Case No. IPR2019-00500
`Patent No. 9,737,154
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`AMERICAN NATIONAL MANUFACTURING INC.,
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`Patent Owner.
`
`____________
`
`Case No. IPR2019-00500
`
`Patent No. 9,737,154
`____________
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`WA 14196489.2
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`

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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`
`I.
`
`II. CLAIM CONSTRUCTION ........................................................................... 1
`
`A. Petitioner Sets Forth a Construction of “Pressure Sensing Means” ............. 1
`
`B. PO’s Claim Constructions Are Improper .................................................... 2
`
`1.
`
`2.
`
`“desired pressure setpoint” ..................................................................... 2
`
`“pressure target” ..................................................................................... 3
`
`PETITIONER’S ARGUMENTS ARE SUPPORTED BY THE PETITION
`III.
`AND THE RECORD ............................................................................................. 4
`
`THE ASSERTED PRIOR ART IS ANALAGOUS, RELATED TO THE
`IV.
`FIELD OF ENDEAVOUR, AND SOLVES THE PROBLEM IDENTIFIED AND
`CLAIMED BY MAHONEY .................................................................................. 5
`
`A. The Asserted Secondary References Are From The Same Field Considered
`Relevant by the Inventor and Examiner ............................................................. 6
`
`B. The Asserted Secondary References Are In The Field of Pneumatics And
`Solve The Known Problem of Remote Sensing Encountered by the Inventor .... 8
`
`1. The secondary References are Reasonably Pertinent to the Problem
`Encountered by Mahoney ............................................................................... 9
`
`V. THERE IS A MOTIVATION TO COMBINE THE ASSERTED PRIOR ART
`REFERENCES .....................................................................................................11
`
`A. A POSITA Would Be Motivated to Combine Gifft with Mittal .................14
`
`B. A POSITA Would Be Motivated to Combine Gifft or Mittal with Pillsbury
`
`17
`
`C. A POSITA Would Be Motivated to Combine Gifft-Mittal-Pillsbury with
`Ebel 18
`
`VI.
`
`PETITIONER HAS MAPPED THE CLAIMS TO THE PRIOR ART ......18
`
`PO’S ASSERTED SECONDARY CONSIDERATIONS DO NOT
`VII.
`OVERCOME THE OVERWHELMING CASE OF OBVIOUSNESS .................19
`
`A. A showing of Nexus is Deficient ...............................................................19
`
`B.
`
`Industry Praise ..........................................................................................21
`
`C. Copying ....................................................................................................22
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`D. Commercial Success .................................................................................24
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`E. Unexpected Results ...................................................................................26
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`VIII. THE PETITION IS PROCEDURALLY SUFFICIENT ............................27
`
`A. Service is Proper .......................................................................................27
`
`B. Petition Content is Sufficient .....................................................................27
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`IX.
`
`CONCLUSION .........................................................................................28
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`Case No. IPR2019-00500
`Patent No. 9,737,154
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`
`Airbus S.A.S. v. Firepass Corp.,
`941 F.3d 1374 (Fed. Cir. 2019) .......................................................................... 5
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 4
`
`Bristol-Myers Squibb Co. v. Teva Pharm. USA, Inc.,
`769 F.3d 1339 (Fed. Cir. 2014) ........................................................................ 25
`
`Ex Parte
`C, 27 U.S.P.Q.2d 1492 (Bd. Pat. Appendix & Interf. 1992) ............................. 25
`
`Danmark v. CMI USA, Inc.,
`100 F.Supp.3d 871 (N.D. Cal., 2015) ............................................................... 10
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`567 F.3d 1314 (Fed. Cir. 2009) ........................................................................ 15
`
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .................................................................. 18, 19
`
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) .......................................................................... 23
`
`In re ICON Health and Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) .......................................................................... 8
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .......................................................................... 4
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................. 3, 7, 12
`
`In re Merck & Co. Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) ........................................................................ 15
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`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) ........................................................................ 11
`
`Qualtrics Labs, Inc. v. OpinionLab, Inc.,
`IPR2014-00421, Paper 42 .......................................................................... 20, 23
`
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ........................................................................ 12
`
`Sleep Number Corporation v. American National Manufacturing, Inc.,
`No. 5:18-cv-0357-AB (C.D. Cal. filed Feb. 20, 2018) .................................. i, 31
`
`Sleep Number Corporation v. Sizewise Rentals, L.L.C.,
`No. 5:18-cv-0356-AB (C.D. Cal. filed Feb. 20, 2018) ....................................... i
`
`In re Wood,
`599 F.2d 1032 (C.C.P.A. 1979) .......................................................................... 5
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`1001
`1002
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`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
`1023
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`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent 9,737,154 (“Mahoney”)
`Relevant excerpts of the File History of U.S. Patent 9,737,154
`(Appl. 14/283,675)
`Claim Listing
`U.S. Patent 5,904,172 (“Gifft”)
`U.S. Patent 5,629,873 (“Mittal”)
`U.S. Patent 5,277,187 (“Pillsbury”)
`U.S. Patent Publication 2007/0000559 (“Ebel”)
`U.S. Patent No. 6,088,642 (“Finkelstein”)
`Declaration of Dr. Joshua Phinney (“Phinney”)
`Curriculum vitae of Dr. Joshua Phinney
`U.S. Patent 6,686,711 (“Rose”)
`U.S. Patent 7,022,113 (“Lockwood”)
`U.S. Patent 5,735,267 (“Tobia”)
`PCT Publication WO2007/016054 (“Bhai”)
`U.S. Publication 2004/0186630 (“Shire”)
`First Amended Complaint in Sleep Number Corporation v.
`Sizewise Rentals, L.L.C., No. 5:18-cv-0356-AB (SPx) (C.D. Cal.
`filed Feb. 20, 2018)
`First Amended Complaint in Sleep Number Corporation v.
`American National Manufacturing, Inc., No. 5:18-cv-0357-AB
`(SPx) (C.D. Cal. filed Feb. 20, 2018)
`Declaration of Kyle L. Elliott In Support of Petitioner’s Reply
`Regarding Service
`February 12, 2019 In Chambers Order Granting Defendants’
`Motion to Stay (EDCV 18-00356AB (SPx), Dkt. No. 133; EDCV
`18-00357 AB (SPx), Dkt. No. 134)
`Federal Express Delivery Confirmation of 9,737,154 Inter Partes
`Review Petition to Fox Rothschild LLP
`Federal Express Delivery Confirmation of 9,737,154 Inter Partes
`Review Petition to Fish and Richardson P.C.
`January 10, 2019 Email from Luke Toft re: IPR Service
`Executed Service of Summons in USDC Northern District of
`Texas, Sleep Number Corporation v. American National
`Manufacturing, Inc., 3:17-cv-03517-B
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
`1035
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`1036
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`1037
`1038
`1039
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`1040
`1041
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`November 16, 2017 Change of Name Assignment Recordal (Reel:
`044784/Frame: 0925); Conveying Party: Select Comfort
`Corporation, Receiving Party: Sleep Number Corporation
`January 11, 2019 Email from Luke Toft to the Board regarding
`Service of Inter Partes Review Petitions for IPR2019-00497,
`IPR2019-00500, and IPR2019-00514
`February 12, 2019 Joint Stipulation Regarding Stay of District
`Court Actions; Case Nos. 5:18-cv-00356 AB (SPx), 5:18-cv-00357
`(Dkt. 141)
`September 5, 2019 Teleconference Transcript regarding request for
`additional discovery and exceed pages
`Dun & Bradstreet Screen Capture – Sleep Number Corporation
`Profile
`Dun & Bradstreet Screen Capture – American National
`Manufacturing Inc. Profile
`Plaintiff’s First Supplemental Responses to Defendants’ First Set of
`Interrogatories (Nos. 1-9); UDSC Central District California 5:18-
`cv-00356/00357
`Joint Stipulation to Use ITC 337-TA-971 Discovery in District
`Court action (5:18-cv-00357, Dkt. 89)
`Third Request to Meet & Confer Regarding Non-Compliance with
`Discovery communication from Jaspal Hare to Elizabeth Patton
`dated October 19, 2018 (UDSC Central District California 5:18-cv-
`00356/00357)
`Declaration of Craig S. Miller in Support of Petitioner's Opposition
`to Patent Owner's Motion for Additional Discovery (Redacted &
`Under Seal)
`IPR 5 - Nautilus Warranty Exposure (Under Seal)
`Declaration of Kyle L. Elliott in Support of Petitioner's Opposition
`to Patent Owner's Motion for Additional Discovery
`2019-09-12 Petitioner's Ex Parte Application to Amend Protective
`Order [-357, Dkt. 165]
`Transcript of December 4, 2019 Deposition of Robert Nunn
`Transcript of December 5, 2019 Deposition of George Edwards
`Transcript of December 6, 2019 Deposition of George Edwards –
`Under Seal, redacted version filed publicly
`2019-12-19 Petitioner's Proposed Additional Discovery Requests
`2019-12-19 Bear Declaration in Support of Mtn for Addt'l
`Discovery
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`1042
`1043
`1044
`1045
`1046
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`1047
`1048
`1049
`1050
`1051
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`1052
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`1053
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`1054
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`1055
`1056
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`1057
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`1058
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`1059
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`1060
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`1061
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`Sleep Number 10K 2019
`About Us Sleep Number Corporation
`Sleep Number For Immediate Release
`2012-11-16 USDC Minn Initial Complaint [Doc 1]
`Declaration of Dr. Joshua Phinney in Support of Petitioner’s
`Opposition to Patent Owner’s Motion to Amend
`US Patent No. 6,008,598 (Luff)
`US Patent No. 7,852,208 (Collins)
`US Patent No. 7,319,386 (Collins)
`US Patent Application No. 60/773,286 (Collins)
`Transcript of January 9, 2020 Deposition of Paul J. Mahoney –
`Under Seal, redacted version filed publicly
`Transcript of December 11, 2019 Deposition of William C.
`Messner, Ph.D.
`Transcript of December 12, 2019 Deposition of William C.
`Messner, Ph.D.
`Transcript of December 18, 2019 Deposition of John P. Abraham,
`Ph.D.
`Transcript of January 8, 2020 Deposition of Carl Degen
`Declaration of Matthew Lynde in Support of Petitioner’s Reply to
`Patent Owner’s Response
`Declaration of Craig Miller, Jr. in Support of Petitioner’s Reply to
`Patent Owner’s Response - Under Seal, redacted version filed
`publicly
`Exhibit 1 to Craig Miller Declaration – Identification of
`Spreadsheet Column Headings
`Exhibit 2 to Craig Miller Declaration – Dires Record of Sleep
`Number Actions
`Exhibit 3 to Craig Miller Declaration – Dires Financial Statements;
`Under Seal, redacted version filed publicly
`Declaration of Joshua Phinney is Support of Petitioner’s Reply
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`Case No. IPR2019-00500
`Patent No. 9,737,154
`I.
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`INTRODUCTION
`
`Nothing in Patent Owner’s Response (“POR”; Paper 46) refutes the strong
`
`grounds for obviousness in the Petition for Inter Partes Review (“Pet.”; Paper No.
`
`2) of U.S. Patent No. 9,737,154 (“’154 Patent” or “Mahoney”; Ex. 1001) that led
`
`this Board to institute this Inter Partes Review (“IPR”) (“Institution”, Paper 11) on
`
`challenged claims 1-22, and Patent Owner (“PO’s”) secondary considerations,
`
`lacking inter alia nexus, are insufficient to show non-obviousness of the ‘154 Patent
`
`claims. The claimed air bed was well known in the prior art, as well as the allegedly
`
`novel system and method of sensing and adjusting air pressure in an air chamber
`
`being adjusted at a point remote from the pressure sensor.
`
`II.
`
`CLAIM CONSTRUCTION
`
`A.
`
`Petitioner Sets Forth a Construction of “Pressure Sensing Means”
`
`Petitioner has provided a construction of “pressure sensing means” applicable
`
`to claims 20-22 in compliance with 37 CFR § 42.104(b)(3). Claim 20 includes the
`
`term “pressure sensing means” in limitation 20d-e. Pet. 54; Ex. 1001, 15:24-25.
`
`Petitioner’s position on a construction of “pressure sensing means” identifies the
`
`function as “configured to monitor pressure,” and the structure as “a pressure
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`monitoring port that defines an opening into the pump manifold, a tube [that]
`
`connects the pressure monitoring port to a pressure transducer, [and] a pressure
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`transducer [that] is operably coupled to the processor” and analogizing this known
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`structural and functional relationship to that of Gifft. Pet. 54, 38-39. Petitioner has
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`previously identified support in the specification for such structure in reference to
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`FIG. 2 as “[a] pressure transducer 46 senses pressure within the pump manifold 43
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`internal to the pump 20 and communicates with the microprocessor 36,” and that it
`
`is similar to Gifft. Pet. 5 (citing Ex. 1001, 4:20-29; Ex. 1009 ¶72). PO fails to address
`
`a construction for “pressure sensing means.” POR 14-15.
`
`B.
`
`PO’s Claim Constructions Are Improper
`
`1.
`
`“desired pressure setpoint”
`
`PO’s construction of “desired pressure setpoint” as “a value that represents a
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`selected pressure” (POR at 15-16) should be rejected because it reads an ambiguous
`
`expression into the limitation, is without support in the claims and specification, and
`
`is inconsistent with how the term is understood by a POSITA. Pet. 13-14; Ex. 1009
`
`¶21; Ex. 1061 ¶6. This “desired pressure setpoint” must be a pressure reading.
`
`The ‘154 Patent does not ascribe a value that represents a selected pressure to
`
`the term “desired pressure setpoint.” Ex. 1061 ¶7. In the claims, the “desired pressure
`
`setpoint” is compared to the sensed pressure “within the pump housing” and “the
`
`“actual chamber pressure” with the air chamber of the air bed. Ex. 1001, Claim 1. A
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`“pressure transducer 46” is the only instrument described as determining, sensing,
`
`or reading pressure within the pump housing or air chamber, and this pressure
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`information appears on the user remote control 22. Ex. 1001, 4:36-39; Ex. 1061 ¶7.
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`The microprocessor compares the manifold pressure to the user desired pressure to
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`make further adjustment determinations. Ex. 1001, 8:7-35. In the claims the pressure
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`readings are used to perform pressure calculations involving the “desired pressure
`
`setpoint,” so, this “pressure setpoint” must also be a pressure, and not construed to
`
`further include a “value that represents…..” Ex. 1009 ¶21; Ex. 1061 ¶8.
`
`2.
`
`“pressure target”
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`PO’s construction of “pressure target” as “a value representing desired level
`
`of inflation or deflation” (POR 17-18) should be rejected because it reads an
`
`ambiguous expression into the limitation, is without support in the claims and
`
`specification, and is inconsistent with how the term is understood by a POSITA. Ex.
`
`1061 ¶9. The “pressure target” must be a pressure.
`
`As addressed above with the incorporation of “value” into the construction of
`
`“desired pressure setpoint,” the ‘154 Patent does not use the word “desired” or
`
`ascribe a value that represents a pressure to the term “pressure target.” Id. at ¶10.
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`The “pressure” is commensurate with a pressure reading. Id. The deflate “pressure
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`target” and inflate “pressure target” correspond to the sensed manifold pressure that
`
`will yield a desired pressure setpoint, and is used as a basis for other pressure
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`calculations. Ex. 1001, 8:36-42, 62-67. Only a “pressure transducer 46” is described
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`as sensing the pressure in the pump housing, so, this “pressure setpoint” must also
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`be a pressure, and not construed to further include a “value representing desired
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`level….” Ex. 1001, 4:36-39.
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`III. PETITIONER’S ARGUMENTS ARE SUPPORTED BY THE PETITION
`AND THE RECORD
`
`The Petition, and Dr. Phinney’s analysis have explained the known problems
`
`and solutions in remote pressure monitoring compensated by pneumatic controllers
`
`using control logic principles, as applied by a POSITA to the simple, known
`
`structure of Gifft, would predictably lead to the solution claimed by Mahoney. The
`
`Petition and Dr. Phinney have explained how and why the teachings of the prior art
`
`would be combined. “A person of ordinary skill is also a person of ordinary
`
`creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
`
`(2007).
`
`Petitioner has explained how the subject matter of Mahoney was known, and
`
`that the well-known problem of remote sensing of pressure has generated control
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`logic solutions well within the technical grasp of a POSITA. Pet. 9-10, Ex. 1009
`
`¶¶42-69. Petitioner has explained why a POSITA would apply the teachings of the
`
`secondary references inflation/deflation control systems to increase the speed and
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`accuracy of adjusting pressure in the air chamber of the admitted prior art air bed of
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`Gifft. Pet. 25-28 (citing Ex. 1009 ¶¶103-107), 61-63 (citing Ex. 1009 ¶¶243-246).
`
`Petitioner has described the POSITA as having computer programming skills (Pet.
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`10; Ex. 1009 ¶18) which is consistent with the relevant prior art (Institution 9-10).
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`Petitioner has explained why and how a POSITA would take these known pressure
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`sensing techniques, apply them to Gifft, and would predictably obtain similar results.
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`Pet. 25-28, 61-63. PO’s expert admits that only minimal programming would be
`
`necessary to include the additional offsets functionality of the secondary references
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`with Gifft. Ex. 1053, 328:22-331:9. Even though a prior art reference does not
`
`include the same words as the claim, it can address the same concepts. Ex. 2042,
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`267:5-8. Thus, modifying Gifft in view of the secondary references was within the
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`technological knowledge and grasp of a POSITA and they would have been able to
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`successfully implement the known control logic solutions into admitted prior art
`
`Gifft to solve the pressure sensing problem of Mahoney reflected in the challenged
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`claims. Ex. 1061 ¶¶16-19.
`
`IV. THE ASSERTED PRIOR ART IS ANALAGOUS, RELATED TO THE
`FIELD OF ENDEAVOUR, AND SOLVES THE PROBLEM IDENTIFIED
`AND CLAIMED BY MAHONEY
`
`Prior art is applicable as a reference in an obviousness determination if it is
`
`deemed analogous to the claimed invention. In re Klein, 647 F.3d 1343, 1348 (Fed.
`
`Cir. 2011). Prior art is analogous if: (1) “the art is from the same field of endeavor,
`
`regardless of the problem addressed and, (2) if the reference is not within the field
`
`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
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`2325 (Fed. Cir. 2004).
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`The ‘154 Patent and prior art are in the same field of adjusting pressures in an
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`inflatable object, and the asserted secondary references address the well-known
`
`fundamental problem in the field of pneumatic control systems, namely sensing
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`pressure at a location separate from the pressurized volume and compensating for
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`the discrepancy to quickly adjust the pressure and determine an accurate pressure.
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`Pet. at 17. PO does not challenge the admitted prior art primary reference Gifft as
`
`non-analogous. Pet. 19; Ex. 1001, 1:28-35.
`
`A.
`
`The Asserted Secondary References Are From The Same Field
`Considered Relevant by the Inventor and Examiner
`
`The applicable field is determined by the knowledge of an inventor and their
`
`patent application. An inventor is presumed to have knowledge of “all the prior art
`
`in the field of his endeavor.” In re Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979). In
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`addition, “[t]o determine the applicable field of endeavor, the factfinder must
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`consider ‘explanations of the invention’s subject matter in the patent application,
`
`including the embodiments, function, and structure of the claimed invention.’”
`
`Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380 (Fed. Cir. 2019) (citing Bigio,
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`381 F.3d at 1325). Despite PO’s now narrow definition of the applicable field of
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`prior art, during examination the inventor and USPTO considered the field to cover
`
`inflatable objects and art outside the field of air beds.
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`The ‘154 Patent broadly states “[t]he present invention relates to a system and
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`method for adjusting the pressure in an inflatable object,” (Pet. 4; Ex. 1001, 1:16-
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`17), and PO’s expert acknowledges this and agrees (Ex. 1052, 211:11-15 (Mahoney
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`discloses handling fluids); (Ex. 1052, 212:13-19 (Mahoney relates to inflatable
`
`articles)). The inventor and USPTO understood this field was broad and extended
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`well beyond “adjustable air bed systems” by expressly rejecting the claims in view
`
`of applicant-submitted prior art to Lockwood (Ex. 1012). Lockwood is in the
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`medical industry in the field of vacuum wound treatment, and has similar claimed
`
`structures and fundamentally the same claimed functions as the invention, but
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`notably the inventor did not argue Lockwood was non-analogous during
`
`examination. Ex. 1009 ¶¶81-89; Ex. 2003, 179-182 (Lockwood submission), 93-108
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`(Office action), 72-87 (response). Additionally, the inventor also submitted Rostra
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`(Ex. 2003, 179-182, 222-251), directed to a bladder support system for seats in the
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`automobile industry, to the USPTO believing it relevant to patentability. Further,
`
`PO’s expert acknowledges Long, directed to a vehicle seat, was considered relevant
`
`by the examiner. Ex. 1052, 231:17-235:13. However, PO’s expert failed to consider
`
`this applicant-submitted prior art (Ex. 1052, 217:7-222:15, 239:6-241:20) outside
`
`the air bed industry as relevant art.
`
`PO’s expert failed to: (1) consider the field of fluid handling and inflatable
`
`articles; (2) consider that the examiner searched U.S. Patent Classification subclass
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`224 assigned to inflatable articles with pressure-responsive pressure control means
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`under class 137 assigned to fluid handling when determining what constitutes
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`relevant prior art to the ‘154 Patent (See Ex. 1052, 204:18-206:19.). Therefore, PO’s
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`expert has misunderstood the true breadth of the inventor’s field of invention and
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`applicable art. Accordingly, neither the inventors nor the examiner considered the
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`field or technical grasp of the inventors as narrowly tailored as PO self-servingly
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`proposes. See also, Ex. 1038, 69:2–71:5 (PO’s expert suggesting, e.g., tire pressure
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`monitoring systems and handwashing systems, are relevant fields).
`
`B.
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`The Asserted Secondary References Are In The Field of Pneumatics
`And Solve The Known Problem of Remote Sensing Encountered by the
`Inventor
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`The prosecution history of the ‘154 Patent, and the knowledge of a POSITA,
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`indicate the asserted secondary references in the field of pneumatic devices,
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`including medical and the automobile arts, that reveal known mathematical
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`relationships and solutions to the known problem of remote sensing of pressure,
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`would be pertinent to the claimed solution applied by the inventors to air beds. Pet.
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`17; Ex. 1009 ¶¶3, 42-69. When “there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a person
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`of ordinary skill has good reason to pursue the known options within his or her
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`technical grasp.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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`The Board correctly determined that the secondary references of Mittal (Ex.
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`1005), Pillsbury (Ex. 1006), and Ebel (Ex. 1007), are prior art to the ‘154 Patent in
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`that the prior art addresses a long known problem and solution in the field of
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`pneumatic control systems, namely the problems of resistance and impedance in the
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`system causing error in the determination of an accurate measurement of chamber
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`pressure by a pressure sensor located remote from the chamber. Institution at 28, 41.
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`As noted by the Petition, and Dr. Phinney, problems of pneumatic impedance and
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`hunting, and compensation solutions related to remotely sensing of pressure in
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`pneumatic systems were well known by a POSITA. Pet. 9-10; Ex. 1009 ¶¶43-69.
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`The inventor, Mr. Mahoney, agrees that his own experience in solving air pressure
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`problems in the medical industry were relevant to the air adjustable mattress
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`industry, and his experiences in the medical industry prior to working for PO was of
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`interest to PO. Ex. 1051, 15:20-18:8, 22:9-24:17. In addition, one of PO’s engineers,
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`Mr. Nunn, currently working in the air adjustable mattress industry, admitted that he
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`would consult “many different types of engineering disciplines,” because a “problem
`
`in the air adjustment mattress industry” is a general “problems of physics.” Ex. 1037,
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`53:7-54:18.
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`1.
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`The secondary References are Reasonably Pertinent to the
`Problem Encountered by Mahoney
`
`A reference is deemed reasonably pertinent to the problem of the inventor if
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`it "logically [] have commended itself to an inventor's attention in considering his
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`problem." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir.
`
`2007) (quoting In re Clay, 966 F.2d 656,658, 23 USPQ2d 1058, 1061 (Fed. Cir.
`
`1992)). A POSITA, as of the effective date of the ‘154 Patent, would have been
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`aware of the problem identified by Mahoney, and aware of the solutions taught by
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`Mittal and Ebel in the pneumatic field utilized for the automobile industry, and
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`Pillsbury for the medical industry, because they model the problem solved by
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`Mahoney with similar pneumatic systems and teach a solution with principles
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`readily applicable to pneumatic systems, including the known structure of the air bed
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`of Gifft. Ex. 1005, 2:3-5; Ex. 1006, 1:63-67, 2:40-54; Ex. 1006 ¶¶3, 9; Pet. 9-10; Ex.
`
`1009 ¶¶42-45. The inventor, Mr. Mahoney, agrees that his own experience in solving
`
`air pressure problems in the medical industry were relevant to the air adjustable
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`mattress industry, and his experiences in the medical industry prior to working for
`
`PO was of interest to PO. Ex. 1051, 15:20-18:8, 22:9-24:17.
`
`As addressed above, the inventors and the examiner were aware of and
`
`considered Lockwood and Rostra, prior art outside the field of air beds, to be
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`material to patentability. The point of novelty of the ‘154 Patent, adjusting pressure
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`in an inflatable object, namely remote sensing of pressure in an inflatable object,
`
`adjusting pressure in the inflatable object by compensating for the measured pressure
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`differential, and adjusting the compensation for future adjustments is not unique to
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`air beds; the secondary references show this problem is known in the art, and the art
`
`provides known options for solutions to quickly and accurately measure and adjust
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`the pressure in such scenarios. Ex. 1009 ¶45, Ex. 2042; 262:4-263:14.
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`A POSITA could readily apply the teachings of the secondary references to
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`the admitted structural prior art air bed features of Gifft. Ex. 1061 ¶¶11-15. PO does
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`not contest that Gifft is analogous art, or that it does not provide the structural
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`limitations of the claims. POR 26-30, 56-59. PO’s expert agrees the novelty of the
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`patent is not the structural features of the claims, the mattresses, or solely continuous
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`monitoring. Ex. 1052, 303:12-304:1, 297:13-298:6, 300:11-18. PO’s expert believes
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`the novel aspect of the patent is accounting for offsets during inflation and deflation.
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`Ex. 1052, 301:12-20; Ex. 1053, 424:4-425:2. The record reflects the secondary
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`references teach known options for solving the known problem identified by
`
`Mahoney.
`
`V.
`
`THERE IS A MOTIVATION TO COMBINE THE ASSERTED PRIOR ART
`REFERENCES
`
`The ‘154 Patent merely claims a known arrangement of system components
`
`(Gifft), and a solution to an inflation and deflation pressure measurement method
`
`borne from a mathematical relationship for determining pressure in a remotely
`
`connected air chamber during filling and emptying. A POSITA would be aware of
`
`problems in pneumatic control systems, such as hunting, and remotely measuring
`
`pressure, and the control logic solutions to this problem found in the prior art, and
`
`would be able to incorporate the principles into Gifft to arrive at the solution claimed
`
`by Mahoney. Pet. 19-22; Ex. 1005, 1:16-20; Ex. 1007 ¶¶42-45, 51, 57, 63-65. A
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`POSITA would look to prior art inflation/deflation control systems to provide
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`methods of increasing speed and accuracy of adjusting pressure in a remote air
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`chamber. Pet. 25-28; Ex. 1009 ¶103-107. “[S]imply arranging old elements with
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`each performing the same function it is already known to perform is not patentable.”
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`Danmark v. CMI USA, Inc., 100 F.Supp.3d 871, 884 (N.D. Cal., 2015) (citing KSR,
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`550 U.S. at 417)
`
`As stated above, a POSITA would have known of the conduit effect problem
`
`created by resistance and impedance in pneumatic systems and that this leads to
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`error, that accounting for the error due to a remote pressure sensing device was
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`readily solved by the secondary references using a pneumatic controller and control
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`logic principles, and that these principles are easily applied to the pneumatic system
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`of Gifft. Ex. 1061 ¶¶11-15.
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`The obviousness analysis is flexible in that a “motivation to combine may be
`
`found explicitly or implicitly in market forces; design incentives; the ‘interrelated
`
`teachings of multiple patents’; ‘any need or problem known in the field of endeavor
`
`at the time of invention and addressed by the patent’; and the background
`
`knowledge, creativity, and common sense of the person of ordinary skill.”
`
`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (quoting
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`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009).
`
`With the aid of an expert declaration cast by the hand of PO’s counsel (Ex. 1052,
`
`66:9-14), PO characterizes the relevant prior art narrowly, and frames motivations
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`to combine as needing to be explicit recitations in the prior art in an attempt to avoid
`
`the prior art. But, even if a reference does not state an explicit motivation to combine,
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`“any need or problem known in the field of endeavor at the time of invention and
`
`addressed by the patent can provide a reason for combining the elements in the
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`manner claimed.” KSR, 550 U.S. at 420. The motivation need not be explicit, “a
`
`court ... may find a motivation to combine prior art references in the nature of the
`
`problem to be solved.” Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir.
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`2004). “If a person of ordinary skill can implement a predictable variation, § 103
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`likely bars its patentability.” KSR, 550 U.S. at 417.
`
`Although PO eschews the knowledge and skill of a POSITA and attacks each
`
`reference individually, citing to a myriad of details within each prior art reference in
`
`an attempt to bury the fundamental teachings of the prior art that are easil