Trials@uspto.gov
`571.272.7822
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`
`
`
`
` Paper No. 11
`Entered: July 25, 2018
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`
`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 9,351,529 B1
`____________
`
`
`Before MICHAEL W. KIM, BART A. GERSTENBLITH, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71; 35 U.S.C. § 314(a)
`
`
`
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`
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`

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`IPR2018-00133
`Patent 9,351,529 B1
`
`
`INTRODUCTION
`I.
`NecksGen, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of inter partes review of claims 1–19 of U.S. Patent
`No. 9,351,529 B1 (Ex. 1001, “the ’529 patent”). Simpson Performance
`Products, Inc. (“Patent Owner”) filed a Corrected Preliminary Response
`(Paper 8).1 In our Decision Denying Institution (“Decision”), we determined
`that Petitioner failed to establish a reasonable likelihood of prevailing at trial
`on any of its asserted challenges. Paper 9 (“Dec.”). Petitioner filed a
`Request for Reconsideration (“Request”) of our Decision. Paper 10 (“Req.
`Reh’g”). For the reasons provided below, we deny Petitioner’s Request.
`
`STANDARD OF REVIEW
`II.
`When considering a request for rehearing, the Board reviews its
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may arise if the decision was based on an erroneous interpretation
`of law, if a factual finding is not supported by substantial evidence, or if an
`unreasonable judgment is made in weighing relevant factors. Star Fruits
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). Additionally: “The burden of
`showing a decision should be modified lies with the party challenging the
`decision. The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.
`37 C.F.R. § 42.71(d).
`
`
`1 In response to Patent Owner’s unopposed request, we authorized Patent
`Owner to file, inter alia, a corrected preliminary response on March 22,
`2018.
`
`2
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`IPR2018-00133
`Patent 9,351,529 B1
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`
`III. ANALYSIS
`Petitioner contends that we abused our discretion “by failing to
`construe the claim term ‘tether’” in our Decision. Req. Reh’g 3. Petitioner
`asserts that an “actual dispute exists regarding the construction of the claim
`term,” which Petitioner contends “[t]he record unambiguously
`demonstrates.” Id. at 3–4. Petitioner explains that it proposed a construction
`for “tether” that Patent Owner did not oppose expressly, but that Patent
`Owner’s arguments in the Preliminary Response reveal that Patent Owner
`applied a narrower construction of the term. Id. at 4 (citing Paper 2, 22;
`Paper 8, 1, 3–8, 32 (pointing to Patent Owner’s arguments regarding the
`recitations of the claim terms “side” and “rear” tethers). Petitioner contends
`that the construction of “tether” was central to our consideration of
`Petitioner’s challenges. Id. at 7. Petitioner asserts that our alleged failure to
`consider the appropriate claim scope resulted in an abuse of discretion in our
`(1) application of the art to the claims and (2) evaluation of whether
`Petitioner established a reasonable likelihood of demonstrating that one of
`ordinary skill in the art would have been motivated to combine the teachings
`of the references with a reasonable expectation of success. Id. at 7–15.
`
`Construction of “Tether”
`
`In the Petition, Petitioner proposed that we construe five claim terms
`or phrases: (1) “attached”; (2) “jointly attached”; (3) “being disposed
`between shoulder belts of a seat belt assembly”; (4) “helmet”; and
`(5) “tether.” Pet. 20–22. With respect to “tether,” Petitioner stated:
`The BRI of the term “tether” should be construed to mean
`“any tether, webbing, strap, dashpot, belt, cord, chain, cable,
`rope, band, or the like, that is adapted to attach a restraint device
`to a helmet, and includes the hardware and components (e.g. ring,
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`loops and clips) thereon that allow the tether to be attached to a
`helmet, restraint device or seat belt assembly. The BRI of the
`term “tether” should also include “a tether that attaches a skull
`cap to an embodiment of the restraint device.[”] The BRI of the
`term “tether” should also include that a “tether” “may be
`comprised of more than one section and that the term tether may
`include only the tether section that attaches to the support
`member and/or the entire tethering system that joins the support
`member to the helmet.”
`Id. at 22 (citing Ex. 1001, 4:46–54, 4:63–5:3; Ex. 1002 ¶ 76).
`Patent Owner did not propose a construction for the term “tether” in
`the Preliminary Response. In our Decision, we determined that “[w]e do not
`need to construe expressly any claim terms for purposes of this Decision”
`because it did not appear, from the arguments presented, that any claim
`terms were in dispute. Dec. 6. When we considered the parties’ positions in
`reaching our Decision, we were aware that the term “tether” was defined in
`the ’529 patent, even though Petitioner did not state that expressly. In other
`words, we understood, and now explicitly determine, that the patentee acted
`as his own lexicographer by setting forth a specific definition for “tether” in
`the ’529 patent. Phillips v. AWH Corp., 415 F.3d 1303, 1316
`(Fed. Cir. 2005) (en banc) (if the specification “reveal[s] a special definition
`given to a claim term by the patentee that differs from the meaning it would
`otherwise possess[,] . . . the inventor’s lexicography governs”) (citing CCS
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
`The ’529 patent’s discussion of “tether” is as follows:
`The term “tether”, as used herein, includes, without
`limitation, any
`tether, webbing,
`strap, dashpot/dashpot
`containing a controllable rheological fluid such as that disclosed
`in U.S. Pat. No. 7,155,747 to Gregg S. Baker, belt, cord, chain,
`cable, rope, band, or the like, that is adapted to attach a restraint
`device to a helmet. Tether also includes the hardware and
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`components (e.g. rings, loops and clips) thereon that allow the
`tether to be attached to a helmet, restraint device or seat belt
`assembly.
` Moreover, the term tether includes, without
`limitation, where the tether has one end attached to a helmet and
`the other end attached to the restraint device or seat belt assembly
`(an example of which is side tether 48 of FIG. 1); where the tether
`is one continuous length having terminal ends available for
`attaching to a helmet and an intermediate section attached to an
`embodiment of the restraint device (an example of which is rear
`tether 18 of FIG. 1); a network of webbing (not illustrated) that
`wraps over a helmet and which attaches to an embodiment of the
`restraint device; a tether that attaches a skull cap (not illustrated)
`to an embodiment of the restraint device; and the other suitable
`arrangements. It is to be understood that each tether may be
`comprised of more than one section and that the term tether may
`include only the tether section that attaches to the support
`member and/or the entire tethering system that joins the support
`member to the helmet.
`Ex. 1001, 4:37–5:3. Accordingly, although we understood “tether” as set
`forth above when considering the parties’ positions on institution, we make
`explicit that our construction of “tether” is in accordance with the patentee’s
`definition of the term.
`
`Claim Element 1[d] and Ashline ’360
`
`The focus of our Decision was on what Petitioner referred to as
`“element [d]” of claim 1. Element [d] recites “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,
`11:47–49; see also Pet. 23; Dec. 10. As a preliminary matter, we found that
`Petitioner had not shown that Ashline ’3602 teaches element 1[d]. Dec. 11.
`In particular, we noted that Ashline ’360 teaches front and rear tethers, but
`
`
`2 U.S. Patent no. 6,871,360 B2, issued March 29, 2005 (Ex. 1008).
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`not 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].” Id.
`In its Request, Petitioner now contends that “[w]hen the term ‘tether’
`is properly construed to mean ‘any tether . . .’ the construction fully
`embraces and includes front, rear, and side tethers.” Req. Reh’g 6.
`According to Petitioner, “[t]he terms front, rear and side are merely a
`naming convention that could just as easily be replaced by ‘a first tether’, ‘a
`second tether’, and ‘a third tether.’” Id. Petitioner asserts that “[t]he
`construction of ‘tether’ meaning ‘any tether’ equates all tethers equally
`without distinction.” Id. Thus, Petitioner contends that when the term
`“tether” is construed to mean “any tether” claim element 1[d] should be
`understood to mean “wherein the at least [any] tether and one of [any]
`tethers are jointly attached to the helmet at a single attachment point on each
`respective side of the helmet.” Id. at 8–9. In short, Petitioner’s position on
`rehearing is that “Claim element 1[d] is directed to the joint attachment of
`any two tethers on each respective side of the helmet.” Id. at 9 (emphasis
`added).
`Based on Petitioner’s application of its claim construction, Petitioner
`contends that Ashline ’360 teaches element 1[d] because it discloses “the
`joint attachment of two tethers on each side of a helmet.” Id. at 9–10.
`Additionally, Petitioner asserts that “[n]o modification of the prior art is
`required” under the “proper construction of the term ‘tether.’” Id. at 14.
`We disagree with Petitioner’s application of the construction of
`“tether” because it renders the limitations “side” and “rear” superfluous. See
`SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 429
`(Fed. Cir. 2016) (“It is true that interpretations that render some portion of
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`the claim language superfluous are disfavored.”) (quotation and citations
`omitted). Petitioner attempts to read the broad definition of “tether” not just
`to define the term itself, but also to redefine the phrases “side tether” and
`“rear tether.” That the definition of “tether” encompasses “any tether” does
`not mandate we vitiate the terms “side” and “rear”; rather, reading the terms
`together results in any side tether and any rear tether. Thus, we disagree
`with Petitioner’s theory that the claim recitations of “side tether” and “rear
`tether” should each be construed to mean “[any] tether.”
`Further, Petitioner failed to set forth, in the Petition, its theory as to
`how the meaning of “tether” affects its consideration of Ashline ’360 and
`claim element 1[d]. In other words, Petitioner spends two-and-a-half pages
`in its Request explaining how its construction of “tether” supports its
`position that Ashline ’360 discloses element 1[d], whereas the argument in
`the Petition consists of a single, seven-line paragraph:
`Ashline ‘360 (Ex 1008) fully discloses the subject matter
`of Claim 1 element [d]. Ashline ‘360 discloses to a POSITA the
`joint attachment of tethers on the helmet at a single attachment
`point on respective sides of the helmet. More specifically,
`Ashline ‘360 teaches that two “tethers may attach to the same
`helmet clips.” The broadest reasonable interpretation of the term
`“attached” includes attachment to a helmet clip.
`Pet. 24 (citing Ex. 1002 ¶¶ 76, 89; Ex. 1001, 5:6–13; Ex. 1008, 8:7–8). In
`fact, Petitioner’s focus appears to be on the meaning of “attached” as
`opposed to the meaning or application of “tether.”
`Accordingly, we are unpersuaded by Petitioner’s argument as to
`(1) the interpretation of the claim in light of the construction of “tether” and
`(2) the application of claim element 1[d] to Ashline ’360. Further, we are
`unpersuaded by the implication in Petitioner’s Request that we
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`misapprehended or overlooked Petitioner’s theory as to the application of its
`claim construction to Ashline ’360 because Petitioner did not fully explain
`that theory in its Petition. 37 C.F.R. § 42.71(d).
`
` Motivation to Combine & Reasonable Expectation of Success
`Petitioner contends that we abused our discretion by failing to
`consider the appropriate claim scope when evaluating motivation to combine
`and reasonable expectation of success. Req. Reh’g 10–14. First, as
`discussed above, we did not fail to consider the appropriate claim scope.
`Second, we have now set forth that claim scope expressly. In light of our
`discussion above, our analysis regarding motivation to combine and
`reasonable expectation of success is no different from that which we set
`forth in our Decision. Dec. 11–15. Petitioner’s reiteration of the same
`positions set forth in Petition does not persuade us that we abused our
`discretion in finding that Petitioner has not established a reasonable
`likelihood of demonstrating that one of ordinary skill in the art would have
`been promoted to modify and combine the teachings as proposed by
`Petitioner with a reasonable expectation of success. Accordingly, we are
`unpersuaded by Petitioner’s argument that we abused our discretion with
`respect to these issues.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
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`IPR2018-00133
`Patent 9,351,529 B1
`
`For PETITIONER:
`
`Luke Anderson
`ATLANTA TECHNOLOGY LAW
`(LUKE ANDERSON P.C.)
`Landerson@atltechlaw.com
`
`Minh Nguyen
`NEXT IP LAW GROUP, LLC
`Mnguyen@nextiplaw.com
`
`
`
`For PATENT OWNER:
`
`Craig N. Killen
`Karl S. Sawyer, Jr.
`NELSON MULLINS RILEY & SCARBOROUGH LLP
`craig.killen@nelsonmullins.com
`karl.sawyer@nelsonmullins.com
`ip@nelsonmullins.com
`
`
`
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