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 No. IPR2015-01691
`U.S. Patent No. 8,024,901
`
`October 13, 2016
`
`Slide 1
`
`© 2016 Workman Nydegger
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALLSTEEL INC.
`Petitioner
`
`v.
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner
`
`Case No. IPR2015-01691
`U.S. Patent No. 8,024,901
`
`October 13, 2016
`
`Slide 1
`
`© 2016 Workman Nydegger
`
`
`
`Introduction & Summary
`
`• Petitioner has not carried its burden to prove
`obviousness because:
`– The Petition’s motivations to combine
`references don’t lead to the claimed
`invention
`– Petitioner’s own expert repudiated or
`expressed doubt about the combinations
`argued in the Petition
`claimed
`the
`• Objective
`evidence
`shows
`invention would not have been obvious
`
`Slide 2
`
`
`
`No Motivation to Import the Distance Channels
`of EVH into the Raith System (POR, pp. 27-29)
`
`Petitioner argues: “It would have been obvious to
`combine the distance channels of EVH with Raith to
`provide a manner of supporting and securing the glass
`panels of Raith.” [Petition, pp. 25-26; Ex. 1018, ¶¶78,
`95.]
`
`Slide 3
`
`
`
`No Motivation to Import the Distance Channels
`of EVH into the Raith System (POR, pp. 27-29)
`
`Raith already has horizontal members. Petitioner’s
`motivation is at most a reason to use EVH’s groove in
`those horizontal members to secure the glass along the
`horizontal edge [Ex. 2009, ¶¶ 17-18]:
`
`Slide 4
`
`
`
`Petitioner’s Expert testified that even he, an expert,
`would not combine EVH and Raith as Petitioner
`argues (POR, pp. 31-32; Ex. 2003, 105:14-106:22)
`
`Q. Can you explain to me, Dr. Beaman, how a bottom distance channel 11 in EVH
`could be incorporated into a glass panel as disclosed in Raith?
`
`… T
`
`HE WITNESS: Oh, they’re both glass panels, so I think you could take this
`structure and use it directly into Raith, but there would be a -- I mean, you --
`obviously, you have the -- where the window goes in and you can certainly take the
`whole assembly and bring it over. I mean, you’d have to have the right end frames.
`…
`Q. And would you need additional structure to secure the bottom distance channel
`11 to the horizontal frames disclosed -- or the vertical frames disclosed in Raith?
`
`… T
`
`HE WITNESS: Say it again. I’m sorry. You would want to take this horizontal
`and put it right into the vertical frames of Raith?
`
`… Q
`
`. Is that what you opine a person of skill in the art would do?
`A. I don’t necessarily have to do that, I could probably take the end frames of EVH
`and obviously change the -- the opposing sides of it so it fits in with the connector
`strip, but I’m not sure I’d take that particular element and stick it right into
`Raith.
`
`Slide 5
`
`
`
`No Motivation to Import the Cross Rails of Yu
`into the Raith System (POR, pp. 38-43)
`
`Petitioner argues: “A person of skill would have been motivated to
`combine Yu with Raith because doing so would provide the ability to
`easily attach discrete tiles using a bead-connector method and for
`hanging furniture components from the panel system of Raith, for
`example.” [Petition, p. 37; Ex. 1018, ¶138.]
`
`Slide 6
`
`
`
`No Motivation to Import the Cross Rails of Yu
`into the Raith System (POR, pp. 38-43)
`
`Raith already has horizontal members. Petitioner’s
`motivation to attach tiles is at most a reason to use Yu’s
`snap-fit connectors [Ex. 2009, ¶ 22]:
`
`Slide 7
`
`
`
`No Motivation to Import the Cross Rails of Yu
`into the Raith System (POR, pp. 38-43)
`
`furniture
`hang
`to
`structure
`has
`already
`Raith
`components: [Ex. 2009, ¶ 22; Ex. 1003, Figs. 2, 12,
`2:32-43, 2:51-55, 6:20-22, 8:57-66, 16:9-11.]:
`
`“The wings 76 may
`readily be deformed
`inwardly for attaching a
`mounting member such
`as support bracket 77 for
`an accessory.” [Ex. 1003,
`8:57-66.]
`
`Slide 8
`
`
`
`No Motivation to Import the Cross Rails of Yu
`into the Raith System (POR, pp. 38-43)
`
`Dr. Beaman did not consider that Raith already
`provides structure for hanging accessories such
`as furniture components:
`
`“I didn’t focus on that particular part of the
`[Raith] patent,” “I’d have to go back and look at
`Raith more carefully about the accessory part,
`which I overlooked when I looked at the Raith
`patent,” and “I didn’t actually look as carefully as
`I need to with the Raith connection mechanism.”
`[Ex. 2003, 145:25-146:1, 147:9-12, 166:14-16.]
`
`Slide 9
`
`
`
`No Motivation to Import the Cross Rails of Yu
`into the Raith System (POR, pp. 38-43)
`
`Raith already has horizontal members. Petitioner’s
`motivation to attach furniture components is at most a
`reason to use Yu’s channels and brackets [Ex. 2009, ¶ 23]:
`
`Slide 10
`
`
`
`Petitioner’s Expert testified that even he, an expert,
`would not combine Yu and Raith as Petitioner argues
`(POR, pp. 38-43; Ex. 2003, 138:18-139:24)
`
`Q. Okay. Would the -- would a horizontal stringer of Yu, could
`that be used to replace a part in a glass panel of Raith?
`
`… T
`
`HE WITNESS: I don’t think -- I mean, top and bottom would
`be the place to do it, and I’m not sure you could do it there.
`These are really for affixing, tapping in tiles that you could
`change out.
`
`…
`
`Q. But as far as taking the horizontal rails of Yu into the glass
`panels of Raith --
`
`A. Yeah, I don’t think you would do that.
`
`Slide 11
`
`
`
`No Motivation to Import the Beams of MacGregor into
`the Raith System (POR, pp. 50-53)
`
`“It would have been obvious to
`Petitioner argues:
`combine the beams or frame members of MacGregor
`with the panel systems of Raith, for such reasons as
`including the ability to support modular accessory units
`and cover panels.” [Petition, p. 46; Ex. 1018, ¶188.]
`
`Slide 12
`
`
`
`No Motivation to Import the Beams of MacGregor
`into the Raith System (POR, pp. 50-53)
`
`Raith already has horizontal members that
`support covers [Ex. 2009, ¶ 26; Ex. 2003,
`141:22-142:21]:
`
`Slide 13
`
`
`
`No Motivation to Import the Beams of MacGregor
`into the Raith System (POR, pp. 50-53)
`
`Petitioner’s motivation to support cover panels is
`at most a reason to use MacGregor’s cover
`panels, opening, and clips [Ex. 2009, ¶ 26]
`
`Slide 14
`
`
`
`No Motivation to Import the Beams of MacGregor
`into the Raith System (POR, pp. 50-53)
`
`Raith already has horizontal members that have the
`ability to support accessory units. Petitioner’s motivation
`to support accessory units is at most a reason to use
`MacGregor’s modular accessory units, openings, and
`nuts or screws [Ex. 2009, ¶ 27].
`
`“A modular accessory unit could be
`positioned above a structure such
`as chair rail panel 263 and below a
`structure such as lintel panel 258,
`and connected to those structures
`using the openings 31 and well-nuts
`or self-tapping screws mentioned in
`paragraph 52 of MacGregor.”
`[Ex. 2009, ¶ 27].
`
`Slide 15
`
`
`
`Petitioner’s Expert testified that even he, an expert,
`would not combine MacGregor and Raith as Petitioner
`argues (POR, pp. 50-53; Ex. 2003, 159:12-162:2)
`
`Q. You opine that MacGregor teaches a person of skill in the
`art to use the horizontal members between vertical frames
`shown in MacGregor with the panels of Raith?
`
`… T
`
`HE WITNESS: Not -- I wouldn’t characterize with the panels
`of Raith. I wouldn’t stick it inside of a solid panel. . . .
`
`… Q
`
`. And what about taking the -- the MacGregor structure over
`the glass panels of Raith?
`A. Well, you wouldn’t want to put it in front of glass, typically,
`unless you had the -- it would be one way you could do the --
`the chair -- you know, they had one where you had a solid and
`then in glass, you could do that there, I guess. You wouldn’t
`want to put it in front of glass.
`
`Slide 16
`
`
`
`A “Stringer” Is “Strung” Above the Ground
`Between Vertical End Frames (POR, pp. 6-10)
`
`• 8a is the “lowest” “horizontal
`stringer” (yellow)
`
`• Green base is “lower” than the
`“lowest” horizontal stringer 8a
`and not a “horizontal stringer”
`[Ex. 2003, 48:17-52:5.]
`
`• Green base is not a horizontal
`stringer because it is
`supported by the ground [Ex.
`1001, 4:54-55; Ex. 2003, 52:8-
`52:15; Ex. 2009, ¶ 16.]
`
`Slide 17
`
`
`
`Objective Evidence of Non-Obviousness
`(POR, pp. 59-64)
`
`• Commercial success
`
`• Praise by others
`
`• Meeting a long-felt need for greater flexibility and
`customization
`
`• Shock and disbelief by others
`
`• Johnson County reaction
`
`• Petitioner’s own expert
`
`• Patent Owner’s expert
`
`Slide 18
`
`
`
`Objective Evidence of Non-Obviousness:
`Commercial Success (POR, pp. 63-64)
`
`• Annual revenue attributable to the sales of the DIRTT
`Modular Wall System rose rapidly and rapid growth
`continued steadily after its introduction [Ex. 2004, ¶ 5]:
`
`– Early 2004: $0 (Canadian)
`
`– 2006: $20 million (Canadian)
`
`– 2009: $83 million (Canadian)
`
`– 2015: $212 million (Canadian)
`
`• Claim 1 of the ’901 patent covers the DIRTT Modular
`Wall System. [Ex. 2004, ¶ 3; Ex. 2009, ¶55.] Thus,
`commercial success is presumed to be due to the
`patented invention. PPC Broadband, 815 F.3d at 747.
`
`Slide 19
`
`
`
`Objective Evidence of Non-Obviousness:
`Praise By Others (POR, p. 64)
`
`• Inventor Geoff Gosling was awarded the 2010 Manning
`Innovation Award, “one of Canada’s most distinguished
`innovation awards” “for [his] role in creating the DIRTT
`Modular Wall System” [Ex. 2006, p.1; Ex. 2004, ¶ 6.]
`
`• Claim 1 of the ’901 patent covers the DIRTT Modular Wall
`System, and award documentation shows the
`components of claim 1. [Ex. 2004, ¶¶ 3, 6; Ex. 2007; Ex.
`2009, ¶54.]
`
`• Criteria used to assess Manning Award [Ex. 2008]:
`• “degree of intellectual achievement or quality of ingenious thinking and
`experiment to discover, create or conceive the innovation”
`
`• “degree of successful commercialization or quantifiable impact”
`
`• “the uniqueness and originality” of the innovation
`
`• “the economic and/or social benefit to Canada”
`
`Slide 20
`
`
`
`Objective Evidence of Non-Obviousness:
`Reaction by Others (POR, p. 61)
`
`•
`
`“When DIRTT first introduced the DIRTT Modular Wall
`System, I remember several people reacting with varying
`levels of shock or disbelief because they could not
`believe the customization that the DIRTT Modular Wall
`System allowed was possible.” [Ex. 2004, ¶ 4.]
`
`• Claim 1 of the ’901 patent covers the DIRTT Modular
`Wall System. [Ex. 2004, ¶ 3.]
`
`Slide 21
`
`
`
`Objective Evidence of Non-Obviousness:
`Reaction by Johnson County (POR, pp. 61-62)
`
`• When Danni Livingston saw DIRTT’s debut booth,
`“Johnson County decided to drop the moveable wall
`manufacturer that they had been pursuing and decided to
`adopt the DIRTT Modular Wall System.” [Ex. 2004, ¶3.]
`
`• Claim 1 of the ’901 patent covers the DIRTT Modular
`Wall System. [Ex. 2004, ¶3; Ex. 2005; Ex. 2009, ¶50.]
`
`Slide 22
`
`
`
`Objective Evidence of Non-Obviousness:
`Petitioner’s Own Expert (POR, pp. 62-63)
`
`•
`
`In 2001 (before the invention of the ’901 patent),
`Petitioner’s expert, Dr. Beaman, was involved in selecting
`moveable walls for the remodeling of his department’s
`building. [Ex. 2003, 17:22-19:9.] He saw the need for
`customization. [Ex. 2003, 21:2-18.]
`
`• He testified that the invention claimed in the ’901 patent
`allows for more personalization than the prior art.
`[Ex.
`2003, 180:19-181:7, 182:20-25.]
`
`Slide 23
`
`
`
`Objective Evidence of Non-Obviousness:
`Patent Owner’s Expert (POR, pp. 59-61)
`
`•
`
`•
`
`“In my opinion, the invention claimed in claim 1 of the
`’901 patent is able to address almost all of the needs
`identified in the ’901 patent simultaneously and
`therefore achieve a level of flexibility and customization
`that had not been achieved before.” [Ex. 2009 ¶ 49.]
`
`“None of the prior art cited by the Petitioners is able to
`simultaneously address these needs.” [Ex. 2009 ¶ 49.]
`
`Slide 24
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