Trials@uspto.gov
`571-272-7822
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`Paper 50
`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 IPR2015-00301
`Patent 6,493,220 B1
`
`
`
`
`Before MICHAEL R. ZECHER, JENNIFER S. BISK, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`

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`IPR2015-00301
`Patent 6,493,220 B1
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`INTRODUCTION
`
`I.
`Petitioner, Enovate Medical, LLC, filed a Petition to institute an inter partes
`review of claims 1 and 2 of U.S. Patent No. 6,493,220 B1 (“the ’220 patent,”
`Ex. 1001). 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, instituting trial on one of Petitioner’s two
`asserted grounds, namely, whether claims 1 and 2 are unpatentable as obvious over
`Dell1 and Sweere.2 Paper 11.
`During the trial, Patent Owner filed a Response under seal (Paper 14, “PO
`Resp.”),3 and Petitioner filed a Reply. Paper 20 (“Reply”). Additionally, both
`parties filed Motions to Exclude evidence. Paper 28 (“Pet. Mot. to Excl.”4); Paper
`30 (“PO Mot. Excl.”). Finally, Patent Owner filed a Motion to Dismiss and
`Terminate (Paper 32, “Mot. to Term.”), against which Petitioner filed an
`Opposition (Paper 35, “Opp. to Mot. to Term.”), and in support of which Patent
`Owner filed a Reply (Paper 45).
`
`
`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 Patent Owner’s Response, with information relating to sales of its point-of-care
`(or POC) carts redacted, is publicly available as Paper 15.
`4 The evidence Petitioner seeks to exclude—Exhibits 2003–2006—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 27.
`2
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`A consolidated hearing for oral arguments in this inter partes review and
`Case IPR2015-00300 was held January 13, 2016. A transcript of the hearing
`appears in the record. Paper 47 (“Tr.”).
`We hold claims 1 and 2 unpatentable.
`
`A. Related Matters
`
`Patent Owner has asserted the ’220 patent along with additional patents,
`including related U.S. Patent No. 6,721,178 B1 (“the ’178 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 7, 2. Claims of the
`related ’178 patent are being challenged by Petitioner in Case IPR2015-00300.
`
`B. The ’220 Patent
`The ’220 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, 1:7–
`12. The mobile workstation can be pushed from room to room, for example, by a
`medical practitioner during patient rounds at a hospital. Id. at 2:63–65.
`Figure 4b of the patent is reproduced below.
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`
`Figure 4b shows a perspective view of the mobile workstation. The
`workstation includes adjustable-height horizontal tray 12 supported by chassis 14.
`Ex. 1001, 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 1:10–11 (“computer terminal
`mounted beneath the tray”); id. at 6:50–52 (“Because the docking station is
`vertically mounted, the computer terminal does not occupy the top surface of the
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`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, 12:59–61. The horizontal beams
`include casters (wheels) 80. 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. The Challenged Claims
`Claims 1 and 2 are reproduced below.
`1. A mobile workstation, comprising:
`a wheeled chassis;
`a tray supported by the chassis and having a lower surface and
`an upper surface defining a substantially horizontal work surface;
`a bracket mounted to the bottom of the horizontal work surface
`to support a wireless computer terminal;
`a display screen mounted substantially perpendicular to and
`above the top of the horizontal work surface, wherein the display
`screen mounts to a tiltable bracket connecting the display screen to the
`tray and for rotating the display screen relative to the tray; and
`a power unit for the wireless computer terminal and supported
`by the chassis.
`
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`The mobile workstation of claim 1, wherein the chassis
`2.
`further comprises:
`a dolly assembly;
`a vertical beam having a first end connected to the dolly
`assembly and a second end connected to the tray; and
`means for altering the length of the vertical beam and
`maintaining the tray at a plurality of selectable distances from the
`dolly assembly.
`
`D. 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,
`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. 4–5 (offering only one proposed
`
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`construction, which was not material to the patentability challenge);5 PO Resp. 9
`(“Patent Owner agrees that the claim terms involved in the Ground 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 Petition, as
`required by 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1).” Mot. 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
`
`5 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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`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
`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.
`
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`As Petitioner concedes, Riverside does own a substantial majority—
`83.5%—of Petitioner. Opp. to Mot. to Term. 8 (citing Ex. 1017 ¶ 17). Owning a
`percentage of a party (or 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”6 sit on Petitioner’s
`six-person Executive Committee, which is a subset of Petitioner’s Board of
`Directors. Mot. to Term. 8 (citing Ex. 2017, 93:9–13, 101:6–102:14).7 But, this is
`not an additional factor of any significance. Riverside’s 83.5% ownership stake
`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. 2017, 100:25–103:15). Patent Owner additionally alleges
`that “Riverside Partners ‘approved’ filing the Petition for Inter Partes Review.”
`Id. at 9 (citing Ex. 2017, 100:25–101:5). The cited testimony of Mr. Mendez,
`however, is not probative of the allegation. It reads:
`
`
`6 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. 2017, 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. 2017, 93:9–13.
`7 Exhibit 2017 consists of select excerpts of deposition testimony of Nick Mendez
`taken in the related lawsuit. Ex. 2017, 1. Mr. Mendez is a former Chief Exective
`Officer (CEO) of Petitioner. Id. at 103:16–24; Ex. 1017 ¶ 11.
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`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. 2017, 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.8 See generally Ex. 2017; see also Mot. to Term. 7 (“Petitioner’s Board
`of Directors includes a six-person Executive Committee”).
`Patent Owner alleges that Riverside is involved in assessing settlement
`scenarios for the related lawsuit. Mot. to. Term. 9 (citing Ex. 2016, 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.
`
`8 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. 1019, 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.
`
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`Ex. 2016, 77:8–14. Mr. Brolund and Craig Stern are “from Riverside Partners,”
`but they are also on Petitioner’s Executive Committee. Ex. 2017, 93:9–13.9 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. 2016, 69:12–70:9). This is
`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. 2016, 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, IPR2014-01422, Paper 14 (PTAB March 5, 2015)
`
`
`9 Additionally, Mr. Brolund is the current Chief Financial Officer (CFO) of
`Petitioner. Opp. to Mot. to Term. 5.
`
`11
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`(“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 7, 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
`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 ’220 patent, desires review of the patent.
`Patent Owner’s Motion to Dismiss and Terminate is denied.
`
`III. ASSERTED GROUND OF UNPATENTABILITY
`
`Petitioner asserts that claims 1 and 2 would have been obvious under
`§ 103(a) over Dell and Sweere. Pet. 16–20. Under that statute, “the scope and
`content of the prior art are to be determined; differences between the prior art and
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`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
`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 UPS10 mounting bracket 1220. Ex. 1004,
`15:3–15.
`
`3. Obviousness Challenge
`
`Petitioner argues that the combined teachings of Dell and Sweere render the
`claims unpatentable, stating:
`
`
`10 Sweere does not disclose what UPS means, but Petitioner asserts that it means a
`power supply (Pet. 8, 15) 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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`It 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 free up work surface space and
`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 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 unit therein) so that (i) bracket /
`compartment 100 of Dell would then be available to store a wireless
`computer terminal, (ii) power could be provided to this wireless
`computer terminal, and (iii) a power cord could be easily and safely run
`along the floor to a power outlet for recharging the power unit. (See
`Sweere Fig. 29, and in particular 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 wireless computer terminal, advantageously
`keeping the wireless computer terminal (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. 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).
`Pet. 18–19.
`These stated reasons to combine the relied-upon prior art teachings of Dell
`and Sweere, and in the manner asserted, are sufficient. See KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “an apparent reason to combine
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`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.”).
`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 work space. PO Resp. 27–28.
`Patent Owner further argues that it was the inventors of the ’220 patent who
`“recognized” the need for an unobstructed work surface. Id. at 28. 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. See Ex. 1004,
`Fig. 29 (illustrating CPU mounting bracket 1218 separate from display screen
`216). 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 1 and 2. First, in its Response,
`Patent Owner argues that “a bracket mounted to the bottom of the horizontal work
`surface to support a wireless computer terminal,” as recited by claim 1 (and
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`incorporated into claim 2) “is not disclosed by any of the cited references.”
`PO Resp. 10–11. 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. 25:24–26:7 (emphasis added).
`This is not an accurate view of the law—at least not in the context of how
`Patent Owner uses the term “element.” In that regard, Patent Owner asserts that
`the supposedly missing element is “a bracket mounted to the bottom of the
`horizontal work surface to support a wireless computer terminal,” which is recited
`in claim 1. But, this “element” is itself composed of elements, each of which exist
`in the prior art. In particular, Dell teaches a bracket mounted to the bottom of the
`horizontal work surface, albeit to support a power supply, not a wireless computer
`terminal (Ex. 1003, 2:37–39, 3:7–12), and Sweere teaches a bracket to support a
`wireless computer terminal, albeit not one that is mounted to the bottom of a
`horizontal work surface (Ex. 1004, 15:3–15).
`Patent Owner’s argument is a classic example of attacking prior art
`references individually. But, in determining obviousness, a reference “must be
`read, not in isolation, but for what it fairly teaches in combination with the prior art
`as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
`obviousness cannot be established by attacking references individually where the
`rejection is based upon the teachings of a combination of references.”) (citing In re
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`Keller, 642 F.2d 413, 425 (CCPA 1981)). Dell and Sweere, which are both
`directed to mobile workstations, fairly teach in combination “a bracket mounted to
`the bottom of the horizontal work surface to support a wireless computer terminal,”
`as recited in claim 1.
`Patent Owner also argues “Petitioner’s proposed modification of Dell in
`view of Sweere would change the principle of operation of Dell’s cart and render
`Dell inoperable for its intended purposes.” PO Resp. 14. In particular, Patent
`Owner argues that “taking Dell’s power supply 140 out of compartment 100 and
`mounting it to the base 80 via Sweere’s bracket 1220 would destroy the ability of
`Dell’s power supply 140 to ‘counterbalance[] the weight carried by the work
`surface and assist[] in distributing the weight . . .’” Id. at 15 (quoting Ex. 1003,
`3:52–57). This argument is another attack on the Dell reference individually,
`whereas Petitioner’s asserted ground of unpatentability is based on the combined
`teachings of Dell and Sweere, in which the counterbalancing function is preserved,
`albeit with a computer ballast in lieu of a power supply ballast. Dell itself suggests
`that the ballast does not need to be in the form of a power supply. See Ex. 1003,
`3:31–33 (“Finally, the counterbalance means may also include a ballast 140 which
`may be in the form of an uninterruptable power supply.”) (emphasis added); also
`compare Ex. 1003, 4:40–49 (independent claim 1 reciting “a ballast” generally),
`with id. at 4:52–55 (dependent claim 3 reciting “[t]he mobile workstation
`according to claim 1 wherein said ballast includes a power supply”).
`Secondly, Patent Owner argues that Petitioner’s proposed modification
`“fundamentally transform[s] the Dell cart from a general purpose cart to a
`dedicated mobile computer cart.” PO Resp. 20. But, Patent Owner has not
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`shown—as its argument implies—that a general purpose cart and a computer cart
`are mutually exclusive. Patent Owner asserts that “[t]he modified Dell cart would
`only be useful as a dedicated computer cart,” but does not cite persuasive evidence
`in support of that assertion. PO Resp. 21 (citing Ex. 2001 ¶¶ 41, 45) (emphasis
`added). The most relevant aspect of the cited testimony—which is from Arthur G.
`Erdman, Ph.D.—is that modifying the Dell cart as Petitioner proposes would
`“reduc[e] its ability to effectively meet its objective as a general purpose
`workstation that can support various types of equipment.” Ex. 2001 ¶ 41
`(emphasis added). Thus, Dr. Erdman did not testify that the modification would
`eliminate that ability. In fact, common sense indicates nothing would prevent the
`modified Dell cart from carrying “other types of equipment . . . on the work
`surface.” Ex. 1003, 3:51–52. In any event, a person of ordinary skill in the art
`would not be led merely by what Dell sought to provide, and Sweere specifically
`teaches providing a mobile computer cart. Ex. 1004, 15:13–15.
`Patent Owner also argues that objective evidence of secondary
`considerations demonstrates non-obviousness of the claimed subject matter. PO
`Resp. 30. In that regard, Patent Owner first argues that the ’220 patent has been
`licensed by all of its “primary competitors” save Petitioner. Id. (citing Exs. 2003–
`2005). The cited licenses, however, cover numerous patents, and Patent Owner
`does not show a nexus with the inventions embodied in the challenged claims here.
`See Exs. 2003–2005. Thus, whatever commercial success may be demonstrated by
`the licenses, it has not been demonstrated to be the result of claims 1 and 2 of the
`’220 patent. See In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). For
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`example, the consideration Patent Owner received from the licensees may have
`been driven by a patent or patents other than the ’220 patent.
`In an attempt to establish a nexus between those licenses, as well as Patent
`O