Paper No. 11
`Filed: February 23, 2016
`
`
`
`IN THE 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 No. 8,024,901
`__________________
`
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
` JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`PETITIONER’S MOTION FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`Filed: February 23, 2016
`
`
`
`IN THE 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 No. 8,024,901
`__________________
`
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
` JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`PETITIONER’S MOTION FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`STATEMENT OF RELIEF REQUESTED AND INTRODUCTION ........... 1
`
`THE PANEL’S DECISION ON CLAIM 1 ..................................................... 3
`
`III.
`
`STANDARD FOR REHEARING .................................................................. 5
`
`IV. ARGUMENT ................................................................................................... 5
`
`A.
`
`B.
`
`C.
`
`By relying on isolated portions of Dr. Beaman’s Report out of
`context, the Panel “misapprehended or overlooked . . .
`significant fact[s]” and, thus, abused its discretion. .............................. 6
`
`The Panel exercised “an unreasonable judgment” by improperly
`requiring more expert disclosure than necessary from Dr.
`Beaman’s Report directed to easily understandable technology. ......... 9
`
`The Panel failed to consider “common sense” in its obviousness
`analysis and, thus, the Panel exercised “an unreasonable
`judgement” and abused its discretion. ................................................. 11
`
`V.
`
`CONCLUSION .............................................................................................. 15
`
`
`
`
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`US.104753896.08
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`TABLE OF AUTHORITIES
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`
`
`FEDERAL CASES
`Allergan, Inc. v. Barr Labs., Inc.,
`501 F. App’x 965 (Fed. Cir. 2013) ...................................................................... 13
`
`Page(s)
`
`Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc.,
`555 F.3d 984 (Fed. Cir. 2009) ............................................................................. 13
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ..................................................................... 13, 14
`
`Centricut, LLC v. Esab Group, Inc.,
`390 F.3d 1361 (Fed. Cir. 2004) ........................................................................... 13
`
`Cimline, Inc. v. Crafco, Inc.,
`413 F. App’x 240 (Fed. Cir. 2011) ............................................................ 9, 10, 12
`
`DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co.,
`464 F.3d 1356 (Fed. Cir. 2006) ................................................................. 2, 12, 15
`
`I/P Engine, Inc. v. AOL Inc.,
`576 F. App’x 982 (Fed. Cir. 2014) ............................................................ 2, 12, 15
`
`In re Bayne,
`527 F. App’x 847 (Fed. Cir. 2013) ...................................................................... 13
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 12, 13
`
`Meyer Intellectual Properties Ltd. v. Bodum, Inc.,
`690 F.3d 1354 (Fed. Cir. 2012) ............................................................... 10, 13, 15
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ................................................................. 9, 12, 13
`
`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) ..................................................................... 12, 15
`
`Stone Strong, LLC v. Del Zotto Prods. of Florida, Inc.,
`455 F. App’x 964 (Fed. Cir. 2011) ................................................................ 12, 13
`
`US.104753896.08
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`-ii-
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`
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`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ..................................................................... 12, 13
`
`Trivascular, Inc. v. Samuels,
`No. 2015-1631, 2016 WL 463539 (Fed. Cir. Feb. 5, 2016) ........................... 1, 15
`
`Union Carbide v. American Can Co.,
`724 F.2d 1567 (Fed. Cir. 1984) ........................................................................... 12
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ..................................................................... 12, 13
`
`RULES
`
`Rule 42.71(c) .............................................................................................................. 5
`
`REGULATIONS
`
`37 C.F.R. § 42.71(c) ................................................................................................... 5
`
`OTHER AUTHORITIES
`Merial Ltd. v. Virbac,
`IPR2014-01279, Paper 18, slip op. (PTAB Apr. 15, 2015) .............................. 5, 6
`
`Yamaha Corp. of Am. v. Black Hills Media, LLC, IPR2014-00766, Paper 16,
`slip op. (PTAB Feb. 23, 2015) .............................................................................. 5
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`US.104753896.08
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`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`
`The Panel’s decision not to institute inter partes review (“IPR”) of Claim 1
`
`of U.S. Patent No. 8,024,901 (“’901 Patent”), and consequently failing to even
`
`consider the dependent claims flowing therefrom,1 represents an abuse of
`
`discretion because it overlooked significant portions of Dr. Joseph Beaman’s
`
`expert declaration (Ex. 1018) and ignored critical components of obviousness law.
`
`The technology here and the corresponding obviousness analysis could not
`
`be simpler—the sole difference between Claim 1 and Price (Ex. 1002) is a simple,
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`non-inventive mirror image alteration of one mechanical snap-fit feature. Petition,
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`at 17–18. Under a “reasonable likelihood of success” standard of review, which
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`the Federal Circuit recognizes is “significant[ly] differen[t]” from the standard of
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`review applied in a Board’s Final Written Decision, see Trivascular, Inc. v.
`
`Samuels, No. 2015-1631, 2016 WL 463539, at *9 (Fed. Cir. Feb. 5, 2016),
`
`Allsteel’s petition provided at least three independent bases for obviousness—all
`
`replete with authoritative support in precedent.
`
`First, Allsteel presented the Panel with a thorough obviousness expert
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`declaration from Dr. Beaman which the Panel misapprehended by overlooking
`
`significant portions and taking others out of context to reach its conclusion.
`
`1
`This Motion for Rehearing is only for Claim 1 because the Panel did
`
`not consider any of the dependent claims addressed in the Petition. See Paper 10.
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`Second, setting aside whether the Panel thoroughly reviewed Dr. Beaman’s Report,
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`the Panel exercised unreasonable judgment by requiring more expert disclosure
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`than necessary of Dr. Beaman’s Report, especially given the easily understandable
`
`technology at issue. Third, in addition to the problems with the Panel’s analysis of
`
`Dr. Beaman’s Report, the Panel exercised an unreasonable judgment by failing to
`
`consider the clear “common sense” obviousness of Claim 1 of the ’901 Patent—a
`
`requirement under Federal Circuit law. See I/P Engine, Inc. v. AOL Inc., 576 F.
`
`App’x 982, 989 (Fed. Cir. 2014) (“[T]he obviousness inquiry ‘not only permits,
`
`but requires, consideration of common knowledge and common sense.’” (quoting
`
`DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed.
`
`Cir. 2006))). On any one of these grounds, the Panel “abused its discretion” by not
`
`instituting IPR of Claim 1.
`
`In sum, reversing the direction of mating attachment beads for a well-known
`
`mechanical snap-fit connection cannot be a basis for denying IPR institution based
`
`on common sense, known interchangeability of parts, or the evidence presented in
`
`Dr. Beaman’s Report. Further, Petitioner is not aware of any PTAB or court
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`decision where such a simple common-sense change has been the basis for
`
`patentability, even when the standard of review is the much higher “clear and
`
`convincing” or “preponderance of evidence” standards. See infra § IV.C. This is
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`particularly true where the POSA for this simple snap-fit connection modification
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`has a B.S. in Mechanical Engineering or three to five years of experience as a
`
`mechanical designer. See Petition at 9. In short, the Panel’s decision denying
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`institution creates a new, much higher hurdle to obtaining IPR institution because it
`
`does not follow precedent on the “reasonable likelihood of success” standard of
`
`review, obviousness analysis, and requirements for expert declarations.
`
`II. THE PANEL’S DECISION ON CLAIM 1
`
` The Panel’s analysis centers on one limitation from Claim 1: “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
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`connecting strip.” Paper 10, at 9.2 As the Panel recognized, Price differs from
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`Claim 1 in one minor way—it discloses “beaded portions of bayonet members 61
`
`(e.g., claim 1 vertically extending flanges) [that] fit outside arms 63 of jointer
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`member 60 as opposed to inside arms 63 as claimed.” Paper 10, at 9–10. Dr.
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`Beaman illustrated how this minor difference would be implemented and Petitioner
`
`included this illustration in the Petition. See Ex. 1018, Fig. Q; Petition, at 19.
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`The Panel focused narrowly on just two paragraphs in Dr. Beaman’s Report
`
`(paragraphs 219 and 220) in analyzing Petitioner’s argument that this minor
`
`2
`
`Although
`the Panel addressed
`
`two of Petitioner’s alternative
`
`arguments directed at Claim 1, this Motion only addresses the errors in the Panel’s
`
`analysis of the first of these arguments. See Paper 10, at 8–12.
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`US.104753896.08
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`-3-
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`
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`difference between Price and Claim 1 would be viewed as an obvious variation to a
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`POSA. Paper 10, at 10–12. Specifically, the Panel described as “conclusory”
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`paragraph 220 of Dr. Beaman’s Report, which states:
`
`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 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.
`
`
`According to the Panel, paragraph 220 of Dr. Beaman’s Report is conclusory
`
`because it “does not provide a factual basis for his conclusion that the snap fit
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`connection would work in the same manner as the original arrangement, or that
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`there would be less of a snagging or pinching concern for installers as asserted.”
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`Paper 10, at 11. In particular, the Panel explained, Dr. Beaman fails to explain that
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`this rearrangement of parts would result in “(1) the arms ‘being adapted to connect
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`releasably to the beaded portion of one of said first vertically extending flange’ and
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`(2) ‘releasably connecting’ one wall module to another as claimed.” Id.
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`The Panel went on to state that Dr. Beaman failed to “provide a sufficient
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`factual basis for the rationale for making the modification” to Price and Dr.
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`Beaman “does not provide a sufficient basis for [the Panel] to conclude that the
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`modification would reduce snagging or pinching for installers.” Id.
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`III. STANDARD FOR REHEARING
`
`“When rehearing a decision on petition, a panel will review the decision for
`
`an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion may be
`
`determined if a decision is based on an erroneous interpretation of law, if a factual
`
`finding is not supported by substantial evidence, or if the decision represents an
`
`unreasonable judgment in weighing relevant factors.” Yamaha Corp. of Am. v.
`
`Black Hills Media, LLC, IPR2014-00766, Paper 16, slip op. at 2 (PTAB Feb. 23,
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`2015) (citations omitted). Likewise, where the Board has “misapprehended or
`
`overlooked a significant fact, the necessary abuse of discretion required by Rule
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`42.71(c) has been established.” Merial Ltd. v. Virbac, IPR2014-01279, Paper 18,
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`slip op. at 8 (PTAB Apr. 15, 2015).
`
`IV. ARGUMENT
`
`The Panel abused its discretion on three independent grounds, each of which
`
`warrants rehearing. The first two relate to Dr. Beaman’s Report and the third
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`relates to the appropriate obviousness framework.
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`US.104753896.08
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`A. By relying on isolated portions of Dr. Beaman’s Report out of
`context, the Panel “misapprehended or overlooked . . . significant
`fact[s]” and, thus, abused its discretion.
`
`The Panel overlooked a critical portion of paragraph 220 of Dr. Beaman’s
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`Report, which, in addition to showing the simple modification to the snap-fit
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`connection, clearly explained that the modified version of Price would “work[] in
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`the same way as the unmodified original.” Paper 10, at 10. Put simply, Dr.
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`Beaman “disclose[d] the underlying facts . . . on which [his] opinion [was]
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`based”—the Panel just ignored it.
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`In great detail, Dr. Beaman explained how the “unmodified original” works
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`in paragraphs 48–51, reproduced below, paragraphs the Panel completely
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`overlooked. Petition, at 14–16; Ex. 1018, ¶¶ 48–51.
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`48. Price . . . discloses a “removable connecting strip” according to
`claim 1 of the ‘901 Patent in the form of jointer members 60, which is
`a snap fit connector. . . .
`49. First, a [POSA] would readily have understood that connectors
`which “snap onto” side members 5 (i.e., snap fit connectors) for use in
`a system made to be “removable” and “quickly assembled and
`disassembled” are “removable connectors” . . . . [A POSA] would also
`have understood that the spaced apart, inwardly projecting members
`63 of the jointer members 60 of Price are “flexible” so that the jointer
`members 60 are able to “snap onto” the bayonet members 61 of the
`frame side members 5. E.g., Id. at 3:7-17, 15:10-15.
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`US.104753896.08
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`. . . The ‘901 Patent associates the “beaded portions” with what
`50.
`would be well-known snap-fit features: “Each arm includes a bead 31
`that snap fits with beads 27 on flanges 23 for a secure but releasable
`connection.” Ex. 1001 at 5:27-29. Price discloses just such snap-fit
`beads. For example, the angled portions (“beaded portions”) of the
`inwardly projecting members 63 of the jointer members 60 (which
`“snap onto” corresponding beaded portions of the side member) are
`indicated below on the annotated, excerpts from Figs. 3, 4, and 9 of
`Price. Ex. 1002 at 15:10-15.
`
`
`. . . Each of the jointer members 60 of Price includes a pair of
`51.
`spaced apart flexible arms (inwardly projecting members 63), one arm
`having a beaded portion adapted to connect releasably to (“snap
`onto”) the beaded portion of a flange (bayonet member 61) of a
`vertical end frame (side member 5) of a first wall module and the
`other arm adapted to connect releasably to a beaded portion of a
`flange of a vertical end frame of a second wall module (adjacent panel
`units 1). The beaded portions of the jointer members 60 releasably
`connect the adjacent panel units 1, or wall modules.
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`US.104753896.08
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`Dr. Beaman then tied paragraphs 48–51 to paragraph 220 by explaining and
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`showing (Ex. 1018, Fig. Q, reproduced below) that the modified version of Price
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`would “work[] in the same way as the unmodified original,” particularly because
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`“[t]here is not 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.” Ex. 1018, ¶ 220; Petition, at 18.
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`
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`Dr. Beaman described and showed exactly what the Panel requested—i.e.,
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`how the slight rearrangement of Price would result in: (1) arms that would be
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`“adapted to connect releasably to the beaded portion of one of said first vertically
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`extending flange” or (2) “releasably connecting” one wall module to another.
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`Notably, Dr. Beaman’s modification did not change the type, size, flexibility, etc.
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`of the parts involved. He simply reoriented the arms and beads 180º. There is
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`little else to describe for this simple well-known snap-fit connection, especially to
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`a POSA who has a Bachelor of Science in Mechanical Engineering or has three to
`
`five years of experience as a mechanical designer. Petition, at 9. Paragraphs 48–
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`51 include the exact information the Panel, by its own terms, needed to find Dr.
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`Beaman’s Report sufficient. The Panel ignored paragraphs 48–51 and, in doing so,
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`US.104753896.08
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`the Panel committed an abuse of discretion by “misapprehend[ing] or
`
`overlook[ing] . . . significant fact[s]” in reaching its conclusion.
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`B.
`
`The Panel exercised “an unreasonable judgment” by improperly
`requiring more expert disclosure than necessary from Dr.
`Beaman’s Report directed to easily understandable technology.
`
`Setting aside that the Panel overlooked significant portions of Dr. Beaman’s
`
`Report, the Panel exercised “an unreasonable judgment” by requiring more expert
`
`disclosure than necessary for the “easily understandable” technology at issue and,
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`thus, abused its discretion.3 Federal Circuit law “distinguish[es] the need for and
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`breadth of required expert disclosure when the underlying technology is ‘easily
`
`understandable.’” See Cimline, Inc. v. Crafco, Inc., 413 F. App’x 240, 246 (Fed.
`
`Cir. 2011); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330
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`(Fed. Cir. 2009) (finding that, for a simple technology, scant expert testimony was
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`sufficient). Such is especially true here because the POSA, through which the
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`obviousness inquiry is determined, has a B.S. in Mechanical Engineering or three
`
`to five years of experience as a mechanical designer. See Petition, at 9.
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`Federal Circuit law dictates that Dr. Beaman’s Report is entirely sufficient to
`
`support a finding of obviousness for the simple snap-fit connection. For example,
`
`3
`Based on proper Federal Circuit law, Petitioner’s arguments and
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`evidence from Dr. Beaman’s Report submitted on pp. 11–20 set forth why IPR of
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`Claim 1 should be instituted. See Petition, at 11–20.
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`US.104753896.08
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`
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`in Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354, 1374–76 (Fed.
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`Cir. 2012), the Federal Circuit disagreed with a district court’s determination that
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`an expert’s report on obviousness was “conclusory,” because it was directed to
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`easily understandable technology. There, confronted with a patent directed at
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`milk-frothing technology, the expert explained that “a designer of ordinary skill in
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`the art at the time of the claimed invention would have been familiar with the
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`methods of aerating milk based liquids as well as with the structure of the French
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`press apparatus, and thus the combination would have been obvious to said
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`designer.” Id. at 1375. The Federal Circuit reasoned that the expert’s report (see
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`Exhibit 1026, pp. 27–29) was “sufficiently detailed,” because the technology
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`involved was simple. Id. at 1376; see also Cimline, Inc., 413 F. App’x at 246–47
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`(reversing a district court that “erred in applying [a] heightened burden . . . on
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`expert reports” where the underlying powered conveyor belt technology was
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`“easily understandable”).
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`As the district court improperly did to the defendant’s expert in Meyer, here,
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`the Panel improperly criticized Dr. Beaman’s Report as “conclusory.” Paper 10, at
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`11. It is difficult to conceive of how paragraphs 48–51, 220, and the drawing (Ex.
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`2018, Fig. Q) showing the simple modification to the snap-fit connection of Dr.
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`Beaman’s Report are conclusory when compared to, for example, the non-
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`conclusory expert statement from Meyer. Both involve simple technology, see
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`US.104753896.08
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`infra § IV.C (explaining why the technology at issue is “easily understandable”),
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`and unlike the Meyer expert, Dr. Beaman does not simply assert that the mirror
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`image alteration of Price would have been obvious. See Ex. 1018, ¶ 220. Dr.
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`Beaman goes further by explaining in detail how the unmodified snap fit
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`connection works (Ex. 1018, ¶¶ 48–51; Petition, at 11–20), illustrating the
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`modified snap fit connection (Ex. 1018, Fig. Q; Petition, at 19), and explaining that
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`the modified snap fit connection works in the same manner and that the variation
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`would have been obvious because “[t]here is no criticality to the position of the
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`beaded portions according to the claims, nor would there have been any significant
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`engineering obstacle to reversing those positions.” See Ex. 1018, ¶ 220; Petition,
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`at 18. Put simply, Dr. Beaman provides more detail and support for his assertion
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`that Claim 1 is obvious than did the Meyer expert, whose expert report (see Exhibit
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`1026, at pp. 27–29) the Federal Circuit found to be non-conclusory. Here, as in
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`Meyer, the Panel’s determination that Dr. Beaman’s Report is “conclusory” is in
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`direct conflict with Federal Circuit law on the level of disclosure required where
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`very simple technologies are at issue.
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`C. The Panel failed to consider “common sense” in its obviousness
`analysis and, thus, the Panel exercised “an unreasonable
`judgement” and abused its discretion.
`Obviousness is determined by considering the four Graham factors as well
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`as “logic, judgment, and common sense available to the person of ordinary skill.”
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`Perfect Web Techs., 587 F.3d at 1329. This “common sense” does “not necessarily
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`require explication in any reference or expert opinion.” Id.; Wyers v. Master Lock
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`Co., 616 F.3d 1231, 1239–40 (Fed. Cir. 2010); see also Cimline, Inc., 413 F.
`
`App’x at 246 (“[E]xpert reports—even credible experts reports—are not required
`
`when the underlying factual considerations are resolved by resort to common
`
`sense.”). In fact, “the obviousness inquiry ‘not only permits, but requires,
`
`consideration of common knowledge and common sense.’” I/P Engine, Inc., 576
`
`F. App’x at 989 (quoting DyStar Textilfarben, 464 F.3d at1367); see also Randall
`
`Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (same); cf. KSR Int'l Co. v.
`
`Teleflex Inc., 550 U.S. 398, 421 (2007) (eschewing “[r]igid preventative rules that
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`deny factfinders recourse to common sense”).
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`The element of Claim 1 at-issue here is a simple, easily understandable
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`mechanical snap-fit connection. Such is confirmed by Dr. Beaman’s Report (Ex.
`
`1018, at ¶¶ 193, 256, 261) and Federal Circuit law. Compare Stone Strong, LLC v.
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`Del Zotto Prods. of Florida, Inc., 455 F. App’x 964, 969 (Fed. Cir. 2011) (finding
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`a wall system to be simple technology); Cimline, Inc., 413 F. App’x at 246
`
`(finding a powered conveyor belt to be “easily understandable”); Sundance, Inc. v.
`
`DeMonte Fabricating Ltd., 550 F.3d 1356, 1365 (Fed. Cir. 2008) (finding a
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`retractable segmented cover system used with a truck trailer to be simple
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`technology); Union Carbide v. American Can Co., 724 F.2d 1567, 1573 (Fed. Cir.
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`US.104753896.08
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`1984) (finding the packaging of plastic bags to be “easily understandable”
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`technology) with Allergan, Inc. v. Barr Labs., Inc., 501 F. App’x 965, 972 (Fed.
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`Cir. 2013) (finding a pharmaceutical to be complex technology); see also KSR Int’l
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`Co., 550 U.S. at 417 (“[W]hen a patent ‘simply arranges old elements with each
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`performing the same function it had been known to perform’ and yields no more
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`than one would expect from such an arrangement, the combination is obvious.”).
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`Because the technology here is simple and easily understandable, Dr.
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`Beaman’s Report is not even necessary for the Panel to determine that Claim 1 is
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`obvious,4 as unambiguously recognized in a long line of Federal Circuit case law.
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`See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015)
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`(recognizing that “expert testimony is not required when the references and the
`
`invention are easily understandable”) (citation omitted); In re Bayne, 527 F. App’x
`
`847, 851 (Fed. Cir. 2013); Meyer, 690 F.3d at 1374; Stone Strong, LLC, 455 F.
`
`App’x at 969; Wyers, 616 F.3d at 1239-40; Perfect Web Techs., Inc., 587 F.3d at
`
`1330; Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
`
`984, 993 (Fed. Cir. 2009); Sundance, Inc., 550 F.3d at 1365; cf. KSR Int’l Co., 550
`
`U.S. at 417; Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir.
`
`2004). This is especially true of PTAB judges, who, “because of expertise, may
`
`4
`Petitioner’s arguments submitted on pp. 11–20 set forth why IPR of
`
`Claim 1 should be instituted. See Petition, at 11–20.
`
`US.104753896.08
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`-13-
`
`
`
`
`
`more often find it easier to understand and soundly explain the teachings and
`
`suggestions of prior art without expert assistance.” Belden Inc., 805 F.3d at 1079.
`
`By focusing on the alleged inadequacies of isolated portions of Dr.
`
`Beaman’s Report, the Panel ignored the “common sense” that would be applied by
`
`a person with a B.S. in Mechanical Engineering or three to five years of experience
`
`as a mechanical designer—i.e., a POSA (see Petition, at 9), and, in so doing,
`
`exercised an unreasonable judgement that is contrary to well-established Federal
`
`Circuit law. For example, the Panel recognized that the only limitation from Claim
`
`1 missing from Price was “the beaded portions of said first vertically extending
`
`flange or said second vertically extending flange and said opposed vertically
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`extending flange fitting inside the arms of said connecting strip.” Paper 10, at 9.
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`The only reasons provided by the Panel for rejecting this argument were directed at
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`alleged inadequacies in Dr. Beaman’s Report. Paper 10, at 9–11. Specifically, the
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`Panel described Dr. Beaman’s Report as “conclusory” because he “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
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`of a snagging or pinching concern for installers as asserted.” Id. at 11.
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`The Panel, however, failed to analyze the “common sense” a POSA would
`
`apply to the technology disclosed in Price. See Petition, at 14–16. Specifically,
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`and in direct contradiction to the Federal Circuit’s mandate that “common sense”
`
`US.104753896.08
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`-14-
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`
`
`
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`be considered in every obviousness analysis, e.g., I/P Engine, Inc., 576 F. App'x at
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`989, (quoting DyStar Textilfarben, 464 F.3d at 1367); see also Randall Mfg., 733
`
`F.3d at 1362 (same); Meyer, 690 F.3d at 1375–76 (finding that a district court
`
`“abused its discretion” when it failed to adequately consider “common sense” in its
`
`obviousness analysis), the Panel did not analyze whether, as a matter of “common
`
`sense,” a simple, mirror image alteration of one mechanical snap-fit feature of
`
`Price is an obvious variation. Accordingly, the Panel’s analysis is inadequate
`
`under Federal Circuit law. Accounting for the required “common sense,” Allsteel
`
`has easily met its burden under the “reasonable likelihood of success” standard that
`
`applies to institution decisions—a standard that is “significant[ly] differen[t]” from
`
`the standard of review applied in to a final written decision. See Trivascular, Inc.,
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`2016 WL 463539, at *9.
`
`V. CONCLUSION
`
`For the foregoing reasons, Allsteel requests that the Panel rehear and reverse
`
`its decision not to institute IPR on Claim 1 of the ’901 patent.
`
`Dated: February 23, 2016
`
`By:
`
`/R. Trevor Carter/
`R. Trevor Carter
`Reg. No. 40,549
`
`
`
`
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`US.104753896.08
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`-15-
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that I caused a true and
`correct copy of the foregoing Petitioner’s Motion for Rehearing Pursuant to 37
`C.F.R. § 42.71(d) to be served via e-mail, as a PDF file attachment, on February
`23, 2016, on the following:
`
`
`Chad Nydegger
`cnydegger@wnlaw.com
`
`David Todd
`dtodd@wnlaw.com
`
`Michael J. Frodsham
`mfrodsham@wnlaw.com
`
`
`
`Dated: February 23, 2016
`
`
`
`
`
`By:
`
`/R. Trevor Carter/
`R. Trevor Carter
`Reg. No. 40,549
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian St., Ste. 2700
`Indianapolis, IN 46204-1750
`Telephone: 317-237-0300
`Facsimile: 317-237-1000
`Trevor.Carter@FaegreBD.com
`
`
`
`US.104753896.08
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