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
`_______________
`
`Case IPR2015-00774
`Patent No. 8,585,136
`
`CHAIR WITH COUPLING
`COMPANION STOOL BASE
`_______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 CFR §42.107
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTSTABLE OF CONTENTS
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`
`
`INTRODUCTION .................................................................................. 1
`
`INTRODUCTION ................................................................................ .. 1INTRODUCTION ................................................................................ .. 1
`
`THE PETITION DOES NOT SERVE THE FUNDAMENTAL
`
`THE PETITION DOES NOT SERVE THE FUNDAMENTALTHE PETITION DOES NOT SERVE THE FUNDAMENTAL
`GOALS OF IPRS ................................................................................... 2
`
`GOALS OF IPRS ................................................................................. .. 2GOALS OF IPRS ................................................................................. .. 2
`
`I.
`
`I.I.
`
`II.
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`II.II.
`
`
`III. PETITIONER WAS DILATORY IN FILING THE PETITION ........... 3
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`III.III.
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`PETITIONER WAS DILATORY IN FILING TI-IE PETITION ......... .. 3PETITIONER WAS DILATORY IN FILING TI-IE PETITION ......... .. 3
`
`IV. THE PETITION WAS BASED IN PART ON OMISSIONS AND
`
`IV.IV.
`
`THE PETITION WAS BASED IN PART ON OMISSIONS ANDTHE PETITION WAS BASED IN PART ON OMISSIONS AND
`
`MISREPRESENTATIONS OF MATERIAL FACT AND LAW ......... 4
`
`MISREPRESENTATIONS OF MATERIAL FACT AND LAW ....... .. 4MISREPRESENTATIONS OF MATERIAL FACT AND LAW ....... .. 4
`
`V.
`
`V.V.
`
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`VI. PATENT OWNER’S CLAIM CONSTRUCTIONS AND COMPARISONS
`
`VI.VI.
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`PATENT OWNER’S CLAIM CONSTRUCTIONS AND COMPARISONSPATENT OWNER’S CLAIM CONSTRUCTIONS AND COMPARISONS
`
`TO PETITIONER’S CONSTRUCTIONS ............................................. 10
`
`TO PETITIONER’S CONSTRUCTIONS ........................................... .. 10TO PETITIONER’S CONSTRUCTIONS ........................................... .. 10
`
`VII. ARGUMENT REGARDING THE REJECTION BASED ON SAUDER’S
`
`VII. ARGU1\/[ENT REGARDING THE REJECTION BASED ON SAUDER’SVII. ARGU1\/[ENT REGARDING THE REJECTION BASED ON SAUDER’S
`
`PUBLICATION ...................................................................................... 18
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`PUBLICATION .................................................................................... .. 18PUBLICATION .................................................................................... .. 18
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`VIII. THE READABILITY OF CLAIMS ON PRIOR ART .......................... 19
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`VIII. TI-IE READABILITY OF CLAHVIS ON PRIOR ART ........................ .. 19VIII. TI-IE READABILITY OF CLAHVIS ON PRIOR ART ........................ .. 19
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`IX. CONCLUSION ....................................................................................... 20
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`IX.IX.
`
`CONCLUSION ..................................................................................... .. 20CONCLUSION ..................................................................................... .. 20
`
`
`THE PETITIONER’S CONSTRUCTIONS ARE MANIFESTLY
`
`THE PETITIONER’S CONSTRUCTIONS ARE MANIFESTLYTHE PETITIONER’S CONSTRUCTIONS ARE MANIFESTLY
`UNREASONABLE ................................................................................ 7
`
`UNREAS ONABLE .............................................................................. .. 7UNREAS ONABLE .............................................................................. .. 7
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`

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`EXHIBIT LIST
`
`
`
`Exhibit
`
`Motion for an Extension in N.D. of Ohio Case No. 14-cv-00962
`
`Order Denying Motion for and Extension
`
`Motion to Stay Action Pending Inter Partes Review
`
`Order Denying Motion for Stay
`
`Joint Prehearing Statement
`
`Notice of Allowance
`US Patent No. 8,777,305
`
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`
`
`
`
`
`
`

`
`I.
`
`INTRODUCTION
`
`
`
`This is the preliminary response of Patent Owner, Sauder Manufacturing
`
`Company, to the Petition for Inter Parties Review filed February 19, 2015 on
`
`behalf of J Squared, Inc. d/b/a University Loft Company.
`
`
`
`The Petition should be denied for the following reasons:
`
`1.
`
`The Petition does not serve the fundamental goal of IPRs; i.e., it
`
`does not promote efficiency or reduce costs for adversaries in patent
`
`litigation, nor does it conserve government resources; if granted it will result
`
`in parallel proceedings in both the United States Patent and Trademark
`
`Office, and the United States District Court for the Northern District of
`
`Ohio;
`
`2.
`
`The Petition
`
`is based
`
`in part on omissions
`
`and
`
`misrepresentations of material fact and law; and extrinsic evidence that is
`
`inconsistent with the content of the patent;
`
`3.
`
`The Petitioner’s
`
`claim
`
`constructions
`
`are manifestly
`
`unreasonable as inconsistent with the patent specification, the prosecution
`
`histories of two issued patents-in-suit, and constructions of substantially
`
`identical terms used by Petitioner is in its own U.S. Patent No. 8,777,305
`
`disclosing nearly identical subject matter; and
`
`
`
`
`1
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`

`
`
`
`
`
`4.
`
`Patent Owner shows herein that the broadest reasonable
`
`interpretations of the two independent claims are substantially different than
`
`those urged by Petitioner.
`
`II. THE PETITION DOES NOT SERVE THE FUNDAMENTAL
`
`GOALS OF IPRS
`
`The legislative intent for IPR’s is to spare parties to litigation, unnecessary
`
`
`
`expense, and conserve governmental resources by confining the complicated
`
`review of patentability to one forum by timely filed Petitions. In this case, that
`
`objective is not being realized.
`
`
`
`In fact, the very issues which are raised in this Petition are currently being
`
`litigated through Markman proceedings in the United States District Court for the
`
`Northern District of Ohio, Western Division (Toledo, Ohio); Civil Action No.
`
`3:14-cv-00962-JZ. That suit was filed in March 2014, and a full Markman hearing
`
`was held on Thursday, May 21, 2015. A decision may be issued before the IPR,
`
`should the Petition be granted, will even be off the ground.
`
`
`
`It makes little or no sense for the same issues to be litigated in two forums at
`
`the same time, placing unnecessary burdens on both parties and on U.S. taxpayers.
`
`That this unfortunate multiplication of effort and the potentially inconsistent results
`
`that may obtain could have been avoided by timely acts on Petitioner’s part is
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`discussed in the next section.
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`
`
`
`
`
`2
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`

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`III. PETITIONER WAS DILATORY IN FILING THE PETITION
`
`As indicated above, patent infringement litigation was initiated by Patent
`
`
`
`Owner against Petitioner in the United States District Court for the Northern
`
`District of Ohio in March 2014. Petitioner immediately filed a counterclaim
`
`challenging the validity of the ‘136 patent on the basis of the very same prior art
`
`which forms the foundation of this Petition.
`
`
`
`On or about September 8, 2014, six months after the suit was instituted,
`
`counsel for Petitioner/Defendant/Counter-Claimant filed a Motion for Extension of
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`Time to Produce Documents based, among other things, on Defendant’s intent to
`
`file a Petition for Inter Parties Review. (Exhibit 2001)
`
`As a result of the cessation of settlement discussions, and as
`previously raised at the Status Conference in June, J Squared now
`intends to file, within the next thirty (30) days, a Petition for Inter
`Parties Review (the “IPR Petition”) of the patents at issue in this suit
`with the United States Patent and Trademark Office, and J Squared
`also intends to file with this Court a Motion to Stay this Action.
`(emphasis added)
`
`The Motion for Extension of Time was denied. (Exhibit 2002). The Petition
`
`
`
`was not filed within thirty (30) days, it was not filed until February 2015, nearly
`
`five months later! Petitioner/Defendant/Counter-Claimant thereafter filed a
`
`Motion to Stay the action pending Inter Parties Review. (Exhibit 2003). That
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`Motion was denied. (Exhibit 2004).
`
`
`
`
`3
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`

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`
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`Petitioner waited eleven months to file its Petition; i.e., barely within the
`
`statutory 12 month limit, after telling the District Court of an intent to do so five
`
`months earlier. Meanwhile the Markman proceedings have gone ahead in the
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`United States District Court. A full Markman hearing was held on May 21, 2015
`
`in the courthouse in Toledo, Ohio.
`
`
`
`This unfortunate overlap
`
`in
`
`activity
`
`is
`
`the direct
`
`result of
`
`Petitioner/Defendant’s delay in filing the Petition until such time as the claim
`
`construction proceedings in the District Court were well underway. In short,
`
`Petitioner knew that the Court was going ahead with Markman proceedings when
`
`the Petition was filed.
`
`
`
`A Petition filed in bad faith, dilatory under the circumstances, and
`
`productive of unnecessary duplication of effort should not be granted.
`
`IV. THE PETITION WAS BASED IN PART ON OMISSIONS AND
`
`MISREPRESENTATIONS OF MATERIAL FACT AND LAW
`
`A.
`
`The Presence of a §112 Limitation in Claim 12
`
`The Petition alleges, among other things, that the Patent Owner took the
`
`
`
`
`
`position that claim 12 of the ‘136 patent, and particularly the phrase “manually
`
`operable means for releasably engaging said chair to said base portion” was not
`
`subject to statutory construction under 35 USC §112 ¶6. The fact is, after
`
`progressing through multiple preliminary stages, the parties reached a final
`
`agreement which was made of record at the hearing on May 21, 2015 that this
`
`
`
`
`4
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`

`
`phrase was indeed subject to construction under 35 USC §112 ¶6. (Exhibit 2005)
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`Therefore, claim 12 of the ‘136 patent and has a limitation that Petitioner has
`
`completely failed to address.
`
`
`
`The Petition should therefore be denied with respect to claim 12 and
`
`dependent claims 13 and 14 as well.
`
`B.
`
`
`The Petition Omits Portions of Patent Office Prosecution Records
`That Are Contrary To Petitioner’s Constructions
`
`Petitioner offers Exhibit 1014 as relevant; it is a portion of the prosecution
`
`
`
`
`
`record of what is now Patent No. 8,960,787, based on a continuation of the
`
`application leading to the ‘136 patent. This document completely contradicts three
`
`of Petitioner’s most important constructions.
`
`
`
`First, Examiner T. Brindley stated that in Exhibit 104 the Yu patent discloses
`
`a chair with:
`
`“. . . a flat tabletop (Fig. 3 of such height as to be accessible as a
`work surface to a user seated in said chair resting in said rails . .
`.” Petition Exhibit 1014, p. 3 (emphasis added)
`
`
`This clearly shows that a qualified Patent Office Examiner construed the
`
`
`
`term “accessible to said user as a work surface” found in ‘136 patent claim 1 as a
`
`height limitation! This fully supports Patent Owner’s position on this term in
`
`claim 1 as hereinafter argued. The Examiner’s construction of “accessible” is
`
`prima facie reasonable and should be given deference.
`
`
`
`
`5
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`

`
`
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`Second, Examiner Brindley made the following statement with respect to the
`
`location of the rocker surfaces in the prior art Wright patent:
`
`Regarding claim 27, upon further consideration and in new of
`Applicant’s arguments, the rocker members of Wright are not
`considered “beneath” the seat undersurface, as this limitation is
`taken to mean vertically underneath and the rocker members of
`Wright are along the sides of the seat portion. Notice of
`Allowance 12/05/14, p. 2, Exhibit 2006. (emphasis added).
`
`
`This fully contradicts Petitioner’s construction of the phrase “positioned
`
`
`
`below.” Again, deference must be given to the Examiner’s construction.
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`
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`Finally, in the Office Action of Petitioner’s Exhibit 1014, p. 5, the Examiner
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`expressly found that Wright does not teach a mechanism for “releasably coupling”
`
`the seat to the stool:
`
`Wright does not teach an attachment mechanism for releasably
`coupling the chair to the tabletop. Office Action 11/13/14, p. 4;
`Petitioner’s Exhibit 1014, p. 5.
`
`
`This evidence directly contradicts another of Petitioner’s arguments; see,
`
`
`
`e.g., Petition, p. 19, 20. It may also be noted that on p. 20, Petitioner advances the
`
`argument that Wright discloses a “peg” on the (unseen) bottom of the chair. There
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`is no such peg shown anywhere in the patent; this allegation is made in bad faith.
`
`
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`In summary, three of Petitioner’s critical constructions are contradicted by a
`
`record of proceedings in the Patent Office itself, a record Petitioner uses as an
`
`exhibit! The Petition should be denied as a result.
`
`
`
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`6
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`

`
`THE PETITIONER’S CONSTRUCTION OF ARE MANIFESTLY
`UNREASONABLE
`
`In Patent Office proceedings including both original examination and
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`V.
`
`
`
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`reexamination situations, the office must construe claims according to the
`
`“broadest reasonable interpretation” consistent with the overall disclosure and
`
`teachings of the patent specification; In re Van Geuns, 988 F. 2d. 1181, 26
`
`USPQ2d. 1057 (Fed. Cir. 1993). As argued above, no less than three constructions
`
`were resolved in the Patent Office. It is far less “reasonable” to rely on
`
`constructions or interpretations drawn from thin air, which are inconsistent with
`
`the clear teachings of the patent disclosure and/or are inconsistent with the
`
`meanings given to substantially identical terms used in other patents in the same
`
`art; Voice Tech Group, Inc. v. VMC Sys. Inc., 164 F.3d. 605, 49 USPQ2d. 1333
`
`(Fed. Cir. 1999).
`
`
`
`Petitioner violates these rules in numerous ways including: (a) ignoring
`
`actual Patent Office findings made in prosecution; (b) the advancement of
`
`interpretations that are well beyond the teachings of the patent application; (c) are
`
`inconsistent with the interpretation Petitioner itself places on nearly identical terms
`
`in its own US Patent No. 8, 777,305 (Exhibit 2007) drawn nearly identical subject
`
`matter; and (d) by advancing interpretations that are “cherry picked” from a
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`dictionary.
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`
`
`
`
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`7
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`

`
`A.
`
`The Invention As It Is Disclosed In The Patent Application Itself
`
`The patented article is a desk chair consisting of just two parts: a floor
`
`
`
`
`
`rocker 100 and a stool base 300. The floor rocker comprises a seat 134, a backrest
`
`114, and a pair of curved rockers 106, 180, which are “positioned below” the seat
`
`surface so as to permit the floor rocker to rock when placed on the floor. The
`
`rocker rails do not reach the floor when the floor rocker and base are in the “first
`
`configuration.” Patent Spec., col. 8, lines 36-38.
`
`
`
`Coupling of the chair and base is realized in part by the use of a claw 110,
`
`142 in the front of the seat to “capture” the front edge of the base saddle 310 by
`
`fitting into a pair of notches. Coupling further involves a spring-biased latch 160
`
`capturing the rear of the saddle; see FIGS. 10-14 of the patent drawings, and the
`
`specification in col. 9, beginning at line 7. When fully “coupled,” the inter-fitting
`
`relationships between the claw and the saddle and the latch and the saddle are such
`
`that relative movement between the floor rocker and the base is prevented in all
`
`directions, and the two components effectively function as a unit. The importance
`
`of a secure coupling is stressed in the specification at col. 2, lines 43-47 (the
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`protection of the latch); col. 3, lines 4-23 (preventing accidental disengagement);
`
`and col. 9, lines 7-15 (preventing disengagement).
`
`
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`The decoupled “second configuration” is shown in Figs 18 and 19 of the
`
`patent drawings and thoroughly described in the patent specification. As shown in
`
`
`
`
`8
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`

`
`Figs. 18 and 19, and as concluded by Examiner Brindley in the quotation drawn
`
`from Petitioner’s Exhibit 1014, p.3, the accessibility of the writing surface (col. 8,
`
`line 18) provided by the top of the saddle in the “second configuration” is a matter
`
`not only of proximity but of height; i.e., the top surface of the saddle 312 lies
`
`where a seated “user” of the floor rocker can see it and use it as a writing table.
`
`
`
`The article or “combination” as it is introduced in the preamble of claim 1, is
`
`limited to just two components; i.e., the floor rocker and the base. The preamble
`
`uses closed-ended terminology, a point which Petitioner concedes on p. 4 of its
`
`Brief under IV. Summary of the ‘136 Patent.
`
`
`
`As a result, the most reasonable construction of claim 1 is as follows:
`
`1.
`
`A combination consisting of a floor rocker and a stool
`base wherein:
`
`the floor rocker includes a seat and a backrest for a
`a.
`first user in a seated position, and an assembly positioned
`under the seat with structure forming a pair of rocker
`legs which are directly below the seat;
`
`the stool base includes a saddle in the form of a
`b.
`tabletop adapted to support the floor rocker in releasable
`engagement therewith such that the combination can be
`configured as a desk chair wherein the floor rocker is
`securely coupled to the saddle to prevent relative
`movement or separation in all directions in use and
`wherein the floor rocker is positioned directly above the
`saddle;
`
`the combination further being manually rearranged
`c.
`into a second separated configuration wherein the floor
`rocker continues to function as a chair for the first user
`
`
`
`
`
`
`
`
`
`
`9
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`

`
`and the saddle of the base is positioned at a height
`relative to the seated first user for use as a writing surface
`or, alternatively, as a seat for a second user.
`
`
`VI. PATENT OWNER’S CLAIM CONSTRUCTIONS AND
`COMPARISONS TO PETITIONER’S CONSTRUCTIONS
`
`
`First, it is important to recall that there are only two independent claims in
`
`
`
`the patent; claim 1 and 12. Claim 12 contains a “means plus function” limitation
`
`Petitioner has not addressed. Therefore, the following analyses deal primarily with
`
`claim 1.
`
`
`
`
`
`A.
`
`“Combination of a chair and a Stool Base Portion”
`
`This is the preamble of claim 1 and is an important part of the claim in that
`
`the word “combination” appears several times in the body of the claim. Thus, the
`
`preamble gives life and meaning to the claim and must be taken into account in the
`
`overall construction of the claim content. NTP, Inc. v. Research in Motion Ltd.,
`
`418 F.3d. 1282 (Fed. Cir. 2005).
`
`
`
`Moreover, it is clearly a closed-ended phrase inasmuch as it omits any use or
`
`inference of the magic word “comprising” which, according to well-established
`
`patent protocol, is taken as a signal that the elements recited are merely those
`
`which the author has chosen to select from an open-ended list. In short, the
`
`preamble defines a combination of only two parts. Therefore, the rockers must be
`
`an integral part of the floor rocker and not a separate, optional base as shown, for
`
`example, in the prior art Lutes patent.
`
`
`
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`10
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`

`
`
`
`
`
`
`
`Petitioner does not challenge this position.
`
`B. Couple/Coupled
`
`The term “couple,” and variations thereof, used in claim 1 is found twelve
`
`times throughout the specification. In each case, it refers to joining of the floor
`
`rocker 100 and the base 300 using the front claw 142 and the rear latch 160.
`
`Examples are as follows:
`
`The chair portion has a frame that may be supported above a
`generally horizontal surface by the base, which base releasably
`couples with the frame. Col. 1, lines 57-60.
`
` A
`
` preferred embodiment of a chair with a coupling companion
`stool base according to the invention is generally shown in the
`drawing comprising Figs. 1-23 and discussed below. Col. 4,
`lines 17-21.
`
`While the claw 142 is shown as a fixed member, at least one of
`the claw 142 and the latch 160 is preferably a moveable
`member so that the chair portion 100 and the base 300 are
`releasably coupled. Col. 5, lines 62-65.
`
`The chair portion 100 may releasably couple with the base
`portion 300 and provide a task chair or desk chair for a user
`(FIGS. 1-8). Coupling of the chair with the base is easily
`accomplished by manipulating the chair so the saddle front
`edge 314 slides toward and into the claw 142, which is of
`course from a perspective of the chair portion. Col. 8, lines 36-
`41.
`
`
`These and other portions of the patent specifications leave no doubt as to the
`
`
`
`meaning of the term “coupled”; i.e., it is the relationship between the floor rocker
`
`and the base when they are fully and securely joined together, functioning as a
`
`
`
`
`11
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`

`
`unit, and resisting movement or separation relative to one another in all directions.
`
`The specification indicates that this is, among other things, a matter of safety; i.e.,
`
`spec. col. 2, lines 43-47; col. 3, lines 4-27; col. 9, lines 7-15.
`
`
`
`For “coupled,” Petitioner proposes the interpretation “connected but not
`
`necessarily locked together.” This construction is the exact opposite of what is
`
`described in the patent specification. In fact, it is inconsistent with the patent
`
`specification and aimed directly at the prior art Wright patent, which Examiner
`
`Brindley specifically said was not coupled; see Section “IV, B” above.
`
`
`
`It is relevant that Petitioner, through the same counsel who drafted the
`
`Petition, uses substantially
`
`the same
`
`terminology (“coupler,” “couplers”)
`
`throughout the specification and claims of U.S. Patent 8,777,305 which describes
`
`the accused infringing chair (Exhibit 2007). That patent is not merely a “close
`
`analogy” to the chair covered by the ‘136 patent, but a chair which is substantially
`
`identical in appearance, size, utility, and function. In that patent, the “floor rocker”
`
`may be releasably and securely “coupled” by means of a claw and a set of spring-
`
`biased latches to a base or released from the base to function as an “office chair.”
`
`
`
`Petitioner’s proposed constructions
`
`for “coupled” and “chair” are
`
`unreasonable and should be rejected.
`
`C.
`
`First Configuration
`
`This term falls in a paragraph in claim 1, the entirety of which reads:
`
`12
`
`
`
`
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`
`
`

`
`said combination is configurable in a first configuration with
`the chair being coupled to said saddle and said sitting portion
`being positioned above said saddle.
`
`This is the “desk chair” configuration; see col. 8, lines 37-43. It should also
`
`
`
`be noted that this phrase uses the term “positioned above” in defining the
`
`relationship between the seat and the saddle. A comparable term “positioned
`
`below” is found later in the claim and will be discussed below. Petitioner’s own
`
`patent recognizes that the chair is not an infant high chair, but an “office chair.”
`
`D.
`
`
`
`
`
`Said Combination is Manually Convertible Between Said First
`Configuration and a Second Configuration, Wherein the Second
`Configuration Comprises Said Chair Still Functioning as a Chair
`for Said First User, and Said Stool Functioning So That Said
`Saddle is Accessible to First User As a Work Surface . . .
`
`It will be noted that this part of claim 1, which Patent Owner says should be
`
`
`
`
`
`
`
`
`
`read as in its entirety, encompasses a number of terms that Petitioner has chosen to
`
`construe individually; namely, “accessible” and “work surface.” It makes more
`
`sense to construe these terms in the context of the entire phrase and, for that matter,
`
`in the context of the entire disclosure. The patent specification shows that when in
`
`the second or decoupled configuration, and a user is seated in the floor rocker, the
`
`saddle is “accessible” to him or her as a writing table in the sense that it is not only
`
`proximate the floor rocker as shown in Figs 18 and 19 of the drawing, but also at
`
`an appropriate height so that the stool top can be effectively used as a writing table.
`
`This very issue was addressed by Examiner Brindley in the prosecution of the
`
`
`
`
`13
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`

`
`companion ‘787 patent, as described above, and resolved entirely in Patent
`
`Owner’s favor. See Section IV, B.
`
`
`
`In this regard, it is noted that Petitioner chooses to use dictionary definitions
`
`for the terms “below,” “rocker” and “latch.” Patent Owner believes that references
`
`to dictionaries where meanings are drawn completely out of context to any
`
`particular document or application, are a distant “second best” as compared to the
`
`patent specification itself. Phillips v. AWH Corp., 415 F.3d. 1303 (Fed. Cir. 2005).
`
`Petitioner’s selection of the construction of the word “below” as meaning simply
`
`“lower than” (as if it were an altitude limitation) is totally divorced from the patent
`
`specification and is wrong. Every aspect of the disclosure of the ‘136 patent shows
`
`the rocker rails to be fully below the seat, not to the sides, and the Patent Office has
`
`already made a finding which is in complete agreement with Patent Owner’s
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`position. That finding should be honored. Although not in claim 1, the
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`Petitioner’s construction of “latch,” drawn from a dictionary, is also clearly wrong.
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`The “dictionary” to use is the patent specification; Phillips, Id. Petitioner’s
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`definition would not, for example, encompass a magnetic latch. Patent Owner
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`submits the term should be construed as a “manually operable device having an
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`open position that allows separation of two components and a closed position that
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`locks the components together.”
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`E. An Assembly Positioned Below Said Sitting Portion Forming At
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`Least a Pair of Base Legs Which are Structured so as to Function
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`as Rockers
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`Petitioner advances two arguments for terms in this limitation: (1) the term
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`“below,” used to define the location of the rocker legs assembly relative to the seat,
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`means only that some part of the assembly is lower in space than the seat, and (2)
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`the phrase “structured so as to function as rockers” is non-structural and should be
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`construed to cover base legs for chairs that are not rockers at all!
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`
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`With respect to the first point, the actual language is “positioned below” and
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`is used in the same way “positioned above” is used in the preceding part of the
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`claim describing the relationship between the seat and the saddle. In every aspect
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`of the patent disclosure the rocker rails are vertically under the seat, not merely
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`lower in relative altitude as Petitioner would suggest. In fact, some parts of the
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`rails are not “lower than” some parts of the seat, so Petitioner’s definition does not
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`actually fit the facts.
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`As explained in part “IV, B” above, this very issue was raised and resolved
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`in the prosecution of the companion patent (‘787) issued in 2015 by Patent Owner
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`with the exact same disclosure; i.e., specification and drawings, as the ‘136 patent.
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`There, the Examiner made an initial rejection of a claim stating that the rocker rails
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`were beneath the seat, as allegedly shown in the Wright patent, where the side
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`15
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`boards attached to the sides of the seat and rising substantially above the level of
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`the seat, had curved to rocker surfaces lower than the seat but not under the seat.
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`
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`After receiving and considering Patent Owner’s argument, the Examiner
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`recognized that the term “positioned below” meant physically under the seat and
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`not merely lower than. (Exhibit 2006). This shows directly and unequivocally
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`that Petitioner’s construction of “below” is unreasonable and inconsistent with how
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`a qualified examiner construed an equivalent term.
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`
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`With respect to the phrase “structured to function as rockers” it is
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`Petitioner’s creative theory that the attorney who prosecuted the application
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`dodged the Examiner’s request to insert a structural recitation of rockers into claim
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`1 in order to distinguish from the prior art Yu patent by using the phrase “structured
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`to function as rockers” instead of simply saying “rockers.” Petitioner’s counsel
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`took the same incredible position before the Court in the Markman hearing. The
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`fallacy this is a non-structural “generic” term readable on non-rockers lies in the
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`fact that the phrase includes the word “structured” which places it beyond doubt as
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`to its impact as a structural limitation.
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`Indeed, this is a matter which was clearly resolved by the prosecution history
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`as is faithfully recorded in the prosecution history advanced by the Petitioner. The
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`phrase should be construed in structural terms and to encompass only legs
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`contoured to function as rockers.
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`F.
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`Engaged
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`Petitioner advances the proposition that the word “engaged” should be
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`construed to simply require contact between the engaged components. Several
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`examples are given.
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`The truth of the matter is that the term “engaged” is used in various ways
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`throughout the ‘136 patent. In claim 12, it is used as a synonym for “coupled” in
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`the means plus functional limitation “manually operable” means “releasably
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`engaging said chair to said chair portion.” The term is used in the same claim with
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`the word “coupled” to refer to the physical relationship between the floor rocker
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`and the base in the coupled configuration. Of course they are in contact with one
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`another, but they are also locked together.
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`
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`The net result of reading the entire specification and gleaning the meaning or
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`meanings for the term “engaged,” is that it is used in several different ways within
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`the same document and, therefore, must be read in context. Where it refers to the
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`fact that the rocker surfaces engage the floor, it clearly means simple contact. No
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`one reading the patent specification would ever conclude that the rocker is
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`somehow locked to the floor by simply resting on it. At the same time, reading
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`claim 12 as a whole (as the reader must under the BRI standard) the term
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`“engaged” in the means plus function limitation means locked together by virtue of
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`the structure that is provided for achieving that purpose.
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`17
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`
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`Petitioner’s position on this issue is unreasonable and wrong.
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`VII. ARGUMENT REGARDING THE REJCTION BASED ON SAUDER’S
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`PUBLICATION
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`In section V of his presentation, Petitioner argues that the limitations in
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`
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`claims 1 and 12 “in a pair of base legs which are structured so as to function as
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`rockers’ and “said base legs function as rockers when said chair is in said second
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`configuration,” respectively, are generic to any and all kinds of base legs including
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`several that do not enable rocking. Petitioner further argues that the “sled” rail
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`chairs and four-legged chairs shown on p. 14 of the Petition can be tipped back,
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`and are, therefore, covered by the phrases in question. This interpretation is
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`neither factual nor reasonable.
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`
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`The next step in Petitioner’s reasoning process is to argue that the
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`introduction of the limitations in question was such as to constitute new matter
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`relative to the parent applications, thus leaving Patent Owner with only his actual
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`filing date of October 20, 2011.1 This last step is Petitioner’s undoing; i.e., the
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`reasoning he pursues depends on the proposition that the claim limitation exceeds
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`the scope of the disclosure! This is tantamount to an admission that Petitioner’s
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`1 At first glance, Petitioner’s reasoning sounds like an application of the
`discredited Doctrine of Late Claiming; see Westphal v. Fawzi, 666 F.2d. 575
`(CCPA 1981). However, this is not the case.
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`18
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`proffered construction is not drawn on the patent specification, as it must be, but
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`on his own creative imagination. This construction is per se unreasonable.
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`VIII. THE READABILITY OF CLAIMS ON PRIOR ART
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`Having demonstrated beyond argument that Petitioner’s construction of
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`claims 1 and 12 are unreasonable and/or inconsistent with actual agreement
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`between Petition and Patent Owner, it is unnecessary to work through the various
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`conclusions of patentability under §102 and 103 of the Patent Code; i.e., if the
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`claim constructions are wrong, the application of the claims to the art are
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`necessarily wrong as well. Key Mfg. Group v. Microdot, 925 F.2d. 1444 (Fed. Cir.
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`1991) and other cases. Moreover, if Petitioner’s constructions of claims 1 and 12
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`are wrong, the constructions of all dependen