Lake Cable, Llc.v.Windy City Wire Cable and Technology Products, Llc.

Patent Trial and Appeal Board

Feb 19, 2014

13206053 (P.T.A.B. Feb. 19, 2014)

Trials@uspto.gov Paper 11
571-272-7822 Entered: February 19, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LAKE CABLE, LLC
Petitioner

v.

WINDY CITY WIRE CABLE AND
TECHNOLOGY PRODUCTS, LLC
Patent Owner
____________

Case IPR2013-00528
Patent 8,424,795
____________

Before JAMESON LEE, JOSIAH C. COCKS, and RICHARD E. RICE,
Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Case IPR2013-00528
Patent 8,424,795

2
I. INTRODUCTION
Lake Cable, LLC (“Lake Cable”) filed a petition (Paper 1, “Pet.”) requesting
an inter partes review of claims 1-7 of U.S. Patent No. 8,424,795 B2 (Ex. 1001,
“the ’795 patent”). In response, Windy City Wire Cable and Technology Products,
LLC (“Windy City”), Patent Owner, filed a preliminary response (Paper 10,
“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD -- The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.
We determine that the information presented in the petition does not
establish that there is a reasonable likelihood that Lake Cable would prevail in
challenging the unpatentability of any one of claims 1-7 of the ’795 patent.
Accordingly, we do not institute an inter partes review of any one of claims 1-7 of
the ’795 patent. The petition is denied.

A. Related Proceedings
Lake Cable represents that it is unaware of any pending judicial or
administrative matter that would affect, or be affected by, a decision in this
proceeding. Pet. 1.
Case IP
Patent 8

T
issued o
A
electrica
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rotatabl
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c
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a
Id. at 1:
F
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he ’795 pa
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n aspect o
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arton, the
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igure 1 of
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f the inven
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at:
s axial pa
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erspective

3
e ’795 Pat
d Cable D
’795 pate
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the carton
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e containe
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. Id. at 1:5
anel of the
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r may be
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Container
ton for dis
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1:56-60.
e left pan
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affixed to
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and System
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Patent 8

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front pan
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s illustrate
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el 12, left
. Ex. 100
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able reel 2
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es 1 and 2
02. Id. at
hing, such

4

reel contai
op panel 2
. Interior
tent are rep
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of the su

, left caddy
3:25-33, 4
as bushing
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206 show
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pport cadd
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rton 10, w
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as a
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hich
29,
e
fits
Case IPR2013-00528
Patent 8,424,795

5
in central hole 208 of cable reel 202. Id. at 3:34-50. The ’795 patent discloses
that, preferably, the panels of carton 10, the caddies, the cable reel, and the
bushings are sized such that the carton interior prevents the cable reel from coming
off of the bushings. Id. at 4:25-28. The caddies are capable of supporting “a
columnar load” imposed by the weight of other reel containers placed on top of
container 11. Id. at 4:15-18.
As illustrated in Figure 1, container 11 has a free passageway all the way
along axis X, from one side of carton 10 to the other, including left arbor hole 28 in
the left carton panel, central hole 216 in caddy 200, central hole 208 in left cable
reel flange 222, a central passageway between left cable reel flange 222 and right
cable reel flange 224, central hole 216 in right caddy 204, and right arbor hole 28
in the right carton panel. Id. at 4:56-64. The ’795 patent discloses that
container 11 may be affixed to another structure by inserting a rod through the
axial passageway. E.g., id. at 5:2-50; Fig. 3.

C. Exemplary Claim
Claim 1, which is the sole independent claim, is reproduced below.
1. A container for dispensing electrical or communications
cable comprising:
a carton having a bottom panel with left and right sides, an
upstanding left panel of the carton joined to the left side of the bottom
panel, an upstanding right panel joined to the right side of the panel,
and a top panel spaced from and parallel to the bottom panel, the top
panel joined to the left and right panels;
a cable reel including an elongate spindle on which electrical or
communications cable is wound, the spindle having opposed left and
right ends, the spindle adapted to rotate around a horizontal axis
spaced from and parallel to the bottom panel of the carton;
Case IPR2013-00528
Patent 8,424,795

6
a left support extending from the bottom panel to the top panel
for rotatably supporting the left end of the cable spindle off of the
bottom panel of the carton and for transmitting a columnar load from
the top panel to the bottom panel, a right support extending from the
bottom panel to the top panel for rotatably supporting the right end of
the cable spindle and for transmitting a columnar load from the top
panel to the bottom panel; and
a continuous axial passageway formed through the left panel of
the carton, the left support, the spindle, the right support and the right
panel of the carton, such that the container may be affixed to another
structure by means of inserting an elongate connecting rod through the
axial passageway.
D. Prior Art Relied Upon
Lake Cable relies on the following prior art references:
Bauer US 4,771,889 Sept. 20, 1988 Ex. 1002
Bass US 5,529,186 June 25, 1996 Ex. 1003
Barnett US 6,003,667 Dec. 21, 1999 Ex. 1004
Hultberg US 3,587,840 June 28, 1971 Ex. 1006
Hale US 5,642,812 July 1, 1997 Ex. 1007
Johnsen WO 00/44661 Aug. 3, 2000 Ex. 1008
Arnaiz EP 1 564 175 B1 Aug. 17, 2005 Ex. 1009

Carris Reels, Inc., Reel-In-A-Box (2006) (hereinafter “Carris”) (Ex. 1005),
Internet Archive Wayback Machine,
http://web.archive.org/web/20061020154116/http://www.carris.com/pro.

The Quickspooler (hereinafter “Quickspooler”) (Ex. 1010), Internet Archive
Wayback Machine,
http://web.archive.org/web/200610202140224/http://www.quickspooler.com/
Case IPR2013-00528
Patent 8,424,795

7
E. The Alleged Grounds of Unpatentability
Lake Cable challenges claims 1-7 of the ’795 patent based on the alleged
grounds of unpatentability set forth in the table below:

Reference(s) Basis Challenged Claims
Bass, Johnsen, and
Quickspooler
§ 103(a) 1-5 and 7
Barnett and Hultberg § 103(a) 1-5 and 7
Bauer and Arnaiz § 103(a) 1-7
Hale § 103(a) 1-7
Carris and Hale § 103(a) 1-7
II. ANALYSIS
Lake Cable argues that at least claim 1 of the ’795 patent is unpatentable
over any combination of a “Group A” reference and a “Group B” reference. Pet. 5.
Lake Cable asserts that the “Group A” references, i.e., Bass, Barnett, Bauer, and
Carris, “disclose every limitation in claim 1 other than holes in the outer panels of
the container.” Id. at 5-9. Lake Cable asserts that the “Group B” references, i.e.,
Johnsen, Quickspooler, Hultberg, Arnaiz, and Hale, disclose holes in the outer
panels of the container, but lack some other limitation of claim 1. Id. at 5-6, 9-13.
Lake Cable classes Hale as a Group B reference, but asserts that Hale discloses or
suggests all of the limitations of claim 1. Id. at 6 n.1. Lake Cable contends that
“[i]t would have been obvious to have placed holes in the Group A references as a
means to mount them on a rack or other dispensing system, as suggested by each
Group B reference.” Id. at 6.
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Patent 8,424,795

8
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim terms
are given their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
claim term must be set forth with reasonable clarity, deliberateness, and precision.
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
1. “Spindle”
The specification uses the term “spindle” in accordance with its ordinary
meaning as a horizontal axle that revolves on pin or pivot ends. See, e.g.,
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 1132-33 (10th ed. 1993). For
example, the specification states:
A cable reel is disposed in the carton and includes an elongate
spindle on which electrical or communications cable is wound.
The spindle has opposed left and right ends and is adapted to
rotate around a horizontal axis that is spaced from and parallel
to the bottom panel of the carton.
Ex. 1001, 1:50-55.
The broadest reasonable construction of the term “spindle,” in light of the
specification, is a member with a horizontal rotational axis around which cable
may be wound.
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Patent 8,424,795

9
2. “A continuous axial passageway
formed through . . . the spindle . . . ”
In light of the specification, the claim term “a continuous axial passageway
formed through . . . the spindle . . . ,” requires a free passageway all the way along
the axis of the spindle. See id., 1:60-65; 2:56; 4:56-64; Fig. 1.
3. “Carton”
Lake Cable contends that “carton” should be construed as “[t]he panel
components of the container.” Pet. 17 (italics omitted). Windy City’s position is
that Lake Cable’s proposed construction is confusing and that “carton” simply
should be given its ordinary meaning. Prelim. Resp. 6. We agree with Windy City
that “carton” should be given its ordinary meaning. Lake Cable’s proposed
construction does not accord with the ordinary meaning of “carton,” because of its
reference to “the container.” See Pet. 17 (original italics omitted) (emphasis
added). The ordinary meaning of “carton,” in light of the specification, is a box-
like container. E.g., Ex. 1001, 1:24-27, 47-50; 2:48-53; Fig. 1.
4. “Panel”
Claim 1 requires a carton having “an upstanding left panel” and “an
upstanding right panel.” Lake Cable contends that the term “panel” should be
construed as “a face of the carton.” Pet. 18. Windy City’s position is that Lake
Cable’s proposed construction is confusing and that “panel” should be given its
ordinary meaning. Prelim. Resp. 6. We agree with Windy City that “panel”
should be given its ordinary meaning. The ordinary meaning of “panel,” in light of
the specification, is a separate or distinct part of a surface (see, e.g., MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY 839 (10th ed. 1993)), for example, a side,
Case IPR2013-00528
Patent 8,424,795

10
top, or bottom wall of a box-like container (see, e.g., Ex. 1001, 1:24-27, 47-50;
2:48-53; 8:40-44; Figs. 1 & 9).
5. “Support”
Claim 1 recites:
[A] left support extending from the bottom panel to the top panel for
rotatably supporting the left end of the cable spindle off of the bottom
panel of the carton and for transmitting a columnar load from the top
panel to the bottom panel, a right support extending from the bottom
panel to the top panel for rotatably supporting the right end of the
cable spindle and for transmitting a columnar load from the top panel
to the bottom panel . . . .
(Emphasis added). Lake Cable contends that the term “support” means “a rigid
structure for rotatably supporting the cable spindle inside the carton.” Pet. 22
(emphasis omitted). Windy City states that it does not dispute Lake Cable’s
proposed construction of “support” (Prelim. Resp. 7), and argues that, as construed
by Lake Cable, “the ‘supports’ in [claim 1] of the ’795 Patent are not the side walls
themselves but must be inside of and adjacent to the side walls” (id. at 29). We do
not agree with Lake Cable’s proposed construction because it imports extraneous
limitations into the claim, i.e., the term “support,” by itself, does not require
capability to support the cable spindle inside the carton, as Lake Cable contends.
Nor do we agree with Windy City that the term “support” requires a location inside
of and adjacent to a side wall. To the extent that Wind City argues that the left and
right supports in claim 1 are distinct from the left and right carton panels,
respectively, we agree.
As used in claim 1 and the specification, a “support” is a rigid structure that
is capable of bearing a vertical load without buckling. See, e.g., Ex. 1001, 3:24-29;
Case IPR2013-00528
Patent 8,424,795

11
3:64-4:5; Figs. 1 & 2. The “left support” and the “right support” are distinct from
the separately-recited “left panel” of the carton and the “right panel” of the carton.
See Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254
(Fed. Cir. 2010) (“Where a claim lists elements separately, the clear implication of
the claim language is that those elements are distinct components of the patented
invention.”) (internal citations and quotations omitted)).
6. “Transmitting a columnar load from
the top panel to the bottom panel”
Lake Cable contends that “transmitting a columnar load from the top panel
to the bottom panel” should be construed as “transmitting through the carton at
least a portion of a vertical load placed on the carton.” Pet. 22 (emphasis omitted).
Windy City disputes this construction because Lake Cable “offers no reason why
‘transmitting’ should be limited to transmitting a load ‘th[r]ough the carton.’”
Prelim. Resp. 8. We agree with Windy City that Lake Cable’s proposed
construction imports an extraneous limitation into the claim language, i.e., nothing
in the claim language requires transmitting the load “through the carton,” as Lake
Cable contends. The specification describes caddies or cable reel support
structures 200, 204, which generally conform to the shape and dimensions of the
left and right side panels of the carton. See Ex. 1001, 3:64‒4:2. As described in
the specification, the caddies or cable reel support structures rest on an upper
surface of the bottom panel of a carton and accept a columnar load imposed by
other reel containers placed on top of the carton. See Ex. 1001, 4:5-18. According
to this description, a columnar load imposed on the top panel of a carton is carried
from the top panel to the bottom panel through the caddies or cable reel support
Case IPR2013-00528
Patent 8,424,795

12
structures, rather than through the carton, contrary to Lake Cable’s proposed claim
construction. For purposes of this decision, we construe “transmitting a columnar
load from the top panel to the bottom panel,” in light of the specification, to mean
bearing a vertical load placed on the top panel and carrying it to the bottom panel.
7. Other Terms1
All other terms in claims 1-7 are given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art and need not
be construed explicitly at this time.

B. Claims 1-5 and 7—Obviousness
over Bass, Johnsen, and Quickspooler
Lake Cable contends that claims 1-5 and 7 of the ’795 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Bass, Johnsen, and
Quickspooler.
1. Bass
Bass discloses a “boxed spool assembly” that “includes a spool assembly, a
pair of end plates for supporting the spool assembly for rotation, and a box in
which the spool assembly and end plates are placed.” Ex. 1003, Abstr. 1-4. As a
part of the spool assembly, annular-shaped flanges 45 are mounted to the ends of

1 Lake Cable proposes constructions for the terms “caddy,” “bushing,” “payout
slot,” and “elongate pass-through slot.” Pet. 18-23. However, these terms do not
need to be construed explicitly at this time because they are not material to our
decision. Cf. Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
(Fed.Cir.1999) (“[O]nly those terms need be construed that are in controversy, and
only to the extent necessary to resolve the controversy.”).
Case IP
Patent 8

tubular-
reprodu

L
not pres
extend t
referenc
hole thr
persuad

R2013-00
,424,795
shaped sp
ced below
Figure
at both
ake Cable
ent in Bas
hrough the
e to “the h
ough each
ed that Ba
528
ool 44. Id
:
4 is a pers
ends by e
the sp
contends
s is that th
box pane
oles in the
of the end
ss disclose

. at 7:39-4
pective vi
ndplates.
ool assemb
that “[t]he
e holes in
ls (Fig. 5)
end plate
plates. H
s such a c

13
2, 59-67. F

ew of a sp
Figure 5 i
ly placed
only limit
the end pla
.” Pet. 7 (
s” suggest
owever, a
ontinuous
igures 4 a
ool assemb
s a perspe
inside a bo
ation in cl
tes (Fig. 4
emphasis a
s that Bass
s discussed
hole. See
nd 5 of B
ly suppor
ctive view
x.
aim 1 of th
) are not s
dded). La
discloses
below, w
Ex. 1003,
ass are
ted
of
e ’795 Pa
hown to
ke Cable’
a continu
e are not
Fig. 2B.

tent
s
ous
Case IP
Patent 8

F
Fig
is a
A
centered
of the p
Id. at 5:
the prot
of polyc
W
the z-ax
separate
T
end plug
R2013-00
,424,795
igures 2B
ure 2B is a
side view
s depicted
thereon;
late and in
40-41, 55-
rusion 34
arbonate m
e are not
is shown i
s, and clo
he spool a
s, which c
528
and 3A of
side view
of the spo
in Figure
the arbor p
cludes pro
67. Bass d
and the cy
aterial in
persuaded
n Figure 2
ses off, ho
ssembly c
onnect th
Bass are r

in partial
ol assemb
2B, end p
rotrudes p
trusion 34
iscloses th
lindrical si
hollow ar
that Bass
B. Rather
llow area 3
omprises e
e flanges t

14
eproduced
cross-sect
ly showin

late 30 inc
erpendicu
, on which
at “[t]he a
de 36 are h
ea 38.” Id
discloses a
, Figure 2B
8.
nd plugs 4
o the spoo
below:
ion of end
g end plug
ludes plate
larly away
the spool
rea inside
ollow to
. at 6:42-4
hole thro
appears
6, flanges
l, each hav

plate 30.
46 and cy
31 with a
from the
assembly
of the inn
avoid unne
5.
ugh end p
to show a
45, and sp
e a centra
Figure 3A
linder 50.
rbor 32
major surf
can rotate
er surface
cessary us
late 30 alo
wall that
ool 44; th
l cylinder

ace
.
s of
e
ng
e
50,
Case IPR2013-00528
Patent 8,424,795

15
as depicted in Figure 3A. Id. at 7:50-67. Protrusions 34 of end plates 30 are
aligned with, and inserted in, cylinders 50 of end plugs 46, such that the spool
assembly is supported at its ends by the end plates. Id. at 8:6-10.
The spool assembly is loaded with wire or cable and placed in box 1 along
with supporting end plates 30, before the top side of the box is closed. Id. at 8:1-
29. The size of the box is such that “the spool assembly cannot slip off of the
respective protrusions 34 of the end plates 30.” Id. at 8:21-23. A user can break
perforations marking a slot in a panel of the box to extract wire or cable from the
box. Id. at 8:32-42.
2. Johnsen
Johnsen discloses a box-like electrical-cord dispenser that uses opposite
walls of the box itself, rather than separate end plates, to support the spool
assembly off the bottom panel of the box. In particular, Johnsen discloses
dispenser box 10 having opposite box walls 10a with respective through openings
32, 32a. Ex. 1008, 7:25-29. End pieces 34, 34a are inserted through the openings
in the box and into the ends of tubular axle 24, which rotatably supports the spool
assembly. Id. at 8:1-2. The spool assembly or “drum-shaped reel” comprises
tubular core 12, laterally-limiting walls 14, 14a, and end plugs 22, 22a. Id. at 6:14-
25. Johnsen also discloses that, if tubular axle 24 is omitted from the dispenser
box, the two end pieces 34, 34a take the place of the support axle. Id. at 8:15-18.
Case IP
Patent 8

F

A
passes c
A
compris
caddies
other.”
R2013-00
,424,795
igure 1 of
Fig
dis

s Lake Ca
ompletely
s characte
ing “a ree
, suspende
Id. at 13.
528
Johnsen is
ure 1 show
penser an
ble conten
through b
rized by L
l of wire su
d by an ax
reproduce
s a persp
d a drum-l
ds, Johnse
oth the ree
3.
ake Cable
spended b
le that pas

16
d below:
ective spli
ike reel fo
n disclose
l and the b
Quickspoo
, Quickspo
etween, a
se[s] entire
t view of a
r an electr
s a “centra
ox.” Pet.
ler
oler disclo
nd rotatab
ly through

box-like
ical cord.
lly-aligne
11. .
ses a cabl
le about, le
from one

d hole [tha
e reel stan
ft and righ
side to th
t]
d
t
e
Case IP
Patent 8

A
Th
L
O
te
E
’7
p
n
th
Pet. 24-
motivat
a wire c
G
th
h
‘a
o
R2013-00
,424,795
Quickspo
is figure,
is a figure
ake Cable
ne skilled
achings o
xaminer [
95 patent
rior art b
amely, “fo
rough the
25 (citing
ion is furth
able reel.”
iven that
at Bass su
ave been
rbors’ at
n an elong
528
oler figure
which is r
from page
argues tha
in the a
f Bass and
during pro
] when h
elieved a
r the purp
passagew
Ex. 1011,
er shown
Id. at 25.
Bass and
ggests ho
obvious to
‘hollow ar
ate connec
is reprod
eproduced
1 of Quic
4. Obv
t:
rt would h
Johns[e]n
secution o
e issued r
t the tim
ose of pro
ay if desir
49) (emph
by Quicks
Lake Cab
Johns[e]n
les by plac
have inc
ea’ 38, se
ting rod.

17
uced below

from page
kspooler d

iousness A
ave been
for the sa
f an earli
ejections
e to show
viding acc
ed.”
asis added
pooler, wh
le additio
are directe
ing perfor
luded actu
e Bass, Fig

:
13 of Lak
epicting a
nalysis
motivate
me reason
er applica
combining
continu
ess for a
). Lake C
ich teache
nally argu
d to the s
ations in i
al holes i
. 2B) to a

e Cable’s
cable reel
d to comb
s expresse
tion relate
Bass wi
ous passa
shaft to be
able asser
s using su
es that:
ame purp
ts panels,
n the pan
llow for m
petition,
stand.
ine the
d by the
d to the
th other
geways,
passed
ts that “[t]h
ch a shaft
ose, and
it would
els (and
ounting
e
on
Case IPR2013-00528
Patent 8,424,795

18
Pet. 26 (emphasis added).2
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which the subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Lake Cable’s arguments do
not persuade us that the subject matter of claim 1 would have been obvious over
Bass, Johnsen, and Quickspooler. In particular, the argued combination of those
references does not disclose or suggest “a continuous axial passageway formed
through the left panel of the carton, the left support, the spindle, the right support
and the right panel of the carton,” as recited in claim 1. Johnsen, on which Lake
Cable appears to rely for this limitation (Pet. 24-25), does not disclose or suggest a
left support or a right support, much less a continuous axial passageway formed
through such structures. Further, the function of the holes in the opposing carton
panels of Johnsen is to support the spool assembly; in Bass, however, the end
plates support the spool assembly. The panel holes in Johnsen, therefore, would
not have suggested adding panel holes to Bass.
Lake Cable’s obviousness analysis is not supported by “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). While arguing that

2 The emphasized words in this quotation appear to acknowledge that arbors 32 of
end plates 30 of Bass do not have holes at hollow area 38 and, therefore, that Bass
does not disclose holes in the end plates, contrary to the argument on page 7 of the
petition.
Case IPR2013-00528
Patent 8,424,795

19
a reason for modifying Bass in the manner claimed would have been to provide
access for a shaft to be passed through the recited passageway, if desired (Pet. 24-
26), Lake Cable does not explain clearly why a person of ordinary skill in the art at
the time of the invention would have wanted to pass a shaft through the boxed
spool assembly of Bass (or Johnsen). Quickspooler, furthermore, does not appear
to add any relevant teaching to the combination of Bass and Johnsen, contrary to
Lake Cable’s conclusory assertion. See Pet. 26-27. For example, we do not
discern how Quickspooler’s teaching that a shaft or rod can be used to mount a reel
of wire on a stand (see id. at 13), would have motivated any change to the
dispenser box disclosed in Bass, wherein the spool assembly is mounted on end
plates for support. For this same reason, Lake Cable’s general rationale of placing
axial holes in the Group “A” references, as a means of mounting them on a rack or
other dispensing system (id. at 6), would not appear to apply reasonably to Bass.
In summary, Lake Cable has not articulated an adequate reason why one of
ordinary skill in the art at the time of the invention would have modified Bass to
include the recited passageway.
Accordingly, with respect to Lake Cable’s contention that claim 1, and its
dependent claims 2-5 and 7, are unpatentable under 35 U.S.C. § 103(a) as obvious
over Bass, Johnsen, and Quickspooler, we are not persuaded that the information
presented in the petition shows a reasonable likelihood that Lake Cable would
prevail with respect to at least one of the challenged claims. See 35 U.S.C.
§ 314(a).

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Patent 8,424,795

20
C. Claims 1-5 and 7—Obviousness
over Barnett and Hultberg
Lake Cable contends that claims 1-5 and 7 of the ’795 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Barnett and Hultberg.
1. Barnett
Lake Cable contends that “a single embodiment of Barnett meets every
limitation of claims 1-5 and 7 except that it lacks holes in the outer side panels”
and that “even this missing limitation is taught by Barnett in a separate
embodiment.” Pet. 29.
As illustrated in Figure 1, Barnett discloses a first embodiment of a boxed
spool assembly comprising spool 22, insert 28, tube (axle) 26, and container 30.
Ex. 1004, 3:7-11. Spool 22 is placed over tube 26. Id. at 4:10-11. Insert 28 rests
on the bottom of the container and functions to receive and support tube 26 in
notches 48. Id. at 4:10-13. The container 30 includes trapezoidal-shaped retaining
flaps 64, 66, with notches 72, 74, which extend downward from the top of the
container to engage tube 26 and to hold insert 28 in place. Id. at 3:52, 4:19-21.

Case IP
Patent 8

F
Fi
L
Barnett.
28’ that
Figs. 1 &
F
containe
are form
axle 26’
R2013-00
,424,795
igures 1 an
gure 1 is a
is a pers
ake Cable
Pet. 8; se
is similar
5.
igures 10,
r 30 is mo
ed in opp
can pass
528
d 2 of Ba
perspectiv
pective vi
also relies
e Ex. 1004
to insert 2
11, and 12
dified to i
osing side
through th
rnett are re
e explode
ew of the s
on a seco
, 2:44-45
8 in the fir
of Barnet
nclude a p
walls 54,
e punched

21
produced
d view of
ame embo

nd embod
. The seco
st embodi
t depict a
air of perf
56, and siz
-out holes.
below:
a first emb
diment fu
iment depi
nd embod
ment. Ex.
fifth embo
orated pun
ed such th
Id. at 5:1

odiment.
lly assemb
cted in Fig
iment utili
1004, 4:3
diment, in
ch-outs 11
at shaft po
5-45. Axl
Figure 2
led.
ure 5 of
zes an ins
0-40,
which
8, 120, wh
rtion 110
e 26’ is
ert
ich
of
Case IP
Patent 8

support
extendin
flaps 64
extendin
F
A
portion
fits over
punched
Unlike a
L
‘hubs pr
spool to
Pet. 10
S
walls of

R2013-00
,424,795
ed by trape
g upward
, 66 (whic
g downw
igure 10 o
F
s illustrate
112, and r
reduced d
-out holes
xle 26 in
ake Cable
oject[ing]
hold the s
(quoting E
imilar to J
rectangul
528
zoidal-sha
from the b
h are the s
ard from th
f Barnett i
igure 10 de
d in Figur
educed dia
iameter p
of the con
Figure 1, a
contends
through a
pool withi
x. 1006, A
ohnsen, di
ar-shaped
ped suppo
ottom of t
ame as the
e top of th
s reproduc
picts the a
e 10, solid
meter por
ortion 114
tainer by
xle 26’ is
2
that “Hultb
pertures in
n the cont
bstract).
scussed ab
container

22
rt flaps 12
he box, an
retaining
e box. Id
ed below.
xle of the
axle 26’ i
tion 114. I
, such that
flange por
not a tube
. Hultberg
erg disclo
the sides
ainer in ro
ove, Hultb
18 to supp
2, 124, wi
d trapezoi
flaps of th
. at 5:31-3

fifth embo
ncludes sh
d. at 5:20
axle 26’ c
tion 112 a
. See id., F

ses a ‘holl
[and] into
tatable rel
erg’s disp
ort spool 1
th notches
dal-shape
e first emb
6; Fig. 11
diment.
aft portion
-21. Lock
an be held
nd the lock
ig. 10.
ow contai
an axial p
ationship t
enser 10 u
2.
126, 128,
d retaining
odiment),
.
110, flan
washer 11
between t
washer 1
ner’ with
assage in [
hereto.”
tilizes the

ge
6
he
16.
a]

Case IP
Patent 8

F
petition
W
passage
spindle,
that Bar
would h
Hultber
outer sid
obvious
fifth em
1-4) “by
Lake Ca
R2013-00
,424,795
igures 1 an
, are repro
Figure 1
phantom.
ith respec
way forme
the right s
nett and H
ave consid
g to the pr
e panels.”
for one of
bodiment
placing ‘
ble adds t
528
d 2 of Hu
duced belo
is a perspe
Figure 2
t to the lim
d through
upport an
ultberg “r
ered it rea
imary emb
Pet. 29-3
ordinary
(Figures 1
punchouts
hat, “[t]o t
ltberg, as r
w:
ctive view
is a section
3. Obv
itation of
the left pa
d the right
elate to on
sonable to
odiment o
0. Lake C
skill to com
0, 11, and
118 and 1
he extent a

23
eproduced
of a dispe
al view of

iousness A
claim 1 re
nel of the
panel of th
e another,
apply the
f Barnett,
able also
bine the
12) with B
20’ in ‘sid
ny further
on page 9
nser show
the dispe
nalysis
quiring “a
carton, the
e carton,”
and that o
continuou
e.g., by po
argues tha
perforated
arnett’s fi
ewalls 54,
motivatio
of Lake C
ing the sp
nser of Fig
continuou
left supp
Lake Cab
ne skilled
s passage
king holes
t it would
punch-ou
rst embod
and 56.’”
n is neede
able’s

ool in
ure 1.
s axial
ort, the
le contend
in the art
way of
in Barnet
have been
ts of Barne
iment (Fig
Id. at 31.
d, Hultbe
s
t’s

tt’s
s.

rg
Case IPR2013-00528
Patent 8,424,795

24
discloses ‘axial passage 24,’ which goes through the centerline of the entire
dispenser assembly.” Id. (citing Ex. 1006, 1:67, Figs. 1 & 2).
Lake Cable’s obviousness analysis is not supported by adequate reasoning
with rational underpinning. First, Lake Cable has not stated explicitly how Barnett
and Hultberg “relate to each other.” Pet. 29. While the two references have some
common features, the spool support structures of the two references are
significantly different. Instead of using opposing sidewalls of the container to
support the spool assembly, as Hultberg does, Barnett’s first embodiment utilizes
insert 28 and trapezoidal-shaped retaining flaps 64 and 66 to support the spool
assembly. Lake Cable has not directed us to any teaching or suggestion stemming
from the references themselves that would have led a skilled person to place axial
holes in the sidewalls of Barnett’s first and second embodiments, or otherwise
explained adequately why “one skilled in the art would have considered it
reasonable to apply the continuous passageway of Hultberg to the primary
embodiment of Barnett, e.g., by poking holes in Barnett’s outer side panels” (id. at
29-30). Lake Cable’s argument that Barnett discloses every limitation of claim 1
except holes in the outer side panels and that Hultberg discloses such holes,
demonstrates little more than that each of the elements of the claimed subject
matter was, independently, known in the prior art. Yet, the independent existence
of the elements in various prior art references does not, itself, demonstrate that the
combination of such elements is obvious. See KSR, 550 U.S. at 418 (stating “a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the prior
art”).
Case IPR2013-00528
Patent 8,424,795

25
Similarly, Lake Cable has not advanced an adequate reason for placing the
punch-outs of Barnett’s fifth embodiment in the opposing sidewalls of Barnett’s
first or second embodiment. See Pet 31. Lake Cable’s general argument that a
reason to place holes in the first or second embodiment of Barnett (a Group “A”
reference; see Pet. 7-8) would have been to mount it on a rack or other dispensing
system (id. at 6), does not explain clearly or adequately why a person of ordinary
skill in the art at the time of the invention would have wanted to mount Barnett’s
boxed spool assembly on a rack or other dispensing system. Indeed, Barnett
teaches that boxed spool assemblies that permit the spool to spin inside the box
negate the need for external dispensing systems. Ex. 1004, 1:34-44.
Accordingly, with respect to Lake Cable’s contention that claim 1, and its
dependent claims 2-5 and 7, are unpatentable under 35 U.S.C. § 103(a) as obvious
over Barnett and Hultberg, we are not persuaded that the information presented in
the petition and the preliminary response shows a reasonable likelihood that Lake
Cable would prevail with respect to at least one of the challenged claims. See
35 U.S.C. § 314(a).

D. Claims 1-7—Obviousness over Bauer and Arnaiz
Lake Cable contends that claims 1-7 of the ’795 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over Bauer and Arnaiz.
Lake Cable characterizes Bauer as a Group “A” reference (Pet. 6-7) and
Arnaiz as a Group “B” reference (id. at 12). Lake Cable argues that “Bauer’s axial
passageway goes through the spindle and end plates, but not through the box
(panels).” Id. at 36. Lake Cable contends that “[o]ne of ordinary skill would have
Case IP
Patent 8

had the
so as to
F
asserted
obvious
not supp
not artic
mountin
W
passage
F
A
plates 1
spider 1
at 31-33
R2013-00
,424,795
motivation
allow for
or essentia
combinat
ness analy
orted by a
ulate how
g or ease
e are not
way that g
igures 1 an
Figure 1 d
the rol
s illustrate
5, which f
6 which su
.
528
to place t
mounting
lly the sam
ion of Bar
sis, based
dequate re
the asserte
of transpor
persuaded
oes throug
d 2 of Ba
epicts a ro
l of casing
d in Figur
orm a fram
pports a c
he holes s
or ease of
e reasons
nett and H
on the ass
asoning w
d passage
tation.” S
, furthermo
h the spin
uer are rep
ll of casing
and the su
es 1 and 2
e. Ex. 10
entral hub

26
hown in A
transportat
as discuss
ultberg, w
erted comb
ith rationa
way in Ba
ee Pet. at
re, that B
dle. See id
roduced b

and a sup
pport reel

, roll 12 is
02, 4:29-3
18 on wh
rnaiz into
ion.” Id.
ed above
e determin
ination of
l underpin
uer would
35.
auer disclo
. at 36.
elow.
port reel.
in a dispe
supported
1. “Each
ich the rol
the contai
at 35.
with respe
e that Lak
Bauer an
ning. Lak
have “allo
ses an axi
Figure 2
nsing cart
at its two
end plate 1
l 12 . . . is
ner of Bau
ct to the
e Cable’s
d Arnaiz, i
e Cable d
wed for
al
depicts
on.
ends by e
5 includes
mounted.”
er
s
oes

nd
a
Id.
Case IPR2013-00528
Patent 8,424,795

27
Lake Cable has not informed us, and we have not found, where Bauer
discloses an axial passageway that goes through the spindle. As illustrated in
Figures 1 and 2, the ends of the spindle extend beyond the sides of roll 12 and fit
into the central hubs (cylindrical openings) of the two end plates. Bauer’s figures
do not disclose an axial passageway.
Accordingly, with respect to Lake Cable’s contention that claim 1, and its
dependent claims 2-7, are unpatentable under 35 U.S.C. § 103(a) as obvious over
Bauer and Arnaiz, we are not persuaded that the information presented in the
petition shows a reasonable likelihood that Lake Cable would prevail with respect
to at least one of the challenged claims. See 35 U.S.C. § 314(a).

E. Claims 1-7—Obviousness over Hale
Lake Cable contends that claims 1-7 of the ’795 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over Hale.
Lake Cable argues that Hale discloses a container for mounting a cable reel
that “features ‘holes designated as 24, 44, 134 and 154 [that] fall into alignment [so
that] a rod may be inserted through these four holes to enable the container to be
hung.’” Pet. 10 (quoting Ex. 1007, 6:11-15) (citing Ex. 1007, Fig. 6).
Case IP
Patent 8

F
A
compris
2:46-48
respecti
into con
into the
& 7B. T
see id. a
W
passage
passage
134 is v
disclose
argues t
center o
R2013-00
,424,795
igures 1 an
Figure
in phant
s illustrate
es first tra
. At the n
vely, whic
tainer 10 f
page of Fi
he oppos
t 5:46-6:8
ith respec
way forme
way forme
isible in F
d as aligne
hat “one o
f the side p
528
d 7 of Ha
1 depicts a
om. Figur
d in Figur
pezoidal a
arrow base
h are illus
rom the tw
gure 7), w
ite side of
; Figs. 7, 7
t to the lim
d through
d by holes
igure 1). W
d with the
f ordinary
anels suc
le are repr

cardboard
e 7 is a cr
e 1, Hale’
rm 123 an
of trapezo
trated in F
o folds ar
hich hold
the contain
A, & 7B.
itation of
. . . the sp
24, 44, 1
hile ackn
spindle a
skill could
h that the r

28
oduced be
container
oss-section
s cardboar
d second t
idal arms
igure 1. Id
e two spin
cable reel
er is conf
claim 1 re
indle . . . ,
34, and 15
owledgin
nd does no
simply re
od would
low.
with a cab
al view of
d cable-an
rapezoidal
123, 143
. at 2:48-5
dle portio
170. Id. a
igured sim
quiring “a
” Lake Cab
4. Pet. 40
g that “this
t pass thro
locate the
pass throu
le reel sh
the conta
d-parts co
arm 143.
are two fol
0. Extend
ns 122, 14
t 2:51-53;
ilarly. Id.
continuou
le relies o
(pointing
passagew
ugh it,” L
passagew
gh the spi
own
iner.
ntainer 10
Ex. 1007,
ds 124, 14
ing inwar
2 (extendi
see Figs. 7
at 3:36-67
s axial
n the
out that ho
ay is not
ake Cable
ay toward
ndle of the

4,
dly
ng
A
;
le

the

Case IP
Patent 8

reel 170
of the p
L
W
had suff
panels s
Cable c
without
signific
through
through
holes 24
F
Figure 7
formed
R2013-00
,424,795
.” Id. at 4
etition).
ake Cable
Lake Ca
e are not
icient reas
uch that th
ontends. I
factual su
ant differe
a passage
the spindl
, 44, 134,
urther, Lak
above, do
through . .
528
0-41 (refe
’s modifie
ble’s mod
persuaded
on to “relo
e rod wou
d. at 41. L
pport or te
nce betwee
way locate
e”), as sho
and 154, a
e Cable’s
es not sat
. the spind
rencing mo
d Figure 7
ified Figur
that a pers
cate the p
ld pass thr
ake Cable
chnical arg
n hanging
d toward t
wn in mod
s disclose
proposed
isfy the lim
le . . .” (e

29
dified Fig
of Hale is
e 7 of Hal
on of ordi
assageway
ough the s
’s argume
ument, th
cardboard
he center
ified Figu
d in Hale.
modificati
itation “a
mphasis ad
. 7 of Hal
reproduce
e with hol
nary skill
toward th
pindle of
nt appears
at there w
containe
of the side
re 7 above
on, as sho
continuou
ded), bec
e as set for
d below:

e 134 reloc
in the art w
e center o
the reel 17
merely to
ould have
r 10 by a r
panels (so
, and a ro
wn in mod
s axial pa
ause the re
th on page
ated
ould hav
f the side
0,” as Lak
assume,
been no
od inserted
as to “pa
d inserted
ified
ssageway
located ho
41
e
e

ss
in
les
Case IPR2013-00528
Patent 8,424,795

30
do not form a free passageway all the way along the axis of the spindle. See
section II.A above. Lake Cable’s relocated hole 134, as shown in modified Figure
7 above, is offset from the rotational axis of the spindle of reel 170 (which is
shown in phantom and identified as “170” in Figure 7 of Hale).
We do not understand Lake Cable to contend that one of ordinary skill in the
art would have relocated holes 24, 44, 134, and 154 to the very center of the side
panels. See Pet. 41. In any event, Lake Cable has not explained why one of
ordinary skill in the art would have had reason to do so. In particular, Lake Cable
has not explained why one of ordinary skill in the art would have chosen to make
an axial passageway through the center of Hale’s inwardly-extending, spindle
mounting assemblies 32, 52, 122, 142. See Pet. 41; Ex. 1007, 2:51-53; 3:36-67;
5:46-6:8; Figs. 7, 7A, & 7B.
Accordingly, with respect to Lake Cable’s contention that claim 1, and its
dependent claims 2-7, are unpatentable under 35 U.S.C. § 103(a) as obvious over
Hale, we are not persuaded that the information presented in the petition shows a
reasonable likelihood that Lake Cable would prevail with respect to at least one of
the challenged claims. See 35 U.S.C. § 314(a).

F. Claims 1-7—Obviousness over Carris and Hale
Lake Cable contends that claims 1-7 of the ’795 patent are unpatentable
under 35 U.S.C. § 103(a) as obvious over Carris and Hale. Lake Cable
acknowledges that the “reel-in-a-box” product of Carris “does not provide holes in
the outer side panels of the box,” but argues that Hale remedies that deficiency,
because “Hale teaches a continuous axial passageway for insertion of a bar or rod,
Case IPR2013-00528
Patent 8,424,795

31
such as to suspend the container.” Pet. 43-44. For the reasons discussed in section
E above, we are not persuaded that Hale teaches a continuous axial passageway for
insertion of a bar or rod. Further, Lake Cable has not advanced sufficient reason to
explain why a person of ordinary skill in the art would have wanted to suspend the
Carris product from a bar or rod passing through an axial passageway, rather than
through holes placed at a corner edge of the box, as taught by Hale.
Accordingly, with respect to Lake Cable’s contention that claim 1, and its
dependent claims 2-7, are unpatentable under 35 U.S.C. § 103(a) as obvious over
Carris and Hale, we are not persuaded that the information presented in the petition
shows a reasonable likelihood that Lake Cable would prevail with respect to at
least one of the challenged claims. See 35 U.S.C. § 314(a).
III. CONCLUSION
For the forgoing reasons, we determine that the information presented in the
petition and the preliminary response does not establish a reasonable likelihood
that Lake Cable would prevail in showing the unpatentability of any one of claims
1-7 of the ’795 patent.
IV. ORDER
Accordingly, it is
ORDERED that Lake Cable’s petition for inter partes review is denied, and
no inter partes review will be instituted pursuant to 35 U.S.C. § 314(a) as to any
Case IPR2013-00528
Patent 8,424,795

32
claim of the ’795 patent on any of the grounds of unpatentability alleged by Lake
Cable in the petition.

Case IPR2013-00528
Patent 8,424,795

33
For the PETITIONER:

Robert E. Browne
Mike R. Turner
rbrowne@ngelaw.com
mturner@ngelaw.com

For the PATENT OWNER:

Brian M. Berliner
Brian M. Cook
bberliner@omm.com
bcook@omm.com