Trials@uspto.gov
`571.272.7822
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` Paper No. 10
`December 4, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RIDDELL, INC.,
`Petitioner,
`v.
`KRANOS IP II CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`____________
`
`
`Before HYUN J. JUNG, JAMES A. TARTAL, and
`JEFFREY A. STEPHENS, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 10
`December 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RIDDELL, INC.,
`Petitioner,
`v.
`KRANOS IP II CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`____________
`
`
`Before HYUN J. JUNG, JAMES A. TARTAL, and
`JEFFREY A. STEPHENS, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2018-01164
`Patent 6,434,755 B1
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`
`INTRODUCTION
`I.
`Riddell, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of inter partes review of claim 11 of U.S. Patent
`No. 6,434,755 B1 (Ex. 1001, “the ’755 patent”). Kranos IP II Corp. (“Patent
`Owner”) filed a Preliminary Response (Paper 9, “PO Prelim. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented shows there is a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of claim 11 of
`the ’755 patent. Accordingly, we authorize an inter partes review to be
`instituted as to all grounds raised in the Petition. Our factual findings and
`conclusions at this stage of the proceeding are based on the evidentiary
`record developed thus far (prior to Patent Owner’s Response). This is not a
`final decision as to patentability of the claim for which inter partes review is
`instituted. Any final decision will be based on the record, as fully developed
`during trial.
`
`II. BACKGROUND
`The ’755 Patent
`A.
`The ’755 patent, titled “Helmet,” issued August 20, 2002, from U.S.
`Application No. 09/586,124, filed June 2, 2000. Ex. 1001, [21] [22], [45],
`[54]. The ’755 patent generally relates to “a helmet suitable for use as a
`football helmet and having reduced weight and improved comfort
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`characteristics as compared to conventional football helmets.” Ex. 1001,
`1:20–24.
`Figures 1 and 2 of the ’755 patent are reproduced below.
`
`
`
`
`Figure 1 illustrates a side perspective view of a helmet in accordance with
`the ’755 patent, and Figure 2 is a rear perspective view of the helmet in
`Figure 1. Id. at 2:37–39. Helmet 10 includes substantially rigid shell 12
`with substantially continuous exterior surface 14 spaced apart from
`substantially continuous interior surface 16. Id. at 3:3–7. Shell 12 includes
`elongate offset 28 on exterior surface 14 extending around the rear of helmet
`10 and between ear holes 30. Id. at 3:20–22. The ’755 patent further states
`as follows:
`The offset 28 defines an exterior surface that lies in a plane below
`the exterior surface 14 and an interior surface that lies in a plane
`below the interior surface 16. The offset 28 preferably is from
`about 0.125 to about 0.375 inches below the surface 14, most
`preferably about 0.2 inches. The thickness of the offset 28 is
`preferably substantially the same as the thickness defined
`between the surface 14 and 16.
`Conventionally, a desired flexural resistance is provided
`to a shell by making the shell sufficiently thick. However, the
`thickness normally required increases the weight of the shell and
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`makes the shell sufficiently heavy so as to be uncomfortable to
`the wearer. The offset 28 functions to rigidify and increase the
`flexural resistance of the shell 12. Thus, the shell 12
`incorporating the offset 28 may have a reduced thickness as
`compared to conventional helmet shells without compromising
`flexural resistance properties of the shell. This advantageously
`enables reductions in weight and materials. A lip 32 may also
`preferably provided at the exposed edge of the shell for
`increasing the flexural resistance of the shell.
`Id. at 3:22–42. According to the ’755 patent, offset 28 preferably has upper
`latitudinal line 34 “located proximate the portion of the shell adjacent the
`occipital protuberance of the cranium of the user” and lower latitudinal line
`36 just above lip 32. Id. at 48–51. “The length of the offset preferably
`extends the circumferential distance between the ear holes 30, with the
`length preferably being at least as long as the circumferential distance of the
`portion of the shell adjacent the occipital protuberance of the user.”
`Id. at 54–58.
`
`Challenged Claim
`B.
`Challenged claim 11 is reproduced below:
`11. A helmet, comprising a shell having a rear portion and
`opposite side portions having ear holes and an offset defined on
`a substantially continuous portion of the shell extending between
`the rear and opposite side portions for increasing the flexural
`resistance of the shell, wherein the offset extends substantially
`between the ear holes.
`Ex. 1001, 8:29–34.
`
`Related Proceedings
`C.
`The parties indicate that the ’755 patent is asserted in the United
`States District Court for the Northern District of Illinois, in a case captioned
`Kranos IP Corp. et al. v. Riddell, Inc., Case No. 1:17-cv-06802 (N.D. Ill.).
`Pet. 1–2; Paper 5, 1.
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`Real Parties in Interest
`D.
`Petitioner identifies itself, BRG Sports. Inc., and Riddell Sports
`Group, Inc., as real parties in interest. Pet. 1. Patent Owner identifies only
`itself as a real party in interest. Paper 5, 1.
`The Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claim 11 of the ’755 patent
`on the following grounds:
`Reference(s)
`
`Basis
`§ 102
`Cooper1
`§ 102
`Tang2
`§ 103
`Clement3
`§ 103
`Cooper and Clement
`§ 103
`Tang and Clement
`Pet. 3. Petitioner supports its challenge with a Declaration by Nicholas
`Shewchenko, dated May 24, 2018 (Ex. 1006).
`III. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, “[a] claim in an unexpired patent . . . shall
`be given its broadest reasonable construction in light of the specification of
`the patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (upholding the use of the broadest
`reasonable interpretation standard). In determining the broadest reasonable
`
`
`1 Canadian Ind. Des. No. 50782, reg. Jan. 24, 1983 (Ex. 1002, “Cooper”).
`The Petition and the Patent Owner Preliminary Response refer to this
`reference as “Cooper 50782.”
`2 U.S. Pat. No. Des. 412,766, iss. Aug. 10, 1999 (Ex. 1003, “Tang”).
`3 U.S. Pat. No. 4,539,715, iss. Sept. 10, 1985 (Ex. 1004, “Clement”).
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`construction, we presume that claim terms carry their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). A patentee may define a claim term in a manner that
`differs from its ordinary meaning; however, any special definitions must be
`set forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`1.
`“offset”
`Petitioner contends that “offset” should be construed consistent with
`the intrinsic record and its ordinary meaning as “a portion of the shell that
`defines a surface that lies in a plane above or below a neighboring surface of
`the shell.” Pet. 8. Petitioner further argues that “offset” encompasses a
`portion of the surface of the shell that lies either above or below a
`neighboring surface of the shell and that it does not require “a standoff of
`equal depth in the exterior and interior surfaces” or a “standoff in both
`surfaces.” Id. at 8–12. Petitioner’s proposed construction is supported by
`Mr. Shewchenko. Ex. 1006 ¶¶ 44–49.
`Patent Owner argues that “offset” should be given its “plain and
`ordinary meaning,” which “would be readily apparent to a lay juror and one
`of ordinary skill in the art.” PO Prelim. Resp. 5. Patent Owner, however,
`does not provide the “readily apparent” meaning of “offset” to which it
`refers. Instead, Patent Owner quotes a portion of the Specification which
`lends little additional meaning to the term and argues that the construction
`proposed by Petitioner “tries to improperly broaden the claim.” Id. 5–6
`(quoting Ex. 1001, 2:3–7). In particular, Patent Owner argues that
`Petitioner’s proposed definition does not require “any sort of projection or
`transition wall” and would encompass “any minor bump or fluctuation in the
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`shell,” which is purportedly inconsistent with the view expressed by
`Mr. Shewchenko in another proceeding. Id. at 6 (citing Ex. 2002, 135).
`Patent Owner does not dispute at this time Petitioner’s contentions that an
`“offset” may lie either above or below a neighboring surface of the shell and
`does not require a standoff of equal depth in the exterior and interior
`surfaces or a standoff in both surfaces.
`Patent Owner’s concern that Petitioner’s proposed definition includes
`“any minor bump or fluctuation” appears to be overstated because claim 11
`explicitly limits an “offset” to one “defined on a substantially continuous
`portion of the shell extending between the rear and opposite side portions”
`and that “extends substantially between the ear holes.” Patent Owner also
`does not explain persuasively why an “offset” requires some “sort of
`projection or transition wall.” Regardless, the issues raised by Patent Owner
`with Petitioner’s proposed construction do not appear relevant to the issues
`presented in this case at this time. In particular, Patent Owner does not
`suggest that the features in the asserted references which Petitioner contends
`correspond to the claimed “offset” are either minor bumps or fluctuations or
`lack any projection or transition wall.
`For purposes of this Decision, on the current record, Petitioner has
`sufficiently shown that “offset” is not limited to a portion of the surface of
`the shell that lies below a neighboring surface of the shell, to a standoff of
`equal depth in the exterior and interior surfaces of the shell, or to a standoff
`in both the exterior and interior surfaces of the shell. No express
`construction of “offset” is necessary. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in
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`controversy need to be construed expressly, and then only to the extent
`necessary to resolve the controversy).
`2.
`“extends substantially between the ear holes”
`Petitioner contends that “extends substantially between the ear holes”
`should be construed to mean “extends at least most of the circumferential
`distance between the ear holes,” in accordance with its ordinary meaning.
`Pet. 12. Petitioner states that the Specification does not define
`“substantially,” but that a person of ordinary skill would have understood it
`to mean “something that is at least approximately or mostly consistent with a
`stated condition.” Id. (citing Ex. 1006 ¶ 51). In support, Petitioner cites to
`the declaration of Mr. Shewchenko which provides the same definition of
`“substantially” with no citation to any supporting evidence.
`Patent Owner argues that the term should be given its “plain and
`ordinary meaning,” which “would be readily apparent to a lay juror and one
`of ordinary skill in the art.” PO Prelim. Resp. 7–8. Patent Owner, however,
`does not provide the “readily apparent” meaning to which it refers. Instead,
`Patent Owner quotes a portion of the Specification which lends little
`additional meaning to the term and argues that the construction proposed by
`Petitioner “would be more likely to confuse rather than to clarify the
`meaning of the term.” Id. at 8 (quoting Ex. 1001, 2:3–7). Although Patent
`Owner disputes Petitioner’s proposal, Patent Owner fails to explain why that
`proposal is confusing or contrary to the ordinary meaning of the term.
`For purposes of this Decision, on the current record, we find
`“substantially between the ear holes” encompasses “at least most of the
`circumferential distance between the ear holes,” and that “extends
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`substantially between the ear holes” does not further require an express
`construction. See Vivid Techs., 200 F.3d at 803.
`Asserted Anticipation by Cooper
`B.
`Petitioner contends claim 11 is anticipated by Cooper. Pet. 15–19.
`Petitioner’s contentions are supported by Mr. Shewchenko. Ex. 1006 ¶¶ 55–
`56, 61–70. Patent Owner contends that Petitioner fails to demonstrate each
`element of claim 11 is disclosed in Cooper. PO Prelim. Resp. 10–18.
`1.
`Summary of Cooper (Ex. 1002)
`Cooper, titled “Hockey Helmet,” is a registered Canadian Industrial
`Design. Ex. 1002. Figures 2 and 3 of Cooper are reproduced below.
`
`
`
`Figures 2 and 3 of Cooper illustrate a hockey helmet. The only description
`in Cooper of the illustrated hockey helmet is the following:
`a Helmet having an upper rounded housing which is convexly
`curved at the front and at the rear, with a forwardly and
`downwardly sloping central portion having cross ribs in the
`upper part thereof, the rear of the housing having horizontal ribs
`at either side, all
`ribs being outwardly convergent in
`cross-section, and an ear protecting portion extending
`downwardly from the sides and rear of the housing, the ear
`protecting portion having a downwardly and rearwardly sloping
`forward edge and an upwardly and rearwardly sloping bottom
`edge.
`Id. at 2.
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`Claim 11
`2.
`Although Cooper provides a limited written description of the
`disclosed hockey helmet design, anticipation of claim 11 by Cooper may be
`shown by reliance on the description provided by the drawings alone. See
`In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); see also In re Aslanian, 590
`F.2d 911 (CCPA 1979) (drawings must be evaluated for what they
`reasonably disclose and suggest to one of ordinary skill in the art).
`With regard to claim 11, Petitioner contends that Cooper discloses a
`helmet with a shell having a rear portion and opposite side portions.
`Pet. 15–16. Petitioner also provides annotated versions of Figures 1, 2, and
`3 of Cooper, reproduced below:
`
`
`Pet. 16–17. Annotated Figures 1, 2, and 3 illustrate the helmet disclosed by
`Cooper with red arrows directed to features allegedly corresponding to the
`recited “ear holes” and “offset” of claim 11. Mr. Shewchenko explains that
`a person of ordinary skill in the art would have recognized that Cooper
`discloses these recited features of claim 11. Ex. 1006 ¶¶ 64–68.
`In addition to a “shell” having an “offset,” claim 11 also states that the
`offset is “for increasing the flexural resistance of the shell.” Petitioner
`identifies the “for increasing” recitation of claim 11 as “a separate
`limitation,” but does not directly address either how it should be construed
`or the extent to which it is entitled patentable weight. See Pet. 11. Instead,
`according to Petitioner, a person of ordinary skill would have understood
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`from Cooper that “including one or more offsets in which a portion of the
`shell deflects inward or outward, below or above the opposing interior and
`exterior surfaces of the shell, imparts greater flexural resistance to the shell.”
`Pet. 18 (citing Ex. 1006 ¶¶ 38–41, 69). Petitioner further explains the
`following:
`Providing an offset in a helmet shell, also commonly referred to
`as a corrugation or rib by those skilled in the art, necessarily
`increases flexural rigidity because corrugation provides material
`interconnected by a vertical wall connecting the two surfaces
`resulting in a beam-like structure that resists flexural bending
`thereby providing a stiffer and stronger structure. Ex. 1006 ¶ 69.
`Corrugation and beam theory are fundamental engineering
`principles that were used long before June 1999 to add flexural
`resistance in helmet shells. Ex. 1006 ¶ 69; see also id. at
`¶¶ 38–41.
`Pet. 18. Thus, Petitioner contends that, by disclosing an offset, Cooper
`inherently discloses the “for increasing the flexural resistance of the shell”
`limitation. Petitioner also notes that during prosecution of the ’755 patent
`the Examiner found that another reference, Flynn, 4 disclosed a helmet shell
`with three offsets extending between the rear and opposite side portions,
`with “the offsets inherently increasing flexural resistance of the shell.” Id. at
`6 (quoting Ex. 1010, 98). Upon review, we find Petitioner has sufficiently
`shown how it contends Cooper discloses, expressly or inherently, each of the
`limitations of claim 11. See id. at 15–19. Accordingly, we focus our
`discussion on Patent Owner’s arguments in opposition.
`First, Patent Owner argues that Petitioner “provides no explanation”
`for why a person of ordinary skill “would view any of the features” of
`Cooper as ear holes, and that nothing in Cooper “describes or identifies any
`
`4 U.S. Patent No. 5,010,598, iss. Apr. 30, 1991 (Ex. 1012, “Flynn”).
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`features as ear holes.” PO Prelim. Resp. 10–12. Patent Owner goes on to
`assert that Petitioner “fails to demonstrate that the alleged ‘ear holes’ are on
`opposite side portions,” that there is no support for the contention that
`Cooper’s helmet is symmetrical, and that Mr. Shewchenko hasn’t
`established himself as “an expert in the field of hockey helmets.” Id. We
`have considered each of Patent Owner’s arguments and find on the current
`record that Petitioner still has demonstrated a reasonable likelihood of
`prevailing in showing anticipation of claim 11 by Cooper. Figure 1 of
`Cooper plainly illustrates what appears to be openings on both sides of the
`helmet coinciding with where a user’s ears would be placed when wearing
`the helmet. Moreover, we find Mr. Shewchenko’s experience with helmets,
`generally, sufficient to support his opinions. We credit his testimony that
`Figure 1 of Cooper illustrates ear holes on opposite sides of the helmet and
`that hockey helmets such as the one illustrated in Cooper are routinely
`symmetrical. Ex. 1006 ¶ 64. On the present record Petitioner has
`sufficiently shown for purposes of this Decision that Cooper discloses to a
`person of ordinary skill “ear holes,” as required by claim 11.
`Next, Patent Owner argues that Petitioner “fails to provide any
`reason” a person of ordinary skill would “believe” Cooper discloses an
`offset, and that Figure 3 of Cooper doesn’t show “shading” on the portion of
`the shell to the left of the alleged offset. PO Prelim. Resp. 12–13. Figures 1,
`2, and 3 plainly illustrate what appears to be a depressed region of the shell
`identified by Petitioner as an “offset.” Moreover, on the current record, we
`credit the testimony of Mr. Shewchenko that Cooper discloses to a person of
`ordinary skill an offset as required by claim 11 over Patent Owner’s attorney
`argument. See Ex. 1006 ¶¶ 66–70; see also 37 C.F.R. § 42.108(c) (stating
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`“testimonial evidence will be viewed in the light most favorable to the
`petitioner solely for purposes of deciding whether to institute an inter partes
`review.”).
`Next, Patent Owner argues that the alleged offset in Cooper doesn’t
`extend “between the rear and opposite side portions” because it resides “only
`across the rear portion” and “not up to the side portion.” PO Prelim. Resp.
`13–15. Patent Owner further argues that Petitioner fails to demonstrate that
`the alleged offset “extends ‘substantially’ between the ear holes, . . . as it
`fails to extend into the alleged ‘side portion[] having ear holes.” Id. at 15–
`16.
`
`At this stage, claim 11 has not been shown to require an offset “up to
`the side portion” or an offset extending “into” the side portions for the offset
`to extend “substantially between the ear holes.” Figures 2 and 3 of Cooper,
`together with the testimony of Mr. Shewchenko, sufficiently show for
`purposes of this Decision that the alleged offset of Cooper is “defined on a
`substantially continuous portion of the shell extending between the rear and
`opposite side portions” and “extends substantially between the ear holes,” as
`required by claim 11.
`Lastly, Patent Owner argues that claim 11 requires “that the offset
`“increas[es] the flexural resistance of the shell,” and that Cooper does not
`disclose that the alleged offset “would impart ‘greater flexural resistance to
`the shell.’” PO Prelim. Resp. 16–18. Claim 11 recites “an offset . . . for
`increasing the flexural resistance of the shell,” not that the offset actually
`increases the flexural resistance. Patent Owner does not directly address
`either how the “for increasing” claim language should be construed or the
`extent to which it is entitled patentable weight. See PO Prelim. Resp. 16 n.3
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`(asserting that “Petitioner concedes” it “is a separate limitation from the
`offset”). We do find that Patent Owner raises a legitimate issue over
`whether the offset illustrated by Cooper necessarily increases flexural
`resistance based, in part, on the following opinion of Mr. Shewchenko:
`A person of ordinary skill in the art would have recognized
`that, if the offset apparent in the exterior surface extending
`substantially between the ear holes of the Cooper [] helmet had
`been created without a corresponding offset in the interior
`surface of the shell lying below the plane of the neighboring
`interior surface, the result would have been localized structural
`weakness due to a thinner area in the shell.
`Ex. 1006 ¶ 86. Mr. Shewchenko also opines that “a person of ordinary skill
`in the art would have expected that the proximity to the lower edge of the
`shell would have further weakened the local structure in the area of the
`disclosed offset.” Id. Mr. Shewchenko, however, was addressing
`Petitioner’s obviousness contentions. As noted above, with regard to alleged
`anticipation of claim 11 by Cooper, Mr. Shewchenko maintains that a person
`of ordinary skill would have understood Cooper to have disclosed a
`corrugation-type offset structure with both the offset visible on the exterior
`surface and a corresponding offset of the interior surface. Ex. 1006 ¶ 34.
`Although Patent Owner raises factual disputes over whether Cooper
`necessarily discloses an offset “for increasing the flexural resistance of the
`shell,” we decline to resolve the issue on an incomplete record. Patent
`Owner also contends that the supporting evidence relied on by
`Mr. Shewchenko is insufficient. See PO Prelim. Resp. 18 (contending that a
`curved offset is distinguishable from “straight beams”). In sum, we have
`considered each of Patent Owner’s arguments and find that Petitioner has
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`sufficiently shown on the current record for purposes of this Decision that
`Cooper discloses an “offset” as required by claim 11.
`Asserted Anticipation by Tang
`C.
`Petitioner contends claim 11 is anticipated by Tang. Pet. 19–25.
`Petitioner’s contentions are supported by Mr. Shewchenko. Ex. 1006 ¶¶ 57,
`58, 71–79. Patent Owner contends that Petitioner fails to demonstrate each
`element of claim 11 is disclosed in Tang. PO Prelim. Resp. 18–24.
`1.
`Summary of Tang (Ex. 1003)
`Tang, titled “Safety Helmet for Sports,” is a design patent that
`provides only illustrations of the claimed helmet. To illustrate the subject
`matter of Tang, Figures 3 and 4 of Tang are reproduced below.
`
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`Claim 11
`2.
`With regard to claim 11, Petitioner contends that Tang discloses a
`helmet with a shell having a rear portion and opposite side portions.
`Pet. 19–20. Petitioner provides annotated versions of Figures 4 and 5 of
`Tang, reproduced below.
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`Pet. 20. Annotated Figures 4 and 5 illustrate the helmet disclosed by Tang
`with red arrows directed to features allegedly corresponding to the recited
`“ear holes” of claim 11. Petitioner explains that “opposite side portions of
`the disclosed helmet have ear holes because the side portions of the shell are
`configured to include gaps or apertures that accommodate the wearer’s ears
`while the helmet is in use.” Id. (citing Ex. 1006 ¶ 74–75). Neither
`Petitioner nor Mr. Shewchenko identifies any persuasive support for
`construing “ear hole” in the ’755 patent to encompass “gaps or apertures that
`accommodate the wearer’s ears while the helmet is in use,” such as the ear
`gap disclosed by Tang. Patent Owner further notes that Petitioner argued in
`a district court proceeding that Tang does not disclose ear holes. PO Prelim.
`Resp. 19 (citing Ex. 2005, 1689–90).
`Petitioner also provides annotated versions of Figures 3, 4, and 5 of
`Tang, reproduced below, with arrows directed to the feature allegedly
`corresponding to the recited “offset” of claim 11.
`
`
`Pet. 21. Annotated Figures 3, 4, and 5 illustrate the helmet disclosed by
`Tang with annotated red arrows pointed to the feature Petitioner contends
`corresponds to an “offset” recited by claim 11. Petitioner contends that the
`offset of Tang, “while positioned just above the upper edges of the ear holes,
`extends substantially between the ear holes.” Id. at 22. Patent Owner
`argues that the alleged offset of Tang “does not extend substantially between
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`the alleged ear holes of Tang,” but provides no further explanation of what
`the “extends substantially” language of claim 11 requires that is missing
`from Tang. PO Prelim. Resp. 21. The current record does not show why an
`offset that is above the alleged ear holes is precluded from being
`“substantially between the ear holes.”
`
`Patent Owner also argues that the alleged offset of Tang is not
`“defined on a substantially continuous portion of the shell” because it
`includes numerous vent holes and that Mr. Shewchenko previously
`suggested, in regard to a different reference, that a “substantially continuous
`portion of the shell” excludes “any appreciable protrusions.” PO Prelim.
`Resp. 21. Even assuming Mr. Shewchenko’s discussion of another
`reference is relevant to Tang’s disclosure, the current record does not
`indicate why “vent holes” are to be equated to “appreciable protrusions.”
`
`In further regard to the statement in claim 11 that the offset is “for
`increasing the flexural resistance of the shell,” Petitioner contends that a
`person of ordinary skill would have understood the alleged offset of Tang
`was “either (1) a corrugated-type offset having a corresponding portion of
`the internal surface of the shell that lies in a plane above the neighboring
`region of the shell, or (2) a region of increased shell thickness.” Pet. 24–25
`(citing Ex. 1006 ¶ 79; Ex. 1003 Figs. 1, 3–5). Petitioner reasons that
`“[a]ccording to basic helmet design principles that would have been well
`known to a [person of ordinary skill], in either case the disclosed offset
`would necessarily increase the flexural resistance of the shell—whether due
`to a corrugated-type offset structure or increased shell thickness.” Id. Thus,
`Petitioner contends Tang inherently discloses an offset “for increasing the
`flexural resistance of the shell.”
`
`17
`
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`IPR2018-01164
`Patent 6,434,755 B1
`
`Patent Owner contends the alleged offset of Tang “would not
`
`necessarily increase . . . rigidity” because it contains “numerous vent
`openings” and that Mr. Shewchenko previously explained in another
`proceeding that hypothetically modifying a helmet taught by a different
`reference to include some other sort of vent opening “would create areas of
`less structural rigidity.” PO Resp. 23 (quoting Ex. 2007 ¶ 8). The current
`record does not sufficiently support such a contention.
`Asserted Obviousness over Clement
`D.
`Petitioner contends that claim 11 would have been obvious over
`Clement. Pet. 38–45. Petitioner’s contentions are supported by
`Mr. Shewchenko. Ex. 1006 ¶¶ 57, 58, 71–79. Patent Owner contends that
`Petitioner fails to demonstrate each element of claim 11 is disclosed in
`Clement or a motivation to modify Clement to arrive at a helmet with the
`features recited by claim 11. PO Prelim. Resp. 24–29, 32–33.
`1.
`Summary of Clement (Ex. 1004)
`Clement, titled “Size Adjustable Helmet,” generally relates to a
`helmet having a front shell and a rear shell movable with respect to each
`other such that the two shells overlap each other and engage reciprocal
`mating surfaces. Ex. 1004, [54], Abstract.
`
`18
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`IPR2018-01164
`Patent 6,434,755 B1
`
`
`Figure 1 of Clement is reproduced below:
`
`
`Figure 1 of Clement illustrates helmet 10 with front shell 12 and rear shell
`14. Id. at 2:44–47. Side portion 20 of front shell 12 terminates at rear edge
`21, which lies to the outside of rear shell 14. Id. at 2:47–50. “[T]op wall 18
`has a rearward edge shown in broken lines at 23, and which fits just inside a
`top wall 25 of the rear shell 14.” Id. at 2:51–52. Side portion 20 of front
`shell 12 and sidewall 28 of rear shell 14 slide with respect to each other,
`with side portion 20 outside of side wall 28. Id. at 2:57–62. Both sides of
`the helmet are identical. Id. at 4:7–9. Clement further explains the
`following:
`The purpose of the apertures 32 is to provide vent holes so that
`the interior of the helmet can be vented while also being
`r[i]gidified by the ribbing lying between the grooves 30. In
`addition, the apertures 32 themselves are protected by the ribbing
`31.
`
`Because of the increase in strength provided by the ribbing
`31, the actual thickness of the material of the top wall 18 can be
`reduced to a minimum. On the inside, the top wall 18 exactly
`follows the contours of the ribbing 31, so that the thickness
`remains constant throughout.
`Id. at 3:1–10.
`
`19
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`IPR2018-01164
`Patent 6,434,755 B1
`
`
`Claim 11
`2.
`With regard to claim 11, Petitioner contends that Clement discloses a
`helmet with a shell having a rear portion and opposite side portions. Pet. 39.
`Petitioner provides an annotated version of Figure 1 of Clement, reproduced
`below, with an arrow directed to the feature allegedly corresponding to the
`recited “ear holes” of claim 11.
`
`
`Pet. 39–40. Annotated Figure 1 illustrates the helmet disclosed by Clement
`with an annotated red arrow pointed to the feature Petitioner contends
`corresponds to an “ear hole,” as recited by claim 11. Petitioner explains that
`Clement expressly states that “[t]he other side of the helmet is identical to
`that shown in Fig. 1.” Id. at 40 (quoting Ex. 1004 at 4:7–8).
`
`Patent Owner argues that Clement discloses a front shell and a rear
`shell, not “a single shell,” but the current record does not indicate why a
`helmet “comprising a shell having a rear portion and opposite side portions”
`is limited to a single piece shell or precludes a shell having a rear portion
`separate from side portions. See PO Prelim. Resp. 24–25. For the same
`reason, Patent Owner’s assertion that the Petition fails to provide a reason
`why Clement would be modified “to combine the two shells into a single
`shell” does not undermine our determination to institute review as the
`
`20
`
`
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`IPR2018-01164
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`
`current record does not show that claim 11 requires a single, one-piece shell.
`PO Prelim. Resp. 33.
`
`Petitioner also provides an annotated Figure 1 of Clement, reproduced
`below.
`
`
`Pet. 41. Annotated Figure 1 illustrates the helmet disclosed by Clement with
`an annotated red arrow pointed to the feature Petitioner contends
`corresponds to an “offset,” as recited by claim 11. According to Petitioner,
`“[t]he portion of the offset visible in profile at the left, rearward side of
`Figure 1 slopes inward from the adjacent surfaces of the shell, which would
`have indicated to a [person of ordinary skill] that the offset surface lies
`below neighboring surfaces of the shell.” Pet. 41–42 (citing Ex. 1006
`¶ 108).
`Patent Owner argues that in the absence of a rear view of the helmet
`of Clement, Clement does not teach an offset defined on a substant
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