UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ICON HEALTH & FITNESS, INC.
`
`Petitioner,
`
`v.
`
`NAUTILUS, INC.,
`
`Patent Owner.
`
`U.S. Patent No. 8,323,155 B2
`
`Inter Partes Review No. IPR2017-00495
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ICON HEALTH & FITNESS, INC.
`
`Petitioner,
`
`v.
`
`NAUTILUS, INC.,
`
`Patent Owner.
`
`U.S. Patent No. 8,323,155 B2
`
`Inter Partes Review No. IPR2017-00495
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`TABLE OF CONTENTS
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`I.
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`PRECISE RELIEF REQUESTED ................................................................... 2
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`II. BACKGROUND .............................................................................................. 2
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`III. LEGAL STANDARD ...................................................................................... 6
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`IV. MATTERS THE BOARD MISAPPREHENDED OR OVERLOOKED ....... 6
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`A. The Board has either misapprehended or overlooked that obtaining a “cam
`effect” is a reason with rational underpinning for making the modification .......... 7
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`B. The Board has either misapprehended or overlooked that the explicit
`teaching in Maresh-II to make the proposed modification is itself a reason with
`rational underpinning for making the modification ................................................ 8
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`V. CONCLUSION ..............................................................................................10
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`i
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`The Board’s Decision Denying Institution of Inter Partes Review dated July 6,
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`2017 (Paper 9) (the “Decision”) denied all grounds (Grounds 1-4) proposed in the
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`Petition. (Paper 1). The Decision focuses its analysis on independent claims 1 and 9,
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`and more specifically elements 1d and 9c (hereafter “the cam limitations”) because,
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`according to the Board, “consideration of those claim limitations is dispositive.”
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`(Decision at 12, FN 1).
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`Petitioner ICON Health and Fitness, Inc. (“Petitioner”) proposes two separate
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`rejections for claims 1 and 9. The first (contained in Ground 1 of the Petition) is based
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`on Maresh-I in view of Maresh-II. The second (contained in Ground 3 of the Petition)
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`is based on Stearns in view of Maresh-II. In each of Grounds 1 and 3, the Petitioner
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`relies on Maresh-II for disclosure relating to the cam limitations. Specifically,
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`Petitioner asserts that one of ordinary skill in the art would have found it obvious to
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`modify the elliptical machines taught in Maresh-I and Stearns to have the recited
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`cams based on a similar modification explicity taught by Maresh-II. (Petition at 15-
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`20, 27-32).
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`With regard to both Grounds 1 and 3, the Decision holds that Petitioner failed
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`to establish a reasonable likelihood of showing that the claimed cam limitations result
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`from “combining a known technique to a known device ready for improvement to
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`yield predictable results.” (Decision at pp. 16, 25). According to the Decision, the
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`“Petitioner does not explain and has not established any reason as to why one of
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`
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`1
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`ordinary skill in the art would have combined and modified and the teachings as
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`proposed.” (Decision at 16, 25-26 (emphasis added)).
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`Petitioner respectfully requests that the Board rehear its Decision denying
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`institution with regard to Grounds 1-4 because it appears that the Board has
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`misapprehended or overlooked the reasons provided in the Petition as to why one of
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`ordinary skill in the art would have combined and modified the teachings as
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`proposed.
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`I. PRECISE RELIEF REQUESTED
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`Petitioner respectfully requests rehearing of the Board’s Decision denying
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`Grounds 1-4 of the petition and requests that the Board institute a trial on Grounds 1-
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`4.
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`Petitioner sets forth the detailed basis for this Request for Rehearing below, as
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`well as “the place where each matter was previously addressed” as required by 37
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`C.F.R. § 42.71(d). This Request for Rehearing is timely filed. This Request for
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`Rehearing is authorized under 37 C.F.R. §§ 42.71(c) and 42.71(d) without prior
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`authorization of the Board.
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`II. BACKGROUND
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`Maresh-I, Maresh-II, and Stearns each disclose very similar elliptical-type
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`exercise devices. (Petition at pp. 6-14, 25-26). While the Stearns machine positions
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`the flywheel towards the front of the machine, a POSITA would recognize each of
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`2
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`these devices as elliptical-type exercise devices. (Petition at pp. 23-24, 34-36).
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`Indeed, many of the same components and features are shared between the machines
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`disclosed in each of these references. (Petition at pp. 6-13). For example, each of
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`these references discloses (in at least one embodiment) force receiving members that
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`are flat and straight and that roll along the top of a roller. Id. These flat force receiving
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`members are identified by the numerals in the figures reproduced from each of the
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`references below (745 in Figure 13 of Maresh-I, 1580 in Figure 7 of Maresh-II, and
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`2030 in Figure 33 of Stearns):
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`
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`(Id. at pp. 6, 8, and 11).
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`Maresh-II contains explicit teaching that its flat force receiving member 1580
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`may be replaced with a curved force receiving member 3310. (Petition at pp. 10, 16-
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`19, 29-31 (citing to Maresh-II, 10:16-19)). An exemplary curved force receiving
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`member 3310 is illustrated in FIG. 23 of Maresh-II:
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`3
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`(Petition at pp. 9-10).
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`
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`With regard to Ground 1, Petitioner asserts that a POSITA would recognize
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`that just as the flat force receiving member 1580 in Maresh-II was explicity taught
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`to be modifiable into a curved force receiving member 3310 and still produce
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`elliptical motion, the downward facing surface of the flat elongate slot 745 of
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`Maresh-I could also be modified to have a curved shape and still provide elliptical
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`motion and maintain the degree of freedom in forward/rearward travel in a
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`predictable manner. (Petition at p. 17). With regard to Ground 3, Petitioner asserts
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`that a POSITA would recognize that just as the flat force receiving member 1580 in
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`Maresh-II was taught to be modifiable into a curved force receiving member 3310
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`and still produce elliptical motion, the flat bottom surface of the forward portion of
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`the foot supporting link 2030 of Stearns could also be modified to have a curved
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`shape and still provide elliptical motion. (Id. at 29).
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`The Petition identifies and relies on several different rationales to support the
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`proposed modifications to Maresh-I and Stearns. For example, in both Grounds 1 and
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`4
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`3, the Petition asserts that modifying both Maresh-I and Stearns as taught by Maresh-
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`II constitutes nothing more than combining a known technique to a known device
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`ready for improvement to yield predictable results. (Petition at pp. 17-18, 30).
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`The Decision acknowledges that “Maresh-II teaches the option of using
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`alternative support member 3310, which has a curved surface, as a substitute to its
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`overlying rack and/or force receiving member, which has a flat surface (i.e., the
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`surface without teeth), and that the result is likely a modified shape of elliptical path.”
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`(Decision at pp. 16, 26 (emphasis added)).
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`However, the Board holds that “Petitioner has not demonstrated a reasonable
`
`likelihood of showing that the claimed cam limitations result from ‘combining a
`
`known technique to a known device ready for improvement to yield predictable
`
`results’” because “Petitioner does not explain and has not established any reason as
`
`to why one of ordinary skill in the art would have combined and modified and the
`
`teachings as proposed.” (Id. at 16, 26-27 (emphasis added)). According to the Board,
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`“Petitioner has not provided a reason with rational underpinning for making the
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`modification.” (Id. at 16, 26 (emphasis added)). The Decision also holds that while
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`“Petitioner repeatedly refers to the modification as an improvement . . . [it] fails to
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`provide any evidence regarding what, if any, improvement results therefrom or
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`would have been recognized by one of ordinary skill in the art at the time of the
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`invention.” (Id. at 17, FN 3; 27, FN 7 (emphasis added)).
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`5
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`III. LEGAL STANDARD
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`“When rehearing a decision on petition, a panel will review the decision for
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`an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion may be
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`indicated if a decision is based on an erroneous interpretation of law, if a factual
`
`finding is not supported by substantial evidence, or if the decision represents an
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`unreasonable judgment in weighing relevant factors.” Palo Alto Networks, Inc. v.
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`Juniper Networks, Inc., IPR 2013-00369, Paper 30 at 2-3 (citing Star Fruits S.N.C.
`
`v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)). The request for rehearing
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`must “specifically identify all matters the party believes the Board misapprehended
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`or overlooked.” 37 C.F.R. § 42.71(d).
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`IV. MATTERS THE BOARD MISAPPREHENDED OR OVERLOOKED
`
`Petitioner respectfully requests that the Board rehear its Decision denying
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`institution with regard to Grounds 1-4 because it appears that the Board has
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`misapprehended or overlooked at least two reasons set forth in the Petition why a
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`POSITA would have modified the elliptical machines taught by Maresh-I and Stearns
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`to include curved force receiving members. First, the Petition identifies a “cam
`
`effect” that may be obtained by making the proposed modifications. Second, the
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`explicit teaching in Maresh-II to modify flat force receiving members itself provides
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`a reason for making a similar modification to flat force receiving members disclosed
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`in other references.
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`6
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
`A. The Board has either misapprehended or overlooked that
`obtaining a “cam effect” is a reason with rational underpinning
`for making the modification
`
`With regard to both Grounds 1 and 3, Petitioner asserts that “a POSITA would
`
`have recognized that by [making the proposed modification], a ‘cam effect’ might be
`
`obtained.” (Petition at pp. 19, 31). Petitioner’s expert, Scott Ganaja, also confirms that
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`a POSITA would have recognized that by modifying Maresh-I and Stearns as proposed,
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`a “cam effect” might be obtained. (Ganaja Decl. at ¶¶ 49, 82 (cited to in the Petition at
`
`pp. 19 and 31) The Decision does not appear to recognize that this “cam effect” was set
`
`forth in the Petition as a reason for making the proposed modifications. It appears that
`
`the Board either overlooked this reason for modifying Maresh-I and Stearns or has
`
`misapprehended its significance.
`
`Maresh-II itself describes certain curved roller surfaces as creating a “cam
`
`effect.” (See, e.g., Petition p. 9 (citing to Maresh-II, 9:50-65)). For example, with regard
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`to FIG. 20, Maresh-II teaches that the larger diameter interface 3072 of alternative roller
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`3070 has “a smooth asymmetrical surface which provides a cam effect.” (See, e.g.,
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`Petition at p. 19 (citing to Maresh-II at 9:60-65)). A POSITA would understand that
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`this curved asymmetric roller would cause the referenced “cam effect.”
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`Thus, Petitioner’s identification of a “cam effect” in the Petition provides a
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`reason with rational underpinning for making the proposed modifications to Maresh-
`
`I and Stearns.
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`
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`7
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
`B. The Board has either misapprehended or overlooked that the
`explicit teaching in Maresh-II to make the proposed modification
`is itself a reason with rational underpinning for making the
`modification
`
`Maresh-II explicitly teaches that its flat force receiving members may be
`
`replaced with a force receiving member 3310 of Figure 23 that is curved. (Maresh-II
`
`at 10:16-19). The Petition points to this explicit teaching in several places. (See, e.g.,
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`Petition at 9-10, 17, 29). Petitioner’s expert, Scott Ganaja, also recognizes and
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`identifies the explicit teaching of Maresh-II to modify flat force receiving members
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`with curved force receiving members in his declaration. (Ganaja at ¶¶ 34, 44, 48, 77,
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`81). The Decision does not recognize the explicit teaching of Maresh-II for modifying
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`flat force receiving members into curved force receiving members as a reason for
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`making this same modification to the flat force receiving members of Maresh-I and
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`Stearns. It appears that the Board either overlooked this reason or has misapprehended
`
`its significance.
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`An explicit teaching contained within a prior art reference to modify a specific
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`component in a structure in a specific way is itself a reason with rational underpinning
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`for modifying the specific structure in the way suggested. See, e.g., KSR Int’l Co. v.
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`Teleflex Inc., 127 S.Ct. 1727, 1741 (2007) (finding that the original teaching,
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`suggestion, or motivation (TSM) test of the Federal Circuit “captured a helpful
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`insight” into the obviousness of a patent). This explicit teaching not only provides a
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`reason to modify the device disclosed by the reference, but also provides a reason to
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`8
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`modify other devices that have the same component. Thus, since Maresh-II explicitly
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`teaches in 10:16-19 that “an alternative support member 3310 is shown [in FIG. 23]
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`as a possible substitute for the ‘overlying’ . . . force receiving member provided on
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`any of the foregoing embodiments shown in FIGS. 1-16,” this teaching provides a
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`reason for making the same modification to the flat force receiving members of the
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`elliptical machines of Maresh-I and Stearns.
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`Indeed, this sort of explicit teaching is the type of evidence that was necessary
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`to establish obviousness under the TSM test, prior to KSR. KSR, 127 S.Ct. at 1730.
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`While the standard for establishing obviousness was relaxed somewhat in KSR, and
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`the TSM test is no longer the exclusive test for establishing obviousness, a teaching,
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`suggestion, or motivation in the prior art that would have led one of ordinary skill to
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`modify a prior art reference to arrive at the claimed invention (as was raised in the
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`Petition) is still a recognized rationale used to support a conclusion of obviousness.
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`See In re Khan, 444 F.3d 977, 987-88 (Fed. Cir. 2006); see also MPEP § 2143(I)
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`(exemplary rationale G), and § 2143.01 (“Obviousness can be established by
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`combining or modifying the teachings of the prior art to produce the claimed
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`invention where there is some teaching, suggestion, or motivation to do so.”).
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`9
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`rehear its decision denying institution of claims 1-16, and institute a trial on all
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`challenged claims.
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`Dated: August 7, 2017.
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`Respectfully submitted,
`
`/ John T. Gadd /
`John T. Gadd (Reg. No. 52,928)
`Mark Ford (Reg. No. 67,732)
`Adam Smoot (Reg. No. 63,433)
`Attorneys for Petitioners
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`10
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`CERTIFICATE OF SERVICE
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`IPR2017-00495
`US Pat. No. 8,323,155 B2
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`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that, on August
`
`7, 2017, a true copy of the foregoing “PETITIONER’S REQUEST FOR
`
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(d)” was served upon the
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`following via email:
`
`John Vandenberg
`Andrew M. Mason
`Garth A. Winn
`Scott E. Davis
`
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`Portland, Oregon 97204
`
`/ John T. Gadd /
`John T. Gadd
`(Reg. No. 52,928)
`
`
`
`
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`11
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