UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`
`Patent Owner
`
`____________
`
`Case IPR2015-00774
`
`Patent 8,585,136
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`
`Patent Owner
`
`____________
`
`Case IPR2015-00774
`
`Patent 8,585,136
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`Patentee Improperly Conflates Its Claims & Specification ............................. 1
`
`Specification Features Imported Into the Claims ............................................ 3
`
`A.
`
`Improperly Interpreted Claim Terms: ................................................... 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`“Combination” ........................................................................... 5
`
`“User” ........................................................................................ 5
`
`“Stool Base” ............................................................................... 6
`
`“Saddle” ..................................................................................... 6
`
`“Assembly” ................................................................................. 7
`
`“or, alternatively” ...................................................................... 8
`
`B.
`
`Dependent Claims ................................................................................. 8
`
`III.
`
`Patentee Sweeps Unnecessary Structure Into Claim 12 .................................. 9
`
`IV. Mackey Anticipates Claims 1, 2, 4, 5, 8, 10 and 11 ...................................... 12
`
`V.
`
`Pollack II & Pollack I Render Claims 1, 2 and 6-14 Obvious ...................... 14
`
`A.
`
`B.
`
`The “Manually Operable Means” is a Latch ....................................... 14
`
`Arguments Directed to Claims 2, and 7, 8, 10 and 11 are Waived ..... 15
`
`1.
`
`Arguments Directed to Claims 6 & 9 are Incomplete .............. 15
`
`C.
`
`The Pollack Combination is Well Within Ordinary Skill ................... 15
`
`VI. Alleged Secondary Indicia Lack Objectivity & Required Nexus ................. 16
`
`A. A Proper Nexus Cannot Embrace Prior Art Features ......................... 17
`
`B.
`
`C.
`
`Patentee’s Sales Evidence is Directed to a One-Party Market ........... 18
`
`Record Shows Unclaimed Features Driving Trey® Chair Sales ........ 20
`
`i
`
`
`
`D.
`
`E.
`
`Patentee Offers No Praise of One Skilled in the Art ........................... 23
`
`Patentee’s Copying Allegations Are Unsupported ............................. 24
`
`VII. Not Even Qualifying Secondary Indicia Could Overcome the Record ........ 25
`
`VIII. Conclusion ..................................................................................................... 25
`
`
`
`ii
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Asyst Techs, Inc. v. Empak, Inc.,
` 268 F.3d 136 (Fed. Cir. 2001) .............................................................................. 11
`
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
` 713 F.3d 1369 (Fed. Cir. 2013) ............................................................................ 24
`
`Ex parte Masham,
` 2 USPQ2d 1647 (BPAI 1987) ..................................................................... 2, 5, 12
`
`Galderma Labs., L.P. v. Tolmar, Inc.,
` 737 F.3d 731 (Fed. Cir. 2013) .............................................................................. 20
`
`Golight Inc. v. Wal-Mart Stores Inc.,
` 355 F.3d 132 (Fed. Cir. 2004) ................................................................................ 9
`
`Graham v. John Deere Co.,
` 383 U.S. 1 (1966) ................................................................................................. 23
`
`In re Applied Materials, Inc.,
` 692 F.3d 1289 (Fed. Cir. 2012) ............................................................................ 19
`
`In re Huai-Hung Kao,
` 639 F.3d 1057 (Fed. Cir. 2011) ............................................................................ 17
`
`In re Huang,
` 100 F.3d 135 (Fed. Cir. 1996) .............................................................................. 19
`
`In re Kuhle,
` 526 F.2d 553 (CCPA 1975) .................................................................................. 15
`
`In re Paulsen,
` 30 F.3d 1475 (Fed. Cir. 1994) .............................................................................. 17
`
`Info-Hold, Inc. v. Applied Media Techs. Corp.,
` 783 F.3d 1262 (Fed. Cir. 2015) .............................................................................. 8
`
`
`iii
`
`
`
`Institut Pasteur v. Focarino,
` 738 F.3d 1337 (Fed. Cir. 2013) ............................................................................ 23
`
`J.T. Eaton & Co. v. Atlantic Paste & Glue Co.,
` 106 F.3d 1563 (Fed. Cir. 1997) ............................................................................ 18
`
`KSR Int’l Co., v. Teleflex Inc.,
` 550 U.S. 398 (2007) ...................................................................................... 14, 16
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
` 358 F.3d 898 (Fed. Cir. 2004) ................................................................................ 8
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
` 395 F.3d 1364 (Fed. Cir. 2005) ............................................................................ 18
`
`Optivus Tech., Inc. v. Ion Beam Applications S.A.,
` 2005 U.S. Dist. LEXIS 44535 (C.D. Cal. Mar. 13, 2005) ................................... 24
`
`Ormco Corp. v. Align Tech., Inc.,
` 463 F.3d 1299 (Fed. Cir. 2006) ............................................................................ 20
`
`Superguide Corp. v. DirecTV Enterprises, Inc.,
` 358 F.3d 870 (Fed. Cir. 2004) ................................................................................ 2
`
`Tempo Lighting, v. Tivoli, LLC,
` 742 F. 3d 97 (Fed. Cir. 2014) ................................................................................. 1
`
`Wyers v. Master Lock Co.,
` 616 F.3d 123 (Fed. Cir. 2010) ................................................................... 2, 17, 25
`
`iv
`
`
`
`
`
`Statutes
`
`35 U.S.C. § 112 ¶ 6 ............................................................................................. 9, 12
`
`Other Authorities
`
`Giles S. Rich, The Extent of the Protection and Interpretation of Claims--
`American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L.,
`497, 499 (1990) ........................................................................................................ 12
`
`
`
`v
`
`
`
`I. Patentee Improperly Conflates Its Claims & Specification
`
`
`
`Patentee’s Response completely disregards the proper tenets of claim
`
`construction. Patentee argues for so many features to be incorporated from the
`
`specification into its broadly drafted claims that even its employee-witnesses lose
`
`track. Each one of Patentee’s employee-witnesses offers up different specification
`
`limitations for importation to the claims. (Ex. 1025 49:3-67:8; Ex. 1027 30:15 -
`
`45:9; and Ex. 1028 46:10-67:7, all discussing Ex.1022).
`
`
`
`This jumble of inconsistent testimony is not surprising given that Patentee
`
`failed to instruct any of its employee-witnesses on proper claim construction
`
`practices. None of Patentee’s witnesses reviewed the intrinsic record (prosecution
`
`history) of the ‘136 patent before construing the claims. (Ex. 1025 31:9-32:6;
`
`Ex.1027 30:7-14; and Ex. 1028, 18:19-19:5, all discussing Ex. 1013).
`
`“Prosecution history, while not literally within the patent document, serves as
`
`intrinsic evidence for purposes of claim construction. This remains true in
`
`construing patent claims before the PTO.” Tempo Lighting, v. Tivoli, LLC, 742 F.
`
`3d 973, 977 (Fed. Cir. 2014). The Board should not accord any weight to this
`
`conflicting and incomplete claim construction testimony.
`
`
`
`Even if the incomplete claim analysis could be excused, which it cannot,
`
`Patentee provides no cogent explanation as to why its proposed mishmash of
`
`unclaimed specification features must be imported to its claims. This is because
`
`1
`
`
`
`there can be no proper rationale for side-stepping the well-established prohibition
`
`against importing specification limitations to broadly drafted claims. Superguide
`
`Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Still
`
`worse, Patentee argues that its apparatus claims must somehow be interpreted to
`
`require users of a certain age, limitations nowhere recited in its specification let
`
`alone its claims (Pat. Resp. at 16; Ex. 1027 at 22:9-23:11; and Ex. 1028 at 54:7-
`
`62:16). Of course, even if these intended users/uses were recited in the apparatus
`
`claims of record, they would be irrelevant to patentability. Ex parte Masham, 2
`
`USPQ2d 1647 (BPAI 1987) (intended uses cannot patentably differentiate
`
`apparatus claims).
`
`
`
`Finally, Patentee alleges objective indicia of non-obviousness but fails to
`
`identify the required nexus between its patented claims and its alleged indicia.
`
`Moreover, Patentee’s proffered indicia lack any modicum of objectivity. Even if
`
`these fatal deficiencies could be ignored, which they cannot, no amount of
`
`objective indicia could outweigh the significant evidence of obviousness in this
`
`trial record. See, e.g., Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir.
`
`2010) (“secondary considerations of non-obviousness … simply cannot overcome
`
`a strong prima facie case of obviousness”).
`
`2
`
`
`
`
`
`Patentee’s Response fails to rebut the Board’s August 24, 2015 Institution
`
`Decision, which correctly found that the undue breadth of the’136 patent claims
`
`encompass over a century of prior art chair configurations.
`
`II.
`
`Specification Features Imported Into the Claims
`
`Patentee’s partner, David Harting (who receives royalties on the ‘136 patent)
`
`annotated a version of claim 1 during his cross-examination to illustrate the claim
`
`construction he applied in his declaration1. (Ex. 1025 at 49:3-67:8; Ex. 1022).
`
`
`1 Mr. Harting is a long-time, partner of Patentee. (Ex. 1020; Ex. 1025 at 20:23-
`
`
`
`21:4, 27:6-28:13; and Ex. 1028 at 15:19-16:15)
`
`3
`
`
`
`As shown in his above annotations Mr. Harting advocates adding a vast
`
`number of limitations to claim 1. Mr. Harting went so far as to cross-out terms of
`
`the issued claims (“or, alternatively”) that he expressly disregarded in his analysis,
`
`replacing them with terms that indicate the exact opposite! (“as well as”). (Ex.
`
`1025 at 63:17-64:16). Mr. Harting’s rewriting of the claim is so extensive that he
`
`added an asterisk (*) to avoid having to hand write an entire passage of his
`
`declaration, and added a double asterisk (**) where he could not fit all of the new
`
`terms in his desired, textual location. (Id. at 60:11-22).
`
`As absurd as Mr. Harting’s claim revisions may be, the remaining employee
`
`–witnesses, inventor Anthony Warncke and CEO Philip Bontrager, offered similar
`
`degrees of revision—but altogether different from those of Mr. Harting. (Ex. 1027
`
`at 30:15 -45:9; and Ex. 1028 at 46:10-67:7). As noted above, these extreme
`
`positions are not surprising given that Patentee failed to instruct its employee-
`
`witnesses on proper claim construction practices. Indeed, had these witnesses
`
`reviewed the prosecution history, they would have seen some of the very features
`
`they advocate for inclusion in claim 1 expressly removed from it immediately prior
`
`to issuance, and/or separately recited, then cancelled from dependent claims
`
`immediately prior to issuance. (Ex. 1013 at pgs. 207-212).
`
`
`
`4
`
`
`
`A.
`
`Improperly Interpreted Claim Terms:
`
`1.
`
`“Combination”
`
`Patentee argues that the preamble language “combination” must be
`
`interpreted to limit the claim to “two, and only two units” (base and chair), despite
`
`using “comprising” in its claims. (Pat. Resp. at 15-16). To arrive at this
`
`construction, Patentee argues that there is no suggestion in the patent of three or
`
`more “parts.” Id.
`
`The plain language of Patentee’s claims directly refutes its strained parts-
`
`limitation theory. For example, Claim 1 itself recites “the combination further
`
`comprising…” Indeed, Claim 9 also adds “the base portion further includes” a tilt
`
`or swivel mechanism. This tilt or swivel mechanism is plainly an optional “part”
`
`not within the scope of claim 1. Patentee’s “only two” argument is belied by the
`
`plain language of its claims. This unduly narrow construction fails.
`
`2.
`
` “User”
`
`As noted above, intended uses and users cannot limit the structure of an
`
`apparatus claim. Even if such non-structural limitations could be considered,
`
`which they cannot, Patentee cannot even agree on whether the user should be
`
`limited to a college student, student-aged user, person over 12 years old, or person
`
`over 8 years old. (Pat. Resp. at 16; Ex. 1027 at 23:8-11; and Ex. 1028 at 54:7-
`
`62:16). This misguided argument is without merit. Masham, 2 USPQ2d at 1648.
`
`
`
`5
`
`
`
`3.
`
`“Stool Base”
`
`
`
`Patentee argues at page 17 of its Response that a stool is “a seating unit with
`
`a top surface upon which a person can sit,” citing 8:14-17 of the ‘136 patent.
`
`Petitioner agrees with this construction.
`
`
`
`While Patentee’s witnesses offer more limiting constructions of stool rather
`
`than the one relied upon at page 17 of the Response, these definitions, like many
`
`others, vary from witness to witness. (Ex. 1027 at 31:10-22). Moreover, the
`
`“backless and armless” construction proffered by Mr. Bontrager is not even
`
`supported by the extrinsic evidence he relies upon. The cited dictionary definition
`
`(Ex. 2021) also explains that a stool is “usually” without back or arms, but not
`
`always. Indeed, the Google Image Exhibit (2022), as unreliable as it is, shows
`
`stools with backs (green stool on pg. 1; Silver, Yellow, Red and wood stools of pg.
`
`2). (Ex. 1028 at 37:8-9). This unduly narrow construction fails.
`
`4.
`
`“Saddle”
`
`Patentee argues that “saddle” has a special meaning, but fails to identify any
`
`lexicographic definition in its specification. Rather, Patentee directs the Board to
`
`the constructions offered by CEO Mr. Bontrager, which, as noted above, has not
`
`performed a proper claim construction analysis. (Ex. 1028 at 19:3-5). Indeed, Mr.
`
`Bontrager concludes at the end of page 29 of his declaration (Ex. 2008) that all of
`
`the specification description of the saddle must be compared to the art. Neither the
`
`6
`
`
`
`broadest reasonable interpretation (BRI) applied in this IPR proceeding, or a
`
`Philips construction, permit such wholesale substitution of a patent specification
`
`for the plain language of a claim. Likewise, these definitions completely ignore
`
`claims 2 – 3 and 8 which separately recite dimensional features of the saddle,
`
`necessarily precluding this interpretation of claim 1through the doctrine of claim
`
`differentiation. Confusingly, Patentee’s other witnesses offer conflicting
`
`definitions to that of Mr. Bontrager. (See, e.g., Ex. 1027 at 43:5-15).
`
`5.
`
`“Assembly”
`
`Patentee argues that the term “assembly” defines a structure: “below the
`
`seat, engaging the saddle when coupled, and have integral rocker legs wide enough
`
`to accept the saddle but still more or less within a vertical projection of the seat
`
`surface lateral edges to fit into the kneehole of a desk.” (Pat. Resp. at 19)
`
`There is no disclosure that the assembly must include integral rocker legs.
`
`Patentee, as it does for other claim construction arguments, argues that since the
`
`specification does not show “attachable” rockers, the claims must be limited to
`
`integral rockers. Id. Like most of Patentee’s claim construction positions, if
`
`accepted, this argument would turn the law of claim construction on its head.
`
`“[W]e have ‘expressly rejected the contention that if a patent describes only a
`
`single embodiment, the claims of the patent must be construed as being limited to
`
`that embodiment.’ . . . [T]he scope of the invention is properly limited to the
`
`7
`
`
`
`preferred embodiment if the patentee uses words that manifest a clear intention to
`
`restrict the scope of the claims to that embodiment.” Info-Hold, Inc. v. Applied
`
`Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (quoting Liebel-
`
`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (emphasis
`
`added). This unduly narrow construction fails.
`
`6.
`
`“or, alternatively”
`
`
`
`Patentee argues that the Board did not give weight to all terms in its
`
`construction of claim 1. (Pat. Resp. at 19). That is, despite the fact that claim 1
`
`uses the language “or, alternatively” the Board should read this language mean “as
`
`well as.” (Ex. 1025 at 63:17 – 64:14).
`
`
`
`Claim 1 presents alternative second configurations. In one, the base may be
`
`employed as a work surface for the first user. In an alternative configuration, the
`
`base may be used as a stool by a second user. The art need only show one of two
`
`plainly expressed alternatives. The Board cannot ignore the plain language of
`
`claim 1 “or, alternatively” in favor of the exact opposite meaning.
`
`B. Dependent Claims
`At pages 20-21 of its Response, the Patentee characterizes the scope of
`
`
`
`dependent claims 2, 4, 6 and 9. These statements will be addressed in the
`
`discussion of the prior art below, to the extent even argued.
`
`8
`
`
`
`III. Patentee Sweeps Unnecessary Structure Into Claim 12
`
`The parties agree that the terminology “manually operable means for
`
`releasably engaging said chair to said base portion” of claim 12 invokes 35
`
`U.S.C. § 112 ¶ 6. (Pat. Resp. at 21). The parties disagree as to the corresponding
`
`structure and function of this claimed feature.
`
`The first step in construing a means-plus-function claim limitation is to
`
`define the particular function of the claim limitation. Golight Inc. v. Wal-Mart
`
`Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). In this case, the claimed
`
`function is “releasably engaging said chair to said base portion.” Next, the
`
`specification is analyzed for structure that is linked to the claimed function. In this
`
`case, the structure is further limited by Patentee to include only that structure
`
`which is “manually operable.” The only manually operable structure linked to the
`
`aforementioned function is the latch (160).
`
`
`
`To sweep in additional structures, Patentee ignores claim 12’s “release”
`
`function in favor of an un-recited “lock together” function. Patentee attributes the
`
`“locked” function to the Board’s Institution Decision. (Id. at 17-18) This portion
`
`of the Board’s Decision simply explains joining the base and chair requires more
`
`than simple contact. The Board did not, as Patentee alleges, license it to sweep in
`
`unnecessary structure to claim 12. Indeed, at page 22 of its Decision, the Board
`
`explicitly adopted Patentee’s construction for “manually operable means.” By
`
`9
`
`
`
`injecting an un-recited function into claim 12, Patentee argues that the latch,
`
`receptacle and claw, and saddle are all necessary structures to “lock” the chair to
`
`the base. (Pat. Resp. at 34).
`
`
`
`As to step two, Patentee admits its claw is not manually operated by hand.
`
`(Pat. Resp. at 23). Nevertheless, Patentee strangely urges the claw is structure for
`
`its manufactured “locked together” function. That is, since a user may re-close the
`
`latch by force delivered to the chair cushions, somehow this changes the fact that
`
`the latch is only initially opened by hand. The Board is not so easily misled.
`
`
`
`Patentee identifies only the latch and cushions as manually operable. Below
`
`is Fig. 9 of the ‘136 patent as annotated by CEO Bontager (Ex. 2008 at pg. 36).
`
`Mr. Bontrager explains chair disassembly after the latch is initially opened (i.e.,
`
`manually operated to release engagement). (See also Ex. 1025 at 67:7-68:5).
`
`Until the latch is opened, the chair cannot be released from its engagement. (Id at
`
`68:2-5). Once released, the user can lift the chair via its cushions for disassembly.
`
`10
`
`
`
`
`
`Although Patentee identifies manual force being applied to seat cushions (left),
`
`tellingly, it does not identify the seat cushions as the corresponding structure of its
`
`“force to close” argument. Until the latch is opened, none of the claw, saddle or
`
`receptacle can be moved— even thereafter, none of them are ever manipulated,
`
`directly, by hand. (Ex. 1025 at 68:2-16). Complete chair “disassembly/
`
`reconfiguration “is not the recited function.
`
`
`
`As best understood, Patentee’s “all-parts” theory seems premised on a
`
`misguided manufacturing perspective. In other words, Patentee argues for all
`
`structure deemed necessary for the chair to function as intended. (Ex. 2053-4).
`
`This reading is simply improper under the law. “The corresponding structure to a
`
`function set forth in a means-plus-function limitation must actually perform the
`
`recited function, not merely enable the pertinent structure to operate as intended.”
`
`Asyst Techs, Inc. v. Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001) (emphasis
`
`added).
`
`
`
`
`
`The structure corresponding to “manually operable means” is the latch
`
`alone, and statutory equivalents. Indeed, Patentee has previously agreed,
`
`explaining its latch as a “manually operable device having an open position that
`
`allows separation of two components and a closed position that locks the
`
`components together.” (Prelim Resp. at 14, emphasis added). Patentee now talks
`
`11
`
`
`
`out of both sides of its mouth in misconstruing the recited function of claim 12, the
`
`law of §112, ¶ 6, and the plain teachings of its own specification.
`
`IV. Mackey Anticipates Claims 1, 2, 4, 5, 8, 10 and 11
`
`As former CAFC Chief Judge Rich famously proclaimed, “the name of the
`
`game is the claim.” Giles S. Rich, The Extent of the Protection and Interpretation
`
`of Claims--American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L., 497,
`
`499 (1990). Patentee argues that Mackey lacks “categorical identity” to its chair.
`
`(Pat. Resp. at 24). This is not a patentable distinction that is in any way related to
`
`the claims of the ‘136 patent. In the same vein, Patentee’s arguments asserting that
`
`its apparatus claims must somehow be limited to a user of a specific age are
`
`irrelevant to the interpretation of apparatus claims. Masham, 2 USPQ2d at 1648.
`
`Next, Patentee asserts that Mackey is not a “two-unit combination.” As
`
`noted above, this strained definition fails. The fact that Mackey also includes a
`
`drawer in his base portion does not make his base drawer a “third unit” any more
`
`than the tilt and swivel mechanism of Patentee’s claim 9 is a “third unit.” Mackey
`
`anticipates even under Patentee’s narrow claim read.
`
`Patentee argues that Mackey does not describe an armless backless sitting
`
`surface. (Pat. Resp. at 27). Of course, claim 1 does not recite “armless and
`
`backless.” Indeed, Patentee has already admitted in its own response that a “stool”
`
`12
`
`
`
`defines only a top seating surface. (Id at 17). Adding the word “base” simply
`
`refers to the function of the stool relative to the chair.
`
`Patentee argues dimensional features of the term “saddle” that appear
`
`nowhere in claim 1. Likewise, given that such features are recited in dependent
`
`claims, claim 1 cannot be read to include such features. (Id. at 27.)
`
`Finally Patentee argues that Mackey does not describe an assembly with
`
`integral rocker legs, or a “lock” in all directions of its rocker and stool units. (Id. at
`
`28). First, Patentee’s claims do not recite integral rocker legs as explained above.
`
`As to Patentee’s “lock” argument, the Mackey chair is limited in movement by the
`
`cleat 5, which is described as serving to “lock the [upper and lower sections]
`
`together.” (Ex. 1003 1:36-40). Patentee’s claims do not recite “locking in all
`
`directions.”
`
`With respect to dependent claim 4, Patentee attempts to infuse the term
`
`“underside” to the claims based upon specification drawings. Comparing the ‘136
`
`specification to Mackey, rather than the ‘136 claims, fails.
`
`As to claim 8, Patentee argues that Mackey “discourages reasonable persons
`
`from using the cabinet top as a sitting surface.” (Pat. Resp. at 30-31). Mackey
`
`explicitly teaches a seat, “comfort” is not a claim feature. (Ex. 1003 at 1:49-50).
`
`Patentee’s alleged distinctions over Mackey fail. Claims 1, 2, 4, 5, 8, 10 and
`
`11 are anticipated and must be cancelled.
`
`13
`
`
`
`V.
`
`Pollack II & Pollack I Render Claims 1, 2 and 6-14 Obvious
`
`At pages 32-33 of its Response, Patentee admits that the combination of the
`
`Pollack II rocker chair to the Pollack I base is “plausible.” The only rebuttal
`
`provided to this combination is that the combination of chair and base would
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`allegedly require removal of bumpers 51 (which is not even true), violating
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`Patentee’s “no extra parts” rule, which appears nowhere in its claim. Patentee
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`also argues that Pollack is not a “task” chair, and the relative dimensions of the
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`Pollack chair preclude use with a desk. Again, none of these alleged distinctions
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`are recited anywhere in the claims. The remainder of Patentee’s arguments
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`simply rehash the phantom saddle and stool limitations arguments addressed
`
`above relative to Mackey. As above, none of Patentee’s arguments are grounded
`
`in the actual language of its claims.
`
`A. The “Manually Operable Means” is a Latch
`Patentee’s arguments pertaining to claim 12 are based upon its improper
`
`means-plus-function mapping addressed above. The manually operable means do
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`not require all of the necessary hardware for the chair to operate as intended, only
`
`that structure, which is both manually operable, and “releasable engages” the chair
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`to/from the base. As Patentee stated in its preliminary response, the latch of the
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`‘136 patent is a “manually operable device having an open position that allows
`
`separation of two components and a closed position that locks the components
`
`14
`
`
`
`together.” (Prelim Resp. at 14, emphasis added). The function of claim 12 is not
`
`disassembly/ reconfiguration, just “release” of the engagement.
`
`B. Arguments Directed to Claims 2, and 7, 8, 10 and 11 are Waived
`At page 35 of its Response, Patentee states that “the list of differences grows
`
`as one moves to the other claims.” (Pat. Resp. at 35). Yet, only claim 6 and 9 are
`
`briefly mentioned relative to the Pollack ground. Patentee was explicitly
`
`cautioned against such practices in the Scheduling Order: “[t]he patent owner is
`
`cautioned that any arguments for patentability not raised and fully briefed in the
`
`response will be deemed waived.” (Paper 8 at 7).
`
`Arguments Directed to Claims 6 & 9 are Incomplete
`
`1.
`As to claim 6, Patentee argues that the Pollack latch is on the base, not the
`
`seat. That is, Patentee argues that of the two possible locations to put the latch
`
`(i.e., base or seat), Pollack only explicitly teaches one such configuration. Of
`
`course, rearranging known elements in a configuration recognized as functionally
`
`equivalent to a known configuration is per se obvious. In re Kuhle, 526 F.2d 553
`
`(CCPA 1975). Claim 9 appears to import special meaning to “pedestal,” which
`
`Patentee fails to explain in any meaningful regard. In any event, Patentee concedes
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`five-star, pedestals are well known in the art. (Ex. 1027 at 16:4-25; Ex. 2046 at 5).
`
`C. The Pollack Combination is Well Within Ordinary Skill
`Patentee argues that the Pollack patents would need to be modified to be
`
`combined as presented in the trial ground. (Pat. Resp. at 36-37). Of course, every
`
`15
`
`
`
`obviousness combination involves modification. “A person of ordinary skill in the
`
`art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
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`421. The inferences and creative steps that a person of ordinary skill would employ
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`can be taken into account. Id. at 418. Patentee then proceeds to argue necessary
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`modifications to the Pollack ground to arrive at its commercial embodiment, and
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`marketing plans. (Pat. Resp. at 36).
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`Patentee urges other modifications deemed necessary to the Pollack ground
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`based on its own, distorted claim constructions such as the dimensioning of chair
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`components to accommodate the size/age of an undefined “student-age” person.
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`Patentee’s arguments fail.
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`VI. Alleged Secondary Indicia Lack Objectivity & Required Nexus
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`
`
`Patentee submitted the testimony of three employee-witnesses: Mr. Philip
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`Bontrager, Patentee’s CEO; Mr. Anthony Warncke, an inventor of the ‘136 patent;
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`and Mr. David Harting, a long-time partner of Patentee who receives ongoing
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`royalties from the ‘136 patent. Even if the obvious bias of these employee-
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`witnesses could be ignored, which it cannot, the “evidence” relied upon by these
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`declarants is equally devoid of objectivity. The Board cannot give weight to
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`subjective indicia advanced by parties with a plain interest in the outcome of this
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`trial proceeding.
`
`16
`
`
`
`
`
`Setting aside for a moment the lack of objectivity in the Patentee’s witness
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`testimony and submitted evidence, “[f]or objective evidence of secondary
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`considerations to be accorded substantial weight, its proponents must establish a
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`nexus between the evidence and the merits of the claimed invention.” In re Huai-
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`Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (quoting Wyers, 616 F.3d at
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`1246). Where objective indicia “result[ ] from something other than what is both
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`claimed and novel in the claim, there is no nexus to the merits of the claimed
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`invention.” The burden of showing that there is a nexus lies with the Patent
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`Owner. See In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). Patentee has
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`failed to meet its nexus burden as it has not identified any novel aspects of its
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`claims. Instead, it seeks to side-step its nexus burden altogether by referencing the
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`entirety of its independent claims. Patentee’s unsupported nexus assertions fail.
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`A. A Proper Nexus Cannot Embrace Prior Art Features
`Patentee does not identify any novel feature of its claimed chair as providing
`
`
`
`a nexus to its evidence. Rather, Patentee concludes that its claims encompass a
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`commercial product identified as its “Trey® chair,” and then simply discusses
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`sales data, product reviews and conclusory copying allegations related to this
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`product. (Pat. Resp. at 38; Ex. 2008 at 86).
`
`
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`It is insufficient for a product/use merely to be within the scope of a claim in
`
`order for secondary evidence of non-obviousness tied to that product to be given
`
`17
`
`
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`substantial weight. There must also be a causal relationship, a “nexus,” between
`
`the evidence and the claimed invention. Merck & Co. v. Teva Pharms. USA, Inc.,
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`395 F.3d 1364, 1376 (Fed. Cir. 2005). The failure to identify a particular nexus is
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`especially glaring when discussing its purported evidence of commercial success.
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`
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`Multi-function chairs as broadly claimed by the ‘136 patent have been
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`known in the art for well over a century. (Ex. 1003). Because the Federal Circuit
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`has made clear that “the asserted commercial success of the product must be due to
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`the merits of the claimed invention beyond what was readily available in the prior
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`art,” it is not surprising that Patentee avoids identifying a novel feature of its claim
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`(i.e., nexus). J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571
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`(Fed. Cir. 1997). Every element of the ‘136 claims are found in the art of record.
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`Indeed, the present record is replete with prior art describing multi-function chairs.
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`Patentee’s Sales Evidence is Directed to a One-Party Market
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`B.
` A patentee demonstrates commercial success by showing significant sales
`
`
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`of the patented product in a relevant market. Id.
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`
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`Patentee does not identify a relevant market, or any “market” for that matter.
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`In an attempt to argue commercial success, Patentee presents a subjective sales
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`analysis which is unique to a single manufacturer— itself. Patentee argues that its
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`Trey® chair is a “contract chair” sold mostly to institutional buyers. (Ex. 1028 at
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`9:7-10:9 and 67:16-68:9). Patentee offers no evidence whatsoever of a relevant
`
`18
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`
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`market at all, just its own, internal report card. Yet, in order for the sales data to be
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`“objective” it must be subject to typical market dynamics. That is, a relevant
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`market assessment takes into consideration, at a minimum: competit
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