`
`EXHIBIT 2021
`
`Decision on Institution
`of Inter Partes Review,
`Case No. IPR2012-00218
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`
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`Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper 9
`Entered: May 20, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LAROSE INDUSTRIES, LLC
`Petitioner
`
`v.
`
`CHOON’S DESIGN, LLC
`Patent Owner
`_______________
`
`Case IPR2014-00218
`Patent 8,485,565 B2
`_______________
`
`
`Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2014-00218
`Patent 8,485,565 B2
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`I.
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`INTRODUCTION
`A. Background
`LaRose, LLC (“Petitioner”) filed a petition to institute an inter partes review
`of claims 1 and 5-14 of U.S. Patent No. 8,485,565 B2 (“the ’565 patent”). Paper 1
`(“Pet.”). The patent owner, Choon’s Design, LLC (“Patent Owner”), filed a
`preliminary response. Paper 8 (“Prelim. Resp.”).1 The standard for instituting an
`inter partes review is set forth in 35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 on the following grounds (Pet. 25-60):
`References
`Basis
`Claims challenged
`MacBain2
`§ 102
`1, 5, 6, 8, and 10-14
`
`MacBain and Pugh,3 Schaub,4
`Parisi,5 or Gustin6
`MacBain
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`§ 103
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`§ 103
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`1
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`7
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`9
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`§ 103
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`MacBain and Meltzer,7
`Darnell,8 Hunter,9 or Carruth10
`
`1 Patent Owner’s response is not indicated as a “preliminary response,” but we treat
`it as such because it was filed within the appropriate time for a preliminary
`response and it appears to be a preliminary response in form.
`2 U.S. Patent No. 5,231,742 (Ex. 1010) (“MacBain”).
`3 UK Patent App. No. GB 2147918 A (Ex. 1015) (“Pugh”).
`4 U.S. Patent No. 8,316,894 B2 (Ex. 1016) (“Schaub”).
`5 U.S. Patent No. 2,457,064 (Ex. 1006) (“Parisi”).
`6 U.S. Patent No. 7,506,524 B2 (Ex. 1017) (“Gustin”).
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`Patent 8,485,565 B2
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`References
`MacBain and Meltzer or
`Carruth
`Pugh
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`Pugh and Meltzer, Darnell,
`Hunter, or Carruth
`Pugh and MacBain, Meltzer, or
`Carruth
`Schaub
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`Schaub and Meltzer, Darnell,
`Hunter, or Carruth
`Schaub and MacBain, Meltzer,
`or Carruth
`Parisi
`
`Parisi and Pugh
`
`Parisi and Meltzer, Darnell,
`Hunter, or Carruth
`Parisi and MacBain, Meltzer,
`or Carruth
`Gustin
`
`Gustin and Pugh
`
`Gustin
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`Gustin and Meltzer, Darnell,
`Hunter, or Carruth
`Gustin and MacBain, Meltzer,
`or Carruth
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`Basis
`§ 103
`
`§ 102
`
`§ 103
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`§ 103
`
`§ 102
`
`§ 103
`
`§ 103
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`§ 102
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`§ 103
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`§ 103
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`§ 103
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`§ 102
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Claims challenged
`11
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`1 and 5-8
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`9
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`10 and 11
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`1 and 5-8
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`9
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`10 and 11
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`1 and 8
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`5
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`9
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`10 and 11
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`1 and 8
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`5
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`7
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`9
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`10 and 11
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`7 U.S. Patent No. 5,426,788 (Ex. 1011) (“Meltzer”).
`8 U.S. Patent No. D592, 537 S (Ex. 1012) (“Darnell”).
`9 U.S. Patent No. 7,040,120 B2 (Ex. 1013) (“Hunter”).
`10 U.S. Patent No. 8,418,434 B1 (Ex. 1014) (“Carruth”).
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`For the reasons given below, we institute an inter partes review of claims 1,
`5-8, 10, and 11. We do not institute an inter partes review of claims 9 and 12-14.
`B. Real Party-in-Interest
`Petitioner indicates that the real parties-in-interest in the Petition are LaRose
`Industries, LLC and Toys “R” Us-Delaware, Inc. Pet. 1.
`C. Additional Proceedings
`Petitioner indicates that the ’565 patent is the subject of the following co-
`pending federal district court case: Choon’s Design LLC v. LaRose Industries,
`LLC, No. 2:13-cv-13569-TGB-MKM (E.D. Mich.). Pet. 1.
`D. The ’565 Patent (Ex. 1001)
`The ’565 patent is titled “Brunnian Link Making Device and Kit” and
`generally relates to a kit and method for creating a linked item formed from a
`series of links, such as “Brunnian” links. Ex. 1001, 1:1, 27-34, 2:28-30. A
`Brunnian link is formed from a closed loop doubled over itself to capture another
`closed loop to form a chain. Id. at 1:27-29. The ’565 patent provides examples of
`linked items such as bracelets, necklaces and other wearable or decorative items.
`Id. at 2:29-30. The ’565 patent discloses that kits for making uniquely-colored
`bracelets and necklaces have always been popular, but that there is a need and
`desire for a kit that simplifies construction to make it easy for people of different
`skills and artistic levels to create desirable, durable, and wearable items. Id.
`at 1:14-23.
`Figures 4, 5A, and 5B of the ’565 patent illustrate the basic components of
`the kit and are reproduced below.
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`Figure 4 is a perspective view of an example pin bar. Figure 5A is a perspective
`view of interfacing surfaces of an example base and the example pin bar.
`Figure 5B is a perspective view of a pin bar mounted to an example base.
`The kit includes base 12 that forms a support for pin bars 14. Id. at 2:42-43.
`One or more pin bars 14 can be mounted to one or more bases 12 to provide a
`desired configuration. Id. at 2:46-49, 54-57. Each base 12 includes tabs (keys) 32
`and each pin bar 14 includes slots 34 that receive tabs 32 to maintain pin bars 14
`on base 12 in a desired orientation. Id. at 2:63-67. Pin bars 14 each include a
`plurality of pins 26. Id. at 2:43. Figure 6 of the ’565 patent illustrates pin 26, and
`is reproduced below.
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`Figure 6 is a perspective view of one pin, illustrating the portions of pin 26. Pin 26
`includes flanged top 38, mid portion 46, bottom portion 44, and front access
`groove 40. Id. at 3:6-7, 18-19. Flanged top 38 and bottom portion 44 are each
`flared outward relative to mid portion 46.
`Pins 26 hold links, such as rubber bands 52, 54, 56, in a desired position
`during assembly of the linked item, as illustrated in Figures 14A-14C, reproduced
`below.
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`Figures 14A-14C are perspective views of assembly steps for creating a Brunnian
`linked article, illustrating a portion of bar 42 and pins 26, and a process of making
`a chain of linked items using elastic bands 52, 54, 56, and hook tool 16.
`The ’565 patent explains that top and bottom flared portions 38, 44 center
`rubber bands 52, 54, 56 on mid portion 46, and top flared portion 38 prevents
`errant release of rubber bands 52, 54, 56 during creation of the links. Id. 3:10-12,
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`23-25. As seen above, adjacent ends of rubber bands (e.g., 56, 54) are disposed on
`a common pin 26. Id. at 3:66-4:4. Hook 16 is inserted into access groove 40 of
`common pin 26 to grasp the end of rubber band 54 and pull rubber band 54 onto
`subsequent pin 26 to link rubber bands 54 and 56. Id. at 4:9-20. The process is
`repeated for subsequent rubber bands (52, etc.) until a desired linked item is
`created. Id. at 4:11-22. Free ends of the linked item are then secured by a clip. Id.
`at 4:29-33.
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`Claim 1 illustrates the claimed subject matter and is reproduced below:
`1. A kit for creating an item consisting of a series of
`links, the device comprising:
`
`a base; and
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`at least one pin bar supported on the base, the pin bar
`including a plurality of pins each including a top flared
`portion for holding a link in a desired orientation and an
`opening on a front side of each of the plurality of pins.
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`E. Claim Construction
`Consistent with the statute and the legislative history of the Leahy-Smith
`America Invents Act,11 the Board will interpret claims of an unexpired patent using
`the broadest reasonable construction in light of the specification of the patent. See
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012);
`37 C.F.R. § 42.100(b). Claims are to be given their broadest reasonable
`interpretation consistent with the specification, reading the claim in light of the
`specification as it would be interpreted by one of ordinary skill in the art. In re
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
`
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`11 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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`1. “for holding a link in a desired orientation”
`The phrase “for holding” in claim 1 directly follows the “top flared portion.”
`Petitioner contends that “for holding” in claim 1 relates back to the pins, rather
`than the top flared portions of the pins. Pet. 22. Petitioner argues that the
`recitation in dependent claim 5 that the pin has “a mid portion for holding a link”
`supports this construction. Id. Patent Owner disagrees and contends that, instead,
`“for holding” applies to the top flared portion of each pin. Prelim. Resp. 21-22, 29.
`The specification explains that “[e]ach pin 26 includes the flanged top 38
`that is flared outward to prevent errant release of a rubber band during creation of a
`link.” Ex. 1001, 3:10-12. Based on the information presented at this stage of the
`proceeding, we are not persuaded that claim 5 requires Petitioner’s proposed
`construction of claim 1. The claim language and the description in the
`specification indicate that the top flared portion of the pin is for holding a link in a
`desired orientation. Accordingly, we construe claim 1 to require such an
`arrangement.
`2. “an opening on a front side of each of the plurality of pins”
`Petitioner does not advance a construction for this term. Patent Owner
`contends that the front side recited in claims 1 and 5-11 requires that the openings
`on all pins face the same direction. Prelim. Resp. 22-23. We see no such
`requirement. The phrase “a front side” applies to the pins individually. The pins
`may have openings facing in different directions relative to one another, although
`each opening is still on the front side of the pin relative to some common reference
`point. For example, a loom formed by two parallel rows may include pins having
`front sides and openings facing a direction outward from a central region of the
`loom (i.e., the region between the parallel rows). The central region could be the
`common reference point and the openings on one row would face a direction
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`opposite the openings on the other row, but all openings would still be located on a
`front side of each pin facing away from the common reference point.
`In an alternate example, a loom may include pins having front sides and
`openings facing a direction toward a central region of the loom. Again, the central
`region could be the common reference point, and the openings on one row would
`face a direction opposite the openings on the other row, but all openings would still
`be located on a front side of each pin facing toward the common reference point.
`The common reference point could also be characterized as an exterior region of
`the loom, such as an end, side, or outer perimeter of the loom. These examples are
`consistent with the specification, which only requires that “[e]ach of the pins 28
`includes a flanged top 38 and a front access groove 40.” Ex. 1001, 3:5-7.
`3. “access groove”
`Claim 8 depends from claim 1 and refers to “the access groove.” However,
`there is no recitation of an “access groove” before its introduction in claim 8.
`Petitioner proposes construing “the access groove” in claim 8 as corresponding to
`the “opening” from claim 1. Pet. 23. Patent Owner does not oppose this
`construction, which is consistent with the plain language of the claim as well as the
`specification. For example, claim 1 recites that the opening is on a front side of the
`pin, and claim 8 recites a hook adapted to extend into the access groove for
`capturing one end of a link. The specification describes the features corresponding
`to the openings from claim 1 as front access grooves 40 providing clearance for
`insertion of hook tool 16 into pins 26. Ex. 1001, 3:4-17 and Figs. 6-9. Thus, for
`purposes of this decision, we construe “the access groove” in claim 8 as
`corresponding to the “opening” in claim 1.
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`4. “clip”
`Claim 9 depends from claim 1 and further recites “a clip for securing ends of
`the series of links together.” Petitioner contends that the term “clip” should be
`given its ordinary meaning and proposes the dictionary definition of “a device for
`gripping or holding things together.” Pet. 24 (citing Ex. 1009, 3). Patent Owner
`does not oppose this construction, which is consistent with the specification.
`Based on the record before us, we find Petitioner’s proposed construction to be the
`broadest reasonable construction consistent with both the specification of the ’565
`patent and the plain meaning of “clip.” Consequently, we construe “clip” as “a
`device for gripping or holding things together.”
`5. “Brunnian links”
`Claim 11 depends from claim 1, and further defines the series of links in the
`preamble of claim 1 as “Brunnian links.” The ’565 patent describes a “Brunnian
`link” as “a link formed from a closed loop doubled over itself to capture another
`closed loop to form a chain.” Ex. 1001, 1:27-29. Both Petitioner and Patent
`Owner propose adopting this definition. Pet. 25; Prelim. Resp. 34. Based on the
`record before us, we find the proposed construction to be the broadest reasonable
`construction consistent with both the specification of the ’565 patent and the plain
`meaning of “Brunnian link.” Consequently, we construe “Brunnian link” as “a
`link formed from a closed loop doubled over itself to capture another closed loop
`to form a chain.”
`6. “while engaged with another elastic band”
`Claim 12 is a method claim and recites “capturing one end of an elastic band
`and pulling the end over and onto an adjacent pin while engaged with another
`elastic band.” Petitioner contends that it is unclear whether the claim requires the
`elastic band to be engaged with another elastic band or the adjacent pin to be
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`engaged with another elastic band. Pet. 15. We determine that the language of the
`claim requires the elastic band to be engaged with another elastic band. This is
`consistent with the specification, which explains that elastic band 54 is engaged
`with elastic band 56, while being pulled over pin 26 and onto adjacent pin 26, as
`shown in Figures 14A-14C. See Ex. 1001, 4:9-22.
`
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`II. ANALYSIS
`A. Overview
`Petitioner contends that claims 1 and 5-14 of the ’565 patent are
`unpatentable over the prior art cited in the table above.
`B. Proposed Grounds Based on MacBain
`1. Overview of MacBain
`MacBain describes a loom and method for twining or weaving. Ex. 1010,
`Abstr. Figure 2 from MacBain is illustrative and is reproduced below.
`
`Figure 2 is a perspective view of a loom 11.
`Loom 11 includes base 13, plates 15, 17 secured to base 13, and loom
`fingers 19 extending through openings in plates 13, 17. Id. at 3:59-62. MacBain
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`explains that the arrangement of loom fingers 19 facilitates removal of the weft
`weaving or twining from fingers 19 when completed. Id. at 5:46-61. MacBain
`further explains that loom fingers 19 can easily be removed from plates 15, 17 to
`facilitate weaving from the center out by allowing orientation of pins 19 to be
`reversed on plates 15, 17 during weaving. Id. at 6:5-8.
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`Figure 8 of MacBain illustrates a weaving process using loom 11 and is
`reproduced below.
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`Figure 8 is a perspective view illustrating weft formation 101 located on loom
`fingers 19 with hook 105 passing through one of loom fingers 19 and engaged with
`warp thread 103. MacBain explains that warp thread 103 or other suitable material
`is inserted in the weft formation 101 by attaching such warp thread to hook 105
`and passing hook 105 through channels 77 of loom fingers 19. Id. at 5:62-66.
`2. Analysis
`Petitioner contends that MacBain discloses each of the limitations of
`claims 1, 5, 6, 8, and 10-14 and, additionally, contends that claims 1, 7, 9, and 11
`would have been obvious in view of MacBain, or in view of a combination of
`MacBain and a variety of references. Pet. 25-38.
`a. Claim 1
`i. Anticipation by MacBain
`Petitioner’s challenge relies on the claim construction requiring any portion
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`of the pin used “for holding a link in a desired orientation,” which we do not adopt
`for the reasons explained above. Pet. 30. As discussed above, the claim requires
`that “the top flared portion” is “for holding a link in a desired orientation.”
`Petitioner contends that tapered portions 75 at ends of fingers 19 or the tapered
`ends of channels 77 in MacBain correspond to the claimed flared portions, but
`does not contend that either of these tapered portions holds, or is capable of
`holding, a link in a desired orientation. Id. Therefore, Petitioner fails to establish a
`reasonable likelihood of success for this challenge.
`ii. Obviousness over MacBain
`Petitioner additionally contends that “it would have been obvious to modify
`Macbain’s loom fingers so that they are equipped with the radially or laterally
`flared tops disclosed in Pugh, Schaub, Parisi and Gustin in order to retain weft and
`warp bands on the loom fingers during a twining or weaving process.” Pet. 35.
`Patent Owner argues that Petitioner’s proposed modification would serve no
`benefit in MacBain’s device because it would inhibit removal of the fabric from
`loom fingers 19 and, also, would not allow for the removal and reversal of loom
`fingers 19 for center-out weaving. Prelim. Resp. 30-31.
`As MacBain explains, the shape of loom fingers 19 allows for the material to
`be slid off when completed and also provides for reversal of loom fingers 19.
`Ex. 1001, 5:46-6:15. MacBain explains that this “ability to quickly and easily
`remove loom fingers 19 (together with the weft formation thereon) from plates 15
`and/or 17 provides an additional unique advantage of permitting weaving from the
`center out.” Id. at 6:5-8. As such, we are not persuaded that one skilled in the art
`would modify MacBain as proposed by Petitioner.
`b. Claims 5-11
`Claims 5-11 depend from claim 1. Petitioner’s challenges to these claims
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`based on MacBain do not cure the underlying deficiencies in the challenges to
`claim 1. Thus, Petitioner fails to establish a reasonable likelihood of success for
`the challenges to these claims.
`c. Claim 12
`Claim 12 is a method of creating a linked item and recites “capturing one
`end of an elastic band and pulling the end over and onto an adjacent pin while
`engaged with another elastic band.” Petitioner challenges claim 12 based on
`anticipation by MacBain. Pet. 29, 32-35. Petitioner contends that in MacBain’s
`device, “[w]hile the warp 103 is pulled through the loom finger 192, the warp 103
`would inherently engage the closed loop weft 1011 (i.e., another elastic band).”
`Pet. 33. Patent Owner does not specifically address the “engaged” limitation, but
`contends that “loop [103] is pulled along a groove 77 in a pin, and between the first
`and second loops on that pin.” Prelim. Resp. 35. Based on our construction
`explained above, we determine the claim requires that “an elastic band” is
`“engaged with another elastic band” while the elastic band is pulled over and onto
`an adjacent pin. Petitioner fails to explain persuasively why warp 103 necessarily
`is engaged with one of wefts 101 while warp 103 is pulled along groove 77.
`Rather, warp 103 appears simply to pass between wefts 101 and is not engaged
`necessarily with wefts 101 while being pulled along groove 77.
`For these reasons, Petitioner fails to establish a reasonable likelihood of
`success for the challenge to claim 12.
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`d. Claims 13 and 14
` Claims 13 and 14 depend from claim 12. Petitioner challenges these claims
`based on anticipation by MacBain. Pet. 29, 34-35. However, that challenge does
`not cure the underlying deficiency in the challenge to claim 12. Thus, Petitioner
`has failed to establish a reasonable likelihood of success for the challenges
`regarding these claims.
`C. Proposed Grounds Based on Pugh
`1. Overview of Pugh
`Pugh describes a hand knitting apparatus. Ex. 1015, 1:5-7. Figure 1 from
`Pugh is illustrative and is reproduced below.
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`Figure 1 is a perspective view of a knitting apparatus.
`Figures 2 and 3, reproduced below, are a variation of the knitting apparatus
`shown in Figure 1 to include removable teeth, as discussed below.
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`Figure 2 is a first section view of the knitting apparatus. Figure 3 is a second,
`fragmentary, section view of the knitting apparatus in Figure 2.
`Pugh describes the knitting apparatus including teeth 5′ removably coupled
`to a pair of spaced bars 1′. Id. at 2:61-63. Bars 1′ are secured to end plates 4 by
`screws 6 extending through end plates 4 and split-cylindrical beads 8 in bars 1′. Id.
`at 2:71-75. Bars 1′ and end plates 4 are coupled to support end plates 17 by
`pivots 15. Id. at 2:87-93.
`Teeth 5′ are coupled detachably to bars 1′. Id. at 2:61-63. Each tooth 5′
`includes upwardly extending portion 39, upper overhanging portion 32, and base
`portion 34 with sloping surface 11. Each tooth 5′ defines a groove 7 along
`upwardly extending portion 39 and a lead-in guide groove 13, which leads into
`groove 7. Id. at 2:121-127. Lead-in guide groove 13 facilitates locating a hook in
`groove 7. Id. at 1:66-69.
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`2. Analysis
`Petitioner contends that Pugh discloses each limitation of claims 1 and 5-8
`and, additionally, contends that claims 9-11 would have been obvious in view of
`Pugh combined with a variety of references. Pet. 39-43.
`a. Claim 1
`Petitioner argues that claim 1 is anticipated by Pugh. Pet. 39-42. We have
`reviewed Petitioner’s argument and evidence, including the claim charts,
`supporting a finding that claim 1 is anticipated by Pugh. See Pet. 38-42. Patent
`Owner presents two primary arguments regarding that challenge to claim 1.
`Prelim. Resp. 38. First, Patent Owner argues that claim 1 is not anticipated by
`Pugh because “not all of the ‘openings’ on each of the ‘pins’ face a front
`direction,” and instead, “the pins on one side face in completely opposite directions
`from the pins on the other side.” Id. Second, Patent Owner argues that Petitioner’s
`challenge fails because “there is nothing within Pugh that would teach the kit
`which includes a ‘link.’” Id.
`Patent Owner’s first argument relies on the proposed construction of “an
`opening on a front side of each of the plurality of pins” requiring that the openings
`on all pins face the same direction (Prelim. Resp. 38), which we do not adopt for
`the reasons explained above. Under our construction, the openings do not need to
`face the same direction. Petitioner identifies teeth 5′ in Pugh as corresponding to
`the claimed pins and identifies grooves 7 in teeth 5′ as corresponding to the
`claimed openings. Pet. 40. We are persuaded by Petitioner’s contention that each
`tooth 5′ in Pugh includes a groove 7 on a front side because each groove 7 faces
`away from a common reference point, namely, the region between bars 1′.
`Patent Owner’s second argument requires that “links” are included in the
`claimed kit. Prelim. Resp. 38. However, the claimed kit does not require a link.
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`Instead, the kit only requires that the flared portion of the pin is “for holding a
`link,” which is an intended use. As such, to satisfy that limitation in claim 1, Pugh
`need only disclose a flared portion of a pin that is capable of holding a link in a
`desired orientation. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (oil
`dispenser inherently anticipated popcorn dispenser, where specified function did
`not distinguish the claimed apparatus from a prior art apparatus capable of
`performing the function).
`Petitioner identifies overhanging portion 32 in Pugh as the claimed “top
`flared portion.” Pet. 40. Petitioner points to Pugh’s discussion of overhanging
`portion 32 retaining an item such as wool on teeth 5′ until removal to show that the
`structure disclosed in Pugh is capable of holding a link in a desired orientation. Id.
`(quoting Ex. 1015, 2:117-121). Patent Owner offers no explanation as to why
`overhanging portion 32 would not be capable of performing that function. Based
`on Petitioner’s explanation, and the structure disclosed by Pugh, we are persuaded
`at this stage of the proceeding that overhanging portion 32 discloses the claimed
`structure and, moreover, that this structure would be capable of holding a link.
`Patent Owner does not address Petitioner’s challenge with respect to the
`additional features of claim 1. Based on the record at this stage of the proceeding,
`we are persuaded that Petitioner has shown a reasonable likelihood of prevailing at
`trial in showing that claim 1 is anticipated by Pugh.
`b. Claims 5-8
`Claims 5-8 depend from claim 1. Petitioner argues that claims 5-8 are
`anticipated by Pugh. Pet. 38-42. We have reviewed Petitioner’s arguments and
`evidence, including the claim charts, supporting that challenge, which Patent
`Owner does not address. Based on the information presented at this stage of the
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`proceeding, we are persuaded that Petitioner is reasonably likely to establish that
`Pugh discloses the limitations of claims 5-8. See Pet. 40-41.
`c. Claim 9
`Claim 9 depends from claim 1 and further recites “a clip for securing ends of
`the series of links together.” Petitioner acknowledges that Pugh does not explicitly
`disclose a clip. Pet. 42. Petitioner cites Meltzer, Darnell, Hunter, or Carruth as
`disclosing a clip and contends that “it would have been obvious to provide the
`apparatus of Pugh with the connecting member 24 in Meltzer [or similar
`connecting members in Darnell, Hunter, or Carruth] since ends of the series of
`links formed in Pugh can be conveniently secured to one another with the use of
`same.” Id. Patent Owner counters that the knitting apparatus in Pugh is used to
`create a knitted fabric product and, therefore, there would be no reason to clip ends
`of such a product. Prelim. Resp. 39.
`We agree with Patent Owner that Petitioner fails to explain persuasively why
`one skilled in the art would have combined the clips from any of the cited
`references with the knitting apparatus of Pugh. Other than the general allegation
`that some unspecified item could have its ends secured, Petitioner fails to identify
`any reason why a knitted fabric product created by Pugh’s knitting apparatus
`would benefit from such a clip. On this record, Petitioner fails to articulate a
`rational reason why a skilled artisan would have been led to include a clip in
`Pugh’s knitting apparatus. Thus, Petitioner fails to establish a reasonable
`likelihood of success on the challenge to claim 9.
`d. Claims 10 and 11
`Claims 10 and 11 depend from claim 1. Claim 10 further defines the “series
`of links” recited in the preamble of claim 1 as a “series of elastic bands” and claim
`11 further defines the “series of links” as a “series of Brunnian links.” Thus,
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`claim 10 effectively recites that the kit is for creating an item consisting of a series
`of elastic bands, and claim 11 effectively recites that the kit is for creating an item
`consisting of Brunnian links. Based on the record before us, we do not view the
`preamble of claim 1 as a claim limitation because the body of the claim defines a
`complete structure and the preamble appears to recite only a purpose or intended
`use for the claimed invention. Claim 10 does not require elastic bands, and
`claim 11 does not require Brunnian links. Patent Owner has shown no structural
`distinction between claims 10 and 11 and claim 1. Therefore, based on the record
`before us, claims 10 and 11 do not further limit claim 1.
`Petitioner contends that the subject matter of claims 10 and 11 would have
`been obvious over Pugh and other references. Pet. 43. Because anticipation is the
`epitome of obviousness, a disclosure that anticipates under 35 U.S.C. § 102 also
`renders the claim unpatentable under 35 U.S.C. § 103. See In re Fracalossi, 681
`F.2d 792, 794 (CCPA 1982); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In
`re Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
`As noted above, we are persuaded that Petitioner has shown a reasonable
`likelihood of prevailing at trial in showing that claim 1 is anticipated by Pugh.
`Because claims 10 and 11 are not shown to add any structural limitations over the
`subject matter of claim 1, at this stage of the proceeding, we are persuaded that
`Petitioner is reasonably likely to show at trial that the subject matter of claims 10
`and 11 would have been obvious based primarily on the disclosure of Pugh.
`D. Additional Proposed Grounds
`1. Claims 1, 5-8, 10, and 11
`Petitioner asserts additional challenges to claims 1 and 5-11 as summarized
`in the table above. We deny the grounds directed to claims 1, 5-8, 10, and 11 as
`redundant in light of the determination that there is a reasonable likelihood that
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`these claims are unpatentable based on the grounds of unpatentability based
`primarily on Pugh.
`2. Claim 9
`Petitioner contends that claim 9 would have been obvious in view of the
`combination of Schaub, Parisi, or Gustin with Meltzer, Darnell, Hunter, or Carruth.
`Pet. 47-48, 53-54, 58-59. Similar to the challenge based on the combination of
`Pugh with Meltzer, Darnell, Hunter, or Carruth, Petitioner acknowledges that none
`of Schaub, Parisi, and Gustin discloses the claimed clip. Pet. 48, 53, 58. Similar to
`the rationale advanced in the challenge based on the combination of Pugh with
`Meltzer, Darnell, Hunter, or Carruth, Petitioner contends that it would have been
`obvious to provide the apparatus of Schaub, Parisi, or Gustin with the connecting
`member 24 in Meltzer, or similar connecting members in Darnell, Hunter, or
`Carruth, because ends of the series of links formed in Schaub, Parisi, or Gustin can
`be secured conveniently to one another with the use of such members. Id. at 48,
`54, 59. Those challenges suffer from the same deficiency noted above regarding
`the challenge based on Pugh—that is, Petitioner articulates no rational reason why
`a skilled artisan would have been prompted to use a clip with these prior art
`apparatuses.
`Thus, for similar reasons, we determine that Petitioner fails to explain
`persuasively why one skilled in the art would have combined the clips from any of
`the cited references with the apparatus of Schaub, Parisi, or Gustin. Petitioner does
`not establish a reasonable likelihood of success for these challenges.
`E. Secondary Considerations
`As explained above, we institute inter partes review of claims 1, 5-8, 10, and
`11 based only on the challenges relying primarily on Pugh. The challenge to
`claims 1 and 5-8 is based on anticipation. Secondary considerations are not
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`relevant to anticipation. The challenge to claims 10 and 11 is based on
`obviousness. Patent Owner alleges secondary considerations to rebut this
`obviousness challenge.
`Patent Owner argues that “there is a great deal of evidence of commercial
`success, adoption by industry (Toys “R” Us’ infringement and the other copiers
`and counterfeiters), industry praise, and copying.” Prelim Resp. 52. Patent Owner
`argues that “the evidence of non-obviousness is so strong as to clearly resolve the
`question
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