Paper 7
`Trials@uspto.gov
`Entered: August 20, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ARMASPEC, INC.,
`Petitioner,
`v.
`J & K IP ASSETS, LLC,
`Patent Owner.
`
`Case IPR2019-00711
`Patent 8,800,424 B2
`__________________________
`
`Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: August 20, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ARMASPEC, INC.,
`Petitioner,
`v.
`J & K IP ASSETS, LLC,
`Patent Owner.
`
`Case IPR2019-00711
`Patent 8,800,424 B2
`__________________________
`
`Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
`JOHN D. HAMANN, Administrative Patent Judges.
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2019-00711
`Patent 8,800,424 B2
`INTRODUCTION
`I.
`Armaspec, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1, 2, and 6–14 of U.S. Patent No.
`8,800,424 B2 (Ex. 1001, “the ’424 patent”) pursuant to 35 U.S.C. § 311.
`J & K IP Assets, LLC (“Patent Owner”) filed a Patent Owner Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes
`review may be instituted if “the information presented in the petition filed
`under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). On
`April 24, 2018, the Supreme Court held that a decision to institute under 35
`U.S.C. § 314 may not institute on fewer than all claims challenged in the
`Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon consideration of the Petition and the Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that Petitioner would prevail in establishing the unpatentability of
`at least one challenged claim of the ’424 patent. Accordingly, we institute
`inter partes review on all of the challenged claims based on all of the
`grounds identified in the Petition.
`
`A. Related Matter
`The parties identify a district court case entitled J & K IP Assets, LLC
`v. Armaspec, Inc., Case No. 3:17-cv-07308-WHO, in the U.S. District Court
`for the Northern District of California, as a matter that may affect or would
`be affected by a decision in this proceeding. Pet. 3, Paper 4, 2.
`
`2
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`IPR2019-00711
`Patent 8,800,424 B2
`B. The Challenged Patent (Ex. 1001)
`The ’424 patent relates to reducing undesired noise when using an
`auto-loading firearm (e.g., a semi-automatic rifle). Ex. 1001, 1:50–54,
`2:12–14. In particular, the ’424 patent relates to reducing “a loud and
`annoying buzzing sound . . . after each round is fired” that is caused by the
`firearm’s return spring rubbing against the walls of the tube containing it.
`E.g., id. at 1:50–54, 1:64–2:2. To this end, the ’424 patent discloses an
`improved “captured spring assembly” that “constrain[s] movement of the
`. . . return spring of a firearm by capturing the spring on an inner rod,”
`thereby reducing the noise from the spring. Id. at 2:2–8.
`Figure 1B,1 shown below, illustrates an embodiment of the ’424
`patent’s improved captured spring assembly. Id. at 3:17–18.
`
`Figure 1B “is a side sectional view of [a] captured spring assembly,”
`
`in accordance with the invention of the ’424 patent. Id. at 2:48–52. As
`shown, the captured spring assembly includes, among other things, (i) guide
`
`
`
`
`1 Shown as annotated by Petitioner. Pet. 10.
`
`3
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`IPR2019-00711
`Patent 8,800,424 B2
`rod 12; (ii) buffer 22, which is slidably mounted on the front2 of guide rod
`12; (iii) shock absorber 58 (also referred to as a spring stop), which is
`affixed to the rear of guide rod 12; and (iv) bolt return spring 52, which is a
`coil spring that fits tightly around guide rod 12 and is sandwiched between
`buffer 22 and shock absorber 58. Id. at 2:31–33, 3:20–24, 4:15–18.
`
`Figure 3B, shown below, illustrates the ’424 patent’s captured spring
`assembly installed in a firearm. Id. at 4:59–63.
`
`
`
`Figure 3B is a top sectional view of the captured spring assembly
`
`installed within extension tube 114, which is threaded to the firearm’s upper
`receiver 92. Id. at 2:59–65, 4:29–30; see also id. at 4:35–37 (disclosing that
`threaded bore 112 in upper receiver 92 receives extension tube 114’s
`exterior threads 126). Also shown is bolt carrier 106, which is “a tubular
`object” that slides within upper receiver 92 and extension tube 114. Id. at
`4:40–41, 4:64–65, Fig. 3B.
`
`
`2 The ’424 patent discloses that “‘front’ or ‘forward’ means it is in the
`direction towards the muzzle of the firearm” (i.e., the end of the firearm’s
`barrel from which bullets exit), while “‘rear’ or ‘rearward’ means in the
`direction away from the muzzle of the firearm.” Ex. 1001, 5:22–26. We
`also use this nomenclature when discussing the prior art.
`
`4
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`IPR2019-00711
`Patent 8,800,424 B2
`
`Figure 3B shows bolt carrier 106 in the “out of battery position” (i.e.,
`at its rearward most position). Id. at 4:61–65. In this position, the rear 110
`of bolt carrier 106 has pushed buffer 22 (shown as its constituents slider 28,
`O-rings 26, weights 24, and snap ring 44) to its rearward most position,
`“fully compressing . . . bolt return spring 52 between . . buffer [22] and . . .
`shock absorber 58.” Id. at 5:3–6, Fig. 3B; see also id. at 4:43–45, 4:64–65.
`Bore 128 in bolt carrier 106 receives the front 14 of guide rod 12 to allow
`for this rearward movement of bolt carrier 106 into extension tube 114. Id.
`at 4:65–5:3.
`
`“[T]he resistance of bolt return spring [52] act[s] to slow the rearward
`movement of . . . bolt carrier” 106 and buffer 22. Id. at 5:6–8. Shock
`absorber 58, which includes resilient portion 60 that absorbs the impact of
`buffer 22, stops the rearward motion of buffer 22. Id. at 3:60–61, 5:8–14.
`Once the rearward movement is stopped, “bolt return spring 52 urges . . .
`buffer 22 against . . . rear 110 of . . . bolt carrier 106 and pushes . . . bolt
`carrier [106] forward to return bolt carrier 106 to the in battery position.” Id.
`at 5:8–12.
`
`C. The Challenged Claims
`Petitioner challenges claims 1, 2, and 6–14 of the ’424 patent, of
`which claims 1 and 10 are independent claims. Claims 1 and 10 are
`illustrative of the challenged claims and are reproduced below:
`
`1.
`A buffer assembly for a firearm, the assembly
`comprising:
`
`an elongated rod having a forward end and a rearward end;
`
`a cylindrical buffer that defines a buffer bore that receives
`the rod and is operable to reciprocate between a forward battery
`position and a rearward retracted position;
`
`a coil spring that encompasses the rod;
`
`5
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`IPR2019-00711
`Patent 8,800,424 B2
`
`the buffer bore receiving a forward portion of the spring;
`
`a resilient spring stop attached to the rearward end of the
`rod, the spring stop having a diameter larger than the spring
`diameter;
`
`wherein the resilient spring stop defines a central spring
`stop bore that receives a rear portion of the spring;
`
`wherein the forward end of the rod has a limit element
`having a head that is larger in diameter than the rod;
`
`wherein the buffer has an internal limit element that is
`larger in diameter than the rod;
`
`wherein the internal limit element has at least one portion
`that is smaller in diameter than the limit element head, but also
`larger in diameter than the rod;
`
`the spring stop having a limit spring support surface and
`the buffer having a buffer spring support surface, each spring
`support surface supporting a respective end of the spring, and
`facing each other;
`
`wherein when the buffer is in the rearward retracted
`position it contacts the spring stop such that the spring is entirely
`contained by the central spring stop bore and the buffer bore
`when the buffer is in the rearward retracted position.
`Ex. 1001, 5:48–6:9.
`
`10. A buffer assembly for a rifle having a bolt carrier
`having a rear end and defining an aperture, the assembly
`comprising:
`
`a rod having a forward end and a rearward end;
`
`wherein the aperture of the bolt carrier receives the
`forward end of the rod when the bolt carrier is in a rearward
`retracted position;
`
`a movable buffer that defines an aperture that receives the
`forward end of the rod and is operable to reciprocate between a
`forward battery position and a rearward retracted position;
`
`the buffer having a forward end abutting the rear end of
`the bolt carrier;
`
`a coil spring that encompasses the rod;
`
`wherein the forward end of the rod has a limit element
`having a head that is larger in diameter than the rod;
`
`6
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`IPR2019-00711
`Patent 8,800,424 B2
`
`wherein the buffer has an internal limit element that is
`larger in diameter than the rod; and
`
`wherein the internal limit element has at least one portion
`that is smaller in diameter than the limit element head, but also
`larger in diameter than the rod.
`
`Ex. 1001, 6:42–61.
`
`
`
`§ 103(a) 10
`§ 103(a) 10
`§ 103(a) 11
`
`§ 103(a) 11
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Basis3 Challenged Claim(s)
`1. Seecamp4 and Woodcock5
`§ 103(a) 1 and 6–9
`2. Seecamp, Woodcock, and
`§ 103(a) 2
`Yates6
`3. Bushmaster7 and Seecamp
`4. Bushmaster and Yates
`5. Bushmaster, Seecamp, and
`Gwinn8
`6. Bushmaster, Yates, and
`Gwinn
`7. Bushmaster, Seecamp,
`Gwinn, and Woodcock
`8. Bushmaster, Yates, Gwinn,
`and Woodcock
`
`§ 103(a) 12–14
`
`§ 103(a) 12–14
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’424
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA versions of the statutory basis for unpatentability.
`4 U.S. Patent No. 4,201,113 (issued May 6, 1980) (Ex. 1002, “Seecamp”).
`5 U.S. Patent No. 4,522,107 (issued June 11, 1985) (Ex. 1003, “Woodcock”).
`6 U.S. Patent No. 4,344,352 (issued Aug. 17, 1982) (Ex. 1004, “Yates”).
`7 Bushmaster Operating and Safety Instructional Manual, Bushmaster
`Firearms, Inc., (rev. 2005) (part no. BFIMANA20P) (Ex. 1005,
`“Bushmaster”).
`8 U.S. Patent No. 6,829,974 B1 (issued Dec. 14, 2004) (Ex. 1007, “Gwinn”).
`
`7
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`IPR2019-00711
`Patent 8,800,424 B2
`Pet. 7–8, 13–45. Petitioner submits the Declaration of Richard R. Kennedy
`(Ex. 1013) in support of its arguments.
`
`II.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`To determine whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1,
`17 (1966). In assessing the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.
`Petitioner argues a person of ordinary skill in the art at the time of the
`invention of the ’424 patent would “(1) [have] be[en] a certified armorer
`with at least three years of experience or a gunsmith, or (2) have [had] an
`associate of science in firearms technology, gunsmithing, or firearms repair
`and general gunsmithing.” Pet. 12 (citing Ex. 1013 ¶ 21). Petitioner does
`not explain what experience or education is required for certification as an
`armorer or to be a gunsmith. Id. Nor does Petitioner address why a degree
`specifically concerning firearms or gunsmithing is required, but a degree in a
`broad, related field (e.g., mechanical engineering) would be insufficient,
`even if coupled with relevant experience. Id.
`Patent Owner argues that a person of ordinary skill in the art would
`have included “(1) a person with a bachelor’s degree in mechanical
`engineering, or a related field, and one year of experience in designing or
`
`8
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`IPR2019-00711
`Patent 8,800,424 B2
`manufacturing firearms and/or firearm components, or (2) a person with at
`least four years of experience in designing or manufacturing firearms and/or
`firearm components.” Prelim. Resp. 14. Patent Owner cites no evidence to
`support its definition. Id.
`Apart from the noted deficiencies we identify above, we do not
`discern a material difference between the assessments advanced by the
`parties, nor does either party premise its arguments exclusively on its
`assessment of the level of skill in the art. Moreover, Petitioner’s declarant,
`Mr. Kennedy, appears to meet or exceed both parties’ assessments
`(see Ex. 1013 ¶¶ 8–19, Ex. A), and either assessment of the level of skill in
`the art is consistent with the ’424 patent and the prior art of record. We,
`therefore, adopt Petitioner’s assessment and apply it to our obviousness
`evaluation below, but note that our conclusions would be the same under
`Patent Owner’s assessment.
`
`III. CLAIM CONSTRUCTION
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].” See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,343–44 (Oct. 11, 2018) (to be codified at 37 CFR pt. 42). Under Phillips,
`the words of a claim are generally given their “ordinary and customary
`meaning,” which is the meaning they would have to a person of ordinary
`
`9
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`IPR2019-00711
`Patent 8,800,424 B2
`skill in the art at the time of the invention, in light of the specification and
`prosecution history. See Phillips, 415 F.3d at 1312–13.
`The parties do not explicitly identify any claim terms requiring
`explicit construction. Pet. 12; Prelim. Resp. 15. For purposes of institution,
`and after review of the current record, we conclude that no express claim
`construction is necessary to determine whether to institute review of the
`challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’”).
`
`IV. PRINCIPLES OF LAW
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness, if present.9 See Graham, 383 U.S. at 17–18. When
`evaluating a claim for obviousness, we also must “determine whether there
`was an apparent reason to combine the known elements in the fashion
`
`
`9 Patent Owner does not present arguments or evidence of such objective
`evidence of non-obviousness. See generally Prelim. Resp.
`
`10
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`IPR2019-00711
`Patent 8,800,424 B2
`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)).
`
`V. ALLEGED OBVIOUSNESS OVER SEECAMP AND WOODCOCK
`Petitioner argues that the combination of Seecamp and Woodcock
`renders claims 1 and 6–9 of the ’424 patent obvious under 35 U.S.C.
`§ 103(a). Pet. 13–28. We focus our analysis below on independent claim 1
`because Patent Owner’s Preliminary Response only addresses claim 1, and
`does not address separately any of the other challenged claims for this
`asserted ground. For the reasons that follow, we determine that Petitioner
`establishes a reasonable likelihood that it would prevail in showing that
`claim 1 would have been obvious to one of ordinary skill in the art in view
`of the combined teachings of Seecamp and Woodcock.
`
`A. Summary of Seecamp
`Seecamp relates to an improved return spring assembly “for slide-type
`
`automatic pistols in which a breech-member compresses a coil spring as it
`moves out of . . . battery position and is returned to battery by the spring.”
`Ex. 1002, 1:8–13, 2:68–3:1. Figure 1,10 shown below, illustrates a return-
`spring assembly in accordance with Seecamp’s invention.
`
`
`10 Shown as annotated by Petitioner. Pet. 14.
`
`11
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`IPR2019-00711
`Patent 8,800,424 B2
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`
`
`Figure 1 “is a longitudinal sectional view of a portion of a slide-type
`
`automatic pistol [in the battery position], . . . incorporating one form of [a]
`return-spring assembly of . . . [Seecamp’s] invention.” Ex. 1002, 3:66–4:2.
`As shown, Seecamp’s return-spring assembly includes, among other things,
`(i) guide rod 56; (ii) coupling sleeve 38, which is slidably mounted on the
`front of guide rod 56; (iii) positioning plate 54, which is affixed to the rear
`of guide rod 56; and (iv) inner spring 36,11 which is a coil spring that fits
`around guide rod 56 and is sandwiched between coupling sleeve 38 and
`positioning plate 54. Id. at 1:9–13, 5:32–37, 5:56–67, 6:14–18, Fig. 1. After
`a round is fired, coupling sleeve 38 moves to its rearward most position,
`causing inner spring 36 to fully compress “against the bottom of the cup of
`positioning plate 54.” Id. at 5:49–60. “The other end of [inner] spring 36
`
`
`11 Seecamp discloses using two springs (an inner spring and an outer spring)
`for more spring action in a smaller amount of space. E.g., Ex. 1002,
`2:67–3:5. We focus our discussion on Seecamp’s inner spring 36 as the
`parties do.
`
`12
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`IPR2019-00711
`Patent 8,800,424 B2
`presses against the internal spring-retaining shoulder 42 of [coupling] sleeve
`38.” Id. at 5:63–64. Inner spring 36 subsequently de-compresses, returning
`the firearm to the battery position. Id. at 1:8–13.
`
`B. Summary of Woodcock
`Woodcock relates to a semi-automatic firearm and, in particular, to
`
`absorbing the recoil shock from the rearward movement of the firearm’s
`slide by cushioning the slide’s impact on the firearm’s frame. E.g., Ex.
`1003, 1:6–9. To that end, Woodcock discloses placing resilient material
`between the slide and frame to help absorb the recoil shock. E.g., id. at
`2:9–12. Figure 2,12 shown below, illustrates “a shock-absorbing recoil
`mechanism,” in accordance with Woodcock’s invention. Id. at 2:32–33.
`
`
`
`
`12 Shown as annotated by Petitioner. Pet. 26.
`
`13
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`IPR2019-00711
`Patent 8,800,424 B2
`
`Figure 2 “is a cross-sectional view of the shock-absorbing recoil
`mechanism mounted in” “a conventional semiautomatic firearm.” Id. at
`2:28–32. Woodcock’s recoil mechanism comprises “a pair of specially
`configured plates 40, 42 positioned on opposite sides of a similarly shaped
`sheet of resilient material 44.” Id. at 3:7–10. As shown, the recoil
`mechanism13 is secured to the rear end of guide rod 46 via screw 54, which
`is threaded into the end of guide rod 46. Id. at 3:17–21.
`
`Also shown is cap 60 which is inserted in stirrup 62 formed at the
`front of slide 20. Id. at 3:43–44. Stirrup 62 prevents cap 60 from moving
`forward out of slide support 18 of the firearm’s frame. Id. at 3:44–46. The
`front end of guide rod 46 projects through a bore in cap 60 to allow slide 20
`(and stirrup 62, attached thereto, and cap 60) to move rearward during recoil
`while guide rod 46 remains stationary. Id. at 3:48–51.
`
`Rather than allowing cap 60 abruptly to contact shoulder 67 of the
`firearm’s frame 12 when slide 20 recoils, Woodcock places its recoil
`mechanism between cap 60 and shoulder 67 “to absorb some of the recoil
`shock and spread it over a longer duration.” Id. at 3:67–4:3, 3:57–60.
`Woodcock also discloses that by using forward plate 40 instead of merely
`allowing the cap 60 to directly contact resilient sheet 44, the recoil force can
`be spread over a relatively large area to maximize the shock-absorbing
`characteristics. Id. at 4:4–7.
`
`
`13 Woodcock teaches that screw 54 can be large headed, eliminating the need
`for locator washer 50. Ex. 1003, 3:34–38. Likewise, collar 52, which
`relates to outer spring 58, may be eliminated in practice. Id. at 3:25–31.
`
`14
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`C. Challenged Claim 1
`1. Petitioner’s Arguments
`Petitioner relies on Seecamp for disclosing claim 1’s limitations,
`except for the claimed “resilient spring stop” for which Petitioner relies on
`Woodcock. See Pet. 16–25.
`
`a. Seecamp’s Teachings
`Petitioner argues that Seecamp discloses the claimed “buffer assembly
`
`for a firearm” having (i) an elongated rod (guide rod 56) having a forward
`end and a rearward end; (ii) a cylindrical buffer (coupling sleeve 38) which
`is operable to reciprocate between a forward battery position and a rearward
`retracted position; (iii) a coil spring (inner spring 36) that encompasses guide
`rod 56; and (iv) a spring stop (positioning plate 54) at the rearward end of
`guide rod 56, and having a diameter larger than inner spring 36. See id. at
`16–19 (citing Ex. 1002, Figs. 1–3, 5:32–33).
`
`Petitioner argues Seecamp’s coupling sleeve 38 has a bore that
`receives the front of guide rod 56 and the front of inner spring 36. Id. at 18
`(citing Ex. 1002, Figs. 1–3, 5:32–33). At the other end of the assembly,
`Seecamp’s positioning plate 54 has a bore that receives the rear of guide rod
`56 and the rear of inner spring 36, according to Petitioner. Id. at 21 (citing
`Ex. 1002, Figs. 1–2, 5:32–37). Petitioner further argues that the surfaces of
`positioning plate 54 and coupling sleeve 38, which support the ends of inner
`spring 36, face each other. Id. at 23–24 (citing Ex. 1002, Figs. 1–2,
`5:32–37). According to Petitioner, Seecamp discloses that, when coupling
`sleeve 38 is in its rearward retracted position, coupling sleeve 38 contacts
`positioning plate 54, so that inner spring 36 is entirely contained by the
`
`15
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`IPR2019-00711
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`bores of coupling sleeve 38 and positioning plate 54. Id. at 24 (citing Ex.
`1002, Fig. 2).
`
`In addition, Petitioner argues that Seecamp discloses a limit element
`(retaining head 58) on the forward end of guide rod 56 that is larger in
`diameter than guide rod 56. Id. at 21 (citing Ex. 1002, Figs. 1–2). Petitioner
`also argues that Seecamp’s coupling sleeve 38 has an internal limit element
`(shoulder 42) that is larger in diameter than guide rod 56. Id. at 22 (citing
`Ex. 1002, Figs. 1–2). Petitioner argues that Seecamp’s shoulder 42 also has
`a portion that is smaller in diameter than retaining head 58, but larger in
`diameter than guide rod 56. Id. at 23 (citing Ex. 1002, Figs. 1–2).
`
`b. Woodcock’s Teachings
`Petitioner argues Woodcock discloses a resilient spring stop
`
`(combination of front plate 40, rear plate 42, resilient sheet 44, locator
`washer 50, collar 52, and screw 54). Id. at 19 (citing Ex. 1003, Figs. 1–2,
`3:15–21). Woodcock’s resilient spring stop is a separate part from guide rod
`46, and is secured to the rear end of guide rod 46 by screw 54, according to
`Petitioner. Id.
`
`c. Combining Seecamp and Woodcock
`Petitioner argues it would have been obvious to a person of ordinary
`
`skill in the art “to combine the teachings of Seecamp and Woodcock to
`provide a resilient spring stop attached to a rearward end of a rod as taught
`by Woodcock.” Id. (citing Ex. 1013 ¶ 29).
`
`First, Petitioner argues that a “person of ordinary skill in the art would
`have been motivated to combine the teachings of Seecamp and Woodcock to
`achieve the claimed invention, and there would have been a reasonable
`expectation of success in doing so.” Id. at 20 (citing Ex. 1013 ¶¶ 30–31).
`
`16
`
`
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`Patent 8,800,424 B2
`Petitioner argues that, in fact, it was generally known “to one of ordinary
`skill in the art at the time the invention was made that manufacturing a
`spring stop and rod as a two-part assembly as taught by Woodcock reduces
`manufacturing costs as compared to a unitary, single piece assembly as
`taught by Seecamp.” Id. (citing Ex. 1013 ¶ 30). According to Petitioner,
`“[c]ombining Seecamp and Woodcock would have been no more than
`combining prior art elements according to known methods to yield
`predictable results for a person of ordinary skill in the art.” Id. (citing KSR,
`550 U.S. at 416).
`
`Second, Petitioner argues that substituting “a resilient spring stop
`attached to an end of a rod as taught by Seecamp for a spring stop and rod
`that is a unitary piece as taught by Woodcock is no more than a simple
`substitution of one known element for another known element.” Id. (citing
`Ex. 1013 ¶ 31). According to Petitioner, “[s]pring stops and rods are
`commonly manufactured individually and fastened together.” Id.
`Third, Petitioner relies on Woodcock,14 which discloses that its
`“shock-absorbing recoil mechanism may . . . be installed on a wide variety
`of semiautomatic firearms, . . . is relatively inexpensive to manufacture[,]
`. . . may be installed by individuals having relatively little training, and it
`markedly increases the shooting accuracy and life of semiautomatic
`firearms.” Id. (citing Ex. 1003, 5:9–14).
`
`
`
`14 Petitioner more pointedly addresses this reasoning to combine the
`teachings of Seecamp and Woodcock when discussing dependent claim 6,
`which requires that claim 1’s “resilient spring stop” comprises a resilient
`bushing. Pet. 26 (citing Ex. 1003, 3:67–4:7; Ex. 1013 ¶ 32). In our view,
`Petitioner’s reasoning for substituting claim 6’s resilient bushing into
`Seecamp likewise applies to claim 1’s resilient spring stop.
`
`17
`
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`IPR2019-00711
`Patent 8,800,424 B2
`2. Patent Owner’s Arguments
`a. Seecamp’s Spring Stop
`Patent Owner argues that “Petitioner does not explain how or why . . .
`Seecamp has a resilient spring stop.” Prelim. Resp. 16. Specifically, Patent
`Owner argues that Petitioner “never states what structural or design aspect of
`‘positioning plate (54)’ makes it ‘resilient,’” nor “explains how the materials
`of ‘positioning plate (54)’ make it resilient.” Id. (citing Pet. 19, 21).
`
`b. Entirely Contained
`Patent Owner argues that Seecamp does not teach that “when the
`buffer is in the rearward retracted position it contacts the spring stop such
`that the spring is entirely contained by the central spring stop bore and the
`buffer bore when the buffer is in the rearward retracted position,” as recited
`in claim 1. Id. at 26–27. More specifically, Patent Owner argues that,
`“when the ‘buffer’ of Seecamp is in the rearward retracted position, the
`spring 36 of Seecamp is entirely contained only within the buffer bore of
`coupling sleeve 38, and not within the buffer bore and the spring stop as
`required by the claim language.” Id. at 27 (citing Ex. 1002, Fig. 2).
`
`c. Combining Seecamp and Woodcock
`Patent Owner argues that Petitioner fails to “articulate specific
`
`reasoning, based on evidence of record,” to combine Seecamp’s and
`Woodcock’s relevant teachings. Prelim. Resp. 18–26. In particular, Patent
`Owner argues that the reasoning is insufficient because Petitioner fails to
`explain how Woodcock’s spring stop would be modified if substituted for
`Seecamp’s spring stop. Id. at 20–21. Patent Owner argues that adding
`Woodcock’s spring stop to Seecamp’s assembly is (i) not a “simple
`substitution” (i.e., Seecamp has a “one-piece, unitary spring stop structure”
`
`18
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`
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`IPR2019-00711
`Patent 8,800,424 B2
`while Woodcock’s “spring stop assembly ha[s] six parts”), and (ii) “many of
`the claim limitations would be missing from the resulting combination.” Id.
`at 19–21 (citing Ex. 1002, Fig. 1; Ex. 1003, Fig. 2).
`
`In addition, Patent Owner argues that Petitioner mischaracterizes
`Woodcock because “Woodcock does not disclose a ‘two-part assembly, but
`as the [Office] recognized during prosecution, a six-part assembly.” Id. at
`22 (citing Pet. 20; Ex. 1008, 5); see also Ex. 1008, 5 (“Woodcock teaches
`. . . [a] spring stop being the combination of elements 40, 42, 44, 50, 52, and
`54”). Patent Owner also argues that a person having ordinary skill in the art
`“would need to depart from the teachings related to the six-element spring
`stop assembly taught in Woodcock to achieve the resilient spring stop” of
`claim 1. Prelim. Resp. 21 (citing Ex. 1003, 4:7–10). Patent Owner argues
`that Woodcock teaches that such a departure from its teachings “is
`undesirable.” Id. at 21–22 (citing Ex. 1003, 4:3–7).
`
`Lastly, Patent Owner disputes Mr. Kennedy’s declaration testimony.
`Id. at 21, 23. In particular, Patent Owner argues that “[r]eplacing the unitary
`spring stop of Seecamp with Woodcock’s complex six-part spring stop
`assembly is unlikely to reduce manufacturing costs,” and that such an
`assertion is “contravened by basic common sense.” Id. at 23. Patent Owner
`also argues that Mr. Kennedy’s declaration testimony is conclusory. Id. at
`24–25.
`
`3. Preliminary Analysis
`Based upon our review of the current record and for purposes of
`
`institution, we discern no deficiency in Petitioner’s characterization of
`Seecamp and Woodcock, or in Petitioner’s reasoning as to why one of
`ordinary skill in the art would have been prompted to modify or combine the
`
`19
`
`
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`IPR2019-00711
`Patent 8,800,424 B2
`teachings of Seecamp with those of Woodcock. In addition, for purposes of
`institution, we accept Mr. Kennedy’s testimony concerning the relevant
`teachings of Seecamp and Woodcock, and the knowledge in the art.
`Accordingly, we determine that Petitioner has shown a reasonable likelihood
`that it would prevail on its assertion that one of ordinary skill in the art
`would have combined the teachings of Seecamp with those of Woodcock to
`render claim 1 obvious.
`At this stage of the proceeding, we find Patent Owner’s arguments
`provided in its Preliminary Response unavailing, for the reasons we provide
`below.
`
`a. Seecamp’s Spring Stop
`Patent Owner’s argument that “Petitioner does not explain how or
`why . . . Seecamp has a resilient spring stop” is misplaced. Prelim. Resp. 16
`(citing Pet. 19, 21). As we discuss above, Petitioner does not rely on
`Seecamp to teach the “resilient” aspect of the claimed spring stop, but rather
`more clearly relies on Woodcock’s teachings to account for this particular
`feature. See supra Sections C(1)(b–c). Under a proper obvious evaluation,
`we focus on the combined teachings of Seecamp and Woodcock, and
`preliminarily find that the combination teaches the claimed resilient spring
`stop. See, e.g., Ex. 1002, Figs. 1–2; Ex. 1003, Figs. 1–2, 3:15–21; see also
`In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
`obviousness cannot be established by attacking references individually
`where the rejection is based upon the teachings of a combination of
`references”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (finding the
`relevant inquiry is whether the claimed subject matter would have been
`
`20
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`IPR2019-00711
`Patent 8,800,424 B2
`obvious to those of ordinary skill in the art in light of the combined
`teachings of the references).
`
`b. Entirely Contained
`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s argument that Seecamp’s inner spring 36 is contained only within
`coupling sleeve 38’s bore. Seecamp’s Figure 2,15 shown below, illustrates
`Seecamp’s spring assembly in its rearward retracted position. Ex. 1002,
`4:3–4.
`
`
`Figure 2 “is a longitudinal sectional view of a portion of a slide-type
`automatic pistol,” which incorporates Seecamp’s return-spring assembly,
`“showing the slide in fully retracted position.” Id. at 3:66–4:2. As
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