`571-272-7822
` Date Entered: January 27, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL INC.,
`Petitioner,
`v.
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01690
`Patent 8,024,901 B2
`____________
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`I. INTRODUCTION
`Petitioner, Allsteel Inc., filed a Petition requesting an inter partes
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`review of claims 1–25 of U.S. Patent No. 8,024,091 B2 (Ex. 1001, “the ’901
`patent”). Paper 1 (“Pet.”). Patent Owner, DIRTT Environmental Solutions
`Ltd., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have
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`jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
`review may not be instituted “unless . . . the information presented in the
`petition . . . 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.”
`For the reasons that follow, we do not institute an inter partes review
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`of claims 1–25 of the ’901 patent.
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`A. Related Proceeding
`The ’901 patent is involved in the following lawsuit: DIRTT
`Environmental Solutions Ltd. v. Allsteel Inc., No. 1:15-cv-04874 (N. D. Ill.).
`Pet. 1. IPR2015-01691 involves the same patent and same parties.
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`B. The ’901 Patent
`The ’901 patent relates to a reconfigurable wall system. Ex. 1001,
`Abstract. The wall system has at least one module having a front and rear
`surface and vertical end frames disposed on side edges of the module. Id.
`The vertical end frame of one module connects to a vertical end frame of
`another module through a removable connecting strip. Id.
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`Figure 1 is reproduced below.
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`Figure 1 depicts a wall system 10
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`Figure 1 depicts a wall system 10 made up of one or more wall
`modules 20. Id. at 4:37–38. Each module 20 includes tiles 18, horizontal
`stringers 8, and a pair of vertical end frames 12. Id. at 4:39–45. A more
`detailed depiction of the vertical end frames is shown in Figure 28 below. In
`that figure, each vertical end frame 12 includes a pair of flanges 23, where
`each flange includes a bead 27. Vertical end frames can be connected by
`“zippers” or connecting strips 25. Id. at 5:14–24.
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`Figure 28 is reproduced below.
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`Figure 28 shows a top view of two connected wall modules
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`Connecting strip 25 includes central spine 29 that fits between flanges
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`23 and a pair of arms 30 on opposite sides of the spine. Id. at 5:24–27. Each
`arm includes a bead 31 that snap fits with beads 27 on flanges 23 for a
`secure releasable connection. Id. at 5:27–29.
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`C. Illustrative Claim
`Claim 1 is the sole independent claim and is reproduced below.
`1. A movable reconfigurable wall system comprising:
`a) at least one wall module having a front and rear surface and
`top, bottom, right side and left side edges, said at least one
`wall module having:
`i) a vertical end frame disposed adjacent to each of said right
`and left side edges, each vertical end frame having a first
`vertically extending flange and a spaced apart second
`vertically extending flange thereon, each of said first
`vertically extending flange and said second vertically
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`extending flange having a beaded portion, the beaded
`portion on one of said first vertically extending flange or
`said second vertically extending flange extending toward the
`front surface of the wall module and the beaded portion on
`the other of said first vertically extending flange or said
`second vertically extending flange extending toward the rear
`surface of the wall module;
`ii) a plurality of horizontal stringers affixed between said
`vertical end frames at said right and left side edges; and
`iii) an aesthetic surface affixed to said stringers; and
`b) a removable connecting strip having a pair of spaced apart
`flexible arms, each arm having a beaded portion thereon, the
`beaded portion of one of said arms being adapted to connect
`releasably to the beaded portion of one of said first vertically
`extending flange or said second vertically extending flange
`on said vertical end frame and the beaded portion of the
`other of said arms being adapted to connect releasably to the
`beaded portion of a corresponding opposed vertically
`extending flange on a separate vertical end frame of a
`second wall module, a wall bracket, a finishing trim or a
`connection post to hold one of said first vertically extending
`flange or said second vertically extending flange and said
`opposed vertically extending flange together, the beaded
`portions of said first vertically extending flange or said
`second vertically extending flange and said opposed
`vertically extending flange fitting inside the arms of said
`connecting strip to hold said first vertically extending flange
`or said second vertically extending flange and said opposed
`vertically extending flange together thereby releasably
`connecting said at least one wall module to the other of said
`second wall module, wall bracket, finishing trim or
`connection post.
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`Ex. 1001, 9:45–10:21.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–25 are unpatentable based on the
`following grounds:
`References
`Price1
`Price and EVH2
`Price and Yu3
`Price and MacGregor4
`Price and Raith5
`Price and Rozier6
`Price, MacGegor, and Rozier
`Price and Dixon7
`Price, EVH, and KI Brochure8
`Price and De Lange9
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`Challenged Claims
`1–5, 11, and 13
`6, 7, and 18
`8 and 9
`10 and 19–23
`16 and 17
`12
`25
`14
`15
`24
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`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
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`1 Canadian Patent No. 2,002,674, published March 2, 1993 (Ex. 1002)
`(“Price”).
`2 Publicly available file contents for U.S. Application 10/027,872, published
`as US 2002/0121056, and made publicly available Sep. 5, 2002 (Ex. 1004)
`(“EVH”).
`3 U.S. Patent No. 6,161,347, issued Dec. 19, 2000 (Ex. 1005) (“Yu”).
`4 U.S. Patent Publication No. 2003/0154673 A1, published Aug. 21, 2003
`(Ex. 1006) (“MacGregor”).
`5 U.S. Patent No. 4,438,614, issued Mar. 27, 1984 (Ex. 1003) (“Raith”).
`6 U.S. Patent No. 5,881,979, issued Mar. 16, 1999 (Ex. 1007) (“Rozier”).
`7 U.S. Patent No. 4,277,920, issued Jul. 14, 1981 (Ex. 1008) (“Dixon”).
`8 Genius Full-Height Movable Walls Brochure, 2003 (Ex. 1009) (“KI
`Brochure”).
`9 U.S. Patent No. 3,621,635, issued Nov. 23, 1971 (Ex. 1010) (“De Lange”).
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`II. ANALYSIS
`A. Claim Interpretation
`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. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1277–1279 (Fed. Cir. 2015) (“Congress
`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA,”10 and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable construction standard, claim
`terms 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes a construction for “horizontal stringer.” Pet. 9.
`Patent Owner disagrees with Petitioner’s construction for horizontal stringer
`and proposes its own construction for that term. Prelim. Resp. 8–10. The
`parties do not propose any other construction for any other term. For
`purposes of this Decision, we need not construe any limitations of the
`challenged claims.
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`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
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`10 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”).
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`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
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`C. Asserted Grounds of Obviousness of Challenged Claims over Price
`Petitioner contends that claim 1 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Price and the remaining challenged claims that
`depend from claim 1 (claims 2-25) are obvious over Price alone or Price and
`various other prior art. Pet. 10–57. To support its contention that claim 1 is
`unpatentable, Petitioner provides explanations as to how Price meets the
`claim 1 limitations. Id. at 10–24. Petitioner also relies upon a Declaration
`of Joseph J. Beaman, Jr., who has been retained as an expert witness by
`Petitioner for the instant proceeding. Ex. 1018.
`Price describes a sandwich panel unit for use in a partition wall and to
`a wall assembly incorporating a plurality of sandwich panel units. Ex. 1002,
`2.
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`Figure 3 is reproduced below.
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`Figure 3 of Price shows a top plane view of two connected panels
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`Figure 3 of Price describes a jointer member 60 for connecting two
`panels 8. Id. at 15. Frame side members 5 are formed with bayonet
`members 61. Jointer member 60 has inwardly projecting members 62 and
`63, which form sockets that snap onto the bayonet members 61 to hold the
`panels 8 together. Id.
`Claim 1 requires a connecting strip with a pair of spaced apart arms.
`Claim 1 also requires each arm of the connecting strip as “having a beaded
`portion thereon.” Petitioner relies on Price’s jointer member 60 having arms
`63 (with bead thereon) (see, e.g., Price Fig. 3 above) to meet the connecting
`strip limitation. Pet. 15–16. Petitioner recognizes, however, that Price does
`not describe “the beaded portions of said first vertically extending flange or
`said second vertically extending flange and said opposed vertically
`extending flange fitting inside the arms of said connecting strip.” Id. at 17–
`20. (Emphasis added). Rather, as shown in Figure 3 of Price reproduced
`above, and as acknowledged by Petitioner, beaded portions of bayonet
`members 61 (e.g., claim 1 vertically extending flanges) fit outside arms 63
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`of jointer member 60 as opposed to inside arms 63 as claimed. Id.
`Petitioner contends that a person of ordinary skill in the art at the time of the
`invention would have found it obvious to reverse the positions of bayonet
`members 61 to fit inside inwardly projecting members 63 of jointer member
`60 in a snap-fit relation. Id. at 18. This concept is illustrated at page 19 in
`the Petition showing an original and modified version of Price and is
`reproduced below.
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`Despite Petitioner’s characterization that the modification is a mere
`reversal of parts, the proposed modification results in the repositioning and
`rotating of projecting member 63 with the “bead” on its end outside rotated
`bayonet member 61, as shown above to meet the claim language. Petitioner
`argues that modifying in this way would have been obvious, directing
`attention to the Declaration testimony of Mr. Beaman, who testifies that it
`would have been obvious to reverse the inwardly projecting members of the
`jointer member 60 of Price such that the beaded portions fit inside the arms
`of bayonet members. Ex. 1018 ¶ 219. Claim 1 requires the beaded portion
`of the flange (e.g., beaded portion of bayonet member 61) to fit inside the
`arms of the connecting strip (e.g., projecting member 63), not the other way
`around as Mr. Beaman asserts. Moreover, we have considered Mr.
`Beaman’s testimony that the modification shown above would have been
`obvious. That testimony is reproduced here.
`220. For all intents and purposes, such a modification would
`result in a snap fit connection that predictably works in the
`same way as the unmodified original. One is simply a mirror
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`image of the other. A person of skill would recognize that, from
`a functional perspective, the original and modified
`arrangements are exactly the same and either could be selected
`as a matter of mere design preference. There is no criticality to
`the position of the beaded portions according to the claims, nor
`would there have been any significant engineering obstacle to
`reversing those positions. In fact, by having the flanges on the
`frame side members point inwardly according to the
`modification proposed above, there would likely be less of a
`snagging or pinching concern for installers of the panels.
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`Id. ¶ 220.
`We do not give much weight to the above testimony because it is
`conclusory. 37 C.F.R. § 42.65(a). Mr. Beaman does not provide a factual
`basis for his conclusion that the snap fit connection would work in the same
`manner as the original arrangement, or that there likely would be less of a
`snagging or pinching concern for installers as asserted. For example, we
`would want to know that the rearranging of so many parts would result in (1)
`the arms “being adapted to connect releasably to the beaded portion of one
`of said first vertically extending flange” and (2) “releasably connecting” one
`wall module to another as claimed, an explanation of which is missing from
`the Petition and Mr. Beaman’s testimony.
`We also are not persuaded by Petitioner’s assertions that the
`modification would have been obvious, because Petitioner does not provide
`a sufficient factual basis for the rationale for making the modification. In
`that regard, Mr. Beaman does not provide a sufficient basis for us to
`conclude that the modification would reduce snagging or pinching for
`installers. He does not explain what he means by this, or how the
`modification would have led to the alleged improvement. Indeed, if the
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`modification is merely a mirror image of the original and “exactly” the same
`as Mr. Beaman testifies, we wonder why the modified arrangement would be
`better as asserted.
`Petitioner alternatively proposes modifying Price so that connection
`members used for attaching a wall unit to a ceiling can be used to connect
`the individual wall panels together. Pet. 19–20. In particular, Price
`describes a ceiling track 42 for securing partition wall 45 to the ceiling. Ex.
`1002, 14. This is illustrated in Figure 2, a portion of which is reproduced
`below.
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`Figure 2 of Price is a sectional view of a panel unit engaging a ceiling
`channel
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`Ceiling track 42 is suspended from the building ceiling by a T-bar 46
`and has an outwardly projecting bayonet member 50 on each side. Id. A
`pair of L-shaped alignment members 43 has horizontal portions 52 and 53
`with inwardly protruding ratchet-type teeth 54. The teeth 54 snap onto
`bayonet members 50 to align panel units in linear formation and to support
`them laterally at their upper end so that they are prevented from toppling
`over. Id. at 14–15.
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`Petitioner proposes to use the above horizontal portions 52 and 53,
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`with ratchet-type teeth 54, to engage bayonet 50 in substitution of the jointer
`member 60 and bayonet members 61 shown in Figure 3 for connecting two
`wall units together. This concept is illustrated at page 20 in the Petition
`showing the proposed modification to Price and is reproduced below.
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`In essence, Petitioner proposes to orient the horizontal ratchet-type
`teeth 54 of Figure 2 vertically and replace the bayonet of Figure 3 with the
`bayonet of a different shape from Figure 2. Petitioner argues that it would
`have been obvious to modify the socket-bayonet arrangement between the
`jointer members 60 and side members 5 with the socket-bayonet
`arrangement between the alignment members 43 and ceiling track 42 to
`provide a ratchet type connection between the jointer and side member. Pet.
`19–20. We have considered Mr. Beaman’s testimony to which we are
`directed. Mr. Beaman testifies that the various socket-bayonet arrangements
`disclosed in Price could be used interchangeably, and that a person of
`ordinary skill in the art would have been motivated to make the interchange
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`because standardizing the types of connections in the Price wall system
`would result in cost reductions. Ex. 1018 ¶¶ 222–223.
`We do not give much weight to Mr. Beaman’s testimony because it is
`conclusory. 37 C.F.R. § 42.65(a). Mr. Beaman does not provide a factual
`basis for his conclusion that the various socket-bayonet arrangements
`disclosed in Price could be used interchangeably. Price’s ratchet-type teeth
`connection with bayonet appears quite different from its jointer member 60
`arrangement. We don’t know, for example, how the ratchet-type teeth
`connection to bayonet would result in (1) the arms “being adapted to connect
`releasably to the beaded portion of one of said first vertically extending
`flange” and (2) “releasably connecting” one wall module to another as
`claimed. An explanation is missing from the Petition and Mr. Beaman’s
`testimony in that regard.
`We also are not persuaded by Petitioner’s assertions that the
`modification would have been obvious, because Petitioner does not provide
`a sufficient factual basis for the rationale for making the modification. In
`that regard, Mr. Beaman does not provide a basis for us to conclude that the
`modification would lead to cost reductions. He does not explain what he
`means by this, or how the modification would lead to cost reductions. If
`anything, having more edges from the ratchet-type teeth would appear to us
`to result in more manufacturing costs, not less.
`For the above reasons, we are not persuaded that either proposed
`modification to Price meets all of the limitations. Nor are we persuaded by
`Petitioner’s rationale that either proposed modification would have been
`obvious to a person of ordinary skill in the art at the time of the invention.
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`We are not persuaded that Petitioner has established a reasonable
`likelihood that Petitioner would prevail in its challenge to claim 1 or claims
`2–25 which depend from claim 1.
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`III. CONCLUSION
`For the foregoing reasons, we determine that there is not a reasonable
`likelihood that Petitioner would prevail in showing that claims 1–25 of the
`’901 patent are unpatentable.
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`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
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`PETITIONER:
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`Victor Jonas
`Victor.jonas.ptab@faegrebd.com
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`Trevor Carter
`Trevor.carter@faegrebd.com
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`Nicholas Anderson
`Nick.anderson@faegrebd.com
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`PATENT OWNER:
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`Chad E. Nydegger
`cnydegger@wnlaw.com
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`Michael J. Frodsham
`mfrodsham@wnlaw.com
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`David R. Todd
`dtodd@wnlaw.com
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`Robert L. Florence
`rflorence@wnlaw.com
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