Tandus Flooring, Inc.v.Interface, Inc.

Patent Trial and Appeal Board

Feb 12, 2015

13595487 (P.T.A.B. Feb. 12, 2015)

Trials@uspto.gov Paper 48
Tel: 571-272-7822 Entered: February 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TANDUS FLOORING, INC.,
Petitioner,
v.
INTERFACE, INC.,
Patent Owner.

_______________

Case IPR2013-00527
Patent 8,434,282 B2
_______________

Before MIRIAM L. QUINN, BRIAN J. McNAMARA, and
TRENTON A. WARD, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

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

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I. BACKGROUND
Tandus Flooring, Inc. (“Petitioner”) filed a Petition to institute an inter
partes review of all the claims, claims 114 (the “challenged claims”), of U.S.
Patent No. 8,434,282 (“the ’282 patent”). Paper 4 (“Pet.”). We instituted trial for
all asserted claims. Paper 12 (“Dec. on Inst.”). Although Petitioner asserted a
multitude of grounds of unpatentability, we instituted trial of the challenged claims
based only on the following grounds:
Claims Basis Reference[s]
1, 2, 57, and 9 § 102 Pacione
1

3 and 8 § 103 Pacione and Robinson
2

1, 2, 57, and 914 § 103 Kinoshita
3
and Pacione
3 and 8 § 103 Kinoshita, Pacione, and Robinson
4 § 103 Kinoshita, Pacione, and Matthews
4

During trial, Interface, Inc. (“Patent Owner”) filed a Patent Owner
Response, addressing the asserted anticipation and obviousness grounds. Paper 24
(“PO Resp.”). Patent Owner also filed a contingent Motion to Amend, which
seeks to substitute proposed claim 15 should claim 1 be found unpatentable. Paper
26 (“Mot. to Amend”). Petitioner replied to Patent Owner’s Response (Paper 33
(“Pet. Reply”)) and responded to Patent Owner’s Motion to Amend (Paper 35

1
US 6,298,624 B1 issued Oct. 9, 2001 (Ex. 1006) (“Pacione”).
2
US 3,241,662 issued Mar. 22, 1966 (Ex. 1014) (“Robinson”).
3
JP H5-163825 published June 29, 1993 (Ex. 1007) (“Kinoshita”); Citations in this
Decision to Kinoshita are to the certified English translation of that Japanese
document, which is included also in Exhibit 1007.
4
WO 99/55792 published Nov. 4, 1999 (Ex. 1011) (“Matthews”).
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(“Opp. to Mot. to Amend”)). Both parties requested the opportunity to present oral
argument. A hearing was held on November 13, 2014, and a transcript of that
hearing is part of the record. Paper 47 (“Tr.”).
For the reasons that follow, we determine the Petitioner has demonstrated by
a preponderance of the evidence that claims 114 of the ’282 patent are
unpatentable. Furthermore, Patent Owner’s request for entry of substitute claim 15
is denied.
A. RELATED PROCEEDINGS
The ’282 patent is related to U.S. Patent No. 8,381,473, which was the
subject of an inter partes review (IPR2013-00333) that has concluded. In that
proceeding, the panel issued a final written decision. See Tandus Flooring, Inc. v.
Interface, Inc., Case IPR2013-00333 (PTAB Dec. 8, 2014) (Paper 67).
B. THE ’282 PATENT (EX. 1001)
The ’282 patent generally relates to systems and methods for installing floor
coverings, particularly carpet tile and other modular floor coverings. Ex. 1001,
1:2426. One embodiment described in the ’282 patent involves using connectors
to install floor tiles, where each connector includes an adhesive layer that contacts
the underside of adjacent tiles and connects the tiles together to form the floor
covering. Id. at 4:62–5:4. The patent illustrates the tile installation using said
connectors as shown in Figure 5, reproduced below with annotations.
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Figure 5, above, is annotated in orange to illustrate a unit of four tiles in the
embodiment of a conventional installation in which central connector 46 connects
the four tiles at the corners where they intersect. Id. at 8:6166. To facilitate rapid
floor installation, the ’282 patent describes that the connector includes a film that is
stiff, typically with greater stiffness than most adhesive tapes that curl or droop
down from the underside of a tile. Id. at 5:911, 1620. The connector, thus,
projects beyond the edge of the tile, facilitating proper positioning. The
’282 patent further contemplates adhesives exhibiting “sufficient [shear] strength
to prevent the tiles from moving relative to the connectors or each other and
thereby creating gaps between adjacent tiles after installation.” Id. at 7:69.
C. ILLUSTRATIVE CLAIM
Challenged claim 1 is the sole independent claim at issue. It is reproduced
below, as illustrative of the claimed subject matter:
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1. A system for installing carpet tiles on an underlying surface, the system
comprising:
a plurality of carpet tiles, wherein each carpet tile comprises an underside;
and
a plurality of carpet tile connectors for connecting the plurality of carpet
tiles, each carpet tile connector comprising:
a film having two sides; and
a layer of adhesive located on a side of the film, wherein the layer of
adhesive is capable of forming a bond between the film and the
undersides of adjacent carpet tiles and comprises a sufficient shear
strength so that, when a connector spans adjacent edges of the
adjacent carpet tiles so that the layer of adhesive contacts the
undersides of the adjacent carpet tiles, the connector prevents adjacent
tiles from moving relative to the connector or each other thereby
creating gaps between the adjacent tiles after installation,
wherein the film comprises a plastic material sufficiently stiff for a
connector positioned partly in contact with an underside of a carpet
tile to project beyond the edge of the carpet tile in roughly the same
plane as the underside of the carpet tile.

II. ANALYSIS
A. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b). Claim terms also 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). We must be careful not to read
a particular embodiment appearing in the written description into the claim if the
claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d
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1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from
the specification”).
In the Decision on Institution, we interpreted one term, “sufficient shear
strength” to mean “adequate capacity to resist shear.” Dec. on Inst. 79. Patent
Owner challenges our construction of the “sufficient shear strength” limitation and
raises an issue of claim construction we did not address in our Decision on
Institution: the scope of the term “connectors.” PO Resp. 1217. Patent Owner
raises the issue of claim scope of dependent claim 14 where it urges that the claim
requires a series of steps to be performed in a specific sequence. Id. at 1719. We
analyze each issue in turn.
1. “sufficient shear strength” limitation (Claim 1)
The claim recites that “the layer of adhesive . . . comprises a sufficient shear
strength so that . . . the connector prevents adjacent tiles from moving relative to
the connector or each other.” Ex. 1001, 10:2635. Patent Owner argues that
“sufficient shear strength” relates only to the ability of the adhesive to prevent
lateral movement. PO Resp. 15. We concluded in our Decision on Institution that
by reciting “sufficient shear strength,” the claims are not limited to preventing only
lateral movement and lateral gaps. Dec. on Inst. 79. Patent Owner proffers
witness testimony, however, in support of its argument that “shear strength” relates
to preventing lateral movement, whereas “peel strength” relates to lifting, i.e.,
vertical movement. PO Resp. 15 (citing Ex. 2014 ¶¶ 8191; Ex. 2017 ¶¶ 8192;
Ex. 2012, 88:1425, 90:2491:4). Patent Owner also states that the word “gap” is
a “term of art” in the carpet tile industry, and that recitation of “gap” in claim 1
refers to lateral separation between the edges of the tiles. Id. at 1617 (citing Ex.
2014 ¶¶ 54, 90; Ex. 2017 ¶¶ 53, 91).
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We are not persuaded by Patent Owner’s arguments because the claim
language and specification of the ’282 patent do not support the proffered
contention that the claims are limited to preventing only lateral movement. The
claim language is paramount to our analysis. The claim recites, first, “shear
strength” distinctly from, second, “prevent[ing] . . . moving relative to the
connector or each other” (emphasis added). Although these two features are
functionally related, in the context of claim 1 the first feature cannot redefine or
rewrite the second feature. That is, even if the customary understanding of “shear
strength” focused solely on a plane parallel to the flooring surface, i.e. strength in
the horizontal or lateral direction, the claim expressly recites preventing relative
movement, which is a broad term that encompasses movement other than lateral
movement.
Not only does the claim language foreclose narrowing the claims as Patent
Owner argues, but the specification gives no indication that the ordinary and
customary meaning of an adhesive layer with sufficient “shear strength” would
prevent only lateral movement or lateral gaps. To be clear, the specification does
not define “shear strength.” Similarly, the specification is silent regarding a
definition for “creating gaps,” such that a “gap” could be interpreted clearly as
meaning only a lateral gap. Neither does Patent Owner argue that any definition
for these terms is provided expressly in the specification. Instead, Patent Owner
argues that: (1) “[t]he experts in this case agree” on the “shear strength” limitation
preventing lateral movement; and (2) the word “gap” is a “term of art” referring to
lateral separation between tile edges. PO Resp. 1517.
Regarding the term “shear strength,” Patent Owner does not show that our
construction of “shear strength”—“adequate capacity to resist shear”—is in error.
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Patent Owner’s argument focuses on whether the adequate capacity to resist shear
concerns only the prevention of lateral movement. Id. In support of that argument,
Patent Owner relies on extrinsic evidence in the form of witness testimony
regarding whether lateral movement, but not vertical movement, is understood by
person of ordinary skill in the art as the meaning of shear strength. See, e.g., Wood
Decl., Ex. 2017 ¶¶ 8192 (stating that it makes no sense to construe “shear
strength” as preventing anything other than lateral movement, because the industry
knew how to keep tiles lying flat and that the patent only further supports
prevention of lateral movement by referring to “gaps”); Endrenyi Decl., Ex. 2014
¶¶ 8190 (stating the same as Mr. Wood); Deposition of Dr. Tippett, Ex. 2012,
88:1425 (testifying of development of shear strength test of a carpet tile to
determine the force used to move a carpet laterally). But as stated above, the claim
expressly recites the relative movement broadly, without limiting that movement to
any direction.
Furthermore, the witness testimony is unpersuasive. In particular, we note
the flaw in the argument that if the claim had meant to preclude vertical movement,
in addition to lateral movement, the claim language would reference the peel
strength of the adhesive. See Ex. 2014 ¶ 88. The omission of peel strength in the
claim language is not evidence that the claim excludes preventing vertical
movement, such as that caused by peeling off. Failing to restrict the recited
“movement” of the tiles to lateral movement results in a claim broad enough to
encompass both vertical and lateral movement, notwithstanding that the strength of
the adhesive is directed expressly to resist shear, or lateral forces.
With regard to the meaning of “gap,” all of the testimony relied on to
support Patent Owner’s argument on this point is opinion evidence, without
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supporting facts or explanation of how the specification supports such an opinion.
See, e.g., PO Resp. 1617; Endrenyi Decl., Ex. 2014 ¶ 53 (stating that “gapping”
and “buckling” are “terms of art in the industry that refer to consequences of
adjacent tiles moving laterally on the floor so that adjacent edges of the tiles no
longer abut”); Wood Decl., Ex. 2017 ¶ 53 (“‘[g]apping’ is an industry term that
refers to lateral separation of adjacent tile edges”); but see Deposition of Dr.
Tippett, Ex. 2012, 76:1277:15 (referring, during Dr. Tippett’s cross-examination,
to horizontal gaps and vertical gaps known at the time of the invention, 2004). The
testimony relied on by Patent Owner to support its argument is unpersuasive. First,
the specification neither refers to “gapping” nor states (nor implies that) the word
“gap” is directed solely to tiles moving laterally relative to the connector or another
tile. Indeed, the specification uses the word “gap” generally. Two of those uses
appear in the Background of the Invention describing problems with tape having a
low tensile strength and inelasticity. See Ex. 1001, 2:4851, 3:1521. A third use,
also in the Background of the Invention, describes problems with indirect
attachment methods where “tiles are more likely to move relative to each other and
thereby create gaps in the installation.” Id. at 3:14. This statement is particularly
enlightening because in comparison with other statements referring to gaps formed
between adjacent tiles, this statement refers to gaps more generally, i.e. “gaps in
the installation.” The fourth use of the word “gap” repeats verbatim the claim
language concerning “shear strength,” and, therefore, provides no further insight as
to the use of the word. See id. at 7:69. Review of these broad statements in the
specification reveals that there is no express intent of using “gap” in the sense of
meaning only a lateral gap.
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Furthermore, other than the conclusory assertions of Patent Owner’s
Declarants, Messrs. Wood and Endrenyi, there is insufficient factual support for
the assertion that the word “gap,” commonly understood to mean an opening or a
space,
5
was, at the time of the invention, a “term of art” in the carpet tile industry
referring solely to lateral separation between tiles. Indeed, a named inventor of the
’282 patent, Mr. Keith Gray, has averred that: “[t]he word ‘gap’ is not a term of
art in the carpet tile industry. End users, installers, dealers, and others use the word
as a general description of a problem with adjacent tiles coming apart in any
direction.” Ex. 1037 ¶ 22.
6

On the whole, we are not persuaded that the ordinary and customary
meaning, under the broadest reasonable interpretation, of the “shear strength”
limitation is limited to lateral movement or lateral gaps, because there is
insufficient evidence that such a narrow interpretation is appropriate. See E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003) (Where no
explicit definition for the term “electronic multi-function card” was given in the
specification, this term should be given its ordinary meaning and broadest
reasonable interpretation; the term should not be limited to the industry standard

5
See, e.g., Ex. 1020 (Definition gap, MERRIAM-WEBSTER DICTIONARY (“a space
between two people or things”)).
6
See Ex. 2040, 102:3104:19. We note Patent Owner contends that Mr. Gray’s
testimony is biased and contradictory. Paper 40, PO Mot. for Observations 2, 7.
We also note that Petitioner responded to these contentions by showing testimony
regarding the level of knowledge of Mr. Gray and that the testimony is consistent
with Petitioner’s allegations that the word “gap” includes lateral separation, but
does not exclude vertical separation. Paper 43, Pet. Resp. to PO Mot. for
Observations 12, 89. We have taken Patent Owner’s contentions and
Petitioner’s response into consideration when determining the weight accorded to
Mr. Gray’s testimony.
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definition of credit card where there is no suggestion that this definition applies to
the electronic multi-function card as claimed, and should not be limited to
preferred embodiments in the specification.).
Turning to the disputed claim language, as we stated in our Decision on
Institution, we determine that the word “sufficient” introduces a relative amount to
the recited “shear strength.” The phrase “shear strength” is the capacity of a
material to resist shear.
7
And “shear” is “a strain resulting from applied forces that
cause or tend to cause contiguous parts of a body to slide relatively to each other in
a direction parallel to their plane of contact.”
8
Applying the plain and ordinary
meaning to the claim language, therefore, the layer of adhesive must have the
adequate capacity to resist shear. The layer’s capacity, however, does not narrow
the claimed function of including such a layer in the connector to prevent only
lateral movement of adjacent tiles and lateral gaps from forming after installation.
The plain language of the claims confirms this interpretation because the result of
providing the “sufficient shear strength” at the adhesive layer is to prevent adjacent
tiles from moving relative to the connector or each other. This claim language
indicates that abutting tile edges are prevented from moving “in a direction
parallel” to the plane of contact—which would include both lateral and vertical
movement. For example, lifting may be prevented when providing a resistance to

7
Definition shear strength, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY,
UNABRIDGED (1993), available at http://lionreference.chadwyck.com
(Dictionaries/Webster’s Dictionary) (Exhibit 3001).
8
Definition shear 5(a), WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY,
UNABRIDGED (1993), available at http://lionreference.chadwyck.com
(Dictionaries/Webster’s Dictionary) (Exhibit 3002).

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shear sufficient to allow for the horizontal strain caused by suction, traffic, and any
other dragging force.
Accordingly, we construe “sufficient shear strength” to mean “adequate
capacity to resist shear.”
2. “connector”
Patent Owner contends that the recited “connector” is smaller than the carpet
tiles that it connects. PO Resp. 1214. In support of this contention, Patent Owner
points out that every depiction of the “connector” in the Figures is consistent with
this position. Id. at 13. We address each of Patent Owner’s arguments in turn.
First, claim 1 recites the connector without restricting its surface area or size
in any way. At best, the claim recites that the connectors are “for connecting the
plurality of carpet tiles” and are positioned to “span[] adjacent edges of the
adjacent carpet tiles.” This claim language does not suggest that the connector’s
surface area must be smaller than that of the tile. Indeed, a connector, with a
surface area the same as or larger than the tile, may meet this limitation so long as
“a connector” is positioned as claimed. Moreover, the ’282 patent includes a claim
depending from claim 1 addressing surface area limitations of a connector. See,
e.g., claim 9 (requiring that the connector has a surface area of approximately 9
inches square). Patent Owner does not explain why unrecited size or dimension of
a “connector” should be a limitation of independent claim 1, under the ordinary
and customary meaning of the claim, when dependent claim 9 expressly recites a
connector size.
Furthermore, we are not persuaded that the depiction of the connectors in the
Figures weighs in favor of limiting the claim term thusly. Although the Figures
show a connector square that is smaller than the tile squares (Ex. 1001, Figs. 58),
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those Figures show embodiments of possible installations. Id. at 8:619:17. And
although the depictions are instructive, we generally do not import into the claims
limitations of shown embodiments. Of note is the description of various shapes of
the connector: rectangular and triangular shapes. See id. at 9:2528. It would be
no more proper to limit the size of the connector, to be smaller than the tile, than it
would be to limit the claims to a rectangle or square, simply because that is what
appears to be depicted in the patent figures.
Accordingly, we decline to include a size limitation in the plain and ordinary
meaning of “connector.”
3. Sequence for Apparatus Claim 14
Patent Owner argues that a person of ordinary skill in the art would construe
claim 14 to require that the system identify a specific sequence of steps for
installing the system of carpet tile connectors. PO Resp. 1718. In support of this
argument, Patent Owner relies on the Declarations of Messrs. Wood and Endrenyi.
Id. at 18 (citing Ex. 2014 ¶ 92, Ex. 2017 ¶ 93). The proffered testimony is,
however, conclusory. No analysis or factual support is provided for the conclusion
that the claim 14 apparatus requires identification of a specific order of steps.
Notwithstanding Patent Owner’s contentions, we do not construe the claim
14 limitation as Patent Owner proposes, in light of our analysis in section II.E.5.c.,
below.
B. RELEVANT LEGAL PRINCIPLES
To prevail in its challenges to the patentability of claims, the Petitioner must
establish facts supporting its challenges by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated, and, thus,
unpatentable, if a single prior art reference discloses each and every element of the
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claimed invention. See Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377
(Fed. Cir. 2003).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between
the claimed subject matter 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 skill in the art; and, (4) where in evidence, so-called
secondary considerations, including commercial success, long-felt but unsolved
needs, failure of others, and unexpected results. Graham v. John Deere Co., 383
U.S. 1, 1718 (1966) (“the Graham factors”). The level of ordinary skill in the art
usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
For an obviousness analysis, prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.”
In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825,
826 (CCPA 1968). That is because an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
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ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also In re
Translogic Tech., Inc., 504 F.3d at 1259.
Regarding commercial success, this factor “may have relevancy” to the
overall obviousness determination (Graham, 383 U.S. at 18), but a nexus must
exist between the commercial success and the claimed invention. Ormco Corp. v.
Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (“Evidence of
commercial success . . . is only significant if there is a nexus between the claimed
invention and the commercial success.”). If commercial success is due to an
element in the prior art, no nexus exists. Id. at 1312; see also Richdel, Inc. v.
Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (holding claimed invention
obvious where patent holder “failed to show that such commercial success . . . was
due to anything disclosed in the patent in suit which was not readily available in
the prior art”). We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. LEVEL OF ORDINARY SKILL IN THE ART
Petitioner has not stated the level of ordinary skill in the art for this case, and
offers the testimony of Dr. Tippett and Dr. Jensen as “evidence of the knowledge
that one of ordinary skill in the art would have possessed at the time of the claimed
invention because the arts of carpet tile installation systems and adhesive tape are
pertinent to the problem to be solved and the claimed solution to the problem.”
Pet. 7. On the other hand, Patent Owner challenges the testimony of Petitioner’s
Declarants because Patent Owner contends that a person of ordinary skill in the art
is a person having knowledge of carpet tiles and how to install them, not a person
who is an expert in adhesive tape. PO Resp. 21.
To determine the level of ordinary skill in the art in this case we consider the
type of problems encountered in the art, the prior art solutions to those problems,
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the rapidity with which innovations are made, and the sophistication of the
technology. Custom Accessories Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955,
962 (Fed. Cir. 1986). Also, we are guided by the level of ordinary skill in the art
reflected by the prior art of record. Okajima, 261 F.3d. at 1355 (the prior art itself
can reflect the appropriate level of skill in the art).
We are persuaded that the level of ordinary skill in the art combines the
knowledge of carpet tile installation and adhesive tape characteristics. The prior
art of record, particularly Kinoshita, describes the solution of laying carpet tiles
using adhesive tape pieces to avoid laying adhesive on the floor. Ex. 1007 ¶¶ 12,
5. Pacione also describes installation of carpet modules without substantial
attachment to the floor. Ex. 1006, Abstract. Therefore, we agree with Patent
Owner that the level of ordinary skill in the art includes knowledge of carpet tiles
and their installation methods.
We disagree with Patent Owner, however, in that the level or ordinary skill
in the art would not include expertise in adhesive tape characteristics.
See PO Resp. 23 (arguing that Dr. Jensen is not a POSITA because his expertise
relates to pressure sensitive adhesive tapes). For instance, Kinoshita discloses the
use of removable, single-side or double-sided adhesive tape that is pressed to the
rear of the carpet tiles. Ex. 1007 ¶¶ 7–8, 12. Kinoshita recognizes that the
adhesive must be of sufficient strength to stick to the rear of the carpet tile, but also
allow for repositioning. Id. ¶ 12. Details of the backing for pressure sensitive
adhesive tape are part of the prior art of record, such as Robinson (Ex. 1014). For
example, Robinson describes the properties and characteristics to make the
adhesive tape backing suitable for pressure-sensitive adhesive tapes. Id. at
1:462:44. Therefore, it is appropriate that we consider, as part of the level of
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ordinary skill in the art, knowledge of adhesive tape appropriate for carpet tile
installations as described in Kinoshita, as well as the knowledge of the properties
and characteristics of pressure-sensitive tapes suitable for the use in carpet tile
installations.
Patent Owner’s arguments that Petitioner’s experts are not competent to
testify because they are not persons of ordinary skill in the art are unpersuasive.
See PO Resp. 2125 (arguing the competency of Dr. Jensen and Dr. Tippett based
on the level of ordinary skill in the art). A declarant may be qualified as an expert
if the declarant’s scientific, technical, or other specialized knowledge will help the
trier of fact to understand the evidence or to determine a fact in issue. Fed. R.
Evid. 702. Patent Owner has not filed a motion to exclude on the basis of
competency of Petitioner’s expert witnesses, and, therefore, we do not undertake
an analysis of whether the challenged experts are, indeed, qualified under the
Federal Rules of Evidence. Nevertheless, arguments that the scientific or technical
experience and knowledge of Dr. Jensen and Dr. Tippett do not match the alleged
level of ordinary skill in the art are unpersuasive as there is no requirement of a
perfect match between the expert’s experience and the field of the art in question.
See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir.
2010). Dr. Tippett need not be an adhesive tape engineer to testify regarding
glueless carpet tile installations, and Dr. Jensen need not be an expert in carpet tile
installations to testify regarding adhesive tape engineering for carpet products. See
Pet. Reply 34 (setting forth that Dr. Jensen has direct experience designing
adhesive tapes for installation of carpet products and that Dr. Tippett has
experience developing glueless carpet tile installation methods). Furthermore, we
are capable of discerning from the testimony, and the evidence presented, whether
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the witness’s testimony is entitled to any weight, and taking into consideration the
areas of expertise of each witness in weighing that testimony accordingly.
With these considerations in mind, we now turn to determining the
differences between the prior art and the claims-at-issue.
D. ANTICIPATION BY PACIONE
With respect to the asserted ground of unpatentability based on anticipation
by Pacione, we have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in each of those
papers. We are persuaded, by a preponderance of the evidence, that claims 1, 2,
57, and 9 are anticipated by Pacione.
1. Overview of Pacione (Ex. 1006)
Pacione discloses rigid anchor sheets for use under carpets or other
decorative coverings. Ex. 1006, 1:1113. Pacione describes an advantage of
allowing the carpet or other decorative covering to be attached to an underlying
undersurface at only a few discrete attachments points or, even in some cases, not
attached at all, so as to be removable easily. Id. at 2:4246. The Pacione anchor
sheet is both flexible and rigid—the rigidity is such that the anchor sheet can
support itself without droop, unlike cloth or fabric or tape. Id. at 3:5662. To
secure adjoining anchor sheets, Pacione uses “means for detachable attachment”
disclosed as a hook and loop attachment or adhesive as an alternative. Id. at
4:4855. In one embodiment, shown in Figure 13, reproduced below, Pacione
describes smaller anchor sheets 89 that can be used with carpet tiles 91. Id. at
14:2431.
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Figure 13 depicts the overlapping layout of carpet tiles 91 on anchor
sheets 89 forming a contiguous mass that is “sufficient to provide for stable
installation without attachment to a floor.” Id.
2. Comparison of Pacione and Claims 1, 2, 57, and 9
Independent claim 1 is directed to a system for installing carpet tiles on an
underlying surface. Ex. 1001, claim 1. That system comprises a plurality of carpet
tiles and a plurality of carpet tile connectors for connecting the plurality of carpet
tiles. Id. Claim 1 further recites limitations concerning the carpet tile connectors,
such as a film with a layer of adhesive comprising sufficient shear strength and the
film comprising plastic material sufficiently stiff. Id.
The Petition identifies where in Pacione each of the recited limitations is
disclosed:
a) anchor sheets to tie the decorative covering together as a functional unit,
where the unit has a flexible decorative covering such as carpet as shown
in Figure 13 (the claimed “plurality of carpet tiles” and “a plurality of
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carpet tile connectors for connecting the plurality of carpet tiles”) (Pet.
14);
b) the anchor sheets preferably made of thin polycarbonate, polyethylene,
polypropylene, or polyester and being relatively thin and flexible, but
relatively rigid so they do not droop (the claimed “film having two sides”
and “the film comprises a plastic material sufficiently stiff”) (id. at
1415);
c) anchor sheets with hook and loop attachment system that could also be an
adhesive (the claimed “layer of adhesive . . . capable of forming a bond
between the film and the undersides of adjacent carpet tiles”) (id. at 14);
d) installed anchor sheets and coverings form a contiguous floor covering
that has sufficient rigidity and horizontal plane stability (the claimed
“sufficient shear strength”) (id. at 15, 21).
With regard to dependent claims 2, 57, and 9, the Petition notes that
Pacione discloses: polyester as the material for the anchor sheet of thickness from
0.010 to 0.030 inches (commensurate with claims 2, 5, and 6); hook and loop
attachments that could also be an adhesive providing for attachment and
reattachment (commensurate with claim 7); and carpet tiles that “free float” on the
floor (commensurate with claim 9). Pet. 1516 (citing Ex. 1006, 4:6651,
9:4951, 16:4650).
Patent Owner challenges the applicability of Pacione to the claims based on
three arguments: (1) Pacione does not disclose installation of carpet tiles (PO
Resp. 30, 35); (2) Pacione does not disclose a “connector” (id. at 31, 35); and
(3) Pacione does not disclose the “sufficient shear strength” limitation (id. at 32,
35). See id. at 3036. We address each of Patent Owner’s arguments in turn.
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a. Carpet Tile Installations
Patent Owner attempts to distinguish the Pacione carpet pieces on the basis
that these pieces do not have the structural backing of “carpet tiles.” Id. at 30.
Accordingly, Patent Owner proffers that a person of ordinary skill in the art would
not look to Pacione for guidance or useful information regarding an installation
system for carpet tiles. Id. We are not persuaded by this argument. The body of
claim 1 recites that carpet tiles have an underside, but does not recite any particular
characteristic of a carpet tile. Furthermore, consulting the specification, we reach
the conclusion that a “carpet tile” is not limited to structurally backed carpet, as
Patent Owner argues. The specification describes carpet “tiles” broadly, including
that these are “modular floor covering units” and could be made of suitable
modular materials. Ex. 1001, 4:44, 5155. We find no description in the
specification limiting the use of the claimed “connectors” with modular floor
covering units having a particular structural backing. Moreover, Pacione discloses
that the decorative carpet pieces there disclosed may be “carpet tiles.” Ex. 1006,
14:2531. Pacione further discloses that the pieces may be rigid, such as parquet
flooring. Id. at 14:31–33. Finally, the testimony Patent Owner proffers for the
proposition that the Pacione carpet tiles are not “carpet tiles,” as described in the
’282 patent, is insufficient for us to restrict the claims to an unrecited and
unwarranted limitation of structural backing for carpet tiles.
b. Connectors in Pacione
Patent Owner argues that the anchor sheets form a “subfloor” in Pacione and
are not “connectors,” as recited in claim 1. PO Resp. 31. The challenge is based
on two arguments. First, the anchor sheets do not connect carpet tiles to each
other, and, second, they are as large as the carpet pieces. Id.
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With regard to the first argument, we are not persuaded that the anchor
sheets in Pacione do not “connect” carpet tiles. As pointed out by Petitioner,
Pacione discloses that “the anchor sheet acts to tie the decorative covering together
as a functional unit.” Pet. 14 (citing Ex. 1006, 1:1317) (emphasis added). To
“tie” is to “connect,” and, therefore, arguments to the contrary are not supported by
Pacione.
We also find unpersuasive the argument that Pacione’s anchor sheets are too
large to be “connectors.” This argument is based on Patent Owner’s proposed
construction of “connector.” As discussed above in the claim construction section,
we disagree with Patent Owner that the plain and ordinary meaning of the term
includes a size limitation or constraint.
Finally, Patent Owner contends that because an embodiment in Pacione
discloses pre-attached anchor sheets, those anchor sheets would not be usable at an
installation site to link carpet tiles. PO Resp. 31. Patent Owner, however, fails to
point out claim language that requires connectors to be usable only at installation
sites or connectors that are not pre-attached to a carpet tile. Indeed, we find
evidence to the contrary, because the specification of the ’282 patent describes an
installation method where the connector is pre-attached. See, e.g., Ex. 1001,
9:2931 (describing a method of pre-positioning the connectors at desired
locations on the tiles during manufacture). Accordingly, we find unpersuasive
Patent Owner’s arguments above, that Pacione does not disclose the “connector.”
c. Sufficient Shear Strength Limitation
Patent Owner argues that the Pacione disclosure of adhesive is insufficient to
teach the “sufficient shear strength” limitation. PO Resp. 3234. According to
Patent Owner, the disclosure in Pacione is no more than a suggestion to try
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adhesive and is not an enabling disclosure. Id. We agree with Patent Owner that
the “sufficient shear strength” limitation is recited as a property of the layer of
adhesive. See id. at 33 (Patent Owner arguing that the rigidity and stability are
characteristics of Pacione’s anchor sheets, not the adhesive). Nevertheless, the
“sufficient shear strength” property results in a connector that prevents adjacent
tiles from moving relative to the connector or each other and thereby creating gaps
between the adjacent tiles after installation. That is, an adhesive would have the
requisite shear strength when the connector accomplishes the prevention of the
relative movement that creates gaps.
In Pacione, we find that the anchor sheets, the recited “connector,” are
attached with a detachable attachment that could also be an adhesive. See Pet. 14
(citing Ex 1006, 4:5155). With Pacione’s anchor sheets using the disclosed
detachable attachment (including the adhesive option) the installed anchor sheets
form a contiguous floor covering having sufficient rigidity and horizontal plane
stability or shear force stability. See id. at 1415 (citing Ex. 1006, 4:1520,
5:39). We find this disclosure particularly significant because it specifically
attributes the shear force stability to the installed anchor sheets under the carpet
pieces, i.e., the recited “connectors” with the layer of adhesive. It follows from
this express disclosure of shear force stability that the installed carpet tiles are
stable in the horizontal plane, such that their movement with respect to each other,
and with respect to the anchor sheets, would be restricted. Despite Patent Owner’s
arguments, Petitioner sufficiently establishes by a preponderance of the evidence
that Pacione’s anchor sheets, under carpet tiles, exhibiting the disclosed shear force
stability, prevent the recited relative movement that creates gaps as recited in the
claims.
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As for the argument that Pacione is not enabled with regard to the disclosure
of using adhesive in place of hook and loop, we are not persuaded that such a
disclosure would not inform one of ordinary skill in the art how to make the
claimed connector. See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“Such
possession is effected if one of ordinary skill in the art could have combined the
publication’s description of the invention with his [or her] own knowledge to make
the claimed invention.”). It is undisputed that Pacione discloses replacement of the
hooks with adhesive. Patent Owner makes the point, however, that Pacione does
not disclose the characteristics of the adhesive. PO Resp. 33. The question for us
to decide is whether Pacione’s disclosure of adhesive is enabled sufficiently to
allow a person of ordinary skill in the art to make the claimed connector. The lack
of details regarding particular adhesive properties, however, does not negate that
Pacione discloses the adhesive application together with anchor sheets that achieve
shear force stability when installed. See, e.g., id. (citing Ex. 2012, 162:2163:2,
174:22175:4, as support for the proposition that Pacione is silent regarding
numerical values for the properties of the adhesive).
9

Furthermore, the testimony of Messrs. Wood and Endrenyi, proffered by
Patent Owner to support its contention, does not persuade us that disclosure of
adhesive in Pacione is not enabling. Id. (citing Exs. 2014 ¶ 132, 2017 ¶¶ 131,
132). That testimony focuses on whether Pacione teaches an adhesive that would
prevent lateral movement, a narrow view of the claims that we do not adopt per our
claim construction discussion above. See Exs. 2014 ¶ 132, 2017 ¶ 132. As already

9
We note that Patent Owner’s contention in this regard seems at odds with the
disclosure of the ’282 patent, which does not describe any particular numerical
values of the property of the adhesive with respect to the shear strength property.
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stated, replacing the hook-and-loop mechanism with an adhesive having the
properties of hook and loop, such as good horizontal strength, is taught expressly
in Pacione. Ex. 1006, col. 16, ll. 4650 (“A permanent adhesive can be used for a
permanent bond between tile 114 and anchor sheet 112 or a temporary adhesive
having the properties of hook and loop (i.e. [c]an be attached and reattached and
good horizontal strength) can be used.”). We are not persuaded, on the record
before us, of Patent Owner’s opposition on the basis that Pacione’s disclosure of
using adhesives in place of hook and loop attachment is a mere suggestion and not
enabling.
In summary, Patent Owner’s arguments are not persuasive to overcome the
evidence presented by Petitioner that claims 1, 2, 57, and 9 are anticipated by
Pacione. Based on the foregoing, we determine that Petitioner has proven by a
preponderance of the evidence that claims 1, 2, 57, and 9 are unpatentable as
anticipated by Pacione.
E. OBVIOUSNESS BASED ON COMBINATIONS OF REFERENCES
The remaining asserted grounds assert obviousness over various
combinations of prior art. We now turn to the analysis of the obviousness grounds
primarily based on Kinoshita in combination with Pacione, Robinson, and
Matthews. The scope of Kinoshita, Robinson, and Matthews is described below by
way of an overview.
1. Overview of Kinoshita (Ex. 1007)
Kinoshita is directed to a method for laying carpet tile. Ex. 1007, Abstract.
The object of Kinoshita’s method is to lay carpet tiles easily and without the use of
floor adhesive. Id. The result is laid carpet tiles that do not rise up and peel off
when using a vacuum cleaner, even if the carpet tile is lightweight. Id. Figure 1 of
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Kinoshita, reproduced below with annotations, illustrates the laid carpet tiles using
the described installation method. Id. ¶ 9.

As shown in annotated Figure 1 above, carpet tile units 1 (highlighted in
orange) are laid out with pieces of adhesive tape 2 at the corners to constitute
carpet C. Id. The square pieces of adhesive tape 2 are arranged on the floor facing
up and adhere to carpet tile units 1 to form an interlinking pattern. Id. ¶¶ 7, 10.
The rear face of adhesive tape 2 is preferably an anti-slip material (or rubber). Id.
¶ 12.
2. Overview of Robinson (Ex. 1014)
Robinson describes a pressure-sensitive adhesive tape with a biaxially
oriented polypropylene backing. Ex. 1014, 1:1014. Robinson describes the
properties of biaxially oriented propylene as desirable in a pressure-sensitive
adhesive tape, including age resistance, moisture resistance, tear strength,
elongation, tensile strength, solvent resistance, flexibility, heat stability, modulus
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of five percent elongation, and economics. Id. at 1:45–2:44. Used as a backing for
pressure-sensitive tape, the biaxially oriented polypropylene film varies in
thickness from 0.5 to 3.0 mils, preferably from about 0.73 to 2.0 mils. Id. at
2:4549.
3. Overview of Matthews (Ex. 1011)
Matthews describes seam tape for use in carpet seams. Ex. 1011, 1:10. One
embodiment of Matthews describes the dimension of the base sheet of a tape
having a width of approximately 2.5 to 7 inches. Id. at 7:23.
4. Comparison of Independent Claim 1 With Regard to the Grounds
Based on Kinoshita in Combination with Other References
Petitioner asserts that Kinoshita teaches: (a) adhesive tape pieces 2,
unattached to the floor and with the adhesive side facing up for linking carpet unit
tiles (the claimed “carpet tiles,” “connectors,” “film,” and “layer of adhesive”)
(Pet. 2223); and (b) adhesive tape pieces 2 that are installed on lightweight-
carpet-tile units to prevent the units from rising up and peeling off (the claimed
“sufficient shear strength” and “prevents adjacent tiles from moving relative to the
connector or each other thereby creating gaps between the adjacent tiles after
installation”) (Pet. 23).
Patent Owner challenges Petitioner’s assertion that Kinoshita teaches the
claimed “connectors,” because Kinoshita lacks description, explicitly or implicitly,
of the adhesive tape properties or performance to prevent lateral movement, and,
therefore, the adhesive of the Kinoshita tape cannot be said to have “sufficient
shear strength.” PO Resp. 2529, 3637. We address Patent Owner’s arguments
in turn.
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a. Sufficient Shear Strength Limitation
We have construed “sufficient shear strength” to mean having adequate
strength to resist shear. The claims attribute this strength to the layer of adhesive
with the functional requirement that it prevent movement of the connector, the
movement creating gaps. Kinoshita teaches that the adhesive tape links the carpet
units together to form an entire carpet that, even if using light weight carpet units,
the installed carpet would not rise and peel off. Ex. 1007 ¶ 18. From this teaching
we can infer that Kinoshita’s tape is strong enough to perform as described, i.e., to
connect the carpet units forming a contiguous mass of carpet flooring that
withstands the rigors of regular cleaning. Although Kinoshita does not disclose
details of the properties of the tape, such as a range of shear strength or peel
strength for the installation disclosed, its lack of detail in this regard is not fatal to
the contention that Kinoshita’s adhesive tape renders obvious the use of a layer of
adhesive with sufficient shear strength to prevent relative movement—and gaps—
in a carpet tile installation.
First, the aspect of Kinoshita’s adhesive tape preventing lifting is applicable
to the prevention of relative movement because we have determined that the claims
are not limited to only lateral movement—or lateral gaps. That is, we find that
Kinoshita’s prevention of rising up “prevents adjacent tiles from moving relative to
the connector or each other” as claimed. Furthermore, Petitioner has sufficiently
established by a preponderance of the evidence that the adhesive tape of Kinoshita
is strong enough to resist movement when vacuuming. Whether Patent Owner
characterizes it as vertical movement is of no relevance, because the claims do not
exclude the prevention of vertical movement.
Second, we are not persuaded that Kinoshita does not teach any lateral
movement or gaps. It is common sense that as the vacuum suction is applied on
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the surface of the installed floor, the direction of the suction force has at least two
directions: lateral and vertical. Anyone familiar with the act of vacuuming
understands that as the vacuum cleaner moves on the surface, the horizontal
movement causes at least a force pulling horizontally on the carpet. Because
Kinoshita expressly teaches that the installed carpet units resist the pull of the
vacuum cleaner, we understand Kinoshita to teach that the linked carpet units resist
both the lifting force and the pulling force. It makes sense that if the Kinoshita
carpet units do not peel off, there will not be gaps, vertical or otherwise.
10
We do
not need expert testimony or an express disclosure in the art to understand the
common sense operation and result of vacuuming a carpet tile floor without rising
up and peeling off. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (holding that an analysis of obviousness “may include
recourse to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion”).
Furthermore, we do not agree with Patent Owner’s contention that a person
of ordinary skill in the art would not have believed that Kinoshita’s tape would be
successful. See PO Resp. 2627 (arguing that Kinoshita’s tape would not prevent
lateral tile movement because of the undisputed reputation of adhesive tape failing
in carpet tile installations). The testimony of Declarants supporting Patent
Owner’s contention focuses, at least in part, on Kinoshita’s silence regarding shear

10
The Endrenyi and Wood Declarations assert that Kinoshita does not state that the
individual tiles will not peel off their respective tape pieces. Ex. 2014 ¶ 106; Ex.
2017 ¶ 108. We find this testimony not credible. Kinoshita’s carpet tiles are
adhered only to the tape (not the floor), and, therefore, a teaching of “peeling off”
could only refer to the carpet tiles detaching, separating, or otherwise moving from
the tape.
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strength of the disclosed tape and that Kinoshita is not concerned with preventing
lateral movement or lateral gaps. See id. (citing Ex. 2014 ¶¶ 108112; see
Ex. 2017 ¶¶ 110-114). Again, the claims are not limited to preventing only lateral
gaps or lateral movement. Moreover, we are not persuaded that Kinoshita refers
only to conventional adhesive tape, and that, therefore, the adhesive tape in
Kinoshita would have been known to fail. Kinoshita expressly describes an
embodiment in which the backing of the tape and the “adhesive power” is designed
for the specific purpose of making installation of carpet tiles easier and linking the
underside of the carpet units. See Ex. 1006 ¶ 12. This suggests that Kinoshita’s
adhesive tape is intended for use in carpet tile installations, and not merely some
conventional tape that would be expected to fail at maintaining carpet tiles linked
as described.
Lastly, we credit the testimony of Dr. Tippett and Dr. Jensen in that the
Kinoshita disclosure confirms the knowledge of a person of ordinary skill in the art
regarding the use of adhesive tapes for carpet tile installations. For the reasons that
follow, we are not persuaded by Patent Owner’s characterizations of their
testimony that engineering adhesive tape for carpet tile installations was vastly
complex or would involve extensive trial and error. See PO Resp. 27–28. First,
we acknowledge that Petitioner does not rely solely on Kinoshita as disclosing all
the attributes of the adhesive tape. Indeed, the Dr. Tippett Declaration clarifies
that his opinion relies on the disclosures of Kinoshita to the degree it describes the
configuration and performance of the installed carpet units, e.g., a “floating”
installation, edge-to-edge configuration, unitary installation, etc. Ex. 1015
¶¶ 14.114.2. We credit Dr. Tippett, who has expertise and knowledge of carpet
tile installations, when he declares that the installation described in Kinoshita
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would have no “gapping” at the seams, and, therefore, the tape, being single-sided,
would have to include an adhesive that would resist movement of the tiles. Id.
¶¶ 14.414.5. It makes sense that a method of carpet tile installation for
commercial or household use would aim for carpet tiles that, after installation,
remain abutted. See Ex. 1007 ¶ 1 (“tile that is used in offices and homes”).
Dr. Tippett’s Declaration further states that Kinoshita supports his conclusions of
the basic requirements for the use of adhesive tape in a carpet tile installation.
Ex. 1015 ¶ 14.6. To support his conclusions, Dr. Tippett cites to Kinoshita
teaching pre-connected tiles, which are installed as a block of tiles. Id. For this
installation to be successful, the adhesive tape of Kinoshita, according to Dr.
Tippett, “must include an adhesive with sufficient shear strength and sufficient
peel strength to prevent movement of the tiles relative to one another and/or the
tape pieces.” Id.
The Dr. Jensen Declaration also concludes that the teachings in Kinoshita
confirm that a person of ordinary skill in the art would select an adhesive tape with
the recited shear strength. First, Dr. Jensen opines that suitability for the intended
purpose is a core consideration when selecting or designing tape for a given
application. Ex. 1016 ¶ 18.2. His Declaration then lists the criteria to consider
when selecting a tape that would maintain the Kinoshita carpet units connected and
abutting (in an edge-to-edge configuration). Id. ¶¶ 18.318.5 (listing adhesive
compatibility with the tile backing, greater cohesive strength than adhesive
strength, appropriate elastic modulus, and thickness of the backing). Once Dr.
Jensen arrives at the basic requirements of an adhesive tape selection, he looks to
Kinoshita once more to confirm that Kinoshita recognizes these requirements. Id.
¶¶ 18.618.11 (establishing, among other tape requirements, that, because
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Kinoshita discloses multiple pre-connected tiles being handled as a block, the
adhesive tape would need to have sufficient shear adhesion and peel adhesion to
prevent the carpet tiles from pulling or twisting apart from each other while the
tiles are moved).
Based on the cited testimony, we are not persuaded that Petitioner is relying
on a theory of inherency with regard to whether Kinoshita discloses the “sufficient
shear strength” limitation. Therefore, the arguments by Patent Owner rebutting the
alleged “inherency” are unpersuasive. See PO Resp. 2829. Petitioner relies on
what Kinoshita teaches to a person of ordinary skill in the art. That person is a
person of ordinary creativity, not an “automaton.” KSR, 550 U.S. at 421. We “can
take account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. Therefore, based on the evidence presented, we
are persuaded that Petitioner sufficiently establishes by a preponderance of the
evidence that Kinoshita teaches, to a person of ordinary skill in the art, the use of
adhesive tape for carpet tile installations where the adhesive has “sufficient shear
strength,” per our construction of this phrase.
b. Material Sufficiently Stiff Recited in Independent Claim 1
Claim 1 recites that the film comprises “plastic material sufficiently stiff for
a connector positioned partly in contact with an underside of a carpet tile to project
beyond the edge of the carpet tile in roughly the same plane as the underside of the
carpet tile.” Ex. 1001, claim 1 (hereinafter “stiffness limitation”). Petitioner relies
on Pacione’s disclosure of a flexible, but relatively rigid anchor sheet as disclosing
this limitation. Pet. 2728 (citing Ex. 1006, 1:1112, 3:6062).
Patent Owner challenges the asserted combination of Kinoshita and Pacione
because nothing in Kinoshita teaches or suggests that the adhesive tape pieces
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should be stiff, no one in the industry has “ever made that alleged ‘obvious’ design
choice,” and a person of ordinary skill in the art would not look to Pacione to make
the alleged combination. See PO Resp. 37. We are not persuaded by these
arguments.
First, Kinoshita does not need to teach or suggest a stiff adhesive tape for the
modification to be obvious. See KSR, 550 U.S. at 418 (“[T]he [obviousness]
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”). Second, Patent
Owner does not cite any authority requiring that for a modification to be obvious,
someone must have made the alleged combination. Further, as to challenge of the
rationale for the combination of Kinoshita and Pacione, we note that if the
proposed modification is a predictable variation, it is likely barred by § 103. Id. at
417. In the instant case, the Petition states that it would have been obvious to one
of ordinary skill in the art to use a sheet having some degree of rigidity as
described in Pacione to maintain the tiles in a flat contiguous state and for ease of
handling during installation. See Pet. 27; Ex. 1015 ¶ 14.2; Ex. 1016 ¶ 18.8 (“tape
pieces may need to be stiff enough to install them with a single hand, as is
commonly desired for many tape applications”). No unpredictability has been
alleged regarding Kinoshita’s adhesive tape pieces modified to include the rigidity
taught in Pacione. Furthermore, Patent Owner has not alleged that such a
modification would be beyond the level of an ordinarily skilled artisan. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Regarding the level of ordinary skill, Patent Owner’s attack of Dr. Jensen’s
opinions on the basis that he is not an expert on carpet tile installations has been
addressed above and need not be repeated here.
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Patent Owner also argues that a person of ordinary skill in the art would not
incorporate the rigidity of Pacione’s anchor sheets to the adhesive tape pieces of
Kinoshita. PO Resp. 3839 (arguing, for example, that Pacione’s anchor sheet
would be detectable underfoot and make the floor seem uneven if installed as
disclosed in Kinoshita). The arguments are unpersuasive because the obviousness
inquiry focuses on what the combined teachings would have suggested to those of
ordinary skill in the art, not whether the feature of the rigidity of Pacione could be
bodily incorporated in the Kinoshita adhesive tape. See In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”)). It is also
unpersuasive that Pacione’s anchor sheets have additional functions of providing
stable backing for carpet pieces. See PO Resp. 38. Pacione need not solve the
same problems addressed in Kinoshita and vice versa. See Cross Med. Prods., Inc.
v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of
ordinary skill in the art need not see the identical problem addressed in a prior art
reference to be motivated to apply its teachings.”). The rigidity of anchor sheets
has been alleged to assist in maintaining a flat tile installation and ease of handling
of during installation. See Ex. 1016 ¶ 18.8. That rigidity, however, is tempered
with flexibility. For example, Pacione teaches that the anchor sheets are “a
relatively thin flexible but relatively rigid anchor sheet for use under carpets.”
Ex. 1006, 1:1112, 3:5662 (flexible in the sense that it can bend and be rolled).
We are persuaded that Petitioner has sufficiently established by a preponderance of
the evidence that Pacione teaches the stiffness limitation. And we are persuaded
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that the flexible, but rigid, thin plastic film of the anchor sheet provides benefits of
ease of handling that would motivate a person of ordinary skill in the art to
consider selecting, for Kinoshita’s adhesive tape, a thickness that offers rigidity
and flexibility as taught in Pacione.
5. Dependent Claims 214
Concerning the dependent claims, Petitioner’s claim charts allege that—in
combination with Kinoshita—Pacione, Robinson, and Matthews disclose the
various recited limitations. Pet. 2630.
Patent Owner disputes the evidence presented with respect to dependent
claims 3, 4, 8, and 14. PO Resp. 39–49. We analyze each of these dependent
claims.
a. Dependent Claims 3 and 8
The Petition alleges that additional recited limitations of dependent claims 3
and 8 are taught by Robinson, as disclosed in the proffered claim charts.
Pet. 2930. More particularly, Petitioner asserts that the installation of carpet units
shown in Figure 1 of Kinoshita, combined with teachings of the tensile strength
and elongation of Robinson’s film backing, renders obvious dependent claims 3
and 8. Id. (referring to Kinoshita as applied to claim 1). Patent Owner challenges
this assertion by arguing that the Petition does not explain the reasons a person of
ordinary skill in the art would either select Robinson or use it with Kinoshita, and
that such a person would not have a reasonable expectation of success. PO Resp.
4142. Patent Owner further proffers that Robinson has no applicability to either
floorcoverings or carpet installations. Id. at 41. Furthermore, Patent Owner argues
that the combination of Kinoshita, Pacione, and Robinson is rooted in hindsight.
Id. at 43. We are not persuaded by Patent Owner’s arguments.
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As to the argument that the Petition does not provide a reasonable rationale,
we note that the Petition states that the use of film as a backing for adhesive was
known and that one of ordinary skill in the art would find it obvious to select the
properties of the film suitable for the intended use of Kinoshita, i.e., connecting
carpet tiles to one another. Pet. 20. To support this rationale, Petitioner proffers
the Declaration of Dr. Tippett, who attests that “one who is even reasonably
familiar with carpet tile installation systems could easily have identified an
adhesive tape that would be suitable, or could have worked with an adhesive tape
company to do so.” Ex. 1015 ¶¶ 14.10–14.11. According to Dr. Tippett, it is
routine for adhesive tape companies to provide guidance regarding tape selection,
such that an adhesive tape engineer or scientist would assist in making a suitable
selection for the intended purpose of joining carpet tiles to one another.
Id. ¶ 14.10. More particularly to the tensile strength teachings of Robinson,
Dr. Tippett states that one of ordinary skill in the art would select film-backed
adhesive tapes over paper-backed tapes, because the latter lack the strength needed.
Id. ¶ 14.9. He further states that a standard choice of film or tape backing is
biaxially oriented polypropylene, to which Robinson is directed. See id.
The selection of biaxially oriented polypropylene film is further confirmed
by Dr. Jensen, who has been shown to have particular knowledge of tape
engineering. See Ex. 1016 ¶ 18.10. Dr. Jensen attests that the number of choices
for film backing is a reasonable number, such as polypropylene, polyester, paper,
polyethylene, cellophane, and laminates. Id. And one of ordinary skill in the art
would have selected a biaxially-oriented (either polyethylene or polypropylene)
film backing for the Kinoshita installation, according to Dr. Jensen. Id. A
proffered reason for this selection being obvious to a person of ordinary skill in the
art is that such a film is readily available and of low cost. Id. Another proffered
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reason for selecting this film is that it does not stretch or deform as readily. Id.
Therefore, according to Dr. Jensen, an elongation break or ultimate elongation of
100200% is expected. Id.
Accordingly, we find that Petitioner has shown sufficiently a rationale for
selecting Robinson’s teaching of a biaxially-oriented propylene tape backing,
notwithstanding that the teachings are not directed, specifically, to carpet tile
installation tape. The rationale is reasonable, particularly in light of the teachings
in Robinson regarding the specific film characteristics to consider, a few of which
are elongation, tensile strength, and flexibility. See Pet. 5758 (citing Ex. 1014,
1:572:31). We do not agree that the teachings in Robinson are being considered
in hindsight, because Robinson itself teaches reasons for a person of ordinary skill
in the art to select biaxially-oriented propylene tape backing with the elongation
and tensile strengths disclosed. See id. We do not agree that the motivation to
apply Robinson’s teachings is, solely, the claims of the ’282 patent.
We now address the argument that Robinson exhibits an easy tear
characteristic that Patent Owner argues is unsuitable for carpet tile installations.
PO Resp. 41. Mr. Endrenyi states that Robinson teaches a backing that has a
relatively low cross tear to permit easy tearing when desired for dispensing.
Ex. 2014 ¶ 147; see also Ex. 2017 ¶ 148 (Mr. Wood stating the same). He opines
that easy tearing would not be a desirable characteristic of a carpet tile connector
because the carpet tile connector would need to resist tearing in all directions.
Ex. 2014 ¶ 148.
11
Patent Owner’s argument and supporting evidence, however, is

11
We note that during cross-examination, Mr. Endrenyi testified regarding
Robinson’s disclosure of high edge tear and low cross-tear by comparing these to
the product called Tactiles, not the claim. Ex. 1039, 206:312. Therefore, the
distinction is unpersuasive.
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not commensurate with the scope of claims 3 and 8. For example, claim 3 recites a
specific tensile strength, not tear strength, and “in at least one direction.” There is
no recitation in claim 3 of a tear strength, or a specific tensile strength in all
directions. Review of claim 8 yields the same conclusion, because the claim
recites stretching at least 120% of “the dimension.” Patent Owner does not
challenge that the recited tensile strength and elongation parameters are disclosed
by Robinson. Accordingly, arguments that Robinson would be inapplicable or
inoperable because of a low cross tear disclosure are not persuasive.
b. Claim 4
Claim 4 recites connectors with a surface area of approximately 9 square
inches. Ex. 1001, 10:4648. The Petition alleges obviousness of these claims by
relying on the combination of Kinoshita, Pacione or Robinson, and Matthews.
Pet. 40–41. Patent Owner challenges the combination arguing that the “more-
glue” belief would teach against selecting a size for the Kinoshita adhesive tape to
encompass a surface area of approximately 9 square inches. PO Resp. 44–45. We
are not persuaded by Patent Owner’s argument. The argument that those of
ordinary skill in the art would believe that “more-glued-surface-area is better,”
even if true, does not negate the fact that Kinoshita teaches a glueless installation
of carpet tiles. Kinoshita is a clear and express departure from the “more-glue”
belief. With that knowledge and the express disclosure in Kinoshita of adhesive
tape pieces that are indisputably smaller in surface area than the carpet tiles, we
find unpersuasive the argument that a “more-glue” belief would turn a person of
ordinary skill in the art away from teachings of glueless attachments, such as those
in Kinoshita.
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Furthermore, we are not persuaded by Patent Owner’s arguments
challenging the proffered rationale for the alleged combination. See PO Resp.
4547 (arguing that the Petition provides no credible rationale, no rationale for
cutting the Matthews tape, and that Petitioner’s analysis is impermissible
hindsight). Kinoshita teaches that an adhesive tape piece has a surface area smaller
than the carpet unit surface area. See Ex. 1007, Fig. 1. Nevertheless, there is no
evidence that Kinoshita is drawn to scale. See Pet. Reply 8 (arguing that
Kinoshita’s drawings cannot be used to determine the precise dimensions of the
tape pieces). Therefore, other than the disclosure of the adhesive tape pieces being
smaller than the carpet tiles, it is not possible from a study of Kinoshita to
understand the precise dimensions and relative surface areas of the carpet pieces
and the adhesive tape pieces.
Furthermore, we find that Matthews discloses a carpet tape with a base sheet
that is 2 ½ to 7 inches wide. Ex. 1011, 5:68, 7:23. As for a rationale to combine
Kinoshita with Matthews, Petitioner offers evidence that it would have been
obvious to one of ordinary skill in the art to consider tape widths of Matthews in
designing tape pieces for use in Kinoshita to provide stability along the seams of
carpet pieces. Pet. 40 (citing Ex. 1015 ¶ 17.2; Ex. 1016 ¶ 20.2). Cutting the tape
disclosed in Matthews into a square shape, which is the shape disclosed in
Kinoshita, would result in a range of squares from 6.25 to 49 square inches, which
includes the range of 9 square inches as disclosed in the claim. See id. at 41.
Therefore, Kinoshita expressly teaches an adhesive tape piece smaller than
the carpet tile and a square shape (Ex. 1007 ¶ 17, Fig. 1), and, thus, cutting the
Matthews tape to achieve that square shape is nothing more than using Kinoshita
itself as the teaching that motivates a person of ordinary skill in the art to cut the
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Matthews tape. Patent Owner’s arguments that no rationale is proffered in the
Petition are unpersuasive. Similarly unpersuasive is the argument that the only
modification of the Kinoshita tape pieces would be to apply Matthews to extend
the tape along the entire seam. See PO Resp. 47. This argument obfuscates the
obviousness analysis presented in the Petition. The issue we decide is not whether
the teaching in Matthews of applying tape to carpet is applicable to Kinoshita. As
already stated, we determine whether in light of Kinoshita’s teaching of square
adhesive tape pieces, cutting the tape disclosed in Matthews to a square shape
renders obvious the claimed invention. And we determine that it does.
Furthermore, we are not persuaded that Matthews has no applicability to the
claims at issue merely because the Matthews tape is incompatible with or
unsuitable for carpet tiles. See id. at 45; see also Pet. Reply 1011 (argument and
evidence by Petitioner that Matthews is applicable to carpet tiles despite being
directed to lighter materials).
c. Claim 14
Patent Owner argues that claim 14 identifies a sequence of installation steps
in a tile-connector-tile placement order. PO Resp. 47. According to this argument,
Kinoshita does not teach the limitations recited in claim 14 because the Kinoshita
installations are not in the recited order. Id. at 4849. For example, Patent Owner
contends that Kinoshita teaches laying all of the tiles first, and then connecting
them, or laying all of the tape pieces, and then installing the tiles. Id. at 49. What
Kinoshita fails to disclose, according to Patent Owner, is positioning the adjacent
tile after part of the connector is adhered to the first tile. Id. We find Patent
Owner’s arguments unpersuasive for two reasons.
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First, Kinoshita teaches or suggests the limitations recited in claim 14. As
Petitioner points out, Kinoshita teaches laying out all the carpet units, curling up
the corner, and placing the adhesive tape afterwards to link the corners. Pet. 2526
(citing Ex. 1007 ¶ 16). Kinoshita also teaches that, when re-laying the existing
carpet tiles, “tile carpet units are removed one by one,” and then new tile carpet tile
units are laid “in order using the same procedure.” See Pet. Reply 9 (citing Ex.
1007 ¶ 8). From these teachings advanced by Petitioner, we infer two different
methods of installation. For the first method, Kinoshita suggests that two carpet
tiles are placed on the floor, side-by-side, and that one of the tile’s corners can be
curled up to position the adhesive tape at the corner. We understand that this
positioning leaves some exposed portion of the adhesive tape such that, when
curling the adjacent tile’s corner, the exposed portion of the adhesive tape adheres
to the underside of the adjacent tile’s corner. We are persuaded that this first
method in Kinoshita teaches that “a first carpet tile is placed on the underlying
surface; a connector is then positioned so that only a first portion of the connector
adheres to the underside of the first carpet tile,” as recited by claim 14. We are
also persuaded that, under this first method, Kinoshita suggests positioning the
adjacent carpet tile adjacent to the first carpet tile such that “a second portion of the
connector extend[s] from the underside of the first carpet tile,” which is part of
positioning the connector, as recited in claim 14. We find that the action of curling
up a corner of the adjacent carpet tile moves or arranges at least part of the carpet
tile (the recited “positioning”) to complete the installation required by claim 14:
“so that the second portion of the connector adheres to the adjacent tile.”
Patent Owner argues that “curling up” of the tile corners, however, only
occurs after the tiles are “positioned” on the underlying floor. PO Resp. 49. This
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argument implies that the recited “position[ing]” cannot encompass the movement
of the tile’s corner to adhere that corner to the connector. The claim is silent,
however, regarding the degree or direction of movement of the adjacent tile to
accomplish positioning.
Notwithstanding our determination that Kinoshita’s first method, described
above, teaches or suggests the installation recited in claim 14, we also determine
that the further limitations recited in claim 14 are entitled to no patentable weight.
Claim 14, as discussed below, recites non-functional-descriptive material.
First, we have already determined that the combination of Kinoshita and
Pacione teach or suggest all the claim limitations recited in claim 1, which is an
apparatus claim. All the structural limitations regarding the carpet tiles and the
recited connectors have been shown to be taught by Kinoshita, with the recited
stiffness property taught or suggested by Pacione. Claim 14 adds a further
limitation to the system for installing carpet tiles, i.e. “the system further identifies
that to install the carpet tiles using the connectors,” steps are followed. Ex. 1001,
11:68 (emphasis added). The system, therefore, conveys information regarding
the steps to follow when installing the recited carpet tiles and the connectors. We
find no disclosure in the specification regarding how the “system further identifies”
the recited steps. We do find that, in the specification, the steps are part of a
disclosed installation method (id. at 8:3344), but, in claim 14, the steps are
identified by a system, not actually performed. In short, the system identifies the
installation steps by providing tangible instructions—a printed sheet of
instructions, for example, or instructions, description, or pictures. See Tr. 32:418.
When reviewing a claim that contains descriptive material, we focus on the
claim as a whole. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Printed
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matter is non-statutory subject matter if it does not have a functional relationship to
a substrate. See In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (observing that
“printed matter by itself is not patentable subject matter, because [it is] non-
statutory,” but finding that because the printed matter at issue—volumetric indicia
and a legend—had a “new and unobvious functional relationship” to the claimed
measuring receptacle, the printed matter had patentable weight). “‘Where . . .
printed matter is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.’” In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983)). “Although the printed matter must be considered, in that
situation it may not be entitled to patentable weight.” Gulack, 703 F.2d at 1385.
The rationale in the printed-matter doctrine is to prevent “the indefinite patenting
of known products by the simple inclusion of novel, yet functionally unrelated
limitations.” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir.
2010).
Patent Owner asserts that claim 14 recites a further identification and that is
“widely the practice and has long been the practice to include instructions provided
by the tile makers to installers.” Tr. 29:316. According to Patent Owner “[t]hose
[instructions] are often provided in print form and accompanying tiles,” “[a]nd
they are also on websites as well as probably other places.” Id. Patent Owner
distinguished Kinoshita, not on the basis that Kinoshita did not provide any
instructions, but that it did not provide the recited instructions. See id. at
29:2025; 31:19; see also id. at 30:1324 (“we are simply asking the court to
recognize the difference between the instructions of Claim 14 and the instructions
or descriptions of installation methods in Kinoshita”). The inescapable conclusion
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is that claim 14 is directed to printed matter in the form of instructions for
installing carpet tiles. Such printed matter has no functional relationship to the
carpet tiles, connectors, or the features of the film recited in claim 1. For example,
the instructions are not provided anywhere in particular, for example, they could be
on a website, wholly unrelated to the functions of the recited carpet tiles and the
connectors. The system performs in the same manner, whether the instructions are
on the carpet tile box, printed on the connector, or provided as diagrams or words.
In short, the structure or configuration of the instructions makes no difference to
the carpet installation system. The only argument presented by Patent Owner is
that the instructions themselves are novel. Nevertheless, even if the instructions,
with the recited sequence, were to have a functional relationship to the system, the
recited instructions differ from Kinoshita only in the content of those instructions,
which is not a patentable distinction.
A claim may not be argued as patentably distinct simply because it is alleged
to be a new product by virtue of including printed matter, even if that printed
matter itself is new. See In re Ngai, 367 F.3d at 1339. Thus, adding instructions to
a kit that describe a method of using the kit does not make the kit patentable over
the same kit with a different set of instructions. Although there are cases where the
descriptive material can form a functional relationship with the underlying
substrate, the addition of printed matter to the outside of a measuring cup, for
example, the fact that, in this case, there are instructions indicating a specific
sequence of installing carpet tiles does not change any of the components of the
system, namely the carpet tiles or the connectors and their features. That is, the
carpet tiles and the connectors are taught by the prior art, and the added
instructions for installing those carpet tiles with the recited connectors, i.e., the
printed matter, has no function of its own.
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We are further persuaded that allowing claim 14 to maintain patentable
weight would allow for repeated patenting of a known product merely by changing
the installation instructions. In re Ngai, 367 F.3d at 1339 (“If we were to adopt
Ngai’s position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.”). We, therefore, conclude
that the combination of Kinoshita and Pacione teach or suggest all the limitations
of claim 1, as described above, and that any argued difference between Kinoshita
and claim 14 is simply a difference in the content of the instructions. Such a
distinction does not change the functioning of the carpet tiles and connectors,
because any set of instructions does not change the operation of the carpet tiles and
connectors, and yields the same result, e.g., installation of a contiguous carpet tile
flooring with connectors placed at the corners of carpet tiles.
d. Remaining Dependent Claims
We have reviewed the briefs and the supporting evidence concerning the
additional limitations recited in dependent claims 2, 57, and 913 as being
obvious over combinations of Kinoshita and Pacione. See Pet. 2425, 2628.
Patent Owner does not challenge Petitioner’s evidence or arguments regarding the
additional limitations recited in these dependent claims. We are persuaded that
Petitioner has shown that the proffered prior art teaches those limitations.
6. Evidence of Secondary Indicia of Non-Obviousness
Notwithstanding what the teachings of the prior art would have suggested to
one with ordinary skill in the art at the time of the ’282 patent’s invention, the
totality of the evidence submitted, including objective evidence of nonobviousness,
may lead to a conclusion that the claimed invention would not have been obvious
to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–1472
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(Fed. Cir. 1984). Secondary considerations may include any of the following:
long-felt but unsolved needs, failure of others, unexpected results, commercial
success, copying, licensing, and praise. Graham, 383 U.S. at 17. Patent Owner
argues that numerous objective indicia demonstrate the non-obviousness of its
claimed invention. PO Resp. 50–56.
Before delving into the specific arguments and evidence of secondary
considerations, we note that it is not sufficient that a product or its use merely be
within the scope of a claim in order for objective evidence of nonobviousness tied
to that product to be given substantial weight. There must also be a causal
relationship, termed a “nexus,” between the evidence and the claimed invention.
Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir.
2005). A nexus is required in order to establish that the evidence relied upon
traces its basis to a novel element in the claim, not to something in the prior art.
Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337,
1347 (Fed. Cir. 2013). Objective evidence that results from something that is not
“both claimed and novel in the claim,” lacks a nexus to the merits of the invention.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
All types of objective evidence of nonobviousness must be shown to have
nexus. In re GPAC Inc., 57 F.3d at 1580 (nexus generally); see also Rambus Inc.
v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); Wm. Wrigley Jr. Co.
v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (copying); In
re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success).
The stronger the showing of nexus, the greater the weight accorded the
objective evidence of nonobviousness. See Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985).
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a. Long-Felt Need
Patent Owner argues that the application of glue for carpet tile installations
dominated the market and there was a need for viable glueless options and for
carpet installations with no lateral tile movement. PO Resp. 51. To establish
evidence of a long-felt but unresolved need, a patent owner must show that there
was a persistent problem that was recognized by those of ordinary skill in the art.
See In re Gershon, 372 F.2d 535, 539 (CCPA 1967). The problem must not have
been solved previously by another, and the claimed invention must, in fact, satisfy
the long-felt need. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768
(Fed. Cir. 1988).
Here, although there is some evidence that a prevailing installation for carpet
tiles involved applying glue to the floor, Patent Owner’s Response fails to show
when the problem first arose and how long this need was felt. See Tex.
Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir.
1993) (“[L]ong-felt need is analyzed as of the date of an articulated identified
problem and evidence of efforts to solve that problem.”); see also Ex. 1041,
141:1222 (Mr. Benny Wood, Declarant offered by Patent Owner, testifying that
he did not think that there was a long-felt need to eliminate glue from carpet tile
installations because there are situations when glue is better).
Further, Patent Owner fails to show that the alleged need for a glueless
installation was not solved by another. The record includes two references,
Kinoshita and Pacione, in the prior art that disclose installations of carpet tiles
without glue. The evidence presented shows that Pacione’s system, at a minimum,
satisfied the alleged need for no lateral tile movement. Petitioner also has
introduced evidence that at the time of the invention other flooring companies
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already had developed and sold glueless installation methods. Pet. Reply 12.
Furthermore, although two of Patent Owner’s Declarants state that the TacTile
product, alleged to have solved the need, included an adhesive layer that prevents
lateral tile movement, that testimony is conclusory and unsupported by any facts,
and, thus, is given little weight. See Ex. 2017 ¶ 73; Ex. 2030 ¶¶ 115116. The
cited portions of the Declarations of Mr. Thomas Anderson (Ex. 2022 ¶¶ 1533)
and Mr. Frank Endrenyi (Ex. 2014 ¶¶ 6873), also fail to reveal any evidence that
the TacTiles included the adhesive layer with sufficient shear strength that prevents
relative movement or the film with a plastic material sufficiently stiff.
For the foregoing reasons, the objective evidence proffered by Patent Owner
is insufficient to establish a long-felt, but unmet, need.
b. Unexpected Results and Skepticism
Patent Owner provides testimony of its Chief Innovations Officer and named
inventor, Mr. John Bradford, to show that there was skepticism. PO Resp. 52
(citing Ex. 2030 ¶¶ 2930). This testimony fails to show that those who are
alleged to express skepticism were experts in the field of the invention claimed in
the ’282 patent. Next, Patent Owner proffers Declarations from Messrs. Endrenyi
and Anderson as expressing skepticism when first exposed to TacTiles. Id. The
cited testimony, however, seems directed to aspects that are not claimed, such as
stabilizing the tiles. Id.
Finally, we are persuaded by Petitioner’s argument that Patent Owner failed
to show unexpected results. Pet. Reply 12. Patent Owner needed to show that the
claimed invention exhibits some superior property or advantage that one of
ordinary skill in the art would have found surprising or unexpected. See In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995). That carpet dealers and installers attempted to
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pull apart the connectors does not show either an advantage or superior property
that was unexpected by persons of ordinary skill in the art. Further, there is no
evidence that the carpet installers or dealers were persons of ordinary skill in the
art, e.g., there is no evidence of their knowledge of adhesive tape properties
suitable for carpet tiles.
c. Commercial Success
Patent Owner asserts that 158 million TacTiles connectors have been sold
since introduction of the product in 2006. PO Resp. 53. Various features are
alleged to contribute to this success, including the stiffness, small size, that they
engage the tiles at discrete locations within the installation, and that they avoid the
need for adhering the tiles to the floor. Id.
Even assuming that the TacTiles connectors include all the recited
limitations of the claims-at-issue, there is insufficient evidence in the record to
warrant a finding of commercial success that supports a conclusion of non-
obviousness. As we indicated before, glueless installations were known in the art
at the time of the invention of the ’282 patent. To the extent the alleged success is
based at least partly on this feature, Patent Owner has not shown that such success
is due to the merits of the claimed invention beyond what was readily available in
the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(finding the prior art possessed the function relied upon by the patent applicant to
establish unexpected results and, therefore, was not a basis for rebutting a prima
facie finding of obviousness); J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co.,
106 F.3d 1563, 1571 (Fed. Cir. 1997) (“[T]he asserted commercial success of the
product must be due to the merits of the claimed invention beyond what was
readily available in the prior art.”). Indeed, Petitioner points us to testimony of Mr.
Bradford stating that the reasons for selling the product to carpet tile customers
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varied, and that sales of carpet tiles were driven by many factors, including price.
See Pet. Reply 14.
Furthermore, Patent Owner’s Response neither argues nor points to evidence
of market share. See In re Baxter Travenol, 952 F.2d at 392 (“[I]nformation solely
on numbers of units sold is insufficient to establish commercial success.”); see also
In re Huang, 100 F.3d at 140 (declining to find evidence of commercial success
because “[a]though [the inventor’s] affidavit certainly indicates that many units
have been sold, it provides no indication of whether this represents a substantial
quantity in this market”). The testimony of the sales of TacTiles must be
correlated with evidence of market share, of which there is very little. The
Declaration of Mr. Bradford attests to there being an estimated increase of at least
13.4% of all commercial carpet tile sold annually in the United States. Ex. 2030
¶ 114. This evidence is insufficient. There is no indication that the increase is a
substantial quantity in the overall market. Further, there is no evidence of the
market share before the TacTiles connectors were introduced in the market. The
testimony regarding the purported 13.4% increase in sales also includes sales of
FLORDots connectors, which Patent Owner has not argued embody the claims-at-
issue. In short, Patent Owner provides no evidence that the 158 million of
TacTiles connectors sold represent a substantial quantity in the overall market.
d. Copying
Lastly, Patent Owner alleges that multiple copycat products have emerged
since the introduction of the TacTiles connectors. PO Resp. 5556. Copying, as
objective evidence of nonobviousness, requires evidence of effort to replicate a
specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010);
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
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2004). In the instant proceeding, the testimony proffered by Patent Owner in
support of this copying contention is devoid of any evidence from which we could
infer that the alleged copies resulted from an effort to replicate the product. See,
e.g., Ex. 2030 ¶¶ 117120 (asserting, without factual support, that introduction of
copies was due, in part, to Patent Owner’s success, and that all products are sold to
prevent gapping or undesired moving); see also, e.g., Ex. 2023 ¶ 9 (stating that an
Eco-sticker product “appeared” to copy Patent Owner’s product). The allegations
that the products look similar and are used to install carpet tiles without glue in no
way show that any of the entities producing those products actually copied Patent
Owner’s TacTiles connectors. Furthermore, arguments that the alleged copies
infringe foreign counterparts, not at issue in this proceeding, are wholly
inapplicable and unpersuasive. See, e.g., Ex. 2023 ¶ 16.
7. Conclusion of Obviousness
After weighing the evidence of obviousness and nonobviousness of record,
on balance, we conclude that the strong evidence of obviousness outweighs the
insufficient evidence of nonobviousness. For the foregoing reasons, we determine
that Petitioner has demonstrated by a preponderance of the evidence that
claims 114 would have been obvious as follows:
a) claims 1, 2, 57, and 914 over Kinoshita and Pacione;
b) claims 3 and 8 over Kinoshita, Pacione, and Robinson;12 and
c) claim 4 over Kinoshita, Pacione, and Matthews.

12
We do not reach a determination of whether claims 3 and 8 also are obvious over
the combination of Pacione and Robinson.
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F. MOTION TO AMEND
Patent Owner moves to substitute challenged claim 1 with proposed
substitute claim 15, if we determine that claim 1 is unpatentable. Mot. to
Amend 1. Because we determine that claim 1 is unpatentable, we now consider
Patent Owner’s Motion to Amend. For the reasons set forth below, the Motion is
denied.
Proposed substitute claim 15 is reproduced below.
15. A system for installing carpet tiles on an underlying surface, the system
comprising:
a plurality of carpet tiles, wherein each carpet tile comprises an underside
having a surface area; and
a plurality of carpet tile connectors for connecting the plurality of carpet
tiles, each carpet tile connector comprising:
a film having two sides; and
a layer of adhesive a layer of adhesive located on a side of the film,
wherein the layer of adhesive is capable of forming a bond between the film
and the undersides of adjacent carpet tiles and comprises a sufficient shear
strength so that, when a connector spans adjacent edges of the adjacent
carpet tiles, so that the layer of adhesive contacts the undersides of the
adjacent carpet tiles, the connector prevents adjacent tiles from moving
relative to the connector or each other thereby creating gaps between the
adjacent tiles after installation,
wherein the film comprises a plastic material sufficiently stiff for a
connector positioned partly in contact with an underside of a carpet tile to
project beyond the edge of the carpet tile in roughly the same plane as the
underside of the carpet tile, and
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wherein the connectors have sufficient adhesive shear strength and
resist stretching sufficiently so that, in an installation of the carpet tiles
connected with the connectors, the connectors stabilize the carpet tiles to
retain their relative positions in the installation when subjected to foot
traffic, rolling traffic, and stresses applied during cleaning and maintenance
(1) without adhering the carpet tiles to the underlying surface and (2) while
adhering to less than 5% of the surface area of the undersides of the tiles in
the installation.
1. Analysis of Proposed Claim 15
According to Patent Owner, proposed claim 15 adds to challenged claim 1
four features: (1) connectors with adhesive shear strength to stabilize the carpet
tiles to retain relative positions in an installation; (2) connectors resisting stretching
sufficiently to stabilize carpet tiles to retain their relative positions in an
installation; (3) connector stabilizing the carpet tiles to retain their relative
positions without adhering to the underlying surface; and (4) connectors stabilizing
carpet tiles to retain their relative positions in an installation while adhering to less
than 5% of the surface area of a tile. See Mot. to Amend 56. Patent Owner
contends that these limitations are fully disclosed in the specification and that the
prior art of record, alleged to be the closest prior art, does not render obvious the
proposed claim. Id. at 58. We analyze each of these limitations in turn.
a. Connectors With Adhesive Shear Strength
The “sufficient shear strength” limitation, we determined above, was not
limited to any particular direction of movement. In proposed claim 15, Patent
Owner adds a further function of the connectors with shear strength so the carpet
tiles “retain their relative positions.” In attempt to overcome Kinoshita’s
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teachings, Patent Owner argues that Kinoshita does not mention preventing lateral
movement or otherwise retaining tiles in their relative positions. Mot. to
Amend 11. Further, Patent Owner argues that retaining tiles would not have been
achieved with Kinoshita’s tape. Id. (citing Ex. 2014 ¶¶ 110112; Ex. 2017
¶¶ 111113). The Declaration testimony cited in support of Patent Owner’s
argument is not persuasive as stated with respect to the Kinoshita ground
concerning claim 1. The proffered testimony focuses on whether conventional
tape would prevent gaps or lateral movement. The cited testimony does not
address the express teaching in Kinoshita of an installation in which the carpet tiles
are laid together in a linked fashion to create carpet C of a certain weight such that
the carpet does not rise up or peel off. Ex. 1007 ¶ 17. Kinoshita, thus, teaches or
suggests that the laid carpet tiles retain their relative position after installation.
Additionally, we are not persuaded that Kinoshita refers only to conventional
adhesive tape, and that, therefore, the adhesive tape in Kinoshita would have been
known to fail. Kinoshita expressly describes an embodiment in which the backing
of the tape and the “adhesive power” is designed for the specific purpose of
making installation of carpet tiles easier and linking the underside of the carpet
units. See Ex. 1007 ¶ 12. This suggests that Kinoshita’s adhesive tape is intended
for use in carpet tile installations, and not merely some conventional tape that
would be expected to fail at maintaining carpet tiles linked as described.
Patent Owner further argues that “more-glued-surface-area-is-better
sentiment” would teach away from the recited features. See Mot. to Amend 810.
We find these arguments unpersuasive. Although there was an appreciation for the
durability and wearability of full-glue carpet installations, the evidence of record
shows that the full-glue installations were specified when heavy traffic was
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expected. See id. at 9 (citing Exs. 203[2], 2014, 2017, 2030). Arguably, when
considering a carpet tile installation for such conditions, the adhesive choice was
crucial. Proposed claim 15 captures “foot traffic, rolling traffic, and stresses
applied during cleaning and maintenance,” but there is no description in the
specification or elsewhere whether such conditions constitute heavy traffic or
otherwise. The language of the proposed claim is broad enough to encompass light
traffic installations. And, therefore, we are not persuaded that there is sufficient
evidence to establish that the “more-glue” sentiment would have dissuaded a
person of ordinary skill in the art from a Kinoshita installation for the same traffic
conditions encompassed by the limitations added in proposed claim 15. Further,
recommendations by some carpet installers of the full-glue installation as the
“best” for preventing lateral shifting (Mot. to Amend 910) do not mean
necessarily that a carpet tile installation with adhesive tape pieces, such as that of
Kinoshita, would not have been recognized as an installation option. Indeed, the
“Interiors” handbook cited by Patent Owner describes the option of “free lay”
carpet tile installations. See Ex. 2032, 203 (“In free lay installations, a strip of
adhesive is applied about every 4.5 m (15 ft) and around the room perimeter.”).
Thus, we are not persuaded that a full-glue installation was the only viable option,
and that, therefore, a person of ordinary skill in the art would not turn to the
Kinoshita teachings.
b. Resists Stretching
Patent Owner has the burden of showing that it is entitled to the relief
requested. 37 C.F.R. § 42.20(c). We begin with claim construction, as that is an
important step in determining patentability. Oakley, Inc. v. Sunglass Hut Int’l, 316
F.3d 1331, 1339 (Fed. Cir. 2003). A motion to amend claims must identify how
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the proposed substitute claims are to be construed, especially when the proposed
substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom,
Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26).
In its Motion, Patent Owner introduces the phrase “resist stretching
sufficiently so that, in an installation of the carpet tiles connected with the
connectors, the connectors stabilize the carpet tiles to retain their relative positions
in the installation when subjected to foot traffic, rolling traffic, and stresses applied
during cleaning and maintenance.” Patent Owner does not provide any claim
constructions or explanation for how this phrase, or terms such as “resists
stretching sufficiently” and “subjected to foot traffic, rolling traffic,” should be
construed. Without a reasonable construction of this alleged new claim feature in
proposed claim 15, Patent Owner does not provide adequate information for us to
determine whether Patent Owner’s proposed substitute claim is patentable over the
prior art generally. Indeed, Petitioner has raised the difficulty of assessing the
scope of the term “rolling traffic” without any argument or evidence proffered by
Patent Owner in its Motion. Opp. to Mot. to Amend 34. Therefore, we are not
persuaded that Patent Owner has met its burden to demonstrate patentability of the
proposed substitute claim under 37 C.F.R. § 42.20(c).
As for Patent Owner’s burden of demonstrating patentability, we find Patent
Owner’s showing deficient. See Idle Free, Paper 26, 7. With regard to
obviousness as the basis of potential unpatentability of the proposed substitute
claim, the patent owner should present and discuss facts which are pertinent to the
first three underlying factual inquiries of Graham: (1) the scope and content of the
prior art, (2) differences between the claimed subject matter and the prior art, and
(3) the level of ordinary skill in the art, with special focus on the new claim
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features added by the proposed substitute claim. The patent owner should identify
each new claim feature, and come forward with technical facts and reasoning about
that particular feature. Id. Some discussion and analysis should be made about the
specific technical disclosure of the closest prior art as to each particular feature,
and the level of ordinary skill in the art, in terms of ordinary creativity and the
basic skill set of a person of ordinary skill in the art, regarding the feature.
Here, we are unpersuaded that Patent Owner has demonstrated by a
preponderance of the evidence that the proposed substitute claim is patentable.
Patent Owner addresses teachings in Robinson regarding tensile strength and
elongation characteristics. Mot. to Amend 15. But Patent Owner does not address
the level of ordinary skill in the art with regard to the “resist stretching” feature
added by its proposed substitute claim. Alleging that the closest prior art does not
disclose the resistance to stretching to retain tiles in place (id.) is insufficient. As
discussed above, Robinson teaches the characteristics of a pressure-sensitive
adhesive, which in combination with Kinoshita, render obvious dependent claim 3.
The tensile strength range recited in claim 3 is the very range that the specification
of the ’282 patent describes for use in a film that “resists stretching.” Ex. 1001,
5:2531. Accordingly, based on our determination regarding dependent claim 3,
we are not persuaded that the “resist stretching sufficiently” limitation in proposed
claim 15 renders novel the proposed claim.
c. Size Limitation
Proposed claim 15 recites a 5% size limitation. Patent Owner argues that
this limitation renders claim 15 patentable because the “more-glue” sentiment
teaches away from connectors of less than 5% of the surface area of the tiles. Mot.
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to Amend. 10; Reply to Opp. to Mot. to Amend 2. Petitioner argues that Owen
13

teaches a corner connection system for carpet tiles in which the connector area is
420% of the area of the carpet tile. Opp. to Mot. to Amend 13. Petitioner states
that it would have been obvious to combine Owen with Kinoshita with respect to
the size of the corner connector. Id.
We addressed this limitation in the Final Written Decision in related
proceeding IPR2013-00333. Consistent with that Final Written Decision, we
determine that Petitioner has shown that Owen teaches securing a carpet tile with
only 4 to 20% of the underside surface in contact with the fibrous projections. See
Ex. 1048, 4, ll. 57. Patent Owner does not dispute that Owen teaches a range
commensurate with the recited 5% surface area. The alleged belief that “more-
glued-surface-area is better,” even if true, does not negate the fact that Kinoshita
teaches a glueless installation of carpet tiles. With that knowledge and the express
disclosure in Kinoshita of adhesive tape pieces that are indisputably smaller in
surface area than the carpet tiles, we find unpersuasive the argument that a “more-
glue” belief would turn a person of ordinary skill in the art away from teachings of
glueless attachments, such as those in Kinoshita and Owen.
Kinoshita is a clear and express departure from the “more-glue” belief.
Furthermore, neither Kinoshita nor Owen discredits the use of a small connector.
Indeed, Owen teaches a range of sizes for corner attachments in carpet
installations, albeit with the use of hook-and-loop technology instead of adhesive.
It makes sense that one of ordinary skill in the art considering Kinoshita’s small
connectors would start with the range of sizes of 4 to 20% of the carpet area taught
in Owen. The corner attachments of Owen have the same purpose as the adhesive

13
WO 86/01247 (Ex. 1048) (“Owen”).
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tape units in Kinoshita, to attach together carpet pieces in a glueless installation.
Owen provides the size ranges that Kinoshita suggests because Kinoshita teaches
smaller connectors. Given these considerations, we are not persuaded that Patent
Owner has shown the patentability of claim 15 with regard to this limitation
considering that, under KSR, the technique in Owen—of selecting a size for the
corner attachments in the range of 4 to 20%—would be recognized by a person of
ordinary skill in the art as applicable to improve Kinoshita’s adhesive tape pieces.
See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”). We find that Owen’s technique would be
applicable, and that the combination is merely the application of a known range of
sizes of corner attachments in carpet tile installation to improve the size of
Kinoshita’s adhesive tape pieces.
Furthermore, we are not persuaded that a person of ordinary skill in the art
would not be motivated to achieve the recited size because a person of ordinary
skill in the art, instead, would “make Kinoshita’s tape larger to underlie most of
not all of the tiles’ undersurfaces to provide lots of adhesive surface area in
accordance with the more-glued-surface-area-is-better sentiment.” Mot. to
Amend 11 (citing Ex. 2014 ¶ 192). The cited testimony of Mr. Endrenyi ignores
the express teachings in the art of free-lay carpet installation options and that the
full-glue installations were specified for certain traffic conditions. Starting with
the premise that a person of ordinary skill in the art would start the design of a
carpet installation system with a full-glue installation is a red herring. Seeking a
departure from full-glue, a reasonable starting point is the known free-lay carpet
installation, which uses adhesive tape at intervals and at the perimeter. Therefore,
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we find it reasonable for a person of ordinary skill in the art to turn to Kinoshita,
which expressly teaches small adhesive tape pieces at the corners of the carpet
tiles. Indeed, Kinoshita would have been especially applicable since it teaches
avoiding glue altogether and no attachments to the floor. Patent Owner’s
arguments to the contrary are, therefore, not persuasive.
d. Conclusion Regarding Proposed Substitute Claim 15
We conclude from our analysis above that Patent Owner has not met its
burden of proving by a preponderance of the evidence that proposed substitute
claim 15 is patentable.
2. Ruling on Motion to Amend
The request for entry of proposed substitute claim 15, for the reasons stated
above, is denied.
III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence the
unpatentability of the following claims over the following grounds:
a) claims 1, 2, 57, and 9 as anticipated over Pacione;
b) claims 1, 2, 57, and 914 would have been obvious over Kinoshita and
Pacione;
c) claims 3 and 8 would have been obvious over Kinoshita, Pacione, and
Robinson;
d) claim 4 would have been obvious over Kinoshita, Pacione, and
Matthews.
Because we have found claims 3 and 8 unpatentable as stated above, we
need not decide whether alternative asserted grounds based on obviousness relying
primarily on Pacione also render the challenged claims unpatentable.
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Patent Owner’s Motion to Amend is denied.

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 114 of the ’282 patent have been shown to be
unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Amend is denied
with respect to the entry of proposed substitute claim 15.
This is a final 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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PETITIONER:
Dana E. Stano (Lead Counsel)
Barry J. Herman (Backup Counsel)
Preston Heard
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
Emails: dstano@wcsr.com,
bherman@wcsr.com
pheard@wcsr.com

PATENT OWNER:
John S. Pratt (Lead Counsel)
Eugene B. Joswick III (Backup Counsel)
KILPATRICK TOWNSEND & STOCKTON, LLP
Emails: jpratt@kilpatricktownsend.com,
ejoswick@kilpatricktownsend.com.