Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: May 8, 2017
`
`
`
`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 B1
`____________
`
`
`
`Before JOSIAH C. COCKS, KEVIN W. CHERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: May 8, 2017
`
`
`
`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 B1
`____________
`
`
`
`Before JOSIAH C. COCKS, KEVIN W. CHERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2017-00140
`Patent 6,340,189 B1
`
`
`I. INTRODUCTION
`E. Mishan & Sons, Inc. (“Petitioner”) filed a Petition for inter partes
`review of claims 1–8 and 20 of U.S. Patent No. 6,340,189 B1 (Ex. 1001,
`“the ’189 patent”). Paper 2 (“Pet.”). Avenue Innovations, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute only when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108. Upon consideration of the Petition and Preliminary
`Response, we conclude the information presented does not show a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any of claims 1–8 and 20 of the ’189 patent.
`
`A. Related Matters
`Petitioner and Patent Owner identify the following district court
`action as a related matter: Avenue Innovations, Inc. v. E. Mishan & Sons,
`Inc., No. 1:16-cv-03086-KPF (S.D.N.Y.). Pet. 82; Paper 4, 2.
`
`B. The ’189 Patent
`The ’189 patent relates to a “universal device for facilitating
`movement into and out of a seat.” Ex. 1001, Title. More specifically, the
`device facilitates and egress into and out of a vehicle seat having a pillar or
`post to one side. Id. at Abstract. The device includes an elongate member
`with a handle at one end and an engaging member at the other end “for
`securing the elongate member on a lateral surface of the post” near the user.
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`Id. Figures 2 and 6, as well as a portion of Figure 3, are reproduced below
`with Patent Owner’s annotations:
`
`
`
`Figure 2 depicts elongate member 10a, handle 10b, and opposing end 10c
`having a suitable securement element to secure end 10c to lateral surface 22a
`of post or pillar 22. Id. at 6:58–7:2. The portion of Figure 3 shows the
`securement element in cross section, including tapered engaging member
`10h fastened to elongate member 10a. Id. at 7:45–49. As shown in Figures
`2 and 6, a user inserts tapered engagement portion 10h into U-shaped striker
`24, securing device 10 to lateral surface 22a. Id. at 7:49–51. After insertion
`of tapered engagement portion 10h, the user can push downward on the
`handle (as shown in Figure 2) or pull upward on the handle (as shown in
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`Figure 6), with device 10 providing support in either orientation. Id. at
`11:1–20.
`The embodiment shown in Figures 2 and 6 allows for limited
`movement relative to lateral surface 22a. Id. at 11:22–27. Other
`embodiments shown in Figures 8–10 depict different structures for
`engagement with U-shaped striker 24. Id. at 7:52–65, Figs. 8–10. Figures
`11 and 12 depict an embodiment where device 10 remains free to move
`relative to lateral surface 22a, but device 10, permanently mounted to lateral
`surface 22a, does not engage striker 24. Id. at 7:65–8:2, 12:31–35, Figs. 11
`and 12.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–8 and 20 of the ’189 patent. Of those
`claims, claims 1, 2, 3, and 20 are independent claims. Claim 1 is
`representative and appears below.
`1. A device for facilitating movement into and out of a seat,
`comprising
`an elongate member having a handle at one end suitable
`for being gripped by an individual, and
`securement means cooperating with the other end of said
`elongate member for securing said elongate member to a fixed
`surface proximate to a seat to enable said elongate member to
`extend away from the seat and position said handle at a point
`remote from the seat during use 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,
`said securement means mounting said elongate member
`for limited movements within a plane substantially parallel to the
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`fixed surface to at least one operative position most convenient
`to the user when pulling or pushing on said handle.
`Ex. 1001, 13:48–61.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–8 and 20 are unpatentable based on the
`following grounds (Pet. 11):
`
`Ground References
`
`1
`2
`3
`4
`5
`
`Van Meter1
`Van Meter and Stuhlmacher2
`Van Meter, Stuhlmacher, and
`Baker3
`Bergsten4 and Stuhlmacher
`Bergsten, Stuhlmacher, and
`Baker
`
`Basis
`
`Challenged
`Claim(s)
`§ 102(b) 1 and 2
`§ 103(a) 2
`§ 103(a) 3–8 and 20
`§ 103(a) 1 and 2
`§ 103(a) 3–8 and 20
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`
`
`1 U.S. Patent No. 5,295,498 (iss. Mar. 22, 1994) (“Van Meter”).
`2 U.S. Patent No. 5,331,837 (iss. July 26, 1994) (“Stuhlmacher”).
`3 U.S. Patent No. Des. 344,665 (iss. Mar. 1, 1994) (“Baker”).
`4 U.S. Patent No. 4,626,016 (iss. Dec. 2, 1986) (“Bergsten”).
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`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art5 in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner asserts that “no construction of any non-means-plus-
`function claim term is required.” Pet. 7. Patent Owner agrees. Prelim.
`Resp. 15.
`Petitioner sets forth a number of constructions for “securement
`means” (claims 1, 2, and 3) and “engagement means” (claim 20). Pet. 8–9.
`Patent Owner disagrees with Petitioner’s constructions, and proposes its
`own. Prelim. Resp. 16–21. We need not resolve all of the disputes between
`the parties, but we make the following points that will inform the analysis
`below. “Means” clauses governed by 35 U.S.C. § 112, ¶ 6 cover the
`function recited in the claim and the corresponding structure described in the
`specification that performs the claimed function, and equivalents thereof.
`35 U.S.C. § 112, ¶ 6.6 Claims 1 and 2 both contain “securement means”
`limitations that the parties agree are “means-plus-function” limitations
`governed by 35 U.S.C. § 112, ¶ 6. Pet. 8; Prelim. Resp. 15. Patent Owner
`
`
`5 Petitioner contends that a person of ordinary skill in the art “would have at
`least a Bachelor of Science degree in mechanical engineering or a
`comparable degree, and two or more years of industry experience.”
`Pet. 6–7. Patent Owner “generally concurs” but “notes that this description
`is approximate, and a higher level of training or skill might make up for less
`education, and vice-versa.” Prelim. Resp. 15. For purposes of this Decision,
`we will adopt Petitioner’s proposed identification of one of ordinary skill in
`the art.
`6 The pre-AIA version of 35 U.S.C. § 112 applies to the ’189 patent, which
`was filed in 1999, prior to enactment of the AIA.
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`contends that Petitioner’s construction fails to identify a function in claims 1
`and 2, namely “mounting said elongate member for limited movements
`within a plane substantially parallel to the fixed surface.” See Prelim.
`Resp. 16–18; Pet. 8–9. We agree with Patent Owner. Claims 1 and 2
`require a “securement means mounting . . . for limited movements . . . .”
`Pet. A-1 (limitation 1g), A-2 (limitation 2h). The limitation tracks the
`typical means-plus-function format, and specifies a function following the
`word “for” without describing the structure that performs the function.
`Accordingly, “securement means” in claims 1 and 2 requires, among other
`things, a securement means that mounts the elongate member in a manner
`that allows “for limited movements within a plane substantially parallel to
`the fixed surface.”
`Claims 2 and 3 require a “securement means” that performs the
`following function: “removably securing said elongate member to said
`lateral surface.” Pet. A-2 (limitations 2e and 3f). Petitioner included the
`embodiments shown in Figures 11 and 12 as corresponding structure to the
`securement means of claims 2 and 3 despite the fact that the embodiment
`shown in those figures permanently (not removably) mounts the device to
`lateral surface 22a. See Pet. 8–9; Ex. 1001, 5:52–54, 12:31–35. Patent
`Owner contends that the corresponding structure excludes the “pin,”
`“resiliently biased pin,” and “bar” as disclosed in that embodiment and
`discussed in the specification because that structure does not perform the
`claimed “removably securing” function. Prelim. Resp. 17–19. We agree
`with Patent Owner. The securement means shown and described in
`connection with Figures 11 and 12 does not perform the claimed function of
`“removably securing” the elongate member to the lateral surface. As such,
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`the structures shown in those figures and described as part of the
`embodiment in the specification are not within the scope of the “securement
`means” of claims 2 and 3.
`
`
`B. Ground 1: Anticipation by Van Meter
`Petitioner contends that Van Meter anticipates claims 1 and 2.
`Pet. 18–28. Relying on the testimony of David R. McLellan (Ex. 1003),
`Petitioner explains how Van Meter allegedly teaches or suggests all of the
`claim limitations. Id. Patent Owner argues that Van Meter fails to disclose
`all of the limitations of claims 1 and 2 for a number of reasons. Prelim.
`Resp. 21–29.
`
`1. Summary of Van Meter
`Van Meter discloses a “device to aid persons rising from a seated
`position,” such as a chair. Ex. 1004, Abstract. The device includes a
`structural support having a base positionable under a chair and a sleeve
`secured to the structural support. Id. Figure 1 is reproduced below with
`Petitioner’s annotations.
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`Figure 1 depicts handle 12 attached to the top of arm 14 and sleeve 26
`attached to the bottom of arm 14. Id. at 2:10–19. Van Meter discloses
`pin 28 that fits through openings 38 in sleeve 26 as a means to secure arm 14
`to sleeve 26. Id. at 2:22–24, Fig. 3. Arm 14 may be reversed to a second
`position so that “arm 14 can be positioned on the opposite side of couch 16.”
`Id. at 2:22–24, 2:34–38, Fig. 3.
`
`2. Analysis
`To anticipate under § 102, a reference must disclose every limitation
`of a claim, either expressly or inherently. Transclean Corp. v. Bridgewood
`Servs., Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002). “To anticipate a claim
`reciting a means-plus-function limitation, the anticipatory reference must
`disclose the recited function identically.” Transclean, 290 F.3d at 1372.
`As discussed above, the “securement means” of claims 1 and 2
`requires mounting the elongate member in a manner that allows “for limited
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`movements in a plane substantially parallel to the fixed surface.” Petitioner
`did not correctly construe the “securement means” in this respect, but it did
`provide an analysis alleging that Van Meter discloses the limitation. Pet. 25;
`see also id. at 27 (incorporating analysis of claim 1 into anticipation
`allegations regarding claim 2). Petitioner argues that Van Meter expressly
`discloses the limitation because “Van Meter states that the arm is
`‘reversible’—that is, it can move to two different positions within a plane
`that is parallel to the fixed surface (the edge of the chair or sofa).” Id. at 25
`(relying on Van Meter Figure 3).
`Van Meter discloses that arm 14 can be “reversed by rotation” and
`placed in a second position so that “arm 14 can be positioned on the opposite
`side of the couch 16.” Van Meter, 2:34–38, Fig. 3. As Patent Owner points
`out, once mounted with pin 28, Van Meter’s arm 14 cannot move at all.
`Prelim. Resp. 24. The claims require “securement means mounting said
`elongate member for limited movements within a plane substantially parallel
`to the fixed surface.” Pet. A-1, A-2 (emphasis added). The use of
`“mounting” in the same phrase as “for limited movements” requires the
`securement means to allow limited movements while mounted. The
`specification reinforces this reading by disclosing embodiments that allow
`for the claimed limited movement while the device remains mounted to the
`lateral surface. See, e.g., Ex. 1001, Figs. 2 and 6. Van Meter does not
`suggest that arm 14 is capable of any movement when mounted by pin 28,
`and Petitioner does not allege that this is the case. Pet. 25. Instead,
`Petitioner appears to base its allegation on the “movement” shown in
`Figure 3, that is, the movement between the two fixed positions when pin 28
`is removed. See id.; Van Meter, Fig. 3. That movement fails to meet the
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`claim’s requirements because it occurs when arm 14 is not mounted.
`Moreover, even if the claim did not require limited movement while
`mounted, Petitioner does not adequately explain how movement of arm 14 is
`limited or how the securement means provides the claimed support with pin
`28 removed—without pin 28 in place, the movement appears unconstrained
`and unsupported. See Van Meter, Fig. 3; Prelim. Resp. 24–25. Accordingly,
`because the Petition does not adequately establish that Van Meter discloses
`the “limited movement” limitation of claims 1 and 2, it cannot anticipate
`either claim.
`The anticipation analysis of claim 2 contains further flaws. For
`example, claim 2, unlike claim 1, requires the securement means to perform
`the function of “removably securing” the elongate arm to the lateral surface.
`Pet. A-2. Petitioner argues that Van Meter discloses this limitation, but does
`not provide any analysis comparing Van Meter’s structure with the
`corresponding structure from the ’189 patent specification, including the
`structure Petitioner previously identified as corresponding structure. See
`Pet. 27. Because means-plus-function clauses only cover the corresponding
`structure in the specification and equivalents thereof that perform the
`claimed functions, Petitioner’s anticipation analysis of claim 2 lacked
`necessary evidence and argument. See 35 U.S.C. § 112, ¶ 6.
`Based on the foregoing, we determine the information presented does
`not show a reasonable likelihood that Petitioner would prevail in
`establishing that Van Meter anticipates claims 1 or 2.
`
`C. Ground 2: Obviousness over Van Meter and Stuhlmacher
`Petitioner alleges that claim 2 would have been obvious over the
`
`combination of Van Meter and Stuhlmacher. Pet. 28–35. A claim is
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`unpatentable under 35 U.S.C. § 103(a) if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question
`of obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) when in the record, objective evidence of
`nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`With respect to the “limited movements” limitation discussed in the
`previous section, Petitioner incorporates its anticipation analysis of that
`limitation from claim 1. Pet. 35 (referring to analysis at Pet. 25). That is, in
`its obviousness analysis Petitioner continues to rely on Van Meter as
`disclosing securement means mounting the elongate member “for limited
`movements” as required by claim 2. Id. Petitioner does not rely on
`Stuhlmacher in its analysis of claim 2 in a manner that addresses any of the
`deficiencies discussed above. Id. Accordingly, for the same reasons
`discussed above, the Petition fails to establish that the prior art discloses the
`“limited movements” limitation of claim 2.
`In addition, Petitioner’s analysis of the “removably securing” aspect
`of the securement means of claim 2 remains lacking. The Petition refers to
`an analysis of the securement means in the anticipation section and
`references the pin securing the handlebar in the ’189 patent, but that
`structure corresponds to the embodiment shown in Figure 12. Pet. 33
`(referring to “pin” and Pet. 20–21); Pet. 20–21 (relying on “pin” and “bar”
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`that are “described in connection with Figure 12”). As discussed in the
`claim construction section, the embodiment shown in Figure 12, including
`the “pin” structure relied on Petitioner, does not correspond to the
`“securement means” of claim 2 because that embodiment discloses an
`elongate member permanently mounted to lateral surface 22a. The Petition
`does not include an analysis of any embodiment that performs the claimed
`functions of the “securement means” of claim 2. See Pet. 33. Accordingly,
`the Petition fails to establish that Van Meter discloses the required structure
`for the “securement means” of claim 2.
`Based on the foregoing, we determine the information presented does
`not show a reasonable likelihood that Petitioner would prevail in
`establishing that claim 2 is unpatentable over Van Meter and Stuhlmacher.
`
`D. Ground 3: Obviousness over Van Meter, Stuhlmacher, and Baker
`Petitioner asserts that claims 3–8 and 20 are obvious over a
`combination of Van Meter, Stuhlmacher, and Baker. Pet. 36–52.
`
`1. Summary of Stuhlmacher
`Stuhlmacher discloses a device for aligning vehicle doors with the
`body of the vehicle. Stuhlmacher, Abstract. The device includes a lever
`having a “hooked head that engages in a latch of the door.” Id. In a first
`embodiment, Stuhlmacher discloses door alignment tool 5 used when the
`door “is ajar from an associated vehicle 15” and includes foot 20 having
`shaft 35 between the ends of foot 20. Id. at 3:6–11. Fork 40 protrudes from
`one end of foot 20, with fork 40 designed to fit pinch weld 45 on the
`underside of a vehicle. Id. at 3:9–16, Fig. 1. Stand 55 extends upward and
`“generally normal” to shaft 35, with lever 75 pinned at the top of the stand.
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`Id. at 3:26–28, 3:41–43, Fig. 1. Petitioner’s annotated version of
`Stuhlmacher Figure 1 is reproduced below.
`
`
`The above figure depicts the first embodiment, including foot 20, fork 40,
`shaft 35, stand 55 extending upward from shaft 35, and lever 75 attached to
`the stop of the stand. Id. at 3:9–28, 3:41–43. Stuhlmacher further discloses
`bolt 85 threaded into a hole in lever 75, the bolt including head 95 that fits
`into latch 100 on door 10. Id. at 3:50–56, Fig. 2.
`In a second embodiment, Stuhlmacher discloses lever 120 having
`end 125 hooked on a vehicle’s lock pin 128.7 Id. at 4:39–41, Fig. 3.
`End 125 can be hooked onto lock pin 128 “via either a circular aperture or a
`pair of oppositely disposed arcuate apertures, as disclosed in the prior art.”
`
`
`7 Stuhlmacher refers to “lock pin 130,” but this appears to be a typographical
`error because the figures depict a pin 128 and the next sentence of the
`specification refers to “threaded cylindrical apertures 130.” See
`Stuhlmacher, 4:41–44 (emphasis added), Fig. 3, 48, 54.
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`Id. at 4:40–43. Petitioner’s annotated version of Stuhlmacher Figure 3 is
`reproduced below.
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`
`
`The above figure depicts lever 120 having end 125 hooked onto lock
`pin 128. Id. at 4:39–43. The figure also depicts bolt 140 having head 145
`that engages latch 155 of door 160. Id. at 4:53–57.
`
`2. Summary of Baker
`Baker is a design patent disclosing “a tool for opening frozen
`
`automobile doors.” Baker, Claim. Baker includes seven figures illustrating
`its ornamental design. Id. at Figs. 1–7. Figure 1 is reproduced below.
`
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`Figure 1 depicts “an elevated perspective view of the tool for opening frozen
`automobile doors.” Id. at Description.
`
`3. Analysis
`Independent Claims 3 and 20 contain limitations similar to claim 2
`
`and also require a “generally U-shaped striker.” Pet. A-2, A-4. In claim 3,
`the securement means requires “an engaging element . . . for engaging the
`striker” and claim 20 requires “engagement means . . . for cooperating with
`the striker when the door is open and for securing said elongate member to
`the striker.” Id. at A-3, A-4. Both claims require providing “support” to the
`user when entering or leaving the vehicle. Id. at A-3 (limitation 3h:
`“providing a support for the passenger to grip while entering or leaving said
`vehicle”), A-4 (limitation 20g: “providing support to the individual when
`entering or exiting the vehicle”). We will focus our analysis on Petitioner’s
`allegations with respect to claim 3 because Petitioner’s analysis with respect
`to claim 20 incorporates the analysis for claim 3 and does not contain any
`separate arguments directed to claim 20. See id. at 50–53.
`Petitioner argues that the combination of Van Meter and Stuhlmacher
`discloses many of the limitations of claim 3, and incorporates by reference
`much of the analysis in Ground 2 alleging that claim 2 would have been
`obvious based on the same combination. See, e.g., Pet. 36–37, 41–42, 45.
`Regarding the U-shaped striker, Petitioner asserts that Stuhlmacher discloses
`the striker and that it would have been obvious to adapt Van Meter “to work
`with a U-shaped striker, as shown in Stuhlmacher, for a variety of reasons.”
`Pet. 37–40. Petitioner relies on Baker for its alleged disclosure of a
`securement means for engaging a U-shaped loop, and argues that a person of
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`ordinary skill in the art “would have readily adapted Van Meter to engage
`with a U-shaped loop” for several reasons. Pet. 42–45.
`Patent Owner argues that Petitioner fails to explain how to modify
`Van Meter to incorporate Stuhlmacher’s structure, and that failure permeates
`the analysis for all grounds based on the combination of Van Meter and
`Stuhlmacher. Prelim. Resp. 30–31. Patent Owner also argues that both of
`Stuhlmacher’s embodiments result in a structure that blocks the door
`opening, and therefore would not facilitate egress and ingress of a passenger
`from a vehicle as claimed or provide support for a passenger while entering
`or leaving the vehicle. Id. at 31–34, 38. Regarding Baker, Patent Owner
`argues that “[t]here is no text or other indication that this tool is, or can be,
`used with a u-shaped loop, so using the device in this manner is not
`‘expressly disclosed’ as Petitioner asserts.” Id. at 43. Patent Owner also
`asserts that Petitioner fails to explain how the modified device still provides
`support to the user while entering or leaving the vehicle. Id. at 45.
`We agree with Patent Owner that Petitioner has not adequately
`supported its proposed combination or explained how the three references
`come together to meet all of the claim requirements. For example, the
`Petitioner continues to rely exclusively on Van Meter for the alleged
`“securement means” that cooperates with the elongate member and
`removably secures that member to the lateral surface. Pet. 41. Through a
`series of incorporations by reference in the Petition, it appears that Petitioner
`asserts that Van Meter’s pin 28 securing arm 14 within sleeve 26 discloses
`the claimed securement means. See id. (analyzing limitations 3e and 3f and
`incorporating analysis of limitations 2d and 2e at Pet. 32–33); Pet. 32–33
`(analyzing limitations 2d and 2e and incorporating analysis of limitations 1c
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`and 1d at Pet. 20–21); Pet. 20–21 (relying on Van Meter’s arm 14 secured
`by pin 28 in sleeve 26). Petitioner does not explain either how Van Meter’s
`pin connection works in combination with either embodiment of
`Stuhlmacher, or which of Stuhlmacher’s specific structures to retain in the
`combination. Further, if the handle, arm, and pin connection of Van Meter
`are retained in combination with some structure of Stuhlmacher as alleged in
`the Petition, the Petition lacks an explanation regarding how those combined
`structures provide support for the user as they enter and leave the vehicle.
`As pointed out by Patent Owner, if the modified structure retains the
`connection to the door as taught by Stuhlmacher in order to provide support,
`the resulting structure would block the door opening. See Prelim. Resp. 31–
`34. If the combination provides support for a user without employing any
`connection to the door, the Petition does not explain how it does so using the
`connections to the vehicle disclosed in Stuhlmacher or the pin arrangement
`disclosed in Van Meter.
`
`The addition of Baker to the combination further complicates the
`analysis. As an initial matter, as a design patent Baker contains little text
`and, as Patent Owner points out, it does not “expressly disclose” a
`securement means for engaging a U-shaped loop as Petitioner asserts. See
`Pet. 42–43 (asserting Baker “expressly disclose[s]” securement means for
`engaging a U-shaped loop). Baker’s textual description only states that it is
`“a tool for opening frozen automobile doors,” see Baker, Claim, but that
`description suggests that it operates from outside the vehicle with the door
`closed, with the hook end possibly engaging a frozen latch or the door itself
`rather than a fixed loop, which would not open a frozen shut door. Nothing
`in Baker provides support for the assertion that one of ordinary skill in the
`
`18
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`
`art “would understand that such a tapered hook would be suitable for
`engaging a U-shaped loop—e.g., a rectangular opening,” and the cited
`expert declaration provides no further evidence in support of this assertion.
`See Pet. 42–43; Ex. 1003, ¶ 163. Further, even if Baker expressly disclosed
`a hooked end that engages a U-shaped loop, the role of that structure in the
`proposed combination remains unclear and largely unexplained in the
`context of Van Meter and Stuhlmacher. If the pin connection of Van Meter
`somehow works in concert with the hooked end of Baker to engage a U-
`shaped loop, the Petition lacks a description of the resulting combination; if
`the resulting combination omits the pin connection of Van Meter, that
`contradicts the Petition’s express reliance on that structure in the analysis of
`other limitations of claim 3. See Pet. 41.
`Finally, because the Petition does not describe the resulting
`combination of disparate structures in any detail, an explanation of how the
`Van Meter/Stuhlmacher/Baker combination provides the required “support”
`to a user entering and leaving a vehicle remains unexplained. The Petition
`states that a combination of Van Meter and Stuhlmacher discloses this
`limitation in claim 3, but that analysis fails to explain the potential impact of
`Baker’s structure. See Pet. 42. Through a series of arguments incorporated
`by reference in the Petition, it appears that Petitioner ultimately relies on
`Van Meter alone as disclosing the “support” aspect of claim 3. See id.
`(incorporating analysis for similar limitation in claim 2 at Pet. 34–35);
`Pet. 34–35 (relying on Van Meter for support and incorporating analysis of
`Van Meter at Pet. 23–24); Pet. 23–24 (relying on Van Meter as disclosing
`support while pushing and pulling on handle while getting up from a chair).
`That analysis relies on Van Meter in isolation as discussed in Petitioner’s
`
`19
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`
`anticipation arguments, with Van Meter’s device allegedly providing support
`at the side of a chair, which does not explain how the device would provide
`support in combination with Stuhlmacher and Baker on a vehicle.
`For at least these reasons, Petitioner has not shown sufficiently that
`claims 3 and 20 are unpatenble as obvious over Van Meter, Stuhlmacher,
`and Baker.8 Claims 4–8 depend from claim 3, and the obviousness
`assertions for those claims fail for the same reasons. Accordingly, we
`determine the information presented does not show a reasonable likelihood
`that Petitioner would prevail in establishing that any of claims 3–8 and 20
`would have been obvious over Van Meter, Stuhlmacher, and Baker.
`
`E. Ground 4: Obviousness over Bergsten and Stuhlmacher
`Petitioner asserts that claims 1 and 2 are obvious over a combination
`of Bergsten and Stuhlmacher. Pet. 52–67. Petitioner argues that Bergsten
`discloses all of the limitations of claims 1 and 2 with the exception of the
`“limited movement” requirement of the securement means. Id. For that
`limitation, Petitioner alleges that Stuhlmacher discloses the claimed limited
`movement, and that one of ordinary skill in the art “would have readily
`adapted Bergsten to provide limited movement, as shown in Stuhlmacher,
`
`
`8 For the same reasons discussed above in connection with claim 2, the
`Petition also lacks sufficient evidence and argument to establish that Van
`Meter discloses the “securement means” of claim 3. See Pet. 41. The
`“securement means” of claim 3, like claim 2, requires an analysis of
`corresponding structure in the ’189 patent specification that performs the
`“removably securing” function. The Petition merely incorporates the
`analysis of claim 2 by reference, and that analysis, as discussed above,
`ultimately relies on the embodiment of Figure 12, which does not perform
`the claimed function. See id.
`
`20
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`IPR2017-00140
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`
`for a variety of reasons.” See Pet. 58–61, 66. Patent Owner alleges, among
`other things, that Bergsten only discloses support when pulling up on the
`handle, and does not disclose support when pushing downward on the
`handle as required by claims 1 and 2. Prelim. Resp. 53–55. Patent Owner
`also argues that Stuhlmacher fails to disclose limited movement, and that
`any required connection to a door would bar entrance and exit from the
`vehicle. Id. at 55–58.
`
`1. Summary of Bergsten
`Bergsten discloses a device “for assisting an occupant of a vehicle in
`rising from a seated position in the vehicle to a standing position outside the
`vehicle.” Bergsten, Abstract. The device includes a handlebar inserted into
`a sleeve mounted in a door frame. Id. Petitioner’s annotated version of
`Bergsten’s Figure 2 appears below:
`
`
`Figure 2 depicts handlebar 24 having an elongate portion 26, handle
`portion 28, and sleeve-engaging portion 44. Id. at 3:6–9. Sleeve-engaging
`portion 44 of handlebar 24 slides through aperture 36 of mounting plate 34,
`and within sleeve 32. Id. at 3:10–13. Aperture 36 and sleeve 32 “are sized,
`relative to the sleeve-engaging portion 44, so that it may be readily inserted
`
`21
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`therein and removed therefrom.” Id. at 3:29–33. Once inserted, “[t]he
`occupant may grasp the handle portion 28 with one or both hands and pull
`himself or herself to a standing position.” Id. at 4:44–46. At that point,
`“[t]he occupant may then remove the sleeve-engaging portion 44 of the
`handlebar 24 from the sleeve 32 and stow the handlebar 24 for later use.”
`Id. at 4:47–49.
`
`2. Analysis
`Claim 1 requires “
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