Norman International, Inc.v.Hunter Douglas Inc.

Patent Trial and Appeal Board

Jun 20, 2014

10184008 (P.T.A.B. Jun. 20, 2014)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: June 20, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
NORMAN INTERNATIONAL, INC.
Petitioner
v.
HUNTER DOUGLAS INC.
Patent Owner
_______________

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Patent 6,968,884 B2
_______________

Before TONI R. SCHEINER, LINDA M. GAUDETTE, and JACQUELINE
WRIGHT BONILLA, 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 December 20, 2013, Norman International, Inc. (“Petitioner”) filed a
Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 5-7 (the
“challenged claims”) of U.S. Patent No. 6,968,884 B2 (Ex. 1001, “the ’884
patent”). 35 U.S.C. § 311. Hunter Douglas Inc. (“Patent Owner”) timely filed a
Preliminary Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under
35 U.S.C. § 314(a).
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a):
THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
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. 8,230,896 B2, 6,283,192 B1, and 6,648,050
B1. These Petitions have been assigned the following case numbers: IPR2014-
00282, IPR2014-00283, and IPR2014-00286, respectively. Of the patents at issue
in the four proceedings, only U.S. Patent No. 8,230,896 B2 is in the same patent
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family as the ’884 patent. Petitioner indicates that Patent Owner filed suit against
Petitioner alleging infringement of claims 5-7 of the ’884 patent, Hunter Douglas
v. Nien Made Enterprise, 1:13-cv-01412-MSK-MJW (D. Colo. May 31, 2013).
Pet. 1-2.
B. The ’884 patent (Ex. 1001)
The ’884 patent relates to a modular transport system for opening and
closing coverings for architectural openings such as venetian blinds, pleated
shades, and other blinds and shades. Ex. 1001, Title, 1:14-16. Typically, a
transport system for such 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 1:21-23. A goal of the invention is to provide a system
wherein these mechanisms are housed in independent, self-contained modules that
are readily interconnected to satisfy the requirements of a multitude of different
window covering systems. Id. at 3:10-18. “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 3:22-25.
One embodiment of the invention described in the ’884 patent is depicted in
Figure 1, reproduced below.
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Figure 1, above, is a partially broken away and partially exploded view of an
embodiment of a blind transport system. Ex. 1001, 5:54-56. Blind 10 includes a
plurality of slats 14 suspended from head rail 12 by ladder tapes 22. Id. at 17:10-
13. Two lift cords 16 extend through holes 17 in slats 14 and are fastened to
bottom rail 14A. Id. at 17:13-15. Positioned inside head rail 12 are spring motor
power module 20, a transmission module 30, two lifting modules 40, and lift rod
26. Id. at 17:17-20, 23-24. Spring motor power module 20 includes coil spring
200, storage spool 206, and power spool 208. Id. at 17:39-41. Power spool 208
drives rotation of lift rod 26 via transmission 30, causing lift cords 16 to either
wind onto or unwind from lifting modules 40, thereby raising or lowering blind 10.
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Id. at 18:42-47, 26:6-16.
The transport system has a certain amount of system inertia caused by the
mass of the covering as well as the frictional resistance of the components. Id. at
58:10-13. “[W]hen the blind is in the fully raised position, the available force to
keep the blind in that raised position must be equal to or greater than weight
(gravitational force) pulling down on the blind minus the system inertia which acts
so as to keep the blind in the raised position.” Id. at 58:16-21. “[T]he force
required to keep the blind in the fully lowered position must be less than the weight
of the blind . . . plus the system inertia which acts to keep the blind in the lowered
position.” Id. at 58:24-28.
The ’884 patent also describes the use of a one-way brake to provide
artificial system inertia. Id. at 58:43-45. An embodiment of a one-way brake is
illustrated in Figure 183B below.

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Figure 183B, above, is an exploded view of a one-way adjustable brake
module 900A. Ex. 1001, 15:29-30. Input shaft 914 of brake module 900A mates
with a shaft of an adjacent module, e.g., transmission module 30. Id. at 58:64-67.
Input shaft 914 drives cogged drive 916, which drives output shaft 922. Id. at
60:9-11. Output shaft 922 of brake module 900A connects to lift rod 26. Id. at
58:67–59:1. Toothed drive 932 is mounted over cogged drive 916 and drives
brake drum 926. Id. at 60:12-13. The rear face of toothed drive 932 defines a
plurality of inclined teeth 940, which mate with corresponding inclined teeth 940A
in the front face of brake drum 926. Id. at 59:22-25. When the blind is lowered,
input shaft 914 rotates in one direction causing teeth 940 of toothed drive 932 to
push against teeth 940A of brake drum 926. Id. at 59:25-28. When the blind is
raised, input shaft 914 rotates in the opposite direction and toothed drive 932 does
not push against brake drum 926, allowing brake drum 926 to spin freely. Id. at
59:28-32. In other words, brake module 900A provides a force that operates
against the lowering of the blind, but provides no braking force when the blind is
being raised. Id. at 58:55-58.
Brake shoe 928 is urged against brake drum 926 by the force of spring 942.
Id. at 60:15-16. Screw 944 controls the tension of spring 942, and can be tightened
or loosened to adjust the amount of friction between brake shoe 928 and brake
drum 926. Id. at 60:16-18. The ’884 patent also describes an alternative
embodiment wherein screw 944 automatically increases friction between brake
shoe 928 and brake drum 926 the higher blind 10 is raised, and decreases friction
between brake shoe 928 and brake drum 926 the more blind 10 is lowered. See id.
at 59:51-62.

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C. Illustrative Claims
Of the challenged claims, claims 5 and 7 are independent. Claim 6 depends
from claim 5. Claim 5, reproduced below, is illustrative of the claimed subject
matter:
5. A system for covering an architectural opening, comprising:
a covering movable between an extended position for covering
the opening and a retracted position for uncovering the opening;
a spring motor including a coil spring and a power spool,
wherein said coil spring wraps onto and off of said power spool;
a rotating output operatively connected to the power spool of
the spring motor;
a lift cord operatively connected to the rotating output and to
the covering;
said rotating output being rotatable in clockwise and
counterclockwise directions to move the covering between its
extended and retracted positions; and
a one-way friction brake operatively connected to said rotating
output, said one-way friction brake providing a braking force that
stops the rotation of the rotating output in one of the directions while
permitting the rotating output to rotate freely in the other of said
directions.
D. The Evidence of Record
Petitioner relies upon the following references, as well as the declaration of
Lawrence E. Carlson, executed December 19 2013 (Ex. 1007, “Carlson
Declaration”):

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References Patents/Printed Publications Exhibit
Todd US 6,056,036 1002
Strahm US 3,327,765 1003
Kuhar US 5,531,257 1004
Lohr US 3,216,528 1005
McClintock US 5,641,229 1006

E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability claims 5-7 of the ’884 patent based on
the following grounds:
References Basis Claims challenged
Todd §103 5-7
Todd and Strahm §103 5-7
Todd, Strahm, and
McClintock
§103 6
Kuhar and Lohr §103 5-7
Kuhar, Lohr, and
McClintock
§103 6

III. CLAIM CONSTRUCTION

A. Legal Standard
Consistent with the statute and the legislative history of the Leahy-Smith
America Invents Act (“AIA”), Public Law No. 112-29, 125 Stat. 284 (Sept. 16,
2011), the Board will interpret claims of an unexpired patent using the broadest
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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). Under the broadest reasonable construction standard, claims
are to be given their broadest reasonable interpretation consistent with the
specification, and the claim language should be read in light of the specification as
it would be interpreted by a person having ordinary skill in the art. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We determine no express construction of the claim language is needed for
this Decision.
IV. ANALYSIS
The Board may exclude or give no weight to evidence relied upon to support
the challenge where Petitioner has failed to state its relevance or to identify
specific portions of the evidence that support the challenge. 37 C.F.R.
§ 42.104(b)(5). We give no weight to the Carlson Declaration (Ex. 1007) because
Petitioner fails to state its relevance or identify specific portions of the Declaration
that support the challenge. See Pet. 3 (providing the only citation to Ex. 1007,
other than Exhibit List).
A. Obviousness of Claims 5-7 over Todd
1. Todd (Exhibit 1002)
Todd describes a roller shade for a window that includes shade 14 extending
between and secured to upper rail assembly 16 and lower rail assembly 12. Ex.
1002, 3:64-65, 4:3-4. Upper rail assembly 16 includes decorative top rail 18,
mounted within window frame 22, and drive mechanism 20 housed in top rail 18.
Id. at 3:65-67–4:2, 4:8-10, Figure 1. Drive mechanism 20 is illustrated in Figure 3
below. Id. at 3:52.
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As shown in Figure 3, above, drive mechanism 20 includes spool
assemblies 24, spring assembly 26, and brake/clutch mechanism 28. Ex. 1002,
4:10-13. “Spool assemblies 24 are connected and driven by spring assemblies 26
via shaft 30, which is also interconnected with brake/clutch mechanism 28.” Id. at
4:14-16. Each spool assembly 24 includes tape 32 having one end attached to tape
spool 34 and the other end attached to lower rail assembly 12. Id. at 4:36-39.
“Tape spool 34 is driven by shaft 30 and serves as a reel for tape 32 to wind upon.”
Id. at 4:36-37.
Spring assembly 26 includes housings 54, spring take-up spool 56 and
constant torque spring 58. Id. at 5:9-11. A cross-sectional view of an embodiment
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of spring assembly 26 is shown in Figure 6 below. Id. at 3:58-59.

Constant torque spring 58, shown in Figure 6 above, is pre-loaded to apply
enough tension to shaft 30 to support shade 14 when it is in a fully retracted
position. Ex. 1002, 5:50-52. As shade 14 is extended, tape 32 unrolls from tape
spool 34, shaft 30 turns in a counter-clockwise direction, and constant torque
spring 58 is drawn upon take-up spool 56. Id. at 5:41-45, 6:10-15.
Shade 14 is locked in the desired position by “[b]rake/clutch mechanism 28
[which] features one-way operation.” Id. at 5:53-55. A conventional spring-
loaded cam pin locks into a steel guide within the clutch when shade 14 is pulled to
the desired length, and is released from the steel guide by pulling shade 14
downward a predetermined amount to allow retraction of shade 14. Id. at 6:17-20,
23-26. When the spring-loaded cam pin is released, spring 58 winds back upon
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itself, exerting a clockwise force upon shaft 30. Id. at 5:46-50, 6:29-32. Rotation
of shaft 30 causes tape spool 34 to begin reeling in tape 32, which in turn causes
shade 14 to rise. Id. at 6:29-34. Retraction speed of shade 14 is regulated by a
centrifugal braking system contained within brake/clutch mechanism 28, which
applies increasing braking force to counteract the increasing rotational velocity of
shaft 30 as shade 14 rises, resulting in a constant retraction speed of shade 14. Id.
at 5:57-62. The centrifugal braking system “prevents violent retraction of the
shade due to the combined forces of the internal spring mechanism and the
inherent spring characteristics of the shade material.” Id. at 3:35-38.
2. Analysis
Petitioner contends Todd discloses the limitations of challenged claims 5-7
with the exception that Todd’s brake/clutch mechanism 28 does not allow the
rotating output (shaft 30) to “rotate freely” in one direction as recited in
independent claims 5 and 7. Pet. 18-27. Petitioner contends it would have been
obvious to a person having ordinary skill in the art at the time of the invention to
disengage the centrifugal braking system in Todd’s brake/clutch mechanism 28,
thereby permitting shaft 30 to rotate freely in one direction. Id. at 22, 26.
In response, Patent Owner argues Todd does not “provide any motivation for
modifying [its] teachings with those of the secondary references, and Petitioner
provides no explanation as to why one of ordinary skill in the art would look to any
other reference for missing elements.” Prelim. Resp. 27-28.
“The inventor’s own path itself never leads to a conclusion of obviousness;
that is hindsight. What matters is the path that the person of ordinary skill in the
art would have followed, as evidenced by the pertinent prior art.” Otsuka Pharm.
Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012). A factual
foundation is important to support a party’s claim about what a person having
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ordinary skill in the relevant art would have known. Randall Mfg v. Rea, 733 F.3d
1355, 1362 (Fed. Cir. 2013). There can be no motivation to modify if to do so
would render the prior art invention being modified unsatisfactory for its intended
purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
We agree with Patent Owner that Petitioner has not explained adequately
why a person having ordinary skill in the art would have had a reason to modify
Todd’s device to disengage or modify the centrifugal braking system in
brake/clutch mechanism 28 to allow shaft 30 to rotate freely in one direction.
Petitioner has not explained why the ordinary artisan would have made this
modification, which would have eliminated the feature of a constant retraction
speed of shade 14, which Todd uses to prevent uncontrolled retraction of shade 14.
See Ex. 1002, 5:57-62, 3:35-38 supra p. 12.
Petitioner has not demonstrated a reasonable likelihood it would prevail on
the ground that claims 5-7 are unpatentable over Todd.
B. Obviousness of Claims 5-7 over Todd in view of Strahm
1. Strahm (Exhibit 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 the minimum of effort.” Ex. 1003, 1:29-34. The blind comprises 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 11, 12,
which are disposed in the raising and lowering mechanism. Id. at 2:14-16, 33-34.
A cross-sectional view of the raising and lowering mechanism is shown in Figure 6
below. Id. at 1:68-71.
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As shown in Figure 6 above, drums 11, 12 are rigidly connected to bevel
gears 11’, 12’, which mesh with bevel gear 18. Ex. 1003, 2:36-40. Bevel gear 18
is freely rotatable on shaft 4 and connected to drive sleeve 19 via helical spring 21.
Id. at 2:39-42. Sleeve 32 is also freely rotatable on operating shaft 4. Id. at 3:14.
Ring 35 is screwed on sleeve 32 in a manner that compresses conical washers 33,
36, forming a friction brake between stationary wall 34 and rotatable sleeve 32. Id.
at 3:19-25. Helical spring 30 forms a one-way coupling between drive sleeve 19
and sleeve 32 when sleeve 19 rotates in the direction indicated by arrow B,
corresponding to lowering the blind. Id. at 3:25-30. The coupling slips when
sleeve 19 rotates in the direction indicated by arrow A, corresponding to raising the
blind. Id. at 3:30-32. “The brake therefore operates only during the descent of the
blind and is automatically cut out of operation during the raising of the blind.” Id.
at 3:32-35; see also, id. at 4:32-33 (“The brake 32 is ‘off’ for ascent, so that
relatively little torque is required.”).
2. Analysis
Petitioner contends Todd discloses the limitations of challenged claims 5-7
with the exception of a one-way friction brake as recited in independent claims 5
and 7. Pet. 27-35. Petitioner maintains “Strahm’s one-way friction brake
corresponds to and discloses the one-way friction brake of [challenged claims 5-
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7]” and, therefore, “the combination of Todd and Strahm teaches each feature
recited in [challenged claims 5-7] and renders the subject matter of [challenged
claims 5-7] as a whole obvious and unpatentable.” Id. at 31, 33, 35; see also, id. at
28 (“Because of the close linkages amongst Todd and Strahm with respect to the
subject matter in the 884 Patent, there is a motivation or suggestion in the
teachings by Todd and Strahm to enable a person having ordinary skill in the art to
combine the teachings of these references.”).
As explained by the Federal Circuit:
Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a
claim under examination. . . . Rather, obviousness requires the
additional showing that a person of ordinary skill at the time of the
invention would have selected and combined those prior art elements
in the normal course of research and development to yield the claimed
invention.

Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citations
omitted). “To render a claim obvious, prior art cannot be ‘vague’ and must
collectively, although not explicitly, guide an artisan of ordinary skill towards a
particular solution. . . . [A] combination is only obvious to try if a person of
ordinary skill has ‘a good reason to pursue the known options.’” Id. at 1361
(quoting KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). An analysis
regarding an apparent reason to combine known elements “should be made
explicit.” KSR, 550 U.S. at 418.
We agree with Patent Owner, see Prelim. Resp. 30, that Petitioner has not
explained adequately why a person having ordinary skill in the art would have had
a reason to modify Todd’s device to include Strahm’s one-way friction brake in the
manner required by challenged claims 5-7, because Todd’s device already includes
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brake/clutch mechanism 28. Nor has Petitioner explained why a person having
ordinary skill in the art would have had a reason to eliminate the centrifugal
braking system in Todd’s brake/clutch mechanism 28 in view of Strahm, as this
modification would have eliminated the feature of a constant retraction speed of
shade 14. See Ex. 1002, 5:57-62 supra, p. 12.
Petitioner has not demonstrated a reasonable likelihood it would prevail on
the ground that claims 5-7 are unpatentable over Todd in view of Strahm.
C. Obviousness of claims 5-7 over Kuhar in view of Lohr
1. Kuhar (Exhibit 1004)
Kuhar describes “a cordless blind or shade in which a spring motor is used
to eliminate conventional pull cord and cord-lock mechanisms.” Ex. 1004, 2:29-
31. Figure 9, below, is a schematic representation of a motor system for raising a
blind. Id. at 4:1-3.

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Blind system 90, as shown in Figure 9 above, includes a plurality of slats 95
extending between bottom bar 92 and headrail 94. Ex. 1004, 6:7-10. Bottom bar
92 is movable relative to headrail 94 via attachment to lifting cords 96, 97. Id. at
6:12-14, 34-36. Lifting cords 96, 97 are wound onto cord spools 30 to open blind
system 90 or unwound from cord spools 30 to close blind system 90. Id. at 6:21-
24, 34-36. Output drum 20 of spring motor unit 40 drives cord spool 30 via axle
44. Id. at 4:59, 4:67–5:4. Spring motor unit 40 also includes storage drum 10 and
spring 45 coupled between output drum 20 and storage drum 10. Id. at 4:65-67,
5:5-6. When the blind is in the lowered position, most of spring 45 is wound on
output drum 20, thereby decreasing the amount of force exerted on bottom bar 92.
Id. at 6:22-30. As the blind is raised, spring 45 is wound onto storage drum 10. Id.
at 6:15-17. According to Kuhar, “while the weight exerted on lifting cords 96 and
97 will vary as the blind is raised and lowered, frictional forces are present which
can be sufficient to maintain the shade in any desired position without free fall.”
Id. at 7:24-28. Kuhar describes enhancing frictional forces by a device which
increases tension on lifting cords 96, 97. Id. at 5:13-18, 7:28-30.
2. Lohr (Exhibit 1005)
Lohr describes a spring motor drive, which is said to be useful “in several
fields including the toy industry.” Ex. 1005, 1:16-17. The spring motor drive
utilizes a prestressed spring and includes “positive mechanical braking means to
halt the rotation of the power drum just short of the completed retraction of the
prestressed spring, together with clutch means permitting continued rotation of a
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drive shaft.” Id. at 1:33-37. Figure 5, below, is a side elevational view showing an
embodiment of the spring drive motor and braking means at the end of the
retraction of the prestressed spring. Id. at 2:23-26.

As illustrated in Figure 5 above, the spring motor drive includes prestressed
spring 3 (unnumbered), wound on storage spool 1 and reversely bent around and
fastened at end 20 to the periphery of power drum 19. Id. at 2:40-47, 3:42-48. In
use, prestressed spring 3 is wound onto power drum 19 under tension. Id. at 4:20-
26. When power drum 19 is released, prestressed spring 3 returns to storage spool
1 causing rotation of power drum 19, transmitting driving force to drive shaft 29 by
meshing of drum gear 30 with drive pinion 32. Id. at 4:23-34. Drive shaft 29 is
used to power a device. Id. at 3:69-74.
In order to prevent an abrupt halt to power drum 19 and possible damage to
the end of spring 3 attached thereto, brake mechanism 37 is utilized to slow down
the rotation of power drum 19. Id. at 4:35-38. Brake mechanism 37 comprises a
brake arm 40 which is urged against the periphery of power drum 19 when spring 3
has almost fully unwound from power drum 19. Id. at 4:69–5:3. Once brake
mechanism 37 has stopped rotation of power drum 19 and storage spool 1, drive
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shaft 29 continues to rotate due to the clutch means, id. at 5:5-8, illustrated more
clearly in Figure 7, below.

Figure 7, above, is a partial bottom plan view of the Figure 5 embodiment.
Ex. 1005, 2:29-30. As explained above, power is transferred from the spring drive
motor by meshing of drum gear 30 with drive pinion 32. Id. at 4:23-34. Drive
pinion 32 and attached ratchet sleeve 31 are slidably mounted on drive shaft 29,
and urged by spring 36 toward engagement with ratchet sleeve 33, which is fixedly
attached to drive shaft 29. Id. at 4:1-2, 9-13. “One end of the ratchet sleeve 33 is
provided with suitable one-way clutch means such as ratchet teeth 34 which
cooperate with mating ratchet teeth 35 on the opposed end of the sliding ratchet
sleeve 31.” Id. at 4:5-9. Ratchet teeth 34, 35 are engaged during rotation of power
drum 19 to transmit rotative motion to drive shaft 29. Id. at 4:32-33. When
rotation of power drum 19 is stopped by brake mechanism 37, ratchet teeth 34, 35
disengage, allowing free wheeling of drive shaft 29. Id. at 4:37-43.
3. Analysis
Petitioner contends Kuhar discloses the limitations of challenged claims 5-7
with the exception of a one-way friction brake as recited in independent claims 5
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and 7. Pet. 36-45. Petitioner contends “the one-way friction brake mechanism of
Lohr corresponds to” the one-way friction brake of challenged claims 5 and 7.
Id. at 40, 44. Petitioner thus maintains “the combination of Kuhar and Lohr
teaches each feature recited in [challenged claims 5-7] and renders the subject
matter of [challenged claims 5-7] as a whole obvious and unpatentable.” Id. at 41,
45; see also, id. at 37 (“Because of the close linkages amongst Kuhar and Lohr in
the spring motor drives and associated braking mechanisms with respect to the
subject matter in the 884 Patent, there is a motivation or suggestion in the general
teachings by Kuhar and Lohr to enable a person having ordinary skill in the art to
combine the teachings of these references. Such combinations render Claims 5-7
of the 884 Patent unpatentable.”).
In response, Patent Owner argues Kuhar does not “provide any motivation
for modifying [its] teachings with those of the secondary references,” Prelim.
Resp. 27, and that “merely identifying ‘close linkages’ between Kuhar and Lohr is
an insufficient motivation to combine,” id. at 34.
An analysis regarding an apparent reason to combine known elements
“should be made explicit.” KSR, 550 U.S. at 418. Petitioner has not explained
adequately why a person having ordinary skill in the art would have had a reason
to modify Kuhar’s device to include Lohr’s brake mechanism in the manner
required by challenged claims 5-7. Petitioner has not explained why a person
having ordinary skill in the art would have had a reason to use Lohr’s brake
mechanism in Kuhar’s device given Kuhar’s disclosure of friction imparting
devices used with lifting cords 96, 97, which are said to be sufficient to maintain
the shade in any desired position without free fall. See Kuhar 5:13-18, 7:24-30
supra, p. 18.

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Petitioner has not demonstrated a reasonable likelihood it would prevail on
the ground that claims 5-7 are unpatentable over Kuhar in view of Lohr.
D. Obviousness of Claim 6 over Todd in view of Strahm and McClintock,
and over Kuhar in view of Lohr and McClintock
1. McClintock (Exhibit 1006)
McClintock describes a mechanical rotator for mixing samples with reagent
chemicals in medical testing. Ex. 1006, 1:21-22, 45-46. Sample rotator 10
comprises orbiting member 20 connected to output shaft 102 of manually operated
rotary spring motor (or drive) 100. Id. at 2:65-67. Spring motor 100 comprises
constant-torque producing flat-coil spring 104, having one end connected to a fixed
member such as a housing and the other end connected to rotatable drive shaft 106.
Id. at 3:67–4:5. Flat-coil spring 104 rotates drive shaft 106, in turn rotating output
shaft 102 at a higher speed than driving shaft 106 via transmission 130. Id. at
4:26-30.
2. Analysis
Petitioner contends the combined teachings of (1) Todd and Strahm, and (2)
Kuhar and Lohr disclose the limitations of challenged claim 6, with the exception
of “a transmission operatively connected to the spring motor and to the rotating
output,” as recited in challenged claim 6. See Pet. 36, 45. Petitioner contends
“transmission [130] of McClintock corresponds to the transmission of Claim 6”
and thus the combinations of Todd, Strahm, and McClintock, and Kuhar, Lohr, and
McClintock render Claim 6 unpatentable. Id. In response, Patent Owner argues
Petitioner fails to provide any reason to combine McClintock with (1) Todd and
Strahm, or (2) Kuhar and Lohr. Prelim. Resp. 31, 34. Patent Owner also argues
McClintock is nonanalogous art. Id. at 31.

Case IPR2014-00276
Patent 6,968,884 B2

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As explained above, Petitioner has not explained adequately why a person
having ordinary skill in the art would have been motivated to modify (1) Todd in
view of Strahm or (2) Kuhar in view of Lohr in the manner required by
independent claim 5, from which challenged claim 6 depends. Further, Petitioner
has not provided sufficient articulated reasoning with rational underpinning as to
why an ordinary artisan at the time of the invention would have had a reason to
modify the combination of Todd and Strahm, or the combination of Kuhar and
Lohr to include a transmission as taught by McClintock.
Petitioner has not demonstrated a reasonable likelihood it would prevail on
the ground that claim 6 is unpatentable over Todd in view of Strahm and
McClintock or on the ground that claim 6 is unpatentable over Kuhar in view of
Lohr and McClintock.
V. CONCLUSION
Petitioner has not demonstrated a reasonable likelihood that it would prevail
on the grounds that claims 5-7 would have been obvious over Todd alone, Todd in
combination with Strahm, or Kuhar in combination with Lohr. Petitioner has not
demonstrated a reasonable likelihood that it would prevail on the grounds that
claim 6 would have been obvious over Todd in combination with Strahm and
McClintock, or Kuhar in combination with Lohr and McClintock.
VI. ORDER
For the reasons given, it is
ORDERED that the Petition is denied, and no trial is instituted.

Case IPR2014-00276
Patent 6,968,884 B2

23

PETITIONER:

Bing Ai
Ai@perkinscoie.com

Kourtney Mueller
Kmerrill@perkinscoie.com

PATENT OWNER:

Kristopher Reed
kreed@kilpatricktownsend.com

Darin Gibby
dgibby@kilpatricktownsend.com