Patent No. 9,351,529
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`Petition for Inter Partes Review
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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 No. 9,351,529
`Issued: May 31, 2016
`______________________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §42.100 Et. Seq.
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`

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`Patent No. 9,351,529
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`Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`Page
`EXHIBIT LIST .......................................................................................................... i
`1. INTRODUCTION ............................................................................................... 1
`2. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ........................................ 2
`a. Real-Party-In-Interest (RPI) ............................................................................. 2
`b. Notice Of Related Matters ................................................................................ 2
`c. Lead and Back-up Counsel Under 37 C.F.R. §42.8(b)(3) ............................... 3
`d. Notice of Service Information .......................................................................... 4
`3. PAYMENT OF FEES.......................................................................................... 4
`4. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §
`42.104 ......................................................................................................................... 4
`a. Grounds For Standing ....................................................................................... 4
`b. Identification of Challenged Claims ................................................................. 5
`5. STATEMENT OF REASONS FOR RELIEF REQUESTED ............................ 6
`a. Legal Standard .................................................................................................. 6
`b. Level of Ordinary Skill In The Art In The Relevant Timeframe ..................... 7
`c. Background of Head and Neck Restraints at The Time of the ‘529 Patent –
`Anchors, Helmets, and Tethers ............................................................................... 7
`d. The ‘529 Patent ...............................................................................................10
`e. Prosecution History of the ‘529 Patent ...........................................................14
`6. Prior Art .............................................................................................................18
`a. U.S. Patent No. 4,638,510 (Hubbard ‘510)(Ex. 1005) ...................................18
`b. U.S. Patent No. 6,009,566 (Hubbard ‘566)(Ex. 1006) ...................................18
`c. U.S. Patent No. 6,810,535 (Moloney)(Ex 1007) ............................................19
`d. U.S. Patent No. 6,871,360 (Ashline ‘360)(Ex 1008) .....................................19
`e. U.S. Patent No. 6,931,669 (Ashline ‘669)(Ex 1009) .....................................19
`7. CLAIM CONSTRUCTION ..............................................................................19
`a. “attached” .......................................................................................................20
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`a
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`b. “jointly attached” ............................................................................................21
`c. “begin disposed between shoulder belts of a seat belt assembly” .................21
`d. “helmet” ..........................................................................................................22
`e. “tether” ............................................................................................................22
`8. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY.............................................................................................22
`a. Claim 1 ...........................................................................................................23
`i. Claim 1[a] Elements - Preamble .................................................................23
`ii. Claim 1[b] and 1[c] Elements. ....................................................................23
`iii. Claim 1[d] Elements ....................................................................................24
`iv. Motivation to Combine Hubbard ‘510 and Ashline ‘360 ...........................24
`b. Claim 8 ...........................................................................................................26
`i. Claim 8[a] Elements - Preamble .................................................................27
`ii. Claim 8[b] Elements ....................................................................................27
`iii. Claim 8[c] Elements ....................................................................................28
`iv. Claim 8[d] Elements ....................................................................................28
`v. Claim 8[e] Elements ....................................................................................30
`vi. Motivation to Combine Hubbard ‘510, Hubbard ‘566, Ashline ‘360 and
`Ashline ‘669 .......................................................................................................31
`c. Independent Claim 14 .....................................................................................34
`i. Claim 14 [a] Elements - Preamble ..............................................................35
`ii. Claim 14 [b] Elements .................................................................................35
`iii. Claim 14 [c] Elements .................................................................................35
`iv. Claim 14 [d] Elements .................................................................................36
`v. Claim 14 [e] Elements .................................................................................39
`vi. Motivation to Combine Hubbard ‘510, Hubbard ‘566, Ashline ‘360 and
`Ashline ‘669. ......................................................................................................39
`d. Dependent Claims 2, 9, and 15 – Support Member Configured to be Worn .39
`e. Dependent Claims 3, 10, 16 –Side Tethers Attached Underneath the Support
`Member .................................................................................................................41
`b
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`f. Dependent Claims 4, 11, 17 – Rigid Support Member ..................................46
`g. Dependent Claim 5 – Rear tether angles upwards and forwards from the
`support member ....................................................................................................47
`h. Dependent Claim 6 – Rear Tethers Angled Upwards in the Range of 25 to 45
`Degrees. ................................................................................................................51
`i. Dependent Claim 7 – Rear Tether Angles Inwards From the Support Member
`
`52
`j. Dependent Claim 12 – Support Member Engages the Shoulder Belts ..........54
`k. Dependent Claims 13 and 19 – Side Tethers Not Disposed Directly
`Vertically above Any Shoulder Belt. ....................................................................56
`l. Dependent Claim 18 – Side tethers does not pass directly vertically above
`any of the shoulder belts. ......................................................................................59
`9. SECTION 325(d) DOES NOT BAR CONSIDERATION OF
`PETITIONNER’S ART, ARGUMENTS, AND EVIDENCE BECAUSE IT HAS
`NOT BEEN PREVIOUSLY CONSIDERED. ........................................................62
`10. CONCLUSION ..............................................................................................64
`11. CERTIFICATE OF WORD COUNT ............................................................65
`12. CERTIFICATE OF SERVICE .......................................................................66
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`c
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`Patent No. 9,351,529
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`Petition for Inter Partes Review
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`Table of Authority
`
`
`
`
`
`Cases
`
`Cisco Sys., Inc. v. Crossroads Sys., Inc., IPR2014-01544, Institution of Inter
`Partes Review, 2015 WL 1546526, at *7-8 (Apr. 3, 2015) .................................63
`
`Glob. Tel*link Corp. v. Securus Techs., Inc., IPR2014-00824, Final Written
`Decision, 2015 WL 9599196, at *31 (Dec. 2, 2015) ............................................63
`
`In re Aller, 220 F.2d 454 (C.C.P.A. 1955) .......................................... 38, 49, 52, 53
`
`In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012) ............ 38, 49, 52, 53
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015); aff’d, 136 S. Ct.
`2131 (2016) ...........................................................................................................20
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) .................................20
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004) 38,
`49, 52, 53
`
`KSR Int’l v. Teleflex Inc., 550 U.S. 398, (2007) ........................................... 6, 46, 51
`
`Microsoft Corp. v. Parallel Networks Licensing, LLC, IPR2015-00486, Institution
`of Inter Partes Review, 2015 WL 4760578, at *8 (July 15, 2015) ......................62
`
`Praxair Distribution Inc. v. Ino Therapeutics, LLC, IPR2015-00893, Institution of
`Inter Partes Review, at *7-9 (Sept. 22, 2015) ......................................................63
`
`Statutes
`
`35 U.S.C. § 103 ....................................................................................................6, 62
`
`35 U.S.C. §112 .........................................................................................................20
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`35 U.S.C. §314 (a) ...................................................................................................62
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`35 U.S.C. §325(d) ....................................................................................................63
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`i
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`Regulations
`37 C.F.R. § 42.100(b) ..............................................................................................20
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`ii
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`Patent No. 9,351,529
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`Exhibit No.
`1001
`
`1002
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`1003
`
`1004
`
`1005
`
`1006
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`1007
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`1008
`
`1009
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`1010
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`1011
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`1012
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`1013
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`1014
`
`EXHIBIT LIST
`Description
`
`U.S. Patent No. 9,351,529
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`Declaration of Professor Hu
`
`Professor Hu’s Curriculum Vita
`
`Prosecution History for U.S. Patent No. 9,351,529
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`U.S. Patent No. 4,638,510 (Hubbard ‘510)
`
`U.S. Patent No. 6,009,566 (Hubbard ‘566)
`
`U.S. Patent No. 6,810,535 (Moloney)
`
`U.S. Patent No. 6,871,360 (Ashline ‘360)
`
`U.S. Patent No. 6,931,669 (Ashline ‘669)
`
`Kevin Bonsor and Karim Nice, How NASCAR Safety Works,
`February 23, 2001
`
`Jenna Fryer, NASCAR Mandates Head-and-Neck Restraints,
`October 18, 2001
`
`How the Head-and-Neck Restraint System Works, June 21, 2007,
`updated April 5, ESPN.Com
`
`Amended Complaint, Simpson Performance Products, Inc. v.
`NacksGen, Inc., United States District Court for the Western
`District of North Carolina, Statesville Division, Civil Action No.
`5:16-cv-00153-RLV-DCK., Dkt. No. 12.
`
`Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions Pursuant to Local Patent Rule 3.1 in Simpson
`Performance Products, Inc. v. Zamp Inc., United States District
`Court for the Western District of North Carolina, Statesville
`Division, Civil Action No. 5:16-cv-157-RLV-DCK.
`
`1015
`
`Joint Claim Construction and Pre-Hearing Statement, Exhibit A,
`in Simpson Performance Products, Inc. v. Zamp Inc., United
`
`
`
`A
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`

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`Patent No. 9,351,529
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`1016
`
`1017
`
`1018
`
`1019
`
`States District Court for the Western District of North Carolina,
`Statesville Division, Civil Action No. 5:16-cv-157-RLV-DCK.,
`Dkt. 13.
`
`Plaintiff’s Opening Claim Construction Brief, in Simpson
`Performance Products, Inc. v. Zamp Inc., United States District
`Court for the Western District of North Carolina, Statesville
`Division, Civil Action No. 5:16-cv-157-RLV-DCK., Dkt. 16.
`
`Zamp’s Initial Claim Construction Brief, in Simpson Performance
`Products, Inc. v. Zamp Inc., United States District Court for the
`Western District of North Carolina, Statesville Division, Civil
`Action No. 5:16-cv-157-RLV-DCK., Dkt. 17.
`
`Plaintiff’s Reply to Zamp’s Initial Claim Construction Brief, in
`Simpson Performance Products, Inc. v. Zamp Inc., United States
`District Court for the Western District of North Carolina,
`Statesville Division, Civil Action No. 5:16-cv-157-RLV-DCK.,
`Dkt. 18.
`
`Zamp’s Sur Reply Claim Construction Brief, in Simpson
`Performance Products, Inc. v. Zamp Inc., United States District
`Court for the Western District of North Carolina, Statesville
`Division, Civil Action No. 5:16-cv-157-RLV-DCK., Dkt. 19.
`
`
`
`
`B
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`Patent No. 9,351,529
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`Petition for Inter Partes Review
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`1. INTRODUCTION
`There are three independent claims in the ‘529 Patent – Claims 1, 8, and 14
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`– each requiring that the “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
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`of the helmet.” Ex 1001, 11:48-49 (Claim 1); 12: 22-24 (Claim 8); and, 12:55-57
`
`(Claim14). The Patent Owner amended each of these independent claims during
`
`prosecution to include this limitation and argued that this amendment distinguishes
`
`the independent claims because the prior art reference “Hubbard [‘510] discloses
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`rear and side tether[s] having separate attachment points; that is, the rear tether
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`being attached to the rear of a helmet and side tether being attached to the sides of
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`the helmet.” Ex 1004, p. 42. The Patent Owner then asserted that “Hubbard [‘510]
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`does not teach or suggest the claimed limitations,” namely the “joint attachment”
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`limitation, and then “request[ed] that the rejections to claims 1, 3-20 (all pending
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`claims) be withdrawn.” Id. The Examiner relented and passed the application to
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`issuance.
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`The “joint attachment” limitation was well known in the prior art. In fact,
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`Patent Owner’s own prior patent Ashline ‘360 (Ex 1006) fully discloses this
`
`limitation. Ex. 1006, 8:7-8 (disclosing that two tethers may attach to the same
`
`helmet clips). Meaning that the tethers are “jointly attached to the helmet at a
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`single attachment point.” Accordingly, Petitioner will demonstrate that all
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`elements of the Challenged Claims, including the “joint attachment” limitation that
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`Patent Owner argued distinguished the claimed invention over the prior art during
`
`prosecution, are well known in the prior art.
`
`2. MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`
`a. Real-Party-In-Interest (RPI)
`
`The RPI for this Petition is (1) NecksGen, Inc. (“NecksGen”).
`
`b. Notice Of Related Matters
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`U.S. Patent No. 9,351,529 B2, (“the ‘529 Patent”) is assigned to Simpson
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`
`
`
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`Performance Products, (“Simpson”). Ex 1001 at p 1. NecksGen is the source of
`
`products Simpson has accused on infringement in the district court action
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`identified below.
`
`
`
`Simpson has asserted the ‘529 Patent against NecksGen in the currently
`
`pending civil action Simpson Safety Products, Inc. v. NecksGen, Inc., Civil Action
`
`No. 3:17-cv-01704-BEN-MDD in the United States District Court for the Southern
`
`District of Southern District of California, (“NecksGen Action”).
`
`
`
`The NecksGen Action was originally filed in the United States District Court
`
`for the Western District of North Carolina, Statesville Division as Civil Action No.
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`5:16-cv-153-RLV-DCK on August 24, 2016 (Dkt. 1). NecksGen was first served
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`on November 2, 2016 (Dkt. 7). The civil action was transferred from the Western
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`District of North Carolina to the Southern District of California on August 23,
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`2017.
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`
`
`Simpson has also asserted the ‘529 Patent in a Complaint filed on August
`
`24, 2016 in the civil action Simpson Performance Products, Inc. v. Mastercraft
`
`Safety, Inc. and Impact Racing Inc., Civil Action No. 3:16-cv-638-RJC-DSC in the
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`United States District Court for the Western District of North Carolina, (“Impact
`
`Action”). The Impact Action was transferred to the Southern District of California
`
`on August 23, 2017 and is presently assigned case number 3:17-cv-1706-BEN-
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`MDD.
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`
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`Simpson has also asserted the ‘529 Patent in a Complaint filed on August
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`24, 2016 in the civil action Simpson Performance Products, Inc. v. Zamp, Inc.,
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`Civil Action No. 5:16-cv-157-RLV-DCK pending in the United States District
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`Court for the Western District of North Carolina, Statesville Division, (“Zamp
`
`Action”).
`
`c. Lead and Back-up Counsel Under 37 C.F.R. §42.8(b)(3)
`
`Lead Counsel
`Luke Anderson (Reg. No. 44,507)
`Tel.: 404-991-2241
`Email: Landerson@atltechlaw.com
`
`Atlanta Technology Law
`(Luke Anderson P.C.)
`1230 Peachtree Street, NE
`Suite 1900
`Atlanta, Georgia 30309
`
`Backup Counsel
`Minh Nguyen (Reg. No. 53,864)
`Tel. 678-561-5706
`Email: Mnguyen@nextiplaw.com
`
`Next IP Law Group, LLP
`Two Ravinia
`Suite 500
`Atlanta, Georgia 30346
`
`
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`3
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`Patent No. 9,351,529
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`Petition for Inter Partes Review
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`Lead Counsel
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`Fax: 404-935-0927
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`Backup Counsel
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`d. Notice of Service Information
`Please address all correspondence to the lead counsel at the address above.
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`
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`
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`Petitioner consents to email service at: Landerson@atltechlaw.com,
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`Docket@atltechlaw.com, and Mnguyen@nextiplaw.com.
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`3. PAYMENT OF FEES
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`The filing fee for this IPR is submitted herewith. The Commissioner is
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`authorized to charge any additional fees or credit any overpayment to Deposit
`
`Account No. 50-5944.
`
`4. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`a. Grounds For Standing
`
`
`
`Petitioner hereby certifies that the patent for which review is sought is
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`available for IPR and that the Petitioner is not barred or estopped from requesting
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`an IPR review challenging the patent claims on the grounds identified herein
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`below.
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`Petition for Inter Partes Review
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`b. Identification of Challenged Claims
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`Petitioner requests that claims 1 – 19 of the ‘529 Patent, (“Challenged
`
`
`
`
`
`Claims”) be cancelled as obvious in light of the prior art based on the following
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`grounds of unpatentability:
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`
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`Ground 1. Claim 1 is obvious under 35 U.S.C. §103(a)(pre-AIA) based on
`
`U.S. Patent No. 4,638,510 (Hubbard ‘510)(Ex1005) in view of U.S. Patent No.
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`6,871,360 (Ashline ‘360)(Ex 1008).
`
`
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`Ground 2. Claim 2 is obvious under 35 U.S.C. §103(a)(pre-AIA) based on
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`(“Hubbard ‘510”)(Ex 1005) in view of Ashline ‘360 (Ex 1008) and U.S. Patent No.
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`6,931,669 (“Ashline ‘669”)(Ex 1009).
`
`
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`Ground 3. Claim 3 is obvious under 35 U.S.C. §103(a)(pre-AIA) based on
`
`Hubbard ‘510 (Ex 1005) in view of Ashline ‘360 (Ex 1008) and Ashline ‘669 (Ex
`
`1009) and in further view of U.S. Patent No. 6,810,535 (“Moloney”)(Ex 1007).
`
`
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`Ground 4. Claim 4 is obvious under 35 U.S.C. §103(a)(pre-AIA) based on
`
`Hubbard ‘510 (Ex 1005) in view of Ashline ‘360 (Ex 1008) and in further view of
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`U.S. Patent 6,009,566 (Hubbard ‘566)(Ex 1006).
`
`
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`Ground 5. Claims 5,6, and 7 are obvious under 35 U.S.C. §103(a)(pre-
`
`AIA) based on Hubbard ‘510 (Ex 1005) in view of Ashline ‘360 (Ex 1008) and in
`
`further view of Moloney (Ex 1007).
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`Ground 6. Claims 8,9, 11 to 15 and 17 to 19 are obvious under 35 U.S.C.
`
`
`
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`§103(a)(pre-AIA) based on Hubbard ‘510 (Ex 1005) in view of Ashline ‘360 (Ex
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`1008) and Ashline ‘669 (Ex 1009) and in further view of Hubbard ‘566 (Ex 1006).
`
`
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`Ground 7. Claims 10 and 16 are obvious under 35 U.S.C. §103(a)(pre-
`
`AIA) based on Hubbard ‘510 (Ex 1005) in view of Ashline ‘360 (Ex 1008) and
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`Ashline ‘669 (Ex 1009) and Hubbard ‘566 (Ex 1006) in further view of Moloney
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`(Ex 1007).
`
`
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`None of these prior art combinations were previously applied by the
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`Examiner during prosecution, even though these references were before the
`
`Examiner. Ex 1002, ¶¶55, 84.
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`5. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`a. Legal Standard
`
`
`
`A claim is obvious “if 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.” 35 U.S.C. § 103. The obviousness analysis includes an assessment of
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`the Graham factors: (1) the scope and content of the prior art; (2) any differences
`
`between the claims and the prior art; and, (3) the level of ordinary skill in the art;
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`and, (4) any objective indicia of nonobviousness. KSR Int’l v. Teleflex Inc., 550
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`U.S. 398, 406 (2007).
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`b. Level of Ordinary Skill In The Art In The Relevant Timeframe
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`As supported by Petitioner’s expert, Professor Hu, a person of ordinary skill
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`
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`
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`in the art related to the ‘529 Patent in the 2007- early 2008 time frame would have
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`would have at least a bachelor’s degree in mechanical engineering, automotive
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`engineering, or biomedical engineering or other similar type of engineering degree,
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`combined with at least two (2) years of experience in the field of automotive safety
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`restraints, or three (3) to four (4) years of experience working in the head and neck
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`restraint industry. Ex 1002, ¶¶ 27-31.
`
`c. Background of Head and Neck Restraints at The Time of the ‘529
`Patent – Anchors, Helmets, and Tethers
`Petitioner’s expert – Professor Hu – provides a detailed description of the
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`head and neck restraint devices at the time of the ‘529 Patent in his declaration
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`provided as Exhibit 1002. See Ex 1002, ¶¶33 – 39. While portions of that
`
`explanation, including the summary below, may be written in the present tense, the
`
`perspective applied is that of a person of ordinary skill in the art at the time the
`
`parent application (Serial No. 12/082,966) that was filed on April 14, 2008, and for
`
`some time before then, unless otherwise specifically indicated.
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`Head and neck restraint devices for racing have been used since the early
`
`1980’s when Dr. Robert Hubbard, a professor of biomechanical engineering at
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`Michigan State University, first introduced the Head and Neck Support Device
`
`(HANS). Since the early 1980’s many different variations of the HANS device
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`have been introduced – some of which have been patented as reflected in the prior
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`art cited during the prosecution of the ‘529 Patent. Use of HANS devices
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`remained optional for racers until the early 2000’s. The tragic racing death of four
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`drivers from May 2000 – mid-2001, including racing legend Dale Earnhardt Sr.,
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`caused NASCAR to mandate use of HANS devices. NASCAR’s new requirement
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`also created more demand for comfort fitting HANS style devices that worked with
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`the other racing safety equipment (safety belting, harnesses, etc.) and allowed safe
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`and easy ingress and regress from a race car while wearing the HANS style device.
`
`Ex 1002, ¶33.
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`Head and neck restraint devices consist of (a) an anchor, (b) a helmet to
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`protect a driver’s head, and (c) tethers connecting the anchor and helmet. Possible
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`anchors include the driver safety harness, a safety plate worn by the driver that is
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`either attached to the driver or held in place by seat belts, seat belts themselves, or
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`parts of the vehicle or seat. In order to promote adoption and use of head and neck
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`restraints, safety design considerations and driver comfort has focused on anchors
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`such as the HANS Device (depicted below) that is a yoke shaped collar that fits
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`over a driver’s shoulders and is held in place by the seat belts. Ex 1002, ¶34.
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`Tethers connecting the anchor and helmet come in different variations and
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`have evolved over time. From a human anatomy point of view, the human neck is
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`a highly complex structure of seven vertebrae, various ligaments, muscles, nerves,
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`vessels, and other soft tissues. It is a crucial structure connecting the head and
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`torso, and is fairly flexible, which can be injured due to a large relative motion
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`between the head and torso, the resultant force, and moment to the neck. During a
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`race car frontal crash, the seatbelt system typically limits the excursion of the torso
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`very quickly, while the head travels further forward due to its inertia, causing a
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`relative motion between the head and torso. Such motion is typically referred to as
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`a whipping motion, which may cause large neck tension and flexion moment and
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`result in serious head and neck injuries. To protect the head and neck during a
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`frontal crash, the safety device should minimize the relative motion between the
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`head and torso. The tethers connecting the anchor and helmet are designed for this
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`purpose. As a general rule, the anchor should always be attached to the torso as
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`tightly as possible, and the tethers should be connected to the anchor and the
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`helmet to minimize relative motions between the head and torso in frontal crashes.
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`The specific tether and anchor designs will vary slightly for ease of use and light
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`weight. However, from a safety point of view, their functions and requirements
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`are always the same, which is to mitigate the relative motion between the head and
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`torso. Ex 1002, ¶35.
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`The function and mechanics of head and neck restraint devices is commonly
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`understood and expressed in the prior art. “During an impact, a standard 5 or 6
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`point seat belt assembly will limit forward advancement of a driver’s torso from
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`the seat assembly. However, the driver’s head, unrestrained, is free to continue
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`forward and caused to rotate about the neck thereby placing large tension loads on
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`the spine and neck. Accordingly, the driver’s head may continue forward at a high
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`rate until it impacts against the steering wheel or other interior component of the
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`vehicle, injuring the driver. Furthermore, the downward rotation of the head may
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`place such large loads on the spine and neck that a basilar skull fracture may occur,
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`a condition in which the base of the skull cracks from stress and often also causing
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`trauma to arteries and to the spinal cord. Finally, the diver’s head may recoil from
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`its forward position and be flung backwards into the seat assembly or into another
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`interior component of the vehicle. Ex 1002, ¶36 (citing Ex 1009, 4:58 to 5:6.).
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`d. The ‘529 Patent
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`The ‘529 Patent is directed to “a system of tethers (rear, side and front
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`tethers) which attach a helmet to a head and neck restraint device and/or seat belt
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`assembly for the purpose of controlling the head and neck of a driver while
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`operating a high-performance vehicle.” Ex1001, 4:20-24. There are three
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`independent claims in the ‘529 Patent – Claims 1, 8, and 14 – each requiring that
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`the “one rear tether and one of the pair of side tethers are jointly attached to the
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`helmet at a single attachment point on each respective side of the helmet.” Ex
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`1001, 11:48-49 (Claim 1); 12: 22-24 (Claim 8); and, 12:55-57 (Claim14). The
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`specification, however, does not include any discussion of the “jointly attached”
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`tethers. The only possible disclosure of this aspect occurs in Figure 1 of the ‘529
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`Patent which shows a rear tether 18 and side tether 19 attached to a quick release
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`clip 40 on the driver’s helmet 20. Ex 1001, Fig. 1 (partial) provides:
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`Side Tethers
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`The ‘529 Patent discloses that the preferred embodiment has a pair of side
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`tethers 19 where one end of the tether is attached on the helmet 20 and the other
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`end is attached either to support member 12 or to the support member via the
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`shoulder straps. Ex 1001, 8:7-12.
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`Rear Tethers
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`The ‘529 Patent also discloses a rear tether 18 for attaching the helmet 20 to
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`the restraint device 10. Ex 1001, 8 58-59. A single rear tether 18 is preferred that
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`permits a portion of the tether (an intermediate portion) to be attached by clips to
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`the support member 12 and each end of the tether 18 equipped with quick release
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`clamps 40 for attachment to the helmet 40. Ex 1001, 8:60-64.
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`An alternative to the single rear tether 18 is two separate tethers (18a, 18b).
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`Ex 1001, 9:1-3. When using two separate tethers (18a, 18b), each tether has one
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`end affixed to the support member 12 and the other end attached to the helmet 20.
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`Ex 1001, 9:1-7.
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`Tether Locations
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`The specific location of tether attachment to the support member 12 and
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`helmet 20, and the path of the tether between the support member 12 and the
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`helmet is determined by many factors, for example the number of tethers being
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`used, the type of vehicle and the seat assembly. Ex 1001, 9:12-16. The left and
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`right end portions 18a, 18b of the rear tethers angle upwards and forwards from the
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`support member 12 to the helmet 20 during normal operation. Ex 1001, 9:17-18.
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`By angling the left and right tether portions 18b upwards and forward, the tether
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`portions 18b are in position to quickly resist forces that are exerted. Ex 1001,
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`9:21-25. A preferred upward and forward angle is in the range of 25 to 45 degrees
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`and more preferably in the range of 30 to 40 degrees. Ex 1001, 9:28-30.
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`The left and right ends of the rear tether may also angle inwards from the
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`support member 12 to the helmet 20. Ex 1001, 9:31-33. By angling the left and
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`right tether portions 18b inwards, the tether portions 18b are in position to quickly
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`resist forces exerted on a driver. Ex 1001, 9:32-34. A preferred inward angle is in
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`the range of 10 to 15 degrees, but physical limitations due to the seat assembly and
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`headrest can require that the rear tether portion 18b are directly forward at no
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`angle, angled outward, or any angle there-between. Ex 1001, 9:40-44.
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`Support Members
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`The restraint device 10 in the ‘529 Patent is only an example of one of the
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`many different head and neck restraint devices the tethering system may be used
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`with. Ex 1001, 5:53-55. The restraint device 10 that is disclosed in the ‘529 Patent
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`includes a support member 12 having a back portion 14 positioned along the
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`driver’s back and shoulders 16. Ex 1001, 5:56-59. includes shoulder straps 24 that
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`attach the shoulder portions 16 to the torso anchor strap 22. The shoulder straps 24
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`assist in keeping the restraint device 10 in position during a collision. Ex 1001, 10
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`14-20. The restraint device 10 attached to the torso straps of the driver’s
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`restraining harness 22, the seat belt straps 23, or to the seat belt assembly 100. The
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`shoulder straps 24 assist in holding the restraining device 10 in place on the driver.
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`The restraint device 10 also has shoulder portions. The top surface of the
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`shoulder portions 16 have a channel 32 defined between an outer lip 34 and an
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`inner lip 36. Ex. 1001, 6:60-64. The channels 32 are sized to accommodate
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`shoulder belts 110 of the vehicle seat belt assembly and provide an engagement
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`surface against which the shoulder belts 110 react during a collision event. Ex.
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`1001, 6:66- 7:2.
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`e. Prosecution History of the ‘529 Patent
`The application for the ‘529 Patent was filed on February 18, 2013 and
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`claims priority to U.S. Application No. 12/082,966 filed on April 14, 2008. Ex
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`1001, p. 1; Ex 1004, p. 145. Accordingly, the ‘529 Patent is a pre-AIA patent.
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`The application as filed contained 20 claims total, of which claims 1, 9 and
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`15 were independent. Ex1004 at pp. 163-166. Claim 2 was canceled during
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`prosecution. Ex 1004, p. 35. Claims 1 and 2 – 20 issued as the ‘529 Patent.
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`Restriction Requirement
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`On July 17, 2013 the Office issued a restriction requir