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
`__________________
`
`SUPPLEMENTAL DECLARATION OF JOSEPH J. BEAMAN JR.
`
`ALLSTEEL EXHIBIT 1038 - 1
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
`_________________
`
`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
`__________________
`
`SUPPLEMENTAL DECLARATION OF JOSEPH J. BEAMAN JR.
`
`ALLSTEEL EXHIBIT 1038 - 1
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
`
`Introduction and Summary of Opinion
`
`1.
`
`This declaration is in response to the Board’s recent institution of
`
`inter partes review of Claims 8, 11-13, and 21-23 of ’901 patent in Case No.
`
`IPR2015-001691. I have previously opined on these newly instituted claims, and I
`
`incorporate by reference my statements and opinions expressed in my previous
`
`declaration and deposition as they relate to the newly instituted claims (Ex. 1018;
`
`Beaman Deposition). In addition to the documents listed in Appendix B of Ex.
`
`1018, I have also considered the following documents for this report: (1) Patent
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`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
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`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 Board’s earlier decision denying
`
`institution as to Claims 8, 11, 13, and 21-23 and the reasons given by the Board
`
`underpinning its decision. As discussed below, it is my opinion that the Board’s
`
`decision not to institute review on these claims resulted from a misconception of
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`aspects of my previously stated opinions on the obviousness of these claims.
`
`3.
`
`In this report, I attempt to further clarify my prior opinions on the
`
`newly instituted claims directly in response to the Board’s previous decision
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`ALLSTEEL EXHIBIT 1038 - 2
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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`denying institution. My specific opinions on how the relevant prior art
`
`combinations teach each element of the newly instituted claims remain unchanged
`
`and I do not intend, through this report, to add to or change my previously
`
`disclosed opinions. Rather, it is the goal of this report to further explain my
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`opinions in response to the Board’s initial denial of institution.
`
`Claim 8
`
`4.
`
`The Board denied institution on Claim 8 because, according to the
`
`Board, “Petitioner has not directed [the Board] to where in Yu bracket 189-5
`
`engages connector bracket 26.” (Inst. Dec. at 18). The Board also indicated that
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`“[i]f, as we understand Petitioner’s argument, the longer portion of the L is in
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`space, not defined by any boundary, then that is not sufficient to show how the
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`channel portion has a generally L shaped slot as claimed. It would be the borders
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`of the channel that define the L shaped slot, not some imaginary portion.” (Inst.
`
`Dec. at 18).
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`5.
`
`The Board has misconstrued the ground from the Petition and my
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`opinion stated in my initial declaration. The longer portion, or leg of the “L” slot
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`in the Yu bracket 189-5 is not simply set out in space – it is defined between the
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`bracket 189-5 and the cross rail 200 of Yu. Below I have provided two of the
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`original excerpts from Yu set out in the Petition and my accompanying declaration,
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`along with an additional side, cross-sectional view that is consistent with the
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`ALLSTEEL EXHIBIT 1038 - 3
`Allsteel v. DIRTT Environmental; IPR2015-01691
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`
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`Petition, my original understanding of Yu, and what the Yu bracket 189-5 and
`
`crossrail 200 define in terms of an L-shaped slot.
`
`
`
`
`
`
`
`Illustration showing the cross-section where the mounting bracket 189-5 is
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`mounted above the cross-rail 200 of Yu
`
`
`
`
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`ALLSTEEL EXHIBIT 1038 - 4
`Allsteel v. DIRTT Environmental; IPR2015-01691
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`
`
`
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`6.
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`As can be seen in my illustration above, the green area corresponds to
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`an L-shaped slot formed by the boundaries of the brackets 189-5 and cross-rail
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`200. As originally discussed in the Petition, the cross rails 200 and the mounting
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`brackets 189-5 mounted to the crossrails 200 combine to define “channel
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`stringers.” (Petition at 35). As shown above in the original drawings from the
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`Petition and my Declaration, as well as my consistent drawing of the cross-sections
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`between the mounting brackets 189-5 and crossrails 200, the mounting brackets
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`189-5 and the crossrails 200 combine to define the L-shaped slot. The upper
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`portion of the “leg” is defined by the mounting brackets 189-5, the lower portion of
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`the “leg” by the cross-rail 200, and the “arm” of the L-shape by the cross-rail 200.
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`7.
`
`Although claim 8 does not actually require the presence of an L-
`
`shaped hook (“said L-shaped slot adapted to receive and engage a substantially L-
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`shaped hook”), as I pointed out in my declaration Yu actually describes a
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`connector bracket 26-2, and in particular a “hook-like projection,” that is hooked
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`into channels 51-1, such as those of the cross-rail 200, which forms part of the L-
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`shaped slot Yu defines as I previously described. (Ex. 1018 at ¶¶ 244-248). From
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`this, and as both I and the Petition set forth, it would be clear to a person in the
`
`field that the L-shaped slot defined by Yu is capable of receiving and engaging a
`
`substantially L-shaped hook.
`
`
`
`ALLSTEEL EXHIBIT 1038 - 5
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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`Claim 11
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`8.
`
`The Board denied institution on Claim 11, stating that “Petitioner has
`
`not accounted for the claimed “structural extrusion” limitation of claim 11.”
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`(Institution Dec. at 12.) Further, the Board stated that “there is no mention either
`
`in the Petition or the Beaman Declaration of what element in EVH meets the
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`“structural extrusion” limitation. (Id.)
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`9.
`
`The Board in this regard misconstrued my opinion stated in my initial
`
`declaration. Regarding the “structural extrusion” limitation of Claim 11, I stated in
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`Paragraph 98 of my initial declaration (Ex. 1018) that “EVH discloses glide
`
`assemblies mounted to vertical posts of a support frame of a wall panel
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`system.” Further, I opined that “it would have been easy for a person of skill to
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`use the EVH glide system with the wall system of Raith to accomplish the desired
`
`leveling.” (Id. ¶ 99.) Stated differently, in my initial declaration I was clear that
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`the “structural extrusion” that the glide assemblies (i.e., leveler) of EVH “engage”
`
`as claimed in claim 11 are the vertical posts of the wall panel system itself, not a
`
`separate structural component.
`
`10. To the extent that the Board’s misapprehension of my earlier opinion
`
`resulted from the Board looking for me to have identified a “structural extrusion”
`
`component in the combined Raith/EVH system that is separate and distinct from
`
`the support frame of the wall module itself, I note that the ’901 patent itself makes
`
`
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`ALLSTEEL EXHIBIT 1038 - 6
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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`clear that the “structural extrusion” of claim 11 can either be a separate component
`
`that is distinct from the wall module or, as with EVH, part of the module itself.
`
`11. Specifically, the ’901 patent describes “two variations of the mounting
`
`system shown in Figs. 15 and 16, one to be used with modules comprising tiles 18,
`
`and the other with modules using glass or plastic dividers.” (Ex. 1001 at 7:22-25.)
`
`The leveller system variation shown in Figure 16—according to the ’901 patent
`
`itself—is “received into channels formed in the module’s lowermost extrusion.”
`
`(Id. at 8:11-12.) In other words, Figure 16 and the corresponding textual
`
`description confirms that the “structural extrusion” of Claim 11 can be one and the
`
`same as a structural component of the module itself. Thus, my opinion that the
`
`vertical posts of the support frame of the combined EVH/Raith system meet the
`
`“structural extrusion” element is perfectly consistent with the ’901 patent’s
`
`disclosure of claimed variations of this claim element.
`
`12. To the extent that the Board’s prior decision to deny institution on
`
`Claim 11 turned specifically on the manufacturing term “extrusion,” it is my view
`
`that the Board overlooked the totality of my testimony, which makes it clear that a
`
`person of skill would understand extrusion as a conventional manufacturing
`
`technique that is interchangeable with and “produces essentially the same finished
`
`parts” as roll-forming (Ex. 1018 ¶ 109), which is the particular manufacturing
`
`technique discussed in Raith. (Ex. 1003 at 16:33-38.)
`
`
`
`ALLSTEEL EXHIBIT 1038 - 7
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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`13.
`
`I further explained my opinion in this regard at my deposition in
`
`response to questions asked of me by Patent Owner’s counsel. I have reproduced
`
`the relevant testimony below.
`
`[M]y opinion is, and as I state here, roll-forming and extrusions can be
`interchanged and they're more associated with the volume, how many
`products you're trying to make. (Ex. 2003 at 109:3-7.)
`
`14.
`
`I also further explained in my deposition how a person of skill
`
`
`
`in the art could combine the EVH leveler system with the Raith modules,
`
`which a manufacturer may produce by roll-forming or extrusion depending
`
`on the volume needed. Here is relevant testimony:
`
`Q. Okay. And if you turn two more pages to page 51, what parts are
`used in EVH to elevate the glass panel?
`A. It looks -- item -- the bolt.
`Q. Glide bolt 55?
`A. Is it 55? Yeah, glide bolt 55.
`Q. How about glide 53, is that used to help elevate the panel?
`A. That's a glide, yeah, so I think it certainly goes up.
`**********
`Q: So to accomplish what you state in that last sentence, a person of
`skill in the art would need to fasten the distance channel to the vertical
`frame members in Raith, correct?
`A. They might have to. I'm just trying to think if you could put in that
`exact same leveling mechanism. I mean, you'd have to change the
`geometry, I'm sure. I don't know why you couldn't do that.
`
`
`
`ALLSTEEL EXHIBIT 1038 - 8
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
`
`Q. Okay. And so is it your opinion that to accomplish that
`combination, a person of skill in the art would take the distance
`channel or a similar structure --
`A. Yes.
`Q. -- it might have slightly different geometry, but similar in nature; is
`that correct?
`A. Yes.
`Q. And would fasten that to the vertical frame members of Raith,
`correct?
`A. Well, they could be connected like the panel that's shown in EVH.
`Q. And please describe for me that connection.
`A. Well, it looks like it's -- it looks like there's a connection between
`the glide and the bottom member that goes -- that's inserted inside of
`the end frames.
`(Id. at 110:7-16; 120:4-121:6.)
`
`
`
`15.
`
`In sum, in my opinion, Claim 11 would have been obvious to a person
`
`of skill as of the priority date of the ’901 patent for the reasons given in my initial
`
`declaration, including that EVH discloses “a structural extrusion connecting to said
`
`leveller,” which, in the case of EVH, is simply the vertical posts of the support
`
`frame of EVH. Similarly, when combined with Raith, a person of skill would have
`
`found it obvious to attach the EVH leveller (i.e., glide assemblies) to the vertical
`
`end frames of Raith, which a person of skill would have known could
`
`interchangeably be roll-formed or extruded depending on the particular
`
`manufacturing needs.
`
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`ALLSTEEL EXHIBIT 1038 - 9
`Allsteel v. DIRTT Environmental; IPR2015-01691
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`
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`Claim 13
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`
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`16.
`
`I understand that the Board declined to institute on Claim 13 solely
`
`because Claim 13 depends from Claim 11, on which the Board did not institute
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`review for the reasons addressed above. It remains my opinion that Claim 13,
`
`which adds a base trim to the leveller system of Claim 11, would have been
`
`obvious to a person of skill in view of EVH.
`
`Claims 21-23
`
`
`
`17.
`
`I understand that the Board decided not to institute review of Claim
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`21, as well as 22-23, which directly depend from claim 21, because the Board
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`“d[id] not find any supporting evidence to support” the conclusion that MacGregor
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`discloses extending the verticle side frames to make a “deeper” wall as required by
`
`Claim 21.
`
`
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`18.
`
`In responding to the Board’s statement in this regard, it is important to
`
`note that the ’901 patent itself includes no description of how to extend vertical
`
`end frames to allow for a deeper wall module. The passage below is the only
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`disclosure I could locate in the ’901 patent touching on the added limitations of
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`Claim 21, and it notably includes no discussion of how the vertical frame
`
`components are extended or what is meant by a “deeper” wall:
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`With reference to FIG. 17, a module 20 is shown in which a couple of
`tiles 18 have been replaced with an integrated media panel 190. The
`panel can be a Fresnel lens, a plasma screen, an LCD screen or a
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`ALLSTEEL EXHIBIT 1038 - 10
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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`digital whiteboard. Rear projection technology can be used to project
`images onto the Fresnel lens, or the digital whiteboard technology
`allows sketching, writing, layout or computer screen emulation. In the
`example shown, adjacent tiles 18 incorporate speakers 192 to provide
`sound. Tile 18 surrounding the screen area can be used for integrated
`storage areas.
`(Ex. 1001 at 8:61 – 9:3.)
`
`
`
`Similarly, Fig. 17, reproduced below, includes nothing instructive on the
`
`claimed extended vertical end frames that allow for a deeper wall.
`
`
`
`
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`ALLSTEEL EXHIBIT 1038 - 11
`Allsteel v. DIRTT Environmental; IPR2015-01691
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`
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`19.
`
`In my opinion, the portions of MacGregor that I cited in my original
`
`declaration to illustrate why Claim 21 is obvious show extended vertical end frame
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`allowing for “deeper” walls much more clearly than the limited disclosure of the
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`’901 patent itself. Specifically, I explained that MacGregor discloses partition
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`frames that are “sufficiently deep to receive one or more modular accessory units”
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`such as integrated storage units and flat screen televisions and cited multiple
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`portions and Figures from MacGregor demonstrating this. (Ex. 1018 at ¶ 196
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`(citing Ex. 1006 ¶ 44, 45, 48, 52, and Figs. 1, 1T, and 1U)). I further explained
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`that, in considering the cited passages of MacGregor, “a person of skill would
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`readily recognize that MacGregor discloses a vertical end frame depth that is
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`extended to provide a ‘deeper wall.’” (Ex. 1018 ¶ 196.)
`
`20.
`
`It remains my opinion that MacGregor clearly teaches, and that my
`
`initial declaration clearly identified, vertical end frames that are extended enough
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`to receive substantial multimedia and furniture components such as televisions and
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`storage units. If anything more is required to meet the “extended” depth and
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`“deeper wall” limitations of Claim 21, I am unable to determine what that would
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`be given the subjective nature of “extended” and “deeper” and lack of guidance
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`provided by the ’901 patent.
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`
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`ALLSTEEL EXHIBIT 1038 - 12
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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`ALLSTEEL EXHIBIT 1038 - 13
`Allsteel v. DIRTT Environmental; IPR2015-01691
`
`
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