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J Squared, Inc. d/b/a University Loft Company v. Sauder Manufacturing Company

Docket IPR2015-00958, Patent Trial and Appeal Board (Mar. 27, 2015)
James Worth, Josiah Cocks, Linda Horner, presiding
Case TypeInter Partes Review
Patent
8585136
Petitioner J Squared, Inc. d/b/a University Loft Company
Patent Owner Sauder Manufacturing Company
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38 Order: CAFC Termination of Appeal

Document IPR2015-00958, No. 38 Order - CAFC Termination of Appeal (P.T.A.B. Sep. 25, 2017)
United States Court of Appeals for the Federal Circuit
Appeals from the United States Patent and Trade- mark Office, Patent Trial and Appeal Board in Nos.
J SQUARED, INC. v. SAUDER MANUFACTURING COMPANY Upon consideration thereof,
2) Each party shall bear their own fees and costs.
ISSUED AS A MANDATE: September 25, 2017
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35 Final Decision: Final Written Decision

Document IPR2015-00958, No. 35 Final Decision - Final Written Decision (P.T.A.B. Jun. 27, 2016)
The Federal Circuit reversed, noting that “French teaches a liquid strainer which relies, at least in part, upon the assistance of gravity to separate undesired dirt and water from gasoline and other light oils.” Id. (explaining that “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”).
In response, Sauder argues that J Squared has failed to provide adequate evidence or reasoning to support a proposed modification to substitute the latch mechanism of Kassai for the bolts of Yu in the manner claimed.
J Squared provides insufficient evidence or reasoning to show that one of ordinary skill in the art, aware of the safety considerations involved with coupling a chair to a base, would have been motivated to replace the bolts of Yu with such a latch mechanism.
With respect to this limitation of independent claim 12, J Squared asserted that Yu provides a way to detachably fasten the chair to the base, e.g., via plate 40, support rods 112, and bolts, and alternatively, Kassai shows latches 18 and 19.
Secondary Considerations Sauder argues that commercial success, industry praise, and evidence of copying indicate that the subject matter of the claims would not have been obvious to a person of ordinary skill in the art.
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34 Notice: Record of Oral Hearing

Document IPR2015-00958, No. 34 Notice - Record of Oral Hearing (P.T.A.B. May. 24, 2016)
So at the top of column 9 it is this discussion of engaging versus disengaging where it makes clear that, well, in some instances you can put the chair back and open the latch or you can by force operate the spring.
So if you are looking at Yu, and you want to change out the bolts and you are one of skill in the art and you know of all of the different ways to releasably engage something, and one of them is the clamp from Kasai, that's just a wealth of knowledge that you would draw upon in the same field of endeavor.
And we know from the deposition of the CEO the reason they weren't selling is because people were going out and buying chairs that looked different, that had more aesthetic appeal, that had tilt and swivel mechanisms, that had height adjustments.
And so I would like to give you an opportunity now to address a bodily incorporation discussion and say, well, you know, it seems like your complaint is that the rocker bottom is not attached to the legs in the way that you are saying would have been done by a person of ordinary skill.
JUDGE HORNER: Can you respond to his point that the Bontrager declaration with regard to the evidence of copying included a detailed discussion of the Wave chair as compared to the claim?
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30 Notice: Order 37 CFR 425, 4270

Document IPR2015-00958, No. 30 Notice - Order 37 CFR 425, 4270 (P.T.A.B. Apr. 4, 2016)
Counsel for Patent Owner, Sauder Manufacturing Company (“Patent Owner”) initiated the call to seek authorization to file a motion for observations on cross examination testimony of its own witnesses and to bring physical specimens of Patent Owner’s commercial product and of Petitioner’s commercial product to the oral argument.
Petitioner objected because these physical specimens were not made part of the Record and constitute unauthorized and belated supplemental information.
The parties are further directed to request a conference call with the Board no later than three business days prior to the oral argument to resolve any dispute over the propriety of each party’s demonstrative exhibits.
The parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen number) referenced during the oral argument to ensure the clarity and accuracy of the reporter’s transcript.
initiate a joint telephone conference with the Board no later than two business days prior to the oral argument to discuss the matter.
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29 Order: Order Conduct of the Proceedings

Document IPR2015-00958, No. 29 Order - Order Conduct of the Proceedings (P.T.A.B. Mar. 29, 2016)
Petitioner, J Squared, Inc. d/b/a University Loft Company (“Petitioner”), cross-examined these witnesses by depositions conducted in January, 2016, and subsequently filed a Reply to Patent Owner’s Response on February 16, 2016 in each case (Paper 21), accompanied by complete transcripts of the depositions of each witness (Exhibits 1025, 1027, and 1028).
On March 28, 2016, Patent Owner filed motions for observations in each case on the cross-examination testimony of its own witnesses Philip Bontrager, David Harting, and Anthony Warncke (Papers 25, 26, and 27, respectively).
The Office Patent Trial Practice Guide describes the use of observations on cross-examination as follows: In the event that cross-examination occurs after a party has filed its last substantive paper on an issue, such cross-examination may result in testimony that should be called to the Board’s attention, but the party does not believe a motion to exclude the testimony is warranted.
2 Counsel for the parties were directed to this specific portion of the Office Patent Trial Practice Guide in the Board’s Scheduling Order in each case (Paper 8, at 6).
It is therefore ORDERED that Patent Owner’s Motions for Observations on Cross Examination (Papers 25, 26, and 27) filed in IPR2015-00774 and IPR2015- 00958 are dismissed and will be expunged.
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15 Order: Order Joint Motion to Seal and Expungement of Papers 37 CFR 427, 421...

Document IPR2015-00958, No. 15 Order - Order Joint Motion to Seal and Expungement of Papers 37 CFR 427, 4214 and 4254 (P.T.A.B. Nov. 25, 2015)

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11 Notice: ORDER Conduct of the Proceeding

Document IPR2015-00958, No. 11 Notice - ORDER Conduct of the Proceeding (P.T.A.B. Nov. 12, 2015)

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