UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
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`AMERICAN NATIONAL MANUFACTURING INC.,
`
`Petitioner,
`
`v.
`
`SLEEP NUMBER CORPORATION
`f/k/a SELECT COMFORT CORPORATION,
`
`Patent Owner.
`____________
`
`Case No. IPR2019-00514
`Patent No. 5,904,172
`____________
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`
`
`
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`PATENT OWNER’S SUR-REPLY
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`
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`
`
`
`____________
`
`
`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. IPR2019-00514
`Patent No. 5,904,172
`____________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`Case IPR2019-00514
`Patent 5,904,172
`
`
`
`
`I.
`II.
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`Petitioner’s Pressure Monitor Means (“PMM”) Constructions Are
`
`INTRODUCTION ....................................................................................... 1
`PO’S CLAIM CONSTRUCTIONS ARE PROPER ..................................... 1
`A.
`Petitioner’s Substantially Fluidly Sealed Arguments Fail................... 1
`B.
`and Other/Prior Art Pumps................................................................. 4
`C.
`PO’s Reading of Guides and Stops Is Proper ..................................... 8
`D.
`Wrong .............................................................................................. 10
`III. GROUNDS 1 TO 13 DO NOT INVALIDATE THE CHALLENGED
`CLAIMS .................................................................................................... 11
`A. Neither Vrzalik nor Shafer Anticipate .............................................. 11
`i.
`Stops ...................................................................................... 11
`ii.
`Chamber ................................................................................ 13
`iii.
`Shafer Does Not Disclose “Guides and Stops” ....................... 15
`Shafer Does Not Disclose the PMM ...................................... 15
`iv.
`v.
`Petitioner Has Improperly Co-Mingled Embodiments ........... 16
`The ‘172 Patent Is Not Obvious ....................................................... 16
`i.
`The Prior Art Is Not Analogous ............................................. 16
`Obvious ........................................................................................... 17
`i.
`Obvious ................................................................................. 17
`
`TABLE OF CONTENTS
`
`The ‘172 Patent Distinguishes Between “Fluidly Sealed” Pumps
`
`Vrzalik Does Not Disclose the Enclosure or Guides and
`
`Shafer Does Not Disclose a Substantially Fluidly Sealed Air
`
`B.
`C.
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`Petitioner’s Grounds Do Not Render the Challenged Claims
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`Shafer in View of Grant Does Not Render Ground 2 Claims
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`i
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`Case IPR2019-00514
`Patent 5,904,172
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`Shafer in View of Kashiwamura Does Not Render Claim 2
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`Shafer in View of Cammack Does Not Render Claims 2,
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`Cammack Does Not Disclose Guides and Stops,
`
`Shafer in View of Ramacier Does Not Render Claim 4
`
`ii.
`Obvious ................................................................................. 18
`iii.
`Shafer in View of Dye Does Not Render Claim 12 Obvious .. 18
`iv.
`12, 22 Obvious ....................................................................... 19
`a.
`and There Is No Motivation to Combine ...................... 19
`v.
`Obvious ................................................................................. 20
`vi.
`Petitioner’s Combination Grounds Fail .................................. 20
`IV. PETITIONER HAS FAILED TO MEET ITS BURDEN IN
`CONSIDERATIONS ................................................................................. 21
`PO Has Shown Nexus ...................................................................... 21
`A.
`B.
`PO Has Shown Industry Praise ........................................................ 22
`C.
`PO Has Shown Copying .................................................................. 22
`D.
`PO Has Shown Commercial Success ............................................... 24
`V.
`THE PETITION IS PROCEDURALLY IMPROPER ................................ 27
`VI. CONCLUSION ......................................................................................... 27
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`OPPOSING PO’S EVIDENCE OF SECONDARY
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`ii
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`Patent 5,904,172
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`
`Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Advanced Media Networks LLC v. Gogo LLC,
`2013 WL 12123237 (C.D. Cal. June 14, 2013) .......................................... 12, 18
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ........................................................................ 16
`
`C.R. Bard, Inc. v. M3 Systems, Inc.,
`157 F.3d 1340 (Fed. Cir. 1998) ........................................................................ 17
`
`Chemors Co. FC, LLC v. Daikin Indus., Ltd.,
`2020 WL 402064 (PTAB Jan. 23, 2020) .................................................... 11, 12
`
`Cont’l Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) ........................................................................ 14
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) ........................................................................ 26
`
`Howmedica Osteonics Corp. v. Zimmer, Inc.
`2008 WL 80403 (D.N.J. Jan. 2, 2008) .............................................................. 12
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ........................................................................ 19
`
`Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co.,
`285 F.3d 1046 (Fed. Cir. 2002) .......................................................................... 4
`
`In re Natural Alternatives, LLC,
`659 F. App’x 608 (Fed. Cir. 2016) ................................................................... 21
`
`Net MoneyIN, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ........................................................................ 16
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) .......................................................................... 9
`
`iii
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`Patent 5,904,172
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`RF Delaware, Inc. v. Pacific Keystone Tech., Inc.,
`326 F.3d 1255 (Fed. Cir. 2003) ........................................................................ 10
`
`Stumbo v. Eastman Outdoors, Inc.,
`508 F.3d 1358 (Fed. Cir. 2007) .......................................................................... 3
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 9
`
`Other Authorities
`
`37 CFR § 42.104(b)(5) .......................................................................................... 11
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`iv
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`Case IPR2019-00514
`Patent 5,904,172
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`I.
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`INTRODUCTION
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`Patent Owner Sleep Number Corporation (“PO”) provides this sur-reply to
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`Petitioner American National Manufacturing’s (“Petitioner”) reply. Petitioner’s
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`arguments fail because Petitioner ignores the plain and ordinary meaning of claim
`
`terms, reads structures that are not disclosed or inherent in references, and relies on
`
`hindsight bias without articulating (1) a motivation to combine, (2) how the
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`references would be combined, or (3) a reasonable likelihood of success. Because
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`Petitioner has not met its burden, the Board should find each challenged claim
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`patentable.
`
`II.
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`PO’S CLAIM CONSTRUCTIONS ARE PROPER.
`
`A.
`
`Petitioner’s Substantially Fluidly Sealed Arguments Fail.
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`A POSITA reading the ‘172 Patent claims in light of the specification would
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`understand “substantially fluidly sealed” means sufficiently sealed to allow for
`
`monitoring the pressure in the bladder via the pressure in the enclosure air chamber.
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`(See POR at 7; Ex. 1001 at 2:48-50, 4:30-37; Ex. 1005 ¶39; Ex. 2040 ¶70.)
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`Petitioner’s and Giachetti’s definition of “sealed sufficiently to deliver compressed
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`air when operating” is wrong. (See Reply at 5; Ex. 2096 at 51:25-52:14; Ex. 1005
`
`¶54.) Giachetti admits the ‘172 Patent does not disclose or claim this definition. (Ex.
`
`2096 at 52:15-53:18.) Giachetti’s definition instead comes from his asserted
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`1
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`“purpose of [the] invention” – an “air mattress having a pump and inflating.” (Id. at
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`52:15-53:12.) However, this is not “the purpose” of the invention.
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`The ‘172 Patent specifically identifies the “need … to provide for continuous
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`monitoring of existing pressure in a bladder of the mattress.” (Ex. 1001 at 2:28-30.)
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`It discloses a tap on the valve enclosure assembly allowing indirect, continuous
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`monitoring of the bladder pressure (rather than direct monitoring). (See POR at 5
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`(citing Ex. 1001 at 2:48-50); see also Ex. 1001 at 4:30-37; Ex. 2040 ¶¶37, 47, 210-
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`13.) Giachetti recognizes this purpose. (Ex. 1005 ¶39 (“The ‘172 teaches a pressure
`
`monitoring means [that] provides continuous monitoring of the pressure within the
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`air mattress.”) (quoting Ex. 1001 at 8:35-39)); see also Ex. 2096 at 62:18-24.) He
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`also admits a “big part” of the invention is pressure measurement, (Ex. 2067 at
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`127:15-20; Ex. 2096 at 54:8-20), and “the seal needs to be good enough in the valve
`
`enclosure assembly so that the pressure in the bladder and the … valve enclosure
`
`assembly, is close enough that the measurement is representative.” (Ex. 2067 at
`
`122:14-123:14.) Thus, the air chamber of the enclosure must be sufficiently sealed
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`to allow for monitoring the bladder pressure by monitoring the enclosure’s chamber
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`pressure. (See POR at 7.) The ‘172 Patent would not work unless it could do so with
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`some level of accuracy, i.e., the enclosure pressure must be a fair representation of
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`2
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`the bladder pressure.1 (Ex. 2040 ¶70; Ex. 1066 at 125:18-126:1, 173:15-175:6.) In
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`contrast, Petitioner’s construction, requiring only the ability to deliver compressed
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`air, could be met by any enclosure defining an air chamber, vitiating the
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`“substantially fluidly sealed” limitation. See Stumbo v. Eastman Outdoors, Inc., 508
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`F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing constructions rendering claim
`
`limitations superfluous).
`
`Additionally, neither PO nor Messner contend an enclosure must have sealing
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`gaskets to be substantially fluidly sealed. While the ‘172 Patent discloses the use of,
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`and in some instances claims, flexible seals, (POR at 7 (citing Ex. 1001 at 6:63-67);
`
`see Ex. 1001 at 12:23-26; Ex. 2040 ¶70), both experts acknowledge there are other
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`1 Contrary to Petitioner’s assertion, Messner does not equate “substantially fluidly
`
`sealed” with “fluidly sealed,” instead agreeing it is not necessarily leak-free as a
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`small leak may not inhibit accurate pressure measurement, as long as it allows for
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`the invention’s purpose—measurement of bladder pressure by measuring enclosure
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`pressure. (Ex. 1066 at 146:7-20; Ex. 2040 ¶70.)
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`3
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`ways to seal the enclosure.2 (Ex. 1066 at 195:8-18; Ex. 2096 at 49:8-50:2; Ex. 2068
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`at 321:1-22.)
`
`B.
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`The ‘172 Patent Distinguishes Between “Fluidly Sealed” Pumps
`and Other/Prior Art Pumps.
`
`Petitioner imputes its own unsupported meanings into the specification and
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`claims, and does not even cite its expert to argue the ‘172 Patent’s claims cover
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`blower pumps. (Reply at 2-4, 8-10.) “Blower” is not used in the ‘172 Patent. (See
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`Ex. 1001.) The singular blower reference is that the pump “may be made
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`substantially in accordance with the pump 12 of [admitted prior art] Fig. 1.” (Ex.
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`1001 at 3:64-67; see Reply at 2 (citing same).) But the next line states, “[o]ther types
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`of pumps are also suitable for use with the [invention].” (Ex. 1001 at 3:65-4:1.) No
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`claim references a blower pump. (Ex. 1001 at 8:21-12:44; see Ex. 2096 at 32:14-
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`17.) Thus, even if the specification describes blower pumps as Petitioner erroneously
`
`argues, a blower pump is not actually claimed. A patent may disclose more than the
`
`claims actually cover. See Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285
`
`F.3d 1046, 1052 (Fed. Cir. 2002) (en banc) (stating claims define the invention “not
`
`
`2 Messner states he did not find evidence of “rubber gaskets (or the like)” to indicate
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`Shafer’s multi-part air distribution unit 206 is substantially fluidly sealed in any way.
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`(See Ex. 2040 ¶89 (emphasis added).)
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`4
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`in the specification” and finding claims specifying use of aluminum sheet did not
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`include use of other metals even though specification said they “may be used”).
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`Each claim’s requirement of “an enclosure defining a substantially fluidly
`
`sealed air chamber” negates arguments that blower pumps are covered. (See Ex.
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`1001 at 8:31-12:20.) Messner and inventor Paul Mahoney confirm that blower
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`pumps are always open to the atmosphere, thus cannot create a substantially fluidly
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`sealed air chamber as claimed (at least not without modifications). (Ex. 1068 at
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`90:17-91:22 (advantage of sealed linear pump over blower pump was making system
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`“substantially sealed”), 93:2-95:5 (blower pump not sealed like linear pump; could
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`put valve between pump and enclosure to try and seal but “still may not work”); Ex.
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`2040 ¶¶95-96 (because blower pump “is always open to the atmosphere” Shafer does
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`not disclose substantially fluidly sealed air chamber); Ex. 1066 at 157:20-158:9.)
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`Indeed, with a large leak, such as with a blower pump, you could sense pressure in
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`the enclosure “but that would not be a good representation of the pressure in the air
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`5
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`bladders” because the air chamber is open to atmospheric pressure. (Ex. 1066 at
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`146:21-148:2.)3
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`The specification is not inconsistent. While it discloses various pump options,
`
`the ‘172 Patent claims the use of one pump type that can fluidly seal. Column 7 of
`
`the specification identifies such sealed pumps as one of two subtypes: (1) those that
`
`can run in reverse to permit the exhausting of air, (Ex. 1001 at 7:32-35), and (2)
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`those that are “fluidly sealed” when unpowered, (id. at 7:36-37).
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`There is no dispute the latter pump type includes a linear or diaphragm pump,
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`which remains sealed at all times. (See Ex. 1001 at 7:36-37 (“[c]ertain types of
`
`pumps 112 are fluidly sealed”); Reply at 2 (citing same to argue ‘172 Patent
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`discloses sealed “linear pump”).) Because the substantially fluidly sealed air
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`chamber is “fluidly coupled to the pump,” (Ex. 1001 at 2:64-66), when the fluidly
`
`sealed pump connects to a sealed enclosure, a “substantially fluidly sealed” air
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`chamber exists, (Ex. 1068 at 90:17-91:22, 93:2-95:5). This allows the bladder
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`3 Abraham testified consistently, retracting as error upon in-person reexamination,
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`his previous copying opinion regarding the Sealy product (see Ex. 2052), which uses
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`a blower pump, (Ex. 1065 at 112:14-113:19).
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`6
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`pressure to be measured via the enclosure pressure. (See Ex. 1001 at 4:30-37; see,
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`e.g., id. at 8:55-65.)
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`Conversely, there is no support for contending the former pump type in
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`column 7 refers to blower pumps. (See Ex. 2096 at 31:17-19 (admitting column 7
`
`does not mention blower pump).) As Giachetti testified, you need not run a blower
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`pump in reverse to exhaust air, (id. at 31:25-32:13), because it is already open to the
`
`atmosphere. (See Ex. 2040 ¶95.) Giachetti admits Column 7:32-35 could be
`
`describing essentially any pump because “you could probably make most pumps run
`
`in reverse,” including a diaphragm pump. (Ex. 2096 at 32:18-33:14.)
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`Similarly baseless are Petitioner’s contentions that the ‘172 Patent delineates
`
`between blower pumps and linear pumps because of how frequently monitoring
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`occurs and because a “preferred” blower-pump embodiment is purportedly
`
`disclosed. Neither party disputes that the disclosed fluidly sealed pumps, e.g., linear
`
`pumps, allow for continuous monitoring. (See Ex. 1001 at 7:63-8:6; Reply at 2
`
`(citing same disclosure and proposition).) However, there is nothing connecting
`
`blower pumps to the ‘172 Patent’s disclosure of “with other types of pumps 112,
`
`such monitoring must be taken from the valve 218 and may not be continuous.” (Ex.
`
`1001 at 8:7-9.) Nor is any pump disclosed as a “preferred” embodiment. Even if
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`blower pumps were disclosed, there is still no suggestion that fluidly sealed pumps
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`could not similarly monitor from the valve or non-continuously. In fact, while
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`Giachetti notes the ‘172 Patent discloses two locations of the pressure monitoring
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`port in Column 8, he does not state the types of pumps required for those locations.
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`(See Ex. 1069 ¶30; Ex. 2096 at 111:9-112:10.)
`
`PO’s construction is the only one allowing for claim consistency without
`
`vitiating any limitations—i.e. each claim requires using a “fluidly sealed” pump to
`
`allow for a “substantially fluidly sealed” air chamber from which to monitor bladder
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`pressure. The same pump could be used regardless of (1) whether monitoring is
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`continuous and (2) the pressure monitoring port location. For these reasons, the ‘172
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`Patent does not claim blower pumps.
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`C.
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`PO’s Reading of Guides and Stops Is Proper.
`
`PO applies a POSITA’s plain and ordinary meaning of the claimed guides and
`
`stops. (E.g. Ex. 1001 at 8:58-61; Ex. 2096 at 88:3-15.) Both experts agree a POSITA
`
`would understand “guides” and “stops” each have meanings not defined in the ‘172
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`Patent. (See Ex. 1001; see, e.g., Ex. 2096 at 88:22-89:4, 107:20-108:23.)
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`Messner articulates a POSITA’s understanding that, e.g., “the solenoids slide
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`into position by way of the guides, and the stops arrest travel when the solenoids
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`contact them.” (Ex. 2040 ¶80.) Guides restrict or reduce “degrees of freedom” “to
`
`allow the person assembling to move the component into the correct position for
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`final assembly.” (Ex. 1066 at 96:8-15.) Consistently, Giachetti states “guides allow[]
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`movement in one plane in one dimension and the stops disallow that motion.” (Ex.
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`8
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`2068 at 303:23-304:2; see also Ex. 2067 at 130:4-5 (“a guide redirects the motion
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`that you’re trying to apply”); Ex. 2096 at 88:25-89:2 (“a guide is going to limit
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`directions of travel”).) Giachetti also agrees stops arrest travel, (Ex. 2067 at 130:3-
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`11), and “limit[] how far travel can occur in a specific direction or directions,” (Ex.
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`2096 at 89:2-4).
`
`Messner cites a secondary source on mechanical engineering to illustrate that
`
`guide and stop features are different than locking features. (Ex. 2040 ¶80 (citing Ex.
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`2017).) Giachetti nowhere refutes this authority or cites anything contrary, (see Ex.
`
`2096 at 91:1-14), nor does Petitioner. And, in any case, Giachetti agrees that “one
`
`of [the] features” of guides is that they are assembly enhancers, and stops could be
`
`locating features, (Ex. 2096 at 86:3-8). Giachetti further agrees, as Messner opines,
`
`that guides and stops are different than features that only lock or affix such as screws.
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`(See Ex. 2067 at 134:16-135:12.)
`
`PO properly uses a POSITA’s understanding of the plain and ordinary
`
`meaning of guides and stops, as supported by Messner, Giachetti, and unrefuted
`
`secondary authority. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
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`1309 (Fed. Cir. 1999) (“entirely appropriate, perhaps even preferable” for court to
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`“consult trustworthy extrinsic evidence” to ensure construction consistent with
`
`POSITAs); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1585 (Fed. Cir.
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`1996) (publicly-available documents, e.g., treatises, “more objective and reliable”
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`9
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`because, “[u]nlike expert testimony, [they] are accessible to the public in advance of
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`litigation”).
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`D.
`
`Petitioner’s Pressure Monitor Means (“PMM”) Constructions Are
`Wrong.
`
`Petitioner improperly imports limitations into the claims by arguing that the
`
`PMM port location changes based on (1) whether the claims expressly include a
`
`“valve” limitation, and/or (2) the pump type. First, the valve limitation states only
`
`that the PMM is “in fluid communication” with the valve, not that the port has a
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`specific location as to the valve. (Cf. Ex. 2096 at 43:8-10 (stating fluidly coupled
`
`means components could be 15 feet apart).) Indeed, when the inventors intended a
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`specific port location, it was claimed. (See, e.g., Ex. 1001 at 10:27-28 (“pressure
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`monitor means being formed integral with said valve housing”); id. at Reexam Certif.
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`2:33-40 (“pressure monitoring port defining an opening through the enclosure”).)
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`Imparting a location limitation into other claims is improper. See RF Delaware, Inc.
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`v. Pacific Keystone Tech., Inc., 326 F.3d 1255, 1264 (Fed. Cir. 2003). Additionally,
`
`the inclusion of a “valve” limitation in some claims does not foreclose the presence
`
`of a valve in others. Second, per supra Sections II(A)-(B), the claims all require a
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`substantially fluidly sealed air chamber and none claim a “blower” pump.
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`Furthermore, construing all the claims using PMM1 keeps the claims consistent and
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`allows for all other claimed limitations to confer meaning.
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`10
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`III. GROUNDS 1 TO 13 DO NOT INVALIDATE THE CHALLENGED
`CLAIMS.
`
`A. Neither Vrzalik nor Shafer Anticipate.
`
`i.
`
`Vrzalik Does Not Disclose the Enclosure or Guides and
`Stops.
`
`In Reply, Petitioner relies on evidence not cited in the Petition (Ex. 1005
`
`¶¶222-224). (Compare Reply at 11 with Paper 2.) 4 This violates 37 CFR §
`
`42.104(b)(5). See Chemors Co. FC, LLC v. Daikin Indus., Ltd., 2020 WL 402064,
`
`at *5 (PTAB Jan. 23, 2020) (rejecting evidence submitted with, but not cited in,
`
`Petition).
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`Regardless, Vrzalik does not disclose the claimed enclosure. Petitioner fails
`
`to address PO’s argument that Vrzalik’s constantly-leaking system cannot be
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`“substantially fluidly sealed.” (POR at 17.) Further, both experts agree an
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`“enclosure” means the structure must surround something, thus an “enclosure”
`
`portion would be a multi-planed structure enclosing an air chamber or other
`
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`4 See also Reply at 10, 11, 15, 19 (citing Ex. 1005 ¶¶32-34, 62, 93, 95, 238 not cited
`in Petition).
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`structures. (See id. at 9, 17-20.)5 Petitioner’s argument that Vrzalik’s single-planed
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`manifold plate 145 is the enclosure portion therefore fails. (See id.)
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`Nor does Vrzalik disclose guides and stops. Without explanation, Petitioner
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`continues to identify different structures than its expert. (Compare Reply at 11
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`(identifying supports 142 as guides and interior surface of box 124 as stop) with Ex.
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`1005 ¶236 (identifying collars 148 and supports 142 as guides and brackets 143, set
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`screws 149, and limit pins 141 as stops); see also Ex. 1069 ¶29 (asserting collar is
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`stop after opining (Ex. 1005 ¶236) collar is guide).) All POSITA evidence
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`contradicts Petitioner’s position. See Advanced Media Networks LLC v. Gogo LLC,
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`2013 WL 12123237, at *10 (C.D. Cal. June 14, 2013) (rejecting construction
`
`contradicted/unsupported by expert); Howmedica Osteonics Corp. v. Zimmer, Inc.
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`2008 WL 80403, at *6 (D.N.J. Jan. 2, 2008) (adopting patentee construction
`
`corroborated by all evidence, including mutual witness testimony; finding contrary
`
`construction unsupported).
`
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`5 Contrary to Giachetti’s assertion, (Ex. 1069 ¶¶4, 31), Messner’s opinion is not
`
`inconsistent with Abraham, whose analysis always identifies an enclosure portion as
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`a multi-planed structure that “encloses” something. (See Exs. 2041-2053.)
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`12
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`First, as Messner explains, supports 142 hold components in place after they
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`are in the correct position (like a screw or other affixing structure); they do not guide
`
`the components to the correct position. (Ex. 2040 ¶111.) Giachetti admits supports
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`142 do not guide during assembly as claimed. (Ex. 2096 at 109:20-110:16.) Second,
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`the interior of the air box 124 does not serve as a stop, nor does Giachetti opine it
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`does. (See, e.g., Ex. 1005 ¶236; Ex. 1001 at 8:58-61; Ex. 2040 at ¶¶112-13.) Thus,
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`Petitioner lacks authority establishing Vrzalik discloses the claimed guides and
`
`stops.
`
`ii.
`
`Shafer Does Not Disclose a Substantially Fluidly Sealed Air
`Chamber.
`
`As discussed supra Sections II(A-B), Petitioner’s faulty premise that any
`
`enclosure distributing pressurized air to the bladders is “substantially fluidly sealed”
`
`is meritless. The enclosure must be sufficiently sealed to allow for monitoring of the
`
`bladder pressure via the air chamber. (See Ex. 2040 ¶70.) Nothing in Shafer discloses
`
`a substantially fluidly sealed chamber or concern with sealing. (Id. ¶¶88-96.) Shafer
`
`requires the valves be closed before pressure is measured, thus cutting off access to
`
`the air distribution unit, (Ex. 1007 at 35:17-36:5), because it is not substantially
`
`fluidly sealed. (Ex. 1066 at 191:17-192:13 (stating Shafer unit “is not substantially
`
`fluidly sealed,” therefore requiring “the valves be closed” to measure pressure,
`
`which means “the interior pressure of the air distribution unit is not accessible”).)
`
`13
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`
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`Case IPR2019-00514
`Patent 5,904,172
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`Additionally, Shafer’s air distribution unit could not be substantially fluidly sealed
`
`because, e.g., it lacks any sealing structures and is fluidly coupled to a blower pump
`
`(which is open to the atmosphere). (POR at 20-23; Ex. 2040 ¶¶88-97.)6
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`Finally, Petitioner’s claim that PO misreads Shafer’s snap-fit portions 332 is
`
`disingenuous. Both Shafer and Giachetti identify the structures 332 as snap-fit
`
`portions. (Ex. 1007 at 22:18-20, Fig. 18b; Ex. 2067 at 187:8-191:17.) Only when
`
`responding to improperly-leading re-direct questions did Giachetti assert that
`
`structures 332 were wire openings. (Ex. 2068 at 308:19-309:5, 312:20-25, 314:2-
`
`12.) Regardless, Shafer’s air distribution unit is not substantially fluidly sealed.
`
`(POR at 22, n.5; Ex. 2040 ¶94.)
`
`
`6 Giachetti previously testified that Shafer inherently discloses seals on the
`
`enclosure, but changed his opinion to seals being unnecessary because it can still
`
`distribute air to the bladders. (Compare Ex. 2067 at 155:16-156:12 with Ex. 2096 at
`
`82:9-84:11.) Seals cannot be inherent in Shafer if they merely could be present.
`
`Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)
`
`(“Inherency, however, may not be established by probabilities or possibilities. The
`
`mere fact that a certain thing may result from a given set of circumstances is not
`
`sufficient.”).
`
`14
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`Case IPR2019-00514
`Patent 5,904,172
`
`
`iii.
`
`Shafer Does Not Disclose “Guides and Stops.”
`
`Shafer does not disclose the claimed guides and stops. (See POR at 23-26.)
`
`For example, Messner explains that Shafer’s resilient fingers in Figure 18b secure
`
`components in place after they are already in the correct position (like a screw); they
`
`do not guide anything into the correct position. (Ex. 1066 at 98:3-14; see id. at 96:8-
`
`19, 99:1-7.) One Shafer inventor, Mr. Duval, testified consistently. (See Ex. 1066 at
`
`106:9-18 (Petitioner counsel reading from Duval transcript).) Holding components
`
`in place or in the correct position is not the same as guiding or stopping them into
`
`the correct position. (Ex. 2040 ¶¶ 80, 111, 115; Ex. 1066 at 192:14-194:22; see id.
`
`at 140:19-141:8.) This is also consistent with Shafer’s disclosure that the snap-in and
`
`snap-fit portions “eliminate the need for assembly screws” for affixing. (Ex. 1007 at
`
`22:17-20.) Nothing in Shafer suggests any features within the enclosure that function
`
`to “guide” or “stop” to correctly position components within the enclosure during
`
`assembly.
`
`iv.
`
`Shafer Does Not Disclose the PMM.
`
`Petitioner’s unsupported attorney argument that Shafer’s measurement of
`
`“backpressure” constitutes continuous monitoring under PMM1, (Reply at 15), is
`
`belied by Shafer’s lack of disclosing how this measurement is achieved or what it
`
`entails. (Ex. 1007.) As to PMM3, Petitioner still fails to identify any support, as
`
`15
`
`
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`Case IPR2019-00514
`Patent 5,904,172
`
`Giachetti does not identify the location of the port as to the valve. (See Ex. 1005
`
`¶¶85-88.) Shafer does not disclose PMM1 or PMM3. (POR at 26-27.)
`
`v.
`
`Petitioner Has Improperly Co-Mingled Embodiments.
`
`Petitioner denies improper comingling of Shafer’s embodiments as the Board
`
`found, (Paper 10 at 31), but cites inapposite and unsupportive authority: MPEP 2123
`
`relates to whether prior art is relevant and should be considered in an obviousness
`
`analysis; MPEP 2131 relates to a claim still being anticipated if it is broad enough
`
`to cover two things and the prior art discloses only one. Relevant authority, cited by
`
`the Board, establishes that Petitioner has improperly comingled embodiments of
`
`Shafer. See Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`
`2008).
`
`B.
`
`The ‘172 Patent Is Not Obvious.
`
`i.
`
`The Prior Art Is Not Analogous.
`
`Petitioner’s analogousness arguments fail. (See POR at 29-31.) Several
`
`references are not from the “same field of endeavor” or reasonably pertinent to the
`
`problems with which the inventor was involved. See In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004). The relevant field is air controllers for adjustable air
`
`mattresses, specifically those that reach and maintain a user’s desired pressure. (See
`
`POR at 29-30; Ex. 2040 ¶¶13-15, 35-48.) Petitioner’s improperly-broad definition—
`
`“pneumatic chamber products and their control” (Reply at 16)—subsumes prong two
`
`16
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`
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`Case IPR2019-00514
`Patent 5,904,172
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`of the analogousness test, and Petitioner fails to articulate how any reference
`
`sufficiently satisfies either prong. (Reply at 16-17.) Merely claiming structural
`
`similarities is insufficient. See C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340,
`
`1351 (Fed. Cir. 1998). By failing to rebut or address PO’s arguments, Petitioner
`
`tacitly admits multiple references do not satisfy the analogousness test. (See POR at
`
`29-30; Ex. 2040 ¶¶130, 142, 154, 196-97.)
`
`C.
`
`Petitioner’s Grounds Do Not Render the Challenged Claims
`Obvious.
`
`Petitioner does not address PO’s arguments that Petitioner improperly relies
`
`on hindsight bias for its obviousness combinations. (See, e.g., POR at 28, 35, 39, 43,
`
`55.)
`
`i.
`
`Shafer in View of Grant Does Not Render Ground 2 Claims
`Obvious.
`
`Petitioner fails to rebut PO’s argument that Shafer and Grant address noise in
`
`different ways, neither of which is to seal the air distribution unit, (Ex. 2040 ¶¶131-
`
`36), thus appearing to concede noise is not a sufficient motivator. Petitioner instead
`
`asserts that a POSITA “would recognize Grant as teaching the ease and economy of
`
`assembly of a device with a two part enclosure, sealing it with a flexible seal after
`
`assembly.” (Reply at 18.) Giachetti’s only relevant cited paragraph states, in
`
`conclusory fashion, a POSITA would know that designing pump housings and valve
`
`enclosures with two separate structures would facilitate ease and economy of
`
`17
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`Case IPR2019-00514
`Patent 5,904,172
`
`assembly. (See Ex. 1005 ¶188.) Even if true, nothing about using a two-part
`
`enclosure indicates or would motivate using a seal on the enclosure as Petitioner
`
`asserts. (See POR at 34-37.) And both experts agree that adding a seal could actually
`
`increase cost and assembly time. (Ex. 2067 at 249:20-251:10; Ex. 2040 ¶¶136, 139.)
`
`ii.
`
`Shafer in View of Kashiwamura Does Not Render Claim 2
`Obvious.
`
`Petitioner admits Kashiwamura detects pressure in “conduit 26” and cites
`
`nothing supporting its conclusion that the port would therefore be on the “valve unit
`
`24.” (Reply at 18-19.) Indeed, Petitioner fails to address Giachetti’s admission that
`
`Kashiwamura does not disclose a port location. (Ex. 2067 at 274:9-275:21.)
`
`iii.
`
`Shafer in View of Dye Does Not Render Claim 12 Obvious.
`
`Giachetti contradicts Petitioner’s assertion that a POSITA would combine
`
`Dye with Shafer “for more simple and accurate control of the pressure.” (Ex. 2096
`
`at 114:4-115:15 (Giachetti testifying he does not think combining Dye with Shafer
`
`would be more accurate).); see Advanced Media Networks, 2013 WL 12123237, at
`
`*10. Further, such a modification would not simplify the device or reduce costs. (Ex.
`
`2040 ¶157; see also Ex. 2067 at 279:25-280:5 (Giachetti admitting moving port in
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`Shafer onto valve would st
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