Paper No. 48
`Filed: October 19, 2018
`
`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 IPR2015-01691
`Patent No. 8,024,901
`__________________
`
`
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges
`
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF ADDRESSING NEWLY
`INSTITUTED CLAIMS 8, 11, 13, AND 21-23
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`
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`US.120363123.03
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`
`Filed: October 19, 2018
`
`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 IPR2015-01691
`Patent No. 8,024,901
`__________________
`
`
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges
`
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF ADDRESSING NEWLY
`INSTITUTED CLAIMS 8, 11, 13, AND 21-23
`
`
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`US.120363123.03
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`TABLE OF CONTENTS
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`Claim 8 Is Obvious in View of Raith and Yu. ................................................ 1
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`Claims 11 and 13 Are Obvious in View of Raith and EVH............................ 3
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`I.
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`II.
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`III. Claims 21-23 Are Obvious In View of Raith and MacGregor. .................... 10
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`Newly instituted claims 8, 11, 13, and 21-23 do not add patentably relevant
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`limitations to Claim 1 of the ’901 patent, which the Board has already held is
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`obvious along with every other originally instituted claim. Patent Owner did not
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`argue for the separate patentability of any dependent claim at the Board hearing or
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`in the Federal Circuit appeal, effectively conceding that each claim rises or falls
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`with Claim 1. The newly instituted claims are no different: each adds to Claim 1
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`nothing but conventional features of prior art wall systems according to their
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`known uses. The Board should hold that all challenged claims of the ’901 patent
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`are unpatentable under 35 U.S.C. § 103 for the same reasons and in view of the
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`same prior art combinations first set forth in the Petition and Dr. Beaman’s initial
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`declaration, which are further discussed below.
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`I.
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`
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`Claim 8 Is Obvious in View of Raith and Yu.
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`Claim 8 adds that the horizontal stringers of claim 1 can be configured as
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`“cantilever channel stringers” as follows:
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`Claim 8. The movable reconfigurable wall system of claim 1,
`wherein said stringers include a cantilever channel stringer, said
`cantilever channel stringer having: a central horizontally extending
`channel portion with a generally L-shaped slot, said L-shaped slot
`adapted to receive and engage a substantially L-shaped hook formed
`on a wall accessory; an upper portion having a tile support; a lower
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`portion having a tile support; and a pair of extending webs connecting
`said channel portion to said upper and a lower portion. (Ex. 1001.)
`The Board agreed with Petitioner that Yu discloses nearly every limitation of
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`Claim 8, but denied institution on Claim 8 because, according to the Board,
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`“Petitioner has not directed [the Board] to where in Yu bracket 189-5 engages
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`connector bracket 26.” Petitioner moved for rehearing as to Claim 8 and
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`explained, among other points, that the language of Claim 8 does not require that
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`every surface of the claimed “channel portion having a generally L-shaped slot,”
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`the longer portion of which is defined in Yu by brackets 189-5, to directly engage
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`every portion of the claimed “substantially L-shaped hook formed on a wall
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`accessory.” (Motion for Rehearing at 13-15.)
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`The Board appeared to agree that Claim 8 does not include this requirement,
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`but nonetheless declined to reverse its denial of institution on Claim 8 because,
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`according to the Board, “neither the Petition nor the Rehearing Request show or
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`explain sufficiently how the confines of what Petitioner asserts is the Yu L-shaped
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`slot is adapted to receive and engage a substantially L-shaped hook.” (Order
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`Denying Rehearing at 4.) This conclusion misapprehends or overlooks arguments
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`and evidence set forth in the Petition and in Dr. Beaman’s initial declaration. (Ex.
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`1038 at ¶¶ 5-7.)
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`Specifically, the Petition expressly argued that “it is clear from Yu that
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`the ‘hook like projections,’ or ‘L-shaped hooks’ of Yu’s connector brackets, which
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`support furniture components, are received in the channels 51-5.” (Petition at 35
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`(citing Ex. 1005 at 13:65-14:3;14:51-66; 24:51-60; 25:24-40; Figs. 2, 17A, 28, 30;
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`Ex. 1018, ¶ 155); see also Ex. 1038 at ¶¶ 5-7.) Moreover, the portion of Dr.
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`Beaman’s declaration cited by the Petition—Ex. 1018 ¶ 155—explains with
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`numerous citations to Yu exactly how “Yu further teaches that the L-shaped hooks
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`[labeled 101-4 in Yu] are secured in the channels 51-5” of Yu. (Ex. 1018 ¶ 155
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`(citing Ex. 1005 at 21:32-36, Figs. 19, 20); see also Ex. 1038 at ¶¶ 5-7.)
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`Accordingly, and contrary to the Board’s decision denying rehearing, the Petition
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`and Beaman Declaration clearly show and explain how and where in Yu the
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`claimed “channel portion with a generally L-shaped slot” is “adapted to receive
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`and engage a substantially L-shaped hook.” Fairly considered, the Petition and
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`Beaman Declaration expressly show and sufficiently explain how these elements
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`(and every other element of Claim 8) are disclosed in Yu such that a person of skill
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`would have found Claim 8 to be obvious. For the reasons given above and
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`previously in Petitioner’s Motion for Rehearing and Petition, Claim 8 is obvious.
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`II. Claims 11 and 13 Are Obvious in View of Raith and EVH.
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`
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`Claim 11 (reproduced below) depends from Claim 1 and adds a conventional
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`leveling system, an example of which is expressly disclosed in EVH.
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`11. The movable reconfigurable wall system of claim 1, said system
`further comprising a levelling system having: a universal foot; a
`leveler capable of engaging said universal foot; and a structural
`extrusion to engage surface of said at least one module, said structural
`extrusion connecting to said leveler, wherein said leveler provides the
`sole connection1 between said universal foot and said module.
`The Petition identified the structure from EVH corresponding to those of
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`claim 11, that the corresponding features would have been combined with those of
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`Raith, and identified Dr. Beaman’s initial declaration in support of such
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`combination. (Petition at 21-22, 27-28, and 32). Dr. Beaman explained in his
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`initial declaration how EVH discloses the additional limitations of Claim 11. (Ex.
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`1008 ¶ 98.) Specifically, Dr. Beaman described that EVH discloses glide
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`assemblies mounted to vertical posts of a support frame of a wall panel system.
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`The glide assemblies provide the sole connection between the vertical posts of the
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`panel frame and the floor channel, according to claim 11.
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`The Petition and Dr. Beaman further provided the following excerpted,
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`annotated versions of Figs. 10 and 12 from EVH to illustrate the leveler (i.e.,
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`“glide assembly”) and universal foot (i.e., “floor channel”) features as understood
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`by a person of ordinary skill in the art.
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`1 Petitioner has read the term “sole connection” as best understood and reserves the
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`right to challenge the validity of claim 11 under 35 U.S.C. § 112.
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`As summarized below, the Petition and Dr. Beaman accounted for each
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`element of Claim 11.
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`Claim 11 Element
`a universal foot;
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`a leveler capable of engaging said
`universal foot;
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`structural extrusion to engage surface
`of said at least one module, said
`structural extrusion connecting to said
`leveler,
`wherein said leveler provides the sole
`connection between said universal foot
`and said module.
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`
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`Beaman’s Initial Declaration
`“The glide assemblies are secured to
`floor channels” (Ex. 1018 at ¶ 98.)
`“The glide assemblies are secured to
`floor channels and include threaded
`bolts to displace the support frame
`vertically.” (Ex. 1018 at ¶ 98.)
`“[The] glide assemblies [are] mounted
`to vertical posts of a support frame of
`a wall panel system.” (Ex. 1018 at ¶
`98.)
`“The glide assemblies provide the sole
`connection between the vertical posts of
`the panel frame and the floor channel.”
`(Ex. 1018 at ¶ 98.)
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`The Board misapprehended the Petition and Dr. Beaman’s declaration in
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`stating that “Petitioner has not accounted for the claimed ‘structural extrusion’
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`limitation.” (Institution Decision at 12.) As reproduced above, Dr. Beaman
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`distinctly pointed out that the glide assemblies (leveler) of EVH are mounted to
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`(i.e., “engage”) structural components of the modular wall system, namely,
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`“vertical posts of a support frame,” which are inarguably “structural” in nature (Ex.
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`1018 ¶ 98; see also Ex. 1038 at ¶ 9.) Moreover, the ’901 patent makes clear that
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`the “structural extrusions” of Claim 11 can be, as in EVH as well as one of the
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`embodiments in the patent, one and the same as structural components of the
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`module itself. (Ex. 1001 at 8:6-12 (describing an embodiment of the leveler
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`assembly that is “received into channels formed in the module’s lowermost
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`extrusion” (emphasis added); id. at Fig. 16; Ex. 1038 at ¶¶ 10-11.)
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`
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`To the extent that the Board’s prior decision to deny institution on Claim 11
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`turned on the term “extrusion,” the Board overlooked the totality of Dr. Beaman’s
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`testimony, which makes it clear that a person of skill would understand extrusion
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`as a conventional manufacturing technique that is interchangeable with and
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`“produces essentially the same finished parts” as roll-forming (Ex. 1018 ¶ 109),
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`which is the particular manufacturing technique discussed in Raith. (Ex. 1003 at
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`16:33-38.) Accordingly, the Petition and Dr. Beaman’s initial declaration make
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`clear that, when combined with the vertical structural components of Raith, the
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`leveler system of EVH renders all the limitations of claim 11 obvious to a person
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`of skill. Moreover, Dr. Beaman explained that it would have been “easy for a
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`person of skill to use the EVH glide system with the wall system of Raith” and that
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`a person of skill would have been motivated to do so for “many reasons, including
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`ease of assembly, aesthetics, and safety.” (Ex. 1018 ¶ 99.)
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`The obviousness of the “structural extrusion” limitation of Claim 11 is
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`further supported by the evidence developed in the course of the initial trial, which
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`the Board should consider in reaching a Final Written Decision on Claim 11. See
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`Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367
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`(Fed. Cir. 2016) (“The purpose of the trial in an inter partes review proceeding is
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`to give the parties an opportunity to build a record by introducing evidence.”) In
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`response to questioning by Patent Owner’s counsel, Dr. Beaman further explained
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`his opinion that a person of skill would have understood “roll forming” and
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`“extrusion” as interchangeable manufacturing techniques that produce the same
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`finished structural components as claimed in Claim 11. The relevant testimony is
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`reproduced below:
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`[M]y opinion is, and as I state here, roll-forming and extrusions can be
`interchanged and they're more associated with the volume, how many
`products you're trying to make.
`(Ex. 2003 at 109:3-7.)
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`Moreover, Dr. Beaman also explained in response to Patent Owner’s
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`deposition questions how a person of skill could combine the leveler of EVH with
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`Raith’s structural components:
`
`Q. Okay. And if you turn two more pages to page 51, what parts are
`used in EVH to elevate the glass panel?
`A. It looks -- item -- the bolt.
`Q. Glide bolt 55?
`A. Is it 55? Yeah, glide bolt 55.
`Q. How about glide 53, is that used to help elevate the panel?
`A. That's a glide, yeah, so I think it certainly goes up.
`**********
`Q: So to accomplish what you state in that last sentence, a person of
`skill in the art would need to fasten the distance channel to the vertical
`frame members in Raith, correct?
`A. They might have to. I'm just trying to think if you could put in that
`exact same leveling mechanism. I mean, you'd have to change the
`geometry, I'm sure. I don't know why you couldn't do that.
`Q. Okay. And so is it your opinion that to accomplish that
`combination, a person of skill in the art would take the distance
`channel or a similar structure --
`A. Yes.
`Q. -- it might have slightly different geometry, but similar in nature; is
`that correct?
`A. Yes.
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`US.120363123.03
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`Q. And would fasten that to the vertical frame members of Raith,
`correct?
`A. Well, they could be connected like the panel that's shown in EVH.
`Q. And please describe for me that connection.
`A. Well, it looks like it's -- it looks like there's a connection between
`the glide and the bottom member that goes -- that's inserted inside of
`the end frames.
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`(Id. at 110:7-16; 120:4-121:6.)
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`
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`Accordingly, the evidentiary record developed during trial proceedings
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`further supports and explains Dr. Beaman’s opinion that Claim 11 would have
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`been obvious to a person of skill in view of Raith and EVH. (Ex. 1038 at ¶¶ 12-
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`15.) Notably, Patent Owner submitted no contrary evidence in the initial trial, as
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`Dr. Dix (Patent Owner’s expert) offered no opinions as to Claim 11. Both Dr.
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`Beaman’s initial declaration and the record developed at trial confirm that Claim
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`11 would have been obvious to a person of skill at the time of the invention.
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`
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`Claim 13 depends from Claim 11 and adds a base trim as follows:
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`13. The movable reconfigurable wall unit of Claim 11 further
`comprising a base trim, said base trim attaching to said universal foot.
`The Board initially declined to institute on Claim 13 solely because it did not
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`institute on Claim 11. (Institution Decision at 12.) For its part, Patent Owner has
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`submitted no evidence independently in support of Claim 13. Petitioner and Dr.
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`US.120363123.03
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`Beaman distinctly pointed out that EVH expressly discloses the claimed “base trim
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`attaching to said universal foot.” (Petition at 21-22; Ex. 1018 ¶ 102.) Specifically,
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`Dr. Beaman pointed out that “EVH discloses a base cover removably mounted to
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`the floor channel.” (Ex. 1018 ¶ 102 (citing Ex. 1004 at 20:25-28, 295, 300-302,
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`and 311 at Figs. 3, 10-12, and 23.)) Dr. Beaman further explained that “it would
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`have been further obvious to attach a base trim to the glide system of EVH, and
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`would have been desirable to do so, including for aesthetic reasons such as
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`concealing the leveler from view.” (Ex. 1018 ¶ 103.)
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`
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`In sum, Claims 11 and 13 are obvious in view of EVH combined with Raith
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`according to the evidence presented in the Petition and further developed at trial.
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`Consistent with the other challenged claims of the ’901 patent, none of which
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`Patent Owner has argued are independently patentable, the Board should hold that
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`Claims 11 and 13 are unpatentable.
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`III. Claims 21-23 Are Obvious In View of Raith and MacGregor.
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`
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`Claim 21, which depends from Claim 1, reads:
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`21. The movable reconfigurable wall unit of claim 1, wherein said
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`vertical end frame depth is extended to provide a deeper wall.2
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`
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`The Board initially did not institute trial on Claim 21, reasoning that “[t]o
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`the extent that either Petitioner or Mr. Beaman mean that extending the vertical
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`side frame would have been obvious, we do not find any evidence to support such
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`a conclusion.” (Institution Decision at 20.) Here, the Board again misapprehended
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`Dr. Beaman’s opinion, which distinctly pointed out how MacGregor discloses
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`vertical end frames with extended depth to provide a deeper wall.
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`
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`Specifically, Dr. Beaman emphasized that MacGregor discloses partition
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`frames that are “sufficiently deep to receive one or more modular accessory units”
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`such as integrated storage units and flat screen televisions. (Ex. 1018 at ¶ 196
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`(citing Ex. 1006 ¶ 44, 45, 48, 52, and Figs. 1, 1T, and 1U)). Dr. Beaman further
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`explained that, in considering the cited passages of MacGregor, “a person of skill
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`would readily recognize that MacGregor discloses a vertical end frame depth that
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`is extended to provide a ‘deeper wall.’” (Ex. 1018 ¶ 196.)
`
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`2 Petitioner has addressed the subjective terms “extended” and “deeper” as best
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`understood given the limited disclosure of the ’901 patent and reserves the right to
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`challenge the validity of Claims 21-23 under 35 U.S.C. § 112.
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`US.120363123.03
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`MacGregor clearly teaches, and the Petition and Dr. Beaman clearly
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`identified, vertical end frames that are deep enough to receive substantial
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`multimedia and furniture components such as televisions and storage units (the
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`same type of components discussed in the ‘901 Patent). Nothing further should be
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`required to account for the limitations of Claim 21, especially considering the
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`virtually nonexistent description in the ’901 patent of extended vertical frames or
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`“deeper” walls, which consists of merely three lines and a single figure in
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`specification. (Ex. 1038 at ¶¶ 18-19.) Indeed, the portions of MacGregor in the
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`Petition and in Dr. Beaman’s original declaration are far more illustrative of how a
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`person of skill could construct a deeper wall module by extending the vertical
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`frames than the ’901 patent. (Id. at ¶ 19.) Considering the lack of disclosure
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`relating to these terms in the ’901 patent and the subjective nature of “extend” and
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`“deeper,” the Petition and Beaman have sufficiently pointed out how MacGregor
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`meets these limitations to the extent they are not indefinite under § 112. (Id. at
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`¶ 20.)
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`For Claims 22 and 23, the Petition and Dr. Beaman expressly accounted for
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`the “rear-projection video system” and “integrated storage system” limitations
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`added by Claim 22 and 23, respectively, in MacGregor. (Petition at 47-48; Ex.
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`1018, ¶¶ 195-199.)
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`FAEGRE BAKER DANIELS LLP
`
`By:
`
`/R. Trevor Carter/
`R. Trevor Carter
`Reg. No. 40,549
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`Dated: October 19, 2018
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on October 19, 2018, I
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`caused a true and correct copy of Petitioner’s Supplemental Brief Addressing
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`Newly Instituted Claims 8, 11, 13, and 21-23 to be served via email, as a PDF
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`attachment, on the following:
`
`Chad Nydegger
`cnydegger@wnlaw.com
`
`David Todd
`dtodd@wnlaw.com
`
`Michael J. Frodsham
`mfrodsham@wnlaw.com
`
`
`
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`Dated: October 19, 2018
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`
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`Faegre Baker Daniels LLP
`2200 Wells Fargo Center
`90 South Seventh Street
`Minneapolis, MN 55402-3901
`Telephone: (612) 766-7000
`Facsimile: (612) 766-1600
`
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`US.120363123.03
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`FAEGRE BAKER DANIELS LLP
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`By:
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`/R. Trevor Carter/
`R. Trevor Carter
`Reg. No. 40,549
`
`
`
`
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