`
`DIcI<1Ns0N(WRIGHTmc
`
`‘
`
`FACSWE
`
`2600 WEST BIG BEAVER ROAD. SUITE 300
`TROY, MI 48084-3312
`
`Efi:§T::’:';’:‘éi‘L‘§’.§’;i;’f:1°
`
`hltpzllwww.dicki.nsonwrighl.I:oIn
`
`_ji
`USPTO
`571-273-5500
`
`From:
`
`John S. Artz
`
`Date:
`
`December 15, 2016
`
`Total Pages:
`
`22 (including cover sheet)
`
`Re:
`
`.
`
`Deposit Account 04-1061. Refund of $14,000 for REF TEXT: IPR2015-01139
`Filed: 5/H2015 Fee Code: 1414
`
`Message:
`
`Dear Sirs,
`
`Please provide a refund as it was ORDERED that our Petition was DENIED and no inter
`partes review was instituted,
`
`Attached is the DECISION denying the Inter Partes Review.
`
`Thank you.
`
`Leslie N. Wolfolk
`
`Legal Secretary
`Dickinson Wright PLLC
`248-433-7266
`
`i'7iank you.
`the total number of pays, please can the faslmile depanmem: at 1-243-133-7290.
`If you have not
`IMPORTANT: This meaeage ‘s intended soleiy to be used by the individual or entity in which It is addrmed. It may contain lnfonnwon which is
`privileged, confidential and otherwise exempt by law from disdoaire. If the reader of this rnesage is not the Intended recipient, or an employee or
`agent responsible for delivering this rreage to its lntended redpient(s), you are herewith notified that any dissemination, distribution or copying of
`this communication Is strictly prohibited. Ifyoo have received this oommunication In error. please notify us by telephone imrnedlatery and dstrny this
`communlcafion. Flank you.
`
`Ciient Name: 63799
`Client/Matter #1
`Secret: Narne: Leslie N. Woflbik
`
`OFFICE CODE
`Hatter Name:
`1327
`Attomey #:
`Secret; Extension: 7266
`
`ARIZONA
`
`FLORIDA
`
`KENTUCKY
`
`MICHIGAN
`
`Z200/T000
`
`114131-IM U°SUT?[3T(I
`
`VLZL £527 973
`
`XV.-I 9T39T QIOZ/QT/ZT
`
`TENNESSEE
`
`TEXAS
`
`TORONTO
`
`WASHINGTON DC
`
`
`
`as-anrtss-mun) uouvunu . nu car srz:a|s:> .. oo;9szz:sma . euzoo-xvaoia-Mzuns . [awn pmnums unusual we ao:z9:c BLDZJSHZI 1!‘ man . zzrz aovd
`
`Trialsfiptmgov
`571-272-7822
`
`Paper No. 6
`Entered: November 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IDEAVILLAGE PRODUCTS, CORP.,
`Petitioner,
`
`V.
`
`CHOON’S DESIGN, LLC,
`Patent Owner.
`
`Case IPR2OI5-01139
`
`Patent 8,485,565 B2
`
`Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`1.
`
`INTRODUCTION
`
`IdeaVillage Products, Corp. (“Petitioner”) filed a Petition for inter
`
`partes review of claims 9 and 14 (“the challenged claims”) of U.S. Patent
`
`No. 8,485,565 B2 (Ex. 1001, “the ’565 patent”). Paper 1 (“Pet.”). Choon’s
`
`Design, LLC (“Patent Owner”) timely filedia Preliminary Response.
`
`ZZ00/ZOUOIZ}
`
`illI3I-IM U0‘-3UT}‘I3I(I
`
`£71.22.
`
`25.‘? 9??
`
`l'V:[ 9T19T 9‘l'0Z/QT/ZT
`
`
`
`as-so:tss-mun uouvuna . via; new awcrlso . onsauzzsmo . 6llZ00'XV:lOJ.d-MZHAS . [emu pmnums unusual we aorzsrc swzmm 1!‘ one . zzu: aeva
`
`IPR201 5-01 139
`
`Patent 8,485,565 B2
`
`Paper 5 (“Prelim Resp.”).I We have authority to determine whether to
`
`institute inter partes review. See 35 U.S.C. § 31403); 37 C.F.R. § 42.4(a).
`
`Based on the record before us in this proceeding, we determine that
`
`Petitioner has not established there is a reasonable likelihood that it would
`
`prevail in establishing that any of the challenged claims of the ’565 patent is
`
`unpatentable. See 35 U.S.C. § 314(a). For the reasons that follow, we deny
`
`institution of interpartes review.
`
`A. Related Proceedings
`
`The ’565 patent is the subject of several district court proceedings, as
`
`well as an International Trade Commission investigation. Pet. 2-4;
`
`Paper 4, 2. The ’565 patent has been asserted against Petitioner in one of the
`
`pending district court proceedings——name1y, Choon 19 Design LLC v.
`
`Zenacon, LLC, Case No. 2:13—cv-13568 (E.D. Mich.). Pet. 2-3.
`
`The ’565 patent also was the subject of three other inter partes review
`
`proceedings, including: LaRo.s'e Indus, LLC v. Choon '3 Design, LLC,
`
`Case IPR2014-0021 8 (all challenged claims disclaimed after institution;
`
`Joint Motion for Adverse Judgment granted); LaRose Indus, LLC v.
`
`Choan ’s Design Inc. , Case IPR2014-01353 (all challenged claims
`
`disclairned prior to institution; institution denied); and Tristar Products,
`
`Inc. v. Choon ’s Design Inc., Case IPR2015-00838 (institution denied under
`
`3s U.S.C. § 3150-.-)). Id. at 4-5; Paper 4, 1.
`
`l Patent 0wner’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
`
`3303/9000
`
`1iI3T-HA uosuT3{3T(l
`
`nu 8917 we
`
`Xv.-I 91:91 QTOZ/QT/ZI
`
`
`
`as-ao:(ss-usual uouvanu . nu ctr svzrotsa . uoesuzzsma . EH'Z00'XV:lOJ.d-M3l‘MS . lamu. nuepums unusual we unrzsrc OLOZISLIZL 1V unau .. an arm
`
`IPR2015-O1 139
`
`Patent 8,485,565 B2
`
`B. The ’565 Patent
`
`The ‘S65 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 “Brun:nian” links. Ex. 1001, 1:1, 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 ‘S65
`
`patent provides examples of linked items such as “bracelets, necklaces[,]
`
`and other wearable or decorative items.” Id at 2:29-30, Fig. 2. 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, SA, and 5B of the ‘565 patent illustrate the basic
`
`components of the kit and are reproduced below.
`
`zzoo/vooorzi
`
`1Il3I-[M U0SUD{3I(l
`
`uzz. new era Xvu sI=9t 9102/swat
`
`
`
`D9-302155-un-II) Mouvanu . nu car swans: .. IJDSBELZISINCI . 8|IZ00'XV:IOJ.d'M3l|AS . [awn Iuenuius I-uflseal we 60:25:: 9I.oz:9I.IzI. J.V anon . :21: slow
`
`[PR201 5-01 139
`
`Patent 8,485,565 B2
`
`Figure .4 is a perspective view of an example pin bar. Id. at 1:61. Figure 5A
`
`is a perspective view of interfacing surfaces of an example base and the
`
`example pin bar. Id. at 1:62-63. Figure 5B is a perspective view of a pin
`
`bar mounted to an example base. Id. at 1:64-65.
`
`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, 2:54-57. 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, reproduced below, illustrates pin 26.
`
`38
`
`.
`
`“/26
`
`40
`
`4efl§.§
`
`44
`
`42
`
`Figure 6 is a perspective view of one pin, illustrating the portions ofpin 26.
`
`Id. at 1:66-67. Pin 26 includes flanged top 38, mid portion 46, bottom
`
`portion 44, and trout access groove 40. Id. at 3:6—7, 3:18-19. Flanged top
`
`38 and bottom portion 44 are each flared outward relative to mid portion 46.
`
`zzoo/sooo
`
`_
`
`111-I3I-Ill uosumora
`
`nu car an XV:I 31:91 9TOZ/91'/ZT
`
`
`
`0§'B03(55'U-NI) NOILVHHG u #131. Elli‘ BIZICIIBEJ . 00§9l2£Z3BlNC| . 6llZ00'XV:lOJ.d'M5lMS u [31-"I1. PJEP‘-W18 |-U315E3.l PM 6033559 910319 H21 LV CIADH - Z119 3DVd
`
`IPR201 5-01 139
`
`Patent 8,485,565 B2
`
`Pins 26 hold links, such as rubber bands 52, 54, 56, in .5 desired
`
`position during assembly of the linked item, as illustrated in Figures 14A-
`14C, reproduced below.
`
`Figures 14A—14C are perspective views ofassembly steps for creating a
`
`Brunnian linked arficle, illustrating a portion of bar 42 and pins 26, and a
`
`process of making a chain of linked items from elastic bands 52, 54, 56,
`
`using hook tool 16. Id. at 2:12-13," 3:62—4:8.
`
`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. at 3:10-12, 3:23-25. As seen above, ends of adjacent 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,
`
`thereby linking 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 4211-22. Free ends of the linked item are then secured by a
`
`clip. Id. at 4:29-33, Figs. 15, 16.
`
`3300/9000
`
`11131"-1M u°5'T1T3‘I3I(I
`
`VLZL £911 BVZ
`
`XV.rI 03391 QTOZ/9|"/ZT
`
`
`
`D§'3D1(S5'|-l-ll-ll) N0|.l.VE!nC| u fill 997 8i'Z1GlS3 - £I0§9S£Z3SlNO c 6l!Z00'XVJOJ.d'M5llAS u [3U1!.|. PJEPUEJS U-H1533] Ihld 6053935 NDZI9 LIZI 1V CLASH u ZZM 3DVd
`
`IPR20l5-01139
`
`Patent 8,485,565 B2
`
`C. Challenged Claims
`
`Challenged claim 9 depends from independent claim 1. Challenged
`
`claim 14 depends fiom claim 13, which in turn depends fiom independent
`
`claim 12. Each of claims 1, 9, and 12-14 is reproduced beIow:2
`
`1. A kit for creating an item consisting of a series of
`links, the device comprising:
`a base; and
`at least one pin bar supported on the base, the pin bar
`including a plurality of pins each including atop flared portion
`for holding a link in a desired orientation and an opening on a
`front side of each of the plurality of pins.
`
`Ex. 1001, 5:10-16.
`
`9. The kit as recited in claim 1, including a clip for
`securing ends of the series of links together.
`
`Id. at 6:l—2.
`
`12. A method of creating a linked item comprising the
`steps of:
`I
`_
`supporting at least one pin bar including a plurality of
`pins to a base to define a desired relative special relationship
`between at least two adjacent pins;
`assembling at
`least
`two elastic bands across adjacent
`
`.
`
`P1115;
`
`capturing one end of an elastic band and pulling the end
`over and onto an adjacent pin while engaged with another
`elastic band; and
`_ capturing and pulling subsequent ends over until a
`desired link length and configuration is obtained.
`
`Id. at 6:7-18.
`
`2 Claims 1, 12, and 13 have been statutorily disclaimed. Challenged claims
`9 and l4'depend from claims 1 and 12/13 respectively, and, thus, include all
`of thelimitations set forth in the respective claims from which they depend
`See 37 C.F.R. § l.75(c).
`
`3300/Loggia
`
`5UI3T-TM U097-IT3'I3T(l
`
`i’£.Z£. 99? 972.’
`
`XV.:l 03391’ QTOZ/QT/ZT
`
`
`
`0§'8D3(55'uW-ll NOI.l.V'HflC| a fill CC? 8?Z3ClIS3 u OIJEQCLZISINCI . 5HZl30'X\I':lO.l.d'M3ll}'\S .[3‘11l.L P-"ENNIS “J-‘F1593! Wd 6033932 9|>0ZI§ IIZI IV GAO}! - ZZIB E9Vc|
`
`IPR201S-01 139
`
`Patent 8,485,565 B2
`
`13. The method as recited in claim 12, wherein a second
`of the at least two elastic bands is placed atop one end of the
`first of the at least two elastic bands on a common pin.
`
`Id. at 6:19-21.
`
`14. The method as recited in claim 13, wherein capturing
`one end of the elastic band includes using a hook tool reaching
`into an access groove of the pin to extend below the top most
`elastic band and grasp a bottom elastic band with the hook tool.
`
`Id. at 6:22-26.
`
`D. The Applied References and Evidence
`
`Petitioner relies on the following references. Pet. 7.
`
`U.S. PatentNo. 3,413,434131
`Ap . 16,2013
`“Carruth’
`
`Ex. 1011
`
`U.S. Patent No. 3,905,133
`“Charman’
`
`Sept. 16, 1975
`
`Ex. 1013
`
`
`
`
`
`
`U.S. Patent No. 3,402,794 B2
`
`“Sasur”
`
`UK Patent Application
`
`May 22,1985
`
`Ex. 1014
`
`Ex. 1015
`
`
`
`
`
`
`
`
`
`
`U.S. Patent NO. 3,438,223
`
`U.S. Patent No. 4,248,063
`
`Apr. 15, 1969
`
`Feb. 3, 1981
`
`Ex. 1017
`
`Ex. 1016jj
`
`“Wan” jj
`
`Petitioner finther provides a Declaration of Eric A. Langberg
`
`(Ex. 1003).
`
`.
`
`E. The Asserted Grounds
`
`Petitioner sets forth its challenges to claims 9 and 14 as follows.
`
`Pet. 7, 26-52.
`
`
`
`zzoo/0000
`
`11191-I11 IIOSUUIOTG
`
`1213; new 91::
`
`xvii 0z:9i 9TOZ/ST/ZT
`
`
`
`or-so:tss-mun uouvuna .. rm car swans: . 0099E£ZiSlNCl .. BLIZOD-XV:lO.Ld-M!llI\S .lau1u pmputas umseal we en:z9=c otuamrzt J.\1 nnau . we save
`
`IPR20l5-01 I39
`
`Patent 8,485,565 B2
`
`
`
`Petitioner flJ.1'th6I‘ includes, as an asserted ground independent from
`
`those listed in the chart above, an argument that “[c]1aims 9 and 14 are not
`
`patentably distinct from a cancelled claim” (i.e., the claims subject to the
`
`adverse judgment in IIPR2014-00218). Pet. 7, 17-26. According to
`
`Petitioner, Patent Owner, therefore, is estopped from arguing the challenged
`
`claims are patentable. Pet. 17-18. As noted by Petitioner, the scope of
`
`estoppel arising against a patent owner from adverse judgment is defined in
`
`37 C.F.R_ § 42.73(d)(3). Petitioner, however, has not identified a statutory
`
`or regulatory basis for applying this estoppel in the manner asserted in the
`
`Petition (i.e., to prevent Patent Owner from even presenting arguments
`
`regarding the patentability of the remaining claims). Id.
`
`Furthermore, pursuant to 35 U.S.C. § 311(b), a “petitioner in an inter
`partes review may request to cancel as unpatentable 1' or more claims of a
`
`patent only on a ground that could be raised under section 102 or 103 and
`
`only on the basis of prior art consisting of patents or printed publications.”
`
`Petitioner challenges claims 9 and 14 as “not patentably distinct” from
`
`canceled claims (Pet. 17-26), but fails to provide analysis adequate to
`
`establish that such a challenge constitutes “a ground that could be raised
`
`under section 102 or 103” based on “prior art consisting of patents or printed
`
`publications.” Id.
`
`We, thus, turn in the next section to the grounds based on the applied
`
`prior art references.
`
`zzoo/sooo
`
`ZIIISI-IM uosutxota
`
`viz; E."F.'t7 svz
`
`XV.-_[ 12:91 9102/91/21
`
`
`
`as-so:(ss-unu) nouvunu .. nu car srzzcusa . oosnczzzsma . EIIZCIO-XV:IOJ.d-MIHAS . [awu nmnueas mama] we so:zs=t stozrsuzt .LV anon . ZUOL aova
`
`IPRZO 1 5-01 139
`
`Patent 8,485,565 B2
`
`H. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); In re Cuazzo Speed
`
`Techs, LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015). Under the broadest
`
`reasonable construction standard, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. See In _re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`The parties propose constructions for several claim terms. Pet. 10-15;
`
`Prelim. Resp. 9-18. No issue in this Decision, however, requires explicit
`
`construction of the disputed, or any other, claim terms. See, e. g., Wellman,
`
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim
`
`terms need only be construed ‘to the extent necessary to resolve the
`
`controversy.’”) (quoting Vivid Techs, Inc. v. Am. Sci. & Eng ’g, Inc.,
`
`200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly, for purposes of this
`
`Decision, We do not provide explicit constructions for any claim terms.
`
`B. Anticipation of Claim 9 by Charman
`
`Petitioner asserts claim 9 is anticipated by Charman. Pet. 26-32.
`
`A claim is unpatentable under 35 U.S.C. § 102 if a single prior art reference
`
`expressly or inherently describes each and every limitation set forth in the
`
`claim. See Perricone v. Medicis Pharm. Corp, 432 F.3d 1368, 1375
`
`(Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
`
`(Fed- Cir. 1987).
`
`a;go,gmo@
`
`nusws uosumom
`
`nu an an we 12:91 9102/91/21
`
`
`
`lJ§'8fl3(55"-U111) NOILVUHCI n 712.! B8! SVFGISD u D0§98J.Z3SINC| u 6llZ00'XVd01d'M3llAS a I3"-'I.l. D199‘-|E1S M31593] Wd 6033538 9103.15 HZI LV OM33 n ZZIH» 39Vd
`
`IPR2015-01 139
`
`Patent 8,485,565 B2
`
`Charman relates to a kit for making a thread design, by looping thread
`
`back and forth between rows of pins carried by a base board. Ex. 1013,
`
`124-7. An example embodiment is shown in Figures 1 and 2 of Charman,
`
`reproduced below.
`
`
`
`Figure 1 illustrates a plan view of a thread design created using the invention
`
`of Charman. Id. at 2:22-23. Figure -2 is a sectional elevation view
`
`illustrating how strip 2 may be connected to base 1. Id. at 2:24-25. In
`
`Channan, strips 2 include a plurality ofpins or rods 4, and are mounted on
`
`base board 1. Id. at 2:35-52. Thread may be looped around pins 4 to create
`
`the desired design. Id. at 1:22-27, Fig. 1. Each pin 4 includes enlarged
`
`head 4A to catch the thread loops that are looped around the pins. Id. at
`
`_ 2:52-57, 3:'7—10.
`
`Independent claim 1, from which claim 9 depends, recites “an opening
`
`on a fi'ont side of each of the plurality of pins.” Petitioner points to
`
`disclosure in Charrnan that “[e]ach of the pins of the strips may be provided
`
`with more than one enlargement, and such enlargements would be opened
`
`lengthwise of the pin,” as disclosing this claim feature. Pet. 28 (citing
`
`3300/T100131
`
`I’
`
`11131.1,“ uosuD1DI(I
`
`~
`
`171.32.
`
`(:97 SP2.‘ XVJ ‘Z2191 9102/ST/31'
`
`l0
`
`
`
`09'8D3l33'|-l-ll-I-I) NOILVHHO - Hill SC? 8fZ3C'llSD . DOGDEIESING - B|-l'ZEl0'XV:lOJ.d'M:HAS - Ialllll. I-U991-T913 M31533] Wd 5032913 9llJZ.l'§ll'£l J.V CIADH . ZZJZL 39Vd
`
`[PR201S~01 139
`
`Patent 8,485,565 B2
`
`Ex. 1013, 3:38-40). Without further support} Petitioner asserts “[e]ach
`
`‘opening’ runs lengthwise (i.e., vertically) along the depicted pin.” Id.
`
`Notably, Petitioner’s claim chart does not include a listing of the “opening”
`
`limitation, and while the Petition references a “rendering” in the claim chart,
`
`no such rendering is included. Pet. 28-29.
`
`It is not clear from the brief portion of Charman cited by Petitioner,
`
`and Petitioner's conclusory arguments, that the language “opened lengthwise
`
`of the pin” necessarily means there is an opening on a front side of each pin,
`
`as recited by claim 1. None of the figures of Charman illustrate any such
`
`“openingf Additionally, immediately following the portion cited by
`
`Petitioner, Charman continues, “[t]his [arrangement] enables the design to
`
`be built up in layers one above the other, for improved effects.” Ex. 1013,
`
`3:40-42. The surrounding context of Charman provides no additional
`
`support for Petitioner's assertions. Petitioner does not provide persuasive
`
`evidence that Charman discloses “an opening on a front side of each of the
`
`plurality ofpins,” as recited in claim 1. Because claim 9 depends from
`
`claim 1, claim 9 also includes this claim feature. Thus, for at least this
`
`reason, we are not persuaded Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on its asserted ground that claim 9 is anticipated by
`
`Charman.
`
`3 To the extent Petitioner seeks to rely on arguments presented in the Petition
`in IPR2015-00838 (Ex. 1012, cited at Pet. 28), which also challenged
`the ’S 65 patent, incorporation by reference is impermissible under our rules.
`See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by
`reference from one document into another document”); Cisco Sys., Inc. v.
`C-Cation Techs, LLC, Case IPR20l4—00454, slip op. at 7-10 (PTAB
`Aug. 29, 2014) (Paper 12) (informative).
`
`ll
`
`Z200/ZT00
`
`51lI3'|3-1.ll U09‘-1l?}l3T(l
`
`VLZL 9917 9173
`
`XV.'l Z8391’ 9TOZ/ST/ZT
`
`
`
`09-8D=(Ss»unuI uouvunu . nu car as-z:uis:3 .. oussnzz:sma . 6|JZ|10'XV.-lOJ.d-MIUAS . [awn mvnums maaseal we smzszs atoztsuzt N am: - zzrct aavd
`
`IPRZOI 5-01 139
`
`Patent 8,485,565 B2
`
`C. Obviousness of Claim 9 in View ofSasur and Carruth
`
`Petitioner asserts claim 9 would have been obvious in view of Sasur
`
`and Carruth. Pet. 32-38. Underlying this assertion, Petitioner asserts that
`
`Sasur anticipates claim 1, from which claim 9 depends. Pet. 32-34. Sasur
`
`relates to a hinged knitting loom that is convertible for use in more than one
`
`configuration. Ex. 1014, Abstract Figures 1 and 2 of Sasur are reproduced
`
`below.
`
`Figures 1 and 2 illustrate perspective views of the knitting loom of Sasur in
`
`an open configuration and closed configuration, respectively. Id. at 1:65-
`
`2:3. Base stmcture 10 has first part 12 and second part 14, which are
`
`connected via hinge 48. Id. at 2:22-30. Each of first and second parts 12,
`
`14 includes a plurality of removable knitting pegs 16 provided thereon.
`
`Id at 2:35-40, 2:62-65.
`
`Independent claim 1, from which claim 9 depends, recites “a base, and
`
`at least one pin bar supported on the base, the pin bar including a plurality of
`
`pins.” Petitioner points to base structure 10 as teaching the claimed base.
`
`12
`
`zzoo/croo
`
`11131-1.-ll uostmiora
`
`nu set an XV:I 92:91 QIOZ/QT/ZT
`
`
`
`on-so:(ss-mm) nouvuna . nu ctr 8fZ?CIl33 . oossuzzsma . suzoo-xvaora-Mzuns . la-nu nmpums mazseal we eo:zs:c QLOZISIJZL LV cmaa . zzm 39‘I'd
`
`IPR2015-01 139
`
`Patent 8,485,565 B2
`
`Pet. 33. Regarding the claimed “pin bar” and “plurality of pins,” Petitioner
`
`points to the plurality of removable knitting pegs 16 for both of these claim
`
`features. Id. at 33-34. In its claim chart, Petitioner calls out element 16
`
`(Ex. 1014, Fig. 1} as the claimed pin bar, and element 34 (id. at Fig. 7) as the
`
`claimed pins. Pet. 34. However, as described in the Specification of Sasur,
`
`element 34 in Figure 7 refers to the “bodies” of the pegs 16. Ex. 1014,
`
`3:8-10; see also id. at 2:62-63 (indicating that Figure 7 shows knitting pegs
`
`16 in greater detail). Petitioner’s analysis of claim 1, thus, is missing any
`
`teaching of the claimed “pin bar.”4 Petitioner relies on Carruth merely as
`
`disclosing the recited “clip” of claim 9 (Pet. 34-38), and does not assert that
`
`Carruth remedies the above—identified deficiencies with respect to Sasur and
`
`claim 1. Accordingly, Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its asserted ground that claim 9 would have been
`
`obvious in view of Sasur and Carruth.
`
`D. Obviou.s'ne.s's of Claim 9 in View ofPugh and Linstead
`
`Petitioner asserts claim 9 would have been obvious in view of Pugh
`
`and Linstead- Pet. 38-41. Pugh describes a hand knitting apparatus.
`
`Ex. 1015, 125-7. Figure 1 of Pugh is reproduced below.
`
`I
`
`4 The parties dispute whether the base, pin bars, and pins must be separate
`pieces or can be an integral one-piece structure. Pet. 11-12, 32; Prelim.
`Resp. 17-18. However, because Petitioner’s showing is deficient regarding
`any teaching of a pin bar (integral or not), we need not decide this issue for
`purposes of this Decision.
`
`13
`
`Z200/VTOOIE}
`
`5l1{3T-IM uosumora
`
`HZL set svz
`
`XV.:l 93:91 sroz/st/zr
`
`
`
`o9-smtss-tutu) uouvunu . uzi car smmso . oossuzzsmu . EIIZOO-XV:lDJ.d'M3tMS . Ian-uu. mounts usaisval we ou:zs:t 9|-0Zl9I-n'Z|- J.'l' cmaa . zzm aova
`
`IPR2015—01l39
`
`Patent 8,485,565 B2
`
`Figure 1 is a perspective view of a knitting apparatus. Id. at 2:2—4. In the
`
`knitting apparatus of Pugh, the hooks are configured such that material used
`
`for knitting is retained “on the hooks until lifted thereof during the knitting
`
`operation by manipulation of a hand-held knitting hook.” Id. at 2:1 14-121.
`
`Petitioner relies on Pugh as disclosing the structure of claim 1, fiom which
`
`claim 9 depends.5 Pet. 39-40.
`Petitioner relies on Linstead as disclosing the clip recited in claim 9.
`
`Id. at 40-41. Linstead teaches a “two-way stitch holder which permits
`
`'5 We note that Petitioner’s reliance on the Board’s institution decision in
`
`[PR20l4—00218 with respect to the alleged anticipation of claim 1 by Pugh
`is improper, and at best amounts to improper incorporation by reference.
`See 37 C.F_R § 42.6(a)(3). The institution decision in IPR2014-00218
`includes only a determination that the petitioner in that proceeding had
`established a reasonable likelihood of prevailing on its assertion that claim 1
`is anticipated by Pugh. This determination, however, was based on the
`record available in IPR2014-00218. Petitioner cannot merely rely on the
`Board's institution decision in IPR20 14-00218, particularly without
`including the same arguments and evidence in this proceeding. In any event,
`because we are not persuaded with respect to Petitioner’s reasons to combine
`Pugh and Linstead, as discussed below, we need not determine if Petitioner’s
`brief mapping of Pugh on claim 1 is sufficient.
`
`I4
`
`zzoo/sroo
`
`:1qSI.1,g uosunlom
`
`nu €917
`
`svz
`
`rvs 92:91 sroz/er/zr
`
`
`
`as-so:(ss-um) uouvuna . nu car svztalso . DlJ99E£ZiSlNCI . atrzuo-xvaoid-Mtuns .lauu1 DRDIJE19 ll-I31-S93] we 60:29:: smzrsuzi J.V anon . zzm anvd
`
`IPR2015-01 139
`- Patent 8,485,565 B2
`
`stitches to be knitted off both ends of the holder.” Ex. 1016, 1:1 1—l2. As
`
`described in Linstead, “[s]titch holders are commonly used in knitting an
`
`article to hold stitches in one part of the piece while another part is being
`
`knitted” and “are also useful in saving stitches when the knitting is
`
`internipted before the article can be finished.” Id. at 1:24-28. According to
`
`Petitioner, “it would have been obvious to one skilled in the art to use the
`
`apparatus of Pugh in combination with the holder disclosed in Linstead to
`
`secur:the ends of the links created by the apparatus of Pugh.” Pet. 41.
`Petitioner relies on Linstead as providing the rationale for combining
`
`the stitch holder disclosed therein with the product of Pugh. Id. Although
`
`Petitioner cites language in Linstead that indicates “[s]t:itch holders are
`
`commonly used in knitting an article to hold stitches in on part of the piece
`
`while another part is being knitted” (id. (citing Ex. 1016, 1:23-26)),
`
`Petitioner does not point to any record evidence that one of skill in the art
`
`would have had reason to remove the simple knitted product, created using
`
`the apparatus of Pugh, from the apparatus before the knitted product is
`
`complete. In Pugh, if the knitting is interrupted, the stitches are held
`
`together by the apparatus itself. Further, Petitioner’s discussion regarding
`
`knitting articles in various sections prior to assembly (id) is mere attorney
`
`argument that includes no citations to the record.
`
`Accordingly, we are not persuaded Petitioner has shown sufficiently
`
`that one of skill in the art would have combined the stitch holder of Linstead
`
`with the knitting apparatus of Pugh. Accordingly, Petitioner has not
`
`demonstrated a reasonable likelihood of prevailing on its asserted ground
`
`that claim 9 would have been obvious in view of Pugh and Linstead.
`
`ggogggmotg
`
`1:131-Ill uosumata
`
`M21. car 992
`
`XV.>l
`
`lrZ!9T 9TOZ/SI‘/ZT
`
`15
`
`
`
`as-so:tss-unu) nouwno . nu ctr stzrcnso . oosecwsmo .. ouzoo-xv.-:oia—M:uAs . Isuzu nmpums umseal we aa:z9=c QIOZISHZI 1V anon .. can save
`
`IPR2015-01 139
`
`Patent 8,485,565 B2
`
`E. Obviousness of Claim I4 in View ofCarruth and Pugh
`
`Petitioner asserts claim 14 would have been obvious in view of
`
`Carruth and Pugh. Pet. 41-46. Claim 14, which depends from claims 12
`
`and 13 and, therefore, includes the limitations thereof, recites a method of
`
`creating a linked item, with various specific steps regarding the assembling
`
`of bands on the pins, and capturing and maneuvering the ends of the bands
`
`relative to other bands.
`
`_
`
`Carruth relates to a method for creating a fashion accessory using
`
`bands or loops- Ex. 1011, 1:50-56, 2:7. In Carruth, the bands “are
`
`interlocked to form a continuous chain.” Id. at 2:30-31. In some
`
`embodiments, the bands may be linked using a guide, such as “a linear
`
`device continuous from a first end and a second end, wherein the first end
`
`and the second end are each open ends of the guide.” Id. at 3: 10-17.
`
`Carruth further_ indicates that this “guide may be replaced with any other
`
`type of device that services the same function.” Id. at 3:17-18-
`
`Without any citation to record evidence, Petitioner asserts that “Pugh
`
`discloses a knitting apparatus that serves the same function as the guide in
`
`Carruth.” Pet- 42. Again without any citation to record evidence, Petitioner
`
`further asserts that the “operation of creating the fashion accessory disclosed
`
`in Carruth is essentially the same process as traditional knitting, with elastic
`
`being substituted for yarn.” Id. According to Petitioner, “[t]berefore, it
`
`would have been obvious to one skilled in the art to use the apparatus of
`
`Pugh to create the fashion accessory of Carruth." Id.
`
`Neither Pugh nor Carruth, however, discloses any details of a method
`
`of creating a linked item from elastic bands facilitated by an apparatus
`
`having a plurality of pins, as recited in claim 14. While Carruth discloses
`
`16
`
`zzoo/noo
`
`nufitaa uosumata
`
`nu an svz~ XVJ vzzst stoz/st/at
`
`
`
`09-8|JI(ss—tuuJ) uouvano . via new srz=oIso . |.‘Ifl§9££ZiSlNC| . 6lIZOD-XV:lOJ.cl-MlUJ\S . [emu nmnuus umseal we aazzsza QIEIZISIIZI. iv cmoa . zzm aova
`
`IPR2015-01139
`
`Patent 8,485,565 B2
`
`creating a fashion accessory from elastic bands, Carruth provides no figures
`
`or detailed description of the referenced “guide,” and discusses only a
`
`method where a guide is used to facilitate folding of the first band of the
`
`linked item (Ex. 1011, 3:21-28), with the rest of the item being formed
`
`without the use of the guide (id. at 3:29-41). In Pugh, the knitting apparatus
`
`is used for knitting, using a “cord like material,” such as Wool. Ex. 1015,
`
`1:23-25. Nothing in Pugh discusses a method of linking “bands” as
`
`_ claimed. In fact, Pugh references anchoring the “tree end of the wool,”
`
`which is a clear indicator that Pugh utilizes a continuous piece of material
`
`(e.g., wool), rather than a “band,” as claimed. Id. at 1:27-28. Contrary to
`
`Petitioner’s assertions, the knitting apparatus of Pugh does not, on its face,
`
`appear to serve the same function as the guide of Carruth, and Petitioner
`
`~
`
`provides no evidence to support this claim. We, thus, are not persuaded that
`
`one of skill in the art would have combined these references as asserted by
`
`Petitioner.
`
`Additionally, Petitioner relies on Pugh as teaching the specific steps
`
`of claims 12-14, each of which recite particular manipulation of the elastic
`
`bands on the pins of the apparatus. Pet. 43-46. Beyond conclusory
`
`statements, Petitioner does not point to persuasive evidence in the record
`
`that disclosure of a method of knitting (i.e., using a continuous piece of
`
`material) would teach or suggest the particular steps of the claimed method
`
`of creating a linked item from bands (i.e., a closed loop of material). We are
`
`not persuaded by Petitioner’s bare assertion that forming Brunnian links is
`
`“essentially the same process of traditional knitting” (Pet. 42).
`
`Z300/BT00
`
`MIST-1A'l UOSUIHQICI
`
`IILZL B99 BVZ
`
`XV:_l S3391 9TOZ/QT/ZT
`
`17
`
`
`
`os-sn:(ss—un-u)noI1vuna . nu ctr 81rZlCIlS3 . oo99s:zz:sma . euzao-xvaota-Mzans . lawn pmpuzus unusual we sozzszc stnzxsuzi 1V cum: . we: save
`
`IPR20l5-01 139
`
`Patent 8,485,565 B2
`
`For the foregoing reasons, Petitioner has not demonstrated a
`
`reasonable likelihood of prevailing on its asserted ground that claim 14
`
`would have been obvious in view of Carruth and Pugh.
`
`F. Obviousness of Claim 14 in View of Wang and Sasur
`
`Petitioner asserts claim 14 would have been obvious in view of Wang
`
`and Sasur. Pet. 46-52. Wang relates to an adjustable knitting frame that
`
`“pern:1it[s] the selection of various sizes and patterns in making knitted
`
`goods.” Ex. 1017, 1:38-45. Wang teaches several types of stitches that can
`
`be knitted on the apparatus thereof. Id. at 2:66-4:57, Figs. 6-28. As
`
`discussed in Wang, knitting on pegs (e-.g., on a knitting flame) may be an
`
`easier alternative to knitting with needles, which can be tedious and require a
`
`high level of skill. Id. at 1:10-20.
`
`Petitioner relies on Wang for teaching the majority of the steps recited
`in claims 12-14 (Pet. 46-52), citing Sasur only for teaching an “access
`
`_
`
`groove of a pin” (id. at 51-52). Petitioner relies on several figures of Wang
`
`that describe the various knitting stitches as teaching the claimed steps
`
`regarding the assembling of bands on the pins, and capturing and
`
`maneuvering the ends of the bands relative to other bands. However, similar
`to our discussion above with respect to the teachings of Pugh, the stitching
`
`variations described in Wang also use a continuous yarn, as in traditional
`
`needle-knitting, rather than closed loops, or bands, as claimed. Petitioner
`
`does not address this distinction, merely pointing to “loops” described in
`
`Wang as teaching the claimed bands. See, e.g., id. at 48-49. However, as
`
`can be seen, for example, in Figure 25 of Wang, cited by Petitioner and
`
`reproduced below, the “loops” of Wang are formed of a continuous strand of
`
`Z200/6'l'O0
`
`111131"-IM U05UT3‘I0T(I
`
`VLZL 95.’? SP8
`
`XV:I 92191 9TOZ/QT/ZT
`
`18
`
`
`
`09°3D1(5S-ull-U) NOI.l.VHI'IO : hill SCI’ EVZICIISD . 0099E£Z3SlNfl u 6|»lZ00'XV:lO.Ld'M1HA3 a [all-IIJ. DJPDU913 U-B3533] Wd 6012931
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ ChargeStill Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site