`571-272-7822
`
`
`Paper No. 15
`Entered: March 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRISTAR PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`CHOON’S DESIGN, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01883
`Patent 8,684,420 B2
`____________
`
`Before GRACE KARAFFA OBERMANN, Vice Chief Administrative
`Patent Judge, JEREMY M. PLENZLER and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`I.
`
`INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Petitioner has not shown, by a preponderance of the evidence, that claim 3 of
`U.S. Patent No. 8,684,420 B2 (Ex. 1001, “the ’420 patent”) is unpatentable.
`A. Procedural History
`Tristar Products, Inc. (“Petitioner”) filed a Petition for inter partes
`review of claims 1, 3, and 6 of the ’420 patent. Paper 1 (“Pet.”). Petitioner
`provided a Declaration of Youjiang Wang, Ph.D., P.E. (Ex. 1015) to support
`its positions. Choon’s Design, LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 5 (“Prelim. Resp.”). Prior to institution, Patent Owner
`disclaimed claims 1 and 6 of the ’420 patent. See Prelim. Resp. 11;
`Ex. 2018.
`Pursuant to 35 U.S.C. § 314(a), on March 9, 2016, we instituted inter
`partes review to determine whether claim 3 is unpatentable under 35 U.S.C.
`§ 102 as anticipated by La Croix1; and whether claim 3 is unpatentable
`under 35 U.S.C. § 103 as obvious in view of La Croix. Paper 6 (“Inst.
`Dec.”). Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 10 (“PO Resp.”)), along with a Declaration of Mr. Cheong
`Choon Ng (Ex. 2026) to support its positions.2 Petitioner filed a Reply
`
`
`1 U.S. Patent No. 1,776,561, issued Sept. 23, 1930 (Ex. 1012).
`2 We note that the Patent Owner Response includes wholesale citations to
`several paragraphs of Mr. Ng’s Declaration without corresponding
`discussion in the Response itself. See, e.g., PO Resp. 7–9. This amounts to
`an improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). The
`Patent Owner Response and Mr. Ng’s Declaration, however, combine to less
`
`
`
`2
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`(Paper 11 (“Pet. Reply”)) to the Patent Owner Response. An oral hearing
`was held on December 6, 2016. A transcript of the hearing is included in the
`record. Paper 14 (“Tr.”).
`B. Related Proceedings
`The parties identify several district court proceedings involving
`the ’420 patent. Pet. 2–3; Paper 4, 2. The ’420 patent has been asserted
`against Petitioner in one of those pending district court proceedings—
`namely, Choon’s Design LLC v. Tristar Products, Inc., Case No. 2:14-cv-
`10848 (E.D. Mich.). Pet. 1. The ’420 patent was the subject of a previously
`filed post-grant review proceeding—LaRose Indus., LLC v. Choon’s Design
`Inc., Case PGR2014-00008—which was terminated prior to institution in
`response to a Joint Motion to Terminate filed by the parties. Id. at 3;
`Paper 4, 2. The ’420 patent also was challenged in IdeaVillage Products,
`Corp. v. Choon’s Design, LLC, in which institution was denied. Case
`IPR2015-01143 (PTAB Nov. 9, 2015) (Paper 6); Pet. 3; Paper 4, 1.
`Related U.S. Patent No. 8,485,565 B2 (“the ’565 patent”) also was the
`subject of four previous inter partes review proceedings, including: LaRose
`Indus., LLC v. Choon’s Design, LLC, Case IPR2014-00218 (all challenged
`claims disclaimed after institution; Joint Motion for Adverse Judgment
`granted); LaRose Indus., LLC v. Choon’s Design Inc., Case IPR2014-01353
`
`
`than 33 pages in total. Thus, in the interest of justice and based on the
`particular facts and circumstances of this proceeding we waive 37 C.F.R.
`§ 42.6(a)(3) with respect to the Patent Owner Response, and consider the
`portions of Mr. Ng’s Declaration cited in the Patent Owner Response to also
`be included therein. See 37 C.F.R. § 42.5(b) (“The Board may waive or
`suspend a requirement of parts 1, 41, and 42 and may place conditions on
`the waiver or suspension.”).
`
`
`
`3
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`(all challenged claims disclaimed prior to institution; institution denied);
`Tristar Products, Inc. v. Choon’s Design Inc., Case IPR2015-00838
`(institution denied under 35 U.S.C. § 315(b)); and IdeaVillage Products,
`Corp. v. Choon’s Design, LLC, Case IPR2015-01139 (institution denied).
`Pet. 3–4; Paper 4, 1.
`C. The ’420 Patent
`The ’420 patent is titled “Brunnian Link Making Device and Kit” and
`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 a link formed from a closed loop doubled over itself to
`capture another closed loop to form a chain.” Id. at 1:31–33. The ’420
`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 “such kits usually just include the raw
`materials such as different colored threads and beads and rely on the
`individual’s skill and talent to construct a usable a desirable item.” Id. at
`1:18–23. Thus, according to the ’420 patent, “there is a need and desire for
`a kit that . . . simplifies construction to make it easy for people of many skill
`and artistic levels to successfully create a desirable and durable wearable
`item.” Id. at 1:23–27.
`
`
`
`4
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`Figures 4, 5A, 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 of pins 26. Id. at 2:48.
`
`
`
`5
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`Figure 6 of the ’420 patent, reproduced below, illustrates pin 26.
`
`
`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 14A–14C 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 from elastic bands 52, 54, 56,
`using hook tool 16. Id. at 2:17–18, 4:3–36.
`
`
`
`
`
`6
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`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 errant release of rubber bands 52, 54, 56 during creation of the
`links. Id. at 3:16–18, 3:29–31. It is important to maintain rubber bands 52,
`54, 56 on pins 26 during creation of a Brunnian link chain because “[e]ach
`link [of the chain] depends on the previous and subsequent links to maintain
`the desired shape and integrity” of the chain. Id. at 2:43–45. “Removing
`one link 20 results in all of the links becoming loose from each other.” Id. at
`2:45–46.
`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, thereby linking 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.
`D. Challenged Claim
`Claim 3, the only challenged claim, depends from independent
`claim 1. Claims 1 and 3 are 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).
`
`
`
`7
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`3. The device as recited in claim 1, wherein the top portion
`comprises a flared portion for holding a link in place on at least
`one of the plurality of pins.
`Id. at 5:30–32.
`
`II. ANALYSIS
`A. Principles of Law – Anticipation and Obviousness
`To prevail in its challenges to the patentability of the claims, a
`petitioner must establish facts supporting its challenges by a preponderance
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter
`partes review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). This burden never shifts to Patent Owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
`27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`
`
`
`8
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`Cir. 1990). Further, to be anticipating, a prior art reference must be enabling
`and must describe the claimed invention sufficiently to have placed it in
`possession of a person of ordinary skill in the field of the invention. Helifix
`Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000); In re Paulsen,
`30 F.3d 1475, 1479 (Fed. Cir. 1994).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art3; and (4) objective evidence
`of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966). In an inter partes review, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus,
`to prevail Petitioner must explain how the prior art would have rendered the
`challenged claim unpatentable.
`
`
`3 Neither party provides an express definition of the level of ordinary skill in
`the art in its briefing. See Pet. generally; PO Resp. generally; but see
`Ex. 1015 ¶ 8 (Dr. Wang testifying as to the level of ordinary skill). We
`determine that no express finding is necessary to resolve the parties’ dispute.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior
`art itself can reflect the appropriate level of ordinary skill in the art).
`
`
`
`9
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`At this final stage, we determine whether a preponderance of the
`evidence of the record shows that the challenged claim is anticipated by
`and/or would have been obvious in view of the asserted prior art. We
`analyze the asserted grounds of unpatentability in accordance with those
`principles.
`B. Summary of La Croix
`Each of the grounds upon which trial was instituted relies on
`La Croix. La Croix relates to a knitting board. Ex. 1012, 1:1–4. Figures
`1–3 of La Croix are reproduced below.
`
`
`
`
`
`Figures 1 and 2 illustrate a top plan view and sectional view, respectively, of
`the device of La Croix, and Figure 3 illustrates a perspective view of a cotter
`
`
`
`10
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`pin used with the device. Id. at 1:30–35. As described in La Croix, the
`knitting board includes “means for supporting the yarn, yet permitting
`different portions of the yarn to be released from the supporting means as the
`knitting proceeds.” Id. at 1:6–11.
`In the disclosed embodiment, La Croix describes using cotter pins 3
`for supporting the knitted work. Id. at 1:20–22. As seen in Figure 3 of
`La Croix, cotter pins 3 have “two leg portions 5, an eyelet 6, a round head 7
`and flat faces.” Id. at 1:45–48. Pins 3 are arranged within recesses 4 on
`board 1 such that yarn 9 may be “passed around the cotter pins 3 in a zig zag
`fashion.” Id. at 1:35–45, 2:52–54. La Croix further describes that cotter
`pins are “the best type of pin to use for the work, since it has flat sides or
`faces [] that permit the yarn to be removed over the head 7 without unduly
`stretching the yarn.” Id. at 2:67–71.
`Claim Construction
`C.
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard). Pursuant to that standard,
`the claim language should be read in light of the specification, as it would be
`interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
`603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms
`their ordinary and customary meaning. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`meaning ‘is the meaning that the term would have to a person of ordinary
`
`
`
`11
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`skill in the art in question.’” (quoting Phillips v. AWH Corp., 415 F.3d 1303,
`1313 (Fed. Cir. 2005) (en banc))).
`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 specification and the record evidence.’” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`In other words, “[u]nder a broadest reasonable interpretation, words of
`the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history.”
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016)
`(citing Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362
`(Fed. Cir. 2015)). Any special definition for a claim term must be set forth
`in the specification with reasonable clarity, deliberateness, and precision.
`See Paulsen, 30 F.3d at 1480. However, limitations are not to be read from
`the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`The parties’ dispute requires construction of the term “link,” as well
`as the phrase “the top portion comprises a flared portion for holding a
`
`
`
`12
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`link in place.” We discuss each of these in turn.4 No other claim terms
`require construction for purposes of this Decision.5
`link
`We did not construe “link” in our Decision on Institution. In its
`Patent Owner Response, Patent Owner argues that the Decision on
`Institution should have provided a construction for the term. See PO
`Resp. 1–2. Patent Owner asserts that a “‘link’ is a relationship between two
`things” or “a ring or loop, such as the elastic bands” of the ’420 patent. Id.
`at 2 (citing Ex. 1001, 1:31–33, 4:37–39; Ex. 2019). In its Reply, Petitioner
`argues that the term “link” should be construed as “a plurality of continuous
`looped structures without forming an actual knot.” Pet. Reply. 3 (citing
`Ex. 1001, 2:36–39).
`As discussed in the ’420 patent, a “Brunnian link is a link formed
`from a closed loop doubled over itself to capture another closed loop to form
`
`
`4 In its Patent Owner Response, Patent Owner challenges our use of the
`broadest reasonable interpretation standard for claim construction. See PO
`Resp. 1, 6. After Patent Owner filed its Response, however, the Supreme
`Court in Cuozzo, 136 S. Ct. at 2144–46, found the use of the broadest
`reasonable interpretation standard to be appropriate in an inter partes
`review. Thus, Patent Owner’s argument on this point lacks merit.
`5 We previously construed “rows of offset pins,” recited in claim 1, from
`which claim 3 depends, as requiring the alignment of adjacent rows of pins
`be staggered relative to each other. See Inst. Dec. 12–14. The parties do not
`dispute this construction, and we maintain this construction for purposes of
`this Final Written Decision.
`
`
`
`13
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`a chain.” Ex. 1001, 1:31–33. Figure 3 of the ’420 patent is reproduced
`below.
`
`
`Figure 3 is a schematic view of a series of Brunnian links. Id. at 1:64. As
`seen in Figure 3, “Brunnian link 20 is formed from a continuous looped
`structure without forming an actual knot.” Id. at 2:36–37. As described in
`the ’420 patent, “[s]everal links are formed in a chain to form a circular
`structure.” Id. at 2:38–39.
`Based on the parties’ arguments and the disclosure in the ’420 patent,
`we construe a “link” as one of a plurality of continuous looped structures
`(i.e., closed loops) connected without forming a knot.
`the top portion comprises a flared portion for holding a link in place
`Petitioner asserts, in the Petition, that the phrase “the top portion
`comprises a flared portion for holding a link in place” should be
`construed to mean “a portion of a pin located at the top of the pin and
`expanding outward in shape.” Pet. 10–11 (citing Ex. 1014; Ex. 1001,
`3:15–16, Fig. 6; Ex. 1015 ¶¶ 23–24). Petitioner further argues that
`“[b]ecause the claims do not limit the direction in which the top flared
`portion expands, . . . the direct[ion] of expansion can be in any
`direction, including laterally, radially, or axially.” Id. at 11.
`
`
`
`14
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`In our Decision on Institution, we did not expressly construe this
`phrase, but determined, for purposes of that Decision, that round head 7 of
`the asserted reference, La Croix, “spreads outward near the top of pin 3, and,
`thus, is ‘flared,’ as claimed.” Inst. Dec. 23. Based on Petitioner’s argument
`and evidence at that early stage of the proceeding, we determined that
`Petitioner had established a reasonable likelihood of showing claim 3 is
`anticipated by La Croix. See id. at 21–23.
`In its Patent Owner Response, Patent Owner argues that the Decision
`on Institution’s finding that La Croix’s cotter pin heads are “flared” “reads
`the limitation unreasonably broad[ly].” PO Resp. 2. According to Patent
`Owner, the phrase “a top flared portion for holding a link in a desired
`orientation” should be construed to mean “the pins have a portion that
`projects outward in at least two dimensions near an end spaced from the
`base, and [is] capable of holding a link in a desired orientation on the pin
`during creation of a linked item.” Id. Further, according to Patent Owner,
`“[t]o hold a link in a desired orientation, the top flared portion must be
`sufficiently enlarged that it can capture, and importantly hold, the link as the
`Brunnian link is created. During manipulation of the bands, a lowermost
`band is captured and pulled while an uppermost band must remain on the
`pin.” Id. at 3 (citing Ex. 1001, 4:17–30, Figs. 14A–C).
`Patent Owner continues that although “[t]he term ‘flared’ is not
`specifically defined in the specification, . . . as illustrated, it shows a portion
`projecting outward from the center axis of the pin in at least two dimensions.
`Id. (citing Ex. 1001, Figs. 6, 9). As Patent Owner notes (id.), the ’420 patent
`describes that the top flared portion is intended to “prevent errant release of
`a rubber band during creation of a link.” Ex. 1001, 3:16–17. Patent Owner
`
`
`
`15
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`further argues that the ’420 patent, when discussing bottom portion 44,
`“makes clear that ‘flared’ is defined as ‘outward from a diameter of a
`mid portion 46’” of pin 26. PO Resp. 3 (citing Ex. 1001, 3:26–29).
`Patent Owner further points to the dictionary definition submitted by
`Petitioner (Ex. 1014), which defines “flare” as “[t]o expand or open outward
`in shape; a skirt that flares from the waist; nostrils that flared with anger.”
`PO Resp. 4 (citing Ex. 1014, definition 4). Patent Owner argues that “[b]oth
`a skirt, and nostrils flare about the circumference of the center of the flared
`item.” Id. (emphasis added).
`Thus, according to Patent Owner, the claimed “flared portion is
`‘flared about the center axis of the pin,’ and must be sufficient to hold a
`link.” PO Resp. 4; see also id. at 6. In particular, Patent Owner argues that
`the term “flared” requires more than “simply expanding or opening
`outward,” but further requires particular direction or amount of outward
`expansion. Id. at 4. In other words, Patent Owner argues that the “flared
`portion” must be sufficiently flared to be capable of holding a link in place,
`as also recited in the claim.
`In its Reply, Petitioner argues that we should “reject Patent Owner’s
`narrow construction for ‘top flared portion’” “[f]or the same reasons
`addressed in [the] Decision Denying Patent Owner’s Request for
`Rehearing.” Pet. Reply 5 (referencing Paper 9 (“Dec. on Reh’g”)).
`Substantively, Petitioner repeats its argument from the Petition (Pet.
`11)—namely, that “[b]ecause the claims do not limit the direction in
`which the top flared portion expands, . . . the direct[ion] of expansion
`can be in any direction, including laterally, radially, or axially.” Pet.
`Reply 5. Further according to Petitioner, the language “for holding a link in
`
`
`
`16
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`a desired orientation”6 “does not recite a positive structural limitation and
`thus should not be accorded patentable weight.” Id. at 5–6. Finally,
`Petitioner argues that the claim “does not require holding bands while
`moving bands between the pins.” Id. at 12 n.4.
`As instructed by the Federal Circuit, “[e]ven under the broadest
`reasonable interpretation, [our] construction ‘cannot be divorced from the
`specification and the record evidence.’” Microsoft v. Proxyconn, 789 F.3d at
`1298 (citations omitted). The ’420 patent is titled “Brunnian Link Making
`Device and Kit.” Ex. 1001, at [54]. The entire written description of
`the ’420 patent relates to forming Brunnian linked articles, thus suggesting
`that the “top portion compris[ing] a flared portion,” as claimed, must be
`capable of holding a link in place—a capability necessary to forming a
`Brunnian linked article. On that point, Mr. Ng, Patent Owner’s declarant,7
`testifies:
`
`Creation of a Brunnian link using a loom device requires
`grasping a portion of a lower band on a first pin and moving the
`grasped portion of the lower band through a top band on the same
`
`6 We note, the language in claim 3 is “the top portion comprises a flared
`portion for holding a link in place” and not the language from claim 1,
`argued by Petitioner, namely that the top portion is “for holding the
`link in a desired orientation.”
`7 Petitioner argues that we should give Mr. Ng’s testimony less weight
`because he is the inventor of the ’420 patent. See Tr. 12:17–24. Petitioner
`has not, however, moved to exclude Mr. Ng’s testimony. We have
`considered Petitioner’s argument, and given Mr. Ng’s testimony appropriate
`weight in rendering this Decision. Further, as the Federal Circuit has
`explained, expert testimony is not always necessary in Board proceedings.
`See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir. 2015)
`(“Board members, because of expertise, may more often find it easier to
`understand and soundly explain the teachings and suggestions of prior art
`without expert assistance.”).
`
`
`
`17
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`
`first pin to a second pin. If one of the lower band or the top band
`comes free from the first pin during movement of the lower band,
`the entire linked item would come loose and no link would be
`formed.
`Accordingly, creation of Brunnian link requires that the
`top most band be held on the first pin while the grasped portion
`of the lower band is moved to the second pin
`Ex. 2026 ¶¶ 25–26. This testimony is consistent with the description in the
`Specification of the ’420 patent. See Ex. 1001, 2:43–46, 4:3–5, 4:17–30,
`Figs. 14A–C.
`Further according to Mr. Ng,
`For a link or rubber band to be held in place according to
`[the] invention [of the ’420 patent], the flared top must expand
`outwardly at positions other than the sides of the pin.
`* * * * *
`A top portion, as disclosed in the ’420 patent, includes a
`flange that expands outwardly around the pin and at locations
`other than the sides to hold the top band in place on the first pin
`when the lower band is moved.
`During movement of the lower most band to the second
`pin, a portion of the lower band is slide around the sides of the
`first pin. During this sliding movement, the lower band moves
`between the flared portion and the top band at the sides of the
`first pin. The top band is therefore not held on the sides of the
`flared portion during this time. During this time the top band is
`held on the first pin by a forward side of the flared portion.
`Ex. 2026 ¶¶ 24, 27–28. This testimony also is consistent with the
`description in the Specification of the ’420 patent. See Ex. 1001, 2;43–46,
`3:13–17, 3:31–33, 4:3–5, 4:17–30, Figs. 6–9, 14A–C.
`We recognize that we previously chose to not adopt Patent Owner’s
`proposed construction for the “flared portion.” See Inst. Dec. 22–23;
`Dec. on Reh’g, 2–4. At institution, however, “the Board is considering the
`
`
`
`18
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`matter preliminarily without the benefit of a full record.” Trivascular, Inc.,
`812 F.3d at 1068. As the Federal Circuit has recognized, “[t]he Board is free
`to change its view of the merits after further development of the record, and
`should do so if convinced its initial inclinations were wrong. To conclude
`otherwise would collapse these two very different analyses into one.” Id.
`We stated explicitly in the Decision on Institution that “we [had] not made a
`final determination with respect to the patentability of any challenged claim
`or the construction of any claim term.” Inst. Dec. 26. Accordingly, both
`parties were put on express notice that the claim construction set forth in the
`Decision on Institution was not final and could change in the Final Written
`Decision. Both parties were afforded adequate process by which to address
`any argument supporting their views as to the proper claim construction, in
`the Patent Owner Response and Petitioner’s Reply.
`Based on the entire record now before us, we agree with Patent Owner
`that the claimed “the top portion compris[ing] a flared portion for
`holding a link in place,” requires the top portion of the pin must flare
`about the circumference of the pin in such a manner as to be capable of
`holding a link in place for forming a Brunnian link.8 In other words,
`the flared portion must be sufficient to prevent errant release of a link,
`thereby to achieve the purpose of the ’420 patent, that is, the forming
`of Brunnian links. We give terms their broadest reasonable
`
`
`8 Unlike in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed.
`Cir. 2016), Petitioner in the present proceeding did, in fact, have notice of
`this construction. See, e.g., PO Resp. 2–4 (arguing our initial construction of
`this claim phrase was unreasonably broad, and proposing an alternative
`similar to the construction adopted in this Decision); Pet. Reply 4–7
`(responding to Patent Owner’s argument on that point).
`
`
`
`19
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`interpretation, and given the particular facts presented here, it would
`be unreasonable to read the claim term that requires “a flared portion
`for holding a link in place” to embrace a portion incapable of holding a
`link in place and, thus, incapable of forming Brunnian links.
`D. Anticipation by La Croix
`Petitioner asserts that claim 3 is anticipated by La Croix. Pet. 44–49.
`Patent Owner argues that La Croix does not disclose certain features recited
`in claim 3. PO Resp. 7–9; Ex. 2026 ¶¶ 11–13, 21, 23–41. We have
`reviewed the entire record before us, including the parties’ contentions and
`supporting evidence presented during this trial. For the reasons explained
`below, we determine that Petitioner has not demonstrated, by a
`preponderance of the evidence, that claim 3 is unpatentable as anticipated by
`La Croix.
`Petitioner relies on board 1 of La Croix as disclosing the base recited
`in claim 1. Pet. 45–46 (citing Ex. 1012, 1:5–11, 1:35–38, Fig. 1; Ex. 1015
`¶ 59). Petitioner further relies on cotter pins 3 as disclosing the claimed
`plurality of pins. Id. at 44, 46–48 (citing Ex. 1012, 1:44–47, Figs. 1, 2;
`Ex. 1015 ¶¶ 59–60). According to Petitioner, the cotter pins of La Croix
`include round head 7, thus disclosing a “top portion for holding a link in a
`desired orientation,” as recited in claim 1. Pet. 45, 47 (citing Ex. 1012,
`Fig. 3; Ex. 1015 ¶¶ 59–60). Petitioner further asserts that the enlarged top
`portion of each cotter pin 3 is “flared,” as recited in claim 3. Pet. 48–49
`(citing Ex. 1012, Fig. 3; Ex. 1015 ¶¶ 62–63). Petitioner relies on the two leg
`portions 5 and eyelet 6 as disclosing the claimed “opening on at least one
`side” of the pins. Pet. 45, 47–48 (citing Ex. 1012, Fig. 3; Ex. 1015 ¶¶ 59–
`60). Finally, Petitioner points to Figures 1 and 2 of La Croix as disclosing
`
`
`
`20
`
`
`
`IPR2015-01883
`Patent 8,684,420 B2
`
`that cotter pins 3 are arranged in “rows of offset pins spaced apart and
`extending upward from the base.” Pet. 44–45 (citing Ex. 1012, 1:43–44,
`Figs. 1, 2).
`Patent Owner argues that La Croix is missing several features of
`claim 3. See PO Resp. 7–9; Ex. 2026 ¶¶ 11–13, 21, 23–41. We focus our
`discussion on Patent Owner’s assertions regarding the claimed “top portion
`[of each pin