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 IPR2015-00958
`
`Patent 8,585,136
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`Patentee Improperly Conflates Its Claims & Specification ............................. 1
`II.
`Specification Features Imported Into the Claims ............................................ 3
`A.
`Improperly Interpreted Claim Terms: ................................................... 5
`1.
`“Combination” ........................................................................... 5
`2.
`“User” ........................................................................................ 5
`3.
`“Stool Base” ............................................................................... 6
`4.
`“Saddle” ..................................................................................... 6
`5.
`“Assembly” ................................................................................. 7
`6.
`“or, alternatively” ...................................................................... 8
`Dependent Claims ................................................................................. 8
`B.
`Patentee Sweeps Unnecessary Structure Into Claim 12 .................................. 9
`III.
`IV. Yu & Clark Render Claims 1, 2, 4, 5, 8, 9 and 11 Obvious .......................... 12
`A. A Latch is a Fundamental Mechanical Structure ................................ 14
`V. Yu/Clark & Kassai Render Claims 6-10 and 12-14 Obvious ....................... 14
`VI. Alleged Secondary Indicia Lack Objectivity & Required Nexus ................. 16
`A. A Proper Nexus Cannot Embrace Prior Art Features ......................... 17
`B.
`Patentee’s Sales Evidence is Directed to a One-Party Market ........... 18
`C.
`Record Shows Unclaimed Features Driving Trey® Chair Sales ........ 20
`D.
`Patentee Offers No Praise of One Skilled in the Art ........................... 23
`E.
`Patentee’s Copying Allegations Are Unsupported ............................. 24
`VII. Not Even Qualifying Secondary Indicia Could Overcome the Record ........ 25
`VIII. Conclusion ..................................................................................................... 25
`
`
`i
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`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Asyst Techs., Inc. v. Empak, Inc.,
`268 F.3d 1364 (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
`
`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 1327 (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 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
`
`Institut Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) ................................................................................ 23
`
`ii
`
`

`
`
`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) ................................................................................................. 12
`
`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 973 (Fed. Cir. 2014) ................................................................................... 1
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ..................................................................... 2, 17, 25
`
`Statutes
`
`35 U.S.C. § 112 ¶ 6 ............................................................................................. 9, 11
`
`
`
`iii
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`
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`

`
`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
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`

`
`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
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`

`
`
`
`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 declaration.1 (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
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`

`
`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
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`

`
`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
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`

`
`3.
`
`“Stool Base”
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`
`
`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. 2072) that all of
`
`the specification description of the saddle must be compared to the art. Neither the
`
`6
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`

`
`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 claim 1 through 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 18-19).
`
`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 to 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
`
`new function to the Board. (Inst. Dec. 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 pages 21 – 22 of its Decision, the Board explicitly
`
`adopted Patentee’s construction for “manually operable means.” By injecting an
`
`9
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`

`
`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 30).
`
`
`
`As to step two, Patentee admits its claw is not manually operated by hand.
`
`(Pat. Resp. at 22). 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 Mr. Bontager. (Ex. 2072 at 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.
`
`
`
`Patentee’s “all-parts” argument is premised on a misguided manufacturing
`
`theory. 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.” (IPR2015-00774, Prelim Resp. at 14, emphasis added).
`
`Now, Patentee misconstrues the recited function of claim 12, the law of § 112, ¶ 6,
`
`and the plain teachings of its own specification
`
`11
`
`

`
`IV. Yu & Clark Render Claims 1, 2, 4, 5, 8, 9 and 11 Obvious
`
`
`
`At page 24 of its Response, Patentee urges that both Yu and Clark are
`
`directed to folding chairs, and argues that “Yu never suggests an interest in
`
`becoming a rocker.” These arguments are irrelevant to patentability.
`
`
`
`First, to the extent these arguments are even understood, the Patentee’s
`
`claims are broadly directed to a “chair.” Whether or not Yu and Clark are foldable
`
`chairs is irrelevant to the broad scope of the claims, which embrace any chair.
`
`Second, there is no requirement that a primary reference (Yu) of an obviousness
`
`ground “suggest” the modification of itself or a secondary reference (Clark). In
`
`fact, the Supreme Court overturned the exclusive use of the teaching-suggestion-
`
`motivation (TSM) test for obviousness in KSR Int’l Co., v. Teleflex Inc. 550 U.S.
`
`398 (2007). Clark teaches that attachments were known to convert folding chairs
`
`to rockers. Modifying Yu with the teaching of Clark is nothing more than the
`
`combination of known prior art elements according to known methods to yield
`
`predictable results. (Inst. Dec. at 22). There is no “hindsight” to use a rocker
`
`attachment designed for use with folding chairs—with folding chairs.
`
`
`
`Next, Patentee urges that permanently modifying Yu with the rocker legs of
`
`Clark would “prohibit the folding character of Yu’s deck chair that he deems
`
`critical to its intended function.” (Pat. Resp. at 24). There are several problems
`
`with this argument. First, Patentee cites to no aspect of Yu describing folding
`
`12
`
`

`
`chairs as a “critical” operating principle. In any event, one need not guess as to
`
`Yu’s inventive objective as he explains it himself:
`
`The primary objective of the present invention is to
`provide a dual-purpose chair which can be used as an
`office or deck chair.
`(Ex. 1002 at 1:19-21).
`
`
`
`Yu mentions no “folding chair” criticality anywhere.
`
`
`
`Figs. 5 and 6 describe “folding of the preferred embodiment of the
`
`invention.” Id. at 1:43-52 (emphasis added). That is, the invention is a dual
`
`purpose chair, which can be used as an office or deck chair; a “preference” for a
`
`folding chair bears no relation whatsoever to a “critical” operating principle as
`
`asserted by Patentee. Indeed, the specification explains immediately after its only
`
`mention of folding operation that:
`
`The embodiment of the present invention described above is to
`be regarded in all respects as being illustrative and
`nonrestrictive. Accordingly, the present invention may be
`embodied in other specific forms without deviating from the
`spirit thereof.
`(Id. at 2:53-57).
`
`Patentee’s unsupported conclusion of a “critical” operating principle
`
`is belied by the teachings of the Yu reference. Even if Patentee’s operating
`
`13
`
`

`
`principle argument could be accepted, which it cannot, the claims do not
`
`require “permanent” rocker legs.
`
`A. A Latch is a Fundamental Mechanical Structure
`At page 27, Patentee asserts its employee-witnesses all agree that not “any
`
`
`
`latch will do.” Yet, claims 1, 2, 4, 5, 8 and 9 and 11 do not even require a “latch.”
`
`
`
`In any event, even a cursory read of this cited testimony demonstrates its
`
`irrelevance. CEO Mr. Bontrager discusses construction of the Trey® Chair at
`
`pages 40-42, and page 79 is a discussion of unclaimed “claw” and receptacle
`
`features. (Note: receptacle is recited only in claim 3). Mr. Harting mentions
`
`nothing about a “latch” at the cited portion of his declaration. (Ex. 2039 at 12:35).
`
`Mr. Warncke argues features of the Trey® chair absent from the language of the
`
`claims, or argues other user limitations that appear nowhere in the ‘136 claims.
`
`(Ex. 2046 at 28:624-29:651).
`
`
`
`Finally, Patentee argues that Mr. Bontrager addresses obviousness of Yu and
`
`Clark (citing Ex. 2072 at 75-81). This analysis is also completely unrelated to the
`
`‘136 claims. This discussion addresses unclaimed features of the Trey® chair, and
`
`reiterates the failed “operating principle” argument discussed above.
`
`V. Yu/Clark & Kassai Render Claims 6-10 and 12-14 Obvious
`
`Patentee only addresses claims 6-9 and 12 at pages 28-29 of its Response.
`
`Arguments directed to claims 10 and 13-14 are waived. (Paper 8 at 7).
`
`14
`
`

`
`With respect to claim 6, Patentee argues that it is “pure speculation” to say
`
`where the latch would be located in this trial ground. This statement ignores the
`
`record and is plainly non-responsive. At page 29 of the Petition it is explained
`
`that Yu is designed to be detachable, and the latch of Kassai would enhance
`
`convenient detachability. The Board adopted this reasoning. (Inst. Dec. at 23-24).
`
`Petitioner also explained latch mounting locations. (Pet. at 30). Patentee provide
`
`nothing in rebuttal but the conclusory and ill-reasoned statements of its interested
`
`witnesses that the Kassai latch would require testing, be unsafe, or not support the
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`weight of a college student. None of this reasoning has any bearing on the claim
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`language or the rationale adopted by the Board.
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`The discussion of claims 7 and 8 are conflated with the discussion of claim
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`6, although claim 8 does not even require a latch. (Pat. Resp. at 29).
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`As to claim 9, Patentee argues that Yu describes no swivel and/or tilt
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`capabilities. That is, despite the knob shown in Fig. 4, Patentee claims ignorance
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`due to the lack of an explicit textual description of Yu that the knobs control tilt.
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`Even if ignoring the teachings of upright rod 21 and the knob of Fig. 4 were
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`possible, Patentee’s repeated admissions in this record that tilt and/or swivel
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`mechanisms were well-known in the art moot this argument. (Ex. 1028 at 25:21-
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`26:6; Ex. 1027 at 16:4-25; and Ex. 1025 at 76:24-77:4; see also Pet. at 22-23).
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`Patentee’s arguments pertaining to claim 12 are based upon its improper
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`means-plus-function mapping addressed above. The manually operable means
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`does not require all of the necessary hardware for the chair to operate as intended,
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`only that structure, which is both manually operable, and “releasably engages” the
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`chair to/from the base. As Patentee stated in its preliminary response in the
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`related proceeding, the latch of the ‘136 patent is a “manually operable device
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`having an open position that allows separation of two components and a closed
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`position that locks the components together.” (IPR2015-00774, Prelim Resp. at
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`14, emphasis added). The function of claim 12 is not disassembly/ reconfiguration,
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`just “release” of the engagement.
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`VI. Alleged Secondary Indicia Lack Objectivity & Required Nexus
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`
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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.
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`
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`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 31; Ex. 2072 at 86).
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`
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`It is insufficient for a product/use merely to be within the scope of a claim
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`for secondary evidence of non-obviousness tied thereto to be given substantial
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`weight. There must also be a causal relationship, a “nexus,” between the evidence
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`and the claimed invention. Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d
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`1364, 1376 (Fed. Cir. 2005). Patentee’s failure to identify a particular nexus is
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`especially glaring relative to 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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`B.
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`Patentee’s Sales Evidence is Directed to a One-Party Market
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` 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
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`18
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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: competitor sales, gains
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`in market share relative to competitors, and a causal nexus to superior consumer
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`response. According to the Federal Circuit, “the more probative evidence of
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`commercial success relates to whether the sales represent “a substantial quantity in
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`th[e] market.” In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012)
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`(quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patentee simply argues
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`its Trey® chair is preferred to its own “bent plywood” product option. (Ex. 2072
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`at 92-94).
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`
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`Noticeably absent in the Patentee sales data is any explanation of:
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`• The number of competitors that also sell to contract markets;
`• Whether or not competitor sales increased over the same period;
`• Market share gained relative to competito