Trials@uspto.gov Paper 8
`571-272-7822 Date: January 13, 2021
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIXI CITY LIYUAN AUTO PARTS CO. LTD., TYGER AUTO, INC.,
`AND HONG KONG CAR START INDUSTRIAL CO. LTD.,
`Petitioner,
`
`v.
`
`LAURMARK ENTERPRISES, INC.,
`Patent Owner.
`_____________
`
`IPR2020-01030
`Patent 8,061,758 B2
`____________
`
`
`
`Before PATRICK R. SCANLON, JOHN P. PINKERTON, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`571-272-7822 Date: January 13, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIXI CITY LIYUAN AUTO PARTS CO. LTD., TYGER AUTO, INC.,
`AND HONG KONG CAR START INDUSTRIAL CO. LTD.,
`Petitioner,
`
`v.
`
`LAURMARK ENTERPRISES, INC.,
`Patent Owner.
`_____________
`
`IPR2020-01030
`Patent 8,061,758 B2
`____________
`
`
`
`Before PATRICK R. SCANLON, JOHN P. PINKERTON, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`IPR2020-01030
`Patent 8,061,758 B2
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`INTRODUCTION
`Cixi City Liyuan Auto Parts Co. Ltd., Tyger Auto, Inc., and Hong
`Kong Car Start Industrial Co. Ltd. (collectively, “Petitioner”) filed a petition
`for inter partes review of claims 2, 3, and 4 of U.S. Patent No. 8,061,758 B2
`(Ex. 1001, “the ’758 patent”). Paper 1 (“Pet.”). Laurmark Enterprises, Inc.,
`d/b/a BAK Industries (“Patent Owner”) filed Mandatory Notices of Patent
`Owner (Paper 5, “PO Notices”) and a Preliminary Response (Paper 7,
`“Prelim. Resp.”), contending that the Petition should be denied as to all
`challenged claims. Prelim. Resp. 1.
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018); see 37 C.F.R. § 42.108. Upon consideration of the Petition, and the
`associated evidence, as well as the arguments in the Preliminary Response,
`for the reasons discussed below, we do not institute an inter partes review of
`any challenged claim.
`
`A. Related Matters
`The parties identify the following matters in which the ’758 Patent is
`at issue, and that would affect, or be affected by, a decision in this
`proceeding: Certain Pick-Up Truck Folding Bed Cover Systems and
`Components Thereof, ITC Investigation No. 337-TA-1188; and Extang
`Corp. et al. v. Tyger Auto Inc., No. 5:18-cv-02074 (C.D. Cal.) (stayed
`pending the ITC investigation). Pet. 99; PO Notices 2.
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`B. The ’758 Patent
`The ’758 patent is titled “Pick-Up Truck Box Cover.” Ex. 1001, [54].
`The ’758 patent generally describes a “cover assembly for a pick-up truck
`cargo box.” Ex. 1001, Abstract. The ’758 patent explains that the cargo box
`is typically rectangular, and is formed between left and right box side walls,
`a tail gate at the back of the truck, and a front or cab wall at the front of the
`box, adjacent to the cab of the truck. Id. at 2:36–40. Figure 2 of the ’758
`patent is reproduced below.
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`Figure 2 of the ’758 patent is a plan view of the cover and pick-up
`truck box shown in Figure 1. Id. at 2:7–8. As shown in Figure 2, cover 100
`includes four panels 102 connected by hinge joints 104A, 104B, 104C, and
`104D that allow panels 102 to fold onto each other, from the tail gate at the
`back to the front cab wall, to open cover 100. Id. at 3:38–43. Hinge joints
`104A and 104D may have the same design. Id. at 3:43–45. Hinge joints
`104B and 104C are different, however, in that they include spacer bar 110
`and 112, respectively, each of which is dimensioned to allow the panels to
`fold flat onto each other without stressing the hinge joints. Id. at 3:45–50.
`Figure 8 of the ’758 patent is also reproduced below.
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`Figure 8 is a section view taken along line 8–8 of Figure 2. Id. at
`
`2:18. Hinge joints 104 that connect adjacent panels 102 include hinge strip
`146, typically made of rubber or other resilient or flexible material. Id. at
`4:40–44. Hinge strip 146 has first and second fittings or attachment features
`150 and 152, formed as T-sections. Id. at 4:44–47. As shown in Figure 8,
`lateral frame 140 is provided with a metal extrusion having a slot between
`arms 144, with the slot dimensioned to slide over and interlock with fittings
`152 and 154 on hinge strip 146. Id. at 4:52–56. Fittings 150 and 152 are
`spaced apart by a flat or web section 154 of hinge strip 146. Id. at 4:56–58.
`As also shown in Figure 8, first and second hinge joint backing bars 160 and
`162 may be used to stiffen and strengthen hinge joints 104. Id. at 4:64–66.
`
`C. Illustrative Claim
`Among the challenged claims, claim 2 is independent. Claim 2 is
`illustrative of the subject matter of the challenged claims and provides as
`follows (with paragraph notations added consistent with those used by
`Petitioner):
`2.0 A cover for a pick-up truck cargo box, comprising:
`(2.1) a first panel, a second panel, and a third panel, with
`each panel having a core material between the top and bottom
`plates;
`(2.2) a first lateral member attached to the front lateral
`edge of the first panel;
`(2.3) a first spacer bar, with the first lateral frame
`member including a first interlocking element interlocked with
`a back lateral edge of the first spacer bar and with first panel
`pivotally attached to the first spacer bar;
`(2.4) a second lateral member attached to a back lateral
`edge of the second panel, with the second lateral member
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`including a second interlocking element interlocked with a front
`lateral edge of the first spacer bar;
`(2.5) a second spacer bar;
`(2.6) a third lateral member attached to a front lateral
`edge of the second panel, with the third lateral member
`including a third interlocking element interlocked with a back
`lateral edge of the second spacer bar;
`(2.7) a fourth lateral member attached to a back lateral
`edge of the third panel, with the fourth lateral member
`including a fourth interlocking element interlocked with front
`lateral edge of the second spacer bar;
`(2.8) with the second spacer bar having a width greater
`than the first spacer bar and less than the width of the second
`panel and of the third panel, and the width of the second spacer
`bar selected to allow the second panel to fold over onto the
`third panel, with a top surface of the first panel facing and
`substantially parallel to a top surface of the second panel and
`with a bottom surface of the first panel facing and substantially
`parallel to a top surface of the third panel.
`Id. at 8:39–9:3.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 2, 3, and 4 of the ’758 patent are
`unpatentable based on the following grounds (Pet. 12–15):
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`Claims Challenged
`2, 3
`3, 4
`2, 3, 4
`2, 3, 4
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`
`References
`Stone,1 Thoman2
`Thoman, Kooiker 2963
`Thoman, Erlandsson,4 Kooiker
`296
`Steffens,5 Keller,6 Erlandsson
`
`In its analysis, Petitioner relies on the declaration testimony of Paul
`
`Hatch (Ex. 1003). See Pet. 21–98.
`
`DISCUSSION
`
`A. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, we apply the same claim construction standard that
`would be used in a civil action under 35 U.S.C. § 282(b), following the
`standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). 37 C.F.R. § 42.100(b) (2019); 83 Fed. Reg. 51,340,
`51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms
`are generally given their ordinary and customary meaning, as would be
`
`
`1 U.S. Patent No. 4,221,423, filed Nov. 1, 1978, issued September 9, 1980
`(Ex. 1005).
`2 U.S. Patent No. 5,595,417, filed July 26, 1995, issued Jan. 21, 1997 (Ex.
`1006).
`3 U.S. Patent 6,352,296 B1, filed Nov. 17, 2000, issued Mar. 5, 2002 (Ex.
`1007).
`4 U.S. Patent No. 6,767,051 B2, filed Sept. 12, 2003, issued July 27, 2004
`(Ex. 1009).
`5 U.S. Patent No. 6,422,635 B1, filed Jan. 20, 2000, issued July 23, 2002
`(Ex. 1010).
`6 U.S. Patent No. 6,899,372 B1, filed July 14, 2004, issued May 31, 2005
`(Ex. 1011).
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`understood by a person of ordinary skill in the art, at the time of the
`invention and in the context of the entire patent disclosure. Phillips, 415
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`Petitioner notes that claim 2 includes four instances of a lateral
`member with an “interlocking element interlocked with” a lateral edge of a
`spacer bar and argues the Specification defines “interlocking with each
`other” to mean “having features that engage each other.” Pet. 11 (citing Ex.
`1001, 5:1–2, claim 2; Ex. 1003 ¶ 42). Petitioner asserts this definition is
`consistent with both the ordinary meaning and Figure 8 of the ’758 patent
`that “depicts elements ‘interlocked with each other,’ namely, ‘[t]he backing
`bars 160 and 162 may be interlocking with each other, i.e., having features
`that engage each other.’” Id. (citing Ex. 1001, 5:1–2; Ex. 1003 ¶ 42). Thus,
`Petitioner proposes that ‘“interlocking’ elements means those ‘having
`features that engage each other,’ such as paired male and female elements.”
`Id. at 12. Petitioner also states that in the related ITC investigation, the
`parties have agreed that the term “left and right” as used in claim 4 of the
`’758 patent means “adjacent to the left and right sidewalls of the truck cargo
`box.” Id. (citing Ex. 1017, 3; Ex. 1018).
`Patent Owner notes that the term “interlocking element” is recited in
`limitation 2.3, for example, as follows: “a first spacer bar, with the first
`lateral frame member including a first interlocking element interlocked with
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`a back lateral edge of the first spacer bar and with first panel pivotally
`attached to the first spacer bar.” Based on the claim language, the
`Specification, and the prosecution history, Patent Owner argues that the
`“first interlocking element” should be construed to be a particular structure
`which: “(i) is part of the lateral frame member; (ii) is interlocked with the
`spacer bar; and (iii) provides a pivotal attachment of the first panel to the
`first spacer bar.” Prelim. Resp. 4–15.
`For purposes of this decision, we discern no need to construe any
`claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy’ ”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`
`B. Principles of Law
`“In an . . . [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations. Graham v. John Deere Co. of Kansas City, 383
`U.S. 1, 17–18 (1966).
`
`C. Level of Ordinary Skill
`Relying on the testimony of its declarant, Mr. Hatch, Petitioner asserts
`the following:
`A POSITA at the time of the claimed invention would be a
`mechanical engineer or industrial designer with a degree in
`engineering, industrial design or a related specialization, with
`approximately two years of professional design experience,
`including product design. Alternatively, a designer without a
`degree may be a POSITA if they have approximately two to
`four years of experience designing automotive hardware, such
`as the cover at issue in this case.
`Pet. 10 (citing Ex. 1003 ¶¶ 18–19).
`Patent Owner has not taken a position on the level of ordinary skill in
`the art. See, generally, Prelim. Resp. We determine, on the current record,
`that the level of ordinary skill proposed by Petitioner is consistent with the
`challenged claims of the ’758 patent and the asserted prior art, and we,
`therefore, adopt that level for purposes of this decision.
`
`D. Ground 1: Obviousness of Claims 2 and 3 Over Stone and Thoman
`Petitioner contends that claims 2 and 3 of the ’758 patent would have
`been obvious under 35 U.S.C. § 103(a) over Stone in view of Thoman. Pet.
`13, 15–47. Petitioner argues that Stone discloses nearly every element of
`claim 2, with the minor exception that Stone does not disclose panels having
`a core material between top and bottom plates. Id. at 20. Petitioner provides
`a claim chart for each of claims 2 and 3, and, relying in part on the testimony
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`of Mr. Hatch, Petitioner explains how the references allegedly teach or
`suggest the limitations of these claims and provides reasoning for combining
`the teachings of the references. Id. at 21–47.
`
`1. Overview of Stone
`Stone is a U.S. patent titled “Cover for a Vehicle Box.” Ex. 1005,
`code (54). In particular, Stone relates to a cover that is adapted for covering
`the box of a “pickup” truck. Id. at 1:6–9. Figures 4 and 5 of Stone are
`reproduced below.
`
`
`Figure 4 is a bottom plan view of the first embodiment of Stone’s
`cover. Id. at 2:50–52. Figure 5, shown below Figure 4, is a side elevation of
`the cover showing two alternate folded positions of panels in dashed lines.
`Id. at 2:53–55.
`As shown in Figure 4, when the cover is extended longitudinally of
`the pickup box, the panels are indicated in sequence, from the rearward end
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`wall of the box to the forward end wall, by numerals 121 through 126. Id. at
`5:44–52. Each of panels 121 through 126 has a rectangular reinforcing
`frame 140 extending peripherally about its respective back 130. Id. at 6:26–
`28. Frame 140 includes a pair of first bars 142 extending in parallel relation
`to first edges 132 of back 130 and individually engaged with corresponding
`bars 136 thereof on the side of the bars disposed toward the center of the
`panel. Id. at 6:30–35.
`Panels 121 through 126 of Stone have various widths, which are
`predetermined to permit the panels to be folded as shown in Figure 5. Id. at
`8:17–24. The depth of all the panels is substantially equal to a first
`predetermined distance, shown by numeral 175 in Figure 5. Id. at 8:24–26.
`Panel 121, panel 122 adjacent thereto, and panel 124 have substantially the
`same width, which is substantially equal to a second predetermined distance.
`Id. at 8:31–35. The width of panel 126 is substantially equal to the sum of
`such first and second predetermined distances. Id. at 8:35–39. With respect
`to spacer panels 123 and 125, Stone explains the width of panel 123 is
`“substantially equal to its depth, or the first predetermined distance, and the
`width of [] panel 125 is substantially equal to twice this distance.” Id. at
`8:39–42.
`
`2. Overview of Thoman
`Thoman is a U.S. Patent titled “Tonneau Cover for A Pick-up Truck.”
`Ex. 1006, code (54). Thoman discloses a cover for enclosing an open bed of
`a pick-up truck having a front panel, center panel, and a rear panel retained
`in separate frames. Id. at 1:38–42. Figures 3 and 4 of Thoman are
`reproduced below.
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`Figure 3 is a sectional view of Thoman’s cover, and Figure 4 is a view
`from under the cover, taken along line 4—4 of Figure 3. Id. at 2:21–27. As
`depicted in Figure 4, center panel 30, front panel 32, and rear panel 34 are
`each retained in a tubular frame having a longitudinal length that is
`substantially the width of the front end wall and tailgate of the pick-up truck
`bed. Id. at 3:35–38. Each panel is made up of a frame and a center
`composite made of foam member 56 sandwiched between and bonded to top
`52 and bottom 54 hard plastic sheets. Id. at 3:38–41. As depicted in Figure
`3, front panel 32 is connected to center panel 30 by first rubber hinge 36,
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`while rear panel 34 is connected to center panel 30 by similar rubber hinge
`38. Id. at 5:47–50.
`
`3. Analysis regarding Limitation 2.3
`In its Preliminary Response, Patent Owner disputes Petitioner’s
`
`challenge to claim 2 with respect to only the portion of limitation 2.3
`reciting “the first lateral frame member including a first interlocking element
`interlocked with a back lateral edge of the first spacer bar and with first
`panel pivotally attached to the first spacer bar.” Prelim. Resp. 15–20. As
`Patent Owner argues, and we agree, Petitioner relies entirely on Stone for
`allegedly teaching or rendering obvious this limitation. Id. at 19 (citing Pet.
`31–34). Thus, we focus our analysis of Petitioner’s challenge to claim 2 on
`whether Stone discloses or renders obvious limitation 2.3.
`
`The “first lateral frame member” of limitation 2.3 is recited in
`limitation 2.2 as “a first lateral member attached to the front lateral edge of
`the first panel.” Ex. 1001, 8:43–44. Petitioner asserts that Stone’s “second
`bars 149” teach “a first lateral member attached to the front lateral edge of
`the first panel” because first panel 2227 of Stone “includes a first lateral
`member (149) attached to its front lateral edge (134) (wherein ‘front’ refers
`to the lateral end of the panel nearest the front of the truck).” Pet. 26–28
`
`
`7 In its claim chart analysis, Petitioner refers to Figure 5, which references
`panels 121–126, and Figure 10, which references corresponding panels 221–
`226. See Pet. 24–34. Petitioner refers to panels 121 and 221 as end or back
`panels (near tailgate), and to panels 126 and 226 as front panels (near truck
`cab). Id. at 26 n. 3, 28 n. 4. Petitioner states that, although Stone refers to
`“panels” 123 and 125, and 223 and 225, in Figures 5 and 10, respectively,
`they “serve the function of spacer bars.” Id. at 26–27 (citing Ex. 1005, 9:7–
`10; Ex. 1003 ¶ 84, Claim 2(iii)).
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`(citing Ex. 1005, Fig. 5, 6:52–54 (“Each reinforcing frame 140 includes a
`pair of second bars 149 which are parallel to the second edges 134 of its
`respective panel.”) (emphasis deleted); see also Ex. 1003 ¶ 84, Claim 2
`(iii)8).
`
`Regarding the portion of limitation 2.3 reciting “the first lateral frame
`member including a first interlocking element interlocked with a back lateral
`edge of the first spacer bar,” Petitioner asserts, “Stone discloses a first panel
`222 with a first lateral frame member which includes a first interlocking
`(male) element [extension 144] interlocked with an interlocking element
`(female) [notch 146] on the back lateral edge of the first spacer bar 223.” Id.
`at 30–33 (citing Ex. 1005, 6:41–50, 18:18–28; Ex. 1003 ¶ 84, Claim 2 (iv)).
`Petitioner asserts this is shown in more detail in enlarged excerpts from
`Figures 7 and 8. Id. at 31–32. Figures 7 and 8 of Stone are reproduced
`below.
`
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`8 Petitioner’s declarant Mr. Hatch uses a different numbering scheme than
`Petitioner to identify the elements of the challenged claims. For example,
`starting with the preamble, Petitioner numbers claim 2’s limitations as 2.0
`through 2.8. Pet. 24–46. Mr. Hatch identifies claim 2’s limitations as 2(i)
`through 2(xiv). See Ex. 1003 ¶ 84.
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`Figures 7 and 8 are fragmentary side elevation views of Figure 4 of
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`Stone. Ex. 1005, 2:58–62. Petitioner asserts that its excerpts of Figures 7
`and 8 “illustrate the connections between all panels and spacer bars,
`including the junction where the first panel is on the left and the first spacer
`bar is on the right.” Pet. 32 (citing Ex. 1003 ¶ 84, Claim 2 (iv); Ex. 1005,
`6:41–50, 18:18–28). In that regard, Petitioner notes that Stone discloses the
`following:
`The outwardly extending one of said ends thus forms an
`extension 144 mounted on and downwardly of the corresponding
`respective first edge of the panel. Said opposite end forms a
`notch 146 extending inwardly of the panel. Each notch extends
`inwardly from its respective panel substantially the same
`distance as the extension projects outwardly from the panel.
`Therefore, each notch is fitted to receive one of said extensions
`of another panel.
`Id. (quoting Ex. 1005, 6:41–50).
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`Petitioner also asserts that Stone discloses “with first panel pivotally
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`attached to the spacer bar,” as recited in limitation 2.3, because Stone
`teaches “[e]ach second edge 134 of the juxtapositioned pairs thereof of the
`panels 121 through 126 is interconnected to the other of said edges by a
`hinge assembly 160 which defines a substantially horizontal pivotal axis 161
`extending between and substantially parallel to said edges.” Id. at 33–34
`(quoting Ex. 1005, 7:38–43; citing Ex. 1003 ¶ 84, Claim 2 (v)).
`
`Patent Owner argues that Stone fails to disclose or render obvious
`“the first lateral frame member including a first interlocking element
`interlocked with a back lateral edge of the first spacer bar and with first
`panel pivotally attached to the first spacer bar,” as recited in limitation 2.3.
`Prelim. Resp. 15–20. In particular, Patent Owner first argues that “neither
`Stone’s ‘extension 144’ or ‘notch 146’ are in any sense part of or otherwise
`‘included’ in Stone’s ‘second bars 149,’ as claim 2 requires.” Id. at 17.
`Second, Patent Owner argues that neither Stone’s extension 144 nor notch
`146 provide for “pivotal attachment of Stone’s panels to any alleged panels
`or spacer bars.”9 Id. at 17–18.
`
`We agree with Patent Owner’s first argument. In that regard, Patent
`Owner asserts, and we agree, that Stone describes “extension 144” is formed
`from an “outwardly extending . . . end[]” of “bar 142,” which extends along
`
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`9 This argument is based on Patent Owner’s assertion that “first interlocking
`element” should be construed to be a particular structure which: “(i) is part
`of the lateral frame member; (ii) is interlocked with the spacer bar; and (iii)
`provides a pivotal attachment of the first panel to the first spacer bar.” See
`Prelim. Resp. 6, 15. Because our decision on Patent Owner’s first argument
`regarding limitation 2.3 is dispositive with respect to claim 2, we do not
`decide Patent Owner’s second argument.
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`the sides of each of Stone’s panels. Id. (citing Ex. 1005, 6:30–44, Fig. 4 at
`142). Patent Owner also asserts, and we agree, that Stone’s “notch 146” is a
`void “extending inwardly” to the next panel by shortening the opposite end
`of bar 142 in the next panel an appropriate amount to receive “extension
`144.” Id. (citing Ex. 1005 at 6:26-54, Figs. 6, 7). Thus, we also agree with
`Patent Owner that “Stone’s ‘extension 144’ and ‘notch 146’ are part of a
`longitudinal structure (Stone’s bar 142), not a lateral member attached to the
`lateral edge of the first panel, as required by the claim.” Id. at 17.
`Moreover, although limitation 2.3 requires “the first lateral frame member
`including a first interlocking element,” we agree with Patent Owner that
`“Stone does not describe or depict ‘second bar 149’ as having any structural
`relationship with ‘extension 144’ or ‘notch 146,” but at most “is simply
`adjacent to the end of second bar 149.” Id. (citing Ex. 1005, Fig. 5)
`(emphasis added). We further agree with Patent Owner’s argument that
`“neither Petitioner nor their expert provide any reasoned analysis for how
`Stone’s ‘second bars 149’ ‘include’ Stone’s ‘extension 144’ and/or ‘notch
`146.’” Id. (citing Pet. 27–33; Ex. 1003 ¶ 84 (pp. 53–54, 58); see Intelligent
`Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the
`utmost importance that petitioners in the IPR proceedings adhere to the
`requirement that the initial petition identify ‘with particularity’ the ‘evidence
`that supports the grounds for the challenge to each claim.’”) (quoting 35
`U.S.C. § 312(a)(3)). Thus, Petitioner has failed to identify with particularity
`evidence sufficient to establish a reasonable likelihood that Stone teaches or
`renders obvious “the first lateral frame member including a first interlocking
`element,” as recited in limitation 2.3.
`
`18
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`IPR2020-01030
`Patent 8,061,758 B2
`
`4. Summary
`For the foregoing reasons, Petitioner has not established a reasonable
`
`likelihood of prevailing on its contention that Stone in view of Thoman
`renders claim 2 unpatentable. Petitioner does not contend that Thoman
`remedies Stone’s deficiencies identified with respect to limitation 2.3.
`Because claim 3 depends from claim 2, Petitioner has also not established a
`reasonable likelihood of prevailing on its contention that Stone in view of
`Thoman renders claim 3 unpatentable.
`E. Ground 2: Obviousness of Claims 3 and 4 Over
`Stone, Thoman, and Kooiker 296
`Petitioner contends that claims 3 and 4 of the ’758 patent would have
`been obvious under 35 U.S.C. § 103(a) over Stone in view of Thoman and
`Kooiker 296.10 Pet. 48–61. As with respect to ground 1, Petitioner argues
`that the combination of Stone and Thoman teaches every limitation of claim
`2 and claim 3. Id. at 48. Petitioner also asserts that the modification of
`Stone and Thoman in view of Kookier 296 does not impact how the
`combination of Stone and Thoman meets the limitations of claim 2. Id. at 57
`(citing Ex. 1003 ¶¶ 94–95). Petitioner notes that claim 4 depends directly
`from claim 2 and adds “longitudinal side members attached to the sides of
`the panels, with a resilient strip attached to each of the longitudinal side
`members.” Id. at 48. According to Petitioner, “[l]ongitudinal side members
`
`
`10 As Petitioner states, Kooiker 296 expressly incorporates by reference U.S.
`Patent No. 5,931,521 (“Kooiker 521”), which is titled “Folding Cover for
`Pickup Truck Bed” and issued on August 3, 1999. Pet. 48 (Ex. 1007, 4:25–
`27). Kooiker 521 is included in the record as Ex. 1008. Petitioner asserts
`that “together the two Kooiker references effectively represent a single
`disclosure.” Id.
`
`19
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`IPR2020-01030
`Patent 8,061,758 B2
`
`with resilient strips were well known by the ’758 priority date as shown by
`Kooiker 296 (Ex. 1007).” Id.
`Patent Owner notes that Petitioner relies on its arguments from ground
`1’s combination of Stone and Thoman for satisfying claim 2, from which
`claims 3 and 4 depend, and argues that because Petitioner’s arguments for
`ground 1 fail to demonstrate the obviousness of claim 2, Petitioner’s
`arguments for ground 2 similarly fail. Prelim. Resp. 20. Patent Owner also
`notes that Petitioner does not explain or analyze Kooiker 296 with respect to
`the “first interlocking element” limitation. Id.
`We agree with Patent Owner. For the reasons discussed supra
`regarding claim 2 in ground 1, Petitioner’s arguments in ground 2 fail
`because Petitioner has not demonstrated that Stone (or any combination of
`Stone, Thoman, and Kooiker 296) teaches or renders obvious claim 2’s “first
`lateral frame member including a first interlocking element,” as recited in
`limitation 2.3. Accordingly, because claims 3 and 4 depend directly from
`claim 2, Petitioner has not established a reasonable likelihood of prevailing
`on its contention that Stone in view of Thoman and Kooiker 296 renders
`claims 3 and 4 unpatentable.
`F. Ground 3: Obviousness of Claims 2–4 Over Stone,
` Thoman, Erlandsson, and Kookier 296
`Petitioner contends that, even if Stone did not disclose the
`
`interlocking elements of claim 2, “Erlandsson teaches using this exact
`feature between connected automotive panels.” Pet. 62. Petitioner argues
`that the combination of Stone, Thoman, Kooiker 296, and Erlandsson meets
`the limitations of claims 2 through 4 in the same way as shown in grounds 1
`and 2, except for the interlocking elements of limitations 2.3, 2.4, 2.6, and
`
`20
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`
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`IPR2020-01030
`Patent 8,061,758 B2
`
`2.7 set forth in a claim chart. Id. at 65–66 (citing Pet. Sections IV.A.4 and
`IV.B.3). Petitioner also argues that, although Erlandsson does not address
`truck covers specifically, Erlandsson constitutes analogous prior art to the
`’758 patent because Erlandsson is from the same field of endeavor as the
`’758 patent (i.e., multi-panel covers for use in vehicles) and is highly
`pertinent to the problem addressed in the patent of “providing a vehicle
`cover made up of pivotally attached panels that is ‘durable, strong, and
`rigid.’” Id. at 64 (citing Ex. 1001, 1:46-47; Ex. 1003 ¶ 110). Petitioner
`further argues that a person of ordinary skill in the art would have been both
`“motivated and able to use interlocking elements disclosed by Erlandsson
`between the panels and spacer bars in the Stone cover in order to ‘add[]
`structural strength and rigidity to the hinge apparatus’ as taught by
`Erlandsson.” Id. at 65 (citing Ex. 1003 ¶ 111; Ex. 1009, Fig. 3, 3:29–33).
`
`In response, Patent Owner contends that ground 3 fails for three
`reasons. Prelim. Resp. 21–29. First, Patent Owner argues that Erlandsson is
`non-analogous art, and Petitioner’s and its expert’s analysis of the
`motivation to combine Erlandsson is conclusory and fails to address “the
`significant differences between the structure, function and purpose of
`Erlandsson and that of Stone.” Id. at 22–25. Second, Patent Owner argues
`that Petitioner fails to specifically identify the “first lateral frame member,”
`and appears to rely on Stone’s second bar 149, as in ground 2. Id. at 25–26
`(citing Pet. 65–66; Ex. 1003 ¶ 114). Patent Owner also argues that neither
`Petitioner nor its expert explains how Erlandsson’s base members would be
`included as part of Stone’s second bar 149. Id. at 26–27. Third, Patent
`Owner argues that Petitioner’s proposed combination does not disclose or
`render obvious an interlocking element providing pivotal attachment. Id. at
`
`21
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`IPR2020-01030
`Patent 8,061,758 B2
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`27–29.
`
`1. Overview of Erlandsson
`Erlandsson is a U.S. patent titled “Hinge Apparatus for Vehicle Floor
`
`Systems.” Ex. 1009, code (54). Erlandsson relates generally to vehicles
`and, more particularly, to floor systems within vehicles. Id. at 1:14–15.
`Erlandsson discloses that vehicle cargo compartments often include a floor
`panel, which may be covered with carpeting, and that overlies a spare tire
`compartment or additional storage space. Id. at 1:22–24, 1:27–28. Access
`to the area beneath the floor panel is usually provided by lifting an edge
`portion of the floor panel and pivoting the floor panel about a hinge, which
`may pinch or otherwise damage the overlying carpet. Id. at 1:26–29. Figure
`1 of Erlandsson is reproduced below.
`
`
`
`Figure 1 of Erlandsson is a side elevation view of hinge apparatus 10,
`
`
`
`22
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`IPR2020-01030
`Patent 8,061,758 B2
`
`in which first and second hinge members 14 and 16 are in respective first
`positions. Id. at 2:23–25; 3:6–8. Each hinge member 14 and 16 has a base
`member 14a and 16a, respectively, and a generally planar upper panel 14b
`and 16b, respectively, extending outwardly from base members 14a and 16a.
`Id. at 3:17–20. As shown in Figure 1, base members 14a and 16a of hinge
`members 14 and 16 interlock w
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