Norman International, Inc.v.Hunter Douglas Inc.

Patent Trial and Appeal Board

Feb 10, 2015

12856969 (P.T.A.B. Feb. 10, 2015)

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.,
Patent Owner.
_______________

Case IPR2014-01176
Patent 8,230,896 B2
_______________

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

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I. INTRODUCTION
On July 16, 2014, Norman International, Inc. (“Petitioner”) filed a
Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–5
(the “challenged claims”) of U.S. Patent No. 8,230,896 B2 (Ex. 1001, “the
’896 patent”). 35 U.S.C. § 311–319. Hunter Douglas Inc. (“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.” Upon consideration of Petitioner’s
Petition and Patent Owner’s Preliminary Response, we determine Petitioner
has not established a reasonable likelihood that it would prevail in showing
the unpatentability of at least one of the challenged claims. Accordingly, the
Petition is denied under 35 U.S.C. § 314(a) 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. 6,968,884 B2,
6,283,192 B1, and 6,648,050 B1. These Petitions have been assigned the
following case numbers: IPR 2014-01175, IPR 2014-01174 and IPR 2014-
01173, respectively. Of the patents at issue in these proceedings, only U.S.
Patent No. 6,968,884 B1 (at issue in IPR 2014-01175) is in the same patent
family as the ’896 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 U.S. Patent No.
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6,283,192 B1 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 Patent
Owner filed suit against Petitioner alleging infringement of the ’896 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.
Petitioner was served with a complaint in the district court action on July 16,
2013. Id. at 3; Ex. 1009.
B. The ’896 patent (Ex. 1001)
The ’896 patent relates to a modular transport system for coverings
for architectural openings, such as venetian blinds, pleated shades, and other
horizontal or vertical blinds and shades. Ex. 1001, Title, 1:18–22.
Typically, a transport system for such horizontal coverings includes a top
head rail which both supports the covering and hides the mechanisms used
to raise and lower, and/or open and close the covering. Id. at 1:25–27. A
goal of the invention is to provide a system wherein these mechanisms are
housed in independent, self-contained modules. Id. at 3:21–23. “Each
module is easily and readily installed, mounted, replaced, removed, and
interconnected within the blind transport system with an absolute minimum
of time and expense.” Id. at 3:23–26. One embodiment of the invention is
shown in Figure 214, reproduced below.
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Figure 214, above, is a schematic view of a covering for an
architectural opening wherein the covering is supported by head rail 12 and
the transport system is mounted in movable intermediate rail 12A. Ex. 1001,
65:42, 46–49. The transport system includes power module 20, transmission
module 30, lift rod 26 and lift module 40. Id. at 65:46–48. The transport
system travels up and down with the covering during extension and
retraction thereof. Id. at 65:46–51.
C. Illustrative Claims
Of the challenged claims, claims 1 and 3 are independent. Claim 2
depends from claim 1. Claim 4 depends from claim 3, and claim 5 depends
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from claim 4. Claim 3, reproduced below, is illustrative of the claimed
subject matter:
3. A transport mechanism for a covering for an
architectural opening, comprising:
a first rail;
a second rail, which is movable relative to said first rail;
a window covering extending between, and functionally
secured to, said first and second rails, wherein movement of
said second rail relative to said first rail extends and retracts
said window covering; and
a lifting mechanism mounted on said second rail, said
lifting mechanism including a lift spool; a spring motor
functionally connected to the lift spool; and a lift cord which
wraps onto and off of said lift spool as said second rail moves;
and
a one-way brake mechanism mounted on said second rail
which provides greater force to prevent the second rail from
falling than to prevent the second rail from being raised.
Claim 1 is identical to claim 3, with the exception of the last paragraph,
which, in claim 1, reads:
wherein the lifting mechanism provides sufficient lifting
force and sufficient friction that the second rail may be raised
and lowered just by the user urging it up and down and
wherein, when the user releases the second rail at any elevation,
the second rail remains stationary, neither rising nor falling,
without the user activating or deactivating any additional
mechanism wherein the sufficient friction includes braking
friction provided by a one-way brake mechanism mounted on
said second rail, wherein said one-way brake mechanism does
not require activation or deactivation by the user.
D. The Evidence of Record
Petitioner’s patentability challenges are based on the following
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references:
References Patents/Printed Publications Exhibit
Tachikawa Japanese Patent Application S54-38648
(English Translation)
1002
Strahm US 3,327,765 1003
Skidmore GB 1,174,127 1004
Schuetz US 1,870,532 1005
Cohn US 2,390,826 1006

Petitioner also relies on the declaration of Lawrence E. Carlson,
executed July 16, 2014 (Ex. 1007, “Carlson Declaration”), and the
declaration of Patrick E. Foley, executed July 16, 2014 (Ex. 1008, “Foley
Declaration”) in support of its patentability challenges. Pet. 4.
E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability claims 1–5 of the ’896 patent
based on the following grounds:
References Basis Claims challenged
Tachikawa and Strahm §103 1–5
Tachikawa, Skidmore and
Schuetz
§103 1–5
Cohn and Strahm §103 1–5
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
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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.
IV. ANALYSIS
A. Obviousness of Claims 1-5 Over Tachikawa in View of Strahm
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
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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
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.
2. Strahm (Ex. 1003)
Strahm describes “a raising and lowering mechanism for a blind” that
includes a brake for controlling the rate of descent of the blind, the brake
being “automatically released during raising of the blind so that raising can
be performed with [a] minimum of effort.” Ex. 1003, 1:29–34. Figure 1 of
Strahm, reproduced below, presents a front elevational view of a blind. Id.
at 1:60–61.
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Strahm Figure 1, above, shows a blind comprising a number of
parallel slats 1 suspended from operating shaft 4 by flexible ladders 2. Id. at
2:2–9. Operating shaft 4 can be driven by a crank or a motor. Id. at 4:10–
11. Pull-tapes 6, attached to bottom cross-member 5 of the blind, are wound
around drums disposed in a raising and lowering mechanism received in box
7 secured to plate 8 disposed at the top of a window opening. Id. at 2:13–17.
3. Analysis
Petitioner contends Tachikawa’s “blinds roll-up device . . .
corresponds to the lifting mechanism” of claims 1 and 3, and is “mounted in
upper case 1, which is a stationary rail.” Pet. 24, 30. Petitioner likewise
contends “Strahm []discloses a raising and lowering mechanism
corresponding to the lifting mechanism of [claims 1 and 3] mounted in the
stationary plate 8 of the blind.” Id. Petitioner thus maintains both
Tachikawa and Strahm disclose “a lifting mechanism mounted on said
second rail” as recited in claims 1 and 3. Id.
As acknowledged by Petitioner, Tachikawa’s upper case 1 and
Strahm’s stationary plate 8 are stationary. Id. Claims 1 and 3, however,
require that the lifting mechanism is mounted on a movable rail. Moreover,
Petitioner’s assertions that each of Tachikawa’s and Strahm’s lifting
mechanisms are mounted on the second rail (upper case 1 and stationary
plate 8, respectively) is inconsistent with its identification of Tachikawa’s
upper case 1 and Strahm’s stationary plate 8 as corresponding to “a first
rail,” and Tachikawa’s lower case 6 and Strahm’s bottom cross-member 5 as
corresponding to “a second rail.” See id. at 23–24, 30.
Because Petitioner has failed to explain how Tachikawa and Strahm
disclose or suggest “a lifting mechanism mounted on [a] second rail” “which
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is movable relative to [a] first rail” as recited in independent claims 1 and 3,
Petitioner has not shown a reasonable likelihood it would prevail in showing
claims 1–5 would have been obvious over Tachikawa and Strahm.
B. Obviousness of Claims 1–5 Over Tachikawa in View of Skidmore
and Schuetz
Petitioner’s challenge based on Tachikawa in view Skidmore and
Schuetz, relies on Tachikawa as disclosing a lifting mechanism (blinds roll-
up device) mounted in a second rail (upper case 1). Pet. 37–38, 43–44.
Skidmore and Schuetz are relied upon for a disclosure or suggestion of the
recited “one-way brake mechanism,” claims 1 and 3. See id. at 38–42,
44–45. As discussed in Section IV.A.3., above, Tachikawa’s upper case 1 is
stationary and, therefore, not “movable relative to [a] first rail” as recited in
independent claims 1 and 3.
Because Petitioner has failed to explain how Tachikawa in view of
Skidmore and Schuetz discloses or suggests “a lifting mechanism mounted
on [a] second rail” “which is movable relative to [a] first rail” as recited in
independent claims 1 and 3, Petitioner has not shown a reasonable likelihood
it would prevail in showing claims 1–5 would have been obvious over this
combination of references.
C. Obviousness of Claims 1–5 Over Cohn in View of Strahm
1. Cohn (Ex. 1006)
Cohn describes a cordless venetian blind A which may be secured to a
window casing by spaced mounting brackets 5. Ex. 1006, 1, right col., ll.
28–32. Cohn Figure 1 is a fragmentary front elevational view of the
venetian blind. Id. at 1, right col., ll. 1–2. An upper portion of Figure 1 is
reproduced below.
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As shown in Figure 1, above, Cohn’s venetian blind A includes drums
8 mounted on shaft 7. Id. at 1, right col., ll. 36–37. Flexible metal lift tapes
10 are wound on drums 8 (id. at ll. 39–40) and connected to bottom rail 13,
for raising and lowering slats 17 (id. at 2, left col., ll. 3–6). “[T]o lower the
blind, a person merely grasps [] bottom rail 18 and pulls it
downwardly[,] . . . effect[ing] an unreeling of [] lift tapes 10 from [] drums 8
and caus[ing] rotation of said drums and [] shaft 7, upon which they are
mounted.” Id. at 3, left col., ll. 43–48. “The blind may be stopped and
maintained at any desired height . . . by suitable means, such as centrifugal
pawl stops [43].” Id. at 3, right col., ll. 1–3. To raise the blind from a
lowered position, pawl stops 43 must be released (id. at ll. 20–21) to allow
spring motor 20 to raise the blind (id. at 3, left col., ll. 16–17). This is
accomplished by a quick downward pull followed by a sudden relaxing of
the pull “in the well known manner used in operating conventional window
shades.” Id. at 3, right col., ll. 22–24.

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2. Analysis
Petitioner contends the portion of Cohn’s blind described as
structurally containing the lifting mechanisms corresponds to a stationary
head rail and, thus, “a first rail” as recited in independent claims 1 and 3.
Pet. 51 (citing Ex. 1006, 2 [sic 1], right col., ll. 30–43), 56. Petitioner
contends Cohn’s bottom rail 18 moves relative to this stationary head rail
and, therefore, corresponds to “a second rail, which is movable relative to
said first rail.” Id. Petitioner relies on Strahm solely for a disclosure or
suggestion of a “one-way brake mechanism” (claims 1 and 3). Pet. 54–55,
57–58.
Petitioner contends Cohn’s lifting mechanisms, which are contained
in the stationary head rail, correspond to “a lifting mechanism mounted on
said second rail.” Id. at 51–52, 57. Petitioner has not explained how Cohn’s
lifting mechanisms mounted on the stationary head rail meet the claim
limitation of “a lifting mechanism mounted on [a] second rail” “which is
movable relative to [a] first rail” as recited in independent claims 1 and 3.
Moreover, Petitioner’s position is inconsistent with its identification of
Cohn’s stationary head rail as corresponding to the first rail. See id. at 51,
56. Accordingly, Petitioner has not shown a reasonable likelihood it would
prevail in showing claims 1–5 would have been obvious over Cohn and
Strahm.
V. CONCLUSION
For the above reasons, Petitioner has not demonstrated that there is a
reasonable likelihood it would prevail in showing the unpatentability of at
least one of the challenged claims.
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VI. ORDER
For the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.

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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