IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
`
`v.
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
`
`___________
`
`
`
`Case No. IPR2015-01691
`Patent No. 8,024,901
`Issue Date: September 27, 2011
`
`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
`
`
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
`
`v.
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
`
`___________
`
`
`
`Case No. IPR2015-01691
`Patent No. 8,024,901
`Issue Date: September 27, 2011
`
`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
`
`
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION..................................................................................... 1
`
`II.
`
`THE ’901 PATENT................................................................................... 2
`
`A. Overview of the ’901 Patent ............................................................. 2
`
`B.
`
`Claim Construction .......................................................................... 5
`
`1.
`
`A “horizontal stringer” is “a horizontal member that is
`supported above
`the ground by opposing vertical
`members and that provides structural support to the
`vertical members” .................................................................. 6
`
`III.
`
`PETITIONER’S PRIMARY PRIOR ART REFERENCE ......................... 10
`
`A. Overview of Raith ......................................................................... 10
`
`1.
`
`2.
`
`Raith’s solid panels .............................................................. 11
`
`Raith’s glass panels .............................................................. 13
`
`IV. PETITIONER HAS FAILED TO SHOW THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS IN
`LIGHT OF THE PRIOR ART ................................................................. 14
`
`A.
`
`The Level Of Ordinary Skill in the Art ........................................... 15
`
`B.
`
`Statutory Ground 1: Claims 1, 6, 7, and 15-18 Would Not Have
`Been Obvious over Raith in View of EVH ...................................... 17
`
`1.
`
`2.
`
`Raith does not teach “a plurality of horizontal stringers
`affixed between said vertical end frames” nor an
`aesthetic surface that is “affixed to said stringers” ................. 17
`
`Petitioner has failed to show that it would have been
`obvious to import EVH’s horizontal distance channels
`into Raith ............................................................................. 25
`
`
`
`ii
`
`
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`f)
`
`The disclosure of EVH ............................................... 26
`
`Neither the Petition nor Dr. Beaman provide a
`reason for going so far as to import EVH’s
`horizontal distance channels into Raith ........................ 27
`
`Raith’s reference to “head and base assemblies” is
`not a reason to import EVH’s horizontal distance
`channels into Raith ..................................................... 30
`
`At his deposition, Dr. Beaman expressed doubt
`that even he, an expert, would import EVH’s
`horizontal distance channels into Raith ........................ 31
`
`importing EVH’s
`from
`teaches away
`Raith
`horizontal distance channels into Raith ........................ 33
`
`The new theory of obviousness proffered by Dr.
`Beaman for the first time at his deposition should
`be rejected for procedural and substantive reasons ....... 35
`
`C.
`
`Statutory Ground 2: Claims 1, 4, 5, and 9 Would Not Have
`Been Obvious over Raith in View of Yu ......................................... 38
`
`1.
`
`Petitioner has failed to show that it would have been
`obvious to import Yu’s horizontal cross rails into Raith ......... 38
`
`a)
`
`b)
`
`c)
`
`d)
`
`Disclosure of Yu ........................................................ 39
`
`Neither the Petition nor Dr. Beaman provide a
`reason for going so far as to import Yu’s
`horizontal cross rails into Raith ................................... 40
`
`At his deposition, Dr. Beaman repudiated the
`obviousness theory set forth in the Petition and in
`his declaration ............................................................ 43
`
`The new theory of obviousness proffered by Dr.
`Beaman for the first time at his deposition should
`be rejected for procedural and substantive reasons ....... 45
`
`2.
`
`Even If Petitioner Has Proven Claim 1 Unpatentable for
`
`iii
`
`
`
`
`
`
`
`
`
`Obviousness, It Has Not Done So for Claim 5 ....................... 47
`
`D.
`
`Statutory Ground 3: Claims 1, 4, 10, 19, and 20 Would Not
`Have Been Obvious over Raith in view of MacGregor .................... 49
`
`1.
`
`Petitioner has failed to show that it would have been
`obvious
`to
`import MacGregor’s horizontal cross
`members into Raith .............................................................. 49
`
`a)
`
`b)
`
`c)
`
`d)
`
`Disclosure of MacGregor ............................................ 50
`
`Neither the Petition nor Dr. Beaman provide a
`reason for going so far as to import MacGregor’s
`horizontal cross members into Raith ............................ 50
`
`At his deposition, Dr. Beaman repudiated the
`obviousness theory set forth in the Petition and in
`his declaration ............................................................ 53
`
`The new theory of obviousness proffered by Dr.
`Beaman for the first time at his deposition should
`be rejected for procedural and substantive reasons ....... 55
`
`E.
`
`F.
`
`Statutory Ground 4: Claim 25 Would Not Have Been Obvious
`over Raith in view of MacGregor and Rozier .................................. 58
`
`Statutory Ground 5: Claim 14 Would Not Have Been Obvious
`over Raith in view of EVH and Dixon ............................................ 59
`
`G. Objective Indicia of Nonobviousness .............................................. 59
`
`1. Meeting A Long-Felt Need For Greater Flexibility and
`Customization ...................................................................... 59
`
`2.
`
`3.
`
`Commercial Success ............................................................ 63
`
`Praise By Others .................................................................. 64
`
`V.
`
`PETITIONER’S ATTACK ON THE ’901 PATENT IN THIS
`PROCEEDING IS UNCONSTITUTIONAL ............................................ 65
`
`VI. CONCLUSION ....................................................................................... 65
`
`
`
`iv
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`
`
`Cases
`
`Cooper v. Lee
`(U.S. 15-955) ............................................................................................... 65
`
`Cuozzo Speed Technologies, LLC v. Lee
`(U.S. 15-446) ............................................................................................... 10
`
`InTouch Technologies, Inc. v. VGO Communications,
`751 F.3d 1327 (Fed. Cir. 2014) ............................................................... 36, 57
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................... 27, 38, 47, 58
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .................................................................... 27, 37, 46, 57
`
`Markman v. Westview Instruments, Inc.,
`517 U.S. 370 (1996) ..................................................................................... 10
`
`MCM Portfolio LLC v. Hewlett Packard,
`812 F.3d 1284 (Fed. Cir. 2015) ..................................................................... 65
`
`PPC Broadband, Inc. v. Corning Optical Communications RF LLC,
`815 F.3d 734 (Fed. Cir. 2016) ....................................................................... 64
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..................................................................... 10
`
`Runway Safe LLC v. Engineered Arresting Systems,
`IPR2015-01921, Paper 9 (PTAB Feb. 29, 2016) ............................................ 42
`
`In re Suitco Surface,
`603 F.3d 1255 (Fed. Cir. 2010) ....................................................................... 6
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ....................................................................... 1
`
`
`
`v
`
`
`
`
`
`Other Authorities
`
`37 C.F.R. § 42.100(b).......................................................................................... 6
`
`vi
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`Description
`
`
`
`Exhibit
`No.
`
`2001
`
`2002
`
`2003
`
`Notice of Deposition of Joseph J. Beaman, Jr., Ph.D. (dated Mar. 10,
`2016)
`Decision Instituting Inter Partes Review in IPR2015-01691(dated Feb. 2,
`2016)
`Transcript of Deposition of Joseph J. Beaman, Jr., Ph.D. (dated Apr. 1,
`2016)
`2004 Declaration of Geoff Gosling (dated Apr. 28, 2016)
`Transcript of video clip (with selected screenshots from the video clip)
`for case study of Johnson County Building at
`http://www.youtube.com/watch?v=v76bXwwngnE
`Copy of website for 2010 Manning Innovation Award at
`http://www.manningawards.ca/en/awards/winners/2010/geoff-gosling
`Transcript of video clip (with selected screenshots from the video clip) on
`the website for the 2010 Manning Innovation Award at
`http://www.manningawards.ca/en/awards/winners/2010/geoff-gosling
`Copy of website with criteria for Manning Innovation Award at
`http://www.manningawards.ca/en/apply/scoring-criteria
`2009 Expert Declaration of Rollin C. Dix, Ph.D. (dated Apr. 29, 2016)
`
`2005
`
`2006
`
`2007
`
`2008
`
`
`
`vii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner DIRTT Environmental Solutions Ltd. (“DIRTT”) respectfully
`
`submits this Response to the Petition in Case No. IPR2015-01691 involving inter
`
`partes review of U.S. Patent No. 8,024,901 (“the ’901 patent”).
`
`In the Institution Decision issued on February 2, 2016, the Board denied the
`
`Petition with regards to claims 8, 11, 13, and 21-24, but instituted trial on claims 1,
`
`4-7, 9, 10, 14-20, and 25. Although the Decision concluded that HNI Corporation
`
`and Allsteel Inc. (collectively “Petitioner”) satisfied the reasonable-likelihood-of-
`
`prevailing standard for institution, “there is a significant difference between a
`
`petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution,
`
`and actually proving invalidity by a preponderance of the evidence at trial.”
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016).
`
`This Response demonstrates that Petitioner cannot ultimately prevail under
`
`the burden applicable at trial. With this Response, Patent Owner has provided the
`
`Expert Declaration of Rollin C. Dix, Ph.D. (Ex. 2009), demonstrating that
`
`Petitioner’s theories are incorrect and that Petitioner has not proven that the
`
`claimed invention would have been obvious to a person of ordinary skill in the art
`
`at the time of the invention. Patent Owner has also provided the Declaration of
`
`Geoff Gosling (Ex. 2004), the lead inventor for the ’901 patent, demonstrating that
`
`the claimed invention is better able to meet long-felt needs than ever before, has
`
`1
`
`
`
`
`
`achieved remarkable commercial success, and has received exceptional praise from
`
`the industry. Significantly, this Response also demonstrates that under cross-
`
`examination at his deposition (Ex. 2003), Petitioner’s own expert repudiated each
`
`and every one of the obviousness theories set forth in the Petition. Therefore, the
`
`Board should reject those theories, just as they have been rejected by Petitioner’s
`
`own expert.
`
`II. The ’901 Patent
`
`A. Overview of the ’901 Patent
`
`The ’901 patent relates to reconfigurable wall systems. [Ex. 1001, 1:14-24.]
`
`Wall systems are typically used to partition an office environment into separate
`
`work areas. [Id., 1:21-30.] This partitioning is done by connecting wall modules
`
`together to subdivide the space. [Id.] The modules 20 of the ’901 patent
`
`“comprise a pair of vertical end frames 12…spaced apart by the desired width of
`
`each module.” [Id., 4:39-40.] The modules include horizontal stringers 8 spaced
`
`apart at intervals along the height of the module “for strength and rigidity” and for
`
`supporting tiles 18 made of wood, plastic, metal, glass, etc. to provide customized
`
`aesthetics for the module. [Id., 4:43-46, 4:54-55, 4:64-65.] Figure 1 depicts a wall
`
`module 20:
`
`2
`
`
`
` Tiles 18
` Horizontal stringers 8
` Vertical end frames 12
`
`
`
`
`The horizontal stringers may have structure for releasably attaching tiles 18 to the
`
`
`
`stringers, as shown in Figure 9:
`
` Horizontal stringer 40
` Tiles 18
` Beads 64
` Connector strip 60
`
`
`
`As seen, the horizontal stringers in Figure 9 have beads 64 formed along the edge
`
`of flanges 67, and the tiles 18 have connector strips 60 with flexible arms 62 to
`
`snap-fit with bead 64 so as to releasably attach the tiles to the stringers. [Id., 6:31-
`
`
`
`3
`
`
`
`
`
`37.] This allows individual tiles 18 to be removed without disassembling the entire
`
`wall. [Id., 6:39.] In addition, the horizontal stringers can include a cantilever
`
`channel portion 41 with an L-shaped slot 42 that allows wall accessories to
`
`cantilever out from the stringer. [Id., 4:55-57, 6:22-26.]
`
`The wall system also includes stringers that are adapted to hold a glass pane.
`
`Figures 3 and 4 show an example in which a wall module with tiles 18 is adjacent
`
`to a wall module with glass dividers 14:
`
`
`
`
`
`
`
`Both the end frame 17 and the stringers have notches to engage the vertical and
`
`horizontal edges of the glass divider 14. [Id., 4:47-51, 6:7-15, 7:28-31, Figs. 3, 4,
`
`7, 15.]
`
`4
`
`
`
`
`
`Whether tile-modules or divider-modules, adjacent modules are connected
`
`together with a zipper-like “connecting strip” to create a wall. [Id., 1:65-67.]
`
`Figure 28 shows a top view of the interface between two adjacent modules and
`
`depicts how the strip connects them together:
`
` Tiles 18
` Connecting strip 25
` Arms 30 on zipper 25
` Beads 31 on arm 30
` Vertical end frames 12
` Flanges 23 of frames 12
` Beads 27 of flanges 23
`
`
`
`
`Specifically, end frames 12 include “a pair of rearwardly extending L-shaped
`
`flanges 23 that align vertically with correspondingly positioned and shaped flanges
`
`23 on [an] opposite end frame…so that [they] can be connected together by
`
`connecting strips (“zippers”) 25.” [Id., 5:15-20.] To ensure a secure yet releasable
`
`connection, “each of flanges 23 is formed with a bead 27.” [Id., 5:24-29.] The
`
`connecting strip 25 includes a pair of arms 30 with “a bead 31 that snap fits with
`
`beads 27 on flanges 23 for a secure but releasable connection.” [Id.]
`
`B. Claim Construction
`
`The Petition argues that the term “horizontal stringer” means any “horizontal
`
`member.” [Petition, pp. 9-10.] That construction is incorrect.
`
`5
`
`
`
`
`
`1.
`
`A “horizontal stringer” is “a horizontal member that is
`supported above the ground by opposing vertical members
`and that provides structural support to the vertical
`members”
`
`The Board must give claim terms their “broadest reasonable construction in
`
`light of the specification.” 37 C.F.R. § 42.100(b). Under this standard, a term
`
`“should be read in light of the specification as interpreted by one of ordinary skill
`
`in the art” and any construction must be “consistent with the specification.” In re
`
`Suitco Surface, 603 F.3d 1255, 1260 (Fed. Cir. 2010). Petitioner’s proposed
`
`interpretation is unreasonably overbroad in view of both the understanding of
`
`skilled artisans and the specification.
`
`Petitioner argues that a “horizontal stringer” is nothing more than “a
`
`horizontal member.” [Petition, p. 9.] However, two of the dictionary definitions
`
`cited in the Petition indicate that a “stringer” connects upright posts in a frame, one
`
`indicates that a “stringer” is used as a “support,” and one indicates that it is a
`
`“structural piece.” All of them explain that a “stringer” is used “in a frame” or “in
`
`a framework.” [Petition, p. 9 (citing Ex. 1023 (“A long horizontal member used to
`
`support a floor or to connect uprights in a frame”); Ex. 1022 (“[A] horizontal
`
`timber connecting upright posts in a frame”); Ex. 1024 (“[A] longitudinal
`
`structural piece in a framework, esp. that of a ship or aircraft.”).]
`
`6
`
`
`
`
`
`The specification is consistent with these dictionary definitions, but it adds
`
`additional context. It describes the “horizontal stringers” as follows:
`
`Stringers 8 are horizontally spaced apart at intervals along the height
`
`of the module for strength and rigidity. To support objects,
`
`cantilever channel stringers 40, including a cantilever channel portion
`
`41, are used as shown in FIGS. 8 and 9. Stringers 8 that do not
`
`include channel portion 41 can be used anywhere structure is
`
`required but the channel portion is not required for supporting
`
`objects. For example, the lowest stringer 8a may not include
`
`cantilever channel portion 41. The stringers are connected to end
`
`frames 12 by fasteners, usually threaded screws, in a manner to be
`
`described below.
`
`[Ex. 1001, 4:54-63.] Figure 1 accompanies this textual description and depicts the
`
`horizontal stringers 8 supported above the ground by vertical end frames 12.
`
`The portion of the specification quoted above explains that stringers provide
`
`“strength and rigidity.” As Dr. Dix testifies, this means that the stringers provide
`
`structural support to the vertical frame members and that a horizontal piece of
`
`aesthetic “base trim” is not a “stringer.” [Ex. 2009, ¶ 15.] Likewise, the Institution
`
`Decision concluded that an aesthetic member like a piece of trim does not
`
`constitute a “stringer” [Ex. 2002, p. 8], and Petitioner’s expert, Dr. Beaman,
`
`admitted at his deposition that he agreed with that conclusion [Ex. 2003, 47:21-22].
`
`7
`
`
`
`
`
`Significantly, the specification as quoted above also explains that stringers
`
`are spaced apart “along the height of the module” [Ex. 1001, 4:54-55] and refers to
`
`“the lowest stringer 8a” [id., 4:60-61], which implicitly demonstrates that another
`
`horizontal member lower than stringer 8a is not a “stringer.” In Figure 1, stringer
`
`8a is shown toward the bottom of the module, and a horizontal base connected
`
`across the bottom of the vertical end frames 12 is shown lower than stringer 8a, as
`
`illustrated below:
`
` Tiles 18
` Horizontal stringers 8
` Vertical end frames 12
` Horizontal base not a
`stringer
`
`
`
`
`Because the specification states that stringer 8a is “the lowest stringer” [id., 4:60-
`
`61], it implicitly declares that the horizontal base in Figure 1 is not a stringer, even
`
`though it connects the vertical end frames 12. Dr. Beaman admitted at his
`
`deposition that this structure is not a stringer. [Ex. 2003, 48:17-52:5.] The reason
`
`that the horizontal base is not a stringer is because it is supported by the ground,
`
`8
`
`
`
`
`
`not above the ground by the vertical end frames. [Ex. 1001, 4:54-55; Ex. 2003,
`
`52:8-52:14; Ex. 2009, ¶ 16.] This makes sense because the word “stringer” evokes
`
`a reference to the fact that it is “strung” between (and therefore supported above
`
`the ground by) two other members. [Ex. 2009, ¶ 16.] Thus, the “broadest
`
`reasonable construction in light of the specification” is “a horizontal member that
`
`is supported above the ground by opposing vertical members and that provides
`
`structural support to the vertical members,” not merely a “horizontal member.”
`
`In
`
`its preliminary response, Patent Owner proposed a construction
`
`specifying that a “horizontal stringer” was “not a horizontal base for the module.”
`
`[Paper No. 9, pp. 7-9.] The Institution Decision concluded that this proposal
`
`should not be adopted for two reasons and therefore preliminarily interpreted
`
`“horizontal stringer” to mean “a horizontal structural support.” [Ex. 2002, pp. 7-
`
`8.] First, the Institution Decision reasoned that “it is not clear what would be
`
`considered a base structure.” [Id.] In light of the Board’s criticism, Patent Owner
`
`has revised its proposed construction to specify that a “horizontal stringer” must be
`
`“supported above the ground by opposing vertical members” instead of “not a
`
`horizontal base.” Second, the Institution Decision reasoned that “Patent Owner
`
`discusses this part of its construction in connection with portions of the
`
`Specification of the ’901 patent that describes a ‘base trim,’ not a base structure or
`
`horizontal base.” [Id. at 7-8.] That reasoning was incorrect. As explained above,
`
`9
`
`
`
`
`
`this portion of Patent Owner’s construction is being discussed in connection with
`
`portions of the specification that describe “the lowest stringer 8a” and the
`
`horizontal base shown in Figure 1 [Ex. 1001, 4:60-61, Fig. 1], not the “base trim”
`
`shown in Figure 16 [id. at 2:45-49, 8:7-24].
`
`For the reasons set forth above, Patent Owner’s proposed interpretation is
`
`also the correct interpretation under Markman v. Westview Instruments, Inc., 517
`
`U.S. 370 (1996) and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc).
`
` The Supreme Court has now heard argument in Cuozzo Speed
`
`Technologies, LLC v. Lee (U.S. 15-446) as to the correct claim construction
`
`standard for inter partes review, and a decision will likely be rendered by the end
`
`of June 2016. For the reasons set forth above, neither the Petition’s proposed
`
`construction nor the Institution Decision’s preliminary construction is correct
`
`under the “broadest reasonable construction” standard and certainly not correct
`
`under the Markman / Phillips standard.
`
`III. PETITIONER’S PRIMARY PRIOR ART REFERENCE
`
`A. Overview of Raith
`
`Raith is the primary reference for each of the five statutory grounds set forth
`
`in the Petition on which trial has been instituted. Although Raith relates to
`
`demountable partition systems, the systems of Raith are fundamentally different
`
`from the systems claimed in the ’901 patent.
`
`10
`
`
`
`
`
`Raith discloses “modular structural components [that] may be easily
`
`assembled and disassembled…to create a variety of different screen or partition
`
`systems[.]” [Ex. 1003, 1:10-17.] Raith discloses two types of panels. The first
`
`type is a “solid panel” made of two opposing pieces of sheet metal. [Id., 5:53-57,
`
`Figs. 1, 2, 5.] The second type is a “glass panel” having vertical sheet metal
`
`frames that support a glass pane between them. [Id., 12:5-8, 13:39-41, Figs. 13,
`
`16, 20.] Each type of Raith panel will be summarized below.
`
`1.
`
`Raith’s solid panels
`
`Raith discloses solid panels formed “from a pair of substantially parallel,
`
`spaced-apart metal face plates 11 of a preferably thin gauge sheet metal having
`
`substantially rectangular planar central portions 12 and opposite edge portions 14.”
`
`[Id., 5:53-57, Figs. 1, 2, 5.] Figure 1 shows the flat piece of sheet metal before the
`
`edges have been bent to form the connecting flanges. [Id., 4:10-12, 7:7-11.]
`
`Figure 2 shows the same piece of sheet metal after the edges have been bent to
`
`form the connecting flanges. [Id., 4:13-14.] Figure 5 depicts a complete solid
`
`panel:
`
`11
`
`
`
`
`
` First sheet metal face plate 11
` Second sheet metal face plate 11
` Clip 30
`
`
`
`Once the edge portions of the first and second face plates have been bent to
`
`form flanges, the edge portions of opposing plates are attached using elongate clips
`
`30. [Id., 4:19-22, 5:53-57, 6:29-64.]
`
`Raith further discloses “that the bending and folding of the sheet metal face
`
`plate 11, and their manner of securement together, provides opposite mounting
`
`panel edges 29 which are very strong and capable of serving as structural
`
`supporting members themselves with or without structural posts.” [Id., 6:64-7:4.]
`
`Importantly, Raith does not disclose any horizontal structural supports affixed
`
`between (or supported above the ground by) the vertical folded edges of a solid
`
`panel. Thus, the solid panels of Raith do not use any “horizontal stringers.”
`
`Indeed, the Petition only argues that the glass panels of Raith have stringers.
`
`[Petition, pp.15-16.] And Petitioner’s expert admitted at his deposition that Raith’s
`
`solid panels do not have horizontal stringers. [Ex. 2003, 66:21-67:3, 97:17-98:7.]
`
`12
`
`
`
`
`
`2.
`
`Raith’s glass panels
`
`Turning to the glass panels taught in Raith, Figure 13 shows two types of
`
`glass panels:
`
`The first type of glass panels are full-height glass panel assemblies 220-224. The
`
`second type are chair rail assemblies 248 and 260. Figure 17, reproduced below,
`
`depicts “an exemplary two-way in-line intersection between adjacent glass panel
`
`assemblies 222 and 223.” [Ex. 1003, 13:42-44.]
`
`
`
` Frame panel 233
` Glass pane 232
` Glazing strip 353
` Connector strips 70
`
`
`
`
`“Each glass panel assembly, such as glass panel assembly 223, comprises a pane of
`
`glass…extending between frame panels.” [Id., 12:6-8.] Raith uses “glazing strips
`
`13
`
`
`
`
`
`353” to secure glass panes 232 in the channels 352 along the vertical frame panels.
`
`[Id., 13:47-49; see also 13:38-41.]
`
`Conspicuously absent from Raith is any teaching of a horizontal member
`
`affixed to the glass panels. [See id. at 12:2-8 & 12:15-20 (Fig. 13), 13:18-20 &
`
`13:37-41 (Fig. 16), 13:42-49 (Fig. 17), 14:19-23 (Fig. 21).] Only vertical frame
`
`panels are disclosed as securing the glass pane in place. [Id.] As explained in
`
`more detail below, the horizontal members located beneath the glass pane merely
`
`“support” the glass pane—they are not “affixed” to the pane.
`
`More significantly, Raith discloses that the horizontal members located
`
`beneath the glass panes only “interfit within” channels in the vertical frame panels
`
`adjacent to them. There is no disclosure that they are “affixed” between the
`
`vertical frame panels, nor is there any disclosure that they are supported above the
`
`ground by the vertical frame panels. For all that Raith discloses, those horizontal
`
`members merely rest on the ground and are nothing more than horizontal bases for
`
`the glass panes. Thus, Raith does not disclose that its glass panels use “horizontal
`
`stringers,” let alone horizontal stringers to which an aesthetic surface is “affixed.”
`
`IV. PETITIONER HAS FAILED TO SHOW THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS IN
`LIGHT OF THE PRIOR ART
`
`The Petition argues modifications of Raith based on other references (EVH,
`
`Yu, and MacGregor) to assert that claim 1 is unpatentable for obviousness.
`
`14
`
`
`
`
`
`However, it does so with complete disregard for the way that a person of ordinary
`
`skill would have thought, as evidenced by the Dix Declaration and by the
`
`admissions of Petitioner’s own expert, who repudiated each of the Petitioner’s
`
`obviousness theories at his deposition. As evidenced by the Dix Declaration, the
`
`reasons proffered by the Petition for making its proposed modifications are not
`
`reasons to make those modifications at all, and the Petition ignores Raith’s
`
`teachings to the contrary. Moreover, the Petition does not take into account any
`
`objective evidence of nonobviousness, including the fact that the claimed invention
`
`has achieved remarkable commercial success, has received praise from the
`
`industry, and is better able to meet long-felt needs than prior systems. The Petition
`
`clearly relies on hindsight.
`
`A. The Level Of Ordinary Skill in the Art
`
`Citing Dr. Beaman, the Petition asserts that a person of ordinary skill “would
`
`have had a Bachelor of Science in Mechanical Engineering or have been a
`
`mechanical designer with 3 to 5 years of experience.” [Petition, p. 10.] Patent
`
`Owner accepts this definition. But, as Dr. Dix explains, this is a person who has
`
`just graduated from undergraduate school and is in an entry-level position or has
`
`been working as a general mechanical designer in an apprentice-like position. [Ex.
`
`2009, ¶ 11.] Such a person generally goes about his work by solving problems
`
`given to him by his superiors or identified by him through interaction with
`
`15
`
`
`
`
`
`customers, for example. [Id.] In going about his work, such a person exercises
`
`creativity, but generally tends to make modifications and propose solutions only to
`
`the extent necessary to solve the problem he has been given or to accomplish the
`
`goal that he has set out to achieve. [Id.]
`
`In this case, Dr. Beaman has opined that such a person would have been
`
`motivated to modify Raith as a primary reference. A person of ordinary skill in the
`
`art at the time of the invention would have had the capability of understanding the
`
`scientific and engineering principles pertaining to Raith and would have used
`
`ordinary creativity to improve Raith, but given his relative inexperience and skill
`
`level would have tended only to make modifications to Raith to the extent
`
`necessary to solve a problem or to achieve a particular objective. [Id. ¶ 12.]
`
`Therefore, such a person would have tended to preserve as much of Raith’s
`
`structure and objectives as possible. [Id.] This conclusion is reinforced by one of
`
`the principal objectives of Raith, which was to provide “a unified partition system
`
`comprised of . . . modular structural components which are design and functionally
`
`compatible.” [Ex. 1003, 3:10-15; Ex. 2009, ¶ 12.] A radical change to Raith’s
`
`system could jeopardize the ability of new components to be “design and
`
`functionally compatible” with old components and could require expensive
`
`retooling. [Ex. 2009, ¶ 12.]
`
`16
`
`
`
`
`
`B.
`
`Statutory Ground 1: Claims 1, 6, 7, and 15-18 Would Not Have
`Been Obvious over Raith in View of EVH
`
`The portions of Statutory Ground 1 for which trial has been instituted assert
`
`that Raith in combination with EVH would have rendered claims 1, 6, 7, and 15-18
`
`unpatentable for obviousness. That assertion is incorrect.
`
`Claim 1 requires “a plurality of horizontal stringers affixed between said
`
`vertical end frames” and “an aesthetic surface affixed to said stringers.” [Ex. 1001,
`
`9:62-65.] Raith does not teach the required horizontal stringers, let alone an
`
`aesthetic surface affixed to them. And the Petition fails to meet its burden to prove
`
`that it would have been obvious to modify Raith to incorporate these elements.
`
`1.
`
`Raith does not teach “a plurality of horizontal stringers
`affixed between said vertical end frames” nor an aesthetic
`surface that is “affixed to said stringers”
`
`As noted above, the Petition does not argue that Raith’s solid panels have
`
`horizontal stringers, and Petitioner’s expert admitted at his deposition that they do
`
`not. [Ex. 2003, 66:21-67:3, 97:17-98:7.] Instead, the Petition suggests that Raith’s
`
`glass panels have horizontal stringers. [Petition, pp. 15-16.] That suggestion is
`
`incorrect.
`
`
`
`At his deposition, Dr. Beaman was asked which structures in Raith’s glass
`
`panels constitute horizontal stringers. His response was to point to the structures
`
`17
`
`
`
`
`
`shown in Figure 13 in yellow below [Ex. 2003, 71:23-72:19, 72:20-73:3, 78:12-
`
`79:19, 83:2-84:15, 85:4-86:9]:
`
`
`
`
`
`The figure on the left is an excerpt from Figure 13 showing glass panel assembly
`
`222, with yellow color coding for the base structure and top frame structure in that
`
`assembly. The figure on the right shows chair rail assembly 260, with yellow color
`
`coding for the chair rail assembly 263 and for the structure above the glass panel
`
`264. However, as for the structures on the left, Dr. Beaman could only state that
`
`“the glass panel has bottom and top structures that appear to be horizontal in form,
`
`structural bases for the frame,” but he admitted that “I don’t think [Raith] actually
`
`comes out and says it anywhere.” [Ex. 2003, 71:23-72:19.] And as for the
`
`18
`
`
`
`
`
`structures on the right, Dr. Beaman could only testify that Raith shows “a structure
`
`at the top that appears to be a stringer, and then maybe underneath the glass it
`
`appears to be a stringer, but I’m not sure it’s conclusive.” [Ex. 2003, 72:23-73:3.]
`
`
`
`The other disclosures of Raith show that the structures identified by Dr.
`
`Beaman are not “horizontal stringers,” let alone structures “affixed” to the glass
`
`panes. For example, Figure 17 depicts “an intersection between two glass panel
`
`assemblies” [Ex. 1003, 4:61-64]:
`
` Frame panel 233
` Glass pane 232
` Glazing strip 353
` Connecting strip 70
` Unidentified part
`
`
`
`
`The yellow-colored part is what Dr. Beaman identified at his deposition as a
`
`“horizontal stringer.” [Ex. 2003, 85:4-86:9.] This part has no reference number
`
`and is not discussed in Raith. However, Figures 20, 21, and 22, which illustrate a
`
`similar horizontal support, provide insight into the unidentified yellow part in
`
`Figure 17. Those figures indicate that the yellow par
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
