Leggett & Platt, Inc.v.Dreamwell, Ltd.

Patent Trial and Appeal Board

Feb 22, 2016

12106216 (P.T.A.B. Feb. 22, 2016)

Trials@uspto.gov Paper No. 8
571-272-7822  Date: February 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LEGGETT & PLATT, INC.,
Petitioner,

v.

DREAMWELL, LTD.,
Patent Owner.
____________

IPR2015-01753
Patent 8,474,805
____________

Before MEREDITH C. PETRAVICK, MICHAEL J. FITZPATRICK, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Leggett & Platt, Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 1–20 of U.S. Patent No. 8,474,805 (Ex. 1001, “the
’805 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
Dreamwell, Ltd. (“Patent Owner”) filed a Preliminary Response to the
Petition. Paper 6 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314(a) and 37 C.F.R.
§ 42.4(a). Pursuant to § 314(a) an inter partes review may not be instituted
“unless . . . the information presented in the petition . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
one of the claims challenged in the petition.”
For the reasons described below, we determine that Petitioner fails to
demonstrate that there is a reasonable likelihood that it would prevail with
respect to at least one of the challenged claims. Accordingly, we do not
institute an inter partes review.
B. Related Proceedings
The ’805 patent is the parent of U.S. Patent No. 8, 919,752 (“the ’752
patent”). The ’752 patent is a continuation of and claims priority to the ’805
patent. The ’752 patent is the subject of proceeding IPR2015-01757. A
decision denying institution of inter partes review in IP2015-01757 is
entered concurrently with our Decision in this proceeding.
C. The ’805 Patent
The ’805 patent is titled “Microalloyed Spring” and issued on July 2,
2013 from an application filed on April 18, 2008. Ex. 1001, 1.
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The ’805 patent discloses an innerspring assembly for use in
“cushioning articles,” such as mattresses. Id. at 1:45–47. The innerspring
core is made of coil springs made from a high-carbon steel wire alloyed with
one or more suitable alloying elements, such as titanium and copper. Id. at
1:49–53. The stated purpose of the alloying elements is to impart “greater
strength and durability to the innerspring core.” Id.
The ’805 patent has three independent claims and 17 dependent
claims. Independent claims 1, 11, and 18, reproduced below, are illustrative
of the claims in the ’805 patent.
1. A coil spring in an innerspring assembly in a cushioning
article, comprising
a high-carbon steel wire coiled into a helical spring and
alloyed with an alloying element wherein the high carbon steel
wire includes carbon that is from about 0.50 to about 0.99
weight percent of the spring, wherein the high carbon steel wire
has a diameter of 0.04 to 0.11 inches (1.016 to 2.794
millimeters);
wherein the alloying element comprises titanium ranging
from 0.001 to about 0.1 weight percent of the spring and silicon
ranging from 0.001 to less than 0.55 weight percent of the
spring, and wherein a total amount of the alloying element is
from about 0.001 to about 2 weight percent of the spring.

11. A coil spring in an innerspring assembly in a cushioning
article, comprising
a carbon steel wire coiled into a helical spring and alloyed with
an alloying element, wherein the high carbon steel wire has a
diameter of 0.04 to 0.11 inches (1.016 to 2.794 millimeters);
wherein the carbon is from about 0.50 to about 0.99 weight
percent of the spring and the alloying element comprises
titanium, silicon, and copper, the titanium ranging from 0.001
to about 0.01 weight percent of the spring, the silicon ranging
from 0.001 to less than 0.55 weight percent of the spring, and
the copper ranging from 0.1 to about 0.3 weight percent of the
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spring, and wherein a total amount of the alloying element is
from 0.001 to 2 weight percent of the spring.

18. A coil spring in an innerspring assembly in a cushioning
article, comprising a carbon steel wire coiled into a helical
spring and alloyed with an alloying element, wherein the high
carbon steel wire has a diameter of 0.04 to 0.11 inches (1.016 to
2.794 millimeters);
wherein the carbon is from about 0.50 to about 0.99 weight
percent of the spring and the alloying element comprises
titanium, aluminum, and copper, the titanium ranging from
0.001 to about 0.01 weight percent of the spring, the aluminum
that is about 0.003 weight percent of the spring, and the copper
ranging from 0.1 to about 0.3 weight percent of the spring, and
wherein a total amount of the alloying element is from 0.001 to
2 weight percent of the spring.

Claim 11 differs from claim 1 in the range of titanium claimed. Claim
11 requires titanium ranging from “0.001 to about 0.01 weight percent of the
spring,” whereas claim 1 requires titanium ranging from “0.001 to about 0.1
weight percent of the spring.”
Claim 18 differs from claim 11 in substituting aluminum for silicon in
the alloying element. Claim 18 requires the alloying element to comprise
titanium, aluminum (“about 0.003 weight percent of the spring”), and
copper, whereas claim 11 requires the alloying element to comprise
titanium, silicon (“ranging from 0.001 to less than 0.55 weight percent of the
spring”), and copper.
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D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Ground Claims Prior Art
§ 103 1–20 Gladney1, Kochi2, and Magrab3
Petitioner proffers a Declaration of Dr. Ronald O’Malley to support its
analysis regarding patentability in the Petition. Ex. 1002 (“O’Malley
Decl.”).
II. ANALYSIS
A. Claim Construction
When interpreting a claim, words of the claim are generally given
their ordinary and accustomed meaning, unless it appears from the
specification, the file history, or other evidence asserted by the parties that
the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. Id.
Petitioner proposes a construction for “high-carbon steel.” Pet. 20–
21. We, however, determine that an explicit construction of “high-carbon
steel” or any other claim term is not necessary for the purposes of our
Decision.

1 US Patent No. 7,168,117 (issued Jan. 30, 2007) (Ex. 1003).
2 US Patent App. No. 2007/0277913 (published Dec. 6, 2007) (Ex. 1004).
3 Edward B. Magrab, Integrated Product and Process Design and
Development: The Product Realization Process (1997) (Ex. 1005). 
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B. Ground of Unpatentability
Petitioner contends that claims 1–20 would have been obvious to one
of ordinary skill in the art over Gladney, Kochi, and Magrab. Pet. 22–59.
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”).4
Moreover, in determining the differences between the prior art and the
claims, the question under 35 U.S.C. § 103 is not whether the differences
themselves would have been obvious, but whether the claimed invention as a
whole would have been obvious. Litton Indus. Products, Inc. v. Solid State
Systems Corp., 755 F. 2d 158 (Fed. Cir. 1985) (“It is elementary that the
claimed invention must be considered as a whole in deciding the question of
obviousness.”) (citation omitted); see also Stratoflex, Inc. v. Aeroquip Corp.,

4 Additionally, secondary considerations such as “commercial success, long
felt but unsolved needs, failure of others, etc., might be utilized to give light
to the circumstances surrounding the origin of the subject matter sought to
be patented. As indicia of obviousness or nonobviousness, these inquiries
may have relevancy.” Graham, 383 U.S. at 17–18. The current record,
however, lacks such evidence.
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713 F.2d 1530, 1537 (Fed. Cir. 1983) (“the question under 35 U.S.C. § 103
is not whether the differences themselves would have been obvious.
Consideration of differences, like each of the findings set forth in Graham,
is but an aid in reaching the ultimate determination of whether the claimed
invention as a whole would have been obvious.”) (citation omitted).
A determination of obviousness cannot be based on mere conclusory
statements; “instead, there must be 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) (citation omitted).
Against this general background, we consider the references, other
evidence, and arguments on which the parties rely.
i. Overview of Prior Art
a. Gladney
Gladney discloses a multi-stranded coil spring for a mattress. Ex.
1003, 1:16–26. The strands of the multi-stranded coil spring may be made
from solid steel wire, carbon steel, spring steels, plastics, and/or other
materials. Id. at 2:12–15, 5:1–3, 5:36–39, and 6:58–67. Gladney states that
“[m]aterial selection may be based on a number of factors, including
temperature range, tensile strength, elastic modulus, fatigue life, corrosion
resistance, cost, etc.” Id. at 4:64–5:1.
High-carbon spring steels are the most commonly used of all
spring materials. They are relatively inexpensive, readily
available, and easily worked. Examples include Music (ASTM
A228) wire and Hard Drawn (ASTM A227) wire, which are
suitable for spring used, for example, in mattresses.
Id. at 5:1–5:5; see also id. at 1:50–59 (discussing that disadvantages of
conventional spring is that they are costly to manufacture).
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b. Kochi
Kochi describes a wire rod with “excellent . . . wire-drawing
workability” that can be used to produce steel cord, beading wire, PC steel
wire, or spring steel. Ex. 1004 ¶ 1. The wire rod is made from carbon steel
composed of various elements of various amounts. Kochi provides an
extensive menu of various alloying elements and the benefits and detriments
of each element. Kochi’s pertinent disclosures are shown in the chart below
in association with the corresponding elements of claims 1, 11, and 18.

Claim(s) Claimed Element Claimed Amount Kochi’s Amount of
Element
1, 11, 18 Carbon (“C”) about 0.50 to
about 0.99
weight percent
of the spring
“not less than 0.6% C”
“upper limit of . . .
1.1%”
“preferably in a range
of 0.8% to 1.0%”
Ex. 1004 ¶ 18.
1, 11, 18 Titanium (“Ti”) ranging from
0.001 to about
0.1 weight
percent of the
spring
“preferable lower limit
of Ti content is
0.0010%”
“an upper limit of the
Ti content is set to
0.1%”
“[t]he upper limit
thereof is preferably
not more than 0.08%”
Id. ¶ 31.
1, 11, 18 Copper (“Cu”) ranging from 0.1
to about 0.3
weight percent
of the spring
“an upper limit of the
Cu content is set to
1%”
“[a] preferable lower
limit of Cu content is
0.01%”
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“[t]he upper limit
thereof is preferably
not more than 0.8%”
Id. ¶ 28
1, 11 Silicon (“Si”) ranging from
0.001 to less
than 0.55 weight
percent of the
spring
“addition of not less
than 0.1% Si”
“an upper limit of
silicon content is set to
2.0%”
“preferably in a range
of 0.15 to 1.8%”
Id. ¶ 19.
18 Aluminum (“Al”) about 0.003
weight percent
of the spring
“an upper limit thereof
is therefore set to
0.03%”
“a preferable lower
limit of Al content is
0.0003%”
“the upper limit thereof
is preferable not more
than 0.01%, more
preferably not more
than 0.005%.”
Id. ¶ 24

Kochi discloses that its wire rod is “excellent in wire-drawing
workability, insusceptible to wire break in spite of an increase in wire-
drawing rate, and reduction of area, and capable of extending a die life by
suppressing die wear.” Id. ¶ 6.
c. Magrab
Magrab is a book titled “Integrated Product and Process Design and
Development: The Product Realization Process” and generally discloses
material selection for a product takes into account a multitude of factors,
including cost of raw materials. Ex. 1005, 155–156, and Table 8–1 (listing
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many factors for material selection). With regards to plain carbon steels,
Magrab states that “[c]arbon steels contain up to 2% total alloying elements”
and that “[h]igh-carbon steels contain from 0.6% to 1.0% carbon and are
used to form spring materials.” Id. at 161–162.
ii. Claims 1, 11, and 18
Petitioner contends that the challenged claims “are unpatentable under
35 U.S.C. § 103(a) over Gladney in view of Kochi and Magrab.” Pet. 11. In
support of that contention, Petitioner alleges: that Gladney discloses “that
high-carbon steel is commonly used for helical springs in cushioning
articles” (id. at 12); that Kochi discloses “a high-carbon steel spring
comprising the same combination of alloying elements as claimed in the
’805 Patent” (id.); and that Magrab discloses that “for high carbon steel
springs, the ‘total alloying elements’ concentration should be ‘up to 2%
total.’” (id. at 13 (citation omitted)). Petitioner concludes that “the features
recited in the challenged claims of the ’805 Patent were well-known and
therefore are unpatentable.” Id. at 14. Petitioner also concludes that “the
prior art discloses all the claimed materials and ranges claimed in the ’805
Patent, and therefore presents a prima facie case of obviousness.” Id. at 23
(emphasis omitted). We disagree with Petitioner’s conclusions.
“[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.” KSR, 550 U.S. at 418. It is not enough to show
merely that the prior art includes separate references covering each separate
limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc.,
655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally
requires that a person of ordinary skill at the time of the invention would
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have selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention. Id.
Petitioner’s rationale for the proposed combination of references is
that it would have been obvious “to apply the alloy compositions as taught
by Kochi to the wire spring of Gladney to obtain the multiple benefits as
taught by Kochi.” Pet. 33. According to Petitioner,
[t]he combination is nothing more than applying a known
technique of producing a high-carbon spring steel, as taught by
Kochi, to the known spring of Gladney to yield the predictable
results of, for example, providing excellent wire-drawing
workability, generating wire insusceptible to wire break,
extending die life, increasing a wire-drawing rate thereby
enhancing productivity during the manufacturing process,
reducing cost, and producing a product, e.g., spring that is less
susceptible to breakage.
Id. at 33–34 (citing Ex. 1002 ¶ 71).
Paragraph 71 of Exhibit 1002, the Declaration of Dr. O’Malley, is
essentially a verbatim repetition of the portion of the Petition quoted above.
It does not provide any underlying facts or data on which the opinion is
based, and thus is entitled to little or no probative weight. 37 C.F.R.
§ 42.65(a). Neither the Petition nor the cited portion of Dr. O’Malley’s
Declaration refers to any persuasive evidence to support the assertions that
the proposed combination of references extends die life, increases a wire-
drawing rate thereby enhancing productivity during the manufacturing
process, reduces cost, and produces a product, e.g., a spring, that is less
susceptible to breakage.
We acknowledge that Kochi discloses that the Kochi invention
“relates to a wire rod excellent in wire-drawing workability, out of which a
drawn wire product, such as a steel cord, beading wire, PC steel wire, spring
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steel, can be efficiently produced with high productivity.” Ex. 1004 ¶ 1.
The challenged claims, however, are not the claimed or disclosed wire rod
invention in Kochi, which, as claimed, requires a “wire rod comprising a
pearlite structure wherein an area ratio of a second-phase ferrite is not more
than 11.0%, and a pearlite lamellar spacing is not less than 120 μm.” Id.,
claim 1. As disclosed, Kochi teaches the need to control the metal
microstructure of the wire rod. Kochi discloses:
the wire rod with excellent resistance to wire-break, causing little
die-wear, and excelling in the wire-drawing workability can be
obtained by adequately controlling the requirements for the metal
microstructure thereof (the area ratio of the second-phase ferrite,
and the pearlite lamellar spacing) and the requirements for the
chemical components thereof.
Id. ¶ 71. Petitioner does not cite any persuasive evidence that Kochi
achieves any of the asserted advantages of the disclosed alloy without the
claimed and disclosed pearlite structure. There also is no persuasive
evidence that the asserted benefits in Kochi can be achieved with an alloy
that does not include the metal microstructure of Kochi, or does not include
manganese, phosphorus, sulfur, nitrogen, aluminum and oxygen, all of
which are specifically included in Kochi’s invention, but which are not
collectively recited in claims 1, 11, and 18.
Moreover, there is no persuasive evidence as to why it would have
been obvious to selectively glean some elements or structure from Kochi’s
disclosure, but not others, to come up with the limitations in claims 1, 11,
and 18. “A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of argument reliant upon ex post
reasoning.” See KSR, 550 U.S. at 421 (citation omitted). Indeed, as Patent
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Owner points out, the evidence establishes a complex interrelationship
among alloy elements:
Both alloying and residual elements can profoundly affect steel
production, manufacture into end products, and service
performance of the end product. The effects of one alloying
element on a steel may be affected by the presence of other
elements; such interactive effects are complex. In addition, the
effects of a particular element may be beneficial to steel in one
respect but detrimental in others.
Prelim. Resp. 25 (citing Ex. 1006 at 12).
Petitioner asserts that the challenged claims merely “‘[]discover the
optimum or workable ranges by routine experimentation.” Pet. 41. We
disagree. The challenged claims do not include the same alloy disclosed in
Kochi or the metal microstructure thereof.
We also acknowledge that Gladney and Magrab disclose that the cost
of materials is a factor to be considered when choosing an alloy. Id. at 42
(citing Ex. 1003, 1005). Such disclosure, however, does not demonstrate
that claims 1, 11, and 18 would have been obvious based on Gladney, Kochi,
and Magrab. Petitioner’s reliance on Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, (Fed. Cir. 2006) does
not persuade us otherwise. In Dystar, decided prior to KSR, the Federal
Circuit emphasized a flexible approach to considering whether an invention
would have been obvious. Dystar, 464 F.3d at 1367 (“It is difficult to see
how our suggestion test could be seen as rigid and categorical given the
myriad cases over several decades in which panels of this court have applied
the suggestion test flexibly.”). As noted by the Court, “[o]bviousness is a
complicated subject requiring sophisticated analysis, and no single case lays
out all facets of the legal test.” Id. Moreover, as discussed above, there is
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no persuasive evidence that the coil spring recited in claims 1, 11, and 18 is
less expensive or more efficient than prior art springs. See Prelim. Resp. 17
(pointing out there is no “list of materials costs or any manufacturing cost
analysis that would substantiate Petitioner’s statement in the context of
combining Gladney with Kochi with Magrab to allegedly come up with the
claimed invention.”).
The evidence of record does not establish sufficiently that the prior art
alloyed high-carbon steel is an inexpensive material suitable for springs of a
mattress or other cushioning article. Gladney’s general disclosure that
springs made from high-carbon spring steels are inexpensive (see Ex. 1003,
5:1–3), fails to establish sufficiently that the prior art alloyed high-carbon
steel is an inexpensive or suitable for springs of a mattress or cushioning
article. Likewise, Magrab’s general disclosures that high-carbon steel is
inexpensive and used for springs (see Ex. 1005, 155, and 161–162) and
Kochi’s brief mention of “spring steel” (Ex. 1004 ¶ 1) does not demonstrate
such. Dr. O’Malley’s testimony also does not cure the deficiencies of the
prior art because Dr. O’Malley discusses cost with regards to carbon steel
generally, but not the cost of the prior art alloyed high-carbon steel or the
cost of the coil spring recited in claims 1, 11, and 18. See Ex. 1002 ¶¶ 69,
and 91–93. Moreover, there is no persuasive evidence or data to support Dr.
O’Malley’s opinion that the combined disclosures of the references “would
have reduced total manufacturing cost of the spring to thereby enhance
commercial opportunities. Id. ¶ 93.
Based on the evidence of record, Petitioner has not demonstrated a
reasonable likelihood that it would prevail with respect to challenging the
patentability of claims 1, 11, and 18.
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iii. Dependent Claims 2–9, 12–17, and 19–20
Claims 2–9 depend from claim 1, claims 12–17 depend from claim
11, and claims 19–20 depend from claim 18, and, like for claims 1, 11 and
18, Petitioner contends that claims 2–9, 12–17, and 19–20 are unpatentable
over Gladney, Kochi, and Magrab (Pet. 44–59). For the same reasons as
discussed above, we determine that Petitioner fails to demonstrate a
reasonable likelihood that it would prevail with respect to at least one of the
claims challenged in the petition.
C. Availability of Magrab as Prior Art
Patent Owner argues that Petitioner fails to establish that Magrab was
publically accessible prior to April 18, 2008. Prelim. Resp. 36–38. As
discussed above, we determine that Petitioner fails to demonstrate that
claims 1–20 are unpatentable over Gladney, Kochi, and Magrab and, thus,
we need not address whether Petitioner has established sufficiently that
Magrab is prior art for the purposes of our decision.
III. CONCLUSION
We determine that Petitioner fails to demonstrate a reasonable
likelihood of prevailing on at least one of the challenged claim.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
the ’805 patent is DENIED.

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PETITIONER:

David M. O’Dell
David L. McCombs
Gregory P. Huh
HAYNES AND BOONE, LLP
david.odell.ipr@haynesboone.com
david.mccombs.ipr@haynesboone.com
gregory.huh.ipr@haynesboone.com

PATENT OWNER:

J. Steven Baughman
Nicole M. Jantzi
ROPES & GRAY LLP
steven.baughman@ropesgray.com
nicole.jantzi@ropesgray.com