Trials@uspto.gov
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`Paper No. 35
` Entered: July 13, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FREDMAN BROS. FURNITURE COMPANY, INC.,
`Petitioner,
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`v.
`
`BEDGEAR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00524
`Patent 9,155,408 B2
`____________
`
`
`Before HYUN J. JUNG, BART A. GERSTENBLITH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
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`Paper No. 35
` Entered: July 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREDMAN BROS. FURNITURE COMPANY, INC.,
`Petitioner,
`
`v.
`
`BEDGEAR, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00524
`Patent 9,155,408 B2
`____________
`
`
`Before HYUN J. JUNG, BART A. GERSTENBLITH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2017-00524
`Patent 9,155,408 B2
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`INTRODUCTION
`I.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claim 12, the only challenged claim of
`U.S. Patent No. 9,155,408 B2, is unpatentable.
`A. Procedural History
`Fredman Bros. Furniture Company, Inc. (“Petitioner”) filed a Petition,
`requesting institution of an inter partes review of only claim 12 of
`U.S. Patent No. 9,155,408 B2 (Ex. 1001, “the ’408 patent”) on a single
`ground of unpatentability. Paper 1 (“Pet.”). Bedgear, LLC (“Patent
`Owner”) timely filed a Preliminary Response. Paper 6. Pursuant to
`35 U.S.C. § 314(a), we instituted inter partes review of claim 12 of the
`’408 patent. Paper 7 (“Dec. on Inst.”).
`After institution, Patent Owner filed a Response (Paper 12, “PO
`Resp.”), to which Petitioner filed a Reply (Paper 19, “Pet. Reply”).
`Petitioner proffered a Declaration of Jennifer Frank Rhodes (Ex. 1012,
`“Rhodes Declaration” or “Rhodes Decl.”) with its Petition, and a Reply
`Declaration of Jennifer Frank Rhodes (Ex. 1030, “Rhodes Reply Decl.”)
`with its Reply. Patent Owner proffered a Declaration of
`Dr. Radhakrishnaiah Parachuru in support of its Preliminary Response
`(Ex. 2001) and in support of its Response (Ex. 2014, “Parachuru
`Declaration” or “Parachuru Decl.”). Deposition transcripts for
`Dr. Parachuru (Ex. 1028) and Ms. Rhodes (Exs. 2011, 2016) were filed.
`Patent Owner also filed Observations on Cross-Examination of
`Petitioner’s Reply Witness Jennifer Frank Rhodes (Paper 25), to which
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`Petitioner filed a response (Paper 28). As authorized in our Order
`(Paper 27), Patent Owner further filed a List of Improper Reply Arguments
`(Paper 29), to which Petitioner also filed a response (Paper 30).
`An oral hearing in this proceeding and Cases IPR2017-00350,
`IPR2017-00351, and IPR2017-00352 was held on March 20, 2018; a
`transcript of the hearing is included in the record (Paper 34, “Tr.”).
`B. Sole Ground of Unpatentability at Issue
`We instituted inter partes review on the only presented ground that
`claim 12, under 35 U.S.C. § 103(a), is unpatentable over Fry1 and Shelby2.
`Dec. on Inst. 2, 17.
`C. Related Proceedings
`The parties indicate that the ’408 patent has been asserted in Bedgear,
`LLC v. Fredman Bros. Furniture Co., Case No. 1:15-cv-6759 (E.D.N.Y.).
`See Pet. 76 (citing Ex. 1015); Paper 3, 2; Ex. 1015. Petitioner also indicates
`that it filed a lawsuit seeking declaratory judgment of non-infringement,
`which was dismissed without prejudice. See Pet. 76; Exs. 1017, 1018.
`D. The ’408 Patent (Ex. 1001)
`The ’408 patent issued October 13, 2015, from an application filed
`January 10, 2014, and claims priority to a provisional application filed
`January 10, 2013. Ex. 1001, [22], [45], [60], 1:5–7.
`The ’408 patent relates to “pillow protectors configured to prevent
`contamination of pillows disposed within the pillow protectors and to
`provide proper air flow around the pillows.” Id. at 1:11–14. Figures 1 and 2
`of the ’408 patent are reproduced below.
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`1 US 2009/0083908 A1, published Apr. 2, 2009 (Ex. 1005).
`2 US 2007/0283498 A1, published Dec. 13, 2007 (Ex. 1011).
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`Figure 1 shows a top view of a pillow cover or protector, and Figure 2
`is a side, cross-sectional view of the pillow cover or protector shown in
`Figure 1. Id. at 2:19–21, 2:22–23. “The system 10 including pillow
`cover 12 comprising a first panel 14 and a second panel 16 perimetrically
`joined with first panel 14 such that inner surfaces 18, 20 of first and second
`panels 14, 16 define a cavity 22 having a void volume configured for
`disposal of a pillow, such as, for example, pillow 24 of system 10.” Id. at
`3:4–9; see also id. at 1:41–2:12 (describing embodiments of a pillow
`protector or pillow cover with “first and second panels [that] define a cavity
`having a void volume” and a “pillow disposed in the cavity”).
`Opening 30 extends through first panel 14 and provides a pathway for
`air to the cavity. Id. at 4:12–14. Patch 32 engages surface 26 of first
`panel 14 to cover opening 30. Id. at 4:29–30. Pillow cover 12 can also
`include filter 34 that engages an inner surface so that opening 30 is between
`patch 32 and filter 34. Id. at 4:55–57.
`“By disposing pillow 24 in pillow cover 12, pillow cover 12 acts as a
`barrier to prevent staining of pillow 24 by perspiration, oil, etc.,” “allow[s]
`air surrounding pillow 24 to escape through opening 30,” “allows heat that
`may build up in cavity 22 to escape cavity 22 through opening 30,” and
`“cool[s] pillow 24 to provide a more comfortable sleep surface, as would be
`apparent to one of ordinary skill in the art.” Id. at 5:65–6:7. “Pillow 24 may
`be removed from pillow cover 12 by moving panel 14 from the second
`configuration to the first configuration and withdrawing pillow through
`opening 46.” Id. at 6:7–10.
`“In some embodiments, pillow 24 includes a cover 54 having a first
`panel 56.” Id. at 5:49–50. In another embodiment, instead of a pillow,
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`“pillow cover 12 is disposed in cavity 68” defined by an inner surface of
`pillowcase 48. Id. at 6:13–15. “[P]illow cover 12 is disposed in cavity 68
`such that surfaces 26, 28 engage surface 66.” Id. at 6:14–16.
`E. Claim 12
`Of the 17 claims in the ’408 patent, the only claim at issue, claim 12,
`is reproduced below:
`12. A bedding system, comprising:
`a pillow cover comprising:
`a first panel, and
`a second panel perimetrically joined with the first panel
`such that inner surfaces of the first and second panels define a
`cavity having a void volume, the first and second panels each
`being made from a first material, wherein an opening extends
`through the inner surface of the first panel and an outer surface
`of the first panel, the opening having a size, shape and
`arrangement, the pillow cover comprising a patch covering the
`opening, the patch being made from a second material that is
`different than the first material, the second material being more
`porous than the first material;
`a pillow disposed in the cavity,
`wherein the second panel is free of any openings having
`the size, shape and arrangement of the opening in the first panel;
`and
`
`wherein the pillow cover comprises a filter that engages
`an inner surface of the first panel such that the opening is
`positioned between the patch and the filter, the filter comprises a
`third material that is different than the first material, the third
`material being more porous than the first material.
`
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`Ex. 1001, 9:1–25.
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`CLAIM INTERPRETATION
`II.
`In an inter partes review, claim terms in an unexpired patent are
`interpreted 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).
`A. “pillow cover”
`Petitioner did not propose an interpretation for “pillow cover.” See
`Pet. 24–26. For the Decision on Institution, we interpreted claim 12 to
`require a “pillow” that is “disposed in the cavity” of a “pillow cover.” Dec.
`on Inst. 9. Patent Owner agrees that “the claimed ‘pillow cover’ is separate
`and distinct from the claimed ‘pillow’ disposed therein.” PO Resp. 16.
`According to Patent Owner, Petitioner’s implicit interpretation is “that the
`fabric cover or covering of these pillows is the ‘pillow cover,’ and that the
`fill material or filler inside these pillows is the ‘pillow’ required by
`claim 12.” Id.
`In view of the record before us, we interpret “pillow cover” to be
`separate and distinct from “pillow” (discussed further below), and we
`determine that no further express interpretation of “pillow cover” is
`necessary to resolve the parties’ disputes. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (determining that only those
`terms in controversy need to be construed, and only to the extent necessary
`to resolve the controversy).
`B. “pillow”
`Petitioner did not propose an interpretation for “pillow.” See
`Pet. 24–26. For the Decision on Institution, we disagreed with Patent Owner
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`that the term “pillow” requires a fill material inside a fabric cover. Dec. on
`Inst. 9 (citing Ex. 1001, 5:49–50).
`Patent Owner responds that one of ordinary skill in the art “would
`have understood the ordinary and customary meaning of a pillow to be a
`cover containing one or more fill materials.” PO Resp. 18 (citing Ex. 2011,
`17:11–20:23, 22:13–23:1); see also id. at 25 (arguing “the term ‘pillow’
`should be given its ordinary and customary meaning”) (citing Parachuru
`Decl. ¶ 92); Tr. 46:8–9.
`Patent Owner contends that, based on Petitioner’s arguments,
`“Petitioner’s implicit construction is that fill material, by itself, satisfies the
`claimed ‘pillow,’” which is at odds with the plain and ordinary meaning of
`pillow, the ’408 patent, Petitioner’s asserted references, and its declarant’s
`testimony. PO Resp. 16–17. Patent Owner also argues that Petitioner’s
`arguments rely on “pillow” as being “virtually anything that a person can
`comfortably rest his or her head upon, including a rolled up T-shirt.” Id. at
`27 (citing Ex. 2011, 36:5–38:20). According to Patent Owner, there is no
`support for “such a strained and overly broad interpretation,” other than a
`“bald statement from [Petitioner’s] expert that [one of ordinary skill in the
`art] would understand fill material (e.g., foams) to be a pillow” with no
`underlying objective support. Id. (citing Rhodes Decl. ¶¶ 77–78; Ex. 2011,
`25:20–26:15, 31:24–35:19).
`Petitioner replies that Patent Owner’s interpretation of “pillow” would
`require two covers. Pet. Reply 3 (citing Dec. on Inst. 9; PO Resp. 12,
`17–18; Ex. 1028, 27:1–5). Petitioner contends that our Decision on
`Institution rejected that position and no further evidence justifies changing
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`that conclusion. Id. at 4 (citing Dec. on Inst. 9; PO Resp. 38–39; Ex. 1001,
`5:49–50; Parachuru Decl. ¶ 80).
`Having the benefit of a fully developed record before us, we review
`anew the record and evidence to interpret “pillow.” We agree with Patent
`Owner that “the parties’ dispute is centered around the proper meaning of
`the claimed ‘pillow.’” PO Resp. 16; see also Tr. 46:4–5 (Patent Owner’s
`counsel arguing “the main dispute is over the two terms ‘pillow cover’ and
`‘pillow’ in claim 12”).
`1. Language of Claim 12
`Turning first to the language of the claim, claim 12 requires “a pillow
`cover comprising: a first panel, and a second panel perimetrically joined
`with the first panel such that inner surfaces of the first and second panels
`define a cavity having a void volume . . . [and] a pillow disposed in the
`cavity.” Ex. 1001, 9:2–15. Claim 12, thus, expressly and plainly requires a
`pillow cover that defines a cavity and a pillow disposed in that cavity. See
`PO Resp. 16. However, the language of claim 12 does not by itself indicate
`the scope of the term “pillow,” specifically whether the “pillow” requires its
`own cover surrounding fill material. See also Tr. 46:17–18 (Patent Owner’s
`counsel arguing “express claim language requires a pillow that’s disposed in
`the cavity of a pillow cover”), 57:22 (Petitioner’s counsel arguing “claim
`language does not require a conventional pillow”).
`“Pillow” is also used in other claims of the ’408 patent. For example,
`claim 14, which depends from claim 12, recites “layers being configured to
`engage one another when a pillow is not positioned in the cavity.” Ex. 1001,
`9:31–36. Similarly, claim 6, which depends from claim 1, recites “layers
`being configured to engage one another when a pillow is not positioned in
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`the cavity.” Id. at 8:43–47. Independent claim 16 recites a bedding system
`comprising a pillow cover having first and second panels that “define a
`cavity having a void volume” and “a pillow disposed in the cavity.” Id. at
`10:4–26. Although these claims support “pillow cover” being separate and
`distinct from a “pillow” disposed therein, these claims also do not indicate
`the scope of the term “pillow.”
`2. Specification
`Patent Owner argues that the ’408 patent uses “pillow” in a manner
`consistent with its plain and ordinary meaning. PO Resp. 25. According to
`Patent Owner, the Specification of the ’408 patent “confirms that the
`claimed ‘pillow’ includes its own cover that holds the fill material.” PO
`Resp. 25–26 (citing Ex. 1001, 1:1–14, 1:31–37, 5:45–6:10, Figs. 1, 3;
`Parachuru Decl. ¶¶ 63, 73–79, 86, 93–96). Patent Owner also argues that the
`’408 patent’s description that “[i]n some embodiments, pillow 24 includes a
`cover 54 . . . ” (Ex. 1001, 5:49–50) does not support a determination that
`“‘pillow’ is broad enough to encompass fill material without a fabric cover.”
`Id. at 28–29 (quoting Dec. on Inst. 9). Patent Owner contends that the
`context surrounding that description indicates that “the panel making up the
`pillow’s cover may be configured in various manners using material with
`particular properties.” Id. at 29 (citing Ex. 1001, 5:49–51, 5:56–64;
`Parachuru Decl. ¶¶ 87–90); see also Tr. 49:6–15, 50:2–12.
`Patent Owner further contends that the ’408 patent (1) does not
`suggest or discuss pillows without some form of cover, (2) does not equate
`any form of fill material with a pillow, and (3) does not use the terms fill
`material and pillow interchangeably. PO Resp. 30 (citing Parachuru Decl.
`¶¶ 91, 94–96). Patent Owner argues that the ’408 patent provides examples
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`of fill material that would not be considered a pillow and consistently uses
`the terms pillow and fill material “to refer to the pillow as a whole and the
`material contained inside the pillow.” Id. at 30 (citing Ex. 1001, 5:51–64).
`Patent Owner, thus, asserts that interpreting “pillow” to include fill material
`without a cover would be inconsistent with the Specification as a whole and
`contrary to the intrinsic and extrinsic evidence. Id. at 30–31; see also
`Tr. 48:3–19.
`Petitioner replies that, according to the ’408 patent, “cover 54 having
`first panel 56 is only present in some embodiments—thus, it is not required.”
`Pet. Reply 7 (citing Dec. on Inst. 9; PO Resp. 29; Ex. 1001, 3:4–9, 5:49–50;
`Ex. 1028, 8:16–18, 11:5–16; Rhodes Decl. ¶¶ 13–14); see also Tr. 24:4–6,
`58:10–11, 59:11–15 (Petitioner’s counsel arguing that pillow 24 is
`exemplary).
`We find that the ’408 patent describes pillow 24 as an example. See,
`e.g., Ex. 1001, 3:4–9 (“The system 10 including pillow cover 12 . . . having
`a void volume configured for disposal of a pillow, such as, for example,
`pillow 24 of system 10.”). Further, the ’408 patent states that “this
`disclosure is not limited to the specific devices, conditions or parameters
`described and/or shown herein, and that the terminology used herein is for
`the purpose of describing particular embodiments by way of example only
`and is not intended to be limiting of the claimed disclosure” and that the
`“description should not be construed as limiting, but merely as
`exemplification of the various embodiments.” Id. at 2:40–44, 8:4–6.
`In the “Summary,” the ’408 patent describes embodiments of a pillow
`protector or pillow cover with “first and second panels [that] define a cavity
`having a void volume.” Id. at 1:41–2:12. Some embodiments comprise a
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`“pillow disposed in the cavity.” Id. at 1:64, 2:10. We also find that the
`’408 patent describes other embodiments with at least one of the claimed
`features. See, e.g., id. at 4:55–57 (“In some embodiments, pillow cover 12
`includes a filter 34 that engages inner surface 18 such that opening 30 is
`positioned between patch 32 and filter 34.”), 5:49–50 (“In some
`embodiments, pillow 24 includes a cover 54 having a first panel 56.”), 6:11–
`13 (“In one embodiment, system 10 includes a pillowcase 48 having a first
`panel 62 and a second panel 64 perimetrically bounding, and joining second
`first panel 62.”). In another embodiment, instead of a pillow, “pillow cover
`12 is disposed in cavity 68” defined by an inner surface of pillowcase 48.
`Id. at 6:14–16 (“In one embodiment, pillow cover 12 is disposed in cavity 68
`such that surfaces 26, 28 engage surface 66.”). By describing various
`features of the many embodiments, the ’408 patent indicates that these
`features need not be present in all embodiments. See id. at 8:1–4 (“It will be
`understood that various modifications may be made to the embodiments
`disclosed herein. For example, features of any one embodiment can be
`combined with features of any other embodiment.”).
`The ’408 patent explains that “[b]y disposing pillow 24 in pillow
`cover 12, pillow cover 12 acts as a barrier to prevent staining of pillow 24”
`(id. at 5:65–66), “[b]ecause pillow 24 is disposed in cavity 22, cooling
`cavity 22 will also cool pillow 24” (id. at 6:4–6), and “[p]illow 24 may be
`removed from pillow cover 12” (id. at 6:7–8). We find that the ’408 patent
`indicates that the features of the various embodiments need not be present as
`long as pillow cover 12 acts as a barrier to prevent staining, cools pillow 24,
`and allows pillow 24 to be removed. See id. at 5:65–66, 6:4–8, 8:1–4. We
`do not find, and the record does not provide, any reason why a pillow
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`consisting only of fill material that is not loose, e.g., a foam block, cannot be
`pillow 24 and still allow pillow cover 12 to provide the described benefits of
`stain prevention, cooling, and removal of pillow 24.
`Patent Owner states that “[i]t is undisputed that the term ‘pillow’ is
`not expressly defined in the specification or prosecution history” and that
`there is no disavowal of claim scope with respect to “pillow.” PO Resp. 25.
`Petitioner states that, “the ’408 patent does not ‘disavow or disclaim any
`claim scope related to the term ‘pillow.’” Pet. Reply 8 (quoting Parachuru
`Decl. ¶ 92); see also Tr. 59:14–15 (Petitioner’s counsel arguing “the term
`‘pillow’ itself unless disclaimed is broad to encompass something that
`doesn’t require its own cover”). We agree with the parties that “the term
`‘pillow’ is not expressly defined in the specification” and that “the
`specification . . . does not set forth any disavowal of claim scope with
`respect to the claimed ‘pillow.’”
`For the reasons above, our findings regarding the Specification of the
`’408 patent do not provide a persuasive reason to interpret “pillow” so that it
`must always have a cover to hold fill material, as argued by Patent Owner.
`3. Prosecution History
`Patent Owner states that “[i]t is undisputed that the term ‘pillow’ is
`not expressly defined in . . . [the] prosecution history” and that the
`“prosecution history does not set forth any disavowal of claim scope with
`respect to the claimed ‘pillow.’” PO Resp. 25. Petitioner does not rely on
`the prosecution history of the ’408 patent to argue for a meaning of “pillow.”
`Pet. Reply 3–9.
`We agree with Patent Owner that the prosecution history of the
`’408 patent (Ex. 1002) does not address the meaning of “pillow” and does
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`not indicate that “pillow” was given a meaning other than its ordinary and
`customary meaning. See, e.g., Ex. 1002, 16, 25–37, 22, 106–129, 153–174
`(Applicant’s responses to Office Actions and interview summaries).
`We note that the Specification originally read that “[i]n some
`embodiments, pillow 24 includes a cover 54 having a first panel 56 and a
`second panel 58 perimetrically bounding, and joining first and second
`panels 56, 58” but was amended to read that “[i]n some embodiments,
`pillow 24 includes a cover 54 having a first panel 56.” See id. at 154
`(Applicant’s amendments to the Specification include: “In some
`embodiments, pillow 24 includes a cover 54 having a first panel 56 and a
`second panel 58 perimetrically bounding, and joining first and second panels
`56, 58.”), 222 (amending the corresponding sentence in ¶ 26 of the
`originally filed Specification that states “cover 54 having a first panel 56 and
`a second panel 58”). Although this particular amendment does not broaden
`pillow 24 to be only fill material, it makes clear that Applicant intended to
`broaden cover 54 to include only a single panel and thus, broaden “pillow”
`from having a cover with two panels 56, 58 to one panel 56 for embodiments
`including cover 54.
`4. Extrinsic Evidence
`The parties’ dispute acknowledges that the intrinsic record fails to
`provide enough guidance for us to rely on it exclusively for the proper
`interpretation of “pillow.” Both parties provide extrinsic evidence to argue
`the meaning of “pillow.” See PO Resp. 17–24, 27–28; Pet. Reply 3–4, 6, 8.
`We, therefore, turn to the extrinsic evidence of record to assist us in
`resolving between the parties’ conflicting positions concerning the ordinary
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`and customary meaning of “pillow,” as it would have been understood by
`one of ordinary skill in the art in the context of the entire disclosure.
`a. Dictionary Definitions
`Patent Owner provides dictionary definitions of pillow that Patent
`Owner contends define pillow as “a fabric cover or case that is stuffed with a
`soft material, such as feathers or foam.” PO Resp. 21 (citing Ex. 2003, 4;
`Ex. 2004, 3–4; Parachuru Decl. ¶ 84); see also Tr. 47:3–17 (Patent Owner’s
`counsel arguing that dictionary definitions require pillow to have a fabric
`cover). Petitioner does not address directly Patent Owner’s dictionary
`definitions. See Pet. Reply 3–9.
`Regarding Exhibit 2003, we find that the most relevant definitions for
`“pillow” in the context of the ’408 patent are “a usu. oblong support for the
`head, esp. in bed, with a cloth cover stuffed with feathers, down, foam
`rubber, etc.” and “any pillow-shaped block or support.” Ex. 2003, 4.
`Regarding Exhibit 2004, we find that the most relevant definition is “[a]
`cloth case stuffed with something soft, such as down, feathers, or foam
`rubber, used to cushion the head, especially during sleep.” Ex. 2004, 3–4.
`We note that the only definition in the record that relates to fill material that
`is not loose is Exhibit 2003’s “any pillow-shaped block or support,” which is
`also consistent with Petitioner’s interpretation.
`We, therefore, determine that Patent Owner’s dictionary definitions
`include both parties’ interpretation of “pillow,” in that the provided
`dictionary definitions indicate that “pillow” can mean “any pillow-shaped
`block or support,” “support for the head . . . with a cloth cover stuffed with
`feathers, down, foam rubber, etc.,” or “cloth case stuffed with something
`soft, such as down, feathers, or foam rubber, used to cushion the head.”
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`b. Other Patents and Asserted References
`Patent Owner cites other contemporaneous patents by the same
`inventor that use “pillow” to refer to fill material and a cover containing the
`fill material. PO Resp. 24 (quoting, in part, Ex. 2005, claims 1, 11, 17, and
`22; Ex. 2006, claims 8, 19, 20, 31; Ex. 2007, claim 8) (referring to Parachuru
`Decl. ¶¶ 82–83). Patent Owner further argues that Petitioner’s asserted
`references, Fry and Shelby, contradict Petitioner’s implicit interpretation.
`Id. at 21–23 (quoting Ex. 1005 ¶¶ 3, 17, 18; Ex. 1011 ¶ 53; Parachuru Decl.
`¶¶ 80, 81, 83, 85, 93–96). Petitioner replies that Patent Owner’s references
`do not show that “pillow” requires its own cover. Pet. Reply 6 (citing PO
`Resp. 24; Ex. 1005 ¶ 3; Ex. 1028, 16:7–21:22; Ex. 2005, 1:17–18).
`The portions of Exhibits 2005–2007 cited by Patent Owner indicate
`that the “pillow” claimed in those exhibits requires fill material and a cover
`containing the fill material. Those same exhibits, however, also state in their
`description of the background that the “use of a pillow made typically of a
`fabric cover stuffed with a compliant soft material is known in the prior art.”
`Ex. 2005, 1:17–18; Ex. 2006, 1:21–22; Ex. 2007, 1:24–25. As indicated by
`the word “typically,” these are non-limiting examples of pillows. Thus,
`these descriptions do not limit the ordinary and customary meaning of
`“pillow,” and “pillow” can be used more broadly than Patent Owner’s
`asserted interpretation.
`c. Declarant Testimony
`Relying on its declarant’s testimony, Patent Owner argues that
`“pillows are made up of fill material.” PO Resp. 17 (citing Parachuru Decl.
`¶¶ 80–86; Ex. 2011, 36:5–38:20); see also id. at 20–21 (arguing “to be a
`pillow there must at least be some form of fabric covering that holds the fill
`
`
`
`16
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`IPR2017-00524
`Patent 9,155,408 B2
`
`material together”) (citing Parachuru Decl. ¶¶ 93–96). Patent Owner asserts
`that one of ordinary skill in the art “would have also understood that such fill
`materials, by themselves, do not constitute a pillow.” Id. (citing Parachuru
`Decl. ¶¶ 80–86, 93–96). Patent Owner argues that similar fill material is
`described in the ’408 patent and the asserted references. Id. at 20 (citing
`Ex. 1001, 5:52–56; Ex. 1005 ¶¶ 3, 17, 18; Ex. 1011 ¶ 53; Parachuru Decl.
`¶¶ 80, 81, 83, 85).
`Petitioner replies that Patent Owner’s interpretation “reads out other
`forms of pillows, including solid memory foam pillows, which do not
`require a cover to hold fill material” (Pet. Reply 3–4 (citing Rhodes Reply
`Decl. ¶¶ 5–15)) and is inconsistent with the understanding of one of ordinary
`skill in the art (id. at 5 (citing Rhodes Reply Decl. ¶¶ 5–15)). Petitioner also
`contends that Patent Owner’s declarant did not consider solid foam pillows
`and uses “pillow” inconsistently. Id. at 5 (citing PO Resp. 17; Ex. 1028,
`11:21–24, 12:15–13:3, 27:6–16; Ex. 1029, 21:9–13; Rhodes Decl. ¶ 11;
`Parachuru Decl. ¶¶ 80, 93). Petitioner contends that solid fill materials were
`known and not required to be loose. Id. at 8 (citing Ex. 1028, 8:16–18,
`11:10–16, 24:5–7; Rhodes Reply Decl. ¶ 15). Petitioner further asserts that
`“pillow” was understood by persons of ordinary skill in the art to not require
`its own cover. Id. at 8.
`Turning to deposition testimony, Patent Owner contends that
`Petitioner’s declarant admitted that “fill materials without any covering
`would not be considered a pillow.” PO Resp. 18–20 (quoting Ex. 2011,
`27:8–28:5). Patent Owner points to statements in the deposition that it
`asserts undermines the basis of this opinion of Petitioner’s declarant. Id. at
`27–28 (citing Ex. 2011, 17:11–20, 18:22–20:23, 22:13–23:1, 29:20–30:7);
`
`
`
`17
`
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`IPR2017-00524
`Patent 9,155,408 B2
`
`see also Paper 25, 1–9 (observations on cross-examination of Ms. Rhodes)
`(citing Ex. 2016); Tr. 51:15–24 (Patent Owner’s counsel discussing
`Petitioner’s declarant testimony). Petitioner clarifies that its declarant
`agreed that loose fill material would require a cover to create a pillow but
`not that all pillows required a cover. Pet. Reply 8 (citing PO Resp. 26;
`Ex. 2011, 25:22–26:9, 26:19–29:4); see also Paper 28 (Petitioner’s response
`to Patent Owner’s observations) (discussing Ex. 2016).
`Both parties’ declarants agree that pillows include at least fill
`material. Rhodes Decl. ¶¶ 39–42, 48–51, 68, 69; Rhodes Reply Decl. ¶¶ 7–
`11; Ex. 2011, 25:22–26:9, 26:19–29:4; Parachuru Decl. ¶¶ 73–75, 80–85.
`The parties also agree that a cover is required to hold loose fill material, such
`as feathers and pieces of foam material. PO Resp. 20–21; Pet. Reply 3–5, 8.
`However, the record does not provide a persuasive reason for why fill
`material that is not loose cannot be a pillow by itself. For example,
`according to Patent Owner’s declarant, solid memory foam, which is fill
`material that is not loose, is not a pillow because it can absorb moisture and
`other substances. See Ex. 1028, 11:19–12:6 (Patent Owner’s declarant
`explained that “I do not consider a memory foam pillow without a cover as a
`pillow” because “a porous memory foam can absorb a lot of moisture, a lot
`of stuff that comes out of the skin . . . . ”), 14:1–9 (Patent Owner’s declarant,
`in response to “if I then removed the cover, does it then cease to be a
`pillow?,” answered: “Yes . . . [b]ecause . . . the memory foam is liable to --
`liable to go through deficiencies . . . . ”). The record, however, does not
`indicate why solid memory foam, even if it can absorb undesirable
`substances, fails to benefit from the described advantages of cover 12 of the
`’408 patent (Ex. 1001, 5:65–66, 6:4–8) or be a “block or support” (Ex. 2003,
`
`
`
`18
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`IPR2017-00524
`Patent 9,155,408 B2
`
`4). Thus, the declarants’ testimony in the record does not provide a reason
`for excluding a pillow that is merely fill material that is not loose.
`5. Determination as to “Pillow”
`In view of the intrinsic and extrinsic evidence in the record developed
`during trial, we determine that the ordinary and customary meaning of
`“pillow” includes “at least fill material that is not loose and with or without a
`cover to hold the fill material.” See also Google LLC v. Network-1 Techs.,
`Inc., 726 F.App’x 779, 785 (Fed. Cir. 2018) (“In other words, under the
`broadest reasonable construction standard, where two claim constructions
`are reasonable, the broader construction governs.”).
`C. Other Terms
`Petitioner proposes interpreting “third material” versus “second
`material.” Pet. 24–26. Petitioner, however, notes that “construction [of
`“third material” versus “second material”] is ultimately immaterial to the
`patentability of claim 12.” Id. at 26 n.3. For the Decision on Institution, we
`determined that express interpretations of these terms were not necessary.
`Dec. on Inst. 6.
`Patent Owner responds that deciding whether the second and third
`materials encompass being the same material “does not appear to be relevant
`to Petitioner’s sole asserted ground or any disputes between the parties.” PO
`Resp. 15. “Patent Owner submits that no specific construction is needed for
`these claim terms.” Id. Petitioner replies that it “agrees that construction of
`[‘second material’ and ‘third material’] is not necessary to resolve its
`challenge to Claim 12.” Pet. Reply 2–3.
`Based on the full record, we agree with the parties that interpreting
`“second material” and “third material” is not necessary for deciding whether
`
`
`
`19
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`IPR2017-00524
`Patent 9,155,408 B2
`
`Petitioner has demonstrated the unpatentability of claim 12 by a
`preponderance of the evidence. Vivid Techs., 200 F.3d at 803. We also
`determine that interpreting any other term is not necessary for deciding the
`parties’ disputes. Id.
`
`
`
`III. CHALLENGE OF CLAIM 12
`Petitioner contends that claim 12 would have been obvious over Fry
`and Shelby with citations to these references and the Rhodes Declaration
`(Ex. 1012). Pet. 23, 27–75. Patent Owner disputes the alleged
`unpatentability of claim 12, supported by citations to the asserted references
`and the declarations of Dr. Parachuru (Exs. 2001, 2014). See PO Resp. 37–
`53.
`
`To prevail in its challenge, under 35 U.S.C. § 103(a), of claim 12 as
`unpatentable over Fry and Shelby, Petitioner must prove unpatentability by a
`preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A
`claim is unpaten
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