UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY
`Petitioner
`
`v.
`
`SAUDER MANUFACTURING COMPANY
`Patent Owner
`_______________
`
`Patent No. 8,585,136
`
`CHAIR WITH COUPLING
`COMPANION STOOL BASE
`_______________
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................... 1
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. §42.8.................................. 2
`
`
`
`
`
`
`
`
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party in Interest – 37 C.F.R. §42.8(b)(1) .................................... 2
`
`Related Matters – 37 C.F.R. §42.8(b)(2) ............................................ 2
`
`Lead and Backup Counsel – 37 C.F.R. §42.8(b)(3)............................ 2
`
`Service Information – 37 C.F.R. §42.8(b)(4)...................................... 2
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. §42.103.................................................. 3
`
`III. REQUIREMENTS UNDER 37 C.F.R. §42.104........................................... 3
`
`
`
`
`
`A. Grounds for Standing – 37 C.F.R. §42.104(a) .................................... 3
`
`B.
`
`Challenge and Relief Requested – 37 C.F.R. §42.104(b)...................... 3
`
`IV. SUMMARY OF THE ‘136 PATENT ........................................................... 4
`
`
`
`
`
`A. Overview of the ‘136 Patent................................................................ 4
`
`B.
`
`Summary of the Prosecution History of the ‘136 Patent .................... 5
`
`V.
`
`CLAIM CONSTRUCTION – 37 C.F.R. §42.104(b)(3) ............................... 9
`
`
`
`
`
`
`
`A.
`
`B.
`
`C.
`
`
`D.
`
`E.
`
`
`
`“Coupled” (claim 1) ............................................................................10
`
`“Engaged” (claim 1)............................................................................10
`
`“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.”
`(claim 1) ..............................................................................................11
`
`“Function as rockers” (claim 1) ..........................................................13
`
`“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” (claim 3).........................................................14
`
`ii
`
`

`
`F.
`
`G.
`
`
`H.
`
`“Latch moving between closed and open positions” (claim 6)...........15
`
`“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” (claim 9) .............16
`
`“Means for releasably engaging said chair to said base portion”
`(claim 12) ............................................................................................17
`
`
`VI. GROUNDS OF UNPATENTABILITY........................................................18
`
`A. Ground 1 – Claims 1, 2, 4-8, 10 and 11 Are Anticipated Under 35
`U.S.C. §102 by U.S. Patent No. D139,241 to Wright, issued
`10/24/1944 (“Wright”) ........................................................................18
`
`
`B. Ground 2 – Claims 1-5, 8, 10 and 11 Are Anticipated Under 35
`U.S.C. §102 by U.S. Patent No. 794,461 to Mackey, issued
`7/11/1905 (“Mackey”).........................................................................21
`
`
`C. Ground 3 – Claims 1, 2, 4-8 and 10-14 Are Anticipated Under 35
`U.S.C. §102 by U.S. Patent No. 2,530,474 to Lutes, issued
`1/22/1946 (“Lutes”).............................................................................24
`
`
`D. Ground 4 – Claims 1, 2 and 6-14 Are Anticipated Under 35 U.S.C.
`§102 by U.S. Patent No. 2,689,598 to Pollack, issued 9/21/1954
`(“Pollack II”), or Obvious Under 35 U.S.C. §103 over Pollack II in
`view of U.S. Patent No. 2,644,506 to Pollack, issued 7/7/1953
`(“Pollack I”) ........................................................................................30
`
`
`E.
`
`
`F.
`
`Ground 5 – Claims 1-3, 6-8 and 10-14 Are Anticipated Under 35
`U.S.C. §102 by U.S. Patent No. 2,435,290 to Scharaga, issued
`2/3/1948 (“Scharaga”).........................................................................39
`
`Ground 6 – Claims 6, 7 and 12-14 Are Obvious Under 35 U.S.C.
`§103 over U.S. Patent No. D139,241 to Wright (“Wright”) in view
`of U.S. Patent No. 4,723,813 to Kassai, issued 2/9/1988 (“Kassai”) .45
`
`
`G. Ground 7 – Claims 6, 7 and 12-14 Are Obvious Under 35 U.S.C.
`§103 over Wright in view of U.S. Patent No. 1,298,053 to
`Kennedy, issued 3/25/1919 (“Kennedy”) ...........................................50
`
`iii
`
`

`
`
`H. Ground 8 – Claims 1-3 and 6-14 Are Not Entitled to an Effective
`Filing Date Earlier Than Oct. 20, 2011, and Are Therefore
`Anticipated Under 35 U.S.C. §102 by Sauder Product Literature,
`“How to Use Your Trey Chair” © 2006 (“Trey Instructions”)...........53
`
`
`VII. CONCLUSION..............................................................................................60
`
`iv
`
`

`
`
`
`Ex. No.
`
`EXHIBIT LIST
`
`Exhibit
`
`1001 U.S. Patent No. 8,585,136 (“the ‘136 patent”)
`
`1002 U.S. Patent No. D139,241 to Wright (“Wright”)
`
`1003 U.S. Patent No. 794,461 to Mackey (“Mackey”)
`
`1004 U.S. Patent No. 2,530,474 to Lutes (“Lutes”)
`
`1005 U.S. Patent No. 2,689,598 to Pollack (“Pollack II”)
`
`1006 U.S. Patent No. 2,644,506 to Pollack (“Pollack I”)
`
`1007 U.S. Patent No. 2,535,290 to Scharaga (“Scharaga”)
`
`1008 U.S. Patent No. 4,723,813 to Kassai (“Kassai”)
`
`1009 U.S. Patent No. 1,298,053 to Kennedy (“Kennedy”)
`
`1010
`
`Sauder Product Literature, “How to Use Your Trey Chair” © 2006
`(“Trey Instructions”)
`
`1011
`
`Patent Application No. 11/877,478 (“the ‘478 application”), filed Oct.
`22, 2007, now Patent No. 8,038,288 (the parent of the ‘136 patent)
`
`1012 Response to Office Action, filed Oct. 7, 2010, in Patent Application No.
`11/877,478 (“the ‘478 application”)
`
`1013
`
`Prosecution History of U.S. Patent No. 8,585,136
`
`1014 Office Action dated Nov. 13, 2014, in Patent Application No.
`14/057,781, now U.S. Patent No. 8,960,787 (a continuation of the ‘136
`patent)
`
`1015 Definitions from Webster’s Seventh New Collegiate Dictionary
`
`v
`
`

`
`1016
`
`Plaintiff’s Submission of Proposed Claim Terms of U.S. Patent No.
`8,585,136 Requiring Markman Analysis by the Court, in Sauder
`Manufacturing Company v. J Squared, Inc. d/b/a University Loft
`Company (“Patent Owner’s Proposed Construction”)
`
`1017
`
`Patent Owner’s Preliminary Infringement Contentions in Sauder
`Manufacturing Company v. J Squared, Inc. d/b/a University Loft
`Company
`
`1018 U.S. Patent No. 172,458 to Lawrence (“Lawrence”)
`
`1019 U.S. Patent No. 6,206,472 to Waugh (“Waugh”)
`
`
`
`vi
`
`

`
`INTRODUCTION
`
`
`
`Pursuant to 35 U.S.C. §311, J Squared, Inc. d/b/a University Loft Company
`
`(“Petitioner”), petitions for inter partes review (“IPR”) of claims 1-14 of U.S.
`
`Patent No. 8,585,136 (“the ‘136 patent”), issued on November 19, 2013 and
`
`entitled CHAIR WITH COUPLING COMPANION STOOL BASE. The ‘136
`
`patent was assigned to Sauder Manufacturing Co. (hereafter “Patent Owner”).
`
`The technology at issue pertains to reconfigurable chairs. The ‘136 patent
`
`discloses a rocking chair detachably connected to a base. As will be shown, the
`
`invention as claimed was not new in the 2000s, having been described in patents
`
`from the 1950s and earlier, e.g., Wright, Mackey, Lutes, Pollack and Scharaga,
`
`none of which was of record during prosecution. As will also be shown, claims 1
`
`and 12 recite generic functional limitations that are not entitled to a filing date
`
`earlier than the actual filing date of the ‘136 patent, and are met by prior art
`
`literature of Patent Owner such that claims 1 and 12 and most others are
`
`unpatentable under 35 U.S.C. §102(b).
`
`
`
`This Petition demonstrates that there is a reasonable likelihood that
`
`Petitioner will prevail with respect to at least one of the claims challenged in this
`
`Petition and thus that an inter partes review should be instituted. Petitioner
`
`respectfully requests that claims 1-14 of the ‘136 patent be held unpatentable and
`
`cancelled.
`
`1
`
`

`
`I. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`
`A. Real Party in Interest – 37 C.F.R. §42.8(b)(1)
`
`The real party in interest is J Squared, Inc. d/b/a University Loft Company,
`
`
`
`
`
`the Petitioner.
`
`B. Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`
`
`
`The ‘136 patent is presently asserted against Petitioner in an ongoing patent
`
`infringement lawsuit brought by Patent Owner in Sauder Manufacturing Company
`
`v. J Squared, Inc. d/b/a University Loft Company, Case No. 3:14-cv-00962-JZ,
`
`filed in the U.S. District Court for the Northern District of Ohio on May 5, 2014.
`
`C.
`
`Lead and Backup Counsel – 37 C.F.R. §42.8(b)(3)
`
`LEAD COUNSEL
`William F. Bahret
`USPTO Reg. No. 31,087
`Bahret & Associates LLC
`320 North Meridian Street
`Suite 510
`Indianapolis, IN 46204
`Phone: (317) 423-2300
`Fax: (317) 423-3063
`bahret@bahretlaw.com
`
`BACKUP COUNSEL
`Stephen F. Rost
`USPTO Reg. No. 61,983
`Taft Stettinius & Hollister LLP
`One Indiana Square, Suite 3500
`Indianapolis, IN 46204
`Phone: (317) 713-3456
`Fax: (317) 713-3699
`SRost@taftlaw.com
`
`D.
`
`Service Information – 37 C.F.R. §42.8(b)(4)
`
`
`
`
`
`
`
`The email and mailing addresses provided above can be used for service and
`
`all communications with all counsel.
`
`2
`
`

`
`PAYMENT OF FEES – 37 C.F.R. §42.103
`
`II.
`
`
`The fee set forth in 37 C.F.R. §42.15(a) is submitted herewith. The Patent
`
`and Trademark Office is hereby authorized to charge Deposit Account No. 50-
`
`2176 for any additional fees which may be due in connection with this Petition.
`
`III. REQUIREMENTS UNDER 37 C.F.R. §42.104
`
`
`
`A. Grounds for Standing – 37 C.F.R. §42.104(a)
`
`Pursuant to 37 C.F.R. §42.104(a), Petitioner hereby certifies that the ‘136
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ‘136
`
`patent on the grounds identified herein.
`
`
`
`
`
`B. Challenge and Relief Requested – 37 C.F.R. §42.104(b)
`
`Petitioner respectfully requests that claims 1-14 of the ‘136 patent be
`
`held unpatentable under 35 U.S.C. §§102(b) and 103(a) based on the following
`
`specific grounds, explained in detail in Section VI:
`
`Ground
`
`Claims Challenged
`
`Basis
`
`Reference(s)
`
`1
`
`2
`
`3
`
`4
`
`1, 2, 4-8, 10, 11
`
`§102 Wright
`
`1-5, 8, 10, 11
`
`§102 Mackey
`
`1, 2, 4-8, 10-14
`
`§102
`
`Lutes
`
`1, 2, 6-14
`
`§102
`
`Pollack II
`
`§103
`
`Pollack II and Pollack I
`
`3
`
`

`
`5
`
`6
`
`7
`
`8
`
`1-3, 6-8, 10-14
`
`§102
`
`Scharaga
`
`6, 7, 12-14
`
`§103 Wright and Kassai
`
`6, 7, 12-14
`
`§103 Wright and Kennedy
`
`1-3, 6-14
`
`§102
`
`Trey Instructions
`
`
`IV. SUMMARY OF THE ‘136 PATENT
`
`
`
`
`
`A. Overview of the ‘136 Patent
`
`The ‘136 patent (Ex.1001) discloses a convertible chair/base combination
`
`with two configurations: (1) a rocking chair detachably connected to a base, and
`
`(2) the rocking chair disconnected from the base with both being separately useful.
`
`
`
`The ‘136 patent (issued from Patent Application No. 13/277,778 (“the ‘778
`
`application”), filed Oct. 20, 2011, which is a continuation of Patent Application
`
`No. 11/877,478 (“the ‘478 application”) (Ex.1011), filed Oct. 22, 2007, now Patent
`
`No. 8,038,288, which claims the benefit of Provisional Application No.
`
`60/853,669, filed Oct. 23, 2006.
`
`
`
`The disclosed rocking chair is not claimed as such in either of the two
`
`independent claims (1 and 12). Instead, the claims recite a chair with legs defined
`
`in functional terms, not structurally, i.e., “base legs which are structured so as to
`
`function as rockers” (claim 1) and “said base legs function as rockers” (claim 12).
`
`The history of these functional claim limitations, and of the broadly recited latch
`
`4
`
`

`
`limitations of claims 6 and 7, is relevant to the grounds of unpatentability herein.
`
`
`
`B.
`
`Summary of the Prosecution History of the ‘136 Patent
`
`In brief, the prosecution included a non-final Office Action, a response, a
`
`final Office Action, an interview with the examiner, and a subsequent amendment
`
`to include the above-referenced functional limitations now in claims 1 and 12.
`
`Ex. 1013, 98-120, 122-156, 191-199, 202-204, and 205-222, respectively.
`
`
`
`Claim 1 originally recited, inter alia, a limitation relating to toolless
`
`conversion between the two claimed configurations. Before being amended, it was
`
`rejected twice under 35 U.S.C. §103 over Yu (Patent No. 6,554,353) in view of
`
`Chiang (Patent No. 5,893,606). Ex. 1013, 101, 194. Original claim 20 (now claim
`
`12) was rejected twice as anticipated by Yu. Id. at 100, 193.
`
`
`
`After the second (final) rejection, Patent Owner initiated the above-
`
`mentioned interview, the substance of which the examiner summarized as follows:
`
`“The applicant discussed the claimed invention, specifically with respect to claims
`
`4, 8, and 20. … The applicant will consider amending claims 1 & 20 to recite that
`
`the legs of the chair are rockers.” Id. at 203 (emphasis added). Claim 8 (now claim
`
`4), depending from claims 1 and 2, already recited rockers, i.e., “the base legs
`
`define rockers,” and the examiner had indicated in both Office Actions that it
`
`would be allowable if made independent. Id. at 104, 197.
`
`5
`
`

`
`
`
`Patent Owner subsequently amended claims 1 and 20, but chose not to recite
`
`that the legs are rockers. Instead, Patent Owner amended claim 1 to recite that the
`
`legs are “structured so as to function as rockers.” Id. at 207. Similarly, claim 20
`
`was amended to recite that the legs “function as rockers.” Id. at 210. The toolless
`
`conversion limitation in claim 1 was deleted at the same time. Claim 8, which
`
`expressly recited rockers, was left as a dependent claim.
`
`
`
`In response to the amendment, the examiner issued a notice of allowance.
`
`Id. at 225-230. No reasons for allowance were stated, but the allowance was
`
`clearly related to the addition of the above functional limitations.
`
`
`
`Original claim 19, an independent claim, had virtually the same language as
`
`claim 1 as allowed, the main difference being that it recited a leg structured to
`
`“permit a rocking motion” rather than legs structured to “function as rockers.”
`
`Claim 19 was rejected in both Office Actions as obvious over the combination of
`
`Yu and Chiang, and further in view of Kassai (Patent No. 4,723,813) and Massonet
`
`(Patent No. 3,669,497). Id. at 102, 195. (Kassai and Massonet
`
`appear to have been cited erroneously because only Yu and
`
`Chiang were applied to the claim 19 limitations.) The
`
`examiner cited Fig. 5 of Chiang (shown right) for the
`
`above-quoted functional limitation.
`
`6
`
`

`
`
`
`The examiner did not withdraw the rejection of claim 19, and Patent Owner
`
`cancelled it when amending claim 1. Commenting on Chiang in support of the
`
`amendment to claim 1, Patent Owner effectively agreed with the examiner that
`
`Chiang’s chair permits rocking. Patent Owner argued intended use, i.e., that
`
`Chiang does not teach utilizing the chair to provide rocking motion, and does not
`
`teach any rocking function. Id. at 217:17-19 and 218:4-6. But Patent Owner did not
`
`deny the rocking capability of Chiang’s chair. As can be appreciated from Fig. 5
`
`above, the chair’s flat bottom structure does permit a rocking motion, by way of a
`
`child or parent rocking the chair back and forth.
`
`
`
`As will be shown, the corresponding “function as rockers” limitations of
`
`claims 1 and 12 are met, along with all other limitations thereof, by prior art that
`
`was not before the patent examiner when the claims were allowed.
`
`
`
`Patent claim 6 broadly recites a latch. It derived from original claim 2, which
`
`recited rear-mounting limitations for the latch, i.e., the latch extending down from
`
`“said first portion” (the rear portion) of the chair’s lower portion, and the related
`
`limitation of the latch capturing the saddle’s back edge. Id. at 31-32. A corres-
`
`ponding front claw was also recited. Id. at 32. Claim 2 was rejected in the first
`
`Office Action as obvious over Yu and Chiang as applied to claim 1, and further in
`
`view of Kassai and Massonet, which disclose claws and latches. Id. at 102-103.
`
`The combination of Yu and Chiang included a convertible chair/base combination
`
`7
`
`

`
`but lacked a latch. The examiner said it would have been obvious to add a latch “in
`
`order to clamp or attach the seat to the stool.” Id. at 103, ¶16. In response, Patent
`
`Owner moved the latch limitations from claim 2 to new claims 24 and 25 (now
`
`patent claims 6 and 7), depending from claim 2. Id. at 124, 132.
`
`
`
`Without explanation, and without argument by Patent Owner that the latch
`
`limitations distinguished claim 24 or 25 from the prior art, the examiner indicated
`
`in the second Action that claims 24 and 25 would be allowable if made
`
`independent. Id. at 197. However, the examiner still said that it would have been
`
`obvious to add a latch to the combination of Yu and Chiang, for the reason stated
`
`above. Id. at 196, ¶16. Patent Owner then initiated the above-mentioned interview
`
`with the examiner, and thereafter amended claim 1 to include the rocker function
`
`as indicated above. Patent Owner left claims 24 and 25 as dependent claims, but
`
`broadened both of them by deleting the rear-mounting limitations of the latch. Id.at
`
`211-212. Patent Owner also broadened claim 2 by deleting the claw limitations. Id.
`
`at 208. Claims 2, 24 and 25 were allowed based on their dependence upon claim 1
`
`as amended with the rocker limitation. Except on that basis, the examiner never
`
`indicated that claim 24 or 25 (patent claim 6 or 7) would be allowable without
`
`being limited to a claw and latch in the front and rear, respectively.
`
`8
`
`

`
`V. CLAIM CONSTRUCTION – 37 C.F.R. §42.104(b)(3)
`
`In an IPR, claims are to be given their broadest reasonable interpretation
`
`
`
`(BRI) in light of the patent specification. 37 CFR §42.100(b). “This approach
`
`ensures that the public can clearly understand the outer limits applicants and
`
`patentees will attribute to their claims.” Office Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48764 (Aug. 14, 2012). The Federal Circuit has affirmed that the BRI
`
`standard is the proper standard for claim construction in an IPR. In re Cuozzo
`
`Speed Technologies, LLC, _ F.3d _ (Fed. Cir. February 4, 2015). “[I]t is . . . well
`
`settled that … the tribunals [of the PTO] and the reviewing courts in the initial
`
`consideration of patentability will give claims the broadest interpretation which,
`
`within reason, may be applied.” Id. (brackets in the original), quoting In re
`
`Kebrich, 201 F.2d 951 (CCPA 1953).
`
`Petitioner does not concede that the claim terms should be construed the
`
`same way in a district court proceeding, or that the scope of the terms is reasonably
`
`certain to one of ordinary skill in the art under Nautilus, Inc. v. Biosig Instruments,
`
`Inc., 134 S.Ct. 2120 (2014). Petitioner reserves the right to advocate a different
`
`claim construction in district court or any other forum as appropriate.
`
`However, the broadest reasonable construction applied in this IPR should be
`
`broad enough to encompass the broadest construction asserted by the patentee in
`
`the related litigation. A broad construction asserted by the patentee in litigation
`
`9
`
`

`
`should be subjected to inter partes review because the patentee’s actual assertion
`
`provides a clear example of the “the outer limits … patentees will attribute to their
`
`claims,” the understanding of which is the above-stated goal of the BRI standard.
`
`Including the patentee’s assertion is also consistent with the basic rationale of the
`
`BRI standard, namely, that it “reduce[s] the possibility that, after the patent is
`
`granted, the claims may be interpreted as giving broader coverage than is
`
`justified.” In re Cuozzo Speed Technologies, supra.
`
`A.
`
`“coupled” (claim 1)
`
`Under the BRI standard, “coupled” should be construed to mean connected
`
`
`
`but not necessarily locked together. The claim construction should be broad
`
`enough to include a peg-in-hole connection in light of the ‘136 patent specification,
`
`which identifies four peg-in-hole couplings. Ex. 1001, 7:63 to 8:5.
`
`
`
`B.
`
`“engaged” (claim 1)
`
`Under the BRI standard, “engaged” should be construed simply to require
`
`contact, at least in light of use of the word “engage” in the specification, such as in
`
`the following examples: “The base portion 300 may be engaged by the user or
`
`another user in several functions, including a companion stool upon which a user
`
`may sit and a side table.” Ex. 1001, 8:14-17 (emphasis added). Claim 12 refers to
`
`”floor engaging members,” meaning the stool legs that touch the floor. “Engage” is
`
`also used to mean mere striking or abutting: “latch second leg 164 may strike or
`
`10
`
`

`
`otherwise engage the saddle back edge” (Id. at 8:67); “saddle 310 may support the
`
`cross-ties 110 in abutting engagement, when the chair portion 100 and base
`
`portion 300 are coupled.” Id. at 9:18-20.
`
`C.
`
`“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.” (claim 1)
`
`
`
`Under the BRI standard, the assembly forming the base legs should be
`
`construed simply as structure including base legs. This is consistent with Patent
`
`Owner’s proposed construction in the related litigation, referring to “structure …
`
`that includes two rigid supports or ‘legs.’ ” Ex. 1016, 3. The word “assembly” does
`
`not appear in the ‘136 patent except in claim 1, and it was added after the claim
`
`was rejected. In the specification, base legs 180 are an integral part of lower
`
`portion 106 as part of a unitary frame 102 which includes frame portions 104 and
`
`106. Ex. 1001, 4:24-26 and Figs. 17 and 18. Thus, in claim 1, the assembly (base
`
`leg structure) can share structure with the lower portion, and with the upper portion
`
`as well. The assembly is also reasonably construed as sharing structure with the
`
`sitting portion, because the sitting portion “may be configured as is known in ‘hard
`
`surface’ chairs” (Ex. 1001, 5:5-8) and thus may be a surface layer of the unitary
`
`frame. Note that the latch limitation of dependent claim 6 cannot be read into the
`
`assembly limitation.
`
`11
`
`

`
`Alternatively, the base leg structure, as claimed, may be a separate
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`component, e.g., an attachment attached only in the second configuration. The
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`broadest reasonable construction should also encompass this alternative.
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`Grammatically, the claim language does not require the base leg structure to be
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`positioned below the sitting portion at all times. As written, with no commas, the
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`claim limitation can reasonably be read as “an assembly positioned below said
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`sitting portion … when said combination is in said second configuration.” That is,
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`it is reasonable under the BRI standard to construe the “when” clause as modifying
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`the “positioned” clause and the “forming” clause. Notably in this regard, there is
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`no requirement in claim 1 to have “base legs attached,” as there is in claim 12.
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`Regarding the term “positioned below,” the word “below” is defined in
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`Webster’s Dictionary as “in or to a lower place than.” Ex. 1015, 3. Being lower is a
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`defining characteristic. However, the base leg structure is not necessarily entirely
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`below (lower than) the sitting portion. For example, Fig. 5 of the ‘136 patent shows
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`that the forwardmost ends of base legs 180 are above (higher than) the lowest
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`points of both the front and rear of the sitting portion (134). Considering an
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`ordinary flower pot and saucer as an analogy, the saucer is properly considered to
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`be positioned below the flower pot even though its sidewalls are above the bottom
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`of the pot. Patent Fig. 5 also shows that the unitary frame forming base legs 180 is
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`partially below the seat and partially above it (see upper portion 104), and yet,
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`12
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`according to claim 1, the assembly is “positioned below said sitting portion.”
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`This is consistent with Patent Owner’s proposed construction of the “frame”
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`of claims 3 and 4 in the related litigation. Patent Owner submits that the frame is
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`“the structure below the seat which defines the rocker rails/legs” and that “the
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`frame should be construed to refer to any structure located at least in part under
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`the seat to provide left and right rocker legs.” Ex.1016, 4 (emphasis added).
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`Petitioner submits that, under the BRI standard, “positioned below” should
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`be construed to mean positioned at least partially below.
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`D.
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`“function as rockers” (claim 1)
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`
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`As discussed in Section IV, this functional limitation was added after final
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`rejection, after an interview where the examiner noted in the Interview Summary
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`that the applicant “will consider amending claims 1 & 20 to recite that the legs of
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`the chair are rockers.” Ex. 1013, 203 (emphasis added). Patent Owner chose not to
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`recite that the legs are rockers, and instead recited that the legs are structured so as
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`to function as rockers. Thus, Patent Owner chose to recite the leg structure by what
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`it does rather than by what it is. There is nothing inherently wrong with defining
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`some part of an invention in functional terms. MPEP §2173.05(g). However,
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`functional claim language not limited to a specific structure covers all devices that
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`are capable of performing the recited function. MPEP §2114(IV). Broadly
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`speaking, the function of rockers is to enable rocking.
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`13
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`The term “function as rockers” is not used in the specification. A relevant
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`definition of “rocker,” from Webster’s Dictionary, is “any of various devices that
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`work with a rocking motion.” Ex. 1015, 4. A chair leg that enables rocking is thus
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`fairly considered a rocker. Moreover, “function as rockers” is broader than “are
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`rockers.” Under the BRI standard, it is reasonable to construe “function as rockers”
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`to mean “enable rocking.” This function can be performed by means of
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`continuously or intermittently or partially curved rails, pivoting flat rails, bipod
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`chair leg structures, or by any other means.
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`So construed, the claim limitation is met by a wide variety of chair leg
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`structures such as the following, as discussed in Section VI(H).
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`
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`Notably, claim 4, depending from claims 1 and 2, positively recites rockers:
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`“the base legs defining the rockers.” Ex. 1001, claim 4. By the doctrine of claim
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`differentiation, this difference in claim language gives rise to a presumption that
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`claim 1 covers chairs with legs that “function as rockers” without being rockers.
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`E.
`
`“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” (claim 3)
`
`
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`14
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`
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`Claim 3 lacks antecedent basis for “the front and back edges,” “the lower
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`portion receptacle,” and “the frame.” However, useful insight into the broadest
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`reasonable construction of the above limitation for inter partes review is gained by
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`considering Patent Owner’s proposed construction in the related litigation.
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`Referring to the term “perimeter edge ... with a rotationally asymmetric geometry,”
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`Patent Owner proposed the following construction:
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`Plaintiff submits that this limitation should be construed to call for a
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`saddle (tabletop mounted on top of the base) with any physical
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`structure in or closely associated with the perimeter edge of the saddle
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`that allows the saddle to be coupled to the chair in only one rotational
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`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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`Ex. 1016, 3 (emphasis added).
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`Since the BRI approach “ensures that the public can clearly understand the
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`outer limits … patentees will attribute to their claims,” the Board should take the
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`above proposed construction into account, as well as the fact that Patent Owner is
`
`asserting claim 3 in the related litigation even though, in the accused product, the
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`tabletop’s top surface is purely rectangular, which is not rotationally asymmetric.
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`F.
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`“latch moving between closed and open positions” (claim 6)
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`This limitation simply requires a latch. The function of moving has no
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`
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`patentable weight. A latch by one definition in Webster’s Dictionary is “a device
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`that holds something in place by entering a notch or cavity.” Ex. 1015, 5. This
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`15
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`

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`definition is broad enough to encompass a part of the chair entering a cavity in the
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`base to hold the chair in place on the base. However, a latch can also engage an
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`object lacking a notch or cavity. Familiar examples include fork latches used on
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`gates of chain link fences, and hotel room security latches having a bifurcated
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`swing arm attached to a door jam. The ‘136 patent itself confirms the optional
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`nature of a notch/cavity by stating that a “latch notch 324 may be formed in the
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`saddle back edge 314” for “enhanced” coupling. Ex. 1001, 9:7-10. The broadest
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`reasonable construction of “latch” should include all such latch types among
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`others.
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`G.
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`“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”
`(claim 9)
`
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`Regarding the term “pedestal,” the broadest reasonable construction should
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`
`
`include a pedestal with multiple legs. See, e.g., U.S. Patent No. 172,458 to
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`Lawrence, in which a four-legged base for a chair is described as a pedestal.
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`Ex. 1018, 1:42-44. Notably in this regard, in Patent Owner’s continuation
`
`application No. 14/057,781, the examiner cited Wright, Fig. 3, as disclosing “a
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`pedestal base with legs.” Ex.1014, 4, ¶6. Wright (Ex. 1002) discloses a four-legged
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`stool as shown below in Section VI(A). Petitioner’s proposed construction is also
`
`consistent with Patent Owner’s construction in its preliminary infringement
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`16
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`contentions in the related litigation, namely, “anything with, for example, multiple
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`legs to support a floor rocker frame.” Ex. 1017, 4.
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`Regarding the connector, the only corresponding structure disclosed in the
`
`specification is a chair control 340. It is described as “a connector that operatively
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`connects the saddle 310 with the pedestal 334,” Ex. 1001, 7:37-39, and it is a
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`separate component between saddle 310 and pedestal or post 334. See Fig. 23.
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`Thus, the connector is as much a part of the saddle as it is part of the pedestal.
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`Under the BRI standard, whether it is the base portion or the pedestal that
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`“includes a connector,” the clause should be construed simply to require a
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`connector on the pedestal, whether as part of the pedestal or part of the saddle, or
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`common to both as the joint of a hinge is common to two hinge plates.
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`H.
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`“means for releasably engaging said chair to said base
`portion” (claim 12)
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`The corresponding structure described in the specification for the “releasably
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`
`
`
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`engaging” function is a latch with a component (160) on the chair and a component
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`on the base. Ex. 1001. See, e.g., Figs. 15-17, 4:66 to 5:1 and 5:55-62.
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`
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`Without waiving any noninfringement defense, Petitioner notes that Patent
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`Owner asserts in its proposed claim construction in the related litigation that this
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`limitation is not subject to 35 U.S.C. §112 ¶6 and that, therefore, it “may capture
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`any ‘manually operable’ chair-to-base coupling mechanism and Sauder asserts that
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`this is the proper construction.” Ex. 1016, 5. Petitioner submits that it is reasonable
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`17
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`to take Patent Owner’s asserted coverage into account when applying the BRI
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`standard to this claim limitation.
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`
`VI. GROUNDS OF UNPATENTABILITY
`
`
`A. Ground 1 – Claims 1, 2, 4-8, 10 and 11 Are Anticipated Under 35
`U.S.C. §102 by U.S. Patent No. D139,241 to Wright, issued
`10/24/1944 (“Wright”) (Ex. 1002)
`
`
`
`Chair
`upper
`portion
`
`
`3
`
`Rocker
`rail
`
`Saddle
`
`Stool
`
`BR
`
`1
`
`Chair
`upper
`portion
`
`SP
`
`2
`
`Chair
`lower
`portion
`
`4
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`
`
`Stool
`
`BR
`
`1
`
`5
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`Saddle
`
`
`
`
`
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`The drawings above are annotated versio