Norman International, Inc.v.Andrew J. Toti Testamentary TrustDownload PDFPatent Trial and Appeal BoardFeb 10, 201509229595 (P.T.A.B. Feb. 10, 2015) Copy Citation Trials@uspto.gov Paper 7 Tel: 571-272-7822 Entered: February 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ NORMAN INTERNATIONAL, INC., Petitioner, v. HUNTER DOUGLAS INC., ANDREW J. TOTI TESTAMENTARY TRUST, RUSSELL L. HINCKLEY, SR. (CO-TRUSTEE) and ROBERT F. MILLER (CO-TRUSTEE), Patent Owner. _______________ Case IPR2014-01174 Patent 6,283,192 B1 _______________ Before LINDA M. GAUDETTE, JAMES P. CALVE and HYUN J. JUNG, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2014-01174 Patent 6,283,192 B1 2 I. INTRODUCTION On July 16, 2014, Norman International, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 17, 18, 31, 35, 36, 38, 42, and 43 (the “challenged claims”) of U.S. Patent No. 6,283,192 B1 (Ex. 1001, “the ’192 patent”). 35 U.S.C. § 311–319. Hunter Douglas Inc., Andrew J. Toti Testamentary Trust, Russell L. Hinckley, Sr. (Co-Trustee), and Robert F. Miller (Co-Trustee) (collectively, “Patent Owner”) timely filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered Petitioner’s Petition and Patent Owner’s Preliminary Response, we decline to institute inter partes review for the reasons that follow. II. BACKGROUND A. Related Matters Contemporaneous with the instant Petition, Petitioner also filed Petitions for inter partes review of U.S. Patent Nos. 6,648,050 B1, 6,968,884 B2 and 8,230,896 B2. These Petitions have been assigned the following case numbers: IPR 2014-01173, IPR 2014-01175 and IPR 2014- 01176, respectively. Of the patents at issue in these proceedings, only U.S. Patent No. 6,648,050 B1 (at issue in IPR 2014-01173) is in the same patent family as the ’192 patent. Petitioner previously submitted petitions for inter partes review of the same four patents on December 19–20, 2013. Pet. 2. On June 20, 2014, trial was instituted on claims 17 and 26 of the ’192 patent IPR2014-01174 Patent 6,283,192 B1 3 in IPR2014-00283 (Paper 9); trial was denied in the remaining three petitions: IPR2014-00276 (Paper 11), IPR2014-00282 (Paper 8), and IPR2014-00286 (Paper 8). Petitioner indicates that Hunter Douglas Inc., filed suit against Petitioner alleging infringement of the ’192 patent and the aforementioned three patents in Hunter Douglas Inc. v. Nien Made Enterprise Co.,1:13-cv-01412-MSK-MJW (D. Colo. May 31, 2013). Pet. 1– 2. Petitioner was served with a complaint in the district court action on July 16, 2013. Id. at 3; Ex. 1009. B. The ’192 patent (Ex. 1001) The ’192 patent “relates generally to flat spring drives or motors, which are useful in numerous applications and, in particular, relates to the application of such flat spring drives in window cover systems.” Ex. 1001, 1:16–19. For convenience, the invention is described below in connection with its application to a venetian blind window cover system, as depicted in Figure 1, below. IPR2014-01174 Patent 6,283,192 B1 4 Figure 1, above, is a front elevational view of venetian blind window cover system 10 in the closed (fully lowered) position. Ex. 1001, 5:59–61. Window cover system 10 comprises top housing 11 having a spring drive unit (not shown) mounted therein. Id. at 5:61–64. Blind 12 comprises horizontal slats 13 and bottom rail 14. Id. at 5:64–65. Spaced cord ladders 17 are suspended from top housing 11 and rungs 21 of ladders 17 are routed along and/or attached to the underside of individual horizontal slats 13 so that when ladders 17 are extended fully (lowered) and blind 12 is thus fully lowered, the weight of each slat 13 is supported by ladders 17, with little weight on lift cords 16, used to raise and lower blind 12. Id. at 6:11–17. As blind 12 is raised from the fully extended position, slats 13 are collected sequentially on bottom rail 14, starting with the bottom-most slats, so that an increasing weight is supported on bottom rail 14 and by lift cords 16. Id. at 6:17–22. In other words, the weight supported by lift cords 16 is at a maximum when blind 12 is open (raised), and at a minimum when blind 12 is closed (lowered), id. at 6:23–25, thereby necessitating the use of differing amounts of force to raise or lower blind 12 depending on its position, id. at 2:3–6. The ’192 patent describes the use of a spring drive unit, illustrated in Figure 13 below, to improve the raising and lowering of window covers. See id. at 3:39–42. IPR2014-01174 Patent 6,283,192 B1 5 Figure 13, above, is a top plan view of an exemplary embodiment of spring drive unit 15 mounted inside housing 11 of venetian blind window cover system 10. Ex. 1001, 10:33–35. As illustrated in Figure 13, spring drive unit 15 includes shaft 50, conventional flat spring drive 26, or varied torque flat spring drive 31, 41, gear transmission 70, and bevel gear set 60 operatively connecting spring drive 26, 31, 41 to shaft 50 and gear transmission 70. Id. at 9:22–23, 10:34–35. However, spring drive unit 15 need not include gear transmission 70. Id. at 11:47–48. Lift cords 16 of venetian blind 12 are wound around lift pulleys 19, mounted on rotatable shaft 50. Id. at 10:44–46. Gear transmission 70 comprises power gear 77 intermeshed with idler gear 75 and intermeshed idler gears 71 and 73. Id. at 9:34–37. Typically, the gear ratio of gear transmission 70 is selected so that lift cord pulleys 19 rotate faster than the spring drive 26, 31, 41, thereby diminishing, proportionately, the torque exerted by spring 29, 34, 44 as blind 12 is lowered. Id. at 9:59–61, 10:1–4. This permits the use of a more powerful spring to hold a large, heavy blind in position at the uppermost position, where the cord-supported weight is the greatest, and proportionately IPR2014-01174 Patent 6,283,192 B1 6 diminishes the force exerted by the spring at the lowermost, closed condition when the supported weight is a minimum, so that the powerful spring does not overpower the weight of the blind and does not raise the blind uncontrollably. Id. at 10:4–12. C. Illustrative Claims Of the challenged claims, claims 17, 31, and 38 are independent. Claim 18 depends from claim 17; claims 35 and 36 depend from claim 31; and claims 42 and 43 depend from claim 38. Claims 17 and 18, reproduced below, are illustrative of the claimed subject matter: 17. A window cover system comprising: an extendible window cover; a housing; lift cords attached to the cover and wrapped around pulleys mounted to the housing for raising and lowering the extendible cover; and a spring drive system connected to the lift cords for assisting the raising and lowering of the cover; the spring drive system comprising: a shaft mounted to the housing, a spring drive comprising at least one substantially flat spring; the spring drive being mounted to the housing and having a storage end and a rotatable end, the spring drive having a torque or force which decreases as the cover is extended and increases as the cover is retracted, and a bevel gear set having one gear connected to the rotatable spring end and a second gear operatively connected to the shaft for rotating the lift cord pulleys, the spring drive thereby applying the varying torque or force to the cover and having inherent inertia maintaining the position of the cover. 18. The window cover system of claim 17, further comprising: a gear transmission of fixed drive ratio and inherent rotating friction; the second gear connecting one end of the gear transmission to the rotatable end of the spring drive; and the end of the gear transmission opposite the first end thereof being IPR2014-01174 Patent 6,283,192 B1 7 connected to the shaft for rotating the lift cord pulleys, the gear transmission thereby applying the fixed ratio between the spring drive and the lift cords, determining the ratio of the cover travel distance to the winding distance of the substantially flat spring and controlling the force applied to the cover by the spring drive, and applying the inherent friction thereof to the lift cord pulleys for maintaining the position of the cover. D. Evidence Relied Upon Petitioner’s patentability challenges are based on the following references: References Patents/Printed Publications Exhibit Tachikawa Japanese Patent Application S54-38648 (English Translation) 1002 Suzuki Japanese Patent Application S53-126478 (English Translation) 1003 Skidmore GB 1,174,127 1004 Lohr US 3,216,528 1005 Petitioner also relies on the declaration of Lawrence E. Carlson, executed July 16, 2014 (Ex. 1006, “Carlson Declaration”) and the declaration of Patrick E. Foley, executed July 16, 2014 (Ex. 1007, “Foley Declaration”) in support of its patentability challenges. Pet. 3–4. E. Asserted Grounds of Unpatentability Petitioner challenges the patentability of claims 17, 18, 31, 35, 36, 38, 42, and 43 of the ’192 patent based on the following grounds: References Basis Claims challenged Tachikawa §103 17 IPR2014-01174 Patent 6,283,192 B1 8 References Basis Claims challenged Tachikawa and Suzuki §103 18, 31, 35, 36, 38, and 42 Tachikawa, Suzuki and Lohr §103 43 Tachikawa and Skidmore §103 18, 31, 35, 36, 38, and 42 Tachikawa, Skidmore and Lohr §103 43 III. CLAIM CONSTRUCTION Claims of an unexpired patent are interpreted using the broadest reasonable construction in light of the specification of the patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). At this stage of the proceeding, for purposes of this Decision, we determine no express construction of the claim language is required. IPR2014-01174 Patent 6,283,192 B1 9 IV. ANALYSIS A. Obviousness of Claim 17 Over Tachikawa 1. Tachikawa (Ex. 1002) Tachikawa Figure 2, reproduced below, presents a vertical front, cross-sectional view of a device for raising and lowering venetian blinds. Ex. 1002, 1:2, 4:29–30. As shown in Figure 2, above, Tachikawa’s device for raising and lowering venetian blinds comprises upper case 1 having rotatable operating shaft 2 mounted thereon. Id. at 2:12–13. Drums 3 are attached to multiple locations on operating shaft 2. Id. at 2:14–16. Tapes 4 are wound onto drums 3, passed through through-holes in blind slats 5, and coupled to lower case 6. Id. at 2:14–18. Bevel gear 7 is attached to one end of operating shaft 2 and engages bevel gear 8. Id. at 2:18–21. Chain pulley 10 is fixed to drive IPR2014-01174 Patent 6,283,192 B1 10 shaft 9 of bevel gear 8. Id. at 2:19–20. Endless chain 11 is hung on chain pulley 10 and is suspended downward. Id. at 2:21–22. The blinds are raised or lowered by pulling chain 11 to turn chain pulley 10, thereby turning operating shaft 2 through engagement and interlocking of bevel gears 7, 8. See id. at 3:1–5. When the blinds are raised, tapes 4 wrap around drums 3 that turn in the same direction as operating shaft 2, pulling lower case 6 and sequentially stacking slats 5 on lower case 6. Id. at 3:7–9. In the closed, or lower-most position of the blinds, the load is only that of lower case 6. Id. at 3:9–11. As the blinds are raised, the torque required to turn operating shaft 2 increases as the load of slats 5 is applied. Id. at 3:11–14. Conversely, when the blinds are lowered, the load becomes smaller, decreasing the force necessary to turn operating shaft 2. Id. at 1:17–19. To eliminate the problem of torque variance during operation of the blinds, Tachikawa employs spring 17. See id. at 3:15–22. Spring 17 is wound between drum 16 and drum 14. Id. at 3:26–28. Drum 16 is rotatably, axially fitted onto center shaft 15 on support plate 12, mounted inside upper case 1. Id. at 3:22–23, 28–30. Drum 14 is fixed to shaft tube 13 (through which operating shaft 2 passes), also mounted on support plate 12. Id. at 3:23–28. Alternatively, drum 14 is fixed to drive shaft 9. Id. at 4:22–24. [I]n response to the torque of turning the operating shaft 2 based on the load P as the blinds are rolled up to the uppermost end, . . . spring 17 produces a torque T in the opposite direction and identical to the torque due to the load P by making curvature radius R small at the starting end wound onto drum 14. Id. at 3:30–37. IPR2014-01174 Patent 6,283,192 B1 11 [A]s the blinds are rolled down, the load P decreases gradually, changing gradually to load p when the blinds are rolled down to the lowermost end, while the curvature radius of . . . spring 17 is gradually increased from the curvature radius R of the starting end to the curvature radius r of the terminal end . . . so that a spring torque t in the opposite direction and identical to the torque on the operating shaft 2 due to load p is generated at the terminal end. Id. at 3:38–48. 2. Analysis Petitioner identifies the following elements of Tachikawa’s device as corresponding to the limitations of challenged claim 17: Challenged Claim 17 Disclosure in Tachikawa Pet. A window cover system comprising A venetian blinds roll-up device 20 an extendable window cover slats 5 20 a housing upper case 1 20 lift cords attached to the cover and wrapped around pulleys mounted to the housing for raising and lowering the extendable cover tapes 4 passed through holes in slats 5 and wound onto drums 3 20– 21 a spring drive system connected to the lift cords for assisting the raising and lowering of the cover shaft 2, spring 17, and bevel gears 7, 8 connected to tapes 4 21 the spring drive system comprising: a shaft mounted to the housing shaft 2 is mounted to upper case 1 22 a spring drive comprising at least one substantially flat spring spring 17 has a curved radius R or r which corresponds to a transversely coved or curved spring 22– 23 IPR2014-01174 Patent 6,283,192 B1 12 Challenged Claim 17 Disclosure in Tachikawa Pet. the spring drive being mounted to the housing and having a storage end and a rotatable end spring 17 is mounted to upper case 1 via support plate 12, and is wound diagonally between fixed drum 14 and rotatable drum 16 23 the spring drive having a torque or force which decreases as the cover is extended and increases as the cover is retracted spring 17 constantly generates a force equal and opposite to the load from slats 5 24 and a bevel gear set having one gear connected to the rotatable spring end and a second gear operatively connected to the shaft for rotating the lift cord pulleys bevel gear 7 is connected to shaft 2, bevel gear 8 is connected to the rotatable end of spring 17 25 the spring drive thereby applying the varying torque or force to the cover and having inherent inertia maintaining the position of the cover the spring drive has inherent inertia by virtue of its mass 25 Petitioner contends “Tachikawa teaches or suggests each element in Claim 17 and renders the subject matter of Claim 17 obvious and unpatentable.” Pet. 26. Patent Owner requests that this Panel exercise its discretion under 35 U.S.C. § 325(d) to deny trial as to claim 17 because the obviousness challenge in this Petition and the anticipation challenge as to claim 17 in IPR2014-00283 are virtually identical. Prelim. Resp. 37–38, 41–42. Patent Owner cites several PTAB decisions denying institution of inter partes review under this statutory provision where substantially the same prior art and arguments were presented in a prior petition challenging the same patent claim. See id. at 36–42. IPR2014-01174 Patent 6,283,192 B1 13 Like Patent Owner, we are unable to discern a substantive difference between the present obviousness challenge as to claim 17 and the prior anticipation challenge in IPR2014-00283. See Prelim. Resp. 42 (“Petitioner does not even attempt to identify a particular limitation of Claim 17 that it alleges is missing or beyond the teaching of Tachikawa.”). Accordingly, we exercise our discretion under 35 U.S.C. § 325(d) and decline to institute inter partes review with respect to claim 17. B. Obviousness of Claims 18, 31, 35, 36, 38, and 42 Over Tachikawa in View of Suzuki Claim 18 depends from claim 17 and adds the limitation of “a gear transmission of fixed drive ratio” having one end connected to the rotatable end of the spring drive via the second gear and an opposite end connected to the shaft for rotating the lift cord pulleys, thereby applying a fixed ratio between the spring drive and the lift cords. Thus, claim 18 requires both a “bevel gear set” (recited in independent claim 17) and “a gear transmission.” Independent claim 38 recites a transmission comprising a first rotatable shaft operatively connected to an output end of a spring drive and a second rotatable shaft operatively connected to a pulley for retracting and extending a window cover. Independent claim 38 further requires that the transmission apply a selected gear ratio between the first and second rotatable shafts to alter the torque or force of the spring drive applied to the second transmission shaft as the spring is unwound or unwound. Independent claim 31 includes limitations similar to those in claim 38, but specifies that gear ratio decreases the torque or force of the spring drive applied to the second transmission shaft as the spring is unwound and increases the torque or force IPR2014-01174 Patent 6,283,192 B1 14 of the spring drive applied to the second transmission shaft as the spring is rewound. 1. Suzuki (Ex. 1003) Suzuki describes a “spring-type balancer” for blinds that alters the characteristics of a fixed load spring to adjust for variation in slat load as the blinds rise or fall. Ex. 1003, 2:15, 27–29. A top view of Suzuki’s spring- type balancer is illustrated in Figure 1, below. Id. at 5:2. Figure 1, above, shows fixed weight spring 2 mounted on spring reels 1, 3 for winding in a first direction and a second, opposite direction. Id. at 2:31–3:2. Gear 4 is integrated with spring reel 3, and engaged with gear 7 via intermediate gear 5. Id. at 3:2–4. Gear 7 is integrated with rope reel 6. Rope 8 is wound on conical winding drum 6a along guide groove 6b of rope reel 6, and has one end attached to cylindrical rope reel 9. Id. at 3:4–7. Cylindrical rope reel 9, in turn, is integrated with drum 11 on which control rope 10 is wound. Id. at 3:7–8. [P]ulling [control] rope 10 rotates [] rope reel 9, and [] rope 8 is wound from [] rope reel 6 to [] rope reel 9. At the same time, [] gears 4, 5, and 7 rotate [] spring reel 3, which winds the fixed load spring from [] spring reel 1 to [] spring reel 3. Id. at 3:8–11. Suzuki discloses “a constant functional relationship between the number of rotations of [cylindrical rope reel 9] and the winding length of [] rope [8] is maintained so that the actual load varies as the position of [] IPR2014-01174 Patent 6,283,192 B1 15 fixed weight spring [2] changes.” Id. at 2:11–13. Suzuki discloses, more specifically, that the spring characteristics of fixed weight spring 2 are altered by selecting the relationship between the effective radius of the rope guide groove 6b (“r”) and developed length (“l”) of the rope guide groove 6b. Id. at 4:14–15; cf. id. at 3:17–19 (“[T]he effective radius of the rope guide groove 6b at an arbitrary position of the rope reel 6, r, . . . is a function of the developed length, l, of the rope guide groove 6b.”). 2. Analysis Petitioner contends both Tachikawa and Suzuki disclose window cover systems comprising spring drive units (Tachikawa’s drums 14, 16 and spring 17; Suzuki’s spring reels 1, 3 and spring 2) and gear transmissions (Tachikawa’s bevel gears 7, 8; Suzuki’s intermeshed gears 4, 5, 7). Pet. 31- 32. Petitioner notes Tachikawa’s transmission translates a rotation from drive shaft 9 (to which chain pulley 10 is fixed) to operating shaft 2 (from which the blinds are suspended). Id. at 31. Petitioner maintains Suzuki’s transmission alters the spring characteristics of the spring drive unit to compensate for load change due to the weight of the blinds as they are raised or lowered. Id. at 32 (citing Ex. 1003, 2:27–29). Petitioner contends “Tachikawa and Suzuki demonstrate that in spring drive units, a transmission including intermeshed gears such as what is disclosed by Tachikawa or a geared transmission of intermeshed gears 4, 5, 7 such as what is disclosed by Suzuki was well known before filing of the 192 Patent.” Id. at 32. Petitioner thus contends “Tachikawa and Suzuki collectively disclose the recited gear transmission of claim 18 and render the use of the recited gear transmission in the recited spring drive unit in claim 18 obvious.” Pet. 32–33. Petitioner contends, in the alternative, it would have IPR2014-01174 Patent 6,283,192 B1 16 been obvious to add “Suzuki’s transmission formed by gears 4, 5, 7,” id. at 30, to Tachikawa’s device “so that the system in Tachikawa could be used for different window blind loads (e.g., size, weight, and/or length blinds).” Id. at 33. Petitioner contends, more specifically, that one of ordinary skill in the art would have modified Tachikawa by connecting Suzuki’s gear 4 to Tachikawa’s bevel gear 7, and connecting Suzuki’s gear 7 to Tachikawa’s shaft 2. Id. at 34 (as to claim 18); see also id. at 36–41 (relying on the same contentions to establish unpatentability of independent claims 31 and 38). Patent Owner argues Petitioner has not identified adequate support for its contention that one of ordinary skill in the art would have had a reasonable expectation of enhancing versatility of Tachikawa’s transmission by adding Suzuki’s gears 4, 5, 7. Prelim. Resp. 46. In particular, Patent Owner contends rope reels 6, 9 are critical components of Suzuki’s spring- type balancer, and Petitioner has not explained why one of ordinary skill in the art reasonably would have expected “only three transmission pieces,” i.e., gears 4, 5, 7, to perform the same function as all components of Suzuki’s spring-type balancer. Id. We agree with Patent Owner that Petitioner has not explained adequately why one of ordinary skill in the art would have been motivated to add only gears 4, 5, 7 of Suzuki’s spring-type balancer to Tachikawa’s system to compensate for different loads, given Suzuki’s disclosure that the characteristics of fixed weight spring 2 are altered by selecting the relationship between the radius of rope guide groove 6b and length of rope 8, i.e., there is no mention that the weight compensation adjustment to spring 2 is provided by gears 4, 5, 7. See Ex. 1003, 4:14–15. We further agree with Patent Owner that Petitioner’s broad-brush statement that the IPR2014-01174 Patent 6,283,192 B1 17 collective teachings of the references render claims 18, 31, and 38 obvious (see, e.g., Pet. 29) is not persuasive because it fails to provide “sufficient articulated reasoning with rational underpinning as to why an ordinary artisan, at the time of the invention, would have had a reason to combine the prior art elements in the manner required by [the] claims . . . , or how one would have done so with a reasonable expectation of success.” Prelim. Resp. 43 (citing IPR2013-00283, Paper 9 at 21, 22). To the extent that Petitioner’s rationale relies on Suzuki’s disclosure of a “simple mechanism” that alters spring characteristics to improve the versatility of the balancer (Pet. 30 (citing Ex. 1003, 2:27–29)), Petitioner has not persuaded us that the simple mechanism comprises gears 4, 5, 7. Suzuki discloses that gears 4, 5, 7 rotate spring reel 3 to wind fixed load spring 2 from spring reel 1 to spring reel 3 and provide a steady torque T0 to reel 6. Ex. 1003, 3:9–14. Suzuki also discloses that by selecting the relationship between r and l, which are not related to gears 4, 5, 7, it is possible to alter the characteristics freely.” Id. at 3:17–20; 4:14–15. The Carlson Declaration states that a skilled artisan “would have known to provide the transmission of Suzuki (including the gear transmission formed by gears 4, 5, and 7) to Tachikawa’s mechanism for the purpose of enhancing the versatility of the balancing mechanism, as taught by Suzuki.” Ex. 1006 ¶ 90 (emphasis added). The Carlson Declaration does not identify the other elements of the transmission of Suzuki that are to be provided to Tachikawa, and the Petition proposes to provide only gears 4, 5, and 7 of Suzuki’s transmission. Pet. 30. The Foley Declaration states that it would have been obvious to modify Tachikawa with a gear transmission shown by Suzuki to change the speed or torque output of Tachikawa’s spring motor “to IPR2014-01174 Patent 6,283,192 B1 18 accommodate different size, weight, and/or length window coverings.” Ex. 1007 ¶¶ 53–54. This statement is not persuasive because Suzuki teaches that the gear ratio of gears 4, 5, 7 determines the torque T0 of rope reel 6 at a steadily constant value. See Ex. 1003, 3:9–11; Fig. 1. For the above reasons, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 18, 31, 35, 36, 38, and 42 over Tachikawa in view of Suzuki. C. Obviousness of Claims 18, 31, 35, 36, 38, and 42 Over Tachikawa in View of Skidmore 1. Skidmore (Ex. 1004) Skidmore describes a cord drive arrangement for venetian blinds whereby a single cord is used for both raising/lowering and tilting the slats. Ex. 1004, 1:70–74. Skidmore Figure 4, below, is a horizontal section taken through part of head member 11 of the Figure 1 venetian blind, showing the cord drive arrangement. See id. at 2:27–37. As shown in Figure 4, above, the cord drive arrangement includes gear box 12, having input driving pulley 14 mounted on input shaft 13. Id. at 2:43–45. To raise and lower slats 41 of the venetian blind, endless cord IPR2014-01174 Patent 6,283,192 B1 19 15 is operated to rotate driving pulley 14. Id. at 2:112–115. Driving pulley 14, in turn, rotates tape winding drum 16 via spur gears 17, 18, shaft 19, and spur gears 21, 22, 23, spur gear 22 being free to rotate on shaft 13 on bearing 24. Id. at 2:60–64. Lifting tapes 27, 28 extend from head member 11 to bottom stick 34 of the venetian blind, and wind onto or off of tape winding drum 16 to raise or lower bottom stick 34, whereby slats 41 also are raised or lowered. Id. at 2:115–120. Skidmore discloses that by changing a small number of cogs[, it] is possible to vary the gear ratio to meet the requirements of a particular blind. . . . As a result of this, a suitable gear ratio can be chosen so that even a large blind can be raised by a force of less than 10 lbs., without requiring an excessive amount of pulling on the cord 15. Id. at 4:15–31. 2. Analysis Petitioner contends Skidmore’s “gear box 12[,] including multiple intermeshed gears 17, 18, 21, 22, 23, . . . corresponds to the gear transmission of claim 18.” Pet. 48. Petitioner notes Skidmore discloses that different gear ratios can be chosen to meet the requirement of a particular blind, such that even a large blind can be raised without excessive force. Id. at 47 (citing Ex. 1004, 4:14–31). Petitioner contends one of ordinary skill in the art would have added Skidmore’s transmission (e.g., gears 17, 18, 21, 22, 23) to Tachikawa’s device in order to meet the requirements of different size, weight, and/or length blinds. Id. Petitioner asserts, more specifically, that it would have been obvious to connect Skidmore’s shaft 13 (on which gear 17 is mounted) to Tachikawa’s spring 17 and Skidmore’s shaft 25 (on which gear 23 is mounted) to Tachikawa’s rotatable shaft 2. Id. at 49; see IPR2014-01174 Patent 6,283,192 B1 20 also id. at 53–55 (wherein Petitioner raises similar contentions with respect to independent claims 31 and 38). Patent Owner argues significant modifications to Skidmore’s gear box 12 would be required in order to make the Petitioner’s proposed combination. Prelim. Resp. 47. Patent Owner also argues, more generally, that Petitioner has not provided the requisite articulated reasoning with a rational underpinning to support a legal conclusion of obviousness. Id. at 51. Tachikawa describes the use of a spring to eliminate the problem of torque variance during operation of blinds, noting that the torque required to turn the operating shaft increases as the blind is raised. Ex. 1002, 3:15–22. By contrast, Skidmore uses a gear transmission wherein gear ratio can be adjusted so that an excessive amount of force is not required to raise a blind. Ex. 1004, 4:15–31. Petitioner contends it would have been obvious to add Skidmore’s gear transmission to Tachikawa’s device “to meet the requirements of different loads (e.g., size, weight, and/or length blinds).” See Pet. 47. However, Petitioner has not explained adequately why one of ordinary skill in the art would have made this modification, because Tachikawa indicates spring 17 already serves the function of adjusting the force needed to raise varying loads. See Ex. 1002, 1:23–2:7 (describing the spring as having the effect that only a small, constant force is required to manipulate the operating shaft when raising or lowering the blinds). Petitioner has not identified evidence on this record indicating that addition of a gear transmission of the type disclosed in Skidmore would have addressed a need not met by Tachikawa’s spring 17, the radius of curvature of which can be altered in response to changes in load of the blinds or IPR2014-01174 Patent 6,283,192 B1 21 remain fixed to provide a spring torque P in a suitable range from starting end and a spring torque p at the terminal end, as desired. See Ex. 1002, 3:49–4:19. For the above reasons, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 18, 31, 35, 36, 38, and 42 over Tachikawa in view of Skidmore. D. Obviousness of Claim 43 Over Tachikawa in View of Suzuki and Lohr and Over Tachikawa in View of Skidmore and Lohr Claim 43 depends from claim 42, and recites the feature of “a spring- biased brake device including a brake member positioned adjacent the spring drive and a spring selectively biasing the brake member against the spring drive for selectively braking the spring drive.” Petitioner relies on Lohr for a disclosure of a brake device as recited in claim 43, contending “it would have been obvious to modify Tachikawa in view of [Suzuki or Skidmore] with a spring biased brake device[, as taught by Lohr,] to selectively brake or slow down the rotation of the spring drive in order to further control the movement of the blind and for holding position of the blind.” Id. at 44, 58–59. We agree with Patent Owner that Petitioner has not identified disclosure in Lohr which would overcome the above-noted deficiencies in Petitioner’s proposed combinations of Tachikawa and Suzuki (Section IV.B.2, above) or Tachikawa and Skidmore (Section IV.C.2, above) with respect to independent claim 38, from which claim 43 depends indirectly. Prelim. Resp. 55. Accordingly, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of claim 43 over Tachikawa in view of Suzuki and Lohr or over Tachikawa in view of IPR2014-01174 Patent 6,283,192 B1 22 Skidmore and Lohr. V. CONCLUSION For the above reasons, Petitioner has not demonstrated there is a reasonable likelihood it would prevail in showing the unpatentability of at least one of claims 18, 31, 35, 36, 38, 42, and 43. We exercise our discretion under 35 U.S.C. § 325(d) and decline to institute inter partes review with respect to claim 17. VI. ORDER For the reasons given, it is ORDERED that the Petition is denied, and no trial is instituted. IPR2014-01174 Patent 6,283,192 B1 23 PETITIONER: Bing Ai Kourtney Mueller Perkins Coie LLP Ai-ptab@perkinscoie.com KMerrill@perkinscoie.com PATENT OWNER: Kristopher Reed Darin Gibby Kilpatrick Townsend & Stockton LLP HD-Norman-IPR@kilpatricktownsend.com dgibby@kilpatricktownsend.com Copy with citationCopy as parenthetical citation