UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
` MOSO NORTH AMERICA, INC. AND MOSO INTERNATIONAL B.V.,
`Petitioner,
`
`v.
`
`DASSO INTERNATIONAL, INC.,
`Patent Owner
`
`
`
`Case IPR2019-00184
`U.S. Patent 8,709,578
`
`
`
`
`
`
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`
`
`
`PATENT OWNER DASSO INTERNATIONAL, INC.’S CORRECTED
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.107(a)
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`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ......................................................................................... i
`
`TABLE OF AUTHORITIES .................................................................................. iii
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`TABLE OF EXHIBITS ............................................................................................ v
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II.
`
`TECHNOLOGY OVERVIEW ...................................................................... 2
`
`III.
`
`SUMMARY OF THE PETITIONERS’ PROPOSED GROUNDS
`FOR REVIEW ................................................................................................ 3
`
`IV. CLAIM CONSTRUCTION ........................................................................... 4
`
`A.
`
`The Governing Claim Construction Standard. .......................................... 4
`
`B.
`
`Construction of Specific Terms ................................................................ 6
`
`1.
`
`2.
`
`3.
`
`slots ............................................................................................. 6
`
`plurality of slots penetrating through said bamboo strip
`substantially in a direction of thickness defined by said
`bamboo strip – Claims 1 and 8 ................................................... 7
`
`a state of disorder in a cross-section defined by said
`bamboo scrimber – Claims 2 and 9 ............................................ 9
`
`V.
`
`THE SCOPE AND CONTENT OF THE PRIOR ART ..............................10
`
`A.
`
`Li (Ex. 1004) ...........................................................................................10
`
`B.
`
`C.
`
`Fujiwara (Ex. 1005) .................................................................................15
`
`Plaehn (Ex. 1006) ....................................................................................16
`
`D.
`
`ThermoWood Handbook (Ex. 1007).......................................................17
`
`E.
`
`Viitaniemi (Ex. 1008) ..............................................................................18
`
`VI. LEGAL FOUNDATION .............................................................................18
`
`
`
`i
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`

`

`
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`A. Anticipation .............................................................................................18
`
`B.
`
`Non-obviousness .....................................................................................19
`
`VII. PETITIONERS’ DO NOT DEMONSTRATE THAT THEY ARE
`MORE LIKELY THAN NOT TO PREVAIL ON ANY
`CHALLENGED CLAIM OF THE ’578 PATENT. ....................................20
`
`A.
`
`B.
`
`C.
`
`Li does not disclose “bamboo strips . . . formed with a plurality of
`slots.” .......................................................................................................20
`
`Fujiwara does not disclose “bamboo strips . . . formed with a
`plurality of slots.” ....................................................................................23
`
`Li does not disclose “modified through heat-treatment so that at
`least a part of hemicelluloses in said bamboo strips is pyrolized.” ........26
`
`A. All of Petitioners’ proposed grounds of challenge require the
`disclosure of “bamboo strips . . . formed with a plurality of slots”
`by either Li or Fujiwara, and “modified through heat-treatment so
`that at least a part of hemicelluloses in said bamboo strips is
`pyrolized” by Li. .....................................................................................27
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Ground 1: Claims 1, 4-8, 10, and 11 are not anticipated
`by Li. .........................................................................................27
`
`Ground 2: Claims 1, 3-8, and 10-12 are not obvious over
`Li in view of Fujiwara. ..............................................................29
`
`Ground 3a: Claims 2 and 9 are not obvious over Li in
`View of Plaehn. .........................................................................30
`
`Ground 3b: Claims 2 and 9 are not obvious over Li in
`view of Fujiwara and Plaehn.....................................................31
`
`Ground 5a: Claims 13-15 are not obvious over Li in view
`of Viitaniemi and/or the ThermoWood® Handbook. ...............32
`
`Ground 5b: Claims 13-15 are not obvious over Li in view
`of Fujiwara and Viitaniemi and/or the ThermoWood®
`Handbook. .................................................................................33
`
`VIII. CONCLUSION ...........................................................................................34
`
`
`
`ii
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`

`

`
`
`Cases
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`
`
`TABLE OF AUTHORITIES
`
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) ......19
`
`Cuozzo Speed Techs., LLC v. Lee, __ U.S. __, 136 S. Ct. 2131 (2016) .................... 5
`
`Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) 19, 28
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966) .........20
`
`In re Hodges, 882 F.3d 1107 (Fed. Cir. 2018) .......................................................... 5
`
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ..............................................19
`
`In re Smith Int'l, Inc., 871 F.3d 1375 (Fed. Cir. 2017) .............................................. 5
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) ........................................20
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ...................4, 6
`
`Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336 (Fed. Cir.
`
`2018) ...................................................................................................................... 4
`
`Net Money, Inc., v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) ....... 19, 28
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056 (Fed. Cir. 2016) .................................. 5
`
`Wasica Fin. GmbH v. Cont'l Auto. Sys., 853 F.3d 1272, 1284 (Fed. Cir. 2017) .....19
`
`Statutes
`
`35 U.S.C. § 102 ................................................................................................. 19, 28
`
`
`
`iii
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`

`

`
`
`Other Authorities
`
`83 Fed. Reg. 51,340, 51,359 (Oct. 11, 2018)............................................................. 4
`
`Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) .................................................................... 4
`
`Rules
`
`37 C.F.R. § 100(b) ..................................................................................................... 4
`
`37 C.F.R. § 42.100(b) ................................................................................................ 4
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`
`
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`
`iv
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`TABLE OF EXHIBITS
`
`Exhibit 2001
`
`Random House dictionary
`
`Exhibit 2002 Merriam-Websters dictionary
`
`Exhibit 2003
`
`CN 1887551A_English_certified translation (SunIP)
`
`Exhibit 2004
`
`Declaration of Thomas H. Kramer
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`
`
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`
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`
`
`v
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`

`

`
`
`I.
`
`INTRODUCTION
`
`The Board should deny the present request for inter partes review of U.S.
`
`Patent No. 8,709,578 (the “‘578 patent”) because there is not a reasonable
`
`likelihood that Petitioners would prevail at trial with respect to at least one claim of
`
`the ‘578 patent.
`
`Each of Petitioners’ proposed grounds of rejection fails to show disclosure in
`
`the prior art of one or more limitations of the claims of the ‘578 patent. For
`
`example, none of Petitioners’ proffered prior art references discloses the element
`
`“each of said bamboo strips is formed with a plurality of slots penetrating through
`
`said bamboo strip substantially in a direction of thickness defined by said bamboo
`
`strip and a substantially longitudinal direction defined by said slots is substantially
`
`consistent with a substantially longitudinal direction defined by fibers of said
`
`bamboo strip,” found in independent Claim 1 of the ‘578 patent. Independent
`
`Claim 8 contains the nearly-identical element “forming a plurality of slots in each
`
`of the prepared bamboo strips penetrating through the bamboo strip substantially in
`
`a direction of thickness defined by the bamboo strip and a substantially
`
`longitudinal direction defined by the slots is substantially consistent with a
`
`substantially longitudinal direction defined by fibers of the bamboo strip.” None
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`of Petitioners’ proffered prior art references discloses this claim element.
`
`Further, none of Petitioners’ proffered prior art references discloses the
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`
`
`1
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`

`

`
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`element “modified through heat-treatment so that at least a part of hemicelluloses
`
`in said bamboo strips is pyrolized,” found in independent Claim 1 of the ‘578
`
`patent. Independent Claim 8 contains the nearly-identical element “modifying the
`
`formed bamboo strips through heat-treatment so that at least a part of
`
`hemicelluloses in said bamboo strips is pyrolized.” None of Petitioners’ proffered
`
`prior art references discloses this claim element.
`
`Petitioners attempt to overcome the deficiencies of the prior art by
`
`suggesting a claim construction that is excessively broad in view of the
`
`specification. Further, Petitioners provide a translation of a Chinese-language
`
`reference which does not accurately represent the disclosure of the reference.
`
`For at least these reasons and as set forth more fully herein, Petitioners have
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`not shown that it is more likely than not they will prevail on any of the proposed
`
`grounds of challenge. Accordingly, institution of trial on the Petition should be
`
`denied.
`
`II. TECHNOLOGY OVERVIEW
`
`The ‘578 patent is entitled “Bamboo Scrimber and Manufacturing Method
`
`Thereof.” Scrimber is a type of engineered wood product that is especially useful
`
`in outdoor environments. Ex. 1001, 3: 60-65. The ‘578 patent discloses a new
`
`bamboo scrimber product as well as several methods of manufacturing the same.
`
`Generally speaking, the manufacturing process starts by cutting bamboo into
`
`
`
`2
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`

`

`
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`bamboo tubes. The tubes are then split into bamboo strips. Ex. 1001, 1: 25-35.
`
`The strips are “slotted” to permit adhesive to penetrate into the interior of the
`
`strips. The strips are then modified through heat treatment to remove
`
`hemicelluloses, which are known to cause decay of the scrimber and a degradation
`
`of its properties. Ex. 1001, 3: 3-35. Adhesive is then applied to the strips. See Ex.
`
`1001, Fig. 6. After the application of the adhesive, the strips are pressure-pressed
`
`together to form the scrimber. In the pressing step, two distinct processes are used.
`
`The first is cold pressing along with drying. See Ex. 1001, Figs. 6, 9; 5:55-7:23;
`
`10:5-46. The second is hot pressing. See Ex. 1001, Figs. 7, 8; 7:26- 9:33.
`
`The ‘578 patent also discloses another process of manufacturing scrimber in
`
`which the scrimber is formed and then the scrimber itself is subjected to heat
`
`treatment. Ex. 1001, 10:50-11:33.
`
`
`III. SUMMARY OF THE PETITIONERS’ PROPOSED GROUNDS FOR
`REVIEW
`
`Ground 1:
`
`Claims 1, 4-8, 10, and 11 are anticipated by Li
`
`Ground 2:
`
`Claims 1, 3-8, and 10-12 are obvious over Li in view of Fujiwara
`
`Ground 3a:
`
`Claims 2 and 9 are obvious over Li in view of Plaehn
`
`Ground 3b: Claims 2 and 9 are obvious over Li in view of Fujiwara and Plaehn
`
`Ground 5a:
`
`Claims 13-15 are obvious over Li in view of Viitaniemi and/or the
`
`ThermoWood® Handbook
`
`Ground 5b: Claims 13-15 are obvious over Li in view of Fujiwara and
`
`Viitaniemi and/or the ThermoWood® Handbook
`
`
`
`3
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`

`

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`
`
`IV. CLAIM CONSTRUCTION
`
`A. The Governing Claim Construction Standard.
`
`The broadest reasonable construction (“BRC”) standard applies in an inter
`
`partes review of an unexpired patent. 37 C.F.R. § 100(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).1, 2
`
`“A patent's specification, together with its prosecution history, constitutes
`
`intrinsic evidence to which the PTAB gives priority when it construes claims.”
`
`Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1341 (Fed.
`
`Cir. 2018) (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98
`
`(Fed. Cir. 2015)). “A specification includes both the written description and the
`
`claims of the patent.” Id.
`
`1
`
`
` Various decisions have referred to “broadest reasonable construction” and
`“broadest reasonable interpretation.” The governing Rule for IPR proceedings
`states that “A claim … 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)
`(emphasis supplied).
`2 The USPTO has recently revised the claim construction standard for interpreting
`claims in inter partes review. The Broadest Reasonable Construction standard will
`be replaced by the same claim construction standard applied in Federal district
`courts for all inter partes review petitions filed on or after November 13, 2018. 83
`Fed. Reg. 51,340, 51,359 (Oct. 11, 2018). The petition in this matter was filed on
`November 2, 2018; hence the Broadest Reasonable Construction standard applies.
`
`
`
`4
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`

`

`
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`BRC requires “construction in light of the specification of the patent in
`
`which it appears.” Cuozzo Speed Techs., LLC v. Lee, __ U.S. __, 136 S. Ct. 2131,
`
`2142 (2016) (quoting 37 CFR § 42.100(b)).
`
`Further, the BRC standard requires that “words of the claim must be given
`
`their plain meaning, unless such meaning is inconsistent with the specification and
`
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
`
`2016).
`
`The entire claim must be considered when interpreting terms, because
`
`“[c]onstruing individual words of a claim without considering the context in which
`
`those words appear is simply not ‘reasonable’.” Trivascular, supra, 812 F.3d at
`
`1062. Thus, any construction or interpretation must be reasonable in view of the
`
`full claim language and the written description. In re Hodges, 882 F.3d 1107,
`
`1115 (Fed. Cir. 2018) (“The Board's strained interpretation of “signal” is therefore
`
`unreasonably broad and inconsistent with the … application. As such, it does not
`
`accord with the broadest reasonable interpretation standard”) (citing In re Smith
`
`Int'l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (stating that “the Board cannot
`
`construe the claims so broadly that its constructions are unreasonable under general
`
`claim construction principles,” and that giving claim terms “a strained breadth in
`
`the face of the otherwise different description in the specification [is]
`
`unreasonable”).
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`5
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`

`
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`In short, proper construction “‘cannot be divorced from the specification and
`
`the record evidence,’ and ‘must be consistent with the one that those skilled in the
`
`art would reach.’” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`Cir. 2015).
`
`B. Construction of Specific Terms
`
`Patent Owner adopts the following claim construction arguments for
`
`purposes of this Preliminary Response. In the event trial is instituted in this matter,
`
`Patent Owner reserves the right to revise and extend its arguments on claim
`
`construction.
`
`1.
`
`slots
`
`The word “slots” appears frequently in the written description and claims of
`
`the ‘578 Patent. For example, “The method includes steps of preparing bamboo
`
`strips from bamboo, forming a plurality of slots in each of the prepared bamboo
`
`strips penetrating through the bamboo strip . . ..” Ex. 1001, 2: 20-23, 2:34-37
`
`(emphasis added); see also id. 2:56-59; id. 4:42-44; id. 5: 62-67; id. 7:33-38. The
`
`word “slot” is not further defined in the specification. Patent Owner takes the
`
`position that “slot” should be given its plain and ordinary meaning. If further
`
`construction is required, Patent Owner points to dictionary definitions which
`
`describe the word “slot” as “a narrow, elongated depression, groove, notch, slit, or
`
`aperture.” Ex. 2001, p.3 (RANDOM HOUSE DICTIONARY OF THE ENGLISH
`
`
`
`6
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`

`

`
`
`LANGUAGE 1342 (1967)); see also Ex. 2002, p.3 (MERRIAM-WEBSTER’S
`
`COLLEGIATE DICTIONARY 1174 (11th ed. 2011).
`
`2.
`plurality of slots penetrating through said bamboo strip
`substantially in a direction of thickness defined by said bamboo
`strip – Claims 1 and 8
`
`Petitioners assert that the proper construction of a “plurality of slots
`
`penetrating through said bamboo strip substantially in a direction of thickness
`
`defined by said bamboo strip” is “the bamboo strip has slots extending through the
`
`entire thickness of each bamboo strip such that each bamboo strip is broken into a
`
`plurality of small strips connected with each other.” Petition, p. 10.
`
`Patent Owner proposes that the correct construction of a “plurality of slots
`
`penetrating through said bamboo strip substantially in a direction of thickness
`
`defined by said bamboo strip” is “the slots penetrate beyond the surface of the
`
`bamboo strip in a general direction of thickness defined by said bamboo strip.”
`
`Patent Owner’s construction of this term is supported by the claim language,
`
`the specification, the prosecution history of the ‘578 patent, and the plain meaning
`
`of the word “slots”. The claim language itself does not mandate that the slot go
`
`through the entire thickness of the bamboo strip, much less requiring the qualifier
`
`“such that each bamboo strip is broken into a plurality of small strips connected to
`
`each other” for which Petitioners advocate. In fact, during prosecution, the
`
`Examiner explicitly stated that the claim language does not mandate that the slot
`
`
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`7
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`

`
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`penetrate through the entirety of the strip. Specifically, in the Office Action of
`
`March 19, 2013, the Examiner explicitly stated: “The instant claim language only
`
`calls for penetration through the bamboo strips and not penetration through the
`
`entire thickness of the strips.” Ex. 1002, p. 178 (emphasis added). Thus, the
`
`Examiner’s own interpretation of this claim language explicitly conflicts with
`
`Petitioners’ proposed definition. Petitioners’ construction should be rejected for
`
`this reason alone.
`
`
`
`In addition, the specification also supports Patent Owner’s
`
`construction. Specifically, the broad disclosure of ‘578 patent does not specify that
`
`the slots go completely through the entire bamboo strip. See Ex. 1001, 2:8- 45.
`
`Instead, Petitioners’ interpretation is taken directly from a preferred embodiment of
`
`the invention. According to the specification:
`
`With the bamboo scrimber according to embodiments of the invention,
`each bamboo strip may be broken into a plurality of smaller bamboo
`strips connected with each other by rolling with toothed rolls, thus
`increasing the surface area of the bamboo strip to be impregnated with
`the adhesive, increasing the adhesive content, reducing rigidity of the
`bamboo strip, and avoiding non-uniform density and rough surfaces of
`the bamboo scrimber due to insufficient contact and insufficient
`softening of the bamboo strips when pressed. Moreover, the thickness
`of the bamboo strip may be selected in a very wide range, for
`example, about 1.0 mm to about 4.5 mm so that the source of bamboo
`for making the bamboo scrimber may be wide, and the process for
`forming the bamboo scrimber into the bamboo strips is simple.
`
`
`Ex. 1001, 2:56-3:2 (emphasis added). It is hornbook patent law that claims are not
`
`
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`8
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`

`

`
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`limited to the preferred embodiments of the invention. Liebel-Flarsheim Co., v.
`
`Medrad, Inc., 358 F.3d 898, 906–07 (Fed. Cir. 2004). That is true even if the
`
`specification discloses only one embodiment. Id. Moreover, the specification
`
`explicitly indicates that the slots “may” penetrate to such an extent that the strip
`
`may be broken into a plurality of smaller bamboo strips. It does not specify that
`
`the slots “must” penetrate that deeply or that the slots necessarily result in smaller
`
`bamboo strips. Moreover, the plain and ordinary meaning of the word “slots”
`
`encompasses “narrow, elongated depression[s]” or “groove[s]” in addition to
`
`“slit[s]” or “aperture[s].” See Ex. 2001, p.3.
`
`That the slots must not necessarily result in smaller bamboo strips is
`
`supported by the appearance of Figures 1 and 5. Figure 1 depicts a strip of bamboo
`
`(10) formed with slots (10a). Ex. 1001, Fig. 1. The drawing indicates that the strip
`
`retains its original shape and is not broken into smaller pieces depending on the
`
`locations of the slots. Further, Figure 5 illustrates the positioning of the bamboo
`
`strips formed with slots (10) in a mold prior to pressing. Ex. 1001, Fig. 5. The
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`strips are not illustrated as broken into smaller or narrower pieces, but appear intact
`
`in comparison with Fig. 1.
`
`3.
`a state of disorder in a cross-section defined by said bamboo
`scrimber – Claims 2 and 9
`
`Petitioner proposes that the broadest reasonable construction of “a state of
`
`
`
`9
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`

`

`
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`disorder in a cross-section defined by said bamboo scrimber” is “bamboo strips are
`
`overlapped partially and not arranged layer-by-layer.” Petition, p. 10. For
`
`purposes of this Preliminary Response, Patent Owner takes the position that
`
`construction of this term is unnecessary.
`
`V. THE SCOPE AND CONTENT OF THE PRIOR ART
`
`A. Li (Ex. 1004)
`
`Petitioners’Exhibit 1004 is Chinese Patent Application No. 200610021013.2
`
`of Helin Li, titled Production process of high density color darkened bamboo
`
`material, published on January 3, 2007 as Pub. No. CN 1887551 A, with an
`
`English translation provided by Morningside IP (hereinafter, “Li (Morningside)”).
`
`As a preliminary matter, the English-language translation of Li proffered by
`
`Petitioner is inaccurate.
`
`Patent Owner’s Exhibit 2003 is an English translation of Pub. No. CN
`
`1887551 A, with the natural language document and translation certificate,
`
`provided by SunIP (hereinafter, “Li (Sun)”). There are significant differences in
`
`the English translations found in Li (Morningside) and Li (Sun), which are material
`
`to a conclusion about what the natural language Li reference discloses.
`
`Li (Morningside) recites in the Abstract that the
`
`production process includes the following steps: (1) processing a
`bamboo material into bamboo strips, removing bamboo outer skin and
`dead bamboo inner skin, (2) cutting the bamboo strips into bamboo
`strands or rolled into cross-linked bamboo strand strip, (3) placing
`
`
`
`10
`
`

`

`
`
`the bamboo strand or bamboo strand strip into a charring tank at a
`pressure of 2 to 3 MPa and temperature of 100 to 300 °C for 2 to 3
`hours, (4) soaking the thermal decomposed and charred bamboo
`strand or bamboo strand strip into an adhesive, (5) placing the
`soaked bamboo strand or bamboo strand strip into a mold under a
`high pressure for molding, so as to form a cured product. The present
`invention can be used to produce various bamboo panel and bamboo
`board products.
`
`Ex. 1004 (Li (Morningside)), Abstract.
`
`By contrast, Li (Sun) recites in the Abstract that the
`
`process comprises the following steps: (1) processing bamboo
`material into bamboo strips, removing the green layer and dead
`yellow layer of the bamboo strips, (2) cutting the bamboo filament
`piece into bamboo filaments or rolling the bamboo filament piece
`into a bamboo filament piece in which bamboo filaments are
`vertically and horizontally linked, (3) placing the bamboo filament
`pieces or bamboo filaments in a charring tank at a pressure of 2 to 3
`MPa and temperatures of 100 to 300 °C and subjecting them to
`charring by heat decomposition for 2 to 3 hours, (4) dipping the
`bamboo filament pieces or bamboo filaments that have been
`charred by heat decomposition in gum, (5) placing the bamboo
`filament pieces or bamboo filaments that have been dipped in gum
`in a mold, so as to form a cured product under high pressure. The
`present invention can be used to produce various bamboo panels and
`bamboo batten products.
`
`
`Ex. 2003 (Li (Sun)), Abstract.
`
`Further, Li (Morningside) recites in the Claims:
`
`1. A production process of high density color darkened bamboo
`material, comprising the following steps:
`
`(1) processing a bamboo material into bamboo strips, removing
`bamboo outer skin and dead bamboo inner skin,
`
`
`
`
`11
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`

`
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`(2) cutting the bamboo strips into bamboo strands or rolled into
`cross-linked bamboo strand strip,
`
`(3) placing the bamboo strand or bamboo strand strip into a charring
`tank at a pressure of 2 to 3 MPa and temperature of 100 to 300 °C for
`2 to 3 hours,
`
`(4) soaking the thermal decomposed and charred bamboo strand or
`bamboo strand strip into an adhesive,
`
`(5) placing the soaked bamboo strand or bamboo strand strip into a
`mold under a high pressure for molding, so as to form a product with
`solidified shape.
`
`Ex. 1004, p. 3, whereas, Li (Sun) recites in the Claims:
`
`
`1. A method of preparing charred high-density bamboo, comprising
`the following steps:
`
`(1) processing bamboo material into bamboo strips, removing
`
`the green layer and dead yellow layer of the bamboo strips,
`
`(2) cutting the bamboo strip into bamboo filaments or rolling
`
`the bamboo strip into a bamboo filament piece in which the
`bamboo filaments are vertically and horizontally linked,
`
`(3) placing the bamboo filament pieces or bamboo filaments
`
`in a charring tank at a pressure of 2 to 3 MPa and temperatures of 100
`to 300 °C and subjecting them to charring by heat decomposition
`for 2 to 3 hours,
`
`(4) dipping the bamboo filament pieces or bamboo filaments
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`that have been charred by heat decomposition in gum, and
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`(5) placing the bamboo filament pieces or bamboo filaments
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`that have been dipped in gum in a mold, so as to form a cured product
`under high pressure.
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`Ex. 2003 (Li (Sun)), p. 2.
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`Bamboo filament (or fiber, strand) and bamboo strip are clearly
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`distinguished in the art. Petitioners’ expert, Dr. Felix Böck, carefully describes the
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`difference between bamboo strips (or splits), bamboo fiber bundles (produced by
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`“squeeze[ing] or crush[ing] bamboo splits”), and bamboo strand. See Ex. 1003, ¶¶
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`28-30; Fig. 2, p. 10:
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`
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`The ‘578 Patent’s written description also distinguishes bamboo strip from
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`bamboo strand (also known as “filament”). See Ex. 1001, 1:26-31. In discussing
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`the related art, the ‘578 Patent recites two distinct processes for manufacturing
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`bamboo scrimber by first forming either bamboo strips or bamboo strands.
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`A bamboo scrimber (generally also referred to as "strand woven
`bamboo" or "recombined bamboo" in the art) is generally made by
`cutting bamboo into bamboo tubes, splitting the bamboo tubes,
`forming the split bamboo into bamboo strips (also referred to as
`"bamboo sliver") or strands (also referred to as "bamboo filament"),
`drying the bamboo strands or strips, dipping the bamboo strands or
`strips into an adhesive, assembling the adhesive-impregnated bamboo
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`strands or strips in a longitudinal direction, and hot-pressing the
`assembled bamboo strands or strips.
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`Ex. 1001, 1:26-35 (emphasis added); compare id. 1:38-39 (“In a conventional
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`method, the bamboo is manufactured into bamboo strands.”) with id. 1:45-46 (“In
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`another conventional method, the bamboo is manufactured into bamboo strips.”).
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`Moreover, during prosecution of the ‘578 Patent, the claimed invention was clearly
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`distinguished from prior art describing formation of bamboo fiber board composite
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`using bamboo strands. See Ex. 1002, p. 36 (“It is known that strip is different from
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`the strand.”). Thus, bamboo strand and bamboo strip are distinct in the art.
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`
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`The Li reference describes the conversion of bamboo strips into bamboo
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`filaments or strands (“cutting the bamboo strip into bamboo filaments”) or cross-
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`linked bamboo filaments or strands (“rolling the bamboo strip into a bamboo
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`filament piece”). Ex. 2001 (Li (Sun)), p. 2. These are what Petitioner’s expert
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`describes as “crushed bundles” (Ex. 1003, ¶29), which are distinct from the
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`bamboo strips formed with a plurality of slots described in the ‘578 Patent.
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`Li does not describe forming slots in bamboo strips. The word “slot” does
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`not appear in the translations of Li proffered by either Petitioner or Patent Owner.
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`Moreover, the conversion of bamboo strips into filaments (strands) or filament
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`pieces would preclude the presence or formation of slots. See, e.g. Ex. 1002, p. 36
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`(“If the scrimber is formed by strands, it does not need to and is impossible to form
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`slots in the strands.”).
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`Li discloses “charring of the bamboo strands or bamboo strand piece.” Li
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`describes thermal-decomposition-charring to increase the hardness of the product,
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`to eliminate the stress of the product so as to increase the strength and stability of
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`the product, and to achieve the desired color of the product by adjusting the
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`parameters of the thermal-decomposition-charring. Ex. 1004, p.10. That is, the
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`thermal-decomposition-charring is intended to change the color of the product.
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`The Forestry-Industrial Standard of China (LY/T 1660-2006) gives the definition
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`of “color darkening” which is a process of color darkening treatment to the
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`bamboo material under conditions of high temperature and high humidity. See Ex.
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`1009, p. 22.
`
`B.
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`Fujiwara (Ex. 1005)
`
`Petitioners’ Exhibit 1005 is Japanese unexamined patent application No.
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`2004-291140 of Noboru Fujiwara, titled Lumber Made from Bamboo, and
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`Manufacturing Method Thereof, published on April 20, 2006 as Pub. No. P2006-
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`103088A (hereinafter, “Fujiwara”). Fujiwara describes a process for making “a
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`material made from bamboo obtained through press molding after immersing a
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`large number of thin bamboo pieces in a binding agent solution.” Fujiwara [0006].
`
`The manufacturing method for the material made from bamboo
`according to the present invention includes: a step for cutting from
`Mousou bamboo material, in the lengthwise direction, to cut into a
`thin piece, with the length of no greater than 3 m, the width of
`between 1.4 and 4.5 cm, and a thickness between 0.1 and 0.3 cm; a
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`step for pressing the cut thin piece so that the fibers in the longitudinal
`direction (lengthwise direction) are not severed, but the fibers in the
`crosswise direction (the width direction) are severed partially to
`separate easily in the crosswise direction; a step for drying the thin
`piece to eliminate water content; a step for immersing, in a binding
`agent solution, the thin piece from which the water content has been
`eliminated; a step for drying the thin piece to which the binding agent
`is absorbed and adhered; and a step for pressing and molding the dried
`thin piece in a press mold.
`
`Ex. 1005 (Fujiwara), [0010].
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`Fujiwara does not describe forming slots in bamboo strips. The word “slot”
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`does not appear in Fujiwara. Fujiwara discloses “pressing the cut thin piece [of
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`bamboo] so that the fibers in the longitudinal direction (lengthwise direction) are
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`not severed, but the fibers in the crosswise direction (the width direction) are
`
`severed partially to separate easily in the crosswise direction.” Id. at [Claim 3],
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`[0010]; see also id., [0018]. Thus, Fujiwara describes separating the fibers of
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`bamboo strips in a horizontal direction, forming pieces of bamboo consisting of
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`cross-linked strands or filaments. As already discussed in connection with Li, this
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`description is inconsistent with bamboo strips formed with slots–slots are, in their
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`plain meaning, “narrow, elongated depression[s]” or “groove[s]” in addition to
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`“slit[s]” or “aperture[s].” See Ex. 2001, p.3.
`
`C.
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`Plaehn (Ex. 1006)
`
`Petitioners’ Exhibit 1006 is U.S. Patent No. 5,543,197 to Jay Plaehn, titled
`
`Parallel Randomly Stacked, Stranded, Laminated Bamboo Boards and Beams,
`
`
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`filed February 18, 1994 (hereinafter, “Plaehn”). Plaehn describes “composite
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`bamboo beam for use as a substitute for natural wood beams.” Plaehn (Abstract).
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`More specifically, the bamboo would be harvested, split open,
`and dried in long strips ranging from 4 to 34 inch in width to
`approximately 5 to 20 feet in length. The strands can be as short as 5
`feet or less in small percentages. The dri