UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
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`U.S. Patent 7,228,971
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`Inventors:
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`James A. Mooney et al.
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`Filed:
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`October 31, 2003
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`Claimed
`Priority: March 22, 1999
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`Issued:
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`June 12, 2007
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`Assignee: Derrick Corporation
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`: Attorney Docket No. 080454.0201
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`:
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`: Case IPR2016-00642
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`:
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`Title:
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`Vibratory Screening Machine and Vibratory Screen and Screen
`Tensioning Structure
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE IN
`INTER PARTES REVIEW OF
`CLAIM 6 OF U.S. PATENT NO. 7,228,971
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent 7,228,971
`
`Inventors:
`
`James A. Mooney et al.
`
`Filed:
`
`October 31, 2003
`
`
`
`
`Claimed
`Priority: March 22, 1999
`
`Issued:
`
`June 12, 2007
`
`
`
`
`
`
`Assignee: Derrick Corporation
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`: Attorney Docket No. 080454.0201
`
`:
`
`:
`
`
`:
`
`: Case IPR2016-00642
`
`:
`
`Title:
`
`Vibratory Screening Machine and Vibratory Screen and Screen
`Tensioning Structure
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE IN
`INTER PARTES REVIEW OF
`CLAIM 6 OF U.S. PATENT NO. 7,228,971
`
`
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`TECHNOLOGY BACKGROUND ................................................................. 2
`
`III. CLAIM CONSTRUCTION ............................................................................ 3
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`A. Dr. Dubowsky’s claim construction opinions deserve no weight. .......... 3
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`B. Derrick’s constructions improperly rewrite the claims. .......................... 4
`
`IV. RESPONSE TO PATENT OWNER’S ARGUMENTS ............................... 10
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`A. Ground 1: Claim 6 is obvious over Bakula ’236. .................................. 10
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`B. Ground 2: Claim 6 is obvious over Bakula ’236 in view of
`Bakula ’797. ........................................................................................... 17
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`C. Ground 3: Claim 6 is obvious over Bakula ’236 in view of Rafton. ..... 18
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`D. No evidence of secondary considerations rebuts the overwhelming
`prima facie case of obviousness. ............................................................ 20
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`V.
`
`CONCLUSION .............................................................................................. 25
`
`
`
`i
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`Petitioners’ Reply to Patent Owner’s Response
`LIST OF EXHIBITS
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`
`1001 U.S. Patent No. 7,228,971 by James A. Mooney et al., entitled
`“Vibratory Screening Machine and Vibratory Screen and Screen
`Tensioning Structure” (“the ’971 Patent”)
`
`1002 File History for U.S. Patent No. 7,228,971
`
`1003 Declaration of William S. Cagle
`
`1004 U.S. Patent No. 5,958,236 by John J. Bakula, entitled “Undulating
`Screen for Vibratory Screening Machine and Method of Fabrication
`Thereof” (“Bakula ’236”)
`
`1005 U.S. Patent No. 5,673,797 by John J. Bakula et al., entitled “Screen
`Assembly for Vibratory Screening Machine and Method of Fabrication
`Thereof” (“Bakula ’797”)
`
`1006 U.S. Patent No. 2,015,087 by Harold Robert Rafton, entitled “Wire Cloth
`Supporting and Attaching Means” (“Rafton”)
`
`1007 GB Patent No. 239,941 by Wilhelm Seltner, entitled “Improvements in
`and relating to Apparatus for the Grading or Sorting of Materials”
`(“Seltner”)
`
`1008 U.S. Patent No. 2,268,853 by George W. Behnke, entitled “Screen
`Stretching and Take-Up Device” (“Behnke”)
`
`1009 U.S. Patent No. 3,406,823 by Allan M. Crain, entitled “Releasable
`Screen Tensioning and Connecting Means” (“Crain”)
`
`1010 U.S. Patent No. 3,900,628 by William E. Stewart, entitled “Pretensioned
`Screen Panel” (“Stewart”)
`
`1011 U.S. Patent No. 5,927,511 by Russell Allen Riddle et al., entitled “Flat
`Screen Panel for Crowned Deck Vibrating Shaker” (“Riddle”)
`
`1012 File History for U.S. Patent No. 6,669,027
`
`
`
`
`
`
`ii
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`Petitioners’ Reply to Patent Owner’s Response
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`IPR2016-00642
`U.S. Patent No. 7,228,971
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`1013 Complaint, Derrick Corp. v. Screen Logix, LLC, et al., No. 15-cv-01238
`(W.D. La. Apr. 22, 2015)
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`1014 Summons, Derrick Corp. v. Screen Logix, LLC, et al., No. 15-cv-01238
`(W.D. La. Apr. 22, 2015)
`
`1015 Axon EP, Inc., et al. v. Derrick Corp., Case No. IPR2016-00642 (PTAB),
`Deposition Transcript of Steven Dubowsky dated January 25, 2017.
`
`1016 Derrick Corp. v. Screen Logix, LLC et al., Case No. 6:15-cv-01238
`(W.D. La.), Deposition Transcript of Steven Dubowsky dated August 3,
`2016, pp. 1-4, 17-18.
`1017 Axon EP, Inc., et al. v. Derrick Corp., Case No. IPR2016-00642 (PTAB),
`Unredacted Deposition Transcript of Michael Morgenthaler dated
`January 6, 2017.
`1018 Derrick Corp. v. Screen Logix, LLC et al., Case No. 6:15-cv-01238
`(W.D. La.), Deposition Transcript of Keith Wojciechowski dated January
`20, 2017, pp. 1-4, 166.
`
`1019 Derrick Corp. v. Screen Logix, LLC et al., Case No. 6:15-cv-01238
`(W.D. La.), Plaintiff’s Responses and Objections to Defendant Screen
`Logix’s First Set of Requests for Admission, Request for Admission No.
`12 (Excerpt).
`
`1020 Derrick Corp. v. Screen Logix, LLC et al., Case No. 6:15-cv-01238
`(W.D. La.), Plaintiff’s Supplemental and Amended Objections and
`Responses to Interrogatory Nos. 12 and 16 from Defendant Screen
`Logix, Inc.
`
`1021 Exhibit 1017 (Redacted)
`
`iii
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`Petitioners’ Reply to Patent Owner’s Response
`I.
`INTRODUCTION
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`IPR2016-00642
`U.S. Patent No. 7,228,971
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`Petitioners Axon EP and Screen Logix (collectively, “Axon”) reply under 37
`
`C.F.R. § 42.23 to Patent Owner Derrick Corp.’s (“Derrick”) Response to Petition
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`filed on November 22, 2016. Paper 18 (“Resp.”). This reply confirms the Board’s
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`initial determination that Claim 6 of the ’971 Patent is obvious over the prior art
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`and should be cancelled.
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`This IPR presents the simplest obviousness analysis the Board is likely to
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`encounter. Claim 6 reads onto a screen that is structurally identical to Derrick’s
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`own prior art (Bakula ’236) except for one minor detail: Bakula ’236 does not
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`show its screen sub-assembly attached to the plate flanges. However, this was a
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`routine manufacturing method and appears in other prior art (Bakula ’797). The
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`Board found, and Derrick has not disputed, a person of ordinary skill in the art
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`(“POSITA”) would have been motivated to modify Bakula ’236 to attach its screen
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`sub-assembly to the plate flanges to better secure the screen sub-assembly to the
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`plate. Paper 9 (“Decision”) at 24.
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`Faced with overwhelming obviousness, Derrick misdirects the Board to an
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`unclaimed vibratory screening machine rather than the screens covered by Claim
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`6. Derrick disputes two elements in Bakula ’236 using the same arguments the
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`Board already rejected as improperly importing limitations. Derrick accuses
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`Axon’s expert of hindsight while failing to address the motivation that he actually
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`presented and the Board adopted. And Derrick alleges secondary considerations
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`1
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`
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`that arise not from the claimed screens but the unclaimed machine that uses them.
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`Axon respectfully requests the Board confirm that Claim 6 is obvious.
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`II. TECHNOLOGY BACKGROUND
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`The ’971 Patent represents Derrick’s attempt to extend its monopoly in a
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`market where it sells vibratory screening machines and replacement screens using
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`the “razor-razorblade” model. The ’971 Patent is a continuation of U.S. Patent No.
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`6,669,027. While this ’027 Patent claims the machine (and its tensioning system),
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`the ’971 Patent claims only the replacement screens.
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`This distinction between machine and screen is critical because, to the extent
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`the specification discloses anything innovative, the machine claims of the ’027
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`Patent claim this subject matter. By contrast, the screen claims of the ’971 Patent
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`(e.g., Claim 6) claim structure substantively identical to the prior art. Derrick’s
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`“Technology Background” section therefore focuses on “vibratory screening
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`machines, such as those described in the ’971 Patent,” rather than the claimed
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`screen. Resp. 4-6. Derrick does not identify anything innovative about the claimed
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`screens, and for good reason – the machine described in the ’971 Patent uses an
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`unremarkable screen.
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`Derrick continues to conflate the scope of Claim 6 (the screen) with the
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`unclaimed disclosure of the ’971 Patent (the machine’s tensioning system). Derrick
`
`imports limitations based on the unclaimed tensioning system. The Board rejected
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`this. E.g., Decision 10. Derrick alleges secondary considerations arising from the
`
`2
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`unclaimed tensioning structure. The Board rejected this also. E.g., id. at 27.
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`Derrick’s Response offers nothing new.
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`III. CLAIM CONSTRUCTION
`
`A. Dr. Dubowsky’s claim construction opinions deserve no weight.
`Steven Dubowsky’s declaration on claim construction should be given no
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`weight. E.g., Resp. 19, 22, and 25 (citing Ex. 2022 ¶¶ 65-70, 72-83, and 88-91).
`
`“[T]he construction of a patent, including terms of art within its claim, is
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`exclusively within the province of the court.” Markman v. Westview Instruments,
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`Inc., 517 U.S. 370, 372 (1996); CytoLogix Corp. v. Ventana Med. Sys., Inc., 424
`
`F.3d 1168, 1172 (Fed. Cir. 2005). Expert opinions have been excluded when they
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`offer “a classic claim construction.” Medicines Co. v. Mylan Inc., 2014 WL
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`1979261, at *6 (N.D. Ill. May 15, 2014). Dr. Dubowsky admits he worked in the
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`“same manner” as a judge. Ex. 1015 at 44:17-21.
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`Dr. Dubowsky’s lack of relevant experience further diminishes his opinions.
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`Dr. Dubowsky works in a Space Robotics Laboratory. Ex. 2022 ¶ 6. He has never
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`worked on shale shaker equipment before this litigation.1 Ex. 1016 at 17:16-22. He
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`had not even worked with individuals who develop shale shaker machines. Id. at
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`
`1
`In contrast, Axon’s expert has worked with shaker machines for 38 years.
`Ex. 1003 ¶ 10 and 17. Even Derrick’s other expert – who offers no claim
`construction opinion – has been in the industry for 36 years. Ex. 2033 ¶ 2.
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`3
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`17:23-18:6. Dr. Dubowsky lacks any personal insight how such person would
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`understand the ’971 Patent’s terms and merely repeats Derrick’s attorney argument.
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`B. Derrick’s constructions improperly rewrite the claims.
`Derrick’s constructions read limitations into Claim 6. Although claims are
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`interpreted in light of the specification, limitations from the specification are not
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`read into the claims. In re Van Geuns, 988 F.2d 1181, 1184-85 (Fed. Circ. 1993);
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`MPEP § 2145. Derrick does not disguise its intentions, often repeating claim
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`language verbatim but adding a limitation.
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`Derrick could have moved to amend Claim 6 in this manner. 37 C.F.R. §
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`42.121. Having chosen not to amend the claim, Derrick is bound to the claim as
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`written. “[T]he claims of the patent, not its specifications, measure the invention.”
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`Smith v. Snow, 294 U.S. 1, 11 (1935). Derrick cannot ignore the requirements of a
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`motion to amend by importing those limitations through claim construction.
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`“Finger-receiving apertures”
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`1.
`The Board instituted the IPR using an agreed construction of “finger-
`
`receiving apertures.” Derrick “agree[d] with Petitioners that the broadest
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`reasonable interpretation of ‘finger-receiving apertures’ is apertures that are
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`capable of receiving fingers.” Paper 8 (“Prelim.”) at 25. After this agreed
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`construction failed to produce a patentability argument, Derrick now seeks to add a
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`mounting limitation: “apertures that are capable of receiving fingers for mounting
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`the vibratory screening assembly.” Resp. 16 (emphasis added).
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`4
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`Although Derrick now frames this as a claim construction dispute, the Board
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`already rejected Derrick’s arguments. It addressed the contention that Bakula ’236
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`does not disclose “finger-receiving apertures” because of incompatibilities between
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`its screen and a hypothetical machine. Decision 17-18. The Board found “Derrick’s
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`argument improperly reads into claim 6 structures and functional requirements
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`from the Specification not otherwise in claim 6.” Id. at 18. It concluded “we do not
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`read (and Derrick fails to identify) limiting language in claim 6 requiring the
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`claimed apparatus to be mounted on a vibratory machine.” Id. at 19.
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`Derrick’s attempt to import such limiting language should be rejected.
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`Although the Board used an agreed construction, Derrick argues “the Board did
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`not adequately account for the claim language ‘finger-receiving[.]’” Resp. 16.
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`However, the Patent Office has consistently addressed this language properly. “For
`
`apparatus claims, . . . generally patentability depends on the claimed structure, not
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`on the use or purpose of that structure.”Marrin v. Griffin, 599 F.3d 1290, 1294
`
`(Fed. Cir. 2010). During the original prosecution, the Examiner found that “finger-
`
`receiving” did not provide structural limitations. Ex. 1002, May 2, 2006 Office
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`Action, at 4-5. The Board reached a similar conclusion: “Claim 6 does not
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`positively recite a specific type of finger nor does the claim require the plate/screen
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`sub-assembly to undergo tension forces.” Decision 18.
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`5
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`The case Derrick quotes on pages 17-18 is inapposite. The Federal Circuit
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`construed “thumb switch being adapted for activation by the human thumb.” In re
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`Man Machine Interface Techs. LLC, 822 F.3d 1282 (Fed. Cir. 2016) (emphasis
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`added). The Court considered whether “adapted for” meant “designed for” or
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`“suitable for” before choosing the narrower interpretation. Id. at 1286-87. By
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`contrast, Claim 6 does not include “adapted for” language. Nor does Claim 6 say
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`anything about “mounting,” the unrelated limitation that Derrick imports.
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`A further problem is that Derrick’s construction limits the claim by reference
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`to some undefined, unclaimed tensioning system. Derrick complains that the Board
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`did not limit the claim to “fingers that can actually operate to mount the claimed
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`vibratory screen assembly on a vibratory screening machine using the tensioning
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`system described in the specification.” Resp. 18-19. However, Claim 6 does not
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`mention – much less describe – the tensioning system that Derrick characterizes as
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`“critical” to the invention. Derrick’s expert admits no such language is in the claim.
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`Ex. 1015 at 29:23-30:2. Derrick’s “mounting” limitation is undefined and likely
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`indefinite.
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`Finally, Derrick complains that the Board gave no weight to the “finger-
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`receiving” language. Resp. 20. However, the Board afforded proper weight the
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`apertures are capable of receiving fingers. The term is not “finger-mounting.”
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`Derrick could have drafted Claim 6 to include structural limitations, recite specific
`
`fingers, or require the screen to be mounted in a certain way. Or Derrick could
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`6
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`have moved to amend in this IPR. Derrick did neither, and the “finger-receiving”
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`language does not provide a requirement that the screen be mounted on a vibratory
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`machine. The resulting claim scope is not a legal error – it is the consequence of
`
`the language Derrick chose to define its claim.
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`“first/second side edge of the central portion”
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`2.
`Derrick’s construction is a transparent amendment. Derrick repeats the term
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`verbatim before adding an unrelated limitation: “first/second side edge of the
`
`central portion capable of withstanding tensioning forces applied thereto.” Resp.
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`21 (emphasis added).
`
`The Board already rejected this construction. Decision 10. While Derrick
`
`argues that Mr. Cagle testified the side edges must withstand tensioning forces,
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`Resp. 22, he actually testified this is true for all screens. Ex. 2017 at 72:25-73:7.
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`Dr. Dubowsky agreed the prior art would undergo “[s]ome tensioning forces.” Ex.
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`1015 at 75:16-24. This confirms that Derrick’s construction “adds little to define
`
`the metes and bounds of the invention, as most structure can withstand at least
`
`some tensioning forces.” Decision 10; see also Ex. 1015 at 55:25-56:25.
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`Regardless, the Board noted “we need not explicitly construe this term, as
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`Derrick does not contest, at this stage of the proceeding, whether this element is
`
`found in the prior art.” Decision 10. Derrick’s Response still does not dispute this
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`element in Bakula ’236, and thus, Derrick has waived any related patentability
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`argument. Apple, Inc. v, Ameranth, Case No. CMB2015-00080, Paper 44 at 7
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`7
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`(PTAB Aug. 26, 2016) (“Arguments that are not developed and presented in the
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`Patent Owner Response, itself, are not entitled to consideration.”).
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`3.
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`“a second end of the first/second side portion spaced away
`from and overlying the central portion and the first/second
`series of finger-receiving apertures”
`
`Derrick’s construction is another attempt to amend Claim 6. Derrick quotes
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`the term verbatim and adds new limitation: “a second end of the first/second side
`
`portion spaced entirely away from and overlying the central portion and the
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`first/second series of finger-receiving apertures.” Resp. 24 (emphasis added).
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`Derrick’s construction is neither the “express” nor “plain” language of Claim 6.
`
`See Resp. 25 and 27. The Board correctly recognized the plain language does not
`
`require the second ends to be spaced “entirely” away from the central portion.
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`Decision 22-23. Derrick now seeks to add that limitation.
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`However, Derrick’s proposal that the “second end of the first/second side
`
`portion [of the screen sub-assembly]” is spaced entirely away from “central
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`portion” improperly excludes the preferred embodiment. See Anchor Wall Sys., Inc.
`
`v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003) (“[A]
`
`claim construction that excludes a preferred embodiment . . . is rarely, if ever
`
`correct and would require highly persuasive evidentiary support.”). The ’971
`
`Patent’s only embodiment appears in Figure 3 and shows that these second ends
`
`contact the central portion:
`
`8
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`Petitioners’ Reply to Patent Owner’s Response
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`IPR2016-00642
`U.S. Patent No. 7,228,971
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`“Second end”
`contacting the
`“central portion”
`
`
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`The second ends of the screen sub-assembly are not spaced “entirely” away from
`
`the central portion. Rather, they form a U-shaped structure (90 and 91) that
`
`contacts the central portion of the plate.2 The Board likewise recognized “the
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`screen sub-assembly planar sides 90 end by contacting plate 61, and short sides 91
`
`are formed adjacent to (and parallel with) flanges 62 and 63.” Decision 25.
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`More seriously, Derrick’s construction excludes the only embodiment. The
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`“exemplary illustration” in Paragraph 90 of Dr. Dubowsky’s declaration does not
`
`appear in the specification. The ’971 Patent never discloses second ends that are
`
`spaced “entirely” away from the central portion. This lack of disclosure is critical
`
`
`2
`Figure 4 illustrates the embodiment of Figure 3 from a different perspective.
`It shows that the second ends – despite contacting the central portion – are
`nevertheless spaced away from both the finger-receiving apertures (apertures
`70 and 80) and another part of the central portion (side edge portions 79).
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`9
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`because Claim 6 was added by amendment years after the application was filed. Ex.
`
`1002, March 16, 2007 Response, at 4. Amendments must be supported by the
`
`original application, MPEP § 2163(I)(B), and there is no support for the “entirely”
`
`limitation Derrick seeks to add by construction.
`
`Finally, Derrick offers irrelevant argument that Claim 1 reads onto Figure 3.
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`Resp. 26-27. The problem with Derrick’s construction is that the ’971 Patent
`
`contains no disclosure where a second end is spaced “entirely” away from the
`
`central portion. The proper construction of Claim 6 must read onto Figure 3
`
`because that is the ’971 Patent’s only embodiment. It makes no difference whether
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`Claim 1 also reads onto Figure 3.
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`Derrick’s construction, which excludes the only embodiment, is not the
`
`broadest reasonable interpretation. It is not even reasonable. Derrick’s attempt to
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`limit the claim should be rejected.
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`IV. RESPONSE TO PATENT OWNER’S ARGUMENTS
`
`A. Ground 1: Claim 6 is obvious over Bakula ’236.
`Bakula ’236 discloses all elements of Claim 6 except one: extending the
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`screen sub-assembly and attaching it to the plate flanges. However, a POSITA
`
`would have been motivated to make this modification.
`
`Derrick contests only two other elements in Bakula ’236, relying on the
`
`flawed claim constructions discussed above. Regarding the modification, Derrick
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`10
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`does not dispute the basis to modify that the Board found and has therefore waived
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`this issue. Apple, Paper 44 at 7.
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`Bakula ’236 discloses “finger-receiving apertures.”
`
`1.
`The Board correctly found that Bakula ’236 discloses “the central portion of
`
`the plate includ[es] a first series of finger-receiving apertures located inwardly
`
`from the first side edge and a second series of finger-receiving apertures located
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`inwardly from the second side edge.” Decision 16-19.
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`Derrick does not contest that Bakula ’236 discloses this element under the
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`agreed construction of “finger-receiving apertures” the Board applied. Resp. 30-36.
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`Nowhere does Derrick dispute that Bakula ’236 discloses “apertures that are
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`capable of receiving fingers.” The Board can dispose of Derrick’s argument by
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`affirming the construction to which Derrick previously agreed.
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`Derrick asserts its new construction, but even then, Derrick doubles down on
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`its efforts to import limitations. Derrick further interprets its construction, arguing
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`that the finger-receiving apertures “must be capable of receiving fingers that apply
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`tensioning forces to the edges of the finger-receiving apertures in order to mount
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`the vibratory screen assembly to the screening machine.” Resp. 31. This tensioning
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`requirement is so far removed from the claim language that Derrick did not even
`
`include it in its construction. Indeed, Derrick’s expert acknowledges that Claim 6
`
`is directed to a screen and not a tensioning system or fingers. Ex. 1015 at 29:23-
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`30:2, 50:5-8.
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`11
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`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`Even if the Board adopts Derrick’s construction, Bakula ’236 still discloses
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`the finger-receiving apertures. “It is well settled that the recitation of a new
`
`intended use for an old product does not make a claim to that old product
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`patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The finger-
`
`receiving apertures are part of the plate, and Bakula ’236 discloses a plate with
`
`finger-receiving apertures that is materially identical to the ’971 Patent:
`
`Bakula ’236
`
`The ’971 Patent
`
`“[P]late 131 has apertures 132 therein
`which are bordered by horizontal plate
`members 133 and elongated vertical
`plate members 134,” shown in Figure
`29:
`
`“Plate 61 includes apertures 70 which
`are bordered by elongated metal strip-
`like portions or members 71 . . . and by
`shorter strip-like portions 72 and 72',”
`shown in Figure 4:
`
`Ex. 1004 at Abstract, 12:13-16, Figure
`29.
`
`Ex. 1001 at 5:8-13, Figure 4.
`
`
`
`
`Mr. Cagle explained Figure 29 of Bakula ’236 discloses a plate having finger-
`
`receiving apertures. Ex. 2017 at 170:7-13. Derrick cannot rebut this disclosure of
`
`identical finger-receiving apertures, so it offers straw-man arguments.
`
`12
`
`
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`First, Derrick reproduces the attorney-modified drawing from its Preliminary
`
`Response to argue that hypothetical fingers would pierce the screen sub-assembly.
`
`Resp. 31-32. However, the Board noted that Claim 6 does not recite any particular
`
`type of finger. Decision 18. A POSITA would use fingers that are compatible with
`
`the finger-receiving apertures of Bakula ’236. Ex. 2017 at 84:16-20.
`
`Derrick also argues incorrectly that Axon does not assert that the finger-
`
`receiving apertures in Bakula ’236 are “capable of receiving fingers for mounting
`
`as described in the ’971 Patent.” Resp. 32-33. Although “mounting as described in
`
`the ’971 Patent” is not a limitation, the finger-receiving apertures of Bakula ’236
`
`would perform the same as those of the ’971 Patent because the apertures are
`
`identical. When Derrick asked Mr. Cagle what would happen when the
`
`Bakula ’236 screen was tensioned, he testified that he would “expect it to work.”
`
`Ex. 2017 at 85:15-20.
`
`Finally, Derrick misrepresents Axon’s position by arguing that Mr. Cagle
`
`“did not know what would motivate a person of skill in the art to modify the
`
`Bakula ’236 screen to accommodate the finger” or that “there would have been no
`
`motivation to reposition the screen material.” Resp. 34-35. Axon does not argue
`
`Bakula ’236 must be modified to establish “finger-receiving apertures” because the
`
`reference discloses this element without any modification. Ex. 2017 at 170:7-13.
`
`Claim 6 does not recite a specific type of finger. Decision 18. There is no need to
`
`“reposition” the screen material of Bakula ’236 to establish this element.
`
`13
`
`
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`2.
`Bakula ’236 discloses “a second end of the first/second side
`portion spaced away from and overlying the central portion
`and the first/second series of finger-receiving apertures.”
`
`The Board correctly found that Bakula ’236 discloses “a second end of the
`
`first/second side portion spaced away from and overlying the central portion and
`
`the first/second series of finger-receiving apertures.” Decision 20-23.
`
`Axon did not concede that Bakula ’236 lacks this element, as Derrick
`
`implies. Resp. 36. Axon’s Petition showed Bakula ’236 discloses this element on
`
`pages 32-34 and 36-37:
`
`
`Bakula ’236 discloses this element.3 Derrick’s relies on its improper construction
`
`that would “require each of the second ends to be spaced entirely away from the
`
`central portion of the plate.” Resp. 36-37 (emphasis in original). 4 This
`
`
`3
`Claim 6 defines the finger-receiving apertures as part of the central portion:
`“the central portion of the plate including a first series of finger-receiving
`apertures . . . .”
`
`4
`
`Derrick repeats the argument from its Preliminary Response that the Board
`rejected. Compare Prelim. 37-39 with Resp. 36-37.
`
`14
`
`
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`construction is unreasonable because it excludes the only embodiment, which
`
`shows part of the “second end” in contact with the central portion. Section
`
`III(B)(3), supra. Derrick does not dispute that Bakula ’236 discloses this element if
`
`the Court declines to adopt Derrick’s construction.5
`
`3.
`
`It would have been obvious to modify Bakula ’236 to attach
`the screen sub-assembly to the plate flanges.
`
`The Board correctly found that it would have been obvious to modify
`
`Bakula ’236 such that the second ends “extend[] towards and attach[] to the first
`
`[or second] plate flange.” Decision at 23-25.
`
`Remarkably, Derrick does not dispute the basis to modify Bakula ’236. See
`
`Resp. 38-40. The Board found a POSITA would have been motivated to attach the
`
`screen sub-assembly to the plate flanges because (1) this was a conventional way
`
`of manufacturing screens and (2) attaching the screen sub-assembly to the flange
`
`would better secure it to the plate. Decision 23 (citing Pet. 34 and Ex. 1003 ¶ 205).
`
`Derrick does not dispute either finding. Neither of Derrick’s experts even
`
`addresses this element for Ground 1.
`
`Derrick’s simply argues, incorrectly, that Mr. Cagle’s “true motivation” to
`
`modify Bakula ’236 arose from hindsight. Resp. 38-39. Ignoring the evidence that
`
`
`5
`Derrick’s argument that modifying the screen “to space these alleged second
`ends of the screen sub-assembly side portions away from the central portion”
`would interfere with the operation of the mounting drawbars also assumes
`the improper construction. Resp. 38.
`
`15
`
`
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`Axon cited and the Board adopted, Derrick relies on objectionable (and compound)
`
`questions where it asked Mr. Cagle if he sought out missing elements in the prior
`
`art. Id. at 39. Because this is the process used to perform an obviousness analysis
`
`by experts and examiners alike, Mr. Cagle confirmed that he did.
`
`This analysis was proper. “Any judgment on obviousness is in a sense
`
`necessarily a reconstruction based on hindsight reasoning, but so long as it takes
`
`into account only knowledge which was within the level of ordinary skill in the art
`
`at the time the claimed invention was made and does not include knowledge
`
`gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re
`
`McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Mr. Cagle considered only the
`
`knowledge of one having ordinary skill in the art at relevant time and provided
`
`motivations to combine that Derrick does not dispute. Ex. 1003 ¶ 205. Mr. Cagle
`
`confirmed a POSITA would have thought of the proposed modification even if
`
`they had never seen the ’971 Patent:
`
`Q. Why would a person of ordinary skill at the time of
`the invention been motivated to extend the screen sub-
`assembly and attach it to the flange?
`
`A. Screens that -- that have the sub-assembly taken inside
`the hook don’t pull out as much out of the hook and the
`screens last longer.
`
`Q. Okay.
`
`A. And it’s been done that way for decades.
`
`Q. And would a person of skill in the art have thought to
`do that --
`
`16
`
`
`
`Petitioners’ Reply to Patent Owner’s Response
`A. Yes.
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`
`Q. -- if they had never seen the ’971 patent?
`
`A. Yes.
`
`Ex. 2017 at 171:2-14. Mr. Cagle did not use impermissible hindsight.
`
`B. Ground 2: Claim 6 is obvious over Bakula ’236 in view of
`Bakula ’797.
`
`The Board correctly found that Bakula ’797 discloses the only element
`
`missing from Bakula ’236 and a POSITA would have been motivated to combine
`
`the references. Decision 31-33.
`
`1.
`
`Derrick relies on its flawed arguments for the elements
`disclosed by Bakula ’236.
`
`For the elements disclosed by Bakula ’236, Derrick offers the same
`
`arguments based on its constructions. Resp. 41. The Board should reject these
`
`arguments for the reasons in Section IV(A)(1)-(2), supra.
`
`2.
`
`Derrick does not dispute that Bakula ’797 discloses the
`missing element or the motivation to combine identified by
`the Board.
`
`Derrick does not dispute that Bakula ’797 discloses the element “extending
`
`toward and attached to the first/second plate flange.” Nor does Derrick dispute the
`
`motivation to combine the Board found. Derrick simply repeats its accusation of
`
`hindsight. Resp. 42. Mr. Cagle did not use improper hindsight. Section IV(A)(3),
`
`supra. The obviousness combination of Bakula ’236 and Bakula ’797 combines
`
`known elements for reasons Derrick does not dispute.
`
`17
`
`
`
`IPR2016-00642
`U.S. Patent No. 7,228,971
`Petitioners’ Reply to Patent Owner’s Response
`Finally, Derrick argues that the combination “continues to contact the central
`
`portion of the plate 131 between the alleged finger-receiving apertures and the
`
`plate flange.” Resp. 43. This repeats the argument based on Derrick’s unreasonable
`
`construction that requires the second ends to be spaced entirely away from the
`
`central portion of the plate. Section IV(A)(2), supra.
`
`C. Ground 3: Claim 6 is obvious over Bakula ’236 in view of Rafton.
`Axon identified Ground 3 as an alternative if “screen sub-assembly”
`
`includes impermeable (non-screening) portions. To be clear, Axon does not
`
`believe this is correct. However, Derrick’s infringement contentions interpret this
`
`element broadly, and for that reason, Axon presented this alternative ground of
`
`invalidity. The Board found Claim 6 would have bee
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