Chums, Inc.v.Cablz, Inc.

Patent Trial and Appeal Board

Feb 8, 2016

12991668 (P.T.A.B. Feb. 8, 2016)

Trials@uspto.gov Paper No. 43
571-272-7822 Filed: February 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CHUMS, INC., and CROAKIES, INC.,
Petitioner,

v.

CABLZ, INC.,
Patent Owner.
____________

Case IPR2014-01240
Patent 8,366,268 B2
____________

Before JOSIAH C. COCKS, JEREMY M. PLENZLER, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Chums, Inc. and Croakies, Inc. (collectively, “Petitioner”) filed a
Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–17 of
U.S. Patent No. 8,366,268 B2 (Ex. 1001, “the ’268 patent”) pursuant to
35 U.S.C. §§ 311–319. Cablz, Inc. (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”). Based on these submissions, we
instituted trial as to claims 1–17 of the ’268 patent. Paper 10 (“Dec.”).
After institution, Patent Owner filed a Response (Paper 20, “PO
Resp.”)1 and Petitioner filed a Reply (Paper 26, “Reply”).2 In addition, the
parties rely upon fact and expert testimony. Petitioner proffered the
Declaration of Steven C. Visser (Ex. 1007, “Visser Declaration”) with the
Petition. Patent Owner proffered the Declaration of Fred P. Smith (Ex.
2079, “Smith Declaration”) with its Response. Patent Owner relies also on a
declaration of Beirne Chisolm (Exhibit 2080, “Chisolm Declaration”). An
oral hearing for this case was held on September 2, 2015. A transcript of the
argument is entered in the record. Paper 42 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a). We conclude for the
reasons that follow that Petitioner has shown by a preponderance of the
evidence that claims 1–17 of the ’268 patent are unpatentable.
B. Related Matters
The parties indicate that the ’268 patent is the subject of the
following district court proceedings: Cablz, Inc. v. Chums, Inc., 2:14-cv-

1 We refer to Patent Owner’s Unredacted Response (Exhibit 2078).
2 We refer to Petitioner’s Unredacted Reply (Exhibit 1038).
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00091-SLB (N.D. Ala.) and Cablz, Inc. v. Croakies, Inc., 2:14-cv-00126-
SGC (N.D. Ala.). Pet. 1; Paper 5, 1.
C. The ʼ268 Patent (Ex. 1001)
The ’268 patent, titled “Eye Wear Retention Device,” issued on
February 5, 2013. The ’268 patent describes an eyewear retention device
having two temple retainers connected by a resilient member, such that
when the temple retainers are attached to a pair of eyeglasses and the
eyeglasses are worn over the ears of a wearer, the resilient member extends
rearward from the head of the wearer and is suspended off the neck of the
wearer. Ex. 1001, Abstract. An embodiment of the device is depicted in
Figure 4 as follows:

Figure 4 shows a perspective view of the device placed upon the end
portions of the temples of a typical pair of eyeglasses. Id. at 2:35–36. As
described in the specification, “the resiliency of the cabling 11 in
combination with the secure structure of retention tubing 12, with its
inherent resiliency, creates an internal resilience within cabling 11 such that
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the cable maintains an elevated arc position above a wearer’s rear neck and
lower head area.” Id. at 3:66–4:3.
D. Illustrative Claim
Claim 1 of the ’268 patent is reproduced below:
1. An eyewear retention device comprising two temple retainers
connected by a resilient cable, such that when the temple
retainers are attached to a pair of eyeglasses and the eyeglasses
are worn over the ears of a wearer, the cable extends rearward
from the head of the wearer and is suspended off the neck of the
wearer.
Ex. 1001, 4:36–41.
E. The Prior Art
Petitioner relies on the following prior art:
1. Bill Monroe, Outdoor folks don’t use trendy glasses-
holders, The Oregonian, E4 (July 4, 1991) (“Monroe”) (Ex.
1002);
2. U.S. Patent No. 6,941,619 B2, issued September 13,
2005 (“Mackay”) (Ex. 1003);
3. U.S. Publication No. 2007/0046889 A1, published
March 1, 2007 (“Miller”) (Ex. 1004); and
4. U.S. Patent No. 6,764,177 B1, issued July 20, 2004
(“Chisolm”) (Ex. 1005).
F. Instituted Grounds
References Basis Claims Instituted
Monroe and Mackay § 103 1, 3–9, and 11–17
Monroe, Mackay, and Miller § 103 1–17
Chisolm and Monroe § 103 1, 3–9, and 11–17
Chisolm, Monroe, and Miller § 103 1–17
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II. ANALYSIS
A. Claim Construction
The Board interprets claims in an unexpired patent using the broadest
reasonable construction in light of the specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1277–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed
Techs., LLC v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446)
(“We conclude that Congress implicitly approved the broadest reasonable
interpretation standard in enacting the AIA.”). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning in view of the specification, as would be understood by
one of ordinary skill in the art at the time of the invention. In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Claim terms generally are
given their ordinary and customary meaning, unless it appears from the
specification or the file history that they were used differently by the
inventor, in a clear, deliberate, and precise manner. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994). There is a presumption that a claim term
carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
In instituting trial, we expressly construed three claim terms:
“resilient,” “cable,” and “temple retainer.” Dec. 5–7. Patent Owner, in its
Response, proposes alternate constructions for these three terms. PO Resp.
3–5. Petitioner agrees with the Board’s claim interpretations set forth in the
Institution Decision. Reply 1.
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1. “resilient”
We construed the “resilient” portion of the term “resilient cable” to
mean “having sufficient stiffness to maintain its shape and to return to its
original form after being bent.” Dec. 6. Patent Owner states that the
existing construction “improperly requires a resilient cable or member to
always return to its original shape after any bending.” PO Resp. 3. Patent
Owner proposes that we construe “resilient” to mean “having sufficient
stiffness to maintain its shape and not easily exhibiting deflection memory,
as one would find in a solid copper or aluminum wire of equal diameter.”
Id. at 4. Petitioner disagrees, arguing the specification “does not limit the
scope of the term ‘resilient’ to a comparison involving ‘a solid copper or
aluminum wire of equal diameter.’” Reply 1. Petitioner also criticizes
Patent Owner’s comparison to solid copper or aluminum wire of equal
diameter, stating that it would be nonsensical in view of the specification’s
uses of the term “resilient” in connection with other materials. Id. Patent
Owner does not define “deflection memory” apart from describing it in the
specification as a property of a particular type of wire. We decline to
import specific examples from the specification into our interpretation of
the claim terms. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Accordingly, we maintain our construction of the term “resilient” as
“having sufficient stiffness to maintain its shape and to return to its
original form after being bent.”
2. “cable”
We construed the “cable” portion of the term “resilient cable” “in
accordance with its ordinary and customary meaning consistent with the
[s]pecification, as the term would be understood by one skilled in the art.”
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Dec. 6. Patent Owner proposes that we construe “cable” to mean “a length
of stranded line.” PO Resp. 4. In support of that proposed construction,
Patent Owner contends that “a cable of all sizes is commonly understood
by a person of ordinary skill to be this kind of wound structure – whether
used on cranes, on weight machines, or in jewelry.” Id. at 4–5. Petitioner
argues that cable should be interpreted broadly enough to include, inter
alia, plastic monofilament line. Reply 3. Petitioner notes that Patent
Owner’s reliance on extrinsic evidence to support its proposed
interpretation “fails to discuss the manner in which this term is actually
used in the very field of endeavor at hand.” Id. at 2. We do not find Patent
Owner’s statement regarding the understanding of the term “cable” in other
fields of endeavor to be persuasive, given that the ’268 patent is directed to
eyewear. In that respect, we are not persuaded that the term “cable” in the
context of eyewear implicitly requires a configuration viewed as
“stranded.” Upon the complete record before us, we see no reason to alter
our earlier construction of the term “cable.”
3. “temple retainer”
We construed the term “temple retainer” to mean “the components
of an eyeglass retention device that are attached to the eyeglasses.” Dec. 7.
In doing so, we noted that this construction was consistent with the cited
disclosure in claim 1 of temple retainers that are “attached to a pair of
eyeglasses.” Ex. 1001, 4:38.
Patent Owner proposes that we construe “temple retainer” to mean
“the components of an eyeglass retention device that are slid onto and off
the end of the eyeglass temple.” PO Resp. 4. Petitioner disagrees, arguing
that “slid onto and off the end” language is entirely absent from the claims
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as written and should not be imported into our construction. Reply 1–2.
Neither party points us to any portion of the specification apart from the
claims that defines “temple retainer.”
The language of claim 1, in discussing temple retainers, states:
“such that when the temple retainers are attached to a pair of
eyeglasses . . . .” Ex. 1001, 4:37–38. Similarly, dependent claim 8,
independent claim 9, and dependent claim 17, disclose that “the temple
retainers are attached to a pair of eyeglasses.” Id. at 4:60–61, 4:65–66,
6:11–12.
Dependent claims 4 and 12 narrow this limitation, stating that “each
of said temple retainers comprises an opening for receiving the temple of a
pair of eyeglasses.” Id. at 4:47–49, 5:9–11. Claims 6 and 14 also narrow
this limitation, stating “wherein said temple retainer is retained on an
eyeglass temple by a friction fit.” Id. at 4:54–55, 6:1–2.
Patent Owner’s urged interpretation hews more closely to the
version claimed in narrowing, dependent claims 4, 6, 12, and 14. Patent
Owner does not explain how adopting a narrower claim construction does
not violate claim construction principles when viewed in light of the
broader claims 1, 8, 9, and 17. Patent Owner provides no explanation why
we should adopt a construction for “temple retainer” that would render
these dependent claims superfluous. See InterDigital Commc’ns, LLC v.
Int’l Trade Comm’n, 690 F.3d 1318, 1324–25 (Fed. Cir. 2012). This
counsels against reading this limitation into the independent claims. Upon
the complete record before us, we see no reason to alter our earlier
construction of the term “temple retainer.”
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B. Asserted Grounds of Unpatentability under 35 U.S.C. § 103
Petitioner asserts that claims 1–17 are unpatentable under § 103 in
view of certain combinations of the references. Pet. 34–59. In resolving the
question of the obviousness of the claims, we consider the following
underlying factual determinations: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; and
(3) the level of skill in the art; and (4) secondary considerations of non-
obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17 (1966)
1. Prior Art
a. Monroe (Ex. 1002)
Monroe, a newspaper article dated July 4, 1991, describes various
eyewear retainers of the time. Ex. 1002, 1. The article states that the type
of eyewear retainer that a user wears “around the back of his neck to hold
his sunglasses on” has “only recently become popular among the wearers
of glasses.” Id. at 3. One eyewear retainer, attributed to Mark Sosin, is
described as a “retainer [that] never hangs up and never drapes around his
neck.” Id. at 5. This retainer is made of a length of 300-pound test
monofilament “so thick and stiff that the only knot it would take would be
big enough to tie up a small ship.” Id. As shown in the photograph below,
Mr. Sosin secures the retainer to the frame of the eyeglasses “by wrapping
dental floss around it and finishes off the knot as if he were tying a fly.”
Id.
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The portion of the photograph above shows Mr. Sosin using stout fishing
line as a keeper for his sunglasses. Ex. 1002, 2; Pet. 36.
b. Mackay (Ex. 1003)
Mackay discloses an eyewear retention device having eyeglass
retainers, or connectors, capable of selectively coupling to different
portions of an eyeglass. Ex. 1003, Figs. 2A, 2B, 2:61–63. Mackay
discloses that the connectors attach to a cord that may comprise a variety
of materials. Id. at 5:36–45. Mackay’s Figures 2A and 2B as presented in
the Petition are reproduced below:
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Pet. 26. Figures 2A and 2B (shown above) of Mackay are alternate views of
an eyeglass retainer as disclosed in Mackay. Ex. 1003, 2:27–35; Pet. 26.
c. Chisolm (Ex. 1005)
Chisolm discloses two temple retainers attached to a “filament
member.” Ex. 1005, Abstract. Figures 6, 8–10, and 12 of Chisolm
illustrate the temple retainers of Chisolm and some of the possible manners
in which they can be positioned. Pet. 28–29 (citing Figs. 6, 8–10, 12,
3:67–4:3). A version of Figure 12, as annotated by Petitioner, is
reproduced below:
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Pet. 29. Annotated Figure 12, reproduced above, is a view in cross section
of an alternative embodiment of the gripping member of Chisolm where
the transverse openings are not aligned. Ex. 1005, 3:7–9.
d. Miller (Ex. 1004)
Miller is titled “Eyewear with Weighted Flexible Temples” and is
directed to “the field of eyewear and more specifically to adjustable and
flexible temples used with eyeglasses.” Ex. 1004, (54), ¶ 2. Figure 9 of Miller
as presented in the Petition is reproduced below:

Pet. 32. Figure 9 is a user’s view of an eyewear assembly embodiment
having a continuous flexible temple with a single sliding temple weight.
Ex. 1004 ¶ 21. Miller provides that the flexible temple material can be
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“clear monofilament polymer with or without cladding capable of photonic
transmission” and also can be “of chain, cloth, woven string, flexible fiber,
plastic, composite, wire, optical fiber, electrical conductor, cable, multi-clad
cable, coaxial cable, rottable [sic] in longitudinal axis cable insert, metal,
and tubing.” Id. ¶ 11.
2. Instituted Grounds under § 103
a. Monroe and Mackay
Petitioner challenges claims 1, 3–9, and 11–17 as unpatentable over
Monroe and Mackay under 35 U.S.C. § 103(a). Pet. 35–41. Petitioner
presents a claim chart identifying where the individual features of the
challenged claims are alleged to be found in Monroe and Mackay. Id.
at 37–41. Petitioner asserts that Monroe teaches all the elements of claim
1, with the exception of the two temple retainers, for which Petitioner
relies on Mackay. Id. at 37. For independent claim 9, which differs from
claim 1 only in that the term “resilient member” replaces “resilient cable,”
Petitioner relies largely on its arguments for claim 1. Id. at 39. Petitioner
argues that one of skill in the art would have “immediately recognized that
a simple substitution of the eyewear retainers of Mackay for the attachment
method employed in Monroe would have had various advantages.” Id. at
36 (citing Ex. 1007, 30–35).
b. Monroe, Mackay and Miller
Petitioner challenges claims 1–17 as unpatentable over Monroe,
Mackay, and Miller under 35 U.S.C. § 103(a). Pet. 41–46. Petitioner’s
claim chart, for the most part, refers to the claim chart for the Monroe and
Mackay ground, supra, with the exception of elements in claims 1, 2, 9, and
10. Id. at 42–46. In its claim chart concerning the ground based on Monroe,
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Mackay, and Miller, Petitioner relies on Miller to teach the “resilient cable”
and “resilient member” of claims 1 and 9, respectively, and the “made from
a metallic core coated in a smooth casing” limitation of claims 2 and 10. Id.
at 42–45. Petitioner argues that “Miller establishes that it was known in the
art of eyewear retaining devices to substitute an elongated piece of resilient
plastic with a flexible metallic cable having a smooth casing” and that “such
a direct substitution of known parts would have been obvious to one of
ordinary skill in the art.” Id. at 41 (citing Ex. 1007, 30–32, 35–36).
c. Chisolm and Monroe
Petitioner challenges claims 1, 3–9, and 11–17 as unpatentable over
Chisolm and Monroe under 35 U.S.C. § 103(a). Pet. 46–52. Petitioner
asserts that Chisolm discloses two temple retainers attached to a “filament
member.” Id. at 27–28 (citing Ex. 1005, Abstract). Petitioner further
asserts that Chisolm discloses an eyewear retention device comprising two
temple retainers, and relies on Monroe to disclose the remaining elements
of claim 1. Pet. 48. For independent claim 9, which differs from claim 1
only in that the term “resilient member” replaces “resilient cable,”
Petitioner relies largely on its arguments for claim 1. Id. at 50–51.
According to Petitioner, Figures 6, 8–10, and 12 of Chisolm illustrate the
temple retainers of Chisolm and some of the possible manners in which
they can be positioned. Id. at 28–29. Petitioner further argues that one of
ordinary skill in the art would have found it obvious to combine the
teachings of Chisolm with those of Monroe, and specifically “would have
been prompted to consider using the piece of monofilament disclosed in
Monroe with Chisolm’s devices based on Chisolm’s suggestion that the
‘filament material . . . may be made of any suitable material, including
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metals, fabrics, woven or non-woven cord, plastics or elastomers.’” Pet.
47 (citing Ex. 1007, 30–32, 36–38).
d. Chisolm, Monroe, and Miller
Petitioner challenges claims 1–17 as unpatentable over Chisolm,
Monroe, and Miller under 35 U.S.C. § 103(a). Pet. 52–53. For support,
Petitioner refers to its claim charts and arguments in Sections VI.C,
VI.D.2, and VI.D.3 of the Petition. Id. Petitioner argues that it would have
been obvious to simply substitute any of the materials disclosed or
suggested in Miller for the monofilament of Monroe. Id. at 52 (citing Ex.
1007, 30–32, 38).
3. Analysis
We have reviewed the Petition, the Patent Owner’s Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in those
papers. Patent Owner’s responses to Petitioner’s arguments are focused on
several categories not specific to any particular ground, namely: (a) the
prior art does not teach all elements of the claimed invention; (b) even if all
elements were in the prior art, there was no reason to combine them; (c)
adding the resilient cable/member to an eyewear retainer was not a “simple
substitution”; and (d) objective evidence. We address these arguments in
turn.
a. Whether the prior art teaches all elements of the claimed
invention
Patent Owner argues that (1) the cited art fails to teach any connection
between a resilient cable/member and two temple retainers; (2) no
connection is disclosed in Monroe, so the prior art fails to teach that the
cable extends rearward from the head of the wearer; (3) Monroe is only
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plastic, and Miller does not disclose the materials for its Figure 9
embodiment, and thus the prior art fails to teach the cable/member made of a
“metallic core coated in a smooth casing” of claims 2 and 10; (4) Mackay
and Chisolm fail to teach the “said back portion being connected to said
cable [resilient member]” of claims 5 and 13; (5) Mackay and Chisolm do
not teach the “angle” of claims 7 and 15; and (6) Monroe does not teach the
“arc suspended substantially in the air” element of claims 8 and 17. PO
Resp. 20–22.
Petitioner responds: (1), (2), Patent Owner’s understanding of
“connection” is inconsistent with its plain and ordinary meaning, and under
the broadest reasonable interpretation of the term, Monroe discloses a
connection between a resilient cable/member and two temple retainers; (3)
Miller’s disclosure explicitly lists options for its flexible temple element, and
one of ordinary skill in the art would consider all these materials; (5)
Mackay describes its connectors 18, 20 as being “angled,” and Chisolm
expressly states that the temple retainers are angled; and (6) it would have
been obvious to one of ordinary skill in the art to bend the monofilament of
Monroe into a natural arc shape. Reply 3–6, 15–16; Tr. 14:16–15:15
(discussing connection). Petitioner refers to its arguments in the “simple
substitution” section for further support. Reply 4.
Petitioner has argued in its Petition, as supported by its claim charts,
that all the limitations of the claims are found in the prior art references.
Patent Owner bases its first two arguments on a lack of “connection,” a term
which we have not been asked to construe, and which does not appear in the
claims. Rather, the claims and the Abstract discuss “temple retainers
connected by a resilient cable” or “member.” Ex. 1001, Abstract. We are
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persuaded by Petitioner’s claim charts and arguments that the combination
of references teaches “temple retainers connected by a resilient cable” or
“member.” Pet. 35–37 (citing Ex. 1003, Abstract; Ex. 1002, 5 ¶ 4), 46–48
(citing Ex. 1005, Abstract; Ex. 1002, 5 ¶ 4). Specifically, the test
monofilament of Monroe, combined with the retainers taught in Mackay and
Chisolm, respectively, results in an eyewear retention device having two
temple retainers connected by a resilient cable. The specification does not
discuss the term “connected,” much less give it a meaning beyond its
ordinary and customary one. We are not persuaded that a narrow reading of
the term is warranted given the lack of discussion in the specification and the
general nature of the claims. We understand that Monroe’s resilient
cable/member must in some way be connected or attached to the eyeglasses
in order to function. Indeed, there can be no credible argument to the
contrary. We do not perceive a shortcoming in the Monroe reference in this
regard. Moreover, we understand that Petitioner also relies on references
other than Monroe for the temple retainer element of the claims.
Regarding the limitations of claims 2 and 10, we are persuaded by
Petitioner’s claim charts and arguments that Miller discloses materials
including a cable/member made from a metallic cord coated in a smooth
casing. Pet. 42–43 (citing Ex. 1004, Figs. 5, 9, ¶¶ 11, 24, 32). For example,
we are persuaded that Miller teaches a cable/member made from a metallic
core coated in a smooth casing because it specifically discusses that, in the
field of eyewear, it was well known to use a variety of materials, including,
for example, coaxial cable, to encircle a wearer’s head. Ex. 1004 ¶ 11.
Regarding the limitations of claims 5 and 13, we are persuaded by
Petitioner’s claim charts and arguments that Mackay and Chisolm teach the
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“said back portion being connected to said cable/resilient member.” Pet. 38
(citing Ex. 1003, 2:64–67), 49 (citing Ex. 1005, 3:45–48, Fig. 6). Patent
Owner’s argument that “the connection in those references is not with a
resilient cable/member” goes more to the “simple substitution” arguments,
and also overlooks Petitioner’s reliance on other references to disclose the
cable/member element. Petitioner relies on Mackay and Chisolm for the
specific temple retainer features recited in claims 5 and 13, and proposes
combining these teachings with those of Monroe and/or Miller regarding the
specific type of cable/member recited (i.e., “a resilient cable”).
Regarding the “angle” limitation of claims 7 and 15, we are persuaded
by Petitioner’s argument and claim charts that Mackay and Chisolm each
teach this limitation. Pet. 38 (citing Ex. 1003, Fig. 2A), 49–50 (citing Ex.
1005, Fig. 12, 3:66–4:3). Patent Owner’s arguments to the contrary focus on
alternate embodiments in an attempt to highlight inconsistencies in the
references. We are persuaded that Mackay teaches this limitation because it
specifically discusses and depicts connectors 18, 20 as being “angled.” Ex.
1003, 4:25–29, Figs. 1–3B. We are also persuaded that Chisolm teaches this
limitation because it specifically discusses and depicts that the temple
retainers are angled. Ex. 1005, Figs. 8–10, 12, 4:48–55. We are not
persuaded that the arguments made by Patent Owner appropriately account
for these explicit disclosures of Mackay and Chisolm.
Finally, regarding the “arc suspended substantially in the air”
limitation of claims 8 and 17, we find Petitioner’s arguments persuasive that
Monroe teaches this element. Pet. 38–39 (citing Ex. 1002, 2, 5; Ex. 1007,
¶ 40). We take into consideration Patent Owner’s argument that the picture
of Monroe is cropped, and thus neither the picture nor the text show this
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limitation. However, we are persuaded by description in the reference itself,
which states that Sosin “bends a length of 300-pound test filament,” and
Petitioner’s argument that the ordinarily skilled artisan would have formed
the filament into an arc to “merely allow the bent monofilament to assume a
natural arc shape when bent” rather than crimp it as suggested by Patent
Owner. Ex. 1002, 5; Reply 6.
b. Reasons to combine the prior art
i. Teaching away
Patent Owner argues that the prior art references teach away from
each other: (1) Monroe teaches against attaching 300 pound test
monofilament to a flexible temple retainer; (2) the slider in Mackay and
Chisolm teaches away from using a resilient member; (3) “Monroe’s flexible
temple retainers with readily bendable accordion-like ends teach away from
keeping the resilient member of Monroe off the neck;”3 (4) Mackay and
Chisolm secure glasses to the face by tightening the cord against the neck,
teaching away from Monroe’s purpose of staying off the neck; (5) Mackay
teaches against using a normalizing angle that would lift the cable/resilient
member up; and (6) Miller teaches away from using the resilient member of
Monroe because Miller requires a flexible temple element. PO Resp. 23–24.
Petitioner responds: (1) Patent Owner does not explain how Monroe
affirmatively dissuades one of skill in the art from using monofilament line
with flexible temple retainers; (2), (4) Mackay discloses an embodiment

3 Although the first mention of “Monroe” in Petitioner’s third argument
appears to be a typographical error, because Patent Owner does not
elsewhere discuss Monroe’s flexible temple retainers, we do not speculate as
to what Patent Owner may have intended to argue, and do not discuss it
separately.
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without a slider, and the slider of Chisolm is optional; (5) the teachings of
Mackay upon which Patent Owner relies are optional; and (6) Miller merely
illustrates the variety of materials that could be used as interchangeable
replacements for monofilament line. Reply 7–11.
A reference is available for all that it teaches to a person of ordinary
skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“‘the fact that a specific [embodiment] is taught to be preferred
is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered’”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)). “The prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). “We will not read into a reference a teaching away . . . where no
such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). None of Patent
Owner’s examples of purported “teaching away” criticize, discredit, or
otherwise discourage the solution claimed. Patent Owner presents a one- or
two-sentence statement to support each asserted “teaching away” ground,
but fails to provide a persuasive analysis of why the references affirmatively
teach away in the manner asserted by Patent Owner. We are persuaded,
rather, by Petitioner’s more detailed responses explaining why the prior art
references do not “teach away” in the manner alleged by Patent Owner. See
Reply 7–11.
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ii. “Being in the way”
Patent Owner defines the “being in the way” problem as “a problem
caused by prior art retainers—the burden of the retention cord on the neck
and its being in the way of and getting ensnared in the wearer’s garments.”
PO Resp. 2. Patent Owner argues that actual, highly skilled artisans
employed by Petitioner had not recognized “being in the way” as a problem
to be solved. Id. at 24. Rather, Patent Owner argues, “only by the use of
improper hindsight could a factfinder find that a hypothetical person of
ordinary skill would have taken a path that multiple actual persons of
ordinary skill never took, even with the prior art right in front of them.” Id.
at 29.
Petitioner replies that the “being in the way” problem had been solved
in the prior art, by Mark Sosin. Reply 12–13 (citing Ex. 1002, 5). Petitioner
criticizes as irrelevant Patent Owner’s focus on whether individuals at
Chums and Croakies solved the problem. Id. at 12. Petitioner also argues
that it could not “develop every device that would be obvious,” but rather
waited until there was an apparent market. Id. at 13–14.
We are persuaded that Mr. Sosin’s device, disclosed in the Monroe
reference, solved the “being in the way” problem. Mr. Sosin stated “I don’t
like light line that falls on my neck in the heat.” Ex. 1002, 5. In his
development, the retainer “never hangs up and never drapes around his neck.
Indeed, it sticks straight out behind his head at all times the glasses are
worn.” Id. Patent Owner argues that Mr. Sosin was not one of ordinary skill
in the art. Tr. 55:18–19. Patent Owner relies on KSR to argue that the
invention would have to have been made by a skilled designer of eyewear
retainers as of 2007–08. PO Resp. 24 (citing KSR Int’l Co. v. Teleflex Inc.,
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550 U.S. 398, 424 (2007)). However, we are not directed to any case law
disqualifying one of purportedly less than ordinary skill in the art from
inventing relevant prior art. We are not persuaded that Mr. Sosin, because
he was not employed at Chums or Croakies during the time period Patent
Owner discusses, is ineligible to solve the problem of “being in the way.”
Nor are we persuaded that it matters whether or not the individual or
individuals that solved the problem were employed at Chums or Croakies.
Thus, we are not persuaded that the “being in the way” problem had not
been solved prior to Patent Owner’s invention.
iii. Recognition of the problem required for invention
Patent Owner argues that persons of ordinary skill in the art had not
recognized the “being in the way” problem solved by the ’268 patent. PO
Resp. 30. Mr. Sosin, according to Patent Owner and “all the experts’
definitions,” was not a person of ordinary skill. Id. (no citation provided).
Patent Owner relies on Leo Pharmaceutical Products Ltd. v. Rea, 726 F.3d
1346 (Fed. Cir. 2013) to support its argument that the ’268 patent recognized
and solved “a problem that the prior art did not recognize and a problem that
was not solved” for a long period of time. PO Resp. 29–30 (citing Leo, 726
F.3d at 1353).
Petitioner responds that Mr. Sosin did in fact recognize and solve the
“being in the way” problem, relying on its earlier arguments. Reply 14.
Patent Owner does not explain persuasively, or provide support for, why Mr.
Sosin’s invention does not constitute “prior art” that both recognized and
solved the problem. As discussed above, and for the reasons provided
above, Mr. Sosin recognized and solved the problem at issue.
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iv. Failure of artisans to combine strong evidence of no
reason to combine
Patent Owner cites case law in support of its proposition that failure of
Petitioner to combine the references is strong evidence that there was no
reason to combine the references. PO Resp. 30–31 (citing Rosemount Inc. v.
Beckman Instruments, Inc., 727 F.2d 1540 (Fed. Cir. 1984), Panduit Corp. v.
Dennison Mfg. Co., 774 F.2d 1082, 1099 (Fed. Cir. 1985)). Specifically,
Patent Owner argues: “What Petitioners knew – and did nothing about – is
strong evidence that the prior art combinations cited do not make the
invention claimed in the ’268 Patent obvious.” Id. at 31.
Petitioner replies that the “actual highly skilled artisans” never
attempted to manufacture an off-the-neck retainer, and thus never failed.
Reply 15. Petitioner argues that the problem had already been solved by
Sosin, and that Petitioner “merely waited until there was an apparent market
for off-the-neck retainers.” Id.
We are not persuaded that the cases cited by Patent Owner are on
point to the situation at hand. Patent Owner’s sale of its products evidenced
that a market in fact existed for a retainer that is suspended off the neck of
the wearer. Petitioner’s later entry into that market is not necessarily
evidence that Petitioner had been trying and failing to make such a retainer.
Unlike the cases cited, Petitioner had not tried and failed repeatedly to make
such a product, or expended millions doing so. Thus, we do not view
Petitioner’s later entry into the market as evidence that there was no reason
to combine the references before us.
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v. Age of the cited references
Patent Owner argues that the age of the cited references shows lack of
a reason to combine. PO Resp. 31. Specifically, Patent Owner argues that
Monroe was at least 16 years old as of the ’268 patent’s priority date. Id. at
32. Petitioner replies that the age of the cited references is only one of many
factors to consider in an obviousness analysis. Reply 15–16. Petitioner also
argues that in the present case, “the alleged invention is simply a
combination of prior art elements, and the prior art not only recognized the
problem—it also solved the problem.” Id. at 16.
We do not see the age of the cited references, here, as an issue that
merits a conclusion of non-obviousness. The “person of ordinary skill is a
hypothetical person who is presumed to be aware of all the pertinent prior
art.” Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955,
962 (Fed. Cir. 1986). That there may be a temporal gap between Monroe
and the priority date of the ’268 patent does not mean that a skilled artisan
would not have been aware of, and appreciated, the teachings of Monroe.
Patent Owner presents no additional reasons in this section of its arguments
that Monroe’s age renders Monroe irrelevant or that it should disqualify
Monroe as a reference.
vi. Expert testimony
Patent Owner argues that the Visser Declaration is insufficient and
vague to support a conclusion of obviousness. PO Resp. 32–35. Patent
Owner takes issue with Mr. Visser’s statements that the invention is
“simple” and that only “simple substitution” is required. Id. at 34. In sum,
Patent Owner argues, Petitioner’s evidence “is a string of unsupported
conclusions that does not outweigh the substantial evidence cited herein that
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Petitioners themselves failed to make, see the need for, or even identify the
problem solved by such a product – until they saw it on the market.” Id. at
35.
Petitioner responds that Mr. Visser’s testimony is sound, and that
Patent Owner “generally takes Visser’s quotes out of context, misconstrues
them, or uses them in straw man arguments.” Reply 16.
We are not persuaded that the Visser Declaration is insufficient and
vague based on Patent Owner’s assertions alone. We also note that Patent
Owner elected not to depose Mr. Visser, and so we have no further
testimony to elucidate any purported shortcomings in his declaration
testimony. It is within our discretion to assign the appropriate weight to be
accorded to the information in the Visser Declaration. The Board, sitting as
a non-jury tribunal with administrative expertise, is well-positioned to
determine and assign appropriate weight to evidence presented. Gnosis
S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB
June 20, 2014) (Paper 64). Accordingly, we evaluate Mr. Visser’s testimony
along with the remainder of the evidence before us to reach our conclusions.
4. Simple Substitution
Patent Owner alleges that a number of factors enable temple retainers
to keep the cable/member off the neck or collar, and that making this happen
is not a simple, trivial, or obvious task. PO Resp. 35–36. Patent Owner
cites to a variety of evidence indicating that Petitioner’s attempts to do so
were fraught with problems. Id. at 37–39.
Petitioner replies that Patent Owner’s contentions are inapposite, in
that the “existence of two allegedly non-obvious connection configurations
for a resilient cable does not imply that all connection configurations for a
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resilient cable must be non-obvious.” Reply 17. Petitioner cites to evidence
that its product was achieved with minimal experimentation and as a matter
of simple substitution. Id. at 17–18 (citing Ex. 1028, 3–5, discussing
Petitioner’s process of coming up with its own off-the-neck eyewear).
Petitioner points out that the claims recite no removability requirement,
which Patent Owner highlighted as a problem with Petitioner’s product. Id.
at 18.
Patent Owner’s arguments and evidence that the steps that would need
to be taken to achieve the “off the neck” position would be very complicated
is contradictory to Petitioner’s arguments and evidence. The evidence
illustrates that Petitioner only required minimal experimentation, and one set
of trials by Sterling McMurrin, a Chums employee, to achieve an off-the-
neck retainer. Reply 17–18 (citing Ex. 1028, 3–5). The language of the
claims, which generally requires two temple retainers connected by a
resilient cable such that the cable is suspended off the neck of the wearer,
does not impose many additional requirements on the configuration of the
claimed invention. Petitioner’s demonstration that it could be done, and in
fact was done, with minimal effort undermines Patent Owner’s argument
that it was more than a “simple substitution.” We note as well that Patent
Owner elected not to depose Mr. McMurrin, and so did not question him
regarding his assertions in his declaration that the substitution was one
reasonably characterized as simple.
5. Objective Evidence of Non-Obviousness
Patent Owner argues that Petitioner has failed to present a prima facie
case of obviousness, but nevertheless, presents “substantial evidence of not
just one, but three separate secondary considerations: copying, commercial
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success, and industry praise.” PO Resp. 41. Petitioner argues that, here,
“the strong prima facie case of obviousness trumps any secondary
considerations that could otherwise weigh in favor of non-obviousness.”
Reply 19. We, thus, consider this evidence (sometimes referred to as
objective evidence or indicia) along with the contentions of the parties in
reaching our final determination as to the obviousness of claims 1–17.
Secondary considerations may include any of the following: long-felt
but unsolved needs, failure of others, unexpected results, commercial
success, copying, licensing, and praise. Graham, 383 U.S. at 17. We note
that it is not sufficient that a product or its use merely be within the scope of
a claim in order for secondary evidence of non-obviousness tied to that
product to be given substantial weight. There must also be a causal
relationship, termed a “nexus,” between the evidence and the claimed
invention. Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1376
(Fed. Cir. 2005). A nexus is required in order to establish that the evidence
relied upon traces its basis to a novel element in the claim, not to something
in the prior art. Institut Pasteur & Universite Pierre et Marie Curie v.
Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).
Objective evidence that results from something that is not “both
claimed and novel in the claim,” lacks a nexus to the merits of the invention.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). All types of objective
evidence of non-obviousness must be shown to have such a nexus. In re
GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (nexus generally); see also
Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need);
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364
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(Fed. Cir. 2012) (copying); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)
(commercial success).
a. Copying
Patent Owner asserts that Petitioner copied Patent Owner’s invention.
PO Resp. 41–44. Copying, as objective evidence of non-obviousness,
requires evidence of effort to replicate a specific product. Wyers v. Master
Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co., Inc.
v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
Patent Owner argues, first, that Chums developed its Orbiter product
by copying Patent Owner’s product. PO Resp. 42. Specifically, Patent
Owner states that “when Chums developed the Orbiter, Chums had in its
possession physical specimens of the Cablz twisted wire cable product, and
Chums made a deliberate effort to copy the off-the-neck aspect of the Cablz
product including its twisted steel wire.” Id. (citing Ex. 2054 at 14–15). In
the opinion of Patent Owner’s expert, Chums copied the ’268 patent when
producing the Orbiter. Id. at 43 (citing Ex. 2071 ¶ 54). Patent Owner
argues, next, that Croakies had attempted to negotiate, unsuccessfully, a
license for the parent of the ’268 patent. Id. at 44. According to Patent
Owner, Croakies then worked on its own retainer (the ARC), which “has a
wire cable that stays off the neck like a Cablz product.” Id.
Petitioner argues, first, that Patent Owner’s products have a specific
configuration (slidable end beads and grommets that prevent the beads from
sliding off the cable), and that Petitioner’s products have a different
connection configuration. Reply 19. Petitioner also argues that it was not
possible to copy the ’268 patent, which issued in 2013, given that Chums
and Croakies began selling their off-the-neck retainers in 2009 and 2010,
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respectively. Id. at 19–20. Petitioner further argues that it was Patent
Owner, in fact, that copied Mark Sosin’s cable product that did not touch the
wearer’s head or shoulders. Id. at 20 (citing Mr. Sosin’s reaction to the
Cablz product as “gee, they copied what I’ve been doing for 50 years.” Ex.
1033, 192).
We are not persuaded that Petitioner’s product is a copy of Patent
Owner’s product. Petitioner’s product uses a different configuration than
Patent Owner’s product, and Petitioner obtained its own patent on that
product. Moreover, given the timing of the ’268 patent, Petitioner could not
have had access to “the patented product” in 2007–08; Petitioner may have
had access to a product covered by a different Patent Owner patent (the ’867
patent). Additionally, Petitioner may have had access to Patent Owner’s
products, but given that the concept of the off-the-neck retainer was known
in the prior art, it is not definitive which references Petitioner looked at in
designing its own product. In sum, Patent Owner has not provided sufficient
evidence that Petitioner had access to “the patented product” or copied the
patented technology. We are not persuaded by Patent Owner’s assertion that
Petitioner copied the patented invention.
b. Commercial Success
Evidence of commercial success “is only significant if there is a nexus
between the claimed invention and the commercial success.” Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish
a proper nexus between a claimed invention and the commercial success of a
product, a patent owner must offer proof that the sales were a direct result of
the unique characteristics of the claimed invention, and not a result of
economic and commercial factors unrelated to the quality of the patented
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subject matter. In re Applied Materials, Inc., 692 F.3d 1289, 1299–1300
(Fed. Cir. 2012). If the feature that created the commercial success was
known in the prior art, the success is not pertinent to the issue of
obviousness. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 740 (Fed.
Cir. 2013).
Patent Owner argues that there is a “compelling argument that Cablz’s
(and Chums’) commercial success is particularly demonstrative of
nonobviousness.” PO Resp. 46. Patent Owner asserts Chums has enjoyed
substantial commercial success with its Orbiter products “embodying the
’268 patent.” Id. at 44–45. Patent Owner provides evidence that, starting
from nothing, it has grown quickly, and has posted sales figures in the
millions of dollars in recent years. Id. at 48. Patent Owner argues that it
“has both made a prima facie showing of a nexus and proven substantially
that its commercial success is directly linked to the patented features of its
products.” Id. at 50.
Petitioner argues that if “commercial success is due to an element in
the prior art, no nexus exists.” Reply 21 (citing Tokai Corp. v. Easton
Enter., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011)). Petitioner takes issue
with Patent Owner’s newly created “objective” evidence of commercial
success as attributable to “features embodied in the ’268 Patent,” stating that
“none of Patent Owner’s testimony evidence identifies any unique features
that are not in the prior art.” Id. at 23.
We are not persuaded by Patent Owner’s commercial success
evidence. As a threshold matter, Patent Owner has not established a nexus
between its commercial product and any novel features of its claimed off-
the-neck product. Petitioner has demonstrated that the rearward-from-the-
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head and the off-the-neck features were present in the prior art. Patent
Owner’s assertions that these features drove Patent Owner’s increased sales
do not demonstrate a nexus between any commercial success and the
claimed invention of the ’268 patent.
Even if Patent Owner had established a nexus between its claimed
invention and its product, however, its commercial success argument would
not be persuasive. Patent Owner has not provided evidence of the market
share held by its product to back up its claim of commercial success. See
PO Resp. 48–49. Patent Owner states: “The eyewear retainer market is
small and dominated by three or four companies, two of which are the
Petitioners in this case. Ex. [2080] ¶ 13–18. There is no publically available
market information on the eyewear retainer market. Id. ¶17; see also Ex.
2058 at 8–9.” PO Resp. 46 n.1. According to the Federal Circuit, “the more
probative evidence of commercial success relates to whether the sales
represent ‘a substantial quantity in th[e] market.’” Applied Materials, 692
F.3d at 1300 (quoting Huang, 100 F.3d at 140). Patent Owner offers no
evidence of the size of the market to which to compare its sales.
Accordingly, we are not persuaded that Patent Owner’s alleged objective
indicia of commercial success shows non-obviousness.
c. Industry Recognition
Patent Owner argues that industry recognition of its product supports
its argument of nonobviousness. Patent Owner states that its eyewear
retainer won Best of Show in 2009 for the Apparel Category in the
American Sportfishing Association trade show, out of approximately fifty
entries in the Apparel category. PO Resp. 56, 58. Patent Owner also
provides proof of industry recognition in trade journals, namely, Fishing
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Tackle Retailer and Outdoor USA Magazine. Id. at 59. Petitioner argues
that, in the case of the Best of Show award, the voting was not indicative
of non-obviousness of the claims of the ’268 patent. Reply 24.
As with commercial success, evidence of industry praise is only
relevant when it is directed to the merits of the invention claimed. See
Ormco Corp., 463 F.3d at 1311–12. As discussed by Petitioner’s evidence,
it is unclear that the voting criteria for the Best in Show award required that
the voters consider the merits of the claimed invention. The four criteria
cited by Patent Owner — innovation, execution, workmanship, and
practicality — constitute a wide range of possible considerations for the
voter that extend beyond simply merits of the claimed invention. PO Resp.
57.
Regarding the trade journal evidence, we are not persuaded that the
two brief mentions in Fishing Tackle Retailer and Outdoor USA Magazine
cited by Patent Owner constitute industry praise. See Bayer Healthcare
Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1377 (Fed. Cir. 2013)
(finding that brief discussions of Patent Owner’s product in journal articles
“fall well short of demonstrating true industry praise”).
d. Conclusion
Accordingly, on balance, we determine that Petitioner’s strong
evidence of obviousness of claims 1–17 outweighs the evidence of
secondary considerations of nonobviousness submitted by Patent Owner.
We determine that Petitioner has established by a preponderance of evidence
that claims 1–17 are unpatentable under the asserted grounds.

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III. MOTIONS TO SEAL
A. Petitioner’s Motions to Seal
Petitioner filed several exhibits (Exhibits 1017, 1019, 1021, 1024
(now expunged), 1028, 1030–1031 (now expunged), 1034, and 1035) and its
Unredacted Reply (Ex. 1038) under seal. Petitioner filed three Motions to
Seal (Paper 17, Paper 27, Paper 40). Paper 17 moves to seal Exhibits 1017,
1019, and 1021. Paper 27 moves to seal Exhibits 1024, 1030, 1031, and
1034. Paper 40 moves to seal Exhibits 1028, 1034, 1035, and 1038. The
Motions to Seal refer to a Stipulated Protective Order filed by Patent Owner
on November 17, 2014. Ex. 2062.
The Office Patent Trial Practice Guide states the following
concerning protective orders:
(a) Purpose. This document provides guidance on the procedures
for filing of motions to seal and the entry of protective orders in
proceedings before the Board. The protective order governs the
protection of confidential information contained in documents,
discovery, or testimony adduced, exchanged, or filed with the
Board. The parties are encouraged to agree on the entry of a
stipulated protective order. Absent such agreement, the default
standing protective order will be automatically entered.

Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48769 (Aug. 14,
2012) (App’x B (emphasis added)). The document submitted by Patent
Owner is titled “Stipulated Protective Order” and Petitioner acknowledges
its filing. Papers 17, 40. We thus enter the Stipulated Protective Order
submitted as Exhibit 2062.
We have reviewed the exhibits at issue and agree with Petitioner that
they contain trade secret or other confidential information. Given the
sensitive nature of this information, and noting the fact that the Motions to
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Seal were unopposed, we agree with Petitioner that good cause has been
shown to seal the information. For the reasons discussed above, the Motions
to Seal (Paper 17 and Paper 40) are granted. Because the papers to which it
is directed have been expunged, the Motion to Seal (Paper 27) is dismissed
as moot.
B. Patent Owner’s Motions to Seal
Patent Owner filed nearly every Exhibit (Exhibits 2001–2022, 2025–
2042, 2053–2058, 2061, 2066–2071, 2073–2081) under seal. Exhibits 2070,
2071, and 2081 have been expunged. Patent Owner also filed Motions to
Seal (Paper 7, Paper 34) and Stipulated Protective Order (Ex. 2062). Paper
7 moves to seal Exhibits 2001–2022, 2025–2042, 2053–2058, and 2061.
Paper 34 moves to seal Exhibits 2066–2069 and 2073–2080.4 As noted
above, the Stipulated Protective Order (Ex. 2062) is entered.
We have reviewed the exhibits at issue and agree with Patent Owner
that they contain trade secret or confidential information. Given the
sensitive nature of this information, and noting the fact that the Motions to
Seal were unopposed, we agree with Patent Owner that good cause has been
shown to seal the information. For the reasons discussed above, Patent
Owner’s Motions to Seal are granted.
C. Confidential Information
However, we note that confidential information subject to a protective
order ordinarily becomes public 45 days after final judgment in a trial,

4 Paper 34 also moves to seal Exhibit 2072, which was not filed under seal.
Patent Owner also misidentifies Exhibit 2072 as an email in its Motion to
Seal. Paper 34. Thus, we do not consider this Motion to Seal to cover
Exhibit 2072.
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unless a motion to expunge is granted. 37 C.F.R. § 42.56; Office Patent
Trial Practice Guide, 77 Fed. Reg. at 48761. In view of the foregoing, the
confidential documents filed in the instant proceeding will remain under
seal, at least until the time period for filing a notice of appeal has expired or,
if an appeal is taken, the appeal process has concluded. The record for the
instant proceeding will be preserved in its entirety, and the confidential
documents will not be expunged or made public, pending appeal.
Notwithstanding 37 C.F.R. § 42.56 and the Office Patent Trial Practice
Guide, neither a motion to expunge confidential documents nor a motion to
maintain these documents under seal is necessary or authorized at this time.
See 37 C.F.R. § 42.5(b). Should the parties seek to file a motion to expunge,
they must contact the Board first to discuss the documents they seek to
expunge.
IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that claims 1–17 of U.S. Patent No. 8,366,268 B2 are
unpatentable;
FURTHER ORDERED that Petitioner’s Motions to Seal are granted;
FURTHER ORDERED that Patent Owner’s Motions to Seal are
granted; and
FURTHER ORDERED that this is a Final Decision. Parties to the
proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Daniel C. Higgs
Andrew D. Maslow
Kevin B. Laurence
dan.higgs@stoel.com
andy@andymaslow.com
kevin.laurence@renaissanceiplaw.com

FOR PATENT OWNER:
Joseph Bird
Paul Sykes
jbird@babc.com
psykes@babc.com