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`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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`__________________
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`Case IPR2017-00962
`Patent 7,585,140 B1
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`PATENT OWNER’S RESPONSE UNDER 37 C.F.R. § 42.120
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`137606023.7
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`

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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`TABLE OF CONTENTS
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`III.
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`
`
`EXHIBIT LIST ....................................................................................................... III
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`BACKGROUND ............................................................................................ 4
`A.
`The ’140 Patent .................................................................................... 4
`B.
`The File History .................................................................................... 6
`C.
`Level of Ordinary Skill In The Art ...................................................... 8
`D.
`Procedural Background ........................................................................ 8
`E.
`Claim Construction .............................................................................. 9
`F.
`The Alleged Prior Art ......................................................................... 10
`1.
`Ruan ......................................................................................... 10
`2.
`Cottrell ’275 ............................................................................. 12
`3.
`Boice ........................................................................................ 13
`PETITIONER HAS NOT MET ITS BURDEN TO DEMONSTRATE
`THAT CLAIMS 1-8 ARE UNPATENTABLE ........................................... 14
`A.
`Ruan and Cottrell ’275 Fail to Teach or Suggest Claims 1-8 ............ 16
`1.
`A skilled person would not have combined Ruan with
`Cottrell ’275 ............................................................................. 17
`The proposed combination of Ruan and Cottrell ’275
`does not teach or suggest the limitations of independent
`claim 1 ...................................................................................... 31
`The proposed combination of Ruan and Cottrell ’275
`does not teach or suggest the limitations of dependent
`claims 2-8 ................................................................................. 35
`Boice and Ruan Fail to Teach or Suggest Claims 1-8 ....................... 36
`1.
`A skilled person would not have combined Boice with
`Ruan ......................................................................................... 37
`The proposed combination does not teach or suggest the
`limitations of independent claim 1 ........................................... 44
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`2.
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`3.
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`B.
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`2.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`3.
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`The proposed combination does not teach or suggest the
`limitations of dependent claims 2-8 ......................................... 47
`IV. CONCLUSION ............................................................................................. 48
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`137606023.7
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`
`EXHIBIT LIST
`
`Declaration of Kyle Amborn in Support of Motion for Pro Hac
`Vice Admission
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`Declaration of Dr. Kirsten M. Carr in Support of Patent
`Owner’s Opposition to Petition for Inter Partes Review
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`Transcript of the November 10, 2017 Cross-Examination
`Deposition of Mr. George A. Clark
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`Prosecution History of U.S. Patent No. 7,585,140
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`U.S. Patent No. 5,101,537
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`District Court Claim Construction Order - Boydstun Equipment
`Manufacturing, LLC v. Cottrell, Inc., Case No. 3:16-cv-790-SI,
`Order and Opinion on Claim Construction, Dkt. 97 (D. Or. Oct.
`18, 2017)
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`Exhibit 2005
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`Exhibit 2006
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`I.
`
`INTRODUCTION
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`
`There are three fundamental problems with both of Petitioner’s proposed
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`grounds of obviousness.
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`First, Petitioner’s alleged motivations to combine do not provide any reason
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`to combine the art of record in the manner proposed. In other words, Petitioner has
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`not provided a nexus between the alleged motivations to combine and the ways in
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`which Petitioner proposes to actually combine the art. For example, Petitioner
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`suggests there was a motivation to move Ruan’s ratchet gear from one end of a
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`shaft to another. Based on this alleged motivation to move the gear, Petitioner
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`argues that a skilled person would then combine the gear with another component
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`in Ruan called the “fixed base” (as would be required to address the challenged
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`claims). But Petitioner offers no evidence for this second step of combining the
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`gear and base. Even if there was a motivation to move Ruan’s ratchet gear,
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`Petitioner offers no motivation to create a new hybrid part.
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`Similarly, Petitioner suggests that Boice taught the need for a so-called
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`“secondary ratchet”1 and that this need provided a motivation to combine Boice
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`with Ruan, which disclosed another “secondary ratchet.” Based on this alleged
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`1 Petitioner uses the terms “primary ratchet” and “secondary ratchet” as short-hand
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`for several claim limitations, but they are misnomers because there is only one
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`ratchet in the ’140 patent and the asserted art. EX2002 ¶ 89 (Carr Decl.).
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`motivation, Petitioner then argues that a skilled person would not only replace
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`Boice’s “secondary ratchet” with Ruan’s, but would also take the added step of
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`integrating Ruan’s “secondary ratchet” with Boice’s ratchet gear. But neither
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`reference taught that its “secondary ratchet” was integrated with its ratchet gear,
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`and Petitioner offers no evidence to support the motivation to take this added step.
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`Even if there was a motivation to exchange Ruan’s “secondary ratchet” for
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`Boice’s, Petitioner offers no motivation to also connect it to the ratchet gear. This
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`approach is wrong as a matter of law.
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`Second, Petitioner’s asserted motivations to combine are contrary to the
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`evidence. Petitioner argues that Ruan should be reconfigured in light of Cottrell
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`’275 to mirror the challenged claims. But Petitioner’s expert, Mr. Clark, admits
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`that Ruan and Cottrell ’275 were designed for different purposes and were each
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`configured according to their intended applications. Petitioner’s justification for
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`rearranging Ruan is not applicable because it is specific to the application for
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`which Cottrell ’275 was intended. Petitioner also argues that Cottrell ’275 taught
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`the need for a “secondary ratchet,” and that Ruan disclosed such a ratchet. But Mr.
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`Clark admits that Cottrell ’275 taught its own “secondary ratchet,” which provided
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`the same functionality as Ruan’s and that he is not aware of any reason why a
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`skilled person would have been motivated to combine or exchange the two
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`“secondary ratchets”:
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`I don’t know why one would want to. But I mean, it’s a
`simple – it’s a simple design change to do it. But I
`couldn’t speak to their motivation.
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`Petitioner’s argument to combine Boice and Ruan is virtually identical. Petitioner
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`suggests that Boice taught a need for a “secondary ratchet” and that Ruan disclosed
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`such a ratchet. But Petitioner’s expert admits that like Cottrell ’275, Boice taught
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`its own “secondary ratchet” that provided the same functionality as Ruan’s. Thus a
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`skilled person had no reason to look to Ruan for functionality Boice already
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`offered.
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`Third, the absence of any motivation to combine, let alone to do so in the
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`fashion proposed, demonstrates that Petitioner’s asserted combinations are the
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`product of impermissible hindsight. Instead of starting with the art as it must,
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`Petitioner works backwards from the claims of the ’140 patent to create the
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`asserted grounds for obviousness. This is evident from Mr. Clark’s testimony that
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`he doesn’t know why a skilled person would have wanted to modify the art as
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`asserted but believes it would have been simple to do so. Furthermore, Mr. Clark
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`testified that he believes a patent claim is obvious if one “could reconfigure the
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`prior art to meet each and every limitation” of the challenged claim. Such
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`hindsight is legally improper and cannot be the basis for finding invalidity.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`Trial was instituted as to claims 1-8 on two separate obviousness grounds.
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`The Petition and the accompanying evidence fail to provide any motivation to
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`combine either set of references or demonstrate that either combination would have
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`rendered the challenged claims obvious. Accordingly, both of Petitioner’s grounds
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`for unpatentability should be denied.
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`II. BACKGROUND
`A. The ’140 Patent
`The ’140 patent is directed to a ratcheting tie down apparatus used to tie
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`down and transport vehicles. EX1001, Abstract. Prior art systems used a
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`conventional ratchet, in which the input device was directly tied to and turned the
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`shaft, which required an operator to engage, rotate, disengage, and then re-engage
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`a tie-down bar to rotate and tighten the ratchet to secure vehicles to the transporter.
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`Id., 1:48-57. The ’140 patent taught that this process (inserting, rotating, and
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`reinserting the tie down bar) may need to be repeated many times. Id., 1:56-57.
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`To solve these issues, the ’140 patent replaced the conventional ratchet with
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`a dual component configuration: a ratchet assembly (annotated in red, below) that
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`has a ratchet gear (green) and a ratchet head (blue). EX1001 at 2:56-58. Together,
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`the gear and head move in unison allowing toque to be applied in one direction to
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`the shaft to tighten a chain or strap. Id., 4:1-9. In the other direction, the head
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`moves while the gear remains static. Id., 4:13-18. This allows an operator to
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
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`torque and tighten a strap without having to remove the tie down strap through a
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`simple levering action. Id., 3:64-4:41.
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`
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`The gear and head work together as a single integral unit. See, e.g., EX1001
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`at 3:24-53. To allow their interconnection, the gear and head are fabricated with
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`mating pairs (mating pairs 412 and 424 annotated in yellow, below). Id., 3:29-32.
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`To allow the torqueing techniques (i.e., using the head for torque tightening one
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`way and free-flow the other), depressions 422 (annotated in orange) are provided
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`on the head 420 while ramped pockets 407 (also annotated in orange) are provided
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`gear 405. Id., 3:7-23. Compression springs 425 and drive bodies 430 (both
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`annotated in purple) are placed into the ramped pockets 407 and depressions 422.
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`Id., 3:14-23. A retaining pin 450 (magenta) affixes the ratchet head 420 to the
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`ratchet gear 405 to an end 481 of the shaft 480. Id.at 3:32-53.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`
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`The File History
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`B.
`Petitioner oversimplifies the file history to argue throughout the Petition that
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`the only difference between Ruan and the ’140 patent is that Ruan has the gear and
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`head on opposite ends of the shaft whereas the ’140 patent has them on a single
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`end. The amendments and arguments were not so simple. Placement of the gear
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`and head at one end of the shaft is not the singular point of novelty argued in the
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`file history or contained within the claims.
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`The claims and file history describe much more. The application was
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`subject to two rejections (EX2004 at 101-110, 129-136) and, in response to the
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`Final Rejection, Applicants described the interaction and coupling between the
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`ratchet head (annotated in blue, below) and ratchet gear (annotated in green) as
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`part of an assembly (annotated in red) to closely match the figures of the patent.
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`
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`Applicants argued the novelty of the ratchet assembly, which is a single
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`piece, as a whole.2 The fact that the ratchet gear was located on one end, as
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`opposed to another, was in addition to the main argument, which was focused on
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`2 Applicants stated that the “ratchet assembly is included in one single piece that
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`includes the ratchet gear (and engagement teeth), and the ratchet head all on one
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`end of the shaft.” EX2004 at 151.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`the assembly as a singular piece. EX2004 at 150-151. All amendments and
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`argument were made towards limiting the parameters of the assembly. Id.3
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`It isn’t true, as Petitioner claims, that the point of novelty was as simple as
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`placing a gear or head on one side of the shaft or another. Pet. At 6. The point
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`described in the file history, and claims, is the singular ratchet assembly, its
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`components, and how those components interact. EX2004 at 150-151.
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`C. Level of Ordinary Skill In The Art
`A person of ordinary skill in the art of the ’140 patent in the relevant time
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`frame would have at least a Bachelor of Science degree in Mechanical Engineering
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`or some comparable technical field, or at least two years of training and experience
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`with mechanical design and construction. See EX2002 ¶ 15.
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`Procedural Background
`
`D.
`The Board instituted review of whether claims 1-8 would have been obvious
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`under 35 U.S.C. § 103(a) over the combined teachings of either (1) U.S. Patent
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`3 EX2004 at 151 (“ratchet assembly includes both the ratchet gear and the ratchet
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`head in which ‘an inner face of the ratchet gear is positioned in opposition to and
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`in mechanical contact with an inner face of the ratchet head.’”) (“Applicants have
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`also amended Claim 1 to clearly recite that the engagement teeth of the ratchet gear
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`are included in the ratchet assembly”). (“Applicants respectfully point out that the
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`ratchet assembly is located on one end of the shaft.”)
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`Publication No. 2006/0013667 (“Ruan”) (EX1003) and U.S. Patent No. 5,314,275
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`(“Cottrell ’275”) (EX1004), or (2) U.S. Patent No. 6,824,121 (“Boice”) (EX1005)
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`and Ruan. Paper 8 at 36.
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`This is Patent Owner’s first response to the Petition—Patent Owner did not
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`file a preliminary response, since it was optional. In support of this Opposition,
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`Patent Owner submits the declaration of Dr. Kirsten M. Carr (“Carr Decl.” or
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`EX2002) and a transcript of the cross examination of Petitioner’s expert, Mr. Clark
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`(“Clark Dep.” or EX2003). Dr. Carr holds three degrees in mechanical
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`engineering—a B.S. from the University of Michigan, Ann Arbor, and a M.S. and
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`Ph.D. from the University of Illinois, Urbana. EX2002 ¶ 2. Dr. Carr is a
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`professional engineer with more than 30 years of experience, including over 14
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`years working at the Ford Motor Company. Id., ¶¶ 1-12. Her extensive
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`qualifications are detailed in her curriculum vitae, provided with her declaration.
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`E. Claim Construction
`In IPR proceedings, claim terms are given their broadest reasonable
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`construction in light of the specification. 37 C.F.R. 42.100(b). Petitioner
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`proposed constructions for two claim terms: in mechanical contact with and
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`coupled. Pet. at 9-12. In its institution decision, the Board determined that neither
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`term requires construction. Paper 8 at 11. Patent Owner agrees that neither term
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`requires construction for the purposes of this proceeding.4
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`F.
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`The Alleged Prior Art
`1.
`Ruan
`Ruan was cited and considered during prosecution of the ’140 patent. See,
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`e.g., EX2004 at 105. Ruan is directed towards a cargo tie-down used to tie down
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`goods to prevent them from moving when transported via automobile. EX1003 at
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`Abstract, [0003]. Ruan discloses a rotating body 2/crowbar hole 9 (both annotated
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`in blue, below) movably coupled to a fixed base 1/locating plate 10/screw 11 (all
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`annotated in yellow) to drive a gear (green).
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`4 Patent Owner notes that in the parallel district court litigation, the court construed
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`“mechanical contact” as “direct or indirect contact through a mechanical
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`operation,” and rules that “coupled” should be given its plain and ordinary
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`meaning. See EX2006. Patent Owner submits that these constructions would have
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`no impact on the outcome of this proceeding because Petitioner’s grounds for
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`obviousness fail regardless of the meanings of these terms.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`
`
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`To torque the gear and tighten a belt, a crowbar is inserted into the crowbar
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`hole 9 moved in one direction. EX1003 at [0025]. In this instance, the gear, the
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`fixed base 1/locating plate 10/screw 11, and the rotating body 2/crowbar hole 9 all
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`rotate in the same direction. Id. When the crowbar is moved in the opposite
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`direction, only the rotating body 2/crowbar hole 9 move. Id. The spring 6 and The
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`components that rotate when torqueing are illustrated in the below, left
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`demonstrative, and the component that rotates when moving the opposite direction
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`(rotating body 2/crowbar hole 9) are shown on the right. See generally, EX2002 ¶¶
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`37-41 (summary of Ruan).
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`As both Dr. Carr and Mr. Clark explain, the device in Ruan is attached to a
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`shaft that would be far shorter than the one in the ’140 patent. EX2002 ¶¶ 37-44,
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`94-95; EX1002 ¶¶ 28, 38. According to Mr. Clark, given the Ruan device’s
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`“compact size, an operator of the Ruan device has easy/simultaneous access to
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`both the belt tightening means (the secondary ratchet) and the means for
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`intentional release of the belt’s tension (the primary ratchet).” EX1002 ¶ 28.
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`Cottrell ’275
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`2.
`Cottrell ’275 teaches a safety tie down loader. EX1004 at Abstract. More
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`particularly, it is focused on systems to prevent a tie-down roller from disengaging
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`due to chain loosening. Id., 1:8-9; 5:42-49.
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`Among its parts, Cottrell ’275 also discloses a tie-down ratchet gear 8
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`(annotated blue and green, below), which includes bar wrench apertures 15 in a
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`wrench sleeve 16 (both blue) at a proximal side of ratchet teeth 17 (green). See
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`EX1004 at 4:57-60. The ratchet gear 8/wrench sleeve 16 move in unison when an
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`operator torques the wrench sleeve. EX2002 ¶ 58.
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`Cottrell ’275 discloses many ways in which an operator can torque the
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`wrench sleeve. In one way, an operator could place a wrench rod into the bar
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`wrench apertures 15 (annotated blue, above and below). Cottrell ’275 also
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`discloses a hexagonal wrench orifice 45 (yellow, below) that allows the ratchet
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`gear 8 and wrench sleeve 16 to be torqued. See, e.g., EX1004 at 8:36-43. Cottrell
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`’275 discloses various types of wrenches that can be used, including a ratchet
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`wrench (e.g., Id., 2:26-29), which could be used to torque the ratchet gear 8/wrench
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`sleeve 16 in one direction while allowing an operator to move in the reciprocal
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`direction without torqueing the ratchet gear 8/wrench sleeve 16. See generally,
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`EX2002 ¶¶ 52-58 (summary of Cottrell ’275).
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`
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`Boice
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`3.
`Boice discloses a device for securing the front wheels of an automobile to a
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`dolly for towing behind a recreational vehicle or truck. EX1005 at Abstract, 1:5-
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`19. Boice discloses a ratchet gear 19 (annotated green, below) and a drive wheel
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`41 (blue). EX1005 at 3:42-55. The drive wheel 41 can be torqued to turn the
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`assembly to tighten a web assembly (not shown). Id., 4:7-22. The ratchet gear 19
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`and drive wheel 41 are not connected (illustrated by annotated arrows below). See
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`generally EX2002 ¶¶ 69-74 (summary of Boice).
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`
`III. PETITIONER HAS NOT MET ITS BURDEN TO DEMONSTRATE
`THAT CLAIMS 1-8 ARE UNPATENTABLE
`Petitioner has the burden of proving unpatentability with particularity.
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3 1356, 1363 (Fed. Cir. 2016); see also 35
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`U.S.C. § 316(e). Under pre-AIA 35 U.S.C. § 103, Petitioner must demonstrate that
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`“the differences between the subject matter sought to be patented and the prior art
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`are such that the subject matter as a whole would have been made obvious at the
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`time the invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains.” But, “a patent composed of several elements is not
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`proved obvious merely by demonstrating that each of its elements was,
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
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`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 418 (2007). To prove obviousness, Petitioner must show that “there was an
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`apparent reason to combine the known elements in the fashion claimed by the
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`patent at issue.” Id., 418. In other words, it is not sufficient to provide a
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`motivation to combine two references generally without some explanation as to
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`why they would be combined as proposed. Harmonic, 815 F.3d at 1364.
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`In addition, the obviousness inquiry must avoid “even a hint of hindsight.”
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`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352
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`(Fed. Cir. 2013). “Obviousness cannot be based on the hindsight combination of
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`components selectively culled from the prior art to fit the parameters of the
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`patented invention.” Id. (quotations and citations omitted).
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`“[R]ejections on obviousness grounds cannot be sustained by mere
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`conclusory statements; instead, there must be some articulated reasoning with
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`some rational underpinning to support the legal conclusion of obviousness.” KSR,
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`550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That
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`proposition applies to expert testimony regarding obviousness. See, e.g.,
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
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`Cir. 2012) (rejecting “conclusory and factually unsupported” expert testimony
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`regarding obviousness).
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`Case No. IPR2017-00962, Patent No. 7,585,140 B1
`Patent Owner’s Response
`
`
`A. Ruan and Cottrell ’275 Fail to Teach or Suggest Claims 1-8
`Petitioner contends that the “only difference between Ruan and claim 1 is
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`that in claim 1, both ratchets are on the same end of the spool.” Pet at 19. There
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`are, however, numerous other differences. For instance, Ruan does not teach (i) a
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`ratcheting tie down system for a vehicle transporter having one or more vehicle
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`platforms, (ii) a tie down shaft being affixed to one of the one or more vehicle
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`platforms, (iii) a ratchet assembly including both a ratchet gear and ratchet head
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`that is affixed to an end of a tie down shaft, or (iv) a ratchet head coupled to [a]
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`ratchet gear as part of the ratchet assembly, as required by claim 1. EX2002 ¶¶
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`42-51. According to Mr. Clark, Ruan does not disclose mechanical contact
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`between a ratchet gear and ratchet head as required by claim 1. EX2003 46:15-
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`21. Rather, Ruan teaches mechanical contact with a part unique to Ruan, called
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`the “fixed base.” Ruan does not disclose ramped pockets disposed on the inner
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`face of the ratchet gear as required by claim 3 or any of the claims that build upon
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`that limitation, including 5, 6 and 7. EX2002 ¶¶ 47-51.
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`Petitioner contends that combining Cottrell ’275 with Ruan overcomes these
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`limitations. Pet. at 19. But like Ruan, Cottrell ’275 also fails to disclose key
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`limitations, including (i) mechanical contact between the inner faces of the ratchet
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`gear and ratchet head (because they’re part of a unitary device) in claim, (ii) the
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`last limitation of claim 1 covering the relative rotation of the ratchet gear, ratchet
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`head, and shaft, (iii) drive bodies in claim 2, (iv) ramped pockets in claim 3, or (v)
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`any of the subsequent dependent claims building on those limitations. EX2002 ¶¶
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`59-68.
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`Petitioner has not identified any prior art evidence of a motivation to
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`combine Cottrell ’275 and Ruan, let alone to do so in the manner proposed. See
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`EX2002 ¶¶ 29-31, 86-102. Moreover, even if a skilled person had combined these
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`references, they would not have disclosed all of the limitations of the challenged
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`claims. See EX2002 ¶¶ 32, 103-110.
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`1.
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`A skilled person would not have combined Ruan with
`Cottrell ’275
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`Petitioner contends that a person of ordinary skill would have been
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`motivated to combine Ruan and Cottrell ’275 by “modify[ing] Ruan to move the
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`first ratchet [the alleged ratchet gear] to the same side of the spool as the second
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`ratchet [the alleged ratchet head] so that both ratchets could be accessed by an
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`operator on an automobile carrier.” Pet. at 21-22. Specifically, Petitioner suggests
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`that “[o]ne would just have to move the pawl from one side to the other, and add
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`teeth to the fixed base 1.” Pet. at 22. This is the only combination of Ruan and
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`Cottrell ’275 included as a ground for obviousness in the Petition.5 Petitioner
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`5 Petitioner’s expert, Mr. Clark, mentioned new potential ways that Ruan and
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`Cottrell ’275 could be combined during his deposition—combinations that were
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`offers two alleged motivations to combine Ruan and Cottrell ’275 in this manner,
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`neither of which supports Petitioner’s proposed combination. See generally
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`EX2002 ¶¶ 86-102.
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`a.
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`Petitioner offers no evidence that a skilled person
`would have been motivated to merge Ruan’s ratchet
`gear and fixed base
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`Petitioner suggests that a skilled persons at the time of the invention had two
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`reasons to combine Ruan with Cottrell ’275: (1) Cottrell ’275’s alleged suggestion
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`“that a secondary ratchet would be useful,” and (2) Cottrell ’275’s alleged
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`“suggestion to locate both the primary and secondary ratchets on the same end of
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`not provided in the Petition. These new theories of invalidity are not properly at
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`issue. Nevertheless, provided herein is a discussion briefly rebutting these
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`invalidity theories should: (1) Petitioner raise these new theories in reply; and (2)
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`the Board takes them into consideration in its final written decision. Petitioner,
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`however, is foreclosed from offering new invalidity theories in reply that were not
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`provided in its Petition. The reply is not an opportunity to raise new issues or
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`submit new evidence. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,767 (Aug. 14, 2012); see Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242,
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`Paper 122 at 2 (granting motion to strike new theory from reply). Patent Owner
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`reserves the right to seek Board permission to file a motion to strike if Petitioner
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`attempts to raise these new theories in reply.
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`the spool.” Pet. at 20-21. Petitioner also argues that its proposed combination
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`yielded predictable results. These arguments are all fatally flawed. As Dr. Carr
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`explains, a skilled person would not have looked to Ruan to build a winch for a car
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`hauler – Cottrell ’275 already taught that and Ruan did not. EX2002 ¶¶ 94-96,
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`101. Nor would a skilled person have looked to Ruan to improve Cottrell ’275. Id.
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`According to Petitioner, the alleged contribution of Ruan was the so called
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`“secondary ratchet,” but both experts agree that Cottrell ’275 already included a
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`“secondary ratchet” that was functionally equivalent. Id., ¶ 90; EX2003 67:3-24.
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`Absent a prior art motivation to combine, it becomes clear that Petitioner’s
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`proposed combination of Ruan and Cottrell ’275 is merely an attempt to recreate
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`the limitations of the challenged claims by cherry-picking elements of the prior art
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`based on impermissible hindsight.
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`(i) No motivation to replace Cottrell ’275’s
`“secondary ratchet” with Ruan’s
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`Petitioner contends that Cottrell ’275 “teaches the use of a conventional
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`ratchet wrench as a secondary ratcheting device to rotate the shaft,” Pet. at 17, and
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`suggests that this teaching “provides explicit motivation to combine it [Cottrell
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`’275] with Ruan which provides a design for a built-in secondary ratchet.” Id., 21.
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`But Petitioner offers no explanation as to why a skilled person would have
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`replaced Cottrell ’275’s so-called “secondary ratchet” with Ruan’s, let alone prior
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`art evidence of such a motivation. Instead, Petitioner relies solely on the testimony
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`of Mr. Clark. Pet at 20-21. But Mr. Clark offers no explanation or evidence to
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`support his opinion. EX1002 at ¶¶ 37-45 (not even addressing Cottrell ’275’s
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`optional ratchet wrench).
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`Rather than providing a motivation to combine Ruan and Cottrell ’275, Mr.
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`Clark testified that the so-called “secondary ratchets” in Ruan and Cottrell ’275 are
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`fungible, and that he knows of no reason why a skilled person would have used
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`one over the other or replaced Cottrell ’275’s “secondary ratchet” with Ruan’s:
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`Q: Why would a person of ordinary skill in the art have
`been motivated to combine … Ruan with Cottrell ’275,
`when Cottrell ’275 already provided an attachment for a
`ratcheting wrench?
`
`A: This is just another means of accomplishing the
`same functionality.
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`Q: Another means of accomplishing the functionality
`already provided by Cottrell ’275?
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`A: … Ruan provides another means of providing the
`convenient back-and-forth motion.
`
`Q: The convenient back-and-forth input motion that
`Cottrell ’275 already provides?
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`A: Already teaches, correct.
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`
`Q: Why would a person of ordinary skill ha[ve] wanted
`to provide another means of achieving that convenient
`back-and-forth rotating motion?
`
`A: I don’t know why one would want to. But I mean,
`it’s a simple – it’s a simple design change to do it. But
`I couldn’t speak to their motivation.
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`EX2003 67:3-24 (emphasis added). Mr. Clark’s testimony is unambiguous and
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`directly contrary to Petitioner’s stated motivation to combine: there is no reason to
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`replace Cottrell ’275’s “secondary ratchet” (the option to use a conventional
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`ratcheting wrench to control the winch) with Ruan’s, and there is no prior art
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`evidence to support Petitioner’s argument. Dr. Carr agrees. EX2002 ¶¶ 90, 101-
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`102; see also id. ¶¶ 87-102.
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`(ii) No motivation to move Ruan’s ratchet gear, let
`alone combine it with the “fixed base”
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`Petitioner contends that Cottrell ’275 provides a “suggestion to locate both
`
`the primary and secondary ratchets on the same end of the spool,” and that this
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`“provides explicit motivation to combine it with Ruan.” Pet. at 20-21. Petitioner
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`contends that it “would have been a predictable variation” for a skill person to
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`modify Ruan by moving the “first ratchet” (the ratchet gear and pawl) to the same
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`side of the shaft as the “second ratchet” (the ratchet head and “fixed base”) “so
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`that both ratchets could be accessed by an operator on an automobile carrier,” and
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