Filed: July 21, 2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`
`ALLSTEEL INC.
`Petitioner
`
`
`v.
`
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner
`
`__________________
`
`Case IPR2015-01691
`Patent No. 8,024,901
`__________________
`
`
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE
`UNDER 35 U.S.C. § § 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`US.107262596.04
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`
`ALLSTEEL INC.
`Petitioner
`
`
`v.
`
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner
`
`__________________
`
`Case IPR2015-01691
`Patent No. 8,024,901
`__________________
`
`
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE
`UNDER 35 U.S.C. § § 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`US.107262596.04
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Patent Owner’s Admissions Have Narrowed the Parties’ Dispute to a
`Minute Issue ..................................................................................................... 2
`
`The Minute Issue Remaining Is Whether the Creativity Exercised by a
`Person of Ordinary Skill Would Be Limited to the Combinations
`Proposed by Petitioner ..................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Law of Obviousness Does Not Constrain a Person of Skill
`to Bodily Incorporate Features of One Reference into Another ........... 7
`
`The Law of Obviousness Does Not Constrain the Creativity of
`a Person of Ordinary Skill to “Preserving as Much of Raith” as
`Possible ................................................................................................ 11
`
`Dix Confirmed that a Person of Ordinary Skill Would Readily
`Be Able to Come Up with Combinations that Meet Every
`Limitation of Claim 1 .......................................................................... 12
`
`Beaman Disagrees with Dix’s Artificially Limited View of a
`Person of Skill ..................................................................................... 14
`
`III.
`
`Patent Owner’s Claim Construction Arguments Should Be Rejected .......... 15
`
`IV. Patent Owner’s Additional Argument Regarding Claim 5 Lacks Merit ....... 19
`
`V.
`
`Patent Owner’s Secondary Considerations Evidence Should Be Given
`No Weight ...................................................................................................... 20
`
`
`
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`US.107262596.04
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`-ii-
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`TABLE OF AUTHORITIES
`
`
`
`FEDERAL CASES
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................. 18, 19
`
`Page(s)
`
`E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
`849 F.2d 1430 (Fed. Cir. 1988) ........................................................................... 19
`
`Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd.,
`122 F.3d 1040 (Fed. Cir. 1997) ........................................................................... 12
`
`In re DBC,
`545 F.3d 1373 (Fed. Cir. 2008) ........................................................................... 22
`
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................. 23
`
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ............................................................................. 21
`
`In re Keller,
`642 F.2d 413 (CCPA 1981) ........................................................................... 2, 7, 8
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) ............................................................................. 7
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 421, 82 USPQ2d at 1397 ............................................................. 12
`
`Ormco Corp. v. Align Tech.,
`463 F.3d 1299 (Fed. Cir. 2006) ........................................................................... 22
`
`Orthopedic Equip. Co. v. United States,
`702 F.2d 1005 (Fed. Cir. 1983) ............................................................................. 7
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ........................................................................... 19
`
`
`US.107262596.04
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`-iii-
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`
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`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) ........................................................................... 22
`
`FEDERAL STATUTES
`
`35 U.S.C. § 103 .................................................................................................. 11, 12
`
`REGULATIONS
`
`35 C.F.R. § 42.23(a) ................................................................................................... 2
`
`OTHER AUTHORITIES
`
`Apple Inc. v. DSS Tech. Mgmt., Inc.,
`IPR2015-00369, 2016 WL 3382361 (June 17, 2016) ........................................... 2
`
`B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC,
`IPR2014-01510, 2016 WL 1082726 (Mar. 18, 2016) ........................................... 2
`
`Terumo Bct, Inc. v. Noble House Grp. Party Ltd.,
`IPR2015-00379, 2016 WL 3476906 (June 24, 2016) ........................................... 2
`
`
`
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`US.107262596.04
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`-iv-
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`In response to the Board’s decision to grant inter partes review of Claim 1
`
`of the ’901 patent on three separate grounds, Patent Owner concedes that the prior
`
`art teaches the very point of novelty (the beaded connection of Claim 1) that Patent
`
`Owner added and argued in the face of repeated obviousness rejections. This
`
`concession alone speaks volumes about the fragility of Patent Owner’s non-
`
`obviousness arguments. And Patent Owner concedes much more. Patent Owner
`
`does not argue that any limitation of Claim 1 is missing from any of the
`
`obviousness grounds. And Patent Owner admits that a person of skill would be
`
`motivated to combine the references, just not in ways that result in a wall systems
`
`that meet all elements of claim 1 based on Patent Owner’s claim construction.
`
`Despite conceding that all elements of claim 1 are met in Petitioner’s
`
`proposed combinations and making affirmative arguments about how a person of
`
`skill would combine these references, Patent Owner continues to argue for the
`
`patentability of claim 1 by focusing on two arguments, neither of which have a
`
`basis in law: (1) a claim construction argument that “stringers” must not contact
`
`the ground to be “stringers” and (2) obviousness arguments that a person of
`
`ordinary skill would be limited to bodily incorporating references into one another,
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`even though obviousness is based on, “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
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`-1-
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`reference.” (Ex. 2002 at 15 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).).
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`Finally, Patent Owner presents purported evidence of secondary considerations
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`that is irrelevant because it lacks any nexus to the ’901 patent and is based on
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`testimony provided by one of Petitioner’s employees who admits to having no
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`knowledge whatsoever about the features or market share of other movable wall
`
`products. In short, Patent Owner’s response and declarants only confirm that the
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`instituted claims of the ’901 patent are invalid for obviousness.
`
`I.
`
`Patent Owner’s Admissions Have Narrowed the Parties’ Dispute to a
`Minute Issue
`
`When a Patent Owner does not contest material facts asserted in a Petition,
`
`the Board “consider[s] Patent Owner to have admitted those aspects of these
`
`grounds of unpatentability.” B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC,
`
`IPR2014-01510, 2016 WL 1082726, at *17 (Mar. 18, 2016) (citing 35 C.F.R. §
`
`42.23(a)); see also, e.g., Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369,
`
`2016 WL 3382361, at *16 (June 17, 2016).
`
`Here, Patent Owner does not contest—and therefore admits—nearly every
`
`fact underlying the obviousness grounds presented by the Petition and instituted by
`
`the Board.
`
`First, Patent Owner does not argue that the prior art references on which the
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`Board instituted review are not analogous art to the ’901 patent and Patent Owner’s
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`technical expert, Dr. Dix, agreed at his deposition that the ’901 patent as well as
`
`Raith, EVH, Yu, and MacGregor all relate to movable wall systems. (Ex. 1030 at
`
`21:14-20.) And Patent Owner’s declarants conceded that the prior art includes
`
`structures that provide the same functionality as that in Claim 1, including
`
`connector strips for adjoining adjacent wall modules and horizontal structural
`
`supports for affixing aesthetic components to the wall system. (Ex. 1030 at 24-25;
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`Ex. 1031 at 74-78 (agreeing that DIRTT’s walls, which are covered by Claim 1,
`
`include many of the same features as those disclosed in EVH; see also Ex. 1004 at
`
`242-243).
`
`Second, neither Patent Owner nor Dix contend that Raith, a reference that is
`
`common to all three grounds of unpatentability for claim 1, fails to disclose the
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`limitations from claim 1, in bold type below, that were the sole points of novelty
`
`during prosecution and relate to the beaded flange and connector strip features:
`
`1. A movable reconfigurable wall system comprising:
`
`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;
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`US.107262596.04
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`-3-
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`
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`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 second wall module, wall bracket, finishing trim or
`connection post.
`
`
`(Ex. 1001 at Claim 1.) Patent Owner’s decision not to contest that Raith discloses
`
`these limitations is remarkable because Patent Owner was forced to add in
`
`response to repeated obviousness rejections in the original examination. (Ex. 1012
`
`at 41-42.)
`
`Patent Owner only disputes that Raith discloses the stringer-related
`
`limitations of Claim 1, i.e., “a plurality of horizontal stringers affixed between said
`
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`vertical end frames at said right and left side edges; and . . . an aesthetic surface
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`affixed to said stringers.” (Paper 24 at 17.) Indeed, Patent Owner makes a lengthy
`
`claim construction argument about “horizontal stringers” and then argues that
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`Raith does not disclose the stringer-related limitations in light of this claim
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`construction (Paper 24 at 5-10, 17-25). But this argument is beside the point: as
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`the Board recognized, Petitioner does not rely on Raith for the stringer-related
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`limitations. (Institution Decision at 10, 14, 19.) Instead, for the three grounds of
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`unpatentability of claim 1, Petitioner relies on EVH, Yu, and MacGregor,
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`respectively, to meet the stringer-related limitations, as the Board also understood.
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`(Id.) And Patent Owner does not contend that EVH, Yu, or MacGregor fail to
`
`disclose the stringer-related limitations of claim 1, even if the Board were to adopt
`
`Patent Owner’s claim construction positions. Thus, Patent Owner that each set of
`
`references (Raith/EVH; Raith/Yu; Raith/MacGregor), taken as a whole, disclose
`
`every element of Claim 1. And except for Claim 5, addressed below, Patent
`
`Owner does not separately argue that any of the instituted dependent claims are
`
`non-obvious, thereby conceding that they all rise or fall with Claim 1.
`
`Moreover, Patent Owner agrees that a person of skill would combine the
`
`references. (E.g., Ex. 1030 at 144 (“[A] person of ordinary skill would have made
`
`the modifications that I suggested, yes, rather than the ones that Dr. Beaman
`
`suggested.”) Indeed, Dix testified to multiple ways that a person of skill would
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`have been able to incorporate, for example, the horizontal stringers from EVH into
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`the Raith system. (Ex. 1030 at 39; id at 54-55.)
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`Accordingly, the parties’ remaining dispute over whether Claim 1 is obvious
`
`is quite narrow: Patent Owner and Dix argue that a person of skill in the art would
`
`stop just short of creating a combined assembly that meets the stringer-related
`
`limitations of claim 1.
`
`II. The Minute Issue Remaining Is Whether the Creativity Exercised by a
`Person of Ordinary Skill Would Be Limited to the Combinations
`Proposed by Petitioner
`
`
`
`Patent Owner purports to “accept [Petitioner’s] definition” of a person of
`
`ordinary skill in the art (Paper 24 at 15), which is based on Beaman’s opnion in his
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`opening declaration. However, Patent Owner and Dix place unwarranted
`
`constraints on the creativity that a person of skill would exercise particularly in
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`light of Dix’s testimony confirming that a person of skill would readily be able
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`combine the stringer-related features of EVH, Yu, or MacGregor into the Raith
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`system. (Ex. 1030 at 54-55 (Dix confirming that his senior mechanical
`
`engineering students could attach the EVH, Yu, MacGregor, or any other
`
`horizontal stringer “to the Raith connecting system with rivets, adhesive, nuts and
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`bolts, pressure fit, self-tapping screws, brazing, [and] welding, among other
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`methods.”.) The artificial limits Patent Owner places on a person of skill to
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`combine the stringer references with Raith result from misunderstandings of the
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`law of obviousness and incorrect factual assumptions about a person of skill’s
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`creativity. Ex. 1032 at ¶¶ 5-13.
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`A.
`
`The Law of Obviousness Does Not Constrain a Person of Skill to Bodily
`Incorporate Features of One Reference into Another
`A fundamental principle of obviousness law is that “[t]he test for
`
`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference; nor is it that the claimed
`
`invention must be expressly suggested in any one or all of the references. Rather,
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`the test is what the combined teachings of the references would have suggested to
`
`those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; see also In re
`
`Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
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`determination of obviousness based on teachings from multiple references does not
`
`require an actual, physical substitution of elements.”). Indeed, the Board relied on
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`this principle in determining that Patent Owner’s arguments against institution as
`
`to Claim 1 were “not persuasive.” (Institution Decision at 15 (citing Keller), see
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`also id. at 19-20.)
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`
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`Nonetheless, Patent Owner and Dix went about their obviousness analysis in
`
`a manner that expressly violates this well-settled principle.
`
`Q. So what you’re doing in your analysis is you’re looking, for
`example, at a physical embodiment of the Raith reference, Right?
`
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`US.107262596.04
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`And then you’re looking at a physical embodiment of the EVH
`reference, for example, and you’re looking at how you would take the
`physical structures of EVH and potentially put them into Raith and
`analyzing to what extent a person of ordinary skill would do that.
`That’s the analysis, right?
`
`A.
`
`That’s correct.
`
`
`(Ex. 1030 at 83; see also id. at 82)
`
`Accordingly, Dix’s analysis is based on the incorrect premise that the
`
`relevant person of skill begins with a physical embodiment of Raith, as though he
`
`or she was working at a company that manufactured Raith walls, as the “primary
`
`reference” and then considers how specific elements of other references might be
`
`physically incorporated into Raith while “preserv[ing] as much of Raith’s structure
`
`and objectives as possible.” (Ex. 2009 at 8-9; see also id. at 18 (opining that “a
`
`person of ordinary skill in the art at the time of the invention, attempting to
`
`improve Raith, would not have made such an extraordinary departure from Raith’s
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`primary system”); id. at 22 (same); id. at 26 (same); Ex. 1032 at ¶¶ 6-13.)
`
`
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`Because Patent Owner’s arguments are based on a legally incorrect bodily
`
`incorporation analysis, they are just as unpersuasive as they were when Patent
`
`Owner made them at the institution phase. For example, with regard to EVH,
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`Patent Owner actually concedes the well-known nature of the claim features,
`
`noting EVH teaches “a person of ordinary skill would have viewed the use of
`
`grooves in the distance channels of EVH as merely teaching the use of a well-
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`known feature for securing the horizontal edges of a glass pane.” (Paper 24 at 29
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`(citations omitted).) However, Patent Owner argues, based on Dix’s declaration,
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`that while a person of skill may have “modif[ied] Raith to incorporate the grooves
`
`shown in the distance channels of EVH . . . into the panels of the Raith system” he
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`or she would not have “further import[ed] the horizontal distance channels from
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`EVH into the Raith system.” (Paper 24 at 28.) Similarly with respect to the Raith
`
`and Yu combination, Patent Owner argues, that a person of skill may have
`
`“modif[ied] Raith to incorporate the tiles and associated snap-fit type connections
`
`shown in Yu” but would not “substitute entirely new structural elements, such as
`
`the cross rails, from Yu into the Raith system.” (Paper 24 at 41.) Finally, with
`
`respect to the Raith and MacGregor combination, Patent Owner argues that a
`
`person of skill may have “incorporate[d] the cover panels and associated
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`connections described in MacGregor (such as openings 15-20 and corresponding
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`clips on the cover panels)” but would not “substitute entirely new structural
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`elements such as the cross members from MacGregor into the Raith system.”
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`(Paper 24 at 51.) Each of these arguments answers the wrong question. The
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`obviousness inquiry does not focus on how a person of skill might physically
`
`incorporate features of one reference into another. Rather, it looks at “what the
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`combined teachings of the references would have suggested.” (Institution Decision
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`at 15; Ex. 1032 at ¶¶ 3-4.) In answer to that question, Patent Owner and Dix
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`concede that the combined teachings of Raith/EVH, Raith/Yu, and
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`Raith/MacGregor include every limitation of Claim 1, and that a person of skill
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`would be motivated, and would be able, to combine teachings from these
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`references. (Ex. 1032 at ¶¶ 15-24.)
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`Patent Owner also suggests that Petitioner’s own obviousness contentions
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`are limited to specific arguments about how a person of skill would physically
`
`combine references—arguments which Patent Owner then states that Beaman
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`“expressed doubt” over or “repudiated” at his deposition. (Paper 24 at 31-32, 43-
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`44, 53-54; see also, e.g, Ex. 1030 at 127, 129; Ex. 1032 at ¶¶ 25-26). But unlike
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`Patent Owner and Dix, Petitioner and Beaman did not analyze obviousness using
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`the incorrect bodily incorporation test. (Ex. 1032 at ¶ 3-4.) Accordingly, Patent
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`Owner’s attempted reframing of Petitioner’s obviousness arguments as narrow
`
`bodily incorporation arguments, and further asserting that Beaman introduced
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`“new” theories at his deposition, is unfounded.1 Petitioner’s and Beaman’s
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`obviousness contentions in this matter have always been informed by a correct
`
`
`1 Patent Owner’s assertions that Beaman introduced new theories at his deposition
`are based on a plainly incorrect understanding of Beaman’s analysis, which
`correctly looked at the prior art “as a whole.” Moreover, the testimony from
`Beaman that Patent Owner labels as “new theories” was given by Beaman fairly in
`response to Patent Owner’s questions and merely expounded on his existing
`opinions, as he stated.
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`view of the law, which requires analysis of the combined teachings of the prior art
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`as a whole. (Ex. 1032 at ¶ 3-4.)
`
`B.
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`The Law of Obviousness Does Not Constrain the Creativity of a Person
`of Ordinary Skill to “Preserving as Much of Raith” as Possible
`Patent Owner’s theories rely extensively on the reasoning that a person of
`
`ordinary skill “would have tended to preserve as much of Raith’s structure and
`
`objectives as possible,” which the “as a whole” inquiry required in an obviousness
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`analysis and performed by Beaman. 35 U.S.C. § 103; (Ex. 1018 at ¶ 28; Ex. 1032
`
`at ¶¶ 3-4). “A person of ordinary skill in the art is also a person of ordinary
`
`creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82
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`USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82
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`USPQ2d at 1397. Moreover, “the ‘person of ordinary skill in the art’ is a
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`theoretical construct used in determining obviousness under § 103, and is not
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`descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk
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`Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997). Dix admitted
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`his analysis was improperly limited in this manner.
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`Q. And is the analysis reflected in your declaration here limited to
`analyzing what a person of skill would do within the confines of the
`principles of the Raith system?
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`A. That was the way I understood the object of our -- of ‘our’
`meaning my report, to analyze the operations or the decisions of one
`of ordinary skill in the art with primary reference to Raith and,
`secondarily, reference to all the other patents. That’s the way I
`proceeded, yes.”
`
`
`(Ex. 1030 at 154; see also id. at 129 (Dix confirming that in his view the
`
`person of skill is in the “Raith manufacturing environment” and is using
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`“Raith’s . . . company’s manufacturing technology.”)
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`C. Dix Confirmed that a Person of Ordinary Skill Would Readily Be Able
`to Come Up with Combinations that Meet Every Limitation of Claim 1
`At his deposition, Dix was presented with a hypothetical that far more
`
`closely approximates the analysis that a person of ordinary skill here would
`
`perform in light of the various prior art references. In the hypothetical, Dix was
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`asked to consider a scenario in which his senior mechanical engineering students
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`were tasked with designing from scratch a movable wall system that has
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`“horizontal structural components” and “a connecting strip method for joining
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`adjacent wall modules.” (Ex. 1030 at 28.) Also, Dix’s senior design students were
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`given the prior art to “give [them] ideas.” (Id.)
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`In response to this hypothetical, Dix repeatedly confirmed that, within the
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`realm of possible designs that his students would come up with are the exact
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`combinations that Dix testifies in his report would be beyond the limitations of a
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`person of skill. Specifically, Dix confirmed that “it would be well within [his
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`students’] competency to design their own horizontal structural support to pair with
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`the connecting strip system of Raith,” and that, in doing so “they could use
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`something like Yu; they could use something like EVH; [and] they could use
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`something like MacGregor.” (Id. at 54.) Dix testified that designing such a
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`horizontal structural member would not have required his students to come up with
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`“creative ideas” because “we’re just talking about different geometries . . . based
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`on what manufacturing method they chose to use.” (Id. at 53; see also id. (“I think
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`the students are a bit more creative than being restricted to the details of any
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`specific cross-rail system . . . .”). In addition to the horizontals of EVH, Yu, and
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`MacGregor, Dix testified that as of August 2004, his students also may have used
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`other well-known horizontal structural supports paired with the Raith connecting
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`strip system. (Id. at 55-57.) Dix confirmed that his students, as of 2004, could
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`attach whatever horizontal structural member they came up with to the Raith
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`connecting system “with rivets, adhesive, nuts and bolts, pressure fit, self-tapping
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`screws, brazing, welding, among other methods.” (Id. at 55, 58.) Finally, Dix
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`confirmed that his students would readily be able to affix a pane of glass (i.e., an
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`“aesthetic surface” in the ’901 patent) to the horizontal structural member using
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`several methods. (Id. at 59-62.)
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`This testimony from Dix confirms that a person of skill could, in view of the
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`prior art, readily create a movable wall system that includes every limitation of
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`Claim 1. (Ex. 1032 at ¶ 15, 16, 22, 23.) Dix does not contend that the EVH, Yu,
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`or MacGregor stringers do not meet the stringer-related limitations of Claim 1 and
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`concedes that his students would readily be able to use these stringers with the
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`Raith connection system—even going so far as to say that, in doing so, “we’re not
`
`talking about creativity.”
`
`D.
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`Beaman Disagrees with Dix’s Artificially Limited View of a Person of
`Skill
`Beaman disagrees with the limitations Dix places on a person of ordinary
`
`skill. According to Beaman, who, like Dix, is a professor of mechanical
`
`engineering, “a recent mechanical engineering graduate, falling within the scope of
`
`a person of ordinary skill in this situation, would not be limited by manufacturing
`
`constraints imposed by their industry in exercising their creativity. (Ex. 1032 at ¶
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`12.)
`
`* * *
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`
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`Dix’s analysis suffers from two related mistakes: (1) that an obviousness
`
`inquiry looks at whether one would bodily incorporate features of one piece of
`
`prior art into a physical embodiment of another; and (2) that a person of skill in the
`
`art would not consider the teachings of the prior art as a whole, but would be
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`constrained in his or her creativity to by the need to “preserv[e]as much of Raith”
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`as possible.” Once these mistakes are corrected, even Dix agrees that a person of
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`US.107262596.04
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`-14-
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`skill (or even someone with slightly less skill, such as a senior mechanical
`
`engineering student) would have readily created a movable wall system meeting all
`
`of the limitations of Claim 1 in view of the prior art.
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`III. Patent Owner’s Claim Construction Arguments Should Be Rejected
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`
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`
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`Patent Owner asks the Board to construe the term “horizontal stringer” as “a
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`horizontal member that is supported above the ground by opposing vertical
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`members and that provides structural support to the vertical members.” (Paper 24
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`at 6.) Importantly, this construction has no bearing on whether the references that
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`Petitioner relies on for the stringer-related limitations (EVH, Yu, and MacGregor)
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`disclose horizontal stringers: they do, even under Patent Owner’s construction
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`Patent Owner makes no argument to the contrary, and Dix specifically confirmed
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`that the horizontal members of EVH, Yu, and MacGregor are attached to vertical
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`structures, provide structural support, have aesthetic surfaces attached, and are
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`above the ground. (Ex. 1030 at 85-87, 124.) Instead, Patent Owner offers this
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`construction for two reasons, each of which is only marginally relevant to the
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`Board’s analysis of obviousness here, if at all.
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`First, Patent Owner seeks its construction of “horizontal stringer” to give it
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`ammunition to argue that Raith does not meet the horizontal-stringer limitations of
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`Claim 1. (See, e.g., Paper 24 at 24 (“There is no disclosure that [Raith’s]
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`US.107262596.04
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`horizontal structures are supported above the ground.).) But as was clear to the
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`Board at the institution phase, Petitioner is not relying on the horizontal structures
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`of Raith for the stringer-related limitations of Claim 1.
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`Second, Patent Owner seeks its construction of “horizontal stringer” to
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`support an element of its legally flawed obviousness analysis, discussed above,
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`about how a person of skill would bodily incorporate the stringer-related references
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`(EVH, Yu, and MacGregor) into Raith. As Patent Owner’s argument goes, using
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`its arguments about the Raith/EVH combination as an example, a person of skill
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`would not incorporate the entire stringers from EVH into Raith, but instead would
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`“at most . . . have modified Raith to incorporate the grooves shown in the distance
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`channels of EVH . . . into the panels of the Raith system.” (Paper 24 at 28.) By
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`combining Raith with EVH in this way, a person of skill would have created a
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`modified Raith system that, according Patent Owner, “would still not satisfy the
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`requirements of Claim 1” (Paper 24 at 29 (citing Ex. 2009 (Dix Declaration))
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`because the Raith horizontal members are not “supported above the ground” as
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`required by Patent Owner’s proposed claim construction. (Ex. 2009 at ¶ 17.).
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`
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`Moreover, the Board already rejected Patent Owner’s proposed construction
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`of “horizontal stringer” at the institution phase, where Patent Owner’s construction
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`was functionally identical to the construction it now offers. At the institution
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`phase, Patent Owner argued that a “horizontal stringer” according to Claim 1 could
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`not be a “horizontal base for the module.” (Paper 9 at 7.) The Board declined to
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`read this limitation into “horizontal stringer” because “such a construction would
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`add ambiguity to [C]laim 1, not clarity.” (Institution Decision at 7.) Now Patent
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`Owner wants to construe “horizontal stringer” to include the requirement that such
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`structures be “above the ground.” This suggestion suffers from the same
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`ambiguity as Patent Owner’s first attempt at construing this limitation, and should
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`be similarly rejected.
`
`
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`Patent Owner’s construction is incorrect under the appropriate standard here:
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`broadest reasonable construction standard. Cuozzo Speed Techs., LLC v. Lee, 136
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`S. Ct. 2131, 2146 (2016). Patent Owner’s only argument that “above the ground”
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`should be read into the definition of “horizontal stringer” is that Figure 1 of the
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`’901 patent depicts some horizontal component of an embodiment of the ’901
`
`patent below a horizontal structure that the specification calls “the lowest stringer
`
`8a.” (Paper 24 at 8-9.) This, according to Patent Owner, “implicitly” means that
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`“another horizontal member lower than stringer 8a is not a stringer.” (Paper 24 at
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`8.) Patent Owner then makes the further inferential leap that “[t]he reason that the
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`horizontal base is not a stringer is because it is supported by the ground, not above
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`the ground by the vertical end frames.” Of course, the most obvious flaw in this
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`argument is that the ’901 patent never discusses what is depicted below “lowest
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`stringer 8a” in Figure 1, so it is pure speculation to make assertions about what it is
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`US.107262596.04
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`or whether it meets the other requirements of a stringer—namely that it provide
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`structural support. Patent Owner’s argument is essentially an argument that the
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`inventors acted as their own lexicographer in adding the “above the ground”
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`requirement to the ordinary meaning of “horizontal stringer,”i.e., “horizontal
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`structural support.” But such speculation is the opposite of the “reasonable clarity,
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`deliberateness
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