IPR2015-01691
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`16196.112.5
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`
`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
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`v.
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`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
`
`___________
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`
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`Case No. IPR2015-01691
`Patent No. 8,024,901
`Issue Date: September 27, 2011
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`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`16196.112.5
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`
`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
`
`v.
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
`
`___________
`
`
`
`Case No. IPR2015-01691
`Patent No. 8,024,901
`Issue Date: September 27, 2011
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`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
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`
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`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`16196.112.5
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`TABLE OF CONTENTS
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`Page
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`IPR2015-01691
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`THE ’901 PATENT ......................................................................................... 3
`A. Overview of the ’901 Patent .................................................................. 3
`B. How the Claims of the ’901 Patent Are to be Construed ...................... 7
`A “horizontal stringer” is a horizontal structural support
`1.
`that connects opposing vertical end frames of a module
`and that is not a horizontal base for the module. ........................ 7
`III. STANDARD FOR GRANTING INTER PARTES REVIEW ......................... 9
`IV. PETITIONER’S PRIMARY PRIOR ART REFERENCE ........................... 10
`A. Overview of Raith ............................................................................... 10
`1.
`Solid panels in Raith ................................................................. 10
`2.
`Glass panels in Raith ................................................................. 12
`PETITIONER HAS FAILED TO SHOW THAT IT IS LIKELY TO
`SUCCEED IN SHOWING THAT ANY OF THE CHALLENGED
`CLAIMS WOULD HAVE BEEN OBVIOUS IN LIGHT OF THE
`PRIOR ART ................................................................................................... 13
`Statutory Ground 1: Claims 1, 6, 7, 11, 13 and 15-18 Would
`A.
`Not Have Been Obvious over Raith in View of EVH ........................ 14
`Claim 1 would not have been obvious over Raith in view
`1.
`of EVH because it would not have been obvious to
`combine EVH with Raith to arrive at the claimed system ........ 14
`Raith does not teach “a plurality of horizontal
`a)
`stringers affixed between said vertical end frames”
`nor an aesthetic surface that is “affixed to said
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`b)
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`2.
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`3.
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`stringers” ......................................................................... 15
`Raith teaches away from using the horizontal
`structures disclosed in EVH ........................................... 23
`Claim 11 would not have been obvious over Raith in
`view of EVH because neither Raith nor EVH teaches the
`claimed structural extrusion to engage the module .................. 28
`Claim 17 would not have been obvious over Raith in
`view of EVH because neither Raith nor EVH teaches the
`claimed curved horizontal stringers .......................................... 29
`Statutory Ground 2: Claims 1, 4, 5, 8 and 9 Would Not Have
`Been Obvious over Raith in View of Yu ............................................ 32
`Claim 1 would not have been obvious over Raith in view
`1.
`of Yu because a person of skill would not have added the
`cross rails of Yu to Raith .......................................................... 32
`The systems of Raith and Yu would not have been
`a)
`combined because Raith teaches away and because
`the
`two systems use fundamentally different
`approaches ...................................................................... 34
`A person of skill would not have been motivated to
`modify Raith in view of Yu because Raith is
`already configured to support separate coverings
`and hanging furniture components ................................. 37
`Claim 8 would not have been obvious over Raith in view
`of Yu because neither Raith nor Yu teaches a cantilever
`channel ...................................................................................... 39
`Statutory Ground 3: Claims 1, 4, 10 and 19-23 Would Not Have
`Been Obvious over Raith in view of MacGregor ............................... 46
`Claim 1 would not have been obvious over Raith in view
`1.
`of MacGregor because a person of skill would not have
`added the horizontal frame members of MacGregor to
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`B.
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`C.
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`b)
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`2.
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`b)
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`2.
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`D.
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`E.
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`Raith .......................................................................................... 46
`The systems of Raith and MacGregor would not
`a)
`have been combined because Raith teaches away
`and because the two systems use fundamentally
`different approaches ....................................................... 48
`A person of skill would not have been motivated to
`modify Raith in view of MacGregor because Raith
`is already configured to support separate coverings
`and hanging furniture components ................................. 50
`Claims 21-23 would not have been obvious over Raith in
`view of MacGregor because neither Raith nor
`MacGregor teaches an extended frame depth ........................... 51
`Statutory Ground 4: Claim 25 Would Not Have Been Obvious
`over Raith in view of MacGregor and Rozier ..................................... 55
`Statutory Ground 5: Claim 14 Would Not Have Been Obvious
`over Raith in view of EVH and Dixon ................................................ 55
`VI. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION
`IN LIGHT OF REISSUE PROCEEDING
`14/032,931 ..................................................................................................... 56
`VII. PETITIONER’S REDUNDANT CHALLENGES TO CLAIMS 1
`AND 4 SHOULD BE DENIED .................................................................... 58
`VIII. CONCLUSION .............................................................................................. 60
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`TABLE OF AUTHORITIES
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`Page(s)
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`IPR2015-01691
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`CASES
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Papers 7 (P.T.A.B. Oct. 25, 2012) ........................... 58, 59
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`Olympus Am., Inc. v. Perfect Surgical Techniques, Inc.,
`IPR2014-2033, Paper 16 (P.T.A.B. June 16, 2014) ...................................... 59
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`Ultratec, Inc. v. Sorenson Commc’ns, Inc.,
` IPR2013-00288, Paper 23 (P.T.A.B. Jan. 10, 2014) .................................... 58
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`OTHER AUTHORITIES
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`MPEP § 1442.03 ...................................................................................................... 57
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) .............. 10
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`REGULATIONS
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`37 C.F.R. § 42.100 ..................................................................................................... 7
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`37 C.F.R. § 42.108 .............................................................................................. 9, 58
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`RULES AND STATUTES
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 314 .......................................................................................................... 9
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`35 U.S.C. § 325 ........................................................................................................ 57
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`IPR2015-01691
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`INTRODUCTION
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`I.
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`Patent owner DIRTT Environmental Solutions Ltd. (“DIRTT”) hereby
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`respectfully submits this Preliminary Response to the Petition seeking inter partes
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`review of U.S. Patent No. 8,024,901 (“the ’901 patent”). Pursuant to 35 U.S.C.
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`§ 313 and 37 C.F.R. § 42.107, this Response is being timely filed by November 18,
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`2015, within three months of the August 18, 2015 mailing date of the Notice
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`granting the Petition a filing date.
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`A trial should not be instituted in this matter as none of the references relied
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`upon by Petitioners HNI Corporation and Allsteel Inc. (collectively “Petitioner”) in
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`the Petition, either alone or in combination with each other, raise a reasonable
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`likelihood of Petitioner prevailing with respect to any claim of the ’901 patent.
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`The claims of the ’901 patent are directed to reconfigurable wall systems.
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`The reconfigurable wall systems include discrete modules connected together to
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`form a wall that can be deconstructed and/or reconfigured without demolishing the
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`walls. Each module has opposing vertical frames and horizontal stringers
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`connecting the vertical frames. The horizontal stringers also support decorative
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`tiles or dividers that can be easily switched out or replaced. Adjacent modules are
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`connected together by a flexible connecting strip, or “zipper,” that interacts with
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`beads formed on flanges of the vertical frames to hold the modules together.
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`As discussed in detail below, each of the Statutory Grounds 1 – 5 set forth in
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`the Petition is deficient, and the Petition should be denied in its entirety. Each of
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`the Statutory Grounds is based on obviousness; the Petition does not argue
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`anticipation of any claim of the ’901 patent. Claim 1 is the sole independent claim
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`of the ’901 patent. The Petition cites Raith as the primary reference in Statutory
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`Grounds 1 – 3 to challenge claim 1. However, Raith is missing the horizontal
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`stringers of claim 1. Thus, Statutory Grounds 1 – 3 each combines Raith with
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`EVH, Yu and MacGregor, respectively, to argue that claim 1 is not patentable for
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`obviousness. However, a person of skill would not have combined Raith with any
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`of EVH, Yu or MacGregor because (i) Raith teaches away from such
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`combinations, and/or (ii) the combinations argued by Petitioner would have given
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`rise to significant technical obstacles that would have precluded the combination.
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`Because claims 4-11, 13-23 and 25 depend from claim 1, the challenges to
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`those claims suffer from the same deficiencies that fail to render claim 1 obvious.
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`Additionally, many of
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`the supplemental references Petitioner argues
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`in
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`combination with Raith (i) do not disclose the additional elements of the various
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`dependent claims that Raith lacks and/or (ii) the components disclosed by the
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`supplemental references would not have been reasonably combined with Raith.
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`Accordingly, the Petition does not show a reasonable likelihood of
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`prevailing with respect to even a single challenged claim of the ’901 patent, and
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`inter partes review of the ’901 patent should be denied as to each claim.
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`II. The ’901 Patent
`A. Overview of the ’901 Patent
`The ’901 patent relates to reconfigurable wall systems. Ex. 1001 at 1:14-24.
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`Wall systems are typically used to partition an overall office environment into
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`separate work areas without the need to install permanent or fixed walls. Id. at
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`1:21-30. This partitioning is done by connecting wall modules together to
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`subdivide the space into various work areas. Id. The modules 20 of the ’901
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`patent “comprise a pair of vertical end frames 12 that will be spaced apart by the
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`desired width of each module.” Id. at 4:39-40. The modules include horizontal
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`stringers 8 “spaced apart at intervals along the height of the module for strength
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`and rigidity.” Id. at 4:54-55. The modules are clad with tiles made of wood,
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`plastic, metal, glass, etc. to provide the desired aesthetics, transparency, etc. Id. at
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`4:43-51. The following colored reproduction of Figure 1 depicts an exploded view
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`of a module 20 of the ’901 patent:
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` Tiles 18
` Horizontal stringers 8
` Vertical end frames 12
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`Adjacent modules are connected together with a zipper interface to create a
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`wall or partition. Id. at 1:65-67. The following colored reproduction of an excerpt
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`of Figure 28 depicts how the zippers 25 connect two adjacent modules together:
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` Tiles
` Zipper 25
` Arms 30 on zipper 25
` Beads 31 on arm 30
` Vertical end frames 12
` Flanges 23 of frames 12
` Beads 27 of flanges 23
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`Specifically, the end frames 12 include “a pair of rearwardly extending L-
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`shaped flanges 23 that align vertically with correspondingly positioned and shaped
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`flanges 23 on [an] opposite end frame . . . so that [they] can be connected together
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`by connecting strips (“zippers”) 25.” Id. at 5:15-20. To ensure a secure yet
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`releasable connection between modules, “each of flanges 23 is formed with a bead
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`27.” Id. at 5:24-29. The zipper 25 includes a pair of arms 30 with “a bead 31 that
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`snap fits with beads 27 on flanges 23 for a secure but releasable connection.” Id.
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`The horizontal stringers of the wall system of the ’901 patent may further
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`include cantilever channels to support objects, such as wall accessories or
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`furniture, that are hung on the walls, as shown in the following colored
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`reproduction of Figure 9:
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` Channel stringer 40
` L-shaped slot 42
` Wall accessory 47
` Tiles 18
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`Specifically, the horizontal stringers discussed above can be cantilever
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`channel stringers 40 that include a cantilever channel portion 41. Id. at 4:55-57.
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`The cantilever channel portion 41 has “a generally L-shaped slot 42 formed along
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`its length adapted to receive and engage a substantially L-shaped hook 45 formed
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`on a wall accessory 47 ….” Id. at 6:22-26. This arrangement of an L-shaped
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`cantilever channel 42 and corresponding L-shaped hook 45 on a wall accessory 47
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`not only supports wall accessories that hang flat against the wall (as shown in
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`Figure 9 above), but also allows wall accessories to cantilever out from the
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`cantilever stringer 40 without any additional hardware or other attachments.
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`The wall system of the ’901 patent also includes a leveling system. The
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`leveling system is shown below in colored reproductions of figures 14 and 15:
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` Plate 113
` Upper section 112
` Middle section 115
` Lower section 120
` Vertical end frames 12
` Extrusion 90
` Universal foot 100
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`The leveling system “includes a structural extrusion 90, which is generally
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`an inverted U-shaped channel with a notch 92 to engage the lower edge of the glass
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`or plastic divider, and a universal foot 100.” Id. at 7:25-31. The extrusion 90 and
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`the universal foot 100 are connected by levelers 110. Id. at 7:32-33. The levelers
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`include an upper section 112, a middle section 115 and a lower section 120. Id. at
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`7:35-36. Each section is a threaded cylinder. The middle section 115 has internal
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`threads in one direction and external threads in the opposite direction. Id. at 7:35-
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`54. The upper section 112 has internal threads that match the external threads of
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`the middle section 115, and includes a plate 113 to engage the extrusion 90. Id.
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`The lower section 120 has external threads that mate with the internal threads of
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`the middle section 115. Id. The direction of the threads allows the height of the
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`leveler to be adjusted by rotating the middle section. Id. The lower section 120 is
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`connected to a V-shaped lower plate 125 that slides into grooves in the foot 100.
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`B. How the Claims of the ’901 Patent Are to be Construed
`Petitioner argues that the only term that needs to be construed is “horizontal
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`stringer” and asserts the term should be construed to mean any “horizontal
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`member.” Petition at 9-10. Each of the statutory grounds in the Petition hangs in
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`part on Petitioner’s unreasonably overbroad construction of a “horizontal stringer.”
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`A proper construction of this term is presented below.
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`1.
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`A “horizontal stringer” is a horizontal structural support
`that connects opposing vertical end frames of a module and
`that is not a horizontal base for the module.
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`The Board is to give claim terms their “broadest reasonable construction in
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`light of the specification.” 37 C.F.R. § 42.100(b). Although Petitioner correctly
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`cites this standard, it then immediately departs from this standard, instead arguing
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`for an interpretation of “horizontal stringer” that is unreasonably overbroad in view
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`of both the specification and the dictionary definitions it cites.
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`Petitioner argues that a “horizontal stringer” is nothing more than “a
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`horizontal member.” Petition at 9. However, at least two of the dictionary
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`definitions cited in the Petition indicate that a “stringer” connects upright posts in a
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`frame. See Petition at 9 (citing Ex. 1023 (“A long horizontal member used to
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`support a floor or to connect uprights in a frame”); Ex. 1022 (“[A] horizontal
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`timber connecting upright posts in a frame”)).
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`The specification is consistent with this meaning and adds additional
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`context. The ’901 patent describes the “horizontal stringers” as follows:
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`Stringers 8 are horizontally spaced apart at intervals along the height
`of the module for strength and rigidity. To support objects,
`cantilever channel stringers 40, including a cantilever channel portion
`41, are used as shown in FIGS. 8 and 9. Stringers 8 that do not
`include channel portion 41 can be used anywhere structure is
`required but the channel portion is not required for supporting
`objects. For example, the lowest stringer 8a may not include
`cantilever channel portion 41. The stringers are connected to end
`frames 12 by fasteners, usually threaded screws, in a manner to be
`described below.
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`Ex. 1001 at 4:54-63 (emphasis added). Figure 1 (reproduced above in Section
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`II(A)) accompanies this description and depicts the horizontal stringers 8 spanning
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`the width of the module to connect the vertical end frames 12.
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`This portion of the specification also explains that stringers provide
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`“strength and rigidity.” This means that a horizontal member such as a piece of
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`“base trim” is not a “stringer.” The specification separately discusses “base trim”
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`and “stringers,” indicating that a piece of “base trim” is not a “stringer.” Id. at
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`2:45-49. The specification therefore makes clear that a “stringer,” as the
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`specification uses that term, does not include base trim. This makes sense because
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`a piece of trim does not provide “strength and rigidity.” Its function is merely to
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`cover gaps and “provide[] a finished look.” Id. at 2:47-48.
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`Significantly, this portion of the specification also refers to “the lowest
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`stringer 8a.” In Figure 1, there is another horizontal structure lower than stringer
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`8a connecting the vertical frames, which is the horizontal base of the frame. The
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`specification therefore makes clear that a “stringer” does not include a horizontal
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`base. This makes sense because a horizontal base is not “strung” between the
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`vertical end frames; instead it is supported by the ground or by structures other
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`than the vertical end frames. Thus, the “broadest reasonable construction in light
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`of the specification” of “horizontal stringer” is “a horizontal structural support that
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`connects opposing vertical end frames of a module and that is not a horizontal base
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`for the module,” not merely a “horizontal member” as argued by Petitioner.
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`III. Standard for Granting Inter Partes Review
`The Board may only grant a petition for inter partes review if “the
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`information presented in the petition…shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). The burden of
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`demonstrating that this threshold is met lies with the Petitioner. E.g., Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“The Board…may
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`institute a trial where the petitioner establishes that the standards for instituting the
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`requested trial are met…”).
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`Here, the Petition should be denied in its entirety because there is no
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`reasonable likelihood of Petitioner prevailing on any of the challenged claims.
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`IV. PETITIONER’S PRIMARY PRIOR ART REFERENCE
`A. Overview of Raith
`Raith is the primary reference the Petition cites in each of the Statutory
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`Grounds. While Raith relates to demountable partition systems, the systems of
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`Raith are fundamentally different from the systems that the ’901 patent claims.
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`Raith discloses “modular structural components [that] may be easily
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`assembled and disassembled . . . to create a variety of different screen or partition
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`systems[.]” Ex. 1003 at 1:10-17. Raith discloses two varieties of panels. The first
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`is a “solid panel” made of two opposing pieces of sheet metal. Id. at 5:53-57, Figs.
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`1, 2 and 5. The second is a “glass panel” having vertical sheet metal frames that
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`support a glass pane between them. Id. at 12:5-8, 13:39-41, Figs. 13, 16 and 20.
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`Solid panels in Raith
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`1.
`Raith discloses solid panels that are formed “from a pair of substantially
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`parallel, spaced-apart metal face plates 11 of a preferably thin gauge sheet metal
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`having substantially rectangular planar central portions 12 and opposite edge
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`portions 14.” Id. at 5:53-57, Figs. 1, 2 and 5. Figure 1 shows the flat piece of
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`sheet metal before the edges have been bent to form the connecting flanges. Id. at
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`4:10-12, 7:7-11. Figure 2 shows the same piece of sheet metal as Figure 1 after the
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`edges have been bent to form the connecting flanges. Id. at 4:13-14. Figure 5,
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`reproduced with coloring here, depicts a complete solid panel.
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` First sheet metal face plate 11
` Second sheet metal face plate 11
` Clip 30
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`Once the edge portions of the first and second face plates have been bent to
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`form flanges, the edge portions of opposing sheet metal face plates are attached
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`using elongate clips 30. See id. at 6:33-64. Accordingly, each panel is formed of
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`two pieces of sheet metal that have edges formed into flanges for connecting the
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`pieces of sheet metal together with a clip. Id. at 4:19-22, 5:53-57, 6:29-33.
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`Raith further discloses “that the bending and folding of the sheet metal face
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`plate 11, and their manner of securement together, provides opposite mounting
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`panel edges 29 which are very strong and capable of serving as structural
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`supporting members themselves with or without structural posts. Accordingly,
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`such panel 10 can be used as a wall panel with or without structural posts or a
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`screen panel with or without posts as is customary in interior partition assemblies.”
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`Id. at 6:64-7:4. To facilitate installing the panels along ceiling and floor channels,
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`Raith teaches that “[t]he face plate 11 further may be provided with top and bottom
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`inwardly foled [sic, folded] flanges 38 and 39 along the upper and lower edges
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`thereof[.]” Id. at 7:25-29. Importantly, Raith does not disclose any horizontal
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`structural supports connecting the vertical folded edges of a solid panel. Thus, the
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`solid panels of Raith do not use any “horizontal stringers.” Indeed, Petitioner only
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`argues that the glass panels of Raith have stringers. Petition at 15-16.
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`2. Glass panels in Raith
`Turning to the glass panels taught in Raith, Figure 17, reproduced here with
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`one color-coded glass panel, depicts “an exemplary two-way in-line intersection
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`between adjacent glass panel assemblies 222 and 223.” Id. at 13:42-44.
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` Frame panel 233
` Glass pane 232
` Glazing strip 353
` Connector strips 70
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`“Each glass panel assembly, such as glass panel assembly 223, comprises a pane of
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`glass. . . extending between frame panels . . . .” Id. at 12:6-8. Raith uses “glazing
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`strips 353” to secure glass panes 232 in the channels 352 along the vertical frame
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`panels. Id. at 13:47-49; see also id. at 13:38-41.
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`Conspicuously absent from Raith is any teaching of a horizontal member to
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`secure the glass panels. See id. at 12:2-8 and 12:15-20 (Fig. 13), 13:18-20 and
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`13:37-41 (Fig. 16), 13:42-49 (Fig. 17), 14:19-23 (Fig. 21). Only vertical frame
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`panels are disclosed as securing the glass pane in place in each of these glass
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`panels. Id. As explained in more detail below, the horizontal members located
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`beneath the glass pane simply “support” the glass pane, rest on the ground, and are
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`not “strung” between the vertical frame panels. At best they are nothing more than
`
`a horizontal base. Thus, the glass panels of Raith do not use any “horizontal
`
`stringers,” let alone horizontal stringers to which an aesthetic surface is affixed.
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`V.
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`PETITIONER HAS FAILED TO SHOW THAT IT IS LIKELY TO
`SUCCEED IN SHOWING THAT ANY OF THE CHALLENGED
`CLAIMS WOULD HAVE BEEN OBVIOUS IN LIGHT OF THE
`PRIOR ART
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`At the outset, it is important to note that the Petition does not argue
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`anticipation of any claim of the ’901 patent, including the only independent claim
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`1. Unable to argue anticipation, Petitioner argues combinations of Raith with
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`EVH, Yu and MacGregor, respectively, to argue that claim 1 is not patentable for
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`13
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`16196.112.5
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`obviousness. However, it does so with complete disregard for the undesirable
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`effects those changes would have. Simply put, there would have been no rhyme or
`
`reason (other than Petitioner’s self-serving interest) to combine the teachings of
`
`Raith with EVH, Yu or MacGregor in such a manner that would render claim 1 of
`
`the ’901 patent obvious, yet there would have been several reasons a person of skill
`
`in the art would not have made these combinations. Petitioner’s failure to present a
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`case of obviousness as to claim 1 of the ’901 patent is fatal to the Petition in its
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`entirety, as set forth in detail below.
`
`A.
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`Statutory Ground 1: Claims 1, 6, 7, 11, 13 and 15-18 Would Not
`Have Been Obvious over Raith in View of EVH
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`Statutory Ground 1 argues that Raith in combination with EVH renders
`
`claims 1, 6, 7, 11, 13 and 15-18 unpatentable as obvious.
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`1.
`
`Claim 1 would not have been obvious over Raith in view of
`EVH because it would not have been obvious to combine
`EVH with Raith to arrive at the claimed system
`
`Claim 1 requires a plurality of horizontal stringers to which an aesthetic
`
`surface is affixed. Claim element [1c], as it is labeled in the Petition, expressly
`
`requires “a plurality of horizontal stringers affixed between said vertical end
`
`frames.” Petition at 30. Claim element [1d] further requires “an aesthetic surface
`
`affixed to said stringers.” Id. In arguing that Raith teaches horizontal stringers,
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`14
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`16196.112.5
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`Petitioner cites only Figure 13 and column 14. Id. at 15-16. But neither Figure 13
`
`nor column 14 of Raith teaches the claimed horizontal stringers.
`
`a)
`
`Raith does not teach “a plurality of horizontal
`stringers affixed between said vertical end frames”
`nor an aesthetic surface that is “affixed to said
`stringers”
`
`Figure 13 of Raith is “a fragmentary perspective elevation of a particular
`
`interior partition layout in accordance with the present invention employing the
`
`various modular components of the invention.” Ex. 1003 at 4:46-49.
`
`
`
`Petitioner does not identify which structures in Figure 13 are the alleged
`
`“horizontal stringers” other than to say that a “glass panel” is affixed to them.
`
`Petition at 15-16. Petitioner also does not cite to any portion of the written
`
`description in Raith to shed light on its argument. Instead, Petitioner cites
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`paragraph 76 of the Expert Declaration of Joseph J. Beaman, Jr., Ph.D. (hereafter
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`“Beaman Declaration”). Id. at 15-16.
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`15
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`The Beaman Declaration is not helpful as it makes the same vague argument
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`that Figure 13 discloses the claimed horizontal stringers, again without identifying
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`any particular structure in Figure 13. Ex. 1018 at ¶ 76. The Beaman Declaration
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`(but not the Petition) also cites Raith at column 11, line 53 through column 12, line
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`8. Id. While this passage discusses Figure 13, it only generally identifies the
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`sequence of the various panels in Figure 13. There is no discussion of any
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`horizontal structural support that is affixed between vertical frames. Further, the
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`only passage in this citation that addresses the “glass” that Petitioner asserts is the
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`claimed “aesthetic surface” is at column 12, lines 5-8: “Each glass panel assembly,
`
`such as glass panel assembly 223, comprises a pane of glass 228 extending
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`between frame panels 229 and 230.” Ex. 1003 at 12:5-8. Figure 13 of Raith shows
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`that frame panels 229 and 230 are vertical frames, not horizontal stringers. Neither
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`Figure 13 nor the written description concerning Figure 13 discloses the claimed
`
`horizontal stringers or aesthetic surfaces affixed to the horizontal stringers.
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`The Beaman Declaration (but not the Petition) also cites Figure 17 of Raith
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`as teaching the claimed horizontal stringers. Ex. 1018 at ¶ 76. However, Figure 17
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`actually confirms that the glass panes of Raith are not affixed to any horizontal
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`surface, let alone a horizontal stringer. The following is a colored reproduction of
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`Figure 17.
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`IPR2015-01691
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` Frame panel 233
` Glass pane 232
` Glazing strip 353
` Connecting strip 70
` Unidentified part
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`
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`Figure 17 depicts “an intersection between two glass panel assemblies.” Ex.
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`1003 at 4:61-64. The Beaman Declaration’s citation to Figure 17 implies that the
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`part colored yellow above is what Petitioner asserts to be the claimed “horizontal
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`stringer.” This part has no reference number and is not discussed in the written
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`description. However, Figures 20, 21, and 22, which also illustrate a similar
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`horizontal support for the lower edge of a glass panel, provide insight into the
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`unidentified yellow part in Figure 17. These figures demonstrate that it is nothing
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`more than a horizontal base that rests on the ground rather than a horizontal
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`stringer that is strung between two vertical end frames. In Figure 22, chair rail
`
`panel 263 is the structure that supports the bottom horizontal edge of the glass pane
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`and vertical frame 262 is the structure with a central channel 394 that receives the
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`vertical edge of the glass pane. The following is a colored reproduction of Figure
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`22, which provides a top view of a cross-section of the connection between chair
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`rail panel 263 and the vertical frame 262 as it exists below the glass pane:
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`17
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`IPR2015-01691
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` Bottom-right portion of
`frame panel 262
` First sheet metal face plate
`of 263
` Second sheet metal face
`plate of 263
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`
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`
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`The first and second metal face plates 391 “hav[e] inturned edge portions
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`392 which terminate in outwardly bent terminal flanges 383 adapted to interfit
`
`within central channel 394 of frame panel 262.” Id. at 14:27-31 (emphasis added).
`
`This “interfit” connection between the chair rail panel 263 and the vertical frame
`
`panel 262 means that the chair rail panel 263 is neither supported by nor supports
`
`the vertical frame panel 262—the chair rail panel 263 simply rests on the ground
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`and fits next to the vertical frame panel 262. Consequently, as far as Raith
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`discloses, the chair rail panel 263 (and the other bases shown at the bottom edges
`
`of the other glass panels in Raith) are nothing more than horizontal bases, not
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`“horizontal stringers” as claimed in the ’901 patent.
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`Not only is chair rail panel 263 (and other bases like it) not a “horizontal
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`stringer,” but the glass pane that it supports (and which Petitioner argues is an
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`aesthetic surface) is not “affixed” to it, as shown in Figure 21:
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`No channel to
`receive glass
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` Upper-right portion of Frame
`panel 262
` Glass pane
` Glazing strip
` Unidentified part
` First sheet metal face plate of 263
` Second sheet metal face plate of 263
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`
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`In Figure 21, the unnumbered yellow portion corresponds to chair rail panel
`
`263 in Figure 22. See id. at Fig. 13. Significantly, Figure 21 does not show a
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`channel or a glazing strip in chair rail panel 263 to receive the bottom horizontal
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`e
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