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
`
`PETITION FOR INTER PARTES REVIEW
`
`

`

`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`I. Mandatory Notices ....................................................................................... 1
`
`II.
`
`Payment of Fees ............................................................................................. 2
`
`III. Grounds for Standing ..................................................................................... 2
`
`IV. The ’140 Patent .............................................................................................. 2
`
`V.
`
`The ’140 Patent Prosecution History ............................................................. 4
`
`VI. Statement of Precise Relief Requested for Each Claim Challenged ............. 7
`
`
`
`
`
`
`
`
`
`
`
`
`
`A. Effective filing date of the ’140 patent .................................................. 7
`
`B. Prior Art References .............................................................................. 7
`
`
`
`
`
`
`
`1. Ruan ................................................................................................. 7
`
`2. Cottrell ............................................................................................. 8
`
`3. Boice ................................................................................................ 8
`
`C. Grounds of Challenge ............................................................................ 8
`
`VII. Claim Construction ........................................................................................ 9
`
`
`
`
`
`A. The broadest reasonable construction of
`“in mechanical contact with” is “pressing against” ............................... 9
`
`B. The broadest reasonable construction of
`“coupled” is “affixed or engaged” ....................................................... 11
`
`VIII. The Prior Art References ............................................................................. 13
`
`
`
`
`
`
`
`A. The Boice Reference ............................................................................ 13
`
`B. The Ruan Reference ............................................................................. 15
`
`C. The Cottrell Reference ......................................................................... 17
`
` i
`
`

`

`D. The Boice, Ruan, and Cottrell references are each
`analogous art to the ‘’140 patent .......................................................... 18
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`
`
`IX. Ground 1: Claims 1 – 8 are obvious over Ruan in view of Cottrell ............ 19
`
`
`
`
`
`
`
`
`
`
`
`A. Claim 1 is unpatentable ........................................................................ 19
`
`
`
`
`
`
`
`1. It would have been obvious to combine Ruan and Cottrell .......... 19
`
`2. Ruan and Cottrell disclose all the elements of claim 1 ................. 23
`
`3. Claim 1 is unpatentable over Ruan in view of Cottrell ................. 29
`
`B. Claims 2 through 8 are unpatentable over Ruan in view of Cottrell ... 29
`
`X. Ground 2: Claims 1 – 8 are obvious over Boice in view of Ruan ............... 33
`
`
`
`
`
`
`
`
`
`
`
`A. Claim 1 is unpatentable .......................................................................... 33
`
`
`
`
`
`
`
`1. It would have been obvious to combine Boice and Ruan .............. 33
`
`2. Boice and Ruan disclose all the elements of claim 1 ..................... 37
`
`3. Claim 1 is unpatentable over Boice in view of Ruan .................... 41
`
`B. Claims 2 through 8 are unpatentable ................................................... 42
`
`XI. Conclusion ................................................................................................... 46
`
`
`
`
`
`
`
` ii
`
`

`

`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`Table of Authorities
`
`
`
`Cases
`
`Catalina Mktg. Int’l v. Coolsavings.com,
`289 F.3d 801 (Fed. Cir. 2002) .................................................................... 24, 37
`
`Cuozzo Speed Tech. v. Lee,
`__U.S.__, 136 S. Ct. 2131 (2016) ....................................................................... 9
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................... passim
`
`Scientific Plastic Prods. v. Biotage AB,
`766 F.3d 1355 (Fed. Cir. 2014) ........................................................................ 18
`
`Statutes
`
`35 U.S.C. § 103 .................................................................................................... 2, 8
`
`35 U.S.C. § 314(a) ................................................................................................... 2
`
`Rules
`
`37 C.F.R. § 42.100(b) .............................................................................................. 9
`
`
`
`
`
`
`
` iii
`
`

`

`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`List of Exhibits
`
`Exhibit 1001 U.S. Patent No. 7,585,140 to Howes et al, assigned to Cottrell
`Inc. (“the ’140 patent”)
`
`Exhibit 1002 Declaration of George Clark
`
`Exhibit 1003 U.S. Patent Application Publication No. US 2006/0013667 to
`Ruan, published January 19, 2006 (“Ruan”)
`
`Exhibit 1004 U.S. Patent No. 5,314,275 to Cottrell et al, issued May 24,
`1994 (“Cottrell”)
`
`Exhibit 1005 U.S. Patent No. 6,824,121 to Boice, issued November 30, 2004
`(“Boice”)
`
`Exhibit 1006 U.S. Patent Application No. 12/056,594, Accelerated
`Examination Support Document, filed June 5, 2008
`
`Exhibit 1007 U.S. Patent Application No. 12/056,594, Office Action, Final
`Rejection, filed November 20, 2008
`
`Exhibit 1008 U.S. Patent Application No. 12/056,594, Amendment and
`Response Accompanying Request for Continued Examination,
`filed February 20, 2009
`
`
`
` iv
`
`

`

`I. Mandatory Notices
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`Pursuant to Rules 42.22 and 42.104, Petitioner Boydstun Equipment
`
`Manufacturing, LLC (“Boydstun”) seeks inter partes review of claims 1 – 8 of
`
`U.S. Patent No. 7,585,140 (“the ’140 patent”). Pursuant to Rule 42.8(a)(1),
`
`Boydstun provides the following mandatory disclosures.
`
`Real Party-in-Interest: Boydstun Equipment Manufacturing, LLC
`
`Related Matters: The ’140 patent is the subject of pending litigation
`
`between Boydstun and Cottrell, Inc.1 On May 6, 2016, Boydstun filed a declaratory
`
`judgment complaint against Cottrell, Inc. requesting a declaration from the Court
`
`that Boydstun’s products do not infringe the ’140 patent.
`
`Lead Counsel: Stephen J. Joncus, Reg. No. 44,809; telephone:
`
`971.236.1200; steve@joncus.net.
`
`Back-up Counsel: David Madden, Reg. No. 67,100; telephone:
`
`503.679.1671; dhm@mersenne.com.
`
`Service Information: Please send all correspondence to lead counsel at:
`
`Joncus Law LLC, P.O. Box 838, Clackamas, Oregon 97015. Petitioner consents to
`
`service by e-mail at: steve@joncus.net and dhm@mersenne.com.
`
`
`1 Boydstun Equip. Manuf. v. Cottrell, Inc., 3:16-cv-790 (D. Or.).
`
` 1
`
`

`

`II.
`
`Payment of Fees
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`An electronic payment in the amount of $23,000 for the inter partes review
`
`fee specified by 37 C.F.R. § 42.15 (a)(1)—comprising the $9,000 request fee and
`
`$14,000 post-institution fee—is being paid at the time of filing this petition.
`
`III. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’140 patent is
`
`available for inter partes review and that Petitioner is not barred or estopped from
`
`requesting inter partes review of the ’140 patent or challenging the claims and
`
`grounds identified in this petition.
`
`At least one challenged claim is unpatentable. As further detailed below,
`
`claims 1 – 8 of the ’140 patent are obvious.2 Thus, there is a likelihood that at least
`
`one of the claims of the ’140 patent is unpatentable.3
`
`IV. The ’140 Patent
`
`The ’140 patent relates generally to the field of winch devices to tie-down
`
`cargo to vehicles. Winch tie-down devices commonly have a spool on which a
`
`strap, or a chain, is wound to restrain the cargo. The ’140 patent claims a winch tie-
`
`down apparatus for a vehicle transporter. The claimed ’140 winch employs a spool
`
`with two ratchets at one end of the spool. For clarity, this petition will refer to
`
`
`2 35 U.S.C. § 103.
`3 35 U.S.C. § 314(a).
`
` 2
`
`

`

`these two ratchets as the primary ratchet and the secondary ratchet.
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`The primary ratchet prevents the spool from unwinding when the strap is
`
`under tension. The ’140 winch has a shaft 480 with a ratchet gear 405 fixed to one
`
`end of the shaft so that the ratchet gear 405 rotates with the shaft 480 as a single
`
`unit.4 The teeth of the ratchet gear 405 engage a pawl 150 that prevents the shaft
`
`from rotating under tension from the strap until the pawl is released.5 This portion
`
`of the apparatus constitutes the primary ratchet.6
`
`The secondary ratchet is used to tighten the strap by rotating the spool in one
`
`direction with a repeating lever action. Connected to the ratchet gear 405 is a
`
`ratchet head 420 that drives the shaft 480 and ratchet gear 405 when rotated in a
`
`forward direction, but rotates freely with respect to the ratchet gear 405 and shaft
`
`480 assembly when rotated in the reverse direction.7 The ratchet head 420 has
`
`holes 421 in which a bar can be placed to provide a lever to rotating the winch to
`
`tighten the strap or chain on the cargo.8 This portion of the apparatus is the
`
`secondary ratchet.9
`
`The ’140 patent asserts that prior art winches with just a primary ratchet
`
`
`4 Ex. 1001 at Fig. 4.
`5 Ex. 1001 at 2:62-65.
`6 Ex. 1002 at ¶ 20.
`7 Ex. 1001 at 4:42-52.
`8 Ex. 1001 at 3:67-4:1.
`9 Ex. 1002 at ¶ 20.
`
` 3
`
`

`

`could only be rotated about 60 degrees at a time, before the bar would have to be
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`removed and relocated in different cross-holes to rotate the shaft further, with this
`
`process repeated to tighten the strap to the appropriate tension.10
`
`Using the secondary ratchet, the ’140 winch can be tightened with the same
`
`kind of movement as with a standard socket wrench—i.e., the ’140 winch can be
`
`tightened by rocking the bar back and forth which rotates the shaft in one direction
`
`to tighten the strap or chain, without the need to remove and reposition the bar.11
`
`V.
`
`The ’140 Patent Prosecution History
`
`The ’140 patent issued on September 8, 2009 from an application that was
`
`filed on March 27, 2008. The ’140 patent does not claim priority to any other
`
`patent application.
`
`The applicant sought accelerated examination, but it cited only two prior art
`
`references in its Information Disclosure Statement. One of the two prior art
`
`references cited was published patent application, US 2006/0013667 to Bu Qin
`
`Ruan published on January 19, 2006 (“Ruan”).
`
`Along with the original application, the ’140 Applicant filed a Petition to
`
`make special on March 27, 2008. The Petition to Make Special was denied and
`
`dismissed on May 7, 2008. Applicant requested reconsideration on June 5, 2008
`
`
`10 Ex. 1001 at 1:48-57.
`11 Ex. 1001 at 2:52-58.
`
` 4
`
`

`

`which was granted June 13, 2008.
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`As part of the its Petition to Make Special, Applicant filed an Accelerated
`
`Examination Support Document which contains admissions that are important to
`
`this Petition for Inter Partes Review.12 The Applicant’s analysis included an
`
`analysis of Ruan, a reference relied on by this Petition for Inter Partes Review.
`
`The Applicant’s analysis made numerous admissions about Ruan. For instance,
`
`Applicant admitted that the features of claims 2 and 4 were taught by Ruan.13
`
`Ruan discloses a cargo tie-down winch having primary and secondary
`
`ratchets. The primary ratchet prevents the winch from unwinding under tension
`
`from the strap; and the secondary ratchet drives the shaft when rotated in one
`
`direction but not the other.14
`
`The Patent Office twice rejected all of Applicant’s claims over Ruan, and a
`
`less relevant reference, US Pat. No. 4,382,736 to Thomas. In the end, however, the
`
`Examiner allowed the claims based on Applicant’s argument filed February 20,
`
`2009.15 Specifically, in its remarks filed February 20, 2009, Applicant argued the
`
`following:
`
`Applicants respectfully point out that Applicants’ ratchet assembly
`includes both the ratchet gear and the ratchet head in which “an inner
`
`12 Ex. 1006.
`13 Ex. 1006 p. 5 (“The features of Claim 2 are taught by Ruan.” “The features of Claim 4 are
`taught by Ruan.”).
`14 Ex. 1002 ¶¶ 26-27.
`15 Ex. 1008
`
` 5
`
`

`

`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`face of the ratchet gear is positioned in opposition to and in
`mechanical contact with an inner face of the ratchet head”. Applicants
`have also amended Claim 1 to clearly recite that the engagement teeth
`of the ratchet gear are included in the ratchet assembly. Furthermore,
`Applicants respectfully point out that the ratchet assembly is located
`on one end of the shaft. In contrast, Ruan shows fixed base 1 and
`rotating body 2 on one end of the shaft. However, Ruan clearly fails to
`show any sort of engagement teeth on this same end of the shaft.
`Quite clearly (although not labeled) Ruan shows teeth on the opposite
`end of the shaft (opposite the fixed base 1 and rotating body 2).
`Applicants respectfully point out that although the teeth are not
`labeled in Ruan, they are shown adjacent the label 4 (for the
`supporting frame) in Figure 1 of Ruan for example. As such,
`Applicants respectfully submit that Applicants’ ratchet assembly is
`included in one single piece that includes the ratchet gear (and
`engagement teeth), and the ratchet head all on one end of the shaft. In
`contrast, Ruan’s teeth are positioned opposite Ruan’s fixed base 1 and
`rotating body 2, thus not being an integral unit. Applicants
`respectfully submit that these structural features of Applicants'
`claimed invention clearly differentiate the claimed invention from
`Ruan. In particular, Applicants respectfully submit that Ruan clearly
`does not show all of Applicants' elements as arranged in Claim 1.16
`In other words, Applicant’s reason for distinguishing Ruan was that the
`
`Ruan primary and secondary ratchets are located on the opposite ends of the shaft,
`
`whereas in Applicant’s claimed invention, the first and second ratchets are both on
`
`the same end of the shaft.
`
`Based on the Applicant’s February 20, 2009 argument, the examiner allowed
`
`claims 1 through 8 on May 15, 2009 without further comment.
`
`
`16 Ex. 1008 pp. 6-7.
`
` 6
`
`

`

`VI. Statement of Precise Relief Requested for Each Claim Challenged
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests inter partes review of
`
`claims 1 – 8 of the ’140 patent, and a finding that each claim is unpatentable under
`
`35 U.S.C. § 103.
`
`A.
`
`Effective filing date of the ’140 Patent
`
`The ’140 patent application was filed on March 27, 2009; and prior to the
`
`effective date of the AIA. The ’140 patent does not claim priority any earlier filed
`
`patent application, hence the earliest effective U.S. filing date of the ’140 patent is
`
`March 27, 2009.
`
`B.
`
`1.
`
`Prior Art References
`
`Ruan
`
`“Rapid Roatating [sic] Device for Ratchet Belt Shaft,” U.S. Patent
`
`Publication No. US 2006/0013667 by Buy Qin Ruan (“Ruan”)17 was published on
`
`January 19, 2006, more than 3 years prior to the filing of ’140 application. Ruan is
`
`prior art to the ’140 patent under 35 U.S.C. § 102(b).
`
`
`17 Ex. 1003.
`
` 7
`
`

`

`2.
`
`Cottrell
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`“Safety Tie-Down Roller,” U.S. Patent No. 5,314,275 by D. Michael Cottrell
`
`and Don J. Cottrell (“Cottrell”)18 issued May 24, 1994. Cottrell is assigned to
`
`Cottrell, Inc., which also owns the ’140 patent. Cottrell is prior art to the ’140
`
`patent under 35 U.S.C. § 102(b).
`
`3.
`
`Boice
`
`“Wheel Securing Device,” U.S. Patent No. 6,824,121 by Arthur D. Boice
`
`(“Boice”)19 issued November 30, 2004. Boice is prior art to the ’140 patent under
`
`35 U.S.C. § 102(b).
`
`C. Grounds of Challenge
`
`The statutory grounds under U.S.C. §103 on which the challenge to the
`
`claims are based and the prior art relied upon for each ground are as follows.
`
`Ground 1: Claims 1 – 8 are obvious over Ruan in view of Cottrell.20
`
`Ground 2: Claims 1 – 8 are obvious over Boice in view of Ruan.21
`
`
`18 Ex. 1004.
`19 Ex. 1005.
`20 35 U.S.C. § 103.
`21 35 U.S.C. § 103.
`
` 8
`
`

`

`VII. Claim Construction
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`In this proceeding, claims are given the broadest reasonable interpretation in
`
`light of the specification.22 Petitioner notes that the claim construction standard in
`
`this proceeding is different from that applied in a district court proceeding.
`
`Accordingly, the constructions proposed herein do not preclude Petitioner from
`
`advancing alternative constructions, if appropriate, in any district court proceeding.
`
`A.
`
`The broadest reasonable construction of
`“in mechanical contact with” is “pressing against”
`
`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.23 The secondary ratchet turns the winch through 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 only structure recited in claim 1 to create 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.”24 No other element of
`
`claim 1 provides the structure for how the link-drive relationship is created.
`
`The phrase “in mechanical contact with” appears in the detailed description
`
`
`22 37 C.F.R. § 42.100(b); Cuozzo Speed Tech. v. Lee, __U.S.__, 136 S. Ct. 2131, 2142 (2016).
`23 Ex. 1002 ¶ 20.
`24 Ex. 1001 at 6:1-3 (emphasis added).
`
` 9
`
`

`

`portion of the specification only once. When describing the structure that creates
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`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.”25 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.26 A person of
`
`ordinary skill in the art would also understand that the spring loaded drive bodies
`
`are part of the ratchet head.27
`
`The Brief Summary also describes the ratchet gear and the ratchet head as
`
`“remaining in mechanical contact during both the forward direction and reverse
`
`direction.”28 A person of ordinary skill in the art would understand that according
`
`to the disclosed embodiments the spring loaded drive bodies—which press against
`
`the ratchet gear—are the only portions of the ratchet head that make contact with
`
`the ratchet gear in the forward and reverse direction.29
`
`
`25 Ex. 1001 at 4:47-52 (emphasis added).
`26 Ex. 1002 ¶ 22.
`27 Ex. 1002 ¶ 22.
`28 Ex. 1001 at 2:9-11.
`29 Ex. 1002 ¶ 23.
`
` 10
`
`

`

`A person of ordinary skill in the art would further recognize that
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`“mechanical contact” is something more than mere “contact.”30 In the cases in
`
`which the specification uses the term “mechanical contact,” it describes parts that
`
`press against each other. Therefore, a person of ordinary skill in the art would
`
`recognize that “in mechanical contact with” means “pressing against.”31
`
`The broadest reasonable construction of “mechanical contact” in light of the
`
`specification is “pressing against.”
`
`B.
`
`The broadest reasonable construction of “coupled” is “affixed or
`engaged.”
`
`The term “coupled” appears three times in Claim 1: “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.”32
`
`With respect to how the ratchet head is “coupled” to the ratchet gear, the
`
`specification states that the ratchet head and ratchet gear are “affixed” to each other
`
`via a retaining pin that permits the ratchet to rotate with respect to the ratchet
`
`gear.33 Therefore a person of ordinary skill in the art would understand “coupled”
`
`can mean “affixed.”34
`
`
`30 Ex. 1002 ¶ 23.
`31 Ex. 1002 ¶ 23.
`32 Ex. 1001 at 5:35-39 (emphasis added).
`33 Ex. 1001 at 3:32-37.
`34 Ex. 1002 ¶ 25.
`
` 11
`
`

`

`With respect to how the engagement teeth are “coupled” to the pawl, the
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`specification describes the pawl as “engaged” with the ratchet gear: “a ratchet gear
`
`405 having engagement teeth 406 configured to engage with a pawl mechanism as
`
`described herein.”35 But a person of ordinary skill in the art would understand that
`
`the pawl is not affixed to the ratchet gear.36 The pawl engages with the engagement
`
`teeth to prevent the winch from rotating in one direction.37 Therefore, as used in
`
`the ’140 patent, a person of ordinary skill in the art would understand that in the
`
`context of the ’140 patent, the term “coupled” also means “engaged.”38 Consistent
`
`with the specification, a person of ordinary skill in the art would therefore
`
`understand the claim term “coupled” to mean “affixed or engaged.”39 The broadest
`
`reasonable construction of “coupled” in light of the specification is “affixed or
`
`engaged.”
`
`
`35 Ex. 1001 at 2:63-65 (emphasis added).
`36 Ex. 1002 ¶ 25.
`37 Ex. 1001 at 2:63-65.
`38 Ex. 1002 ¶ 25.
`39 Ex. 1002 ¶ 25.
`
` 12
`
`

`

`VIII. The Prior Art References
`
`A.
`
`The Boice Reference
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
` Boice Fig. 1 with annotations
`
`Figures 1 and 2 of Boice require little additional explanation.40 It is a ratchet
`
`winch for tying down the wheel of a car to an automobile dolly.41 It consists of a
`
`shaft 23 rigidly connected to a ratchet gear 19 and a drive wheel 41.42 The ratchet
`
`gear 19 engages a latch 35 that prevents the strap from unwinding under tension.43
`
`The ratchet gear 19 and the drive wheel 41 are on the same end of the shaft so that
`
`they are accessible to the operator.44 A strap is tightened on the shaft by inserting a
`
`rod 45 onto a rod opening 43, rotating the shaft, removing the rod, replacing it into
`
`another rod opening, and rotating the shaft some more, until the strap was
`
`
`40 See Ex. 1005 Figs. 1, 2.
`41 Ex. 1005 at 1:7-10, Fig. 5.
`42 Ex. 1005 at 3:12-13; 3:43-45.
`43 Ex. 1005 at 3:28-37; Ex. 1002 ¶ 33.
`44 Ex. 1005 at 4:12-17.
`
` 13
`
`

`

`sufficiently tight over the car tire.45 Thus, the ratchet gear and latch provide a
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`primary ratchet that prevents the shaft from unwinding under tension from the
`
`strap.46
`
`Boice also recognized the utility of using a secondary ratcheting device to
`
`tighten the strap more efficiently. It provided a nut 47 on the end of the drive wheel
`
`41 for mounting a “commercially available ratchet wrench.”47 Thus, the Boice
`
`device could be tightened by positioning a “commercially available ratchet
`
`wrench” on the nut and rocking the handle of the “commercially available ratchet
`
`wrench” back and forth.48
`
`Boice therefore disclosed a winch used to tie-down cargo to a vehicle
`
`utilizing two ratcheting devices. The primary ratchet prevents the shaft from
`
`unwinding under tension from the strap. The secondary ratchet (a removable
`
`commercial ratchet wrench) tightens the strap without having to remove and
`
`replace the lever used to rotate the winch.
`
`Boice also teaches that, for winches used to tie-down automobiles, it is
`
`desirable to have the first and second ratchets at the same end of the winch where
`
`both ratchets are accessible to the operator.49
`
`
`45 Ex. 1005 at 3:45-55.
`46 Ex. 1002 ¶ 33.
`47 Ex. 1005 at 3:49-53.
`48 Ex. 1002 ¶ 35.
`49 Ex. 1002 ¶ 36.
`
` 14
`
`

`

`Boice was not cited by Applicant and was not considered by the Examiner
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`during examination of the application for the ’140 patent.
`
`B.
`
` The Ruan Reference
`
`Ruan is a ratcheting winch for tying down cargo to vehicle, such as a flat
`
`bed truck. Ruan is like Boice except (1) the secondary ratchet is built into the
`
`winch, and (2) the primary ratchet is at the opposite end of the shaft from the
`
`secondary ratchet.
`
`Ruan Fig. 1 with annotations
`
`Ruan discloses a spool having a belt shaft 3 rigidly connected to the ratchet
`
`gear on one end and rigidly connected to the fixed base 1 on the other end.50 Note
`
`that the term “fixed base” used by the Ruan patent may give the misimpression that
`
`the fixed base does not move. In fact, the fixed base 1 is “attached firmly” to the
`
`
`50 Ex. 1002 ¶ 26; Ex. 1003 ¶ 0008. Fig. 1.
`
` 15
`
`

`

`belt shaft51 and rotates with the belt shaft.52 As the Examiner pointed out: “Clearly
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`the base 1 of Ruan is designed to rotate with the rotating body 2 and the shaft 3.”53
`
`The rotating body will not drive the belt shaft when rotated in one direction,
`
`but will drive the belt shaft when rotated in the other direction.54 This “link-drive
`
`relationship” is created by slidable pushing-pins 8 that ride in slide grooves 5 in the
`
`fixed base 1.55 When the rotating body is turned in one direction, the pushing-pins
`
`ride up the inclined side of the groove and do not drive the belt shaft.56 But when
`
`the rotating body is turned in the other direction, the pushing-pins are stopped by
`
`the perpendicular side of the slide grooves and create a “link-drive relationship
`
`between the fixed base and rotating body.”57 “Under the turning moment of the
`
`rotating body, the fixed base will follow accordingly and thus drive the belt
`
`shaft.”58
`
`The rotating body with its pushing-pins thus forms a secondary ratchet that
`
`converts back-and-forth motion of the crowbar to rotation of the spool thereby
`
`tightening the belt without having to remove the crowbar.59
`
`
`51 E.g., Ex. 1003 ¶ 0008.
`52 E.g., Ex. 1003 ¶¶ 0010 – 0011.
`53 Ex. 1007 p. 8.
`54 Ex. 1003 ¶¶ 0010 – 0011.
`55 Ex. 1003 ¶¶ 0009, 0023.
`56 Ex. 1003 ¶¶ 0010, 0024.
`57 Ex. 1003 ¶¶ 0011, 0024.
`58 Ex. 1003 ¶ 0011.
`59 Ex. 1002 ¶ 27.
`
` 16
`
`

`

`Ruan was cited by Applicant and was considered by the Examiner during
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`examination of the application for the ’140 patent.
`
`C.
`
` The Cottrell Reference
`
`Cottrell is like Boice. Cottrell is directed to a winch for tying-down vehicles
`
`to a vehicle transporter.60 It discloses a shaft for winding a chain. The ratchet gear
`
`8 and ratchet pawl 9 form a primary ratchet that prevents the shaft from unwinding
`
`under tension.61 Like Boice, Cottrell teaches the use of a conventional ratchet
`
`wrench as a secondary ratcheting device to rotate the shaft.62
`
`Cottrell Fig. 11 with annotations
`
`Cottrell also teaches that, for an automobile transporter, the ratchet gear
`
`needs to be on the same side as the ratchet head to be accessible to the operator.
`
`
`60 Ex. 1004 at 1:6-7 (“The present invention relates generally to the field of tie-down rollers for
`car carrier trucks and trailers.”).
`61 Ex. 1002 ¶ 29.
`62 E.g., Ex. 1004 at 9:30-55 (explaining that a conventional ratchet wrench can be used to rotate
`the winch using the square aperture 49).
`
` 17
`
`

`

`Specifically, Cottrell states: “At the outside end of each tie-down bar where it can
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`be reached from outside of the car carrier and from outside of each car being
`
`carried, there is a ratchet wheel with a pawl pivotally positioned to fall between
`
`ratchet teeth to prevent the tie-down chain from unwinding and becoming loose.”63
`
`Like the ’140 patent itself, Cottrell is owned by Cottrell, Inc. Yet, Cottrell
`
`was not disclosed to the patent office during the prosecution of the ’140 patent, and
`
`was not cited by the Examiner.
`
`D.
`
`The Boice, Ruan, and Cottrell references are each
`analogous art to the ’140 patent
`
`The field of endeavor for the ’140 patent is “automobile and cargo transport,
`
`and more particularly, to a ratcheting tie-down apparatus and system.”64
`
`Each of the references disclose ratcheting winches for tying down cargo on
`
`transport vehicles. Boice and Cottrell are specifically directed to tying down
`
`automobiles on a transport vehicle. A person of ordinary skill in the art would
`
`recognize that that prior art references Boice, Ruan, and Cottrell are all in the same
`
`field of endeavor as the ’140 patent.65 Each of the prior art references are in the
`
`same field of endeavor and are therefore analogous art to the ’140 patent.66
`
`
`63 Ex. 1004 at 1:29-34.
`64 Ex. 1001 at 1:7-9.
`65 Ex. 1002 ¶ 18.
`66 See Scientific Plastic Prods. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (art in the
`same field of the inventor’s endeavor is analogous art).
`
` 18
`
`

`

`IX. Ground 1: Claims 1 – 8 are obvious over Ruan in view of Cottrell
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`A. Claim 1 is unpatentable
`
`1.
`
`It would have been obvious to combine Ruan and Cottrell
`
`Ruan discloses a primary ratchet for preventing the spool from unwinding
`
`under tension and a built-in secondary ratchet for tightening the winch using a
`
`ratcheting back-and-forth motion.67 Ruan shows the ratchet gear of the first ratchet
`
`is on the opposite end of the spool from the built-in second ratchet.
`
`The only difference between Ruan and claim 1 is that in claim 1, both
`
`ratchets are on the same end of the spool.68
`
`Cottrell discloses a winch with a primary ratchet for preventing the spool
`
`from unwinding under tension.69 The primary ratchet is made up of a ratchet gear 8
`
`having ratchet teeth 17 and a ratchet pawl 9 for preventing the spool from rotating
`
`in one direction.70
`
`Cottrell teaches that it would be useful to have a conventional ratchet
`
`wrench serve as a secondary ratchet for tightening the winch.71 Cottrell provides
`
`
`67 Ex. 1003 ¶¶ 0007 – 0013, Fig. 1; Ex. 1002 ¶ 37.
`68 Ex. 1002 ¶ 38.
`69 Ex. 1002 ¶ 29.
`70 Ex. 1004 Figs 10, 11.
`71 Ex. 1002 ¶ 31.
`
` 19
`
`

`

`for a wrench socket aperture for a conventional ratchet wrench to be attached for
`
`Patent No. 7,585,140
`Petition for Inter Partes Review
`
`
`tightening the winch.72
`
`Cottrell - Figs. 10 and 11 with annotations
`
`Cottrell teaches that the first and second ratchets need to be on the outboard
`
`side of a car hauler to be accessible to the operator.73 Specifically, Cottrell states:
`
`“At the outside end of each tie-down bar where it can be reached from outside of
`
`the car carrier and from outside of each car being carried, there is a ratchet wheel
`
`with a pawl pivotally positioned to fall between ratchet teeth to prevent the tie-
`
`down chain from unwinding and be