IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Case: IPR2018-00388
`United States Patent No.: 9,079,464
`Inventors: Onello, et al.
`Formerly Application No. 13/301,359
`Issue Date: July 14, 2015
`Filing Date: November 21, 2011
`Former Group Art Unit: 3727
`Former Examiner: Lee D. Wilson
`
`
`Attorney Docket No.: OTI/0098
`
`§
`§
`§ Customer No.: 26290
`§
`Petitioner: Olympia Tools
`§
`International, Inc.
`§
`
`§
`
`§
`
`
`For: PORTABLE WORK HOLDING DEVICE AND ASSEMBLY
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`REQUEST FOR REHEARING
`Petitioner Olympia Tools International, Inc. (“Petitioner”) herewith requests
`rehearing and reconsideration of the Patent Trial and Appeal Board’s (the “Board”)
`June 20, 2018 Decision Denying Institution of Inter Partes Review (the
`“Decision”). Specifically, Petitioner submits that the denial of Grounds 2 and 3
`with respect to obviousness of claim 23 of U.S. Patent No. 9,079,484 does not
`account for the similarity between a fixed threaded spindle and rotating nut
`arrangement compared to a rotating threaded spindle and fixed nut arrangement.
`Therefore, the Board’s Decision is inconsistent with controlling case law and
`constitutes an abuse of discretion.
`
`
`
`
`
`1
`
`
`
`Case: IPR2018-00388
`United States Patent No.: 9,079,464
`Inventors: Onello, et al.
`Formerly Application No. 13/301,359
`Issue Date: July 14, 2015
`Filing Date: November 21, 2011
`Former Group Art Unit: 3727
`Former Examiner: Lee D. Wilson
`
`
`Attorney Docket No.: OTI/0098
`
`§
`§
`§ Customer No.: 26290
`§
`Petitioner: Olympia Tools
`§
`International, Inc.
`§
`
`§
`
`§
`
`
`For: PORTABLE WORK HOLDING DEVICE AND ASSEMBLY
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`REQUEST FOR REHEARING
`Petitioner Olympia Tools International, Inc. (“Petitioner”) herewith requests
`rehearing and reconsideration of the Patent Trial and Appeal Board’s (the “Board”)
`June 20, 2018 Decision Denying Institution of Inter Partes Review (the
`“Decision”). Specifically, Petitioner submits that the denial of Grounds 2 and 3
`with respect to obviousness of claim 23 of U.S. Patent No. 9,079,484 does not
`account for the similarity between a fixed threaded spindle and rotating nut
`arrangement compared to a rotating threaded spindle and fixed nut arrangement.
`Therefore, the Board’s Decision is inconsistent with controlling case law and
`constitutes an abuse of discretion.
`
`
`
`
`
`1
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The issues presented here are:
`(1) whether an express “articulated reason” or “motivation to
`combine” is required to conclude that it is obvious to swap a rotatable
`nut and fixed threaded spindle with a rotatable threaded spindle and
`fixed nut, where either arrangement is well-known structure for
`moving the jaws of a work holding device, and
`(2) whether obviousness requires some showing of how a prior
`art device would remain operable if modified with known structures
`performing known functions.
`The issues were previously addressed by Petitioner in connection with the
`obviousness of claim 23 in the Petition, including pages 12-15, 16-17, 18-19, 26,
`48-51, and in Exhibit 1003, at paragraphs 189-200. By this Request, Petitioner
`seeks rehearing of Grounds 2 and 3, a finding that the Petition establishes a
`reasonable likelihood of prevailing at trial on at least the obviousness of claim 23,
`and institution of Inter Partes Review as requested in the Petition.
`
`The issues arise from the Board’s assumption that, in the art of work holding
`devices, a fixed threaded spindle and rotating nut arrangement is somehow
`materially different than a rotating threaded spindle and fixed nut arrangement,
`even though both arrangements are essentially identical structures that perform the
`identical function of moving jaw pieces.
`A brief review of the technology at issue is warranted. Cornes (Ex. 1006)
`teaches moving jaw pieces of a work holding device by rotating a nut relative to a
`threaded spindle. Ex. 1006, ¶ [0035]. A person of ordinary skill in the art would
`know that jaw pieces of a work holding device can also be moved rotating a
`2
`
`
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`
`
`threaded spindle relative to a nut (Grounds 2). Ex. 1003, ¶¶ 190-92. Long and
`Murray each teach such a rotatable threaded spindle arrangement (Ground 3). Ex.
`1007, lines 58-77; Ex. 1009, ¶ [0019]. Figure 1 of Cornes and Figure 2 of Long are
`reproduced below, with annotations indicating the respective structures of interest:
`
`
`In each device, the nut and threaded spindle are rotated relative to one another to
`move the jaw pieces. These structures and functions are basic and well-known,
`notwithstanding the Patent Owner’s attempt to confuse this technology. See, e.g.,
`Patent Owner’s Response, pp. 23-26, 30-31.
`
`
`
`3
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`
`
`There is no dispute that each structural and functional limitation of claim 23
`is taught in the prior art. The fact that Cornes uses a fixed threaded spindle instead
`of a rotatable threaded spindle does not render claim 23 valid, because a rotatable
`threaded spindle is within the knowledge of one of ordinary skill in the art, and is
`even expressly taught in the prior art of record. A simple substitution of one
`known element for another is obvious as a matter of law. Therefore, claim 23 is
`obvious as nothing more than the predictable use of prior art elements according to
`their established functions. In concluding otherwise, the Board follows certain
`mistakes of law that amount to an abuse of discretion.
`
`II. LEGAL STANDARDS
`
`A. Rehearing Standard of Review
`A decision by the Board on whether to institute an Inter Partes review is
`reviewable on request for rehearing under the abuse of discretion standard. 37
`C.F.R. § 42.71 (2015). An error of law is, by definition, an abuse of discretion.
`Koon v. United States, 518 U.S. 81, 100 (1996).
`
`B. Obviousness Analysis Requires an “Expansive and Flexible
`Approach,” not “Rigid and Mandatory Formulas”
`
`It is well understood that the Supreme Court overruled the strict requirement
`for some “teaching, suggestion or motivation” (“TSM”) test once used by the
`Federal Circuit. See, generally, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
`The TSM may have provided a “helpful insight,” but “[h]elpful insights … need
`not become rigid and mandatory formulas.” Id. at 418, 419. “Application of the [§
`103] bar must not be confined within a test or formulation too constrained to serve
`its purpose.” Id. at 427.
`
`
`
`4
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`
`
`Rather, the obviousness inquiry instead requires “an expansive and flexible
`approach” rather than “[r]igid preventative rules that deny factfinders recourse to
`common sense.” Id. at 415, 421. Under KSR, “the legal determination of
`obviousness may include recourse to logic, judgment, and common sense.” Wyers
`v. Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010) (citing Perfect Web
`Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
`A claim is invalid if “the differences between the [claimed] subject matter
`… and the prior art are such that the subject matter as a whole would have been
`obvious.” 35 U.S.C. § 103(a). “[W]hen a patent ‘simply arranges old elements
`with each performing the same function it had been known to perform’ and yields
`no more than one would expect from such an arrangement, the combination is
`obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273,
`282 (1976)). That is, the obviousness inquiry requires consideration of “whether
`the improvement is more than the predictable use of prior art elements according to
`their established functions.” KSR, 550 U.S. at 417.
`However, some cases “may be more difficult” than the “simple substitution”
`of known elements in accordance with their known functions. KSR, 550 U.S. at
`417. However, even in such cases, “the analysis need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for a court
`can take account of the inferences and creative steps that a person of ordinary skill
`in the art would employ.” Id. at 418.
`Regardless of how difficult the technology is—here, not very—“[t]he
`combination of familiar elements according to known methods is likely to be
`obvious when it does no more than yield predictable results.” Id. at 416; See also
`Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (finding
`secondary considerations did not overcome a strong case of prima facie case of
`obviousness in “a textbook case of when the asserted claims involve a combination
`5
`
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`
`
`of familiar elements according to known methods that does no more than yield
`predictable results”).1
`
`C. Obviousness Does Not Require Physical Substitution of
`Elements
`
`Lastly, “‘the test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary reference;
`nor is it that the claimed invention must be expressly suggested in any one or all of
`the references. Rather, the test is what the combined teachings of the references
`would have suggested to those of ordinary skill in the art.’” MCM Portfolio LLC v.
`Hewlett-Packard Co., 812 F. 3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller,
`642 F.2d 413, 425 (CCPA 1981)). “It is well-established that a determination of
`obviousness based on teachings from multiple references does not require an
`actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1330
`(Fed. Cir. 2012)) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)).
`For example, combining references in a manner that yields nothing “‘more
`than one would expect from such an arrangement’” is “‘the work of the skillful
`mechanic, not that of the inventor.’” Sundance, Inc. v. Demonte Fabricating Ltd.,
`550 F.3d 1356, 1367 (Fed. Cir. 2008) (quoting Sakraida, 425 U.S. at 282). Indeed,
`the obviousness inquiry should account for “the inferences and creative steps that a
`person of ordinary skill in the art would employ” KSR, 550 U.S. at 418. “A person
`of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at
`421; see also Sundance, 550 F.3d at 1367. In other words, the person of ordinary
`skill in the art has ordinary skill, not no skill. See, e.g., In re ICON Health &
`
`
`1 Here, the level of ordinary skill in the art is “a minimum of a bachelor’s degree in
`mechanical engineering, manufacturing design, or a related field and
`approximately two years of professional experience with tooling design, use or
`manufacturing.” Petition, p. 12.
`
`
`
`6
`
`
`
`Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“[W]e do not ignore the
`modifications that one skilled in the art would make to a device borrowed from the
`prior art.”).
`
`III. ARGUMENT
`In its obviousness analysis with respect to Grounds 2 and 3, the Board
`disregards KSR’s prohibition against rigid rules. Instead, the Board insists, in
`various terms, on some express “articulated reason” or “motivation to combine” as
`to why a known fixed nut and rotatable threaded spindle arrangement could be
`substituted for—and to perform the same function as—a known rotatable nut and
`fixed threaded spindle arrangement. E.g. Decision, pp. 18-19. Further, the Board
`improperly required some showing of how the Cornes device would remain
`operable if modified with known structures performing known functions.
`
`A. No Requirement for Specific “Motivation to Combine”
`Known Elements
`There is nothing novel about a rotatable threaded spindle. See, e.g., Ex.
`1003, ¶¶ 191-193 (rotatable threaded spindle is known to a person of ordinary skill
`in the art), ¶¶ 196-198 (rotatable threaded spindle is taught in Long and Murray).
`Indeed, there is no dispute that in the art of work holding devices, it is well known
`to use a threaded spindle in cooperation with a corresponding mating nut to move
`jaw pieces together or apart. E.g., Decision, pp. 19-20. If the threaded spindle is
`fixed and the corresponding mating nut is rotated, the jaw pieces move. Likewise,
`if the threaded spindle is rotated and the corresponding mating nut is fixed, the jaw
`pieces move.
`That is, there is no functional difference between a rotating threaded spindle
`with a corresponding fixed nut and a fixed threaded spindle with a corresponding
`rotating nut. In either case, the relative rotation of the threaded spindle and
`
`
`
`7
`
`
`
`corresponding nut moves the jaw pieces relative to each other. In other words, the
`Cornes rotating nut and fixed threaded spindle arrangement performs the same
`function—moving the jaw pieces relative to each other—and in the same way as
`the known fixed nut and rotating threaded spindle arrangement. There is no
`dispute on this point, either on the record before the Board or as a matter of
`common sense. In either arrangement, each component operates according to its
`established function. There is no unpredictable result or novel benefit of a
`rotatable threaded spindle compared to a fixed threaded spindle.
`By requiring Petitioner to identify a specific reason or motivation to modify
`Cornes, above and beyond the established law that the predictable use of prior art
`elements is obvious, the Board improperly limited the obviousness analysis
`according to a rigid rule. KSR, 550 U.S. at 419 (error to require “a rigid rule that
`limits the obviousness inquiry”). This error of law amounts to an abuse of
`discretion, and Petitioner therefore respectfully requests rehearing.
`
`B. No Requirement of “Actual, Physical Substitution”
`
`The Board further errs by requiring a showing of how the Cornes vise would
`be operable if modified to include the known fixed nut and rotatable threaded
`spindle arrangement. That is, the Board asserts that “there is no suggestion in
`Cornes that its particular vise structure remains operable if static and rotatable
`components are swapped.” Decision, p. 22. By so asserting, the Board improperly
`required that Petitioner demonstrate how “actual, physical substitution of
`elements” could operate. In re Mouttet, 686 F.3d at 1330.
`The ultimate issue is not how Cornes could be modified by a person of
`ordinary skill to include a rotatable threaded spindle. Rather, the issue is
`whether—from the view of the person of ordinary skill employing ordinary
`creativity, inferences, and creative steps—claim 23 is anything other than an
`8
`
`
`
`
`
`arrangement of old elements with each performing the same function it had been
`known to perform, yielding anything other than what one would expect from such
`an arrangement. KSR, 550 U.S. at 417.
`In this case, a person of ordinary skill in the art has “a minimum of a
`bachelor’s degree in mechanical engineering, manufacturing design, or a related
`field and approximately two years of professional experience with tooling design,
`use or manufacturing.” Petition, p. 12. Such a person would understand that, in a
`work holding device, the relative positions of a threaded spindle and a receiving
`threaded nut can be reversed, and the operability—i.e., the jaw-moving function—
`would be the same. Ex. 1003, ¶ 191. Such a person would also understand that the
`threaded spindle can be made to rotate instead of the receiving threaded nut, and
`the jaw-moving function would still be the same. Id. Simply put, nothing in claim
`23—including the rotatable threaded spindle—is outside the knowledge of one of
`ordinary skill in the art.
`In concluding otherwise, the Board erred in requiring some showing of how
`Cornes would “remain operable” if modified. This amounts to a mistake of law
`and an abuse of discretion. Petitioner therefore respectfully requests rehearing.
`
`IV. CONCLUSION
`
`For the reasons set forth above Petitioner respectfully submits that the Board
`abused its discretion by requiring the Petitioner to identify a specific reason or
`motivation to modify Cornes, and to specifically demonstrate how Cornes remains
`operable if static and rotatable components are substituted for one another. Rather,
`the proper inquiry is whether claim 23 is nothing more than the predictable use of
`prior art elements according to their established functions.
`Accordingly, Petitioner respectfully submits that there is a reasonable
`likelihood that it will prevail on at least one of the claims challenged in the
`9
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`
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`
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`petition, and that the Board’s Decision to the contrary amounts to an abuse of
`discretion. Therefore, Petitioner requests rehearing and reconsideration of the
`Decision with respect to claim 23, and institution of the requested Inter Partes
`review. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356, 200 L.Ed.2d 695, 704
`(2018).
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
` July 20, 2018
`
`By: /B. Todd Patterson/
`B. Todd Patterson (Lead Counsel)
`Reg. No. 37,906
`PATTERSON&SHERIDAN, LLP
`24 Greenway Plaza, Suite 1600
`Houston, TX 77046
`P: 713-577-4801 / F: 713-623-4846
`tpatterson@pattersonsheridan.com
`
`Jerry R. Selinger (Backup Counsel)
`Reg. No. 26,582
`PATTERSON&SHERIDAN, LLP
`1700 Pacific Ave., Suite 2650
`Dallas, TX 75201
`P: 214-272-0957 / F: 214-296-0246
`jselinger@pattersonsheridan.com
`
`Mailing address for all PTAB correspondence:
`PATTERSON&SHERIDAN, LLP
`24 Greenway Plaza, Suite 1600
`Houston, TX 77046
`
`
`Attorneys for Petitioner
`Olympia Tools International, Inc.
`
`
`
`10
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Case: IPR2018-00388
`United States Patent No.: 9,079,464
`Inventors: Onello, et al.
`Formerly Application No. 13/301,359
`Issue Date: July 14, 2015
`Filing Date: November 21, 2011
`Former Group Art Unit: 3727
`Former Examiner: Lee D. Wilson
`
`
`Attorney Docket No.: OTI/0098
`
`§
`§
`§ Customer No.: 26290
`§
`Petitioner: Olympia Tools
`§
`International, Inc.
`§
`
`§
`
`§
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on July 20, 2018, I caused a true and accurate
`
`copy of the foregoing to be served upon counsel of record via email.
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
` July 20, 2018
`
`By: /B. Todd Patterson/
`B. Todd Patterson (Lead Counsel)
`Reg. No. 37,906
`PATTERSON&SHERIDAN, LLP
`24 Greenway Plaza, Suite 1600
`Houston, TX 77046
`P: 713-577-4801 / F: 713-623-4846
`tpatterson@pattersonsheridan.com
`
`
`
`11
`
`
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