`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BOYDSTUN EQUIPMENT MANUFACTURING, LLC,
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`Petitioner,
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`v.
`COTTRELL, INC.,
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`Patent Owner.
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`__________________
`
`
`Case IPR2017-00962
`Patent 7,585,140 B1
`
`__________________
`
`
`PATENT OWNER’S MOTION TO AMEND
`UNDER 37 CFR § 42.121
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`
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`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`EXHIBIT LIST ........................................................................................................ ii
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`THE MOTION AND PROPOSED AMENDMENTS COMPLY
`WITH 37 C.F.R. § 42.121 .............................................................................. 2
`III. CLAIM LISTING ........................................................................................... 3
`IV. LEVEL OF ORDINARY SKILL ................................................................... 3
`V.
`CLAIM CONSTRUCTION ........................................................................... 3
`VI. SCOPE OF SUBSTITUTE CLAIMS ............................................................ 6
`VII. SUPPORT IN THE ORIGINAL DISCLOSURE .......................................... 6
`VIII. CLAIMS 9-16 ARE PATENTABLE OVER THE PRIOR ART ................ 11
`A.
`Claims 9-16 describe a novel ratchet assembly ................................. 11
`B.
`Claims 9-16 are distinguishable ......................................................... 13
`1.
`Ruan ......................................................................................... 13
`2.
`Cottrell ..................................................................................... 16
`3.
`Boice ........................................................................................ 19
`4.
`Ruan and Cottrell ..................................................................... 21
`5.
`Boice and Ruan ........................................................................ 22
`6.
`Other prior art ........................................................................... 23
`IX. CONCLUSION ............................................................................................. 25
`
`
`
`i
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`

`

`
`
`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`
`EXHIBIT LIST
`
`Ex. 2001
`
`Ex. 2002
`
`Declaration of Kyle M. Amborn in Support of Motion for Pro Hac
`Vice Admission
`
`Declaration of Kirsten M. Carr, Ph.D., PE
`
`Ex. 2003
`
`Transcript for Deposition of George A. Clark, November 10, 2017
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`
`
`USPTO File History for U.S. Patent No. 7,585,140 B1
`
`U.S. Patent No. 5,101,537 to Cummings
`
`Opinion and Order on Claim Constructions, Boydstun Equip. Mfg.
`v. Cottrell, No. 3:16-cv-790 (D. Or. Oct. 18, 2017).
`
`
`ii
`
`

`

`
`I.
`
`INTRODUCTION
`
`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`
`As set forth in the Patent Owner Response, original claims 1-8 of U.S. Pat.
`
`No. 7,585,140 (the “’140 patent”) recite a patentably distinguishable ratchet
`
`assembly. This Motion to Amend is provided with substitute claims 9-16 to
`
`replace claims 1-8 in the case that the Board finds claims 1-8 unpatentable.
`
`The Petition works backwards from claim 1 to manufacture a ratchet gear
`
`and assembly that is not described in the art. Substitute claims 9-16 more
`
`narrowly claim the ratchet assembly recited by claim 1. Because Petitioner
`
`needed to manufacture gears in attempt to meet claim 1, the prior art naturally
`
`does not describe limitations that more narrowly describe the ratchet assembly.
`
`Claims 9-16 are patently distinguishable and supported by the original
`
`disclosure. Amendments to independent claim 9 recite inter alia a ring to limit
`
`the intrusion of contaminants, a pin, and also narrow the ratchet gear and ratchet
`
`head; dependent claim 10 narrows the ring’s position; dependent claim 12 further
`
`narrows the ring’s position and also describes interconnection between the gear
`
`and head; and dependent claim 16 describes another interconnection technique.
`
`These features are not taught in the art of record and the best art known to Patent
`
`Owner.
`
`In the case that the Board finds claims 1-8 invalid, Patent Owner requests
`
`that they be substituted by claims 9-16.
`
`1
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`II. THE MOTION AND PROPOSED AMENDMENTS COMPLY WITH
`37 C.F.R. § 42.121
`
`In compliance with the requirements of § 42.121(a), Patent Owner has
`
`conferred with the Board regarding the Motion to Amend on November 14, 2017.
`
`See Paper 9 at 4 and 9; see also § 42.121(a).1 The Motion to Amend is timely
`
`filed. § 42.121(a)(1).
`
`In accordance with 37 C.F.R. § 42.121(a)(2)(i), Patent Owner’s
`
`amendments
`
`to substitute claims 9-16 are responsive
`
`to a ground of
`
`unpatentability. The Board instituted review of claims 1-8 over Ruan and Cottrell
`
`and Boice and Ruan based, in part, on the Petition’s arguments regarding the
`
`ratchet head and gear as part of the ratchet assembly. See Paper 8 at 19 and 31.
`
`Patent Owner’s amendments provide additional limitations to the ratchet
`
`assembly, including among others, a pin, a ring to limit the intrusion of
`
`contaminants, and narrowing limitations to the ratchet gear/head. Claims 10, 12,
`
`and 16 provide further narrowing limitations to the ratchet assembly and claims 11
`
`and 13-15 change dependencies to depend on substitute claim 9. The amendments
`
`to claims 9-16 are thus responsive to a ground of patentability.
`
`
`1 Patent Owner has also reviewed the Nov. 21, 2017 guidance, available at
`
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_to_ame
`
`nd_11_2017.pdf
`
`2
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`In accordance with 37 C.F.R. § 42.121(a)(2)(ii), the amendments to claims
`
`9-16 do not enlarge scope or introduce any new subject matter. The amendments
`
`presented are also reasonable in accordance with 37 C.F.R. § 42.121(a)(3)—there
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`is a direct 1 to 1 correspondence of substitution of claims 9-16 for claims 1-8.
`
`III. CLAIM LISTING
`The ’140 patent currently contains claims 1-8, all instituted in this trial. In
`
`accordance with 37 C.F.R. § 42.121(b), Patent Owner’s claim listing of claims 1-8
`
`and substitute claims 9-16 is provided as Appendix A. Patent Owner proposes to
`
`substitute claims 1-8 with claims 9-16 in the case that claims 1-8 are deemed
`
`invalid. The substitute claims have underlining indicating inserted text and double
`
`brackets indicating deleted text.
`
`IV. LEVEL OF ORDINARY SKILL
`A person of ordinary skill (“POSITA”) would have a Bachelor of Science in
`
`Mechanical Engineering. Alternatively, this individual could have developed skill
`
`in mechanical devices through a number of years of experience working on the
`
`design and manufacturing of mechanical devices. EX2002 at ¶15.
`
`V. CLAIM CONSTRUCTION
`Patent Owner believes that the language of the amendments is clear and is
`
`not reasonably anticipated to be in dispute. See Corning Optical Communications
`
`RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 at 4. All of the
`
`amendments have corresponding illustrative depictions in the patent’s figures. To
`
`3
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`remove any potential confusion (and to further illustrate support for the claim
`
`amendments), the following constructions are provided.
`
`1. Claim 9 “wherein the ratchet head[gear] has an opening that is
`centrally located on its inner face, the opening of the ratchet
`head[gear] being around the ratchet head’s[gear’s] axis of rotation
`about the first longitudinal axis and second longitudinal axis”
`
`The BRI for this phrase is a centrally located hole on the ratchet head[gear],
`
`where the center point of the hole has a longitudinal axis that is located on an axis
`
`substantially similar to that of the first longitudinal axis and the second
`
`longitudinal axis. A POSITA would understand this structure and the axes from
`
`the drawings. EX2002 at ¶¶135-136. This is illustrated and described in at least
`
`Fig. 4, which shows both the pin 450
`
`(pink) and shaft 480, both having axis
`
`401 (red). EX1001 at 3:32-37; id., Fig.
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`4. The pin is designed to go through the
`
`holes (yellow) of the ratchet head 420
`
`and ratchet gear 405 to restrict movement of the ratchet head 420 and gear 405 to
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`rotational movement about rotational axis 401. Id., 3:32-37. The whole of the
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`ratchet assembly rotates about rotational axis 401. Id., 3:7-53.
`
`4
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`2. Claims 12 and 16 “positioned around and surrounding the opening
`of
`the
`ratchet
`head[gear],
`the
`center-point
`of
`the
`outwardly[inwardly] facing portion substantially overlaps with the
`first longitudinal axis and the second longitudinal axis”
`
`The BRI of this phrase for claim 12 is being around the entirety of the
`
`opening of the ratchet head[gear] and being positioned where the center-point of
`
`the opening and the center-point of the
`
`outwardly[inwardly] facing portion is
`
`substantially close to or at the axis of
`
`rotation.2 A POSITA would understand
`
`this structure and axes
`
`from
`
`the
`
`drawings. EX2002 at ¶¶137-139. As shown in Fig. 4, the mating pairs 412 and
`
`424 (yellow) fully surround the opening—they are not partial bumps off to one
`
`side. See EX1001 at Fig. 4. The mating pairs 412 and 424 are also positioned
`
`around the opening—the center-point of both the opening and the mating pairs
`
`412 and 424 overlap with the axis of rotation 401. Id.; see also id., Figs. 5B, 5C,
`
`6, 7A-C, 8A-D. The mating pairs can be either male or female. Id., 3:27-31.
`
`
`2 The same construction applies to the similar language of claim 16 which
`
`describes the head having an inwardly facing portion. The construction would
`
`swap outwardly for inwardly but retain head.
`
`5
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`
`VI. SCOPE OF SUBSTITUTE CLAIMS
`The amendments to claims 9-16 do not enlarge the scope of those claims or
`
`introduce any new subject matter in accordance with 37 C.F.R. § 42.121(a)(2)(ii).
`
`The amendments to independent claim 9 and dependent claims 10, 12, and 16 add
`
`limitations without removing any claimed features. The amendments to dependent
`
`claims 11 and 13-15 change dependencies to mirror the claims they replace. There
`
`is no change in claim hierarchy amongst the dependent claims.
`
`VII. SUPPORT IN THE ORIGINAL DISCLOSURE
`Pursuant to 37 C.F.R. § 42.121(b)(1), support for substitute claims 9-16 can
`
`be found in the originally filed specification/drawings3 of App. No. 12/056,594
`
`
`3 The drawings are part of the written description disclosure of the application and
`
`constitute written description support on their own. See Zodiac Pool Systems, Inc.
`
`v. Aqua Products, IPR2013-00159, Paper 71 at 46 (stating that limitations
`
`represented in drawing support written description requirement—“the orientation
`
`of the plane of the axis of rotation of the pair of wheels is implicit in the
`
`drawings”); see also Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir.
`
`1991) (“drawings alone may provide a ‘written description’ of an invention as
`
`required by Sec. 112”); Autogiro Co. of Am. v. United States, 384 F.2d 391, 398
`
`(Ct. Cl. 1967) (“where a visual representation can flesh out words, drawings may
`
`be used in the same manner and with the same limitations as the specification.”).
`
`6
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`((EX2004 at Pg. 34-55); see also id., Pg. 11-13 (showing that the specification and
`
`drawings were filed on March 27, 2008)), which issued as the ’140 patent.
`
`Most of the limitations added to substitute claims 9-16 can be seen in Fig.
`
`5B, which is a cross sectional side view of the ratcheting tie apparatus. See
`
`EX2004 at Pg. 36, ¶13; see also EX2002 at ¶130. Claim 9 (and Fig. 5B) includes a
`
`pin 450 (annotated in pink) positioned within openings (red arrows) of the ratchet
`
`head 420 (blue) and ratchet gear 405
`
`(green), where a portion of the pin
`
`450 is positioned within the shaft
`
`480 (yellow). See EX2004 at Pg. 37-
`
`40, ¶¶19-25. “[A] seal 491 can be
`
`installed to limit intrusion of water
`
`and contamina[nts],”4 (id., Pg. 40, ¶25) and, from the cross-sectional drawing, a
`
`POSITA would understand the seal is a ring because it limits contaminants to the
`
`pin and shaft (naturally, if it were only on the bottom portion and did not wrap
`
`around it would not limit the intrusion of contaminants) (EX2002 at ¶132). The
`
`head and gear rotate about the axis 401 of the pin 450 and shaft 480. Id., Pg. 48,
`
`4 A POSITA would understand that “contaminates” is a typographical error of
`
`“contaminants.” EX2002 at ¶133. Nonetheless, “contaminates” or “contaminants”
`
`supports added claim language to the ring. Id.
`
`7
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`
`Fig. 4; id., Pg. 38, ¶21.
`
`Amendments to the dependent claims are also well supported. Amendments
`
`to claims 10 and 12 narrow the ring’s position—this can be seen in at least Fig. 5B.
`
`EX2002 at ¶129. Amendment to claim 12 describes the male/female mating pairs,
`
`which is described at least at EX2004 at Pg. 38, ¶21, lines 3-7 and illustrated as
`
`elements 412 and 424 of Fig. 4. The amendment to claim 16 describes the inverse
`
`male/female pair, which is also supported in the same citations.
`
`From the drawings (such as Figs. 4 and 5B), a POSITA would understand
`
`that the pin has a longitudinal axis and axis of rotation similar to that of the shaft,
`
`that the pin is lodged between centrally located holes in the ratchet head and gear,
`
`that there is a ring to limit the intrusion of contaminants (and its positioning), and
`
`that centrally located mating pairs exist, consistent with the amended claims. See
`
`EX2002 at ¶¶130-134. In further compliance with 37 C.F.R. § 42.121(b)(1), below
`
`is a chart showing citations from the original application that support the claims.
`
`See also EX2002 at ¶¶130-134.
`
`Claim Element
`9[PRE] A ratcheting tie down system for a vehicle
`transporter having one or more vehicle platforms, the
`system comprising:
`9[A] a ratchet assembly affixed to an end of a tie down
`shaft having a first longitudinal axis, the tie down shaft
`being affixed to one of the one or more vehicle
`platforms;
`9[B] a pin that has a second longitudinal axis, the
`second longitudinal axis substantially coextensive with
`
`EX2004 at Pgs. 34-55
`¶6, lines 1-2; ¶18, lines
`1-4; ¶19, lines 2-3.
`
`¶6, lines 2-4; ¶20, lines
`11-12; ¶21, lines 10-11;
`¶¶23, 23-27.
`
`¶21, lines 7-10; Fig. 4,
`Fig. 5B, Element 450;
`
`8
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`Fig. 5C.
`¶6, lines 4-5; ¶19, lines
`3-5; ¶23, lines 8-9.
`¶6, line 5; ¶19, lines 3-
`5; ¶23, lines 8-9.
`¶6, lines 5-6; ¶21, lines
`7-10; ¶25, lines 2-3;
`¶26, lines 1-4; Fig. 5B;
`Fig. 5C; Fig. 6.
`¶25, lines 6-8; Fig. 5B,
`Element 491.
`
`the first longitudinal axis;
`9[C] a pawl mechanism coupled to the ratchet assembly,
`wherein the ratchet assembly comprises:
`9[D] a ratchet gear having engagement teeth coupled to
`the pawl mechanism;
`9[E] a ratchet head coupled to the ratchet gear;
`
`9[F] a ring that limits the intrusion of contaminants, the
`ring being positioned adjacent to the ratchet gear and
`positioned within an internal portion of the ratchet
`assembly;
`9[G] 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]]
`
`¶6, lines 6-7; ¶19, lines
`5-7; ¶21, lines 7-10;
`¶25, lines 2-3; ¶26, lines
`1-4; Fig. 5B; Fig. 5C;
`Fig. 6.
`¶6, lines 8-13; ¶21, lines
`7-20.
`
`Figs. 4, 5B, 5C, 6, 8A,
`8B, 8C, 8D; ¶21, lines
`7-10.
`
`Figs. 4, 5A, 5B, 5C, 7A,
`7B, 7C; ¶21, lines 7-10.
`
`Figs. 4, 5B, 5C; ¶21,
`lines 7-10.
`
`9[H] 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 first
`longitudinal axis and the second 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 first longitudinal
`axis and the second longitudinal axis,
`9[I] wherein the ratchet head has an opening that is
`centrally located on its inner face, the opening of the
`ratchet head being around the ratchet head’s axis of
`rotation about the first longitudinal axis and second
`longitudinal axis,
`9[J] wherein the ratchet gear has an opening that is
`centrally located on its inner face, the opening of the
`ratchet gear being around the ratchet gear’s axis of
`rotation about the first longitudinal axis and second
`longitudinal axis,
`9[K] wherein a portion of the pin is positioned within
`the opening of the ratchet head, the opening of the
`ratchet gear, and a portion of the tie down shaft, and
`
`9
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`9[L] wherein the pin restricts movement of the ratchet
`Figs. 4, 5B, 5C; ¶21,
`lines 7-10.
`gear and the ratchet head to rotational movement about
`the first longitudinal axis and the second longitudinal
`axis.
`10[A]. The system as claimed in claim [[1]] 9 further
`comprising drive bodies disposed
`in depressions
`positioned on the inner face of the ratchet head,
`
`10[B]. and wherein the ring is positioned between the
`ratchet gear and the ratchet head.
`11. The system as claimed in claim [[2]] 10 further
`comprising ramped pockets disposed on the inner face
`of the ratchet gear.
`12[A]. The system as claimed in claim [[3]] 11 wherein
`the drive bodies are configured to compress into and
`expand out of the depressions positioned on the inner
`face of the ratchet head,
`12[B]. wherein the inner face of the ratchet head has an
`outwardly
`facing portion positioned around and
`surrounding the opening of the ratchet head, the center-
`point of the outwardly facing portion substantially
`overlaps with the first longitudinal axis and the second
`longitudinal axis, wherein the inner face of the ratchet
`gear has an inwardly facing portion positioned around
`and surrounding the opening of the ratchet gear, the
`center-point of the inwardly facing portion substantially
`overlaps with the first longitudinal axis and the second
`longitudinal axis, wherein the inwardly facing portion of
`the ratchet gear at least partially envelops the outwardly
`facing portion of the ratchet head, and
`12[C]. wherein the ring is positioned between the
`inwardly facing portion of the ratchet gear and the
`outwardly facing portion of the ratchet head.
`13. The system as claimed in claim [[3]] 11 wherein the
`ramped pockets each comprise: a
`ramp surface
`positioned between an upper-most portion of each
`
`10
`
`¶20, lines 5-11; ¶21,
`lines 1-3; ¶22, lines 3-5;
`¶23, lines 20-22; ¶25,
`lines 3-6; ¶26, lines 9-
`10; Fig. 4, Element 422;
`Figs. 5B, 5C, 8A,
`Element 422; Fig. 8C.
`Fig. 5B, Element 491;
`¶25, lines 6-8.
`¶19, lines 5-7; ¶21, lines
`1-3; Figs. 4, 6, 7A, 7C,
`Element 407.
`¶20, lines 7-9; ¶22, lines
`5-7; ¶23, lines 1-3 and
`23-26; ¶25, lines 3-6;
`Figs. 5B and 5C.
`¶21, lines 3-7; ¶25, lines
`6-7; ¶26, 7-9; Fig. 4,
`elements 412 and 424;
`Figs. 5B, 5C, 6, 7B, 7C,
`8C, 8D.
`
`Fig. 5B, Element 491;
`¶25, lines 6-8.
`
`¶19, lines 7-11; ¶23,
`lines 14-16; ¶26, lines
`5-7; Figs. 4, 6, 7A, 7C,
`
`

`

`¶23, lines 12-16.
`
`¶24, lines 4-8.
`
`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`Element 408.
`ramped pocket, said uppermost portion being adjacent
`and co-planar with the inner face of the ratchet gear; and
`a lower-most portion positioned at a depth within the
`ratchet gear, thereby defining a wall within each of the
`ramped pockets.
`14. The system as claimed in claim [[5]] 13 wherein the
`drive bodies are configured to ride along the ramp
`surface and into an adjacent ramped pocket in response
`to a reverse rotation of the ratchet head.
`15. The system as claimed in claim [[5]] 13 wherein the
`drive bodies are configured to position in the lower-
`most portion and be in mechanical contact with the wall
`in response to a forward rotation of the ratchet head, the
`ratchet gear and the tie-down shaft.
`16[A]. The system as claimed in claim [[1]] 9 wherein
`the shaft is configured to receive at least one of a chain
`and a strap
`16[B]. and wherein the inner face of the ratchet head
`has an inwardly facing portion positioned around and
`surrounding the opening of the ratchet head, the center-
`point of the inwardly facing portion substantially
`overlaps with the first longitudinal axis and the second
`longitudinal axis, and wherein the first inwardly facing
`portion at least partially envelops at least a portion of
`the ratchet gear.
`VIII. CLAIMS 9-16 ARE PATENTABLE OVER THE PRIOR ART
`A. CLAIMS 9-16 DESCRIBE A NOVEL RATCHET ASSEMBLY
`The ’140 patent is directed to a ratcheting tie down system used to tie down
`
`¶4, lines 15-16; ¶5, lines
`2-3; ¶21, line 16.
`
`¶21, lines 3-7; ¶25, lines
`6-7; ¶26, 7-9; Fig. 4,
`elements 412 and 424;
`Figs. 5B, 5C, 6, 7B, 7C,
`8C, 8D.
`
`and transport vehicles. EX1001 at Abstract. Prior art systems used conventional
`
`gearing, which required an operator to engage, torque, disengage, and then re-
`
`engage a tie-down bar to tighten the system to secure vehicles. Id., 1:48-57.
`
`To solve these issues, the ’140 patent discloses a novel ratchet assembly
`
`11
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`(annotated in red) that has a ratchet head 420 (blue) and a ratchet gear 405 (green).
`
`EX1001 at 2:56-58; see also EX2002 at ¶¶127-19. Together, the gear and head
`
`move in unison to allow torque to be applied in one direction to tighten a chain or
`
`strap. EX1001 at 4:1-9. In the other direction, the head moves while the gear
`
`remains static. Id., 4:13-18. This allows an operator to tighten a strap without
`
`having to remove the tie down bar. Id., 3:64-4:41. Many of these features are
`
`recited in original claim 1.
`
`
`The amended features of substitute claims 9-16 more narrowly describe the
`
`configuration of the ratchet assembly. For example, a retaining pin 450 (annotated
`
`pink) goes through openings of the ratchet gear 405 and head 420 into shaft 480,
`
`allowing the ratchet assembly’s interconnection while restricting its movement to
`
`axis 401. Id.at 3:32-53. To further allow efficient interconnection and operation,
`
`the gear and head are made with mating pairs (mating pairs 412 and 424 annotated
`
`in yellow of Fig. 4). Id., 3:29-32. A ring to limit the intrusion of contaminants is
`
`also provided to protect components of the ratchet assembly. Id., 4:60-63. Many
`
`12
`
`

`

`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`of these features are recited in substitute claims 9-16.
`
`B. CLAIMS 9-16 ARE DISTINGUISHABLE
`Petitioner bears the burden to show that substitute claims 9-16 are not
`
`patentable. Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1296 (Fed. Cir. 2017).
`
`Despite the burden, provided below is a description why the best art known to
`
`Patent Owner (Ruan, Boice, and Cottrell) do not teach or provide any motivation
`
`for any of the added limitations of claims 9-16,5 individually or in combination.
`
`Following this is a description regarding how Petitioner’s manufactured gears also
`
`fail to teach or provide motivation for limitations of 9-16.
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`RUAN
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`1.
`Ruan is directed towards a ratchet that is used to tie down goods to an
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`automobile to prevent them from falling off a vehicle. EX1003 at Abstract, ¶3.
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`Ruan discloses a rotating body 2/crowbar
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`hole 9 (annotated blue, below) movably
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`coupled to a fixed base 1/locating plate
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`10/screw 11 (yellow) to drive a gear
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`(green). EX1003 at ¶21.
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`Ruan does not disclose a pin, or the positioning of the pin through openings
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`5 Claims 10-16 depend on base independent claim 9 and are patentable for the
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`same reasons as described with respect to independent claim 9.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`of the gear and head as required by claim 9. Instead, as can be seen from the
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`above, the fixed base 1 is a solid piece. There is no pin going between the fixed
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`base 1, rotating body 2, and gear; nor is there a pin positioned within the shaft.
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`EX2002 at ¶141. There is no pin, nor is anything being “positioned within the
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`opening of the ratchet head, the opening of the ratchet gear, and a portion of the tie
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`down shaft,” as required by claim 9. Id. Nor does Ruan provide any motivation
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`for a POSITA to create a hole in the fixed base 1 to house a pin, or provide a pin
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`within its structure. Id. These features of claim 9 are not taught by Ruan.
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`At most, Ruan teaches bolt-down screws 11 (the screw holes annotated in
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`red on following page). These screws, however, serve a different purpose—they
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`are not centrally located and tie the fixed plate 10 to the fixed base 1. Ruan’s head
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`does not rotate about the “second longitudinal axis” of the screw,6 as required by
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`claim 9. Ruan’s screws do not pierce through the fixed base 1 into the shaft or the
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`gear—they are not positioned within the “opening of the ratchet gear [that is]
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`around the ratchet gear’s axis of rotation” as is required by claim 9. EX2002 at
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`¶141.
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`The absence of the claimed features of claim 9 in Ruan is apparent from the
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`below Figures. Annotated Figs. 2 and 3 of Ruan illustrate a fixed base 1 (yellow)
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`6 Assuming in arguendo that a screw is a pin, which it is not. Screws are threaded,
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`and would not allow the movable coupling of a head/gear like the claimed pin.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`that has threaded screw holes (red). Annotated Figs. 5B and 6 of the ’140 patent
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`(to the right of Ruan’s figures) illustrate the ratchet head 420 (blue) and ratchet
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`gear (green) with opening (red) to accommodate a pin (pink).
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`
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`Nor does Ruan teach the ring to limit the intrusion of contaminants recited in
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`claim 9. No ring is mentioned within any part of Ruan’s ratchet mechanism.
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`EX2002 at ¶143. Nor does Ruan provide any motivation to provide a ring to limit
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`contamination. Id.
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`Ruan also fails to teach any of the additional limitations of claims 10, 12,
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`and 16. With respect to claim 16, which requires at least two claim elements
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`within a central portion of the ratchet head: (a) the “inner face of the ratchet head
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`has an inwardly facing portion” that “partially envelops the ratchet gear” and (b)
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`from base independent claim 9, the “pin” that is “positioned within the opening of
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`the ratchet head.” Ruan’s head, at most, envelops one element, the fixed base 1,
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`and accordingly, under no creative interpretation could Ruan’s fixed base 1 teaches
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`both a pin and a gear with an opening as required by claim 16. In addition, claim
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`12 recites the that the “gear has an inwardly facing portion” and the “head has an
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`outwardly facing portion,” both of which are not present in Ruan. Claims 12 and
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`10 describe the position of the ring, which is also absent from Ruan. Thusly, Ruan
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`fails to teach the additional features added by the dependent claims 10, 12, and 16.
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`See, e.g., EX2002 at ¶¶140-144.
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`COTTRELL
`
`2.
`Cottrell teaches a safety tie down loader (EX1004 at Abstract) that prevents
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`a tie-down roller from disengaging when chains are loosened. Id., 1:8-9; 5:42-49.
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`Several of Cottrell’s components are non-movably affixed together as part of a
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`unitary piece—ratchet teeth 17, tie-down ratchet gear 8, wrench sleeve 16, and
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`apertures 15 (see EX1004 at 7:35-43; 4:33-48), all of which move in unison.
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`Cottrell does not disclose the recited pin of claim 9. Instead, Cottrell
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`discloses the wrench sleeve 16, apertures 15, tie-down ratchet gear 8, and ratchet
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`teeth 17 as a singular unitary piece. Claim 9, in contrast, uses the pin positioned
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`within two movably coupled pieces (the gear and head). EX2002 at ¶¶145-147.
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`Cottrell provides no motivation to provide a pin in centrally located
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`openings of a ratchet gear and ratchet head as required by claim 9. EX2002 at
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`¶147. Cottrell discloses a unitary piece with a centrally located wrench orifice 45
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`(annotated in yellow, next page/left) for wrenching (EX1004 at 8:16-35), where a
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`purpose of Cottrell invention is “to provide a durable socket for quick and easy
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`[wrenching] . . . of the tie-down bar.” Id., 2:26-29. Adding a pin or opening to the
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`area of the wrench orifice 45 would degrade the ability of Cottrell’s device to
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`16
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`wrench—the wrench would come into contact with the pin and the wrench would
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`not be able to efficiently torque the shaft. EX2002 at ¶147.
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`
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`Claim 9 does not provide the rigidity and structure required for external
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`wrenching—it describes a pin (annotated pink above/right) positioned within
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`central openings of a ratchet head (blue) and a gear (green). A POSITA would
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`understand that they could not reliably externally wrench Cottrell’s system if a
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`centrally located retaining pin were added. EX2002 at ¶147. One of Cottrell’s
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`purposes, thusly, discourages a POSITA to provide openings and a pin disposed
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`therein, as recited in claim 9.
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`Furthermore, because Cottrell teaches its wrench sleeve 16, apertures 15, tie-
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`down ratchet gear 8, and ratchet teeth
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`17 as a singular unitary piece, it does
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`not teach the ring of claim 9’s ratchet
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`assembly. Cottrell also provides no
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`motivation to provide a ring—a POSITA would also not have been motivated to
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`17
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`detach the wrench sleeve 16 (blue) from the teeth 17 (green) to provide a ring in
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`between the two. EX2002 at ¶150. This configuration would serve no purpose,
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`nor would it make any sense. Id. Thusly, a POSITA would not have been
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`motivated to provide the pin, the openings, or the ring of claim 9 in light of
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`Cottrell.
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`Accordingly, Cottrell does not teach nor does it provide any motivation for
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`the amended features of claim 9. Similarly, Cottrell does not teach any features
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`added by dependent claims 10, 12, or 16. Claims 16 and 12 recite particular
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`interconnections between the ratchet head and gear (e.g. mating pairs 412 and 424
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`of Figs. 4-5 and 3:28-31 of EX1001) that are not taught nor suggested by Cottrell.
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`Cottrell teaches wrench sleeve 16, apertures 15, tie-down ratchet gear 8, and
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`ratchet teeth 17 as a single unitary piece (see, e.g., Fig. 11) but does not illustrate
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`anything other than a flat delineation between the tie-down ratchet gear 8 and
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`wrench sleeve 16. See, e.g., EX1004 at Fig. 4; see also EX2002 at ¶¶145-146.
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`There is no purpose for mating pairs in Cottrell because Cottrell’s assembly is a
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`single unitary piece. Id at ¶150. Further, as mentioned above, because Cottrell
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`provides a single unitary assembly, it does not provide a ring. Claims 10 and 12
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`recite the location of the ring. Cottrell thusly does not teach or suggest the features
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`of claims 9-16. See, e.g., EX2002 at ¶¶145-151.
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`18
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Motion to Amend
`
`BOICE
`
`3.
`Boice discloses a device for securing an automobile wheel during towing.
`
`EX1005 at Abstract. Boice discloses a ratchet gear 19 (annotated green) and a
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`drive wheel 41 (blue) that are separated (annotated
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`red arrows). EX1005 at 3:42-55. The ratchet gear
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`19 and drive wheel 41 are both attached to shaft
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`(yellow) to rotate the whole assembly in unison.
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`Id., 3:7-27.
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`Boice does not disclose the recited pin of
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`claim 9.