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`
`DIcKINsoN(WR1GHmc
`
`FACSWE
`
`TRANSNHTTAL
`
`2600 WEST BIG BEAVER Roan, SUITE 300
`TROY. MI 45034-3312
`
`::::::,°::=I2i‘;’.:.:i;:ti°
`
`hrrp:Hwuvw.dielrinsonwriglmcem
`
`USPTO
`
`571-273-6500
`
`From:
`
`John S. A112
`
`December 15, 2016
`
`Total Pages:
`
`20 (including cover sheet)
`
`Re:
`
`Deposit Account 04-1061. Refund of $ 14,000 for REF TEXT: IPR20 15-01 143
`Filed: 5/4/2015 Fee Code: 1414
`
`Message:
`
`Dear Sirs,
`
`Please provide a refund as it was ORDERED that our Petition was DENIED and no inter
`partes review was instituted.
`
`Attached is the DECISION denying the Inter Partes Review.
`
`Thank you.
`
`Leslie N. Wolfolk
`
`Legal Secretary
`Dickinson Wright PLLC
`248-433-7266
`
`Ifyou have not recelved the ma number of pegs, please call the facslrnlle dpartment at 1-243-433-. man: you.
`IMPORTANT: This message is Intended solely In be used by the lndlvlclual orentltyto whlch it Is addressed.
`It may contain Irlformafinn which is
`privileged, confidential and otherwise exernpt by law from disclosure. If the nnderofdzls rnessge Is not me Intended redplent, or an employee or
`agent responsible for delivering thls message to Its Intended redpia1t(s), you are herewith notified that any dissamlnatlon, dlstrlbulion or copying of
`this communication is strictly prohibited.
`If you have received this communication in error, please notify us by telephone Immediately and destroy this
`communication. Thank you.
`
`client Name: 53799
`CIIent.(Mat:ar #1
`Secnala Name: Lsiie N. WoIfolk-
`
`Matter Name:
`13-27
`Almrney I:
`Secret: Bttension: 7265
`
`FLORIDA
`
`KENTUCKY
`
`MICHIGAN
`
`TENNESSEE
`
`TEXAS
`
`TORONTO
`
`WASHINGTON DC
`
`0800/TOOOIEJ
`
`CW3?-{M U0SUU'[3I(l
`
`VLZZ. 9'8? 9173
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`XV:[ 99191 QIOZ/ST/ZT
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`

`

`.
`
`fZ'803(55'U-W-|3 HOLLVHFICI - HZ! EC? BfZ5OlS3 : OOEQEIZISINO . VflZfl0'XV:lO.'l.d'M3HAS u [Bull]. FRI‘-‘U218 I-U315!!! Wd H3503? 9|-OZJS HZI IV (M38 a DUI! ElDVd
`
`Trialsgfiptagov
`571-272-7822
`
`Paper No. 6
`Entered: November 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IDEAVILLAGE PRODUCTS, CORP.,
`Petitioner,
`
`V.
`
`CHOON’S DESIGN, LLC,
`Patent Owner.
`
`Case IPRZOIS-01143
`
`Patent 8,684,420 B2
`
`Before GRACE KARAFFA OBERMANN, JEREMY M. PLENZLER, and
`JENNIFER MEYER CI-IAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R § 42.108
`
`I.
`
`INTRODUCTION
`
`IdeaVilIage Products, Corp. (“Petitioner”) fled a Petition for inter
`
`partes review of claims 1-3, 5-7, 9-11, and 13-16 (“the challenged claims”)
`
`of U.S. Patent No. 8,684,420 B2 (Ex. 1001, “the ’420 patent"). Paper 1
`
`(“Pet”). Choon’s Design, LLC (“Patent Owner”) timely filed a Preliminary
`
`0300/Z000
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`3T«I3I-HA UOSUTPIDIG
`
`VLZI. 99? 873
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`XV:[ Q9391" 9TOZ/ST/ZT
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`

`

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`
`lPR2015-01 143
`
`Patent 8,684,420 B2
`
`Response. Paper 5 (“Preli1n. Resp.”).' We have authority to determine
`
`whether to institute inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R.
`
`§ 42.4(a).
`Claim 16 ofthe ’420 patent has been disclaimed. See Prelim.
`
`Resp. 16 n.2. Accordingly, because Patent Owner has disclaimed claim 16,
`
`interpartes review may not be instituted based on that claim. See 35 U.S.C.
`
`§ 253(a); 37 C.F.R. §.42.107(e).
`
`Based on the record before us in this proceeding, we determine that
`
`Petitioner has not established there is a reasonable likelihood that it would
`prevail in establishing that any ofthe challenged claims of the ’420 patent is
`
`unpatentable. See 35 U.S.C. § 3 l4(a). For the reasons that follow, we deny
`
`institution of _interparte.s review.
`
`A. Related Proceedings
`
`The ’420 patent is the subject of several district court proceedings.
`
`Pet. 2-3; Paper 4, 2. The ’420 patent has been asserted against Petitioner in
`one of the pending district court proceedings—namely, Choon '5 Design
`
`LLC v. Zenacon, LLC, Case No. 2:13—cv-13568 (E_D. Mich.). Pet. 2. The
`
`’420 patent also was the subject of a previously filed post—grant review
`
`proceeding—LaRo.s'e Indus-., LLC v. Choon ’s Design Inc., Case PGR2014-
`
`0000_8—which was terminated prior to institution in response to a Joint
`
`Motion to Terminate filed by the parties.
`
`In’. at 3; Paper 4, 1. An additional
`
`inter partes review proceeding challenging the ’420 patent is currently
`
`' Patent Owner’s response is not indicated as a “Preliminary Response,” but
`we treat it as such because it was filed within the appropriate time for a
`preliminary response and it appears to be a preliminary response in form.
`
`2
`
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`
`IPR2015-01 143
`
`Patent 8,684,420 B2
`
`pending before the Board: Tristar Products, Inc. v. Choon ’s Design, LLC,
`
`Case IPR2015—01883 (filed Sept. 4, 2015).
`
`Related U.S- Patent No. 8,485,565 B2 (“the ‘S65 patent”) is the
`
`subject of an additional inter partes review petition also filed by Pet:itioner—
`
`namely, Idea Village Products, Corp. v. Choon '5 Design, LLC,
`
`Case IPR20l5-01139. The ’S65 patent also was the subject of three
`
`previous inter parres review proceedings, including: LaRose Indus, LLC v.
`
`Choon '3 Design, LLC, Case IPRZOI4-00218 (all challenged claims
`
`disclaimed afier institution; Joint Motion for Adverse Judgment granted);
`
`LaRose Indus, LLC v. Choon 's Design Inc., Case [PR2014-01353 (all
`
`challenged claims disclaimed prior to institution; institution denied); and
`
`Tristar Products, Inc. v. Choon 's Design Inc., Case IPR20_15-00838
`
`(institution denied under 35 U.S.C. § 3l5(b)). Pet. 3-4; Paper 4, l.
`
`B. The ’420 Patent
`I
`The 420 patent is titled “Brunnian Link Making Device and Kit” and
`
`generally relates to a kit and method for creating a linked item formed from
`
`a series of links, such as “Brunnian” links. Ex. 1001, 1:1, 1:31-38, 2:33-35.
`
`“A Brunnian link .
`
`.
`
`. is formed from a closed loop doubled over itself to
`
`capture another closed loop to form a chain.” Id. at 1:31-33. The ’42O
`
`patent provides examples of linked items such as “bracelets, necklaces[,] and
`
`other wearable or decorative items.” Id. at 2:34-35, Fig. 2. The ’420 patent
`
`discloses that kits for making uniquely-colored bracelets and necklaces have
`
`always been popular, but that there is a need and desire for a kit that
`
`simplifies constmction to make it easy for people of different skills and
`
`artistic levels to create desirable, durable, and wearable items. Id. at 1:18-
`
`27.
`
`0200/7000
`
`111l3T-1&1 IIOSIIIHSIG
`
`171.31. 9817 9173
`
`XVJ 99591" 9TOZ/QT/ZT
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`
`lPR20l 5-01 143
`
`Patent 8,684,420 B2
`
`Figures 4, SA, and 5B of the ’420 patent illustrate the basic
`
`components of the kit and are reproduced below.
`
`
`
`Figure 4 is a perspective view of an example pin bar. Id. at 1:65. Figure 5A
`
`is a perspective view of interfacing surfaces of an example base and the
`
`example pin bar. Id. at 1:66-67. Figure 5B is a perspective View of a pin
`
`bar mounted to an example base. Id. at 2: 1-2.
`
`The kit includes base 12 that forms a support for pin bars 14. Id. at
`
`2:47-48. One or more pin bars 14 can be mounted to one or more bases 12
`
`to provide a desired configuration. Id. at 2:51-54, 2:59-62- Each base 12
`
`includes tabs (keys) 32, and each pin bar 14 includes slots 34 that receive
`
`tabs 32 to maintain pin bars 14 on base 12 in a desired orientation. Id. at
`3: 1-5. Pin bars 14 each include a plurality ofpins 26. Id. at 2:48. Figure 6
`
`of the ’420 patent, reproduced below, illustrates pin 26.
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`0200/9000
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`
`IPR20l 5-01 143
`
`Patent 8,634,420 B2
`
`4-2
`
`Figure 6 is a perspective view of one pin, illustrating the portions of pin 26.
`
`Id. at 2:3—4. Pin 26 includes flanged top 38, mid portion 46, bottom portion
`
`44, and front access groove 40. Id. at 3:12-13, 3:26-27. Flanged top 38 and
`
`bottom portion 44 are each flared outward relative to mid portion 46.
`
`Pins 26 hold links, such as rubber bands 52, 54, 56, in a desired
`
`position during assembly of the linked item, as illustrated in Figures 14A-
`
`14C, reproduced below.
`
`Figures l4A—l4C are perspective views of assembly steps for creating a
`
`Brunnian linked article, illustrating a portion of bar 42 and pins 26, and a
`
`process of making a chain of linked items fiom elastic bands 52, 54, 56,
`
`using hook tool 16. Id. at 2:17-18, 4:3—36.
`
`The ’420 patent explains that top and bottom flared portions 38, 44
`
`center rubber bands 52, 54, 56 on mid portion 46, and top flared portion 38
`
`prevents enant release of rubber bands 52, 54, 56 during creation of the
`
`0300/9000
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`IVLZL €917
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`

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`IPR2015-01 143
`
`Patent 8,684,420 B2
`
`links. Id. at 3:16-18, 3:29-31. As seen above, ends of adjacent rubber
`
`bands (e.g., 56, 54) are disposed on a common pin 26. Id. at 4:7—12.
`
`Hook 16 is inserted into access groove 40 of common pin 26 to grasp the
`
`end of rubber band 54 and pull rubber band 54 onto subsequent pin 26,
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`thereby linldng rubber bands 54 and 56. Id. at 4:17-28. The process is
`
`repeated for subsequent rubber bands (52, etc.) until a desired linked item is
`
`created. Id. at 4: 19-30. Free ends of the linked item are then secured by a
`
`clip. Id. at 4:37-41, Figs. 15, 16.
`
`C. Illustrative Claim
`
`Claims 1, 6, and,14 are independent. Claims 2, 3, and 5 depend from
`
`independent claim 1. Claims 7, 9-11, and 13 depend from independent
`
`claim 6. Claim 15 depends from independent claim 14. Claim 1 illustrative
`
`and is reproduced below:
`
`1. A device for creating an item consisting of a series of
`links, the device comprising:
`a base; and
`a plurality of pins supported on the base, wherein each of
`the plurality of pins includes a top portion for holding a link in
`a desired orientation and an opening on at least one side of each
`of the plurality of pins,
`wherein the plurality of pins comprises rows of offset
`pins spaced apart and extending upward from the base.
`
`Ex. 1001, 5: 18-26 (additional formatting added).
`
`D. The Applied References and Evidence
`
`.
`
`_.
`
`I
`
`
`
`
`
`:..w——1
`
`Petitioner relies on the following references. Pet. 6.
`.=__
`..,.
`.-
`
`
`
`“Schaub”
`
`“Carruth”
`
`
`
`
`
`0200/L000
`
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`
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`
`IPR2015-01 143
`
`Patent 8,684,420 B2
`
`“Grimm”
`U.S. Patent No. 3,438,223
`“Linstead”
`
`Anne Bipes, Loom Km'm'ng: Getting
`Started on the Round Loom, 1-21
`(2005) (www.1oomknitting.com)
`
`Apr. 15, 1969
`
`Ex. 1016
`
`© 2005
`
`Ex. 1017
`
`Petitioner further provides a Declaration of Eric A. Langberg
`
`(Ex. 1003).
`
`E. The Asserted Grounds‘
`
`Petitioner sets forth its challenges to claims 1-3, 5-7, 9-11, and
`
`Schaub and Carruth
`Bi - es and Linstead
`
`‘
`
`Petitioner fiirther includes, as an asserted ground independent from
`
`those listed in the chart above, an argument that “[c]1aims 1-3, 5-7, 9——l1,
`
`[and] 13 .
`
`.
`
`. are not patentably distinct from a cancelled claim” (i.e., the
`
`claims of the ’565 patent that were subject to the adverse judgment in
`
`IPR20l4—00218). Pet. 6, 14-22. According to Petitioner, Patent Owner,
`
`therefore, is estopped from arguing the challenged claims are patentable.
`
`Pet. 14-16. As noted by Petitioner, the scope of estoppel arising against a
`
`patent owner fiom adverse judgment is defined in 37 C.F.R. § 42.73(d)(3).
`
`'
`
`Petitioner, however, has not identified a statutory or regulatory basis for
`
`applying this estoppel in the manner asserted in the Petition (i.e., to prevent
`
`0800/9000
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`
`[P112015-01 143
`
`Patent 8,684,420 B2
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`Patent Owner from even presenting arguments regarding the patentability of
`
`the remaining claims).2 Id.
`
`Furthermore, pursuant to 35 U.S.C. § 311(b), a “petitioner in an inter
`
`partes review may request to cancel as unpatentable 1 or more claims of a
`
`patent only on a ground that could be raised under section 102 or 103 and
`
`only on the basis of prior art consisting ofpatents or printed publications.”
`
`Petitioner challenges claims 1-3, 5-7, 9-11, and 13 as “not patentably
`
`distinct” from canceled claims (Pet. 14-22), but fails to provide analysis
`
`adequate to establish that such a challenge constitutes “a ground that could
`
`be raised under section 102 or 103” based on “prior art consisting of patents
`
`or printed publications." Id.
`
`We, thus, turn in the next_ section to the grounds based on the applied
`
`prior art references.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an interpartes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`2 Petitioner further argues the fact that Patent Owner filed a Terminal
`Disclaimer during prosecution of the ’420 patent, in order to overcome a
`double patenting rejection with respect to the claims of the ’5 65 patent, is
`suflicient to establish that the challenged claims are, in fact, patentably
`indistinct from the claims of the ’565 patent. Pet. 15-16. The filing of a
`Terminal Disclaimer, however, “simply serves the statutory fimction of
`removing the rejection of double patenting, and raises neither a presumption
`nor estoppel on the merits of the rejection.” Quad Env '1' Techs. Corp. v.
`_ Union Sanitary Dist, 946 F.2d 870, 874 (Fed. Cir. 199]); see also Ventana
`Med. Sys. Inc. v. Biogenex Labs, Inc, 473 F.3d 1173, 1184 n.4 (Fed. Cir.
`2006) (filing a terminal disclaimer is not an admission as to the validity of a
`double patenting rejection).
`
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`
`[PR2015-01143
`
`Patent 8,684,420 B2
`
`patent in which they appear. See 37 C.F.R. § 42.I00('b); In re Cuozzo Speed
`
`Techs, LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015). Under the broadest
`
`reasonable construction standard, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. See In re Translogic
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims, however,
`
`“should always be read in light of the specification and teachings in the
`
`underlying patent,” and “[e]ven under the broadest reasonable
`
`interpretation, the Board’s construction ‘cannot be divorced from the
`$31
`
`specification and the record evidence.
`
`Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`
`The parties propose constructions for several claim terms. Pet. 8-12;
`
`Prelim. Resp. 10—17.- For purposes of this Decision, we need only make
`
`explicit the meaning of “rows of offset pins,” recited in claims 1 and 6.
`
`No other terms require express construction. See, e.g., Wellman, Inc. v.
`
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]1aim terms
`
`need only be construed ‘to the extent necessary to resolve the
`
`controversy.’”) (quoting Vivid Techs, Inc. v. Am. Sci. & EH32. Inc.,
`
`200 F.3d 795, 803
`
`Cir. 1999)).
`
`111- context, claims 1 and 6 recite “wherein the plurality of pins
`
`comprises rows of afiivet pins spaced apart and extending upward fiom the
`
`base.” (emphases added). Petitioner asserts that, because “the Figures [of
`
`the ’420 patent] illustrate separate rows of pins that are spaced apart from
`
`one another .
`
`.
`
`. the [broadest reasonable interpretation] of the phrase ‘rows
`
`of oflset pins’ requires: ‘pins arranged in rows that are spaced (i. e. set 0179
`
`fir-om each other.’’’ Pet. 11-12. Patent Owner asserts that “[t]o find that
`
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`IPR20l5-01 143
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`Patent 8,684,420 B2
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`‘offset’ merely means ‘spaced’ would render the two words redundant” in
`
`the claim. Prelim. Resp. 1 1. Patent Owner points to the difference between
`
`the arrangement of the rows of pins shown in Figure 1 versus the
`
`arrangement shown in Figure 17. Id. at ll--12. Figures 1 and 17 are
`
`reproduced below.
`
`Figures 1 and 17 show two possible arrangements of pins, as described in
`
`the ’420 patent. According to Patent Owner, in Figure 1, the rows ofpins
`
`are offset, and in Figure 17, they are not offset. Id. Patent Owner, thus,
`
`asserts that “rows of offset pins” should be construed as “rows of pins
`
`aligned in such a manner that one row is incremented by a pin fiom the other
`row along the same alignment,” or alternatively as “rows ofpins misaligned
`
`with pins in other rows in a direction transverse to the length of the row.”
`
`Id. at 12-13.
`
`We agree with Patent Owner that to construe “offset” to mean merely
`
`“spaced” would render superfluous the “spaced apart” language already
`
`present in the claims. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d
`
`1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render
`
`phrases superfluous and selecting a construction that gave each phrase a
`
`distinct meaning). We, thus, construe “rows of offset pins,” in view of the
`
`10
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`IPR20l 5-01 143
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`Patent 8,684,420 B2
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`'
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`Specification of the ’420 patent, as requiring the alignmentof adjacent rows
`
`of pins be staggered relative to each other (i.e., the pins in adjacent rows
`
`cannot be aligned with one another as shown in Figure 17 of the ’420
`
`patent).
`
`We recognize that this construction does not cover all disclosed
`
`embodiments (e.g., Figure 17) of the ’420 patent. The mere fact that there is
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`an alternative embodiment disclosed that is not encompassed by the claim
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`construction, however, does not outweigh the language of the claim,
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`particularly where the construction is supported by intrinsic evidence. See
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`August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir. 2011).
`
`The ’420 patent emphasizes the ability to arrange the pins in “desired
`
`relative orientation[s].” Ex. 1001, 2:47-58, 3:47-50. Only Figure 17
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`illustrates un-staggered rows of pins; the majority of the figures of the ’420
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`patent illustrate a configuration having the rows of pins arranged such that
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`they are staggered relative to adjacent rows. Further, the “rows of offset
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`pins” limitation was included only in dependent claims of the originally filed
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`application. Ex. 1006, 322-24 (original claims). The prosecution history,
`
`thus, further supports our construction. See Proxycorm, Inc., 789 F.3d at
`1298 (“The PTO should also consult the patent’s prosecution history in
`
`proceedings in which the patent has been brought back to the agency for a
`second reviewf’) (citation omitted).
`
`B. Anticipation ofClaims 1-3, 5-7, 9-11, and 13 by Schaub
`‘Petitioner asserts claims 1-3, 5-7, 9-11, and 13 are anticipated by
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`Schaub. Pet. 22-33. A claim is unpatentable under 35 U.S.C. § 102 if a
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`single prior art reference expressly or inherently describes each and every
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`limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp,"
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`11
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`IPR2015-01 143
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`Patent 8,684,420 B2
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`432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros, Inc. v. Union Oil
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`Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
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`Schaub relates to a modular, adjustable knitting loom. Ex. 1013,
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`1:14-16. Figure 4 of Schaub is reproduced below.
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`'
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`Figure 4 illustrates a perspective view of a loom (partially disassembled)
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`using components of the kit of Schaub. Id at 5:4—8. In the example of
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`Figure 4, two long bars 14 and two U-bars 22 are connected to form a
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`generally elongate frame assembly. Id. at 7:23-32. The bars include a
`plurality of holes 46 spaced uniformly along the longitudinal direction of the
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`bar. Id. at 6:23-26. Pegs 28, 32 also are provided, and may be inserted into
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`holes 46. Id. at 6:32-37.
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`Independent claims 1 and 6 each recite “wherein the plurality ofpins
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`comprises rows of offset pins spaced apart and extending upward from the
`base.” Petitioner points to disclosure in Schaub that ;‘the pegs may be
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`removed so that pegs are only inserted into every other hole 46,” as
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`disclosing the claimed “rows of offset pins.” Pet. 23-24 (citing Ex. 1013,
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`IPR20l 5-01 143.
`Patent 8,684,420 B2
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`9:19-21). Without finther citation, Petitioner asserts that this means the
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`pegs are arranged “such that they are not parallel” (i.e., ofiset). Id. at 24.
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`Even if Petitioner did cite some evidence and provide an explanation
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`to support its contentions, it would establish, at best, only that it was
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`possible that Schaub discloses arranging the pegs as “rows of offset pins.”
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`There is also a possibility that removing certain pegs of Schaub so that pegs
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`are inserted only into every other hole (as Petitioner suggests) results in a
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`configuration where the remaining pegs are arranged with pegs in adjacent
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`rows are not staggered (i.e., the pins in adjacent rows are aligned with one
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`another). As discussed in our claim construction above, claims 1 and 6
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`require the alignment of adjacent rows ofpins be staggered relative to each
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`other, meaning pins in adjacent rows cannot be aligned with one another.
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`Merely establishing a possibility that a reference discloses a clairri
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`element is insuflicient to establish anticipation. See In re Oelrich, 666 F.2d
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`578, 581 (CCPA 1981) (“Inherency, however, may not be established by
`
`probabilities or possibilities. The mere fact that a certain thing may result
`
`from a given set of circumstances is not sufieientf’) (citation omitted).
`Accordingly, we are not persuaded by Petitioner;s assertion that Schaub
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`discloses “the plurality of pins compris[ing] rows of offset pins spaced apart
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`and extending upward fi-om the base,” as recited in claims 1 and 6.
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`Thus, Petitioner has not demonstrated a reasonable likelihood of
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`prevailing on its asserted ground that claims 1 and 6 are anticipated by
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`Schaub. Each of claims 2, 3, 5, 7, 9-11, and 13 depends from one of claims
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`1 or 6. Because we are not persuaded that Petitioner has shown a reasonable
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`likelihood that it would prevail on its assertion that Schaub anticipates
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`independent claim 1 or 6, we also are not persuaded that Petitioner has
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`13
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`IPR20l5-01 143
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`Patent 8,684,420 B2
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`shown a reasonable likelihood that it would prevail on its assertion that
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`Schaub anticipates claims 2, 3, 5, 7, 9-11, and 13.
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`C. Anticipation of Claims 1-3, 5-7, 9-11, and 13 by Grimm
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`Petitioner asserts claims 1-3, 5-7, 9-11, and 13 are anticipated by
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`Grimm Pet. 33-43. Grimm relates to an adjustable knitting device, which
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`allows knitting of various types of stitches. Ex. 1015, 1:l—7. Figures 1-3 of
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`Grimm are reproduced below.
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`!;(¢9////3is
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`Figures 1-3 illustrate the knitting device of Grimm in a top plan view, detail
`side elevation, and a cross-sectional view, respectively. Id. at 1:46-55.
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`Bars A, B are arranged parallel to each other and are connected by bolts C,
`D, with washers P, G holding the
`a predetermined distance apart. Id. at
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`2:6—21. Inner edges of bars A, B include bevels L, M, adjacent an
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`upstanding row of pins N having rounded heads 0. Id. at 2:32-38.
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`Independent claims 1 and 6 each recite “an opening on at least one
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`side of each of the plurality of pins.” Petitioner points to language in Grimm
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`that states “pins with beveled edge grooves,” as disclosing the claimed
`“opening” on the pin. Pet. 34-35 (citing Ex. 1015, 4:5). Petitioner,
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`14
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`IPR2015—01 143
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`Patent 8,684,420 B2
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`however, cites this language out of context from the rest of the disclosure of
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`Grimm. Surrounding the cited language, Grimm states “we have found in
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`practice that a knitting device constructed with pins with beveled edge
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`grooves of the construction herein shown facilitates the speed ofknitting and
`we are able to pick up the loop very quickly and draw it ofi‘the pin.”
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`Ex. 1015, 4:3—8. As earlier discussed in Grimm, “[b]y beveling the edges of
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`the slot [formed between bars A, B], the needle used for knitting can be
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`easily inserted under the loop of the yarn on the pin in forming the stitch,
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`thereby greatly facilitating the lmitting of the fabric.” Id. at 2:44-48
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`(emphasis added); see id. at 2:17-21, Figs. 1, 3. Thus, it is clear from the
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`disclosure of Grimm considered as a whole, that the “pins with beveled edge
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`grooves" language cited by Petitioner does not disclose grooves in the pins,
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`but instead refers to the beveled edges L, M discussed throughout the
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`specification of Grimm.
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`Thus, Petitioner has not demonstrated a reasonable likelihood of
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`prevailing on its asserted ground that claims 1 and 6 are anticipated by
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`Grimm, Because we are not persuaded that Petitioner has shown a
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`reasonable likelihood that it would prevail on its assertion that Grimm
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`anticipates independent claim 1 or 6, we also are not persuaded that
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`Petitioner has shown a reasonable likelihood that it would prevail on its
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`assertion that Grimm anticipates dependent claims 2, 3, 5, 7, 9-11, and 13.
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`D. Obviousness of Claims 14 and 15 in View ofSchaub and
`Carruth
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`8 Petitioner asserts claims 14 and 15 would have been obvious in View
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`of Schaub and Carruth. Pet. 43-48. Claim 14 recites a “method of
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`assembling a kit for creating a linked item,” including “supporting a
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`IPR2015-01 143
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`Patent 8,684,420 B2
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`plurality of pins to define a desired spatial relationship between pins,” and
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`“providing a plurality of links for assembly to the plurality of pins according
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`to a desired pattern.” Ex. 1001, 6:23-32, Cert of Corr.
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`Carruth relates to a method for creating a fashion accessory using
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`bands or loops. Ex. 1014, 1:50-56, 2:7. In Carruth, the bands “are
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`interlocked to form a continuous chain.” Id at 2:30-31. In some
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`embodiments, the bands may be linked using a guide, such as “a linear
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`device continuous lrom a first end and a second end, wherein the first end
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`and the second end are each open ends of the guide.” Id. at 3:10-17.
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`Carruth further indicates that this “guide may be replaced with any other
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`type of device that services the same fimction.” Id. at 3:17-18.
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`Without any citation to record evidence or further explanation,
`_ Petitioner simply asserts that “it would have been obvious to one skilled in
`
`the art to use the device disclosed in Schaub with loops to create a series of
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`linked bands or loops as disclosed in Carruth-" Pet. 46. Petitioner does not
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`cite to any portion of Schaub or Carruth, however, that teaches or suggests
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`using an apparatus having a plurality of pins for creating a linked item,
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`which is Petitioner’s asserted reason for combining the references. While
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`Carruth discloses creating a fashion accessory from links, such as elastic
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`bands, Carruth provides no figures or detailed description of the referenced
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`“guide,” and discusses only a method where a guide is used to facilitate
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`folding of the first band of the linked item (Ex. 1014, 3:21-28), with the rest
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`of the item being formed without the use of the guide (id. at 3:29-41).
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`' Petitioner cites to no portion of Schaub that teaches or suggests using the
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`guide disclosed therein for creating a linked item, such as that in Carruth. In
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`fact, Schaub lists several U.S. Patents as “[e]xarnp1es of how such looms [of
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`16
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`IPR2015-01 143
`
`Patent 8,684,420 B2
`
`the invention] are used," and each of them describes traditional knitting (i.e.,
`
`using a continuous piece of material). See Ex. 1013, 9:29-33 (citing U.S.
`
`Patent Nos. 2,072,668; 3,967,467; 4,158,296; and 4,248,063). Contrary to
`Petitioner’s assertions, the knitting apparatus of Schaub does not, on its face,
`
`appear to serve the same function as the guide of Carruth, and Petitioner
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`provides no evidence to support this claim. We, thus, are not persuaded that
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`one of skill in the art would have combined these references as asserted by
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`Petitioner.
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`Thus, Petitioner has not demonshated a reasonable likelihood of
`
`prevailing on its asserted ground that claim 14 would have been obvious in
`
`view of Schaub and Carruth. Claim 15 depends from claim 14. Because we
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`are not persuaded that Petitioner has shown a reasonable likelihood that it
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`would prevail on its assertion that the combination of Schaub and Carruth
`
`renders obvious independent claim 14, we also are not persuaded that
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`Petitioner has shown a reasonable likelihood that it would prevail on its
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`assertion that the cited combination renders obvious claim 15.
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`E. Obviousness of Claims 14 and 15 in View ofBipes and Linstead
`
`Petitioner asserts claims 14 and 15 would have been obvious in view
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`of Bipes and Linstead. Pet. 48-54- We first consider whether Bipes
`
`qualifies as a prior art printed publication. For the reasons that follow, we
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`are not persuaded that Petitioner has provided suificient evidence to
`
`establish that Bipes qualifies as a prior art printed publication.
`
`The determination of whether a given reference qualifies as a prior art
`
`“printed publication” involves a case-by-case inquiry into the facts and
`
`circumstances surrounding the reference’s disclosure to members of the
`
`public. In re Klopfenstein, 380 F.3d #1345, 1350 (Fed Cir. 2004). The key
`
`17
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`OZUO/S100
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`I'Z'303(5$‘U-lU-1lNO|1\'RlnD - 1'12! SCI’ 87330153 u 00§98£Z3SlNt'.I -. I"P!Z0fl'){V.-!01d'M3l:lAS - [N-Ul.I. I-U3!-W915 l-I-H1593] Wd H3603? 910119 UZI IV CIADH - OZIBI 3533
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`IPR20 1 5-01 143
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`Patent 8,684,420 B2
`
`inquiry is Whether the reference was made “sufficiently accessible to the
`
`public interested in the art” before the critical date. In re Cronyn, 890 F.2d
`
`1158, 1160 (Fed. Cir. 1989) (citation omitted).
`
`The only evidence submitted by Petitioner regarding the public
`
`accessibility of Bipes is a generic statement that “Bipes is a printed
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`publication .
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`. .[,] has a Copyright date of 2005 and is prior art under
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`35 U.S.C. § l02(b).” Pet. 48. The Federal Circuit has held, however, that
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`even registration of a copyright, without more, does not demonstrate
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`sufficient accessibility to establish that the reference is a printed publication.
`
`In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Here, Petitioner has not
`
`even provided evidence that