UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`NECKSGEN, INC.
`Petitioner
`v.
`SIMPSON PERFORMANCE PRODUCTS, INC.
`Patent Owner
`______________________
`Case IPR2018-00133
`Patent No. 9,351,529 B1
`Issued: May 31, 2016
`______________________
`
`PETITIONER NECKSGEN, INC.’S REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. §42.71 OF THE DECISION DENYING INSTITUTION
`OF INTER PARTES REVIEW
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`Case IPR2018-00133
`Patent No. 9,351,529 B1
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`Table of Contents
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`1. Statement of Relief Requested ........................................................................... 1
`2. Standard of Review – Abuse of Discretion ....................................................... 2
`3. The Board Abused Its Discretion by Declining to Construe the Disputed
`Claim Term “Tether” ......................................................................................... 3
`4. The BRI of the Term “Tether” Means “Any Tether” ...................................... 6
`5. Application of the “Tether” Construction to Representative Claim Element
`1[d] and to Prior Art Ashline ‘360..................................................................... 7
`A Claim Elements 1 [a] – [c] Are Fully Disclosed by Prior Art Patent
`Hubbard ‘510 and Thus Not In Dispute. ...................................................... 7
`B Application of the “Tether” Construction to Claim Element 1[d]. ........... 8
`C Application of the “Tether” Construction to Ashline ‘360. ........................ 9
`6. The Board’s Failure to Consider the Appropriate Claim Scope When
`Evaluating Motivation to Combine and the Reasonable Expectation of
`Success Is An Abuse of Discretion .................................................................10
`A. Petitioner Presented Direct Evidence Demonstrating a Motivation to
`Combine Sufficient to Support the Granting of an Institution Decision.
` .......................................................................................................................11
`B Petitioner Presented Direct Evidence Demonstrating a Reasonable
`Expectation of Success Sufficient to Support an Institution Decision. ...12
`C NASCAR’s Mandate Provides Additional Motivation ............................12
`D Modification of the Prior Art is Not Needed When The Proper
`Construction of “Tether” Is Applied to the Prior Art. ............................14
`7. Challenged Claims 2 - 19. .................................................................................15
`8. Conclusion .........................................................................................................15
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`Case IPR2018-00133
`Patent No. 9,351,529 B1
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`Table of Authority
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`Cases
`Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed.Cir.1994) ............................. 3
`Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) ..........................10
`Cooter & Gell v. Hartmarx Corp.,496 U.S. 384, 405, 110 S.Ct. 2447, 110 L.Ed.2d
`359 (1990) ...........................................................................................................3, 5
`CSR, PLC v. Skullcandy, Inc. , 594 Fed.Appx. 672, 678 (Fed. Cir. 2014) ................ 4
`Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997); ....3, 5
`Heat & Control, Inc. v. Hester Indus., Inc., 785 F.2d 1017, 1022 (Fed.Cir.1986) ... 3
`Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1375 (Fed. Cir.
`2017) ...................................................................................................................4, 5
`Intelligent Bio-Systems, Inc. v. Illuminal Cambridge Ltd, 821 F.3d 1359, 1367
`(Fed. Cir. 2016) .............................................................................................. 10, 11
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
`2012) .....................................................................................................................10
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. , 521 F.3d 1351, 1360 (Fed.
`Cir. 2008) ................................................................................................................ 3
`Redline Detection, LLC v. Star Envirotech, Inc. 811, F3d 435, 442 (Fed. Cir. 2015)
` ................................................................................................................................. 3
`Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) ...... 9
`Vivid Techs, Inc. v. Am Sci. & Eng’g, Inc., 200 F. 3d 795, 803 (Fed. Cir. 1999) ..... 5
`Regulations
`37 C.F.R. §42.100 (b) ................................................................................................ 6
`37 C.F.R. §42.71 ....................................................................................................1, 2
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`Case IPR2018-00133
`U.S. Patent No. 9,351,529 B1
`Petitioner NecksGen, Inc. requests rehearing and reconsideration of The
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`
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`Patent Trial and Appeal Board’s (“Board”) decision Denying Institution of Inter
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`Partes Review dated May 4, 2018, Paper No. 9, pursuant to 37 C.F.R. §42.71.
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`This filing is proper without prior authorization from the Board pursuant to 37
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`C.F.R. §42.71(d).
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`1. Statement of Relief Requested
`U.S. Patent No. 9,351,529 (“the ‘529 Patent”) is directed to a head and neck
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`support apparatus that uses tethers to connect a driver’s helmet to an anchor. The
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`Board’s institution decision focused on representative claim 1 with elements [a]
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`through [d], of which only element 1[d] is at issue. Paper 9, p. 10. Element 1[d]
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`provides for the joint attachment of two tethers on either side of a helmet. More
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`specifically element 1[d] states: “wherein the at least one rear tether and one of the
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`pair of side tethers are jointly attached to the helmet at a single attachment point
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`on each respective side of the helmet.” (emphasis added). The Board concluded
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`that prior art patent Ashline ‘360, even though it disclosed the joint attachment of
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`two tethers to a helmet, Paper, p. 10-11, it did not disclose the joint attachment of
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`exactly the same tethers to a helmet as claimed in the ‘529 Patent, Paper, p. 11, and
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`thus did not render the representative claim obvious.
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`The Board reached this conclusion without construing the disputed claim
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`term “tether”, which is essential to a proper perspective of the claim element 1[d],
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`the scope of the prior patent Ashline ‘360, and assessing the motivation to
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`combine. The broadest reasonable interpretation, (“BRI”) of the term “tether”
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`means “any tether” – which includes front, rear, and side tethers. This
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`construction is fully supported by the specification and the claim language which
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`makes no functional distinctions between the various tethers. The designation of
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`front, rear, and side tethers in the claims is merely a naming convention and does
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`not represent a substantive difference between the various tethers. When the BRI
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`of “tether” meaning “any tether” construction is applied consistently to element
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`1[d] and prior art patent Ashline ‘360, the joint attachment of two tethers on either
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`side of a helmet structure of element 1[d] is fully disclosed by Ashline ‘360 and the
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`motivation to combine is established. Thereby creating a reasonable likelihood
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`that Claim 1 is unpatentable.
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`Petitioner requests that the Board rehear its Petition for inter partes review
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`of the ‘529 Patent and institute an IPR trial for all Challenged Claims.
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`2. Standard of Review – Abuse of Discretion
`The Board reviews institution decisions under an abuse of discretion
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`standard. 37 C.F.R. §42.71(c). An abuse of discretion occurs if the decision (1) is
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`clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion
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`of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that
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`contains no evidence on which the Board could rationally base its decision.
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`Redline Detection, LLC v. Star Envirotech, Inc. 811, F3d 435, 442 (Fed. Cir.
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`2015); Abrutyn v. Giovanniello, 15 F.3d 1048, 1050–51 (Fed.Cir.1994) (citing
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`Heat & Control, Inc. v. Hester Indus., Inc., 785 F.2d 1017, 1022 (Fed.Cir.1986)).
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`An abuse of discretion may be established “by showing that the court made a clear
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`error of judgment in weighing relevant factors or exercised its discretion based
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`upon an error of law or clearly erroneous factual findings" Genentech, Inc. v. Novo
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`Nordisk, A/S, 108 F.3d 1361, 1364 (Fed. Cir. 1997); Cooter & Gell v. Hartmarx
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`Corp.,496 U.S. 384, 405, 110 S.Ct. 2447, 110 L.Ed.2d 359 (1990)(A court “would
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`necessarily abuse its discretion if it based its ruling on an erroneous view of the
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`law.”)
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`3. The Board Abused Its Discretion by Declining to Construe the Disputed
`Claim Term “Tether”
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`An actual dispute exists regarding the construction of the claim term
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`“tether.” The Board abused its discretion by failing to construe the disputed claim
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`term “tether” as part of its institution decision. Paper 9, p. 6. (“We do not need to
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`construe expressly any claim terms for purposes of this Decision.”). Federal
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`Circuit precedent requires, however, that “[j]ust as district courts must, ‘[w]hen the
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`parties raise an actual dispute regarding the proper scope of ... claims, ... resolve
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`that dispute,’ O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. , 521 F.3d 1351,
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`1360 (Fed. Cir. 2008), the Board also must resolve such disputes in the context of
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`IPRs. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1375 (Fed.
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`Cir. 2017); See CSR, PLC v. Skullcandy, Inc. , 594 Fed.Appx. 672, 678 (Fed. Cir.
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`2014) (holding that "[t]he Board erred by failing to construe 'threshold value' as it
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`is used in claims 1–6 before finding that [prior art reference] Smith failed to
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`disclose a 'threshold value' " in anticipation).
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`The record unambiguously demonstrates the parties’ dispute regarding the
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`meaning and application of the claim term “tether.” Petitioner expressly sought a
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`construction of the term “tether.” Paper 2, p.22. Patent Owner did not oppose
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`Petitioner’s proposed constructions or offer an alternative construction. see
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`generally Paper 8. Patent Owner did, however, advocated and applied a narrower
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`construction of the term “tether” without identifying its actions to the Board.
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`Paper 8, p. 32, (arguing distinctions between side, front and rear tethers to
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`differentiate Claim 1 over the prior art – which is narrower than the BRI of the
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`term “tether” meaning “any tether.”)); see also Paper 8, p. 1 (“[A]ll of the
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`Challenged Claims require ‘side tethers’ and one or more ‘rear tethers’ in a certain
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`arrangement relative to a helmet and a ‘support member.’”); Paper 8, p. 3 -8.
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`Accordingly, an actual dispute exists regarding the scope and meaning of the term
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`“tether” which, under controlling Federal Circuit precedent, the Board is required
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`to construe. The Board did not. The Board, therefore, abused its discretion by
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`declining to construe the disputed claim term “tether” in the institution decision.
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`In declining to construe any claim terms, including the disputed term
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`“tether”, the Board relied on Vivid Techs, Inc. v. Am Sci. & Eng’g, Inc., 200 F. 3d
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`795, 803 (Fed. Cir. 1999), for the proposition that “only terms that are in
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`controversy need to be construed, and these need be construed only to the extent
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`necessary to resolve the controversy.” Paper 9, p. 6. The construction and
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`application of the term “tether” is in controversy. Infra. Application of Vivid
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`Techs is therefore not supported by the record here because an actual dispute exists
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`regarding the meaning of the term “tether.” Moreover, the Board’s decision turned
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`on application of this disputed term which was not construed. The Board,
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`therefore, failed to follow controlling Federal Circuit precedent and thus abused its
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`discretion by not construing the disputed claim term “tether.” Homeland
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`Housewares, LLC, 865 F.3d at 1375 (The Board must resolve claim term disputes
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`in the context of IPRs); Genentech, Inc., 108 F.3d at 1364 (An abuse of discretion
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`may be established “by showing that the court made a clear error of judgment in
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`weighing relevant factors or exercised its discretion based upon an error of law or
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`clearly erroneous factual findings"); Cooter & Gell., 496 U.S. at 405 (A court
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`“would necessarily abuse its discretion if it based its ruling on an erroneous view
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`of the law.”)
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`4. The BRI of the Term “Tether” Means “Any Tether”
`The Board should construe the term “tether” under the BRI standard to mean
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`“any tether that is adapted to attach a restraint device to a helmet including the
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`hardware and components thereon that allow the tether to be attached to a helmet,
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`restraint device or seat belt assembly.”1 Paper 2, p. 22, Section e. This proposed
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`construction comes directly from the Patent Owner’s definition for the term
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`“tether” in the specification. Ex 1001, 4:46-54. When the term “tether” is
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`properly construed to mean “any tether . . .” the construction fully embraces and
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`includes front, rear, and side tethers. The apparatus claim language makes no
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`functional distinction between front, rear, and side tethers. The terms front, rear
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`and side are merely a naming convention that could just as easily be replaced by “a
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`first tether”, “a second tether”, and “a third tether.” The construction of “tether”
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`meaning “any tether” equates all tethers equally without distinction. This is Patent
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`Owner’s own definition directly from the specification, Ex 1001, 4:46-54, and thus
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`what it intended by providing a broad definition for the term “tether.” The Board
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`should accordingly adopt this construction.
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`1 A claim in an unexpired patent, such as the ‘529 Patent, that will not expire
`before a final written decision is issued 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).
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`5. Application of the “Tether” Construction to Representative Claim
`Element 1[d] and to Prior Art Ashline ‘360
`The Board’s reliance on mere labels as distinctions between front, rear, and
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`side tethers was central to its obviousness analysis. Paper 9, pp 10-11. These
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`distinctions however are not supported by, and are inconsistent with, the BRI of the
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`term “tether” meaning “any tether” and thus represents an abuse of discretion.
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`More specifically, focusing only on representative claim 1, element [d], the Board
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`relied on these distinctions when it reasoned that:
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`Petitioner does not identify where Ashline ‘360 discloses side tethers,
`or a rear tether and a side tether jointly attached to a helmet at a single
`attachment point, as recited by element [d]. Ashline ‘360 expressly
`teaches front and rear tethers that, in one embodiment, ‘may attach to
`the same helmet clips, or may attach to separate helmet clips. Thus,
`Petitioner’s statement that Ashline ‘360 ‘fully discloses the subject
`matter of Claim 1 element [d] is not supported by the record.
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`Paper 9, p 11 (internal citation omitted, emphasis in original, underlining added).
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`A Claim Elements 1 [a] – [c] Are Fully Disclosed by Prior Art Patent
`Hubbard ‘510 and Thus Not In Dispute.
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`Claim 1 states2;
`[a] A restraint device having a system of tethers, and a helmet
`cooperating with the tethers, for controlling a driver's head during operation
`of a vehicle, comprising:
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`2 No functional distinction exists in the claim language between front, rear,
`or side tethers. These terms serve merely as labels.
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`[b] a pair of side tethers, each of the side tethers for attachment to a
`respective side of the helmet and to a support member;
`[c] at least one rear tether attached to the support member and for
`attachment to the helmet; and
`[d] wherein the at least one rear tether and one of the pair of side
`tethers are jointly attached to the helmet at a single attachment point on each
`respective side of the helmet.
`Ex 1001, 11:39-49.
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`
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`It is undisputed on the record that elements 1[a] through 1[c] are fully
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`disclosed in the prior art patent Hubbard ‘510. Paper 9, p. 10; see also, Paper 2,
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`pp. 23 – 24; Declaration of Professor Hu, Corrected Ex 1002, ¶¶ 47 - 52 (“Hu Dec.,
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`Corr. Ex 1002”)(Dec. of Pro. Hu summarizing the prosecution history and Patent
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`Owner’s amended to “include the limitation that the rear tether and one of the pair
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`of side tethers are jointly attached to the helmet at a single attachment point on
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`each respective side of the helmet” found in element 1[d] to differentiate claims 1
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`and 15 (now claim 14) from Hubbard ‘510.)
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`B Application of the “Tether” Construction to Claim Element 1[d].
`Turning to Claim element 1 [d], when the term “tether” is construed to mean
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`“any tether” this clause can be viewed as follows: wherein the at least [any] tether
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`and one of [any] tethers are jointly attached to the helmet at a single attachment
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`point on each respective side of the helmet.3 Namely, Claim element 1[d] is
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`directed to the joint attachment of any two tethers on each respective side of the
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`helmet.4 The joint attachment of two tethers to a helmet is fully disclosed in prior
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`art Ashline ‘360.
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`C Application of the “Tether” Construction to Ashline ‘360.
`Now, turning to Ashline ‘360 the same construction of the term “tether”
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`must be applied. Its black letter law that claim constructions should be applied
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`consistently to issues of patentability and validity. See Southwall Tech., Inc. v.
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`Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). Applying the same
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`construction of “tether” meaning “any tether”, Ashline ‘360 discloses to a person of
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`ordinary skill in the art, (“POSITA”) the joint attachment of two tethers on the
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`helmet at a single attachment point on respective sides of the helmet. More
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`specifically, Ashline ‘360 teaches that two “tethers may attach to the same helmet
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`3 The full unaltered text of Claim 1 [d] states: wherein the at least one rear
`tether and one of the pair of side tethers are jointly attached to the helmet at a
`single attachment point on each respective side of the helmet.
`4 Claim 1[d] does not require the direct attachment of the tether to the
`helmet. Attachment to hardware attached to the helmet is sufficient under both the
`BRI of the term “tether” as discussed infra and the proposed construction of the
`term “attached” where the BRI of the term “attached” also includes indirect
`attachment. Ex. 1001, 8:17-21 (The “indirect attachment method is considered to
`be within the meaning of the term “attached” as used in” the ‘529 Patent.) Paper 2,
`p. 20-21, Section 7(a).
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`clips.” Hu Dec., Corr. Ex 1002, ¶89; Ex 1008, 8:7-8. The broadest reasonable
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`interpretation of the term “attached” includes attachment to a helmet clip. Hu
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`Dec., Corr. Ex. 1002, ¶76; Ex 1001, 5:6-13. Accordingly, Ashline ‘360 teaches
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`and fully discloses the joint attachment of two tethers on each side of a helmet as
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`provided in Claim 1 element [d].
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`6. The Board’s Failure to Consider the Appropriate Claim Scope When
`Evaluating Motivation to Combine and the Reasonable Expectation of
`Success Is An Abuse of Discretion
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`The Board’s reasonable expectation of success analysis is legally flawed
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`because it did not consider the appropriate scope of the patent’s claimed invention
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`because the term “tether” had not been construed. Intelligent Bio-Systems, Inc. v.
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`Illuminal Cambridge Ltd, 821 F.3d 1359, 1367 (Fed. Cir. 2016)(citing Allergan,
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`Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014)(“Failure to consider the
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`appropriate scope of the patent’s claimed invention in evaluating the reasonable
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`expectation of success constitutes a legal error.”) An obviousness determination
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`requires finding both "that a skilled artisan would have been motivated to combine
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`the teachings of the prior art references to achieve the claimed invention, and that
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`the skilled artisan would have had a reasonable expectation of success in doing so."
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`Intelligent Bio-Systems, Inc., 821 F.3d at 1367–68 (quoting Kinetic Concepts, Inc.
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`v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)). "The reasonable
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`expectation of success requirement refers to the likelihood of success in combining
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`references to meet the limitations of the claimed invention." Intelligent Bio–
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`Systems , 821 F.3d at 1367.
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`A.
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`Petitioner Presented Direct Evidence Demonstrating a Motivation
`to Combine Sufficient to Support the Granting of an Institution
`Decision.
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`Petitioner presented direct evidence showing a motivation to combine
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`Hubbard ‘510 and Ashline ‘360 sufficient to support the granting of an institution
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`decision. Professor Hu provided expert testimony that a POSITA would be
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`motivated to combine Hubbard ‘510 and Ashline ‘360 because they are directed to
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`solving the same problem in the same way. Namely, both references “teach how to
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`protect a race car driver during a [deceleration] event, like a front-end collision, by
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`using a head and neck protection devices consisting of anchors, tethers, and a
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`helmet for controlling the forward and downward movement of the head and neck
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`of a driver during a frontal crash of a high-performance vehicle.” Hu Dec., Corr.
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`Ex. 1002, ¶90. Professor Hu goes on to explain that a POSITA would be
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`motivated to combine “the helmet and tethers of Hubbard ‘510 (Ex 1005) and
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`Ashline ‘360 (Ex 1008) [because they] have a similar structure and function.” For
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`example, Hubbard ‘510 teaches connecting the helmet to the anchor (collar of the
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`yoke) using side (lateral) tethers and a rear tether. Ex 1005, 6:22-29. Similarly,
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`Ashline ‘360 teaches connecting the helmet to the anchor (seat belts) using tethers.
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`Ex 1008, 6:32-42.” Hu Dec. Corr. Ex. 1002, ¶91.
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`B Petitioner Presented Direct Evidence Demonstrating a Reasonable
`Expectation of Success Sufficient to Support an Institution Decision.
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`Professor Hu also provided direct evidence demonstrating a reasonable
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`expectation of success sufficient to support an institution decision. Professor Hu
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`testified that:
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`a POSITA would understand that Hubbard ‘510 (Ex 1005) and
`Ashline ‘360 (Ex 1008) could be combined with a reasonable
`expectation of success in-part because both references disclose head
`and neck restraint devices consisting of helmets, tethers, and anchors.
`Therefore, in my opinion, a POSITA, would understand that aspects
`of Ashline ‘360 tether configuration (jointly attached at a single point
`on the helmet) could be combined with the anchor (yoke and collar)
`and helmet of Hubbard ‘510 with a reasonable expectation of
`success in forming a head and neck restraint device such as disclosed
`in Claim 1.
`Hu Dec., Corr. Ex. 1002, ¶92 (emphasis added).
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`C NASCAR’s Mandate Provides Additional Motivation
`Petitioner does not rely on NASCAR’s mandate as the sole source of
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`motivation to combine. Rather, it provides additional support for the motivation to
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`combine. There was a demonstrated design need and market pressure to provide
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`comfortable, functional, usable head and neck restraining devices in the wake of
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`NASCAR’s mandate because elite drivers considered the existing devices too
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`bulky, restrictive, and unsafe in emergencies. Hu Dec., Corr. Ex. 1002, ¶40; Ex
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`1010, p 5, 5¶ of highlighted text (“NASCAR officials have said that NASCAR race
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`cars are different from CART cars, and they are unsure if the device would be as
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`effective for NASCAR drivers. Drivers, including [Dale] Earnhardt, have
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`complained that the device is too bulky, would restrict movements and would
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`make it difficult for drivers to exit the car in emergencies.”). NASCAR’s mandate
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`provided a demonstrated design need and market pressure.
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`A finite number of identifiable solutions exist, and those solutions are
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`predictable. There is only a finite number of ways to connect a helmet to an
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`anchor using a tether that allows the apparatus to be used by a driver. Professor Hu
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`provided expert testimony that all head and neck restraint apparatuses consist of
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`anchors, a helmet and connecting tethers. Hu Dec., Corr. Ex. 1002, ¶34. Professor
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`Hu testified that:
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`To protect the head and neck during a frontal crash, the safety device
`minimizes the relative motion between the head and torso. The tethers
`connecting the anchor and helmet are designed specifically for this
`purpose. As a general rule, the anchor should be attached to the torso
`as tightly as possible, and the tethers should be connected to the
`anchor and the helmet to minimize relative motions between the head
`and torso in frontal crashes. The specific tether and anchor designs
`will vary slightly for ease of use and light weight. From a safety point
`of view, however, their functions and requirements are always the
`same, which is to mitigate the relative motion between the head and
`torso.
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`Case IPR2018-00133
`U.S. Patent No. 9,351,529 B1
`Hu Dec., Corr. Ex. 1002, ¶35. “[T]he location of a tether to the helmet is based on
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`controlling movement of the driver’s head during a collision.” Hu Dec., Cor. Ex. 2,
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`¶36 (citing Ex 1009, 8:1-3). There are only a finite number of places tethers can be
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`attached to a driver’s helmet to safely control head movement during a crash and
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`they are fully shown in the prior art.
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`D Modification of the Prior Art is Not Needed When The Proper
`Construction of “Tether” Is Applied to the Prior Art.
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`The Board misapprehended Petitioner’s arguments to require modification
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`of the prior art. See Paper 9, p12. Under the proper construction of the term
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`“tether” Ashline ‘360 unambiguously discloses the joint attachment of tethers to
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`the helmet. No modification of the prior art is required. For example the Board
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`reasoned that, “[b]eing in the same field of endeavor and/or addressing similar
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`problems, however, does not provide a reason with a rational underpinning as to
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`why one of ordinary skill in the art would have modified Hubbard ‘510 to attach a
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`side and rear tether to the same helmet clip. Additionally, that Ashline ‘360 points
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`to a different reference, Hubbard ‘566, as being in the same field of endeavor
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`similarly fails to provide a reason as to why one of ordinary skill in the art would
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`have modified Hubbard ‘510 in the manner proposed by the Petitioner.” Paper 9,
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`p. 12.
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`Case IPR2018-00133
`U.S. Patent No. 9,351,529 B1
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`7. Challenged Claims 2 - 19.
`Nearly identical language dealing with the joint attachment of tethers
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`appears in independent claims 8 and 14. Paper 9, p. 15. Petitioner relies on the
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`same combination of Hubbard ‘510 and Ashline ‘360 to meet this claim language.
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`Id. The Board therefore concluded that “Petitioner’s arguments with respect to
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`these claims suffer from the same deficiencies” as claim 1[d]. Id.
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`Petitioner submits that for the same reasons articulated supra regarding
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`Claim 1 apply with equal force to independent claims 8 and 14, and the claims that
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`depend therefrom. Accordingly, Petitioner requests reconsideration of Challenged
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`Claims 2 – 19 as well.
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`8. Conclusion
`Petitioner respectfully requests rehearing and reconsideration of the Board’s
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`decision denying institution of an IPR trial. Petitioner submits that: (a) when the
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`term “tether” is construed consistent with its BRI to mean “any tether”; (b) Ashline
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`‘360 fully discloses the joint attachment of tethers to the helmet (i.e. claim element
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`1[d]); and, (c) substantial direct evidence has been presented establishing a
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`motivation to combine Hubbard ‘510 and Ashline ‘360 with a reasonable
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`expectation of success sufficient to establish a reasonable likelihood that at least
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`one of the Challenged Claims is unpatentable. Accordingly, Petitioner requests
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`institution of an inter parties review trial of the Challenged Claims.
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`Dated: June 1, 2018
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`
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`
`
`Case IPR2018-00133
`U.S. Patent No. 9,351,529 B1
`Respectfully submitted by:
`/Luke Anderson/
`
`Luke Anderson
`USPTO Registration No. 44,507
`Atlanta Technology Law
`(Luke Anderson P.C.)
`1230 Peachtree St., NE
`Suite 1900
`Atlanta, GA 30309
`Telephone: 404-991-2241
`Facsimile: 404-935-0927
`Email:
`Landerson@atltechlaw.com
`
`
`Docket@atltechlaw.com
`
`Counsel for Petitioner NecksGen, Inc.
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`Case IPR2018-00133
`U.S. Patent No. 9,351,529 B1
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6 (e))
`The undersigned hereby certifies that the within and forgoing
`PETITIONER NECKSGEN, INC.’S REQUEST FOR RECONSIDERATION
`UNDER 37 C.F.R. §42.71 OF THE DECISION DENYING INSTITUTION
`OF INTER PARTES REVIEW was served in its entirety on June 1, 2018, upon
`the following parties via electronic service (e-mail) at:
`
`Gregory R. Everman, Esq.
`Everman Law Firm, P.A.
`6000 Fairview Road, Suite 1200
`Charlotte, NC 28210
`
`
`
`Geverman@evermanlawfirm.com
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`
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`ATLANTA TECHNOLOGY LAW
`(Luke Anderson P.C.)
`
`/Luke Anderson/
`Luke Anderson
`Attorney for Petitioner
`USPTO Registration No. 44,507
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`Craig N. Killen
`Karl S. Sawyer, Jr.
`Nelson Mullins Riley
` & Scarborough LLP
`301 South College Street, 23rd Floor
`Charlotte, NC 28202
`
`Craig.killen@nelsonmullins.com
`Karl.sawyer@nelsonmullins.com
`IP@nelsonmullins.com
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`
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`Date: June 1, 2018.
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`1230 Peachtree St. NE
`Suite 1900
`Atlanta, Georgia 30309
`404-991-2241
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