Paper No. 53
`Filed: December 12, 2018
`
`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
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSIVE BRIEF
`
`US.121151581.01
`
`
`Filed: December 12, 2018
`
`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
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSIVE BRIEF
`
`US.121151581.01
`
`
`
`
`
`Patent Owner’s response to Petitioner’s arguments and evidence on the
`
`newly instituted claims ignores the written description of the ’901 patent pertaining
`
`to each of these claims. Accordingly, Patent Owner’s arguments rely not on any
`
`deficiency in the Petition or lack of disclosure in the prior art, but instead on
`
`arguments that are at odds with the disclosure in its own patent. The Board should
`
`find the newly-instituted claims unpatentable as it has all other challenged claims.
`
`I.
`
`
`
`Claim 8
`
`Patent Owner’s argument regarding claim 8 improperly reads into the claim
`
`a requirement that the entirety of the “generally L-shaped slot” must at all times
`
`directly contact a “substantially L-shaped hook.” Importantly, Patent Owner
`
`admits that a portion of the L-shaped slot in Yu formed by bracket 185-5 and
`
`channel 51 directly contacts the L-shaped portion of bracket 26. (Paper No. 52 at 3
`
`(“[C]hannels 51 of Yu receive and engage the connector brackets 26”).
`
`Nonetheless, Patent Owner argues that Yu does not disclose a “generally L-shaped
`
`slot adapted to receive and engage a substantially L-shaped hook” (Ex. 1001 at
`
`claim 8) because purportedly “no surface of bracket 189-5 engages any surface of
`
`the connector bracket 26.” (Paper No. 52 at 2.)
`
`But the only disclosed embodiment relating to claim 8 in the ’901 patent
`
`depicts an “L-shaped hook formed on a wall accessory” that also does not
`
`“engage” every surface of the relevant slot, which is roughly J-shaped (not L-
`
`-1-
`US.121151581.01
`
`
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`shaped). (See Ex. 1001 at claim 8 and Figs. 8 & 9.) Patent Owner’s own annotated
`
`Figure 8 from the ’901 patent, reproduced below, illustrates this point by showing
`
`the non-contacting portions of the L-shaped hook within the L-shaped slot through
`
`gaps between the two highlighted in red. (Paper No. 9 at 45.)
`
`
`
`
`
`Accordingly, Patent Owner’s argument that the claimed “generally L-shaped
`
`channel” must always contact every portion of an “L-shaped hook” amounts to an
`
`untenable claim construction position that would not read on the only relevant
`
`embodiment in the patent.
`
`
`
`
`
`Patent Owner’s other argument relating to claim 8 also relies on an improper
`
`construction in order to assert that Yu’s connector bracket 26 does not “cantilever”
`
`(which Patent Owner contends requires a “free end”) from the L-shaped slot
`
`formed by bracket 189-5 and channel 51 in Yu. (Paper No. 52 at 4.) But the claim
`
`language only requires that the “generally L-shaped slot” be “adapted to receive
`
`and engage a substantially L-shaped hook.” (Ex. 1001 at claim 8.) Thus, claim 8
`
`
`US.121151581.01
`
`-2-
`
`
`
`does not require the presence of an L-shaped hook, only that the L-shaped slot be
`
`adapted to receive and engage an L-shaped hook, and plainly does not require a
`
`component with an L-shaped hook that “cantilevers” from the L-shaped channel
`
`according to Patent Owner’s construction of “cantilever.” The portions in Yu
`
`previously cited by Petitioner amply demonstrate that the “generally L-shaped
`
`channel” formed by bracket 185-5 and channel 51 are “adapted to receive and
`
`engage” a “substantially L-shaped hook,” i.e., bracket 26. (Petition at 35 (citing
`
`Ex. 1005 at 13:65-14:3;14:51-66; 24:51-60; 25:24-40; Figs. 2, 17A, 28, 30; Ex.
`
`1018, ¶ 155); see also Ex. 1038 at ¶¶ 5-7.) That is all claim 8 requires.
`
`II. Claims 11 and 13
`
`
`
`Petitioner’s argument for claim 11 is simple and is the same as it has always
`
`been: EVH discloses a leveling system that is connected via the EVH glide
`
`assemblies to structural components of the EVH support frame at the vertical posts.
`
`Like other components taught in EVH—for example, the distance channels (Paper
`
`No. 44 at 20)—a person of skill readily could have combined the leveling system
`
`of EVH with the modular wall system of Raith by connecting the EVH glide
`
`assemblies to the Raith vertical posts, and would have been motivated to do so.
`
`Further, as Dr. Beaman made clear in his initial report (Ex. 1018 ¶ 109),
`
`initial deposition (Ex. 2003 at 109:3-7), and most recent deposition (Ex. 2010 at
`
`25:10-21), while Raith specifically discusses roll-forming as the technique used to
`
`-3-
`US.121151581.01
`
`
`
`manufacture the embodiments depicted in Raith, roll-forming and extrusion are
`
`interchangeable manufacturing techniques that would result in the same finished
`
`structural components. Dr. Beaman and Petitioner have argued this point all along,
`
`including in the Petition, and the evidence developed during the trial has only built
`
`up the argument, which is the very purpose of the trial. See Genzyme Therapeutic
`
`Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The
`
`purpose of the trial . . . is . . . to build a record by introducing evidence.”).
`
`Tellingly, Patent Owner does not dispute that the ’901 patent itself teaches
`
`that the “structural extrusions” of Claim 11 can be, as in EVH or the combined
`
`EVH-Raith system, one and the same as the structural components of the module
`
`itself. (See Paper No. 48 at 6; Ex. 1001 at 8:6-12 & Fig. 16; Ex. 1038 at ¶¶ 10-11.)
`
`Instead, Patent Owner has completely ignored this point even though Petitioner’s
`
`obviousness combination directly implicates this embodiment of the claimed
`
`leveler system. (See Ex. 1001 at Fig. 16.)
`
`Rather than try to refute that the Raith/EVH combination reads on claim 11
`
`in the same way as the Figure 16 embodiment, Patent Owner focuses on what
`
`supposedly is missing from Beaman’s initial report and the Petition, which is
`
`incorrect as already discussed, and the notion that Raith expresses a preference for
`
`extrusion over roll forming. The Board has already rejected this teaching away
`
`argument. (See Paper No. 44 at 23 (“a reference does not teach away if it merely
`
`-4-
`US.121151581.01
`
`
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`expresses a general preference for an alternative . . . but does not criticize,
`
`discredit, or otherwise discourage investigation.”) (citation omitted).
`
`III. Claims 21-23
`
`
`
`Regarding claims 21-23, Patent Owner once again ignores the disclosure—
`
`here, more accurately, the lack of disclosure—found in its own patent. Patent
`
`Owner appears to pursuing a claim construction limiting “vertical end frame depth
`
`is extended” to configurations where certain vertical end frames are “deeper” than
`
`other end frames or where the depth of the vertical end frames can be adjusted.
`
`There is no support for either argument in the ’901 patent. Patent Owner
`
`points only to a circular statement that “the depth or thickness of the module can be
`
`selected by varying the width of frame 12 . . . [where] greater depth is needed”
`
`(Ex. 1001 at 5:9-13; Paper No. 52 at 12); in other words, “where greater depth is
`
`needed the frames can be made deeper.” Also, there is no disclosure of a “varying
`
`depth” (e.g., telescoping) end frame – only that frames can have different depths.
`
`MacGregor’s ubiquitous disclosure of frames that house componentry teaches this
`
`concept at least as clearly as the ’901 patent. And even if claims 21-23 were to
`
`require some frames to be “deeper” than others, Petitioner’s combined Raith/
`
`MacGregor system would meet this requirement: Raith depicts frames having
`
`“normal” depth (e.g., Ex. 1003 at Fig. 13); MacGregor adds “deeper” frames that
`
`house componentry (Ex. 1018 at ¶ 196 (citing examples in MacGregor).)
`
`-5-
`US.121151581.01
`
`
`
`
`Dated: December 12, 2018
`
`FAEGRE BAKER DANIELS LLP
`
`By:
`
`/R. Trevor Carter/
`R. Trevor Carter
`Reg. No. 40,549
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on December 12, 2018,
`
`I caused a true and correct copy of Petitioner’s Reply to Patent Owner’s
`
`Responsive Brief to be served via email, as a PDF attachment, on the following:
`
`Chad Nydegger
`cnydegger@wnlaw.com
`
`David Todd
`dtodd@wnlaw.com
`
`Michael J. Frodsham
`mfrodsham@wnlaw.com
`
`
`
`
`Dated: December 12, 2018
`
`
`
`
`
`
`
`
`
`
`
`Faegre Baker Daniels LLP
`300 N. Meridian St., Suite 2700
`Indianapolis, IN 46204
`Tel. (317) 237-0300
`trevor.carter@faegrebd.com
`
`
`
`US.121151581.01
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`-6-
`
`FAEGRE BAKER DANIELS LLP
`
`By:
`
`
`/R. Trevor Carter/
`R. Trevor Carter
`Reg. No. 40,549
`
`
`
`
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