Trials@uspto.gov
`571-272-7822
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`Paper 54
`Date: May 11, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENOVATE MEDICAL, LLC,
`Petitioner,
`
`v.
`
`INTERMETRO INDUSTRIES CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2015-00300
`Patent 6,721,178 B1
`
`
`
`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`

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`IPR2015-00300
`Patent 6,721,178 B1
`
`I.
`
`INTRODUCTION
`
`Petitioner, Enovate Medical, LLC, filed a Petition to institute an inter partes
`review of claims 2, 5, 25, 27, 28, 43, 68, 88, 101, and 108 of U.S. Patent No.
`6,721,178 (U.S. Patent No. 6,721,178 B1, as amended by ex parte reexamination
`certificate U.S. Patent No. 6,721,178 C1 (Ex. 1001, “the ’178 patent”)). Paper 1
`(“Pet.”). Patent Owner, InterMetro Industries Corporation, filed a Preliminary
`Response pursuant to 35 U.S.C. § 313. Paper 9 (“Prelim. Resp.”). We granted the
`Petition in part, instituting trial on whether claims 27, 28, 88, and 101 are
`unpatentable as obvious over Dell1, Sweere2, and Allan3, and claim 108 as obvious
`over Dell, Sweere, Allan, and Planar.4 Paper 12.
`During the trial, Patent Owner filed a Response under seal (Paper 20, “PO
`Resp.”),5 and Petitioner filed a Reply. Paper 25 (“Reply”). Additionally, both
`parties filed Motions to Exclude evidence. Paper 336; Paper 35. Finally, Patent
`Owner filed a Motion to Dismiss and Terminate (Paper 37, “Mot. to Term.”),
`against which Petitioner filed an Opposition (Paper 40, “Opp. to Mot. to Term.”),
`
`
`1 U.S. Patent No. 5,806,943, issued Sept. 15, 1998. Ex. 1003.
`2 U.S. Patent No. 5,842,672, issued Dec. 1, 1998. Ex. 1004.
`3 U.S. Patent No. 5,685,235, issued Nov. 1, 1997. Ex. 1008.
`4 Webpage found at http://www.planar.com/pds/products/
`cleanscreen/cleansc.htm, as of July 3, 1997, as archived at http://web.archive.org/
`web/19970703043920/. Ex. 1007.
`5 Patent Owner’s Response, with information relating to sales of its point-of-care
`(or POC) carts redacted, is publicly available as Paper 21.
`6 The evidence Petitioner seeks to exclude—Exhibits 2005–2008—was filed by
`Patent Owner under seal. Thus, Petitioner filed its Motion to Exclude under seal,
`as it discusses certain details from Patent Owner’s sealed exhibits. Petitioner’s
`Motion to Exclude, with such details redacted, is publicly available as Paper 32.
`2
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`IPR2015-00300
`Patent 6,721,178 B1
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`and in support of which Patent Owner filed a Reply (Paper 49).
`A consolidated hearing for oral arguments in this inter partes review and
`Case IPR2015-00301 was held January 13, 2016. A transcript of the hearing
`appears in the record. Paper 51 (“Tr.”).
`We hold claims 27, 28, 88, 101 and 108 unpatentable.
`
`A. Related Matters
`
`Patent Owner has asserted the ’178 patent along with additional patents,
`including related U.S. Patent No. 6,493,220 B1 (“the ’220 patent”), against
`Petitioner in InterMetro Industries Corp. v. Enovate Medical, LLC, Case No. 3:13-
`cv-02854 (M.D. Pa.) (the “related lawsuit”). Pet. 2; Paper 8, 2. Claims of the
`related ’220 patent are being challenged by Petitioner in another an inter partes
`review before us. See Case IPR2015-00301, Paper 1.
`
`B. The ’178 Patent
`
`The ’178 patent describes “a mobile workstation that can include an
`adjustable-height horizontal tray, a pull-out keyboard tray, a vertically-mounted
`docking station mounted to the tray, a computer terminal mounted beneath the tray,
`a display screen mounted to the horizontal tray, and a power unit.” Ex. 1001, B1 at
`1:10–15.7 The mobile workstation can be pushed from room to room, for example,
`by a medical practitioner during patient rounds at a hospital. Id. at 2:65–67.
`
`
`7 Petitioner filed U.S. Patent Nos. 6,721,178 B1 and 6,721,178 C1 together as
`Exhibit 1001. Both documents include column and line numbers. In our citations
`to Exhibit 1001, we distinguish between the exhibit’s two documents using their
`kind codes.
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`Patent 6,721,178 B1
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`Figure 4b of the patent is reproduced below.
`
`
`Figure 4b shows a perspective view of the mobile workstation. Ex. 1001,
`B1 at 4:41–43. The workstation includes adjustable-height horizontal tray 12
`supported by chassis 14. Id. at 8:53–55. The horizontal tray includes upper
`surface 86 that provides a work surface. Id. at 12:9–12. Horizontal tray 12
`supports docking station 18 that removably supports wireless computer terminal 20
`having a display screen. Id. at 8:58–61. The docking station is attached to the
`horizontal tray via tiltable bracket 44. Id. at 10:10–12.
`Although the lead line for computer terminal 20 points to the display screen,
`which is positioned above the horizontal work surface, the terminal itself may be
`below the horizontal work surface. See id. at 1:14 (“computer terminal mounted
`beneath the tray”); id. at 6:50–52 (“Because the docking station is vertically
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`mounted, the computer terminal does not occupy the top surface of the horizontal
`tray . . . .”); id. at 6:65–67 (“The horizontal tray includes an underside front
`mounting bracket to support the wireless computer terminal . . . .”); id. at 8:14–17
`(“When the computer terminal is mounted beneath the horizontal tray, the
`computer terminal does not occupy the top surface of the horizontal tray, which
`allows this area to be used as a work surface.”); id. at Figs. 12a–c, ref. 274.
`The chassis includes vertical beam 22 connecting the horizontal tray to a
`dolly assembly, the dolly assembly being comprised of arched beams 76 and
`horizontal beams 78a and 78b. Id. at 8:61–62, 11:59–61. The horizontal beams
`include casters (wheels) 80. Id. at 11:61–63. The vertical beam is adjustable via a
`gas-spring or other adjustment mechanism. Id. at 8:63–9:10. Power unit 24 is
`supported on a lower end of the chassis. Id. at 9:17–18.
`
`C. Previous Reexamination of the ’178 Patent
`
`The ’178 patent issued on April 13, 2004, with forty-four claims. Ex. 1001,
`B1. Rioux Vision, Inc., an entity unrelated to the parties in this proceeding, filed a
`Request for Inter Partes Reexamination of the ’178 patent on September 20, 2007.
`See Ex. 1013, 4. The Office granted Rioux’s request, finding a substantial new
`question of patentability with respect to all forty-four claims. Flo Healthcare
`Solutions, LLC v. Kappos, 697 F.3d 1367, 1370 (Fed. Cir. 2012). During the
`reexamination, Patent Owner added over one hundred dependent claims, cancelled
`claims 1, 26, and 75, changed the dependencies of corresponding claims, and
`rewrote claims 2 and 27 in independent form. The Examiner ultimately rejected
`claims 8–17, 23, 24, 35, 40–42, 73, 76–79, 87, and 88 over various references.
`These rejections were affirmed by the Board and the Federal Circuit. Flo
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`Healthcare, 697 F.3d at 1369. Thus, the ’178 patent currently includes claims 2–6,
`7, 18–22, 25, 27–33, 39, and 43–130. Claims 2 and 27 are independent. Ex. 1001,
`C1 at 1:14–8:5.
`
`D. Illustrative Claim
`
`This proceeding concerns claims 27, 28, 88, 101 and 108 of the ’178 patent.
`Claim 27 is illustrative of the claimed subject matter and is reproduced below.
`27. A mobile workstation, comprising:
`a moveable chassis;
`a substantially horizontal tray supported by the chassis that
`defines a work surface:
`a display screen positioned so that at least a portion of the
`display screen is visible above the work surface, wherein the display
`screen is tiltable relative to the work surface;
`an input device tray proximate to the work surface;
`a computing device positioned below the work surface; and
`a power unit for supplying power to the computing device,
`wherein the chassis comprises a height adjustment mechanism
`for adjusting the height of the chassis to adjust the height of the work
`surface.
`Ex. 1001, C1 at 1:59–2:6.
`
`E. Claim Construction
`
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should be
`read in light of the specification, as it would be interpreted by one of ordinary skill
`in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus,
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`we generally give claim terms their ordinary and customary meaning. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and
`customary meaning is the meaning that the term would have to a person of
`ordinary skill in the art in question.”) (internal quotation marks omitted).
`No limitation requires an express construction for purposes of the
`patentability challenge at issue here. See Pet. 6–7 (offering only one proposed
`construction, which was not material to the patentability challenge);8 PO Resp. 11
`(“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do
`not require construction for purposes of resolving this [inter partes review
`(IPR)].”).
`
`II. PATENT OWNER’S MOTION TO DISMISS AND TERMINATE
`
`Patent Owner moves to “dismiss and terminate this inter partes review
`because Petitioner failed to identify all real parties-in-interest in its original
`Petition, as required by 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1).” Mot.
`
`
`8 Petitioner proposed a construction for one limitation, but it did so for purposes of
`complying with a Board Rule. More specifically, and as discussed in the
`Institution Decision, Petitioner proposed a construction for claim 2’s “means for
`altering the length of the vertical beam and maintaining the tray at a plurality of
`selectable distances from the dolly assembly,” which is governed by 35 U.S.C.
`§ 112, ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir.
`2015) (en banc) (explaining that use of the word “means” in a claim limitation
`creates a rebuttable presumption that the limitation invokes § 112 ¶ 6). By rule,
`Petitioner was required to (and did) identify the purported corresponding structure
`in its Petition. See 37 C.F.R. § 42.104(b)(3) (“Where the claim to be construed
`contains a means-plus-function or step-plus-function limitation . . . the construction
`of the claim must identify the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function.”).
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`To Term. 1. In particular, Patent Owner argues that Riverside Partners LLC
`(“Riverside”), who indisputably was not identified by Petitioner as a real party-in-
`interest in this inter partes review, in fact, is one. See generally id.
`There is no specific definition for who constitutes a real party-in-interest.
`The Office Patent Trial Practice Guide (“Guide”) states the following:
`Whether a party who is not a named participant in a given
`proceeding nonetheless constitutes a “real party-in-interest”’ or “privy”
`to that proceeding is a highly fact-dependent question. Such questions
`will be handled by the Office on a case-by-case basis taking into
`consideration how courts have viewed the terms “real party-in-interest”
`and “privy.” Courts invoke the terms “real party-in-interest” and
`“privy” to describe relationships and considerations sufficient to justify
`applying conventional principles of estoppel and preclusion.
`Accordingly, courts have avoided rigid definitions or recitation of
`necessary factors. Similarly, multiple Federal Rules invoke the terms
`without attempting to define them or what factors trigger their
`application.
`77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted).
`Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that
`desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner
`itself, and/or it may be the party or parties at whose behest the petition has been
`filed.” Id.
`Patent Owner’s Motion primarily focuses on Riverside’s alleged control of,
`or at least ability to control, Petitioner with respect to this inter partes review and
`the related lawsuit. See generally Mot. to Term. 7–11; see also Guide, 77 Fed.
`Reg. at 48,759 (“A common consideration [with respect to real party-in-interest] is
`whether the non-party exercised or could have exercised control over a party’s
`participation in a proceeding.”). In support of its Motion, Patent Owner relies on
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`the following general allegations: (1) Riverside owns a substantial majority of
`Petitioner, (2) three people “from Riverside” sit on Petitioner’s Board of Directors,
`including specifically on its six-member Executive Committee, (3) the decision to
`file the Petition was made by the Executive Committee, (4) Riverside is involved
`in assessing settlement scenarios for the related lawsuit; (5) and Riverside is
`integrally involved with the general business operations of Petitioner. Mot. to
`Term. 7–11.
`As Petitioner concedes, Riverside does own a substantial majority—
`83.5%—of Petitioner. Opp. to Mot. to Term. 8 (citing Ex. 1028 ¶ 17). Owning a
`percentage of a party (even all of it), however, does not render the owner a real
`party-in-interest. If it did, every parent corporation of a 100% wholly-owned
`subsidiary party would be a real party-in-interest, and that is not the law. Patent
`Owner also points out three people “from Riverside Partners”9 sit on Petitioner’s
`six-person Executive Committee, which is a subset of Petitioner’s Board of
`Directors. Mot. to Term. 8 (citing Ex. 2019, 93:9–13, 101:6–102:14).10 But, this is
`not an additional factor of any significance. Riverside’s 83.5% ownership stake
`
`
`9 Patent Owner refers to these individuals, by title, as follows: “(i) Riverside
`Partners General Partner Philip Borden; (ii) Riverside Partners Vice President
`Craig Stern, (iii) Riverside Partners Operating Partner Mike Magliochetti.” Mot.
`to Term. 8 (citing Ex. 2019, 93:9–13). The cited evidence, however, is not
`probative of these titles, but rather only that these three individuals are “from
`Riverside Partners.” See Ex. 2019, 93:9–13.
`10 Exhibit 2019 consists of select excerpts of deposition testimony of Nick Mendez
`taken in the related lawsuit. Ex. 2019, 1. Mr. Mendez is a former Chief Executive
`Officer of Petitioner. Id. at 103:16–24; Ex. 1028 ¶ 11.
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`would be expected to provide Riverside control over who is elected to Petitioner’s
`Board of Directors.
`Patent Owner has submitted evidence that the Executive Committee (of
`Petitioner’s Board of Directors) made the decision to file the Petition. Mot. to
`Term. 8–9 (citing Ex. 2019, 100:25–103:15). Patent Owner additionally alleges
`that “Riverside Partners ‘approved’ filing the Petition for Inter Partes Review.”
`Id. at 9 (citing Ex. 2019, 100:25–101:5). The cited testimony of Mr. Mendez,
`however, is not probative of the allegation. It reads:
`Q.
`. . . And so you didn’t make the decision to file the IPR on your
`own; you took it to the board and said, “This is my
`recommendation based on advice of counsel,” and the board
`approved it and you went ahead and filed the IPR; is that correct?
`A. Correct.
`Ex. 2019, 100:25–101:5 (emphasis added). Having reviewed the available
`surrounding testimony, we understand “the board” in Mr. Mendez’s cited
`testimony to mean the Board of Directors of Petitioner, not a board of directors of
`Riverside.11 See generally Ex. 2019; see also Mot. to Term. 7 (“Petitioner’s Board
`of Directors includes a six-person Executive Committee”).
`
`
`11 Additionally, it is questionable whether Mr. Mendez’s testimony should be
`interpreted as agreeing fully with the compound question presented by the
`examining attorney. Mr. Mendez executed an errata, which amended his answer,
`for “clarification” purposes, as follows: “Correct. I recommended we follow
`advice of counsel and no one objected to that recommendation.” Ex. 1030, 2
`(underlining denoting testimony added by errata). Thus, as Petitioner argues in its
`Opposition, Mr. Mendez appears to have affirmed only part of the examining
`attorney’s question, and not the portion about board approval. Opp. to Mot. to
`Term. 5–6.
`
`10
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`Patent Owner alleges that Riverside is involved in assessing settlement
`scenarios for the related lawsuit. Mot. to. Term. 9 (citing Ex. 2018, 75:23–77:14).
`To support that allegation, it quotes the following testimony taken during the
`deposition of Bob Brolund:
`Q. You’ve had discussions of that nature, though, with Craig Stern
`at Riverside Partners, that is, with respect to what the possible
`scenarios would be for settling versus not settling the case and
`what the potential damages claims would be; is that correct?
`A. Yes.
`Ex. 2018, 77:8–14. Mr. Brolund and Craig Stern are “from Riverside Partners,”
`but they are also on Petitioner’s Executive Committee. Ex. 2019, 93:9–13.12 Their
`discussions as members of Petitioner’s Executive Committee are not automatically
`attributable to Riverside, and Patent Owner has not provided any reason to justify
`attributing them as such. Moreover, the content of Mr. Brolund’s quoted
`testimony, which is extremely general, does not demonstrate control by anyone of
`any settlement process.
`Patent Owner alleges that “Riverside Partners is integrally involved with the
`general business operations of Petitioner.” Mot. to Term. 10. However, all but one
`of the purported examples Patent Owner provides of integral involvement are
`merely reflections of the fact that certain individuals simultaneously are “from
`Riverside Partners” and members of Petitioner’s Executive Committee. The sole
`exception is Patent Owner’s allegation that the related lawsuit is a topic that is
`reported to Riverside on a regular basis. Id. (citing Ex. 2018, 69:12–70:9). This is
`
`
`12 Additionally, Mr. Brolund is the current Chief Financial Officer of Petitioner.
`Opp. to Mot. to Term. 5.
`
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`not a factor that supports finding Riverside to be a real party-in-interest. As we
`mentioned above, Riverside owns 83.5% of Petitioner. Thus, for financial reasons,
`it behooves Riverside to know what is going on in the lawsuit. Additionally, the
`fact that Riverside receives “reports” implies that Riverside is passively observing
`the lawsuit, not controlling it. Ex. 2018, 69:19–22. In any event, the related
`lawsuit is not the instant proceeding.
`Patent Owner argues that the facts here are similar to those of Galderma S.A.
`v. Allergan Industrie, SAS, Case IPR2014-01422, Paper 14 (PTAB Mar. 5, 2015)
`(“Galderma”), but Galderma’s facts bear a significant distinction. In Galderma,
`the non-identified party that was held to be a real party-in-interest was a parent
`corporation (Nestle Skin Health S.A.) that ultimately owned both named
`petitioners (Galderma S.A. and Q-Med AB). One of the named petitioners (Q-Med
`AB) manufactured devices that were accused of infringement in a related lawsuit,
`but another entity, which was also ultimately owned by the non-identified Nestle
`Skin Health S.A., distributed the accused devices. Galderma at 8. Furthermore,
`the Galderma panel found that the business entities involved “do not maintain
`well-defined corporate boundaries, and are so intertwined that it is difficult to
`determine where one ends and another begins.” Id. at 9 (internal quotation marks
`omitted). We have not made that finding here, nor is there sufficient evidence to
`support such a finding.
`It is Petitioner alone who stands accused of infringement in the related
`lawsuit. Riverside has not been named in that lawsuit. Paper 8, 2. Nor has Patent
`Owner shown that Riverside has a legal, and not merely financial, interest in this
`inter partes review. As noted in the Guide, “the ‘real party-in-interest’ [on the
`
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`petitioner side] is the party that desires review of the patent.” Guide, 77 Fed. Reg.
`at 48,759. Under the facts before us, it is Petitioner who, having been sued for
`infringement of the ’178 patent, desires review of the patent.
`We, therefore, deny Patent Owner’s Motion to Dismiss and Terminate this
`inter partes review.
`
`III. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner asserts that claims 27, 28, 88, and 101 would have been obvious
`under § 103(a) over Dell, Sweere, and Allan, and claim 108 would have been
`obvious under § 103(a) over Dell, Sweere, Allan, and Planar. Pet. 33–37, 44–49,
`54–59. Under § 103(a), “the scope and content of the prior art are to be
`determined; differences between the prior art and the claims at issue are to be
`ascertained; and the level of ordinary skill in the pertinent art resolved.” Graham
`v. John Deere Co., 383 U.S. 1, 17 (1966). Additionally, secondary considerations
`such as “commercial success, long felt but unsolved needs, failure of others, etc.,
`might be utilized to give light to the circumstances surrounding the origin of the
`subject matter sought to be patented. As indicia of obviousness or
`nonobviousness, these inquiries may have relevancy.” Id. at 17–18.
`
`1. Dell Disclosure
`
`Dell teaches a wheeled mobile workstation for use in hospital and other
`health related industries. Ex. 1003, 1:6–11. Figures 1 and 4 of Dell are reproduced
`below.
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`Figures 1 and 4 show different views of mobile workstation 10. Ex. 1003,
`1:63–64, 2:25–27, 1:67. The workstation includes horizontal work surface 20
`supported by leg 60 and base 80. Id. at 2:28–29. The base includes spokes 82
`having casters 84. Id. at 2:66–3:2. The leg is adjustable in length vertically as it
`“includes an upper inner tube 62 which houses a height adjustment mechanism,
`typically a piston and cylinder 64.” Id. at 2:59–60.
`Compartment 100 is mounted to a plate (not shown in figures above) that is
`mounted to the underside of the work surface. Id. at 2:37–39, 3:7–12. “[T]he
`compartment is used to counterbalance the weight of a lap/top computer or other
`types of equipment that may be carried on the work surface.” Id. at 3:48–52. For
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`example, laptop computer 40 is shown in phantom lines resting on the work
`surface in Figure 1. Id. at 2:43–47, Fig. 1, ref. 40. To act as a counterbalance, the
`compartment includes ballast 140, which may be in the form of an uninterruptible
`power supply, and which is shown in phantom in Figure 1. Id. at 3:31–36, Fig. 1,
`ref. 140. The uninterruptible power supply provides backup power to equipment
`on the work surface (e.g., a laptop). Id. at 3:57–60.
`
`2. Sweere Disclosure
`
`Sweere teaches a “multi-jointed, pivoted support arm for support and
`position of a flat panel display screen.” Ex. 1004, 1:50–52, Figs. 20–23. Sweere
`also teaches a mobile workstation termed “rolling cart assembly.” Id. at 15:3–5,
`Fig. 29. Figure 29 is reproduced below.
`
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`Figure 29 shows the workstation including base 1210 with casters 1212a–n,
`vertically-oriented mounting pole 1214, display screen 216, central processing unit
`(CPU) mounting bracket 1218, and UPS13 mounting bracket 1220. Ex. 1004,
`15:3–15.
`
`3. Allan Disclosure
`
`Allan teaches an adjustable support mechanism for a computer keyboard.
`Ex. 1008, 1:8–9. Figure 1 of Allan is reproduced below.
`
`
`Figure 1 is a side elevation drawing of a keyboard support assembly.
`Ex. 1008, 3:7–8. As shown in Figure 1, keyboard 10 is mounted on keyboard
`platform 12, which is supported by spaced support arms 21, 22 with first ends
`pivotally mounted to opposite sides of keyboard platform 12 and second ends
`pivotally mounted to mounting bracket 24. Id. at 3:43–49. Mounting bracket 24 is
`attached to the underside of work surface 16. Id. at 3:49–50. Keyboard platform
`12 is generally horizontal in orientation, but can be tilted about a horizontal axis—
`
`
`13 Sweere does not disclose what UPS means, but Petitioner asserts that it means a
`power supply (Pet. 10) and provides evidence that UPS is known in the art to mean
`uninterruptible power supply. Ex. 1005 ¶ 5. Also, Patent Owner has not disputed
`that Sweere’s UPS mounting bracket is a mounting bracket for a power supply.
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`illustrated in phantom lines in Figure 1. Id. at 3:63–4:5. Figure 3 of Allan is
`reproduced below.
`
`
`Figure 3 illustrates the location of the tilt adjustment mechanism of the
`support mechanism. Id. at 3:14–17. Keyboard platform 12 (shown in phantom
`lines) is mounted upon casing 28 with a pivot shaft or rod 26 passing through
`casing 28 in a manner that permits rotation. Id. at 4:19–26. Support arms 21, 22
`pivot about first horizontal pivot axis 25 passing through mounting bracket 24. Id.
`at 3:51–52. At the same time, computer keyboard 10 and platform 12 are moved
`from a work position to a storage position under work surface 16 and keyboard
`platform 12 pivots about second horizontal pivot axis 27, thereby maintaining the
`same orientation with respect to work surface 16. Id. at 3:52–63.
`The tilt feature, shown in Figure 1, in combination with the pivoting motion
`of support arms 21, 22, shown in Figure 3, allows keyboard 10 “to be efficiently
`stored under the work surface 16, even if the work surface 16 has an obstruction
`such as a lateral support 18 [shown in Figure 1].” Id. at 4:5–10.
`
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`4. Planar Disclosure
`
`Planar is a webpage describing a product called Clean Screen, described as a
`“space saving, full-featured workstation for medical and industrial use” consisting
`of a “flat panel display with a built-in and an optional locking, foldaway
`keyboard.” Ex. 1007, 1.
`
`5. Obviousness Challenge: Claims 27, 28, 88, and 101
`
`Petitioner argues that the combined teachings of Dell, Sweere, and Allan
`render claims 27, 28, and 88 unpatentable, stating:
`[I]t would have been obvious to modify Dell by mounting the
`display screen and tiltable bracket of Sweere directly to the top of the
`horizontal work surface in order to provide for comfortable and
`adjustable viewing of the screen, such that the display is freely movable
`independent of both a separate keyboard and the work surface. Indeed,
`Sweere shows, in Figure 29, that its monitor mountings are usable in
`mobile workstations. . . .
`It would have been obvious to modify Dell, as modified by
`Sweere, by mounting, proximate to the work surface, the input device
`tray of Allan. This would advantageously increase space on the work
`surface, especially when the keyboard is not in use, as well as provide
`for additional adjustability of the keyboard’s position.
`It would have been obvious to make a further modification, in
`view of Sweere (which shows a near-identical five-wheeled base as
`Dell), to include Sweere’s disclosed UPS mounting bracket in a similar
`location (and include a UPS power supply therein) so that (i) bracket /
`compartment 100 of Dell would then be available to store a computing
`device, (ii) power could be provided to this computing device, and
`(iii) a power cord could be easily and safely run along the floor to a
`power outlet for recharging the power supply, and (iv) the power unit
`would be stored low on the cart, giving the cart a lower center of
`gravity, increasing its stability (See Sweere Fig. 29, and in particular
`
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`the relative heights of the CPU mounting bracket 1218 and UPS [power
`supply] mounting bracket 1220).
`It further would have been obvious to use the now available
`bracket / compartment 100 mounted to the bottom of the horizontal
`work surface of Dell, modified to be of the appropriate size, to provide
`a location for supporting a computing device, advantageously keeping
`the computing device (i) out of the way of the user’s hands and feet and
`(ii) close to the work surface for easy connection to a keyboard, mouse,
`display, and like computer peripherals. As discussed in the preceding
`paragraph, it would have been obvious to support the computing device
`relatively high up on the mobile workstation while supporting the
`power source relatively low down on the mobile workstation. (See
`Sweere Fig. 29, and in particular the relative heights of the CPU
`mounting bracket 1218 and UPS [power supply] mounting bracket
`1220). Thus, the computing device would be located in the
`compartment below, and supported by, the horizontal tray.
`Pet. 35–36. Petitioner adds that claim 101 would have been obvious over the three
`references because the “proposed combination would necessarily result in at least
`‘a portion of the computing device [being] covered by the work surface.’” Id. at
`49.
`
`These stated reasons to combine the relied-upon prior art teachings of Dell,
`Sweere, and Allan, in the manner asserted, are sufficient, and the cited evidence
`supports the reasoning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`(2007) (requiring “an apparent reason to combine the known elements in the
`fashion claimed by the patent at issue”). Further, nothing unpredictable results
`from such a combination. See id. at 416 (“The combination of familiar elements
`according to known methods is likely to be obvious when it does no more than
`yield predictable results.”).
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`Patent Owner argues that there was no reason in the art, other than
`impermissible hindsight, to locate a computer terminal in Dell’s compartment 100
`instead of on the top surface 22 in order to free up workspace. PO Resp. 29–31.
`Patent Owner further argues that it was the inventors of the ’178 patent who
`“recognized” the need for an unobstructed work surface. Id. at 31. We disagree.
`Dell explicitly teaches that the work surface may omit the computer so that other
`equipment may be carried on it. Ex. 1003, 2:43–47 (“These openings can include
`grommets 32 which can be used to route wires or locking equipment in which to
`lock a lap/top computer (40 shown in phantom) or other equipment that may be
`carried on top of the work surface.”). Furthermore, each of Dell’s seven claims
`requires a work surface, but none of its claims requires a computer (or any other
`equipment) on the work surface. Id. at 4:32–65. Thus, Dell teaches a top of a
`work surface that may be free of a computer. Further, Sweere teaches placing a
`computer separate from its display screen and out of the way. Ex. 1004, Fig. 29,
`15:3–24. Petitioner’s obviousness rationale does not rely on hindsight.
`Patent Owner presents several additional arguments in opposition to
`Petitioner’s challenge to the patentability of claims 27, 28, 88, and 101. First,
`Patent Owner argues that locating a computer below a work surface,14 as required
`by claims 27, 28, 88, and 101, “is not disclosed by any of the cited references.”
`
`
`14 Specifically, Patent Owner refers to claim 27’s recitation of “a computing device
`positioned below the work surface,” which claims 28 and 88 inherit through
`dependence, and claim 28’s recitation of a tray that is “adapted to support a
`computing device so that at least a portion of the computing device is covered by
`the work surface,” which claim 101 inherits through dependence. PO Resp. 12 n.2.
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`PO Resp. 12–13. During the hearing, counsel for Patent Owner argued the same
`point, stating:
`KSR analysis requires that you go one by one and find – at least start
`with finding each one of the elements in the prior art references, and
`then you take a look and see why you would combine them in a way
`that’s being proposed. But here you don’t even get past Step 1 because
`you can’t find the computer underneath the right work surface which is
`clearly an element of all the claims that were at issue.
`Tr. 25:24