Attorney Docket No. 269290-462991
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Northern Stamping, Co.,
`Petitioner,
`
`v.
`
`Horizon Global Americas Inc.,
`Patent Owner.
`
`______________
`
`Case IPR2021-01411
`Patent 10,589,585
`
`______________
`
`Expert Declaration of Steven Becker in Support of
`Petitioner’s Opposition to Motion to Amend
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`NSI - Exhibit 1028 - 0001
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`Northern Stamping, Co.,
`Petitioner,
`
`v.
`
`Horizon Global Americas Inc.,
`Patent Owner.
`
`______________
`
`Case IPR2021-01411
`Patent 10,589,585
`
`______________
`
`Expert Declaration of Steven Becker in Support of
`Petitioner’s Opposition to Motion to Amend
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`NSI - Exhibit 1028 - 0001
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`2.
`
`3.
`
`Page
`INTRODUCTION ........................................................................................... 1
`THE PROPOSED SUBSTITUTE CLAIMS ARE UNPATENTABLE
`UNDER 35 U.S.C. §§ 102, 103, & 112 .......................................................... 2
`A.
`All Limitations Of The Proposed Substitute Claims Are
`Disclosed By Withers ............................................................................ 2
`1.
`[21.1] “said pair of tubular members having a first,
`second, third and fourth end” ...................................................... 2
`[21.2] “said mid rail is permanently attached to said pair
`of tubular members as a one piece assembly” ............................ 3
`[21.6] “a first mounting flange attached to said first end,
`a second mounting flange attached to said second end, a
`third mounting flange attached to said third end, and a
`fourth mounting flange attached to said fourth end” .................. 5
`[21.7] “each of said mounting flanges extend along a
`same axis as said tubular member to which said mounting
`flange is attached” ....................................................................... 5
`[21.8] “a mounting aperture on each of said mounting
`flanges” ....................................................................................... 6
`[21.9] “said mounting flanges and mounting apertures
`configured to attach directly to a frame of a vehicle” ................ 7
`All Limitations Of The Proposed Substitute Claims Are Taught
`By Withers ’317 In View Of Fandrich ................................................ 8
`1.
`[21] “A hitch mounting system comprising” .............................. 8
`2.
`[21.1] “a pair of tubular members each having a cross-
`sectional shape a substantial portion of which is defined
`by an enclosed peripheral wall with a generally hollow
`section, said pair of tubular members having a first,
`second, third and fourth end” ...................................................... 9
`
`B.
`
`4.
`
`5.
`
`6.
`
`- i -
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`NSI - Exhibit 1028 - 0002
`
`
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`[21.2] “a mid rail attached to each of and between said
`pair of tubular members spacing said pair of tubular
`members apart, said mid rail is permanently attached to
`said pair of tubular members as a one piece assembly” ........... 13
`[21.3] “said mid rail having a socket capable of accepting
`a gooseneck hitch ball” ............................................................. 14
`[21.4] “a pair of receiving members attached with each of
`said pair of tubular members” ................................................... 15
`[21.5] “said receiving members configured to engage a
`leg of a fifth wheel hitch” ......................................................... 16
`[21.6] “a first mounting flange attached to said first end,
`a second mounting flange attached to said second end, a
`third mounting flange attached to said third end, and a
`fourth mounting flange attached to said fourth end” ................ 17
`[21.7] “each of said mounting flanges extend along a
`same axis as said tubular member to which said mounting
`flange is attached” ..................................................................... 18
`[21.8] “a mounting aperture on each of said mounting
`flanges” ..................................................................................... 19
`[21.9] “said mounting flanges and mounting apertures
`configured to attach directly to a frame of a vehicle” .............. 20
`[22] “The hitch mounting system of claim 21, wherein at
`least a pair of the receiving members are configured to
`accept a safety chain tie down.” ................................................ 21
`
`- ii -
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`NSI - Exhibit 1028 - 0003
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`
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`STATUTES
`35 U.S.C. § 102 .......................................................................................................... 2
`35 U.S.C. § 103 .......................................................................................................... 2
`
`- iii -
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`NSI - Exhibit 1028 - 0004
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`
`
`TABLE OF EXHIBITS
`Publication
`Date (unless
`otherwise
`noted)
`Dec. 4, 2017
`(filing date)
`
`Type of
`Prior Art
`(Pre-AIA
`35 U.S.C.)
`
`N/A
`
`Nov. 22, 2002 § 102(b)
`Jun. 23, 2009
`(filing date)
`Jan. 14, 1936
`Jul. 31, 2008
`(filing date)
`Oct. 30, 2009
`(filing date)
`
`§ 102(e)
`
`§ 102(b)
`
`§ 102(e)
`
`N/A
`
`Exhibit
`No.
`
`Description
`
`1001
`
`1011
`
`1012
`
`1014
`
`1022
`
`2006
`
`USPN 10,589,585 to Stanifer et al. (the
`’585 Patent) (Patent under Inter Partes
`Review)
`USPN 6,467,791 to Fandrich et al.
`(Fandrich)
`USPN 7,793,968 to Withers (Withers)
`
`USPN 2,027,990 to Lubbers (Lubbers)
`USPN 7,828,317 to Withers (Withers
`’317)
`U.S. Application No. 12/609,062 (’062
`Application)
`
`- iv -
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`NSI - Exhibit 1028 - 0005
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`
`
`I, Steven Becker, make the present Declaration in support of Petitioner’s
`
`Opposition to Patent Owner’s Motion to Amend. To that end, I hereby declare as
`
`follows:
`
`I.
`
`INTRODUCTION
`1.
`My background qualifications and Curriculum Vitae were previously
`
`set forth in my Declaration in Support of the Petition for Inter Partes Review
`
`(“First Declaration”). See Ex. 1007 at ¶¶ 1–11; Ex. 1008.
`
`2.
`
`In reaching my opinions in this declaration, I carefully reviewed
`
`Patent Owner’s Motion to Amend (“MTA”; Paper 21), as well as U.S. Patent No.
`
`10,589,585 (“’585 Patent”; Ex. 1001), U.S. Patent No. 7,793,968 to Withers
`
`(“Withers”; Ex. 1012), U.S. Patent No. 7,828,317 to Withers (“Withers ’317”; Ex.
`
`1022), U.S. Patent No. 6,467,791 to Fandrich (“Fandrich”; Ex. 1011), U.S. Patent
`
`No. 2,027,990 to Lubbers (“Lubbers”; Ex. 1014), and U.S. Application No.
`
`12/609,062 (“’062 Application”; Ex. 2006).
`
`3.
`
`My understanding of a person of ordinary skill in the art at the time of
`
`the alleged invention (“POSA”) of the ’585 Patent was set forth in my First
`
`Declaration. See Ex. 1007 at ¶¶ 14–19. My testimony and opinions in this
`
`Declaration are given from the perspective of a POSA at the time of the alleged
`
`invention of the ’585 Patent unless otherwise specifically indicated. This is true
`
`even if my statements are in the present tense.
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`- 1 -
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`NSI - Exhibit 1028 - 0006
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`
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`4.
`
`The legal assumptions set forth in my First Declaration are
`
`incorporated herein and apply equally to this Declaration. See Ex. 1007 at ¶¶ 20–
`
`26.
`
`5.
`
`Several of the figures in this Declaration are annotated and/or colored.
`
`While I did not personally create these figures, I worked with counsel for
`
`Petitioner to ensure the annotations and/or colors are accurate.
`
`II.
`
`THE PROPOSED SUBSTITUTE CLAIMS ARE UNPATENTABLE
`UNDER 35 U.S.C. §§ 102, 103, & 112
`A.
`All Limitations Of The Proposed Substitute Claims Are Disclosed
`By Withers
`I have already demonstrated how Withers anticipates original
`
`6.
`
`Challenged Claims 16, 17 and 19. See Ex. 1007, ¶¶ 152–170. Below, I show how
`
`Withers also teaches the limitations added to proposed substitute claim 21 over
`
`original claim 16, such that Withers also anticipates proposed substitute claim 21.
`
`1.
`
` [21.1] “said pair of tubular members having a first, second,
`third and fourth end”
`As shown in the annotated Figure 1 of Withers below, it is my
`
`7.
`
`understanding that the front and rear transverse bar portions 28, 30 (red) include
`
`“four tubular ends 20A-D.” Ex. 1012, 3:2–4, Fig. 1.
`
`- 2 -
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`NSI - Exhibit 1028 - 0007
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`
`
`Second end
`
`Fourth end
`
`First end
`
`Third end
`
`2.
`
`[21.2] “said mid rail is permanently attached to said pair of
`tubular members as a one piece assembly”
`My understanding of the term “assembly” is a collection of parts so
`
`8.
`
`assembled. Accordingly, the phrase “one piece assembly” is unclear to me, as an
`
`assembly necessarily requires a collection of pieces and thus not one piece.
`
`9.
`
`This limitation recites the mid rail being “permanently attached” to
`
`the pair of tubular members, and Patent Owner refers to the disclosure of
`
`“welding” in the specification of the ’062 Application as alleged support for this
`
`phrase. See MTA at 5; Ex. 2006 at 10 (¶ 26).
`
`10. However, it is my understanding that “permanently attached” is not
`
`limited to only welding, and, in some circumstances, a nut and bolt configuration
`
`can constitute permanent attachment. For example, Fandrich notes
`
`that
`
`conventional “mounting systems are typically bolted to the under frame of the
`
`vehicle through the use of essentially permanent fastener systems such as bolt and
`
`nut combinations….”). Ex. 1011, 1:17–22 (emphasis added).
`
`- 3 -
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`NSI - Exhibit 1028 - 0008
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`
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`11.
`
`Indeed, the specification of the ’062 Application states: “The mid rail
`
`or adapter plate 40 may be attached to the rails by any appropriate means, such as
`
`with fasteners, welding or the like.” Ex. 2006 at 10 (¶ 26). It is unclear to me
`
`whether
`
`the attachments other
`
`than welding also constitute “permanent
`
`attachment,” and the specification of the ’062 Application does not provide clarity
`
`on this point.
`
`12.
`
`Ignoring the lack of clarity with the phrase “one piece assembly,” it is
`
`my understanding that Withers discloses a central bridging portion 32 (green) that
`
`is a single component and is attached to the front and rear transverse bar portions
`
`28, 30 (red). Ex. 1012, 3:9–11, Fig. 1 (annotated version below).
`
`13.
`
`Ignoring the lack of clarity with the phrase “permanently attached,” it
`
`is my understanding is that the central bridging portion 32 is permanently attached
`
`(via, e.g., welding) to the front and rear transverse bar portions 28, 30.
`
`14.
`
`For example, Withers discloses the “H-shaped body portion 12 may
`
`be fabricated from several tubular members or may also be fabricated as a two-
`
`piece stamped assembly.”
`
` Ex. 1012, 2:63–65 (emphasis added).
`
` My
`
`understanding is that a “two-piece stamped assembly” means the H-shaped body is
`
`formed from two near-identical layered stamped pieces, with the central bridging
`
`portion 32 being permanently attached to the front and rear transverse bar portions
`
`28, 30.
`
`- 4 -
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`NSI - Exhibit 1028 - 0009
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`
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`3.
`
`[21.6] “a first mounting flange attached to said first end, a
`second mounting flange attached to said second end, a third
`mounting flange attached to said third end, and a fourth
`mounting flange attached to said fourth end”
`15. Withers discloses “[f]our end inserts 18A-D are shown inserted into
`
`four tubular ends 20A-D,” with the end inserts 18A–D shown in pink below. Ex.
`
`1012, 3:2–4, Fig. 1. It is my opinion that the end inserts 18A–D constitute
`
`mounting flanges as claimed because they “connect the support structure assembly
`
`10 to a vehicle frame” (see id., 3:3–5), i.e., allow for the mounting of the assembly
`
`10, and that each respective end insert is attached to a corresponding end of the
`
`tubular members as shown in annotated Figure 1 below.
`Second end
`insert
`
`Fourth end
`insert
`
`First end
`insert
`
`4.
`
`Third end
`insert
`[21.7] “each of said mounting flanges extend along a same axis
`as said tubular member to which said mounting flange is
`attached”
`I have reviewed the figures and specification of the ’585 Patent, and
`
`16.
`
`the term “axis” is not recited in either. Accordingly, it is unclear to me which
`
`“axis” this claim limitation is referring to. For example, all three-dimensional
`
`- 5 -
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`NSI - Exhibit 1028 - 0010
`
`
`
`objects, by definition, extend along three axes, but require a reference axis or angle
`
`to define their orientation.
`
`17. However, relying upon the annotated figure provided by Patent Owner
`
`in its MTA that includes axis reference arrows, I am able to demonstrate how
`
`Withers discloses this limitation. Specifically, using a similar annotation as Patent
`
`Owner, it is clear that the end inserts 18A–D extend along a same axis (green) as
`
`the front and rear transverse bar portions 28, 30.
`
`5.
`[21.8] “a mounting aperture on each of said mounting flanges”
`18. My understanding of the term “aperture” is a hole or absence of
`
`material. Accordingly, it is impossible for an “aperture” to be “on” anything
`
`unless the aperture does not go all the way through, which is specifically called a
`
`blind aperture. A blind aperture would require the aperture to be threaded or use an
`
`expanding fastener and cause the flange to be positioned under an aperture on the
`
`vehicle frame rail for fastening. Thus, this claim limitation is unclear to me.
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`- 6 -
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`NSI - Exhibit 1028 - 0011
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`
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`19. As best I can understand, Withers discloses an aperture that passes
`
`through its end inserts. Specifically, Withers, using the end insert 18D as an
`
`example, discloses “[t]he end insert 18D is assembled to the frame rail 42 by a
`
`fastener 56.” Ex. 1012, 4:18–22, Fig. 9 (annotated version below). The fastener
`
`56 necessarily must pass through an aperture in the end insert 18D.
`
`6.
`
`flanges and mounting apertures
`[21.9] “said mounting
`configured to attach directly to a frame of a vehicle”
`20. Referring to annotated Figure 5 below, Withers discloses the end
`
`inserts 18A–D and the apertures that receive the fasteners 56 are configured to
`
`attach directly to the frame 42 of the vehicle. Ex. 1012, Fig. 5, 3:18–19 (“As
`
`shown in FIG. 3, the support structure assembly 10 is attached to the truck bed
`
`frame rails 42.”).
`
`- 7 -
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`NSI - Exhibit 1028 - 0012
`
`
`
`B.
`
`All Limitations Of The Proposed Substitute Claims Are Taught
`By Withers ’317 In View Of Fandrich
`1.
`[21] “A hitch mounting system comprising”
`21. Withers
`’317 discloses
`“[a]n
`integrated
`
`support
`
`structure
`
`apparatus…for attaching either a fifth wheel trailer hitch or a gooseneck trailer
`
`hitch to a truck bed.” Ex. 1022, Abstract, Fig. 1 (reproduced below). Thus, it is my
`
`understanding that Withers ’317 discloses a hitch mounting system.
`
`- 8 -
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`NSI - Exhibit 1028 - 0013
`
`
`
`2.
`
`[21.1] “a pair of tubular members each having a cross-
`sectional shape a substantial portion of which is defined by an
`enclosed peripheral wall with a generally hollow section, said
`pair of tubular members having a first, second, third and fourth
`end”
`22. Withers ’317 discloses an “H-shaped body portion 12 includ[ing] a
`
`front transverse bar portion 28 and a rear transverse bar portion 30.” Ex. 1022,
`
`3:13–16. Withers ’317 does not explicitly disclose that the front and rear
`
`transverse bar portions 28, 30 are tubular members having a cross-sectional shape a
`
`substantial portion of which is defined by an enclosed peripheral wall with a
`
`generally hollow section, but Fandrich teaches the use of tubular cross members
`
`having a cross-sectional shape a substantial portion of which is defined by an
`
`enclosed peripheral wall with a generally hollow section in an underbed hitch
`
`mount.
`
`- 9 -
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`NSI - Exhibit 1028 - 0014
`
`
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`23.
`
`Specifically, Fandrich teaches an assembly 112 acting as “as a rigid
`
`support structure providing a secure foundation for vehicle hitch components.” Ex.
`
`1011, 4:6–8. The assembly 112 includes “generally hollow tube[s] 110, rectangular
`
`in cross-section, and extending generally perpendicularly between [vehicle] frames
`
`106.” Id., 3:64–66. “Tubes 110 typically include a hollow interior 116 disposed
`
`between upper wall 114 and a lower wall 118.” Id., 4:19–20. As further shown in
`
`annotated Figure 2 below, tubes 110 (red) constitute a pair of tubular members
`
`having cross-sectional shapes substantial portions of which are defined by enclosed
`
`peripheral walls with generally hollow sections:
`
`Id., Fig. 2.
`
`24.
`
`It would be obvious to a POSA as of October 30, 2008 to modify
`
`Withers ’317 with tubular cross members, such as those taught by Fandrich to
`
`- 10 -
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`NSI - Exhibit 1028 - 0015
`
`
`
`arrive at the claimed invention. For example, in addition to tubular cross members
`
`being one of a finite number of predictable shapes for a cross member in an
`
`underbed hitch mounting system, Fandrich explicitly teaches that its tubular
`
`members are “designed to withstand substantial tensile and compressive strength.”
`
`Ex. 1011, 3:67–4:2. Thus, the advantages of tubular structures for cross members
`
`in underbed hitch mount systems were well-known in the art. Accordingly, a
`
`POSA would be motivated to modify the shape of the cross-members of Withers
`
`’317 to be tubular based upon, at least, express teachings in the art (e.g., Fandrich)
`
`concerning the desirability of such a structure. Additionally, a POSA would know
`
`that tubular cross members could be an alternative to solid cross members, for
`
`example, because they could exhibit sufficient strength compared to solid cross
`
`members.
`
`25. Moreover, tubular members have been used as cross members in a
`
`hitch mounting system for years, and a POSA would understand that such a
`
`structure would be readily available at the time of the ’585 Patent. As just one
`
`example, Lubbers (filed November 24, 1933) discloses a mounting structure for a
`
`fifth-wheel hitch that attaches to a frame 2 of a towing vehicle by way of tubular
`
`cross members referred to as “boxes 25.” See Ex. 1014, 2:17–40, Fig. 2.
`
`26. Additional rationales for modifying Withers ’317 with the tubular
`
`cross members of Fandrich include that such a modification would reflect simple
`
`- 11 -
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`NSI - Exhibit 1028 - 0016
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`
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`substitution of one known element (i.e., any “non-tubular” cross members of
`
`Withers ’317) for another (i.e., the tubular cross members of Fandrich) to obtain
`
`predictable results.
`
`27.
`
`In addition, such a modification would have been “obvious to try,”
`
`particularly in view of Lubbers disclosing tubular cross members in a hitch
`
`mounting system as far back as the 1930’s (see Ex. 1014, 2:17–40, Fig. 2), and
`
`Works and Lindenman teaching the use of tubular cross members specifically in
`
`the context of underbed hitch mounts for gooseneck and fifth-wheel hitches. See
`
`Ex. 1009, 4:60–62; Ex. 1010, 3:47–56.
`
`28.
`
`Finally, a POSA would have understood that known work in one field
`
`of endeavor (i.e., hitch mounting systems) would prompt variations of it for use in
`
`the same field based on design incentives (i.e., ability of the mount to “withstand
`
`substantial tensile and compressive loading” as taught by Fandrich (Ex. 1011,
`
`3:67–4:3)) or other market forces because the variations are predictable to a POSA.
`
`For example, other market forces may include reducing material and shipping costs
`
`achieved by the weight reduction of having a hollow, tubular structure with less
`
`material than a solid structure.
`
`29.
`
`Thus, Withers ’317, as modified by Fandrich, would include tubular
`
`transverse bar portions including a first, second, third, and fourth end, as shown in
`
`the annotated version of Figure 1 of Withers ’317 below:
`
`- 12 -
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`NSI - Exhibit 1028 - 0017
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`
`
`Second end
`
`Fourth end
`
`First end
`
`Third end
`
`Ex. 1022, Fig. 1.
`
`3.
`
`[21.2] “a mid rail attached to each of and between said pair of
`tubular members spacing said pair of tubular members apart,
`said mid rail is permanently attached to said pair of tubular
`members as a one piece assembly”
`Ignoring the lack of clarity with the phrase “one piece assembly,” it is
`
`30.
`
`my understanding that Withers ’317 discloses a central bridging portion 32 that is a
`
`single component and is attached to the front and rear transverse bar portions 28,
`
`30. Ex. 1022, 3:14–16, Fig. 1 (annotated version below).
`
`- 13 -
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`NSI - Exhibit 1028 - 0018
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`
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`31. Additionally, Withers ’317 discloses “[t]he H-shaped body portion 12
`
`may be fabricated in one piece.” Id., 2:65–66, Fig. 1. Accordingly, ignoring the
`
`lack of clarity with the phrase “permanently attached,” my understanding is that
`
`the central bridging portion 32 is permanently attached to the front and rear
`
`transverse bar portions 28, 30 as a one piece assembly, because the entire H-shaped
`
`body portion 12 is one piece.
`
`4.
`
`[21.3] “said mid rail having a socket capable of accepting a
`gooseneck hitch ball”
`32. Withers ’317 discloses a “gooseneck ball receiver 16” in the central
`
`bridging portion 32 that is configured to receive a “quick connect receiver ball 44.”
`
`Ex. 1022, 3:26–28, Fig. 8 (annotated version below).
`
`- 14 -
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`NSI - Exhibit 1028 - 0019
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`
`
`Gooseneck
`hitch ball
`
`Socket
`
`33.
`
`Thus, in my opinion, Withers ’317 in view of Fandrich teaches a mid
`
`rail (i.e., the central bridging portion 32) having a socket (i.e., the gooseneck ball
`
`receiver 16) capable of accepting a gooseneck hitch ball (i.e., the quick connect
`
`receiver ball 44).
`
`5.
`
`[21.4] “a pair of receiving members attached with each of said
`pair of tubular members”
`34. Withers ’317 discloses “[f]our fifth wheel pucks 18 [that] are shown
`
`attached to the top surface of the body portion 12.” Ex. 1022, 3:3–5, Fig. 1
`
`(annotated version below showing pucks 18 in blue). Thus, it is my understanding
`
`that Withers ’317 teaches a pair of receiving members (i.e., pucks 18) attached
`
`- 15 -
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`NSI - Exhibit 1028 - 0020
`
`
`
`with each of said pair of tubular members (i.e., the front and rear transverse bar
`
`portions 28, 30 of Withers ’317 as modified by Fandrich to be tubular).
`
`6.
`
`[21.5] “said receiving members configured to engage a leg of a
`fifth wheel hitch”
`35. Withers ’317 discloses a “fifth wheel receiver pedestal 46 [that]
`
`includes quarter turn locking pins that lock the pedestal 46 to the fifth wheel pucks
`
`18.” Ex. 1022, 3:36–41, Fig. 7 (below).
`
`- 16 -
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`NSI - Exhibit 1028 - 0021
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`
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`36.
`
`Thus, in my opinion, Withers ’317 in view of Fandrich teaches
`
`receiving members (i.e., pucks 18) configured to engage a leg of a fifth wheel hitch
`
`(i.e., fifth wheel receiver pedestal 46).
`
`7.
`
`[21.6] “a first mounting flange attached to said first end, a
`second mounting flange attached to said second end, a third
`mounting flange attached to said third end, and a fourth
`mounting flange attached to said fourth end”
`37. Referring to the annotated version of Figure 1 below, I understand
`
`Withers ’317 to include flanges (pink) attached to each end of the front and rear
`
`transverse bar portions 28, 30. Ex. 1022, Fig. 1; see also supra at ¶ 12.
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`- 17 -
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`NSI - Exhibit 1028 - 0022
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`
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`8.
`
`[21.7] “each of said mounting flanges extend along a same axis
`as said tubular member to which said mounting flange is
`attached”
`38. As set forth above, it is unclear what the claimed “axis” is referring to.
`
`However, relying upon the annotated figure provided by Patent Owner in its MTA,
`
`I am able to demonstrate how Withers ’317/Fandrich teaches this limitation.
`
`39.
`
`Specifically, using a similar annotation as Patent Owner, it is clear
`
`that at least a portion of the flanges of Withers ’317 extend along a same axis
`
`(green) as the front and rear transverse bar portions 28, 30.
`
`- 18 -
`
`NSI - Exhibit 1028 - 0023
`
`
`
`40.
`
`Thus, in my opinion, Withers ’317 in view of Fandrich teaches each
`
`of the mounting flanges (pink) extend along a same axis (green) as said tubular
`
`member (i.e., the front and rear transverse bar portions 28, 30 of Withers ’317 as
`
`modified by Fandrich to be tubular) to which said mounting flange is attached.
`
`9.
`[21.8] “a mounting aperture on each of said mounting flanges”
`41. Referring to the annotated version of Figure 8 below, Withers ’317
`
`shows a variety of “fasteners 26” in the flanges (pink). Ex. 1022, 3:10–11, Fig. 8.
`
`Specifically, the fasteners 26 inherently must pass through an aperture in the
`
`flanges, and the fasteners 26 disposed in the apertures that correspond to the
`
`claimed mounting apertures are shown in orange below.
`
`- 19 -
`
`NSI - Exhibit 1028 - 0024
`
`
`
`10.
`
`flanges and mounting apertures
`[21.9] “said mounting
`configured to attach directly to a frame of a vehicle”
`42. Withers ’317 discloses “[r]eferring to FIG. 8, the support structure
`
`assembly 10 is shown secured to the truck bed frame rails 42.” Ex. 1022, 3:60–61.
`
`As shown in the annotated version of figure 8 below, the fasteners 26 shown in
`
`orange directly attach the flanges (pink) to the truck bed frame rails 42 (red).
`
`- 20 -
`
`NSI - Exhibit 1028 - 0025
`
`
`
`43.
`
`Thus, it is my opinion that Withers ’317 in view of Fandrich teaches
`
`the mounting flanges (pink) and mounting apertures (apertures receiving orange
`
`fasteners 26) configured to attach directly to a frame (red truck bed frame rails 42)
`
`of a vehicle.
`
`11.
`
`[22] “The hitch mounting system of claim 21, wherein at least a
`pair of the receiving members are configured to accept a safety
`chain tie down.”
`44. Withers ’317 discloses “[t]he fifth wheel pucks 18 may be used to
`
`secure the safety chains of the trailer to the bed of the truck when the trailer is
`
`assembled to the gooseneck quick connect receiver ball 44.” Ex. 1022, 3:28–31.
`
`45.
`
`Thus, it is my opinion that Withers ’317 in view of Fandrich teaches
`
`wherein at least a pair of the receiving members (pucks 18) are configured to
`
`accept a safety chain tie down (“safety chains of the trailer”).
`
`- 21 -
`
`NSI - Exhibit 1028 - 0026
`
`
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on August _16_, 2022.
`
`
`
`
`
`By:___________________________
`
`Steven Becker
`
`
`
`
`
`
`
`
`- 22 -
`
`NSI - Exhibit 1028 - 0027
`
`
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