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 DECLARATION OF JOSEPH J. BEAMAN, JR.
`
`ALLSTEEL EXHIBIT 1032
`Allsteel v. DIRTT Environmental; IPR2015-001691
`
`
`_________________
`
`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 DECLARATION OF JOSEPH J. BEAMAN, JR.
`
`ALLSTEEL EXHIBIT 1032
`Allsteel v. DIRTT Environmental; IPR2015-001691
`
`
`
`Introduction and Summary of Opinion
`
`1.
`
`This declaration is in reply to Patent Owner’s Response in Case No.
`
`IPR2015-001691. I have previously opined on the patent in this case, and I
`
`incorporate by reference my statements and opinions of my previous declaration.
`
`Ex. 1018. In addition to the documents listed in Appendix B of Ex. 1018, I have
`
`also considered the following documents for this report: (1) Patent Owner’s
`
`Response (Paper 24); (2) Declaration of Rollin C. Dix, Ph.D in Support of the
`
`Patent Owner’s Response (Ex. 2009); (3) Declaration of Geoffrey Gosling in
`
`Support of the Patent Owner’s Response (Ex. 2004); (4) Deposition Transcript of
`
`Rollin C. Dix, Ph.D (Ex. 1030); and (5) Deposition Transcript of Geoffrey Gosling
`
`(Ex. 1031).
`
`2.
`
`In this report, I address the Patent Owner’s Response and Dr. Dix’s
`
`opinions presented in his report and in his deposition.
`
`Legal Standards
`
`3.
`
`I have not been asked to offer an opinion on the law; however, as an
`
`expert assisting the Board in determining patentability, I understand that I am
`
`obliged to follow existing law as stated in my previous declaration. (Ex. 1018 at
`
`¶¶ 26-35.) I understand that one aspect of the legal test for obviousness under 35
`
`U.S.C. § 103 is “[t]he test for obviousness is not whether the features of a
`
`
`
`1
`
`
`
`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, 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 413, 425 (C.C.P.A. 1981) (Paper 10 at 15).
`
`4. My analysis of the obviousness issues in this case is fully consistent
`
`with this principle, as I have never understood the obviousness test to require an
`
`analysis of whether a “secondary” reference may be bodily incorporated into the
`
`structure of a “primary” reference. I have never understood that the test of
`
`obviousness requires that any and all teachings of one prior art reference must
`
`dominate an obviousness analysis to the exclusion of the teachings of other prior
`
`art references. Rather, in conducting my analysis, I attempted to discern what a
`
`given set of references taken as a whole would have suggested to a person of
`
`ordinary skill. (Ex. 1018 at ¶ 28, 31.)
`
`Level of Ordinary Skill in the Art
`
`5. My opinions expressed in this declaration, my previous declaration,
`
`and my deposition regarding a person of ordinary skill in the art are based on a
`
`hypothetical person presumed to have known the relevant art at the time of the
`
`filing of the ’901 patent.
`
`
`
`2
`
`
`
`6.
`
`I understand that Dr. Dix and the Patent Owner agree with my opinion
`
`of what I consider to be the level of a person of ordinary skill in the art. (Ex. 2009
`
`at ¶ 11; Paper 24 at 15.) However, I disagree with Dr. Dix and the Patent Owner
`
`on the creativity level of the person of ordinary skill in the test for obviousness. As
`
`stated in my previous declaration, “a person of ordinary skill is also a person of
`
`ordinary creativity…[and] a person of ordinary skill has good reason to pursue the
`
`known options within his or her technical grasp.” (Ex. 1018 at ¶ 33.) It is my
`
`opinion that Dr. Dix’s artificial limitations on the creativity of a person of ordinary
`
`skill are inconsistent with his own testimony and my testimony.
`
`7.
`
`I believe that Dr. Dix has applied a test for obviousness that only
`
`allows a person of ordinary skill to bodily incorporate elements of the prior art. I
`
`believe that Dr. Dix has limited the range of potential combinations that a person
`
`of skill would come up with in view of the prior art to those that unduly preserves
`
`all elements of one reference at the expense of the creativity of a person of
`
`ordinary skill with regard to the teachings of other references. In effect, Dr. Dix
`
`imposes artificial blinders on the person of ordinary skill at odds with what would
`
`have been immediately recognized as well-known technology.
`
`8.
`
`Dr. Dix also seems to contradict or downplay the creativity level of a
`
`person of ordinary skill. Dr. Dix discusses his understanding of an obviousness
`
`
`
`3
`
`
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`analysis during his deposition at Ex. 1030 at 81:19-83: 15. Dr. Dix appears to
`
`believe that an element of an obviousness analysis is whether or not the secondary
`
`reference can be physically incorporated into another reference. Mr. Sullivan,
`
`attorney for the Petitioner, summarily asks and Dr. Dix answers:
`
`Mr. Sullivan: So what’re doing in your [obviousness] analysis
`is you’re looking, for example, at a physical embodiment of the
`Raith reference, right? 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?
`
`Dr. Dix: That’s correct.
`
`(Ex. 1030 at 83:6-15.)
`
`9.
`
`In contrast, in my review of Dr. Dix’s deposition testimony, Dr. Dix
`
`repeatedly confirmed that some of his senior design students, who, if anything, are
`
`slightly less skilled than a person of ordinary skill, would easily combine certain
`
`elements of EVH with Raith, MacGregor with Raith, and Yu with Raith. For
`
`example, Dr. Dix offered the following during his deposition:
`
`Mr. Sullivan: So your students, your senior design students, it would
`be well within their competency to design their own horizontal
`structural support to pair it with the connecting strip system of Raith,
`right?
`
`Dr. Dix: That's I believe what I said, yes.
`4
`
`
`
`
`
`Mr. Sullivan: So they could use something like Yu; they could use
`something like EVH; they could use something like MacGregor. But
`maybe more probable, they would just design their own horizontal
`structural support member to pair with the Raith connecting system,
`right?
`
`Dr. Dix: Right.
`
`(Ex. 1030 at 54:13-25.)
`
`10. Dr. Dix confirmed his understanding, which I believe is incorrect, that
`
`a person of ordinary skill would be constrained by the manufacturing capabilities
`
`of their employer. In response to the a question by Mr. Nydegger, attorney for the
`
`patent owner, Dr. Dix states:
`
`Mr. Nydegger: Okay. So in considering the Raith system as the
`primary reference, what effect, if any, did that have in your analysis
`that you offer in your expert report?
`
`…
`
`Dr. Dix: It slightly changed the direction in which one of ordinary
`skill in the art would proceed. He would be -- he or she -- I've got to
`remember we do have female students in engineering schools -- would
`be oriented to Raith's goals and Raith's manufacturing capabilities and
`Raith's designs as expressed in the patent.
`
`(Ex. 1030 at 174:15-175:2.)
`
`11. Thus, it is my opinion that Dr. Dix appears to have approached his
`
`obviousness analysis as if a person of ordinary skill would be constrained by the
`
`manufacturing capabilities and design methodology of Raith.
`
`
`
`5
`
`
`
`12.
`
`I do not agree that a person of ordinary skill would be constrained to a
`
`specific job role within a specific industry. Rather, a person of ordinary skill is a
`
`hypothetical person who is presumed to be familiar with all prior art, who views
`
`that art as a whole and exercises ordinary creativity in solving problems, and is not
`
`constrained by limitations of who they are employed by or what problems they are
`
`given by imaginary “superior[s].” (Ex. 1030 at 161:5-162:13.) A recent
`
`mechanical engineering graduate, falling within the scope of a person of ordinary
`
`skill in this situation, would not be limited by manufacturing disclosure in a single
`
`prior art reference in exercising their creativity.
`
`13.
`
`In summary, I disagree with Dr. Dix’s artificial (overly specific)
`
`limitations on a person of ordinary skill as being constrained to a specific job role
`
`for a manufacturer of actual products based on the Raith reference.
`
`Combined Teachings of the References and Motivation to Combine
`
`14.
`
`In addition to artificially limiting the creativity level of a person of
`
`ordinary skill in the art, I disagree with the motivation analysis offered by Dr. Dix.
`
`Dr. Dix has provided alternative combinations of the references and motivations
`
`for other solutions and designs as I explain in further detail below of this
`
`declaration.
`
`
`
`6
`
`
`
`15.
`
`In fact, Dr. Dix has testified that there are a number of ways that the
`
`horizontal members of a combined Raith-EVH assembly could be affixed to the
`
`verticals. For example, Dr. Dix has offered his opinion that that there would be
`
`many methods for attaching the distance channels of EVH to the connecting strip
`
`system of Raith. (Ex. 1030 at 35:13-39:7.) Although this may be one way a
`
`person of ordinary skill in the art would combine the teachings of the references, it
`
`would also be trivial to further replace the base and head assemblies of Raith with
`
`the distance channels of EVH. A person of ordinary skill would have been
`
`motivated to use the distance channels taught by EVH as suggested by the inherent
`
`teachings of Raith, as I previously stated above. It is clear that the distance
`
`channels taught by EVH would be an easy substitution into the system taught by
`
`Raith. For example, the glass frame structure of Raith is almost identical to EVH
`
`as is shown in FIG. 13 of Raith (excerpted below) and FIG. 10 of EVH (excerpted
`
`below). It is no accident that these two glass frames are so similar. Glass frames,
`
`such as these two, are well-known art.
`
`
`
`7
`
`
`
` Raith
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` EVH
`
`
`
`16.
`
`It was and is my opinion that “a person of skill would have found it
`
`feasible and desirable to use the affixing mechanism of EVH (i.e., distance
`
`channels) with the Raith system as a manner of affixing and supporting the glass
`
`panels of Raith.” (Ex. 1018 at ¶ 78.) Dr. Dix has stated that I was using hindsight
`
`to use EVH to provide a plurality of horizontal stringers affixed to the right and left
`
`side edges. In the simplest case, however, one of ordinary skill would understand
`
`that this means two vertical end frames and two horizontal stringers. One of
`
`ordinary skill would understand that horizontal members would be affixed to the
`
`
`
`8
`
`
`
`vertical end frames to have a secure structure for holding glass. Affixing was a
`
`well-known concept at the time of filing of the ‘901 patent for any situation when a
`
`glass panel is used. I agree with Dr. Dix that affixing could be accomplished using
`
`many well-known methods and elements. (Ex. 1030 at 35:13-39:7.) This is not
`
`hindsight, this is using well-known elements to achieve a predictable solution of
`
`having a stable frame for holding glass.
`
`17.
`
`In addition, it is still my opinion that a person of skill would find it
`
`desirable to attach the glass panes to the module on all four sides and to use the
`
`distance channels of EVH to complete securing of a glass pane. Dr. Dix alleges
`
`that the Raith panels already have structure that adequately provides the structural
`
`support for a glass pane. It is and was my opinion that Raith suggests the use of
`
`horizontal stringers that provide horizontal structural support, but does not describe
`
`this function explicitly, whereas EVH does. As noted above, the glass pane
`
`structure shown in EVH and the glass pane structure of Raith are almost identical.
`
`It would be trivial to replace the base and head assemblies of Raith with the
`
`distance channels of EVH. A person of ordinary skill would have been motivated
`
`to use the distance channels taught by EVH as suggested by the inherent teachings
`
`of Raith, as I previously stated. It is clear that the distance channels taught by
`
`EVH would be an easy substitution into the system taught by Raith, and using the
`
`
`
`9
`
`
`
`connecting strip feature of Raith corresponding to the feature of the ‘901 patent
`
`that was identified as the distinguishing feature over the cited art (i.e. the
`
`connecting strip) with the system taught by EVH. This would be a trivial
`
`combination. As I further clarified during my deposition, a person of ordinary skill
`
`would have motivation to use the EVH frame and the apparent distinguishing
`
`feature of the ‘901 patent (i.e. the connecting strip), which is disclosed by Raith,
`
`whose teaching is not disputed by Dr. Dix or the Patent Owner in this regard.
`
`18. As a stated in my previous declaration, “Raith suggests the use of
`
`horizontal stringers for affixing to the vertical end frames and aesthetic surfaces.
`
`See Figure 13. It is inherent that the glass has to be attached. The EVH disclosure,
`
`which, like Raith, discloses a movable reconfigurable wall system using glass
`
`(among other aesthetic surfaces) includes a specific mechanism for accomplishing
`
`the claimed affixing. In my opinion, a person of skill would have found it feasible
`
`and desirable to use the affixing mechanism of EVH (i.e., distance channels) with
`
`the Raith system as a manner of affixing and supporting the glass panels of Raith.”
`
`(Ex. 1018 at ¶ 78.) This is still my belief.
`
`19.
`
`It is my opinion that Dr. Dix has testified that there are a number of
`
`ways that the horizontal members of a combined Raith-EVH assembly could be
`
`affixed to the verticals. However, it is my understanding that there is no
`
`
`
`10
`
`
`
`requirement in the claims that mandate a specific method/apparatus for “affixing.”
`
`Instead, the Patent Owner and Dr. Dix argue that a person of ordinary skill in the
`
`art would combine references in a very specific way. (Ex. 2009 at ¶17 (“At most,
`
`the reason provided by Dr. Beaman to modify Raith would have been a reason to
`
`incorporate the grooves shown in the distance channels of EVH…into the panels of
`
`the Raith system.)) As noted above, it was and is my opinion that “a person of
`
`skill would have found it feasible and desirable to use the…distance channels [of
`
`EVH] with the [connecting strip] Raith system as a manner of affixing and
`
`supporting the glass panels of Raith.” (Ex. 1018 at ¶ 78.)
`
`20.
`
`In addition, I disagree with Dr. Dix that a “radical change to a
`
`company’s product line could jeopardize the ability of new components to be
`
`‘design and functionally compatible’ with old components and could require
`
`expensive retooling” and would discourage a person of ordinary skill in the art
`
`from combining the teachings of Raith and EVH. (Ex. 2009 at ¶ 12.) It is my
`
`opinion that one skilled in the art would not lack motivation to combine the
`
`teachings of the references based on this premise. Given the situation, it may be
`
`desirable to make changes to manufacturing methods and tooling to achieve a
`
`desired result. The choice of manufacturing methods and tooling is a function of
`
`product volume, desired part performance, cost, supply chain, and life cycle
`
`
`
`11
`
`
`
`product sustainment among other issues, rather than what teachings prior art
`
`references as a whole suggest to a person of skill in the art.
`
`21. Further, it is my opinion that the combination of the teachings of
`
`Raith and EVH, Raith and Yu, and Raith and MacGregor would not require any
`
`additional components. As part of combining the teachings of the reference, a
`
`person of ordinary skill would have motivation to adjust the teachings of the Raith
`
`and/or EVH, Yu, or MacGregor references as necessary to minimize the of
`
`components and a person of ordinary skill in the art could easily achieve this due to
`
`the similarity of Raith and EVH, Raith and Yu, and Raith and MacGregor. As
`
`noted above, a person of ordinary skill in the art is not required to bodily
`
`incorporate the teachings of one reference into another.
`
`22.
`
`I agree with Dr. Dix that a person of ordinary skill in the art could and
`
`would combine teachings of the Raith and Yu references, and that such
`
`combinations would be easy to accomplish. Dr. Dix has offered the opinion that
`
`one skilled in the art would combine certain aspects taught by the Yu reference
`
`with certain aspects of the Raith reference. (Ex. 2009 at ¶ 22.) For example, Dr.
`
`Dix has offered the opinion that a person of ordinary skill in the art would have “a
`
`reason to incorporate the tiles and associated snap-fit type connection shown in
`
`Yu…into the existing panels of the Raith system.” (Ex. 2009 at ¶ 22.) But, Dr.
`
`
`
`12
`
`
`
`Dix states that there is no reason to import the cross rails from Yu into the Raith
`
`System. (Ex. 2009 at ¶ 22.) It is my opinion that Dr. Dix is again limiting his
`
`analysis to bodily incorporation of aspects of a reference into another reference, as
`
`he does with the Raith-EVH system. It is and was my opinion that “a person of
`
`skill would have found it desirable and readily achievable to adapt the tile
`
`connection system of Yu for use in the Raith system, including to provide the
`
`benefit of secured tiles and the ability to hang furniture components to the system.”
`
`(Ex. 1018 at ¶ 138.) Dr. Dix disputes that the teachings of Yu relate to the “ability
`
`to hang furniture components.” I disagree. The teachings of Yu, when taken as a
`
`whole, regarding the cross-rails and brackets directly relate to providing an
`
`arrangement “so that no interference occurs therebetween when furniture
`
`components are slid along the channels.” (Ex. 1018 at ¶ 137.)
`
`23.
`
`I also agree with Dr. Dix that a person of ordinary skill in the art could
`
`and would combine aspects of the Raith and MacGregor. Dr. Dix opines that the
`
`motivation discussed in my declaration would provide a reason for a person of
`
`ordinary skill in the art to just “incorporate the cover panels and connections
`
`described in MacGregor…into the existing panels of the Raith system.” (Ex. 2009
`
`at ¶ 26.) It is my understanding, however, a person of ordinary skill in the art is to
`
`interpret the teachings of the references as a whole, as opposed to incorporating
`
`
`
`13
`
`
`
`specific aspects of the references as Dr. Dix suggests. Thus, a person of skill
`
`would have found it feasible, desirable, and easily within their ability to adapt the
`
`panels taught in MacGregor for use in the Raith connecting strip system.
`
`24. As I stated in my previous declaration, Raith suggests the use of
`
`horizontal stringers for affixing to vertical end frames. (Ex. 1018 at ¶ 179.) A
`
`person of ordinary skill in the art would be motivated by this suggestion and would
`
`have found it desirable to incorporate the beams or frame members of MacGregor
`
`with the connecting strip system of Raith for multiple reasons including to support
`
`modular accessory units and cover panels. (Ex. 1018 at ¶ 188.) In addition and as
`
`noted in my previous declaration, “[a] person of skill would have quickly seen the
`
`advantage of incorporating the aesthetic surfaces configured to house storage and
`
`multimedia components from MacGregor with the Raith system.” (Ex. 1018 at ¶
`
`198.) As shown in FIG. 1 of MacGregor, for example, these storage and
`
`multimedia components of MacGregor are mounted between vertical members of
`
`the frame system. Thus, it is my opinion that a person of ordinary skill would
`
`observe this teaching and see the benefits of mounting components in this manner.
`
`Alleged “New Arguments”
`
`25. Dr. Dix and the Patent owner repeatedly assert that certain aspects of
`
`my deposition testimony are “new arguments.” The deposition testimony offered
`
`
`
`14
`
`
`
`further confirmed and explained my explanation of the obviousness contentions,
`
`which the Board has already recognized in instituting this petition.
`
`26. My deposition testimony was in response to questions asking to
`
`explain my opinion that a person of ordinary skill in the art would readily be able
`
`to combine the connector system of Raith—which Patent Owner made clear to the
`
`patent office was the key point of novelty for the ’901 patent—with the
`
`conventional elements of EVH, Yu, MacGregor. As I testified in my deposition,
`
`one skilled in the art could and would readily make such combinations.
`
`I declare that all statements made herein of my own knowledge are true and
`
`that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`I declare under penalty
`
`of perjury under the laws of the United States that the foregoing statements are true
`
`and correct.
`
`Executed on
`
`’7[,;L[ I (9,019
`
` Josep .1. Be
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