Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 31
`Entered: October 15, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MARKER VOLKL USA, INC.,
`Petitioner,
`v.
`KNEEBINDING, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01265
`Patent 8,955,867 B2
`_______________
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`Tel: 571-272-7822
`
`
`Paper 31
`Entered: October 15, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MARKER VOLKL USA, INC.,
`Petitioner,
`v.
`KNEEBINDING, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01265
`Patent 8,955,867 B2
`_______________
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
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`IPR2017-01265
`Patent 8,955,867 B2
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`I.
`
`INTRODUCTION
`Background
`A.
`Marker Volkl USA, Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1 and 4–9 of U.S. Patent No. 8,955,867 B2
`(Ex. 1001, “the ’867 Patent”). Paper 1 (“Pet.”). Kneebinding, Inc. (“Patent
`Owner”) filed their Mandatory Notices in response to the Petition for Inter
`Partes Review (Paper 5), but did not file an optional Preliminary Response.
`See 37 C.F.R. § 42.107 (“The patent owner may file a preliminary response
`to the petition.”) (emphasis added).
`On October 18, 2017, we instituted an inter partes review of claims 1
`and 4–9 on all grounds of unpatentability set forth in the Petition. Paper 10
`(“Dec.”). After institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 18, “PO Resp.”) and Petitioner filed a Reply (Paper 22,
`“Pet. Reply”). Petitioner relies on the Declaration of Jasper Shealy (Ex.
`1025). Patent Owner relies on the Declaration of David J. Dodge (Ex.
`2001). An oral hearing was held on June 25, 2018. Paper 30 (“Tr.”).
`In this Final Written Decision, issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73, after reviewing all relevant evidence and assertions,
`we determine that Petitioner has met its burden of showing, by a
`preponderance of the evidence, that claims 1 and 4–9 of the ’867 patent are
`unpatentable.
`
`Related Proceedings
`B.
`Petitioner and Patent Owner identify that the’867 Patent is involved in
`Kneebinding, Inc. v. Marker Volkl USA, Inc., Case No. 2:15-cv-121-wks (D.
`Vt.). Pet. 3; Paper 5, 2. Petitioner and Patent Owner also identify several
`patents and patent applications related to the ’867 Patent. Pet. 3; Paper 5, 2.
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`The ’867 Patent
`C.
`The ’867 Patent relates generally “to alpine ski bindings and, in
`particular, to multi-directional release alpine ski binding heel units that
`release in the vertical and lateral directions.” Ex. 1001, 1:18–20. Figure 1
`illustrates a side view of the alpine ski binding heel unit of the ’867 Patent,
`and is set forth below.
`
`
`
`Figure 1 is a side view of the alpine
`ski binding heel unit.
`As shown above in Figure 1, ski binding heel unit 100 includes upper
`heel housing 16, lower heel housing 27, heel pad 13, lateral release 340,
`interface support 330, and vector decoupler mechanism 60. Ex. 1001, 1:53–
`55. Figure 2 is a more detailed side view of the ski binding heel unit 100 of
`the ’867 Patent and is set forth below.
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`Figure 2 is a more detailed side view of
`the alpine ski binding heel unit 100.
`As shown above, ski binding heel unit 100 further depicts that upper
`heel housing 16 includes pivot rod 18, cam surfaces 19a and 19b, stem
`section 17b, lateral release cam assembly 17, vertical release cam follower
`20, vertical release spring 21, threaded cap 22, window 24, polymer piece
`25, surface 26, region 33, and heel cup assembly 47. Ex. 1001, 1:59–64.
`
`Illustrative Claim
`D.
`Of instituted claims 1 and 4–9, independent claim 1 is the only
`independent claim. Independent claim 1 is illustrative, and is reproduced
`below:
`
`1. A vector decoupling assembly for separating and
`isolating two or more force vectors applied to a safety binding
`securing a heel portion of a ski boot to a ski, comprising:
`a lower heel assembly attached to the ski;
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`an upper heel assembly coupled to the lower heel assembly
`and having a lateral release assembly for applying lateral
`securing pressure to the ski boot, the upper heel assembly
`comprising an upper heel housing that is configured to compress
`the heel portion of the ski boot downward;
`a linkage element fixedly attached to the lateral release
`assembly;
`wherein the linkage element, a first surface and a second
`surface cooperate to limit motion of the lateral release assembly
`to within a predetermined region within a plane defined by the
`longitudinal and horizontal axes of the ski.
`Asserted Grounds of Unpatentability
`E.
`A trial was instituted for claims 1 and 4–9 on all the asserted grounds,
`as follows (Dec. 30–31):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`DE ’2981
`Boussemart2 and DE ’298
`
`§ 102(b)
`§ 103(a)
`
`1 and 4–9
`1 and 4–9
`
`
`
`II. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has
`
`1 German Published Patent Application No. 23 64 298, published June 26,
`1975 (Ex. 1008; “DE ’298”). Unless indicated otherwise, all subsequent
`citations to DE ’298 in this decision refer to its English language translation,
`which is Exhibit 1004.
`2 U.S. Patent No. 4,553,772, issued Nov. 19, 1985 (Ex. 1005;
`“Boussemart”).
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`statutory authority to construe claims according to 37 C.F.R. § 42.100(b)).
`Under the broadest reasonable construction standard, claim terms are
`generally given their ordinary and customary meaning, as would have been
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to
`read a particular embodiment appearing in the written description into the
`claim if the claim language is broader than the embodiment. In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`Claim 1 recites “lateral release assembly” and “upper heel housing.”
`Patent Owner does not propose any specific interpretations for those terms
`per se. Instead, Patent Owner argues the “lateral release assembly” and
`“upper heel housing” recited by claim 1 “are separate functional parts of the
`upper heel assembly” “that separate and isolate lateral and vertical release
`forces,” respectively. PO Resp. 12, 14, 36 (citing Becton, Dickinson and Co.
`v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting
`Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed.Cir.2004)). More
`specifically, Patent Owner takes the position
`both the vertical and lateral releasing structures [of claim 1]
`include separate elements that are prevented from contributing to
`the releasing function of the other, and includes structures that
`are specifically designed to avoid contribution of vertical forces
`to the lateral release assembly, and lateral forces to the vertical
`release components.
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`Id. at 14.3 Petitioner disagrees with Patent Owner’s assertions, arguing that
`the ’867 patent’s claim language and Specification establish that the two
`elements “are inextricably linked.” Pet. Reply 1–9. Although we are not in
`complete agreement with either parties’ construction, we, nevertheless, agree
`generally with Petitioner, for the reasons set forth below, that the “lateral
`release assembly” and “upper heel housing” recited by claim 1 should not be
`construed as being separate functional parts of the upper heel assembly that
`separate and isolate lateral and vertical release forces, respectively.
`We begin our analysis with the express claim language. Specifically,
`claim 1 recites in part “a lower heel assembly attached to the ski” and “an
`upper heel assembly coupled to the lower heel assembly and having a lateral
`release assembly for applying lateral securing pressure to the ski boot, the
`upper heel assembly comprising an upper heel housing that is configured to
`compress the heel portion of the ski boot downward.” Ex. 1001, 11:36–
`12:2. Thus, from the claim itself, we know that (1) the “upper heel
`assembly” is coupled to the “lower heel assembly” and, thus, attached to the
`ski; (2) this associated upper/lower heel assembly has a “lateral release
`assembly”; (3) the lateral release assembly is for “applying lateral securing
`pressure to the ski boot”; and (4) the upper heel assembly “is configured to
`compress the heel portion of the ski boot downward.” However, none of this
`claim language requires that the “lateral release assembly” and “upper heel
`housing” must be treated as separate functional parts of the upper heel
`assembly that separate and isolate lateral and vertical release forces,
`
`
`3 Patent Owner takes this position to distinguish prior art devices “with
`lateral and vertical release mechanisms that share functional structures (such
`that lateral and vertical release forces are cross-linked).” PO Resp. 13.
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`respectively. Indeed, other than both being a part of the upper heel
`assembly, we note that there is no specific relationship recited between the
`two components at all, let alone the one advanced by Patent Owner.
`We next turn to the relevant portions of the Specification. To that
`end, Figure 2 of the ’867 patent, shown below, depicts a sectional side view
`of ski binding heel 100.
`
`
`
`Figure 2 is a side view of the alpine
`ski binding heel unit 100.
`As shown above in Figure 2, ski binding heel unit 100 includes upper
`heel housing 16 that includes at least pivot rod 18, cam surfaces 19a and
`19b, stem section 17b, lateral release cam assembly 17, vertical release cam
`follower 20, vertical release spring 21, and threaded cap 22, lower heel
`housing 27, and vector decoupler mechanism 60. Ex. 1001, 5:53–55; 5:59–
`64. The Specification discloses
`[u]pper heel housing 16 connects to lateral release cam 17 by
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`way of a pivot rod 18. Vertical release is a function of opposing
`vertical release cam surfaces 19a and 19b on the aft-most end of
`the upper one-third stem section 17b of lateral release cam 17,
`and the vertical release cam follower 20. The vertical release
`spring 21 (shown by an “X”) in the large internal pocket of the
`upper heel housing 16 pushes cam follower 20. Forward release
`threaded cap 22 compresses the opposing end of spring.
`Ex. 1001, 6:4–12.
`Here also, we do not see how the Specification supports Patent
`Owner’s position that the “lateral release assembly” and the “upper heel
`housing” are separate functional parts. In fact, if anything the
`Specification’s disclosure supports the opposite, as the “lateral release
`assembly” and “upper heel housing” share common components, i.e.,
`“[v]ertical release is a function of opposing vertical release cam surfaces 19a
`and 19b on the aft-most end of the upper one-third stem section 17b of
`lateral release cam 17, and the vertical release cam follower 20” (Ex. 1001,
`6:5–8), “[u]pper heel housing 16 connects to lateral release cam 17 by way
`of a pivot rod 18” (Ex. 1001, 6:4–5). Having common components is not
`consistent with the notion of two parts isolating lateral and vertical release
`forces, respectively.
`With respect to the Specification, Patent Owner does identify the
`following as supporting its position:
`An alpine ski binding heel unit is disclosed that includes a
`primary vertical release, lateral heel release and longitudinal
`pressure compensator. The primary vertical release, lateral heel
`release and longitudinal pressure compensator are de-linked
`from each other. That is, they are functionally independent
`mechanisms. The forward release, the lateral heel release, and
`longitudinal pressure
`compensator
`include
`independent
`adjustment.
`Ex. 1001, 3:45–52 (cited at PO Resp. 13–14). However, we agree with
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`Petitioner that this portion of the Specification merely “discusses the
`‘primary vertical release, lateral heel release and longitudinal pressure
`compensator’ but does not discuss the upper heel assembly or upper heel
`housing nor specifically the ‘lateral release assembly’” (Pet. Reply 7), and,
`as such, fails to support Patent Owner’s assertions.
`Indeed, Patent Owner’s proposed interpretation appears to be
`inconsistent with Patent Owner’s position in the related district court
`litigation. There, in its Response to Petitioner’s Opening Claim
`Construction Brief, Patent Owner stated that “[c]laim 1 does not recite the
`requirement that all components of the ‘lower heel assembly’ shall contain
`no components of the ‘upper heel assembly’ and vice versa.” Ex. 1011, 18.
`Patent Owner further stated that “[t]hese elements act together to permit
`lateral retention/release. Although the many components of the ‘lateral
`release assembly’ are in the ‘upper heel assembly’, the cam surface that the
`‘lateral release assembly’ reacts against, element 27a, is in the “lower heel
`assembly.” Ex. 1011, 18; cf. Paper 30, 15:16–24. While we acknowledge
`that there are circumstances where different claim construction positions are
`justified, here, Patent Owner appears to be advancing a narrower
`construction than in district court, which is the reverse of the usual scenario.
`Consequently, in the context of the ’867 patent’s claims and
`Specification, we find that a person of ordinary skill in the art would not
`have understood that the “lateral release assembly” and “upper heel
`housing” are separate functional parts of the upper heel assembly that
`separate and isolate lateral and vertical release forces, respectively.
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`Level of Skill in the Art
`B.
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405
`(2007).
`Regarding the level of skill in the art, Petitioner asserts:
`a POSA in the February 18, 2003 timeframe would be an
`individual with a Bachelor’s degree in mechanical engineering
`or related technology and three to five years of experience in
`either the design, fabrication, or manufacture of ski bindings and
`related equipment, research concerning ski bindings and related
`equipment, or the development of standards concerning ski
`bindings or related equipment, in addition to ten years or more
`of personal experience using ski bindings.
`Pet. 14–15 (citing Ex. 1006 ¶ 32). In response, “Patent Owner agrees with
`Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for
`purposes of the ’867 patent.” PO Resp. 3 (citing Pet. 14–15). Having
`considered the evidence, we find that Petitioner’s articulation of the level of
`ordinary skill is correct. We also note that the cited references often reflect
`the appropriate level of skill at the time of the claimed invention, and that
`the references cited here appear to reflect the level agreed to by the parties.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior
`art itself [can] reflect the appropriate level of skill in the art”).
`
`Claims 1 and 4–9 as Anticipated by DE ’298
`C.
`Petitioner argues that claims 1 and 4–9 are anticipated by DE ’298.
`Pet. 25–56 (citing Exs. 1001, 1002, 1004, 1006, 1008–1012). Patent Owner
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`responds. PO Resp. 21–30 (citing Pet.; Exs. 1001, 1004, 2001–2003).
`Petitioner replies. Pet. Reply 9–18 (citing Pet.; Exs. 1001, 1004, 1025,
`1026, 2001). We have considered the parties’ arguments and supporting
`evidence, and we determine that Petitioner has shown by a preponderance of
`the evidence that claims 1 and 4–9 are anticipated by DE ’298.
`DE ’298 (Ex. 1004)
`1.
`DE ’298 “relates to a releasing/retaining device that is designed for
`safety ski bindings and that comprises means for front or rear retention of
`the shoe on the ski.” Ex. 1004, 1. DE ’298 discloses that its device “allows
`the resistance against release in the upward direction, on the one hand, and
`against release in the lateral direction, on the other hand, to be dimensioned
`and adjusted independently of each other.” Ex. 1004, 3. Figure 1 of DE
`’298 depicts the releasing/retaining device of a releasing ski binding, and is
`set forth below.
`
`
`Figure 1 depicts a longitudinal view of the DE ’298 releasing/retaining
`device of a releasing ski binding.
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`Figure 2 of DE ’298 depicts the releasing/retaining device of a
`releasing ski binding, and is set forth below.
`
`
`Figure 2 depicts a plan view of the DE ’298 releasing/retaining
`device of a releasing ski binding.
`As shown above, DE ’298 discloses
`a retaining jaw [25] for holding the shoe in the lateral direction
`is mounted on an upwardly pivotable hold-down member [13],
`which holds the shoe against a release resistance in the upwards
`direction, in such a way that said hold-down member can be
`swiveled to the side against a detent resistance [(detent
`suspension 28)], which is supported on said hold-down member.
`Ex. 1004, 3.
`
`Analysis
`2.
`Petitioner asserts that claims 1 and 4–9 are anticipated by DE ’298.
`Pet. 26–56 (citing Exs. 1001, 1002, 1004, 1006, 1008–1012). For example,
`independent claim 1 recites “[a] vector decoupling assembly . . .
`comprising” “a lower heel assembly attached to the ski” and “an upper heel
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`assembly coupled to the lower heel assembly.” Petitioner provides the
`following copy of Figure 1 of DE ’298, annotated to identify, among several
`items, bearing block 11 and hold-down member 13.
`
`
`
`Figure 1, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`Pet. 36. Petitioner asserts that the releasing/retaining device of a releasing
`ski binding of DE ’298, depicted in Figures 1 and 2, corresponds to the
`claimed vector decoupling assembly. Pet. 32–35 (citing Ex. 1004, 2–4, 6, 9,
`11; Ex. 1006 ¶ 67). Petitioner further asserts that bearing block 11 of DE
`’298 corresponds to the recited “lower heel assembly attached to the ski”
`and hold-down member 13 of DE ’298 corresponds to the recited “upper
`heel assembly coupled to the lower heel assembly.” Pet. 35–36 (citing Ex.
`1004, 6–7). Patent Owner does not dispute that DE ’298 discloses the above
`limitations of independent claim 1. For the reasons stated in the Petition, we
`are persuaded that Petitioner has met its burden of showing that these claim
`limitations are met by DE ’298.
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`Independent claim 1 additionally recites the “upper heel assembly”
`includes “a lateral release assembly for applying lateral securing pressure to
`the ski boot.” Petitioner provides another copy of Figure 1 of DE ’298,
`annotated to identify, among several items, front wall of hold-down member
`14, retaining jaws 25, arm 26, and detent cams 29.
`
`
`Figure 1, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`Pet. 37. Petitioner asserts that “the retaining jaw 25, the two arms 26, the
`two detent cams 29, and the front wall of the hold-down member 14 work
`together as a lateral release assembly.” Pet. 37–38 (citing Ex. 1004, 4, 8,
`11). Patent Owner does not dispute that DE ’298 discloses the above
`limitation of independent claim 1. For the reasons stated in the Petition, we
`are persuaded that Petitioner has met its burden of showing that this claim
`limitation is met by DE ’298.
`Independent claim 1 further recites the “upper heel assembly”
`“compris[es] an upper heel housing that is configured to compress the heel
`portion of the ski boot downward.” Petitioner provides another copy of
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`Figure 1 of DE ’298, annotated to portray a ski boot with downward
`compressing force on the heel portion of the boot.
`
`
`Figure 1, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`Pet. 41. Petitioner asserts that “the hold-down member 13 (pink) is urged
`downward by springs 17 (green) operating against the front cross wall 14
`(gold) of the hold-down member 13 through rollers 21 (lavender) in
`engagement with detent tracks 22 (orange).” Pet. 40 (citing Ex. 1004, 6–7;
`Ex. 1006 ¶ 72).
`Patent Owner responds that DE ’298 does not disclose an “upper heel
`assembly” that compresses the heel portion of the ski boot downward.
`PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298
`makes clear that the hold-down member 13 and heel holder 25 only resist
`upward motion by the ski boot heel – they do not ‘compress the heel portion
`of the ski boot downward’ by providing downward force on the heel.” PO
`Resp. 26. To support its position, Patent Owner provides an annotated copy
`of the annotated copy of Figure 2, provided by Petitioner and designated
`“Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner
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`annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between
`the top edge of the ski boot sole (which Petitioner added; the original figure
`in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel
`holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62).
`
`
`Figure 2, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`And, because there is a “gap” between the ski boot, superimposed by
`Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent
`Owner argues that DE ’298 “cannot provide downward force as the arms 26
`do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4
`Therefore, although Patent Owner acknowledges that DE ’298 discloses that
`its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’”
`(PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely
`“[o]pposing upward motion does not compress the ski boot downward as
`required by the challenged claims.” 5 PO Resp. 28.
`
`
`4 The cited portions of Dr. Dodge’s Declaration largely mirror the language
`set forth in the corresponding portion of the Patent Owner Response.
`5 Patent Owner submits that “[t]he plain and ordinary meaning of the term
`‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by
`squeezing.’” PO Resp. 28 (citing Ex. 2003).
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`Petitioner responds that Patent Owner’s reading of DE ’298 is
`strained, that other portions of the reference make clear that DE ’298
`discloses an “upper heel assembly” that does in fact compress the heel
`downward, and that any purported “gap” in the drawing is a red herring that
`does not comport with basic physics. Pet. Reply 15–18.
`We agree with Petitioner. Initially, we note that Patent Owner’s
`reliance on the “gap,” depicted in Petitioner’s annotated version of Figure 2,
`i.e., “Fig. Q,” between the ski boot and the bottom edge of arms 26 of heel
`holder 25, to be misplaced. As Patent Owner acknowledges, the original
`Figure 2 in DE ’298 does not show the ski boot (PO Resp. 27); rather, it was
`added by Petitioner for demonstrative purposes. See Pet. Reply 17 (citing
`Ex. 1026, 119:25–120:20). Patent Owner also acknowledges that there is no
`discussion regarding such a “gap” in DE ’298. Paper 30, 42:16–23.
`Instead, we agree with Petitioner that the hold-down member 13, heel
`holder 25, and spring 17 disclosed in DE ’298 constitute “the upper heel
`assembly comprising an upper heel housing that is configured to compress
`the heel portion of the ski boot downward,” as required by independent
`claim 1. See Pet. Reply 16. In making this determination, we note that
`the’867 patent discloses that “[t]he upper heel housing 16 holds and
`compresses a ski boot heel downward to oppose the upward forces
`generated by the ski boot during skiing.” Ex. 1001, 6:20–22 (emphases
`added). In a similar fashion, DE ’298 describes its “hold-down member,
`which serves to hold the shoe in the upward direction and which can be
`pivoted upwards about a rearward transverse axis, is held down against
`upwardly pivoting by one or more hold-down springs by means of guide
`member.” Ex. 1004, 4 (emphasis added). Here, as Petitioner points out,
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`“even assuming that a gap is present, the fundamental principles of physics
`still apply. In a spring-loaded binding, any movement of the boot that puts it
`in contact with the retaining jaw or arms would be held down by the
`compressive or downward resisting force of a spring.” Pet. Reply 17 (citing
`Ex. 1025 ¶ 11). Therefore, consistent with the plain and ordinary meaning
`of the term “compress,” as proffered by Patent Owner, we find DE ’298
`discloses an “upper heel assembly” that would compress, i.e., “press
`together” the heel portion of the ski boot downward, as the claim limitation
`requires. Thus, we are persuaded that Petitioner has met its burden of
`showing that this claim limitation is met by DE ’298.
`Independent claim 1 also recites “a linkage element fixedly attached
`to the lateral release assembly.” Petitioner provides another copy of Figure
`1 of DE ’298, annotated to identify, among several items, front wall of hold-
`down member 14, retaining jaws 25, arm 26, rod-shaped tension member 27,
`and detent cams 29.
`
`
`Figure 1, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`Pet. 43. Petitioner also provides a copy of Figure 2 of DE ’298, annotated to
`again identify, among several items, front wall of hold-down member 14,
`
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`retaining jaws 25, arm 26, rod-shaped tension member 27, and detent cams
`29.
`
`
`Figure 2, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`Pet. 44. Petitioner asserts DE ’298 “describes a lateral release assembly
`comprised of the retaining jaw, the two arms, the two detent cams, and the
`front wall of the hold-down member” and further discloses “a rod-shaped
`tension member 27 (shown in light blue) fixedly attaches these elements
`against the front wall of the hold-down member 14, acting as a linkage
`element.” Pet. 42, 46 (citing Ex. 1004, 4, 8, 11; Ex. 1006 ¶ 73). For the
`reasons stated in the Petition, we are persuaded that Petitioner has met its
`burden of showing that this claim limitation is met by DE ’298.
`Independent claim 1 additionally recites “wherein the linkage
`element, a first surface and a second surface cooperate to limit motion of the
`lateral release assembly to within a predetermined region within a plane
`defined by the longitudinal and horizontal axes of the ski.” Petitioner
`provides additional copies of Figures 1 and 2 of DE ’298, both annotated to
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`identify, among several items, retaining jaws 25, rod-shaped tension member
`27, and detent springs 28, and vertical pin 35.
`
`
`Figure 1, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`
`
`
`Figure 2, annotated, depicts the DE ’298 releasing/retaining
`device of a releasing ski binding.
`Pet. 46–47. Petitioner asserts that “[t]he tension member 27 is pivotably
`attached by vertical pin 35 to allow tension member 27 to swivel in the
`lateral direction” and Figures 1 and 2, annotated, “show how the lateral
`movement of the retaining jaw/heel holder 25 is constrained in lateral
`movement by the tension member 27 (light blue), vertical pin 35 (dark blue)
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`in cooperation with the surface of the front cross wall 14 (gold) of the hold-
`down member 13.” Pet. 44–45 (citing Ex. 1004, 9; Ex. 1006 ¶ 76).
`Patent Owner responds that DE ’298 does not disclose a “‘lateral
`release assembly’ that is limited in motion to the horizontal plane of the ski
`by a ‘linkage element’ because the entire alleged lateral release assembly in
`DE ’298 moves in a vertical direction outside the horizontal plane of the
`ski.” PO Resp. 21–25 (citing Ex. 2001 ¶¶ 52–57; Ex. 2002, 43:3–44:22,
`44:24–45:5).6 More particularly, Patent Owner argues that “tension member
`27 (the alleged ‘linkage element’) does not limit motion of front wall 14 of
`hold down member 13, arm 26, retaining jaws 25, and detent cams 29 (the
`alleged ‘lateral release assembly’) to within a predetermined region within a
`plane defined by the longitudinal and horizontal axes of the ski.” PO Resp.
`23. In this regard, Patent Owner contends that DE ’298 cannot disclose the
`argued limitation because “challenged claim 1 requires that the lateral
`release assembly can only move within the specified horizontal plane of the
`ski,” and, thus, “the lateral release assembly cannot move outside of that
`plane, such as in a direction orthogonal to the longitudinal and horizontal
`axes of the ski.” PO Resp. 22; Ex. 2001 ¶ 53.
`Petitioner responds that Patent Owner’s contentions are largely
`inapposite because while the claim requires that any lateral movement be
`limited to the predetermined region, the claim does not preclude lateral
`release assembly from moving in a direction other than laterally, for
`example, vertically. Pet. Reply 11. We agree with Petitioner that
`independent claim 1 does not require that the lateral release assembly limit
`
`6 The cited portions of Dr. Dodge’s Declaration largely mirror the language
`set forth in the corresponding portion of the Patent Owner Response.
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`motion to only “the specified horizontal plane of the ski.” Instead, the claim
`limitation recites “the linkage element, a first surface and a second surface
`cooperate to limit motion of the lateral release assembly to within a
`predetermined region within a plane defined by the longitudinal and
`horizontal axes of the ski.” Ex. 1001, 12:5–8 (emphasis added). Here, we
`find the claim merely requires limiting motion of the “lateral release
`assembly” to a “predetermined region” of the plane defined by “the
`longitudinal and horizontal axes of the ski.” The claim, however, does not
`recite limiting movement outside of that plane, e.g., vertically. Thus, we
`agree with Petitioner that “outside of the predetermined region, the lateral
`release assembly may move in a direction other than laterally.” Pet. Reply
`11. Accordingly, based on Petitioner’s analysis, which we have outlined
`above, we find that DE ’298 discloses a “linkage element” where “a first
`surface and a second surface cooperate to limit motion of the lateral release
`assembly to within a predetermined region within a plane defined by the
`longitudinal and horizontal axes of the ski,” and further determine that the
`fact that DE ’298 may allow lateral movement of the “lateral release
`assembly” outside of that predetermined region is inapposite to that finding.
`Thus, we are persuaded that Petitioner has met its burden of showing that
`this claim limitation is met by DE ’298.
`For dependent claims 4–9, Petitioner performs a similar mapping of
`the additional claim limitations of these claims to DE ’298. Pet. 47–56; See
`also Dec. 15–17. Other than the arguments discussed above for
`independent claim 1, Patent Owner does not raise any arguments specific to
`dependent claims 4–9. We have considered each of Petitioner’s mappings
`anew, and are persuaded that Petitioner has met its burden of showing, by a
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`preponderance of the evidence, that DE ’298 discloses each and every claim
`limitation of dependent claims 4–9 for the reasons stated in
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