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`16196.112.4
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
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`v.
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`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
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`___________
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`
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`Case No. IPR2015-01690
`Patent No. 8,024,901
`Issue Date: September 27, 2011
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`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`16196.112.4
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
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`v.
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`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
`
`___________
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`
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`Case No. IPR2015-01690
`Patent No. 8,024,901
`Issue Date: September 27, 2011
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`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`16196.112.4
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`V.
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`INTRODUCTION ........................................................................................... 1
`THE ’901 PATENT ......................................................................................... 3
`A. Overview of the ’901 Patent .................................................................. 3
`B. How the Claims of the ’901 Patent Are to be Construed ...................... 8
`A “horizontal stringer” is a horizontal structural support
`1.
`that connects opposing vertical end frames of a module
`and that is not a horizontal base for the module. ........................ 8
`III. STANDARD FOR GRANTING INTER PARTES REVIEW ........................ 10
`IV. PETITIONER’S PRIMARY PRIOR ART REFERENCE ........................... 11
`A. Overview of Price ................................................................................ 11
`PETITIONER HAS FAILED TO SHOW THAT IT IS LIKELY TO
`SUCCEED IN SHOWING THAT ANY OF THE CHALLENGED
`CLAIMS ARE OBVIOUS OVER THE PRIOR ART .................................. 16
`Statutory Ground 1: Claims 1-5, 11 and 13 Would Not Have
`A.
`Been Obvious over Price ..................................................................... 16
`Claim 1 would not have been obvious in view of Price
`1.
`because Price does not disclose the claimed connecting
`strip. ........................................................................................... 17
`Claim 3 would not have been obvious because Price does
`not teach flexible fins extending in a direction opposite of
`the flexible arms. ....................................................................... 27
`Claim 5 would not have been obvious because Price does
`not teach protrusions on the horizontal stringers to which
`tile clips are affixed. .................................................................. 29
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`2.
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`3.
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`4.
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`Claim 11 would not have been obvious because Price
`does not teach a leveler with a structural extrusion to
`engage the module. ................................................................... 31
`Statutory Ground 2: Claims 6, 7 and 18 Would Not Have Been
`Obvious over Price in view of EVH ................................................... 32
`Statutory Ground 3: Claims 8 and 9 Would Not Have Been
`Obvious over Price in view of Yu ....................................................... 32
`Statutory Ground 4: Claims 10 and 19-23 Would Not Have
`Been Obvious over Price in view of MacGregor ................................ 40
`Statutory Ground 5: Claims 16 and 17 Would Not Have Been
`Obvious over Price in view of Raith ................................................... 43
`Statutory Ground 6: Claim 12 Would Not Have Been Obvious
`over Price in view of Rozier ................................................................ 50
`Statutory Ground 7: Claim 25 Would Not Have Been Obvious
`over Price in view of MacGregor and Rozier ..................................... 50
`Statutory Ground 8: Claim 14 Would Not Have Been Obvious
`over Price in view of Dixon ................................................................ 51
`Statutory Ground 9: Claim 15 Would Not Have Been Obvious
`over Price in view of EVH and KI Brochure. ..................................... 53
`Statutory Ground 10: Claim 24 Would Not Have Been Obvious
`over Price in view of De Lange. .......................................................... 54
`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION
`IN LIGHT OF REISSUE PROCEEDING
`14/032,931 ..................................................................................................... 58
`VII. CONCLUSION .............................................................................................. 60
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`TABLE OF AUTHORITIES
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`Page(s)
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`RULES AND STATUTES
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 314 ........................................................................................................ 10
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`35 U.S.C. § 325 ........................................................................................................ 59
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`OTHER AUTHORITIES
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`MPEP § 1442.03 ............................................................................................... 59, 60
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) .............. 10
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`REGULATIONS
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`37 C.F.R. § 42.100 ..................................................................................................... 8
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.108 ................................................................................................... 10
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`INTRODUCTION
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`I.
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`Patent owner DIRTT Environmental Solutions Ltd. (“DIRTT”) hereby
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`respectfully submits this Preliminary Response to the Petition seeking inter partes
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`review of U.S. Patent No. 8,024,901 (the “’901 patent”). Pursuant to 35 U.S.C.
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`§ 313 and 37 C.F.R. § 42.107, this Response is being timely filed by November 13,
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`2015, within three months of the August 13, 2015 mailing date of the Notice
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`granting the Petition a filing date.
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`A trial should not be instituted in this matter as none of the references relied
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`upon by Petitioners HNI Corporation and Allsteel Inc. (collectively “Petitioner”) in
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`the Petition, either alone or in combination with each other, raise a reasonable
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`likelihood of Petitioner prevailing with respect to any claim of the ’901 patent.
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`The claims of the ’901 patent are directed to reconfigurable wall systems.
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`The reconfigurable wall systems include discrete modules connected together to
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`form a wall that can be deconstructed and/or reconfigured without demolishing the
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`walls. Each module has opposing vertical frames and horizontal stringers
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`connecting the vertical frames. The horizontal stringers also support decorative
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`tiles or dividers that can be easily switched out or replaced. Adjacent modules are
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`connected together by an innovative flexible connecting strip, or “zipper,” that
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`interacts with beads formed on the vertical supports to hold the modules together.
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`As discussed in detail below, each of the Statutory Grounds 1 – 10 set forth
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`in the Petition is deficient, and the Petition should be denied in its entirety. Each
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`of the Statutory Grounds is based on obviousness; the Petition does not argue
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`anticipation of any claim of the ’901 patent. Statutory Ground 1 is the only ground
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`that addresses claim 1, the sole independent claim of the ’901 patent, wherein
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`Petitioner argues that claim 1 is not patentable for obviousness in view of Price.
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`However, Price does not disclose the elements in claim 1 directed toward the
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`interaction of the flanges of the vertical frames and the zipper used to connect them
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`together. Indeed, these elements are not found in any of the references cited in the
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`Petition. Recognizing this deficiency in the prior art, Petitioner argues that it
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`would have been obvious to modify the structure of Price to arrive at the invention
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`of claim 1. Petitioner’s theorized modifications of Price, however, are unsupported
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`and would be inconsistent with the actual structure and function disclosed in Price.
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`Whereas each of the Statutory Grounds 2-10 address claims that depend
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`from claim 1, they suffer from the same deficiencies as Statutory Ground 1.
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`Additionally, many of
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`the supplemental references Petitioner argues
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`in
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`combination with Price do not disclose the additional elements of the various
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`dependent claims that Price lacks, and many of the components disclosed by the
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`supplemental references would not have been reasonably combined with Price.
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`Accordingly, the Petition does not show a reasonable likelihood of
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`prevailing with respect to even a single challenged claim of the ’901 patent, and
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`inter partes review of the ’901 patent should be denied as to each of the claims.
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`II. THE ’901 PATENT
`A. Overview of the ’901 Patent
`The ’901 patent relates to reconfigurable wall systems. Ex. 1001 at 1:14-24.
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`Wall systems are typically used to partition an overall office environment into
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`separate work areas without the need to install permanent or fixed walls. Id. at
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`1:21-30. This partitioning is done by connecting wall modules together to
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`subdivide the space into various work areas. Id. The modules 20 of the ’901
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`patent “comprise a pair of vertical end frames 12 that will be spaced apart by the
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`desired width of each module.” Id. at 4:39-40. The modules include horizontal
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`stringers 8 “spaced apart at intervals along the height of the module for strength
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`and rigidity.” Id. at 4:54-55. The stringers can be made from extruded aluminum,
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`for example. Id. at 8:57. The modules are clad with tiles made of wood, plastic,
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`metal, glass, etc. to provide the desired aesthetics, transparency, etc. Id. at 4:43-51.
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`The following colored reproduction of Figure 1 depicts an exploded view of a
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`module 20 of the ’901 patent:
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` Tiles 18
` Horizontal stringers 8
` Vertical end frames 12
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` Adjacent modules are connected together with a zipper interface to create a
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`wall or partition. Id. at 1:65-67. The following colored reproduction of an excerpt
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`of Figure 28 depicts how the zippers 25 connect two adjacent modules together:
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` Tiles
` Zipper 25
` Arms 30 on zipper 25
` Beads 31 on arm 30
` Vertical end frames 12
` Flanges 23 of frames 12
` Beads 27 of flanges 23
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`Specifically, the end frames 12 include “a pair of rearwardly extending L-
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`shaped flanges 23 that align vertically with correspondingly positioned and shaped
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`flanges 23 on [an] opposite end frame . . . so that [they] can be connected together
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`by connecting strips (“zippers”) 25.” Id. at 5:15-20. “[E]ach of flanges 23 is
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`formed with a bead 27. Each zipper 25 is generally T-shaped in cross-sectional
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`shape and includes a central spine 29 that fits between flanges 23 and a pair of
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`arms 30 on opposite sides of the spine. Each arm includes a bead 31 that snap fits
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`with beads 27 on flanges 23 for a secure but releasable connection.” Id. at 5:24-29.
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`Importantly for understanding the challenged claims, the pink arms 30 of the
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`zipper 25 snap onto the red beaded portions 27 of the flanges 23 so as to hold the
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`flanges together. One advantage of this configuration is that in order to install the
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`zipper, there is no need to maneuver the flanges so that they are a precise distance
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`apart. Instead, the flanges may be brought into contact with one another and then
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`the zipper may be applied. The zipper 25 also includes flexible fins 32 that extend
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`in a direction opposite to the direction of arms 30 to create a seal against the tiles.
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`Because the fins 32 are flexible, they can be pushed aside to reveal a gap between
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`the body of the zipper 25 and the adjacent modules, and the gap allows the zipper
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`to be accessed for removal. Id. at 5:29-33.
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`The horizontal stringers 8 of the wall system of the ’901 patent may further
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`include cantilever channels to support objects, such as wall accessories or
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`furniture, that are hung on the walls, as shown in the following colored
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`reproduction of Figure 9:
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` Channel stringer 40
` L-shaped slot 42
` Wall accessory 47
` Tiles 18
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`Specifically, the horizontal stringers discussed above can be cantilever
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`channel stringers 40 that include a cantilever channel portion 41. Id. at 4:55-57.
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`The cantilever channel portion 41 has “a generally L-shaped slot 42 formed along
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`its length adapted to receive and engage a substantially L-shaped hook 45 formed
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`on a wall accessory 47 ….” Id. at 6:22-26. This arrangement of an L-shaped
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`cantilever channel 42 and corresponding L-shaped hook 45 on a wall accessory 47
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`not only supports wall accessories that hang flat against the wall (as shown in
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`Figure 9 above), but also allows wall accessories to cantilever out from the
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`cantilever stringer 40 without any additional hardware or other attachments.
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`The wall system of the ’901 patent also includes a leveling system. The
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`leveler system is shown below in colored reproductions of figures 14 and 15:
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` Plate 113
` Upper section 112
` Middle section 115
` Lower section 120
` Lower plate 125
` Extrusion 90
` Universal foot 100
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`In one embodiment, the leveling system “includes a structural extrusion 90,
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`which is generally an inverted U-shaped channel with a notch 92 to engage the
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`lower edge of the glass or plastic divider, and a universal foot 100.” Id. at 7:25-31.
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`The extrusion 90 and the universal foot 100 are connected by levelers 110. Id. at
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`7:32-33. The levelers include an upper section 112, a middle section 115, and a
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`lower section 120. Id. at 7:35-36. The middle section 115 has internal threads in
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`one direction and external threads in the opposite direction. Id. at 7:35-54. The
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`upper section 112 has internal threads that match the external threads of the middle
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`section 115, and includes a plate 113 to engage the extrusion 90. Id. The lower
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`section 120 has external threads that mate with the internal threads of the middle
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`section 115. Id. The direction of the threads allows the height of the leveler to be
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`extended or retracted by rotating the middle section. Id. The lower section 120 is
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`connected to a V-shaped lower plate 125 that slides into grooves in the foot 100.
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`B. How the Claims of the ’901 Patent Are to be Construed
`Petitioner argues that the only term that needs to be construed is “horizontal
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`stringer.” Petition at 9-10. Each of the statutory grounds in the Petition hangs in
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`part on Petitioner’s unreasonably overbroad construction of a “horizontal stringer”
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`as a “horizontal member.” A proper construction of this term is presented below.
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`1.
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`A “horizontal stringer” is a horizontal structural support
`that connects opposing vertical end frames of a module and
`that is not a horizontal base for the module.
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`In ruling on the Petition, the Board is to give claim terms their “broadest
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`reasonable construction in light of the specification.” 37 C.F.R. § 42.100(b).
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`Although Petitioner correctly cites this standard, it then immediately departs from
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`this standard, instead arguing for an interpretation of “horizontal stringer” that is
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`unreasonably overbroad in view of both the specification and the dictionary
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`definitions it cites.
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`Petitioner argues that a “horizontal stringer” is nothing more than “a
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`horizontal member.” Petition at 9. However, at least two of the dictionary
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`definitions cited in the Petition indicate that a “stringer” connects upright posts in a
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`frame. See Petition at 9 (citing Ex. 1023 (“A long horizontal member used to
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`support a floor or to connect uprights in a frame”); Ex. 1022 (“[A] horizontal
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`timber connecting upright posts in a frame”)).
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`The specification is consistent with this meaning and adds additional
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`context. The ’901 patent describes the “horizontal stringers” as follows:
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`Stringers 8 are horizontally spaced apart at intervals along the height
`of the module for strength and rigidity. To support objects, cantilever
`channel stringers 40, including a cantilever channel portion 41, are
`used as shown in FIGS. 8 and 9. Stringers 8 that do not include
`channel portion 41 can be used anywhere structure is required but the
`channel portion is not required for supporting objects. For example,
`the lowest stringer 8a may not include cantilever channel portion 41.
`The stringers are connected to end frames 12 by fasteners, usually
`threaded screws, in a manner to be described below.
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`Ex. 1001 at 4:54-63. Figure 1 (reproduced above in Section II(A)) accompanies
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`this description and depicts the horizontal stringers 8 spanning the entire width of
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`the module between the vertical end frames 12 and connecting the end frames.
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`This portion of the specification also explains that stringers provide
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`“strength and rigidity.” This means that a horizontal member such as a piece of
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`“base trim” is not a “stringer.” The specification separately discusses “base trim”
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`and “stringers,” indicating that a piece of “base trim” is not a “stringer.” Id. at
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`2:45-49. Thus, the specification therefore makes clear that a “stringer,” as the
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`specification uses that term, does not include base trim. This makes sense because
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`a piece of trim does not provide “strength and rigidity.” Its function is merely to
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`cover gaps and “provide[] a finished look.” Id. at 2:47-48.
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`Significantly, the portion of the specification quoted above describing
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`horizontal stringers refers to “the lowest stringer 8a.” Id. at 4:60-61. In Figure 1,
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`there is another horizontal structure lower than stringer 8a connecting the vertical
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`frames, which is the horizontal base of the frame. Thus, the specification makes
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`clear that a “stringer,” as the specification uses that term, does not include a
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`horizontal base. This makes sense because a horizontal base is not “strung”
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`between the vertical end frames; instead it is supported by the ground or by
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`structures other than the vertical end frames. Thus, the “broadest reasonable
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`construction in light of the specification” of “horizontal stringer” is “a horizontal
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`structural support that connects opposing vertical end frames of a module and that
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`is not a horizontal base for the module,” not merely a “horizontal member” as
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`argued by Petitioner.
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`III. STANDARD FOR GRANTING INTER PARTES REVIEW
`The Board may only grant a petition for inter partes review if “the
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`information presented in the petition…shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). The burden of
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`demonstrating that this threshold is met lies with the Petitioner. E.g., Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“The Board…may
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`institute a trial where the petitioner establishes that the standards for instituting the
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`requested trial are met…”).
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`Here, for the reasons discussed below, there is no reasonable likelihood of
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`Petitioner prevailing on any of the challenged claims. Accordingly, the Petition
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`should be denied in its entirety.
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`IV. PETITIONER’S PRIMARY PRIOR ART REFERENCE
`A. Overview of Price
`Price is the primary reference Petitioner relies upon for each of the statutory
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`grounds presented in the Petition. While Price relates to demountable partition
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`systems, the systems of Price do not disclose each of the elements of the ’901
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`patent claims, considered both alone and in combination with the supplemental
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`references Petitioner cites.
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`Price relates to removable partition walls as shown in the following colored
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`reproduction of Figure 1 of Price.
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` Back of gypsum board 8
` Suspension channels 6
` Frame 2
` Suspension assemblies 10
` Jointer member 60
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`Each partition, model, or sandwich panel unit 1, “comprises a rectangular
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`frame 2 formed of channel-like extrusions.” Id. at 11:2-3. A frame 2 “comprises
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`top and bottom members 3 & 4 respectively, a pair of side members 5, and a
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`plurality of horizontal, V-shaped suspension channels 6.” Id. at 11:4-6. Gypsum
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`boards 8 are placed on both sides of the frame 2 by hanging suspension assemblies
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`10, which are attached to the back of the gypsum boards 8, on the V-shaped
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`suspension channels 6. Id. at 11:13-12:5. “Adjoining sandwich panel units 1 are
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`joined together by a jointer member 60.” Id. at 15:10-11.
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`Because Petitioner argues that the jointer members and side frame members
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`of Price meet certain elements of the claims of the ’901 patent, it bears discussing
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`these parts in additional detail. The side frame members 5 and the jointer member
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`60 are shown in the following colored reproduction of an excerpt of Figure 3:
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` Gypsum boards 8
` Jointer member 60
` Inwardly projecting
`members 63 of joint
`member 60
` Frame 5
` Bayonets 61 of frame 5
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`Price provides only a scant description of the jointer members 60 and their
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`interaction with the frame members. Indeed, the only description of this
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`relationship follows in its entirety: “Adjoining sandwich panel units 1 are joined
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`together by a jointer member 60. More particularly, the frame side members 5 are
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`formed with bayonet members 61. The jointer member 60 has inwardly projecting
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`members 62, 63 which form sockets that snap onto the bayonet members 61 to
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`hold the units 1 together.” Id. at 15:10-15. Price explains that a problem with the
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`prior art is that adjacent panels “have ‘joints’ where the side edge of a panel comes
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`close to or abuts the next element in the wall. These joints in some known wall
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`systems are unsightly because of gaps left between the elements and/or jointing
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`hardware and it is common to mask them with protruding battens.” Id. at 2:24-3:1.
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`Price claims to overcome the disadvantage of gaps and protruding battens through
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`its use of “pencil-line” joints that “eliminate the need for a protruding batten” and
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`thereby create a “monolithic appearance.” Id. at 3:1-17.
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`In contrast, the zipper and flanges disclosed in the ’901 patent provide for a
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`gap between the modules and protruding flexible fins 32 so that the zipper may be
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`removed. Ex. 1001, 5:29-33. And whereas the configuration of the zipper and
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`flanges disclosed in the ’901 patent merely requires an installer to bring the flanges
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`into contact with one another before applying the zipper, the configuration of the
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`jointer member 60 and frames 5 in Price requires an installer to place modules at a
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`fairly precise distance apart before inserting the jointer member 60.
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`Specifically, if an installer maneuvers the gypsum boards 8 so that they are
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`the same distance apart as shown in Figure 3 and then inserts the jointer member
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`60, the blue bayonets 61 will interfere with the pink projecting members 63 as the
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`jointer member 60 is inserted. If an installer maneuvers the gypsum boards 8
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`closer to each other, then the widest portion of the jointer member 60 will not fit
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`between the gypsum boards 8. And if an installer places the gypsum boards 8 too
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`far apart, then the blue bayonets 61 will not end up between the green projecting
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`members 62 and the pink projecting members 63 as shown in Figure 3. Instead,
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`the blue bayonets 61 will move outside of both projecting members 62 and 63
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`without any locking between the pink projecting members 63 and blue bayonets
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`61.
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`To successfully install the jointer member 60, the installer must separate the
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`gypsum boards 8 by a particular distance within fairly narrow tolerances. The
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`jointer member 60 and bayonets 61 are designed so that successful insertion occurs
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`when the gypsum boards 8 are placed apart slightly greater than the full width of
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`the jointer member so that the green inwardly projecting members 62 are aligned
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`with the blue bayonets 61, as shown in this figure:
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`The upper surfaces of the angled ends of the blue bayonets 61 are designed to
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`allow the ends of the green projecting members 62 to slide along that upper angled
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`surface so that when the jointer member 60 is pressed inwardly, the green
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`projecting members 62 are forced toward the gypsum board closest to them and the
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`blue bayonets 61 are forced away from the gypsum board closest to them. This
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`tends to draw the bayonets 61 toward each other and in between the members 62
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`and 63 so that the jointer member 60 fits in between the gypsum boards 8 with
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`very little gap on either side to create “pencil-line” joints and a “monolithic” look
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`as shown in Figure 3. Id. at pp. 3, 6, 8. Once the jointer member 60 has been
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`pressed into place, the lower surfaces of the angled ends of the blue bayonets 61
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`are designed to make contact and interlock with the angled ends of the pink
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`projecting members 63, tending to resist the jointer member 60 from moving back
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`away from the wall. However, if the jointer member 60 is pulled away from the
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`wall with enough force, the angled ends of the pink projecting members 63 and
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`blue bayonets 61 are designed to allow those ends to slide along each other to
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`allow the jointer member 60 to be removed.
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`V.
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`PETITIONER HAS FAILED TO SHOW THAT IT IS LIKELY TO
`SUCCEED IN SHOWING THAT ANY OF THE CHALLENGED
`CLAIMS ARE OBVIOUS OVER THE PRIOR ART
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`At the outset, it is important to note that the Petition does not argue that
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`Price anticipates any claim of the ’901 patent, including the only independent
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`claim 1. Unable to argue anticipation, Petitioner modifies and rearranges various
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`components disclosed in Price to recreate a device that allegedly meets the
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`language of claim 1, but does so with complete disregard for the undesirable
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`effects those changes would have. Simply put, there is no rhyme or reason (other
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`than Petitioner’s self-serving interest) to make the changes necessary to Price in an
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`attempt to render claim 1 of the ’901 patent obvious, yet there are several reasons a
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`person of skill in the art would not have made those changes. Petitioner’s failure
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`to present a case of obviousness as to claim 1 of the ’901 patent is fatal to the
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`Petition in its entirety, as set forth in detail below.
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`A.
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`Statutory Ground 1: Claims 1-5, 11 and 13 Would Not Have Been
`Obvious over Price
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`Statutory Ground 1 argues that Price, alone, renders claims 1-5, 11 and 13
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`unpatentable as obvious. This is the only Statutory Ground directed to claim 1, the
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`sole independent claim in the ’901 patent. And the Statutory Ground for claim 1 is
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`16196.112.4
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`used as the basis for every other Statutory Ground asserted against the dependent
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`claims of the ’901 patent. Thus, a finding that Price would not have rendered
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`claim 1 obvious is fatal to each Statutory Ground presented in the Petition.
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`1.
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`Claim 1 would not have been obvious in view of Price
`because Price does not disclose the claimed connecting strip.
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`Claim 1 requires a removable connecting strip to connect the vertical flanges
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`of two opposing vertical end frames. The claim requires “a removable connecting
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`strip having a pair of spaced apart flexible arms, each arm having a beaded portion
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`thereon.” It further requires two vertically extending flanges with “beaded
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`portions,” “the beaded portions of said first vertically extending flange or said
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`second vertically extending flange and said opposed vertically extending flange
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`fitting inside the arms of said connecting strip to hold said first vertically
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`extending flange or said second vertically extending flange and said opposed
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`vertically extending flange together.” Petition at 24. Petitioner admits that this
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`element is not taught by Price. Id. at 18. Indeed, Price teaches the exact opposite
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`with vertically extending flanges fitting outside the arms of a connecting strip.
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`Petitioner argues that the bayonets 61 on the frame of Price satisfy the
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`claimed “beaded portions” of the vertically extending flanges, and that jointer
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`member 60 with “inwardly projecting members” 63 of Price satisfies the claimed
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`“removable connecting strip having a pair of spaced apart flexible arms.” Petition
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`17
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`at 14. Petitioner points to projecting members 63 of Price, rather than projecting
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`members 62 of Price as the “flexible arms,” because claim 1 further requires that
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`the flexible arms have a “beaded portion,” and projecting members 62 clearly have
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`no such “beaded portion.” Petitioner argues that the bent end of projecting
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`members 63 constitutes the “beaded portion.”
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`The problem is that under this proposed mapping of Price to the claim, the
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`claim requires the bayonets to be “inside the arms of said connecting strip to hold
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`[the flanges] together,” but the bayonets of Price are outside the projecting
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`members 63 of Price:
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`Price Fig. 3
`Flanges 61 outside arms 63
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`’901 Patent Fig. 28
`Claimed flanges 23 inside arms
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`Petitioner attempts to dismiss this striking difference between Price and
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`Claim 1 with the conclusory argument that “a person of ordinary skill in the art
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`would have found it obvious to reverse the positions of the bayonet members 61 to
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`fit inside the inwardly projecting members 63 of the jointer members 60 in a snap-
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`fit relation[.]” Petition at 18. Petitioner argues that such a modification would
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`have been obvious because there “is no criticality to the position of the beaded
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`18
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`portions according to the claims, nor would there have been any significant
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`engineering obstacle to reversing those positions.” Petition at 18.
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`
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`Petitioner is wrong. As explained above, to successfully install the jointer
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`member 60, an installer must first separate the gypsum boards 8 by a particular
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`distance within fairly narrow tolerances. Specifically, the jointer member 60 and
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`bayonets 61 are designed so that successful insertion occurs when the gypsum
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`boards 8 are placed apart slightly greater than the full width of the jointer member
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`60 so that the green projecting members 62 are aligned with the blue bayonets 61,
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`as shown in this figure.
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`
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`In this configuration, when the jointer member 60 is inserted, the green inwardly
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`projecting members 62 slide along the angled end of the blue bayonets 61, forcing
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`the green projecting members 62 outward and the blue bayonets 61 inward and
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`cause the jointer member 60 to draw the flanges 5 toward each other, as illustrated
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`in the figure below:
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`19
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`When the jointer member 60 is pressed into place, the
`green projecting members 62 tend to draw the blue
`bayonets 61toward each other.
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`
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`This, in turn, allows the jointer member 60 to fulfill its purpose, which is to fill the
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`gap between the units to create “pencil-line” joints and a “monolithic” look for the
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`partition. However, reversing the positions of the components as Petitioner argues
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`would not work and would be contrary to the purpose of the jointer member 60 to
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`minimize gaps and to create a “monolithic” look.
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`Petitioner illustrates its proposed modification of Price by modifying Figure
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`3 of Price. Petition at 19. A colored version of Petitioner’s modified Figure 3 is
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`provided below:
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`20
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`Petitioner’s proposed modification would not work. In the modified version
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`(as in the unmodified version), if an installer maneuvers the gypsum boards 8 so
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`that they are at the same distance apart from each other as shown in the figure and
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`then inserts the jointer member 60, the blue bayonets 61 will interfere with the pink
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`projecting members 63. If an installer maneuvers the gypsum boards 8 even
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`further apart and then inserts the jointer member 60, then the blue bayonets 61
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