Trials@uspto.gov Paper 44
`571-272-7822
` Date Entered: January 19, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL INC.,
`Petitioner,
`v.
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under
`
`35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`that Petitioner has shown by a preponderance of the evidence that claims 1,
`4–7, 9, 10, 14–20, and 25 of U.S. Patent No. 8,024,901 B2 are unpatentable.
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`A. Procedural History
`Petitioner, Allsteel Inc., filed a Petition requesting an inter partes
`review of claims 1, 4–11, 13–23, and 25 of U.S. Patent No. 8,024,901 B2
`(Ex. 1001, “the ’901 patent”). Paper 1 (“Pet.”). Patent Owner, DIRTT
`Environmental Solutions Ltd., filed a Preliminary Response. Paper 9
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, on February 2, 2016, we instituted an inter partes review of
`claims 1, 4–7, 9, 10, 14–20, and 25, pursuant to 35 U.S.C. § 314. Paper 10
`(“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 24 (“PO Resp.”)) and Petitioner filed a Reply (Paper 30
`(“Pet. Reply”)). Petitioner filed a Motion to Exclude (Paper 34 (“Pet. Mot.
`to Exclude”)) paragraph 4 of Exhibit 2004 and Exhibit 2005 in its entirety.
`Patent Owner filed an Opposition to the Motion to Exclude (Paper 39 (“PO
`Exclude Opp.”)), and Petitioner filed a Reply (Paper 40 (“Pet. Exclude
`Reply”)).
`Patent Owner filed a Motion to Exclude (Paper 36 (“PO Mot. to
`Exclude”)) portions of Exhibit 1030 and Petitioner’s Reply. Petitioner filed
`an Opposition to the Motion to Exclude (Paper 38 (“Pet. Exclude Opp.”)),
`and Patent Owner filed a Reply (Paper 41 (“PO Exclude Reply”)).
`An oral hearing was held on October 13, 2016, and a transcript of the
`hearing is included in the record (Paper 43 (“Tr.”)).
`
`B. Related Proceeding
`
`The ’901 patent is involved in the following lawsuit: DIRTT
`Environmental Solutions Ltd. v. Allsteel Inc., No. 1:15-cv-04874 (N. D. Ill.).
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`Pet. 1. The ’901 patent is the subject of three pending reissue applications:
`(1) 14/032,931, filed September 20, 2013; (2) 14/305,819, filed June 16,
`2014; and (3) 14/681,874, filed April 8, 2015. Papers 4, 6.
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`C. The ’901 Patent
`The ’901 patent relates to a reconfigurable wall system. Ex. 1001,
`Abstract. The wall system has at least one module having a front and rear
`surface and vertical end frames disposed on side edges of the module. Id.
`The vertical end frame of one module connects to a vertical end frame of
`another module through a removable connecting strip. Id.
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`Figure 1 is reproduced below.
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`Figure 1 depicts a wall system 10
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`Figure 1 depicts a wall system 10 made up of one or more wall modules 20.
`Id. at 4:37–38. Each module 20 includes tiles 18, horizontal stringers 8, and
`a pair of vertical end frames 12. Id. at 4:39–45. A more detailed depiction
`of the horizontal stringers is shown in Figure 9 below.
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`Figure 9 shows a detailed view of a horizontal stringer
`
` Each horizontal stringer is spaced apart at intervals along the height of
`the module for strength and rigidity. Ex.1001, 4:54–55. Stringer 40,
`referred to as cantilever channel stringer, may include channel portion 41 to
`support objects. Id. at 4:55–57. Channel portion 41 includes an L-shaped
`slot 42 adapted to receive L-shaped hook 45 formed on a wall accessory 47.
`Id. at 6:22–26. Stringer 40 also includes tile support 55 on upper 51 and
`lower 53 portions of the stringer. Id. at 6:26–30. Web 49 connects channel
`portion 41 to upper and lower portions 51 and 53 respectively. Id. at 6:22–
`28. Tile support 55 is mounted above and below channel portion 41 and is
`the connection point for the tiles 18 that are mounted above and below
`channel portion 41. Id. at 6:28–37. Tiles include connector strip 60 which
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`in turn includes a pair of opposed flexible arms 62 to snap-fit with an arrow
`shaped bead 64 along the edge of flanges 67 which extends the length of the
`upper and lower portions 51 and 53 of the stringer. Id. Stringers are
`connected to end frames 12 by fasteners, such as threaded screws. Id. at
`4:62–63.
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`D. Illustrative Claim
`Claim 1 is the sole independent claim and is reproduced below.
`1. A movable reconfigurable wall system comprising:
`a) at least one wall module having a front and rear surface and
`top, bottom, right side and left side edges, said at least one
`wall module having:
`i) a vertical end frame disposed adjacent to each of said right
`and left side edges, each vertical end frame having a first
`vertically extending flange and a spaced apart second
`vertically extending flange thereon, each of said first
`vertically extending flange and said second vertically
`extending flange having a beaded portion, the beaded
`portion on one of said first vertically extending flange or
`said second vertically extending flange extending toward the
`front surface of the wall module and the beaded portion on
`the other of said first vertically extending flange or said
`second vertically extending flange extending toward the rear
`surface of the wall module;
`ii) a plurality of horizontal stringers affixed between said
`vertical end frames at said right and left side edges; and
`iii) an aesthetic surface affixed to said stringers; and
`b) a removable connecting strip having a pair of spaced apart
`flexible arms, each arm having a beaded portion thereon, the
`beaded portion of one of said arms being adapted to connect
`releasably to the beaded portion of one of said first vertically
`extending flange or said second vertically extending flange
`on said vertical end frame and the beaded portion of the
`other of said arms being adapted to connect releasably to the
`beaded portion of a corresponding opposed vertically
`extending flange on a separate vertical end frame of a
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`second wall module, a wall bracket, a finishing trim or a
`connection post to hold one of said first vertically extending
`flange or said second vertically extending flange and said
`opposed vertically extending flange together, the beaded
`portions of said first vertically extending flange or said
`second vertically extending flange and said opposed
`vertically extending flange fitting inside the arms of said
`connecting strip to hold said first vertically extending flange
`or said second vertically extending flange and said opposed
`vertically extending flange together thereby releasably
`connecting said at least one wall module to the other of said
`second wall module, wall bracket, finishing trim or
`connection post.
`Ex. 1001, 9:45–10:21.
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`Challenged Claims
`1, 6, 7, and 15–18
`1, 4, 5, and 9
`1, 4, 10, 19, and 20
`25
`14
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`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 1, 4–7, 9, 10, 14–20,
`and 25 on the following grounds:
`
`Basis
`References
`§ 103(a)
`Raith1 and EVH2
`§ 103(a)
`Raith and Yu3
`§ 103(a)
`Raith and MacGregor4
`§ 103(a)
`Raith, MacGregor, and Rozier5
`§ 103(a)
`Raith, EVH, and Dixon6
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`1 U.S. Patent No. 4,438,614, issued Mar. 27, 1984 (Ex. 1003) (“Raith”).
`2 Publicly available file contents for U.S. Application 10/027,872, published
`as US 2002/0121056 A1, and made publicly available Sept. 5, 2002
`(Ex. 1004) (“EVH”).
`3 U.S. Patent No. 6,161,347, issued Dec. 19, 2000 (Ex. 1005) (“Yu”).
`4 U.S. Patent Publication No. 2003/0154673 A1, published Aug. 21, 2003
`(Ex. 1006) (“MacGregor”).
`5 U.S. Patent No. 5,881,979, issued Mar. 16, 1999 (Ex. 1007) (“Rozier”).
`6 U.S. Patent No. 4,277,920, issued July 14, 1981 (Ex. 1008) (“Dixon”).
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`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Under the broadest
`reasonable interpretation, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Only terms which are in controversy need
`to be construed, and only to the extent necessary to resolve the controversy.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). It is improper to add an extraneous limitation into a
`claim, i.e., one that is added wholly apart from any need for the addition to
`accord meaning to a claim term. See, e.g., Hoganas AB v. Dresser Indus.,
`Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v.
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`“horizontal stringer”
`In the Decision on Institution, based on the arguments presented by
`Petitioner in the Petition and by Patent Owner in its Preliminary Response,
`we interpreted the above quoted claim 1 term to mean “a horizontal
`structural support.” Dec. 8. Patent Owner argues that the interpretation is
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`incorrect, and that “horizontal stringer” means “a horizontal member that is
`supported above the ground by opposing vertical members and that provides
`structural support to the vertical members.” PO Resp. 6–10.7 Petitioner
`agrees with our interpretation (see, e.g., Pet. Reply 18 (arguing that the
`ordinary meaning of “horizontal stringer,” is a “horizontal structural
`support”)), and further argues that at the very least the “above the ground”
`part of Patent Owner’s proposed interpretation should be rejected (id.).
`We begin with the language of claim 1, the sole independent claim.
`Claim 1(a)(i) recites a wall module having a vertical end frame disposed
`adjacent to each of the right and left side edges of the wall module (“vertical
`end frames”). Claim 1(a)(ii) recites a plurality of horizontal stringers affixed
`between said vertical end frames at said right and left side edges, and (a)(iii)
`recites an aesthetic surface affixed to said stringers. There is nothing else in
`claim 1 that further limits the horizontal stringers, or otherwise describes the
`meaning of that term. Importantly, there is nothing in claim 1, or any claim
`dependent thereon, that describes that the horizontal stringers are supported
`above the ground. Nor does claim 1 specify that the horizontal stringer
`provide structural support to vertical end frames.
`Patent Owner directs attention to the following paragraph from the
`specification of the ’901 patent in support of its proposed interpretation:
`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 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
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`7 Patent Owner relies on the testimony of Dr. Rollin C. Dix (Ex. 2009) in
`support of its arguments.
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`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.
`Ex. 1001, 4:54–63.
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`Patent Owner argues that the portion of the specification reproduced
`above explains that the stringers provide strength and rigidity. PO Resp. 7.
`Patent Owner also argues that the above quoted portion explains that
`stringers are spaced apart along the height of the module and refers to the
`lowest stringer 8a, which implicitly demonstrates that another horizontal
`member lower than stringer 8a is not a stringer, such as a base. Id. at 8.
`Patent Owner reasons that because the specification states that stringer 8a is
`the lowest stringer, it implicitly declares that the horizontal base in Figure 1
`is not a stringer, even though it connects the vertical end frames 12. Id. at 8–
`9. The reason that the horizontal base is not a stringer, Patent Owner
`contends, is because it is supported by the ground, not above the ground by
`the vertical end frames. Id. (citing Ex. 1001, 4:54–55; Ex. 2003, 52:8–
`52:14; Ex. 2009 ¶ 16).
`We determine that a horizontal stringer provides structural support,
`like we did in the Institution Decision. We do not agree with Patent Owner
`that the term necessitates reading into the claim the additional language that
`the horizontal member be supported above the ground or that the structural
`support provided by the horizontal member be to the vertical members. The
`first proposed addition to the claim language—that the horizontal member
`be supported above the ground—has nothing to do with the structure or
`function of the horizontal member, but rather the placement of the horizontal
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`member. We find no reason to add the additional orientation limitation to
`the claims.
`Moreover, and with respect to the above the ground feature Patent
`Owner seeks to add to the claim, the passage that Patent Owner directs
`attention to is an example or embodiment of what is claimed. That passage
`is equivocal at best, and does not indicate that Patent Owner disclaimed
`having a horizontal stringer on the ground. Indeed, that same passage states
`that horizontal stringers that do not include channel portion 41 (for hanging
`things off of the horizontal stringer –– see Figure 9 above) can be used
`anywhere structure is required. A horizontal stringer affixed between two
`vertical end frames that is on the ground could be used where such structure
`is required to support an aesthetic surface and is within the scope of the
`claimed invention.
`We are not persuaded that a horizontal structure affixed between two
`vertical end frames, supported by the ground, and not above the ground, is
`not within the scope of the broadest reasonable interpretation of “horizontal
`stringer.” We do not give much weight to Dr. Dix’s testimony in that
`regard. For example, he testifies that a “horizontal structural support that is
`resting on the ground would also not qualify as a ‘horizontal stringer’
`because it is supported by the ground, not above the ground by vertical end
`frames.” Ex. 2009 ¶ 16. Dr. Dix’s testimony, however, is based on a
`narrow reading of the above passage. He does not explain, for instance, why
`a person having ordinary skill in the art would have disregarded the
`description that the horizontal stringer can be used anywhere structure is
`required. Clearly, structure would be required for a tile mounted or affixed
`to a horizontal stringer at the bottom of a completed wall. See, e.g., Ex.
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`1001, Figs 2, 17. Yet, neither Patent Owner nor Dr. Dix account sufficiently
`for “structure required” description in the cited passage. A reasonable
`reading of the passage is that it is the horizontal stringer that provides the
`“structure required” to support the aesthetic surface for example, such as a
`tile panel affixed to the horizontal stringer. See, e.g., Ex. 1001, 6:28–37,
`Fig. 9. It is of no moment that something else in addition to the vertical end
`frames support the horizontal stringer, such as the ground. In that on-the-
`ground position, the horizontal stringer would still function to support an
`aesthetic surface.
`For all of the above reasons, we decline Patent Owner’s invitation to
`interpret the claimed horizontal stringers as “a horizontal member that is
`supported above the ground by opposing vertical members and that provides
`structural support to the vertical members.” Instead, we interpret the term
`“horizontal stringer” to mean “a horizontal structural support.”8
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`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
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`8 This interpretation is consistent with the dictionary definitions cited in the
`Petition, and discussed in the Patent Owner Response. See, e.g., Pet. 9–10;
`PO Resp. 6.
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259, 1262.
`We find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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`C. Obviousness of Claims over Raith and EVH
`Petitioner contends that claims 1, 6, 7, 11, 13, and 15–18 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Raith and EVH. Pet.
`11–33. To support its contentions, Petitioner provides explanations as to
`how the prior art meets each claim limitation. Id. Petitioner also relies upon
`a Declaration of Joseph J. Beaman, Jr., who has been retained as an expert
`witness by Petitioner for the instant proceeding. Ex. 1018.
`Raith
`Raith describes a demountable interior partition system as shown in
`Figures 13 and 17 below. Ex. 1003, 1:9–10; Fig. 13.
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`Figure 13 of Raith shows a partition layout
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`Figure 17 of Raith shows a section taken from line 17–17 of Figure 13
`illustrating an intersection between two glass panel assemblies
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`Referencing Figures 13 and 17 above, Raith describes glass panel
`assemblies 222, 223, frame panels 233, and an elongated plastic connector
`strip 70. Id. at 13:42–49; Figs. 13, 17.
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`EVH
`EVH describes moveable and demountable wall panel systems. Ex.
`1004, 40. Figure 2 of EVH is reproduced below.
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`Figure 2 of EVH showing a wall panel
`The panel systems may include glass wall panels including left and
`right vertical posts 13 and top and bottom horizontally-extending distance
`channels 9 and 11. Id. at 23, 294 (Fig. 2). Glass panels are inserted into
`respective grooves of the vertical posts and distance channels which are
`connected to one another to form a rectangular support frame. Id.
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`Claim 1
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`Discussion
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`Petitioner relies on Raith to meet all of the claim 1 elements, with the
`exception of “a plurality of horizontal stringers affixed between said vertical
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`end frames at said right and left side edges” and “an aesthetic surface affixed
`to said stringers.” Pet. 15, 25. Although the sole independent claim 1 is
`lengthy, Petitioner distills the elements of claim 1 into four structural
`elements, and further illustrates per the following chart, how each of those
`four claimed elements is met by Raith:
`’901 Claim Limitation
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`Exemplary components from
`Raith
`Glass panel assemblies 222, 223
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`“wall module”
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`“vertical end frames”
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`Frame panels 233
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`“vertically extending flange[s]”
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`“connecting strip”
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`J-shaped flanges of mounting edges
`350
`Elongated plastic connector strips
`70
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`Pet. 12. We have reviewed the Petition and the supporting evidence to
`which we are directed as to how Raith meets all of the claim 1 limitations
`with the exception of “a plurality of horizontal stringers affixed between said
`vertical end frames at said right and left side edges” and “an aesthetic
`surface affixed to said stringers.” Id. at 12–33. We are persuaded by
`Petitioner’s showing, and adopt it as our own, that Raith describes a wall
`module, vertical end frames, vertically extending flanges, and a connecting
`strip, along with the claimed structural and functional language associated
`with those elements, as recited in claim 1. Id.
`For the “plurality of horizontal stringers affixed between said vertical
`end frames at said right and left side edges” and the “aesthetic surface
`affixed to said stringers” limitations, Petitioner relies on EVH for its
`description of glass wall panels (aesthetic surface) inserted (e.g., affixed)
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`into respective grooves of distance channels 9, 11 (e.g., horizontal stringers
`which are connected to vertical end frames) as seen above in Figure 2 and
`described on page 23 of EVH. Pet. 20–21, 24–25.
`We have reviewed the Petition and supporting evidence to which we
`are directed as to how EVH meets the claim 1 limitations of “a plurality of
`horizontal stringers affixed between said vertical end frames at said right and
`left side edges” and “an aesthetic surface affixed to said stringers.” Id. We
`are persuaded by Petitioner’s showing, and adopt it as our own, that EVH
`describes “a plurality of horizontal stringers affixed between said vertical
`end frames at said right and left side edges” and “an aesthetic surface affixed
`to said stringers.”
`Petitioner contends that a person having ordinary skill in the art at the
`time of the invention would have found it obvious to combine the distance
`channels of EVH (claim 1 horizontal stringers) with Raith to provide a
`manner of supporting, and complete the securing of, the glass panels of
`Raith. Pet. 25 (citing Ex. 1018 ¶ 95). Petitioner further explains that Raith
`already shows channels for receiving glass panels in vertical end frames, and
`use of EVH’s horizontal distance channels, which include grooves or
`channels for receiving the glass panels, would have been an obvious
`selection for the “head and base assemblies” of Raith. Id. at 25–26 (citing
`Ex. 1018 ¶ 95). Petitioner further contends that such a combination would
`be desirable as a manner of supporting the glass panels of Raith and readily
`achievable by a person of ordinary skill. Id. at 26. Petitioner argues that a
`person of ordinary skill in the art would have found the challenged claims to
`be a “predictable use of prior art elements according to their established
`functions.” Pet. 11 (citing KSR, 550 U.S. at 417).
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`Notwithstanding Patent Owner’s arguments, including Patent Owner’s
`objective evidence of nonobviousness, which we address below, we are
`persuaded by Petitioner’s showing, which we adopt as our own, that claim 1
`is unpatentable based on the combination of Raith and EVH for the reasons
`provided by Petitioner. If a feature has been used to improve one device,
`and a person of ordinary skill in the art would have recognized that it would
`improve a similar device in that field or another, implementing that feature
`on the similar device is likely obvious. KSR, 550 U.S. at 417. For a patent
`claim that claims a structure known in the prior art that is altered by the mere
`substitution of one element for another known in the field, the combination
`must do more than yield a predictable result. Id. at 416. Here, a person of
`ordinary skill in the art would have recognized that the addition of EVH’s
`distance channels as, for example, the head and base assemblies of Raith,
`would have improved the modular wall system of Raith to achieve the
`predictable result of providing better support and securing of glass panels.
`Ex. 1018 ¶ 95.
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`Patent Owner’s Contentions
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`Patent Owner does not dispute that Raith in combination with EVH
`describe all of the elements of claim 1 even with respect to Patent Owner’s
`narrow proposed interpretation of “horizontal stringer.” PO Resp.9; Tr.
`27:4–8. Patent Owner contends, however, that Petitioner has failed to show
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`9 Patent Owner argues that Raith does not describe horizontal stringers. PO
`Resp. 17–25. The argument is moot, because Petitioner does not rely on
`Raith to meet the horizontal stringers limitation. Dec. 10; Pet. Reply 5; Tr.
`26:19–24.
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`that it would have been obvious to import EVH’s horizontal distance
`channels into Raith. PO Resp. 25–38.
`We first address Patent Owner’s argument that Raith’s reference to
`“head and base assemblies” is not a reason to import EVH’s horizontal
`distance channels into Raith. PO Resp. 30–31. This argument pertains to
`the following reproduced Raith passage:
`This invention relates to a demountable interior partition
`system, components therefor, a method of making such
`components, and more particularly to a unified partition system
`wherein readily manufactured, modular structural components
`may be easily assembled and disassembled with various head and
`base assemblies to create a variety of different screen or partition
`systems, and still more particularly to such a partition system
`with accessory supporting capabilities.
`
`Ex. 1003, 1:9–17. Patent Owner argues that Petitioner and Dr. Beaman
`mistakenly rely on the above passage as a motivation for seeking out and
`combining other head and base assemblies not disclosed in Raith. PO Resp.
`30. Patent Owner argues this is a misreading of Raith and that a person of
`ordinary skill in the art at the time of the invention would have understood
`the above reference to “various head and base assemblies” is to those
`disclosed in Raith, and is not an invitation to go find other “head and base
`assemblies.” Id. at 30–31 (citing Ex. 2009 ¶ 20). In particular, Patent
`Owner argues that Raith’s “glass panel assemblies,” “chair rail assemblies,”
`“full-height door unit assemblies,” “partial-height door unit assemblies,”
`“curved panel assemblies,” “end filler panel assemblies,” and other
`assemblies are the assemblies to which Raith is referring. Id. at 31 (citing
`Ex. 1003, 11:54–12:34; Ex. 2009 ¶ 20).
`
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`Patent Owner’s argument is not supported by sufficient evidence.
`First and foremost, missing from all of the descriptive assemblies are the
`words head and base. In other words, we do not know why a person having
`ordinary skill in the art at the time of the invention would have understood
`“partial-height door assemblies,” for example, to be a head or base
`assembly. The testimony to which we are directed in that regard is
`conclusory without explanation. Ex. 2009 ¶ 20. We give such testimony
`little or no weight. 37 CFR § 42.65(a).
`Moreover, there are other passages in Raith that bely Patent Owner’s
`argument that Raith itself does not suggest using something else that is not
`disclosed in Raith as Dr. Dix opines and Patent Owner argues. In particular,
`Raith describes the following:
`In any event, whether roll formed or formed otherwise, the
`relatively few modular components fit together in an almost
`endless variety of high or low screens or full height partitions.
`Moreover, the components may all have modular hanging
`capability for accessories and are readily compatible with
`existing partition systems.
`
`
`Ex. 1003, 16:38–44 (emphasis added). The above passage would have
`conveyed to a person of ordinary skill in the art that the described modular
`components “are readily compatible with existing partition systems.” Thus,
`this passage supports the combination of “other head and base assemblies”
`from other existing partition systems, like EVH’s distance channels with the
`modular components of Raith as asserted by Petitioner. Yet, Patent Owner
`does not discuss, or apparently take into account this teaching. For these
`reasons, we are not persuaded that Dr. Beaman’s testimony (Ex. 1018 ¶ 95)
`that it would have been obvious to replace the base and head assemblies of
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`Raith with the distance channels of EVH, is not a reason to import EVH’s
`distance channels into Raith.10
`Patent Owner acknowledges that Petitioner provides a reason for
`modifying Raith with EVH’s horizontal distance channels (to provide a
`manner of supporting and securing the glass panels of Raith), but Patent
`Owner faults Petitioner for using hindsight to arrive at the claimed
`invention. PO Resp. 27 (citing Ex. 1018 ¶ 78). It is clear from Dr.
`Beaman’s declaration that his reference to “the ‘affixing’ limitation of claim
`1” (Ex. 1018 ¶ 78), is short hand for addressing the limitation in dispute, as
`opposed to basing his testimony on hindsight reasoning as Patent Owner
`asserts (PO Resp. 27). We do not find that portion of Dr. Beaman’s
`declaration that Patent Owner criticizes to be based on hindsight, especially
`in light of other portions of Dr. Beaman’s testimony. See, e.g., Ex. 1018 ¶
`95. Patent Owner’s hindsight argument is not based on the totality of Dr.
`Beaman’s declaration with respect to the combination of Raith and EVH, but
`rather is based on one isolated phrase, taken out of context. Moreover, and
`as indicated above, we determine that Petitioner has articulated sufficient
`reasoning with a rational underpinning as to why one of ordinary skill in the
`art would have combined the horizontal stringers (distance channels)
`described in EVH with the modular wall system described in Raith.
`
`
`10 To the extent that Patent Owner disagrees that EVH’s distance channel
`cannot be a base assembly in Raith because it would be supported by the
`ground as opposed to being above the ground (see, e.g., PO Resp. 19), such
`disagreement is based on a narrow interpretation of “horizontal stringer”
`which we do not adopt as explained above in the claim interpretation
`section. See supra Section II. A.
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`Patent Owner argues that the structural support provided by EVH’s
`distance channels would be unnecessary in Raith because Raith’s panels
`already have structure that provides structural support, and therefore, at most
`a person having ordinary skill in the art would have imported only the
`grooves from EVH’s distance channels. PO Resp. 28–29 (citing Ex. 2009 ¶¶
`17–18). We understand Patent Owner to argue that because Raith already
`has a horizontal structure, albeit the details of which are not clearly shown, it
`would not have been obvious to import yet another entire horizontal
`structure into Raith. Rather, a person having ordinary skill in the art would
`have incorporated only a portion of EVH’s horizontal structure, e.g., the
`grooves in the distance channels into the existing horizontal structure of
`Raith.
`Patent O