Trials@uspto.gov Paper 10
`571-272-7822
` Date Entered: February 2, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL INC.,
`Petitioner,
`v.
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`I. INTRODUCTION
`Petitioner, Allsteel Inc., filed a Petition requesting an inter partes
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`review of claims 1, 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
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`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
`provides that an inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`claims 1, 4–7, 9, 10, 14–20, and 25 of the ’901 patent. We do not institute
`an inter partes review of claims 8, 11, 13, and 21–23 of the ’901 patent.
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`A. Related Proceeding
`
`The ’901 patent is involved in the following lawsuit: DIRTT
`Environmental Solutions Ltd. v. Allsteel Inc., No. 1:15-cv-04874 (N. D. Ill.).
`Pet. 1. IPR2015-01690 involves the same patent and same parties.
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`B. The ’901 Patent
`The ’901 patent relates to a reconfigurable wall system. Ex. 1001,
`Abstract. The wall system has at least one module having a front and rear
`surface and vertical end frames disposed on side edges of the module. Id.
`The vertical end frame of one module connects to a vertical end frame of
`another module through a removable connecting strip. Id.
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`Figure 1 is reproduced below.
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`Figure 1 depicts a wall system 10
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` Figure 1 depicts a wall system 10 made up of one or more wall modules
`20. Id. at 4:37–38. Each module 20 includes tiles 18, horizontal stringers 8,
`and a pair of vertical end frames 12. Id. at 4:39–45. A more detailed
`depiction of the horizontal stringers is shown in Figure 9 below.
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`Figure 9 shows a detailed view of a horizontal stringer
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`Each horizontal stringer is spaced apart at intervals along the height of
`the module for strength and rigidity. Id. at 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
`supports 55 are mounted above and below channel portion 41 for holding
`tiles 18. Id. at 6:28–30. Stringers are connected to end frames 12 by
`fasteners, such as threaded screws. Id. at 4:62–63.
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`C. Illustrative Claim
`Claim 1 is the sole independent claim and is reproduced below.
`1. A movable reconfigurable wall system comprising:
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`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
`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
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`second wall module, wall bracket, finishing trim or
`connection post.
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`Ex. 1001, 9:45–10:21.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 4–11, 13–23, and 25 are unpatentable
`based on the following grounds:
`References
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`Basis
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`Challenged Claims
`1, 6, 7, 11, 13,
`and 15–18
`1, 4, 5, 8, and 9
`1, 4, 10, and 19–23
`25
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`Raith1 and EVH2
`Raith and Yu3
`Raith and MacGregor4
`Raith, MacGregor, and Rozier5
`Raith, EVH, and Dixon6
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`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
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`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1277–1279 (Fed. Cir. 2015) (“Congress
`
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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, and made publicly available Sep. 5, 2002 (Ex. 1004)
`(“EVH”).
`3 U.S. Patent No. 6,161,347, issued Dec. 19, 2000 (Ex. 1005) (“Yu”).
`4 U.S. Patent Publication No. 2003/0154673, 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 Jul. 14, 1981 (Ex. 1008) (“Dixon”).
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`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA,”7 and “the standard was properly adopted by PTO
`regulation.”). Under the broadest reasonable construction standard, claim
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes that we construe “horizontal stringer” to mean
`“horizontal member.” Pet. 9–10. Patent Owner disagrees with Petitioner’s
`broad construction and proposes that we construe the term to mean “a
`horizontal structural support that connects opposing vertical end frames of a
`module and that is not a horizontal base for the module.” Prelim. Resp. 7–9.
`Claim 1 already recites that the horizontal stringers are affixed between
`vertical end frames at right and left side edges. Thus, we need not add that
`portion of Patent Owner’s proposed construction that would require a
`stringer to connect opposing vertical end frames, because the claim language
`itself already requires a similar arrangement (e.g., “between vertical end
`frames”). We also disagree that a horizontal stringer should be construed to
`specify that it is not a horizontal base for the module. Such a construction
`would add ambiguity to claim 1, not clarity. For example, it is not clear
`what would be considered a base structure, or how far vertically down a
`panel a horizontal stringer could be strung without being considered part of a
`“base structure.” Moreover, Patent Owner discusses this part of its
`construction in connection with portions of the Specification of the ’901
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`7 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
`(2011) (“AIA”).
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`patent that describes a “base trim,” not a base structure or horizontal base.
`For all of these reasons, we do not adopt the portion of Patent Owner’s
`proposed construction that would require a horizontal stringer to not be a
`horizontal base for the module. We do agree, however, that the broadest
`reasonable interpretation, in light of the specification of the term horizontal
`stringer means structural as opposed to aesthetic. Accordingly, the broadest
`reasonable interpretation of a horizontal stringer is a horizontal structural
`support.
`The parties do not propose any other construction for any other term.
`For purposes of this Decision, we need not construe any limitations of the
`challenged claims.
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`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
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`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 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 Fig. 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.
`EVH describes moveable and demountable wall panel systems. Ex.
`1004, 40. The panel systems may include glass wall panels including left
`and right vertical posts 13 and top and bottom horizontally-extending
`distance channels 9. Id. at 23, 294 (Fig. 2). Glass panels are inserted into
`respective grooves of the vertical posts and distance channels which form a
`rectangular support frame. Id.
`Petitioner relies on Raith to meet 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.” Pet. 15, 25. For that feature, Petitioner
`relies on EVH for its description of glass wall panels inserted (e.g., affixed)
`into respective grooves of the vertical posts and distance channels. Id. at
`20–21, 24–25. Petitioner contends that a person of ordinary skill in the art at
`the time of the invention would have found it obvious to combine the
`distance channels of EVH with Raith to provide a manner of supporting and
`securing the glass panels of Raith. Id. at 25.
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`Patent Owner argues that Raith does not teach a plurality of horizontal
`stringers affixed between vertical end frames or an aesthetic surface that is
`affixed to the stringers as recited in claim 1. Prelim. Resp. 15–22. This
`argument is not persuasive because Petitioner relies on EVH for these
`limitations. See, e.g., Pet. 25–26.
`Patent Owner also argues that Raith teaches away from using the
`horizontal structures disclosed in EVH. Prelim. Resp. 23. A reference does
`not teach away if it merely expresses a general preference for an alternative
`invention but does not “criticize, discredit, or otherwise discourage”
`investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
`(Fed. Cir. 2004). Patent Owner’s arguments (prelim. resp. 25–26) that Raith
`does not invite a person of ordinary skill in the art to use the EVH horizontal
`structures or that Raith works fine as it is are misplaced. These arguments
`are not sufficient to show that Raith criticizes, discredits, or otherwise
`discourages a person of ordinary skill in the art from using the horizontal
`structures of EVH. Nor does Raith’s general discussion of using fewer parts
`amount to discouraging a person of ordinary skill in the art from using
`EVH’s horizontal structures (e.g., distance channels) as Patent Owner
`asserts. Prelim. Resp. 26–27. The result of the combined teachings, as even
`Patent Owner acknowledges, would result in a substitution of one thing for
`another, not necessarily an addition of more parts. See, e.g., id.
`Claim 11 depends directly from claim 1 and includes “a levelling
`system having: a universal foot; a leveller 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 leveller, wherein said leveller
`provides the sole connection between said universal foot and said module.”
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`Ex. 1001, 10:66–11:4. Petitioner relies on EVH’s description of glide
`assemblies 25 mounted to vertical posts 13 of a support frame 23 of a wall
`panel system to meet the claim 11 limitations. Pet. 21, 27–28, 32. In
`particular, Petitioner contends that floor channel 19 and glide assembly 55
`shown in Figures 10–12 of EVH respectively meets the “universal foot” and
`“leveller” limitations. We agree with Patent Owner, however, that Petitioner
`has not accounted for the claimed “structural extrusion” limitation of claim
`11. Prelim. Resp. 28–29. There is no mention in either the Petition or the
`Beaman Declaration of what element in EVH meets the “structural
`extrusion” limitation. As such, Petitioner has failed to comply with the
`requirement that its petition specify where each element of the claim is
`found in the prior art relied upon. 37 C.F.R. § 42.104(b)(4).
`For these reasons, the information presented does not show a
`reasonable likelihood that Petitioner would prevail in establishing that claim
`11, and claim 13 which depends from claim 11, would have been obvious
`over Raith and EVH.
`Claim 17 depends from claim 1 and recites “wherein said at least one
`module includes curved stringers and curved aesthetic surfaces.” Ex. 1001,
`11:36–37. Based on the arguments presented by Petitioner and Patent
`Owner, the parties interpret the “curved stringers” as further limiting the
`horizontal stringers recited in claim 1. See, e.g., Pet. 18; Prelim. Resp. 30–
`31. That interpretation is reasonable because the curved stringers are in
`connection with the “said at least one module” with “horizontal stringers”
`and the Specification of the ’901 patent does not describe curved stringers in
`addition to horizontal stringers. Ex. 1001, 8:56–59. Accordingly, we
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`construe the limitation “curved stringers” to refer to, and further limit, the
`horizontal stringers of claim 1.
`Petitioner contends that Raith describes curved aesthetic surfaces with
`curved stringers at top and bottom of the curved surfaces. But Petitioner
`also relies on EVH for its description of horizontal stringers in combination
`with Raith to meet the curved stringer limitation. Pet. 17–18. In that regard,
`Mr. Beaman opines that a person of ordinary skill in the art would have
`found it feasible and advantageous to use the stringers of EVH to provide for
`affixing the curved panels securely to the Raith-EVH wall module and that it
`would thus follow that the horizontal stringers should also be curved to
`support and secure the curved panels. Ex. 1018 ¶ 120. At this juncture, we
`determine that Petitioner has shown that there is a reasonable likelihood that
`it will prevail in its challenge to claim 17. We are not persuaded by Patent
`Owner’s argument that Raith alone does not teach curved horizontal
`stringers as claimed, because Petitioner does not rely on Raith alone to
`account for the feature. Rather Petitioner relies on Raith in combination
`with EVH to meet the limitation.
`Petitioner also accounts for dependent claims 6, 7, 15, 16, and 18 in
`its Petition. Pet. 24–28, 31–33. Patent Owner does not separately argue any
`of those claims. At this juncture, we determine that there is reasonable
`likelihood that Petitioner would prevail in its challenge to those claims.
`For all of the above reasons, Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertions that claims 1, 6, 7, and 15–18 are
`unpatentable over the combination of Raith and EVH, but has not
`demonstrated a reasonable likelihood of prevailing on its assertions of
`claims 11 and 13 over the combination of Raith and EVH.
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`D. Obviousness of Claims over Raith and Yu
`Petitioner contends that claims 1, 4, 5, 8, and 9 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Raith and Yu. Pet. 33–44. To support
`its contentions, Petitioner provides detailed explanations as to how the prior
`art meets each claim limitation of claims 1, 4, 5, 8, and 9. Id. Petitioner also
`relies upon the Declaration of Joseph J. Beaman, Jr., for support. Ex. 1018.
`Yu describes a space-dividing wall panel system with a plurality of
`base panels serially connectable. Ex. 1005, Abstract. Yu discloses cross
`rails (e.g., Figs. 28 and 29, 200) that have channels (e.g., Fig. 30, 51-5) for
`receiving hook-like projections of connector brackets (Fig. 2, 26) that
`support various wall accessories in the form of furniture components, such
`as a storage cabinet (Fig. 2, 27). Ex. 1005 at 13:65–14:3; 14:51–66; 24:51–
`60; 25:24–40.
`Petitioner relies on Raith to meet 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” of claim 1, and also to meet certain
`limitations of claims 4, 5, 8, and 9. Pet. 33–43. Petitioner contends that
`Raith modified with the cross members of Yu would include horizontal
`stringers and aesthetic surfaces according to claim 1. Petitioner further
`contends that a person of ordinary skill in the art at the time of the invention
`would have found it obvious to combine the cross rail and mounting bracket
`design of Yu with the panel systems of Raith to provide the ability to easily
`attach tiles and for hanging furniture components from the panel system of
`Raith. Id. at 37–38.
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`Patent Owner argues that Raith teaches away from using the
`horizontal structures disclosed in Yu. Prelim. Resp. 34. In particular, Patent
`Owner argues that Raith teaches using fewer parts to construct a panel, and
`therefore, would have discouraged a person of ordinary skill in the art from
`using Yu’s horizontal structures. Prelim. Resp. 34–35. We have addressed
`this argument in the context of the combination of Raith and EVH above,
`and for similar reasons, the argument is not persuasive because the resulting
`combination would result in a substitution of one thing for another, not
`necessarily the addition of parts.
`Patent Owner also argues that it would not have been obvious to add
`Yu’s cross rails to the metal panels of Raith because doing so would result in
`the cross rails being mounted inside the Raith metal panels. Prelim. Resp.
`35. Patent Owner argues that neither would a person of ordinary skill in the
`art want to add Yu’s cross rails to the glass panels of Raith because doing so
`would result in using Yu’s cable tray which would be seen, through the
`glass, which would not be desirable. Patent Owner also argues that it would
`not have been obvious to make the combination because the glass panel in
`Raith would not be able to connect to Yu’s cross rails. Id. at 35–36. These
`arguments are not persuasive. The test for obviousness is what the
`combined teachings of the references would have suggested to a person of
`ordinary skill in the art, not whether one reference may be bodily
`incorporated into the structure of another reference as Patent Owner
`contends. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Patent Owner’s
`arguments are based on a narrow view of Raith and Yu, which do not take
`into account the level of skill in the art, and the expert declaration presented
`by Petitioner.
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`Lastly, we are not persuaded by Patent Owner’s argument that
`because Raith is configured to support separate coverings and hanging
`furniture components, there would have been no motivation to add Yu to
`Raith for these features. Prelim. Resp. 37. We have considered the
`arguments and evidence at this juncture and are not persuaded that
`combining the specific structure of Yu’s cross rails to Raith’s system would
`not have been obvious. “[I]f a technique has been used to improve one
`device, and a person of ordinary skill in the art would recognize that it would
`improve similar devices in the same way, using the technique is obvious
`unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
`417.
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`Petitioner also accounts for dependent claims 4, 5, and 9 in its
`Petition. Pet. 36–43. Patent Owner does not separately argue any of those
`claims. We determine, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
`challenge to claims 4, 5, and 9 on this ground.
`Claim 8 depends on claim 1 and requires that the stringers include a
`cantilever channel stringer having a central horizontally extending channel
`portion with a generally L-shaped slot for receiving and engaging a
`substantially L-shaped hook formed in a wall accessory. The claim also
`requires that the cantilever channel stringer have an upper portion with a tile
`support, a lower portion with a tile support, and a pair of extending webs
`connecting the channel portion to the upper and lower portions. Ex. 1001,
`10:46–54. Petitioner relies on Yu to meet the claim 8 limitations. Pet. 33–
`37, 39, 43.
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`Patent Owner argues that Yu’s mounting brackets 189-5 along with
`cross rails 200 cannot combine to meet the horizontal stringers limitation,
`because the mounting brackets do not extend between and connect the
`vertical frames. Prelim. Resp. 40–41. We are not persuaded by this
`argument because the claims do not require that every portion or component
`of a horizontal stringer, further claimed as the cantilever stringer, extend
`between and connect vertical frames. As long as some portion of the
`“horizontal stringer” is affixed between vertical end frames at right and left
`side edges like Yu’s cross rails then that is sufficient to meet the claim
`limitation.
`Patent Owner additionally argues that Yu’s channel 51, which
`Petitioner relies on to meet the “extending channel portion with a generally
`L-shaped slot” limitation is not L-shaped as claimed. Id. at 41–44. For that
`feature, Petitioner relies on a modified version of Yu Figure 30 reproduced
`at page 36 of the Petition and reproduced below.
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`Petitioner’s modified Yu Fig. 30
`Petitioner contends that the green marking shown above demonstrates
`an L-shaped channel. Pet. 35–36. We have reviewed the Petition and the
`declaration testimony of Mr. Beaman (Ex. 1018 ¶ 155) with respect to how
`Yu allegedly meets the limitation of a generally L-shaped slot for receiving
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`and engaging a substantially L-shaped hook formed in a wall accessory. We
`agree with Patent Owner that Petitioner has not accounted sufficiently for
`this feature. In particular, Petitioner has not explained sufficiently how the
`modified Yu Figure 30 meets the limitation. If, as we understand
`Petitioner’s argument, the longer portion of the L is in space, not defined by
`any boundary, then that is not sufficient to show how the channel portion
`has a generally L shaped slot as claimed. It would be the borders of the
`channel that define the L shaped slot, not some imaginary portion.
`Moreover, to the extent that Petitioner relies on the long part of the L shown
`above to be defined by mounting bracket 189-5 mounted on cross rail 200,
`we agree with Patent Owner that Petitioner has not shown how that top
`portion (defined by mounting bracket 189-5) functions to “receive and
`engage a substantially L-shaped hook formed on a wall accessory.” Prelim.
`Resp. 39. In particular, Petitioner has not directed us to where in Yu bracket
`189-5 engages connector bracket 26. For all of these reasons, Petitioner has
`not demonstrated that there is a reasonable likelihood that it would prevail in
`its challenge to claim 8 on this ground.
`For all of the above reasons, Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertions that claims 1, 4, 5, and 9 are
`unpatentable over the combination of Raith and Yu, but has not
`demonstrated a reasonable likelihood of prevailing on its assertions of claim
`8 over the combination of Raith and Yu.
`
`E. Obviousness of Claims over Raith and MacGregor
`Petitioner contends that claims 1, 4, 10, and 19–23 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Raith and MacGregor. Pet. 44–52.
`To support its contentions, Petitioner provides detailed explanations as to
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`how the prior art meets each claim limitation of claims 1, 4, 10, and 19–23.
`Id. Petitioner also relies upon the Declaration of Joseph J. Beaman, Jr., for
`support. Ex. 1018.
`MacGregor describes a freestanding partition panel with a rigid
`partition frame having vertical side frame members and first and second
`horizontal frame members extending between the vertical side frame
`members that is covered by cover panels. Ex. 1006, Abstract, ¶¶ 5, 6. The
`partition panels may include modular appliance units (flat screen monitor 7,
`power module 8, or storage module 9) installed and supported by the
`intermediate beams and/or horizontal frame members. Id. at ¶¶ 44, 45, 49.
`One such modular appliance unit described is a touchscreen appliance for
`the communication of graphic, video, and audio data. Id. at ¶ 45, Fig. 1C.
`Petitioner relies on Raith to meet 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” of claim 1, and also to meet certain
`limitations of claims 4, 10, and 19–23. Pet. 44–52. Petitioner contends that
`Raith modified with MacGregor would include horizontal stringers and
`aesthetic surfaces according to claim 1. Petitioner further contends that a
`person of ordinary skill in the art at the time of the invention would have
`found it obvious to combine the cross rail and mounting bracket design of
`MacGregor with Raith to provide the ability to easily attach tiles and for
`hanging furniture components from the panel system of Raith. Id.
`Patent Owner’s arguments regarding the combination of Raith and
`MacGregor are similar to the arguments with respect to the combination of
`Raith and EVH or Raith and Yu, such as teaching away, and no reason to
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`combine. Prelim. Resp. 46–50. We have considered these arguments, but
`for similar reasons provided above, we do not find these arguments
`persuasive.
`Claim 21 depends directly from claim 1 and recites “wherein said
`vertical end frame depth is extended to provide a deeper wall.” Ex. 1001,
`12:11–13. Petitioner argues that MacGregor discloses a vertical end frame
`depth that is extended to provide a “deeper wall.” Pet. 46, 47. We have
`reviewed the portions of MacGregor and the Beaman Declaration in support
`of the assertion. We determine that Petitioner has not provided sufficient
`evidence to establish that MacGregor describes extending the vertical end
`frame depth (e.g., Fig. 1, 3) to accommodate appliances as asserted. In
`particular, Petitioner does not direct us to where in MacGregor there is a
`description of extending the vertical side frame. To the extent that either
`Petitioner or Mr. Beaman mean that extending the vertical side frame would
`have been obvious, we do not find any supporting evidence to support such a
`conclusion. Each of claims 22 and 23 directly depends from claim 21. For
`all of these reasons, Petitioner has not demonstrated that there is a
`reasonable likelihood that it would prevail in its challenge to claims 21–23
`on this ground.
`For all of the above reasons, Petitioner has demonstrated a reasonable
`likelihood of prevailing on its assertions that claims 1, 4, 10, 19, and 20 are
`unpatentable over the combination of Raith and MacGregor, but has not
`demonstrated a reasonable likelihood of prevailing on its assertions of
`claims 21–23 over the combination of Raith and MacGregor.
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`F. Obviousness of Claims over Raith, MacGregor, and Rozier
`Petitioner contends that claim 25 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Raith, MacGregor, and Rozier. Pet. 52–55. To
`support its contention, Petitioner provides detailed explanations as to how
`the prior art meets each claim limitation of claim 25. Id. Petitioner also
`relies upon the Declaration of Joseph J. Beaman, Jr., for support. Ex. 1018.
`Claim 25 depends directly from claim 1 and requires a furniture
`system connectable to the wall module with a work surface connectable to
`the stringers. The claim also requires furniture legs connecting to the work
`surface at a first end and connecting to a bolt at a second opposite end
`allowing levelling of the work surface. Ex. 1001, 12:29–36.
`Petitioner relies on MacGregor to meet the limitation of furniture with
`a work surface connectable to a wall module. Pet. 53–54. Petitioner further
`contends that it would be readily understandable from the se