Paper No. 41
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BESTWAY (USA), INC.,
`Petitioner
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner
`
`
`Case No. PGR2017-00003
`U.S. Patent No.: 9,254,240
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`
`
`
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BESTWAY (USA), INC.,
`Petitioner
`
`v.
`
`INTEX MARKETING LTD.,
`Patent Owner
`
`
`Case No. PGR2017-00003
`U.S. Patent No.: 9,254,240
`
`
`Before KEN B. BARRETT, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`
`
`
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Clariant Corp. v. CSP Techs., Inc.,
`IPR2014-00375, Paper No. 28 (USPTO June 10, 2015) ..................................... 16
`In re Daily,
`357 F.2d 669 (C.C.P.A 1996) .............................................................................. 17
`In re Larson,
`340 F.2d 965 (C.C.P.A. 1965) ............................................................................. 17
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 17, 19
`Repro-Med Systems, Inc. v. EMED Techs. Corp.,
`IPR2015-01920, Paper No. 9 (USPTO Feb. 19, 2016) ........................................ 16
`Rexnord Industries, LLC v. Kappos,
`705 F.3d 1347 (Fed. Cir. 2013) ............................................................................ 19
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................... 3
`Southco, Inc. v. Fivetech Tech. Inc.,
`Civ. No. 2014-1390, 2015 WL 1609846 (E.D. Pa. Apr. 10, 2015) ..................... 16
`Talari Networks, Inc. v. FatPipe Networks India Ltd.,
`IPR2016-00977, Paper No. 7 at 18-19 (USPTO Nov. 7, 2016) ............................ 5
`Ullstrand v. Coons,
`147 F.2d 698 (CCPA 1945) ................................................................................. 16
`
`
`
`
`
`
`U.S. Patent 9,254,240
`
`i
`
`PGR2017-00003
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`Introduction ...................................................................................................... 1
`Procedural Background ................................................................................... 3
`II.
`III. Argument ......................................................................................................... 4
`A. Grounds 2 and 3 Present Alternative Arguments .................................. 5
`B.
`Claims 18-22 Are Unpatentable Under Ground 2 and/or
`Ground 3 ................................................................................................ 9
`1.
`Claims 19-22: “Notches” and “Notch-Defining
`Portions” .................................................................................... 10
`Claims 20-22: Tensioning Structure Limitations
`that Overlap with Ground 1 ...................................................... 11
`Claim 30 Is Unpatentable Under Ground 2 ......................................... 13
`Petitioner Articulated Reasons to Combine the
`References Used in Grounds 2 and 3 of the Petition, and
`Patent Owner Failed to Rebut Petitioner’s Evidence .......................... 17
`1.
`Guan’s Four-Sheet Wall Design Is an Obvious
`Variation of Peterson’s Two-Sheet Wall Design ...................... 18
`Guan’s Double-Walled Floor Is an Obvious
`Variation of Peterson’s Single-Walled Floor............................ 20
`3. Wang’s Notched Tensioning Structure Is an
`Obvious Variation of Peterson’s Arc-Shaped
`Design ....................................................................................... 21
`IV. Conclusion ..................................................................................................... 23
`
`
`
`C.
`D.
`
`2.
`
`2.
`
`U.S. Patent 9,254,240
`
`ii
`
`PGR2017-00003
`
`
`
`
`
`I. Introduction
`
`Petitioner has established that Claims 18-22 and 30 are unpatentable based
`
`on Grounds 2 and 3. Patent Owner argued that these grounds are confusing, but
`
`they present simple alternative arguments in anticipation of challenges Petitioner
`
`anticipated Patent Owner might raise. These arguments present multiple bases for
`
`the Board properly to conclude that Claims 18-22 and 30 are unpatentable.
`
`Claims 18-22 depend from Claim 17 and recite additional features, notably
`
`including “a top wall and a bottom wall cooperating with the inner and outer walls
`
`to define the inflatable air chamber.” (Ex. 1001, ’240 Patent, at 20:40-42.) With
`
`respect to Ground 2, the Petition
`
`demonstrated that Peterson taught two
`
`sheets of material that form the top,
`
`bottom, inner, and outer walls of an
`
`inflatable chamber. (Pet. 47-48.)
`
`Peterson Fig. 4
`Even so, Petitioner anticipated that Patent Owner might dispute Peterson’s
`
`teachings, perhaps based on a misguided argument that top, bottom, inner, and
`
`outer walls cannot be formed with just two sheets of material. Therefore, as an
`
`alternative argument, Petitioner introduced Guan 797 as an additional prior art
`
`reference that expressly taught an inflatable chamber with top, bottom, inner, and
`
`outer walls formed by four separate sheets of material. (Pet. 48-50.) In the end,
`
`U.S. Patent 9,254,240
`
`1
`
`PGR2017-00003
`
`
`
`
`
`Patent Owner did not dispute that Peterson teaches top, bottom, inner, and outer
`
`walls, as illustrated on page 48 of the Petition. (See Prelim. Resp. 61-63.)
`
`Accordingly, Petitioner has demonstrated that within Ground 2, Claims 18-22 are
`
`unpatentable based on the combined teachings of Peterson and Firemen.
`
`Alternatively, Petitioner has also demonstrated that Claims 18-22 are unpatentable
`
`based on the combined teachings of Peterson, Fireman, and Guan 797 (substituting
`
`Guan 797’s four-sheet wall structure in place of Peterson’s two-sheet wall
`
`structure). (Pet. 48-50.)
`
`Ground 2 also addresses Claim 30, which depends from Claim 7 and
`
`requires that the bottom wall (i.e., the pool floor) include an an “upper layer” and a
`
`“lower layer” attached to an “annular perimeter rim.” (Ex. 1001, at 22:11-13.)
`
`Petitioner conceded that Peterson taught only a single-layer bottom wall attached
`
`to an annular perimeter rim. (Pet. 59.) However, Petitioner showed that Guan 797
`
`taught a two-layer bottom wall, with upper and lower layers connected together by
`
`an annular perimeter rim to form an “air bag cushion” for the pool floor. (Pet. 59-
`
`60.) Therefore, Claim 30 is unpatentable in view of Peterson, Fireman, and Guan.
`
`In Ground 3, Petitioner correctly anticipated that Patent Owner might
`
`narrowly construe the “notches” and “notch-defining portions” in Claims 19-22 to
`
`require a particular shape. To head off this argument, Petitioner presented the
`
`Ground 2 references in combination with Wang 615, which expressly taught
`
`U.S. Patent 9,254,240
`
`2
`
`PGR2017-00003
`
`
`
`
`
`notches with the same basic shape shown in the ’240 Patent. (Pet. 62-65.) Patent
`
`Owner does not dispute that Wang 615 taught the claimed notches under its
`
`proposed construction. Thus, even if the Board adopts Patent Owner’s
`
`unreasonably narrow construction of Claims 19-22, Petitioner has established that
`
`those claims are unpatentable based on Ground 3.
`
`When properly read in the context of Petitioner’s alternative arguments, and
`
`as supported by Dr. Sadegh’s unrebutted expert testimony, the Petition defines and
`
`presents specific prior art combinations in Grounds 2 and 3. Given the overlapping
`
`and, in many ways, interchangeable subject matter of the Peterson, Fireman, Guan
`
`797, and Wang 615, as explained in the Petition, it would have been obvious to one
`
`of ordinary skill in the art to combine their features and arrive at the subject matter
`
`recited in Claims 18-22 and 30 of the ’240 Patent. Petitioner has proven by a
`
`preponderance of the evidence—most of which is unrebutted—that these claims
`
`are unpatentable, and Petitioner respectfully requests that they be canceled.
`
`II. Procedural Background
`
`On May 11, 2017, a post-grant review was instituted on Petitioner’s
`
`challenge of claims 1–7 and 17 under 35 U.S.C. § 103 as unpatentable over
`
`Peterson and Fireman (“Ground 1”). After the parties completed briefing and after
`
`the Board conducted a hearing, but before the Board issued its final decision, the
`
`Supreme Court decided SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018). As a
`
`U.S. Patent 9,254,240
`
`3
`
`PGR2017-00003
`
`
`
`
`
`result, on May 2, 2018, the Board modified its institution decision to institute on all
`
`of the challenged claims and all of the grounds presented in the Petition. (Paper
`
`30.) After a conference call, the Board authorized Patent Owner to file either (1) a
`
`Supplemental Patent Owner Response or (2) a Statement indicating it will be
`
`relying on arguments made in its Preliminary Response with respect to Grounds 2
`
`and 3 of the Petition. (Paper 33.) The Board authorized limited discovery and also
`
`authorized Petitioner to submit a Reply to respond to Patent Owner’s arguments on
`
`Grounds 2 and 3. (Id.)
`
`Patent Owner opted to rely solely on its Preliminary Response (see Paper
`
`34), and Petitioner took a limited deposition of Patent Owner’s expert with respect
`
`to his declaration submitted with the Preliminary Response as to Grounds 2 and 3
`
`(see Paper 36). Pursuant to the Board’s Order on the Conduct of the Proceedings
`
`(Paper 33), Petitioner files this Supplemental Reply to address Grounds 2 and 3.
`
`III. Argument
`
`As Petitioner demonstrated in the Petition, Claims 18-22 and 30 are obvious
`
`for the reasons explained in Grounds 2 and 3. Having opted not to file a post-
`
`institution response to Grounds 2 and 3 or to submit any evidence in rebuttal to Dr.
`
`Sadegh’s testimony on these grounds, Patent owner relies on the arguments
`
`presented in its Preliminary Response. (Paper 34.) There, Patent Owner raised
`
`few disputes beyond what the parties already briefed with respect to Ground 1,
`
`U.S. Patent 9,254,240
`
`4
`
`PGR2017-00003
`
`
`
`
`
`namely that (1) Petitioner allegedly did not articulate a motivation to combine
`
`Peterson with Fireman, and (2) Fireman allegedly did not visually depict the
`
`structure of the mesh-reinforced material at the edges of a tensioning structure.
`
`Both of these arguments fail, as explained in the Petition, the Declaration of
`
`Dr. Sadegh, and Petitioner’s Reply in support of Ground 1. For those same
`
`reasons, Patent Owner’s fail as to Grounds 2 and 3. The following sections
`
`address Patent Owner’s few additional arguments specific to these grounds.
`
`A. Grounds 2 and 3 Present Alternative Arguments
`
`Petitioner properly presented alternative arguments in Grounds 2 and 3 in
`
`anticipation of challenges Patent Owner might make to the prior art and the
`
`construction of certain claim terms. See, e.g., Talari Networks, Inc. v. FatPipe
`
`Networks India Ltd., IPR2016-00977, Paper No. 7 at 18-19 (USPTO Nov. 7, 2016)
`
`(allowing alternative arguments within a single ground and analogizing to Fed. R.
`
`Civ. P. 8(d)). With respect to Claims 18-22, Petitioner showed that Peterson and
`
`Fireman teach every claim limitation,
`
`including an inflatable chamber with
`
`top, bottom, inner, and outer walls.
`
`Specifically, Petitioner’s expert
`
`annotated Figure 4 to illustrate how
`
`Peterson Fig. 4
`
`U.S. Patent 9,254,240
`
`5
`
`PGR2017-00003
`
`
`
`
`
`Peterson shaped two sheets of material to form each of these walls. (Ex. 1011,
`
`Sadegh Decl., ¶ 155 (annotating Ex. 1002, Peterson, Fig. 4); Pet. at 47-48.)
`
`Antiticipating that Patent Owner might challenge Peterson’s two-sheet
`
`structure as insufficient disclosure of the four wall elements, Petitioner also
`
`presented an alternative argument based on a third reference, Guan 797. (Pet. 48-
`
`50 (“To the extent Patener Owner argues that the top wall and/or bottom wall are
`
`not taught by Peterson in view of Fireman, those features would have been obvious
`
`when combined with the teachings of Guan 797”).) As the Petition explained:
`
`Figure 3 of Guan 797 shows in detail a cross-sectional
`view of the air chamber surrounded by top wall (22),
`bottom wall (21), inner wall (24), outer wall (24), and
`with internal supporting spacers (23) that form suitable
`air gaps (242) between the top and bottom walls:
`
`
`(Pet. 49.) Thus, the Petition simply presented Guan 797 as part of an alternative
`
`argument to address the four “wall” limitations in case Patent Owner challenged
`
`Peterson’s teachings of those walls. Patent Owner did not challenge Peterson’s
`
`teaching of all four walls in its Preliminary Response. (See Prelim. Resp. 61-64
`
`U.S. Patent 9,254,240
`
`6
`
`PGR2017-00003
`
`
`
`
`
`(addressing only Claim 30).) Therefore, the Board may find Claims 18-22
`
`unpatentable based on either or both of the two alternative arguments presented in
`
`Ground 2: (a) Peterson combined with Fireman; and/or (b) Peterson combined with
`
`Fireman and Guan 797 (with Guan 797’s four-sheet wall structure substituted in
`
`place of Peterson’s two-sheet wall structure). Under either of these alternative
`
`arguments, Claims 18-22 should be canceled.
`
`Contrary to Patent Owner’s allegation, Petitioner did not argue that Guan
`
`797 should replace Peterson as the primary reference in Grounds 2 or 3. (Prelim.
`
`Resp. 61.) On the contrary, Petitioner explained that the teachings of Peterson and
`
`Guan 797 are “virtually interchangeable,” so it would have been a simple and
`
`obvious design choice to substitute Guan 797’s four-sheet wall structure in place of
`
`Peterson’s two-sheet wall structure. (Pet. 45-46, 48 (“To the extent Patener Owner
`
`argues that the top wall and/or bottom wall are not taught by Peterson in view of
`
`Fireman, those features would have been obvious when combined with the
`
`teachings of Guan 797”).)
`
`Petitioner also presented an alternative argument in Ground 3, correctly
`
`anticipating a claim construction argument Patent Owner did make. Specifically,
`
`Ground 3 added Wang 615 to address a narrower interpretation of the “notches”
`
`and “notch-defining portions” recited in Claims 19-22. Petitioner proposed
`
`reasonably broad interpretations of these claim terms, which are fully satisfied by
`
`U.S. Patent 9,254,240
`
`7
`
`PGR2017-00003
`
`
`
`
`
`Peterson in Ground 2. By contrast, Patent Owner proposed much narrower
`
`interpretations of “notches” and “notch-defining portions” and argued that
`
`Peterson’s (and Guan’s) gaps do not satisfy Patent Owner’s construction for these
`
`limitations. (Prelim. Resp. at 70). Patent Owner does not dispute, however, that
`
`Wang 615 taught the “notches” and “notch-defining portions” under Patent
`
`Owner’s unreasonably narrow interpretations. (Id.; Ex. 1027, Ex. 1027, Suppl.
`
`Kuchel Dep., at 24:6-21; 28:22-29:15.) Accordingly, even if the Board adopts
`
`Patent Owner’s narrower proposed constructions for these terms, Claims 19-22 are
`
`unpatentable under the alternative arguments Petitioner presented in Ground 3.
`
`The table on the following page summarizes Petitioner’s alternative
`
`arguments with respect to the “top wall” and “bottom wall” claim terms and the
`
`“notches” and “notch-defining portions” limitations.
`
`
`
`
`
`U.S. Patent 9,254,240
`
`8
`
`PGR2017-00003
`
`
`
`
`
`
`
`Claim Terms
`“top wall” and
`“bottom wall”
`(claims 18-22)
`
`Dispute (if any)
`Undisputed
`
`Undisputed
`
`“notches” and
`“notch-defining
`portions”
`(claims 19-22)
`
`Petitioner’s
`proposed construction
`
`Patent Owner’s
`proposed construction
`
`Basis for Unpatentability
`
`Ground 2:
`Peterson + Fireman
`(including Peterson’s two-
`sheet wall structure)
`
`Ground 2:
`Peterson + Fireman
`+ Guan 797
`(including Guan 797’s four-
`sheet wall structure)
`
`Ground 2
`(including Peterson’s
`tensioning structures with
`notches and notch-defining
`portions)
`
`Ground 3
`(including Wang 615’s
`tensioning structures with
`notches and notch-defining
`portions)
`
`B. Claims 18-22 Are Unpatentable Under Ground 2 and/or Ground 3
`
`With respect to claims 18, Patent Owner makes no additional arguments
`
`beyond those presented in response to Ground 1. Indeed, Patent Owner’s expert
`
`admitted that both Peterson and Guan disclose the additional limitations of this
`
`claim. (Ex. 1027, Suppl. Kuchel Dep., at 11:25-12:25.) Claim 18 should be
`
`canceled under Ground 2.
`
`For Claims 19-22, Patent Owner makes only two arguments concerning the
`
`content of the prior art, and both arguments fail. First, Patent Owner argues for
`
`U.S. Patent 9,254,240
`
`9
`
`PGR2017-00003
`
`
`
`
`
`unreasonably narrow interpretations of the “notches” and “notch-defining
`
`portions” recited in Claims 19-22. (Prelim. Resp. 64-70.) But even under these
`
`narrow constructions, there is no dispute that the Ground 3 prior art teaches these
`
`features. (Ex. 1027, Suppl. Kuchel Dep., at 24:6-21; 28:22-29:15.) Second, with
`
`respect to Claims 20-22, Patent Owner presents variations on the same arguments
`
`it raised under Claim 1 as to the alleged ambiguity of Fireman’s Figure 5A and the
`
`extent to which Fireman discloses the structure at the edges of its mesh-reinforced
`
`material. (Prelim. Resp. 57-61.). These arguments fail for the same reasons
`
`Petitioner aready explained in its Reply in support of Ground 1. (Reply 2-9.)
`
`1. Claims 19-22: “Notches” and “Notch-Defining Portions”
`
`Claims 19-22 add limitations related to “notches” and/or “notch-defining
`
`portions.” The parties dispute the construction of both terms. Petitioner argues
`
`that according to their broadest reasonable interpretations, the notches are
`
`“indentations,” and the notch-defining portions are simply the “indented portions”
`
`defining the notches. (Pet. 20-24.) Patent Owner disagrees and argues for
`
`narrower constructions. (Prelim. Resp. 64-70.) Specifically, Patent Owner argues
`
`that the “notches” exclude any indentation formed along an entire edge of the
`
`tensioning structure; in other words, a “notch” may only be formed within part of
`
`an edge. (Id. at 64-67.) Patent Owner applies this same reasoning to “notch-
`
`defining portions,” arguing that the beginning and end of the notch (i.e., the
`
`U.S. Patent 9,254,240
`
`10
`
`PGR2017-00003
`
`
`
`
`
`“notch-defining portions”) must be within part of an edge, and the notch cannot be
`
`defined along the entire edge. (Id. at 67-70.)
`
`Petitioner’s proposed construction is the broadest reasonable interpretation,
`
`but the Board need not construe the claims because there is no dispute that Wang
`
`615 (the prior art reference added in Ground 3) discloses the claimed “notches”
`
`and “notch-defining portions,” even under Patent Owner’s constructions. As
`
`explained in Ground 3 of the Petition, Wang 615 taught the “notches” and “notch-
`
`defining portions” under both parties’ proposed constructions. (Pet. 60-65.)
`
`2. Claims 20-22: Tensioning Structure Limitations that Overlap
`with Ground 1
`
`As to Claims 20-22, which depend directly or indirectly from Claim 19,
`
`Patent Owner essentially reiterates its Claim 1 arguments regarding Fireman.
`
`Patent Owner argues that Petitioner’s reliance on Fireman’s Figure 5A is
`
`insufficient because the figure does not visually depict what occurs on the edges of
`
`a tensioning structure. (Prelim. Resp. 57-61.) For the same reasons Petitioner
`
`already explained in its Petition and Reply with respect to Ground 1, Patent Owner
`
`is incorrect. Patent Owner’s argument relies on an unreasonably narrow
`
`interpretation of what Fireman teaches to one of skill in the art. (Reply 2-9.)
`
`As Petitioner explained, when a tensioning structure is cut out of the
`
`Fireman material (i.e., a mesh-reinforced laminate), the edges of the tensioning
`
`structure will necessarily contain the additional features required by Claims 20-22,
`
`U.S. Patent 9,254,240
`
`11
`
`PGR2017-00003
`
`
`
`
`
`necessarily including a “plurality of open spaces” formed at the edges of the
`
`tensioning structure (as required in Claim 22) and a plurality of frame members
`
`extending from the seams to the “upper most portions” and the “lower most
`
`portions” along the edges of the tensioning structure (as required in Claims 20 and
`
`21). Both parties’ experts argree on this point. (Ex. 1027, Suppl. Kuchel Dep., at
`
`32:15-34:9; Ex. 1011, Sadegh Decl. ¶¶ 131-132; 179-180.)
`
`Dr. Sadegh further testified that Fireman’s Figure 5A taught a non-
`
`orthogonal orientation with respect to the edges of the material. (Ex. 1011, Sadegh
`
`Decl. ¶¶ 143-150).) Moreover, Dr. Sadegh explained that it would have been
`
`obvious to orient the fibers to run diagonally with respect to the seams in order to
`
`increase the strength of seam-to-seam tension and provide stability against shear
`
`stress. (Pet. 43; Ex. 1011, Sadegh Decl. ¶¶ 146-149).) Patent Owner does not
`
`dispute Dr. Sadegh’s arguments or the obviousness of such a diagonal orientation.1
`
`Nor does Patent Owner dispute that when oriented diagonally, a plurality of fibers
`
`(the claimed “frame members”) would necessarily extend from the seams to top
`
`and bottom edges of the tensioning structure, and thus to the notch-defining
`
`
`1 Indeed, Claim 17 requires that “the plurality of frame members extend diagonally
`
`relative to the first and second seams,” and Patent Owner did not dispute this
`
`limitation. (PO Resp. 34; Ex. 1025, Kuchel Dep., at 58:3-17, 61:4-11).
`
`U.S. Patent 9,254,240
`
`12
`
`PGR2017-00003
`
`
`
`
`
`portions and the upper and lower most portions. (Ex. 1027, Suppl. Kuchel Dep., at
`
`31:1-34:9 (reviewing Ex. 1011, Sadegh Decl., ¶ 169).)
`
`C. Claim 30 Is Unpatentable Under Ground 2
`
`Unlike Claims 18-22, Claim 30 depends from Claim 7 and adds a limitation
`
`that the floor of the pool is divided into an upper layer and a lower layer attached
`
`through an annular perimeter rim to the internal wall of the pool. (Ex. 1001, at
`
`22:10-14). Petitioner conceded that Peterson taught a single-layer bottom wall.
`
`(Pet. 59.) However, the Petition showed that Guan 797 taught a two-layer bottom
`
`wall, including top and bottom layers attached to an annular perimeter rim. (Pet.
`
`59-60.)
`
`Patent Owner argues that the Petition fails to explain how Guan taught “an
`
`annular perimeter rim” that attaches to both the “upper layer” and the “lower
`
`layer.” (Preliminary Resp. 62-63.) On the contrary, the Petition explained:
`
`As shown in Figure 3, Guan 797 diclosed an annular
`perimeter rim where the bottom wall 21 is attached to
`the inner circular wall 24. Guan 797 explains that the
`bottom wall is made of two layers where the upper layer
`is spaced apart from the lower layer to define an “air bag
`cushion” for the pool floor.
`(Pet. 59-60 (emphasis added) (internal citations omitted).) The Petition then
`
`included an annotated version of Figure 3 showing the bottom wall 21 and the
`
`inner circular wall 24, with labels identifying both the upper and lower layers of
`
`the bottom wall. (Pet. 60.) Though not specifically labeled, the annotated figure
`
`U.S. Patent 9,254,240
`
`13
`
`PGR2017-00003
`
`
`
`
`
`also showed both the upper and lower layers attached to an annular perimeter rim,
`
`which the Petition explained is “where the bottom wall 21 is attached to the inner
`
`circular wall 24.” (Pet. 59-60 (citing Ex. 1011, Sadegh Decl. ¶¶ 184.) The figure
`
`below enlarges and further annotates Figure 3 (Ex. 1004, Guan 797) to illustrate
`
`what the text of the Petition explained in words:
`
`upper layer
`
`annular
`perimeter
`rim
`
`lower layer
`
`The arguments in Patent Owner’s Preliminary Response seem to rely on an
`
`unreasonably narrow and undefined construction of the term “annular perimeter
`
`rim.” However, Patent Owner has proposed no specific construction, and it is too
`
`late to do so now. Moreover, there is no basis for narrowing the plain meaning of
`
`the claim language. Read in the context of Claim 30, the annular perimeter rim
`
`simply provides a connection between the upper and lower layers around the
`
`U.S. Patent 9,254,240
`
`14
`
`PGR2017-00003
`
`
`
`
`
`entirety of the bottom wall while the majority of the upper layer remains “spaced
`
`apart from the lower layer to define a space therebetween.” (Ex. 1001, 22:15-17.)
`
`Guan taught exactly the same structure, providing upper and lower layers
`
`that are connected to each other at an annular perimeter rim to form the “air-bag
`
`cushion” of Guan’s floor. (Pet. 85; citing Ex. 1004, Guan 797, ¶ [0010].) As Guan
`
`explained and depicted in Figure 3, the “air-bag cushion [is] welded to the inside of
`
`the circular wall so that the cushion of the swimming pool is tightly joined with the
`
`circumferential edge inside the bottom portion of the circular wall.” (Ex. 1004,
`
`Guan 797, ¶ [0004]; accord. Ex. 1027, Suppl. Kuchel Dep., at 42:1-11 (agreeing
`
`that Guan’s “floor 21 has an upper layer and a lower layer” and that “floor 21 is
`
`attached to inner wall 24 at the outer edge of floor 21.”).)
`
`Having proposed no construction and cited neither evidence nor authority
`
`for its position, Patent Owner nevertheless appears to argue that the claims require
`
`the upper layer to be directly attached to the lower layer, suggesting that Guan
`
`showed only indirect attachment. (Prelim. Resp. 62-63.) This arument is
`
`incorrect. First, there is no requirement in the claim language (nor in the
`
`specification, drawings, or prosecution history) that would require direct
`
`attachment, and Patent Owner has proposed no narrowing construction that would
`
`U.S. Patent 9,254,240
`
`15
`
`PGR2017-00003
`
`
`
`
`
`restrict Claim 30 in that way.2 See Clariant Corp. v. CSP Techs., Inc., IPR2014-
`
`00375, Paper No. 28 at 11-12 (USPTO June 10, 2015) (finding “‘attach’ and its
`
`variations (e.g., attached, attachment) cover both direct and indirect attachment
`
`(i.e., attachment having an intermediate element) (citing Ullstrand v. Coons, 147
`
`F.2d 698, 700 (CCPA 1945) and Southco, Inc. v. Fivetech Tech. Inc., Civ. No.
`
`2014-1390, 2015 WL 1609846, at *2 (E.D. Pa. Apr. 10, 2015); Repro-Med
`
`Systems, Inc. v. EMED Techs. Corp., IPR2015-01920, Paper No. 9, at 12 (USPTO
`
`Feb. 19, 2016) (“[T]he term ‘in attachment to’ is not so limited and encompasses
`
`configurations where wings are attached, directly or indirectly, to the central body
`
`portion of the device”).
`
`Second, even if the claim did require a direct attachment (which it does not),
`
`Guan disclosed this limitation because it taught that the double-walled floor is an
`
`“air-bag cushion.” To form an air-bag cushion, the walls must be joined together
`
`to provide an airtight seal. This is why Guan explains that the double-walled floor
`
`is “tightly joined with the circumferential edge inside the bottom portion of the
`
`
`2 Indeed, the written description does not use the terms “annular perimeter rim,”
`
`“upper layer,” and “lower layer.” Nor are these elements identified in any of the
`
`drawings. (See generally, Ex. 1001.)
`
`U.S. Patent 9,254,240
`
`16
`
`PGR2017-00003
`
`
`
`
`
`circular wall.” (Pet. 85; Ex. 1004, Guan 797, ¶ [0004].) Thus, Guan taught the
`
`structural arrangement of Claim 30 under the broadest reasonable interpretation.
`
`Finally, even if (a) Claim 30 were interpreted to require direct attachment
`
`between the upper and lower layers, and (b) Guan were interpreted as disclosing
`
`only an indirect connection between upper and lower layers (neither of which is
`
`correct), it would have been a simple and obvious design choice to modify Guan’s
`
`bottom wall to provide a direct connection between upper and lower layers. See
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“A court must ask
`
`whether the improvement is more than the predictable use of prior art elements
`
`according to their established functions”); see also In re Daily, 357 F.2d 669, 149
`
`(C.C.P.A 1996) (finding a simple reconfiguration of a container to be obvious
`
`where there was “no argument which convinces us that the particular configuration
`
`of their container is significant.”); In re Larson, 340 F.2d 965, 968 (C.C.P.A. 1965)
`
`(finding “that the use of a one piece construction instead of the [prior art] would be
`
`merely a matter of obvious engineering choice”).
`
`D. Petitioner Articulated Reasons to Combine the References Used in
`Grounds 2 and 3 of the Petition, and Patent Owner Failed to Rebut
`Petitioner’s Evidence
`
`In its Preliminary Response, Patent Owner argued that the Petition’s
`
`arguments on motivation to combine the prior art were “entirely conclusory.”
`
`Ironically, it is Patent Owner’s arguments that were conclusory. With respect to
`
`U.S. Patent 9,254,240
`
`17
`
`PGR2017-00003
`
`
`
`
`
`Ground 2 and 3, Patent Owner did not make a single substantive argument on
`
`motivation to combine beyond what it argued under Ground 1. (Prelim. Resp. 88-
`
`89.) Moreover, Patent Owner opted not to file a post-institution response on
`
`Grounds 2 and 3, and Patent Onwer has offered no evidence to rebut Dr. Sadegh’s
`
`testimony that one of ordinary skill in the art would have been motivated to
`
`combine the teachings presented in Grounds 2 and 3. (Ex. 2001, Kuchel Decl.
`
`¶¶ 219, 224 (relying only on Ground 1 discussion).) Petitioner has already
`
`addressed the motiviation to combine under Ground 1 in its original Reply in
`
`support of that ground. (Reply 9-18.) As for Grounds 2 and 3, the Petition
`
`provided specific arguments and evidence on the motivation to combine the
`
`relevant teachings of Peterson, Fireman, Guan 797, and Wang 615.
`
`1. Guan’s Four-Sheet Wall Design Is an Obvious Variation of
`Peterson’s Two-Sheet Wall Design
`
`Under Ground 2, Claims 18-22, Petitioner stated it was obvious to combine
`
`Peterson and Fireman with Guan’s disclosure of a four-sheet wall.3 In support of
`
`combining Peterson and Fireman, Petitioner referred back to the reasons it
`
`provided under Ground 1. (Pet. 46; Ex. 1011, Sadegh Decl., ¶¶ 117-124.)
`
`3 As explained above, there was apparently no need to make this alternative
`
`argument because Petitioner did not dispute that Peterson discloses the additional
`
`“top wall” and “bottom wall” limitations of Claim 18.
`
`U.S. Patent 9,254,240
`
`18
`
`PGR2017-00003
`
`
`
`
`
`Petitioner also provided further reasons for combining those references with Guan.
`
`(Pet. 45-46.) In particular, relying on the testimony of Dr. Sadegh, Petitioner
`
`explained it would have been an obvious design choice to use Guan’s four-sheet
`
`wall design in place of Peterson’s two-sheet design. (Pet. 45-46 (“Peterson and
`
`Guan 797 are virtually interchangeable in that each reference teaches various
`
`design choices that would have been obvious for one of ordinary skill in the art to
`
`combine.”) (emphasis added); Ex. 1011, Sadegh Decl., ¶¶ 100, 151.) Rexnord
`
`Industries, LLC v. Kappos, 705 F.3d 1347, 1355-56 (Fed. Cir. 2013) (reinstating
`
`examiner’s obviousness rejection finding that a mere design choice was an obvious
`
`improvement); KSR, 550 U.S. at 416 (“The combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results.”).
`
`In addition to being an obvious design choice, Petitioner and Dr. Sadegh
`
`cited to Guan’s explicit motivation that his design made “the overall appearance []
`
`refreshing” and explained that a “consumers’ desire to purchase can be aroused by
`
`the structural stability and beautify[ing] shape of the present utility model.” (Pet.
`
`45-46 (citing Ex. 1004, Guan 797, ¶ [0010]); Ex. 1011, Sadegh Decl., ¶ 151; see
`
`also Ex. 1027, Suppl. Kuchel Dep., at 9:7-10:6.)
`
`Patent Owner failed to rebut either of these reasons to combine and failed to
`
`offer any evidence in rebuttal to Dr. Sadegh’s testimony. (Prelim. Resp. 88-89; Ex.
`
`U.S. Patent 9,254,240
`
`19
`
`PGR2017-00003
`
`
`
`
`
`2001, Kuchel Decl., ¶¶ 219, 224). Thus, as it relates to the additional “top” and
`
`“bottom” claim elements required by Claims 18-22, Petitioner provided sufficient
`
`reason for and evidence of why a POSA would have used Guan’s alternative wall
`
`design.
`
`2. Guan’s Double-Walled Floor Is an Obvious Variation of
`Peterson’s Single-Walled Floor
`
`With respect to Claim 30, and again relying on Dr. Sadegh’s unrebutted
`
`testimony, Petitioner provided a sufficient reason why a POSA would have looked
`
`to Guan’s double-walled floor design. Petitioner explained that “it would have
`
`been an obvious design choice for one of skill in the art to include a multi-layer
`
`floor with spaced apart layers such as that taught in Guan 797.” (Pet. 59 (citing
`
`Ex. 1011, Sadegh Decl., ¶ 183).) In further support, Petitioner and Dr. Sadegh
`
`explained the reason why a POSA would have used Guan’s double-walled floor is
`
`that it “would provide additional cushioning and prevent against
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
