`Filed on behalf of: Boydstun Equipment Manufacturing, LLC
`By: Stephen Joncus
`
`JONCUS LAW LLC
`
`971.236.1200
`
`steve@joncus.net
`
`
`David Madden
`MERSENNE LAW
`503.679.1671
`dhm@mersenne.com
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOYDSTUN EQUIPMENT MANUFACTURING, LLC
`Petitioner
`v.
`COTTRELL, INC.
`Patent Owner
`
`IPR2017-00962
`Patent No. 7,585,140
`
`
`DECLARATION OF GEORGE CLARK
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,585,140
`
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`Page 1 of 17
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`I.
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`QUALIFICATIONS
`
`
`
`1. My academic background includes a bachelor and master's degree in
`
`Mechanical Engineering.
`
`2.
`
`I have over 36 years of practical engineering experience in a variety of
`
`industries including heavy equipment, automotive, aerospace, consumer product,
`
`medical instrument and several others. My professional background includes new
`
`product concept ideation, mechanical and mechanism design, and structural
`
`analysis.
`
`3.
`
`I am listed as an inventor on over 30 United States patents and several
`
`European patents.
`
`II. COMPENSATION
`
`4.
`
`I am being compensated by Boydstun Equipment Manufacturing, LLC
`
`at my compensation rate of $185/hour for consulting and for testimony in deposition
`
`or trial, plus reimbursement for reasonably incurred expenses. I have no personal or
`
`financial interest in the outcome of the related litigation or this proceeding.
`
`III.
`
`SUMMARY OF MY STUDY AND CONCLUSIONS
`
`5.
`
`I have read U.S. Patent 7,585,140 (“the ’140 patent”) which indicates
`
`that the application for the patent was filed on March 27, 2008. The application for
`
`the ’140 patent concerns technology within my areas of expertise. I have considered
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`2
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`the patent’s disclosures from the perspective of a person of ordinary skill in the art in
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`2007 - 2008.
`
`6.
`
`I have studied the following references and considered them from the
`
`perspective of the person of ordinary skill in the art in 2007 – 2008.
`
`7.
`
`Ruan (Ex. 1003): U.S. Patent Publication No. US 2006/0013667,
`
`“Rapid Roatating [sic] Device for Ratchet Belt Shaft,” published January 19, 2006
`
`on an application filed July 14, 2005. (“Ruan”)
`
`8.
`
`Cottrell (Ex. 1004): D. Michael Cottrell and Don J. Cottrell, U.S.
`
`Patent No. 5,314,275, “Safety Tie-Down Roller,” issued May 24, 1994 on an
`
`application filed April 27, 1992. (“Cottrell”)
`
`9.
`
`Boice (Ex. 1005): Arthur D. Boice, U.S. Patent No. 6,824,121, “Wheel
`
`Securing Device,” issued November 30, 2004 on an application filed January 25,
`
`2003 (“Boice”).
`
`10.
`
`I have compared these references to claims 1 – 8 of the ’140 patent. I
`
`have considered the perspective of the person of ordinary skill in the art in 2007 –
`
`2008 who was designing a ratcheting tie-down for securing vehicles to an automobile
`
`transporter.
`
`11. The claims of the ’140 patent recite nothing innovative compared to
`
`these references. More specifically, Cottrell describes a mechanism of the same
`
`functionality as Claim 1 of the ’140 patent and explicitly suggests the usefulness of a
`
`3
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`second ratchet. This is also true of Boice which describes a mechanism of the same
`
`functionality as Claim 1 of the ’140 patent while teaching the usefulness of a second
`
`ratchet. Both Cottrell and Boice show the advantage of having the primary and
`
`secondary ratchets on the same end of the shaft.
`
`12. Ruan describes several specific methods of combining two ratcheting
`
`systems to more rapidly and safely secure goods. Ruan specifically shows the
`
`mechanism described in claims 2 through 7 of the ’140 patent.
`
`IV. LEVEL OF SKILL IN THE ART IN 2007 - 2008
`
`13. My expectations of those with ordinary skill in this art are based on my
`
`experiences of the past 36 years working with and leading engineers and other
`
`technically focused individuals on mechanism development projects. I am familiar
`
`with the skill possessed by a person with ordinary skill in the art by working with and
`
`managing engineers with such skills.
`
`14.
`
`In my opinion, a person of ordinary skill in this art in 2007 – 2008
`
`would hold a bachelor of science degree in Mechanical Engineering.
`
`15. Alternatively, a person of ordinary skill in the art would have developed
`
`skill in mechanical devices through a number of years of experience working on the
`
`design and construction of mechanical devices.
`
`4
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`16. A person of ordinary skill in this art in 2007 – 2008 would be familiar
`
`with ratcheting mechanisms (as used with tie-down straps) and familiar with
`
`standard ratchet wrenches available at any tool supply outlet.
`
`V.
`
`FIELD OF THE ’140 PATENT
`
`17. The ’140 patent states that the “present invention relates generally to
`
`automobile and cargo transport, and more particularly, to a ratcheting tie down
`
`apparatus and system.”1
`
`18. A person of ordinary skill in the art would recognize that prior art
`
`references Boice, Ruan, and Cottrell are all in the same field of endeavor as the ’140
`
`patent. Both Boice and Cottrell disclose ratcheting systems for tying down
`
`automobiles to a cargo transport vehicle. Ruan discloses a ratcheting system for tying
`
`down general cargo to a cargo transport vehicle.
`
`VI. THE ELEMENTS OF CLAIM 1 OF THE ’140 PATENT
`
`19. Claim 1 of the ’140 patent states:
`
`1. A ratcheting tie down system for a vehicle transporter having one or
`more vehicle platforms, the system comprising:
`
` a
`
` ratchet assembly affixed to an end of a tie down shaft having a
`longitudinal axis, the tie down shaft being affixed to one of the one or more
`vehicle platforms:
`
` a
`
` pawl mechanism coupled to the ratchet assembly, wherein the ratchet
`assembly comprises:
`
`
`1 Ex. 1001 (’140 patent) at 1:7-9.
`
`5
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`a ratchet gear having engagement teeth coupled to the pawl mechanism;
`
` ratchet head coupled to the ratchet gear,
`
` a
`
`
`wherein an inner face of the ratchet gear is positioned in opposition to and
`in mechanical contact with an inner face of the ratchet head, and
`
`wherein the ratchet gear, the ratchet head and the shaft are configured to
`rotate as a single integral unit when rotated in a forward direction about the
`longitudinal axis, and the ratchet head is configured to rotate with respect to
`the ratchet gear and the shaft when the ratchet head is rotated in a reverse
`direction about the longitudinal axis.
`
`20.
`
`In broad terms, claim 1 is directed to a ratcheting winch with two
`
`ratchets: a primary ratchet that prevents the strap from unwinding when under
`
`tension; and a secondary ratchet for tightening the winch by rotating the spool in one
`
`direction with a repeating lever action. In order for the secondary ratchet to turn the
`
`winch there has to be a link-drive, relationship between the secondary winch and the
`
`rest of the winch so that the winch turns when the secondary ratchet is rotated in one
`
`direction but not the other. The structure recited in claim 1 to perform this link-drive
`
`relationship is “wherein an inner face of the ratchet gear is positioned in opposition
`
`to and in mechanical contact with an inner face of the ratchet head.”
`
`21. The operative phrase for the link-drive structure in claim 1 is the phrase
`
`“in mechanical contact with.” I have been asked to construe the term “in mechanical
`
`contact with” according to its broadest reasonable interpretation consistent with the
`
`specification.
`
`6
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`22. The detailed description portion of the specification uses the term “in
`
`mechanical contact with” only once. When describing the structure that creates the
`
`link-drive relationship, the ’140 specification states: “Rotation of the ratchet gear
`
`405 and the ratchet head 420 in the opposite direction forces the spring-loaded drive
`
`bodies 430 into the lower-most portion 410 and against and in mechanical contact with
`
`the wall 411 of the ramped pockets 407, resulting in a lock up condition between the
`
`ratchet gear 405 and the ratchet head 420.”2 A person of ordinary skill in the art
`
`would understand that this mechanical contact is made by the drive bodies pressing
`
`against the wall of the ramped pockets. And a person of ordinary skill in the art
`
`would understand that the spring-loaded drive bodies are part of the ratchet head.
`
`23. The term “in mechanical contact” is also used in the Brief Summary
`
`portion the ’140 patent, which states that: “the ratchet gear and the ratchet head
`
`remain[] in mechanical contact during both the forward direction and reverse
`
`direction.”3 A person of ordinary skill in the art would understand that the only part
`
`of the ratchet head that are designed to maintain contact with the ratchet gear in the
`
`forward and reverse direction are the spring loaded drive bodies 430 that are pressed
`
`against the ratchet gear. A person of ordinary skill in the art would recognize that
`
`“mechanical contact” is something more than mere “contact.” Therefore, consistent
`
`
`2 Ex. 1001 (’140 patent) at 4:47-52 (emphasis added).
`3 Ex. 1001 (‘’140 patent) at 2:9-11.
`
`7
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`with the use of “mechanical contact” in the detailed description of the specification,
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`a person of ordinary skill in the art would interpret “in mechanical contact with” to
`
`mean “pressing against.” A person of ordinary skill in the art would recognize that
`
`the “mechanical contact” limitation of claim 1 must be the drive bodies that press
`
`against the ratchet gear and cause a lock up condition when the ratchet head is
`
`rotated in one direction.
`
`24.
`
`I have been asked to construe the term “coupled” according to its
`
`broadest reasonable interpretation consistent with the specification. Claim 1 uses
`
`“coupled” in three phrases:
`
`
`
`
`
`
`
`“a ratchet head coupled to the ratchet gear;”
`
`“a pawl mechanism coupled to the ratchet assembly;” and
`
`“a ratchet gear having engagement teeth coupled to the pawl
`
`mechanism.”4
`
`25. The specification states that the ratchet head and ratchet gear are
`
`“affixed” to each other.5 Therefore a person of ordinary skill in the art would
`
`understand the term “coupled” to mean “affixed.” Elements of claim 1 also recite
`
`that the pawl mechanism is coupled to the ratchet assembly. The specification
`
`describes the pawl as “engaged” with the ratchet gear: “a ratchet gear 405 having
`
`
`4 Ex. 1001 (’140 patent) at 5:35-39.
`5 Ex. 1001 (’140 patent) at 3:32-37.
`
`8
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`engagement teeth 406 configured to engage with a pawl mechanism as described
`
`herein.”6 A person of ordinary skill in the art would understand that the pawl is not
`
`affixed to the ratchet gear. Therefore, a person of ordinary skill in the art would
`
`understand that in the context of the ’140 patent, the term “coupled” to also mean
`
`“engaged.” Consistent with the specification, a person of ordinary skill in the art
`
`would therefore understand the claim term “coupled” to mean “affixed or engaged.”
`
`VII. SPECIFIC TEACHINGS OF RUAN TO
`A PERSON OF ORDINARY SKILL IN THE ART
`26. Ruan shows a ratchet tie-down device for securing goods to a car or
`
`truck. The text and drawings describe a method of combining two ratcheting
`
`systems such that a securing belt is rapidly and safely tightened with a back-and-forth
`
`motion of a crowbar inserted into a hole on a rotating body. Ruan shows a spool on
`
`which a belt is wound. On one end of the spool is the primary ratchet system. On
`
`the other end of the spool is a secondary ratchet system.
`
`27. The function of the primary ratchet is to prevent the spool from
`
`unwinding under tension from the belt. The primary ratchet has a ratchet gear with
`
`teeth which engage with a pawl to prevent the spool from unwinding. The secondary
`
`ratchet system has holes for the crowbar or other rigid rod for applying rotational
`
`force. The secondary ratchet is in a link-drive relationship with the spool. The link-
`
`
`6 Ex. 1001 (’140 patent) at 2:63-65.
`
`9
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`drive relationship is created by a series of spring-mounted pins in a rotating body that
`
`engage with ramped grooves in a disk portion of the spool. When rotated in one
`
`direction the spring-mounted pins in the rotating body slide up the ramps in the
`
`ramped grooves so that rotation of the rotating body will not drive rotation of the
`
`spool. When rotated in the other direction, the spring-mounted pins in the rotating
`
`body are stopped by a perpendicular side of the slide grooves so that rotation of the
`
`rotating body will drive rotation of the spool. The function of the secondary ratchet
`
`is to convert back-and-forth motion of the crowbar to rotation of the spool in one
`
`direction thereby tightening the belt without having to remove the crowbar.
`
`28. According to the drawings, the length of the belt tightening shaft, and
`
`that of the entire device is sized to accommodate one belt. Given this compact size,
`
`an operator of the Ruan device has easy/simultaneous access to both the belt
`
`tightening means (the secondary ratchet) and the means for intentional release of the
`
`belt's tension (the primary ratchet).
`
`VIII. SPECIFIC TEACHINGS OF COTTRELL TO
`A PERSON OF ORDINARY SKILL IN THE ART
`29. Cottrell describes a tie-down system for car carrier trucks and trailers.
`
`Like Ruan it discloses a spool. The spool in Cottrell is used to wind a chain for tying
`
`down cars to a vehicle transporter. Like Ruan, it discloses a primary ratchet having
`
`teeth that engage with a pawl. The function of the Cottrell primary ratchet is the
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`same as the primary ratchet in Ruan—to prevent the spool from unwinding under
`
`tension.
`
`30. Cottrell teaches that the primary ratchet needs to be located on the
`
`outside end of the spool on a vehicle transporter so that it can be conveniently
`
`accessed by the operator.
`
`31.
`
` Cottrell also teaches the benefit of a secondary ratchet. Cottrell
`
`provides a convenient means of attaching a standard ratchet wrench to the winch in
`
`place of a rod. The use of a standard ratchet wrench provides the function of a
`
`secondary ratchet so that rapid back-and-forth motion of the wrench tightens the
`
`chain.
`
`32. Cottrell teaches that with the use of a standard ratchet wrench, the
`
`operator has convenient/simultaneous access to both the primary and secondary
`
`ratchets on the outside of the vehicle transporter. A person of ordinary skill in the art
`
`would appreciate the advantage of locating both the primary and secondary ratchets
`
`on the same end of the shaft on the outside of the vehicle transporter. Locating both
`
`ratchets on the outside of the vehicle transporter allows the operator to increase, or
`
`intentionally release chain tension from the same convenient location.
`
`IX.
`
`SPECIFIC TEACHINGS OF BOICE TO
`A PERSON OF ORDINARY SKILL IN THE ART
`33. Boice describes a tie-down system for transporting cars on a car dolly.
`
`Like Ruan and Cottrell, it discloses a spool. The spool in Boice is used to wind a strap
`
`11
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`for tying down a tire to a car dolly. Like Ruan and Cottrell, it discloses a primary
`
`ratchet having teeth that engage with a pawl. The function of the Boice primary
`
`ratchet is the same as the primary ratchets in Cottrell and Ruan—to prevent the spool
`
`from unwinding under tension.
`
`34. Boice teaches that the primary ratchet needs to be located on the outside
`
`end of the spool on a car dolly so that it can be conveniently accessed by the
`
`operator.
`
`35. Boice also teaches the benefit of a secondary ratchet. Boice provides a
`
`nut for mounting a standard ratchet wrench to the winch in place of a rod. The use
`
`of a standard ratchet wrench provides the function of a secondary ratchet so that
`
`rapid back-and-forth motion of the wrench tightens the strap on the spool.
`
`36. Boice teaches that with use of a standard ratchet wrench, the operator
`
`has convenient/simultaneous access to both the primary and secondary ratchets on
`
`the outside of the car dolly. A person of ordinary skill in the art would appreciate the
`
`advantage of locating both the primary and secondary ratchets on the same end of
`
`the shaft on the outside of a device for transporting vehicles. Locating both ratchets
`
`on the outside of a vehicle transporter allows the operator to increase, or
`
`intentionally release, chain tension from the same convenient location.
`
`X.
`
`COMBINING REFERENCES
`
`A. Combining Ruan with Cottrell
`
`12
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`37. Ruan discloses a tie-down winch for cargo with primary and secondary
`
`ratchets. The Ruan primary ratchet serves to prevent the spool from unwinding
`
`under tension from the strap. The Ruan primary ratchet has the same function as the
`
`primary ratchet claimed in claim 1 of the ’140 patent. The Ruan secondary ratchet
`
`serves to tighten the winch using an a back-and-forth motion. The Ruan secondary
`
`ratchet has the same function as the secondary ratchet claimed in claim 1 of the ’140
`
`patent.
`
`38. The only difference between claim 1 and the Ruan ratchet is that claim
`
`1 has both ratchets on the same end of the spool for use on a vehicle transporter,
`
`whereas Ruan discloses ratchets on the opposite ends of the spool as that
`
`configuration is convenient for tying down cargo on, for example, a flat-bed truck.
`
`39. Cottrell teaches that the first ratchet and second ratchets need to be on
`
`the outboard side of a car hauler for convenient access by the operator of a vehicle
`
`transporter.
`
`40. A person with ordinary skill in the art would know that when securing a
`
`vehicle or other goods, the operator of a vehicle transporter needs convenient access
`
`to both the means for tightening the winch and the means for loosening the winch
`
`from the side of the vehicle transporter. For example, the operator may need to
`
`rapidly switch between tightening and loosening of the securing means (i.e. strap or
`
`chain). If the operator notices a twist in the chain or strap while tightening, he/she
`
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`then needs to release the tension so the twist can be alleviated. Therefore, safe
`
`operation of a tie-down mechanism dictates that the operator needs to have
`
`convenient and ready access to both ratchets.
`
`41.
`
`In another scenario, the operator may notice that the chain/strap is not
`
`wrapping uniformly around the shaft during tightening. Once again, he/she needs to
`
`quickly relieve the tension and alleviate the issue before further tightening. If
`
`tightening/loosening is not convenient to the operator, he/she may not alleviate the
`
`issue and simply continue tightening. In that case, when the loaded car hauler is
`
`driven over bumps, the tension could be loosened when the miss-wrapped
`
`chain/strap self-relieves thus providing an unsafe condition.
`
`42. Combining Ruan with Cottrell would create the device claimed in claim
`
`1 of the ’140 patent. The only change necessary to modify Ruan to create the device
`
`encompassed by claim 1 of the ’140 patent is to move the primary ratchet to the same
`
`end of the spool as the secondary ratchet as taught by Cottrell. This combination
`
`arranges known elements with no change in their respective functions. When both
`
`ratchets are located on the same end of the spool, the primary and secondary ratchets
`
`would serve the same respective functions as they do in Ruan.
`
`43. A person with ordinary skill in the art would recognize that both
`
`ratchets in Ruan could be located on the same end of the spool and would recognize
`
`the benefit of this design for a vehicle transporter. To accomplish this, one would just
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`have to put teeth on the fixed base and add a pawl. Relocating the Ruan primary
`
`ratchet to the same end of the spool as the secondary ratchet is a predictable use of
`
`these prior art elements according to their established functions. A person of ordinary
`
`skill in the art would have been motivated to combine Ruan with Cottrell to make the
`
`device claimed in claim 1 of the ’140 patent.
`
`44. Cottrell taught there was a design need for both the primary and
`
`secondary ratchets to be located on the same end of the spool. Ruan provided an
`
`obvious example of a winch having built-in primary and secondary ratchets.
`
`Modification of Ruan to locate both the primary and secondary ratchets on the same
`
`end of the spool is a predictable solution to satisfying the design need taught by
`
`Cottrell. A person having ordinary skill in the art would anticipate that the
`
`combination of Cottrell and Ruan would be successful. For a person having ordinary
`
`skill in the art, it would have been obvious to try to combine the elements of Ruan
`
`with Cottrell.
`
`45. A person having ordinary skill in the art would have combined Ruan
`
`with Cottrell in the fashion encompassed by claim 1 of the ’140 patent, and would
`
`have seen the benefits of doing so.
`
`B.
`
`Combining Boice with Ruan
`
`46. Boice discloses a primary ratchet on the outboard side of an automobile
`
`towing dolly for access by the operator. The Boice primary ratchet serves to prevent
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`the spool from unwinding under tension from the strap. The Boice primary ratchet
`
`has the same function as the primary ratchet claimed in claim 1 of the ’140 patent.
`
`Boice also teaches the usefulness of a secondary ratchet. The only difference between
`
`claim 1 of the ’140 patent and Boice is that claim 1 has a built-in secondary ratchet
`
`whereas Boice employs a removable secondary ratchet.
`
`47. Ruan teaches how a built-in secondary ratchet can be included in a
`
`winch. A person of ordinary skill in the art would take the Ruan secondary ratchet
`
`and couple it to the Boice primary ratchet. The Ruan slide grooves would be formed
`
`in the Boice ratchet gear. The Ruan rotating body with its pushing-pins would be
`
`coupled to the ratchet gear so that the pushing pins pressed into the slide grooves for
`
`form the ratchet head. The pressing contact between the pushing pins and the slide
`
`grooves would create the mechanical contact between the inner face of the ratchet
`
`gear and the ratchet head.
`
`48. Combining Boice with the secondary ratchet of Ruan would create the
`
`device claimed in claim 1 of the ’140 patent. This combination unites known
`
`elements with no change in their respective functions. The secondary ratchet of
`
`Ruan performs the same function of tightening the spool when it is combined with
`
`Boice. A person of ordinary skill in the art would recognize that the secondary
`
`ratchet of Ruan could be used to improve Boice in the same way that the secondary
`
`ratchet in Ruan was an improvement over the prior to Ruan, for example, the prior
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`art winch shown in Fig. 5 of Rua.11. The combination of Boice and Ruan is a
`
`predictable use of the prior art elements according to their established functions. A
`
`person of ordinary skill in the art would have been motivated to combine Ruan with
`
`Bake to make the device claimed in claim 1 of the '140 patent
`
`49 .
`
`Boice taught that there was a design need for a secondary ratchet.
`
`Ruan provided an obvious example of how a secondary ratchet could be added to
`
`the Boicewinch . The combination of the winches disclosed in Boice and Ruan is a
`
`predictable solution to providing a winch with a secondary ratchet. A person of
`
`ordinary skill in the art would anticipate that the combination of Boice and Ruan
`
`would be successful. For a person of ordinary skill in the art, it would have been
`
`obvious to try to combine the elements of Boice with the secondary ratchet of Ruan.
`
`50.
`
`A person having ordinary skill in the art would have combined Boice
`
`with Ruan_in the fashion encompassed by claim 1 of the '140 patent, and would have
`
`seen the benefits of doing so.
`
`I declare under penalty of perjury under the laws of the United States
`
`that the foregoing is true and correct
`
`Executed on the 21st day of February, 2017 .
`
`dA-~
`
`George Clark
`
`17
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