Norman International, Inc.v.Andrew J. Toti Testamentary Trust, Russell L. Hinkley, Sr. (CO-TRUSTEE), and Robert F. Miller (CO-TRUSTEE)

Patent Trial and Appeal Board

Jun 18, 2015

09229595 (P.T.A.B. Jun. 18, 2015)

Trials@uspto.gov Paper No. 52
571-272-7822 Entered: June 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NORMAN INTERNATIONAL, INC,
Petitioner,

v.

ANDREW J. TESTAMENTARY TRUST, RUSSELL L. HINKLEY, SR.
(CO-TRUSTEE), and ROBERT F. MILLER (CO-TRUSTEE),
Patent Owner.
____________

Case IPR2014-00283
Patent 6,283,192 B1
____________

Before TONI R. SCHEINER, LINDA M. GAUDETTE, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

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

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I. INTRODUCTION
A. Background
Norman International, Inc. (“Petitioner”) filed a Petition requesting an
inter partes review of claims 17, 18, 26, 31, 35, 36, 38, 42, and 43 of U.S.
Patent No. 6,283,192 B1 (Ex. 1001, “the ’192 patent”) pursuant to 35 U.S.C.
§ 311. Paper 2 (“Pet.”). Andrew J. Toti Testamentary Trust, Russell L.
Hinkley, Sr. (Co-Trustee), and Robert F. Miller (Co-Trustee) (collectively,
“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
On the basis of the information presented in the Petition and the Preliminary
Response, we determined that Petitioner had demonstrated a reasonable
likelihood of prevailing with respect to at least one of the challenged claims,
and on June 20, 2014, an inter partes review was instituted on the following
asserted grounds: claim 17 under 35 U.S.C. § 102(b) as anticipated by
Tachikawa;1 and claim 26 under 35 U.S.C. § 103(a) as obvious over
Tachikawa and Todd.2 Paper 9 (“Dec.”).
After trial was instituted, Patent Owner filed a Patent Owner
Response (Paper 23, “PO Resp.”), to which Petitioner filed a Reply (Paper
32, “Pet. Reply”).
Patent Owner relies on the Declaration of John A. Corey, P.E.
(Ex. 2006, “Corey Decl.”) in support of its contentions. Petitioner relies on
the Declarations of Lawrence E. Carlson (Ex. 1017, “Carlson Decl.”)3 and

1 Japanese Unexamined Patent Application S54-38648 (published Mar. 23,
1979) (Ex. 1002).
2 U.S. Patent No. 6,056,036 (issued May 2, 2000) (Ex. 1003).
3 An earlier Declaration of Lawrence E. Carlson (Ex. 1008), submitted with
the Petition, was not considered because Petitioner failed to state its
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Patrick E. Foley (Ex. 1018, “Foley Decl.”), both submitted with its Reply, in
support of its contentions.
Both Patent Owner and Petitioner filed Motions to Exclude certain
evidence. Paper 34 (“PO Mot. to Exclude”); Paper 37 (“Pet. Mot. to
Exclude”).
Oral argument was requested by both parties, and was held on
February 26, 2015. A transcript of the oral argument is included in the
record. Paper 51 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
addresses issues and arguments raised during trial.
For the reasons discussed below, we determine that Petitioner has
proved, by a preponderance of the evidence, that claim 17 of the ’192 patent
is unpatentable as anticipated by Tachikawa, but has not proved that claim
26 would have been obvious over Tachikawa and Todd.
Patent Owner’s Motion to Exclude Evidence is denied-in-part and
dismissed-in-part. Petitioner’s Motion to Exclude Evidence is denied-in-part
and dismissed-in-part.
B. Related Matters
Patent Owner, together with Hunter Douglas, Inc.,4 filed suit against
Petitioner, alleging infringement of the ’192 patent in Hunter Douglas, Inc.
v. Nien Made Enterprise Co., 1:13-cv-01412-MSK-MJW (D. Col. May 31,
2013). Pet. 2; Paper 7.

relevance or identify specific portions of the declaration that supported its
challenge. Pet. 11.
4 Patent Owner identifies Hunter Douglas, Inc. as the exclusive licensee of
the ’192 patent. Paper 7, 1.
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C. The ’192 Patent
The ’192 patent, titled “Flat Spring Drive System and Window
Cover,” relates 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. The word
“cover,” as used in the ’192 patent, “refers to expandable or extendible
structures . . . includ[ing] slat structures such as so-called venetian or slat
blinds.” Id. at 1:21–23. For convenience, the invention is described below
in connection with its application to venetian blinds. A venetian blind
window cover system is depicted in Figure 1, below.

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
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that when ladders 17 are fully extended (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 6:17–22. In
other words, the weight supported by lift cords 16 is at a maximum when
blind 12 is opened (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 background section of the ’192 patent describes the known use of
conventional flat spring drives to assist in the opening and closing operations
of window covers, such as venetian blinds. Id. at 2:7–25. A conventional
flat spring drive (e.g., spring drive 26 illustrated in Fig. 13, below)
comprises a pair of spools 27, 28, having flat metal spring 29 wound
thereon. Id. at 7:21–23. In conventional flat spring drive 26, flat metal
spring 29 provides nearly constant torque regardless of its wound position on
spools 27, 28. Id. at 7:23–25. A drawback of conventional flat spring drive
26 is that the torque force may overcome the decreasing weight supported by
lift cords 16 as blind 12 is lowered, resulting in instability and an
uncontrolled raising operation when blind 12 is partially or fully extended
(closed). Id. at 2:16–25.
The ’192 patent describes the use of varied torque flat spring drives
that are not as susceptible to the above-described drawbacks in the operating
characteristics of conventional flat spring drives. See generally id. at 7:26–
9:20. In varied torque flat spring drive 31, 41 (see id. at Figs. 7, 8), as spring
34, 44 “unwinds or winds as the blind is lowered or raised, the spring torque
or force decreases or increases in direct proportion to, and remains closely
matched to, the supported weight or compressive force of the blind.” Id. at
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9:8–14. In varied torque flat spring drive 31, the torque or force of spring 34
is directly proportional to the degree of cove, or transverse curvature. Id. at
7:30–32. In varied torque flat spring drive 41, spring 44 is perforated, and
the torque or force is directly proportional to the amount of spring material
at a given point or region. Id. at 8:46–51.
The ’192 patent also 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.

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
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idler gears 71 and 73. Id. at 9:34–37. As a result of this arrangement,
pulleys 19 and lift cords 16 rotate at one rate, the same rate as gear 77 and
shaft 50, and spring 29, 34, 44 rotates at another rate, the same rate as right
side output drum 33, idler gear 71, and bevel gears 60. Id. at 9:53–58.
Typically, the gear ratio 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
diminishes the force exerted by the spring at the lowermost, closed condition
when the supported weight is at 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.
Both transmission 70 and bevel gear set 60 have inherent friction, and
may individually, and collectively, act as a brake to retain the blind at any
selected position between, and including, fully open and fully closed. Id. at
11:31–34, 60–62.
To provide increased torque, more than one spring drive can be
utilized. Id. at 12:14–17. Figure 39, reproduced below, illustrates a window
cover system that includes plural spring drive units. Id. at 16:63–64.
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Figure 39, above, illustrates a window cover system for use with heavy or
wide window covers. Ex. 1001, 16:52–54. Plural (two or more) spring
drive units 26, 31, 41 are connected to each other connection to power
transfer bar unit 125 via bevel gear sets 60. Id. at 16:66–17:2.
D. The Challenged Claims
Claims 17 and 26, both independent claims, are reproduced below.
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.
Ex. 1001, 24:47–67.
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26. A window cover system comprising: an extendible
window cover; a housing; at least one lift cord attached to the
cover and wrapped around a pulley mounted to the housing for
extending and retracting the extendible cover; a plurality of
spring drives, connected to the pulley for assisting the
extending and retracting of the cover; the individual ones of the
spring drives comprising a first, storage spool, a second, output
spool operatively connected to the pulley, and a flat spring
wound on and between the first and second spools; and a first
shaft on which the output spool is mounted and a second shaft
on which the pulley is mounted, the two shafts being oriented
transverse to one another; and a pair of meshed bevel gears
mounted one on each shaft and connecting the shafts for
rotation together.
Id. at 27:59–28:5.
E. Grounds of Unpatentability Instituted for Trial
An inter partes review was instituted based on the following grounds
of unpatentability:
Claim 17 under 35 U.S.C. § 102(b) as anticipated by Tachikawa; and
Claim 26 under 35 U.S.C. § 103(a) as unpatentable over Tachikawa
and Todd.
II. ANALYSIS
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be
given its broadest reasonable construction in light of the specification of the
patent in which it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 778 F.3d 1271, 1280 (Fed. Cir. 2015) (“Congress
implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA,” and “the standard was properly adopted by PTO
regulation.”). Under the broadest reasonable construction standard, claim
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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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
“inherent inertia”
Claim 17 recites “a 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.”
Ex. 1001, 24:55–67.
Petitioner notes that the term “inherent inertia” appears only in the
claims of the ’192 patent. Relying on a dictionary definition, Petitioner
contends that the broadest reasonable construction of the term is the ordinary
meaning of “inertia” (Pet. 15), “which is ‘a property of matter whereby it
remains at rest or continues in uniform motion unless acted upon by some
outside force.’”5 Id.
Patent Owner contends that Petitioner’s construction “ignores the
predicate word ‘inherent’” (PO Resp. 17), that “[t]here are numerous
references to ‘inertia’ disclosed in the ’192 specification” (id. at 18), and that
“one of ordinary skill in the art would understand the term ‘inherent inertia,’
when read in light of the specification, without the need for formal
construction” (id.). Patent Owner argues that “Petitioner makes no attempt

5 See inertia, THE NEW MERRIAM-WEBSTER DICTIONARY 380 (1989)
(Ex. 1009).
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to correlate its generic extrinsic evidence—a dictionary definition of just
‘inertia’—with any part or portion of the claims and specification of the ’192
Patent . . . [and] adds no clarity to the understanding of one of ordinary skill
in the art and should be disregarded by the Board.” Id. Nevertheless, Patent
Owner does not propose an alternative construction of “inertia,” or “inherent
inertia,” except to argue that “the claimed ‘inherent inertia’ is a constituent
element of the window covering system arranged so as to function with a
specific capability” (PO Resp. 28). Patent Owner’s witness, Mr. Corey,
testifies that he “disagree[s] with Petitioner’s construction of the claim term
‘inherent inertia’” (Ex. 2006 ¶ 72), but likewise offers no alternative
construction or further basis for his disagreement.
Turing to the specification of the ’192 patent, we see that the word
“inertia” appears in the following passages:
In addition to controlling the applied force of the spring, the
transmissions alter the length of the cover and provide inertia
and friction for maintaining the blind at selected positions
between and including open and closed positions.
Ex. 1001, 3: 47–51 (emphasis added).
[A] spring drive unit . . . includes a recoil roll or wheel or
simply recoiler . . . for facilitating recoil of the spring when
needed, preventing “explosion” of the spring, and providing
braking action for supplementing the inertia of the unit to
maintain the spring and associated window cover in the desired
position.
Id. at 12:54–61 (emphasis added).
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The recoiler 154 . . . facilitat[es] recoil of the spring when
needed . . . and provid[es] braking action for supplementing the
inertia of the spring drive unit to maintain the spring and
associated window cover in desired positions.
Id. at 16:32–37 (emphasis added).
The coil spring recoiler 161 opposes the unwinding of the
spring and facilitates recoiling of the spring when needed . . .
and provides braking action for supplementing the torque and
inertia of the spring drive unit to maintain the spring and
associated window cover in desired positions.
Id. at 16:43–49 (emphasis added).
The recoilers 154-154 facilitate recoiling of the associated
spring when needed . . . and provide braking action for
supplementing the inertia of the spring drive units to maintain
the springs and associated window cover in desired positions.
Id. at 17:43–49 (emphasis added).
In each instance, the specification of the ’192 patent uses the term
“inertia” in the context of a window cover system that maintains the window
cover at a desired position. We determine that the construction of “inertia”
offered by Petitioner is consistent with the use of the word in the
specification, and would be understood by one of ordinary skill in the art to
mean: “a property of matter whereby it remains at rest or continues in
uniform motion unless acted upon by some outside force.” Pet. 15.
Moreover, as inertia is itself an attribute, or property, of matter, we
determine that the word “inherent” does not contribute any additional
meaning to the term, or change the way it would be understood by one of
ordinary skill in the art.
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B. Motions to Exclude Evidence
Both Patent Owner and Petitioner filed Motions to Exclude certain
evidence. Paper 34 (“PO Mot. to Exclude”); Paper 37 (Pet. Mot. to
Exclude).
1. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude Exhibit 1002, “which consists of a
Japanese patent application by inventor Tachikawa and a purported English
translation of the same.” PO Mot. to Exclude 1. Patent Owner does not
dispute the accuracy of the translation, but contends that Exhibit 1002 is not
admissible under 37 C.F.R. § 42.61 because Petitioner failed to file “an
affidavit attesting to the accuracy of the translation . . . with the document”
(PO Mot. to Exclude 2), in violation of 37 C.F.R. § 42.63(b).
It is undisputed that Petitioner did not file the required affidavit with
Exhibit 1002. However, Petitioner, in its Opposition to Patent Owner’s
Motion to Exclude, contends that “Exhibit 1002 is a translation document
that Patent Owner itself filed . . . in an application related to the ’192 patent”
(Paper 42, 1), and, therefore, Exhibit 1002 “is admissible because
‘[c]ertification is not necessary as a condition to admissibility when the
evidence to be submitted is a record of the Office to which all parties have
access’ under 37 C.F.R. § 42.61(b)” (id.).
There is no dispute that Exhibit 1002 is a true copy of the document
Patent Owner submitted during prosecution of a related application. Tr. 7:4–
17, 24:6–11. Nevertheless, we agree with Patent Owner that § 42.61(b)
“does not obviate the requirement of an affidavit attesting to the accuracy of
a foreign document under § 42.63(b).” Paper 45 (Reply to Petitioner’s
Opposition to the Motion to Exclude Evidence), 2.
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Considering the totality of the circumstances, we concluded, as
discussed during the oral hearing, that it would be appropriate, in this
instance, to waive our rules to the extent we would allow Petitioner, within
five days from the date of the oral argument, “to submit an affidavit attesting
to the accuracy of the translation that was previously submitted” (Tr. 8:2–3),
with the proviso that the affidavit “meet the requirement[s] of our rules,”
specifically “[42 C.F.R. §§] 42.63, 42.2, and also 1.68” (id. at 8:2–5).
Petitioner complied in a timely manner (Paper 50; Ex. 1021).
Accordingly, Patent Owner’s Motion to Exclude is denied with respect to
Exhibit 1002, and we shall admit and rely on the exhibit.
Patent Owner further seeks to exclude Exhibits 1004, 1005, 1006, and
1007 because “[t]he Board determined that trial should not be instituted on
all grounds . . . that involved those exhibits,” thus, the exhibits “have no
bearing on any issue to be decided by the Board . . . [and] should be
excluded pursuant to FRE 402 and 403.” PO Mot. to Exclude 6.
Because we did not rely on any of those exhibits in rendering our
decision, we dismiss Patent Owner’s Motion with respect to Exhibits 1004,
1005, 1006, and 1007 as moot. We decline to strike those exhibits from the
record, as Patent Owner has not established that such action is necessary.
2. Petitioner’s Motion to Exclude
Petitioner seeks to exclude Exhibit 2006 (Corey Decl.) as inadmissible
for various reasons. Pet. Mot. to Exclude 2. Alternatively, Petitioner urges
that we “should give no or diminished weight to Exhibit 2006.” Id.
We considered Mr. Corey’s Declaration, but only to the extent of his
testimony that he “disagree[s] with Petitioner’s construction of the claim
term ‘inherent inertia’” (Ex. 2006 ¶ 72). We accorded this testimony no
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weight, as Mr. Corey did not elaborate on it—nor did he offer an alternative
construction of the term. Accordingly, Petitioner’s Motion to Exclude
Exhibit 2006 is denied.
Petitioner also seeks to exclude Exhibits 2007, 2008, 2009, and 2010.
Because we did not rely on any of these exhibits in rendering our decision,
Petitioner’s Motion to Exclude Exhibits 2007, 2007, 2009, and 2010 is
dismissed as moot.
C. Principles of Law
To prevail in its challenge to the patentability of the claims, Petitioner
must prove unpatentability by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d).
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). While the elements must be arranged or combined in the same way
as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
A single prior art reference that discloses, either
expressly or inherently, each limitation of a claim invalidates
that claim by anticipation. Thus, a prior art reference without
express reference to a claim limitation may nonetheless
anticipate by inherency. “Under the principles of inherency, if
the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.”
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375–76 (Fed. Cir.
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2005) (citations omitted). “In general, a limitation or the entire invention is
inherent and in the public domain if it is the ‘natural result flowing from’ the
explicit disclosure of the prior art.” Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1379 (Fed. Cir. 2003).
A claim is unpatentable under 35 U.S.C. § 103(a) if 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; (3)
the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
An invention “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. Moreover, a ground of
obviousness must include “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). “[T]his analysis should be made
explicit” and it “can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.
We analyze the instituted grounds of unpatentability in accordance
with those principles.
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D. Grounds of Unpatentability
1. Claim 17—Anticipation by Tachikawa (Ex. 1002)
Petitioner contends Tachikawa “discloses a window cover system
with a Venetian blinds roll-up device powered by a spring motor” (Pet. 25),
which includes “every element of claim 17, and therefore anticipates this
claim” (id.). Patent Owner argues Tachikawa fails to disclose a spring drive
“having inherent inertia maintaining the position of the cover.” PO Resp.
27.
a. Overview of Tachikawa (Ex. 1002)
Tachikawa describes a device for raising and lowering venetian
blinds. Ex. 1002, 209. Figure 2 of Tachikawa, reproduced below, depicts a
vertical front, cross-sectional view of the device. Id. at 210.

Figure 2 of Tachikawa, above, shows a device for raising and lowering
venetian blinds comprising upper case 1 having rotatable operating shaft 2
mounted thereon. Id. at 209. Drums 3 are attached to multiple locations on
operating shaft 2. Id. Tapes 4 are wound onto drums 3, passed through
throughholes in blind slats 5, and coupled to lower case 6. Id. Bevel gear 7
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is attached to one end of operating shaft 2 and engages bevel gear 8. Id.
Chain pulley 10 is fixed to drive shaft 9 of bevel gear 8. Id. Endless chain
11 is hung on chain pulley 10 and is suspended downward. Id.
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. Id. at 210. 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. In the closed, or lower-most position of the blinds, the load is
only that of lower case 6. Id. As the blinds are raised, the torque required to
turn operating shaft 2 increases as the load of slats 5 is applied. Id.
Conversely, when the blinds are lowered, the load becomes smaller,
decreasing the force necessary to turn operating shaft 2. Id. at 209.
To eliminate the problem of torque variance during operation of the
blinds, Tachikawa employs spring 17. Id. at 210. Spring 17 is wound
between spool 16 and spool 14. Id. Spool 16 is rotatably, axially fitted onto
center shaft 15 on support plate 12, mounted inside upper case 1. Id.
Spool 14 is fixed to shaft tube 13 (through which operating shaft 2 passes),
also mounted on support plate 12. Id. Alternatively, spool 14 is fixed to
drive shaft 9. Id.
As Tachikawa explains,
in 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 based on reduction
of the curvature radius R of the starting end wound onto spool
14.
Id.
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[A]s the blinds are rolled down, the load P decreases gradually,
changing gradually to load p when rolled down to the
lowermost end, in response to which 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.
As Tachikawa further explains,
When . . . spring 17 of this sort is installed, it suffices to
apply a small constant force in order to manipulate the endless
chain 11 via bevel gears 7, 8 in order to turn the operating
shaft 2, and if the manipulation of the endless chain 11 is
stopped mid-way during roll-up or roll-down of the blinds, the
torque of the blinds descending under their own weight will be
balanced out by an identical spring torque in the opposite
direction due to the . . . spring, so the blinds will stop at the
mid-way position.
Id.
b. 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
(Ex. 1002, Title, Figs. 3, 4)
25
an extendable window cover slats 5 (Ex. 1002, Fig. 4) 25
a housing upper case 1 (Ex. 1002, Figs. 3,
4)
25
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Challenged Claim 17 Disclosure in Tachikawa Pet.
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
(Ex. 1002, 209, Fig. 4)
26
a spring drive system connected
to the lift cords for assisting the
raising and lowering of the
cover
shaft 2, spring 17, bevel gears 7,
8 (Ex. 1002, Figs. 3, 4)
26–27
the spring drive system
comprising: a shaft mounted to
the housing
shaft 2 is mounted on upper case
1 (Ex. 1002, 209)
27
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 (Ex. 1002, 210, Figs. 7, 8)
27–28
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
(Ex. 1002, 210, Figs. 3, 4)
28–29
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
torque in the opposite direction
and identical to the torque on
operating shaft 2 due to the load
of the blinds acting upon the
operating shaft “which has the
effect that the force for
manipulating the operating shaft
in order to perform roll-up and
roll-down of the blinds can be a
small constant force regardless of
the position of the blinds” (Ex.
1002, 209)
29–30
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Challenged Claim 17 Disclosure in Tachikawa Pet.
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
30–31
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
31

Patent Owner argues that Tachikawa fails to disclose a spring drive
applying “varying torque or force to the cover and having inherent inertia
maintaining the position of the cover.” PO Resp. 27. As discussed above,
we construed the term “inherent inertia” as “a property of matter whereby it
remains at rest or continues in uniform motion unless acted upon by some
outside force” (see supra section II.A.).
To the extent Patent Owner argues that “the claimed ‘inherent inertia’
is a constituent element of the window covering system arranged so as to
function with a specific capability” (PO Resp. 28), we agree. This argument
does not, however, persuade us that the claimed window cover system is
patentable over Tachikawa. Nor are we persuaded by Patent Owner’s
argument that Tachikawa “expressly relies on ‘manipulation of the endless
chain 11’ (i.e., an external operating cord) in order to maintain the position
of the cover ‘during roll-up or roll-down of the blinds’” (id.), in contrast to
claim 17, “wherein the inherent inertia of the spring drive itself must
‘maintain[] the position of the cover’ without the benefit of any external
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operating cord separately manipulated by the operator” (id. at 28–29
(brackets original)).
Petitioner contends that “inherent inertia is part of the overall design
of Tachikawa’s spring drive for maintaining the position of the cover at
different roll-up or roll-down positions.” Pet. Reply 3. In other words,
Tachikawa’s spring drive, operating as a constituent element of the window
covering system, functions to maintain the window cover at a desired
position unless the system is acted on by some outside force. This finding is
supported by substantial evidence. Specifically, as noted in the Petition,
Tachikawa’s spring 17 constantly generates a torque in the opposite
direction and identical to the torque on an operating shaft due to the load of
the blinds acting upon the operating shaft, “which has the effect that the
force for manipulating the operating shaft in order to perform roll-up and
roll-down of the blinds can be a small constant force regardless of the
position of the blinds” (Pet. 29; Ex. 1002, 209). Tachikawa teaches that this
also has the effect that “the blinds do not fall spontaneously due to the
weight of the blinds if roll-up is stopped mid-way, but are rather stopped at
that position by the spring torque.” Ex. 1002, 209. We credit the testimony
of Petitioner’s witness, Mr. Carlson, that “there are three factors that cause
the blinds to ‘stop at the midway position’ (i.e. maintain the position of the
cover): 1) the spring torque described above, 2) the inherent inertia
necessarily present in all mechanical systems, and 3) the friction that is also
inherently present in mechanical systems.” Ex. 1017 ¶ 35.
With respect to “endless chain 11,” we note that claim 17 does not
preclude an “external operating cord separately manipulat[able] by the
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operator.” PO Resp. 29. Moreover, Mr. Carlson notes that Tachikawa
discloses
if the manipulation of the endless chain 11 is stopped mid-way
during roll-up or roll-down of the blinds, the torque of the
blinds descending under their own weight will be balanced out
by an identical spring torque in the opposite direction due to the
. . . spring, so the blinds will stop at the mid-way position.
Ex. 1017 ¶ 34 (quoting Ex. 1002, 210). We credit Mr. Carlson’s testimony
that it is not “the manipulation of the endless chain in Tachikawa that
maintains the position of the cover” (Ex. 1002 ¶ 34), rather, manipulation of
endless chain 11 “actuates Tachikawa’s blinds up or down” (id. ¶ 35). As
Tachikawa explains, “[w]hen . . . spring 17 . . . is installed, it suffices to
apply a small constant force in order to manipulate the endless chain 11 via
bevel gears 7, 8 in order to turn the operating shaft 2” (Ex. 1002, 210). In
other words, endless chain 11 merely is used to exert an outside force to
overcome the inherent inertia of Tachikawa’s venetian blind roll-up device.
We are persuaded, by a preponderance of the evidence, that
Tachikawa’s spring drive, operating as a constituent element of its window
covering system, functions to apply varying torque or force to the window
cover, maintaining the window cover at a desired position unless the system
is acted on by some outside force. Therefore, we are persuaded by a
preponderance of the evidence, that Tachikawa satisfies the disputed claim
limitation of a spring drive “having inherent inertia maintaining the position
of the cover.” PO Resp. 27. Moreover, having reviewed Petitioner’s
identification of the remaining limitations of claim 17 (Pet. 25–31), we are
persuaded, by a preponderance of the evidence, that Tachikawa discloses
those limitations as well.
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Having considered Petitioner’s and Patent Owner’s positions, as well
as the supporting evidence, we conclude that Petitioner has proved, by a
preponderance of the evidence, that claim 17 is unpatentable under 35
U.S.C. § 102 as anticipated by Tachikawa.
2. Claim 26—Obviousness over Tachikawa and Todd
Petitioner contends that
Tachikawa discloses a window cover system with
[venetian] blinds roll-up device using a spring drive. Window
cover systems using two or more spring [drives] were well
known before the earliest filing date of the 192 Patent. For
example, Todd demonstrates that it was well known to a person
of ordinary skill in the art at the time of the invention to use
multiple spring drives for assisting the extending and retracting
of a window cover. Thus, it would have been obvious to
modify Tachikawa with a plurality of spring drives depending
on the weight and size of a window cover as demonstrated by
Todd.
Pet. 31–32.
Having considered the information provided in the Petition, we
conclude that Petitioner has failed to prove by a preponderance of the
evidence that the window cover system of claim 26 would have been
obvious over Tachikawa and Todd. Petitioner points to elements of both
references, maps them to elements of claim 26, and argues that it would have
been obvious to modify Tachikawa’s window cover system with a plurality
of spring drives “depending on the weight and size of a window cover.”
Pet. 31–36. Even if we consider this latter argument to be an adequate
reason for combining the elements of the references, Petitioner does not
explain how one of ordinary skill in the art would go about combining the
elements, or what modifications one of ordinary skill in the art necessarily
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would have made in order to combine the elements. Nor does Petitioner—in
the Petition—point to evidence establishing that modifying Tachikawa to
have a plurality of spring drives would have been routine for one of ordinary
skill in the art. What is missing from the Petition is explicit, “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d at 988; KSR, 550 U.S. at 418.
To the extent Petitioner attempts to bolster its initial obviousness
challenge with the Declarations of Mr. Carlson and Mr. Foley (Exs. 1017,
1018)—submitted with its Reply—we are not persuaded, as there is no
apparent reason this information could not have been developed in the
Petition. See 37 C.F.R. § 42.22(a)(2).
We conclude that Petitioner has failed to prove that claim 26 is
unpatentable under 35 U.S.C. § 103 over the combined teachings of
Tachikawa and Todd.
III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that
claim 17 of the ’192 patent is unpatentable under 35 U.S.C. § 102(b) as
anticipated by Tachikawa. Petitioner has not, however, demonstrated, by a
preponderance of the evidence, that claim 26 is unpatentable under
35 U.S.C. § 103 as obvious over Tachikawa and Todd.

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IV. ORDER
Accordingly, it is
ORDERED that claim 17 of U.S. Patent No. 6,283,192 B1 is
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied-in-part and dismissed-in-part;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied-
in-part and dismissed-in-part; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Bing Ai
Kourtney Mueller Merrill
Douglas L. Sawyer
PERKINS COIE LLP
norman-hd-ipr@perkinscoie.com
KMerrill@perkinscoie.com
DSawyer@perkinscoie.com

For PATENT OWNER:

Kristopher L. Reed
Darin Gibby
KILPATRICK TOWNSEND & STOCKTON LLP
kreed@kilpatricktownsend.com
dgibby@kilpatricktownsend.com