`Tel: 571-272-7822
`
`Paper 12
`Entered: January 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DAKTRONICS, INC.,
`Petitioner,
`
`v.
`
`OLAF SÖÖT DESIGN, LLC,
`Patent Owner.
`
`Case IPR2016-01369
`Patent 6,520,485 B1
`
`Before JOSIAH C. COCKS, NEIL T. POWELL, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Not Instituting Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`
`Daktronics, Inc. (“Daktronics”) filed a corrected petition (Paper 7,
`
`“Pet.”) to institute an inter partes review of claims 21, 23, 24, and 26–28
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`(the “challenged claims”) of U.S. Patent No. 6,520,485 B1 (Ex. 1001, “the
`
`’485 patent”). 35 U.S.C. § 311. Daktronics also relies upon expert
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`IPR2016-01369
`Patent 6,520,485 B1
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`testimony from Mr. William B. Gorlin (Ex. 1004). Olaf Sööt Design, LLC
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`(“OSD”) timely filed a Preliminary Response, Paper 11 (“Prelim. Resp.”)
`
`that is supported by a declaration from Olaf Sööt (Ex. 2001). Institution of
`
`an inter partes review is authorized by statute when “the information
`
`presented in the petition filed under section 311 and any response filed under
`
`section 313 shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Based on our review of
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`the record, we conclude that Daktronics has failed to demonstrate that it is
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`reasonably likely to prevail with respect to any of its challenges.
`
`Daktronics contends that the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 14–50):
`
`References
`
`Basis Claims challenged
`
`German Patent Publication No. DE 4204153
`(Ex. 1007 with certified translation at
`Ex. 1008, “Geiss”)
`
`§ 102
`
`21, 23, 24, and 26–
`28
`
`Geiss
`
`§ 103
`
`21, 23, 24, and 26–
`28
`
`Geiss and UK Patent Application No. GB
`2296481 (Ex. 1005, “Barnet”)
`
`§ 103
`
`21, 23, 24, and 26–
`28
`
`Geiss and German Patent Publication No.
`DE 3737612 (Ex. 1009 with certified
`translation at Ex. 1010, “Bittner”)
`
`§ 103
`
`21, 23, 24, and 26–
`28
`
`Barnet and U.S. Patent No. 652,893
`(Ex. 1006, “Herdman”)
`
`§ 103
`
`27 and 28
`
`Barnet, Bittner, and Geiss
`
`§ 103
`
`21, 23, 24, and 26
`
`Barnet, Bittner, and Herdman
`
`§ 103
`
`21, 23, 24, and 26
`
`2
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`IPR2016-01369
`Patent 6,520,485 B1
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`References
`
`Basis Claims challenged
`
`German Patent Publication No. DE
`19512899 (Ex. 1014 with certified
`translation at Ex. 1015, “Fajtak”) and U.S.
`Patent No. 1,110,248 (Ex. 1012, “Atwood”)
`
`Fajtak and Herdman
`
`All obviousness combinations referenced
`above in further view of U.S. Patent No.
`2,942,879 (Ex. 1011, “Izenour”)
`
`§ 103
`
`21, 23, 24, and 26–
`28
`
`§ 103
`
`21, 23, 24, and 26–
`28
`
`§ 103
`
`24, 26, and 28
`
`Generally, OSD contends that the Petition should be denied in its
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`entirety. For the reasons described below, we decline to institute inter partes
`
`review of the challenged claims on any of the alleged grounds of
`
`unpatentability.
`
`B. RELATED PROCEEDINGS
`
`The parties identified as a related proceeding the co-pending district
`
`court proceeding of Olaf Sööt Design, LLC v. Daktronics Hoist, Inc. and
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`Daktronics, Inc., Case Number 1:15-cv-05024-RWS (S.D.N.Y.). Pet. 2–3;
`
`Paper 9, 2. The parties also identified two previously filed petitions for inter
`
`partes review involving the ’485 patent, IPR2015-00116 and -00117, for
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`which joint motions to terminate the proceedings were granted. Pet. 2–3;
`
`Paper 9, 2.
`
`C. THE ’485 PATENT
`
`The patent describes a winch for “raising and lowering objects, in
`
`particular, objects such as theater scenic elements, suspended from fly sets,
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`by failsafe motorized means.” Ex. 1001, 1:6–8. To aid us in describing the
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`subject matter of the ’485 patent, we refer to the colorized version of
`
`Figure 1 shown below.
`
`
`
`The colorized version of Figure 1 is a side view of an exemplary
`embodiment of the claimed winch system with some internal
`structures shown in dashed lines.
`
`Winch 1 includes grooved drum 11 (green) around which cables 50
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`wind and unwind to raise and lower objects. Id. at 3:53–55. Drum 11
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`(green) is rotatably supported near its ends by base 30 (orange) and rotated
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`via the combination of motor 38 and gear reducer 37 (teal). Id. at 3:55–59.
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`Cables 50 are guided from grooved drum 11 to those objects over sheaves 47
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`that are mounted on carriage 40 (violet). Id. at 4:7–11. A hub (blue) is non-
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`rotatably mounted on one end of drum 11 (green) and supported by bearing
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`39 (yellow) so that it can rotate freely within vertical member 31 (orange)
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`when drum 11 (green) rotates. The distal end of the hub (blue) carries an
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`internally threaded nut (blue) that mates with screw 51 (pink), which is non-
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`IPR2016-01369
`Patent 6,520,485 B1
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`rotatably secured to vertical member 41B (violet) of frame 41 (violet).
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`Accordingly, when drum 11 (green) and its hub (blue) rotates, the nut (blue)
`
`within the hub (blue) engages the threads on screw 51 (pink), which causes
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`carriage 40 (violet) and sheaves 47 (violet) to slide laterally relative to drum
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`11 (green) and base 30 (orange). Because the threads on screw 51 (pink)
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`and the grooves on drum 11 (green) have the same pitch, carriage 40 moves
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`laterally at the same rate at which cables 50 advance in the grooves on drum
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`11 to maintain a straight path for each cable 50 from its sheave 47 to drum
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`11. Id. at 4:55–60. As carriage 40 (violet) slides to the left from the position
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`shown in Figure 1, the distal end of screw 51 (pink) moves through the hub
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`(blue) into the hollow cavity within drum 11 (green).
`
`Carriage 40 is thus slidably mounted
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`to base 30. Slides 45 (yellow) are secured
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`to carriage 40 (violet) and guide the sliding
`
`of carriage 40 (violet) with respect to base
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`30 (orange) and drum 11 (green). Friction
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`between slides 45 (yellow) and base 30
`
`(orange) is reduced by bearings 35A, 35B
`
`(red), which are illustrated in the colorized
`
`version of Figure 3 reproduced at right,
`
`which is a cross section taken along line
`
`3A—3A of Figure 1. The colorized figure
`
`illustrates the relationships among slides 45
`
`(yellow), cylindrical linear bearing 35A
`
`(red), and flat linear bearing 35B (red).
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`Claims 21 and 27 are the independent claims among the challenged
`
`claims. Claims 23, 24, and 26 depend ultimately from claim 21, id. at 15:6–
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`28, and claim 28 depends from claim 27, id. at 16:1–4. Claim 21, which is
`
`illustrative, recites:
`
`21. A motorized fly system winch, drum and carriage
`combination for raising and lowering scenery, comprising:
`
`a) a support carriage and plural cable-guiding devices
`mounted on said carriage,
`
`b) a base member having first and second end portions,
`
`c) an elongated hollow drum having cable grooves and
`having a longitudinal axis and rotatably mounted on the
`base member and plural cables for simultaneously
`winding and unwinding the cables on or off the drum
`grooves when the drum is rotated, said cables passing
`from the outside of the drum over, respectively, the
`cable-guiding devices for supporting scenery such that
`rotation of the drum causes the scenery to move up and
`down,
`
`d) first means for slideably mounting the base member to
`the carriage,
`
`e) said drum having at a first end a hollow hub rotatably
`journalled at the first end portion of the base member,
`
`f) second means for rotating the drum relative to the base
`member such that the base member with its drum and
`the carriage can move with respect to each other in
`synchronism with the rotation of the drum to control
`the cable runs to the plural cable-guiding devices,
`respectively,
`
`g) said second means comprising an elongated screw
`having a first end non-rotatably mounted to the carriage
`and a second end threadingly engaging a like threaded
`member non-rotatably connected to the drum and
`axially aligned with the hollow hub and the hollow
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`drum, said screw extending mainly outside of the
`hollow drum when the cables are wound up on or
`unwound from the drum and the scenery is in its
`respective up or down position,
`
`h) said hollow hub and hollow drum being sized such that
`the screw can move into the hollow hub to allow the
`hollow drum to receive the screw as the cables unwind
`from or wind up on the drum as the scenery moves to
`its respective down or up position.
`
`Id. at 14:34–15:5.
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`“A claim in an unexpired patent that will not expire before a final
`
`written decision is issued shall be given its broadest reasonable construction
`
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`
`2144–46 (2016) (affirming that USPTO has statutory authority to construe
`
`claims according to Rule 42.100(b)). When applying that standard, we
`
`interpret the claim language as it would be understood by one of ordinary
`
`skill in the art in light of the specification. In re Suitco Surface, Inc., 603
`
`F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we 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 skill in the art in
`
`question.’”). Only terms which are in controversy need to be construed, and
`
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`Daktronics proposes interpretations for first, second, and third means,
`
`which the parties agree are recited in means-plus-function format under
`
`35 U.S.C. § 112, ¶ 6. Pet. 8–9; Prelim. Resp. 17–19. OSD disputes
`
`Daktronics’ proposed interpretation of the “second means,” Prelim.
`
`Resp. 18–19, but accepts Daktronics’ proposed interpretations of the “first
`
`means,” id. at 17, and “third means,” id. at 19. OSD also proposes
`
`interpretations of “base member,” id. at 16–17, and “hollow hub,” id. at 19–
`
`20.
`
`We do not consider it necessary to construe any terms other than the
`
`“first means for slideably mounting the base member to the carriage,” which
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`is recited in independent claims 21 and 27 and, thus, all claims at issue. We
`
`begin with the statutory framework in 35 U.S.C. § 112 for interpreting an
`
`element in a claim written in a means-plus-function form, which reads:
`
`An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding
`structure, material, or acts described in the specification and
`equivalents thereof.
`
`35 U.S.C. § 112, ¶ 6.1
`
`The function performed by the “first means” is “slideably mounting
`
`the base member to the carriage.” The Specification describes the structures
`
`that perform this function as follows:
`
`
`1 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-
`designated 35 U.S.C. § 112 ¶¶ 1, 2, and 6 as 35 U.S.C. §§ 112(a), (b),
`and (f). Leahy–Smith America Invents Act, PL 112-29, September 16, 2011,
`125 Stat 284, 296 (2011). Because the filing date of the application leading
`to the issuance of the ’485 patent predates September 16, 2012 (effective
`date), we will refer to the pre-AIA version of 35 U.S.C. § 112.
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`The carriage 40 is slideably connected to base 30 through slides
`45, which are rigidly fastened to the frame 41. The slides 45
`engage linear bearings 35A and 35B, mounted into the top
`portions of the base 30 vertical members 31 and 32.
`
`Ex. 1001, 5:48–52.
`
`The Specification further describes bearings 35A, 35B as follows,
`
`with references to the colorized version of Figure 3 that is a cross section
`
`view taken along line 3A—3A of Figure 1 and is reproduced below right:
`
`A cylindrical linear bearing 35A,
`[red] which
`is
`self-aligning,
`engages a cylindrical portion of
`slide 45 [yellow]. A flat linear
`bearing 35B [red] engages a fiat
`portion of slide 45 [yellow]. The
`entire carriage 40 [violet] or base
`30 [orange] (depending on the
`winch 1 configuration) can be
`slideably supported, vertically and
`horizontally, by
`the
`two self-
`aligning linear bearings 35A [red]
`at opposite ends and vertically by
`the one fiat linear bearing 35B [red]
`at one of the ends. . . . Since the flat
`linear bearing 35B [red] is free to
`move horizontally in FIG. 3, in a
`direction perpendicular to its travel
`(in and out of the plane of the
`drawing of FIG. 3), its use, together
`with
`the
`two
`self-aligning
`cylindrical linear bearings 35A [red], eliminates the need for
`precise alignment of slides 45 [yellow]. This self-alignment
`feature derives from the resultant 3-point support of the carriage,
`which causes the carriage to “float” horizontally and also have a
`small amount of vertical movement. This is an important feature
`of the invention. If a second flat linear bearing 35B [red] is used
`at the base overspeed brake end member 31, its purpose would
`be secondary safety and it can be fitted over slide 45 with loose
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`tolerances. Stated another way, the cylindrical linear bearing
`35A [red] supports the carriage or drum in all directions
`perpendicular to the drum axis (but not parallel to the drum axis),
`whereas the flat linear bearing 35B [red] supports the carriage or
`drum in only one direction perpendicular to the drum axis. So,
`for example, when the drum is arranged horizontally, the support
`is in the vertical direction, and when the drum is arranged
`vertically, the support is in the horizontal direction.
`
`Id. at 6:13–46 (with added references to the colors used in the colorized
`
`version of Figure 3).
`
`Based on our review of these portions of the Specification, we
`
`determine that the Specification describes two embodiments of the “first
`
`means.” One embodiment includes two slides 45 mounted to frame 41 at
`
`spaced apart locations as shown in Figure 1, a cylindrical linear bearing 35A
`
`to mate with each of the two slides 45, and one flat linear bearing 35B that
`
`mates with slide 45 closest to the non-driven end of drum 11, see id.
`
`at Fig. 3. The second embodiment further includes a second flat linear
`
`bearing 35B that mates with slide 45 mounted closest to the driven end of
`
`drum 11. The scope of the “first means” encompasses not only these two
`
`embodiments but also any equivalents to those embodiments. 35 U.S.C.
`
`§ 112, ¶ 6.
`
`B. THE CHALLENGES TO THE CLAIMS
`
`Daktronics challenges the patentability of claims 21, 23, 24, and 26–
`
`28 on the grounds that the claims are either anticipated or obvious in light of
`
`various combinations of seven prior art references including: Geiss, Barnet,
`
`Bittner, Herdman, Fajtak, Atwood, and Izenour. Pet. 15–50.
`
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
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`(Fed. Cir. 1987). The Supreme Court in KSR International Co. v. Teleflex
`
`Inc., 550 U.S. 398 (2007), reaffirmed the framework for determining
`
`obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966).
`
`The KSR Court summarized the four factual inquiries set forth in Graham
`
`that we apply in determining whether a claim is reasonably likely to be
`
`unpatentable as obvious under 35 U.S.C. § 103(a) as follows:
`
`(1) determining the scope and content of the prior art, (2) ascertaining the
`
`differences between the prior art and the claims at issue, (3) resolving the
`
`level of ordinary skill in the pertinent art, and (4) considering objective
`
`evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406.
`
`With these standards in mind, we address Daktronics’ challenges below.
`
`1. Standards for a Petition
`
`A petitioner for inter partes review must identify “in writing and with
`
`particularity, each claim challenged, the grounds on which the challenge to
`
`each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3). The petition must also
`
`“specify where each element of the claim is found in the prior art patents or
`
`printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). When a
`
`petition fails to meet these standards, the petitioner fails to establish a
`
`reasonable likelihood that at least one claim is unpatentable, and an inter
`
`partes review may not be instituted. 35 U.S.C. § 314(a).
`
`2. The Alleged Teaching of the “First Means” by the Prior Art
`
`Among the seven prior art references forming the basis of Daktronics’
`
`challenges to the claims, Daktronics contends that each of Geiss, Barnet,
`
`Bittner, and Fajtak describes the “first means for slideably mounting the base
`
`member to the carriage.” Pet. 16–17, 19, 31, and 42–43.
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`As explained in Part II.A above, the Specification of the ’485 patent
`
`describes two embodiments of the “first means.” One embodiment includes
`
`two slides 45 mounted to frame 41 at spaced apart locations as shown in
`
`Figure 1, a cylindrical linear bearing 35A to mate with each of the two slides
`
`45, and one flat linear bearing 35B that mates with slide 45 closest to the
`
`non-driven end of drum 11, see id. at Fig. 3. The second embodiment
`
`further includes a second flat linear bearing 35B that mates with slide 45
`
`mounted closest to the driven end of drum 11. The scope of the “first
`
`means,” which is recited in all challenged claims, encompasses these two
`
`embodiments and their respective equivalents. 35 U.S.C. § 112, ¶ 6.
`
`Mr. Gorlin testifies regarding his understanding of scope of means-
`
`plus-function elements of patent claims as follows: “it is my understanding
`
`that the broadest reasonable interpretation of a ‘means-or-step-plus-function’
`
`claim term is the structure, material or act described in the specification as
`
`performing the entire claimed function and equivalents to the disclosed
`
`structure, material or act.” Ex. 1004 ¶ 33. Thus, he, and Daktronics by
`
`implication, correctly recognize that a party may demonstrate that the prior
`
`art teaches a means-plus-function element by relying upon evidence that the
`
`prior art teaches either the same structure shown in the patent or an
`
`equivalent structure. Nevertheless, neither Mr. Gorlin nor Daktronics
`
`addresses whether any of the structures of Geiss, Barnet, Bittner, and Fajtak
`
`allegedly correlating to the “first means” constitute equivalents to the
`
`structures described in the ’485 patent. Without such evidence, Daktronics’
`
`likelihood of successfully demonstrating that the prior art discloses the
`
`claimed “first means” necessarily rests upon whether any of the prior art
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`describes the same structures for “slideably mounting” that are set forth in
`
`the Specification of the ’485 patent.
`
`For the reasons expressed below, we conclude that Daktronics has
`
`failed to demonstrate that any of Geiss, Barnet, Bittner, and Fajtak disclose
`
`the same structures that the ’485 patent describes for “slideably mounting
`
`the base member to the carriage.” We also conclude that Daktronics has
`
`failed to proffer evidence that the prior art structures it identified as
`
`“slideably mounting the base member to the carriage” are equivalent to the
`
`structures described in the ’485 patent. Without such evidence, the Petition
`
`does not establish a reasonable likelihood that Daktronics would prevail in
`
`demonstrating that any of the challenged claims are unpatentable.
`
`a) Geiss
`
`Daktronics contends that Geiss describes the “first means” in the form
`
`of a “sliding seat” citing testimony from Mr. Gorlin, id. at 16–17 (citing
`
`Ex. 1004 ¶ 52, 93), and portions of Geiss itself, id. at 42–43 (citing
`
`Ex. 1008, 6:3–4 (sic, 4:3–4)). Mr. Gorlin testifies that “Geiss teaches that
`
`the shaft 18 (which corresponds to the base member of Claim 27) is
`
`‘connected in the sliding seat to the shaft of a drive unit.’” Ex. 1004 ¶ 93
`
`(quoting Ex. 1004, 6:3–4 (sic, 4:3–4)). Daktronics identifies the shaft 18 of
`
`Geiss as the claimed “base member” and frame 16 of Geiss as the
`
`“carriage.” Pet. 16.
`
`Even if we were to accept that Daktronics correctly identifies the
`
`unnumbered structure shown at the bottom of Geiss’s Figure 1 as a “sliding
`
`seat,” neither Geiss nor Daktronics explains how this “sliding seat” slideably
`
`mounts shaft 18 (the alleged “base member”) to frame 16 (the alleged
`
`“carriage”). Accordingly, we conclude that Daktronics has failed to
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`establish that the “sliding seat” of Geiss performs the function of “slideably
`
`mounting the base member to the carriage.” Daktronics similarly fails to
`
`explain whether the sliding seat constitutes slide 45 or incorporates bearings
`
`of any kind, much less the linear bearings 35A, 35B. Moreover, Daktronics
`
`neither contends nor proffers evidence to establish that Geiss’s structures are
`
`equivalent to those of the ’485 patent. For all these reasons, Daktronics fails
`
`to establish that Geiss’s sliding seat is the claimed “first means.”
`
`b) Barnet
`
`Daktronics contends that Barnet describes the “first means” because
`
`Barnet describes a “carriage 36 [that] is supported for longitudinal
`
`movement with respect to the frame 12 by means of four flanged wheels 44
`
`which are received within the channels 28 and 30.” Id. at 43. Daktronics
`
`also cites Mr. Gorlin’s testimony that essentially relies upon the same
`
`disclosure in Barnet. Id. at 19 (citing Ex. 1004 ¶¶ 54, 118).
`
`Daktronics makes no attempt to establish that flanged wheels 44
`
`received within channels 28 and 30 of Barnet are the same structures as the
`
`slides 45 and bearings 35A, 35B of the ’485 patent. Rather, at most, we
`
`interpret Daktronics’s contention as merely that Barnet’s wheels and
`
`channels permit the carriage to move longitudinally with respect to the frame
`
`(the alleged “base member”). The function recited in the “first means”
`
`requires, however, that the base member and carriage be slideably mounted
`
`to each other, not just be able to move longitudinally relative to each other.
`
`Accordingly, we conclude that Daktronics fails to establish that Barnet
`
`describes the claimed “first means.”
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`c) Bittner
`
`Daktronics contends that Bittner describes the
`
`claimed “first means” as follows: “The lengthwise
`
`movable carriage 20 [is] formed by two pipe pieces 23,
`
`24, which can move on the guide rods 21, 22. To lessen
`
`the sliding friction, bearings (not shown) can be
`
`provided between the pipe pieces and the guide rods.”
`
`Pet. 43 (quoting Ex. 1010, 3:26–29). Bittner’s Figure 3,
`
`reproduced at right, is a partial side view of Bittner’s
`
`winch that illustrates the relationship between pipe
`
`pieces 23, 24 and guide rods 21, 22. From this figure,
`
`Bittner describes guide rods 21, 22 that are nested within pipes 23, 24.
`
`Bittner mentions without illustrating “bearings” between guide rods 21, 22
`
`and pipes 23, 24. Ex. 1010, 3:28–29. However, Bittner provides no further
`
`explanation of the types of bearings that may be employed.
`
`Daktronics fails to explain how Bittner’s combination of guide rods
`
`21, 22 with pipes 23, 24 is the same structure as the slides 45 and linear
`
`bearings 35A, 35B of the ’485 patent. Despite Bittner’s brief reference to
`
`“bearings,” Daktronics fails to proffer evidence probative of how an
`
`ordinarily skilled artisan would have read Bittner’s description of bearings.
`
`Accordingly, we conclude that Daktronics has failed to establish that Bittner
`
`describes the claimed “first means.”
`
`d) Fajtak
`
`Daktronics contends that Fajtak describes the claimed “first means” as
`
`follows:
`
`The invention is characterized in that the frame is formed
`by a beam (1), . . . and the cable winding unit (4) is formed by a
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`Patent 6,520,485 B1
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`hook-shaped beam (5) with permanently installed deflection
`rollers (6), which is moved in the axial direction by a threaded
`spindle (7) lying in a prolongation of the axle of the cable drum
`(2) and led on sliding rails on the beam (1) on the side opposite
`the threaded spindle.
`
`Pet. 42 (quoting Ex. 1015, 2:17–22). These
`
`structures are shown in Figure 1 of Fajtak, which is a
`
`side view of Fajtak’s winch and reproduced in
`
`pertinent part at right. Daktronics also contends that
`
`Fajtak describes the “first means” in the form of
`
`sliding rails 92 as follows: “The threaded spindle (7)
`
`engages the shorter leg of the beam (5), while the
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`longer leg in this case is configured as a sliding rail
`
`on the side facing the motor and is led by this on the
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`frame or on the bearing of the cable drum (2).”
`
`Pet. 31 (citing Ex. 1015, 3:9–12). Fajtak does not
`
`mention any use of bearings in connection with
`
`sliding rails 9. Moreover, Fajtak’s Figure 1 provides
`
`very little, if any, detail regarding the configuration
`
`of its “sliding rails.”
`
`Daktronics fails to explain how Fajtak’s sliding rails 9 constitutes the
`
`same structure as slides 45 with cylindrical linear bearings 35A and flat
`
`linear bearings 35B of the ’485 patent. Fajtak does not expressly mention
`
`bearings of any type used in connection with sliding rails 9. Furthermore,
`
`Daktronics proffers no evidence on the types of bearings, if any, that an
`
`ordinarily skilled artisan would consider to have been implicitly described
`
`
`2 Fajtak refers to its sliding rails as element 9 in claim 1. Ex. 1015, 5:9.
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`by Fajtak. Daktronics also proffers no evidence that Fajtak’s sliding rails 9
`
`are equivalent to the structures for “slideably mounting the base member to
`
`the carriage” that are described in the ’485 patent. Accordingly, we
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`conclude that Daktronics has failed to establish that Fajtak describes the
`
`claimed “first means.”
`
`C. CONCLUSION
`
`Both independent claims 21 and 27 among the challenged claims, and,
`
`therefore, all challenged claims recite the same “first means for slideably
`
`mounting the base member to the carriage.” Of the seven prior art
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`references that Daktronics relies upon as the basis of its challenges to the
`
`claims, it relies upon four as teaching the claimed “first means.” For the
`
`reasons explained in Part II.B.2 above, we have concluded that Daktronics
`
`has failed to adduce evidence to establish that any of these four references
`
`teach the claimed “first means.” For us to be authorized to institute an inter
`
`partes review under 35 U.S.C. § 314(a), Daktronics must present such
`
`evidence in the Petition, 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).
`
`Because Daktronics has not done so, we deny the request for inter partes
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`review.
`
`III. ORDER
`
`For the reasons given, it is:
`
`ORDERED that inter partes review is not instituted with respect to
`
`Daktronics’ challenges that claims 21, 23, 24, and 26–28 are unpatentable.
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`IPR2016-01369
`Patent 6,520,485 B1
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`PETITIONER:
`
`Russell T. Wong
`James H. Hall
`BLANK ROME, LLP
`DaktronicsIPR@BlankRome.com
`JHall@BlankRome.com
`
`PATENT OWNER:
`
`James M. Bollinger
`Louis J. DelJuidice
`TROUTMAN SANDERS LLP
`james.bollinger@troutmansanders.com
`louis.deljuidice@troutmansanders.com
`
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