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 IPR2015-00958
`Patent No. 8,585,136
`
`CHAIR WITH COUPLING
`COMPANION STOOL BASE
`_______________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 CFR §42.107 TO
`PETITIONER’S SECOND PETITION FOR
`INTER PARTIES REVIEW
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTSTABLE OF CONTENTS
`
`
`
`THE INVENTION.................................................................................. 2
`
`THE INVENTION ................................................................................ .. 2THE INVENTION ................................................................................ .. 2
`
`INTRODUCTION .................................................................................. 1
`
`INTRODUCTION ................................................................................ .. 1INTRODUCTION ................................................................................ .. 1
`
`I.
`
`I.I.
`
`II.
`
`II.II.
`
`III. RELATED JUDICIAL AND ADMINISTRATIVE
`
`III.III.
`
`RELATED JUDICIAL AND ADMINISTRATIVERELATED JUDICIAL AND ADMINISTRATIVE
`
`PROCEEDINGS ..................................................................................... 3
`
`PROCEEDINGS ................................................................................... .. 3PROCEEDINGS ................................................................................... .. 3
`
`IV. PETITIONER’S CONSTRUCTIONS ARE UNREASONABLE ......... 5
`
`IV.IV.
`
`PETITIONER’S CONSTRUCTIONS ARE UNREASONABLE ....... .. 5PETITIONER’S CONSTRUCTIONS ARE UNREASONABLE ....... .. 5
`
`V. ADDITIONAL CLAIM CONSTUCTION ISSUES .............................. 7
`
`V.V.
`
`ADDITIONAL CLAHVI CONSTUCTION ISSUES ............................ .. 7ADDITIONAL CLAHVI CONSTUCTION ISSUES ............................ .. 7
`
`VI. PETITIONER’S APPLICATION OF THE PRIOR ART FOR THE
`
`VI.VI.
`
`PETITIONER’S APPLICATION OF THE PRIOR ART FOR THEPETITIONER’S APPLICATION OF THE PRIOR ART FOR THE
`
`CLAIMS UNDER §103 OF THE PATENT CODE DOES NOT WORK
`
`CLAHVIS UNDER §103 OF THE PATENT CODE DOES NOT WORKCLAHVIS UNDER §103 OF THE PATENT CODE DOES NOT WORK
`WHEN THE CLAIMS ARE PROPERLY CONSTRUED .................... 16
`
`WHEN THE CLAIMS ARE PROPERLY CONSTRUED .................. .. 16WHEN THE CLAIMS ARE PROPERLY CONSTRUED .................. .. 16
`
`
`VII. OBJECTIVE INDICATORS OF NON-OBVIOUSNESS ..................... 21
`
`VII. OBJECTIVE INDICATORS OF NON—OBVIOUSNESS ................... .. 21VII. OBJECTIVE INDICATORS OF NON—OBVIOUSNESS ................... .. 21
`
`VIII. CONCLUSION ....................................................................................... 23
`
`VIII. CONCLUSION ..................................................................................... .. 23VIII. CONCLUSION ..................................................................................... .. 23
`
`ii
`
`
`
`
`
`

`
`EXHIBIT LIST
`
`
`
`Exhibit
`
`Markman Order in N.D. of Ohio Case No. 14-cv-00962
`
`Joint Prehearing Statement
`
`Notice of Allowance
`
`U.S. Design Patent No. 139,241
`
`US Patent No. 8,777,305
`
`University Loft Company Brochure
`
`Trey Chair Literature
`
`2007 Plastic Parts Innovation Conference Award
`
`New Product Design Competition Award
`
`University Loft Company “The Wave Chair” Brochure
`
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`
`
`iii
`
`

`
`I.
`
`INTRODUCTION
`
`
`
`This is the preliminary response of Patent Owner, Sauder Manufacturing
`
`Company, to the Petition for Inter Parties Review filed on March 27, 2015 by J
`
`Squared, Inc. d/b/a University Loft Company (hereinafter “ULC”). Patent Owner
`
`has already responded to the Petition filed by the same party on the same patent in
`
`February, 2014
`
`
`
`Patent Owner asserts that the Petition should be denied for the following
`
`reasons:
`
`1.
`
`The claim constructions proffered by Petitioner are
`
`unreasonable as inconsistent with the patent disclosure, the plain meaning of
`
`the terms in the claims, and the content and prosecution histories of closely
`
`related patents;
`
`2.
`
`Petitioner’s obviousness analysis is incomplete insofar as it
`
`fails to deal with a “means plus function” limitation in claim 12;
`
`3. When properly construed, none of the claims in the ‘136 patent
`
`under attack is obvious in view of the prior art; and
`
`4.
`
`There
`
`is strong objective evidence of non-obviousness,
`
`including marketplace recognition and Petitioner’s deliberate act of copying
`
`the product disclosed and claimed in the ‘136 patent.
`
`1
`
`
`
`
`
`

`
`II. THE INVENTION
`
`The invention disclosed and claimed in the ‘136 patent consists of two parts:
`
`
`
`a “floor rocker” 100 and a pedestal type stool base 300. The floor rocker can be
`
`securely joined or “coupled” to the base to define a “desk chair”; spec. col. 8, ll 36-
`
`38. This is referred to in claim 1 as the “first configuration.” By manually
`
`opening a latch 160, the floor rocker may be decoupled from the base 300 and
`
`placed next to the base such that the base saddle 310 can serve as a writing surface;
`
`spec. col. 8, line 18. This is the “second configuration” and is shown in Figs 18
`
`and 19 in the drawings.
`
`
`
`The floor rocker is made up of a seat 134, a backrest 114, and a unitary
`
`frame “assembly” which is integral with the rockers 106, 180 “positioned below”
`
`the seat surface so as to permit the floor rocker to rock in the “second
`
`configuration.”
`
`
`
`Coupling of the chair and base is achieved in part by the use of a claw 110,
`
`142 on the front of the seat to “capture” the front edge of the base saddle 310; i.e.,
`
`by fitting into a pair of notches. Coupling further involves a spring-biased latch
`
`160 capturing the rear of the saddle by way of another notch; See FIGS. 10-14 of
`
`the patent drawings, and the specification in col. 9, beginning at line 7. When fully
`
`“coupled,” relative movement between and/or inadvertent separation of the floor
`
`rocker from the base is prevented and the two components become a unit. The
`
`
`
`2
`
`

`
`importance of a secure coupling is stressed in the specification at col. 2, lines 43-
`
`47 (the protection of the latch); col. 3, ll 4-23 (preventing inadvertent
`
`disengagement); and col. 9, ll 7-15 (preventing inadvertent disengagement).
`
`III. RELATED JUDICIAL AND ADMINISTRATIVE PROCEEDINGS
`
`A. Markman Findings in Court
`
`Patent Owner brought suit for patent infringement against Petitioner in the
`
`
`
`
`
`US District Court for the Northern District of Ohio in March, 2014; Civil Action
`
`No. 3:14-cv-00962-JZ.
`
`
`
`The Court held a Markman hearing on May 21, 2015. A ruling was made by
`
`the Court on June 9, 2015 (Exhibit 2001) construing three important terms from
`
`claim 1 of the ‘136 patent; specifically, the Court construed the term “coupled” to
`
`mean “securely joined,” a finding which squarely rejects the construction
`
`advocated by Petitioner. In addition, the Court construed the term “assembly” to
`
`refer to a unitary assembly that is part of the chair and that, according to the plain
`
`language of claim 1 includes the rocker legs. Again, Petitioner’s construction was
`
`rejected.
`
`
`
`Finally, the Court found no ambiguity in the recitation “base legs structured
`
`so as to function as rockers.” The Court concluded that this referred to structural
`
`elements, and not to “traditional legs” that one might find on a dining room chair.
`
`
`
`
`
`3
`
`

`
`
`
`
`
`B.
`
`Stipulation Regarding Claim 12
`
`Prior to the May 21, 2015 Markman hearing, Petitioner and Patent Owner
`
`reached agreement that the phrase in claim 12 “manually operable means for . . .”
`
`was subject to construction under 35 USC §112 ¶6; see Joint Statement filed before
`
`the Court, Exhibit 2002. This occurred after Petitioner’s filing of March 27, 2015,
`
`but moots Petitioner’s treatment of claim 12.
`
`
`
`
`
`C.
`
`Patent Office Findings
`
`Next, it is relevant to note that in its Exhibit 1009, Petitioner has offered the
`
`Panel only 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.
`
`Patent Owner submits herewith a further portion of that same record that
`
`contradicts Petitioner’s argument regarding the readability of the language in claim
`
`1 that defines the location of the rockers relative to the floor rocker seat.
`
`
`
`The specific statement by the Examiner is as follows:
`
`Regarding claim 27, upon further consideration and in view 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 12-5-14, p. 2, Exhibit 2003. (emphasis added).
`
`The language the Examiner was referring to said the rockers were located
`
`
`
`“beneath” the seat, just as claim 1 in ‘136 says the rockers are “positioned below”
`
`the seat.
`
`
`
`4
`
`

`
`
`
`Wright is a design patent on a convertible baby chair; Exhibit 2004, in
`
`which rocker surfaces are formed on the bottoms of the boards secured to the sides
`
`of the seat very similar to the side-mounted rocker boards 7 in Mackey, Petitioner’s
`
`Exhibit 1003. Both Wright and Mackey are exhibits in Petitioner’s February, 2015
`
`Petition for IPR. The Examiner’s clear finding regarding the construction of claim
`
`27 would logically apply to claim 1 in the ‘136 as well and negates Petitioner’s
`
`obviousness attack on claim 1 in this Petition based on Mackey and Yu; see Section
`
`VI A below.
`
`
`
`Finally, it must be noted that Petitioner itself has obtained Patent No.
`
`8,777,305 on a convertible desk chair that was built in China for the express
`
`purpose of adopting “the function” of Patent Owner’s TREY® chair; i.e., a product
`
`embodying the features of the ‘136 patent. In that patent, Petitioner uses a
`
`vocabulary nearly identical to that which it attacks here; Exhibit 2005.
`
`
`
`For example, the ‘305 uses the terms “coupler” for manually-operable
`
`spring-biased latches that secure the chair frame to the saddle. This fact is relevant
`
`to how the term “coupled” should be construed in the ‘136 patent; Voice Tech
`
`Group, Inc. v. VMC Sys. Inc., 164 F.3d. 605 (Fed. Cir. 1999).
`
`IV. PETITIONER’S CONSTRUCTIONS ARE UNREASONABLE
`
`In Patent Office proceedings
`
`including original examination and
`
`
`
`reexamination situations, the office must construe claims according to the
`
`
`
`5
`
`

`
`“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). Petitioner argues for claim constructions that are
`
`undeniably unreasonable when measured by this standard. Moreover, Petitioner’s
`
`constructions (1) are inconsistent with constructions used by Petitioner in its own
`
`patent, (2) are inconsistent with clear meanings imported by the claims themselves,
`
`and (3) were rejected by the District Court in Markman Proceedings.
`
`A.
`
`“Couple/Coupled”
`
`Petitioner asserts that this term should be construed to mean “connected but
`
`
`
`
`
`not necessarily locked together.” This construction is completely contrary to the
`
`clear and unambiguous teaching and disclosure of the ‘136 patent and was rejected
`
`by the District Court. (Exhibit 2001).
`
`
`
`The term “couple” and variations thereof, is found twelve (12) times in the
`
`patent specification. In each case it refers to securely joining the floor rocker 100
`
`to the pedestal base 300 so that the two cannot unintentionally separate. Coupling
`
`involves use of a claw at the front of the chair to capture the front edge of the
`
`saddle and a spring-biased latch 160 to capture and hold the chair toward the rear
`
`of the saddle. 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.
`
`
`
`
`6
`
`

`
`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 secure, unitary relationship between
`
`the floor rocker and the base when they are fully and securely joined, functioning
`
`as a 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; e.g., spec. col. 2, lines 43-47 (protecting the latch); col. 3, lines 4-27
`
`(preventing accidental disengagement); col. 9, lines 7-15 (resisting disengagement
`
`forces). In all three of these portions of the specification, the importance of
`
`securely joining the floor rocker to the base in the first or “coupled” configuration
`
`is stressed.
`
`
`
`7
`
`

`
`
`
`Patent Owner respectfully submits that the term “coupled” as found in claim
`
`1 draws clear and unambiguous meaning from
`
`the patent specification;
`
`specifically, it refers to securely joining the floor rocker to the base so as to prevent
`
`accidental disengagement in use.
`
`
`
`In reaching a similar result regarding this term, the District Court has used
`
`the BRI standard used here. The Panel should give deference to that ruling.
`
`
`
`As noted above, Petitioner, through the same counsel who drafted both
`
`Petitions, 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 2005). The chair described in that patent is
`
`not merely analogous to the chair disclosed and claimed in the ‘136 patent, but a
`
`chair which is nearly identical to the patented chair in appearance, size, and
`
`function. (Exhibit 2006).
`
`
`
`Petitioner’s proposed construction for “coupled” is unreasonable under the
`
`BRI standard and the Voice Tech Group case law and should be rejected.
`
`
`
`
`
`B.
`
`“Engage” (claim 1)
`
`Petitioner proffers a single construction for this term; i.e., “contact,” while at
`
`the same time pointing out that the specification uses the term in various ways with
`
`various meanings depending on the circumstances; see Petition pp. 9-10.
`
`
`
`8
`
`

`
`
`
`Patent Owner agrees that the term “engage” is used throughout the
`
`specification to mean different things. For example, with respect to the
`
`relationship between the rocker bottom surfaces and the floor when the chair is in
`
`the “second configuration,” the term indeed refers to contact. On the other hand,
`
`where it refers to the relationship between the latch 160 and the slot in the rear of
`
`the saddle, it means a firm clamping relationship that goes beyond mere contact.
`
`In claim 1, the word “engage” is found in the phrase:
`
`Said stool base portion adapted to support said chair, and
`comprising a saddle adapted to releasably engage said chair.
`
`In this phrase, the word is consistent with “coupling” or “coupled” because
`
`
`
`of the word “releasably” immediately in front of the word “engage.” Patent Owner
`
`submits that the middle ground here is to construe the word “engage” in the
`
`context of its specific usage; i.e., it can simply mean contact or it can mean lock as
`
`in “releasably engage” consistent with the “coupled” term explained above.
`
`C.
`
`Said Combination Further Comprises in 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 Sit Combination is in Said Second Configuration.
`
`In fact, there are three components of this phrase which require individual
`
`
`
`evaluation, although it should be done without losing sight of the fact that these
`
`components fall within a single limitation that must be read as a whole.
`
`
`
`9
`
`

`
`
`
`The first is the reference to “a pair of base legs” which are part of the
`
`“assembly.” The “assembly” is unambiguously defined in the specification as the
`
`frame structure 102 that joins the seat and backrest and further underlies the seat
`
`portion to form the rocker legs 108, 180 and the receptacle; spec., col. 5, ll 1-4.
`
`The District Court ruled in its Markman findings that this “assembly” is a
`
`structural unit that includes the rockers. The Court rejected the notion that
`
`“assembly” necessarily means comprised of separately manufactured parts. In
`
`addition, the Court’s ruling, and the plain language of the claim itself, indicates
`
`that the rockers are an integral part of the chair, not a separate, detachable
`
`component.
`
`
`
`Accordingly, it is Patent Owner’s position that the limitation be construed in
`
`such a way as to mean (a) that “assembly” can be unitary and (b) that the “pair of
`
`base legs” is an integral part of the floor rocker structure and not a separate unit
`
`which can be attached or detached to the floor rocker at will.
`
`
`
`Secondly, Petitioner asserts that the use of the phrase “structured so as to
`
`function as rockers” is purely functional (despite the word “structured” in the
`
`phrase), and should be broadly construed to encompass traditional chair legs on
`
`which a user can tilt the chair backward in an unstable condition to perform a
`
`rocking function. As indicated above, the Court expressly rejected this contention.
`
`(Exhibit 2001, p. 3).
`
`
`
`10
`
`

`
`
`
`Furthermore, Petitioner’s construction sounds like something out of a “Ma
`
`and Pa Kettle” movie where the old man sawed off the front legs of his traditional
`
`four-legged chair to convert it into a “rocker.” Moreover, Petitioner’s construction
`
`goes beyond the content of the specification! The patent teaches a floor rocker
`
`which is an integral unit with a pair of generally parallel fore and aft rails which
`
`allow changes in pitch angle. There is no suggestion in the patent that the rockers
`
`can be “traditional” legs.
`
`
`
`The District Court rejected Petitioner’s parallel position on this same claim
`
`limitation, saying that the phrase was indeed structural in nature, and excluded
`
`traditional chair legs. (Exhibit 2001). It should be noted that the patent
`
`specification states in clear terms that the frame structure includes the latch 160;
`
`see col. 5, ll 1-4, “in addition to the clip clamp latch 160, the frame lower portion
`
`106 also includes at least two frame legs 180 (see Figs. 18 and 19 among others)
`
`and a receptacle 190 (FIG. 6).
`
`
`
`
`
`Petitioner’s constructions of this phrase should be rejected.
`
`The limitation also includes the phrase “positioned below” in defining the
`
`location of the rocker legs relative to the seat. As pointed out above, Examiner T.
`
`Brindley, in the course of examining the ‘787 patent, which is sister to the ‘136
`
`patent, determined that substantially identical language placed the rocker legs
`
`vertically below the seat and not out to the side. Examiner Brindley looked at the
`
`
`
`11
`
`

`
`Wright patent (Exhibit 2004) and remarked sensibly and factually that the Wright
`
`infant chair was constructed with sideboards which locate the rocker surfaces out
`
`to the sides of the seat rather than “beneath” it. The same can be said of the
`
`Mackey chair (Petitioner’s Exhibit 1003) where the rocker rails 7 are out to the side
`
`of the seat; if anything they are farther outboard than the sideboard/rockers of the
`
`Wright patent; see FIG 1 of Mackey on p. 16 of the Petition. Accordingly, the
`
`language “positioned below” should be construed exactly as Examiner Brindley
`
`construed “beneath” in the ‘787 patent.
`
`
`
`By way of summary, it is Patent Owner’s position that the entire phrase
`
`which makes up the limitation under consideration here should be construed to call
`
`for a unitary structure including permanently attached rocker legs positioned below
`
`the seat and not outboard of the seat. This is consistent with the patent disclosure
`
`and consistent with the District Court’s common sense ruling.
`
`
`
`
`
`D.
`
`“Function as Rockers”
`
`The discussion here is little more than a rehash of what is discussed above
`
`with respect to the larger phrase in which the words “function as rockers” is found.
`
`Petitioner argues that this language is virtually meaningless and/or non-structural.
`
`Considered as a whole and including the word “structured,” there is little doubt
`
`that this is a structural limitation calling for the presence of rocker rails which are a
`
`
`
`12
`
`

`
`permanent part of the floor rocker underseat assembly. That is exactly what is
`
`shown and described in the patent. There is no alternative embodiment.
`
`
`
`It is noted that Petitioner resorts here, as he does in several places, to a
`
`Dictionary for extrinsic evidence, when the patent itself is the first place to look.
`
`Phillips v. AWH Corp., 415 F.3d. 1303 (Fed. Cir. 2005). Petitioner argues
`
`disingenuously that the three-word term “function as rockers” is not found in the
`
`specification. However, the word “rocker” and variations thereof, is found
`
`throughout the patent specification. Perhaps there is no clearer statement than the
`
`following statement which is found in paragraph 6 of the patent specification at
`
`line 45:
`
`Thus, the legs 180 are desirably configured as rockers, defining
`the chair portion as a floor rocker. (emphasis added)
`
`Again, it is respectfully submitted that Petitioner’s construction of the term
`
`
`
`“function as rockers” is inconsistent with the patent specification, is improperly
`
`based on extrinsic evidence, and is in conflict with the finding of the District
`
`Court. It should be rejected as unreasonable.
`
`
`
`13
`
`

`
`E.
`
`Petitioner goes on to argue three more points of alleged claim
`construction, including “latch moving between closed and open
`positions” (claim 6), “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), and “manually operable means for releasably engaging
`said chair to said base portion” (claim 12)
`
`The first two of these purported constructions are found in dependent claims
`
`
`
`that are inherently erroneously construed by Petitioner; i.e., claims 6 and 9 are
`
`dependent on claim 1 and if claim 1 has been erroneously construed, then it
`
`follows that all of the dependent claims have been erroneously construed as well.
`
`
`
`With respect to claim 12, it has already been pointed out that the parties
`
`reached a binding agreement in the District Court that claim 12 does indeed
`
`embrace a “means plus function” limitation subject to construction under 35 USC
`
`§112 ¶6. Accordingly, Petitioner’s entire argument on pp. 14-15 is irrelevant.
`
`V. ADDITIONAL CLAIM CONSTRUCTION ISSUES
`
`
`
`
`
`A. A “combination of a chair and stool based portion”
`
`It is Patent Owner’s position that the preamble of claim 1 is not only
`
`important to the overall construction of the claim, but also that it is a “closed-
`
`ended” preamble indicating that there are only two parts to the “combination”; i.e.,
`
`a chair and a stool base portion. This means the rockers are a permanent part of
`
`the floor rocker, not are add-on or third part. The impact of this construction is to
`
`distinguish the claimed subject matter from chairs such as Lutes (Pet. Exh. 1007)
`
`
`
`14
`
`

`
`and Clark (Pet. Exh. 1004) in which the rockers are separate from the chair and can
`
`only be attached to the chair after it has been removed from the base.
`
`
`
`The first point is confirmed by legal precedent, including NTP Inc. v.
`
`Research In Motion Ltd., 418 F. 3d. 1282 (Fed. Cir. 2005). This case outlines the
`
`long-standing proposition that the preamble must be taken into account in the
`
`claim construction exercise where it gives life and meaning to the claim. That is
`
`the case here, since that same term occurs three more times in the claim at the
`
`beginning of three separate limitations. The most important of these limitations,
`
`for purposes of this discussion, is the last occurrence where it states that the
`
`“combination further comprises an assembly position below said sitting portion. . .
`
`pair of base legs . . . structured so as to function as rockers for said chair. . .”
`
`
`
`According to logic, this rules out any construction which treats the
`
`base/rocker legs as a separate third part or part of the base as incorrect and
`
`inconsistent with the teaching of the patent specification.
`
`
`
`The second point; i.e., the fact that it is a closed-ended term, is driven home
`
`by the absence of the key word “comprising” in the preamble. It is well
`
`understood that in order to construe a phrase as open-ended, it must include the
`
`word “comprising” or an equivalent term such as “including” or “having.” Claim
`
`1 does not include any such term. Accordingly, the claim can only be fairly
`
`
`
`15
`
`

`
`construed under the BRI rule to call for a two-part combination in which the rocker
`
`legs are a permanent part of the chair assembly.
`
`VI. PETITIONER’S APPLICATION OF THE PRIOR ART FOR THE
`
`CLAIMS UNDER §103 OF THE PATENT CODE DOES NOT WORK
`WHEN THE CLAIMS ARE PROPERLY CONSTRUED.
`
`
`A. Claims 1, 2, 4, 5, 8, 9 and 11 are unpatentable under 35 USC §103
`over the Yu patent 6,554,353 in view of Mackey U.S. Patent No.
`794,461.
`
`
`The Yu patent was considered and applied by the Examiner during
`
`
`
`prosecution. It discloses a folding deck chair which can be attached to or detached
`
`from a pedestal base by or through the use of tools to install or remove threaded
`
`fasteners. The chair portion has no rocker function in either the attached or
`
`detached conditions. The Examiner reached the condition that it was not obvious
`
`to add a rocker function to Mr. Yu’s deck chair for, among other reasons, that it
`
`would disable the folding function which is described in the patent as an important
`
`utilitarian objective. (Pet. Exh. 1002).
`
`
`
`Mackey (Pet. Exh. 1003) is an infant chair with cleats 7 on sideboards 6. A
`
`potty drawer 13 underlies the seat and the potty is accessed by hinges 9 on the seat.
`
`Mackey further shows the cleats 7 are not part of an “assembly positioned below”
`
`the seat.
`
`
`
`Petitioner argues that it would have been obvious at the time the Sauder
`
`invention was made to attach rockers to the Yu chair in view of the teachings of
`
`
`
`16
`
`

`
`Mackey and/or Clark. Petitioner not only has commercial incentive to make this
`
`argument, but also has the benefit of hindsight.
`
`
`
`It is not enough to argue, with the benefit of hindsight and driven by the task
`
`of protecting a copyist, that mere concepts transfer readily from Mackey’s 1905
`
`chair to Yu’s 2001 chair; there must be a rationale for the transfer and a way to deal
`
`with the realities of an implementation.
`
`
`
`At this time, Patent Owner reserves its right to present argument against the
`
`theoretical obviousness of modifying Yu that Petitioner advances, but will make
`
`these observations:
`
`
`
`1.
`
`Petitioner’s obviousness analysis is based on unreasonable claim
`
`construction;
`
`
`
`2.
`
`Adding permanent rocker legs to Yu will defeat an important feature
`
`of Yu; namely foldability; and in this regard Yu actually teaches away from the
`
`combination; and
`
`
`
`3.
`
`Petitioner appears to appreciate the weaknesses in his own argument
`
`by conceding on pages 24 and 25 that it would be necessary to make any rockers
`
`installed on Yu’s chair removable.
`
`
`
`In addition, there is strong objective evidence in this case of non-
`
`obviousness; namely, the immediate and dramatic commercial success of the
`
`product embodying the ‘136 invention, as well as deliberate copying on the part of
`
`
`
`17
`
`

`
`Petitioner. This matter will be taken up in more detail in a later section since it
`
`cuts across all of the purported reasons for obviousness.
`
`B. Ground 2. Claims 1, 2, 4, 5, 8, 9, and 11 are obvious under 35 USC
`§103 over the combination of Yu and Clark 4285543.
`
`
`Yu has been described in the preceding section. Clark is a folding lawn chair
`
`
`
`with a clip-on tubular rocker. (Pet. Exh. 1004).
`
`
`
`As pointed out above, a proper construction of claim 1 calls for the base legs
`
`to be a permanent part of the structure underlying the seat and, perforce, a
`
`permanent part of the floor rocker itself. The proposed combination of Clark and
`
`Yu fails to take this entirely proper and reasonable construction into account.
`
`Instead, it appears to be based on the proposition that the substance of claim 1
`
`would be met by temporarily clipping a tubular rocker base to the bottom of the Yu
`
`chair. Note, however, that Clark’s clip-on feature references the chair to have
`
`laterally extending tubular legs, a structure Yu does not have. Petitioner leaves this
`
`out, apparently taking the position that all such problems are easily overcome.
`
`
`
`It has already been argued that the most reasonable interpretation of claim 1,
`
`based on the overall teaching of the ‘136 disclosure, is to the effect that the
`
`“combination” consists of only two parts; a floor rocker/chair and a pedestal base.
`
`There is no third component; e.g., a separate structure which can be simply clipped
`
`on or otherwise secured to a chair to turn it into a floor rocker. The fact is, the
`
`patented chair is novel and non-obvious in a number of important respects, and has
`
`
`
`18
`
`

`
`been proven by time, by commercial success, and by the ultimate flattery of
`
`copying, to be a non-obvious and otherwise meritorious invention.
`
`C.
`
`Third ground. Claim 6, 7, 10, and 12-14 are obvious over Yu in
`view of Mackey or Clark and further in view of Kassai for 723813.
`
`
`This proposed ground of rejection can be dismissed summarily. First of all,
`
`
`
`claim 6, 7 and 10 all depend on claim 1, and the invalidity and/or ineffectual nature
`
`of the purported rejections of claim 1 have already been fully established.
`
`Therefore, there is no need to go further and deal with the purported non-
`
`obviousness of claims 6, 7 and 10.
`
`
`
`As far as claims 12-14 are concerned, it has already been proven that an
`
`agreement was reached between Patent Owner and Petitioner to the effect that
`
`claim 12 contains a “means plus function limitation” which requires the
`
`identification and analysis of the “corresponding structure” which performs the
`
`function of the “means plus function” limitation. Petitioner has not presented an
`
`analysis dealing with the “corresponding structure” for this limitation.
`
`
`
`
`
`Accordingly, the Petition does not provide a reason to grant on this issue.
`
`D. Ground 4, claim 6, 7, 10, 12-14 are obvious under 35 USC §103
`over the combination of Yu, Mackey, or Clark, and further in view
`of Gottfried, 38223431.
`
`
`This is another rejection that can be dismissed out-of-hand. Again, it targets
`
`only claims 6, 7 and 10 which are dependent on claim 1 and the rejection of claim
`
`1 based on the combination of Yu, Mackey and Clark has already been shown to be
`
`
`
`19
`
`

`
`invalid. As far as claims 12-14 are concerned, Petitioner has advanced no
`
`argument or analysis dealing with the fact that claim 12 contains a means plus
`
`function limitation.
`
`E. Ground 5 claims 1, 2, 4-8, 10-14 are obvious over Lutes 2530474
`either alone or in view of Mackey.
`
`
`The problem here begins with the fact that, according to Lutes, the infant
`
`
`
`high chair, after being unbolted from the four-legged base 30, only becomes a floor
`
`rocker if it is thereafter reconnected to a separate rocker base shown at Fi