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`Paper 6
`Filed: February 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`E. MISHAN & SONS, INC.,
`PETITIONER,
`
`V.
`
`AVENUE INNOVATIONS, INC.,
`PATENT OWNER.
`
`CASE IPR2017–00140
`PATENT 6,340,189
`
`AVENUE INNOVATIONS, INC.’S PRELIMINARY RESPONSE
`37 C.F.R. § 42.107
`
`

`

`IPR2017–00140
`
`Patent 6,340,189
`
`TABLE OF CONTENTS
`I. INTRODUCTION .................................................................................................. 1
`A.
`Patent-at-Issue ....................................................................................... 1
`B.
`Petitioner’s Impermissible “Shortcuts” ................................................. 2
`C.
`Embodiments Illustrating Claim Limitations ........................................ 3
`1. First Embodiment ................................................................ 3
`2. Second through Fourth Embodiments.................................. 4
`3. Fifth Embodiment ............................................................... 5
`4. Sixth Embodiment ............................................................... 6
`5. Petitioner’s Incorrect Positions ........................................... 7
`a. Claim 2 vis-à-vis 6th Embodiment ............................. 7
`b. Claim 1 relative to other Claims ................................. 8
`
`II. PETITIONER’S REFERENCES ARE MISSING MANY IMPORTANT
`LIMITATIONS .......................................................................................................... 8
`A. Van Meter—A Couch-Supported Standing Aid ................................... 8
`B.
`Bergsten—Bolt-On Standing Aide ..................................................... 10
`C.
`Stuhlmacher—Vehicle Door Alignment Device ................................ 12
`D.
`Baker—Tool for Opening Frozen Automobile Doors ........................ 13
`III. AVENUE INNOVATION’S PRODUCT DISCLOSURE ................................ 13
`IV. PERSON OF ORDINARY SKILL IN THE ART ............................................ 15
`V. CLAIM CONSTRUCTION ................................................................................ 15
`A. Non-Means-Plus-Function Terms ....................................................... 15
`B.
`Terms Governed by 35 U.S.C § 112 Para. 6 ....................................... 15
`1. “securement means” (claim 1) ........................................... 16
`2. “securement means” (claim 2) ........................................... 17
`3. “securement means” (claim 3) ........................................... 19
`4. “engagement means” (claim 20) ........................................ 20
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`IPR2017–00140
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`Patent 6,340,189
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`VI. VAN METER OR COMBINATIONS WITH VAN METER AS A PRIMARY
`REFERENCE FAILS TO ANTICIPATE OR RENDER OBVIOUS ..................... 21
`A. One Does Not Use Van Meter by Pulling Upward ............................. 21
`B.
`Van Meter Does Not Move in Operation ............................................ 23
`C.
`Petitioner Cannot Ignore the Preamble Limitations ............................ 25
`D.
`Petitioner Does Not Identify Corresponding Structure for
`“Removably Securing” ........................................................................ 27
`Petitioner Cannot Ignore Vehicle Limitations .................................... 28
`E.
`VII. STUHLMACHER DOES NOT SUPPORT OBVIOUSNESS ........................ 30
`A.
`Petitioner Fails to Do a Graham Analysis, Explaining
`Modifications and Motivation Therefor .............................................. 30
`1. Preamble Language Is Limiting in Claims 2–3
`and 20 ................................................................................... 30
`2. Petitioner Utterly Fails to Disclose How Van
`Meter Is Modified ................................................................. 30
`3. Describing Stuhlmacher’s Two Embodiments
`Does Not Portray the Undisclosed Van Meter-
`Stulhmacher Modified Device ............................................... 31
`a. Stuhlmacher’s First Embodiment Does Not
`Connect to The Striker and Blocks
`Entering/Exiting a Vehicle ........................................... 31
`b. Stuhlmacher’s Second Embodiment
`Remains Attached to the Door and Has a
`Hole or Arcuate Apertures Connection ........................ 32
`c. Simply Replacing the End of Van Meter’s
`Embodiment with Stuhlmacher’s Disclosed
`Lock Pin Connections Would Not Meet the
`Claim Language ........................................................... 34
`
`B.
`
`Petitioner Does Not Explain How Van Meter’s Structure
`Is Used to Meet the “Removably Securing” Limitation ..................... 35
`
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`IPR2017–00140
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`Patent 6,340,189
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`C.
`
`D.
`
`Petitioner’s Cross-Referencing Covers-Up Missing
`Analysis “Extension” and “Support” Limitations ............................... 36
`Petitioner Does Not Clarify How Van Meter-
`Stuhlmacher would Provide Support while Entering a
`Vehicle ................................................................................................. 38
`There is No Description How a Modified Device Still
`Meets the “Limited Movements” Limitations..................................... 39
`VIII. BAKER DOES NOT AMELIORATE VAN METER-STUHLMAKER
`ISSUES .................................................................................................................... 40
`A.
`The Additional Preamble Language Cannot Be Ignored .................... 40
`B.
`Van Meter in View Stuhlmacher or Stuhlmacher and
`Baker Do Not Teach Engagement of a Striker to Provide
`Required Functionality ........................................................................ 41
`Petitioner Does Not Show How a Baker Modified Device
`Still “Provides Support” ...................................................................... 45
`D. Dependent Claims 4–8 are Not Obvious ............................................. 46
`1. Petitioner Uses Deceptively Modified Image to
`Allege Functionality .............................................................. 47
`2. Petitioner Addresses Wrong Dimension ............................ 48
`IX. SUBSITUTING BERGSTEN FOR VAN METER AS A PRIMARY
`REFERENCE FAILS TO ANTICIPATE OR RENDER OBVIOUS ..................... 49
`A.
`Petitioner Fails to Conduct a Structural Equivalence
`Analysis ............................................................................................... 49
`Bergsten Is Only Used by Pulling Generally Up ................................ 53
`Bergsten-Stuhlmacher Does Not Teach “Limited
`Movement” .......................................................................................... 55
`1. Bergsten Does Not Suggest the Bar May Be
`Swung ................................................................................... 55
`2. Petitioner Does Not Explain Motivation to
`Modify, or How to Modify Bergsten’s Device in
`light of Stuhlmacher .............................................................. 56
`
`E.
`
`C.
`
`B.
`C.
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`Patent 6,340,189
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`X. BAKER IS IRRELEVANT AND NOT USEFUL ............................................. 59
`A.
`Petitioner Does Not Explain the Baker-Modified Device
`against Claim 3 and 20’s Limitations .................................................. 61
`Dependent Claims 4–8 ........................................................................ 62
`B.
`XI. CONCLUSION .................................................................................................. 62
`
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`IPR2017–00140
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`Patent 6,340,189
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`TABLE OF AUTHORITIES
`
`Federal Cases
`Asyst Techs., Inc. v. Empak, Inc.,
`268 F.3d 1364 (Fed. Cir. 2001)............................................................................ 18
`Chiuminatta Concrete Concepts v. Cardinal Indus.,
`145 F. 3d 1303 (Fed. Cir. 1998) ........................................................................... 28
`Deere & Co. v. Bush Hog, LLC,
`703 F. 3d 1349 (Fed. Cir. 2012) ........................................................................... 26
`Fresenius USA, Inc. v. Baxter Int'l, Inc.,
`582 F. 3d 1288 (Fed. Cir. Sept. 14, 2009) .................................................... 28, 50
`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004)............................................................................ 18
`Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l,
`222 F.3d 951 (Fed. Cir. 2000).............................................................................. 47
`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) (en banc) ............................................................. 28
`In Re Enhanced Sec. Research, LLC,
`739 F. 3d 1347 (Fed. Cir. Jan. 13, 2014) ............................................................. 46
`In re Schrieber,
`128 F.3d 1473 (Fed. Cir. 1997) .................................................................... 28, 29
`KS Himpp v. Head-Wear Tech., LLC,
`751 F.3d 1362 (Fed. Cir. May 27, 2014) ............................................................. 39
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................. 39
`Marrin v. Griffin,
`599 F.3d 1290 (Fed. Cir. 2010)............................................................................ 26
`Panduit Corp. v. Dennison Mfg. Co.,
`810 F.2d 1561 (Fed. Cir. 1987)............................................................................ 46
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987).............................................................................. 29
`Patent Office Proceedings
`Ex Parte Parks,
`No. 2010–000885 (BPAI Feb. 16, 2012) ............................................................. 43
`Johns Manville Corp. v. Knauf Insulation, Inc.,
`No. IPR2015–01633 (PTAB filed Jan. 4, 2016) (Paper 10) ................................ 31
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`No. IPR2014–01078 (PTAB Oct. 30, 2014) (Paper 17) ............................... 49, 50
`
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`IPR2017–00140
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`Patent 6,340,189
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`Statutes
`35 U.S.C. § 103 ........................................................................................................ 46
`35 U.S.C. § 112 ........................................................................................... 11, 15, 46
`Regulations
`37 C.F.R. §1.291(a) .................................................................................................. 13
`Other Authorities
`Manual of Patent Examining Procedure §§ 2121.04, 2125 ..................................... 43
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`
`
`CURRENT EXHIBIT LIST1
`
`No. Brief Description
`1001 U.S. Patent No. 6,340,189 to Pordy
`1002 U.S. Patent No. 6,340,189 File History
`1003 Declaration of David McLellan
`1004 U.S. Patent No. 5,295,498 to Van Meter
`(Device to aid persons rising form a seated position)
`1005 U.S. Patent No. 4,626,016 to Bergsten
`(Structural aid for facilitating egress from a vehicle)
`1006 U.S. Patent No. 5,331,837 to Stuhlmacher
`(Vehicle door alignment device)
`1007 U.S. Design Patent No. D344,665 to Baker
`(Tool for opening frozen automobile doors)
`1008 U.S. Patent No. 6,108,894 to Mizuki et al.
`(Method of making striker for automotive door latch apparatus)
`1009 U.S. Patent No. 5,979,951 to Shimura
`(Automotive slide door lock)
`1010 Summons in a Civil Action, Returned Executed (October 27, 2015)
`1011 1997 GM Factory Service Manual for the Chevrolet Corvette
`2001 April 23, 1999 Certified Invention Disclosure T0455461
`2002 ’189 Patent Assignment to Avenue Innovations
`2003 Petitioner Claim Construction Reply Brief, Avenue Innovations, Inc. v. E.
`Mishan & Sons, Inc, No. 1:16-cv-3086 (S.D.N.Y. Jan 27, 2017) (Doc. 61)
`2004 U.S. Patent No. 4,399,683 to Hunter
`(Vehicle door aligning tool)
`2005 Ex Parte Parks, No. 2010–000885 (BPAI Feb. 16, 2012)
`
`
`1 Relevant portions of patent owner’s exhibits highlighted to help Panel
`quickly locate cited sections.
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`vii
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`Patent 6,340,189
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`I. INTRODUCTION
`A. Patent-at-Issue
`Before filing the application for U.S. Patent No. 6,340,189 (“’189
`
`Patent”), patentee surveyed the available devices for helping persons get in and
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`out of a vehicle seat and determined that known solutions had problems: they
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`were designed to be permanently attached to the vehicle, only provided support
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`in one direction (i.e., lifting only), provided for securement to attachment points
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`that moved (i.e., doors) or could be broken (i.e., windows), interfered with the
`
`act of driving, failed to provide adequate leverage, structurally weakened the car
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`frame, and were not easily removable and movable. [Ex. 1001, cols. 1–3.]
`
`Patentee invented several designs to overcome
`
`these weaknesses that were easy to use,
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`portable, lightweight, secure, and practical. [Id.
`
`cols 3–4.] The main model is shown in Figure
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`1, annotated.2
`
`As seen, the patentee designed a handle
`
`to attach to a u-shaped door striker to assist a
`
`person from exiting a vehicle. However, this
`
`handle is cleverly designed to exhibit certain
`
`
`2 All color has been added to the figures unless otherwise noted.
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`
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`1
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`IPR2017–00140
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`Patent 6,340,189
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`functionality, captured in the claim limitations.
`
`B. Petitioner’s Impermissible “Shortcuts”
`E. Mishan & Sons, Inc.’s (“Petitioner’s”) primary strategy is to
`
`oversimplify the claims to the point of reading out the important limitations.
`
`Petitioner implements its scheme by first referring to its appendix, paraphrasing
`
`the limitations, and then showing that its characterization, rather than the actual
`
`claim language, is shown in the references. This obfuscation gets worse as
`
`Petitioner discusses subsequent non-identical limitations, layering cross-
`
`referencing upon cross-referencing.
`
`Additionally, Petitioner misidentifies structure corresponding to the ’189
`
`Patent’s “means for” terms, does not identify corresponding structure in its
`
`references, and applies modified references to one claim limitation without
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`showing the reworked reference would render the claim as a whole obvious.
`
`Patent Owner will carefully unwind Petitioner’s tangle, and illustrate how
`
`Petitioner does not show many limitations in its proffered references
`
`individually or together. But, unfortunately, there does not appear to be a way
`
`for the Panel to cut the Gordian knot with one missing limitation dispositive to
`
`all claims. To begin this disentangling process, one must understand the
`
`limitations in light of the ’189 Patent’s six embodiments as will now be
`
`discussed.
`
`
`
`2
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`Patent 6,340,189
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`C. Embodiments Illustrating Claim Limitations
`1. First Embodiment
`The ’189 Patent illustrates the first embodiment in Figures 1–7, and
`
`Figures 2–3 and 6 are reproduced below (Figure 3 rotated and shown in part).
`
`
`
`This embodiment is a shaft (10a),3 having a handle at one end (10b).4 [Ex.
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`1001, 6:64–17:14.] On the other end of the shaft is the securement/engagement
`
`means (10c), including a heel (26), two rubber pads (10m and 10n) and a tapered
`
`engaging member (10h). [Id.; see also id. at 9:4–8 & 10:1–8.]
`
`The tapered securement means is specially designed to exhibit certain
`
`
`3 I.e., an “elongate member.” Figures 2 and 6 shows the shaft with an
`optional telescoping inner tube (10f) and outer tube (10d).
`4 Claims 1–3 & 20 (“[A]n elongate member having a handle at one end
`suitable for being gripped by the individual.”).
`
`
`
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`3
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`IPR2017–00140
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`Patent 6,340,189
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`claimed properties, including functioning to (1) anchor the handle to the striker
`
`of the automobile (24);5 (2) allow movement only in a controlled range
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`approximately within a plane parallel to the fixed surface (22a) defined by the
`
`two different positions of Figures 2 and 6;6 (3) give a user support when pushing
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`down shown in Figure 2 (as in when a person is lowering themselves from a
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`SUV that sits high off the ground [id. 1:32–36] or assuming a standing position
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`from a seated position [id. 11:13–15]), plus provide support when pulling up as
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`shown in Figure 6 (as when a person is rotating to put his or her legs out of a car
`
`door before standing [id. 11:1–12]);7 and (5) be “removably secure” in that the
`
`device will not slip out when used, yet can simply be lifted to be repositioned or
`
`detached.8
`
`2. Second through Fourth Embodiments
`The second, third, and fourth embodiments, shown in Figures 8, 9, and 9B
`
`below, have different securement/engagement structures (shown in purple), but
`
`5 Claims 3 & 20 (“[Engaging/Cooperating with] the striker when the door
`is open.”).
`6 Claims 1–2 (“[S]ecurement means mounting said elongate member for
`limited movements within a plane substantially parallel to the fixed
`surface to at least one operative position most convenient to the user
`when pulling or pushing on said handle.”).
`7 Claims 1–2 (“[S]upport . . . . independently of whether the user pulls on
`said handle in a direction generally upwards or pushes on said handle in
`a direction generally downwards.”).
`8 Claims 2–3 (“[R]emovably securing.”).
`
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`4
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`Patent 6,340,189
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`also exhibit the claimed properties described with respect to the first
`
`embodiment.
`
`
`
`These securement mechanisms share the generally tapered form of the first
`
`embodiment and have heels of various shapes, but the mechanisms are
`
`additionally curved, indented and/or scalloped to help perform the recited
`
`functions. [Id. 11:31–34; 11:66–12:2.]
`
`3. Fifth Embodiment
`The fifth embodiment does not simply rest in the anchor, but is designed
`
`to snap into two posts of a u-shaped vehicle striker when the vehicle door is open
`
`as shown in Figure 10 below. [Id. 12:9–30.]
`
`
`
`While claims 1 and 2, that require limited movement when attached, would not
`
`
`
`5
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`Patent 6,340,189
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`encompass this securement means, this embodiment is still: (1) removably
`
`secure in that one only need push in the pawl (54) to release the device [id.]; and
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`(2) capable of providing support whether pushed generally downward or pulled
`
`generally upward [id.].
`
`4. Sixth Embodiment
`The sixth embodiment is shown in Figures 11 and 12 below, and, unlike
`
`the previous embodiments, is not “removably secure” as required by Claims 2
`
`and 3, id. 5:52–54 (the embodiment is “permanently mounted”), and “does not
`
`directly cooperate with the striker of the vehicle” (24) shown below the bar, id.
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`12:31–32; 12:50–51, as required by Claim 20.
`
`
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`This embodiment does deploy with limited movement parallel to the fixed
`
`surface (22a), and allows for pushing support generally downward via the pin
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`(68). It appears to contemplate pulling support generally upward via a
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`“resiliently biased pin” (66), approximately at the edge of the top dotted outline
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`
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`6
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`Patent 6,340,189
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`of the bar (not shown) that pops out when the device is extended. Id. 12:54–60.
`
`5. Petitioner’s Incorrect Positions
`a. Claim 2 vis-à-vis 6th Embodiment
`Having reviewed the embodiments and how they illustrate the claim
`
`limitations, it becomes clear that Petitioner is simply incorrect when it asserts
`
`that “[c]hallenged claims 1 and 2 cover the embodiment shown in this Figure
`
`[12].” [Pet. 3.] Of the claims at issue, the sixth embodiment (shown in Figures
`
`11–12) is only covered by claim 1, in that it does not require the device be
`
`removably secure (as do claims 2–3), or that it cooperate with an automobile
`
`striker (as does claim 20).
`
`This “misunderstanding” may be intentional, because Petitioner further
`
`attempts
`
`to bring
`
`the sixth embodiment
`
`into claim 2’s scope by
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`mischaracterizing the ’189 Patent’s prosecution history, stating that “[t]he
`
`applicant also made clear that the ‘permanently attached version of the device,’
`
`as shown in Figure 12, was covered by the claims.” [Pet. 5 (citing Ex. 1002, 86–
`
`109).] This is not true. The applicant simply indicated that the “permanently
`
`attached version of the device,” shown in Figure 12, disclosed the “limited
`
`movement” feature—which
`
`it does—and
`
`that
`
`this “feature
`
`is clearly
`
`distinguishable from the device disclosed in the applied [Bergsten] reference.”
`
`[Ex. 1002, 99 (July 2, 2001 Amendment).]
`
`
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`7
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`IPR2017–00140
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`Patent 6,340,189
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`b. Claim 1 relative to other Claims
`Petitioner is also incorrect that “Claim 1 is the broadest claim.” [Pet. 6.]
`
`Claim 1 is narrower than other claims in some respects, having the “limited
`
`movements” limitation not found in Claims 3 and 20, for example.
`
`II. PETITIONER’S REFERENCES ARE MISSING MANY IMPORTANT
`LIMITATIONS
`A. Van Meter—A Couch-Supported Standing Aid
`Van Meter illustrates and describes its device in Figure 1 as:
`
`[A] structural support to aid
`persons rising from a seated
`position which includes a
`handle 12 positioned at one
`end of an arm 14 . . . The
`device further
`includes a
`horizontal base 18 which is
`mounted beneath the legs 22 of the couch causing the
`device to stabilize under the weight of the couch. A
`vertical brace 24 is welded or otherwise secured along the
`outer edge of the horizontal brace and contains a hollow
`sleeve 26 having the lower end of the arm 14 secured
`therein.
`
`[Ex. 1004, 2:8–19 & Fig. 1.] Therefore, it appears that the securement means
`
`cooperating with the other end of the arm (14) with the handle (12) to secure the
`
`base (18) of the device “under the weight of the couch” is shown below in purple.
`
`[Id. Fig. 3., items 18, 24, 26, 28, and 32).]
`
`
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`8
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`Patent 6,340,189
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`Despite Van Meter’s straightforward disclosure, Petitioner ambiguously
`
`defines the structure in Van Meter that allegedly corresponds to the ’189 Patent’s
`
`“securement means,” and what Petitioner is alleging constitutes “a fixed surface
`
`proximate to a seat.” Sometimes Petitioner arbitrarily defines some end-portion
`
`of the arm (14) and the pin (28) as structure that corresponds to the ’189 Patent’s
`
`“securement means” (shaded in red below on left):
`Fig. 3
`
`Fig. 1
`
`
`
`[Pet. 21 (showing Ex. 1004, Figs. 1 & 3).]
`
`Note: Petitioner’s modified Figure 3 above is highly deceptive,
`with an undisclosed black line added to the end of the arm. Cf.
`Ex. 1004, Fig. 3:
`
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`Patent 6,340,189
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`Other times, Petitioner also includes the sleeve (26), identified with red shading
`
`and not included in the identified “fixed surface” shown in yellow in Figure 1
`
`(above right). And Petitioner quietly changes its dissection of Van Meter to suit
`
`its needs in an attempt to meet the claim limitations as discussed below.
`
`Under either of Petitioner’s stances; however, Van Meter does not show
`
`the limitation of “providing support to the user independently of whether the
`
`user pulls on said handle in a direction generally upwards or pushes on said
`
`handle in a direction generally downwards,” does not show “limited movements
`
`within a plane substantially parallel to the fixed surface,” and does not show
`
`“engaging/cooperating with the striker.”
`
`B. Bergsten—Bolt-On Standing Aide
`Bergsten is a large Allen wrench-esque bar that is inserted into a bracket
`
`installed into a hole drilled out of a door post as shown below.
`
`
`Bergsten is disclosed in the Background of the Invention section of the
`
`
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`10
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`Patent 6,340,189
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`’189 Patent. [Ex. 1001, 2:62–3:37.] The patentee also disclosed the Bergsten
`
`reference to the USPTO for examination during prosecution, before the first
`
`Office Action [Ex. 1002 at 76–78 (June 19, 2000 IDS)], which the examiner
`
`considered [Id. at 78 (Jan. 22, 2001 Examiner Initialed IDS)]. The Examiner
`
`actually rejected claims 1 and 2 as being anticipated by the Bergsten reference
`
`in the first Office Action. [Id. at 83–83 (Jan. 28, 2001 Office Action)].
`
`The examiner rejected the other independent claims for written description
`
`issues under § 112, but indicated that they were otherwise allowable, presumably
`
`because Bergsten was not designed
`
`to,
`
`and did not disclose,
`
`“engaging/cooperating with the striker.” [Id. at 84.]
`
`In response to the rejection, the patentee amended claims 1 and 2 “in order
`
`to more fully clarify the distinction between the two devices,” specifically
`
`adding the limitation “for limited movements within a plane substantially
`
`parallel to the fixed surface” [Id. at 99 (July 2, 2001 Amendment).]. The
`
`patentee explained how this limitation is met by reference to the disclosed
`
`figures, and how Bergsten does not meet this limitation:
`
`This [“limited movement” limitation] is exemplified, for
`example, in Figs. 2 and 6 of this application, in which two
`separate operative positions are shown . . . As is clear from
`Figs. 2 and 3 of the Bergsten patent, the handlebar 24 is
`rigidly or fixedly mounted within the sleeve 32 and the
`handlebar is not movable as contemplated by the present
`
`
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`11
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`Patent 6,340,189
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`invention in any planes. Instead, once the handlebar is
`inserted into the sleeve, it becomes fixed in place.
`
`[Id.] This amendment distinguished the ’189 Patent from, and overcame the
`
`rejection of these claims in light of, Bergsten. [Id. at 148–49 (Oct. 22, 2001
`
`Notice of Allowance).]
`
`Bergsten is a fixed bar without movement, does not engage a car striker,
`
`and is meant to be used only when a passenger pulls generally upward towards
`
`the car.
`
`C. Stuhlmacher—Vehicle Door Alignment Device
`Stuhlmacher is a lever that is attached to the door latch to allow a user
`
`standing outside of the car to bend and align the door hinges. Embodiments of
`
`the invention are shown in Figures 1 & 2:
`
`
`Stuhlmacher does not remedy any of Bergsten’s or Van Meter’s
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`deficiencies because Stuhlmacher is only concerned with its novel connection to
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`IPR2017–00140
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`Patent 6,340,189
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`a car door latch, and its connections to the car door striker on the vehicle (shown
`
`in Figure 2) were (1) well-known prior to Bergsten and Van Meter; (2) unable
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`to meet the basic functionality required by the claim limitations, such as
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`“providing support,” without connection to the door; and (3) would effectively
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`block entrance to, or exiting of, a vehicle.
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`D. Baker—Tool for Opening Frozen Automobile Doors
`Petitioner
`invokes Baker
`for
`limitations
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`requiring connection to a u-shaped striker, but Baker
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`is simply a large crowbar-type device, disclosed for its
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`ornamental pattern, with no mention or suggestion of
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`engaging a striker. What little is disclosed, such as Baker’s title, indicates that
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`it was meant to pry open a car door that has been frozen shut, and meant to be
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`used—like Stuhlmacher—by an individual standing outside of the vehicle.
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`III. AVENUE INNOVATION’S PRODUCT DISCLOSURE
`Petitioner’s prominent argument regarding the unusual procedural
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`prosecution in this case involving a “protest” filed by the Patent Owner during
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`the prosecution of the ’189 Patent [Pet. 1] is simply a distraction. Patent Owner
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`did disclose information regarding its own product, and it did ask the examiner
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`to “[p]lease consider the submitted references and information” [Ex. 1002, 113–
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`23 (Aug. 17, 2001 §1.291(a) disclosure)]; however, Patent Owner neither argued
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`that the claims were “invalid,” nor did the PTO agree as Petitioner asserts. [Pet.
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`IPR2017–00140
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`1, 4.]
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`Patent 6,340,189
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`Even with Avenue Innovations’ disclosure, the examiner only rejected
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`claim 23 (now claim 20), presumably because the disclosed product information
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`did not contain all the other claim limitations. [Ex. 1002, 127 (Sept. 21, 2001
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`Office Action).] Petitioner again provides the Panel with fictitious information
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`when it said “[t]he PTO rejected issued claims 7 and 20 based on a website
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`printout AI submitted.” [Pet. 5 (citing Ex. 1002, 124–30).] Even a cursory
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`review shows that claim 7 was rejected for an indefinite problem relating to
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`conflicting language in the claim from which it depends, a rejection completely
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`unrelated to any Avenue Innovations disclosure. [Ex. 1002 at 126.]
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`Patentee overcame the rejection of the single claim because he had filed
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`an invention disclosure on April 23, 1999, predating Patent Owner’s product,
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`and showing—not “alleging” [Pet. 5]—earlier reduction to practice. [Ex. 2001;
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`see also Ex. 1002, 136–47 (Oct. 12, 2001 Disclosure in Prosecution History) and
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`148–49 (Oct. 22, 2001 Notice of Allowance stating that “[t]he declaration under
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`37 CFR 1.132 filed 10/12/01 is sufficient to overcome the rejection of claim 23
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`based upon the Website print-out dated November 26, 1999.”).]
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`Seeing value, Avenue Innovations bought the ’189 Patent, which was
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`assigned to Avenue Innovations on January 8, 2003. [Ex. 2002.]
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`IPR2017–00140
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`Patent 6,340,189
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`Patent Owner generally concurs with Petitioner’s identification of a
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`person of ordinary skill in the art as having a Bachelor of Science degree in
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`Mechanical Engineering or a comparable degree, and two or more years of
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`industry experience [Pet. 6–7]; however, Patent Owner also notes that this
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`description is approximate, and a higher level of training or skill might make up
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`for less education, and vice-versa.
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`V. CLAIM CONSTRUCTION
`A. Non-Means-Plus-Function Terms
`Patent owner agrees that, for the purposes of this IPR, no construction of
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`any non-means-plus-function claim term is required. [Pet. 7.] However, Patent
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`Owner does note that some terms in the body of the claims are defined by the
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`preamble of the claims as antecedent definitions. Patent Owner will address
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`these antecedent definitions when discussing the limitations below.
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`B. Terms Governed by 35 U.S.C § 112 Para. 6
`Patent Owner agrees with Petitioner’s identification of the terms which
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`are subject to pre-AIA § 112 para. 6: “securement means” in claims 1–3 and
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`“engagement means” in claim 20.
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`However, Patent Owner identifies an additional function the securement
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`means provides in claims 1–2, and disagrees with the structure corresponding to
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`the means identified by Petitioner for the terms in claims 2–3 and 20.
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`IPR2017–00140
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`Patent 6,340,189
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`1. “securement means” (claim 1)
`Functions9
`cooperating with the other end of
`said elongate member for [1]
`securing said elongate member
`to a fixed surface proximate to a
`seat to enable said elongate
`member to extend away from the
`seat and
`[2] position said handle at a point
`remote from the seat during use
`[3] for providing support to the
`user independently of whether
`the user pulls on said handle in a
`direction generally upwards or
`pushes on said handle in a
`direction generally downwards
`[and]
`[4] mounting
`said elongate
`member for limited movements
`within a plane substantially
`parallel to the fixed surface
`
`Corresponding Structure
`Tapered engagement member, with or
`without rubber pads, and heel as
`described in 7:45–9:3 and shown in
`Figs. 1–3 & 6–7 (items 10c, 10h, 10j,
`10m & 10n, 26, 28, 30 & 32); or
`arcuate engagement member, toe, and
`heel as described in 11:30–50 and
`shown in Fig. 8 (items 10h, 10h' &
`10r, 26, & 26'); or annular indented or
`grooved member, boot and heel as
`described in 11:50–65 and shown in
`Fig. 9 (items 10h, 10h', 10s, 26, 26' &
`10t); or convex scalloped plate with
`heel as described in 11:66–12:30 and
`shown in Fig. 9a/b (portion opposite
`handle); or attachment device as
`described in 12:9–30 and shown in
`Fig. 10 (50, 52, 54, 54' & 56); or pin
`(fixed, pivoted, or resiliently biased)
`and locking articulated flat member as
`described in 12:31–67 and shown in
`Figure 12 (items 64, 66, 68 & 70); or
`their equivalents
`
`Broadly speaking, the securing means term in claim 1 provides four
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`functions: (1) securing the elongate member; (2) positioning the handle; (3)
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`providing pushing up and pulling down support; and (4) allowing the shaft
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`limited movement within the specified plane, each in the particularly claimed
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`manner. Petitioner does not capture the fourth function [Pet. 8], but it is clearly
`
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`9 Because the securement/engagement means performs multiple functions,
`Patent Owner has added numbering for clarification.
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`
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`IPR2017–00140
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`Patent 6,340,189
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`given: “said securement means mounting said elongate member for limited
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`movements within a plane substantially parallel to the fix