UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`J&M MANUFACTURING CO., INC.,
`Petitioner
`
`v.
`
`UNVERFERTH MANUFACTURING CO., INC.,
`Patent Owner
`________________
`
`U.S. Patent No. 6,176,504
`
`
`DECLARATION OF ALBERT KARVELIS Ph.D., P.E.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,176,504
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`1
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`J&M MANUFACTURING CO., INC.,
`Petitioner
`
`v.
`
`UNVERFERTH MANUFACTURING CO., INC.,
`Patent Owner
`________________
`
`U.S. Patent No. 6,176,504
`
`
`DECLARATION OF ALBERT KARVELIS Ph.D., P.E.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,176,504
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`1
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`I, Albert Karvelis Ph.D., P.E., hereby declare as follows:
`
`INTRODUCTION – SCOPE
`
`1.
`
`I have been asked by counsel for Petitioner J&M Manufacturing Co., Inc.
`
`(“J&M” or “Petitioner”) to review U.S. Patent No. 6,176,5041 (“‘504
`
`patent”) titled “Short Steer Wagon,” issued to Van Mill et al., and assigned
`
`to Patent Owner Unverferth Manufacturing Co., Inc. (“Unverferth” or
`
`“Patent Owner”). I have also been asked to review the relevant prior art
`
`and to independently determine whether claims 1, 2, and 5 of the ‘504
`
`patent would have been anticipated and/or obvious to a person of ordinary
`
`skill in the art at the time of the claimed invention.
`
`QUALIFICATIONS
`
`2.
`
`I am a licensed professional engineer with over forty years of experience in
`
`industrial machinery and mechanisms. This experience includes R&D,
`
`design, manufacturing, and testing of machinery and mechanisms for a
`
`wide variety of industries including transportation technology and material
`
`handling equipment technology for the agricultural industry.
`
`
`1 I have been informed that this document will be submitted as Exhibit 1001 and
`
`have been asked to cite it as such.
`
`
`
`
`2
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`3.
`
`I am a Principal Engineer currently employed by Exponent Inc., an
`
`engineering and science consulting organization with over 800 engineers,
`
`scientists, physicians, and technical support staff located in six countries
`
`with 22 offices. I have also worked at Packer Engineering for 19 years,
`
`where I consulted on tractor trailers, agricultural equipment, suspensions,
`
`steering issues, and general mechanical design.
`
`4. While at Borg Warner Corporation, as Manager of Mechanical Engineering,
`
`I provided technical design support for Rockford Powertrain, a division of
`
`Borg Warner that served the agricultural equipment industry. My work
`
`included technical design and test support for couplings and universal/CV
`
`joints. I also worked on joint projects with John Deere (Deere & Company)
`
`on tractor related new product development. Additionally, I worked with
`
`General Motors Truck and Bus (GMC) and Ford Motor Co. on light truck
`
`suspension and drivetrain problems. My duties at Borg Warner Corporation
`
`further included developing mechanical design technology to be used in the
`
`transportation industry.
`
`5. While at Packer Engineering and Exponent Inc., I consulted for a Midwest
`
`manufacturer of specialized truck and trailers on steering and suspension
`
`issues. I have also assisted in the design of grain handling equipment,
`
`irrigation equipment, seed planting equipment, as well as performing
`
`
`
`
`3
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`studies of material handling equipment for grain. I have performed studies
`
`of steering stability for tractor trailers pulling two containers (doubles).
`
`6.
`
`I have served on the Industrial Advisory/Liaison Boards and as guest
`
`lecturer at MIT, Purdue University, Northwestern University, the University
`
`of Iowa, and Northern Illinois University, and have served as Adjunct
`
`Professor of Mechanical Engineering. I have served in numerous
`
`leadership positions in the Design Engineering Division of the American
`
`Society of Mechanical Engineers International (“ASME”) including Chair,
`
`ASME Power Transmission and Gearing Committee and session Chair and
`
`International Conference Chair for power transmission.
`
`7.
`
`I was first trained in patent matters while on active duty with the Office of
`
`Naval Research in approximately 1971. While employed at the Borg
`
`Warner Corporation, I represented the mechanical engineering arts on the
`
`Patent Committee.
`
`8.
`
`In recognition of my substantial contributions to the field of engineering, in
`
`2008 the American Society of Mechanical Engineering International named
`
`me an ASME Fellow.
`
`9.
`
`An expanded summary of my professional experience is contained in the
`
`Curriculum Vitae attached as Appendix 1.
`
`
`
`
`4
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`BACKGROUND OF THE RELEVANT TECHNOLOGY AND PRIOR ART
`
`
`Basic Wagon Design
`
`10.
`
`In the layperson’s parlance, most are familiar with wagons pulled by
`
`children or those used in yard work, and these have many features in
`
`common with wagons and trailers used in the agricultural industry. A
`
`wagon typically has an underlying frame with longitudinal frame members
`
`to which one or more axles are attached. For example, one axle is
`
`positioned near the front end, and one axle is positioned near the rear end,
`
`each axle typically having at least a pair of wheels. The front wheels are
`
`typically steerable. Because a wagon is generally pulled by a tow vehicle,
`
`the wagon includes an attachment structure such as a tongue, for example,
`
`which can be connected to and disconnected from the tow vehicle. The
`
`tongue is typically coupled to the front wheels so that the tongue’s side to
`
`side motion also moves the front wheels from side to side and thereby
`
`facilitates steering the wagon. Wagons are used to transport loads of
`
`materials via a bed, box, tank, etc. that is mounted to the upper side of the
`
`frame.
`
`11. As explained in the “Background of the Invention” section (“Background”)
`
`of the ‘504 patent: “Wagons are a traditionally and widely used form of
`
`transportation. Wagons are used to carry a wide variety of goods, including
`
`
`
`
`5
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`grains, livestock, dry goods, persons, liquids, machinery, etc.” (Ex. 1001 at
`
`col. 1, ll. 16-19). The Background of the ‘504 patent further explains:
`
`Wagons in their most basic form include a tongue, a
`frame, at least one pair of wheels, and a bed, box, or tank for
`hauling cargo. The tongue of the wagon may be connected to a
`vehicle, such as, for example, a tractor, truck, pickup harvester,
`or other self-propelled machine. A variety of wheels may be
`used, depending on the intended use.
`A common variation is the four-wheeled wagon, having
`pairs of wheels at either end of the wagon. The extra pair of
`wheels contribute [sic] to stability of the wagon and may also
`increase the load-carrying capacity. In a four-wheeled wagon,
`generally one pair of steerable wheels is capable of being
`pivoted in unison so that the wagon may be turned. The turning
`action is controlled by the tongue, which pivots the steerable
`wheels (i.e., the front wheels) by means of a steering rod or
`rods which connect the tongue to each steerable wheel. As the
`tongue is displaced to either side of a center position, both
`steerable wheels are therefore pivoted.
`In a conventional wagon construction, a frame is
`employed upon which the pairs of wheels are mounted. The
`tongue is pivotally attached to the front of the frame and
`connected to the steerable wheels through a steering linkage.
`The wheels and corresponding axles extend beyond the frame,
`but are positioned relatively near to the frame. This is because
`if the wheels extended far beyond the frame, excessive bending
`
`
`
`
`6
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`loads would be imposed on the axles, with possible breakage
`occurring as a result of heavy loads or due to traveling over
`rough roads or rough ground. Conventional wagon designs
`therefore have a frame positioned generally within about one-
`half of the wheel diameter from the wheel.
`(Ex. 1001 at col. 1, ll. 20-50).
`
`12.
`
`I will refer to these well-known and conventional wagons described in the
`
`Background of the ‘504 patent as “Admitted Prior Art Wagons.” Fig. 1 of
`
`the ‘504 patent depicts the undercarriage of one such Admitted Prior Art
`
`Wagon. (Ex. 1001 at col. 2, ll. 21-22, 34).
`
`13. Certain examples of conventional wagons that were on sale before the
`
`priority date of the ‘504 patent are shown in their respective trade
`
`publications. I have been informed that these trade publications will be
`
`submitted as Exhibits 1007-1012, and I have been asked to cite them as
`
`these Exhibits.
`
`14. First, “The Brent Grain Train” brochure was published in 1995 by
`
`Unverferth. (Ex. 1007; “Unverferth Grain Train Brochure”). The
`
`Unverferth Grain Train Brochure shows Brent model number 440, 540,
`
`640, and 740 wagons. (See Ex. 1007 at pg. 1). As an example, Figure A
`
`below shows a photograph of the models 440 and 540, adopted from this
`
`brochure. The Brent wagons shown in the Unverferth Grain Train
`
`
`
`
`7
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`Brochure are representative of the Admitted Prior Art Wagons described in
`
`the Background of the ‘504 patent outlined above in paragraph 11 and
`
`below in paragraph 63.
`
`Figure A. Adopted from Unverferth Grain Train Brochure (Ex. 1007 at pg.
`
`
`
`1).
`
`15. Second, the Parker “Gravity Wagons” brochure was published in 1996.
`
`(Ex. 1008; “Parker Brochure”). The Parker Brochure shows Parker model
`
`number 5250, 6250, and 7250 wagons. (See Ex. 1008 at pg. 1). As an
`
`example, Figure B below shows a photograph of the model 5250, adopted
`
`from this brochure. The Parker wagons shown in the Parker Brochure are
`
`representative of the Admitted Prior Art Wagons described in the
`
`
`
`
`8
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`Background of the ‘504 patent outlined above in paragraph 11 and below in
`
`paragraph 63.
`
`Figure B. Adopted from Parker Brochure (Ex. 1008 at pg. 2).
`
`
`16. Third, the Unverferth “High-Value Grain Deserves A High-Quality Ride”
`
`
`
`brochure was published in 1996. (Ex. 1009; “Unverferth 430/530/630
`
`Brochure”). The Unverferth 430/530/630 Brochure shows Unverferth
`
`model number 430, 530, and 630 wagons. (See Ex. 1009 at pgs. 1 and 2).
`
`As an example, Figure C below shows a photograph of the model 630,
`
`adopted from this brochure. The Unverferth wagons shown in the
`
`Unverferth 430/530/630 Brochure are representative of the Admitted Prior
`
`Art Wagons described in the Background of the ‘504 patent outlined above
`
`in paragraph 11 and below in paragraph 63.
`
`
`
`
`9
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`Figure C. Adopted from Unverferth 430/530/630 Brochure (Ex. 1009 at
`
`pgs. 1 and 3).
`
`17. Fourth, the Killbros “Model 555, Model 655: Grain Transport” brochure
`
`
`
`was published in 1997. (Ex. 1010; “Killbros 555/655 Brochure”). As an
`
`example, Figure D below shows a photograph of the model 555, adopted
`
`from this brochure. The Killbros models shown in the Killbros 555/655
`
`Brochure are representative of the Admitted Prior Art Wagons described in
`
`the Background of the ‘504 patent outlined above in paragraph 11 and
`
`below in paragraph 63.
`
`
`
`
`10
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`
`
`Figure D. Adopted from Killbros 555/655 Brochure (Ex. 1010 at pg. 1).
`
`18. Fifth, the Killbros “Model 390: Partitioned Gravity Grain Box” brochure
`
`was published in 1997. (Ex. 1011; “Killbros 390 Brochure”). The Killbros
`
`model number 390 grain box, shown in Figure E below, is representative of
`
`the Admitted Prior Art Wagons described in the Background of the ‘504
`
`patent outlined above in paragraph 11 and below in paragraph 63.
`
`
`
`
`11
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`
`
`Figure E. Adopted from Killbros 390 Brochure (Ex. 1011 at pg. 1).
`
`19. Sixth, the “Unverferth GB-335: The Bulk Material Handling Specialist”
`
`brochure was published in 1997. (Ex. 1012; “Unverferth GB-335
`
`Brochure”). The Unverferth model number GB-335 gravity box, shown in
`
`Figure F below, is representative of the Admitted Prior Art Wagons
`
`described in the Background of the ‘504 patent outline above in paragraph
`
`11 and below in paragraph 63.
`
`
`
`
`12
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`
`
`Figure F. Adopted from Unverferth GB-335 Brochure (Ex. 1012 at pg. 1).
`
`Indentations in Longitudinal Frame Members
`
`20. The prior art at the time the ‘504 patent was filed also included several
`
`disclosures of vehicles, including towed vehicles, having longitudinal frame
`
`members with indentations that allowed for improved turning ability of the
`
`corresponding steerable wheels.
`
`21. As a first example, U.S. Patent No. 1,741,873 to Nordine2 (“Nordine”)
`
`issued December 31, 1929. (Ex. 1002). Nordine is directed to “a frame for
`
`trailers or the like which is provided with indentations in the sides thereof
`
`into which the front wheels may extend when turning on a short radius.”
`
`
`2 I have been informed that this document will be submitted as Exhibit 1002 and
`
`have been asked to cite it as such.
`
`
`
`
`13
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(Ex. 1002 at pg. 1, ll. 1-5; see also pg. 1, ll. 17-19). Nordine further
`
`explains:
`
`[Side] members 2 and 3 are bent inward to the points 8 and 9
`between the points 10 and 11. It is understood that these
`points may be positioned so that the frame will clear a wheel of
`any suitable design or size and the depth of the indentations
`may be greater or lesser as may be desired.
`(Ex. 1002 at pg. 1, ll. 74-80; see also pg. 2, ll. 64-66 (“the said side
`
`members provided with indentations to clear the wheels when making a
`
`turn.”)). The frame members with inwardly oriented indentations of
`
`Nordine are shown in Fig. 1, an annotated version of which is reproduced
`
`below.
`
`Figure G. Adopted from Nordine (Ex. 1002 at Fig. 1) and annotated.
`
`
`
`
`
`
`14
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`22. Second, U.S. Patent No. 2,373,398 to Hoobler3 (“Hoobler”) issued April 10,
`
`1945. (Ex. 1003). Hoobler is directed, in part, to a trailer vehicle for
`
`highway transport. (Ex. 1003 at pg. 1, left col., ll. 1-2). Hoobler discloses
`
`that “the channel frame 24 comprising the frame [20] is preferably curved
`
`or bent inwardly at both sides between the pivot pins 32 and 43, as
`
`indicated at 54, to allow sufficient room for turning of the dual wheels 47
`
`carrying the dolly frame 21.” (Ex. 1003 at pg. 3, left col., ll. 8-13). The
`
`frame 20 with inwardly oriented indentations of Hoobler are shown in Fig.
`
`8, an annotated version of which is reproduced below.
`
`Figure H. Adopted from Hoobler (Ex. 1003 at Fig. 8) and annotated.
`
`
`
`
`3 I have been informed that this document will be submitted as Exhibit 1003 and
`
`have been asked to cite it as such.
`
`
`
`
`15
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`23. Third, U.S. Patent No. 1,731,557 to Wright4 (“Wright”) issued January 23,
`
`1926. (Ex. 1004). Wright is directed to a highway vehicle. (Ex. 1004 at
`
`Title). Wright discloses: “The frame of the truck is bent inwardly as at 26
`
`and at 27 to accommodate the wheels 14 and 15 when the truck is turning
`
`relative to the frame 11.” (Ex. 1004 at pg. 1, ll. 90-93; see also claim 2).
`
`The frame members with inwardly oriented indentations of Wright are
`
`shown in Fig. 3, an annotated version of which is reproduced below.
`
`Figure I. Adopted from Wright (Ex. 1004 at Fig. 3) and annotated. See
`
`also Ex. 1004 at Fig. 2.
`
`
`
`
`4 I have been informed that this document will be submitted as Exhibit 1004 and
`
`have been asked to cite it as such.
`
`
`
`
`16
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`24. Fourth, German Patent Application Publication No. 3046054 to Gobel5
`
`(“Gobel”) was published on June 9, 1982. (Ex. 1005). Gobel is directed to
`
`an agricultural vehicle. (Ex. 1005 at pg. 2, ¶¶ 1, 2). Gobel discloses that
`
`“longitudinal carriers 2 are bent toward the vehicle center 13,” such that
`
`“the wheel on the inside of the curve engages into the bent the [sic] area of
`
`the carrier frame 15.” (Ex. 1005 at pg. 3, ¶ 2). Gobel explicitly refers to
`
`the bent areas of the longitudinal carriers as “frame indent[s]” and explains
`
`that the frame indents “create[] additional space for the locked front
`
`wheels” (Ex. 1005 at pg. 2, ¶ 6), such that “a small turning radius can be
`
`achieved.” (Ex. 1005 at pg. 2, ¶ 4). The frame with inwardly oriented
`
`indentations of Gobel is shown in Fig. 2, an annotated version of which is
`
`reproduced below.
`
`
`5 I have been informed that this document will be submitted as Exhibit 1005 and
`
`have been asked to cite it as such.
`
`
`
`
`17
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`
`
`Figure J. Adopted from Gobel (Ex. 1005 at Fig. 2) and annotated.
`
`25. Fifth, Japanese Patent Application Publication No. S60-104468 to Kataue6
`
`et al. (“Kataue”) was published June 8, 1985. (Ex. 1006). Kataue is
`
`directed to a body frame for a tractor. (Ex. 1006 at Title). Kataue discloses
`
`that a portion of the left and right frames (1) are “formed with a sufficiently
`
`
`6 I have been informed that this document will be submitted as Exhibit 1006 and
`
`have been asked to cite it as such.
`
`
`
`
`18
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`narrow disposed spacing” therebetween so that “a steering turning angle of
`
`the front wheels (8)(8) that steer and turn near the narrow formed section
`
`can be sufficiently sharp.” (Ex. 1006 at pg. 2, ¶ 3; see also pg. 2, ¶ 1
`
`(“[T]he left and right frames preferably have a small cross section . . . in
`
`order to reduce the turning radius, a disposed spacing between the left and
`
`right frames is preferably as narrow as possible, and it is particularly
`
`preferred to be narrower in the area where a front wheel turns.”)). The
`
`narrowing of the left and frames results in inwardly oriented indentations in
`
`the frames, as shown in Fig. 2, an annotated version of which is reproduced
`
`below.
`
`Figure K. Adopted from Kataue (Ex. 1006 at Fig. 2) and annotated.
`
`
`
`
`
`
`19
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`SUMMARY OF THE ‘504 PATENT
`
`26. The ‘504 patent describes a short steer wagon having an improved turning
`
`capability. While the title of the ‘504 patent states that it is directed to a
`
`“wagon,” the disclosure of the ‘504 patent is actually limited to wagon
`
`undercarriages. For example, the claims and detailed description of the
`
`preferred embodiments do not discuss any container portion to be used on
`
`the claimed “wagons.” (See generally Ex. 1001). Moreover, the figures
`
`show only the undercarriage. (Ex. 1001 at Figs. 1-4.)
`
`27. The ‘504 patent teaches the basic structure and function of known,
`
`conventional wagons. (Ex. 1001 at col. 1, ll. 16-55; col. 2, ll. 34-38; Fig.
`
`1). As noted above, I will refer to these conventional wagons described in
`
`the Background of the ‘504 patent as “Admitted Prior Art Wagons.” In the
`
`Admitted Prior Art Wagons disclosed in the ‘504 patent, the turning radius
`
`is limited by contact between the steerable wheels and the longitudinal
`
`frame members. (Ex. 1001 at col. 1, ll. 52-54) (“The proximity of the frame
`
`limits the ability of the steerable wheels to pivot, and thereby limits the
`
`turning radius of the wagon.”). This interference point geometrically limits
`
`the maximum steering angle. Based on the prior art mentioned above, it
`
`was known for at least 70 years before the priority date of the ‘504 patent
`
`that improved turning capability could be achieved by indenting the
`
`
`
`
`20
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`longitudinal frame members so that the original interference point is
`
`displaced inwardly, thus permitting a greater turning angle and
`
`consequently a comparatively smaller minimum turning radius.
`
`28.
`
`It is clear that the indentations in the longitudinal frame members shown in
`
`Fig. 2 of the ‘504 patent are the sole inventive concept of the ‘504 patent.
`
`See the below comparison of Fig. 1 of the ‘504 patent, which shows an
`
`Admitted Prior Art Wagon (Ex. 1001 at col. 2, ll. 20-21, 34-37), and Fig. 2
`
`of the ‘504 patent, which shows an embodiment of the claimed invention
`
`(Ex. 1001 at col. 2, ll. 22-25).
`
`
`
`
`
`
`21
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`Figure L. Adopted from the ‘504 patent (Ex. 1001 at Figs. 1 and 2) and
`
`annotated. 7
`
`29. Claims 1, 2, and 5 of the ‘504 patent are set forth below:8
`
`Claim 1. A wagon having two opposed ends and two opposed
`sides extending between the opposed ends, the wagon further
`comprising:
`a.
`a pair of wheels at each of said opposed ends;
`b.
`a frame having at least one longitudinal frame member
`c.
`a tongue having a rear portion connected to a frame of
`said wagon and having a front portion adapted for
`connection to a vehicle;
`at least one said pair of wheels being steerable to right
`and left sides and connected to a rear portion of said
`tongue for steering with said tongue, with a wheel
`having a leading edge facing toward an end of said
`wagon and a trailing edge facing toward a central
`portion of said wagon;
`said wagon having a longitudinal frame member on each
`side, each longitudinal frame member having an outer
`
`d.
`
`e.
`
`
`7 Figs. 1 and 2 were edited for this comparison. Fig. 1 was flipped to the same
`
`orientation as Fig. 2. All reference numerals and leader lines were removed from
`
`both figures. A portion of the bed framing in Fig. 1 was grayed out.
`
`8 Letters have been added for ease of future reference to the claim elements.
`
`
`
`
`22
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`f.
`
`g.
`
`edge portion on an intermediate portion of said
`longitudinal frame member;
`said steerable wheels being completely outside said
`longitudinal frame members when said steerable wheels
`are oriented in a straight running direction; and
`each longitudinal frame member including an inwardly
`oriented indentation adjacent said trailing edge of each
`corresponding steerable wheel, each said indentation
`allowing said corresponding steerable wheel to be turned
`so that said trailing edge of said corresponding steerable
`wheel is positioned inwardly with respect to said outer
`edge portion of a corresponding longitudinal frame
`member.
`
`Claim 2. The wagon of claim 1, wherein a lateral frame
`member extends across each end of said wagon, with said
`lateral frame member being positioned adjacent to said leading
`edge of said steerable wheel wherein said steerable wheel can
`be turned so that said leading edge of said steerable wheel is
`positioned inwardly with respect to said outer edge portion of a
`corresponding longitudinal frame member.
`
`Claim 5. The wagon of claim 1, wherein said indentations
`permit a greater turning angle for said pair of wheels than
`would be obtainable without said indentations.
`
`(Ex. 1001 at col. 3, l. 29 – col. 4, l. 34).
`
`
`
`
`23
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`30. The Admitted Prior Art Wagon in Fig. 1 and the embodiment of the
`
`claimed wagon depicted in Fig. 2 both have elements (a)-(f) of claim 1 as
`
`shown in the table below. The only structural difference between the
`
`Admitted Prior Art Wagon shown in Fig. 1 and the embodiment of the
`
`claimed wagon depicted in Fig. 2 is the “indentations” in the longitudinal
`
`frame members, which is element (g) of claim 1.
`
`
`
`Table 1.
`
`A wagon having
`two opposed ends
`and two opposed
`sides extending
`between the
`opposed ends, the
`wagon further
`comprising:
`
`
`
`
`
`
`
`
`
`
`24
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(a) a pair of
`wheels at each of
`said opposed
`ends;
`
`
`
`
`
`
`
`
`
`
`25
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(b) a frame having
`at least one
`longitudinal frame
`member
`
`
`
`
`
`
`
`
`
`
`26
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(c) a tongue
`having a rear
`portion connected
`to a frame of said
`wagon and having
`a front portion
`adapted for
`connection to a
`vehicle;
`
`
`
`
`
`
`
`
`
`
`27
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(d) at least one
`said pair of wheels
`being steerable to
`right and left sides
`and connected to a
`rear portion of
`said tongue for
`steering with said
`tongue, with a
`wheel having a
`leading edge
`facing toward an
`end of said wagon
`and a trailing edge
`facing toward a
`central portion of
`said wagon;
`
`
`
`
`
`
`
`
`
`
`28
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(e) said wagon
`having a
`longitudinal frame
`member on each
`side, each
`longitudinal frame
`member having an
`outer edge portion
`on an intermediate
`portion of said
`longitudinal frame
`member; [and]
`
`
`
`
`
`
`
`
`
`
`29
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`(f) said steerable
`wheels being
`completely
`outside said
`longitudinal frame
`members when
`said steerable
`wheels are
`oriented in a
`straight running
`direction[.]
`
`
`
`
`
`
`
`PROSECUTION HISTORY
`
`31. Application Serial No. 09/399,099 (“the ‘099 application”), which issued as
`
`the ‘504 patent, was filed on September 20, 1999, claiming priority to
`
`Provisional Application No. 60/101,950, which was filed on September 25,
`
`1998. (See Ex. 1001).
`
`32.
`
`I have reviewed the prosecution history of the ‘099 application. The
`
`Examiner allowed the ‘099 application without issuing an Office Action.
`
`(See Ex. 1012). A telephonic Examiner Interview was conducted on
`
`
`
`
`30
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`September 19, 2000, during which the Examiner and a representative for
`
`Applicant Unverferth discussed prior art reference GB 2,300,839 to
`
`Wheeler (“Wheeler”) and suggested claim amendments that were then
`
`reflected in an Examiner Amendment. (Ex. 1012 at 30). The Examiner
`
`Amendment to claim 1 consisted of the addition of the phrase “a frame
`
`having at least one longitudinal frame member,” amending “connected to a
`
`rear portion of a corresponding tongue for steering” to “connected to a rear
`
`portion of said tongue for steering with said tongue,” and amending “an
`
`intermediate portion of said longitudinal member” to “an intermediate
`
`portion of said longitudinal frame member.” (Ex. 1012 at 32; see also Ex.
`
`1012 at 18). Following the Examiner Interview, the Examiner issued a
`
`Notice of Allowability. (See Ex. 1012 at 31). As his Statement of Reasons
`
`for Allowance, the Examiner stated: “The limitation of a [sic]
`
`<<wheels…connected to a …tongue for steering with said tongue >> of
`
`lines 7 – 9, together with the remaining limitations in claim 1; has not been
`
`found in the art.” (Ex. 1012 at 32). The ‘504 patent issued on January 23,
`
`2001. (See Ex. 1001).
`
`33. None of the prior art discussed in my declaration was of record during
`
`prosecution of the ‘504 patent. It is my opinion that all of the references
`
`
`
`
`31
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`cited herein are more relevant and are stronger than the Wheeler reference
`
`that was discussed during the Examiner Interview.
`
`LEGAL PRINCIPLES
`
`34.
`
`I have been informed that a claim is anticipated when each and every
`
`element of the claim is found in a single prior art reference.
`
`35.
`
`I have been informed that, even if every element of a claim is not found
`
`explicitly or inherently in a single prior art reference, the claim may still be
`
`unpatentable if the differences between the claimed elements and the prior
`
`art are such that the subject matter as a whole would have been obvious at
`
`the time the invention was made to a person of ordinary skill in the
`
`art. That is, the invention may be obvious to a person of ordinary skill in
`
`the art when seen in light of one or more references.
`
`36.
`
`I have been informed that a person of ordinary skill in the art can be
`
`assumed to have before him/her all of the relevant prior art.
`
`37.
`
`I have been informed that a claim is obvious when it is only a combination
`
`of old and known elements, with no change in their respective functions,
`
`and that these familiar elements are combined according to known methods
`
`to obtain predictable results.
`
`38.
`
`I have further been informed that some examples of rationales that may
`
`support a conclusion of obviousness include:
`
`
`
`
`32
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
` Combining prior art elements according to known methods to yield
`
`predictable results;
`
` Simple substitution of one known element for another to obtain
`
`predictable results;
`
` Use of known techniques to improve similar devices (or products) in
`
`the same way (e.g., obvious design choices);
`
` Applying a known technique to a known device (or product) ready
`
`for improvement to yield predictable results;
`
` Choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success—i.e., “obvious to try”;
`
` Known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to
`
`the person of ordinary skill in the art; and
`
` Some teaching, suggestion, or motivation in the prior art that would
`
`have led the person of ordinary skill in the art to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`39.
`
`I have also been informed that the rationale to combine prior art references
`
`can come from a variety of sources, not just the prior art itself or the
`
`
`
`
`33
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`specific problem the patentee was trying to solve. And I understand that the
`
`references themselves need not provide a specific hint or suggestion of the
`
`alteration needed to arrive at the claimed invention; the analysis may
`
`include recourse to logic, judgment, and common sense available to the
`
`person of ordinary skill that does not necessarily require explanation in any
`
`reference.
`
`40.
`
`I have been informed that the following four factors are considered when
`
`determining whether a patent claim is obvious: (1) the scope and content of
`
`the prior art; (2) the differences between the prior art and the claim; (3) the
`
`level of ordinary skill in the art; and (4) secondary considerations tending to
`
`prove obviousness or nonobviousness.
`
`41.
`
`I have also been informed that the courts have established a collection of
`
`secondary factors of nonobviousness, which include: unexpected,
`
`surprising, or unusual results; prior art that teaches away from the alleged
`
`invention; substantially superior results; synergistic results; long-standing
`
`need; commercial success; and copying by others. I have further been
`
`informed that there must be a connection, or nexus, between these
`
`secondary factors and the scope of the claim language.
`
`
`
`
`34
`
`
`EXHIBIT 1014
`IPR Petition for U.S. Patent No. 6,176,504
`
`
`
`42.
`
`I understand that an invalidity analysis requires first that the claims be
`
`construed. After the claims are construed, they are compared to the prior
`
`art.
`
`43.
`
`I have been advised by counsel that, absent any explicit teaching by the
`
`inventor, the ordinary and customary meanings of the terms in the patent
`
`are to be applied. Further, I have been informed that the application of the
`
`claim term should use the “broadest reasonable interpretation.”
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`44. The ‘504 patent describes a straightforward modification of the longitudinal
`
`frame members of the Admitted Prior Art Wagons, consisting of adding
`
`indentations to longitudinal frame members to allow improved turning
`
`ability, such as decreased turning radiu
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
