`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TRICAM INDUSTRIES, INC.
`
`Petitioner,
`v.
`
`WING ENTERPRISES, INC.
`
`Patent Owner.
`______________
`
`Case No.: IPR2018-0170
`______________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,364,017
`
`
`
`i
`
`
`
`
`
`

`

`Table of Contents
`
`Table of Authorities ................................................................................................. iii 
`Certificate of Service ................................................................................................. v 
`List of Evidence and Exhibits Relied Upon in the Petition ..................................... vi 
`I. 
`INTRODUCTION ........................................................................................... 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1) ........................... 1 
`A. 
`Real Party-In-Interest Under 37 C.F.R. §42.8(b)(1) .................................. 1 
`B. 
`Related Matters Under 37 C.F.R. §42.8(b)(2) ............................................ 1 
`C. 
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ......................... 1 
`D. 
`Service Information Under 37 C.F.R. §42.8(b)(4) ..................................... 2 
`III.  PAYMENT OF FEES REQUIRED BY 37 CFR §42.15(a) ........................... 2 
`IV.  SUMMARY OF THE ‘017 PATENT ............................................................. 2 
`A.  Description of the Claimed Invention of the ‘017 Patent .......................... 2 
`B. 
`Summary of the Prosecution History of the ‘017 Patent ............................ 3 
`REQUIREMENTS UNDER 37 C.F.R. §42.104 ............................................. 6 
`A.  Grounds for Standing Pursuant to 37 C.F.R. §41.104(a) ........................... 6 
`Identification of Challenged Claims and Relief Requested Pursuant
`B. 
`to 37 C.F.R. §41.104(b)(1) ......................................................................... 6 
`The Specific Art and Statutory Ground(s) on Which the Challenge Is
`Based Pursuant to 37 C.F.R. §41.104(b)(2) ............................................... 6 
`D.  How the Challenged Claims Are Construed Pursuant to 37 C.F.R.
`§41.204(b)(3) .............................................................................................. 7 
`VI.  DETAILED EXPLANATION OF PERTINENCE AND MANNER OF
`APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`REVIEW IS REQUESTED ........................................................................... 10 
`Person of Ordinary Skill in the Art .......................................................... 10 
`A. 
`B.  Applicable Law......................................................................................... 11 
`
`
`V. 
`
`C. 
`
`
`
`
`
`i
`
`

`

`Anticipation (pre-AIA 35 U.S.C. §102) .............................................. 11 
`1. 
`Obviousness (pre-AIA 35 U.S.C. §103) ............................................. 11 
`2. 
`C.  Ground 1: Claims 1, 2, 3, 9, 10 and 13 of the ‘017 Patent are
`anticipated by French Patent No. 986,522 ............................................... 12 
`D.  Ground 2: Claims 6 and 8 are obvious over
`French Patent No. 986,522 in view of US Patent No. 3,269,485 ............ 39 
`Ground 3: Claims 1, 2, 3, 11, 12 and 13 are obvious over
`GB Publication No. 1,599,636 in view of US Patent No. 437,936 .......... 42 
`Ground 4: Claims 6 and 8 are obvious over GB Publication No.
`1,599,636 in view of US Patent No. 3,269,485 ........................................ 71 
`VII.  CONCLUSION .............................................................................................. 74 
`Certificate of Compliance ........................................................................................ 75 
`
`
`
`E. 
`
`F. 
`
`
`
`
`
`ii
`
`

`

`Table of Authorities
`
`
`
`
`Case
`
`Page
`
`Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc.,
`
`246 F.3d 1368 (Fed. Cir. 2001) ..................................................................... 11
`
`Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick,
`
`464 F.3d 1356 (Fed. Cir. 2006) ................................................... 41, 61, 70, 73
`
`Graham v. John Deere, 383 U.S. 1 (1966) ........................................................ 11, 12
`
`In re Cuozzo Speed Techs., 778 F.3d 1271 (Fed. Cir. 2015) ..................................... 7
`
`In re Dailey, 357 F.2d 669 (CCPA 1966) ................................................................ 67
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 12
`
`In re Kuhle, 526 F.2d 553 (CCPA 1975) ................................................................. 68
`
`SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018) ................................................... 7
`
`KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007) ............................................. 12
`
`
`
`
`
`
`
`
`iii
`
`

`

`Statutes & Rules
`
`
`
`35 U.S.C. §102 ..................................................................................................... 6, 10
`
`35 U.S.C. §103 ..................................................................................................... 6, 11
`
`35 U.S.C. §318 ........................................................................................................... 7
`
`37 C.F.R. §41.200(b) ................................................................................................. 7
`
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board,
` 83 FR 21221-01 (May 9, 2018) .............................................................................. 8
`
`
`Other Authorities
`
`MPEP § 2144(II) ................................................................................................ 41, 73
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`Certificate of Service
`
`I hereby certify that on May 15, a copy of this Petition, Exhibits 1001-1009,
`
`and a Power of Attorney were served on counsel for Patent Owner by Federal
`
`Express at the address listed below:
`
`
`
`
`
`Dated: May 15, 2018
`
`
`
`
`
`
`
`
`
`
`Dorsey & Whitney
`111 South Main Street
`21st Floor
`Salt Lake City UT 84111-2176
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`s/Mike Gates
`Mike P. Gates
`Reg. No. 60,194
`
`
`
`
`
`Attorney for Petitioner
`
`
`
`
`
`v
`
`

`

`List of Evidence and Exhibits Relied Upon in the Petition
`
`Exhibit #
`
`Name
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`U.S. Patent No. 7,364,017
`
`Prosecution History for U.S. Patent No. 7,364,017
`
`French Patent No. 986,522 to Établissements Dalphinet
`
`American National Standard for Ladders – Portable Metal
`– Safety Requirements, ANSI 14.2-2000, pp. 1-11.
`
`Shorter Oxford English Dictionary, 5th ed.
`
`US Patent No. 3,269,485 to Larson
`
`GB Publication No. 1,599,636 to Relton
`
`US Patent No. 437,936 to O’Brien
`
`Declaration of Jack Krafchick, P.E.
`
`
`
`vi
`
`

`

`I.
`
`
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioner Tricam
`
`Industries, Inc. petitions the Patent Trial and Appeal Board (“Board”) to institute
`
`an Inter Partes Review (“IPR”) of claims 1-3, 6, and 8-13 of U.S. Patent No.
`
`7,364,017 (“the ‘017 Patent”) (Ex. 1001).
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(a)(1)
`
`
`
`The following mandatory notices under the Rules are provided.
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. §42.8(b)(1)
`
`Petitioner certifies and submits that the real party-in-interest for this Petition
`
`is Tricam Industries, Inc.
`
`B.
`
`Related Matters Under 37 C.F.R. §42.8(b)(2)
`The ‘017 Patent is currently being asserted in federal district court. Wing
`
`Enterprises, Inc. dba Little Giant Ladder Systems v. Tricam Industries, Inc., No.
`
`17-cv-01769-SRN/LIB (USDC-Minnesota).
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`
`Petitioner designates lead and backup counsel as:
`
`Lead Counsel
`Mike P. Gates
`Reg. No. 60,194
`Patterson Thuente Pedersen, P.A.
`
`Backup Counsel
`Eric H. Chadwick
`Reg. No. 41,664
`Patterson Thuente Pedersen, P.A.
`
`
`
`1
`
`

`

`80 South 8th Street, Suite 4800
`Minneapolis, MN 55402
`Phone: 612.349.5768
`Fax: 612.349.9266
`gates@ptslaw.com
`
`80 South 8th Street, Suite 4800
`Minneapolis, MN 55402
`Phone: 612.349.5740
`Fax: 612.349.9266
`chadwick@ptslaw.com
`
`
`
`
`D.
`
`Service Information Under 37 C.F.R. §42.8(b)(4)
`
`Tricam agrees to the electronic service of documents. Papers concerning this
`
`matter should be served on Petitioner’s counsel at the following addresses:
`
`gates@ptslaw.com; chadwick@ptslaw.com; and
`
`TricamIPR20181070@ptslaw.com
`
`III. PAYMENT OF FEES REQUIRED BY 37 CFR §42.15(a)
`
`Payment of the fees is made concurrently with the filing of this Petition via
`
`the USPTO EFS payment system. The Director is authorized to charge any
`
`additional fees that might be due in connection with this Petition to Deposit
`
`Account No. 16-0631.
`
`IV. SUMMARY OF THE ‘017 PATENT
`
`A. Description of the Claimed Invention of the ‘017 Patent
`
`
`
`The disclosure of the ‘017 Patent is directed to ladders, and more
`
`particularly, “to combination ladder rail configurations, ladder support structures,
`
`ladder hinge configurations and methods of manufacturing the same.” Ex. 1001,
`
`
`
`2
`
`

`

`16-21. The hinge components are “configured to effectively transmit loads” from
`
`the ladder rails. Ex. 1001, Abstract.
`
`
`
`The ‘017 Patent includes thirteen claims, all directed to “ladder hinge and
`
`rail” assemblies. Ex. 1001, 13:24-14:58. Claim 1 is the only independent claim,
`
`and mostly recites specific limitations regarding the hinge components. Ex. 1001,
`
`13:24-60.
`
`B.
`
`Summary of the Prosecution History of the ‘017 Patent
`
`The ’017 Patent issued from U.S. Application No. 10/706,308, filed
`
`November 11, 2003 claiming the benefit of provisional patent application No.
`
`60/425,449, filed November 11, 2002. Ex. 1002, pp. 1-49. The ’017 Patent is
`
`governed by U.S. patent laws prior to the American Invents Act (pre-AIA).
`
`The prosecution of the ’017 Patent spanned more than 4 years and included a
`
`restriction requirement, three Office Actions, an Advisory Action and one Request
`
`for Continued Examination prior to the Notice of Allowance and Issue. Ex. 1002.
`
`As originally filed, the ’017 Patent included 27 claims. Following a
`
`restriction requirement, 6 claims drawn to a ladder hinge and rail assembly were
`
`elected and 7 new claims were added, all of which depended from elected
`
`independent claim 18. Ex. 1002, pp. 176-200.
`
`In response to the first Office Action, dated June 6, 2006 rejecting the claims
`
`over U.S. Patent No. 4,947,959 to Yuen (hereinafter “Yuen”), U.S. Patent No.
`
`
`
`3
`
`

`

`4,474,264 to Krause (hereinafter “Krause”), U.S. Patent No. 3,811,151 to
`
`Kuemmerlin (hereinafter “Kuemmerlin”), U.S. Patent No. 4,890,950 to Yoo
`
`(hereinafter “Yoo”), U.S. Patent No. 5,279,387 to Swinderski et al. (hereinafter
`
`“Swiderski”), U.S. Patent No. 4,773,503 to Purkapile (hereinafter “Purkapile”), the
`
`Applicant amended independent claim 18 to overcome all anticipation and
`
`obviousness rejections. Specifically, Applicant amended independent claim 18 to
`
`include a first hinge having “an abutment shoulder extending across substantially
`
`an entire width of the longitudinally extending rail mount section.” Ex. 1002, pp.
`
`215-228.
`
`The second Office Action that followed, dated November 29, 2006, rejected
`
`all of the claims under a new reference, U.S. Patent No. 6,866,117 to Moss
`
`(hereinafter “‘117 Patent”), in combination with the previously cited references
`
`U.S. Patent No. 5,353,892 to Lu (hereinafter “Lu”), U.S. Patent No. 453,193 to
`
`Kinser (hereinafter “Kinser”), U.S. Patent No. 1,973,774 to Pflugradt (hereinafter
`
`“Pflugradt”), Swinderski, Purkapile, Yuen, and Kuemmerlin. The ‘117 Patent is
`
`commonly assigned to the owner of the ‘017 Patent and has at least one common
`
`inventor with the ‘017 Patent, Newell Ryan Moss. Ex. 1002, pp. 229-237.
`
`In response to the Second Office Action, Applicant amended independent
`
`claim 18 in accord with the Examiner’s suggestion made in a teleconference
`
`conducted November 17, 2006. Ex. 1002, pp. 244-245. Specifically, Applicant
`
`
`
`4
`
`

`

`amended independent claim 18 to include “an abutment shoulder between the
`
`tongue and rail mount section and extending across substantially an entire width of
`
`the longitudinally extending rail mount section,” and a second hinge including a
`
`“pair of plate segments each having a peripheral edge.” Ex. 1002, pp. 240.
`
`Further, amendments to independent claim 18 also included a first relative
`
`position “wherein the first ladder rail and the second ladder rail are angled with
`
`respect to each other,” and a second relative position wherein “the first ladder rail
`
`and the second ladder rail are aligned with each other,” and “wherein the shoulder
`
`abutment abuts a peripheral edge of one plate segment of the pair of plate segments
`
`in a substantially conformal manner and, when in the first position, the abutment
`
`shoulder and the peripheral edge of the one plate segment are spaced from each
`
`other.” Ex. 1002, pp. 240-241.
`
`An Advisory Action mailed March 21, 2007, indicated that the amendments
`
`to independent claim 18 required further consideration because the amendments
`
`did not address the newly cited ‘117 Patent. Ex. 1002, pp. 253.
`
`In response to a Third Office Action, the Applicant argued that the ‘117
`
`Patent was unavailable as prior art under 35 U.S.C §103(c). Ex. 1002, pp. 275-276.
`
`A Notice of Allowance followed on November 29, 2007. Ex. 1002, pp. 284.
`
`Applicant filed an amendment after the Notice of Allowance on February 28, 2008
`
`to correct typographical errors and antecedent basis of the claims. Ex. 1002, pp.
`
`
`
`5
`
`

`

`294-316. An issue notification was mailed April 9, 2008, and the ‘017 Patent
`
`issued April 29, 2008.
`
`V. REQUIREMENTS UNDER 37 C.F.R. §42.104
`
`
`
`As set forth below, Petitioner submits that each requirement for institution of
`
`an IPR of the ‘017 Patent is satisfied.
`
`A. Grounds for Standing Pursuant to 37 C.F.R. §41.104(a)
`
`Petitioner certifies and submits that the ’017 Patent is available for IPR, and
`
`that Petitioner is not barred or estopped from filing this Petition.
`
`B.
`
`Identification of Challenged Claims and Relief Requested Pursuant to 37
`C.F.R. §41.104(b)(1)
`
`Claims 1-3, 6, and 8-13 of the ‘017 Patent are challenged in this Petition on
`
`the grounds set forth below. The precise relief requested by Petitioner is that the
`
`challenged claims 1-3, 6, and 8-13 of the ‘017 Patent be found unpatentable. A
`
`detailed explanation of the basis for the challenge is set forth below and in the
`
`supporting Expert Declaration of Jack Krafchick, P.E. (Ex. 1009).
`
`C.
`
`
`
`The Specific Art and Statutory Ground(s) on Which the Challenge Is
`Based Pursuant to 37 C.F.R. §41.104(b)(2)
`Petitioner requests that an inter partes review of the ‘017 Patent be instituted
`
`for all of the following grounds of unpatentability under pre-AIA 35 U.S.C. §102
`
`(anticipation) and pre-AIA 35 U.S.C. §103 (obviousness) because there is a
`
`
`
`6
`
`

`

`reasonable likelihood that the Petitioner will prevail with respect to at least 1 of the
`
`claims challenged in the Petition in accordance with AIA 35 U.S.C. §314(a). See,
`
`SAS Institute, Inc. v. Iancu, et al, 138 S.Ct. 1348, 1352 (2018) (citing AIA 35
`
`U.S.C. §318(a).
`
`
`
`Ground 1 – Claims 1, 2, 3, 9, 10 and 13 are anticipated by French Patent
`
`No. 986,522 to Établissements Dalphinet (“FR ‘522”).
`
`
`
`Ground 2 – Claims 6 and 8 are obvious over FR ‘522 in view of US Patent
`
`No. 3,269,485 to Larson (“Larson”).
`
`
`
`Ground 3 – Claims 1, 2, 3, 11, 12 and 13 are obvious over GB Publication
`
`No. 1,599,636 to Relton (“Relton”) in view of US Patent No. 437,936 to O’Brien
`
`(“O’Brien”)
`
`
`
`Ground 4 – Claims 6 and 8 are obvious over Relton in view of O’Brien and
`
`further in view of Larson.
`
`D. How the Challenged Claims Are Construed Pursuant to 37 C.F.R.
`§41.204(b)(3)
`
`A claim of an unexpired patent in IPR is given the “broadest reasonable
`
`construction in light of the specification.” 37 C.F.R. §41.200(b); In re Cuozzo
`
`Speed Techs., 778 F.3d 1271, 1279 (Fed. Cir. 2015). To the extent that may be
`
`necessary under this standard, Petitioner has set forth the broadest reasonable
`
`
`
`7
`
`

`

`interpretation (BRI construction) of certain of the claim terms below.1 Petitioner
`
`submits that the remaining terms recited in the claims need no specific BRI
`
`construction because such terms would be readily understood and should be given
`
`their plain and ordinary meaning. Ex. 1009, ¶ 40.
`
`
`
`“abutment shoulder”
`
`
`
`The proposed BRI construction for this term is “a component that directly
`
`transfers force between the first hinge component and the second hinge
`
`component.” Ex. 1009, ¶¶ 27, 56, 127. Support for this construction is found at
`
`least at 3:35-37, 12:3-6, 12:47-13:2 and Figs. 5B, 7A, 7D, and 7E of the ‘017
`
`Patent. Ex. 1009, ¶¶ 56, 127.
`
`1All discussions in the Petition of BRI construction are presumed to be as
`
`understood by a person of ordinary skill in the art at the time of invention.
`
`Petitioner reserves the right to address any claim construction issues that may arise
`
`in the event that the Office adopts its recently promulgated notice of rulemaking
`
`during the pendency of this proceeding and thereby changes the claim construction
`
`standard from a BRI construction to a Markman construction. Changes to the
`
`Claim Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 FR 21221-01 (May 9, 2018) (to be codified
`
`at 37 CFR Part 42).
`
`
`
`8
`
`

`

`
`
`“ladder rail”
`
`
`
`The proposed BRI construction for this term is “ladder side member.” Ex.
`
`1009, ¶¶ 32, 46, 117. The specification of the ‘017 Patent refers to rails as “side
`
`rails” in 1:46-2:43, and the rails depicted in Figs. 1-4B are arranged on the sides of
`
`the ladder. Ex. 1009, ¶¶ 47, 119. Further, a person of ordinary skill in the art
`
`understands “ladder rail” to mean “ladder side member” based on the definition of
`
`rail set forth in the relevant ANSI standards: “[t]he side members joined at
`
`intervals by rungs, steps, cleats or rear braces.” Ex. 1004, p. 11; Ex. 1009 ¶¶ 46,
`
`117.
`
`
`
`
`
`“substantially conformal manner”
`
`
`
`This term appears in claim 1, referring to the manner in which the hinge
`
`components abut each other. Ex. 1001, 13:55-57. The proposed BRI construction
`
`for this term is “in a way that they mostly conform.” Ex. 1009, ¶¶ 37, 74, 148.
`
`
`
`“varying cross-sectional geometry”
`
`
`
`The proposed BRI construction for this term is “the geometry of the cross-
`
`section differs at different places.” Ex. 1009, ¶¶ 38, 86, 92. Support for this
`
`construction can be found at least at 3:59-65, 10:44-46 and Figs 7A-7B of the ‘017
`
`
`
`9
`
`

`

`Patent, which describe and depict varying cross-sectional geometry in the context
`
`of differing shapes and thicknesses. Ex. 1009, ¶¶ 87, 93.
`
`
`
`“within”
`
`
`
`The proposed BRI construction for this term is “inside, or not beyond the
`
`limits or boundaries of.” Ex. 1009, ¶ 39. This construction is supported by the
`
`usage of this term in the ‘017 Patent and the dictionary definition. Ex. 1005.
`
`VI. DETAILED EXPLANATION OF PERTINENCE AND MANNER OF
`APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`REVIEW IS REQUESTED
`
`
`
`
`The grounds presented in this Petition rely solely on prior art that was not
`
`before the Examiner during prosecution of the ‘017 Patent.
`
`A.
`
`Person of Ordinary Skill in the Art
`
`
`
`Petitioner proposes that a person of ordinary skill in the art in the field of the
`
`‘017 Patent at the time of invention would be someone with at least a bachelor’s
`
`degree in mechanical engineering or a related discipline or at least three years of
`
`equivalent experience in the ladder industry. Ex. 1009, ¶ 12.
`
`
`
`Further, the person of skill in the art would be familiar with the design trade-
`
`offs dictated by mechanical and material choices, as well as cost considerations
`
`and consumer preferences and demands in the ladder industry. Ex. 1009, ¶ 13.
`
`
`
`10
`
`

`

`B.
`
`Applicable Law
`
`
`
`
`1.
`
`Anticipation (pre-AIA 35 U.S.C. §102)
`
`Under pre-AIA Section 102, each and every element of a claim, as properly
`
`construed, must be found, either explicitly or inherently in a single prior art
`
`reference, as arranged in the claim. To anticipate a claim, the single reference also
`
`must provide an enabling disclosure, with enough information to enable a person
`
`having ordinary skill in the art at the time of invention to reproduce the claimed
`
`invention without undue experimentation. Bristol-Myers Squibb Co. v. Ben Venue
`
`Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001).
`
`
`
`
`2.
`
`Obviousness (pre-AIA 35 U.S.C. §103)
`
`A patent claim is invalid under pre-AIA 35 U.S.C. Section 103 if the
`
`differences between the claimed invention and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which the subject matter
`
`pertains.2 Graham v. John Deere, 383 U.S. 1, 17-18 (1966). The determination of
`
`
`2All discussions in the Petition of “one skilled in the art” in the context of
`
`anticipation or obviousness are presumed to be as understood by a person of
`
`ordinary skill in the art to which the subject matter pertains at the time of
`
`invention.
`
`
`
`11
`
`

`

`obviousness is based on the scope and content of the prior art, the differences
`
`between the prior art and the claim, the level of ordinary skill in the art at the
`
`relevant time, and any objective evidence (secondary indicia) of non-obviousness,
`
`to the extent such evidence exists. Id. at 13.
`
`“[R]ejections on obviousness grounds cannot be sustained by mere
`
`conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.” In re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As the Supreme Court has set forth, this
`
`articulated reasoning can include the application of routine skill by one skilled in
`
`the art when there are a finite number of known solutions.
`
`When there is a design need or market pressure to solve a problem
`and there are a finite number of identified, predictable solutions, a
`person of ordinary skill in the art has good reason to pursue the known
`options within his or her technical grasp. If this leads to the
`anticipated success, it is likely the product not of innovation but of
`ordinary skill and common sense.
`KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007).
`
`C. Ground 1: Claims 1, 2, 3, 9, 10 and 13 of the ‘017 Patent are anticipated
`by French Patent No. 986,522
`
`
`
`French Patent No. 986,522 (“FR ‘522”) to Établissements Dalphinet was
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`filed March 11, 1949, granted on March 28, 1951 and published on August 1,
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`1951. Ex. 1003; Ex. 1009 ¶ 42. FR ‘522 qualifies as prior art to the ‘017 Patent
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`under pre-AIA 35 § U.S.C. 102(b).
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`FR ‘522 was not cited by either the Examiner or the Patent Owner during
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`prosecution of the ‘017 Patent.
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`As set forth in the charts below, FR ‘522 anticipates claims 1, 2, 3, 9, 10 and
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`13 of the ‘017 Patent. Following the charts, select claim limitations are discussed
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`in further detail.
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`Claim 1
`A ladder hinge and rail assembly
`comprising:
`a first ladder rail;
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`a second ladder rail;
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`a first hinge component
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`laterally extending hinge
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`having a
`tongue,
`a longitudinally extending rail mount
`section,
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`FR ‘522
`“Hinge, specifically for ladders and
`stepladders” Ex. 1003, title
`Tube 2. “tubes 2 and 6 of the hinge
`described can constitute one of the two
`articulated uprights of a folding ladder,
`stepladder or suchlike.” Id., 2:22-27
`Tube 6. “tubes 2 and 6 of the hinge
`described can constitute one of the two
`articulated uprights of a folding ladder,
`stepladder or suchlike.” Id.
`Flat element 1 + shims 3,3 “joined
`together…such as by brazing, welding,
`riveting or other method…” Id., 1:5-9,
`1:28-2:2, 2:10-12
`“Head” of element 1. Id., 2:3-5, Figs. 2
`and 5
`Tail 1a + shims 3,3. Id., 1:59, 1:28-2:2,
`2:10-12
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`13
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`and an abutment shoulder between the
`tongue and the rail mount section and
`extending across substantially an entire
`width of the longitudinally extending
`rail mount section,
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`wherein the longitudinally extending
`rail mount section of the first hinge
`component is partially longitudinally
`disposed within the first ladder rail;
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`a second hinge component
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`having a pair of plate segments
`defining a lateral hinge groove
`and a longitudinally extending rail
`mount section,
`the pair of plate segments each having
`a peripheral edge,
`wherein the longitudinally extending
`rail mount section of the second hinge
`component is partially longitudinally
`disposed within the second ladder rail,
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`Edge of shim 3. “The hinge thus made
`folds
`to
`a
`position
`positively
`determined by the head of each of the
`elements abutting against the edges of
`the shims coupled to the other element,
`as can be clearly understood by Fig. 2.”
`Id., 2:13-15
`“The hinge shown comprises a first flat
`element 1, extended by a tail 1a pushed
`into a rectangular tube 2…said tail
`which is fitted inside the tube by means
`of shims 3 arranged on either side of its
`faces…” Id., 1:5-9, 1:28-2:2 and Figs.
`1, 2, 3 and 5
`Flat elements 5,5 and shim 7 “joined
`together…such as by brazing, welding,
`riveting or other method…” Id., 1:5-9
`and 2:2-12
`Flat elements 5,5. Id., 1:5-8, 2:3-5 and
`Fig. 1
`Tails 5a,5a + shim 7. Id., 1:5-9 and 2:3-
`12
`Peripheral edge of flat elements 5, 5.
`Id., 2:13-15, Figs. 1, 2 and 5.
`“These
`two elements 5 are also
`provided with tails 5a pushed into a
`same rectangular tube 6 identical to the
`above-described tube 2. The tails are
`separated from one another inside the
`tube 6 by a shim 7.” Id., 1:5-8, 2:5-9
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`14
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`and wherein the hinge tongue of the
`first hinge component
`is disposed
`within the lateral hinge groove of the
`second hinge component
`and configured
`to provide relative
`rotation of the first and second hinge
`components about a defined axis
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`from a first relative position of the first
`hinge component and the second hinge
`component wherein the first ladder rail
`and the second ladder rail are angled
`with respect to each other,
`to a second relative position of the first
`hinge component and the second hinge
`component wherein, when
`in
`the
`second relative position, the first ladder
`rail and the second ladder rail are
`aligned with each other and the first
`hinge component extends substantially
`longitudinally from the second hinge
`component
`and wherein the abutment shoulder
`abuts a peripheral edge of one plate
`segment of the pair of plate segments
`in a substantially conformal manner
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`and, when in the first position, the
`abutment shoulder and the peripheral
`edge of the one plate segment are
`spaced from each other.
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`“The hinge…is formed by a first flat
`element articulated with two other flat
`elements that surround it” Id., 1:5-7,
`2:3-5, Figs. 1, 2 and 5
`“The head of the element 1 carries an
`articulation pin 4 on which are also
`articulated two elements 5 similar to
`the above-described element 1” Id.,
`2:3-5
`“Fig. 5 is a sectional view…showing
`the hinge
`in
`the partially
`folded
`position.” Id., 1:26-27, Fig. 5
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`“Fig. 1 is a front view of a hinge
`according
`to
`the
`invention
`in
`the
`unfolded position…” Id., 1:21-22, Fig.
`1
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`“…as can be clearly understood from
`Fig. 2. In this position the two tubes 2
`and 6 are an extension of one another.”
`Id., 1:13-16, Fig. 2
`“The hinge thus made folds to a
`position positively determined by the
`head of each of the elements abutting
`against the edges of the shims coupled
`to the other element, as can be clearly
`understood by Fig. 2.” Id., 2:13-16,
`Figs. 1 and 2
`“Fig. 5 is a sectional view…showing
`the hinge
`in
`the partially
`folded
`position.” Id., 1:26-27, Fig. 5
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`15
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`Claim 1 of the ‘017 Patent begins by reciting a ladder and hinge assembly
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`comprising a first ladder rail and a second ladder rail. Ex. 1001, col. 13, ll. 24-26.
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`FR ‘522 discloses a first tube 2 and a second tube 6. Ex. 1003, p.2, ll. 22-27. The
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`tubes 2, 6 of FR ‘522 constitute ladder rails as understood using the proposed
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`construction of “ladder side members.” Ex. 1004, p. 11; Ex. 1009, ¶¶ 45-50.
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`Reproduced below is Fig. 5 of FR ‘522, which depicts a ladder hinge and rail
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`assembly comprising a first ladder rail (tube 2) highlighted red, and a second
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`ladder rail (tube 6) highlighted green. Ex. 1009, ¶ 48.
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`16
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`FR ‘522 discloses a first hinge component, in the form of element 1 and
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`shims 3 which are joined together and to the first ladder rail “by brazing, welding,
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`riveting or other method as appropriate.” Ex. 1003, 1:28-2:2, 2:10-12; Ex. 1009, ¶
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`51. Reproduced below are Figs. 1, 3 and 5 of FR ‘522 with the first hinge
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`component highlighted gray. Id.
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`Fig. 2
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`The first hinge component of FR ‘522 has a laterally extending hinge tongue
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`(head of element 1). Ex. 1003, 2:3-5; Ex. 1009, ¶ 52. Reproduced below left is Fig.
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`5 of FR ‘522, which depicts the laterally extending hinge tongue (head) of the first
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`hinge component outlined light blue. Id. Reproduced below right is Fig. 5B of the
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`‘017 Patent, depicting the laterally extending hinge tongue 222. Id.
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`laterally extending
`hinge tongue
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`FR ‘522
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`‘017 Patent
`Fig. 5B
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`The first hinge component of FR ‘522 also has a longitudinally extending
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`rail mount section, in the form of tail 1a and shims 3. Ex. 1009, ¶ 53. The tail 1a
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`“is fitted inside the tube by means of shims 3 arranged on either side of its
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`faces…” Ex. 1003, 1:28-2:2. Tail 1a (being part of element 1) is joined to shims 3
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`“by brazing, welding, riveting or other method as appropriate.” Ex. 1003, 2:10-12;
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`Ex. 1009, ¶ 51. The joined components tail 1a and shims 3 constitute a rail mount
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`section. Ex. 1009, ¶ 53.
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`The ‘017 Patent defines the longitudinal axis as the lengthwise direction of
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`the ladder rails. Ex. 1001, 5:30-46; Ex. 1009, ¶ 54. The rail mount section of the
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`first hinge component of FR ‘522 is therefore longitudinally extending, as the rail
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`mount section extends in the direction of the ladder rail it is attached to. Id.
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`Reproduced below is Fig. 5 of FR ‘522, which depicts the longitudinally extending
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`rail mount section outlined orange. Id.
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`19
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`FR ‘522 discloses the first hinge component has an abutment shoulder, in the
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`form of an edge of each shim 3, as understood using the proposed construction of
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`“a component that directly transfers force between the first hinge component and
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`the second hinge component.”. Ex. 1009, ¶¶ 55-58. FR ‘522 recites “[t]he hinge
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`thus made folds to a position positively determined by the head of each of the
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`elements abutting against the edges of the shims coupled to the other element, as
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`can be clearly understood by Fig. 2.” (emphasis added) Ex. 1003, 2:13-15; Ex.
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`1009, ¶ 55. Reproduced below are Figs. 2 and 5 of FR ‘522, with the abutment
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`shoulder marked red. Ex. 1009, ¶ 57.
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`20
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`Also apparent from the above-reproduced Figs. 2 and 5 of FR ‘522 is that
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`the abutment shoulder is located between the tongue (outlined light blue) and the
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`rail mount section (outlined orange). Id.
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`Further, the abutment shoulder of FR ‘522 extends across substantially the
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`entire width of the longitudinally extending rail mount section, to a similar degree
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`as the abutment shoulder of the ‘017 Patent extends across its rail mount section.
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`Ex. 1009, ¶ 58. For comparison, reproduced below left is Fig. 5 of FR ‘522 and
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`reproduced below right is Fig. 5B of the ‘017 Patent. Id.
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`abutment
`shoulder
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`‘017 Patent
`Fig. 5B
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`FR ‘522
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`21
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`FR ‘522 discloses wherein the longitudinally extending rail mount section of
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`the first hinge component is partially longitudinally disposed within the first ladder
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`rail. Ex. 1003, 1:5-9 and 1:28-2:2; Ex. 1009, ¶¶ 59-61.
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`Claim 1 of the ‘017 Patent continues, reciting a second hinge component. FR
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`‘522 discloses a second hinge component, in the form of two elements 5 and a
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`shim 7, which are joined together and to the second ladder rail “by brazing,
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`welding, riveting or other method as appropriate.” Ex. 1003, 1:5-9 and 2