
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`

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`C.
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`"frame"
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`Plaintiff submits that this is the structure below the seat which defines the rocker
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`rails/legs.
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`A. "A frame"
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`Claim 4
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`The claim actually has significant additional language regarding the association
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`between the frame and the rocker legs. Construed as a whole and in the light of the
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`detailed disclosure, the frame should be construed to refer to any structure located at least
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`in part under the seat to provide left and right rocker legs.
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`Claim 5 is not asserted.
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`Claim 5
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`Claim 12
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`A.
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`"manually operable means for releasably engaging said chair to said base portion"
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`Because of the language "manually operable", this limitation does not have the
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`typical form of a "means-plus-function" limitation, the construction of which is
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`controlled by 35 USC § 112,16 to cover the disclosed embodiment and equivalents.
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`Moreover, the history of correspondence between the patent owner (then Applicant) and
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`the Patent Office does not contain the usual indication that the Examiner treated this as a
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`§112 9[6 limitation.
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`YB:00211891.DOCX )
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`4
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`Ex. 1016, p. 4
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`

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`Therefore, the limitation may capture any "manually operable" chair-to-base coupling
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`mechanism and Sauder asserts that this is the proper construction.
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`If the Court finds otherwise, then an analysis must be made to determine if the accused
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`latch mechanism is an "equivalent" of the structure disclosed in the patent.
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`The disclosed embodiment is a single latch with a passive component on the tabletop and
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`a spring-biased, manually operable lever-type catch mounted on the back of the chair. The two
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`are operable to connect with one another when the chair and base are placed in the only mutually
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`orientation which allows a coupling; i.e., front-to-front. The components are such as to require
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`manual release to decouple the chair, but permit recoupling the chair and base simply by aligning
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`the two and pushing down on the chair.
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`The accused chair has two side-mounted latches for coupling the chair to the base,
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`releasing the chair from the base, and recoupling the chair to the base when desired. The latches
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`are manually operable.
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`To determine if the accused latch system is an "equivalent", the following aspects are
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`relevant:
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`(a)
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`The latch system provides positive coupling of chair to base;
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`(b)
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`the latch system is manually operable in the release function;
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`(c)
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`a latch includes a manually operated lever-type part on the chair, and a passive
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`part on the base;
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`(d)
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`the lever-type part includes a bias spring; and
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`r/B:00211891.DOCX }
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`5
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`Ex. 1016, p. 5
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`

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`(e)
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`the latch allows coupling in a single mutual orientation between chair and base.
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`Defendant appears to rely on a non-existent point of law to prove non-equivalency; i.e.,
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`an assertion that the grant of a patent to Defendant on a narrow improvement is evidence of non-
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`equivalence and non-infringement. This is not the law.
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`Respectfully submitted,
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`YOUNG BASILE HANLON & MACFARLANE PC
`
`/s/Thomas N. Young
`THOMAS N. YOUNG (P22656)
`Attorney for Plaintiff
`Young Basile Hanlon & MacFarlane P.C.
`3001 W. Big Beaver Rd. Suite 624
`Troy, MI 48084
`(248) 649-3333
`
`Dated: September 26, 2014
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`YB:0021 189 1 .DOCX }
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`6
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`Ex. 1016, p. 6
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`

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`CE TIFICATE OF SE VICE
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`The undersigned hereby certifies that on September 26, 2014, I served the foregoing via
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`First Class U.S. Mail and electronic mail to the following:
`
`Thomas R. DeVoe
`Taft Stettinius & Hollister
`One Indiana Square
`Suite 3500
`Indianapolis, IN 46204
`tdevoe@taftlaw.com
`
`Philip R. Bautista (0073272)
`Taft Stettinius & Hollister LLP
`200 Public Square, Suite 3500
`Cleveland, OH 44114
`pbautista@.taftlaw.com
`
`Timothy E. Eagle (Ohio Bar No. 0037972)
`Varnum LLP
`Attorneys for Plaintiff
`P. O. Box 352
`Grand Rapids, MI 49501-0352
`teeagle@varnumlaw.com
`
`By: /s/Thomas N. Young
`
`YB 00211891 DOCX )
`
`7
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`Ex. 1016, p. 7
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`

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`SAUDER'S CONSTRUCTIONS
`
`This language should be construed, consistent with
`the specification, to call for a physical characteristic
`or structural aspect built or designed into the saddle
`(the tabletop element of the base on which the chair
`sits in the coupled configuration), that renders it
`capable of being releasably coupled to the chair.
`
`This limitation calls for a mechanism on the chair for
`coupling the chair to the saddle and, consistent with
`the proposition that claims are to be interpreted as a
`whole, must be construed in combination limitation
`"A" set forth above. The term "coupled" and
`variations thereof is found approximately thirty times
`throughout the patent specification and, gives clear
`meaning to the claim.
`
`This limitation should be construed to call for
`structure under the seat that includes two rigid
`supports or "legs" that extend from the back of the
`seat to the front of the seat in a configuration that
`provides a rocker capability. The specification clearly
`and repeatedly refers to the chair portion as a "floor
`rocker" and the drawings indicate the exact manner in
`which this leg assembly is structured, and in which it
`performs the recited function.
`
`No terms in dispute except those in claim from which
`this claim depends.
`
`CLAIM
`1. A combination of a chair and a stool base portion,
`said chair comprising:
`an upper portion providing a backrest for support for
`a first user;
`a lower portion connected to said upper portion and
`having a sitting portion for supporting said first user
`in a seated position;
`said stool base portion adapted to support said chair
`and comprising a saddle adapted to releasably engage
`said chair;
`
`said combination is configurable in a first
`configuration with said chair being coupled to said
`saddle, and said sitting portion being positioned
`above said saddle;
`
`said combination is manually convertible between
`said first configuration and a second configuration,
`where said second configuration comprises said chair
`still functioning as a chair for said first user, and said
`stool functioning so that saddle is accessible to said
`first user as a work surface or, alternatively, so that
`said saddle is accessible to a second user as a sitting
`surface; and
`said combination further comprises an assembly
`positioned below said sitting portion and forming at
`least a pair of base legs which are structured so as to
`function as rockers for said chair when said
`combination is in said second configuration.
`
`2. The combination of a chair and a stool base
`portion in accordance with claim 1, characterized in
`that:
`said lower portion comprises a first portion near said
`upper portion, and a second portion spaced away from
`said first portion; and
`said base portion extends generally upward to said
`saddle.
`
`3. The combination of a chair and a stool base
`portion in accordance with claim 2, characterized in
`that:
`
`{YB:00211958.DOCX }
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`Ex. 1016, p. 8
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`

`
`CLAIM
`the saddle further comprises a top surface and a
`perimeter edge incorporating the back and front
`edges, circumscribing the top surface and defining the
`top surface with a rotationally asymmetric geometry;
`and
`
`the lower portion receptacle and the saddle perimeter
`edge correspond with one another so that the base
`couples with the frame only in one specific rotational
`orientation.
`
`4. The combination of a chair and a stool base
`portion in accordance with claim 2 wherein a first of
`the two base legs extends generally arcuately
`downward from a lower portion left side and second
`portion, and from the lower portion left side and first
`portion, and a second of the two base legs extends
`generally arcuately downward from a frame lower
`portion right side and second portion, and from the
`frame lower portion right side and second portion,
`and from the frame lower portion right side and first
`portion, with the base legs defining the rockers.
`
`SAUDER'S CONSTRUCTIONS
`This limitation should be construed to call for a
`saddle (tabletop mounted on top of the base) with any
`physical structure in or closely associated with the
`perimeter edge of the saddle that allows the saddle to
`be coupled to the chair in only one mutual rotational
`orientation; i.e., the front of the chair must point in
`the same direction as the front of the tabletop in order
`for the two to be latched together.
`This is simply the structural character of the chair
`base which receives the tabletop in the coupled
`condition.
`
`This claim actually has significant additional
`language regarding the association between the frame
`and the rocker legs. Construed as a whole and in the
`light of the detailed disclosure, the frame should be
`construed to refer to any structure located at least in
`part under the seat to provide left and right rocker
`legs.
`
`5. The combination of a chair and a stool base
`portion in accordance with claim 4 wherein the
`rockers define protective rails.
`
`Not asserted.
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`6. The combination of a chair and a stool base
`portion in accordance with claim 2, characterized in
`that said lower portion further comprises a latch
`moving between closed and open position.
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`7. The combination of a chair and a stool base
`portion in accordance with claim 6, characterized in
`that said saddle cooperates with said lower portion
`latch so that said saddle is releasably captured by said
`latch.
`
`8. The combination of a chair and a stool base
`portion in accordance with claim 1, characterized in
`that the saddle further comprises a top surface that
`faces upward, and that defines at least one of a
`working surface, a writing surface and a sitting
`surface.
`
`9. The combination of a chair and a stool base
`portion in accordance with claim 1 wherein the base
`portion further includes a pedestal that extends
`generally upward to the saddle and includes a
`connector that operatively connects the saddle with
`the pedestal, the connector including at least one of a
`tilt mechanism whereby the saddle tilts relative to the
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`No additional issues.
`
`No additional issues.
`
`No additional issues.
`
`No additional issues.
`
`(YB:00211958.DOCX }
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`2
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`Ex. 1016, p. 9
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`

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`SAUDER'S CONSTRUCTIONS
`
`No additional issues.
`
`No additional issues.
`
`Broadly construed, it calls only for a mechanism on
`the chair which is operated by the hand to release the
`chair from the base. If it is deemed a §112 ¶6
`limitation, it raises a (fact) question of equivalency.
`
`No additional issues.
`
`CLAIM
`pedestal and a swivel mechanism whereby the saddle
`swivels relative to the pedestal.
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`10. The combination of a chair and a stool base
`portion in accordance with claim 1, characterized in
`that said combination is manually convertible
`between said first configuration and said second
`configuration, without requiring any manual
`manipulation of bolts, screws or nuts, or the use of
`any tools by said first user.
`
`11. The combination of a chair and a stool base
`portion in accordance with claim 1, characterized in
`that said pair of base legs are spaced laterally from
`one another.
`
`12. A combination of a chair and a stool base portion,
`said chair comprising:
`a sitting portion;
`base legs attached to and depending downwardly
`from said sitting portion;
`said stool base portion comprising floor engaging
`members and a saddle located generally at a top of
`said base portion;
`said sitting portion including manually operable
`means for releasably engaging said chair to said base
`portion;
`
`said chair and said stool base portion are configurable
`in a first configuration in which said chair is
`releasably coupled to said saddle by said engaging
`means; and
`said chair and said stool base portion being
`configurable in a second configuration wherein said
`chair and said stool base portion are disconnected,
`said chair is supported by said base legs, and said
`base portion is positioned so as to serve as a side table
`or work surface, or as a stool for seating a second
`user; and
`said base legs function as rockers when said chair is
`in said second configuration.
`
`13. A combination of a chair and stool base portion in
`accordance with claim 12, characterized in that:
`said base legs are spaced laterally from one another
`and create an open space between said base legs on an
`underside of said sitting portion;
`said stool base portion further comprises a plurality of
`chair legs radiating outwardly, for supporting said
`base portion;
`when said combination is in said configuration, said
`chair and said stool base portion are disconnected,
`said chair is supported by said base legs, and said
`stool base portion is positionable in front of said chair
`
`( YB:002 I I 958.DOCX }
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`3
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`Ex. 1016, p. 10
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`

`
`CLAIM
`with at least one of chair legs projecting underneath
`said chair, between said laterally spaced base legs,
`whereby a user can be seated in said chair and can use
`said saddle base as a work surface.
`
`14. A combination of a chair and stool base portion in
`accordance with claim 13, characterized in that
`said base legs are sufficiently long so that the front of
`said chair allows said one of said chair legs to extend
`beneath said sitting portion, but sufficiently short so
`that when said chair is mounted on said base portion,
`said base legs do not engage any support surface.
`
`SAUDER'S CONSTRUCTIONS
`
`No additional issues.
`
`(YB:00211958.DOCX
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`4
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`Ex. 1016, p. 11