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.
`(Record) Patent Owner
`
`IPR2020-_____
`Patent No. 8,061,758
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT 8,061,758
`
`

`

`I.
`II.
`
`III.
`IV.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`OVERVIEW OF THE ’758 PATENT ............................................................ 1
`A.
`Background ........................................................................................... 1
`B.
`Summary of the ’758 Patent .................................................................. 5
`C.
`Summary of Relevant Prosecution File History ................................... 9
`D.
`Person of Ordinary Skill in the Art ..................................................... 10
`PROPOSED CLAIM CONSTRUCTION ..................................................... 11
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`AND THE REASONS FOR CANCELLATION (37 C.F.R. §§
`42.22(a) AND 42.104(b)) .............................................................................. 12
`A.
`Ground 1: Claims 2 and 3 Are Unpatentable as Obvious
`Over Stone in View of Thoman .......................................................... 15
`1.
`Stone .......................................................................................... 15
`2.
`Thoman ..................................................................................... 21
`3.
`The Combination of Stone in View of Thoman ....................... 21
`4.
`Applying Stone in View of Thoman to Claims 2
`and 3 .......................................................................................... 24
`Ground 2: Claims 3 and 4 Are Unpatentable as Obvious
`Over Stone in view of Thoman and Kooiker 296 ............................... 48
`1.
`Kooiker 296 ............................................................................... 48
`2.
`Combination of Stone, Thoman and Kooiker 296 .................... 51
`3.
`Applying Stone in view of Thoman and Kooiker
`296 to Claims 3-4 ...................................................................... 57
`
`B.
`
`- i -
`
`

`

`3.
`
`5.
`
`C.
`
`D.
`
`Ground 3: Claims 2-4 Are Unpatentable as Obvious Over
`Stone in view of Thoman, Erlandsson, and Kooiker 296 ................... 62
`1.
`Erlandsson ................................................................................. 62
`2.
`Combination of Stone in View of Thoman,
`Erlandsson, and Kooiker 296 .................................................... 64
`Applying the Combination of
`Stone/Thoman/Kooiker 296 and Erlandsson to
`Claims 2-4 ................................................................................. 65
`Ground 4: Claims 2-4 Are Unpatentable as Obvious Over
`Steffens in view of Keller and Erlandsson .......................................... 70
`1.
`Steffens ...................................................................................... 70
`2.
`Keller ......................................................................................... 76
`3.
`Erlandsson ................................................................................. 78
`4.
`The Combination of Steffens in view of Keller and
`Erlandsson ................................................................................. 79
`Applying Steffens in View of Keller and
`Erlandsson to the Claims .......................................................... 84
`V. MANDATORY REQUIREMENTS ............................................................. 99
`A.
`Grounds for Standing .......................................................................... 99
`B. Mandatory Notices 37 C.F.R. § 42.8(b) .............................................. 99
`1.
`Real Parties in Interest .............................................................. 99
`2.
`Related Matters ......................................................................... 99
`3.
`Fees ........................................................................................... 99
`4.
`Power of Attorney ................................................................... 100
`5.
`Designation of Lead and Back-Up Counsel and
`Service Information................................................................. 100
`
`- ii -
`
`

`

`EXHIBIT LIST
`
`Description
`
`U.S. Patent 8,061,758
`File History of U.S. Patent 8,061,758
`Declaration of Paul Hatch
`CV of Paul Hatch
`U.S. Patent No. 4,221,423 (“Stone”)
`U.S. Patent No. 5,595,417 (“Thoman”)
`U.S. Patent No. 6,352,296 (“Kooiker 296”)
`U.S. Patent No. 5,931,521 (“Kooiker 521”)
`U.S. Patent No. 6,767,051 (“Erlandsson”)
`U.S. Patent No. 6,422,635 (“Steffens”)
`U.S. Patent No. 6,899,372 (“Keller”)
`U.S. Patent No. 1,215, 223 (“Vanderpoel”)
`U.S. Patent No. 4,807,921 (“Champie”)
`U.S. Patent No. 4,532,973 (“DeFalco”)
`U.S. Patent No. 4,747, 441 (“Apolzer”)
`U.S. Patent No. 5,636,893 (“Wheatley”)
`April 3, 2020 Commission Investigative Staff’s Proposed
`Claim Constructions
`Declaration of Matthew Meyer
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`
`1018
`
`- iii -
`
`

`

`I.
`
`INTRODUCTION
`
`Petitioners Cixi City Liyuan Auto Parts Co. Ltd., Tyger Auto, Inc., and
`
`Hong Kong Car Start Industrial Co. Ltd. (collectively, “Petitioners”) respectfully
`
`petition for inter partes review of claims 2, 3, and 4 of U.S. Patent No. 8,061,758
`
`(“the ’758 patent”) of Laurmark Enterprises, Inc. (“Patent Owner”) in accordance
`
`with 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq. (“Petition”).
`
`II. OVERVIEW OF THE ’758 PATENT
`A.
`Background
`
`The challenge of folding boards made from rigid materials has led to
`
`numerous solutions through the centuries, many arising long before the need to
`
`cover a pickup truck bed. For example, in 1917, a mechanism resembling those
`
`employed in today’s truck bed covers was used in a folding mat as seen in U.S.
`
`Patent No. 1,215,223 (“Vanderpoel”). Ex. 1003, ¶ 20.
`
`By the late 1980s, there was widespread application of such solutions in
`
`multi-panel covers for the open portion, or “tonneau,” of a pickup truck—covers
`
`- 1 -
`
`

`

`used for “converting the open body of a truck, such as a pickup truck, to a closed
`
`body to protect the cargo from adverse weather conditions and from theft” as
`
`described in U.S. Patent No. 4,807,921 (“Champie). Ex. 1013 at 1:67-2:3. As
`
`Champie further describes, the primary benefits of a tonneau cover were well
`
`known in the late 1980s, namely that “[w]hen such a cover is assembled and
`
`mounted on the cargo bed of a truck, it provides improved security, weather
`
`protection and aerodynamics.” Ex 1013 at 3:1-3; Ex. 1003, ¶ 21. And such covers
`
`preferably achieved “the desired qualities of high strength, light weight and low
`
`cost.” Ex. 1013 at 7:6-7; Ex. 1003, ¶ 22.
`
`Maintaining access to the contents also was important. In the 1980s, three
`
`main alternatives existed to retract the truck cover and provide access to the truck
`
`bed. First, Champie shows a rigid slat-based cover (20) with lateral hinges that
`
`allows the slats to be retracted onto a roll at the front of the truck bed (under 28).
`
`Ex. 1003, ¶ 23; Ex. 1013 at 3:52-56.
`
`- 2 -
`
`

`

`A second alternative known in the late 1980s for truck bed access is shown
`
`in U.S. Patent No. 4,747,441 (“Apolzer”). Like Champie, Apolzer recognized the
`
`universal problems to be addressed by a pickup cover, namely, “the cargo area is
`
`an open box and is therefore subject to adverse weather while providing no
`
`security against theft” and “fuel economy is reduced due to the air drag effects on
`
`the open box.” Ex. 1015 at 1:11-15, Figure 1 (below); Ex. 1003, ¶ 24.
`
`- 3 -
`
`

`

`As opposed to rolling, Apolzer uses flexible hinges (similar to Vanderpoel)
`
`where the panels fold accordion-style to allow access to the truck bed, as seen in
`
`Figure 5. Ex. 1015 at 5:45-47; Ex. 1003, ¶ 25.
`
`A third alternative available in the 1980s is disclosed in U.S. Patent No.
`
`4,221,423 (“Stone”)—a primary reference in this Petition that was not before the
`
`Patent Office during prosecution of the ’758 patent. Even at the time Stone was
`
`filed (November 1978), the “prior art include[ed] a variety of covers for vehicle
`
`boxes and the like.” Ex. 1005 at 1:15-16. Stone teaches that such covers shared
`
`certain objectives, namely “such a cover should cover effectively, that is, protect
`
`the contents of the box from the weather and from theft” (Ex. 1005 at 1:17-19), and
`
`“another object is to provide such a cover which minimizes air resistance due to
`
`movement of a vehicle on which the cover is mounted” (Ex. 1005 at 2:26-28). See
`
`Ex. 1003, ¶ 26.
`
`- 4 -
`
`

`

`Further, Stone instructs that “such a cover should open conveniently for
`
`access to all portions of the box.” Ex. 1005 at 1:19-21. To accomplish this, Stone
`
`uses hinged spacer bars of different widths between panels which allow the cover
`
`to fold “into a succession of stacks to provide access to increasingly larger portions
`
`of the box” (Ex. 1005 at 12:42-45) as seen in Figure 5 below:
`
`The claims of the ’758 Patent fall into this third category of pickup truck covers.
`
`B.
`
`Summary of the ’758 Patent
`
`The truck cover market was thus highly mature when the ’758 priority
`
`application was filed in 2006—28 years after Stone’s filing. Like the many patents
`
`before it, the ’758 patent is directed to a “cover assembly for a pick-up truck cargo
`
`box.” Ex. 1001, Abstract. The ’758 patent discloses a routine “foldable cover”
`
`- 5 -
`
`

`

`with first, second, and third (or more) panels that pivot or fold relative to one
`
`another. Id. at 1:49-57.
`
`Figure 2 below is a plan view of the cover 100 disclosed in the ’758 patent,
`
`depicting panels 102 connected by hinge joints 104 wherein second and third hinge
`
`joints 104B and 104C further include spacer bars 110 and 112. Like in Stone, the
`
`spacer bars are “dimensioned to allow the panels to fold flat onto each other,
`
`without stressing the hinge joints,” i.e., joint 104A does not employ a spacer bar as
`
`it is the first to fold; joint 104B employs a spacer bar 110 to accommodate the next
`
`fold; and joint 104C employs a wider spacer bar 112 to accommodate folding over
`
`all the previous panels. Id. at 3:38-55.
`
`- 6 -
`
`

`

`Figure 8 (reproduced below) is a section view showing an example
`
`connection between two “unfolded” panels—e.g., hinge joint 104A, with no spacer
`
`bar—with the hinge strip 146 shown in green. See id. at 4:40-63. Hinge strip 146
`
`is “typically made of rubber or other resilient or flexible material.” Id. at 4:40-43.
`
`As a result, “the hinge strip 146 forms a water resistant barrier with the adjoining
`
`panels 102” such that rainwater “cannot penetrate through the hinge joints 104”
`
`and, “when the cover 100 is closed . . . the contents of the cargo box 34 are secure
`
`and protected from rain.” Id. at 7:5-7. When joint 104 is in the “closed (unfolded)
`
`position shown in solid lines in Figure 8, the hinge strip is optionally slightly
`
`compressed.” Id. at 4:58-63.
`
`- 7 -
`
`

`

`Each panel may be formed as a “composite structure” including “core 120
`
`sandwiched between a top sheet or plate 122 and a bottom sheet or plate 124.” Ex.
`
`1001 at 4:20-25.
`
`Figures 4 and 5 each depict features of cover 100 where the longitudinal
`
`sides of the cover interface with the truck bed. In particular, Figures 4 and 5 show
`
`side channel 128 [purple] attached to a panel [blue] and covered by side channel
`
`strip 130 [pink] “which may be provided as a strip of resilient material, such as
`
`rubber,” and having a tapered flap 136. Id. at 4:6-16.
`
`- 8 -
`
`

`

`C.
`
`Summary of Relevant Prosecution File History
`
`The application that issued as the ’758 Patent was filed on May 26, 2009, as
`
`a continuation of a 2006 priority application, and underwent a lengthy prosecution.
`
`After multiple rounds of prosecution, the Examiner indicated on January 5, 2011,
`
`that new dependent claim 19—which debuted the limitation “the first lateral
`
`member including an interlocking element interlocked with the first spacer bar”—
`
`was allowable if rewritten in independent form. The Examiner rejected all other
`
`claims under §103(a) as being unpatentable over Keller (Ex. 1011), either alone or
`
`in combination with, inter alia, Steffens (Ex. 1010). Ex. 1003, ¶¶ 32-39.
`
`On February 1, 2011, Applicant rewrote claim 19 into independent form as
`
`new claim 22, added new claims 23-25, and amended or cancelled various other
`
`claims. On March 24, 2011, Applicant submitted a supplemental amendment in
`
`response to a telephone interview with the Examiner, amending claims 22 and 23.
`
`On April 5, 2011, the Examiner issued an Interview Summary indicating that
`
`claims 12, 18, 22 and 23 had been discussed, and that claims 22 and 23 “include
`
`the allowable subject matter from cancelled claim 19 which was indicated as
`
`allowable in pre[v]ious office action.” Ex. 1003, ¶¶ 36-38.
`
`On August 10, 2011, the Examiner issued a Final Rejection against all
`
`claims except for 22-25 as being unpatentable over the combination of Steffens
`
`and Keller. The Applicant acquiesced to this rejection and cancelled all claims
`
`- 9 -
`
`

`

`except for 22-25. Claims 22-25 issued on October 12, 2011, as claims 1-4 of the
`
`’758 patent. Ex 1003, ¶ 39.
`
`In the October 12, 2011 Reasons for Allowance, the Examiner reiterated:
`
`“Prior art of record fails to teach show or disclose the use of an interlock element
`
`interlocked with the spacer bar as found in independent claims 22 and 23 [issued
`
`claims 1 and 2].” Ex. 1002 at 274.
`
`Person of Ordinary Skill in the Art
`D.
`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. See Ex.
`
`1003, ¶ 18-19.
`
`- 10 -
`
`

`

`III. CLAIM CONSTRUCTION
`The terms of the ’758 patent should be given their plain and ordinary
`
`meaning based on the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc) 1 except for two terms as noted below.
`
`First, claim 2 of the ’758 Patent includes four instances of a lateral member
`
`with an “interlocking element interlocked with” a lateral edge of a spacer bar. Ex.
`
`1001 (claim 2). The specification of the ’758 Patent defines “interlocking with
`
`each other,” specifically, “having features that engage each other.” Ex. 1001 at
`
`5:1-2; Ex. 1003, ¶ 42. This definition is consistent with both the ordinary meaning
`
`and the sole figure in the ’758 patent—Figure 8 shown below—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.”
`
`Ex. 1001 at 5:1-2; Ex. 1003, ¶ 42.
`
`1 Petitioners address only the constructions relevant to this Petition, and make no
`
`admission regarding constructions in any other forum or that the claims conform to
`
`the requirements of 35 U.S.C. § 112.
`
`- 11 -
`
`

`

`The two interlocking elements above are highlighted in yellow, with the backing
`
`bar 160 having what is called in the industry a “male” interlocking feature that
`
`engages with a “female” interlocking feature in backing bar 162. Ex. 1003, ¶ 42.
`
`Thus, Petitioners propose that “interlocking” elements means those “having
`
`features that engage each other,” such as paired male and female elements.
`
`Second, in the related ITC investigation, the parties (including Patent
`
`Owner) 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.” Ex.
`
`1017 at 3; Ex. 1018.
`
`IV.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS FOR CANCELLATION (37 C.F.R. §§ 42.22(a) AND
`42.104(b))
`The Board is requested to find claims 2, 3, and 4 of the ’758 patent
`
`unpatentable in light of the teachings of the following references:
`
`- 12 -
`
`

`

` U.S. Patent No. 4,221,423 (“Stone”), issued on September 9, 1980, Ex.
`
`1005.
`
` U.S. Patent No. 5,595,417 (“Thoman”), issued on January 21, 1997, Ex.
`
`1006.
`
` U.S. Patent No. 6,352,296 (“Kooiker 296”), issued on March 5, 2002, Ex.
`
`1007.
`
` U.S. Patent No. 5,931,521 (“Kooiker 521”), issued on August 3, 1999, Ex.
`
`1008.
`
` U.S. Patent No. 6,767,051 (“Erlandsson”), issued July 27, 2004, Ex. 1009.
`
` U.S. Patent No. 6,422,635 (“Steffens”), issued July 23, 2002, Ex. 1010.
`
` U.S. Patent No. 6,899,372 (“Keller”), issued May 31, 2005, Ex. 1011.
`
`Each of these references was published more than one year before the presumptive
`
`’758 priority date of September 26, 2006, and is therefore prior art under (pre-AIA)
`
`35 U.S.C. section 102(b).
`
`Specifically, Petitioner respectfully requests that the Board cancel the
`
`challenged claims of the ’758 patent based on the following four grounds:
`
`Ground 1
`
`Ground 2
`
`Claims 2 and 3 are unpatentable under § 103 as obvious
`over Stone in view of Thoman
`
`Claims 3 and 4 are unpatentable under § 103 as obvious
`over Stone in view of Thoman and Kooiker 296
`
`- 13 -
`
`

`

`Ground 3
`
`Claims 2, 3, and 4 are unpatentable under § 103 as
`obvious over Stone in view of Thoman, Erlandsson, and
`Kooiker 296
`
`Ground 4
`
`Claims 2, 3, and 4 are unpatentable under §103 as
`obvious over Steffens in view of Keller and Erlandsson
`
`None of the first three Grounds above involves any prior art reference
`
`considered by the Examiner during prosecution; thus, these Grounds raise no
`
`concerns under 35 U.S.C. § 325(d).
`
`Ground 4 involves two references—Steffens and Keller—that the Examiner
`
`used in combination to reject numerous claims during prosecution. The Examiner
`
`also found that the combination of Steffens and Keller rendered obvious every
`
`claim element of issued claims 2 through 4 challenged here, with the exception of
`
`the “interlocking” elements of claim 2.
`
`In particular, on August 10, 2011, the Examiner issued a Final Rejection
`
`rejecting all pending claims except for claims 22-25 as being unpatentable over the
`
`combination of Steffens and Keller. The “examiner’s statement of reasons for
`
`allowance” was, in whole, that the “[p]rior art of record fails to teach show or
`
`disclose the use of an interlock element interlocked with the spacer bar as found in
`
`independent claims 22 and 23 [issued claims 1 and 2].” Ex. 1002 at 274. As
`
`detailed in Section IV.D below, using such an “interlock element” between panels
`
`is taught in Erlandsson—a prior art patent not before the Examiner during
`
`- 14 -
`
`

`

`prosecution—and it would have been obvious to add such a feature to the truck
`
`cover disclosed in the combination of Steffens and Keller.
`
`In Oticon Medical AB v. Cochlear Limited, the PTAB explained that even
`
`where all other references of a combination were previously considered, if a
`
`petition provides an additional reference that discloses the alleged point of novelty
`
`missing from a previously considered combination, then discretion under § 325(d)
`
`should not be exercised. Case IPR2019-00975, Paper 15 (Oct. 16, 2019) at 9-20
`
`(precedential). Because Ground 4 presents a reference not previously considered
`
`by the Examiner (Erlandsson) that discloses the purported point of novelty in the
`
`claimed inventions (the “interlocking element”), Ground 4 also provides no basis
`
`for denial under § 325(d). See id.
`
`A.
`
`Ground 1: Claims 2 and 3 Are Unpatentable as Obvious Over
`Stone in View of Thoman
`1.
`Stone
`
`Stone is titled “Cover For a Vehicle Box,” and discloses a truck bed cover
`
`with two preferred embodiments: a “first form” 20 (see Ex. 1005 at 3:8-8:42; Figs.
`
`1-9) and a “second form” 200 (see id. at 8:45-9:40; Figs. 10-11) wherein “the first
`
`form of cover 20 and the second form of cover 200 are substantially identical
`
`except that the first form includes [an] extension portion 61.” Id. at 9:46-48; see
`
`also id. at 9:49-64 (explaining that “a single description referring to the first form
`
`- 15 -
`
`

`

`will suffice for both forms except where th[e extension] portion is specifically
`
`involved.”)
`
`The Stone cover includes a series of six “panels” indicated by the numerals
`
`221 through 226 in the second form (and 121 through 126 in the first form)
`
`wherein “[t]he panels are disposed in edge-to-edge relation with their
`
`juxtapositioned edges interconnected by hinge assemblies 230.” Ex. 1005 at 9:7-
`
`12. These panels can be seen in the detailed view of Figure 10 below where a first
`
`panel 222,2 second panel 224, and third panel 226 have been colored purple, and
`
`“panels” 223 and 225 (pink) serve as spacer bars between the larger panels. See
`
`also id., FIG. 1 (showing panels 121 through 126 arranged in an identical manner).
`
`2 Although panel 222 is the second panel from the back of the truck, it represents
`
`the first of the three panels according to the convention used in the ’758 patent.
`
`- 16 -
`
`

`

`The panels of Stone are rigid and gain strength from longitudinal side walls
`
`and lateral walls (or “frame members”) which include additional features for water
`
`protection and channeling as seen in the below shaded excerpts from Figures 3 and
`
`8, as well as the CAD rendering of the Stone cover (below those figures) prepared
`
`by expert Paul Hatch to provide a 3D perspective. See Ex. 1003, ¶ 45.
`
`- 17 -
`
`

`

`To facilitate folding the cover, Stone uses two sizes of spacer bar with
`
`“widths which increase successively” to provide space for the folding of the
`
`covers. Ex. 1005 at 12:63-13:9; Figures 4, 5, and 9. In the excerpt of Figure 5
`
`below, the first and second spacer bars are shown in red. See Ex. 1003, ¶ 46.
`
`With regards to their sizes, Stone explains “[t]he width of the [spacer] panel 123 is
`
`substantially equal to its depth, or the first predetermined distance, and the width of
`
`the [second spacer] panel 125 is substantially equal to twice this distance.” Ex.
`
`1005 at 8:39-42. By sizing the spacers in this way, the first panel (122, 222),
`
`second panel (124, 224), and third panel (126, 226) can be folded over and stacked
`
`substantially parallel to one another as shown in the annotated excerpt of Figure 5
`
`below, where the panels have been labelled and their orientation noted by arrows
`
`pointing to the top of each panel.
`
`- 18 -
`
`

`

`One object of Stone is “to provide such a cover which prevents water
`
`leakage into the box when the cover is closed.” Ex. 1005 at 2:23-25. Thus, Stone
`
`teaches use of a water-protective seal “formed of a resilient material such as
`
`rubber” (Ex. 1005 at 7:55-56) that is compressed between panels (e.g., between a
`
`panel and spacer bar panel) when the cover is in an unfolded position, as shown in
`
`the below excerpt from Figure 7. See Ex. 1003 at ¶ 47.
`
`Stone also discloses that the lateral members of each panel and spacer bar
`
`include interlocking “extensions (144) and notches (146),” which interlock the
`
`panels and spacer bars together when unfolded, but still allow for upward hinging
`
`of the panels and spacer bars when folding up. Ex. 1005 at 10:58-61; Ex. 1003, ¶
`
`48. These are seen in the below shaded excerpts from Figures 7 and 8 of Stone, as
`
`well as the below CAD rendering of the Stone cover (prepared by expert Paul
`
`Hatch to illustrate this feature). See Ex. 1003 at ¶ 48.
`
`- 19 -
`
`

`

`Thus, as explained further below, Stone discloses nearly every element of
`
`independent claim 2 of the ’758 patent, with the minor exception that Stone does
`
`not disclose panels having a core material between top and bottom plates.
`
`- 20 -
`
`

`

`Thoman
`2.
`U.S. Patent No. 5,595,417 (“Thoman”) discloses a three-panel “tonneau
`
`cover for enclosing an open bed of a pick-up truck.” Ex. 1006 at 1:38-42; Figure
`
`17. The cover has front,
`
`center, and rear panels. Id.
`
`Like Stone and the ’758 patent,
`
`Thoman teaches using a
`
`“spacer member” between the
`
`center and rear panels, such that after the front panel is folded over onto the center
`
`panel, the “spacer member allow[s] said rear panel to rotate” on top of the already
`
`stacked front and center panels such that “said center panel along with the front
`
`panel and rear panel in said [folded] positions form[] a work surface substantially
`
`parallel with said bed.” Ex. 1006 at 7:40-59; Exhibit 1003, ¶ 49.
`
`Most pertinent here, “[e]ach of the panel[s] is made up of a frame and a
`
`center composite made of a foam member 56 sandwiched between and bonded to
`
`top 52 and bottom 54 hard plastic sheets.” Ex. 1006 at 3:38-41.
`
`The Combination of Stone in View of Thoman
`3.
`A POSITA would have been motivated to modify Stone to use the panels of
`
`Thoman in order to reduce the weight of the cover, which would improve the fuel
`
`efficiency of the truck, facilitate folding of the panels by users, and also render the
`
`- 21 -
`
`

`

`cover easier to carry and transport when not attached to a truck bed. See Ex. 1003,
`
`¶¶ 73, 78–79.
`
`Like the ’758 Patent, both Stone and Thoman disclose multi-panel folding
`
`covers for pickup truck beds. Both Stone and Thoman address issues of security
`
`and waterproofing for a truck bed through the pivotal folding of hinged panels,
`
`and, as such, both are analogous prior art. Ex. 1003, ¶¶ 74-75, 77-78.
`
`Stone does not expressly discuss the use of top and bottom panel plates, or
`
`the use of some type of core material between the two. Ex. 1003, ¶ 77. Thoman,
`
`however, expressly teaches using panels “enclosing a composite core made up of a
`
`foam center sandwiched between sheets of plastic.” Ex. 1006 at 1:42-45; also
`
`3:38-41 (“Each of the panel[s] is made up of a frame and a center composite made
`
`of a foam member 56 sandwiched between and bonded to top 52 and bottom 54
`
`hard plastic sheets.”).
`
`Since the 1980s, truck covers preferably achieved “the desired qualities of
`
`high strength, light weight and low cost.” Ex. 1013 (Champie) at 7:6-7 (emphasis
`
`added); Ex. 1003, ¶ 80. And at least as early as 1985 there was “a trend toward
`
`using lightweight hollow-core or foam-filled door sections” in the “transportation
`
`industry.” Ex. 1014 (DeFalco) at 1:62-68; Ex. 1003, ¶ 79–80. So it is no surprise
`
`that, by the 2006 priority date of the ’758 patent, use of panels with core material
`
`between top and bottom plates was ubiquitous in the field of truck tonneau covers.
`
`- 22 -
`
`

`

`See, e.g., Ex. 1003, ¶ 81 (citing Ex. 1010 (Steffens) at 7:1-3 and Ex. 1016
`
`(Wheatley) at 3:40-42); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)
`
`(instructing that the Board must consider “additional record evidence [] cited to
`
`demonstrate the knowledge and perspective of one of ordinary skill in the art . . . to
`
`account for critical background information that could easily explain why an
`
`ordinarily skilled artisan would have been motivated to combine or modify the
`
`cited references to arrive at the claimed inventions.”).
`
`Because minimizing the weight of structural components was a known
`
`problem in the transportation industry, and using panels with core material
`
`between top and bottom plates was a well-known solution, a POSITA would have
`
`been motivated to substitute the panels of Stone with those described in Thoman to
`
`lower the weight of the Stone cover and thus improve it. Ex. 1003, ¶ 77-79; ABT
`
`Systems, LLC v. Emerson Elec. Co., 797 F. 3d 1350, 1360 (Fed. Cir. 2015)
`
`(explaining that evidence of “any need or problem known in the field of endeavor
`
`at the time of invention . . . . is particularly relevant with simpler mechanical
`
`technologies”). And because doing so was prevalent in the industry, a POSITA
`
`would have been able to make this common substitution with the reasonable
`
`expectation of success. Ex. 1003, ¶¶ 80-83; see Randall, 733 F.3d at 1363 (“Once
`
`it is established that a prevalent, perhaps even predominant, method of stowing a
`
`bulkhead panel was to raise it to the ceiling, it is hard to see why one of skill in the
`
`- 23 -
`
`

`

`art would not have thought to modify Aquino to include this feature—doing so
`
`would allow the designer to achieve the other advantages of the Aquino assembly
`
`while using a stowage strategy that was very familiar in the industry”).
`
`Applying Stone in View of Thoman to Claims 2 and 3
`4.
`The combination of Stone and Thoman discloses every limitation of claims 2
`
`and 3 of the ’758 patent, as set forth in the following chart.
`
`Claim
`Language
`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
`
`Stone in view of Thoman
`
`As seen in the excerpt of Figure 10 above, Stone discloses
`a cover for a pick-up truck cargo box.
`
`- 24 -
`
`

`

`Claim
`Language
`material
`between top
`and bottom
`plates;
`
`Stone in view of Thoman
`
`As seen in Figure 10 above, Stone discloses a cover
`comprising a first panel (222), a second panel (224), and a
`third panel (226). Ex. 1005 at 9:7-12; also Ex. 1003, ¶ 84,
`Claim 2(i) (annotated CAD drawing shown below).
`
`Thoman discloses a truck tonneau cover wherein each of
`the panels “is made up of a frame and a center composite
`made of a foam member 56 sandwiched between and
`bonded to top 52 and bottom 54 hard plastic sheets.” Ex.
`1006 at 1:42-45; 3:38-43; also Ex. 1003, ¶ 84, Claim 2(ii)
`(providing annotated figures):
`
`- 25 -
`
`

`

`Claim
`Language
`
`Stone in view of Thoman
`
`For the reasons explained above, it would have been
`obvious to construct the first panel (222), second panel
`(224), and third panel (226) of Stone with core material 56
`sandwiched between top plate 52 and bottom plate 54 as
`taught in Thoman. See also Ex. 1003, ¶ 84, Claim 2(ii).
`
`Stone discloses a first lateral member attached to the front
`lateral edge of the first panel.
`
`With two immaterial exceptions3, each of the panels and
`spacer bars in Stone have the same composition—Stone
`even refers to them all as “panels,” although 223 and 225
`serve the function of spacer bars—and panels 221 through
`226 from Figure 10 have the same relevant features as
`panels 121 through 126 described in more detail in Stone.
`
`2.2 a first lateral
`member
`attached to the
`front lateral
`edge of the
`first panel;
`
`3 End panels 121/221 (near tailgate) and 126/226 (near truck cab) each have an
`
`edge not connected to another panel or spacer bar. Ex. 1005 at 6:55-57.
`
`- 26 -
`
`

`

`Claim
`Language
`
`Stone in view of Thoman
`See Ex. 1005 at 9:7-10; see also Ex. 1003 at ¶ 84, Claim
`2(iii).
`
`Each of the adjacent panels and spacer bars are “disposed
`in edge-to-edge relation with their juxtapositioned edges
`interconnected by hinge assemblies 230” as seen in Figure
`10. Ex. 1005 at 9:10-13.
`
`Further, Figure 5 shows a cut-out of the common internal
`structure of panels and spacers that shows the “second bars
`149 which are parallel to the second edges 134 of its
`respective panel,” and constitute the claimed “lateral
`members” as seen in the following enlarged excerpt from
`
`- 27 -
`
`

`

`Claim
`Language
`
`Stone in view of Thoman
`Figure 5. Ex. 1005 at 6:55-57; 7:24-29; Ex. 1003 at ¶ 84,
`Claim 2 (iii).4
`
`Thus, the first panel 222 of Stone (like all of the spacer bars
`and panels) 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). Ex.
`1005 at 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 added); see
`also Ex. 1003, ¶ 84, Claim 2 (iii).
`
`4 A “bar 150” shown in this excerpt from Figure 5 is only added to the rear edge of
`
`the back panel (121/221) and the front edge of the front panel (126/226), not the
`
`edges of internal panels. Ex. 1003 at ¶ 84, Claim 2 (iii).
`
`- 28 -
`
`

`

`Claim
`Language
`
`Stone in view of Thoman
`
`Further, because all panels (including spacer bars) use the
`same construction, the composition of elements from FIGS
`5 through 9 of Stone are applicable to all adjacent elements,
`including panel-to-panel, panel-to-spacer-bar, and spacer-
`bar-to-panel connections. See Ex. 1003, ¶ 84, Claim 2 (iii).
`This is illustrated in the below CAD drawing of the
`relevant pieces of the Stone cover (Ex