Paper No.: 11
`Filed: September 12, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`TRISTAR PRODUCTS, INC.
`Petitioner
`
`v.
`
`CHOON’S DESIGN INC.
`Patent Owner
`_________________________
`
`Case IPR2015-01883
`Patent No. 8,684,420
`_________________________
`
`PETITIONER’S REPLY BRIEF
`
`
`Filed on behalf of: Tristar Products, Inc.
`By:
`Noam J. Kritzer
`Email: nkritzer@bakoskritzer.com
`Ryan S. McPhee
`Email: rmcphee@bakoskritzer.com
`BAKOS & KRITZER
`
`
`
`
`Filed: September 12, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`TRISTAR PRODUCTS, INC.
`Petitioner
`
`v.
`
`CHOON’S DESIGN INC.
`Patent Owner
`_________________________
`
`Case IPR2015-01883
`Patent No. 8,684,420
`_________________________
`
`PETITIONER’S REPLY BRIEF
`
`
`Filed on behalf of: Tristar Products, Inc.
`By:
`Noam J. Kritzer
`Email: nkritzer@bakoskritzer.com
`Ryan S. McPhee
`Email: rmcphee@bakoskritzer.com
`BAKOS & KRITZER
`
`
`
`
`
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 2
`“link” .......................................................................................................... 2
`A.
`“a flared portion for holding a link in place” ............................................. 4
`B.
`“opening” .................................................................................................... 7
`C.
`III. CLAIM 3 OF THE ‘420 PATENT IS UNPATENTABLE .......................... 10
`CLAIM 3 IS ANTICIPATED UNDER 35 U.S.C. § 102(b)
`A.
`BY LA CROIX U.S. PATENT NO. 1,776,561 ....................................... 10
`“the top portion comprises a flared portion
`1.
`for holding a link in place” ............................................................ 11
`“an opening on at least one side of each
`of the plurality of pins” .................................................................. 12
`Claim 1 Has Been Disclaimed, and La Croix Discloses
`the Limitation Added By Claim 3 ............................................................ 17
`CLAIM 3 IS OBVIOUS UNDER 35 U.S.C. § 103(a)
`IN VIEW OF LA CROIX......................................................................... 18
`1.
`Copying .......................................................................................... 19
`2.
`Commercial Success ...................................................................... 20
`3.
`Industry Praise ................................................................................ 22
`IV. CONCLUSION .............................................................................................. 23
`Certificate of Compliance
`Certificate of Service
`
`
`
`ii
`
`2.
`
`B.
`
`C.
`
`
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Becton, Dickinson & Co., v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010) ............................................................................ 9
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) .......... 14, 15
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00454, (PTAB Aug. 29, 2014) (Paper 12) ................................. 20
`
`Crown Ops. Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367 (Fed. Cir. 2002) .................. 15
`
`Cuozzo Speed Techs., LLC v. Lee, 579 U.S. __, (2016) ........................................ 1, 2
`
`Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398 (Fed. Cir. 1996) ....................... 9
`
`Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990) ....... 6
`
`Impax Labs. v. Aventis Pharms., 468 F.3d 1366 (Fed. Cir. 2006) .......................... 17
`
`In re Huang, 100 F.3d 135 (Fed. Cir. 1996) ............................................................. 21
`
`In re Kao, 639 F.3d 1057 (Fed. Cir. 2011) ............................................................... 21
`
`Inline Plastics Corp. v. Easypak, LLC, 799 F.3d 1364 (Fed. Cir. 2015) ................... 7
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2014) .......................................................................... 19
`
`Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299 (Fed. Cir. 2006) .................... 21, 22
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ....................................... 3, 7
`
`Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345 (Fed. Cir. 2016) ......... 16
`
`Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997) .......................................................... 16
`
`Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) .................................... 19
`
`iii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Other Authority
`
`Page(s)
`
`Section 2114, Manual of Patent Examining Procedure ............................................. 6
`
`
`
`
`
`iv
`
`
`
`
`
`Exhibit
`No.
`1001
`1002
`1003
`
`Previously
`Filed
`X
`X
`X
`
`1004
`1005
`
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`
`
`X
`X
`
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`X
`
`EXHIBITS
`
`Description
`
`U.S. Patent No. 8,684,420
`File History of U.S. Patent No. 8,684,420
`File History of U.S. Provisional Application No.
`61/410,399
`Second Amended Complaint in the 10848 Litigation
`Stipulated Order of Dismissal Without Prejudice
`in the 03218 Litigation
`Decision to Institute Inter Partes Review in the ‘218 IPR
`Judgment and Final Written Decision in the ‘218 IPR
`Rules of Practice, 77 Fed. Reg. No. 157 (Aug. 14, 2012)
`Schaub U.S. Patent No. 8,316,894 (“Schaub”)
`Grimm U.S. Patent No. 2,237,733 (“Grimm”)
`Gustin U.S. Patent No. 7,506,524 (“Gustin”)
`La Croix U.S. Patent No. 1,776,561 (“La Croix”)
`Ng. U.S. Patent Publication No. 2012/0112457 (“Ng”)
`The American Heritage Dictionary
`Declaration of Youjiang Wang, Ph.D., P.E.
`Declaration of Woli I. Urbe, Esq.
`
`v
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Tristar Products, Inc. (“Tristar” or “Petitioner”) respectfully
`
`requests that the Board issue a final written decision finding claim 3 of U.S. Patent
`
`No. 8,684,420, Ex. 1001 (“the ‘420 Patent”) anticipated by and/or obvious in view
`
`of La Croix U.S. Patent No. 1,776,561 (“La Croix”; Ex. 1012).
`
`Patent Owner’s entire Response (Paper 10, “Response”) rises or falls on the
`
`Board narrowly construing the terms “opening,” “links,” and “a top flared portion
`
`for holding a link in a desired orientation.” The Board has already declined to adopt
`
`a narrow construction of “opening” or “a top flared portion for holding a link in a
`
`desired orientation.” See Institution Decision (“Inst. Dec.”), Paper 6 at 21-23;
`
`Decision Denying Request for Rehearing (“Dec. Denying Reh’g.”), Paper 9 at 3.
`
`With respect to the term “flared,” Patent Owner argues that the Markman
`
`claim construction standard used by district courts is proper instead of the broadest
`
`reasonable interpretation (“BRI”) standard used by the Board in instituting this
`
`proceeding. Importantly, the Board is not bound by the Markman standard, as the
`
`United States Supreme Court has made clear that the broadest reasonable
`
`interpretation standard used by the Board “represents a reasonable exercise of the
`
`rulemaking authority that Congress delegated to the Patent Office.” Cuozzo Speed
`
`Techs., LLC v. Lee, 579 U.S. __, slip op. at 17 (2016). However, even if the Board
`
`1
`
`
`
`
`
`used the Markman standard, Claim 3 would be invalid as Patent Owner’s
`
`construction attempts to improperly import limitations from the specification.
`
`II. CLAIM CONSTRUCTION
`The Supreme Court has affirmed that the BRI standard used by the Board
`
`“represents a reasonable exercise of the rulemaking authority that Congress
`
`delegated to the Patent Office.” Cuozzo, 579 U.S. __, slip op. at 17. In its Institution
`
`Decision, the Board construed the term “rows of offset pins” and found that “[n]o
`
`other terms require express construction.” Ins. Dec. at 12. Should the Board
`
`construe the following limitations, their proper constructions under the BRI standard
`
`will confirm that claim 3 of the ‘420 Patent is anticipated by and/or obvious in view
`
`of La Croix.
`
`A.
`
`“link”
`
`Petitioner’s Proposed Construction
`
`The term “link” means a continuous
`looped structure without forming an
`actual knot.
`
`Patent Owner’s Proposed
`Construction
`“A ‘link’ is a relationship between two
`things.” Response at 2.
`
`“a ‘link’ must be a relationship
`between two separate items.” Id.
`
`“a ‘link’ could be a ring or loop, such
`as elastic bands.” Id.
`
`“‘links’ should require either a plurality
`of distinct items which are connected
`together to form a link.” Id.
`
`
`2
`
`
`
`“the ‘link’ could be closed loops, such
`as the disclosed elastic bands.” Id.
`
`The term “link”1 is clearly defined in the ‘420 Patent. Specifically, the
`
`
`
`
`
`patentee explicitly defined the term “link” in the ‘420 Patent: “Referring to Fig. 3,
`
`a Brunnian link 20 is formed from a continuous looped structure without
`
`forming an actual knot.” Ex. 1001 at 2:36-37 (emphasis added). In the next
`
`sentence, the patentee explains that a plurality of these continuous looped structures
`
`form links: “Several links are formed in a chain to form a circular structure.” Ex.
`
`1001 at 2:38-39. Accordingly, if the Board determines that a construction of “link”
`
`is necessary, the proper construction is “a plurality of continuous looped structures
`
`without forming an actual knot.”
`
`Patent Owner’s construction improperly relies on extrinsic evidence – i.e., the
`
`Oxford Dictionary of English (3d. ed.). Response at 2. Extrinsic evidence is less
`
`significant and less reliable than intrinsic evidence. Phillips v. AWH Corp., 415 F.3d
`
`
`
`
`1 Patent Owner seeks a construction of “links” (plural), but this term only appears in
`
`the preamble of Claim 1 and is only used to recite a statement of intended use. For
`
`reasons discussed infra, the preamble is not a limitation of Claim 3, and should not
`
`be afforded patentable weight. Accordingly, if any construction is necessary, it
`
`should be made with respect to the term “link.”
`
`3
`
`
`
`
`
`1303, 1317-18 (Fed. Cir. 2005). In contrast, Petitioner’s proposed construction uses
`
`the intrinsic evidence to construe the claim term, consistent with the guidance in
`
`Phillips. The intrinsic evidence is clear and supports Petitioner’s proposed claim
`
`construction.
`
`B.
`
`“a flared portion for holding a link in place”
`
`Petitioner’s Proposed Construction
`
`The phrase “wherein the top portion
`comprises a flared portion” means a
`portion of a pin located at the top of the
`pin and expanding outward.
`
`Patent Owner’s Proposed
`Construction
`“the pins have a portion that projects
`outward in at least two dimensions near
`an end spaced from the base, and
`capable of holding a link in a desired
`orientation on the pin during creation
`of a linked item”
`
`
`
`Patent Owner advanced its position regarding the meaning of “a top flared
`
`portion”2 in its Preliminary Response. Paper 5 at 16-19. In its Institution Decision,
`
`the Board held that a construction was only necessary for “rows of offset pins” and
`
`that no other terms (such as “a flared portion”) require express construction. Inst.
`
`
`
`
`2 Patent Owner refers to a “top flared portion” but this term does not appear in Claim
`
`1 or Claim 3 of the ‘420 Patent. Rather, Claim 1 introduces “a top portion for holding
`
`a link in a desired orientation,” and Claim 3 recites “wherein the top portion
`
`comprises a flared portion for holding a link in place on at least one of the plurality
`
`of pins.”
`
`4
`
`
`
`
`
`Dec., Paper 6 at 12. Patent Owner then urged the Board to reconsider its view and
`
`construe the term “flared” (Paper 8 at 4-6), and the Board denied Patent Owner’s
`
`position (Paper 9 at 3). Specifically, the Board explained that it “[was] not persuaded
`
`that flared has the narrower and more specific meaning proposed by Patent Owner.”
`
`Dec. Denying Reh’g., Paper 9 at 3.
`
`Patent Owner again advances substantially the same construction of “flared”
`
`as in its Preliminary Response and its Request for Rehearing. (Compare Preliminary
`
`Response, Paper 5 at 16-19; Request for Rehearing, Paper 8 at 4-6; and Response,
`
`Paper 10 at 2-4). For the same reasons addressed in its Decision Denying Patent
`
`Owner’s Request for Rehearing, the Board should reject Patent Owner’s narrow
`
`construction for “top flared portion.”
`
`There is no mention of “flared” in the specification of the ‘420 Patent that
`
`would support Patent Owner’s proposed construction. See Ex. 1001 at 3:15-17,
`
`3:26-27, 3:29-31. Further, the ‘420 patent discloses, consistent with Petitioner’s
`
`construction, a “flanged top 38 that is flared outward.” Ex. 1001 at 3:15-16, Fig. 6;
`
`Ex. 1015 at ¶¶ 23-24. Because the claims do not limit the direction in which the top
`
`flared portion expands, Petitioner submits that the direction of expansion can be in
`
`any direction, including laterally, radially, or axially.
`
`Patent Owner argues that “for holding a link in a desired orientation” is a
`
`functional limitation and requires that the top flared portion hold the link as the
`
`5
`
`
`
`
`
`Brunnian link is created. Response, Paper 10 at 3. To support its position, Patent
`
`Owner cites to the Board’s decision regarding the phrase “for holding a link in a
`
`desired orientation” in IPR2014-00218 (“the ‘218 IPR”), which related to the parent
`
`patent of the ‘420 patent. However, the question before the Board in the ‘218 IPR
`
`was whether “for holding a link in a desired location” related to the flared portion or
`
`the pins, not whether the term was a functional limitation. ‘218 IPR Institution
`
`Decision, Ex. 1006 at 8. There is no indication that the Board considered whether
`
`the term was a functional limitation. Petitioner maintains that the term “for holding
`
`a link in a desired orientation” does not recite a positive structural limitation and
`
`thus should not be accorded patentable weight. Hewlett-Packard Co. v. Bausch &
`
`Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“apparatus claims cover what a
`
`device is, not what a device does”); see also MPEP 2114.
`
`To the extent the phrase “for holding a link in a desired orientation” is
`
`accorded patentable weight, the specification of the ‘420 patent discloses that a
`
`desired orientation is determined by the user-selected combination of pin bars and
`
`bases. Ex. 1001, Abstract; 1:40-46; 2:51-54; 3:67-4:2; 4:32-36; Figs. 12, 17. Thus,
`
`any top flared portion that holds a link is capable of holding a link in a desired
`
`orientation when positioned relative to other pins.
`
`6
`
`
`
`
`
`For the foregoing reasons, the phrase “wherein the top portion comprises a
`
`flared portion” means a portion of a pin located at the top of the pin and expanding
`
`outward.
`
`C.
`
`“opening”
`
`Petitioner’s Proposed Construction
`
`The term “opening” is defined by its
`plain and ordinary meaning.
`
`Patent Owner’s Proposed
`Construction
`“The opening must be something
`functional.” Response at 4.
`
`“the opening must be somewhere other
`than the top portion.” Response at 5.
`
`“Claim 1 requires the opening be in the
`pin, and below the top flared portion.”
`Id.
`
`
`
`Patent Owner points to the specification in an attempt to limit the claims to
`
`the sole disclosed embodiment. Response at 5. Patent Owner requests that the Board
`
`introduce two limitations via the construction of “opening”: (1) “the ‘opening’ must
`
`extend below the top flared portion,” and (2) “the opening must be somewhere other
`
`than the top portion.” Response at 5. However, these limitations are absent from
`
`the claim language, and to import them into the claim would be improper. Inline
`
`Plastics Corp. v. Easypak, LLC, 799 F.3d 1364, 1368-69 (Fed. Cir. 2015)
`
`(“[A]lthough the specification often describes very specific embodiments of the
`
`invention, we have repeatedly warned against confining the claims to those
`
`embodiments.”) (quoting Phillips, 415 F.3d at 1313).
`
`7
`
`
`
`
`
`The term “opening” appears in Claim 1 of the ‘420 Patent, which requires “an
`
`opening on at least one side of each of the plurality of pins.” Although Claim 1 also
`
`requires a “top portion” there is no limitation on the position of the “opening” with
`
`respect to the top portion. The Board only needs to look to the other claims of the
`
`‘420 Patent to see that the patentee had the ability to include limitations regarding
`
`the opening. Claim 2 of the ‘420 Patent, which depends on Claim 1, requires
`
`“wherein the opening comprises a slot extending from the top portion toward the
`
`base.” Clearly the patentee selected the term “opening” in Claim 1 to encompass
`
`various types of openings, while in Claim 2 (which is not at issue in this proceeding)
`
`the patentee limited the opening to a slot.
`
`To support its construction, Patent Owner points to the term “access groove”
`
`in the ‘420 Patent specification. Resp. 5 (“The opening is defined at col. 3, ll. 21-
`
`25).
`
`The access groove 40 extends from the bar portion 42 to an open end
`with the flanged top 38. The groove 40 provides a clearance for
`insertion of the hook tool 16 (FIG. 1) utilized for moving ends of a
`rubber band between pins 32[.]
`
`
`Ex. 1001, 3:21-25. The portion of the ‘420 Patent cited by Patent Owner does not
`
`define the term “opening” or provide any reason to narrow the construction of
`
`“opening” beyond its broadest reasonable interpretation.
`
`8
`
`
`
`
`
`
`
`Patent Owner further argues that the “opening” must be somewhere other than
`
`the top portion because “[w]hen two terms are recited, the claim must be interpreted
`
`to require separate parts.” Resp. 5. Neither of the cases cited by Patent Owner
`
`suggest that two separate claim elements must be located in different locations. In
`
`Becton, Dickinson & Co., v. Tyco Healthcare Group, LP, the Federal Circuit held
`
`that a “spring means” and a “hinged arm” are distinct structural elements. 616 F.3d
`
`1249, 1253-54 (Fed. Cir. 2010). Neither the district court nor the Federal Circuit in
`
`Becton opined on the position of the spring means relative to the hinged arm, or the
`
`position of distinct elements in general. In Patent Owner’s second cited case, Engel
`
`Indus., Inc. v. Lockformer Co., the Federal Circuit rejected the appellee’s assertion
`
`that a second portion included a return portion, where the plain language of the patent
`
`stated that the return portion is “also provided.” 96 F.3d 1398, 1405 (Fed. Cir. 1996).
`
`The Federal Circuit found that the proper construction of the terms required the
`
`second portion and the return portion to be distinct elements. Id. at 1405. As in
`
`Becton, the Federal Circuit did not opine on the positioning of the second portion
`
`and return portion, and whether they can be co-located, so long as both elements are
`
`present in the accused device.
`
`Claim 1 of the ‘420 Patent requires each pin to include a top portion and an
`
`opening. Unlike the tangible structures described in Becton and Engel Indus., an
`
`“opening” must be disposed in another structure. Further, there is nothing in Claim
`
`9
`
`
`
`
`
`1 or Claim 3 to require that the opening be separate from the top portion.3 For the
`
`foregoing reasons, the term “opening” should be given its plain and ordinary
`
`meaning, and the Board properly mapped each element of Claim 1 of the ‘420 Patent
`
`to La Croix in its Institution Decision. Paper 6 at 23.
`
`III. CLAIM 3 OF THE ‘420 PATENT IS UNPATENTABLE
`
`A. CLAIM 3 IS ANTICIPATED UNDER 35 U.S.C. § 102(b) BY LA
`CROIX U.S. PATENT NO. 1,776,561
`
`Patent Owner’s Response challenges whether the “cotter pins” of La Croix
`
`meet the limitations of “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” (Claim 1) and “wherein the top portion comprises a flared
`
`portion for holding a link in place on at least one of the plurality of pins” (Claim 3).
`
`Response, Paper 10 at 7-9. Patent Owner does not challenge the disclosure of La
`
`Croix with respect to the remaining elements of Claims 1 and 3. The cotter pin of
`
`La Croix meets the relevant claim limitations.
`
`
`
`
`
`
`
`3 Patent Owner appears to concede this point, stating that “[i]n the disclosure of the
`
`‘420 patent, the opening also extends to the top portion….” Response, Paper 10 at
`
`5.
`
`10
`
`
`
`
`
`La Croix United States Patent No. 1,776,561 (“La Croix”; Ex. 1012) discloses
`
`that cotter pins 3 each have two leg portions 5, an eyelet 6, a round head 7. Ex. 1012
`
`at 1:44-47. As shown in Fig. 3 (below), the groove between the two leg portions
`
`and the eyelet constitute “an opening on at least one side” of the pin.
`
`
`1. “the top portion comprises a flared portion for
`holding a link in place”
`
`Claim 1 requires “wherein each of the plurality of pins includes a top portion
`
`
`
`for holding a link in a desired orientation” and Claim 3 requires “wherein the top
`
`portion comprises a flared portion for holding a link in place on at least one of the
`
`plurality of pins.” For the reasons discussed supra, the term “flared portion” is a
`
`portion of a pin located at the top of the pin and expanding outward. La Croix
`
`teaches the use of a cotter pin having a flared portion – a portion located at the top
`
`of the pin and expanding outward.
`
`To the extent that “for holding a link in a desired orientation” is accorded any
`
`weight, Mr. Ng (the sole inventor and owner of Choon’s Design, LLC, the Patent
`
`11
`
`
`
`
`
`Owner) admits that the cotter pins of La Croix are capable of holding a link. Ex.
`
`2026 at ¶ 31 (“[B]ands can be placed on the cotter pins of the La Croix knitting
`
`board….”).4 Further, any flared portion that holds a link is capable of holding a link
`
`“in a desired orientation” when positioned relative to other pins. La Croix teaches
`
`the use of a cotter pin having a flared portion (a portion located at the top of the pin
`
`and expanding outward), and the arrangement of cotter pins on the board enables the
`
`pins to hold a link in a desired orientation. See La Croix, Ex. 1012 at Fig. 1.
`
`2. “an opening on at least one side of each of the plurality of pins”
`
`Claim 1 further requires “an opening on at least one side of each of the
`
`plurality of pins.” Patent Owner seeks to characterize cotter pins as formed by two
`
`legs that are held tightly together with no gap between the legs. Thus, Patent Owner
`
`
`
`
`4 Mr. Ng’s full statement is: “While bands can be placed on the cotter pins of the La
`
`Croix knitting board, the cotter pins do not hold the bands in place while moving
`
`bands between the pins for forming a Brunnian link as explained above.” Ex. 2026
`
`at ¶ 31. Mr. Ng’s focus on holding bands “while moving bands between the pins”
`
`is misplaced. Claim 3 only requires “wherein the top portion comprises a flared
`
`portion for holding a link in place on at least one of the plurality of pins.” Claim 3
`
`does not require holding bands while moving bands between the pins.
`
`12
`
`
`
`
`
`opines that the cotter pins have no “opening” between the legs beneath the eyelet.
`
`Response, Paper 10 at 7; Ex. 2026 at ¶ 31. This argument fails for two reasons.
`
`First, Claim 1 requires “an opening on at least one side” of a pin. As discussed
`
`supra, the term “opening” should be given its plain and ordinary meaning. Further,
`
`the Board has already determined that the eyelet 6 of La Croix is an opening on at
`
`least one side of the pin. Inst. Dec. at 23. Patent Owner’s argument ignores the
`
`Board’s holding.
`
`Second, even if “opening” is construed to require that a gap extend beneath
`
`the eyelet, a cotter pin as disclosed by La Croix would meet the limitation. While
`
`the legs may be in contact with each other, the legs 5 of cotter pin 3 are not flush on
`
`the side of the pin. Instead, the shape of the legs, when pressed together, forms a
`
`slot. See La Croix, Fig. 3; Declaration of Dr. Wang, Ex. 1015 at ¶ 77.
`
`
`Ex. 1015 at ¶ 77, showing an annotated Fig. 3 of La Croix.
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`The slot formed by the legs is an “opening” that enables a person to perform
`
`the function of creating links. Patent Owner goes to great lengths to suggest that
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`cotter pins do not have an opening and could not be used to form links. See Ng
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`13
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`
`
`
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`Declaration, Ex. 2026 at ¶¶ 12-13, 15, 33. This might be true for certain
`
`configurations where one selects cotter pins with legs shaped to form a minimal slot
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`and uses a hook that is large respective to the slot. However, La Croix does not
`
`suggest the use of cotter pins with such a minimal slot, and is not limited to the use
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`of specific cotter pins. Further, La Croix actually teaches the use of an appropriately
`
`sized needle for use in the slot:
`
`The yarn is released by the needle and this needle does not have to carry
`a part of the knitted work as is usually the practice. A very small
`needle may therefore be used, or, in fact, any object which will
`quickly remove the yarn from the supporting member.
`
`Ex. 1012 at 1:11-17. (Emphasis added). Thus, even if Patent Owner’s preferred
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`construction of “opening” is adopted, La Croix still meets the limitation.
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`
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`Patent Owner suggests that “[i]t is improper to rely upon a non-functional
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`design feature of a prior art reference as meeting an actual functional requirement of
`
`a claim.” Response, Paper 10 at 8. In support of its position, Patent Owner cites to
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`Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011). Contrary to
`
`Patent Owner’s summary of the case (Response, Paper 10 at 8), the district court in
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`Bettcher Indus. did not construe “bearing face” to mean “surface capable of being in
`
`rolling or sliding contact with a support member” – the district court did not construe
`
`the term at all. Bettcher Indus., 661 F.3d at 635, 641 (“the [district] court did not err
`
`in declining to construe these terms.”). One issue on appeal was whether a jury
`
`14
`
`
`
`
`
`instruction should have been issued with the defendant-appellant’s requested claim
`
`construction. Id. Turning to the prior art in the case, the Federal Circuit explained
`
`“[Appellant] attempts to characterize one structure (chamfers) as a completely
`
`different structure (a bearing race) based on a hypothetical configuration of
`
`surrounding structures disclosed nowhere in the prior art (expressly or inherently)
`
`and suggested by nothing in the record.” Id. at 640. In the present action, the
`
`disputed structure is simply an opening.
`
`Patent Owner also cites to Crown Ops. Int’l, Ltd. v. Solutia Inc., 289 F.3d
`
`1367, 1377 (Fed. Cir. 2002) in support of its position. Response, Paper 10 at 9.
`
`However, while Patent Owner’s description of Bettcher
`
`Indus. was
`
`mischaracterized, its reliance on Crown Ops. is wholly inapplicable. In Crown Ops.,
`
`the claim at issue explicitly required a solar control film “wherein said solar control
`
`film contributes no more than about 2% visible reflectance….” Crown Ops., 289
`
`F.3d at 1372 (emphasis in original). Appellant argued that the prior art reference
`
`disclosed the structure, thickness, and materials of the claimed assembly, and that
`
`the 2% limitation was inherent in the prior art’s teachings. Id. The Federal Circuit
`
`ruled that, on its face, the prior art reference did not disclose or discuss a 2%
`
`limitation for reflectance contribution. Id. at 1377. The Federal Circuit declined to
`
`accept the proposition that the missing disclosure was inherently disclosed by the
`
`prior art reference. Id. To summarize, the decision in Crown Ops. concerns an
`
`15
`
`
`
`
`
`explicit limitation of a claim, weighed against an arguably inherent disclosure of a
`
`prior art reference. In the present action, Patent Owner’s argument about enablement
`
`(Response, Paper 10 at 9) is misplaced. Claim 3, by its terms on its face, does not
`
`require that the “opening” have any particular characteristics – characteristics which
`
`may or may not be inherent in the prior art. Claim 3 only requires an “opening on
`
`at least one side of each of the plurality of pins,” and such opening is clearly shown
`
`in La Croix. Ex. 1012, Figs. 2-3; Purdue Pharma L.P. v. Epic Pharma, LLC, 811
`
`F.3d 1345, 1351 (Fed. Cir. 2016) (“A patent is invalid for anticipation under 35
`
`U.S.C. § 102 if a single prior art reference discloses each and every limitation of the
`
`claimed invention.” (citation omitted)).
`
`
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`Patent Owner goes on to suggest that La Croix would not enable one of
`
`ordinary skill in the art for “creating an item consisting of a series of links” as recited
`
`in the claims. Response, Paper 10 at 9. As a threshold matter, the Board should
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`apply the BRI standard and hold that the preamble is not a limitation of Claim 3.
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`MPEP 2111.02 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“where a
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`patentee defines a structurally complete invention in the claim body and uses the
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`preamble only to state a purpose or intended use for the invention, the preamble is
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`not a claim limitation”)). Thus, Patent Owner’s argument regarding enablement of
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`La Croix to create an item consisting of a series of links (a statement of intended use
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`recited in the preamble) has no merit.
`
`16
`
`
`
`
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`Nevertheless, La Croix is an enabling disclosure. A prior art reference is
`
`enabling if it enables a person of ordinary skill in the art to carry out the claimed
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`invention. Impax Labs. v. Aventis Pharms., 468 F.3d 1366, 1381 (Fed. Cir. 2006).
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`“The enablement requirement for prior art to anticipate under section 102 does not
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`require utility, unlike the enablement requirement for patents under section 112.” Id.
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`at 1381-82. Patent Owner admits that that the cotter pins disclosed by La Croix
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`disclose an opening at the eyelet. Response, Paper 10 at 7. In his declaration Mr.
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`Ng. asserts that a hook5 was unable to extended into any opening of the cotter pin.
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`Ex. 2026 at ¶ 33. However, the language of Claim 3 does not recite a hook tool or a
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`limitation requiring the ability for a hook tool to extend into the opening of the cotter
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`pin. Put simply, La Croix enables a person of ordinary skill in the art to carry out
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`the claimed invention that is recited in Claim 3.
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`B. Claim 1 Has Been Disclaimed, and La Croix Discloses the Limitation
`Added By Claim 3
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`Patent Owner disclaimed Claim 1 on December 15, 2015, after the filing of
`
`the Petition in this proceeding. Ex. 2018. Patent Owner is estopped from arguing
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`
`
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`5 While Mr. Ng used the same hook utilized in his Rainbow Loom product (Ex. 2026
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`at ¶ 33), La Croix explicitly teaches the use of a “very small needle.” Ex. 1012 at
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`1:14-17.
`
`17
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`
`
`
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`the patentability of the device of Claim 1, or any claim that is patentably indistinct
`
`from Claim 1.
`
`Claim 3 is only distinct from Claim 1 in that it requires “wherein the top
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`portion comprises a flared portion for holding a link in place on at least one of the
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`plurality of pins.” As explained above, La Croix meets this limitation and thus
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`anticipates Claim 3. At a minimum, a person of ordinary skill in the art considering
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`the unpatentable device of Claim 1 and the cotter pins disclosed by La Croix would
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`find the device of Claim 3 obvious. Accordingly, La Croix renders Claim 3 invalid.
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`C. CLAIM 3 IS OBVIOUS UNDER 35 U.S.C. § 103(a) IN VIEW OF
`LA CROIX
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`Patent Owner argues that copying, commercial success, and industry praise
`
`demonstrate that the challenged claims would not have been obvious to a person
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`having ordinary skill in the art. Response, Paper 10 at 10-12. In support of its
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`assertion, Patent Owner cites to the unsupported assertions of the inventor Mr. Ng.
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`However, Mr. Ng’s clearly biased view has no impact on the question of
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`obviousness. Further, because Claim 1 of the ‘420 Patent has been disclaimed (Ex.
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`2018), Patent Owner must show that copying, commercial success, and industry
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`praise are specifically due to the limitation required by Claim 3. Patent Owner has
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`not even attempted to advance that argument, because it cannot. La Croix renders
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`Claim 3 of the ‘420 Patent obvious. Patent Owner’s attempt to use secondary
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`considerations cannot avoid this reality.
`
`18
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`
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`
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`1. Copying
`Patent Owner argues that as a result of the success of its Rainbow Loom
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`product, “knock-off” companies have copied aspects of the claimed invention.
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`Response, Paper 10 at 10. However, “copying requires evidence of efforts to
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`replicate a specific product.” Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed.
`
`Cir. 2010).
`
`This may be demonstrated either through internal documents, see
`Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d
`1186, 1196-97 (
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